The New World Order –– Current Developments in Challenging and Defending Patents in the PTAB

  • 12/02/2015
  • APA Hotel Woodbridge at Metropark

The New World Order –– Current Developments in Challenging and Defending Patents in the PTAB

Program:  Wednesday, December 2, 2015

Location:  APA Hotel Woodbridge at Metropark*
120 Wood Avenue South, Iselin, NJ | (732) 494-6200


AGENDA 

EARN 6.5 PROFESSIONAL CLE CREDITS
FOR BOTH NEWLY ADMITTED & EXPERIENCED ATTORNEY

8:40-9:00 AM

Morning CLE Registration (excludes lunch)
Full-Day CLE Registration (includes lunch)

9:00-9:10 AM

Welcome Remarks 
NJIPLA President Jon ChiodoSenior Patent Counsel, Johnson & Johnson
NYIPLA President Dorothy AuthPartner, Cadwalader, Wickersham & Taft

9:10-10:40 AM

Topic 1 Overview of USPTO PTAB proceedings from District Court and PTAB judges - stats, trends/direction, and proposed PTAB rule changes 

Moderator: Peter Thurlow, Partner, Jones Day
Honorable Jerome Simandle, Chief Judge, United States District Court for the District of New Jersey
Honorable Scott Boalick, Vice Chief Patent Judge, Patent Trial and Appeal Board
Honorable Susan Mitchell, Lead Judge, Patent Trial and Appeal Board

10:40-10:55 AM

Refreshment Break

10:55-12:25 AM

Topic 2 PTAB Hot Topics in the Hi-Tech Space. The presentation will include an analysis of recent trends, statistics, and lessons learned; consideration of the PTAB’s new rules; best practices for identifying and challenging the identification of real parties-in-interest; and a lively discussion about whether IPRs are really an effective defensive measure against patent enforcement by NPEs.

Moderator: Mark Abate, Partner, Goodwin Procter
Ken Corsello, Counsel, IBM
Samir Pandya, Senior IP Counsel, SAP
Alexander Poltorak, Founder, Chairman and the CEO of General Patent Corporation
Edward Tempesta, Senior Counsel, MasterCard

11:45 AM - 
12:15 PM

Afternoon CLE Registration Only(includes lunch)

12:25-1:15 PM

Luncheon

1:15-1:45 PM

Introduction: Dorothy Auth, NYIPLA President
Luncheon Speaker 
Honorable Pauline Newman
Circuit Judge, United States Court of Appeals for the Federal Circuit

1:45-3:10 PM

Topic 3 The US Congress has been grappling with changes to the patent law provisions regarding IPRs and other post-grant proceedings (among other patent- / AIA-related proposed legislation). Learn about this process – and its current status – from key practitioners and professional advocates / strategic counsel who’ve interacted with Congress on those changes. Explore the players and advocates on both sides of the proposed legislation, and the positions they took and the ways they garnered support for their positions.

Moderator: Jeffrey ButlerActing General Counsel and Advisor, Sentient Lifesciences
Henry HadadSenior Vice President and Deputy General Counsel, Bristol Myers Squibb
Chris Israel, Partner, American Continental Group

Colman RaganIntellectual Property Counsel, Actavis
Peter WaibelPatent Litigation Head, Novartis

3:10-3:25 PM

Refreshment Break

3:25-4:45 PM

Topic 4 Hedge-Fund Sponsored IPR Challenges to Pharmaceutical Patents: Should They Be Treated Like Every Other Filing? Many have criticized hedge-fund sponsored IPR challenges to patents covering approved pharmaceutical products as a means for the hedge funds to reap profits in the short term while chilling biotech and pharma innovation in the long term.  What’s the evidence for and against?  Are PTAB decisions focused on the merits of the filings alone an adequate response to properly balance the interests at stake?

Moderator: Annemarie Hassett, Executive Director, NYU School of Law, Engelberg Center 
on Innovation Law & Policy
David Opderbeck, Professor of Law and Director, Gibbons Institute of Law, Science & Technology
Timothy Salmon, Principal and Co-founder, Empire IP

4:45-5:00 PM

Closing Remarks Jon ChiodoNJIPLA President

5:00-6:30 PM

Networking Reception 

*Conveniently located a very-short walking distance from the Metropark Station servicing NJ Transit and Amtrak. For those traveling from NYC by train: The direct-access train takes about 30 minutes from NY Penn Station. 


Event Fees:

Morning CLE (8:40AM - 11:55AM) $150.00

Afternoon CLE (11:55AM - 6:30PM) $250.00

Full Day CLE $350.00


© 2013 New Jersey Intellectual Property Law Association