Patent Law Institute (4th Annual)

Overview

Why You Should Attend

PLI’s 4th 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 strategic & 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 strategic & 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. Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outside lawyers.

What You Will Learn

Plenary sessions include:

• Director Kappos’ Keynote Address and what is upcoming in the USPTO
• Understand the practice impact of recent Supreme Court and Federal Circuit decisions
• Learn the latest on the pending Bilski case from a panel of experts
• Master the changes at the USPTO and how to manage client expectations
• Corporate counsel divulge the patent issues that keep them awake at night
• A distinguished panel of federal judges share their perspective on critical patent litigation issues
• Earn one hour of ethics credit

Plus, customize your Institute by choosing from 18 breakout sessions!

Prosecution breakout track: PTO law, rule and practice changes update; what new patent reform to expect this year from the Administration and Congress; PTO chemical and biotech PTO trends; practice tips for modern prosecution.

Litigation breakout track: best practices in the management of patent litigation; how to use ADR effectively; international patent enforcement; Federal Circuit practice tips; forum selection facts and figures.

Strategic & Transactional breakout track: inter partes reexaminations; patent exhaustion after Quanta; strategic consideration concerning Section 112 invalidity; the continuing importance of Opinions of Counsel.

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 San Francisco 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.

All attendees receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment this 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

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.

(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  Keynote: The State of the PTO: Where We Are, Where We’re Headed, What We Need from You

• PTO funding issues
• Patent reform and the PTO view
• PTO Rules - a more transparent approach

Brian Hanlon

10:15  Networking Break

10:30  Recent Cases

• The Federal Circuit’s en banc decision in Tafas
• Abbott v. Sandoz and its treatment of product by process claims
• Princo v. ITC: where patent pools cross the line to misuse
• Ariad v. Eli Lilly: continuing the debate over written description

Douglas R. Nemec, Moderator; Denise De Mory

11:30  The Bilski Effect: Recent and Potential Sea Changes for Statutory Subject Matter

• The Supreme Court speaks
• The state of allowable and valid subject matter in courts and the USPTO
• Practical suggestions

Scott M. Alter, Moderator; Meredith Martin Addy, Prof. Mark A. Lemley, Duane R. Valz

12:30  Lunch Break

(Breakout Tracks)

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

1:45  Prosecution

PTO Doings I: Rules and Regs That Are/Are Not Changing for 2010

The PTO is always a cauldron of Rule and Policy shifts. As the fall-out from Tafas (Claims/Continuations/ESDs) and the OMB (Appeals) stoppage of rules continues to reverberate, these afternoon break-outs give you the PTO fix you need for 2010 strategic decision-making across all technologies.

John M. White, Moderator, Brian Hanlon, Robert J. Spar

Litigation*

Managing Patent Litigation

• Coordination between inside/outside counsel to maximize efficiency
• Alternative fee arrangements
• Effective use/managements of litigation vendors and consultants

Michael A. Davitz, M.D.

Strategic & Transactional

Inter Partes Reexamination - Earning Its Way in the Litigator’s Toolbox

• Trends and success rates
• Cutting-edge strategies
• Interplay with litigation
• Potential effect of pending legislation

David L. McCombs, Mark Weinstein

2:45  Networking Break

3:00  Prosecution

PTO Doings II: More Rules and Regs That Are/Are Not Changing

As for the 1st prosecution breakout: the PTO cauldron of Rule and Policy shifts continues to bubble. This breakout continues the close look at the outcome of the sputtering and popping PTO rules-making apparatus.

John M. White, Moderator; Brian Hanlon, Robert J. Spar

Litigation*

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; Zela “Zee” G. Claiborne, Hon. Fern M. Smith

Strategic & Transactional

The State of Patent Exhaustion After Quanta

• History of the Exhaustion Doctrine
• Quanta Computer Inc. v. LG Electronics Inc.
• Recent decisions since Quanta
• Quanta’s impact on patent and contract strategies

Peter J. Kinsella, Douglas B. Luftman

4:00  Prosecution

Statutory Changes (What’s Up and What’s Happening for 2010?)

An update on the legislative road ahead. Who’s running the legislative show and whose interests matter most to the
committee Chairs in the Senate and the House. Will the mid-terms have any effect on outcomes? Come in and find out.

Philippe J.C. Signore

Litigation*

International Patent Enforcement

• Strategies for managing global litigation
• Comparative practices
• IP enforcement in China
• International design enforcement

Kimberly N. Van Voorhis

Strategic & Transactional

Section 112 in Flux - Critical Strategic Issues for Preparing and Litigating Patents

• Does the written description requirement have a future in view of Ariad v. Eli Lilly & Co.?
• Trends in Indefiniteness
• Claiming too broadly/disclosing too narrowly - is the scope of your claims commensurate with the scope of your specification?
• Provisional Applications - a tool for the diligent, a trap for the unwary
• Does the enablement requirement provide a backstop to the plain meaning crowd?

Vera M. Elson, Burt Magen

5:00  Adjourn

* Indicates Webcast Breakout Session

DAY TWO:  9:00 A.M. - 5:00 P.M.

(Breakout Tracks)

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

9:00  Prosecution

All Things Chemical and Biotechnical at the PTO (or, Why We’re Special)

How do the new PTO rule initiatives effect Bio and Chemical filings? How do recent BPAI and CAFC decisions relying on Bilski and KSR effect strategy and claim presentation?

John M. White, Moderator; Margaret M. Dunbar, Leonard Richard Svensson

Litigation*

Practice Before the Federal Circuit

• Making the most of oral argument
• How to win in your briefs
• Motion practice before the court of appeals

Asim Bhansali

Strategic & Transactional

The Continuing Importance of Opinions of Counsel in Light of Recent Court Decisions

• Willful Infringement Standards since Seagate
• Proper drafting of “competent” opinions of counsel, and when to obtain them
• Opinions and Induced Infringement in view of Broadcom
• Waiver of Privilege
• The value of opinions of counsel under current case law

Scott M. Alter, William L. LaFuze

10:00  Networking Break

10:15   Prosecution

Practical Practice Tips for Modern Prosecution

• Paperlessness - at the PTO, at your firm, and at your client?
• The PTO methods (Electronic File/EFS Action retrieval) in place now and how to take advantage
• EFS-Web new features
• The truly electronic docket (or, gee I hope the server doesn’t flip-out), etc.

John M. White, Moderator; Margaret M. Dunbar, Leonard Richard Svensson

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

Daniel M. Lechleiter

Strategic & Transactional

Report from the Corporate Front Line: How Recent Decisions Have Affected the IT Industry and Patent Licensing

• War stories and observations
• Practical effects of the following cases:
  - Transcore
  - MedImmune
  - Quanta

Robert P. Hart

11:15  Prosecution

PTO Prosecution Ethics

A broad spectrum look at what the PTO wants (ethically), and how you can deliver. What to make of the new PTO registration fees and on-line CLE requirements? What the future holds.

Jeffrey G. Sheldon

Litigation*

Ethical Issues in Discovery

• The obligations of counsel and clients before litigation commences
• Potential pitfalls in the new age of e-Discovery
• Sanctions come in many shapes and sizes - how to avoid them

Jennifer E. Lacroix

Strategic & Transactional

The Shifting Tide of Inequitable Conduct: What You Need to Know [Ethics Panel]

• How much “intent” must be intended?
• New pleadings issues for raising the charge under Exergen
• Potential effects of pending legislation
• Best practices for avoiding inequitable conduct

Jerry A. Riedinger, Jason G. Sheasby

12:15  Lunch Break

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

(Plenary Sessions)

1:45  PTO Goals: PTO Performance: A Statistical Assessment: Trends and Other Data from the PTO

• The PTO performance in numbers - from income to quality
• Filing trends
• Backlog reduction
• Hiring, training, and examiner performance
• PTO expectations and forecasts

Brian Hanlon

2:45  Networking Break

3:00  What’s Keeping Corporate Counsel Awake at Night

• Effects of court decisions and USPTO activity
• Concerns regarding pending legislation
• The economy . . .
• Other patent issues weighing on the minds of corporate counsel

Roger Kennedy, Douglas A. Kundrat, Steven A. McAuley, David W. Whealan

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. Elizabeth D. Laporte, Hon. Paul J. Luckern, Additional Judges TBA

5:00  Adjourn

* Indicates Webcast Breakout Session

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)

Meredith Martin Addy, Brinks Hofer Gilson & Lione
Asim Bhansali, Keker,& Van Nest LLP
Zela "Zee" G. Claiborne, Mediator & Arbitrator, JAMS
Michael A. Davitz, M.D., Axinn, Veltrop & Harkrider LLP
Denise De Mory, Howrey LLP
Margaret M. Dunbar, M.S., Senior Director, Intellectual Property and Legal Affairs, Burnham Institute for Medical Research
Vera M. Elson, Partner, McDermott Will & Emery
Edward V. Filardi, Skadden, Arps, Slate, Meagher & Flom LLP
Brian Hanlon, Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Robert P. Hart, Senior Corporate Counsel, Harman International
Roger Kennedy, Chief Intellectual Property Counsel, Trimble Navigation Limited
Peter J. Kinsella, Perkins Coie LLP
Douglas A. Kundrat, Vice President, Deputy General Counsel and Director of Intellectual Property, Agilent Technologies, Inc.
Jennifer E. Lacroix, DLA Piper LLP (US)
William L. LaFuze, Vinson & Elkins LLP
Hon. Elizabeth D. Laporte, Magistrate Judge, United States District Court, Northern District of California
Daniel M. Lechleiter, Baker & Daniels LLP
Mark A. Lemley, William H. Neukom Professor of Law, Stanford Law School; Durie Tangri LLP
Hon. Paul J. Luckern, Chief Administrative Law Judge, United States International Trade Commission
Douglas B. Luftman, Associate General Counsel, Intellectual Property, Palm, Inc.
Burt Magen, Vierra Magen Marcus & DeNiro LLP
Steven A. McAuley, Vice President & Chief Patent Counsel, CRM, Boston Scientific Corporation
David L. McCombs, Haynes and Boone, LLP
Jerry A. Riedinger, Perkins Coie LLP
Jason G. Sheasby, Irell & Manella LLP
Jeffrey G. Sheldon, Sheldon Mak Rose & Anderson PC
Philippe J.C. Signore, Ph.D., Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
Hon. Fern M. Smith (Ret.), District Judge, JAMS
Robert J. Spar, Director (Retired), Office of Patent Legal Administration, United States Patent and Trademark Office
Leonard Richard Svensson, Birch, Stewart, Kolasch & Birch, LLP
Duane R. Valz, Former VP and Associate General Counsel-Global Patents, Yahoo! Inc., Chadbourne & Park LLP
Kimberly N. Van Voorhis, Morrison & Foerster LLP
Mark Weinstein, Cooley Godward Kronish LLP
David W. Whealan, Senior Patent Counsel, Google Inc.

Program Attorney(s)

John M. Mola, Practising Law Institute

CLE Credit

Travel Information

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.