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Inter Partes Review (IPR) Seminar

Sughrue Mion, PLLC / University of New Hampshire School of Law / UBIC 共催

開催日
  • 05.08

ご来場誠にありがとうございました。

日時

2014/05/08(木) 10:30~16:45 (10:00より受付開始)

会場

大手町ファーストスクエアカンファレンス  Room B

受講料 無料

タイムテーブル・講演内容お時間・内容が変更となることがございます。ご了承ください。

10:30 ~ 10:45

Greetings by hosting organizations


Yoshinari Kishimoto - Sughrue Mion, PLLC
J. Jeffrey Hawley - University of New Hampshire School of Law

10:45 ~ 11:45

Introduction of IPRs, including history of USPTO invalidation proceeding

- Evolution of challenge patents before the USPTO
- IPR Basics

Andrew J. Taska and Kevin C. Kunzendorf - Sughrue Mion, PLLC

11:45 ~ 12:45 Survey of IPR cases field

Carl J. Pellegrini and John M. Bird - Sughrue Mion, PLLC
12:45 ~ 12:55 Break
12:55 ~ 13:55 Lunch Session - eDiscovery Considerations

Hajime Shirasaka - General Manager, Legal & IP Division, UBIC, Inc.
13:55 ~ 14:00 Break
14:00 ~ 15:00 Strategic considerations
- Challengers

William H. Mandir and John F. Rabena - Sughrue Mion, PLLC
15:00 ~ 15:15 Coffee Break Reception
15:15 ~ 16:00 Strategic considerations
- Patent Owners

J. Warren Lytle, Jr. and Keiko K. Takagi - Sughrue Mion, PLLC
J. Jeffrey Hawley - University of New Hampshire School of Law
16:00 ~ 16:30 Question and Answer

J. Jeffrey Hawley - University of New Hampshire School of Law
William H. Mandir and John F. Rabena - Sughrue Mion, PLLC
16:30 ~ 16:45 Closing by hosting organizations
17:00 ~ 18:00 Wine and beer reception

※同時通訳の用意がございます。
※昼食の用意がございます。

講演概要

米国発明法(AIA)が施行されて2年、新制度を活かす特許訴訟戦略とは?

USPTOにおける付与後異議申立制度、特に当事者系レビュー(IPR)の利用により、特許訴訟が大きく変わってきました。本セミナーでは、IPRの最新動向と活用戦略を中心に、USPTOにおける付与後異議申立の手続きを解説します。損害賠償の免責や早期解決による訴訟費用の削減につながる有効な手段として、訴訟戦略づくりにご活用ください。

スピーカー紹介

Sughrue Mion, PLLC

  • Yoshinari Kishimoto

    Yoshinari Kishimoto

    Mr. Kishimoto has served Sughrue Mion, PLLC in the executive and managerial position of Managing Partner at its office in Tokyo, Japan since April 2004. He has extensive experience in preparing and filing of applications for U.S. Patents with the USPTO, rendering legal advice and opinions concerning the infringement of and the validity of U.S. Patents as well as Japanese Patents, licensing and assignment of rights in U.S. Patents, and representing Japanese clients to litigate in the U.S. District Courts and U.S. International Trade Commission. His work focuses on electrical, mechanical and chemical areas. He is native Japanese, speaks fluent Japanese, and is a registered Japanese Patent Attorney. He is author of many books and articles and often gives lectures for various IP associations, universities and companies. 
  • Andrew J. Taska

    Andrew J. Taska

    Mr. Taska is a partner in the Washington, D.C. office where he is a member of the firm’s Electrical/Mechanical Patent group. He practices in all areas of patent law with an emphasis on preparing and prosecuting patent applications, including reexamination and reissue applications, international patent portfolio management, counseling clients on intellectual property matters, and patent litigation. He also prepares opinions in the areas of patentability, infringement and product clearance.
  • Kevin C. Kunzendorf

    Kevin C. Kunzendorf

    Mr. Kunzendorf is a member of the firm’s Litigation and Electrical/Mechanical Patent groups. His litigation practice focuses on intellectual property litigation in a broad range of technology areas in the electronic, mechanical and computer arts, and he has broad experience in discovery matters. His prosecution practice focuses on writing and prosecuting applications in the areas of display devices, analog communications systems and devices, digital communications systems and devices, networking, printing systems and devices, and optics and semiconductor devices. In addition, Mr. Kunzendorf has experience performing due diligence investigations, and preparing opinions in the areas of patentability, infringement and product clearance. 
  • Carl J. Pellegrini

    Carl J. Pellegrini

    Mr. Pellegrini specializes in all areas of patent law with an emphasis on patent litigation, counseling clients on intellectual property matters, preparing and prosecuting patents, and opinion work. He has experience litigating patent issues in various U.S. district courts and the International Trade Commission (ITC). 

  • John M. Bird

    John M. Bird

    Mr. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the ‎protection and enforcement of designs and a wide range of electrical and mechanical technologies, ‎including analytical/measurement systems, medical ‎devices, HVAC systems, printers/copiers, ‎telecommunications systems, ‎data recording mediums, semiconductor fabrication, bearings, ‎welding ‎processes, sports equipment, footwear, and various automobile ‎components, such as tires, ‎transmissions, engines, fuel-injection systems, ‎motors, lamps, steering systems, connectors/wiring, ‎valves, and ‎control/monitoring systems. 
  • William H. Mandir

    William H. Mandir

    Mr. Mandir is a partner in the Washington D.C. office of Sughrue Mion, PLLC, where he is a member of the Management Committee and one of the leaders of the Litigation practice. Focusing primarily on intellectual property litigation.

    Mr. Mandir has handled intellectual property cases, including patent infringement and trade secret litigation, for over 20 years. He has litigated over 50 cases filed in the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts, and the U.S. International Trade Commission. Consistently named as an expert in Euromoney’s Patent Expert Guide, Mr. Mandir has developed an outstanding reputation as both a patent practitioner and a litigator. He has significant experience as lead counsel in patent infringement jury trials, counseling, due diligence and appellate practice. 
  • John F. Rabena

    John F. Rabena

    Mr. Rabena is a partner in the Washington D.C. office, and a member of the firm's Management Committee. He has represented clients in a wide variety of complex patent, trademark and trade secret matters in various forums, including United States District Courts throughout the country, the U.S. International Trade Commission (ITC), and the Federal Circuit. Mr. Rabena is registered to practice before the U.S. Patent and Trademark Office and has led patent matters before the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board (PTAB).
  • J. Warren Lytle, Jr.

    J. Warren Lytle, Jr.

    Mr. Lytle practices in all areas of patent law with an emphasis on patent litigation, counseling clients on intellectual property matters, preparing and prosecuting patents, and opinion work.  He has experience litigating patent issues in various U.S. district courts and the International Trade Commission (ITC).  He also has considerable experience writing and prosecuting patent applications in the electrical and mechanical arts, particularly with computer hardware, software, network, and telecommunications technologies.  In his practice he also advises clients on establishing, building and maintaining U.S. and foreign patent portfolios, analyzing patent portfolios and licensing patents.

  • Keiko K. Takagi

    Keiko K. Takagi

    Ms. Takagi is a partner at Sughrue Mion, PLLC focusing on various intellectual property matters, including rendering opinions and counseling on procurement, defense and enforcement of patents. Her practice includes prosecuting patent matters in the chemical and pharmaceutical arts and in the mechanical arts, including reexamination and reissue applications before the U.S. Patent and Trademark Office.

University of New Hampshire School of Law

  • J. Jeffrey Hawley

    J. Jeffrey Hawley

    Professor Jeffrey Hawley joined Eastman Kodak as a chemical engineer in the Photographic Technology Division in July of 1969 immediately after graduating from NYU School of Engineering. In 1974, he transferred to Kodak’s Patent Department and attended George Washington Law School, where he received a Juris Doctor degree in 1978. He was admitted to the New York State Bar in 1979. He retired from Kodak in July of 2006. Before retirement, he served on the Franklin Pierce Law Center IP Advisory Committee. He began his more formal association with the law school in 2007.

UBIC, Inc.

UBIC, Inc. (Nasdaq: UBIC) (TSE:2158) is a leading provider of eDiscovery and digital forensic services for Asia and the world. UBIC has extensive experience working with electronically stored information composed in Chinese, Japanese and Korean (CJK) languages and utilizes that expertise for clients involved in cross-border litigation, corporate investigations, intellectual property disputes and much more. At the forefront of eDiscovery innovation, UBIC's proprietary Lit i View ® platform is moving the industry from "fact discovery" to "future discovery" by allowing clients to analyze e-mail messages and digital communications found in big data to reveal patterns in human thought and behavior. 

  • Hajime Shirasaka

    Hajime Shirasaka

    Hajime Shirasaka is a registered patent attorney He earned his Bachelor’s degree of Science in Communications Engineering from National Defense Academy of Japan, and his Master’s degree in Information Media and Environment Science from Graduate school of Yokohama National University.
    He worked 8 years in Intellectual Property Division at Fujifilm Corporation.
    From 2010, he joined the Association of Intellectual Property Education (AIPE) and becomes one of the examiners of the Intellectual Property Management Skills Test.
    He has an extensive experience in e-discovery consulting especially for Japanese companies such as Electrical appliance manufactures and Pharmaceutical companies.
    Also, Hajime Shirasaka has his own patent law firm, practicing not only preparing and prosecuting work but also litigation support within Japan.

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03-5463-7577

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