IP Litigation Attorney in Washington, District of Columbia

Working With Litigation Counsel in IPR

Washington, D.C. intellectual property lawyer Matt Phillips talks about his approach to working with litigation counsel when handling an IPR.

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00:04
we often work with litigation counsel at
00:06
different firms when we are handling an
00:08
ipr
00:10
and it’s critical that we be in
00:12
alignment when it comes to strategies
00:14
and positions particularly claim
00:16
construction and that’s true whether
00:18
you’re on the patent owner’s side or the
00:20
petitioner’s side these days the fact is
00:23
sometimes there’s a prosecution bar that
00:25
limits
00:26
the the extent of participation that
00:29
litigation council
00:30
can have and in those cases that’s often
00:33
when we get called
00:36
sometimes litigation council just wants
00:38
someone more familiar with the ptab more
00:41
familiar with the
00:42
intricacies of the aia trials and we
00:46
certainly have that expertise
00:48
although you know we have more than
00:50
procedural expertise i think we’re very
00:52
good at understanding
00:54
which positions move the needle you know
00:56
which issues to pursue and which ones to
00:59
drop and then how to present those
01:01
issues persuasively and convincingly to
01:04
ptap judges which is different than what
01:07
you would do
01:08
often in a district court with a
01:10
district court judge and i would say
01:12
that some litigation tactics just do not
01:15
work at all or do not work well before
01:18
the ptab

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