University of Texas School of Law
Program Features
Come to Palo Alto in the heart of Silicon Valley and join leading judges, academics and practitioners for two days of in-depth presentations. The nationally-recognized faculty includes IP counsel from Apple, Cisco, Yahoo! and Mozilla, practitioners from around the nation, and academics from Stanford and Berkeley.

The Conference is jointly presented with the Stanford Program in Law, Science & Technology and the Berkeley Center for Law & Technology at UC Berkeley.
Schedule

Thursday Morning, Dec. 9, 2010

Presiding Officer:
Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA

7:45 am
Registration Opens

Includes continental breakfast.

8:30 am
Welcoming Remarks

8:40 am

0.33 hr

Patent Prosecution: The PTO's Use of Prior Art Submissions

A short look at some recent empirical results on what examiners do (and don't) pay attention to.

Mark A. Lemley, Stanford Law School - Stanford, CA

9:00 am

0.75 hr

Claim Drafting Strategies: Prosecutor and Litigator Perspectives on Drafting and Prosecuting Claims

The prosecutor has thousands of dollars to draft and negotiate issued claims. The litigator has millions of dollars to argue over what they mean. Given the backdrop of the current patent law, this panel considers what claims drafting techniques can be taken to strengthen your patents for litigation, without exceeding your prosecution budget.

Moderator:
Michael J. Schallop, Van Pelt, Yi & James LLP - Cupertino, CA
Panelists:
Michael W. Farn, Fenwick & West LLP - Mountain View, CA
Panelists:
Erik R. Puknys, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Palo Alto, CA

9:45 am

0.50 hr

Managing Patent Prosecution and Portfolios: Effective Use of New USPTO Options and Initiatives

An evaluation of rule and policy changes at the USPTO under David Kappos, including recommendations and cautions for managing corporate portfolios.

Duane R. Valz, Chadbourne & Parke LLP - Los Angeles, CA

10:15 am
Break

10:30 am

0.75 hr

Reexamination and Concurrent Patent Litigation

A tour of the parallel universe of patent reexamination and concurrent patent litigation in the district courts and the USITC. Hot button topics to be addressed include PTO stats and timelines, the SNQ requirement, request requirements, ex parte interviews, responses to Office Actions and the use of declaration evidence, KSR issues, petition practice, protective orders and the duty of disclosure, stays, use of reexam developments in trial, difference standards between reexams and the courts, and concurrency issues between tribunals.

Moderator:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox, P.L.L.C. - Washington, DC
Panelist:
Barton 'Bart' E. Showalter, Baker Botts L.L.P. - Dallas, TX

11:15 am

0.50 hr

Examiner Interviews: Why, When and How

Interviews with examiners can advance common understanding of an invention, resolve conflicts in interpreting claims and prior art, and efficiently move cases toward allowance, but few practitioners receive training or think strategically about effective interview structure and presentation. In this session, a litigator and a prosecutor address key considerations and skills in the art of planning and holding the interview, with mock dialogue to illustrate particular techniques and a discussion of visual presentation tools.

Karl J. Kramer, Morrison & Foerster LLP - Palo Alto, CA
Christopher J. Palermo, Hickman Palermo Truong & Becker LLP - San Jose, CA

11:45 am

0.83 hr

Successful Multilateral International Patent Prosecution

Successfully building a valuable international patent portfolio is a tremendous challenge in light of differences in local laws and patent practices. Panelists from Australia and the United Kingdom provide perspectives across a range of industries.

Moderator:
Edward Van Gieson, Beyer Law Group LLP - Cupertino, CA
Panelists:
Richard Howson, Kilburn & Strode LLP - London, United Kingdom
Panelists:
Anthony Lee, Madderns Patent & Trade Mark Attorneys - Adelaide, Australia

Thursday Afternoon, Dec. 9, 2010

Presiding Officer:
James Pampinella, Navigant Consulting, Inc. - San Francisco, CA

LUNCHEON PRESENTATION

Sponsored by Covington & Burling LLP

12:35 pm
Pick up Lunch

Included in conference registration fee.

12:50 pm

0.75 hr

Patentable Subject Matter: Back in the Federal Circuit’s Court

In Bilski, the Supreme Court reaffirmed the bar against patenting “abstract ideas” while rejecting the exclusivity of a machine-or-transformation test for process patentability. Where might the law go from here, and how might private parties react?

Mark A. Lemley, Stanford Law School - Stanford, CA
Robert R. Sachs, Fenwick & West LLP - San Francisco, CA

1:35 pm
Break

1:50 pm

0.75 hr

Antitrust Issues: Patent Pooling, Aggregators, Misuse, SSOs, etc.

Deception in the standard-setting context has been a major issue for regulators and private litigants on both sides of the Atlantic. This session looks at the most recent developments and what they mean for licensees, licensors and SSO administrators. In addition, the Federal Circuit’s August 2010 decision in Princo Corp. has brought the misuse doctrine back into the spotlight. This presentation also discusses the impact of Princo and likely future developments.

Hanno F. Kaiser, Latham & Watkins LLP - San Francisco, CA

2:35 pm

0.50 hr

Anticipating the Worst: Anti-Injunction Strategies, Design Arounds and Avoiding Contempt Proceedings

This session addresses the impact of recent decisions concerning injunctions, design arounds and contempt proceedings, including i4i v. Microsoft and TiVo v. Echostar, especially from the defense perspective.  The need for early planning is explored, as well as strategies for injecting design arounds into the underlying action to avoid injunctions and contempt proceedings.

Michael A. Ladra, Wilson, Sonsini, Goodrich & Rosati - Palo Alto, CA
Michael J. Malecek, Kaye Scholer LLP - Menlo Park, CA

3:05 pm

0.50 hr ethics

Spoliation and Its Impact on Patent Litigation and Document Hold Practices

Spoliation can have a substantial impact on patentees seeking to enforce their patents as well as defendants. This session covers some interesting current legal issues in the context of patent infringement suits and spoliation, including a discussion of a number of different matters where spoliation may have impacted the outcome and the different ways courts have addressed spoliation issues.

Eric R. Lamison, Kirkland & Ellis LLP - San Francisco, CA

3:35 pm
Break

3:50 pm

0.75 hr

Patent Defense 2.0: New Models in Patent Disputes

Patent litigation is expensive, risky and  time consuming. This panel considers emerging alternative and  counter strategies including reexamination, collective buying, crowd sourcing, use of aggregators and other innovative approaches.

Moderator:
Glenn E. Westreich, Haynes and Boone, LLP - San Jose, CA
Panelists:
Chip Lutton, Apple Inc. - Cupertino, CA
Panelists:
Joseph Siino, Ovidian Group, LLC - Berkeley, CA
Panelists:
Mallun Yen, RPX Corporation - San Francisco, CA

4:35 pm

0.92 hr
0.50 hr ethics

Judicial Panel

Leading District Court judges discuss cutting-edge and patent litigation issues.

Moderator:
Vernon M. Winters, Greenberg Traurig LLP - San Francisco, CA
Panelists:
Hon. Andrew J. Guilford, U.S. District Court, Central District of California - Santa Ana, CA
Panelists:
Hon. Lucy H. Koh, U.S. District Court, Northern District of California - San Jose, CA

5:30 pm
Adjourn

Friday Morning, Dec. 10, 2010

Presiding Officer:
Christopher J. Byrne, Tessera, Inc. - San Jose, CA

8:00 am
Conference Room Opens

Includes continental breakfast.

8:30 am

0.50 hr ethics

Inequitable Conduct

The Federal Circuit's decision to revisit the inequitable conduct doctrine in Therasense has brought this area of the law to a crossroads. The presentation looks at the en banc briefing and argument that is scheduled to take place in November 2010, and considers whether the law is likely to change and, if so, how. In addition, the speaker discusses best practices under the current law to avoid charges of patent unenforceability and to defeat such charges at trial if necessary.

Robert J. Goldman, Ropes & Gray, LLP - East Palo Alto, CA

9:00 am

0.50 hr

Design Patents and Utility Patents: Where the Twain Meet and Even Overlap

Statutory subject matter for design patents must be “ornamental,” while that for utility patents must be “useful.” For design patents, the ornamental boundary is defined by the doctrine of functionality, while for utility patents, usefulness is couched in terms of providing some identifiable benefit. This presentation analyzes those boundaries, and shows how they can actually overlap, i.e., how design patents can be used to protect functional features of products, and how utility patents can be used to protect ornamental features. 

Perry Saidman, Saidman DesignLaw Group, LLC - Silver Spring, MD

9:30 am

0.75 hr

Licensing Update

A look at recent developments and trends related to patent licensing (in the areas of patent misuse, licenses vs. covenants not to sue, and exhaustion), as well as an examination of the issues and trends regarding patents and standards, and the intersection of patents and open source licenses and projects.

Karen N. Ballack, Weil, Gotshal & Manges LLP - Redwood City, CA
Gary Ross, NetApp, Inc. - Sunnyvale, CA

10:15 am
Break

10:30 am

0.50 hr

Patent Marking: True AND False

Proper patent marking can vastly increase your ability to recover damages, but overdoing it can lead to scary liability for false marking. This session covers the basics of proper marking, as well as the nuances of the quickly evolving false marking case law.

Karen Boyd, Turner Boyd LLP - Mountain View, CA

11:00 am

0.75 hr

ITC Section 337 Patent Enforcement Update

This session examines the emergence of the ITC as a patent enforcement forum, developments in ITC case management, the role of non-practicing entities at the ITC, and the interaction between ITC and district court patent cases.

Moderator:
Peter S. Menell, University of California at Berkeley School of Law and Berkeley Center for Law & Technology - Berkeley, CA
Panelists:
Yar R. Chaikovsky, McDermott Will & Emery - Menlo Park, CA
Panelists:
Robert D. Fram, Covington & Burling LLP - San Francisco, CA

11:45 am

0.75 hr

Preserving Issues for Appeal

The presentation identifies issues of particular importance in appeals involving patent cases.  It describes the various methods of preserving those issues for appeal and identifies some of the risks of not being careful about preserving errors by the district courts.

Daralyn J. Durie, Durie Tangri LLP - San Francisco, CA
Carter G. Phillips, Sidley Austin LLP - Washington, DC

Friday Afternoon, Dec. 10, 2010

Presiding Officer:
Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA

LUNCHEON PRESENTATION

Sponsored by Chadbourne & Parke LLP

12:30 pm
Pick up Lunch

Included in conference registration fee.

12:45 pm

0.75 hr

Administrative Innovation at the PTO

Although patent reform is often envisioned in legislative terms, the PTO enjoys some ability to promote administrative reform that may reduce backlog and improve patent quality. This presentation evaluates enacted and proposed reforms in light of available empirical data.

Arti K. Rai, Duke University School of Law - Durham, NC

1:30 pm
Break

1:45 pm

0.75 hr

Alternative Fee Arrangements and Cost Control: Bidding for Cases

The advent of the patent troll, changes in patent law and an increasingly competitive marketplace have collectively impacted, and in many ways fundamentally changed, the business of how patent cases are budgeted and handled.  The panel explores alternative fee arrangements, case budgets and other cost control measures both from an in-house and outside counsel perspective.  The panel also looks at how tighter corporate budgets are impacting the bidding and selection process for litigation counsel.

Moderator:
Theodore T. "Ted" Herhold, Townsend and Townsend and Crew LLP - Palo Alto, CA
Panelists:
Wab Kadaba, Kilpatrick Stockton LLP - Atlanta, GA
Panelists:
Emily Ward, eBay, Inc. - San Jose, CA
Panelists:
Karen K. Williams, Sybase, Inc. - Dublin, CA

2:30 pm

0.50 hr

Protective Orders in Patent Cases: Who Can Keep a Secret?

Strategies for keeping confidential information from adversaries, including patent prosecution bars after In re Deutsche Bank (2010), cases interpreting FRE 502 and clawback agreements, and a review of local rules and model protective orders from several district courts.

Michelle Greer Galloway, Cooley LLP - Palo Alto, CA
Mark E. Michels, Cisco Systems, Inc. - San Jose, CA

3:00 pm

0.75 hr

Damages

The role of the entire market value rule in the calculation of patent damages has been the subject of much discussion in the context of both litigated cases and patent law reform efforts.  Parties often disagree about how much of the value of an accused product should be subject to a damages calculation, where the invention of the patent at issue arguably does not implicate, or create the demand for, the entire product.  This panel explores the current state of the law under the Lucent and Cornell decisions and offers practical insights on how best to present and defend against damages claims in light of the applicable law.

Moderator:
Stanley Young, Covington & Burling LLP - Redwood City, CA
Panelists:
Colleen Chien, Santa Clara University - Santa Clara, CA
Panelists:
Jeffrey Dubin, Anderson School of Management, UCLA - Los Angeles, CA
Panelists:
Howard G. Pollack, Fish & Richardson P.C. - Redwood City, CA

3:45 pm
Adjourn

Faculty

Conference Faculty

Karen N. Ballack
Weil, Gotshal & Manges LLP
Redwood City, CA
Karen Boyd
Turner Boyd LLP
Mountain View, CA
Yar R. Chaikovsky
McDermott Will & Emery
Menlo Park, CA
Colleen Chien
Santa Clara University
Santa Clara, CA
Jeffrey Dubin
Anderson School of Management, UCLA
Los Angeles, CA
Daralyn J. Durie
Durie Tangri LLP
San Francisco, CA
Michael W. Farn
Fenwick & West LLP
Mountain View, CA
Robert D. Fram
Covington & Burling LLP
San Francisco, CA
Michelle Greer Galloway
Cooley LLP
Palo Alto, CA
Robert J. Goldman
Ropes & Gray, LLP
East Palo Alto, CA
Hon. Andrew J. Guilford
U.S. District Court, Central District of California
Santa Ana, CA
Theodore T. "Ted" Herhold
Townsend and Townsend and Crew LLP
Palo Alto, CA
Richard Howson
Kilburn & Strode LLP
London, United Kingdom
Wab Kadaba
Kilpatrick Stockton LLP
Atlanta, GA
Hanno F. Kaiser
Latham & Watkins LLP
San Francisco, CA
Hon. Lucy H. Koh
U.S. District Court, Northern District of California
San Jose, CA
Karl J. Kramer
Morrison & Foerster LLP
Palo Alto, CA
Michael A. Ladra
Wilson, Sonsini, Goodrich & Rosati
Palo Alto, CA
Eric R. Lamison
Kirkland & Ellis LLP
San Francisco, CA
Anthony Lee
Madderns Patent & Trade Mark Attorneys
Adelaide, Australia
Mark A. Lemley
Stanford Law School
Stanford, CA
Chip Lutton
Apple Inc.
Cupertino, CA
Michael J. Malecek
Kaye Scholer LLP
Menlo Park, CA
Peter S. Menell
University of California at Berkeley School of Law and Berkeley Center for Law & Technology
Berkeley, CA
Mark E. Michels
Cisco Systems, Inc.
San Jose, CA
Christopher J. Palermo
Hickman Palermo Truong & Becker LLP
San Jose, CA
Carter G. Phillips
Sidley Austin LLP
Washington, DC
Howard G. Pollack
Fish & Richardson P.C.
Redwood City, CA
Erik R. Puknys
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Palo Alto, CA
Arti K. Rai
Duke University School of Law
Durham, NC
Gary Ross
NetApp, Inc.
Sunnyvale, CA
Robert R. Sachs
Fenwick & West LLP
San Francisco, CA
Perry Saidman
Saidman DesignLaw Group, LLC
Silver Spring, MD
Michael J. Schallop
Van Pelt, Yi & James LLP
Cupertino, CA
Barton 'Bart' E. Showalter
Baker Botts L.L.P.
Dallas, TX
Joseph Siino
Ovidian Group, LLC
Berkeley, CA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox, P.L.L.C.
Washington, DC
Duane R. Valz
Chadbourne & Parke LLP
Los Angeles, CA
Edward Van Gieson
Beyer Law Group LLP
Cupertino, CA
Emily Ward
eBay, Inc.
San Jose, CA
Glenn E. Westreich
Haynes and Boone, LLP
San Jose, CA
Karen K. Williams
Sybase, Inc.
Dublin, CA
Vernon M. Winters
Greenberg Traurig LLP
San Francisco, CA
Mallun Yen
RPX Corporation
San Francisco, CA
Stanley Young
Covington & Burling LLP
Redwood City, CA

Planning Committee

Robert Barr—Co-Chair
Berkeley Center for Law & Technology
Berkeley, CA
Mark A. Lemley—Co-Chair
Stanford Law School
Stanford, CA
Bradley Baugh
North Weber & Baugh LLP
Palo Alto, CA
Karen Boyd
Turner Boyd LLP
Mountain View, CA
Christopher J. Byrne
Tessera, Inc.
San Jose, CA
Yar R. Chaikovsky
McDermott Will & Emery
Menlo Park, CA
Tim Crean
SAP AG
Palo Alto, CA
Sean P. DeBruine
Alston + Bird LLP
Menlo Park, CA
Michael W. Farn
Fenwick & West LLP
Mountain View, CA
John M. Farrell
Fish & Richardson P.C.
Redwood City, CA
Robert J. Goldman
Ropes & Gray, LLP
East Palo Alto, CA
David W. Hansen
Skadden, Arps, Slate, Meagher & Flom LLP
Palo Alto, CA
Jeanine Hayes
Yahoo! Inc.
Sunnyvale, CA
Theodore T. "Ted" Herhold
Townsend and Townsend and Crew LLP
Palo Alto, CA
Julie M. Holloway
Wilson Sonsini Goodrich & Rosati
Palo Alto, CA
Stephen C. Holmes
Dewey & LeBoeuf
East Palo Alto, CA
Karl J. Kramer
Morrison & Foerster LLP
Palo Alto, CA
Leo L. Lam
Keker & Van Nest LLP
San Francisco, CA
Eric R. Lamison
Kirkland & Ellis LLP
San Francisco, CA
Michelle Lee
Google, Inc.
Mountain View, CA
Gary H. Loeb
Genentech, Inc.
San Francisco, CA
Chip Lutton
Apple Inc.
Cupertino, CA
Christopher J. Palermo
Hickman Palermo Truong & Becker LLP
San Jose, CA
Jeannine Yoo Sano
White & Case LLP
Palo Alto, CA
John F. Stark
Navigant Consulting, Inc.
San Francisco, CA
M. Patricia Thayer
Sidley Austin LLP
San Francisco, CA
Duane R. Valz
Chadbourne & Parke LLP
Los Angeles, CA
Edward Van Gieson
Beyer Law Group LLP
Cupertino, CA
Glenn E. Westreich
Haynes and Boone, LLP
San Jose, CA
Vernon M. Winters
Greenberg Traurig LLP
San Francisco, CA
Mallun Yen
RPX Corporation
San Francisco, CA
Stanley Young
Covington & Burling LLP
Redwood City, CA
Credit Information

MCLE Credit

Texas
14.25 hrs  |  1.50 hrs Ethics
Additional Information

Live Conferences:
A Texas MCLE Reporting Form will be included in your course materials. Please complete and return to the registration desk and UT Law CLE will report credit on your behalf to the State Bar of Texas, or you can self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Attendance will be provided at the conference to keep for your records.

Webcasts: UT Law CLE will report credit to the State Bar of Texas on your behalf. If you are claiming credit in the last week of your birth month, self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Completion will be emailed to you upon claiming credit.
California
14.25 hrs  |  1.50 hrs Ethics
Additional Information
Live Conferences: At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.

Webcasts: Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. Print and keep the Certificate of Completion for your records. A Certificate of Completion will be emailed to you upon claiming credit.
Other States
Many jurisdictions accept conferences offered by The University of Texas School of Law, and approved by the State Bar of Texas, for CLE credit. Please check with your jurisdiction's regulatory authority. A Certificate of Attendance and credit reporting documentation will be provided at the conference.

Other Credit

TX Accounting CPE
17.00 hrs
Key Dates

Palo Alto, CA

  • Last day for Standard Registration early registration: Dec 3, 2010
    Add $50 for registrations received after this time
  • Last day for cancellation (full refund): Dec 3, 2010
  • Last day for cancellation (partial refund): Dec 6, 2010
    $50 processing fee applied

Hotel / Venue

Palo Alto, CA

Four Seasons Hotel

2050 University Avenue
Palo Alto, CA
(650) 566-1200 (reservations)

Accommodations

$0.00 good through Nov 8, 2010

Parking Information

Complimentary Self-Parking, Valet $22 per day
Sponsors