By Sue Gerber and Matt Johnson

After having to be postponed due to coronavirus concerns, the 2020 PTAB Bar Association Annual Conference has now been rescheduled and is going forward on September 24-25, 2020, with pre-conference sessions being held September 23, 2020.  This year’s conference will not be attended in person, but it will be held virtually, making it available to all participants world-wide and may draw a wider audience than in previous years.  Regardless of the format, this year’s conference promises to be just as interesting, informative and insightful as previous years.

The pre-conference agenda starts with PTAB Bootcamp, led by a panel including Administrative Patent Judges Rae Lynn Guest, David C. McKone, and Christopher Paulraj.  This interactive session is geared toward lawyers who are interested in an overview of the who, what, and when of IPRs, PGRs, CBM reviews, and appeals using an IPR fact pattern from institution to final written decision, discussing best practices for petition drafting, briefing before the Board, discovery parameters boundaries, and tips for a successful oral argument.  Alternatively, participants may register for the PTAB Master Class, which is geared toward lawyers who have handled more than fifty AIA trial proceedings.  The PTAB Master Class, led by Administrative Patent Judges Kevin Cherry and Tom Giannetti, Lead Administrative Patent Judge Georgianna Witt Braden, along with PTAB practitioners, including Jones Day Partner Matt Johnson, will explore complex and strategic decisions in AIA trial proceedings, how to approach difficult situations, and other insights and perspectives.  The final session for the pre-conference agenda is a panel discussion on PTAB and EPO Opposition Proceedings including Deputy Chief Administrative Patent Judge Jacqueline Bonilla, Wolfgang Sekretaruk from the European Patent Office and other PTAB practitioners.

Thursday’s session starts with a keynote address from PTAB Chief Judge Boalick.  The first general session topic will cover administrative law for PTAB practitioners, led by Administrative Law Judge Clark S. Cheney from the International Trade Commission, Vice Chief Administrative Patent Judge Scott Weidenfeller, and others.  The panel will discuss the use of precedential agency decisions, the role of the public in agency rulemaking, and the PTAB’s increasing reliance on discretionary denials.  The second general session of the day provides an insider’s perspective from the PTAB judges, featuring Vice Chief Administrative Patent Judge William Fink and Administrative Patent Judges Kal Deshpande, Linda E. Horner, and Amanda Wieker.  This session will provide first-hand insights from Administrative Patent Judges with experience presiding over PTAB trials and a special focus on cutting edge topics such as disclaimers, estoppel, and discretionary denials.  After lunch, the third general session will cover IPR timing issues, featuring Lead Administrative Patent Judge Michael Tierney, and will explore how recent changes in practice at the PTAB implicate IPR timing considerations.  For the fourth general session, participants will be able to choose between sessions led by PTAB practitioners discussing claim amendments under the PTAB Pilot Program or an economic analysis of PTAB proceedings.  The final session of the day features a discussion with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

Friday’s agenda starts with a general session regarding hot topics and oral argument in PTAB practice.  This panel features Lead Administrative Patent Judges Scott Moore, Melissa Haapala, and James Worth, who, with others on the panel, will present short mock arguments involving current hot issues.  From there, participants may choose between a session covering the nature of discovery at the PTAB or an analysis of trends over the years, featuring Lead Administrative Patent Judge William Saindon.  After lunch, the last three sessions of conference will be presented.  First, PTAB practitioners and appellate lawyers will lead a discussion of PTAB-specific appellate issues and practice points, such as standing and issue reviewability.  Second, the conference will host a view from the Federal Circuit, featuring Circuit Judges Kara Farnandez Stoll, Pauline Newman, and Sharon Prost, who will share their views and practice tips for improving the odds of success on appeal.  Third, wrapping up the conference will be the final session covering ethics before the PTAB featuring Lead Administrative Patent Judge Susan Mitchell and Administrative Patent Judge Michael Kim.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.