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

Transcripts  Transcripts    

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 101: The Complete Guideline Breakdown of Alice, Myriad and Mayo

Transcripts  Transcripts    

Recorded on: Jun. 16, 2015

AARON BERNSTEIN: Hello, everyone here live and on the web. So I find this a very interesting topic-- what is becoming of patent eligibility? Some very dramatic developments that have significant impact for us in our practice and what we can tell our clients and, frankly, perhaps the economy at large. With respect to business methods and software patents, there's piles and piles of those patents out there already. Oops, are they no longer patent eligible ...

Patent Eligibility, Prior Art and Obviousness 2015: Current Trends in Sections 101, 102 and 103

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From the program: Patent Eligibility, Prior Art and Obviousness 2015: Current Trends in Sections 101, 102 and 103

Released on: Jun. 29, 2015

The Supreme Court has, in recent years, taken a renewed and profound interest in the U.S. patent system. This means, for many of us, 35 USC 101 has become a topic of conversation between ourselves and our clients. The conundrum is not just what the guidelines or decisions are today, but where will we be in the years and decades ahead during the enforcement period of patents now acquired.  Many older patents in the diagnostic, genetic, and computer ...

35 USC 103 and CAFC

Transcripts  Transcripts    

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

Transcripts  Transcripts    

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 ...

35 USC 103 and the CAFC

Transcripts  Transcripts    

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: Jun. 16, 2015

SPEAKER 1: Ha ha ha. I want to do one quick thing, and I'll get to it a little bit later in the presentation when I start talking about scientific plastic products again. But the definition of the problem to be solved not only is important in that scientific plastic products case, but in re klein, which is also mentioned in Mike's presentation. In re klein Is one of the first real mechanical patents that actually came through the patent office, and ...

9th Annual Patent Law Institute

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From the program: Patent Law Institute (9th Annual)

Released on: Mar. 31, 2015

The Institute is designed to be of ultimate practice value to all three subgroups in the patent law community: patent prosecutors, patent litigators, and strategic/transactional lawyers. The schedule includes six plenary sessions of interest to all patent lawyers and six breakout sessions. Do not miss this unique opportunity to sharpen your practice skills and network with federal judges, USPTO officials, in-house counsel and outside patent lawyers! Patent ...

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

Transcripts  Transcripts    

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)

Transcripts  Transcripts    

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 ...

Kimble v. Marvel Entertainment, LLC: Supreme Court Confirms Patent License Fees Cannot Extend Beyond Patent Term

Transcripts  Transcripts    

Recorded on: Aug. 3, 2015

AMY TAUB: It is now my pleasure to turn this briefing over to Joel Lehrer. JOEL E. LEHRER: Thank you, Amy, Good afternoon everyone. The briefing this afternoon regarding the Kimble versus Marvel Entertainment case as Amy mentioned, relates to whether or not a licensor can or cannot extend patent royalties beyond the patent term. First, I'd like to go through just a brief agenda of what we're going to discuss in this afternoon's briefing. We're going ...

Kimble v. Marvel Entertainment, LLC: Supreme Court Confirms Patent License Fees Cannot Extend Beyond Patent Term

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Recorded on: Jul. 20, 2015

Taken from the briefing Kimble v. Marvel Entertainment, LLC: Supreme Court Confirms Patent License Fees Cannot Extend Beyond Patent Term Recorded July 2015 in New York Kimble v. Marvel Entertainment, LLC: Supreme Court Confirms Patent License Fees Cannot Extend Beyond Patent Term [01:02:20] Presentation Material Kimble v. Marvel Entertainment, LLC: Supreme Court Confirms Patent License Fees Cannot Extend Beyond Patent Term Joel E. Lehrer, Michael ...

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

Transcripts  Transcripts    

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, ...

A Deeper Dive into Inter Partes Review/Covered Business Method Results

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Recorded on: Jun. 29, 2015

Taken from the briefing A Deeper Dive into Inter Partes Review/Covered Business Method Results recorded June, 2015 in New York. While top level studies of the rate of unpatentability findings in PTAB review proceedings suggest a challenger friendly forum, more detailed analysis suggests that the differences between PTAB and district court review is more nuanced. In addition, the evolution of the rules and other trends may further alter the way we ...

A Deeper Dive into Inter Partes Review/Covered Business Method Results

Transcripts  Transcripts    

Recorded on: Jul. 14, 2015

AMY: --agreement. It is now my pleasure to turn everything over to Justin Oliver. JUSTIN OLIVER: Thank you, Amy, and welcome everyone. Thanks for joining us. As Amy mentioned, we're going to be talking today about IPRs and CBMs primarily, and looking at a little bit deeper dive. I'll give a short overview of these proceedings, but because the intention of this talk is to look a little bit more deeply at some of the statistics and activities and ...

Advanced Licensing Agreements 2015

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From the program: Advanced Licensing Agreements 2015

Released on: Feb. 12, 2015

Intellectual property licensing continues to grow increasingly complex. The legal, regulatory and technical landscape is constantly evolving. Building and maintaining a successful and effective practice requires that practitioners stay sharp and 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 ...

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

Transcripts  Transcripts    

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

Transcripts  Transcripts    

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

Transcripts  Transcripts    

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

Transcripts  Transcripts    

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 ...

Featured Faculty/Authors
Clifford E. Kirsch

Clifford E. Kirsch ~ Sutherland Asbill & Brennan LLP

Tanya E. M. Wong

Tanya E. M. Wong ~ Director of Government Benefits, Legal Services NYC - Legal Support Unit

Kenneth N. Nigon

Kenneth N. Nigon ~ RatnerPrestia