Sughrue is proud to announce that it has once again agreed to sponsor a workshop on Inter Partes Review at the upcoming PanEuropean Intellectual Property Summit in Paris. The event will take place December 9-11, 2013 at the CCIP (chambre de commerce et d’industrie de Paris).
Sughrue's workshop will consist of two luncheons that will cover U.S. Patent Office Trials after One Year. The lecture on Day 1 will provide a synopsis of the IPR proceedings from this past year to prepare companies and their counsel with important considerations and factors that should be considered when initiating an IPR. We will start the day at the beginning, by giving a brief overview of IPR's history. We will briefly explain the procedure in place before IPRs for challenging the validity of a patent and highlight some of the key problems with the prior procedures which Congress was trying to address by instituting the new IPR proceedings. During this topic, we will also explore in depth some of Congress' particular changes from the prior proceedings, including the timeline and scope of review of an IPR and the PTAB's compilation of sophisticated judges to oversee these proceedings.
The next part of Day 1 will focus on the who, what, when, where and why of IPR proceedings. That is, who are the main players filing IPRs and what technologies are seeing the most IPR action. Further, we will look at when and how often these IPRs are being filed to illustrate just how aggressive companies are being with these new proceedings. Lastly, we will explain our opinion that IPRs are being filed generally because, as of right now, companies are finding them useful for various reasons.
The last part of Day 1 will highlight important aspects of IPR filings for companies, such as costs and strategies for paying for IPRs, finding counsel, and managing a litigation with an associated IPR. Also, we will touch on some patent owner strategies for those who find themselves subject to an IPR proceeding.
Our lecture on Day 2 will delve into specific case studies of IPRs from this past year. We will examine some of the key decisions from the past year and consider the important lessons from the PTAB's rulings.
In the past year, there have been over 500 IPR filings and about 200 decisions from the PTAB regarding the institution of these filings. Out of these filings only a small percentage has been denied review. During Day 2, we will explore why the PTAB grants most IPRs, but denies a handful.
We will also consider the scope of discovery, scope of review granted for IPRs, and important lessons learned from each case. In addition, we will examine whether cases have a litigation pending in a district court as well. For these cases, we will look at whether a stay was granted for these proceedings, and the reasons behind the decision.
We will conclude Day 2 by providing our opinion on the trends and changes that IPRs are having on the U.S. patent system. For example, IPR proceedings have created a second institution for patent proceedings in the U.S.
Whereas infringement is still litigated in the district courts, validity of a patent is often time separately being decided at the PTO with an IPR before the courts have had a chance to consider the infringement contentions. This two-part patent system developing in the U.S.—of deciding validity at the PTO before deciding infringement in at the district court—is different, and in some cases, opposite from other countries. We will provide some insights into this changing and evolving new patent regime.
The lecture will be presented by members of Sughrue Mion PLLC’s USPTO Patent Trial Group and Litigation Practice Group:
Ken Burchfiel is a partner at Sughrue Mion, PLLC, with over 30 years’ experience conducting litigation in federal courts and complex USPTO inter partes interference proceedings, which provide a model for conduct of post-grant patent trials. He is the moderator of the U.S. Patent Opposition Practice group at LinkedIn, and is uniquely qualified to advise clients on the uses and consequences of the new USPTO proceedings concurrently with district court litigation. (www.sughrue.com/kburchfiel)
Raja Saliba is a partner at Sughrue Mion, PLLC with over 15 years’ experience in counseling and representing clients in litigation in federal district courts, the USPTO, and in appeals in the Federal Circuit and regional circuits. Mr. Saliba has represented litigation clients in a broad variety of the electrical and mechanical arts and has extensive experience in administrative litigation, including inter partes reexaminations. (www.sughrue.com/rsaliba)
Chandran Iyer is a partner in the Washington, DC office of Sughrue Mion, PLLC. Mr. Iyer practices in the area of patent law with a focus on patent litigation and trials at the district courts, ITC, and the USPTO. Mr. Iyer, a registered patent attorney, has extensive experience litigating patent infringement cases relating to Internet technologies, computer software and hardware, pharmaceutical products, and medical devices. (www.sughrue.com/cbiyer)
Margaret Welsh is an associate in the Washington, DC office. Her practice focuses on the preparation and prosecution of patent applications as well as patent litigation and trials at the USPTO. Ms. Welsh is a registered patent attorney with experience in counseling clients on intellectual property matters. She has knowledge in a wide range of mechanical and electrical technologies. (www.sughrue.com/Margaret-M-Welsh)