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10th Annual

Advanced Patent Law Institute

Alexandria Mar 12-13, 2015 United States Patent and Trademark Office
Conference Concluded
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Related products: Materials

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

The 10th 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:  

  • An in depth look at patentable subject matter: current requirements, interpretations and guidelines from the USPTO and practical guidance for patent practitioners
  • Hot topics in design patent law 
  • Developments in claim construction and the potential impact of Teva Pharmaceuticals
  • PTAB proceedings: Practice tips and strategies and the impact on patent practice and patent owners
  • Key Issues for In-House Counsel
  • Special presentation by the USPTO General Counsel
  • Presentations from members of the judiciary including a Federal Circuit Keynote Presentation and the popular Judicial Panel, moderated by former Chief Judge of the Federal Circuit, Hon. Paul R. Michel, with Hon. Leonard Davis (EDTX), Hon. James F. Holderman (NDIL) and Hon. Liam O’Grady (EDVA)
  • Earn up to 14.75 hours of credit including 2.00 hours of ethics with presentations by David Hricik, Mercer University School of Law and Lisa A. Dolak, Syracuse University College of Law
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.

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Event Schedule

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

  • Day 1 March 12, 2015
  • Day 2 March 13, 2015
  • Time
    Credit
    Subject
    Speaker
  • Thursday Morning, Mar. 12, 2015
    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
    Patent Eligible Subject Matter: Key Cases and Current Requirements
    Details from recent Federal Circuit, District Court, and PTAB decisions applying the Supreme Court's decisions in Alice, Myriad, and Prometheus and how they might determine the current contours of Section 101.

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

  • 9:00 am
    0.50 hr
    Patent Eligible Subject Matter: Interpretations and Guidelines from the USPTO
    A discussion of the Office's efforts to implement recent court decisions that impact standards for patent eligibility under Section 101.

    Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, U.S. Patent and Trademark Office - Alexandria, VA

  • 9:30 am
    0.50 hr
    Patent Eligible Subject Matter: Practical Guidance for Patent Practitioners in a Post-Alice, Prometheus and Myriad World
    How to successfully navigate patent subject matter eligibility in a post-Alice, Prometheus and Myriad world, including guidance on how to draft robust patent specifications and claims, and prosecution tips for addressing Section 101 claim rejections.

    Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
    Stephen G. Kunin, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

  • 10:00 am
    Break

  • 10:15 am
    0.75 hr
    Patent Drafting and Claim Definiteness
    A look at both substantive and procedural issues relating to the recent cases on indefiniteness, Nautilus v. Biosig and In re Packard, plus tips to applicants on how to draft claims that meet 35 U.S.C. § 112(b)’s requirement to “particularly point out” and “distinctly claim” the subject matter of the invention. 

    Kristi L. R. Sawert, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA
    Harold C. Wegner, Wegner IP Consulting - Naples, FL

  • 11:00 am
    0.75 hr
    First Inventor to File: Navigating the Complexities and Ambiguities
    For the past two years we have been filing patent applications where what is or is not prior art is based on post-AIA Section 102. Now we are starting to receive Office Actions in these post-AIA applications. We will discuss changes to our practice as we transition from Pre-AIA to Post-AIA Section 102. We will also discuss aspects of Post-AIA Section 102 that are clear and aspects that remain open for debate and judicial resolution.

    Dale S. Lazar, DLA Piper LLP US - Reston, VA

  • 11:45 am
    0.50 hr
    Current Quality Initiatives at the USPTO
    A discussion of how the Office is taking advantage of a sustainable funding model to provide the best quality products and services at every stage of the patent process, improve the customer experience through an emphasis on excellent customer service, and engage the public in partnership to educate and seek input.

    Valencia Martin-Wallace, Deputy Commissioner for Patent Quality, U.S. Patent and Trademark Office - Alexandria, VA

  • 12:15 pm
    Pick Up Lunch
    Included in registration.

  • Thursday Afternoon, Mar. 12, 2015
    Presiding Officer:
    William L. LaFuze, Vinson & Elkins LLP - Houston, TX
  • LUNCHEON PRESENTATION
  • 12:35 pm
    0.50 hr
    Update from the USPTO

    Russell Slifer, Director, Rocky Mountain Region, U.S. Patent and Trademark Office - Denver, CO

  • 1:05 pm
    Break

  • 1:20 pm
    0.75 hr
    Update on Patent Litigation before the ITC
    A review of the major legal developments affecting patent cases before the ITC, including the Federal Circuit’s upcoming en banc rehearing in Suprema and its potential impact on future investigations involving method claims, changes and clarifications to the domestic industry requirement, and recent decisions relating to the enforcement of consent orders.

    Lynn I. Levine, Morrison & Foerster LLP - Washington, DC
    T. Cy Walker, Kenyon & Kenyon - Washington, DC

  • 2:05 pm
    0.75 hr
    Design Patents: The Good, The Bad, and The Ugly
    To cover the landscape of hot design patent topics, including recent Federal Circuit decisions clarifying  functionality and obviousness, the USPTO’s proposed written description requirement for designs, and design patent damages, i.e., the entire profits rule as framed in Apple v. Samsung.

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

  • 2:50 pm
    0.50 hr
    Claims Construction
    What is the standard of review for patent claim constructions in light of recent cases, including the impact of the Supreme Court’s Teva Pharmaceuticals case?

    Edward D. Manzo, Husch Blackwell LLP - Chicago, IL

  • 3:20 pm
    Break

  • 3:30 pm
    0.50 hr
    Update from the PTAB: Report on Public Comments and Proposed Rules

    Hon. Scott Boalick, Deputy Chief Judge (Acting), Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

  • 4:00 pm
    0.75 hr
    Lessons Learned: Tips and Strategies for Practicing Before the PTAB
    A discussion of PTAB trial mechanics as seen from the perspectives of judges, petitioners, and patent owners. The panel shares their 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:
    Scott A. McKeown, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
    Hon. Grace Obermann, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA
    Hon. Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC

  • 4:45 pm
    0.75 hr
    Impact of PTAB Proceedings on Patent Practice and Patent Owners
    The new contested proceedings have fundamentally changed the patent enforcement, licensing and monetization environment. How is this playing out in patent practice? 

    Moderator:
    Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
    Christopher C. Gallagher, New Venture Advisors - Washington, DC
    Panelists:
    Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Washington, DC
    Kevin G. Rivette, 3LP Advisors LLC - Palo Alto, CA
    Hon. James D. Smith, Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

  • 5:30 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Friday Morning, Mar. 13, 2015
    Presiding Officer:
    William LaMarca, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA
  • 7:30 am
    Conference Room Opens
    Includes continental breakfast.

  • 8:30 am
    0.50 hr
    Inside the USPTO's Office of the General Counsel

    Sarah T. Harris, Office of the General Counsel, U.S. Patent and Trademark Office - Alexandria, VA

  • 9:00 am
    1.00 hr ethics
    The Duty of Candor in USPTO Contested Proceedings 
    A discussion of the "old" and "new" candor obligations of practitioners—their sources, their reach and applicability, and the potential consequences for their breach—in the context of the representation of clients in the new USPTO post‑grant contested proceedings.  

    Lisa A. Dolak, Syracuse University College of Law - Syracuse, NY

  • 10:00 am
    0.50 hr
    Feeshifting under Section 285
    A discussion about what makes the case "exceptional" after Octane Fitness and Highmark.

    Jeffrey D. Feldman, Feldman Gale, P.A. - Miami, FL

  • 10:30 am
    Break

  • 10:45 am
    0.50 hr
    Damages and Remedies
    An update on acceptable patent damages methodology reflecting insights from recent decisions and the thoughts of damages experts.

    Shirley Webster, Ocean Tomo, LLC - Houston, TX

  • 11:15 am
    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. Leonard Davis, U.S. District Court, Eastern District of Texas - Tyler, TX
    Hon. James F. Holderman, U.S. District Court, Northern District of Illinois - Chicago, IL
    Hon. Liam O'Grady, U.S. District Court, Eastern District of Virginia - Alexandria, VA

  • 12:15 pm
    Pick Up Lunch
    Included in registration.

  • Friday Afternoon, Mar. 13, 2015
    Presiding Officer:
    John W. Ryan, Shipman & Goodwin LLP - Washington, DC
  • LUNCHEON PRESENTATION
  • 12:45 pm
    0.75 hr
    View from the Federal Circuit

    Hon. Kimberly A. Moore, U.S. Court of Appeals for the Federal Circuit - Washington, DC
    Moderators:
    Jeremiah S. Helm, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA
    John F. Murphy, Baker & Hostetler LLP - Philadelphia, PA
    Hon. Beth Z. Shaw, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

  • 1:30 pm
    Break

  • 1:45 pm
    0.50 hr
    Due Diligence in IP M&A Transactions
    A discussion of IP diligence post-AIA, and the resulting considerations in planning, conducting diligence, and negotiating M&A transactions.

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

  • 2:15 pm
    1.00 hr
    Key Issues for In-House Counsel
    In-house patent counsel balance many issues around portfolio management and costs to file, prosecute and maintain patents, post-grant patent proceedings, litigation and other dispute resolution processes, outside counsel management, etc. Explore these challenges across several industries and hear best practices from those who have faced them.

    Moderator:
    P. Michael Walker, DuPont - Wilmington, DE
    Panelists:
    Stasia Ogden, Baxter Healthcare Corporation - Deerfield, IL
    Kevin H. Rhodes, 3M Innovative Properties Company - Saint Paul, MN
    Manny W. Schecter, IBM Corporation - Armonk, NY

  • 3:15 pm
    1.00 hr ethics
    Ethics: Send Ethics, Lawyers, and Money?
    A range of ethical issues relating to finances has arisen. Lawyers need to consider the impact of Octane on their practice. They need to understand the ethical issues that can arise from alternative fee arrangements, such as flat and capped fees, both in litigation and prosecution. There are also thorny issues such as choice of law that come with multi‑state federal litigation.

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

  • 4:15 pm
    Adjourn

  • Day 1 March 12, 2015
  • Day 2 March 13, 2015
Download Schedule

Conference Faculty

Hon. Scott Boalick

Deputy Chief Judge (Acting), Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Christopher A. Cotropia

Intellectual Property Institute, University of Richmond School of Law
Richmond, VA

Hon. Leonard Davis

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

Lisa A. Dolak

Syracuse University College of Law
Syracuse, NY

Jeffrey D. Feldman

Feldman Gale, P.A.
Miami, FL

Christopher C. Gallagher

New Venture Advisors
Washington, DC

Sarah T. Harris

Office of the General Counsel, U.S. Patent and Trademark Office
Alexandria, VA

Jeremiah S. Helm

Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA

Drew Hirshfeld

Deputy Commissioner for Patent Examination Policy, U.S. Patent and Trademark Office
Alexandria, VA

Hon. James F. Holderman

U.S. District Court, Northern District of Illinois
Chicago, IL

David Hricik

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

Stephen G. Kunin

Oblon, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA

Dale S. Lazar

DLA Piper LLP US
Reston, VA

Lynn I. Levine

Morrison & Foerster LLP
Washington, DC

Edward D. Manzo

Husch Blackwell LLP
Chicago, IL

Valencia Martin-Wallace

Deputy Commissioner for Patent Quality, U.S. Patent and Trademark Office
Alexandria, VA

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Scott A. McKeown

Oblon, 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

Hon. Kimberly A. Moore

U.S. Court of Appeals for the Federal Circuit
Washington, DC

John F. Murphy

Baker & Hostetler LLP
Philadelphia, PA

Hon. Liam O'Grady

U.S. District Court, Eastern District of Virginia
Alexandria, VA

Hon. Grace Obermann

Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Stasia Ogden

Baxter Healthcare Corporation
Deerfield, IL

Hon. Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Kevin H. Rhodes

3M Innovative Properties Company
Saint Paul, MN

Kevin G. Rivette

3LP Advisors LLC
Palo Alto, CA

Perry Saidman

Saidman DesignLaw Group, LLC
Silver Spring, MD

Kristi L. R. Sawert

Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA

Manny W. Schecter

IBM Corporation
Armonk, NY

Hon. Beth Z. Shaw

Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Russell Slifer

Director, Rocky Mountain Region, U.S. Patent and Trademark Office
Denver, CO

Hon. James D. Smith

Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC

P. Michael Walker

DuPont
Wilmington, DE

T. Cy Walker

Kenyon & Kenyon
Washington, DC

Shirley Webster

Ocean Tomo, LLC
Houston, TX

Harold C. Wegner

Wegner IP Consulting
Naples, FL

Jeffrey A. Wolfson

Haynes and Boone, LLP
Washington, DC

Planning Committee

Hon. James D. Smith—Chair

Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Hon. Scott Boalick

Deputy Chief Judge (Acting), Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

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

Gregory L. Hillyer

Feldman Gale, P.A.
Philadelphia, PA

Hon. Linda E. Horner

Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Joanna Jefferson

The University of Texas School of Law
Austin, TX

Stephen G. Kunin

Oblon, McClelland, Maier & Neustadt, L.L.P.
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

Adam Mossoff

George Mason University School of Law
Arlington, VA

Hon. Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

John W. Ryan

Shipman & Goodwin LLP
Washington, DC

Perry Saidman

Saidman DesignLaw Group, LLC
Silver Spring, MD

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

Credit Info

  • Alexandria
MCLE Credit
Toggle view Texas – 14.75 hrs  |  2.00 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.
Toggle view California – 14.75 hrs  |  2.00 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.  
Toggle view Delaware – 13.50 hrs  |  2.00 hrs Ethics
No Additional Credit Information.
Toggle view Illinois – 14.75 hrs  |  2.00 hrs Ethics
Within 10 days of the conference you must claim and certify your credit online in Your Briefcase, then you will be provided a Certificate of Attendance for your records. 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. Failure to submit your credit within 10 days may result in attendance not being reported or may result in additional fees being assessed to you for credit reporting. UT Law CLE will maintain Attendance Records for four years.
Toggle view New Jersey – 15.00 hrs  |  2.00 hrs Ethics
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 (PDF).

At the conclusion of the conference you  will need to claim and certify your credit online, in your UTCLE "Briefcase", you will then be provided a certificate of attendance . Self-report your CLE credit directly to the Supreme Court of New Jersey Board on Continuing Legal Education. UT Law CLE will maintain Attendance Records for four years.
Toggle view New York – 15.00 hrs  |  2.00 hrs Ethics
As The University of Texas School of Law is a Oklahoma Bar Association presumptively approved MCLE provider (#169), and Oklahoma is a New York Approved Jurisdiction on List A, 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 (PDF).

 You must claim and certify your credit online in your UTCLE "Briefcase", and will then be provided a Certificate of Attendance for your records. Self-report your CLE credit directly to the New York State Bar Association. UT Law CLE will maintain Attendance Records for four years.  
Toggle view Ohio – 14.75 hrs  |  2.00 hrs Ethics
You must claim and certify your credit online in Your Briefcase, you will then be provided a Certificate of Attendance for your records. UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. 
Toggle view Oklahoma – 17.50 hrs  |  2.50 hrs Ethics
You must claim and certify your credit online in Your Briefcase, then you will then be provided a Certificate of Attendance for your records. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference.
Toggle view Pennsylvania – 12.50 hrs  |  2.00 hrs Ethics
UT Law CLE is an approved provider of Pennsylvania credit, sponsor #236. You must claim your credit online in Your Briefcase, and will then be provided a Certificate of Attendance for your records. Attorney attendance will be reported to Pennsylvania within 2 weeks after credit is claimed and submit. Attorneys are not able to report this credit on their own, and UT Law CLE pays all associated fees for the credit hours. Contact us at accreditation@utcle.org if you have additional questions.
Toggle view Virginia – 12.50 hrs  |  2.00 hrs Ethics
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 Virginia State Bar. You must claim your credit online in Your Briefcase, and will then be provided a Certificate of Attendance for your records. UT Law CLE will maintain Attendance Records for four years.  
Other Credit
Toggle view TX Accounting CPE – 17.50 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

Alexandria – Mar 12-13, 2015 – United States Patent and Trademark Office
Conference Concluded
Buy
  • Alexandria
Individual
Last day for $660.00 Regular pricing: Mar 4, 2015

$710.00 for registrations received after this time

USPTO Employee
Last day for $250.00 Regular pricing: Feb 4, 2015

$250.00 for registrations received after this time

Group (5 registrants minimum)
Last day for $595.00 Regular pricing: Mar 4, 2015

$645.00 for registrations received after this time

Group (10 registrants minimum)
Last day for $530.00 Regular pricing: Mar 4, 2015

$580.00 for registrations received after this time

Last day for cancellation (full refund): Mar 6, 2015

$50 processing fee applied after this date

Last day for cancellation: Mar 9, 2015

Venue

speaker

United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA

Additional Information

The Westin Alexandria is currently sold out of rooms. 
The following hotels list availability:
Hilton Alexandria Old Town
Embassy Suites Alexandria - Old Town
Wyndham Old Town Alexandria

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