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Fish at the Podium

Momentum: The 2nd IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB

Monday, March 30th, 2015, 9:00 am EDT

Fish at the Podium

Momentum: The 2nd IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB

Monday, March 30th, 2015, 9:00 am EDT

Back to Events Listing

Fish’s Karl Renner and Dorothy Whelan will both serve as moderators at the 2nd Annual IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB on March 30-31, 2015 at San Jose City Hall in San Jose, CA. See below for more information on the sessions which Karl and Dorothy moderate. For more event information, or to register, visit the event website here.

PTAB – DISTRICT COURT INTERPLAY PART 1

DISCOVERY, EVIDENCE, CLAIM CONSTRUCTION AND ADDRESSING KEY EVIDENTIARY ISSUES THAT ARISE DURING THE CO-PENDENCY OF COUNTERPART PATENT PROCEEDINGS

During this session you will explore key evidentiary and discovery issues that arise during the pendency of a PTAB preceding that can also have an impact on a parallel or pending civil action in federal district court. Structured in a fashion that will stimulate dialogue, attendees of this session will observe a conversation featuring perspectives from a senior in-house counsel, Patent Trial and Appeal Board judge and a Federal District Court judge as the panelists discuss:
• The implications of divergent discovery in the respective forums as well as in co-pending counterpart proceedings
• The admissibility of content discovered and otherwise arising in co-pending counterpart proceedings (both directions)
• Claim construction and the broadest reasonable construction standard – comparing and contrasting with the “person
of ordinary skill in the art” standard applied in Federal District Court
• Redundancy and its downstream implication – judicial economy or estoppel ripple effect?

March 30, 2015
2:15pm – 3:30pm
Hon. Sally C. Medley*
Administrative Judge, Patent Trial and Appeal Board
U.S. Patent & Trademark Office

Anup Tikku
Senior Director, Associate General Counsel
eBay Inc.

Hon. Paul S. Grewal
Magistrate Judge
U.S. District Court, Northern District of California

Moderator:
W. Karl Renner
Principal
Fish & Richardson P.C.

BEHIND THE SCENES WITH THE PTAB BENCH

During this judicial roundtable benefit from the opportunity to learn firsthand what the PTAB bench’s top “pet peeves” and preferences are. More importantly gain insights into what type of information/behavior the Judges will tolerate and allow by parties on both sides as you go inside the minds of the PTAB bench. Walk away from this session with insider perspectives on how to best position your case for success as well as invaluable practice tips for ensuring you are best presenting your case to the bench.

March 31, 2015
11:15am – 12:15pm
Hon. James D. Smith
Chief Administrative Judge Patent Trial and Appeal Board
U.S. Patent & Trademark Office

Hon. Tina Hulse*
Administrative Judge, Patent Trial and Appeal Board
U.S. Patent & Trademark Office

Hon. Frances Ippolito*
Administrative Judge, Patent Trial and Appeal Board
U.S. Patent & Trademark Office

Moderator:
Dorothy P. Whelan
Principal
Fish & Richardson P.C.

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