January MIPLA Luncheon

Tuesday, January 30 2018, 11:30am - 12:45pm, at Skyline Club (2000 Town Center, Southfield, MI 48075)

The 2011 America Invents Act brought to shareholders in the patent community seemingly potent alternatives to the extraordinary expense and uncertainty of patent litigation in the United States District Court system. Now approaching their fifth year, Inter Partes Reviews and, to a lesser extent, Post-Grant Reviews and Covered Business Method Reviews, allow parties to bring challenges regarding the validity of a United States patent directly before the Patent Trial and Appeal Board of the United States Patent and Trademark Office, an administrative body comprised of administrative law judges, rather than before Article III judges. While these alternatives still enjoy significant popularity today, recent developments may cause invalidity seekers to reconsider. Additionally, the United States Supreme Court is presently considering whether or not these alternatives are even constitutional, and may strike down these alternatives all together.

Mr. Underwood’s Talk will address the history of post-grant proceedings before the United States Patent and Trademark Office, particularly in the context of the America Invents Act, and compare these proceedings to patent litigation in the United States District Court system. The Talk will also consider the impact of the United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products, Inc. v. Matal, which reversed the rule placing on the patentee the burden of persuasion that amendments to patent claims presented during such post-grant proceedings were patentable. Presumably, the ability to amend patent claims during these post-grant proceedings will become more liberal and commonplace, potentially lowering the risk of a finding of patent invalidity. The Talk will conclude by exploring the potentially devastating impact of the United States Supreme Court’s consideration of the Constitutionality of such post-grant proceedings in the context of the patent owner’s right to a jury trial on the issue of invalidity under the Seventh Amendment in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.

Speaker(s): Steven Underwood of Price Heneveld

Topic(s): The Untimely Death of the IPR