Why you should attend
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 comprehensive coverage of every phase of a patent lawsuit. Through lecture and demonstration, you will be able to hone your patent litigation skills in just two days.
The program schedule has been totally revised based on comments from prior year attendees at this popular annual event, and many new sessions have been added to address hot topic developments over the last year.
What you will learn
- An opening session on the AIA and its effects featuring former PTO Director David Kappos
- An in-depth exploration of growing joint/multiple infringement litigation, including tactics for pursuing or defending indemnity claims
- The still-evolving law of the patentability of business methods and what constitutes a business method three years after Bilski
- Strategy and tactics in reexamination and post-grant review proceedings, particularly when employed in parallel to district court litigation
- The continuing impact of the America Invents Act on patent litigation strategies, including the use of new
- PTO procedures to strengthen or challenge patents that may be asserted in litigation
- Current trends in patent damages in the post-Uniloc environment
- The wide array of pretrial motions relating to adequacy of pleadings, jurisdiction/venue, evidentiary issues, and substantive issues, that determine where a case will be tried, if a case is tried, what issues will be tried and what evidence will be considered
Special Features
- Earn Ethics credit
- Direct and cross-examination of a technical expert at trial
Who should attend
Patent litigators and lawyers in patent firms who advise clients in disputes that may lead to litigation; general business litigators whose practice includes patent trials; patent prosecutors whose actions in preparing and prosecuting patents are critical in providing support for the proper claim construction; and corporate counsel who will have the responsibility for supervising patent litigation, interpreting its progress for management, and pursuing opportunities for settlement.
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.
Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival.
Day One: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
9:00 Program Overview
Jeanne M. Gills
9:15 Keynote: The AIA and Its Effects After Two Years
The America Invents Act was signed into law on September 16, 2011, during the tenure of David J. Kappos as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Mr. Kappos will deliver a keynote address covering, from his unique perspective, the origins and aims of the AIA, the diverse viewpoints considered during the formulation of the AIA, and the purposes of the various new PTO procedures for determining patentability and validity. He will also discuss post-AIA trends in the PTO, particularly with respect to post-grant review, supplemental examination, Inter Partes review and ex parte reexamination.
David J. Kappos via videoconference
10:15 Recent Developments and Changes in Patent Law and Their Effects on Patent Litigation
A review of the effects on patent litigation of the America Invents Act (AIA), as well as a review of the important decisions of the Supreme Court, Federal Circuit and District Courts over the past year. Key trends and developing patent law doctrines will also be covered.
Linda S. DeBruin, G. Courtney Holohan, Maria A. Maras
11:15 Networking Break
11:30 Trends in ITC Practice
Hear considerations in seeking relief for patent infringement from the International Trade Commission instead of, or in addition to, filing an action in Federal District Court. The session will also focus on the advanced strategies for ITC proceedings, including considerations and trends on time to judgment, injunctive relief as the only form of relief available, and increased use of the ITC by foreign complainants. Significant rulings in recent cases will be discussed.
Doris Johnson Hines
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m.
1:45 Three Years After Bilski – the Patentability of Business Methods
The long-awaited decision of the U.S. Supreme Court in Bilski in 2010 was expected to clarify the law with respect to the patentability of business methods. However, the Supreme Court's “flexible” test of patentability, which includes, but is not limited to, the pre-existing “machine or transformation test,” does not provide a clear resolution of the issue. Subsequent Federal Circuit decisions, including CyberSource, Ultramercial and Dealertrack, make clear that the courts are still searching for the boundary between patentable and unpatentable subject matter. This session will cover recent developments in the law governing the patentabilty of business methods.
Marc V. Richards
2:45 Parallel Patent Reexaminations and PTAB Proceedings
The filing of reexaminations continues to be a strategy for parties against whom a patent of questionable validity has been asserted. A reexamination proceeding might be initiated in anticipation of litigation or filed soon after litigation has begun. A parallel reexamination proceeding is usually a basis for seeking a stay of the more costly district court proceeding and/or used to bring the patentee to the bargaining table. Factors to consider in deciding whether to seek reexamination will be covered, including updated data and statistics on PTO reexamination proceedings and a discussion of the newly AIA-created Inter Partes system that replaced Inter Partes reexaminations in September 2012, and how it differs in standards and procedures from the old system and ex parte reexaminations. This session will also cover the effects of a reexamination proceeding on litigation, including stays, as well as the potential effects on collateral estoppel, claim construction positions, willfulness charges, inequitable conduct claims, and on damages and intervening rights (e.g., if claims are amended).
Matthew A. Smith
3:45 Networking Break
4:00 Before the Trial – the Pleadings, Motions and Other Factors That Determine What Gets to Trial in a Patent Case
This session will cover specific pleading requirements (such as for inequitable conduct), motions to dismiss and transfer, motions for summary judgment, motions in limine and other factors that determine what actually is tried in a patent case. Strategies as to how and when to raise challenges to claims and defenses will also be covered. Discussions will include the importance and effect of the infringement and invalidity contentions now required in many district courts.
James R. Ferguson
5:00 Adjourn
Day Two: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 Patent Damages
Recent Federal Circuit and District Court decisions reflect a trend towards damages awards based less on application of rules than on evidence of actual harm sustained. This session will cover recent cases on damages, including the Federal Circuit’s Uniloc decision, which rejected 25% of an infringer’s anticipated profits as a rule of thumb for a reasonable royalty, and the string of cases in which the entire market value rule has been more strictly applied. Other cases on both lost profits and reasonable royalty damages will be analyzed.
Neil C. Jones
10:00 Willful Infringement and Current Defensive Strategies
This session will discuss willful infringement and the current strategies companies are taking to defend against it. It will discuss how courts are applying the Seagate Technology case today, the rise of motions to dismiss willfulness at the pleading stage, and thoughts on whether opinions are still recommended. Strategies for protection without opinions, and the question of whether willfulness based solely on postfiling conduct is becoming extinct, will also be discussed.
Clinton H. Hallman, Jr., Christine Abuel Pompa
11:00 Networking Break
11:15 Dealing With Experts, Including Rule 26 Employee Experts
Expert witnesses play a critical role in patent litigation with respect to both liability and damages issues. Often a company’s best resource on the technology at issue or state of the marketplace is one of its employees. The employee (typically a “non-retained” or “inside” expert) can provide valuable information on the state of the prior art or state of the market and competition, advise on the similarities or differences between the patent claims and the accused products/methods, help keep the company focused on the business issues, and help identify outside experts. Based, however, on the December 2010 changes to Rule 26, early on in the litigation, counsel must assess whether any such employee will only provide factual testimony or may also be used to provide expert opinions that require disclosure of the subject matter and underlying opinions and facts to be testified on. This session will cover the selection and use of testifying and non-testifying experts, the use of experts at Markman hearings, the development of expert opinions, the preparation of expert reports, and the discoverability of certain communications with the expert. This segment will also consider the use of evidentiary motions, including Daubert motions and other motions in limine to exclude or limit expert testimony at trial.
Christopher G. Hanewicz, Michelle M. Umberger
12:15 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m.
1:45 Infringement Based on the Acts of Multiple Parties
In a world that is increasingly connected by networks with services provided by multiple entities, and in which complex products are made up of components from numerous sources, issues of infringement based on the acts of multiple parties arise far more frequently. This session will cover recent cases applying the Federal Circuit’s Muniauction decision relating to infringement of a method claim where not all steps are performed by one entity. The relationship between the entities necessary for a finding of infringement will also be covered, including the effect of the Akamai and McKesson Federal Circuit decisions. This session will also cover recent cases on the standards for determining other forms of multi-party infringement, including inducement of infringement and contributory infringement.
Meredith Martin “Mimi” Addy
2:45 Networking Break
3:00 Expert Direct/Cross-Examination
The direct and cross-examination of an expert at trial is the culmination of a long series of events. These events begin with the identification of an expert pursuant to Rule 26 of the Federal Rules of Civil Procedure, and continue with the expert report, rebuttal report and expert deposition. Any shortcomings in the expert’s qualifications or analyses, or in the party’s theories or disclosures, subject the expert and his or her testimony to motions in limine, Daubert motions and other evidentiary motions that can severely limit the scope of the expert testimony and, in some cases, lead to exclusion of the witness. This session will include a demonstration of the direct and cross-examination of an expert, together with a discussion of the pretrial activities that determined what the expert was ultimately permitted to testify to at trial.
Mark L. Levine
4:00 Ethical Issues in Patent Litigation
In-house and outside counsel face ethical issues in patent litigation at every step of the process, from pre-suit Rule 11 compliance, throughout the discovery process, and continuing through to trial and appeal. The sometimes fuzzy boundary between ethical transgression and zealous advocacy will be explained. USPTO ethical rules that apply to practitioners licensed by the USPTO even when practicing in another forum will also be addressed.
Julianne M. Hartzell, Brent A. Hawkins
5:00 Adjourn