2022 Advanced Patent Law (Austin) eConference

Recent Developments in Claim Construction (Dec 2022)

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 2021-2022 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: Oct 2022 Advanced Patent Law Institute

Kenneth R. Adamo, Law Office of KRAdamo - Chicago, IL

Section 101 Update (Dec 2022)

Alice is growing up. Examine recent patent subject matter developments, including recent cases of interest. The panel also dives into the data and considers what trends may be discerned and what tips and tricks might be useful for patent prosecutors and litigators.

Originally presented: Oct 2022 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

Year in Review (Dec 2022)

A whirlwind tour of the year in patent law at the Federal Circuit.

Originally presented: Oct 2022 Advanced Patent Law Institute

Mark A. Lemley, Stanford Law School - Stanford, CA

Current Issues Around FRAND and SEPs (Dec 2022)

Four years ago, the DOJ announced the “New Madison" approach to intellectual property and antitrust disputes, arguing that SEPs holders should be entitled to injunctive relief like any other patent holder. Since then, some of those policies have been rolled back, but has the "New Madison" approach marched on, and what difference has it made, especially in Texas courts?

Originally presented: Oct 2022 Advanced Patent Law Institute

Brian Pandya, Duane Morris LLP - Washington, DC

View from the USPTO (Dec 2022)

Hear about the current priorities, programs, and initiatives underway at the Office.

Originally presented: Oct 2022 Advanced Patent Law Institute

Mysha W. Lubke, VMware - Austin, TX
Hope C. Shimabuku, Regional Director, U.S. Patent and Trademark Office, Texas Regional Office - Dallas, TX

Advanced Patent Drafting: Strategies and Tactics (Dec 2022)

Software patent eligibility continues to be uncertain, and USPTO data highlights the importance of preparing software patent applications for the 101 gauntlet during prosecution. In this session, learn about general drafting guidelines and preferences that may help further the likelihood of an application crossing the 101 finish line, and various procedural strategies to assist clients with efficient and cost-effective prosecution.

Originally presented: Oct 2022 Advanced Patent Law Institute

Jonathan Harder, Dickinson Wright - Austin, TX
Matthew G. Osterhaus, Fletcher Yoder, P.C. - Houston, TX
Erick S. Robinson, Spencer Fane LLP - Houston, TX

To Opt-Out or Not to Opt-Out of the UPC in Europe? (Dec 2022)

The new European Unified Patent Court is going to start in early 2023. It is high time for patentees to decide which patents to opt-out. The speakers discuss the pros and cons of the UPC and other considerations to take into account for the decision.

Originally presented: Oct 2022 Advanced Patent Law Institute

Jonathan Ball, Norton Rose Fulbright LLP - London, United Kingdom
Clemens Rübel, Norton Rose Fulbright - Munich, Germany

Foreign Service and Foreign Discovery (Dec 2022)

Examine the laws and rules that govern the processes of obtaining foreign service and foreign discovery for intellectual property litigation. Through this exploration of foreign service and foreign discovery in areas such as China, Japan, Taiwan, and Korea, the speakers illustrate practical considerations for those involved in intellectual property litigation involving foreign parties.

Originally presented: Oct 2022 Advanced Patent Law Institute

Jordan Garsson, Dickinson Wright PLLC - Austin, TX
Kevin Kudlac, Radulescu LLP - Austin, TX

The Ins and Outs of Patent Damages (Dec 2022)

An update on patent damages, including current hot-button issues that may (or may not) trigger limitations to damages testimony.

Originally presented: Oct 2022 Advanced Patent Law Institute

Jeanne M. Heffernan, Kirkland & Ellis LLP - Austin, TX
Leah Bhimani Buratti, Wittliff Cutter - Austin, TX
Aaron Gabriel Fountain, Morrison & Foerster LLP - Austin, TX
Shirley Webster, Ocean Tomo, LLC - Houston, TX

Judicial Panel (Dec 2022)

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

Originally presented: Oct 2022 Advanced Patent Law Institute

Sheila Kadura, The University of Texas System - Austin, TX
Hon. Colm F. Connolly, U.S. District Court, District of Delaware - Wilmington, DE
Hon. Derek T. Gilliland, U.S. District Court, Western District of Texas - Waco, TX
Hon. Dustin M. Howell, U.S. District Court, Western District of Texas - Austin, TX

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Originally presented: Oct 2022 Advanced Patent Law Institute

Practice and Issues before the PTAB (Dec 2022)

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.

Originally presented: Oct 2022 Advanced Patent Law Institute

Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
W. Todd Baker, Kirkland & Ellis LLP - Washington, DC
Hon. Amber L. Hagy, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Austin, TX
Hon. Miriam L. Quinn, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Dallas, TX

From PTAB to the Federal Circuit (Dec 2022)

Strategies in the PTAB to best position your case for success on appeal.

Originally presented: Oct 2022 Advanced Patent Law Institute

Debbie McComas, Haynes Boone, LLP - Dallas, TX
Angela M. Oliver, Haynes Boone, LLP - Washington, DC

Navigating IPR Estoppel at Trial (Dec 2022)

In California Institute of Technology v. Broadcom, the Federal Circuit held that estoppel under 35 U.S.C. § 315(e)(2) applies to any ground that was brought or could have been brought in an IPR. But the law is still unclear on whether estoppel applies to product prior art under 35 USC § 102(a) or 102(b) that is described by one or more patents and printed publications. This presentation explores the current state of the law and provides tips for navigating estoppel with respect to product prior art during litigation.

Originally presented: Oct 2022 Advanced Patent Law Institute

Paula Diane Heyman, McDermott Will & Emery - Austin, TX

Update on Privilege and Work Product Law in Patent Cases (Dec 2022)

This presentation analyzes the application of attorney-client privilege and attorney work product in patent cases, further exploring the intersection between business advice and legal advice.

Originally presented: Oct 2022 Advanced Patent Law Institute

David Tobin, Baker Botts - Dallas, TX

USPTO Disciplinary Decisions: Do this, Don’t do that! (Dec 2022)

A discussion of recent disciplinary decisions from the Office of Enrollment and Discipline at the USPTO, followed by observations designed to help practitioners avoid client grievances.

Originally presented: Oct 2022 Advanced Patent Law Institute

Jennifer Librach Nall, DLA Piper LLP - Austin, TX
Emily Pyclik, Baker Botts LLP - Austin, TX

Patent License Issues from the In-House Perspective (Dec 2022)

Key considerations in several common patent transaction models. The RPX patent aggregation and licensing model. Patent issues in IP agreements include indemnity clauses, limits of liability, IP ownership issues, and forum selection clauses.

Originally presented: Oct 2022 Advanced Patent Law Institute

Umesh M. Desai, AT&T Labs - Austin, TX
John D. Flynn, IBM Corporation - Austin, TX
Paul Reidy, RPX Corporation - Austin, TX

Litigation Funding for Patent Cases (Dec 2022)

Litigation funding has become common in commercial litigation throughout the U.S. and in Texas, including in patent cases. These speakers discuss how funding helps businesses and clients manage risk while bringing meritorious claims to trial, as well as trends, discovery issues, and ethical issues relating to funding. 

Originally presented: Oct 2022 Advanced Patent Law Institute

Michelle Eber, Validity Finance - Houston, TX
Natalie Alfaro Gonzales, Baker Botts - Houston, TX

Ethics in IP Practice  (Dec 2022)

This session describes recent cases involving conflicts of interest in IP practice, how to comply with Rule 11 without violating the prohibition against ex parte contacts with represented persons, and using engagement letters to reduce risk and uncertainty over several issues. 

Originally presented: Oct 2022 Advanced Patent Law Institute

David Hricik, Mercer University School of Law - Macon, GA

Generative AI and the Ethics Involved (Jul 2023)

We explore the complex intersection between the development and use of generative AI and the ethical considerations that arise as a result. Topics include ethical concerns surrounding the use of generative AI in healthcare, customer relationship management, and  financial institutions, the potential biases that may be introduced into generative AI systems, and the need for transparency and accountability in the development and deployment of generative AI systems. We also discuss the potential benefits of generative AI, such as its ability to enhance creativity and innovation, and the role that regulation and governance can play in ensuring that these benefits are realized in an ethical and responsible way. This session provides a valuable opportunity to explore the various implications of generative AI and the ways in which it can impact society.

Originally presented: May 2023 Technology Law Conference

Rajesh Damarapati, Digital Alpha Platforms - New York, NY
Devika Kornbacher, Clifford Chance - New York, NY