Broadcast Date: Wednesday, October 25, 2023
from 12:00 pm to 1:00 pm (ET)

Overview:

The patent law landscape is continuously evolving as the United States Patent and Trademark Office (USPTO) considers several changes through the Advance Notice of Proposed Rulemaking (ANPRM). The ANPRM seeks comments on the proposed changes to America Invents Act trial proceedings which includes a myriad of proposed rules concerning the institution of post-grant review proceedings and discretionary denials under 35 USC 314(a), 324(a), and 325(d).

This notable development underscores the need for patent owners and practitioners to stay in the loop and keep their eyes open for potential reforms on PTAB practices. Effective use of proceedings is paramount to have a robust patent defense strategy.

This course offers an in-depth discussion of the latest developments in PTAB. In a LIVE Webcast, a panel of key thought leaders and practitioners will discuss the notable court decisions that will impact PTAB operations moving forward as well as the best strategies to successfully navigate this area of law.

Key topics include:

  • Recent and Most Significant Developments in PTAB
  • Notable Court Decisions
  • Emerging Litigation Issues and Challenges
  • Best PTAB Practices
  • An Outlook of What’s Ahead

Credit:

Course Level:

Intermediate

 

Preparation:

Print and review course materials

 

Method of Presentation:

On-Demand Webcast

 

Prerequisite:

General knowledge of patent law

 

Course Code:

1410830

 

NY Category of CLE Credit:

Areas of Professional Practice

 

Total Credits:

1.0 CLE

Speaker Panel:

Robert Magee, Partner
Blue Peak Law Group LLP

Robert Magee is a trial lawyer who specializes in intellectual property and technology issues. Mr. Magee has litigated cases on behalf of plaintiffs and defendants across a variety of technologies and in nationwide venues, including District Courts in California, Delaware, Florida, Minnesota, New York, North Carolina, and Texas, the Federal Circuit, the International Trade Commission, and the Patent Trial and Appeal Board.

Mr. Magee is also experienced in intellectual property licensing and patent portfolio analysis. He has advised clients in support of portfolio acquisitions, mergers and acquisitions, and adverse negotiations.

Reena Kuyper, Patent Agent
Patent Law Works

Reena is a patent prosecutor and strategist, with significant experience in strategic patent procurement of complex technologies and processes including computer architecture, cloud computing, wireless technologies and protocols, speech processing, and programmatic platforms. She has over 25 years of experience in all aspects of U.S. and foreign patent protection, including preparation and prosecution of patent applications, managing global prosecution strategies including practice under the Patent Cooperation Treaty (PCT) and European oppositions, extensive oral arguments before the Board of Patent Appeals and Interferences (now PTAB), Interferences, and post-issuance review procedures. Reena has personally handled over 40 reexamination proceedings since the Central Reexamination Unit (CRU) at the U.S. Patent Office was established in 2005 and has extensive experience supporting patent assertions.

Anna Dwyer, Partner
Blue Peak Law Group LLP

Anna Dwyer is a patent trial lawyer and partner of Blue Peak Law Group. Ms. Dwyer has extensive experience representing some of the largest companies in the world in high-stakes patent matters in district courts, the Patent Trial and Appeal Board, the International Trade Commission, and the Federal Circuit. Her practice spans a wide range of technologies, including small molecule and biologic pharmaceuticals, methods of treatment, formulations, polymorphs, medical devices, DNA sequencing, sonar and electrical engineering technology.

Ms. Dwyer has played a leading role in all phases of litigation, from pre-suit investigation to case management and strategy, Markman briefing and hearings, witness preparation, presentation and examination at trials, oral arguments, and briefing on appeal.

Agenda:

SEGMENT 1:

Robert Magee, Partner

Blue Peak Law Group LLP

  • Brief recap of Arthrex and the POP process
  • Structure of DRP
  • Availability of Director Review
    • Process (e.g. timing, limitations, content, etc.)
  • Determinations on Granting Review
    • Different standards for institution decisions vs final decisions
    • Sua Sponte Review
  • Consequences of Review:
    • Effects of decisions, review of decisions, appeal

SEGMENT 2:

Reena KuyperPatent Agent

Patent Law Works

  • Resurgence of ex parte reexaminations (since 2019) - critical tool and speedy option in patent litigation/licensing negotiations
  • Increase attributable to several primary reasons:
    • 1) Fintiv (35 U.S.C. § 314(a)) & 35 U.S.C. § 325(d) discretionary denials
    • 2) threshold for granting a reexam is lower than for institution of IPR
    • 3) petitioner may raise multiple validity challenges with no page limit
    • 2) failed IPR/PGR on the merits
    • 3) infringers seeking to avoid PTAB-related estoppels or delay filing at the PTAB until after a 35 U.S.C. § 315 bar
  • Powerful tool for defendants to attack validity without estoppel risks
  • Impact of the Vivint Federal Circuit decision
  • Provisions of APA in PTAB Proceedings to Constrain PTAB’s Actions
  • Reexam Complexities & Strategies

SEGMENT 3:

Anna Dwyer, Partner

Blue Peak Law Group LLP

  • 35 U.S.C. § 314(a)
  • S5 U.S.C. § 325(d)
  • Current 314(a) PTAB legal framework – General Plastic and Apple v. Fintiv
  • Current 325(d) PTAB legal framework – Advanced Bionics and Becton Dickinson
  • Director Vidal’s Interim Guidelines on PTAB discretionary denials
  • Recent PTAB case developments on discretionary denials
  • Strategies for practitioners

Date & Time:

Wednesday, October 25, 2023

12:00 pm to 1:00 pm (ET)

Who Should Attend:

  • Patent Law Attorneys and Consultants
  • Intellectual Property Attorneys
  • Patent Managers
  • Patent Agents
  • Patent Licensing Attorneys
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SPEAKERS

Robert MageePartner
Blue Peak Law Group LLP
Reena KuyperPatent Agent
Patent Law Works
Anna DwyerPartner
Blue Peak Law Group LLP

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