Patent Reexamination: The New Strategy for Litigating Infringement Claims

Description

Patent reexamination filings are soaring. Companies accused of patent infringement are now fighting back by routinely asking the U.S. Patent and Trademark Office (PTO) to reexamine the validity of the accuser’s original patent.

Reexaminations can be a driving factor in determining how a patent infringement case is ultimately resolved. When patent reexaminations are sought in the context of pending litigation, patent litigators must have an effective strategy in place to confront the unique issues associated with them.

Listen as our authoritative panel of patent attorneys identifies common challenges confronting patent litigators when using reexaminations as a litigation tactic. The panel will offer strategies for pursuing or defending patent litigation claims involving patent reexaminations.

Outline

1. Overview—PTO reexamination process
   1. Ex parte reexaminations
   2. Inter partes reexaminations
   3. Reexamination trends
2. Common issues arising with use of patent reexaminations during litigation
   1. Collateral estoppel and intervening rights
   2. Conflict between reexamination and court findings
   3. Admissibility of reexamination proceedings at trial
   4. Motions for stay based on reexamination proceedings
3. Effective litigation strategies and tactics
   1. When and in what circumstances should reexaminations be filed?
   2. Separate reexamination counsel?
   3. Race to judgment

Benefits

The panel will review these and other key questions:

• What are the current trends surrounding the use of patent reexaminations during patent litigation?
• When in the litigation proceeding should reexaminations be filed?
• How have the doctrines of collateral estoppel and intervening rights created challenges for attorneys using patent reexaminations as a strategy during patent litigation?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Gregory Morse, Director, Central Re-Examination Unit
United States Patent and Trademark Office, Washington, D.C.

Gregory V. Novak, Managing Partner
Novak Druce Quigg, Washington, D.C.

He serves as national intellectual property counsel to several publicly traded corporations, including Fortune 100 companies, undertaking patent, trademark, and strategic intellectual asset management counseling, as well as emphasizing licensing and litigation based reexaminations.

Greg H. Gardella, Principal
Fish & Richardson, Minneapolis

He practices in the areas of patent prosecution, reexamination, reissue proceedings, strategic counseling, due diligence investigations, pre-suit investigations, licensing, preparation of infringement and validity opinions, and trade secret enforcement. Reexamination is one of his specialties — he has represented both patent owners and challengers in well over 20 reexamination proceedings.