David Kappos Headlines Post-Grant Patent Trial Program in NY

Next week on Wednesday, March 27, 2013, I will be once again in New York City at Practising Law Institute headquarters on Seventh Avenue, roughly between Central Park and Times Square. The program for the day is titled USPTO Post-Grant Patent Trials 2013, which will provide 6 CLE credits for attendees.

I am a moderator for the segment titled Practice Before the PTAB Roundtable, which will discuss the first trial petitions filed, motions practice, scheduling, the possible need for rule refinements and practice tips for practitioners. Robert Sterne of Sterne Kessler and Professor Lisa Dolak of Syracuse University College of Law will be the panelists.

A new addition to the program just announced today is David Kappos, who is the immediate former Director of the United States Patent and Trademark Office. Kappos, a life-long employee of IBM prior to taking charge of the USPTO, is now with Cravath, Swaine & Moore LLP in New York City.  Kappos will discuss the Patent Trial and Appeal Board, specifically discussing ex parte reexamination, the remaining legacy inter partes reexamination cases, inter partes review and the transitional program relating to covered business method patents. His segment will run from 9:15 am to 10:15 am. In addition to being presented live in New York City the program will also be webcast.

As most patent professionals are likely aware, post-grant patent proceedings were pursued in record number at the USPTO during 2012. The substantial costs and uncertainty of patent litigation required the development of alternative case management strategies, which at least require consideration of challenging patents at the USPTO via one of the many vehicles available. Of course, patent reexamination remains a viable alternative to litigation, or at least a considerable parallel path to enhance litigation positioning.

The desire for an even more robust USPTO post issuance proceedings, the America Invents Act (AIA) introduced entirely new options to review patents post issuance. Effective September 16, 2012, Phase II implementation of the AIA ushered into being post-grant review, inter partes review (which replaced inter partes patent reexamination), derivation proceedings, and a special post-grant review for covered business method patents. Going forward into 2013, it is anticipated that the USPTO will become an even more prominent battleground for patent disputes.

The potential benefits of post-grant patent challenges to defendants include:

• Provide an opportunity to stay a concurrent litigation
• Provide a low-cost alternative to district court and/or ITC litigation
• Create an intervening rights defense
• Create additional file history that provides new non-infringement and/or estoppel theories
• Demonstrate the “but for” materiality of references applied in an inequitable conduct defense
• Undermine or prevent damage verdicts with a USPTO invalidity ruling
• Provide an additional basis on which to obtain a stay of judgment pending appeal

The program is taught by a faculty of judges, preeminent lawyers, and industry leaders who have earned national reputations in patent litigation and in post-grant proceedings at the USPTO.

Hopefully I will see you in New York, or later in the Spring when the live program goes to San Francisco, CA (April 15, 2013) and Austin, TX (April 29, 2013).