The Secrets to PTAB Success: Advanced IPR Strategies

The Secrets to PTAB Success: Advanced IPR Strategies

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This panel will address two specific advanced strategies, the first dealing with correction of patent claims and the second dealing with the use of experts.

Changing claims using any mechanism is something many patent owners do not want to do because of the loss of damages, however in some instances where the patent is useful to preserve market share the patent owner may want to consider saving claims with some means to amend, but is filing a motion to amend during an inter partes review (IPR) the best mechanism? Among other this, the panel will tackle the question of what is the relevance of reexamination within the context of the post grant proceeding strategy? The panel will also discuss the pros and cons of reexamination and reissue as an alternative to amending claims during IPR. The panel will further discuss the possibility of a reissue off-ramp, and statutory changes necessary to create such a reissue off-ramp.

The panel will then pivot to discuss experts, specifically the pitfalls of using experts to recreate experiments from references and the use of multiple experts (i.e., one to conduct the experiment and another to interpret the results).

Materials*

Curing the PTAB: How 3 Fixes Will Make a Better, Fairer Process

Using the Same Expert at the PTAB & District Court?

CAFC says PTAB Entitled to Weigh the Credibility of Experts, Ignore Attorney Argument

Federal Circuit decides Aqua Products, says patentability burden of amended claims on Petitioner

* 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.