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IP Chat Channel – Patent Prosecution and PTO Practice

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.

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Patent Prosecution Estoppel from PTAB Proceedings

Webinar Date: 03/29/2018

Until recently, the scope of estoppel triggered by PTAB trials was of concern primarily to litigators, who worried about their arguments being estopped in district court.

But patent prosecutors should also worry about estoppel arising from PTAB proceedings. This was made clear in the latest version of the USPTO’s Manual of Patent Examining Procedure that issued in January 2018, the first revision in two years. It states that, “[PTAB] trial proceedings yield information that may be considered material to pending related patent applications … [An] example of such material information is any assertion that is made during litigation and/or trial proceeding which is contradictory to assertions made to the examiner. Examples include evidence of possible prior public use or sales, questions of inventor ship, [or] prior art.” This sweeping requirement for additional disclosure signals a big change that can create issues for those prosecuting patent applications.

Our panel, which includes an in-house prosecutor for a technology company with a sophisticated understanding of law and procedure, a post-grant specialist, and former USPTO Deputy Commissioner for Patent Examination Policy, will discuss:

  • The USPTO program run every 2 weeks that creates links between filed petitions for AIA trials and the related applications, which is not accessible to the public or to the attorney of record.
  • How standard operating procedure for patent prosecutors must now change. The MPEP states that the prosecutor is in danger of violating his or her duty of disclosure if anything in the PTAB record known to be material to the patentability of any claim in an application is not submitted to the USPTO. What are the patent prosecutor’s responsibilities and how should they be fulfilled?

That some commenters have questioned whether the PTAB has authority to issue its estoppel rule, 37 CFR § 42.73(d)(3)(i). Should this have any impact on prosecutors’ behavior?

Speakers:

  • Jeff Hohenshell, Medtronic, Inc.
  • Stephen Kunin, Oblon
  • Scott McKeown, Ropes & Gray LLP



USPTO on Using Declarations Regarding Prior Art under the AIA

Webinar Date: 01/11/2018

It’s been five years since a new regulation regarding declarations was promulgated by the USPTO through 37 C.F.R. § 1.130. As patents prosecuted under the AIA begin to flow in larger numbers, practitioners would do well to understand the choices the USPTO has made in implementing those rules.

For instance, the USPTO has arguably taken a hard line on the issue of whether a section 102(b)(1)(B) or 102(b)(2)(B) exception regarding prior art applies. It has narrowly defined the provision that an exception applies when there has been a previous inventor-originated public disclosure of the same subject matter as that of a third party’s potential prior art disclosure, including when a third party discloses an obvious variant of the invention.

The USPTO is frequently having to make decisions on when to apply a section 102(a)(1) exception. This situation arises when prior art has another person’s name on it, e.g., along with the inventor’s. A declaration by the inventor is necessary to explain that the other person was, for example, a graduate student working under the inventor’s direct supervision.

Our panel features a Senior Legal Advisor at the USPTO, and chief IP attorney for a technology company, and a veteran patent prosecutor at a major law firm.

Speakers:

  • Kathleen Fonda, USPTO
  • Courtenay Brinckehoff, Foley & Lardner LLP
  • Gary Ganzi, Evoqua Water Technologies, LLC



Written Description in the Life Sciences after Amgen v. Sanofi

Webinar Date: 12/12/2017

Hatch-Waxman litigation with generic manufacturers has long been the focus of competition involving traditional small molecule drugs.  The litigation between Amgen and Sanofi regarding large molecule next-generation cholesterol drugs, however, illustrates the new prominence of innovator vs. innovator litigation in the pharmaceutical industry.  In these types of cases, the law of written description looms large because innovators might try to cover all possible drugs that focus on a biologic target while disclosing only a few examples of a possibly large genus.

The recent Federal Circuit opinion in Amgen v. Sanofi, reversing Amgen’s district court win, will have a significant impact from R&D labs to court rooms.  The Federal Circuit vacated a district court’s finding that Amgen’s claims for a genus of monoclonal antibodies were not invalid and a permanent injunction enjoining sales of Sanofi’s Praluent®- and remanded for a new trial.

The Federal Circuit also made new law that will influence pharma litigation outside of antibodies. The district court had excluded evidence about Sanofi and co-defendant Regeneron’s own products. The district court excluded the post-priority evidence because it “did not illuminate the state of the art at the time of filing.” The Federal Circuit, by contrast, explained that evidence showing that species disclosed in a patent are not representative of a claimed genus is in fact likely to postdate the priority date, and is able to prove inadequate written description.

Our panel includes the biotech counsel of a multinational innovator company, and two top litigators. They will discuss:

  • What is now needed by way of written description to create a valid patent on an antibody? The entire DNA sequence? Just the CDRs? The entire 3D structure?
  • How does Amgen v. Sanofi clarify the law beyond earlier cases such as Abbvie v. Janssen and Ariad v. Lilly?

How will pharma litigation change after the case, and how will it affect specific pending cases including challenges on Amgen’s Embrel®?

Speakers:

  • Jane Love, Gibson, Dunn & Crutcher LLP
  • Duane Marks, Eli, Lilly & Company
  • Irena Royzman, Patterson Belknap Webb & Tyler LLP



Definite Dysfunction: Functional Claiming after Mastermine Software v. Microsoft

Webinar Date: 12/06/2017

What happens when the Federal Circuit doesn’t follow the guidance of the Supreme Court? It puts patent prosecutors in a tough spot. Consider the Federal Circuit’s recent guidance on functional claiming in Mastermine v. Microsoft that reversed lower court’s finding of indefiniteness — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. That decision could provide helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class.

Some experts find it difficult to follow the Federal Circuit’s reasoning that distinguishes Mastermine’s claims as valid, and more fundamentally, worry that the Federal Circuit is disregarding the Supreme Court’s finding in Nautilus (2014) that a patent is indefinite if it doesn’t describe the invention with “reasonable certainty.” Already the PTAB has explained that it believes that the proper test for indefiniteness remains the test outlined by the Federal Circuit in In re Packard, which predates Nautilus. And lately, patent eligibility concerns usually limited to section 101 are cropping up in decisions regarding functional claiming. The panel will discuss this month’s decision BASF v. Johnson Matthew involving catalytic converter technology where the Federal Circuit reversed an indefiniteness finding.

Our panel will also discuss this tangled knot, and in untangling it, give their best advice for how patent prosecutors should proceed.

Speakers:

  • Charles Bieneman, Bejin  Bieneman
  • Dennis Crouch, University of Missouri
  • Scott McKeown, Ropes & Gray



Outsourcing Patent Work: Avoiding Pitfalls (Ethics)

Webinar Date: 11/16/2017

The patenting process demands many capabilities, from informed legal analysis about the future direction of the law on patent eligibility and indefiniteness to clerical data entry about filed applications. The global legal outsourcing industry has grown dramatically in the last 10 years to over $2 billion annually, as corporations and law firms try to disaggregate those disparate tasks and have them handled cost-effectively by different parties.

Outsourcing in itself does not, however, simplify the patenting process and presents its own pitfalls. This webinar will examine the possible hazards that can trip up customers of patent services, and what due diligence and supervision is required to do outsourcing correctly. Regulator and ethical monitors have identified many areas that can raise red flags including:

• Offshoring technical data in disregard of USPTO guidance;
• Improper fee-splitting;
• Monitoring suppliers for conflicts of interest;
• Getting the informed consent of the ultimate client; and
• Aiding and abetting the unauthorized practice of law.

Our panel includes the head of patent operations at a major multinational who has supervised patent service providers for many years, an India-based executive of a patent services provider, and an attorney who specializes in ethical issues facing IP lawyers and who represents them in disciplinary matters.

Speakers:

  • Mukundan Chakrapani, Clairvolex
  • Michael Gnibus, General Electric
  • Michael McCabe, IP Ethics Law



USPTO on Restriction Practice, Terminal Disclaimers, and Patent Term Adjustment

Webinar Date: 09/26/2017

Restriction requirement practice has assumed a new importance since the Federal Circuit decision in Gilead v. Natco three years ago, which found that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference. A restriction requirement lets a patent examiner categorize a patent application as containing multiple inventions and then restrict examination to just a “single” invention. Our panelists — an expert from the USPTO’s Office of Patent Legal Administration and two veteran and savvy patent prosecutors — will analyze the opportunities and pitfalls for patent prosecutors raised by restriction requirements, discussing such topics as:

  • After a restriction requirement, how can a patent applicant make sure that the subsequent application falls into the section 121 “safe harbor,” while also garnering the longest protection through patent term adjustment?;
  • What does it mean for claims in a new application to be “consonant” with those withdrawn from the earlier case?;
  • The new amendment to the Manual of Patent Examining Procedure that describes when a terminal disclaimer can be withdrawn; and
  • Lessons learned from cases such as Hagenbuch v. Sonrai (E.D. Ill. 2016) on the potential danger of filing an ill-worded terminal disclaimer, and Janssen v. Celltrion (D. Mass. 2016) on serious consequences from filing a continuation instead of a divisional.

Speakers:

  • Kathleen Fonda, USPTO
  • Jeffrey Hohenshell, Medtronic, Inc.
  • Kevin Noonan, McDonnell Hulbert Berghoff & Boehnen LLP



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

Webinar Date: 06/28/2017

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

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

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

Speakers: 

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



Pharma Lessons from the PTAB: Litigation and Prosecution 

Webinar Date: 06/08/2017

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

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

Speakers: 

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



Design Protection After Star Athletica: Way Beyond Fashion

Webinar Date: 04/13/2017

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

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

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

Speakers:

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



Divided Infringement in the Life Sciences: Patent Prosecution Perspective

Webinar Date: 03/16/2017

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

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




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

Webinar Date: 03/09/2017

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

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

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

Speakers:

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



Ex Parte Schulhauser and Claim Drafting for Computer-Implemented Inventions

Webinar Date: 03/01/2017

In the less than four months since the PTAB designated Ex Parte Schulhauser as a precedential decision last fall, the Board has cited it in more than three dozen appeals from USPTO patent application rejections. Schulhauser, the first ex parte appeal to be designated precedential since 2013, clarified the difference in scope between system and method claims with conditional limitations. That distinction is particularly important in claiming computer-implemented inventions, where patent prosecutors often rely on a combination of method, system, and apparatus claims. (Some life science patents also rely on this multiplicity.) Schulhauser clarified that no patentable weight is given to limitations in method claims that rely on a condition precedent that is not required to be performed — which means an examiner need only show that one of the two “paths” of the method claim is anticipated or obvious over the prior art. By contrast, under the broadest reasonable interpretation, the Board did give patentable weight to conditional limitations in Schulhauser’s system claim, because it recited “structure capable of performing all the recited functions.”

Our panel has examined the follow-on decision citing Schulhauser to provide insight into the varied types of method-claim limitations that have not been given patentable weight, including how to avoid emerging trigger words such as, “carrying out a step upon a threshold being exceeded,” “upon,” “whether,” or “when.” They will also discuss how these decisions extend Schulhauser’s holding to system, machine, and apparatus claims without means-plus-function limitations, and will give other relevant practice tips.

Speakers:

  • Christopher Francis, Bejin Bieneman
  • Scott McKeown, Oblon
  • Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



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.



BRI and Claim Drafting

Webinar Date: 12/09/2016

A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).

The panel, which also includes the USPTO expert and two different patent prosecutors, will consider in depth claiming options for a series of hypothetical inventions and accompanying prior art. They will discuss techniques such as using a figure in the application to overcome prior art and “incorporating by reference.”

Speakers:

  • Amir Penn, Brinks Gilson & Lione
  • John Phillips, Fish & Richardson, PC
  • Joseph Weiss, USPTO



BRI in Patent Prosecution

Webinar Date: 12/08/2016

A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).

The panel, which includes a USPTO expert and two patent prosecutors, will discuss practice tips for finessing the issues posed by BRI for patent prosecutors, relying on several PTAB and BPAI decisions of ex parte appeals. They also will discuss how to make sure an issued patent is not caught unexpectedly in the future by Section 112(f), and how to make the best of an existing application in which the specification is lacking but not open to broadening without a loss of priority date.

Speakers:

  • Charles Bieneman, Bejin Bieneman PLC
  • Sameer Gokhale, Oblon, McClelland, Maier & Neustadt, LLP
  • Joseph Weiss, USPTO



Design Patents: International Filing Strategies

Webinar Date: 11/15/2016

More companies these days feel the need for design patent protection in several countries outside the U.S. But complications are plentiful, pitfalls are many, and international harmonization efforts may offer false security. Our panel includes an in-house counsel with experience managing design patent prosecution in more than 15 countries plus the European Community, and two international design patent prosecution veterans. They will examine a number of issues that should be addressed in preparing an effective international filing strategy, including:

  • The significance of the “absolute novelty” standard in nations including China. No grace period means that any disclosure by the inventor or designer anywhere in the world, including in consumer testing and trade shows, is considered prior art before filing;
  • Differences in rules regarding partial designs, where only a particular feature is claimed;
  • Limits in enforceability, such as the “must fit, must match” and “hidden in use” exclusions;
  • Balancing cost and coverage.

Speakers:

  • John Cheek, Caterpillar, Inc.
  • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Robert Katz, Banner & Witcoff, Ltd.



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



Blockchain: What IP Lawyers Need to Know

Webinar Date: 08/23/2016

Will blockchain technology soon leap beyond its initial success in the currency Bitcoin to disrupt many industries and the legal profession itself? That remains to be seen. But companies and clients are curious about blockchain’s potential, regardless of its timetable or ultimate impact, and IP lawyers can benefit from a better understanding of the distributed ledger technology and its implications.

Our panelists include a legal pioneer who is the former General Counsel of the Bitcoin Foundation, the executive vice president of IP at a technology company specializing in digital watermarking who has questions about blockchain, and a patent litigator. After a brief introduction to the technology itself, they will discuss:

  • New Applications: Which industries beyond finance will embrace new blockchain applications – 3D printing and digital rights management, logistics and supply chain management, energy grid management, capital markets trading, real property transfers?
  • Smart Contracts: These are contracts written in source code, recorded on a blockchain and then automatically performed and enforced without the involvement of contracting parties or central authorities. Will smart contracts enter the mainstream? Do they challenge the basic principles of contract law, contract interpretation and the application of equitable principles
  • Security:  What is the focus of the debate about blockchain security?

The IP landscape of blockchain — Open source or proprietary?: Many founders of Bitcoin embrace open-source models, but at least one pioneer is reported to have recently filed patent applications on the building blocks of blockchain. Other companies are quickly trying to amass patent portfolios around blockchain applications. But questions about patent eligibility and obviousness loom. Are many blockchain patents and applications little more than the computerized and non-novel application of an “abstract idea”?

Speakers:

Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, 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




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




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



Conflicts of Interest in Patent Prosecution after Maling v. Finnegan

Webinar Date: 02/10/2016

The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”

Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.

Speakers:
Martin Kaminsky, Greenberg Traurig, LLP
Scott Markow, Stanley Black & Decker, Inc.
Michael McCabe, Funk & Bolton



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