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| Overview | Back to Top |
Patent law has undergone significant changes in the last year. Practitioners face evolving technology and growing globalism, plus the wake of recent major decisions. This year’s Institute provides the analysis, tools, and practice strategies to help navigate this complex environment. Highlights include:
• USPTO rules changes and initiatives
• Reexaminations and obviousness after KSR International v. Teleflex, Inc.
• Strategic patent prosecution
• Privilege waiver, “objective recklessness”—leading in-house and outside counsel on In re Seagate
• Contingency fees, billing structures, and portfolio monetization
• Forum selection—jury pools, local rules, and outcomes
| Program for Patent Law - San Jose | Back to Top |
WEDNESDAY
EVENING
| 6:00 pm | Controlling Fees: Creative Billing Structures, ADR, and the Management of IP Legal Fees A panel of outside counsel discusses approaches to managing legal expenses, including using in-house counsel for work historically done by outside counsel, using mediation throughout a dispute, non-billable-hour-based fee structures in major litigations, and controlling costs in portfolio management by increasing communication and accountability. The panel will address the nuts and bolts of their approaches, where they've worked, and where they haven't. |
Moderator: Karen Boyd Patent Mediation and Consulting - Barbara A. Caulfield Dewey & LeBoeuf LLP - Rick Frenkel Cisco Systems, Inc. - Huong Nguyen Impax Laboratories, Inc. - Wayne P. Sobon Accenture - |
| 7:15 pm | Licensing, Portfolio Monetization and the Future of Contingency Fee Patent Litigation A discussion of the business of acquiring, valuing, licensing, and asserting patents, covering current trends impacting the business, from the point of view of those who view their patent portfolio as a necessary defensive evil, those who see it as a valuable profit center, and those who for whom asserting patents is a business model unto itself. |
Moderator: Matthew F. Weil McDermott, Will & Emery - Ron Epstein IPotential, LLC - Vincent Pluvinage Intellectual Ventures - Ronald J. Schutz Robins, Kaplan, Miller & Ciresi L.L.P. - |
| 8:15 pm | Adjourn |
THURSDAY
MORNING
Presiding Officer(s)
Robert Barr, Berkeley Center for Law and Technology - Berkeley, CA
Presiding Officer(s)
Robert Barr, Berkeley Center for Law and Technology - Berkeley, CA
| 8:00 am | Registration Opens Includes continental breakfast. |
| 8:50 am | Welcoming Remarks |
| 9:00 am | Indirect and Divided Infringement This session will address indirect infringement in a Post-DSU World as well as the emerging questions concerning divided infringement. |
Mark A. Lemley Stanford Law School - |
| 9:30 am | Strategic Patent Prosecution 2007 has seen the most significant changes to patent law since 1952. The panel will discuss how prosecution strategy must change in the new environment. Highlighted topics will include the new continuation rules, claim limits, examination support documents and divisionals, obviousness after KSR, the scope of enablement requirements and prosecution disclaimer. |
Gary J. Edwards Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Alan H. MacPherson MacPherson Kwok Chen & Heid LLP - Lee Van Pelt Van Pelt, Yi & James - |
| 10:30 am | Break |
| 10:45 am | USPTO Rule Changes and Initiatives Continuation rule changes and their strategic implications will be discussed. PTO initiatives, including accelerated examination, pre-appeal briefs, peer to patent pilot program, and the highway pilot program with the JPO will also be addressed. |
William S. Galliani Cooley Godward LLP - |
| 11:30 am | Reexaminations After KSR KSR International v. Teleflex, Inc. has been called “the most important patent case of the last 20 years.” It is widely thought that KSR made it much easier to invalidate patents for obviousness and, in particular, increased the attractiveness of reexamination proceedings to patent defendants. This session will discuss potential reexamination strategies and recent empirical data from the perspective of the PTO, patent owners, and litigants. |
Raymond T. Chen United States Patent and Trademark Office - Marc David Peters Morrison & Foerster LLP - |
THURSDAY
AFTERNOON
Presiding Officer(s)
Alan H. MacPherson, MacPherson Kwok Chen & Heid LLP - San Jose, CA
Presiding Officer(s)
Alan H. MacPherson, MacPherson Kwok Chen & Heid LLP - San Jose, CA
| 12:15 pm | Pick up Box Lunch |
| 12:30 pm | Forum Selection Venue is a crucial consideration for patent litigators and their clients. The benches, jury pools, local rules, and outcomes differ greatly among the jurisdictions handling a significant number of patent cases. This panel discussion will provide data and anecdotes to help evaluate and compare these jurisdictions. |
Moderator: Charles S. Crompton Latham & Watkins LLP - Ruffin B. Cordell Fish & Richardson P.C. - David H. Weinberg JuryScope, Inc. - |
| 1:30 pm | Developments in Claims Construction Overshadowed by the US Supreme Court/Federal Circuit colloquy, this core issue has percolated along quietly. This year's pitfalls and construction trends of the moment will be explored, with an eye towards a more tactical approach to Markman mechanisms responsive to those trends. The Federal Circuit still controls the keys to the kingdom, but are the locks secure? |
Kenneth R. Adamo Jones Day - |
| 2:15 pm | Privilege Waiver, Work Product Immunity, and the Trial Counsel Exemption: The New Rules for Everyone The Federal Circuit's decision in In re Seagate rewrote the rules on willful infringement and the advice-of-counsel defense. The changes will impact everyone--in-house and outside counsel, trial and opinion counsel. Panel members will summarize the critical changes from In re Seagate and other recent cases, then consider their impact on each stage of a typical patent litigation matter. The discussion will include the new "objective recklessness" standard for willfulness, the new scope of privilege waivers, and the new questions left unanswered by the Federal Circuit. |
Moderator: Mallun Yen Cisco Systems, Inc. - Robert D. Fram Covington & Burling LLP - David L. McCombs Haynes and Boone, LLP - Erik R. Puknys Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - |
| 3:15 pm | Break |
| 3:30 pm | Inequitable Conduct A review of current issues relating to the inequitable conduct defense, including the most recent Federal Circuit case law on materiality, intent and the balancing test to assess enforceability of a patent in suit. |
Robert J. Goldman Ropes & Gray, LLP - |
| 4:00 pm | Extraterritoriality of U.S. Patent Law after Microsoft v. AT&T The Supreme Court's decision in Microsoft v. AT&T certainly narrowed the applicability of U.S. Patent Law to foreign activities. This discussion will focus on whether arguments still remain for liability under U.S. Patent Law for non-U.S. activities and how the courts likely are to respond to those arguments. |
Christopher W. Kennerly Baker & Botts LLP - |
| 4:30 pm | Judicial Panel In a time of evolving patent landscape and increased activity in the Supreme Court, legislature and Patent and Trademark Office, a panel of distinguished District Court Jugdes discuss their experiences with, and thoughts on, managing, hearing and trying patent cases. |
Moderator: Katherine Kelly Lutton Fish & Richardson P.C. - Hon. David J. Folsom United States District Court, Eastern District of Texas - Hon. Ronald M. Whyte United States District Court, Northern District of California - Hon. Lee Yeakel United States District Court, Western District of Texas - |
| 5:30 pm | Adjourn |
FRIDAY
MORNING
Presiding Officer(s)
Robert Barr, Berkeley Center for Law and Technology - Berkeley, CA
Presiding Officer(s)
Robert Barr, Berkeley Center for Law and Technology - Berkeley, CA
| 7:30 am | Conference Opens Includes continental breakfast. |
| 8:00 am | E-Discovery Update: Rules, Case Law and Obligations The new e-discovery rules were implemented a year ago and this session will provide practitioners with valuable insight on their impact to patent litigation. Our panel of outside and in-house counsel will share their unique perspectives on the pitfalls and opportunities presented by electronic discovery, and they will identify real word best practices for dealing with complex technological and strategic challenges. The panel will also discuss emerging trends and key learnings from the case law so that you will be prepared to provide expert guidance to your clients regarding e-discovery. |
Allon Stabinsky Intel Corporation - Glenn E. Westreich Winston & Strawn LLP - |
| 8:45 am | Subject Matter Conflicts A discussion of ethics and risk management issues arising in intellectual property practice, including technical subject matter conflicts, client identity issues, and recent developments. |
John Steele Fish & Richardson P.C. - |
| 9:15 am | MedImmune and Licensing This session explores the state of Article III jurisdictional requirements for patent validity challenges by patent licensees after the Supreme Court's rejection of the "reasonable apprehension of suit" test in MedImmune v. Genentech. It also examines the viability of a merits-based defense to such a challenge based on licensee estoppel. Finally, the panel will present and discuss the potential enforceability of various licensing provisions, such as "no challenge" clauses and "termination for challenge" clauses, intended to restore some balance to patent licensing relationships in the wake of the MedImmune decision. |
Tim Crean SAP AG - Gary H. Loeb Genentech, Inc. - Alfred C. Server Wilmer Cutler Pickering Hale and Dorr LLP - |
| 10:15 am | Break |
| 10:30 am | Saying Too Much or Not Enough: The Uncomfortable Tension of Claim Breadth, Enablement, and Written Description This presentation will center on the recent developments in the case law related to enablement and written description, including pitfalls of claim drafting and litigation strategies for validity challenges. |
Michael F. Heafey Orrick, Herrington & Sutcliffe LLP - |
| 11:00 am | Obviousness After KSR In KSR, the Supreme Court changed the standard for obviousness. We now know what the correct test is not, but the Supreme Court did not clearly articulate what it is. This session will discuss obviousness cases post-KSR, the current relevance of secondary indicia of non-obviousness, and the likely impact of KSR going forward. |
Daralyn J. Durie Keker & Van Nest, LLP - |
| 11:30 am | The Merged Implied License and Exhaustion Doctrines - Is there a Divorce in the Future? Federal Circuit authority renders the implied license doctrine and the exhaustion doctrine nearly indistinguishable. Yet, the underpinnings of each are entirely different, the former in contract law and the latter in constitutional law. Recognizing that difference, should the exhaustion doctrine be given an identity of its own with clearly unique attributes and characteristics? |
William L. Anthony, Jr. Orrick, Herrington & Sutcliff, LLP - |
FRIDAY
AFTERNOON
Presiding Officer(s)
Christopher J. Byrne, National Semiconductor - Santa Clara, CA
Presiding Officer(s)
Christopher J. Byrne, National Semiconductor - Santa Clara, CA
| 12:00 pm | Lunch on your Own |
| 1:15 pm | Patent Prosecution Study A major new study of patent prosecution reveals the hidden truth about the PTO's actual grant rates, the use of continuations, and the shocking facts about which industries face the toughest prosecutions. |
Mark A. Lemley Stanford Law School - |
| 1:45 pm | The Dark Forest of § 101 Subject Matter: Software, Business Methods & Tax Schemes, Oh My! As technology and human knowledge advance, attempts to patent those advances can challenge prevailing law, policy and wisdom. This session will examine current “taxing” subject matter areas, including business methods, tax schemes, check processing, and other areas of innovation under attack for patentability. We will briefly overview both US and other responses to these challenges, and note the state of any legislative or judicial actions. |
Paul A. Roberts Accenture - |
| 2:15 pm | Remedies: Damages, Injunctions, and the Pendulum Swing In the last year there has been a movement in both the courts and Congress to rein in what many claim is a legal framework too favorable to patent owners. Are damages and injunction doctrines broken and in need of fixing? What should a reasonable royalty be when a patent covers only a small improvement to a complex product or system? When should non-competitors such as individual inventors and research institutions be entitled to injunctions? With the pendulum swinging, what is the reasonable balance that should be struck, and will we go too far in restricting patent remedies? This session will cover key recent developments and their implications for the future of patent remedies. |
Gary H. Ritchey Townsend and Townsend and Crew LLP - Julie S. Turner Turner Boyd LLP - |
| 3:00 pm | Antitrust and SSO Developments Litigation at the intersection of standards development, antitrust, and patent law has been increasing. This session will cover the assertion of antitrust, unfair competition, and related defenses to the assertion of patents that are alleged to be essential to implement standards. It will also address responses by the standards development community and government antitrust enforcers to the increased prominence of patent-related issues in standards development. |
John (Jay) A. Jurata Orrick, Herrington & Sutcliffe LLP - Gil Ohana Wilmer Cutler Pickering Hale and Dorr LLP - |
| 3:45 pm | Adjourn |
| Conference Faculty | Back to Top |
|
Kenneth R. Adamo
Jones Day Dallas, TX William L. Anthony, Jr. Orrick, Herrington & Sutcliff, LLP Menlo Park, CA Kelly L. Baxter Ropes & Gray LLP Palo Alto, CA Karen Boyd Patent Mediation and Consulting Palo Alto, CA Barbara A. Caulfield Dewey & LeBoeuf LLP East Palo Alto, CA I. Neel Chatterjee Orrick, Herrington & Sutcliffe LLP Menlo Park, CA Raymond T. Chen United States Patent and Trademark Office Alexandria, VA Ruffin B. Cordell Fish & Richardson P.C. Washington, DC Tim Crean SAP AG Palo Alto, CA Charles S. Crompton Latham & Watkins LLP San Francisco, CA James L. Day Latham & Watkins LLP San Francisco, CA Daralyn J. Durie Keker & Van Nest, LLP San Francisco, CA Gary J. Edwards Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Ron Epstein IPotential, LLC San Mateo, CA Hon. David J. Folsom United States District Court, Eastern District of Texas Texarkana, TX Robert D. Fram Covington & Burling LLP San Francisco, CA Rick Frenkel Cisco Systems, Inc. San Jose, CA William S. Galliani Cooley Godward LLP Palo Alto, CA Robert J. Goldman Ropes & Gray, LLP Palo Alto, CA Michael F. Heafey Orrick, Herrington & Sutcliffe LLP Menlo Park, CA John (Jay) A. Jurata Orrick, Herrington & Sutcliffe LLP Washington, DC Christopher W. Kennerly Baker & Botts LLP Dallas, TX Mark A. Lemley Stanford Law School Stanford, CA Marc R. Lewis Latham & Watkins LLP San Francisco, CA Gary H. Loeb Genentech, Inc. San Francisco, CA |
Katherine Kelly Lutton
Fish & Richardson P.C. Redwood City, CA Alan H. MacPherson MacPherson Kwok Chen & Heid LLP San Jose, CA David L. McCombs Haynes and Boone, LLP Dallas, TX Huong Nguyen Impax Laboratories, Inc. Hayward, CA Gil Ohana Wilmer Cutler Pickering Hale and Dorr LLP Palo Alto, CA Marc David Peters Morrison & Foerster LLP Palo Alto, CA Vincent Pluvinage Intellectual Ventures Bellevue, WA Erik R. Puknys Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Gary H. Ritchey Townsend and Townsend and Crew LLP Palo Alto, CA Paul A. Roberts Accenture Washington, DC Bhaven Sampat Columbia School of Public Health New York City, NY Ronald J. Schutz Robins, Kaplan, Miller & Ciresi L.L.P. Minneapolis, MN Alfred C. Server Wilmer Cutler Pickering Hale and Dorr LLP Boston, MA Wayne P. Sobon Accenture San Jose, CA Allon Stabinsky Intel Corporation Santa Clara, CA John Steele Fish & Richardson P.C. Redwood City, CA Julie S. Turner Turner Boyd LLP Palo Alto, CA Lee Van Pelt Van Pelt, Yi & James Cupertino, CA Matthew F. Weil McDermott, Will & Emery Irvine, CA David H. Weinberg JuryScope, Inc. Greenbrae, CA Glenn E. Westreich Winston & Strawn LLP San Francisco, CA Hon. Ronald M. Whyte United States District Court, Northern District of California San Jose, CA Hon. Lee Yeakel United States District Court, Western District of Texas Austin, TX Mallun Yen Cisco Systems, Inc. San Jose, CA |
| Planning Committee | Back to Top |
|
Robert Barr —CO-CHAIR
Berkeley Center for Law and Technology Berkeley, CA Mark A. Lemley —CO-CHAIR Stanford Law School Stanford, CA Karen Boyd Patent Mediation and Consulting Palo Alto, CA I. Neel Chatterjee Orrick, Herrington & Sutcliffe LLP Menlo Park, CA Charles S. Crompton Latham & Watkins LLP San Francisco, CA Michael J Esposito University Of Texas School Of Law Austin, TX Robert D. Fram Covington & Burling LLP San Francisco, CA William S. Galliani Cooley Godward LLP Palo Alto, CA Robert J. Goldman Ropes & Gray, LLP Palo Alto, CA Theodore T. "Ted" Herhold Townsend and Townsend and Crew LLP Palo Alto, CA Julie M. Holloway Wilson Sonsini Goodrich & Rosati Palo Alto, CA Dale S. Lazar DLA Piper Reston, VA Michelle Lee Google, Inc. Mountain View, CA Katherine Kelly Lutton Fish & Richardson P.C. Redwood City, CA |
Alan H. MacPherson
MacPherson Kwok Chen & Heid LLP San Jose, CA David L. McCombs Haynes and Boone, LLP Dallas, TX James Pampinella Navigant Consulting, Inc. San Francisco, CA James Pooley Morrison & Foerster LLP Palo Alto, CA Erik R. Puknys Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Alfred C. Server Wilmer Cutler Pickering Hale and Dorr LLP Boston, MA Barton 'Bart' E. Showalter Baker & Botts L.L.P. Dallas, TX Lee Van Pelt Van Pelt, Yi & James Cupertino, CA Bryan Van Uden CRA International, Inc. Houston, TX Matthew F. Weil McDermott, Will & Emery Irvine, CA Glenn E. Westreich Winston & Strawn LLP San Francisco, CA Vernon M. Winters Weil, Gotshal & Manges LLP Redwood Shores, CA Mallun Yen Cisco Systems, Inc. San Jose, CA |
| Hotels/Venues | Back to Top |
| SAN JOSE | ||
Special rate:
$169
good through November 04, 2007
(subject to availability) Parking: Valet Only: $26; Self parking lots nearby |
| Key Dates: Cancellations, last-minute registrations, and related charges | Back to Top |
|
San Jose
Last day for early registration:
Nov 21, 2007, 5 p.m.
— Add $50 for registrations received after this time Last day for full refund: Nov 23, 2007, 5 p.m. Last day for partial refunds: Nov 26, 2007, 5 p.m. $50 processing fee applied Wed Evening Optional Session begins: Nov 28, 2007, 6:00 pm |
| Credit Hours | Back to Top |
| MCLE |
|
Texas MCLE: Course #900031092 15.75 hrs, includes 3.00 hrs ethics
Credit is submitted to the State Bar of Texas within seven business days following the conference. To claim immediate credit, self-report via the SBOT web site at http://www.texasbarcle.com/CLE/home.aspCalifornia MCLE: Provider #1944 15.75 hrs, includes 3.00 hrs ethics
This course is approved for California MCLE credit. A Certificate of Completion and related course reporting documentation for CA MCLE credit will be available at the conference.
See http://calbar.ca.gov/state/calbar/calbar_generic.jsp?cid=10964&id=4991#recordkeeping for more information.
Other Jurisdictions: LA, NM, OK, NV, etc.
Many jurisdictions accept courses offered by the University of Texas School of Law, and approved by the State Bar of Texas, for CLE credit. Please check with your state bar association. A Certificate of Completion, and related course reporting documentation for MCLE credit will be available at the conference.
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| Other Credit |
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TX CPE-Accountants: Sponsor #250 18.00 hrs (50-min. hrs)
Texas CPE credit is calculated based on 50 minute hours, and must be self-reported. A Certificate of Completion will be available at the conference.
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| Major Sponsor | Back to Top |
