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102(e) now and forever (i.e., new 102 (d)): Effects of Priority Under 119, 120, 121, 356

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Recorded on: Jul. 24, 2012

JOHN WHITE: Good afternoon. It's 3:45, and now we begin our push towards 5 o'clock and the end of our program. And so I will be delivering that part of our talk. But before I begin, I'll introduce myself, because that's what I do, you see, as moderator. So I'm standing in today for Bob Spar. Bob Spar did the slides that we're going to look at. He was the former director at the PTO in charge of the Office of Patent Legal Administration. And Bob knows ...

35 USC 103 and CAFC

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Recorded on: Jul. 23, 2013

JOHN WHITE: Now I get to introduce Rebecca and the next topic. But I told you, Ben brings passion to 102(g), and for that reason alone it's a shame that it's gone. Because it's such a fun topic. Our next topic is 103, as seen through the lens of district court, and importantly, CAFC decisions. And the reason we look at 103 from all angles, and indeed all of prior art from all angles, is it matters. The patent office takes one view and the CAFC helps ...

35 USC 103 and the CAFC

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Recorded on: Jun. 18, 2014

JOHN M. WHITE: Now on to Rebecca and 103. REBECCA GOLDMAN RUDICH: OK. Now as we've talked about, I've been doing this piece for John for quite a while. My original piece with prior art was I did 102 (c) and (d), and then eventually graduated into doing some of the obviousness stuff. But I want to refer you on my 102(c), which no longer exists. If you really want an interesting read about adverse statements-- self-serving statements by inventors, ...

35 USC 103 and the CAFC

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Recorded on: Jul. 24, 2012

JOHN M. WHITE: Ben, we will now make a seamless transition to 103, and this is obviousness in the context of, for the most part, the CAFC dealing with district court decisions. And what becomes of those decisions and I'll let Rebecca take it from there. And she'll run us through to the next break, which is 3:30. REBECCA GOLDMAN RUDICH: OK. Everybody awake? JOHN M. WHITE: Yep! REBECCA GOLDMAN RUDICH: OK because I'm going to give you the spelling ...

Prior Art and Obviousness 2014: Current Trends in Sections 102 and 103

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From the program: Prior Art and Obviousness 2014: Current Trends in Sections 102 and 103

Released on: Jul. 1, 2014

How has patent reform impacted the touchstones of patentability, prior art and obviousness? Already a complicated concept for patent practitioners because of evolving interpretations in the PTO and CAFC, 102 has been complicated further by the AIA. What aspects of current 102 understanding carry over to new 102? How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What ...

Alice Corp. v. CLS Bank: An In-House Counsel Perspective

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Recorded on: Nov. 12, 2014

AMY TAUB: Hello. My name is Amy Taub, and I am a program attorney with PLI. I would like to welcome you to today's briefing, "Alice Corp v. CLS Bank-- An In-House Counsel Perspective." Before we begin, I have some administrative announcements. This briefing will be one hour in length. Please feel free to send questions at any time during the briefing. Please remember that you have access to materials for this briefing via the course materials ...

Alice Corp. v. CLS Bank: An In-House Counsel Perspective

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From the program: Alice Corp. v. CLS Bank: An In-House Counsel Perspective

Released on: Nov. 12, 2014

Taken from the Web Program Alice Corp. v. CLS Bank: An In-House Counsel Perspective recorded October, 2014 in New York. The Alice decision held that patent claims directed to certain abstract ideas are invalid under 35 U.S.C. Sec. 101. This represents the fourth time in the past five years that the Supreme Court has tackled the question of whether a patent was directed to patent-eligible subject matter. The decision impacts the future of software ...

Alice Corp. v. CLS Bank Int'l: Supreme Court Rules that General Purpose Computers Cannot Save Claims Directed to Abstract Ideas 2014 (Audio-only)

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Recorded on: Jul. 17, 2014

AMY TAUB: Hello, my name is Amy Taub, and I am a program attorney with PLI. I would like to welcome you to today's briefing, Alice Corporation versus CLS Bank International-- Supreme Court Rules that General Purpose Computers Cannot Save Claims Directed to Abstract Ideas. Before we begin, I have some administrative announcements. This briefing will be one hour in length. Please feel free to send questions at any time during the briefing. Please remember ...

Alice Corp. v. CLS Bank Int'l: Supreme Court Rules that General Purpose Computers Cannot Save Claims Directed to Abstract Ideas 2014 (Audio-only)

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Released on: Jul. 17, 2014

Taken from the briefing Alice Corp. v. CLS Bank Int'l: Supreme Court Rules that General Purpose Computers Cannot Save Claims Directed to Abstract Ideas recorded June, 2014.In this recent decision, the Supreme Court addressed some of the Federal Circuit’s confusion regarding the scope of patentable subject matter under 35 U.S.C § 101. Particularly, the unanimous Court struck down Alice’s claims directed to mitigation of settlement risk. The Justices ...

Octane Fitness and Highmark: The Supreme Court Eases the Standard for Recovering Attorney Fees in Patent Cases 2014 (Audio-only)

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Recorded on: May. 21, 2014

AMY: It is now my pleasure to turn this briefing over to Elaine Herrmann Blais. ELAINE HERRMANN BLAIS: Good afternoon everyone. Thanks for joining us. Amy mentioned that we're open to questions, and I actually think one of the most interesting things about these decisions is how they'll play out. And I think there are a lot of interesting hypotheticals. So if people have some they want to float, we'd love to take them at the end. Having said that, ...

Octane Fitness and Highmark: The Supreme Court Eases the Standard for Recovering Attorney Fees in Patent Cases 2014 (Audio-only)

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Released on: May. 21, 2014

Taken from the briefing Octane Fitness and Highmark: The Supreme Court Eases the Standard for Recovering Attorney Fees in Patent Cases recorded May, 2014.The U.S. Supreme Court’s April 29, 2014 decisions in Octane Fitness LLC v. Icon Health & Fitness Inc. and Highmark Inc. v. Allcare Health Management Systems Inc. tossed the frameworks under which the Federal Circuit has handled attorney fees cases for the past decade. The statute at issue in ...

Advanced Licensing Agreements 2014

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From the program: Advanced Licensing Agreements 2014

Released on: Feb. 12, 2014

Licensing transactions are more complex and more important than ever. The constantly evolving legal, regulatory and technical landscape drives the need to stay current in a wide variety of key areas. Whether utilized to develop technology, expand or create market opportunities, or generate returns from existing assets, managing complex licensing transactions requires a broad and varied toolkit. Additionally, whether licensing patents, copyrights, ...

All Things Chemical and Biotechnical at the PTO, Part I (or, Why We're Special)

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Recorded on: Feb. 24, 2011

JOHN M. WHITE: Welcome to the second day of The Patent Law Institute. This is a special section devoted to all things chemical. That's what we'll be working on for the next two hours. Its chemical and pharma. And I know that we have a lot of people out there in northern New Jersey especially but also others that are quite interested in what happens in the chemical and pharma world at the PTO, because it's a little different now isn't it. You know ...

All Things Chemical and Biotechnical at the PTO, Part II

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Recorded on: Feb. 24, 2011

JOHN WHITE: Welcome back to the second hour of our morning. We're going to continue with chemical practice. And after another hour of more chemical doings at the patent office, we're going to transition to PTO-related related topics from a PLI author. And I'll go ahead and reintroduce our chemical speaker, Gerry Murphy. He's with the firm Birch, Stewart, Kolasch, & Birch, down there in Virginia, with offices also in San Diego. And they've been ...

Alternative and Emerging Models in Patent Monetization

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Recorded on: Apr. 17, 2013

JOSE A. ESTEVES: OK. We're going to go ahead and get started with the afternoon portion of the program. [SIDE CONVERSATION] JOSE A. ESTEVES: Yes. [SIDE CONVERSATION] JOSE A. ESTEVES: All right. So we've got the first of three panels of the afternoon program. And in this panel we're going to have presentations exploring new and emerging models related to patent monetization. And we have four speakers lined up for you. Our first is Cheryl Malone. ...

Alternative Dispute Resolution

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Recorded on: Nov. 17, 2014

CHRIS: Our next session is on the alternative dispute resolution, and we have three speakers. We have the honorable John Hughes, retired New Jersey magistrate judge, who was a magistrate judge for 18 years, and is now with JAMS in the New York office. That's judge Hughes. We have Garreth Sarosi with Dentons' in Dallas, former deputy general counsel of MetroPCS, and Brett Cooper from the New York office of McKool Smith. And they're going to talk about ...

Patent Litigation 2014

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From the program: Patent Litigation 2014

Released on: Nov. 24, 2014

Rapid changes in patent law make it necessary that, whether you are the plaintiff’s or defendant’s counsel, you are up-to-date on the current state of the law and can quickly develop successful litigation strategies and tactics. This program is taught by a faculty of both outside and in-house lawyers who have earned national reputations in patent litigation by trying and managing a wide variety of bench and jury patent trials and U.S. ...

Analysis of a Patent License Agreement

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Recorded on: Oct. 23, 2012

MARK S. HOLMES: Thank you, John, and welcome back. To me this is the most enjoyable parts of the whole program. And I want to thank our panelists we're going to introduce now for appearing. On my far left is Winston Henderson. He's a vice president and general counsel at NanoTerra, a Boston-based nanotechnology company with life science and non-life science divisions. Before that, he was at Surface Logix, which is a biopharmaceutical and drug development ...

Analysis of a Patent License Agreement

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Recorded on: Nov. 4, 2014

MARK HOLMES: Welcome back. This is one of my favorite portions, because we look at actual language. You've been hearing mostly this morning theory, and now we're going to give you an idea what provisions look like. I'd like to introduce you to the panel. On my immediate right is Sara Harrington. She's Senior Director, Legal-Intellectual Property, at LinkedIn. She's counseled many companies, startups and otherwise, in the development, distribution, ...

Patent Licensing Today 2014: Making Money Without Getting Sued

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From the program: Patent Licensing Today 2014: Making Money Without Getting Sued

Released on: Nov. 17, 2014

In the current economy, the heat is on to monetize patent portfolios. Thus, understanding patent transactions has never been more important. Experts in patent licensing will tell you how to get the most money from patent licensing, how to negotiate patent license agreements, and discuss “The Good, The Bad and The Ugly” examples from actual patent license agreements. The program will emphasize practical tips for structuring, negotiating ...

Analysis of Empirical Data on Patent Monetization, and a Conceptual Model for Patent Monetization Programs

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Recorded on: Apr. 14, 2014

JOSE ESTEVEZ: OK, we're going to go ahead and get started with the afternoon portion of the program. So for this next hour, we've got two presenters. First, we have Marc Ehrlich. Marc is Senior IP Council for Patent Enforcement at IBM Corporation. There, he manages the patent licensing and sales legal team responsible for generating IP income for IBM. In support of IBM's annual attainment of over $1 billion per year in IP income, the team focuses ...

Analysis of Empirical Data on Patent Monetization, and a Conceptual Model for Patent Monetization Programs

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Recorded on: Apr. 14, 2014

Taken from the Web Program IP Monetization 2014: Maximize the Value of Your IP Assets Recorded April, 2014 in San FranciscoAnalysis of Empirical Data on Patent Monetization, and a Conceptual Model for Patent Monetization Programs [01:03:24] With a significant amount of policy debate swirling around patent monetization, evaluate what empirical studies and data actually say and do not say regarding patent monetization activity Use a sophisticated ...

Analysis of the Patent Landscape: Asserting Your Rights and the New Face of Patent Litigation; District Courts, ITC, IPR, and PGR

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Recorded on: Jul. 2, 2013

MARTA GROSS: All right, welcome back, everyone. And so now we're going to move into the next module of the three modules that we're doing today. As I mentioned to you this morning when I was giving the overview, this is the module where what we're planning on doing is I'm going to give probably a 15 or 20 minute background on what I call patent landscape. Which is going to go into some scenarios where you might have your patent attorney do some analysis ...

Analysis of the Patent Landscape; Asserting Your Rights and the New Face of Patent Litigation: District Courts, ITC, IPR, and PGR

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Recorded on: Jun. 30, 2014

MARTA E. GROSS: Hello. Welcome back. We're ready to start the afternoon session. As I mentioned this morning, I am going to be going first and give a little bit what I consider, hopefully, a bridge between this morning session to what will be later on with the patent litigation and the licensing and M&A. I'm going to wait to introduce the other two panelists until Eric comes here, which he should be here shortly. I'll be speaking for maybe 15 ...

Understanding Patent Law 2014

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From the program: Understanding Patent Law 2014

Released on: Jul. 11, 2014

If you are looking for a way to learn the basic concepts of patent law, this program is for you. In just one day, this complicated field will be boiled down to easy to understand, accessible sessions covering all types of patent issues that may arise in the context of every day practice and business management. Bringing together top experts in the field, this program will begin with a thorough foundation of patent principles, including what is patentable ...

Featured Faculty/Authors
Kevin J. Ryan

Kevin J. Ryan ~ Managing Director, Global Capital Markets, Morgan Stanley

David G. Keyko

David G. Keyko ~ Pillsbury Winthrop Shaw Pittman LLP

Alyssa A. Grikscheit

Alyssa A. Grikscheit ~ Sidley Austin LLP