2016 Advanced Patent Law eConference - Austin

Recent Developments in Claims Construction (Dec 2016)

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

Originally presented: Nov 2016 Advanced Patent Law Institute

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

Indirect Infringement and Divided Infringement (Dec 2016)

Examine the evolving impact of Commill and Akamai in the context of indirect and divided infringement.

Originally presented: Nov 2016 Advanced Patent Law Institute

Kevin Kudlac, Greenberg Traurig, LLP - Austin, TX

​Octane Requires More Fitness (Dec 2016)

Discuss what makes a case “exceptional” under 35 U.S.C. § 285 after the Supreme Court decision in Octane Fitness, including an analysis of developing trends and common pitfalls.

Originally presented: Nov 2016 Advanced Patent Law Institute

Gregory L. Hillyer, Brinks Gilson & Lione - Washington, DC

Defining the Contours of Alice (Dec 2016)

Recent decisions on Section 101 patent-eligible subject matter have begun to connect the dots, giving additional shape to the Alice analysis. Review these decisions and consider the lessons to be learned.

Originally presented: Nov 2016 Advanced Patent Law Institute

Steven R. Borgman, Vinson & Elkins LLP - Houston, TX
Janice Le Ta, Vinson & Elkins LLP - Austin, TX

Section 101 and Alice: Prosecution Tips and New USPTO Guidelines (Dec 2016)

Engage in a practical discussion of the USPTO guidelines and their examples to help navigate a sound path from disclosure development, through application drafting, to launch into difficult and changeable seas. Hear experiences from regular interviews in the office to the USPTO’s most recent guidance for prosecution of those applications already at sea.

Originally presented: Nov 2016 Advanced Patent Law Institute

Michael W. Piper, Conley Rose, PC - Plano, TX

Interview with the USPTO Texas Regional Director (Dec 2016)

Originally presented: Nov 2016 Advanced Patent Law Institute

Hope C. Shimabuku, Regional Director, U.S. Patent and Trademark Office, Texas Regional Office - Dallas, TX
David L. McCombs, Haynes and Boone, LLP - Dallas, TX

Standard-Essential Patents (SEPs): From Germany to Luxemburg and Back—Recent Legal Developments in Europe (Dec 2016)

Learn the most recent developments in dealing with standard-essential patents under European patent and antitrust laws. Address the CJEU's landmark decision in Huawei v. ZTE (2015) and the subsequent implementation, in particular, by the German patent courts, and examine injunctions and the requirements for a successful FRAND defense.

Originally presented: Nov 2016 Advanced Patent Law Institute

Dr. Markus Gampp, DLA Piper UK LLP - Munich, Germany

PTAB Proceedings: New Rules and Key Practice Tips (Dec 2016)

Discuss the best practices and current trends at the PTAB, including a review of new PTAB rules, evidence issues, and practice tips.

Originally presented: Nov 2016 Advanced Patent Law Institute

Andrew S. Ehmke, Haynes and Boone, LLP - Dallas, TX
Michael T. Rosato, Wilson Sonsini Goodrich & Rosati - Seattle, WA
Mark Thomas Garrett, Norton Rose Fulbright - Austin, TX
Gregory P. Huh, Haynes and Boone, LLP - Richardson, TX

​Tips and Strategies for Practicing Before the PTAB (Dec 2016)

The panel of former PTAB judges share their experiences on what works most effectively in practice before the PTAB.

Originally presented: Nov 2016 Advanced Patent Law Institute

Hon. Amber L. Hagy, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Dallas, TX
Scott E. Kamholz, Foley Hoag LLP - Washington, DC
James D. Smith, Ecolab - Wadsworth, IL

Concurrent Proceedings: Tension between PTAB and the District Courts (Dec 2016)

Explore what is really happening in the practice—including what litigators need to be concerned about within the District Courts and what patent owners should know when taking their cases before the PTAB. Learn how the different courts are approaching stays (and the implications of stays), how judges are being forced to deal with cases, the different evidentiary standards, and more.

Originally presented: Nov 2016 Advanced Patent Law Institute

Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
David J. Healey, Fish & Richardson P.C. - Houston, TX
Brian W. Oaks, Baker Botts L.L.P. - Austin, TX

Judicial Panel (Dec 2016)

Hear distinguished judges from the District Court discuss their experiences hearing and trying patent cases.

Originally presented: Nov 2016 Advanced Patent Law Institute

Alan D. Albright, Bracewell - Austin, TX
Hon. David Folsom, Jackson Walker LLP - Texarkana, TX
Hon. Faith S. Hochberg, Judge Hochberg ADR - New York City, NY
Hon. Roy Payne, U.S. District Court, Eastern District of Texas - Marshall, TX

Supreme Court Update (Dec 2016)

Consider aspects of the Supreme Court’s continuing involvement in patent law, with specific reference to cases decided in October Term 2015 and pending in October Term 2016. Also, trace the themes or dynamics that extend beyond individual cases.

Originally presented: Nov 2016 Advanced Patent Law Institute

John M. Golden, The University of Texas School of Law - Austin, TX

AIA Section 102 Now Being Seen in Litigated Cases (Dec 2016)

Investigate the new conditions for novelty under the AIA, 35 U.S.C. §102, now seen in litigated cases from patent applications first filed after March 16, 2013, including how those cases play out and what patent litigators should be looking for.

Originally presented: Nov 2016 Advanced Patent Law Institute

Ramzi R. Khazen, McKool Smith - Austin, TX
Steven J. Pollinger, McKool Smith - Austin, TX

Means-plus-Function Claims after Williamson v. Citrix (Dec 2016)

Discuss the impact of the Federal Circuit’s decision in Williamson v. Citrix on claim construction, claim scope, and claim validity.

Originally presented: Nov 2016 Advanced Patent Law Institute

Aden M. Allen, Wilson Sonsini Goodrich & Rosati, P.C. - Austin, TX
José C. Villarreal, Wilson Sonsini Goodrich & Rosati, P.C. - Austin, TX

​Overseas Sales in Light of Lexmark, Halo, and Life Tech (Dec 2016)

The development of a global marketplace has disrupted settled notions of how activities abroad impact enforcement of U.S. patent rights. Address recent developments in the law of patent exhaustion and foreign sales of products patented in the U.S.

Originally presented: Nov 2016 Advanced Patent Law Institute

Ajeet P. Pai, Baker Botts L.L.P. - Austin, TX

Opinion Practice after Halo and Stryker—More Valuable Now? (Dec 2016)

Explore the value and usefulness of opinions of counsel in the wake of the Supreme Court’s recent Halo and Stryker decisions. Highlights include retracing the recent history of opinions of counsel in patent litigation, identifying various costs and benefits of opinions of counsel, and offering suggestions for when it can be beneficial to obtain an opinions of counsel. 

Originally presented: Nov 2016 Advanced Patent Law Institute

Jeffrey D. Mills, King & Spalding - Austin, TX

Rethinking IP Strategies (Dec 2016)

Track the impact of the Defend Trade Secrets Act and the America Invents Act, on the protection of technology.

Originally presented: Nov 2016 Advanced Patent Law Institute

Hilda C. Galvan, Jones Day - Dallas, TX

The Surprising Resilience of the Patent System (Dec 2016)

Despite seemingly massive changes in patent law in the last 40 years, first towards stronger and then towards weaker protection, the basic trends in use of the patent system have remained largely unchanged. Find out why.

Originally presented: Nov 2016 Advanced Patent Law Institute

Mark A. Lemley, Stanford Law School and Durie Tangri LLP - Stanford and San Francisco, CA

Licensing Agreements (Dec 2016)

Drafting and negotiating patent licenses has always been tricky, but the rapid pace of technological disruption, the increasingly complex web of  industry relationships, and developing bodies of law have come together to make it more challenging than ever. Review how licensing strategies should evolve to take into account these and related factors, with an emphasis on real-world drafting and negotiating examples.

Originally presented: Nov 2016 Advanced Patent Law Institute

Edward A. Cavazos, Pillsbury Winthrop Shaw Pittman LLP - Austin, TX
Keith E. Witek, Tesla Motors - Austin, TX

In House Counsel Panel (Dec 2016)

Panelists discuss the issues that matter most from the perspective of in-house counsel. Engage in a wide ranging discussion of patent prosecution, litigation and licensing issues, and the prospect for patent reform as viewed by those working within the biotech, retail, and petroleum industries.

Originally presented: Nov 2016 Advanced Patent Law Institute

Mark E. Patrick, Texas Instruments Incorporated - Dallas, TX
Marcella Watkins, Shell Oil Company - Houston, TX
Diane K. Lettelleir, J.C. Penney Corporation, Inc. - Plano, TX
Ana C. Ward, Rosetta Genomics - Austin, TX

Privilege in Patent Cases: What’s New? (Dec 2016)

Analyze the privilege and work-product issues that arise in patent practice, including the risks still associated with relying upon protection over communications involving patent agents, and explore the risks of various commercial arrangements, such as licensing and joint ventures.

Originally presented: Nov 2016 Advanced Patent Law Institute

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