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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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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




Europe's Unified Patent Court: A Lot to Like?

Webinar Date: 12/03/2014

This webinar is aimed at U.S. lawyers who help U.S. companies to protect their IP in foreign markets. Newly-opened and planned venues for patent and other IP litigation in Europe pose important opportunities and challenges.

In Europe this fall, the Preparatory Committee responsible for drafting the Rules of Procedure for the planned Unified Patent Court clarified some important aspects of the new venue which is now expected to open by 2016.

Our expert panelists will describe the workings of the new legal venues and what choices they pose for U.S. plaintiffs and defendants.

Speakers:

Paul Coletti, Johnson & Johnson
Rowan Freeland, Simmons & Simmons
John Pegram, Fish & Richardson




China's New IP Courts: What U.S. Companies Need to Know

Webinar Date: 12/02/2014

This webinar is aimed at U.S. lawyers who help U.S. companies to protect their IP in foreign markets. Newly-opened and planned venues for patent and other IP litigation in China pose important opportunities and challenges.

This fall the Chinese government opened a new Specialized IP Court in Beijing, with two others, in Shanghai and Guangzhou, slated to open by the end of this year. The new courts have jurisdiction over civil and administrative cases involving patents, new plant varieties, layout designs of integrated circuits, technical secrets, and computer software; administrative cases involving copyright, trademark, and unfair competition; and civil cases involving the affirmation of famous trademarks.

Our expert panelists will describe the workings of the new legal venues and what choices they pose for U.S. plaintiffs and defendants.

Speakers:

Benjamin Bai, Allen & Overy
Mark Allen Cohen, USPTO
Gang Hu, CCPIT Patent and Trademark Law Office




Patent Damages: How to Build A Case Now

Webinar Date: 10/30/2014

The last five years have seen remarkable changes in the law and practice of patent damages, with the Federal Circuit decision in VirnetX v. Apple last month the most recent decision restricting the allowable methods for calculating infringement damages. Cumulatively, the appellate court’s rulings stress the need for a much more careful analysis of how damages are tied to the infringing feature, while also demolishing old rules and establishing new ones on how to establish a reasonable royalty.

Plaintiffs who want to be sure they can obtain a remedy that will outweigh the hassle and expense of litigation need to incorporate the Federal Circuit’s guidance into strategies early in the case. Our panel will give advice on how to be savvy and realistic about damages at each stage of litigation including: the decision to bring suit; damages discovery and fact development; what kind of experts and/or surveys are needed and when; how best to use expert depositions; and options for challenging experts. The panelists will also give advice to defendants on how to challenge the plaintiff’s case.

Speakers:

Hon. Paul Singh Grewal, Magistrate Judge, U.S. District Court, Northern District of California
John Jarosz, Analysis Group
Gary Hoffman, Gary Hoffman IP Consulting




Inter Partes Reviews of Pharmaceutical Patents: Understanding How IPRs are Changing the Landscape of Innovator/Generic Litigation

Webinar Date: 07/23/2014

Hosted by IPO’s Pharmaceutical & Biotechnology Issues Committee

This webinar will focus on the rapidly increasing use of IPRs to invalidate pharmaceutical patents in ANDA litigation. The webinar will first give an overview of the IPR process and timelines, and discuss the outcomes of recent IPR challenges in the pharmaceutical space, and then will focus on how generic firms are using IPRs to challenge innovator patents. With that background, our panel of experts will present tips and strategies for both challenging pharmaceutical patents and defending against such challenges.

Please join us for this informative and topical webinar and learn the latest information on how IPRs are changing the landscape of generic challenges to innovator patents.

Moderator:  Paul Golian, Bristol-Myers Squibb Company

Speakers:

  • Aaron Barkoff, McAndrews, Held & Malloy, Ltd.
  • Grantland Drutchas, McDonnell Boehnen Hulbert & Berghoff LLP
  • Michael Fuller, Knobbe, Martens, Olson and Bear, L.L.P.



Alice v. CLS Bank: How Far Has the Needle Moved?

Webinar Date: 07/15/2014

In her dissent to the Federal Circuit Alice decision, Judge Moore predicted that the majority view would result in “the death of hundreds of thousands of patents.” Now that the U.S. Supreme Court has affirmed that decision this June, some experts second that view, seeing the top court’s opinion as a severe body blow to many software patents. Other experts see this recent decision as representing not much of a change from the court’s 2010 Bilski decision. Tune in and decide who is right.

Our panel includes a litigator who invalidated Cybersource’s patent claims at the Federal Circuit on Section 101 grounds; an expert in business-method claims who works for an IP-focused investment bank, and a software patent prosecutor and strategist. They will discuss:

  • How much will Alice impact patent applications at the USPTO, Covered Business Method post-grant proceedings at the PTAB, and invalidity arguments in district court?
  • What kinds of applications and patents are most vulnerable?
  • What will the USPTO, district courts, and the Federal Circuit do with the vague tests articulated by Alice regarding “abstract ideas” and “inventive concept”?
  • What can patent owners and applicants who are at risk do to shore up their IP protection?

Speakers:

  • Scott Bornstein, Greenberg Traurig LLP
  • Michael Chernoff, MDB Capital Group LLC
  • Robert Sachs, Fenwick & West LLP



Joint Infringement After Limelight: Information Technology

Webinar Date: 06/25/2014

Wednesday, June 25 at 2:00pm ET

In its unanimous decision this month in Limelight Networks v. Akamai Technologies, the U.S. Supreme Court set aside a Federal Circuit decision that had lowered the standard for proving induced infringement for method claims. The top court ruled that such infringement can be found only when there is direct infringement by one actor, dashing the hopes of patent holders with method claims by providing a safe harbor for competitors’ actions involving multiple actors.

While rejecting the Federal Circuit’s expansion of indirect infringement, the Supreme Court also seemed to invite the Federal Circuit to fashion a rule for direct infringement involving multiple actors. The Federal Circuit’s prior Muniauction decision provided only narrow circumstances for finding direct infringement liability, ruling that a single defendant must exercise sufficient control and direction over the entire process such that every step — including steps performed by others — may be attributed to that single defendant. Some observers believe the Federal Circuit could replace the Muniauction rule with a more flexible one more grounded in traditional tort law principles.

Our panelists will consider the implications of Akamai for both litigation and patent prosecution, and also consider what the contours might be of a broader direct infringement rule that includes multiple actors. The focus is on information technology, where performance of multiple operations by different parties is common. IPO’s IP Chat Channel will host another webinar in July (date to be determined) that will focus on joint infringement issues in the life sciences.

Speakers:

  • Michelle Holoubek, Sterne, Kessler, Goldstein & Fox, PLLC
  • Robert Giles, Qualcomm, Inc.
  • Eric Weisblatt, Wiley Rein LLP



Indefiniteness after In re Packard and Nautilus

Webinar Date: 06/17/2014

This webinar will help IP practitioners understand the bottom line for patent practice of this spring’s two important appellate decisions addressing the standard for indefiniteness under §112. The Federal Circuit’s In re Packard decision reinforced the notion that, at the USPTO, the burden of patent clarity falls on patent applicants. The U.S. Supreme Court decision in Nautilus dealt with the indefiniteness standard for granted patents, rejecting the Federal Circuit’s “insolubly ambiguous” standard as permitting too much imprecision.

But are there still two different standards for indefiniteness, depending on whether a claim is pre-issuance or post-issuance? Or does the new Supreme Court requirement for definiteness — that a patent must inform a person skilled in the art about the scope of the invention “with reasonable certainty” – wind up being equivalent to USPTO’s demand that “the scope of a claim … be reasonably ascertainable by those skilled in the art”, as stated in the Manual of Patent Examining Procedure? If there are differences still between the two standards, what will that mean for Covered Business Method and Post Grant Review proceedings at the PTAB, where petitioners can use indefiniteness arguments to challenge issued patents?

Our panel includes an academic, a law firm lawyer specializing in bioscience, and the head of patents at a leading software company.

Speakers:

  • Prof. Dennis Crouch, University of Missouri School of Law
  • Stephen Maebius, Foley & Lardner LLP
  • Micky Minhas, Microsoft Corp



Trade Secrets: New Clout After Altavion

Webinar Date: 06/12/2014

It’s a striking juxtaposition: As patents may become harder to get and easier to challenge (Myriad, Nautilus), a recent decision from the California Court of Appeals moves trade secrets law in the other direction, strengthening trade secret protection for ideas and compilations. Understanding the implications of this case, Altavion v. Konica Minolta, should be useful both for in-house counsel who face the question of what kind of IP protection they should seek for new inventions, and for litigators, who may discern new possible causes of action and remedies.

The defendant in the case argued that Altavion’s concept for digital stamping technology was not protectable by trade secret, leaning on a 2010 decision from the court that stated “trade secret law does not protect ideas as such.” In Altavion, the court rejected that interpretation of its precedent, explaining that “a trade secret in the broad sense consists of any unpatented idea which may be used for industrial and commercial purposes.” The decision also reiterated the protected status of so-called “compilation” trade secrets, which can consist of information in the public domain. The Altavion case is also notable because it allowed recovery for misappropriation of trade secrets that were more general than what the plaintiff had identified prior to discovery or trial.

Our panel includes an IP litigator from a major law firm, the top in-house IP counsel of a multinational car company, and the small-firm litigator who prevailed in Altavion.

Speakers:

  • Kurt Calia, Covington & Burling LLP
  • William Coughlin, Ford Global Technologies, LLC
  • Glenn Peterson, Millstone, Peterson & Watts, LLP



Patent Venue Transfer: The New Rules of the Game

Webinar Date: 06/05/2014

Venue is important in patent litigation, and is likely to become even more so. Thanks to the U.S. Supreme Court decisions this spring, U.S district judges now have more leeway to require losers to pay attorney fees and are less likely to have that decision overturned on appeal so it’s more important than ever in which district court a case is heard. This webinar will equip both defendants and plaintiffs to make the best possible argument at both district courts and at the Federal Circuit regarding where a trial should take place, taking into account recent developments in the law and judicial practice.

On appeal, the pendulum is currently swinging away from the ready grant of venue challenges to defendants. In several recent cases this year – including In re Barnes & Noble, In re Apple Inc., and In re Microsoft – the Federal Circuit wasn’t convinced of the need for the move. This shift follows an earlier one six years ago that made it easier for defendants to gain home court advantage.

Our panel will discuss what constitutes a robust detailed factual record supporting a venue change, the best way for it to be presented, and how plaintiffs can best position themselves to block these requests.

Speakers:

  • Robert Isackson, Orrick, Herrington & Sutcliffe LLP
  • Jonathan Suder, Friedman Suder & Cooke
  • Max Tribble, Susman Godfrey L.L.P.



Double Patenting After Gilead: Prosecution and Litigation

Webinar Date: 05/28/2014

Recording and Materials not available

The recent Federal Circuit decision in Gilead Sciences v. Natco Pharma opens up new pitfalls for innovator bioscience companies and new opportunities for the generic industry. Patent owners and challengers in other industries may also benefit from a thorough understanding of this latest broadening of the scope of obvious-type double patenting.

In its decision, the Federal Circuit panel answered ‘yes’ to the question of whether a patent that issues after but expires before a second patent can qualify as a double patenting reference for that second patent. Our panel includes a veteran litigator for generic companies, a bioscience lawyer who prosecutes patents for innovator companies and also counsels on litigation, and the former general counsel of a large pharmaceutical company. They will discuss:

  • the implications of Gilead for patent litigation, including the battleground of just how similar subject matter has to be to serve as a double patenting reference
  • practice tips for innovator companies regarding issued patents, pending applications, and the ongoing prosecution of new inventions
  • Chief Judge Rader’s dissent and its impact on policy; In re Hubbell; and what issues in double patenting remain unresolved

Speakers:

  • Robert Armitage, Eli Lilly and Co. (retired)
  • Annemarie Hassett, Goodwin Procter, LLP
  • Jane Love, Wilmer Cutler Pickering Hale and Dorr, LLP



Attorney Fees: Patent Litigation Strategy after Highmark and Octane

Webinar Date: 05/15/2014

In two rulings last month, the U.S. Supreme Court lowered both the legal standard and the burden of proof under 35 U.S.C. § 285, which allows courts to award attorney fees to the prevailing party. In Octane Fitness v. ICON Health, the court lowered the Federal Circuit’s very high bar to awarding fees, writing that “an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of the party’s litigating position…or the unreasonable manner in which the case was litigated.” The court also found no justification for a “clear and convincing evidence” standard to show an entitlement to fees, lowering it to a “preponderance of evidence” standard. Further, in Highmark v. Allcare, the court rejected the Federal Circuit’s de novo review of attorney fees, saying that a district court’s decisions could be reviewed on appeal only for abuse of discretion.

Our panel includes a senior litigation attorney at a major high-tech company, a patent litigator at a law firm that often represents plaintiffs, and a large-firm litigator who represents both patent plaintiffs and defendants. They will discuss:

  • What will district courts establish as a standard for cases that “stand out”? Will that standard be uniform among courts? Will there be a marked effect on plaintiff venue selection?
  • Will these decisions reduce the number of infringement suits filed? Or just settlement dynamics?
  • What evidence will parties muster to prove or rebut the contention that a case is exceptional?
  • How will findings of the PTAB in post-grant proceedings figure into that calculus?
  • Will there actually be a significant increase in fee-shifting?
  • These decisions are seen as pro-defendant, but will victorious plaintiffs also benefit?

Speakers:

  • Tom Brown, EMC Corp.
  • Richard Megley, Niro, Haller & Niro, Ltd.
  • Steven Moore, Kilpatrick Townsend & Stockton LLP



Are Digital Transmissions an "Article" under Section 337? Looking Ahead to the Federal Circuit

Webinar Date: 05/08/2014

The U.S. International Trade Commission laid claim to the digital world last month, ruling that it has jurisdiction to prevent the transmission into the U.S. of electronic files that infringe patents. The ruling came as part of a long-running patent infringement battle between Align and ClearCorrect, who sell rival teeth straightening systems. The Commission ordered ClearCorrect to stop transmitting from Pakistan the digital data it needs to make its dental molds in Texas.

The case at the ITC was one of first impression, and it drew submissions from interested parties including Google and Nokia. ClearCorrect has already announced its intention to appeal to the Federal Circuit. The case touches on issues that have been addressed in several earlier appellate decisions, such as the reach of U.S. law to other countries (Microsoft v. AT&T), the IP status of digital signals (In Re Nuijten), and the scope of the ITC (Kyocera, Tian Rui and Suprema). Our panel includes an experienced litigator at the ITC, a top expert in software patents, and a litigator who won a case at the Federal Circuit that limits the ITC’s scope.

Speakers:

  • Jonathan Engler, Adduci, Mastriani & Schaumberg, LLP
  • Bart Eppenauer, Shook, Hardy & Bacon, LLP
  • Darryl Woo, Fenwick & West LLP



Conflicts of Interest: Opinions of Counsel and Patent Litigation (including Disqualification)

Webinar Date: 04/23/2014

Patent practice offers many opportunities for conflicts of interest between corporate clients and their law firm attorneys. This webinar will examine conflict rules and scenarios in both opinion work and litigation. Our panel includes the deputy chief of IP at a major multinational company, a leading academic authority on IP and legal ethics and an experienced patent litigator. Their discussion will

  • quickly review the ABA Model Rules of Professional Conduct, implementation by states, and differences among regional circuits regarding disqualification;
  • discuss conflict scenarios involving opinion work, such as when a corporate client hires a law firm to opine that a patent is invalid, only to discover that the firm represents the patent owner;
  • assess varying scenarios involving conflicts in litigation, such as whether a law firm should ask a client for a waiver to represent a party opposing the client, and conflicts arising after information is shared during “meet-and-greet” sessions between a law firm and a potential client; and
  • examine where the line falls between clear-cut ethical lapses and client expectations of loyalty.

Speakers:

  • John Cheek, Caterpillar Inc.
  • Lisa Dolak, Syracuse University College of Law
  • Christopher Larus, Robins, Kaplan, Miller & Ciresi, LLP



Export Controls on IP: Understanding and Managing the Risk

Webinar Date: 04/09/2014

A U.S.-based inventor puts drawings or test results in an envelope and mails it to Germany. The same inventor walks across his lab and hands the data to a visiting scientist from China. Each of these is a technology export. So is allowing a foreign national or person in a non-U.S. jurisdiction to retrieve the information from a company or third-party server.

Most U.S. patent lawyers know about the USPTO’s Licensing and Review Office, which administers the Patent Secrecy Act and grants applicants a license to file patents abroad. But if that is all a patent lawyer knows about export controls, it exposes his or her clients to significant risk. Technology exports are also ruled by two other sets of export control regulations: the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR). Penalties that the Commerce Department administers under EAR (which cover “dual use” items), tend to be lower than those assessed by the State Department which administers ITAR (which cover defense/military items). But even EAR penalty exposure can be stiff, with statutory maximum civil penalties “the greater of $250,000 or twice the value of the transaction, per violation.” Then there’s the reputational damage associated with having a corporate name tied to violations of national security-related laws; the disruption and cost of dealing with an investigation; and the possibility of Commerce imposing a “denial of export privileges” and cutting off foreign sales.

Our panel includes the chief IP counsel of a major multinational technology company, and two law firm experts on export controls. They will;

  • give an overview of the export-control challenge facing corporate owners of IP
  • describe the regulatory regimes and the line between controlled and not-controlled information
  • focus on corporate environments (in addition to R&D) where export rules could come into play, such as mergers & acquisitions, cloud computing, and patent searching
  • outline key components of creating and monitoring a corporate compliance effort
  • discuss what it means to clean up past transgressions through a “voluntary disclosure” to federal authorities.

Speakers:

  • Daniel Staudt, Siemens Corp.
  • Scott Flicker, Paul Hastings LLP
  • Robert Torresen, Sidley Austin LLP



Myriad and Mayo: The New USPTO Examination Guidelines

Webinar Date: 03/20/2014

PTAB trials follow different rules than both USPTO re-examination proceedings and patent prosecution practice. PTAB trials are also very different from U.S. district court litigation – for example, neither the term “discovery” nor “deposition” mean what they do under the Federal Rules of Civil Procedure.

The statutory framework for the PTAB was set by the America Invents Act of 2011. Since its debut in September 2012, the PTAB has come a long way in clarifying its operating rules. Some important issues are still in flux, and may need to be resolved by the Federal Circuit. But many parts of PTAB procedural guidance are likely to remain unchanged.

Our panel includes two lawyers who have represented clients before the PTAB and one of PTAB’s leading administrative patent judges. They will discuss the PTAB’s published guidance and suggested practice regarding:.

  • Patent owner motions to amend claims
  • Motions to exclude the other side’s evidence
  • Effective use of declarations and experts
  • Deposition etiquette
  • The one-year bar
  • Joinder practice

Speakers:

  • Courtenay Brinckerhoff, Foley & Lardner, LLP
  • Duane Marks, Roche, Inc.
  • Raul Tamayo, USPTO



Inter Partes Review: Nuts & Bolts

Webinar Date: 03/13/2014

PTAB trials follow different rules than both USPTO re-examination proceedings and patent prosecution practice. PTAB trials are also very different from U.S. district court litigation – for example, neither the term “discovery” nor “deposition” mean what they do under the Federal Rules of Civil Procedure.

The statutory framework for the PTAB was set by the America Invents Act of 2011. Since its debut in September 2012, the PTAB has come a long way in clarifying its operating rules. Some important issues are still in flux, and may need to be resolved by the Federal Circuit. But many parts of PTAB procedural guidance are likely to remain unchanged.

Our panel includes two lawyers who have represented clients before the PTAB and one of PTAB’s leading administrative patent judges. They will discuss the PTAB’s published guidance and suggested practice regarding:

  • Patent owner motions to amend claims
  • Motions to exclude the other side’s evidence
  • Effective use of declarations and experts
  • Deposition etiquette
  • The one-year bar
  • Joinder practice

Speakers:

  • R. Danny Huntington, Rothwell, Figg, Ernst & Manbeck, P.C.
  • Lori Gordon, Sterne, Kessler, Goldstein & Fox P.L.L.C.
  • Judge Michael Tierney, USPTO



Doctrine of Equivalents: Latest on Patent Prosecution and Litigation

Webinar Date: 03/06/2014

Is the doctrine of equivalents dead? Is it coming back to life? Both questions have been raised by prominent IP commentators over the past few years. The answer these days is a nuanced one. Our webinar panel includes a patent litigator who recently won a significant victory for a defendant in a DOE case at the Federal Circuit, an experienced IP counsel at a biotech company, and a top law firm prosecutor in software, computers, and telecommunications. They will analyze recent case law and extract lessons for clearance and freedom-to-operate practice, patent prosecutors, patent owners and defendants. Among the Federal Circuit cases to be discussed:

  • Integrated Technology v. Rudolph Technologies, in which the Federal Circuit overturned a district court finding of equivalents infringement, basing its decision on a presumption of prosecution history estoppel when the patent applicant had made a narrowing claim amendment during PTO prosecution.
  • Brilliant Instruments v. GuideTech and Charles Machine Works v. Vermeer Manufacturing, opinions where the Federal Circuit continues to rein in and clarify the use of claim vitiation as an argument against noninfringement.
  • Ring & Pinion v. ARB which clarified that the foreseeability of a possible equivalent invention does not bar a patent owner from proving infringement under the doctrine of equivalents.

Speakers:

  • Daniel McDonald, Merchant & Gould
  • Andrew Shyjan, MedImmune
  • Judith Szepesi, Blakely Sokoloff Taylor & Zafman LLP



Functional Claiming: Latest Developments

Webinar Date: 02/27/2014

The proportion of patent applications that use the term “means” — the traditional primary trigger for §112(f) analysis – has fallen sharply since the Federal Circuit began to strictly enforce the requirements of that statute in the mid-1990s. But patent prosecutors have not given up the use of functional claim limitations. One alternative approach has been to replace the term “means for” with a more structural noun such as “circuit for” or “instructions for.” Another has been to use the language “configured to/for” in independent claims.

Millions of patents with such functional claims have been issued and some are now being asserted in litigation. But the permissible scope of functional claim language is difficult to nail down, some experts point out, and software patents containing these claims are facing scrutiny from several directions.They were a focus of President Obama’s Executive Action update this month, while two different cases before the Supreme Court might possibly result in opinions that could be used against functional claims. In Nautilus v. Biosig, amici decrying the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations have singled out functional claims as indefiniteness offenders. And the decision Alice v. CLS could provide ammunition for an assault on functional claiming using a Section 101 ineligible subject matter approach.

Our panel, which includes a leading law professor, a software patent prosecutor, and a patent litigator, will discuss how defendants might try to deflect the assertion of functional claims today, the most recent Federal Circuit decisions on functional claiming, and how patent prosecutors can write useful claims that will stand up in the future despite possible new limits on broad functional claiming.

Speakers:

  • Dennis Crouch, University of Missouri
    Stephen Durant, Schwegman, Lundberg & Woessner, P.A.
    Abran Kean, Erise IP



Privilege in Patent Disputes: Thorny Issues involving Patent Agents and Foreign Attorneys

Webinar Date: 02/19/2014

Questions of attorney-client privilege come up frequently during the discovery process in patent infringement litigation. If a European company is asserting a U.S. patent in the U.S., does attorney-client privilege protect email from a European law firm attorney to a lawyer working at the company’s U.S. subsidiary? If a U.S. company relies on a patent agent instead of a lawyer to prosecute its patent application at the USPTO, are communications between the inventor and the patent agent privileged?

Though the issues are always fact-intensive, certain broad legal strokes are clear. Most district courts employ a two-step analysis in determining whether non-U.S. counsel’s communications are discoverable in U.S. litigation. First, the court determines whether U.S. or foreign privilege law applies; then it looks to whether the governing law recognizes privilege for the particular communications at issue and the scope of that privilege. Within the U.S., federal district courts are split on whether patent agent communications are privileged, so this issue may be an important factor in selecting a venue to bring a patent complaint.

Our panel, which includes the European managing partner of a top U.S. IP firm, a U.S. patent litigator, and a leading in-house counsel of a major multinational, will discuss the case law that governs these situations and what internal procedures companies and law firms should rely on to maintain privilege whenever possible.

Speakers:

  • Anthony Tridico, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Heather Repicky, Nutter McClennen & Fish LLP
  • Buckmaster De Wolf,General Electric Co.



Appeals from the PTAB: Laying the Groundwork for the Federal Circuit

Webinar Date: 02/06/2014

Will the speedy new routes to challenge patents created by the AIA become mired in a legal traffic jam of remands, diversions, and endless litigation? That’s the fear of some experts who have looked beyond the swelling tally of new post-grant proceedings filed at the USPTO’s Patent Trial and Appeal Board (800-plus inter partes review and covered business method petitions filed in 2012-13), and considered the issues likely to arise when the Federal Circuit faces hundreds of appeals from PTAB decisions in 2014.

Our panel, which includes a former Federal Circuit judge and a law firm specialist and in-house counsel deeply involved in post-grant proceedings, will consider:

  • What happens to prior art that was ruled redundant by the PTAB? In the interest of streamlining its cases and meeting deadlines set by statute, the PTAB often prunes back petitions and declines to rule on many pieces of prior art. These pieces of prior art remain “in the background,” say some experts, and could mean the PTAB decision is not a final judgment. Will such cases be remanded back to the PTAB? Could such remands constitute an orphan class of post-grant proceedings that fall outside of the statutory deadlines?
  • How will issues regarding litigation estoppel play out and will they trigger more litigation? Complications have already arisen in IPR petitions that involve different parties where one has indemnified the other from a claim of patent infringement. It is unclear if the existence of a contract/indemnification clause creates privity between the contracting parties under the IPR statutes, or if it renders an indemnitor a real-party-in-interest with respect to the indemnified party. While analyzing the legal and institutional landscape, our panelists will advise companies currently involved or soon-to-be-involved in post-grant proceedings at the PTAB how they can act now to maximize their success on appeal at the Federal Circuit.

Speakers:

  • Hon. Arthur Gajarsa, Wilmer Cutler Pickering Hale and Dorr, LLP
  • Mollybeth Kocialski, Oracle Corporation
  • Scott McKeown,Oblon Spivak McClelland Maier & Neustadt, LLP



Design Patents and Trade Dress: Significant Recent Litigation

Webinar Date: 01/22/2014

Interest in design rights is at an all-time high thanks to their role in global smart phone and tablet litigation. The number of applications for design patents at the USPTO is growing rapidly. Jurisprudence for design rights continues to evolve, and the results of recent significant U.S. litigation should play a role in future litigation and patent prosecution strategy. Our panel will discuss:

  • the Sixth Circuit decision in Groeneveld Transport v. Lubecore , which discusses the nonfunctionality requirement for trade dress protection
  • the Federal Circuit decision in High Point Design v. Buyer’s Direct, which clarifies the design patent test for obviousness
  • the PTAB’s decision not to grant a petition for inter partes review to ATAS, which was trying to invalidate a design patent for a building panel owned by Centria
  • the recent Federal Circuit decision in Pacific Coast Marine v. Malibu Boats, holding that the principles of prosecution history estoppel apply to design patents.

Speakers:

  • Tracy-Gene Durkin, Sterne, Kessler, Goldstein & Fox, PLLC
  • Richard McKenna, Foley & Lardner, LLP
  • John Cheek,Caterpillar Inc.



Inducing Infringement at the ITC: The Federal Circuit Opinion in Suprema

Webinar Date: 01/16/2014

In December, the Federal Circuit released an opinion that significantly restricts the authority of the
International Trade Commission. That decision, Suprema v. ITC, states that inducement of infringement under Section 271(b) is not “completed” until there has been both inducement to infringe and direct infringement, and that the ITC has no power over imports that induce infringement but do not yet directly infringe.

This view, which was opposed in a dissent by Judge Reyna, came as a surprise to many ITC practitioners. Our panel will discuss the legal issues raised by the opinion, and consider the implications for both patent owners and potential infringers, including the possibility of patent owners still pursuing contributory infringement at the ITC. They will also discuss the likelihood of the issue being reheard, and, if it is not, its long-term impact on the ITC as a patent litigation venue.

Speakers:

  • Paul Brinkman, Quinn Emanuel Urquhart & Sullivan LLP
  • Tony Pezzano, King & Spalding
  • Christa Zado, Cisco Systems, Inc.



After Actavis: FTC Update

Webinar Date: 01/09/2014

The U.S. Supreme Court decision in Actavis last June removed the shield that had protected the pharmaceutical industry under the “scope of the patent”, allowing it to make settlement payments to generic companies in patent litigation. The court did not go so far as to find reverse payments presumptively illegal, but rather said a settlement’s possible pro-competitive benefits must be weighed against its potential anti-competitive effects. That leaves the parties designing a settlement, in the first instance, and then lower courts and the FTC, with the job of determining whether the terms of each deal constitute a likely antitrust violation.

The FTC is now reviewing the Hatch-Waxman settlements that have been submitted to it for review since June. Other recent relevant developments include Bayer’s $74 million payout to escape a consumer class action in November, decisions in the ongoing class action litigation regarding Nexium in the U.S. District Court of Massachusetts, and the FTC’s intention to pursue disgorgement of gains from past settlements.

An official from the FTC’s Bureau of Competition is the linchpin of a panel that includes two law firm attorneys. The topics they will discuss include the valuation of reverse payments in general, the role of ancillary agreements such as joint marketing agreements, and whether a branded company’s promise not to launch an authorized generic during the generic’s exclusivity period amounts to a reverse payment.

Speakers:

  • Steven Lee, Kenyon & Kenyon LLP
  • Michael Perry, Federal Trade Commission
  • Bruce Wexler, Paul Hastings LLP



Causal Nexus in Patent Remedies After Apple v. Samsung

Webinar Date: 12/12/2013

The patent litigation between Apple and Samsung in the Northern District of California seems to be a furnace in which the Federal Circuit is forging its views concerning injunctions post-eBay. In 2012 the appellate court issued two rulings on preliminary injunctions, one establishing a new “causal nexus” requirement between infringement and the alleged irreparable harm to the patentee, and the other reversing a preliminary injunction against Samsung’s Galaxy Nexus smartphone for lack of such causal nexus.

Last month the Federal Circuit made an important ruling in this litigation that involves permanent injunctions. The appellate court ruled that U.S. Judge Lucy Koh made a mistake in her reasoning when she declined to grant Apple’s request for a permanent injunction on certain infringed patents. Judge Koh had ruled that Apple wasn’t able to show the necessary “causal nexus” given the number of factors that go into a buyer’s decision to buy a smartphone. But the Federal Circuit remanded, saying it wasn’t necessary to show that a patented feature is the exclusive reason for consumer demand. Apple only had to show some connection between the patented feature and demand for Samsung’s products, and there might be a variety of ways to do so.

Our panel, which includes two experienced patent litigators and an economist, will discuss the evolving jurisprudence of the causal nexus, including:

  • How do the Federal Circuit’s rulings on injunctions mesh with its rulings tightening up the determination of damages? Does an “easing up” on the causal nexus requirement for winning a permanent injunction herald a loosening of the requirements for damages?
  • Will the Federal Circuit end up supporting two different standards for causal nexus, one for preliminary injunctions and one for permanent injunctions? Is that appropriate?

Speakers:

  • Mark Hannemann, Kenyon & Kenyon LLP
  • William Kerr, Berkeley Research Group
  • Andre Iancu, Irell & Manella LLP



Downstream Dilemma: Can Licensors Sidestep Patent Exhaustion?

Webinar Date: 12/04/2013

Ever since the Supreme Court addressed the non-statutory doctrine of patent exhaustion in its 2008 Quanta decision, patent owners have tried to figure out how to still earn licensing income from companies at more than one rung of a distribution or manufacturing ladder. Not much encouragement can be found in the two recent Federal Circuit decisions. In Keurig v. Sturm Foods, the Federal Circuit upheld a district court’s decision that Keurig’s patent rights were exhausted by the sale of its coffee brewing machines, and so not infringed by the defendant’s sale of replacement coffee cartridges. (The winning side’s attorney is one of our panelists.) In Lifescan Scotland v. Shasta, the court again ruled for the defendant, finding that LifeScan’s patent on glucose meters was exhausted once the product was distributed to customers and that Shasta did not infringe by selling its own strips for use with LifeScan’s meter.

Despite this trend, our panel will discuss what might prove to be winning strategies for patent owners using both patent prosecution and licensing and litigation. One possible way to avoid exhaustion, for instance, could be to put in a separate patent the claims that might be enforced downstream. In litigation, could a patent owner settle with downstream users first, and thereby not lose the opportunity to work his way up to the manufacturer?

Speakers:

  • Allen Arntsen, Foley & Lardner LLP
  • Charan Sandhu, Weil Gotshal & Manges LLP
  • Andrew Wojnicki, IBM Corp.



Oracle v. Google at the Federal Circuit

Webinar Date: 11/20/2013

On December 4, a Federal Circuit panel will hear an appeal brought by Oracle of a decision against it this spring in the Northern District of California. That decision, in a case involving the Android and Java mobile telecommunication platforms, found that application programming interfaces (APIs) cannot be copyrighted. The appeal’s outcome is of great importance to the software industry: APIs are the sets of instructions that allow different software programs to be interoperable.

The case is being heard at the Federal Circuit, rather than at the Ninth Circuit, because the original action in district court included patent infringement claims. Interestingly, the Federal Circuit is having its own internal debates about the patentability of software, as evidenced by the recent divided en banc opinions in CLS Bank.

Our panel includes a recently retired judge from the Federal Circuit and authors of amicus briefs for the opposing parties. They will discuss what the Federal Circuit panel is likely to rely on in its deliberations and the possible outcomes, including whether the case must be decided on the “all-or-nothing” basis on which it was argued.

Speakers:

  • Hon. Arthur Gajarsa, Wilmer Cutler Pickering Hale and Dorr LLP
  • Professor Pamela Samuelson, University of California at Berkeley
  • Lance Koonce, Davis Wright Tremaine LLP



Obviousness: "Objective Evidence" Redux, and Other Lessons from Recent Federal Circuit Decisions

Webinar Date: 10/30/2013

Until recently, relying on objective evidence to rebut a prima facie finding of obviousness was viewed by most patent practitioners as a “Hail Mary pass”, made in desperation with little hope of success. But, six years after the Supreme Court’s KSR opinion, that view is no longer correct. A series of recent decisions by the Federal Circuit has rehabilitated the use of objective evidence as a patent defense, overturning obviousness decisions both from the USPTO and from lower courts.

Our program is aimed both at litigators and patent prosecutors who want to learn how to use recent case law to leverage secondary considerations to best advantage. Our panel includes two litigators who recently won important cases involving obviousness before the Federal Circuit and an in-house patent prosecutor who regularly needs to overcome obviousness rejections made by a USPTO examiner. They will discuss:

  • recent important litigation victories for patent owners at the Federal Circuit, including Transocean v. Maersk, Plantronics v. Aliph, and Leo v. Rea
  • the importance of proving a causal nexus between the patent and secondary considerations
  • how best to use objective evidence in front of the USPTO
  • issues stemming from the need to collect and analyze objective evidence generated within a corporate environment and the market

Speakers:

  • William Solander, Fitzpatrick, Cella, Harper & Scinto
  • Kara Stoll, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Dale Davis, General Electric Co.



Written Description of Biotech Inventions

Webinar Date: 10/10/2013

In its July decision Novozymes v. DuPont Nutrition, the Federal Circuit found that a Novozymes amylase patent did not satisfy the written description requirement of 35 USC § 112, because the disclosure did not demonstrate possession of the claimed subject matter as a whole. This finding raised eyebrows. As one expert wrote, “doesn’t the identification of seven reference enzymes, 33 amino acid positions to be modified, and specific suggested modifications” indicate that the patent’s written description was adequate?

Novozymes is but the latest in a string of Federal Circuit opinions to reinforce the written description requirement as it applies to biotech inventions and to influence USPTO examination policy. This webinar features the Supervisory Patent Examiner for art unit 1644 at the U.S. Patent and Trademark Office, who will discuss how the agency’s Written Description Training Materials, last revised in 2008, mesh with recent court decisions. The panel, which also includes a top in-house counsel and biotech patent prosecutor, will consider how innovators can both protect their inventions and be sure of their freedom to operate. The panel will discuss, e.g., claims on an antibody which “binds to an antigen at residues X, Y, and Z of the antigen.” Are these claims patentable even though they provide no structural information about the claimed antibodies? What type of disclosure will help support patentability and broad scope? The panel will also discuss how recent case law should inform innovators’ filing strategies throughout drug discovery and development.

Speakers:

  • David Halstead, Ropes & Gray LLP
  • Daniel Kolker, USPTO
  • Deborah Martin, Pfizer, Inc.



Inducing Infringement: Latest Developments

Webinar Date: 09/26/2013

In June, in Commil v. Cisco, the Federal Circuit acknowledged that its long line of earlier cases applying the “knew or should have known” standard for induced infringement was no longer good law in light of the U.S. Supreme Court’s 2011 decision in Global-Tech v. SEB. Induced infringement now faces a higher standard, requiring actual knowledge or willful blindness that the acts being induced constitute patent infringement. Further, the majority of the Federal Circuit Commil panel, in a matter of first impression, broadened the scope of intent beyond infringement, holding that evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.Our panel of experts will:

  • What has been the impact of Global-Tech v. SEB so far at district courts? Have plaintiffs been able to meet the higher bar of “willful blindness” to prove inducement? How have successful plaintiffs overcome the higher bar?
  • What is both the immediate and long-term effect on patent litigation of Commil’s holding about a good faith belief in invalidity? For instance, were the jury instructions wrong in many cases since SEB and will some defendants attempt to have those cases retried?
  • Should corporations revert to getting an opinion of counsel about invalidity upon receipt of letter of notice alerting them to possible infringement, reversing the trend toward “doing without” that was set in motion by the Federal Circuit’s 2007 Seagate opinion on the standard for willfulness? What are best practices for opinion letters now?



SEPs: What Makes a Patent "Essential" to a Standard?

Webinar Date: 09/19/2013

Litigation earlier this year focused on whether owners of infringed Standard-Essential Patents (SEPs) can win an injunction or an ITC exclusion order, and how to calculate a “fair, reasonable, non-discriminatory (FRAND)” royalty. But a July decision by Northern District of Illinois U.S. District Court Judge James Holderman, in Innovatio v. Cisco, is the first to determine what actually makes a patent essential to a standard. That determination is sure to be litigated increasingly as distinctions between the rights of owners of SEPs versus the rights of owners of other patents continue to be defined by courts and others.

Our panel of experts will:

  • Discuss the notion of “essentiality” within the broad context of standards, standard-setting organizations, and patent pools
  • Analyze and assess Judge Holderman’s ruling, including his determinations that defendants bear the burden of proof and that a RAND obligation applies separately for each individual claim within a patent, not an entire patent
  • Debate the future path of litigation on essentiality and what this means for companies who both participate in and implement standards

Speakers:

  • Jorge Contreras, American University, Washington College of Law
  • Earl Nied, Intel Corp.
  • Robert Sachs, Fenwick & West



Post-grant Proceedings with Concurrent Litigation: Strategic Considerations

Webinar Date: 09/04/2013

The post-grant proceedings created by the America Invents Act are quickly becoming a major new feature of patent practice. Many post-grant petitions are filed by defendants in concurrent litigation who are hoping to invalidate at the USPTO the patent asserted against them in a U.S. court. Yet figuring out all implications of filing a post-grant proceeding in that circumstance is no easy task, and being surprised by a twist or turn could result in a litigation disaster. For instance, claim construction arguments must be coordinated between the two venues, and settlement flexibility may be hindered because an inter partes review cannot be terminated unless all co-petitioners agree. Some important issues, including the scope of estoppel described in the AIA, are likely to be litigated in the future. Our panel will consider the key issues of stays, claim construction, estoppel, joinder, and settlement.

Speakers:

  • Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Dion Bregman, Morgan, Lewis & Bockius LLP
  • Juliana Mirabilio, Oracle



Versata v. SAP and Fresenius v. Baxter: Res Judicata and Collateral Estoppel in Post-grant Proceedings and Concurrent Litigation

Webinar Date: 08/28/2013

The post-grant proceedings created by the America Invents Act are quickly becoming at a major new feature of patent practice. Because most post-grant fillings involve patents in concurrent litigation, an important interconnection is developing between proceedings at the USPTO’s new Patent Trial and Appeal Board, on the one hand, and U.S. district courts and the U.S. Court of Appeals for the Federal Circuit on the other. The outline of this relationship is emerging, and the details have yet to be fully defined. But the definition of this nexus is likely to influence the outcome of many patent disputes in coming years.

The panel will examine what happens when the PTAB and the Federal Circuit come to different conclusions about the same patent at different times. Our panel will consider the procedural stance of the two named cases, enumerate other conflicting situations that are likely to emerge, and discuss what legal principles will prevail to solve the resulting conundrums.

Figuring out all implications of Filing a Post-grant Proceeding with Concurrent Litigation is no easy task, and being surprised by a twist or turn could result in a litigation disaster. For instance, claim construction arguments must be coordinated between the two venues. Tune into IPO’s IP Chat Channel on September 4th for a discussion on Strategic Considerations that will consider the key issues of stays, estoppel, claim construction and settlement.

Speakers:

  • Scott Daniels, Westerman Hattori
  • Bernard Knight, USPTO
  • Jeffrey Kushan, Sidley Austin



Licensing Self-Replicating Technologies after Monsanto

Webinar Date: 08/20/2013

The U.S. Supreme Court’s unanimous decision this year in Monsanto v. Bowman put to rest the idea that the patent doctrine of exhaustion could be applied to many situations involving self-replicating technologies. But it also highlights the continued importance of the license contracts that biotech patent holders use to retain control over their inventions. Those licenses raise the legal issue of the limits of post-sale restrictions on patented products. This webinar will explore in this context the tension between the U.S. Supreme Court’s Quanta decision, which bolstered the exhaustion doctrine, and Federal Circuit jurisprudence since Mallinckrodt, which has authorized complex licenses that allow patentees to accomplish their business objectives without exhausting their patent rights.

Many biomedical self-replicating inventions do fall comfortably within the scope of the Monsanto opinion. For example, the maintaining of an initial cell culture in the hands of the licensee-purchaser, although it also involves replication, should be easily distinguished from distribution of the culture to unauthorized third parties. But other technologies may not present quite so simple an analysis. DNA vectors, for instance, can be used for a variety of purposes, not all of which require replication.

Our panelists will discuss the relevant case law and explore how patent owners of self-replicating biological inventions can legitimately craft their license provisions to draw a line between authorized and infringing activity.

Speakers:

  • Christopher Jeffers, Womble, Carlyle, Sandridge & Rice, LLP
  • Konstantina Katcheves, Lonza Group
  • Erich Veitenheimer, Cooley LLP



Court-appointed Damages Experts: A Growing Force in Patent Litigation?

Webinar Date: 07/24/2013

Click here to purchase on-demand recording.

Until recent years, few judges availed themselves of Rule 706 of the Federal Rules of Evidence, which allows a court to appoint its own neutral expert. But in two high-profile patent cases recently, Oracle v. Google and Apple v. Motorola, judges did. In Oracle v. Google, Judge William Alsup of the Northern District of California appointed a neutral expert after the parties submitted damages estimates ranging from nothing to $6.1 billion dollars. Apple v. Motorola ended at the Daubert hearing, when Seventh Circuit Judge Richard Posner, sitting by designation as a trial judge in the Northern District of Illinois, ruled inadmissible the damage testimony of both Apple’s and Motorola’s expert witnesses and dismissed the case with prejudice. More recently, Judge Posner has used a neutral expert for patent damages calculations in Brandeis University v. East Side Oven.

This panel will explore the potential help and harm of court-appointed damages experts, and explore whether this will be a growing trend. From an administrative point of view, what is the appointment process? What are (or can be) the neutral expert’s duties? Who bears the cost? Does the neutral expert just advise the judge at the Daubert hearing or does he/she testify to the jury? What is the potential of neutral experts to speed litigation and reduce costs? Or does a court-appointed expert witness threaten the right to a jury trial because juries will be unduly swayed by that testimony? How can a party successfully oppose the appointment of a given expert? Our panel includes the economist who was appointed by Judge Posner, the director of IP law at a Silicon Valley technology company, and a law firm litigator experienced in damages arguments.

Speakers:

  • J. Gregory Sidak, Criterion Economics LLC
  • Brian Way, Altera Corp.
  • Karen Vogel Weil, Knobbe Martens Olson & Bear, LLP



Design Patents, Trade Dress, Copyright and Utility Patents: How to Prosecute and Enforce Multiple Layers of IP Protection

Webinar Date: 07/17/2013

A corporation or inventor with a potentially valuable product will often want to take a “belt-and-suspenders” approach to protecting intellectual property. Rather than rely only on one layer of IP protection, the owner will try to protect the same product with varying forms: eg, design and utility patents, trade dress protection, and/or copyright.

This webinar will discuss the opportunities and challenges of this strategy both in the U.S. and overseas. One primary opportunity is the possibility of extending protection beyond the “20 years from filing date” term of utility patents and “14 years from date of issue” term of design patents. Enforcement flexibility may also be a goal, eg, the ability to enforce trade dress remedies, set out in the Lanham Act, against a copycat product that doesn’t directly infringe a utility patent.

But practitioners must be careful not to let one form of IP protection negate another. In the 2001 U.S. Supreme Court decision TrafFix Devices. v. Marketing Displays, for instance, the court held that a functional design could not be trademarked, while the 2010 Federal Circuit decision in Richardson v. Stanley Works illustrated the dangers of incorporating functional elements in a design patent. Our panelists — an in-house counsel for a multinational consumer goods company and two law firm litigators — are experienced in the nuances of multiple forms of IP.

Speakers:

  • Mark Charles, Procter & Gamble Co.
  • John Froemming, Jones Day
  • Richard Stockton, Banner & Witcoff, Ltd.



Standard Essential Patents at the ITC: Samsung and Apple

Webinar Date: 07/11/2013

In June the U.S. International Trade Commission banned imports of some Apple products for infringing a Samsung wireless standard essential patent (SEP). The decision marks the first time the agency has ruled on the question of whether companies can win exclusion orders using SEPs that they have promised to license on fair, reasonable and nondiscriminatory (FRAND) terms.

The U.S. Department of Justice, the Federal Trade Commission and the USPTO have all recently suggested to the ITC that its mandate to consider the public interest before issuing an exclusion order encompasses the competitive harm that might stem from allowing SEP holders to use the threat of an import ban to demand higher royalties. Many experts see the agency’s decision to go forward with this ban as contradicting those views.

Our panel includes a patent litigator, the former chair of the ITC who is now at a law firm, and a litigator who works at the intersection of IP and antitrust. Among other things, they will discuss the 2010 Federal Circuit decision in Spansion v. ITC, which found that the standard for the ITC issuing an exclusion order is different than the eBay standard; a recent U.S. district court order that enjoined a patent plaintiff from enforcing exclusionary relief afforded by the ITC because of the plaintiff’s FRAND commitment; and the considerations facing the Obama administration, including whether to overturn the ban and how its decision might mesh with its recent patent litigation proposals.

Speakers:

  • Deanna Okun, Adduci, Mastriani & Schaumberg, LLP
  • Richard Taffet, Bingham McCutchen LLP
  • David Long, Dow Lohnes PLLC



Reverse Payments: Impact of U.S. Supreme Court on Hatch-Waxman Litigation

Webinar Date: 06/20/2013

On June 17, the U.S. Supreme Court altered the landscape of Hatch-Waxman litigation. In its 5-3 opinion in FTC v. Actavis, the court denied antitrust immunity for litigation settlements including reverse payments from innovative pharmaceutical companies to generic companies. The majority said the scrutiny for anti-competitive effects of such settlements must be done under a “rule of reason” framework and rejected the FTC’s view that reverse payments are presumptively illegal.

This new guidance to lower courts will impact the two dozen or so pending antitrust cases regarding reverse-pending settlements and will change the patent-challenge calculus going forward for both generic and innovator companies. Our panel includes an antitrust advocate who supported the FTC position, an appellate litigator who supported the now-rejected industry position, and another litigator with a broad background in antitrust. They will consider:

  • How will the “rule of reason” structure evolve in these cases?
  • What are the new rules for counseling generic companies considering launching a challenge?
  • Will the number of patent challenges by generic companies decline?
  • How will plaintiffs in antitrust cases meet post- Twombley pleading standards?
  • What will be the role of the merit of the patent?
  • Is Chief Justice Roberts’ correct in his dissent that the “court’s attempt to limit its holding to the context of patent settlements under Hatch-Waxman will not long hold”?

Speakers:

  • Jeffery Cross, Freeborn & Peters LLP
  • Albert Foer, American Antitrust Institute
  • Lawrence Rosenberg, Jones Day



Myriad: The Implications of the U.S. Supreme Court Decision

Webinar Date: 06/18/2013

Tuesday, June 18, 2:00pm ET

On June 13, the U.S. Supreme Court ruled in Association for Molecular Pathology v. Myriad that cDNA molecules are eligible for patent protection, but that a sequence of DNA molecules isolated from their natural state is not. That finding of patent-ineligibility contradicts decades of USPTO practice and the long-standing expectation of the biotech industry.

Both sides declared partial victory in the case, and many uncertainties follow the long-awaited ruling. Our panel includes the litigator who represented Myriad in the Supreme Court, a respected biotech patent prosecutor, and the assistant general counsel at a large pharmaceutical company. They will consider such questions as:

How many and which existing gene patents will be challenged in post-grant proceedings at the USPTO?

  • Will holders of gene patents seek reissue?
  • What does the decision mean for protein therapeutics, and other products that are arguably “found in nature”?
  • Are claims to isolated polypeptide sequences covering human proteins that are in therapeutic use no longer valid?
  • Where do comparative diagnostic claims stand after both Myriad and Prometheus?

Speakers:

  • Gregory Castanias, Jones Day
  • Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
  • Paul Golian, Bristol-Myers Squibb Company



Consumer Surveys in Patent Litigation

Webinar Date: 06/12/2013

Consumer surveys are becoming central to patent litigation, as they have long been in trademark, false advertising and antitrust cases. Spurring the change is one of the big developments in patent law in recent years: the Federal Circuit’s increased scrutiny of infringement damage awards, requiring such awards to be tied to the patented invention’s “footprint in the marketplace”. A well-crafted consumer survey can provide powerful evidence of such value. Now the “drivers of consumer demand” are getting even more attention in patent cases. In Apple v. Samsung, now on appeal, the district court held that in order for a patent holder to get a permanent injunction, it must establish a “causal nexus” between the patented feature and the source of demand for the infringing product.

This webinar will help in-house and outside counsel to become familiar with evaluating and working with survey professionals to help minimize the risk that survey results will be successfully challenged in court. An expert will give an introduction to different types of surveying methodologies, including choice modeling and conjoint analysis. The panelists will review pitfalls that have led courts to reject specific surveys in numerous recent cases. They also will give tips on how consumer-survey evidence should be presented at trial.

Speakers:

  • Prof. Ran Kivetz, Columbia University Business School
  • Christopher Larus, Robins, Kaplan, Miller & Ciresi, LLP
  • Matthew Lynde, Cornerstone Research



The CLS Opinions: What To Do Now

Webinar Date: 05/30/2013

This month’s opinions from the en banc Federal Circuit in CLS v. Alice have been the subject of widespread discussion among IP owners and practitioners. The judges were unable to draw a line between a patent-ineligible abstract idea and a patent-eligible computer-implemented invention. Many lawyers expect the Supreme Court (or perhaps Congress) to eventually weigh in.

But, in the meantime, patent applications are being readied and are pending at the USPTO, and litigation is ongoing and being considered. Experts say there may be ways to take advantage of the status quo and to take guidance from the conflicting messages of the CLS opinions for both patent prosecution and litigation. Our panel, comprised of an in-house counsel who is expert on these issues, the chief of the USPTO’s Patent Examination Policy unit, and a leading patent litigator, will give their thoughts on such ideas as:

  • Bolstering the specification of a patent to follow the line of reasoning in RCT and Ultramercial
  • Including as much detail as possible on how the computer implements the idea, even though that’s not a guarantee the claims will be found eligible
  • Focusing on Judge Lourie’s rejection of the idea that subject matter eligibility is a threshold question that a judge must always consider first, and his emphasis that all issued patents are presumed to be valid
  • Whether the Federal Circuit’s rulings in prior software patent cases, such as Cybersource and Dealertrack, are precedential.

Speakers:

  • Michael Chernoff, Accenture
  • Andrew Hirshfeld, USPTO
  • J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

 




Design Patent Prosecution: Advanced Topics

Webinar Date: 05/23/2013

The number of applications for design patents at the USPTO is growing rapidly, with some of that increase coming from corporations and IP practitioners with relatively little experience with that form of IP protection. Design filings are expected to surge more after the U.S. joins the Hague Agreement, an international design filing treaty, later this year. Our panel, which includes a leading U.S. design patent practitioner, an in-house counsel at a corporation recognized as making effective use of design patents, and a USPTO design practice specialist, will offer useful advice on:

  • USPTO’s view of common pitfalls in design patent prosecution
  • In-house perspective on best practices for filing design patents
  • Advanced technical prosecution techniques
  • Recent design patent jurisprudence, including the U.S. Court of Appeals for the Federal Circuit’s opinion in In Re Owens and the USPTO’s first grant of an inter partes review of a design patent in Munchkin v. Luv n’ Care
  • USPTO’s controversial proposed tightening of amendment and continuation practice based on insufficient written description support

Speakers:

  • Christopher Carani, McAndrews, Held & Malloy, Ltd.
  • Katie Maksym, Nike, Inc.
  • Joel Sincavage, U.S. Patent & Trademark Office

 




Pleading Patent Infringement After Twombly and Iqbal

Webinar Date: 05/16/2013

In an order entered earlier this year, the Northern District of Georgia commented on “the current confusion over Twombly/Iqbal ” regarding the pleading requirements for patent infringement. The U.S. Court of Appeals for the Federal Circuit took a step toward clarity in its 2012 decision In re Bill of Lading. In that decision the appellate court held that, for allegations of direct infringement, the minimal information required by Form 18 suffices, but that for indirect infringement allegations the more stringent Twombly/Iqbal pleading standards govern.This guidance has yet to produce uniformity of application of Twombly/Iqbal pleading standards to indirect infringement allegations. Applying a lenient hand, the U.S. District Court of the Northern District of Georgia argued that “the Supreme Court inserted a ‘plausibility standard’ for evaluating the facts as alleged in a complaint, but did not require ‘fact pleading.’” Other district courts, including the U.S. District Court of the Northern District of Illinois, are taking a stricter approach.

Meanwhile, with Form 18 as the problem poster child, at its meeting last month the Civil Rules Advisory Committee voted to recommend publication of a proposal to abrogate Rule 84, and with it all of the official forms. Such a change would require approval by the U.S. Supreme Court. Our panel, which includes an expert on civil procedure and two patent litigators, will explore how plaintiffs and defendants should best deal with uncertainty over these issues.

Speakers:

  • Edward Cooper, University of Michigan Law School
  • David Donoghue, Holland & Knight LLP
  • Brett Govett, Fulbright & Jaworski L.L.P.



ITC’s Domestic Industry Requirement: Latest Developments

Webinar Date: 04/25/2013

The evolution of the domestic industry requirement at the International Trade Commission took a new turn in March. In In Certain Products Having Laminated Packaging, the commission, for the first time, ordered an administrative law judge to “hold an early evidentiary hearing, find facts, and issue an early decision, as to whether the complainant has satisfied the economic prong of the domestic industry requirement.” The ALJ has 100 days to issue an initial determination. A finding that the economic prong of the domestic industry requirement is not satisfied will effectively end any further litigation unless the commission orders otherwise. This procedural change is seen by some experts as significantly reducing the leverage of complainants who do not manufacture products covered by the patent in question.

This move by the ITC follows the establishment of a three-part threshold to prove a licensing-based domestic industry in Certain Multimedia Display (2011). Our panel will weigh the impact of these decisions against that of the Federal Circuit’s per curiam order on rehearing in InterDigital v. ITC this January. That order found that non-practicing entities (NPEs) may satisfy the ITC’s domestic industry requirement through substantial investment in domestic licensing activities, without any need to prove that any licensed products are actually produced domestically.

Speakers:

  • Paul Brinkman, Quinn Emanuel Urquhart & Sullivan LLP
  • Smith Brittingham IV, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Christa Zado, Cisco Systems, Inc.



Myriad: The U.S. Supreme Court Argument

Webinar Date: 04/17/2013

In Monday’s U.S. Supreme Court hearing in the Myriad case, Justice Breyer noted that, “patent law is filled with uneasy compromises”. Our webinar panel will analyze the Justices’ questioning and try to deduce what kind of ruling is likely to emerge on the patent eligibility of human genes. They will also discuss the impact on the biopharmaceutical industry and possible industry responses.Several Justices appeared concerned that ruling out patents on genes would leave companies without sufficient incentives to innovate. But that concern may not overcome their reluctance to allow patenting of what they see as a product of nature.As expected, the argument focused heavily on the extent to which natural material must be altered before it can be covered by a patent. Much of the discussion relied on analogies, including the patent eligibility of the leaves and sap of a tree discovered in the Amazon or a baseball bat crafted from a different tree.

Speakers:

  • Ned Israelsen, Knobbe Martens Olson & Bear, LLP
  • Prof. Joshua Sarnoff, DePaul University College of Law
  • Stuart Watt, Amgen Inc.



Kirtsaeng: Implications for Patent Law

Webinar Date: 04/11/2013

Can a principled distinction concerning international exhaustion be drawn between copyright and patents? That’s a question that is of interest to patent owners since the U.S. Supreme Court’s recent decision in Kirtsaeng v. John Wiley & Sons.In that decision, the court found that an authorized sale of a book manufactured abroad exhausts a company’s U.S. copyright. According to some experts, this result raises questions about U.S. Court of Appeals for the Federal Circuit precedents such as Jazz Photo that reject the notion of international exhaustion for patents. On the other hand, the decision in Kirtsaeng rests heavily on statutory wording and legislative history that have no direct bearing on the judge-created patent doctrine. Early resolution of this uncertainty was forestalled when the U.S. Supreme Court denied certiorari of Ninestar Technology v. Epson just days after it delivered its opinion in Kirtsaeng.Our panel will consider how factors governing international patent exhaustion are different from those governing copyright law and whether they will convince the U.S. Court of Appeals for the Federal Circuit to affirm Jazz Photo when it next has the opportunity. They also will discuss steps patent owners can take now to deal with a possible shift to international patent exhaustion, including:

  • licensing provisions and other contractual restrictions,
  • localizing product offerings, and
  • “tethering” patented products so they require an interaction with a central server using “unlock codes” that restrict international transfer.

Speakers:

  • Buckmaster De Wolf, General Electric Co.
  • Annette Hurst, Orrick, Herrington & Sutcliffe LLP
  • Gary Hoffman, Dickstein Shapiro LLP



INTER PARTES REVIEW: A 6-MONTH CHECK-UP

Webinar Date: 04/04/2013

The new inter partes review proceeding at the Patent Trial and Appeals Board is one of the most significant changes in patent practice occasioned by the American Invents Act. More than 150 requests have been filed in the six months since IPR became available on September 16, 2012. Yet first-hand experience of the process is still scarce compared with other long-established adversarial proceedings.
Our panelists, who all have first-hand familiarity with IPR proceedings, will analyze the PTAB decisions to date and rely on their own experience to discuss:

  • How to get an IPR petition accepted
  • Pro hac vice rulings
  • Whether the patent owner should file a preliminary response to the petition seeking an IPR
  • The contours of discovery at the PTAB
  • Protective order concerns
  • The interplay between IPR proceedings and parallel co-pending district court litigation
  • How in-house counsel can best manage the IPR process

Our panel includes two law firm attorneys and an in-house counsel at a company that is on both sides of IPR proceedings – it has been granted petitions for IPR and also is defending its own patents.

Speakers:

  • Jason Mudd, Erise IP
  • Matthew Smith, Foley & Lardner LLP
  • Jeanne Suchodolski,



Reverse Payments: U.S. Supreme Court Showdown

Webinar Date: 03/28/2013

Based on Monday’s U.S. Supreme Court argument in FTC v. Actavis, the devil may in the details of the opinion rendered. The FTC may not succeed in making all reverse settlements illegal until proven otherwise. But deals between research-based drug companies and generic companies that delay generic entry may face more scrutiny by judges than presently because of their potential impact on consumers.Some justices floated the idea of adopting a “rule of reason” test, widely-used in antitrust cases, which would require courts to weigh the pro- and anti-competitive aspects of the settlements. One point of contention among the justices: whether there needs to be a trial within a trial about the strength of the patent in question. “To say you can consider every other factor other than the strength of the patent is to leave out the elephant in the room,” stated Justice Scalia.

Our panelists, one of whom supports the FTC and the other the industry, will examine the nuances of the hearing and possible outcomes, including how companies should approach settlements now and what litigation about reverse settlements might look like in the future.

Speakers:

  • Jeffery Cross, Freeborn & Peters LLP
  • Albert Foer, American Antitrust Institute
  • Lawrence Rosenberg, Jones Day



FRAND: What is the Magic Number?

Webinar Date: 03/14/2013

The FRAND acronym has a meaning that is notoriously vague. Standard setting organizations (SSOs) use it as a way to require that patents included in a standard be licensed by the patent owner for “fair, reasonable, and non-discriminatory” terms, but without naming numbers or even how FRAND should be determined.

However, thanks to recent court decisions and actions by government agencies, district courts and arbitrators are likely to be asked to make specific FRAND determinations with increasing frequency. For instance, the recent Google-FTC Consent Order says that Google can seek an injunction against an infringer only when the potential licensee refuses to pay FRAND rate as determined by a court or neutral third party or when the licensee does not agree to arbitration or to seek a FRAND determination from a U.S. court. Though not binding on other companies, the order is likely to be influential in guiding behavior of both companies and judges.

Our panel – consisting of an economist, an official from an SSO, and a patent/antitrust litigator – will discuss the likely scope and direction of these FRAND-determination proceedings. Among the topics:

The strength and weaknesses of ex ante licensing agreements (i.e., made before the patent became a part of the standard) as a guidepost to ex post royalties –when such licenses exist.
The use of meeting notes and other documents from the SSO to determine whether there were good alternatives to the patent in question at the time it was adopted as part of a standard.
How the argument about the correct FRAND will be similar and different from current patent damages cases.

Speakers:

  • Ray Alderman, VITA Standards Organization
  • Jay Jurata, Orrick, Herrington & Sutcliffe, LLP
  • Anne Layne-Farrar, Charles River Associates



Standard Essential Patents: Implications of the FTC-Google Consent Decree

Webinar Date: 03/05/2013

In January there were two important developments at the intersection of patent litigation and standard essential patents (SEPs). First, the Federal Trade Commission released the details of a consent decree with Google regarding the use of injunctions against infringers of SEPs. Then a few days later, the Department of Justice and the USPTO issued an unusual joint policy statement on the same topic. Patent owners and companies whose products may include inventions covered by SEPs are of course interested in what these statements mean for future regulatory action and litigation.Our panel includes a law professor who specializes in issues surrounding standard setting organizations, an experienced patent litigator and the FTC lawyer who managed the investigation of Google. They will discuss:

  • What is the legal basis for the FTC’s jurisdiction in this matter?
  • What does the consent decree mean for other companies?
  • Do the principles articulated in the decree apply equally to U.S. district courts and the Federal Circuit, the ITC, and foreign courts?
  • What will be the role of arbitrators or courts in resolving conflicts over SEPs?
  • Will resolution reached in this consent decree result in more or less injunctions regarding SEPs?

Speakers:

Jorge Contreras, American University Washington College of Law
David Long, Dow Lohnes
Nicholas Widnell, Federal Trade Commission




Bowman v. Monsanto: The U.S. Supreme Court Hearing

Webinar Date: 02/22/2013

On Tuesday February 19, the Justices of the U.S. Supreme Court heard oral argument in Bowman v. Monsanto, the important case about the first-sale doctrine and self-replicating technologies. The litigation dates back to 2007, when Monsanto, inventor of a highly-successful pesticide-resistant soybean plant, sued Indiana farmer Vernon Bowman for patent infringement. A customer of Monsanto, Bowman had planted commodity seeds purchased from a grain elevator, most of which wound up being Monsanto’s variety, and then saved seeds from that generation for replanting. Bowman argued that Monsanto’s patent rights to the seeds he purchased from the grain elevator and their progeny were exhausted.

The Federal Circuit disagreed, and the Supreme Court is considering “Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?”

The Justices seemed to heavily favor Monsanto’s arguments. They questioned whether the facts actually posed a question of patent exhaustion at all because that doctrine “never permits you to make another item from that item you bought,” in the words of Justice Sotomayor. Chief Justice Roberts set the tenor with his first question: “Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want?

Our panel will discuss the details of the probable outcome of the case and other questions including whether the court could eviscerate the first-sale doctrine for biological inventions and what other consequences might follow. Panelists include a leading biotech patent lawyer; a law professor specializing in IP who co-authored a brief in favor of Bowman; and a top U.S. Supreme Court trial advocate who authored briefs in Quanta and Bowman.

Speakers:

  • Prof. Shubha GhoshUniversity of Wisconsin Law School
  • Kevin NoonanMcDonnell Boehnen Hulbert & Berghoff LLP
  • Andrew PincusMayer Brown LLP



Multidistrict Litigation: What IP Lawyers Need to Know

Webinar Date: 02/14/2013

The non-joinder provisions of the AIA that went into effect in 2011 mean that an additional venue has been added to patent litigators’ list: the Judicial Panel on Multidistrict Litigation. The seven sitting federal judges on the JPML determine whether similar civil actions pending in different federal districts should be centralized and transferred to one judge for coordinated pretrial proceedings. Patent cases have traditionally been just a minor category for the panel, but that is changing rapidly. The JPML reviewed 12 requests to consolidate patent litigation in 2012 and granted seven, with one pending. By comparison, the panel consolidated two patent cases in 2010.

Perhaps as expected, patent plaintiffs seek centralization more often than those sued for infringement. Of the 12 petitions for consolidation in patent cases last year, plaintiffs initiated eight. But, as these numbers show, sometimes it’s defendants who want consolidation.

Our panel includes an attorney who closely follows the decisions of the JPML; the attorney who recently successfully represented several high-tech defendants before the JPML in the Droplets litigation, arguing against consolidation; and a former judge, now a patent litigator, who while seated on the U.S. District Court in Delaware oversaw several cases transferred to him by the JPML. They will consider the various criteria the Panel uses to decide whether to centralize a case and how attorneys for both plaintiffs and defendants should proceed if a case is consolidated.

Speakers:

  • Jennifer Haltom Doan, Haltom & Doan
  • Vincent Poppiti, Fox, Rothschild LLP
  • Alan Rothman, Kaye Scholer, LLP



Design Patent Protection: An International Overview Including the Hague Agreement

Webinar Date: 02/06/2013

Interest in design patents is at an all-time high, due to their high-profile role in global litigation regarding smart phones and tablets. U.S. companies who face the difficult task of protecting their inventions from infringement overseas are now more likely to want to consider these patents as a cost-effective tool, despite their limitations.

Our panel will focus on the filing and uses of design patents outside the U.S., including the Hague Agreement Concerning International Registration of Industrial Designs. In December, the U.S. finally signed into law its implementation of that Agreement, which creates procedures at the USPTO to receive and prosecute international design applications. Late this year, U.S. applicants will be able to file a single design application to target over 40 nations and the European Union. Benefits may even accrue to patent owners in the U.S. market. While the U.S. historically has not published design patent applications, the Hague System publishes applications within six months after WIPO completes its review of formal requirements. Design patent owners whose applications are published by WIPO will have the ability to collect certain damages for pre-issuance infringement in the U.S.

Our panelists will discuss the current state of design patent protection in different countries, and analyze the benefits and shortcomings of design patent protection available under the Hague System, including how it is similar and different from the Patent Cooperation Treaty (PCT). They will also consider the important open questions regarding implementation by the USPTO.

Speakers:

  • David Gerk, USPTO
  • Robert Katz, Banner & Witcoff
  • Damian Porcari, Ford Global Technologies LLC



Admissibility of Settlements & Negotiations in Patent Litigation: Update & Strategy

Webinar Date: 01/31/2013

A California magistrate judge’s recent ruling that Apple must reveal the terms of its new patent settlement with HTC in its ongoing litigation with Samsung brings attention once again to the issue of privilege in licensing and settlement agreements and negotiations.

In April the Federal Circuit, in In re MSTG, resolved a question of first impression, holding that “settlement negotiations related to reasonable royalties and damages calculations are not protected by a settlement negotiation privilege.” This followed the court’s 2010 finding in ResQNet that the “most reliable” comparable licenses may sometimes arise out of litigation. Our panelists will discuss the continuing influence of these two decisions on:

  • How litigants conduct licensing and settlement discussions;
  • Whether they choose to hold discussions in the context of mediation where privilege may hold;
  • What limits can appropriately be placed on discovery of settlement negotiations;
  • The extent to which evidence of settlement negotiations would be admissible under Rule 408;
  • The use of experts in litigation, because disclosure of information on settlement negotiations to experts is now more likely to open up discovery; and
  • Risks that litigators may run due to the discoverability of negotiations.

Our panel includes the litigator who represented MSTG against AT&T, another patent litigator also highly experienced in representing plaintiffs and defendants, and an in-house counsel supervising litigation at a multinational technology company.

Speakers:

  • Richard Birnholz, Irell & Manella LLP
  • Christopher Lee, Niro, Haller, & Niro
  • Frank Nuzzi, Siemens Corp.



Patent Term Adjustment: An Update

Webinar Date: 01/24/2013

Patent owners who have the potential to earn significant returns from the final years of their patent term have a big incentive to master all the many recent changes in patent term adjustment due to legislation, regulations, and court decisions. Our panel will consider:

  • what steps patents owners should take in light of recent court decisions such as Exelixis v. Kappos;
  • recent USPTO rule changes including revisions in the rules of practice regarding the period of appellate review; and
  • the impact of the technical amendments to the AIA that became law this month.

Our panel includes an in-house patent attorney at a major pharmaceutical company, the winning litigator in an earlier successful suit against the USPTO regarding PTA, and a patent prosecutor in the chemical and life sciences.

Speakers:

  • Patricia Carson, Kirkland & Ellis, LLP
  • Adrian Looney, Pfizer, Inc.
  • Eli Loots, Knobbe Martens Olson & Bear, LLP



"Abstract Ideas" and Computer-Implemented Inventions: The Upcoming En Banc Federal Circuit Hearing in CLS Bank v. Alice Corp.

Webinar Date: 12/20/2012

The Federal Circuit ruled in July that Alice Corp.’s patent claims for a computerized trading platform asserted against CLS Bank were not for abstract ideas, finding that they covered a practical application of a business concept using computer-implemented steps. The court ruled that a patent passes Section 101 muster unless it is “manifestly evident” that it covers only an abstract idea. But other recent Federal Circuit decisions, such as Cybersource and Bankcorp, have held that the mere addition of computers is insufficient to make an abstract economic concept patentable.

The Federal Circuit has moved to reconsider CLS en banc, with the hearing scheduled for February. Our panel will briefly lay out the relevant U.S. Supreme Court precedent in Bilski and Prometheus and the recent Federal Circuit decisions, then concentrate on laying out the options open to the en banc court. Our panel includes an in-house counsel, who is the head of patents at a global software company that owns many patents but also sometimes finds itself a defendant, who will sketch out a middle-of-the-road solution. The two litigators on the panel have recently argued relevant cases before the Federal Circuit. One will take the plaintiff’s view and lay out possible solutions that offer a liberal definition of patent-eligibility. The other will rely more heavily on Supreme Court guidance and offer a narrow view.

Speakers:

  • Bart Eppenauer, Microsoft Corp.
  • Lawrence Hadley, McKool Smith
  • Matthew Lowrie, Foley & Lardner LLP



Who Gets the Last Word? Litigation and Post-grant Proceeding Strategy after In Re Baxter

Webinar Date: 12/06/2012

The question of Federal Circuit deference to the USPTO was highlighted recently in the October en banc Federal Circuit order regarding In re Baxter. A panel of the Federal Circuit had previously upheld a district court decision that the claims for the invention, a hemodialysis machine, were not invalid as obvious. But a subsequent ex parte reexamination by the USPTO’s Board of Patent Appeals and Interferences found the claims invalid. In its recent order, the en banc majority denied a petition for an en banc rehearing of an appeal from the reexamination.

The Federal Circuit panel had noted that USPTO reexamination proceedings and court proceedings “take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.” That opinion acknowledged that its decision could be viewed as “erroneously elevating a decision by the PTO over a decision by a federal district court.” However, it addressed this concern by stating that “the PTO ideally should not arrive at a different conclusion” where the same facts and arguments are presented in both venues. Judge Newman dissented, saying that the earlier Federal Circuit opinion holding the patent valid should have been controlling.

Our panel will consider strategy in parallel post-grant proceedings and litigation after In re Baxter. For instance, defendants may want to reconsider the timing of requests for post-grant proceedings, especially considering the new short timetable established by the AIA. New battles may be fought testing the limits of “sameness” of prior art. Our experts will also consider the recent Federal Circuit panel decision In re Flo Healthcare in which both Judges Plager and Newman wrote separately about the need to clarify whether PTO “broadest reasonable interpretation” claim constructions are reviewed under a deferential “reasonableness” standard or a no-deference “de novo” standard.

Speakers:

  • Kenneth Adamo, Kirkland & Ellis, LLP
  • Sydney Johnson, U.S. Patent & Trademark Office
  • Jon Wright, Sterne, Kessler, Goldstein & Fox, PLLC



Trans-border Infringement: Latest Developments and Outlook

Webinar Date: 11/14/2012

The recent lowering of the standard for inducing infringement in Akamai/McKesson, which held that inducing infringement can be found even if a single entity is not liable for direct infringement, has many patent experts wondering “what will stick and what won’t stick” when potentially infringing players in the inducement web are located in different countries.

The Federal Circuit has taken an expansive view of the reach of U.S. law in a series of decisions, including NTP v. RIM, Centillion, and TransOcean. This expansion, however, has met resistance from the U.S. Supreme Court. In 2007 that Court reversed one of the Federal Circuit’s most significant decisions involving extraterritoriality, AT&T v. Microsoft. Last month the Court heard argument in Kirtsaeng v. Wiley, a case involving international exhaustion of copyright, the decision in which may have an impact on patent law.

Our panel includes two top patent litigators (one recently returned from a stint in Asia and the other a former deputy general counsel of eBay overseeing global IP and litigation), joined by a law school professor who focuses on trans-border infringement. They will discuss the evolution of the case law, the attitudes revealed in the Supreme Court hearing in Kirtsaeng, and their ideas on how the new standard for inducing infringement will play out when some players are located overseas.

Speakers:

  • Steven Baughman, Ropes & Gray
  • Prof. Timothy Holbrook, Emory University
  • Mary Huser, Bingham



Bifurcation in Patent Litigation

Webinar Date: 11/08/2012

District courts may order the bifurcation of liability, willfulness and damages issues in patent cases when it is “in furtherance of convenience or to avoid prejudice, or when separate trials will be conducive to expedition and economy,” according to the Rules of Federal Procedure. Lately, in part because of the increasing complexity and cost of damages determinations, ordering such separate trials has been gaining favor with some district court judges. For instance, the standing Scheduling Order of District Judge Robinson of the Delaware District Court provides that absent “good cause,” damages and willfulness shall be bifurcated for both discovery and trial. Other judges order simultaneous discovery on all issues, but then hold a trial on infringement issues first. Or if inequitable conduct is charged, a judge may decide to have that issue decided first by the court.

The issue of bifurcation is getting new scrutiny from the Federal Circuit. In August, the appellate court, in a sua sponte order prompted by the case Bosch v. Pylon, indicated that it will decide en banc if a patent infringement liability judgment is “final” for purposes of appeal when (1) the damages trial has not yet occurred, or (2) the district court has not yet decided the question of willful infringement. The Federal Circuit has traditionally accepted cases that fall within the first category, but it hasn’t ever ruled on the second issue.

Our panel includes a Judge recently retired from the Federal Circuit and two patent litigators. They will compare how litigation scenarios play out in the presence or absence of bifurcation and will discuss how they see the trend playing out in the future.

Speakers:

  • Hon. Arthur Gajarsa, retired U.S. Court of Appeals for the Federal Circuit
  • Rachel Krevans, Morrison & Foerster, LLP
  • Robert Taylor, Arnold & Porter, LLP



Cross Winds in the Safe Harbor: Classen v. Biogen and Momenta v. Amphastar

Webinar Date: 09/27/2012

Two recent Federal Circuit opinions mark out highly divergent views on the scope of the § 271(e)(1) safe harbor of the Hatch Waxman Act. Both cases involve drug companies who used another’s patented invention while developing information to submit to the Food & Drug Administration about an already approved product. In last year’s Classen, a case involving immunization methods, the Federal Circuit panel reversed a district court decision and held that the defendants’ post-approval activities were not protected by the safe harbor. But in this summer’s Momenta, which was litigation between two generic manufacturers, the appellate panel ruled that post-approval activities could indeed be within the safe harbor. The panel vacated the lower court’s preliminary injunction, finding that Amphastar’s ongoing use of Momenta’s patented manufacturing method was noninfringing.

The U.S. Supreme Court has already twice addressed the scope of the safe harbor provision of the Hatch-Waxman Act, in Eli Lilly v. Medtronic (1990) and Merck v. Integra (2005). Recently it requested the solicitor general’s input on a petition for a writ of certiorari on Classen. Our panel, which includes two litigators and the assistant general counsel of a large pharmaceutical company, will discuss the current state of the case law and its future.

Speakers:

  • Steven Lee, Kenyon & Kenyon LLP
  • John (Jack) Griem, Jr., Loeb & Loeb, LLP
  • Paul Golian, Bristol-Myers Squibb Company



Covenants Not to Sue: The Latest Developments

Webinar Date: 08/09/2012

“Covenants not to sue” have become an increasingly common feature in the resolution of patent disputes. A recent ruling by the Second Circuit Court of Appeals is likely to have important consequences for the drafting of such no-challenge agreements and may also raise questions about techniques that some licensors have used to rein in challenges of licensed patents in the wake of the Supreme Court’s 2007 opinion in MedImmune.

In its July 10 opinion in Rates Technology v. Speakeasy, the Second Circuit determined that enforcement of no-challenge clauses should take place only after the parties had engaged in formal litigation and, thus, discovery as to the patents-in-suit, and not merely in a settlement. It embraced an expansive view of the 1969 Supreme Court decision Lear v. Adkins in which the Court said that if licensees “are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification.”

After the Second Circuit decision, some no-challenge clauses in past settlement agreements may be void or unenforceable. The decision also leaves open questions for licensing agreements moving forward, such as:

  • In what circumstances are no-challenge clauses, after some litigation between parties has occurred, likely to be upheld by future courts?
  • What level of discovery is necessary to justify enforcement of a no-challenge clause?

Nothing from the Second Circuit’s ruling seems to prevent parties from entering into other kinds of prelitigation licensing agreements designed to thwart future litigation, for instance by providing incentives to a licensee not to challenge a licensor-patent’s validity.

Speakers:

  • Edward A. Cavazos, Bracewell & Giuliani LLP
  • Phyllis T. Turner-Brim, Intellectual Ventures
  • Mark Weinstein, Cooley LLP



Means-plus-Function Claims: Strategies for Patent Owners and Alleged Infringers

Webinar Date: 07/11/2012

Means-plus-function claims have long had legal problems, but three recent Federal Circuit Opinions, Noah Systems v. Intuit, Ergo Licensing v. CareFusion, and Mettler-Toledo v. B-Tek Scales raise more questions about how the thousands of software and other patents with means-plus-function claims can be successfully enforced. Section 112, paragraph 6 of the Patent Act specifically permits expressing a claim element as a means for performing a function, and the claim is construed to cover any corresponding structures disclosed in the specification. If the applicant fails to adequately disclose those corresponding structures, the claims will be unpatentable as indefinite under Patent Act section 112, paragraph 2. This webinar will analyze the three cases, and give the latest thinking on the benefits and risks of means-plus-function claims, both in patent prosecution and litigation.

Our panel will focus on grey areas where ongoing or future litigation outcome is likely to vary according to the judge or panel. For instance, disputes may increasingly arise over whether certain terms in a patent are indeed means-plus-function claims, with the result having an important impact on the ultimate issue of infringement as well as validity. Defendants are likely to argue in many cases that claims with language such as “instructions for”, “device for’’ and “module for” are means-plus-function claims. The panel will also give advice for licensing negotiations, with arguments for the licensor on why the licensing candidate needs to take a license to a patent including a means-plus-function claim and arguments for the target on why the scope of “equivalents” of a means-plus-function element means it doesn’t infringe.

Our panel includes two active patent litigators – one of which represented the successful defendant in one of the Federal Circuit cases – and an in-house counsel at a major technology company.

Speakers:

  • Cortney Alexander, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Jerome Drabiak, Xerox Corp.
  • Michael Sacksteder, Fenwick & West LLP



Obviousness: Hindsight, Analogous Art, and Secondary Evidence

Webinar Date: 06/28/2012

It has been five years since the U.S. Supreme Court decision in KSR, and both the U.S. Court of Appeals for the Federal Circuit and the USPTO continue to refine how they approach issues of obviousness. Our panel will analyze recent Federal Circuit decisions including In Re Cyclobenzaprine Hydrochloride and Mintz v. Dietz & Watson, as well as decisions from the USPTO’s Board of Patent Appeals and Interferences such as Ex Parte Nakhamkin.

Panelists will give practice tips for patent prosecution and litigation from both the plaintiff’s and defendant’s perspectives. Our panel includes a top patent litigator, a successful appellate lawyer, and in-house patent counsel for a global technology company.

Speakers:

  • Yar R. Chaikovsky, McDermott Will & Emery LLP
  • Meredith Martin Addy, Steptoe & Johnson LLP
  • Gary Ganzi, Siemens



Standards and FRAND: Hot Issues in Antitrust and Patents

Webinar Date: 06/21/2012

Unanswered questions about the rights and responsibilities of owners of standard-essential patents have long simmered, but they were of concern mostly just to experts. In the past year, acquirers have bought several huge patent portfolios that include standard-essential patents and heated litigation regarding standard-essential patents in telecommunications has boiled over in many venues globally. As a result, courts and regulators feel new urgency to bring some clarity to the conflicting pull of antitrust law and IP law in this area.

Our panel includes a U.S. patent litigator with experience in antitrust matters, a European patent attorney who is closely involved with European and German government competition policy, and the former General Counsel of the American National Standards Institute (ANSI) who currently works in standards for Microsoft. They will discuss the latest events and issues, including:
Do owners of standard-essential patents have the right to win an injunction against infringers?

  • Are there other constraints in their rights that owners of standard-essential patents must accept?
  • Is a royalty FRAND (fair, reasonable, non-discriminatory) if it is uses the final end product as the rate base?
  • Is it FRAND to seek access to non-essential patents in exchange for access to standard-essential ones?
  • Is an earlier FRAND commitment binding on the purchaser of a patent?

The panelists will discuss recent attempts to have standard-setting organizations address more of these questions themselves, and will reference current litigation and government actions, including the U.S. Federal Trade Commission’s recent expression of concern to the ITC. The FTC wants the ITC to refrain from imposing exclusion orders on products found to infringe patents that are necessary to comply with industry standards.

Speakers:

  • Heinz Goddar, Boehmert & Boehmert
  • Amy Marasco, Microsoft
  • Robert Taylor, Arnold & Porter



Are Ecommerce-Related Inventions Patent Eligible? Dealing with Uncertainty after the Remand of WildTangent

Webinar Date: 06/14/2012

The U.S. Supreme Court’s remand of WildTangent v. Ultramercial back to the Federal Circuit casts a big question over the patent eligibility of many existing software and ecommerce-related patents. The Federal Circuit had found the invention in this case, which claims a method for giving consumers access to copyrighted content over the Internet in exchange for viewing an advertisement, as patent eligible. But now the Federal Circuit must give these facts and issues a second look in light of the Supreme Court’s recent patent-eligibility-narrowing decision in Prometheus.

As a result, patent practitioners in the ecommerce and related fields need to consider how they should best move forward and strategize with respect to Section 101 issues during a new period of uncertainty. Our expert panelists will consider:

  • How the USPTO is presently interpreting recent case law in its decisions on whether to grant patents
  • How ecommerce-related patents can best be written to fare well if they are enforced years hence
  • The risks of trying to enforce such patents today.

Other recent Federal Circuit cases will be considered, including CyberSource, where claims to a computer readable medium containing program instructions were found to be patent ineligible. The panelists will also give their ideas on at what point more stability will return to jurisprudence in this area, and what the new resting point will be. Our panel includes a litigator with experience in appellate cases in this field, a veteran patent prosecutor, and an in-house patent counsel at a major information technology company.

Speakers:

  • David Feigenbaum, Fish & Richardson, PC
  • Michael Kiklis, Oblon Spivak McClelland Maier & Neustadt, LLP
  • R. Kevin Perkins, EMC Corporation



Design Patent Litigation

Webinar Date: 06/07/2012

Design patents have come to the fore in the smart phone wars. For instance, Apple could win a preliminary injunction in the U.S. against Samsung’s Galaxy tablet on the basis of infringement of one of Apple’s design patents covering its iPad. On May 14, the Federal Circuit partially vacated an order denying Apple a preliminary injunction and remanding the matter for further proceedings.

This webinar will examine hot topics in design patent litigation, and how they are playing out in recent decisions. Among the issues to be discussed:

  • What is the current state of law on the issues of design patent obviousness and anticipation?
  • Will the Apple v. Samsung court’s strict reading of the In re Rosen “basically the same” requirement make it more difficult to prove obviousness in future design patent cases?
  • How have courts been addressing so-called “functional features” in view of the Federal Circuit’s decision in Richardson v. Stanley Works?
  • What are the implications of the Federal Circuit accepting Apple’s “design dilution” theory of irreparable harm?
  • Will the court’s requirement of a “nexus” between a patented feature and market demand become a factor in injunction analysis for both design patents and utility patents?

Our panel includes design-patent specialists at two law firms and an in-house IP enforcement counsel.

Speakers:

  • Daniel Brean, The Webb Law Firm
  • Chris Carani, McAndrews, Held & Malloy, Ltd.
  • Lucy Nichols, Nokia Inc.



Proving Damages in Patent Litigation: How to Clear the Rising Hurdle

Webinar Date: 05/31/2012

In a series of decisions over the past few years, the Federal Circuit has insisted on closer scrutiny of the damages assessed against patent infringers and on tying those damages more closely to the contribution of the patent at issue. Now that the Federal Circuit has taken a pause on this issue, the ball is in the court of U.S. district court judges, as they try to apply the principles articulated by recent appellate decisions to the varied set of facts presented to them by each case.

Our panelists will analyze recent lower court decisions and discuss:

  • How can plaintiffs still make a case for damages to be assessed against the entire market value of a product?
  • What role can consumer surveys play in strengthening a claim for damages?
  • Have any new rules-of-thumb emerged to replace the 25 percent rule as a baseline for “reasonable royalties”?
  • How are courts deciding which prior patent licenses can be relied as a good point of comparison for the patent at issue?

Our panel includes a patent litigator, an in-house counsel at a technology company who is experienced in both litigation and licensing, and a damages expert.

Speakers:

  • Bruce Burton, Stout Risius Ross
  • Joseph Kirincich, Avaya
  • Scott Miller, Connolly Bove Lodge & Hutz LLP



Latest Developments in Multi-Defendant Patent Litigation

Webinar Date: 05/23/2012

In recent years, patent plaintiffs have accused large numbers of defendants of infringement in a single suit. Many co-defendants had little opportunity to present individualized defenses on infringement, willfulness, and damages. Concern about such joinder led Congress to severely limit it for cases filed after the September 2011 enactment of the America Invents Act.

Two decisions earlier this month shed light on the options now open to plaintiffs and defendants:

In In re Bear Creek Technologies, the Judicial Panel on Multidistrict Litigation held that plaintiffs enforcing their patent rights across multiple jurisdictions may still consider MDL as a possible option to keep infringing defendants before one court up until trial, even after the enactment of the AIA.
In In re EMC Corp., the Federal Circuit clarified the standard for joinder for cases that were already pending when the AIA became law. The appellate court rejected the liberal standard applied by the Eastern District of Texas, where defendants could be sued jointly as long as their infringing products or services “were not dramatically different,” and adopted a standard much closer to that of the AIA. However, the court also took care to point out that district courts have “considerable discretion” not only in how they apply the relevant factors, but also in their ability “to consolidate cases for discovery and for trial under Rule 42.’”

Our panel, which consists of two patent litigators and an in-house counsel at a large tech company, will consider the impact of these two decisions and discuss still-open questions such as the interplay of separately-filed cases, transfer and venue jurisprudence.

Speakers:

  • Douglas Cawley, McKool Smith
  • Craig Leavell, Kirkland & Ellis, LLP
  • Christa Zado, Cisco Systems, Inc.



Recent Decisions in Hatch-Waxman Litigation

Webinar Date: 05/03/2012

Three recent appellate decisions have changed the patent litigation dynamic between branded pharmaceutical companies and their generic competitors, opening new ways for generic companies to get to market. The recent U.S. Supreme Court decision in Caraco v. Novo Nordisk expands the scope of the so-called “counterclaim provision” of the Hatch-Waxman Act. This provision lets generic companies challenge the accuracy of patent information that branded drug companies supply to the FDA; some experts say the clarification will motivate generic drug companies to consider new strategies concerning carve-outs of patented uses. In AstraZeneca v. Apotex, the Federal Circuit held that AstraZeneca’s complaint should be dismissed because the generic’s ANDAs included Section viii statements that carved out the methods claimed in the patents at issue. And in Bayer v. Lupin, the Federal Circuit held that for an ANDA filing to infringe a method-of-use claim, the FDA-approved label must indicate that the FDA has determined that the drug is safe and effective for the claimed method.

Our panel will discuss these opinions and how they will influence the future of patent prosecution and litigation. Our panel includes the litigator who represented Caraco at the Supreme Court, an in-house IP counsel at a large pharmaceutical company with experience in Hatch-Waxman litigation, and an FDA regulatory expert.

Speakers:

  • James Hurst, Winston & Strawn LLP
  • Andrea Kamage, Johnson & Johnson
  • Christina Markus, King & Spalding



Intervening Rights in Patent Litigation after the Federal Circuit's Decisions in Marine Polymer and Aspex Eyewear

Webinar Date: 04/18/2012

The doctrine of intervening rights protects third parties from infringement claims based on changes to the scope of a patent made after its grant through re-issue and re-examination at the USPTO.

In March, a divided en banc Federal Circuit issued its opinion in Marine Polymer v. Hemcon, reversing a controversial panel decision last September regarding intervening rights. The en banc court ruled that intervening rights only can arise if there has been a textual change to the language of the claims in a post grant proceeding – i.e., argument before the examiner regarding the meaning of the words in the claims doesn’t count.

Our panel includes a top patent litigator, a specialist in USPTO post-grant practice, and an in-house IP litigation counsel at a technology company that is both a plaintiff and a defendant in patent litigation.  They will consider the impact of this latest development in intervening rights on strategy in patent litigation, reexamination and patent prosecution. In addition, they will review another recent Federal Circuit decision, Aspex v. Marchon, which also dealt with claims in reexamination in the context of litigation. The panelists will give their opinions on how Federal Circuit panels will proceed going forward, given that the views on intervening rights in the majority opinion in Marine Polymer is dictum.

Speakers:

  • Andrei Iancu, Irell & Manella LLP
  • Scott McKeown, Oblon, Spivak, McClelland, Maier & Neustadt, LLP
  • John Scott, QUALCOMM, Inc



Personalized Medicine after Prometheus: Exploring the Limits of Patent-Eligibility

Webinar Date: 04/05/2012

The buzz continues in the biotech and pharmaceutical industries after the U.S. Supreme Court’s recent decision in Prometheus v. Mayo and its subsequent remand of the Myriad gene- patenting case back to the Federal Circuit. The justices declared all of Prometheus’ claims for diagnostic methods patent-ineligible, unanimously reversing the Federal Circuit. Post-Prometheus, discovering and claiming indicative correlations is an impermissible attempt to monopolize a natural phenomenon, or a law of nature, unless the claim contains other features that add something beyond a statement of the correlation.

This webinar will examine ways forward. Some experts say that even if granted claims look uncomfortably similar to Prometheus’, it may be possible to strengthen or uphold the validity of the patent through the reissue process at the USPTO. Pending applications might be amended to more directly focus on specific applications of any underlying laws of nature. Possible “fixes” include using claims that recite “active” steps that will be harder to pigeonhole as “laws of nature” and using claims reciting novel “determining” steps (where what is administered is novel, or the relationship between what is detected and a particular disease is novel, or the method by which a biological molecule is administered or detected is novel).

Our panel includes the life sciences litigator who represented Mayo throughout its case, a well-known biotech patent prosecutor, and a high-ranking IP counsel at a large pharmaceutical company.

Speakers:

  • Kevin E. Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
  • Jonathan E. Singer, Fish & Richardson P.C.
  • Bryan Zielinski, Pfizer, Inc.



Making the Most of e-Discovery in the Eastern District of Texas, and Elsewhere

Webinar Date: 03/27/2012

Significant change is percolating through federal courts regarding e-discovery in patent litigation in response to widespread concerns about inefficiency and high costs. Last September, the Federal Circuit released a model order recommending significant new limits on e- discovery in patent cases. In November a judge in the Northern District of California imposed new e-discovery limitations in a case involving optical inspection of computer chips. In December the U.S. District of Delaware updated its Default Standard for e-discovery. More recently, this month, the judges of the Eastern District of Texas posted their own model e-discovery order for patent cases that takes the Federal Circuit’s order as a guide but incorporates significant changes.

Our panel will give an update on recent developments, and then consider in detail how both plaintiffs and defendants should change their pre-trial strategies to take best advantage of the new rules. For instance, the trend is to limit access to emails, so picking the right email authors becomes key. They also will consider some of the more controversial proposals, such as the blanket exemption of disclosures of privileged electronic data from the usual rules concerning waiver of privilege.

Speakers:

  • Steven Moore, Kilpatrick Townsend & Stockton LLP
  • Jonathan Redgrave, Redgrave LLP, and Chair Emeritus of the Sedona Conference Working Group on Electronic Document Retention and Production
  • Edward Reines, Weil, Gotshal & Manges LLP, and Chair of the Federal Circuit’s Advisory Counsel



The New Inter Partes Proceedings at the USPTO

Webinar Date: 02/21/2012

This month the USPTO released its proposed rules for the new patent trial proceedings that will be conducted by the Patent Trial and Appeal Board in accordance with the AIA. Offering novel ways to challenge a patent outside of U.S. District court litigation, these proceedings are expected to change patent practice dramatically.

Our two webinars will focus on the two new proceedings that experts anticipate will be the most widely used: Post-Grant Review and Inter Partes Review. The first webinar will deal with the preliminary phase of the proceedings that ends when the USPTO either grants or denies review. The second webinar will examine the rules for trial at the PTAB, a newly-minted hybrid of district court and USPTO practice.

Judge Michael Tierney of the USPTO’s Board of Patent Appeals and Interferences (soon to be PTAB) is a panelist for both webinars. The other panelists are law firm attorneys who are expert in current reexamination practice and patent litigation. One law firm attorney will consider strategy from the vantage of the patent challenger and the other from the viewpoint of the patent holder.

The Preliminary Phase: Filing a Petition, the Preliminary Response, and Institution of Review

Speakers:

Hon. Michael Tierney, U.S. Patent & Trademark Office
Jack Barufka, Pillsbury Winthrop Shaw Pittman, LLP
W. Karl Renner, Fish & Richardson, PC

The Trial Phase: Discovery, Testimony, Challenging Testimony, Use of Experts, Estoppel

Speakers:

Hon. Michael Tierney, U.S. Patent & Trademark Office
Scott Daniels, Westerman, Hattori, Daniels & Adrian, LLP
Anthony Gutowski, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP




Successfully Navigating Claim Construction in Life Sciences Litigation

Webinar Date: 01/27/2012

Claim construction can be the single most important event in the course of a patent litigation. Yet, as many litigators know, the judges on the U.S. Court of Appeals for Federal Circuit are divided about how to do it properly. Judge Moore, in her dissent this fall to the Federal Circuit’s decision not to grant a petition for en banc rehearing in Retractable Technologies v. Becton, Dickinson, noted that “claim construction appeals are ‘panel dependent’ which leads to frustrating and unpredictable results for both the litigants and the trial court.”

This webinar will concentrate on issues in claim construction in the life sciences, focusing on disputes involving pharmaceutical inventions such as:
• compounds;
• formulations;
• polymorphs and enantiomers; and
• methods of treatment.

Our panel includes the former Chief Judge of the Federal Circuit and two experienced pharmaceutical patent litigators.  The panelists will consider real-world situations, for instance, where a narrow claim construction might result in a finding of no infringement, but lessens the risk of patent invalidity, and also the opposite situation, where a broad construction casts a wide net for infringers, but increases the risk of encompassing the prior art.  They will also consider when claim construction may be unnecessary altogether, and whether the Federal Circuit should revisit its Cybor Corp. decision and begin giving deference to a district court’s claim construction. Practice tips will touch on all the tools used in building a claim construction case, including intrinsic and extrinsic evidence.

Speakers:

Vincent Capuano, Duane Morris, LLP
Hon. Paul Michel
Bruce Wexler, Paul Hastings LLP




Supreme Court Hearing in Mayo v. Prometheus

Webinar Date: 12/15/2011

In its most important debate of IP issues this session, on December 7 the U.S. Supreme Court held oral arguments in Prometheus v. Mayo, a case involving Section 101 and the patent-eligibility of personalized medicine claims. Our panel, which includes a biotech in-house counsel, a top patent prosecutor and appellate specialist, and a law professor, will parse the Justices’ questioning, outline possible outcomes, and give their views on implications of such outcomes. They will also offer practical tips on how to proceed with patent prosecution and other matters in the present period of uncertainty.

The case was remanded to the Federal Circuit after last year’s Bilski decision, which found that the Federal Circuit’s “machine-or transformation” test for patent eligibility, while useful, was not the sole test. On remand, the Federal Circuit again upheld Prometheus’ patents for a process of determining the proper dosage of a drug, finding that they involved a transformation in the body of the patient. The Supreme Court granted certiorari again in June.

The parties cast the debate in broad terms. The Mayo Clinic portrayed the patent as an attempt to monopolize a law of nature, while Prometheus claimed that the U.S. biotech industry would lose its global leadership if research in personalized medicine could not be patented. Stephen Shapiro of Mayer Brown argued on behalf of Mayo, and Richard Bress of Latham & Watkins appeared on behalf of Prometheus. Also appearing was U.S. Solicitor General Donald Verrilli, Jr., whose brief put a foot in both camps, defending the patent-eligibility of the claims, but saying they are probably invalid due other reasons, such as obviousness.

Speakers:

  • Courtenay Brinckerhoff, Foley & Lardner
  • Charles Doyle, Roche Molecular Systems
  • Katherine Strandburg, New York University School of Law



Injunctions in Patent Infringement: From eBay to Robert Bosch, and Beyond

Webinar Date: 12/08/2011

Prior to the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, a patent plaintiff was awarded a permanent injunction as a matter of course after proving infringement and validity. eBay abolished this rule in favor of the traditional four-prong equitable test for injunctions in civil cases, creating a great deal of uncertainty as to what circumstances would permit a successful patent plaintiff to obtain an injunction. In its October decision in Robert Bosch LLC v. Pylon, the Federal Circuit resolved some of this uncertainty. By reversing a denial of an injunction (under an “abuse of discretion” standard), and entering an injunction without remand, the Federal Circuit sent a signal that an injunction against a competing product remains an achievable goal for plaintiffs in patent disputes.

Our panel consists of two experienced patent litigators (one of whom represents Bosch) and a damages expert. They will consider how a plaintiff that practices a patent can best bolster its legal and economic case to get an injunction after a finding of infringement — and how a defendant can best counter those arguments.

The panel will also consider how the eBay decision has evolved into a rule at district courts that makes it extremely difficult for non-practicing entities to win an injunction. They will consider how an NPE could possibly counter that rule and how compulsory licensing is developing as the alternative to injunctions.

Speakers:

  • Mark A. Hannemann, Kenyon & Kenyon LLP
  • Rachel Krevans, Morrison & Foerster, LLP
  • Mario Lopez, NERA Economic Consulting



Broadening the Reach of the ITC Big Time: The Federal Circuit Decision in TianRui v. ITC

Webinar Date: 11/16/2011

In October the Federal Circuit, in a 2-1 decision in TianRui Group v. ITC, widened the scope of possible rulings by the U.S. International Trade Commission. The court’s opinion, penned by Judge Bryson, affirmed a decision of the ITC barring the importation into the U.S. of a product made in China by a Chinese company because the product was based on trade secrets misappropriated by Chinese employees in China.

The opinion addressed several legal and policy issues relating to whether and to what extent U.S. IP law should reach extraterritorial conduct. The opinion talks in terms of a broad Congressional intent in §337 to prohibit importation of goods made by unfair competition — regardless of whether that unfair competition occurs completely in another country. Some experts can’t see why this unfair competition would be limited to trade secret misappropriation. Judge Moore in her strongly worded dissent claimed that §337 reaches only “unfair acts in the importation of articles” into the U.S. and thus does not create a remedy for “the importation of goods resulting from unfair methods of competition.” She also pointed out that the claimant at the ITC could have obtained a U.S. process patent and thus enjoyed the protection of the U.S. patent law to exclude imports.

Our panel includes an experienced ITC litigator, an appellate specialist, and an in-house counsel for a U.S. company based in China who will report on the reaction of the Chinese government and business community. The panel will discuss the immediate impact of the decision and also the likelihood of a request for a hearing on en banc or at the U.S. Supreme Court.

Speakers:

  • Gregory Castanias, Jones Day
  • Kevin Luo, Microsoft Corp.
  • Jamie Underwood, Alston & Bird LLP



Broadening the Reach of the ITC Big Time: The Federal Circuit Decision in TianRui v. ITC

Webinar Date: 11/16/2011

In October the Federal Circuit, in a 2-1 decision in TianRui Group v. ITC, widened the scope of possible rulings by the U.S. International Trade Commission. The court’s opinion, penned by Judge Bryson, affirmed a decision of the ITC barring the importation into the U.S. of a product made in China by a Chinese company because the product was based on trade secrets misappropriated by Chinese employees in China.

The opinion addressed several legal and policy issues relating to whether and to what extent U.S. IP law should reach extraterritorial conduct. The opinion talks in terms of a broad Congressional intent in §337 to prohibit importation of goods made by unfair competition — regardless of whether that unfair competition occurs completely in another country. Some experts can’t see why this unfair competition would be limited to trade secret misappropriation. Judge Moore in her strongly worded dissent claimed that §337 reaches only “unfair acts in the importation of articles” into the U.S. and thus does not create a remedy for “the importation of goods resulting from unfair methods of competition.” She also pointed out that the claimant at the ITC could have obtained a U.S. process patent and thus enjoyed the protection of the U.S. patent law to exclude imports.

Our panel includes an experienced ITC litigator, an appellate specialist, and an in-house counsel for a U.S. company based in China who will report on the reaction of the Chinese government and business community. The panel will discuss the immediate impact of the decision and also the likelihood of a request for a hearing on en banc or at the U.S. Supreme Court.

Speakers:

  • Gregory Castanias, Jones Day 
  • Kevin Luo, Microsoft Corp.
  • Jamie Underwood, Alston & Bird LLP



The Computer Fraud and Abuse Act: Does It Cover Employee Theft?

Webinar Date: 10/27/2011

For the last several years, courts across the country have reached differing conclusions as to whether the federal Computer Fraud and Abuse Act can be used against employees who access their employers’ computer networks to steal confidential files. Many district courts have decided that the statute can be used only against outside hackers.

But a decision this spring by the Ninth Circuit (involving executive recruiter Korn/Ferry suing a former employee) clarified that Court’s position that the law also applies to employees who exceed the “authorized access” set forth in the employer’s computer usage policy. The Court distinguished its finding in that case, U.S. v. Nosal, from its own oft-cited 2009 decision in LVRC v. Brekka (which sided with the employee). The First, Fifth and Eleventh Circuit Courts have also recently held that the CFAA applies to dishonest-employee behavior.

This webinar will look at the recent trend, and also explain what kind of computer usage policies will allow companies to use the CFAA against employees. The Ninth Circuit’s opinion relied heavily on Korn/Ferry’s rigorous, clearly articulated, and widely disseminated policy.

The webinar will also consider the policy concerns that argue against the expansion of the scope of the CFAA, and how those concerns may play out in future litigation.

Speakers:

  • Nick Akerman, Dorsey & Whitney
  • Thomas Hurka, Morgan Lewis
  • Prof. Phil Malone, Berkman Center at Harvard



The Computer Fraud and Abuse Act: Does It Cover Employee Theft?

Webinar Date: 10/27/2011

For the last several years, courts across the country have reached differing conclusions as to whether the federal Computer Fraud and Abuse Act can be used against employees who access their employers’ computer networks to steal confidential files. Many district courts have decided that the statute can be used only against outside hackers.

But a decision this spring by the Ninth Circuit (involving executive recruiter Korn/Ferry suing a former employee) clarified that Court’s position that the law also applies to employees who exceed the “authorized access” set forth in the employer’s computer usage policy. The Court distinguished its finding in that case, U.S. v. Nosal, from its own oft-cited 2009 decision in LVRC v. Brekka (which sided with the employee). The First, Fifth and Eleventh Circuit Courts have also recently held that the CFAA applies to dishonest-employee behavior.

This webinar will look at the recent trend, and also explain what kind of computer usage policies will allow companies to use the CFAA against employees. The Ninth Circuit’s opinion relied heavily on Korn/Ferry’s rigorous, clearly articulated, and widely disseminated policy.

The webinar will also consider the policy concerns that argue against the expansion of the scope of the CFAA, and how those concerns may play out in future litigation.

Speakers:

  • Nick Akerman, Dorsey & Whitney
  • Thomas Hurka, Morgan Lewis
  • Prof. Phil Malone, Berkman Center at Harvard



Divided Infringement: A Gordian Knot Still

Webinar Date: 10/04/2011

This webinar will analyse the recent opinions of the en banc U.S. Court of Appeals for the Federal Circuit in Akamai v. Limelight and McKesson v. Epic Systems. The majority opinion eased the standard for inducing infringement, holding that induced infringement can be found even if a single entity is not liable for direct infringement. Both cases were remanded back to the district courts.

Our panel includes the former chief judge of the Court of Appeals for the Federal Circuit, and two litigators who represented opposing sides in the litigation. Their presentation will include discussion of:

  • The majority opinion and the two dissenting opinions
  • The current state of the law for joint direct infringement
  • The new standard for induced infringement and its ramifications for different industries such as software and biotech
  • Possible paths for future litigation

Speakers:

  • Daryl Joseffer, King & Spalding
  • Hon. Paul Michel
  • Steve Moore, Kilpatrick Townsend & Stockton LLP



Myriad and Prometheus: What's Next for Gene Patents and Personalized Medicine

Webinar Date: 08/18/2011

At the end of July, the Federal Circuit issued its long-awaited opinion in Association for Molecular Pathology v. Myriad Genetics. The panel overturned the district court to rule that isolated DNA molecules are patent-eligible, at the same time as it held ineligible for patent protection some of Myriad’s claims comparing DNA sequences.

Pharma, biotech and personalized medicine companies need to consider how to draft their claims and specifications to support patent eligibility as defined in Myriad. Statements in the judges’ opinions, albeit dicta, could potentially impact a wide range of subject matter beyond DNA, such as polypeptides, proteins, antibodies, stem cells and other biologics, as well small molecule compounds. Our panel will give specific advice on both product and method claims.

At the same time, this decision is unlikely to be the end of the road for this case, as the plaintiffs are considered likely to ask for their appeal to be heard by the U.S. Supreme Court. Our panel will also give their thoughts on the future path for this litigation, including the issue of standing and how this case may interact with the Prometheus case in which the Supreme Court has already granted cert.

Our panel includes a top IP appellate litigator, a lpatent prosecutor with many clients in the area of personalized medicine, and a law professor who is active with early-stage bioscience companies.

Speakers:

  • Jacqueline Wright Bonilla, Foley & Lardner, LLP
  • Ken Chahine, University of Utah
  • Edward Reines, Weil, Gotshal & Manges, LLP



Inequitable Conduct after Therasense

Webinar Date: 07/07/2011

Our panel will bring three different perspectives to bear on the Federal Circuit’s May decision that revamped the doctrine of inequitable conduct, including the standard for materiality. Our speakers include the head of patent prosecution at a major IP law firm who was both a patent examiner and a top official at the USPTO; an experienced patent litigator; and the chief IP counsel at a corporation that is active in both patent prosecution and litigation.

The panel will address the issues assuming the Federal Circuit’s decision will stand, but it also will consider how to deal with a prolonged period of uncertainty if the U.S. Supreme Court grants certiorari.

Questions to be considered include:

  • How should patent prosecutors change their dealings with the USPTO?
  • What will be the USPTO’s reaction to the Federal Circuit’s new standards? Will it change its guidance to applicants regarding the materials they must submit under their duty of disclosure?
  • Will patent prosecutors omit relevant references and hide information?
  • What will be the impact on patent quality?
  • Will the Therasense holding lower the cost and complexity of patent litigation?
  • Will the “but for” invalidity analysis require district courts to apply the USPTO standards for allowing patents?

Speakers:

  • Charles Van Horn, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Kevin Rhodes, 3M Innovative Properties Co.
  • Eric Weisblatt, Wiley Rein



Patent Litigation after Microsoft v. i4i

Webinar Date: 06/22/2011

The U.S. Supreme Court’s eagerly-awaited decision in Microsoft v. i4i preserves the clear and convincing standard against challengers who want to prove a patent’s invalidity. But the decision is still likely to have a significant impact on patent litigation.

The biggest changes may stem from the Court’s unanimous ruling that district courts “can” and “most often should” instruct a jury “to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. Simply put, if the PTO did not have all material facts before it, its considered judgment may lose significant force.” This new rule may undermine, for instance, the Federal Circuit’s 2007 decision in z4 Technologies, Inc. v. Microsoft Corp., which upheld a district court’s refusal to instruct a jury that the burden of proving invalidity is “more easily carried” when the relevant evidence was not considered by the USPTO.

Justice Breyer in a concurrence, joined by Justices Scalia and Alito, emphasized that the clear and convincing standard applies to questions of fact, and not to legal conclusions such as obviousness. As Professor Dennis Crouch points out on his blog Patently-O, “that distinction is extremely important in the patent landscape because the ultimate question of obviousness is a legal conclusion based upon a set of facts generated by following the process set out in Graham v. John Deere.”

Our panel will also consider the impact of the i4i decision on reexamination practice and how it interacts with other recent appellate decisions such as Therasense. Our panel includes a top lawyer for patent plaintiffs, a top patent litigator with experience representing both defendants and plaintiffs, and a prominent advocate at the Federal Circuit.

Speakers:

Gregory Castanias, Jones Day
James Hurst, Winston & Strawn
Ray Niro, Niro, Haller & Niro




The Implications of Stanford v. Roche

Webinar Date: 06/17/2011

In its June decision in Stanford v. Roche, the U.S. Supreme Court held that the Bayh-Dole Act does not give federal contractors automatic ownership of inventions that spring from federally funded research. Most universities will have already tightened up their invention assignment contracts to make sure that they don’t repeat Stanford’s mistake.

However, other aspects of the opinion are already engendering uncertainty. For instance, the Court cited the Federal Circuit’s 1991 FilmTec decision, which also involved a situation in which the inventor agreed to assign rights to an invention that resulted from research. In a footnote, however, the Court noted that it had “no occasion to pass on the validity of the lower court’s construction of those agreements.” And in his dissent, Justice Breyer explicitly criticized the Federal Circuit’s contract interpretation, while Justice Sotomayor’s concurrence stated that she understood the majority opinion to permit consideration of these arguments in a future case.

This panel will consider the contract terms at issue here. It will also examine the impact of the opinion on the patent reform debate, including the first-to-file provision.

Speakers:

Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
Ned Israelsen, Knobbe Martens Olson & Bear, LLP
Jon Soderstrom, Yale University, Office of Cooperative Research




Inducing Infringement: The Implications of the Supreme Court Decision in Global-Tech

Webinar Date: 06/14/2011

In its late May decision in Global-Tech v. SEB, the Supreme Court held that inducement of infringement requires knowledge that the induced conduct itself infringes, and that the knowledge element can be met by a showing of “willful blindness.”  In reaching this conclusion, the Court rejected the Federal Circuit’s adoption of a “deliberate indifference” standard.

  • The opinion clearly sets a new standard, but it still leaves some important uncertainties. Our panel will discuss such questions as:
  • What does the difference between “willful blindness” and “deliberate indifference” mean for those who may be accused of inducing infringement?
  • What are the obligations of a potentially-infringing company for doing a patent search?
  • What are the obligations of a company once it is put on notice by a patent holder that its product may infringe?
  • When does the obligation to get an opinion of counsel arise?
  • Are the lessons of Seagate regarding opinions and willful infringement in concert with the ruling in Global-Tech?
  • Will plaintiffs increasingly abandon charges of induced infringement and be willing to focus on alleged direct infringers?

Our panel includes two top law firm litigators and a law professor, each of whom espoused a different position in an amicus brief before the Supreme Court.

Speakers:

Michael Connor, Alston & Bird
Gary Hoffman, Dickstein Shapiro
Ted Sichelman, University of San Diego Law




Recent Federal Circuit Decisions on Reissue

Webinar Date: 06/02/2011

Two recent decisions by the Federal Circuit regarding reissue proceedings offer help to patent holders, to different degrees. In re Tanaka, involving an improvement to auto alternators, held that reissue can be used to make the sole change of adding dependent claims to a granted patent. A patentee might choose this route if there is a risk that originally granted claims will be held invalid under evolving legal standards, such as more stringent written description, enablement, or patent eligibility requirements. The decision may be particularly important for the pharmaceutical industry because drug patents often include broad claims covering a genus of compounds. Under the ruling, branded drug makers can identify the most valuable molecules years later, then go back and apply to add dependent claims through reissue.

The second decision, regarding semiconductor packaging, In re Mostafazadeh, was less favorable for the patent holder. The Federal Circuit panel unanimously affirmed a PTO denial of a reissue because of the recapture rule which states that a patentee may not regain through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims. However, the decision may give patent holders more wiggle room than previously. The Court said that the limitation may be modified, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter.

The webinar will also address the upcoming Federal Circuit case In re Staats where Apple is appealing a BPAI ruling having to do with the two-year statutory limit to a broadening reissue.

Our panel includes a highly experienced pharma/biotech patent prosecutor, an in-house counsel at a drug company, and a law firm specialist in patent reissue who is a former top official at the PTO.

Speakers:

Courtenay Brinckerhoff, Foley & Lardner, LLP
Stephen Kunin, Oblon, Spivak, McClelland, Maier & Neustadt, LLP
A. Dean Olson, Pfizer




The Domestic Industry Requirement at the ITC

Webinar Date: 05/11/2011

It has been 22 years since Congress broadened the domestic industry requirement of §337 to include not just manufacturing in the U.S, but also “exploitation, including engineering, research and development, or licensing” of the IP in question. Not until recently, however, has the Commission really had to focus on these issues. Not surprisingly, the ITC has become a debate forum between those who believe that “exploitation” should have the broadest possible meaning, particularly in the context of litigation activities, and those who argue for a more narrow construction.

A series of recent decisions reveals some confusion. Our panel of experts will consider the following:

 Certain Coaxial Cable Connectors that addressed when litigation expenses can satisfy the economic prong of domestic industry
 Certain Printing and Imaging Devices which raises questions about when repair and services activities can satisfy the requirement
• Certain Video Game Systems and Controllers, which, like Certain Printing and Imaging Devices, addresses the timing of activities used to measure domestic industry
• Certain Stringed Musical Instruments in which an individual inventor failed to establish domestic industry
• Certain Multimedia Display and Navigation Devices, a pending case in which the ITC has asked the public for comments on how it should attribute total expenses in licensing a portfolio toward the exploitation of one asserted patent

Speakers:

• Brian Busey, Morrison & Foerster, LLP
• Peter Roossien, Freescale Semiconductor
• Tom Schaumberg, Adduci, Mastriani & Schaumberg, LLP




The U.S. Supreme Court Argument in i4i

Webinar Date: 04/21/2011

On Monday, the U.S. Supreme Court heard the argument in Microsoft v. i4i, a case that puts at risk the Federal Circuit’s tenet that an invalidity defense must be proved by clear and convincing evidence.

The Justices’ questioning, with Thomas Hungar of Gibson Dunn representing Microsoft, Seth Waxman of WilmerHale representing i4i, and Malcolm Stewart representing the U.S., pursued several paths.  There was a disagreement among the justices about the meaning of Section 282 of the Patent Act.  Justice Ginsburg said that “when Congress added a presumption of validity, it must have had in mind something more than the defendant would have the burden of proof and the normal standard is preponderance.”  But, by contrast, Justice Alito said, “If Congress wanted to impose a clear and convincing burden, why in the world would they not have said that expressly?”

Justice Breyer, indicating that neither the statute nor the legislative history was going to give the answer, implied that the court would have to rely on policy considerations, including what would lead to better economic growth.  “What we’re trying to do is we’re trying to get a better tool, if possible, to separate the sheep from the goats,” ie, patents that were correctly granted versus those that were incorrectly granted.  He and Justice Sotomayor indicated interest in using instructions to let the jury know that in applying a clear and convincing standard they could consider that the PTO did not see certain evidence.

Our panel includes the IP chief of a major corporation which supports i4i, a noted law school professor who supports Microsoft, and a law firm appellate specialist who is a former Assistant to the U.S. Solicitor General.

Speakers:

• Prof. John Duffy, GW Law
• Kevin Rhodes, 3M
• Richard Bress, Latham & Watkins




The Oral Argument in Myriad

Webinar Date: 04/07/2011

This webinar will discuss and analyze the April 4 Federal Circuit oral argument in The Association of American Pathology v. Myriad. The decision by U.S. District Court Judge Robert Sweet of the Southern District of New York last year, finding that that claims to isolated DNA and methods of use for diagnosis do not qualify as patentable subject matter, contradicted decades of practice at the USPTO and the settled assumptions of the biotech industry. In November, the U.S. Department of Justice surprised the patent bar with a brief supporting much of Judge Sweet’s finding, revealing a rift between the PTO and the rest of the Obama administration on the issue. Then in February, the acting U.S. Solicitor General Neal Katyal announced that he will present the government’s case at the oral argument, standing as an amici to the Appellees, who will be represented by Christopher Hansen of the American Civil Liberties Union. This is apparently the first time an SG has argued at the Federal Circuit — and is particularly notable because Katyal will appear instead of the solicitor general of the PTO, which was a defendant in the case at the trial court level. (The PTO did not appeal Judge Sweet’s ruling.) Arguing for Myriad will be Gregory Castanias, head of the Federal Circuit practice at Jones Day.

Our panel, which includes two preeminent appellate specialists and a biotech IP expert, will garner evidence from the oral argument on where the court is heading and discuss possible outcomes. Myriad and several amici have based a substantial portion of their briefs on the procedural question of whether the plaintiffs have standing to sue. If oral argument shows Myriad has gained traction with this reasoning, the Federal Circuit might not reach the merits of the District Court’s decision on isolated human DNA. And a certiorari petition might be limited to the procedural question, delaying any reconsideration of patent-eligibility. The justices may also opine on DOJ’s distinction between isolated DNA that is the subject of “human manipulation” (such as cDNA) and thus patent-eligible, versus human DNA that has been merely “isolated,” which should not be. Finally, the panel will also consider the justices’ interest in Myriad’s method claims for comparing genetic sequences which were declared patent-ineligible by the District Court. That matter is of considerable importance for inventors in the field of personalized medicine.

Speakers:

• Donald Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
• Ed Reines, Weil, Gotshal & Manges, LLP




Antibody Patents After Centocor

Webinar Date: 03/23/2011

The February Federal Circuit decision in Centacor threw out a $1.7 billion judgment by finding the patent invalid. But in doing so, the court also left open a problematic ambiguity relating to the written description requirement for antibodies in general. The PTO’s written description guidelines seem to suggest that disclosure of an antigen alone can provide Section 112 support for any antibody that binds to that antigen. But many experts believe those guidelines are in tension – if not complete conflict – with written description recently described in Ariad v. Eli Lilly.

In Centacor, the court did better define and limit the application of the PTO’s rules. But it is still is struggle for inventors, patent prosecutors and possible infringers to know how much is enough when it comes to written description for antibody patents. This is likely to result in more litigation in this growing multi-billion dollar market. The panel will also discuss the obviousness challenges antibody patents face since KSR.

Speakers:

• Jack Brennan, Fish & Richardson
• Nicholas Groombridge, Weil, Gotshal & Manges, LLP
• Jane Gunnison, Ropes & Gray




The Latest on Joint Infringement

Webinar Date: 03/15/2011

The Federal Circuit continues to develop its doctrine on joint infringement, a matter of great concern to many holders of patents that were granted before 2007, when the court began its recent clarifications in BMC v. Paymentech. Moving forward, the court’s views also need to inform the current patent prosecution strategies of many corporations.

In its December decision in Akamai v. Limelight, the court appeared to some experts to have taken a final step toward spelling out how patent holders must show an agency relationship between potential joint infringers, a process that began with BMC. But the next month the court gave its opinion in Centillion v. Qwest which added a new twist. It allowed joint infringement issues to be avoided altogether when dealing with system claims if a customer “puts the system as a whole into service, i.e., controls the system and obtains benefit from it” – even if the customer does not physically possess or own elements of the system.

This new emphasis on “use” seems to make it harder for potential defendants to figure out if they are infringing when they just perform a piece of a patented invention, and likewise, could make it easier for a patent holder to prove infringement. This panel of experts will consider what the dynamic is between Akamai (and its predecessor decisions) and Centillion, and what are the fact situations in which one would override the other. They will also give their ideas on which way the law may move going forward.

Speakers:

• Morgan Chu, Irell & Manella LLP
• Claude Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP
• Brian Way, Altera Corp.




Licensing: The Impact of Recent Decisions on Standing

Webinar Date: 03/09/2011

In an important decision regarding the standing to sue under a patent license, the Federal Circuit in late December clarified the meaning of “exclusive licensee” in WiAV v. Motorola. In reversing a district court, the court ruled for the plaintiff, holding that “a licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.”

This follows an earlier Federal Circuit decision last year, Alfred E. Mann Foundation v. Cochlear, in which the issue on appeal was whether the license agreement transferred sufficient rights to an exclusive licensee to make it the owner of the patents, leaving the licensor without the standing to sue. In its opinion, the Federal Circuit discussed a number of factors for consideration in making such a determination, including exclusivity, reversion of rights after breach, the right to receive a portion of recovery, the right to supervise and control licensee’s activities, the obligation of licensor to pay patent maintenance fees, limitations on the right to sublicense and the license’s duration. Ultimately the Court ruled that “the nature and scope of the exclusive licensee’s purported right to bring suit, together with the nature and scope of any right to sue purportedly retained by the licensor, is the most important consideration.”

This panel brings together a specialist in IP transactions, an IP litigator, and an in-house counsel with extensive experience in business development and licensing. They will consider the impact of these two decisions on both licensors and licensees, in both the negotiation of new agreements and in litigation.

Speakers:

Greg Feulner, DuPont
Adam Ruttenberg, Cooley LLP
E. Robert Yoches, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP




Inducing Infringement: The Oral Argument at the U.S. Supreme Court

Webinar Date: 02/25/2011

With its decision in SEB v. Global Tech last year, the Federal Circuit introduced a new more expansive standard under which an alleged infringer’s deliberately indifferent state of mind can be sufficient to establish induced infringement. Next Wednesday the U.S. Supreme Court will hold oral arguments in the appeal from that decision, and this webinar will describe and analyze that argument and the views expressed by the Justices.

The issue of induced infringement strikes to the heart of the need for patent law to reflect a “balance between the need to encourage innovation and the avoidance of the monopolies which stifle competition” as the Court put it in 1989. As such, the Court’s decision in this case will have a serious impact on much patent litigation.

Each of our panelists wrote an amicus brief in the case and together they represent a broad range of views on the issue, including support for the petitioners, support for the respondent, and advocating a “middle ground” between the two.

Speakers:

  • Mike Connor, Alston & Bird
  • Garry Hoffman, Dickstein Shapiro
  • Ted Sichelman, University of San Diego School of Law



Patent Claim Indefiniteness: Enzo v. Applera

Webinar Date: 02/09/2011

Just how definite do the claims of a patent need to be? The mid-December request by the U.S. Supreme Court to the Solicitor General to weigh in on Applera’s appeal of a decision by the Federal Circuit is putting new emphasis on the jurisprudence in this area.

The Federal Circuit decision earlier this year revived two Enzo patents that had been invalidated for indefiniteness by a district court in patent litigation against Applera. Applera asked the Federal Circuit for a reconsideration en banc, which was denied. However, as part of that denial, Judge Plager wrote a strong dissent, casting a bright light on the difference between the more rigorous standard of definiteness that the PTO insists on to grant a patent and the looser standard allowed by the Federal Circuit for a patent to remain valid. Judge Plager decried the waste of judicial resources caused by Federal Circuit frequent review of lower courts’ claim construction, and said it could be avoided if the Federal Circuit itself adopted an indefiniteness standard closer to the PTO’s. The U.S. Supreme Court is deciding whether to grant certiorari in the case.

In this webinar, a panel of experts will consider not only the issues raised by the Enzo case, but also the ways a patent can presently be found indefinite under 35 USC §112. These include indefinite means-plus-function claims and apparatus-plus-method claims in such cases as Telcordia, Aristocrat, Finisair and IPXL.

The panelists will discuss the ongoing practical impact of the conflict between the PTO’s standard and the Federal Circuit’s; and give advice on how patent prosecutors and litigators should proceed now while it is not clear whether the Supreme Court will hear the case.

Speakers:

  • John Dragseth, Fish & Richardson P.C.
  • Prof. Michael Meurer, Boston University School of Law
  • Mark Pals, Kirkland & Ellis, LLP



Double Patenting: The Legacy of Sun Pharmaceuticals v. Eli Lilly

Webinar Date: 02/03/2011

Just how definite do the claims of a patent need to be? The mid-December request by the U.S. Supreme Court to the Solicitor General to weigh in on Applera’s appeal of a decision by the Federal Circuit is putting new emphasis on the jurisprudence in this area.

The Federal Circuit decision earlier this year revived two Enzo patents that had been invalidated for indefiniteness by a district court in patent litigation against Applera. Applera asked the Federal Circuit for a reconsideration en banc, which was denied. However, as part of that denial, Judge Plager wrote a strong dissent, casting a bright light on the difference between the more rigorous standard of definiteness that the PTO insists on to grant a patent and the looser standard allowed by the Federal Circuit for a patent to remain valid. Judge Plager decried the waste of judicial resources caused by Federal Circuit frequent review of lower courts’ claim construction, and said it could be avoided if the Federal Circuit itself adopted an indefiniteness standard closer to the PTO’s. The U.S. Supreme Court is deciding whether to grant certiorari in the case.

In this webinar, a panel of experts will consider not only the issues raised by the Enzo case, but also the ways a patent can presently be found indefinite under 35 USC §112. These include indefinite means-plus-function claims and apparatus-plus-method claims in such cases as Telcordia, Aristocrat, Finisair and IPXL.

The panelists will discuss the ongoing practical impact of the conflict between the PTO’s standard and the Federal Circuit’s; and give advice on how patent prosecutors and litigators should proceed now while it is not clear whether the Supreme Court will hear the case.

Speakers:

  • John Dragseth, Fish & Richardson
  • Michael Meurer, Boston University
  • Mark Pals, Kirkland & Ellis



After Losing at the BPAI: What Will Be the Impact of Hyatt v. Kappos?

Webinar Date: 01/20/2011

The November en banc Federal Circuit decision in Hyatt v. Kappos clarified that an applicant seeking to challenge a decision denying a patent by the USPTO’s Board of Patent Appeals and Interferences in a §145 action may submit new evidence to the district court that was never before considered by the USPTO. Will this decision prompt increased use of the up-till-now uncommon §145 route?

Skeptics on the impact of the decision point out that district court proceedings are expensive and unfamiliar to most patent applicants. In the vast majority of cases, they say, applicants who want to present new evidence to support their patent applications should do so within the USPTO, by filing a Request for Continued Examination or a continuation application.

But other patent practitioners are much more bullish on the §145 route post-Hyatt. They hold that it will be advantageous for the applicant to be able to have an expert testify live about the prior art to overcome a prior art rejection.  An applicant facing an obviousness rejection may have more persuasive evidence of secondary considerations of non-obviousness to submit to a court than was available during regular prosecution. Could the U.S. District Court for the District of Columbia turn in to a relatively friendly forum for patent applicants?

Speakers:

  • Russell Barron, Pepper Hamilton LLP
  • Courtenay Brinckerhoff, Foley & Lardner, LLP
  • Dennis Skarvan, Caterpillar Inc.



Avoiding Mistakes in the “Parallel Universe" of Patent Reexaminations and Patent Litigation

Webinar Date: 11/18/2010

The number of reexamination requests at the USPTO continues to soar, with over 1,000 filings in the year ending September 2010 — up nearly 40 percent from three years ago. Most of those requests, particularly for inter partes reexamination, involve concurrent patent infringement litigation.

Yet there are plenty of pitfalls for practitioners who wander in these parallel universes of litigation and reexamination. Knee-jerk decisions, misconceptions, and miscalculations regarding the interplay of the two can easily derail litigation strategy.

This panel of experts will discuss how litigators and in-house counsel can avoid strategic and tactical mistakes regarding:

• Choosing to seek reexam, and choosing which form of reexam
• Protective orders
• Claim construction
• Stays
• Admissibility
• Willfulness
• Timing of decisions

Speakers:

• James W. Morando, Farella Braun & Martel, LLP
• Andrew Temkin, Oracle USA, Inc.
• Robert Sterne, Sterne, Kessler, Goldstein & Fox, PLLC




Inequitable Conduct: The Federal Circuit Hearing in Therasense

Webinar Date: 11/12/2010

In deciding to hear the Therasense case en banc last spring, the Federal Circuit explicitly signaled its willingness to fundamentally redefine the framework and standards for deciding whether a patent holder committed inequitable conduct before the PTO in procuring its patent, therefore losing all right to enforce it. The Court asked whether the framework balancing materiality and intent should be replaced or modified, and whether and what kind of fraud standard should be used to infer intent.

This webinar will discuss the content and direction of the oral argument which is scheduled to take place at Federal Circuit on Nov 9. Our panel of experts will analyze the discussion and the options open to the Court.

Speakers:

Hon. Paul Michel
Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Jeffrey Kushan, Sidley Austin LLP




Whole-Genome Sequencing v. Gene Patents

Webinar Date: 11/03/2010

A whole nascent industry of life-science companies is focusing on the aim of pushing the cost of sequencing an entire human genome down to $1,000 per individual. Yet widely-available sequencing of the whole genome is already being seen as a threat to companies that have their IP tied up in patents involving single genes.

A newly announced free software-based test, published by Steven Salzberg of the University of Maryland’s Center for Bioinformatics & Computational Biology, brings that tension into particularly sharp relief. The test compares genomic sequence data against a set of known mutations in the BRCA genes.

The new software poses a broad important legal question: when sequencing all or a portion of an individual’s genome, are individual gene patents infringed upon by either the company providing the sequence, a company selling software to analyze the sequence, or the individual purchasing or requesting it? Who will be the direct infringer, and is someone liable for indirect infringement?

The answer probably rests on the specifics of the gene patents. That’s why it’s important for companies with bets on either side, ie, gene patents or whole-genome sequencing – and there are some with bets on both sides – to be thinking about the issues in sophisticated ways. And biotech litigators will certainly need to be informed about the dimensions of possible suits.

Speakers:

• Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
• Ned Israelsen, Knobbe Martens Olson & Bear, LLP
• Ken Chahine, University of Utah




The Extraterritorial Reach of the U.S. Patent Law after Transocean

Webinar Date: 10/13/2010

The increasing globalization of commerce means that U.S. courts are facing many cases in which U.S. patent laws are being asserted against actions that take place partially or wholly outside the U.S. The Federal Circuit has taken an expansive view of the reach of U.S. law in a series of decisions including Eolas v. Microsoft, NTP v. Research in Motion, Union Carbide v. Shell Oil and Litecubes v. Northern Lights.

In August, the Federal Circuit supported the position of U.S. patentholders in global markets in Transocean v Maersk, a case involving offshore drilling technology. The court found that “a contract between two U.S. companies for the sale of the patented invention with delivery and performance in the U.S. constitutes a sale under § 271(a) as a matter of law,” regardless of the fact that both the offer for sale and the sale took place in a foreign country.

The U.S. Supreme Court reversed one of Federal Circuit’s most significant decisions involving extraterritoriality, AT&T v. Microsoft, in 2007. In November it will hear Costco v. Omega involving international exhaustion of copyright. This panelists will review the case law, analyze the Transocean decision, and discuss where these issues are likely to surface next.

Speakers:

• Gregory Castanias, Jones Day
• Timothy Holbrook, Emory University
• Matthew McGill, Gibson Dunn




The USPTO’s 2010 KSR Guidelines Update: A Discussion by Expert Prosecutors

Webinar Date: 10/06/2010

The update on issues of obviousness, published by the USPTO in the Federal Register on September 1, 2010, is meant to guide patent examiners through recent Federal Circuit decisions regarding obviousness, following the Supreme Court’s 2007 seminal opinion in KSR Int’l Co. v. Teleflex Inc.  Naturally, these 2010 updated guidelines are quickly becoming required reading for patent prosecutors. And, like those who study other authoritative texts, those who want to practice according to the guidelines may benefit from analysis by experts.

These two webinars will address the patent application concerns of separate large industry segments that have unique issues with obviousness. Expert prosecutors and in-house counsel will parse the guidelines, considering what the guidance means in practice, and what questions remain unanswered.

Industrial, Biochemical and Life Sciences

Speakers:

  • Gary Ganzi, Siemens Water Technology
  • Peter Knudsen, Woodcock Washburn
  • Jane Love, WilmerHale

IT, Software and Business Methods

Speakers:

  • Michael Chernoff, Accenture
  • Stephen Durant, Schwegman Lundberg
  • David Feigenbaum, Fish & Richardson

 




False Marking Update: New Twists and Turns

Webinar Date: 09/30/2010

Recent Federal Circuit decisions on false marking cut two ways, both bolstering defendants and giving hope to plaintiffs. In June, the appellate decision in Pequignot v. Solo Cup stressed that plaintiffs need to prove an intent to deceive, but also indicated that marking of an expired patent is indeed false marking. In August, in Stauffer v. Brooks Brothers, the Federal Circuit affirmed the standing of individuals to sue on a qui tam basis, favoring the argument made at the appeal by the Department of Justice defending that standing. Meanwhile, the flood of cases at district courts continues unabated. Our experts will consider:

• twists and turns of the litigation, including the interest of the DOJ in the qui tam efforts, and other considerations in trying to settle a suit,
• in-house perspective on the parameters of a false marking policy including whether and when to mark, and whether it makes sense to preemptively open talks with the DOJ,
• the likelihood of a change in the law that would take away qui tam standing from plaintiffs.

Speakers:
• Buckmaster De Wolf, General Electric Co.
 Jason White, Howrey LLP
• Prof. Elizabeth Winston, The Catholic University of America




Joint Infringement After Golden Hour: A Wake-Up Call

Webinar Date: 08/31/2010

This webinar will review the developing law in this issue, and will explore the questions that may arise in future litigation. For instance, what will it take to show that one entity is “the mastermind” in joint infringement? The panel will also explore the options available to holders of already-issued patents, and give tips for drafting patent claims that involve just one entity, recognizing that divided patent claims may leave the patentee with no remedy at all. Our panel includes the attorney who successfully represented emsCharts at the district court and the Federal Circuit, another leading patent litigator, and an in-house counsel with experience in joint infringement issues.

Speakers:

• Morgan Chu, Irell & Manella LLP
• Joseph C. Kirincich, Pitney Bowes Inc.
• Eric H. Weisblatt, Wiley Rein LLP




Patent Term Adjustment: The Next Chapter

Webinar Date: 08/05/2010

The story of Wyeth v. Kappos took a new, very interesting turn in early July when Novartis filed a suit in the U.S. District Court of the District of Columbia, seeking review of the USPTO’s patent term adjustment (PTA) determinations for eleven Novartis patents. Novartis’ action is the first to question the USPTO’s interim procedures for requesting PTA recalculation in light of the Federal Circuit’s decision in Wyeth v. Kappos.  Novartis contends, among other things, that “[the Director’s] refusal to accord the benefits of Wyeth to [applications filed by May 29, 2000 and issued on or before September 1, 2009] is arbitrary, and in excess of statutory jurisdiction, authority or limitation.” For the pharmaceutical and biotech industry as a whole, the revenue at stake on this dating issue may reach into the billions.

Panelists include the patent prosecutor who first discovered a separate calculation error by the USPTO, another patent expert with extensive experience at the USPTO, the litigator who successfully argued the Wyeth case at the district court and the Federal Circuit, and a professor who specializes in the historical theoretical and doctrinal connections between patent law and property law. They will consider the issues raised by the Novartis suit, its chances of success, and what other patent owners should do now.

Speakers:

  • Jack Brennan, Fish & Richardson P.C.
  • Patricia Carson, Kaye Scholer
  • Adam Mossoff, George Mason University School of Law



Inducing Infringement: What is the Standard After SEB?

Webinar Date: 07/22/2010

In April the Federal Circuit declined to hear en banc SEB v. Montgomery Ward, its February decision that affirmed a district court decision and further held that “deliberate indifference” to potential patent rights satisfies the knowledge requirement for induced infringement. Prior to this decision, in order to actively induce infringement of a patent, the inducer needed actual knowledge of the existence of that patent. Now this is no longer true. And, as before, inducing infringement can lead to damage awards similar to those awarded for direct infringement. Some experts question how case law will develop on this issue. But there is no doubt that SEB raises the stakes for companies who bring to market products that may be copies of patented items, and for those who draft “freedom to operate” opinions. It also means that foreign firms with manufacturing and sales activities outside of the U.S., but whose products are sold here, run a greater risk of being branded an infringer of a U.S. patent.

Speakers:

• David Djavaherian, Tessera
• Prof. Mark Lemley, Stanford Law School and Durie Tangri Page Lemley Roberts and Kent LLP
• Charlene Morrow, Fenwick & West




Design Patents: Where Do They Stand After Recent Federal Circuit Decisions?

Webinar Date: 04/15/2010

Three recent decisions by the Federal Circuit continue to raise the profile of design patents. One of the decisions
Croc v. ITC – confirmed the value of design patents to patentholders. There the Court overturned the ITC’s
finding of no infringement of a design patent, stating that the infringement analysis should be done by applying
the ordinary observer test while viewing the design as a whole. International Seaway Trading v. Walgreens, the
court may have weakened design patents by concluding that the “ordinary observer” test is the sole test for
assessing the anticipation of design patents. And in March in Richardson v. Stanley Works, the Court affirmed a
district court decision, making it clear that a design patent does not extend to any functional elements of the
claimed article. A panel of experts will elucidate the cases and give a sophisticated appraisal of where design
patents stand.

Speakers:

  • Christopher V. Carani, McAndrews, Held & Malloy
  • Robert S. Katz, Banner & Witcoff, Ltd
  • Damian Porcari, Ford Global Technologies, LLC



Damages After Uniloc

Webinar Date: 01/27/2010

The Federal Circuit has taken a series of steps recently to make sure that patent infringement damages are narrowly tailored to the patents, products, and technology at issue. The latest of these decisions, Uniloc v. Microsoft was issued earlier this month. In Uniloc, the court made at least two highly significant changes in damages law:

  •  It held that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on that rule of thumb is now inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.
  • The Court will not allow consideration of the entire market value of products that include minor patented improvements – no matter how low the royalty rate. For the entire market value rule to apply, the patentee must prove that the patent-related feature is the basis for customer demand.

How will these changes affect potential plaintiffs’ decision to bring suit, and litigation strategy? What are the new models for quantifying damages in the absence of the 25 percent rule and entire-market-value calculations? Our panel considering these questions includes two top patent litigators and an expert in damages analysis.

Speakers:

  • Christopher GerardiFTI Consulting, Inc.
  • Robert Gunther, WilmerHale
  • Theodore Stevenson, III, McKool Smith