17^th Annual

Advanced Patent Law Institute

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

Live Webcast Mar 15-17, 2022
Conference Concluded

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Related products: eConference Materials

INSTITUTE SPONSORS
Haynes Boone, LLP
McKool Smith
Sterne, Kessler, Goldstein & Fox PLLC

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Overview

The 17th Annual Advanced Patent Law Institute is coming to you virtually again this year! While we will miss being at the United States Patent and Trademark Office this spring, we've developed this year's program to make the most of your experience with us online. Spanning three afternoons, the program continues to offer a unique opportunity to hear from USPTO senior staff, leading practitioners, academics, and members of the federal judiciary on the latest developments in patent law.

Event Schedule

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

Time

Credit

Subject

Speaker
Tuesday Afternoon, Mar. 15, 2022
Presiding Officer:
Adam Mossoff, Antonin Scalia Law School, George Mason University - Arlington, VA
11:50 am

Welcoming Remarks
All Times Listed are in CENTRAL Time.
12:00 pm

0.50 hr

Opening Keynote: Update from the USPTO

Hear a status update on the effects of the pandemic on the USPTO, and the status of telework now and in the future; the effects the pandemic had on patent filing over the last two years. It will include our IT status and updates; Diversity, Equity, and Inclusion updates; and what is happening at PTAB post-Arthrex.

David L. Berdan, Performing the Functions and Duties of the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States, U.S. Patent and Trademark Office - Alexandria, VA
12:30 pm

10-Minute Break
12:40 pm

0.75 hr

Section 101 Review and Recent “Disruptive” Decisions from the Federal Circuit

The USPTO provides an update on the status of the Patent Examination Guidelines (PEG) and Training Materials on patent subject matter eligibility. Plus, hear discussion on the recent Federal Circuit and Supreme Court decisions on patent subject matter eligibility that may have a major disruptive influence on the USPTO PEG.

Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
Matthew Sked, U.S. Patent and Trademark Office - Alexandria, VA
1:25 pm

10-Minute Break
1:35 pm

1.00 hr

Written Description: The Interplay Between Specifications and Claims

While the PTO allows broad genus claims, continuations, and amendments, the Federal Circuit keeps striking down these patents under Section 112(a). Hear more about Federal Circuit case law and suggestions on practical approaches for avoiding these problems.

Dmitry Karshtedt, George Washington University Law School - Washington, DC
Dale S. Lazar, Antonin Scalia Law School George Mason University - Arlington, VA
2:35 pm

10-Minute Break
2:45 pm

0.75 hr

Obviousness and Double Patenting

The courts create new puzzles to solve just when you think you understand the highly subjective analysis surrounding what is obvious. This presentation explores recent U.S. cases in this ever-evolving and complicated section of the law with a refresher on some old case law.

Daniel J. Pereira, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
3:30 pm

10-Minute Break
3:40 pm

0.75 hr

Evolving Landscape in PRC’s Patent Law and Enforcement

The discussion highlights new patent law amendments in China (effective in June 2021), directions by the supreme people’s court to begin shifting the burden of proof in certain patent enforcement in the jurisdiction lacking discovery, and the impact of patent linkage (similar to the Hatch-Waxman Act).

Moderator:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Panelists:
Hon. Paul R. Michel, United States Court of Appeals for the Federal Circuit - Washington, DC
Dr. James Zhu, JunHe LLP - Shanghai, China
4:25 pm

Adjourn

Time

Credit

Subject

Speaker
Wednesday Afternoon, Mar. 16, 2022
Presiding Officer:
Karin Ferriter, U.S. Patent and Trademark Office - Alexandria, VA
12:00 pm

0.75 hr

Diversity and Inventorship

An overview of the current state of inventorship requirements and the potential impacts of recent case law on the number of women inventors, the gender gap in science, technology, engineering, and mathematics (STEM) fields, and ways in which the inventor gender gap may be addressed.

Mercedes K. Meyer, Faegre Drinker Biddle & Reath LLP - Washington, DC
Valencia Martin Wallace, Deputy Commissioner for Patents, U.S. Patent and Trademark Office - Alexandria, VA
Katherine M. Tassmer, Cantor Colburn LLP - Hartford, CT
12:45 pm

10-Minute Break
12:55 pm

0.75 hr

Design Patents: All is Not Quiet on the Federal Circuit Front

This presentation focuses on recent design patent court decisions. Hear more about the most important Federal Circuit design patent decision in years, SurgiSil, as well as, Campbell Soup v. Gamon. Including secondary considerations of non-obviousness, and an emerging infringement theory using empirical evidence to prove that an ordinary observer can give greater weight to a subset of figures in a design patent that illustrate a predominating visual element of the design in determining infringement.

Perry Saidman, Saidman DesignLaw Group, LLC - Silver Spring, MD
1:40 pm

10-Minute Break
1:50 pm

0.50 hr

Current Topics in Patent Licensing

Patent licensing topics including a focus on agreement implications (i) in view of Assignor Estoppel after Minerva Surgical, Inc. v. Hologic, Inc. and (ii) PTAB-related forum selection clauses.

Jeffrey A. Wolfson, Haynes Boone, LLP - Washington, DC
2:20 pm

10-Minute Break
2:30 pm

0.75 hr

Issues Facing Biotech and Pharma Stakeholders

Explore current issues arising in prosecution and enforcement of biotech and pharma patents, including trends in USPTO rejections, PTAB proceedings, and court decisions.

Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
Jacob Moore, Moderna Therapeutics - Raleigh, NC
3:15 pm

10-Minute Break
3:25 pm

1.00 hr ethics

Ethics Potpourri

This presentation has something of practical interest to everyone. What ethical issues should in-house counsel, patent practitioners, litigators, and corporate counsel be thinking about in light of recent cases and opinions?

David Hricik, Mercer University School of Law - Macon, GA
4:25 pm

Adjourn

Time

Credit

Subject

Speaker
Thursday Afternoon, Mar. 17, 2022
Presiding Officer:
William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
12:00 pm

0.50 hr

PTAB Update

Hear an update from the Chief Judge on recent trends and developments in PTAB appeal and trial proceedings.

Hon. Scott R. Boalick, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
12:30 pm

10-Minute Break
12:40 pm

0.75 hr

Practice and Issues Before the PTAB

This panel explores the evolution of PTAB practice over the past decade from APJ and practitioner viewpoints. Focusing on discretionary practices, recent and expected policy changes, and the potential impact of the new administration. Additionally, it discusses best practices, common pitfalls, and recent trends.

Moderator:
Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
Panelists:
Hon. Kalyan Deshpande, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
Scott A. McKeown, Ropes & Gray LLP - Washington, DC
Hon. Michael Tierney, U.S. Patent and Trademark Office - Alexandria, VA
1:25 pm

10-Minute Break
1:35 pm

0.75 hr

PTAB Hot Topics and Recent Developments

A discussion of recent legal and policy developments at the PTAB, including the shape of discretionary-denial rules such as Fintiv, General Plastic, and 325(d); the use of applicant admitted prior art; and estoppels the result from PTAB decisions.

John F. Duffy, University of Virginia School of Law - Charlottesville, VA
Joe Matal, Haynes Boone, LLP - Washington, DC
2:20 pm

10-Minute Break
2:30 pm

0.50 hr

Tips for Oral Arguments Before the PTAB

Oral arguments before the PTAB can truly impact the outcome of a case. In this session, explore practice tips for those appearing at hearings before the PTAB, as well as, attributes and advantages of the LEAP program.

Erin M. Dunston, Panitch Schwarze Belisario & Nadel LLP - Philadelphia, PA
Hon. Janet Gongola, U.S. Patent and Trademark Office - Alexandria, VA
3:00 pm

10-Minute Break
3:10 pm

1.00 hr

Federal Circuit Judicial Panel

Hear from a panel of judges from the Court of Appeals for the Federal Circuit as they discuss their experiences hearing and trying patent cases.

Moderator:
David J. Kappos, Cravath, Swaine & Moore LLP - New York, NY
Panelists:
Hon. Raymond T. Chen, U.S. Court of Appeals for the Federal Circuit - Washington, DC
Hon. Richard Linn, U.S. Court of Appeals for the Federal Circuit - Washington, DC
Hon. Kara F. Stoll, U.S. Court of Appeals for the Federal Circuit - Washington, DC
4:10 pm

Adjourn

Download Schedule

Conference Faculty

David L. Berdan

Performing the Functions and Duties of the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States, U.S. Patent and Trademark Office
Alexandria, VA

Hon. Scott R. Boalick

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

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Hon. Raymond T. Chen

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

Hon. Kalyan Deshpande

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

John F. Duffy

University of Virginia School of Law
Charlottesville, VA

Erin M. Dunston

Panitch Schwarze Belisario & Nadel LLP
Philadelphia, PA

Hon. Janet Gongola

U.S. Patent and Trademark Office
Alexandria, VA

David Hricik

Mercer University School of Law
Macon, GA

David J. Kappos

Cravath, Swaine & Moore LLP
New York, NY

Dmitry Karshtedt

George Washington University Law School
Washington, DC

Stephen G. Kunin

Maier & Maier PLLC
Alexandria, VA

Dale S. Lazar

Antonin Scalia Law School George Mason University
Arlington, VA

Hon. Richard Linn

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

Valencia Martin Wallace

Deputy Commissioner for Patents, U.S. Patent and Trademark Office
Alexandria, VA

Joe Matal

Haynes Boone, LLP
Washington, DC

Scott A. McKeown

Ropes & Gray LLP
Washington, DC

Mercedes K. Meyer

Faegre Drinker Biddle & Reath LLP
Washington, DC

Hon. Paul R. Michel

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

Jacob Moore

Moderna Therapeutics
Raleigh, NC

Daniel J. Pereira

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

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Perry Saidman

Saidman DesignLaw Group, LLC
Silver Spring, MD

Matthew Sked

U.S. Patent and Trademark Office
Alexandria, VA

Robert Greene Sterne

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

Hon. Kara F. Stoll

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

Katherine M. Tassmer

Cantor Colburn LLP
Hartford, CT

Hon. Michael Tierney

U.S. Patent and Trademark Office
Alexandria, VA

Jeffrey A. Wolfson

Haynes Boone, LLP
Washington, DC

Dr. James Zhu

JunHe LLP
Shanghai, China

Planning Committee

Joanna Jefferson—Director

The University of Texas School of Law
Austin, TX

Hon. Georgianna Braden

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
North Richland Hills, TX

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Karin Ferriter

U.S. Patent and Trademark Office
Alexandria, VA

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

Antonin Scalia Law School George Mason University
Arlington, VA

Joe Matal

Haynes Boone, LLP
Washington, DC

Adam Mossoff

Antonin Scalia Law School, George Mason University
Arlington, VA

Andrew Nalven

U.S. Patent and Trademark Office
Alexandria, 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 Boone, LLP
Washington, DC

Credit Info

Live Webcast

MCLE Credit

Texas – 11.00 hrs | 1.00 hrs Ethics

UT Law CLE will report credit to the State Bar of Texas on your behalf. If you are claiming credit in the last week of your birth month, self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Completion will be emailed to you upon claiming credit.

California – 11.00 hrs | 1.00 hrs Ethics

Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. Print and keep the Certificate of Completion for your records. A Certificate of Completion will be emailed to you upon claiming credit.

Delaware – 11.00 hrs | 1.00 hrs Ethics

UT Law CLE will report attendance on behalf of the attorney to the Delaware CLE Commission within 30 days of the conference. Please contact Laura Tolin with any questions or concerns: ltolin@law.utexas.edu.

Illinois – 11.00 hrs | 1.00 hrs Ethics

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 – 11.00 hrs | 1.00 hrs Ethics

As The University of Texas School of Law is a State Bar of Texas approved MCLE provider (Sponsor #13), our courses are presumptively approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Regulations of the Supreme Court of New Jersey Board on Continuing Legal Education. More information and details can be found in the Board of Continuing Legal Education Regulations (PDF).

New Jersey MCLE credit is based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim New York MCLE credit, New Jersey credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your credit directly to the Supreme Court of New Jersey Board on CLE.

New York – Available Via Reciprocity – 11.00 hrs | 1.00 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).

New York MCLE credit is based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim New York MCLE credit, New York credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your credit directly to the New York State CLE Board.

Ohio – 11.00 hrs | 1.00 hrs Ethics

UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. You will receive a Certificate of Attendance at the conference to keep for your records.

Oklahoma – 13.00 hrs | 1.00 hrs Ethics

The University of Texas School of Law (Provider #169) live webcast presentations meet the requirements and are presumptively approved by the Oklahoma Bar Association for MCLE credit based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim Oklahoma MCLE credit, Oklahoma credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the webcast.

Pennsylvania – 11.00 hrs | 1.00 hrs Ethics

UT Law CLE is an approved provider of Pennsylvania credit, sponsor #236. 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 – 9.00 hrs | 1.00 hrs Ethics

Virginia MCLE credit has been requested for this program. We will follow up with attendees who select Virginia credit and provide them with a Certificate of Attendance with the course number that can be used to self-report to Virginia. Contact service@utcle.org with any questions.

Other States – 11.00 hrs | 1.00 hrs Ethics

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 to ensure it will qualify for self-reporting your credits.

To claim Other States MCLE credit, Other States credit option must be selected PRIOR to viewing the live webcast. You must claim your credit online in Your Briefcase, and will then be provided a Certificate of Attendance for your records.

This accreditation requires attendance verification. UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

MCLE credit is presented based on a 60-minute credit hour.

Other Credit

TX Accounting CPE – 13.00 hrs

The University of Texas School of Law (Provider #250) live webcast presentations meet the requirements and 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.

This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim Texas Accounting CPE credit, the Texas Accounting CPE credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your CPE credit directly to the Texas State Board of Public Accountancy.

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

Key Dates

Live Webcast – Mar 15-17, 2022

Conference Concluded

Buy

Live Webcast

Individual
Last day for $545.00 Regular pricing: Mar 8, 2022

$595.00 for registrations received after this time

USPTO Employee
Last day for $195.00 Regular pricing: Mar 8, 2022

$195.00 for registrations received after this time

Group (5 registrants minimum)
Last day for $490.00 Regular pricing: Mar 8, 2022

$540.00 for registrations received after this time

Group (10 registrants minimum)
Last day for $435.00 Regular pricing: Mar 8, 2022

$485.00 for registrations received after this time

Last day for cancellation (full refund): Mar 9, 2022

$50 processing fee applied after this date

Last day for cancellation: Mar 11, 2022

Our Sponsors

Thank you to our sponsors! Click each logo below to learn more.

Haynes Boone, LLP

Haynes Boone, LLP is an international corporate law firm with offices in Texas, New York, California, Charlotte, Chicago, Denver, Washington, D.C., London, Mexico City and Shanghai, providing a full spectrum of legal services in energy, technology, financial services and private equity. With more than 600 lawyers, Haynes Boone is ranked among the largest U.S.-based firms by The National Law Journal, The American Lawyer and The Lawyer. It also was recognized across the board for excellence in the BTI Consulting Group’s 2021 “A-Team” report, which identifies the law firms that in-house counsel commend for providing superior client service.
haynesboone.com
McKool Smith

With 120 trial lawyers across offices in Austin, Dallas, Houston, Los Angeles, Marshall, New York, and Washington, D.C., McKool Smith has established a reputation as one of America’s leading trial firms. The firm has secured 13 nine-figure jury verdicts and 15 eight-figure jury verdicts, obtaining more VerdictSearch and The National Law Journal “Top 100 Verdicts” than any other law firm. These courtroom successes have earned McKool Smith critical acclaim and helped the firm become what The Wall Street Journal describes as “one of the biggest law firm success stories of the past decade.” McKool Smith represents clients in complex commercial litigation, intellectual property, bankruptcy, insurance recovery, and white collar defense matters. mckoolsmith.com
Sterne, Kessler, Goldstein & Fox PLLC

Based in Washington, D.C. and renowned for more than four decades for dedication to the protection, transfer, and enforcement of intellectual property rights, Sterne, Kessler, Goldstein & Fox is one of the most highly regarded intellectual property specialty law firms in the world. Its team of attorneys, registered patent agents, students, and technical specialists include some of the country's most respected practitioners of IP law tackling innovations across a broad spectrum of industries. The firm’s practitioners hold over 50 masters and over 50 doctorate degrees in science or engineering and represent Fortune 500 companies, entrepreneurs, start-ups, inventors, venture capital firms, and universities in a client service driven environment that is welcoming, inclusive, and intellectually stimulating. sternekessler.com

17th Annual

Advanced Patent Law Institute

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

Live Webcast Mar 15-17, 2022 Conference Concluded

Buy

Related products: eConference Materials

Overview

Event Schedule

Tuesday Afternoon, Mar. 15, 2022

Wednesday Afternoon, Mar. 16, 2022

Thursday Afternoon, Mar. 17, 2022

Conference Faculty

David L. Berdan

Hon. Scott R. Boalick

Courtenay C. Brinckerhoff

Hon. Raymond T. Chen

Hon. Kalyan Deshpande

John F. Duffy

Erin M. Dunston

Hon. Janet Gongola

David Hricik

David J. Kappos

Dmitry Karshtedt

Stephen G. Kunin

Dale S. Lazar

Hon. Richard Linn

Valencia Martin Wallace

Joe Matal

Scott A. McKeown

Mercedes K. Meyer

Hon. Paul R. Michel

Jacob Moore

Daniel J. Pereira

Teresa Stanek Rea

Perry Saidman

Matthew Sked

Robert Greene Sterne

Hon. Kara F. Stoll

Katherine M. Tassmer

Hon. Michael Tierney

Jeffrey A. Wolfson

Dr. James Zhu

Planning Committee

Joanna Jefferson—Director

Hon. Georgianna Braden

Courtenay C. Brinckerhoff

Karin Ferriter

Stephen G. Kunin

William L. LaFuze

William LaMarca

Dale S. Lazar

Joe Matal

Adam Mossoff

Andrew Nalven

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

Our Sponsors

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17^th Annual

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

Live Webcast Mar 15-17, 2022
Conference Concluded