PTAB Practice Briefing - DS by C5Group

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American Conference Institute presents

PTAB Practice Briefing

Year-End Analyses and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings.

CALENDAR-ALT December 2, 2021 (EST)

Virtual Conference

IN-HOUSE INSIGHTS FROM: ĉ BASF ĉ Dell ĉ Eisai Inc. ĉ Xperi Corporation

DISTINGUISHED CO-CHAIRS

Honorable Teresa Rea Partner Crowell & Moring LLP Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office

J. Steven Baughman Partner Paul, Weiss, Rifkind, Wharton & Garrison LLP

USPTO PATENT TRIAL AND APPEAL BOARD APJs

Honorable Stacey G. White Lead Administrative Patent Judge

Honorable Ken Barrett Administrative Patent Judge

Honorable Phil Kauffman Administrative Patent Judge

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s 2021 draws to a close, it’s clear that several major factors — the full effect of which we may not entirely grasp until sometime in the future — are drastically impacting PTAB practice.

The Arthrex decision is perhaps the most iconoclastic of these developments, as it questioned the constitutionality of APJ appointments, thus leaving unresolved questions which may affect pending and future IPRs as well as previous IPR decisions. Arthrex also gives unprecedented discretionary authority to the PTO Director, who still at this time has yet to be appointed. There are also ongoing questions about discretionary denials and the future direction of IPRs — all proving that PTAB Practice is still a work in progress, and its jurisprudence is still evolving. Attend ACI’s inaugural PTAB Briefing for in depth-discussions and year-end analyses of these most significant developments impacting PTAB practice as well as future forecasts for 2022.

WHO YOU WILL MEET: PTAB Practitioners, including: In-house patent and IP counsel from a variety of industries and areas, including: ĉ Electronics ĉ Computers and Software ĉ Technology

Private practice attorneys in the fields of:

ĉ Pharmaceuticals

ĉ Intellectual Property/

ĉ Chemical

ĉ USPTO Practice

and Biotechnology

ĉ Medical Devices

2 | #PTAB

twitter: @ACI_Pharma linkedin: ACI’s Hatch-Waxman Series

Patents Litigation

DISTINGUISHED FACULTY CONFERENCE CO-CHAIRS: Honorable Teresa Rea Partner Crowell & Moring LLP (Washington, DC) (Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office)

J. Steven Baughman Partner Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

USPTO PATENT TRIAL AND APPEAL BOARD APJs: Honorable Stacey G. White Lead Administrative Patent Judge Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Honorable Ken Barrett Administrative Patent Judge Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Honorable Phil Kauffman Administrative Patent Judge Patent Trial and Appeal Board, USPTO (Alexandria, VA)

SPEAKERS: Matt Anderson VP, IP Litigation, Disputes & Neuroscience Portfolio Medtronic (Boulder, CO) Tom Brown Senior Legal Director, Head of IP Litigation Dell (Boston, MA) Kevin R. Greenleaf Counsel Dentons (Mountain View, CA) Sara Tonnies Horton Partner Willkie Farr & Gallagher LLP (Chicago, IL) Nicholas Kim Senior Corporate Counsel Microsoft Corporation (Redmond, Washington) Kenneth Korea Founder & Principal Colev Law, P.C. (Los Gatos, CA) David Lorenz Assistant General Counsel BASF Corp.

Honorable Joseph Matal Partner Haynes and Boone, LLP (Washington, DC)

(Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office; Former Acting Deputy General Counsel for Intellectual Property Law and Acting Solicitor of the United States Patent and Trademark Office)

Donna M. Meuth Associate General Counsel, Intellectual Property Eisai Inc. (Andover, MA) Naveen Modi Partner and Global Vice-Chair, Intellectual Property and Chair, Patent Office Practice Paul Hastings LLP (Washington, DC) Karl Renner Principal Fish & Richardson P.C. (Washington, DC) Efrain Staino Vice President, IP Litigation Xperi Corporation (San Jose, CA) Jonathan Stroud Chief IP Counsel Unified Patents (Washington, DC)

Scott A. McKeown Partner Ropes and Gray (Washington, DC)

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Virtual Conference

Tuesday, December 2, 2021 (EST) 10:00 AM

Co-Chairs’ Opening Remarks

• Examining how this effects IPR proceedings and the interplay with Federal Courts • Assessing the PTO Interim Director Review Process post-Arthrex

microphone-alt Honorable Teresa Rea, Partner, Crowell & Moring LLP

» PTAB’s Q&A on Interim Director review process

(Washington, DC) (Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office)

J. Steven Baughman, Partner, Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

10:15 AM

12:00 PM

Networking Break 12:30 PM

Think Tank: Recent Developments and the Future Direction of IPR Proceedings

Year in Review at the PTAB: A Look Back at 2021’s Most Significant Developments

microphone-alt Tom Brown, Senior Legal Director, Head of IP Litigation,

microphone-alt J. Steven Baughman, Partner, Paul, Weiss, Rifkind, Wharton &

Kenneth Korea, Founder & Principal, Colev Law, P.C. (Los Gatos, CA)

Scott A. McKeown, Partner, Ropes and Gray (Washington, DC)

Dell (Boston, MA)

Garrison LLP (Washington, DC)

Jonathan Stroud, Chief IP Counsel, Unified Patents (Washington, DC)

From a change of administration in Washington to important developments at the PTAB and the courts, we reflect on some of the most significant aspects of 2021 and how these changes this will help shape the year ahead for the PTAB and industry stakeholders. 10:45 AM

Exploring the Impact Post-Arthrex on Future PTAB Proceedings microphone-alt Matt Anderson, VP, IP Litigation, Disputes & Neuroscience Portfolio, Medtronic (Boulder, CO)

Sara Tonnies Horton, Partner, Willkie Farr & Gallagher LLP (Chicago, IL)

Efrain Staino, Vice President, IP Litigation, Xperi Corporation (San Jose, CA)

MODERATOR: Naveen Modi, Partner and Global Vice-Chair,

Intellectual Property and Chair, Patent Office Practice, Paul Hastings LLP (Washington, DC)

The Supreme Court’s long anticipated decision in US v. Arthrex, Inc. is an important rendering for PTAB stakeholders given its potential impact on both past and future IPR proceedings and outcomes. The Court concluded that while PTAB Judges were unconstitutionally appointed as principal officers, but handed the PTO Director the power to review PTAB decisions. Our panel of leading PTAB practitioners will explore the practical implications of this decision. Points of discussion will include:

2021 has been a busy year for the PTAB and IPR proceedings, given the Arthrex decision and the pending appointment of the Interim Director. As we look back on some of the most important issues and trends impacting the PTAB community, and prognosticate on what lies ahead, our panel of speakers will review and discuss some of the most important developments and what this means for the various sectors. • Examining recent trends and statistics in IPR proceedings » Precedential Decisions and Guidelines • Reviewing the new ‘pilot program’ concerning motions to amend » What does the data show 2 years into the program? » How well received were the changes? • Evaluating treatment of applicant admitted prior art (AAPA) in a patent challenged in an IPR » 35 U.S.C. § 311(b) • Exploring the evolving law of estoppel, the scope of review under §315(e) (2) and related consequences • Analyzing recent PTAB and Federal Circuit decisions and their industry impact: » Tech » Financial Services » Pharmaceutical/Life Sciences

• Exploring the Supreme Court’s constitutional remedies in US v. Arthrex, Inc. » Evaluating the decision’s impact on pending IPR and other proceedings • Reviewing the decision and its implications for the PTO and PTAB » Federal circuit update on supplemental briefings

4 | #PTAB

twitter: @ACI_Pharma linkedin: ACI’s Hatch-Waxman Series

1:30 PM

Lunch and Networking Break

• Evaluating strategic considerations when preparing or responding to petitions » What other circumstances could impact the PTABs use of discretionary denial?

2:30 PM

Parsing the Future Policy Direction of the PTO

• Analyzing how Arthrex and the PTO review might affect the use of denials in future proceedings

microphone-alt Honorable Joseph Matal, Partner, Haynes and Boone, LLP

• Predicting how future PTO leadership and policy changes may impact IPR denials and impacts on industries

(Washington, DC)

Donna M. Meuth, Associate General Counsel, Intellectual Property, Eisai Inc.

Nicholas Kim, Senior Corporate Counsel, Microsoft Corporation (Redmond, Washington)

The new Administration’s appointment of a USPTO Director may have significant implications for the direction of patent policy, thus impacting multiple industries and their strategies for monetizing IP assets. Further, this could mean a new course in IP policy impacting the patent protection pendulum as stakeholders seek to influence outcomes. What policy changes might be expected going forward? Which industries might turn out be the ‘winners or losers”? Analyzing potential changes in policy focus, new legislative initiatives, and their anticipated impact on current patent system. • Discuss the context of patent policy direction in the context of geopolitical challenges and the U.S.’s standing on innovation • Explore what the new review process will look like with the new PTO Director post-Arthrex 3:30 PM Break

4:45 PM Break 5:00 PM

PTAB Judges Roundtable microphone-alt Honorable Stacey G. White, Lead Administrative Patent Judge, Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Honorable Ken Barrett, Administrative Patent Judge, Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Honorable Phil Kauffman, Administrative Patent Judge, Patent Trial and Appeal Board, USPTO (Alexandria, VA)

MODERATOR: Karl Renner, Principal, Fish & Richardson P.C.

(Washington, DC)

This panel offers a unique opportunity to hear inside perspectives from PTAB Judges on best practices for successful post-grant proceedings, tips for success, as well as practice pitfalls to avoid. They will also examine other recent developments and potential future changes impacting PTAB stakeholders. The panel will also discuss the interplay between the PTAB, district courts, and the Federal Circuit. 6:00 PM

Closing Remarks and Conference Concludes

3:45 PM

Examining the Increased Use of Discretionary Denials by the PTAB and its Effect on Litigation Strategies microphone-alt Kevin R. Greenleaf, Counsel, Dentons (Mountain View, CA)

David Lorenz, Assistant General Counsel, BASF Corp.

The PTAB has the discretion in deciding which petitions to deny, often based on parallel proceedings or prior art. Given recent concerns over the increase in institutional discretionary denials, this session will address: • Reviewing the current use, status, and trends of discretionary denials (35 U.S.C. Section 314(a)/ Section 325(d)) and future direction » Discuss the application of Fintiv factors when exercising discretionary denials

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