Proving and Avoiding Inequitable Conduct in Patent Prosecution and Litigation

Leveraging Court Treatment Post-Therasense and the AIA's Answer to Inequitable Conduct Issues

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


Conducted on Tuesday, January 31, 2017
Recorded event now available


This CLE webinar will provide guidance to patent counsel on understanding the types of activity that may lead to a finding of inequitable conduct and practical tactics to reduce the risk of a finding of inequitable content in litigation. The panel will also examine arguments that have worked to avoid a finding of inequitable conduct and those that haven’t.

Description

Efforts to eliminate inequitable conduct during the latest round of U.S. patent law reform have effectively failed. Some thought the 2011 en banc Therasense Federal Circuit decision ended inequitable conduct, but that has not happened, as inequitable conduct holdings continue.

So where exactly are we on inequitable conduct? Patent owners seek to obtain enforceable patents, as alleged infringers utilize the doctrine to render unenforceable patents asserted against them.

In Oct. 2016 the USPTO revived its proposed Rule 56 changes. Not surprisingly, they deal only with materiality in view of Therasense, which remains the controlling guide. However, with Chief Judge Rader’s departure from the court, the Therasense votes now are split 5-5 among the remaining judges from that decision.

Listen as our authoritative panel of patent attorneys examines post-Therasense judicial decisions regarding inequitable conduct and the revived proposed PTO rules as examples of the type of activity that can lead to a finding of inequitable conduct. The panel will offer examples of arguments that have worked to avoid a finding of inequitable conduct and those that haven’t. The panel will offer practical suggestions to patent owners for trying to avoid committing inequitable conduct in patent prosecution with the equal and opposite message to alleged infringers: trying to prove unenforceability in the post-Therasense world.

Outline

  1. Post-Therasense Federal Circuit decisions finding inequitable conduct or remanding on the issue
  2. Exemplary post-Therasense Federal Circuit decisions finding no inequitable conduct
  3. Post-Therasense district court decisions
  4. AIA’s answer to possible inequitable conduct issues
    1. The sparingly used supplemental examination: pre-litigation “car wash”?
    2. Impact of change in AIA to best mode?
    3. Relationship to reexam/IPR/PGR?
    4. AIA reissue
    5. USPTO proposed Rule 56 rules
  5. Best practices
    1. Avoiding inequitable conduct
    2. Proving inequitable conduct

Benefits

The panel will review these and other key issues:

  • What are the most common assertions defendants make when raising the inequitable conduct defense?
  • What are best practices prosecutors and litigators should employ when pursuing and defending inequitable conduct allegations?
  • What guidance do post-Therasense decisions and the USPTO proposed rules provide on how inequitable conduct will be treated?

Faculty

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Amanda K. Murphy, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

Margaret J. Sampson, Partner
Baker Botts, Austin, Tex.

Ms. Sampson has a global, strategic intellectual property transaction and patent counseling practice focused in the areas of life sciences, pharmaceuticals, research tools, and medical devices. She advises clients in evaluating patent portfolio positions; analyzes freedom-to-operate issues; identifies and evaluates targets for potential investment, mergers, or acquisitions; and assists with joint development and licensing agreements. Her experience also includes Hatch-Waxman patent litigation, patent term extensions and adjustments, clinical and manufacturing agreements and royalty acquisitions.


Recordings

CLE On-Demand - Streaming Video

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00

How does this work?


Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email customerservice@straffordpub.com to place your order.

Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?

DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H

How does this work?


Webinar

Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

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 really appreciated the real world application and examples that were provided.

Leah Schoellkopf

Dodge & Cox

The speaker was eloquent, easy to listen to and understand.

Karina Terakura

Kronick Moskovitz Tiedemann & Girard

Strafford’s program was fast-paced, full of information and easy to follow.

Kathleen Duggan

Ropers, Majeski, Kohn & Bentley

or call 1-800-926-7926

Patent Law Advisory Board

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Manatt

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.