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2nd Annual Patent Law Institute (Live Webcast)
Jan. 28 - 29, 2008Overview
Live Webcast on January 28-29, 2008 (P.S.T.)
This is a webcast of the live San Francisco session.
Why You Should Attend
Over the last year the U.S. Supreme Court has decided several important patent cases and the Federal Circuit has issued many critical decisions. The U.S. Patent and Trademark Office has issued new rules effective November 2007. Recent court decisions and other events have greatly affected numerous aspects of U.S. and international patent licensing and related transactional practice.
The 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. 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 U.S. PTO rule changes
- Learn strategic business use of patent portfolios in view of KSR and PTO rule changes and other recent events
- Hear an international update on PCT trends and practices
- Witness a unique judges panel discussion of recent appellate decisions and the impact on pending litigation; resolution of discovery disputes and other motion practice issues; and the use of ADR
- Hot patent business and legal concerns discussed by a panel of outstanding corporate counsel
Prosecution breakout track: the new PTO rules' impact on your practice, including the Continuations/Claim limitation rules, information disclosure statements and other new rule initiatives; PTO biotech/pharma trends; the most recent version of EFSWeb and PTO Web FORMS.
Litigation breakout track: the recent appellate decisions and the impact on your practice; litigation in the Eastern District of Texas; practical guidelines for eDiscovery management; industry spotlights on pharma/biotech, electronics/semiconductor and software patent litigation.
Transaction breakout track: drafting opinions of counsel in the wake of KSR and In re Seagate; critical business considerations of a license agreement; MedImmune's impact on licensing and the effect of patent provisions of the new GPL v3 open source license agreement; 18 hidden dangers in your patent license agreement; patent valuation for litigation and licensing and patent auctions.
Who Should Attend
Special Bonus to all Registrants
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.
Schedule
- eBay v. MercExchange
- Festo v. Shoketsu Kinzoku Kogyo Kabushiki
- In re Seagate Technology
- MedImmune v. Genentech
- KSR v. Teleflex
- SanDisk v. STMicroelectronics
Douglas R. Nemec, Moderator; Laurence H. Pretty
10:15 Break
10:30 PTO Law and Rule Change Update
Once again the PTO has outdone itself in making the practitioners life challenging. Rule package after rule package seems to break over the MPEP and, not to leave out statutory adjustments, a summary of what is done, and what is yet to come for 2008!
John M. White, Moderator; Robert A. Clarke, Robert J. Spar, Kenneth D. Wilcox
11:30 Developing and Maintaining Patent Portfolios in View of Recent Case Law and PTO Rule Changes
- Building the strategic, business relevant portfolio
- Portfolio strategy changes in view of KSR v. Teleflex, PTO Rule changes, and other recent events
- Large versus small company perspective
Scott M. Alter, Moderator; Timothy M. Farrell, David E. Foster
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m. (P.S.T.)
(Breakout Tracks)
Please note: Webcast viewers will be seeing the litigation breakout track; the prosecution and transactional tracks will be made available online as archived audio-only programs after February 12, 2008, on the PLI website.
1:45 Litigation
Litigation in the Eastern District of Texas
- Insight into why the Eastern District of Texas has suddenly become the most popular jurisdiction for bringing patent infringement actions
- Practical advice from attorneys with experience in this district on how cases are handled and what to expect in the Eastern District of Texas
- Overview of the patent local rules and practices of individual judges
Sean Aaron Luner, Andrew W. Spangler
PTO Rules Breakout I - Continuations/Representative Claim Rule Packages
- Strategies to deal with the imposed limits
- Basis for exceptions to limits
- What are the penalties
John M. White, Moderator; Robert A. Clarke, Robert J. Spar
- Willful infringement standards after Seagate
- Proper drafting of "competent" opinions of counsel, and when to obtain them
- Updating Opinions
- Waiver of privilege
Robert E. Camors, Jr., Marc A. Sockol
2:45 Break
3:00 Litigation
Practical Guidelines for Managing eDiscovery Without Breaking the Bank
- Review of the year-old eDiscovery rules
- Practical advice on how to make eDiscovery more effective and less costly
- Potential pitfalls in the new age of discovery and how to avoid them
Jennifer E. Lacroix
- The 4 period IDS
- The examination support document
- Markush limits; the end of alternatives?
- Critical legal/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, Joseph Yang
4:00 Litigation
Industry Spotlights: Recent Developments in Pharmaceutical, Biotech, Electronics/Semiconductor and Software Patent Litigation
- Recent developments in industry-specific caselaw and legislation
- Differential impact of recent Supreme Court cases on litigating patents in various technologies
- Industry issues expected to be addressed in the near future
Michael A. Davitz, Edward R. Reines
- The situation on the ground; whats in, whats out
- The contenders and their supporters
- Where the PTO fits in
- Patent harmonization; sharing the burden around the globe
John M. White, Moderator; Kenneth D. Wilcox
- Antitrust and formation considerations
- Effectiveness of current standards setting and associated patent licensing system
- Recent cases and issues
Douglas B. Luftman, Gil Ohana
5:00 Adjourn
(Breakout Tracks)
Recent Decisions in Antitrust Law and Their Effect on Patent Litigation
- Impact of MedImmune v. Genentech on patent settlement agreements
- Will Illinois Tool Works v. Independent Ink mean the return of tying arrangements?
- The Supreme Courts role in defining the patent/antitrust interface, especially in the area of pharmaceutical patent litigation
Asim Bhansali
- Impact of KSR on the PTO obviousness assessments
- Are biotech and pharma being held to a higher standard?
- Costly mistakes to avoid
John M. White, Moderator; Leonard Richard Svensson
- The effect of MedImmune v. Genentech on drafting and negotiating strategies for license agreements
- Effect of patent provisions of the new GPL v3 open source license agreement
Raymond T. Nimmer
10:00 Break
10:15 Litigation
The Future of Business Method Patents
- Current attitudes of the PTO, the courts and the legislature towards business method patents
- Practical advice on how to shield business method patents from KSR-type obviousness challenges
- How to mount effective challenges to business method patents in litigation
Kimberly N. Van Voorhis
- Complete paperlessness: from your screen to the PTO IFW
- How to change: the habits that need to be tossed
- A day-in-the-life of a 21st-century e-office
- Exhaustion dangers
- Dangers concerning patent tax issues
- Patent expiration dangers
- The Changing Landscape of Obviousness in the Wake of KSR
- Impact of KSR on the Teaching, Suggestion, or Motivation ("TSM") test
- Subsequent Federal Circuit and district court interpretations of KSR
- Affect of the new obviousness standard on trial strategy, including experts, jury instructions and demonstratives
- What to do when PTO derived ethical standards seemingly conflict in others areas of practice, e.g., litigation?
- What is customary in one may be forbidden, or even per se inequitable conduct, in the other
- What was privileged or work product in most types of litigation have not been so in patent litigation
- How should you modify the way you practice in light of recent Court trends?
- Valuing for litigation and licensing
- Real options techniques to valuing technology
- Revenue stream modeling
- The evolving IP marketplace
- Intellectual asset management vs. (traditional) asset management
- The IP marketplace and the IP auction
- IP in investing and new IP-type financial transactions
Thomas D. Vander Veen, Ph.D.
12:15 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m. (P.S.T.)
(Plenary Sessions)
1:45 International Update: The Language of PCT
- PCT trends and practices
- Unique PCT litigation pitfalls
- What you should know about PCT (but were afraid to ask!)
Richard B. Lazarus
2:45 Break
3:00 Corporate Counsel Panel
- Obtaining and using opinions of counsel post In re Seagate
- Effects of recent Supreme Court and legislative activity
- Other patent issues weighing on the minds of corporate counsel
Marta Y. Beckwith, Edward L. (Ed) Levine, Allen M. Lo, Rick Weisberg
4:00 Judges Panel
- Perspectives on effective trial presentation
- Attitudes toward and advice on alternative dispute resolution
- Reactions to recent Supreme Court and Federal Circuit decisions
- Discovery disputes and other motion practice: when and how to make the best use of motion practice
Paul R. Gupta, Moderator; Hon. Elizabeth D. Laporte, Hon. John C. Lifland (Ret.), Hon. Fern N. Smith (Ret.), Hon. James Ware
Faculty
Co-Chair(s)
Scott M. Alter, Faegre & Benson LLPDouglas R. Nemec, Skadden, Arps, Slate, Meagher & Flom LLP
John M. White, Berenato & White, LLC; Director of Patent Professional Development, Practising Law Institute
Speaker(s)
Marta Y. Beckwith, Director, IP Litigation, Cisco Systems, Inc.Asim Bhansali, Keker,& Van Nest LLP
Robert E. Camors, Jr., Thelen LLP
Robert A. Clarke, Chief of Staff, United States Patent and Trademark Office, Office of Patent Legal Administration
Michael A. Davitz, M.D., Axinn, Veltrop & Harkrider LLP
Timothy M. Farrell, Patent Portfolio Manager, Network Computing, IBM Corporation
David E. Foster, Intellectual Property Counsel, Actel Corporation
Paul R. Gupta, Orrick, Herrington & Sutcliffe LLP
Mark S. Holmes, CEO, PatentBridge LLC
Peter J. Kinsella, Perkins Coie LLP
Jennifer E. Lacroix, DLA Piper LLP (US)
Hon. Elizabeth D. Laporte, Magistrate Judge, United States District Court, Northern District of California
Richard B. Lazarus, Barnes & Thornburg LLP
Edward L. Levine, Senior Intellectual Property Attorney, Cargill, Incorporated
Hon. John C. Lifland (Ret.), District Judge, JAMS
Allen M. Lo, Vice President, Intellectual Property, Juniper Networks, Inc.
Douglas B. Luftman, Associate General Counsel, Intellectual Property, Palm, Inc.
Sean Aaron Luner, Dovel & Luner LLP
Raymond T. Nimmer, Dean & Leonard H. Childs Professor of Law, University of Houston Law Center
Gil Ohana, Wilmer Cutler Pickering Hale and Dorr
Laurence H. Pretty, The Law Office of Laurence H. Pretty
Mohan Rao, Ph.D., Director, LECG, LLC
Edward R. Reines, Weil, Gotshal & Manges LLP
Jeffrey G. Sheldon, Sheldon Mak Rose & Anderson PC
Keith L. Slenkovich, Thelen LLP
Hon. Fern M. Smith (Ret.), District Judge, JAMS
Marc A. Sockol, Sheppard Mullin Richter & Hampton LLP
Andrew W. Spangler, Spangler Law P.C.
Robert J. Spar, Director (Retired), Office of Patent Legal Administration, United States Patent and Trademark Office
Leonard Richard Svensson, Birch, Stewart, Kolasch & Birch, LLP
Kimberly N. Van Voorhis, Morrison & Foerster LLP
Thomas D. Vander Veen, Ph.D., Senior Managing Economist, LECG, LLC
Hon. James Ware, United States District Judge, United States District Court, Northern District of California
Rick Weisberg, Director of Intellectual Property and Business Partnering, Sun Microsystems, Inc.
Kenneth D. Wilcox, Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
Joseph Yang, PatentEsque Law Group, LLP
Program Attorney(s)
John M. Mola, Practising Law InstituteCLE Credit
PLI makes every effort to accredit its Live Webcasts. Please check the CLE Calculator above for CLE information specific to your state.
PLI's Live Webcasts are approved for MCLE credit (unless otherwise noted in the product description) in the following states/territories:
Alabama, Alaska, Arizona, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana1, Iowa*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York2, Ohio3, Oklahoma, Oregon*, Pennsylvania4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.
*PLI will apply for credit upon request.
Arkansas, Mississippi, Ohio, Oklahoma, and Rhode Island: Audio-only live webcasts are not approved for credit.
1Indiana: Considered a distance education course. There is a 6 credit limit per year.
2 New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.
3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.
4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.
Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon speakers.
Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.
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