Part 1 | Current State of the Law under 35 U.S.C. 101
The Supreme Court decisions in Assoc. for Molecular Pathology v. Myriad Genetics, Inc. and Alice Corp v. CLS Bank Int'l have left the state of the law of patentable subject matter under 35 U.S.C. 101 in an extreme state of flux. Myriad overturned 40 years of precedent in the USPTO and in the Courts. Alice created great uncertainty, particularly in the patentability of business methods and software patents. How is the USPTO applying these two important decisions, and how will the law in this area further develop?
Panelists
Tom Krause, Deputy Solicitor, United States Patent and Trademark Office
Bob Bahr, Deputy Commissioner for Patent Examination Policy, United States Patent and Trademark Office
David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office from 2009 to 2013; Partner, Cravath, Swain & Moore LLP
Moderators
Patrick Keane, Buchanan Ingersoll & Rooney PC
Joerg-Uwe Szipl, Griffin and Ezipl, P.C.
Part 2 | Use of Fact and Expert Witnesses at the PTAB: Costs, Strategies, and Pitfalls
A discussion on strategies that all patent owners and petitioners should consider in any PTAB proceeding. The panel will delve into the costs and benefits of various approaches to PTAB proceedings from the perspective of (1) an in-house practitioner trying to make recommendations to its senior management and (2) a seasoned PTAB practitioner trying to select the most effective approaches based on the newest practice trends and rules. Some topics covered will include the strategic implications of (a) recent amendments to the PTAB trial guide—such as allowing patent owners to submit expert testimony to the PTAB before an IPR institutes, (b) different approaches for establishing priority date or printed publication status, and (c) experts in litigation versus PTAB proceedings.
Panelists
Christopher Suarez, Williams & Connolly LLP
Kenie Ho, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner
Megan F. Raymond, Ropes & Gray LLP
Moderator
Rick Neifeld, Neifeld IP Law, PC