Monday, November 18
1:00 pm - 4:30 pm
IPCC Business Meeting & Working Luncheon*
*Open to IP Counsels Committee company members only
12:00 pm - 3:00 pm
3:00 pm - 3:30 pm
Education Session 1: Who Owns That Patent? Do Your Interactions with Others Jeopardize Your Patent Ownership?
3:30 pm - 4:45 pm
Sponsored by McNeill Baur
Who Owns That Patent? Do Your Interactions with Others Jeopardize Your Patent Ownership?
Patent rights form the backbone of many companies’ business plans and yet companies often do not adequately consider the risks to their patent estate when they interact with third parties. This panel will discuss how third-party interactions can jeopardize a company’s exclusive patent ownership. We will review recent inventorship caselaw and surprising ownership-altering results after interactions with third parties. We will also discuss:
- Troublesome factual situations and how to manage agreements with third parties;
- how potential inventorship and ownership scenarios impact drafting and prosecution strategies; and
- evaluating third party patents and detecting inventorship/ownership problems (FTO, litigation).
Moderator and Speaker:
Rebecca M. McNeill, Founding Partner, McNeill Baur
Adam M. Breier, PhD, Partner, McNeill Baur
Sendil Devadas, PhD, Assistant Chief IP Counsel, Corteva Agriscience
Phil Makrogiannis, Head of IP, Cardinal Health
5:30 pm - 7:30 pm
Ole Red, 300 Broadway, Nashville, TN
For a BIG Nashville welcome join us at the legendary "Ole Red" restaurant. Enjoy award-winning southern fare and honky-tonk style music, plus a possible Blake Shelton appearance!
Tuesday, November 19, 2019
8:00 am - 9:00 am
Education Session 2: A Penny for Your Thoughts: Secrets and Strategies for Managing Litigation Budgets
9:00 am - 10:15 am
Sponsored by O'Melveny & Myers LLP
How do biotechnology companies and their law firms control legal spend while ensuring results? This panel will feature in-house and outside counsel perspectives on the art of budgeting. Our panel will explore best practices around staffing, reserves, creative AFAs (is the billable hour really dead?), how to deal with surprises, and common cost drivers. With interactive audience discussion, we will ask: how can those spending a king’s ransom become better bargain shoppers?
Lisa B. Pensabene, Esq., Partner, O'Melveny & Myers LLP
Henry Gu, Chief IP Counsel, Akebia Therapeutics, Inc.
Hassen A. Sayeed, M.D., Partner, O'Melveny & Myers LLP
10:15 am - 10:30 am
Education Session 3: In the Hot Seat - Case Law Update and Trends
10:30 am - 11:45 am
Sponsored by Choate Hall & Stewart LLP
This panel will assess the latest from the Supreme Court and Federal Circuit by reviewing cases to watch in the upcoming term and recent developments including the evolving standard of IPR estoppel (various cases), standing to appeal IPR decisions (e.g. Dex Media), objective indicia of obviousness (Acorda Therapeutics) and lost profits as Lanham Act damages (Romag), among other issues.
Eric Marandett, Co-Chair of IP Litigation, Choate Hall & Stewart LLP
Dana Mahadeo, Senior Director, Intellectual Property, Alnylam
Stephanie Schonewald, PhD, Counsel, Choate Hall & Stewart LLP
Networking Lunch Buffet
11:45 am - 1:00 pm
Education Session 4: What You Need to Know About IP Transactions with Universities & Nonprofits
1:00 pm - 2:15 pm
Sponsored by Venable | Fitzpatrick
We will discuss unique challenges engaging in IP transactions with universities and nonprofit organizations, including license agreements, indemnity provisions, and litigation concerns. Panelists will include participants from private and public universities and nonprofits.
Ha Kung Wong, Partner, Venable | Fitzpatrick
Ruth Atherton, PhD, JD, Director of Legal, Global Health, Bill & Melinda Gates Foundation
Brion Berman, JD, RTTP, Assistant Director, Technology Transfer, University of Central Florida
Chris Borello, Partner, Venable | Fitzpatrick
Laura Fahey Fritts, Director of License and Patent Strategy & Chief Intellectual Property Officer, Emory University
2:15 pm - 2:30 pm
Education Session 5: (Trade) Secrets from the Trenches: How to Prepare for and Protect Your Company from Trade Secret Litigation
2:30 pm - 3:45 pm
Sponsored by Fenwick & West LLP
This panel will provide tips to help you protect your company from trade secret litigation, gleaned from insiders who have experienced it firsthand. The panelists will share their experience and insights into how companies can prepare themselves (where to start, what to consider, how to plan). The panel will also touch on recent happenings in trade secret law, the availability of criminal remedies, important US cases from the past year, and international perspectives on trade secret litigation.
Ryan Johnson, Partner, Fenwick & West LLP
3:45 pm -5:00 pm
Activity and Dinner Reception
5:30 pm - 8:30 pm
Goo Goo Shop, 116 3rd Ave S, Nashville, TN
Who said you can't have dessert before dinner? Take a journey back in time with the Goo Goo Cluster! This Nashville specialty is a delicious combination of marshmallow nougat, caramel, roasted peanuts and real chocolate guaranteed to satisfy your sweet tooth. We'll hear the history behind the chocolate, and enjoy a hands-on experience before a dinner buffet of southern classics!
Wednesday, November 20, 2019
8:00 am - 8:30 am
Education Session 6:Getting Your (Patent) House in Order: Preparing for Biosimilar Challenges
8:30 am - 9:45 am
Sponsored by Akin Gump Strauss Hauer & Feld LLP
We will discuss concrete steps you can take now to prepare for a future biosimilar challenge, including:
- Identifying all potentially relevant patents
- Conducting due diligence of your patent estate to ensure ownership, exclusive licensee status and assertion rights
- Understanding issues relating to obviousness-type double patenting, terminal disclaimers, and patent term
- Pursing additional coverage through pending patent applications
Steven Maslowski, Partner, Akin Gump Strauss Hauer & Feld LLP
Ken Dow, Vice President, Pharmaceutical Patent Strategy, Johnson & Johnson
Alysia Finnegan, Counsel, Intellectual Property Group, Merck
Paul Golian, Vice President & Assistant General Counsel, Bristol-Myers Squibb
Matthew Pearson, Partner, Akin Gump Strauss Hauer & Feld LLP
9:45 am - 10:00 am
Education Session 7: Section 101 Patent Eligibility: The Good, The Bad, and The Ugly
10:00 am - 11:15 am
Sponsored by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
This panel will examine the contours of recent section 101 decisions from the PTAB, district courts, and the Federal Circuit post-January 2019 USPTO guidance, including a review of cases after the Berkheimer/Aatrix decisions. The panel will also discuss pending legislation concerning patent eligibility and the potential impact on Life Science strategies.
Robert Shaffer, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Melanie Baird, Partner, Blake, Cassels & Graydon LLP
David Hoffman, Executive Director, Intellectual Property, Parker Institute for Cancer Immunotherapy
Cora Holt, Attorney, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
* As of October 7, 2019. Please note this schedule is subject to change.
Statement on Diversity
BIO is committed to workforce development, diversity, and inclusion, and incorporates these values into all aspects of BIO operations. Program development for BIO’s events will be considered in this light, with specific attention paid to speakers’ gender, race, ethnic background, sexual orientation, and gender identity, as well as their company’s focus, financing, geographic location, and size. Diverse programming at BIO’s events allows BIO to remain a strong leader in efforts to ensure that the biotechnology industry can attract, develop, and retain a high-quality, globally competitive employee talent pool. Learn more about Workforce Development, Diversity, & Inclusion at BIO.