What We’ll Be Talking about at the BIO Spring IPCC Conference

Patently BIOtech

It’s time once again for BIO’s Spring IPCC Conference!

BIO’s biannual Intellectual Property Counsels Committee Conference provides informative and interesting educational sessions on what’s happening in the biotech IP sector. It also provides a chance to network with industry colleagues, promoting discussion and fostering new and exciting relationships. Attendees represent all swaths of the biotech sector, including pharma companies, law firms, academia and government, coming together from the U.S. and abroad to attend this one of a kind event. You can register for IPCC here. 

So let’s take a look at this year’s program!!

Wednesday, March 30, 2016

  • Registration – 11:30 am – 3:30 pm
  • IPCC Business Meeting & Working Luncheon - 12:00 pm – 3:15 pm (*open to IP Counsels Committee company members only)

Pre-Conference Workshop: The Rocky Road to Personalized Medicine - 3:30 pm – 4:30 pm

Sponsored by: McDonnell Boehnen Hulbert & Berghoff LLP

One of the purported benefits of (and economic justifications for) the Human Genome Project and its related genetic analyses was personalized medicine, where disease treatment and therapeutic intervention (particularly with pharmaceuticals) was custom-fit to the patient based on their unique genetic profile. Such profiles were supposed to fit on an identify card that could be read by a physician and from which the doctor could choose from alternative therapies with an eye toward providing the best care possible. That hasn’t happened, in part because diagnosing and treating disease is more complicated than knowing a patient’s genotype or phenotype. But recent court decisions and resulting impediments to protecting diagnostic methods and naturally occurring therapeutic agents have created a situation where the assumed return on investment has become questionable at best, threatening to retard if not prevent the swift development of personalized medicine. The panel will discuss the future of personalized medicine with in-house counsel, outside counsel and academia in an attempt to develop strategies to protect the investment necessary and at the same time facilitate further commercial development of this technology.

Moderator: Donald L. Zuhn, Jr., Partner, McDonnell Boehnen Hulbert & Berghoff LLP


  • Paul Beresford, Vice President, Chief Business Officer, Biodesix
  • Benjamin Jackson, JD, VP, Legal Affairs, Myriad Genetics
  • Kristen Neumann, Executive Director, Biotechnology Licensing and Librassay,
  • Kevin E. Noonan, Partner, McDonnell Boehnen Hulbert & Berghoff LLP
  • Welcome Reception – 5:30 pm – 7:30 pm

Sponsored by: Brinks Gilson & Lione

Thursday, March 31, 2016

  • Networking & Keynote Breakfast - 8:00 am – 9:00 am

Sponsored by: Seed Intellectual Property Law Group PLLC

Speaker: Ram Shukla, Regional Manager of the USPTO Texas Regional Office

  • Refreshment Break - 9:00 am – 9:15 am

Session 1: Evolution or Devolution: Developments at the PTAB? - 9:15 am – 10:30 am

Sponsored by: Fenwick & West LLP

To whom is the PTAB accountable? Are there any constraints on the PTAB’s jurisdiction? What ramifications do the PTAB’s institution decisions and final decisions have for traditional patent infringement litigation? The panel will explore both strategic and practical considerations stemming from the PTAB’s accumulating jurisprudence.

Moderator: David Tellekson, Partner, Fenwick & West LLP


  • Ewa Davison, PhD, Associate, Fenwick & West LLP
  • Michael D. Lisi, Sr. Corporate Counsel, Litigation, Roche Molecular Systems,
  • Jacob S. Sherkaw, Associate Professor of Law, New York Law School
  • Refreshment Break - 10:30 am – 10:45 am

Session 2: Express Ticket to Nowhere: How Corporate Engineers Derail the Patent Train -10:45 am – 12:00 pm

Sponsored by: Fenwick & West LLP

The design and engineering of the company’s structure rarely accounts for the effects of corporate structure on the company’s patent estate. The panel will discuss the various contexts in which corporate and tax engineering has unintended consequences on the patent estate. Topics include priority entitlement in Europe, standing in US litigation, real party-in-interest in inter partes and post-grant reviews, lost profit damages, and the on-sale bar (Medicines Company v. Hospira).

Moderator: Daniel Becker, MD, Partner, Fenwick & West LLP


  • Melanie Mayer, PhD, Associate, Fenwick & West LLP
  • Roger Milgrim, Intellectual Property Expert, Milgrim IP

Luncheon Keynote -12:15 pm – 1:30 pm

Sponsored by: WilmerHale

Speaker: The Honorable Judge Raymond T. Chen, United States Court of Appeals, Federal Circuit Court

Session 3: Through the Looking Glass: Life in a Post-Lexmark World -1:45 pm – 3:00 pm

Sponsored by: Foley Hoag LLP

This panel will discuss the possible outcome of the Federal Circuit’s en banc decision on the Lexmark case, including how to structure sales to minimize the risk of patent exhaustion and the practical implications for those selling products abroad, including whether sales restrictions and reservation of rights are enforceable in Europe and foreign countries.

Moderator: Barbara Fiacco, Partner, Foley Hoag LLP


  • Nicola Dagg, Partner, Allen & Overy LLP
  • Deborah Hill, Patent Counsel II, Crop Science, a division of Bayer, Bayer Corporation
  • Mony Ghose, Associate General Counsel, Intellectual Property, Becton, Dickinson & Company
  • Refreshment Break – 3:00 pm – 3:15 pm

Session 4: Ethics: Evolving Standards of Willfulness and Opinion Practice – 3:15 pm – 4:30 pm

Sponsored by: Foley Hoag LLP

In the Stryker/Halo cases, the Supreme Court is considering whether to change the willfulness standard the Federal Circuit created in 2007 in re Seagate. The panel will discuss the potential impact of a change in willfulness law on opinion practice, already in flux after the Supreme Court’s decision last Term in Commil with respect to induced infringement. More generally, the panel will present best practices for patent opinions, including avoidance of conflicts and whether to waive privilege.

Moderator: Don Ware, Partner, Foley Hoag, LLP


  • David Hricik, Professor of Law, Mercer School of Law
  • Kerry Flynn, Vice President and Chief Intellectual Property Counsel, Vertex Pharmaceuticals

Scavenger Hunt Dinner & Reception - 5:30 pm – 8:30 pm

Dinner Sponsored by: Fitzpatrick, Cella, Harper & Scinto

Friday, April 1, 2016

  • Breakfast - 8:30am – 9:15 am

Session 5: TBD – 9:30 am – 10:45 am

  • Refreshment Break- 10:45 am – 11:00 am

Session 6: TBD - 11:00 am – 12:15 pm

  • Adjournment-  12:15 pm
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