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USPTO Post-Grant Patent Trials 2013

 March 27, 2013

CLE - Live Seminar


Post-grant patent proceedings were pursued in record number at the USPTO in 2012. The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the USPTO. To this end, patent reexamination remains a viable alternative to costly litigation or parallel path to enhance litigation positions. Yet due to the public outcry for even more robust USPTO post issuance proceedings, the America Invents Act (AIA) introduced entirely new options such as Post-Grant Review, Inter Partes Review (which replaced inter partes patent reexamination), Derivation Proceedings, and a special post-grant review for Covered Business Method patents. Going forward into 2013, it is anticipated that the USPTO will become an even more prominent battleground for patent disputes.

Potential benefits of post-grant patent challenges to defendants include:

  • Provide an opportunity to stay a concurrent litigation
  • Provide a low-cost alternative to district court and/or ITC litigation
  • Facilitate settlement on terms favorable to the defendant
  • Create an intervening rights defense
  • Create additional file history that provides new non-infringement and/or estoppel theories
  • Demonstrate objective evidence of a lack of willfulness
  • Lessen the probability of injunctive relief
  • Demonstrate the “but for” materiality of references applied in an inequitable conduct defense
  • Undermine or prevent damage verdicts with a USPTO invalidity ruling
  • Provide an additional basis on which to obtain a stay of judgment pending appeal

The program is taught by a faculty of judges, preeminent lawyers, and industry leaders who have earned national reputations in patent litigation and in post-grant proceedings at the USPTO.

The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pre-trial and post-trial options. Although the course will focus on strategic considerations, common procedural traps for the unwary will also be identified. The relative advantages and disadvantages of the various proceedings are explained both from the perspective of the Patentee and Third Party. Perspectives of the judiciary are presented, including case studies of well-known disputes. Insight to the organization, operation and procedures of the USPTO’s Patent Trial and Appeal Board, Central Reexamination Unit, and Office of Patent Legal Administration are discussed.

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Practising Law Institute
810 Seventh Avenue
New York, New York
United States of America

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