University of Texas School of Law
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TX Credit Info:
14.75 hrs
2.00 hrs Ethics
More Credit Info

9th Annual

Advanced Patent Law Institute

Alexandria Jan 23-24, 2014 – United States Patent and Trademark Office
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Also available as: Materials, In-House CLE


PRESENTED BY
The University of Texas School of Law
The United States Patent and Trademark Office
George Mason University School of Law

Program Features

The 9th Annual Advanced Patent Law Institute at the U.S. Patent and Trademark Office offers a unique opportunity to join USPTO senior staff, leading practitioners, academics and members of the federal judiciary from a variety of courts and forums area for two days of presentations on the latest developments in patent law, 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 strategies one year after AIA; plus practice tips from the Patent Trial and Appeal Board
  • Developments in claim construction and potential impact of Lighting Ballast
  • The new landscape for U.S. design patent law and the implications of the U.S.’s likely membership in the Hague System
  • “First-to-File” final rules and the USPTO’s interpretation of the new Section 102
  • Strategies and tactics for dealing with the increasing influence of patent NPEs
  • The popular Judicial Panel, moderated this year by Former Chief Judge of the Federal Circuit, Paul R. Michel
  • Earn up to 2.00 hours of ethics including a Keynote Presentation by David Hricik of Mercer University School of Law—Ethics in Doing Deals and Settling IP Suits

The Institute is presented by The University of Texas School of Law, the U.S. Patent and Trademark Office and George Mason University School of Law.

Schedule

Thursday Morning, Jan. 23, 2014

Presiding Officer:
Hon. James D. Smith, Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

7:30 am
Registration Opens

Includes continental breakfast.

8:15 am
Welcoming Remarks

8:30 am

0.50 hr

Patentable Subject Matter: Life Sciences

Review of the Supreme Court decisions, Mayo v. Prometheus and Association for Molecular Pathology v. Myriad Genetics; plus related Federal Circuit Court decisions and USPTO guidance on the patent eligibility of biotech and personalized medicine inventions.

Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC

9:00 am

0.50 hr

Patentable Subject Matter: Software and Business Methods

Discussion of the patent-eligibility of software and business methods, with analysis of CLS Bank v. Alice Corporation and other recent decisions.

Christopher A. Cotropia, Intellectual Property Institute, University of Richmond School of Law - Richmond, VA

9:30 am

0.75 hr

Functional Claiming

Patent attorneys sometimes broadly claim inventions in terms of the functions that they perform, rather than reciting detailed structural features. This can lead to problems during the patent application process or later in litigation. The USPTO has recently provided additional training to patent examiners providing guidance in this area.

Andrew H. Hirshfeld, Deputy Commissioner for Patent Examination Policy, U.S. Patent and Trademark Office - Alexandria, VA
Bradley C. Wright, Banner & Witcoff, Ltd. - Washington, DC

10:15 am
Break

10:30 am

0.50 hr

ITC Developments: Standards-Essential Patents and the Domestic Industry Requirement

The United States Trade Representative’s recommendations concerning the ITC exclusion orders issued against Apple and Samsung, as well as recent developments in the application of the ITC’s domestic industry requirement as it relates to patent assertion and NPEs. 

Lore Unt, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA
T. Cy Walker, Kenyon & Kenyon - Washington, DC

11:00 am

0.50 hr

Antitrust and FRAND Patents: Development and Current Issues

A focus on Judge Robart’s analysis of factors in evaluating rate setting in FRAND cases, the recent GAO report on Standard Setting Organizations and the availability of injunctive relief in cases involving standard essential patents.

Robert L. Stoll, Drinker Biddle & Reath LLP - Washington, DC

11:30 am

0.50 hr

The New Landscape for Design Patents

Examination of the new landscape that is taking shape in the field of U.S. design patent law, including new matter/written description in light of In re Owens, obviousness and functionality in light of High Point Design v. Buyers Direct, and post grant proceedings and claim construction in view of ATAS International v. Centria. Also, a look at recent international developments and the implications of the US moving closer to officially being a member of the Hague system.

Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
William LaMarca, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA
Commentator:
Amy J. Nelson, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA

12:00 pm

0.50 hr

Patent Law Treaty Implementation

In December 2013, the U.S. becomes a party to the Patent Law Treaty (PLT), which harmonizes and streamlines formal procedural requirements pertaining to the filing and processing of patent applications. Review the changes to the patent law and USPTO’s rules of practice that were made in accordance with the U.S. becoming a party to the PLT.

Robert Bahr, U.S. Patent and Trademark Office - Alexandria, VA

12:30 pm
Pick Up Lunch

Included in registration.

Thursday Afternoon, Jan. 23, 2014

Presiding Officer:
Adam Mossoff, George Mason University School of Law - Arlington, VA

Keynote Luncheon Presentation

12:50 pm

0.50 hr

USPTO Update

Peggy Focarino, U.S. Patent and Trademark Office - Alexandria, VA

 
1:20 pm
Break

1:30 pm

1.00 hr

First-Inventor-To-File: Problems, Ambiguities and Practical Solutions

The new Section 102 is shorter if not simpler than the former establishment, though not without subtleties and ambiguities that can be a trap for the unwary. The USPTO’s interpretation of the new Section 102 is presented, along with alternative interpretations and practical solutions for practitioners for addressing the problems and ambiguities.

Moderator:
Dale S. Lazar, DLA Piper LLP US - Reston, VA
Panelists:
Kathleen Fonda, Office of Patent Legal Administration, U.S. Patent and Trademark Office - Alexandria, VA
Brad D. Pedersen, Patterson Thuente Pedersen, P.A. - Minneapolis, MN

2:30 pm

0.50 hr

Obviousness

This presentation aims to reaffirm the importance of evaluating objective evidence in the obviousness analysis. Objective evidence of nonobviousness is too often treated as ‘secondary considerations.'

Michael W. O'Neill, Novak Druce Connolly Bove & Quigg LLP - Washington, DC

3:00 pm
Break

3:15 pm

0.75 hr

Divided Infringement After Akamai

Discussion of the Akamai decision and how it impacts litigation strategy.

Gianni Minutoli, DLA Piper LLP US - Washington, DC
Phillip B. Philbin, Haynes and Boone, LLP - Dallas, TX

4:00 pm

0.75 hr

Patent Damages Today - but What about Tomorrow?

Review of recent Federal Circuit Court decisions providing guidance on acceptable patent damages methodology, with highlights of District Court orders giving insight into the continuing evolution of patent damages.

Shirley Webster, Ocean Tomo, LLC - Houston, TX
Gregory L. Hillyer, Feldman Gale, P.A. - Philadelphia, PA

4:45 pm

0.75 hr

Issues with Patent NPEs

Is there a problem with NPEs in patent litigation? And if so, what are alternative possible solutions? This panel discusses the economic consequences of the proliferation of NPE litigation in recent years, the pros and cons of proposed patent legislation, rule and case management changes involving fee-shifting, pleading requirements, disclosure of real parties in interest and other issues.

Moderator:
William L. LaFuze, Vinson & Elkins LLP - Houston, TX
Panelists:
Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC
Philip S. Johnson, Johnson & Johnson - New Brunswick, NJ
Phyllis Turner-Brim, Intellectual Ventures - Bellevue, WA

5:30 pm
Adjourn

Friday Morning, Jan. 24, 2014

Presiding Officer:
Jeffrey A. Wolfson, Haynes and Boone, LLP - Washington, DC

7:30 am
Conference Room Opens

Includes continental breakfast.

8:30 am

0.75 hr

AIA Practice Tips Before the Patent Trial and Appeal Board

Tips for improving practice in AIA cases before the Patent Trial and Appeal Board are presented and explored. Tips address both written and oral advocacy, from both the Board and the practitioner perspectives.

Moderator:
Hon. Scott Boalick, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA
Panelists:
Hon. Justin Arbes, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
Hon. Jennifer Bisk, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA
Hon. Thomas L. Giannetti, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

9:15 am

1.00 hr

Post-Grant Proceedings, Strategies and Practice

Post-grant patent proceedings were pursued in record number at the USPTO in 2013 and the rate of new petition filings continues to accelerate beyond initial expectations Emerging trends, notable outcomes, and best practices are identified relative to the 700+ proceedings filed with the PTAB. Both petitioner and patentee perspectives are analyzed relative to current, and future USPTO practices, including contemplated legislative and/or rule based developments.

Scott A. McKeown, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC

10:15 am
Break

10:30 am

1.00 hr ethics

Harmonization and Enforcement of USPTO Ethical Standards in the AIA Era

Present day ethical issues affecting attorneys and agents who practice before the USPTO, including ethical standards under the Proposed New USPTO Rules of Professional Conduct, modeled on the ABA’s Model; the mechanics of OED’s complaint and investigative process; the ethical impact of the AIA on practitioners and OED; and the practical examples and statistics relating to OED enforcement.

William R. Covey, Deputy General Counsel and Director, Office of Enrollment and Discipline, U.S. Patent and Trademark Office - Alexandria, VA

11:30 am

0.75 hr

Claims Construction

Lighting Ballast and de novo review (and how it changes strategies) and broadest reasonable construction standard.

Edward R. Reines, Weil, Gotshal & Manges LLP - Redwood City, CA
Nathan Kelley, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA

12:15 pm

0.50 hr

Ex Parte Reexam in View of Fresenius – A Hail Mary Pass Which Should Be in Every Playbook

Due to typically lengthy District Court litigation, accused patent infringers may file an ex parte reexamination request as a final opportunity to cancel the claims of an asserted patent. The AlA replaced the much maligned inter partes reexamination with a more streamlined inter partes review having a quick trigger estoppel provision. However, the AlA left ex parte reexamination intact, which means that parties such as Fresenius still have the ability to take advantage of the difference between the evidentiary standards applied in district court and at the USPTO.

W. Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

12:45 pm
Pick Up Lunch

Included in registration.

Friday Afternoon, Jan. 24, 2014

Presiding Officer:
John W. Ryan, Thompson Hine LLP - Washington, DC

Keynote Luncheon Presentation

1:15 pm

0.75 hr

View from Federal Circuit

Hon. Pauline Newman, U.S. Court of Appeals for the Federal Circuit - Washington, DC

 
2:00 pm
Break

2:15 pm

1.00 hr

Judicial Panel

Distinguished judges discuss their experiences hearing and trying patent cases.

Moderator:
Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Washington, DC
Panelists:
Hon. Charles E. Bullock, U.S. International Trade Commission - Washington, DC
Hon. T. S. Ellis III, U.S. District Court, Eastern District of Virginia - Alexandria, VA
Hon. Joseph J. Farnan Jr., Former U.S. District Court Judge, Farnan LLP - Wilmington, DE

3:15 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

4:15 pm
Adjourn

Faculty

Conference Faculty

Hon. Justin Arbes
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Robert Bahr
U.S. Patent and Trademark Office
Alexandria, VA
W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Hon. Jennifer Bisk
Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA
Hon. Scott Boalick
Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
Hon. Charles E. Bullock
U.S. International Trade Commission
Washington, DC
Christopher A. Cotropia
Intellectual Property Institute, University of Richmond School of Law
Richmond, VA
William R. Covey
Deputy General Counsel and Director, Office of Enrollment and Discipline, U.S. Patent and Trademark Office
Alexandria, VA
Donald R. Dunner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Washington, DC
Tracy-Gene G. Durkin
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Hon. T. S. Ellis III
U.S. District Court, Eastern District of Virginia
Alexandria, VA
Hon. Joseph J. Farnan Jr.
Former U.S. District Court Judge, Farnan LLP
Wilmington, DE
Peggy Focarino
U.S. Patent and Trademark Office
Alexandria, VA
Kathleen Fonda
Office of Patent Legal Administration, U.S. Patent and Trademark Office
Alexandria, VA
Hon. Thomas L. Giannetti
Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA
Gregory L. Hillyer
Feldman Gale, P.A.
Philadelphia, PA
Andrew H. Hirshfeld
Deputy Commissioner for Patent Examination Policy, U.S. Patent and Trademark Office
Alexandria, VA
David Hricik
Mercer University School of Law
Macon, GA
Philip S. Johnson
Johnson & Johnson
New Brunswick, NJ
Nathan Kelley
Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA
William L. LaFuze
Vinson & Elkins LLP
Houston, TX
William LaMarca
Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA
Dale S. Lazar
DLA Piper LLP US
Reston, VA
Scott A. McKeown
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Hon. Paul R. Michel
Chief Judge, Retired, United States Court of Appeals for the Federal Circuit
Washington, DC
Gianni Minutoli
DLA Piper LLP US
Washington, DC
Amy J. Nelson
Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA
Hon. Pauline Newman
U.S. Court of Appeals for the Federal Circuit
Washington, DC
Michael W. O'Neill
Novak Druce Connolly Bove & Quigg LLP
Washington, DC
Brad D. Pedersen
Patterson Thuente Pedersen, P.A.
Minneapolis, MN
Phillip B. Philbin
Haynes and Boone, LLP
Dallas, TX
Edward R. Reines
Weil, Gotshal & Manges LLP
Redwood City, CA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Robert L. Stoll
Drinker Biddle & Reath LLP
Washington, DC
Phyllis Turner-Brim
Intellectual Ventures
Bellevue, WA
Lore Unt
Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA
T. Cy Walker
Kenyon & Kenyon
Washington, DC
Shirley Webster
Ocean Tomo, LLC
Houston, TX
Bradley C. Wright
Banner & Witcoff, Ltd.
Washington, DC

Planning Committee

Hon. James D. Smith—Chair
Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA
W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
James E. Beyer
Dinsmore & Shohl LLP
Dayton, OH
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
Christopher A. Cotropia
Intellectual Property Institute, University of Richmond School of Law
Richmond, VA
Jeffrey D. Feldman
Feldman Gale, P.A.
Miami, FL
Edward J. Kessler
Sterne, Kessler, Goldstein & Fox
Washington, DC
Stephen G. Kunin
Oblon, Spivak, McClelland, Maier & Neustadt, LLP
Alexandria, VA
William L. LaFuze
Vinson & Elkins LLP
Houston, TX
William LaMarca
Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA
Dale S. Lazar
DLA Piper LLP US
Reston, VA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Hon. James T. Moore
U.S. Patent and Trademark Office
Alexandria, VA
Adam Mossoff
George Mason University School of Law
Arlington, VA
Michael W. O'Neill
Novak Druce Connolly Bove & Quigg LLP
Washington, DC
Christopher J. Renk
Banner & Witcoff, Ltd.
Chicago, IL
John W. Ryan
Thompson Hine LLP
Washington, DC
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
T. Cy Walker
Kenyon & Kenyon
Washington, DC
Shirley Webster
Ocean Tomo, LLC
Houston, TX
Jeffrey A. Wolfson
Haynes and Boone, LLP
Washington, DC
Bradley C. Wright
Banner & Witcoff, Ltd.
Washington, DC
Credit Information

MCLE Credit

Texas
14.75 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
14.75 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.
Delaware
14.80 hrs  |  2.00 hrs Ethics
Illinois
14.75 hrs  |  2.00 hrs Ethics
New Jersey
Additional Information
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 at Regulation 2.01:4.
New York
17.50 hrs  |  2.00 hrs Ethics
Additional Information

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 Bar Association. More information and details can be found at Section 6 of the Regulations and Guidelines.

Ohio
14.75 hrs  |  2.00 hrs Ethics
Oklahoma
17.00 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.
Pennsylvania
12.50 hrs  |  2.00 hrs Ethics
Virginia
12.00 hrs  |  2.00 hrs Ethics
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
14.75 hrs
Key Dates

Alexandria

  • Last day for Individual early registration: Jan 15, 2014
    Add $50 for registrations received after this time
  • Last day for USPTO Employee early registration: Jan 15, 2015
    Add $0 for registrations received after this time
  • Last day for cancellation (full refund): Jan 17, 2014
  • Last day for cancellation (partial refund): Jan 20, 2014
    $50 processing fee applied

Hotel / Venue

Alexandria

United States Patent and Trademark Office
United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA


Parking Information

Please click here for directions and parking information. 

Nearby Hotel Accommodations