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MIP PTAB Forum 2018

May 3, Convene 810 Seventh, New York
May 8, Sheraton, Palo Alto

Agenda - Palo Alto

Download the Palo Alto brochure here

09:00 Registration

09:30 Opening remarks by Michael Loney, managing editor, Managing IP

09:40 State of play and progression at the Patent Trial and Appeal Board

  • Lessons learned from five plus years
  • Overview of institutional changes of AIA
  • Exploring the success in driving settlements
  • Asymmetry between patent owner, challenger and petitioner: the call for consistency

Josh Goldberg, partner, Finnegan Henderson Farabow Garrett & Dunner
Kevin Turner,
lead administrative patent judge, Patent Trial and Appeal Board

10:10 Strategies for litigating in the changing environment of PTAB

  • Navigating recent developments – Wi-Fi One v Broadcom
  • Patent litigation trends to watch
  • Maintaining a flexible patent portfolio strategy
  • Strategies for coordinating parallel litigation and IPRs

Jim Davis, partner, Ropes & Gray
Angela Johnson, litigation counsel, Uber
Scott McKeown,
partner, Ropes & Gray

11:00 Coffee break and networking

11:20 Changing PTAB law and practice, and the (continued) importance of the petition

  • Pitfalls to avoid when preparing for your petition
  • Tips to attack petitions to prevent institution
  • Establishing “good cause” for reply to patent owner’s response
  • Examining the key components of proceedings

Brian McCormack, partner, Baker McKenzie
Brad Waugh
, associate general counsel, Intel Litigation Group
Mackenzie Martin, partner, Baker McKenzie

12:10 Latest Federal Circuit developments

  • Tracking the explosive growth of appeals
  • Hear how to achieve success and deal with multiple appeals
  • Practically addressing burden on motions – what is the scope of the Board’s power?

Charlene Morrow, partner, Fenwick & West
Sriranga Veeraraghaven, senior director, legal, Xperi Corporation
Darren Donnelly, partner, Fenwick & West

13:00 Lunch and networking

13:50 Evolving procedural challenges associated with AIA

  • Updates from PTAB rules of practice
  • Supreme Court’s question of constitutionality: Oil states
  • Motions to amend in PTAB proceedings – Aqua products
  • Adapting to the rule changes and managing your strategy for next six to 12 months

Isaac Slutsky, shareholder, Brooks Kushman (moderator)
Kim Schmitt, managing counsel, litigation group, Intel
Matt Clements
, lead administrative patent judge, Patent Trial and Appeal Board
John Bake
, vice president, IP strategy, Tivo

14:40 PTAB by the numbers; data, trends & analysis

  • Comparative analysis: when to choose IPR versus PGR versus CBM
  • Success rates at PTAB: assessing the growing demand & what is working well
  • Review of statistics on IPRS both PTAB & Federal Circuit
  • EPO appeal versus PTAB

Jon Wright, director, Sterne Kessler Goldstein & Fox (moderator)
Brian Love, assistant professor of law and co-director high tech law institute, Santa Clara University
Charles Boudreau, administrative patent judge, Patent Trial and Appeal Board
Joe Mutschelknaus
, director, Sterne Kessler Goldstein & Fox

15:30 Coffee break and networking

15:50 Interplay between PTAB, District Court litigation and ITC

  • To what extend does claim construction at PTAB impact district court & ITC proceedings?
  • Uncertainty and challenges surrounding validity and infringement
  • Effective obviousness rationales at the District Court and PTAB
  • Will there be more ITC actions?

Scott Stevens, partner, Alston & Bird (moderator) 
Gemma Suh, senior litigation counsel, Nokia
Abraham Merterns, assistant general counsel, Arista Networks
Chris Douglas
, partner, Alston & Bird

16:40 Concerns and opportunities for the Patent Trial and Appeal Board

  • Analysis of precedential and informative decisions designated by PTAB
  • Overcoming complex issues; decoding recent decisions
  • Top cases to watch
  • What does the future hold for the PTAB?

Lori Gordon, partner, King & Spalding
Joel Harris
, senior director, intellectual property, Incube Labs

17:20 Close of conference


Brooks Kushman



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