PTAB Bench Bar Conference

Overview

Conference Co-Chairs

• Marc A. Hubbard, Hubbard Johnston, PLLC, Dallas, TX
• Sharon A. Israel, Mayer Brown LLP, Houston, TX
• David L. McCombs, Haynes and Boone, LLP, Dallas, TX

Program

PTAB Trial Proceedings - A Boot Camp
October 18

Includes an optional tour of the USPTO Regional Office at 10:30 a.m.

First, an October 18 afternoon "Boot Camp" with PTAB judges and practitioners offers something for newcomers and more experienced practitioners. 

Geared toward in-house lawyers, district court litigators, and others wanting to know more about this significant new venue, the Boot Camp provides a thorough introduction to trial practice before the Patent Trial and Appeal Board and prepares attendees for the second session. This practical overview will go over the basics for each stage of a trial before the PTAB, including preparing a successful petition, patent owner responses, discovery practice and oral proceedings, and settlement. It will end with a mock oral hearing and practical tips. An optional tour of the USPTO Regional Office will be available for any interested participants.

Advanced Practice before the PTAB
October 19-20

Second, on October 19-20 “Advanced Practice before the PTAB” offers deep dive sessions for those who manage PTAB proceedings, practice before the PTAB, and are looking for a unique program and learning experience that focuses on current issues and best practices.

In house lawyers and outside counsel will focus on trial strategies, effective practices and pitfalls, and managing parallel District Court and PTAB proceedings. Part of the program will be offered jointly with the annual Eastern District of Texas Bench-Bar Conference, and you will have an opportunity to attend the opening reception of one of the largest bench-bar conferences in the country. 

Tuition

• PTAB Boot Camp (Oct 18)
• $125 - Regular registration fee
• $85 - Member
• Advanced PTAB (Oct 19 – 20)
• $385 - Regular registration fee
• $325 - Member
• PTAB Boot Camp and Advanced PTAB (Oct 18-20)
• $465 - Regular registration fee
• $395 - Member

Schedule and Faculty

Tuesday, October 18

PTAB Trial Proceedings Boot Camp

An introduction to trial proceedings practice before the United States Patent & Trademark Office’s Patent Trial and Appeal Board for in-house lawyers, district court litigators and others seeking to learn about the nuts of bolts of practice in this popular venue.

1:00 pm

Overview of Trial Proceedings at the PTAB: Types of Proceedings, Grounds, Timeframe and Trial Procedures

• Hon. Miriam L. Quinn, U.S. Patent and Trademark Office, Dallas, TX

1:30 pm

The Petitioner’s Case in Chief: Anatomy of a Successful Petition

• Christa Brown-Sanford, Baker Botts, Dallas, TX

2:00 pm

Crafting the Response: Strategies for the Patent Owner’s Preliminary Response and the Patent Owner’s Response after institution

• Kyle Friesen, Mayer Brown, Houston, TX

2:30 pm

The Conduct of the Trial After Institution: Discovery, Depositions, and Motions

The order instituting trial launches the discovery phases of the PTAB proceeding. Learn about opportunities for “additional” discovery, strategies for depositions of declarants, and motion practice before the PTAB.

Moderator:

• Marc A. Hubbard, Hubbard Johnston, PLLC, Dallas, TX

Panelists:

• The Hon. Daniel Galligan, Judge, U.S. Patent and Trademark Office, Dallas, TX
• Steven G. Spears, McDermott Will & Emory (Houston, TX)
• Dorothy Whelan, Fish & Richardson, Minneapolis, MN

3:15 pm

Break

3:30 pm

Settling the Dispute: When, How, and What Considerations Go into Resolving a Review Short of a Final Decision

• Todd Baker, Oblon, Alexandria, VA

4:00 pm

Putting It into Practice

A mock oral hearing will be followed by practical advice on developing the record, dealing with evidentiary challenges and best practices for oral advocacy at the PTAB

Moderator:

• Hon. Miriam L. Quinn (invited), Lead Administrative Patent Judge, U.S. Patent and Trademark Office, Dallas, TX

Panelists:

• Andrew S. Ehmke, Haynes and Boone LLP, Dallas, TX
• Mackenzie Martin, Baker & McKenzie LLP, Dallas, TX
• David O'Brien, Haynes and Boone LLP, Dallas, TX
• Brian C. McCormack, Baker & McKenzie LLP, Dallas, TX

5:00 pm

Adjourn

Wednesday, October 19

Advanced Practice Before the PTAB

7:30 am

Breakfast and Networking

8:30 am

Opening Remarks

8:35 am

Institution, the New Battle Ground

A panel discusses best practices and tactics for petitioners and patent owners as they fight over institution of the trial

Moderator:

• Scott McKeown, Oblon, Alexandria, VA

Panelist:

• Dorothy Whelan, Fish & Richardson, Minneapolis, MN
• Hon. Michael Woods, USPTO, Dallas, TX

9:30 am

After Institution: Trial Strategies

Effective practices and pitfalls pertaining to discovery, joinder, amendment, and exclusion of evidence.

Moderator:

• W. Barton (Bart) Rankin, Baker McKenzie, Dallas, TX

Panelists:

• Theo Foster, Haynes & Boone, Dallas, TX
• David O'Brien, Haynes & Boone, Dallas, TX
• Paul C. Hashim, Huawei, Dallas, TX
• Kyle Friesen, Mayer Brown Houston, TX
• Gita Srivastava, Norton Rose Fulbright, Dallas, TX
• Stacey White, U.S. Patent and Trademark Office, Dallas, TX

10:30 am

Break

10:45 am

Managing Parallel District Court and PTAB Proceedings

Trends and lessons learned in the trenches on stays, intermingled discovery, claim construction, race to finality, estoppel, and impact of Federal Circuit review

Moderator:

• Hilda Galvan, Jones Day, Dallas, TX

Panelists:

• Van Lindberg, Rackspace, San Antonio, TX
• Barry Bumgardner, Nelson Bumgardner PC, Fort Worth, TX
• Chad Walters, Baker Botts, Dallas, TX

11:45 am

Lessons from the Federal Circuit’s Developing Caselaw on Inter Partes and Post-Grant Review Proceedings: What you need to know at the PTAB and on appeal

• Sharon Israel, Mayer Brown, Houston, TX

12:15 pm

Lunch

12:30 pm

PTAB, the New Normal

Learn how the PTAB has evolved since its inception to become the country’s busiest venue for resolving patent disputes. Recent statistics, growth of the Board, and changing perspectives for fiscal 2017 and beyond.

• Chief Judge David Ruschke, Patent Trial and Appeal Board Chief Judge, U.S. Patent and Trademark Office

1:00 pm

Adjourn to Joint Program with the 20th Annual Eastern District of Texas Bench and Bar (transportation provided for those without a car)

Avoiding Collisions at Intersection of the PTAB and Judicial System

Dallas/Plano Marriott at Legacy Town Center
7121 Bishop Road
Plano, Texas 75024

1:30 pm

Revisions to the Local Rules, Standing Orders & Thoughts on Timing of  PTAB Petitions & Stays Pending Inter Parties Review.

Moderator:

• Betty Chen, Fish Richardson

Panelists:

• Wesley Hill, Ward, Smith & Hill
• Hon. Ron Clark, Chief Judge, Eastern District of Texas
• Hon. Rodney Gilstrap, Eastern District of Texas
• Jennifer Ainsworth, Wilson, Robertson & Cornelius

2:15 pm

Double the Forums, District Court and PTAB and their Effect on Efficiency, Consistency and Redundancy.

Moderator:

• Chris Kennerly, Paul Hastings

Panelists:

• Hon. Robert W. Schroeder, Eastern District of Texas
• Rocky Schwartz, Whitaker Chalk Swindle & Schwartz
• Marta Beckwith, Former Senior In House Counsel, Aruba Networks & Cisco Systems
• John A. Scott, Vice President and Legal Counsel, Qualcomm, Inc.

3:00 pm

The Role of Post Grant Challenges in Offensive and Defensive Litigation Strategies.

Moderator:

• Rose Keagy, Patent Attorney, Texas Instruments, Dallas, TX

Panelists:

• David MeLaugh, Director, Patent Litigation, Apple, Inc.
• Kerry Flynn, Vice President & Chief IP Counsel, Vertex Pharmaceuticals
• Ryan Wirtz, Senior Legal Counsel – Litigation, Ericsson Inc.

3:45 pm

The Intersection Between Hatch Waxman and the PTAB, ITC & ED Texas: Using All the Tools in the Tool Box.

Moderator:

• Stephanie Barnes, Siebman, Burg, Phillips & Smith

Panelists:

• Jennifer Doan, Haltom & Doan
• Kat Li, McKool Smith
• Hon. John D. Love, Judge, Eastern District of Texas
• Thomas Meloro, Willkie, Farr & Gallagher

4:15 pm

It’s Back. So Now What? Exploring the Effect of PTAB Proceedings on the Ultimate Resolution of the Case.

Moderator:

• Bruce Sostek, Thompson & Knight

Panelists:

• Hon. Leonard Stark, Chief Judge, District of Delaware
• Hon. Raymond Chen, Judge, Court of Appeals for the Federal Circuit
• Hon. Nicole Mitchell, District Judge, Eastern District of Texas
• Sharon Israel, Mayer Brown

5:00 pm

Reading the Tea Leaves. Observations from the Bench Beyond Alice, Halo, and Stryker

Moderator:

• Geoff Culbertson, Patton, Tidwell & Culbertson

Panelists:

• Hon. Barbara Lynn, Chief Judge, Northern District of Texas
• Hon. Richard G. Andrews, District of Delaware
• Hon. Amos Mazzant, Eastern District of Texas
• Hon. Robert W. Schroeder, Eastern District of Texas

5:45 pm

Reception with Eastern District of Texas Bar Association

Thursday, October 20, 2016

Dallas/Plano Marriott Legacy Town Center
7121 Bishop Road
Plano, Texas 75024

7:30 am

Breakfast Buffet Opens

8:00 am

Kickoff Breakfast for the Eastern District of Texas Association of Women Lawyers (Open for all Conference Attendees)

Taking the Lead Lawyer Role at Trial. What Should Women Lawyers Do?

Moderator:

• Claudia Frost, Orrick, Houston, TX

Panelists:

• Mary-Olga Lovett, Greenberg Traurig, Houston, TX
• Sarah Decker, Senior Legal Counsel, ST Micro Electronics, Dallas, TX
• Rebecca Hurley, Executive Vice President, General Counsel & Secretary, LHP Hospital Group, Dallas, TX

8:50 am

Opening Remarks for the Eastern District of Texas Bench

• Hon. Ron Clark, Chief Judge of the Eastern District of Texas, Beaumont, TX
• Stephanie Barnes, President, Eastern District of Texas Bar Association, Plano, TX
• Clyde Siebman, Chair, Eastern District of Texas Bench Bar Conference, Plano, TX

9:00 am

Through the Looking Glass: A Discussion of the Past and Future of the Patent System

• Introduction by Hon. Ron Clark, Chief Judge of the Eastern District of Texas, Beaumont, TX 
• Hon. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Washington, D.C.
• Hon. Barbara Lynn, Chief Judge of the Northern District of Texas, Dallas, TX

9:35 am

Adjournment of CAIL PTAB Bench Bar Conference

CLE Credit

PTAB Trial Proceedings Boot Camp MCLE Credit

This program is approved by the State Bar of Texas for a total of 3.75 hours, no ethics. Course ID Number: 901361843. Credit hours for other states will vary and are subject to each state’s approval and credit rounding rules.

For this conference, IEL will directly apply (if requested) for course accreditation in the following states: California, Minnesota, New Mexico, Ohio, Oklahoma, Pennsylvania, Texas and Virginia. Some of these states may not approve a program for credit hours before the program occurs. Attorneys may be eligible to receive CLE credit through reciprocity or attorney self-submission in other states. IEL conferences are typically accredited by all mandatory CLE states.

Advanced Practice Before the PTAB MCLE Credit

This program is approved by the State Bar of Texas for a total of 4 hours, no ethics. Course ID Number: 901361847. Credit hours for other states will vary and are subject to each state’s approval and credit rounding rules.

For this conference, IEL will directly apply (if requested) for course accreditation in the following states: California, Minnesota, New Mexico, Ohio, Oklahoma, Pennsylvania, Texas and Virginia. Some of these states may not approve a program for credit hours before the program occurs. Attorneys may be eligible to receive CLE credit through reciprocity or attorney self-submission in other states. IEL conferences are typically accredited by all mandatory CLE states.

*Please note the Eastern District Bench Bar will be handling the CLE portion from 1:00 pm on October 19.

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