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Third-Party Challenges Under the America Invents Act: Litigation Strategies



Wednesday, September 12, 2012
Product Code - LGN46
Speaker(s): Irah H. Donner, Stroock & Stroock & Lavan LLP; Matthew W. Siegal, Stroock & Stroock & Lavan LLP
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On September 16, 2011, the Smith-Leahy America Invents Act (AIA) was signed into law by the President. The AIA establishes several new third-party challenges including post grant review, inter partes review, and the transitional program for covered business method patents that will dramatically affect strategies for patent litigation plaintiffs and defendants. These new third-party challenges may significantly shift patent validity challenges from district courts to the U.S. Patent Office, with a statutorily mandated fast resolution (1 to 1.5 years) and provide in many circumstances an automatic stay in the litigation.

Educational Objectives:

• Learn the affect on current reexamination practice.
• Gain an understanding of the basis and procedures for the new third-party challenges.
• Find out the strategic uses of third-party challenges versus litigation.
• Understand the potential pitfalls of third-party challenges.

Who would benefit from attending this program?

Attorneys practicing patent litigation; in-house counsel and executives for companies involved in patent litigation, and patent attorneys.

Program Level: Intermediate

Credit Available: CLE. For more information, please click on the “CLE Credit” tab.

Irah H. Donner, Stroock & Stroock & Lavan LLP; Matthew W. Siegal, Stroock & Stroock & Lavan LLP

Irah H. Donner, Stroock & Stroock & Lavan LLP
Irah Donner specializes in the counseling, acquisition and enforcement/litigation of all forms of intellectual property rights, with particular emphasis in computer software, Internet, biomedical devices, computer hardware, financial and electronics applications.

Before pursuing a career in law, Mr. Donner worked as a control engineer, designing software implemented controllers for functional neuromuscular stimulation of paralyzed muscle at the Cleveland Veterans Administration Hospital. He also designed software applications for large scale computer systems at Bell Communications Research (BELLCORE) in the facility analysis.

Mr. Donner is author of the books Patent Prosecution: Law, Practice, and Procedure, Seventh Edition, with 2012 Supplement and Constructing and Deconstructing Patents, published by Bloomberg BNA. He has published many articles, including articles on patenting computer software and hardware-related applications.

Mr. Donner earned a J.D., magna cum laude, from Case Western Reserve University School of Law, where he also served on the editorial board of the CWRU Law Review. He earned an M.S. in systems engineering and a B.S. with high honors from Case School of Engineering. Mr. Donner is registered to practice before U.S. Patent and Trademark Office and admitted in New York, New Jersey and the District of Columbia.

Matthew W. Siegal, Stroock & Stroock & Lavan LLP
Matthew W. Siegal, a partner in Stroock & Stroock & Lavan LLP’s intellectual property group, concentrates his practice on patent litigation, prosecution, opinions, licensing and due diligence activities for some of the largest companies in the world, as well as for individual inventors.

Mr. Siegal’s litigation practice has involved all aspects of discovery, pretrial, trial and appeal before the Federal Courts, the State Courts and the United States International Trade Commission. His patent prosecution experience includes prosecution of U.S. and worldwide patent applications in chemical, materials, pharmaceutical, electrical and mechanical fields, including the areas of insecticides, coatings and adhesives, printers, polymers and consumer products. Mr. Siegal has also been involved in both ex parte and inter partes reexaminations, including the appeal thereof.

A prolific author and speaker, Mr. Siegal has written and lectured on a wide variety of topics in both the United States and Japan, on topics relevant to both patent prosecution and patent litigation.

Mr. Siegal earned a J.D. from Fordham University School of Law and a B.S. in Chemical Engineering from Cornell University. He is admitted to practice before the Unites States Patent and Trademark Office and the Courts of the State of New York, the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, the Southern and Eastern District Courts of New York and the U.S. Court of International Trade.

This program is CLE-credit eligible.

If you have further questions regarding a specific state or how to file for CLE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the Legal and Business CLE Accreditation Coordinator.

Hardship Policy
Bloomberg BNA offers a hardship policy for any attorney earning less than $30,000 per year. If an attorney wishes to take advantage of this option, he or she must do so in writing and also provide proof of hardship. If approval is granted, a discount of 50% off the full registration price of the program will be awarded.

Questions
For more information about Mandatory or Minimum Continuing Legal Education (MCLE) requirements, visit the American Bar Association website at http://www.abanet.org/cle/mandatory.html.