The document outlines details about a webinar series focused on post-grant review trials at the U.S. Patent and Trademark Office, aimed at informing attorneys, accountants, and business executives. It provides insights into the types of proceedings, advantages and disadvantages of different review processes, and includes information about the faculty involved. Additionally, it emphasizes that the material is for educational purposes and should not be considered professional advice.

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Practical and entertaining education for
attorneys, accountants, business owners and
executives, and investors.

3. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
legal, financial or other professional advice. You should consult with an attorney or other
appropriate professional to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
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Thank You To Our Sponsors:

5. Meet the Faculty
MODERATOR:
Dina Blikshteyn - Haynes & Boone
PANELISTS:
Jeremy Albright - Norton Rose Fulbright
Eric J. Curtin - Crawford Manu PLLC
Arthur Gasey - Vitale, Vickrey, Niro & Gasey LLP
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6. About This Webinar – PGRT Basics
This segment will discuss the statutory and procedural background of post-grant review
proceedings. It will discuss the types of proceedings available and provide a high-level
discussion of how the proceedings are conducted.
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7. About This Series – IP- 301: Post-Grant Review
Trials 2022
The series is intended to give attendees a crash-course in post-grant review proceedings at
the U.S. Patent and Trademark Office. Many topics will be addressed, sufficient to explain the
big picture considerations involved in this new and very popular area of law.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business
owners, and executives without much background in these areas, yet is of primary value to
attorneys, accountants, and other seasoned professionals. Each episode brings you into engaging,
sometimes humorous, conversations designed to entertain as it teaches. Each episode in the
series is designed to be viewed independently of the other episodes so that participants will
enhance their knowledge of this area whether they attend one, some, or all episodes.
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8. Episodes in this Series
#1: PGRT Basics
Premiere date: 10/26/22
#2: Things to Consider Before You File
Premiere date: 11/30/22
#3: Interplay With District Court Litigation
Premiere date: 12/21/22
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9. Episode #1
PGRT Basics
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10. Overview
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11. Overview of Proceedings
• Post-grant proceedings for challenging patent validity
✓ Inter Partes Review (IPR)
✓ Covered Business Method Review (CBMR)
✓ Post-Grant Review (PGR)
✓ Derivation
• “Trials” before the Patent Trial and Appeal Board (“PTAB”)
• Allow for limited discovery, not previously available
✓ Not “trials” in U.S. district court sense: no live witnesses (with rare exception), no jury,
no opening statements, no closing arguments
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12. Overview of the PTAB
• Handles AIA post-grant proceedings, appeals, and derivations
• Staffed by Administrative Patent Judges (“APJ”)
✓ Employs roughly 280 APJs currently and actively hiring
✓ New hires come from USPTO Examining Corps and private bar
• Each AIA proceeding is decided by a 3-member APJ panel
✓ Expanded panel may be convened by the PTAB itself
✓ Under just-revised SOP1, parties may “suggest” expanded panel or request review by
the Precedential Opinion Panel (POP)
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13. Overview of PTAB Trials
• Proceedings are initiated with a petition
• Parties may file reply papers
• Parties engage in very limited discovery
• Hearing is conducted on the merits
• Concluded with final written decision unless parties settle
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14. Strategic Considerations
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15. Overview of Advantages
• “Preponderance” v. “clear and convincing”
• Favorable Petitioner success rate
• Potential to stay co-pending district court litigation
• Lower cost than district court litigation and trial
• Quicker to initial resolution than district court litigation
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16. Overview of Disadvantages
• Estoppel
• Limited opportunity to develop record
• Very limited opportunity to present true testimony
• Patent Owner has the opportunity to amend claims
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17. Stays of Litigation
• Patent involved in Patent Owner v. Petitioner litigation: 82%
• Granting motion to stay litigation pending PTAB decision
✓ IPR: 65%
✓ CBMR: 62%
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18. Stays of Litigation
• Federal Circuit has considered district courts denying a stay
o VirtualAgility Inc. v. SalesForce.com, Inc., 2014 WL 3360806 (Fed. Cir.
July 10, 2014)
o Versata Software, Inc. v. Callidus Software, Inc., 2014-1468 (Fed. Cir.
Nov. 20, 2014)
o Intellectual Ventures II, LLC v. JPMorgan Chase, 2014-1724 (Fed. Cir.
Apr. 1, 2015)
• Stay decisions in district court vary significantly by jurisdiction
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19. DJ Actions
• If Petitioner files DJ of invalidity first, no IPR or CBMR
o 35 U.S.C. § 315(a)(1); 37 C.F.R. 42.101(a);
o http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
• Consider filing DJ of noninfringement; assert invalidity as defense to responsive claim for
infringement
✓ Affirmative defense of invalidity to a counterclaim of infringement plead by Patent
Owner does not deprive Petitioner of standing
o E.g., IPR2012-00022, Paper 20 (Feb. 12, 2013); CBM2014-00035,
Paper 12 (Apr. 25, 2014)
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20. Estoppel
• IPR/PGR:
✓ At the PTO/Court/ITC: Cannot maintain another proceeding on a basis Petitioner
“raised or reasonably could have raised”
o PGR: 35 U.S.C. § 325(e); IPR: 35 U.S.C. § 315(e)
• CBMR:
✓ At the PTO: Cannot maintain another PTO proceeding on a basis Petitioner “raised or
reasonably could have raised”
o 35 U.S.C. § 325(e)(1); 37 C.F.R. 42.73(d)
✓ At Court/ITC: Cannot maintain another proceeding on a basis Petitioner actually
raised
o PL 112-29, Sec. 18(a)(1)(D) (Sept. 16, 2011)
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21. Impact
• Should inform district court of IPR proceedings
o Va. Innovation Scis., Inc. v. Samsung Elecs. Co., Ltd., 2:12-cv-548
(EDVA May 2, 2014) (must inform court of IPR proceeding or face
“sharp[] consequences”)
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22. Impact
• Motions in Limine
o Universal Elec. Inc. v. Universal Remote Control Inc., 8:12-cv-329 (C.D.
Cal. Apr. 21, 2014) (denying MIL to preclude mention of rejected
petition); StoneEagle Serv., Inc. v. Pay-Plus Solutions, Inc., No. 8:13-cv-
2240 (M.D. Fl. June 19, 2015) (same)
o InterDigital Commc’ns. Inc. v. Nokia Corp., 1:13-cv-10 (D. Del. Sept. 19,
2014) (granting MIL to preclude mention of rejected petition)
o UltraTec, Inc. v. Sorenson Commc’ns, Inc., 3:13-cv-346 (W.D. Wis. Oct.
8, 2014) (granting-in-part MIL to preclude mention of instituted IPR to
Jury; allow mention to Judge)
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23. Impact
• Issues of claim construction, validity, and noninfringement
o The Procter & Gamble Co. v. Team Techs., Inc., No. 12-cv-552 (S. D.
Ohio Jul. 3, 2014) (considering USPTO’s decision in a post-grant
proceeding to grant MSJ of no invalidity)
o VAE Nortrak N. Am. v. Progress Rail Serv. Corp., 459 F. Supp. 2d 1142
(N.D. Alabama Oct. 25, 2006) (granting defendant’s MSJ on DEO based
on statements made during foreign prosecution)
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24. Other Considerations (Petitioner)
• Timing considerations
✓ File right away? File after contentions in court?
• Audience considerations
✓ Invalidity arguments more judge/jury friendly?
• Multi-patent considerations
✓ Challenge all or subset of asserted patents/claims?
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25. Other Considerations (Patent Owner)
• Multi-party considerations
✓ Joint defense group? Privity? Real Party-in-Interest?
• Multi-patent considerations
✓ Assert one or many patents at once?
• Non-party considerations
✓ Role of manufacturer/supplier?
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26. About the Faculty
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27. About The Faculty
Dina Blikshteyn - dina.blikshteyn@haynesboone.com
Dina Blikshteyn is a counsel in the Intellectual Property Practice Group in the New York office of
Haynes and Boone. Dina’s practice focuses on post grant proceedings before the U.S. Patent and
Trademark Office, preparing and prosecuting domestic and international patent applications, as
well as handling trademark and other IP disciplines. Dina is a co-chair of the artificial intelligence
practice at Haynes and Boone. Dina focuses her patent practice on technology areas. Illustrative
areas include artificial intelligence and machine learning, cloud computing, cyber security, web
applications, map and navigation applications, point-of-sale systems, computer graphics, data
structures, algorithms, distributed systems, client-server applications, CPU/GPU processor design,
operating systems, mobile technologies, databases, database optimization, multimedia and video
streaming, financial trading products, banking software, computerized auction software, healthcare
systems, Internet systems, advertising software, wireless communication systems and
applications, telecommunications systems, marketing applications, industrial control systems (ICS),
cable systems, and smart grid and micro grid technologies.
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28. About The Faculty
Jeremy Albright - jeremy.albright@nortonrosefulbright.com
Jeremy Albright is a senior associate at Norton Rose Fulbright US LLP. He is a patent
attorney in the mechanical arts, and his practice is focused on patent preparation and
prosecution as well as post-issuance challenges, with emphasis on inter partes reviews and
ex parte reexaminations.
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29. About The Faculty
Eric J. Curtin - ecurtin@ip-firm.com
Eric Curtin is a Patent, Trademark and Copyright Attorney at Crawford Maunu in St. Paul, MN. Eric’s practice has
included the preparation and prosecution of patent applications in the electronic, electromechanical, biomedical,
chemical and optical technology areas, and further in the area of computer-implemented/software inventions. Eric also
assists clients in the procurement of trademarks and copyrights, and with various aspects of trademark and copyright
law including oppositions, cancellations, and license agreements. He maintains a robust practice in client counseling,
including opinions of infringement/invalidity.
Eric leads his firm’s legal education efforts, has authored multiple intellectual property articles, and serves as an expert
on nationally broadcast panels concerning patent, trademark and copyright matters.
Technically, Eric has significant experience in various cross-disciplinary fields including those involving wireless
Communications technologies, semiconductors, medical/biological devices, thin-film transistors, solar cells, proteomics
and nanotechnologies. He has worked extensively in the semiconductor design, physics and materials science fields,
and in a variety of communications fields involving mobile electronics, video processing, and media content streaming.
Eric has engineering and law degrees from the University of Wisconsin at Madison. He is licensed to practice law in
several state and federal courts and is a registered patent attorney. To read more about Eric, visit https://www.ip
firm.com/professionals/eric-j-curtin/
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30. About The Faculty
Arthur Gasey - gasey@vvnlaw.com
Art Gasey received a Bachelor of Science degree in Chemical Engineering from the
University of Notre Dame in 1989 and graduated Magna Cum Laude from John Marshall Law
School in 1992. Art was a staff editor for the John Marshall Law Review and was a winner of
the Giles S. Rich National Moot Court Competition for Patent Law in 1992.
Over 25 years of practice, Art has litigated a number of patent, trade secret, and copyright
cases, both as lead counsel and second chair. Art was heavily involved in winning a $48
million jury verdict in the trial of a trade secret/patent infringement case in Detroit. In addition,
Art achieved a $2.9 million settlement with a radio scanner manufacturer and its distributor at
trial in Chicago. Art also won summary judgment of non-infringement in another Chicago
lawsuit holding that their client did not infringe a patent on a computer programmable
pharmaceutical compounder.
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31. Questions or Comments?
If you have any questions about this webinar that you did not get to ask during the live
premiere, or if you are watching this webinar On Demand, please do not hesitate to email us
at info@financialpoise.com with any questions or comments you may have. Please include
the name of the webinar in your email and we will do our best to provide a timely response.
IMPORTANT NOTE: The material in this presentation is for general educational purposes
only. It has been prepared primarily for attorneys and accountants for use in the pursuit of
their continuing legal education and continuing professional education.
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34. About Financial Poise
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