Oral Arguments Before PTAB
Robert Greene Sterne – April 5, 2013
Oral arguments before the USPTO’s new Patent Trial & Appeal Board are a vital part of the new contested proceedings that present new challenges for patent practitioners. Robert Greene Sterne addresses the process of requesting and delivering an oral argument. To illustrate, he outlines his own preparation strategy and his method for delivering clear, effective, and successful presentations.
Patent Office Litigation Update: Impact on Timing
Don Banowit – April 2, 2013
Don Banowit explains two recent clarifications to the deadlines for filing a petition for inter partes review at the USPTO. Specifically, a petition must be filed within one year of service of the complaint alleging infringement of the patent, and cannot be sought during the first nine months of a patent’s issuance.
The Perfect Patent Office Litigator
Robert Greene Sterne – March 29, 2013
Robert Greene Sterne describes the perfect patent office litigator to handle the new contested proceedings under the America Invents Act. In order to successfully argue a case before the new Patent Trial & Appeal Board (PTAB), an attorney should have previous experience in areas including reexaminations, interferences, and District Court litigation. Of note, the PTAB has different rules and regulations that can pose significant challenges to attorneys unaccustomed to prior and new patent office contested proceedings.
Lessons Learned from Contested Proceedings at the USPTO
Eldora Ellison, Ph.D. – March 26, 2013
Eldora L. Ellison, Ph.D., discusses lessons learned from pending inter partes review and covered business method patent review proceedings. Primarily, she says, patent owners should be aware that their competitors are willing to use such proceedings to challenge a patent, particularly when there is related litigation. In the pending proceedings, the Patent Office has shown a propensity to institute trial. They have also demonstrated a tendency to deny unpatentability grounds on claims that are redundant, presented in a vague manner, or are based on art that is cumulative with other art. In all cases, the Patent Trial and Appeal Board has focused on the core patentability issues.
PTAB Judges and Hearings at the USPTO Satellite Offices
Robert Greene Sterne – March 25, 2013
Robert Greene Sterne explains the process of recruiting and selecting judges to staff the new Patent Trial & Appeal Board and the USPTO’s satellite offices in Denver, Detroit, Dallas, and Silicon Valley. With a large number of new Administrative Patent Judges with excellent legal and technical backgrounds, the USPTO hopes to begin clearing the backlog of cases over the next few years.
Patent Office Litigation Update: Stays at the US District Court
Don Banowit - March 21, 2013
Don Banowit discusses the interface between district court patent litigation and contested patentability challenges at the USPTO. Under the America Invents Act, inter partes review and covered business method patent review proceedings are available to challenge the patentability of an issued patent. Given the speed with which these proceedings are required to be conducted, as well as the higher standards for institution, he predicts that there will be more incentive for judges to stay current patent litigation and discusses two recent cases involving stays.
Patent Office Litigation Update: Observations from Early Decisions
Jon Wright – March 14, 2013
Decisions from the first inter partes review proceedings are beginning to flow from the Patent Trial & Appeal Board. Jon Wright has examined the early decisions to get a sense of how the Board is proceeding in these matters. In this video, he presents several observations on claim construction and expert testimony, as well as his opinion on the quality of the Board’s decisions.
The Decision Maker’s Guide to New Contested Proceedings Under the AIA
Robert Greene Sterne – March 7, 2013
Under the America Invents Act, a patent owner has many tools available when considering contested proceedings. Some of those options include inter partes review, covered business method review proceedings, supplemental examination, and ex partes reexamination. In this video, Rob Sterne outlines his “Decision maker’s guide to these proceedings” and discusses when each of these contested proceedings might be appropriate for the patent owner or accused infringer.