Written by Yang Ma
UC Berkeley Law, LL.M. Candidate
Class of 2025
I’m excited to share that I had the incredible opportunity to attend the 25th Annual Berkeley-Stanford Advanced Patent Law Institute (APLI), a two-day event at the end of year 2024 that brings together patent practitioners, academics, policymakers, and experts to discuss key developments in patent law.
Key Highlights & Takeaways
- Year in Review: Professor Lemley’s Big-Picture Perspective
One of the most valuable sessions was the year-in-review presentation by Professor Mark Lemley. This year, he took it a step further, delivering a “Year and Quarter Century in Review”, which provided a vivid, big-picture perspective on the evolution of U.S. patent law.
He described how, for the first 25 years, patent law was in constant turmoil, shaped by major Supreme Court rulings and Federal Circuit dissents. However, in the past five years, the system has stabilized—evidenced by fewer Supreme Court patent rulings, fewer en banc Federal Circuit decisions, and greater predictability in cases like Alice (subject matter eligibility).
Professor Lemley then walked us through his 49-page report, covering every key area of patent law, including:
- Subject matter eligibility (§ 101)
- Patent definiteness (§ 112)
- Novelty & obviousness (§ 102 & § 103)
- Claim construction, infringement, and doctrine of equivalents
- Patent remedies & damages
For me, as an LL.M. student taking Patent Law and Patent Litigation courses at Berkeley, this session was a perfect complement to my coursework. It reactivated my understanding of foundational principles while introducing me to the latest trends in case law—making it one of the most valuable aspects of the event.
- AI and its Impact on Substantive Patent Law
A standout discussion was delivered by Professor Colleen Chien from Berkeley Law, focusing on how AI is reshaping substantive patent law—particularly inventorship, obviousness, prior art, and validity under § 112.
I found the inventorship debate especially thought-provoking. The prevailing view is that AI cannot be an inventor, but AI-assisted inventions are patentable as long as a human makes a significant contribution to conception or reduction to practice. This raises fascinating questions:
- What qualifies as “significant” human input?
- Should AI-generated ideas be treated differently than AI-assisted discoveries?
One thing is clear: AI is transforming every aspect of patent law, and courts, patent offices, and policymakers must adapt quickly.
Such a discussion brings me back to the class of The Law and Governance of AI, where Professor Chien guided us debate around many policy issues and considerations around generative AI.
- The rise of Amazon’s APEX Program
Another eye-opening session explored Amazon’s APEX (Amazon Patent Evaluation Express) program—a streamlined patent enforcement process on Amazon’s marketplace.
Unlike district court litigation, APEX is much faster, cheaper, and requires minimal procedural steps:
- Amazon appoints a neutral third-party evaluator (a private attorney).
- Both parties pay $4,000, which is refunded to the winner.
- Each side submits written briefs—with no discovery, no hearings, and no depositions.
- A decision is issued within 14 days.
However, APEX has its downsides—a lack of transparency and the risk of being overturned by district court declaratory judgments. But one clear advantage is that it is particularly effective against foreign sellers, as it allows faster enforcement without needing traditional litigation.
APEX was officially launched in 2022 and is now becoming a preferred enforcement tool for patent holders. Some panelists even predicted that other e-commerce platforms like eBay and Alibaba might adopt similar programs.
- Global Patent Remedies: Monetary Damages & Injunctive Relief
Another insightful panel compared how patent remedies—particularly damages and injunctions—vary across major different jurisdictions (U.S., UPC, China).
- U.S.: Injunctions are harder to obtain due to eBay v. MercExchange (2006), especially since 60% of all U.S. patent litigation is NPE-driven (88% in tech cases). Courts are more willing to grant injunctions to competitors rather than NPEs.
- Europe (UPC & Germany): Injunctions are widely available, regardless of whether the plaintiff is an NPE. Damages are much lower than the U.S.
- China: Injunctions are common but balanced with public interest concerns—courts factor in the economic impact on domestic manufacturers when making decisions.
The panelists also discussed the Federal Circuit’s upcoming en banc decision in EcoFactor v. Google—a case that could reshape how damages are calculated in patent cases. Many are concerned that damages experts, with their compelling credentials and confidence, may be persuading juries too easily, leading to inflated damages awards.
This struck a chord with me because I recently deposed a damages expert in my Patent Litigation course, where we worked with real-world experts in a simulation. Seeing firsthand how confident these experts are and how their financial models and industry terms can reshape the thoughts of lay people, I completely understood the panelists’ concerns.
- PTAB Trends: Institutions and Estoppel
The PTAB panel covered the latest trends in IPR institution rates, discretionary denials, and director review.
- Institution rates have stabilized at ~67%.
- Fewer discretionary denials now exist due to safe harbors like Sotera stipulations and compelling merits exceptions.
- Director review is shaping PTAB policy, with key cases clarifying § 311(b) preclusion, prior art species-genus anticipation, and Fintiv denials.
- Apple v. Vidal is currently challenging the legality of Fintiv denials, which could force formal rulemaking or even eliminate the policy under a new USPTO director.
This discussion expanded my knowledge of PTAB practice, which isn’t typically explored in depth in law school. It was an excellent supplement to my coursework and gave me a practical perspective on how PTAB policies impact patent litigation.
- A View from the Bench: Insights from Judges
Lastly, the panel featuring federal judges was unmissable—anyone practicing or planning to practice patent litigation should pay close attention to what judges say.
Key takeaways included:
- Timing is everything. Motions related to claim construction and § 101 should be filed as early as possible. Judges prefer early case resolution rather than last-minute disputes.
- Know your judge. Research their case management preferences—some prioritize Markman hearings and motions, while others prefer cases to play out.
- Be strategic in argument selection. This has been repeatedly emphasized in my Patent Litigation course, where we’re given an 8-minute limit for oral argument simulations—focus on the strongest points and avoid weaker arguments unless the judge raises them.
- Jury persuasion matters. Judges reiterated what my Oral Advocacy professors emphasize: tell a relatable story, simplify complex patent issues, and make it easy for jurors to follow.
Patent trials are complex, but the best attorneys know how to simplify arguments for both judges and juries.
Final Thoughts: A Valuable Experience
Overall, APLI was a distinctly practical platform—not just for practitioners to exchange insights, but also for law students like me to engage with the latest developments in U.S. and international patent law. It gave me new perspectives, reinforced my coursework, and deepened my understanding of real-world patent practice.
I’m incredibly grateful for the opportunity to attend and look forward to applying these insights as I continue my journey in patent law.