American Conference Institute’s 5th Advanced Summit on

Medical Device Patents

Comprehensive and Practical Patent Prosecution and Litigation Strategies for an Evolving IP Landscape

Wednesday, March 04 to Thursday, March 05, 2015
InterContinental Chicago, Chicago, IL

Day 1: Wednesday, Mar 04, 2015

Co-Chairs Opening Remarks
  • Jeffrey Hohenshell
    Senior Patent Attorney
    Medtronic‚ Inc.
  • Shannon Mrksich, Ph.D.
    Senior IP Counsel
    Danaher Corporation
PTO Keynote Address
  • Janet Gongola
    Patent Reform Coordinator
    United States Patent and Trademark Office (USPTO)

In this exclusive address, Ms. Gongola will discuss the impact of the AIA upon the prosecution of medical device patents, as well as illuminating priorities for patent examiners when reviewing applications.

Prosecutor and Litigator Roundtable — Adapting to the New Landscape of Patentable Subject Matter, Indefiniteness, and Willfulness
  • Matthew K. Blackburn
    Locke Lord LLP
  • Jeffrey Hohenshell
    Senior Patent Attorney
    Medtronic‚ Inc.
  • Thomas J. Kowalski
    Vedder Price
  • Michael A. Siem
    Farney Daniels P.C.

The Supreme Court and Federal Circuit have had much to say of late on the basics of patent issuance. The PTO — examiners and administrative judges alike — and district courts then need to incorporate these standards into their review of existing patents, or those challenged in IPRs or litigation. In this session, experienced medical device patent prosecutors and litigators will draw on examples from cases before the PTO or district courts to explore the effects the major cases identified below have had on (a) evaluating patent portfolios, (b) drafting future claims, and (c) adjusting litigation tactics:

  • Mayo v. Prometheus and Assoc. for Molecular Pathology v. Myriad Genetics
  • Alice Corp. Pty. Ltd. v. CLS Bank Intern
  • Nautilus, Inc. v. Biosig Instruments, Inc.
  • Teva v. Sandoz and Octane Fitness v. Icon Health and Fitness
Afternoon Refreshment Break
An Obvious Spotlight — Exploring the Effects of KSR and Gilead
  • Jeremy C. Lowe
    Axinn, Veltrop & Harkrider LLP
  • Joshua I. Rothman
    Fitzpatrick, Cella, Harper & Scinto
  • Clark A.D. Wilson
    Senior Counsel
    Merchant & Gould, P.C.

In the wake of KSR v. Teleflex and Gilead v. Natco, what qualifies as obvious has remained murky. The panelists will seek to clarify this standard by diving into how the PTO and various district courts have applied it.

Exploring the Parallel World of IPR Proceedings
  • Matthew J. Becker
    Axinn Veltrop & Harkrider LLP
  • Erik M. Drange
    Senior Intellectual Property Counsel – Litigation Manager
  • Richard T. McCaulley, Jr.
    Ropes & Gray LLP
  • Gregory A. Morris
    Of Counsel, Litigation Department
    Paul Hastings LLP
  • Examining the impact of IPR procedures so far on the medical device space
  • Knowing when it is strategically prudent to file an IPR
  • Will District Court Proceedings be stayed in light of IPR filings?
  • Lessons learned from the first IPRs
  • Pre-IPR filing considerations
  • Analysis of key PTAB appeals before the Federal Circuit
Conference Adjourns to Day 2
Cocktail Reception Sponsored by:

Day 2: Thursday, Mar 05, 2015

Continental Breakfast
Co-Chairs Opening Remarks
  • Jeffrey Hohenshell
    Senior Patent Attorney
    Medtronic‚ Inc.
  • Shannon Mrksich, Ph.D.
    Senior IP Counsel
    Danaher Corporation
PTAB Keynote
  • Hon. James D. Smith
    Chief Administrative Patent Judge
    Patent Trial and Appeal Board
    U.S. Patent and Trademark Office

Numerous parties have availed themselves to the various new proceedings created by the AIA, particularly the IPR proceeding. Chief Judge Smith will provide commentary on lessons learned from cases decided to date, including best practices for attorneys appearing before PTAB.

Joint and Divided Infringement Post- Akamai — Adjusting Claim Drafting and Litigation Techniques
  • Sarah Cooleybeck
    Foley Hoag LLP
  • Robert A. Surrette
    McAndrews Held & Malloy Ltd.
  • Tom Wolfe
    Senior Patent Counsel
    Medtronic Spinal and Biologics

With the Supreme Court’s decision of Limelight v. Akamai, the landscape of joint or divided infringement has been changed. Lack of attention to divided infringement during claim drafting can defeat the value of patents for a device company. Meanwhile, existing patents may be more susceptible to attack. Drawing from recent case law, this session will identify industry areas or types of medical device patents that are prone to attack. Additionally, the panelists will discuss how to draft claims going forward to safeguard against divided infringement issues, and how to handle all aspects of litigating such a claim.

Morning Refreshment Break
Balancing the Costs and Benefits of Patent Litigation from Injunctions to Damages
  • Shawn Kolitch, Ph.D., M.S.
    Partner, Intellectual Property Attorney
    Kolisch Hartwell, P.C.
  • Bradley T. Lennie
    Hunton & Williams LLP
  • Peter A. Socarras
    Director, Intellectual Property
    Nevro Corp.
  • Lawrence M. Sung , PhD
    Wiley Rein LLP
  • Exploring ways to reduce patent litigation costs
  • When is an injunction likely?
    • The impact of eBay on medical device patent litigation
    • The circumstances in which an injunction is likely
    • Balancing the public interest with competitive injury
  • Determining patent infringement damages
    • Raising the floor — how to create a high “reasonable royalty” rate
    • Conventional and unconventional arguments for lost profits
    • Apportionment and the value added by a patented invention
  • Achieving settlement with a strong remedies case
    • Invest early in remedies analysis
    • How to present your position directly to the opposing decision maker
Networking Luncheon Sponsored by:
Views from the Benches — Insights from Multiple Judicial Venues on the Effects of Parallel Proceedings, Managing Discovery, Construing Claims, Assessing Damages, and More
  • Hon. Elaine Bucklo
    Senior Judge
    U.S. District Court for the Northern District of Illinois
  • Honorable Faith S. Hochberg
    United States District Judge (ret.)
    U.S. District Court for the District of New Jersey
  • Hon. James F. Holderman
    District Judge
    U.S. District Court for the Northern District of Illinois
  • Scott P. McBrided
    McAndrews, Held & Malloy, Ltd.
In-House Perspective — Managing Patent Prosecution and Litigation Costs and Budgets; Adapting to the Post-AIA World; Streamlining Discovery; and More
  • Erik M. Drange
    Senior Intellectual Property Counsel – Litigation Manager
  • Paul Lee
    Patent Counsel
    DexCom Inc.
  • Gael Diane Tisack
    Terumo Cardiovascular Group Vice President of Legal Affairs
    Terumo Americas Vice President of Intellectual Property
    Terumo Corporation
  • Amy Lydon
    Intellectual Property Counsel
    Covidien Group, Surgical Solutions
  • Barry E. Bretschneider
Afternoon Refreshment Break
Testing the NPE Waters — Evaluating Whether “Trolls” Are Targeting the Medical Device Space; Discussing Choice of Venue Issues
  • Mark L. Mathie
    McKool Smith, P.C.
  • Matthew A. Smith
    Turner Boyd LLP
  • Mircea Tipescu
    Brinks Gilson & Lione
  • Evaluating the “threat” of litigation by non-practicing entities or trolls
    • Are traditional “trolls” targeting or starting to target medical device companies?
    • Is litigation commonly brought by non-practicing entities?
    • If so, what segments of the industry are being targeted and what are the nature of the claims?
  • Analyzing venue considerations
    • Where are non-practicing entities and other plaintiffs filing?
    • Does the AIA preclude forum shopping?
    • Are rocket dockets being sought to avoid the possibility of IPRs?
ETHICS and Medical Devices IP: Inequitable Conduct and New PTO Ethical Rules
  • Bradford J. "Jim" Badke
    Ropes & Gray LLP
  • Trevor Copeland
    Brinks Gilson & Lione
  • USPTO spotlight: What are OED’s expectations of attorneys in this space?
  • Understanding when to raise the inequitable conduct defense under the continually evolving Therasense standard
    • Rule 36 affi rmations of inequitable conduct cases
    • Update on recent relevant inequitable conduct cases
    • Complying with the USPTO duty of disclosure: what to submit and how much?
  • Analysis of the PTO’s 2013 ethical Rules of Professional Conduct
    • Overview of key provisions including confl icts, sanctions and experts affecting life sciences practitioners
    • How do these work with the ABA model rules and state bar rules?
  • Avoiding ethical quagmires in the IPR/PGR space for life sciences companies
    • What conflicts of interest rules apply with parallel litigation: USPTO or District Court?
    • Duty of candor and good faith owed by petitioner challenging the patent
    • Avoiding putting forth information inconsistent with a position
    • Applying traditional conflicts analysis and principals when agreeing to work for a client: Are ABA comments to the model rules instructional?
Conference Concludes