Momentum: IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB: San Jose

Fish is a Founding Sponsor of the IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB: San Jose Edition, May 10-11, 2016 at the Silicon Valley Capital Club in San Jose, CA.

Principaland Post-Grant Practice Co-ChairKarl Renner, and Managing Principal (SV) Michael Headley,are moderators during this premier event for corporate IP counsel. The agenda will focus on strategies and best practices for effectively challenging or defending patent validity at the Patent Trial and Appeal Board.
Panel details below. For more information, visit the event website.

May 10, 2016

Focus on the PTAB - District Court Interplay: Timing, Discovery, Evidence, Claim Construction and the Management of Joint Patent Proceedings

During this session attendees 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 diverse corporate and judicial perspectives as the panelists discuss:

  • Divergent discovery and the admissibility of evidence in each forums as well as in co-pending counterpart proceedings
  • Timing - how to address consistency or a lack thereof in the context of parallel proceedings
  • Claim construction - 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?
  • The weight and precedential value of PTAB institution and final decisions in adjudicating patent cases, including the evidentiary weight (if any) that such decisions should have at trial
  • The effect on PTAB proceedings of stays issued (or not issued) in District Court cases
  • The estoppel effects of post-grant trials and decisions

Moderator: Karl Renner, Principal, Co-Chair Post-Grant Practice, Fish & Richardson

Time will be reserved for Q&A at the conclusion of the panel.

May 11, 2016


PTAB Bench “Pet Peeves” – Views from the PTAB Bench and Practice Recommendations for Counsel from the Petition to Oral Argument and Everything In Between

A rare opportunity to hear directly from the PTAB bench what their true “pet peeves” are, hear firsthand during this session what the Judges’ key preferences and dislikes are. Walk away from this panel with an understanding of what type of information/behavior the Judges will tolerate and reject by parties on both sides as you gain insider perspectives on how to best position your case for success in front of the PTAB bench.

Moderator: Michael Headley, ManagingPrincipal (Silicon Valley),Fish & Richardson