Parallel Patent Proceedings Before the PTAB and Federal Court Post-AIA

Navigating Litigation Stays, Discovery and Settlements Concurrent with PTAB Review

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

Conducted on Thursday, March 20, 2014

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel involved in challenging or defending patent validity on the impact of concurrent proceedings at the USPTO and in the courts on stays, discovery and settlements. The panel will offer best practices for dealing with concurrent litigation and USPTO proceedings.

Description

The AIA offers alternative procedures to challenge patents. However, use of these procedures does not eliminate civil litigation and makes it more likely that the parties will be involved in concurrent USPTO and court proceedings regarding a patent's validity.

Counsel must consider how a PTAB review will have on a matter also in the courts. For example, the PTAB's decision in Versata invalidated the patent, which had been approved by the Federal Circuit after much litigation. Parties may also seek to stay litigation in favor of USPTO determination.

Patent counsel involved in concurrent patent matters must understand the impact on stays, discovery and settlements.

Listen as our authoritative panel of patent attorneys examines the interplay between the new administrative review and district court proceedings, the limitations placed by the AIA, stays, and practical considerations post-AIA when determining whether to seek or oppose a stay pending IPR USPTO review. The panel will also discuss issues and considerations related to settlements and discovery, and will offer best practices for dealing with concurrent litigation and USPTO proceedings.

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Outline

  1. Interplay between the new administrative review and district court proceedings
    1. Limitations placed by the AIA
    2. Stays
    3. Practical considerations post-AIA when determining whether to seek or oppose a stay pending IPR USPTO review
    4. Discovery—issues and considerations
    5. Settlements—issues and considerations
  2. Lessons from recent USPTO actions and litigation
  3. Best practices for dealing with concurrent litigation and PTAB proceedings

Benefits

The panel will review these and other key questions:

  • What litigation tactics can counsel employ to challenge or defend patent validity?
  • What are the implications for discovery and settlement when patents are challenged in concurrent proceedings?
  • What challenges do counsel face when challenging or defending patent validity in concurrent proceedings?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Michael L. Kiklis
Michael L. Kiklis
Partner
Oblon Spivak McClelland Maier & Neustadt

Mr. Kiklis focuses on post-grant counseling, patent litigation and patent prosecution. With an extensive...  |  Read More

Eric W. Schweibenz
Eric W. Schweibenz
Partner
Oblon Spivak McClelland Maier & Neustadt

Mr. Schweibenz focuses on patent litigation in the federal courts and before the U.S. ITC. He represents domestic...  |  Read More

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