PATENT REEXAMINATION

Thursday, May 28, 2009

About

According to USPTO Statistics released for FY 2008 regarding the use of inter partes reexam

  • 168 inter partes reexams were filed in FY 2008, a 33% increase from the previous year
  • Of all inter partes reexams currently pending, 62% are known to be in litigation.
  • The percentage of certificates issued with all claims cancelled – 70%.

Minimize Risk, Validate Your Patents and Save the Cost of Engaging in Time-Consuming Patent Litigation by Strategically Utilizing Reexamination

With verdicts in the millions becoming even more commonplace in today’s patent litigation environment, in-house patent litigation counsel and IP attorneys are beginning to think outside the box and take the chance that reexamination may present the best and only alternative for preserving or seeking patent protection.

Reexamation, whether utilized in its inter partes or ex partes form, provides the most cost-effective and efficient alternative for companies seeking to avoid the burdensome cost of engaging in litigation, while also providing an added benefit of resolving any uncertainties in the patent. Yet, when pursuing a reexamination, particularly when litigation is ongoing or threatened, one must consider the effect that the results of the reexamination will have on the patent infringement suit --

  • What arguments can be made if estoppel is raised during litigation?
  • How can reexamination proceedings be presented to the court in a manner that will lead to a stay of pending litigation?
  • How will a final outcome by the USPTO affect settlement discussions?

Featuring a cross-industry, senior-level faculty of in-house patent attorneys and experienced IP litigators, this conference will bring you firsthand insights from those who have been involved in the most complex and high-stakes reexams in recent years. Learn how you could be saving your company millions in litigation expense, while also shoring up and redefining the strength of your patent portfolio. Additionally, hear directly from the USPTO Central Reexamination Unit on the latest trends in the increased use of the reexamination procedure, as well as insights from the Bench, on how jurists weigh the use of reexam by parties, particularly in conjunction with pending litigation.

Preemptively Resolve Patent Validity Issues

An advanced-level, one-day forum structured to provide you with cutting edge strategies for utilizing reexamination to your advantage during litigation, ACI’s In-House Counsel Forum on Patent Reexamination will bring you frontline insights from those who have been directly involved with some of the most controversial and important reexamations in recent years on how to successfully navigate the patent reexamation process, what business circumstances necessitate a non-litigation related reexam, as well as lessons learned from recent patent infringement litigation involving reexams.

Contents & Contributors

About

According to USPTO Statistics released for FY 2008 regarding the use of inter partes reexam

  • 168 inter partes reexams were filed in FY 2008, a 33% increase from the previous year
  • Of all inter partes reexams currently pending, 62% are known to be in litigation.
  • The percentage of certificates issued with all claims cancelled – 70%.

Minimize Risk, Validate Your Patents and Save the Cost of Engaging in Time-Consuming Patent Litigation by Strategically Utilizing Reexamination

With verdicts in the millions becoming even more commonplace in today’s patent litigation environment, in-house patent litigation counsel and IP attorneys are beginning to think outside the box and take the chance that reexamination may present the best and only alternative for preserving or seeking patent protection.

Reexamation, whether utilized in its inter partes or ex partes form, provides the most cost-effective and efficient alternative for companies seeking to avoid the burdensome cost of engaging in litigation, while also providing an added benefit of resolving any uncertainties in the patent. Yet, when pursuing a reexamination, particularly when litigation is ongoing or threatened, one must consider the effect that the results of the reexamination will have on the patent infringement suit --

  • What arguments can be made if estoppel is raised during litigation?
  • How can reexamination proceedings be presented to the court in a manner that will lead to a stay of pending litigation?
  • How will a final outcome by the USPTO affect settlement discussions?

Featuring a cross-industry, senior-level faculty of in-house patent attorneys and experienced IP litigators, this conference will bring you firsthand insights from those who have been involved in the most complex and high-stakes reexams in recent years. Learn how you could be saving your company millions in litigation expense, while also shoring up and redefining the strength of your patent portfolio. Additionally, hear directly from the USPTO Central Reexamination Unit on the latest trends in the increased use of the reexamination procedure, as well as insights from the Bench, on how jurists weigh the use of reexam by parties, particularly in conjunction with pending litigation.

Preemptively Resolve Patent Validity Issues

An advanced-level, one-day forum structured to provide you with cutting edge strategies for utilizing reexamination to your advantage during litigation, ACI’s In-House Counsel Forum on Patent Reexamination will bring you frontline insights from those who have been directly involved with some of the most controversial and important reexamations in recent years on how to successfully navigate the patent reexamation process, what business circumstances necessitate a non-litigation related reexam, as well as lessons learned from recent patent infringement litigation involving reexams.

Contents & Contributors

USPTO Keynote address – Perspectives and Trends from the Central Reexamination Unit
Gregory Morse, Director, Central Reexamination Unit, U.S. Patent & Trademark Office (Alexandria, VA)

Positioning Your Reexamination for Success by Incorporating Procedural Requirements and Other Tactical Considerations into Your Advance Strategy
Len Smith, Senior Intellectual Property Counsel, Novo Nordisk Inc. (Princeton, NJ)
Philip Petti, Chief Intellectual Property Counsel, USG Corporation (Chicago, IL)
Richard E. Brown, IP Counsel, SAP Labs, LLC (Newtown Square, PA)
Greg H. Gardella, Principal, Fish & Richardson P.C. (Minneapolis, MN)
Moderator:
W. Karl Renner, Principal, Fish & Richardson P.C. (Washington, DC)

Reexamination – Litigation Interplay Part I: Deciding Whether and When to File a Reexamination Request
Emily A. Berger, Product Group Counsel, Applied Global Services, Applied Materials, Inc. (Santa Clara, CA)
William Becker, Senior Director, Intellectual Property, Align Technology Inc. (Santa Clara, CA)
Moshe Malina, Associate General Counsel & Chief Patent Counsel, Citigroup (New York, NY)
Katherine Prescott, Principal, Fish & Richardson P.C. (Redwood City, CA)
Moderator:
Dorothy P. Whelan, Principal, Fish & Richardson P.C. (Minneapolis, MN)

Reexamination – Litigation Interplay Part II: Strategic Procedural Considerations
Peter A. Vetysman, Senior Patent Counsel, Comcast Cable Communications (Philadelphia, PA)
W. Chad Shear, Principal, Fish & Richardson P.C. (Dallas, TX; San Diego, CA)

View from the Bench - Judicial Perspectives on the Use of Patent Reexamination in Conjunction with Pending District Court and ITC Litigation
The Honorable Theodore R. Essex, Administrative Law Judge, U.S. International Trade Commission (Washington, DC)

Maximizing Patent Value by Tactically Utilizing Reexamination as Part of an Overall Business Strategy
Richard E. Brown, IP Counsel, SAP Labs, LLC (Newtown Square, PA)



DOCUMENT TYPES: PPT PDF DOC PRESENTATIONS AVAILABLE: 10

8:00
Registration Desk Opens and Continental Breakfast Served
8:30
Co-Chairs' Opening Remarks
Karl Renner
Principal, Co-Chair of Post-Grant Practice Group
Fish & Richardson P.C.
Dorothy Whelan
Principal, Co-Chair of Post-Grant Practice Group
Fish & Richardson P.C.
8:45
USPTO Keynote address - Perspectives and Trends from the Central Reexamination Unit
Mr. Gregory Morse
Director‚ Central Reexamination Unit
U.S. Patent & Trademark Office
3 files
Reexamination at the USPTO
488 KB 23 pages Presentation
PPT - Reexamination at the USPTO
UNITED STATES PATENT AND TRADEMARK OFFICE
51.5 KB 5 pages White Paper
PDF - UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES PATENT
56.6 KB 5 pages Presentation
PDF - UNITED STATES PATENT
9:30
Positioning Your Reexamination for Success by Incorporating Procedural Requirements and Other Tactical Considerations into Your Advance Strategy
-Mr. Len S. Smith
Principal Intellectual Property Counsel
Medicis Pharmaceutical Corporation
Mr. Philip Petti
Chief Intellectual Property Counsel
USG Corporation
Mr. Richard E. Brown
IP Counsel
SAP Labs‚ LLC
1 file
Maximizing Patent Value Tactically Using Reexamination as Part of an Overall Business Strategy
976.5 KB 18 pages Presentation
PPT - Maximizing Patent ValueTactically Using Reexamination as Part of an Overall Business Strategy
Karl Renner
Principal, Co-Chair of Post-Grant Practice Group
Fish & Richardson P.C.
1 file
Reexamination: Tactical considerations and trends
1.5 MB 12 pages Presentation
PPT - Reexamination: Tactical considerations and trends
11:00
Morning Refreshment Break
11:15
Reexamination - Litigation Interplay Part I: Deciding Whether and When to File a Reexamination Request
Ms. Emily A. Berger‚ Esq.
Product Group Counsel‚ Applied Global Services
Applied Materials‚ Inc.
2 files
John Marshall Review
392.6 KB 20 pages Presentation
PDF - John Marshall Review
Reexamination – Litigation Interplay Part 1: Deciding Whether and When To File A Reexamination Request
1.2 MB 15 pages Presentation
PPT - Reexamination – Litigation Interplay Part 1:Deciding Whether and When To File A Reexamination Request
Mr. William Becker
Senior Director‚ Intellectual Property
Align Technology Inc.
1 file
Reexamination – Litigation Interplay Part 1: Deciding Whether and When To File A Reexamination Request
1.2 MB 15 pages Presentation
PPT - Reexamination – Litigation Interplay Part 1:Deciding Whether and When To File A Reexamination Request
Mr. Moshe Malina
Associate General Counsel & Chief Patent Counsel
Citigroup Inc.
1 file
Reexamination – Litigation Interplay Part 1: Deciding Whether and When To File A Reexamination Request
1.2 MB 15 pages Presentation
PPT - Reexamination – Litigation Interplay Part 1:Deciding Whether and When To File A Reexamination Request
Ms. Katherine Prescott
Principal
Fish & Richardson P.C.
2 files
THE CLAIMS WERE SUBSTANTIALLY NARROWED:
1 MB 20 pages Presentation
PDF - THE CLAIMS WERE SUBSTANTIALLY NARROWED:
Reexamination – Litigation Interplay Part 1: Deciding Whether and When To File A Reexamination Request
1.2 MB 15 pages Presentation
PPT - Reexamination – Litigation Interplay Part 1:Deciding Whether and When To File A Reexamination Request
Dorothy Whelan
Principal, Co-Chair of Post-Grant Practice Group
Fish & Richardson P.C.
2 files
THE CLAIMS WERE SUBSTANTIALLY NARROWED:
1 MB 20 pages Presentation
PDF - THE CLAIMS WERE SUBSTANTIALLY NARROWED:
Reexamination – Litigation Interplay Part 1: Deciding Whether and When To File A Reexamination Request
1.2 MB 15 pages Presentation
PPT - Reexamination – Litigation Interplay Part 1:Deciding Whether and When To File A Reexamination Request
12:45
Networking Lunch
14:00
Reexamination - Litigation Interplay Part II: Strategic Procedural Considerations
Mr. Peter A. Veytsman
Senior Patent Counsel
Comcast Cable Communications
1 file
Reexamination – Litigation Interplay Part II: Strategic Procedural Considerations
1.1 MB 11 pages Presentation
PPT - Reexamination – Litigation Interplay Part II:Strategic Procedural Considerations
Mr. W. Chad Shear
Principal
Fish & Richardson P.C.
1 file
Reexamination – Litigation Interplay Part II: Strategic Procedural Considerations
1.1 MB 11 pages Presentation
PPT - Reexamination – Litigation Interplay Part II:Strategic Procedural Considerations
15:00
Afternoon Refreshment Break
15:15
View from the Bench - Judicial Perspectives on the Use of Patent Reexamination in Conjunction with Pending District Court and ITC Litigation
Hon. Theodore R. Essex
Administrative Law Judge
U.S. International Trade Commission
1 file
View from the Bench-Judicial Perspectives on the Use of Patent Reexamination in Conjunction with Pending District Court and ITC Litigation
75 KB 3 pages White Paper
DOC - View from the Bench-Judicial Perspectives on the Use of Patent Reexamination in Conjunction with Pending District Court and ITC Litigation
Mr. John A. Dragseth
Principal
Fish & Richardson P.C.
16:15
Maximizing Patent Value by Tactically Utilizing Reexamination as Part of an Overall Business Strategy
Mr. Richard E. Brown
IP Counsel
SAP Labs‚ LLC
1 file
Maximizing Patent Value Tactically Using Reexamination as Part of an Overall Business Strategy
976.5 KB 18 pages Presentation
PPT - Maximizing Patent ValueTactically Using Reexamination as Part of an Overall Business Strategy
17:00
Conference Concludes