Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)
Selecting and Tailoring Evidence, Timing of Submission by Petitioner and Patent Owner, and Best Practices for Challenging Evidence
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide patent counsel with guidance for navigating evidentiary issues in PTAB trials. The panel will look at PTAB evidentiary standards, address types of permitted discovery, contrast the weight versus admissibility of evidence, review timing requirements, and examine evidentiary objections. The panel also will discuss best practices for the use of expert witnesses and considerations for ensuring that an evidentiary record stands up to Federal Circuit review.
Outline
- Evidentiary standards at the PTAB
- Weight and admissibility of evidence
- Timing of evidence submitted
- Submission by the petitioner
- Submissions by the patent owner
- Challenging evidence and expert testimony
Benefits
The panel will review these and other key issues:
- How can practitioners prepare and submit evidence to support the petitioner's or patent owner's position?
- What limitations do patent owners face in submitting evidence?
- What best practices should practitioners employ when challenging evidence and expert analysis?
Faculty
John C. Alemanni
Partner, Co-Chair PTAB Litigation Group
Kilpatrick Townsend & Stockton
Mr. Alemanni focuses his practice on trials before the Patent Trial and Appeal Board and related appeals to the U.S.... | Read More
Mr. Alemanni focuses his practice on trials before the Patent Trial and Appeal Board and related appeals to the U.S. Court of Appeals for the Federal Circuit. His practice also includes client counseling, patent litigation and strategic patent prosecution. Mr. Alemanni has served as lead or back-up counsel on over 130 trials before the PTAB. He also helps manage the portfolios of both established and emerging companies, including a company consistently ranked at the top of its category in the IEEE Power Spectrum Patent Power scorecard and having generated licensing revenues of more than $250 million dollars. Mr. Alemanni focuses on hardware and software technologies, including mobile devices, gaming, bioinformatics and laboratory information management, as well as mechanical and electro mechanical devices, including aerospace components, medical devices and medical device simulations.
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Brennen Baylor
Attorney
McDermott Will & Emery
Mr. Baylor focuses his practice on intellectual property matters in the life sciences industry. He prosecutes patent... | Read More
Mr. Baylor focuses his practice on intellectual property matters in the life sciences industry. He prosecutes patent applications related to small molecules, pharmaceutical macromolecules, medical devices, agricultural chemistry, nutraceuticals, synthesis and use of nucleic acids and polypeptides, cell culturing systems and apparatuses, methods of culturing cells and methods of preparing tissue grafts. Mr. Baylor also has experience advising clients on inventions in the fields of chemical engineering systems, lithium batteries, manufacturing flooring composites, 3D printer filament compositions, and cellulose-based packaging materials. He develops go-to-market strategies for clients by providing detailed opinions on clients’ freedom to operate and the patentability of inventions. He assesses potential infringement by competitors and the validity of competitors’ intellectual property in anticipation of and preparation for litigation. Mr. Baylor also advises clients on comprehensive defense strategies in ongoing infringement litigation by providing invalidity and non-infringement analyses in coordination with co-counsel and expert witnesses.
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Justin Krieger
Partner
Kilpatrick Townsend & Stockton
Mr. Krieger is a first chair inter partes review and post-grant review litigator with an over 90% win... | Read More
Mr. Krieger is a first chair inter partes review and post-grant review litigator with an over 90% win rate in both challenging third-party patents and defending against patent challenges brought before the PTAB. He also serves as an adjunct Professor of Law at the University of Denver Sturm College of Law where he teaches a course on PTAB studies. As a registered patent attorney, Mr. Krieger also focuses on district court and ITC litigation, client counseling, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. Mr. Krieger lectures and publishes frequently on various IP topics.
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