PTAB Patent Proceedings: Best Practices and Strategies You Must Know for 2018
In Aqua Products v. Matal, the Federal Circuit discarded a rule from the USPTO stating that patent owners, when seeking to amend patent claims during AIA reviews, had the burden of proving the patentability of proposed new claims. In response to the court's decision, the Patent Trial and Appeal Board (PTAB) released its "Guidance on Motions to Amend in view of Aqua Products" last November 21, 2017. The new guidance removed the burden of persuasion as to the patentability of substitute claims from the patent owner and only requires patent owners to meet the requirements of 35 U.S. Code § 316, Rule 42.121 (IPR) and Rule 42.221 (PGR/CBM).
However, despite the new guidance, several issues are still left without clarity. Therefore, it continues to be a best practice for patent owner to explain in its motion why its claims are patentable.
Our panel of key thought leaders and practitioners brought together by The Knowledge Group will offer a discussion of the fundamentals as well as updates regarding PTAB Patent Proceedings. They will offer best practices and strategies in light of the recent developments especially in the practice of motion to amend.
In a LIVE webcast, the speakers will discuss:
- Overall PTAB Landscape
- Recent Case Law Updates
- Aqua Products v. Matal
- PTAB Guidance on Motions to Amend
- Best Practices and Strategies
- What to Watch Out for in 2018
Irell & Manella LLP
- Who are the PTAB Judges and what do they want from the parties?
- Institution rates and 35 U.S.C. § 314(a), § 325(d) denials
- Follow-on petitions: General Plastic v. Canon, IPR2016-01357, Paper 19 (PTAB 9/6/17) Precedential
- Prosecution history: Hospira v. Genentech, IPR2017-00739, Paper 16 (PTAB 7/27/17) Informative
- Petition Content – 37 C.F.R. § 42.104
- Claim construction after Cuozzo
- Disclosures in the prior art
- Public accessibility of printed publications
- The importance of preliminary responses
- Is it really prior art
- Claim construction
- Did petitioner discuss every single element
- Use of evidence from parallel proceedings
- Preliminary Responses and New Testimonial evidence
- What to do after institution for a patent owner
- Addressing specific concerns in the institution decisions
- Building a record for appeal
- Reissue for claim amendment
- Motions to Amend the claims after Aqua Products
- Aligning arguments before the PTAB and the district court
Who Should Attend:
- Patent Licensing Attorneys
- Patent Law Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Private Companies
- Private Practitioners
- Other related and interested individuals
Brian Murphy served as a Lead Administrative Patent Judge at the Patent Trial and Appeal Board from 2014–2017, where he presided over nearly 200 Inter Partes Review, Post Grant Review, and Covered Business Method Review proceedings. Brian drafted more than 60 substantive decisions and mentored numerous AIA trial section judges during his time as a PTAB Lead Judge. He is also a trial lawyer with thirty years of experience litigating and trying patent cases in the federal courts and International Trade Commission, with particular expertise in Hatch-Waxman patent litigation. Brian is the Chair of Haug Partners’ Post Grant Review Practice.
Brian Murphy served as a Lead Administrative Patent Judge at the Patent Trial and Appeal Board from 2014–2017, where he …
H. Annita Zhong is of counsel in the Los Angeles office of Irell & Manella LLP. Her practice focuses on patent litigation and licensing. She has litigated patent-related cases before numerous federal and state courts, the International Trade Commission, arbitral panels and the USPTO's Patent Trial and Appeal Board ("PTAB"). She also regularly provides counseling regarding the exploration of patent portfolios.
Dr. Zhong has experience with a broad spectrum of technologies including semiconductor fabrication and packaging, computer architecture, telecommunication hardware, digital signal processing, wireless communication, chemistry and materials.”
H. Annita Zhong is of counsel in the Los Angeles office of Irell & Manella LLP. Her practice focuses on …
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Method of Presentation:
Experience in patent practice or intellectual property generally
NY Category of CLE Credit:
Areas of Professional Practice
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About Haug Partners
Haug Partners is a full-service, national law firm that provides integrated multidisciplinary legal services for life science and technology companies. Our service offerings include: (i) Patent Litigation and PTAB Post Grant Proceedings; (i) Antitrust Litigation and Counseling; (ii) Commercial Litigation and Strategic Counseling; (iii) Due Diligence; (iv) FDA Compliance and Counseling; (v) Intellectual Property Enforcement; (vi) Intellectual Property Procurement and Strategy; (vii) International Trade Commission; (viii) Investigations, Compliance, and Risk Mitigation Services; (ix) Licensing and Transactions; and (x) Trademarks and Unfair Competition. With offices in New York, Washington, D.C., and Boston, and through relationships with firms in Germany, China, Japan, and other key international markets, Haug Partners has the resources, technical expertise, legal acumen, and business judgment to consistently deliver optimal outcomes for clients.
About Irell & Manella LLP
Irell & Manella LLP, based in Southern California, has a highly regarded IP litigation group. This group includes a team of registered patent attorneys who regularly participate in post-issuance proceedings. The group features a former Chief Administrative Law Judge of the Patent Trial and Appeal Board.