Time 12:45 – 13:30 — Registration
13:30 – 17:00 — Program
17:00 – 18:00 — Reception
Venue Marunouchi Hall & Conference Square
The Impact of the Alice v. CLS Bank Supreme Court Decision on U.S. Patent Litigation and Prosecution (13:30 – 14:40)
Our panel will discuss trends addressing patentable subject-matter challenges in software-related litigation; how and when Alice-based challenges can be raised in litigation; and how to use such a defense in litigation—or through a post-grant review (PGR) or covered business method (CBM)—as part of a comprehensive strategy. We will also analyze the impact Alice has had on the prosecution of software-related patents in the U.S. Patent and Trademark Office (USPTO), including a discussion of the USPTO’s guidance in view of Alice; strategic tips on overcoming rejections based on Alice; and how companies can proactively identify and prepare patent applications to overcome Alice-based rejections.
Coffee Break (14:40 – 14:55)
AIA Proceedings at the PTAB—Beyond Inter Partes Review (14:55 – 15:55)
In 2013, the USPTO implemented new procedures for post-issuance patent challenges. The basic proceedings include inter partes review (IPR), covered business method patents and post-grant review (PGR). These proceedings are intended to provide a streamlined alternative to litigation and offer defendants in litigation a strategy to stay district court litigation, sharpen claim construction positions, focus arguments and further develop the prosecution history. Last year, we looked closely at IPRs and the various rules and pitfalls practitioners should be aware of before engaging in practice at the Patent Trial and Appeal Board (PTAB). This year, we will review and update some highlights of the general PTAB process and procedures but will emphasize CBM and PGR cases, both of which have developed significantly in the last 15 months, with the first PGR proceedings having been instituted in June 2015.
What to Do When You’ve Been Sued: Practical Strategies and Cost Reduction Tips for Companies Who Have Been Threatened or Sued (15:55 – 17:00)
Many companies that sell a product in the United States will either be threatened or sued, either by a competitor or a non-practicing entity. Our panel will discuss commonly asked questions, such as early motions, use of IPRs/CBMs/PGRs, transfer and stay motions, and early settlement discussions. We will provide informative data and practical strategies for companies to consider, and tools for companies to use,when they are threatened or sued, to position the case for early favorable resolution.
Reception (17:00 – 18:00)
CLE credit is pending in California, New York and Illinois. A Uniform Certificate of Attendance will be made available to participants requesting CLE credit in all other states.
Hosted by McDermott Will & Emery in cooperation with Honyaku Center Inc. and Business Forum Net.