Why you should attend
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, whether in District Court or at the ITC, different from other types of litigation, from the Rule 11 pre-filing investigation through the appeal to the Federal Circuit. Attendees will learn important practical details including who to sue and what to put in the complaint. Learn what discovery is needed in a patent case and how discovery differs from other civil litigation. Disclosures of infringement and invalidity contentions, the claim construction process at and leading up to the Markman hearing will also be examined. Find out what is needed to prove infringement and how a patent may be invalidated by prior art or rendered unenforceable by inequitable conduct. Hear what can be expected at trial and what remedies are available. We will also discuss alternative forums, including the International Trade Commission, and review appeals to the Federal Circuit, and how it and the Supreme Court are reshaping patent law and patent litigation.
What you will learn
- How the America Invents Act (“AIA”) is affecting patent litigation
- Determining who to sue
- Whether to send a notice letter and what can go wrong if you do
- What to do if your client receives a notice letter
- The forums available for suing for patent infringement
- What needs to be done before filing a complaint
- What needs to be in a complaint, and answer, and when to counterclaim
- When a company can be liable for induced or contributory infringement
- How accused infringers can take advantage of patent challenges under the AIA
- How to use discovery most efficiently and effectively
- How claim terms are construed and the process courts use to do it
- How a patent case is tried and who, judge or jury, decides what
- What remedies are available and likely to be awarded
- Appeals in the Federal Circuit and how to position the case for appeal
- How long all this usually takes and what it is likely to cost
PLI Group Discounts
Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.
PLI Can Arrange Group Viewing to Your Firm
Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.
Cancellations
All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.
All times are P.D.T.
Morning Session: 9:00 a.m. - 12:45 p.m. (P.D.T.)
9:00 Opening Remarks and Introduction
Ian N. Feinberg
9:15 Patent Prosecution for Litigators
- How the AIA’s change from “first to invent” to “first to file” will affect prosecution
- Third party pre-grant submission of prior art under the AIA
- Patent terminology
- Overview of the patent process
- Parts of a patent application
- Frequently asked questions
- Should I get a patent?
- When should I get a patent?
- How much will a patent cost?
- How long does it take to get a patent?
- Should I get patent protection outside the U.S.?
- How much does that foreign protection cost and how long does it take?
Sanjeet Dutta
10:15 Elements and Burdens in a Patent Infringement Case and the Defendant’s Response
- How does a patent case differ from other types of cases?
- Elements of a well-pled complaint
- Plaintiff's burdens
- Responses to the Complaint
- Defenses and counterclaims
- How the AIA affects defenses, including the elimination of the “Best Mode” defense and prior user rights
- Defendant's burdens
Joshua Masur
11:15 Networking Break
11:30 The Markman Process and Hearing
- Overview of Markman and its progeny
- Markman hearing procedure, strategies and tactics
- Claim construction procedure
- After the Markman hearing - effect on further trial proceedings
Madison C. Jellins
12:30 Lunch
Afternoon Session: 1:30 p.m. - 4:45 p.m. (P.D.T.)
1:30 Anatomy and Timeline for a District Court Patent Infringement Case
- Likelihood of going to trial, time at trial and success rates in various districts
- The AIA’s new joinder rules, including choice of venue and transfer motions after the AIA
- Which districts have the most patent cases filed by patent owners, and the most filed by accused infringers?
- In which districts is summary judgment most often granted? In which is it rarely, if ever, granted?
- Comparison of local patent rules used in popular for patent litigation districts
- Timeline of various events that take place in a typical district court patent case
Ian N. Feinberg
2:30 The ITC and Other Forum, Venue and Remedy Issues
- Why patent reform does not impact ITC cases
- When might the ITC be a preferred forum to District Court?
- What kinds of cases can be brought under Section 337?
- Procedures and filing a complaint pursuant to Section 337 at the ITC
- Unique Section 337 remedies
- Key strategies and tactics for winning Section 337 cases
Gary M. Hnath
3:30 Networking Break
3:45 Post-Grant Review and Critical Issues That Win a Patent Infringement Case for a Plaintiff and a Defendant
- Availability of Inter Partes Review under the AIA
- Notice letters for indirect infringement
- Dangers of sending notice letters
- Pros and cons of patent opinions after the AIA
- Effective settlement strategies
- Trying and winning patent trials
Joseph P. Lavelle
4:45 Adjourn
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PLI's Live Webcasts are approved for MCLE credit (
unless otherwise noted in the product description) in the following states/territories: Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana
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3, Oklahoma, Oregon*, Pennsylvania
4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia
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Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
Arkansas and Oklahoma: Audio-only live webcasts are not approved for credit.
1Indiana: Considered a distance education course. There is a 6 credit limit per year.
2New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.
3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.
4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.
5Virginia: All distance learning courses are to be done in an educational setting, free from distractions.
Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers.
Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.