UT Law CLE

15^th Annual

Advanced Patent Law Institute

Alexandria Mar 12-13, 2020 United States Patent and Trademark Office
Conference Concluded

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Related products: eConference Materials

PRESENTED BY
The University of Texas School of Law
The George Mason University Antonin Scalia Law School

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Overview

The 15th 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.
Current Global Enforcement Trends including the influence of countries like Germany, China and others on the U.S. patent system and patent enforcement.
An in-depth discussion on Section 101, comparing/contrasting its application across different technologies and life sciences.
Hot design patent issues and practical implications of recent decisions.
Recent developments and practices before the PTAB, including an update from Deputy Chief Judge Jacqueline Bonilla.
Coverage of current issues and best practices for patent practitioners: Section 102 “nuts and bolts”, double patenting issues, after final rejection practice, and more.
A review of the year’s key patent decisions in the Federal Circuit and Supreme Court, and their impact on patent practice.
Insight from members of the federal judiciary as part of the popular Judicial Panel.

Event Schedule

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

Day 1 March 12, 2020
Day 2 March 13, 2020

Time

Credit

Subject

Speaker
Thursday Morning, Mar. 12, 2020
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

1.00 hr

Global Enforcement Trends

Patent enforcement is often global in two or more jurisdictions requiring a deep understanding of the laws and practices of each jurisdiction, competent counsel in each jurisdiction, and on-going close cooperation between the litigation teams in each jurisdiction. This panel focuses on effective patent litigation in the largest economies after the USA – China, Japan, Germany, and the UK.

Moderator:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Panelists:
Atsushi Sato, TMI Associates - San Mateo, CA
Tobias Wuttke, Meissner Bolte - Munich, Germany
James Zhu, JunHe LLP - Shanghai, China
9:30 am

0.75 hr

Preparing High Quality Patent Applications

From biotech to computer software, gain insight on preparing high quality patent applications that are enforceable. Explore the challenges pertaining to patent eligibility, written description, and enablement from drafting through enforcement.

Bradley Forrest, Schwegman Lundberg & Woessner - Minneapolis, MN
Daniel J. Pereira, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
10:15 am

Break
10:30 am

1.25 hrs

Section 101: High Tech v. Life Sciences

The U.S. patent statutes apply equally to all patent applications, but the application of the patent eligibility requirement of Section 101 varies across technologies. Discuss, compare and contrast eligible and non-eligible claims in different fields, review the current examination guidance, and hear an update on legislate reform efforts.

Moderator:
Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
Panelists:
Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
June Cohan, U.S. Patent and Trademark Office - Alexandria, VA
Dale S. Lazar, DLA Piper LLP US - Reston, VA
11:45 am

0.75 hr

Section 101 Issues in Patent Litigation

In many contexts “101” is used to mean something basic and easily understandable, but recently Section 101 of the Patent Act has been anything but. Explore the myriad of issues that patentable subject matter uncertainty has caused in patent litigation, touch on lessons learned, and explore what developments may be on the horizon.

James M. Heintz, DLA Piper LLP US - Reston, VA
Matthew J. Rizzolo, Ropes & Gray LLP - Washington, DC
12:30 pm

Pick Up Lunch

Included in registration.
Thursday Afternoon, Mar. 12, 2020
Presiding Officer:
J. Devlin Hartline, Antonin Scalia Law School, George Mason University - Arlington, VA
KEYNOTE LUNCHEON PRESENTATION
12:50 pm

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
1:20 pm

Break
1:35 pm

1.00 hr ethics

Ethics Issues Facing USPTO Practitioners: A View from the Inside

Focus on the ethics rules issued by the USPTO in 2013 and how they are applied and enforced by today’s Office of Enrollment and Discipline. New developments will be discussed, including current cases and the new Diversion Program.

Dahlia George, U.S. Patent and Trademark Office, Office of Enrollment and Discipline - Alexandria, VA
Bernie Knight, BK Consulting - Washington, DC
2:35 pm

1.00 hr

Potpourri of Hot Design Patent Issues: Practical Implications

Gain insight on maximizing total profit damages in spite of Samsung v. Apple; using single-view drawings; choosing a good title for your application; countering aesthetic functionality and patent exhaustion defenses when asserting spare parts infringement; and praying that reason prevails in Section 103 analysis after federal circuit kicks the can down the road.

Perry Saidman, Saidman DesignLaw Group, LLC - Silver Spring, MD
3:35 pm

Break
3:45 pm

0.75 hr

SEPs and FRAND

Discuss recent developments related to standard essential patents, including cutting edge technologies, fair reasonable and non-discriminatory licensing issues, and an overview of government agency views.

Moderator:
Christian Hannon, U.S. Patent and Trademark Office - Alexandria, VA
Panelists:
T. Andrew Culbert, Perkins Coie LLP - Seattle, WA
Isabella Fu, Microsoft Corporation - Redmond, WA
4:30 pm

1.00 hr

Judicial Panel

Distinguished judges discuss their experiences hearing and trying patent cases.

Moderator:
William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
Panelists:
Hon. Liam O'Grady, U.S. District Court, Eastern District of Virginia - Alexandria, VA
Hon. Leonard P. Stark, U.S. District Court, District of Delaware - Wilmington, DE
5:30 pm

Adjourn

Time

Credit

Subject

Speaker
Friday Morning, Mar. 13, 2020
Presiding Officer:
Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
8:00 am

Conference Room Opens

Includes continental breakfast.
8:30 am

0.75 hr

On Sale Bar / Impact of Helsinn - 102 Nuts and Bolts

Gain insight on the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. on-sale bar decision and interpretation under the AIA, along with a nuts and bolts look at the resulting practical implications for patent application timing and supply agreement structuring considerations.

William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
Jeffrey A. Wolfson, Haynes and Boone, LLP - Washington, DC
9:15 am

0.50 hr

Obviousness-Type Double Patenting Issues: Best Practices and Current Trends

Understand issues and evolving case law relating to double patenting, as well as best practices for addressing double patenting rejections during examination, and pitfalls to avoid. Discuss the impact of double patenting on Patent Term Extension under 35 USC §156, portfolio management, validity, and enforcement after grant.

Whitney Remily, Birch Stewart Kolasch & Birch, LLP - Falls Church, VA
9:45 am

0.50 hr

After Final Rejection Practice

Understand the various available options to reply to a final office action from the USPTO as well as their advantages and disadvantages and chances of success. Topics include QPIDS, pre-appeal brief program, AFCP2.0, as well as amendments, affidavits under rule 41.33.

Kery Fries, U.S. Patent and Trademark Office - Alexandria, VA
10:15 am

Break
10:30 am

0.50 hr

PTAB Update

Hear an update on PTAB appeals and trial proceedings.

Hon. Jacqueline Bonilla, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
11:00 am

1.00 hr

Recent Developments in Practice Before the Patent Trial and Appeal Board (PTAB)

Discuss new developments impacting practice before the Board, including evolving standards on discretionary institution based on prior petitions for review and/or developments in other forums; increasing guidance from the Board in the form of precedential and/or informative decisions and updates to the Trial Practice Guide; the new pilot program on motions to amend that provides earlier feedback to the parties; the impact of Federal Circuit precedent on PTAB practice; and other topics of interest.

Moderator:
Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
Panelists:
Jonathan Bowser, Haynes and Boone, LLP - Washington, DC
Hon. Kalyan Deshpande, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
Jessica L.A. Marks, Unified Patents, LLC - Washington, DC
Angela Oliver, Haynes and Boone, LLP - Washington, DC
Hon. Michael Tierney, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
12:00 pm

0.50 hr

Section 101 Challenges in AIA Trials at the PTAB

Gain insight on strategic use of AIA trials (CBM, PGR, IPRs) to raise Section 101 issues; raising Section 101 issues in connection with IPR motions to amend and claim construction; and implications of 2019 Patent Eligibility Guidance on PTAB.

Andrew S. Baluch, Smith Baluch LLP - Washington, DC
12:30 pm

Break for Lunch - Presentations Resume at 1:00 p.m.
Friday Afternoon, Mar. 13, 2020
Presiding Officer:
John W. Ryan, Owens & Minor - Mechanicsville, VA
LUNCHEON PRESENTATION
1:00 pm

0.50 hr

View from the Federal Circuit

This presentation, originally scheduled to be presented by Hon. Kathleen O'Malley, has been CANCELLED.
1:00 pm

0.75 hr

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

A review of the most important cases from the Federal Circuit and the Supreme Court in the past year that every practitioner should know.

This presentation was originally scheduled at 1:45 p.m.

J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC
1:45 pm

1.00 hr ethics

Practical IP Ethics Problems

Using film, animations, and even clips from a patent lawyer-turned stand-up comic, this session addresses conflicts of interest, competently policing trademark infringement without harming your client’s brand, and how to competently and ethically represent clients with IP needs.

This presentation was originally scheduled at 2:30 p.m.

David Hricik, Mercer University School of Law - Macon, GA
2:45 pm

Adjourn

Day 1 March 12, 2020
Day 2 March 13, 2020

Download Schedule

Conference Faculty

Andrew S. Baluch

Smith Baluch LLP
Washington, DC

Hon. Jacqueline Bonilla

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

Jonathan Bowser

Haynes and Boone, LLP
Washington, DC

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

June Cohan

U.S. Patent and Trademark Office
Alexandria, VA

T. Andrew Culbert

Perkins Coie LLP
Seattle, WA

Hon. Kalyan Deshpande

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

Bradley Forrest

Schwegman Lundberg & Woessner
Minneapolis, MN

Kery Fries

U.S. Patent and Trademark Office
Alexandria, VA

Isabella Fu

Microsoft Corporation
Redmond, WA

Dahlia George

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

Christian Hannon

U.S. Patent and Trademark Office
Alexandria, VA

James M. Heintz

DLA Piper LLP US
Reston, VA

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

J. Michael Jakes

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Washington, DC

Bernie Knight

BK Consulting
Washington, DC

Stephen G. Kunin

Maier & Maier PLLC
Alexandria, VA

William LaMarca

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

Dale S. Lazar

DLA Piper LLP US
Reston, VA

Jessica L.A. Marks

Unified Patents, LLC
Washington, DC

Hon. Liam O'Grady

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

Angela Oliver

Haynes and Boone, LLP
Washington, DC

Daniel J. Pereira

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

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Whitney Remily

Birch Stewart Kolasch & Birch, LLP
Falls Church, VA

Matthew J. Rizzolo

Ropes & Gray LLP
Washington, DC

Perry Saidman

Saidman DesignLaw Group, LLC
Silver Spring, MD

Atsushi Sato

TMI Associates
San Mateo, CA

Hon. Leonard P. Stark

U.S. District Court, District of Delaware
Wilmington, DE

Robert Greene Sterne

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

Hon. Michael Tierney

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

Jeffrey A. Wolfson

Haynes and Boone, LLP
Washington, DC

Tobias Wuttke

Meissner Bolte
Munich, Germany

James Zhu

JunHe LLP
Shanghai, China

Planning Committee

Hon. Scott R. Boalick

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

Hon. Jacqueline Bonilla

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

Jonathan Bowser

Haynes and Boone, LLP
Washington, DC

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Elizabeth L. Dougherty

U.S. Patent and Trademark Office
Alexandria, VA

Karin Ferriter

U.S. Patent and Trademark Office
Alexandria, VA

Hon. Janet Gongola

U.S. Patent and Trademark Office
Alexandria, VA

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

Chris Newman

Antonin Scalia Law School, George Mason University
Arlington, VA

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Whitney Remily

Birch Stewart Kolasch & Birch, LLP
Falls Church, VA

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

Credit Info

Alexandria

MCLE Credit

Texas – 14.00 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 Monday. 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

California – 14.00 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 State Bar of California at calbar.ca.gov. 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.

Delaware – 14.00 hrs | 2.00 hrs Ethics

No Additional Credit Information.

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.

Illinois – 14.00 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. You may also need to sign in at the registration desk if you are attending the live conference - please check with conference staff. 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. UT Law CLE will maintain Attendance Records for four years.

New Jersey – Available Via Reciprocity – 17.00 hrs | 2.50 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 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 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.

New York – Available Via Reciprocity – 17.00 hrs | 2.50 hrs Ethics

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 (PDF).

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 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.

Ohio – 14.00 hrs | 2.00 hrs Ethics

UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. You must claim your credit online in Your Briefcase, and will then be provided a Certificate of Attendance for your records. You may also need to sign in at the registration desk if you are attending the live conference - please see staff for details.

Oklahoma – 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. 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 report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference.

Pennsylvania – 14.00 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. You may also be required to sign-in at the registration desk if you are attending in-person - please see staff onsite for more details. Attorney attendance will be reported to Pennsylvania within 2 weeks of the webcast conclusion. Attorneys are not able to report this credit on their own, and UT Law CLE pays all associated fees for the credit hours. Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.

Virginia – 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

TX Accounting CPE – 17.00 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 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.

Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.

Key Dates

Alexandria – Mar 12-13, 2020 – United States Patent and Trademark Office

Conference Concluded

Buy

Alexandria

Last day for Individual early registration: Mar 4, 2020

Add $50 for registrations received after this time

Last day for Group (5 registrants minimum) early registration: Mar 4, 2020

Add $50 for registrations received after this time

Last day for Group (10 registrants minimum) early registration: Mar 4, 2020

Add $50 for registrations received after this time

Last day for cancellation (full refund): Mar 6, 2020

$50 processing fee applied after this date

Last day for cancellation: Mar 9, 2020

Venue

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

15th Annual

Advanced Patent Law Institute

Alexandria Mar 12-13, 2020 United States Patent and Trademark Office Conference Concluded

Buy

Related products: eConference Materials

Overview

Event Schedule

Thursday Morning, Mar. 12, 2020

Thursday Afternoon, Mar. 12, 2020

Friday Morning, Mar. 13, 2020

Friday Afternoon, Mar. 13, 2020

Conference Faculty

Andrew S. Baluch

Hon. Jacqueline Bonilla

Jonathan Bowser

Courtenay C. Brinckerhoff

June Cohan

T. Andrew Culbert

Hon. Kalyan Deshpande

Bradley Forrest

Kery Fries

Isabella Fu

Dahlia George

Christian Hannon

James M. Heintz

David Hricik

Andrei Iancu

J. Michael Jakes

Bernie Knight

Stephen G. Kunin

William LaMarca

Dale S. Lazar

Jessica L.A. Marks

Hon. Liam O'Grady

Angela Oliver

Daniel J. Pereira

Teresa Stanek Rea

Whitney Remily

Matthew J. Rizzolo

Perry Saidman

Atsushi Sato

Hon. Leonard P. Stark

Robert Greene Sterne

Hon. Michael Tierney

Jeffrey A. Wolfson

Tobias Wuttke

James Zhu

Planning Committee

Hon. Scott R. Boalick

Hon. Jacqueline Bonilla

Jonathan Bowser

Courtenay C. Brinckerhoff

Elizabeth L. Dougherty

Karin Ferriter

Hon. Janet Gongola

Joanna Jefferson

Stephen G. Kunin

William L. LaFuze

William LaMarca

Dale S. Lazar

David L. McCombs

Adam Mossoff

Chris Newman

Teresa Stanek Rea

Whitney Remily

John W. Ryan

Perry Saidman

Robert Greene Sterne

Shirley Webster

Jeffrey A. Wolfson

Credit Info

MCLE Credit

Other Credit

Key Dates

Alexandria

Venue

United States Patent and Trademark Office

Nearby Hotel Accommodations

The Westin Alexandria

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15^th Annual

Alexandria Mar 12-13, 2020 United States Patent and Trademark Office
Conference Concluded