Patent Litigation: Formulating Infringement Positions Within the Scope of the Invention, Avoiding Untenable Positions

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Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Wednesday, April 29, 2020
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Live Online
On Demand
This CLE course will guide patent litigators in understanding and recognizing untenable positions in patent infringement litigation. The panel will discuss how to formulate reasonable infringement positions that do not press patents beyond the scope of the invention and will offer strategies to navigate the claim interpretation process.
Faculty

Mr. Hasford has experience in all areas of intellectual property law. His practice focuses on complex patent litigation at the trial and appellate levels on behalf of pioneer pharmaceutical companies. He has particular experience with cases arising from Abbreviated New Drug Applications (ANDAs) under the Hatch-Waxman Act. Justin also has litigated antitrust cases and business method patent cases. He counsels clients on issues of infringement, validity, enforceability, unfair competition, licensing, due diligence, and IP portfolio management. He has extensive experience advising clients regarding the interplay between patent and regulatory laws, including Orange Book listing of patents for drugs approved by the FDA.

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International Trade Commission, and before arbitration panels. She has argued a number of cases before the U.S. Court of Appeals for the Federal Circuit. She regularly represents clients in mediations and assists in licensing negotiations. She advises clients on strategic patent prosecution, monetization strategies for issued patents, and patent damages, including issues relating to standard essential patents and fair, reasonable, and non-discriminatory (FRAND) terms.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Description
Patent litigators face the challenge of proving infringement while dealing with the technological complexities that U.S. patent law presents. Claim construction plays a critical role in most patent infringement cases. Determining the scope of a claim as written in the patent is a significant issue for all involved.
The claim language describes the scope of a patent owner's right to exclude others. Often the disputed claim elements must be construed to determine whether infringement exists and the patent is valid over prior art. Patent prosecutors should be careful not to characterize claim language so as to provide patent litigators the room to formulate reasonable infringement positions, which are tenable.
Listen as our authoritative panel of patent prosecutors and litigators guides patent litigators in understanding and recognizing untenable positions. The panel will discuss how to formulate reasonable infringement positions that do not press patents beyond the scope of the invention and to help bridge the gap for patent litigators.
Outline
- Patent claims and specifications for the patent litigator
- Formulating reasonable infringement positions
- Staying within the scope of the invention
- Pitfalls
- Defending against patent suits
- Best practices
Benefits
The panel will review these and other high profile issues:
- What guidance can be drawn from court decisions regarding claim construction arguments?
- What steps can patent litigators take to avoid untenable positions that do not exceed the scope of a claim?
- What are best practices for defending against patent suits?
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