Day 1 - Wednesday, March 4, 2015

9:00
Patent Prosecution Master Class — Best Practices for Drafting Claims and Prosecuting Medical Device Patents in the Post-AIA Landscape
1:15
Co-Chairs Opening Remarks
1:30
PTO Keynote Address
2:30
Prosecutor and Litigator Roundtable — Adapting to the New Landscape of Patentable Subject Matter, Indefiniteness, and Willfulness
3:30
Afternoon Refreshment Break
3:45
An Obvious Spotlight — Exploring the Effects of KSR and Gilead
4:30
Exploring the Parallel World of IPR Proceedings
5:30
Conference Adjourns to Day 2

Day 2 - Thursday, March 5, 2015

8:30
Continental Breakfast
9:00
Co-Chairs Opening Remarks
9:15
PTAB Keynote
10:00
Joint and Divided Infringement Post- Akamai — Adjusting Claim Drafting and Litigation Techniques
11:00
Morning Refreshment Break
11:15
Balancing the Costs and Benefits of Patent Litigation from Injunctions to Damages
12:15
Networking Luncheon Sponsored by:
1:30
Views from the Benches — Insights from Multiple Judicial Venues on the Effects of Parallel Proceedings, Managing Discovery, Construing Claims, Assessing Damages, and More
2:45
In-House Perspective — Managing Patent Prosecution and Litigation Costs and Budgets; Adapting to the Post-AIA World; Streamlining Discovery; and More
3:45
Afternoon Refreshment Break
4:00
Testing the NPE Waters — Evaluating Whether “Trolls” Are Targeting the Medical Device Space; Discussing Choice of Venue Issues
4:30
ETHICS and Medical Devices IP: Inequitable Conduct and New PTO Ethical Rules
5:30
Conference Concludes

Day 1 - Wednesday, March 4, 2015

9:00
Patent Prosecution Master Class — Best Practices for Drafting Claims and Prosecuting Medical Device Patents in the Post-AIA Landscape

David J. Simonelli
Shareholder
Reising Ethington P.C. (Detroit, MI)

Patricia Bianco
Supervisory Patent Examiner
U.S. Patent and Trademark Office

Paul Lee
Senior IP Counsel
DexCom Inc. (San Diego, CA)

In this hands-on, interactive workshop, current PTO examiners and leading patent prosecution counsel will guide you through the new PTO landscape and share best practices on securing and maintaining patent prosecution cost-effectively. Learn successful techniques, identify practice pitfalls, and streamline the process by developing an understanding of how the new PTO operates. Topics for discussion include:

  • Analyzing how the AIA has affected and will continue to affect medical device patent practice
    • Exploring how the change from “first to invent” to “first to file” has impacted medical device patent practice
    • Adapting to the expansion of what constitutes “prior art”
    • Understanding the use of supplemental examination, ex parte reexamination, or reissue to cure defects before a patent is challenged
  • Speaking the language of the PTO — advanced techniques for claim drafting and patent examiner interviews
    • Delineating the meaning of claim terms in the specification
    • Balancing claiming broadly with the risk of validity challenges down the line
    • Claiming through functional language (update on recent cases)
    • Maximizing your opportunity to explain the science behind your device at the interview
    • Understanding the examiner’s perspective
    • Incorporating examiner interviews into your practice
    • Crafting an effective response to an inquiry or rejection
  • IDS practice — how the PTO handles supplemental examination of prior art and third party submissions

​9:00 am – 12:00 pm (Registration & Continental Breakfast begins at 8:30 am)

1:15
Co-Chairs Opening Remarks

Shannon Mrksich Ph.D.
Senior IP Counsel
Danaher Corporation

Jeffrey Hohenshell
Senior Patent Attorney
Medtronic, Inc.

1:30
PTO Keynote Address

Janet Gongola
Patent Reform Coordinator
United States Patent and Trademark Office (USPTO)

In this exclusive address, Ms. Gongola will discuss the impact of the AIA upon the prosecution of medical device patents, as well as illuminating priorities for patent examiners when reviewing applications.

2:30
Prosecutor and Litigator Roundtable — Adapting to the New Landscape of Patentable Subject Matter, Indefiniteness, and Willfulness

Matthew K. Blackburn
Partner
Locke Lord LLP

Jeffrey Hohenshell
Senior Patent Attorney
Medtronic, Inc.

Michael A. Siem
Shareholder
Farney Daniels P.C.

The Supreme Court and Federal Circuit have had much to say of late on the basics of patent issuance. The PTO — examiners and administrative judges alike — and district courts then need to incorporate these standards into their review of existing patents, or those challenged in IPRs or litigation. In this session, experienced medical device patent prosecutors and litigators will draw on examples from cases before the PTO or district courts to explore the effects the major cases identified below have had on (a) evaluating patent portfolios, (b) drafting future claims, and (c) adjusting litigation tactics:

  • Mayo v. Prometheus and Assoc. for Molecular Pathology v. Myriad Genetics
  • Alice Corp. Pty. Ltd. v. CLS Bank Intern
  • Nautilus, Inc. v. Biosig Instruments, Inc.
  • Teva v. Sandoz and Octane Fitness v. Icon Health and Fitness

3:30
Afternoon Refreshment Break
3:45
An Obvious Spotlight — Exploring the Effects of KSR and Gilead

Jeremy C. Lowe
Partner
Axinn, Veltrop & Harkrider LLP

Joshua I. Rothman
Partner
Fitzpatrick, Cella, Harper & Scinto

Clark A.D. Wilson
Senior Counsel
Merchant & Gould P.C. (Atlanta, GA)

In the wake of KSR v. Teleflex and Gilead v. Natco, what qualifies as obvious has remained murky. The panelists will seek to clarify this standard by diving into how the PTO and various district courts have applied it.

4:30
Exploring the Parallel World of IPR Proceedings

Gregory A. Morris
Partner
Honigman Miller Schwartz and Cohn LLP

Richard T. McCaulley Jr.
Partner, Chair IP Litigation Group
Ropes & Gray LLP

Matthew J. Becker
Partner
Axinn Veltrop & Harkrider LLP

Erik M. Drange
Senior Counsel
3M (St. Paul, MN)

  • Examining the impact of IPR procedures so far on the medical device space
  • Knowing when it is strategically prudent to file an IPR
  • Will District Court Proceedings be stayed in light of IPR filings?
  • Lessons learned from the first IPRs
  • Pre-IPR filing considerations
  • Analysis of key PTAB appeals before the Federal Circuit

5:30
Conference Adjourns to Day 2

Cocktail Reception Sponsored by:

Day 2 - Thursday, March 5, 2015

8:30
Continental Breakfast
9:00
Co-Chairs Opening Remarks

Shannon Mrksich Ph.D.
Senior IP Counsel
Danaher Corporation

Jeffrey Hohenshell
Senior Patent Attorney
Medtronic, Inc.

9:15
PTAB Keynote

Hon. James D. Smith
Chief Administrative Patent Judge Patent Trial and Appeal Board
U.S. Patent and Trademark Office

Numerous parties have availed themselves to the various new proceedings created by the AIA, particularly the IPR proceeding. Chief Judge Smith will provide commentary on lessons learned from cases decided to date, including best practices for attorneys appearing before PTAB.

10:00
Joint and Divided Infringement Post- Akamai — Adjusting Claim Drafting and Litigation Techniques

Sarah Cooleybeck
Partner
Foley Hoag LLP

Robert A. Surrette
Shareholder
McAndrews Held & Malloy Ltd.

Tom Wolfe
Senior Patent Counsel
Medtronic Spinal and Biologics

With the Supreme Court’s decision of Limelight v. Akamai, the landscape of joint or divided infringement has been changed. Lack of attention to divided infringement during claim drafting can defeat the value of patents for a device company. Meanwhile, existing patents may be more susceptible to attack. Drawing from recent case law, this session will identify industry areas or types of medical device patents that are prone to attack. Additionally, the panelists will discuss how to draft claims going forward to safeguard against divided infringement issues, and how to handle all aspects of litigating such a claim.

11:00
Morning Refreshment Break
11:15
Balancing the Costs and Benefits of Patent Litigation from Injunctions to Damages

Shawn Kolitch Ph.D., M.S.
Partner, Intellectual Property Attorney
Kolisch Hartwell, P.C.

Bradley T. Lennie
Partner
Hunton & Williams LLP

Peter A. Socarras
Senior Director, Intellectual Property
Nevro Corp. (Redwood City, CA)

Lawrence M. Sung PhD
Partner
Wiley Rein LLP

  • Exploring ways to reduce patent litigation costs
  • When is an injunction likely?
    • The impact of eBay on medical device patent litigation
    • The circumstances in which an injunction is likely
    • Balancing the public interest with competitive injury
  • Determining patent infringement damages
    • Raising the floor — how to create a high “reasonable royalty” rate
    • Conventional and unconventional arguments for lost profits
    • Apportionment and the value added by a patented invention
  • Achieving settlement with a strong remedies case
    • Invest early in remedies analysis
    • How to present your position directly to the opposing decision maker

12:15
Networking Luncheon Sponsored by:

1:30
Views from the Benches — Insights from Multiple Judicial Venues on the Effects of Parallel Proceedings, Managing Discovery, Construing Claims, Assessing Damages, and More

Hon. James F. Holderman
District Judge
U.S. District Court for the Northern District of Illinois

Honorable Faith S. Hochberg (ret.)

U.S. District Court, District of New Jersey

The Honorable Elaine E. Bucklo
Senior Judge
United States District Court, Northern District of Illinois (Chicago, IL)

Moderator:

Scott P. McBride
Shareholder
McAndrews, Held & Malloy, Ltd.

2:45
In-House Perspective — Managing Patent Prosecution and Litigation Costs and Budgets; Adapting to the Post-AIA World; Streamlining Discovery; and More

Amy Lydon
Intellectual Property Counsel
Covidien Group, Surgical Solutions Medtronic

Gael Diane Tisack
Cardiovascular Group Vice President of Legal Affairs & Terumo Americas Vice President of Intellectual Property
Terumo Medical Corporation (Ann Arbor, MI)

Paul Lee
Senior IP Counsel
DexCom Inc. (San Diego, CA)

Erik M. Drange
Senior Counsel
3M (St. Paul, MN)

Moderator:

Barry E. Bretschneider
Partner
BakerHostetler

3:45
Afternoon Refreshment Break
4:00
Testing the NPE Waters — Evaluating Whether “Trolls” Are Targeting the Medical Device Space; Discussing Choice of Venue Issues

Mark L. Mathie
Principal
McKool Smith, P.C.

Matthew A. Smith
Partner
Turner Boyd LLP

Mircea Tipescu
Shareholder
Brinks Gilson & Lione

  • Evaluating the “threat” of litigation by non-practicing entities or trolls
    • Are traditional “trolls” targeting or starting to target medical device companies?
    • Is litigation commonly brought by non-practicing entities?
    • If so, what segments of the industry are being targeted and what are the nature of the claims?
  • Analyzing venue considerations
    • Where are non-practicing entities and other plaintiffs filing?
    • Does the AIA preclude forum shopping?
    • Are rocket dockets being sought to avoid the possibility of IPRs?

4:30
ETHICS and Medical Devices IP: Inequitable Conduct and New PTO Ethical Rules

Bradford J. “Jim” Badke
Partner
Ropes & Gray LLP

Trevor Copeland
Shareholder
Brinks Gilson & Lione

  • USPTO spotlight: What are OED’s expectations of attorneys in this space?
  • Understanding when to raise the inequitable conduct defense under the continually evolving Therasense standard
    • Rule 36 affi rmations of inequitable conduct cases
    • Update on recent relevant inequitable conduct cases
    • Complying with the USPTO duty of disclosure: what to submit and how much?
  • Analysis of the PTO’s 2013 ethical Rules of Professional Conduct
    • Overview of key provisions including confl icts, sanctions and experts affecting life sciences practitioners
    • How do these work with the ABA model rules and state bar rules?
  • Avoiding ethical quagmires in the IPR/PGR space for life sciences companies
    • What conflicts of interest rules apply with parallel litigation: USPTO or District Court?
    • Duty of candor and good faith owed by petitioner challenging the patent
    • Avoiding putting forth information inconsistent with a position
    • Applying traditional conflicts analysis and principals when agreeing to work for a client: Are ABA comments to the model rules instructional?

5:30
Conference Concludes