Seminar  Program

Patent Law Institute 2019: Critical Issues & Best Practices


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Please note the plenary sessions and Litigation Breakout Track will be available via the Live Webcast.

Why You Should Attend

The past several years have brought a dizzying array of changes in patent law, between new legislation, new USPTO procedures, and Supreme Court activity at a rate not seen in decades. The Institute is your answer to keeping abreast of these myriad developments, whether your practice focuses on litigation, prosecution, or strategy/transactions. The six plenary sessions in this two day program will cover topics of interest to all patent lawyers, regardless of specialty area. Plus, the three track breakout session structure allows for a customized program agenda.

What You Will Learn  

  • New!  Empirical and strategic analysis of patent appeals before the Federal Circuit and the Supreme Court
  • New!  Review of ITC patent practices by industry specialists
  • Federal judges decide discovery disputes in real time with insider feedback
  • Experts weigh in on how Director Iancu has changed patent policy and practice
  • Corporate patent counsel discuss how to build a strong patent portfolio
  • Federal judges from popular patent venues provide insights on patent litigation
  • Software Patents – Is the pendulum swinging back and related practical considerations
  • 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 USPTO 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: Analysis of successful and unsuccessful patent appeal strategies before the Federal Circuit and Supreme Court; understanding patent litigation in international jurisdictions; PTAB practice overview – the latest law and statistics concerning IPR, CBM and PGR proceedings; real-time judicial insight into deciding discovery disputes; and specialist analysis of ITC patent practice.

Strategic/Transactional Breakout Track: The key issues concerning patent-eligible subject matter in view of recent Federal Circuit decisions and USPTO reactions that continue to greatly affect patent practitioners; hot topics in patent licensing that every transactional lawyer should know (but might not); and corporate patent counsel discussing how to build a strong patent portfolio.

Special Features

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

Who Should Attend

Patent practitioners of all varieties can truly make PLI's Patent Law Institute their one stop shop for patent law updates.


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: 8:30 a.m. - 5:00 p.m.

8:30 Networking Breakfast

9:00 Opening Remarks

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



9:15 Featured Speaker: Policy Revisions at the Patent Office: Cause and Effect
  • Changing PTAB policy at USPTO
  • New claim interpretation standard
  • Light at the end of the 101 tunnel
  • For life sciences
  • For computer implemented methods

Speaker TBD



10:15 Patent Law: A Year of Supreme Court and Federal Circuit Decisions in Review
  • International damages and the effects of the Supreme Court's decision in WesternGeco v. ION Geophysical
  • Private sales as prior art and the ramifications of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.'s interpretation of § 102(a)
  • The Federal Circuit's refusal to invalidate patents under § 101 on summary judgment in light of factual questions as expressed, for example, in Berkheimer v. HP Inc.
  • Appealability of PTAB determinations in light of the Federal Circuit's en banc determination in Wi-Fi One LLC v. Broadcom Corp.
  • Other cases of note

Dorothy R. Auth



11:15 Networking Break

11:30 The Continuing Evolution of PTAB Practice
  • PTAB trial institution and the effects of SAS
  • Impact of the updated PTAB Practice Guide including on briefing, live testimony, and expert opinions.
  • Alternative areas for early resolution and pre-hearing conferences.
  • The use claim amendments during post-issuance examination procedures

Brian Murphy



12:30 Lunch

1:45 Breakout Session No. 1a: Litigation – International Patent Litigation Issues: A Stroll Around the Globe*
  • Comparison of major patent venues including U.S., U.K., Germany, China, Korea, Canada, 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 enforcement strategies

Patricia A. Martone



1:45 Breakout Session No. 1b: Prosecution – New/Revised Patent Rules/Policy to Learn
  • Berkheimer guidance
  • The new digital certificate for EFS
  • Speeding it up - PPH and prioritized examination
  • QPIDS – post-issue fee payment help for the late IDS

Brian Hanlon (Invited), Robert J. Spar



1:45 Breakout Session No. 1c: Strategic & Transactional – 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
  • Litigation perspectives, including privilege and waiver
  • Practical considerations when receiving unsolicited letters

Robert DeBerardine, Jon R. Trembath



2:45 Breakout Session No. 2a: Litigation – Appealing Patent Litigation Decisions: What Looks Good*
  • Best practices for managing the transition from district court determination to Federal Circuit appeal
  • Common procedural pitfalls to avoid in Federal Circuit and Supreme Court practice
  • Marshalling facts and narrowing issues to present the best face for appeal
  • Historical trends and statistical analysis of Federal Circuit and Supreme Court success for various types of patents and litigants

Leslie M. Schmidt



2:45 Breakout Session No. 2b: Prosecution – Old/Existing Patent Rules/Policy to Follow!
  • ADS Changes/Amendments: Getting it right the 1st time
  • Timely asserting and correcting priority
  • Whom do you represent – who signs what?
  • Securing a filing date – reference filing and 53(b)

Brian Hanlon (Invited), Robert J. Spar



2:45 Breakout Session No. 2c: Strategic & Transactional – Drafting Globally Compliant Patent Applications: Dream or Reality? An Interactive Discussion
  • Is drafting globally compliant patent applications practically possible in every technology?
  • Best practices for preparing global patent applications
  • Tips and tricks for reducing costs associated with global patent applications
  • Why to file in some countries, but not in others
  • IT and bio patent issues outside the U.S.

Brian H. Batzli, Valerie Calloway, Judith U. Kim



3:45 Networking Break

4:00 Breakout Session No. 3a: Litigation – Drawing the Ethical Line Between Exceptional Advocacy and "Exceptional Case"*
  • Exceptional case findings from the Federal Circuit reveal the line between zealous advocacy and ethical violations
  • Pre-suit investigations and good faith basis for making claims:  comparing Rule 11 to the canons/rules of ethics
  • Understanding the many ethical rules governing PTAB practice
  • Avoiding little-known ethical pitfalls in patent litigation

Douglas R. Nemec



4:00 Breakout Session No. 3b: Prosecution – PTO Ethics

In this segment, we will review the PTO’s adaptation of the ABA model rules for professional responsibility and provide best practices for patent lawyers to remain compliant.

  • Avoiding “legal” malpractice at the USPTO under 37 CFR 11.102
  • How to avert conflicts of interest under 37 CFR Part 11.107
  • Doing "business with clients" under 37 CFR 11.108
  • Duty to past clients under 37 CFR 11.109
  • Imputation of conflicts under 37 CFR 11.110 - the firm and "Chinese Walls"
  • Recent disciplinary decisions from OED and its impact on the legal profession
  • CLE and Patent Bar Dues at the PTO – A new day

Eugene R. Quinn, Jr. (Invited)



4:00 Breakout Session No. 3c: Strategic & Transactional – Ethical Considerations in Data-Centric Business Models in the Connected, Autonomous Realm
  • An overview of the complex legal as well as ethical challenges that arise in the data-centric business models (connected, autonomous realm) 
  • Data management ethical challenges
    • Examining privacy, security, safety and bias when dealing with collections of data 
  • Professional ethical challenges
    • Understanding the existing law and our role in anticipating new laws as well as advocating new laws
    • An examination of the professional ethical challenges in this realm

Sharmini Green (Invited)



5:00 Adjourn

 

*Live Webcast of breakout session



Day Two: 8:30 a.m. - 5:00 p.m.

8:30 Networking Breakfast

9:00 Breakout Session No. 4a: Litigation – Today Only: "Advisory Opinions" on Common Procedural and Discovery Patent Disputes*
  • Live judicial determination of disputed discovery issues
  • Know when to hold 'em, know when to fold 'em — picking your battles
  • Practice tips for framing and presenting arguments
  • Trends in discovery strategy for both plaintiff and defense counsel

Stacey L. Cohen, Hon. K. Nicole Mitchell



9:00 Breakout Session No. 4b: Prosecution – Recent Developments in Chemical, Pharma and Bio Patents

Patent prosecutors can learn much by understanding how patents they prosecute are scrutinized in litigation.  This hour will concentrate on cases arising in Federal District Courts and will include the following topics/cases:

  • The CAFC decision in Vanda v. West-Ward Pharma where the CAFC finally upheld a “personalized medicine” (method of treatment) patent against a 101 challenge.  The subsequent PTO Guidance in view of the Vanda case will also be discussed.
  • The Roche Molecular Systems v. Cepheid case, in which the CAFC upheld a finding that claims to a detection method using primers was not patent eligible.
  • Claim interpretation cases such as Sumitomo Dainippon Pharma v. Emcure Pharm
  • In a rare case where a “non-biotech, non-pharma” patent was held not to be enabled, in Boston Univ. v. Everlight the CAFC held a patent to a semiconductor device invalid for lack of enablement for failure to teach how to make the device using one of a small number of claimed materials
  • An update on cases relating to novelty and obviousness

Heather Champion Brady, Laura Donnelly, Gerald M. Murphy, Jr.



9:00 Breakout Session No. 4c: Strategic & Transactional – Emerging Technologies and Patent Law: What You Need to Know
  • Introduction to Blockchain, 3d Printing, IoT and AI
  • Challenges and realities
  • Potential ownership issues
  • Key considerations when advising clients on patents and emerging technologies
  • A look into the future

Kenneth Corsello, Joe Lenart



10:00 Breakout Session No. 5a: Litigation – PTAB Procedure Checkup: New Statistics and Recent Updates*
  • Recent statistics on PTAB invalidation rates for various types of patents and patentees
  • New trends in PTAB practice resulting from the updated Trial Handbook
  • Strategic insight into best practices in light of the Supreme Court's revision of institution determinations
  • Empirical analysis of the evolving role of PTAB practice

Chase J. Brill



10:00 Breakout Session No. 5b: Prosecution – Recent PTAB Decisions for Chemical, Pharma and Bio Patents

This segment will concentrate on case studies arising at the PTO, including related appeals, and will address the following topics/cases:

  • The CAFC decision in Univ. of Cal. v. Broad Institute relating to the groundbreaking CRISPR technology, together with a brief discussion of licensing implications for companies using this technology
  • The Gruenenthal v. Antecip BIoventures decision of the PTAB in a PGR case where the PTAB held that the claimed ranges could not be derived from the specification and therefore the claims were invalid for lack of written description
  • Recent PTAB decisions on other issues such as novelty and obviousness
  • The new Claim Construction rules for PTAB trials

Heather Champion Brady, Laura Donnelly, Gerald M. Murphy, Jr.



10:00 Breakout Session No. 5c: Strategic & Transactional – Building A Strong Patent Portfolio – Views From In-House
  • Strategic considerations
  • Invention harvesting and management
  • The role of outside counsel
  • Cost-effective strategies for enhancing patent quality

Juan C. Gonzalez, Michael A. Minter, Catherine J. Toppin



11:00 Networking Break

11:15 Breakout Session No. 6a: Litigation – ITC Litigation: High Speed Patent Enforcement*
  • Choosing evidence tailored to specialized ITC judges
  • Navigating the fast lane and best practices for triaging issues
  • Overview of regulatory requirements including importation and domestic industry
  • Examining the increasing presence of non-domestic and non-practicing ITC complainants

Philip W. Marsh



11:15 Breakout Session No. 6b: Prosecution – Computer Implemented Methods at the PTO
  • Berkheimer and its effect
  • Has 101 become predictable (at least!)
  • Variability Art Unit to Art Unit – the stats
  • Is now the “future”?

Kate Gaudry



11:15 Breakout Session No. 6c: Strategic & Transactional – Hot Topics in Technology Transfer and Licensing
  • University tech transfer issues
  • Performance, royalty and other provisions
  • Realizing value for both parties

Matthew Gardner, Orin Herskowitz, Keith Marmer, Stephanie Whitehorse



12:15 Lunch

1:45 The Fast-Changing World of Software-Related Patents: Critical Issues You Need to Know Now
  • Operating in a post-Alice world
  • Forecasting the evolution of Section 101
  • The stealthy effects of functional claiming under Section 112
  • Practical litigation and prosecution advice for dealing with software patents

Scott M. Alter, June E. Cohan (Invited), Lissi Mojica, Mary (Mindy) V. Sooter



2:45 Corporate Counsel Panel: What’s Keeping Corporate Counsel Awake at Night
  • Effects of recent court decisions and USPTO activity
  • The changing landscape of litigation
  • Concerns regarding newly enacted and pending legislation
  • The economy . . .
  • Other patent issues weighing on the minds of corporate counsel

Tonya Combs, Erwin Eichmann, Neer Gupta, Moshe Malina, Matthew B. Weinstein



3:45 Networking Break

4:00 Current Ethical Issues in Patent Practice
  • Cloud Computing and Data Breach Issues, including complying with obligations under Rule 1.6 and 37 C.F.R. 11.106 and relevant ethics opinions
  • Conflicts of interest, including recent case law applying Model Rule 1.7, 1.9, and 37 C.F.R. 11.107 and 11.109
  • Recurrent substantive errors in patent drafting and litigation, including violations implicating Model Rule 1.1 and 37 C.F.R. 11.101
  • The growing tension between imposing fee shifting under Section 285 and the duties of competency and loyalty

Prof. David H. Hricik



5:00 Adjourn

 

 *Live Webcast of breakout session



Co-Chair(s)
Scott M. Alter ~ Michael Best & Friedrich LLP
Douglas R. Nemec ~ Skadden, Arps, Slate, Meagher & Flom LLP
John M. White ~ Director, Soryn IP Group; Berenato & White, LLC
Speaker(s)
Dorothy R. Auth, Ph.D. ~ Cadwalader, Wickersham & Taft LLP
Brian H. Batzli ~ Merchant Gould P.C.
Heather Champion Brady ~ Senior Patent Counsel, Johnson & Johnson
Chase J. Brill ~ Foley & Lardner LLP
Valerie Calloway ~ Intellectual Property Counsel, IBM Corporation
June E. Cohan ~ Senior Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office
Stacey L. Cohen ~ Skadden, Arps, Slate, Meagher & Flom LLP
Tonya Combs ~ Sr. Director - General Patent Counsel - Lilly BioMedicines, Eli Lilly and Company
Kenneth Corsello ~ Counsel, Intellectual Property, IBM Corporation
Robert DeBerardine ~ Worldwide Vice President, Chief Intellectual Property Counsel, Johnson & Johnson
Laura Donnelly ~ Assistant General Counsel - Patents, Johnson & Johnson
Erwin Eichmann ~ Vice President & Associate General Counsel, Goldman Sachs & Co.
Matthew Gardner ~ Director, New Venture Developments and Investments, University of Notre Dame
Kate Gaudry, Ph.D. ~ Kilpatrick Townsend & Stockton LLP
Juan C. Gonzalez ~ SVP/Senior Managing Counsel, Mastercard
Sharmini Green ~ Assistant Director of Patents, Intel Corporation
Neer Gupta ~ Assistant General Counsel, Intellectual Property, Verizon
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Orin Herskowitz ~ Executive Director; Senior Vice President of Intellectual Property and Tech Transfer, Columbia Technology Ventures
Prof. David Hricik ~ Professor of Law, Mercer University School of Law
Judith U. Kim ~ Rubin and Rudman LLP
Joe Lenart ~ Kennedy Lenart Spraggins LLP
Moshe Malina ~ Associate General Counsel & Chief Patent Counsel, Citigroup Inc.
Keith Marmer ~ Executive Director and Associate Vice President, Technology & Venture Commercialization, University of Utah
Philip W. Marsh ~ Arnold & Porter
Patricia A. Martone ~ Law Office of Patricia A. Martone, P.C.
Michael A. Minter ~ Assistant General Counsel Intellectual Property, Lockheed Martin
Hon. K. Nicole Mitchell ~ Magistrate Judge, United States District Court, Eastern District of Texas
Lissi Mojica ~ Managing Director, Answers IP, LLC
Brian Murphy ~ Haug Partners LLP
Gerald M. Murphy, Jr. ~ Birch, Stewart, Kolasch & Birch, LLP
Eugene R. Quinn, Jr. ~ President and Founder, IPWatchdog.com, IP Watchdog, Inc.
Leslie M.. Schmidt ~ Kirkland & Ellis LLP
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.), Office of Patent Legal Administration, U.S. Patent and Trademark Office
Catherine J. Toppin ~ Senior Patent Counsel and Manager, GE Global Patent Operation
Jon R. Trembath ~ Michael Best & Friedrich LLP
Matthew B. Weinstein ~ Director of Legal Services, Patents & Open Source, Accenture
Stephanie Whitehorse ~ Manager of IP Operations/ Senior IP Manager, Wisconsin Alumni Research Foundation (WARF)
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

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New York City Hotel Accommodations

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Please note the plenary sessions and Litigation Breakout Track will be available via the Live Webcast.

Why You Should Attend

The past several years have brought a dizzying array of changes in patent law, between new legislation, new USPTO procedures, and Supreme Court activity at a rate not seen in decades. The Institute is your answer to keeping abreast of these myriad developments, whether your practice focuses on litigation, prosecution, or strategy/transactions. The six plenary sessions in this two day program will cover topics of interest to all patent lawyers, regardless of specialty area. Plus, the three track breakout session structure allows for a customized program agenda.

What You Will Learn  

  • New!  Empirical and strategic analysis of patent appeals before the Federal Circuit and the Supreme Court
  • New!  Review of ITC patent practices by industry specialists
  • Federal judges decide discovery disputes in real time with insider feedback
  • Experts weigh in on how Director Iancu has changed patent policy and practice
  • Corporate patent counsel discuss how to build a strong patent portfolio
  • Federal judges from popular patent venues provide insights on patent litigation
  • Software Patents – Is the pendulum swinging back and related practical considerations
  • 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 USPTO 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: Analysis of successful and unsuccessful patent appeal strategies before the Federal Circuit and Supreme Court; understanding patent litigation in international jurisdictions; PTAB practice overview – the latest law and statistics concerning IPR, CBM and PGR proceedings; real-time judicial insight into deciding discovery disputes; and specialist analysis of ITC patent practice.

Strategic/Transactional Breakout Track: The key issues concerning patent-eligible subject matter in view of recent Federal Circuit decisions and USPTO reactions that continue to greatly affect patent practitioners; hot topics in patent licensing that every transactional lawyer should know (but might not); and corporate patent counsel discussing how to build a strong patent portfolio.

Special Features

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

Who Should Attend

Patent practitioners of all varieties can truly make PLI's Patent Law Institute their one stop shop for patent law updates.


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: 8:30 a.m. - 5:00 p.m.

8:30 Networking Breakfast

9:00 Opening Remarks

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



9:15 Featured Speaker: Policy Revisions at the Patent Office: Cause and Effect
  • Changing PTAB policy at USPTO
  • New claim interpretation standard
  • Light at the end of the 101 tunnel
  • For life sciences
  • For computer implemented methods

Speaker TBD



10:15 Patent Law: A Year of Supreme Court and Federal Circuit Decisions in Review
  • International damages and the effects of the Supreme Court's decision in WesternGeco v. ION Geophysical
  • Private sales as prior art and the ramifications of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.'s interpretation of § 102(a)
  • The Federal Circuit's refusal to invalidate patents under § 101 on summary judgment in light of factual questions as expressed, for example, in Berkheimer v. HP Inc.
  • Appealability of PTAB determinations in light of the Federal Circuit's en banc determination in Wi-Fi One LLC v. Broadcom Corp.
  • Other cases of note

Dorothy R. Auth



11:15 Networking Break

11:30 The Continuing Evolution of PTAB Practice
  • PTAB trial institution and the effects of SAS
  • Impact of the updated PTAB Practice Guide including on briefing, live testimony, and expert opinions.
  • Alternative areas for early resolution and pre-hearing conferences.
  • The use claim amendments during post-issuance examination procedures

Brian Murphy



12:30 Lunch

1:45 Breakout Session No. 1a: Litigation – International Patent Litigation Issues: A Stroll Around the Globe*
  • Comparison of major patent venues including U.S., U.K., Germany, China, Korea, Canada, 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 enforcement strategies

Patricia A. Martone



2:45 Breakout Session No. 2a: Litigation – Appealing Patent Litigation Decisions: What Looks Good*
  • Best practices for managing the transition from district court determination to Federal Circuit appeal
  • Common procedural pitfalls to avoid in Federal Circuit and Supreme Court practice
  • Marshalling facts and narrowing issues to present the best face for appeal
  • Historical trends and statistical analysis of Federal Circuit and Supreme Court success for various types of patents and litigants

Leslie M. Schmidt



3:45 Networking Break

4:00 Breakout Session No. 3a: Litigation – Drawing the Ethical Line Between Exceptional Advocacy and "Exceptional Case"*
  • Exceptional case findings from the Federal Circuit reveal the line between zealous advocacy and ethical violations
  • Pre-suit investigations and good faith basis for making claims:  comparing Rule 11 to the canons/rules of ethics
  • Understanding the many ethical rules governing PTAB practice
  • Avoiding little-known ethical pitfalls in patent litigation

Douglas R. Nemec



5:00 Adjourn

 

*Live Webcast of breakout session



Day Two: 8:30 a.m. - 5:00 p.m.

8:30 Networking Breakfast

9:00 Breakout Session No. 4a: Litigation – Today Only: "Advisory Opinions" on Common Procedural and Discovery Patent Disputes*
  • Live judicial determination of disputed discovery issues
  • Know when to hold 'em, know when to fold 'em — picking your battles
  • Practice tips for framing and presenting arguments
  • Trends in discovery strategy for both plaintiff and defense counsel

Stacey L. Cohen, Hon. K. Nicole Mitchell



10:00 Breakout Session No. 5a: Litigation – PTAB Procedure Checkup: New Statistics and Recent Updates*
  • Recent statistics on PTAB invalidation rates for various types of patents and patentees
  • New trends in PTAB practice resulting from the updated Trial Handbook
  • Strategic insight into best practices in light of the Supreme Court's revision of institution determinations
  • Empirical analysis of the evolving role of PTAB practice

Chase J. Brill



11:00 Networking Break

11:15 Breakout Session No. 6a: Litigation – ITC Litigation: High Speed Patent Enforcement*
  • Choosing evidence tailored to specialized ITC judges
  • Navigating the fast lane and best practices for triaging issues
  • Overview of regulatory requirements including importation and domestic industry
  • Examining the increasing presence of non-domestic and non-practicing ITC complainants

Philip W. Marsh



12:15 Lunch

1:45 The Fast-Changing World of Software-Related Patents: Critical Issues You Need to Know Now
  • Operating in a post-Alice world
  • Forecasting the evolution of Section 101
  • The stealthy effects of functional claiming under Section 112
  • Practical litigation and prosecution advice for dealing with software patents

Scott M. Alter, June E. Cohan (Invited), Lissi Mojica, Mary (Mindy) V. Sooter



2:45 Corporate Counsel Panel: What’s Keeping Corporate Counsel Awake at Night
  • Effects of recent court decisions and USPTO activity
  • The changing landscape of litigation
  • Concerns regarding newly enacted and pending legislation
  • The economy . . .
  • Other patent issues weighing on the minds of corporate counsel

Tonya Combs, Erwin Eichmann, Neer Gupta, Moshe Malina, Matthew B. Weinstein



3:45 Networking Break

4:00 Current Ethical Issues in Patent Practice
  • Cloud Computing and Data Breach Issues, including complying with obligations under Rule 1.6 and 37 C.F.R. 11.106 and relevant ethics opinions
  • Conflicts of interest, including recent case law applying Model Rule 1.7, 1.9, and 37 C.F.R. 11.107 and 11.109
  • Recurrent substantive errors in patent drafting and litigation, including violations implicating Model Rule 1.1 and 37 C.F.R. 11.101
  • The growing tension between imposing fee shifting under Section 285 and the duties of competency and loyalty

Prof. David H. Hricik



5:00 Adjourn

 

 *Live Webcast of breakout session



Co-Chair(s)
Scott M. Alter ~ Michael Best & Friedrich LLP
Douglas R. Nemec ~ Skadden, Arps, Slate, Meagher & Flom LLP
John M. White ~ Director, Soryn IP Group; Berenato & White, LLC
Speaker(s)
Dorothy R. Auth, Ph.D. ~ Cadwalader, Wickersham & Taft LLP
Brian H. Batzli ~ Merchant Gould P.C.
Heather Champion Brady ~ Senior Patent Counsel, Johnson & Johnson
Chase J. Brill ~ Foley & Lardner LLP
Valerie Calloway ~ Intellectual Property Counsel, IBM Corporation
June E. Cohan ~ Senior Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office
Stacey L. Cohen ~ Skadden, Arps, Slate, Meagher & Flom LLP
Tonya Combs ~ Sr. Director - General Patent Counsel - Lilly BioMedicines, Eli Lilly and Company
Kenneth Corsello ~ Counsel, Intellectual Property, IBM Corporation
Robert DeBerardine ~ Worldwide Vice President, Chief Intellectual Property Counsel, Johnson & Johnson
Laura Donnelly ~ Assistant General Counsel - Patents, Johnson & Johnson
Erwin Eichmann ~ Vice President & Associate General Counsel, Goldman Sachs & Co.
Matthew Gardner ~ Director, New Venture Developments and Investments, University of Notre Dame
Kate Gaudry, Ph.D. ~ Kilpatrick Townsend & Stockton LLP
Juan C. Gonzalez ~ SVP/Senior Managing Counsel, Mastercard
Sharmini Green ~ Assistant Director of Patents, Intel Corporation
Neer Gupta ~ Assistant General Counsel, Intellectual Property, Verizon
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Orin Herskowitz ~ Executive Director; Senior Vice President of Intellectual Property and Tech Transfer, Columbia Technology Ventures
Prof. David Hricik ~ Professor of Law, Mercer University School of Law
Judith U. Kim ~ Rubin and Rudman LLP
Joe Lenart ~ Kennedy Lenart Spraggins LLP
Moshe Malina ~ Associate General Counsel & Chief Patent Counsel, Citigroup Inc.
Keith Marmer ~ Executive Director and Associate Vice President, Technology & Venture Commercialization, University of Utah
Philip W. Marsh ~ Arnold & Porter
Patricia A. Martone ~ Law Office of Patricia A. Martone, P.C.
Michael A. Minter ~ Assistant General Counsel Intellectual Property, Lockheed Martin
Hon. K. Nicole Mitchell ~ Magistrate Judge, United States District Court, Eastern District of Texas
Lissi Mojica ~ Managing Director, Answers IP, LLC
Brian Murphy ~ Haug Partners LLP
Gerald M. Murphy, Jr. ~ Birch, Stewart, Kolasch & Birch, LLP
Eugene R. Quinn, Jr. ~ President and Founder, IPWatchdog.com, IP Watchdog, Inc.
Leslie M.. Schmidt ~ Kirkland & Ellis LLP
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.), Office of Patent Legal Administration, U.S. Patent and Trademark Office
Catherine J. Toppin ~ Senior Patent Counsel and Manager, GE Global Patent Operation
Jon R. Trembath ~ Michael Best & Friedrich LLP
Matthew B. Weinstein ~ Director of Legal Services, Patents & Open Source, Accenture
Stephanie Whitehorse ~ Manager of IP Operations/ Senior IP Manager, Wisconsin Alumni Research Foundation (WARF)
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.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

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

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 webcasts 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 webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts 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 webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

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 webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

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 webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

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 webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period. Effective January 1, 2019, the limit of distance education per reporting period will increase from 9 to 18 credits.

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

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

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

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

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

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

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

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

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

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

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

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

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

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

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 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.

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

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

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

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

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 webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

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

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

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

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 webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

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

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 webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

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

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

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

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

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts 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 webcasts 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 webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

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

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live webcasts may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as the “Group-Internet-Based” (GIB) delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts 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 webcasts 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 webcasts may fulfill Privacy CPE credit requirements.

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

SHRM Recertification (SHRM):  PLI’s live webcasts 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 webcasts 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 webcasts may fulfill CAMS credit requirements.

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

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

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

Please note the plenary sessions and Litigation Breakout Track will be available via the Live Webcast.

Why You Should Attend

The past several years have brought a dizzying array of changes in patent law, between new legislation, new USPTO procedures, and Supreme Court activity at a rate not seen in decades. The Institute is your answer to keeping abreast of these myriad developments, whether your practice focuses on litigation, prosecution, or strategy/transactions. The six plenary sessions in this two day program will cover topics of interest to all patent lawyers, regardless of specialty area. Plus, the three track breakout session structure allows for a customized program agenda.

What You Will Learn  

  • New!  Empirical and strategic analysis of patent appeals before the Federal Circuit and the Supreme Court
  • New!  Review of ITC patent practices by industry specialists
  • Federal judges decide discovery disputes in real time with insider feedback
  • Experts weigh in on how Director Iancu has changed patent policy and practice
  • Corporate patent counsel discuss how to build a strong patent portfolio
  • Federal judges from popular patent venues provide insights on patent litigation
  • Software Patents – Is the pendulum swinging back and related practical considerations
  • 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 USPTO 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: Analysis of successful and unsuccessful patent appeal strategies before the Federal Circuit and Supreme Court; understanding patent litigation in international jurisdictions; PTAB practice overview – the latest law and statistics concerning IPR, CBM and PGR proceedings; real-time judicial insight into deciding discovery disputes; and specialist analysis of ITC patent practice.

Strategic/Transactional Breakout Track: The key issues concerning patent-eligible subject matter in view of recent Federal Circuit decisions and USPTO reactions that continue to greatly affect patent practitioners; hot topics in patent licensing that every transactional lawyer should know (but might not); and corporate patent counsel discussing how to build a strong patent portfolio.

Special Features

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

Who Should Attend

Patent practitioners of all varieties can truly make PLI's Patent Law Institute their one stop shop for patent law updates.


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: 8:30 a.m. - 5:00 p.m.

8:30 Networking Breakfast

9:00 Opening Remarks

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



9:15 Featured Speaker: Policy Revisions at the Patent Office: Cause and Effect
  • Changing PTAB policy at USPTO
  • New claim interpretation standard
  • Light at the end of the 101 tunnel
  • For life sciences
  • For computer implemented methods

Speaker TBD



10:15 Patent Law: A Year of Supreme Court and Federal Circuit Decisions in Review
  • International damages and the effects of the Supreme Court's decision in WesternGeco v. ION Geophysical
  • Private sales as prior art and the ramifications of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.'s interpretation of § 102(a)
  • The Federal Circuit's refusal to invalidate patents under § 101 on summary judgment in light of factual questions as expressed, for example, in Berkheimer v. HP Inc.
  • Appealability of PTAB determinations in light of the Federal Circuit's en banc determination in Wi-Fi One LLC v. Broadcom Corp.
  • Other cases of note

Denise De Mory



11:15 Networking Break

11:30 The Continuing Evolution of PTAB Practice
  • PTAB trial institution and the effects of SAS
  • Impact of the updated PTAB Practice Guide including on briefing, live testimony, and expert opinions
  • Alternative areas for early resolution and pre-hearing conferences
  • The use claim amendments during post-issuance examination procedures

Hon. Matthew Clements (Invited)



12:30 Lunch

1:45 Breakout Session No. 1a: Litigation – International Patent Litigation Issues: A Stroll Around the Globe
  • Comparison of major patent venues including U.S., U.K., Germany, China, Korea, Canada, 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 enforcement strategies

Prof. Marketa Trimble



1:45 Breakout Session No. 1b: Prosecution – New/Revised Patent Rules/Policy to Learn
  • Berkheimer guidance
  • The new digital certificate for EFS
  • Speeding it up - PPH and prioritized examination
  • QPIDS – post-issue fee payment help for the late IDS

Brian Hanlon (Invited), Robert J. Spar



1:45 Breakout Session No. 1c: Strategic & Transactional – 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
  • Litigation perspectives, including privilege and waiver
  • Practical considerations when receiving unsolicited letters

Stephen MacKenzie, Jon R. Trembath



2:45 Breakout Session No. 2a: Litigation – Appealing Patent Litigation Decisions: What Looks Good
  • Best practices for managing the transition from district court determination to Federal Circuit appeal
  • Common procedural pitfalls to avoid in Federal Circuit and Supreme Court practice
  • Marshalling facts and narrowing issues to present the best face for appeal
  • Historical trends and statistical analysis of Federal Circuit and Supreme Court success for various types of patents and litigants

Betty H. Chen



2:45 Breakout Session No. 2b: Prosecution – Old/Existing Patent Rules/Policy to Follow!
  • ADS Changes/Amendments: Getting it right the 1st time
  • Timely asserting and correcting priority
  • Whom do you represent – who signs what?
  • Securing a filing date – reference filing and 53(b)

Brian Hanlon (Invited), Robert J. Spar



2:45 Breakout Session No. 2c: Strategic & Transactional – Drafting Globally Compliant Patent Applications: Dream or Reality? An Interactive Discussion
  • Is drafting globally compliant patent applications practically possible in every technology?
  • Best practices for preparing global patent applications
  • Tips and tricks for reducing costs associated with global patent applications
  • Why to file in some countries, but not in others
  • IT and bio patent issues outside the U.S.

Brian H. Batzli, Judith U. Kim, Jonah Probell



3:45 Networking Break

4:00 Breakout Session No. 3a: Litigation – Drawing the Ethical Line Between Exceptional Advocacy and "Exceptional Case"
  • Exceptional case findings from the Federal Circuit reveal the line between zealous advocacy and ethical violations
  • Pre-suit investigations and good faith basis for making claims:  comparing Rule 11 to the canons/rules of ethics
  • Understanding the many ethical rules governing PTAB practice
  • Avoiding little-known ethical pitfalls in patent litigation

Douglas R. Nemec



4:00 Breakout Session No. 3b: Prosecution – PTO Ethics

In this segment, we will review the PTO’s adaptation of the ABA model rules for professional responsibility and provide best practices for patent lawyers to remain compliant.

  • Avoiding “legal” malpractice at the USPTO under 37 CFR 11.102
  • How to avert conflicts of interest under 37 CFR Part 11.107
  • Doing "business with clients" under 37 CFR 11.108
  • Duty to past clients under 37 CFR 11.109
  • Imputation of conflicts under 37 CFR 11.110 - the firm and "Chinese Walls"
  • Recent disciplinary decisions from OED and its impact on the legal profession
  • CLE and Patent Bar Dues at the PTO – A new day

Eugene R. Quinn, Jr. (Invited)



4:00 Breakout Session No. 3c: Strategic & Transactional – Ethical Considerations in Data-Centric Business Models in the Connected, Autonomous Realm
  • An overview of the complex legal as well as ethical challenges that arise in the data-centric business models (connected, autonomous realm) 
  • Data management ethical challenges
    • Examining privacy, security, safety and bias when dealing with collections of data 
  • Professional ethical challenges
    • Understanding the existing law and our role in anticipating new laws as well as advocating new laws
    • An examination of the professional ethical challenges in this realm

Sharmini Green



5:00 Adjourn

Day Two: 8:30 a.m. - 5:00 p.m.

8:30 Networking Breakfast

9:00 Breakout Session No. 4a: Litigation – Today Only: "Advisory Opinions" on Common Procedural and Discovery Patent Disputes
  • Live judicial determination of disputed discovery issues
  • Know when to hold 'em, know when to fold 'em — picking your battles
  • Practice tips for framing and presenting arguments
  • Trends in discovery strategy for both plaintiff and defense counsel

Stacey L. Cohen, Hon. K. Nicole Mitchell



9:00 Breakout Session No. 4b: Prosecution – Recent Developments in Chemical, Pharma and Bio Patents

Patent prosecutors can learn much by understanding how patents they prosecute are scrutinized in litigation.  This hour will concentrate on cases arising in Federal District Courts and will include the following topics/cases:

  • The CAFC decision in Vanda v. West-Ward Pharma where the CAFC finally upheld a “personalized medicine” (method of treatment) patent against a 101 challenge.  The subsequent PTO Guidance in view of the Vanda case will also be discussed
  • The Roche Molecular Systems v. Cepheid case, in which the CAFC upheld a finding that claims to a detection method using primers was not patent eligible
  • Claim interpretation cases such as Sumitomo Dainippon Pharma v. Emcure Pharm
  • In a rare case where a “non-biotech, non-pharma” patent was held not to be enabled, in Boston Univ. v. Everlight the CAFC held a patent to a semiconductor device invalid for lack of enablement for failure to teach how to make the device using one of a small number of claimed materials
  • An update on cases relating to novelty and obviousness

Craig A. McRobbie, Tara Stuart



9:00 Breakout Session No. 4c: Strategic & Transactional – Emerging Technologies and Patent Law: What You Need to Know
  • Introduction to Blockchain, 3d Printing, IoT and AI
  • Challenges and realities
  • Potential ownership issues
  • Key considerations when advising clients on patents and emerging technologies
  • A look into the future

Joe Lenart, Michael T. Moore



10:00 Breakout Session No. 5a: Litigation – PTAB Procedure Checkup: New Statistics and Recent Updates
  • Recent statistics on PTAB invalidation rates for various types of patents and patentees
  • New trends in PTAB practice resulting from the updated Trial Handbook
  • Strategic insight into best practices in light of the Supreme Court's revision of institution determinations
  • Empirical analysis of the evolving role of PTAB practice

Brent K. Yamashita



10:00 Breakout Session No. 5b: Prosecution – Recent PTAB Decisions for Chemical, Pharma and Bio Patents

This segment will concentrate on case studies arising at the PTO, including related appeals, and will address the following topics/cases:

  • The CAFC decision in Univ. of Cal. v. Broad Institute relating to the groundbreaking CRISPR technology, together with a brief discussion of licensing implications for companies using this technology
  • The Gruenenthal v. Antecip BIoventures decision of the PTAB in a PGR case where the PTAB held that the claimed ranges could not be derived from the specification and therefore the claims were invalid for lack of written description
  • Recent PTAB decisions on other issues such as novelty and obviousness
  • The new Claim Construction rules for PTAB trials

Craig A. McRobbie, Tara Stuart



10:00 Breakout Session No. 5c: Strategic & Transactional – Building A Strong Patent Portfolio – Views From In-House
  • Strategic considerations
  • Invention harvesting and management
  • The role of outside counsel
  • Cost-effective strategies for enhancing patent quality

Kevin McLintock, Sunjay Mohan, Judy Shie



11:00 Networking Break

11:15 Breakout Session No. 6a: Litigation – ITC Litigation: High Speed Patent Enforcement
  • Choosing evidence tailored to specialized ITC judges
  • Navigating the fast lane and best practices for triaging issues
  • Overview of regulatory requirements including importation and domestic industry
  • Examining the increasing presence of non-domestic and non-practicing ITC complainants

Philip W. Marsh



11:15 Breakout Session No. 6b: Prosecution – Computer Implemented Methods at the PTO
  • Berkheimer and its effect
  • Has 101 become predictable (at least!)
  • Variability Art Unit to Art Unit – the stats
  • Is now the “future”?

Kate Gaudry



11:15 Breakout Session No. 6c: Strategic & Transactional – Hot Topics in Technology Transfer and Licensing
  • University tech transfer issues
  • Performance, royalty and other provisions
  • Realizing value for both parties

Justin Anderson, Keith Marmer, James Thompson



12:15 Lunch

1:45 The Fast-Changing World of Software-Related Patents: Critical Issues You Need to Know Now
  • Operating in a post-Alice world
  • Forecasting the evolution of Section 101
  • The stealthy effects of functional claiming under Section 112
  • Practical litigation and prosecution advice for dealing with software patents

Scott M. Alter, June E. Cohan (Invited), Sonal N. Mehta, Lissi Mojica



2:45 Corporate Counsel Panel: What’s Keeping Corporate Counsel Awake at Night
  • Effects of recent court decisions and USPTO activity
  • The changing landscape of litigation
  • Concerns regarding newly enacted and pending legislation
  • The economy . . .
  • Other patent issues weighing on the minds of corporate counsel

Kevin Brown, Eric M. Hutchins, Javier Leija, Elizabeth Morris, Vishnu Ramaswamy



3:45 Networking Break

4:00 Current Ethical Issues in Patent Practice
  • Cloud Computing and Data Breach Issues, including complying with obligations under Rule 1.6 and 37 C.F.R. 11.106 and relevant ethics opinions
  • Conflicts of interest, including recent case law applying Model Rule 1.7, 1.9, and 37 C.F.R. 11.107 and 11.109
  • Recurrent substantive errors in patent drafting and litigation, including violations implicating Model Rule 1.1 and 37 C.F.R. 11.101
  • The growing tension between imposing fee shifting under Section 285 and the duties of competency and loyalty

Prof. David H. Hricik



5:00 Adjourn

Co-Chair(s)
Scott M. Alter ~ Michael Best & Friedrich LLP
Douglas R. Nemec ~ Skadden, Arps, Slate, Meagher & Flom LLP
John M. White ~ Director, Soryn IP Group; Berenato & White, LLC
Speaker(s)
Justin Anderson ~ Intellectual Property Manager, Wisconsin Alumni Research Foundation (WARF)
Brian H. Batzli ~ Merchant Gould P.C.
Kevin Brown ~ Director, IP, NVIDIA
Betty H. Chen ~ Fish & Richardson P.C.
Hon. Matthew Clements ~ Lead Administrative Patent Judge, United States Patent and Trademark Office
June E. Cohan ~ Senior Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office
Stacey L. Cohen ~ Skadden, Arps, Slate, Meagher & Flom LLP
Denise M. De Mory ~ Bunsow De Mory LLP
Kate Gaudry, Ph.D. ~ Kilpatrick Townsend & Stockton LLP
Sharmini Green ~ Assistant Director of Patents, Intel Corporation
Brian Hanlon ~ Director, Office of Patent Legal Administration, United States Patent and Trademark Office
Prof. David Hricik ~ Professor of Law, Mercer University School of Law
Eric M. Hutchins ~ Senior Patent Counsel, Oracle Corporation
Judith U. Kim ~ Rubin and Rudman LLP
Javier Leija ~ Director IP Transactions & Sr. IP Attorney, ON Semiconductor
Joe Lenart ~ Kennedy Lenart Spraggins LLP
Stephen MacKenzie ~ Senior Counsel, Intellectual Property and IP Litigation, Koch Industries Inc.
Keith Marmer ~ Executive Director and Associate Vice President, Technology & Venture Commercialization, University of Utah
Philip W. Marsh ~ Arnold & Porter
Kevin McLintock ~ Director, Worldwide Patent and IP Strategy, Logitech Inc
Craig A. McRobbie ~ Birch, Stewart, Kolasch & Birch, LLP
Sonal N. Mehta ~ Durie Tangri LLP
Hon. K. Nicole Mitchell ~ Magistrate Judge, United States District Court, Eastern District of Texas
Sunjay Mohan ~ Vice President, Head of Global Patent Group, SAP
Lissi Mojica ~ Managing Director, Answers IP, LLC
Michael T. Moore ~ Associate General Counsel, Products and Patents, Pure Storage, Inc.
Elizabeth Morris ~ Director of Intellectual Property Law, KLA-Tencor Corporation
Jonah Probell ~ IP Strategist, SoundHound Inc.
Eugene R. Quinn, Jr. ~ President and Founder, IPWatchdog.com, IP Watchdog, Inc.
Vishnu Ramaswamy ~ Senior Counsel, Western Digital
Judy Shie ~ Product Counsel, Pure Storage, Inc.
Robert J. Spar ~ Patent Prosecution and Practice Specialist, Director (Ret.), Office of Patent Legal Administration, U.S. Patent and Trademark Office
Tara Stuart ~ Counsel, IP, Gilead Sciences
James Thompson ~ Associate Vice President for Innovation; Executive Director, Commercialization Team, University of Notre Dame
Jon R. Trembath ~ Michael Best & Friedrich LLP
Prof. Marketa Trimble ~ Samuel S. Lionel Professor of Intellectual Property Law, William S. Boyd School of Law, University of Nevada, Las Vegas
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 2018.

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

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

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

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.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

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.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

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