By Andrew Cohen
Few areas of legal practice are more complex than patent law, and few events help attorneys navigate that tricky terrain better than the annual Silicon Valley Advanced Patent Law Institute.
“It’s a unique gathering that works really well,” said Berkeley Law alum Lee Van Pelt ’93, a partner at Van Pelt, Yi & James. “In the planning stage, they gather some of Silicon Valley’s best attorneys to discuss what topics are most important to their work. A committee then winnows those down and what emerges is relevant, cutting-edge information we need to know.”
Organized by the Berkeley Center for Law & Technology (BCLT) and the Stanford Program in Law, Science and Technology, this year’s conference is December 12-13 in East Palo Alto. It will convene a high-profile group of judges, professors, litigators, patent attorneys, and senior IP counsel from major corporations. For Berkeley Law’s intellectual property program—ranked No. 1 among U.S. law schools in 15 of the past 16 years—the event reflects a concerted effort to reach out to attorneys in Silicon Valley.
“That’s where most leading patent lawyers practice, including many of our alumni,” said BCLT Executive Director Robert Barr. “The more we can interact with our community of attorneys in law firms and companies in the valley, the stronger those relationships become. This is the most practitioner-oriented event we do, and it’s a great opportunity to shed light on recent case law developments and discuss effective strategies for patent prosecution and litigation.”
Van Pelt—named to the Daily Journal list of California’s top 25 patent strategists and the Intellectual Asset Management list of the world’s leading IP strategists—will give a presentation on “functional claiming.” Patent examiners view a claim as functional when it recites a feature by what it does rather than by what it is. When claims merely describe a problem to be solved or a result achieved by the invention, the boundaries of that claim are often unclear.
“There’s a lot of concern about people inventing something specific and claiming something very broad, meaning they try to claim any way of doing something instead of the specific way they invented it,” Van Pelt said. “How much of that should people get away with?”
Instructive insights
Julie Holloway ’98, a partner at Latham & Watkins in San Francisco, will give the event’s first presentation with Hogan Lovells’ Christian Mammen. Hailed as a top IP litigator by the Legal 500 U.S. and Daily Journal and named to The Recorder’s 2013 list of “Top Women Leaders in Tech Law,” Holloway will discuss whether the Federal Circuit should give district court patent claim construction findings any deference and, if so, on what issues.
The Federal Circuit currently reviews claim constructions de novo, meaning from scratch. Therefore, if it reverses a district court’s claim construction and remands, a potential result is that all the work up through trial must be re-done.
“Many practitioners think it would be better if the Federal Circuit gave some deference to the district court’s claim construction,” Holloway said. “The thinking is that there would be less waste of district court and party resources, and better claim construction given the district court’s opportunity to gain deeper knowledge of the technology. Others are concerned that deference will lead to delays in claim construction as well as undue reliance on experts…and inconsistent outcomes.”
Other Berkeley Law alumni presenters include North Weber & Baugh partner Bradley Baugh ’80, Durie Tangri partner Daralyn Durie ’92, Cisco Vice President of Intellectual Property Dan Lang ’93, Stanford Law Professor Mark Lemley ’91, Google senior patent counsels Suzanne Michel ’93 and Tim Porter ’93, Wilmer Hale partner Keith Slenkovich ’87, and RPX Executive Vice President Mallun Yen ’95.
“Lawyers in this field are facing very complicated and unresolved issues in such areas as the patentabilty of software-related inventions and medical diagnostics, remedies for patent infringement, and the implementation and interpretation of the America Invents Act,” Barr said. “It’s often hard to understand the latest case law and how to advise clients in the face of the uncertainty. I think that’s why this event is so well attended and so well received, because it illuminates many of those issues.”