Patent Litigation 2010

Overview

Why You Should Attend

Rapid changes in patent law make it necessary, whether you are plaintiff’s or defendant’s counsel, to ensure that you are up-to-date on the current state of the law and on how to develop successful litigation strategies and tactics. This program is taught by a faculty of outside and in-house lawyers who have earned national reputations in patent litigation by trying a wide variety of bench and jury patent trials, and provides comprehensive coverage of every phase of a patent lawsuit.  Through lecture and demonstration, you will be able to hone your patent litigation skills in just two days.

The program schedule has been totally revised, based on comments from prior year attendees at this popular annual program and many new sessions have been added to address hot topic developments over the last year.

What You Will Learn

New for 2010!

• An expanded opening session focusing on the impact of new case law on patent litigation, including recent Supreme Court and Federal Circuit decisions
• Making intelligent forum decisions among the District Courts and the ITC
• Effective management of ESI in patent litigation
• Pre-litigation considerations in defending NPE infringement litigation
• Strategy and tactics in concurrent reexamination proceedings
• Litigation in the aftermath of In re Bilski
• Current trends in patent royalty damages
• Effective, admissible and compelling visual communications at trial

Who Should Attend

Patent litigators and lawyers in patent firms who advise clients in disputes that may lead to litigation; general business litigators whose practice includes patent trials; patent prosecutors whose actions in preparing and prosecuting patents are critical in providing support for the proper claim construction; corporate counsel who will have the responsibility for supervising patent litigation, interpreting its progress for management and pursuing opportunities for settlement.

Special Features

• Direct and cross-examination of a technical expert using visual aids at trial
• Ethical issues in patent litigation: 1 hour of ethics credit!

Live Webcast

The New York City session of this program is available live via the web:

• Print the Course Handbook
• Submit questions electronically
• Get “real-time” education right from your PC!

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

If you have any questions please call PLI’s Customer Relations Department at (800) 260-4PLI.

Special Bonus to all Registrants

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

Day One:  9:00 a.m. - 5:00 p.m.

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

9:00  Program Overview

Edward G. Poplawski

9:15  Recent Developments in Patent Law and Their Impact on Patent Litigation

The opening session will provide an overview of the most important Supreme Court, Federal Circuit and District Court decisions of the past year and their effect on patent litigation.  Legislation affecting patents and patent litigation and any significant developments in U.S. Patent and Trademark rules, policies and procedures will also be covered.

Craig R. Kaufman

10:15  Networking Break

10:30  Selecting a Litigation Forum From Among the District Courts and the International Trade Commission

One of the first, and often most important, issues with which practitioners must come to terms when preparing to file a patent infringement lawsuit is the selection of the proper forum. This segment addresses the relevant considerations in play when selecting from among the various district courts, including the speed of the various courts from filing to decision, developments in transfer and venue-related law, the relative expertise and trends among the courts, and results. This segment will also address issues for consideration in connection with the filing of a complaint before the International Trade Commission under Section 337, including the speed of such investigations, conduct of the investigations, the various remedies available under Section 337, and enforcement - through the ITC and through U.S. Customs and Border Protection - of such remedies.

David Enzminger

11:30  Follow the Money: NPEs and Pre-Litigation Considerations

Rembrandts in the Attic spawned the NPEs that have filed increasing numbers of enforcement and false marking actions. Those trends, coupled with operating companies’ desires to monetize patent rights, have created a new dawn of patent litigation. We will address patent monetization practices that provide NPEs the means to institute new actions, the ways in which NPEs target defendants, the role of standards based infringement claims and the required pre-filing due diligence. Specific initial filing issues will be addressed, including applying heightened pleading standards under Twombly and Iqbal, joint infringement defenses, Rule 11 requirements and early case resolution. The panel will address cost effective case management practices, including early pleading motions, the pros and cons of joint representations versus joint defense groups and structuring effective joint defense groups by sharing resources on common issues (e.g., invalidity or unenforceability) while focusing individual party representation on unique issues (willfulness, infringement and damages). The panel will identify successful - and problematic - alternative billing arrangements available in multi-party cases.

Douglas Lichtman, Katherine Lutton, Richard Lutton, Julie Mar-Spinola, Eric Olsen

12:30  Lunch Break

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

1:45  Discovery Issues

Issues relating to the discovery of Electronically Stored Information ("ESI") continue to be the focus of recent court decisions both in the patent litigation field as well as in general commercial litigation.  These decisions make it clear that it is important for both in-house counsel and outside counsel to be well versed in the legal obligations attendant to the preservation, collection, searching and production of ESI.  This session will focus on the most recent developments in electronic discovery, but will also cover other significant discovery decisions.

J. Christopher Carraway

2:45  Parallel Patent Reexaminations

In recent years, accused infringers have increasingly sought reexamination of patents asserted against them in litigation.  Strategic considerations on whether to seek reexamination will be analyzed. This session will also address the effects of reexamination on litigation, including stays and possible collateral estoppel effects and intervening rights. The details of ex parte and inter partes reexamination in the USPTO will be explored.

Robert G. Sterne

3:45  Networking Break

4:00  In the Aftermath of In re Bilski

The controversy over the patentability of business methods and software continues even after the Federal Circuit’s en banc decision in In re Bilski.  The Supreme Court’s decision in Bilski, if issued, will be covered. This session will also explore the issues relating to the assertion of patents against internet businesses, including financial institutions and retailers.

Stephen C. Durant

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  Opinion Letters

Whether opinions of counsel are necessary or desirable after Knorr-Bremse remains an open question. This session will cover the standard of proof of willfulness after In re Seagate Technology and Broadcom v. Qualcomm, whether an opinion should be obtained, whether to waive the privilege and the scope of the waiver.

Charles S. Barquist

10:00  Contemporary Issues in Patent Royalty Damages

Royalty damages are the statutorily mandated minimum amount of damages adequate to compensate the patentee for an infringer’s unauthorized use of the patented invention. Traditionally, in the absence of an established royalty, royalty damages have been assessed by application of the well known Georgia Pacific factors and, in certain cases, use of the entire market value rule where the value of the invention extends beyond patented features to non-patented features. In recent years, the methodologies for computing royalty damages, the standards for entire market value rule and apportionment, the applicability of individual Georgia Pacific factors, and the underlying evidence have received increased scrutiny. Recent judicial opinions have sought to provide guidance on the proper assessment of royalty damages, but have also fostered additional questions relating to methodology, types of evidence, pre-trial techniques (e.g., Daubert) and proof of damages at trial. Moreover the issue of running royalty damages in lieu of a permanent injunction has also become part of this royalty damages fabric, particularly because some trial courts have submitted the running royalty issue to juries. We will explore these contemporary issues in the context of recent decisions, such as Lucent v. Gateway et al., i4i v. Microsoft, Cornell University v. Hewlett Packard, and Resqnet v. Kaplan & Gillman et al., and will focus practical strategies and ways to address royalty damages in this newly evolving environment.

Edward G. Poplawski
 
11:00  Networking Break

11:15  Dealing With Experts

Expert witnesses play a critical role in patent litigation with respect to both liability and damages issues. The selection and use of testifying and non-testifying experts, the development of expert opinions, preparation of expert reports and expert discovery, including the discoverability of drafts and communications with the expert, will be covered. This segment will also cover the use of evidentiary motions, including Daubert motions, to challenge the factual and scientific bases for expert opinions.

David Gindler

12:15  Lunch Break

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

1:45  Effective, Admissible and Visual Communications - The Art and Practice of Visual Persuasion

The age of video, PowerPoint and animation has increased the need to cost-effectively deploy visual media both pre-trial and at trial.  Techniques for creating simple, effective graphics and video presentations in communicating key points will be covered, including best practices for creating effective Markman, trial and expert graphics will be discussed. We will consider the pros and cons of claim construction tutorials, both interactive and pre-packaged, as well as effective Markman presentations. The topic includes discussion of typical graphics used in trial with experts and fact witnesses, as well as the rules governing admissibility and mechanisms for attacking misleading visual materials.

Lawrence W. Collins, David Dolkas

2:45  Networking Break

3:00  Expert Direct/Cross Demonstration & Effective Use of Visual Aids at Trial

Experts are a common fixture in patent litigation to help prove or disprove a myriad of issues relating to infringement, validity, unenforceability, and/or damages. This segment will include a demonstration of the direct and cross examination of an expert on any one of these issues in a patent suit.  Further, as most experts use demonstrative and other visual aids to make complex facts and technology more jury - and Judge - friendly, this segment will illustrate the effective use of visual aids and trial vendors to make a more cohesive and persuasive presentation.

Bryan Anderson, Edward Anderson, Sandra Fujiyama

4:00  Ethical Issues in Patent Litigation

Attorneys face ethical issues at many stages of patent litigation, beginning with Rule 11 issues in determining whether to even file a complaint for infringement.  Ethical issues frequently arise during discovery, and ethical considerations are also a factor in determining the limits of zealous advocacy as arose in the Medtronic cases.  The USPTO ethical rules are also addressed in this session.

John Steele

5:00  Adjourn

Faculty

Chairperson(s)

Edward G. Poplawski, Sidley Austin LLP

Speaker(s)

Bryan K. Anderson, Sidley Austin LLP
Edward V. Anderson, Sidley Austin LLP
Charles S. Barquist, Morrison & Foerster LLP
J. Christopher Carraway, Klarquist Sparkman, LLP
Lawrence W. Collins, Founder / Sr. Presentation Consultant, CaseSight, Inc.
David Henry Dolkas, McDermott Will & Emery LLP
Stephen C. Durant, Schwegman Lundberg Woessner PA
David Enzminger, O'Melveny & Myers LLP
Sandra S. Fujiyama, Sidley Austin LLP
David I. Gindler, Irell & Manella LLP
Craig R. Kaufman, Orrick, Herrington & Sutcliffe LLP
Douglas Lichtman, Professor of Law, UCLA School of Law
Katherine Lutton, Fish & Richardson P.C.
Richard J. Lutton, Jr., Chief Patent Counsel, Apple Inc.
Julie Mar-Spinola, Sawyer Law Group, PC
Eric Olsen, Vice President. Business Development and Legal, RPX Corporation
John Steele, Attorney at Law
Robert Green Sterne, Sterne Kessler Goldstein & Fox P.L.L.C.

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.