PTAB Patent Proceedings: Best Practices and Strategies You Must Know for 2017 & Beyond
The introduction of Post-Grant Review (PGR), Inter Partes Review (IPR) and Covered Business Method (CBM) by the American Invents Act (AIA) has provided businesses with several additional pathways for challenging the validity of patents. These proceedings have become mainstay tools for defendants in patent cases before the Patent Trial & Appeal Board (PTAB).
In this LIVE Webcast, a panel of key thought leaders and professionals assembled by The Knowledge Group will provide a discussion for patent prosecuting and litigating attorneys and patent agents on PTAB patent proceedings and the best practices and strategies in PGR, IPR and CBM challenges.
Some of the major topics that will be covered in this course are:
- Inter Partes Review
- Post-Grant Review
- Covered Business Method
- Best Practices for Patentees & Third Parties
- Best Practices in Adapting to PTAB Challenges
- Recent Regulatory Updates
Seyfarth Shaw LLP
- Strategies for patent owner preliminary responses, including: how to identify and present flaws in a petition that can lead to non-institution, challenging a petition under the PTAB’s discretionary authority, challenging prior art qualification, and when and how to use an expert declaration at the POPR state, institution decision, strategies for patent owner responses and expert reports, motions to amend and Aqua products
Buchanan Ingersoll & Rooney PC
- Overall PTAB landscape, pre-trial strategies, multiple petitions filed against a single patent and PTAB discretion, and formulating patentability challenges.
McAndrews, Held & Malloy
- Post-institution strategies and you do pre-filing/petition drafting considerations depositions, petitioner replies and how to challenge new arguments or evidence, motions to exclude, and oral argument (and demonstratives).
- Federal Circuit’s en banc decision in Aqua Products
Who Should Attend:
- Patent Licensing Attorneys
- Patent Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Private Companies
- Private Practitioners
- Other related and interested individuals
King Lit Wong, Ph.D., is a senior counsel in the Intellectual Property Department of Seyfarth Shaw LLP’s Washington, D.C. office. He has extensive experience managing worldwide patent portfolios as well as preparing and prosecuting patent applications, including re-examinations and reissues, related to pharmaceuticals, chemicals, polymers, nutraceuticals, biotechnology, diagnostics, biologics such as vaccines, antibodies, enzymes, and peptides, skin care products, cosmetics, nanotechnology, and fuel cells both in the United States and abroad. He also has extensive experience preparing, prosecuting and obtaining design and plant patents.
Dr. Wong has provided freedom-to-operate, invalidity and patentability opinions for clients in the pharmaceutical, chemical and biotechnology industries.
King Lit Wong, Ph.D., is a senior counsel in the Intellectual Property Department of Seyfarth Shaw LLP’s Washington, D.C. office. He has extensive experience managing worldwide patent portfolios as well as preparing and prosecuting patent applications, including …
Roger Lee is Counsel at Buchanan Ingersoll & Rooney in Alexandria, VA. Roger specializes in post-grant patent proceedings before the U.S. Patent and Trademark Office including inter partes reviews and reexaminations. Roger regularly counsels clients on a variety of patent-related matters including patent prosecution and litigation in federal courts. He is experienced in a range of technologies including polymer chemistry, medical devices, pharmaceuticals, display devices, electro-mechanical devices, and semiconductor manufacturing.
Read Roger’s insights on post-grant patent proceedings at Buchanan PTAB Report.
Roger Lee is Counsel at Buchanan Ingersoll & Rooney in Alexandria, VA. Roger specializes in post-grant patent proceedings before the …
Chris Scharff’s practice includes all areas of intellectual property, with an emphasis on patent litigation through discovery, trial, and appeal to the Federal Circuit and U.S. Supreme Court, as well as inter partes review (“IPR”) proceedings before the U.S. Patent and Trademark Office. Chris was recently recognized as one of the Top 100 most active IPR practitioners in the U.S. by Docket Navigator. He is also a regular columnist on IPR practice and procedure for InsideCounsel.com. Chris has represented clients in large-scale patent disputes on technologies as varied as orthopedic implants, surgical equipment, infusion pumps, spinal surgery devices, GPS hardware, chemical products, advanced materials, automotive technology, food processing and computer software.
Chris Scharff’s practice includes all areas of intellectual property, with an emphasis on patent litigation through discovery, trial, and appeal …
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About Seyfarth Shaw LLP
Seyfarth Shaw LLP has more than 850 attorneys and provides a broad range of legal services in the areas of intellectual property, labor and employment, employee benefits, litigation, corporate and real estate. With offices in Atlanta, Boston, Chicago, Houston, London, Los Angeles, Melbourne, New York, Sacramento, San Francisco, Shanghai, Sydney and Washington, D.C., Seyfarth’s clients include over 300 of the Fortune 500 companies and reflect virtually every industry and segment of the economy. A recognized leader in delivering value and innovation for legal services, Seyfarth’s acclaimed SeyfarthLean client service model has earned numerous accolades from a variety of highly respected third parties, including industry associations, consulting firms and media.
About Buchanan Ingersoll & Rooney PC
Buchanan Ingersoll & Rooney PC brings true partnership to their clients. With more than 500 attorneys and government relations professionals in 18 offices in the United States, Buchanan has formalized a model for consistently delivering the service attributes their clients most value. A nationally recognized firm, they provide a wide range of services in the areas of health care, financial services and banking, litigation, intellectual property, labor and employment, real estate, corporate and business law, tax, energy, and government relations.
For more information on Buchanan’s Patent Office Litigation services, visit www.BIPC.com.
About McAndrews, Held & Malloy
McAndrews is an intellectual property law firm located in Chicago, Illinois. McAndrews, offers a deep bench of experts in patents, trademarks, copyrights, trade secrets, and unfair competition, with all of its attorneys having a degree in science or engineering. While best known for its record of litigation success, McAndrews is also recognized as a leading firm in IP procurement, post-grant proceedings, IP opinions and investigations, global portfolio management, IP development and licensing, M&A support, and design rights. McAndrews’ clients include multinational corporations, Fortune 500 companies, startups, and world-renowned universities. It is continually recognized and honored by respected legal and business media and IP organizations for its achievements in intellectual property law.