Co-Sponsored by Pennsylvania Bar Institute
Attendees in Pennsylvania will be viewing the live broadcast at the Pennsylvania Bar Institute, 5080 Ritter Rd., Mechanicsburg, PA 17055. You will have the opportunity to submit questions and will receive the printed Course Handbook.
Why you should attend
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 two-day schedule includes seven plenary sessions of interest to all patent lawyers and five breakout sessions in each of the three subgroups.
You design the two-day schedule that best meets your professional needs.
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.
What you will learn
Plenary sessions include:
- Keynote Address by former USPTO Director David J. Kappos
- A dialogue with prominent members of the bench and bar
- Key buyers, sellers and brokers of patent assets divulge inner workings of the patent marketplace
- Federal judges provide insight on patent law and litigation
- The practice impact of the America Invents Act, and recent Supreme Court and Federal Circuit decisions
- Corporate counsel discuss critical issues that keep them awake at night
Plus customize your Institute by choosing from 15 breakout sessions!
Prosecution Breakout Track: three sessions focused on the fallout from all of the USPTO rules and tweaks implementing the America Invents Act (AIA), New PTO Ethics, Treaty Revisions, and other PTO rule action; and two sessions focused on the AIA and its unique strategic spillover into the chemical and biotechnical patent prosecution field. Since 2011, the USPTO has been all about AIA implementation; now comes the real world that is manifest from those rules. You can expect many on-the-fly adjustments as work-arounds are devised by clever applicants; this is your chance to be current across the board.
Litigation Breakout Track: containing patent litigation costs; developments in pharma and biotech patent litigation; advice from the bench; litigating software-related disputes; and developments in patent damages.
Strategic/Transactional Breakout Track: hear about key issues concerning inter parts review and post-grant review strategies; patent-eligible subject matter in view of recent Supreme Court and Federal Circuit decisions; and hot licensing topics affecting your practice.
Special Features
- Perspectives from both sides of the aisle on litigation involving non-practicing entities
- Earn one hour of Ethics credit!
Who should attend
Patent litigators, patent prosecutors and patent transactional lawyers, both in-house and outside counsel.
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.
Day One: 9:00 a.m. - 5:30 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
(Plenary Sessions)
9:00 Program Overview
Scott M. Alter, Douglas R. Nemec, John M. White
9:15 An Insider’s View of Running the PTO
- Prioritizing what to fix
- Identifying resources
- The politics of money (i.e, who wants to give it you, who doesn’t, and why?)
- Supporting legislative reform
David J. Kappos
10:15 Recent Cases
- The Supreme Court's decision in Bowman v. Monsanto
- Bosch v. Pylon and its impact on the structure of patent trials going forward
- Important Federal Circuit cases concerning Section 112 invalidity defenses
- Recent jurisprudence on obviousness
- And other decisions of consequence from the Federal Circuit
Robert Neuner
11:15 Networking Break
11:30
(Breakout Tracks)
Breakout: Litigation
Managing Patent Litigation I: Containing Costs and Maintaining Efficiency
- Tips on efficient management of outside counsel
- Alternative fee arrangements
- Best practices with litigation vendors and consultants
- Avoiding e-discovery nightmares
Michelle Waites-Holder
Breakout: Prosecution*
PTO Update I
- The aftermath of AIA
- Implementing the treaty changes
- Fine tuning the rules changes from AIA
Brian Hanlon, Robert J. Spar, John M. White
Breakout: Strategic & Transactional
What’s Hot in Patent Licensing Law
- What are the big issues facing patent owners trying to license their patents?
- How can patent owners maximize license revenue?
- What are the most common mistakes in drafting agreements?
- Licensee insists on patent indemnification: how do you respond?
- How does the America Invents Act affects patent licenses?
- What are the effects of recent decisions on standard essential patents and FRAND rates?
D. Brian Kacedon
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:30 p.m.
1:45
(Breakout Tracks Continued)
Breakout: Litigation
Patent Damages – Keeping Up With the Changing Rules
- Perspectives on the sea change in damages analysis
- Constructing – or deconstructing – a reasonable royalty case
- Proving lost profits, price erosion, and other "but for" damages
- Getting the most from your damages/economic expert
Dawn Hall, Kimberly N. Van Voorhis
Breakout: Prosecution*
PTO Update II
- More from the PTO – Rules and Tweaks
- The rule manufactory that is the PTO
- Pilot programs that you should care about
Brian Hanlon, Robert J. Spar, John M. White
Breakout: Strategic & Transactional
The Expanded Reach of Induced Infringement Post Akamai
- How Akamai has changed the infringement landscape
- Strategic measures to avoid induced infringement
- Potential effect of upcoming Supreme Court decisions
Scott M. Alter, David M. Rosenblatt
2:45
Breakout: Litigation
Developments in Pharma & Biotech Patent Litigation
- The impact of patent reform efforts on life sciences litigation
- FTC v. Actavis and the future of reverse payment pharma settlements
- The impact of Myriad and other Section 101 cases on pharma and biotech litigation
- And other important life sciences litigation developments
Dorothy R. Auth
Breakout: Prosecution*
The Forecast for the PTO
- Rainy: more rules
- Storms: statutory updates
- Seek shelter: court decisions
Stephen G. Kunin
Breakout: Strategic & Transactional
Inter Partes Review and Post-Grant Review – New Regime and New Strategies
- Overview of IPR and PRG procedures
- Managing IPR or PGR with parallel litigation
- Strategies for challengers and patent owners
Robert Greene Sterne
3:45 Networking Break
4:00 Dialogue Between the Bench and the Bar
- A frank discussion between Federal Circuit and District Court Judges, and leading members of the patent appellate bar, on hot patent topics affecting your practice
Donald R. Dunner, Deanne E. Maynard, Hon. Patti B. Saris, Dean John M. Whealan
5:30 Adjourn
Day Two: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00
(Breakout Tracks)
Breakout: Litigation
Getting More with Less: Tips from the Bench on Efficient Litigation
- A rare opportunity for an interactive discussion with a sitting Federal judge
- Tried and tested approaches to containing e-discovery
- Viewpoints on early motion practice
- The importance of maintaining credibility with the court, and how not to lose it
Hon. Elizabeth D. Laporte
Breakout: Prosecution*
Breakout I: Bio/Pharma: Still leading the way past Supreme Court Decisions
- Cases at the CAFC and the Supreme Court
- Recent enablement and written description cases - can you ever get a broad claim again?
- Is there anything left to patent?
- Of course: but how?
Margaret M. Dunbar, Gerald M. Murphy, Jr., Leonard Richard Svensson
Breakout: Strategic & Transactional
Patent-Eligible Subject Matter: Implications for the Biotech, Medical Device and Software Industries
- Long and short-term effects of recent Supreme Court decisions
- Drafting strategic applications in an uncertain world
- Impact of recent Federal Circuit and district court decisions
Jason R. Kraus, Stephen G. Kunin
10:00
Breakout: Litigation
Litigating Software IP Disputes
- Updates in software patent litigation
- Balancing at the intersection of patent, copyright and trade secret
- Unique challenges post-Bilski
- Practical tips – handling source code in litigation
Trevor Carter
Breakout: Prosecution*
Breakout II: Bio/Pharma: the 1st to try cases at the PTAB?
- Ex Parte cases at the PTAB
- Inter partes cases at PTAB in Pharma/bio fields – should you try your case before PTAB or a court?
- How the PTO is implementing the S.Ct. and CAFC guidance
- Safe Harbor Claiming: Is it really safe? (In 10 years, in 20?)
Margaret M. Dunbar, Gerald M. Murphy, Jr., Leonard Richard Svensson
Breakout: Strategic & Transactional
Effective Multi-Corporation Solutions to Defending Against NPE’s
- Pre-litigation Deterrence
- Demand Letters
- Joint Defense Groups
- Use of Reexams/Reviews
Kevin Jakel, Douglas B. Luftman
11:00 Networking Break
11:15
(Plenary Sessions)
Litigating Against Non-Practicing Entities
- What is different about litigation involving NPEs and why does it matter?
- Strategic advice for plaintiffs and defendants
- Special considerations regarding remedies
- Perspectives on judicial and legislative responses to NPE litigation
P. Anthony Sammi, Philip W. Marsh
12:15 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m.
1:45 Patent Markets – The Buying, Selling and Brokering of Patent Assets
- Established and evolving IP monetization models
- Effects of changing legal and economic environments
Neer Gupta, Richard Ludwin, Daniel P. McCurdy, Suzanne Drennon Munck
2:45 Corporate Counsel Roundtable
- Effects of recent court decisions and USPTO activity
- Concerns regarding newly enacted and pending legislation
- The economy . . .
- Other patent issues weighing on the minds of corporate counsel
Kathy Card Beckles, Valerie Calloway [invited], David W. Highet, Sean O’Brien, David M. Shofi
3:45 Networking Break
4:00 Ethics at the PTO: The New Frontier
- The new PTO regime on ethics
- Where are patent practitioners vis-à-vis state bar rules
- Cases and decisions from OED: what not to do
Eugene R. Quinn, Jr.
5:00 Adjourn
* Live Webcast of breakout session
Speaker(s)
Carole L. Basri ~ President, Corporate Lawyering Group LLC; Adjunct Professor, Executive Director of the Corporate Compliance Program, Fordham University Law School
Kathlyn Card Beckles ~ Managing Director & Associate General Counsel, Intellectual Property & Technology Law, JPMorgan Chase Bank, NA
Neer Gupta ~ Assistant General Counsel, Intellectual Property, Verizon
Dawn Hall ~ Managing Director - Forensic Consulting, FTI Consulting
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
David W. Highet ~ Vice President and Chief Intellectual Property Counsel / Law, Becton, Dickinson and Company
Margaret M. Dunbar, M.S. ~ Senior Director, Intellectual Property and Legal Affairs, Sanford-Burnham Medical Research Institute
Suzanne Drennon Munck ~ Deputy Director, Office of Policy Planning; Chief Counsel for Intellectual Property, Federal Trade Commission
Sean O'Brien ~ Vice President & Counsel, Intellectual Property, Sikorsky Aircraft Corp
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO,
Dean John M. Whealan ~ Intellectual Property Advisory Board Associate Dean for IP Law, George Washington University Law School
John M. White ~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute