Tackling the Offensive and Defensive Sides of Inter Partes Reviews

Feb 28, 2017 2:00pm – 5:00pm

Jeff Nichols
Shareholder
Brinks Gilson & Lione (Chicago, IL)

Honorable Teresa Rea
Partner
Crowell & Moring LLP (Washington, DC) (Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office)

Honorable Michael Tierney
Lead Administrative Patent Judge
Patent Trial and Appeal Board United States Patent and Trademark Office

Based on recent PTAB decisions, patents are no longer as strong as you may think. IPR challenges can come at any time, even multiple times on the same patent. In this session, leading patent practitioners will give you a comprehensive breakdown of best practices to protect your portfolio and to challenge your competitors.   Topics to be discussed include:
  • Comparing and contrasting IPR decisions to date: how to effectively use the IPR process
  • Strategic use of PTAB procedures by hedge funds investors and review of first set of written decisions
    • Coalition for Affordable Drugs II LLC v. Cosmo Technologies, IPR2015-00988 (holding for patentee due to petitioner failing to show motivation to combine)
    • Coalition for Affordable Drugs II LLC v.NPS Pharmaceuticals Inc., case numbers IPR2015-00990 and IPR2015-01093,(holding for Kyle Bass that the prior artrelied on renders the claims obvious and the petitioner was unable to persuade otherwise)
  • Best practices for appearing before the PTAB: avoiding procedural pitfalls including timing and page- limit requirements