2019 Conference Agenda

Preliminary Agenda — Subject to Confirmation/Revision (Any USPTO participants are Invited, and not yet confirmed)

Wednesday, March 13
1:00 pm – 5:00 pm Pre-conference Session: Special Half-Day “Bootcamp” 

 

This session is geared toward lawyers who are interested in an overview of the who, what, and when of IPRs, PGRs,  CBM reviews, 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. This interactive workshop will 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.

Moderator:

  • David Higer, Drinker Biddle & Reath LLP   

Speakers: 

  • Administrative Patent Judge Ken Barrett, United States Patent and Trademark Office
  • Administrative Patent Judge Linda Horner, United States Patent and Trademark Office
  • Lead Administrative Patent Judge Christopher Paulraj, United States Patent and Trademark Office
  • Lead Administrative Patent Judge William Saindon, United States Patent and Trademark Office
  • Mita Chatterjee, Paul Hastings LLP
  • David Reese, Finnegan, Henderson, Farabow, Garret & Dunner, LLP
1:00 pm – 3:45 pm Pre-conference Session: Half-Day “PTAB Master Class”

 

Big changes have ocurred in PTAB practice since our first Master Class in 2018. This year, we’ll explore the impact of those changes on strategies for both sides. What has really changed, and what remains the same? How have PTAB trials evolved to account for new claim constructions procedures, new Trial Practice Guide changes, and landmark decisions such as SAS Institute? What changes are yet to come under new agency leadserhip?

Moderators:

  • David McCombs, Haynes and Boone
  • Scott McKeown, Ropes & Gray LLP

Speakers:

  • David Cochran, Jones Day
  • Gabrielle E. Higgins, Ropes & Gray
  • Buddy Toliver, Cisco
  • Administrative Patent Judge Thomas Giannetti, United States Patent and Trademark Office
  • David Cavanaugh, Wilmer Hale
  • Lead Administrative Patent Judge Susan Mitchell, United States Patent and Trademark Office
  • Megan Raymond, Paul Weiss
  • Tim Seeley, Intellectual Ventures
  • William P. Atkins, Pillsbury
  • Thomas Rozylowicz, Fish & Richardson P.C.
  • Jonathan Stroud, Unified Patents Inc
4:00 pm – 5:00 pm

Pre-Conference Session: Managing EPO Opposition Proceedings Alongside USPTO AIA Trial Proceedings

This session will include a panel discussion that will include an APJ and experienced in-house and law firm practitioners to compare and contrast PTAB trials and EPO oppositions.

Moderator:

  • Gene Lee, Perkins Coie

Speakers:

  • Administrative Patent Judge Brian McNamara, United States Patent and Trademark Office
  • Mary Morry, Merck
  • Lily Rin-Laures, RinLaures LLC
1:00 pm – 5:00 pm

Committee Meetings

1:00pm – 1:55 pm:  Industry Committee (Jefferson Room)

1:00pm – 1:55 pm:  Program Committee (Lincoln Room)

2:00 pm – 2:55 pm: Committee on Appeals to the PTAB (Roosevelt Room)

2:00 pm – 2:55 pm: Membership Committee (Jefferson Room)

2:00 pm – 2:55 pm: Diversity Committee (Lincoln Room)

3:00 pm – 3:55 pm: Committee on Appeals from the PTAB (Roosevelt Room)

3:00 pm – 3:55 pm: PTAB Trials Committee (Jefferson Room)

3:00 pm – 3:55 pm: Young Lawyers/Agents Committee (Lincoln Room)

4:00 pm – 4:55 pm: Annual Conference Committee (Roosevelt Room)

4:00 pm – 4:55 pm: Women’s Committee (Jefferson Room)

4:00 pm – 4:55 pm:  Communications Committee (Lincoln Room)

       

Thursday, March 14
7:00 am – 8:30 am Registration & Breakfast
8:30 am – 9:00 am Welcome & Chief Judge’s Keynote [Invited]

 

Welcome & the Chief Judge’s Annual Address

Speaker:

  • Erika Arner, PTAB Bar Association President, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

 

9:00 am – 10:00 am General Session 1 – Claim Construction Final Rule: A New Complexity at the PTAB?

 

This session will address implementation of the claim construction final rule in PTAB trials, including recent Board decisions illustrating their impact and updated strategies before the Board.

Moderator:

  • Karl Renner, Fish & Richardson P.C.

Speakers:

  • Julie Han, Samsung Electronics 
  • Tom Scott, Personalized Media Communications, LLC
  • Vice Chief Judge Mike Tierney, United States Patent and Trademark Office
  • John Whealan, George Washington University Law School
10:00 am – 10:15 Refreshment Break
10:15 am – 11:15 am General Session 2 – Insight from the PTAB Bench

 

This session will feature first-hand insights from Administrative Patent Judges with experience presiding over PTAB Trials [Invited]. There will be a special focus on cutting edge topics such as discovery,  real parties-in-interest, and multiple petition filings.

Moderator:

  • Naveen Modi, Paul Hastings LLP

Speakers:

  • Lead Administrative Patent Judge Kalyan K. Deshpande, United States Patent and Trademark Office
  • Administrative Patent Judge Bryan Moore, United States Patent and Trademark Office
  • Administrative Patent Judge Grace Obermann, United States Patent and Trademark Office
  • Lead Administrative Patent Judge James Worth, United States Patent and Trademark Office
11:15 am- 12:15 pm General Session 3 – 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 the impact of estoppel, the PTAB’s discretion to terminate a proceeding, and the latest trends in consideration of motions to stay. The panel will also address the impact of the PTAB’s claim construction rule change from the perspective of district court judges.

Moderator:

  • Alison Baldwin, McDonnell Boehnen Hulbert & Berghoff LLP

Speakers:

  • Magistrate Judge Christopher J. Burke, United States District Court for the District of Delaware
  • Administrative Law Judge Clark S. Cheney, U.S. International Trade Commission
  • Vice Chief Judge William Fink, United States Patent and Trademark Office
  • Judge Liam O’Grady, United States District Court Eastern District of Virginia
12:15 pm – 1:30 pm Networking Lunch & Association Business Meeting
1:30 pm – 2:15 pm Concurrent Session 1A – Post-grant and Life Sciences

 

This panel will focus on current issues facing the life sciences industry related to post-grant proceedings, including the standing after Momenta Pharmaceuticals and the interplay between PTAB, Hatch-Waxman, and Biosimilars.

Moderator:

  • Teresa Stanek Rea, Crowell & Moring LLP

Speakers: 

  • Lead Administrative Patent Judge Michelle Ankenbrand, United States Patent and Trademark Office
  • Melissa Brand, Biotechnology Innovation Organization (BIO)
  • Paul Golian, Bristol-Myers Squibb Company
  • Julia Pike, Sandoz
1:30 pm – 2:15 pm Concurrent Session 1B – Party Crashers- the role of latent 101 and 112 issues arising in post-grant matters

 

This Panel will examine the different ways that non-prior art grounds can be addressed in PTAB trials, including Sections 101 and 112.

Moderator: 

  • Monica Grewal, Wilmer Cutler Pickering Hale and Dorr LLP

Speakers:

  • Ashraf Fawzy, United Patents
  • Lead Administrative Patent Judge Michael Kim, United States Patent and Trademark Office
  • David O’Brien, Haynes and Boone LLP 
  • Bo Han, Bristol-Myers Squibb
2:20 pm – 3:05 pm Concurrent Session 2A – Motions to Amend at the PTAB

This panel will explore the current state of motions to amend practice at the PTAB, including the success rates, the role of examiners in the motion to amend process, and new strategies in view of the recent PTAB guidance. The panel will also examine the interplay of amendments with reissue and reexam proceedings.

Moderator: 

  • Bob Steinberg, Latham & Watkins LLP

Speakers:

  • Acting Deputy Chief Administrative Patent Judge, Jacqueline Bonilla, United States Patent and Trademark Office
  • Ben Haber, Senior Policy Adviser to the Undersecretary of Commerce for IP and Director of the USPTO
  • Tonya Drake, iRobot
  • Sara Horton, Jenner & Block
  • Michael Penn, Amgen
2:20 pm – 3:05 pm Concurrent Session 2B –  Current Best Practices in Ex Parte Appeals

This panel will focus on best practices in ex parte appeals from original examination and reexams, including Do’s and Don’ts from an ex parte APJ.

Moderator:

  • Courtenay Brinckerhoff, Foley & Lardner LLP

Speakers:

  • Shruti Costales, HP Inc
  • Lead Administrative Patent Judge Rae Lynn Guest, United States Patent and Trademark Office
  • Administrative Patent Judge James T. Moore, United States Patent and Trademark Office
  • Caroline Pinkston, Hewlett Packard Enterprise
3:05 pm – 3:30 pm Refreshment & Networking Break
3:30 pm – 4:15 pm General Session 4 –Estoppel and the Aftershocks of SAS Institute

 

This session will address the impact of SAS Institute one year later for both petitioners and patent owners. The panel will also discuss how different venues are interpreting the estoppel provisions.

Moderator: 

  • Herb Hart, McAndrews, Held & Malloy, Ltd.

Speakers:

  • Joe Benz, Ford
  • Emily O’Brien, Google
  • Vice Chief Judge Scott Weidenfeller, United States Patent and Trademark Office
4:15 pm – 5:00 pm General Session 5 – Hot Topics and Oral Argument Practicum

 

This high energy program will feature short mock arguments on current hot topics in PTAB practice, including PTAB trials and Ex parte Appeals. Senior practitioners and APJs will provide feedback to the next gen advocates, drawn from the Young Lawyers and Agents committee.

Moderator:

  • Jason Stach, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Speakers:

  • Chetan Bansal, Paul Hastings
  • Administrative Patent Judge Kevin Cherry, United States Patent and Trademark Office
  • Administrative Patent Judge Rama Elluru, United States Patent and Trademark Office
  • Joshua James, Brings
  • Jennifer O’Connell, Davidson, Davidson & Kappel, LLC
  • Fahd Patel, Morrison & Foerster LLP
5:00 pm – 5:30 pm

Fireside chat with Laura A. Peter, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.

 

5:30 pm – 7:00 pm Reception
Friday, March 15
8:00 am – 9:00 am Breakfast
9:00 am – 10:00 am General Session 6 – View from the Federal Circuit 

 

A perennial favorite, this session will invite a panel of Federal Circuit judges to share their view of the PTAB practice and tips for how how patent owners and petitioners can improve their odds for success on appeal.

Moderators:

  • J. Steven Baughman, Paul Weiss, Rifkind, Wharton & Garrison LLP

Speakers:

  • Circuit Judge Raymond T. Chen, US Court of Appeals for the Federal Circuit
  • Circuit Judge Kimberly A. Moore, US Court of Appeals for the Federal Circuit
  • Circuit Judge Pauline Newman, US Court of Appeals for the Federal Circuit

 

10:00 am – 10:45 am General Session 7 – Advanced Issues Related to the Real Party-in-Interest and Privity Disputes

 

This session will address the current state of the law on Real Party-in-Interest and privity at the PTAB, including the latest Federal Circuit and PTAB guidance. The panel will also discuss discovery tools and strategies related to RPI disputes.

Moderator:

  • Todd Dickinson, Polsinelli PC

Speakers: 

  • Michael Babbit, Jenner & Block
  • Mark Taylor, Microsoft 
  • Saurabh Vishnubhakat, Texas A&M School of Law
10:45 am – 11:00 am Break
11:00 am – 12:00 pm General Session 8 – Ethics Before the PTAB

 

This interactive session will explore emerging ethical issues at the PTAB, including a deep dive into the differences between the duties of candor owed during prosecution and post-grant proceedings.

Moderator:

  • Eleanor Yost, Carlton Fields

Speakers:

  • Professor David Hricik, Mercer University School of Law
  • William Covey, Deputy General Counsel & Director (Office of Enrollment & Discipline) at United States Patent & Trademark Office