2018 Conference Agenda

Wednesday, March 21
1:00 pm – 5:00 pm Pre-conference Session: Special Half-Day “Bootcamp” (For Lawyers With Less than 3 years in PTAB Practice)

This session will provide an overview discussion, geared towards lawyers who have handled less than 50 post-grant proceedings, of the who, what, and when of inter partes review, post-grant review, covered business method review, and appeals. The “who” will address the general questions that need to be addressed to see if your client is eligible to file one of these proceedings. The “what” will address the general questions about what patents are eligible for each type of review and what may be raised in each of these proceedings. And the “when” will address the timing limitations for each of these proceedings.  Guide attendees through an IPR fact pattern from institution to final written decision, discussing best practices for petition drafting, briefing before the Board, discovery parameters boundaries, and tips for a successful oral argument. This workshop will include a mock oral argument and more.

IMPORTANT: The PTAB Bar Association is offering pre-conference sessions to specific target audiences, so please register only if you meet the criteria as a”Lawyer With Less than 3 years in PTAB Practice.” Space is limited for each pre-conference session, and registration is on a first-come, first-served basis.

1:00 pm – 3:45 pm Pre-conference Session: Special Half-Day “Master Class” (For Experienced Lawyers)

The Master Class is an innovative program exploring complex and strategic decisions in post-grant proceedings where there may be many “right” answers… depending on the facts.  Veteran lawyers will discuss how they approach difficult situations to give their clients an edge, and PTAB judges will offer their insights and perspectives.  The program is geared toward lawyers who have handled more than fifty post-grant proceedings.

IMPORTANT: The PTAB Bar Association is offering pre-conference sessions to specific target audiences, so please register only if you meet the criteria as an “Experienced Lawyer.” Space is limited for each pre-conference session, and registration is on a first-come, first-served basis.

4:00 pm – 5:00 pm Pre-Conference Session: Comparing the PTAB to Other Forums Around the World

This session will include a roundtable discussion that will include liaisons from the Patent Offices around the world (e.g., Japanese Patent Office and Korean Patent Office). The session will cover any overlap and/or differences between the different offices.

1:00 pm – 5:00 pm Committee Meetings Agenda          

1:00 – 1:55        Annual Conference Committee       Lincoln

1:00 – 1:55        Communications Committee       Board Room                  

2:00 – 2:55        Industry Committee       Lincoln

2:00 – 2:55        Membership Committee       Board Room

2:00 – 2:55        Program Committee        Washington Room

2:00 – 2:55        PTAB Appeals Committee       Roosevelt Room

3:00 – 3:55        PTAB Trials Committee       Lincoln

3:00 – 3:55        Sponsorship Committee       Board Room

3:00 – 3:55        Website Committee       Washington Room

3:00 – 3:55        Young Lawyers and Agents       Committee Roosevelt Room

4:00 – 4:55        Diversity Committee       Roosevelt Room

Thursday, March 22
7:00 am – 8:30 am Breakfast
8:30 am – 9:15 am Welcome & Opening Keynote
9:15 am – 10:00 am General Session 1 – Insights from the PTAB Bench

This session will feature first-hand insights from Administrative Patent Judges with experience presiding over PTAB Trials, including post-grant reviews, inter partes reviews, and covered business method reviews.  The panel will discuss best practices over the last five years and what needs improvement going forward.  Judges will be invited to share tips and best practices from their viewpoint, as well as things to avoid when appearing before the Board.  The panel will also explore how parties and practitioners can help the Board, including considerations such as potential rule changes, the use of expert declarations and other evidence, oral hearing demonstratives, and the use of rehearing procedures.

10:00 am – 10:15 Refreshment Break
10:15 am – 11:00 am General Session 2 – Patent Owners and Petitioners Weigh In

This session will focus on what the petitioners and patent owners feel has been working and what needs improvement.  Patent owners and petitioners will weigh in on the ability to amend in PTAB proceedings in light of the Federal Circuit’s recent Aqua Products decision.  The panel will also provide predictions on the impact of PGRs as more and more AIA patents issue.

11:00 am- 12:00 pm General Session 3 – View from the Federal Circuit

This session will explore the unique aspects of appeals from PTAB trials, including various standards of review, the record before the agency, and statutory interpretation issues of first impression. The panel of Federal Circuit judges will also provide insight on how patent owners and petitioners can position themselves for success on appeal.

12:00 pm – 1:10 pm Networking Lunch & Short Business Meeting
1:15 pm – 2:00 pm Concurrent Session 1A – The Rise of Biosimilar Challenges

With the increasing prevalence of biosimilars, this session will focus on how proceedings before the PTAB can be used in place of or in conjunction with the Biologics Price Competition and Innovation Act (BPCIA).

Concurrent Session 1B – An Exploration of the Ever-Changing Law on CBMs and Section 101

This session will explore the nuances of CBMs, including CBM standing requirements and grounds that can be raised in CBMs.  The panel will consider how the Board has been responding to recent Federal Circuit decisions on CBM eligibility and Section 101

2:10 pm – 2:55 pm Concurrent Session 2A – Leveraging the Ex Parte Process

This session, which will include PTAB APJ’s and experienced practitioners, will address how to use the ex parte process, including reexaminations, to make a portfolio stronger and more litigation safe.  The panel will provide practitioners with tips on how to get appeals through the PTAB more efficiently and effectively.

Concurrent Session 2B – PTAB Trends and Hot Topics

This session will focus on trends that have the potential to significantly alter existing PTAB practices, both with respect to practice and jurisprudence.  For instance, the panel will address sovereign immunity, the effect of the new rules implemented in 2016, APA issues in light of the Federal Circuit’s relatively increasing focus on APA flaws, supplemental evidence, and joinder of time-barred petitions.

2:55 pm – 3:15 pm Refreshment Break
3:15 pm – 4:00 pm General Session 4 – Navigating the Interplay of Parallel Litigation with a PTAB Proceeding

This session will focus on the interplay between the PTAB, the district courts, and the ITC.  The panel will discuss how estoppel, the PTAB’s discretion to terminate a proceeding, and the latest trends in consideration of motions to stay affect the interplay between a case at the PTAB and in district court or the ITC.  The panel will also discuss how the Supreme Court’s coming decision in SAS may affect the use of PTAB proceedings as a tool for a case in district court or the ITC.

4:00 pm – 5:00 pm General Session 5 – The Role of Legislation and Rule Making

This session will begin with a look back on past attempts to refine PTAB practice through legislative and rule-making processes. The panel will then explore recently-introduced legislation, potential rule changes, and changes to the trial practice guide.

5:00 pm – 5:30 pm General Session: A Conversation with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
5:30 pm – 7:00 pm Reception
Friday, March 23
8:00 am – 9:00 am Breakfast
9:00 am – 10:00 am General Session 6 – Supreme Court Review: A Foundational Shift at the PTAB?

The Supreme Court is currently considering two hot-button issues that have the potential to fundamentally alter the current landscape.  Specifically, the Court is considering the constitutionality of IPRs (in Oil States) and the ability of the PTAB to institute/decide on only a subset of patent claims (in SAS).  This session will include a thoughtful discussion of Oil States and SAS.

10:00 am – 10:45 am General Session 7 – Delving Into Complex and Less-Common Issues in PTAB Practice

This session will focus on complex issues in PTAB practice, such as remand after vacatur by the Federal Circuit, estoppel considerations, replies to preliminary responses, discovery, motions to amend, motions for supplemental information, motions for joinder, and estoppel.

10:45 am – 11:00 am Break
11:00 am – 12:00 pm General Session 8 – Ethics Before PTAB

This session will explore emerging ethical issues through recent PTAB case studies.  The panel will consider ethical walls and protective orders, prior inconsistent statements in parallel proceedings, pro hac vice admission, and litigation funding.