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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 ...

Prior Art, Obviousness, and the America Invents Act in 2012

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From the program: Prior Art, Obviousness, and the America Invents Act in 2012

Released on: Aug. 6, 2012

Patent reform has arrived: what will be its impact on those touchstones of patentability, prior art and obviousness?  102 was already a complicated concept for patent practitioners, having undergone evolving interpretations in the PTO and CAFC.  How will the AIA now complicate matters further?  How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? ...

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 ...

Advanced Licensing Agreements 2012

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From the program: Advanced Licensing Agreements 2012

Released on: Apr. 6, 2012

DVD's from the program Advanced Licensing Agreements 2012, held February 2012.

Advanced Licensing Agreements 2013

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From the program: Advanced Licensing Agreements 2013

Released on: Apr. 4, 2013

Licensing transactions are more complex than ever. The constantly evolving legal, regulatory and technical landscape drives the need to stay current in all of these 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, trade secrets or trademarks, ...

Advanced Patent Licensing 2012: Current Developments and Best Practices

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From the program: Advanced Patent Licensing 2012: Current Developments and Best Practices

Released on: Nov. 5, 2012

In the current economy, more and more companies are seeking to monetize their patent portfolios. Thus, understanding patent transactions has never been more important. Experts in patent licensing will cover recent legal developments; techniques for drafting agreements for patent licensing, purchases and sales; and practical advice on negotiation and enforcement considerations. Lecture Topics  [Total time 06:15:55] Segments with an asterisk ...

Akamai-McKesson: The En Banc Federal Circuit Takes on "Divided Infringement"

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Recorded on: Oct. 4, 2012

Taken from the briefing Akamai-McKesson: The En Banc Federal Circuit Takes on "Divided Infringement" recorded October, 2012. Who can be liable for patent infringement, when only the combined actions of multiple entities (but none of them individually) perform the steps required by the patent? In recent years, such a question of so-called “divided” patent infringement has created complexities for ...

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 and Emerging Models in Patent Monetization

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Recorded on: Apr. 17, 2013

Taken from the Web Program IP Monetization 2013: Maximize the Value of Your IP Assets Recorded April, 2013 in San FranciscoAlternative and Emerging Models in Patent Monetization [01:01:31] A panel of experts will examine new and emerging models being employed in IP monetization, including the IPXI patent license exchange, crowdsourcing strategies, and emerging techniques being employed to acquire, finance and sell patents and technology.The purchase ...

America Invents Act Pro Bono Program for Inventors and Small Businesses

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Recorded on: Jan. 24, 2013

Taken from the briefing America Invents Act Pro Bono Program for Inventors and Small Businesses recorded January, 2013. The America Invents Act (AIA) requires that the Director of the United States Patent and Trademark Office (USPTO) work with local intellectual property (IP) organizations across the country in establishing pro bono patent  services for inventors and small businesses. Since the passage of this bill, four pro ...

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 ...

Anatomy and Timeline for a District Court Patent Infringement Case

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Recorded on: Jun. 7, 2012

GARY HNATH: OK. Welcome back. Thank you for coming back. Thank you for joining the afternoon session. My name is Gary Hnath. And I'll be speaking later on this afternoon about litigation of patent cases at the ITC. But right now, I'd like to introduce the next speaker, who needs no introduction because he's already been introduced. But you're going to be treated to having what I consider to be the best speaker on patent law on this planet and also ...

Anatomy and Timeline for a District Court Patent Infringement Case

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Recorded on: Jun. 13, 2011

IAN N. FEINBERG: So it's 4 o'clock. We're on the home stretch. We're going to talk about the anatomy and timeline for a district court patent infringement case. We'll move fairly quickly. But before doing that, I just want to touch on damages because I know we haven't really focused on them as much as we should. So under the patent statute, a patentee is entitled to all damages caused by the infringement, but not less than a reasonable royalty. Under ...

Fundamentals of Patent Litigation 2012

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From the program: Fundamentals of Patent Litigation 2012

Released on: Jun. 20, 2012

Are you a litigator and have always wondered how patent litigation differs from your practice?  Or maybe you have considered pursuing patent litigation but first wanted to find out how it differs from other types of commercial litigation?  This exciting program will explore what makes patent litigation different from other types of litigation, from the Rule 11 pre-filing investigation through the appeal to the Federal Circuit.  You ...

Appeals to the Court of Appeals for the Federal Circuit

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Recorded on: Apr. 3, 2013

ROBERT GREENE STERNE: Well, welcome again, and now we're going to be addressing the very important subject of appeals from the Board to the Federal Circuit, something that I think a lot of us are woefully deficient in our appreciation of the task at hand, and we need to get up to speed on this very important piece of the puzzle. So as we start this panel discussion, first of all, let me introduce John Dragseth, who is our other faculty member, in ...

USPTO Post-Grant Patent Trials 2013

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From the program: USPTO Post-Grant Patent Trials 2013

Released on: Apr. 10, 2013

Post-grant patent proceedings were pursued in record number at the USPTO in 2012. The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the USPTO. To this end, patent reexamination remains a viable alternative to costly litigation or parallel path to enhance litigation positions. Yet due to the public outcry for even ...

Are You Ready to Enter the U.S. Biosimilars Pathway?

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Recorded on: Aug. 16, 2012

Taken from the briefing Are You Ready to Enter the U.S. Biosimilars Pathway? recorded August, 2012. The U.S. Biosimilars legislation was signed into law in March 2010.  The FDA published draft Guidance documents to implement Biosimilars in the Spring of 2012.  With many biologic drugs poised to come off patent in the next few years, Biotech and Biosimilars companies are preparing to test the U.S. Biosimilars system.  Several ...

Before the Trial - The Pleadings, Motions and Other Factors that Determine What Gets to Trial in a Patent Case

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Recorded on: Sep. 28, 2012

P. TRIPODI: Well, we've reached that part of the day. I'm pleased to announce our final speaker for the day, Mark Flagel, from the Los Angeles office of Latham & Watkins. Mark is going to talk to you today about what gets to trial in a patent case. And as you can see, we will be layering the complexities of district court litigation on all the topics having to do with patent office procedures that you've heard about today. Mark has a BA from ...

Patent Litigation 2012

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From the program: Patent Litigation 2012

Released on: Oct. 12, 2012

Rapid changes in patent law make it necessary that, whether you are 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 provides ...

Biotech and Pharma Licensing in Asia

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Recorded on: Apr. 2, 2013

DANIEL L. REISNER: It's my pleasure to introduce the speakers for our last topic today. Grace Pan is a partner at Kay Scholer in our New York office. She is a graduate of Northwestern University School of Law, where she graduated Phi Delta Phi and Iota Sigma Phi. Grace speaks Chinese and Japanese, travels often to Asia, and represents numerous Asian clients with intellectual property and commercial issues. Grace is a member of numerous professional ...

Developments in Pharmaceutical and Biotech Patent Law 2013

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From the program: Developments in Pharmaceutical and Biotech Patent Law 2013

Released on: Apr. 15, 2013

Pharmaceutical and biotech patent law is an important and rapidly changing practice area, and the program is designed to give you the information you need to maintain your practice edge, concentrating on new developments from 2012 and placing them in the context of constantly evolving areas of the law.Technological innovation, Federal Circuit appellate oversight, and Supreme Court decisions continue to drive significant changes in the law. Several ...

Breakout Day Two, Part II: Litigation, Strategic and Transactional

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Recorded on: Mar. 5, 2012

SCOTT: With our next panel, Patent Quality and Cost Effectiveness, we used from in-house, and we're very fortunate to have three excellent speakers from in-house to talk to us about their thoughts on the topic. To my immediate right is Serena Farquharson-Torres, who is the global head currently, and patent support for consumer health care, for Sanofi. She's responsible for developing and coordinating implementation of Sanofi's patent strategy for ...

Breakouts: PATENT & TRADEMARK

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Recorded on: Oct. 16, 2012

SPEAKER 1: OK, we're back. If you're looking for the patent session, you're in the right place. We've been laboring for the past year under a new statute and here to give us some observations about it is Jennifer Sklenar, who's a partner at Arnold and Porter, where she's in the intellectual property group. Jennifer? JENNIFER SKLENAR: Thank you. Well, it's great to be here and especially to see some familiar faces that I have not seen for a while. ...

Featured Faculty/Authors
Lisa J. Sotto

Lisa J. Sotto ~ Hunton & Williams LLP

David W. Pollak

David W. Pollak ~ Morgan, Lewis & Bockius LLP

Katie M. Lachter

Katie M. Lachter ~ Hinshaw & Culbertson LLP