Innovative Practice Resources for Meeting with Success during Inter Partes Review

January 23, 2014 9:45am

Robert Sterne
Director
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Karl Renner
Principal, Co-Chair of Post-Grant Practice Group
Fish & Richardson P.C.

Ralph A. Loren
Partner
Edwards Wildman Palmer LLP

Barbara A. Fiacco
Partner
Foley Hoag LLP

Kelly K. Burris
Shareholder
Brinks Gilson & Lione

• Surveying the IPR proceedings filed to date
– Who is filing and with what result?
– Has the Federal Circuit weighed in and, if so, to what effect?
– Is this it as cost effective and efficient as advertised?
• Identifying which patents are most susceptible to IPR
– Understanding how the proceedings are limited to prior art
– Determining when to file an IPR during on-going federal litigation
• Preparing for potential IPR review of patents granted prior to November 1999
• What are the discovery rules for IPR?
– Utilizing the discovery rules to your advantage
– How and when to use expert witnesses
– Comparing the scope of what is discoverable—PTAB vs. federal court
• How do re-issuance proceedings and reexam impact IPR strategy?
• Getting a handle on the burden of proof in IPRs
– Substantial new question of patentability vs. reasonable likelihood that the petitioner will prevail on claim
• Exploring the scope of review for current and new procedures under § 102 and § 103
– Patents (prior art) and publications
– Comprehending the relationship between scope of review and estoppel
• Being mindful of subsequent federal litigation—highlighting the bounds of estoppel
– Knowing what defenses exist outside of the IPR
– How to avoid becoming a test case
 Navigating the page limit requirement
 Participation as a third party on notice
• Transition and phase out
– Examining the interplay between the timing for post grant review and inter partes review
– Transition in presiding forums
• Choosing between the Central Reexam Unit (CRU) vs. Patent Trial and Appeal Board (PTAB)
– Appealing to the Federal Circuit