Defending Patents in IPR Proceedings: Best Practices to Mitigate Risks of Claim Cancellation
Leveraging Preliminary Responses, Using Experts, Filing Motions to Amend and Substitute Claims, Evaluating Secondary Considerations
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance to counsel representing patent owners in defending their patents in inter partes review (IPR) challenges. The panel will discuss IPR strategy, lessons from recent PTAB rulings, and best practices to mitigate risk of cancellation of patent claims.
Outline
- What patent owners can/should do when defending their patents in IPR challenges
- IPR strategy
- Tools in the patent owner toolbox
- Best practices for minimizing risk of claim cancellation
Benefits
The panel will review these and other key issues:
- What strategies have patent owners used to achieve a successful result in IPR proceedings?
- How can patent owners best use expert testimony to effectuate an IPR defense strategy?
- How can patent owners persuasively present motions to amend or preliminary responses in IPR defense?
Faculty
Michael J. Flibbert
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Flibbert has extensive experience in all aspects of patent law, focusing on district court litigation, appeals, and... | Read More
Mr. Flibbert has extensive experience in all aspects of patent law, focusing on district court litigation, appeals, and inter partes review (IPR) and other contested proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. He has successfully represented clients in patent disputes before federal district courts, the Federal Circuit, and the PTAB involving a range of technologies, including pharmaceuticals, biotechnology, chemistry, chemical engineering, agriculture, and materials science. He also regularly counsels clients on patent issues, including infringement, validity, enforceability, and remedies.
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John C. Jarosz
Managing Principal
Analysis Group
Mr. Jarosz evaluates damages in patent, copyright, trade secret, trademark, and unfair competition cases in which the... | Read More
Mr. Jarosz evaluates damages in patent, copyright, trade secret, trademark, and unfair competition cases in which the types of damages have included lost profits, reasonable royalties, price erosion, unjust enrichment, accelerated market entry, and prejudgment interest. He also provides strategy consultation, and has given expert economic testimony in matters involving intellectual property.
CloseMaureen D. Queler
Finnegan Henderson Farabow Garrett & Dunner
Ms. Queler practices all aspects of patent-related work in the chemical and pharmaceutical areas, including client... | Read More
Ms. Queler practices all aspects of patent-related work in the chemical and pharmaceutical areas, including client counseling, patent prosecution, post-grant proceedings, and U.S. district court and appellate litigation. She represents clients in IPR and other contested proceedings before the PTAB. She also has an active patent prosecution and counseling practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients.
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