The In-House Counsel Guide: Best Practices for Managing Your PTAB Trials and Litigation / IPR Strategies (Live MBHB Webinar)

Tues., October 15, 2019 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx

AIA Trial Proceedings before the PTAB have substantially altered the patent litigation framework, raising serious questions about the enforcement of patents in every industry. In light of this sea change, perhaps no one has faced greater challenges than companies with in-house innovation that they strive to foster and protect. Realizing this, over the last year, the USPTO has taken a number of steps to reign in the perceived anti-patent bias. Changes in claim construction (ranging from easing provisional claim amendment requirements to altering the claim construction standard altogether, as well as clarifying options for amending claims through reissue or reexamination requests before, during, and after AIA Trial Proceedings and issuing post-SAS rules that require all contested claims and grounds to be considered in a Final Written Decision) and the recent publication of a revised Trial Practice Guide that, among other things, gives the Patent Owner an additional sur-reply brief and opportunities for a sur-rebuttal at oral argument. These topics and more will be discussed at length in this webinar.  

MBHB attorneys Grant Drutchas and Trey Lyons take a look at these and other changes and the impact they have had on patentability determinations. They also address other risks and pitfalls that come along the way in AIA Trial Proceedings, including:

  • Rehearing Requests: Worth the bother (and the risks)?
  • Appeals: When does it make sense and what issues can be persuasive?
  • Preliminary Responses: What benefit (or not) does a Patent Owner get post-SAS for filing a Preliminary Response?
  • Expert Depositions: What are the nuances of deposing experts in PTAB Trials (vs district court litigation)?
  • Estoppels: What impact could an IPR have on your litigation options, both AIA estoppel and estoppels arising from agency determinations?
  • Declaratory Judgment Actions: What place do they have in a post-AIA world? 


Presenter(s): MBHB attorneys Grantland Drutchas and George “Trey” Lyons, III

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.

NOTE: MCLE credit is not available for this archived recording. 

Access an archived audio version of this webinar here