HomeWebcastUSPTO Post-Grant Proceedings: Significant Court Decisions Explored!
Online CLE Post-Grant Proceedings CLE

USPTO Post-Grant Proceedings: Significant Court Decisions Explored!

Live Webcast Date: Thursday, June 28, 2018 from 10:00 am to 12:00 pm (ET)
Intellectual Property Law (CLE)Recording

Online CLE Post-Grant Proceedings

Join us for this Knowledge Group Online CLE Post-Grant Proceedings Webinar. The Patent Trial and Appeal Board (PTAB) remains to be the busiest U.S. patent court, as post-grant trial proceedings are continuously pursued. Since USPTO proceedings have significant effects on the patent monetization efforts and litigation strategies, lawyers and stakeholders should keep themselves abreast of the notable case decisions in 2017 as well as those cases to watch out for this 2018.

Join a panel of key thought leaders and PTAB litigators assembled by The Knowledge Group as they bring the audience to a road beyond the basics of USPTO Post-Grant Proceedings and as they delve into the depth-analysis of the current trends and recent court rulings. Speakers will also provide the audience with practical strategies in bringing out the best in these cases in a rapidly evolving legal climate.

Key topics include:

  • USPTO Post-Grant Proceedings – Recent Trends and Developments
  • PTAB-Related Decisions of 2017
  • Cases to Watch Out for this 2018
  • Challenges
  • Practical Litigation Strategies

Agenda

Brian Koide, Partner
Dunlap Bennett & Ludwig PLLC
  • Whether the PTAB is a “death squad”—what the stats actually say relying on both the PTAB statistics and LexMachina.
  • Changes under Director Iancu—Packard vs. Nautilus, eligibility, etc.

Robert M. Hansen, Esq., Founding Partner
The Marbury Law Group, PLLC

USPTO Post-Grant Proceedings: Significant Court Decisions

Robert Hansen bullet points

Topic:  The Important Role of 35 U.S.C. 325(d) in Decisions to Grant IPRs/PGRs

  • IPRs/PGRs are not appeals of a patent grant.  PTAB can and does deny institution under 35 U.S.C. 325(d) because the grounds are the same or similar to those considered by USPTO. Institution of an IPR/PGR is discretionary and non-appealable.
  • Has been an important consideration because best prior art is often before the examiner, particularly in PGRs where 3rd party submissions may have been made.
  • SAS Institute Inc. v. Iancu may increase the importance of 325(d):
    • SAS eliminated “partial institutions” where the PTAB could deny institution on some claims and proceed with others.
    • SAS is expected to increase the workload of the PTAB as well as the participants in an IPR and PGR post-institution due to the likely increased in the number of claims and arguments at issue.
    • 325(d) gives the PTAB discretion to deny institution of the entire petition, which the PTAB use more often in view of the expected increase in workload
  • Recent informative decisions denied IPR/PGR on 325(d) grounds based on prosecution of a different patent (e.g., parent), cumulative new prior art, and new prior art involving similar arguments.  Accordingly, 325(d) is a major trap for Petitioners, and a potentially petition-killing defense for Patent Owners.
    • For Patent Owner, 325(d) provides effective grounds to challenge IPR/PGR decisions.
    • For Petitioner, SAS emphasizes the need to fully evaluate 325(d) issues to avoid denial of institution
  • Recent cases illuminating the 325(d) issues will be summarized.
  • Six factors used by PTAB to evaluate 325(d) grounds will be identified and discussed.
  • Conclusion:  Petitioners should address the 6 factors, and Patent Owners should consider 325(d) in the Preliminary Response.

Gregory Discher, Of Counsel
Covington & Burling LLP
  • To discuss developments in appellate review of Inter Partes review time-bar determinations, claim amendment procedures in post-grant proceedings, and patent owner estoppel considerations

Britton Davis, Counsel
King & Spalding LLP
  • RPI and privity developments after Western Geco v. Ion Geophysical and Wi-Fi One v. Broadcom
  • Remands by the Federal Circuity for lack of adequate explanation by the Board
  • The Board’s treatment of prior Federal Circuit claim constructions after Knowles Elecs. v. Iancu

Who Should Attend

  • Patent Licensing Attorneys
  • Patent Law Attorneys
  • Patent Prosecutors
  • Patent Consultants
  • Patent Litigators
  • Patentees
  • Private Companies
  • Other related and interested individuals

Online CLE Post-Grant Proceedings

Brian Koide, Partner
Dunlap Bennett & Ludwig PLLC
  • Whether the PTAB is a “death squad”—what the stats actually say relying on both the PTAB statistics and LexMachina.
  • Changes under Director Iancu—Packard vs. Nautilus, eligibility, etc.

Robert M. Hansen, Esq., Founding Partner
The Marbury Law Group, PLLC

USPTO Post-Grant Proceedings: Significant Court Decisions

Robert Hansen bullet points

Topic:  The Important Role of 35 U.S.C. 325(d) in Decisions to Grant IPRs/PGRs

  • IPRs/PGRs are not appeals of a patent grant.  PTAB can and does deny institution under 35 U.S.C. 325(d) because the grounds are the same or similar to those considered by USPTO. Institution of an IPR/PGR is discretionary and non-appealable.
  • Has been an important consideration because best prior art is often before the examiner, particularly in PGRs where 3rd party submissions may have been made.
  • SAS Institute Inc. v. Iancu may increase the importance of 325(d):
    • SAS eliminated “partial institutions” where the PTAB could deny institution on some claims and proceed with others.
    • SAS is expected to increase the workload of the PTAB as well as the participants in an IPR and PGR post-institution due to the likely increased in the number of claims and arguments at issue.
    • 325(d) gives the PTAB discretion to deny institution of the entire petition, which the PTAB use more often in view of the expected increase in workload
  • Recent informative decisions denied IPR/PGR on 325(d) grounds based on prosecution of a different patent (e.g., parent), cumulative new prior art, and new prior art involving similar arguments.  Accordingly, 325(d) is a major trap for Petitioners, and a potentially petition-killing defense for Patent Owners.
    • For Patent Owner, 325(d) provides effective grounds to challenge IPR/PGR decisions.
    • For Petitioner, SAS emphasizes the need to fully evaluate 325(d) issues to avoid denial of institution
  • Recent cases illuminating the 325(d) issues will be summarized.
  • Six factors used by PTAB to evaluate 325(d) grounds will be identified and discussed.
  • Conclusion:  Petitioners should address the 6 factors, and Patent Owners should consider 325(d) in the Preliminary Response.

Gregory Discher, Of Counsel
Covington & Burling LLP
  • To discuss developments in appellate review of Inter Partes review time-bar determinations, claim amendment procedures in post-grant proceedings, and patent owner estoppel considerations

Britton Davis, Counsel
King & Spalding LLP
  • RPI and privity developments after Western Geco v. Ion Geophysical and Wi-Fi One v. Broadcom
  • Remands by the Federal Circuity for lack of adequate explanation by the Board
  • The Board’s treatment of prior Federal Circuit claim constructions after Knowles Elecs. v. Iancu

Online CLE Post-Grant Proceedings

Online CLE Post-Grant Proceedings

Brian KoidePartnerDunlap Bennett & Ludwig PLLC

Brian Koide is a partner at DBL, where he focuses on patent litigation. Throughout his twenty-year legal career, he has represented clients in high-tech, high-stakes patent infringement disputes.  His current and former clients include Alcoa, AT&T, Avaya, Bendix, Kodak, Marriott, Ricoh, Sprint, Yamaha, and ZURU. As a registered patent attorney with an engineering degree, Brian combines his litigation, technical, and substantive patent law expertise to effectively represent his clients in all phases of patent litigation, including before the PTAB, district courts, and the United States International Trade Commission (ITC). Brian has represented clients in more than 50 patent infringement cases involving a wide range of technologies, including network equipment, encryption, toys, smart phones, mobile apps, WiFi, graphic user interfaces, consumer electronics, commercial vehicles, digital cameras, digital printers, scanners, electronic payment systems, on-line auctions, digital-image processing, and speech compression.

Brian received his J.D. from the Georgetown University Law Center and his B.S. in Engineering from the University of California, San Diego. Brian is admitted to practice in the Virginia, California, and the District of Columbia and registered to practice before the USPTO. Prior to entering the legal field, Brian worked as an aerospace engineer.

Online CLE Post-Grant Proceedings

Robert M. Hansen, Esq.Founding PartnerThe Marbury Law Group, PLLC

Bob Hansen is Co-managing Partner of The Marbury Law Group, PLLC, a medium-sized law firm emphasizing patent prosecution, intellectual property litigation, and general corporate law.  Mr. Hansen has extensive experience in all aspects of patent law, including patent preparation and prosecution; post grant review, inter parte reviews and ex partereexamination; patentability, validity, and infringement opinions; strategic patent portfolio development; litigation; and licensing. Mr. Hansen has technical expertise in the areas of electronic devices and systems, computer software, telecommunications, information security, mechanical devices, and medical devices and systems. In addition to 19 years of experience as a patent attorney, Mr. Hansen has 20 years of experience as an engineer, program manager and business executive with startup ventures and Fortune 100 companies, as well as 7 years experience as an Engineering Duty Officer in the U.S. Navy.

Online CLE Post-Grant Proceedings

Gregory DischerOf CounselCovington & Burling LLP

Gregory Discher's practice focuses on inter partes and ex parte post grant trials and proceedings, and complex patent prosecution before the U.S. Patent and Trademark Office.  Mr. Discher also advises clients in connection with patent infringement, invalidity, freedom-to-operate, and due diligence investigations and opinions.  Mr. Discher’s extensive experience in Inter Partes Review (IPR) trials includes having served as counsel for over fifty post grant matters, representing clients in drafting of petitions through oral argument at the PTAB, and through appeal at the Federal Circuit in connection with high-stakes patent litigation matters.  Mr. Discher has also successfully represented clients in ex parte and inter partes reexamination proceedings, and patent reissue proceedings.

Formerly an engineer at Lockheed Martin, Mr. Discher's technical background encompasses experience in a variety of Internet, telecommunications, networking, and messaging technologies and protocols, software and software-related inventions, semiconductor device and fabrication technologies, display technologies, electronics, electronic commerce, and mechanical technologies.

Online CLE Post-Grant Proceedings

Britton DavisCounselKing & Spalding LLP

Britton Davis is a counsel in King & Spalding LLP’s trail and global disputes practice. Brit is a trial attorney who focuses on patent disputes in high-stakes litigation involving complex technologies in US district court and before the PTAB.

Brit represents plaintiffs and defendants in all phases of patent litigation, from initial diligence investigations, through trial and appeals. Brit has been trial counsel to billion-dollar companies in cases where hundreds of millions of dollars were at stake. He has argued claim construction motions, evidentiary motions, JMOL motions, and discovery motions in district court and before the PTAB. And Brit was instrumental in helping to secure rare complete patent owner wins in two inter partes review proceedings on all claims under review.

Prior to beginning his legal career, Brit worked as an engineer for Veeco Instruments Inc., in the Metrology & Instrumentation Group. At Veeco, Brit designed, built, and implemented new products and product improvements in Veeco's research-focused line of atomic force microscopes. Brit's product design experience covers mechanical, optical, and electrical systems; programmable semiconductor devices; and design for manufacturability and cost reduction.

Brit graduate with honors from The University of Texas School of Law, where he was on the executive board of the  Texas Intellectual Property Law Journal. Brit graduated with high honors from the University of California, Santa Barbara with degree in mechanical engineering, where he was a member of the Tau Beta Pi National Engineering Honors Society and the Pi Tau Sigma National Mechanical Engineering Honors 


Click Here to Read Additional Material

Online CLE Post-Grant Proceedings

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   Experience in patent law

Course Code:
   147195

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Since its founding in 2001 by two U.S. Army officers, Dunlap Bennett & Ludwig has represented clients in a wide range of matters, including intellectual property, business disputes, government contracts, corporate and business transactions, estate planning, and real estate transactions. Their intellectual property practice includes a complete range of services pertaining to domestic and international patents, trademarks, and copyrights. Their clients include small and medium-sized established businesses and start-ups, Fortune 500 companies, and sovereign governments. Their attorneys come from diverse backgrounds and combine decades of experience to serve their clients and defend their interests. Dunlap Bennett & Ludwig offers flexible ideas, solutions, and fees in a variety of legal business matters.

Website: https://www.dbllawyers.com/

Located in Reston, Virginia, The Marbury Law Group, PLLC is a full-service intellectual property law firm of over 20 experienced lawyers with a proven track record of success in protecting and enforcing all aspects of client intellectual property.  Marbury assists public and private sector clients in preparing, filing, and prosecuting patent and trademark applications before the U.S. Patent and Trademark Office (USPTO), challenging and defending patents before the USPTO Patent Trial and Appeal Board and federal district courts, international patent and trademark procurement and prosecution, brand protection, domestic and international patent and trademark licensing, patent and trademark counseling, including pre-litigation counseling and dispute resolution, and copyright filing and assignment at the U.S. Copyright Office and foreign copyright offices.  Website:  www.marburylaw.com

Website: https://www.marburylaw.com/

Covington is a full-service firm of over 1,000 lawyers across offices in Beijing, Brussels, Dubai, Frankfurt, Johannesburg, London, Los Angeles, New York, San Francisco, Seoul, Shanghai, Silicon Valley and Washington. In an increasingly regulated world, we have an exceptional ability to help clients navigate their most complex business problems, deals, and disputes. Our distinctively collaborative culture allows us to be truly one team globally, drawing on the diverse experience of lawyers and advisors across the firm by seamlessly sharing insight and expertise. www.cov.com

Website: https://www.cov.com/

King & Spalding helps leading companies advance complex business interests in more than 160 countries. Working across a highly integrated platform of more than 1,000 lawyers in 20 offices globally, we deliver tailored commercial solutions through world-class offerings and an uncompromising approach to quality and service.

Brian Koide is a partner at DBL, where he focuses on patent litigation. Throughout his twenty-year legal career, he has represented clients in high-tech, high-stakes patent infringement disputes.  His current and former clients include Alcoa, AT&T, Avaya, Bendix, Kodak, Marriott, Ricoh, Sprint, Yamaha, and ZURU. As a registered patent attorney with an engineering degree, Brian combines his litigation, technical, and substantive patent law expertise to effectively represent his clients in all phases of patent litigation, including before the PTAB, district courts, and the United States International Trade Commission (ITC). Brian has represented clients in more than 50 patent infringement cases involving a wide range of technologies, including network equipment, encryption, toys, smart phones, mobile apps, WiFi, graphic user interfaces, consumer electronics, commercial vehicles, digital cameras, digital printers, scanners, electronic payment systems, on-line auctions, digital-image processing, and speech compression.

Brian received his J.D. from the Georgetown University Law Center and his B.S. in Engineering from the University of California, San Diego. Brian is admitted to practice in the Virginia, California, and the District of Columbia and registered to practice before the USPTO. Prior to entering the legal field, Brian worked as an aerospace engineer.

Bob Hansen is Co-managing Partner of The Marbury Law Group, PLLC, a medium-sized law firm emphasizing patent prosecution, intellectual property litigation, and general corporate law.  Mr. Hansen has extensive experience in all aspects of patent law, including patent preparation and prosecution; post grant review, inter parte reviews and ex partereexamination; patentability, validity, and infringement opinions; strategic patent portfolio development; litigation; and licensing. Mr. Hansen has technical expertise in the areas of electronic devices and systems, computer software, telecommunications, information security, mechanical devices, and medical devices and systems. In addition to 19 years of experience as a patent attorney, Mr. Hansen has 20 years of experience as an engineer, program manager and business executive with startup ventures and Fortune 100 companies, as well as 7 years experience as an Engineering Duty Officer in the U.S. Navy.

Gregory Discher's practice focuses on inter partes and ex parte post grant trials and proceedings, and complex patent prosecution before the U.S. Patent and Trademark Office.  Mr. Discher also advises clients in connection with patent infringement, invalidity, freedom-to-operate, and due diligence investigations and opinions.  Mr. Discher’s extensive experience in Inter Partes Review (IPR) trials includes having served as counsel for over fifty post grant matters, representing clients in drafting of petitions through oral argument at the PTAB, and through appeal at the Federal Circuit in connection with high-stakes patent litigation matters.  Mr. Discher has also successfully represented clients in ex parte and inter partes reexamination proceedings, and patent reissue proceedings.

Formerly an engineer at Lockheed Martin, Mr. Discher's technical background encompasses experience in a variety of Internet, telecommunications, networking, and messaging technologies and protocols, software and software-related inventions, semiconductor device and fabrication technologies, display technologies, electronics, electronic commerce, and mechanical technologies.

Britton Davis is a counsel in King & Spalding LLP’s trail and global disputes practice. Brit is a trial attorney who focuses on patent disputes in high-stakes litigation involving complex technologies in US district court and before the PTAB.

Brit represents plaintiffs and defendants in all phases of patent litigation, from initial diligence investigations, through trial and appeals. Brit has been trial counsel to billion-dollar companies in cases where hundreds of millions of dollars were at stake. He has argued claim construction motions, evidentiary motions, JMOL motions, and discovery motions in district court and before the PTAB. And Brit was instrumental in helping to secure rare complete patent owner wins in two inter partes review proceedings on all claims under review.

Prior to beginning his legal career, Brit worked as an engineer for Veeco Instruments Inc., in the Metrology & Instrumentation Group. At Veeco, Brit designed, built, and implemented new products and product improvements in Veeco's research-focused line of atomic force microscopes. Brit's product design experience covers mechanical, optical, and electrical systems; programmable semiconductor devices; and design for manufacturability and cost reduction.

Brit graduate with honors from The University of Texas School of Law, where he was on the executive board of the  Texas Intellectual Property Law Journal. Brit graduated with high honors from the University of California, Santa Barbara with degree in mechanical engineering, where he was a member of the Tau Beta Pi National Engineering Honors Society and the Pi Tau Sigma National Mechanical Engineering Honors 

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