eConference
2017 Advanced Patent Law (Austin) eConference
Contains material from Dec 2017
2017 Advanced Patent Law (Austin) eConference
4.26 out of 5 stars
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Thank you!
excellent program
I would like to see more topics around patent drafting and prosecution. It feels like an afterthought.
Outstanding program, as always!
Logistically the e-course has been disappointing. I've had to listen to 4 hours just to get 2 hours of credit - no explanation of why my "response rate" is only 19%. I answered EVERY prompt.
Usually attend in person. The e-course Session taken from the 2017 Austin eConference are to make up for the canceled second day of the Adv. Patent Law Institute at the USPTO in March 2018 due to weather shutdown of Government facilities.
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UT Law's 22nd Annual Advanced Patent Law Institute in Austin covers the latest developments in patent law and features a sophisticated array of prosecution and litigation topics. Hear from nationally recognized faculty including senior IP counsel of major corporations, patent prosecution and litigation experts from around the nation, U.S. District Court Judges, and leading academics. This year’s program features:
- A review of the year’s key Federal Circuit and Supreme Court cases by Mark A. Lemley, Stanford Law School
- A discussion on the Evolving Patent Valuation Landscape and the interplay between innovation and the rising costs of enforcement
- Section 101 and a look at how the courts and USPTO continue to apply Alice
- Strategies for strengthening your PTAB trial record for appeal
- Changes to the on-sale bar rule under the AIA
- Approaches for acquiring, managing, and asserting patent portfolios
- Emerging technologies and how they are impacting the legal landscape
- ITC trends and hot topics
- Patent litigation around the world and the growing popularity of jurisdictions like Canada, China and Germany
- Insight from sitting U.S. District Court Judges, including Judge Cathy Ann Bencivengo (SDCA), Judge Mitchell S. Goldberg (EDPA) and Judge Robert W. Schroeder III (EDTX) and their experiences hearing patent cases
- A Friday Breakfast Presentation, hosted by Women in IP, on the Ethical Considerations of Career Transitions
- 3.25 hours of ethics, including presentations on Patent Prosecution and Malpractice, and Recent Developments in Attorney-Client Privilege in Patent Litigation
Includes: Video Audio Paper Slides
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1.
Year in Review: Key Federal Circuit and U.S. Supreme Court Decisions (Dec 2017)
Mark A. Lemley
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Session 1
—61 mins
Year in Review: Key Federal Circuit and U.S. Supreme Court Decisions (Dec 2017)
A summary of the most significant Supreme Court and Federal Circuit decisions of the past year.
Originally presented: Nov 2017 Advanced Patent Law Institute
Mark A. Lemley,
Stanford Law School and Durie Tangri LLP - Stanford and San Francisco, CA
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2.
Recent Developments in Claims Construction (Dec 2017)
Kenneth R. Adamo
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185 pgs
Slides
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15 pgs
Session 2
—49 mins
Recent Developments in Claims Construction (Dec 2017)
Claim construction continues to be the axis about which patent preparation/prosecution, trials, appeals, and AIA post grant review proceedings all revolve. Hear the latest Federal Circuit and trial court claim construction cases, and the PTAB's claim construction "rules, practices and so-forth," including revived O2 Micro issues and latest Dell/SAS and APA restrictions.
Originally presented: Nov 2017 Advanced Patent Law Institute
Kenneth R. Adamo,
Kirkland & Ellis LLP - Chicago, IL
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3.
Section 101 Update (Dec 2017)
Steve Borgman
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Session 3
—33 mins
Section 101 Update (Dec 2017)
The courts and the USPTO continue to apply Alice in determining whether a patent contains eligible subject matter. Review recent decisions and developments involving eligibility and any lessons to be learned.
Originally presented: Nov 2017 Advanced Patent Law Institute
Steve Borgman,
Vinson & Elkins LLP - Houston, TX
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4.
Design Patents: In Anticipation of Functionality (Dec 2017)
Perry Saidman
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Paper
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5 pgs
Paper
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22 pgs
Paper
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11 pgs
Session 4
—30 mins
Design Patents: In Anticipation of Functionality (Dec 2017)
Anticipation and functionality are two of the most shrouded and misunderstood areas of design patent law. This presentation unpacks these two areas, providing ample ammunition for overcoming rejections and countering defenses.
Originally presented: Nov 2017 Advanced Patent Law Institute
Perry Saidman,
Saidman DesignLaw Group, LLC - Silver Spring, MD
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5.
Patent Litigation Around the World: Canada, China, and Germany (Dec 2017)
Kevin Kudlac
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Session 5
—43 mins
Patent Litigation Around the World: Canada, China, and Germany (Dec 2017)
Explore the good, the bad and the ugly of patent litigation jurisdictions that are growing in popularity, including Canada, China, and Germany.
Originally presented: Nov 2017 Advanced Patent Law Institute
Kevin Kudlac,
Greenberg Traurig, LLP - Austin, TX
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6.
Emerging Technologies: Law and Regulation (Dec 2017)
Hilda C. Galvan
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Session 6
—39 mins
Emerging Technologies: Law and Regulation (Dec 2017)
Discuss emerging technologies—artificial intelligence, internet of things, and 3D printing—and their impact on the legal landscape.
Originally presented: Nov 2017 Advanced Patent Law Institute
Hilda C. Galvan,
Jones Day - Dallas, TX
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7.
Patenting in the Life Sciences: Prosecution Issues, Key Cases, and Hot Topics (Dec 2017)
Ana C. Ward
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Session 7
—57 mins
Patenting in the Life Sciences: Prosecution Issues, Key Cases, and Hot Topics (Dec 2017)
Hear updates on the USPTO’s position on Section 101 and relevant case law decisions, and take a tour of the recent CRISPR patent wars.
Originally presented: Nov 2017 Advanced Patent Law Institute
Ana C. Ward,
Austin, TX
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8.
Patent Portfolio Strategies (Dec 2017)
Steven H. Slater
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Session 8
—32 mins
Patent Portfolio Strategies (Dec 2017)
Changes in legislation, case law, and administrative procedures, coupled with broader societal changes such as globalization and the shift to information-based technologies, are profoundly impacting the ways in which patents are exploited and valued as business assets. Strategies for acquiring, managing, and asserting patent portfolios are discussed in light of these influences.
Originally presented: Nov 2017 Advanced Patent Law Institute
Steven H. Slater,
Slater Matsil, LLP - Dallas, TX
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9.
Infringement Remedies (Dec 2017)
Danielle Joy "DJ" Healey
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Session 9
—31 mins
Infringement Remedies (Dec 2017)
Remedies for infringement are in play. Damages law continues to evolve, including whether or when transactions, sales or uses abroad can be recovered for U.S. patents. Halo changed the law on enhanced damages, but the results in the district courts and the Federal Circuit. The record of cases since Octane Fitness show attorneys’ fee awards are becoming bigger and more common. Damages law post-VirnetX and post-D-Link continues to develop in patent cases. Equitable remedies and administrative remedies (exclusion orders) are examined.
Originally presented: Nov 2017 Advanced Patent Law Institute
Danielle Joy "DJ" Healey,
Fish & Richardson P.C. - Houston, TX
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10.
Defending Against Allegations of Willful Infringement Post-Halo (Dec 2017)
Christa Brown-Sanford
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Session 10
—25 mins
Defending Against Allegations of Willful Infringement Post-Halo (Dec 2017)
A discussion on the various strategies to consider in defending against allegations of willful infringement since the Halo decision.
Originally presented: Nov 2017 Advanced Patent Law Institute
Christa Brown-Sanford,
Baker Botts - Dallas, TX
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11.
Standard Essential Patents and FRAND Royalties (Dec 2017)
John R. Keville
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Session 11
—32 mins
Standard Essential Patents and FRAND Royalties (Dec 2017)
With SEPs and FRAND commitments remaining critical in the high-tech sectors, several recent district court and Trade Commission actions centered on the valuing and enforcing of FRAND commitments and royalties. Hear what that means to SEP holders and standard users.
Originally presented: Nov 2017 Advanced Patent Law Institute
John R. Keville,
Winston & Strawn LLP - Houston, TX
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12.
Judicial Panel (Dec 2017)
Alan D Albright, Hon. Cathy Ann Bencivengo, Hon. Mitchell S. Goldberg, Hon. Robert W. Schroeder III
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Session 12
—64 mins
Judicial Panel (Dec 2017)
Hear distinguished judges from the District Court discuss their experiences hearing and trying patent cases.
Originally presented: Nov 2017 Advanced Patent Law Institute
Alan D Albright,
Bracewell - Austin, TX
Hon. Cathy Ann Bencivengo,
U.S. District Court, Southern District of California - San Diego, CA
Hon. Mitchell S. Goldberg,
U.S. District Court, Eastern District of Pennsylvania - Philadelphia, PA
Hon. Robert W. Schroeder III,
U.S. District Court, Eastern District of Texas - Texarkana, TX
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13.
Women in IP Friday Breakfast Presentation: Ethical Considerations of Career Transitions (Dec 2017)
Elise Selinger, Mollybeth Kocialski, Betty Ellsworth Ungerman
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Paper
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81 pgs
Session 13
—48 mins
Women in IP Friday Breakfast Presentation: Ethical Considerations of Career Transitions (Dec 2017)
A discussion on the ethical considerations involved in making transitions between professional avenues including private practice, in-house counsel, and government roles.
Originally presented: Nov 2017 Advanced Patent Law Institute
Elise Selinger,
Conley Rose, PC - Plano, TX
Mollybeth Kocialski,
U.S. Patent and Trademark Office, Rocky Mountain Region - Denver, CO
Betty Ellsworth Ungerman,
Lennox International Inc. - Richardson, TX
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14.
Patent Prosecution Tips and Traps (Dec 2017)
Kirk Dorius, Stephen A. Mason
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Session 14
—34 mins
Patent Prosecution Tips and Traps (Dec 2017)
Drawing upon several “traps” observed in litigation or IPR practice, this presentation discusses patent prosecution tactics with an eye toward eventual assertion.
Originally presented: Nov 2017 Advanced Patent Law Institute
Kirk Dorius,
Dorius Law PC - Austin, TX
Stephen A. Mason,
Michael Best - Austin, TX
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15.
The PTAB: Five Years Later (Dec 2017)
Hon. Teresa Stanek Rea
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Session 15
—32 mins
The PTAB: Five Years Later (Dec 2017)
We have come a long way since the start of the PTAB on September 16, 2012. Hear how the PTAB has significantly impacted the patent holder, challengers, and the courts, with some focus on changes within the PTAB itself and discussion of the possible directions for its continuing evolution.
Originally presented: Nov 2017 Advanced Patent Law Institute
Hon. Teresa Stanek Rea,
Crowell & Moring, LLP - Washington, DC
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16.
ITC Update: Hot Topics and Trends (Dec 2017)
Veronica Ascarrunz
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Session 16
—24 mins
ITC Update: Hot Topics and Trends (Dec 2017)
Stay up-to-date about the latest trends and issues at the ITC, including subject matter patent invalidity under Section 101, antitrust, importation, and domestic industry.
Originally presented: Nov 2017 Advanced Patent Law Institute
Veronica Ascarrunz,
Wilson Sonsini Goodrich & Rosati, P.C. - Washington, DC
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17.
Recent Developments in Attorney-Client Privilege and Work Product in Patent Litigation (Dec 2017)
Lindsay Leavitt, Kat Li
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Session 17
—25 mins
Recent Developments in Attorney-Client Privilege and Work Product in Patent Litigation (Dec 2017)
Explore two recent developments in attorney-client privilege and work product in patent litigation. As more plaintiffs use litigation funding as a means to pursue their claims, case law is developing as to the discoverability of communications with the litigation funder. In addition, the Texas Supreme Court is considering whether communications with patent agents are protected under Texas law.
Originally presented: Nov 2017 Advanced Patent Law Institute
Lindsay Leavitt,
McKool Smith - Austin, TX
Kat Li,
McKool Smith - Austin, TX
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18.
Strategies for Strengthening your PTAB Trial Record for Appeal (Dec 2017)
Raghav Bajaj, J. Andrew Lowes
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Session 18
—32 mins
Strategies for Strengthening your PTAB Trial Record for Appeal (Dec 2017)
Learn how to provide substantial evidence support for factual findings, preserve error, and otherwise maximize your chances for success at the Federal Circuit.
Originally presented: Nov 2017 Advanced Patent Law Institute
Raghav Bajaj,
Haynes and Boone, LLP - Austin, TX
J. Andrew Lowes,
Haynes and Boone, LLP - Richardson, TX
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19.
IPR Case Studies: Why and How to Obtain an Earlier Effective Filing Date (Dec 2017)
Andrew Liddell
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Session 19
—29 mins
IPR Case Studies: Why and How to Obtain an Earlier Effective Filing Date (Dec 2017)
Obtaining an earlier effective filing date in an IPR proceeding is not always straightforward. Hear a discussion of cases in which patent owners and petitioners alike have sought to obtain an earlier effective date, and identify the reasons for their success or failure.
Originally presented: Nov 2017 Advanced Patent Law Institute
Andrew Liddell,
Norton Rose Fulbright - Austin, TX
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20.
The Evolving Patent Valuation Landscape (Dec 2017)
Richard L. Wynne Jr., W. Christopher Bakewell, Robert H. Heath, Jennifer B. Wuamett
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Session 20
—49 mins
The Evolving Patent Valuation Landscape (Dec 2017)
The implementation of the America Invents Act, as well as judicial decisions over the past decade relating to injunctive relief, to apportionment for the value of the patented invention relative to implementing products as a whole, and to the effect of industry standards on valuation have sparked debate. From both an economic and a practical perspective, this panel discusses whether valuations appropriately recognize and encourage innovation considering the rising costs of enforcement.
Originally presented: Nov 2017 Advanced Patent Law Institute
Richard L. Wynne Jr.,
Thompson & Knight LLP - Dallas, TX
W. Christopher Bakewell,
Duff and Phelps, LLC - Houston, TX
Robert H. Heath,
RPX Corporation - San Francisco, CA
Jennifer B. Wuamett,
NXP Semiconductors - Austin, TX
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21.
Patent Valuation and Due Diligence in Negotiation (Dec 2017)
Abha Divine, Keith E. Witek, James D. Woods
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Session 21
—47 mins
Patent Valuation and Due Diligence in Negotiation (Dec 2017)
In today’s high-tech markets, developing technology or securing the rights to technology is an important part of launching successful products and services. Firms differentiate their products and services by developing or procuring unique technology/IP that they hope will provide their products and services with enhanced commercial value and/or a competitive advantage. Review the effect recent court decisions have had on the value of patents/technology, company valuation, licensing arrangements and fees, and patent strategies in various contexts and various transactions.
Originally presented: Nov 2017 Advanced Patent Law Institute
Abha Divine,
Techquity Capital Management - Austin, TX
Keith E. Witek,
Tesla Motors - Austin, TX
James D. Woods,
Economic Analytics Consulting, LLC - Houston, TX
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22.
The "New" On-Sale Bar Under the AIA (Dec 2017)
Ross Spencer Garsson
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Session 22
—24 mins
The "New" On-Sale Bar Under the AIA (Dec 2017)
Discuss the change of the on-sale bar rule under the AIA and the impact of the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. regarding “secret” sales and offers for sale as prior art under Section 102 (post-AIA).
Originally presented: Nov 2017 Advanced Patent Law Institute
Ross Spencer Garsson,
Dickinson Wright PLLC - Austin, TX
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23.
Patent Prosecution and Malpractice (Dec 2017)
David Hricik
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Session 23
—53 mins
Patent Prosecution and Malpractice (Dec 2017)
Understand conflicts of interest and other forms of liability and risk that can arise during patent prosecution, addressing recent cases, and potential means to reduce exposure.
Originally presented: Nov 2017 Advanced Patent Law Institute
David Hricik,
Mercer University School of Law and Taylor English Duma LLP - Macon and Atlanta, GA