Kevin J. Patariu, P.E. Partner

James Coughlan and Kevin Patariu look at some of the benefits and disadvantages of running concurrent challenges with the PTAB and the ITC.

An In-Depth Look at Factors Affecting Your IPR Strategy
Fifth anniversaries are milestone occasions. Following our prior reports marking the passage of three and four years of inter partes review practice, we proudly offer this year’s report, Inter Partes Review Proceedings: A Fifth Anniversary Report.

A successful petition for inter partes review (IPR) reflects a variety of considerations, including claim construction, selection of prior art and whether to use an expert declaration.

Contributing author for a new chapter on America Invents Act proceedings in the third edition of Anatomy of a Patent Case, a book prepared by the Complex Litigation Committee of the American College of Trial Lawyers and published by the Federal Judicial Center and Bloomberg BNA. The FJC makes the book available to all sitting district court judges, and Bloomberg BNA makes the book available to the public.

Perkins Coie is marking the fourth anniversary of inter partes review (IPR) with a report focused on the changes and progress of IPR proceedings, particularly since September 2015. As IPR proceedings have become more familiar during the past four years, growing clarity on many issues has resulted from decisions by the U.S. Court of Appeals for the Federal Circuit and U.S. Supreme Court. Click here to read the full report.

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become the preferred procedure for challenging the validity of a patent. Read the full report.

Bing Ai, Kevin Patariu, and John Schnurer published an article in the June/July 2015 issue of Today’s General Counsel on the strategic use of inter partes review (IPR) proceedings against patents asserted at the U.S. International Trade Commission (ITC). 

The article outlines the strategic use of inter partes review (IPR) proceedings against patents asserted at the U.S. International Trade Commission (ITC). There is a misconception that IPR proceedings are not useful to parties sued for patent infringement at the ITC, perhaps because of the fast pace that is typical of ITC investigations. While it may not be possible to obtain a stay of an ITC investigation during the pendency of an IPR proceeding, a party accused of infringement in an ITC investigation should consider filing an IPR petition relatively early in the life cycle of an ITC investigation as a cost effective and beneficial part of an overall strategy for defending against an action at the ITC.

In its first “final” decision under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO)’s Patent Trial and Appeal Board (PTAB) has invalidated and cancelled all five challenged claims of U.S. Patent No. 6,553,350, finding that the claims recited unpatentably abstract ideas and did not recite a “useful” invention as required by 35 U.S.C. § 101. A jury in a Texas federal district court had previously found that the petitioner, SAP America, Inc., infringed three of the claims at issue in the petition, awarding patent owner Versata Software, Inc. $345 million in damages. A Federal Circuit panel affirmed that award last month, although SAP has petitioned for rehearing (on grounds relating to infringement and damages rather than validity).

Presenter on a seminar an introduction to patent, trademark, copyright, and trade secret intellectual property protection, and practical advice for licensing and taking a license to intellectual property for the creative community.

Speaker at a conference, explaining strategies for Chinese enterprises to enforce and monetize their patent portfolios in the United States at the International Trade Commission and U.S. federal courts. The event was covered in Chinese media articles linked here and here.

Presenter of a lecture about how Chinese enterprises can monetize patent and other IP assets in U.S. District Courts and at the International Trade Commission. The event was covered in Chinese media articles, linked here and here.

Presenter in a summit on PCT application strategies trends for Chinese enterprises. Bypass continuation applications an provide a useful alternative to typical national phase entry of PCT applications in the United States. Additionally, there are a variety of USPTO programs and applicant strategies to speed-up prosecution of applications in the USPTO, which can help Chinese enterprises obtain issued patents quickly and in a cost-effective manner. The event was covered in Chinese media articles, linked here and here.

Presenter in a legal seminar on U.S. District Court litigation procedures and guidance for establishing an evidentiary record in IP litigation.

A legal seminar on intellectual property, and an International Trade Commission Section 337 mock trial demonstration, as part of the World Intellectual Property Organization’s (WIPO) Annual World Intellectual Property Day celebrations.

A legal seminar on intellectual property, and an International Trade Commission Section 337 mock trial demonstration, as part of the World Intellectual Property Organization’s (WIPO) Annual World Intellectual Property Day celebrations.

Participated on a panel discussion highlighting some of the legal issues facing companies or enterprises whose tangible or intangible products sold in the United States, including practical advice on intellectual property issues and post-grant petitions before the USPTO.

Participated on a panel discussion highlighting the current state of some of the key regulatory, legal and practical issues of Sino-U.S. trade and investment.

Participated on a panel discussion highlighting some of the legal issues facing companies or enterprises whose tangible or intangible products sold in the United States, including criminal trade secret law, protecting company secrets at the U.S. border and practical advice on intellectual property issues.

Presented on a panel discussion of key legal issues facing international manufacturers, including criminal trade secrets law, protecting company secrets at the U.S. border, legal liability for defective products in the U.S. and updates on U.S. intellectual property law.

Presented on a panel discussion of key legal issues facing international manufacturers, including criminal trade secrets law, protecting company secrets at the U.S. border, legal liability for defective products in the U.S. and updates on U.S. intellectual property law.

Moderator at a seminar in Chicago, Illinois held in conjunction with the ITC Trial Lawyers Association, on comparison between ITC and U.S. District Court litigation, in-house, ALJ, Commissioner perspectives on ITC litigation and U.S. Customs handling of exclusion orders.

Speaker at a seminar in Taipei, Taiwan held in conjunction with a local Taiwanese law firm to discuss takeaways from the PTAB Bar Association 2017 Conference, updates on Federal Circuit case law impacting PTAB trials and implications for Taiwanese technology companies.

Speaker at a seminar in Shenzhen, China in conjunction with the Shenzhen Intellectual Property Office on litigation defense strategies for Chinese companies sued at the International Trade Commission.

Speaker at a seminar in Shenzhen, China, sponsored by the Shenzhen Patent Association, to discuss trends in patent litigation before U.S. federal courts and Section 337 investigations before the U.S. International Trade Commission, U.S. trade secret laws, and to explore interplays between litigation and the inter partes review proceedings. The seminar also focused on impacts of these trends to Chinese technology companies and enterprises.

Speaker at symposium in Taipei, Taiwan held in a conjunction with a local Taiwanese law firm to discuss recent case law updates on willful infringement and induced infringement, and discuss how to conduct risk assessments in view of these new cases.

Patent Litigation Seminar sponsored by Tsinghua University School of Law; Beijing, China. Speakers include ITC Commissioner Johanson and U.S. Patent Office and Trade Officials discussing U.S. District Court and administrative proceedings before the U.S. International Trade Commission (ITC) and USPTO Patent Trial and Appeal Board (PTAB). The seminar was moderated by Di Zhang in both English and Chinese.

Patent Litigation Seminar Sponsored by the Shenzhen Patent Law Association; Shenzhen, China. Speakers include ITC Commissioner Johanson and U.S. Patent Office Officials discussing U.S. District Court and administrative proceedings before the U.S. International Trade Commission (ITC) and USPTO Patent Trial and Appeal Board. The seminar was moderated by Di Zhang in both English and Chinese.

Speaker at a seminar in Beijing, China, sponsored by the Tsinghua University Law School, to discuss the role of intellectual property law as a driver of innovation, research and development, economic growth, and prosperity in the United States and China, trade secret disputes in the United States and China, including the dispute between SI Group and Sino Legend before the United States International Trade Commission (ITC) and Chinese courts, trends in U.S. District Court and ITC litigation in view of recent Supreme Court and Federal Circuit decisions, the basics of ITC investigations, how to establish a domestic industry to support an ITC Section 337 action, remedies before the ITC, and the emergence of post-grant proceedings before the USPTO Patent Trial and Appeal Board (PTAB).

Speaker at a seminar in Shenzhen, China, sponsored by the Shenzhen Patent Association, to discuss recent trends in U.S. District Court and International Trade Commission (ITC) litigation in view of Supreme Court and Federal Circuit decisions in the last 18 months, establishing a domestic industry to support an ITC Section 337 action, the role of Commissioners in ITC investigations, remedies before the ITC, and the emergence of post-grant proceedings before the USPTO Patent Trial and Appeal Board (PTAB), including advanced tips for practitioners before the PTAB.

Semiconductor Technology Symposium (STS) speaker at the SEMICON West 2014 conference in San Francisco, to discuss recent trends in semiconductor patent filings, opportunities and challenges for the protection of inventions, impact of recent legislation and court decisions on patent licensing, and innovative solutions for reducing expenses associated with costly patent litigation.

Speaker at IMPACT-IAAC 2013 conference in Taipei to discuss the U.S. patent system, patent litigation trends, dealing with non-practicing entities (NPEs) in patent litigation, inter partes review proceedings before the USPTO Patent Trial and Appeal Board, and building a strong patent portfolio.

Speaker at Chinese National Federation of Industries (CNFI) all-day seminars in Taipei, Taichung, and Tainan to address advanced patent litigation topics, strategies and practice pointers and practical tips in view of the ITC’s most recent rule changes, opinions and orders.

Speaker at Asia Pacific Intellectual Property Association (APIPA) all-day symposium in Hsinchu, Taiwan to discuss key issues, practice pointers, and best practices for Taiwanese companies doing business or looking to do business in the U.S. or with U.S. companies.