Prosecution History Estoppel in Patent Litigation: Avoiding the Presumption, Limitation of Doctrine of Equivalents
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent litigators on prosecution history estoppel and when it applies. The panel will discuss the exceptions and the guidance provided by the courts in recent decisions. The panel will review strategies to avoid the presumption of estoppel while getting the desired claim allowed.
Outline
- Prosecution history estoppel
- When it applies
- Limiting the use of equivalents to expand protection
- Exceptions
- Recent court treatment
- Best practices for avoiding or overcoming the presumption
Benefits
The panel will review these and other important issues:
- What are the criteria for rebuttal of the presumption of estoppel?
- How have the courts addressed the application of prosecution history estoppel?
- What options are available to avoid the presumption of prosecution history estoppel?
Faculty
Rachel C. Hughey
Partner
Merchant & Gould
As a Co-Chair of the firm’s Appellate Practice, Ms. Hughey is one of the firm’s appellate specialists. She... | Read More
As a Co-Chair of the firm’s Appellate Practice, Ms. Hughey is one of the firm’s appellate specialists. She is a former Federal Circuit law clerk, has handled dozens of appeals, and has argued before the Federal Circuit both as the appellant and the appellee. In addition, Ms. Hughey leverages her appellate experience by consulting on appellate cases throughout the firm, for other firms, and for her clients. As a thought leader, she writes extensively on current legal issues and is the author of a law review article on effective appellate advocacy before the Federal Circuit.
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J. Michael Jakes
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Jakes concentrates his practice on patent litigation and related counseling. He serves as lead counsel in federal... | Read More
Mr. Jakes concentrates his practice on patent litigation and related counseling. He serves as lead counsel in federal district courts and the U.S. International Trade Commission (ITC), before arbitration panels, and on appeal to the U.S. Court of Appeals for the Federal Circuit. He deals mainly with computer, electronics, semiconductor, software, and medical device technologies. He has vast experience at the Federal Circuit, having argued more than 45 appeals and prepared and filed briefs in many more. He has served as both a special master and technical advisor to various U.S. district courts, assisting with claim construction and summary judgment motions on patents covering a wide variety of subjects.
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Kevin E. Noonan, Ph.D.
Partner
McDonnell Boehnen Hulbert & Berghoff
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents... | Read More
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. Dr. Noonan also has over 20 years of experience as a molecular biologist, and is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology.
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