Patent Litigation 2013

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

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

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn

All times are E.S.T.

Day One: 9:00 a.m. - 5:00 p.m.  (E.S.T.)

Morning Session: 9:00 a.m. - 12:30 p.m.  (E.S.T.)

9:00 Program Overview

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

12:30 Lunch Break

Afternoon Session: 1:45 p.m. - 5:00 p.m.  (E.S.T.)

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

5:00 Adjourn

Day Two: 9:00 a.m. - 5:00 p.m.  (E.S.T.)

Morning Session: 9:00 a.m. - 12:15 p.m.  (E.S.T.)

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

12:15 Lunch Break

Afternoon Session: 1:45 p.m. - 5:00 p.m.  (E.S.T.)

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00 Program Overview

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00 Program Overview

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00 Program Overview

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00 Program Overview

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00 Program Overview

Christopher K. Hu

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

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.

Elaine Herrmann Blais

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.

Hon. Theodore R. Essex, Bert C. Reiser

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.

Carolyn H. Blankenship

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).

George E. Badenoch

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.

Constance S. Huttner

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.

Jennifer BianRosa, Peter E. Schwechheimer

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.

David Brightman, Heather A. Faltin

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.

Eric J. Lobenfeld

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.

Gene W. Lee

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.

David J.F. Gross

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.

C. Edward Polk, Jr.

5:00 Adjourn