NJIPLA & NYIPLA Joint Program: The New World Order -- Current Developments in Challenging and Defending Patents in the PTAB

Event Date
  • 12/2/2015   8:00 AM - 6:30 PM
    Please arrive early for registration
  • Woodbridge Hotel at Metropark
    120 Wood Ave S
    Iselin, New Jersey 08830

Reference Materials:

Panel 1
Panel 2
Panel 3
Panel 4


The New World Order –– Current Developments in 

Challenging and Defending Patents in the PTAB
Wednesday, December 2, 2015
Hotel Woodbridge at Metropark, Iselin, NJ*


8:00-9:00 AM

- Hot Breakfast Buffet will be served -

Morning CLE Registration (excludes lunch)
Full-Day CLE Registration (includes lunch)

9:00-9:10 AM

Welcome Remarks
NJIPLA President Jon Chiodo, Senior Patent Counsel, Johnson & Johnson
NYIPLA President Dorothy Auth, Partner, Cadwalader, Wickersham & Taft

9:10-10:40 AM

Topic 1 Overview of USPTO PTAB proceedings from District Court and PTAB judges - stats, trends/direction, and proposed PTAB rule changes 

Moderator: Dorothy AuthPartner, Cadwalader, Wickersham & Taft
- Honorable Jerome Simandle, Chief Judge, United States District Court for the District of New Jersey
Honorable Scott Boalick, Vice Chief Patent Judge, Patent Trial and Appeal Board
Honorable Susan Mitchell, Lead Judge, Patent Trial and Appeal Board

10:40-10:55 AM Refreshment Break
10:55-12:25 AM

Topic 2 PTAB Hot Topics in the Hi-Tech Space. The presentation will include an analysis of recent trends, statistics, and lessons learned; consideration of the PTAB’s new rules; best practices for identifying and challenging the identification of real parties-in-interest; and a lively discussion about whether IPRs are really an effective defensive measure against patent enforcement by NPEs.

Moderator: Mark Abate, Partner, Goodwin Procter
Ken Corsello, Counsel, IBM
Alexander Poltorak, Founder, Chairman and the CEO of General Patent Corporation
Edward Tempesta, Senior Counsel, MasterCard

11:45 AM - 12:15 PM

Afternoon CLE Registration Only (includes lunch)

12:25-1:15 PM


1:15-1:45 PM

Introduction: Dorothy Auth, NYIPLA President
Luncheon Speaker Honorable Pauline Newman,
Circuit Judge, United States Court of Appeals for the Federal Circuit

1:45-3:10 PM

Topic 3 The US Congress has been grappling with changes to the patent law provisions regarding IPRs and other post-grant proceedings (among other patent- / AIA-related proposed legislation). Learn about this process – and its current status – from key practitioners and professional advocates / strategic counsel who’ve interacted with Congress on those changes. Explore the players and advocates on both sides of the proposed legislation, and the positions they took and the ways they garnered support for their positions.

Moderator: Jeffrey Butler, Acting General Counsel and Advisor, Sentient Lifesciences
Henry Hadad, Senior Vice President and Deputy General Counsel, Bristol Myers Squibb
Chris Israel, Partner, American Continental Group
Colman Ragan
, Intellectual Property Counsel, Actavis
Peter Waibel, Patent Litigation Head, Novartis

3:10-3:25 PM

Refreshment Break

3:25-4:45 PM

Topic 4 Hedge-Fund Sponsored IPR Challenges to Pharmaceutical Patents: Should They Be Treated Like Every Other Filing? Many have criticized hedge-fund sponsored IPR challenges to patents covering approved pharmaceutical products as a means for the hedge funds to reap profits in the short term while chilling biotech and pharma innovation in the long term.  What’s the evidence for and against?  Are PTAB decisions focused on the merits of the filings alone an adequate response to properly balance the interests at stake?

Moderator: Annemarie Hassett, Executive Director, NYU School of Law, Engelberg Center
on Innovation Law & Policy
David Opderbeck, Professor of Law and Director, Gibbons Institute of Law, Science & Technology
Timothy Salmon, Principal and Co-founder, Empire IP

4:45-5:00 PM

Closing Remarks Jon Chiodo, NJIPLA President

5:00-6:30 PM

Networking Reception 

- Cocktails & Hors d'oeuvre will be served -

*Conveniently located a very-short walking distance from the Metropark Station servicing NJ Transit and Amtrak. For those traveling from NYC by train: The direct-access train takes about 30 minutes from NY Penn Station. 

Hotel Woodbridge at Metropark
120 Wood Avenue South
Iselin, NJ 08830