PTAB Patent Proceedings: Best Practices and Strategies
Earlier this year, the United States Patent and Trademark Office (USPTO) released its long-awaited package of rules to govern and to make targeted modifications for America Invents Act (AIA) trial practice before the Patent Trial and Appeal Board (PTAB). The new rules will allow patent owners to submit an expert declaration with the preliminary response and also allow petitioners to seek leave to file a reply to the preliminary response. The rules also allow a party to request district court-type claim constructions for a patent if the party certifies that it will expire within 18 months of the Notice of Filing Date Accorded. The final rules took effect last May 2, 2016 and will apply to all future and ongoing PTAB proceedings.
While it will take time to see the impact of these rules on PTAB practices, patent owners are expected to immediately start submitting expert rebuttal declarations with their preliminary responses. In this two-hour LIVE Webcast, a panel of key thought leaders and professionals assembled by The Knowledge Group will offer a discussion for patent prosecuting and litigating attorneys and patent agents on the best practices and strategies for patent application preparation and prosecution, as well as a review of recent developments in the PTAB Patent Proceedings. The panel will also discuss issues involving patent owner preliminary response, amendments, depositions, objections to evidence, and will provide a roadmap in handling multiple proceedings at the PTAB and district court and when to take certain actions.
Key topics will include:
- Inter Partes Review
- Post-Grant Review
- Best practices for patentees
- Best practices for third parties
- Post-Grant Practice Since PTAB
- Best Practices in Adapting to PTAB Challenges
- Up-to-the-Minute Regulatory Updates
Sughrue Mion PLLC
- Overview of Patent Owner Preliminary Responses that rely on evidence and Petitioner Replies
- Strategic considerations for multiple proceedings, including estoppel considerations
McAndrews, Held & Malloy
- Claim construction in an IPR
- strategies for when to provide claim constructions as a Petitioner or Patent Owner
- application of the broadest reasonable construction.
- Strategies for an effective Petition
- presenting non-redundant, yet alternative arguments for each claim
- best practices for proving express or inherent anticipation
- best practices for nonconclusory and supported obviousness arguments
- use of expert declarations and supporting evidence
Schwegman Lundberg and Woessner LLP
- General Introduction and Brief History of the PTAB and the proceeding of the post patent grant reviews, Inter Partes Reviews, Post-Grant Reviews and Covered Business Method patent reviews.
- Interplay of the post grant patent review with patent lawsuits.
- Strategy and negotiation for achieving best position in settlement.
- Interplay of settlement with PTAB rules and obligation to the public.
Who Should Attend:
- Patent Licensing Attorneys
- Patent Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Private Companies
- Private Practitioners
- Other related and interested individuals
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the protection and enforcement of designs and a wide range of electrical and mechanical technologies, including analytical/measurement systems, medical devices, HVAC systems, printers/copiers, telecommunications systems, data recording mediums, semiconductor fabrication, bearings, welding processes, sports equipment, footwear, and various automobile components, such as tires, transmissions, engines, fuel-injection systems, motors, lamps, steering systems, connectors/wiring, valves, and control/monitoring systems.
He has industry experience as a mechanical engineer and is a former patent examiner. His legal experience includes patent application preparation and prosecution; reexamination and reissue applications; inter partes review; patentability, validity, and infringement opinions; patent appeals to the Board of Patent Appeals and Interferences; and patent litigation.
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on 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 …
Neil Smith is Of Counsel with Schwegman, Lundberg and Woessner in San Jose, CA. He previously served as the first Administrative Patent Judge on the Patent Trial and Appeal Board, for the US Patent & Trademark Office’s Silicon Valley Satellite Office. Neil is a specialist in the use of the PTAB to challenge the patent validity.
Neil Smith began as patent attorney at the Atomic Energy Commission, and served as a law clerk to Judge Giles Rich on the predecessor to the Federal Circuit Court of Appeals. He is a graduate of Columbia College, Columbia Engineering, and Columbia Law School, and holds an LLM from GW Law.
Neil has served a leader of most of the important IP organizations in California. He was a member of the Executive Committee of the IP Section of the State Bar and authored its quarterly column on Ninth Circuit IP cases.
Neil is a former president of SFIPLA, was on the Boards of AIPLA, and the US Copyright Society. Neil is currently President of the SF Chapter of Licensing Executives Society. He served as a leader of many of the committees of the IP Sections of California and the ABA, and was the first edition of its Annual Review of Intellectual Property Law. He chaired committees of INTA, and served on the USPTO’s Trademark Public Advisory Committee.
Neil Smith has counseled clients on the protection and licensing/transfer of patents and other IP and new- technology cases. He has tried patent, trademark and copyright cases. He successfully litigated, for Sega, the first case involving indirect copyright infringement/contributory copyright infringement, even before the famous Napster case in the California courts.
He litigated, through the Ninth Circuit, the first copyright case dealing with the Internet technique of “framing.” He is a specialist in Trademarks, Internet issues and domain names, and litigated the first case dealing with metatags as trademark infringement, for client Playboy. His landmark case for Reebok in the Ninth Circuit established extraterritorial enforcement of the Lanham Trademark Act, and ex-parte seizures and the attachment of a counterfeiter’s assets. He filed an amicus brief for AIPLA, dealing with enforcement of the U.S. IP rights against infringing importations.
In addition to his high-level IP practice for clients, Mr. Smith is using his judicial experience and decades of IP litigation to serve as a special master, mediator, and arbitrator, to help resolve legal and discovery disputes. He serves on several ADR panels, including the US District Court for the Northern District of California, the Federal Circuit Court of Appeals Mediation Panel, FedARB, and does domain name dispute resolution arbitration for the World Intellectual Property Organization. He was recently named a leading technology neutral by the Silicon Valley Arbitration and Mediation Center.
Neil Smith is Of Counsel with Schwegman, Lundberg and Woessner in San Jose, CA. He previously served as the first …
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About Sughrue Mion PLLC
Sughrue Mion, based in Washington D.C., is a leading global intellectual property firm, counseling clients as they navigate the complexities of patent and trademark law. Sughrue’s practice is focused solely on intellectual property law, including counseling, prosecution, licensing, litigation, portfolio management and enforcement. Sughrue brings unmatched experience in patent interference proceedings and Post Grant Review, including ex parte and inter partes reexamination proceedings. In addition to their legal expertise, Sughrue’s attorneys have technical and scientific backgrounds ranging from electrical and computer technology to biotechnology and pharmaceuticals, allowing for a true understanding of their clients’ business challenges and goals.
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.
About Schwegman Lundberg and Woessner LLP
Schwegman has a highly focused intellectual property practice with a national and international client base of discerning and patent-savvy clients. The Schwegman firm has grown in 25 years from a small start-up IP firm to a national recognized power house for IP work. The Schwegman firm currently numbers over 140 attorneys and agents, located throughout the country, with advanced technical and life science degrees. Schwegman represents multinational corporations, middle-market businesses, universities, startups, and individuals. The firm is skilled in the post grant review proceedings of the Patent Trial and Appeal Board of the USPTO, and brings together its strong technology and patent application experience with the PTAB experience and knowledge of Neil Smith, who was appointed as the first Administrative Patent Judge on the Patent Trial and Appeal Board, for the US Patent & Trademark Office’s Silicon Valley Satellite Office. The PTAB handles appeals within the Patent Office, and a host of post-grant patent proceedings, which are becoming increasingly important in patent law.