University of Texas School of Law
Conference art
TX Credit Info:
14.00 hrs
2.00 hrs Ethics
More Credit Info

13th Annual

Advanced Patent Law Institute

Palo Alto, CA Dec 6-7, 2012 – Four Seasons Hotel
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Also available as: Materials, In-House CLE

Program Features
Join a nationally recognized faculty of leading district judges, academia, patent prosecution, litigation experts and senior IP counsel from major corporations such as Twitter, Netflix and Google, in the heart of Silicon Valley for Advanced Patent Law Institute. This year's program takes an in-depth look at winning strategies for prosecuting and litigating patents, with a special focus on the America Invents Act.

2012 Institute highlights:

  • Post-Grant Practice and Inter Partes Reviews Under the American Invents Act with Chief Judge James Smith, USPTO Board of Patent Appeals and Interferences

  • Strategies for claims drafting, claim construction, and functional claiming

  • Effects of recent litigation and regulation on inequitable conduct, infringement, inducement, privilege, damages calculations, patentable subject matter and standard-essential patents

  • U.S. District Judges panel discussion of cutting edge patent litigation issues

  • Coordinating International Litigation: Focus on German Patent Enforcement discusses multi-national perspectives on drivers of international patent litigation and strategies for handling different countries' legal requirements

  • Special sessions on strategic portfolio management, strategies to foster innovation while curbing offensive litigation and management of litigation involving multiple lawsuits, districts or defendants

The Institute is one of three Advanced Patent Law Institutes presented by The University of Texas School of Law, each uniquely tailored to its locale. This event 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. 6, 2012

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

7:30 am
Registration Opens

Includes continental breakfast.

8:20 am
Welcoming Remarks

8:30 am

0.50 hr

Claims Drafting Strategies

Too often, applicants prosecute patent applications without adequately considering how the claims will be asserted in litigation. A consideration of the latest case law concerning claim format—whether the patentee can proceed on a theory of direct, induced, or contributory infringement, or whether a patentee must proceed on a theory of divided infringement. This session demonstrates ways these theories are litigated, how they affect discovery and litigation cost, and how they can even mean the difference between victory and failure.  More importantly, strategies to avoid the typical claim-format pitfalls are discussed.

Erik R. Puknys, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Palo Alto, CA

9:00 am

0.50 hr

Claim Construction: Methodologies of Construction

A discussion of the growing divide between two basic modes of claim construction emerging from Federal Circuit case law, the current trends in the methodological divide, how the judges split on claim construction and how to think about this.

R. Polk Wagner, University of Pennsylvania School of Law - Philadelphia, PA

9:30 am

0.50 hr

After the Ides of March—Prosecution Strategies Surrounding the March 16 First-to-File Transition

To file or not to file, that is the question. Beginning with a quick review of the differences between the pre- and post-March 16 prior art rules, this discussion focuses on the decision of whether to accelerate filings to take advantage of the pre-March 16 rules and also addresses how prosecution practice may, or may not, change post-March 16.

Michael W. Farn, Fenwick & West LLP - Mountain View, CA

10:00 am
Break

10:15 am

0.50 hr ethics

Malpractice Risks of the First-to-File System and the America Invents Act

The transition from "first-to-invent" to "first-to-file" and other changes under the APA present multiple ethics issues for practitioners, including identifying the more favorable regime as the March 2013 change-over approaches, balancing the "need for speed" with proper drafting practices under the new regime, and reconciling duties to the PTO with client desires now that best mode is no longer a litigation defense.

Ragesh K. Tangri, Durie Tangri LLP - San Francisco, CA

10:45 am

1.00 hr

Post-Grant Practice and Inter Partes Reviews under the America Invents Act

With the new rules on post-grant proceedings now in place, the impact and practice considerations of these new rules from the Office, district court and USITC perspectives are reviewed. A look at strategies and tactics for choice of a validity challenge in the Office, the district court or USITC, and the possible scenarios involving parallel validity proceedings. Timelines, representative costs and chances of success are discussed under the new proceedings, along with the views from the Board now that the new proceedings have become operational.

Moderator:
David L. McCombs, Haynes and Boone, LLP - Dallas, TX
Panelists:
Rajiv P. Patel, Fenwick & West LLP - Mountain View, CA
Panelists:
Hon. James Smith, U.S. Patent and Trademark Office - Alexandria, VA
Panelists:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox - Washington, DC

11:45 am

0.75 hr

Patentable Subject Matter

An analysis of how Prometheus will affect personalized medicine and the Myriad case, the implications of Prometheus for software patents, and where Section 101 considerations fit in the prosecution and litigation process.  

Moderator:
Edward R. Reines, Weil, Gotshal & Manges LLP - Redwood City, CA
Panelists:
Daralyn J. Durie, Durie Tangri LLP - San Francisco, CA
Panelists:
Lee Van Pelt, Van Pelt, Yi & James LLP - Cupertino, CA

12:30 pm
Break to Pick Up Lunch

Included in conference registration fee.

Thursday Afternoon, Dec. 6, 2012

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

LUNCHEON PRESENTATION

Sponsored by Hickman Palermo Truong Becker Bingham Wong LLP

12:45 pm

1.00 hr

Essential Questions About Standard-Essential Patents

Patents that are considered essential to industry standards raise special concerns. A look at several issues that have been the subject of recent debate in legislative and administrative bodies and litigation in the courts such as proving—and defending against—claims of infringement, the duty of disclosure to standards bodies and when the duty arises, the duty to license on reasonable and non-discriminatory terms and related disagreements about the availability of injunctive relief, and transfers of standard-essential patents which can involve questions of both contract and competition law. 

Moderator:
Stanley Young, Covington & Burling LLP - Redwood City, CA
Panelists:
Matthew Bye, Google Inc. - Mountain View, CA
Panelists:
Mark D. Flanagan, Wilmer Cutler Pickering Hale and Dorr LLP - Palo Alto, CA
Panelists:
Andrew N. Thomases, Skadden, Arps, Slate, Meagher & Flom LLP - Palo Alto, CA

1:45 pm
Break

2:00 pm

0.50 hr ethics

Privilege: Don't Believe Everything You Think

Recent decisions on various types of privilege have surprised many practitioners. An analysis of several fluid areas of privilege law, such as whether mediation or settlement privilege exist, how (not) to establish a relationship with a third party that supports the attorney-client privilege, and privilege surprises when you leave the cozy confines of the United States.

Karen Boyd, Turner Boyd LLP - Mountain View, CA

2:30 pm

1.00 hr

What is That Patent Really Worth? Courts Take a Hard Look at the "Reasonable Royalty" Calculation

The Federal Circuit and district courts have recently begun requiring experts to link reasonable royalty calculations to real-world facts related to the specific invention—e.g. Apple v. Motorola. Courts are also taking a close look at what facts are admitted into evidence, excluding sales data (Uniloc) and license data (ResQnet) that were employed erroneously to "drive up" the royalty rate.  These cases do not always make clear whether it is the expert's method or data that should be excluded. The need for better methods and better data is especially strong in the case of complex products, which may embody hundreds of patents. This panel examines recent cases and discusses new economic methods that hold promise for satisfying the new standards that have emerged in them. 

Moderator:
Julie M. Holloway, Latham & Watkins LLP - San Francisco, CA
Panelists:
Eugene M. Paige, Keker & Van Nest LLP - San Francisco, CA
Panelists:
Jonathan D. Putnam, Competition Dynamics - Salem, MA

3:30 pm
Break

3:45 pm

0.75 hr

Managing Patent Cases in the Era of Misjoinder, Multidistrict Litigation, and Multinational Litigation

A discussion of the latest developments in management of multiple lawsuits involving the same patent or set of patents, the growth of multidistrict litigation as an option in multi-defendant cases, the influence of AIA as well as In re EMC on such cases, the developments of Rule 42 consolidation after misjoinder under Rule 20 is found and the challenges of coordinating domestic and international litigation.

David S. Bloch, Winston & Strawn LLP - San Francisco, CA
Michael F. Heafey, Orrick, Herrington & Sutcliffe LLP - Menlo Park, CA

4:30 pm

1.00 hr
0.50 hr ethics

Judicial Panel

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

Moderator:
Thomas M. Melsheimer, Fish & Richardson P.C. - Dallas, TX
Panelists:
Hon. J. Rodney Gilstrap, U.S. District Court, Eastern District of Texas - Marshall, TX
Panelists:
Hon. Roy Payne, U.S. District Court, Eastern District of Texas - Marshall, TX
Panelists:
Hon. Ronald M. Whyte, U.S. District Court, Northern District of California - San Jose, CA

5:30 pm
Adjourn

Friday Morning, Dec. 7, 2012

Presiding Officer:
Ron Laurie, Palo Alto, CA

8:00 am
Conference Room Opens

Includes continental breakfast.

8:30 am

0.50 hr

Functional Claiming

Software patents are often claimed in functional terms, even if they don't use means-plus-function language.  An in-depth look at the perils—and promise—of functional claiming in software.
 

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

9:00 am

1.00 hr

Coordinating International Litigation: Focus on German Patent Enforcement

An overview of international patent litigation that focuses on German patent litigation and the Pan-European perspective such as the smartphone wars and what drives litigations in certain forums and countries. Learn strategies for handling substantive legal differences and comparing limits on discovery, duration of trials, bifurcation of issues, arbitration and mediation and remedies.

Moderator:
Yar R. Chaikovsky, McDermott Will & Emery - Menlo Park, CA
Panelists:
David L. Cohen, Vringo Inc. - New York, NY
Panelists:
Alexander Harguth, McDermott Will & Emery - München , Germany
Panelists:
Ari Laakkonen, Powell Gilbert LLP - London, United Kingdom

10:00 am
Break

10:15 am

1.00 hr

Strategic Portfolio Management

Experts in strategic portfolio management discuss key issues and insightful thinking processes involved in adapting to sweeping AIA changes and critical case law, the increasing internationalization of patent activity and the increasing "make-versus-buy" trade-offs of the patent marketplace. Learn how to keep up with accelerating technological change and the pace of R&D, and how to address constant management and budget challenges.

Moderator:
Christopher J. Byrne, San Jose, CA
Panelists:
T.J. Angioletti, Netflix, Inc. - Los Gatos, CA
Panelists:
Sandeep Jaggi, Intermolecular, Inc. - San Jose, CA
Panelists:
Philip L. McGarrigle, Jazz Pharmaceuticals - Palo Alto, CA

11:15 am

0.75 hr

Emerging Developments at the ITC:  Domestic Industry and Remedies

The International Trade Commission's surge in popularity continues to make it a favored forum for bringing patent disputes. Over the past year, Congress and the Commission have closely considered who should be allowed to bring a patent case and what remedies the ITC should award. Evolving domestic industry requirements for obtaining relief in ITC cases along with emerging ITC remedies issues are reviewed from a policy and legal standpoint.  Hear a Q&A discussion of the substantive law, developments in the ITC's Rules and Procedures and the politics of the ITC.

Colleen Chien, Santa Clara University - Santa Clara, CA
Eric R. Lamison, Kirkland & Ellis LLP - San Francisco, CA

12:00 pm
Break to Pick Up Lunch

Included in conference registration fee.

Friday Afternoon, Dec. 7, 2012

Presiding Officer:
Vernon M. Winters, San Francisco, CA

LUNCHEON PRESENTATION

Sponsored by Inflexion Point Strategy, LLC

12:20 pm

0.75 hr

New Approaches to Patent Strategy and to Dealing with Inventors

A look at new ways of dealing with innovators and innovation, including strategies that may foster invention disclosures and curb offensive patent litigation. The panel discusses the merits of Twitter’s proposed patent assignment—the Innovator's Patent Agreement (IPA)—that allows inventors to limit the offensive use of their patents, and the Defensive Patent License (DPL) that protects innovators by networking patents into mutually beneficial legal shields. The interplay of these strategies with recent USPTO rule changes to implement the Inventor’s Oath or Declaration provisions of the America Invents Act is addressed.

Moderator:
Bradley Baugh, North Weber & Baugh LLP - Palo Alto, CA
Panelists:
Benjamin Lee, Twitter, Inc. - San Francisco, CA
Panelists:
Jennifer M. Urban, UC Berkeley School of Law - Berkeley, CA

1:05 pm
Break

1:15 pm

0.50 hr

Joint/Divided Infringement

After en banc rehearing by a divided court, the Federal Circuit, in Akamai and McKesson, serves up new indirect infringement doctrines that obviate requirements for predicate direct infringement liability in 271(b) inducement cases. How will the new doctrines affect claiming strategies and infringement litigation? Will the doctrines survive scrutiny of the Supreme Court?

David W. O'Brien, Zagorin O'Brien Graham LLP - Austin, TX

1:45 pm

0.50 hr ethics

Inequitable Conduct after Therasense: All Clear?

A look at how the law of inequitable conduct has been reconfigured by the Federal Circuit's 2011 decision in Therasense and how courts analyze the requirement of "but-for" materiality. What does it mean to have acted with "intent to deceive" in a hypothetical, but-for world? The interplay between the new law of inequitable conduct and related doctrines, such as Walker Process antitrust claims, is discussed along with the PTO response to Therasense, including the revisions to PTO Rule 56(a).

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

2:15 pm

0.50 hr

Inducement

Hot topics in inducement law, including divided infringement scenarios after Akamai, the interplay between inducement's intent requirement and willfulness, and the risks and rewards of opinion letters in combating inducement allegations.

Jeffrey G. Homrig, Kasowitz, Benson, Torres & Friedman LLP - Redwood City, CA

2:45 pm

0.50 hr

To Plead or Not to Plead

A look at the murky landscape of pleading standards for infringement and invalidity between Twombly/Iqbal, Form 18 and all of the varying court opinions in between.

Jeannine Yoo Sano, White & Case LLP - Palo Alto, CA
Bijal V. Vakil, White & Case LLP - Palo Alto, CA

3:15 pm
Adjourn

Faculty

Conference Faculty

T.J. Angioletti
Netflix, Inc.
Los Gatos, CA
Bradley Baugh
North Weber & Baugh LLP
Palo Alto, CA
David S. Bloch
Winston & Strawn LLP
San Francisco, CA
Karen Boyd
Turner Boyd LLP
Mountain View, CA
Matthew Bye
Google Inc.
Mountain View, CA
Christopher J. Byrne
San Jose, CA
Yar R. Chaikovsky
McDermott Will & Emery
Menlo Park, CA
Colleen Chien
Santa Clara University
Santa Clara, CA
David L. Cohen
Vringo Inc.
New York, NY
Daralyn J. Durie
Durie Tangri LLP
San Francisco, CA
Michael W. Farn
Fenwick & West LLP
Mountain View, CA
Mark D. Flanagan
Wilmer Cutler Pickering Hale and Dorr LLP
Palo Alto, CA
Hon. J. Rodney Gilstrap
U.S. District Court, Eastern District of Texas
Marshall, TX
Robert J. Goldman
Ropes & Gray, LLP
East Palo Alto, CA
Alexander Harguth
McDermott Will & Emery
München , Germany
Michael F. Heafey
Orrick, Herrington & Sutcliffe LLP
Menlo Park, CA
Julie M. Holloway
Latham & Watkins LLP
San Francisco, CA
Jeffrey G. Homrig
Kasowitz, Benson, Torres & Friedman LLP
Redwood City, CA
Sandeep Jaggi
Intermolecular, Inc.
San Jose, CA
Ari Laakkonen
Powell Gilbert LLP
London, United Kingdom
Eric R. Lamison
Kirkland & Ellis LLP
San Francisco, CA
Benjamin Lee
Twitter, Inc.
San Francisco, CA
Mark A. Lemley
Stanford Law School
Stanford, CA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Philip L. McGarrigle
Jazz Pharmaceuticals
Palo Alto, CA
Thomas M. Melsheimer
Fish & Richardson P.C.
Dallas, TX
David W. O'Brien
Zagorin O'Brien Graham LLP
Austin, TX
Eugene M. Paige
Keker & Van Nest LLP
San Francisco, CA
Rajiv P. Patel
Fenwick & West LLP
Mountain View, CA
Hon. Roy Payne
U.S. District Court, Eastern District of Texas
Marshall, TX
Erik R. Puknys
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Palo Alto, CA
Jonathan D. Putnam
Competition Dynamics
Salem, MA
Edward R. Reines
Weil, Gotshal & Manges LLP
Redwood City, CA
Jeannine Yoo Sano
White & Case LLP
Palo Alto, CA
Hon. James Smith
U.S. Patent and Trademark Office
Alexandria, VA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox
Washington, DC
Ragesh K. Tangri
Durie Tangri LLP
San Francisco, CA
Andrew N. Thomases
Skadden, Arps, Slate, Meagher & Flom LLP
Palo Alto, CA
Jennifer M. Urban
UC Berkeley School of Law
Berkeley, CA
Bijal V. Vakil
White & Case LLP
Palo Alto, CA
Lee Van Pelt
Van Pelt, Yi & James LLP
Cupertino, CA
R. Polk Wagner
University of Pennsylvania School of Law
Philadelphia, PA
Hon. Ronald M. Whyte
U.S. District Court, Northern District of California
San Jose, 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
David S. Bloch
Winston & Strawn LLP
San Francisco, CA
Karen Boyd
Turner Boyd LLP
Mountain View, CA
Christopher J. Byrne
San Jose, CA
Yar R. Chaikovsky
McDermott Will & Emery
Menlo Park, CA
I. Neel Chatterjee
Orrick, Herrington & Sutcliffe LLP
Menlo Park, CA
Colleen Chien
Santa Clara University
Santa Clara, CA
Daralyn J. Durie
Durie Tangri LLP
San Francisco, CA
Michael W. Farn
Fenwick & West LLP
Mountain View, CA
Mark D. Flanagan
Wilmer Cutler Pickering Hale and Dorr LLP
Palo Alto, CA
William S. Galliani
Cooley LLP
Palo Alto, CA
Robert J. Goldman
Ropes & Gray, LLP
East Palo Alto, CA
Julie M. Holloway
Latham & Watkins LLP
San Francisco, CA
Jeffrey G. Homrig
Kasowitz, Benson, Torres & Friedman LLP
Redwood City, CA
Kenneth Korea
Samsung Information Systems America
San Jose, CA
Eric R. Lamison
Kirkland & Ellis LLP
San Francisco, CA
Dan H. Lang
Cisco Systems, Inc.
San Jose, CA
Ron Laurie
Palo Alto, CA
Katherine Kelly Lutton
Fish & Richardson P.C.
Redwood City, CA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Christopher J. Palermo
Hickman Palermo Truong & Becker LLP
San Jose, CA
Rajiv P. Patel
Fenwick & West LLP
Mountain View, CA
Edward R. Reines
Weil, Gotshal & Manges LLP
Redwood City, CA
Jeannine Yoo Sano
White & Case LLP
Palo Alto, CA
David M. Simon
Santa Clara, CA
Andrew N. Thomases
Skadden, Arps, Slate, Meagher & Flom LLP
Palo Alto, CA
Lee Van Pelt
Van Pelt, Yi & James LLP
Cupertino, CA
Mallun Yen
RPX Corporation
San Francisco, CA
Stanley Young
Covington & Burling LLP
Redwood City, CA
Credit Information

MCLE Credit

Texas
14.00 hrs  |  2.00 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
14.00 hrs  |  2.00 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
16.50 hrs
Key Dates

Palo Alto, CA

  • Last day for Standard Registration early registration: Nov 28, 2012
    Add $50 for registrations received after this time
  • Last day for Green Registration - USB Key ONLY early registration: Nov 28, 2012
    Add $50 for registrations received after this time
  • Last day for cancellation (full refund): Nov 30, 2012
  • Last day for cancellation (partial refund): Dec 3, 2012
    $50 processing fee applied

Hotel / Venue

Palo Alto, CA

Four Seasons Hotel

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

Accommodations

$275.00 good through Nov 5, 2012

Parking Information

Day of event complimentary self-parking; $12 valet.
Overnight self-parking $12; $22 overnight valet.
Sponsors