University of Texas School of Law
Conference art
TX Credit Info:
14.50 hrs
2.25 hrs Ethics
More Credit Info

19th Annual

Advanced Patent Law Institute

Austin Nov 6-7, 2014 – Four Seasons Hotel
Conference Concluded

Live Webcast Nov 6-7, 2014
Conference Concluded

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Also available as: Materials, In-House CLE


PREMIER SPONSOR
IPFC Corp.

EVENT SPONSORS
Fish & Richardson P.C.
Greenberg Traurig, LLP
Kenyon & Kenyon LLP

SPONSORS
Baker Botts
DuBois, Bryant & Campbell, L.L.P.
Five Corners Group
Grant Thornton LLP
Haynes and Boone, LLP
Jackson Walker L.L.P.
Lee & Hayes
McKool Smith
Norton Rose Fulbright
Ocean Tomo, LLC
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Sutherland Asbill & Brennan LLP
Thompson & Knight LLP
Vinson & Elkins LLP
Wilson Sonsini Goodrich & Rosati
Program Features
UT Law's Advanced Patent Law Institute in Austin covers the latest developments and impacts of key cases in patent law, and features a sophisticated array of presentations and discussions on prosecution and litigation topics, including:
  • An in-depth look at post-grant proceedings, including current trends, litigation strategies, and “lessons learned” in post-grant patent trials
  • Presentations from nationally-recognized academics—Mark A. Lemley, Stanford Law School; Dennis Crouch, University of Missouri School of Law; John M. Golden, The University of Texas School of Law; and David Hricik, Mercer University School of Law
  • Learn the impact of key patentable subject matter cases in both software and life sciences
  • Recent developments in claims construction, including the Supreme Court’s review of the appeal standard Teva Pharmaceuticals v. Sandoz
  • Insight from sitting District Court Judges Rodney J. Gilstrap and James L. Robart, as well as former Chief Judge of the Federal Circuit, Randall Rader, on the current landscape for damages and remedies and their experiences hearing patent cases
  • A discussion of Octane Fitness and Highmark and the impact on fee shifting under Section 285
  • An update on patent troll litigation, including proposed legislation, rule changes, and expected developments
Don’t miss this nationally-recognized faculty with some of the nation’s leading patent prosecution and litigation practitioners, senior IP counsel of major corporations, Judges from the Federal Circuit, U.S. District Courts and USPTO, and the top academics in the field.
Schedule

Thursday Morning, Nov. 6, 2014

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

7:30 am

Austin Only

Registration Opens

Includes continental breakfast.

8:20 am
Welcoming Remarks

8:30 am

1.00 hr

Recent Developments in Claims Construction

It is a hot year for claim construction issues, at the Federal Circuit, the U.S. District Courts—and thanks to the rise of IPR/CBMR post-grant proceedings—at the PTAB as well. Hanging over all is the Supreme Court's review of the appeal standard on claim construction in Teva Pharmaceuticals v. Sandoz. "To defer or not to defer, that is the question” and, if so, to what will deference be owed? See where we are now and where we’ll likely be at year-end. Fasten your seat belts, it’s going to be a bumpy ride!

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

9:30 am

.50 hr

Broadest Reasonable Interpretation

The broadest reasonable interpretation (BRI), once only of interest to patent prosecutors, has now invaded the world of patent litigators in proceedings before the PTAB. Find out just how broadly examiners and PTAB judges may be construing your claims. 

Mark E. Scott, Conley Rose, PC - Austin, TX

10:00 am
Break

10:15 am

.50 hr

The Evolving Law on Domestic Industry in the ITC

The contours of the domestic industry requirement for Section 337 investigations continues to develop. Explore recent decisions regarding the economic and technical aspects of this requirement in order to understand what is necessary to establish or challenge the existence of a domestic industry before the ITC.

Lynn I. Levine, Morrison & Foerster LLP - Washington, DC

10:45 am

.50 hr

ITC Tactics: Trips and Traps in the Rules and Procedures

A review of recent decisions and insights into how best to approach—and not run afoul of—the Commission Rules and ALJ ground rules.

Benjamin Levi, McKool Smith - Washington, DC

11:15 am

.50 hr

Recent Divided Infringement Developments

The issue of divided infringement continues to arise in many patent infringement cases and recent rulings by the Supreme Court and the Federal Circuit are important both for what issues they resolve and what issues they leave open. 

Ronald J. Pabis, Greenberg Traurig, LLP - Washington, DC

11:45 am
Pick Up Lunch

Included in registration.

Thursday Afternoon, Nov. 6, 2014

Presiding Officer:
David W. O'Brien, Haynes and Boone, LLP - Austin, TX

LUNCHEON PRESENTATION

Austin Only

Thank You to Our Luncheon Sponsor

Greenberg Traurig, LLP

12:05 pm

.75 hr

Perspectives on the Supreme Court

The Supreme Court continues to take interest in patent law. What is this Court, and what are its members up to?

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

 
12:50 pm
Break

1:05 pm

.50 hr

Post-Grant Proceedings: Outcomes and Trends

It has been two years since the first post-grant proceeding was filed. Find out where we are and the likely direction for these proceedings.

Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC

1:35 pm

.50 hr

Litigation Strategies: PTAB vs. District Court

A look at the interface between the USPTO and the courts, including stays, claim construction rules, impact of one proceeding on the other, discovery, and timing and race to finality.

Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Donald R. Banowit, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC

2:05 pm

.75 hr

Post-Grant Patent Trials "Lessons Learned" Part I: Petition & Pre-Trial

Getting your post-grant patent trial instituted, or defending against institution, requires navigating an intricate web of statutory requirements as well as PTAB rules and practices. Review the nut and bolts of drafting a grantable petition, as well as considerations for patent owners in challenging a petition in the pre-trial stage. Redundancy, applicable statutory bars, real party in interest/privity issues, joinder, use of expert declarations and other key factors and strategies relevant to the petition stage for IPR or CBM review are discussed.

Moderator:
Peter J. Ayers, Lee & Hayes PLLC - Austin, TX
Panelists:
David W. O'Brien, Haynes and Boone, LLP - Austin, TX
Michael Rosato, Wilson Sonsini Goodrich & Rosati - Seattle, WA

2:50 pm
Break

3:00 pm

.75 hr

Post-Grant Patent Trials "Lessons Learned" Part II: Post Institution & Hearing

A PTAB trial begins with the institution decision and follows with unique motion practice, discovery, briefing, and oral advocacy. Understand PTAB trial mechanics as seen from the perspectives of judges, petitioners, and patent owners, and explore the institution process, developing the evidentiary record, all phases of the trial briefing, and the oral hearing. Plus, hear experiences from real cases on what works most effectively, mistakes to avoid, and how to best position a case for appeal to the Federal Circuit.

Moderator:
David L. McCombs, Haynes and Boone, LLP - Dallas, TX
Panelists:
Michael L. Kiklis, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
W. Karl Renner, Fish & Richardson P.C. - Washington, DC
Hon. Stacey G. White, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Dallas, TX

3:45 pm

.75 hr

What's New in Damages and Remedies

A discussion of the current landscape, including the impact of recent decisions providing guidance on acceptable patent damages methodology.

Moderator:
Alan D. Albright, Sutherland Asbill & Brennan LLP - Austin, TX
Panelists:
Hon. J. Rodney Gilstrap, U.S. District Court, Eastern District of Texas - Marshall, TX
Shirley Webster, Ocean Tomo, LLC - Houston, TX

4:30 pm

1.00 hr
.50 hr ethics

Judicial Panel

Distinguished judges from the Federal Circuit and District Courts discuss their experiences hearing and trying patent cases.

Moderator:
Hon. David J. Folsom, Jackson Walker L.L.P. - Texarkana, TX
Panelists:
Hon. J. Rodney Gilstrap, U.S. District Court, Eastern District of Texas - Marshall, TX
Hon. Randall R. Rader, Former Chief Judge, U.S. Court of Appeals for the Federal Circuit - Washington, DC
Hon. James L. Robart, U.S. District Court, Western District of Washington - Seattle, WA

5:30 pm
Adjourn

Friday Morning, Nov. 7, 2014

Presiding Officer:
Brent K. Bersin, Grant Thornton LLP - Houston, TX

7:30 am

Austin Only

Conference Room Opens

Includes continental breakfast.

8:30 am

.75 hr

Patentable Subject Matter: Software and Business Methods

The Supreme Court decision in Alice v. CLS Bank has significant implications for both litigators and prosecutors in all areas of technology. Section 101, it seems, is here to stay. Learn more on what that means in practice.

Mark A. Lemley, Stanford Law School and Durie Tangri LLP - Stanford and San Francisco, CA

9:15 am

.75 hr

Patent Drafting in the Era of Nautilus

A discussion of crafting claims and supporting disclosure to meet the more complex standards of definiteness under Nautilus, the “all elements” rule for a single direct infringer under Limelight and the critical post-grant challenges to claiming mistakes under the America Invents Act.

Harold C. Wegner, Foley & Lardner - Washington, DC

10:00 am
Break

10:15 am

.92 hr

Troll Litigation Update

The President, Congress and several industry sectors have demanded reforms against abusive patent litigation. Much of the criticism is focused on so-called trolls or non-practicing entities. Review the status of initiatives taken to remedy perceived abuses in patent litigation, including proposed legislation, USPTO and Federal rule changes, as well as expected and possible changes through court decisions.

Darryl J. Adams, Baker Botts - Austin, TX
William L. LaFuze, Vinson & Elkins LLP - Houston, TX
Byron E. Springer Jr., Intellectual Ventures - Bellevue, WA

11:10 am

.83 hr

Key Issues for In-House Counsel

Inside patent counsel continues to face challenges around portfolio expenses, invention prioritization, outside counsel management, litigation defense, monetization and other issues. Explore these challenges across many industries and discuss best practices and problems that have been faced.

Moderator:
Keith E. Witek, Advanced Micro Devices, Inc. - Austin, TX
Panelists:
James J. MacDonald, Juno Therapeutics, Inc. - Seattle, WA
Eric B. Min, eBay Inc. - Austin, TX
Mark E. Patrick, Texas Instruments Incorporated - Dallas, TX

12:00 pm
Pick Up Lunch

Included in registration.

Friday Afternoon, Nov. 7, 2014

Presiding Officer:
William D. Wiese, DuBois, Bryant & Campbell, L.L.P. - Austin, TX

LUNCHEON PRESENTATION

Austin Only

Thank You to Our Luncheon Sponsor

Kenyon & Kenyon LLP

12:05 pm

.75 hr

Evidence Based Patent Law: Trends and Statistics, and What They Mean for Your Practice and Your Patent Portfolio

Patent law has seen dramatic changes over the past decade, both in terms of the legal doctrines and procedures as well as the market players. The result is that old practitioner rules of thumb either no longer apply or are out-dated. Get the newest data from the USPTO, courts, and other sources to highlight new rules of thumb and pitfalls both in patent practice.

Dennis Crouch, University of Missouri School of Law - Columbia, MO

 
12:50 pm
Break

1:05 pm

.75 hr ethics

Ethics, Money and Fee Agreements

Learn the ethical issues that can arise from alternative fee arrangements, such as flat and capped fees, both in litigation and prosecution. There are thorny issues such as choice of law that come with multi-state federal litigation and divisions of fees among lawyers in different firms. Analyze efforts by lawyers to limit their exposure to risk by providing "outs" in contingent fee cases.

This session has moved to 2:50 PM Friday

David Hricik, Mercer University School of Law and Taylor English Duma LLP - Macon and Atlanta, GA

1:50 pm

.50 hr

Life Sciences Update: One Year After Mayo and Prometheus

A look at the impact of the Myriad and Prometheus decisions, plus an analysis of recent Federal Circuit Court decisions and USPTO practice with regard to life sciences patent eligibility.  

Ana Christina Ward, Asuragen, Inc. - Austin, TX

2:20 pm

.50 hr
.25 hr ethics

Is Your Case Exceptional?

A discussion of fee shifting under Section 285 after Octane Fitness and Highmark and how they revised the analysis for awarding attorneys’ fees.

Adrienne E. Dominguez, Thompson & Knight LLP - Dallas, TX

2:50 pm

.75 hr ethics

Using Social Media Ethically

An exploration of some of the aggressive uses of social media by companies, employees, and attorneys, including the legal and ethical boundaries being recognized by some and ignored by others. Particular attention is given to the Disciplinary Rules of Professional Conduct, the Stored Communications Act, the Computer Fraud and Abuse Act, and the National Labor Relations Act and the limits each impose on the use of social media as a weapon in litigation. The admissibility of social media evidence at trial is also addressed.

This session has moved to 1:05 PM Friday

Jason Boulette, Boulette & Golden L.L.P. - Austin, TX

3:35 pm
Adjourn

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
Peter J. Ayers
Lee & Hayes PLLC
Austin, TX
Donald R. Banowit
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Jason Boulette
Boulette & Golden L.L.P.
Austin, TX
Dennis Crouch
University of Missouri School of Law
Columbia, MO
Adrienne E. Dominguez
Thompson & Knight LLP
Dallas, TX
Hon. David J. Folsom
Jackson Walker L.L.P.
Texarkana, TX
Hon. J. Rodney Gilstrap
U.S. District Court, Eastern District of Texas
Marshall, TX
John M. Golden
The University of Texas School of Law
Austin, TX
David Hricik
Mercer University School of Law and Taylor English Duma LLP
Macon and Atlanta, GA
Michael L. Kiklis
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
William L. LaFuze
Vinson & Elkins LLP
Houston, TX
Mark A. Lemley
Stanford Law School and Durie Tangri LLP
Stanford and San Francisco, CA
Benjamin Levi
McKool Smith
Washington, DC
Lynn I. Levine
Morrison & Foerster LLP
Washington, DC
James J. MacDonald
Juno Therapeutics, Inc.
Seattle, WA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Eric B. Min
eBay Inc.
Austin, TX
David W. O'Brien
Haynes and Boone, LLP
Austin, TX
Ronald J. Pabis
Greenberg Traurig, LLP
Washington, DC
Mark E. Patrick
Texas Instruments Incorporated
Dallas, TX
Hon. Randall R. Rader
Former Chief Judge, U.S. Court of Appeals for the Federal Circuit
Washington, DC
Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
W. Karl Renner
Fish & Richardson P.C.
Washington, DC
Hon. James L. Robart
U.S. District Court, Western District of Washington
Seattle, WA
Michael Rosato
Wilson Sonsini Goodrich & Rosati
Seattle, WA
Mark E. Scott
Conley Rose, PC
Austin, TX
Byron E. Springer Jr.
Intellectual Ventures
Bellevue, WA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Ana Christina Ward
Asuragen, Inc.
Austin, TX
Shirley Webster
Ocean Tomo, LLC
Houston, TX
Harold C. Wegner
Foley & Lardner
Washington, DC
Hon. Stacey G. White
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Dallas, TX
Keith E. Witek
Advanced Micro Devices, Inc.
Austin, TX

Planning Committee

Amber Lee Hagy—Co-Chair
Greenberg Traurig, LLP
Austin, TX
David W. O'Brien—Co-Chair
Haynes and Boone, LLP
Austin, TX
Michael P. Adams
Jackson Walker L.L.P.
Austin, TX
Tom Adolph
Adolph Locklar
Houston, TX
Alan D. Albright
Sutherland Asbill & Brennan LLP
Austin, TX
Michael C. Barrett
Cirrus Logic
Austin, TX
Brent K. Bersin
Grant Thornton LLP
Houston, TX
Jane Politz Brandt
Thompson & Knight LLP
Dallas, TX
Christa Brown-Sanford
Baker Botts
Dallas, TX
Edwin S. Flores
Chalker Flores, LLP
Dallas, TX
Hilda C. Galvan
Jones Day
Dallas, TX
Mark Thomas Garrett
Norton Rose Fulbright
Austin, TX
John Garvish
McKool Smith
Austin, TX
John M. Golden
The University of Texas School of Law
Austin, TX
David J. Healey
Fish & Richardson P.C.
Houston, TX
Joanna Jefferson
The University of Texas School of Law
Austin, TX
Robert L. King
Silicon Laboratories
Austin, TX
William L. LaFuze
Vinson & Elkins LLP
Houston, TX
Mark A. Lemley
Stanford Law School and Durie Tangri LLP
Stanford and San Francisco, CA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Kevin J. Meek
Baker Botts
Austin, TX
Lance Morman
OverMont Consulting, LLC
Houston,
Eric L. Natinsky
Quick Technologies Inc.
Austin, TX
Floyd R. Nation
Winston & Strawn LLP
Houston, TX
James J. Nawrocki
IPFC Corp.
Houston, TX
Steven J. Pollinger
McKool Smith
Austin, TX
Jennie Salazar
The JLSalazar Law Firm, PLLC
Houston, TX
Mark E. Scott
Conley Rose, PC
Austin, TX
José C. Villarreal
Wilson Sonsini Goodrich & Rosati
West Lake Hills, TX
Ana Christina Ward
Asuragen, Inc.
Austin, TX
Shirley Webster
Ocean Tomo, LLC
Houston, TX
William D. Wiese
DuBois, Bryant & Campbell, L.L.P.
Austin, TX
Keith E. Witek
Advanced Micro Devices, Inc.
Austin, TX
Stephanie Wood
Farney Daniels PC
Georgetown, TX
James D. Woods
UHY Advisors, Inc.
Houston, TX
Credit Information

MCLE Credit

Texas
14.50 hrs  |  2.25 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  |  2.25 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.  
Ohio
14.25 hrs  |  2.25 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. You will receive a Certificate of Attendance at the conference to keep for your records.
Oklahoma
17.50 hrs  |  2.50 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference. You will receive a Certificate of Attendance at the conference to keep for your records.
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

MCLE Credit

Texas
14.50 hrs  |  2.25 hrs Ethics
Additional Information
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
14.50 hrs  |  2.25 hrs Ethics
Additional Information
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.
Key Dates

Austin

  • Last day for Individual early registration: Oct 29, 2014
    Add $50 for registrations received after this time
  • Last day for cancellation (full refund): Oct 31, 2014
  • Last day for cancellation (partial refund): Nov 3, 2014
    $50 processing fee applied

Live Webcast

  • Last day for Individual early registration: Nov 7, 2014
    Add $0 for registrations received after this time
  • Last day for cancellation (full refund): Oct 31, 2014
  • Last day for cancellation (partial refund): Nov 3, 2014
    $50 processing fee applied

Hotel / Venue

Austin

Four Seasons Hotel

98 San Jacinto
Austin, TX
512.685.8100 (reservations)
Map

Accommodations

$255.00 room rate good through October 6, 2014 (subject to availability).

Reserving your room online?  Please use the following corporate/promo code: UTPAT1029.

Please note: online reservations can only be accepted for conference-related room nights (November 5-7, 2014). Please contact the Four Seasons Hotel Reservations Department directly at 512.685.8100 if you’d like to extend your stay.

Parking Information

$12 Event Daily; $16 Valet Daily; $32.50 Overnight Self-Parking or Valet.
Sponsors