Day 1 - Wednesday, May 10, 2017

7:00
Registration and Continental Breakfast
8:00
Co-Chairs’ Opening Remarks
8:15
Exploring Changes to the Patent System under the New Administration and their Probable Impact on PTO Proceedings
9:15
A Deep Dive Analysis into Amending Claims in IPRs post-Aqua Products
10:15
Morning Coffee Break
10:30
Keeping Up-to-Speed with Cuozzo, its “Properly Reviewable Shenanigans,” and Related Jurisprudence
11:45
Keynote Address
12:30
Networking Lunch
1:45
Construing the Covered Business Method Classification
2:45
PTAB Roundtable – The Judges Speak
4:00
Afternoon Coffee Break
4:15
Analyzing Recent Trends and Decisions from the PTAB
5:30
Conference Adjourns to Day 2

Day 2 - Thursday, May 11, 2017

7:45
Continental Breakfast
8:45
Co-Chairs’ Opening Remarks and Recap of Day One
9:00
Mastering the “Ins and Outs” of Selecting and Authenticating the Best Prior Art References
10:00
Parsing the PGR Process
11:00
Morning Coffee Break
11:15
Who’s the Boss? Interplay between Identification of Real Parties in Interest (“RPIs”), Privy, and Estoppel
12:30
Main Conference Adjourns

Post-Conference Workshop

POST- CONFERENCE WORKSHOP – Parallel Proceedings: The Good, The Bad, and The Ugly

May 11, 2017 1:45pm – 4:45pm

Speakers

Scott P. McBride
Shareholder
McAndrews, Held & Malloy, Ltd. (Chicago, IL)

Scott A. McKeown
Partner
Oblon, McClelland, Maier & Neustadt, L.L.P (Alexandria, VA)

Richard Torczon
Of Counsel
Wilson, Sonsini, Goodrich & Rosati (Washington, DC)

Day 1 - Wednesday, May 10, 2017

7:00
Registration and Continental Breakfast
8:00
Co-Chairs’ Opening Remarks

J. Steven Baughman
Partner
Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

Kenneth Korea
Senior Vice President, Silicon Valley IP
Samsung Electronics (Menlo Park, CA)

8:15
Exploring Changes to the Patent System under the New Administration and their Probable Impact on PTO Proceedings

Honorable Teresa Rea
Partner
Crowell & Moring LLP (Washington, DC) (Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office)

Kimberly Schmitt
Managing Counsel Intel Litigation Group
Intel Corporation (Santa Clara, CA)

Laura Sheridan
Senior Patent Counsel
Google Inc. (New York, NY)

Four months into the new Presidency, this session will discuss the changes in place and potential changes to come as a result of the current administration. Our speakers will explore the policy focus, appointment of the new PTO Director, patent quality, and pending legislation, including status of the § 101 patentability standard and existing Supreme Court case law.

9:15
A Deep Dive Analysis into Amending Claims in IPRs post-Aqua Products

Jason M. Dorsky
Patent Attorney
Fitzpatrick, Cella, Harper & Scinto (Washington, D.C.)

Jason Murata
Counsel
Axinn, Veltrop & Harkrider LLP (Hartford, CT)

  • Reviewing the status of the en banc case
  • Evaluating the burdens of proof applicable to motions to amend patent claims during an IPR proceeding
  • Analyzing the denial percentage for motions to amend
  • Determining the pros and cons of making a motion to amend claims during an IPR
  • Predicting the outcome and its impact on future motions to amend

10:15
Morning Coffee Break
10:30
Keeping Up-to-Speed with Cuozzo, its “Properly Reviewable Shenanigans,” and Related Jurisprudence

Kevin Laurence
Partner
Laurence & Phillips IP Law LLP (Alexandria, VA)

Stacie Ropka
Partner
Axinn Veltrop Harkrider LLP (Hartford, CT)

J. Steven Baughman
Partner
Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

  • Claim drafting in light of the PTAB’s broadest reasonable interpretation (BRI) standard
    • Strategically balancing the use of the BRI standard with the Phillips standard
  • Analyzing the bar against judicial review of the PTAB’s institution decisions
    • Determining when extra-statutory “shenanigans” permit appeal
  • Exploring the pending en banc review of Wifi One v. Broadcom and related cases:
    • Evaluating whether the Federal Circuit should “overrule Achates .. . and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.”
    • Examining the effects for Click-to-Call Technologies, LP v. Oracle Corp.: whether a party can challenge an IPR institution decision under 315(b)
  • Reviewing Phigenix, Inc. v. ImmunoGen, Inc., and injury-in-fact standing to challenge a final agency decision in an IPR

11:45
Keynote Address

Honorable David Ruschke
Chief Judge
Patent Trial and Appeal Board US Patent and Trademark Office

We are honored that Honorable David Ruschke, Chief Judge of the PTAB will present the keynote address and provide us with an update on the latest developments at the PTAB.

12:30
Networking Lunch
1:45
Construing the Covered Business Method Classification

Scott E. Kamholz M.D., Ph.D.
Of Counsel
Covington & Burling LLP (Washington, D.C.)
(Administrative Patent Judge, 2012-2015)

Kelly G. Hyndman
Partner
Sughrue Mion, PLLC (Washington, D.C.)

  • Evaluating the qualification requirements for a covered business method
  • Satisfying the standard “used in the practice, administration, or management of a financial product or service”
    • Understanding Unwired Planet v. Google and why “financial in nature, incidental to a financial activity, or complementary to a financial activity” does not meet the threshold
  • Determining where to draw the line: evaluating recent petition decisions

2:45
PTAB Roundtable – The Judges Speak

Judges:

Honorable Thomas Giannetti
Lead Administrative Patent Judge
Patent Trial and Appeal Board US Patent and Trademark Office

Honorable Brian P. Murphy
Lead Administrative Patent Judge
Patent Trial and Appeal Board US Patent and Trademark Office

Honorable Donna Praiss
Administrative Patent Judge at Patent Trial and Appeal Board
US Patent and Trademark Office

Moderator:

J. Steven Baughman
Partner
Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

This panel offers a unique opportunity to hear inside perspectives from PTAB Judges on best practices for successful post-grant proceedings as well as practice pitfalls to avoid. The panel will also discuss the interplay between the PTAB, district courts, and the Federal Circuit.

4:00
Afternoon Coffee Break
4:15
Analyzing Recent Trends and Decisions from the PTAB

Jonathan Stroud
Chief Patent Counsel
Unified Patents Inc. (Washington, DC)

Edward D. Manzo
Partner
Husch Blackwell LLP (Chicago, IL)

Megan F. Raymond
Counsel
Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

Jim Howard
Vice President and Associate General Counsel The Clearing House Payments Company L.L.C. (Winston-Salem, NC)
Associate General Counsel Askeladden L.L.C

  • Examining petition institution and denial across art units for 2016 as compared to 2015 and earlier
    • Exploring the PTAB’s reasoning for issuing denials
  • Analyzing recent PTAB decisions and evaluating their impact
    • Frequency of invalidity rulings across industries
    • Tech
    • Financial Services
    • Pharmaceutical/Life Sciences
  • Comparing invalidation trends for IPR vs. CBM vs. PGR
  • Reviewing appeal rate and rate of remands

5:30
Conference Adjourns to Day 2

Day 2 - Thursday, May 11, 2017

7:45
Continental Breakfast
8:45
Co-Chairs’ Opening Remarks and Recap of Day One
9:00
Mastering the “Ins and Outs” of Selecting and Authenticating the Best Prior Art References

David O’Brien
Partner
Haynes and Boone LLP (Austin, TX)

Gina Shishima Ph.D.
Head of Intellectual Property, United States
Norton Rose Fulbright US LLP (Austin, TX)

  • Satisfying the PTAB’s “threshold showing” for public accessibility of a non-patent printed publication
    • Beyond copyright dates: presenting corroborative evidence
  • Best practices to satisfy as well as defend against the public accessibility standard

10:00
Parsing the PGR Process

Arlene Chow
Partner
Hogan Lovells US LLP (New York, NY)

Aaron Schwartz
Senior Counsel - Intellectual Property
Eisai Inc. (Andover, MA)

In 2016, 30 PGR petitions were filed, as compared to 12 in 2015. This panel will discuss the evolution of these proceedings, and best strategies to overcome PGR’s heavier “more likely than not” burden, the 9-month deadline, estoppel challenges. The panel will also include an analysis of the pros and cons of a PGR filing vs. an IPR filing.

11:00
Morning Coffee Break
11:15
Who’s the Boss? Interplay between Identification of Real Parties in Interest (“RPIs”), Privy, and Estoppel

Todd Cason
Senior Counsel – IPR & Licensing
Ericsson (Plano, TX)

Justin J. Oliver
Partner
Fitzpatrick, Cella, Harper & Scinto (Washington, D.C.)

David E. Killough
Assistant General Counsel
Microsoft Corporation (Redmond, WA)

Jeff B. Vockrodt
Partner
Arent Fox LLP (Washington, D.C.)

  • Determining whether a potential RPI/privy has “control” of the PTAB proceeding
  • Avoiding denial and estoppel by naming all RPIs in the initial filing
  • Weighing pros and cons of a joint defense group
  • Diving into scope of IPR estoppel

12:30
Main Conference Adjourns

* Luncheon will be Served for Workshop Participants Only

POST- CONFERENCE WORKSHOP – Parallel Proceedings: The Good, The Bad, and The Ugly

May 11, 2017 1:45pm – 4:45pm

Scott P. McBride
Shareholder
McAndrews, Held & Malloy, Ltd. (Chicago, IL)

Scott A. McKeown
Partner
Oblon, McClelland, Maier & Neustadt, L.L.P (Alexandria, VA)

Richard Torczon
Of Counsel
Wilson, Sonsini, Goodrich & Rosati (Washington, DC)

What is it about?

(1:45pm-4:45pm | Registration opens at 1:30pm)   This hands-on, interactive workshop will cover the nuts and bolts of each phase of a parallel proceeding. From timing, to stays, to managing the burdens of proof, to presenting evidence, our panel will provide you with best practices and strategies to successfully challenge or defend a patent. Topics to be addressed include:
  • Addressing the challenges of claim construction with two competing standards
  • Evaluating the pros and cons of holding back potentially invalidating prior art references
  • Overcoming the uphill battle of heading to district court with a denial or invalidity decision from the PTAB
  • Implementation of the 2016 Rules Package
  4:45 Workshop Adjourns