Day 1 - Tuesday, July 17, 2018

7:30
Main Conference Registration and Continental Breakfast
8:30
Co-Chairs’ Opening Remarks

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

Keith A. Newburry
VP, Chief Intellectual Property Counsel
Edwards Lifesciences (Irvine, CA)

8:45
Supreme Court Update: Analysis and Impact of Oil States and SAS Institute

Bradford C. Frese
Partner
Arent Fox LLP (Washington, D.C.)

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

Jonathan Stroud
Chief Intellectual Property Counsel
Unified Patents Inc. (Washington, D.C.)

Timothy K. Wilson
Director, Patents
SAS Institute Inc. (Cary, NC)

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.

10:00
Keynote Address

Honorable David Ruschke
Chief Administrative Patent Judge Patent Trial and Appeal Board
US Patent and Trademark Office (Alexandria, VA)

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.

10:45
Networking Break
11:00
Analyzing the Landscape of the Courts: A Look at the Recent Relationship between the PTAB, District Courts, and Federal Circuit Courts

Melissa Brand
Director for IP Policy
Biotechnology Innovation Organization (Washington, D.C.)

Monisha Deka
Investigative Attorney
US International Trade Commission (Washington, D.C.)

Ching-Lee Fukuda
Partner
Sidley Austin LLP (New York, NY)

Philip D. Segrest Jr.
Partner
Husch Blackwell LLP (Chicago, IL)

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

12:15
Networking Lunch
1:30
In-House Round Table Part 1: The Tech Perspective

Suzanne Michel
Senior Patent Counsel
Google LLC. (Washington, D.C.)

Kimberly Schmitt
Associate General Counsel, Intel Litigation Group
Intel Corp. (San Francisco, CA)

Hanna Steinbach
Senior Legal Counsel
Medallia (Palo Alto, CA)

Moderators:

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

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

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.

3:00
Networking Break
3:15
Off the Record: Perspective on the Current State of Affairs and Recent Rulings from Former PTAB Judges

Michael Fleming
Of Counsel
Irell & Manella LLP (Los Angeles, CA)

Scott Kamholz
Of Counsel
Covington and Burling LLP (Washington, D.C.)

Trenton Ward
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Atlanta, GA)

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.

4:30
Practice Points for Handling Nuanced and Cutting Edge Areas in PTAB Practice

James H. Hall
Partner
Blank Rome LLP (Houston, TX)

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

5:30
Conference Concludes for Day 1

Day 2 - Wednesday, July 18, 2018

7:00
Continental Breakfast
8:00
Co-Chairs’ Recap of Day 1
8:15
A View from the Bench: Judicial Insight into PTAB Litigation

Honorable Jackie Wright Bonilla
Vice Chief Administrative Patent Judge Patent Trial and Appeal Board
US Patent and Trademark Office (Alexandria, VA)

Honorable Scott Weidenfeller
Vice Chief Administrative Patent Judge Patent Trial and Appeal Board
US Patent and Trademark Office (Alexandria, VA)

Honorable William Fink
Vice Chief Administrative Patent Judge Patent Trial and Appeal Board
US Patent and Trademark Office (Alexandria, VA)

Moderator:

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

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.

9:45
Networking Break
10:00
In-House Round Table Part 2: The Life Sciences Perspective

Jeffrey J. Hohenshell
Senior Patent Attorney
Medtronic (Minneapolis, MN)

Leon Lum
Intellectual Property Counsel
Novo Nordisk Inc. (Plainsboro, NJ)

Keith A. Newburry
VP, Chief Intellectual Property Counsel
Edwards Lifesciences (Irvine, CA)

Hans Sauer
Deputy General Counsel for Intellectual Property
Biotechnology Innovation Organization (Washington, D.C.)

Paul Simboli
Vice President, Intellectual Property & Asst. General Counsel
Depomed, Inc

Moderators:

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

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

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.

11:15
Recent Rulings by the Court: Aqua, St. Regis Mohawk Tribe, and What Comes Next?

Donna Meuth
Associate General Counsel, Intellectual Property
Eisai Inc. (Andover, MA)

John Thorne
Partner
Kellogg, Hansen, Todd, Figel & Frederick, P.L.L.C. (Washington, D.C.)

Chandrika Vira
Director
Sterne, Kessler, Goldstein & Fox P.L.L.C. (Washington, D.C.)

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

12:15
Networking Lunch
1:30
Exploring Ethical Requirements When Working Through the Patent and Trademark Process

Donald H. Heckenberg, Jr.
Partner
Fitzpatrick, Cella, Harper & Scinto (Washington, D.C.)

Michael E. McCabe Jr.
Principal
McCabe Law LLC (Potomac, MD)

Honorable Teresa Rea
Partner
Crowell & Moring LLP (Washington, D.C.)

  • 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

2:30
Conference Concludes