Most patents challenged in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) are involved in co-pending litigation. A threshold question is whether litigation counsel will also handle the IPR proceedings. When engaging separate counsel for the IPR proceedings, cooperation between litigation and IPR counsel is paramount to a successful outcome both at the PTAB and in the district court. Numerous issues that require close coordination must be addressed, including whether to engage separate expert witnesses, claim construction, discretionary denial, validity (or invalidity) arguments, stays, discovery, objective evidence of nonobviousness, motions to amend, and estoppel.

During this webinar, we will cover these topics and more:

• Pros and cons of engaging litigation counsel or separate counsel for IPR proceedings
• Critical issues common to both litigation and IPR proceedings that require close coordination
• Practical guidance when working with separate litigation or IPR counsel
• Strategies for improving cooperation between litigation and IPR counsel

Our speakers will be Fitch Even partners Timothy P. Maloney and Paul B. Henkelmann.

Tim has had a primary role in over 100 PTAB trial proceedings emanating from high-stakes patent litigations, developing a notably strong track record. Tim was recognized in an independent study as the #3 best performing attorney nationwide representing patent owners in IPR proceedings in 2017, consistently achieving favorable outcomes.

Paul focuses his practice on PTAB trial proceedings, patent procurement, patent litigation, and IP portfolio management. Nationally recognized for his active practice before the PTAB, he has represented clients in over 60 IPR proceedings.

CLE credit has been approved for California, Illinois, and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but registration is required.