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15^th Annual

Advanced Patent Law Institute - Austin

Austin Oct 28-29, 2010 Four Seasons Hotel
Conference Concluded

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Overview

Join a nationally-recognized faculty which includes senior IP counsel from Microsoft, Freescale, Advanced Micro Devices, FMC Technologies and Trilogy; practitioners from around the nation; and academics from Stanford Law School, Mercer University School of Law and University of Texas School of Law.

The 2010 program includes a rich array of prosecution and litigation topics including Bilski and patentable subject matter, the impact of Costco, claims construction, the use of surveys, damages, patent pools, injunctions and design-around strategies, reexamination vs. litigation, and much more.

Event Schedule

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

Day 1 October 28, 2010
Day 2 October 29, 2010

Time

Credit

Subject

Speaker
Thursday Morning, Oct. 28, 2010
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

0.33 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
9:20 am

0.50 hr

Claims Drafting Strategies and Prosecution Issues

Patent prosecutors spend every day drafting and prosecuting claims to ensure that they comply with Sections 101, 102, 103 and 112. Further, most—but unfortunately not all—know how to avoid mistakes that result in an unnecessarily narrow claim construction. Often overlooked, however, are the steps a patent prosecutor can take to maximize a damages award or capture a direct infringer so his client faces fewer hurdles in proving infringement at trial. This presentation, based on the latest decisions from the Federal Circuit, shows how careful drafting and prosecution of patent applications can avoid the lesser-known, but often fatal, problems that patentees face in patent litigation.

Materials By:
Erik R. Puknys, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Palo Alto, CA
Mark D. Sweet, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC
9:50 am

0.50 hr

Claim Construction: Play Continues

Claim construction remains the engine driving the patent train, both in preparation and prosecution, and in litigation. As Federal Circuit personnel change, does precedent change claim construction "in the field," despite Phillips? Discussion of the year's cases is focused on that question.

Kenneth R. Adamo, Jones Day - Dallas, TX
10:20 am

Break
10:35 am

0.50 hr ethics

Inequitable Conduct

After years of differing opinions, the Federal Circuit will consider en banc the standards to apply to inequitable conduct in Therasense v. Becton Dickinson. The presentation covers the need for en banc review, the issues raised in Therasense and possible outcomes.

Darryl J. Adams, Baker Botts L.L.P. - Austin, TX
11:05 am

0.50 hr

ITC Update

It is the new favorite forum for non-practicing entities—the bar for entry has been lowered and the threat of an injunction has increased.

David M. Maiorana, Jones Day - Cleveland, OH
11:35 am

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. Also in 2010, a district court judge ruled that claims for isolated genetic sequences and their diagnostic use lacked patentable subject matter. Where might the law go from here and how might private parties react?

John M. Golden, The University of Texas School of Law - Austin, TX
Mark A. Lemley, Stanford Law School - Stanford, CA
Thursday Afternoon, Oct. 28, 2010
Presiding Officer:
Brent K. Bersin, Navigant Consulting, Inc. - Houston, TX
12:20 pm

Lunch on your Own
1:30 pm

0.50 hr

Navigating Injunctions and Motions for Contempt: Effective (and Ineffective) Design-Around Strategies

A summary of cases involving post-judgment enforcement of injunctions, contempt proceedings and new infringement actions. The discussion includes the en banc hearing in TiVo v. EchoStar (Fed. Cir. 2010) and suggested strategies for wording injunctions, for enforcing injunctions, and for designing around patents and injunctions.

Tom Adolph, Jackson Walker LLP - Houston, TX
2:00 pm

0.50 hr

Surveys in Patent Litigation: Use or Abuse?

The use of surveys in patent litigation to attempt to prove direct infringement and damages appears to be a growing trend. This presentation examines why plaintiffs may choose this path, discovery issues relating to patent surveys, and issues relating to the use and admissibility of patent surveys at trial.

Kevin Sean Kudlac, Weil, Gotshal & Manges LLP - Houston, TX
2:30 pm

0.50 hr

Grey Markets: Costco and its Potential Implications for Copyright and Patent Exhaustion

The Supreme Court has granted certiorari in Costco Wholesale Corp. v. Omega, S.A. to decide whether the "first-sale doctrine" in U.S. copyright law applies to imported goods that have been made abroad by the copyright owner. And in Fujifilm Corp. v. Benun, the Federal Circuit recently held that the Supreme Court's decision in Quanta did not eliminate the territoriality requirement for patent exhaustion. This presentation examines the potential impact of Costco on copyright and patent exhaustion, including the territoriality requirement for both.

Douglas W. McClellan, Weil, Gotshal & Manges LLP - Houston, TX
3:00 pm

Break
3:15 pm

0.50 hr

Damages, Part I: Legal Developments in Licensing Issues, Apportionment and Reasonable Royalties

With district courts, the Federal Circuit and Congress taking aim at a wide range of patent damages issues recently, including Georgia-Pacific factors, the EMVR, customer demand, licenses and settlements, and the competency and sufficiency of expert testimony, many questions have been raised about how clients and practitioners should approach damages claims now, and the kinds of evidentiary support and economic proof that may be required for damages awards capable of surviving scrutiny at every level.

Bruce S. Sostek, Thompson & Knight LLP - Dallas, TX
3:45 pm

0.75 hr

Damages, Part II: Litigation Strategies

Two experienced patent trial attorneys, along with experienced financial testifying experts, use a point-counterpoint format to discuss new approaches to presenting and defending damages in patent cases that have emerged in the wake of several recent Federal Circuit rulings curtailing damages in patent cases. Topics include apportioning the value of the claimed features, analyzing and applying license agreements, handling assertions of non-infringing alternatives, and other economic and trial issues related to patent damages.

Stephen L. Becker, Applied Economics Consulting Group, Inc. - Austin, TX
Brett C. Govett, Fulbright & Jaworski L.L.P. - Dallas, TX
W. Todd Schoettelkotte, FTI Consulting, Inc. - Houston, TX
Theodore Stevenson III, McKool Smith, P.C. - Dallas, TX
4:30 pm

1.00 hr
0.50 hr ethics

Judicial Panel

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

Moderator:
Alan D Albright, Bracewell & Giuliani LLP - Austin, TX
Panelists:
Hon. Nancy F. Atlas, U.S. District Court, Southern District of Texas - Houston, TX
Panelists:
Hon. W. Royal Furgeson Jr., U.S. District Court, Northern District of Texas - Dallas, TX
Panelists:
Hon. Barbara M.G. Lynn, U.S. District Court, Northern District of Texas - Dallas, TX
Panelists:
Hon. T. John Ward, U.S. District Court, Eastern District of Texas - Marshall, TX
5:30 pm

Adjourn

Time

Credit

Subject

Speaker
Friday Morning, Oct. 29, 2010
Presiding Officer:
James D. Woods, UHY Advisors FLVS, Inc. - Houston, TX
8:00 am

Conference Room Opens

Includes continental breakfast.
8:30 am

0.50 hr ethics

Litigation Holds and Spoliation

A brief discussion of document retention requirements, hold notices, spoliation and related legal and ethical obligations.

Peter M. Roossien, Freescale Semiconductor, Inc. - Austin, TX
Barry K. Shelton, Bracewell & Giuliani LLP - Austin, TX
9:00 am

0.50 hr

Design Patent Litigation Post-Egyptian Goddess

The Federal Circuit's decision to eliminate the "point of novelty" element of design patent infringement proof was the first of a litany of district court and Federal Circuit decisions that impact the way in which design patents now are procured and litigated. This presentation examines recent design patent case law and provides practical tips on design patent litigation Post-Egyptian Goddess.

Christopher J. Renk, Banner & Witcoff, Ltd. - Chicago, IL
9:30 am

0.50 hr ethics

Ethics Issues Relating to Patent Practice

The presentation addresses recent developments in both legal malpractice and conflicts (disqualification) cases which arise out of patent prosecution and litigation, and offers a few practical tips for minimizing your risk of finding yourself in either situation.

Ragesh K. Tangri, Durie Tangri LLP - San Francisco, CA
10:00 am

Break
10:15 am

0.50 hr ethics

Disqualification Motions

Overlooking procedural issues that accompany a motion to disqualify can have a serious impact. This session describes issues concerning standing, which rules apply in state and federal court and the roles they play, the impact of disqualification on existing work product, and the question of appealability.

David Hricik, Mercer University School of Law - Macon, GA
10:45 am

0.50 hr

Corporate Patent Strategy: Portfolio Management, Monetization and M&A Issues

Patents exist for one reason ... money. If a patent isn’t making money for a patent owner, either directly or indirectly, then patents aren’t worth the expense. To ensure an adequate return for patent assets, patent owners must develop a comprehensive strategy that governs all patent operations, from patent selection/creation, patent portfolio management and patent monetization to asset M&A. Do you (or your clients) have a strategy that is the lighthouse for all your patent operations?

Keith E. Witek, Advanced Micro Devices, Inc. - Austin, TX
11:15 am

0.75 hr

Patent Pools Standards and Patent Misuse

Patent misuse generally requires a showing of market power, yet with the persuasive use of patent pools to license de facto or de jure standards, as well as the establishment of licensing companies that administer both patent pools and private portfolios, market power is easier to prove and the focus is now on the actual conduct and its consequences.

David J. Healey, Fish & Richardson P.C. - Houston, TX
Friday Afternoon, Oct. 29, 2010
Presiding Officer:
Robert L. King, Silicon Laboratories - Austin, TX
LUNCHEON PRESENTATION

Sponsored by Bracewell & Giuliani LLP
12:00 pm

Pick up Box Lunch

Included in conference registration fee.
12:15 pm

0.75 hr

Alternative Fee Arrangements and Effective In-House Management

Taking charge of legal costs in a challenging market environment requires changes in the way legal services have been traditionally provided. This panel of in-house counsel discusses strategies for managing the costs associated with handling patent-related matters and provides insight into changes occurring in the profession.

Moderator:
Jennifer B. Wuamett, Freescale Semiconductor, Inc. - Austin, TX
Panelists:
Lance A. Jones, Trilogy - Austin, TX
Panelists:
James T. Sullivan, FMC Technologies Inc. - Houston, TX
1:00 pm

Break
1:15 pm

0.75 hr

Strategic Reexams: Top 10 Issues

The interplay between reexam and litigation creates issues that must be dealt with strategically in each proceeding. Discussed are real life examples of how cases play out regarding the decision to file; joint defense groups; timing considerations including stays, “late” filings, and pendency; judicial views of events in reexam and vice-versa; Office Action Responses and use of declarations; the impact of allowed claims and intervening rights; petition practice; and appeals to the BPAI.

Moderator:
David L. McCombs, Haynes and Boone, LLP - Dallas, TX
Panelists:
Tracy W. Druce, Novak Druce + Quigg LLP - Houston, TX
Panelists:
Jerald 'Jerry' Gnuschke, Microsoft - Redmond, WA
Panelists:
Kevin James Meek, Baker Botts L.L.P. - Austin, TX
2:00 pm

0.50 hr

Venue Transfers in Patent Cases

Venue plays an important role in the outcome of patent litigation. This session analyzes recent Federal Circuit and Texas district court venue cases to determine what tactics parties are using to deal with the changed landscape of patent venue, and how courts are reacting to them.

Michael C. Smith, Siebman, Burg, Phillips & Smith, LLP - Marshall, TX
2:30 pm

0.50 hr

False Patent Marking Suits

The trends, latest case law, legislative developments, risks and preventative measures.

Steven J. Pollinger, McKool Smith, P.C. - Austin, TX
3:00 pm

Adjourn

Day 1 October 28, 2010
Day 2 October 29, 2010

Download Schedule

Conference Faculty

Kenneth R. Adamo

Jones Day
Dallas, TX

Darryl J. Adams

Baker Botts L.L.P.
Austin, TX

Tom Adolph

Jackson Walker LLP
Houston, TX

Alan D Albright

Bracewell & Giuliani LLP
Austin, TX

Hon. Nancy F. Atlas

U.S. District Court, Southern District of Texas
Houston, TX

Stephen L. Becker

Applied Economics Consulting Group, Inc.
Austin, TX

Tracy W. Druce

Novak Druce + Quigg LLP
Houston, TX

Hon. W. Royal Furgeson Jr.

U.S. District Court, Northern District of Texas
Dallas, TX

Jerald 'Jerry' Gnuschke

Microsoft
Redmond, WA

John M. Golden

The University of Texas School of Law
Austin, TX

Brett C. Govett

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

David J. Healey

Fish & Richardson P.C.
Houston, TX

David Hricik

Mercer University School of Law
Macon, GA

Lance A. Jones

Trilogy
Austin, TX

Kevin Sean Kudlac

Weil, Gotshal & Manges LLP
Houston, TX

Mark A. Lemley

Stanford Law School
Stanford, CA

Hon. Barbara M.G. Lynn

U.S. District Court, Northern District of Texas
Dallas, TX

David M. Maiorana

Jones Day
Cleveland, OH

Douglas W. McClellan

Weil, Gotshal & Manges LLP
Houston, TX

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Kevin James Meek

Baker Botts L.L.P.
Austin, TX

Steven J. Pollinger

McKool Smith, P.C.
Austin, TX

Erik R. Puknys

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Palo Alto, CA

Christopher J. Renk

Banner & Witcoff, Ltd.
Chicago, IL

Peter M. Roossien

Freescale Semiconductor, Inc.
Austin, TX

W. Todd Schoettelkotte

FTI Consulting, Inc.
Houston, TX

Barry K. Shelton

Bracewell & Giuliani LLP
Austin, TX

Michael C. Smith

Siebman, Burg, Phillips & Smith, LLP
Marshall, TX

Bruce S. Sostek

Thompson & Knight LLP
Dallas, TX

Theodore Stevenson III

McKool Smith, P.C.
Dallas, TX

James T. Sullivan

FMC Technologies Inc.
Houston, TX

Mark D. Sweet

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

Ragesh K. Tangri

Durie Tangri LLP
San Francisco, CA

Hon. T. John Ward

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

Keith E. Witek

Advanced Micro Devices, Inc.
Austin, TX

Jennifer B. Wuamett

Freescale Semiconductor, Inc.
Austin, TX

Planning Committee

Alan D Albright—Co-Chair

Bracewell & Giuliani LLP
Austin, TX

Keith E. Witek—Co-Chair

Advanced Micro Devices, Inc.
Austin, TX

Tom Adolph

Jackson Walker LLP
Houston, TX

Brent K. Bersin

Navigant Consulting, Inc.
Houston, TX

Andrew J. Dillon

Dillon & Yudell LLP
Austin, TX

Hilda C. Galvan

Jones Day
Dallas, TX

John Garvish

McKool Smith, P.C.
Austin, TX

John M. Golden

The University of Texas School of Law
Austin, TX

John M. Guaragna

DLA Piper
Austin, TX

Gary W. Hamilton

Hamilton & Terrile, LLP
Austin, TX

Robert L. King

Silicon Laboratories
Austin, TX

Kevin Sean Kudlac

Weil, Gotshal & Manges LLP
Houston, TX

Mark A. Lemley

Stanford Law School
Stanford, CA

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Eric L. Natinsky

Quick Technologies Inc.
Austin, TX

David W. O'Brien

Zagorin O'Brien Graham LLP
Austin, TX

Mark Patrick

Texas Instruments
Dallas, TX

Miriam L. Quinn

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

Mark E. Scott

Conley Rose PC
Austin, TX

Barton 'Bart' E. Showalter

Baker Botts L.L.P.
Dallas, TX

Robert W. Turner

Jones Day
Dallas, TX

Shirley Webster

Ocean Tomo, LLC
Houston, TX

Craig W. Weinlein

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

William D. Wiese

Dubois, Bryant & Campbell, LLP
Austin, TX

James D. Woods

UHY Advisors FLVS, Inc.
Houston, TX

Credit Info

Austin

MCLE Credit

Texas – 12.50 hrs | 2.50 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 – 12.50 hrs | 2.50 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 – 15.00 hrs

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 – Oct 28-29, 2010 – Four Seasons Hotel

Conference Concluded

Buy

Austin

Standard Registration
Last day for $675.00 Regular pricing: Oct 20, 2010

$725.00 for registrations received after this time

Last day for cancellation (full refund): Oct 22, 2010

$50 processing fee applied after this date

Last day for cancellation: Oct 25, 2010

Venue

Four Seasons Hotel

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

Accommodations

$240.00 good through Oct 6, 2010

Parking Information

Valet $16 per day, $28.50 Overnight

Our Sponsors

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

Navigant Consulting, Inc.

Navigant Consulting, Inc. (NYSE: NCI) is a specialized independent consulting firm providing litigation, financial, healthcare, energy and operational consulting services to government agencies, legal counsel and large companies facing the challenges of uncertainty, risk, distress and significant change. The Company focuses on industries undergoing substantial regulatory or structural change and on the issues driving these transformations. www.navigantconsulting.com www.navigantconsulting.com/
Fish & Richardson
Bracewell & Giuliani LLP

Bracewell & Giuliani LLP is an international law firm with 470 lawyers in Texas, New York, Washington, D.C., Connecticut, Seattle, Dubai, Kazakhstan, and London. We serve Fortune 500 companies, major financial institutions, start-up companies, leading private investment funds, governmental entities and individuals worldwide. Our attorneys helps clients develop, protect and deploy innovative technologies in telecommunications, electronics, Internet and e-commerce, software, interactive entertainment, energy, biotechnology, nanotechnology, and other industries around the world. We provide strategic business, legal and governmental counsel to technology businesses at every stage of a company's business life - from initial creation and protection of ideas, through development of strong businesses and establishment of market leadership, to mergers, acquisitions and other strategic transactions. www.bracewellgiuliani.com www.bracewellgiuliani.com/

15th Annual

Advanced Patent Law Institute - Austin

Austin Oct 28-29, 2010 Four Seasons Hotel Conference Concluded

Buy

Related products: Materials

Overview

Event Schedule

Thursday Morning, Oct. 28, 2010

Thursday Afternoon, Oct. 28, 2010

Friday Morning, Oct. 29, 2010

Friday Afternoon, Oct. 29, 2010

Conference Faculty

Kenneth R. Adamo

Darryl J. Adams

Tom Adolph

Alan D Albright

Hon. Nancy F. Atlas

Stephen L. Becker

Tracy W. Druce

Hon. W. Royal Furgeson Jr.

Jerald 'Jerry' Gnuschke

John M. Golden

Brett C. Govett

David J. Healey

David Hricik

Lance A. Jones

Kevin Sean Kudlac

Mark A. Lemley

Hon. Barbara M.G. Lynn

David M. Maiorana

Douglas W. McClellan

David L. McCombs

Kevin James Meek

Steven J. Pollinger

Erik R. Puknys

Christopher J. Renk

Peter M. Roossien

W. Todd Schoettelkotte

Barry K. Shelton

Michael C. Smith

Bruce S. Sostek

Theodore Stevenson III

James T. Sullivan

Mark D. Sweet

Ragesh K. Tangri

Hon. T. John Ward

Keith E. Witek

Jennifer B. Wuamett

Planning Committee

Alan D Albright—Co-Chair

Keith E. Witek—Co-Chair

Tom Adolph

Brent K. Bersin

Andrew J. Dillon

Hilda C. Galvan

John Garvish

John M. Golden

John M. Guaragna

Gary W. Hamilton

Robert L. King

Kevin Sean Kudlac

Mark A. Lemley

David L. McCombs

Eric L. Natinsky

David W. O'Brien

Mark Patrick

Miriam L. Quinn

Mark E. Scott

Barton 'Bart' E. Showalter

Robert W. Turner

Shirley Webster

Craig W. Weinlein

William D. Wiese

James D. Woods

Credit Info

MCLE Credit

Other Credit

Key Dates

Venue

Four Seasons Hotel

15^th Annual

Austin Oct 28-29, 2010 Four Seasons Hotel
Conference Concluded