University of Texas School of Law
12th Annual
Advanced Patent Law Institute
Alexandria Mar 9-10, 2017 United States Patent and Trademark Office
Conference Concluded
PRESENTED BY
The University of Texas School of Law
The United States Patent and Trademark Office
Antonin Scalia Law School, George Mason University

UT Law CLE

2017 Advanced Patent Law Institute

Program Features
The 12th 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:  
  • A discussion on the current patent landscape in the U.S. and overseas, with an emphasis on the state of licensing, enforcing and monetizing patents in the U.S., as well as a look at the impact of practices and policies in the UK, EU and China
  • Section 101 and the impact of recent decisions on software and technology claims, as well as current U.S. and international perspectives on patent eligibility in lifesciences
  • PTAB updates and proceedings: a look at recent decisions from the Federal Circuit, practice tips and tactics based on those decisions, and considerations and strategies in concurrent proceedings before the PTAB and District Courts
  • An examination of ITC and Section 337 Jurisdiction and the impact of recent Federal Circuit decisions affecting IPRs
  • Developments in design patents
  • Willful infringement and the impact of Halo, including discussion on enhanced damages, opinion letters, and attorney’s fees
  • Topics in USPTO practice, including a look at the USPTO’s special programs for Patent Prosecution, changes to the duties of disclosure and the implications of using the Global Dossier, plus enforcement of the USPTO’s ethical standards
  • Presentations from members of the judiciary including a keynote presentation by a Federal Circuit Judge and the popular Judicial Panel
  • Up to 15.00 hours of credit (13.00 hours in Virginia), 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 Antonin Scalia Law School at George Mason University.

UT Law CLE

2017 Advanced Patent Law Institute

9/25/17
Schedule

Thursday Morning, Mar. 9, 2017

Presiding Officer:
Hon. David P. Ruschke, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

7:30 am
Registration Opens

Includes continental breakfast.

8:20 am
Welcoming Remarks

8:30 am

1.25 hrs

The Current Patent Landscape in the U.S. and Abroad

Discuss current issues around patenting, licensing, enforcing, and monetizing patents in the U.S., and look at what the UK, EU, and China are experiencing and the impact on U.S. patent practice.

Moderators:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Washington, DC
Panelists:
Peter N. Detkin, Intellectual Ventures - Bellevue, WA
Paul Evans, Vivint, Inc - Provo, UT
Christopher C. Gallagher, New Venture Advisors - Washington, DC
Damon C. Matteo, Fulcrum Strategy - Palo Alto, CA
Paul A. Stone, 5AM Ventures - San Francisco, CA

9:45 am
Break

10:00 am

0.75 hr

Section 101: Recent Decisions and the Impact on Software and High Technology Claims

Review significant post-Alice v. CLS Bank cases addressing patent subject matter eligibility of software and high technology claims, with an emphasis on lessons learned. Hear practice tips gleaned from the guidance provided by Federal Circuit opinions in DDR Holdings, Enfish, BASCOM, McRo, and Amdocs.  

Stephen G. Kunin, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

10:45 am

0.75 hr

Section 101 and Lifesciences: Current U.S. and International Perspectives

The United States America Invents Act (AIA) of 2011 did not amend the patent subject matter eligibility standards under 35 U.S.C. § 101. Yet, despite the AIA’s goal to provide greater global patent law harmonization, the current state of subject matter eligibility law in the U.S. is decidedly not aligned with this long-standing effort. Examine the current status of U.S. subject matter eligibility for life sciences, understand how it compares to other major international jurisdictions, and explore how the U.S. Patent and Trademark Office might navigate current U.S. case law without devastating the life sciences industry.

Leslie Fischer, Novartis Pharmaceuticals Corporation - East Hanover, NJ

11:30 am

0.50 hr

Recent Developments in Design Patents

Hear recent developments in design patent law in the U.S. and abroad, including best practices for filing design applications. Discuss recent trends such as protection of graphical user interface, the Hague System, and the U.S. Supreme Court appeal of the Apple v. Samsung case.

Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC

12:00 pm
Pick Up Lunch

Included in registration. 

Thursday Afternoon, Mar. 9, 2017

Presiding Officer:
Jeffrey A. Wolfson, Haynes and Boone, 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. 

Brian E. Hanlon, U.S. Patent and Trademark Office - Alexandria, VA

 
12:50 pm
Break

1:05 pm

0.75 hr

USPTO Special Programs for Patent Prosecution

Review special programs for patent prosecution, including Track 1, Patent Prosecution Highway, First Action Interview, AFCP 2.0, P3, and Pre-Appeal Brief programs; followed by Patent Office and practitioner perspectives on the programs and when each one may be most useful.

Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
Irem Yucel, U.S. Patent and Trademark Office - Alexandria, VA

1:50 pm

0.50 hr ethics

Changes to the Duties of Disclosure and Implications of Using the Global Dossier

Learn about an ongoing project regarding use of possible IT solutions as an aid in compliance with the duty of disclosure requirements for filers at the USPTO. The ultimate aim is to reduce the administrative costs of this burden to the innovation community, while ensuring legally effective fulfillment of applicants’ duty to disclose. Updates include an overview of the issues, comments received to date, and next steps. 

Mark R. Powell, U.S. Patent and Trademark Office - Alexandria, VA

2:20 pm

0.50 hr

PTAB Update

Hear an update on PTAB appeals and trial proceedings.

Hon. David P. Ruschke, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

2:50 pm

0.50 hr

The Federal Circuit on PTAB Patent Trials: An Overview of Recent Decisions

Examine recent litigation addressing AIA Proceedings at the PTAB: including an overview of recent decisions interpreting the AIA (IPR/PGR proceedings), the agency’s rules, and PTAB’s application of those rules in specific cases. 

Scott C. Weidenfeller, U.S. Patent and Trademark Office - Alexandria, VA

3:20 pm
Break

3:30 pm

1.00 hr

PTAB Practice and Impacts of Recent Federal Circuit Decisions

While the PTAB evolves and continues to evolve, a number of best practices have been identified. Hear practitioners and judges provide insight and predictions for the future.

Moderator:
Hon. Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
Panelists:
Scott A. McKeown, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
Hon. Stacy B. Margolies, U.S. Patent and Trademark Office - Alexandria, VA
Hon. Kristi L. R. Sawert, U.S. Patent and Trademark Office - Alexandria, VA

4:30 pm

1.00 hr

Concurrent Proceedings before PTAB and District Courts

The interplay between PTAB and District Court proceedings is the new reality in patent cases, with trends and lessons continually emerging for both patent owners and challengers. Discuss issues relating to overall case management considerations, timing, stays, intermingled discovery, claim construction, admissibility, weight given to rulings in counterpart proceedings, race to finality, estoppel, and the impact of the Federal Circuit review.

Moderator:
David L. McCombs, Haynes and Boone, LLP - Dallas, TX
Panelists:
Monica Grewal, Wilmer Cutler Pickering Hale and Dorr - Boston, MA
Anthony J. Fitzpatrick, Duane Morris LLP - Boston, MA
Christopher J. Lewis, FLIR Systems, Inc. - Wilsonville, OR
Rachel MacGuire, Oracle Corporation - Broomfield, CO

5:30 pm
Adjourn

Friday Morning, Mar. 10, 2017

Presiding Officer:
William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA

7:30 am
Auditorium Opens

Includes continental breakfast. 

8:30 am

0.75 hr

Recent Developments at the ITC

Explore several important developments in Section 337 litigation at the ITC, including: the increased number of Section 101 rulings at the ITC in 2016, the ITC’s accelerated disposition programs, the effect of the Federal Circuit’s decision in ClearCorrect v. ITC, and the impact of PTAB proceedings on ITC investigations.

Anne Goalwin, U.S. International Trade Commission - Washington, DC
G. Brian Busey, Morrison & Foerster LLP - Washington, DC

9:15 am

0.75 hr

Claims Construction

Claim construction remains pivotal for patent preparation/prosecution, trials, appeals, and AIA post grant review proceedings. Focus on the latest post-Teva Federal Circuit cases and the PTAB's claim construction "rules, practices and so-forth," including Dell/SAS and APA restrictions.

Kenneth R. Adamo, Kirkland & Ellis LLP - Chicago, IL

10:00 am

0.50 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. 

Tim Rooney, U.S. Patent and Trademark Office, Office of Enrollment and Discipline - Alexandria, VA

10:30 am
Break

10:45 am

0.75 hr

Willful Patent Infringement After the Supreme Court’s Opinion in Halo v. Pulse and its Progeney

Assess the impact of Halo’s new standard for finding willfulness and awarding enhanced damages, the new burden of proof, the new standard for appellate review, opinions of counsel, and related litigation strategy issues.

William L. LaFuze, McKool Smith - Houston, 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, as well as a review on new FRCP regarding eDiscovery.

Moderator:
Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Washington, DC
Panelists:
Hon. T. S. Ellis, III, U.S. District Court, Eastern District of Virginia - Alexandria, VA
Hon. Faith S. Hochberg, U.S. District Judge (ret.), Judge Hochberg ADR - New York City, NY
Hon. Gregory M. Sleet, U.S. District Court, District of Delaware - Wilmington, DE

12:30 pm
Pick Up Lunch

Included in registration. 

Friday Afternoon, Mar. 10, 2017

Presiding Officer:
John W. Ryan, Eckert Seamans Cherin & Mellott, LLC - Washington, DC

LUNCHEON PRESENTATION

1:00 pm

0.50 hr

View from the Federal Circuit

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

 
1:30 pm
Break

1:45 pm

1.00 hr

The New Section 102

Explore the new Section 102, while focusing on the two areas of uncertainty within the new Section: does prior art need to be “available to the public” (see Helsinn Healthcare v. Teva Pharmaceuticals, on appeal to the Federal Circuit); and whether the one-year grace period under the new section is as robust as the one-year grace period under the previous section (or whether it is too soon to tell)?

Robert Bahr, U.S. Patent and Trademark Office - Alexandria, VA
Dale S. Lazar, DLA Piper LLP US - Reston, VA

2:45 pm

0.75 hr

Year in Review: Other Key Cases from the Federal Circuit and Supreme Court

Discuss the major patent decisions made this past year and their possible impacts on patent practice, including those from the Supreme Court and the Federal Circuit.

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

3:30 pm

1.00 hr ethics

Privilege in Patent Cases: What’s New?

Analyze the patent agent-client privilege, privilege problems when in-house counsel is registered by the USPTO or a state to advise an employer (but not licensed in the state), and recurring problems when patents are assigned.

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

4:30 pm
Adjourn

UT Law CLE

2017 Advanced Patent Law Institute

Faculty

Conference Faculty

Kenneth R. Adamo
Kirkland & Ellis LLP
Chicago, IL
Robert Bahr
U.S. Patent and Trademark Office
Alexandria, VA
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
G. Brian Busey
Morrison & Foerster LLP
Washington, DC
Christopher A. Cotropia
Intellectual Property Institute, University of Richmond School of Law
Richmond, VA
Peter N. Detkin
Intellectual Ventures
Bellevue, WA
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
Paul Evans
Vivint, Inc
Provo, UT
Leslie Fischer
Novartis Pharmaceuticals Corporation
East Hanover, NJ
Anthony J. Fitzpatrick
Duane Morris LLP
Boston, MA
Christopher C. Gallagher
New Venture Advisors
Washington, DC
Anne Goalwin
U.S. International Trade Commission
Washington, DC
Monica Grewal
Wilmer Cutler Pickering Hale and Dorr
Boston, MA
Brian E. Hanlon
U.S. Patent and Trademark Office
Alexandria, VA
Hon. Faith S. Hochberg
U.S. District Judge (ret.), Judge Hochberg ADR
New York City, NY
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
William L. LaFuze
McKool Smith
Houston, TX
Dale S. Lazar
DLA Piper LLP US
Reston, VA
Christopher J. Lewis
FLIR Systems, Inc.
Wilsonville, OR
Rachel MacGuire
Oracle Corporation
Broomfield, CO
Hon. Stacy B. Margolies
U.S. Patent and Trademark Office
Alexandria, VA
Damon C. Matteo
Fulcrum Strategy
Palo Alto, CA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
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
Hon. Pauline Newman
U.S. Court of Appeals for the Federal Circuit
Washington, DC
Mark R. Powell
U.S. Patent and Trademark Office
Alexandria, VA
Hon. Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
Tim Rooney
U.S. Patent and Trademark Office, Office of Enrollment and Discipline
Alexandria, VA
Hon. David P. Ruschke
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Hon. Kristi L. R. Sawert
U.S. Patent and Trademark Office
Alexandria, VA
Hon. Gregory M. Sleet
U.S. District Court, District of Delaware
Wilmington, DE
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Paul A. Stone
5AM Ventures
San Francisco, CA
Scott C. Weidenfeller
U.S. Patent and Trademark Office
Alexandria, VA
Irem Yucel
U.S. Patent and Trademark Office
Alexandria, VA

Planning Committee

Hon. David P. Ruschke—Chair
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Hon. Scott Boalick
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
Gregory L. Hillyer
Brinks Gilson & Lione
Washington, DC
Joanna Jefferson
The University of Texas School of Law
Austin, TX
Nathan Kelley
U.S. Patent and Trademark Office, Office of the Solicitor
Alexandria, VA
Thomas W. Krause
U.S. Patent and Trademark Office, Office of the Solicitor
Alexandria, VA
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
Lynn I. Levine
Morrison & Foerster LLP
Washington, DC
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Adam Mossoff
Antonin Scalia Law School, George Mason University
Arlington, VA
Chris Newman
Antonin Scalia Law School, George Mason University
Arlington, VA
Hon. Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
Whitney Remily
Haynes and Boone, LLP
Washington, DC
John W. Ryan
Eckert Seamans Cherin & Mellott, LLC
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
Baker Hostetler
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

UT Law CLE

2017 Advanced Patent Law Institute

Credit Information

MCLE Credit

Texas
15.00 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
15.00 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 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
14.00 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
15.00 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 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
16.80 hrs  |  2.40 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
18.00 hrs  |  2.50 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
13.00 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. 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
18.00 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
13.00 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
13.00 hrs  |  1.00 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
15.00 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

2017 Advanced Patent Law Institute

Key Dates

Alexandria

  • Last day for Individual early registration: Mar 6, 2017
    Add $50 for registrations received after this time
  • Last day for USPTO Employee early registration: Mar 6, 2017
    Add $0 for registrations received after this time
  • Last day for cancellation (full refund): Mar 3, 2017
  • Last day for cancellation (partial refund): Mar 6, 2017
    $50 processing fee applied

UT Law CLE

2017 Advanced Patent Law Institute

Hotel / Venue

Alexandria

United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA


Nearby Hotel Accommodations

The Westin Alexandria

400 Courthouse Square
Alexandria, VA
866.837.4210 (reservations)
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