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Patent Trial and Appeal Board 101 – A Primer
Instructors: Erin M. Dunston; Philip L. Hirschhorn; Stephen E. Murray; Aaron L.J. Pereira

Overview of inter partes reviews (“IPRs”) and post-grant reviews (“PGRs”)

Eligibility and timing

Burdens of proof

Fees and word limits

Overall timeline

Real party in interest

Experts

Statistics on institution and outcomes

Discretionary denials

Motions to amend and the pilot program

Interplay with district court litigation

Appeal outcomes

01:31:00

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Speakers

Erin M. Dunston
Partner @Panitch Schwarze Belisario & Nadel LLP
Erin M. Dunston focuses her practice on patent procurement, opinions, enforcement (both in district courts and before the Patent Trial and Appeal Board), and portfolio strategy. With clients ranging from individual inventors to large, multi-national companies, Erin tailors her approach to each client’s goals. Erin’s matters are primarily in the life science space (small molecules, large molecules, and medical devices), but she has handled projects on subject matter ranging from precipitated silica to vaccines to radiotherapy devices.
Philip L. Hirschhorn
Partner @Panitch Schwarze Belisario & Nadel LLP
Philip L. Hirschhorn is an experienced trial lawyer specializing in patent litigation and other intellectual property proceedings, including post-grant proceedings before the Patent Trial and Appeals Board of the USPTO. Phil’s extensive experience, spanning more than 30 years, includes bench trials, jury trials, PTAB proceedings, and arbitrations. He has represented clients in traditional infringement/validity litigations as well as Hatch-Waxman (Paragraph IV) litigations. Phil also has experience handling copyright, trademark/trade dress, and trade secret litigation. Phil also advises clients on commercial patent licensing agreements. The subject matter of these engagements is diverse, including chemical, pharmaceutical, consumer products, medical devices, graphics, visualization technologies, apparel, and radiotherapy software and devices.
Stephen E. Murray
Partner @Panitch Schwarze Belisario & Nadel LLP
Stephen E. Murray’s practice is all about protecting and defending ideas – whether on behalf of individual inventors or international businesses. Stephen has spent years drafting and prosecuting patent applications, challenging and defending patents in post-grant proceedings, and litigating infringement suits. Stephen’s technical background enables him to tackle inventions in a diverse range of fields. Stephen also has his own web series as “Dr. I.P.”, who humorously helps people understand important and basic concepts of intellectual property.
Aaron L.J. Pereira
Counsel @Panitch Schwarze Belisario & Nadel LLP
Aaron L.J. Pereira is a patent attorney with a background in chemical and biomolecular engineering and experience in complex patent litigation, Hatch-Waxman, and BPCIA matters. Aaron has managed large parallel litigation in federal court and at the Patent Office. He is counsel to some of the world’s largest and most sophisticated companies, and regularly advises clients on matters of global patent strategy, market entry, and product competition. Aaron has prosecuted patents and rendered opinions in the life sciences space. He also has experience running large IP diligence reviews in support of acquisitions and funding in a variety of industries.

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