Why you should attend
The Institute is designed to be of ultimate practice value to all three subgroups in the patent law community: patent prosecutors, patent litigators, and strategic/transactional lawyers. The two-day schedule includes seven plenary sessions of interest to all patent lawyers and five breakout sessions in each of the three subgroups.
You design the two-day schedule that best meets your professional needs.
Do not miss this unique opportunity to sharpen your practice skills and network with federal judges, USPTO officials, in-house counsel and outside patent lawyers.
What you will learn
Plenary sessions include:
- Keynote Address by Hon. Margaret A. (Peggy) Focarino, Commissioner of Patents
- A dialogue with prominent members of the bench and bar, including former Federal Circuit Chief Judge Paul R. Michel
- Key buyers, sellers and brokers of patent assets divulge inner workings of the patent marketplace
- U.S. District Court judges provide insight on patent law and litigation
- The practice impact of the America Invents Act, and recent Supreme Court and Federal Circuit decisions
- Corporate counsel discuss critical issues that keep them awake at night
Plus customize your Institute by choosing from 15 breakout sessions!
Prosecution Breakout Track: three sessions focused on the avalanche of USPTO rules implementing the America Invents Act (AIA) and other important PTO actions; and two sessions focused on the AIA and chemical and biotechnical patent prosecution. This year, and until further notice, the USPTO is all about AIA implementation. You can expect many on-the-fly adjustments as to AIA implementation, so this is your chance to be current across the board.
Litigation Breakout Track: containing patent litigation costs; developments in pharma and biotech patent litigation; advice from the bench; litigating against non-practicing entities; and developments in patent damages.
Strategic/Transactional Breakout Track: hear about key issues concerning patent standards and “essential patents”; patent-eligible subject matter in view of Prometheus and its progeny; joint infringement from attorneys involved in Akamai and other key decisions; and hot tech transfer topics affecting your practice.
Special Features
- Patent system perspectives from industry and a District Court judge
- Earn one hour of Ethics credit!
Who should attend
Patent litigators, patent prosecutors and patent transactional lawyers, both in-house and outside counsel, should not miss PLI’s Patent Law Institute. In just two days, you will hear all of the recent developments you need to know and learn how to adjust your practice to the new environment.
Day One: 9:00 a.m. - 5:30 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
(Plenary Sessions)
9:00 Program Overview
Scott M. Alter, Douglas R. Nemec, John M. White
9:15 PTO Update
- Implementing the AIA
- Expectations
Brian Hanlon
10:15 Recent Cases
- Prometheus
- Caraco
- Myriad
- Akamai/McKesson
- The latest patent cases bound for the Supreme Court
- Other decisions of consequence from the Federal Circuit
Denise De Mory
11:15 Networking Break
11:30
(Breakout Tracks)
Breakout: Litigation*
Managing Patent Litigation: Containing Costs and Maintaining Efficiency
- Tips on efficient management of outside counsel
- Alternative fee arrangements
- Best practices with litigation vendors and consultants
- Avoiding e-discovery nightmares
Cynthia Bright
Breakout: Prosecution
Implementing the AIA Pre & Post-Grant, Part I: Derivation Proceedings, Third-Party Submissions; Supplemental Examination
- The PTO as post-grant arbiter of validity
- Derivation – the interference remnant of old 35 USC 102(f)
- Third-party action before and after issue: more latitude
- The “cleansing” effect of Supplemental Examination
Brian Hanlon, Robert J. Spar, John M. White
Breakout: Strategic & Transactional
Standards and Essential Patents
- Antitrust considerations concerning “essential patents” and FRAND issues
- Effectiveness of current standards setting and associated patent licensing systems
- Recent cases and issues
Matthew J. Bye, Frances E. Marshall
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:30 p.m.
1:45
(Breakout Tracks Continued)
Breakout: Litigation*
Patent Damages – Keeping Up With the Changing Rules
- Perspectives on the sea change in damages analysis
- Constructing – or deconstructing – a reasonable royalty case
- Proving lost profits, price erosion, and other "but for" damages
- Getting the most from your damages/economic expert
Dawn Hall, Kimberly N. Van Voorhis
Breakout: Prosecution
Implementing the AIA Post Grant, Part II: The "Windows" Post-Grant Review; Inter Partes Review
- Avoiding litigation or pre-empting litigation
- The instant dispute resolved at the PTO: Post-Grant Review
- The “after-the-fact” remedy of Inter Partes Review
Brian Hanlon, Robert J. Spar, John M. White
Breakout: Strategic & Transactional
Navigating The New Induced Infringement: Tips and Practical Considerations
- Willful blindness considerations after Global-Tech v. SEB
- Effect of Bard v. Gore on practical willful infringement considerations
- Are opinions of counsel still important?
Scott M. Alter
2:45
Breakout: Litigation*
Developments in Pharma & Biotech Patent Litigation
- AIA one year and counting – has it impacted pharma and biotech litigation?
- The continuing drama around reverse payment pharma settlements
- The evolving FDA guidance and rules for follow-on biologics
- The role of Section 101 challenges in pharma and biotech litigation
Asim Bhansali
Breakout: Prosecution
Implementing the AIA: First to File: The New 102 Timelines and Deadlines!
- First to do what…exactly: file or publish?
- When a grace period is not really a grace period
- The novelty exceptions to prior art; or how to extend your term
Nicholas Godici, Leonard Richard Svensson
Breakout: Strategic & Transactional
Patent-Eligible Subject Matter: Implications for the Biotech, Medical Device and Software Industries
- Long and short-term effects of the Supreme Court’s Mayo v. Prometheus and Bilski v. Kappos decisions
- Drafting strategic applications in an uncertain world
- Impact of recent Federal Circuit and district court decisions
Roberta Jean Hanson, Robert R. Sachs
3:45 Networking Break
4:00 Dialogue Between the Bench and the Bar
- A frank discussion between the former Chief Judge of the Federal Circuit and leading members of the bench and patent appellate bar on hot patent topics affecting your practice
A video of the NYC presentation
5:30 Adjourn
Day Two: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00
(Breakout Tracks)
Breakout: Litigation*
Litigation Advice From the Bench
- A rare opportunity for an interactive discussion with a sitting Federal judge
- Tried and tested approaches to containing e-discovery
- What kinds of evidence really matter – how to avoid rabbit holes
- Advice on effective advocacy in complex cases
Hon. Jacqueline Scott Corley
Breakout: Prosecution
Chemical/Pharma Cases and AIA Concerns
- Staying with PTO practice in light of CAFC and Supreme Court decisions
- KSR still evolving in Chem/Pharma
- Taking advantage of new 102 Novelty exceptions
Margaret M. Dunbar, Leonard Richard Svensson
Breakout: Strategic & Transactional
Joint Infringement post Akamai/McKesson
- The new case law
- Open questions
- Practical consequences for drafting claims and structuring one's conduct
Daryl L. Joseffer, Alison M. Tucher
10:00
Breakout: Prosecution
Bio Cases and AIA Concerns
- Staying with PTO practice post Myriad, Prometheus, and Classen
- New approaches to protection
- Taking advantage of new 102 Novelty exceptions
Margaret M. Dunbar, Leonard Richard Svensson
Breakout: Strategic & Transactional*
Hot Topics in Technology Transfer and Licensing
- University tech transfer issues
- Performance, royalty and other provisions
Cheryl A. Fragiadakis, Nader A. Mousavi
11:00 Networking Break
11:15 Litigating Against Non-Practicing Entities
- What is different about litigating against an NPE and why does it matter?
- Proven strategies for defeating NPEs
- Special considerations regarding remedies
- Dealing with joint defense groups
Philip W. Marsh, Andrew N. Thomases
12:15 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m.
1:45 Plenary: Patent Markets
- Established and evolving IP monetization models
- Effects of changing legal and economic environments
Kevin Barhydt, David Kaefer, James Kovacs, Ken Lustig
2:45 Corporate Counsel Panel
- Effects of court decisions and USPTO activity
- Concerns regarding newly enacted legislation
- The economy . . .
- Other patent issues weighing on the minds of corporate counsel
T.J. Angioletti, Joseph T. FitzGerald, Heath Hoglund, Allen M. Lo, Steven A. McAuley
3:45 Networking Break
4:00 PTO Ethics and the AIA
- Statute of limitations tolling under the AIA and PTO rules
- The new ethical reality of first-to-file
- Mistakes may be catastrophic; malpractice issues
- Streamline client intake; setting expectations
- Informed consent early and often
- "Best practices" advice; new “grace” period
- OED decisions and investigations; defining trouble
Eugene R. Quinn, Jr.
5:00
Adjourn
* Live Webcast of breakout session
Co-Chair(s)
John M. White ~ Berenato & White, LLC; Director of Patent Professional Development, PLI,
Speaker(s)
T.J. Angioletti ~ Associate General Counsel, Technology & Transactions, Netflix
Kevin Barhydt ~ VP, Head of Acquisitions and Analysis, RPX Corporation
Dawn Hall ~ Managing Director - Forensic Consulting, FTI Consulting
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
David Kaefer ~ General Manager, IP Licensing & Sales, Microsoft Corp
James A. Kovacs ~ , Deputy Director of Intel Licensing and Patent Acquisitions, Intel Corporation
Ken Lustig ~ Vice President, Strategic Acquisitions, Divestitures and Client Engagement, Intellectual Ventures Management LLC
Frances E. Marshall ~ Special Counsel for Intellectual Property, Antitrust Division, United States Department of Justice
Steven A. McAuley ~ Vice President & Chief Patent Counsel, CRV, Boston Scientific Corporation
Margaret M. Dunbar, M.S. ~ Senior Director, Intellectual Property and Legal Affairs, Sanford-Burnham Medical Research Institute
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO,
John M. Whealan ~ Intellectual Property Advisory Board Associate Dean for Intellectual Property Law Studies, George Washington University Law School
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
San Francisco Seminar Location
PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.
San Francisco Hotel Accommodations
The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.
Due to high demand we recommend reserving hotel rooms as early as possible.