Intellectual Property Owners Association

Serving the Global Intellectual Property Community


IP Chat Channel – Patent Litigation

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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Section 101: Revised USPTO Guidance on Patent Eligbility

Webinar Date: 01/23/2019

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

Extraterritorial Liability: Spotlight After Western Geco

Webinar Date: 01/17/2019

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 Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP

Inequitable Conduct After Regeneron: What Litigators, Patent Prosecutors, and Patent Owners Need to Know

Webinar Date: 01/10/2019

*CORRECTION:  In Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron.  [An earlier IPO webinar announcement on Jan. 4 inaccurately described the court’s decision.]


A Federal Circuit decision in 2017 found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. This widened the scope of possible inequitable conduct claims, which traditionally focused only on the prosecution of the patent before the USPTO. 

  • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron. 

Critics of the decision hoped first for an en banc rehearing by the Federal Circuit — and then that the Supreme Court would grant Regeneron’s petition for certiorari. Those hopes were dashed late last year. 

This webinar features experts who will assess Regeneron’s significant ongoing impact on litigation and patent prosecution. The panel includes a patent prosecutor who urged the Supreme Court to grant cert. to Regeneron, a leading academic expert on legal ethics and IP, and a patent litigator who represented Therasense at the en banc Federal Circuit in Therasense v. Becton Dickenson (2011), a case that raised the bar for proving inequitable conduct. The panelists will discuss: 

  • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron. 
  • Howmedica Osteonics v. Zimmer, in the District of New Jersey (2018), where the court granted the defendant’s motion for $13 million in attorney fees and costs in part because of plaintiff’s inequitable conduct before the USPTO 
  • The relationship between materiality under Therasense, the court’s claim construction, and the prosecutor’s judgment about what is cumulative 
  • Approaches that may be taken by defendants’ experts at trial 
  • The reinforced imperative for patent owners who are plaintiffs to closely oversee aggressive litigation counsel 


  • Prof. David Hricik, Mercer University School of Law  
  • Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP  
  • Rohit Singla, Munger, Tolles & Olson LLP

International Post Grant Practice: Strategic Considerations Before the USPTO, EPO and CNIPA

Webinar Date: 01/03/2019

This webinar will highlight the differences and similarities in post-grant practice in front of three leading patent authorities, as well as strategies that can lead to global settlement in licensing negotiations.  It will also review effective defensive strategies for patent owners, both in patent drafting and in litigation.  With U.S. inter partes reviews (IPRs) and post-grant reviews (PGRs) under the AIA, U.S. post-grant practice has joined European Patent Office opposition as a key component of global IP strategy.  Meanwhile, interest in China as a venue for patent litigation continues to grow. 

Coordinating post-grant challenges overseas effectively requires a detailed understanding of the variations between systems.  For instance, some have noted that in Europe and China, opposition can be used with little risk as a testing ground for the presentation of arguments that could be used in litigation.  But a substantial limitation of an EPO opposition is that it must be filed within 6 months of a patent being granted.  By contrast, in China, a petition to invalidate a patent can be brought at any time after grant. 

Our expert panel includes an in-house counsel who oversees post-grant challenges at a U.S. technology company, a European patent attorney who often practices before the EPO, and a Chinese patent attorney with varied experience before SIPO (now known as the China National Intellectual Property Administration or “CNIPA”).  They will discuss: 

  • Considerations in deciding where to bring an overseas challenge ‒ and in what order proceedings should be brought 
  • Monitoring competitors’ patent issuance, internal product launch considerations, and the desire for freedom to operate 
  • The potential ramifications of translation errors in Chinese patents 
  • The impact of shrinking patent pendency at the EPO 
  • Specific techniques for strengthening patents against post-grant challenges in each jurisdiction 


  • Stephen Bauer, Medtronic  
  • Jim DennessAbel & Imray  
  • Toby Mak, Tee & Howe Intellectual Property Attorneys  

Enforcing Global Patents: Global Strategies and Tactics

Webinar Date: 12/13/2018
Considering the invalidation risk of AIA post-grant proceedings, the uncertainty about patent eligibility after the Alice and Mayo U.S. Supreme Court decisions, as well as the difficulty in getting an injunction after eBay, many experts have concluded that successfully enforcing a patent in the U.S. is a much harder task than it was a dozen years ago. 

Some patent owners with international patent portfolios have decided to litigate in other countries which they see as more patent friendly, instead of, or in addition to, pursuing litigation the U.S. This shift has seemingly contributed to a documented spike in patent cases filed in EU countries, most of them in Germany.  

This webinar features a U.S.-based IP executive who has carried out a successful patent enforcement campaign in Europe, a litigator based in Silicon Valley with experience in European courts on behalf of U.S. clients, and a leading German patent litigator with many multinational clients. Drawing on their first-hand experiences, they will discuss: 

  • The decisions necessary before launching foreign litigation 
  • Important differences between legal systems 
  • Using foreign litigation to encourage global settlement 
  • The reality of what it takes to enforce an injunction in Germany 
  • Whether European decisions make any impact on U.S. courts 
  • The risk that foreign litigation could backfire in the U.S. 


  • Steven Carlson, Robins Kaplan LLP 
  • Johannes HeselbergerBardehle Pagenberg 
  • Boris TekslerConversant Intellectual Property Management

FRAND: The Latest Developments and Predicting the Future SEP Landscape

Webinar Date: 12/06/2018

In recent months, case law is continuing to develop in the evolving jurisprudence surrounding standard essential patents (SEPs) in the U.S. and elsewhere. 

In November, the U.S. District Court for the Northern District of California issued an order granting in part the FTC’s bid for summary judgment in its unfair competition case involving Qualcomm. The order addressed the issue of whether, under industry agreements to license SEPs at rates that are fair, reasonable, and nondiscriminatory (FRAND), Qualcomm had to license its essential patents to competing modem chip suppliers. 

Unwired Planet International Ltd. v. Huawei Technologies Co. Ltd. is another decision some experts view as having wide implications.  In Octoberthe Court of Appeal of England and Wales issued its much-anticipated ruling, finding Huawei may be barred from selling its smartphones in the U.K. if it refuses to pay a global license fee for Unwired Planet’s technology.  The Court also rejected Huawei’s suggestion that the license Unwired Planet offered was not on “nondiscriminatory terms” because the royalty rate was higher than that which Unwired Planet previously agreed to with Samsung.  The judgment could impact not only the terms of future licenses, but also the way that parties negotiate licenses and make offers to SEP owners.  

Our panelists, which include lawyers who represent both SEP owners and implementers, will discuss: 

  • Whether global licenses will come to dominate FRAND negotiations in the future 
  • If there is any consensus emerging on how to calculate license terms that are fair, reasonable, and nondiscriminatory for SEP patents 
  • The strengths and weaknesses of the differing valuation approaches of TCL and Unwired Planet  
  • The impact of the availability of injunctions for the infringement of a SEP in Europe and China on litigation strategy   


  • Logan Breed, Hogan Lovells LLP 
  • David Djavaherian, PacTech Law 
  • Matteo SabattiniEricsson

Privity at the PTAB after RPX

Webinar Date: 11/29/2018

This timely program will analyze the case law, and the resulting changes in PTAB practice, since the Federal Circuit’s July decision in Applications in Internet Time (AIT) v. RPX. That appeal from a PTAB inter partes review decision found that the PTAB took an “impermissibly shallow” look at evidence presented by the patent owner about the relationship between the petitioner and another party. 

Subsequent related decisions have included two significant Federal Circuit opinions — Worlds Inc. v. Bungie, Inc. and Western Geco v. ION — as well as numerous relevant decisions by the PTAB, such as the denial of a petition in Arris v. ChanBond and Sirius XM Radio, Inc. v. Fraunhofer­Gesellschaft, and the granting of additional discovery in Kashiv v. Purdue.  

Our panel includes a former PTAB Administrative Patent Judge who recently returned to private practice and two highly experienced PTAB litigators. They will discuss: 

  • The eventual boundaries of the “clear beneficiary” test for determining real-parties-in-interest, including whether joint defense groups will be impacted 
  • The PTAB’s new approach to granting discovery before institution, and how this offers patent owners a not-to-be-missed opportunity 
  • The PTAB’s recent flexibility in sometimes allowing a petitioner to choose between naming additional RPIs to win institution or risking non-institution by contesting the need to do so 


  • Gasper LaRosa, Jones Day 
  • Brian Murphy, Haug Partners LLP 
  • Dorothy Whelan, Fish & Richardson, PC

Trade Shows: IP Rights Enforcement in the U.S. and Internationally

Webinar Date: 11/14/2018

Live trade shows are thriving, even in this age of digital marketing — and even for intangible products.  In fact, a poll of marketing professionals at a recent leading IT trade fair for cloud computing, AI, and blockchain illustrated their strong belief that trade shows still are cost-effective at generating leads and/or increasing brand awareness. 

But trade shows can also be places where IP right holders frequently discover that their IP rights are being infringed.  Moreover, standing disputes can escalate, because IP owners have an opportunity to interact with alleged infringers on the exhibitors’ floor. 

This webinar will give a global perspective on enforcing IP at trade shows, including trademarks, trade dress, design patents, and utility patents, as well as address the U.S. landscape related to these issues.  The panel includes a law professor who has done extensive research and analysis of the remedies available worldwide for infringement at trade shows, a law firm attorney who has won a number of temporary restraining orders from U.S. courts requiring the immediate removal of infringing exhibits, and an in-house patent counsel with experience dealing with infringers and counterfeiters at trade shows.  They will discuss: 

  • Obtaining an TRO post-eBay, now that U.S. courts may no longer presume the existence of irreparable harm in patent infringement cases 
  • The proper preparation before a trade show that will strengthen an IP owner’s legal case and allow rapid enforcement 
  • When it is necessary to alert the local U.S. Attorney and the best ways to work with law enforcement 
  • What kind of recourse is available at trade fairs in other countries that often host trade fairs 
  • The pros & cons of ADR mechanisms recently established by some trade fair organizers 
  • The opposite side of the coin for trade show exhibitors: What to do if a competitor files an action against your company 


  • Scott Markow, Stanley Black & Decker Inc. 
  • Michael McCue, Lewis Roca Rothgerber Christie LLP 
  • Prof. Marketa Trimble, University of Nevada Law School

Federal Circuit Appeals and Remand to the PTAB: Recent Lessons and a Look Ahead

Webinar Date: 11/08/2018

In the early days of appeals to the Federal Circuit of post-grant trials under the AIA, it usually seemed quixotic to hope that effective lawyering could reverse on appeal a PTAB decision to invalidate a patent. Now, the Federal Circuit’s affirmance rate for PTAB appeals hovers at around 70%, so the success of the PTAB petitioner’s appellate counsel is no longer so nearly universal.

This webinar, featuring two litigators and an in-house counsel who clerked at the Federal Circuit, will review case law and discuss strategies for affirming or reversing a PTAB decision. They will analyze and discuss:

  • The decision to appeal
  • Trends in remands, including what kinds of procedural grounds have been raised successfully by patent owners
  • How counsel can counter arguments based on procedural oversights, including arguing harmless error
  • Emerging case law regarding standing
  • The expected impact on appeals of the PTAB’s switch to the BRI claim construction standard
  • Steps in developing your appeal strategy
  • Tactical tips for briefs and oral argument


  • Michael Flibbert, Finnegan, Henderson. Farabow, Garrett & Dunner, LLP
  • Sheila Kadura, Dell Technologies
  • John O’Quinn, Kirkland & Ellis LLP

AIA Estoppel: A New Flavor of Collateral Estoppel And/Or Res Judicata?

Webinar Date: 11/05/2018

From the passage of The Leahy–Smith America Invents Act (AIA) to today, patent owners and petitioners alike have been concerned with the potential impact of statutory and rule-based estoppel resulting from Final Written Decisions of the Patent Trial and Appeal Board. Presenting a webinar edition of their well-received IPO Annual Meeting session in Chicago, our panel will explore a variety of issues from the perspective of the bench, in-house counsel, and PTAB trial practitioners, including:

  • What is the likely impact of AIA estoppel at the PTAB and in the district courts?
    • Is Shaw still alive after SAS?
    • What’s the likely impact of SAS on the scope of estoppel?
    • How does the Maxlinear decision change the potential scope of estoppel?
  • How should the terms “skilled searcher,” “diligent search,” and “reasonably could have been expected to discover” be interpreted for estoppel purposes?
  • How should non-documentary prior art be handled in a district court, even if it relates to publications used in an IPR
  • When and how should the estoppel defense be raised at the PTAB?  In a district court?


  • Herbert Hart, McAndrews, Held & Malloy, Ltd. 
  • Emily Johnson, Amgen, Inc.  
  • Hon. James Peterson, Chief District Judge, U.S. District Court for the Western District of Wisconsin

Design Patents in China

Webinar Date: 10/25/2018

This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China.  Experts say design patents are underutilized in China by foreign companies, to their detriment.  Chinese companies certainly act as if Chinese design patents can give them an edge.  More than one-third of all patent applications filed in China by domestic entities are for design patents, compared to just 10 percent of all patent applications filed in China by foreign applicants.

As many a foreign company has discovered, if it doesn’t register its designs in China, there’s a good chance a Chinese company will — and the foreign company may be forced to pay a license for use of its own design.  U.S., Japanese, and Korean automakers have repeatedly accused Chinese companies of stealing their designs, only to find the accused patented the designs first in China.  Last year, Apple faced a widely reported ban on sales of its iPhone 6 in China after an administrative agency found that the iPhone 6 and iPhone 6 Plus infringed on the design patent rights of a Chinese manufacturer, Shenzhen Baili.  The Beijing Intellectual Property Court later revoked the ban and Apple’s sales continue unimpeded.

Our panel – a leader of the USPTO’s “China team” who was previously a law-firm patent litigator, a Beijing-based lawyer who specializes in design patents, and an in-house patent counsel at a major multinational – will discuss the role of different Chinese government entities and regulators in infringement disputes.  Other issues they will discuss include:

  • The ramifications of China’s refusal to recognize partial designs.
  • Differences between U.S. law and Chinese law with respect to protection against unauthorized use of a product protected by a design patent.
  • Special concerns in patenting GUIs (graphical user interfaces).
  • The interaction of utility patents and design patents in China, differences in the jurisprudence applicable to each, and whether it is possible to obtain both types of protection on one product.


  • Bart Fisher, Caterpillar Inc. 
  • Biqing Huang, CCPIT Patent and Trademark Law Office
  • Elaine Wu, U.S. Patent & Trademark Office

A Surge to the PTAB? Filing and Litigation Strategy in the Light of the Upcoming Switch to the PTAB's Claim Construction Standard

Webinar Date: 10/17/2018

The USPTO announced earlier this month that inter partes review, post-grant review, and covered business method patent proceedings will switch from the current broadest reasonable interpretation claim construction standard to the same standard used by district courts, the Phillips standard, starting on 13 November.  Soon after the announcement, many experts began to predict a rush of petitioners to the Patent Trial and Appeal Board.  The surge is expected because litigants may try to preserve the flexibility now allowed by differing standards in the different forums by acting to institute proceedings before the change occurs.

Our panel of three very experienced PTAB litigators will give their views how the move to Phillips at the PTAB is likely to change optimal litigation strategies going forward for both petitioners and patent owners.  The issues they will discuss include:

  • Will institution rates at the PTAB be changed by the switch to the Phillips standard?
  • Will district court judges be less likely to grant stays now that a PTAB claim construction will be more of a true preview of a Markman finding?
  • Advantages and disadvantages of delaying an IPR filing.
  • The timing of PTAB and district court decisions — and the potential for collateral estoppel.
  • The additional complications involved in multi-defendant litigation.


  • David Cavanaugh, Wilmer Cutler Pickering Hale and Dorr, LLP
  • Scott McKeown, Ropes & Gray LLP
  • Michael Specht, Sterne, Kessler, Goldstein & Fox, PLLC


Avoiding and Utilizing Prosecution History Traps: Litigation, Prosecution and Due Diligence

Webinar Date: 10/09/2018

Prosecution history is sometimes overlooked when valuing a patent, but some commentators would say it’s nearly impossible to overestimate the role it can play in litigation.

This summer the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a lighting technology patent asserted by Blackbird. The Federal Circuit determined that the district court had erred in construing the claim term “attachment surface” in finding non-infringement. A claim amendment made during patent prosecution played a prominent part in the appellate court’s decision.

Further, life science litigation involving broad patents can often find a patent owner boxed in by the need to meet Section 112 requirements in prosecution. The scope of disclaimers can also be dispositive in high-tech litigation such as Avid Tech., Inc. v. Harmonic, Inc., which centered on digital data storage.

This webinar will look at the nature of legal traps that can lurk in prosecution history, caused both by disclaimers and amendments, and how they can snare defendants or plaintiffs in infringement litigation. It features attorneys with a wide array of experience related to these issues, including panelists who recently won cases for their clients by exploiting prosecution history. They will provide tips for patent prosecutors on how to try to avoid leaving damaging history — and for transactional lawyers on how to spot problems during due diligence that could turn the patent into a lemon for a purchaser.


  • Brian Diner, Finnegan, Henderson, Farabow, Garrrett & Dunner, LLP
  • Brian Nolan, Mayer Brown, LLP
  • James Trainor, Fenwick & West, LLP

Biosimilars in the Antitrust Spotlight: Patent, Litigation and Settlement

Webinar Date: 10/04/2018

It’s been a little over five years since the U.S. Supreme Court issued its landmark decision in FTC v. Actavis, finding that payments made by brand­name drug companies to generic manufacturers in patent settlements can raise antitrust concerns. The prolific and ongoing litigation stemming from that decision is limited to the small-molecule drugs governed by the Hatch-Waxman regulatory scheme. Now some commentators believe that the FDA has set down a pro-competition gauntlet regarding large molecule biologic drugs governed by the BPCIA — and that the FTC is not far behind.

Up until now the economic arguments associated with pharmaceutical IP and antitrust litigation were based on the pattern of small molecule drugs, where generics usually achieve a substantial share of the market quickly with large price discounts. But the complexity and costs of developing biosimilar drugs, along with substantially different regulatory and market conditions, has already shaped a different pattern for biosimilar competition, raising new issues of which practitioners need to be aware.

Our panel – a veteran pharma litigator, an antitrust lawyer who formerly worked at the FTC and who was involved in FTC v. Actavis, and a healthcare economist and expert witness – will address these issues and look ahead and discuss:

-The likely shape of settlements in patent litigation between innovator biologic companies and biosimilar aspirants
-In light of FTC challenges to a series of contemporaneous business deals including patent settlements, the future of non-cash forms of compensation
-As multiple patents in biosimilar infringement litigation can be asserted in staggered waves over time, whether “at-risk” entry is more or less likely than for traditional generic drugs



  • Nicholas Mitrokostas, Goodwin Procter, LLP
  • Richard Mortimer, Analysis Group
  • Michael Perry, Baker Botts LLP

The Revised PTAB Trial Guide and Other Recent PTAB Developments

Webinar Date: 09/13/2018

The August release of revisions to the PTAB Trial Practice Guide is of major importance to both patent owners and petitioners. Our program features Lead Chief Administrative Patent Judge Michael Tierney, who continues to play a leading role in devising the rules for proceedings under the AIA, in a discussion with two top PTAB litigators. This revision is the first major update of the Guide since its publication in August 2012.

The panelists will discuss the reasoning behind each change and explain how these revisions will impact PTAB practice. All of the major revisions to the Guide will be addressed, including:

  • The introduction of a sur­reply to
the prior sequence of briefs
  • The circumscribed role to be played by expert evidence
  • The introduction of a new prehearing conference call, which some commentators predict has the potential to be as important as the main oral hearing
  • Clarifications regarding motions to strike and motions to exclude


  • Michael Tierney, U.S. Patent and Trademark Office
  • Tarek Fahmi, Ascenda Law Group
  • Eliot Williams, Baker Botts LLP

From BRI to Phillips at the PTAB: Consequences for Practice

Webinar Date: 09/06/2018

Most patent lawyers tend to be confident they know the difference between the two competing standards for patent claim construction — the “broadest reasonable interpretation” (BRI) used by the USPTO in patent application examination, and the Phillips standard used by district courts. But a look at how tribunals actually apply those differing standards is enlightening. Our panelists examined dozens of litigations in recent years where both district courts and the PTAB construed the same patents. Their timely findings provide useful insights and tactics as the PTAB is expected to switch from BRI to Phillips in post-grant proceedings this fall. Whether the PTAB will make the change retroactive is still uncertain. The panelists will give tips on how both patent owners and petitioners should proceed in the interim. Other ramifications of the change are:

• Deciding on a proposed claim construction will require even more care, because there will no longer be an opportunity to take differing positions at the PTAB and district court, now a frequent and often successful litigation strategy
• That defendants in litigation can expect to be able to mount stronger non-infringement positions as a uniform and narrower claim interpretation makes it less likely the accused device will infringe
• The potential fallout from the PTAB adopting a standard for AIA proceedings that differs from the one used in all other USPTO proceedings, such as reexamination and reissue.


  • Eric Cohen, Brinks, Gilson & Lione
  • Kevin Greenleaf, Dentons US LLP
  • Shaun Zhang, Goldman Ismail Tomaselli Brennan & Baum LLP


Assignor Estoppel: The Current State of the Law

Webinar Date: 08/30/2018

Confusion can result if agencies and courts address similar legal issues. A case in point is the current muddle over the common law doctrine of assignor estoppel in patent litigation, where disputes over patent validity often proceed in parallel before the USPTO’s Patent Trial and Appeal Board and federal district courts. The doctrine, which prevents an inventor or patent owner who assigns a patent to another party from later challenging the validity of the patent, plays a role in a significant number of high-profile patent disputes. The Federal Circuit gives assignor estoppel a wide scope, while the PTAB has determined that assignor estoppel does not apply to AIAinter partes review (IPR) proceedings.

It appeared as if this conflict might be resolved soon, but that possibility has seemingly evaporated. EVE-USA/Synopsys petitioned the Supreme Court for certiorari, after assignor estoppel was applied against it in its case against Mentor Graphics. The Supreme Court asked for the views of the Solicitor General on the petition. But the parties stipulated to dismissal of the case in July.

Our panelists – two litigators both recently involved in significant cases involving assignor estoppel, as well as in-house counsel at a tech company, will discuss the fluid state of the law. The Federal Circuit in Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. held that it lacked jurisdiction to review the PTAB’s determination that IPR challenges are not barred by assignor estoppel. But that decision relied on Achates, an earlier Federal Circuit decision which the Court has since overturned. The panel will also consider such corporate concerns as inventor mobility and patent sales in light of assignor estoppel.


  • Mark Miller, O’Melveny & Myers LLP
  • Marshall Schmitt, Michael Best & Friedrich LLP
  • Marian Underweiser, IBM Corp.


Protecting Big Data Inventions Globally

Webinar Date: 08/16/2018

These days, many companies are asking questions that cut “across” datasets. They are looking for trends and opportunities that, absent the marriage of multiple data sources, would have otherwise gone unrecognized. The advent of cloud storage, open-source database software, and large-scale commercial processing services has drastically reduced the costs to capture, store, and analyze a new flood of data coming from sensors, devices, video/audio, networks, log files, transactional applications, web, and social media – much of it generated in real time.The increased focus on big data has brought with it challenging questions about how companies can protect their intellectual property. This webinar takes a global and comparative look at protecting inventions to collect, process, and make sense of big data.

Our panelists are an in-house attorney with a U.S. company at the forefront of related developments, a European IP attorney and software expert who has spent more than a decade in managerial roles for American, Swiss, and German companies, and a Chinese patent prosecutor who specializes in telecommunications and software. They will discuss:

• The decision whether to pursue patent protection or to rely on trade secrets
• Subject-matter guidelines regarding patent eligibility in the U.S., Europe, and China
• Limitations on functional claiming
• How to show patent examiners in Europe that a big data invention is “technical” enough to be entitled to protection


  • Paul Leblond, Google Inc.
  • Guide Quiram, Michalski Hüetterman & Partner
  • Tiecheng Yang, Unitalen Attorneys at Law

Strategies and Pitfalls of CIP and Provisional Practice

Webinar Date: 08/09/2018

The issues associated with U.S. provisional and CIP patent applications continue to become more and more complicated. In Ariosa’s fight with Illumina over prenatal testing technology, the PTAB instituted an inter partes review of the Illumina patent, finding that the Fan prior art reference, published in a patent application, created “a reasonable likelihood that [Ariosa] would prevail” in showing that all claims of the Illumina patent were anticipated. The Fan prior art reference claimed priority back to a provisional patent that had been filed seven months before Illumina’s patent. But the Board ruled that Ariosa “did not meet its burden of persuasion of demonstrating that the Fan is prior art” because “it failed to demonstrate that the claims of Fan were supported by the disclosure of the provisional in compliance with 35 U.S.C. § 112.”

The Federal Circuit agreed, ruling in 2017 that a published application can count as prior art as of its provisional filing date — but only as to features actually claimed in the application. After the Federal Circuit denied rehearing and rehearing en banc this spring, Ariosa filed a petition for certiorari to the U.S. Supreme Court in July, claiming that in this decision the Federal Circuit misread the patent statute and Supreme Court precedent.

In addition to Ariosa v. Illumina, another significant Federal Circuit opinion, Dynamic Drinkware v. National Graphics (2015), also illustrates that the use and legal standing of provisional patent applications is complex, and there are still major unresolved issues that may lead to patent invalidation. Our expert panelists will discuss potential pitfalls associated with U.S. provisional or CIP patent applications. Problems may arise not only when there is failure to fully claim the invention, as in Ariosa, but if there is a failure to: (1) list all of the inventors in a provisional application, (2) timely assign the provisional application, or (3) properly list the applicant(s). Similarly, if the timing is not right, CIP applications are often dead on arrival and, even if done correctly, may needlessly sacrifice patent term. The panel will address PCT traps, as well as the circumstances when filing a provisional or CIP application instead of a standalone utility application can be a sound strategy.


  • Courtenay Brinckerhoff, Foley & Lardner LLP
  • Charles Chesney, Qualcomm Incorporated
  • Roland McAndrews, Bookoff McAndrews PLLC

What's Next for Design Patent Damages? DOJ Test on Trial

Webinar Date: 07/26/2018

For all its eye-popping size, the $533 million award that Apple won against Samsung in a design patent infringement case was seen by few as legally significant.  Now that the case has settled, it is an interesting time for our expert panel — an attorney who specializes in design patents, a damages expert, and in-house counsel at an automaker — to assess the current state of damages law for design patents.

The Supreme Court in 2016 held that the relevant “article of manufacture” could be either all or part of the infringing product.  One possible standard for determining the relevant “article of manufacture” for Section 289 purposes was proposed by the United States Department of Justice in an amicus brief it submitted to the Supreme Court.  And that test is taking on a vigorous life of its own.

This summer, Seirus will file a brief in its appeal at the Federal Circuit after it was required by a jury last year to pay $3 million in design patent damages to Columbia.  Columbia v. Seirus was the first case after Samsung v. Apple to charge a jury to use the DOJ’s test.  The outcome of this case is thus eagerly anticipated.

Our panelists will discuss the Federal Circuit’s options in addressing the DOJ standard.  They will also discuss:

  • Other legal uncertainties left by the Supreme court, including who bears the burden of proof in the DOJ test, and whether the identity of the article of manufacture is a matter of fact to be decided by the jury
  • Strategies for patent prosecution and litigation in light of uncertainty
  • Certain areas, such as graphical user interfaces, where both innovators and implementers must take special care


  • Rick Bero, The Bero Group
  • James Dottavio, Ford Global Technologies LLC
  • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

An Update on the On-Sale Bar: Helsinn at the Supreme Court

Webinar Date: 07/19/2018

The U.S. Supreme Court granted certiorari in Helsinn v. Teva in late June, teeing up an important question about the on- sale bar under the AIA. In this particular case, which the Federal Circuit declined to rehear en banc, a patent was invalidated after the sale was partially made public: the details of the invention, an anti-nausea drug, were kept secret, but the existence of the sale was publicly disclosed.

Our panel of experts, including a top Supreme Court advocate, in-house counsel, and a patent litigator, will review the current status quo after two significant Federal Circuit decisions in recent years on the on-sale and public use bars, Merck & CIE v. Watson Labs and The Medicines Co. v. Hospira. These decisions raised in-house concerns about patent prosecution practices, confidentiality, and guidance to commercial teams. The panelists will also consider what questions may remain unanswered after Helsinn, such as (1) does a fully-secret sales offer count to bar a patent under section 102? and
(2) even if it serves as a bar to patentability under section 102, to what extent does a secret sale count as “prior art” for obviousness purposes? They will also consider the Justices’ options in this case.



  • John Duffy, University of Virginia
  • Jennifer Johnson,DuPont
  • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto

Damages after Western Geco: Impact on Patent Litigation Strategy and Client Counseling

Webinar Date: 07/12/2018

At the U.S. Supreme Court oral argument in Western Geco v. Ion, a case about expanding the damages for infringing a U.S. patent to include foreign lost profits, a heated and far-ranging debate ensued.  Earlier, some amici curiae had stressed the huge stakes at issue.  For instance, Fairchild Semiconductor joined forces with The Internet Association, arguing that allowing lost profits damages from outside the U.S. “would have negative fallout for economic policy, U.S. commerce, and foreign relations.”  Even the “threat [of such damages] would encourage important industries to relocate abroad,” they claimed.

In late June, the Court disposed of the matter with an opinion from Justice Thomas.  This webinar will focus on the impact of this decision on patent litigation strategy, as well as client counseling.  The Court’s decision overturned decades of Federal Circuit precedent by holding that Western Geco’s award for lost profits was a permissible domestic application of § 284.  Our panel includes the chief IP counsel for a major multinational; the former head of patents at Microsoft who is now with a law firm where he focuses on strategic IP counseling, IP transactions, and license agreements; and a patent litigator who has been involved in these issues for years on behalf of a patent owner. They will discuss:

  • How Western Geco might impact decisions regarding the location of R&D, manufacturing, and contract signing.
  • The immediate and long term effects on litigation strategy for both plaintiffs and defendants.
  • Whether the impact will be limited to § 271(f)(2) cases or may be broader.
  • What kind of proof plaintiffs will need to bolster their claims for worldwide damages.
  • How the question of proximate cause “could limit or preclude damages in particular cases,” an issue the Court explicitly declined to address.


  • Buckmaster de Wolf, General Electric Company
  • Bart Eppenauer, Shook, Hardy & Bacon LLP
  • Blair Jacobs, Paul Hastings LLP

Wilfullness after Halo

Webinar Date: 06/26/2018

Enhanced damages for patent infringement no longer is a rarity in the two years since the Supreme Court lowered the bar for alleging and proving willfulness in its Halo decision.  In just the last few months, Illinois federal Judge Harry Leinenweber raised Chamberlain’s $3.8 million trial verdict to $11.4 million after finding the conduct of a rival garage door opener maker to be egregious.  In May, Texas federal Judge Rodney Gilstrap found deliberate copying of a water filter design and awarded Whirlpool Corp. $3.8 million in enhanced damages on a $7.6 million verdict.

In this webinar, our expert panel will describe winning corporate strategy and litigation tactics in this new environment.  Two of the panelists are litigators with recent courtroom successes involving willfulness issues — and the third is a leading academic expert on patent law and damages.  They will analyze recent case law from both district courts and the Federal Circuit and describe:

  • Current pleading standards for willfulness, including proving knowledge of the patent or willful blindness, and the impact of letters of counsel;
  • The effect of Halo on the availability of pre- suit and post-suit willfulness and the impact of the timing of the notice of infringement; and
  • The relevance of the Read factors (Read Corp. v. Portec, Inc., Fed. Cir. 1992) for egregious behavior in light of the fact that enhancement needn’t always follow a finding of willfulness.


  • Thomas Cotter, University of Minnesota
  • Richard Megley, Lee Sheikh Megley & Haan LLC
  • Kathi Vidal, Winston & Strawn LLP

Patent Eligibility in the Life Sciences: Exergen and Praxair- and USPTO Memos on Vanda and Berkheimer

Webinar Date: 06/14/2018

Pity the life sciences patent prosecutor who tries to find a path through recent appellate court decisions regarding patent eligibility.  A recent concurrence in a divided Federal Circuit decision indicated that U.S. Supreme Court decisions like Mayo have left too much uncertainty about what is and is not patent eligible under section 101.  Like others in the IP community, the concurrence indicated that perhaps Congress should act.  But few experts expect a legislative fix to come quickly.  That leaves both patent owners and applicants with a pressing need to assess the impact of recent significant Federal Circuit opinions, such as ExergenVanda and Praxair.

Exergen and Vanda have been the cause for cautious optimism for some life science companies.

Exergen’s invention, a diagnostic patent, was upheld under section 101 by the Federal Circuit, which was considered an important event post-Mayo.  This decision is referenced in the USPTO’s Berkheimer memo of 19 April, which takes the agency into the uncharted territory of trying to decide how much and what kind of evidence it takes to show that an invention is not “well understood, routine and conventional.”

Vanda affirmed a district court’s finding that claims to a personalized method of treatment are patent eligible.  In early June, the USPTO issued a new memo to examiners on Vanda.  The Federal Circuit decision didn’t address a number of relevant issues, however, such as whether a doctor could be a direct infringer through divided infringement.

The most recent of the three decisions is far more ominous for life science inventions.  Praxair, a recent appeal of an IPR decision, could result in many section 101 challenges being made in IPRs in the form of a printed matter/obviousness challenge.

Our panel includes a life sciences expert at the USPTO, a top patent lawyer at a major pharmaceutical company, and a founding shareholder of an IP law firm who specializes in biotech.  They will assess the cumulative impact of recent changes and delineate prosecution strategies to address them.


  • Paul Golian, Bristol-Myers Squibb Company
  • Ali Salimi, S. Patent & Trademark Office
  • Warren Woessner, Schwegman, Lundberg & Woessner, P.A.

A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard

Webinar Date: 05/31/2018

This webinar features the Chief Judge of the PTAB in conversation with two top litigators — one a leading practitioner at the PTAB and the other a preeminent advocate at the Federal Circuit and the Supreme Court — to discuss the path ahead after the recent host of major developments that will affect PTAB practice.

Topping the list of changes are those forced by the Supreme Court in its SAS decision this April. Changing some of the basic ground rules of AIA trials, SAS holds that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision.

Then, earlier this month the U.S. Patent and Trademark Office proposed a new rule that would change the claim construction standard used in America Invents Act (AIA) reviews. Under the proposal, the PTAB would no longer use the broadest reasonable interpretation standard to interpret the patent claims in an AIA review, replacing it with the standard used by federal courts and the U.S. International Trade Commission.

Many experts see both of these changes as making the PTAB an even more important venue for patentability challenges. But the Federal Circuit’s affirmance rate of PTAB decisions now hovers at around 70 percent, as it has increasingly demonstrated a willingness to send cases back to the Board. Our litigator panelists will give tips on how to build a successful appeal that results in remand or reversal, while the chief judge is expected to talk about the

impact of Federal Circuit decisions on PTAB practice. And panelists will discuss how to try to convince the PTAB to change its mind about invalidating a patent on remand, which occurs about 40 percent of the time.


  • Hon. David Ruschke, U.S. Patent and Trademark Office
  • Gregory Castanias, Jones Day
  • Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

After SAS: A Transformation of Post-Grant Practice

Webinar Date: 05/04/2018

SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

SAS held that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision. The Supreme Court’s opinion left many aspects of the implementation of this change to the PTAB’s discretion. Our panel includes a former Lead Administrative Patent Judge who just returned to private practice last fall, a leading practitioner before the PTAB who also specializes in appeals of PTAB decisions to the Federal Circuit, and a veteran patent litigator who has been involved in many parallel proceedings at the PTAB and in district court. They will analyze and discuss:

The implementation decisions that have already been decided and announced by the PTAB.

  • What the changes mean for cases instituted before SAS that are now pending before the PTAB and how both petitioners and patent owners should respond to the “do over.”
  • How should strategy change for challengers considering filing a fresh petition for an IPR and for the patent owner in its preliminary response and throughout the trial?
  • With respect to hundreds of appeals from the PTAB that are now pending at the Federal Circuit that were instituted on only a subset of the petitioner’s challenged claims: Should petitioners file a motion to vacate the appeal and remand the case back to the PTAB? What are the Federal Circuit’s options?
  • What will be the impact on parallel district court litigation, the district court’s decision to stay the case pending the PTAB Final Written Decision, and on estoppel of challenged claims?


  • Mitchell Stockwell, Kilpatrick Townsend & Stockton, LLP
  • Trenton Ward, Finnegan, Henderson,Farabow, Garrett & Dunner, LLP
  • Jon Wright, Sterne, Kessler, Goldstein & Fox PLLC

Biosimilar and Hatch-Waxman Litigation: Jurisdiction and Venue Issues

Webinar Date: 04/25/2018

Infringement litigation over biosimilars and pharmaceuticals poses its own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

These issues are particularly hot right now, with several disputes pending that could have a wide impact going forward, such as Momenta Pharmaceuticals v. Bristol-Myers Squibb. Further, after the Supreme Court’s TC Heartland decision, judges must decide where the artificial act of infringement occurs —and district courts are already split.

To help you navigate these complex issues, our panel includes the head of U.S. patent litigation for a major international pharma and biologic company that is active both as an innovator and in biosimilars, as well as two veteran litigators (one who typically represents innovators and the other who represents biosimilar applicants and generic drug companies). They will discuss what you need to know, and will make predictions, regarding:

  • Whether a biosimilar applicant will be able to bring BPCIA litigation before the brand sponsor brings its own suit.
  • Will a biosimilar maker who has not yet filed its marketing application with the FDA be able to appeal an unsuccessful inter partes review? Or does it need Article III standing to seek an appeal?
  • The complicated calculus regarding venue in both Hatch-Waxman litigation and BPCIA litigation.
  • Issues when there are multiple defendants in different jurisdictions.
  • How to deal with foreign defendants.


  • Cynthia Lamber Hardman, Procter Goodwin
  • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto
  • Peter Waibel, Novartis

The Role of Facts in Patent Eligibility Decisions: Analysis and Strategy

Webinar Date: 04/12/2018

In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.

The cause of the shift is a trio of patentee-friendly Federal Circuit opinions all penned by Judge Moore. These decisions, Berkheimer, Aatrix and Exergen, together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under section 101. Hewlett Packard, the defendant in Berkheimer, has requested a rehearing of the case by the en banc Federal Circuit. It’s no exaggeration that the future of section 101 law in the

U.S. hangs in the balance, given the view of many experts that the Supreme Court is not eager to revisit these issues at present.

Our panel of experts will address:

  • How to best leverage these decisions to your advantage.
  • What you need to know about how to handle issues that could arise on appeal.
  • Who is likely to decide patent eligibility issues going forward, using what evidence, and at what stage of litigation?
  • What model will prevail: Making the factual decision at trial or a Markman hearing-type model disposing of patent eligibility before trial?
  • How does the analogy to obviousness determinations hold up?


  • Calvin Griffith, Jones Day
  • Daryl Joseffer, King & Spalding
  • Corey Salsberg, Novartis

Patent Prosecution Estoppel from PTAB Proceedings

Webinar Date: 03/29/2018

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

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

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

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

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


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

FRAND Litigation after TCL v. Ericsson

Webinar Date: 02/28/2018

At the end of last year, Judge Selna of the U.S. District Court for the Central District California issued a very significant decision in TCL v. Ericsson, a case centering on a license royalty dispute between a major Chinese cell phone maker and Ericsson, the owner of a large number of standard-essential patents (SEPs) for 3G and 4G mobile service.

This decision now joins a handful of other recent influential court decisions in the U.S. and the U.K. that have each devised their own methodology to calculate fair, reasonable, and nondiscriminatory (FRAND) for SEPs.

Our panel, includes two academic experts on SEPs, both of whom have also practiced law, and a Brussels-based competition lawyer. They will discuss:

  • What are the strengths and weaknesses of the “top down” approach implemented in the TCL and Unwired Planet decisions vs. the “bottom up” approach of Microsoft v. Motorola? Is there a consensus emerging?
  • What are the implications of the non-discrimination prong of the TCL decision that says that small players in a market should not have to pay higher royalty rates than big players?
  • How does recent SEP competition policy in Europe differ from that in the U.S.—-, and what has changed with the recent release of the European Commission’s Communication on Standard Essential Patents?

This webinar will help listeners understand where FRAND jurisprudence is heading, a critically important issue, for those who care about standards and FRAND. Judge Selna’s decision is of great interest, for the details of how he set the royalty rates for the technology at issue. It is being compared with an important recent British decision. Unwired Planet v. Huawei, and the earlier U.S. decision Microsoft v. Motorola


  • Jorge Contreras, University of Utah
  • Thomas Cotter, University of Minnesota
  • Christopher Thomas, Hogan Lovells

PTAB After Wi-Fi One: What's Next for Appeals?

Webinar Date: 02/22/2018

Defining the prerogatives of the USPTO’s Patent Trial and Appeal Board under the America Invents Act is one of the great unfinished tasks in U.S. patent law.

The en banc Federal Circuit made an important contribution to that effort in January, ruling in Wi-Fi One LLC v. Broadcom Corp. that PTAB time-bar determinations under 35 U.S.C. § 315(b) are appealable because they do not fall within the scope of the judicial-review prohibition of § 314(d). This overruled an earlier panel decision in Achates v. Apple.

Our panel includes a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board who has helped develop devise the rules for proceedings under the AIA, a former PTAB Administrative Judge now in private practice, an IP Counsel with Ford Global Technologies LLC who oversees its PTAB docket, and litigator who practices both at the PTAB and before U.S. district courts.

Our panelists will discuss:

  • The AIA’s various time bars as adjudicated by the PTAB – and whether there is a standing inconsistency among PTAB panels.
  • On which other issues are litigants likely to press for appeals such as the naming of all interested parties, or the reach of estoppel.
  • Real-party-in-interest and privacy, because in practice many potential appeals involve situations with various parties including joint defense groups, indemnification, and patent aggregators.
  • How will the PTAB respond to increased demands for discovery?


  • Hon. Michael Tierney, U.S. Patent & Trademark Office
  • Matthew Berkowitz, Shearman & Sterling LLP
  • Scott Kamholz, Covington & Burling LLP
  • David Kelley, Ford Global Technologies LLC

Divided Infringement after Tropp

Webinar Date: 02/15/2018

The 2015 en banc Federal Circuit opinion in Akamai V refined divided infringement, but left room for further judicial fine tuning. One such shift took place last December, in a Federal Circuit panel decision, Tropp v. Travel Sentry. That opinion considered when multiple parties can be found to have infringed a patent together —- and it could lead to greater liability for joint infringement. It also likely means such decisions will have to be made by jurors, not judges. Another 2017 earlier Federal Circuit opinion, Lilly v. Teva, addressed divided infringement in the context of the pharmaceutical industry for the first time.

Our panel includes the winning appellate attorney for the inventor/plaintiff in Tropp, who will discuss how the new opinion fits into the framework created by Akamai V., an attorney who manages litigation for a high tech company, and a litigator who won summary judgment for a defendant in an Eastern District of Texas case involving divided infringement . They will consider recent federal district court decisions involving divided infringement, including Sonrai Sys. v. AMCS Group., PersonalWeb Techs v. IBM, and Progme Corp. v. Comcast Cable, and discuss how the outcomes for similar fact patterns might be different in light of Tropp.


  • John Carlin, Fitzpatrick, Cella, Harper & Scinto
  • Paul Hughes, Mayer Brown LLP
  • Frank Nuzzi, Siemens Corp.

Exhaustion Tamed? Early Reports and New Ideas on After Lexmark

Webinar Date: 02/08/2018

Last year’s Supreme Court Lexmark decision poses a major problem for patent owners across many industries by dramatically broadening the scope of patent exhaustion. Apple’s pending litigation against Qualcomm underlines Lexmark’s impact because it challenges the chip maker’s business model for allegedly requiring customers to both purchase chips and take a patent license.

The IP world still awaits a significant Federal Circuit decision on exhaustion in the eight months since Lexmark. But many cases have been bubbling up from district courts, and companies would do well to examine these decisions and other fresh ideas that have been proposed to ameliorate Lexmark’s impact.

Our panel includes the Chief IP Counsel of a major drug company, an attorney with vast experience in licensing matters, and a litigator who won an exhaustion case for his defendant on summary judgment. They will discuss strategies and recent court cases that involve:

  • Staking out the claim that a sale is not an “authorized sale” — Chrimar v. Alcatel Lucent and Sunoco v. U.S. Venture;
  • Using claims of tortious interference under state law against competitors if they interfere with the patent owner’s contracts with purchasers;
  • Obtaining patent protection on each component of a system, as well as on the system as a whole; and
  • Obtaining separate patents on an inventions’ different methods of use.


  • Jorge Goldstein, Sterne, Kessler, Goldstein & Fox PLLC
  • Brian Kacedon, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • William Krovatin, Merck & Co., Inc.

Written Description in the Life Sciences after Amgen v. Sanofi

Webinar Date: 12/12/2017

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

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

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

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

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

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


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

Definite Dysfunction: Functional Claiming after Mastermine Software v. Microsoft

Webinar Date: 12/06/2017

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

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

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


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

Sovereign Immunity at the PTAB: Gimmick or Genius?

Webinar Date: 10/24/2017

When drug maker Allergan announced in early September that it had transferred patents on a best-selling eye drug to the Saint Regis Mohawk Tribe in upstate New York, IP experts were caught flat-footed. Allergan’s move to sidestep an inter parties review at the PTAB by taking advantage of the Tribe’s sovereign immunity brought patent law deep into unfamiliar territory.

The terrain might be strange, but many patent owners and petitioners now realize they need to understand the lay of the land. The St. Regis Tribe has also partnered with a company in the computer sector, making it clear that sovereign immunity is a challenge not only for generic drug companies but for any company threatened with patent assertion. Right now, deal makers far and wide are scrambling to do more transactions based on immunity. Our multi-disciplinary panel will address such questions as:
What is the nature of tribal immunity? Do Indian tribes offer special advantages in these deals, or could a patent owner just as well make a deal for a state government to harbor patents?
What was the basis for the PTAB’s earlier decisions this year to grant immunity to state university patent owners such as the University of Florida? How does tribal immunity differ from states’ immunity?
Does it make a difference to the legal analysis that the St. Regis Tribe took ownership of patents that were already being challenged at the PTAB?
Will the PTAB’s decision regarding the Allergan case be appealable?


  • Brendan Johnson, Robins Kaplan LLP
  • Lissi Mojica, Brooks Kushman PC
  • Shashank Upadhye, Amit Talati Upadhye

ITC Update: Brushing Off the PTAB and Other Recent Developments

Webinar Date: 09/27/2017

The volume of patent litigation in U.S. district courts is in a slump, but litigators who practice at the U.S. International Trade Commission remain busy. The institution of IP cases at the ITC rose last year to a five-year high, and is on an even faster pace so far this year.

Our panelists — an in-house counsel who manages ITC litigation for a technology company and two veteran ITC litigators at law firms — will examine the latest on a number of important issues relating to ITC practice:

  • Brushing off the PTAB: The ITC has been less willing than U.S. district courts to stay cases pending AIA proceedings. But recently the Commission has made clear it will show little deference even to a PTAB Final Written Decision (FWD). For instance, in Certain Network Devices, Related Software and Components Thereof (II), Inv. No. 337-TA-945, that pitted complainant Cisco against respondent Arista Networks, the ITC denied Arista’s request to suspend or rescind a limited exclusion order (LEO) and a cease and desist order (CDO) pending appeal of recent PTAB FWDs finding all claims of the Cisco’s asserted patents unpatentable. The ITC’s ban on imports until the Federal Circuit rules increases the leverage of ITC complainants considerably.
  • The latest on “domestic industry”: In a recent decision, an ITC judge found that investments by the patent holder’s licensee can satisfy the domestic industry requirement, a new wrinkle on the Commission’s view that a non-practicing entity can base its domestic industry requirement argument on its own licensing activity.
  • Expensive hassles for third parties: The wider definition of domestic industry makes it easier for a company that settled with an NPE to be dragged into a suit against a different respondent. Third parties also face time-consuming subpoenas.
  • The 100-day Pilot Program: A respondent has used it to get a quick decision on section 101 patent eligibility.


  • G. Brian Busey, Morrison & Foerster LLP
  • Blaney Harper, Jones Day
  • Lauren Hoffer, Dell Technologies

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

Webinar Date: 09/26/2017

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

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


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

Private Right or Public Right? Preview of Oil States at the U.S. Supreme Court

Webinar Date: 09/14/2017

The oral argument in Oil States might not take place for months, but conversations about the case already enliven the offices of IP practitioners both in-house and at law firms. If the U.S. Supreme Court decides that AIA post-grant proceedings are unconstitutional, some think a period of chaos will follow, throwing into doubt, for instance, the status of the more than 1,300 patent claims the Patent Trial and Appeal Board has already canceled. In addition to vast practical implications, the case also will force contemporary answers to legal and philosophical questions about patents that somehow need to be adjudicated despite hundreds of years of U.S. case law: are patents private property that can only be invalidated by an Article III court? Or are they a public right closely entwined with a federal agency, thus giving the agency the power to revoke?

Our panel will offer a uniquely informed and balanced discussion of the case. It includes a patent professor who is strongly identified through his writing and research with the argument that patents are private rights; a top Supreme Court litigator who recently argued on behalf of an IPR petitioner in a recent petition for cert. (that was denied) that the validity of a patent concerns a public right that can be cancelled by the agency that erroneously granted the patent; and an appellate lawyer who argued a 2011 Supreme Court case, Stern v. Marshall, that concerned the constitutionality of adjudicating matters outside of Article III courts and resulted in a major disruption of bankruptcy courts.


  • William Jay, Goodwin Procter LLP
  • Prof. Adam Mossoff, George Mason University
  • Kent Richland, Greines, Martin, Stein & Richland LLP

Judge Gilstrap's Test and an "Intervening Change in the Law"?: The Latest on Venue

Webinar Date: 08/15/2017

Thousands of pending patent cases are now on uncertain ground because of the U.S. Supreme Court TC Heartland decision in May that overturned almost three decades of Federal Circuit jurisprudence concerning venue in patent litigation. Our panel of veteran litigators will examine what has happened since in district courts and how that disorder is likely to be resolved on two key issues:

  • Is Heartland an “intervening change in law” that allows defendants to revive a venue challenge? Does it matter how far their cases have progressed? One panel of the Federal Circuit, split 2-1, has already refused to grant mandamus to defendants who argued that a federal judge in the Eastern District of Virginia had abused discretion in refusing to move a close-to-trial case. But few expect that to be the Federal Circuit’s last word on the issue.
  • What will be the new rules for proper venue that accord with the Supreme Court’s interpretation of section 1400(b)? Most notably, what constitutes “a regular and established place of business”? In late June, Judge Rodney Gilstrap of the Eastern District of Texas, who oversees the largest docket of patent cases in the U.S., laid out a four-factor test in Raytheon v. Cray. Our panel will examine the influence Judge Gilstrap’s permissive test is already having. Cray’s writ of mandamus is pending before the Federal Circuit asking for an immediate reversal of Judge Gilstrap’s decision denying its motion to transfer. Judge Gilstrap has stayed the case and the mandamus request is still pending. Our panel will discuss the Federal Circuit’s immediate and longer-term options.


  • Yar Chaikovsky, Paul Hastings LLP
  • Michael Florey, Fish & Richardson PC
  • Jonathan Suder, Friedman, Suder & Cooke

FRAND and SEP Update: Asia

Webinar Date: 08/08/2017

Standard essential patents (SEPs) are a key part of global commerce. For instance, an Internet of Things or 5G mobile network can only be built using standards that are licensed at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet traditional jurisprudence has shown itself problematic for disputes involving SEPs.

This webinar will consider the impact of recent developments with SEPs in China, Korea, Japan, and India. Our panel, which includes a senior competition lawyer at a SEP owner, an attorney who represents implementers, and a leading academic authority, will discuss topics including:

  • The April release of the Beijing High People’s Court Guidelines for Patent Infringement Determination;
  • The decision of the Beijing IP Court in March finding Sony infringed a SEP and was an unwilling licensee, resulting in the first injunction in favor of an SEP holder in China;
  • The decision of the Korean Fair Trade Commission, now being appealed, to impose a $853 million fine on Qualcomm for FRAND violations;
  • The ongoing assertion campaign by Japanese sovereign patent fund IP Bridge; and
  • Ericsson’s campaign to win licensing royalties from local and Chinese phone makers in India.


  • Jorge Contreras, University of Utah School of Law
  • James Harlan, InterDigital Holdings, Inc.
  • Paul Zeineddin, Zeineddin PLLC

Winning Attorney Fees: What Works, What Doesn't 

Webinar Date: 07/20/2017

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

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

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


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

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

Webinar Date: 07/12/2017

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

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

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


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

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

Webinar Date: 06/28/2017

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

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

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


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

Venue Transfers and Section 1400(b) After Heartland 

Webinar Date: 06/13/2017

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

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


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

Pharma Lessons from the PTAB: Litigation and Prosecution 

Webinar Date: 06/08/2017

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

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


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

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

Webinar Date: 06/01/2017

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

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

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


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

Global FRAND Update - Europe

Webinar Date: 05/24/2017

This webinar will consider the impact of recent important judicial decisions and institutional initiatives in Europe concerning SEPs. The past decade has demonstrated that traditional patent jurisprudence is ill-suited for disputes involving standard-essential patents (SEPs) and the promise to license them at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet the technological future, including the Internet of Things and 5G mobile networks, can only be built using standards and patent licenses. Courts and governments worldwide are straining to adapt. 

Our panel includes a senior competition lawyer at both an owner of SEPs and an implementer, as well as a leading academic authority on standards.They will discuss:  

  • Unwired Planet v.Huawei, the recent decision of the U.K. High Court that determined the value of a worldwide FRAND portfolio license to Unwired Planet’s patent portfolio, and decreed that Huawei must license it at that rate or face an injunction; 
  • The outcome of numerous SEP cases that have followed Huawei v. ZTE, the 2015 ruling from the European Court of Justice that spelled out conditions under which a SEP holder can ask for an injunction without infringing competition law; 
  • The April announcement by the European Union that it is preparing a “roadmap” to provide a framework for licensors and licensees of SEPs, and an early leak of its contents. 


  • Jorge Contreras, University of Utah 
  • James Harlan, InterDigital, Inc. 
  • Gil Ohana, Cisco Systems 


After Laches: Equitable Estoppel Redux? 

Webinar Date: 05/11/2017

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

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


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

After Form 18: Pleading Infringement

Webinar Date: 04/27/2017

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

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

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


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

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

Webinar Date: 04/20/2017

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

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

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

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


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

Design Protection After Star Athletica: Way Beyond Fashion

Webinar Date: 04/13/2017

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

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

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


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

IPR Estoppel in District Court:  How Wide?

Webinar Date: 03/29/2017

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

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


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

Divided Infringement in the Life Sciences: Patent Prosecution Perspective

Webinar Date: 03/16/2017

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

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

Divided Infringement Since Akamai En Banc: Development of the Law

Webinar Date: 03/14/2017

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

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

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


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

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

Webinar Date: 03/09/2017

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

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

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


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

Willfulness, Enhanced Damages, and Opinion of Counsel Since Halo

Webinar Date: 02/23/2017

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


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

Economics of Settlement: What Patent Litigators Need to Know

Webinar Date: 02/07/2017

A damages expert is not always in the room when in-house counsel and their outside litigators must make money calculations regarding settlement of a patent infringement case. This webinar will consider what data is needed to calculate a settlement offer at every major point along the litigation timeline, how to use that data to calculate a timely range of offers, and when an outside expert might be needed. At the outset, for instance, an alleged infringer must decide how much it is willing to pay to make the other side go away — unless it has a deterrence policy of never settling with non-practicing entities. Parties may want to assess the value of a case early on before substantial legal costs are incurred, a process encouraged (at least in theory) by last year’s change in the Rules of Federal Procedure. The time period after an IPR petition is filed — but before the PTAB makes its institution decision — has turned into a productive window for settlement decisions. And, of course, there is important new data on the tables after a damages judgment, but before appeal.

Our panelists are an in-house counsel at a major multinational technology company, a litigator who often represents patent plaintiffs, and a damages expert.


  • Laurie Gathman Kowalsky, Koninklijke Philips N.V.
  • Christopher Lee, Lee Sheikh Megley & Haan LLC
  • Kimberly Schenk, Charles River Associates

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

Webinar Date: 02/01/2017

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

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

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


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

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

Webinar Date: 01/19/2017

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

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


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

Design Patents: Future of Damages After Apple v. Samsung

Webinar Date: 01/12/2017

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

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


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

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

Webinar Date: 12/15/2016

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

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


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

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

Webinar Date: 12/01/2016

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

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


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

Ethics in AIA Post-Grant Proceedings at the PTAB

Webinar Date: 11/10/2016

In its amendments to the Rules of Practice for Trials earlier this year, the PTAB stiffened the rules concerning the duty of candor for attorneys who practice before the Board and set forth the process and conditions under which it will impose sanctions. The PTAB runs a tight ship: in the handful of years that the PTAB has held IPR and CBM trials under the AIA, it has already sua sponte sanctioned several petitioners and patent owners or their counsel.

This webinar features a Lead Administrative Patent Judge of the PTAB who will review the ethical obligations of participants in AIA post-grant proceedings. Two experienced post-grant litigators will discuss several topics with the judge, including:

  • The rules regarding motions for sanctions by parties in an inter partes  (IPR) or covered business method (CBM) review;
  • Lessons from successful motions for sanctions versus unsuccessful motions;
  • Ethical problems that arise due to parallel proceedings at the PTAB and U.S. district courts, including issues regarding protective orders and inconsistent claim construction.


  • Hon. Thomas Giannetti, USPTO
  • Richard Giunta, Wolf Greenfield
  • Kevin Laurence, Renaissance IP

Obviousness After Apple v. Samsung

Webinar Date: 11/02/2016

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

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


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

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

Webinar Date: 10/19/2016

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

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

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


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

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

Webinar Date: 10/18/2016

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

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

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


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

Parallel Proceedings in District Court and the PTAB: The Endgame 

Webinar Date: 09/22/2016

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

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


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

Parallel Proceedings in District Court and the PTAB: Midstream Maneuvers

Webinar Date: 09/20/2016

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

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


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

Inducement and Indirect Infringement: A Muddle after NuVasive?

Webinar Date: 08/30/2016

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

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


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

Life Sciences & Section 101: The Way Ahead

Webinar Date: 08/11/2016

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

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

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


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

Open Source Due Diligence in M&A

Webinar Date: 08/04/2016

Click here to register to listen.

Open source software (OSS) can shorten product development cycles and is likely something you use every day.  OSS, however, is not free, and compliance with open source software may be in terms of a patent or copyright license instead of a monetary payment.  In fact, OSS costs in an acquisition or merger can impact the valuation of the target, delay, or even scuttle the deal.

This webinar will focus on exploring OSS issues during due diligence.  This includes examining how OSS was used by the target of the acquisition and whether such use aligns with the acquirer’s business model.  The discussion will include:

  • Exploring how an acquisition target uses the open source;
  • Determining possible impacts on a target’s intellectual property both in terms of copyright and patents;
  • Determining possible impacts on the acquirer’s intellectual property; and
  • Possible ways to mitigate open source use of the target when such use does not align with the acquirer’s business model.

The moderator and panelists are experts in OSS at major technology companies.

Moderator: Joseph D’Angelo, EMC Corporation


Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.

After Brexit: European Patents and Design Rights

Webinar Date: 07/14/2016

Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. These two webinars will help owners of patents and trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Patent owners, for instance, need to be clear on the independence of the European Patent Office from the EU and will want to understand the dynamics that will determine whether the long-gestating United Patent Court ever comes to life. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. Each of our panels includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.


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

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

Goodbye Seagate: Willfulness and Enhanced Damages After Halo

Webinar Date: 06/30/2016

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


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

Internet of Things: Standards, Licensing, or Litigation?

Webinar Date: 06/16/2016

Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at a major buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:

  • Chain of title issues;
  • Patent and invention assignment language;
  • Encumbrances;
  • Inventorship; and
  • Terminal disclaimers.

They also will discuss strategy issues about the inclusion of non-U.S. patents, the optimal size of a portfolio, the use of brokers, and bilateral licenses to the seller from the buyer.


Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, LLP

You Lost the Arbitration: New Options for Appeals

Webinar Date: 04/28/2016

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

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


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

Evidence at the PTAB: New AIA Rules

Webinar Date: 04/14/2016

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

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


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

Redundant Grounds in Post-Grant Proceedings

Webinar Date: 04/07/2016

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

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

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


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

Settling ANDA Litigation: Options and Risks

Webinar Date: 03/23/2016

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

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

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

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

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

Damages on Extraterritorial Sales After Carnegie Mellon

Webinar Date: 02/24/2016

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

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

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

Post-grant Puzzler: Cuozzo at the Supreme Court

Webinar Date: 02/02/2016

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

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


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

Design Patent Damages: The Law As It Is Today

Webinar Date: 01/28/2016

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

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


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