University of Texas School of Law
Conference art
TX Credit Info:
6.00 hrs
More Credit Info

2013

USPTO Post-Grant Patent Trials 2013

Austin – Apr 29, 2013 – AT&T Conference Center
Conference Concluded



Presented by
Practising Law Insitute
The University of Texas School of Law


The AT&T Conference Center - Hotel is offering rooms at $174 per night.
Make your reservation online.

Program Features
The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pretrial and post-trial options. Although the course will focus on strategic considerations, common procedural traps for the unwary will also be identified. The relative advantages and disadvantages of the various proceedings are explained both from the perspective of the Patentee and Third Party. Perspectives of the judiciary are presented, including case studies of well-known disputes. Insight to the organization, operation and procedures of the USPTO’s Patent Trial and Appeal Board, Central Reexamination Unit, and Office of Patent Legal Administration are discussed.

  • Master the new USPTO post-grant review procedures mandated by the America Invents Act and practice before the Patent Trial and Appeals Board

  • Learn the benefits of post-grant challenges for defendants and how ex parte reexamination, patent reissue and supplemental examination can benefit patentees

  • Understand the role of post-grant USPTO proceedings as a component of litigation strategy

  • Take away the insights of preeminent patent lawyers and judges

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.
Schedule

Monday Morning, Apr 29, 2013

9:00 am

0.25 hr

Program Overview

W. Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox - Washington, DC

9:15 am

1.00 hr

Patent Trial & Appeal Board (PTAB) Trial Proceedings, Reexamination Before the Central Reexamination Unit, and the Office of Patent Legal Administration

Derivation, Ex Parte Reexamination, Inter Partes Reexamination (Legacy), Inter Partes Review, Post-Grant Review, Transitional program for Covered Business Method Patents

10:15 am

1.00 hr

Post-Grant Strategies & Tactics

The Challenger Perspective, The Patent Ownder Perspective, Portfolio Considerations, Estoppel, When, What and Why to Challenge Patentability at the USPTO Instead of Validity in the district court of the ITC

W. Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

11:15 am
Networking Break

11:30 am

1.00 hr

Discovery Practice Before the PTAB

Pre-trial discovery options, initial disclosures, protective orders, discovery standards, expert declarant selection & cross examination, impeachment and use of inconsistent statements

Eldora L. Ellison, Sterne Kessler Goldstein Fox - Washington, DC
Michael Kiklis, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

Monday Afternoon, Apr 29, 2013

12:30 pm
Lunch Break

1:45 pm

1.00 hr

Practice Before the PTAB Roundtable

Retrospective of first trial petitions, motion practice, scheduling, rules refinements, practice tips, Q&A

Lisa A. Dolak, Syracuse University College of Law - Syracuse, NY
Eugene R. Quinn Jr.., EQR Law - Leesburg, VA
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox - Washington, DC

2:45 pm
Networking Break

3:00 pm

1.00 hr

Appeals to the Court of Appeals for the Federal Circuit

Appeal route, standards of review, briefing schedule, effective briefs, oral arguments, practice tips, Q&A

Nancy J. Linck, Rothwell, Figg, Ernst & Manbeck, PC - Washington, DC
David L. McCombs, Haynes and Boone, LLP - Dallas, TX

4:00 pm

1.00 hr

The U.S. District Court & ITC Judicial Perspectives

Parallel universe for patentability/validity determinations between the USPTO and the District Courts and the ITC, different claim construction, different burdens of proof, estoppels, stays, timelines of parallel proceedings

Douglas A. Cawley, McKool Smith PC - Dallas, TX
Hon. Barbara M.G. Lynn, U.S. District Court, Northern District of Texas - Dallas, TX
Scott P. McBride, McAndrews, Held & Malloy, Ltd. - Chicago, IL

5:00 pm
Adjourn

Faculty

Conference Faculty

W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Douglas A. Cawley
McKool Smith PC
Dallas, TX
Lisa A. Dolak
Syracuse University College of Law
Syracuse, NY
Eldora L. Ellison
Sterne Kessler Goldstein Fox
Washington, DC
Michael Kiklis
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Nancy J. Linck
Rothwell, Figg, Ernst & Manbeck, PC
Washington, DC
Hon. Barbara M.G. Lynn
U.S. District Court, Northern District of Texas
Dallas, TX
Scott P. McBride
McAndrews, Held & Malloy, Ltd.
Chicago, IL
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Eugene R. Quinn Jr..
EQR Law
Leesburg, VA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox
Washington, DC

Planning Committee

W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
John M. Mola
Practising Law Institute
San Francisco, CA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox
Washington, DC
Credit Information

MCLE Credit

Texas
6.00 hrs
Reporting Information
A Texas MCLE Reporting Form will be included in your course materials. Please complete and return to the registration desk and UT Law CLE will report credit on your behalf to the State Bar of Texas, or you can self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Attendance will be provided at the conference to keep for your records.
California
6.00 hrs
Reporting Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.
Other States
Many jurisdictions accept conferences offered by The University of Texas School of Law, and approved by the State Bar of Texas, for CLE credit. Please check with your jurisdiction's regulatory authority. A Certificate of Attendance and credit reporting documentation will be provided at the conference.
Key Dates

Austin

  • Last day for Standard Registration early registration: Apr 29, 2013
    Add $0 for registrations received after this time
  • Last day for full refund: Apr 24, 2013
  • Last day for partial refunds: Apr 24, 2013
    $1,000 processing fee applied

Hotel / Venue

Austin

AT&T Conference Center
AT&T Conference Center

1900 University Avenue
Austin, TX
512-404-3600

Accommodations

$174.00 good through Apr 19, 2013
Sponsors