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Hosted Event

The New Patent Litigation Landscape: Successfully Navigating Post-Grant Proceedings at the Patent Trial and Appeal Board

Wednesday, March 18, 2015 - Wednesday, March 18, 2015
12:30 pm Los Angeles - 3:00 pm Los Angeles

The America Invents Act brought a number of changes to the U.S. patent system, the most significant of which were the changes to post-grant proceedings, the formal processes to challenge issued patents offered by the U.S. Patent & Trademark Office. The new post-grant review (PGR) and Inter Partes Review (IPR) proceedings, which went into effect on September 16, 2012, have already revolutionized the patent litigation landscape.

The Patent Trial and Appeal Board (PTAB) has rendered hundreds of decisions in these proceedings. These decisions have revealed valuable lessons for petitioners and patent owners. Please join our panel consisting of outside and in-house counsel for a thought-provoking discussion on lessons learned, including a synopsis of recent decisions, effective strategies, and interplay with litigation. 

DATEWednesday, March 18, 2015

TIMERegistration: 11:30amProgram: 12:15pm-1:15pmNetworking: 1:15pm-2pm

CONTACTJulia Bereslavskiy

+1.212.318.6918


PRESENTERS:

Mark Kertz (Associate General Counsel, Medtronic, Inc.): Mr. Kertz has advised medical device companies on patent and IP matters for over 15 years. He is currently in-house with Medtronic, holding the title of Associate General Counsel, Intellectual Property, working with that company’s Neurovascular business in Irvine, CA. Prior to his work with Medtronic and Covidien, Mr. Kertz was in-house IP counsel for VNUS Medical Technologies for several years leading up to its acquisition by Covidien. He began his legal career at Knobbe Martens Olson & Bear, and became a partner of the firm in 2005. He left the firm in 2006 to launch his in-house career with VNUS.

(Partner, Paul Hastings LLP): Mr. Modi is a Global Vice Chair of the Intellectual Property Group at Paul Hastings, overseeing the firm’s Global Intellectual Property Group consisting of more than 100 attorneys. He also serves as the head of the firm’s Patent Office Practice, having been involved over 200 post-grant proceedings. His practice includes all aspects of patent-related work, including litigation (U.S. district court, U.S. International Trade Commission, and appellate), post-grant proceedings, interferences, client counseling, and opinions. He has handled cases in a wide range of technical areas, including electronics, semiconductor devices, networking, software, business methods, and medical devices.

(Partner, Paul Hastings LLP): Mr. Palys is a partner in the Intellectual Property Group at Paul Hastings and is based in the firm’s Washington, D.C. office. Mr. Palys is a former Supervisory Patent Examiner (SPE) at the U.S. Patent & Trademark Office and focuses his patent practice on litigation, post-grant proceedings, patent portfolio strategic planning and monetization, client counseling, and opinions. Mr. Palys leans on his over twenty years of experience to advise clients in patent issues various technical areas including software, business methods, financial services, computer, network, and electro-mechanical technologies.

Rouz Tabaddor (Vice President and Chief IP Counsel, CoreLogic, Inc.): Mr. Tabaddor has over 15 years of experience in intellectual property law, including being a former Patent Examiner at the United States Patent & Trademark Office. He worked for major intellectual property law firms in Washington D.C. prosecuting and managing patent portfolios of Fortune 300 companies to small start-up companies. He also actively participated in patent and trademark litigation in various federal courts throughout the U.S. Furthermore, Mr. Tabaddor spent one year living in Taiwan assisting Taiwanese electronic companies with protection of their intellectual property rights. He spent time conducting lectures throughout Taiwan and other southeastern Asian countries. Currently, Mr. Tabaddor is the Intellectual Property Counsel for a spin-off of a Fortune 300 company, where he is head of the Intellectual Property Program and is responsible for monitoring all patent, trademark, copyright and other intellectual property rights in the U.S and throughout the world.


Practice Areas


Contributors

Image: Naveen Modi
Naveen Modi
Partner, Litigation Department
Image: Joseph E Palys
Joseph E Palys
Partner, Litigation Department