Challenging The Validity of Patents Using Inter Partes Review, from the Celesq-West LegalEdcenter IP Master Series

The passage of the American Invents Act brought with it a new and important and highly effective weapon, inter partes review, with which to challenge the validity of issued U.S. patents. Now, with over two years of proceedings to look back on and learn from, we can understand the best practices and pitfalls of these Patent Office proceedings. Join Michael J, Kasdan, a partner at Wiggin and Dana LLP, as he provides an overview of inter partes review, covers the ins and outs of using it as a strategy, either independent from, or in parallel with, litigation, as a tool to invalidate asserted patents, and shares lessons learned and best practices..

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Michael J. Kasdan, Esq. is a partner in the law firm of Wiggin and Dana LLP, in its Intellectual Property Practice. He has negotiated, defended and asserted IP rights in numerous federal courts, the US Patent and Trademark Office, the International Trade Commission and in private arbitrations and mediations. As an advisor, he has worked with both established companies and start-ups to obtain, evaluate value, license and develop patent portfolios and trademarks. He also counsels clients on strategic patent prosecution and portfolio development, and provides opinions and analyses on various patent issues, including patent infringement, validity and enforceability. He frequently writes and speaks on a range of topics including IP litigation, essential patents, patent monetization and licensing practices, how to address IP issues for start-up and early stage companies, patent eligibility, patent exhaustion, willful infringement, patent misuse, patent valuation and inequitable conduct. His articles have been published in leading publications, including LEXIS, Practical Law Company, Bloomberg/BNA, and Managing IP Magazine. Named a Super Lawyer, 2013, Mr. Kasdan also teaches as an adjunct professor at NYU and New York Law School, addressing topics such as IP licensing, global patent litigation, patent exhaustion, and inequitable conduct.