POPRs and the New PTAB Final Rules: Maximizing the Impact of POPRs in IPR Petitions

Recording of a 90-minute CLE webinar with Q&A


Conducted on Wednesday, May 4, 2016

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on how to maximize the impact of a Patent Owner Preliminary Response (POPR), in light of the PTAB final rules. The panel will discuss insufficient evidence in the petition, favorable claim constructions, and attacking threshold issues.

Description

Perhaps ironically, on April 1, PTAB issued its final rules relating to AIA Post-Grant Proceedings. There are two issues particularly important for the AIA practitioner: (1) the effective date of the rules and (2) the possibility that the patent owner can generate and rely on new evidence, in support of its POPR. POPRs remain patent owners’ best weapon to try and obtain a petition denial. Petition denials are a complete “win” for the patent owner, and although the PTAB grant rate remains high (about 70%), denials are possible.

Listen as our authoritative panel of patent practitioners discusses ways to maximize the impact of a POPR, particularly in view of the new final rules, and touching on pointing out insufficient evidence in the petition, proposing favorable claim constructions, and attacking threshold issues such as real-party-in-interest, time bar and estoppel.

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Outline

  1. Impact of final rules on POPRs
  2. Analysis of patent owner arguments that worked (IPR petitions denied)
  3. Maximizing impact of POPR
    1. Evidence in the petition
    2. Favorable claim construction proposal
    3. Attacking threshold issues

Benefits

The panel will review the following and other key issues:

  • To which PTAB post-grant proceeding do the new rules apply?
  • What are the pros and cons of generating and presenting new evidence in the patent owner preliminary response?

Faculty

Bell, Cory
Cory C. Bell

Atty
Finnegan Henderson Farabow Garrett & Dunner

Mr. Bell focuses on patent prosecution management, client counseling, post-grant practice, and litigation, with an...  |  Read More

Joshua L. Goldberg
Joshua L. Goldberg

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Goldberg focuses on patent office proceedings, client counseling, and litigation. Devoting the majority of his time...  |  Read More

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

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