InternationalUSRemember you can easily switch between MIP US and MIP International at any time

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


Sponsors




Brooks Kushman

Finnegan


SUPPORTING ORGANISATION




More from the Managing IP blog


null null null

null null null


November / December 2019

IP law: are the pressures taking their toll?

Following World Mental Health Day, Max Walters seeks the views of in-house professionals on whether they struggle with workplace pressures, and asks how to improve wellbeing



Most read articles

Supplements