The Stanford Program in Law, Science & Technology Berkeley Center for Law & Technology at UC Berkeley The University of Texas School of Law

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The Stanford Program in Law, Science & Technology Berkeley Center for Law & Technology at UC Berkeley The University of Texas School of Law 9 t h An n u a l Advanced Patent

1 The Stanford Program in Law, Science & Technology Berkeley Center for Law & Technology at UC Berkeley The University of Texas School of Law 9 t h An n u a l Advanced Patent Law Institute Earn up to Hours of Credit Including 2.75 Hours of Ethics Credit December 11-12, 2008 Hyatt Regency Santa Clara Santa Clara, California M a j o r Sp o n s o r

2 9 th Annual Advanced Patent LAW Institute December 11-12, 2008 Hyatt Regency Santa Clara Santa Clara, California Earn up to Hours of Credit Including 2.75 Hours of Ethics Credit THURSDAY MORNING, DEC. 11, 2008 Presiding Officer: Robert Barr, Berkeley Center for Law & Technology, Berkeley, CA 8:00 a.m. Registration Opens Includes continental breakfast. 8:50 a.m. Welcoming Remarks 9:00 a.m..50 hr Obviousness After KSR In KSR, the Supreme Court changed the standard for obviousness. This session will explore the impact of the KSR decision. Is it really easier to win summary judgment of obviousness? How are obviousness cases tried to the jury? What can you expect by way of a jury instruction? What is the role of secondary indicia of non-obviousness? Daralyn J. Durie, Keker & Van Nest, LLP, 11:15 a.m hr Disasters in Litigation: What Patent Prosecutors Could Have Done to Prevent the Carnage Ten case histories, with disastrous results for the patentee, will be discussed. In each instance there will be suggestions as to what the patent prosecutor could have done to avoid the bad result. Richard A. Killworth, Dinsmore & Shohl, LLP, Dayton, OH Dale S. Lazar, DLA Piper, Reston, VA THURSDAY AFTERNOON Presiding Officer: Christopher J. Byrne, National Semiconductor, Santa Clara, CA LUNCHEON PRESENTATION Sponsored by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 12:15 p.m. Pick Up Buffet Lunch Included in conference registration. 2:00 p.m..50 hr IP Enforcement in the Wake of ebay: Obtaining Injunctive Relief at the U.S. International Trade Commission The near-automatic issuance of injunctions against patent infringers ended with the Supreme Court s decision in ebay that now requires a showing of irreparable injury, proof that monetary remedies are inadequate, a balancing of hardships between the patent owner and the infringer, and a public interest analysis. However, the U.S. International Trade Commission (ITC) has found that its issuance of exclusion orders prohibiting further importation of infringing articles into the United States is not limited by the decision in ebay. The discussion concludes with a survey of the procedural and substantive requirements for these ITC investigations, as well as the logistics and strategy of handling these cases in the wake of ebay. Thomas L. Jarvis, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC 9:30 a.m hr Current Licensing Issues: Exhaustion and Implied License Doctrines after MedImmune and Quanta This session will address how recent Supreme Court decisions affect some vital substantive and procedural aspects of patent licensing. Discussion will include the impact of these recent cases on (i) the drafting of licensing provisions designed to restrict the rights of licensees customers and downstream business partners; (ii) the drafting of provisions regarding the rights of licensors and licensees when a licensing agreement or the patents underlying it come into dispute; and (iii) strategy and tactics for resolving disputes over licensing agreements, including where and when a patent can be challenged in litigation, and the effect of such a challenge on the ongoing licensing relationship. Robert P. Merges, Berkeley Center for Law & Technology, Berkeley, CA Keith E. Witek, Advanced Micro Devices, Inc., Austin, TX 10:30 a.m. Break 10:45 a.m..50 hr Developments in Claims Construction Matthew D. Powers, Weil, Gotshal & Manges LLP, Redwood Shores, CA 12:40 p.m..50 hr The Shocking Truth About Patent Litigation: Data From the IP Litigation Clearinghouse Professor Lemley will present preliminary findings from the most comprehensive collection of patent litigation data in the country, including the real truth about how many patent trolls are out there, whether defendants copy inventions, and the best district to get your patent case to trial (hint: it s NOT the Eastern District of Texas). Mark A. Lemley, Stanford Law School, Stanford, CA 1:10 p.m. Break CONCURRENT SESSIONS TRACK A: LITIGATION TRACK Presiding Officer: Colleen Chien, Santa Clara University, Santa Clara, CA 1:30 p.m..50 hr Forum Selection This presentation will discuss the various ways jurisdictions are managing patent infringement cases, provide certain statistical data related to various fora, identify the popularity of various jurisdictions, and provide estimated average times to trial in some of the popular jurisdictions. The presentation will also discuss the various considerations with proceeding in some of the more popular jurisdictions. I. Neel Chatterjee, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA 2:30 p.m..75 hr ethics E-Discovery and Spoliation A discussion of the impact of the new rules, their interpretations, and practical suggestions for electronic evidence. Barbara A. Caulfield, Dewey & LeBoeuf LLP, East Richard Finkelman, Navigant Consulting, Inc., Phillip B. Philbin, Haynes and Boone, LLP, 3:15 p.m..50 hr Top 10 Do s and Don ts for Trial Practice Trying IP cases, especially patent cases, is half science / half art / half experience / half theatre, with a little law thrown in to avoid complacency and maintain adrenalin flow, with the further challenge that one important part of your audience isn t even in the room. While nothing is written in stone about trials, certain have to s and never should s become apparent. Ten of these do s and don ts will be the focus of this (warhorse s) presentation. Kenneth R. Adamo, Jones Day, 3:45 p.m. Break RETURN TO GENERAL SESSION Phone: Fax: Web:

3 TRACK B: CORPORATE TRACK Presiding Officer: Christopher J. Byrne, National Semiconductor, Santa Clara, CA 1:30 p.m hr Strategic Patent Monetization: Brokers, Auctions, Acquisitions and Due Diligence This panel will address the difference between private sales and auctions, understanding valuation expectations, the value of marketing materials from the buyer s perspective and the key due diligence issues on which to focus. John A. Amster, RPX Corp., Gary J. Edwards, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Joseph K. Siino, Yahoo! Inc., Sunnyvale, CA 2:30 p.m..75 hr When to Hold, When to Fold: Litigation Judgment and Settlement Strategies in Patent Cases Deciding when and how to settle patent cases, and which cases to take to trial, is a critical business decision that requires not only an assessment of the risks and benefits in a specific case but also a strategic sense of the long-term interests of the company. This panel of in-house counsel will discuss the various factors to consider and provide an overview of the different approaches taken by companies. Michelle Lee, Google, Inc., Lisa McFall, Yahoo! Inc., Sunnyvale, CA 3:15 p.m..50 hr Offshore Holding Companies for IP: Licensing and Tax Issues A company s intellectual property is often its most valuable asset. It is also generally the asset that is the easiest to move across borders. An IP holding company can help to significantly reduce a U.S. company s worldwide effective tax rate, or it can lead to a large tax bill from the IRS. This session will identify opportunities and pitfalls involved in setting up an international IP holding company and address the issues that may arise. Ward S. Connolly, Fenwick & West LLP, 3:45 p.m. Break RETURN TO GENERAL SESSION 4:00 p.m hr including.25 hr ethics Judicial Panel Leading district court judges discuss effective litigation procedures and practices. Moderator: Vernon M. Winters, Weil, Gotshal & Manges LLP, Redwood Shores, CA Hon. Jeremy D. Fogel, U.S. District Court, Northern District of California, Hon. Marilyn Hall Patel, U.S. District Court, Northern District of California, Additional Judge TBD 5:00 p.m. Adjourn FRIDAY MORNING, DEC. 12, 2008 Presiding Officer: James Pooley, Morrison & Foerster, LLP, 8:30 a.m..75 hr Declaratory Judgment Jurisdiction: Case Law and Practical Application MedImmune t u r n e d d e c l a r a t o r y judgment standards and licensing tactics on their heads. Or did it? Are patentees still able to negotiate with potential licensees or collaborators without opening themselves up to an invalidity challenge? This session will explore both sides of the equation by discussing declaratory judgment actions by potential infringers and patent licensees, and attempts by patentees to avoid such actions, in and out of the licensing context. We will discuss specific applications of the standard post-medimmune, evaluate emerging licensing strategies, and predict how courts will respond to the changing environment. Karen Boyd, Patent Mediation and Consulting, Gary H. Loeb, Genentech, Inc., 9:15 a.m..75 hr Litigation and Counseling Lessons After Seagate In its August 2007 en banc decision In Re Seagate Technology, LLC, the Federal Circuit rewrote the rules of the game relating to willful patent infringement. Overruling 24 years of case law stretching back to the 1983 Underwater Devices case, the Federal Circuit held that the duty to exercise due care to avoid infringing others patents did not necessarily include the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity. From the perspective of a little over a year later, this panel will discuss what the district courts have done with Seagate and how the Seagate opinion has impacted both litigation and counseling in high-stakes patent matters. Heidi Keefe, White & Case LLP, Lee Van Pelt, Van Pelt, Yi & James, Cupertino, CA Matthew F. Weil, McDermott, Will & Emery, 10:00 a.m..50 hr Antitrust and SSO Developments A discussion of recent developments in antitrust cases concerning IP issues arising in standard setting. Daniel M. Wall, Latham & Watkins LLP, 10:30 a.m. Break 10:45 a.m..75 hr The Return of Patentable Subject Matter After a decade of dormancy, Section 101 is back, with a tough new set of standards in the PTO and a troika of new Federal Circuit cases limiting the patentability of software, business methods, and processes. Learn how to navigate the new minefield in prosecution and litigation. Robert D. Fram, Covington & Burling LLP, Mark A. Lemley, Stanford Law School, Stanford, CA Michael J. Shuster, Fenwick & West LLP, 11:30 a.m..75 hr Remedies: Reasonable Royalties, Apportionment, Injunctions and Compulsory Licenses In the past two years, the patent remedies landscape has undergone dramatic change. Tried and true remedies such as permanent injunctive relief may no longer be available in some cases. How has ebay been applied, and how have courts addressed future infringement when injunctive relief is denied? Is the entire market value rule being rethought as Congress pushes apportionment to rein in damages? Can the royalty base ever extend beyond U.S. borders after AT&T v. Microsoft? This session will review these changes and discuss their implications in patent practice today. Kelly C. Hunsaker, Fish & Richardson, PC, Julie S. Turner, The Turner Law Firm, FRIDAY AFTERNOON Presiding Officer: Robert Barr, Berkeley Center for Law & Technology, Berkeley, CA LUNCHEON PRESENTATION 12:15 p.m. Pick up Box Lunch Included in conference registration. 12:35 p.m..50 hr ethics Top 10 Ethics Issues for Patent Practitioners In ter ms of frequency and severity, what are the top ten ethics issues for patent practitioners? What recent suits and publicized fiascoes illustrate those issues? John Steele, Fish & Richardson P.C., 1:05 p.m. Break 1:20 p.m..50 hr ethics Inequitable Conduct A review of current issues relating to the inequitable conduct defense, as framed by Phone: Fax: Web:

4 recent Federal Circuit decisions, and a discussion of best practices to avoid charges of patent unenforceability. Robert J. Goldman, Ropes & Gray, LLP, CONFERENCE FACULTY AND PLANNING COMMITTEE KENNETH R. ADAMO Jones Day ROBERT J. GOLDMAN* Ropes & Gray, LLP LYNN H. PASAHOW* Fenwick & West LLP 1:50 p.m..75 hr ethics Joint Defense Strategies and Agreements A recent explosion of multi-defendant patent lawsuits has led to a proliferation of joint defense groups to respond to these suits. This panel will explore the various types of joint defense arrangements and the benefits and pitfalls of each. The discussion will range from the formation of a joint defense group, preparation of joint defense agreements, use of common counsel and experts, utilization of a common defense strategy prior to litigation, and execution of joint defense strategies in practice throughout litigation (from preparation of the answer through trial). It will also discuss ethical and practical considerations facing defense groups as a result of indemnification disputes or other competing interests. Jonathan S. Kagan, Irell & Manella LLP, Los Angeles, CA Michael M. Markman, Covington & Burling LLP, Mallun Yen, Cisco Systems, Inc., 2:35 p.m..75 hr Reexamination and Litigation: When Worlds Collide When Congress instituted the patent reexamination process (ex parte in 1980, and inter partes in 1999), it intended to simplify the process of reviewing the validity of U.S. patents. The result has been anything but simple. Increasingly, reexaminations are being used not as a replacement for litigation, but as a litigation tactic. When litigation and reexamination collide, numerous questions are raised about whether the procedures can or should run in parallel, whether the court proceeding should be stayed, and how the findings in one proceeding impact the other. Using both case studies and empirical analysis, these issues will be explored. Yar R. Chaikovsky, Sonnenschein Nath & Rosenthal LLP, Ralph Eckardt, Institute for Progress, Boston, MA 3:20 p.m..50 hr Indirect Infringement: Method Claims and International Issues A review of the law and strategy involved when litigating method patent claims in the United States against overseas manufacturers, including the challenges of proving contributory or induced infringement and damages. Sean P. DeBruine, Alston + Bird LLP, 3:50 p.m. Adjourn JOHN A. AMSTER RPX Corp. ROBERT BARR CO-CHAIR* Berkeley Center for Law and Technology Berkeley, CA KAREN BOYD* Patent Mediation and Consulting CHRISTOPHER J. BYRNE* National Semiconductor Santa Clara, CA BARBARA A. CAULFIELD* Dewey & LeBoeuf LLP East YAR R. CHAIKOVSKY* Sonnenschein Nath & Rosenthal LLP I. NEEL CHATTERJEE* Orrick, Herrington & Sutcliffe LLP Menlo Park, CA WILLIAM SLOAN COATS* White & Case LLP WARD S. CONNOLLY Fenwick & West LLP SEAN P. DEBRUINE* Alston + Bird LLP DARALYN J. DURIE Keker & Van Nest, LLP RALPH ECKARDT Institute for Progress Boston, MA GARY J. EDWARDS Finnegan, Henderson, Farabow, Garrett & Dunner, LLP MICHAEL J. ESPOSITO* The University of Texas School of Law Austin, TX RICHARD FINKELMAN Navigant Consulting, Inc. HON. JEREMY D. FOGEL U.S. District Court, Northern District of California ROBERT D. FRAM Covington & Burling LLP THOMAS J. FRIEL JR.* Cooley Godward LLP KELLY C. HUNSAKER Fish & Richardson, PC SANDEEP JAGGI* Health Hero Network THOMAS L. JARVIS Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington, DC JONATHAN S. KAGAN* Irell & Manella LLP Los Angeles, CA HEIDI KEEFE White & Case LLP RICHARD A. KILLWORTH Dinsmore & Shohl, LLP Dayton, OH EDWARD C. KWOK* MacPherson Kwok Chen & Heid LLP DALE S. LAZAR* DLA Piper Reston, VA MICHELLE LEE* Google, Inc. MARK A. LEMLEY CO-CHAIR* Stanford Law School Stanford, CA GARY H. LOEB* Genentech, Inc. KATHERINE KELLY LUTTON* Fish & Richardson P.C. TARANEH MAGHAME* Tessera MICHAEL M. MARKMAN* Covington & Burling LLP DAVID L. MCCOMBS* Haynes & Boone, LLP LISA MCFALL Yahoo! Inc. Sunnyvale, CA ROBERT A. MCFARLANE* Townsend and Townsend and Crew LLP ROBERT P. MERGES Berkeley Center for Law & Technology Berkeley, CA HON. MARILYN HALL PATEL U.S. District Court, Northern District of California PHILLIP B. PHILBIN Haynes and Boone, LLP JAMES POOLEY* Morrison & Foerster, LLP MATTHEW D. POWERS Weil, Gotshal & Manges LLP Redwood Shores, CA ERIK R. PUKNYS* Finnegan, Henderson, Farabow, Garrett & Dunner, LLP ALFRED C. SERVER* Wilmer Cutler Pickering Hale and Dorr LLP Boston, MA MICHAEL J. SHUSTER Fenwick & West LLP JOSEPH K. SIINO* Yahoo! Inc. Sunnyvale, CA JOHN F. STARK* Navigant Consulting, Inc. JOHN STEELE Fish & Richardson P.C. JULIE S. TURNER* The Turner Law Firm LEE VAN PELT* Van Pelt, Yi & James Cupertino, CA DANIEL M. WALL Latham & Watkins LLP MATTHEW F. WEIL* McDermott, Will & Emery VERNON M. WINTERS* Weil, Gotshal & Manges LLP Redwood Shores, CA KEITH E. WITEK Advanced Micro Devices, Inc. Austin, TX MALLUN YEN Cisco Systems, Inc. *planning committee member

5 UTCLE elibrary Essential Practice Resources for Patent Lawyers Save time and improve productivity with the UTCLE elibrary. The latest drafting tips, planning techniques, litigation strategies, and case law updates it s all here at PLEASE PRINT CLEARLY Bar Card# TX Other State: N/A Name [ Mr. / Ms. ] Firm REGISTRATION FOR PJ08 Mail this registration form to: The University of Texas School of Law, Attn. PJ08 P.O. Box 7759, Austin, TX or fax a copy to: (512) Easy Search of the Best Articles and Resources Superb resources at your fingertips, with lightning-fast searches by keyword, author, or conference name. Filter your search by a date range or practice area, and get relevant results within seconds. Audio-to-Go Files (Podcasts) Listen on your ipod: The elibrary includes related audio files for most papers that are easily saved to your computer, your ipod, or MP3 player. Read the article and listen to the presentation at your computer, or on the go! Subscribe Today for $295 Get unlimited access to elibrary materials and podcasts through an elibrary subscrip tion. A one-year membership is only $295. Your membership provides access to all the materials in the elibrary download them whenever, wherever, and as often as you want! UTCLE elibrary leading professional resources at your fingertips! Address City State Zip Telephone Registrant s (required) Assistant s (optional) Fax Invoices, confirmations and receipts are ed to these addresses. REGISTRATION: Includes Course Binder and Luncheon Presentations Early Registration Fee due by Wednesday, Dec. 3, 2008 $ Registration Fee after Wednesday, Dec. 3, 2008 $ CONFERENCE PUBLICATIONS AND MEDIA Allow 2 4 weeks from the conference date for delivery. Course Binder Without Conference Registration $ Note: Conference registration includes Course Binder. Audio CD Set $ ebinder on CD (PDF format) $225.00/$50.00 ($225 purchased alone, $50 with registration or purchase of Course Binder or Audio CD Set) IN-HOUSE CLE: Bring the conference in-house and learn at your convenience. Allow 2 4 weeks from the conference date for delivery. In-House CLE for 2 Includes Audio CD Set and Course Binder $ Add participants (includes Course Binder) for $225 each $ UTCLE elibrary: Papers, PPTs, and Podcasts in over 40 practice areas One-year subscription for UTCLE elibrary $ Discounts available for multiple subscriptions; call for more information. THANK YOU TO OUR LUNCHEON SPONSOR Finnegan, Henderson, Farabow, Garrett & Dunner, LLP METHOD OF PAYMENT Check (make checks payable to: The University of Texas at Austin) VISA or Mastercard (sorry, no AMEX or Discover) Card # TOTAL ENCLOSED $ X / Authorized Signature Exp. Date (mm/yy) Phone: Fax: Web:

SANta Clara December 11-12, 2008 CONFERENCE LOCATION Advanced Patent Law Institutes Each program uniquely tailored to its locale Patent Law in Austin, TX Oct.

Silicon Valley in Austin, Texas for two days of presentations on a rich array of prosecution and litigation topics. Cool weather, great city, music and food at the Four Seasons Austin.

6 SANta Clara December 11-12, 2008 CONFERENCE LOCATION Advanced Patent Law Institutes Each program uniquely tailored to its locale Patent Law in Austin, TX Oct , 2008 Four Seasons Hotel Hyatt Regency Santa Clara 5101 Great America Parkway Santa Clara, CA Join leading practitioners, academics and in-house counsel from the Southwest and Silicon Valley in Austin, Texas for two days of presentations on a rich array of prosecution and litigation topics. Cool weather, great city, music and food at the Four Seasons Austin. SPECIAL ROOM RATE $179 good through November 12, 2008 (subject to availability) Parking: Complimentary Self-Parking (subject to change) KEY DATES Registration & Cancellation December 3, p.m. last day for early registration add $50 for registrations received after this time December 5, p.m. last day for full refund December 8, p.m. last day for partial refunds $50 processing fee applied December 11, a.m. Institute begins Patent Law in Alexandria, VA Nov , 2008 USPTO Main Auditorium Join USPTO senior staff, leading practitioners, academics and members of the federal judiciary from a variety of courts and forums in the Washington, DC area, for two days at the USPTO. The conference is jointly sponsored with the George Mason University School of Law. Patent Law in Santa Clara, CA Dec.11-12, 2008 Hyatt Regency Santa Clara Come to the heart of Silicon Valley, and join leading judges and practitioners from major corporations such as Google, Yahoo!, and Genentech. This conference is jointly sponsored by the Berkeley Center for Law & Technology at UC Berkeley and the Stanford Program in Law, Science & Technology. ABOUT THE COVER Red Fish, collage on board, 42 ¾ x 33 ¼ is by Lance Letscher. For more information, visit UTCLE The Un i v e r s i t y of Te x a s a t Au s t i n THE UNIVERSITY OF TEXAS SCHOOL OF LAW P.O. Box 7759 Austin, TX This program is not printed or mailed at state expense. 9 th Annual Advanced Patent Law Institute December 11-12, 2008 Hyatt Regency Santa Clara Santa Clara, California NON-PROFIT-ORG U.S. Postage Paid The University of Texas School of Law M C L E This course has been approved for Minimum Continuing Legal Education credit by the State Bar of Texas Committee on MCLE in the amount of hours, of which 2.75 credit hour will apply to legal ethics/ professional responsibility credit. The University of Texas School of Law is a State Bar of California approved MCLE provider (#1944). us at utcle@law.utexas.edu or call us at for more information

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