Partner Brent Hawkins will speak on 'Strategies for Litigating Patents Concurrently in the District Court and PTAB' at the Practicing Law Institute's (PLI) Advanced Patent Litigation Program, hosted in Chicago, Illinois on October 17-18, 2018.
With the Supreme Court’s recent decisions in Oil States and SAS, post-grant proceedings in the US Patent Office will continue to be a strategy for parties against whom a patent has been asserted and the path for initiating and defending such proceedings has become clearer. A parallel Patent Office proceeding is often a basis for seeking a stay of the more costly district court proceeding and/or used to bring the patentee to the bargaining table. Recent statistics reflect the continued popularity of filing of inter partes review (IPR) and covered business method review (CBM) proceedings following AIA, though the rates of success continue to trend downward.
This session will explore best practices on complex issues such as content of Patent Owner Responses, joinder and consolidation (and real party-in-interest issues), Motions to Amend, subject matter jurisdiction and other procedural issues, claim construction issues, presenting the most persuasive obviousness defenses, requests for rehearing, appellate review of AIA proceedings, and/or remand proceedings following a Federal Circuit appeal. In addition, the session will also address the effects of any such post-grant proceedings on parallel litigation, including stays, as well as the potential effects on collateral estoppel, claim construction positions, willfulness charges, inequitable conduct claims, and on damages and intervening rights will be addressed.
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