8:00 am
Linda J. Thayer
Linda J. Thayer
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

8:15 am

Hear from leaders at the USPTO regarding recent changes at the USPTO.

  • Discuss the procedural changes facing the USPTO in their efforts to foster innovation and protect IP assets
  • Learn about priorities of the office and the related efforts being undertaken
Mary Boney Denison
Mary Boney Denison
Commissioner for Trademarks
USPTO

Mark Powell
Mark Powell
Deputy Commissioner for International Patent Cooperation
USPTO

9:05 am

Gain insight into a variety of recent and proposed changes at the PTAB, tips for success, and best practices for appearing before the Board.

  • Examine the updates to the Standard Operating Procedures, trial practice guidelines, and other potential changes on the horizon
  • Explore the final claim construction standard to be applied in AIA trials
  • Discuss potential changes to amendment practice
  • Share best practices and preparations for PTAB proceedings
Scott R. Boalick
Hon. Scott R. Boalick
Chief Judge
PTAB
USPTO

10:25 am

As a result of the Supreme Court's decision in Oil States and SAS Institute, the Federal Circuit's en banc decisions in WiFi One, Aqua Products, and other decisions, and proposed and implemented Rule Changes at the PTO, the PTAB is changing. Evaluate what these changes are and how these changes affect overall strategy through discussion, followed by a Q&A with Chief Judge Boalick.

  • Adjust your strategy at the PTAB in view of the all or nothing institution imposition by SAS and the PTAB's implementation thereof
  • Evaluate the impact on litigation of the PTAB's adoption of the Phillips standard for claim construction instead of the BRI
  • Examine who can and/or must participate as a Petitioner as a real party in interest or as a Patent Owner in view of Sovereign Immunity concerns in view of recent developments at the Federal Circuit including WiFi One, RPX v. AIT, St Regis Mohawk Tribe, and more
  • Learn about the new motion to amend procedures and how to navigate them as a patent owner and petitioner
  • Review recent and upcoming case law to help you better prepare for future PTAB proceedings
Scott R. Boalick
Hon. Scott R. Boalick
Chief Judge
PTAB
USPTO

Charles Macedo
Charles Macedo
Partner
Amster, Rothstein, Ebenstein, LLP

11:15 am

In recent years, the Supreme Court has decided an increasingly large number of IP cases from the Court of Appeals for the Federal Circuit. In most of those cases, the Supreme Court has reversed the Federal Circuit, altering the IP landscape and impacting the strategies of IP practitioners. This panel examines recent trends in Supreme Court IP decisions by analyzing past decisions and looking ahead to cases in the coming year, including:

  • Exploring the Supreme Court’s continued trend of rejecting the Federal Circuit’s interpretation and application of U.S. IP laws
  • Analyzing recent patent decisions, including SAS Institute v. Iancu and WesternGeco v. ION Geophysical, and assessing their impacts on patent litigation strategies
  • Examining the ramifications of a possible Supreme Court ruling in the long-running battle of Oracle America v. Google, including its effects on innovation and IP protection and enforcement in the technology industry
Steven Purdy
Steven Purdy
Senior Counsel, IP Enforcement
IBM

Daniel C. Tucker
Daniel C. Tucker
Attorney
Finnegan, Henderson, FarabowGarrett & Dunner, LLP

Timothy Wilson
Timothy Wilson
Director of Patents
SAS Institute Inc.

Moderator:

Stephen E. Haberfeld (Ret.)
Hon. Stephen E. Haberfeld (Ret.)
U.S. Magistrate Judge of the U.S. District Court for the Central District of California
JAMS

12:05 pm
1:05 pm

After the Supreme Court’s decision in TC Heartland, many are considering the best choice when it comes to venue for potential litigation. Uncover the often overlooked path through the ITC, the similarities and differences in the litigation process, and when these differences can be used for a strategic advantage.

  • Discuss the increasing industry impact of the TC Heartland decision and recent cases that provide additional guidance into the new rules of venue
  • Examine trends in the number of district court filings to further refine filing strategies
  • Review the basic steps of an ITC Section 337 investigation and the substantive and procedural ways it differs from typical district court infringement litigation
Richard A. Sterba
Richard A. Sterba
Principal
Fish & Richardson

1:55 pm

PART 1: Leveraging IP for Value and Relevant Considerations

Explore the variety of ways to leverage IP to create additional value for your organization. This panel defines strategies and shares examples of successful IP monetization efforts, ways to increase business value including that of new assets, effective defense and protection of 3rd IPR Party claims, leadership opportunities, and considerations to take into account when leveraging IP.

  • Examine the variety of ways that IP can be leveraged for value, including, but not limited to, monetization
  • Identify considerations with respect to (or not to) leveraging IP, including what, why, and how IP should be leveraged
  • Discuss considerations of certain key terms in licensing agreements
  • Explore when and how arbitration should be used, especially in the context of licensing agreements

Moderator:

Stan Torgovitsky
Stan Torgovitsky
Partner
Dickinson Wright, PLLC

Panelists:

Jennifer DeTrani
Jennifer DeTrani
General Counsel, Executive Vice President
Nisos Holding Inc.;
Co-Founder, Special Advisor
Wickr Inc.

Steven Klocinski
Steven Klocinski
Senior Managing Counsel, IP
MasterCard

Hon. John C. Lifland (Ret.)
Hon. John C. Lifland (Ret.)
U.S. District Judge
JAMS

Richard (Rich) Weiss
Richard (Rich) Weiss
Law Vice President, Chief IP and CTO Counsel
NCR Corporation

PART 2: CASE STUDY: Cannabis: Explore the Changing Landscape’s Influence on IP Strategy

Using examples from the growing medicinal and adult-use cannabis market, discuss considerations and strategies to monetize and leverage value from IP assets in an innovative market.

  • Gain an overview of the North American cannabis market
  • Consider current US cannabis regulations
  • Evaluate cannabis IP today and tomorrow
  • Discuss licensing and building to monetize
K. Lance Anderson
K. Lance Anderson
Partner
Dickinson Wright, PLLC

H. Jonathan Redway
H. Jonathan Redway
Partner
Dickinson Wright, PLLC

Maeve Rothman
Maeve Rothman
Staff Attorney
BIC Corporation

3:45 pm

As technology races forward, the law is often left lagging behind, leading to the challenges of applying decade’s old law to technological advancements that the law never contemplated. Explore how Artificial Intelligence will force the law to evolve at a more rapid pace than ever before, and how these changes will survive in the face of unrelenting innovation.

  • Consider how to manage the ownership and licensing of AI generated innovation where multiple entities or elements contribute algorithms, training data, or results sets
  • Review AI patent protection in light of the current issues facing subject matter eligibility for computer-related inventions
  • Discuss the implications of AI as an inventor, author, or an infringer and the resulting consequences for the global IP landscape
  • Investigate how AI may enhance the strength and efficiency of IP asset management

Moderator:

Leslie Spencer
Leslie Spencer
Partner
Ropes & Gray LLP

Panelists:

Maxine Graham
Maxine Graham
Senior IP Counsel
American Express

Sophia Lee
Sophia Lee
General Counsel
IEX Group, Inc.

Dan Pirolo
Dan Pirolo
SVP and Senior Counsel
Synchrony

4:35 pm

This session will be an interactive session in which the executive of a company consults with external counsel relating to various blockchain/DLT initiatives. Work through this hypothetical scenario to gain insights into considerations to take into account surrounding:

  • Impact on the patent portfolio associated with a company’s participation in popular open source initiatives
  • International privacy considerations regarding the storage of data on the blockchain
  • Potential anti-trust issues involving permissioned blockchains/DLT among industry members
  • Potential use of blockchain/DLT to increase supply channel efficiency and minimize potential liabilit
Michael deLeon Hawthorne
Michael deLeon Hawthorne
Partner
Dickinson Wright, Pllc

Michael Palage
Founder
InfoNetworks LLC

Stan Torgovitsky
Stan Torgovitsky
Partner
Dickinson Wright, PLLC

5:25 pm

IP Considerations for Emerging Technology Claimed Inventions (ETCIs)

Especially in Molecular Biology (BIOtech) and Computer Implemented Innovations (CIItech)

  • Discuss the higher degree of legal preciseness and consistency enabled by AI, both notionally as well as factually necessary to support IP of emerging technologies, e.g. DNAtech innovations like CRISPR-based inventions
  • Explore how to extend the classical claim interpretation and construction to a refined claim interpretation and construction in response to the Supreme Court’s KSR/Bilski/Mayo/Biosig/Myriad/Alice line of decisions
  • Clarify the impact on everyday patent business, especially on patent robustness, of this paradigm refinement necessitated by emerging technologies
Sigram Schindler
Dr. Sigram Schindler
Professor
TELES Patent Rights International

Burghardt Wittig
Dr. Burghardt Wittig
Chairman
MolBio2Math – a Non-Profit Foundation of Molecular Biology & Integral Biomathics;
Senior Advisor
Mologen AG

Dive Deeper into Complex Concepts of Blockchain

  • Explore the intricacies of blockchain/Distributed Ledger Technology (DLT) along with its endless potential
  • Share potential strategies for integrating pilots
Michael Palage
Founder
InfoNetworks LLC

Thinking Outside the Box: Exploring Alternative Enforcement Mechanisms - Design Patents, Trademarks, and Trade Dress

  • Discuss the various protections provided by these often overlooked alternatives to traditional utility patents (and how US and EU design patents differ)
  • Uncover the versatility of alternative protections for GUs, 2D and 3D models, and other items
  • Combatting counterfeits: Examining the usefulness of these types of protection in Customs enforcement and the most cost effective steps to policing marks and products abroad
  • Deliberate how has the perceived value of design registrations has changed over time
Nicole M. Meyer
Nicole M. Meyer
Practice Group Chair, Trademarks and Copyrights
Dickson Wright, Pllc

David Joyal
David Joyal
Vice President, Legal, Patent
Coty, Inc.

Joan McGillycuddy
Joan McGillycuddy
Director, IP and Innovation
New Avon