University of Texas School of Law
11th Annual
Advanced Patent Law Institute
Alexandria Mar 10-11, 2016 United States Patent and Trademark Office
Conference Concluded
PRESENTED BY
The University of Texas School of Law
The United States Patent and Trademark Office
George Mason University School of Law

UT Law CLE

2016 Advanced Patent Law Institute

Program Features
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.

UT Law CLE

2016 Advanced Patent Law Institute

10/17/17
Schedule

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

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

UT Law CLE

2016 Advanced Patent Law Institute

Faculty

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

UT Law CLE

2016 Advanced Patent Law Institute

Credit Information

MCLE Credit

Texas
14.25 hrs  |  2.00 hrs Ethics
Additional Information
A Texas MCLE Reporting Form will be included in your course materials. Please complete and return to the registration desk and UT Law CLE will report credit on your behalf to the State Bar of Texas, or you can self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Attendance will be provided at the conference to keep for your records.  
California
14.25 hrs  |  2.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Delaware
13.00 hrs  |  2.00 hrs Ethics
Florida
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. Self-report your CLE credit directly to The Florida Bar at www.floridabar.org. 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.  
Illinois
14.25 hrs  |  2.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will verify the number of Illinois attorneys in attendance within 10 days after the conference. Self report your credit to the MCLE Board of the Supreme Court of Illinois. UT Law CLE will maintain Attendance Records for four years.
New Jersey
14.40 hrs  |  2.00 hrs Ethics
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.

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 Supreme Court of New Jersey Board on Continuing Legal Education. 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.  
New York
14.00 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 Continuing Legal Education Board. More information and details can be found at Section 6 of the Regulations and Guidelines.

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 New York State Bar Association. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Ohio
12.25 hrs  |  2.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. You will receive a Certificate of Attendance at the conference to keep for your records.
Oklahoma
17.00 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. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference.
Pennsylvania
12.00 hrs  |  2.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive the Pennsylvania CLE Board Credit Request Form and approval documentation to self-report credit directly to the Pennsylvania CLE Board. 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.  
Virginia – Expected
12.00 hrs  |  2.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the Virginia State Bar. 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.  
Other States
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 before taking the program to ensure it will qualify for self-reporting your credits.

Other Credit

TX Accounting CPE
14.25 hrs
Additional Information
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 will need to sign in on the Accounting CPE Record of Attendance form at the registration desk. You will receive a Texas Accounting Certificate of Completion at the conference for your records. Self-report your CPE credit directly to TSBPA. UT Law CLE will maintain Attendance Records for four years.  

UT Law CLE

2016 Advanced Patent Law Institute

Key Dates

Alexandria

  • Last day for Individual early registration: Mar 2, 2016
    Add $50 for registrations received after this time
  • Last day for USPTO Employee early registration: Mar 2, 2016
    Add $0 for registrations received after this time
  • Last day for cancellation (full refund): Mar 4, 2016
  • Last day for cancellation (partial refund): Mar 7, 2016
    $50 processing fee applied

UT Law CLE

2016 Advanced Patent Law Institute

Hotel / Venue

Alexandria

United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA


Nearby Hotel Accommodations

Hilton Alexandria Old Town

1767 King Street
Alexandria, VA 22314
703.837.0440