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.

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: Half-Day “PTAB Master Class”

 

This session is for highly experienced PTAB trial practitioners and will focus on advanced topics such as replies to preliminary responses, discovery, motions to amend, motions for supplemental information, motions for joinder, and estoppel.

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: Managing EPO Opposition Proceedings Alongside USPTO AIA Trial Proceedings

This session will include a panel discussion that will include an APJ and a representative of the EPO to compare and contrast PTAB trials and EPO oppositions.

 

1:00 pm – 5:00 pm Committee Meetings         
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

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.

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.

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.

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.

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.

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.

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.

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.

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

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.

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.

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

 

This session will explore emerging ethical issues at the PTAB, including protective orders and confidentiality in PTAB trials.