4th Annual Post-Grant PTO Proceedings Practical Strategies and Insights on IPR, PGR, and CBM Review

Main Conference Registration and Continental Breakfast

Co-Chairs’ Opening Remarks

Supreme Court Update: Analysis and Impact of Oil States and SAS Institute

In this session, speakers will provide a background on the Oil States and SAS Institute cases, as well as a look into the oral arguments that took place in front of the Court, a review of the decisions of the court, and most importantly how the decisions will significantly alter future PTAB practices.

Keynote Address

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

Networking Break

Analyzing the Landscape of the Courts: A Look at the Recent Relationship between the PTAB, District Courts, and Federal Circuit Courts

With an increased focus on PTAB decisions from the Federal Circuit, as well as a rise in the number of concurrent cases in both District Court and the PTAB, this session will explore:  

• Breaking down cases being held concurrently in both the PTAB and District Court, and where the burden of proof lies for each
• Comparing the statistics of upheld decisions between District Courts and the PTAB by the Federal Circuit in recent patent and trademark cases
• Exploring the grounds on which a PTAB decision can be reversed or vacated by the Federal Circuit
• Understanding the recent spike in the usage of Rule 36
• Examining the increased usage of estoppel in District Courts

Networking Lunch

In-House Round Table Part 1: The Tech Perspective

During this session, top executives from leading technology companies will converse on the strategies they implement when working through PTAB proceedings. Topics of discussion will include strategies for filing an IPR, analyzing the costs involved, the qualifications desired when hiring outside counsel, selecting an expert witness, working with co-defendants, and settlement strategies.

Networking Break

Off the Record: Perspective on the Current State of Affairs and Recent Rulings from Former PTAB Judges

Retired PTAB Judges will lead an interactive discussion providing analysis on recent PTAB decisions, and the verdicts they would have written had they been a presiding judge. Topics of discussion will also include strategies for successfully structuring a case, and the utilization of the proper language and motions to assure a well-reasoned decision.

Practice Points for Handling Nuanced and Cutting Edge Areas in PTAB Practice

This panel will provide insight into some of the more complicated and up and coming issues, which all practicing PTAB attorneys must be aware of going forward. Topics of discussion will include:  

• Differentiating between §§ 314 & 325 and determining which section parties should argue to the board
• What constitutes a prior art “printed publication” at the PTAB?
• Effectively using secondary considerations to overcome an obviousness challenge at the PTAB
• Offensive and defensive tools for successful post-grant proceedings

Conference Concludes for Day 1

Continental Breakfast

Co-Chairs’ Recap of Day 1

A View from the Bench: Judicial Insight into PTAB Litigation

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.

Networking Break

In-House Round Table Part 2: The Life Sciences Perspective

Gain the perspectives of top executives from leading pharmaceutical and medical device companies who will discuss the strategies they implement when working through PTAB proceedings. Topics of discussion will include strategies for filing an IPR, analyzing the costs involved, the qualifications desired when hiring outside counsel, selecting an expert witness, working with co-defendants, and settlement strategies.

Recent Rulings by the Court: Aqua, St. Regis Mohawk Tribe, and What Comes Next?

The recent rulings by the court in the Aqua Products and St. Regis Mohawk Tribe cases left PTAB attorneys with only questions about what this means for their practice moving forward. This session will examine:  

• After Aqua, does the burden of proof now lie with the petitioner?
• Could future PTO rule-making changes alter the burden to show patentability of proposed substitute claims?
• The recent PTAB ruling in Mylan Pharmaceuticals, et al. v. Allergan, Inc., and its effects going forward
• Monitoring recent and pending federal legislation effecting the role of sovereign immunity on IP

Networking Lunch

Exploring Ethical Requirements When Working Through the Patent and Trademark Process

• What is the role of the oath required with all filings with the Patent and Trademark Office?
• Who is responsible for reviewing and signing the necessary documents?
• What rules are observed when investigating the patents and trademarks of competing companies?
• Examining the “do’s and don’ts” for non-legal staff members working on filing matters
• Issues related to the implacability of prosecution bars and protective orders to PTAB proceedings

Conference Concludes