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Strategies for Defending Against NPE Suits

(808 Ratings)

Produced on: October 08, 2015

Course Format On Demand Audio

Taught by


Course Description

Time 60 minutes
Difficulty Beginner

Thomas J. Bean and Wendy R. Stein explore current trends in NPE patent litigation, potential strategies for responding to NPE suits and pending legislative reform.


Learning Objectives:

I.    Understand current trends in NPE patent litigation before the district courts 

II.   Learn potential strategies for defendants responding to patent suits brought by NPEs 

III.  Review recent trends in motion practice by defendants challenging NPE patent eligibility under 35 U.S.C. § 101 

IV.  Evaluate post-grant proceedings before the USPTO as a potential defendant response to NPE suits

V.   Recognize potential impact of legislative reform on future trends in NPE patent litigation



Wendy Stein

Gibbons P.C.

Ms. Stein is an IP litigator who focuses her practice on intellectual property disputes, primarily in the patent and trademark areas.

Ms. Stein has extensive experience litigating a broad variety of patent infringement and other matters in the pharmaceuticals and life science area, including matters related to antibiotics, anti-depressants, anti-coagulants, epilepsy, pain, ADHD, sleep apnea, and high blood pressure medications, and SABAs used to treat asthma and/or COPD. Ms. Stein also has substantial experience litigating patent infringement disputes in the non-pharma area, including related to GPS devices, gaming, hand-held devices and packaging.

Ms. Stein has appeared before federal and state courts throughout the United States, including New York, New Jersey, Delaware, Massachusetts, California, Florida, Texas, District of Columbia, Illinois, and Nebraska, and before the Court of Appeals for the D.C. and Federal Circuits, most recently obtaining a Rule 36 affirmance of five separate summary judgments concerning alleged patent infringement, false patent marking, and commercial claims.

Thomas J. Bean

Gibbons PC

Mr. Bean has extensive experience counseling clients on evaluating, acquiring, and protecting intellectual property assets. He focuses his practice on patent matters, including domestic and foreign patent prosecution in the areas of communications, consumer electronics, consumer products, semiconductor and materials technologies, medical devices, casino and consumer gaming, software and network-based systems, and computer-implemented business methods. Mr. Bean’s patent practice is also directed to patent and technology licensing, IP due diligence, product clearance and patent opinions, and patent post-grant procedures.


Before joining Gibbons, Mr. Bean was Senior Counsel at Darby & Darby P.C. in New York. Mr. Bean also held positions as an associate at Katten Muchin Rosenman in New York and as Corporate Counsel at Lucent Technologies Inc. and Avaya Inc. in Holmdel, New Jersey. At Avaya, Mr. Bean was responsible for setting up and administering the company’s patent prosecution practices, including the selection and deployment of docketing and related information management systems and the management of outside counsel, foreign associates, and patent annuity vendor services.




IP Harvesting, Evaluation, and Strategy


Developing effective client strategies for creating and monetizing IP assets, including strategies relating to managing and monetizing existing patent portfolios and to incentivizing, identifying, and protecting new IP assets.


IP Due Diligence and Agreements


Identifying the scope, strength, and value of IP assets under client consideration for purchase, sale, or licensing; addressing validity, enforceability, encumbrances, and other attendant risks; and assisting in the preparation of associated purchase, sale, and licensing agreements with a focus on mitigating risk.


IP Opinions and Counseling


Preparing qualified opinions of counsel for clients, including freedom to operate opinions for products/services, as well as patent infringement/non-infringement opinions and patent validity/invalidity opinions; clearing product/service design alternatives; and evaluating and preparing patent litigation contentions with regard to infringement/non-infringement opinions and validity/invalidity.


Patent Prosecution


Developing effective patent prosecution strategies according to clients’ business objectives; preparing and prosecuting patent applications in the U.S. Patent & Trademark Office and in foreign patent offices in accordance with clients’ patent prosecution strategies.


Patent Post-Grant Procedures


Counseling clients in the application of post-grant procedures in the U.S. Patent & Trademark Office, including inter partes reviews, post-grant reviews, reviews conducted under the transitional program for covered business methods, ex parte reexaminations, and supplemental examinations.



  • Rutgers School of Law - Newark (J.D.)
  • Stanford University (M.S.)
  • Cornell University (B.S., cum laude)

Participant, Cornell Cooperative Engineering Program



  • State of New Jersey
  • State of New York
  • United States District Court for the District of New Jersey
  • United States District Court for the Eastern District of Texas
  • United States Patent and Trademark Office (Reg. No. 44,528)
  • Supreme Court of the United States



  • American Intellectual Property Law Association 
  • New York Intellectual Property Law Association 
  • Institute of Electrical and Electronics Engineers 
  • American Society of Mechanical Engineers 
  • New Jersey State Bar Association 
  • New York State Bar Association 



• "Recent Case Reveals Effective Strategy for Responding to NPE Suits," IP Law Alert, November 


10, 2014 (By: Thomas J. Bean, Wendy R. Stein)


• "How to Meet the Inequitable Conduct Standard after Therasense," IP Law Alert, August 21, 2014 


(By: Gianna Cricco-Lizza, Thomas J. Bean)


• "AIA Post Issuance Proceedings – Patent Owner Challenges Standing of United States Entities to 


Bring PGR Review of CBM Patent," IP Law Alert, July 28, 2014 (By: Wendy R. Stein, Thomas J. 




• "AIA Post-Issuance Proceedings – Patent Owner’s Preliminary Response Persuades PTAB 


Denial of IPR," IP Law Alert, June 24, 2014


• "AIA Post-Issuance Proceedings – Live Testimony Finds Its Way Into Oral Argument for Inter 


Partes Review," IP Law Alert, June 11, 2014


• "AIA Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes


Review," IP Law Alert, May 28, 2014


• "AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must 


Be “Surgically” Tailored," IP Law Alert, May 21, 2014


• "AIA Post-Issuance Procedures – Estoppel Provisions Raised by Patent Owner In Attempt to 


Defeat “Synchronized” Decisions," IP Law Alert, April 22, 2014


• "How Post-Issuance Patent Challenges Affect Concurrent Litigation," New Jersey Law Journal, 


April 14, 2014 (By: Thomas J. Bean, Robert E. Rudnick, James J. Kang)


• "PTAB Finds DNA Sequencing Patent Claims to be Invalid," IP Law Alert, March 12, 2014


• "Momentum Builds on Patent Litigation Reform...Goodlatte Bill Passes House," IP Law Alert, 


December 13, 2013 (By: Robert E. Rudnick, Thomas J. Bean)


• "PTAB Issues its First Decision in an Inter Partes Review Trial," IP Law Alert, November 20, 2013 


(By: Thomas J. Bean, James J. Kang)


• "Senate Proposes Its Bill on Patent Litigation Changes," IP Law Alert, November 6, 2013 (By: 


Robert E. Rudnick, Thomas J. Bean)


• "Patent Law Bill to Rein in Litigation Abuses . . . (No really)!" IP Law Alert, October 31, 2013 (By: 


Robert E. Rudnick, Thomas J. Bean)


• "Updated California Online Privacy Laws Require Disclosure of "Do Not Track" Policies," IP Law 


Alert, October 23, 2013 (By: Luis J. Diaz, Thomas J. Bean)


• "Proposed Amendments to Patent Laws to Rein in Litigation Abuses," IP Law Alert, October 9, 




• "GAO Report Fails to Make it "Open Season" on Trolls," IP Law Alert, September 4, 2013


• "The Texas Two Step, A Tale of Two Texas District Courts' Differing Views Concerning Stay 


Requests Pending Inter Partes Review," IP Law Alert, August 16, 2013 (By: Robert E. Rudnick, 


Thomas J. Bean)


• "Third Circuit District Courts Take Aim at Non-Patent Eligible Patents Under § 101," IP Law Alert, 


August 8, 2013 (By: Thomas J. Bean, Robert E. Rudnick)


• "Federal Circuit Advisory Council Gives Nod to Limited Claims and Prior Art in Patent Suits," IP 


Law Alert, July 23, 2013


• "Del. Leads The Way On CBM-Related Stay," Law360, March 18, 2013 (By: Christopher 


Viceconte, Thomas J. Bean)


• ""SHIELD Act" Reintroduced to Combat NPEs..." IP Law Alert, March 7, 2013 (By: Thomas J. 


Bean, James J. Kang)


• "Delaware Leads the Way on CBM-Related Stay," IP Law Alert, February 19, 2013 (By: Thomas


J. Bean, Christopher Viceconte)


• "Trade Secrets – What You Don’t Safeguard Might Hurt You!" IP Law Alert and Employment Law 


Alert, February 15, 2013 (By: Thomas J. Bean, Mitchell Boyarsky)


• "New Jersey Law to Stimulate High Tech Investment," IP Law Alert, February 6, 2013


• "PTO Announces Software Partnership Roundtable Meetings," IP Law Alert, January 9, 2013 (By: 


Thomas J. Bean, Robert E. Rudnick)


• "AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President's Signature," IP 


Law Alert, January 4, 2013


• "USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to 


November 5, 2012," IP Law Alert, October 19, 2012


• "Akamai and McKesson: Inducement Liability for Infringement by Multiple Actors," IP Law Alert, 


September 10, 2012


• "(Still) Waiting for Akamai and McKesson ...." IP Law Alert, August 15, 2012


• "Trade Secrets Update," IP Law Alert and Business Litigation Alert, July 24, 2012


• "In re Staats: Two-Year Time Limit for Reissue Applications," IP Law Alert, March 9, 2012


• "New Jersey Trade Secrets Act Becomes Law," IP Law Alert, January 10, 2012


• "All Great Businesses Begin with a Good Idea: U.S. Patent and Trademark Law Protects 


Intellectual Property," Commerce, December 2011 (Thomas J. Bean, quoted)


• "Coming Soon to New Jersey . . . Trade Secrets Law!" IP Law Alert, December 13, 2011


• "Federal Circuit Reins In Doctrine of Inequitable Conduct in Therasense, Inc. v. Becton, 


Dickinson & Co.," IP Law Alert, May 27, 2011


• "Federal Circuit Provides New Rules for Post Injunction Contempt Proceedings in TiVo v. 


EchoStar," IP Law Alert, May 3, 2011


• "U.S. Patent & Trademark Office Circulates Supplementary Patent Examination Guidelines 


Regarding Definiteness of Claim Language," IP Law Alert, February 17, 2011


• "New Patent Quality Examination Metrics Attempt Greater Balance," IP Law Alert, November 1, 




• "Supreme Court's Bilski Decision Rejects Federal Circuit's Machine-Or-Transformation Test For 


Business Method Patents," IP Law Alert, June 29, 2010 (By: Robert E. Rudnick, Thomas J. Bean)




• Speaker, Association of Corporate Counsel New Jersey (NJCCA), "New Considerations for 


Patent Counsel: Patent Post-Issuance Proceedings Under the AIA," Basking Ridge, NJ, June 3, 


2014 (Featuring: David E. De Lorenzi, George W. Johnston, Thomas J. Bean, Robert E. Rudnick)


• Speaker, Gibbons Institute of Law, Science & Technology, "USPTO Patent Post-Issuance 


Proceedings Under the America Invents Act: Considerations Impacting the Healthcare and 


Technology Sectors," Newark, NJ, May 6, 2014 (Featuring: Thomas J. Bean, Robert E. Rudnick)


• Moderator, New Jersey Intellectual Property Law Association's Third Electronics, Telecom, and 


Software Patent Practice Update Seminar, "Monetization & Commercialization of Intellectual 


Property," New Brunswick, NJ, November 12, 2013


• Speaker, Gibbons Institute of Law, Science & Technology, "USTPO Patent Post-Issuance 


Proceedings Under the American Invents Act – a New Frontier," Newark, NJ, April 23, 2013 


(Featuring: Thomas J. Bean, Robert E. Rudnick)


• Panelist, New Jersey Intellectual Property Law Association, "Post Grant Review: Strategies for 


Effective Use of Ex Partes Reexamination Under AIA," Iselin, NJ, January 24, 2013




Judicial intern to the Honorable Philip B. Cummis, Law Division, Special Civil Part, Essex County Superior 


Court, 1994




Member, Colts Neck Lions Club


Michael P.

Karen Cousteau ran great!

Neil O.

Nice presentation. I appreciated the data reported from docket navigator and the treatment of Sec. 101 issues.

Robert R.

Really excellent materials and presentation.

Kevin X.

Interesting and substantive despite being a primer.

tim r.

Very well coordinated presentation.

Steven W.

Great presentation

Frank K.

Very informative and current.

Lee C.

great speakers!

Catherine K.

Great! Thank you.

Christopher M.

really good one. very cogent, and good outline.

Benjamin S.

Very good!

Gbolahan E.

Very good

Andrew F.

Very nicely presented and compact, but thoughtful collection of materials.

Abrar Q.


Sumita G.

learned a lot, even though I am not a litigator...

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