Leveraging Post-Grant Patent Proceedings Before the PTAB

Best Practices for Patentees and Third Parties in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Challenges

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


Conducted on Thursday, June 12, 2014
Recorded event now available


This CLE webinar will discuss post-grant patent practice and offer best practices for counsel to either patentees or third parties in inter partes review, post-grant review, and covered business method challenges.

Description

The AIA created the Patent Trial and Appeal Board (PTAB) as part of its overhaul of post-grant patent practice before the USPTO. Among the significant changes are new options, including inter partes review, the transitional program for covered business method patents, and soon Post Grant Review. These PTAB challenges are now radically changing the patent monetization and litigation landscape.

The PTAB exceeded 1200 post-grant proceedings recently and is quickly becoming the leading forum in the U.S. for high value patent disputes. PTAB proceedings are proving to provide a viable and cost-saving alternative to patent litigation, but is it too effective for some? And what are the legislative changes pending that may again alter this evolving landscape?

The evolution of validity-based patent challenges before the PTAB impacts litigators, in-house counsel and stakeholders. Counsel must understand the many aspects involved to work with patent holders and challengers to leverage the new PTAB practice and develop strategies using post-grant practice.

Listen as our authoritative panel of patent attorneys examines post-grant practice and offers best practices for counsel to patentees and third parties in inter partes review, post-grant review, and covered business method challenges.

Outline

  1. Inter partes review
    1. Best practices for patentees
    2. Best practices for third parties
  2. Post-grant review
    1. Best practices for patentees
    2. Best practices for third parties
  3. Covered business method patent challenges
    1. Best practices for patentees
    2. Best practices for third parties

Benefits

The panel will review these and other key questions:

  • How has post-grant practice developed since the PTAB started?
  • How is the PTAB adapting to the increased workflow and what rule changes are anticipated in the months ahead?
  • What are the best practices for these proceedings together with concurrent litigation?
  • How are patentees adapting to the treat of PTAB challenges and what concurrent office proceedings are available to hedge against such attacks?

Faculty

Greg H. Gardella, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. Gardella focuses on post-grant patent proceedings, patent prosecution, strategic counseling, due diligence investigations, and pre-suit investigations. He leverages his extensive litigation background to focus on adversarial post-grant USPTO proceedings. He has handled a significant amount of high-profile patent reexamination disputes, such as the defense of the famous TiVo time warp patent.

Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the Reexamination/Reissue team responsible for electronics, wireless communications, software and computer-related inventions and business methods. He handles post-issuance proceedings at the USPTO including reissue applications, ex parte and inter partes reexamination proceedings and appeals to the BPAI.

Ordering

On-Demand CLE - Streaming Audio

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On-Demand CLE Audio $297.00

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Recorded Event

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Strafford is an approved provider and self-study CLE credit is available in the following states. (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

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Program Materials

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Customer Reviews

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

We were given simple and clear answers to complex questions, lots to work with.

Patrick R. Kelly

Glenn, Feldmann, Darby & Goodlatte

The seminar was understandable, fluid and thorough for the topics covered.

Susan L. Dolin, Esq.

Susan L. Dolin

The scope of the program provided in-depth information, as opposed to a general survey of issues/topics.

Joseph Zawila

Wolff & Samson

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Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

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