Patent Litigation 2012

Transcription

1 Satisfy Your CLE Requirements! Patent Litigation 2012 San Francisco, September 27-28, 2012 Live Webcast, September 27-28, October 11-12, 2012, November 12-13, 2012 The effect of the America Invents Act and recent court decisions An in-depth exploration of growing joint/multiple infringement litigation Strategy and tactics in reexamination and post-grant review proceedings The new PTO rules promulgated after enactment of the America Invents Act and the new PTO procedures created by the AIA Current trends in patent damages in the post-uniloc environment Special Features! Direct and cross-examination of a technical expert at trial One hour of Ethics credit! Do You Know There Are 5 Ways To Attend PLI s Programs? See inside for details... Register Online at or Call (800) 260-4PLI

2 Patent Litigation 2012 San Francisco, September 27-28, 2012 Live Webcast, September 27-28, October 11-12, 2012, November 12-13, 2012 Why You Should Attend Rapid changes in patent law make it necessary that, whether you are plaintiff s or defendant s counsel, you are up-to-date on the current state of the law and can quickly develop successful litigation strategies and tactics. This program is taught by a faculty of both outside and in-house lawyers who have earned national reputations in patent litigation by trying and managing a wide variety of bench and jury patent trials, and provides comprehensive coverage of every phase of a patent lawsuit. Through lecture and demonstration, you will be able to hone your patent litigation skills in just two days. The program schedule has been totally revised, based on comments from prior year attendees at this popular annual program, and many new sessions have been added to address hot topic developments over the last year. What You Will Learn An expanded opening session focusing on recent case law, as well as the effect on patent litigation of the America Invents Act An in-depth exploration of growing joint/multiple infringement litigation The still-evolving law of the patentability of business methods and what constitutes a business method two years after Bilski Strategy and tactics in reexamination and post-grant review proceedings The new rules promulgated by the PTO after enactment of the America Invents Act to implement the changes in the law and the new PTO procedures created by the AIA Current trends in patent damages in the post-uniloc environment The wide array of pretrial motions relating to: adequacy of pleadings; jurisdiction/venue; evidentiary issues; and substantive issues, that determine where a case will be tried, if a case is tried, what issues will be tried and what evidence will be considered Special Features: Direct and cross-examination of a technical expert at trial Ethical issues in patent litigation: one hour of Ethics credit! Who Should Attend Patent litigators and lawyers in patent firms who advise clients in disputes that may lead to litigation; general business litigators whose practice includes patent trials; patent prosecutors whose actions in preparing and prosecuting patents are critical in providing support for the proper claim construction; and corporate counsel who will have the responsibility for supervising patent litigation, interpreting its progress for management, and pursuing opportunities for settlement. Live Webcast at The San Francisco session of this program is available live via the web at Print the Course Handbook Submit questions electronically Get real-time education right from your PC! If you have any questions, please call PLI s Customer Relations Department at (800) 260-4PLI. R e s e r v e y o u r p l a c e t o d a y, c a l l ( ) P L I.

3 Chair: Edward G. Poplawski Sidley Austin LLP F A C U L T Y San Francisco and Live Webcast Charles S. Barquist Morrison & Foerster LLP Hon. Charles E. Bullock Chief Administrative Law Judge United States International Trade Commission Darren E. Donnelly Fenwick & West LLP Mountain View, California Stephen C. Durant Schwegman Lundberg Woessner, PA San Jose Vera M. Elson Sidley Austin LLP Palo Alto Mark A. Flagel Latham & Watkins LLP David I. Gindler Irell & Manella LLP Andrea Weiss Jeffries Wilmer Cutler Pickering Hale and Dorr LLP Craig R. Kaufman Freitas Tseng & Kaufman LLP Redwood Shores, California Olivia M. Kim Sidley Austin LLP Denise L. McKenzie Kirkland & Ellis LLP Mark A. Samuels O Melveny & Myers LLP John Steele Attorney at Law Palo Alto Robert Greene Sterne Sterne, Kessler, Goldstein & Fox P.L.L.C. Chair: Jeanne M. Gills Foley & Lardner LLP Meredith Martin Addy Steptoe & Johnson LLP David L. Applegate Williams Montgomery & John Ltd. Courtenay C. Brinckerhoff Foley & Lardner LLP Scott W. Burt Vice President & Chief Intellectual Property Counsel MOSAID Technologies Incorporated Ontario, Canada Tiffany P. Cunningham Kirkland & Ellis LLP Ahmed J. Davis Fish & Richardson P.C. Linda S. DeBruin Kirkland & Ellis LLP Lauren A. Degnan Fish & Richardson P.C. Hon. Theodore R. Essex Administrative Law Judge United States International Trade Commission Christopher P. Godziela Corporate Counsel, Intellectual Property & Standards Alcatel-Lucent Murray Hill, New Jersey David J.F. Gross Faegre Baker Daniels LLP Minneapolis Clinton H. Hallman, Jr. Chief Counsel, Patents Kraft Foods, Inc. Northfield, Illinois Christopher G. Hanewicz Perkins Coie LLP Madison, Wisconsin Julianne M. Hartzell Marshall, Gerstein & Borun LLP Reginald J. Hill Jenner & Block LLP Neil C. Jones Nelson Mullins Riley & Scarborough LLP Greenville, South Carolina Mark L. Levine Bartlit Beck Herman Palenchar & Scott LLP Wesley O. Mueller Leydig, Voit & Mayer, Ltd. Kevin E. Noonan, Ph.D. McDonnell Boehnen Hulbert & Berghoff LLP Christine Abuel Pompa Fitch, Even, Tabin & Flannery LLP Renee J. Rymarz Senior Counsel, Global IP - Patents Kraft Foods, Inc. Northfield, Illinois Krista S. Schwartz Jones Day Michelle M. Umberger Perkins Coie LLP Madison, Wisconsin Chair: Christopher K. Hu Dickstein Shapiro LLP George E. Badenoch Kenyon & Kenyon LLP Elaine Herrmann Blais Goodwin Procter LLP Boston Carolyn H. Blankenship Senior Vice President, Associate General Counsel, Intellectual Property Thomson Reuters Hon. Theodore R. Essex Administrative Law Judge United States International Trade Commission Washington, D.C Deborah E. Fishman Dickstein Shapiro LLP Palo Alto David J.F. Gross Faegre Baker Daniels LLP Minneapolis Constance S. Huttner Vinson & Elkins LLP Eric J. Lobenfeld Hogan Lovells US LLP Denise L. Loring Ropes & Gray LLP C. Edward Polk, Jr. Chief Litigation Officer Exela Pharma Sciences, LLC Lenoir, North Carolina Bert C. Reiser Latham & Watkins LLP Ambreen Salters Stoneturn Group LLP Houston Carol A. Lewis White Intellectual Property Counsel W.L. Gore & Associates, Inc. Newark, Delaware Jeffrey T. Zachmann Counsel - Corporate Litigation IBM Corporation Armonk, New York Program Attorney: John M. Mola

4 Program Schedule Day One: 9:00 a.m. 5:00 p.m. Morning Session: 9:00 a.m. 12:30 p.m. 9:00 Program Overview SF & WEB: Edward G. Poplawski CHI: Jeanne M. Gills NYC: Christopher K. Hu 9:15 Recent Developments and Changes in Patent Law and Their Effects on Patent Litigation A review of the effects on patent litigation of the America Invents Act (AIA), as well as a review of the important decisions of the Supreme Court, Federal Circuit and District Courts over the past year. Key trends and developing patent law doctrines will also be covered. SF & WEB: Craig R. Kaufman CHI: Christopher P. Godziela, Reginald J. Hill NYC: Elaine Herrmann Blais 10:15 Trends in ITC Practice This segment will look at considerations in seeking relief for patent infringement from the International Trade Commission instead of, or in addition to, filing an action in Federal District Court. It will also focus on the considerations and trends in seeking relief from the ITC, including developments in domestic industry, time to decision, injunctive relief as the only form of relief available and increased use of the ITC by foreign complainants and non-practicing entities. Significant rulings in recent cases will be covered. SF & WEB: Hon. Charles E. Bullock, Mark A. Samuels CHI: Ahmed J. Davis, Lauren A. Degnan, Hon. Theodore R. Essex NYC: Hon. Theodore R. Essex, Bert C. Reiser 11:15 Networking Break 11:30 Two Years After Bilski The Patentability of Business Methods The long-awaited decision of the U.S. Supreme Court in Bilski in 2010 was expected to clarify the law with respect to the patentability of business methods. However, the Supreme Court s flexible test of patentability, which includes, but is not limited to, the pre-existing machine or transformation test, does not provide a clear resolution of the issue. Subsequent Federal Circuit decisions, including CyberSource, Ultramercial and Dealertrack, make clear that the courts are still searching for the boundary between patentable and unpatentable subject matter. This session will cover recent developments in the law governing the patentabilty of business methods. SF & WEB: Stephen C. Durant CHI: Tiffany P. Cunningham, Linda S. DeBruin NYC: Carolyn H. Blankenship 12:30 Lunch Break Afternoon Session: 1:45 p.m. 5:00 p.m. 1:45 Changes in Patent Office Practice President Obama signed the America Invents Act into law on September 16, 2011, but many of the changes are just being implemented by the Patent Office and others are yet to come. This session will review the relationship to patent litigation practice of new proceedings conducted by the Patent Trial and Appeal Board, preview the transition to a first-to-file patent system, and address how other changes to Patent Office practice from the AIA will impact patent litigation. Other topics will include: Key provisions of the America Invents Act and their impact Timetable of effective dates and implementation Key provisions of Patent Office implementing rules SF & WEB: Darren E. Donnelly CHI: Courtenay C. Brinckerhoff NYC: Denise L. Loring 2:45 Parallel Patent Reexaminations The filing of reexaminations continues to be a strategy for parties against whom a patent of questionable validity has been asserted. A reexamination proceeding might be initiated in anticipation of litigation or filed soon after litigation has begun. A parallel reexamination proceeding is usually a basis for seeking a stay of the more costly district court proceeding and/or used to bring the patentee to the bargaining table. Factors to consider in deciding whether to seek reexamination will be covered, including updated data and statistics on PTO reexamination proceedings and a discussion of the new AIA-created inter partes system that replaces inter partes reexaminations in September 2012, and how it differs in standards and procedures from the old system and ex parte reexaminations. This session will also cover the effects of a reexamination proceeding on litigation, including stays, as well as the potential effects on collateral estoppel, claim construction positions, willfulness charges, inequitable conduct claims, and on damages and intervening rights (e.g., if claims are amended). SF & WEB: Robert Greene Sterne CHI: Kevin E. Noonan NYC: Carol A. Lewis White 3:45 Networking Break 4:00 Before the Trial The Pleadings, Motions and Other Factors That Determine What Gets to Trial in a Patent Case This session will cover specific pleading requirements (such as for inequitable conduct), motions to dismiss and transfer, motions for summary judgment, motions in limine and other factors that determine what actually is tried in a patent case. Strategies as to how and when to raise challenges to claims and defenses will also be covered. The importance and effect of the infringement and invalidity contentions now required in many district courts will also be discussed. SF & WEB: Mark A. Flagel CHI: David J.F. Gross, Renee J. Rymarz NYC: Constance S. Huttner 5:00 Adjourn

5 Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival. Day Two: 9:00 a.m. 5:00 p.m. Morning Session: 9:00 a.m. 12:15 p.m. 9:00 Patent Damages Recent Federal Circuit and District Court decisions reflect a trend towards damages awards based less on application of rules than on evidence of actual harm sustained. This session will cover recent cases on damages, including the Federal Circuit s Uniloc decision, which rejected 25% of an infringer s anticipated profits as a rule of thumb for a reasonable royalty, and the string of cases in which the entire market value rule has been more strictly applied. Other cases on both lost profits and reasonable royalty damages will be analyzed. SF & WEB: Vera M. Elson, Olivia M. Kim, Edward G. Poplawski CHI: Julianne M. Hartzell, Neil C. Jones NYC: Deborah E. Fishman, Ambreen Salters 10:00 Opinion Letters, Willful Infringement and Exceptional Case This session will discuss the related topics of willful infringement, exceptional case, and the need for opinion letters. Since Seagate Technology, many patent practitioners predicted that opinion letters were generally no longer necessary. Subsequent decisions, however, do not necessarily support that prediction. The session will address the need for opinions, the role of opinions in the willfulness analysis, and the issue of whether a case is exceptional, in either direction. SF & WEB: Charles S. Barquist CHI: Clinton H. Hallman, Jr., Christine Abuel Pompa NYC: Jeffrey T. Zachmann 11:00 Networking Break 11:15 Dealing With Experts, Including Rule 26 Employee Experts Expert witnesses play a critical role in patent litigation with respect to both liability and damages issues. Often a company s best resource on the technology at issue or state of the marketplace is one of its employees. The employee (typically a non-retained or inside expert) can provide valuable information on the state of the prior art or state of the market and competition, advise on the similarities or differences between the patent claims and the accused products/methods, help keep the company focused on the business issues, and help identify outside experts. However, based on the December 2010 changes to Rule 26, counsel must assess early on in the litigation whether any such employee will only provide factual testimony or may also be used to provide expert opinions that require disclosure of the subject matter and underlying opinions and facts to be testified on. This session will cover the selection and use of testifying and non-testifying experts, the use of experts at Markman hearings, the development of expert opinions, the preparation of expert reports, and the discoverability of certain communications with the expert. This segment will also consider the use of evidentiary motions, including Daubert motions and other motions in limine to exclude or limit expert testimony at trial. SF & WEB: David I. Gindler CHI: Christopher G. Hanewicz, Michelle M. Umberger NYC: Eric J. Lobenfeld 12:15 Lunch Break Afternoon Session: 1:45 p.m. 5:00 p.m. 1:45 Infringement Based on the Acts of Multiple Parties In a world that is increasingly connected by networks with services provided by multiple entities, and in which complex products are made up of components from numerous sources, issues of infringement based on the acts of multiple parties arise far more frequently. This session will cover recent cases applying the Federal Circuit s Muniauction decision relating to infringement of a method claim where not all steps are performed by one entity. The relationship between the entities necessary for a finding of infringement will also be covered, including the effect of the Akamai and McKesson Federal Circuit decisions. This session will also cover recent cases on the standards for determining other forms of multi-party infringement, including inducement of infringement and contributory infringement. SF & WEB: Denise L. McKenzie CHI: Meredith Martin Addy, Wesley O. Mueller NYC: George E. Badenoch 2:45 Networking Break 3:00 Expert Direct/Cross-Examination The direct and cross-examination of an expert at trial is the culmination of a long series of events. These events begin with the identification of an expert pursuant to Rule 26 of the Federal Rules of Civil Procedure, and continue with the expert report, rebuttal report and expert deposition. Any shortcomings in the expert s qualifications or analyses, or in the party s theories or disclosures, subject the expert and his or her testimony to motions in limine, Daubert motions and other evidentiary motions that can severely limit the scope of the expert testimony and, in some cases, lead to exclusion of the witness. This session will include a demonstration of the direct and cross-examination of an expert, together with a discussion of the pretrial activities that determined what the expert was ultimately permitted to testify to at trial. SF & WEB: Andrea Weiss Jeffries CHI: David L. Applegate, Mark L. Levine NYC: David J.F. Gross 4:00 Ethical Issues in Patent Litigation In-house and outside counsel face ethical issues in patent litigation at every step of the process, from pre-suit Rule 11 compliance, throughout the discovery process, and continuing through to trial and appeal. The sometimes fuzzy boundary between ethical transgression and zealous advocacy will be explained. USPTO ethical rules that apply to practitioners licensed by the USPTO even when practicing in another forum will be addressed. Ethical issues arising from direct, indirect and subject matter conflicts will also be covered. SF & WEB: John Steele CHI: Scott W. Burt, Krista S. Schwartz NYC: C. Edward Polk, Jr. 5:00 Adjourn

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8 Patent Litigation 2012 San Francisco, September 27-28, 2012 Live Webcast, September 27-28, October 11-12, 2012, November 12-13, 2012 Practising Law Institute 810 Seventh Avenue New York, NY NON-PROFIT ORGANIZATION U.S. POSTAGE PAID PRACTISING LAW INSTITUTE REGISTRATION/ORDER FORM YES, please register me for the following session: Patent Litigation 2012 When Registering, Please Refer to Priority Code: PDP2 Make necessary corrections on mailing address San Francisco Seminar,* September 27-28, 2012, PLI California Center, $1, Seminar,* October 11-12, 2012, University of Gleacher Center, $1, Seminar,* November 12-13, 2012, PLI New York Center, $1,695 2 Live Webcast,* September 27-28, 2012, #34643, $1, Privileged Member Fee: $ Two-Volume Course Handbook only, $ Audio CDs, available October 2012, $ DVDs, available October 2012, $1,695 My address is: Please send me updates on PLI programs and services. *Includes Course Handbook, in either bound volume or flash drive format. Attendees will have access to a downloadable version of the Handbook several days prior to the program. Audio CDs and DVDs must be prepaid and are non-refundable, with the exception of defective or unopened products. FREE Shipping and Handling on all Audio CD/DVD and Treatise purchases. PLI will pay shipping and handling charges on all prepaid Course Handbook orders in the United States, U.S. Possessions and Canada. California, Florida, Illinois, Maryland, Massachusetts, New Jersey, New York, Ohio, Pennsylvania, Rhode Island, Texas, Virginia and residents please add applicable sales tax to the price of Publications and Audio CD and DVD products. Please check if you are a PLI Privileged Member. Please send me information on PLI Membership. Please send me PLI s catalog of Publications. Please send me PLI s catalog of Institutes and Programs. The information below is required to properly process your CLE certificate: State: Bar ID# State: Bar ID# State: Bar ID# $ check enclosed (Payable to Practising Law Institute) Bill me PLI Privileged Member Please Charge to: Visa MasterCard American Express Diners Club Credit Card No.: Exp. Date: Signature Required: Phone No.: PRIORITY CODE: PDP2 8A500 Name Title Firm Address ( U s e S t r e e t A d d r e s s f o r U P S D e l i v e r y ) City/State/Zip Phone Fax P r a c t i s i n g L a w I n s t i t u t e