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11th Annual

Advanced Patent Law Institute

Alexandria Mar 10-11, 2016 United States Patent and Trademark Office
Conference Concluded
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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 11th 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 for two days of presentations on the latest developments in patent law, including:  

  • Section 101: Current requirements, interpretations and guidelines from the USPTO and practical guidance for patent practitioners
  • A review of Nautilus and Packard and discussion of indefiniteness at the USPTO
  • PTAB proceedings: Practice tips and strategies and the impact on patent practice and patent owners
  • An overview of ITC proceedings and examination of enforcement of exclusion and cease/desist orders
  • Practical due diligence considerations in competitor-to-competitor licensing
  • An in-depth discussion on the current patent landscape and key issues impacting enforceability and licensing, including pending legislative efforts, trends in injunctive relief and more
  • Keynote presentation by Hon. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office
  • Presentations from members of the judiciary including a keynote presentation by Federal Circuit Chief Judge of the Federal Circuit, Hon. Sharon Prost and the popular Judicial Panel, moderated by former Chief Judge of the Federal Circuit, Hon. Paul R. Michel
  • Earn up to 14.25 hours of credit including 2.00 hours of ethics.
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 10, 2016
  • Day 2 March 11, 2016
  • Time
    Credit
    Subject
    Speaker
  • Thursday Morning, Mar. 10, 2016
    Presiding Officer:
    Hon. Nathan Kelley, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
  • 7:30 am
    Registration Opens
    Includes continental breakfast.

  • 8:15 am
    Welcoming Remarks

  • 8:30 am
    0.75 hr
    Patent Eligible Claims Post-Alice: Section 101 and the New USPTO Guidelines
    You’ve read Alice and understand when a claim recites an abstract idea and when a claim recites “something more,” right?  Wrong! With the new USPTO guidelines providing insight into the meaning of these concepts, and examiners now asking applicants to reference those guidelines in identifying the claims in their application, hear discussion of these concepts and the impact on patent applications.

    Dale S. Lazar, DLA Piper LLP US - Reston, VA
    Robert Bahr, Acting Deputy Commissioner for Patent Examination Policy, U.S. Patent and Trademark Office - Alexandria, VA

  • 9:15 am
    0.75 hr
    Sequenom and Section 101 Challenges in Diagnostics and Personalized Medicine
    Explore the significant challenges facing diagnostics and personalized medicine in the wake of Mayo, Myriad and Alice, as illustrated by the Federal Circuit decision in Sequenom, the implications for industry and public health, and possible strategies for overcoming difficult recent jurisprudence. 

    Moderator:
    Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
    Panelist:
    Hans Sauer, Biotechnology Innovation Organization - Washington, DC
    Adam Mossoff, George Mason University School of Law - Arlington, VA

  • 10:00 am
    Break

  • 10:15 am
    0.75 hr
    Indefiniteness
    In Nautilus v. Biosig, the Supreme Court announced a "new" standard for indefiniteness. Hear about that "new" standard, Nautilus's progeny, and how that standard is being applied, or not, in the Courts and at the USPTO.

    Kristi L. R. Sawert, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA
    Rene A. Treviño, Greenberg Traurig, LLP - Houston, TX

  • 11:00 am
    1.00 hr ethics
    Harmonization and Enforcement of USPTO Ethical Standards in the AIA Era
    Explore present day ethical issues affecting attorneys and agents who practice before the USPTO, including ethical standards under the USPTO Rules of Professional Conduct, the mechanics of OED’s complaint and investigative process, the ethical impact of the AIA on practitioners and OED, and 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

  • 12:00 pm
    Pick Up Lunch

  • Thursday Afternoon, Mar. 10, 2016
    Presiding Officer:
    Lynn I. Levine, Morrison & Foerster LLP - Washington, DC
  • LUNCHEON PRESENTATION
  • 12:20 pm
    0.50 hr
    Update from the USPTO
    Hear about the most current priorities, programs, and initiatives underway at the Agency. 

    Hon. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office - Alexandria, VA

  • 12:50 pm
    Break

  • 1:05 pm
    0.50 hr
    The Enhanced Patent Quality Initiative: Where Are We Now?

    Anthony Caputa, Director, Office of Patent Quality Assurance, U.S. Patent and Trademark Office - Alexandria, VA

  • 1:35 pm
    0.75 hr
    Proposed U.S. Patent Law Reforms: Is the Desirable Achievable?
    Numerous patent reforms have been proposed addressing different stakeholder concerns pertaining to the effective functioning of our patent system. Differing ones are contained in bills that have been passed out of the House and Senate Judiciary Committees, but which have not reached the floors of either chamber. In the wake of several recent Supreme Court decisions, yet other proposals are now being advanced, and more are certain to follow. Differences of opinion exist as to which of these proposals are desirable, which are achievable, and whether there is a nexus between the two.

    Philip S. Johnson, Johnson & Johnson - New Brunswick, NJ

  • 2:20 pm
    0.75 hr
    Fee Shifting – Will The Exception Become The Rule?
    A discussion about what makes a case “exceptional” under 35 U.S.C. § 285 after Octane Fitness, including an analysis of developing trends, pitfalls and exceptions.

    Gregory L. Hillyer, Feldman Gale - Washington, DC

  • 3:05 pm
    Break

  • 3:15 pm
    0.75 hr
    Trends in Injunctive Relief
    The availability of injunctive relief changed a decade ago with the Supreme Court's ruling in eBay. Explore recent developments in the application of the four-part test for injunctive relief, and the insights they provide to litigators.

    John Bruce Campbell Jr., McKool Smith - Austin, TX

  • 4:00 pm
    1.25 hrs
    The Patent Landscape: Economics of Enforceability and Licensing
    The patent environment has undergone dramatic, unprecedented change in the past several years. Explore the many changes across industries, stakeholders, owners and competitors, and political perspectives, and put context and narrative around these changes and proposed best practices for dealing with this new global patent environment.  

    Moderator:
    Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
    Panelists:
    Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Washington, DC
    Chris Ruggeri, Deloitte Financial Advisory Services LLP - New York, NY
    Robert L. Stoll, Drinker Biddle & Reath LLP - Washington, DC
    Caren A. Yusem, Olympic IP - Chicago, IL

  • 5:15 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Friday Morning, Mar. 11, 2016
    Presiding Officer:
    William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
  • 8:00 am
    Auditorium Opens
    Includes continental breakfast.

  • 8:45 am
    0.75 hr
    Customs and Border Patrol Enforcement of ITC Exclusion and Cease/Desist Orders
    A brief overview of the International Trade Commission (ITC) Section 337 proceedings and Customs and Border Patrol, with discussion of enforcement of ITC exclusion orders, including post-exclusion order design-around processes.

    Stephen G. Kunin, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
    Dax Terrill, U.S. Customs And Border Protection - Washington, DC

  • 9:30 am
    0.50 hr
    Update from the PTAB
    An update on PTAB statistics, rulemaking, and pilot programs.

    Hon. Scott Boalick, Vice Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

  • 10:00 am
    Break

  • 10:15 am
    1.25 hrs
    The Evolving PTAB and Best Practices
    While the PTAB evolves and continues to evolve, a number of best practices have been identified. Practitioners and judges provide their insight and, to the extent possible, predictions for the future.
    NOTE: THIS SESSION HAS BEEN MOVED TO 2:00 P.M. ON MARCH 11, 2016.

    Moderator:
    Hon. Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
    Panelists:
    Deborah Fishman, Kaye Scholer LLP - Palo Alto, CA
    Hon. Thomas L. Giannetti, Lead Administrative Patent Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA
    Hon. Linda E. Horner, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA
    David L. McCombs, Haynes and Boone, LLP - Dallas, TX

  • 11:30 am
    1.00 hr
    Judicial Panel
    Distinguished judges discuss their experiences hearing and trying patent cases, with a focus on concurrent proceedings, stays, and IPRs.

    Moderator:
    Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Washington, DC
    Panelists:
    Hon. Ron Clark, Chief Judge, U.S. District Court, Eastern District of Texas - Beaumont, TX
    Hon. T S. Ellis III, U.S. District Court, Eastern District of Virginia - Alexandria, VA
    Hon. James F. Holderman, JAMS - Chicago, IL

  • 12:30 pm
    Pick Up Lunch

  • Friday Afternoon, Mar. 11, 2016
    Presiding Officer:
    John W. Ryan, Shipman & Goodwin LLP - Washington, DC
  • LUNCHEON PRESENTATION
  • 1:00 pm
    0.75 hr
    View from the Federal Circuit

    Hon. Sharon Prost, Chief Judge, U.S. Court of Appeals for the Federal Circuit - Washington, DC

  • 1:45 pm
    Break

  • 2:00 pm
    0.50 hr
    Update from the Office of the Solicitor
    An update on the recent cases handled by the Solicitor’s Office.
    NOTE: THIS SESSION HAS BEEN MOVED TO 10:15 A.M. ON MARCH 11, 2016.

    Scott C. Weidenfeller, Acting Deputy Solicitor for Intellectual Property Law, Office of the Solicitor, U.S. Patent and Trademark Office - Alexandria, VA

  • 2:30 pm
    0.75 hr
    Due Diligence in Competitor-to-Competitor Licensing
    Explore practical patent diligence and related considerations in the licensing context, particularly competitor-related considerations as distinct from other types of licensing relationships.
    NOTE: THIS SESSION HAS BEEN MOVED TO 10:45 A.M. ON MARCH 11, 2016.

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

  • 3:15 pm
    1.00 hr ethics
    Ethics at the USPTO, from Filing through IPR
    Analyze tough ethical issues under the new IPR rules, including an examination of the less-obvious ways that inefficient or incompetent prosecution can harm clients, and a look at recent conflicts of interest cases in patent and trademark cases.

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

  • 4:15 pm
    Adjourn

  • Day 1 March 10, 2016
  • Day 2 March 11, 2016
Download Schedule

Conference Faculty

Robert Bahr

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

Hon. Scott Boalick

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

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

John Bruce Campbell Jr.

McKool Smith
Austin, TX

Anthony Caputa

Director, Office of Patent Quality Assurance, U.S. Patent and Trademark Office
Alexandria, VA

Hon. Ron Clark

Chief Judge, U.S. District Court, Eastern District of Texas
Beaumont, TX

William R. Covey

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

Hon. T S. Ellis III

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

Deborah Fishman

Kaye Scholer LLP
Palo Alto, CA

Hon. Thomas L. Giannetti

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

Gregory L. Hillyer

Feldman Gale
Washington, DC

Hon. James F. Holderman

JAMS
Chicago, IL

Hon. Linda E. Horner

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

David Hricik

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

Philip S. Johnson

Johnson & Johnson
New Brunswick, NJ

Stephen G. Kunin

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

Dale S. Lazar

DLA Piper LLP US
Reston, VA

Hon. Michelle K. Lee

Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office
Alexandria, VA

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Hon. Paul R. Michel

Chief Judge, Retired, United States Court of Appeals for the Federal Circuit
Washington, DC

Adam Mossoff

George Mason University School of Law
Arlington, VA

Hon. Sharon Prost

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

Hon. Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Chris Ruggeri

Deloitte Financial Advisory Services LLP
New York, NY

Hans Sauer

Biotechnology Innovation Organization
Washington, DC

Kristi L. R. Sawert

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

Robert Greene Sterne

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

Robert L. Stoll

Drinker Biddle & Reath LLP
Washington, DC

Dax Terrill

U.S. Customs And Border Protection
Washington, DC

Rene A. Treviño

Greenberg Traurig, LLP
Houston, TX

Scott C. Weidenfeller

Acting Deputy Solicitor for Intellectual Property Law, Office of the Solicitor, U.S. Patent and Trademark Office
Alexandria, VA

Jeffrey A. Wolfson

Haynes and Boone, LLP
Washington, DC

Caren A. Yusem

Olympic IP
Chicago, IL

Planning Committee

Hon. Nathan Kelley—Chair

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

Hon. Scott Boalick

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

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Jeffrey D. Feldman

Feldman Gale, P.A.
Miami, FL

Peggy Focarino

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

Brian E. Hanlon

U.S. Patent and Trademark Office
Alexandria, VA

Gregory L. Hillyer

Feldman Gale
Washington, DC

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

McKool Smith
Houston, TX

William LaMarca

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

Dale S. Lazar

DLA Piper LLP US
Reston, VA

Benjamin Levi

McKool Smith
Washington, DC

Lynn I. Levine

Morrison & Foerster LLP
Washington, DC

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Adam Mossoff

George Mason University School of Law
Arlington, VA

Chris Newman

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

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 – 14.25 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 – 14.25 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 – 13.00 hrs  |  2.00 hrs Ethics
No Additional Credit Information.
Toggle view Florida – 17.00 hrs  |  2.50 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 Florida Bar at www.floridabar.org. 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.  
Toggle view Illinois – 14.25 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 – 14.40 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 – 14.00 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 – 12.25 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 – 17.00 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 – 12.00 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 – Expected – 12.00 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 – 14.25 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 10-11, 2016 – United States Patent and Trademark Office
Conference Concluded
Buy
  • Alexandria
Individual
Last day for $695.00 Regular pricing: Mar 2, 2016

$745.00 for registrations received after this time

USPTO Employee
Last day for $250.00 Regular pricing: Mar 2, 2016

$250.00 for registrations received after this time

Group (5 registrants minimum)
Last day for $630.00 Regular pricing: Mar 2, 2016

$680.00 for registrations received after this time

Group (10 registrants minimum)
Last day for $560.00 Regular pricing: Mar 2, 2016

$610.00 for registrations received after this time

Last day for cancellation (full refund): Mar 4, 2016

$50 processing fee applied after this date

Last day for cancellation: Mar 7, 2016

Venue

speaker

United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA

Nearby Hotel Accommodations
speaker

Hilton Alexandria Old Town

1767 King Street
Alexandria, VA 22314
703.837.0440

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