January 24–27, 2022
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Agenda

Program Schedule

Monday, Jan 24, 2022

10:30 AM EST

Add to Calendar 01/24/2022 10:30 AM America/New_York PTAB 2022 – Day 1 – Opening Thoughts ,

11:00 AM EST

The PTAB Today: A Review of the PTAB Landscape and Important Rulings at Age 10

We begin by discussing PTAB evolution through 2021 and what aspects of the Iancu legacy have aided patent owners. Also, we will explore the most recent evolution in PTAB practice such as changes to settlement requirements, due process challenges that continue to fail, arbitration clauses that do not deprive the PTAB of jurisdiction, sua sponte claim construction and much more.

Robert Hart
Kayvan Noroozi
Gene Quinn
Add to Calendar 01/24/2022 11:00 AM America/New_York The PTAB Today: A Review of the PTAB Landscape and Important Rulings at Age 10

We begin by discussing PTAB evolution through 2021 and what aspects of the Iancu legacy have aided patent owners. Also, we will explore the most recent evolution in PTAB practice such as changes to settlement requirements, due process challenges that continue to fail, arbitration clauses that do not deprive the PTAB of jurisdiction, sua sponte claim construction and much more.

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1:00 PM EST

The PTAB Tomorrow: Top 5 Most Important Issues Facing the PTAB & New Director in 2022

With Director Vidal slated to lead the USPTO over the next few years, and pressure from Congress to recalibrate PTAB practice, what is expected under the new administration?  Will discretionary practices under 314(a) change? What other initiatives are expected, or desired for adapting the Board to new litigation and market realities?

Meredith Addy
David McCombs
Teresa Rea
Scott McKeown Scott McKeown
Add to Calendar 01/24/2022 1:00 PM America/New_York The PTAB Tomorrow: Top 5 Most Important Issues Facing the PTAB & New Director in 2022

With Director Vidal slated to lead the USPTO over the next few years, and pressure from Congress to recalibrate PTAB practice, what is expected under the new administration?  Will discretionary practices under 314(a) change? What other initiatives are expected, or desired for adapting the Board to new litigation and market realities?

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3:00 PM EST

The PTAB as the First Hurdle to Patent Monetization: How Patent Owners and Litigation Financers Deal with this Omnipresent Threat

How are patents being valued in the current market? What assertion strategies should Patent Owners consider going forward? Hear from the market players how licensees are being secured and negotiated in the shadow of the PTAB threat.

James Carmichael James Carmichael
Joshua Harris
Sean Thompson
Sarah Tsou
Add to Calendar 01/24/2022 3:00 PM America/New_York The PTAB as the First Hurdle to Patent Monetization: How Patent Owners and Litigation Financers Deal with this Omnipresent Threat

How are patents being valued in the current market? What assertion strategies should Patent Owners consider going forward? Hear from the market players how licensees are being secured and negotiated in the shadow of the PTAB threat.

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4:15 PM EST

Add to Calendar 01/24/2022 4:15 PM America/New_York PTAB 2022 – Day 1 – Final Thoughts ,

Tuesday, Jan 25, 2022

10:30 AM EST

Add to Calendar 01/25/2022 10:30 AM America/New_York PTAB 2022 – Day 2 – Opening Thoughts ,

11:00 AM EST

Discretionary Denials: Has the WDTX Been Neutered?

With the WDTX being assailed by both Congress and the Judicial Conference, and the WDTX docket swelling to the point of unmanageability, has the WDTX already experienced its “golden age.” What benefits remain, and how should litigants be playing the changing Texas landscape?

Kevin Greenleaf
Alison Richards
Todd Walters
Wendy Verlander
Add to Calendar 01/25/2022 11:00 AM America/New_York Discretionary Denials: Has the WDTX Been Neutered?

With the WDTX being assailed by both Congress and the Judicial Conference, and the WDTX docket swelling to the point of unmanageability, has the WDTX already experienced its “golden age.” What benefits remain, and how should litigants be playing the changing Texas landscape?

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1:00 PM EST

Tactics & Strategies for Avoiding it All

Once an IPR has been filed the patent owner is afforded the opportunity to file a preliminary response. At this point, however, disputes will be viewed in a light most favorable to the petitioner (see 37 CFR 42.108(c)), which means the patent owner faces an uphill battle. The nature of the burden at this stage can and often does dictate…

Greg Gulliver
Matt Johnson
Michael Rosato
Add to Calendar 01/25/2022 1:00 PM America/New_York Tactics & Strategies for Avoiding it All

Once an IPR has been filed the patent owner is afforded the opportunity to file a preliminary response. At this point, however, disputes will be viewed in a light most favorable to the petitioner (see 37 CFR 42.108(c)), which means the patent owner faces an uphill battle. The nature of the burden at this stage can and often does dictate…

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3:00 PM EST

But Wait!… There’s More. The Resurgence of Reexamination

AIA trials were designed to replace patent reexamination. So why are reexamination filings on the uptick? And what can patent owners gain from patent reissue and reexamination that may help stave off future PTAB attacks, or otherwise rehabilitate a vulnerable portfolio?

James Carmichael James Carmichael
David Ruschke
Liz Burke
Add to Calendar 01/25/2022 3:00 PM America/New_York But Wait!… There’s More. The Resurgence of Reexamination

AIA trials were designed to replace patent reexamination. So why are reexamination filings on the uptick? And what can patent owners gain from patent reissue and reexamination that may help stave off future PTAB attacks, or otherwise rehabilitate a vulnerable portfolio?

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4:15 PM EST

Add to Calendar 01/25/2022 4:15 PM America/New_York PTAB 2022 – Day 2 – Final Thoughts ,

Wednesday, Jan 26, 2022

10:30 AM EST

Add to Calendar 01/26/2022 10:30 AM America/New_York PTAB 2022 – Day 3 – Opening Thoughts ,

11:00 AM EST

Fighting Fire with Fire: Effectively Using Motions, Discovery & Experts to Make Your Case

In the trenches of PTAB trials, there are the day-to-day decisions that can turn the tide in favor of a party. What are these critical cross-examination and motion techniques?  Is there an effective use of Motions to Exclude?  What do you look for in an expert? What discovery if any should you expect, and what secondary considerations might patent owners…

James Davis
Kevin Laurence
Robert Hart
Add to Calendar 01/26/2022 11:00 AM America/New_York Fighting Fire with Fire: Effectively Using Motions, Discovery & Experts to Make Your Case

In the trenches of PTAB trials, there are the day-to-day decisions that can turn the tide in favor of a party. What are these critical cross-examination and motion techniques?  Is there an effective use of Motions to Exclude?  What do you look for in an expert? What discovery if any should you expect, and what secondary considerations might patent owners…

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1:00 PM EST

How to Avoid Obvious Mistakes with Obviousness Grounds

Beating back an obviousness ground at the PTAB is far different than the district court. Don’t bring a knife to a gun fight. Learn critical tactics and insights on what makes obviousness tick at the PTAB. Best practices for petitioners and Patent Owners will be discussed.

Heath Briggs
Greg Gardella
Roger Lee
Add to Calendar 01/26/2022 1:00 PM America/New_York How to Avoid Obvious Mistakes with Obviousness Grounds

Beating back an obviousness ground at the PTAB is far different than the district court. Don’t bring a knife to a gun fight. Learn critical tactics and insights on what makes obviousness tick at the PTAB. Best practices for petitioners and Patent Owners will be discussed.

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3:00 PM EST

Reversing the Result: Motions to Reconsider, Arthrex Director Reviews, Appeals to the Federal Circuit

This panel will identify motions and appeals that have been successful and point out why they have been successful, giving insight into those issues and arguments that have the best chance to prevail when seeking to reverse a PTAB result. The panel will similarly identify those types of motions, appeals and arguments that routinely fail, and explain why.

Meredith Addy
Doug Hallward-Driemeier
Scott McKeown Scott McKeown
Add to Calendar 01/26/2022 3:00 PM America/New_York Reversing the Result: Motions to Reconsider, Arthrex Director Reviews, Appeals to the Federal Circuit

This panel will identify motions and appeals that have been successful and point out why they have been successful, giving insight into those issues and arguments that have the best chance to prevail when seeking to reverse a PTAB result. The panel will similarly identify those types of motions, appeals and arguments that routinely fail, and explain why.

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4:15 PM EST

Add to Calendar 01/26/2022 4:15 PM America/New_York PTAB 2022 – Day 3 – Final Thoughts ,

Thursday, Jan 27, 2022

10:30 AM EST

Add to Calendar 01/27/2022 10:30 AM America/New_York PTAB 2022 – Day 4 – Opening Thoughts ,

11:00 AM EST

Litigating in Parallel with the PTAB: Do’s and Don’ts for Concurrent ITC and District Court Litigation

With the same claim construction standards now applied across all forums, what pitfalls await and unsuspecting petitioner or Patent Owner?  Leveraging parallel records before the agency, motions to stay, judicial estoppel, and issue preclusion will be discussed along with best practices for fighting on two fronts.

Gene Quinn
Matthew Rizzolo
Aarti Shah
Mitch Yang
Add to Calendar 01/27/2022 11:00 AM America/New_York Litigating in Parallel with the PTAB: Do’s and Don’ts for Concurrent ITC and District Court Litigation

With the same claim construction standards now applied across all forums, what pitfalls await and unsuspecting petitioner or Patent Owner?  Leveraging parallel records before the agency, motions to stay, judicial estoppel, and issue preclusion will be discussed along with best practices for fighting on two fronts.

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1:00 PM EST

Life Sciences and IPR: Orange Book & Biologic Patents at the PTAB

Stephanie Schonewald, PhD
Sharon Crane
Heather Petruzzi
Add to Calendar 01/27/2022 1:00 PM America/New_York Life Sciences and IPR: Orange Book & Biologic Patents at the PTAB ,

3:00 PM EST

The PTAB Future: Dissecting the “Restoring America Invents Act” and Potential PTO Reforms in a Vidal Administration

Dissecting the provisions of the RAIA and what changes are most likely in 2022.  A look forward to the year in legislation, rulemaking, and policy changes.

Erika Harmon Arner
Tim Fink
Scott Weidenfeller
Scott McKeown Scott McKeown
Add to Calendar 01/27/2022 3:00 PM America/New_York The PTAB Future: Dissecting the “Restoring America Invents Act” and Potential PTO Reforms in a Vidal Administration

Dissecting the provisions of the RAIA and what changes are most likely in 2022.  A look forward to the year in legislation, rulemaking, and policy changes.

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4:15 PM EST

Add to Calendar 01/27/2022 4:15 PM America/New_York PTAB 2022 – Day 4 – Final Thoughts ,