PRG Spring 2012 Advanced Courses Magalog

ADVANCED PATENT LAW COURSES FOR ESTABLISHED PATENT PRACTITIONERS

PATENT RESOURCES GROUP®

Register now at www.patentresources.com

ONLY$249

PER NIGHT!

Choose from 14 great advanced patentlaw courses. See page 3

New one-day course focused solely onthe implications for your practice of theAmerica Invents Act! See page 4

All returning courses updated to reflect theimpact of the America Invents Act!

Beautiful venue with many on-site activities.See page 32

Great room rate! See page 32

THE ALMA MATER OF 40,000 PATENT ATTORNEYS AND AGENTS.

The America Invents Actis turning the patentworld upside down.PRG is prepared. Are you?

PRG’s Spring HotelHyatt Regency Coconut Point Resort & SpaBonita Springs, FL • March 25-31, 2012

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2 www.patentresources.com

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced CoursesPrograms. If you were a paid attendee at any PRG course in 2011, you are automatically a loyaltymember and will be entitled to special pricing when you attend any courses at our 2012 Advanced

Courses Programs! And after being a paid attendee at any PRG course in 2012, you’ll automatically be eligiblefor Loyalty Program benefits in 2013.

About PRG’s Loyalty Program

PRG’s Spring 2012 Program

P

—Getting You Ready for the AIA

:

For over 40 years, Patent Resources Group has been the nation’s leading educator of patentprofessionals, providing attorneys, agents, engineers, and scientists from around the world withcomprehensive courses and publications that set the industry standard for patent education.

WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN FLORIDA IN MARCH? BECAUSE PRG’S :

• Will prepare you for the America Invents Act – all of our returning courses have been updated asneeded to reflect the impacts on you and your practice of the America Invents Act (AIA) of 2011, the mostsignificant development in the patent world in a generation. We're also offering a special one-day coursefocusing solely on the AIA, at a special discounted price, that every practitioner needs to take. We’ll help youavoid the dangers that the AIA poses to practitioners in all areas of patent law.

• Provide an amazing value – our tuition rates have remained unchanged since 2005 – that’s seven yearswith no price increases! And if you come to our programs every year, you’re actually paying less for ourAdvanced Courses due to our Loyalty Program (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 you get back to the office.

• Are an investment in your practice or your company,increasing both your ability to successfully prosecute patentlaw and the value you bring to your employer.

• Provide an unparalleled opportunity fornetworking and exchanging ideas with our facultyand your fellow attendees.

The bottom line – for you and yourorganization – is that in today’s challengingenvironment, you can’t afford not to invest inyour future. And attending PRG’s Spring 2012Advanced Courses program is the safest investment youcan make. Register soon — spaces will fill quickly!

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www.patentresources.com 3

Hyatt Regency Coconut Point Resort & SpaBONITA SPRINGS, FLORIDA • MARCH 25-31, 2012

Please see page 35 for informationabout the rest of our 2012 program calendar

• 14 courses are available forthe Spring 2012 AdvancedCourses Program.

• Tuition for each three-daycourse is $2,195.

• Combined tuition for thePatent Searching Courseand Workshop is $2,590.

• Tuition for the one-daycourse is $995. (but get aspecial rate of only $495if you also take any three-day course!)

Three-Day Courses: March 25-27 (Sun-Tues)

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

Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8Faculty: Tom Irving, Paul Browning, Erik Puknys, Mark Sweet, and Jill MacAlpine

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

Due Diligence Investigations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman

Federal Circuit Law (2010-2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20Faculty: Gale Peterson, Jon Hokanson, Jason Fowler, and Sharon Israel

Patent Damages . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23Faculty: Michael Elmer, William Cochran, and Christopher Benson

Pharma & Biotech Strategies for Patent Prosecution, Hatch-Waxman & Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26Faculty: Janis Fraser, Mark Ellinger, Jonathan Singer, and Terry Mahn

One-Day Course: March 28, 2012 (Wed)

America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions GNEW COURSE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4Faculty: Paul Gardner and John Tsavaris

Three-Day Courses: March 29-31, 2012 (Thurs-Sat)

Crafting and Drafting Winning Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12Faculty: Dale Lazar, William Jividen, and John Tsavaris

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

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

Patent Infringement Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24Faculty: Cole Fauver, Becky Thorson, and David Swenson

Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28Faculty: Kevin Laurence and Matthew Phillips

Procuring and Enforcing Business Methodand Other Software-Based Patents After Bilski and BMC . . . . . . . . . . . . . . . . . . . . . . . 30Faculty: Stuart Hemphill, Aldo Noto, and Devan Padmanabhan

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

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The course will analyze the statutorychanges, consequences and unresolved issues,including the following, most significantsubjects:

1. The “first inventor to file” system, whichtakes effect on March 16, 2013, and replaces the“first to invent” system of the current law. Thecourse lecture and materials consider in detailthe provisions of completely rewritten Section102 of Tiltle 35 U.S.C., which expands – bothgeographically and temporally – the universe ofprior art that may render claims unpatentable

for lack of novelty or for obviousness underSection 103, and the applications and patentsto which the new law applies.

2. The new “Post Grant Review”proceeding (so-called by the applicable newstatute, Chapter 31, Sections 321-329) beforethe newly named Patent Trial and AppealBoard, (formerly the Board of Patent Appealsand Interferences). This course considers indepth the requirements, limitations, potentialrisks and consequences of such a review, whichmay be initiated by any third party on or after

America Invents Act: MonumentalChanges, the Consequences andthe Unanswered Questions

Course Description

s all of us in the patent profession know, the time has come for us to become intimatelyfamiliar with the extensive, complicated, unprecedented changes and additions to Title 35,some of which have already become effective, others of which will become effective on

September 16, 2012, and the remainder of which will become effective on March 16, 2013. Notonly do patent lawyers and agents have to master the new law, we must — during a transition periodthat will last for many years to come — remain acutely aware of the “old” law and be able todetermine whether the old or new law applies under any given set of circumstances.

The content of this course and its accompanying materials (including a black line edition of Title 35showing the removed language of the statute stricken-through and the added language underlined,and with a reprint of the House Judiciary Committee Report 112-98 summarizing the purposes,background and perceived reasons that stimulated the changes) were created in an effort to assistpatent professionals in acquiring a more or less profound understanding of the new law, itsconsequences, and the important unanswered issues raised by the changes, many of which will notbe definitively resolved until the Federal Circuit interprets the law many years from now.

A

Course FacultyPaul Gardner, PRG’s academic director, has over 45 years of experience in examining and prosecutingpatent applications, litigating patents, and teaching patent law and Patent Office practice to thousands ofattendees for PRG and the UCLA, University of Washington, and Seattle University law schools. JohnTsavaris has been with Kenyon & Kenyon for 25 years, where he currently holds the titles of Director ofProfessional Development and Special Counsel. Dr. Tsavaris is an Adjunct Professor of Law at FordhamUniversity School of Law and is on the Advisory Committee of the Fordham Intellectual Property LawJournal. He is also an Adjunct Professor of Law in the Graduate Intellectual Property Program at BenjaminN. Cardozo School of Law.

Why Should You Take This Course?

The America Invents Act (AIA),which was signed into law onSeptember 16, 2011, is the mostsignificant development in the patentworld in a generation. If you don’thave a thorough understanding ofhow this legislation will affect yourpractice, then the risks to you, yourfirm or company, and your clients aregreat. This course will provide theunderstanding that you need topractice effectively under the new law,while also highlighting areas whereunanswered questions remain.

Projected State Bar CLE Credit:

Bonita SpringsMarch 28, 2012 (Wed)

Hyatt Regency Coconut Point Resort & Spa

8:15 a.m. – 11:30 a.m. and 1:30 p.m. – 4:45 p.m.

Registration deadline: March 2, 2012Register early! Spaces will fill quickly.

6.0 Hours

PAUL GARDNER

PATENT RESOURCES GROUP

ALEXANDRIA, VA

JOHN TSAVARIS

KENYON & KENYON

NEW YORK, NY

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September 16, 2012, who desires to challengethe validity of any claims in a patent issued orreissued during the nine month period precedinginitiation of the review, on the ground(s) offailure of the claims(s) to comply with therequirements of one or more of Sections 101,102, 103 or 112 (with the exception of a bestmode violation, discussed below).

3. A new “Inter Partes Review”proceeding before the Board under new andrevised Sections 311-319, effective September16, 2012, which will replace old inter partesreexamination. The new proceeding willpermit a third party to seek cancellation ofclaims in any patent (no matter when filed orissued) for lack of novelty under Section 102or obviousness under Section 103, but basedonly on prior patents or printed publications.

4. A revised inter partes reexaminationproceeding, which became effective onSeptember 16, 2011 (and will expire onSeptember 16, 2012 in favor of “Inter PartesReview” of paragraph 3 above), revised byimposing a more stringent requirement forgranting a request for reexamination. The newrequirement is that the information presentedin an inter partes reexamination request mustprovide a showing that there is “a reasonablelikelihood that the requester will prevail” (notmerely the prior “substantial new question ofpatentability” showing under the previouslegal standard).

5. A new derivation proceeding undernew Section 291 of the statute, a proceedingbefore the Board whereby a patent applicantmay establish that the inventive entity namedin an earlier-filed application published withina year prior to initiation of the proceeding wasderived by the earlier filer from the inventiveentity initiating the derivation proceeding.

6. Revised Section 301 of the statutewhich permits any person to submit not only“prior art consisting of patents or printed

publications” believed to have a bearing on thepatentability of a particular patent’s claims, alimitation of the previous version of the statute,but also statements of the patent owner filedin a federal court or Office proceeding whereinthe patent owner expressed a position on thescope of any claim of the particular patent, andalso related documentation (e.g., courtpleadings and/or evidence). Such writtenstatement(s) and related documentation maybe considered by the Office in any proceedingreviewing the patent, but only with respect tointerpretation of the claim(s) involved.

7. New Section 257, which permits theowner of a patent to request “supplementalexamination” of the patent by the Office toconsider, reconsider, or correct informationbelieved by the applicant to be relevant.Applying the “substantial new question ofpatentability” standard, the Office will decidewhether to order reexamination based on theinformation submitted in support of the patentowner’s request. If reexamination is ordered,the Office will consider all of the informationsubmitted, not just the patents, printedpublications and newly-added “writtenstatements” to which ex parte reexaminationrequests are otherwise limited under Chapter30 of the statute, Sections 301-307.

8. A “Transitional [8 years, beginningSeptember 16, 2012] Program for CoveredBusiness Method Patents,” a post grant reviewproceeding before the Board (mentioned inparagraph 2 above), for challenging the validityof any “covered” business method patent forwhich the petitioner initiating the proceeding(or his/her privy) had been charged withinfringement. (“Covered” patents are thoseclaiming “a method or correspondingapparatus for performing dataprocessing...operations used in the practice...ofa financial product or service” other than in‘technological inventions.’” Sec. 18(d)(1) ofPublic Law 112-29.)

9. New “best mode” law, curiouslyretaining the best mode disclosure requirementin Section 112, Paragraph 1, but eliminating itsviolation as the basis for an invalidity orunenforceability (inequitable conduct) defense.Newly rewritten Section 282(a)(3)(A) of Title 35.

10. “Prioritized Examination,” a procedurefor obtaining expedited examination ofapplications, subject to applicant’s compliancewith certain stringent prerequisites andpayment of significant fees, aimed at finaldisposition of the application with 12 monthsof the Office’s granting of “prioritized” status.

11. Prior user rights pursuant to rewrittenSection 273, under which a good faith,commercial use of a claimed invention morethan one year before the effective filing dateof a claimed invention (or the date the claimedinvention was first disclosed under a limitedone-year grace period provided in Section102(b)) is a defense to infringement.

12. Certain other changes in the AIA ofless substantive concern and/or less frequentlyencountered, will also be considered, albeit toa lesser extent, such as

• Added inventor’s oath or declarationprovisions under rewritten Section 115 ofTitle 35,

• Unpatentability of tax strategies,

• Patent Office fees, including new “microentity” fees,

• Preclusion from evidence of failure of anaccused infringer to obtain advice ofcounsel,

• Defense to infringement based on priorcommercial use, and

• Elimination of qui tam actions for “falsemarking.” G

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Bonita SpringsMarch 25-27, 2012 (Sun-Tues)


8:15 a.m. - 11:30 a.m. and1:30 pm. - 4:45 p.m. (Sun-Mon)

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

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


Comments from previous attendees:

• “Well structured course. Good pace. Very usefultips and information. High relevance to myspecific 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 andwritten by twelve practitioners: eightexperienced patent information specialists andfour former examiners with expertise in bothEnglish and foreign language searching. The

curriculum reflects the combined expertise ofLandon IP, which is one of only two companiesselected by the USPTO to conduct patentsearches on its behalf with a view to reducingUSPTO examiners' towering examinationbacklog.

Upon completion of the course, theattendee will have learned:

• How to approach a search in a systematic,methodical and exhaustive way.

• How to properly scope the search beforeeven 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 sourcesof 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 solidfoundation for those who seek to conduct searches accurately and efficiently. The course teacheswhen, how, where and why to conduct a search and is appropriate for those who will conduct thesearch or commission it.

Designed for patent attorneys and agents, inventors, paralegals and research managers, the courseand 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 toa particular search engine, a database product or a patent information service. Instead, the instructorsteach skills that are applicable across databases, both proprietary and public, and without bias towardthe features of a particular search engine. Unique among its many features, the course provides acomparison of the major patent search engines and teaches the strengths, weaknesses and benefitsof the database providers who provide them.

15.0 Hours

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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 presentsa systematic process for performingprior art searches with greater efficiencyand precision. It is designed to benefita broad audience, including novicesearchers, seasoned patentpractitioners, and search professionals.The course also provides unbiased,detailed information concerning thelatest databases and tools of the trade.Expert tips from search professionals areprovided to enable high-level patentresearch through proper scoping,structuring, and performance of thesearch. Patent practitioners willrecognize that a robust understandingof the prior art is a vital part of thepatent process, particularly in view ofaccelerated examination demands andthe America Invents Act.

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• How to carefully search by classification, textquery progression, and citations, knowingthe benefits and pitfalls of each.

• Both the major differences and subtlenuances in conducting a patentability,validity or infringement patent search.

• Issues unique to searching within specifictechnical disciplines.

• Approaches to searching non-English-language patents and published applications.

• Approaches to searching non-patentliterature.

• Approaches to reporting search results.

• Differences between the major patentsearch engines and important considerationsin selecting an appropriate search tool.

• Ways to get high-level information frompatent search results.

• The basics of several peripheral topicsincluding the use of the USPTO searchtemplates, searching for acceleratedexamination, and searching using industrystandards.

Course materials

The text for the course is Art & Science ofPatent Searching – Patentability, Validity &Infringement, edited by Matthew Rodgers,Long Nguyen and David Hunt. Thethoroughness of the text will minimize theneed for note-taking at the program.

Optional PatentSearching WorkshopA patent search engine user account is

needed for the Workshop. Please contact PRGif you need assistance in obtaining one.

This Workshop is an optional add-on to theArt and Science of Patent Searching course. Itgives attendees the opportunity to practicehands-on patent searching alongside thecourse instructors. The faculty will work withthe attendees to answer questions and provideguidance as they execute their searches in realtime. The Workshop is structured to test eachattendee’s retention of the concepts covered inthe course as they put their training to use inseveral sample search projects. Attendees willbe provided with multiple sample disclosures,encompassing a wide variety of technologies,on which they will base their search. Theinformal, lecture-free setting will allow eachattendee to work independently, but in closeproximity to an instructor. Attendees mustbring their own laptop computers and will beprovided with wireless Internet access in theclassroom. Attendees are also asked to bring

their own search engine user accounts so thatthey will be able to practice using familiarsearch tools. The instructors will be able toprovide assistance with any of the major patentsearch engines. The attendees will be guidedthrough scoping the search, performing thesearch and analyzing their results. Answer keyswill be provided at the end of the Workshopso that participants may gauge their progressand have a reference to use for additionalpractice following the class.

Requirements and Prerequisites:

• Completion of the immediately preceding2012 Art and Science of Patent Searchingcourse

• Important: Wireless-enabled laptopcomputer (Internet Explorer or Firefox webbrowser, and Microsoft Office packagerecommended)

• Important: Patent search engine useraccount (in an attempt to focus on courseconcepts and high-level searchingtechniques, publicly available search enginescannot be solely relied upon for the labportion of this course)

• Important: Unrestricted use of third-partywireless connection (please verify with yourIT department that your security settings willallow access to the wireless hub necessaryfor the course). G

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(Including 2.0 Hours Legal Ethics)

Bonita SpringsMarch 25-27, 2012 (Sun-Tues)


8:15 a.m. – 11:30 a.m. and 1:30 p.m. – 4:15 p.m. (Sun-Tues)


For example, the rising tension within theFederal Circuit panels on post-Phillips claimconstruction and the increasing pressure torevisit the Cybor rule of de novo review of claimconstruction on appeal will bring importantdevelopments for practitioners in the very nearfuture on what to expect for claimconstruction. For the practitioner, the take-home message remains to prosecute as if your

life depended on literal infringement and laythe groundwork in the specification (the“single best guide” to the meaning of a claimterm) for a broad claim construction. Thiscourse, presented by an experienced faculty,each with a significant depth of experience,suggests many practical approaches with thoseobjectives in mind.

We discuss how to establish patentability

Chemical Patent Practice

Course Description

his up-to-the-minute course teaches the chemical patent practitioner how to usefundamentally sound principles to prepare and prosecute a United States chemical patentapplication in a conservative way to enhance such possibilities as:

• obtaining broad claim construction for literal infringement purposes, particularly byavoiding "vile" language (i.e., lightning rods for noninfringement and §112, para. 2invalidity) that is best described as patent profanity;

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

• surviving Festo;

• avoiding a best mode rejection from the examiner;

• destroying, not rebutting, a defective prima facie case of obviousness in our current post-KSR world, including illustrations from several real U.S. patents prosecuted by a facultymember;

• 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 bycustomers;

• 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 theFederal Circuit's en banc decision in Therasense and subsequent cases; and

• understanding the implications of the various provisions and effective dates of the AmericaInvents Act (AIA), particularly as they relate to filing strategies in and around the rapidly-approaching March 16, 2013 date when the first inventor to file provisions take effect.

16.5 Hours

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FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC & PALO ALTO, CA

TOM IRVING PAUL BROWNING ERIK PUKNYS MARK SWEET JILL MACALPINE

Course FacultyThe faculty has over 100 years of collective experience across the complete spectrum of chemical practice.


Are you well-versed on howchemical claims are constructed andconstrued? Well enough to avoid anoverly narrow, often disastrous claimconstruction leading to a royalty-freetransfer of patented technology toyour competitor? Well enough not totrip up on obviousness over KSR? Ifyou’d like to answer these questionswith a resounding “yes” then youshould attend our highly-acclaimed,comprehensive Chemical PatentPractice course. Don’t fail your clientsor yourself in these tough economictimes – 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, willprovide a framework for creative thinking onthe law of prima facie obviousness.

We will look closely at the guidelines for“best mode” disclosure from a substantive andethical point of view, particularly in view ofchanges made in the AIA. In addition, weconsider the Federal Circuit inequitable conductdecisions in the context of the en bancTherasense decision, many of which will bereviewed for the lessons they provide to bothin-house and private practice lawyers. In fact,the inequitable conduct and best modediscussions provide the two hours of ethics thatis otherwise sometimes hard to find, particularlyon substantive topics related to your practice.The ethics discussion should be from 8:30 to10:30 a.m. on the second day (as currentlyestimated). The last day will include a discussionof a hypothetical chemical patent problem thatsynthesizes and reinforces the teachings of theclass.

The enactment of the AIA does not wipe thepatent law slate clean. Because of the way thevarious effective date provisions activate andapply, the “old” law will be relevant topractitioners until at least March 16, 2034!That’s right — practitioners will have to beexperts in both old and new laws for at least

another 22 years! The Chemical PatentPractice faculty has lectured on the new lawextensively and has studied it intensively inconjunction with people who wereinstrumental in the drafting of the legislation.The faculty will bring all of that background totheir presentations to you.

And do not be misled into thinking that thiscourse is applicable only to patent prosecutors.The principles taught will greatly help thoseinvolved with prelitigations, litigations, OrangeBook listings, due diligences and analysis ofthird-party patents for validity, infringement,and enforceability issues.


• “This is one of the best courses that I have evertaken. All of the instructors are excellent andprovide very helpful practical tips regardingchemical patent practice. The material providedis excellent and a very good reference guide.”

— Mark Cohen Scully, Scott, Murphy & Presser PC October 2009 attendee

• “Good overview and reminders of good practicepoints. Great consolidation of information andtips 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 theFinnegan, Henderson, Farabow, Garrett &Dunner faculty, with the invaluable assistanceof editor Stacy D. Lewis, will be provided toattendees at the course. This treatise coversvirtually every situation that can arise in thepreparation and prosecution of a chemicalpatent application. It will remain on your deskand in continual use long after the course.

The treatise underwent a complete overhaulin the aftermath of the enactment of the AIAto provide completely updated materials to thecourse attendees. Although the treatise is ofgreat value, the faculty members have foundthat the best vehicle for teaching is the use ofslides, which will be provided in book form toattendees on the first day of class. The slidesbook will contain ample room for note-takingand cross-referencing and, as such, will be avaluable addition to your daily kit of chemicalpatent practice tools. In fact, you can bring itif you want, but you won’t need the coursebook during the lectures. G

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Bonita Springs, FLMarch 25-27, 2012 (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)


The PCT allows applicants to secure a filingdate in all PCT Contracting States by filing asingle application in their home country and intheir home language. The PCT provides acomprehensive search of the prior art and apreliminary, nonbinding written opinion on thenovelty, inventive step (non-obviousness) andindustrial applicability (utility) of the claimedinvention. In addition, applicant has anadditional 18 months beyond the end of theParis Convention priority year to make finaldecisions on where to seek patent protection.The delay in the associated expenses ofnational filings alone make the PCT a cost-effective procedure and can result in asignificant cost saving by helping to avoidunnecessary filings and/or allowing filings incountries where commercial importance hasgrown between international filing andnational phase entry.

By filing an international application, all PCTContracting States and four regional offices areautomatically designated and are available for

national phase entry later in the process.Whether the international application is thefirst filing or it claims priority to an earlier filing,the applicant does not have to make the finaldecision on where to seek patent protectionuntil 30 months from the earliest priority date.The final decisions are based on theinformation obtained in the internationalsearch report and the international preliminaryreport on patentability as well as informationobtained by the applicant regarding thescientific status and commercial value of theinvention. In short, through using the PCT, theapplicant will have a much better idea of thelikelihood of obtaining commerciallymeaningful patent protection for the claimedinvention. In addition, the applicant will havethe opportunity to obtain additional searchresults through the supplementary searchoption as well as have the opportunity toadvance prosecution by using the optionalinternational preliminary examinationprocedure. Applicant can amend theapplication and/or provide arguments for

Comprehensive PCT Practice:How to Master Its Challenges

Course Description

ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itselfas a valuable way for applicants to obtain patent protection in many countries aroundthe world. The number of PCT Contracting States is currently 144 and growing. PCT

members include the vast majority of industrialized, developing and emerging countries of theworld. The Comprehensive PCT course guides the attendees chronologically through theinternational phase of the PCT and into the national phase before the national and regionalpatent Offices of interest. The instructors present strategies for effective use of the PCT, thebenefits obtained and options available when using the PCT. In addition, the course covers thenumerous safeguards available for applicants, including the restoration of priority rights andincorporation by reference.

15.0 Hours

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Course Faculty • The two faculty members have extensive government and corporate experience in allaspects of PCT matters.

CONSULTANT ON PCT MATTERS FOR THE WORLD

INTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR

OF THE 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 andadvantages of the Patent CooperationTreaty (PCT) procedure as well as thenumerous options and safeguardsavailable for applications filed underthe PCT. The Comprehensive PCTcourse enumerates procedures andstrategies designed to obtain patentprotection for inventions in multiplecountries through the filing of a singleinternational application under thePatent Cooperation Treaty. While abasic working knowledge of the PCT isuseful when taking this course, it willprove valuable to both new andexperienced users of the PCT.

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consideration by the examiner prior to theissuance of the international preliminary reporton patentability (Chapter II of the PCT).Depending on the International Search andPreliminary Examining Authorities selected bythe applicant, certain national and regionalpatent Offices (including the US) allow afavorable PCT work product (for example,international preliminary report onpatentability) to be applicant’s “ticket” toaccelerated examination on their patentprosecution highway.

This Comprehensive PCT course discusses: a)when the use of the PCT is advantageous andwhen it is not; b) the effects on patent termbased on the first (priority) application; c)selection of international authorities under thePCT for greatest advantage; d) the informationreceived by applicants during the PCT process;

e) entering the national phase; and f)upcoming changes in the PCT, and a host ofother PCT-related topics. In addition, thecourse presents the growing informationavailable from the WIPO Internet site via thePATENTSCOPE® search tool. TheComprehensive PCT course includes a detailedlook at patent-related provisions of the ParisConvention.

Comments from attendees of past PCT courses:

• “Excellent instructors - thorough coverage ofsubject.”

• “The course materials are excellent. The lecturershave much experience in PCT-related activities andhave the ability to explain that to a class.”

• “Outstanding speakers with practical experience.”

Course MaterialsA comprehensive text is used in the course

presentation that includes detailed explanationsof the various topics and sample forms. G

he dedicated staff at the Stillwater Spa will escort you intoprivate, luxurious salons where the skilled hands of a licensed

specialist and the amazing scent of essential oils await you.T

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(Including 1.0 Hour Legal Ethics)

Bonita Springs, FLMarch 29-31, 2012 (Thurs-Sat)


8:15 a.m. – 11:30 a.m. and 1:30 p.m. – 4:45 p.m. (Thurs-Fri)

8:15 a.m. – 11:30 a.m. (Sat)



• “Practical advice for drafting enforceable patentclaims, sprinkled with supporting legalauthority.”

• “Spanning the gap between current Federal Circuitlaw and actual, practical tips on how to incorporatethe latest law into successful prosecution practices.”

• “Good coverage of current law and potentialpitfalls associated with certain practices (I'mplanning to make changes to my practice withregard to various pitfalls you have pointed out).”

Answer to the Conundrum.

There is a sound basis for dealing with thedilemma generated by the Federal Circuit! Apractical ex parte practice path is now in beingthat navigates through the chaos. Its road signreads “LP-CD (Low Profile, CommonDenominator Practice)”. LP-CD, despite thechaos it penetrates and traverses, is chartedclearly and boldly in this PRG course. Crafting& Drafting Winning Patents was designed andcreated by PRG’s Professors Paul Gardner andIrving Kayton and enriched by the PRG coursefaculty.

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 literally infringed and not invalid under§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 fromthe 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 SurgicalCorp., where the court imported the limitation “pleated” into a broad claim reciting a surgical meshplug used for hernia repair, relying heavily in doing so on the “Summary of the Invention” thatdescribed a plug having pleats. The court repeatedly referenced the Summary of the Inventionthroughout 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 ofclaim differentiation that should have sustained the broad claims.

Claim interpretation is only one chaos region. There are others where the Federal Circuit case law isequally 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 prosecutepatent applications that will provide their clients with the patent protection they deserve. Which casesshould be relied on, and which should be ignored?

15.0 Hours

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Course FacultyCollectively, over 70 years of experience litigating, prosecuting and teaching about patents.

DLA PIPER US LLPRESTON, VA

KENYON & KENYON

NEW YORK, NY

JOHN TSAVARISDALE LAZAR


Learn the areas of chaos in FederalCircuit jurisprudence of primaryconcern to practitioners who prepareand prosecute patents. The course willfocus on a series of cases where thepatent owner lost, not because ofwhat the litigators did, but because ofhow the patent practitioner draftedand prosecuted the application.Compounding the problem is the timepressure created by moving to a first-inventor-to-file system under therecently enacted America Invents Act(AIA) and the anticipated increase inthe filings of provisional applications —with their many traps for the unwary.The course will teach you how to writeprovisional applications and draft andprosecute nonprovisional patentapplications to avoid these pitfalls.

DINSMORE & SHOHL LLP,DAYTON, OH

WILLIAM JIVIDEN

◆


This course distills everything from the law(and dicta) of the Federal Circuit and itspredecessor courts that has a material bearingnow, today, and in the foreseeable future, onhow we must successfully:

1. Prepare for drafting the application;

2. Design what must be included in, andexcluded from, the provisional applicationand the nonprovisional applicationspecification and drawings and, veryimportantly, in what form and format itshould be included;

3. Engage in claim drafting strategy designedto result in literal infringement, recognizingthat this strategy must be taken intoaccount as a principal factor in the earlierdesign of the specification;

4. Develop a protocol and a philosophy forprosecuting the application that advanceand do not defeat the efforts in (1) through(3); and

5. Balance the accomplishments of (1)through (4) against, first, increased costs ofcrafting and drafting that sometimesaccrue and, second, their effect on the

length of the patent term that will result,and third, the time pressure created bymoving to a first-inventor-to-file systemunder the AIA.

Crafting & Drafting will almost certainlyeffect a change in your patent law life, becausethe Federal Circuit has effectively (albeitunwittingly) dictated that it be so.

It is noteworthy that many hundreds ofpatents have already issued using the Crafting& Drafting techniques set forth in this course(several of which will be reviewed), withbeneficial effect in license and litigationnegotiations.

Legal ethics issues — including the recentTherasense decision and its profound changesto the law of inequitable conduct and duty ofdisclosure — will be covered from 9:15-10:15a.m. on the last day of the course, as currentlyestimated.

Who Should Take This Course?

This course is for patent practitioners with aminimum of two years of practice, andpreferably more. It is sufficiently sophisticatedfor even the most experienced. The facultyknows this to be true because the problemsand solutions about which they conferred anddebated in bringing this course to fruitionplumbed the depths of their combined patentlaw knowledge, experience and ongoingresearch and scholarship.

Beginning patent practitioners should lookforward to our four-day workshop designedspecifically for them, The Winning PatentsWorkshop. For details visit our website atwww.patentresources.com.

Course Materials

A comprehensive, one-volume course text,entitled Crafting & Drafting Winning Patents,and a bound set of lecture slides, are definitiveon the subject and will be given to registrantsat the course. The Textbook and slides areconstantly updated and revised to includerecent decisions and changes in the law —including the applicable provisions of the AIA.G

njoy breathtaking views of the Resort’s natural

beauty from your casually elegant guest room,

the perfect place to relax or catch up on business.

E


The Designing Around course distillsthe patent infringement analysis intocomprehensive yet concise step-by-step checklists that can be used byattorneys at all experience levels toassist their clients to developcompetitive, noninfringing products.

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8:15 a.m. – 11:30 a.m. (Sat)



• “Practical explanation of case law to apply topatent drafting, infringement analysis andopinion writing.”

• “The substance was excellent. Presentationsgave good overviews and the course books giveencyclopedic detail for topics of interest.”

• ”Well organized, very thorough, presenters allknow their stuff.”

Four cookbooks covering (1) literal infringement, (2)infringement under the doctrine of equivalents, (3)infringement of means plus function claimelements, and (4) prosecution history estoppel, areprovided. Using and following these cookbooks,which distill opinions by the Federal Circuit and theSupreme Court in cases from Pennwalt to Festo IX,any patent practitioner can counsel his or her clienton how to “design around” the patented inventionwith almost certain impunity – a design thatappropriates the patented invention and that, priorto Pennwalt and its progeny, would have been heldan infringement rather than the socially desirableactivity of “designing around.”

This course will show practitionersrepresenting potential infringers how tocounsel competitive product design under theguidance of Federal Circuit and Supreme Courtcases, which will almost always be viewed aseffective “designing around.” How to conductlitigation to achieve a happy ending for yourinfringement-accused client will be set forth inelegant simplicity.

Actual Demonstrations

To ensure no confusion on anyone’s part inthis exercise, the faculty and students will gothrough several claim construction exercisesand compare their conclusions with the FederalCircuit’s claim construction in actual cases. Amock design around exercise will also bepresented. The demonstration considers client,marketing and engineering perspectives, inaddition to legal analysis. To prepare for theexercises and demonstration, the course facultywill illustrate the accused structures relative tothe claims in the landmark, no-infringement-by-claim construction cases of C.R. Bard v. U.S.

“Designing Around”Valid U.S. Patents

Course Description

n Markman and Cybor, the Federal Circuit required district courts to construe claims as amatter of law and decided to review claim construction de novo. The object was to makeclaim construction predictable, so that claims would better perform their public notice

function. The result has been an unmitigated disaster, often (but not always) reading limitationsinto 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 noticefunction of claims ab initio. This course will explore the current condition of claim construction indetail and explain how competitors can use it to their advantage, even when the claims on theirface are literally infringed.

15.0 Hours

I

Course Faculty • PRG has offered “Designing Around” Valid U.S. Patents for over 15 years, and it remainsone of our most popular courses.

PATRICK BURNS

GREER, BURNS

& CRAIN, LTD. CHICAGO, ILLINOIS

JOHN PINKERTON

ROSE WALKER

DALLAS, TEXAS

PATRICIA PRIOR

GREER BURNS & CRAIN LTD.CHICAGO, IL

ROBERT TURNER

JONES DAY

DALLAS, TEXAS

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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 othercases are presented in literal, graphic clarity.

How to Draft Infringementand Noninfringement Opinions

The substance presented in the courseteaches what is important in opinions. But thefaculty also explains the form and format suchopinions should take to have the best posturein litigation for both the plaintiff anddefendant. The legal ethical considerationsinvolved in infringement opinions relative towillful infringement considerations arepresented on the second day from 2:00 to 4:00p.m., as currently estimated.

Course MaterialsThe two-volume text for “Designing

Around” Valid U.S. Patents is authored by thedistinguished course faculty, each of whom hasextensive successful litigation, prosecution andcounseling experience. Nothing like theseunique books exists anywhere else. G

he attentive staff at the Stillwater Spa are ready to provideyou with a variety of rejuvenating services, including massage

therapy, facial skin care, water therapy, and spa body treatments.T

◆







8:15 a.m. – 11:30 a.m. (Sat)



• “I have been drafting license agreements for theFederal government for 6 years, and this coursehelped tie together everything I've learned inthis time.”

— Suzanne Seavello Shope Centers for Disease Control & Prevention April 2010 attendee

• “The information is very practical and relevantto the 'real world' problems encountered indrafting and reviewing agreements.”

— Glenn Smith Bausch & Lomb October 2008 attendee

This is a course for the craftsman. Both thecourse and the text provide a solid basis forresponding to virtually every license draftingproblem that may arise. Even for the highlyexperienced licensing lawyer, new insights maybe provided; at the very least, the course willbe a rich, comprehensive refresher. For the lessexperienced licensing lawyer, it will open vistas,both with respect to hidden problems and tomechanisms for dealing with them.

Legal ethics in license negotiations andmisuse issues will be presented from 9:00 to10:30 a.m. on the second day, as currentlyestimated.

Drafting PatentLicense Agreements

Course Description

his course and its text provide concrete drafting and negotiating advice with precise referencesto existing law.

The course lays the groundwork for a clause-by-clause examination of all significant elementsof the patent licensing agreement. The practical questions always focused on are how and whethereach 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 executionand authentication provisions, are examined in detail. Practical, hypothetical illustrative examples areused, often in workshop form, with carefully crafted problem handouts distributed to the attendeesduring the course.

Throughout the course, the faculty members emphasize achieving legally satisfactory drafting resultsby recognizing the logical principles that underlie the job to be done. Sample forms are used toexplain the practical considerations upon which they are based. Law and precedent are presented interms that make clear the legal reasoning behind recommended drafting approaches.

15.0 Hours

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

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

D. BRIAN KACEDONRONALD BLEEKERD. PATRICK O'REILLEY WILLIAM PRATT


Licensing is a key strategy by whichcompanies realize significant valuefrom their patents and technology. Theability to draft, negotiate and interpretlicense agreements is a core skill for IPattorneys and other professionals whodeal with licenses. This course providesa comprehensive overview of keylicensing concepts, the drafting of keyclauses in a license agreement, and theimpact of related topics such ascompetition law, export control lawand the Bayh-Dole Act. It is taught byexperienced license professionals withan emphasis on practical considerationsand provides valuable insights anddiscussion for both novices and moreadvanced practitioners.

◆


Course Materials

The text for the course is the Sixth Edition ofthe classic, Drafting Patent License Agreements(BNA), by Brian G. Brunsvold, D. PatrickO’Reilley and D. Brian Kacedon. Thethoroughness of the text and accompanyingslides will minimize the need for note-taking at

the program. Moreover, this Sixth Editionincludes a computer disk, which has a set ofform paragraphs that can be incorporated,with careful editing, into a license agreementto be prepared by the course attendee.

The hardcopy edition of the course text willbe given to each attendee at the program. The

volume containing the printed slides that willbe used throughout the lectures will also beprovided at the course; this volume will includeextensive license drafting workshop materialsand Justice Department licensing guidelines.G

ocated on 26 acres overlooking breathtaking EsteroBay Aquatic Preserve, this enticing Bonita Springs

Florida hotel offers limitless recreation, personalizedservice, and attention to detail at every turn.

L

◆







8:15 a.m. – 11:30 a.m. (Tues)


Comment from previous attendee:

• "This course offered a wealth of practical advice.I am leaving with a 'to do' list. Each instructorhad great stories about real-life due diligencesituations. The stories kept the class interesting."

— Elaine Sale Argos Therapeutics, Inc. April 2009 attendee

The faculty, four partners at Finnegan,Henderson, are all patent attorneys withextensive experience in due diligenceinvestigations. In the aggregate, the panel hasover 100 years of experience in IP practice, andexpertise in several different areas of technology.Throughout the course, the faculty sharesinteresting “war stories,” observations andpractical tips for conducting the investigation ina comprehensive and efficient manner.

Due DiligenceInvestigations

Course Description

his course is designed to provide attendees with a comprehensive approach to conductingintellectual property (IP) due diligence investigations, with a particular emphasis on issuesrelating to U.S. patent law.

The panel will share practical techniques and strategies for conducting investigations in a thoroughand efficient manner. These techniques and strategies apply to both large and small transactions,and they have applicability irrespective of the nature of the specific transaction or the party you mightbe representing.

The course is designed as an interactive, practical program implementing case study examples andlecture topics addressing a wide range of issues, including attorney-client privilege, claim construction,inequitable conduct and business method patents. The lively and entertaining presentation coversevery phase of a due diligence investigation. Beginning with the initial involvement of IP counsel, thedynamic panel will navigate the course through the early information-gathering phases, drawing inthe attendees as part of the due diligence team to spot critical IP issues that can make or break adeal. The panel also will share effective strategic approaches to focus the investigation during theplunge into the data room, and to facilitate making recommendations to the client that couldultimately affect the price and structure of the deal. The concluding sessions of the program coverrisk management issues, providing invaluable and practical suggestions for contractual considerations,including effective use of representations and warranties. Topics discussed in the course are not onlyapplicable to investigating a target’s IP portfolio, but also provide helpful insight for preparing aportfolio for suitors. Additionally, a full course book is provided at the course. In short, the knowledgegained from this course should assist you in recognizing and avoiding the multitudinous due diligencepitfalls, while more effectively assessing and managing risk endemic in business transactions involvingcomplex IP rights and issues.

15.0 Hours

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Course FacultyThe faculty, considered collectively, have participated in over 100 due diligence evaluations and will takeyou 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 the economic noose tightensaround your clients’ necks, now is thetime for the patent practitioner to beempowered to increase his suitorclients’ revenues, with excellent returnon investment, by becoming a masterdue diligence provider on bothacquisitions of targets’ IP and license-ins of that IP. By the same token, thosewho represent the targets must knowthe principles of power for moldingthe targets’ IP strategies to maximizeincome from either takeovers orlicense-outs. The critically acclaimedDue Diligence course is designed toraise your game to new levels, whetheryou are representing suitors or targets.

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An hour of the course, on the second dayfrom 2:45 to 3:45 p.m., as currently estimated,will be dedicated to potential ethical issues andinequitable conduct hazards that may ariseduring an IP due diligence investigation.

Course Materials

The treatise, Due Diligence Investigations,was written by the Finnegan, Henderson,Farabow, Garrett & Dunner faculty and will begiven to attendees at the course.

This treatise aims to cover virtually everysituation that can arise in the course of a duediligence investigation. G

he casual Tarpon Bay Restaurant has a beach cottagevibe, and a palette of soft greens and creamy beige

complement the lush gardens just beyond its doors.T

◆







8:15 a.m. – 11:30 a.m. (Tues)


Federal Circuit Law(2010-2012)

America Invents Act of 2011 (AIA)

The AIA was signed into law by President Obama on September 16, 2011, and represents, by manyinterpretations, the most significant change to the U.S. patent system since 1952. The Act, amongother things, initiates a “first-inventor-to-file” system (FITF), and includes provisions on post grantreview (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, arevised “grace period” and redefinition of prior art to include subject matter that is “otherwiseavailable to the public,” expands the defense of prior commercial use, retains best mode as adisclosure requirement, but removes best mode as a ground of invalidity, and significantly altersthe 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 comeuntil resolved through the courts.

Some portions of the Act became effective immediately – other portions variously become effective1 year or 18 months after signing. In general, the FITF portions become effective for applicationsfiled on or after March 16, 2013, and for years to come, practitioners will have to practice underparallel 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 Circuit’s patent opinionsduring 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, butwithout any admission or acknowledgement of the variance by the panel majorities despite pointed,compelling demonstrations thereof in dissents and concurrences. From Ariad Pharmaceuticals, Inc.v. Eli Lilly Co. (2010) to Media Technologies Licensing, LLC v. Upper Deck Co. (2010) and beyond,this course provides deep insight into the Federal Circuit’s opinions over the past two years andtells you what you need to know to continue to be an effective practitioner. As Chief Judge Raderopines, by understatement, these cases “must leave practitioners in a quandary.” Indeed! Clearlyex parte practice is not what it once was.

15.0 Hours

I

Course FacultyThe one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the court’s history, providematchless inside perspective and candid, unequaled insight to Federal Circuit law – past, present andfuture. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the lecturers’commentary on whether and how the AIA may affect Federal Circuit law.

GALE PETERSON

COX SMITH

SAN ANTONIO, TX (FORMER TECHNICAL

ADVISOR TO THE LATE CHIEF

JUDGE MARKEY)

SHARON ISRAEL

MAYER BROWN LLPHOUSTON, TX

(FORMER LAW CLERK TO

CIRCUIT JUDGE LOURIE)

JON HOKANSON

LEWIS BRISBOIS BISGAARD &SMITH LLP, LOS ANGELES, CA

(FORMER TECHNICAL

ADVISOR TO THE LATE

CIRCUIT JUDGE MILLER)

JASON FOWLER

COVINGTON & BURLING LLPWASHINGTON, DC

(FORMER LAW CLERK TO

CIRCUIT JUDGE LINN)


Each week the Federal Circuitpublishes opinions that materially“clarify” and sometimes “alter”existing practice. One cannotcompetently practice as a patentattorney today, in prosecution,litigation, counseling or licensingwithout an understanding of theFederal Circuit’s most recent opinions.The distinguished faculty of FederalCircuit Law (2010-2012) will expertlyguide you through two years of relevantand up-to-the-minute cases in aninteractive lecture format thatencourages active attendeeparticipation. Moreover, lecturers willdiscuss new cases in the context of priorcases (many outside the two-year timespan), thus giving you not only “currentlaw,” but also a perspective on how thelaw has changed.

INCLUDING COMMENTARYon the America Invents Act

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Perhaps indicative of the court’s “split” onclaim construction, for example, is the opinionin Retractable Technologies, Inc. v. Becton,Dickinson & Co. (2011). The panel majority, ledby Judge Lourie, concluded that “body” in theclaims required a one-piece body, while thedissent by Chief Judge Rader urged that theclaim language and claim differentiation clearlyrequired the conclusion that “body” was notlimited to a one-piece body. A divided courtdeclined to rehear this case en banc, yet thesplit in the court still percolates.

The court also continually issues panelopinions that do not necessarily overturn priorpanel opinions, but significantly limit the same.An example is In re Katz Interactive CallProcessing Patent Litigation (2011), that limitsWMS Gaming, Inc. v. International GameTechnology (1999) and Aristocrat TechnologiesAustralia Pty Ltd v. International GameTechnology (2008), in the area of means-plus-function limitations.

One of the areas that harbors the mostunsettling and startling developments is thecourt’s linking of claim construction to thewritten description requirement, an area that,according to Chief Judge Rader, has become“opaque to the point of obscuring other areasof this court’s law.” This linking has resulted ina number of seemingly inconsistent panelopinions, especially in instances where thepatent-in-suit has facially broad claims, but anarrowly drafted specification. In AriadPharmaceuticals, Inc. v. Eli Lilly Co., the courten banc confirmed that there is a separatewritten description requirement that appliesoutside of the priority context—that separateand apart from whether the specificationenables the claims, the specification mustcontain a “written description” of theinvention. The court remains splintered on thisissue, however, and several judges believe thatthe invalidation of a claim on the basis that itis broader than the invention described in thespecification is inconsistent with the FederalCircuit’s rule of claim construction thatembodiments from the specification shouldnot 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 JudgeWhyte, N.D. Calif., sitting by designation, andover a dissent by Circuit Judge Dyk, reversed adistrict court’s conclusion that the specificationlacked sufficient written description supportgiven the breadth of the claims, noting thatoriginal claims, in some instances, may providewritten description support, despite statementsto the contrary in Ariad. Nevertheless, JudgeMoore, 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] writtendescription of an invention involving a chemicalgenus, like a description of a chemical species,‘requires a precise definition, such as bystructure, formula, [or] chemical name,’ of theclaimed subject matter sufficient to distinguishit from other materials.”

Another “hot” topic is “joint infringement.”The Federal Circuit has taken AkamaiTechnologies, Inc. v. Limelight Networks, Inc.and McKesson Technologies, Inc. v. EpicSystems Corp. for en banc review, butregardless of the outcome, joint infringementmay depend on whether a claim may avoid aconclusion that multiple entities are required toinfringe if the claim simply defines the“environment” in which infringement mustoccur per Advanced Software Design Corp. v.Fiserv, Inc. (2011).

The Federal Circuit continues to surprise thebar in other areas as well with its statutoryinterpretations. For example, in AugustTechnology Corp. v. Camtek, Ltd. (2011), thecourt rejected a jury instruction based on theAIPLA’s model jury instructions, and concludedthat a device may be the subject of an offer forsale prior to Its “being ready for patenting,”but also concluding that there is no actual offerfor sale until after conception. An additionalexample - although the fundamental groundsfor determining novelty and loss of right topatent under 35 U.S.C. § 102 have been partof the statute since 1793, and most certainlysince 1836 and 1870, the Federal Circuitcontinues to decide some cases on the narrowground of accepting or rebutting party’sarguments – however bizarre – rather than theunderpinnings of the statutes. In Solvay S.A. v.Honeywell International, Inc. (2010), forexample, the court concludes, on at bestshallow reasoning in response to misguidedparty arguments, and seemingly uncriticalreliance on an ambiguous statutoryamendment, that when § 102(g)(2) isconstrued as a prior art subsection, a prioractual reduction to practice “in this country”before the patentee’s earliest “date ofinvention” does not qualify as “prior art” if thereduction to practice is by one who does notqualify as an “inventor” who “conceived” theinvention. Never before has “novelty” turnedon showing “inventorship.” This is oneexample, though, of where the AIA may affectthe result.But the pendulum swings. After the

Supreme Court’s opinion in KSR InternationalCo. v. Teleflex, Inc. (2007), seemingly rejectingat least a rigid showing of a motivation to

combine reference teachings, the validity ofmany patents drawn to mechanical and manyelectrical inventions under § 103 becamedoubtful. However, the pendulum appears tobe swinging back — Judge (now Chief Judge)Rader’s dissent in Media TechnologiesLicensing, LLC v. Upper Deck Co. (2010) that“[l]urking just beneath the surface of thiscourt’s blindness to the underlying factssupporting non-obviousness is a bias againstnon-technical arts,” seems to have sparked(albeit not in that case) a renewed view of therequirement for motivation. Nevertheless,some panels of the Federal Circuit now permitreliance on “common sense” to find patentsinvalid under § 103, — and more egregiously,despite the lack of any reference supportingthe same. When this will end is anybody’sguess. But Chief Judge Rader’s opinion inUnigene Laboratories, Inc. v. Apotex, Inc.(2011), suggests that the court will increasinglyinsist on some showing of motivation, thusperhaps swinging the pendulum back pre-KSR.This course examines the Federal Circuit’s post-KSR cases in detail. Will the many areas ofinequitable conduct currently in doubt beresolved by the Federal Circuit’s en banc viewin Therasense? And the court’s adoption of a“but-for-plus” standard of materiality?Doubtful — but maybe. And what about theflood of cases held back pending the FederalCircuit’s decision in Therasense? The course willexamine Therasense in detail, with suggestionson complaince with Rule 56(a). The AIA alsooffers “supplemental examination” which may“cure” alleged inequitable conduct. Claims oflegal malpractice are increasing at an alarmingrate. The Federal Circuit has provided somesolace in Immunocept, LLC v. Fulbright &Jaworski LLP (2007), holding that it hasjurisdiction of legal malpractice claims undercertain circumstances. In addition, though,what conduct is subject to sanctions? TheFederal Circuit continues to issue opinions thataffect the basic practice of patent law.

The Supreme Court has also been active indeveloping the patent law, often rebuffing theFederal Circuit for failing to adhere to SupremeCourt precedent. For example, in In re Bilski,the Federal Circuit attempted to clarify the testfor determining whether a claim recitespatentable subject matter under § 101 byholding that its “machine or transformationtest” is the sole and exclusive inquiry. TheSupreme Court promptly rejected the FederalCircuit’s machine or transformation test as thesole test for patentable subject matter, butdeclined to articulate a clear test to replace the

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Federal Circuit’s test thus leaving a vacuum forthe Federal Circuit to fill. The course will coverpost-Bilski developments, and will sort throughthe uncertainty left in the wake of Bilski. Buteach post-Bilski case seems to raise additionalquestions.

For example, a panel in CyberSource Corp.v. Retail Decisions, Inc. (2011), questioned thevalidity of Beauregard-type claims, but as apanel opinion could not overturn Beauregard.Does that signal the demise of such claims? Inother areas, the Federal Circuit has quashedlong-standing abuses. In Uniloc USA, Inc. v.Microsoft Corp. (2011), for example, theFederal Circuit held, in the area of damages,that “as a matter of Federal Circuit law that the25 percent rule of thumb is a fundamentallyflawed tool for determining a baseline royaltyrate in a hypothetical negotiation.” The 25%rule, used for more than a decade, thusdisappears.

In yet other areas, the Federal Circuit hasfurther “explained” and thus limited prior evenen banc opinions, such as in Spectralytics, Inc.v. Cordis Corp. (2011) further explaining andlimiting In re Seagate Technology, LLC, (2007)(en banc).

Those are but highlights. Federal Circuitopinions even over the brief span of two yearshave created law that practitioners must know– especially in light of the changing compositionof the court.

Smoothing the Troubled Waters?PRG formerly characterized this course as

“Recognizing & Understanding Federal CircuitRussian Roulette.” The continually strongattendance at presentations of this FederalCircuit course suggests that the patent barrecognizes this aphorism to ring true.

In many respects, this is a user-designeddynamic course. Course evaluations arecollected and analyzed to determine the topicsand emphasis users desire. For the many thathave attended this course punctually every twoyears, the curriculum, in response to user input,retains the topics you have come to expect, buthas been expanded to include separatechapters and lectures on Federal Circuit enbanc cases and Supreme Court cases, selectedimportant cases that do not conveniently fitwithin a single topic (“crossover cases”) as wellas noteworthy practice & procedure cases,noteworthy appellate practice cases, jointinfringement, and selected Hatch-Waxmancases, among others – and now including theAIA.

All of the above represents just some of thecontinually breaking judicial news from theFederal Circuit that will be covered at theFederal Circuit Law course. As attested byhundreds of past course attendees, the facultypresents just the right amount of factual andlegal detail for mastering each case discussed.Legal ethics and inequitable conduct will bepresented on the second day from 3:00 to 4:00p.m., as currently estimated.

Course MaterialsThe full substance of the course is captured

in the Federal Circuit Patent Law three-volumetext, which extends over 1,500 pages. G


• “I've been attending this course, periodically,over a number of years, and it continues to getbetter & better.”

— Steven Fontana Fontana International October 2009 attendee

njoy the fountains and palm trees as you takea stroll through the Resort's beautiful grounds.E

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8:15 a.m. – 11:30 a.m. (Tues)


Patent damages, an essential remedy forpatent holders, is a crucial area of the law forall patent practitioners to understand, whetherrepresenting patentees or alleged infringers.This course will equip patent practitioners withthe tools necessary to knowledgably andexpertly advocate their clients’ damagesdemands by exploring the underlying basis forpatent damages, how to calculate a reasonableroyalty, establishment of lost profits in a patentdamages case, evaluation of forum-shoppingconsiderations, enhanced damages, andinnovative damage arguments as well as acomparative analysis of U.S. patent damagesto patent damages in other countries. Thiscourse will discuss and provide the latest caselaw from the Federal Circuit, andcomprehensively cover the current state of thelaw regarding patent damages.

Topics covered in this course include:

• General principles of patent damages

• Actual damages and reasonable royaltiesunder 35 USC §284

• Steps to calculate a reasonable royalty

• The remedies of compensatory lost profits,attorney's fees, prejudgment interest andcost for patent infringement

• Enhanced damages and willful infringement

• Comparative analysis of patent damages inUS with other countries G

Patent Damages

Course Description

he possibility to sue infringers is at the very foundation of US patent law. It is what makesacquiring patents meaningful and is the main enforcement tool of patentees. In the US,more than anywhere else in the world, infringement damages can and do total in the millions.

What does a patentee need to know in order to maximize the chances of a large damages award?What does an alleged infringer need to know to avoid one?

15.0 Hours

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Course Faculty • All three instructors have been involved in the damages phase of numerous litigationcases, including ivi4 in its successful affirmation of an over $200 million verdict against Microsoft; CrucibleSteel Company in its successful effort to obtain an injunction and travel damages against Kloster SpeedSteel; and 3M in a dispute with Dentsply, where a creative defensive damage argument resulted in asubstantially lower mediation and settlement award.

MICHAEL C. ELMER

FINNEGAN, HENDERSON, FARABOW,GARRETT & DUNNER, LLPPALO ALTO, CALIFORNIA

FULBRIGHT & JAWORSKI L.L.P.AUSTIN, TX

COCHRAN FREUND & YOUNG, LLC

FORT COLLINS, DENVER AND

BOULDER, COLORADO

WILLIAM W. COCHRAN CHRISTOPHER BENSON


Infringement damages in the US canand do total in the millions of dollars.Whether you are representing apatentee wanting to maximize thechances of a large damages award oran alleged infringer trying to avoidone, this course will help you to masterthis critical aspect of patent law.

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8:15 a.m. – 11:30 a.m. (Sat)



• “Well done in all regards. Experiencedpractitioners, concrete examples, and quite goodand interesting.”

— Steven Berryman, Quarles & Brady LLP April 2010 attendee

The course is designed for and directed tocorporate counsel who have or expect to havepatent litigation supervision responsibilities;experienced litigators who seek to acquireincreased competence and abilities in thisexpanding practice specialty; and privatepractitioners with limited litigation experienceseeking to expand their practice.

Legal ethics in the context of willfulinfringement issues will be presented from3:15 to 4:15 p.m. on the second day, ascurrently estimated.

New for 2012 is a detailed treatment of theAmerica Invents Act and how it is impactinglitigation right now, including:

• Provisions restricting joinder of multipledefendants in a single action

• Elimination of the best mode defense

• Prior commercial use defense

• Virtual marking and limitations on falsemarking lawsuits

Course MaterialsThe course is based on the thoroughly-

researched textbook, updated annually by Robins,Kaplan, Miller & Ciresi L.L.P authors to reflect thelatest statutory changes, and critical rulings fromthe Federal Circuit and district courts oninfringement, invalidity, damages, discovery,experts, and more. The course materials alsoinclude two resource volumes of supplemental,real-life illustrative litigation papers that supportthe text. All three volumes will be handed out atthe course, along with a printed copy of the courseslides (with room for note taking) that will be aparticularly convenient and useful reference. G

Patent Infringement Litigation

Course Description

his course is the most practical, immediately usable patent infringement litigation courseever presented by Patent Resources Group (and perhaps by any institution). The focus ison patent litigation (not litigation in general). The course starts at the first concept of the

idea to litigate and the critical initial decision to file suit, continues through discovery and trial, andon to the end of post-trial motions, as well as initial defensive considerations and developing andimplementing defensive strategies throughout the case. The course includes a live demonstrationof a Markman hearing and a section on damages and injunctive relief.

15.0 Hours

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ROBINS, KAPLAN, MILLER & CIRESI, LLPMINNEAPOLIS, MN

COLE M. FAUVER DAVID SWENSONBECKY THORSON

Course FacultyThe course is taught by highly experienced trial lawyers whose record of victories in patent cases is trulyremarkable and includes: Personal Audio v. Apple ($12 million judgment, post-trial motions pending);AMD v. Samsung (case involving seven affirmative patents and six counterclaim patents, confidentialsettlement); Pitney Bowes v. Hewlett-Packard ($400 million); Fonar v. General Electric ($110 million);Atlantic Richfield et al v. Unocal ($69 million); Honeywell v. Minolta ($96 million); Honeywell v. JVC ($30million); St. Clair v. Canon ($34 million); St. Clair v. Sony ($25 million); Grantley v. Clear ChannelCommunications ($89 million); TriStrata Technology v. Mary Kay ($43 million); Eolas v. Microsoft(confidential settlement after remand); Ricoh v. Pitney Bowes (defense verdict affirmed on appeal); GeneralMotors v. General Electric (summary judgment of invalidity, affirmed on appeal).


The Patent Infringement Litigationcourse will show you how to developand execute a winning strategy tocoordinate all aspects of a complexpatent case and achieve your businessobjectives. We will take you throughthe whole process, from the firstconcept of the idea to litigate to post-trial motions.

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lide down the 140-foot corkscrew slide at the Adventure Pool or catch

up on some leisure reading under Florida’s amazing blue skies.G

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8:15 a.m. - 11:30 a.m. and 1:30 p.m. – 4:15 p.m. (Sun-Tues)



• “[The course] provided very practicalinformation related to specification and claimspreparation, as well as amendments andarguments to make (and not to make) duringprosecution. I also appreciated the in-depthdiscussion of case law, both historical andcurrent cases, and how they impact biotechpractice.”

— Kathryn Hester Dunlap Codding P.C. April 2010 attendee

Course Focus

The course conveys both fundamentals andadvanced legal strategies in three major,interrelated areas: (1) Biotech and PharmaPatent Prosecution; (2) Hatch-Waxman andBiosimilars strategies; and (3) Pharmaceuticaland Biotech Patent Enforcement. These topicsare taught as a seamless whole by fourprincipals from Fish & Richardson PC, whoutilize frequent cross-references to highlightthe interplay among all the topics. For example,relevant patent case law (including the mostrecent biotech and pharma cases) is discussedfrom different viewpoints in the context ofprosecution and enforcement.

Pharma & Biotech Strategiesfor Patent Prosecution,Hatch-Waxman & Litigation

Course Description

iscovering and developing new pharmaceuticals – whether biomolecules or traditional smallmolecules – entails extraordinary R&D costs (some estimate nearly $1B per drug) with noguarantee of success.

Likewise, biotech companies invest enormous resources in identifying and validating the targets andcreating platform technologies that are becoming more and more essential for the drug discoveryprocess. Without the protection afforded by patents and various Hatch-Waxman drug exclusivities,the pharmaceutical and biotech industries as we know them would not exist. At the same time,patents on research tools and drug discovery targets can frustrate the early-stage research effortsof competitors seeking to discover novel drugs. In addition, the generic industry is increasinglyaggressive in challenging patents covering FDA-approved drugs, the boundaries of the Hatch-Waxman Safe Harbor are shifting, FDA reforms have limited the Orange Book as a weapon forpioneers, gene patenting is under serious challenge, and the 2010 legislation authorizing an approvalpathway for biosimilars may fundamentally change the life cycle management of biomoleculepharmaceuticals. Against this backdrop, biotechnology and pharmaceutical patent law in particularcontinues to evolve rapidly – perhaps faster than patent law in any other field – with numerousabrupt shifts and reversals of policy just in the last decade.

16.5 Hours

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Course Faculty • The faculty, all senior principals in Fish & Richardson’s vaunted life sciences group, hasmany decades of experience counseling pharmaceutical and biotech companies in patent prosecution,litigation, and Hatch-Waxman strategies. They teach these topics in the same way they approach them fortheir clients – as a seamless whole.

FISH & RICHARDSON PCBOSTON, MA • MINNEAPOLIS, MN • WASHINGTON, DC • NEW YORK, NY • SAN DIEGO, CA

JANIS FRASER TERRY MAHN JONATHAN SINGER MARK ELLINGER


In an industry where billions ofdollars often hinge on the viability of asingle patent claim, you can't afford tomake mistakes. Brush up on the skillsneeded to prosecute, evaluate, andenforce pharmaceutical and biotechclaims in an ever-changing legal andeconomic climate. Learn cutting-edgetechniques for putting the Hatch-Waxman laws to work for yourcompany's benefit. This highly-regarded course is taught by anexperienced team who puts it alltogether for you.

◆


An expert on the Hatch-Waxman andbiosimilars laws will provide a coherentoverview of these complex provisions; anotherlecturer will explain these laws’ criticalimportance to patent enforcement in thepharmaceutical and biotech fields; and otherswill show how these laws inform strategy inprosecution. Strategies for managing the lifecycle of patented drugs is a theme that echoesthroughout the course.

This course provides valuable, practicalinformation for the patent practitioner,whether in-house or in private practice, to usein maximizing protection of biotechnology andpharmaceutical inventions. The litigator willcome away with a comprehensiveunderstanding of the pertinent case law andconcepts necessary to enforce pharmaceuticaland biotechnology patents, or to recognize theweaknesses in improvidently granted patents.Company executives tasked with makingstrategic decisions based on their owncompany’s patent portfolio as well as those oftheir competitors will benefit immeasurablyfrom the broad understanding of biotech andpharmaceutical patent and Hatch-Waxman lawgleaned from this course.

Course Highlights

A key feature of the course is its coverage ofbiotechnology patent law, including bothestablished principles and currentdevelopments (such as the recently enactedoverhaul of the U.S. patent statute) in thisrapidly changing area of the law. In addition,the course highlights patent issues that crop upfrequently in the pharmaceutical arts wherebiotech and small molecule drugs overlap:issues such as enablement, written description,obviousness post-KSR, inherent anticipation,patent-eligible subject matter, inventorship,overbreadth, functional limitations, claimconstruction, infringement based on in vivoconversion, and infringement under thedoctrine of equivalents. The course will presentclaim strategies for the increasingly commonsituation in which an organism’s genome hasbeen published, and the invention focuses ona single gene. Other important topics includescreening or diagnostic assays, methods oftreatment, personalized medicine, polymorphs,transgenic animals, antibodies, RNAi, singlenucleotide polymorphisms (SNPs), and reach-through claims. Concepts such as impracticalclaims (claims difficult or impossible to enforce)are illuminated with real and hypotheticalexamples. The increasing importance of the

pharmaceutical label as a way to extend the lifecycle of an approved drug is explored andspecific strategies proposed.

Since another PRG course (Chemical PatentPractice) ably covers the fundamentals ofchemical prosecution in great detail, thepresent course instead focuses on issues thatconcern biotechnology and pharmaceuticalinventions in particular.

Course Materials

Each attendee will receive an over-1000-page, two-volume set of course materials.Fondly known as the “Purple Book” forreasons that will be apparent once you receiveyours, these materials are updated by Fish &Richardson each year to keep them currentwith new cases, new U.S. Patent andTrademark Office directives, and evolvingtechnology. They cover many more topics, andin more depth, than the course itself. ThePurple Book is an invaluable resource – a verypractical “how-to” manual you will use everyday. You will also receive a book of printedlecture slides when you arrive at the course. G

njoy a delicious meal and relax as you overlook the

water and palms blowing in the Florida breeze.E

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8:15 a.m. – 11:30 a.m. (Sat)



• “The materials are outstanding. I will use asreference materials in the future. Lecturerswere wide open to questions and very responsive.Interspersing of war stories and examples keptthe presentation interesting.”

— Charles Burpee Warner Norcross & Judd LLP October 2009 attendee

This two-and-a-half-day course providescomprehensive training on indispensible toolsfor patent prosecutors and litigators, includingnew tools created by the AIA:

• Ex parte reexamination

• Inter partes reexamination

• Post-grant review (new under the AIA)

• Inter partes review (new under the AIA)

Post-Grant Patent Practice:Review, Reexamination, Reissue,and Supplemental Examination

Course Description

he battleground of patent validity is shifting from courts to the PTO.

Ten years ago courts were essentially the sole arbiters of validity. About 5-6 years ago,reexamination emerged as a popular venue for validity challenges, either alone or alongside courtbattles. The reasons for that shift were simple: Would you rather bring your validity attack beforean experienced patent examiner in the PTO’s Central Reexamination Unit where the claims aregiven their broadest reasonable interpretation and do not enjoy a presumption of validity, or a juryin the Eastern District of Texas? The answer becomes all the more obvious when one considersthat a reexamination can cancel claims, eliminate liability for past infringement, create interveningrights to continue accused infringement in the future, open up design-around opportunities, createa more favorable prosecution history, defeat a charge of willful infringement, help avoid aninjunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensivelitigation. All of this can be achieved at a small fraction of the cost of litigation.

The America Invents Act (AIA) shifts the balance even further in favor of the PTO as the patentvalidity battlefield of the future by creating new more powerful, fast-track, litigation-like reviewproceedings, including post-grant review and inter partes review. These reviews will be decidedby a panel of three administrative judges within 12-18 months after being instituted, will permitlimited discovery, and will be appealed directly to the Federal Circuit. These new proceedingssignificantly improve on the structure of their predecessor, inter partes reexamination, just as interpartes reexamination was surging in popularity.

15.0 Hours

T

KEVIN B. LAURENCE MATTHEW C. PHILLIPS

STOEL RIVES LLPSALT LAKE CITY, UT AND PORTLAND, OR

Course Faculty • The instructors have extensive experience representing both patent owners andaccused infringers in reexaminations and frequently file and prosecute reissue applications. They areactively involved in bar associations’ efforts to help the PTO design and implement the new reviewproceedings created by the America Invents Act (AIA). They have written widely on reexamination,reissue and review topics for Intellectual Property Today.


About 5-6 years ago, reexaminationemerged as a popular venue for validitychallenges, either alone or alongsidecourt battles. The reasons for that shiftwere simple. The PTO’s CentralExamination unit provided a forumwhere claims are given their broadestpossible interpretation. In addition, areexamination can result in manyfavorable outcomes, at a small fractionof the cost of litigation.

The America Invents Act (AIA) shifts thebalance even further in favor of the PTOas the patent validity battlefield of thefuture by creating new, more powerful,fast-track, litigation-like reviewproceedings, including post-grantreview and inter partes review.

Whatever side of the battle you are on,you must know how to engage in thenew battlefields called review as well asthe existing battlefield calledreexamination.

◆


• Transitional program to review businessmethod patents (new under the AIA)

• Reissue

• Supplemental examination (new under theAIA)

The course covers strategies, tactics, bestpractices and case studies for reexaminationand reissue. In addition, the course will coverthe statutory and regulatory framework for theAIA’s new review proceedings andsupplemental examination. The course is forboth patent practitioners who appear beforethe PTO in these proceedings, as well aslitigators who must deal with the increasinglycommon role of PTO proceedings in thecontext of disputes.

For patent challengers, the course providestraining to:

• Analyze the benefits and disadvantages ofreexamination and review as compared tolitigation

• Make well-informed choices between alltypes of reexamination and reviewproceedings

• Understand the critical role of reexaminationand review in the context of a dispute anddevelop reexamination and/or reviewstrategies based on anticipated orconcurrent litigation

• Appreciate estoppel implications – bothofficial and unofficial – of reexamination andreview

• Utilize reexamination and review to obtain astay or other benefits in related litigation

• Unravel the AIA’s review statutes anddecipher the PTO’s proposed review rules toreally understand how reviews will beconducted

• Prepare a request for reexamination orpetition for review that complies with allrequirements and gets granted

• Learn what the reexamination statistics reallymean

• Advantageously utilize the differentstandards applied for claim interpretation atthe PTO and claim construction in litigationas well as the differing burdens of proof

• Recognize possible changes to theconstruction of the claims in the litigationbased on the reexamination or review thatopens up design-around opportunities,creates a more favorable prosecution historyfor the purpose of claim construction, orimpacts estoppel theories

• Create intervening rights that eliminateliability for past infringement or allowcontinuation of accused infringement in thefuture

• Tactically use serial ex parte reexaminationrequests and protests in reissue

• Correctly and strategically use petitions anddeclarations

• Understand the repercussions thatreexamination and review can have onsettlement

The course balances the perspectives ofpatent challengers and patent owners so theabove items are also presented from the viewof the patent owner. Additionally, the courseprovides training for patent owners to:

• Choose between ex parte reexamination,reissue and supplemental examination toimmunize a patent from a third-party attack

• Avoid, when possible, intervening rights thatarise via the cancellation or amendment ofclaims – or from mere argument regardingclaim scope

• Defensively utilize related proceedings,reissue continuations and merger tomaximize flexibility and advantage

• Select information to be disclosed to thePTO from concurrent litigation or other PTOproceedings

• Understand the timing of events in all post-issuance PTO proceedings so that you arenot caught off guard

• Navigate the maze of reexamination andreissue procedures to avoid unfortunatelycommon mistakes

• Master the recapture rule in reissueapplications

• Understand when and how to utilize acertificate of correction or disclaimer, ratherthan reexamination, reissue or supplementalexamination

Many other topics related to post-grant PTOproceedings are covered in the course. Legalethics in the context of reexamination andreissue prosecution will be presented from10:15 a.m. to 11:15 a.m. on the third day, ascurrently estimated. G

rift off to sleep in your signature Hyatt Grand Bed™,

fitted with sumptuous linens and a down duvet.D

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Bonita Springs, FLMarch 29-31, 2012 (Thur-Sat)


8:15 a.m. – 11:30 a.m. and 1:30 p.m. – 4:45 p.m. (Thur-Fri)

8:15 a.m. – 11:30 a.m. (Sat)


The broad spectrum of available softwarepatent protection opportunities that appearedavailable after State Street Bank and AT&T v.Excel was questioned in the Bilski decisions. Inits Bilski decision, 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. TheSupreme Court found this “machine-or-transformation” test useful but too narrow. Itfell back on general principles of “abstractness”.It also declined to exclude all business methodsfrom patentability, but it seemed to invite theirclose scrutiny. Courts as well as the USPTOcontinue to struggle with the application of theSupreme Court's decision and the CAFCdecision it largely affirmed. Practitioners need tounderstand the signposts left by the Bilskidecisions and their progeny.

Software-based inventions face another issue.Recent cases have suggested that infringementmay be avoided when infringing activity crossesborders or multiple parties are involved in theacts or elements comprising infringement of aclaim. The doctrine of “joint infringement” (a/ka“divided infringement”) as developed in BMCResources, Inc. v. Paymentech, Muniauction Inc.v. Thomson Corp. and other cases posesparticular problems for proving infringement asmore computer-based inventions use processors,storage and specialized data processing servicesof others, sometimes located in the “cloud”.Using resources in the “cloud” can involvemultiple actors and jurisdictions.

The course and text address why differentsoftware applications (e.g., Internet-relatedsoftware) require special claim drafting,prosecution or litigation techniques. Claim styles

Procuring and Enforcing BusinessMethod and Other Software-BasedPatents After Bilski and BMC

his course addresses the difficult and sophisticated task of how best to claim, prosecute,and litigate software-based inventions in their rich variety so as to have their patents heldnot invalid and infringed by the Federal Circuit. But that rich variety requires a variety of

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

The America Invents Act (AIA) impacts software patents in general and business method patentsin particular. Specifically, a new inter partes review proceeding is available during litigation fordefendants to challenge certain business method patents at the USPTO on a wide variety ofinvalidity grounds.

Course Description

15.0 Hours

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DORSEY & WHITNEY LLPMINNEAPOLIS, MN

ALDO NOTO

ANDREWS KURTH LLPWASHINGTON, DC

STUART HEMPHILL DEVAN PADMANABHAN

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


This is a critical time to get an importantupdate on software patent law, given:

• The impact of the America InventsAct (AIA).

• The need to understand the compleximplications of the Bilski decisions.

• The decision finding no infringementwhen computer-based methods spanborders (Research in Motion).

• The decision finding no infringementwhen multiple actors are involvedin completing the infringement(Muniauction).

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and limitations designed to meet the somewhatunclear post-Bilski §101 standards are discussed.This course also explores the countercurrentsarising from concern about the quality of somebusiness method patents and from the opensource movement.

Legal ethics in the context of duty ofdisclosure under 37 CFR §1.56 and USPTOconflict of interest issues will be presented from9:00 to 11:00 a.m. on the third day, as currentlyestimated.


• “Speakers were awesome, articulate, organized,knowledgeable and friendly.”

• “The material covered was very focused andpractical. Thank you!”

• “Examples of claim types were great!”

Course Materials

The comprehensive text, written by itsdistinguished faculty, will be handed out at thecourse. G

et your cares slip away in the soothing spa pool while overlooking

the green lushness of the natural Florida surroundings.L

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PRG’s Spring HotelHyatt Regency Coconut Point Resort & SpaBonita Springs, FL • March 25-31, 2012

5001 Coconut Road

Bonita Springs, FL 34134

239-444-1234

PRG’s Spring 2012

Program will be held at

the lavish Hyatt Regency

Coconut Point Resort &

Spa in Bonita Springs, FL.

Reservations: 239-444-1234

For online reservations, please go towww.patentresources.com/HotelOverview.aspxand click on the Hotel Information link for HyattRegency Coconut Point Resort & Spa.

Room reservations must be made by March 2, 2012.When making your reservation, be sure to identifyyourself as a Patent Resources Group attendee toobtain the special PRG rate.

Room rate: The sleeping room rate available to PRGattendees is only $249.00 per night, single or double,plus tax and a daily resort fee of $15 (normally $20).

Receptions for Attendees and Faculty: PRGreceptions provide an opportunity for networking,plus delicious, complimentary hors d’oeuvres andbeverages on the first evenings of class: Sunday,March 25 and Thursday, March 29. Spouses,children and guests of attendees and faculty arewelcome and are certain to have an enjoyable time.

Transportation: The Resort is about 16 miles(approximately 25 minutes) south of SouthwestFlorida International Airport (RSW), which is servedby a variety of major airlines with nonstop flightsfrom many cities throughout the United States.

his rate of $249 per night is a30% savings over the averagerate at the resort.

A Truly Amazing Venue Situated on 26 lush acres on Estero Bay, theHyatt Regency Coconut Point features theworld-class Stillwater Spa; a championship 18-hole golf course designed by Raymond Floyd; a5000-square foot, lagoon-style Adventure Poolwith a 140-foot corkscrew water slide; a hugeWaterfall Pool; and an adults-only heated lappool. Hotel guests may also take a short ferryride to the Resort's private Gulf Coast beach atBig Hickory Island, arrange for a variety of waterand wildlife excursions in Estero Bay, or kayakthrough the mangroves on the Estero River. CampCoconut provides supervised entertainment andhands-on activities for children ages 3-12(advance reservations suggested).

The Hyatt Regency Coconut Point boasts sevenrestaurants and bars, including the four-diamond Tanglewood Restaurant (servingbreakfast, lunch, and dinner and featuringinternational cuisine), the casual Tarpon BayRestaurant right on the water, and the Kofe Nut,the Resort's 24-hour, full service coffee shopthat also provides picnic lunches and othersupplies for beach excursions.

Hotel facilities include a full-service businesscenter, a 24-hour Stay Fit fitness center, wirelessInternet access, and a DVD library. Self-parkingis complimentary. For more information aboutthe Hyatt Regency Coconut Point, go to:http://coconutpoint.hyatt.com/hyatt/hotels.

Don't Miss This Deal!

T

Named one of The Top100 Hotels in the Worldin Travel + Leisure’s 2011World's Best Awards!

◆


REGISTRATIONBonita Springs, FL • March 25-31, 2012


PRINT Name of Cardholder

SIGNATURE of Cardholder

If the credit card billing address is not the same as on this form,enter the billing address here:

Charge $______________________ to:

❑VISA ❑MasterCard ❑American Express

❑Corporate Card ❑Personal Card

❑Government Card

Corporate Customer Code (if applicable) ___________________

Credit Card # _______________________________

Exp. ________/__________

For information about registrationdeadlines; cancellation, transfer andsubstitution privileges; CLE; and otherdetails, go to: www.patentresources.com

I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:1. __________ _________________________ 2.___________ ______________________ STATE ID NO. STATE ID NO.

Name ___________________________________________ Title________________________

Tel _____________________________________________ Fax ________________________

email ________________________________________________________________________

Organization ______________________________________ Suite or Mail Stop No.___________

Street Address _________________________________________________________________

City/State ________________________________________ Zip Code ____________________

❑MR. ❑DR. ❑MS. ❑PROF.

❑HOME❑ORG.

PLEASE PRINT

Brochure Code: A12M1

REGISTRATION OPTIONS: PATENT RESOURCES GROUP®

Mail or Overnight: 1725 Jamieson Avenue Alexandria, VA 22314

FAX: (703) 892-4510

ONLINE: www.patentresources.com

You may register online or by fax, mail or courier.You may submit tuition either by check, payableto Patent Resources Group, Inc., or by credit card(charges are authorized by your completion of thisform). The course tuition does not include hotelaccommodations or meals, but does include allinstructional materials, and morning andafternoon refreshments, as well as PRG’sreception-cocktail party.

Tel: 703-682-4860Fax: 703-892-4510

www.patentresources.com

March 25-27, 2012 (Sun-Tues)

❍ Art & Science of Patent Searching —Patentability, Validity & Infringement

❍ Art & Science of Patent Searching andOptional Patent Searching Workshop(combined course and workshop is $2,590)

❍ Chemical Patent Practice

❍ Comprehensive PCT Practice: How toMaster Its Challenges

❍ Due Diligence Investigations

❍ Federal Circuit Law (2010-2012)

❍ Patent Damages

❍ Pharma and Biotech Strategies for PatentProsecution, Hatch-Waxman & Litigation

March 28, 2012 (Wed)

❍ GNEW COURSE America Invents Act:Monumental Changes, the Consequencesand the Unanswered Questions

SPECIAL RATE of only $495 ifyou’re also taking a 3-day course.Discount will be applied whenyour order is processed.

March 29-31, 2012 (Thurs-Sat)

❍ Crafting and Drafting Winning Patents

❍ “Designing Around” Valid U.S. Patents

❍ Drafting Patent License Agreements

❍ Patent Infringement Litigation

❍ Post-Grant Patent Practice: Review,Reexamination, Reissue, andSupplemental Examination

❍ Procuring and Enforcing BusinessMethod and Other Software-BasedPatents After Bilski and BMC

One-Day Course:

Three-Day Courses:Tuition for each three-day course is $2,195.

Tuition for the one-day course is $995.

Registration Deadline: March 2, 2012

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

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ou are already familiar with our website at www.patentresources.com.But you can now also keep up with PRG on Twitter and Facebook.

Follow us on Twitter for interesting patent discussion and PRG course updates athttp://www.twitter.com/PRGPatentLaw.

Become a fan on Facebook to get the latest news athttp://www.facebook.com/PatentResourcesGroup.

Y

atent Resources Group, theAlma Mater of 40,000 patent

attorneys and agents, now offerscustomized ON-SITE training forselected courses on a negotiated basis!

This is the perfect option forcorporations that have 10 or moreemployees who need the sametraining. We'll come to your locationand will customize the content asneeded to meet your specific needs. Ifyou prefer, we can also offer thesecourses remotely throughwebconferencing or videoconferencing.

Contact SVP-Sales Ted Klekman at (916) 404-3908 to learn more.

P Art and Science of PatentSearching: Patentability,Validity & Infringement

This course comprehensivelyteaches how to conduct aprofessional patent search. The materials and content willbe understood by anyone, fromthe inexperienced to advancedpractitioners. The course isperfect for patent attorneys andagents, inventors, paralegals, orresearch managers — anyonewho will be involved inconducting searches orcommissioning searches.

*Interested in having other courses taught on-site at your location? Ask us!

PRG is currently offering these courses* ON-SITE:

Patent Law Guide for Inventors,Investors, Paralegals & Non-Patent Lawyers

This course presents that whichthe inventor, paralegal, andadministrator should know (really,must know, according to caselaw) about patent law and itspractice. It provides a bedrock ofbasic and empowering patent lawinformation that will also beinvaluable to non-patentattorneys engaged in any aspectof patent activity, such aslicensing, litigating, or counseling.

PRG is Accessible Wherever You Are!

Register online now at www.patentresources.com

January 23-27, 2012Patent Bar Review CourseNewport Beach, CA (Orange County)Radisson Hotel Newport Beach

March 12-16, 2012Patent Bar Review CourseWashington, DC (Alexandria, VA)PRG Training Center

March 25-31, 2012Advanced Courses ProgramBonita Springs, FLHyatt Regency Coconut Point Resort & Spa

May 7-11, 2012Patent Bar Review CourseChicago, ILFour Points by Sheraton ChicagoDowntown/Magnificent Mile

June 18-22, 2012Patent Bar Review CourseBoston, MARadisson Hotel Boston

July 17-20, 2012Winning Patents WorkshopWashington, DC (Alexandria, VA)PRG Training Center

July 31-August 3, 2012Winning Patents WorkshopNewport Beach, CA (Orange County)Radisson Hotel Newport Beach

August 2012Advanced Courses ProgramWashington, DC Check PRG website for dates and venue

August 2012Patent Administration: A Foundation for SuccessWashington, DCCheck PRG website for dates and venue

September 2012Patent Administration: A Foundation for SuccessNew York, NYCheck PRG website for dates and venue

September 2012Patent Bar Review CourseNew York, NYCheck PRG website for dates and venue

October 17-23, 2012Advanced Courses ProgramIndian Wells, CA (Palm Springs)Hyatt Grand Champions Resort, Villas and Spa

November 5-9, 2012Patent Bar Review CourseSan Francisco, CA Check PRG website for venue

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PATENT RESOURCES GROUP1 7 2 5 J A M I E S O N A V E N U E

A L E X A N D R I A , V A 2 2 3 1 4

Be Prepared for the America Invents Act!You can’t afford not to invest in your future.See page 2 for details and register today atwww.patentresources.com.

PATENT RESOURCES GROUP®

Pre-sort Std.U.S. Postage

PAIDWestern American Mailers

UNPARALLELED COURSESAT AN AMAZING VENUE!

A12M1Patent Resources Group provides the industry's leading patent law education programs. The company hastaught patent law and related courses to 40,000 patent attorneys, agents, engineers and scientists since 1969.

Documents

PRG Spring 2012 Advanced Courses Magalog