Conference Day 1 | Monday, March 26, 2012
12:00 Registration
12:45 Co-Chairs’ Opening Remarks
Terri McHenry
Sr. Patent Counsel
Google Inc. (Mountain View, CA)
Matthew A. Smith
Partner
Foley & Lardner LLP (Washington, DC)
1:00 Overview and Implementation Timeline of PTO Procedures: Anticipating the Regulatory Schematic and Understanding What’s New, What has Evolved and What Has Stayed the Same
Janet Gongola
Patent Reform Coordinator
United States Patent and Trademark Office (Alexandria, VA)
Michael Tierney
Lead Administrative Patent Judge, Trial Section
Board of Patent Appeals and Interferences
United States Patent and Trademark Office(Alexandria, VA)
- Update on regulations governing PTO procedures
- comments, status and anticipated release of final regulations
- Exploring the evolution in changes to priority challenges
- the phase-out of interference proceedings and the introduction of derivation proceedings
- New pre-issue challenges
- Review and time line for start of new post-issuance challenges
- supplemental examination
- post-grant review
- inter partes review
- phase out of current inter partes reexamination procedure
- Keeping with the status quo
- ex-parte reexamination – reexamining or challenging of claims
- patent owner vs. third party challenger
- re-issue applications – correcting errors
- protest proceedings – challenging pending applications
- understanding how these “status quo” mechanisms fit in with the schematic and timing of new and amended proceedings before the AIA
2:00 The New Prior Art and Priority Landscapes – First-To-File with Grace and Derivation
George K. Ng
Partner
Gordon & Rees, LLP (San Diego, CA)
Brad Pedersen
Partner & Patent Practice Chair
Patterson Thuente Christensen Pedersen, P.A.(Minneapolis, MN)
Through a series of hypotheticals, our panel will examine several scenarios concerning anticipated challenges in relation to how the prior art and priority revisions under section 102, including new derivation practice protocols and the timeline for transition. Points of discussion within these hypotheticals will include:
- Reviewing the new first to file with grace provisions under the AIA
- comparison to current first to invent provisions
- novelty and nonobviousness provisions
- harmonization with other world patent systems?
- Understanding how priority will be determined under the new first to file landscape
- consequences for early publication and failure to take new priority rules into account
- proving derivation from another patent or application
- Examining the new derivation proceeding protocols before the Patent Trial and Appeal Board (PTAB)
- comparison of derivation to current interference proceedings
- what happens to existing interferences
- which issues need to be addressed by rule promulgation
3:30 Afternoon Refreshment Break
3:45 Supplemental Proceedings: Considerations for Patent Holder Starting Anew and Thoughts on Curing Inequitable Conduct
John M. Griem, Jr.
Partner, Patent Litigation Group
Loeb & Loeb, LLP (New York, NY)
Jeffrey L. Kopacz
Senior Patent Counsel
Alnylam Pharmaceuticals (Cambridge, MA)
- Exploring scenarios in which it makes sense for a patent holder to pursue supplemental reexamination
- when does it make more sense to request ex-parte reexamination?
- Defining a substantial new question of patentability (SNQP)
- question of prior art
- does it present a new SNQP?
- Protocols and procedures for supplemental proceedings
- a new take on ex-parte reexamination proceedings
- Exploring relationship between supplemental proceedings and inequitable conduct
- circumstances in which supplemental reexam can be used as a means to circumvent questions of inequitable conduct
- failure to disclose – presence of mind
- intent v. mistake – does it make a difference in the findings?
- findings of fraud in the aftermath of proceedings and possibility of criminal prosecution
4:45 Third Party Patent Challenges: Assessing All Your Options for Challenging a Competitor’s Patents
James M. Gould
Legal Director – Intellectual Property Litigation
Merck & Co., Inc. (Rahway, NJ)
Kevin W. McCabe
Director
Sterne, Kessler, Goldstein & Fox (Washington, DC)
Michael P. Sandonato
Partner
Fitzpatrick, Cella, Harper & Scinto (New York, NY)
- Choosing the forum in which to make your challenge
- PTO vs. federal district court
- ITC
- Evaluating the type of proceeding in which to make your attack
- traditional district court litigation
- new PTO proceedings
- pre-issue challenge vs. post-issue challenge
- third party pre-issuance submissions
- post grant review
- inter partes review
- existing ex partes reexam mechanism
- Factoring in new rules relating to:
- how each type of proceeding will be conducted
- e.g., what types of validity attacks can be raised in each proceeding
- scope of proceeding
- scope of discovery in each type of proceeding
- estoppel effects
- legal standards of review
- Cost and time comparisons
- which proceedings make the most economic sense in terms of time and money?
- Analyzing whether parallel proceedings make sense
6:00 Conference Adjourns to Day 2
Main Conference Day 2 | Tuesday, March 27, 2012
7:45 Continental Breakfast
8:30 Co-Chairs Opening Remarks and Re-Cap of Day One
Focus on Post Issuance Proceedings
8:45 An In Depth Look at Post Grant Review and Transitional Post Grant Review for Business Method Patents
Patricia Carson
Partner
Kaye Scholer LLP (New York, NY)
Herbert D. Hart III
Shareholder
McAndrews, Held & Malloy Ltd (Chicago, IL)
Thomas J. Kowalski
Shareholder
Vedder Price PC (New York, NY)
John A. Squires
Partner
Chadbourne & Parke LLP (New York NY)
Bartholomew Verdirame
Partner
Cadwalader, Wickersham & Taft LLP (New York)
Post Grant Review
- Weighing considerations for when challenge should be brought under post grant review (PGR)
- Exploring start dates, timing and basis of the application – questions to ask
- is the challenge brought within nine months of patent issuance?
- what is the basis of the invalidity challenge
- prior art
- 112 deficiency under written description
- lack of enablement
- obviousness
- inherent anticipation
- fate of best mode
- Estoppel considerations
- have you raised all bases for invalidity lest you be precluded from raising them in other PTO or district court proceedings
- Examining the mechanics, protocols and procedures for PGR
- filing of petition
- analogous nature of proceeding to district court litigation
- discovery
- hearings
- motions
- settlement
- appearing before the Patent Trial and Appeals Board (PTAB)
- Analyzing the petitioner’s burden of proof
- proving that it is “more likely than not that one of the claims challenged in the petition is unpatentable”
- raising a novel or unsettled question of legal importance to other patents
- Comparing PGR to European Opposition practice
- contrasts and differences
- what can US practitioners glean from their European counterparts?
- Industry specific considerations
- Procedures for appeal
Transitional PGR (TPGR) for Business Methods Patents
- Defining qualifying business method patent under the statute- technological inventions- importance to financial industries sector
- Exploring the contrasts of TPGR to PGR- prior law suit requirement - using TPGR proceeding as a means of a stay in existing suit- timing and start dates- limited time frame- basis for petition- questions of prior art and disclosure- fate of prior art provisions in statute- estoppel exceptions
- What can other industries and patent challengers glean about PGR from TPGR?
10:45 Morning Coffee Break
11:00 Of Inter Partes Reexamination and Inter Partes Review: Preparing for the Transition
Andrea G. Reister
Partner
Covington & Burling LLP (Washington, DC)
W. Karl Renner
Principal
Fish & Richardson (Washington, DC)
Matthew A. Smith
Partner
Foley & Lardner LLP (Washington, DC)
- Comparing current inter partes reexamination protocols to inter partes review protocols under AIA
- Understanding the fi ne points of the new inter partes review procedure
- considerations for choosing this forum
- timing, cost, speed of resolution
- Revisions to patent challenger’s burden of proof under both procedures
- substantial new question of patentability vs. reasonable likelihood that the petitioner will prevail on claim
- understanding the immediate repercussions of this shift on inter partes reexam and strategies for inter partes review
- Exploring the scope of review for each procedure under 102 and 103
- patents (prior art) and publications
- comprehending the relationship between scope of review and estoppel
- Timing of procedures – transition and phase out
- examining the interplay between the timing for post grant review and inter partes review
- Transition in presiding forums
- Central Reexam Unit (CRU) vs. Patent Trial and Appeal Board (PTAB)
- appeal to CAFC
12:30 Exploring the Scope of Estoppel in Post Grant Proceedings Before the PTO
David T. Cunningham
VP and Director of Intellectual Property Law
The Hartford Financial Services Group, Inc. (Hartford, CT)
Eliot D. Williams
Partner
Baker Botts (New York, NY)
Estoppel effects are an important concern in post grant proceedings. In some procedures, issues that are not raised initially are forever barred from being raised. In other proceedings, it may be possible to get a proverbial second bite of the apple. In this session, our panel will address the following points:
- PTO estoppel v. district court estoppel
- How the scope of estoppel differs for:- post grant review- transitional business method review- inter partes review- existing ex partes reexam mechanism
- Understanding the various triggers for estoppel- when does estoppel attach?
- Strategic considerations in view of estoppel
- Effects of settlement on estoppel
- Examining the possibility in concurrent proceedings for a stay on grounds of estoppel
1:30 Conference Ends
Conference Details