University of Texas School of Law
14th Annual
Advanced Patent Law Institute
Alexandria Mar 21-22, 2019 United States Patent and Trademark Office
Conference Concluded
Related products:       eConferences       Complete Conference Materials
PRESENTED BY
The University of Texas School of Law
The George Mason University Antonin Scalia Law School

UT Law CLE

2019 Advanced Patent Law Institute

Program Features
The 14th Annual Advanced Patent Law Institute at the United States 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.

This year’s highlights include:
  • An Update from the USPTO from Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
  • An in-depth discussion of the Global Patent Landscape including the influence of countries like China and others on the U.S. patent system and patent enforcement.
  • An update on Section 101 and recent decisions impacting the drafting of patents in the life-sciences and software/technology sectors.
  • A review of the year’s key patent decisions in the Federal Circuit and Supreme Court, and their impact on patent practice.
  • Recent developments and changes in PTAB practices, including an update from Acting Chief Judge Scott Boalick.
  • Discussion of how SEP/FRAND issues are evolving at home and abroad with the growth of the internet of things.
  • Practical guidance on topics ranging from patent insurance to practicing in the cloud.
  • Insight from members of the federal judiciary as part of the popular Judicial Panel.

UT Law CLE

2019 Advanced Patent Law Institute

8/23/19
Schedule

Thursday Morning, Mar. 21, 2019

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

7:30 am
Registration Opens

Includes continental breakfast.

8:20 am
Welcoming Remarks

8:30 am

0.50 hr

Update from the USPTO

Hear about the current priorities, programs, and initiatives underway at the Office.

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

9:00 am

1.00 hr

The Global Patent Landscape

Discuss post-issuance patent validity reviews and enforcement realities, including post-verdict royalty determinations and availability of post-verdict injunctions, in the U.S., and then compared with those in Europe and in China. Explore motions to invalidate in court under Section 101, and use of stays of infringement suits during parallel proceedings in the PTO, with a comparison of these practices in Europe and Asia.

Moderator:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Panelists:
Damon C. Matteo, Fulcrum Strategy - Foster City, CA
Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Alexandria, VA
Wayne P. Sobon, Juul Labs - San Francisco, CA
Robert P. Taylor, RPT Legal Strategies PC - San Francisco, CA

10:00 am
Break

10:15 am

0.75 hr

Navigating Patent Subject Eligibility Challenges in High Technology Cases

Understand the requirements for meeting the criteria for patent subject matter eligibility by applying the contours of recent Federal Circuit cases to claimed inventions in the software arts.

Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
Matthew Sked, U.S. Patent and Trademark Office - Alexandria, VA

11:00 am

0.50 hr

Drafting and Prosecution Under Current Section 101 Guidance: Technology 

Brush up on current USPTO guidance on Section 101 and what to do and not do when drafting and prosecuting applications based on current guidance.

Tom Chen, Haynes and Boone, LLP - Costa Mesa, CA

11:30 am

0.50 hr

Section 101 Updates: Lifesciences

Title 35, § 101 of the United States code governs patent subject matter eligibility, which, over the last several years, has significantly (and negatively) impacted technologies in fields as diverse as artificial intelligence, mechanical devices, and the life sciences. Explore recent subject matter eligibility decisions in the life sciences arena from the U.S. Court of Appeals for the Federal Circuit and U.S. District Courts, along with new USPTO guidelines and memoranda addressing patent subject matter eligibility. 

June Cohan, U.S. Patent and Trademark Office - Alexandria, VA
Leslie Fischer, Novartis Pharmaceuticals Corporation - East Hanover, NJ

12:00 pm

0.50 hr

Section 101 and Drafting Implications: Lifesciences

Discuss recent developments relating to patent subject matter eligibility, with a focus on new guidelines expected to be published by the USPTO by the end of 2018, and developments in the Courts and on the Hill.

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

12:30 pm
Pick Up Lunch

Included in registration.

Thursday Afternoon, Mar. 21, 2019

Presiding Officer:
Chris Newman, Antonin Scalia Law School, George Mason University - Arlington, VA

LUNCHEON PRESENTATION

12:50 pm

0.50 hr

PTAB Update

Hear an update on PTAB appeals and trial proceedings.

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

 
1:20 pm
Break

1:35 pm

1.25 hrs

The Evolution of PTAB Practice Strategies in Light of Recent Developments

Changes are occurring at a rapid rate at the PTAB. Hot topics that have the attention of both Judges and stakeholders include emerging trends—identifying what is both different and the same—in petition and preliminary response strategies, printed publication issues, claim construction, and discovery.

Moderator:
Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
Panelists:
Vanessa Bailey, Intel Corporation - Washington, DC
Hon. Thomas L. Giannetti, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
David L. McCombs, Haynes and Boone, LLP - Dallas, TX
Hon. Grace Obermann, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

2:50 pm

0.75 hr

Ex Parte Appeals Practice

Examine the ex parte appeal process, and hear insights and suggestions to maximize your chances for success on appeal, including when to pursue an appeal, what to include in your briefs, and how to prepare for an oral hearing.

Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
Hon. Romulo H. Delmendo, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
Hon. Bruce Wieder, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

3:35 pm
Break

3:45 pm

0.75 hr

Design Patent Practitioners: What Guidance Can You Glean from the Board?

A review of IPR and PGR decisions involving design patent challenges reveal surprising results that suggest important lessons for examiners and applicants when it comes to prosecuting design patent applications at the USPTO.

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

4:30 pm

1.00 hr ethics

Patent Law Ethics and Recent Developments

Discuss what a patent practitioner can expect if they get a letter from the OED, as well as developments in patent law ethics and practice before the PTO. Topics include an explanation of the PTO’s attorney disciplinary process including appeals from ALJ decisions; OED statistics; do’s and don’ts for responding to an OED inquiry; recent revisions to ethical rules and regulations; the OED’s new diversion program including remediation to avoid discipline; and proposed new rules regarding practitioner fees.

Moderator:
Michael A. Messina, Miles & Stockbridge P.C. - Tysons Corner, VA
Panelists:
Dahlia George, U.S. Patent and Trademark Office, Office of Enrollment and Discipline - Alexandria, VA
Bernie Knight, BK Consulting - Washington, DC
Cameron K. Weiffenbach, Miles & Stockbridge, P.C. - Tysons Corner, VA

5:30 pm
Adjourn

Friday Morning, Mar. 22, 2019

Presiding Officer:
Shirley Webster, Ocean Tomo, LLC - Houston, TX

7:30 am
Conference Room Opens

Includes continental breakfast.

8:30 am

0.50 hr

USPTO Practice Update: Pilot Programs and Quality Initiatives

Providing high‑quality, efficient examination of patent applications is paramount to the mission of the USPTO. Hear about some of the USPTO quality programs including Quality Metrics and Internal and External Training, as well as recent and current pilot programs that promote and support the improvement of USPTO products, processes, and services.

Greg Vidovich, U.S. Patent and Trademark Office - Alexandria, VA

9:00 am

0.75 hr

Preparing and Prosecuting High Quality Patents

Get practical tips for drafting and prosecuting patent applications, which can withstand scrutiny at the Patent Trial and Appeal Board (PTAB). Hear strategic advice for the patent practitioner regarding how to strengthen patent applications, including the importance of considerations regarding claim drafting, claim construction, and the use of declarations.

W. Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
Stefanos Karmis, U.S. Patent and Trademark Office - Alexandria, VA
Whitney Remily, Vorys, Sater, Seymour and Pease LLP - Washington, DC

9:45 am

0.75 hr

Impact of Your Specification on Claim Validity/Scope

Broad claims require a broad specification. But how do you make a specification broad? Examiners are interpreting many claim elements under 112(f), altering the intended scope of our claims. What can we do about it?

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

10:30 am
Break

10:45 am

0.75 hr

Developments on SEP/FRAND Issues in the U.S. and Abroad

With the growth of the internet of things and 5G, SEP licensing is becoming relevant outside traditional sectors. Review the recent developments concerning standards-essential patent issues in the U.S. and abroad, including activity at DOJ and FTC.

David K. Djavaherian, PacTech Law, P.C. - San Clemente, CA
Christian Hannon, USPTO - Alexandria , VA
John Kolakowski, Nokia Technologies - Washington, DC

11:30 am

0.50 hr

Patent Insurance: “Protect Yourself At All Times"

Intellectual property insurance enables companies to defend products, assert patents, and manage the financial risk associated with both. Using this boxing maxim, discover whether your company is the well-conditioned athlete standing with his hand in the air or the unprepared pugilist on the canvas wondering what hit him.

Gregory L. Hillyer, Hillyer Legal, PLLC - Washington, DC

12:00 pm
Pick Up Lunch

Included in registration. 

Friday Afternoon, Mar. 22, 2019

Presiding Officer:
John W. Ryan, Owens & Minor - Mechanicsville, VA

LUNCHEON PRESENTATION

12:30 pm

1.00 hr

Judicial Panel

Distinguished judges discuss their experiences hearing and trying patent cases, including ruling on stays in the context of IPRs, post-verdict injunctions and damages determinations, and motions to dismiss based on alleged ineligible subject matter.

Moderator:
Hon. Paul R. Michel, Chief Judge, Retired, United States Court of Appeals for the Federal Circuit - Alexandria, VA
Panelists:
Hon. Alan D Albright, U.S. District Court, Western District of Texas - Waco, TX
Hon. T. S. Ellis III, U.S. District Court, Eastern District of Virginia - Alexandria, VA
Hon. S. James Otero, U.S. District Court, Central District of California - Los Angeles, CA
Hon. Sue L. Robinson (Ret.), Farnan LLP - Wilmington, DE

 
1:30 pm
Break

1:45 pm

0.75 hr

A Year in Review: Recent Decisions from the Federal Circuit and the Supreme Court

Review some of the key cases in the courts in the past year concerning patent eligibility, patents as public rights and the PTAB, prior art after the AIA, and other issues.

Adam Mossoff, Antonin Scalia Law School, George Mason University - Arlington, VA

2:30 pm

1.00 hr ethics

Practicing IP Law Ethically in the Cloud: From the Mundane to the Ethics of AI

Learn how to practice competently and ethically, including maintaining client confidentiality, avoiding conflicts of interest, and safely using social media. In addition, examine the questions that lawyers should ask before using computer-augmented legal services, such as automated contract review, legal research, and patent application drafting services.

David Hricik, Mercer University School of Law - Macon, GA

3:30 pm
Adjourn

UT Law CLE

2019 Advanced Patent Law Institute

Faculty

Conference Faculty

Hon. Alan D Albright
U.S. District Court, Western District of Texas
Waco, TX
Vanessa Bailey
Intel Corporation
Washington, DC
W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Hon. Scott Boalick
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
Tom Chen
Haynes and Boone, LLP
Costa Mesa, CA
June Cohan
U.S. Patent and Trademark Office
Alexandria, VA
Hon. Romulo H. Delmendo
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
David K. Djavaherian
PacTech Law, P.C.
San Clemente, CA
Hon. T. S. Ellis III
U.S. District Court, Eastern District of Virginia
Alexandria, VA
Leslie Fischer
Novartis Pharmaceuticals Corporation
East Hanover, NJ
Dahlia George
U.S. Patent and Trademark Office, Office of Enrollment and Discipline
Alexandria, VA
Hon. Thomas L. Giannetti
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Christian Hannon
USPTO
Alexandria , VA
Gregory L. Hillyer
Hillyer Legal, PLLC
Washington, DC
David Hricik
Mercer University School of Law
Macon, GA
Andrei Iancu
Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office
Alexandria, VA
Stefanos Karmis
U.S. Patent and Trademark Office
Alexandria, VA
Bernie Knight
BK Consulting
Washington, DC
John Kolakowski
Nokia Technologies
Washington, DC
Stephen G. Kunin
Maier & Maier PLLC
Alexandria, VA
Dale S. Lazar
DLA Piper LLP US
Reston, VA
Damon C. Matteo
Fulcrum Strategy
Foster City, CA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Michael A. Messina
Miles & Stockbridge P.C.
Tysons Corner, VA
Hon. Paul R. Michel
Chief Judge, Retired, United States Court of Appeals for the Federal Circuit
Alexandria, VA
Adam Mossoff
Antonin Scalia Law School, George Mason University
Arlington, VA
Hon. Grace Obermann
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Hon. S. James Otero
U.S. District Court, Central District of California
Los Angeles, CA
Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
Whitney Remily
Vorys, Sater, Seymour and Pease LLP
Washington, DC
Hon. Sue L. Robinson (Ret.)
Farnan LLP
Wilmington, DE
Perry Saidman
Saidman DesignLaw Group, LLC
Silver Spring, MD
Matthew Sked
U.S. Patent and Trademark Office
Alexandria, VA
Wayne P. Sobon
Juul Labs
San Francisco, CA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Robert L. Stoll
Drinker Biddle & Reath LLP
Washington, DC
Robert P. Taylor
RPT Legal Strategies PC
San Francisco, CA
Greg Vidovich
U.S. Patent and Trademark Office
Alexandria, VA
Cameron K. Weiffenbach
Miles & Stockbridge, P.C.
Tysons Corner, VA
Hon. Bruce Wieder
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Planning Committee

W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Hon. Scott Boalick
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
Hon. Janet Gongola
U.S. Patent and Trademark Office
Alexandria, VA
Gregory L. Hillyer
Hillyer Legal, PLLC
Washington, DC
Joanna Jefferson
The University of Texas School of Law
Austin, TX
Stephen G. Kunin
Maier & Maier PLLC
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
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Adam Mossoff
Antonin Scalia Law School, George Mason University
Arlington, VA
Andrew Nalven
U.S. Patent and Trademark Office
Alexandria, VA
Chris Newman
Antonin Scalia Law School, George Mason University
Arlington, VA
Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
Whitney Remily
Vorys, Sater, Seymour and Pease LLP
Washington, DC
John W. Ryan
Owens & Minor
Mechanicsville, VA
Perry Saidman
Saidman DesignLaw Group, LLC
Silver Spring, MD
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Shirley Webster
Ocean Tomo, LLC
Houston, TX
Jeffrey A. Wolfson
Haynes and Boone, LLP
Washington, DC
Elaine Tung-lin Wu
U.S. Patent and Trademark Office, Office of Policy and International Affairs
Alexandria, VA

UT Law CLE

2019 Advanced Patent Law Institute

Credit Information

MCLE Credit

Texas
14.00 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
14.00 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
14.00 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 – Available Via Reciprocity
14.00 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 – Available Via Reciprocity
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
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. 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
14.00 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
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
17.00 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

2019 Advanced Patent Law Institute

Key Dates

Alexandria

  • Last day for Individual early registration: Mar 13, 2019
    Add $50 for registrations received after this time
  • Last day for USPTO Employee early registration: Mar 13, 2019
    Add $0 for registrations received after this time
  • Last day for Group Special 1 early registration: Mar 13, 2019
    Add $50 for registrations received after this time
  • Last day for Group Special 2 early registration: Mar 13, 2019
    Add $50 for registrations received after this time
  • Last day for cancellation (full refund): Mar 15, 2019
  • Last day for cancellation (partial refund): Mar 18, 2019
    $50 processing fee applied

UT Law CLE

2019 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)
Map

Accommodations

$209 room rate good through March 4, 2019 (subject to availability). Please refer to UT Law Continuing Legal Education when you call the reservations department.