Intellectual Property Owners Association

Serving the Global Intellectual Property Community


IP Chat Channel


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Intellectual Property Owners Association’s weekly
one-hour webinar series on current topics in IP


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Hosted and produced by
journalist Pamela Sherrid

2019 Scheduled Webinars

Extraterritorial Liability: Spotlight After WesternGeco 

Thursday, 17 January at 2:00PM-3:00PM ET 

The case law regarding extraterritorial liability for patent infringement is extraordinarily complicated ‒ and evolving.

Last year the Supreme Court decided WesternGeco v. ION, widening the scope of 35 U.S.C. § 271(f) by holding that once a domestic act of infringement has been proven under § 271(f)(2), damages resulting from the infringement may be recoverable regardless of where they occur in the world.

This month the Supreme Court asked for the views of the Solicitor General regarding the cert. petition in Texas Advanced Optoelectronic Solutions v. Renesas Electronics America. That case challenges the holding in TransOcean v. Maersk, a 2010 Federal Circuit opinion that found an offer to sell was “within the United States,” even though negotiation and execution of the contract took place abroad, when the two contracting entities were U.S. companies and delivery was to be in the U.S.

Our panel of experts will discuss how district courts have applied WesternGeco to date (including in Power Integrations v. Fairchild in the District of Delaware) and the open questions that remain. They will also analyze relevant case law at both the Supreme Court and the Federal Circuit. In addition, they will also address the challenges in litigating these issues. The cases to be discussed include:

  • Halo v. Pulse (Fed. Circ. 2014)
  • NTP v. Rim (Fed. Circ. 2005)
  • Microsoft v. AT&T (S. Ct. 2007)
  • Cardiac Pacemakers v. St. Jude Medical (Fed. Circ. 2009) and
  • Life Technologies v. Promega (S. Ct. 2017)


  • Danielle Joy Healey, Fish & Richardson, PC
  • Prof. Timothy Holbrook, Emory University School of Law
  • Thomas SaundersWilmer Cutler Pickering Hale and Dorr, LLP

Section 101: Revised USPTO Guidance on Patent Eligibility

Wednesday, 23 January at 2:00PM-3:00PMET

This webinar features the USPTO’s Deputy Commissioner for Patent Examination Policy, a top in-house counsel, and an experienced patent prosecutor.  They will analyze the USPTO’s revised guidance on patent eligibility that was issued earlier this month ‒ and discuss how the Office is expected apply the U.S. Supreme Court’s Alice/Mayo test for subject matter eligibility going forward.

The new guidance supersedes conflicting sections in the Manual of Patent Examining Procedure, prior guidance, and prior memoranda.  The panel will elucidate the key ways the new guidance is expected to impact criteria and procedures.  In addition, the panel will explore:

  • What some see as remaining ambiguities in the guidance, such as the determination of what constitutes a “practical application”
  • Arguments that could be made to examiners based on the new guidance
  • How to best make a request to file supplemental briefing to show how claims are compliant with the new guidance
  • The challenges the USPTO faces in interpreting Federal Circuit case law on this topic


  • Robert Bahr, U.S. Patent and Trademark Office
  • Gary Ganzi, Evoqua Water Technologies
  • Michelle Holoubek, Sterne, Kessler, Goldstein & Fox, PLLC

Summary Judgment After Berkheimer

Thursday, 31 January at 2:00PM- 3:00PMET


  • Chris Hughes, Cadwalader Wickersham & Taft LLP
  • Frank Nuzzi, Siemens Corp.
  • Jonathan Waldrop, Kasowitz Benson Torres & Friedman, LLP