Agenda

7:45am

Registration & Breakfast

8:30am

Co-Chairs’ Opening Remarks

Michele Connors, Sr. Legal Counsel, Patents, Dell

Paul Simboli, Vice President, IP & Asst. General Counsel, Patents, Depomed, Inc.

8:45am

USPTO Spotlight Address

Mindy Bickel, Associate Commissioner for Innovation Development, U.S. Patent & Trademark Office

Established in 2012 as a first-of-its-kind campus collaboration program, NYC Innovation is a joint effort between the U.S. Department of Commerce (DOC) and Cornell University to provide USPTO and DOC resources directly to industry with a goal of accelerating commercialization of new technologies. Led by Ms. Bickel as the NYC Engagement Manager, during this session hear how the NYC office is working with local innovators and entrepreneurs to encourage and facilitate innovation.

Time will be reserved for Q&A with Ms. Bickel at the conclusion of the session.

9:15am

One on One Conversation on PTAB Practice – Examining Key Stats and the Impact of Recent Rule Changes, Key Precedential and Informative Decisions in IPRs, PGRs and CBM Challenges Over the Past Year

Hon. Kimberly McGraw, Administrative Patent Judge, U.S. Patent & Trademark Office
Justin Oliver, Partner, Fitzpatrick, Cella, Harper & Scinto

During this session benefit from an insightful discussion that will consider:

  • Recent pertinent rule changes to procedures in proceedings before the PTAB – expert report submissions with preliminary responses
  • The top 5 precedential and informative decisions involving IPRs, PGRs and CBMs over the past year, including-
    • Concrete action points on how to best implement lessons learned from these decisions as part of your overall IP litigation strategy going forward
    • An overview of what these decisions reveal about trends in how companies and parties on all sides are effectively utilizing CBMs, IPRs and PGRs to assert, protect, challenge and shore up patents
  • Motion success rates and judicial preferences at the PTAB

10:00am

Morning Networking and Refreshment Break

10:20am

PTAB Litigation Hot Topics: Estoppel, Privy, Real Party in Interest (RPI) and Joint Defense Groups (JDG): An Analysis of the Issues

David Killough, Assistant General Counsel, Microsoft Corporation
Deanna Kwong, IP Litigation Counsel, Hewlett Packard Enterprises
Karl Renner, Principal, Fish & Richardson

As recent decisions have shown, improper identification of the RPI can result in the denial of a petition and ultimately trigger the loss of the right to file a corrected petition, thus precluding the filing of an IPR by a petitioner. Related to the RPI issue, often in PTAB proceedings several of the same parties are name in different or related actions that may challenge similar or the same patent claims. As a strategy to address issues such as privilege, cost, discovery and evidence, it may prove most fruitful to join or establish a JDG. During this session benefit from an in-depth examination of current issues surrounding RPI, estoppel and JDGs as the panel addresses such issues as:

  • The timing of the identification of RPIs
  • The potential estoppel impact and res judicata analysis that can be applied in the RPI context
  • The pros and cons of establishing or joining a JDG in a PTAB proceeding –
    • Protection of attorney-client privilege and work product
    • Alignment of parties with common interest
    • Coordination of strategies to create a unified defense strategy
    • The ability to divide and conquer on issues
    • Reduced cost implications
    • Use of experts

* To note the content of this session will be updated to address the most relevant current hot topics specific to PTAB proceedings and related litigation thereto.

11:05am

PTAB Litigation Crash Course: A Litigator’s Guide to Obtaining Successful Results at the PTAB

Michele Connors, Sr. Legal Counsel, Patents, Dell
Paul Simboli, Vice President, IP & Asst. General Counsel, Depomed, Inc.

Denis J. Sullivan, Partner, Barclay Damon LLP

Once engaged in a proceeding at the PTAB counsel must be sure to make note of the venue’s nuanced proceedings. As opposed to federal district court in which experts are permitted to provide live testimony, the procedure for utilizing experts and presenting witnesses in IPRs and other PTAB proceedings is notably different. As such and in order to ensure that key facts are brought to life and the theory of your case is best set out, it is crucial to a successful outcome that you ensure your experts and witnesses are best positioned in depositions and testimony. During this session –

  • Gain insights into the best uses of, timing for and initiation of various types of PTAB proceedings
  • Strategies for responding to single vs. multiple IPRs
  • Learn how to most effectively utilize experts, present witnesses and evidence in PTAB proceedings – scientists, investors, in-house vs. external experts
  • Understand the impact PTAB proceedings are having IP litigation ongoing in other venues and how your litigation team should plan adjust your PTAB litigation strategy based on parallel or co-pending litigation in alternate forums (i.e., Federal District Court, ITC, international venues)

12:15pm

Networking Luncheon

1:15pm

In-House Benchmarking – Strategies for Using IP as a Catalyst for Your Business

Juli Saitz, Senior Managing Director, Ankura Consulting Group, LLC
John Schiffhauer, Associate General Counsel, Intel Corporation
John Tsai, Open Source and Patent Counsel, Paypal, Inc.

Often the discussion around IP defaults to litigation commentary relating either to the assertion or defense of IP rights; but, what about the needs of the business? Is your IP portfolio strong enough to support the forward direction of the business? Hear during this session how IP counsel across industries are strategically shoring up their IP portfolio in a manner that best supports your business and drives it forward. Topics to be discussed during this session will include:

  • IP portfolio health checks – perspectives on evaluating and strengthening your IP Portfolio
    • When and how to pursue the acquisition of IP rights
    • Licensing agreements – considering the impact of Lexmark on the licensing of IP rights
  • NPEs, patent aggregators and the assertion of IP rights – what’s a good defense without offense?
    • Weighing the pros and cons of participation in a patent aggregation group
    • How your participation may or may not aid in the defense of actions brought by NPEs
    • Successful strategies for NPE defense
  • Practical tips for maximizing the financial value of your portfolio – portfolio monetization do’s and don’ts
  • Demonstrating value through patent prosecution

2:00pm

Examining the Current State of the Law on Indemnity: Perspectives from the Customer and Supplier Side on the Challenges, Hot Topics and Current Issues

Rouz Tabbador, VP and Chief IP Counsel, Core Logic
Renee Brown, Associate General Counsel, Knowles Corporation
Tom Rozylowicz, Principal, Fish & Richardson

As an in-house IP counsel you are front and center in protecting the interests of your business through the use of effective contract negotiation and drafting. Benefit during this panel from a practical analysis of the key issues surrounding indemnity, how these issues change depending on your position of negotiation and what the most important protections and clauses are that you want to address upfront.

2:45pm

Afternoon Networking Break

3:05pm

Industry Spotlight Roundtables

Benefit from this opportunity to break off into informal table discussions led by in-house counsel representing diverse industries as you explore top of mind IP topics most relevant to your industry. Learn how your peers are effectively protecting, but also actively defending and strategically asserting their IP rights.

Janelle Waack, Member, Bass Berry Sims
Paul Simboli, Vice President, IP & Asst. General Counsel, Depomed, Inc.
Deanna Kwong, IP Litigation Counsel, Hewlett Packard Enterprises
Rouz Tabbador, VP and Chief IP Counsel, Core Logic

For the Tech Industry: FRAND, Standards and Related IP Rights Issues

For the Life Sciences Industry: How the Pharmaceutical Industry Is Strategically Utilizing and Responding to the Heightened Use of PTAB Proceedings and the Impact on PIV Litigation Strategies

For the Financial Services Industry: Hot Topics for Financial Services IP Counsel: Software Patent Applications Post-Alice, FinTech Innovation, CBM Do’s and Don’ts

3:45pm

Cross-Jurisdictional IP Litigation Interplay – Pet Peeves from the Bench on Timing, Discovery, Evidence, Claim Construction and the Management of Joint Proceedings

Practice Recommendations for Counsel from the Federal District Court, PTAB and ITC Bench

Hon. Charles E. Bullock, Chief Administrative Law Judge, U.S. International Trade Commission
Hon. Thomas Giannetti, Lead Administrative Patent Judge, Patent Trial and Appeal Board, U.S. Patent & Trademark Office
Hon. Larry J. McKinney, Senior U.S. District Judge, U.S. District Court, Southern District of Indiana
Hon. John D. Love, U.S. Magistrate Judge, U.S. District Court, Eastern District of Texas

ModeratorKarl Renner, Principal, Fish & Richardson

A rare opportunity to hear directly from a diverse cross-section of the bench representing key jurisdictions learn what Judges true “pet peeves” are as you hear firsthand what the Judges’ key preferences and dislikes are. Walk away from this panel with an understanding of what type of information/behavior the Judges will tolerate and reject by parties on both sides as you gain insider perspectives on how to best position your case for success whether appearing in Federal District Court, the International Trade Commission or in front of the Patent Trial and Appeal Board. Topics to be discussed during the panel will include –

  • Divergent discovery and the admissibility of evidence in each forums as well as in co-pending counterpart proceedings
  • Timing – how to address consistency or a lack thereof in the context of parallel proceedings
  • Claim construction – comparing and contrasting with the “person of ordinary skill in the art” standard applied in Federal District Court
  • Redundancy and its downstream implication – judicial economy or estoppel?
  • The weight and precedential value of case institution and final decisions in adjudicating patent cases, including the evidentiary weight (if any) that such decisions should have at trial
  • The effect on PTAB and ITC proceedings of stays issued (or not issued) in District Court cases
  • The estoppel effects of post-grant trials and decisions

Time will be reserved for Q&A at the conclusion of the panel.

5:00pm

Co-Chairs Closing Remarks

5:00pm – 6:00pm

Networking Cocktail Reception

Interested in getting involved? Contact Christina Marmor, Director of Content and Experience, at christina@momentumevents.com or (202) 744-9832.