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ITC Practice Panel Discussion Trying Your Case in the PTO: The New AIA Hearings and Proceedings Before the Patent Trial and Appeal Board Atlanta IP American.

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Presentation on theme: "ITC Practice Panel Discussion Trying Your Case in the PTO: The New AIA Hearings and Proceedings Before the Patent Trial and Appeal Board Atlanta IP American."— Presentation transcript:

1 ITC Practice Panel Discussion Trying Your Case in the PTO: The New AIA Hearings and Proceedings Before the Patent Trial and Appeal Board Atlanta IP American Inn of Court Pupilage Group 7 May 15, 2013

2 International Super Spy Peter Gunnar Peter Gunnar

3 Gunnar’s Invention – Original Sketch in Lab Notebook

4 Gunnar’s Invention – Improved Safety for Critical Applications Protecting Dignitaries And Government Officials Worldwide U.S. Secret Service duty vehicle with Easy Ejector Seat from Espion

5 Commercial Success of the Easy Ejector Seat: Global Unit Sales 2012 2011 2010 2009 2008

6 Gunnar’s Invention – Awarded Patent Protection

7 Wannabe Super Spy Brazen Golddigger Brazen Golddigger

8 SpyTech’s Allegedly Infringing Rejector 2005 System

9 Golddigger Stole Gunnar’s Girlfriend Gunnar’s Ex-Girlfriend

10 Golddigger’s New Favorite Client Kim Jong Un

11 The Rejector 2005 Is Similar to Gunnar’s Invention

12 Infringement Analysis: Claim 1 of ’007 Patent Claim 1 SpyTech’s Rejector 2005 1. An ejector seat for use in a passenger vehicle, the seat comprising: a removable portion of a vehicle floorboard; a removable portion of the vehicle side panel; at least one passenger seat mounted to the removable portion of the floorboard; a passenger restraint system; and at least one parachute.

13 Standard AIA Trial Timeline

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15 Prior Art Incredible Hulk Rollercoaster

16 Prior Art ’917 Patent

17 SpyTech’s Petition for Inter Partes Review ’917 PatentHulk Rollercoaster

18 SpyTech’s Petition for Inter Partes Review ’917 PatentHulk Rollercoaster

19 ‘007 Claim 1 SpyTech Contends the ’007 Patent Is Obvious ’917Hulk 1. An ejector seat for use in a passenger vehicle, the seat comprising: a removable portion of a vehicle floorboard; a removable portion of the vehicle side panel; at least one passenger seat mounted to the removable portion of the floorboard; a passenger restraint system; and at least one parachute.

20 Inter Partes Review Timeline  December 22, 2012 – Spytech petitions for inter partes review of the ’007 patent  December 29, 2012 – PTO issues a Notice of Filing Date Accorded Petition and Notice for Setting the Time Period for Filing Patent Owner Preliminary Response  March 17, 2013 – Espion elects not to file a preliminary response  April 15, 2013 – PTO issues Decision to Initiate Trial for Inter Partes Review  May 15, 2013 – Teleconference

21 ITC Practice Panel Discussion Scheduling Issue - Extension of Time

22 ITC Practice Panel Discussion Scheduling Issue - Early Claim Construction

23 ITC Practice Panel Discussion Protective Order Issue - Prosecution Bar

24 ITC Practice Panel Discussion Discovery Dispute - Deposition of Dr. E. Ville

25 ITC Practice Panel Discussion Discovery Dispute - Espion’s Request for Additional Discovery to Depose B. Esser

26 Factors in Assessing Additional Discovery 1.More than a mere possibility and mere allegation 2.Litigation positions and underlying basis 3.Ability to generate equivalent information by other means 4.Easily understandable instructions 5.Requests not overly burdensome to answer

27 ITC Practice Panel Discussion Deposition Disputes

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32 Prior Art ’917 Patent

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36 ITC Practice Panel Discussion Thank You!


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