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April 20, 2021 - Pre-Trial Practice: Finishing it Before it Starts

April 19, 2021 - Patent Prosecution: Why You’re Doing it Wrong & How to Do it Right

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April 19-22, 2021

11 AM - 2 PM ET

PTAB Masters™ 2021: Winning at the PTAB

Our Keynote Speakers

This inaugural PTAB Masters™ program, presented by IPWatchdog®, and co-chaired by Scott McKeown and Robert Greene Sterne, will focus on “Beating the PTAB” from the viewpoint of the patent owner. From patent prosecution strategies to hardening a portfolio prior to assertion, through PTAB trial and litigation tactics and strategies, this program will prepare patent owners for the challenges of monetizing patents by presenting best practices, expert insights, and master level planning.

With thousands of PTAB proceedings between them, Scott McKeown of Ropes & Gray and Robert Greene Sterne of Sterne Kessler Goldstein & Fox are undoubtedly the masters of the PTAB. Together with their handpicked faculty of experts — some who represent patent owners and some who represent petitioners — this program faculty will cover a holistic view of the Patent Trial and Appeal Board (PTAB).

PTAB Masters™ 2021: Winning at the PTAB

A Virtual Presentation by IPWatchdog®

April 22, 2021 - Litigating in Parallel: Fighting on Multiple Fronts

April 21, 2021 - The Trial: Stop Spinning Your Wheels & Start Winning

A PTAB Trial starts at institution and concludes in a final written decision (FWD). On Day 3, we will explore the universe of trial strategies and tactics unique to patent owners. Topics include, briefing matters of significance, not wasting money on distractions, practices and pitfalls, direct testimony, cross-examination, briefing and motion practices, including the Amendment Pilot program.

PTAB Trials typically track in parallel to traditional district court litigation and ITC disputes. This segment will explore the impact of the PTAB threat to licensing and enforcement efforts, and best practices for navigating such challenges. Specific concurrent strategies such as the ability to stay district court and/or ITC proceedings, and leveraging the differing PTAB evidentiary proof, fact finding and claim construction standards in the active litigation. The impact of evolving CAFC case law will be explored as well as district court uses of PTAB records, and collateral estoppel.

PTAB Trial proceedings are commonly the first and perhaps most significant hurdle to patent monetization. On Day 1 of the program, we start at the beginning — adapting your patent procurement and prosecutions practices to build PTAB-ready patent portfolios. Specific strategies include the value of forward-thinking prosecution, claim diversity, Track 1, after-final options, examiner interviewing and appeal. PTAB estoppel will be explained relative to active prosecution and portfolio structuring, as well as the value of file wrapper evidence and clarity. Topics also include rehabilitating portfolios through reexamination/reissue strategies.

The preliminary proceeding of an AIA Trial is perhaps the most critical period for patent owners. With an increased interest in discretionary denials and a rebalancing in the application of patent owner testimonial evidence, the patent owner must act quickly and decisively to halt the proceeding. On Day 2, leading practitioners will present best practices for patent owner preliminary responses. Topics will include: challenging petitions on discretionary matters under 314(a); 325(d); preliminary response evidence; petition preparation; joint defense dynamics; and development of declaration testimony.

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Meredith Addy

AddyHart

Our Speakers

James Carmichael

Carmichael, IP

Xsensus, LLP

Andrew Harry

Ropes & Gray

James L. Davis, Jr.

Covington & Burling

Peter Chen

Perkins Coie

Amy Simpson

Ropes & Gray

Scott McKeown

Sterne Kessler

James Hietala

AddyHart

Robert Hart

Sterne Kessler

Lestin Kenton, Jr.

IPWatchdog, Inc.

Gene Quinn

Ropes & Gray

Matthew Rizzolo

AddyHart

Chad Pannell

Brooks Kushman

Sangeeta Shah

Former Under Secretary of Commerce for Intellectual Property and Director of the USPTO

Andrei Iancu

Senator Thom Tillis

U.S. Senator for North Carolina

Chief Judge Paul Michel (ret.)

Chief Judge of the Federal Circuit, ret.

Former Under Secretary of Commerce for Intellectual Property and Director of the USPTO

David Kappos

Sterne Kessler

Robert Sterne

Lowenstein & Weatherwax

Bridget Smith

Sterne Kessler

Deborah Sterling

Fortress Investment Group

Ami Patel Shah

PTAB USPTO

Judge Grace Oberman

Chief Judge Scott Boalick

PTAB USPTO

This  program offers 6 hours of CLE.  It  has been approved in Illinois, Missouri, and Tennessee.  It is pending in Minnesota, Texas, California and Virginia.