Agenda
Panels, times and speakers subject to change. Initial descriptions written by IPWatchdog. Descriptions will be updated by the panel to more specifically reflect the conversation that will be had by panelists.
Tuesday, Jan 31, 2023
8:00 AM ET
8:30 AM ET
Welcome to PTAB 2023
Welcome to the IPWatchdog Masters Series PTAB 2023.
James Carmichael
Scott McKeown
Gene Quinn
Welcome to the IPWatchdog Masters Series PTAB 2023.
,9:00 AM ET
The PTAB Today: A Review of the PTAB Landscape
The Iancu Administration has given way to the Vidal Administration, but what— if anything— has changed relative to the Patent Trial and Appeal Board (PTAB)? This expanded 75-minute panel will take a look at the biggest issues and cases from 2022, including Director Vidal’s handling of the OpenSky matter, and discuss the evolution of discretionary denials. The panel will also…
Hon. Scott R. Boalick
Hon. Paul R. Michel
David McCombs
Todd Walters
The Iancu Administration has given way to the Vidal Administration, but what— if anything— has changed relative to the Patent Trial and Appeal Board (PTAB)? This expanded 75-minute panel will take a look at the biggest issues and cases from 2022, including Director Vidal’s handling of the OpenSky matter, and discuss the evolution of discretionary denials. The panel will also…
,10:15 AM ET
10:30 AM ET
Reforming the PTAB: What Can and Should be Done? (90 min)
The drafters of the AIA intended the PTAB to be a cheaper and faster alternative to district court litigation. They thought that in providing that alternative, the PTAB would encourage innovation, create jobs, and generally modernize the U.S. patent system. While there are a variety of viewpoints on the PTAB, including whether it should continue to exist, it is difficult…
Philip S. Johnson
Hon. David Kappos
Kayvan Noroozi
Brad Watts
Candice Wright
The drafters of the AIA intended the PTAB to be a cheaper and faster alternative to district court litigation. They thought that in providing that alternative, the PTAB would encourage innovation, create jobs, and generally modernize the U.S. patent system. While there are a variety of viewpoints on the PTAB, including whether it should continue to exist, it is difficult…
,12:00 PM ET
1:00 PM ET
Evaluating the PTAB Threat to Formulate Patent Assertion and Funding Strategies
Over the last several years we have seen the return of large patent infringement verdicts, and verdicts that have also enhanced damages for willful infringement. These cases have not yet made their way to a final resolution at the Federal Circuit, but in at least one high-profile matter the patents that were the subject of a $2 billion verdict are…
James Carmichael
Brad Close
Christopher Freeman
Joel Merkin
Sarah Tsou
Over the last several years we have seen the return of large patent infringement verdicts, and verdicts that have also enhanced damages for willful infringement. These cases have not yet made their way to a final resolution at the Federal Circuit, but in at least one high-profile matter the patents that were the subject of a $2 billion verdict are…
,2:15 PM ET
Tactics & Strategies: Crafting the IPR Petition
One of the first tasks for counsel for the petitioner is to consider the grounds for invalidity, the number of references, and which references to use. For example, would you ever consider including a reference disclosed in an IDS? How many grounds for invalidity is too many grounds? How many references is too many? How does estoppel factor into selection…
Erin Dunston
Tim Fink
Lori Gordon
Scott McKeown
One of the first tasks for counsel for the petitioner is to consider the grounds for invalidity, the number of references, and which references to use. For example, would you ever consider including a reference disclosed in an IDS? How many grounds for invalidity is too many grounds? How many references is too many? How does estoppel factor into selection…
,3:45 PM ET
Your Patent Has Been Challenged in an IPR, What Now?
Although sometimes it is obvious because there is a district court patent infringement litigation ongoing, or clinical trials underway, sometimes the first question for the patent owner is simply— why was the inter partes review (IPR) filed by the challenger and is it worthwhile for the patent owner’s representative to reach out to institute an initial dialogue with the challenger’s…
Meredith Addy
Cook Alciati
Sarah Spires
Richard Torczon
Although sometimes it is obvious because there is a district court patent infringement litigation ongoing, or clinical trials underway, sometimes the first question for the patent owner is simply— why was the inter partes review (IPR) filed by the challenger and is it worthwhile for the patent owner’s representative to reach out to institute an initial dialogue with the challenger’s…
,5:00 PM ET
Winning at the Federal Circuit
It is not easy to win on appeal at the Federal Circuit, and even more difficult to win on appeal when that appeal emanates from the Patent Trial and Appeal Board (PTAB). Only when the PTAB decision is unsupported by substantial evidence will the decision be reversed. And in more than 50% of PTAB decisions receive a Rule 36 summary…
Rachel Elsby, Ph.D.
Scott McKeown
Andrew (Drew) Sommer
Philip Warrick
It is not easy to win on appeal at the Federal Circuit, and even more difficult to win on appeal when that appeal emanates from the Patent Trial and Appeal Board (PTAB). Only when the PTAB decision is unsupported by substantial evidence will the decision be reversed. And in more than 50% of PTAB decisions receive a Rule 36 summary…
,6:00 PM ET
Reception
Beer, wine and cocktails with heavy hors’ d’oeuvres.
Beer, wine and cocktails with heavy hors’ d’oeuvres.
,Wednesday, Feb 1, 2023
8:30 AM ET
Welcome Day 2
James Carmichael
Scott McKeown
Gene Quinn
9:00 AM ET
A Stakeholders Perspective: Surviving in a PTAB World
After multiple reexamination validations, multiple PTAB approvals, and affirmation by the Federal Circuit, a patent owner might be excused for believing they had finally obtained a quiet title. Unfortunately, such an assumption would be incorrect. Rather than take a license, many Big Tech companies exploit the AIA’s IPR process in order to hold-out and use patented technology for free with…
Philip S. Johnson
Sal Karottki
Jonathan Rogers
After multiple reexamination validations, multiple PTAB approvals, and affirmation by the Federal Circuit, a patent owner might be excused for believing they had finally obtained a quiet title. Unfortunately, such an assumption would be incorrect. Rather than take a license, many Big Tech companies exploit the AIA’s IPR process in order to hold-out and use patented technology for free with…
,10:00 AM ET
10:30 AM ET
The Secrets to PTAB Success: Advanced IPR Strategies
This panel will address two specific advanced strategies, the first dealing with correction of patent claims and the second dealing with the use of experts. Changing claims using any mechanism is something many patent owners do not want to do because of the loss of damages, however in some instances where the patent is useful to preserve market share the…
Kevin Greenleaf
Kevin Laurence
Stephanie Schonewald
Michael Shinall
This panel will address two specific advanced strategies, the first dealing with correction of patent claims and the second dealing with the use of experts. Changing claims using any mechanism is something many patent owners do not want to do because of the loss of damages, however in some instances where the patent is useful to preserve market share the…
,11:45 AM ET
A PTAB Judges Perspective: The Good, the Bad and the Ugly
This expanded 75-minute panel, moderated by former APJ James Carmichael, will offer the perspectives of Administrative Patent Judges (APJs) from the Patent Trial and Appeal Board (PTAB). While patent attorneys may think everything they are doing is a best practice and highly persuasive, the real question is whether the Judges of the PTAB agree. What do the Judges find to…
Hon. Jacqueline Wright Bonilla
James Carmichael
Hon. Kevin Cherry
Hon. Murriel E. Crawford
Hon. Grace Karaffa Obermann
This expanded 75-minute panel, moderated by former APJ James Carmichael, will offer the perspectives of Administrative Patent Judges (APJs) from the Patent Trial and Appeal Board (PTAB). While patent attorneys may think everything they are doing is a best practice and highly persuasive, the real question is whether the Judges of the PTAB agree. What do the Judges find to…
,1:00 PM ET
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