January 31 - February 1, 2023
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Event Session

Your Patent Has Been Challenged in an IPR, What Now?

January 31, 2023 @ 3:45 PM EST

3:45 PM ET
January 31, 2023

Your Patent Has Been Challenged in an IPR, What Now?

View Session Speakers

CLEAlthough sometimes it is obvious because there is a district court patent infringement litigation ongoing, or clinical trials underway, sometimes the first question for the patent owner is simply— why was the inter partes review (IPR) filed by the challenger and is it worthwhile for the patent owner’s representative to reach out to institute an initial dialogue with the challenger’s representative?

But once an IPR is filed the patent owner’s choices can be like a double edge sword— to respond or not to respond, to attempt to settle or not to settle, and what will the implications for the patent owner be of an IPR that is not responded to and resolved early and not on the merits? And, if the patent owner settles early before the PTAB reaches the merits is it more likely a subsequent IPR will be instituted?

Aside from the strategic decisions about whether to attempt to settle, or file a preliminary response to defeat institution, it is extremely important for the patent owner’s representatives to carefully review the prosecution history. What is the effect of an examiner considering specific prior art in a continuation that has been raised in an IPR? Does the PTAB defer to examiner consideration?

Should the patent owner waive the preliminary response? What will happen if the patent owner chooses to fight institution and prevails, is a follow-on ex parte reexamination guaranteed? If a follow-on reexamination is filed, will the Office institute that reexamination even despite the PTAB refusing to institute an IPR? And, if the reexamination is instituted will that cause the district court to institute a stay in parallel patent infringement litigation, which would introduce years of delay?

Other issues likely to come up include: (1) Are discretionary denials dead? (2) Once the IPR is underway, should patent owners disclaim vulnerable claims?

This panel will address these questions and strategic decisions facing the patent owner, discussing the pros and cons and what the various choices mean both short-term and long term.

Materials*

USPTO Guidance Reduces PTAB Discretionary Denials, Signaling Potential Uptick of IPRs in 2023

CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB’s Patentability Analysis

Open Prosecution as a Strategy to Counter IPRs Filed by Defendants

 

* A Note on Materials: For live, in-person programs we apply for MCLE in Virginia, as well as other jurisdictions (see the MCLE tab in the navigation bar above). MCLE regulations require substantive writing on the topic covered during the presentation. The materials provided, often published by IPWatchdog.com authors and contributors, relate to the topic but are not intended to pigeonhole guest speakers in any way. They are intended to be informative and elucidate the issues that will be discussed, although not necessarily represent the point of view that will be taken by any particular panelist. To date, the articles we have selected have always been sufficient to satisfy MCLE authorities. 



Add to Calendar 02/03/2023 5:42 PM America/New_York Your Patent Has Been Challenged in an IPR, What Now?

Although sometimes it is obvious because there is a district court patent infringement litigation ongoing, or clinical trials underway, sometimes the first question for the patent owner is simply— why was the inter partes review (IPR) filed by the challenger and is it worthwhile for the patent owner’s representative to reach out to institute an initial dialogue with the challenger’s…

Session Speakers

Meredith Addy

Co-Founder & Intellectual Property Litigator

AddyHart P.C.

Cook Alciati

Principal

Gardella Grace P.A.

Sarah Spires

Litigation Partner

Skiermont Derby LLP

Richard Torczon

Senior Counsel

Wilson Sonsini Goodrich & Rosati