The Innovation Firm

When

June 19, 2013

Where

Conference Center at Waltham Woods
860 Winter Street
Waltham, MA 02451

Fighting It Out in the Patent Office - Early Experiences and Observations about IPRs

On June 19, 2013, Susan Glovsky, Principal, co-presented the Boston Patent Law Association's Contested Matters Committee "Fighting It Out in the Patent Office - Early Experiences and Observations about IPRs."  This seminar was held at The Conference Center at Waltham Woods, 860 Winter Street, Waltham, MA.

  • Inter Partes Review 101
  • What you need to know about practicing before the PTAB
  • Strategic considerations in deciding to file an IPR

The America Invents Act (AIA) provides for new inter partes disputes that are to be conducted by the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR), post-grant review, the transitional post-grant review of covered business method patents, and derivations.  A panel experienced in litigation and Patent Office proceedings will provide insight on practicing before the Patent Trial and Appeal Board (PTAB), with a focus on Inter Partes Review, a new trial proceeding conducted at the Board to review the patentability of one or more
claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
 

 

 Please click here to view the presentation slides.

Panelists:  

Jennifer C. Bailey, Partner at Hovey Williams LLP, Overland Park, Kansas
Jennifer will speak about her experience before the PTAB.  She represents Garmin in Garmin Int’l Inc. v. Cuozzo Speed Technologies LLC, (PTAB 2013) (Lee, J.), an Inter Partes Proceeding in which the Patent Office denied Cuozzo’s request for additional discovery.
 
Peter M. Dichiara (Boston, MA) and David L. Cavanaugh (Washington, D.C.), Partners at Wilmer Hale
Peter and David will speak about their experience before the PTAB.  They represent EMC and VMware in EMC Corp. and VMware, Inc. v. Personalweb Technologies, LLC and in EMC Corp. v. Personalweb Technologies, LLC.  David also handles Atrium Medical v. Davol, Inc. and Becton Dickinson & Company v. One StockDuq Holdings, Inc.

Susan G. L. Glovsky, Principal at Hamilton Brook Smith Reynolds, Concord, MA
Co-Chair Contested Matters Committee
Susan will speak about considerations in filing an IPR based on her experience as a trial lawyer and representation of parties in interferences.

Ian Y. Liu, Ph.D., Associate at Finnegan LLP
Co-chair Contested Matters Committee
Ian will speak about inter partes disputes based on his experience in ANDA litigation and inter partes proceedings before the Patent Office.

Overview

When

June 19, 2013

Where

Conference Center at Waltham Woods
860 Winter Street
Waltham, MA 02451

On June 19, 2013, Susan Glovsky, Principal, co-presented the Boston Patent Law Association's Contested Matters Committee "Fighting It Out in the Patent Office - Early Experiences and Observations about IPRs."  This seminar was held at The Conference Center at Waltham Woods, 860 Winter Street, Waltham, MA.

  • Inter Partes Review 101
  • What you need to know about practicing before the PTAB
  • Strategic considerations in deciding to file an IPR

The America Invents Act (AIA) provides for new inter partes disputes that are to be conducted by the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR), post-grant review, the transitional post-grant review of covered business method patents, and derivations.  A panel experienced in litigation and Patent Office proceedings will provide insight on practicing before the Patent Trial and Appeal Board (PTAB), with a focus on Inter Partes Review, a new trial proceeding conducted at the Board to review the patentability of one or more
claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
 

 

 Please click here to view the presentation slides.

Presenter Bios

Panelists:  

Jennifer C. Bailey, Partner at Hovey Williams LLP, Overland Park, Kansas
Jennifer will speak about her experience before the PTAB.  She represents Garmin in Garmin Int’l Inc. v. Cuozzo Speed Technologies LLC, (PTAB 2013) (Lee, J.), an Inter Partes Proceeding in which the Patent Office denied Cuozzo’s request for additional discovery.
 
Peter M. Dichiara (Boston, MA) and David L. Cavanaugh (Washington, D.C.), Partners at Wilmer Hale
Peter and David will speak about their experience before the PTAB.  They represent EMC and VMware in EMC Corp. and VMware, Inc. v. Personalweb Technologies, LLC and in EMC Corp. v. Personalweb Technologies, LLC.  David also handles Atrium Medical v. Davol, Inc. and Becton Dickinson & Company v. One StockDuq Holdings, Inc.

Susan G. L. Glovsky, Principal at Hamilton Brook Smith Reynolds, Concord, MA
Co-Chair Contested Matters Committee
Susan will speak about considerations in filing an IPR based on her experience as a trial lawyer and representation of parties in interferences.

Ian Y. Liu, Ph.D., Associate at Finnegan LLP
Co-chair Contested Matters Committee
Ian will speak about inter partes disputes based on his experience in ANDA litigation and inter partes proceedings before the Patent Office.

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