Intellectual Property Owners Association

Serving the Global Intellectual Property Community


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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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.


  • 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.”


  • 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.


  • 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.


  • 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.


  • 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”?


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.


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.


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?


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.


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?


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.
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.

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.


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.


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.



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

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.


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

USPTO's After Final Consideration Pilot: Tips to Reach Allowance

Webinar Date: 11/19/2015

The USPTO recently announced that it is extending the After Final Consideration Pilot (AFCP), a compact prosecution initiative that authorizes additional time for examiners to search and to consider responses from a patent applicant after final rejection. Many applicants remain leery of this program that dates in its current form to 2013. But that skepticism may be misplaced. According to the USPTO, about 27% of the 122,882 AFCP requests since then have directly resulted in allowances, a result made possible by the fact that an applicant must file a non-broadening amendment to at least one independent claim to be eligible for the program. More than 60% of applicants in a recent USPTO survey said that using the AFCP reduced the likelihood a Request for Continued Examination (RCE) being filed. The applicants who fail to get an application allowed during AFCP are less likely to appeal. Appeal briefs are only submitted in 2.4% of AFCP applications, compared to 6% of cases with traditional after-final submissions.

Our panel features the group director of a USPTO Technology Center who practices in and helped develop the program, and two law-firm patent prosecutors, one specializing in electronics and the other in the life sciences. They will discuss which cases are best suited to the AFCP and which are not, giving real-life examples of successful cases that passed through the program and others that failed. They will also discuss another recently-extended USPTO program aimed at the later stages of prosecution, the Quick Path Information Disclosure Statement (QPIDS) program, which can let an applicant file an IDS after the issue fee is paid without paying for reopening prosecution through an RCE.


Tariq Hafiz, USPTO
David Longo, Oblon, McClelland, Maier & Neustadt, L.L.P.
Eli Loots, Knobbe, Martens, Olson & Bear, LLP

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?


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

Advance Conflict Waivers: How to Avoid Unpleasant Surprises

Webinar Date: 09/22/2015

CLE Ethic credits will be applied for

Law firms asking current clients for written permission to be averse to them in future matters is a custom of recent vintage, but now takes place frequently. Corporations large and small grant such waivers because they want to work with a specific law firm lawyer or because they don’t foresee a real threat of a conflict. But when push comes to shove, these waivers don’t do much to lessen bad feelings between client and law firm, and their enforceability is tested in court repeatedly. For instance, in one recent case, a magistrate judge in the Western District of Pennsylvania enjoined a law firm from representing a company that had launched an unfriendly takeover bid for another of the firm’s clients, despite the existence of an advance waiver between the law firm and the target company.

Our panel, consisting of a law school professor who specializes in ethics in IP practice, an in-house counsel at a major multinational, and a law firm litigator, will examine the status of such waivers under law and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both client and law firm.

Prof. Lisa Dolak, University of Syracuse School of Law
Jennifer Johnson, DuPont
Daniel Tabak, Cohen & Gresser

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

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

Elusive Global Patent Claims - Software and Info Tech Hardware

Webinar Date: 08/12/2015

Economic globalization continues, but patent owners still must reckon with differences among national and regional patent regimes that make it challenging to protect innovation across borders. Speakers will highlight key differences among law and practice that matter in their industry, and give examples when and how it is possible to tweak claims to meet foreign standards and when it is not.

  • How to work with statutory bans against software per se in Europe and China
  • “Inventive step” in Europe; “solving a technical problem” in China
  • Addressing flaws in foreign-drafted applications involving means-plus-function claims before submitting to USPTO
  • The European examiners requirement that all “essential features of invention” be within the claims?”
  • Differences in obviousness and written description standards


James Kulbaski, Oblon
Bo Li, CCPIT Patent and Trademark Law Office
Nicholas Malden, D Young & Co

Elusive Global Patent Claims - Life Sciences

Webinar Date: 08/11/2015

Economic globalization continues, but patent owners still must reckon with differences among national and regional patent regimes that make it challenging to protect innovation across borders. Speakers will highlight key differences among law and practice that matter in their industry, and give examples when and how it is possible to tweak claims to meet foreign standards and when it is not.

  • Methods of treatment (MOT) claims, including combination claims and dosage regimes; MOT v. “medical uses” in Europe, dealing with statutory ban on MOT claims in China
  • Methods of diagnosis claims
  • Personalized medicine and biomarkers
  • Need for more data support in China and Europe
  • Composition of matter claims and Section 101 concerns, including pursuing protection outside the U.S. for inventions that are not patent-eligible here


Michael Lin, Marks & Clerk
James Mullen, Morrison & Foerster, LLP
Edward Oates, Carpmaels & Ransford LLP

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.


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.


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

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.


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

Drafting Patents with an Eye to the PTAB

Webinar Date: 05/14/2015

Petitioner success in invalidating thousands of patent claims in the two-and-a-half years since the inauguration of the inter partes review means that every important patent needs to be drafted and prosecuted with an eye toward strengthening its chances at the PTAB. Because the patent owner’s preliminary response to an IPR petition cannot present new evidence, the ideal time to prevent a challenger’s IPR petition from being instituted is before the IPR is filed.

This webinar will give tips for patent claim and specification drafting that can go a long way to bullet-proofing a patent, as well as advice on savvy prosecution strategy using declarations, continuation applications, reexamination, and reissue. For instance, submitting arguments and declarations supporting §112 and §103 positions during patent prosecution will give the patent owner a powerful defense for use, if needed, in an IPR. Such declarations can be used to make the argument for non-obviousness, for instance, by supplying evidence of commercial success that otherwise would not be available at the PTAB.


Courtenay Brinckerhoff , Foley & Lardner
Michelle Macartney, Intellectual Ventures
Thomas Rozylowicz, Fish & Richardson

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.


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.


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

IP5 Global Dossier: A New Era in Global Patent Prosecution?

Webinar Date: 04/02/2015

This spring marks the debut of the IP5 Dossier, an international cooperative effort of the patent offices of the U.S., Europe, China, Japan, and Korea. The Dossier is a new software platform on which the government agencies will share work. Patent applicants are also expected to benefit. They will eventually gain the ability to cross-file, plan, execute, and monitor filings in multiple countries from a single on-line portal, promising a big improvement from the duplication of effort now required to file in multiple countries.

USPTO examiners will have access to the first phase of the IP5 Dossier this spring, with access to external stakeholders following this summer. Our panel includes a USPTO official involved in the development of the Dossier and its roll-out, as well as a well-informed law firm attorney and an in-house counsel who will be in a position to make use of the dossier. They will discuss the implications of the new system for corporations and law firms. They also will discuss the Common Citation Document (CCD), which consolidates the prior art cited by all participating offices for the family members of a patent application.


Don Levin, USPTO
Samson Helfgott, Katten Muchin Rosenman LLP
John Treangen, Dow Chemical

Ex Parte Reexam: New Tactics, Old Tool

Webinar Date: 02/13/2015

Ex parte reexamination was once the only way to challenge patents at the USPTO that were issued from applications filed before November 29, 1999. Since 2012 and the AIA, filings for ex parte reexam have slumped by 50 percent, as challengers quickly embraced inter partes review as a superior way to demonstrate unpatentability.

But reexam filings have started to climb again. The older proceeding has emerged with new virtues for both challenger and patent owner in the jab and counter-jab of litigation and IPR. For challengers, for instance, ex parte reexam is a way to get additional prior art in front of the USPTO that the PTAB won’t include in an IPR, or to interpret the same prior art differently after the patent owner has taken a stand in response to an IPR petition. For the patent owner, reexam has emerged as a better place to amend claims than the PTAB. What’s more, those amended claims may be insulated from IPR from the same parties. According to the PTAB, amended or new claims inserted into a patent as part of a reexamination proceeding do not result in a “new patent” and thus the one-year bar erected by
35 U.S.C. § 315(b) continues to run from the date of an original suit against an accused infringer.

Our panelists analyzing reexam’s new role will be a law firm lawyer who has recently filed ex parte rexams on behalf of a challenger, an in-house counsel active in post-grant matters, and the former head of the USPTO’s Central Reexamination Unit.


Matthew Berkowitz, Kenyon & Kenyon LLP
Mollybeth Kocialski, Oracle Corporation
Lissi Mojica, Dentons US LLP

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.


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.


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

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.


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

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


  • 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?


  • 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.


  • 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.


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

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


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

Amending Claims: Assessing the Options Right Now at the USPTO

Webinar Date: 05/23/2014

Amending Claims: Assessing the Options Right Now at the USPTO
Thursday, May 22 at 2:00pm ET

The window for amending claims in new inter partes review (IPR) proceedings at the Patent Trial and Appeal Board has proved so narrow that no patent owner has yet climbed through. So, following the advice of the PTAB, patent owners who are targeted in IPRs (as well as those targeted in covered business method proceedings) have begun initiating patent reissue and reexamination proceedings in order to protect their IP.

This webinar will examine all the options for amending claims available at the USPTO in light of the most recent decisions of the PTAB and the USPTO’s Central Reexamination Unit (CRU.) Optimizing the chances for success requires some less-than-obvious considerations. For instance in one ongoing IPR, the petitioner tried to quash the patent owner’s co-pending request for ex parte patent reexamination, arguing that the filing was an effort to do an end-run around the constraints of the PTAB. As it turned out, the CRU itself denied reexamination – even though on the very same day the PTAB issued its order denying the petitioner’s motion. The CRU’s denial order stressed the difference between the two standards of Likelihood of Prevailing in IPR and Substantial New Question of Patentability in reexam.

Meanwhile, the PTAB in its recent AIA roadshows has been coaching patent owners on the mechanics of amending claims in an IPR and hinting broadly that a patent owner will succeed in doing so before too long. The USPTO has long justified its broadest reasonable interpretation in claim construction in IPRs by pointing out the possibility of amendment, an option not available in district court. So the moment might be good for very well-prepared patent owners to try to amend claims.


  • Scott McKeown, Oblon Spivak McClelland Maier & Neustadt, PC
  • Lissi Mojica, Dentons US LLP
  • Karl Renner, Fish & Richardson, PC

The Internet of Things (loT): IP Challenges in a Connected World

Webinar Date: 04/30/2014

Last month brought another signal of the promise of an Internet of Things (IoT), when AT&T, Cisco, GE, IBM and Intel announced the formation of the Industrial Internet Consortium (IIC), an open membership group that hopes to identify common architectures to connect smart devices, machines, people, processes and data. This comes after Google’s $3.2 billion acquisition earlier this year of Nest, a pioneer in energy-saving connected thermostats, and General Electric’s prediction that the IoT market over the next 20 years could add as much as $15 trillion to global GDP, roughly the size of today’s U.S. economy.

This large industrial shift will raise important issues involving intellectual property. Our panel includes IP lawyers from two of the founding corporate members of the IIC and a law firm professor who is an expert on standards and is counsel to the Internet Engineering Task Force. They have identified questions that are likely to command attention in the future from IP lawyers involved in the IoT:

  • Who owns the data? The IoT envisions refrigerators that know when a household is running low on milk and automatically order more. To whom does that information about that process belong: the consumer, the refrigerator manufacturer, the food retailer, or someone else?
  • How will standards operate in the IoT? Many small groups are popping up to set standards on specific aspects of protocols involved in the IoT. Will they consolidate? And will standard-setting bodies involved in the IoT learn lessons from the disputes that have roiled the telecom space regarding standard-essential patents and “fair, reasonable, and non-discriminatory” (FRAND) licensing terms?
  • How is the patent landscape in IoT shaping up so far?

What changes in patent law could mold the IoT? The U.S. Supreme Court is already considering this term in a case of considerable importance to the IoT, Limelight v. Akamai . In question is a Federal Circuit opinion that changed the standard for inducing infringement by overruling the long-standing precedent that induced infringement requires all the infringing steps be performed by one party.


  • Marc Sandy Block, IBM Corp.
  • Jorge Contreras, American University Washington College of Law
  • Scott Gilfillan, Intel Corp.

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.


  • 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.


  • 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


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


  • 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.


  • 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.


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

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.


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

Patent Peace in Open Source?

Webinar Date: 12/19/2013

Free and open source software (FOSS) licenses aim to foster non-aggression among patent owners whose patents read on technology licensed under the FOSS license. The most important clauses include the outbound license (where each contributor grants other licensees a royalty-free patent license to all of its contributions to the source code or object code under the FOSS license) and the patent retaliation clause (which states that if a company initiates patent litigation against a FOSS contributor using software patents, then its own FOSS license terminates.)

This webinar will focus on the fastest growing FOSS license, Apache 2.0. Open source projects using the Apache license are key to the growth of cloud computing, and include many of the most dynamic areas in software, including Hadoop, an open source project that is the bedrock of much of Big Data, and OpenStack, which has become widespread in data center management.

But experts say that the patent terms in Apache licenses amount to a ticking time bomb and that they are likely to be litigated in the future. Our panel will examine patent clauses in FOSS licenses, and in Apache in particular. They will also consider, among other things, what a corporation should consider in joining an open source project and the role of supplemental IP mechanisms to support FOSS such as pledges and cross-licenses.


  • Carolyn Adler, Hewlett-Packard Co.
  • Keith Bergelt, Open Invention Network LLC
  • Theodore McCullough, EMC Corporation

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?


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

Harvesting Inventions: Best Practices Under First-to-File

Webinar Date: 11/14/2013

In the old first-to-invent regime, if necessary, corporations could rely on the chronology of lab notes to serve as a marker of the date of invention of any given new compound or method. But that security is history in the new world created by the America Invents Act. This webinar will focus on the discipline required to rigorously harvest inventions from R&D into patent applications under first-to-file. Our panel includes the top patent counsel of a large technology-driven multinational and two law firm attorneys with broad experience in IP strategy. They will discuss:

  • Practical tips for regularly scheduled meetings with inventors, including dealing with creative self-deprecators who view anything they did last month as not “new.”
  • How to reduce filing time and inculcate a corporate-wide harvesting culture, taking into consideration newly acquired units and different R&D styles.
  • Incorporating IP strategy into the R&D process, with inventors thinking about it early on. For example, what might be more likely to be kept as a trade secret? In some industries, copyright vs. patent should be considered.
  • The increased imperative to understand competitors’ portfolios of patents and patent applications, in part to take advantage of new opportunities to challenge patents post-grant.
  • How to react to the need to “invent patents” in response to the concerns of investors, shareholders, as part of a defensive litigation strategy, or simply because new competitors in China and elsewhere are adding patents at a furious clip.


  • Joseph Berghammer, Banner & Witcoff, Ltd.
  • Stuart Meyer, Fenwick & West LLP
  • Dennis Skarvan, Caterpillar, Inc.

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


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

Post-Grant Review -- Coming Soon

Webinar Date: 10/16/2013

The first patents issuing from applications subject to the first-inventor-to-file provisions of the AIA are likely to emerge from the USPTO in the next few months. That also signals the debut of post-grant review, the third in the trio of post-grant proceedings created by the 2011 law (the first two being the program to challenge covered business method patents and the already popular inter partes review.)

Post-grant review is targeted at newly-issued patents within nine months of issuance. But unlike inter partes review, in which a patent is scrutinized only against newly-submitted prior art consisting of patents or printed publications, the challenger in post-grant review can ask the PTAB to review the patentability of claims on any ground, including Section 101 (subject matter eligibility), Sections 102/103 (anticipation/obviousness, including unpublished materials), Section 112 (written description, enablement, indefiniteness), and Section 251 (claim broadening). In this aspect, post-grant review more resembles an opposition proceeding in Europe.

Our panel includes a PTAB Judge, and an in-house counsel and law firm attorney who are both experienced in AIA post-grant proceedings at the PTAB and in European opposition. They will consider the ways in which PGR is likely to develop, including whether certain industries are liable to be targeted; how to avoid pitfalls in pursuing parallel challenges in the U.S. and Europe; the deterrence of the estoppel provisions; and important implications for a company if it steps up the monitoring of competitors’ patent applications.


  • Hon. Jennifer Bisk, Patent Trial and Appeal Board, USPTO
  • Mark Charles, Procter & Gamble Co.
  • Marc Wefers, Fish & Richardson, PC

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.


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

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


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

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.


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


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

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?


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

New USPTO Rules of Conduct

Webinar Date: 06/06/2013

A major overhaul of the USPTO Rules of Professional Conduct went into effect on May 3rd. This change probably is welcome for most attorneys because the new USPTO
Rules seek to conform the ethical obligations for representing others before the USPTO to the ABA Model Rules of Professional Conduct, which have been adopted in some form by every state (except California) and the District of Columbia. Until this revision, the USPTO rules were based on an outdated ABA Model Code from 1980.

However, practitioners need to pay attention to some important differences between the ABA rules and the current USPTO Rules, as well as to some new potential ethical dilemmas created by the AIA. Our panel includes an in-house prosecution counsel for a major international energy company, a law firm patent prosecutor specializing in computer-related inventions, and an attorney in the USPTO’s Office of Enrollment & Discipline. They will consider:

  • the ethical quandary lawyers may face because of conflicts between the rules’ requirement for full disclosure to the USPTO and the obligation of confidentiality to clients
  • the ethics implications of the new Supplemental Examination proceeding created by the AIA
  • the AIA’s elimination of the best mode invalidity defense in litigation and the implications for practice before the USPTO
  • the duty of patent prosecutors to research the ownership of patents and patent applications to avoid client conflicts-of-interest
  • new requirements for financial record-keeping


  • Glenn Barrett, Exxon Mobil
  • Bradley Forrest, Schwegman Lundberg & Woessner
  • James Silbermann, USPTO

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.


  • 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


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


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.


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


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.


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

3-D Printing: IP Challenges Ahead

Webinar Date: 03/25/2013

3D printing has burst into the public consciousness. Creating an object by layering thin layers of material, one on top of the other – “printing” in three dimensions – promises to deliver big gains in manufacturing efficiency with far less waste. It also has the potential to unleash creativity, allowing, for instance, the far more rapid and inexpensive creation of prototypes.But as the potential of 3D printing becomes more apparent, so does its potential to disrupt existing business models and legal frameworks. The looming analogy: the effect of the video recorder and digital files on the music, film and other media industries, still reeling from the impact of copying and low-cost distribution.The turbulent cultural and political history of the “copyright wars” to date is also sure to influence the evolution of 3D printing.This webinar will examine the challenges 3D printing poses to owners of IP, including patents, copyright, and trademarks.The panel includes an in-house patent counsel at a major international equipment company, a copyright attorney with specialized knowledge of open source software, and a public interest lawyer specializing in digital rights. Among the topics they will consider:

  • How much patent infringement will take place thanks to 3D printing, and what efforts will patent owners take to enforce their patents as a result?
  • Will 3D industry players, such as printer manufacturers, makers of scanners, and printing services, be found liable for inducement of infringement?
  • How does copyright intersect with 3D printing and to what extent does the Digital Millennium Copyright Act apply?
  • How will 3D printing affect the value of trademarks?


  • John Cheek, Caterpillar Inc.
  • Mark Radcliffe, DLA Piper
  • Michael Weinberg, Public Knowledge

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.


  • 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?


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

Patent Prosecution Dilemmas Under the AIA: Unanswered Questions After the USPTO’s Final Rules

Webinar Date: 02/28/2013

The long-awaited final rules and examination guidelines on first-to-file published by the USPTO on February 14 offered some welcome clarity to patent prosecutors. But the final rules also underline that the AIA regime places weighty burdens on patent prosecutors to make new declarations. It also poses new dilemmas regarding “what’s enough” to tell the PTO versus “what’s too much.” These changes may require a recalibration of the relationship between corporate inventors and law firm patent prosecutors.

Our panel will discuss:

  • The new obligations to make declarations in two situations: regarding “new matter” in an application that straddles the pre- and post-AIA regimes, and regarding intervening publications derived from an inventor disclosure.
  • What will happen if an examiner disagrees with the conclusions of the applicant’s declarations? Is an appeal to the PTAB a realistic course?
  • Will changes in the on-sale bar require corporate clients to disclose to patent prosecutors all commercial activities, including secret sales?
  • How much evidence will patent prosecutors have to be aware of and submit to the PTO to show that an invention was the result of a joint development agreement?

Our panel includes two expert patent prosecutors with differing industry specialties, and a managing IP counsel for a multinational technology company.


  • Gary GanziSiemens Corp.
  • Peter LandoLando & Anastasi, LLP
  • Erika ArnerFinnegan, Henderson, Farabow, Garrett & Dunner, LLP

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.


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


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

Global IP Protection and the Transition to the AIA

Webinar Date: 01/17/2013

IP owners who regularly file for patent protection overseas may run into special difficulties in the transition when new U.S. patent application rules come into effect in March.

Consider, for example, an applicant who files a British priority application in May 2012 and then files a PCT designating the US and claiming priority to that British application in May 2013. With application priority and filing dates on either side of the March 16 effective date for the AIA, the PCT application could be examined in one of three ways once it enters the U.S. national stage, depending on whether it includes disclosures not present in the British priority application and depending on how the original PCT claims are drafted. A special case arises where the original PCT claims include some claims fully supported by the British application and some claims that rely on the newly added matter for support.

Our speakers will also consider how the change in the definition of prior art in the AIA will impact international patenting strategy. Under the AIA, prior art is measured against the first effective filing date anywhere in the world, not against the first U.S. filing date. Thus managing the subject matter in foreign applications becomes a major concern. The panel includes the head of patent prosecution at a technology multinational and two top law firm patent prosecutors, one based in Washington and one in Brussels.


  • David Arthur, Xerox Corp.
  • Richard Treanor, Oblon Spivak McClelland Maier & Neustadt, LLP
  • Anthony Tridico, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

European Unitary Patent: An Update

Webinar Date: 01/10/2013

Propelled by a breakthrough vote in the European Parliament in December, a new Unitary Patent for Europe is expected to launch next year, perhaps as early as January 1, 2014. Agreed to after decades of debate, the new system is designed to let patent applicants gain simultaneous protection in all of the 25 Member States participating in enhanced cooperation. Concurrently, Europe hopes to launch a Unified Patent Court through which a patent can be asserted across the EU and enforced with a single court ruling.

The European Patent Office is charged with many new tasks in the new system, from examining applications to registering patents and collecting annual fees. Our panel features an EPO official who is working on implementation, as well as two U.S. lawyers who have thought through issues of concern to U.S. companies. The panel will discuss how both the new patent prosecution and court systems will work, and what the change is likely to mean for patent rights and litigation globally.


  • Paul Coletti, Johnson & Johnson
  • Margot Fröhlinger, European Patent Office
  • John Pegram, Fish & Richardson, PC

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.


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

Material Transfer Agreements: Best Practices & Pitfalls

Webinar Date: 11/29/2012

A Material Transfer Agreement (MTA) governs the transfer of tangible research materials between two organizations, and defines the rights of the provider and the recipient. The woes that can result from an ineffective MTA are highlighted by the recent petition for certiorari to the U.S. Supreme Court in Bard v. Gore, a long-running infringement dispute that started when Gore provided Bard with a material to see if it could become a blood graft. In her dissent to the Federal Circuit opinion, Judge Pauline Newman describes what can happen without a good MTA: “…A person who performs the requested test of a material that is provided to him for testing for a specified use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested.”

Our panel will focus both on best practices in MTAs and avoiding pitfalls. Their discussion will include contract negotiations and provisions regarding:

  • Confidential information to make sure the recipient does not suffer contamination of its own IP
  • The permitted uses of the materials in experiments
  • IP issues, including who will own the IP created by experiments, and agreements regarding research publication and patent applications
  • Liability protection for the provider
  • Termination, including the return or destruction of the material
  • Issues unique to agreements with universities and other institutions receiving federal funding

Our panel includes a university technology transfer specialist, a biotech transaction lawyer, and an in-house counsel for an energy company.


  • David Giannantonio, Emory University Office of Technology Transfer
  • Charles Hoyng, Latham & Watkins LLP
  • Michael Kolman, BP America, Inc.


Ethics-Related Implications of the AIA

Webinar Date: 10/23/2012

IPO will apply for Ethics CLE for this webinar.

Last year’s major revamp of the patent laws opens up additional risks to practitioners. This webinar will analyze the key changes spurred by the AIA that open new ethical challenges, including:

• the ethical implications of supplemental examination, the new post-grant proceeding that gives patent owners the opportunity to cure flaws in a patent but puts specific individuals at risk;
• the elimination of the best mode defense;
• practice before the Patent Trial and Appeal Board; and
• the new statute of limitations for disciplinary actions.

Our panel includes a leading academic expert on ethical issues in IP, a senior patent lawyer and litigator from a general practice firm, and the founder of an IP boutique who was formerly the top in-house patent counsel for a large technology company.


  • Prof. Lisa Dolak, Syracuse University, School of Law
  • David McCombs, Haynes & Boone
  • Howard Skaist, Berkeley Law & Technology Group

Choosing a Patent Regime: Do you File on March 15 or March 16?

Webinar Date: 10/16/2012

Every user of the patent application process at the USPTO is facing an important decision point. Do you file a patent application by March 15, 2013 and get your invention in under the existing rubric of first-inventor-to-file, or do you wait until the next day and apply under the new first-to-file regime established by the AIA?

This webinar will tease out concerns that should be considered in this decision, including issues regarding prior art, the grace period, continuation applications, and post-grant procedures. Our panel will identify circumstances in which applications should definitely be made before the change; those in which it is clearly better to wait for the new regime; and situations which represent tough, borderline judgment calls. They will also explore circumstances that may make it possible to have the best of both worlds.


  • Peter Thurlow, Jones Day
  • Marian Underweiser, IBM Corp.
  • Thomas Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Supplemental Examination: Rules and Strategy

Webinar Date: 09/18/2012

This new post-grant procedure, commencing this month, allows patent owners to ask the USPTO to consider, reconsider, or correct information believed to be relevant to a patent so that the patent cannot be held unenforceable based on conduct relating to that information. In this way, for instance, the purchaser of a of patent can clear the way for enforcing it by lowering the risk of being charged with inequitable conduct. The new law includes provisions for pursuing any wrongdoers in the original prosecution.

In supplemental examination, the patent holder may explain why the new information does or does not raise a substantial new question of patentability (SNQP). If the PTO finds an SNQP, it will issue a supplemental certificate and institute an ex parte reexamination. This panel, which includes a top USPTO official, will discuss the final rules and when a patent holder would be well advised to ask for supplemental examination, balancing the risks and benefits.


  • Robert Bahr, USPTO
  • Courtenay Brinckerhoff, Foley & Lardner LLP
  • Kurtis MacFerrin, Google, Inc.

Inter Partes Review: Rules and Strategy

Webinar Date: 09/05/2012

This new post-grant opposition procedure, which commences this month, gives competitors a new, speedier way to challenge the validity of a patent. Our panelists, who include an administrative judge at the new PTAB, will focus on the final rules and such topics as estoppel, costs, and related stays in litigation. Their discussion of strategy will include when to launch an inter partes review in light of other alternatives, the nature of the trial at the PTAB, how to defend the patent, and how to manage teams that include litigators who have not previously practiced at the USPTO.


  • Hon. Sally Medley, Administrative Patent Judge, USPTO
  • Kevin Laurence, Stoel Rives, LLP
  • Scott Markow, Stanley Black & Decker, Inc.

Challenging a Patent Application: Preissuance Submissions to the USPTO

Webinar Date: 08/16/2012

The new procedure for third-party preissuance submissions on patent applications that commences next month has promised to improve the quality of patents issued by the USPTO. This webinar will give insights into the final rules published by the USPTO in July, and discuss practical strategies for deciding whether and how best to file a preissuance submission of prior art on the patent application of a competitor or potential competitor.

Our panel includes a USPTO official who will answer questions about the rules and how examiners plan to use the submitted prior art. It also includes a skilled patent prosecutor and an in-house IP counsel with wide-ranging experience in IP management. They will consider both the upside of using the process, such as the relatively low cost compared to post-grant procedures and the absence of estoppel, and its limitations, such as the early timing and often narrow window for such submissions which will prevent third parties from submitting prior art specifically directed at fully-developed claims.


  • Nicole Haines, USPTO
  • Patrick Jewick, Kilpatrick Townsend & Stockton, LLP
  • Rodney Young, Medtronic, Inc. 

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.


  • 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.


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

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.


  • 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.


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


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

In the Cross-Hairs: The Transitional Program for Covered Business Method Patents under the AIA

Webinar Date: 04/26/2012

One of the more important provisions of the AIA that starts in September is a special proceeding at the USPTO to challenge the validity of covered business method patents. The new proceeding permits submissions of evidence of prior knowledge or use of the invention, among other things.  The procedure even allows defendants to challenge patents that have already been re-examined. The law also makes the proceeding more attractive to patent challengers by limiting its estoppel effect.

Our panel will consider the following issues:

  • The program notably excludes patents for “technological inventions.” How will that exclusion be applied in practice? Earlier this year the PTO proposed a definition on which IPO and others submitted comments.
  • The program covers inventions “used in the practice, administration or management of a financial product or service.”  How will the term “financial product or service” be interpreted?
  • The law says that to challenge a patent, a company must be either “sued” or “charged with infringement.”  How will the USPTO and courts deal with this limitation? Is the right to challenge
  • The law allows interlocutory appeals to the Federal Circuit from district court decisions on whether to stay an action because of a pending proceeding on a business method patent. How will this provision, and the provision regarding estoppel, affect patent infringement litigation concerning business method patents?

Our panel includes an in-house counsel from a company with business method patents, and two law firm attorneys with a special interest in protecting or challenging such patents.


  • Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Michael Chernoff, Accenture
  • Steven Weisburd, Dickstein Shapiro LLP

ACTA: What Will Be Different for Owners of U.S. IP?

Webinar Date: 04/15/2012

The last round of negotiations among major trading partners are concluded, and The Anti-Counterfeiting Trade Agreement (ACTA) is almost ready for President Obama’s signature.

But serious questions remain. The new international framework is designed to help IP owners by combating the global proliferation of commercial counterfeiting and piracy. But some of the very companies ACTA is trying to help are troubled by some of its possible implications. For instance, in responding to the USTR request for comments on the final text of ACTA, IPO wrote that “our principal concern with the language used throughout the present draft of ACTA is that it might be interpreted so as to blur the vital difference between what constitutes counterfeiting and piracy per se, from what is merely civil infringement.” For instance, some experts say that ACTA would provide for the seizure of infringing goods in run-of-the-mill disputes involving substantially similar trademarks. What’s more, the definition of IP within the agreement is so wide that that the infringement of patents and
industrial designs could end up being criminally enforceable offenses under U.S. law.

The webinar will consider such questions as:
• Once adopted, what will ACTA change for U.S. companies that are trying to protect their IP?
• Are there any provisions in ACTA that will require a change in existing U.S. law?
• What will be the role of the U.S. IP Czar in relationship to ACTA?
• What is the relationship between ACTA provisions and anti-counterfeiting legislation now under consideration in the U.S. Congress?
• What are the remaining steps to adoption in the U.S. and in other countries?

The panel is comprised of the USTR official who led negotiations for ACTA, the USPTO lead technical adviser on ACTA, and a law firm attorney specializing in digital technology and government relations who has represented clients’ interest during the ACTA negotiations.


Stanford McCoy, Office of the U.S. Trade Representative
James Burger, Dow Lohnes
Peter Fowler, USPTO

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.


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

The FDA’s Guidance on Biosimilars: Understanding the Impact on Patent Prosecution and Litigation

Webinar Date: 03/22/2012

In February the Federal Drug Administration issued the first three draft Guidances on the development and approval of biosimilar products under the Biologics Price Competition and Innovation Act of 2009. As expected, the FDA retained a lot of discretion to evaluate different biosimilar products by varying criteria depending on the science involved, leaving unclear what will be needed for approval in any specific instance.

However, the new FDA guidance does give some important clues on how innovator companies should proceed in their patent prosecution to best evade biosimilar threats. Likewise they give companies planning to enter the biosimilar market (sometimes a corporate entity that is also an innovator) hints on how to direct their patent and scientific strategy.

Our panel includes the chief counsel for IP at the Federal Trade Commission, who will give her views on patent litigation and the biosimilar marketplace, as well as the assistant general counsel of a large drug company and a law firm expert on FDA regulation.


  • Henry Hadad, Bristol-Myers Squibb Company
  • Erika Lietzan, Covington & Burling LLP
  • Suzanne Munck, Federal Trade Commission

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


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


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.


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

Making the Move to First-to-File

Webinar Date: 01/18/2012

The change to a first-to-file (FTF) patent system was the biggest headline after the passage of patent reform law last year. But because the legislation also contained so many other complex provisions and FTF doesn’t kick in for many applications until March 16, 2013, it has been easy to put off addressing specific legal and operational options FTF puts in play. Experts caution, however, that the time to be thinking about those changes is now. Even companies that are used to FTF practices overseas may need to change their ways, given that they no longer will have the backstop of securing the U.S. market by being first-to-invent.

Our panel of experts will:
• Give recommendations on how companies can restructure their invention disclosure and priority filing systems, including consideration of trade secret protection.
• Consider how the new U.S. first-to-file system will be different than those that now exist internationally, and how those differences should be dealt with operationally.
• Focus in detail on the advantages and risks of provisional applications, particularly in light of the recent more-stringent requirements regarding description and enablement required by by courts and the USPTO .
• Discuss the special challenges FTF poses for biotech and other life sciences companies.
• Suggest strategies for investors with relatively limited R&D resources, such as inventors and universities.

Our panel includes the head of IP at a major biotech company, an international patent expert, and a law firm attorney among whose clients include number many startup companies and universities.


Ned Israelsen, Knobble Martens Olson & Bear, LLP
Stuart Watt, Amgen Inc.
Harold Wegner, Foley & Lardner, LLP