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 CLE webinar with Q&A


Conducted on Thursday, March 20, 2014
Recorded event now available


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.

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, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. Kiklis focuses on post-grant counseling, patent litigation and patent prosecution. With an extensive background in computer science, he focuses his practice on software patent matters.  He frequently handles high stakes matters, having been involved in several cases in which over $1 billion was at stake.

Eric W. Schweibenz, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. Schweibenz focuses on patent litigation in the federal courts and before the U.S. ITC. He represents domestic and foreign companies and their U.S. affiliates and subsidiaries across a spectrum of diverse technologies. He has worked on Section 337 ITC investigations, patent and trademark infringement and antitrust actions, Section 146 actions, and patent interference cases.

Ordering

On-Demand CLE - Streaming Audio

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On-Demand CLE Audio $149.00

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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

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

Michael Gray

Kohler

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

David H. Vance

Vance Intellectual Property

I thought the seminar was at exactly the right level.

Michelle K. Holoubek

Sterne, Kessler, Goldstein & Fox

The presentation was perfect - not too technical or legal. Keep up the good work!!

Patricia Embley

I liked that I was able to garner some important information without being overwhelmed or lose interest.

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Richards, Layton & Finger

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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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