eConference
2021 Advanced Patent Law (Austin) eConference
Contains material from Dec 2021
2021 Advanced Patent Law (Austin) eConference
3.92 out of 5 stars
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There were problems with a simultaneous audio stream from a previous session restarting when I would click on the pop-up attendance box. This occurred for about 30 percent of the pop-up boxes, and I had to refresh the page each time to stop the simultaneous streaming and restart and resume just the interrupted session.
Great selection of content this time. If I were to criticize anything, it would be that most presenters did not provide a paper; only slides. But requiring a paper might be too burdensome given the time required to produce one...
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UT Law's 26th Annual Advanced Patent Law Institute 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.
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1.
Recent Developments in Claim Construction (Dec 2021)
Kenneth R. Adamo
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Session 1
—53 mins
Recent Developments in Claim Construction (Dec 2021)
The baseline of patent application preparation/prosecution, district court trials, Federal Circuit appeals, and AIA post-grant review proceedings, is claim construction. Review the important 2020-2021 claim construction cases and issues at the Federal Circuit and trial court levels, as well as at the PTAB. Examine the PTAB’s procedural and substantive claim construction “rules, practices, and etc." And discuss adherence to the APA by the PTAB under various circumstances, plus discussion of discretionary PTAB IPR institution and interface with claim construction in parallel district court proceedings.
Originally presented: Nov 2021 Advanced Patent Law Institute
Kenneth R. Adamo,
Law Office of KRAdamo - Chicago, IL
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2.
Drafting Patent Applications to Withstand Post-Grant Proceedings (Dec 2021)
Andrea L. Arndt
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Session 2
—43 mins
Drafting Patent Applications to Withstand Post-Grant Proceedings (Dec 2021)
With the increasing use of post-grant proceedings, mainly inter partes review (IPR), to challenge the validity of patent claims, various patent strategies can be implemented to increase the chances of survival and deter petitioners from even filing a proceeding.
Originally presented: Nov 2021 Advanced Patent Law Institute
Andrea L. Arndt,
Dickinson Wright PLLC - Austin, TX
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3.
Interplay of District Court Litigation and the PTAB (Dec 2021)
Juanita Deloach, Hilda C. Galvan
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Session 3
—44 mins
Interplay of District Court Litigation and the PTAB (Dec 2021)
An interactive discussion of the strategies considered by defendant/petitioner and plaintiff/patent owner when litigation and PTAB proceedings are proceeding in parallel.
Originally presented: Nov 2021 Advanced Patent Law Institute
Juanita Deloach,
Barnes & Thornburg LLP - Dallas, TX
Hilda C. Galvan,
Jones Day - Dallas, TX
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4.
PTAB Judicial Panel (Dec 2021)
David W. O'Brien, Hon. Christopher Crumbley, Hon. Amber L. Hagy, Hon. John F. Horvath
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Session 4
—46 mins
PTAB Judicial Panel (Dec 2021)
A distinguished panel of Administrative Patent Judges provides practical tips for parties and advocates in trial matters before the PTAB. Hear current issues arising in inter partes or post-grant reviews (IPR, PGR), together with helpful suggestions for effective written and oral advocacy before the PTAB.
Originally presented: Nov 2021 Advanced Patent Law Institute
David W. O'Brien,
Haynes and Boone, LLP - Austin, TX
Hon. Christopher Crumbley,
U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Austin, TX
Hon. Amber L. Hagy,
U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Austin, TX
Hon. John F. Horvath,
U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Austin, TX
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5.
Creative Ways to Resolve Disputes Between PTAB and District Courts (Dec 2021)
Kevin Kudlac, Thomas C. Mavrakakis
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Session 5
—33 mins
Creative Ways to Resolve Disputes Between PTAB and District Courts (Dec 2021)
From rocket dockets and the ITC to IPRs and MDLs, patent litigants face increasingly complex scenarios that are related yet independent. Explore creative ways to enable and encourage litigants (and their lawyers) to resolve disputes that involve both infringement litigation and post-grant proceedings without spending a fortune.
Originally presented: Nov 2021 Advanced Patent Law Institute
Kevin Kudlac,
Radulescu LLP - Austin, TX
Thomas C. Mavrakakis,
WalkMe - Palo Alto, CA
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6.
GATT TRIPS COVID-19 IP Waiver Proposal (Dec 2021)
Margaret J. Sampson
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Session 6
—29 mins
GATT TRIPS COVID-19 IP Waiver Proposal (Dec 2021)
Discuss the implications this waiver proposal presents for intellectual property protections of COVID-19 vaccines and the role of the World Trade Organization in those negotiations.
Originally presented: Nov 2021 Advanced Patent Law Institute
Margaret J. Sampson,
Baker Botts - Austin, TX
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7.
Year in Review: Federal Circuit and SCOTUS Update (Dec 2021)
Mark A. Lemley
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Session 7
—58 mins
Year in Review: Federal Circuit and SCOTUS Update (Dec 2021)
A whirlwind summary of the most important developments in Supreme Court and Federal Circuit case law over the last year.
Originally presented: Nov 2021 Advanced Patent Law Institute
Mark A. Lemley,
Stanford Law School and Durie Tangri LLP - Stanford and San Francisco, CA
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8.
Damages Update (Dec 2021)
Tamara Copeland, B. Erin Crockett, Bailey Morgan Watkins
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Session 8
—43 mins
Damages Update (Dec 2021)
In addition to licensing evidence and non-infringing alternatives, advanced analytics such as patent strength analysis, income estimation, and cost regressions are tools being used in patent infringement damages analyses. A statistician, a damages expert, and an attorney weigh in on the benefits and drawbacks of these analytical methods when determining the incremental value of a patented feature.
Originally presented: Nov 2021 Advanced Patent Law Institute
Tamara Copeland,
Kroll - Houston, TX
B. Erin Crockett,
Chapman University - Orange, CA
Bailey Morgan Watkins,
Kirkland & Ellis LLP - Austin, TX
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9.
The Ethical Traps of Joint Representations in IP Cases (Dec 2021)
Justin Cohen
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Session 9
—29 mins
The Ethical Traps of Joint Representations in IP Cases (Dec 2021)
This presentation covers the ethical issues involved in representing multiple parties in the same patent or trademark case, such as privilege, confidentiality, conflicts, disputes, and negotiating settlements.
Originally presented: Nov 2021 Advanced Patent Law Institute
Justin Cohen,
Holland & Knight LLP - Dallas, TX
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10.
Judicial Panel (Dec 2021)
Kat Li, Hon. Alan D Albright, Hon. Colm F. Connolly, Hon. Sean D. Jordan, Hon. Robert W. Schroeder III
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Session 10
—63 mins
Judicial Panel (Dec 2021)
Hear distinguished judges from the District Courts discuss their experiences hearing and trying patent cases.
Originally presented: Nov 2021 Advanced Patent Law Institute
Kat Li,
Kirkland & Ellis LLP - Austin, TX
Hon. Alan D Albright,
U.S. District Court, Western District of Texas - Waco, TX
Hon. Colm F. Connolly,
U.S. District Court, District of Delaware - Wilmington, DE
Hon. Sean D. Jordan,
U.S. District Court, Eastern District of Texas - Plano, TX
Hon. Robert W. Schroeder III,
U.S. District Court, Eastern District of Texas - Texarkana, TX
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11.
Women in IP: The Practice of Law in the New Normal (Dec 2021)
Ann LaFeir, Vanessa P. Bailey, Connie Powell, W. Allen Powell
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Session 11
—59 mins
Women in IP: The Practice of Law in the New Normal (Dec 2021)
There is no doubt that the pandemic has generated permanent changes in the practice of law. This discussion dives into some of these changes and how they have impacted how attorneys work to provide services to their clients.
Originally presented: Nov 2021 Advanced Patent Law Institute
Ann LaFeir,
USAA - San Antonio, TX
Vanessa P. Bailey,
Amazon - Washington, DC
Connie Powell,
Baylor University School of Law - Waco, TX
W. Allen Powell,
Fletcher Yoder, P.C. - Houston, TX
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12.
Which Way Now with the U.S. Patent Office Policies? (Dec 2021)
Joe Matal, David W. Jones, Teresa Stanek Rea, Robert Greene Sterne
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Session 12
—45 mins
Which Way Now with the U.S. Patent Office Policies? (Dec 2021)
The former Director of the USPTO Andrei Iancu implemented many new rules and procedures at the USPTO governing matters such as eligible subject matter, discretionary limits on access to PTAB review, and what types of art or amendments can be considered in USPTO proceedings. But very few of these rules were adopted as regulations, much less enacted into law. What direction will the new Administration take with these policies—and where should it go with them?
Originally presented: Nov 2021 Advanced Patent Law Institute
Joe Matal,
Haynes and Boone, LLP - Washington, DC
David W. Jones,
High Tech Inventors Alliance - Washington, DC
Teresa Stanek Rea,
Crowell & Moring, LLP - Washington, DC
Robert Greene Sterne,
Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
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13.
Section 101 Update and Practice Tips (Dec 2021)
Steve Borgman, Michael W. Piper, Gina N. Shishima, Janice Le Ta
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Session 13
—60 mins
Section 101 Update and Practice Tips (Dec 2021)
Courts continue to grapple with the application of Section 101. This panel examines recent court decisions and developments at the U.S. Patent Office on subject matter eligibility as applied to software, hardware, and life sciences technology. Hear practice tips for litigators and prosecutors and provide insights on what the future may hold.
Originally presented: Nov 2021 Advanced Patent Law Institute
Steve Borgman,
Kilpatrick Townsend & Stockton LLP - Houston, TX
Michael W. Piper,
Conley Rose, PC - Plano, TX
Gina N. Shishima,
Norton Rose Fulbright - Austin, TX
Janice Le Ta,
Perkins Coie LLP - Austin, TX
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14.
Eligible Subject Matter in Two Realms: Practical Tips for U.S. and EPO Filings (Dec 2021)
Caelia Bryn-Jacobsen, Christopher J. Palermo
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Paper
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30 pgs
Paper
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3 pgs
Session 14
—30 mins
Eligible Subject Matter in Two Realms: Practical Tips for U.S. and EPO Filings (Dec 2021)
Decision G 0001/19 of the European Patent Office’s Enlarged Board of Appeal cast new light on the EPO’s decision framework for resolving the patentability of computer-related inventions. This presentation explores the EPO’s approach to eligible subject matter in high-tech cases, contrasts it with the U.S. examining guidance, questions whether U.S. decisions like Yu v. Apple Inc. signal that the U.S. has reached harmony with the EPO, and reviews drafting considerations for applications destined for multilateral filing.
Originally presented: Nov 2021 Advanced Patent Law Institute
Caelia Bryn-Jacobsen,
Kilburn & Strode LLP - London, United Kingdom
Christopher J. Palermo,
Baker Botts - Austin, TX
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15.
Ethics in Negotiation (Dec 2021)
Jayme Partridge
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Session 15
—45 mins
Ethics in Negotiation (Dec 2021)
Examine the laws and ethics rules that govern the conduct of attorneys during negotiations. Utilizing hypothetical and interactive scenarios, the speakers illustrate how these laws and rules apply to negotiations.
Originally presented: Nov 2021 Advanced Patent Law Institute
Jayme Partridge,
Fish & Richardson P.C. - Houston, TX
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16.
Licensing (Dec 2021)
Edward A. Cavazos
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Session 16
—29 mins
Licensing (Dec 2021)
An overview of key patent licensing concepts and practical pointers on drafting, negotiating and advising clients about patent license agreements.
Originally presented: Nov 2021 Advanced Patent Law Institute
Edward A. Cavazos,
Pillsbury Winthrop Shaw Pittman LLP - Austin, TX
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17.
Licensing Issues for Standard Essential Patents: Where Are We and What is Next? (Dec 2021)
David K. Djavaherian
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6 pgs
Session 17
—32 mins
Licensing Issues for Standard Essential Patents: Where Are We and What is Next? (Dec 2021)
Wireless communication standards, and other standardized technologies, are no longer unique to cellular handsets, but rather are proliferating throughout the economy. How do SEP licensing practices support, or inhibit, economic growth and innovation, and what can we do better to promote a level playing field for healthy competition?
Originally presented: Nov 2021 Advanced Patent Law Institute
David K. Djavaherian,
PacTech Law, P.C. - San Clemente, CA
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18.
Ethics Potpourri (Dec 2021)
David Hricik
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Session 18
—45 mins
Ethics Potpourri (Dec 2021)
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?
Originally presented: Nov 2021 Advanced Patent Law Institute
David Hricik,
Mercer University School of Law - Macon, GA