April 24, 2021 – Meredith Martin Addy and Robert P. Hart, co-founders at litigation and intellectual property law firm AddyHart P.C., were joined by AddyHart partner Charles A. “Chad” Pannell III as presenters and panelists at the inaugural PTAB Masters 2021 program, presented by IPWatchdog and held virtually from April 19 to 22.
The topic of the online conference was “Beating the PTAB,” and was intended to prepare patent owners for the challenges of monetizing patents by presenting best practices, expert insights, and master-level planning. Invitees covered topics including patent prosecution strategies, hardening a portfolio prior to assertion, and PTAB trial and litigation tactics.
On April 19, Hart was a panelist on the topic of “Patent Prosecution: Why You’re Doing It Wrong & How to Do It Right.” Panelists reviewed adapting patent procurement and prosecutions practices to build PTAB-ready portfolios. Strategies include the value of forward-thinking prosecution, claim diversity, Track 1, after-final options, examiner interviewing, appeals, and PTAB estoppel. Topics also included rehabilitating portfolios through reexaminations and reissues. Hart was joined on the panel by Administrative Patent Judge Grace Obermann of the PTAB and by Andrew Harry, a founding attorney at intellectual property law firm Xsensus LLP. The panel was moderated by Scott McKeown of Ropes & Gray.
On April 22, Addy delivered a short lecture on “Litigating in Parallel: Fighting on Multiple Fronts,” addressing how patent-holders face a double-bind in needing to pursue infringement suits in U.S. district court while at the same time facing proceedings at the U.S. International Trade Commission. AddyHart’s Pannell joined the succeeding discussion, which explored the impact of the PTAB threat to licensing and enforcement efforts and best practices for navigating such challenges, including stays of district court and/or ITC proceedings, and leveraging PTAB evidentiary proof, fact-finding and claim construction standards in an active litigation. Evolving CAFC case law and district court uses of PTAB records and collateral estoppel were also discussed. The panel included James Davis of Ropes & Gray and was moderated by Robert Greene Sterne of Sterne Kessler.
Meredith Addy co-founded AddyHart P.C. in January 2019 with long-time colleague Robert P. Hart. She has handled more than 100 appeals to the Federal Circuit along with more than 80 cases in US district courts, and she has testified to the US Congress on the state of patent law and the Federal Circuit. Addy has also held leadership positions at several AmLaw 100 law firms. Addy has received multiple accolades, including being the only female attorney named to Band 1 for IP Law in Illinois from Chambers USA for multiple years in succession—as well as high rankings from Best Lawyers, Super Lawyers, and IP Stars. Addy has been named one of the Top 250 Women in IP from Managing IP and IPmetrics LLC, as one of the Most Influential Women in IP Law by IP Law360, as one of Law360’s Female Powerbrokers, and to the IAM 1000.
Robert Hart, co-founder of AddyHart P.C., is an experienced first-chair trial attorney with more than 30 years’ experience in private practice and as in-house counsel. He focuses his practice in corporate law and intellectual property trials and strategy. Licensed by the USPTO and the Canadian IP Office, Hart is former Chief IP Counsel for Harman International and before that was division IP counsel for a major semiconductor company. He has led and managed international patent and trademark cases in Germany, Japan, China, France and Italy, and advises on transactions including mergers and acquisitions. Hart’s corporate law experience includes counseling companies on entity formation, compliance and corporate governance, securities filings, transactional matters and mergers and acquisitions.
Charles A. “Chad” Pannell III joined AddyHart as a partner in 2020 with more than fifteen years as an outside counsel, most recently at an Atlanta-based AmLaw 100 firm. A chemical engineer by training, Pannell has extensive experience in all aspects of patent, trademark and trade secrets litigation, including trials in US district courts in California, Texas, Delaware, Georgia, Washington and New York; before the US Patent Trial and Appeal Board, in the US International Trade Commission, and before the US Court of Federal Claims. His experience encompasses a range of technologies including avionics and military technologies, computer software and hardware, GPS, mobile applications and Internet technologies, and green technologies among others.
The inaugural PTAB Masters™ program was co-chaired by McKeown and Sterne, and included keynotes by former Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu; former Chief Judge Paul R. Michel (ret.) of the US Court of Appeals for the Federal Circuit; and former Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.