IP Counsels Committee Conference

November 16-18, 2020・Boston, MA

Schedule of Events

IPCC Fall Schedule of Events*

*as of 10/28/2019

Monday, November 18

Registration Open

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 

 

Refreshment Break

3:00 pm - 3:30 pm

 

Education Session 1

3:30 pm - 4:45 pm

Who Owns That Patent? Do Your Interactions with Others Jeopardize Your Patent Ownership?

Sponsored by McNeill Baur

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

Speakers:

  1. Adam M. Breier, PhD, Partner, McNeill Baur
  2. Sendil Devadas, PhD, Assistant Chief IP Counsel, Corteva Agriscience
  3. Phil Makrogiannis, Head of IP, Cardinal Health

 

Welcome Reception

5:30 pm - 7:30 pm 

 

Tuesday, November 19, 2019

Breakfast

8:00 am - 9:00 am

 

Education Session 2

9:00 am - 10:15 am

A Penny for Your Thoughts: Secrets and Strategies for Managing Litigation Budgets

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?

Moderator: Lisa B. Pensabene, Esq., Partner, O'Melveny & Myers LLP

Speakers:

  1. Hassen A. Sayeed, M.D., Partner, O'Melveny & Myers LLP
  2. Henry Gu, Chief IP Counsel, Akebia Therapeutics, Inc.
  3. Claire Laporte, Head of Intellectual Property, Ginkgo Bioworks, Inc.
  4. Richie Paul, VP, Intellectual Property Operations, Alkermes

 

Refreshment Break

10:15 am - 10:30 am

 

Education Session 3

10:30 am - 11:45 am

In the Hot Seat - Case Law Update and Trends

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.

Moderator: Eric Marandett, IP Litigation Practice Group Leader, Choate Hall & Stewart LLP

Speakers:

  1. Stephanie Schonewald, PhD, Counsel, Choate Hall & Stewart LLP
  2. Dana Mahadeo, Senior Director, Intellectual Property, Alnylam
  3. Jim Harrington, Senior Vice President, Intellectual Property, Novartis

 

Networking Lunch Buffet

11:45 am - 1:00 pm  

 

Education Session 4

1:00 pm - 2:15 pm

What You Need to Know About IP Transactions with Universities & Nonprofits

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.

Moderator: Ha Kung Wong, Partner, Venable Fitzpatrick

Speakers:

  1. Chris Borello, Partner, Venable Fitzpatrick
  2. Laura Fahey Fritts, Director of License and Patent Strategy & Chief Intellectual Property Officer, Emory University
  3. Brion Berman, JD, RTTP, Assistant Director, Technology Transfer, University of Central Florida
  4. Ruth Atherton, PhD, JD, Director of Legal, Global Health, Bill & Melinda Gates Foundation

 

Refreshment Break

2:15 pm - 2:30 pm

 

Education Session 5

2:30 pm - 3:45 pm

(Trade) Secrets from the Trenches: How to Prepare for and Protect Your Company from Trade Secret Litigation

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.

Moderator: Ryan Johnson, Partner, Fenwick & West LLP

Speakers:

  1. Kenia Rincón, Privacy & Data Security Director, Fenwick & West LLP
  2. Supervisory Special Agent Kevin Varpness, Federal Bureau of Investigation, Cyber and Counter Intelligence Team
  3. Rosemarie Wilk-Orescan, Senior Counsel, Novo Nordisk Inc.

 

Happy Hour

3:45 pm -5:00 pm

 

Activity and Dinner Reception

5:30 pm - 8:30 pm 

 

Wednesday, November 20, 2019

Breakfast

8:00 am - 8:30 am

 

Education Session 6

8:30 am - 9:45 am 

Getting Your (Patent) House in Order: Preparing for Biosimilar Challenges

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

Moderator: Steven Maslowski, Partner, Akin Gump Strauss Hauer & Feld LLP

Speakers:

  1. Matthew Pearson, Partner, Akin Gump Strauss Hauer & Feld LLP
  2. Paul Golian, Vice President & Assistant General Counsel, Bristol-Myers Squibb
  3. Alysia Finnegan, Counsel, Intellectual Property Group, Merck

 

Refreshment Break

9:45 am - 10:00 am

 

Education Session 7

10:00 am - 11:15 am 

Section 101 Patent Eligibility: The Good, The Bad, and The Ugly

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. 

Moderator: Robert Shaffer, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Speakers:

  1. Cora Holt, Attorney, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  2. Melanie Baird, Partner, Blake, Cassels & Graydon LLP
  3. David Hoffman, Executive Director, Intellectual Property, Parker Institute for Cancer Immunotherapy

 

Program Adjourns

11:15 am