Fish & Richardson 及 幅銳態 誠摯邀請您參與9/20之研討會

Fronteo & Fish and Richardson co-Seminar

日期

Taipei

研討會

2019-08-20

日期

2019-09-20

地點

集思北科大會議中心204 – 西特廳

研討會議程

研討會議程及內容可能因實際情況有所調整,敬請見諒。

13:00 - 13:30 報到
13:30 - 14:00 Session 1: (Speaker: Fronteo - Weili Liu)
"人工智慧應用在證據揭示的最新科技"
"The latest AI technology in eDiscovery"
14:00 - 15:00 Session 2: (Speaker: F&R - Richard Sterba & Min Woo Park)
"國際貿易委員會訴訟: 作為被告不是您唯一的選擇"
“ITC Litigation: Being a Defendant Is Not Your Only Option”


o ITC與地方法院訴訟的概述/區別
ITC overview/differences from district court litigation
o 在ITC被起訴時如何作出回應
How to respond when sued at the ITC
o 台灣企業如何在ITC上成為進攻的一方
How can (Taiwanese) companies go on the offensive at the ITC
15:00 - 15:15 中場休息 Coffee Break
15:15 - 16:30 Session 3: (Speaker: F&R - Timothy Riffe & Gwilym Attwell)


"PTAB的把關和作為申訴人/專利所有人應避免的錯誤"
“IPR Decision on Institution: The PTAB’s Gatekeeping Role and Mistakes to Avoid as Petitioner/Patent Owner”


o 針對申訴者: 最有可能成功的申訴書:
For Petitioner: petitions that maximize likelihood of success:
· 提交申訴書前應做的事; 以及
what to do before filing the petition; and
· 如何處理多個申訴書
how to deal with multiple petitions


o 針對專利所有權人: 如何預防成案
For Patent Owner: strategies to prevent institution:
· 主要專利所有權人回應申訴書的攻擊方法
how to attack the petition in the Preliminary Patent Owner Response


o 討論 PTAB 如何根據 § 314 或 § 325, 裁決其否決成案的因素
Discuss factors considered by the PTAB for exercising its discretion to deny institution under § 314 or § 325


o 如何設計可避開IPR挑戰和/或可成功於IPR程序中存活的專利組合
How to design a patent portfolio unattractive for IPR challenge and/or likely to survive IPR

研討會內容

國際貿易委員會(ITC)再次成為專利訴訟的首選場域。然而,由於國際貿易委員會(ITC)訴訟特有的國內產業要求,非美國企業可能忽略國際貿易委員會(ITC)作為其爭取智慧財產權的可行場域。在本次研討會的前半部分,將由劉偉立律師講解人工智慧如何應用在證據揭示的最新科技, 以及 Richard Sterba 和 Min Park 將透過現實生活中的範例,解釋國際貿易委員會(ITC)訴訟的獨特面向、如何在被起訴時向國際貿易委員會(ITC)作出回應、以及台灣企業如何在國際貿易委員會(ITC)的訴訟中擔任控方 (原告)。
自2012年以來,約有10,000份第三方複審(IPR)和領證後複審(PGR)等申訴書被提交出去。其旨在質疑專利的有效性。在下半部分,Fish的合夥律師 Tim Riffe 和 Gwilym Attwell 將探討對申訴人和專利所有權人來說至關重要的策略。我們將詳細說明成功的策略 - 即起草最有可能被接納的申訴書,或準備最有可能導致主審機構駁申訴回聲請書的初步專利所有權人回應。最後,我們將在實務課程介紹如何起草專利申請,以大幅提高專利所有權人在PTAB取得成功的機會。

主講人介紹

  • Weili Liu (Counsel at LCC Partners Law Office / Legal Consultant of Fronteo Taiwan)

    Weili Liu is a counsel at LCC Partners Law Office. He is also the major contact person for LCC’s international clients.
    Weili focuses on intellectual property, cross-border investment, venture capital and commercial litigation. With an engineering background, Weili has extensive experience providing solutions for technology companies as well as for start-up companies. In addition, Weili assists many clients in the service industry.
    Before joining LCC, Weili had many years of experience with international law firms.

  • Richard A. Sterba (Principal, Washington DC office)

    Richard A. Sterba, a Principal in Fish’s Washington, D.C. office, leads, manages and tries complex patent cases in district courts and the U.S. International Trade Commission (ITC). He has worked on nearly thirty Section 337 investigations, including more than a dozen trials and has received several accolades for his extensive ITC trial experience, including having been named a Law360 International Trade Rising Star and having been recognized by The Legal 500. Mr. Sterba’s background in physics and mathematics enables him to handle cases spanning a wide range of technologies including mobile phones, telecommunications, networking, digital signal processing, microprocessors, integrated circuits, display devices, semiconductors, memory, medical devices, and various mechanical and software inventions. He also has been involved in cases implicating various technical standards, and is experienced in handling the unique issues, such as FRAND requirements, associated with litigating standards-essential patents. Prior to joining Fish’s litigation group, he spent several years preparing and prosecuting patent applications.

  • Min Woo Park (Associate, Washington D.C. office)

    Min Woo Park is an associate attorney in the Washington D.C., office of Fish & Richardson. After earning his doctorate from the University of Tokyo, Dr. Park started his career in patent law at a Japanese prosecution firm, drafting patent applications and responding to office actions from the Japanese Patent Office. Since he joined Fish in 2011, Dr. Park has shifted the focus of his practice to patent litigation, in particular Section 337 investigations at the ITC. Although trained as a biochemist, Dr. Park has handled cases involving diverse technical matters, including pharmaceuticals, medical devices, automotive components, mobile phones, telecommunications, and optical communication networks. Dr. Park has lived in four different countries and is fluent in English, Japanese, and Korean.

  • Timothy W. Riffe (Principal, Washington DC office)

    Timothy W. Riffe is a Principal in the Washington, D.C., office of Fish & Richardson. His practice emphasizes complex patent litigation in district courts and the U.S. International Trade Commission (ITC) and post-grant proceedings before the U.S. Patent Trial and Appeal Board (PTAB). Mr. Riffe also advises clients in strategic patent counseling and prosecution. At the ITC, Mr. Riffe is a first-chair litigator and has led numerous litigations to victory, his most recent being litigation lead and first-chair attorney for NEC Corporation. At the PTAB, Mr. Riffe has appeared in approximately 150 proceedings for both patent owners and petitioners across a multitude of technology areas. Mr. Riffe’s extensive litigation and prosecution/counseling experience combined with his post-grant practice allows Mr. Riffe to bring a wealth of knowledge across multiple disciplines within the intellectual property field to bear on his clients’ behalf. Mr. Riffe has received numerous accolades regarding his legal work, including, being named to IAM Patent 1000: The World’s Leading Patent Professionals for the past four years, including being named as a “Top PTAB Practitioner” and recommended for International Trade Commission and for Patent by IAM. He also has been distinguished as one of Washingtonian Magazine’s Top Lawyers, Intellectual Property in Washington, D.C.

  • Gwilym J.O. Attwell (Principal, Delaware Office)

    Gwilym Attwell is a Principal in Fish & Richardson’s Delaware office, managing the local presence of Fish’s highly regarded patent prosecution and counseling practice. Mr. Attwell’s practice is focused on U.S. and foreign patent prosecution, opinion work, due diligence studies, and client counseling in the fields of biotechnology, medical devices, and pharmaceuticals. He also assists clients in the strategic development and monetization of internal patent portfolios, patent process implementation and the assessment of third-party IP collaborations. In addition, Mr. Attwell works with clients on post-grant proceedings, including inter partes review and post-grant review petitions, and general post-grant patent strategy. Mr. Attwell’s practice has been recognized for numerous accolades including being listed on “The World’s Leading Patent

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