2020 Conference Agenda
SCHEDULE AT A GLANCE
|WEDNESDAY, SEPTEMBER 23, 2020 PRE-CONFERENCE|
|12:00 pm - 2:45 pm|
Pre-Conference Session: PTAB Bootcamp (Advance separate registration required)
Moderators: Herb Hart, McAndrews, Held & Malloy, Ltd
Scott McBride, McAndrews, Held & Malloy, Ltd
Patent and Trademark Office
Patent and Trademark Office
Patent and Trademark Office
The bootcamp has become a staple of the conference, and will receive a refresh this year based on recent developments at the PTAB. As in years past, 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.
|12:00 pm - 2:45 pm|
Pre-Conference Session: PTAB Master Class (Advance separate registration required)
Three Sessions (Panel Style)
Moderators: Scott McKeown, Ropes & Gray
David McCombs, Haynes and Boone
The Master Class is an innovative workshop program exploring complex and strategic decisions in AIA trial 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. This program is geared toward lawyers who have handled more than fifty AIA trial proceedings.
Panel #1: An Elegant Weapon for a More Civilized Age: Petitioner Strategy
12pm – 12:45pm
Procedural rebalancing of AIA trial practices has raised the stakes for petitioners. This panel will discuss handling the strategic and practical decisions frequently encountered by Petitioners in preparing and presenting their unpatentability cases while also balancing district court litigation considerations.
These Aren’t the Droids You're Looking For: Patent Owner Strategy Panel #2:
Recent statistics show that patent owners are faring better against patentability challenges than they were in prior years. Even so, statements made to preserve patentability can come back to undermine an infringement allegation. This panel will discuss the challenges and strategies for Patent Owners seeking to best preserve their patents while creating the least opportunities for argument estoppel.
Panel #3: Never Tell Me the Odds: Trial Strategy 2:00pm – 2:45pm
Every proceeding presents numerous smaller strategy decisions, none of which is likely to be outcome determinative, but which—when made well—collectively can tilt a case in favor of one side. This panel will consider many of these directional details and look at how they can add up to a strategic advantage.
|2:45 pm – 3:00pm||Break|
3:00 pm - 4:00 pm
Pre-Conference Session: PTAB and EPO Opposition Proceedings: A Comparative Analysis of Claim Amendment Practice and Appeal
Moderator: Li-Hsien (Lily) Rin-Laures, RinLaures LLC
This session will explore the impact of changes to the motion to amend practice before the PTAB, including Aqua Products’ allocation of burdens regarding unpatentability, and a first peek at PTAB preliminary guidance given in the MTA pilot program. The panel will compare claim amendments and preliminary opinions in PTAB and EPO opposition proceedings. The panel will explore alternatives to a motion to amend, including filing a reissue application, and the PTO’s current guidance on best practices for filing a reissue after a PTAB trial. The session will also feature a first look at implementation of the new 2020 rules for EPO appeals. Along the way, our experienced panel will share insight on managing US, EP and global proceedings.
|THURSDAY, SEPTEMBER 24, 2020|
|11:00 am – 11:30 am|
Keynote from PTAB Chief Judge Boalick
Welcome by: J. Steven Baughman, Paul, Weiss, Rifkind, Wharton & Garrison LLP, PTAB Bar Association President
11:35 am - 12:30 pm
General Session 1 - Administrative Law for PTAB Practitioners: Precedential Decisions, Rulemaking, and Agency Discretion
Moderator: Erika Harmon Arner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
After nearly eight years of practice, the PTAB has grown into a well-established administrative body governed by statute, regulation, and a growing body of precedential decisions. This session will educate PTAB practitioners on key aspects of administrative law that impact practice before the USPTO and other executive branch agencies. Among other things, the panel will discuss the use of precedential agency decisions, the role of the public in agency rulemaking, and the PTAB’s increasing reliance on discretionary denials. The panel will reserve time for your questions, so please e-mail them to firstname.lastname@example.org.
|12:30 pm - 12:45 pm||Break|
|12:45 pm - 1:45 pm|
General Session 2 - PTAB Judges' Panel - An Inside Perspective
Moderator: Karl Renner, Fish Richardson P.C.
This session will feature first-hand insights from Administrative Patent Judges with experience presiding over PTAB trials. There will be a special focus on cutting edge topics such as disclaimers, estoppel, and discretionary denials.
|1:45 pm – 2:15 pm||Lunch Break|
|2:15 pm – 3:15 pm|
General Session 3 - IPR Timing Issues in View of Recent Developments: the Shift to Phillips, Recent Developments at the Federal Circuit, and the Supreme Court's Consideration of Click-to-Call
Moderator: David Higer Drinker Biddle & Reath LLP
This session will explore how recent changes in practice at the PTAB implicate IPR timing considerations. Among other things, the PTAB’s shift to Phillips (and related increased necessity to align claim construction positions with district court), recent developments in RPI/privity/315(b) law, and the Supreme Court’s consideration of Click-to-Call will be explored.
|3:15 pm – 3:30pm||Break|
3:30 pm - 4:15 pm
Concurrent Session 1A - Claim Amendments Under the PTAB Pilot Program
Moderator: Bob Steinberg, Latham & Watkins LLP
This session will provide a primer on the PTAB’s pilot program for motions to amend, review results of motions to amend after one year, consider alternatives to motions to amend and provide guidance.
Concurrent Session 1B - Economic Analysis of PTAB Proceedings
Moderator: Joseph Matal, Haynes and Boone
This session will explore the impact PTAB proceedings have had on the economics of litigation. Big picture issues such as the impact PTAB proceedings have had on the cost and results of litigation will be examined. This session will also explore the ways in which PTAB proceedings are considered by people in various industries, such as tech-focused and bio-focused companies, including when evaluating deals, licensing, and other issues.
|4:15 pm – 4:30 pm||Break|
|4:30 pm - 5:15 pm||General Session 5 - Discussion with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO|
Moderator: Naveen Modi, Paul Hastings LLP
|5:15 pm - 6:15 pm||Networking Reception||Reception|
|FRIDAY, SEPTEMBER 25, 2020|
|11:00 pm - 11:45 am|
General Session 4 - Hot Topics and Oral Argument Practicum
Moderator: Courtenay Brinckerhoff, Foley & Lardner LLP
This high energy program will feature short mock arguments on current hot topics in PTAB practice. Senior practitioners and APJs will provide feedback to the next gen advocates, drawn from the Young Lawyers and Agents committee.
|11:45am – 12:00pm||Break|
|12:00pm – 12:45pm|
Concurrent Session 2A - The Nature of Discovery at the PTAB and How It Has Evolved
Moderator: Jason Stach, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
This session will explore the evolution of discovery at the PTAB, including practical considerations based on where things stands today. Successful ways to leverage the PTAB’s discovery process in view of the current state of the law will be closely examined.
Concurrent Session 2B - A Look Back - Analysis of Trends Over the Years
Moderator: Thomas Rozylowicz, Fish & Richardson P.C.
|12:45 pm - 1:15 pm||Lunch Break|
|1:15 pm - 2:15 pm|
General Session 6 - Appellate Issues
Moderator: Gene Lee, Perkins Coie LLP
This session will explore various PTAB-specific appellate practice points from preparing a case for appeal through oral argument and will address important issues such as such as standing and issue reviewability.
|2:15 pm – 2:30pm||Break|
|2:30 pm - 3:15 pm|
General Session 7 - View from the Federal Circuit
Moderator: J. Steven Baughman, PTAB Bar Association President, Paul, Weiss, Rifkind, Wharton & Garrison LLP
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 patent owners and petitioners can improve their odds for success on appeal.
|3:15 pm - 3:30pm||Break|
|3:30 pm – 4:30 pm|
General Session 8 - Ethics Before the PTAB
Moderator: Alison J. Baldwin, McDonnell Boehnen Hulbert & Berghoff LLP
The majority of PTAB proceedings are conducted in parallel with district court or ITC proceedings and having concurrent proceedings on overlapping issues can raise potentially complex and difficult ethical issues for counsel. Can parties and their counsel ethically advance inconsistent positions in these different proceedings? How far can or should counsel go in advocating their position? What are the boundaries of ethical behavior in these situations? And how does the PTAB panel handle situations where parties advocate positions inconsistent with positions taken in a concurrent proceeding? Join experienced PTAB judges in an interactive analysis of these and other related issues.