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Patent Litigation at the USPTO Under the America Invents Act of 2011



Wednesday, October 19, 2011
Product Code - LGAU02
Speaker(s): Michael V. Messinger, Sterne Kessler Goldstein & Fox P.L.L.C.; Jon E. Wright, Sterne Kessler Goldstein & Fox P.L.L.C.; Deborah Sterling, Ph.D., Sterne Kessler Goldstein & Fox P.L.L.C.
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On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (H.R. 1249) into law. One major aim of the reform legislation is to establish the United States Patent and Trademark Office (USPTO) as an alternative forum to U.S. district courts for vetting the validity of issued U.S. patents. These sections modify existing practice and provide entirely new structures and legal bases for deciding patentability questions at the USPTO.

 

Educational Objectives:

 
Given the scope of these changes, this webinar will address how the Act as a whole opens the door wider for patent litigation at the USPTO. This includes a closer look at:

• The new agency-level decision-making body created by the Act, called the Patent Trial and Appeal Board (PTAB), and its composition, role, and procedures.

• The four new (or recast) grounds for vetting patentability at the USPTO on behalf of patent owners or third-party challengers: post-grant review, inter partes review, supplemental examination, and the original ex parte reexamination.

• Various strategic issues raised by the America Invents Act as it aims to move more patentability decisions to the USPTO and at the same time make them more timely and efficient.

Michael V. Messinger, Sterne Kessler Goldstein & Fox P.L.L.C.; Jon E. Wright, Sterne Kessler Goldstein & Fox P.L.L.C.; Deborah Sterling, Ph.D., Sterne Kessler Goldstein & Fox P.L.L.C.

Michael V. Messinger / Sterne, Kessler, Goldstein & Fox P.L.L.C.
Mr. Messinger is a Director in the Electronics Group at the Washington, D.C.-based intellectual property law firm. He works with company managers, directors, and employees to identify and leverage intellectual property assets. He has extensive experience prosecuting U.S. and international patent applications and developing strategic patent portfolios. Mr. Messinger has written and prosecuted numerous patent applications including those related to computer networking (Internet, World-Wide Web, Java technologies), communications protocols, high-speed optical communications, photonics, graphics processing, data mining, voice-over-IP, cryptography, spread spectrum technology, and multi-processor computer architecture. He has handled complex patent matters involving appeals reissue and re-examination. Mr. Messinger has also provided infringement and validity analysis in opinion work and in support of litigation for computer-related patents.

Jon E. Wright / Sterne, Kessler, Goldstein & Fox P.L.L.C.
Mr. Wright is a Director in the Litigation and Electronics Groups at the Washington, D.C.-based intellectual property law firm. He is active in all aspects of the firm’s patent practice, with a focus on complex patent litigation and appellate litigation in the courts, and complex reexamination practice before the United States Patent & Trademark Office. Mr. Wright is a recognized leader in complex reexamination practice where there is co-pending district court litigation or USITC investigations. He is familiar with the challenges faced by both patent owners and third-party requesters in these complex proceedings. In particular, he has represented patent owners in over thirty inter partes and ex parte reexaminations involving concurrent district court or USITC proceedings, including appeals to the Board of Patent Appeals and Interferences (BPAI). He also has extensive experience in the preparation and prosecution of patent applications before the USPTO in technologies ranging from software, hardware (analog and digital), communications, wireless devices and systems, networking, database management, computer memory devices, semiconductor manufacturing, computer graphics and electrical power systems including nuclear technology.

Deborah Sterling, Ph.D. / Sterne, Kessler, Goldstein & Fox P.L.L.C.
Dr. Sterling is an Associate in the Biotechnology/Chemical Group at the Washington, D.C.-based intellectual property law firm. Her practice is focused in the biotechnology and pharmaceutical industries, where she is involved in all areas of patent procurement, exploitation and enforcement. She has significant experience in representing clients in patent reexaminations and has represented clients in patent interferences before the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office. Dr. Sterling has extensive experience in evaluating patent portfolios for invalidity, non-infringement, freedom-to-operate and due diligence analyses, and she has assisted clients in devising design-around strategies for issued patents. Dr. Sterling’s practice also includes counseling clients on intellectual property strategy as well as domestic and foreign patent prosecution. She has also been involved in multiple pharmaceutical and biotechnology patent litigations, including those brought under the Hatch-Waxman Act.