University of Texas School of Law
18th Annual
Advanced Patent Law Institute
Austin Oct 31 - Nov 1, 2013 Four Seasons Hotel
Conference Concluded
Related products:       eConferences       Complete Conference Materials

MAJOR SPONSOR

IPFC Corp.


SPONSORS
Baker Botts
DuBois, Bryant & Campbell, L.L.P.
Farney Daniels PC
Fish & Richardson P.C.
Haynes and Boone, LLP
Jones Day
Kenyon & Kenyon LLP
Norton Rose Fulbright
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Thompson & Knight LLP
Vinson & Elkins LLP
Winstead PC

UT Law CLE

2013 Advanced Patent Law Institute

Program Features
UT Law's Advanced Patent Law Institute in Austin covers the latest developments in patent law and features a sophisticated and rich array of prosecution and litigation topics including:
  • The impact of key patentable subject matter cases in both software and life sciences
  • Current issues in antitrust and FRAND patents, post-grant proceedings and concurrent litigation strategies one year after AIA
  • Developments in claim construction and potential impact of Lighting Ballast
  • Best practices for design patent prosecution and filing strategies for in-house counsel
  • Discussion of recent SCOTUS decisions regarding patent exhaustion and the first-sale doctrine
The Institute also features a U.S. District Court Judicial Panel, a unique panel on the Economics of NPEs, and up to 2.75 hours of ethics including a Keynote Presentation by David Hricik of Mercer University School of Law—Ethics in Doing Deals and Settling IP Suits.

Don’t miss this nationally recognized faculty including senior IP counsel of major corporations, patent prosecution and litigation experts from around the nation, U.S. District Court Judges, and leading academics.

UT Law CLE

2013 Advanced Patent Law Institute

5/25/19
Schedule

Thursday Morning, Oct. 31, 2013

Presiding Officer:
David L. McCombs, Haynes and Boone, LLP - Dallas, TX

7:30 am
Registration Opens

Includes continental breakfast.

8:20 am
Welcoming Remarks

8:30 am

0.50 hr

Patentable Subject Matter: Software and Business Methods

A discussion of the patent-eligibility of software and business methods and a review of CLS Bank v. Alice and other recent decisions.

Sanders N. Hillis, Brinks Hofer Gilson & Lione - Indianapolis, IN

9:00 am

0.50 hr

Antitrust and FRAND Patents: Current Issues and Red Flags

Antitrust issues have taken on increasing profile and importance in the last year—the Supreme Court in FTC v. Actavis re-calibrated the scope of antitrust immunity for a patent owner while clarifying the standard against which conduct outside of that immunity is evaluated for liability; the Justice Department has prosecuted a high-profile case based in large part on "most favored nations" provisions (a common feature in licenses); antitrust enforcers are investigating the actions of patent assertion entities and patent pools; FRAND has made headlines with a Presidential veto of an ITC exclusion order and with continuing lawsuits between major telecom companies over how to define and apply FRAND obligations; and the EU has also been active in dealing with FRAND commitments, highlighting the globalization of antitrust enforcement.

David M. Hoffman, Fish & Richardson P.C. - Austin, TX

9:30 am

0.75 hr

Valuation of FRAND Patents

Technology firms often agree to license their standard essential patents on fair and reasonable terms. There has been much discussion and disagreement about what fair and reasonable means when licensing standards essential patents. Recent District Court decisions have indicated that interpreting fair and reasonable requires an analysis focused on the value of the standard and the relative value of the patents being licensed to the other patents in the standard. This interpretation may have significant implications for the value of standard essential patents.

Moderator:
James D. Woods, UHY Advisors, Inc. - Houston, TX
Panelists:
Douglas A. Cawley, McKool Smith PC - Dallas, TX
Christopher V. Ryan, Vinson & Elkins LLP - Austin, TX
Jennifer B. Wuamett, Freescale Semiconductor, Inc. - Austin, TX

10:15 am
Break

10:30 am

0.50 hr

Revisiting Remedies at the ITC

From The White House, to Congress, to the Judiciary, and to the ITC itself, recent use of patent enforcement at the ITC has drawn the attention—and reaction—of all branches of government. Those reactions, their motivations, and their potential effects on patent enforcement and remedies at the ITC are surveyed.

Alan D. Albright, Sutherland Asbill & Brennan LLP - Austin, TX

11:00 am

0.75 hr
0.25 hr ethics

How to Maximize Success Before the Federal Circuit

A discussion of critical pre-appeal efforts necessary to preserve issues for appeal and how to craft a winning brief and oral argument accompanied by anecdotes from the presenter from over 160 cases he has argued.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC

11:45 am

0.50 hr

Best Practices in Design Patent Prosecution in View of In re Owens, and What Lies Ahead

The landscape for preparing and prosecuting design patent applications has been radically altered by the recent Federal Circuit decision In re Owens. Strategies and best practices are discussed along with a look toward the future including implementation of the international design filing system under the Hague Agreement.

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

12:15 pm
Pick Up Lunch

Included in registration.

Thursday Afternoon, Oct. 31, 2013

Presiding Officer:
Shirley Webster, Ocean Tomo, LLC - Houston, TX

LUNCHEON PRESENTATION

Sponsored by Baker Botts

12:35 pm

1.00 hr
0.50 hr ethics

Judicial Panel

Distinguished judges from the District Court discuss their experiences hearing and trying patent cases, and examine the status and results of the Pilot Program.

Moderator:
Scott F. Partridge, Baker Botts - Houston, TX
Panelists:
Hon. Nancy F. Atlas, U.S. District Court, Southern District of Texas - Houston, TX
Hon. Barbara M. G. Lynn, U.S. District Court, Northern District of Texas - Dallas, TX
Hon. Lee Yeakel, U.S. District Court, Western District of Texas - Austin, TX

1:35 pm
Break

1:45 pm

0.50 hr

Damages and Remedies: Overview of Current Cases and Methodologies

A look at important damages and remedy issues, including the market value rule and its application, damages and remedy issues when standard essential patents are at issue, and recent injunction case law.

Michael J. Newton, Alston & Bird LLP - Dallas, TX

2:15 pm

0.75 hr

Damages and Remedies: Panel Discussion

Moderator:
Michael J. Newton, Alston & Bird LLP - Dallas, TX
Panelists:
Brett C. Govett, Norton Rose Fulbright - Dallas, TX
James J. Nawrocki, IPFC Corp. - Houston, TX

3:00 pm

1.00 hr

Concurrent Litigation Strategies After AIA

Review of the impact of the AIA on patent litigation and the new opportunities and challenges emerging for both plaintiffs and defendants—how the case law is developing in the wake of recent legislative changes and the practical ways in which courts are addressing those changes; the latest tactical developments in venue selection and multi-defendant litigation; changes in the requirements for inducement; the use of parallel PTAB proceedings to contest validity; the interplay between proceedings in the courts and PTAB; and overall case management considerations. Hear perspectives on what the future holds (as best anyone can tell), including whether new defenses or new legislation will further alter the patent litigation landscape.

Moderator:
Mark E. Patrick, Texas Instruments Incorporated - Dallas, TX
Panelists:
Bryan Farney, Farney Daniels PC - Georgetown, TX
Hilda C. Galvan, Jones Day - Dallas, TX
David L. McCombs, Haynes and Boone, LLP - Dallas, TX
Donald R. McKenna, Taiwan Semiconductor Manufacturing Company - Hsinchu, Taiwan

4:00 pm
Break

4:15 pm

0.50 hr

Post-Grant Proceedings, Strategies, and Practice: One Year After AIA

The new inter partes review (IPR) and covered business method (CBM) post-grant proceedings became operational on September 16, 2012, and the new post-grant review (PGR) became operational on March 16, 2013. More than one post-grant proceeding has been filed every calendar day since IPR and CBM became available and the rate of filings continues to rise. Many proceedings are progressing through trial at the new Patent Trial & Appeal Board as they move towards final written decision. Major decisions, developments and trends have occurred in these proceedings that provide a road map of how this new patent world is taking shape.

Robert Greene Sterne, Sterne Kessler Goldstein & Fox, PLLC - Washington, DC

4:45 pm

0.75 hr

Filing Strategies for In-House Counsel

In-house counsel discuss application filing strategies, including what, when and where to file. Learn how factors such as budget, subject matter, potential encumbrances, ease of prosecution, and strength of patent offices and legal systems inform and influence both domestic and foreign filing decisions.

Moderator:
John F. Horvath, Austin, TX
Panelists:
Michael C. Barrett, Cirrus Logic - Austin, TX
Robert L. King, Silicon Laboratories - Austin, TX
Travis M. Wohlers, Luminex Corporation - Austin, TX

5:30 pm
Adjourn

Friday Morning, Nov. 1, 2013

Presiding Officer:
Michael P. Adams, Jackson Walker L.L.P. - Austin, TX

8:00 am
Conference Room Opens

Includes Continental Breakfast

8:30 am

0.50 hr ethics

USPTO Ethic Rules vs. Texas Rules of Conduct

Effective May 2, 2013, the USPTO adopted new professional conduct rules. Compare and contrast the new USPTO rules with the Texas Disciplinary Rules of Professional Conduct.

Jane Politz Brandt, Thompson & Knight LLP - Dallas, TX

9:00 am

0.75 hr

Developments in Claim Construction

Claim construction maintains its Copernican centrality to patent prosecution and litigation, displaying all the usual conundrums, inconsistencies and (seemingly) intractable contradictions which are its historic hallmarks. Added to this are two new factors—the presence of the PTAB and its claim construction practices (displayed principally through inter partes reviews), and the Federal Circuit’s long-expected attempt to "rethink" deference in light of Markman, as announced by Lighting Ballast, when claim constructions are reviewed on appeal. These events are reviewed and puzzled over, through attention to new/old/uncertain precedent and procedures for claim construction.

Kenneth R. Adamo, Kirkland & Ellis LLP - Chicago, IL

9:45 am

0.50 hr

Claim Construction after Lighting Ballast

Lighting Ballast has been taken up en banc by the Federal Circuit to address the Court's power to review patent claim construction appeals on a de novo basis.  This presentation examines the highlights of the briefing and oral arguments and the potential impact of the decision.

Jennifer Claire Kuhn, Law Office of Jennifer Kuhn - Austin, TX

10:15 am
Break

10:30 am

0.50 hr

Synchronizing Specification and Claims for Strong (Valid) Patents

The inventor creates the invention. Who creates the claims? The inventor? The patent practitioner? Implicit in Federal Circuit decisions is that the Court is more confident that the inventor created the described embodiments/examples than the claims. If the claims reach too far beyond the disclosed embodiments/examples, the claims are often construed more narrowly than the ordinary meaning of the claims would suggest, or the claims are held invalid for lack of written description support. This presentation provides an in-depth look at what needs to be done with patent specifications so that broad claims are interpreted broadly and found to be valid.

Dale S. Lazar, DLA Piper - Reston, VA

11:00 am

0.75 hr

Patentable Subject Matter: Life Sciences

Review and analysis of recent cases regarding patentable subject matter under 35 U.S.C. 101 such as Prometheus v. Mayo and The Association for Molecular Pathology v. Myriad Genetics, and their impact on USPTO practice and the biotechnology industry including the realm of personalized medicine.

Moderator:
Ana Christina Ward, Asuragen, Inc. - Austin, TX
Panelists:
Mary K. Ferguson, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Boston, MA
Gina N. Shishima, Norton Rose Fulbright - Austin, TX

11:45 am
Pick Up Lunch

Included in registration.

Friday Afternoon, Nov. 1, 2013

Presiding Officer:
John M. Golden, The University of Texas School of Law - Austin, TX

LUNCHEON PRESENTATION

Sponsored by Kenyon & Kenyon LLP

12:05 pm

1.00 hr ethics

Ethics in Doing Deals and Settling IP Suits

Using video cartoons to examine ethical issues in negotiation, this presentation addresses issues of client identity, the line between "puffing" and "material misrepresentations," the duty of disclosure and interaction between the rule against ex parte contacts, the client's right to talk directly to the other side, and the lawyer's obligation not to induce the client to engage in acts the lawyer is barred from doing.

David Hricik, Mercer University School of Law - Macon, GA

1:05 pm
Break

1:15 pm

1.00 hr

Economics of NPEs

Non-Practicing Entities (NPEs) and their supporters believe that NPEs provide a valued market to move, enable and monetize otherwise stagnant patent assets for the benefit of patent assignees. Many corporations believe that NPEs needlessly tax the resources and cash flows of corporate America for little or no gain, whereby NPEs should not be allowed to engage in their business model. This panel explores and debates the differing views and economic effects of the NPE business from all perspectives.

Moderator:
Keith E. Witek, Advanced Micro Devices, Inc. - Austin, TX
Panelists:
Paul Reidy, RPX Corporation - San Francisco, CA
Neal A. Rubin, Cisco Systems, Inc. - San Jose, CA
Ranjeev Singh, Intellectual Ventures - Austin, TX

2:15 pm

0.50 hr

Update on Patent Exhaustion

A discussion of the Supreme Court’s decisions in Bowman v. Monsanto and Kirtsaeng v. John Wiley & Sons regarding patent exhaustion and the first-sale doctrine.

Amber L. Hagy, Weil, Gotshal & Manges LLP - Austin, TX

2:45 pm

0.50 hr

The Mental Gymnastics of Divided Infringement after Akamai and McKesson

Divided infringement is now quite different than direct infringement. Learn about the new law and how it has been applied.

Phillip B. Philbin, Haynes and Boone, LLP - Dallas, TX

3:15 pm

0.50 hr ethics

Inequitable Conduct After Therasense

A survey of how the courts have applied the new inequitable conduct standards of Therasense (including 1st Media), and whether the new standards have impacted the number of inequitable conduct allegations and the disclosure of references to the Patent Office.

Darryl J. Adams, Baker Botts - Austin, TX

3:45 pm
Adjourn

UT Law CLE

2013 Advanced Patent Law Institute

Faculty

Conference Faculty

Kenneth R. Adamo
Kirkland & Ellis LLP
Chicago, IL
Darryl J. Adams
Baker Botts
Austin, TX
Alan D. Albright
Sutherland Asbill & Brennan LLP
Austin, TX
Hon. Nancy F. Atlas
U.S. District Court, Southern District of Texas
Houston, TX
Michael C. Barrett
Cirrus Logic
Austin, TX
Jane Politz Brandt
Thompson & Knight LLP
Dallas, TX
Douglas A. Cawley
McKool Smith PC
Dallas, TX
Donald R. Dunner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Washington, DC
Bryan Farney
Farney Daniels PC
Georgetown, TX
Mary K. Ferguson
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Boston, MA
Hilda C. Galvan
Jones Day
Dallas, TX
Brett C. Govett
Norton Rose Fulbright
Dallas, TX
Amber L. Hagy
Weil, Gotshal & Manges LLP
Austin, TX
Sanders N. Hillis
Brinks Hofer Gilson & Lione
Indianapolis, IN
David M. Hoffman
Fish & Richardson P.C.
Austin, TX
John F. Horvath
Austin, TX
David Hricik
Mercer University School of Law
Macon, GA
Robert L. King
Silicon Laboratories
Austin, TX
Jennifer Claire Kuhn
Law Office of Jennifer Kuhn
Austin, TX
Dale S. Lazar
DLA Piper
Reston, VA
Hon. Barbara M. G. Lynn
U.S. District Court, Northern District of Texas
Dallas, TX
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Donald R. McKenna
Taiwan Semiconductor Manufacturing Company
Hsinchu, Taiwan
James J. Nawrocki
IPFC Corp.
Houston, TX
Michael J. Newton
Alston & Bird LLP
Dallas, TX
Scott F. Partridge
Baker Botts
Houston, TX
Mark E. Patrick
Texas Instruments Incorporated
Dallas, TX
Phillip B. Philbin
Haynes and Boone, LLP
Dallas, TX
Paul Reidy
RPX Corporation
San Francisco, CA
Neal A. Rubin
Cisco Systems, Inc.
San Jose, CA
Christopher V. Ryan
Vinson & Elkins LLP
Austin, TX
Perry Saidman
Saidman DesignLaw Group, LLC
Silver Spring, MD
Gina N. Shishima
Norton Rose Fulbright
Austin, TX
Ranjeev Singh
Intellectual Ventures
Austin, TX
Robert Greene Sterne
Sterne Kessler Goldstein & Fox, PLLC
Washington, DC
Ana Christina Ward
Asuragen, Inc.
Austin, TX
Keith E. Witek
Advanced Micro Devices, Inc.
Austin, TX
Travis M. Wohlers
Luminex Corporation
Austin, TX
James D. Woods
UHY Advisors, Inc.
Houston, TX
Jennifer B. Wuamett
Freescale Semiconductor, Inc.
Austin, TX
Hon. Lee Yeakel
U.S. District Court, Western District of Texas
Austin, TX

Planning Committee

Hilda C. Galvan—Co-Chair
Jones Day
Dallas, TX
David L. McCombs—Co-Chair
Haynes and Boone, LLP
Dallas, TX
Michael P. Adams
Jackson Walker L.L.P.
Austin, TX
Tom Adolph
Adolph Locklar
Houston, TX
Jane Politz Brandt
Thompson & Knight LLP
Dallas, TX
Christa Brown-Sanford
Baker Botts
Dallas, TX
Bryan Farney
Farney Daniels PC
Georgetown, TX
John D. Flynn
IBM Corporation
Austin, TX
John Garvish
McKool Smith, P.C.
Austin, TX
John M. Golden
The University of Texas School of Law
Austin, TX
Brett C. Govett
Norton Rose Fulbright
Dallas, TX
Amber L. Hagy
Weil, Gotshal & Manges LLP
Austin, TX
Gary W. Hamilton
Hamilton & Terrile, LLP
Austin, TX
David J. Healey
Fish & Richardson P.C.
Houston, TX
John F. Horvath
Austin, TX
Joanna Jefferson
Austin, TX
Robert L. King
Silicon Laboratories
Austin, TX
Kevin Kudlac
Weil, Gotshal & Manges LLP
Houston, TX
Mark A. Lemley
Stanford Law School
Stanford, CA
Kevin J. Meek
Baker Botts
Austin, TX
Lance Morman
OverMont Consulting, LLC
Houston, TX
James J. Nawrocki
IPFC Corp.
Houston, TX
David W. O'Brien
Haynes and Boone, LLP
Austin, TX
Mark E. Patrick
Texas Instruments Incorporated
Dallas, TX
Louis A. Riley
McAfee, Inc.
Plano, TX
Mark E. Scott
Conley Rose PC
Austin, TX
Ana Christina Ward
Asuragen, Inc.
Austin, 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
Keith E. Witek
Advanced Micro Devices, Inc.
Austin, TX
James D. Woods
UHY Advisors, Inc.
Houston, TX

UT Law CLE

2013 Advanced Patent Law Institute

Credit Information

MCLE Credit

Texas
14.50 hrs  |  2.75 hrs Ethics
Additional Information
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.  
California
14.50 hrs  |  2.75 hrs Ethics
Additional Information
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.  
Oklahoma
17.50 hrs
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference.
Oklahoma
3.00 hrs
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference.
Other States
Note on Self-Reporting Your Credits in Another State
If you wish to satisfy MCLE or other professional education requirements in another state for a program offered by the University of Texas School of Law, please check with the state bar or other licensing authority in that state before taking the program to ensure it will qualify for self-reporting your credits.

Other Credit

TX Accounting CPE
17.00 hrs
Additional Information
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 will need to sign in on the Accounting CPE Record of Attendance form at the registration desk. You will receive a Texas Accounting Certificate of Completion at the conference for your records. Self-report your CPE credit directly to TSBPA. UT Law CLE will maintain Attendance Records for four years.  

UT Law CLE

2013 Advanced Patent Law Institute

Key Dates

Austin

  • Last day for Individual early registration: Oct 25, 2013
    Add $50 for registrations received after this time
  • Last day for cancellation (full refund): Oct 25, 2013
  • Last day for cancellation (partial refund): Oct 28, 2013
    $50 processing fee applied

UT Law CLE

2013 Advanced Patent Law Institute

Hotel / Venue

Austin

Four Seasons Hotel

98 San Jacinto Boulevard
Austin, TX 78701-4082
512.685.8100 (reservations)
Map

Accommodations

$249.00 good through Sep 30, 2013
Reserve your room online.

Parking Information

$12 Event Daily; $16 Valet Daily; $32.50 Overnight Valet.

UT Law CLE

2013 Advanced Patent Law Institute

Sponsors