Inaugural Conference Slides

Thanks to all who attended the PTAB Bar Association Inaugural Conference, which brought together practitioners, students, and members of the bench for a dynamic discussion of the Patent Trial Appeal Board (PTAB) and best practices, case updates, and more. Below are the slides from select presentations given at the conference.

Wednesday, March 1

Special Introductory Course on PTAB Practice: PTAB Bootcamp

PTAB Bootcamp: Overview of the PTAB: IPRs, PGRs, CBMs, Appeals

  • Roosevelt Room
  • Moderator: David Higer, Kirkland & Ellis LLP
  • Speakers:
    • Thomas Rozylowicz, Fish & Richardson P.C.
    • Jim Sherwood, Google Inc.
  • An overview discussion 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.

PTAB Bootcamp Presentation Refresher Course
PTAB Bootcamp: Nuts and Bolts of IPRs, PGRs, and CBMs

  • Roosevelt Room
  • Moderator: Eleanor M. Yost, Carlton Fields
  • Speakers:
    • Administrative Patent Judge Garth Baer, USPTO
    • Lead Administrative Patent Judge Bill Saindon, USPTO
    • Paromita Chatterjee, Paul Hastings LLP
    • Joshua Goldberg, Finnegan, Henderson, Farabow, Garett & Dunner, LLP
  • In this interactive session, seasoned practitioners 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. This workshop will include a mock oral argument and more!

PTAB Bootcamp – Nuts and Bolts of IPRs, PGRs, and CBMs
PTAB Bootcamp: Networking Break

  • Roosevelt Room
PTAB Bootcamp: Nuts and Bolts of Appeals to the PTAB

  • Roosevelt Room
  • Moderator: Sara Tonnies Horton, Jenner & Block LLP
  • Speakers:
    • Administrative Patent Judge Kal Deshpande, USPTO
    • Lead Administrative Patent Judge Rae Lynn P. Guest, USPTO
  • Overview of appeals to the Patent Trial and Appeal Board from adverse decisions of examiners. The panel of experienced PTAB judges will discuss tips for writing appeal briefs, oral argument, reading decisions, and what comes next.
The PTAB and the JPO: A Comparative Analysis

  • Lincoln Room
  • Moderator: Gene Lee, Perkins Coie LLP
  • Speakers:
    • Chief Administrative Patent Judge David Ruschke, USPTO
    • Mr. Takashi Yamashita, Director of Appeal Division and Administrative Judge, Japanese Patent Office
    • Mr. Masaru Takahashi, Deputy Director of Appeal policy planning office, Appeal Division and Administrative Judge, Japanese Patent Office
    • Robert H. Resis, Banner & Witcoff, Ltd.
  • This panel discussion between judges of the PTAB and Japanese Patent Office will address unpatentability, opposition, and invalidation proceedings in the U.S. and Japan. Specifically, the panel will compare PTAB proceedings and Japanese opposition proceedings and invalidation trials. Furthermore, in both the U.S. and Japan, such proceedings occur in parallel with infringement actions. Accordingly, the panel will provide some background in the relevant Japanese proceedings and discuss the interplay between unpatentability, opposition, and invalidation proceedings in the U.S. and Japan.

JPO PTAB Presentation
Thursday, March 2
Registration & Breakfast

  • Salon Foyer
Welcome & Official Opening of the Inaugural Conference of the PTAB Bar Association: 700 Members and Counting!

  • Salon I & II
  • Speaker: Bob Steinberg, PTAB Bar Association Interim President, Latham & Watkins LLP
Keynote Address: Chief Administrative Patent Judge David Ruschke, USPTO

  • Salon I & II
General Session 1 – A Brave New PTAB World

  • Salon I & II
  • Moderator: J. Steven Baughman, Paul, Weiss, Rifkind, Wharton & Garrison LLP
  • Speakers:
    • Bernie Knight, McDermott Will & Emery LLP, Former General Counsel, USPTO
    • Terry Rea, Crowell & Moring LLP, Former Acting Director, USPTO
  • After just 4 ½ short years, the PTAB has become an established – even dominant – fixture in the patent landscape, presenting an option regularly included, and almost always considered, in significant disputed matters, whether litigated and pre-litigation. But at the time the Leahy-Smith America Invents Act was passed in 2011, some would have argued the future was not so clear. Join us for a discussion with key players who were involved in implementing the AIA from day one, and, in particular, helping to write the first chapter on this new forum for post-issuance validity trials. What did the future look like on September 16, 2011? What were the challenges and opportunities for the PTO, and what concerns were being expressed by stakeholders? What surprises emerged in rulemaking? How did the actual roll-out of PTAB trials confirm, confound, or change those expectations? How has the Board addressed logistical challenges, both expected and unexpected? And, finally, how have PTAB trials evolved over these first 4 ½ years, and what should we be looking for in the next five years of PTAB practice? Lend your voice and questions as we reflect on the history and promise of this vibrant and ever-developing forum.
Networking Break

  • Salon Foyer
General Sessions 2 – Insights from the PTAB Bench

  • Salon I & II
  • Moderator: Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Speakers:
    • Administrative Patent Judge Rama Elluru, USPTO
    • Administrative Patent Judge Michelle Ankenbrand, USPTO
    • Lead Administrative Patent Judge Christopher Crumbley, USPTO
  • 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 what is working well so far and what needs improvement in areas such as written advocacy, expert testimony, conference call practice, and oral hearings. We will invite the judges 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 with 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. Audience members are invited to submit questions for the panel in advance (or during the panel) to the moderator at
General Session 3 – Patent Owners and Petitioners Weigh In

  • Salon I & II
  • Moderator: Kevin Laurence, Laurence & Phillips IP Law LLP
  • Speakers:
    • Henry Hadad, Bristol-Myers Squibb Company
    • Dinesh Melwani, Bookoff McAndrews PLLC
    • Julie Han, Samsung Electronics, IP Office
    • Sandip Patel, Marshall, Gerstein and Borun, LP
  • This panel will discuss whether the PTAB should view its role as truth-finding or assessing whether burdens have been met. We will also discuss the PTAB’s guidance on follow-on petitions and possible liberalization of the interpretation of the institution standard. Additionally, we will comment on possible solutions for claim amendments. Our discussion will also cover many nuts-and-bolts issues such as potential procedures to memorialize decisions made in calls with a panel, briefing for issues newly raised in a reply or discussed at a hearing, popularity of the word count change, redundancy, changes to POPR rules rules, E2E issues, additional discovery, filing fees and schedules, deposition rules, protective orders, and mandatory discovery.

General Session 3
Networking Lunch & PTAB Bar Association First Annual Business Meeting

  • Salon I & II
Concurrent Session 1A – View from the Tech Industry

  • Salon III
  • Moderator: Renny Hwang, Google Inc.
  • Speakers:
    • Tom Scott, Personalized Media Communications, LLC
    • Jay Knobloch, Trading Technologies International, Inc.
    • Mark Taylor, Microsoft Corporation
  • The tech industry has been the primary focus of IPRs, PGRs, and CBMs since the beginning. In-house counsel have faced unique challenges, from educating internal stakeholders about this new patent challenge forum to updating global litigation strategy to account for PTAB trials. This panel of experienced in-house attorneys from leading high tech companies will share insights and strategies for managing PTAB trials, including topics such as impact of PTAB proceedings to the in-house industry practice, strategic considerations for both petitioners and patent owners from the in-house perspective, key issues for in-house counsel with respect to PTAB proceedings and counsel selection.
Concurrent Session 1B – View from the Life Sciences Industry

  • Plaza Ballroom
  • Moderator: Hans Sauer, Biotechnology Innovation Organization (BIO)
  • Speakers:
    • Charles Sholtz, Coherus Biosciences
    • Aryn Wadadli, Medtronic
    • Phil Makrogiannis, Thermo Fisher Scientific
  • Biomedical products, such as drugs, biologics, medical devices and diagnostic/laboratory products constitute only about 20% of all petitions for PTAB trials. Yet, such petitions often involve high stakes for the involved parties. Patent owners typically made large investments in the patented technology, and commercially very valuable products may be protected by only a small number of patents. The value per patent tends to be high, and the filing of IPRs can be a material event for the patentee. Petitioners, on the other hand, often view PTAB proceedings as a valuable tool to resolve significant freedom-to operate problems, as a path to bring alternative therapeutic products to market, or to gain leverage in commercial negotiations. Against this high-stakes backdrop, experienced counsel from the medical device and drug industries will offer their experience and observations with PTAB trials. After a brief overview of trends, themes, and numbers for filing and disposition of petitions in the life sciences industries, panelists will explore developments and considerations that are particularly relevant to these industry sectors, such as: post-institution joinder practice; joint defense groups and their impact on real-party-in-interest, time bars and estoppel; interplay of PTAB proceedings with statutory litigation pathways under the Hatch-Waxman and BPCI Acts; the phenomenon of hedge fund and other atypical petitioners; the PTAB as a forum for re-adjudication of district court disputes; the uncertain scope of IPR estoppel under 35 USC 315 (e); prospects for claim amendments as a way to resolve disputes at the lowest cost; considerations for settlement of IPRs in the life sciences; and observations on the usefulness of PGRs. Throughout, panelists will offer their perspectives on running post-grant proceedings efficiently within budget constraints, and on the activities they found to be most impactful and cost-effective at different stages of the proceeding.

Concurrent Session 1B – Life Science Panel
Concurrent Session 2A – PTAB Trends and Hot Topics

  • Salon III
  • Moderator: W. Karl Renner, Fish & Richardson P.C.
  • Speakers:
    • Steven Chiang, RPX Corporation
    • Philip Johnson, Johnson & Johnson
    • Srikala Atluri, Hewlett Packard Enterprise
  • This panel will focus on trends that have potential to significantly alter existing PTAB practices, both with respect to practice and jurisprudence. For instance, the panel will address trends in PTAB utilization and outcome, as well as trends relating to appeals (e.g., volume, remand vs. reversal and outcomes). The panel will also touch upon trends in CBM eligibility as exemplified by the Unwired Planet decision. As for hot topics, the panel will address implications of the Shaw and HP cases on estoppel will be discussed, as exemplified by recent District Court rulings (e.g., Judge Robinson’s Order in Intellectual Ventures v. Toshiba), and it will address heightened pleadings requirements relating to evidence and arguments newly introduced after institution. In particular, the panel will discuss the Dell v Acceleron, NuVassive, and Magnum Oil Tools decisions. The discussion of these cases will also include a discussion of the burden required to preserve issues for appeal relative to waiver and a consideration of the various ways in which parties attempted to combat the introduction of late evidence and arguments.
Concurrent Session 2B – The Other 66%: Appeals Before the PTAB from ex parte examination, reexaminations, and interferences

  • Plaza Ballroom
  • Moderator: Marc Richards, Brinks Gilson & Lione
  • Speakers:
    • Lead Administrative Patent Judge Ken Barrett, USPTO
    • Lead Administrative Patent Judge Mike Kim, USPTO
    • Lissi Mojica, Brooks Kushman P.C.
    • Deb Sterling, Sterne, Kessler, Goldstein & Fox
  • With the docket of AIA trials nearing steady state, the PTAB is focusing on the backlog of ex-parte appeals that make up 66 percent of the workload at the PTAB. The USPTO’s last report shows a backlog of more than 15,000 applications on appeal, with an average pendency for some technology centers of more than 30 months. This panel of PTAB APJ’s and experienced practitioners will provide an overview of PTAB appeals for ex-parte examination, reexamination appeals and interferences. The panel will provide practitioners with tips on how to get your appeals through the PTAB more efficiently and effectively. Most importantly, the panel will guide the attendees through the do’s and don’ts on appeal, and offer advice on what your appeal needs in order to prevail, what issues are causing the delays in ex-parte appeals, how to overcome those issues, and how to make effective use of the limited time of the oral hearing. Further, the panel will address the current state of precedential decisions, which affect all appeals, and analyze where the gaps are on precedential decisions for PTAB appeals. The panel will also discuss the effect of recent Federal Circuit Decisions on 35 U.S.C. §§ 101 and 103, and how those decisions will affect the current appeals at the PTAB.

Concurrent Session 2B – Ex Parte Appeals
General Session 4 – Two-Part Harmony: Coordinating PTAB Proceedings with Litigation in the District Courts and ITC

  • Salon I & II
  • Moderator: Naveen Modi, Paul Hastings LLP
  • Speakers:
    • Lead Administrative Patent Judge Tom Giannetti, USPTO
    • Chief Administrative Law Judge Charles E. Bullock, International Trade Commission
    • Administrative Law Judge Theodore R. Essex, International Trade Commission
    • Magistrate Judge Christopher J. Burke, U.S. District Court for the District of Delaware
  • This session will focus on the interplay between the PTAB, the district courts, and the ITC. The panel will discuss how claim construction by the PTAB may impact district court and ITC proceedings and vice versa. The panel will also discuss how validity and infringement findings by one forum may impact the other. Finally, the panel will discuss stays of district court and ITC proceedings and practical and statutory estoppel in light of what is happening at the PTAB.
Networking Break

  • Salon Foyer
General Session 5 – Complex Issues in PTAB Practice

  • Salon I & II
  • Moderator: Monica Grewal, Wilmer Cutler Pickering Hale and Dorr LLP
  • Speakers:
    • Lead Administrative Patent Judge Susan Mitchell, USPTO
    • Willy Chang, Taiwan Semiconductor Manufacturing Co. Ltd.
    • Dave McCombs, Haynes and Boone LLP
    • Matt Shanley, Exxon Mobil
  • This session will focus on complex issues in PTAB practice, such as motions to amend, joinder and consolidation, and requests for rehearing. The panelists will discuss recent case law developments at the PTAB and Federal Circuit and updates to the PTAB rules of practice. The panelists – drawn from PTAB judges, industry lawyers, and experienced practitioners – will share their insights and perspectives.
    Motions to amend: Many practitioners viewed motions to amend as unlikely to be granted following the PTAB’s 2013 Idle Free Systems (IPR2012-00027) decision. In 2015, the PTAB attempted to clarify the requirements for motions to amend in MasterImage (IPR2015-00040). The Federal Circuit has since vacated a denial of a motion to amend in Veritas Technologies (No. 2015-1894) and granted en banc review in In re Aqua Products, Inc. (No. 2015-1177). What do these developments mean for practitioners and what should practitioners consider when deciding whether to file a motion to amend?
    Joinder and consolidation: What are the requirements for requesting joinder or consolidation of PTAB proceedings? Under what circumstances should parties consider requesting joinder or consolidation? What considerations would the panel likely weigh in deciding whether to grant such a motion?
    Requests for rehearing: When should parties consider requesting rehearing and what are the requirements? How do requests for rehearing compare with other options for challenging adverse decisions, such as appealing the decision to the Federal Circuit?
    The panelists will discuss these issues and share their thoughts on strategic considerations for practitioners.

General Session 5
General Session 6 – PTAB Reform: Legislative? Administrative? Other?

  • Salon I & II
  • Moderator: Q. Todd Dickinson, Polisinelli PC
  • Speakers: Judge Paul Michel
Networking Reception: Celebrate the PTAB Bar Association’s Debut!

  • Salon III
Friday, March 3

  • Salon Foyer
General Session 7 – View from the Federal Circuit

  • Salon III
  • Moderator: John Whealan, Associate Dean for Intellectual Property Law Studies, George Washington University Law School
  • Speakers:
    • Circuit Judge Kara Stoll, U.S. Court of Appeals for the Federal Circuit
    • Circuit, Judge Kimberly Moore, U.S. Court of Appeals for the Federal Circuit
  • In 2016 over 640 PTAB decisions were appealed to the Federal Circuit. This exceeded the number of district court patent decisions that were appealed during the same year. Judges from the Federal Circuit will share their views on these PTAB appeals. Topics that may be discussed include: the growing number of PTAB appeals; how to handle multiple, related PTAB appeals; tips for improving briefing and arguing such appeals; comparisons between PTAB appeals and district court patent appeals; the APA and the standard of review for such appeals; the possibility of amicus briefing for issues of first impression in PTAB appeals; and other related topics.

General Session 7
General Session 8 – The Next Step: Appeal to and Remand from the Federal Circuit

  • Salon III
  • Moderator: Kevin Noonan, McDonnell Boehnen Hulbert Berghoff LLP
  • Speakers:
    • Deputy Chief Administrative Patent Judge Scott Boalick
    • Nate Kelley, Solicitor, USPTO
    • Dave Cochran, Jones Day
  • Some but not all PTAB decisions in post-grant review proceedings can be appealed. For example, the decision to initiate is not reviewable under Supreme Court precedent (Cuozzo Speed Tech v Lee) absent extraordinary circumstances (lack of due process, arbitrary or capricious agency action), but Final Written Decisions usually can be. A patentee having had claims deemed unpatentable can always appeal, because such a patentee has standing due to loss of a property right and under general administrative law principles of the right to appeal an agency decision. Petitioners, on the other hand, must show the conventional grounds for standing (injury-in-fact, causality, and redress). This means that some classes of petitioners (for example, public interest groups) will be precluded from appealing decisions favorable to patentees. The panel will discuss the legal and practical issues involved in appeals to the Federal Circuit from PTAB decisions and how the Board is handling remands from the Federal Circuit.

General Session 8
Networking Break

  • Salon Foyer
General Session 9 – Mind your Manners! or, Ethics and Inequitable Conduct Before the PTAB

  • Salon III
  • Moderator: Julie Holloway, Latham & Watkins LLP
  • Speakers:
    • Michael McCabe, Funk & Bolton, P.A.
    • Scott A. McKeown, Oblon, McClelland, Maier & Neustadt LLP
    • Will Covey, Director, Office of Enrollment and Discipline, USPTO
  • AIA trial proceedings present heightened risks for practitioners unaccustomed to participating in a live, patent prosecution history. Unlike traditional court-based trial proceedings, the PTAB layers on additional ethical requirements and duties of candor for practitioners. Counsel for patent owners that successfully navigate an AIA trial proceeding are particularly vulnerable in this regard. Winning at the PTAB may result in such practitioners being thrust into an inequitable conduct phase of a later district court suit. This panel will provide an overview of the ethical obligations of parties and counsel, including the duties of candor and good faith, as well as the PTAB’s still-evolving disclosure obligations. The panel will also examine recent developments, including the new Rule 11-type certification, ongoing changes in the PTAB’s disclosure requirements, and recent cases assessing allegations of misconduct and considering the imposition of sanctions.