Parallel Patent Reexaminations

October 11, 2012 | 2:45-3:45 p.m. CT | Chicago

The filing of reexaminations continues to be a strategy for parties against whom a patent of questionable validity has been asserted. A reexamination proceeding might be initiated in anticipation of litigation or filed soon after litigation has begun. A parallel reexamination proceeding is usually a basis for seeking a stay of the more costly district court proceeding and/or used to bring the patentee to the bargaining table. Factors to consider in deciding whether to seek reexamination will be covered, including updated data and statistics on PTO reexamination proceedings and a discussion of the new AIA-created inter partes system that replaces inter partes reexaminations in September 2012, and how it differs in standards and procedures from the old system and ex parte reexaminations. This session will also cover the effects of a reexamination proceeding on litigation, including stays, as well as the potential effects on collateral estoppel, claim construction positions, willfulness charges, inequitable conduct claims, and on damages and intervening rights (e.g., if claims are amended).

Who Should Attend

Patent litigators and lawyers in patent firms who advise clients in disputes that may lead to litigation; general business litigators whose practice includes patent trials; patent prosecutors whose actions in preparing and prosecuting patents are critical in providing support for the proper claim construction; and corporate counsel who will have the responsibility for supervising patent litigation, interpreting its progress for management, and pursuing opportunities for settlement.

Sponsored by: Practising Law Institute

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