Litigation-Proofing and Proving your Patent Claims Training Course (London, United Kingdom - November 4, 2025)

Agenda

Patent claim construction generally

• In the USA
  • Inherent ambiguities of the all-elements rule
  • Use of intrinsic and extrinsic evidence
  • Counterintuitive interpretation of functional claims
  • USPTO proceedings vs infringement litigation
• In the UK
  • Court’s approach to the ‘normal’ interpretation of the claims …
  • … and the (wider) scope of protection under the UK doctrine of equivalents
  • Accepted principles of claim construction (Virgin Atlantic)
  • The approach taken to parameters, numerals and specific claim form
• In Germany
  • Literal infringement and ‘functional’ interpretation
  • Can ‘functional’ interpretation result in construction ‘below’ the wording?
  • Numerals and literal infringement

Doctrines of equivalents and purposive construction

• In the USA
  • Sub-tests for determining equivalents
  • Counterweights to ‘equivalence’
  • Vitiation
  • Unintended disavowal
  • Prosecution history estoppel and its variants
• In the UK
  • The groundbreaking judgement in Actavis vs Lilly
  • Does a ‘variant’ vary from the invention in an immaterial way? Or achieve substantially the same result in the same way?
  • Compliance with EPC Article 69 and Protocol
  • UK court’s willingness to refer to EPO prosecution history
• In Germany
  • The Schneidmesser questions
  • Relevance of Pemetrexed
  • Has the scope of protection become broader again?
  • Relevance of prosecution history

Arguments and strategy: how to maximise the likelihood of a finding of infringement at each phase of a patent litigations

• Pleadings (Germany, UK, USA)
• Disclosure (UK, USA)
• Expert evidence (UK, USA)
• Trial (Germany, UK, USA)

Comparative case studies

• Presentations of real-life case studies with interactive panel discussions explaining the often dissimilar approaches that were or would be taken in the three jurisdictions for interpreting specific claims

Speakers

• 

• Ulrich Blumenroeder,
  Partner ,
  Grűnecker, Kinkeldey, Stockmair & Schwanhäusser
  
  

  Ulrich Blumenröder is a partner at Grűnecker, Kinkeldey, Stockmair & Schwanhäusser, an IP-firm in Munich, which focuses equally on both IP-litigation and IP-prosecution.
  
  He is active in all fields of intellectual property but primarily specialises in patent litigation. He has litigated for both plaintiffs and defendants in all prominent German courts in normal as well as preliminary injunction proceedings.
  
  He frequently gives lectures on various topics of patent law. He has written articles and is author of ‘German Regulations on Industrial Products’ (1997).

• 

• Mr Bradley Hulbert,
  Founding Partner,McDonnell Boehnen Hulbert & Berghoff LLP ,
  Management Forum
  
  

  Bradley J. Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm in Chicago. Mr. Hulbert has overseen the development of a diverse range of extensive, international patent portfolios and has worked as an adjunct professor of law at the Chicago-Kent Law School for more than 20 years.

• 

• Matthew Jones,
  RPC
  
  

  Matthew has extensive experience of acting in large scale UK patent litigation and in multi-jurisdictional patent litigation. Matthew has acted in litigation relating to a wide range of technologies, including electronics, telecommunications, cryptography, optics, mechanical devices, pharmaceuticals and biotechnology.

  Before joining EIP, Matthew worked as Senior Counsel for Teva Pharmaceuticals Europe. During his time at Teva, Matthew managed high-profile litigation in the UK, Germany, France and the Netherlands, including Generics [UK] Ltd v Yeda & Teva, which related to the blockbuster drug Copaxone®. Prior to working at Teva, Matthew worked as a solicitor at McDermott Will & Emery and at Taylor Wessing.

  Matthew has a degree in Biochemistry from Bristol University and a PhD in Biochemistry (specialising in quantum enzymology) from Leicester University. He has written papers published in peer-reviewed journals and the legal press, and frequently speaks on intellectual property and litigation at business schools, universities and international conferences.

Who Should Attend

This course is a must-attend event for:

• Patent professionals in private practice, including patent attorneys and lawyers
• Heads of IP, heads of patents and in-house patent counsel at every level
• Patent engineers and inventors

Plus all whose responsibilities include the need to understand the scope of patent coverage in USA, UK and Germany.