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| Overview | Back to Top |
This conference provides the insider’s perspective on USPTO initiatives, practice rules, developments, and much more. Join USPTO senior staff, leading practitioners, academics and members of the federal judiciary from a variety of courts and forums in the Washington DC area, for two days at the USPTO. The conference is jointly sponsored with the George Mason University School of Law.
| Program for Patent Law - Virginia | Back to Top |
THURSDAY
MORNING
Presiding Officer(s)
Hon. Michael R. Fleming, U.S. Patent and Trademark Office - Alexandria, VA
Presiding Officer(s)
Hon. Michael R. Fleming, U.S. Patent and Trademark Office - Alexandria, VA
| 8:00 am | Registration Opens |
| 8:50 am | Welcoming Remarks |
| 9:00 am | Pitfalls in Claims Drafting and Filings This session covers common, and not so common, mistakes in claim drafting, including drafting language and strategies after KSR, tips on handling problematic drafting issues, effective communication with USPTO examiners, anticipation of examiner objections, and discussion of how examiners look at applications in light of the USPTO training modules. |
James E. Beyer Dinsmore & Shohl LLP - Robert A. Clarke United States Patent and Trademark Office - |
| 9:45 am | 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 - |
| 10:30 am | Break |
| 10:45 am | USPTO Initiatives A discussion of current USPTO Initiatives, including expedited patent prosecution, pre-appeal process, the patent highway pilot program, the patent “suite of products”, external quality metrics, and more. |
John J. Love U.S. Patent and Trademark Office - Commentator: Nicholas P. Godici Birch, Stewart, Kolasch & Birch, LLP - |
| 11:30 am | The Critical Role of Specifications in Claim Construction |
Dale S. Lazar DLA Piper - |
THURSDAY
AFTERNOON
Presiding Officer(s)
Andrew J. Dillon, Dillon & Yudell LLP - Austin, TX
Presiding Officer(s)
Andrew J. Dillon, Dillon & Yudell LLP - Austin, TX
| 12:30 pm | Lunch on your Own |
| 1:30 pm | Effective Appeals Practice A discussion of the new board rules from both a PTO and practitioner perspective. |
Andrew J. Dillon Dillon & Yudell LLP - Hon. Michael R. Fleming U.S. Patent and Trademark Office - |
| 2:15 pm | Statutory Subject Matter Developments This session will cover recent Federal Circuit and Board of Patent Appeals and Interferences decisions relating subject matter eligibility under 35 U.S.C. section 101. Coverage will include the patentability of signal claims and business methods that do not employ technological means for their implementation. |
Stephen G. Kunin Oblon, Spivak, McClelland, Maier & Nuestadt - Stephen Walsh United States Patent And Trademark Office - |
| 2:45 pm | Inequitable Conduct, Subject Matter Conflicts, and McKesson A discussion of practical and ethical issues as well as techniques for minimizing subject matter conflicts, complying with the duty of disclosure, and avoiding inequitable conduct during the course of patent prosecution. |
David L. McCombs Haynes and Boone, LLP - |
| 3:15 pm | Break |
| 3:30 pm | Defending Against Willful Patent Infringement Claims: Competent Opinion of Counsel and the Risk of Privilege Waiver Defendants facing allegations of willful infringement in a patent infringement suit need no longer face the Hobbesian Choice of choosing between using pre-litigation opinions of counsel analyzing the risk of patent infringement, and waiving their trial counsel’s attorney-client and work product privileges. In re Seagate, decided by the Federal Circuit in August of 2007, overruled standing precedent that the use of such opinions waives trial counsel’s privileges related to all documents and communications discussing the opinions. This presentation discusses the importance of competent opinion of counsel in defending against an allegation of willful infringement of a patent, the strength of a defendant’s ability to rely on such opinions, and what remains of the risk of privilege waiver after Seagate. |
Jeffrey D. Feldman Feldman Gale - |
| 4:00 pm | Prefiling Investigations Filing a patent infringement lawsuit is the first item on the docket sheet, but not the first step in the process. This session discusses what information/evidence is needed, what analysis should be done, and some additional prefiling concerns that need to be addressed before signing your name to the Complaint. |
Phillip B. Philbin Haynes and Boone, LLP - |
| 4:30 pm | Licensing and Declaratory Relief After Medimmune Have the floodgates of litigation been opened after the Supreme Court's holding in Medimmune? Or rather, did Medimmune merely clarify when an actual controversy exists and when does a licensee have standing to bring suit? This session will also discuss what issues remain after Medimmune, what post-Medimmune cases have taught us, and what is in store for future licensees. |
John W. Ryan Sullivan & Worcester LLP - Commentator: Kenneth J. Dow Centocor, Inc. - |
| 5:00 pm | USPTO Developments in Reexaminations The session will discuss the application in reexamination of the clarification of the obviousness standard by the Supreme Court in KSR Int'l Co. v. Teleflex, Inc., et al. |
Cynthia Nessler United States Patent and Trademark Office - Kenneth Schor United States Patent and Trademark Office - |
FRIDAY
MORNING
Presiding Officer(s)
Philippe Signore, Oblon, Spivak, McClelland, Maier & Nuestadt - Alexandria, VA
Presiding Officer(s)
Philippe Signore, Oblon, Spivak, McClelland, Maier & Nuestadt - Alexandria, VA
| 8:00 am | Conference Opens |
| 8:30 am | Impact of KSR on Patent Litigation and Prosecution The implications of the Supreme Court's decision in KSR on both patent litigation and prosecution are examined. Particular attention is placed on recent applications of KSR by the Federal Circuit and the Board of Patent Appeals and Interferences. |
Christopher A. Cotropia Intellectual Property Institute, University of Richmond School of Law - |
| 9:00 am | Remedies and Injunctions After eBay The U.S. Supreme Court's decision in eBay Inc. v. MercExchange LLC, changed the landscape of patent remedies. The presentation will examine eBay's affect on preliminary injunctions, permanent injunctions, and the calculation of damages, including the determination of royalties and the terms of compulsory licenses. |
Christopher J. Renk Banner & Witcoff, Ltd. - |
| 9:30 am | Damages This session opens with a discussion of recent developments and issues involving damages, including apportionment, entire market value, and calculation of damages involving provisional patents. The session concludes with a discussion by two valuation experts on the theories and data available to plaintiff and defense counsel in pursuing or defending such claims. |
H. Jonathan Redway Dickinson Wright PLLC - Commentator: Rodney J. Bosco Navigant Consulting, Inc. - Commentator: Walt Bratic CRA International, Inc. - |
| 10:15 am | Break |
| 10:30 am | Effective Practice Before the ITC Practicing before the ITC differs in significant ways from the federal courts. We will consider some of these differences and provide some practical guidance for preparing, pursuing and defending cases in the ITC, including a discussion of the resources available in ITC investigations. |
Hon. Paul J. Luckern U.S. International Trade Commission - Steven R. Borgman Vinson & Elkins LLP - |
| 11:15 am | Options at the District Court including the Eastern District of Texas In a time of an evolving patent landscape and increased activity in the Supreme Court, legislature and Patent and Trademark Office, a panel of distinguished District Court Judges discuss their experiences with, and thoughts on, managing, hearing and trying patent cases. |
Moderator: Katherine Kelly Lutton Fish & Richardson P.C. - Hon. Chad Everingham United States District Court, Eastern District of Texas - Hon. Liam O'Grady United States District Court, Eastern District of Virginia - Hon. Patti B. Saris United States District Court, MA - |
FRIDAY
AFTERNOON
Presiding Officer(s)
David W. Hill, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. - Reston, VA
Presiding Officer(s)
David W. Hill, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. - Reston, VA
| 12:15 pm | Pick up Box Lunch |
| 12:30 pm | View from the Federal Circuit A discussion of effective advocacy before the U.S. Court of Appeals for the Federal Circuit. |
Hon. Paul R. Michel United States Court of Appeals for the Federal Circuit - |
| 1:15 pm | Break |
| 1:30 pm | Indirect Infringement: How to Effectively Litigate a Case of Active Inducement This session provides some background about the law of active inducement, including a discussion of the most recent Federal Circuit case law addressing this issue. It will also provide specific advice about how to effectively litigate a claim of active inducement from both the plaintiff's and the defendant's perspective. |
H. Keeto Sabharwal Blank Rome LLP - |
| 2:15 pm | How to Avoid Disciplinary Action by the USPTO The various ethical requirements imposed by the PTO Code of Professional Responsibility will be reviewed as they relate to patent prosecution. |
Harry Moatz U.S. Patent and Trademark Office - |
| 3:00 pm | Electronic Discovery Landmines to Avoid This session covers key issues under the new rules and key case law developments. |
Barry K. Shelton Fish & Richardson P.C. - |
| 3:45 pm | Adjourn |
| Conference Faculty | Back to Top |
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Kenneth R. Adamo
Jones Day Dallas, TX James E. Beyer Dinsmore & Shohl LLP Dayton, OH Steven R. Borgman Vinson & Elkins LLP Houston, TX Rodney J. Bosco Navigant Consulting, Inc. Washington, DC Walt Bratic CRA International, Inc. Houston, TX Alan Chen Fish & Richardson Austin, TX Robert A. Clarke United States Patent and Trademark Office , USA Christopher A. Cotropia Intellectual Property Institute, University of Richmond School of Law Richmond, VA Andrew J. Dillon Dillon & Yudell LLP Austin, TX Kenneth J. Dow Centocor, Inc. Radnor, PA John Russell Emerson Haynes And Boone, LLP Dallas, TX Hon. Chad Everingham United States District Court, Eastern District of Texas Marshall, TX Jeffrey D. Feldman Feldman Gale Miami, FL Hon. Michael R. Fleming U.S. Patent and Trademark Office Alexandria, VA Nicholas P. Godici Birch, Stewart, Kolasch & Birch, LLP Falls Church, VA Jacob George Hodges Haynes And Boone, LLP Dallas, TX Wei Wei Jeang Haynes & Boone, LLP Richardson, TX Stephen G. Kunin Oblon, Spivak, McClelland, Maier & Nuestadt Alexandria, VA Dale S. Lazar DLA Piper Reston, VA Thomas J. Lerdal Banner & Witcoff, Ltd Chicago, IL |
John J. Love
U.S. Patent and Trademark Office Alexandria, VA Hon. Paul J. Luckern U.S. International Trade Commission Washington, DC Katherine Kelly Lutton Fish & Richardson P.C. Redwood City, CA David L. McCombs Haynes and Boone, LLP Dallas, TX Hon. Paul R. Michel United States Court of Appeals for the Federal Circuit Washington, DC Harry Moatz U.S. Patent and Trademark Office Alexandria, VA Cynthia Nessler United States Patent and Trademark Office Alexandria, VA Hon. Liam O'Grady United States District Court, Eastern District of Virginia Alexandria, VA Phillip B. Philbin Haynes and Boone, LLP Dallas, TX Melissa D. Pierre Blank Rome LLP Washington, DC H. Jonathan Redway Dickinson Wright PLLC Washington, DC Christopher J. Renk Banner & Witcoff, Ltd. Chicago, IL John W. Ryan Sullivan & Worcester LLP Washington, DC H. Keeto Sabharwal Blank Rome LLP Washington, DC Hon. Patti B. Saris United States District Court, MA Boston, MA Kenneth Schor United States Patent and Trademark Office Alexandria, VA Barry K. Shelton Fish & Richardson P.C. Austin, TX Javier Sobrado Feldman Gale, P.A., Miami, FL Stephen Walsh United States Patent And Trademark Office Arlington, VA |
| Planning Committee | Back to Top |
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Andrew J. Dillon —VICE-CHAIR
Dillon & Yudell LLP Austin, TX Hon. Michael R. Fleming —VICE-CHAIR U.S. Patent and Trademark Office Alexandria, VA Samson Vermont —VICE-CHAIR George Mason University School of Law Arlington, VA James E. Beyer Dinsmore & Shohl LLP Dayton, OH Rodney J. Bosco Navigant Consulting, Inc. Washington, DC Walt Bratic CRA International, Inc. Houston, TX Christopher A. Cotropia Intellectual Property Institute, University of Richmond School of Law Richmond, VA Michael J Esposito University Of Texas School Of Law Austin, TX Jeffrey D. Feldman Feldman Gale Miami, FL Adam C. Hemlock Weil, Gotshal & Manges LLP New York, NY David W. Hill Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. Reston, VA Edward J. Kessler Sterne, Kessler, Goldstein & Fox, P.L.L.C. Washington, DC Stephen G. Kunin Oblon, Spivak, McClelland, Maier & Nuestadt Alexandria, VA |
Joshua Lathrop
Navigant Consulting, Inc. New York, NY Dale S. Lazar DLA Piper Reston, VA John J. Love U.S. Patent and Trademark Office Alexandria, VA Lissi Mojica Marquis United States Patent and Trademark Offic Alexandria, VA David L. McCombs Haynes and Boone, LLP Dallas, TX Roderick R. McKelvie Covington & Burling Washington, DC H. Jonathan Redway Dickinson Wright PLLC Washington, DC John W. Ryan Sullivan & Worcester LLP Washington, DC H. Keeto Sabharwal Blank Rome LLP Washington, DC Stephen Walsh United States Patent And Trademark Office Arlington, VA John F. Witherspoon Law Office Of John F. Witherspoon Washington, DC Bradley C. Wright Banner & Witcoff, Ltd. Washington, DC |
| Hotels/Venues | Back to Top |
| ALEXANDRIA | ||
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| Key Dates: Cancellations, last-minute registrations, and related charges | Back to Top |
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Alexandria
Last day for early registration:
Jan 7, 2008, 5 p.m.
— Add $50 for registrations received after this time Last day for full refund: Jan 8, 2008, 5 p.m. Last day for partial refunds: Jan 9, 2008, 5 p.m. $50 processing fee applied |
| Credit Hours | Back to Top |
| MCLE |
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Texas MCLE: Course #900033121 13.50 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 13.50 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 15.00 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 |
