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  • videocam On-Demand Webinar
  • card_travel Patent
  • schedule 90 minutes

Patent Reexamination and Patent Reissue as Litigation Tools

Insulating Your Patent Portfolio From New Threats

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About the Course

Introduction

This CLE course will provide patent counsel with an overview of the current USPTO's Patent Trial & Appeal Board (PTAB) and patent litigation landscape with an eye toward emerging trends and challenges for patent owners. The panel will offer best practices to minimize the threat of post-grant patent challenges as well as prosecution strategies to strengthen and/or insulate patent portfolios from PTAB attack.

Description

In April of 2019, the USPTO issued a notice in the Federal Register reminding stakeholders of its patent reissue and reexamination mechanisms. These post-grant proceedings offer both offensive and defensive strategies to stakeholders. For example, these proceedings can operate in tandem to an AIA trial to provide an alternative path to amendment, or be utilized to strategically prepare for, or even recover from, such patent challenges. Given the impact of AIA trial proceedings on the monetization landscape, it is critical for stakeholders to be well versed in advanced patent reissue and reexamination options.

As a patent owner, these proceedings can offer ex parte paths to more fulsome amendment options as compared to the PTAB, restarting of continuation practices, or pre-litigation rehabilitation of problem patent claims. On the challenger side, reexamination offers options not possible before the PTAB.

Listen as our authoritative panel reviews the current post-grant/patent litigation landscape with an eye toward emerging trends and challenges facing patent owners and challengers alike. The panel will also offer best practices for utilizing patent reissue/reexamination, potential pitfalls, and nuances of these unique mechanisms.

Presented By

Kevin Laurence
Partner
Laurence & Phillips, LLP

Mr. Laurence has a winning record representing patent owners and petitioners in mission-critical IPR and PGR proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He is also experienced with other post-grant proceedings having handled many high-profile reexaminations and reissues, which enables him to develop comprehensive post-grant strategies. He leverages his post-grant experience in prosecution matters to obtain patents for his clients that will survive challenges. Mr. Laurence has taught a course as an adjunct professor at the George Washington University Law School on USPTO post-grant proceedings since 2015. He served as an instructor for Patent Resources Group (PRG) in courses on post-grant proceedings during 2009–2019. He is a co-author of a two-volume treatise titled Post-Grant Patent Practice, which was provided in conjunction with the PRG courses and was updated at least annually for over a decade. He has co-authored about 50 articles on post-grant patent topics. He served as Vice Chair of the Intellectual Property Owners Association’s U.S. Post-Grant Patent Office Practice committee during 2012–2015. He served as a founding Board Director for the PTAB Bar Association during 2016–2017.  


Scott A. McKeown
Shareholder
Wolf Greenfield & Sacks

Mr. McKeown focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC). He handles all aspects of post-issuance patent proceedings, with a particular focus on administrative trials before the Patent Trial and Appeal Board (PTAB), such as IPR and post-grant review PGR. He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission and district court litigations. Mr. McKeown is one of the most active PTAB trial attorneys in the U.S., having handled more than 500 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators and has handled some of the most noteworthy PTAB trials to date, including the only precedential decision on live testimony. Mr. McKeown is a Professorial Lecturer in Law at The George Washington University Law School and a Founding Director of the PTAB Bar Association. He lectures and writes extensively on PTAB proceedings and maintains the award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings. 

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, January 28, 2020

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Preparing for the fight
    1. The monetization landscape
      1. Rehabilitating the asset
        1. Reissue
          1. What can you do, when, and how long?
            1. Mechanics
          2. Downsides?
          3. PTAB overlap, considerations
        2. Reexamination
          1. What can you do, when, and how long?
            1. Mechanics
          2. Downsides?
          3. PTAB overlap, considerations
    2. Parallel proceedings before the USPTO
    3. Litigation tactics

The panel will review these and other key issues:

  • How can patent owners utilize these proceedings to lessen the PTAB threat?
  • What does reexamination offer to challengers in the PTAB world?
  • Which proceeding is the best path to a goal that might be reached by either option?