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Lithium-Ion Battery Patents – Understanding Infringement and Invalidity Through Recent Notable Litigation
This presentation will discuss recent notable decisions in U.S. litigation of lithium-ion patents, and what those cases can teach us about infringement and invalidity issues in lithium-ion patents. The presentation will focus on the role played by weight/volume claim terms, the duty of disclosure and invention disclosure statements during prosecution, the importance of quantitative examples in lithium-ion patent specifications, and properly presenting prophetic and working examples.
This webinar will focus on the following key topics:
• Recent notable decisions in U.S. district court and U.S. Patent & Trademark Office (IPRs) litigation of lithium-ion patents
• The infringement and invalidity of lithium-ion patent claims:
– The critical role of weight/volume (quantitative) claim terms
– How invention disclosure statements (IDS) can affect validity
– The importance of examples in a lithium-ion patent specification
– Properly presenting prophetic examples (predicted experimental results) as opposed to working examples (actual experimental results) in a lithium-ion patent
Presenter
Howard Lim – Patent Attorney, Fenwick & West LLP
Howard L. Lim is a patent lawyer representing technology-based clients in patent litigation matters and post-grant proceedings, such as inter partes reviews. He works on intellectual property and legal issues related to lithium-ion batteries. Prior to becoming a lawyer, Howard developed lithium-ion batteries at Panasonic and Sanyo Electric Company for electric vehicle and energy storage applications.
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Patenting Inventions Course 1/3: Patenting Energy Storage Inventions
Electrochemical inventions are interdisciplinary. Intellectual property strategies for protecting chemical, electronic, and software inventions may not be helpful for protecting inventions at the interface of these disciplines. This talk will include strategies for protecting chemicals and materials used in batteries as well as new uses of battery technology. This talk will highlight the key issues to prioritize when building valuable intellectual property portfolios for energy storage applications.
This webinar will focus on the following key topics:
• Uniqueness of Electrochemical Inventions
• Patent Challenges, Opportunities, and Best Practices
• When and Where to File Energy Storage Patents
• Patent Valuation
• Industry Patent Trends
Presenter
Todd Ostomel – Partner at Squire Patton Boggs
Todd Ostomel helps entrepreneurs develop intellectual property portfolios for protecting inventions directed to inorganic and organic chemicals, chemical processes, electrochemical devices and materials, pharmaceuticals, and biotechnology. Todd focuses on patent prosecution and portfolio management, patent opinions, due diligence, and trade secret counseling.
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IP Landscape, Strategies & Protection for Li-Ion Battery Solid-State Electrolytes and Silicon-Based Anodes
The audience will learn about recent key inventions in the areas of solid electrolytes and silicon anodes for Li-ion batteries that constitute the state of the art. Exemplified by a look at two new-comers (startups) and two incumbents, attendees will further learn about how to approach IP strategy & protection for their R&D programs.
This webinar will focus on the following key topics:
• IP landscape, strategies & protection
• Solid-state electrolytes for Li-ion batteries
• Silicon-based anodes
Presenters
Howard Lim – Associate Attorney, Fenwick & West LLP
Pirmin Ulmann – Co-Founder & CEO, B-Science.net
Howard represents technology-based clients in patent litigation matters and postgrant proceedings, such as inter partes reviews. He has technical experience in the area of lithium-ion batteries, electric vehicles, semiconductors, semiconductor manufacturing equipment, and LCD and OLED display technologies. Prior to becoming a lawyer, Howard had a substantial career in the lithium-ion battery industry working for Panasonic and Sanyo Electric Company developing new products in the areas of electric vehicle and energy storage technologies.
Pirmin is co-founder and CEO of b-science.net, a battery innovation & patent monitoring service that is based on a novel machine learning approach. He obtained a diploma in chemistry from ETH Zurich (Switzerland) in 2004 and a PhD from Northwestern University (USA) in 2009. Thereafter, he was a JSPS Foreign Fellow at the University of Tokyo (Japan). From 2010 to 2016, while working at a major battery materials manufacturer in Switzerland, he was a coinventor of 7 patent families related to lithium-ion batteries. He holds the credential Stanford Certified Project Manager (SCPM) and has co-authored scientific publications with more than 1,600 citations.
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Patenting Inventions Course 3/3: International Battery Patent Battles
In the first three months of 2021, the U.S. International Trade Commission (ITC) announced two investigations related to patented battery technology. Later in 2021, the ITC is scheduled to issue decisions in two additional investigations relating to lithium-ion battery cells. This talk will present a case study highlighting the impact of the ITC on the battery industry.
This webinar will focus on the following key topics:
• Why is the U.S. International Trade Commission (ITC) a popular venue for battery litigation?
• What types of disputes can be litigated before the ITC?
• Recent activity in ITC battery litigation
Presenters
Todd Ostomel – Partner at Squire Patton Boggs
Adam Hess – Partner at Squire Patton Boggs
Todd Ostomel helps entrepreneurs develop intellectual property portfolios for protecting inventions directed to inorganic and organic chemicals, chemical processes, electrochemical devices and materials, pharmaceuticals, and biotechnology. Todd focuses on patent prosecution and portfolio management, patent opinions, due diligence, and trade secret counseling.
Adam Hess serves as lead counsel in federal district court litigation, in Section 337 investigations at the US International Trade Commission (ITC) and in international arbitration, including before the International Chamber of Commerce (ICC) in Europe and before several US arbitration bodies. He works with Customs and Border Protection on matters concerning the enforcement of ITC exclusion orders.
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