PRG Magalog for Summer and Fall 2013 Advanced Courses Programs

7/28/2019 PRG Magalog for Summer and Fall 2013 Advanced Courses Programs

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ANNUAL SUMMER AND FALL PROGRAMS

PATENT RESOURCES GROUP

Register now at www.patentresources.com

THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.

Fall ProgramHyatt Regency Huntington Beach Resort and Spa

Huntington Beach, CA Oct. 16-22, 2013

Summer ProgramCome to DC for Three Great Courses, Including Two Brand New Courses!

Hilton Crystal City Washington, DC August 5-7, 2013

Join Us in California Get the BESTAdvanced Patent Training in the World!

IN PATENT LAW

1GREACO

URSES


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2 www.patentresources.com

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

Programs. If you were a paid attendee at any PRG course in 2012 or already in 2013, you are

automatically a loyalty member and will be entitled to special pricing when you attend any courses at

our 2013 Summer or Fall Advanced Courses Programs! And after being a paid attendee at any PRG course in

2013, youll automatically be eligible for Loyalty Program benefits in 2014. Loyalty Program members save

$200 on tuition for each 2- or 3-day Advanced Course and $100 for each 1-day course. (But you'll get special

Loyalty savings of $200 for all one-day courses at the 2013 Annual Summer and Fall Programs!)

About PRGs Loyalty Program

PRGs 2013 Annual Summer and Fall Programs

P

in Patent Law

For over 40 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

WASHINGTON, DC IN AUGUST AND IN CALIFORNIA IN OCTOBER?

BECAUSE PRGS ADVANCED COURSES:

Will arm you to deal with the complexities of the America Invents Act all of our returningcourses have been updated as needed to reflect the impacts on you and your practice of the America Invents

Act (AIA) of 2011, including the final changes that took effect in March 2013. In addition, our special one-

day course focusing solely on the AIA is being offered at both the Summer and Fall Programs. This is a coursethat every practitioner needs to take.

Provide an amazing value if you register for your Fall Program courses by August 26, 2013,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

(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 immediatelywhen you get back to the office.

Are an investment in your practice or your company,

increasing both your ability to successfully prosecute patent lawand the value you bring to your employer.

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

Register soon spaces will fill quickly!

PRG THE CHOICE OF EVERYGENERATION OF PATENT ATTORNEYS SINCE 1969.


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www.patentresources.com

Hyatt Regency Huntington Beach Resort and SpaHUNTINGTON BEACH, CA OCTOBER 16-22, 2013

12 advanced patent law coursesare available for the 2013 AnnualFall Advanced Courses Program,and 3 courses are available for the2013 Annual Summer AdvancedCourses Program.

Tuition for each Fall three-day

course is $2,195 through August26 and $2,295 after that date.

Combined tuition for the Fall PatentSearching Course and Workshop is$2,590 through August 26 and$2,690 after that date.

Tuition for the Summer two-daycourse is $1,995, and tuition forthe one-day courses at bothPrograms is $995.

Loyalty Program members save$200 on tuition for all AdvancedCourses at these two programs!

Three-Day Courses: October 16-18, 2013 (Wed-Fri)

Art & Science of Patent Searching Patentability, Validity& Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 6Faculty: Brian Thurmond and Jonathan Skovholt

Comprehensive PCT Practice: How to Master Its Challenges . . . . . . . . . . . . . . . . . . . . . 10Faculty: Carol Bidwell and T. David Reed

Drafting Patent License Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16Faculty: D. Patrick OReilly, Brian Kacedon, William Pratt, and Ronald Bleeker

Federal Circuit Law (2011-2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18Faculty: Gale Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll

Post-Grant Patent Practice: Review and Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . 24Faculty: Kevin Laurence and Matthew Phillips

One-Day Courses: October 19, 2013 (Sat)

America Invents Act: Monumental Changes, the Consequencesand the Unanswered Questions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4Faculty: Paul Gardner and Edward Manzo

When, Why and How to Effectively Appealto the USPTO Patent Trial and Appeal Board . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32Faculty: Bill Smith and Joseph Lucci

Summer Program

August 5 - America Invents Act: Monumental Changes,the Consequences and the Unanswered Questions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4Faculty: Paul Gardner and Edward Manzo

August 6 - Strategic Patent Portfolio Management in the Eraof Legal Chaos, First-to-File and Budget Demands GNEW COURSE! . . . . . . . . . . . 30Faculty: J. Matthew Buchanan

August 6-7 - Prevailing at the ITC: Managing aSuccessful Section 337 Investigation GNEW COURSE! . . . . . . . . . . . . . . . . . . . . . . . . . 26Faculty: P. Andrew Riley, Christine Lehman, and Anthony Del Monaco

Three-Day Courses: October 20-22, 2013 (Sun-Tues)

Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8Faculty: Tom Irving, Paul Browning, Jil l MacAlpine, Deborah Herzfeld, Kathryn Sanchez, and Rona Nardone

Crafting and Drafting Winning Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris

Designing Around Valid U.S. Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14Faculty: Patrick Burns, John Pinkerton, and Patricia Prior

Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman

Procuring and Enforcing Business Methodand Other Software-Based Patents After Bilskiand BMC . . . . . . . . . . . . . . . . . . . . . . . . 28Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan

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

Hilton Crystal CityWASHINGTON, DC (ARLINGTON, VA) AUGUST 5-7, 2013

Register by August 26for Lowest Fall Tuition!


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Comment from previous attendee:

Lecturers, materials, location everything with

PRG exceeds expectations and is of the highest

quality.

Steve RostTaft Stettinius & Hollister LLP

October 2012 attendee

The course lectures and materials include

analyses of the following aspects of the AIA law:

1. The first inventor to file system, which

became effective on March 16, 2013, and

replaces the first to invent system of the pre-

AIA law. The course lectures and materials

analyze in detail the provisions of completely

rewritten Section 102 of Title 35 U.S.C., which

expands both geographically and temporally

the universe of prior art that may rend

claims unpatentable for lack of novelty or fo

obviousness under Section 103. Incorporated

our analyses and materials are the Pate

Offices new rules implementing the firs

inventor-to-file regimen, its extensivcommentary interpreting the several uncle

provisions of the AIA version of Section 10

and its extensive examination guidelines.

2. The new Post Grant Review

proceeding (so-called by the applicable ne

statute, Chapter 31, Sections 321-329) befo

the newly named Patent Trial and Appe

Board, (formerly the Board of Patent Appea

and Interferences). This course considers

depth the requirements, limitations, potenti

risks and consequences of such a review, whic

America Invents Act: MonumentalChanges, the Consequences andthe Unanswered Questions

Course Description

he extensive, complicated, unprecedented statutory changes and additions made by the

America Invents Act have now become fully effective. Not only is it necessary for all patent

professionals to know the new law, we must during a transition period that will last formany years to come be able to determine when the AIA law applies and when the pre-AIA version

of the law applies.

The content of this course was created with the goal of assisting patent attorneys and agents in fully

understanding the new law, its consequences, nuances, ambiguities and unresolved issues created

by the new statutory language.

T

Course Faculty

Paul Gardner, PRGs academic director, has over 45 years of experience in examining and prosecutipatent applications, litigating patents, and teaching patent law and Patent Office practice to thousandsattendees for PRG and the UCLA, University of Washington, and Seattle University law schools. EdwaManzo, a partner at Husch Blackwell, is known for his groundbreaking patent work in the courtroom, tclassroom and the legal community. He has successfully resolved numerous patent and trademainfringements and misappropriations on behalf of clients in a variety of industries. He is an adjunct professat a major law school and the author and editor-in-chief of three respected reference books.

Why Should You Take This Course?

The America Invents Act, which is

now fully effective, is the most

significant development in the patent

profession in a generation. Those who

lack a thorough understanding of the

full impact of this legislation run the

risk of untold consequences to their

practices and their clients businesses.

This course provides crucial insights

into the new law, its consequences,nuances, and ambiguities, and also to

the different possible interpretations

that the Federal Circuit will be called

on to resolve in the years ahead,

insights that will be invaluable to those

who attend the course.

Projected State Bar CLE Credit:

Huntington Beach, CA

October 19, 2013 (Sat)

Hyatt Regency Huntington Beach Resort and Spa

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

1:30 p.m. - 4:45 p.m.

Registration deadline:September 25, 2013

Washington, DC

August 5, 2013 (Mon)

Hilton Crystal City (Arlington, VA)

8:30 a.m. - 11:45 a.m. and

1:00 p.m. - 4:15 p.m.

Registration deadline:July 15, 2013

6.0 Hours

PAUL GARDNERPATENT RESOURCES GROUP

ALEXANDRIA, VA

EDWARD MANZOHUSCH BLACKWELL SANDERS WELSH & KATZ

CHICAGO, IL

Offered at Both the Summeand Fall Programs!


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may be initiated by any third party who desires

to challenge the validity of any claims in a patent

issued or reissued during the nine month period

preceding initiation of the review, on the

ground(s) of failure of the claims(s) to comply

with the requirements of one or more of

Sections 101, 102, 103 or 112 (with the

exception of a best mode violation, discussed

below).

3. A new Inter Partes Review

proceeding before the Board under new and

revised Sections 311-319, effective September

16, 2012, which replaces pre-AIA inter partes

reexamination. The new proceeding will

permit a third party to seek cancellation of

claims in any patent (no matter when filed or

issued) for lack of novelty under Section 102

or obviousness under Section 103, but based

only on prior patents or printed publications.

4. A new derivation proceeding under

new Section 291 of the statute, a proceedingbefore the Board whereby a patent applicant

may establish that the inventive entity named

in an earlier-filed application published within

a year prior to initiation of the proceeding was

derived by the earlier filer from the inventive

entity initiating the derivation proceeding.

5. Revised Section 301 of the statute

which permits any person to submit not only

prior art consisting of patents or printed

publications believed to have a bearing on the

patentability of a particular patents claims, a

limitation of the previous version of the statute,

but also statements of the patent owner filed

in a federal court or Office proceeding wherein

the patent owner expressed a position on the

scope of any claim of the particular patent, and

also related documentation (e.g., court

pleadings and/or evidence). Such written

statement(s) and related documentation may

be considered by the Office in any proceeding

reviewing the patent, but only with respect to

interpretation of the claim(s) involved.

6. New Section 257, which permits the

owner of a patent to dispose of potential

inequitable conduct issues via a request for

supplemental examination of the patent bythe Office to consider, reconsider, or correct

information believed by the applicant to be

relevant. Applying the substantial new

question of patentability standard, the Office

will decide whether to order ex parte

reexamination based on the information

submitted in support of the patent owners

request. If reexamination is ordered, the Office

will consider all of the information submitted,

not just the patents, printed publications and

newly-added written statements to which ex

parte reexamination requests are otherwise

limited under Chapter 30 of the statute,

Sections 301-307.

7. A Transitional [8 years, ending

September 16, 2020] Program for Covered

Business Method Patents, a post grant review

proceeding before the Board (mentioned in

paragraph 2 above), for challenging the validity

of any covered business method patent for

which the petitioner initiating the proceeding

(or his/her privy) had been charged with

infringement. (Covered patents are those

claiming a method or corresponding

apparatus for performing data

processing...operations used in the practice...of

a financial product or service other than intechnological inventions. Sec. 18(d)(1) of

Public Law 112-29.)

8. New best mode law is a step toward

global harmonization. The statute retains the

best mode disclosure requirement in Sectio

112, Paragraph 1, but eliminates its violation a

the basis for an invalidity or unenforceabili

(inequitable conduct) defense. Newly rewritte

Section 282(a)(3)(A) of Title 35.

9. Prioritized Examination, a procedu

for obtaining expedited examination o

applications, subject to applicants compliancwith certain prerequisites and payment o

significant fees, aimed at final disposition o

the application with 12 months of the Office

granting of prioritized status.

10. Prior user rights pursuant to rewritte

Section 273, under which a good fait

domestic commercial use of a claime

invention more than one year before th

effective filing date of a claimed invention (o

the date the claimed invention was fir

disclosed under a limited one-year grace perio

provided in Section 102(b)) is a defense t

infringement.

11. Other changes in the AIA of le

substantive concern and/or less frequent

encountered, will also be considered, albeit t

a lesser extent, such as

Added inventors oath or declaratio

provisions under rewritten Section 115 o

Title 35,

Very limited patentability of tax strategies

Patent Office fees, including new mic

entity fees,

Preclusion from evidence of failure of a

accused infringer to obtain advice ocounsel, and

Elimination of qui tam actions for fals

marking. G

he Hyatt Regency Huntington Beach Resort and Spa will be your home

away from home while you attend PRG's Fall Advanced Courses Program.T


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October 16-18, 2013 (Wed-Fri)

Hyatt Regency Huntington Beach Resort and Spa8:15 a.m. - 11:30 a.m. and

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

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

Optional Workshop

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


(Register by August 26 for best tuition rates!)

Comments from previous attendees:

Well structured course. Good pace. Very useful

tips 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 expertise o

Landon IP, which is one of only thre

companies selected by the USPTO to condupatent searches on its behalf with a view t

reducing USPTO examiners towerin

examination backlog.

Upon completion of the course, th

attendee will have learned:

How to approach a search in a systemat

methodical and exhaustive way.

How to properly scope the search befo

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 sources

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

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

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

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

search or commission it.

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

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

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

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

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

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

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

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 haveexpert search experience as attorneys, patent search instructors, and examiners with the U.S. Patentand Trademark Office (USPTO).

LANDON IP, INC.ALEXANDRIA, VIRGINIA

BRIAN THURMOND JONATHAN SKOVHOLT

... And Optional Patent Searching Workshop


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 isArt & 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. It

gives attendees the opportunity to practice

hands-on patent searching alongside the

course instructors. 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 eachattendees 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. The

informal, lecture-free setting will allow each

attendee to work independently, but in close

proximity to an instructor. Attendees must

bring their own laptop computers and will be

provided with wireless Internet access in the

classroom. Attendees are also asked to bring

their own search engine user accounts so tha

they will be able to practice using familia

search tools. The instructors will be able t

provide assistance with any of the major pate

search engines. The attendees will be guide

through scoping the search, performing th

search and analyzing their results. Answer ke

will be provided at the end of the Worksho

so that participants may gauge their progreand have a reference to use for addition

practice following the class.

Requirements and Prerequisites:

Completion of the immediately precedin

2013Art and Science of Patent Searchin

course

Important: Wireless-enabled lapto

computer (Internet Explorer or Firefox we

browser, and Microsoft Office packag

recommended)

Important: Patent search engine us

account (in an attempt to focus on cours

concepts and high-level searchin

techniques, publicly available search engine

cannot be solely relied upon for the la

portion of this course)

Important: Unrestricted use of third-par

wireless connection (please verify with you

IT department that your security settings w

allow access to the wireless hub necessa

for the course).G

elax in the sun by the lagoon-

style swimming pool.R



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(Including 2.0 Hours Legal Ethics)


October 20-22, 2013 (Sun-Tues)


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

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

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



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 liter

infringement and lay the groundwork in th

specification (the single best guide to th

meaning of a claim term) for a broad claim

construction. This course, presented by a

experienced faculty, each with a significan

depth of experience, suggests many practic

approaches with those objectives in mind.

We discuss how to establish patentabili

ChemicalPatent Practice

Course Description

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

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

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

by the AIA,to enhance such possibilities as:

obtaining broad claim construction for literal infringement purposes, particularly by

avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para. 2

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 post-KSR world, including illustrations from several real U.S. patents prosecuted by a faculty

member;

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

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

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 Federal

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

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

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

Invents Act (AIA), particularly as they relate to filing strategies in and around the March16, 2013 date when the first inventor to file provisions took effect.

15.0 Hours

T

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

WASHINGTON, DC

DUPONT

WILMINGTON, D

TEVA PHARMACEUTICALS

FRAZER, PA

TOM IRVING PAUL BROWNING JILL MACALPINE DEBORAH HERZFELD KATHRYN SANCRONA NARDONE

Course Faculty

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


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-free

transfer 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.


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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 ofchanges 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


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 Patent Law

written and continually updated by th

Finnegan, Henderson, Farabow, Garrett

Dunner faculty, with the invaluable assistanc

of editor Stacy D. Lewis, will be provided t

attendees at the course. This treatise cove

virtually every situation that can arise in th

preparation and prosecution of a chemic

patent application. It will remain on your des

and in continual use long after the course.

The treatise underwent a complete overha

in the aftermath of the enactment of the A

to provide completely updated materials to th

course attendees. Although the treatise is

great value, the faculty members have foun

that the best vehicle for teaching is the use o

slides, which will be provided in book form t

attendees on the first day of class. The slide

book will contain ample room for note-takin

and cross-referencing and, as such, will be valuable addition to your daily kit of chemic

patent practice tools.G

njoy the beautiful statues, landscaping,

flowers and more on the resort's property.E


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

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

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



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 proces

Whether the international application is th

first filing or it claims priority to an earlier filin

the applicant does not have to make the fin

decision on where to seek patent protectio

until 30 months from the earliest priority dat

The final decisions are based on th

information obtained in the internation

search report and the international prelimina

report on patentability as well as informatio

obtained by the applicant regarding th

scientific status and commercial value of thinvention. In short, through using the PCT, th

applicant will have a much better idea of th

likelihood of obtaining commercia

meaningful patent protection for the claime

invention. In addition, the applicant will hav

the opportunity to obtain additional searc

results through the supplementary searc

option as well as have the opportunity t

advance prosecution by using the option

international preliminary examinatio

procedure. Applicant can amend th

application and/or provide arguments fo

Comprehensive PCT Practice:How to Master Its Challenges

Course Description

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

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 the

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 the

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 experience in aspects 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 PCT

course 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.


11/40

www.patentresources.com 1

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 onpatentability) 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 underthe 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 PCTcourse

Excellent instructors - thorough coverage

subject.

The course materials are excellent. The lecture

have much experience in PCT-related activities an

have the ability to explain that to a class.

Outstanding speakers with practical experience

Course Materials

A comprehensive text is used in the cou

presentation that includes detailed explanatio

of the various topics and sample forms. G

ip a cool beverage on the Californian patio, overlooking

the lush natural surroundings and the Pacific Ocean.

S


12/40



(Including 1.0 Hour Legal Ethics)




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

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

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




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 with thdilemma generated by the Federal Circuit!

practical ex parte practice path is now in bein

that navigates through the chaos. Its road sig

reads LP-CD (Low Profile, Commo

Denominator Practice). LP-CD, despite th

chaos it penetrates and traverses, is charte

clearly and boldly in this PRG course. Craftin

& Drafting Winning Patents was designed an

created by PRGs Professors Paul Gardner an

Irving Kayton and enriched by the PRG cours

faculty.

Crafting & DraftingWinning Patents

Course Description

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

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

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

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.S.

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

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

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

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

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

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

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

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 is

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

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

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

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

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


13/40


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, and

excluded 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 with

minimum of two years of practice, an

preferably more. It is sufficiently sophisticate

for even the most experienced. The facul

knows this to be true because the problem

and solutions about which they conferred an

debated in bringing this course to fruitio

plumbed the depths of their combined pate

law knowledge, experience and ongoin

research and scholarship.

Beginning patent practitioners should loo

forward to PRGs four-day Workshop designe

specifically for them, The Winning Paten

Workshop. For details visit our website a

www.patentresources.com.

Course Materials

A comprehensive, one-volume course tex

entitled Crafting & Drafting Winning Patent

and a bound set of lecture slides, are definitiv

on the subject and will be given to registranat the course. The Textbook and slides a

constantly updated and revised to includ

recent decisions and changes in the law

including the applicable provisions of the AIA

G

etes is a great place to unwind

after you are through with your

courses for the day.P


14/40


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.






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

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

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




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 the doctrine 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 Pennwaltand its progeny, would have been held

an infringement rather than the socially desirable

activity of designing around.

This course will show practitione

representing potential infringers how t

counsel competitive product design under th

guidance of Federal Circuit and Supreme Cou

cases, which will almost always be viewed a

effective designing around. How to condu

litigation to achieve a happy ending for you

infringement-accused client will be set forth

elegant simplicity.

Actual Demonstrations

To ensure no confusion on anyones part

this exercise, the faculty and students will gthrough several claim construction exercise

and compare their conclusions with the Feder

Circuits claim construction in actual cases.

mock design around exercise will also b

presented. The demonstration considers clien

marketing and engineering perspectives,

addition to legal analysis. To prepare for th

exercises and demonstration, the course facul

will illustrate the accused structures relative t

the claims in the landmark, no-infringemen

by-claim construction cases of C.R. Bard v. U.

Designing AroundValid U.S. Patents

Course Description

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

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

claim construction predictable, so that claims would better perform their public notice

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

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

In fact, the court has often overridden the examination process, undermining the public notice

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

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

face are literally infringed.

15.0 Hours

I

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

PATRICK BURNSGREER, BURNS& CRAIN, LTD.

CHICAGO, ILLINOIS

JOHN PINKERTONTHOMPSON & KNIGHT

DALLAS, TEXAS

PATRICIA PRIORGREER BURNS & CRAIN LTD.

CHICAGO, IL


15/40


Surgical Corp. 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 Designin

Around Valid U.S. Patents is authored by th

distinguished course faculty, each of whom ha

extensive successful litigation, prosecution an

counseling experience. Nothing like thes

unique books exists anywhere else. G

he beautiful Pacific Ocean beach is just

a few minutes away, with an easy stroll

over the Resort's pedestrian bridge.

T


16/40



(Including 2.0 Hours Legal Ethics)




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

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

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




This course provided a great overview of

licensing issues and anecdotal scenarios giving

rise to said issues.

Andrew Weber

Honigman Miller Schwartz and Cohn LLPApril 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 releva

to the 'real world' problems encountered

drafting and reviewing agreements.

Glenn Smith

Bausch & Lomb,


This is a course for the craftsman. Both th

course and the text provide a solid basis fo

responding to virtually every license draftin

problem that may arise. Even for the high

experienced licensing lawyer, new insights ma

be provided; at the very least, the course w

be a rich, comprehensive refresher. For the le

experienced licensing lawyer, it will open vista

both with respect to hidden problems and t

mechanisms for dealing with them.

Drafting PatentLicense Agreements

Course Description

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

to existing law.

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

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

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

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

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

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

during the course.

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

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

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

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 KACEDOND. PATRICK O'REILLEY WILLIAM PRATT RONALD BLEEKER


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.


17/40


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 Sixth 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 text w

be given to each attendee at the program. Th

volume containing the printed slides that w

be used throughout the lectures will also b

provided at the course; this volume will includ

extensive license drafting workshop materia

and Justice Department licensing guideline

G

panish-inspired architecture adorns the property, providing

a wonderful ambience in which to relax and unwind.S


18/40







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

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

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



Federal Circuit Law(2011-2013)

America Invents Act of 2011 (AIA)

The AIA was signed into law by President Obama on September 16, 2011, and represents, by many

interpretations, the most significant change to the U.S. patent system since 1952. The Act, among

other things, initiates a first-inventor-to-file system (FITF), and includes provisions on post grant

review (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, a

revised grace period and redefinition of prior art to include subject matter that is otherwise

available to the public, expands the defense of prior commercial use, retains best mode as a

disclosure requirement, but removes best mode as a ground of invalidity, and significantly alters

the false marking statute. But those are just the highlights. Apart from the sweeping changes,

including a rewrite of Section 102, the Act has sections that will raise questions for years to come

until resolved through the courts.

Some portions of the Act became effective immediately other portions variously became effective

1 year or 18 months after signing. In general, the FITF portions became effective for applications

filed on or after March 16, 2013, and for years to come, practitioners will have to practice under

parallel systems the old law and the new law. The lecturers will explain, as appropriate,

how the results in particular cases may be affected by the AIA.

Course Description

f you have not been reading and closely analyzing all of the Federal Circuits patent opinions

during the past years, you may unwittingly be flying blind in some areas of your practice.

In virtually every area of patent practice, surprising and often startling opinions are

emanating from the court. Often those opinions are at variance with established precedent, but

without any admission or acknowledgement of the variance by the panel majorities despite pointed,

compelling demonstrations thereof in dissents and concurrences. This course provides deep insight

into the Federal Circuits opinions over the past two years and tells you what you need to know to

continue to be an effective practitioner. As Chief Judge Rader opines, by understatement, these

cases must leave practitioners in a quandary. Indeed! Clearly ex parte practice is not what it

once was.

15.0 Hours

I

Course Faculty

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

GALE 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 (2011-2013) 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 currentlaw, but also a perspective on how the

law has changed.

INCLUDING COMMENTARYon the America Invents Act


19/40


Perhaps indicative of the courts split on

claim construction, for example, is the opinion

in Retractable Technologies, Inc. v. Becton,

Dickinson & Co. (2011). The panel majority, led

by Judge Lourie, concluded that body in the

claims required a one-piece body, while the

dissent by Chief Judge Rader urged that the

claim language and claim differentiation clearly

required the conclusion that body was notlimited to a one-piece body. A divided court

declined to rehear this case en banc, yet the

split in the court still percolates.

The court also continually issues panel

opinions that do not necessarily overturn prior

panel opinions, but significantly limit the same.

An example is In re Katz Interactive Call

Processing Patent Litigation (2011), that limits

WMS Gaming, Inc. v. International Game

Technology(1999) andAristocrat Technologies

Australia Pty Ltd v. International Game

Technology(2008), in the area of means-plus-

function limitations. Is Katz a narrowexception, as characterized by a panel

majority in Ergo Licensing v. CareFusion (2012),

or has the court gone too far in following

WMS, as Judge Newman advocated in dissent?

One of the areas that harbors the most

unsettling and startling developments is the

courts linking of claim construction to the

written description requirement, an area that,

according to Chief Judge Rader, has become

opaque to the point of obscuring other areas

of this courts law. This linking has resulted in

a number of seemingly inconsistent panel

opinions, especially in instances where thepatent-in-suit has facially broad claims, but a

narrowly drafted specification. In Ariad

Pharmaceuticals, Inc. v. Eli Lilly Co., the court

en banc confirmed that there is a separate

written description requirement that applies

outside of the priority contextthat separate

and apart from whether the specification

enables the claims, the specification must

contain a written description of the

invention. Nevertheless, the court remains

splintered on this issue, and several judgesbelieve that the invalidation of a claim on the

basis that it is broader than the invention

described in the specification is inconsistent

with the Federal Circuits rule of claim

construction that embodiments from the

specification should not be imported as

limitations to the claims. Also, in Crown

Packaging Technology, Inc. v. Ball Metal

Beverage Container Corp. (2011), the court, in

an opinion by District Judge Whyte, N.D. Calif.,

sitting by designation, and over a dissent by

Circuit Judge Dyk, reversed a district courts

conclusion that the specification lacked

sufficient written description support given the

breadth of the claims, noting that original

claims, in some instances, may provide written

description support, despite statements to the

contrary inAriad. Nevertheless, Judge Moore,

writing for the court in Boston Scientific Corp.

v. Johnson & Johnson (2011), reiterated the

rule from Regents of the Univ. of Cal. v. Eli

Lilly & Co. (1997) that [a] written description

of an invention involving a chemical genus, like

a description of a chemical species, requires a

precise definition, such as by structure,

formula, [or] chemical name, of the claimed

subject matter sufficient to distinguish it from

other materials.

Another hot topic is joint infringement

The Federal Circuit issued its en bancdecisio

in Akamai Technologies, Inc. v. Limeligh

Networks, Inc. and McKesson Technologie

Inc. v. Epic Systems Corp., but avoide

answering the fundamental question. As

result, joint infringement may depend o

whether a claim may avoid a conclusion tha

multiple entities are required to infringe if thclaim simply defines the environment

which infringement must occur perAdvance

Software Design Corp. v. Fiserv, Inc. (2011).

The Federal Circuit continues to surprise th

bar in other areas as well with its statuto

interpretations. For example, in Augu

Technology Corp. v. Camtek, Ltd. (2011), th

court rejected a jury instruction based on th

AIPLAs model jury instructions, and conclude

that a device may be the subject of an offer fo

sale prior to Its being ready for patenting,

but also concluding that there is no actual off

for sale until after conception.

Also, practitioners writing applications fo

computer-aided inventions must thorough

understand the implications of cases such a

Ergo Licensing v. CareFusion (2012), holdin

claims calling for a programmable contr

means invalid for failure to disclose

corresponding algorithm although suc

devices are "off the shelf" devices. And Noa

Systems v. Intuit(2012) holding claims inval

because the disclosed algorithm did no

implement all claimed steps.

Litigation practitioners will be interested

In re Bill of Lading (2012), setting out th

... continued on next page.

legantly-appointed with a modern sensibility, the resort's guest

rooms seamlessly blend custom-designed furniture, luxurious

fabrics, modern-day conveniences, and generous living space.

E


20/40


pleading requirements for direct, contributory

and induced infringement.

But the pendulum swings. After the

Supreme Courts opinion in KSR International

Co. v. Teleflex, Inc. (2007), seemingly rejecting

at least a rigid showing of a motivation to

combine reference teachings, the validity of

many patents drawn to mechanical and manyelectrical inventions under 103 became

doubtful. However, the pendulum appears to

be swinging back Judge (now Chief Judge)

Raders dissent in Media Technologies

Licensing, LLC v. Upper Deck Co. (2010) that

[l]urking just beneath the surface of this

courts blindness to the underlying facts

supporting non-obviousness is a bias against

non-technical arts, seems to have sparked

(albeit not in that case) a renewed view of the

requirement for motivation. Nevertheless,

some panels of the Federal Circuit now permit

reliance on common sense to find patents

invalid under 103, and more egregiously,despite the lack of any reference supporting

the same. When this will end is anybodys

guess. But Chief Judge Raders opinion in

Unigene Laboratories, Inc. v. Apotex, Inc.

(2011), suggests that the court will increasingly

insist on some showing of motivation, thus

perhaps swinging the pendulum back pre-KSR.

This course examines the Federal Circuits post-

KSR cases in detail. Will the many areas of

inequitable conduct currently in doubt be

resolved by the Federal Circuits en bancview

in Therasense? And the courts adoption of a

but-for-plus standard of materiality?

Doubtful but maybe. For example, how doeswitness credibility impact on intent?

Compare Aventis Pharma v. Hospira (2012)

with 1st Media v. Electronic Arts (2012). And

what about the flood of cases held back

pending the Federal Circuits decision in

Therasense? The course will examine

Therasense in detail, with suggestions on

complaince with Rule 56(a). The AIA also

offers supplemental examination which may

cure alleged inequitable conduct. Claims of

legal malpractice are increasing at an alarming

rate. The Federal Circuit provided some solace

in Immunocept, LLC v. Fulbright & Jaworski LLP

(2007), holding that it has jurisdiction of legalmalpractice claims under certain

circumstances. But the Supreme Court granted

cert. in Gunn v. Minton (Tex. 2011), and

concluded that state courts, rather than federal

courts, have primary jurisdiction in malpractice

actions, even those that involve substantial

questions of patent law. Nevertheless, the

Federal Circuit continues to issue opinions that

affect the basic practice of patent law.

The Supreme Court has also been active in

developing the patent law, often rebuffing the

Federal Circuit for failing to adhere to Supreme

Court precedent. For example, in In re Bilski,

the Federal Circuit attempted to clarify the test

for determining whether a claim recites

patentable subject matter under 101 by

holding that its machine or transformation

test is the sole and exclusive inquiry. The

Supreme Court promptly rejected the FederalCircuits machine or transformation test as the

sole test for patentable subject matter, but

declined to articulate a clear test to replace the

Federal Circuits test thus leaving a vacuum for

the Federal Circuit to fill. The Supreme Court

also thoroughly rejected the Federal Circuit's

view of 101 in Mayo Collaborative Services

v. Prometheus Labs. (S.Ct. 2012), but the

Federal Circuit responded in Myriad (2012) in

a 106-page opinion continuing to advocate its

view of 101. These and other cases involving

101 will be examined in detail.

For example, a panel in CyberSource Corp. v.Retail Decisions, Inc. (2011), questioned the

validity of Beauregard-type claims, but as a

panel opinion could not overturn Beauregard.

Does that signal the demise of such claims? And

the court has taken CLS Bank v. Alice Corp.

(2012) en bancto again address the issue of

patent eligibility. 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 percent rule of thumb is a

fundamentally flawed tool for determining a

baseline royalty rate in a hypotheticalnegotiation. The 25% rule, used for more

than a decade, thus disappears. Indeed, in

LaserDynamics v. Quanta Computer(2012), the

Federal Circuit further narrowed the entire

market value rule almost to oblivion.

In yet other areas, the Federal Circuit has

further explained and thus limited prior even

en bancopinions, such as in Spectralytics, Inc.

v. Cordis Corp. (2011) further explaining and

limiting In re Seagate Technology, LLC, (2007)

(en banc).

Those are but highlights. Federal Circuit

opinions even over the brief span of two years

have created law that practitioners must know

especially in light of the changing composition

of the court. Additionally, although the focus is

on the Federal Circuit, recent Supreme Court

cases are addressed as well. For example, the

Supreme Court has granted cert. in Bowman v.

Monsanto (2012) raising issues of infringement

potentially having broad implications to the

biotech community. The Supreme Court may,

once again, rebuff the Federal Circuit's rationale.

Smoothing the Troubled Waters?

PRG formerly characterized this course a

Recognizing & Understanding Federal Circu

Russian Roulette. The continually stron

attendance at presentations of this Feder

Circuit course suggests that the patent b

recognizes this aphorism to ring true.

In many respects, this is a user-designe

dynamic course. Course evaluations a

collected and analyzed to determine the topi

and emphasis users desire. For the many th

have attended this course punctually every tw

years, the curriculum, in response to user inpu

retains the topics you have come to expect, b

has been expanded to include separat

chapters and lectures on Federal Circuit e

banccases and Supreme Court cases, selecte

important cases that do not conveniently f

within a single topic (crossover cases) as we

as noteworthy practice & procedure case

noteworthy appellate practice cases, joiinfringement, and selected Hatch-Waxma

cases, among others and now including th

AIA.

All of the above represents just some of th

continually breaking judicial news from th

Federal Circuit that will be covered at th

Federal Circuit Law course. As attested b

hundreds of past course attendees, the facul

presents just the right amount of factual an

legal detail for mastering each case discusse

Legal ethics and inequitable conduct will b

presented on the second day from 3:00 to 4:0

p.m., as currently estimated.

Course Materials

The full substance of the course is capture

in the Federal Circuit Patent Lawthree-volum

text, which extends over 1,500 pages.G


Thorough review of each topic and each CAF

decision. Good discussions among speakers an

attendees. Very knowledgeable speakers.

Fred Burkhart

Gardner, Linn, Burkhart & Flory, LLP


I've been attending this course, periodical

over a number of years, and it continues to g

better & better.

Steven Fontana

Fontana International



21/40


imple elegance and classic style define the

mood on the Hyatt Regency Huntington

Beach Resort and Spas outdoor patio, the

perfect place to relax.

S


22/40







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

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

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




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 wit

instructors and other students while explorin

case-study examples and lecture topics on

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 presentatio

covers every phase of a due diligenc

investigation. Beginning with the initi

involvement of patent counsel, the pan

navigates a course through early information

gathering, drawing in the attendees as part o

the due diligence team to spot critical paten

issues that can make or break a deal. The pan

also shares effective strategic approaches t

focus investigations and requests for furth

information during the plunge into the dat

Patent Due Diligencein the AIA Era

Course Description

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

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

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

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

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

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

contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions, or

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

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 will tayou 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.


23/40


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 technolog

Throughout the course, the faculty share

interesting war stories, observations, an

practical tips for conducting the investigation

a comprehensive and efficient manner.

In short, the knowledge youll gain from th

course will enable you to avoid due diligenc

pitfalls, while more effectively assessing anmanaging risks endemic in business transactio

involving complex IP rights and issues.G

yatt Regency Huntington Beach

Resort and Spa provides the perfect

escape from the demands of everyday life.H


24/40







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

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

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




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 the s

arbiters of patent validity. About 5-6 years a

reexamination suddenly emerged as a popu

means for challenging patents, either alone

alongside court battles. The reasons for t

shift were simple: Would you rather bring yo

validity attack before an experienced pate

examiner with technical expertise in the PTO

Central Reexamination Unit where claims a

given their broadest reasonable interpretati

and do not enjoy a presumption of validity, o

jury in the Eastern District of Texas? The answ

becomes all the more obvious when o

considers that a reexamination can cancel claim

eliminate liability for past infringement, crea

intervening rights to continue accus

infringement in the future, open up desig

around opportunities, create a more favora

prosecution history, defeat a charge of will

infringement, help avoid an injunction, bols

an inequitable conduct defense, and sometim

enable a stay of expensive litigation. All of t

can be achieved at a small fraction of the cost

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 also

Documents

PRG Magalog for Summer and Fall 2013 Advanced Courses Programs