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IP Chat Channel – Federal Circuit and Other Appellate Decisions

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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Winning Attorney Fees: What Works, What Doesn't 

Webinar Date: 07/20/2017

It has been three years since the U.S. Supreme Court decision in Octane Fitness made it easier for parties in patent litigation to recover attorney fees. Today, battles over fees are no longer rare; litigants request fees more frequently, and judges grant those requests at a higher rate.  

But the path to winning fees is not straightforward. Our panel of litigators, all of whom have been involved in patent litigation fee fights, will discuss issues including: 

  • How to choose between a Rule 11 sanction or a Section 285 fee award when both may be attainable; 
  • How to handle the delicate matter of disclosing billable hours and hourly fees, particularly in joint defense groups; 
  • Is there a best time to request fees? What milestones make such a request appropriate?; 
  • What are the routes to collecting fees from a non-practicing entity that is using a corporate veil to shield assets? 

Speakers: 

  • D. Clay Holloway, Kilpatrick Townsend & Stockton LLP 
  • Lionel Lavenue, Finnegan, Henderson, Farabow, Garrett & Dunner LLP 
  • Robert Palmersheim, Honigman Miller Schwartz & Cohn LLP 



Who Will "Dance" Now? Biosimilars After Amgen v. Sandoz 

Webinar Date: 07/12/2017

Developers for biosimilars face not only stiff technical and manufacturing challenges, but also legal uncertainty regarding the enabling legal framework, the Biologics Price Competition and Innovation Act (BPCIA) of 2010. Two of those questions — regarding the availability of a federal injunction to compel information disclosure and the timing of the biosimilar maker’s notice of marketing — were answered in last month’s U.S. Supreme Court opinion on two cases between Amgen and Sandoz. 

But much remains uncertain. Our panel of top drug industry litigators will give their views on what lies ahead regarding such questions as: 

  • Will the “patent dance” be essentially mandatory under state law? Will availability of an injunction vary by state, perhaps triggering important venue issues? 
  • When would a biosimilar maker choose the patent dance even if it is not mandatory? 
  • How soon can a biosimilar manufacturer give notice of commercial marketing? Can it be done before filing for FDA approval? 

 Speakers: 

  • Elaine Blais, Goodwin Procter LLP 
  • Brian Slater, Kramer Levin Naftalis & Frankel LLP 
  • Bruce Wexler, Paul Hastings LLP 



Exhaustion Unleashed: Licensing, Patenting Strategy, and Litigation After Lexmark 

Webinar Date: 06/28/2017

This webinar will explore the significant ramifications of the recent U.S. Supreme Court decision in Impression Products v. Lexmark. Exhaustion of patent rights is a very simple matter, the Court said, and the Federal Circuit has been wrong both to allow domestic post-sale restrictions under patent law and to allow U.S. patent owners to sue for infringement of products imported into the U.S. that the patentee first sold abroad. The opinion notes, “We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.” 

Our panelists include the top IP lawyer at a multinational pharmaceutical company, a law firm attorney who was formerly the head of IP litigation at GE, and a licensing expert. They will discuss how companies will need to react to the newly-fortified power of exhaustion, including: 

  • Structuring licenses as a way around exhaustion; 
  • Antitrust concerns about enforcing post-sale restrictions through contracts after Lexmark; 
  • Structuring patent ownership, supply chain management, and inventory management to reduce exhaustion, and important tax implications. 

Speakers: 

  • Paul Jahn, Morrison & Foerster LLP 
  • William Krovatin, Merck & Co., Inc. 
  • Richard Rainey, Covington & Burling LLP



Venue Transfers and Section 1400(b) After Heartland 

Webinar Date: 06/13/2017

This webinar gathers three savvy patent litigators with deep knowledge of both the Eastern District of Texas and nationwide patent practice and law to consider the implications of the recent U.S. Supreme Court decision in Heartland. Broadly speaking, the uncertainties surrounding patent litigation venue can now be divided into two categories: first, what happens to pending cases; and, second, where can new patent litigation be filed. The panelists will consider, taking into account the latest developments: 

  • Pending cases: the options, as defined by timing, waivers, judges’ discretion, the declaratory judgment option for defendants in new venues, whether plaintiffs should file in a new proper venue, etc., mandamus petitions to the Federal Circuit and the appellate court’s likely solutions; 
  • New cases: the renewed emphasis on the second prong of Section 1400 — “where the defendant has committed acts of infringement and has a regular and established place of business” — now that the first prong (where the defendant “resides”) is limited by Heartland to the defendant’s place of incorporation. This will include a review of the frequent legal fights over venue that took place in the decades between the U.S. Supreme Court’s decision in Fourco (1957) and the Federal Circuit’s now-discredited liberalization of venue in VE Holding (1990). 

Speakers: 

  • Kenneth AdamoKirkland & Ellis LLP 
  • Brett Johnson, Winston & Strawn LLP 
  • Bill Sigler, Fisch Sigler LLP 



Pharma Lessons from the PTAB: Litigation and Prosecution 

Webinar Date: 06/08/2017

After a slow start, AIA challenges are now a frequent life-or-death risk for biopharmaceutical patents, totaling 212 in 2016, more than twice the number two years earlier. Exemplifying the PTAB’s power was the Federal Circuit’s April decision in Novartis v. Noven that upheld the invalidation by the PTAB of claims covering Novartis’ dementia patch Exelon, even though both the Federal Circuit and Delaware’s federal court had earlier ruled otherwise. Our panelists, all litigators with extensive pharma patent PTAB experience, will spell out winning strategies specific to the industry for both patent owners and challengers, and also will highlight lessons for patent prosecutors that emerge from PTAB practice. Topics to be discussed include: 

  • The role of objective indicia of nonobviousness. Pharma patents do put up a better fight at the PTAB than other technologies: last year, a third of biotech/pharma claims survived PTAB trials, almost three times the survival rate of electrical/computer claims; 
  • The surge in PGRs challenges to pharma patents on Section 112 grounds of indefiniteness and enablement; 
  • The relationship between district court Hatch-Waxman litigation and PTAB challenges; 
  • How to inoculate continuations or divisionals of challenged patents to relevant prior art. 

Speakers: 

  • Eldora Ellison, Sterne Kessler Goldstein & Fox, PLLC 
  • Cynthia Lambert Hardman, Goodwin Procter LLP 
  • Kerry Taylor, Knobbe, Martens, Olson & Bear LLP 



On-Sale Bar After Helsinn: What is the Scope? 

Webinar Date: 06/01/2017

How can a recent Federal Circuit opinion on the on-sale bar, that appears to maintain the status quo, all the same be causing anxiety in the minds of some in-house counsel? This webinar will explore the ramifications of the April decision Helsinn v. Teva, that reversed a lower court by holding that the 2011 America Invents Act on-sale bar provision renders patents invalid if the invention was sold prior to patenting, even if the sale did not publicly disclose the invention.

Helsinn appears to be consistent with a long line of cases about secret sales, including Metallizing. But some in-house counsel, particularly in pharma and other regulated industries, are concerned about the facts of the case, in which the public disclosure of a private purchase-and-supply agreement between Helsinn and a third-party distributor was found invalidating. They worry that many contracts regularly inked by their in-house clients prior to filing a patent application will now need the added scrutiny of IP counsel. And if such transactions are known by the prosecuting patent attorney, will they have to be disclosed to the USPTO?

Our panel includes an in-house counsel at a global chemical company, a pharmaceutical industry litigator, and a professor of patent law.

Speakers:

  • Prof. Dennis Crouch, University of Missouri School of Law
  • Deborah Fishman, Arnold & Porter Kaye Scholer LLP
  • Jennifer Johnson, DuPont



After Laches: Equitable Estoppel Redux? 

Webinar Date: 05/11/2017

The recent U.S. Supreme Court decision in SCA Hygiene v. First Quality rejected, 7-1, the defense of laches for damages incurred within the six-year period of limitations prescribed by Section 286. This webinar will focus on a separate point mentioned by both the majority and the dissent – that equitable estoppel can protect against some of the consequences that may ensue from the court’s decision, problems described by the majority as “unscrupulous patentees inducing potential targets of infringement suits to invest in the production of arguably infringing products.” 

Our panel — an in–house counsel and two law firm litigators — will explore whether equitable estoppel defense can indeed be used in many fact scenarios where laches previously applied. According to the Federal Circuit, equitable estoppel can entirely bar a patent infringement suit, if (1) the patentee, through misleading conduct, led the alleged infringer to reasonably believe that the patentee did not intend to enforce its patent; (2) the alleged infringer relied on that conduct; and (3) due to its reliance, the alleged infringer would be materially prejudiced if the patentee were permitted to proceed with its charge of infringement. A defendant has successfully used equitable estoppel, for instance, where a patentee sent a cease-and-desist letter, but did not file suit for an extended period of time. 

Speakers: 

  • Roger Cook, Kilpatrick Townsend & Stockton LLP 
  • Ann Fort, Eversheds Sutherland LLP 
  • David Kelley, Ford Global Technologies LLC 



After Form 18: Pleading Infringement

Webinar Date: 04/27/2017

This webinar will consider the spectrum of views district courts have embraced regarding the pleading standard for direct infringement since the abrogation of Form 18 in late 2015, and offer strategies for both plaintiffs and defendants.

Plaintiffs filing under the new Federal Rules of Civil Procedure must meet the pleading standard articulated by the U.S. Supreme Court in Bell Atlantic v. Twombly and Ashcroft v. Iqbal. Different courts must have ruled differently on what that means in practice, with decisions varying case-to-case according to the patent and product, and from lenient to very strict. At one extreme, one district judge has held that a Form 18-style pleading was sufficient to meet current standards, while at the other end of the spectrum, a court has required the plaintiff to allege facts showing infringement of every asserted claim.

Our panelists will analyze the new challenges, such as defendants’ need to reply to a detailed complaint with little time to prepare affirmative defenses, such as invalidity. The panelists will also discuss how the Federal Circuit has addressed the new pleading standard in Lyda v. CBS, and whether more definitive guidance is likely to be forthcoming.

Speakers:

  • David Donoghue, Holland & Knight LLP
  • Chris Freeman, Blackbird Technologies
  • Mark Hannemann, Shearman & Sterling LLP



Settlement Agreements as Comparables: New Comprehensive Analysis from the Federal Circuit

Webinar Date: 04/20/2017

Last month, Federal Circuit Judge Taranto, writing for a unanimous panel, laid out a complete road map to the admissibility of settlements in patent infringement litigation. That detailed opinion, Prism v. Sprint, is likely to put an end to the seven-year unsettled period that has followed the Federal Circuit decision in ResONet v.  Lansa. That 2010 opinion upset case law reaching back to 1889 that rarely deemed settlement agreements admissible in patent infringement litigation. ResONet asserted, to the contrary, that “the most reliable license in this record arose out of litigation.” Since then, district courts have tended to follow their own inclinations on the issue, with some assessing the admissibility of settlements in a fact-dependent case-by-case analysis, and others remaining more inclined to exclude settlements.

In Prism, the Federal Circuit lays out a detailed scheme for the balancing act required under Rule 403, whereby a district court “may exclude relevant evidence if its probative value is substantially outweighed” by such dangers as unfair prejudice and misleading the jury. The opinion addresses such issues as:

  • What evidence is needed to show value of the asserted patents when the old settlement covers more than the patents in the present controversy;
  • How the timing of the settlement of an earlier dispute affects its probative value for a settlement late in trial, meaning the record was more fully developed; and
  • How settlements are not that different from licenses, because “the potential for litigation…must loom over patent licenses generally, including those signed without any suit ever being filed.”

Our panel, which includes two litigators and a damages expert, will discuss how to best leverage Prism to keep settlements both in and out of evidence. They will also analyze Sprint’s recent filing of a petition for rehearing or rehearing en banc and discuss possible outcomes.

Speakers:

  • Stephen Holzen, Stout Risius Ross
  • Samuel Walling, Robins Kaplan LLP
  • Karen Weil, Knobbe, Martens, Olson & Bear LLP



Design Protection After Star Athletica: Way Beyond Fashion

Webinar Date: 04/13/2017

Don’t be distracted by the sports metaphors and the fashion industry commentary. Last month’s decision by the U.S. Supreme Court in Star Athletica v. Varsity Brands found that decorative elements of cheerleader uniforms were potentially protected by copyright law. That decision opens a new avenue for protection of industrial designs as well, an area which itself has earned a higher profile within IP law recently because of the ongoing fight in Apple v. Samsung. That smartphone case involves design patents, of course, but experts say that the Star Athletica should spur new consideration of how copyright and design patents, as well as trade dress and utility patents, can or can’t work together. Increased use of copyrights to protect industrial design makes new litigation on this issue more likely.

Our panel includes an in-house counsel at a technology company and two law firm lawyers, one specializing in design patents and the other in copyright. They will discuss such questions as:

  • How does Star Athletica change the scope of copyright protection for designs? When is copyright protection for useful objects now appropriate?
  • What are the differences among the different modes of protection, including “novelty and non-obviousness” for design patents, “originality” for copyrights, and “acquired distinctiveness” for trade dress?
  • What are the open questions left by Star Athletica that are likely to be litigated in the future?

Speakers:

  • Terry Carroll, IBM Corp.
  • Robert Katz, Banner & Witcoff, Ltd.
  • Katherine Spelman, Lane Powell PC



IPR Estoppel in District Court:  How Wide?

Webinar Date: 03/29/2017

As more patents survive AIA inter partes reviews, the application of estoppel for invalidity arguments in district court and the PTAB is becoming increasingly important. A year ago, in Shaw Industries v. Automated Creel Systems, the Federal Circuit held that estoppel does not apply to grounds denied by the PTAB in an IPR because the “IPR does not begin until it is instituted.”

But in Intellectual Ventures v. Toshiba late last year, a district court also refused to apply estoppel to “references that were never presented at all.” It is not clear at present whether the Federal Circuit will confirm that view, or if it will feel obliged to define the boundaries of prior art that “reasonably could have been raised” as in Section 315. Today, an uncomfortable stasis holds: District courts are interpreting Shaw to apply Section 315(e)(2) one way, while the PTAB interprets nearly identical language in Section 315(e)(1) in a different way that broadens IPR estoppel. Our panel will analyze the situation for both patent owners and petitioners, and offer tactics on how both can best navigate the legal uncertainties.

Speakers:

  • Jon Gurka, Knobbe, Martens, Olson & Bear LLP
  • Hon. Faith Hochberg, Hochberg ADR
  • Thad Kodish, Fish & Richardson PC



Divided Infringement in the Life Sciences: Patent Prosecution Perspective

Webinar Date: 03/16/2017

With the Federal Circuit decision earlier this year in Eli Lilly v. Teva Parenteral, the reach of divided infringement into the life sciences left the realm of the hypothetical. Akamai v. Limelight and other prior cases about divided infringement involved software and the Internet, but the Lilly case involved a medical method of treatment. The case is also the first Federal Circuit decision to affirm a finding of divided infringement using the new standard for “direct or control” established by the en banc Federal Circuit in August 2015. Under that standard, an infringer can be found guilty of infringement, even if one did not perform all steps of a patented method. In addition to exerting control through traditional means, an infringer can now be held liable when one “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” The relationship between doctor and patient is discussed in this context in the Lilly opinion.

Our panel, which includes an in-house patent counsel at a drug company and two patent prosecutors, will analyze Lilly, and extract principles that can be used to guide patent claim drafting in such fields as personalized medicine and companion diagnostics, measuring the efficacy of treatment through biomarkers, and methods involving pretreatment. The panelists will also consider the interplay of factors unique to the drug industry, such as the role of the FDA label.




Divided Infringement Since Akamai En Banc: Development of the Law

Webinar Date: 03/14/2017

Following a lengthy trip to the U.S. Supreme Court and back, in August 2015, the Akamai v. Limelight case resulted in the en banc Federal Circuit establishing a new standard for finding an infringer guilty of direct infringement even if one did not perform all steps of a patented method. The infringer can now be held liable when one “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance,” in addition to exerting control through traditional means

Companies in many industries are acutely interested in how the new legal standard is developing, and there are now signposts. Earlier this year, the Federal Circuit affirmed a finding of divided infringement in Eli Lilly v. Teva Parenteral. Underlining the broad impact of Akamai, a case that involved software and the Internet, this case involved a method of medical treatment. The Federal Circuit has also ruled for the defendant in two other cases, refusing to remand a case back to the district court because the new standard would not change the outcome and find the pleading of divided infringement too vague. Several district courts have also recently rendered decisions on divided infringement.

Our panel will describe and analyze how courts are applying Akamai.

Speakers:

  • John Carlin, Fitzpatrick, Cella, Harper & Scinto
  • Michael Joffre, Sterne, Kessler, Goldstein & Fox PLLC
  • Frank Nuzzi, Siemens Corp.



After Life Tech v. Promega: Litigation and Business Strategies for Patent Owners and Defendants

Webinar Date: 03/09/2017

This webinar will consider what new legal battles are likely to follow from last month’s U.S. Supreme Court decision in Life Tech v. Promega. The decision reversed the Federal Circuit by finding that Thermo Fisher Scientific’s Life Technologies unit did not infringe by shipping a single component of Promega’s patented invention overseas, in a case involving Section 271(f)(1) of the Patent Act.

In parsing that statute, the Justices declined to rule on how close to “all” of an invention’s components must be exported in order to be the “substantial portion” that is needed to infringe. Presumably, that determination will be argued in front of a jury. It is also not clear whether it will be a judge or the jury who will answer the question of exactly how many “components” are defined within a patent. Patent owners will want to argue that there are multiple components in the part of an invention shipped overseas, while alleged infringers will want to include many parts of a patent in one component.

Our panel, which includes the head of IP for a large technology company and two litigators, each of whom was involved in an amicus brief in the case, will also discuss strategies for patent prosecution and global supply chain management going forward. For instance, inventors may want to look harder at procuring foreign patents in countries where competitors are likely to repackage or use components of an invention that now is patented only in the U.S.

Speakers:

  • Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
  • Irena Royzman, Patterson Belknap Webb & Tyler LLP
  • Bradford Schmidt, Agilent Technologies



Willfulness, Enhanced Damages, and Opinion of Counsel Since Halo

Webinar Date: 02/23/2017

It has been more than six months since the U.S. Supreme Court’s Halo decision lowered the bar for proving willful infringement, and this boon for plaintiffs is quickly changing trial strategy. Our panel of experienced litigators will begin by examining how courts post-Halo have decided the sufficiency of pleading for enhanced damages at the motion-to-dismiss stage. Then, the panel will consider the factors that have most strongly influenced recent district court decision to enhance — or not enhance — damages, including notice by the patent owner (cases such as CH20 and Finjan), copying (Westerbeke, Imperium, and PPC), and opinions of counsel (Dominion, Presidio, and Boston University). A favorably timed opinion of counsel can prove successful in warding off a finding of willfulness, but defendants need to consider the effect of an opinion of counsel on attorney-client privilege.

Speakers:

  • Natalie Hanlon Leh, Wilmer Cutler Pickering Hale and Dorr LLP
  • Christopher Marchese, Fish & Richardson PC
  • Michael Zeliger, K&L Gates LLP



Waiting for Heartland: Venue Tactics Until the U.S. Supreme Court Decision

Webinar Date: 02/01/2017

This program will consider likely and suggested moves for plaintiffs and defendants over the next months while litigants wait for the U.S. Supreme Court decision in TC Heartland. If the justices decide to overturn the Federal Circuit’s liberal stance toward venue, it could well reshape patent litigation, curtailing the number of cases that can be filed in the Eastern District of Texas, the leading beneficiary of forum-shopping. Last year, EDTX received more case filings than the next four U.S. court districts combined, and that number is likely to fall if venue is restricted to where the defendant is incorporated or has a place of business.

Our panel includes a litigator who often represents defendants in patent suits, a litigator who often represents plaintiffs, and a veteran local counsel in EDTX. They will consider such issues as:

  • Will there be a surge of complaints filed in EDTX before June?
  • What new plaintiff strategies might emerge in EDTX or elsewhere, such as an uptick in cases against customers or distributors? Will this lead to more use of MDL in patent cases?
  • The definition of “a place of business” has not mattered for decades, but it could in the future. Is a sales representative enough to establish venue? Do you need an inventory of products?
  • What will happen to cases pending in EDTX if the Supreme Court changes the law? Will it matter at what stage the litigation is pending?
  • What will be the retroactive time window for appealing an EDTX decision or judgment if the law changes?

Speakers:

  • Jeffrey Bragalone, Bragalone Conroy PC
  • Colette Reiner Mayer, Morrison & Foerster LLP
  • Michael Smith, Siebman, Burg, Phillips & Smith LLP



Evidence of Prior Art at the PTAB: Rigorous Proof -- or Else

Webinar Date: 01/19/2017

Several interesting recent decisions at the PTAB exhibit a “man bites dog” pattern in which the patent owner has succeeded in disqualifying the petitioner’s evidence of prior art, and saved patent claims as a result. These decisions reflect the limited discovery allowed by the PTAB to meet its tight deadlines. Although ambiguity about prior art might be resolved in discovery at district court, the PTAB generally requires evidence of prior art to be meticulously substantiated in the petition for an AIA review.

These cases, including Blue Calypso v. Groupon and GoPro v. Contour IP, expand the edges of existing case law on the use of Internet-based and printed prior art regarding public accessibility to those skilled in the art. Moreover, in a recent post-grant review (PGR) Altaire Pharmaceuticals v.  Paragon Bioteck, the first time the PTAB upheld a patent in a PGR, the patent survived because the petitioner failed to prove that the claims were invalid due to public use or on-sale activity. Altaire asserted that earlier sales of its own eye solution product had made Paragon’s invention obvious, but failed to conform to PTAB rules about experimental testing.

Speakers:

  • David Conrad, Fish & Richardson PC
  • Brian Mudge, Andrews Kurth Kenyon LLP
  • Michael Rosato, Wilson Sonsini Goodrich & Rosati



Design Patents: Future of Damages After Apple v. Samsung

Webinar Date: 01/12/2017

In its recent opinion, the U.S. Supreme Court answered this question posed by Samsung: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” The reply of the unanimous court, in an opinion written by Judge Sotomayor: “The term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” That answer rejects the Federal Circuit’s longstanding interpretation of Section 289.

However, experts say the Supreme Court’s opinion raises many more questions. The Federal Circuit must now create a test that will allow a jury to determine whether the “article of manufacture” covered by a design patent is the entire product or a component, and what that component is. For now, it is not clear whether the patent owner or the defendant bears the burden of proof. Then, it will be up to a judge to apportion to the component some part of the infringer’s entire profits on the product. Our panel — a design patent litigator, a damages expert, and a law professor specializing in patent damages — will discuss how the law of design patent damages might evolve, and see what the options might mean applied to cases currently being litigated, such as Apple v. Samsung and Nordock v. Systems.

Speakers:

  • Prof. Thomas Cotter, University of Minnesota Law School
  • Dawn Hall, FTI Consulting
  • Richard Stockton, Banner & Witcoff, Ltd.



Risky Interactions: Using Multiple USPTO Post-Grant Proceedings Concurrently and Sequentially

Webinar Date: 12/15/2016

Keeping up with the rapidly-evolving law regarding AIA post-grant proceedings is a necessity for many IP lawyers. However, they must contend with an added dimension: simultaneously or sequentially handling multiple kinds of proceedings involving the same patent or patents. The panelists on this webinar, all with recent firsthand experience of these complicated situations, will give tips on:

  • Parallel reexaminations and IPRs, from both the patent owner and petitioner view;
  • Certificates of correction;
  • Parallel reissues;
  • Continuations;
  • Handling multiple IPRs on the same patent;
  • Patent owner estoppel following an adverse judgment.

Speakers:

  • David Cavanaugh, Wilmer Cutler Pickering Hale & Dorr LLP
  • Kevin Greenleaf, Dentons LLP
  • Matthew Kelly, CME Group



Launching a Post-Grant Proceeding: In-house Perspective and Strategy

Webinar Date: 12/01/2016

This webinar will consider best practices for the in-house counsel regarding the decision to launch an inter partes review (IPR) proceeding against a patent and managing the process of AIA petition and trial. Our panel includes two in-house counsel from different industries as well as an experienced USPTO litigator. They will discuss:

  • How to assess the strongest defensive case against the assertion of a patent and when not to launch an IPR;
  • Finding guidance in PTAB statistics;
  • The impact of the Halo and Commil decisions on the decision to launch;
  • Hiring outside counsel and predicting costs;
  • Overseeing the petition, the choice of expert, and the preparation for oral hearing;
  • Whether to file an appeal if you lose.

Speakers:

  • Matthew Cutler, Harness, Dickey & Pierce PLC
  • David Kelley, Ford Global Technologies LLC
  • Kimberly Schmitt, Intel Corp.



Obviousness After Apple v. Samsung

Webinar Date: 11/02/2016

The early October en banc decision in a smartphone patent dispute between Apple and Samsung has revealed a startling disagreement on the Federal Circuit about obviousness – a concept viewed by many experts as the central issue in patent law. Judge Dyk, a member of the original three-judge panel that was overruled by the eight-judges majority, said in a dissent that the majority opinion created “profound changes in the law of obviousness” by turning the legal question into a factual one, contrary to KSR. The majority, in contrast, insisted their opinion involved simply “apply[ing] the existing obviousness to the facts of this case.” The majority and the original panel disagree in this case about what weight to give the jury verdict of non-obviousness. While the original panel found little to support the jury’s finding, the majority found that there was the “substantial evidence” required by law, and that the appellate court needed to show the appropriate deference.

Our panel will discuss the likely impact of this case, as well as of the recent Federal Circuit opinion in Arendi v. Apple, where the court overruled the PTAB invalidation of of Arendi’s patents, stressing that “common sense” critiques of an invention must be supported by substantial evidence and explained with sufficient reasoning. Lessons will also be drawn from the recent PTAB decision Innopharma v. Senju Pharmceutical, where after institution the patentee was able to prove to the PTAB both unexpected technical effects and the nexus between those technical effects and commercial success.

Speakers:

  • Robert Asher, Sunstein Kann Murphy & Timbers
  • Kenneth Corsello, IBM Corp.
  • Justin Hasford, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



Software Patent Prosecution and Section 101: Finding Your Way Through Turbulence

Webinar Date: 10/19/2016

Software patent law has been on a wild ride over the past month. At first, in mid-September, patent owners applauded the long-awaited Federal Circuit  decision in McRO v. Bandai, only its fourth pro-patent eligibility decision (out of 20) since the U.S. Supreme Court’s landmark holding in Alice v. CLS Bank. McRO appears to offer new paths to patent eligibility for many inventions by, e.g., its analysis of how the invention in question did not preempt other ways of solving the same problem and its embrace of automated mathematical rules.

But then, in early October, a wide rift among the Federal Circuit judges on Section 101 issues was revealed in the decision that invalidated three patents of Intellectual Ventures that had been asserted against Symantec and Trend Micro. Judge Stoll dissented, saying that one of the patents offered concrete steps and was a technical improvement over prior art, relying on Bascom, a Federal Circuit opinion earlier this year. The majority opinion was written by Judge Dyk, but the eye opener was a concurrence by Judge Mayer, stating his view that patents on software should be banned.

Our panel of patent prosecutors will discuss how they think the USPTO will apply the analysis of patent eligibility presented in McRO, and how applicants can best position their arguments to take advantage of McRO and the earlier DDR, Enfish and Bascom decisions.

Speakers:

  • Stephen Durant, Schwegman Lundberg & Woessner, P.A
  • Amir Penn, Brinks Gilson Lione
  • Robert Sachs, Fenwick & West LLP



Software Patent Litigation and Section 101: Finding Your Way Through Turbulence

Webinar Date: 10/18/2016

Software patent law has been on a wild ride over the past month. At first, in mid-September, patent owners applauded the long-awaited Federal Circuit  decision in McRO v. Bandai, only its fourth pro-patent eligibility decision (out of 20) since the U.S. Supreme Court’s landmark holding in Alice v. CLS Bank. McRO appears to offer new paths to patent eligibility for many inventions by, e.g., its analysis of how the invention in question did not preempt other ways of solving the same problem and its embrace of automated mathematical rules.

But then, in early October, a wide rift among the Federal Circuit judges on Section 101 issues was revealed in the decision that invalidated three patents of Intellectual Ventures that had been asserted against Symantec and Trend Micro. Judge Stoll dissented, saying that one of the patents offered concrete steps and was a technical improvement over prior art, relying on Bascom, a Federal Circuit opinion earlier this year. The majority opinion was written by Judge Dyk, but the eye opener was a concurrence by Judge Mayer, stating his view that patents on software should be banned.

Our panel of litigators, all of whom have argued recent Section 101 cases before the Federal Circuit, will give advice on how to maximize clients’ chances in this confusing environment, including the timing and scope of district court motions to challenge claims under Section 101.

Speakers:

  • Chad Campbell, Perkins Coie
  • John Lahad, Susman Godfrey L.L.P.
  • Mark Raskin, Mishcon de Reya



Parallel Proceedings in District Court and the PTAB: The Endgame 

Webinar Date: 09/22/2016

Our panel will discuss the latest news and tactics regarding the complex interaction between post-grant proceedings at the PTAB and related district court actions. A substantial number of asserted patents are involved in such parallel proceedings.

The panelists will consider the high-stakes race to the courthouse in parallel proceedings. The law gives little guidance what happens when there is a conflict between decisions by the PTAB and by federal courts on patent validity. In May, for instance, a Texas federal judge ordered Ion Geophysical to pay $21 million to Schlumberger in a patent infringement case, despite a ruling from the PTAB invalidating the underlying patent claims. “The PTAB’s final written decisions are currently no more than nonfinal agency determinations, subject to appeal,” the judge wrote. But in Fresenius v. Baxter (2013), the Federal Circuit decided that a USPTO reexamination decision invalidating a patent trumps prior decisions by both the District Court and the Federal Circuit. The Federal Circuit reasoned that the earlier validity decisions did not count for res judicata purposes because it did not conclude the case as a whole. The Federal Circuit was sharply divided in its Fresenius decision and declined to reconsider the holding en banc in a divided opinion, raising questions about whether a differently composed panel will reach the same outcome.

Speakers:

Gary Frischling, Irell & Manella LLP
Michael Florey, Fish & Richardson, PC
Neil Sirota, Baker Botts LLP




Parallel Proceedings in District Court and the PTAB: Midstream Maneuvers

Webinar Date: 09/20/2016

Our panel will discuss the latest news and tactics regarding the complex interaction between post-grant proceedings at the PTAB and related district court actions. A substantial number of asserted patents are involved in such parallel proceedings.

The panel will consider a spectrum of district court decisions regarding the admissibility of PTAB actions in the corresponding district court proceeding: for instance, the PTAB decision to institute or not institute an inter partes review (IPR) or covered business method patent review (CBM), or the PTAB’s claim construction. The panel will also examine the impact of recent Federal Circuit decisions such as Skyhawke Technologies v. Deca, where the appellate court ruled that PTAB claim construction in an inter partes reexamination is not binding on a district court, and Murata v. Daifuku, which may make it easier for a patent owner to obtain a stay in district court.

Speakers:

Mark Finkelstein, Jones Day
Scott Kamholz, Foley Hoag LLP
Mitchell Stockwell, Kilpatrick Townsend & Stockton LLP




Inducement and Indirect Infringement: A Muddle after NuVasive?

Webinar Date: 08/30/2016

What is the current state of the law regarding inducement and indirect infringement? Confused, or so one would surmise after reading Judge Reyna’s concurrence in the recent Federal Circuit opinion in Warsaw Orthopedic v. NuVasive.According to that concurrence, the majority opinion is difficult to harmonize with Commil and Global-Tech, two of the U.S. Supreme Court’s recent decisions on this patent law topic. And experts say unanswered questions remain about how to prove intent to induce and what constitutes willful blindness.

Our panel includes two litigators, one with experience representing plaintiffs in such cases and the other representing defendants, as well as a law professor who is an expert in inducement and whose work has been cited favorably by the U.S. Court of Appeals for the Federal Circuit. They will review the state of the law and give specific current guidance for both plaintiffs and defendants at each stage of litigation involving inducement: pre-complaint, motion to dismiss, discovery, summary judgment, trial, and remedy. They will also discuss the future direction of the law.

Speakers:

John Campbell, McKool Smith
Prof. Tim Holbrook, Emory University School of Law
Blair Jacobs, Paul Hastings LLP




Life Sciences & Section 101: The Way Ahead

Webinar Date: 08/11/2016

The U.S. Supreme Court’s recent decision not to grant certiorari in Ariosa v. Sequenom was a sharp disappointment to many inventors and patent owners who had hoped the Court would revisit and clarify its views on patent eligibility after its decisions in Mayo and Alice. But that was not to be. As a result, the two industries most wounded by Mayo and Alice — life sciences and computer software — must look for paths ahead without any reprieve from the Justices. Recent Section 101 cases from the U.S. Federal Circuit and ex parte PTAB decisions can serve as signposts for both the life sciences and software industries. Our industry-specific panel is made up of a technically-savvy in-house counsel and two top law firm patent prosecutors. They will discuss cases such as:

  • Rapid Litigation v. CellzDirect, where in early July, the U.S. Federal Circuit panel reversed a district court’s holding that claims to a method of isolating and preserving liver cells were patent-ineligible. The appellate court held that the claims did not encompass a judicial exception (step one of the Mayo/Alice analysis). The same kind of analysis helped save patents involving self-referential software databases in Enfish v. Microsoft this spring.
  • Bascom v. AT&T, where in June the U.S. Federal Circuit reversed a district court’s finding that Bascom’s patent for filtering internet content failed step two of the Mayo/Alice The U.S. Federal Circuit stated that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Life science experts believe this finding can also help life science patents.

Our panelists will give specific tips for drafting and prosecuting patents in their industries to avoid Section 101 rejections, resulting in patents that will withstand patent-eligibility attacks in litigation. The life science webinar will include discussion of both therapeutics and diagnostics, and the software webinar will include discussion of several recent useful ex parte PTAB decisions that overturned examiners Section 101 rejections.

Speakers:

Deborah Martin, Pfizer Inc.
Christopher Jeffers, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Warren Woessner, Schwegman, Lundberg & Woessner, P.A.




Software Section 101: The Way Ahead

Webinar Date: 08/10/2016

The U.S. Supreme Court’s recent decision not to grant certiorari in Ariosa v. Sequenom was a sharp disappointment to many inventors and patent owners who had hoped the Court would revisit and clarify its views on patent eligibility after its decisions in Mayo and Alice. But that was not to be. As a result, the two industries most wounded by Mayo and Alice — life sciences and computer software — must look for paths ahead without any reprieve from the Justices. Recent Section 101 cases from the U.S. Federal Circuit and ex parte PTAB decisions can serve as signposts for both the life sciences and software industries. Our industry-specific panel is made up of a technically-savvy in-house counsel and two top law firm patent prosecutors. They will discuss cases such as:

  • Rapid Litigation v. CellzDirect, where in early July, the U.S. Federal Circuit panel reversed a district court’s holding that claims to a method of isolating and preserving liver cells were patent-ineligible. The appellate court held that the claims did not encompass a judicial exception (step one of the Mayo/Alice analysis). The same kind of analysis helped save patents involving self-referential software databases in Enfish v. Microsoft this spring.
  • Bascom v. AT&T, where in June the U.S. Federal Circuit reversed a district court’s finding that Bascom’s patent for filtering internet content failed step two of the Mayo/Alice The U.S. Federal Circuit stated that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Life science experts believe this finding can also help life science patents.

Our panelists will give specific tips for drafting and prosecuting patents in their industries to avoid Section 101 rejections, resulting in patents that will withstand patent-eligibility attacks in litigation.

Speakers:

Stephen Durant, Schwegman, Lundberg & Woessner, P.A.
Michelle Macartney, Intellectual Ventures, LLC
Amir Penn, Brinks Gilson & Lione




After Cuozzo: Litigation at the PTAB, U.S. District Court, and the Federal Circuit

Webinar Date: 07/06/2016

The USPTO emerged as the big winner in the U.S. Supreme Court’s recent Cuozzo decision. The Court approved the PTO’s approach of applying the broadest reasonable construction (BRI) standard to interpret patent claims in post-grant proceedings and it upheld the agency’s interpretation of the AIA provision that bars challenges to the PTO’s decisions to institute inter partes review (IPR).
Our panelists will place Cuozzo in the context of other recent Supreme Court decisions on IP and on judicial deference to federal agencies. They also will discuss:

  • The avenues that remain open for challenging IPR institution decisions, and the pending cert petitions that challenge USPTO post-grant proceedings on constitutional grounds;
  • Whether a Federal Circuit decision on the reviewability of Covered Business Method reviews (CBMs) is inconsistent with Cuozzo;
  • The Federal Circuit decision SAS Institute v. ComplementSoft that gives guidance on procedural safeguards of the Adminstrative Procedure Act regarding post-grant proceedings;
  • Practical tips for litigators on how to deal with two different claim construction standards going forward and;
  • What lessons should patent prosecutors take from Cuozzo?

Speakers:

Morgan Chu, Irell & Manella LLP
Rachel Krevans, Morrison & Foerster, LLP
Scott McKeown, Oblon




Goodbye Seagate: Willfulness and Enhanced Damages After Halo

Webinar Date: 06/30/2016

This month’s U.S. Supreme Court decision in Halo and Stryker makes it easier for a plaintiff in a patent infringement case to win enhanced damages for willfulness. But how much easier? And which of the changes to the Seagate standard – throwing out the threshold of “objective recklessness”, lessening the burden of proof, or rejecting the Federal Circuit’s tripartite framework for appellate review — will have the most impact and in what kind of situations? Our panelists are litigators involved in cases involving willfulness, including C.R. Bard v. Gore and Innovention Toys v. MGA, and PPC v. Corning. They will discuss litigation strategy going forward, and other questions, such as whether companies should reevaluate policies regarding opinions of counsel on non-infringement during product development.

Speakers:

David Caine, Arnold & Porter
Steven Cherny, Kirkland & Ellis
Mark Davies, Orrick




Life Science and Section 101: USPTO New Examiner Guideline

Webinar Date: 05/25/2016

A senior lawyer at the USPTO and two experienced life science patent prosecutors will use this webinar to probe deeply into the new examples published this month that show how claims for life science inventions should be examined by the agency for subject-matter patent eligibility. They will look in detail at the first four examples, two centering on diagnostics and two on inventions that involve a product of nature. Attendees will benefit most if they are already familiar with the examples and have a printed copy of the examples available to refer to during the webinar. The examples are available on the USPTO website.

The panelists will crystallize the examples into “dos and don’t” for patent prosecutors in life science matters relating to Subject 101. They will also discuss pending litigation and how the guidelines will have to change if the U.S. Supreme Court denies certiorari in the Sequenom case. The two diagnostic examples do not apply the 2015 Federal Circuit decision in Sequenom.

Speakers:

Raul Tamayo, USPTO
Courtenay Brinckerhoff, Foley & Lardner
Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP




USPTO and Section 101: New Examiner Guidelines

Webinar Date: 05/18/2016

The USPTO is trying to put an end to the “I know it when I see it” era of subject-matter ineligibility decisions by patent examiners. This month the agency published a new package of guidance to examiners that includes, among other things, instructions on formulating detailed subject-matter eligibility rejections and responses to applicant’s replies, and a new set of life science examples.

Our webinar on Wednesday, May 18 will focus on the patent prosecution process and Section 101 rejections in light of the new guidance. The panel features the USPTO’s Deputy Commissioner of Patent Examination Policy. In discussion with two law firm patent prosecutors, he will explain the agency’s new policies and how the agency will encourage examiners to follow them. The panel will also review the recent Federal Circuit decision in Enfish v. Microsoft and other pending decisions that may cause the USPTO to further adjust its policies.

Another upcoming webinar (date to be announced shortly) will feature a USPTO life sciences expert who will hone in on the new life science examples in discussion with two life science patent prosecutors. Despite the welcome new insights provided to patent applicants by the latest USPTO examples, some experts point out that hard questions remain. For example, what is the likely eligibility of a claim directed to a mixture of an efficacious amount of a naturally-occurring product?

Speakers:

Robert Bahr, USPTO
Bart Eppenauer, Shook, Hardy & Bacon L.L.P.
Michelle Holoubek, Sterne Kessler Goldstein and Fox




You Lost the Arbitration: New Options for Appeals

Webinar Date: 04/28/2016

Arbitration isn’t for sore losers: a swift route to finality is traditionally a key to arbitration’s allure and to its risks. Federal and state arbitration laws narrowly limit the grounds upon which a party may challenge an arbitration award (to the integrity of the process) so that errors in the application of law or in determinations of the facts are not included. Of course, non-prevailing parties do try to get a court to revoke an arbitration award. For instance, Sony recently asked a federal judge in the Northern District of California to vacate an arbitration award against it in a patent licensing dispute with Immersion, from whom it had taken a license after an earlier patent infringement battle.

In recent years, however, parties have the option of agreeing in advance to an appeal process within arbitration. Leading arbitration forums such the American Arbitration Association and JAMS have introduced an optional “appeal” contract clause. If both sides agree going in, a losing party in arbitration can call for the forum to assemble a new panel of arbitrators with the power to affirm or reverse the underlying arbitration decision, and its decision becomes the final decision in the case. This webinar will report the latest on how this provision has been used. Our panel includes a lawyer at the AAA, an arbitrator, and a litigator who has extensive experience representing clients in disputes ancillary to litigation.

Speakers:

Sasha Carbone, American Arbitration Association
William Needle, Ballard Spahr
Brian White, King & Spalding




Evidence at the PTAB: New AIA Rules

Webinar Date: 04/14/2016

On May 2, new rules go into effect at the Patent Trial and Appeal Board that apply to all AIA petitions filed on or after that date and to any ongoing AIA preliminary proceeding or trial. Our panel, which includes a PTAB administrative patent judge and two experienced AIA litigators, will discuss how the new rules will affect strategy for both petitioners and patent owners.

The discussion will center on the rule that allows the patent owner to file new testimonial evidence with its preliminary response without any limit on scope. It provides that any factual dispute created by that evidence that is material to the institution decision be resolved in favor of the petitioner solely for purposes of determining whether to institute a trial. The panel will also discuss other aspects of the new rules, including provisions about claim construction for a challenged patent that will expire prior to the issuance of a final written decision by the PTAB.

Speakers:

Judge Michael Tierney, USPTO
Lissi Mojica, Dentons
Jon Wright, Sterne, Kessler, Goldstein & Fox




Redundant Grounds in Post-Grant Proceedings

Webinar Date: 04/07/2016

The recent Federal Circuit decision in Shaw Industries v. Automated Creel Systems is the latest to touch an important issue for companies involved in post-grant proceedings and related litigation: what happens to the claims and prior art references that are left on the cutting room floor after the PTAB institutes a review on just some of the issues raised in a petition?

Shaw Industries appears to be the first time the Federal Circuit is on record agreeing with the PTAB’s policy that issues that are not instituted are not subject to estoppel either at the PTAB or in district court. This clarification may well allow petitioners to take a more liberal strategy to including matters in their petition.

But the Shaw Industries case also highlights concerns of some Federal Circuit judges. Judge Reyna in a concurrence sharply criticized the PTAB for saying it is not obligated to even state a reason for its decisions on whether to institute inter partes reviews. “The PTO’s claim to unchecked discretionary authority is unprecedented,” and appears to disregard the Administrative Procedures Act, Judge Reyna wrote. Our panel of post-grant experts will consider this case and other Federal Circuit decisions involving redundant grounds, such as Synopsis v. Mentor Graphics.

Speakers:

David Cavanaugh, WilmerHale
Grant Ritz, Hewlett Packard Enterprise
Dorothy Whelan, Fish & Richardson




Settling ANDA Litigation: Options and Risks

Webinar Date: 03/23/2016

The recent First Circuit opinion in the In Re Loestrin reverse-payment litigation appears to have clarified that non-cash payments to a generic company from a branded pharmaceutical company can be targeted as anti-competitive under the U.S. Supreme Court 2013 decision in FTC v. Actavis. But many other antitrust-related issues about settling Hatch-Waxman litigation remain open, such as:

  • How big must a reverse payment be to count as a “large and unjustified” under Actavis?
  • Does the promise of “no authorized generic” amount to an unlawful reverse payment?
  • May side deals that are profitable for the generic manufacturer and reflect commercially reasonable arm’s-length terms be freely entered into by settling parties
  • What role will arguments about patent strength play if a reverse-payments antitrust case goes to trial?

Our panel, which will discuss these and other issues, features an attorney at the Federal Trade Commission, and two law firm litigators, one from each side of the innovator/generic divide.

Speakers:
Daniel Butrymowicz, Federal Trade Commission
Kevin Nelson, Duane Morris
Bruce Wexler, Paul Hastings



First Response to Trade Secret Theft: Best Practices for Answering an Alarm

Webinar Date: 03/09/2016

Covetous employees, foreign government hackers, erstwhile suppliers, or disloyal business partners: all can pose the threat of trade secret theft to corporations these days. This webinar will give best practices for secret holders when the alarm of a potential theft first sounds. In those stress-filled hours, a swift and well-focused response can save the day, while a bungled reflex might negatively impact the outcome of the entire episode.

Our panel includes two in-house counsel with first-hand experience in responding to trade-secret theft and a litigator who has seen the impact on plaintiffs of both good and bad first responses to trade secret theft. The panelists will outline:

  • What questions to ask at the first hint of a problem;
  • How to quickly gather and maintain crucial evidence both in-house and externally;
  • Best practices for internal investigations and giving Upjohn warning to employees;
  • How to contact new employers of suspected thieves or other possible bad actors;
  • How to avoid an accusation of bringing a claim of trade secret theft in bad faith;
  • Should we call in law enforcement? Calculating the trade-offs;
  • First moves in litigation: Whether and how best to request a court for temporary restraining order or immediate injunctive relief.
Speakers:
Karen Cochran, DuPont
Jose Gonzales-Magaz, Honeywell
Randall Kahnke, Faegre Baker Daniels



Lexmark: A Bulwark Against Exhaustion?

Webinar Date: 03/03/2016

Covetous employees, foreign government hackers, erstwhile suppliers, or disloyal business partners: all can pose the threat of trade secret theft to corporations these days. This webinar will give best practices for secret holders when the alarm of a potential theft first sounds. In those stress-filled hours, a swift and well-focused response can save the day, while a bungled reflex might negatively impact the outcome of the entire episode.

Our panel includes two in-house counsel with first-hand experience in responding to trade-secret theft and a litigator who has seen the impact on plaintiffs of both good and bad first responses to trade secret theft. The panelists will outline:

  • What questions to ask at the first hint of a problem;
  • How to quickly gather and maintain crucial evidence both in-house and externally;
  • Best practices for internal investigations and giving Upjohn warning to employees;
  • How to contact new employers of suspected thieves or other possible bad actors;
  • How to avoid an accusation of bringing a claim of trade secret theft in bad faith;
  • Should we call in law enforcement? Calculating the trade-offs;
  • First moves in litigation: Whether and how best to request a court for temporary restraining order or immediate injunctive relief.
Speakers:
Jeff Dodd, Andrews Kurth
Mark Patterson, Fordham University School of Law
Susan Van Keulen, O’Melveny & Myers



Damages on Extraterritorial Sales After Carnegie Mellon

Webinar Date: 02/24/2016

A final adjudication of the high-stakes patent litigation Carnegie Mellon v. Marvell could have helped resolve one of the biggest legal uncertainties in IP: whether and how reasonable royalties on domestic use of a patented technology can include extraterritorial sales as part of the royalty base. Litigation on this point often includes complicated fact patterns regarding, for instance, the path of foreign-manufactured components arriving in the U.S. through a long distribution channel. But those looking for answers, including whether a sale may have more than one location, must now look elsewhere — this month Marvell agreed to pay $750 million to CMU to settle all claims. Several ongoing cases incorporating these issues are still underway, however, including Western Geco (Schlumberger) v. Ion. Their results promise to have far-reaching consequences, not just for damages quantification, but also for where companies choose to conduct their R&D and sales support.

Savvy patent owners can already follow the path of recent case law to improve their chances in litigation and licensing. Our panelists will clarify the issues and give advice on new possibilities for royalty structures. Our panel includes a litigator who is involved in long series of cases involving foreign sales; a law professor who studies extraterritoriality; and a damages expert.

Speakers:
David Harkavy, The Claro Group
Blair Jacobs, Paul Hastings
Prof. Amy Lander, Drexel University, Thomas R. Kline School of Law



Post-grant Puzzler: Cuozzo at the Supreme Court

Webinar Date: 02/02/2016

Petitioners and patent owners involved in inter partes review (IPR) and covered business methods (CBM) review face significant new uncertainties after the U.S. Supreme Court’s grant of certoriari in Cuozzo v. Lee in mid-January. The high court agreed to address two questions: (1) whether the USPTO acted within its rulemaking authority by adopting “broadest reasonable interpretation” claim construction in AIA proceedings; and (2) whether a party may challenge, on appeal to the Federal Circuit, any part of the PTO’s decision to institute an IPR.

Our panel includes a litigator and a law firm professor with extensive appellate experience in patent law, as well as a top PTAB litigator. They will discuss the options open to the Court, including whether the Justices need to consider whether to give Chevron deference to the USPTO in AIA matters. They also will give timely advice on what to do now to the petitioners and patent owners involved in more than 2,000 cases presently pending at varying stages of the PTAB pipeline: pretrial at PTAB, including petition and preliminary response; trial phase at PTAB; after Final Written Decision; already filed an appeal to the Federal Circuit; before or at oral argument to the Federal Circuit; after oral argument but before Federal Circuit opinion.

Speakers:

Prof. John Duffy, University of Virginia School of Law
Thomas Saunders, WilmerHale
Jon Wright, Sterne Kessler Goldstein & Fox




Design Patent Damages: The Law As It Is Today

Webinar Date: 01/28/2016

When the Federal Circuit last summer rejected a request for a rehearing en banc from Samsung on the damages awarded to Apple for infringement of three of its design patents, it reaffirmed what experts in design patents already knew: With design patents, the infringer’s damages are its entire profits from the article of manufacture. That formula stemmed from design patents’ has historically been used as a weapon in the fight against counterfeits and knock-offs. But the ruling in Apple v. Samsung, based on a straightforward reading of Section 289 of the Patent Act, was an eye opener even for many patent law veterans outside the design space. The Federal Circuit reiterated its stance again in September in Nordock v. Systems, when it remanded a patent design case because the lower court’s damages calculation shortchanged the plaintiff.

Our panel brings together two design-patent veterans with a damages expert to discuss the implications on design patent prosecution and litigation of the increased consciousness regarding design patent damages. Is this just a blip or will it lead to an increase in design patent litigation and prosecution, as some experts predict? How will courts define “the article of manufacture”? What are the limitations of design patent enforcement despite the possibility of 289 damages? The panelists will also consider Samsung’s certiorari petition to the U.S. Supreme Court.

Speakers:

Alan Cox, NERA Economic Consulting
Robert Katz, Banner & Witcoff
Damian Porcari, Ford Global Technologies LLC




Double-Patenting: Tech Patents, Double Patenting, and Ex Parte Reexam

Webinar Date: 01/08/2016

This panel will examine how double patenting arises in tech company patent portfolios, how ex parte reexam differs from other post-grant proceedings vis a vis double patenting, and how it can be used to invalidate vulnerable patents. Our panel includes both an in-house tech company lawyer and a law firm lawyer with relevant first-hand experience, and a law firm attorney who was former head of the USPTO’s Central Reexamination Unit.

The Federal Circuit decision twenty months ago in Gilead v. Natco arose out of ANDA litigation over patents on anti-viral drugs, and tremors from that decision – which expanded the universe of patents vulnerable to charges of double patenting — are being widely felt in the pharma and biotech industry. But life sciences companies are not the only ones to find themselves with Gilead’s problem: after asserting a patent in litigation, some high-tech companies have discovered that the defendant can use one of the plaintiff’s later issued but earlier expiring patents to knock out a patent that was issued earlier but expires later. Like drugmakers, some tech companies may come to regret relying heavily on continuations in their patent prosecution, using a “more is more” strategy to grow large patent families. Ex parte reexamination has emerged as the proceeding of choice for tech patent challengers with at least a dozen patents invalidated by the USPTO’s Central Reexamination Unit for double patenting since Gilead.

Speakers:

Barry Bretschneider , BakerHostetler
Jeffrey Hohenshell , Medtronic
Lissi Mojica, Dentons US LLP




Double-Patenting: Impact of Gilead on Bio and Pharma

Webinar Date: 01/07/2016

The Federal Circuit decision twenty months ago in Gilead v. Natco arose out of ANDA litigation over patents on anti-viral drugs, and it is widely seen as expanding the universe of patents vulnerable to charges of double patenting in the pharma and biotech industry. However, life sciences companies are not the only ones to find themselves with Gilead’s problem. After asserting a patent in litigation, some high-tech companies have discovered that the defendant can use one of the plaintiff’s later issued, but earlier expiring patents, to knock out a patent that was issued earlier but expires later.

Like drugmakers, some tech companies may come to regret relying heavily on continuations in their patent prosecution, using a “more is more” strategy to grow large patent families. Ex parte reexamination has emerged as the proceeding of choice for tech patent challengers, with at least a dozen patents invalidated by the USPTO’s Central Reexamination Unit for double patenting since Gilead.

This panel will focus on tips for patent prosecution after Gilead, as well as the litigation outlook with a particular focus on biosimilars. Because many branded pharma companies are entering the biosimilar market, they are finding themselves combing the portfolios of competitors for double patenting weakness, much as generic companies are doing. Our panel features the lawyer who argued for Natco at the Federal Circuit, a law firm biotech lawyer who is an expert on patent term adjustment, and the vice president of IP at a drug development company.

 

Speakers:

Tim Babcock, Akros Pharma Inc.
Jack Brennan, Fish & Richardson
Jeremy Lowe, Axinn Veltrop




FRAND Damages: Comparing the Four Leading Cases, Including CSIRO

Webinar Date: 12/16/2015

This month the Federal Circuit issued its decision in CSIRO v. Cisco that agreed-in-part and disagreed-in-part with the district court’s damages award regarding a patent essential to a WiFi standard. Our panel will compare CSIRO with three key earlier opinions that give insight into proving and determining a reasonable royalty for a standard essential patent (SEP): the Federal Circuit’s earlier decision in Ericsson v. D-Link, the Ninth Circuit’s decision in Microsoft v. Motorola, and Judge Holderman’s Northern District of Illinois decision in In Re Innovatio IP Ventures.

Our panel includes a patent counsel at a company that owns valuable SEPs, a law firm litigator who has represented technology implementers against owners of SEPs, and a law school professor who authors a blog on patent damages. They will discuss where the opinions converge and the nuances in how they differ, and how courts are likely to view these issues in the future.

Speakers:

Prof. Thomas Cotter, University of Minnesota Law School
Mark Snyder, Qualcomm
Timothy Syrett, WilmerHale




ITC and the Federal Circuit: Where Do ClearCorrect and Suprema Leave Patent Owners?

Webinar Date: 12/10/2015

This webinar will consider the impact of two important recent Federal Circuit opinions on the jurisdiction of the U.S. International Trade Commission. In Suprema v. ITC, the en banc Federal Circuit reversed an earlier panel decision, finding that the Section 337 statute does give the ITC authority to adjudicate indirect infringement involving a method patent where the direct infringement occurs only after importation. More recently, in ClearCorrect v. ITC, a Federal Circuit panel ruled that the ITC may not block digital transmissions from outside the U.S. because the ITC’s scope is limited to “articles.”

Our panel includes two litigators who were opposing counsel in Suprema at the Federal Circuit, as well as an appellate law specialist. They will consider each case and also how they can (or cannot) be understood to mesh. They will also consider the leeway ClearCorrect leaves the ITC in its infringement analyses and what the end result is likely to be after the ITC pursues its appeal options.

Speakers:

Sasha Mayergoyz, Jones Day
Bert Reiser, Latham & Watkins
Darryl Woo, Vinson & Elkins




CBM Review: Taking Stock of the Case Law

Webinar Date: 12/03/2015

The AIA Covered Business Method (CBM) review deserves its reputation as a fearsome weapon: just 2% of patents against which this review has been instituted have emerged intact. But not all is as grim for patent owners as it may appear. Under the radar, patent owners have been having more success lately in evading the review entirely: in the past fiscal year, almost half of the petitions for CBM have been denied by the PTAB, either because petitioners failed to place the invention within the target circle of a “financial product or service” or because the patent owner proved the patent fell within the exemption of “technological invention”.

Our panel includes a PTAB judge who helped develop the proceedings and sits on CBM review panels, and two litigators with CBM experience. They will discuss the trends in PTAB decisions regarding institution of CBM reviews, considering cases both where petitions were successful and where they were denied. They also will discuss the recent important Federal Circuit decisions regarding the institution of post-grant proceedings, including Cuozzo, Achates, and Versata. Unlike its mostly hands-off approach to inter partes review, in the latter decision the Federal Circuit ruled that the PTAB’s decision of whether a patent is a CBM patent is subject to its appellate review.

Speakers:

Hon. Michael Tierney, USPTO
Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Ben Quarmby, MoloLamken




Patent Prosecution After Akamai: Exploring the Contours of "Control and Direction"

Webinar Date: 10/29/2015

This webinar will investigate the new environment for patent prosecution in software, Internet, and IT technologies in the aftermath of this summer’s Federal Circuit decision in Akamai v. Limelight. Our panel, which includes a top IP lawyer at a financial services technology company and two veteran software patent prosecutors, will tackle such questions as:

  • Which inventions call for taking advantage of the new more liberal standard under which multiple defendants can together practice all the claims of a patent and be found guilty of direct infringement? Or should patent prosecutors stick to a conservative approach and continue to draft claims so that a single actor can perform all steps?
  • Will including more implementation details in a patent application, such as system protocols, potentially ensnare infringers that would otherwise be seen as separate parties? How will that interact with Alice issues?
  • How to approach opinion work — and design around advice regarding non-infringement — when there is no developed case law on the new standard?

Speakers:

Stephen Durant, Schwegman Lundberg
Ken Hobday, Fiserv
Michelle Holoubek, Sterne Kessler Goldstein & Fox




Standards and FRAND: Recent Developments in the U.S. and Europe

Webinar Date: 10/13/2015

Our panel will analyze two important recent developments in the world of standards and FRAND and how they will shape events going forward:

  • The Ninth Circuit affirmation of Judge Robards’ FRAND decision in Microsoft v. Motorola and the endorsement of his calculations of FRAND, and
  • The European Union High Court ruling that for the first time provided guidance on what steps the owner of a FRAND-encumbered patent should take before seeking injunctive relief.

The panel will also discuss recent and pending developments at the U.S. International Trade Commission. Our panel, which encompasses a range of view on the issues, will also discuss such timely questions as whether global licensing of SEPs is a thing of the past, with country-by country licenses the new trend.

Speakers:

David Long, Kelley Drye & Warren LLP
Christopher Thomas, Hogan Lovells
Paul Zeineddin, Zeineddin PLLC




Definite Change: Nautilus Gets Some Traction

Webinar Date: 10/07/2015

Our panel — a pharmaceutical industry IP lawyer and two high-tech patent litigators — will analyze several recent Federal Circuit opinions with the aim of pinpointing the court’s newly-evolving rules regarding the definiteness of terms and measures and allegedly “subjective” claims in patent litigation. At first little seemed to change after last year’s U.S. Supreme Court’s Nautilus decision made it easier for defendants to prove a plaintiff’s patent to be indefinite. But the August decision in Dow Chemical v. Nova Chemical might have been something of a watershed, giving the Federal Circuit the opportunity to rule on the definiteness of the very same plastics patents both before and after Nautilus. Those patents describe a “slope of strain hardening” but do not describe which of several methods for measuring slope should be used. “Under Nautilus this is no longer sufficient,” the court said, since the patent does not provide a skilled artisan with “reasonable certainty.” Our panel will discuss several recent Federal Circuit opinions that cite Nautilus with different results – eg, Teva v. Sandoz, Ethicon v. Covidien, Interval Licensing v. AOL — and give tips for patent prosecutors as well as patent holders and defendants involved in disputes over definiteness.

Speakers:

Robert Kramer, Dentons US LLP
Chris Mammen, Hogan Lovells
Bryan Zielinski, Pfizer Inc.




New Litigation Scenarios after Akamai: Fact Pattern Hypotheticals

Webinar Date: 09/17/2015

Trying once again to meet the challenge posed by situations in which multiple parties work together and infringe a patent, in August the en banc Federal Circuit expanded the scope of a key aspect of patent law: the definition of direct infringement under Section 271(a) of the Patent Act. In the new Akamai opinion, the Federal Circuit adds to its own earlier precedent an additional category of direct infringement that falls within the scope of “control or direction”: “… Liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.

Our panel of litigators will consider several different fact patterns to discern and discuss, at the margin, where the boundary will fall between infringement and non-infringement under this new scope. Some of these facts will be drawn from earlier Federal Circuit cases on joint infringement involving the Internet and software, such as McKesson v. Epic Systems and Golden Hour v. emsCharts; others will be hypotheticals to analyze joint infringement in personalized medicine and diagnostics.

Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Andrei Iancu, Irell & Manella LLP
Steve Moore, Kilpatrick Townsend & Stockton LLP




A Kinder, Gentler PTAB? Proposed New Trial Rules & Important Recent Decisions

Webinar Date: 09/09/2015

Some patent owners believe they have been forced to fight in AIA trials with one hand tied behind their backs. The USPTO has registered those complaints, and the rules proposed last month offer changes that are expected to improve patent owners’ odds at the popular PTAB forum. Our panel, featuring a lead administrative patent judge (APJ) at the PTAB and two experienced post-grant litigators, will discuss in detail what the proposed changes are likely to mean in practice, focusing on: 1) the patent owner’s new ability to offer evidence in its preliminary response and 2) the lowering of the hurdle to amend claims through clarification of the relevant prior art, as explained in the recent inter partes review opinion ImageMaster 3D. The panelists will also discuss the pros & cons of a proposed pilot program under which a single APJ would decide whether to institute an IPR trial, with two additional APJs being assigned to conduct the IPR trial, if instituted.

Hon. Michael Tierney, U.S. Patent & Trademark Office
Steven Baughman, Ropes & Gray LLP
Lissi Mojica, Dentons US LLP




Amgen v. Sandoz: What Now?

Webinar Date: 09/02/2015

Now that the “patent dance” spelled out in the 2010 Biologics Price Competition and Innovation Act (BPCIA) has been declared by the Federal Circuit to be just one option open to biosimilar market aspirants, the expectations of many industry participants have been upended. Our panel includes two patent litigators, one who counsels on biosimilar launches and one who counsels on branded strategy, as well as an FDA regulatory attorney who represented biotech innovators in the lengthy legislative negotiations leading to the BPCIA. They will discuss:

  • Branded company strategy now that an innovator may have only six months notice before a biosimilar launch; the implications of having no information about the biosimilar maker’s patent strategy or manufacturing process; the new importance of competitive intelligence;
  • Biosimilar launch strategy, including the pros & cons of the BPCIA pathway – will any biosimilar aspirants still choose to go the BPCIA route?; the importance of due diligence and assessing at-risk launches;
  • New litigation dynamics outside the BPCIA, including crucial preliminary injunction battles, discovery, licensing, damages and willfulness; and
  • The next front and the end game: en banc at the Federal Circuit? How will this all end up?

Krista Carver, Covington & Burling
Kevin Nelson, Duane Morris
Elizabeth Weiswasser, Weil, Gotshal & Manges LLP




3-D Printing Advanced Topics for Patent Lawyers: Repair, Reconstruction, Exhaustion, Inducement

Webinar Date: 08/27/2015

Lawyers who want to give good advice regarding the disruptive technology of 3-D printing need to refresh their understanding of many areas of case law and rethink how it all fits together. For instance, companies with more than one business model – eg, those who both sell repair parts for machines they manufacture and also want to repair machines bought from others – may be subject to competing imperatives.

Our panel includes an IP lawyer at a major multinational manufacturer, a design patent specialist, and a patent litigator. Through the lens of 3-D printing, they will reconsider case law and current litigation involving repair, reconstruction, and exhaustion, including the pending en banc Federal Circuit Lexmark case; the pending Federal Circuit case on whether the International Trade Commission has jurisdiction over imports of digital files; and the issues of inducing and contributory infringement.

 

John Cheek, Caterpillar Inc.
Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Bryan Vogel, Robins Kaplan LLP




Claim Construction After Teva: Six Months In

Webinar Date: 07/29/2015

How has the U.S. Supreme Court’s January ruling in Teva changed patent litigation at U.S. district courts? What are the latest lessons to be drawn from Federal Circuit decisions on appeals involving claim construction? It’s been six months since the Federal Circuit’s claim construction precedent was overturned by the Supreme Court, which required that a district court’s factual conclusions regarding extrinsic evidence be given deference on appeal. On our panel are two litigators who argued before the Federal Circuit in recently-decided cases involving claim construction, as well as a recently retired U.S. District Court Judge who has presided over more than 100 patent litigations.

In the early months after Teva, it seemed like “change without change”, as one academic article put it. In several cases, including the remand of Teva itself, the Federal Circuit continued to overturn many district courts’ claim constructions. But more recently, Cephalon v. Abraxis and VIS v. Samsung offer examples of how extrinsic evidence can play a more meaningful role post-Teva. In Lighting Ballast last month, on remand from the Supreme Court, the Federal Circuit panel flipped its original decision – affirming the district court’s claim construction supported by its now undisturbed factual findings.

Michael Hawes, Baker Botts LLP
Jonathan Suder, Friedman, Suder & Cooke Law
Hon. Faith Hochberg, Hochberg ADR




Functional Claims Hit a Wall: Impact of Williamson v. Citrix

Webinar Date: 07/15/2015

In litigation involving means-plus-function claims, the June en banc Federal Circuit opinion, Williamson v. Citrix, is a game changer. The Federal Circuit overruled its own prior precedent that stated a “strong” presumption that claim limitations that do not use the term “means” are not means-plus- function limitations. “Henceforth, we will apply the presumption as we have done prior to Lighting World (2004), without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong’.” In the new decision the court also made it easier to prove a claim indefinite by overruling the prior strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.” The panel will discuss how this change is likely to play out for both patent owners and alleged infringers.

Speakers:

Richard Megley, Lee Sheikh Megley & Haan
James Myers, Ropes & Gray LLP
Prof. Michael Risch, Villanova University School of Law




Algorithms and Software Patents: USPTO and Litigation Perspectives

Webinar Date: 07/14/2015

In its May opinion Eon v. AT&T, the Federal Circuit issued a clear endorsement that “when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure.” A USPTO Legal Advisor will discuss what this obligation means in practice, including how much algorithm detail is enough to satisfy Section 112(f) in examination. She and our panelists, the head of IP at a tech company and a law firm software expert, will also discuss what role, if any, algorithms can play in a Section 101 inquiry. Looking ahead to after issuance, they will deliberate what else, such as a more complete prosecution record, can give assurance to a patent owner that a patent will stand up to a challenge in a district court or at the PTAB.

Speakers:

Carolyn Kosowski, USPTO
Robert Sachs, Fenwick & West LLP
Douglas Luftman, NetApp




Lessons from Proxyconn: Federal Circuit's First Reversal of an IPR

Webinar Date: 07/07/2015

In mid-June, for the first time, the Federal Circuit reversed and remanded the claim construction in an inter partes review back to the PTAB, breaking an almost unbroken string of Rule 36 summary affirmances. The appellate move offers encouragement to patent owners by illustrating circumstances where the Federal Circuit is willing to point out the flaws in a PTAB decision invalidating a patent.

Our panel, which includes a Federal Circuit specialist and two experienced PTAB litigators, will examine the lessons to be learned from Microsoft v. Proxyconn regarding both claim construction and amending claims, where the appeals court gave some reason for optimism to patent owners who want to appeal the PTAB’s denial of a motion to amend a patent. The panelists will also discuss procedural questions regarding the PTAB’s handling of remands and give their views on how the relationship between the Federal Circuit and the PTAB will evolve.

Speakers:

Gregory Castanias, Jones Day
Gerald Flattmann Jr., Paul Hastings LLP
David O’Brien, Haynes and Boone, LLP




Litigating Inducement and Willfulness after Commil and Akamai

Webinar Date: 06/17/2015

The law surrounding the inducement of patent infringement has been on a wild ride. In 2013 the Federal Circuit broke new ground when it ruled in Commil v. Cisco Systems that a good-faith belief in the invalidity of a patent is a defense against induced infringement. Last month that decision was overturned by the U.S. Supreme Court. Likewise, in 2012, the Federal Circuit introduced a novel theory that let induced infringement be found even if all the steps of a patent were not performed by a single party. That ruling was thrown out by the U.S. Supreme Court last year.

Our panel will consider where the law stands now and give their thoughts on questions such as:

  • Does Commil increase the value of opinions of counsel for non-infringement? The opinion states that a “reasonable” reading of the patent that results in non-infringement can be a defense to inducement.
  • How will Commil be used in cases involving willfulness? Will patentees succeed in arguing that a good-faith belief in invalidity should not be a defense to willfulness?
  • Is the next step for the issue of divided infringement at the Federal Circuit or at the U.S. Supreme Court? What strategy should litigants or potential litigants follow in the meantime?

Speakers:

Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Steven Moore , Kilpatrick Townsend & Stockton
Frank Nuzzi, Siemens Corp.




USPTO and Plain Meaning of Terms

Webinar Date: 05/21/2015

At its two-day Patent Quality Summit at the end of March, the USPTO asked for public comment on a detailed set of proposals on how the agency could improve the quality of issued patents. That comment period was extended recently to May 20. IPO commented on May 6.

Practitioners may not be aware that the USPTO has already taken steps, through new examiner training guidelines, to make the record clearer during prosecution by explaining claim interpretation as necessary. Through the new clarifications, the guidelines explain, “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean”. Examiners received training on the new guidance this spring. The goal of the new initiative, according to the USPTO, is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Our webinar features the head of IP at a technology company and a law firm patent litigator. They will explore the implications of the change for patent prosecution and litigation. Our third panelist is an attorney from the USPTO’s Office of Legal Administration, who will explain how the new guidelines will work in practice.

Speakers:

Brenton Babcock, Knobbe, Martens, Olson & Bear, LLP
Gary Ganzi, Evoqua Water Technologies LLC
Joseph Weiss, U.S. Patent & Trademark Office




Design-Arounds: Strategy at the ITC and District Courts

Webinar Date: 04/30/2015

Designing around an infringed patent creates many strategic challenges for both plaintiffs and defendants. For example, in district court litigation, plaintiffs can either broadly seek discovery related to potential redesigns (and risk a finding of noninfringement), or sit back and attempt to preclude such evidence. By contrast, defendants must choose between introducing potential design-arounds early in discovery and risking an adverse adjudication, or waiting until later during litigation and risking preclusion or other unwanted consequences. Similarly, in ITC proceedings, parties must consider whether to attempt to force the ITC to adjudicate potential design-arounds during the investigation or to wait until after any exclusion order issues. Then the fight over the scope of the exclusion would move to Customs and Border Protection or may require a return to the ITC to seek an advisory opinion or enforcement order.

Our panel will review the case law regarding redesign and discuss strategy issues relating to timing, discovery, claim construction, and procedures. In addition, an official of the ITC will discuss a new pilot program, announced this winter, that will test the use of expedited procedures to evaluate and rule on new and redesigned products in modification and advisory proceedings.

Speakers:

Steven Bauer, Proskauer Rose, LLP
Brian Busey, Morrison & Foerster, LLP
David Lloyd, U.S. International Trade Commission




Safeguarding GUIs: Best Practices Using Multiple Layers of IP, including Design Patents, Utility Patents, Copyright and Trade Dress

Webinar Date: 04/29/2015

Protecting the IP of Graphical User Interfaces (GUI) is tricky – and crucial. Successful GUI is key to strategy at many corporations these days, as more manufactured products offer sophisticated digital features and connectivity through the Internet of Things. Our panelists — an attorney expert in design patents, an in-house lawyer who works to protect the inventions of an “experience design” team, and a software IP specialist — will discuss how best to protect GUIs using multiple layers of IP.

Design patents are certainly important, and have come to the fore recently because of Apple’s success in enforcing a GUI design patent against Samsung. But some sophisticated companies have actually backed off from filing design patents on GUI, concerned about how crowded the field is with prior art and how the quick pace of design changes during product development and even after launch make it necessary to file multiple applications to have any hope of a patent strong enough to enforce.

Utility patents protecting the functionality of GUI are facing their own challenges. A number of these patents have been invalidated in post-grant proceedings based on prior art. New patent applications face a higher hurdle because of Alice. Some experts wonder if copyright protection could fill the gap. Trade dress claims can be preempted by a registered copyright, but alone they may well be effective in protecting a GUI from copycats — if the GUI is already well-known and is associated by consumers with its particular source.

Speakers:

Michael Hsu, Adobe Systems Inc.
Robert Katz, Banner & Witcoff, Ltd.
Robert Lord, Osha Liang, LLP




Issue Preclusion: Impact of B&B Hardware v. Hargis on Patent Law

Webinar Date: 04/09/2015

Last month’s decision by the U.S. Supreme Court in B&B Hardware v. Hargis involves a trademark opposition running in parallel with a trademark infringement lawsuit. The court held that a final decision by the USPTO’s Trademark Trial and Appeal Board (TTAB) can serve as issue preclusion to collaterally estop a court from rejudging already-decided issues.

What will be the impact on patent law of that decision? The same reasoning that led the Supreme Court to its decision in B&B regarding the TTAB and issue preclusion may well apply to determinations made during inter partes and post grant review proceedings at the PTAB. Issue preclusion applies to individual decisions of fact or law and thus may be important regarding claim construction, scope and content of the prior art, and level of skill in the art.  However, the U.S. Supreme Court recognized that issue preclusion does not apply to agency
decisions when Congress so indicates. Do the estoppel provisions in the IPR/PGR statutes suggest that Congress has opted out of the issue preclusion arena for these decisions? Our panel includes a leading patent practitioner with experience in post-grant proceedings and two top appellate specialists.

Speakers:

Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Andrew Pincus, Mayer Brown LLP
Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP




The Future of Standards: What's Next After the IEEE Shift?

Webinar Date: 03/18/2015

Last month, after a vigorous debate between supporters and opponents, the Board of Directors of the Institute of Electrical and Electronics Engineers (IEEE) voted to approve a set of amendments to the organization’s patent policy. The changes largely relate to the commitment of IEEE members to license patents to users of IEEE standards on terms that are “fair, reasonable and nondiscriminatory” (FRAND), a commitment that has been the subject of much recent litigation. Because their business models lean heavily on patent royalty revenues, some standards users remain opposed to the changes.

Our panel will discuss a number of questions, including whether important patent contributors will make patents available to IEEE standard development in the future and how future royalty disputes over IEEE standards will play out.

Speakers:

Marc Sandy Block, IBM Corp.
David Long, Kelley Drye & Warren LLP
Earl Nied, Intel Corp.
Paul Zeineddin, Zeineddin PLLC




Hatch-Waxman and Biologic Strategies at the PTAB

Webinar Date: 03/03/2015

This month was a watershed for biopharmaceutical patents in post-grant proceedings. The PTAB invalidated claims for three patents on Genzyme’s treatment for Pompe disease in an inter partes review brought by a would-be competitor, a first for a biologic. And an IPR attack even came from outside the pharma industry: a hedge fund manager linked up with a well-known non-practicing entity to target Acorda Therapeutics’ patent on a multiple sclerosis drug. Some fear threats of an IPR to win a settlement from a company even before a petition is filed.

These patents are among the growing number of biopharmaceutical patents that have been targeted recently at the PTAB. This webinar will analyze how inter partes review and other post-grant proceedings should influence Hatch-Waxman/small molecule and biologic litigation strategies. Compliance with multiple tricky timelines is involved. Our panelists include a litigator who succeeded in the first-ever defense of a drug patent on a granted petition for IPR; a Hatch-Waxman litigator who represents generic companies; and a life science lawyer who has experience in biologics and leadership experience at the USPTO.

Speakers:

Cynthia Hardman, Goodwin Procter, LLP
Gerald Flattmann Jr., Paul Hastings
Teresa Stanek Rea, Crowell & Moring, LLP




After Teva: How Will Patent Litigation Change?

Webinar Date: 02/06/2015

The U.S. Supreme Court’s long-awaited opinion in Teva v. Sandoz is easy to summarize: When reviewing a district court’s resolution of a subsidiary factual matter in claim construction, the Federal Circuit must apply a “clear error” standard of review, and not the prior de novo standard.

But what will be this finding’s impact on patent litigation over time? Contradictory predictions flew in the days after the opinion’s release in January. Some litigators said district court judges will rely more on extrinsic evidence to insulate their decisions from being overturned; others said judges won’t waste their time, because relying on extrinsic evidence when the intrinsic evidence is clear will result in reversal. Some thought that more expert testimony in Markman proceedings will make costs rise; others say costs will diminish because the reversal rate on appeal will decline. The majority of justices dismissed worries about different jurisdictions construing the same claim term in different ways; two justices were apprehensive. Our panel of experts will untangle the predictions and give their own best analysis.

Speakers:

Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Andrei Iancu, Irell & Manella LLP
Kevin Rhodes, 3M Innovative Properties Co.




Proving FRAND Damages: Ericsson v. D-Link

Webinar Date: 01/27/2015

Last month the Federal Circuit for the first time gave its views on what methodology to apply to determine a royalty rate for infringed patents subject to fair, reasonable and non-discriminatory (FRAND) commitments related to a standard. That opinion, Ericsson v. D-Link, rejected the Georgia-Pacific framework for FRAND-encumbered patents and covers a lot of ground, including guidance regarding the incremental value of the invention, apportionment issues for standard essential patents (SEPs), and jury instructions regarding patent hold-up and royalty stacking.Our panel of experts will discuss the opinion, and questions that remain open, such as:

  • How can a patent owner be fairly compensated for committing an entire portfolio of patents to a standard if royalty rates are set only on the few patents named in a particular suit?
  • How can focusing on the “smallest saleable unit” result in a fair result for an invention that reads on the entire product, where it is an important but not the sole driver of demand?
  • The Federal Circuit agreed with the district court’s decision not to instruct the jury on patent hold-up or royalty stacking because there was no evidenced offer for either. What evidence will be necessary to show such harm in future cases?

Speakers:

Jorge Contreras, University of Utah, College of Law
Anne Layne-Farrar, Charles River Associates
Richard Stark, Cravath, Swaine & Moore LLP




Hope for Software Patents? DDR v. Hotels.com

Webinar Date: 01/22/2015

Last month the Federal Circuit issued its first post-Alice opinion that upheld the validity of computer-implemented business method claims under section 101. In DDR Holdings v. Hotels.com, Judge Raymond Chen, writing for the panel majority, affirmed the Eastern District of Texas’s denial of the defendant’s motion for judgment as a matter of law that DDR’s patent covering systems and methods of generating composite web pages was invalid. Judge Chen distinguished this case from others, including Ultramercial, buySAFE, Accenture, where software patents were invalidated.

Our panel of litigators will discuss the implications of this appellate opinion. In addition, they will analyze recent district court decisions in which software patents swam against the tide to survive challenges, including California Institute of Technology and Ameranth, as well as a recent PTAB decision that found the claims a patent of Secure Axcess valid.

Speakers:

Lawrence Hadley, McKool Smith
Stephen Hankins, Schiff Hardin LLP
Jose Villarreal, Wilson Sonsini Goodrich & Rosati




The USPTO Revised Patent Eligibility Guidance: Software and Information Technology

Webinar Date: 01/15/2015

On December 15 the USPTO issued new “Interim Guidance” for determining whether claims are eligible for patenting under 35 USC § 101. Each of these webinar panels will bring together a senior counsel from the USPTO’s Office of Legal Administration with an in-house patent counsel at a major corporation and a law firm attorney who is an expert in that industry. The discussion will clarify the meaning of the new guidance, discuss which inventions are now more likely to be found patent eligible and how to write patent applications that clear current hurdles. The panelists will also consider the impact of subsequent appellate decisions such as the invalidation of Myriad patents in University of Utah Research Foundation et al. v. Ambry Genetics Corp.

Speakers:

Michael Cygan, USPTO
Bart Eppenauer, Shook, Hardy & Bacon LLP
Manny Schecter, IBM Corp.




The USPTO Revised Patent Eligibility Guidance: Life Science

Webinar Date: 01/14/2015

On December 15 the USPTO issued new “Interim Guidance” for determining whether claims are eligible for patenting under 35 USC § 101. Each of these webinar panels will bring together a senior counsel from the USPTO’s Office of Legal Administration with an in-house patent counsel at a major corporation and a law firm attorney who is an expert in that industry. The discussion will clarify the meaning of the new guidance, discuss which inventions are now more likely to be found patent eligible and how to write patent applications that clear current hurdles. The panelists will also consider the impact of subsequent appellate decisions such as the invalidation of Myriad patents in University of Utah Research Foundation et al. v. Ambry Genetics Corp.

Speakers:

Life Science Speakers (Jan. 14):
Raul Tamayo, USPTO
Deborah Martin, Pfizer, Inc.
Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP




Biosimilars: The Action Finally Starts

Webinar Date: 01/08/2015

The Biologics Price Competition and Innovation Act became law four-and-a-half years ago and for a long time not much happened to clarify how the high-stakes new regulatory pathway for biosimilars would work. Now finally the action is starting. In December the U.S. Court of Appeals for the Federal Circuit issued its first decision regarding a legal conflict over a biosimilar, while other pending lawsuits promise to show the life science industry how the law will be interpreted. Our panel of bioscience IP litigators will discuss the impact of these cases and other BPCIA developments:

  • The Federal Circuit opinion, Sandoz v. Amgen, which involves the blockbuster drug Enbrel and addressed whether a biosimilar developer can seek an early adjudication of questions of validity and infringement of patents before it files a biosimilar application and
  • Efforts by Celltrion and Hospira to get declaratory judgment on the invalidity of other biological drug patents and
  • Amgen’s complaint, filed in October in the Northern District of California, alleging that Sandoz unlawfully refused to follow BPCIA patent resolution procedures (colloquially known as the “patent dance”) regarding its application to the Food and Drug Administration for approval of a biosimilar to Neupogen. Amgen’s complaint asserts unfair competition under California law, conversion, and patent infringement.

Speakers:

Kevin Nelson, Duane Morris LLP
Brian Slater, Fitzpatrick, Cella, Harper & Scinto
Elizabeth Weiswasser, Weil, Gotshal & Manges, LLP