Intellectual Property Rights Protection

Navigating the Brave New World: Charting a Course Through the PTAB in the Wake of the AIA

Synopsis

New procedures for post-grant challenges under the America Invents Act (AIA) can help defendants in patent infringement suits to fight back. Patent Trial and Appeal Board (PTAB) proceedings are focused on efficiency, providing a cost-effective alternative to invalidating a patent through litigation. But this has its drawbacks: Administrative Patent Judges (APJs) tend to be less tolerant of lawyers’ sideshows, mistakes and other deviations from standard procedure.

The presenters of this course discuss some of the lessons they have learned in the year since the PTAB came into effect under the AIA and the various new post-grant challenges available under the AIA represent a major change in strategy.

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Outline

I. Navigating the Brave New World
    A. Joint Practice Waiting Period
    B. Claims Construction
    C. Discovery
    D. Preliminary Responses
    E.  In-house Counsel Perspective
    F.  Post-Grant Challenges
         1.  Situations for Post-Grant Challenges
         2.  Advantages of Post-Grant Options
         3.  Easier & Cheaper to Litigate Inability
    G.  Ex Parte Situations
    H.  Going forward with New Trials
    J. Petitions
    K. Joinder
        1. Advantages and Guidance
        2. Impact
    L. Discovery Before the Patent Trial Appeal Board
    M. Patent Owner Response
    N. Preliminary Responses
    O. Post-Grant Review

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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 Greg H. Gardella

Greg H. Gardella
Oblon,Spivak, McClelland, Maier and Neustadt

Greg H. Gardella is a partner in the Oblon,Spivak, McClelland, Maier and Neustadt's Post-Grant patent practice group. Mr. Gardella is known for handling many of the highest stakes post-grant matters ever adjudicated by the United States Patent and Trademark Office. He regularly serves as lead counsel for both challengers and patent owners in matters having stakes running into the billions of dollars. As of June 2013 he was lead counsel on more AIA post-grant proceedings pending before the Patent Trial and Appeal Board than any other practitioner in the United States.

Mr. Gardella has been honored as one of the Best Lawyers in America for multiple consecutive years. He also has been named repeatedly by Intellectual Asset Management (IAM) as one of the nation’s top post-grant practitioners. Prior to joining Oblon Spivak, Mr. Gardella was a partner at Irell & Manella, LLP. While there, he chaired the Reexamination Practice Group and oversaw the training of lawyers and patent agents related to Patent Office proceedings.

Mr. Gardella received his J.D., cum laude, from the University of Michigan, his M.S. from the University of Minnesota, and his B.S., magna cum laude, from the University of Michigan. 

Photo of Michael Tierney

Judge Michael Tierney

Judge Michael Tierney was appointed to the Board of Patent Appeals and Interferences (Board) in July 2000. Judge Tierney manages the Trial Section, which oversees America Invents Act (AIA) administrative trials including inter partes reviews, post-grant reviews, and covered business method reviews, as well as reexamination appeals and interferences. 

For the implementation of the AIA, Judge Tierney led the Board's comprehensive effort on the trial rulemakings. Judge Tierney worked closely with USPTO executive officials, trial judges, the patent community and other members of the public to develop the trial rules. Judge Tierney has given numerous presentations that educate the patent community on the statutory provisions, proposed rules, and final rules for the AIA administrative trials. 

Prior to joining the Board, Judge Tierney was a senior patent associate in private practice, and he has also worked as a patent examiner in the chemical arts. Judge Tierney received both a J.D. and a B.S. in Chemical Engineering from the University of Washington. He is a member of the Washington State and the District of Columbia bars.

Photo of Samir Pandya

Samir Pandya

Samir Pandya is Senior IP Counsel in SAP’s Global Litigation Group, overseeing patent and other IP litigation. Before joining SAP in 2007 Samir practiced patent litigation at Howrey and Klarquist Sparkman, LLP.

Mr. Pandya received his J.D. from Villanova University School of Law in 2001, and his B.S. from Muhlenberg College.

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Details

Course Code : 772591

Release Date: 06/10/2014


Length: 1hr 10min
Recorded Date: 10/24/2013


Format Type: eLearning
Mobile Compatible


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