Patent Law Institute (3rd Annual)

Overview

Why You Should Attend

The U.S. Supreme Court has decided several important patent cases and the Federal Circuit has issued many critical decisions in the last year. The U.S. Patent and Trademark Office has issued new rules and made significant prosecution practice changes. Recent court decisions and other events have greatly affected numerous aspects of U.S. and international patent licensing and related transactional practice.

PLI’s 3rd Annual Patent Law Institute is designed to cover the practice impact of recent developments on all three sub-groups in the patent law community: patent prosecutors, patent litigators, and patent transactional lawyers. The two-day schedule includes 6 one-hour plenary sessions of broad interest to patent lawyers and a separate breakout track for prosecution, litigation and transactional practices.
 

Each track features 6 one-hour breakout sessions focused on each of the 3 patent practice sub-groups. In just two days, you will learn the important developments and best practices in each area. And earn Ethics credit, too! You can design the Institute schedule that best meets your individual practice needs.

What You Will Learn

Plenary sessions include:

• Master the recent Supreme Court and Federal Circuit decisions, and subsequent District Court applications of those decisions
• Understand the current status of PTO law, rule and practice changes
• Learn the changes in business method and software patents post-Bilski
• Analyze the critical issues at the patent-antitrust interface
• Witness a unique judges panel discussing recent appellate decisions and the impact on pending litigation
• Learn the hot patent business and legal concerns of outstanding corporate counsel
• Earn one hour of Ethics credit

Prosecution breakout track: a PTO law, rule and practice changes update; new appeals and OED rule packages; what new rule and prosecution initiatives and patent reform to expect with the new Administration and Congress; PTO biotech/pharma trends; how to successfully transition to paperless patent prosecution.

Litigation breakout track: litigation at the patent-antitrust interface; e-Discovery best practices; infringement remedies; the latest facts and figures on the hot patent litigation venues; expert insights on trial presentation.

Transactional/Strategic breakout track: using opinions of counsel post-Seagate; critical business considerations of a license agreement, including the effects of Quanta; hot technology transfer and licensing issues; inter partes reexamination; 27 hidden dangers in your patent license agreement.

Who Should Attend

Patent litigators, patent prosecutors and patent transactional lawyers, both in-house and outside counsel, do not want to 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.

Special Features

Live Webcast - Simultaneous live webcast of the New York, March 2-3, 2009, session is available for individual viewing. Webcast participants will receive streaming audio and/or video of the program, view and print the Course Handbook, and have the ability to submit questions electronically.

For more information click on the Live Webcast link in the Related Items box.

Special Bonus to all Registrants

PLI XChange - Online learning and collaboration service.
 
As a registrant to this program, you will have access to PLI XChange, our cutting edge "business social network," prior to, during, and after your participation. PLI XChange benefits:

1. Ability to learn and communicate with program faculty prior to the program date.
2. Networking and peer learning opportunities with fellow attendees.
3. Read course materials and other relevant information prior to program.
4. Ask questions prior to the program to get a better sense of what will be presented at the program.
5. Access a web site that will have the most current and relevant news, information and legal analysis within the particular practice area that corresponds to the program.
6. Ability to ask questions after the program and further develop relationships established at the program.
7. Identify new potential career opportunities.

Course Handbook

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

Please Note: Webcast attendees will receive a downloadable version of the Handbook one business day prior to the program.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount.  For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Schedule

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

(Plenary Sessions)

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

9:00  Program Overview

Scott M. Alter, Douglas R. Nemec, John M. White

9:15  Recent Court Decisions and Their Practice Impact: Expert Insights on Major Court Decisions of the Past Year, including:

• Quanta vs. LGE
• In re Bilski
• Post-KSR obviousness decisions of the Federal Circuit
• Egyptian Goddess

Douglas R. Nemec, Moderator; Robert Neuner

10:15  Break

10:30  PTO Law, Rule and Practice Changes Update

• A summary of what is done, and what is yet to come for 2009. The election is in the rearview mirror: what do the new Administration and Congress have in mind for the PTO?
• Patent reform - new life or dead letter?
• What now, for PTO rule-making, after the GSK debacle?
• Major changes by the PTO affecting your prosecution practices
• Does the rift between Practitioner and PTO need repair?

John M. White, Moderator; Robert A. Clarke, Robert J. Spar, Kenneth D. Wilcox

11:30  Sweeping Changes for Business Method and Software Patents: Bilski and Beyond 

• New portfolio considerations for business method and software patents 
• Long and short term effects of In re Bilski and related decisions

Scott M. Alter, Moderator; Kathlyn Card Beckles, Prof. John F. Duffy, E. Robert Yoches

12:30  Lunch

Afternoon Session: 1:45 p.m. - 5:00 p.m.

(Breakout Tracks)

Please note: Webcast viewers will be seeing the Litigation breakout track; the Prosecution and Transactional/Strategic tracks will be made available online as archived audio-only programs after March 31, 2009, on the PLI website.

1:45  Prosecution

PTO Rules Breakout I - Appeals Rule Packages and Other Recent PTO Rules Packages

• Markush (Alternative Limitations) Limits
• What has happened and why?
• Changes and updates to your daily practice

John M. White, Moderator; Robert A. Clarke, Robert J. Spar

Litigation 

Litigation at the Patent-Antitrust Interface

• FTC scrutiny of pharmaceutical settlements
• Rambus and other patent issues involving standard setting organizations
• Accounting for Quanta in litigation
• Practical advice for grappling with antitrust counterclaims

Asim Bhansali

Transactional/Strategic

Drafting and Using Opinions of Counsel in Light of Recent Federal Circuit Decisions

• Willful Infringement Standards after Seagate 
• Proper drafting of “competent” opinions of counsel, and when to obtain them 
• Opinions and Induced Infringement: Broadcom vs. Qualcomm
• Updating opinions
• Waiver of Privilege

Scott M. Alter, William L. LaFuze

2:45  Break

3:00  Prosecution

PTO Rules Breakout II - Regime Change & Other New PTO Rule Initiatives - What to Expect

• Trends and forecasts: a complete breakdown of what is coming and when
• Biological deposits, time for filing and availability
• New submitting requirements for fax, paper and electronic documents
• What you need to know about PLT, PCT and work sharing programs

John M. White, Moderator; Robert A. Clarke, Robert J. Spar

Litigation

e-Discovery Best Practices

• Practical advice on balancing cost and effectiveness of e-Discovery
• Potential pitfalls in the new age of discovery
• Review of recent e-Discovery case law

Kenneth W. Brothers

Transactional/Strategic

Business Considerations of a License Agreement 

• Critical legal and business characteristics of patent grant types (sale vs. exclusive license vs. nonexclusive)
• Offering a “patent product” that your potential customers actually need
• Using fields of use, territory and other terms to maximize royalties
• How to get the most for your client without being a deal killer

Mark S. Holmes, John A. Ritsick

4:00  Prosecution

The Legislation That Will Not Die (or Live): Patent Reform

• The situation on the ground: what’s in, what’s out
• The contenders and their supporters
• Where the PTO fits in

John M. White, Moderator; Kenneth D. Wilcox

Litigation

Patent Infringement Remedies

• Preliminary injunctions and other interim relief
• Permanent injunctions under eBay
• Proving lost profits, price erosion, and other damages theories
• Getting the most from your damages/economic expert

Douglas R. Nemec

Transactional/Strategic

Technology Transfer and Licensing

• University tech transfer issues
• Royalty and other provisions

Kathleen A. Denis

5:00  Adjourn

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

(Breakout Tracks)

Please note: Webcast viewers will be seeing the Litigation breakout track; the Prosecution and Transactional/Strategic tracks will be made available online as archived audio-only programs after March 31, 2009, on the PLI website.

Morning Session: 9:00 a.m. - 12:15 p.m.

9:00  Prosecution

PTO Biotech/Pharma Trends - News to Report

• Impact of recent CAFC decisions on the PTO
• The biotech and pharma standard - is it any different?
• Costly mistakes to avoid; what the PTO is looking for

John M. White, Moderator; Gerald M. Murphy, Jr.

Litigation

Facts and Figures on Forum Selection

• Most and least popular jurisdictions for patent litigation
• Survey of patent local rules
• Declaratory judgment actions after MedImmune
• Legislative and judicial responses to perceived forum shopping

Dorothy R. Auth

Transactional/Strategic

Inter Partes Reexamination

• Differences from ex parte reexamination
• Recent trends and success rates
• Considerations affecting decision to file
• Timing considerations
• Interplay with litigation

Greg H. Gardella, David L. McCombs

10:00  Break

10:15  Prosecution

PTO - The Eventual Paperless Tiger? A Complete Report on Your Prosecution Future

• Complete paperlessness: from your screen to the PTO IFW via EFSweb
• How to change: the paper-based habits that need to be tossed
• A day in the life of a 21st-century e-office from mail-in to mail-out

John M. White, Moderator; Gerald M. Murphy, Jr.

Litigation

Expert Insights on Trial Presentation

• Demystifying jury selection
• Strategic use of motions in limine
• Conveying complex issues to lay juries

Sharon R. Barner

Transactional/Strategic

Hidden Risks of Patent License Agreement: What You Don’t Know Can Hurt You 

• Exhaustion and implied license risks
• Tax risks
• Hybrid license risks

Peter J. Kinsella

11:15  Prosecution

Prosecution Ethics: PTO Ethics in the Computer Age

• What to do when the PTO and CAFC diverge on disclosure requirements?
• The electronic age of too much information - what to do?
• PTO CLE: the new frontier of the registered practitioner
• Trends in PTO Ethics reform - is it really the end of invention submission scams?

John M. White, Moderator; Robert C. Faber

Litigation

Ethics and Risks in Patent Litigation

• Developments in inequitable conduct and the duty of candor
• Pre-filing investigation obligations
• Potential pitfalls of representing clients in multiple capacities
• Document preservation issues

Anthony Pastor

Transactional/Strategic

Ethics of Standard Setting, Patent Pools, and Related Issues 

• Antitrust and formation considerations
• Effectiveness of current standards setting and associated patent licensing systems
• Recent cases and issues

Gail F. Levine, Frances E. Marshall

12:15  Lunch

Afternoon Session: 1:45 p.m. - 5:00 p.m.

(Plenary Sessions)

1:45  Effective Use of Alternative Dispute Resolution

• Strategies to maximize effectiveness of ADR
• Court sponsored mediation programs
• Comparative views on arbitration vs. litigation

Douglas R. Nemec, Moderator; Hon. Matthew F. Kennelly, Hon. Gregory M. Sleet

2:45  Break

3:00  Corporate Counsel Panel

• Effects of Federal Circuit decisions
• Effects of recent Supreme Court and legislative activity
• Other patent issues weighing on the minds of corporate counsel

Scott M. Alter, Moderator; Valerie Calloway, Marc A. Ehrlich, Vivian A. Maese, Daniel Staudt, John C. Todaro

4:00  Judges Panel

• Perspectives on effective trial presentation
• Discovery disputes - when and how to seek the court’s assistance
• Advice on Markman procedures 
• Using dispositive motions to maximum effect

Edward V. Filardi, Moderator; Hon. Denise Cote, Hon. David J. Folsom, Hon. T. John Ward

5:00  Adjourn

Faculty

Co-Chair(s)

Scott M. Alter, Faegre & Benson LLP
Douglas R. Nemec, Skadden, Arps, Slate, Meagher & Flom LLP
John M. White, Berenato & White, LLC; Director of Patent Professional Development, Practising Law Institute

Speaker(s)

Dorothy R. Auth, Ph.D., Cadwalader, Wickersham & Taft LLP
Kathlyn Card Beckles, Executive Director & Assistant General Counsel, Intellectual Property & Technology Law, JPMorgan Chase Bank, NA
Asim Bhansali, Keker,& Van Nest LLP
Kenneth W. Brothers, Dickstein Shapiro LLP
Valerie Calloway, Chief Intellectual Property Counsel, Polymer Group, Inc.
Robert A. Clarke, Chief of Staff, United States Patent and Trademark Office, Office of Patent Legal Administration
Hon. Denise Cote, United States District Judge, United States District Court, Southern District of New York
Kathleen A. Denis, Ph.D., Associate Vice President, Technology Transfer, The Rockefeller University
John F. Duffy, Oswald Symister Colclough Research Professor of Law, The George Washington University Law School
Marc A. Ehrlich, Senior IP Counsel, Global Engineering Solutions Systems and Technology Group, IBM Corporation
Robert C. Faber, Ostrolenk Faber LLP
Edward V. Filardi, Skadden, Arps, Slate, Meagher & Flom LLP
Hon. David J. Folsom, District Judge, United States District Court, Eastern District of Texas
Greg H. Gardella, Fish & Richardson P.C.
Mark S. Holmes, CEO, PatentBridge LLC
Hon. Matthew F. Kennelly, District Judge, United States District Court, Northern District of Illinois
Peter J. Kinsella, Perkins Coie LLP
William L. LaFuze, Vinson & Elkins LLP
Gail F. Levine, Assistant General Counsel, Verizon Communications Inc.
Frances E. Marshall, Special Counsel for Intellectual Property, Antitrust Division, United States Department of Justice
David L. McCombs, Haynes and Boone, LLP
Gerald M. Murphy, Jr., Birch, Stewart, Kolasch & Birch, LLP
Robert Neuner, Hoffmann & Baron, LLP
Anthony A. Pastor, Ropes & Gray LLP
C. Edward Polk, Jr., Foley & Lardner LLP
John A. Ritsick, Senior Corporate Counsel, Flextronics International Ltd.
Hon. Gregory M. Sleet, Chief Judge, United States District Court, District of Delaware
Robert J. Spar, Director (Retired), Office of Patent Legal Administration, United States Patent and Trademark Office
Daniel Staudt, Vice President, Chief Intellectual Property Counsel, Siemens Corporation
John C. Todaro, Managing Counsel, Intellectual Property Group, Merck & Co., Inc.
Hon. T. John Ward, District Judge, United States District Court, Eastern District of Texas
Kenneth D. Wilcox, Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
E. Robert Yoches, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Program Attorney(s)

John M. Mola, Practising Law Institute

CLE Credit

Travel Information

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

Due to high demand and limited inventory in NYC, we recommend reserving hotel rooms as early as possible.

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 N495741. Reservations on line at www.hilton.com and enter the same Client File # in the Corporate ID # field 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: res.ny@warwickhotels.com