Agenda

Thursday, December 10, 2015

Presiding Officer:
Robert J. Goldman, Ropes & Gray LLP 
 

7:30 AM

Registration Opens

Includes Continental Breakfast

8:20 AM

Welcoming Remarks [AUDIO]

8:30 AM

0.50 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
 

9:00 AM

0.50 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 AM

1.50 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:
Michael J. Bettinger, Sidley Austin LLP

Panelists:
John Dragseth, Fish & Richardson P.C. 
Heidi Keefe, Cooley LLP
Peter Menell, UC Berkeley School of Law, BCLT || Presentation [PDF]
Christopher J. Palermo, Hickman Palermo Becker Bingham LLP

The 101 of Section 101 [PDF]

11:00 AM

Break

11:15 AM

0.75 hr

Drafting and Attacking Pleadings Under the New Standards [AUDIO]

Leading patent litigators will debate such questions as:

  • How will the new pleading standards impact pre-filing investigations and initial preparation for all cases?
  • With Form 18 (nearly) gone, what must be included in a patent infringement complaint?
  • Do Alice and its progeny impact how you should draft a complaint?
  • What are the pleading standards for affirmative defenses?
  • What is the procedure to attack a claim or defense as insufficiently pled?
  • Will the amendments to the Federal Rules limit discovery into possible or proposed claims or defenses?
  • Will forum selection be more important than ever?

Michael C. Hendershot, Paul Hastings LLP
Richard S. J. Hung, Morrison & Foerster LLP
Christian E. Mammen, Hogan Lovells LLP

Panel Presentation [PDF]

 
Presiding Officer:
Gwilym Roberts, Kilburn & Strode LLP

12:00 PM

 

Break

Pick up lunch

12:30 PM

0.50 hr

 

Lunch Keynote: The Rt. Hon. Professor Sir Robin Jacob:
The Future of IP Litigation in Europe with the (Likely) Coming of the Unified Patent Court [AUDIO]

Sir Robin, a retired Lord Justice of the Court of Appeal and Professor of IP law at University College London, is widely regarded as one of the UK’s, and Europe’s, leading intellectual property judges of recent times. He will discuss the creation of the court, its procedures, judge selection, forum shopping, speed, cost, and why he thinks it might work.

1:00 PM

 

Break

1:15 PM

0.50 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
Eugene M. Paige, Keker & Van Nest LLP || Presentation [PDF]
Brad Waugh, Intel

1:45 PM

0.50 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

2:15 PM

1.00 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:
Mitchell Gaynor, Juniper Networks
Laurie Hane, VMWare
Deanna Kwong, Hewlett-Packard

3:15 PM

 

Break

3:30 PM

0.50 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

4:00 PM

1.00 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:
Karen I. Boyd, Turner Boyd LLP

Panelists:
Hon. Richard G. Andrews, US District Court, District of Delaware
Hon. James Donato, US District Court, Northern District of California
Hon. Rebecca R. Pallmeyer, US District Court, Northern District of Illinois

 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

8:30 AM

1.50 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:
Sean DeBruine, Kilpatrick Townsend & Stockton LLP

Panelists:
Eric Lamison, Cisco Systems, Inc.
David O’Brien, Haynes and Boone, LLP
Teresa (Terry) Stanek Rea, Crowell & Moring LLP

Panel Presentation [PDF]

10:00 AM

0.50 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]

10:30 AM

 

Break

10:45 AM

0.75 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
Lee Van Pelt, Van Pelt, Yi & James LLP

Panel Presentation [PDF]
Software Patents and the Return of Functional Claiming [SSRN]

11:30 AM

0.50 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]

12:00 AM

0.50 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

1:15 PM

0.50 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]

1:45 PM

1.00 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:
Robert D. Fram, Covington & Burling LLP || Presentation [PDF]

Panelists:
David Killough, Microsoft Corp. || Presentation [PDF]
Kurt M. Kjelland, Qualcomm || Presentation [PDF]
Scott Sher, Wilson Sonsini Goodrich & Rosati || Presentation [PDF]

2:45 PM

 

Break

3:00 PM

0.50 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
Rajiv Patel, Fenwick & West LLP
Julie Stephenson, HIPLegal LLP

Panel Presentation [PDF]

3:30 PM

0.50 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
Keith Slenkovich, WilmerHale

Panel Presentation [PDF]

4:00 PM

0.50 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]

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.