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- Recent Developments in Claim Construction
- Year in Review
- Patent Litigation Funding
- In-House Counsel Panel
- PTAB Topic: Discretionary Denial
- Judicial Panel
- Perspectives from In-House IP Counsel
- Ethics and Engagement Letters and Retention Documents
Includes: Video Audio Paper Slides No Materials
- Total Credit Hours:
- 11.75 | 3.50 ethics
- Credit Info
- TX, CA, PA
- TX MCLE credit expires: 12/31/2025
Preview Sessions
Show session details
Kenneth R. Adamo
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Session 1
—55 mins
1.00
Recent Developments in Claim Construction (Jan 2025)
The foundation of patent application preparation/prosecution, district court trials, Federal Circuit appeals, and AIA post-grant review proceedings, is claim construction. Review the important 2023-2024 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." Discuss adherence to the APA by the PTAB under various circumstances. And, discuss the claim construction interface between an IPR and a parallel district court proceeding.
Originally presented: Nov 2024 Advanced Patent Law Institute
Kenneth R. Adamo,
Law Office of KRAdamo - Chicago, IL
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Juanita DeLoach, Michelle Eber, Mark Nelson, Kirstine Rogers
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Session 2
—44 mins
0.75 | 0.25 ethics
Patent Litigation Funding (Jan 2025)
The world of litigation funding is becoming more established and complex. The panel discusses some of the latest developments in how courts have addressed disclosure and privilege issues, the impact of funding on litigation strategy, the cross-collateralization of patent portfolios, and how newly developing arenas of contingent risk insurance and other capital solutions are impacting the litigation funding world.
Originally presented: Nov 2024 Advanced Patent Law Institute
Juanita DeLoach,
Barnes & Thornburg LLP - Dallas, TX
Michelle Eber,
West U Capital - Houston, TX
Mark Nelson,
Barnes and Thornburg - Dallas, TX
Kirstine Rogers,
Certum Group - Plano, TX
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Andrew Saul, Steve Borgman
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Session 3
—31 mins
0.50
Alice at 10: A Section 101 Update (Jan 2025)
It’s been 10 years since Alice was decided. Hear a discussion on recent cases and trends in the courts and the USPTO involving Section 101, as well as some of the highlights (or lowlights) in the 10 years since Alice. In addition, tips for litigation and prosecution are provided.
Originally presented: Nov 2024 Advanced Patent Law Institute
Andrew Saul,
Kilpatrick Townsend & Stockton LLP - Atlanta, GA
Steve Borgman,
Kilpatrick Townsend & Stockton LLP - Houston, TX
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Natalie Alfaro Gonzales, Nick Schuneman
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Session 4
—48 mins
0.75
Globalization of Patent Law (Jan 2025)
Not long ago, a US patent attorney could effectively represent clients despite blissful ignorance of foreign patent law. That is changing, quickly. The speakers discuss the increasing internationalization of patent law, evidenced by developments such as the European Unified Patent Court, US case law awarding damages for foreign infringement of US patents, and international litigation and regulation in the area of standard essential patents.
Originally presented: Nov 2024 Advanced Patent Law Institute
Natalie Alfaro Gonzales,
Yetter Coleman LLP - Houston, TX
Nick Schuneman,
McDermott Will & Emery LLP - Austin, TX
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Alexa J. Hunter
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Session 5
—46 mins
0.75 | 0.75 ethics
How IP Practitioners Were Disciplined in 2023 – and How You Could Be Too (Jan 2025)
In addition to state bar rules, patent and trademark attorneys are also subject to the rules of conduct set out by the USPTO's Office of Enrollment and Discipline (OED). The speaker discusses the relevant ethical rules under the Code of Federal Regulations, as well as case studies from practitioners disciplined by the OED in 2023.
Originally presented: Nov 2024 Advanced Patent Law Institute
Alexa J. Hunter,
Kilpatrick Townsend & Stockton LLP - Denver, CO
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Randy J. Curato
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Session 6
—59 mins
1.00
A View from ALAS on AI in Law Practice (Jan 2025)
This presentation addresses the benefits, risks, and professional responsibility considerations of using AI in the practice of law.
Originally presented: Nov 2024 Advanced Patent Law Institute
Randy J. Curato,
ALAS, Ltd. - Chicago, IL
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David W. O'Brien, Hon. Christopher (Kit) Crumbley, Hon. Amber L. Hagy, Hon. Kristi L. R. Sawert
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Session 7
—46 mins
0.75
Discretionary Denial of Post-Grant Trial (Jan 2025)
The AIA affords the USPTO Director significant discretion not to institute trial even where an IPR or PGR petition satisfies statutory standards for institution. Director guidance and the Board’s multifactor tests for the exercise of discretion have evolved significantly, and formal regulations have now been proposed. A panel of current and former ALJs discusses this critical hurdle for petitioners and the opportunity for patent owners.
Originally presented: Nov 2024 Advanced Patent Law Institute
David W. O'Brien,
Haynes and Boone, LLP - Austin, TX
Hon. Christopher (Kit) Crumbley,
Partner, Bracewell - Austin, TX
Hon. Amber L. Hagy,
U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Austin, TX
Hon. Kristi L. R. Sawert,
Principal, Fish & Richardson P.C. - Washington, DC
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Paige Arnette Amstutz, Hon. Alan D Albright, Hon. Beth Labson Freeman, Hon. Gregory B. Williams
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Session 8
—65 mins
1.00 | 0.50 ethics
Judicial Panel (Jan 2025)
Gain insight from distinguished District Court Judges from across the nation regarding their experiences hearing and trying patent cases.
Originally presented: Nov 2024 Advanced Patent Law Institute
Paige Arnette Amstutz,
Scott Douglass & McConnico LLP - Austin, TX
Hon. Alan D Albright,
U.S. District Court, Western District of Texas - Waco, TX
Hon. Beth Labson Freeman,
U.S. District Court Northern District of California - San Jose, CA
Hon. Gregory B. Williams,
U.S. District Court Delaware - Wilmington, DE
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Leah Bhimani Buratti, Anuj Dharia, Sheila Kadura, Eman Sojoodi
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Session 9
—60 mins
1.00 | 0.50 ethics
Perspectives from In-House IP Counsel (Jan 2025)
The panel features three in-house IP counsel sharing their perspectives on a variety of topics including: recent challenging IP issues they’ve confronted, addressing how they’re navigating or benefitting from use of AI, and describing what a successful outside counsel relationship looks like to them.
Originally presented: Nov 2024 Advanced Patent Law Institute
Leah Bhimani Buratti,
Botkin Chiarello Calaf - Austin, TX
Anuj Dharia,
Lattice Semiconductor - Austin, TX
Sheila Kadura,
The University of Texas System - Austin, TX
Eman Sojoodi,
Dell Technologies - Round Rock, TX
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Tommy Martin
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Session 10
—27 mins
0.50
Increasing Popularity of “Schedule A” Litigations (Jan 2025)
Complaints seeking temporary restraining orders against groups of unidentified infringers have become increasingly popular. They are particularly well suited for large-scale infringement of design patents and trademarks on e-commerce platforms.
Originally presented: Nov 2024 Advanced Patent Law Institute
Tommy Martin,
Baker Botts - Washington, DC
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Kevin Kudlac
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Session 11
—45 mins
0.75 | 0.75 ethics
Patent Infringement and Products (Jan 2025)
Learn about pre-filing investigations and their post-filing implications. Discussion includes meeting Rule 11 and patent pleading obligations, maintaining attorney-client privilege and work product, and zealously representing your client.
Originally presented: Nov 2024 Advanced Patent Law Institute
Kevin Kudlac,
Radulescu LLP - Austin, TX
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Mark A. Lemley
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Session 12
—62 mins
1.00
Year in Review (Jan 2025)
A whirlwind tour of the year in patent law at the Federal Circuit.
Originally presented: Nov 2024 Advanced Patent Law Institute
Mark A. Lemley,
Stanford Law School - Stanford, CA
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Sarah D. Eddy
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Session 13
—29 mins
0.50
Red Flag Warning: Patent Stakeholders Beware Shifting Double Patenting and Terminal Disclaimer Practice (Jan 2025)
Both the courts and the USPTO are under pressure to address perceived problems with non-statutory obviousness-type double patenting rejections and terminal disclaimer practice. Let’s navigate the shifting sands of patent practice in view of the Federal Circuit’s wave-making obviousness-type double patenting decision last summer in In re: Cellect, LLC and the USPTO’s recent tsunami of a proposed rule that would upend current terminal disclaimer practice in response to obviousness-type double patenting rejections.
Originally presented: Nov 2024 Advanced Patent Law Institute
Sarah D. Eddy, Ph.D.,
Norton Rose Fulbright US LLP - Austin, TX
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John M. Golden
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Session 14
—39 mins
0.75
Analogous Arts in the Courts and at the USPTO (Jan 2025)
References to analogous arts doctrine in USPTO Board opinions apparently spiked upwards following the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). This presentation discusses the state of analogous arts doctrine in the wake of KSR and its significance for patent law practice.
Originally presented: Nov 2024 Advanced Patent Law Institute
John M. Golden,
The University of Texas School of Law - Austin, TX
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David Hricik
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Session 15
—45 mins
0.75 | 0.75 ethics
Ethics and Engagement Letters and Retention Documents (Jan 2025)
This presentation addresses the ethical issues that can be addressed in engagement letters and related documents, including clarifying client identity, ending of a representation, and related matters. It will include suggested best practices and language that courts have found effective to avoid various problems.
Originally presented: Nov 2024 Advanced Patent Law Institute
David Hricik,
Mercer Law School - Macon, GA