Kevin Laurence is a Panelist at PTAB Masters 2023 on the Secrets to PTAB Success: Advanced IPR Strategies

Kevin Laurence will participate as a panelist on the Secrets to PTAB Success at IPWatchdog’s PTAB Masters 2023 on February 1, 2023 in Ashburn, Virginia.

This panel will address two specific advanced strategies, the first dealing with correction of patent claims and the second dealing with the use of experts.

Changing claims using any mechanism is something many patent owners do not want to do because of the loss of damages, however in some instances where the patent is useful to preserve market share, the patent owner may want to consider saving claims with some means to amend, but is filing a motion to amend during an inter partes review (IPR) the best mechanism? Among others, the panel will tackle the question of what is the relevance of reexamination within the context of the post-grant proceeding strategy? The panel will also discuss the pros and cons of reexamination and reissue as an alternative to amending claims during IPR. The panel will further discuss the possibility of a reissue off-ramp, and statutory changes necessary to create such a reissue off-ramp.

The panel will then pivot to discuss experts, specifically the pitfalls of using experts to recreate experiments from references and the use of multiple experts (i.e., one to conduct the experiment and another to interpret the results).