Please note that the faculty members listed for this course are subject to change prior to the actual course date.
The instructors are experienced at representing both patent owners and accused infringers in review proceedings and reexaminations. They have taught the Post-Grant Patent Practice course for five years and continuously update their treatise and slides to provide practical advice based on current cases involving adversarial post-grant matters. They were actively involved in bar associations' efforts to help the PTO design and implement the new review proceedings created by the America Invents Act (AIA). They have written widely on review and reexamination topics for Intellectual Property Today.
Why Should You Take This Course?
The battleground of patent validity is shifting from courts to the PTO. Review proceedings, including post-grant review and inter partes review, are powerful, fast-track trials before the Patent Trial and Appeal Board. Review proceedings offer several advantages over validity challenges in a court proceeding including cost, predictability, effectiveness, speed, and the ability to pursue strategies that would not be feasible in court. This course explores these factors and provides training for participating in review proceedings.
Reexamination remains popular either alone or alongside court battles. The PTO's Central Reexamination Unit provides a forum that can result in many favorable outcomes, at a small fraction of the cost of litigation. Whatever side of the battle you are on, you must know how to engage in the new battlefields called review as well as the existing battlefield called reexamination.
The first day of this two-and-a-half-day course focuses on ex parte reexamination and also addresses inter partes reexamination. The second day is dedicated to inter partes review. Topics covered in the final half day include post-grant review, covered business method patent review, and ethical issues related to review proceedings and reexamination. The course covers strategies, tactics, best practices and case studies for review and reexamination. The course is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators who must deal with the increasingly common role of PTO proceedings in the context of disputes.
Ten years ago courts were essentially the sole arbiters of patent validity. About 5-6 years ago, reexamination suddenly emerged as a popular means for challenging patents, either alone or alongside court battles. The reasons for that shift were simple: Would you rather bring your validity attack before an experienced patent examiner with technical expertise in the PTO's Central Reexamination Unit where claims are given their broadest reasonable interpretation and do not enjoy a presumption of validity, or a jury in the Eastern District of Texas? The answer becomes all the more obvious when one considers that a reexamination can cancel claims, eliminate liability for past infringement, create intervening rights to continue accused infringement in the future, open up design-around opportunities, create a more favorable prosecution history, defeat a charge of willful infringement, help avoid an injunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction of the cost of litigation or advantageously deployed in conjuntion with litigation.
The Patent Trial and Appeal Board has further shifted the balance in favor of the PTO as the patent validity battlefield of the future by creating new more powerful, fast-track, litigation-like review proceedings, including post-grant review and inter partes review. Inter partes review provides an opportunity to challenge the validity of a patent twice: first at the PTO based on printed publications and subsequently in litigation based on other available grounds. Stays are being granted liberally when inter partes reviews are filed in light of the statutory requirement for rapid completion of these new proceedings. As a result, validity challenges are proceeding in serial fashion. In the first phase of a bifurcated validity challenge, complicated arguments regarding the prior art can be rapidly resolved by trained specialists at the PTO, whereas in the second phase, less technical arguments regarding commercial activity or other invalidating grounds can be resolved by a judge or jury. This sequential approach can simplify claim construction and narrow issues for an infringment portion of the litigation, and thus may reduce overall costs. Lead counsel in an inter partes review proceeding must be a registered patent attorney, but it is possible for litigation counsel to participate in the proceeding even if the litigation counsel is not registered. Integrating the inter partes review and litigation teams can provide a smooth transition to the litigation upon completion of the review proceeding.
Reexamination has often been referred to as a second bite at the apple, but the bite size provided by inter partes review is more on par with that of litigation due to its provisions for limited discovery. The comparative weakness of ex parte reexamination is offset by its absence of estoppel implications. Indeed, the deepest concerns regarding inter partes review often focus on its legal estoppel provisions that prevent a challenger who is unsuccessful in an inter partes review from attacking a claim in any forum based on other printed prior art publications. This concern overlooks the advantages of this new proceeding and does not acknowledge that failure to invalidate a claim in litigation results in much harsher estoppel. The estoppel of inter partes review will have a considerably smaller scope than the estoppel of a failed district court challenge. In light of the complexity of many prior art arguments and the benefits of the serial validity and infringement cases, consideration of a challenge at the PTO should not be a back-up plan, as reexamination often is. Rather, inter partes review should be used prior to or concurrently with litigation.
For patent challengers, the course provides training to:
- Analyze the advantages and disadvantages of review and reexamination as compared to litigation
- Make well-informed choices between review proceedings and reexamination
- Understand the critical role of review and reexamination in the context of a dispute and develop strategies based on anticipated or concurrent litigation
- Appreciate estoppel implications - both official and unofficial - of review and reexamination
- Utilize review and reexamination to obtain a stay or other benefits in related litigation
- Unravel the AIA's review statutes and decipher the PTO's review rules to understand how reviews are really conducted
- Prepare a petition for review or a request for reexamination that complies with all requirements and gets granted
- Learn what the reexamination statistics really mean
- Advantageously utilize the different standards applied for claim interpretation at the PTO and claim construction in litigation as well as the differing burdens of proof
- Recognize possible changes to the construction of the claims in the litigation based on the review or reexamination that opens up design-around opportunities, creates a more favorable prosecution history for the purpose of claim construction, or impacts estoppel theories.
- Create intervening rights that eliminate liability for past infringement or allow continuation of accused infringement in the future
- Tactically use serial ex parte reexamination requests
- Correctly and strategically use petitions and declarations
- Understand the repercussions that review and reexamination can have on settlement
The course balances the perspectives of patent challengers and patent owners so the above items are also presented from the view of the patent owner. Additionally, the course provides training for patent owners to:
- Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims - or from mere argument regarding claim scope
- Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings
- Understand the timing of events in all post-issuance PTO proceedings so that you are not caught off guard
- Navigate the maze of review and reexamination procedures to avoid unfortunately common mistakes