Overview

UT Law's 25th Annual Advanced Patent Law Institute, now a Live Webcast, covers the latest developments in patent law and features a sophisticated array of prosecution and litigation topics. Hear from 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. This year’s program features:
  • A look at how COVID-19 is impacting patent practice, including nuts and bolts for remote litigation.
  • A review of the year’s key Federal Circuit and Supreme Court cases by Mark A. Lemley.
  • The latest in Section 101 as well as practical prosecution strategies for software and life sciences.
  • An examination of global trends and enforcement, plus considerations for international patent prosecution.
  • Recent Developments in Claims Construction with Kenneth R. Adamo.
  • An overview of PTAB policy shifts in the last year, plus a discussion on PTAB practice strategies.
  • An exploration of the evolving guidance on AI claims and how they are being applied.
  • The popular U.S. District Court Judicial Panel.
  • An In-House Counsel panel and virtual “breakfast” presentation, hosted by Women in IP.
  • A full 15.00 hours, including 2.50 hours Ethics credit
Following the conference, attendees will receive a bonus eSupplement containing an additional 0.50 hour of Ethics credit to ensure practitioners can earn their required 15.00/3.00 Texas MCLE hours for the year.

If you cannot watch the entire 2-day webcast at its scheduled time, don’t worry!
Register now and view as much of the live webcast as your schedule allows. In addition, you will receive the recorded eConference in “Your Briefcase”, available 4-6 weeks after the live webcast, and can watch and claim credit (pre-approved in TX and CA) for any presentations you missed.

Event Schedule

Program is subject to change.

  • Time
    Credit
    Subject
    Speaker
  • Thursday Morning, Nov. 5, 2020
    Presiding Officer:
    Hilda C. Galvan, Jones Day - Dallas, TX
  • 8:20 am
    Welcoming Remarks

  • 8:30 am
    0.75 hr
    Recent Developments in Claim Construction
    The baseline of patent application preparation/prosecution, district court trials, Federal Circuit appeals, and AIA post-grant review proceedings, is claim construction. Review the important 2019-2020 claim construction cases and issues at the Federal Circuit and trial court levels, as well as at the PTAB. Examine the PTAB’s procedural and substantive claim construction “rules, practices, and etc." And discuss adherence to the APA by the PTAB under various circumstances, plus rule and practice changes to mandate PTAB consideration of claim constructions from other proceedings.

    Kenneth R. Adamo, Law Office of KRAdamo - Chicago, IL

  • 9:15 am
    5-Minute Break

  • 9:20 am
    0.75 hr
    Antitrust 2020: Changing Politics, Technology and Problems Have Caused Upheaval! A Real-Time Presentation of Disruption in Antitrust and Competition Law
    Since the beginning of this year, there have been profound changes in the antitrust and competition landscape. New lawsuits are being filed and existing cases pressed hard despite the COVID-19 pandemic. Technology companies need to be aware of the storm now breaking over licensing for 5G in lawsuits pending in federal courts in Texas and Delaware. The 180 degree change at the Department of Justice that has the Antitrust Division actively litigating with non-practicing patent entities against companies that produce technology, software, semiconductors and telecom products. COVID-19 drove a dramatic to the ground rules and procedures for collaboration for companies that can provide essential technology, products and services. This real-time presentation illustrates what is happening right now and how it could impact you.

    Danielle Joy "DJ" Healey, Fish & Richardson P.C. - Houston, TX

  • 10:05 am
    5-Minute Break

  • 10:10 am
    0.75 hr
    Section 101 Update: Alice at Six
    Hear an update on this year’s patentable subject matter cases and other developments. What have we learned over the last six years and what can we expect moving forward? Plus, hear some suggested do’s and don’ts for prosecution and litigation.

    Steve Borgman, Kilpatrick Townsend & Stockton LLP - Houston, TX
    Janice Le Ta, Perkins Coie LLP - Austin, TX
    Michael W. Piper, Conley Rose, PC - Plano, TX
    Gina N. Shishima, Norton Rose Fulbright - Austin, TX

  • 10:55 am
    5-Minute Break

  • 11:00 am
    0.75 hr
    Section 101 in Two Realms: Practical Tips for Addressing Ongoing Challenges in Getting Patents in the Life Sciences and in Software
    A year after the newest USPTO guidelines on patent eligibility, our panelists discuss prosecution suggestions in the software/business and the bio/pharma technical areas, in particular, our best pragmatic advice on managing your 101 challenges at USPTO and including a focus on patent applications concerning COVID-19 diagnostic tests, serology tests, vaccines, and therapeutics as examples for the pharma challenges and opportunities we are facing.

    Steve Borgman, Kilpatrick Townsend & Stockton LLP - Houston, TX
    Janice Le Ta, Perkins Coie LLP - Austin, TX
    Michael W. Piper, Conley Rose, PC - Plano, TX
    Gina N. Shishima, Norton Rose Fulbright - Austin, TX

  • 11:45 am
    5-Minute Break

  • 11:50 am
    0.75 hr
    Increasing Innovation and Transforming Industries through Open Source
    Innovation is being democratized where users of products and services—both firms and individual consumers—are increasingly able to innovate for themselves. They’re building open source into the fabric of their R&D and development models, bringing speed to innovation that collaborating in open source enables. Users that innovate can develop exactly what they want, rather than relying on manufacturers to act as their agents. What is the place of patents and how are they affected by such innovation?

    Karen F. Copenhaver, The Linux Foundation - Boston, MA
    Umesh M. Desai, AT&T Labs - Austin, TX

  • 12:35 pm
    Break for Lunch—Presentation Resumes at 1:00 p.m.

  • Thursday Afternoon, Nov. 5, 2020
    Presiding Officer:
    Richard L. Wynne Jr., Thompson & Knight LLP - Dallas, TX
  • LUNCHEON PRESENTATION
  • 1:00 pm
    1.00 hr
    0.25 hr ethics
    The COVID-19 Effect on the Practice of Patent Law
    Explore the practical and procedural effects of the COVID-19 pandemic on the practice of patent law from the perspective of litigation, patent prosecution, working from home, and in-house management.

    Moderator:
    Ozz Siddiq, Lennox International - Richardson, TX
    Panelists:
    Shannon W. Bates, Harper Bates & Champion LLP - Dallas, TX
    Tara L. Clothier, Essilor of America, Inc. - Dallas, TX
    José C. Villarreal, Perkins Coie LLP - Austin, TX

  • 2:00 pm
    5-Minute Break

  • 2:05 pm
    0.50 hr
    PTAB Policy Shifts
    The Federal Circuit, the U.S. Supreme Court, and the Iancu administration continue to push the evolution of the PTAB. This presentation covers fast-moving highlights of where we are and where we may be going. Change is certain.

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

  • 2:35 pm
    5-Minute Break

  • 2:40 pm
    1.00 hr
    PTAB Practice Strategies
    Discuss new developments impacting practice before the Board, including evolving standards on the PTAB's exercise of discretion, timing of parallel litigation, pressure on litigants, and more.

    Moderator:
    David W. O'Brien, Haynes and Boone, LLP - Austin, TX
    Panelists:
    Scott A. McKeown, Ropes & Gray LLP - Washington, DC
    Emily R. Whelan, Wilmer Hale - Boston, MA

  • 3:40 pm
    5-Minute Break

  • 3:45 pm
    0.75 hr
    0.50 hr ethics
    Privilege Issues and Discoverability of Agreements
    With the explosive growth of litigation funding, parties (and funders) face challenging issues related to the discoverability of funding agreements and engagement agreements. This presentation explores the relevance of such agreements and whether they are protected by attorney-client privilege, work product, common interest, or otherwise.

    Kevin Kudlac, Connor Kudlac Lee, PLLC - Austin, TX

  • 4:30 pm
    5-Minute Break

  • 4:35 pm
    1.00 hr
    0.50 hr ethics
    Judicial Panel
    Hear distinguished judges from the District Courts discuss their experiences hearing and trying patent cases.

    Moderator:
    Hilda C. Galvan, Jones Day - Dallas, TX
    Panelists:
    Hon. Alan D Albright, U.S. District Court, Western District of Texas - Waco, TX
    Hon. Sean D. Jordan, U.S. District Court, Eastern District of Texas - Plano, TX
    Hon. Maryellen Noreika, U.S. District Court, District of Delaware - Wilmington, DE

  • 5:35 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Friday Morning, Nov. 6, 2020
    Presiding Officer:
    Betty Ellsworth Ungerman, Lennox International Inc. - Richardson, TX
  • 8:00 am
    1.00 hr
    0.50 hr ethics
    Women in IP Breakfast Panel: Challenges and Current Issues Facing In-House Counsel

    Moderator:
    Ann LaFeir, USAA - San Antonio, TX
    Panelists:
    Brianna Hinojosa-Smith, Yum! Brands, Inc. - Plano, TX
    Irene Kosturakis, BMC Software, Inc. - Houston, TX
    Keith E. Witek, Google, Inc. - Mountain View, CA

  • 9:00 am
    5-Minute Break

  • 9:05 am
    1.00 hr
    Year in Review: Federal Circuit and SCOTUS Update
    A whirlwind summary of the most important developments in Supreme Court and Federal Circuit case law over the last year.

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

  • 10:05 am
    5-Minute Break

  • 10:10 am
    0.50 hr
    The Appointments Clause, Severability, and Forfeiture in Arthrex
    The Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (2019), purported to save the power of the USPTO’s administrative patent judges to conduct inter partes review by abrogating for-cause removal protection for those judges. This presentation examines the Appointments Clause concerns that motivated that abrogation, whether severing the for-cause removal protection was a proper response, and whether the Appointments Clause challenge should have been considered forfeit as not raised before the USPTO.

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

  • 10:40 am
    5-Minute Break

  • 10:45 am
    0.75 hr
    Worldwide Patent Litigation Trends
    A look at litigation trends and practices in multiple international jurisdictions.

    Moderator:
    Kat Li, McKool Smith - Austin, TX
    Panelists:
    Klaus Haft, HOYNG ROKH MONEGIER Europe LLP - Düsseldorf, Germany
    He Jing, GEN Law - Beijing, China

  • 11:30 am
    5-Minute Break

  • 11:35 am
    0.75 hr
    International Prosecution
    Hear tips on how to prepare for a global filing and examine issues and considerations in different jurisdictions, with a special emphasis on European patents and China.

    Jimmy Chen, IBM China Co. Ltd - Beijing, China
    Tim Graham, IBM UK Ltd - Winchester, United Kingdom

  • 12:20 pm
    Break for Lunch—Presentation Resumes at 12:45 p.m.

  • Friday Afternoon, Nov. 6, 2020
    Presiding Officer:
    William D. Wiese, DuBois, Bryant & Campbell, L.L.P. - Austin, TX
  • LUNCHEON PRESENTATION
  • 12:45 pm
    0.75 hr
    Nuts and Bolts of Remote Litigation
    A discussion of various aspects of litigating patent disputes remotely, including best practices for handling remote hearings, depositions, and even trials.

    Bert A. Greene, Duane Morris LLP - Austin, TX
    Matthew S. Yungwirth, Duane Morris LLP - Atlanta, GA

  • 1:30 pm
    5-Minute Break

  • 1:35 pm
    0.75 hr
    ​Damages: FRAND, Foreign Activity, and Other Recent Developments
    A discussion of recent developments in patent damages, including recent decisions affecting FRAND licensing and damages, pursuing damages for foreign activity in U.S. courts, and the impact of COVID-19 on the calculation and presentation of damages claims.

    Moderator:
    Shirley Webster, Ocean Tomo, LLC - Houston, TX
    Panelists:
    Anne M. Cappella, Weil, Gotshal & Manges LLP - Silicon Valley, CA
    Garland T. Stephens, Weil, Gotshal & Manges LLP - Houston, TX

  • 2:20 pm
    5-Minute Break

  • 2:25 pm
    0.75 hr
    AI Claims
    Examine new rules on AI claims, including evolving guidance from the USPTO, and how those rules will be applied.

    Robert Bahr, U.S. Patent and Trademark Office - Alexandria, VA
    Matt Osterhaus, Fletcher Yoder, P.C. - Houston, TX

  • 3:10 pm
    5-Minute Break

  • 3:15 pm
    0.75 hr ethics
    The Ins and Outs of Conflicts of Interest
    This session covers conflicts of interest when lawyers migrate from one law firm, or legal department, to another and recent cases addressing disqualification motions.

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

  • 4:00 pm
    Adjourn

Conference Faculty

Kenneth R. Adamo

Law Office of KRAdamo
Chicago, IL

Hon. Alan D Albright

U.S. District Court, Western District of Texas
Waco, TX

Robert Bahr

U.S. Patent and Trademark Office
Alexandria, VA

Shannon W. Bates

Harper Bates & Champion LLP
Dallas, TX

Steve Borgman

Kilpatrick Townsend & Stockton LLP
Houston, TX

Anne M. Cappella

Weil, Gotshal & Manges LLP
Silicon Valley, CA

Jimmy Chen

IBM China Co. Ltd
Beijing, China

Tara L. Clothier

Essilor of America, Inc.
Dallas, TX

Karen F. Copenhaver

The Linux Foundation
Boston, MA

Umesh M. Desai

AT&T Labs
Austin, TX

Hilda C. Galvan

Jones Day
Dallas, TX

John M. Golden

The University of Texas School of Law
Austin, TX

Tim Graham

IBM UK Ltd
Winchester, United Kingdom

Bert A. Greene

Duane Morris LLP
Austin, TX

Klaus Haft

HOYNG ROKH MONEGIER Europe LLP
Düsseldorf, Germany

Danielle Joy "DJ" Healey

Fish & Richardson P.C.
Houston, TX

Brianna Hinojosa-Smith

Yum! Brands, Inc.
Plano, TX

David Hricik

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

He Jing

GEN Law
Beijing, China

Hon. Sean D. Jordan

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

Irene Kosturakis

BMC Software, Inc.
Houston, TX

Kevin Kudlac

Connor Kudlac Lee, PLLC
Austin, TX

Ann LaFeir

USAA
San Antonio, TX

Mark A. Lemley

Stanford Law School and Durie Tangri LLP
Stanford and San Francisco, CA

Kat Li

McKool Smith
Austin, TX

Scott A. McKeown

Ropes & Gray LLP
Washington, DC

Hon. Maryellen Noreika

U.S. District Court, District of Delaware
Wilmington, DE

David W. O'Brien

Haynes and Boone, LLP
Austin, TX

Matt Osterhaus

Fletcher Yoder, P.C.
Houston, TX

Michael W. Piper

Conley Rose, PC
Plano, TX

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Gina N. Shishima

Norton Rose Fulbright
Austin, TX

Ozz Siddiq

Lennox International
Richardson, TX

Garland T. Stephens

Weil, Gotshal & Manges LLP
Houston, TX

Janice Le Ta

Perkins Coie LLP
Austin, TX

José C. Villarreal

Perkins Coie LLP
Austin, TX

Shirley Webster

Ocean Tomo, LLC
Houston, TX

Emily R. Whelan

Wilmer Hale
Boston, MA

Keith E. Witek

Google, Inc.
Mountain View, CA

Matthew S. Yungwirth

Duane Morris LLP
Atlanta, GA

Planning Committee

Hilda C. Galvan—Co-Chair

Jones Day
Dallas, TX

Betty Ellsworth Ungerman—Co-Chair

Lennox International Inc.
Richardson, TX

Joanna Jefferson—Director

The University of Texas School of Law
Austin, TX

Michael P. Adams

Dykema
Austin, TX

Tom Adolph

Adolph Locklar
Houston, TX

Hon. Alan D Albright

U.S. District Court, Western District of Texas
Waco, TX

Michael C. Barrett

Cirrus Logic, Inc.
Austin, TX

Steve Borgman

Kilpatrick Townsend & Stockton LLP
Houston, TX

Christa Brown-Sanford

Baker Botts
Dallas, TX

Tamara Copeland

Duff and Phelps, LLC
Houston, TX

Umesh M. Desai

AT&T Labs
Austin, TX

David George Dolezal

NXP Semiconductors
Austin, TX

Elisabeth Evert

Hitchcock Evert LLP
Dallas, TX

Heather L. Flanagan PhD

Fish & Richardson P.C.
Austin, TX

John D. Flynn

IBM Corporation
Austin, TX

Mark Thomas Garrett

Norton Rose Fulbright
Austin, TX

Ross Spencer Garsson

Dickinson Wright PLLC
Austin, TX

John M. Golden

The University of Texas School of Law
Austin, TX

Bert A. Greene

Duane Morris LLP
Austin, TX

John M. Guaragna

DLA Piper LLP US
Austin, TX

Danielle Joy "DJ" Healey

Fish & Richardson P.C.
Houston, TX

David G. Henry

Gray Reed & McGraw, P.C.
Houston, TX

Brianna Hinojosa-Smith

Yum! Brands, Inc.
Plano, TX

Kevin Kudlac

Connor Kudlac Lee, PLLC
Austin, TX

Ann LaFeir

USAA
San Antonio, TX

William L. LaFuze

McKool Smith
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

Dean M. Munyon

Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C.
West Lake Hills, TX

Eric L. Natinsky

Quick Technologies Inc.
Austin, TX

David W. O'Brien

Haynes and Boone, LLP
Austin, TX

Mark E. Patrick

Texas Instruments Incorporated
Dallas, TX

Anthony E. Peterman

Dell
Round Rock, TX

Brian Peterman

Silicon Labs
Austin, TX

Garland T. Stephens

Weil, Gotshal & Manges LLP
Houston, TX

José C. Villarreal

Perkins Coie LLP
Austin, TX

Kim M. Vo

Advanced Micro Devices, Inc.
Austin, TX

Shirley Webster

Ocean Tomo, LLC
Houston, TX

William D. Wiese

DuBois, Bryant & Campbell, L.L.P.
Austin, TX

Douglas Wilson

Heim, Payne & Chorush, LLP
Austin, TX

Keith E. Witek

Google, Inc.
Mountain View, CA

James D. Woods

Economic Analytics Consulting, LLC
Houston, TX

Richard L. Wynne Jr.

Thompson & Knight LLP
Dallas, TX

Credit Info

MCLE Credit
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.
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.
UT Law CLE will verify the number of Illinois attorneys in attendance within 10 days after the conference and will report your credit to the MCLE Board of the Supreme Court of Illinois. UT Law CLE will maintain Attendance Records for four years.
As The University of Texas School of Law is a State Bar of Texas approved MCLE provider (Sponsor #13), our courses are presumptively approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Regulations of the Supreme Court of New Jersey Board on Continuing Legal Education. More information and details can be found in the Board of Continuing Legal Education Regulations.

New Jersey MCLE credit is based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim New York MCLE credit, New Jersey credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your credit directly to the Supreme Court of New Jersey Board on CLE.
As The University of Texas School of Law is a State Bar of California approved MCLE provider (#1944), and the State Bar of California is a New York Approved Jurisdiction, our courses are approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Program Rules and the Regulations and Guidelines of the New York State Continuing Legal Education Board. More information and details can be found at Section 6 of the Regulations and Guidelines.

New York MCLE credit is based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim New York MCLE credit, New York credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your credit directly to the New York State CLE Board.
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.
The University of Texas School of Law (Provider #169) live webcast presentations meet the requirements and are presumptively approved by the Oklahoma Bar Association for MCLE credit based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim Oklahoma MCLE credit, Oklahoma credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the webcast.
UT Law CLE is an approved provider of Pennsylvania credit, sponsor #236. Attorney attendance will be reported to Pennsylvania within 2 weeks of the webcast conclusion. Attorneys are not able to report this credit on their own, and UT Law CLE pays all associated fees for the credit hours. Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.
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 to ensure it will qualify for self-reporting your credits.

To claim Other States MCLE credit, Other States credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you.

This accreditation requires attendance verification. UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion .

MCLE credit is presented based on a 60-minute credit hour.
Other Credit
The University of Texas School of Law (Provider #250) live webcast presentations meet the requirements and 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.

This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim Texas Accounting CPE credit, the Texas Accounting CPE credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your CPE credit directly to the Texas State Board of Public Accountancy.

Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.

Key Dates

Live Webcast – Nov 5-6, 2020
Conference Concluded
Austin - CANCELED – Nov 5-6, 2020 – Hotel ZaZa Austin Downtown
Conference Concluded
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Live Webcast
Last day for Individual early registration: Nov 5, 2020

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Last day for In-House Counsel early registration: Nov 5, 2020

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Last day for Group (5 registrants minimum) early registration: Nov 5, 2020

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Last day for Group (10 registrants minimum) early registration: Nov 5, 2020

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Last day for cancellation (full refund): Oct 30, 2020

$50 processing fee applied after this date

Last day for cancellation: Nov 2, 2020

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