Broadcast Date: Wednesday, December 16, 2020
from 3:00 pm to 4:00 pm (ET)


In its 2019 Duncan Parking Techs., Inc. v. IPS Group, Inc. ruling, the Federal Circuit  overturned the Patent Trial and Appeal Board’s (PTAB’s) decision which held that ‘310 patent claims were not unpatentable as anticipated under 35 U.S.C. § 102(e) in a decision juxtaposing inventorship and available prior art. Refusing to apply the doctrine of equivalents, the Court also ruled that Duncan’s alleged single-space parking meter infringement did not function in the same way as IPS’ claimed invention. It further affirmed the summary judgment of noninfringement granted by the district court.

Thus, companies and their counsel need to understand how this case impacts current cases and the general patent infringement landscape in order to devise up-to-date and effective litigation techniques and ongoing patent prosecution to avoid the issues raised by Duncan Parking.

Join Aaron Pereira and Philip Hirschhorn, patent litigators from Panitch Schwarze Belisario & Nadel LLP, as they provide an in-depth discussion of the Duncan case and its implications on patent infringement case management. Speakers will also provide practical tips and litigation tactics in bringing out the best in these lawsuits in a rapidly evolving legal climate.

Key topics include:

  • Duncan Parking Techs., Inc. v. IPS Group, Inc. – An In-Depth Analysis
  • Implications of the Duncan Decision
  • Significant Issues:
    • The Use of a Patent Owner’s References as Prior Art
    • Doctrine of Equivalents
    • Claim Construction
  • Handling Patent Infringement Cases Post-Duncan
  • Best Practices and Litigation Tactics


Course Level:



Advance Preparation:

Print and review course materials


Method of Presentation:

On-demand Webcast (CLE)





Course Code:



NY Category of CLE Credit:

Area of Professional Practice


Total Credit:

1.0 CLE

Speaker Panel:

Aaron Pereira , Counsel
Panitch Schwarze Belisario & Nadel LLP

Aaron Pereira is a litigator and patent attorney, with a background in chemical & biomolecular engineering.

Aaron litigates and counsels on intellectual property issues in a variety of technical areas, with a focus life sciences. Aaron has extensive experience in complex patent litigation, Hatch-Waxman, and BPCIA matters. He has managed large parallel litigation in federal district court and at the Patent Office, and has developed a deep understanding of how to leverage the interplay of these proceedings to prove or avoid infringement. Aaron has been counsel to some of the world’s largest and most sophisticated companies, and regularly advises clients on matters of global patent strategy, market entry, and product competition. As a registered patent attorney, Aaron has prosecuted patents and rendered opinions in the life sciences space. He also has experience running large patent diligence reviews in support of corporate acquisitions and financing.

Aaron is active in professional and affinity groups, and currently chairs the Patents Committee at the NYC Bar Association.

Philip L. Hirschhorn , Partner
Panitch Schwarze Belisario & Nadel LLP

Phil Hirschhorn is a partner at Panitch Schwarze, an intellectual property law firm. Phil is a trial lawyer specializing in patent litigation and other intellectual property proceedings, including post-grant proceedings before the Patent Trial and Appeals Board of the USPTO.

Phil’s extensive experience, spanning more than 30 years, includes bench trials, jury trials, and arbitrations. He has represented clients in traditional infringement/validity litigations as well as Hatch-Waxman (Paragraph IV) litigations. Phil also has experience handling copyright, trademark/trade dress, and trade secret litigation. Phil also advises clients on commercial patent licensing agreements.

Phil earned a bachelor’s degree from Columbia College and his law degree from Fordham University School of Law. He is a current co-chair of the Federal Circuit Bar Association’s PTAB/TTAB Committee and the immediate past Chair of the NYC Bar Association’s Patents Committee.


Aaron PereiraCounsel

Panitch Schwarze Belisario & Nadel LLP


Philip L. HirschhornPartner

Panitch Schwarze Belisario & Nadel LLP

  • Overview of Duncan Parking decision – unremarkable on the law, but excellent vehicle to discuss key litigation considerations
  • Inventorship – is an legal question, based on underlying facts and testimony that requires corroboration
    • Inventorship determination applies to your patent’s claim and the prior art
    • Parsing out inventive contributions is no easy task
    • The test is objective – evidence of inventive contribution outweighs the putative inventor’s subjective belief
    • Two other cases that illustrate the complexities of joint inventorship
    • Litigation strategies and prosecution considerations for avoiding your own prior patents being used against you
  • Claim Construction – another legal question
    • Winning strategies on claim construction at the district court and on appeal
    • When to pursue broad or narrow constructions
    • Attacking the infringement (factual) verdict on appeal, using the claim construction (legal) determinations
    • The other side’s construction “excludes a preferred embodiment”
  • Doctrine of Equivalents – expanding the claim scope
    • The “public notice” function of patent claims
    • DOE expansion cannot read out claim elements – the effect of “vitiation”
    • Important takeaways from mechanical inventions

Date & Time:

Wednesday, December 16, 2020

3:00 pm to 4:00 pm (ET)

Who Should Attend:

  • Patent Litigators/Lawyers
  • Patent Prosecutors
  • Patent Managers and Consultants
  • IP Consultants and Experts
  • General Business Litigators
  • Corporate Counsel
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Aaron Pereira Counsel
Panitch Schwarze Belisario & Nadel LLP
Philip L. Hirschhorn Partner
Panitch Schwarze Belisario & Nadel LLP



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