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17^th Annual

Advanced Patent Law Institute

Austin Nov 1-2, 2012 Four Seasons Hotel
Conference Concluded

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Overview

This year’s Advanced Patent Law Institute in Austin covers a sophisticated and rich array of prosecution and litigation topics, as well as the America Invents Act's impact on patent practice—prosecution strategies around the first-to-file transition, post-grant strategies after the AIA, and venue transfer and multi-district litigation tactics. The Institute provides full coverage of claims drafting strategies, claims construction, current trends at the ITC, recent decisions in In Re MSTG and other cases involving limitations of privilege, and also features U.S. District Court Judicial Panel with judges from the Eastern and Western Districts of Texas and the Southern District of California.

The nationally recognized faculty includes senior IP counsel of major corporations, patent prosecution and litigation experts from around the nation, U.S. District Court Judges, and leading academics from Stanford Law School and Mercer University School of Law.

Event Schedule

Program is subject to change.
All times are Central Time Zone.

Day 1 November 1, 2012
Day 2 November 2, 2012

Time

Credit

Subject

Speaker
Thursday Morning, Nov. 1, 2012
Presiding Officer:
Alan D Albright, Bracewell & Giuliani LLP - Austin, TX
8:00 am

Registration Opens

Includes continental breakfast.
8:50 am

Welcoming Remarks
9:00 am

0.75 hr

Claims Drafting Strategies

Recommended techniques for drafting claims that satisfy 35 U.S.C. Section 112 disclosure requirements and also make it difficult for others to design around.

Richard A. Killworth, Dinsmore & Shohl, LLP - Dayton, OH
9:45 am

0.75 hr

Developments in Claim Construction

No major movement or re-invention regarding claim construction is apparently in the offing, but Markman and its progeny, claim construction proceedings and appellate review are creating many exceptions, refinements and fine-tunes that increase exposure to error, sanctions and problems in general. This discussion tracks these trends, exposes tricks and traps, and with luck, blazes the trails that lead to good results.

Kenneth R. Adamo, Kirkland & Ellis LLP - Chicago, IL
10:30 am

Break
10:45 am

0.75 hr

The Ides of March: Prosecution Strategies After the First-to-File Transition

The America Invents Act established a "first inventor to file" system in the United States that will be implemented on March 16, 2013. Learn strategies and considerations for patent application filings in this new regime.

Brian W. Oaks, Baker Botts L.L.P. - Austin, TX
11:30 am

0.75 hr

The America Invents Act and Post-Grant Strategies: Tactics 101

Discussion of the new AIA contested proceedings, rules of practice and procedure, concurrent litigation in the district courts and the U.S. International Trade Commission, appeals to the Federal Circuit, and representative timelines, schedules, and budgets.

Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox - Washington, DC
12:15 pm

Lunch on your Own
Thursday Afternoon, Nov. 1, 2012
Presiding Officer:
James J. Nawrocki, IPFC Corp. - Houston, TX
1:30 pm

0.50 hr ethics

From ResQNet.com to MSTG and Beyond: A Look at Limitations on Privilege in Recent Cases

A look at how recent cases have limited certain privileges and their effect on discovery and settlement of your next case.

Floyd R. Nation, Winston & Strawn LLP - Houston, TX
2:00 pm

1.00 hr

Patent Remedies Strategies

The theoretical framework and the practical considerations litigators and experts must consider in the presentation of testimony in deposition and trial and in the preparation of expert reports from the perspective of both the plaintiff and defendant.

Moderator:
Kevin James Meek, Baker Botts L.L.P. - Austin, TX
Panelists:
Jane Politz Brandt, Thompson & Knight LLP - Dallas, TX
Panelists:
Willem G. Schuurman, Vinson & Elkins LLP - Austin, TX
3:00 pm

Break
3:15 pm

0.75 hr
0.25 hr ethics

Multi-District Litigation: Strategic and Tactical Questions

Prohibition against joinder in the AIA and tough venue opinions from the Federal Circuit mean separate patent suits are filed, often in different jurisdictions. This has resulted in an increase in requests for pretrial consolidation to multi-district litigation (MDL) panels. When, how, why or why not seek MDL treatment?

Moderator:
David J. Healey, Fish & Richardson P.C. - Houston, TX
Panelists:
Jeffrey A. Andrews, Sutton McAughan Deaver PLLC - Houston, TX
Panelists:
Bryan Farney, Farney Daniels LLP - Georgetown, TX
4:00 pm

0.50 hr

Venue Transfer and Severance: The Last Hurrah?

Has the Federal Circuit put an end to plaintiffs' enforcement strategies, or will plaintiffs merely find other ways to enforce their patents while keeping litigation costs down?

Hilda C. Galvan, Jones Day - Dallas, TX
4:30 pm

1.00 hr
0.50 hr ethics

Judicial Panel

Distinguished judges discuss their thoughts and experiences about managing, hearing and trying patent cases.

Moderator:
Alan D Albright, Bracewell & Giuliani LLP - Austin, TX
Panelists:
Hon. Cathy Ann Bencivengo, U.S. District Court, Southern District of California - San Diego, CA
Panelists:
Hon. J. Rodney Gilstrap, U.S. District Court, Eastern District of Texas - Marshall, TX
Panelists:
Hon. Sam Sparks, U.S. District Court, Western District of Texas - Austin, TX
5:30 pm

Adjourn

Time

Credit

Subject

Speaker
Friday Morning, Nov. 2, 2012
Presiding Officer:
Michael P. Adams, Winstead PC - Austin, TX
8:00 am

Conference Room Opens

Includes continental breakfast.
8:30 am

0.75 hr

Section 101: Where Things Stand and Tips For Patent Drafters and Litigators About How to Cope

Nothing is hotter or more fluid now than patentable subject matter under Section 101. A review of the year’s important cases, both in biopharma and computer software, including Mayo v. Prometheus from Mayo’s counsel of 7 years, and a comparison of what the Supreme Court and the Federal Circuit are trying to do. Efforts that patent drafters, litigation plaintiffs and litigation defendants should be taking to deal with this fast-changing area of the law are described.

John A. Dragseth, Fish & Richardson P.C. - Minneapolis, MN
Mark Thomas Garrett, Fulbright & Jaworski L.L.P. - Austin, TX
9:15 am

0.75 hr

Top Mistakes to Avoid at Trial and on Appeal to Maximize Success

Litigation and appeals experts expose the major errors and traps that lose cases at trial and on appeal, and how to avoid them.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC
Kevin Kudlac, Weil, Gotshal & Manges LLP - Houston, TX
10:00 am

Break
10:15 am

0.50 hr

Functional Claiming

Software patents are often claimed in functional terms, even if they don't use means-plus-function language. This analysis focuses on the perils—and promise—of functional claiming in software.

Mark A. Lemley, Stanford Law School - Stanford, CA
10:45 am

1.00 hr

In-House Perspectives on Changes Mandated by the America Invents Act

The AIA has modified in-house strategies regarding the procurement, licensing and litigating of patents. Experienced in-house counsel share how the changes brought by the AIA are changing the provision of IP services.

Moderator:
Robert L. King, Silicon Laboratories - Austin, TX
Panelists:
Mark J. Griffin, Overstock.com, Inc. - Salt Lake City, UT
Panelists:
John F. Horvath, Google Inc. - Austin, TX
Panelists:
Jennifer B. Wuamett, Freescale Semiconductor, Inc. - Austin, TX
11:45 pm

Pick up Box Lunch
Friday Afternoon, Nov. 2, 2012
Presiding Officer:
John M. Golden, The University of Texas School of Law - Austin, TX
LUNCHEON PRESENTATION

Sponsored by Bracewell & Giuliani LLP
12:00 pm

1.00 hr ethics

Adversity in Patent Litigation, Opinions and Prosecution

It is unethical for a firm to be adverse to a current client of the firm. An examination of what "adversity" means in patent practice, from the easy case of suing a current client to the thorny issues in litigation, opinion work and patent prosecution.

David Hricik, Mercer University School of Law - Macon, GA
1:00 pm

Break
1:15 pm

0.50 hr

Joint/Divided Infringement: Past, Present and Future

A look at the evolution of joint (or divided) infringement from BMC Software to Akamai/McKesson.

John Russell Emerson, Haynes and Boone, LLP - Dallas, TX
1:45 pm

0.50 hr

Licensing-Based Domestic Industry Requirements at the ITC

How to navigate the legal requirements for proving a license-based domestic industry, with specific examples and pitfalls from the case law, including recent guidance from the Commission in Certain Navigation Devices. The effect these requirements have on choosing the ITC as a forum is addressed.

Michael Chibib, Bracewell & Giuliani LLP - Austin, TX
2:15 pm

0.50 hr

Expediting Prosecution via the Patent Prosecution Highway

An in-depth focus on the Patent Prosecution Highway (PPH) including identifying cases eligible for expedited prosecution under the PPH, the actual impact on prosecution, and advantages and strategic uses of the PPH.

J. Robert Brown Jr., Conley Rose, PC - Plano, TX
2:45 pm

Adjourn

Day 1 November 1, 2012
Day 2 November 2, 2012

Download Schedule

Conference Faculty

Kenneth R. Adamo

Kirkland & Ellis LLP
Chicago, IL

Alan D Albright

Bracewell & Giuliani LLP
Austin, TX

Jeffrey A. Andrews

Sutton McAughan Deaver PLLC
Houston, TX

Hon. Cathy Ann Bencivengo

U.S. District Court, Southern District of California
San Diego, CA

Jane Politz Brandt

Thompson & Knight LLP
Dallas, TX

J. Robert Brown Jr.

Conley Rose, PC
Plano, TX

Michael Chibib

Bracewell & Giuliani LLP
Austin, TX

John A. Dragseth

Fish & Richardson P.C.
Minneapolis, MN

Donald R. Dunner

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Washington, DC

John Russell Emerson

Haynes and Boone, LLP
Dallas, TX

Bryan Farney

Farney Daniels LLP
Georgetown, TX

Hilda C. Galvan

Jones Day
Dallas, TX

Mark Thomas Garrett

Fulbright & Jaworski L.L.P.
Austin, TX

Hon. J. Rodney Gilstrap

U.S. District Court, Eastern District of Texas
Marshall, TX

Mark J. Griffin

Overstock.com, Inc.
Salt Lake City, UT

David J. Healey

Fish & Richardson P.C.
Houston, TX

John F. Horvath

Google Inc.
Austin, TX

David Hricik

Mercer University School of Law
Macon, GA

Richard A. Killworth

Dinsmore & Shohl, LLP
Dayton, OH

Robert L. King

Silicon Laboratories
Austin, TX

Kevin Kudlac

Weil, Gotshal & Manges LLP
Houston, TX

Mark A. Lemley

Stanford Law School
Stanford, CA

Kevin James Meek

Baker Botts L.L.P.
Austin, TX

Floyd R. Nation

Winston & Strawn LLP
Houston, TX

Brian W. Oaks

Baker Botts L.L.P.
Austin, TX

Willem G. Schuurman

Vinson & Elkins LLP
Austin, TX

Hon. Sam Sparks

U.S. District Court, Western District of Texas
Austin, TX

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox
Washington, DC

Jennifer B. Wuamett

Freescale Semiconductor, Inc.
Austin, TX

Planning Committee

Alan D Albright—Chair

Bracewell & Giuliani LLP
Austin, TX

Michael P. Adams

Winstead PC
Austin, TX

Brent K. Bersin

IPFC Corp.
Houston, TX

Justin R. Blok

OverMont Consulting
Houston, TX

John D. Flynn

IBM Corporation
Austin, TX

Hilda C. Galvan

Jones Day
Dallas, TX

John M. Golden

The University of Texas School of Law
Austin, TX

Brett C. Govett

Fulbright & Jaworski L.L.P.
Dallas, TX

Gary W. Hamilton

Hamilton & Terrile, LLP
Austin, TX

David J. Healey

Fish & Richardson P.C.
Houston, TX

Robert L. King

Silicon Laboratories
Austin, TX

William L. LaFuze

Vinson & Elkins LLP
Houston, TX

Mark A. Lemley

Stanford Law School
Stanford, CA

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Kevin James Meek

Baker Botts L.L.P.
Austin, TX

Eric L. Natinsky

Quick Technologies Inc.
Austin, TX

Floyd R. Nation

Winston & Strawn LLP
Houston, TX

David W. O'Brien

Zagorin O'Brien Graham LLP
Austin, TX

Steven J. Pollinger

McKool Smith, P.C.
Austin, TX

Amber H. Rovner

Weil, Gotshal & Manges LLP
Austin, TX

Mark E. Scott

Conley Rose PC
Austin, TX

Robert W. Turner

McDole Kennedy & Williams PC
Dallas, TX

Shirley Webster

Ocean Tomo, LLC
Houston, TX

Craig W. Weinlein

Carrington, Coleman, Sloman & Blumenthal, L.L.P.
Dallas, TX

Keith E. Witek

Advanced Micro Devices, Inc.
Austin, TX

James D. Woods

UHY Advisors FLVS, Inc.
Houston, TX

Credit Info

Austin

MCLE Credit

Texas – 12.25 hrs | 2.25 hrs Ethics

You may claim your credit online in Your Briefcase, and UT Law CLE will report credit on your behalf to the State Bar of Texas. A Certificate of Attendance will be provided in Your Briefcase for your records. The system reports Texas CLE credit every Tuesday. If you are claiming credit in the last week of your birth month, self-report your CLE credit directly to the State Bar of Texas at texasbar.com, using the course number provided on your certificate of attendance.

California – 12.25 hrs | 2.25 hrs Ethics

You must claim your credit online in Your Briefcase, and will then be provided a Certificate of Attendance for your records. UT Law CLE is required to provide the State Bar with electronic attendance records for any MCLE participatory activity within 60 days of completion of the activity. The California licensee is responsible for reporting their compliance/credit hours earned to the State Bar at the end of their reporting period directly to the State Bar of California at calbar.ca.gov. UT Law CLE will maintain Attendance Records for four years.

Other Credit

TX Accounting CPE – 14.50 hrs | 2.50 hrs Ethics

The University of Texas School of Law (Provider #250) live conferences are presumptively approved by The Texas State Board of Public Accountancy for Texas Accounting CPE credit based on a 50-minute credit hour. Approved for general CPE credit only.

At the conference, you are welcome to sign in on the Accounting CPE Record of Attendance form at the registration desk, but we are now reporting all credit online. You will receive a Texas Accounting Certificate of Completion in Your Briefcase. Self-report your CPE credit directly to TSBPA. UT Law CLE will maintain Attendance Records for four years.

Contact us at accreditation@utcle.org if you have additional questions.

Key Dates

Austin – Nov 1-2, 2012 – Four Seasons Hotel

Conference Concluded

Buy

Austin

Standard Registration
Last day for $650.00 Regular pricing: Oct 26, 2012

$700.00 for registrations received after this time

Green Registration - USB Key ONLY
Last day for $645.00 Regular pricing: Oct 26, 2012

$695.00 for registrations received after this time

Last day for cancellation (full refund): Oct 26, 2012

$50 processing fee applied after this date

Last day for cancellation: Oct 29, 2012

Venue

Four Seasons Hotel

98 San Jacinto Boulevard
Austin, TX 78701-4082
512-478-4500 (reservations)
Map

Accommodations

$249.00 good through Oct 8, 2012

Parking Information

Valet parking is $16 during the day of the event and $32.50 for overnight use. Limited self-parking is available for $12 during the day of the event.

Our Sponsors

Thank you to our sponsors! Click each logo below to learn more.

IPFC Corp.

IPFC (Intellectual Property & Financial Consulting) is an independent consulting firm based in Houston, Texas, that provides corporate, individual, and law firm clients with financial, economic, valuation, damages quantification/assessment, and expert witness services for various business purposes and in the context of intellectual property and commercial disputes. Intellectual Property often makes up a significant part of a company's or individual's asset portfolio. Assessing the proper values of these assets is challenging and may be necessary for sales, acquisitions, licensing, or disputes involving claims of infringement or other wrongful actions. Our analyses have included market and pricing assessments, product line profitability assessments, lost profits and reasonable royalty determinations, and licensing compliance. Whether we are researching industry information, analyzing complex electronic databases, developing intricate financial models, or presenting our analyses to corporate management or in court proceedings, we offer a focused, hands-on approach that results in an effective and efficient process. www.ipfccorp.com
Bracewell & Giuliani LLP

Bracewell & Giuliani LLP is an international law firm with 470 lawyers in Texas, New York, Washington, D.C., Connecticut, Seattle, Dubai and London. We serve Fortune 500 companies, major financial institutions, start-up companies, leading private investment funds, governmental entities and individuals worldwide. Blending sophisticated litigation experience with in-depth training in science, energy and technology, Bracewell's intellectual property litigation practice delivers an aggressive and practical defense of our clients' valuable intellectual property rights. Our seasoned litigators have significant experience in courtrooms across the country, from the Eastern District of Texas to the Southern District of New York, the United States International Trade Commission (ITC) and the United States Court of Appeals for the Federal Circuit. We understand effective courtroom procedure and speak the language of judges and juries. From the beginning of each matter, we work hand in hand with the firm's highly regarded patent, trademark and copyright attorneys to present the strongest case possible. www.bracewellgiuliani.com
Fish & Richardson P.C.

Fish & Richardson is a global law firm providing strategic counseling and litigation services to innovative clients who seek to protect and maximize the value of their intellectual property. With more than 375 attorneys and technology specialists practicing IP strategy and counseling, IP litigation and business litigation, Fish is known for its superior technical expertise. Fish has been named a top patent litigation firm in the country for eight straight years, a premier IP firm for America's biggest companies, and an elite top tier law practice. For more information, visit www.fr.com or follow @fishrichardson on Twitter. www.fr.com
Haynes and Boone, LLP

Haynes and Boone, LLP is an international corporate law firm with offices in Texas, New York, California, Washington, D.C. and Mexico City, providing a full spectrum of legal services. With more than 525 attorneys, Haynes and Boone is ranked among the largest law firms in the nation by The National Law Journal and has been named a "Top Corporate Law Firm in America" by Corporate Board Member Magazine, 2001-2012. www.haynesboone.com/
Jones Day

Operating as One Firm Worldwide, Jones Day provides clients with access to IP litigators in the United States, Europe and Asia. Experienced trial counsel are the linchpin in any patent case and, at Jones Day, patent litigation represents the largest activity of our IP practice with many seasoned, first-chair trial lawyers experienced in all aspects of this complex and multidimensional area of the law. Consistently ranked at the top of all surveys regarding the number of patent cases brought and defended annually, we handle all aspects of patent litigation, including related arbitration/alternative dispute resolution proceedings and appeals to the Federal Circuit. In particular, we represent many of the largest computer, semiconductor, telephony and internet companies in the world. With nearly 20 years experience and well over 50 Hatch-Waxman cases for "Big Pharma," we are at the forefront of complex patent litigation disputes faced by today's largest pharmaceutical companies. www.jonesday.com
Vinson & Elkins LLP

Vinson & Elkins was established in 1917 by William A. Vinson and Judge James A. Elkins with the goal of becoming trusted advisors to Houston's business and energy community. In its nearly 100-year history, the firm has grown to more than 700 lawyers located in energy hubs, financial centers and political capitals around the world. V&E lawyers provide legal services to some of the world's largest and most sophisticated business enterprises addressing a multitude of challenging litigation, transactional and regulatory matters, with a growing emphasis on intellectual property, technology and life sciences. Today, V&E serves clients from 16 global offices. Our network of offices allows us to leverage experience from many markets, cultures and perspectives and to bring our clients the most comprehensive solutions to all legal challenges. www.velaw.com
Weil, Gotshal & Manges LLP

Weil, Gotshal & Manges LLP offers a truly comprehensive, national IP practice, encompassing patent litigation, technology and IP transactions, as well as our unique IP Counseling Practice. Our patent litigation team—which includes over 50 attorneys in New York, Silicon Valley, Texas and Washington, DC—is a trusted advisor to some of the world's biggest names in technology and life sciences. When those companies face important patent litigations and appeals—disputes where the stakes are high, the jurisdiction is unfriendly or precedent needs to be set (or broken)—they turn to Weil's patent litigation team. Weil's clients benefit from our deep bench of leading practitioners with the full spectrum of IP capabilities. www.weil.com
Winstead PC

Whether your business is internet based, nanotech, biotech or other high-tech, Winstead attorneys understand your technology business. Our attorneys provide skilled legal advice on patents, trade secret protection, copyright protection, trademarks, domain names, e-commerce issues and privacy issues to a broad range of clients. We have proven experience advising clients on business entity structuring, licensing agreements, venture funding, "angel" financing, private equity, IPOs, co-development agreements, and manufacturing and distribution agreements. We also help clients facing regulatory issues and all types of litigation. With 280 attorneys in Texas, Winstead can connect you with trusted legal advisors. www.winstead.com
Winston & Strawn LLP

Winston & Strawn LLP is an international law firm with more than 900 attorneys among 15 offices in North America, Europe and Asia. Its 200-lawyer Intellectual Property Group routinely ranks among the most frequently hired patent litigation practices according to Corporate Counsel's 2011 survey. Legal 500 2012 recognized our patent litigation practice stating, "Winston & Strawn LLP's excellent trial record has helped to feed it a diet of high-stakes patent cases relating to pharmaceuticals, telecoms and electronics." Individual members of our patent litigation practice have been regularly honored by organizations including Chambers, Lawdragon and Legal 500, among others. www.winston.com

17th Annual

Advanced Patent Law Institute

Austin Nov 1-2, 2012 Four Seasons Hotel Conference Concluded

Buy

Related products: Materials

Overview

Event Schedule

Thursday Morning, Nov. 1, 2012

Thursday Afternoon, Nov. 1, 2012

Friday Morning, Nov. 2, 2012

Friday Afternoon, Nov. 2, 2012

Conference Faculty

Kenneth R. Adamo

Alan D Albright

Jeffrey A. Andrews

Hon. Cathy Ann Bencivengo

Jane Politz Brandt

J. Robert Brown Jr.

Michael Chibib

John A. Dragseth

Donald R. Dunner

John Russell Emerson

Bryan Farney

Hilda C. Galvan

Mark Thomas Garrett

Hon. J. Rodney Gilstrap

Mark J. Griffin

David J. Healey

John F. Horvath

David Hricik

Richard A. Killworth

Robert L. King

Kevin Kudlac

Mark A. Lemley

Kevin James Meek

Floyd R. Nation

Brian W. Oaks

Willem G. Schuurman

Hon. Sam Sparks

Robert Greene Sterne

Jennifer B. Wuamett

Planning Committee

Alan D Albright—Chair

Michael P. Adams

Brent K. Bersin

Justin R. Blok

John D. Flynn

Hilda C. Galvan

John M. Golden

Brett C. Govett

Gary W. Hamilton

David J. Healey

Robert L. King

William L. LaFuze

Mark A. Lemley

David L. McCombs

Kevin James Meek

Eric L. Natinsky

Floyd R. Nation

David W. O'Brien

Steven J. Pollinger

Amber H. Rovner

Mark E. Scott

Robert W. Turner

Shirley Webster

Craig W. Weinlein

Keith E. Witek

James D. Woods

Credit Info

MCLE Credit

Other Credit

Key Dates

Venue

Four Seasons Hotel

Accommodations

Parking Information

Our Sponsors

Stay in the loop with UT Law CLE

17^th Annual

Austin Nov 1-2, 2012 Four Seasons Hotel
Conference Concluded