Wolf Greenfield Seminar: IPRs: Strategies for Winning and Utilizing Them Effectively in Litigation - Video Now Available

June 2, 2015 8:00 AM - 10:30 AM ET

Seaport Boston Hotel
On June 2, 2015, Wolf Greenfield hosted a seminar entitled "IPRs: Strategies for Winning and Utilizing Them Effectively in Litigation."

In the nearly three years since inter partes review (IPR) - a mechanism for challenging the validity of a patent before the USPTO - went into effect under the America Invents Act, its use has skyrocketed. And for good reason - IPRs can be a more efficient and cost-effective way to resolve patent disputes. They are especially effective for companies targeted by patent trolls. One must, however, proceed with caution when it comes to IPR practice. Petitioners and patent owners alike need to employ thoughtful strategies, whether their goal is simply to win the IPR, or to use the IPR to settle or avoid patent litigation.

Our esteemed and experienced panel included Peter Toto, Senior Vice President, Intellectual Property at Sony Corporation of America; Jim Harrington, Senior Vice President, Global Chief Intellectual Property Counsel at Shire Pharmaceuticals; Rich Giunta, Co-Chair, Post Grant Proceedings at Wolf Greenfield; and Mike Rader, Co-Chair, Litigation at Wolf Greenfield. The panel was moderated by Randy Pritzker, Co-Chair, Electrical and Computer Technologies at Wolf Greenfield.

A video of the seminar can be viewed here. Use the following timestamps to skip to a section of the discussion:

21:58 – How does Shire view and use IPR?
33:06 – How does Sony view and use IPR?
38:25 – How might Shire’s position change in the future should the company be targeted by patent infringement suits, in which IPR could be an effective tool?
42:02 – If Sony enforces its own patents, is there a concern that IPR could challenge the validity of those patents?
43:45 – How has IPR use affected the practice of outside lead litigation counsel? Specifically, is it a helpful way to obtain a stay or settle a suit?
52:35 – What if outside counsel represents the patent owner?
59:15 – What are some effective strategies for outside counsel to win IPRs?
1:02:57 – Specifically, how do you win as patent owner?
1:11:04 – How about as a petitioner?
1:16:45 – How do litigation and technical patent counsel work together on litigation and IPR practices to ensure a consistent strategy and arguments before the PTO and court?
1:23:22 – How have protective orders affected outside counsel’s practice?
1:29:25 – How can companies deal with real party in interest?
1:30:22 – How does outside counsel deal with redundancy when working on an IPR?

The presentation can be viewed below: