Intellectual Property Litigation

Trials that Arise in Connection with Post-Grant Proceedings After the AIA

Synopsis

The presenters of this course address some special situations that arise in connection with the post-grant proceedings after the AIA.  Through the use of several hypothetical situations, they provide a thorough look at the issues and provide insight into how best to deal with them.

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Outline

I. Post-Grant Proceeding Issues
    A. Introduction of Topics
    B. Hypothetical #1
        1. Setting the Stage
        2. The Defendant's View
        3. The Plaintiff's Argument
        4. Standard of Claim Interpretation Used by PTAB
        5. The Judge's Ruling - Part 1
        6. The Judge's Ruling - Estoppel
    C. Hypothetical #2
        1. Setting the Scene
        2. Supporting the Estoppel
        3. Broadest, Reasonable Interpretation
        4. Judge: Should There Be Two Different Standards?
        5. Judge: Conclusion of Ruling
    D. Hypothetical #3
        1. The Facts
        2. The Markman
        3. Broadest Reasonable Interpretation Versus Markman
        4. Why Not Make the Standard the Same?
        5. Judge's Ruling
    E. The Baxter/Fresenius Scenario
        1. Concern About Cynicism and the Law as a Result
        2. Injunctions Against an Action in Another Court
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The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 16,000 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 45 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.
AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

 





Speakers / Authors:

Photo of Kenneth R. Adamo

Kenneth R. Adamo

Kenneth Adamo is a partner in the Intellectual Property group in Kirkland & Ellis' Chicago and New York offices. His practice focuses on all areas of intellectual property law, particularly including patent, copyright, unfair competition, trade secrets, and related antitrust matters. He has extensive trial experience as lead counsel in jury and nonjury cases before state and federal courts and before the United States International Trade Commission, as well as ex parte and inter partes experience in the U.S. Patent and Trademark Office. He has had substantial experience as lead counsel in arbitrations and other alternative dispute resolution proceedings. He also actively practices before the U.S. Court of Appeals for the Federal Circuit, having appeared in 35 appeals to date.

Mr. Adamo has written and lectured on many areas of intellectual property law including U.S. permanent injunction/eBay practice, U.S. discovery practice (including e-discovery), International Trade Commission proceedings, cyberart, the doctrine of equivalents/prosecution history estoppel, exhaustion, internet jurisdiction, effects of non-U.S. adjudications on U.S. litigation, and AIA post-grant USPTO proceedings.

In 2011, Mr. Adamo was named to Intellectual Asset Management's IAM Patent Litigation 250 - The World's Leading Patent Litigators and ranked as a top attorney in the "Individuals - U.S. International Trade Commission," and as a Band 1 lawyer in "Individuals – Illinois" and "Individuals – National" categories. In 2012, in IAM's The World's Leading Patent Practitioners 1000, he was again named a top attorney in Individuals - US International Trade Commission, and was named to Gold Band Individuals - Litigation in Illinois. In 2013, he continued in the IAM 1000 publication as a Gold Band Individual - Litigation in Illinois and as a recommended attorney in "Individuals - US ITC". In 2014, he maintained those rankings. The International Who's Who of Business Lawyers: Patent 2013 named him one of its Most Highly Regarded Individuals and Who's Who Legal Patents 2014, again named him as one of its Most Highly Regarded Individuals. The 2014 edition of Chambers USA, America's Leading Lawyers for Business ranked him in Band 1 in Illinois for the fourth consecutive year. In 2010, Chambers ranked him as a Star Performer in Ohio and Band 1 in Texas. In 2014, he was named as Patent Litigation (Chicago) Lawyer of the Year by Best Lawyers.

Mr. Adamo received his J.D. from Albany Law School of Union University in 1975, his LL.M. from The John Marshall School of Law in 1989, and his B.S. from Rensselaer Institute of Technology in 1972.

Photo of William P. Atkins

William P. Atkins

William Atkins is a Partner in the law firm of Pillsbury, Winthrop, Shaw, Pittman LLP. He is the leader of the law firm’s Intellectual Property Litigation team. He is a trial and appellate lawyer with over 20 years of experience. He is a registered patent attorney who has won jury verdicts and decisions on both sides of the courtroom. Some of his most recent courtroom victories include (1) getting two university co-inventors added to NIH-owned cancer drug patents which have had annual sales of approximately $2B, (2) getting a jury verdict of infringement for a consumer product against their major competitor, and (3) getting a jury verdict for a client in defense of $200M+ patent infringement and related allegations. He takes pride in crafting the very best solution for each client's situation, from both a legal and business perspective.

Mr. Atkins has been lead counsel in over 100 intellectual property litigations and has extensive experience in patent, trademark, trade secret, Lanham Act, unfair competition and copyright matters. Over the course of his career, Mr. Atkins has been in trial and appellate courts, the International Trade Commission or ITC, arbitrations, mediations, and before the United States Patent and Trademark Office many times.

Mr. Atkins has recently been appointed as a Co-Editor for BNA’s Patent Litigation Strategies Handbook, for which he has written two chapters over the past three editions. He is a Past President of the Foundation of the Bar Association of D.C. (2007-2009) and has been President of the Bar Association of D.C. (2005-06), a member of the ABA's House of Delegates, and chaired numerous bar committees. He is a prolific writer having recently published a primer on ITC procedure in English, Japanese, and Chinese. The primer was judged as one of the ten best law review articles related to patent law when it was published by the editor of West's Intellectual Property Law Review (2011).

Mr. Atkins has also been a member of Pillsbury’s Managing Board, co-leader of the firm's IP section, Managing Partner of the Northern Virginia office, and a member of the firm's Compensation Committee.

Mr. Atkins received his J.D/M.B.A. in 1992 from the University of Baltimore School of Law, his LL.M. in 1996 from The George Washington University Law School, and his B.S. in 1986 form the University of Maryland, College Park.

Photo of Faith Shapiro Hochberg

Faith Shapiro Hochberg

Faith Shapiro Hochberg is a United States District Judge for The District of New Jersey, confirmed by the United States Senate and sworn into office in 1999. Judge Hochberg has been designated to serve as a judge in the Patent Pilot program established by statute, and she is a frequent speaker at national conferences on Intellectual Property Law; resolution of complex litigation through Mediation and Arbitration; and Multidistrict Litigation in the Federal Courts. 

Prior to becoming a judge, Judge Hochberg served as the United States Attorney for the District of New Jersey from 1994 to 1999, where she supervised all federal civil and criminal litigation in one of the busiest United States Attorney’s Offices in the Country. She was selected to serve on the Attorney General’s Advisory Committee. From 1993 through 1994, she served as the Deputy Assistant Secretary of the United States Department of Treasury, where her responsibilities included the oversight of the law enforcement agencies of the Treasury, as well as the Office of Foreign Assets Control and the anti-money laundering programs. Previous to her service at the U.S. Treasury, Judge Hochberg was senior deputy chief counsel for the Office of Thrift Supervision where her responsibilities included banking litigation and regulation. Judge Hochberg has also had positions as a partner in the private practice of law; as Special Assistant to the Chairman of the Securities and Exchange Commission and an assistant United States Attorney.

She served as a law clerk to the Hon. Spottswood Robinson III. She has served as a Director of the Albert and Mary Lasker Foundation and the New Jersey Women’s Forum. Judge Hochberg is especially proud of the over 25 law clerks she has trained who are now making their own contributions to the legal profession.

Judge Hochberg graduated summa cum laude from Tufts University, and magna cum laude from Harvard Law School, where she was an editor of the Harvard Law Review.

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Price (USD)

Standard Rate: $149.00
Subscribers: FREE
Pillsbury U Online: $149.00
Metro State Univ: $149.00

Details

Course Code : 772503

Release Date : 12/09/2014


Length : 1hr 15min
Recorded Date : 10/23/2014


Format Type : eLearning
Mobile Compatible


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