Seminar  Program

USPTO Post-Grant Patent Trials 2018: Change & Recalibration


Select a Location:

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Andrew T. Harris, Michael D. Van Loy



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Kevin B. Laurence, David L. McCombs



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Michelle K. Holoubek, Trenton A. Ward



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, W. Karl Renner, Bob Steinberg



2:45 Networking Break

3:00 The Long Road: Patent Monetization in Silicon Valley – Licensing and Navigating Efficient Infringement

Presented as an alternative to litigation, AIA Trials are sometimes parallel tracked with more traditional litigation disputes. This segment will explore the impact of the AIA threat to licensing and enforcement efforts, and best practices for navigating such new challenges. The second half of this segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

James R. Batchelder, Peter P. Chen, Steve Chiang, Anne Layne-Farrar, Ami Patel Shah



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
James R. Batchelder ~ Ropes & Gray LLP
Peter P. Chen ~ Covington & Burling LLP
Steve Chiang ~ Senior Director and IP Counsel, RPX Corporation
Andrew T. Harry ~ Xsensus, LLP
Michelle K. Holoubek ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Kevin B. Laurence ~ Laurence & Phillips IP Law LLP
Anne Layne-Farrar ~ Vice President, Charles River Associates
David L. McCombs ~ Haynes and Boone, LLP
W. Karl Renner ~ Fish & Richardson P.C.
Ami Patel Shah ~ Managing Director, Fortress Investment Group LLC
Bob Steinberg ~ Latham & Watkins LLP
Michael D. Van Loy, Ph.D. ~ Mintz Levin Cohn Ferris Glovsky and Popeo PC
Trenton A. Ward ~ Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (800) 260-4754.

San Francisco Hotel Accommodations

Park Central Hotel, 50 Third Street, San Francisco, CA 94103. 415-974-6400. When calling, please mention PLI and SET#287179. In addition, you may book online at Park Central Hotel PLI.

Omni Hotel San Francisco, 500 California Street, San Francisco, CA 94104. 415-677-9494.  When calling, please mention Practising Law Institute.  You may also book online at PLI Omni 2018.

Due to high demand we recommend reserving hotel rooms as early as possible.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Andrew T. Harris, Michael D. Van Loy



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Kevin B. Laurence, David L. McCombs



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Michelle K. Holoubek, Trenton A. Ward



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, W. Karl Renner, Bob Steinberg



2:45 Networking Break

3:00 The Long Road: Patent Monetization in Silicon Valley – Licensing and Navigating Efficient Infringement

Presented as an alternative to litigation, AIA Trials are sometimes parallel tracked with more traditional litigation disputes. This segment will explore the impact of the AIA threat to licensing and enforcement efforts, and best practices for navigating such new challenges. The second half of this segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

James R. Batchelder, Peter P. Chen, Steve Chiang, Anne Layne-Farrar, Ami Patel Shah



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
James R. Batchelder ~ Ropes & Gray LLP
Peter P. Chen ~ Covington & Burling LLP
Steve Chiang ~ Senior Director and IP Counsel, RPX Corporation
Andrew T. Harry ~ Xsensus, LLP
Michelle K. Holoubek ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Kevin B. Laurence ~ Laurence & Phillips IP Law LLP
Anne Layne-Farrar ~ Vice President, Charles River Associates
David L. McCombs ~ Haynes and Boone, LLP
W. Karl Renner ~ Fish & Richardson P.C.
Ami Patel Shah ~ Managing Director, Fortress Investment Group LLC
Bob Steinberg ~ Latham & Watkins LLP
Michael D. Van Loy, Ph.D. ~ Mintz Levin Cohn Ferris Glovsky and Popeo PC
Trenton A. Ward ~ Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

Alabama:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live webcasts qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period.

Iowa:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kentucky:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

Maine:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Minnesota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Montana:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

Nevada:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

North Carolina:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

North Dakota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Oklahoma:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Wyoming:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live webcasts qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

United Kingdom (CPD-UK):  PLI’s live webcasts can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as “Group-Internet-Based” (GIB) credit.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live webcasts may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live webcasts may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live webcasts may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live webcasts qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live webcasts qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live webcasts may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live webcasts may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

New York City Seminar Location

PLI New York Center
, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. (800) 260-4754.

New York City Hotel Accommodations

Crowne Plaza Times Square Manhattan, 1605 Broadway (48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.

The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute and Corporate Rate ID 786839408. In addition, you can book online at PLI Muse Hotel

Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. In addition, you can book online at PLI Millennium Hotel .

 Hyatt Times Square, 135 W. 45th Street, New York, NY 10036. For reservations, please call (646) 364-1234. When calling mention rate code CR56218 or Practising Law Institute.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

Alabama:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live webcasts qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period.

Iowa:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kentucky:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

Maine:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Minnesota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Montana:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

Nevada:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

North Carolina:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

North Dakota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Oklahoma:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Wyoming:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live webcasts qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

United Kingdom (CPD-UK):  PLI’s live webcasts can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as “Group-Internet-Based” (GIB) credit.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live webcasts may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live webcasts may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live webcasts may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live webcasts qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live webcasts qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live webcasts may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live webcasts may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI
Ice Miller LLP, One American Square, Suite 2900, Indianapolis, IN 46282

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

Philadelphia Groupcast Location

Pennsylvania Bar Institute, The CLE Conference Center, Wanamaker Building, 10th floor, Suite 1010, Center City Philadelphia (Juniper St. entrance, between 13th & Broad Sts., opposite City Hall). (800) 932-4637. Click here for directions.

Philadelphia Groupcast Hotel Accommodations

Below is a list of hotel accommodations suggested by the Pennsylvania Bar Institute:

Marriott Residence Inn

Ritz Carlton

Loews Philadelphia

Philadelphia Marriott Downtown

Hilton Garden Inn

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

Pittsburgh Groupcast Location

Pennsylvania Bar Institute, Professional Development Conference Center, 339 Sixth Avenue, Suite 760, Pittsburgh, Pennsylvania 15222-2517. (412) 802-2300. Click Here for Directions

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI
New Jersey Groupcast Location

New Jersey Institute for Continuing Legal Education, One Constitution Square, New Brunswick, NJ 08901-1520. 732-249-5100.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

Why You Should Attend

The Patent Trial and Appeal Board (PTAB) continues to evolve at a dizzying pace.  For 2018, the Board has significantly recalibrated such trial mechanisms as remand, amendment, and follow-on petitions.  In parallel, the Federal Circuit has softened the appeal bar in WiFi One, and the Supreme Court continues to examine potential changes to PTAB institution practices.  As stakeholders try to stay abreast of the most recent round of changes, additional challenges have emerged such as sovereign immunity and the inconsistent application of estoppel by the courts.

 

As the PTAB evolves, so does the patent monetization landscape.  Looking into 2018, with further changes to joinder and other fundamental trial mechanisms on the horizon, new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and exit strategies must be developed.

 

USPTO Post-Grant Patent Trials 2018 remains the most comprehensive program for patent owners and investors; corporate counsel; patent litigators; patent advisors, owners, and analysts; and patent professionals. Join our expert faculty for a deep-dive practical analysis of these critical post-grant trial proceedings.

 

Topics Include

New! Learn how to prosecute patents to thwart later PTAB challenges

New! (SF only) Get hot tips on patent monetization/licensing in Silicon Valley ? successfully navigate PTAB challenges and identify possible roadblocks

• (NY only)The intersection of bio/pharma at the PTAB

• Realize the role of AIA Trial proceedings as a component of a litigation strategy, including pretrial and post-trial options

• Explore strategic considerations, including procedural and evidentiary traps for the unwary

• Interpret the relative advantages and disadvantages of the various proceedings explained from the perspectives of both the Patentee and Third Party Petitioner


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

9:00 Opening Remarks

Scott A. McKeown, Robert Greene Sterne



9:15 Roadblock PTAB: Hardening Patent Portfolios and Adjusting Patent Prosecution Strategies

AIA Trial proceedings are now the first hurdle to patent monetization and enforcement. This segment will explore the evolution of patent procurement/prosecutions practices and effective portfolio management. Specifically, strategies will be offered to harden patent portfolios from PTAB vulnerability, PTAB estoppel, and structuring portfolios in a manner to thwart challenges. Topics include drafting and claiming strategies for prosecutors from PTAB litigators, remedial options for portfolio managers to insulate issued patents from PTAB challenge, and best practices for structuring portfolios going forward.

Eldora L. Ellison, Greg H. Gardella



10:15 Networking Break

10:30 PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution

The preliminary proceeding of an AIA Trial is a critical period, with the potential to change drastically after SAS Institute. In this segment, best practices for petitioner and patentee will be presented by leading practitioners. Topics include: challenging statutory bars after Wifi One; follow-on petitions and 325(d); preliminary response evidence; petition preparation; real parties in interest; privity; joint defense dynamics; development of declaration testimony; sovereign immunity and requests for rehearing.

Amanda Streff Bonner, Christopher Scharff



11:30 PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Motion Practice and Amendment

An AIA Trial is conducted on paper and spans from the end of the preliminary proceeding until the final written decision (FWD) of the PTAB. During such time “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will examine the unique PTAB discovery standards, practices and pitfalls, direct testimony via  declarations, cross-examination by deposition, the patent owner response, the petitioner reply, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB after In re Aqua Products will also be explored, together with concurrent patent reissue, reexamination joinder and settlement scenarios.

Peter P. Chen, Roshan Mansinghani



12:30 Lunch

1:45 PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFC

Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit is substantial and increasing. New roadblocks such as Article III standing as well as potential new disputes over 315(b) may impact future appeal strategies. Hear best practices for preparing for and presenting oral argument before the PTAB and possible live testimony of the experts, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.

Meredith Martin Addy, Hon. Paul R. Michel (Ret.)



2:45 Networking Break

3:00 Northeast Corridor: Bio/Pharma at the PTAB

PGR will be explored as an increasing number of patents may now be challenged on §101, 102/103, and 112 grounds. Industry leaders will also discuss leverage of IPR & PGR by generics. Differences in §112 standards will be explored relative to district court practices as well as §101 practices. The panel will provide the unique perspective of the unpredictable arts as it relates to all things PTAB.

Dianna L. DeVore, Sherry M. Knowles, Filko Prugo



4:00 Leveraging the PTAB Journey: Concurrent District Court Trial Strategies

This segment will move into 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 as well as district court uses of PTAB records, and estoppel will be explored.

Jared B. Bobrow, Robert A. Cote, John M. Desmarais



5:00 Adjourn

Co-Chair(s)
Scott A. McKeown ~ Ropes & Gray LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Speaker(s)
Meredith Martin Addy ~ Tabet DiVito & Rothstein LLC
Jared B. Bobrow ~ Weil Gotshal & Manges LLP
Amanda Streff Bonner ~ Mayer Brown LLP
Peter P. Chen ~ Covington & Burling LLP
Robert A. Cote ~ McKool Smith
John M. Desmarais ~ Desmarais LLP
Dianna L. DeVore, Ph.D. ~ Convergent Law Group LLP
Eldora L. Ellison, Ph.D. ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Greg H. Gardella ~ Gardella Grace
Sherry M. Knowles ~ Knowles Intellectual Property Strategies, LLC
Roshan Mansinghani ~ Senior Patent Counsel, Unified Patents Inc.
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Filko Prugo ~ Ropes & Gray LLP
Christopher Scharff ~ McAndrews, Held & Malloy, Ltd.
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

Mechanicsburg Groupcast Location

Pennsylvania Bar Institute, 5080 Ritter Rd., Mechanicsburg PA 17055, (800) 932-4637. Click here for directions.

Mechanicsburg Groupcast Hotel Accommodations

Below is a list of hotel accommodations suggested by the Pennsylvania Bar Institute:

Hampton Inn Harrisburg-West, 4950 Ritter Road, Mechanicsburg, Pennsylvania, USA 17055. Tel: 717-691-1300. Fax: 717-691-9692.

Homewood Suites by Hilton® Harrisburg-West Hershey Area, 5001 Ritter Road, Mechanicsburg, Pennsylvania, United States 17055. Tel: 1-717-697-4900. Fax: 1-717-697-9101.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance education” credit. Attorneys are limited to 8 credits of distance education programs per reporting period.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

Related Items

On-Demand  On-Demand Programs

USPTO Post-Grant Patent Trials 2017 Oct. 4, 2017

Handbook  Course Handbook Archive

USPTO Post-Grant Patent Trials 2018  
USPTO Post-Grant Patent Trials 2017 Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C.
Scott A McKeown, Ropes & Gray LLP
 
Share
Email

  • FOLLOW PLI:
  • twitter
  • LinkedIn
  • YouTube
  • RSS

All Contents Copyright © 1996-2018 Practising Law Institute. Continuing Legal Education since 1933.

© 2018 PLI PRACTISING LAW INSTITUTE. All rights reserved. The PLI logo is a service mark of PLI.