Strategic Considerations in Choosing Your Patent Litigation Venue
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Strategic Considerations in Choosing Your Patent Litigation Venue

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These slides accompany the Webinar recorded on November 13, 2013, featuring Ethan Horwitz, Partner, King & Spalding. Mr. Horwitz explores factors for determining how and where you file patent ...

These slides accompany the Webinar recorded on November 13, 2013, featuring Ethan Horwitz, Partner, King & Spalding. Mr. Horwitz explores factors for determining how and where you file patent litigation for optimal outcomes.

He provides an overview and strategic considerations for each of the three jurisdictions:

U.S. Civil District Courts
International Trade Commission (ITC)
United States Patent and Trademark Office (USPTO)

The recorded session can be viewed at http://www.lexisnexis.com/161179/#page6

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Strategic Considerations in Choosing Your Patent Litigation Venue Presentation Transcript

  • 1. Strategic Considerations in Patent Litigation Venues A LexisNexis® Webinar
  • 2. These slides accompany the Webinar recorded on November 13, 2013. http://www.lexisnexis.com/161179/#page6
  • 3. DISTRICT COURT v. USPTO v. ITC Strategic Considerations in Patent Litigation Venues Ethan Horwitz DMSLIBRARY01-22047979.1
  • 4. STRATEGIC CONSIDERATIONS IN PATENT LITIGATION VENUES • Characteristics of the Venues • New (and Old) USPTO Proceedings • Issues • Balancing the Issues 4
  • 5. CHARACTERISTICS OF THE ITC Domestic Industry • No Stays • • No Effective Counterclaims • Imports Only • No Jury • In Rem Jurisdiction • Speed • Joinder 5
  • 6. CHARACTERISTICS OF THE USPTO • Amend/clarify claims • Estoppel Effect (sometimes) • Speed (sometimes) • Limited Bases (some) • Burden of Proof • No Live Testimony (usually) • Limited Discovery • Less Expensive • Limited to Validity • Cleansing of Patent 6
  • 7. CHARACTERISTICS OF THE DC • Jury • Burden of Proof • Damages • eBay Considerations for Injunctions • Speed/Slowness (Depending on where) • Multi District Consolidation • Counterclaims 7
  • 8. PTO PROCEEDINGS BY PATENT OWNER • Reissue • Supplemental Examination • Ex Parte Reexam 8
  • 9. PTO PROCEEDINGS BY THIRD PARTIES • Ex Parte Reexam • Post Grant Review • Inter Partes Review • Derivation Proceedings • Covered Business Method Proceedings 9
  • 10. ISSUES • Markman • Jury • Burden of Proof • Damages • Cost • Effect of PTO Decisions on Trials • Speed • Discovery • Stays • Expense • Counterclaims 10
  • 11. BALANCING THE ISSUES • Neutral • Patent Balancing Owner Balancing • Accused Infringer Balancing 11
  • 12. www.lexisnexis.com/ipsolutions