Thursday, December 10, 2015
7:30 AM |
Registration Opens
Includes Continental Breakfast |
8:20 AM |
Welcoming Remarks [AUDIO] |
8:30 AM0.50 hr |
Developments at the PTO [AUDIO]Opening this year’s Institute is Russell Slifer, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office. Mr. Slifer will review the programs under way to improve PTO procedures and patent quality.
Russell Slifer, United States Patent and Trademark Office
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9:00 AM0.50 hr |
Claim Construction Post-Teva [AUDIO]
This session will examine the impact of the Supreme Court’s Teva decision on claim construction and will address what attorneys can do to exploit Teva. It will also examine whether district court judges have changed their approach to claim construction as a result of Teva. It will consider the significance of the PTO’s continued application of the broadest reasonable interpretation (BRI) standard in PTAB proceedings. Edward R. Reines, Weil, Gotshal & Manges LLP || Presentation [PDF] |
9:30 AM1.50 hr |
Navigating, Litigating and Even Avoiding Eligible Subject Matter Questions [AUDIO]Eighteen months after Alice and Mayo, both their progeny and USPTO policy have changed the landscape of patent-eligible subject matter. What trends and tensions exist in the current Federal Circuit law? How are litigators managing eligibility disputes at the district court level, particularly in light of different rules and outcomes in different venues? How are prosecutors responding to the changes? This panel will explore these issues, over the life cycle of a patent. Moderator: Panelists: |
11:00 AM |
Break |
11:15 AM0.75 hr |
Drafting and Attacking Pleadings Under the New Standards [AUDIO]Leading patent litigators will debate such questions as:
Michael C. Hendershot, Paul Hastings LLP |
Presiding Officer:
Gwilym Roberts, Kilburn & Strode LLP
12:00 PM |
BreakPick up lunch |
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12:30 PM0.50 hr |
Lunch Keynote: The Rt. Hon. Professor Sir Robin Jacob:
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1:00 PM |
Break |
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1:15 PM0.50 hr |
Comparative Patent Litigation: Germany Versus the United States [AUDIO]
Germany has become a popular choice for patentees seeking a venue for patent litigation outside the United States. This panel will explore some of the major differences between United States and German patent litigation, with an emphasis on what attorneys and clients from each jurisdiction often find surprising about the other. Lisa Buccino, SAP |
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1:45 PM0.50 hr |
Joint, Divided, and Indirect Infringement [AUDIO]When there’s no direct infringer, what remedies remain? Steve Carlson will discuss the Supreme Court’s Commil ruling, governing mental state for inducement, and the Federal Circuit’s en banc ruling in Suprema, governing ITC enforcement of indirect infringement claims, among the other recent twists in this important topic. Steven C. Carlson, Kasowitz Benson Torres & Friedman LLP |
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2:15 PM1.00 hr Bias Elimination |
Blocking Bias [AUDIO]
Shelley Correll will describe her groundbreaking research into redesigning workplace structures and practices to be simultaneously more inclusive and more innovative and will then discuss, with a panel of tech industry insiders, individual strategies and organizational solutions for minimizing gender bias. Shelley J. Correll, The Clayman Institute for Gender Research at Stanford University || Presentation [PDF] || Bias/Block Toolkit || Creating a Level Playing Field [Video] Panelists: |
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3:15 PM |
Break
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3:30 PM0.50 hr |
Asset Protection in a Changing Environment [AUDIO]Given recent developments, what are the pros and cons of patent vs. copyright vs. trade secrets in the protection of an IP portfolio? Does the answer differ depending on whether you are protecting innovations in software, the life sciences, or other fields? What can you do in the creation of your assets to ensure that they survive the test of time and changing law? David Simon, Salesforce |
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4:00 PM1.00 hr |
Judges Panel [AUDIO]Leading District Court judges discuss cutting-edge patent litigation issues, including creative ways they are managing cases in an evolving patent landscape. Moderator: Panelists: |
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5:00 PM |
Closing Remarks |
Friday, December 11, 2015
Presiding Officer:
David S. Bloch, Winston & Strawn LLP
8:00 AM |
Conference Room Opens & Continental Breakfast |
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8:30 AM1.50 hr |
The Rise of PTAB: Hot topics and Strategies [AUDIO]The current status and hot issues affecting proceedings before the PTAB will be discussed from a variety of viewpoints. Topics to be addressed include trends in PTAB proceedings, recent Federal Circuit decisions and the proposed new rules, with a discussion of how these developments are affecting AIA trials and patent litigation strategy. Moderator: Panelists: |
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10:00 AM0.50 hr |
Patent Reform [AUDIO]Over the last few years, state and federal lawmakers have been engaged in discussing, investigating, drafting, advancing, and, at the state level, enacting reforms aimed at curbing patent litigation abuses. This session will discuss where reform has advanced and stalled, and what to expect in the coming year. Colleen Chien, Santa Clara Law School || Presentation [PDF] |
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10:30 AM |
Break |
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10:45 AM0.75 hr |
Prosecution: Functional Claiming [AUDIO]What is the problem with functional claims? What is a functional claim? Do I want to write one? Have I written one whether I want to or not? And if I have, what happens? Mark Lemley, Stanford Law School; Durie Tangri LLP Panel Presentation [PDF]Software Patents and the Return of Functional Claiming [SSRN] |
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11:30 AM0.50 hr |
§112 Implications for Genus Claims [AUDIO]This session will consider challenges to meeting the written description and enablement requirements of Section 112, in the life sciences and beyond. Lisa Larrimore Ouellette, Stanford Law School || Presentation [PDF] |
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12:00 AM0.50 hr Ethics |
ETHICS: Information Flow in Patent Litigation — Ethical Considerations, Prosecution Bars, Acquisition Bars and Protective Orders [AUDIO]This session takes a pragmatic look at how to balance ethical considerations regarding information flows in patent litigation. How do parties reasonably share confidential information with adversaries? What limitations are placed on litigation and prosecution counsel? How can litigation counsel share with competitor’s counsel in the context of joint defense? The answers lie in carefully crafted patent prosecution bars, patent acquisition bars and protective orders, and careful party-by-party management of disclosures. Gabriel M. Ramsey, Orrick, Herrington & Sutcliffe LLP || Presentation [PDF] |
Presiding Officer:
Ronald S. Laurie, Inflexion Point Strategy, LLC
12:30 PM |
Networking Lunch |
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1:15 PM0.50 hr Ethics |
Ethics: Fee Shifting [AUDIO]A look at the implications of post-Octane fee shifting on the attorney-client relationship. Clement S. Roberts, Durie Tangri LLP || Presentation [PDF] |
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1:45 PM1.00 hr |
Antitrust and Licensing Issues [AUDIO]This session will examine issues at the intersection of patent and antitrust law. It will examine the challenges of FRAND licensing for standards essential patents, the impact of the IEEE’s revised patent policy, and the implications of the Supreme Court’s decision earlier this year in Kimble v. Marvel. Finally, it will consider the emergence of China as an important arena for FRAND-related antitrust enforcement and litigation. Moderator: Panelists: |
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2:45 PM |
Break |
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3:00 PM0.50 hr |
Patent Portfolio Management: Claim Drafting and Prosecution Strategies in Uncertain Times [AUDIO]This session will explore strategies for prosecution, claim drafting, and overall patent portfolio management in view of uncertainties introduced by the Supreme Court Alice decision, decisions from the Federal Circuit and Patent Trial and Appeal Board, and new guidelines from the U.S. Patent and Trademark Office. Douglas Luftman, Lecorpio |
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3:30 PM0.50 hr |
Current Trends in Patent Damages [AUDIO]This session will examine the up-to-the-minute state of patent damages including the impact of the Federal Circuit’s recent decision in Ericsson v. D-Link and whether it has broader implications for use of the Georgia-Pacific factors. Consideration will also be given to the Lifetech case, which held that it is possible to “induce yourself” to infringe under Section 271, and the latest on extra-territoriality and damages from decisions such as Carnegie Mellon University v. Marvell. This session will also explore recent Daubert motion practice as well as trends in joining other claims such as infringement of design patents, trade secret claims and business torts in order to increase current limits on damages. G. Hopkins Guy, III, Baker Botts LLP |
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4:00 PM0.50 hr |
Transborder Issues and Exhaustion [AUDIO]This session will examine infringement of articles made and sold outside the United States in the wake of Carnegie Mellon v. Marvell. It will describe how to develop manufacturing and distribution strategy to minimize patent exposure. Sasha Rao, Maynard Cooper & Gale || Presentation [PDF] |
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4:30 PM |
Closing Remarks |
Click here for rich summaries of Advanced Patent Law Institute sessions, with links to detailed PPTs.
Below is a link to the program that was mailed in late October.