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PTAB Petition Deficiencies That Matter

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DESCRIPTION

Experienced practitioners from both sides of the “v.” will provide insight gleaned from institution decisions and final written decisions on what petition deficiencies can turn the tides in PTAB proceedings.  The panel will break down these decisions to explain what arguments and facts resulted in non-institution or failure to obtain claim cancellations, providing practice tips along the way.

Educational Objectives:
• Real Party-in-Interest (RPI) – who needs to be listed in a petition, and how is this listing impacted by participation in a joint defense group?
• 102 v. 103 – which should a petitioner use, and how can a patent owner take advantage of the petitioner making the wrong choice?
• Expert declaration – when and how can declarations be used?
• Status of references as prior art – what evidence is needed?
• Estoppel: 1 year date – what starts the clock?
• Prior proceedings – how can they hurt or help a new petition?
• Claim construction – how can it be dangerous or helpful?

Who would benefit most from attending this program?
The panel will approach topics at a level suitable for corporate counsel who review petitions, preliminary responses, and patent owner responses in PTAB proceedings, providing them with the knowledge they need to effectively manage outside counsel and succeed in these proceedings.


SPEAKERS

JOSHUA L. GOLDBERG, ASSOCIATE, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP

Joshua Goldberg focuses on patent office proceedings, client counseling, and litigation. Representing petitioners and patent owners in dozens of inter partes review (IPR) and covered business method (CBM) post-grant review (PGR) proceedings, Mr. Goldberg devotes the majority of his time to arguing before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, both orally and in writing, and taking and defending technical expert depositions. He also develops and manages clients’ global patent portfolios, and provides opinions on patent infringement, patent validity, and other intellectual property issues. In addition to his patent office and counseling practices, Mr. Goldberg has experience in matters before U.S. district courts. He has prepared infringement and invalidity contentions; taken and prepared others to take and defend technical expert and 30(b)(6) depositions; worked with fact and expert witnesses to prepare declarations and expert reports; drafted claim construction and summary judgment briefs; prepared presentations for technical tutorial, claim construction, and summary judgment hearings; prepared outlines and demonstratives for direct/cross examinations of witnesses at trial; and conducted mock examinations of witnesses before and during trial. 

Mr. Goldberg is admitted to practice in the District of Columbia and Virginia and is registered to practice before the USPTO.  He earned his J.D., cum laude, from George Mason University School of Law and his B.A. from Drake University.


DANIEL C. COOLEY, ASSOCIATE, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP

Daniel Cooley’s practice focuses on helping companies protect and leverage their intellectual property, and address and defend against competitors’ intellectual property. He has experience handling intellectual property disputes in various forums, including U.S. district courts, before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and at the U.S. Court of Appeals for the Federal Circuit.  Mr. Cooley dedicates a significant portion of his practice to representing parties in patent office litigations before the PTAB and appeals of PTAB decisions to the Federal Circuit. He has acted as lead and backup counsel, and he has handled all aspects of inter partes review (IPR) proceedings, including writing the petition, deposing and defending expert witnesses, writing and arguing motions, and arguing at the oral hearing.  To help his clients navigate competitors’ intellectual property, Mr. Cooley provides strategic advice through opinions of counsel and clearance investigations.  He has experience with a variety of mechanical and electrical technologies, including medical devices, heavy machinery, manufacturing systems, imaging devices, feedback control systems, and computer-related technologies. 

Mr. Cooley is admitted to practice in the District of Columbia, Virginia, the United States Court of Appeals for the Federal Circuit and for Veterans Claims, and is registered to practice before the USPTO.  He earned his J.D., cum laude, from the Georgetown University Law Center, his M.S. from the University of Utah, and his B.S. cum laude, from the University of Utah.


CORY C. BELL, ASSOCIATE, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP

Cory Bell focuses on patent prosecution management, client counseling, post-grant practice, and litigation, with an emphasis on electronic technology. He assists with patent matters for emerging and high-technology companies in various electrical sciences, including computer hardware/architecture, software, robotics, communication networks, and content management systems.  Mr. Bell assists in developing patent prosecution strategies for clients with various budgets and desired outcomes (e.g., portfolio or company sale, licensing, or defensive posturing). He has more than eight years of patent experience and helps clients maximize their return on investments in research and development. Mr. Bell’s patent experience began as a patent examiner at the U.S. Patent and Trademark Office (USPTO). Since then, he has evaluated thousands of patents and patent applications for licensing, monetization, or sale; assisted in prosecuting hundreds of patent applications; managed patent portfolios; developed invention harvesting programs; conducted patent landscaping and competitor analysis; and filed patent reexamination, post-grant review (PGR), and inter partes review (IPR) requests. 

Mr. Bell is admitted to practice in Virginia.  He earned his J.D. from George Washington University Law School and his B.S., with distinction, from Pennsylvania State University. 


JONATHAN STROUD, CHIEF PATENT COUNSEL, UNIFIED PATENTS INCORPORATED

Jonathan Stroud is Chief Patent Counsel at Unified Patents Incorporated. Before that, he was at Patent Attorney at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and before that, he was a patent examiner at the United States Patent and Trademark Office. 

Mr. Stroud is admitted to practice in Maryland and the District of Columbia and is registered to practice before the USPTO.  He earned his J.D. from the American University Washington College of Law, his M.A. from the University of Southern California, and his B.S. from Tulane University.  


BRIAN PLATT, DIRECTOR OF IP LITIGATION, NAGRA USA

Brian Platt is Director of IP Litigation at Nagra USA, a subsidiary of the Kudelski Group, which is a Swiss public company and world leader in digital security and convergent media solutions for the delivery of digital and interactive content. In this role, Mr. Platt manages and oversees the Group’s intellectual property litigation matters in the United States and Europe, including the development and implementation of the Group’s intellectual property and innovation strategies. In addition, Mr. Platt manages intellectual property licensing programs and initiatives related to litigation worldwide. Most recently, Mr. Platt was Director, Patent Litigation, at Intellectual Ventures, a privately held global invention capital company founded in 2000 with > $5 billion in capital under management. In his role at Intellectual Ventures, Mr. Platt developed and managed Intellectual Ventures’ patent litigation matters, including the direction of licensing and customer engagements related to technology litigation matters. Before joining IV, Mr. Platt was a patent litigation attorney with the law firms of Merchant & Gould, P.C., and Perkins Coie LLP, where he managed civil and intellectual property litigation matters related to intellectual property in U.S. federal courts.

 

Mr. Platt is admitted to practice in Washington.  He earned his J.D. from the Seattle University School of Law and his B.S. from the Walla Walla University School of Engineering.