Why you should attend
Are you a litigator and have always wondered how patent litigation differs from your practice? Or maybe you have considered pursuing patent litigation but first wanted to find out how it differs from other types of commercial litigation? This exciting program will explore what makes patent litigation, whether in District Court or at the ITC, different from other types of litigation, from the Rule 11 pre-filing investigation through the appeal to the Federal Circuit. Attendees will learn important practical details including who to sue and what to put in the complaint. Learn what discovery is needed in a patent case and how discovery differs from other civil litigation. Disclosures of infringement and invalidity contentions, the claim construction process at and leading up to the Markman hearing will also be examined. Find out what is needed to prove infringement and how a patent may be invalidated by prior art or rendered unenforceable by inequitable conduct. Hear what can be expected at trial and what remedies are available. We will also discuss alternative forums, including the International Trade Commission, and review appeals to the Federal Circuit, and how it and the Supreme Court are reshaping patent law and patent litigation.
What you will learn
- How the America Invents Act (“AIA”) is affecting patent litigation
- Determining who to sue
- Whether to send a notice letter and what can go wrong if you do
- What to do if your client receives a notice letter
- The forums available for suing for patent infringement
- What needs to be done before filing a complaint
- What needs to be in a complaint, and answer, and when to counterclaim
- When a company can be liable for induced or contributory infringement
- How accused infringers can take advantage of patent challenges under the AIA
- How to use discovery most efficiently and effectively
- How claim terms are construed and the process courts use to do it
- How a patent case is tried and who, judge or jury, decides what
- What remedies are available and likely to be awarded
- Appeals in the Federal Circuit and how to position the case for appeal
- How long all this usually takes and what it is likely to cost
Who should attend
Morning Session: 9:00 a.m. - 12:45 p.m.
9:00 Opening Remarks and Introduction
Gary M. Hnath
9:15 Patent Prosecution for Litigators
- How the AIA’s change from “first to invent” to “first to file” will affect prosecution
- Third party pre-grant submission of prior art under the AIA
- Patent terminology
- Overview of the patent process
- Parts of a patent application
- Frequently asked questions
- Should I get a patent?
- When should I get a patent?
- How much will a patent cost?
- How long does it take to get a patent?
- Should I get patent protection outside the U.S.?
- How much does that foreign protection cost and how long does it take?
10:15 Elements and Burdens in a Patent Infringement Case and the Defendant’s Response
- How does a patent case differ from other types of cases?
- Elements of a well-pled complaint
- Plaintiff's burdens
- Responses to the Complaint
- Defenses and counterclaims
- How the AIA affects defenses, including the elimination of the “Best Mode” defense and prior user rights
- Defendant's burdens
11:15 Networking Break
11:30 The Markman Process and Hearing
- Overview of Markman and its progeny
- Markman hearing procedure, strategies and tactics
- Claim construction procedure
- After the Markman hearing - effect on further trial proceedings
- Marla R. Butler
Afternoon Session: 1:30 p.m. - 4:45 p.m.
1:30 The ITC and Other Forum, Venue and Remedy Issues
- Why patent reform does not impact ITC cases
- When might the ITC be a preferred forum to District Court?
- Why might the ITC may be a more attractive forum than District Court litigation?
- What kinds of cases can be brought under Section 337?
- Procedures and filing a complaint pursuant to Section 337 at the ITC
- Unique Section 337 remedies
- Key strategies and tactics for winning Section 337 cases
Gary M. Hnath
2:45 Anatomy and Timeline for a District Court Patent Infringement Case
- Likelihood of going to trial, time at trial and success rates in various districts
- The AIA’s new joinder rules, including choice of venue and transfer motions after the AIA
- Which districts have the most patent cases filed by patent owners, and the most filed by accused infringers?
- In which districts is summary judgment most often granted? In which is it rarely, if ever, granted?
- Comparison of local patent rules used in popular for patent litigation districts
- Timeline of various events that take place in a typical district court patent case
John J. Molenda, Ph.D (via live videoconference)
3:30 Networking Break
3:45 Post-Grant Review and Critical Issues That Win a Patent Infringement Case for a Plaintiff and a Defendant
- Availability of Inter Partes Review under the AIA
- Notice letters for indirect infringement
- Dangers of sending notice letters
- Pros and cons of patent opinions after the AIA
- Effective settlement strategies
- Trying and winning patent trials
Joseph P. Lavelle
New York City Seminar Location
PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.
New York City Hotel Accommodations
The New York Hilton & Towers
1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is 0495741. You can also make reservations
online to access Practising Law Institute rates.
The Warwick New York Hotel, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: firstname.lastname@example.org
Sheraton New York Hotel & Towers
, 811 7th Avenue, New York, NY 10019, 1-800-325-3535 or (212) 581-1000. When calling, please mention Practising Law Institute and mention SET#311155. You may also book online
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