Seminar  Program

Patent Law Institute 2018: Critical Issues & Best Practices


Select a Location:

Please note the Plenary Sessions and Strategic & Transactional Breakout Sessions will be available via the Live Webcast in New York.

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 six plenary sessions of interest to all patent lawyers and six breakout sessions in each of the three subgroups.

Topics Include:
• New! Judges, in-house counsel, and outside counsel discuss the future of the profession, including training young attorneys, managing increasing client demands, and promoting diversity
• New! Judges decide discovery disputes in real time with insider feedback
• New! Damages experts highlight best practices for marshalling and presenting evidence
• Updated! Experts weigh in on how the Trump administration has changed patent policy and practice
• Updated! Corporate counsel discuss how to build a strong patent portfolio
• Updated! Review and analysis of recent Supreme Court and Federal Circuit decisions
• Updated! Federal judges from increasingly relevant patent venues provide insights on patent litigation
• Updated! What effect does Halo continue to have on willful infringement, enhanced damages and opinions of counsel
• Updated! Prosecution "safe harbors" for computer methods and medical therapies in view of Supreme Court and Federal Circuit decisions and USPTO guidelines

Breakout sessions include:
Prosecution Breakout Track: Two sessions focused on the latest USPTO rulemaking efforts. Painlessly stay current with the rulemakers and guideline writer priorities: correcting filing receipts, ePetition filing, PPH and correcting the ADS! How has "regime change" affected the USPTO in the near and medium term? Are the emphasis and/or methods changing?

The USPTO is all about the Supreme Court, CAFC and PTAB. Is ongoing incremental change at the USPTO is what we can expect? Are software-implemented methods making a comeback in view of new policies? Do the PTO Guidelines reflect reality - or some USPTO variation – in the law? Is the CAFC getting a "handle" on how to implement Supreme Court decisions? Come to our USPTO intensive breakouts for Chemical, Bio and Software Practice and discover the trends!

Litigation Breakout Track: The changing landscape of patent litigation post-TC Heartland; comparative analysis of litigation procedures in foreign courts; PTAB practice overview – the latest law and statistics concerning IPR, CBM and PGR proceedings; hot topics in litigation ethics; and strategies for proving and defending patent damages.

Strategic/Transactional Breakout Track: The key issues concerning patent-eligible subject matter and enhanced damages in view of recent Federal Circuit decisions that continue to greatly affect patent practitioners; hot topics in patent licensing that every transactional lawyer should know (but might not); and what U.S. practitioners need to know about prosecuting and opposing applications in Europe

Special Features
• Earn TWO hours of Ethics credit!
• Customize your Institute by choosing from 18 breakout sessions!

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.


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.

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

9:00 Opening Remarks
Scott M. Alter, Douglas R. Nemec, John M. White

9:15 Keynote Presentation: A System-Wide Patent Report Card
• Supreme Court reflections and directions
• CAFC on District Court and PTAB decisions
• Legislative momentum
• Suggestions for decision makers
• The role practitioners can play
Hon. Paul R. Michel (Ret.)

10:15 Patent Law: A Year of Supreme Court and Federal Circuit Decisions in Review
• Supreme Court review: what was decided and what is pending
• Future of the IPR after Oil States
• Reinterpreted venue restrictions after TC Heartland
• Patent amendment rules following Aqua Products
Annemarie Hassett

11:15 Networking Break

11:30 The Future of the Patent Law Profession
• Perspectives on training young attorneys inside and outside the courtroom
• Billing and staffing practices: evolutions, revolutions, and revolts
• Promoting diversity in the patent law profession
• Relationships between clients and outside counsel
Douglas R. Nemec, Panel Leader; Hon. Denise L. Cote, Kevin B. Jordan, Diana G. Santos

12:30 Lunch

1:45 Breakout Session No. 1a: Litigation – Bowling for Dollars: Tips for Preparing and Presenting Patent Damages Evidence for Trial
• Strategies for marshalling effective damages evidence during discovery
• Techniques for presenting damages evidence to juries and judges effectively
• Emphasizing core themes and incorporating story-telling into damages testimony
• Cross-applying damages expertise on non-damages issues
Dawn Rice Hall, L. Scott Oliver

1:45 Breakout Session No. 1b: Prosecution – USPTO Rules to Remember
• Securing a filing date: Rule 53, filling alternatives
• Submitting an Oath/Declaration: Rule 60 – what could be a problem?
• Duty of Disclosure: Rule 56 – Can prior art be auto-cited from related cases?
• Representing the “applicant” - power of attorney
• Proposed new fee package and practice impacts
Brian Hanlon (Invited)

1:45 Breakout Session No. 1c: Strategic & Transactional – The Top Hot Topics in Patent Licensing: What You Don’t Know Can Hurt You*
• Fallout from Lexmark - what to do now
• What are the big issues facing patent owners trying to license their patents?
• How can patent owners maximize license revenue?
• What are the most common mistakes in drafting agreements?
D. Brian Kacedon

2:45 Breakout Session No. 2a: Litigation – Uncertain Future: Implications of Supreme Court Jurisprudence on Inter Partes Review
• Constitutionality of Inter Partes Review in light of Oil States
• The PTAB’s ability to determine which claims must be instituted
• Evolving procedures for claim amendments before the PTAB
• The continued role of the PTAB in patent practice
James R. Klaiber

2:45 Breakout Session No. 2b: Prosecution – USPTO Rules to Learn to Improve Prosecution Effectiveness
• Track 1 Prioritized Examination
• Interview before 1st Action
• After Final pilot - extra time for examiner
• QPIDS - the extra IDS filing
Brian Hanlon (Invited)

2:45 Breakout Session No. 2c: Strategic & Transactional – What Patent Practitioners Need to Know About Drafting U.S. Applications for Filing Worldwide*
• Best practices for avoiding long-term issues and expenses
• IT and Biochem Patent issues outside the U.S.
• Why to file in some countries, but not in others
• Practice issues that may surprise you
Valerie Calloway, Tobias Hahn, Robert D. Wells

3:45 Networking Break

4:00 Breakout Session No. 3a: Litigation – Navigating the Ethical Quagmire: A Patent Practitioner’s Journey
• Spoliation under the updated Rule 37 standard
• The ethical implications of third party patent monitoring
• Unauthorized practice of law and the proper scope of pro hac vice practice
• Client’s duty to perform patent searches
• Inequitable conduct following Regeneron
Noah M. Leibowitz

4:00 Breakout Session No. 3b: Prosecution – Avoiding Patent Malpractice at the USPTO
• Differences in the USPTO Ethics Rules and the ABA Model Rules
• Recent disciplinary decisions from the Office of Enrollment & Discipline
• Spillover Ethical issues: prosecution to litigation
Eugene R. Quinn, Jr.

4:00 Breakout Session No. 3c: Strategic & Transactional – Outsourcing Legal Services and Functions: What Patent Prosecutors and Litigators Need to Know to Survive*
• Supervising and diligence to ensure outsourced work is compatible with ethical obligations
• Protecting client confidentiality
• Obtaining client consent and reasonableness of fees
• Avoiding the unauthorized practice of law
Prof. Lisa A. Dolak

5:00 Adjourn

*Live Webcast of breakout session


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

9:00 Breakout Session No. 4a: Litigation – Point Counter-Point: A Patent Practitioner’s Tennis Match with a Judicial Umpire
• Common discovery tactics for both plaintiff and defense counsel
• Judicial determination of disputed discovery issues
• Practice points for perfecting a winning argument in the future
• Discovery disputes worth fighting
Marti A. Johnson, Panel Leader; Hon. Christopher J. Burke, Matthew Moffa

9:00 Breakout Session No. 4b: Prosecution – Recent Developments in Chem/Pharma and Bio Patents
• Claim interpretation from District Court Decisions
• Claim interpretation as it relates to infringement and validity
• Rule 12 motions: 35 USC 101 patent subject matter eligibility
Gerald M. Murphy, Jr.

9:00 Breakout Session No. 4c: Strategic & Transactional – Why Do Your iPhone and Other Electronics Cost So Much?! Who Do Patent Pools Really Benefit?*
• The current and future effects of multiple patent pools on licensing
• What are the motivations and business models behind recent pools? 
• How does cross-licensing affect your decision to license from a pool?
• Dealing with patent pools as a potential licensee and/or licensor
Judson Cary, Tony E. Piotrowski

10:00 Breakout Session No. 5a: Litigation – Musical Chairs in Patent Venue: The Practical Implications of TC Heartland
• Comparison of various venues for patent litigation suitability
• Analysis of the effects of TC Heartland in practice
• Review of various local rules benefiting patent litigation
• Predictions of future “patent venues”
Sapna W. Palla

10:00 Breakout Session No. 5b: Prosecution – PTAB Decisions for Chem/Pharma and Bio Patents
• Case studies in recent PTAB trials and related appeals.
• Tips to Win: PTAB trials and procedures.
• Recent ex parte PTAB decisions.
• Updates to USPTO 101 Guidelines
Gerald M. Murphy, Jr.

10:00 Breakout Session No. 5c: Strategic & Transactional – The Fast-Changing World of Software-Related Patents: Critical Issues You Need to Know Now*
• Operating in a Post-Alice World: Has the pendulum begun to swing?
• The stealthy effects of functional claiming under Section 112
• Practical litigation and prosecution advice for dealing with software patents
Richard M. Marsh, Jr., Mark C. Vallone

11:00 Networking Break

11:15 Breakout Session No. 6a: Litigation – International Patent Litigation: A World Tour of Patent Enforcement
• Comparison of major patent venues including U.S., Germany, China, and others
• Review of remedies and the various methods for seeking them in foreign jurisdictions
• Procedural restrictions and hurdles around the globe
• Coordinating multi-national patent right enforcement strategies
Douglas R. Nemec

11:15 Breakout Session No. 6b: Prosecution – Software-Implemented Methods at the USPTO
• The current 101 Guidelines.
• Any safe harbors in sight - CAFC?
• How much “system” is necessary?
• Is the playing field leveling AU to AU?
• Where is this headed - trends.
Raina S. Haque

11:15 Breakout Session No. 6c: Strategic & Transactional – Building a Strong Patent Portfolio: Views from In-House*
• Strategic considerations
• The role of outside counsel
• Cost-effective strategies for enhancing patent quality
Subroto Bose, Mark J. Schildkraut, Robert J. Sinnema, Catherine J. Toppin

12:15 Lunch

1:45 Halo and Its Effect on Willful Infringement and Enhanced Damages
• Trends in the lower courts post-Halo
• Current effect of opinions of counsel for mitigating willful infringement and enhanced damages
• Practical considerations when receiving unsolicited letters
Scott M. Alter, Jon R. Trembath

2:45 Corporate Counsel Panel: What's Keeping Corporate Counsel Awake at Night
• Effects of recent court decisions and USPTO activity
• Concerns regarding newly enacted and pending legislation
• The economy . . .
• Other patent issues weighing on the minds of corporate counsel
Robert DeBerardine, Vladimir Elgort, James E. Hanft, Steven P. Klocinski, Ryan D. Phillips

3:45 Networking Break

4:00 Ethics for Patent Practitioners
• Rapid innovation can lead to ethics issues of delayed filings - in a first to file system
• Ethics surrounding advise in the circumstance of a weakened patent regime
• Writing applications to set up provisional damages - ethics of published applications
• To patent or not to patent - the ethics of Trade secret style protection
• Reducing pendency via Track 1 examination - ethics regarding term commencement
Prof. David Hricik

5:00 Adjourn

*Live Webcast of breakout session


Co-Chair(s)
Scott M. Alter ~ Lathrop Gage LLP
Douglas R. Nemec ~ Skadden, Arps, Slate, Meagher & Flom LLP
John M. White ~ Director, Soryn IP Group; Berenato & White, LLC
Speaker(s)
Subroto Bose ~ Dolby Laboratories, Inc.
Hon. Christopher J. Burke ~ Magistrate Judge, United States District Court, District of Delaware
Valerie Calloway ~ Chief Intellectual Property Counsel, Alltech, Inc.
Judson Cary ~ Vice President and Deputy General Counsel, CableLabs
Hon. Denise L. Cote ~ United States District Judge, United States District Court, Southern District of New York
Robert DeBerardine ~ Chief Intellectual Property Counsel, Johnson & Johnson
Prof. Lisa A. Dolak ~ Senior Vice President and University Secretary, Angela S. Cooney Professor of Law, Syracuse University College of Law
Vladimir Elgort ~ Vice President, Intellectual Property Counsel, Sony Corporation of America
Tobias Hahn ~ Hoyng Rokh Monegier
Dawn Rice Hall ~ Managing Director - Forensic & Litigation Consulting, FTI Consulting, Inc.
James E. Hanft ~ Director and Corporate Counsel, IP, DISH Network
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Raina S. Haque ~ Erdos Intellectual Property Law + Startup Legal
Annemarie Hassett ~ Executive Director, Engelberg Center on Innovation Law & Policy, NYU School of Law
Prof. David Hricik ~ Professor of Law, Mercer University School of Law
Marti A. Johnson ~ Skadden, Arps, Slate, Meagher & Flom LLP
Kevin B. Jordan ~ Vice President and Assistant General Counsel, IP Law, Corporate and Regulatory, JP Morgan Chase & Co.
D. Brian Kacedon ~ Finnegan Henderson Farabow Garrett & Dunner LLP
James R. Klaiber ~ Hughes Hubbard & Reed LLP
Steven P. Klocinski ~ Senior Managing Counsel, Senior IP Counsel, Mastercard
Noah M. Leibowitz ~ Simpson Thacher & Bartlett LLP
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Matthew Moffa ~ Perkins Coie LLP
Gerald M. Murphy, Jr. ~ Birch, Stewart, Kolasch & Birch, LLP
L. Scott Oliver ~ Orrick, Herrington & Sutcliffe LLP
Sapna W. Palla ~ Wiggin & Dana LLP
Ryan D. Phillips ~ Director and Managing IP Counsel, Broadcom Limited
Tony E. Piotrowski ~ MPEG LA LLC
Eugene R. Quinn, Jr. ~ President and Founder, IPWatchdog.com, IP Watchdog, Inc.
Diana G. Santos ~ Willkie Farr & Gallagher LLP
Mark J. Schildkraut ~ Assistant General Counsel - IP and Cybersecurity, Becton, Dickinson and Company
Robert Sinnema ~ Vice President and Counsel, Intellectual Property, Sikorsky, a Lockheed Martin Company
Catherine J. Toppin ~ Senior Patent Counsel and Manager, GE Global Patent Operation
Jon R. Trembath ~ Lathrop Gage LLP
Mark C. Vallone ~ IP Counsel, IBM Cloud and Watson Customer Engagement, IBM Corp
Robert D. Wells ~ Rock IP, PLLC
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

New York City Seminar Location

PLI New York Center
, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. (800) 260-4754.

New York City Hotel Accommodations

Crowne Plaza Times Square Manhattan, 1605 Broadway (at 48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.

The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute and rate code PLII. You can also Book Online- Kimpton.

Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. You can also book online.

Hyatt Times Square, 135 W. 45th Street, New York, NY 10036. For reservations, please call (646) 364-1234. When calling mention rate code CR56218 or Practising Law Institute.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

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Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

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Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

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Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

 

Please note the Plenary Sessions and Strategic & Transactional Breakout Sessions will be available via the Live Webcast in New York.

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 six plenary sessions of interest to all patent lawyers and six breakout sessions in each of the three subgroups.

Topics Include:
• New! Judges, in-house counsel, and outside counsel discuss the future of the profession, including training young attorneys, managing increasing client demands, and promoting diversity
• New! Judges decide discovery disputes in real time with insider feedback
• New! Damages experts highlight best practices for marshalling and presenting evidence
• Updated! Experts weigh in on how the Trump administration has changed patent policy and practice
• Updated! Corporate counsel discuss how to build a strong patent portfolio
• Updated! Review and analysis of recent Supreme Court and Federal Circuit decisions
• Updated! Federal judges from increasingly relevant patent venues provide insights on patent litigation
• Updated! What effect does Halo continue to have on willful infringement, enhanced damages and opinions of counsel
• Updated! Prosecution "safe harbors" for computer methods and medical therapies in view of Supreme Court and Federal Circuit decisions and USPTO guidelines

Breakout sessions include:
Prosecution Breakout Track: Two sessions focused on the latest USPTO rulemaking efforts. Painlessly stay current with the rulemakers and guideline writer priorities: correcting filing receipts, ePetition filing, PPH and correcting the ADS! How has "regime change" affected the USPTO in the near and medium term? Are the emphasis and/or methods changing?

The USPTO is all about the Supreme Court, CAFC and PTAB. Is ongoing incremental change at the USPTO is what we can expect? Are software-implemented methods making a comeback in view of new policies? Do the PTO Guidelines reflect reality - or some USPTO variation – in the law? Is the CAFC getting a "handle" on how to implement Supreme Court decisions? Come to our USPTO intensive breakouts for Chemical, Bio and Software Practice and discover the trends!

Litigation Breakout Track: The changing landscape of patent litigation post-TC Heartland; comparative analysis of litigation procedures in foreign courts; PTAB practice overview – the latest law and statistics concerning IPR, CBM and PGR proceedings; hot topics in litigation ethics; and strategies for proving and defending patent damages.

Strategic/Transactional Breakout Track: The key issues concerning patent-eligible subject matter and enhanced damages in view of recent Federal Circuit decisions that continue to greatly affect patent practitioners; hot topics in patent licensing that every transactional lawyer should know (but might not); and what U.S. practitioners need to know about prosecuting and opposing applications in Europe

Special Features
• Earn TWO hours of Ethics credit!
• Customize your Institute by choosing from 18 breakout sessions!

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.


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.

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

9:00 Opening Remarks
Scott M. Alter, Douglas R. Nemec, John M. White

9:15 Keynote Presentation: A System-Wide Patent Report Card
• Supreme Court reflections and directions
• CAFC on District Court and PTAB decisions
• Legislative momentum
• Suggestions for decision makers
• The role practitioners can play
Hon. Paul R. Michel (Ret.)

10:15 Patent Law: A Year of Supreme Court and Federal Circuit Decisions in Review
• Supreme Court review: what was decided and what is pending
• Future of the IPR after Oil States
• Reinterpreted venue restrictions after TC Heartland
• Patent amendment rules following Aqua Products
Annemarie Hassett

11:15 Networking Break

11:30 The Future of the Patent Law Profession
• Perspectives on training young attorneys inside and outside the courtroom
• Billing and staffing practices: evolutions, revolutions, and revolts
• Promoting diversity in the patent law profession
• Relationships between clients and outside counsel
Douglas R. Nemec, Panel Leader; Hon. Denise L. Cote, Kevin B. Jordan, Diana G. Santos

12:30 Lunch

1:45 Breakout Session No. 1a: Litigation – Bowling for Dollars: Tips for Preparing and Presenting Patent Damages Evidence for Trial
• Strategies for marshalling effective damages evidence during discovery
• Techniques for presenting damages evidence to juries and judges effectively
• Emphasizing core themes and incorporating story-telling into damages testimony
• Cross-applying damages expertise on non-damages issues
Dawn Rice Hall, L. Scott Oliver

1:45 Breakout Session No. 1b: Prosecution – USPTO Rules to Remember
• Securing a filing date: Rule 53, filling alternatives
• Submitting an Oath/Declaration: Rule 60 – what could be a problem?
• Duty of Disclosure: Rule 56 – Can prior art be auto-cited from related cases?
• Representing the “applicant” - power of attorney
• Proposed new fee package and practice impacts
Brian Hanlon (Invited)

1:45 Breakout Session No. 1c: Strategic & Transactional – The Top Hot Topics in Patent Licensing: What You Don’t Know Can Hurt You*
• Fallout from Lexmark - what to do now
• What are the big issues facing patent owners trying to license their patents?
• How can patent owners maximize license revenue?
• What are the most common mistakes in drafting agreements?
D. Brian Kacedon

2:45 Breakout Session No. 2a: Litigation – Uncertain Future: Implications of Supreme Court Jurisprudence on Inter Partes Review
• Constitutionality of Inter Partes Review in light of Oil States
• The PTAB’s ability to determine which claims must be instituted
• Evolving procedures for claim amendments before the PTAB
• The continued role of the PTAB in patent practice
James R. Klaiber

2:45 Breakout Session No. 2b: Prosecution – USPTO Rules to Learn to Improve Prosecution Effectiveness
• Track 1 Prioritized Examination
• Interview before 1st Action
• After Final pilot - extra time for examiner
• QPIDS - the extra IDS filing
Brian Hanlon (Invited)

2:45 Breakout Session No. 2c: Strategic & Transactional – What Patent Practitioners Need to Know About Drafting U.S. Applications for Filing Worldwide*
• Best practices for avoiding long-term issues and expenses
• IT and Biochem Patent issues outside the U.S.
• Why to file in some countries, but not in others
• Practice issues that may surprise you
Valerie Calloway, Tobias Hahn, Robert D. Wells

3:45 Networking Break

4:00 Breakout Session No. 3a: Litigation – Navigating the Ethical Quagmire: A Patent Practitioner’s Journey
• Spoliation under the updated Rule 37 standard
• The ethical implications of third party patent monitoring
• Unauthorized practice of law and the proper scope of pro hac vice practice
• Client’s duty to perform patent searches
• Inequitable conduct following Regeneron
Noah M. Leibowitz

4:00 Breakout Session No. 3b: Prosecution – Avoiding Patent Malpractice at the USPTO
• Differences in the USPTO Ethics Rules and the ABA Model Rules
• Recent disciplinary decisions from the Office of Enrollment & Discipline
• Spillover Ethical issues: prosecution to litigation
Eugene R. Quinn, Jr.

4:00 Breakout Session No. 3c: Strategic & Transactional – Outsourcing Legal Services and Functions: What Patent Prosecutors and Litigators Need to Know to Survive*
• Supervising and diligence to ensure outsourced work is compatible with ethical obligations
• Protecting client confidentiality
• Obtaining client consent and reasonableness of fees
• Avoiding the unauthorized practice of law
Prof. Lisa A. Dolak

5:00 Adjourn

*Live Webcast of breakout session


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

9:00 Breakout Session No. 4a: Litigation – Point Counter-Point: A Patent Practitioner’s Tennis Match with a Judicial Umpire
• Common discovery tactics for both plaintiff and defense counsel
• Judicial determination of disputed discovery issues
• Practice points for perfecting a winning argument in the future
• Discovery disputes worth fighting
Marti A. Johnson, Panel Leader; Hon. Christopher J. Burke, Matthew Moffa

9:00 Breakout Session No. 4b: Prosecution – Recent Developments in Chem/Pharma and Bio Patents
• Claim interpretation from District Court Decisions
• Claim interpretation as it relates to infringement and validity
• Rule 12 motions: 35 USC 101 patent subject matter eligibility
Gerald M. Murphy, Jr.

9:00 Breakout Session No. 4c: Strategic & Transactional – Why Do Your iPhone and Other Electronics Cost So Much?! Who Do Patent Pools Really Benefit?*
• The current and future effects of multiple patent pools on licensing
• What are the motivations and business models behind recent pools? 
• How does cross-licensing affect your decision to license from a pool?
• Dealing with patent pools as a potential licensee and/or licensor
Judson Cary, Tony E. Piotrowski

10:00 Breakout Session No. 5a: Litigation – Musical Chairs in Patent Venue: The Practical Implications of TC Heartland
• Comparison of various venues for patent litigation suitability
• Analysis of the effects of TC Heartland in practice
• Review of various local rules benefiting patent litigation
• Predictions of future “patent venues”
Sapna W. Palla

10:00 Breakout Session No. 5b: Prosecution – PTAB Decisions for Chem/Pharma and Bio Patents
• Case studies in recent PTAB trials and related appeals.
• Tips to Win: PTAB trials and procedures.
• Recent ex parte PTAB decisions.
• Updates to USPTO 101 Guidelines
Gerald M. Murphy, Jr.

10:00 Breakout Session No. 5c: Strategic & Transactional – The Fast-Changing World of Software-Related Patents: Critical Issues You Need to Know Now*
• Operating in a Post-Alice World: Has the pendulum begun to swing?
• The stealthy effects of functional claiming under Section 112
• Practical litigation and prosecution advice for dealing with software patents
Richard M. Marsh, Jr., Mark C. Vallone

11:00 Networking Break

11:15 Breakout Session No. 6a: Litigation – International Patent Litigation: A World Tour of Patent Enforcement
• Comparison of major patent venues including U.S., Germany, China, and others
• Review of remedies and the various methods for seeking them in foreign jurisdictions
• Procedural restrictions and hurdles around the globe
• Coordinating multi-national patent right enforcement strategies
Douglas R. Nemec

11:15 Breakout Session No. 6b: Prosecution – Software-Implemented Methods at the USPTO
• The current 101 Guidelines.
• Any safe harbors in sight - CAFC?
• How much “system” is necessary?
• Is the playing field leveling AU to AU?
• Where is this headed - trends.
Raina S. Haque

11:15 Breakout Session No. 6c: Strategic & Transactional – Building a Strong Patent Portfolio: Views from In-House*
• Strategic considerations
• The role of outside counsel
• Cost-effective strategies for enhancing patent quality
Subroto Bose, Mark J. Schildkraut, Robert J. Sinnema, Catherine J. Toppin

12:15 Lunch

1:45 Halo and Its Effect on Willful Infringement and Enhanced Damages
• Trends in the lower courts post-Halo
• Current effect of opinions of counsel for mitigating willful infringement and enhanced damages
• Practical considerations when receiving unsolicited letters
Scott M. Alter, Jon R. Trembath

2:45 Corporate Counsel Panel: What's Keeping Corporate Counsel Awake at Night
• Effects of recent court decisions and USPTO activity
• Concerns regarding newly enacted and pending legislation
• The economy . . .
• Other patent issues weighing on the minds of corporate counsel
Robert DeBerardine, Vladimir Elgort, James E. Hanft, Steven P. Klocinski, Ryan D. Phillips

3:45 Networking Break

4:00 Ethics for Patent Practitioners
• Rapid innovation can lead to ethics issues of delayed filings - in a first to file system
• Ethics surrounding advise in the circumstance of a weakened patent regime
• Writing applications to set up provisional damages - ethics of published applications
• To patent or not to patent - the ethics of Trade secret style protection
• Reducing pendency via Track 1 examination - ethics regarding term commencement
Prof. David Hricik

5:00 Adjourn

*Live Webcast of breakout session


Co-Chair(s)
Scott M. Alter ~ Lathrop Gage LLP
Douglas R. Nemec ~ Skadden, Arps, Slate, Meagher & Flom LLP
John M. White ~ Director, Soryn IP Group; Berenato & White, LLC
Speaker(s)
Subroto Bose ~ Dolby Laboratories, Inc.
Hon. Christopher J. Burke ~ Magistrate Judge, United States District Court, District of Delaware
Valerie Calloway ~ Chief Intellectual Property Counsel, Alltech, Inc.
Judson Cary ~ Vice President and Deputy General Counsel, CableLabs
Hon. Denise L. Cote ~ United States District Judge, United States District Court, Southern District of New York
Robert DeBerardine ~ Chief Intellectual Property Counsel, Johnson & Johnson
Prof. Lisa A. Dolak ~ Senior Vice President and University Secretary, Angela S. Cooney Professor of Law, Syracuse University College of Law
Vladimir Elgort ~ Vice President, Intellectual Property Counsel, Sony Corporation of America
Tobias Hahn ~ Hoyng Rokh Monegier
Dawn Rice Hall ~ Managing Director - Forensic & Litigation Consulting, FTI Consulting, Inc.
James E. Hanft ~ Director and Corporate Counsel, IP, DISH Network
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Raina S. Haque ~ Erdos Intellectual Property Law + Startup Legal
Annemarie Hassett ~ Executive Director, Engelberg Center on Innovation Law & Policy, NYU School of Law
Prof. David Hricik ~ Professor of Law, Mercer University School of Law
Marti A. Johnson ~ Skadden, Arps, Slate, Meagher & Flom LLP
Kevin B. Jordan ~ Vice President and Assistant General Counsel, IP Law, Corporate and Regulatory, JP Morgan Chase & Co.
D. Brian Kacedon ~ Finnegan Henderson Farabow Garrett & Dunner LLP
James R. Klaiber ~ Hughes Hubbard & Reed LLP
Steven P. Klocinski ~ Senior Managing Counsel, Senior IP Counsel, Mastercard
Noah M. Leibowitz ~ Simpson Thacher & Bartlett LLP
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
Matthew Moffa ~ Perkins Coie LLP
Gerald M. Murphy, Jr. ~ Birch, Stewart, Kolasch & Birch, LLP
L. Scott Oliver ~ Orrick, Herrington & Sutcliffe LLP
Sapna W. Palla ~ Wiggin & Dana LLP
Ryan D. Phillips ~ Director and Managing IP Counsel, Broadcom Limited
Tony E. Piotrowski ~ MPEG LA LLC
Eugene R. Quinn, Jr. ~ President and Founder, IPWatchdog.com, IP Watchdog, Inc.
Diana G. Santos ~ Willkie Farr & Gallagher LLP
Mark J. Schildkraut ~ Assistant General Counsel - IP and Cybersecurity, Becton, Dickinson and Company
Robert Sinnema ~ Vice President and Counsel, Intellectual Property, Sikorsky, a Lockheed Martin Company
Catherine J. Toppin ~ Senior Patent Counsel and Manager, GE Global Patent Operation
Jon R. Trembath ~ Lathrop Gage LLP
Mark C. Vallone ~ IP Counsel, IBM Cloud and Watson Customer Engagement, IBM Corp
Robert D. Wells ~ Rock IP, PLLC
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

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New York

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Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

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American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

 

Please note the Plenary Sessions and Strategic & Transactional Breakout Sessions will be available via the Live Webcast in New York.

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 six plenary sessions of interest to all patent lawyers and six breakout sessions in each of the three subgroups.

Topics Include:
• New! Judges, in-house counsel, and outside counsel discuss the future of the profession, including training young attorneys, managing increasing client demands, and promoting diversity
• New! Judges decide discovery disputes in real time with insider feedback
• New! Damages experts highlight best practices for marshalling and presenting evidence
• Updated! Experts weigh in on how the Trump administration has changed patent policy and practice
• Updated! Corporate counsel discuss how to build a strong patent portfolio
• Updated! Review and analysis of recent Supreme Court and Federal Circuit decisions
• Updated! Federal judges from increasingly relevant patent venues provide insights on patent litigation
• Updated! What effect does Halo continue to have on willful infringement, enhanced damages and opinions of counsel
• Updated! Prosecution "safe harbors" for computer methods and medical therapies in view of Supreme Court and Federal Circuit decisions and USPTO guidelines

Breakout sessions include:
Prosecution Breakout Track: Two sessions focused on the latest USPTO rulemaking efforts. Painlessly stay current with the rulemakers and guideline writer priorities: correcting filing receipts, ePetition filing, PPH and correcting the ADS! How has "regime change" affected the USPTO in the near and medium term? Are the emphasis and/or methods changing?

The USPTO is all about the Supreme Court, CAFC and PTAB. Is ongoing incremental change at the USPTO is what we can expect? Are software-implemented methods making a comeback in view of new policies? Do the PTO Guidelines reflect reality - or some USPTO variation – in the law? Is the CAFC getting a "handle" on how to implement Supreme Court decisions? Come to our USPTO intensive breakouts for Chemical, Bio and Software Practice and discover the trends!

Litigation Breakout Track: The changing landscape of patent litigation post-TC Heartland; comparative analysis of litigation procedures in foreign courts; PTAB practice overview – the latest law and statistics concerning IPR, CBM and PGR proceedings; hot topics in litigation ethics; and strategies for proving and defending patent damages.

Strategic/Transactional Breakout Track: The key issues concerning patent-eligible subject matter and enhanced damages in view of recent Federal Circuit decisions that continue to greatly affect patent practitioners; hot topics in patent licensing that every transactional lawyer should know (but might not); and what U.S. practitioners need to know about prosecuting and opposing applications in Europe

Special Features
• Earn TWO hours of Ethics credit!
• Customize your Institute by choosing from 18 breakout sessions!

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.


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.

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

9:00 Opening Remarks
Scott M. Alter, Douglas R. Nemec, John M. White

9:15 Keynote Presentation: A System-Wide Patent Report Card
• Supreme Court reflections and directions
• CAFC on District Court and PTAB decisions
• Legislative momentum
• Suggestions for decision makers
• The role practitioners can play
Hon. Paul R. Michel (Ret.)

10:15 Patent Law: A Year of Supreme Court and Federal Circuit Decisions in Review
• Supreme Court review: what was decided and what is pending
• Future of the IPR after Oil States
• Reinterpreted venue restrictions after TC Heartland
• Patent amendment rules following Aqua Products
Prof. Pamela Samuelson

11:15 Networking Break

11:30 The Future of the Patent Law Profession
• Perspectives on training young attorneys inside and outside the courtroom
• Billing and staffing practices: evolutions, revolutions, and revolts
• Promoting diversity in the patent law profession
• Relationships between clients and outside counsel
Douglas R. Nemec, Panel Leader; Hon. William Alsup, Diana Luo, Alison R. Watkins

12:30 Lunch

1:45 Breakout Session No. 1a: Litigation – Bowling for Dollars: Tips for Preparing and Presenting Patent Damages Evidence for Trial
• Strategies for marshalling effective damages evidence during discovery
• Techniques for presenting damages evidence to juries and judges effectively
• Emphasizing core themes and incorporating story-telling into damages testimony
• Cross-applying damages expertise on non-damages issues
Dawn Rice Hall, L. Scott Oliver

1:45 Breakout Session No. 1b: Prosecution – USPTO Rules to Remember
• Securing a filing date: Rule 53, filling alternatives
• Submitting an Oath/Declaration: Rule 60 – what could be a problem?
• Duty of Disclosure: Rule 56 – Can prior art be auto-cited from related cases?
• Representing the “applicant” - power of attorney
• Proposed new fee package and practice impacts
Brian Hanlon (Invited), Robert J. Spar

1:45 Breakout Session No. 1c: Strategic & Transactional – The Top Hot Topics in Patent Licensing: What You Don’t Know Can Hurt You
• Fallout from Lexmark - what to do now
• What are the big issues facing patent owners trying to license their patents?
• How can patent owners maximize license revenue?
• What are the most common mistakes in drafting agreements?
Burch A. Harper

2:45 Breakout Session No. 2a: Litigation – Uncertain Future: Implications of Supreme Court Jurisprudence on Inter Partes Review
• Constitutionality of Inter Partes Review in light of Oil States
• The PTAB’s ability to determine which claims must be instituted
• Evolving procedures for claim amendments before the PTAB
• The continued role of the PTAB in patent practice
Brent K. Yamashita

2:45 Breakout Session No. 2b: Prosecution – USPTO Rules to Learn to Improve Prosecution Effectiveness
• Track 1 Prioritized Examination
• Interview before 1st Action
• After Final pilot - extra time for examiner
• QPIDS - the extra IDS filing
Brian Hanlon (Invited), Robert J. Spar

2:45 Breakout Session No. 2c: Strategic & Transactional – What Patent Practitioners Need to Know About Drafting U.S. Applications for Filing Worldwide
• Best practices for avoiding long-term issues and expenses
• IT and Biochem Patent issues outside the U.S.
• Why to file in some countries, but not in others
• Practice issues that may surprise you
Martin Köhler, Phyllis T. Turner-Brim, Robert D. Wells

3:45 Networking Break

4:00 Breakout Session No. 3a: Litigation – Navigating the Ethical Quagmire: A Patent Practitioner’s Journey
• Spoliation under the updated Rule 37 standard
• The ethical implications of third party patent monitoring
• Unauthorized practice of law and the proper scope of pro hac vice practice
• Client’s duty to perform patent searches
• Inequitable conduct following Regeneron
Jason R. Bartlett

4:00 Breakout Session No. 3b: Prosecution – Avoiding Patent Malpractice at the USPTO
• Differences in the USPTO Ethics Rules and the ABA Model Rules
• Recent disciplinary decisions from the Office of Enrollment & Discipline
• Spillover Ethical issues: prosecution to litigation
Speaker TBA

4:00 Breakout Session No. 3c: Strategic & Transactional – Outsourcing Legal Services and Functions: What Patent Prosecutors and Litigators Need to Know to Survive
• Supervising and diligence to ensure outsourced work is compatible with ethical obligations
• Protecting client confidentiality
• Obtaining client consent and reasonableness of fees
• Avoiding the unauthorized practice of law
Merri A. Baldwin

5:00 Adjourn


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

9:00 Breakout Session No. 4a: Litigation – Point Counter-Point: A Patent Practitioner’s Tennis Match with a Judicial Umpire
• Common discovery tactics for both plaintiff and defense counsel
• Judicial determination of disputed discovery issues
• Practice points for perfecting a winning argument in the future
• Discovery disputes worth fighting
Marti A. Johnson, Panel Leader; Hon. Jacqueline Scott Corley

9:00 Breakout Session No. 4b: Prosecution – Recent Developments in Chem/Pharma and Bio Patents
• Claim interpretation from District Court Decisions
• Claim interpretation as it relates to infringement and validity
• Rule 12 motions: 35 USC 101 patent subject matter eligibility
MJ Edwards, Craig A. McRobbie

9:00 Breakout Session No. 4c: Strategic & Transactional – Why Do Your iPhone and Other Electronics Cost So Much?! Who Do Patent Pools Really Benefit?
• The current and future effects of multiple patent pools on licensing
• What are the motivations and business models behind recent pools? 
• How does cross-licensing affect your decision to license from a pool?
• Dealing with patent pools as a potential licensee and/or licensor
Judson Cary, Tony E. Piotrowski

10:00 Breakout Session No. 5a: Litigation – Musical Chairs in Patent Venue: The Practical Implications of TC Heartland
• Comparison of various venues for patent litigation suitability
• Analysis of the effects of TC Heartland in practice
• Review of various local rules benefiting patent litigation
• Predictions of future “patent venues”
Benjamin C. Elacqua

10:00 Breakout Session No. 5b: Prosecution – PTAB Decisions for Chem/Pharma and Bio Patents
• Case studies in recent PTAB trials and related appeals.
• Tips to Win: PTAB trials and procedures.
• Recent ex parte PTAB decisions.
• Updates to USPTO 101 Guidelines
MJ Edwards, Craig A. McRobbie

10:00 Breakout Session No. 5c: Strategic & Transactional – The Fast-Changing World of Software-Related Patents: Critical Issues You Need to Know Now
• Operating in a Post-Alice World: Has the pendulum begun to swing?
• The stealthy effects of functional claiming under Section 112
• Practical litigation and prosecution advice for dealing with software patents
Richard M. Marsh, Jr., Marian Underweiser

11:00 Networking Break

11:15 Breakout Session No. 6a: Litigation – International Patent Litigation: A World Tour of Patent Enforcement
• Comparison of major patent venues including U.S., Germany, China, and others
• Review of remedies and the various methods for seeking them in foreign jurisdictions
• Procedural restrictions and hurdles around the globe
• Coordinating multi-national patent right enforcement strategies
Douglas R. Nemec

11:15 Breakout Session No. 6b: Prosecution – Software-Implemented Methods at the USPTO
• The current 101 Guidelines.
• Any safe harbors in sight - CAFC?
• How much “system” is necessary?
• Is the playing field leveling AU to AU?
• Where is this headed - trends.
Raina S. Haque

11:15 Breakout Session No. 6c: Strategic & Transactional – Building a Strong Patent Portfolio: Views from In-House
• Strategic considerations
• The role of outside counsel
• Cost-effective strategies for enhancing patent quality
Subroto Bose, David T. Dutcher, Kevin McLintock

12:15 Lunch

1:45 Halo and Its Effect on Willful Infringement and Enhanced Damages
• Trends in the lower courts post-Halo
• Current effect of opinions of counsel for mitigating willful infringement and enhanced damages
• Practical considerations when receiving unsolicited letters
Scott M. Alter, Jon R. Trembath

2:45 Corporate Counsel Panel: What's Keeping Corporate Counsel Awake at Night
• Effects of recent court decisions and USPTO activity
• Concerns regarding newly enacted and pending legislation
• The economy . . .
• Other patent issues weighing on the minds of corporate counsel
Diane G. Kratz, Benjamin S. Lee, Stephen MacKenzie, Matthew Sarboraria

3:45 Networking Break

4:00 Ethics for Patent Practitioners
• Rapid innovation can lead to ethics issues of delayed filings - in a first to file system
• Ethics surrounding advise in the circumstance of a weakened patent regime
• Writing applications to set up provisional damages - ethics of published applications
• To patent or not to patent - the ethics of Trade secret style protection
• Reducing pendency via Track 1 examination - ethics regarding term commencement
Prof. David Hricik

5:00 Adjourn


Co-Chair(s)
Scott M. Alter ~ Lathrop Gage LLP
Douglas R. Nemec ~ Skadden, Arps, Slate, Meagher & Flom LLP
John M. White ~ Director, Soryn IP Group; Berenato & White, LLC
Speaker(s)
Hon. William Alsup ~ District Judge, United States District Court, Northern District of California
Merri A. Baldwin ~ Rogers Joseph O'Donnell
Jason R. Bartlett ~ Mauriel Kapouytian Woods LLP
Subroto Bose ~ Dolby Laboratories, Inc.
Judson Cary ~ Vice President and Deputy General Counsel, CableLabs
Hon. Jacqueline Scott Corley ~ Magistrate Judge, United States District Court, Northern District of California
David T. Dutcher ~ Assistant General Counsel, IP, Western Digital
MJ Edwards ~ Senior Counsel, Intellectual Property, Gilead Sciences, Inc.
Benjamin C. Elacqua ~ Fish & Richardson PC
Dawn Rice Hall ~ Managing Director - Forensic & Litigation Consulting, FTI Consulting, Inc.
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Raina S. Haque ~ Erdos Intellectual Property Law + Startup Legal
Burch A. Harper ~ Vice President and Deputy General Counsel for Intellectual Property, Kateeva, Inc.
Prof. David Hricik ~ Professor of Law, Mercer University School of Law
Marti A. Johnson ~ Skadden, Arps, Slate, Meagher & Flom LLP
Martin Köhler ~ Hoyng Rokh Monegier
Diane G. Kratz ~ Senior Intellectual Property Counsel, Seagate Technology
Benjamin S. Lee ~ Deputy General Counsel, Airbnb, Inc.
Diana Luo ~ Senior Associate General Counsel, Walmart Global eCommerce
Stephen MacKenzie ~ Senior Counsel, Intellectual Property and IP Litigation, Koch Industries Inc
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Kevin McLintock ~ Director, Worldwide Patent and IP Strategy, Logitech Inc
Craig A. McRobbie ~ Birch, Stewart, Kolasch & Birch, LLP
Hon. Paul R. Michel (Ret.) ~ Former Chief Judge, United States Court of Appeals for the Federal Circuit (CAFC),
L. Scott Oliver ~ Orrick, Herrington & Sutcliffe LLP
Tony E. Piotrowski ~ MPEG LA LLC
Pamela Samuelson ~ Professor of Law, Berkeley Law School
Matthew Sarboraria ~ Vice President, Associate General Counsel, Oracle
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.) OPLA, USPTO, Director (Ret.) Office of Patent Legal Administration, U.S. Patent and Trademark Office
Jon R. Trembath ~ Lathrop Gage LLP
Phyllis T. Turner-Brim ~ Vice President, Assistant General Counsel IP and Technology, Starbucks Coffee Company
Marian Underweiser ~ Senior Counsel - Research IP Law, IBM Corporation
Alison R. Watkins ~ Gibson Dunn & Crutcher LLP
Robert D. Wells ~ Rock IP, PLLC
Brent K. Yamashita ~ DLA Piper LLP (US)
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (800) 260-4754.

San Francisco Hotel Accommodations

Park Central Hotel, 50 Third Street, San Francisco, CA 94103. 415-974-6400. When calling, please mention PLI and SET#287179. In addition, you may book online at Park Central Hotel PLI.

Omni Hotel San Francisco, 500 California Street, San Francisco, CA 94104. 415-677-9494.  When calling, please mention Practising Law Institute.  You may also book online at PLI Omni Hotel 2017.

Due to high demand we recommend reserving hotel rooms as early as possible.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as “Group-Live delivery” credit.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

 

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Teresa Lechner-Fish, Gardere Wynne Sewell LLP


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