PRG Fall 2014 Advanced Courses Catalog

5/25/2018 PRG Fall 2014 Advanced Courses Catalog

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ANNUAL FALLPROGRAM

PATENT RESOURCES GROUP

Register now at www.patentresources.com

THE CHOICE OF EVERYGENERATION OF PATENTATTORNEYS SINCE 1969.

Fall Program

Caesars Palace Las Vegas, NVSeptember 27 October 2, 2014

Choose from 10 of the best advanced patent law courses. See page 3.

Take advantage of our amazing room rate, available only to PRG attendees! See page 26.

Enjoy a one-of-a-kind venue. See page 26.

Check out our new Seminar Series! See pages 28 and 29.

INPATENTLAW

O$1PERNI

The Worlds BEST Patent Law Courses

and a Spectacular Venue!


2/322 www.patentresources.com

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses

Programs and at our new Seminar Series. If you were a paid attendee at any PRG course in 2013 or

already in 2014, you are automatically a loyalty member for 2014 and will be entitled to special pricing

when you attend any courses at our 2014 Fall Advanced Courses Program or any of our 2014 Seminar Series!

And after being a paid attendee at any PRG course in 2014, youll automatically be eligible for Loyalty Program

benefits for the rest of 2014 and for 2015. If you didn't attend any PRG courses in 2013 or so far in 2014, your

2014 Loyalty Program benefits will kick in after your first 2014 course. So, if you sign up for multiple courses

at the Fall 2014 Advanced Courses program, you'll pay full price for the first course and get Loyalty Program

member pricing for the other courses. Register today and be part of the PRG Loyalty Program!

About PRGs Loyalty Program

PRGs 2014 Annual Fall Program

P

in Patent Law

For over 45 years, Patent Resources Group has been the nations leading educator of patent

professionals, providing attorneys, agents, engineers, and scientists from around the world with

comprehensive courses and publications that set the industry standard for patent education.

WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN LAS VEGAS IN FALL 2014?

BECAUSE PRGS ADVANCED COURSES PROVIDE AN EDUCATIONAL OPPORTUNITY THAT

YOU SIMPLY CAN'T GET AT ANY OTHER SINGLE PROGRAM. OUR COURSES:

Will arm you to deal with the complexities of the America Invents Act the final changesresulting from the America Invents Act (AIA) took effect in March 2013. However, the effects of this

landmark legislation will be impacting all aspects of patent practice for years to come. Our Fall 2014

Program features a significantly revised and expanded one-day course on the AIA that focuses on

understanding its implications going forward. In addition, all of our returning courses have been updated

as needed to reflect the ongoing impacts of the AIA.

Provide an amazing value if you register for your Fall Program courses by July 28, 2014,you'll pay the same tuition rates that weve been charging since 2005! And if you come to our programs

every year, youll continue to benefit from our special Loyalty Program discounts for our Advanced Courses

and our Seminar Series (see below).

Go beyond the basics, showing how to apply the law to real-world intellectual property issues and tomake calculated legal and business decisions.

Give you practical insights that you can apply immediately when youget back to the office.

Offer the CLE credits you need.

Are an investment in your practice or your company, increasing

both your ability to successfully prosecute patent law and the value you bringto your employer.

Provide an unparalleled opportunity for networking and exchangingideas with our faculty and your fellow attendees.

Register soon spaces will fill quickly!

PRG THECHOICE OFEVERYGENERATION OFPATENTATTORNEYSSINCE1969.


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www.patentresources.co

Caesars Palace Las Vegas, NVSEPTEMBER 27 - OCTOBER 2, 2014

Please note that the faculty members listed for each course are subject to change prior to the actual course date.

Register by July 28, 2014for Lowest Fall Tuition!

Three-Day Courses: September 30 - October 2, 2014 (Tues-Thurs)

Art & Science of Patent Searching Patentability, Validity& Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 4Faculty: Brian Thurmond and Jonathan Skovholt

Comprehensive PCT Practice: How to Master Its Challenges . . . . . . . . . . . . . . . . . . . . . . 8Faculty: Carol Bidwell and T. David Reed

Drafting Patent License Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14Faculty: Brian Kacedon, William Pratt, Casey Dwyer, and Robert Shaffer

Federal Circuit Law (2012-2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16Faculty: Pete Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll

Three-Day Courses: September 27-29, 2014 (Sat-Mon)

Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6Faculty: Tom Irving, Jill MacAlpine, Deborah Herzfeld, Kathryn Sanchez, and Rona Nardone

Crafting and Drafting Winning Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris

Designing Around Valid U.S. Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12Faculty: Patrick Burns, John Pinkerton, and Patricia Prior

Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman

Post-Grant Patent Practice: Review and Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . 22Faculty: Kevin Laurence and Matthew Phillips

Software Patents: Procuring and Enforcing AfterAliceUPDATED! . . . . . . . . . . . 24Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan

10 advanced patent law coursesare available for the 2014 AnnualFall Advanced Courses Program.

Tuition for each Fall three-daycourse is $2,195 throughJuly 28, 2014 and $2,295 afterthat date.

Combined tuition for the Fall PatenSearching Course and Workshop is$2,590 through July 28, 2014 and$2,690 after that date.

Don't finalize your Fall AdvancedCourses registration withoutchecking out our 4 one-daySeminars being offered onSeptember 29 and 30. See page27 to register and pages 28 and 2for details.



Projected State Bar CLE Credit:

Las Vegas, NV

September 30-October 2, 2014 (Tues-Thurs)

Caesars Palace8:15 a.m. - 11:30 a.m. and

1:30 pm. - 4:45 p.m. (Tues-Wed)

8:15 a.m. - 11:30 a.m. (Thurs)

Optional Workshop

1:30 p.m. - 4:45 p.m. (Thurs)

Registration deadline: August 26, 2014

(Register by July 28 for best tuition rates!)

Comments from previous attendees:

Well structured course. Good pace. Very usefultips and information. High relevance to my

specific organization.

I'm entirely new to this field. It was general enough,

but detailed enough, for a beginner like myself.

Highly competent instructors.

The curriculum and text were designed and

written by twelve practitioners: eight

experienced patent information specialists and

four former examiners with expertise in both

English and foreign language searching. The

curriculum reflects the combined expert

Landon IP, which is one of only

companies selected by the USPTO to co

patent searches on its behalf with a vi

reducing USPTO examiners tow

examination backlog.

Upon completion of the course

attendee will have learned:

How to approach a search in a syste

methodical and exhaustive way.

How to properly scope the search b

even beginning.

Art and Science of PatentSearching Patentability,

Validity & Infringement

Course Description

his course comprehensively teaches how to conduct a professional patent search.

It provides direction for determining when a search is needed and what types and sou

of information should be searched in the process. Patent searching is both an art an

science. Consequently, search capability improves with practice. But optimum practice requires a s

foundation for those who seek to conduct searches accurately and efficiently. The course teac

when, how, where and why to conduct a search and is appropriate for those who will conduct

search or commission it.

Designed for patent attorneys and agents, inventors, paralegals and research managers, the cou

and its materials will be understood by anyone from the inexperienced to advanced practition

Unlike workshops that are taught by competing database providers, this global course is not tied

a particular search engine, a database product or a patent information service. Instead, the instruc

teach skills that are applicable across databases, both proprietary and public, and without bias tow

the features of a particular search engine. Unique among its many features, the course provide

comparison of the major patent search engines and teaches the strengths, weaknesses and bene

of the database providers who provide them.

15.0 Hours

T

Course Faculty The faculty consists of patent searching and analysis leaders at Landon IP who hexpert search experience as attorneys, patent search instructors, and examiners with the U.S. Patenand Trademark Office (USPTO).

LANDON IP, INC.ALEXANDRIA, VIRGINIA

BRIAN THURMOND JONATHAN SKOVHOLT

... And Optional Patent Searching Workshop

Why Should You Take This Course?The Patent Searching course presents

a systematic process for performing

prior art searches with greater efficiency

and precision. It is designed to benefit

a broad audience, including novice

searchers, seasoned patent

practitioners, and search professionals.

The course also provides unbiased,

detailed information concerning the

latest databases and tools of the trade.

Expert tips from search professionals are

provided to enable high-level patent

research through proper scoping,

structuring, and performance of thesearch. Patent practitioners will

recognize that a robust understanding

of the prior art is a vital part of the

patent process, particularly in view of

accelerated examination demands and

the America Invents Act.


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How to carefully search by classification, text

query progression, and citations, knowing

the benefits and pitfalls of each.

Both the major differences and subtle

nuances in conducting a patentability,

validity or infringement patent search.

Issues unique to searching within specific

technical disciplines.

Approaches to searching non-English-

language patents and published applications.

Approaches to searching non-patent

literature.

Approaches to reporting search results.

Differences between the major patent

search engines and important considerations

in selecting an appropriate search tool.

Ways to get high-level information from

patent search results.

The basics of several peripheral topics

including the use of the USPTO searchtemplates, searching for accelerated

examination, and searching using industry

standards.

Course materials

The text for the course is Art & Science of

Patent Searching Patentability, Validity &

Infringement, edited by Matthew Rodgers,

Long Nguyen and David Hunt. The

thoroughness of the text will minimize the

need for note-taking at the program.

Optional PatentSearching Workshop

A patent search engine user account is

needed for the Workshop. Please contact PRG

if you need assistance in obtaining one.

This Workshop is an optional add-on to the

Art and Science of Patent Searching course and

gives attendees the opportunity to practice

hands-on patent searching alongside the

course instructors. Attendees must bring their

own laptops as well as their own search engine

user accounts so that they will be able to

practice using familiar search tools. Wirelessinternet access will be provided during the

Workshop.

The faculty will work with the attendees to

answer questions and provide guidance as they

execute their searches in real time. The

Workshop is structured to test each attendees

retention of the concepts covered in the course

as they put their training to use in several

sample search projects. Attendees will be

provided with multiple sample disclosures,

encompassing a wide variety of technologies,

on which they will base their search

informal, lecture-free setting will allow

attendee to work independently, but in

proximity to an instructor.

The instructors will be able to pr

assistance with any of the major patent s

engines. The attendees will be guided th

scoping the search, performing the searc

analyzing their results. Answer keys w

provided at the end of the Workshop so

participants may gauge their progress and

a reference to use for additional pr

following the class.

Requirements and Prerequisites:

Completion of the immediately prec

2014Art and Science of Patent Sear

course

Important: Wireless-enabled l

computer (Internet Explorer or Firefox

browser, and Microsoft Office parecommended)

Important: Patent search engine

account (in an attempt to focus on c

concepts and high-level sear

techniques, publicly available search en

cannot be solely relied upon for th

portion of this course)

Important: Unrestricted use of third

wireless connection (please verify with

IT department that your security setting

allow access to the wireless hub nece

for the course).


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(Including 2.0 Hours Legal Ethics)

Las Vegas, NV

September 27-29, 2014 (Sat-Mon)

Caesars Palace

8:15 a.m. 11:30 a.m. and

1:30 p.m. 4:45 p.m. (Sat-Mon)



For example, the rising tension within the

Federal Circuit panels on the role of the

specification in claim construction and the

increasing pressure to revisit the Cyborrule of

de novo review of claim construction on appeal

will bring important developments for

practitioners in the very near future on what to

expect for claim construction. For the

practitioner, the take-home message remains

to prosecute as if your life depended on

infringement and lay the groundwork

specification (the single best guide t

meaning of a claim term) for a broad

construction. This course, presented b

experienced faculty, each with a signi

depth of experience, suggests many pra

approaches with those objectives in min

We discuss how to establish patent

ChemicalPatent Practice

Course Description

his up-to-the-minute course teaches the chemical patent practitioner how to

fundamentally sound principles to prepare and prosecute a United States chemical pa

application in a conservative way and in view of all of the opportunities and pitfalls affor

by the AIA,to enhance such possibilities as:

obtaining broad claim construction for literal infringement purposes, particularly

avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para

invalidity) that is best described as patent profanity;

utilizing the doctrine of equivalents to the extent that the doctrine still exists;

surviving Festo;

destroying, not rebutting, a defectiveprima facie case of obviousness in our current pKSR world, including illustrations from several real U.S. patents prosecuted by a fac

member;

obtaining the broadest possible claims by avoiding too many and unduly narrow limitati

obtaining claims that will be directly and literally infringed by competitors rather tha

customers;

proving literal infringement of claims in litigation;

obtaining claims infringed by downstream infringers;

preparing and prosecuting the application to avoid inequitable conduct in view of the Fed

Circuit's en banc decision in Therasense andprogeny thereof, and the impact of the

supplemental examination procedure that went into effect September 16, 2012; and

understanding the implications of the various provisions and effective dates of the Ame

Invents Act (AIA), particularly as they relate to filing strategies in and around the Ma16, 2013 date when the first inventor to file provisions took effect.

18.0 Hours

T

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

WASHINGTON, DC

DUPONT

WILMINGTON, DE

TEVA PHARMACEUTICALS

FRAZER, PA

TOM IRVING JILL MACALPINE DEBORAH HERZFELD KATHRYN SANCHEZRONA NARDONE

Course Faculty

The faculty has decades of collective experience across the complete spectrum of chemical practic

Why Should You Take This Course?

Are you well-versed on how

chemical claims are constructed and

construed? Well enough to avoid an

overly narrow, often disastrous claim

construction leading to a royalty-freetransfer of patented technology to

your competitor? Well enough not to

trip up on obviousness over KSR? If

youd like to answer these questions

with a resounding yes then you

should attend our highly-acclaimed,

comprehensive Chemical Patent

Practice course. Dont fail your clients

or yourself in these tough economic

times learn from the best.


7/32


and validity under 103 in the post-KSR world,

where knowledge and direction equate power.

Case studies, involving real U.S. patents, will

provide a framework for creative thinking on

the law ofprima facie obviousness.

We will look closely at the guidelines for

best mode disclosure from a substantive and

ethical point of view, particularly in view of

changes made in the AIA. In addition, we

consider the Federal Circuit inequitable conduct

decisions in the context of the en banc

Therasense decision, including its progeny,

many of which will be reviewed for the lessons

they provide to both in-house and private

practice lawyers. In fact, the inequitable

conduct and best mode discussions provide the

two hours of ethics that is otherwise sometimes

hard to find, particularly on substantive topics

related to your practice. The ethics discussion

should take place during the last two hours on

the second day (as currently estimated). The last

day will include a discussion of a hypothetical

chemical patent problem that synthesizes and

reinforces the teachings of the class.

The enactment of the AIA did not wipe the

patent law slate clean. Because of the way the

AIA was written, the old law will be relevant

to practitioners until at least March 16, 2034!

Thats right practitioners will have to be

experts in both old and new laws for at least

another 22 years! The Chemical Patent

Practice faculty has lectured on the new law

extensively and has studied it intensively in

conjunction with people who were

instrumental in the drafting of the legislation.

The faculty will bring all of that background to

their presentations to you.

And do not be misled into thinking that this

course is applicable only to patent prosecutors.

The principles taught will greatly help those

involved with prelitigations, litigations, Orange

Book listings, due diligences and analysis of

third-party patents for validity, infringement,

and enforceability issues.


This is one of the best courses that I have ever

taken. All of the instructors are excellent and

provide very helpful practical tips regarding

chemical patent practice. The material provided

is excellent and a very good reference guide.

Mark CohenScully, Scott, Murphy & Presser PC

October 2009 attendee

Good overview and reminders of good practice

points. Great consolidation of information and

tips based on recent case law. Very current.

Heather Gorman

Thomas, Kayden, Horstemeyer & Risley, LLP

April 2010 attendee

Course Materials

The definitive treatise, Chemical Paten

written and continually updated by

Finnegan, Henderson, Farabow, Garr

Dunner faculty, with the invaluable assis

of editor Stacy D. Lewis, will be provid

attendees at the course. This treatise c

virtually every situation that can arise ipreparation and prosecution of a che

patent application. It will remain on you

and in continual use long after the cours

The treatise underwent a complete ove

in the aftermath of the enactment of th

to provide completely updated materials

course attendees. Although the treatise

great value, the faculty members have

that the best vehicle for teaching is the u

slides, which will be provided in book fo

attendees on the first day of class. The

book will contain ample room for note-t

and cross-referencing and, as such, wilvaluable addition to your daily kit of che

patent practice tools.

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Las Vegas, NV


Caesars Palace

8:15 a.m. - 11:30 a.m. and

1:30 pm. - 4:45 p.m. (Tues-Wed)

8:15 a.m. - 11:30 a.m. (Thurs)



The PCT allows applicants to secure a filing

date in all PCT Contracting States by filing a

single application in their home country and in

their home language. The PCT provides a

comprehensive search of the prior art and a

preliminary, nonbinding written opinion on the

novelty, inventive step (non-obviousness) and

industrial applicability (utility) of the claimed

invention. In addition, applicant has an

additional 18 months beyond the end of the

Paris Convention priority year to make final

decisions on where to seek patent protection.The delay in the associated expenses of

national filings alone make the PCT a cost-

effective procedure and can result in a

significant cost saving by helping to avoid

unnecessary filings and/or allowing filings in

countries where commercial importance has

grown between international filing and

national phase entry.

By filing an international application, all PCT

Contracting States and four regional offices are

automatically designated and are available for

national phase entry later in the pro

Whether the international application

first filing or it claims priority to an earlier

the applicant does not have to make the

decision on where to seek patent prote

until 30 months from the earliest priority

The final decisions are based on

information obtained in the interna

search report and the international prelim

report on patentability as well as inform

obtained by the applicant regarding

scientific status and commercial value oinvention. In short, through using the PC

applicant will have a much better idea o

likelihood of obtaining comme

meaningful patent protection for the cla

invention. In addition, the applicant wil

the opportunity to obtain additional s

results through the supplementary s

option as well as have the opportun

advance prosecution by using the op

international preliminary examin

procedure. Applicant can amend

application and/or provide argument

Comprehensive PCT Practice:How to Master Its Challenges

Course Description

ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established it

as a valuable way for applicants to obtain patent protection in many countries around

the world. The number of PCT Contracting States is currently 146 and growing. PCT

members include the vast majority of industrialized, developing and emerging countries of th

world. The Comprehensive PCTcourse guides the attendees chronologically through the

international phase of the PCT and into the national phase before the national and regional

patent Offices of interest. The instructors present strategies for effective use of the PCT, the

benefits obtained and options available when using the PCT. In addition, the course covers th

numerous safeguards available for applicants, including the restoration of priority rights and

incorporation by reference.

15.0 Hours

S

Course Faculty The two faculty members have extensive government and corporate experiencaspects of PCT matters.

CONSULTANT ON PCT MATTERS FORTHE WORLDINTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR

OFTHE USPTO OFFICE OF PCT LEGAL ADMINISTRATION

CAROL BIDWELL T. DAVID REED

CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT;FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER

& GAMBLE COMPANY, CINCINNATI, OHIO


Attendees will learn the benefits and

advantages of the Patent Cooperation

Treaty (PCT) procedure as well as the

numerous options and safeguards

available for applications filed under

the PCT. The Comprehensive PCTcourse enumerates procedures and

strategies designed to obtain patent

protection for inventions in multiple

countries through the filing of a single

international application under the

Patent Cooperation Treaty. While a

basic working knowledge of the PCT is

useful when taking this course, it will

prove valuable to both new and

experienced users of the PCT.


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consideration by the examiner prior to the

issuance of the international preliminary report

on patentability (Chapter II of the PCT).

Depending on the International Search and

Preliminary Examining Authorities selected by

the applicant, certain national and regional

patent Offices (including the US) allow a

favorable PCT work product (for example,

international preliminary report on

patentability) to be applicants ticket to

accelerated examination on their patent

prosecution highway.

This Comprehensive PCTcourse discusses: a)

when the use of the PCT is advantageous and

when it is not; b) the effects on patent term

based on the first (priority) application; c)

selection of international authorities under the

PCT for greatest advantage; d) the information

received by applicants during the PCT process;

e) entering the national phase; f) upcoming

changes in the PCT; g) use of PCT search and

examination results to utilize the Patent

Prosecution Highway; h) the effect of the

America Invents Act (AIA) on practice under

the PCT; plus a host of other PCT-related topics.

In addition, the course presents the growing

information available from the WIPO Internet

site via the PATENTSCOPE search tool. The

Comprehensive PCTcourse includes a detailed

look at patent-related provisions of the Paris

Convention.

Comments from attendees of past PCTco

Excellent instructors - thorough cover

subject.

The course materials are excellent. The le

have much experience in PCT-related activiti

have the ability to explain that to a class.

Outstanding speakers with practical exper

Course Materials

A comprehensive text is used in the

presentation that includes detailed explan

of the various topics and sample forms.

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(Including 1.0 Hour Legal Ethics)

Las Vegas, NV


Caesars Palace

8:15 a.m. 11:30 a.m. and

1:30 p.m. 4:45 p.m. (Sat-Sun)

8:15 a.m. 11:30 a.m. (Mon)




Practical advice for drafting enforceable patentclaims, sprinkled with supporting legal

authority.

Spanning the gap between current Federal Circuit

law and actual, practical tips on how to incorporate

the latest law into successful prosecution practices.

Good coverage of current law and potential

pitfalls associated with certain practices (I'm

planning to make changes to my practice with

regard to various pitfalls you have pointed out).

Answer to the Conundrum.

There is a sound basis for dealing witdilemma generated by the Federal Circ

practical ex parte practice path is now in

that navigates through the chaos. Its roa

reads LP-CD (Low Profile, Com

Denominator Practice). LP-CD, despit

chaos it penetrates and traverses, is ch

clearly and boldly in this PRG course. Cr

& Drafting Winning Patents was designe

created by PRGs Professors Paul Gardne

Irving Kayton and enriched by the PRG c

faculty.

Crafting & DraftingWinning Patents

Course Description

his Crafting & Drafting course marches to a special drummer and focuses on the end res

producing a winning patent that will be held literallyinfringed and not invalid und

(sec)112(a), f/k/a/ (sec)112, para.1, despite the time pressure created by moving to a fir

inventor-to-file system under the America Invents Act (AIA).

The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U

district courts have begun to say so openly). For example, the importation of claim limitations f

the specification into the claims albeit under the rubric of claim interpretation is now ramp

rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States Surg

Corp., where the court imported the limitation pleated into a broad claim reciting a surgical m

plug used for hernia repair, relying heavily in doing so on the Summary of the Invention

described a plug having pleats. The court repeatedly referenced the Summary of the Inven

throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patentrecite a pleated plug, without even mentioning, let alone reconciling, the immutable doctrin

claim differentiation that should have sustained the broad claims.

Claim interpretation is only one chaos region. There are others where the Federal Circuit case law

equally inconsistent, including the law concerning the written description requirement, means-p

function clauses, the doctrine of equivalents, and prosecution history estoppel.

This creates an immense dilemma for conscientious patent practitioners trying to write and prosec

patent applications that will provide their clients with the patent protection they deserve. Which ca

should be relied on, and which should be ignored?

15.0 Hours

T

Course Faculty

Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.

DLA PIPER US LLPRESTON, VA

KENYON & KENYONNEWYORK, NY

JOHN TSAVARISDALE LAZAR


Learn the areas of chaos in Federal

Circuit jurisprudence of primary

concern to practitioners who prepare

and prosecute patents. The course will

focus on a series of cases where thepatent owner lost, not because of

what the litigators did, but because of

how the patent practitioner drafted

and prosecuted the application.

Compounding the problem is the time

pressure created by moving to a first-

inventor-to-file system under the

America Invents Act (AIA) and the

anticipated increase in the filings of

provisional applications with their

many traps for the unwary. The course

will teach you how to write provisional

applications and draft and prosecute

non-provisional patent applications toavoid these pitfalls.

DINSMORE & SHOHL LLP,DAYTON, OH

PAUL ULRICH


11/32

www.patentresources.com

This course distills everything from the law

(and dicta) of the Federal Circuit and its

predecessor courts that has a material bearing

now, today, and in the foreseeable future, on

how we must successfully:

1. Prepare for drafting the application;

2. Design what must be included in, andexcluded from, the provisional application

and the nonprovisional application

specification and drawings and, very

importantly, in what form and format it

should be included;

3. Engage in claim drafting strategy designed

to result in literal infringement, recognizing

that this strategy must be taken into

account as a principal factor in the earlier

design of the specification;

4. Develop a protocol and a philosophy for

prosecuting the application that advance

and do not defeat the efforts in (1) through

(3); and

5. Balance the accomplishments of (1)

through (4) against, first, increased costs of

crafting and drafting that sometimes

accrue and, second, their effect on the

length of the patent term that will result,

and third, the time pressure created by

moving to a first-inventor-to-file system

under the AIA.

Crafting & Drafting is not a survey course

covering the broad landscape of patent

prosecution or a workshop. Instead the course

drills deeply into the six specific areas of Federal

Circuit chaos that have most seriously and

frequently destroyed the value of patents. We

will focus on what we can do as patent

prosecutors to prepare and prosecute

applications that are immune from the chaos.

Crafting & Drafting will almost certainly

effect a change in your patent law life, because

the Federal Circuit has effectively (albeit

unwittingly) dictated that it be so.

It is noteworthy that many hundreds of

patents have already issued using the Crafting

& Drafting techniques set forth in this course

(several of which will be reviewed), with

beneficial effect in license and litigation

negotiations.

Legal ethics issues including the recent

Therasense decision and its profound changes

to the law of inequitable conduct and duty of

disclosure will be covered from 9:15-10:15

a.m. on the last day of the course, as currently

estimated.

Who Should Take This Course?

This course is for patent practitioners w

minimum of two years of practice,

preferably more. It is sufficiently sophist

for even the most experienced. The f

knows this to be true because the pro

and solutions about which they conferre

debated in bringing this course to frplumbed the depths of their combined p

law knowledge, experience and on

research and scholarship.

Beginning patent practitioners should

forward to PRGs four-day Workshop des

specifically for them, The Winning Pa

Workshop. For details visit our webs

www.patentresources.com.

Course Materials

A comprehensive, one-volume course

entitled Crafting & Drafting Winning Pa

and a bound set of lecture slides, are def

on the subject and will be given to regisat the course. The Textbook and slide

constantly updated and revised to in

recent decisions and changes in the l

including the applicable provisions of the

he beautiful statues, pillars, and paintingsin the Augustus Tower lobby set the tone

for your entire experience.T


12/32


The Designing Aroundcourse distills

the patent infringement analysis into

comprehensive yet concise step-by-

step checklists that can be used by

attorneys at all experience levels to

assist their clients to develop

competitive, noninfringing products.

12 www.patentresources.com


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Practical explanation of case law to apply to

patent drafting, infringement analysis and

opinion writing.

The substance was excellent. Presentations

gave good overviews and the course books give

encyclopedic detail for topics of interest.

Well organized, very thorough, presenters all

know their stuff.

Four cookbooks covering (1) literal

infringement, (2) infringement under thedoctrine of equivalents, (3) infringement of

means plus function claim elements, and (4)

prosecution history estoppel, are provided.

Using and following these cookbooks, which

distill opinions by the Federal Circuit and the

Supreme Court in cases from Pennwaltto Festo

IX, any patent practitioner can counsel his or

her client on how to design around the

patented invention with almost certain

impunity a design that appropriates the

patented invention and that, prior to Pennwalt

and its progeny, would have been he

infringement rather than the socially des

activity of designing around.

This course will show practit

representing potential infringers how

counsel competitive product design und

guidance of Federal Circuit and Supreme

cases, which will almost always be view

effective designing around. How to co

litigation to achieve a happy ending fo

infringement-accused client will be set fo

elegant simplicity.

Actual Demonstrations

To ensure no confusion on anyones p

this exercise, the faculty and students w

through several claim construction exe

and compare their conclusions with the Fe

Circuits claim construction in actual ca

mock design around exercise will als

presented. The demonstration considers

marketing and engineering perspectiv

addition to legal analysis. To prepare fo

Designing AroundValid U.S. Patents

Course Description

n Markman and Cybor, the Federal Circuit required district courts to construe claims a

matter of law and decided to review claim construction de novo. The object was to ma

claim construction predictable, so that claims would better perform their public not

function. The result has been an unmitigated disaster, often (but not always) reading limitatio

into the claims that the examiner did not require to establish patentability over the art of reco

In fact, the court has often overridden the examination process, undermining the public not

function of claims ab initio. This course will explore the current condition of claim construction

detail and explain how competitors can use it to their advantage, even when the claims on th

face are literally infringed.

15.0 Hours

I

Course Faculty PRG has offered Designing Around Valid U.S. Patentsfor over 15 years, and it reone of our most popular courses.

PATRICK BURNSGREER, BURNS& CRAIN, LTD.

CHICAGO, ILLINOIS

JOHN PINKERTONTHOMPSON & KNIGHT

DALLAS, TEXAS

PATRICIA PRIORGREER BURNS & CRAIN LTD.

CHICAGO, IL


13/32


exercises and demonstration, the course faculty

will illustrate the accused structures relative to

the claims in the landmark, no-infringement-

by-claim construction cases of Alloc and

Nystrom, the no-infringement-by-equivalents

cases of Slimfold, Laitram and London, and the

super landmark, no-equivalents-at-all after-

prosecution-history-estoppel case of Festo IX.

These and other cases are presented in literal,

graphic clarity.

How to Draft Infringement

and Noninfringement Opinions

The effects of Seagate, the AIA, and Bardon

findings of willfulness, enhanced damages,

and fee awards will be discussed in detail. The

faculty also explains the substance and form

opinions should have to maximize their

effectiveness in litigation.

Course Materials

The two-volume text for Desi

Around Valid U.S. Patents is authored b

distinguished course faculty, each of who

extensive successful litigation, prosecutio

counseling experience. Nothing like

unique books exists anywhere else.

he Gordon Ramsay Pub & Grill

provides an authentic English pub

experience in the heart of Las Vegas.

T





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Caesars Palace

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1:30 p.m. 4:45 p.m. (Tues-Wed)

8:15 a.m. 11:30 a.m. (Thurs)




This course provided a great overview of

licensing issues and anecdotal scenarios giving

rise to said issues.

Andrew Weber

Honigman Miller Schwartz and Cohn LLP April 2012 attendee

I have been drafting license agreements for the

Federal government for 6 years, and this course

helped tie together everything I've learned in

this time.

Suzanne Seavello Shope

Centers for Disease Control & Prevention

April 2010 attendee

The information is very practical and re

to the 'real world' problems encounter

drafting and reviewing agreements.

Glenn Smith

Bausch & Lomb,


This is a course for the craftsman. Bot

course and the text provide a solid bas

responding to virtually every license dr

problem that may arise. Even for the h

experienced licensing lawyer, new insight

be provided; at the very least, the cours

be a rich, comprehensive refresher. For th

experienced licensing lawyer, it will open

both with respect to hidden problems a

mechanisms for dealing with them.

Drafting PatentLicense Agreements

Course Description

his course and its text provide concrete drafting and negotiating advice with precise referen

to existing law.

The course lays the groundwork for a clause-by-clause examination of all significant eleme

of the patent licensing agreement. The practical questions always focused on are how and whet

each element is sufficient to serve the business needs of the parties while remaining legally via

The main components of typical licensing agreements, from the opening part through the execu

and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples

used, often in workshop form, with carefully crafted problem handouts distributed to the attend

during the course.

Throughout the course, the faculty members emphasize achieving legally satisfactory drafting res

by recognizing the logical principles that underlie the job to be done. Sample forms are used

explain the practical considerations upon which they are based. Law and precedent are presente

terms that make clear the legal reasoning behind recommended drafting approaches.

15.0 Hours

T

Course Faculty The faculty teaches by sharing decades of combined experience in licensing.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC

D. BRIAN KACEDON WILLIAM PRATT CASEY DWYER ROBERT SHAFFER


Licensing is a key strategy by which

companies realize significant value

from their patents and technology. The

ability to draft, negotiate and interpret

license agreements is a core skill for IPattorneys and other professionals who

deal with licenses. This course provides

a comprehensive overview of key

licensing concepts, the drafting of key

clauses in a license agreement, and the

impact of related topics such as

competition law, export control law

and the Bayh-Dole Act. It is taught by

experienced license professionals with

an emphasis on practical considerations

and provides valuable insights and

discussion for both novices and more

advanced practitioners.


15/32


Legal ethics in license negotiations will be

presented during the afternoon session on Day

2 and in misuse issues during the morning

session on Day 3, as currently estimated.

Course Materials

The text for the course is the Seventh Edition

of the classic, Drafting Patent License

Agreements (BNA), by Brian G. Brunsvold, D.

Patrick OReilley and D. Brian Kacedon. The

thoroughness of the text and accompanying

slides will minimize the need for note-taking at

the program. Moreover, this Seventh Edition

includes a computer disk, which has a set of

form paragraphs that can be incorporated,

with careful editing, into a license agreement

to be prepared by the course attendee.

The hardcopy edition of the course te

be given to each attendee at the program

volume containing the printed slides tha

be used throughout the lectures will al

provided at the course; this volume will in

extensive license drafting workshop ma

and Justice Department licensing guide

he Forum Shops at Caesars are Las Vegas' premier retail, dining

and entertainment destination, featuring more than 160

boutiques and shops, as well as 13 restaurants and specialty food shops.

T





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1:30 p.m. 4:45 p.m. (Tues-Wed)

8:15 a.m. 11:30 a.m. (Thurs)



Federal Circuit Law(2012-2014)

America Invents Act (AIA)

The AIA is generally regarded as the most significant change to the U.S. patent system since 19

For years to come, however, practitioners will have to practice under parallel systems the o

law and the new law. The lecturers will explain, as appropriate, how the results in partic

cases may be affected by the AIA.

Course Description - Two Years in Review - Taught by Experienced Lecturers, All Former Techn

Advisers/Law Clerks

his is one of PRGs longest continuously offered courses. Because the course focuses

the last two years, attendees often repeat this course every two years to remain curre

Consequently, this course offers practitioners a unique opportunity to both become cur

in the law, and to remain so. And to do so in an interactive environment that is both informa

and intellectually challenging. The interactive environment (as described below) allows attend

to contribute to the learning experience, and avoid sitting through a series of dull lectures.

There was a time when patent law was considered sufficiently settled such that slip opin

could be allowed to accumulate in a stack until an opportunity or need for review arose. Th

days are gone. Now that stack for many has become a large electronic file and has likely gro

beyond the point of realistically being able to catch-up with the opinions. If this applies to ythen you are a prime candidate for this course.

15.0 Hours

T

Course Faculty

The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the courts history, pmatchless inside perspective and candid, unequaled insight to Federal Circuit law past, presefuture. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the leccommentary on whether and how the AIA may affect Federal Circuit law.

PETE PETERSONCOX SMITH

SAN ANTONIO, TX(FORMER TECHNICAL

ADVISORTO THE LATE CHIEFJUDGE MARKEY)

SHARON ISRAELMAYER BROWN LLP

HOUSTON, TX(FORMER LAW CLERKTOCIRCUIT JUDGE LOURIE)

JON HOKANSONLEWIS BRISBOIS BISGAARD &SMITH LLP, LOSANGELES, CA

(FORMER TECHNICALADVISORTOTHE LATE

CIRCUIT JUDGE MILLER)

KARA STOLLFINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER, LLPWASHINGTON, DC

(FORMER LAW CLERKTO CIRCUITJUDGE SCHALL)


Each week the Federal Circuit

publishes opinions that materially

clarify and sometimes alter

existing practice. One cannot

competently practice as a patentattorney today, in prosecution,

litigation, counseling or licensing

without an understanding of the

Federal Circuits most recent opinions.

The distinguished faculty of Federal

Circuit Law (2012-2014) will expertly

guide you through two years of relevant

and up-to-the-minute cases in an

interactive lecture format that

encourages active attendee

participation. Moreover, lecturers will

discuss new cases in the context of prior

cases (many outside the two-year time

span), thus giving you not only current

law, but also a perspective on how the

law has changed.

INCLUDING COMMENTARYon the America Invents Act


17/32



LLC v. Nike, Inc. (although a trademark case, it

involved covenants-not-to-sue in a context

analogous to patent law), Kirtsaeng v. John

Wiley & Sons, Inc. (international exhaustion

under copyright law - similar issue arises in

patent law), Gunn v. Minton (federal

jurisdiction of legal malpractice actions),

Association for Molecular Pathology v. MyriadGenetics, Inc. (patent eligibility under 101),

and Federal Trade Commn v. Actavis, Inc.

(reverse settlement agreements).

In its current 2013 Term (2013-14), the

Supreme Court has already granted certiorari

in four cases, Medtronic, Inc. v. Boston

Scientific Corp. (burden of proof in declaratory

judgment actions involving a non-breaching

licensee), Octane Fitness, LLC v. ICON Health &

Fitness, Inc. (exceptional case standard),

Highmark Inc. v. Allcare Management Systems,

Inc. (deference to be accorded to district courts

exceptional case determination), and Petrella v.Metro-Goldwyn-Mayer, Inc. (laches in

copyright cases - similar issue arises in patent

law). Pending petitions for certiorarisuggest

that cert. may be granted in 2-3 additional

IP cases maybe more.

Although the primary focus of the course is

on Federal Circuit law, Supreme Court cases

(both decided cases and cases in which cert.

has been granted) are covered as well. Also,

cases such as Gunn are addressed in which

cert. was to the Texas Supreme Court, but

where the net effect of the Supreme Courts

decision overturned the Federal Circuits

decision and rationale in seven cases!

Filling In the Gaps

This course fills in the gap left by

traditional CLE programs and various

published case summaries, and is designed

to allow counsel to comprehensively become

and remain current on todays frequent and

rapid changes in the law. Unlike the one year

or less coverage typically offered by CLE

courses, this course covers a two-year span,

providing in-house and outside counsel alike

an opportunity to remain comprehensively

current on must be aware of cases by

attending biennially.

Also, unlike many CLE courses that offer a

patent law update in a one hour or so time

slot (which necessarily limits focus to but a few

of the 100+ decided cases), this course offers

a comprehensive review of precedential cases

(as well as select non-precedential cases), in

several formats of varying depth so that the

attendee can chose which format works best

namely comprehensive text, PowerPoint

slides, and lectures focused on new

developments:

(A) The course is scheduled over 2 days

time for in-depth review and analysis.

(B) Cases are reviewed in three volumes of

comprehensive text. (C) Case highlights are

addressed in printed PowerPoint slides which

attendees may follow and annotate during the

lectures. (D) Issues unique in each presented

case, and how those issues relate to prior law,will be highlighted, plus the opinions will be

boiled down to various teaching points,

as well as to insights to the Federal Circuit that

are only available through the lens of a

former technical advisor/law clerk.

For example, the written text for cases that

primarily involve novelty and loss of right to a

patent under 102, and obviousness/non-

obviousness under 103, span 400+ pages of

review and analysis. Additionally, those cases

are further digested into PowerPoint slides that

an attendee may annotate during the

discussion of 102 and 103 cases. Thus, anattendee may follow the discussion while

annotating the slides and refer to them later.

The same is true for the numerous other topics

listed in the course syllabus.

Also unlike most CLE courses, this program

is interactive. Questions from attendees (as

well as from the panel), and open discussion,

are activelyencouraged in real time during

the lectures. If you disagree with (or agree

with) a point made by a lecturer, or wish to

raise a question or observation, you need only

raise your hand. The lecturer will stop and

recognize you and whatever

question/comment you have may spark further

debate which we encourage. Over the years

we have found that this interactive

environment is a signature feature of this

course. The issues we talk about are generally

worthy of debate we encourage the same.

Sampling of Cases Reviewed

There are a number of both controversial

and must know decisions that will be

addressed. This is just a sampling.

Practitioners writing applications for

computer-aided inventions should thoroughly

understand the implications of cases such asErgo Licensing v. CareFusion (2012), holding

claims calling for a programmable control

means invalid for failure to disclose a

corresponding algorithm although such

devices are off the shelf devices. And Noah

Systems v. Intuit (2012) holding claims invalid

because the disclosed algorithm did not

implement all claimed steps. But contrast cases

such as Power Integrations, Inc. v. Fairchild

Semiconductor International, Inc. (2013)

(circuit may recite sufficient structure to

avoid construction as a means-plus-function

limitation).

Litigation practitioners will be interes

In re Bill of Lading (2012), setting ou

pleading requirements for direct, contrib

and induced infringement. But

practitioners must consider K

Telecommunications, Inc. v. Time W

Cable, Inc. (2013) where the panel spl

whether compliance with Form 18, FED. P., is sufficient to support a civil actio

patent infringement.

In the area of inequitable conduct, a

majority in Network Signatures, Inc. v.

Farm Mutual Automobile Ins. Co. (

concluded that filing out a PTO form

failure to pay a second maintenance fe

unintentional without any f

supplementation did not constitute inequ

conduct, but a strong, well-reasoned d

argued otherwise. On the other hand

opinion in Intellect Wireless, Inc. v. HTC

(2013) gives us the first clear instanadjudged inequitable conduct follo

Therasense, and which involved a false

132 affidavit. For those thinking that Ro

Haas Co. v. Crystal Chem. Co. (1983) w

longer good law think again.

Case law decisions in the area of p

eligible subject matter under 101

particularly left practitioners without

guidance. In In re Bilski, the Federal C

attempted to clarify the test for determ

whether a claim recited patent-eligible su

matter by holding that its machin

transformation test was the sole and exc

inquiry. The Supreme Court promptly rej

the machine or transformation test as th

test for patentable subject matter, but de

to articulate a clear test thus leaving a va

for the Federal Circuit to fill. The Sup

Court also thoroughly rejected the Fe

Circuits view of 101 in Mayo Collabo

Services v. Prometheus Labs. (S.Ct. 2012

the Federal Circuit responded in Myriad (

in a 106-page collection of three op

continuing to advocate its splintered vi

101. The Supreme Court, on review in

largely rejected the rationale of the Fe

Circuit majority, but did little to clarif

ambit of patent-eligible subject matter o

the specific facts of that case.

Meanwhile, the Federal Circuit con

with its view of patent eligibility under

For example, a panel in CyberSource Co

Retail Decisions, Inc. (2011), questione

validity of Beauregard-type claims, but

panel opinion could not overturn Beaure

Does that signal the demise of such cl

Opinions by some judges in CLS Bank v.

Corp. (2012) en bancsuggest that Beaure

type claims do not avoid the fundam

analysis for patent eligibility under 101


19/32


Claim construction remains controversial.

The Federal Circuit granted en bancreview in

Lighting Ballast Control LLC v. Philips

Electronics North America Corp., and held oral

argument in 2013, on the question whether

the court should overrule Cybor Corp. v. FAS

Technologies, Inc. (1998), namely that claim

construction was a question of law for thecourt. It seems likely that the court will issue

an opinion in early 2014. We must wait to see

whether, and to what extent, the court

fractures in addressing that question.

The court also continues to break new

ground in the interplay of reexamination and

district court infringement litigation. In a

surprise to many observers, the Federal Circuit

in Fresenius USA, Inc. v. Baxter(2013) held that

the PTOs cancellation of claims in

reexamination moots a pending infringement

action on those claims. As a result, the district

courts final, multi-million dollar judgmentwas reversed because it was not final

enough. With the recent denial of en banc

review, and Circuit Judge OMalleys strong

dissent urging a circuit conflict with

Qualcomm, Inc. v. FCC(D.C. Cir. 1999), this is

a must know highly controversial case, with

or without Supreme Court review, affecting

counsels choice to seek reexamination.

Continuing in its run of surprises, the Federal

Circuit held that a license defense can be

effective for broadened reissue claims not in

existence at the time of the original license

agreement. In Intel Corp. v. Negotiated Data

Solutions, Inc. (2012) the Federal Circuit

affirmed the district courts summary judgment

of license and non-infringement defenses in

favor of Intel pursuant to a licensing agreement

with N-Datas predecessor in interest, National

Semiconductor Corp.

In an unusual generic v. generic case,

Momenta Pharms., Inc. v. Amphastar Pharms.,

Inc. (2012) the Federal Circuit vacated a

preliminary injunction against Amphastar and

in doing so appeared to broaden the scope of

the safe harbor provision of the Hatch-

Waxman Act in an unusual way that prompted

an explosive dissent by Chief Judge Rader.

In other areas, the Federal Circuit has

quashed long-standing abuses. In Uniloc USA,

Inc. v. Microsoft Corp. (2011), for example, the

Federal Circuit held, in the area of damages,

that as a matter of Federal Circuit law that the

25% rule of thumb was a fundamentally

flawed tool for determining a baseline royalty

rate in a hypothetical negotiation. The 25%

rule, used for more than a decade, has thus

been relegated to the scrap heap. Continuing

the trend of reining in large damage awards,

in LaserDynamics v. Quanta Computer(2012),

the Federal Circuit further narrowed the entiremarket value rule almost to oblivion.

Those are but highlights. Federal Circuit

and related Supreme Court opinions in the past

two years have created law that practitioners

must know especially in light of the changing

composition of the court.

Smoothing the Troubled Waters?

In many respects, this is a user-designed

dynamic course because we collected and

analyzed course evaluations to determine the

topics and emphasis users desire. For the many

that have attended this course punctually every

two years, the curriculum, in response to userinput, retains the topics you have come to

expect, but has been expanded to include

separate chapters and lectures on Federal

Circuit en banc cases and Supreme Court

cases, selected important cases that do not

conveniently fit within a single

(crossover cases) as well as notew

practice & procedure cases, notew

appellate practice cases, joint infringe

legal ethics within the context of r

inequitable conduct cases, and selected H

Waxman cases, among others and

including the AIA.

All of the above represents just some o

continually breaking judicial news from

Federal Circuit and Supreme Court that w

covered. As attested by hundreds of

course attendees, the faculty presents ju

right amount of factual and legal deta

mastering each case discussed.

Course Materials

The full substance of the course is cap

in the Federal Circuit Patent Lawthree-vo

text, which extends over 1,500 p

supplemented by PowerPoint slides that d

individual cases and court trends on sp

topics.


Thorough review of each topic and each

decision. Good discussions among speake

attendees. Very knowledgeable speakers.

Fred Burkhart

Gardner, Linn, Burkhart & Flory, LL


I've been attending this course, period

over a number of years, and it continuesbetter & better.

Steven Fontana

Fontana International


he 11,200 square foot Nobu restaurant

and lounge offers teppanyaki tables, a

sushi bar, a 327-seat lounge and bar, and

a private dining area.

T





Las Vegas, NV


Caesars Palace

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8:15 a.m. 11:30 a.m. (Mon)




This is a very comprehensive due diligence

course. The speakers are very knowledgeable

and continually supplement the course

curriculum with real-world war stories. The

course materials are invaluable and include a

great overview of AIA.

Anthony Colesanti

C.R. Bard, Inc.

April 2013/April 2008 attendeee

The course is up-to-date with current case law.

It used a 'real world' example, and the speakers

are dynamic and interested in both the subject

matter and in teaching.

Julie Henrich

Plextronics


[I liked] the fluency and knowledge of the

lecturers on the subject. The content and the

lecturers are excellent. Im sure this course can

help both patent and non-patent attorneys.

April 2011 attendee

During the course, you will interact

instructors and other students while exp

case-study examples and lecture topics

wide range of issues:

common legal-interest agreements

claim construction

freedom to operate

validity assessments

inequitable conduct

patent eligibility, and

ownership/transferability.

The lively and entertaining presen

covers every phase of a due dili

investigation. Beginning with the

involvement of patent counsel, the

navigates a course through early inform

gathering, drawing in the attendees as p

the due diligence team to spot critical p

issues that can make or break a deal. The

also shares effective strategic approach

focus investigations and requests for f

information during the plunge into the

Patent Due Diligencein the AIA Era

Course Description

his course will provide practical guidance for conducting patent due diligence investigati

in todays changing legal environment. The panel will explore how the America Invents

(AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect

due diligence process, while sharing practical techniques and strategies for conducting comp

investigations. These tactics apply to both large and small transactions, irrespective of the na

of the specific transaction or the party you might be representing. Now, more than ever, compa

contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions

private equity dealsneed to rely on due diligence counsel to provide a thorough understand

of the value and risks associated with the transfer of intangible assets.

15.0 Hours

T

Course Faculty

The faculty, considered collectively, have participated in over 100 due diligence evaluations and wyou through the process soup to nuts, whether you are representing the target or the acquirer.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC AND RESTON, VA

ANTHONY GUTOWSKI ANDREW HOLTMANBRYAN DINER


As todays tight economy continues

to challenge the business of clients,

pressure mounts for the patent

practitioner to help clients enjoy a

higher return on investment in deals

involving both acquisitions andlicensing-in of patent rights. By the

same token, those who represent

target companies need to learn the IP

strategies that help maximize income

from either takeovers or licensing-outs.

Attendees consistently grade the

Due Diligence course and its faculty

with some of the highest ratings of any

course that PRG offers. This critically

acclaimed course will help you raise

your game to new levels, whether you

are representing suitors or targets.

Sign up now for this 2 daycourse. Sure, youll miss some time out

of the office. But your return on

investment will be a finely honed

ability to help clients see an increase in

theirreturns on investment.


21/32


room and to facilitate making recommendations

to the client that may ultimately affect the price

and structure of the deal.

On Day 1, from approximately 2:30 to 4:45

p.m., as currently estimated, we will discuss

potential ethical issues and inequitable conduct

hazards that may arise during an IP due

diligence investigation.

The concluding sessions of the course cover

risk-management issues that provide invaluable,

practical suggestions for contractual

considerations, including effective uses of

representations and warranties. Topics discussed

in the course apply both to investigating a

targets patent portfolio and to preparing a

portfolio for suitors.

Youll receive a thorough course book, chock

full of notes, examples, and case law.

The facultypartners at Finneganare all

patent attorneys with extensive experience in

due diligence investigations. The panel has

many years of experience in IP practice and

expertise in several different areas of techn

Throughout the course, the faculty s

interesting war stories, observations

practical tips for conducting the investigat

a comprehensive and efficient manner.

In short, the knowledge youll gain fro

course will enable you to avoid due dili

pitfalls, while more effectively assessingmanaging risks endemic in business transa

involving complex IP rights and issues.

ituated in front of the Neptune Bar, the 5,000-square

foot Neptune Pool offers the perfect place to relax.S





Las Vegas, NV


Caesars Palace

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1:30 p.m. 4:45 p.m. (Sat-Sun)

8:15 a.m. 11:30 a.m. (Mon)




This course provides a practical framework for

using post-grant tools from both the perspective

of the owner and challenger, and insight on how

they work together.

Matt Rabdau

IP Counsel, Fluke Corporation


The materials are outstanding. I will use as

reference materials in the future. Lecturers

were wide open to questions and very responsive.

Interspersing of war stories and examples kept

the presentation interesting.

Charles Burpee

Warner Norcross & Judd LLP


Ten years ago courts were essentially t

arbiters of patent validity. About 5-6 yea

reexamination suddenly emerged as a p

means for challenging patents, either al

alongside court battles. The reasons f

shift were simple: Would you rather brin

validity attack before an experienced

examiner with technical expertise in the

Central Reexamination Unit where clai

given their broadest reasonable interpr

and do not enjoy a presumption of validitjury in the Eastern District of Texas? The

becomes all the more obvious whe

considers that a reexamination can cancel

eliminate liability for past infringement,

intervening rights to continue a

infringement in the future, open up d

around opportunities, create a more fav

prosecution history, defeat a charge of

infringement, help avoid an injunction,

an inequitable conduct defense, and som

enable a stay of expensive litigation. All

can be achieved at a small fraction of the

Post-Grant Patent Practice:Review and Reexamination

Course Description

he first day of this two-and-a-half-day course focuses on ex parte reexamination and

addresses inter partes reexamination. The second day is dedicated to inter partes revi

Topics covered in the final half day include post-grant review, covered business meth

patent review, and ethical issues related to review proceedings and reexamination. The cou

covers strategies, tactics, best practices and case studies for review and reexamination. The cou

is for both patent practitioners who appear before the PTO in these proceedings, as well as litiga

who must deal with the increasingly common role of PTO proceedings in the context of dispu

15.0 Hours

T

KEVIN B. LAURENCE MATTHEW C. PHILLIPS

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADTALEXANDRIA, VA

RENAISSANCE IP LAW GROUP LLPPORTLAND, OR

Course Faculty The instructors are experienced at representing both patent owners and accused inin review proceedings and reexaminations. They have taught the Post-Grant Patent Practicecourseyears and continuously update their treatise and slides to provide practical advice based on curreinvolving adversarial post-grant matters. They were actively involved in bar associations efforts to PTO design and implement the new review proceedings created by the America Invents Act (AIA). Thwritten widely on review and reexamination topics for Intellectual Property Today.


The battleground of patent validity is

shifting from courts to the PTO. Review

proceedings, including post-grant

review and inter partes review, are

powerful, fast-track trials before thePatent Trial and Appeal Board. Review

proceedings offer several advantages

over validity challenges in a court

proceeding including cost, predictability,

effectiveness, speed, and the ability to

pursue strategies that would not be

feasible in court. This course explores

these factors and provides training for

participating in review proceedings.

Reexamination remains popular

either alone or alongside court battles.

The PTOs Central Reexamination Unit

provides a forum that can result in

many favorable outcomes, at a smallfraction of the cost of litigation.

Whatever side of the battle you are on,

you must know how to engage in the

new battlefields called review as well as

the existing battlefield called

reexamination.


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litigation or advantageously deployed in

conjunction with litigation.

The Patent Trial and Appeal Board has shifted

the balance in favor of the PTO as the patent

validity battlefield of the future by creating new

more powerful, fast-track, litigation-like review

proceedings, including post-grant review and

inter partes review. Inter partes review providesan opportunity to challenge the validity of a

patent twice: first at the PTO based on printed

publications and subsequently in litigation based

on other available grounds. Stays are being

granted liberally when inter partes reviews are

filed in light of the statutory requirement for

rapid completion of these new proceedings. As

a result, validity challenges are proceeding in

serial fashion. In the first phase of a bifurcated

validity challenge, complicated arguments

regarding the prior art can be rapidly resolved by

trained specialists at the PTO, whereas in the

second phase, less technical arguments

regarding commercial activity or other

invalidating grounds can be resolved by a judge

or jury. This sequential approach can simplify

claim construction and narrow issues for an

infringement portion of the litigation, and thus

may reduce overall costs. Lead counsel in an

inter partes review proceeding must be a

registered patent attorney, but it is possible for

litigation counsel to participate in the proceeding

even if the litigation counsel is not registered.

Integrating the inter partes review and litigation

teams can provide a smooth transition to the

litigation upon completion of the review

proceeding.

Reexamination has often been referred to as

a second bite at the apple, but the bite size

provided by inter partes review is more on par

with that of litigation due to its provisions for

limited discovery. The comparative weakness of

ex parte reexamination is offset by its absence of

estoppel implications. Indeed, the deepest

concerns regarding inter partes review often

focus on its legal estoppel provisions that

prevent a challenger who is unsuccessful in an

inter partes review from attacking a claim in any

forum based on other printed prior art

publications. This concern overlooks the

advantages of this new proceeding and does not

acknowledge that failure to invalidate a claim in

litigation results in much harsher estoppel. The

estoppel of inter partes review will have aconsiderably smaller scope than the estoppel of

a failed district court challenge. In light of the

complexity of many prior art arguments and the

benefits of the serial validity and infringement

cases, consideration of a challenge at the PTO

should not be a back-up plan, as reexamination

often is. Rather, inter partes review should be

used prior to or concurrently with litigation.

For patent challengers, the course provides

training to:

Analyze the advantages and disadvantages

of review and reexamination compared to

litigation

Make well-informed choices between review

proceedings and reexamination

Understand the critical role of review and

reexamination in the context of a dispute

and develop strategies based on anticipated

or concurrent litigation

Appreciate estoppel implications both

official and unofficial of review and

reexamination

Utilize review and reexamination to obtain a

stay or other benefits in related litigation

Unravel the AIAs review statutes and

decipher the PTOs review rules to

understand how reviews are really conducted

Prepare a petition for review or a request for

reexamination that complies with all

requirements and gets granted

Learn what the reexamination statistics really

mean

Advantageously utilize the dif

standards applied for claim interpretat

the PTO and claim construction in litig

as well as the differing burdens of pro

Recognize possible changes to

construction of the claims in the litig

based on the review or reexaminatio

opens up design-around opportu

creates a more favorable prosecution h

for the purpose of claim constructio

impacts estoppel theories

Create intervening rights that elim

liability for past infringement or

continuation of accused infringement

future

Tactically use serial ex parte reexamin

requests

Correctly and strategically use petition

declarations

Understand the repercussions that r

and reexamination can have on settlem

The course balances the perspectiv

patent challengers and patent owners s

above items are also presented from the

of the patent owner. Additionally, the c

provides training for patent owners to:

Avoid, when possible, intervening right

arise via the cancellation or amendme

claims or from mere argument rega

claim scope

Select information to be disclosed to th

from concurrent litigation or other

proceedings

Understand the timing of events in all

issuance PTO proceedings so that you a

caught off guard

Navigate the maze of review

reexamination procedures to

unfortunately common mistakes

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8:15 a.m. 11:30 a.m. and

1:30 p.m. 4:45 p.m. (Sat-Sun)

8:15 a.m. 11:30 a.m. (Mon)



The broad spectrum of available software

patent protection opportunities that appeared

available after State Street BankandAT&T v.

Excel was questioned in the Bilskidecisions. In

its Bilskidecision, the CAFC retreated from the

useful, concrete and tangible result analysis to

tied to a particular machine or apparatus or

transforms a particular article tests. The

Supreme Court found this machine-or-

transformation test useful but too narrow. It

fell back on general principles of abstractness.It also declined to exclude all business methods

from patentability, but it seemed to invite their

close scrutiny. In Mayo v. Prometheus, the

Supreme Court spoke again on abstractness, and

the need to add an inventive concept to a law

of nature. Lower courts as well as the USPTO

continue to struggle with the application of the

Supreme Court's decision and the CAFC decisions

attempting to follow them. WithAlice v. CLS

Bankhaving been taken on certand argued in

March with a decision expected in June, hopes

for a rule on decoding abstractness and f

a decision affecting the value of many com

implemented inventions both exist. Pract

need to understand the signposts left by th

decisons and whatever the new guidance

from the Supreme Court.

Software-based inventions face anothe

Some recent cases have suggested

infringement may be avoided when infr

activity crosses borders or multiple partinvolved in the acts or elements comp

infringement of a claim. The doctrine o

infringement (a/k/adivided infringeme

developed in BMC Resources, In

Paymentech, Muniauction Inc. v. Thomson

and other cases continues to evolve. It

particular problems for proving infringem

more computer-based inventions use proc

storage and specialized data processing s

of others, sometimes located in the c

Using resources in the cloud can i

multiple actors and jurisdictions.

Software Patents: Procuringand Enforcing AfterAlice

his course addresses the difficult and sophisticated task of how best to claim, prosec

and litigate software-based inventions in their rich variety so as to have their patents

not invalid and infringed by the Federal Circuit. But that rich variety requires a variet

disparate claiming, specification drafting, prosecution, and litigating techniques.

The America Invents Act (AIA) impacts software patents in general and business method pat

in particular. Specifically, a new inter partes review proceeding is available during litigation

defendants to challenge certain business method patents at the USPTO on a wide varietinvalidity grounds.

Course Description

15.0 Hours

T

DORSEY & WHITNEY LLPMINNEAPOLIS, MN

WINTHROP & WEINSTINEMINNEAPOLIS, MN

ALDO NOTOANDREWS KURTH LLP

WASHINGTON, DC

STUART HEMPHILL DEVAN PADMANABHAN

Course Faculty The faculty for this course has prosecuted scores of software-related patents, for bmethods and more traditional computer-based technical subject matters, over a collective experience of more than 60 years. Each has also been involved in litigation and licensing of sofrelated patents. They can provide a wide range of viewpoints from which to consider strategprocuring, exploiting and enforcing software patents.


Director Kappos has recently stated that

patents on software are every bit as well

deserved as patents on air flight, electric bulbs

and such more traditional inventions. At the

same time, he acknowledges past, often

inadequate and inconsistent examination of

software patents, but points out improvements

at the USPTO for increasing examination

quality. This is a critical time to get an important

update on software patent law, given the

impact of the America Invents Act (AIA) and

recent and pending CAFC and Supreme Court

decisions, including Alice v. CLS Bank. This

course will cover the different claim drafting,

prosecution, and litigation techniques required

to address the rich variety of software-based

inventions, in the context of current law and

up-to-the-minute court decisions.

UPDATED!


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The course and text address why different

software applications (e.g., Internet-related

software) require special claim drafting,

prosecution or litigation techniques. Claim styles

and limitations designed to meet the somewhat

unclear 101 standards are discussed. This

course also exp

Documents

PRG Fall 2014 Advanced Courses Catalog