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5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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ANNUAL FALLPROGRAM
PATENT RESOURCES GROUP
Register now at www.patentresources.com
THE CHOICE OF EVERYGENERATION OF PATENTATTORNEYS SINCE 1969.
Fall Program
Caesars Palace Las Vegas, NVSeptember 27 October 2, 2014
Choose from 10 of the best advanced patent law courses. See page 3.
Take advantage of our amazing room rate, available only to PRG attendees! See page 26.
Enjoy a one-of-a-kind venue. See page 26.
Check out our new Seminar Series! See pages 28 and 29.
INPATENTLAW
O$1PERNI
The Worlds BEST Patent Law Courses
and a Spectacular Venue!
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
2/322 www.patentresources.com
atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses
Programs and at our new Seminar Series. If you were a paid attendee at any PRG course in 2013 or
already in 2014, you are automatically a loyalty member for 2014 and will be entitled to special pricing
when you attend any courses at our 2014 Fall Advanced Courses Program or any of our 2014 Seminar Series!
And after being a paid attendee at any PRG course in 2014, youll automatically be eligible for Loyalty Program
benefits for the rest of 2014 and for 2015. If you didn't attend any PRG courses in 2013 or so far in 2014, your
2014 Loyalty Program benefits will kick in after your first 2014 course. So, if you sign up for multiple courses
at the Fall 2014 Advanced Courses program, you'll pay full price for the first course and get Loyalty Program
member pricing for the other courses. Register today and be part of the PRG Loyalty Program!
About PRGs Loyalty Program
PRGs 2014 Annual Fall Program
P
in Patent Law
For over 45 years, Patent Resources Group has been the nations leading educator of patent
professionals, providing attorneys, agents, engineers, and scientists from around the world with
comprehensive courses and publications that set the industry standard for patent education.
WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN LAS VEGAS IN FALL 2014?
BECAUSE PRGS ADVANCED COURSES PROVIDE AN EDUCATIONAL OPPORTUNITY THAT
YOU SIMPLY CAN'T GET AT ANY OTHER SINGLE PROGRAM. OUR COURSES:
Will arm you to deal with the complexities of the America Invents Act the final changesresulting from the America Invents Act (AIA) took effect in March 2013. However, the effects of this
landmark legislation will be impacting all aspects of patent practice for years to come. Our Fall 2014
Program features a significantly revised and expanded one-day course on the AIA that focuses on
understanding its implications going forward. In addition, all of our returning courses have been updated
as needed to reflect the ongoing impacts of the AIA.
Provide an amazing value if you register for your Fall Program courses by July 28, 2014,you'll pay the same tuition rates that weve been charging since 2005! And if you come to our programs
every year, youll continue to benefit from our special Loyalty Program discounts for our Advanced Courses
and our Seminar Series (see below).
Go beyond the basics, showing how to apply the law to real-world intellectual property issues and tomake calculated legal and business decisions.
Give you practical insights that you can apply immediately when youget back to the office.
Offer the CLE credits you need.
Are an investment in your practice or your company, increasing
both your ability to successfully prosecute patent law and the value you bringto your employer.
Provide an unparalleled opportunity for networking and exchangingideas with our faculty and your fellow attendees.
Register soon spaces will fill quickly!
PRG THECHOICE OFEVERYGENERATION OFPATENTATTORNEYSSINCE1969.
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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www.patentresources.co
Caesars Palace Las Vegas, NVSEPTEMBER 27 - OCTOBER 2, 2014
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
Register by July 28, 2014for Lowest Fall Tuition!
Three-Day Courses: September 30 - October 2, 2014 (Tues-Thurs)
Art & Science of Patent Searching Patentability, Validity& Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 4Faculty: Brian Thurmond and Jonathan Skovholt
Comprehensive PCT Practice: How to Master Its Challenges . . . . . . . . . . . . . . . . . . . . . . 8Faculty: Carol Bidwell and T. David Reed
Drafting Patent License Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14Faculty: Brian Kacedon, William Pratt, Casey Dwyer, and Robert Shaffer
Federal Circuit Law (2012-2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16Faculty: Pete Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll
Three-Day Courses: September 27-29, 2014 (Sat-Mon)
Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6Faculty: Tom Irving, Jill MacAlpine, Deborah Herzfeld, Kathryn Sanchez, and Rona Nardone
Crafting and Drafting Winning Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris
Designing Around Valid U.S. Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12Faculty: Patrick Burns, John Pinkerton, and Patricia Prior
Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman
Post-Grant Patent Practice: Review and Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . 22Faculty: Kevin Laurence and Matthew Phillips
Software Patents: Procuring and Enforcing AfterAliceUPDATED! . . . . . . . . . . . 24Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan
10 advanced patent law coursesare available for the 2014 AnnualFall Advanced Courses Program.
Tuition for each Fall three-daycourse is $2,195 throughJuly 28, 2014 and $2,295 afterthat date.
Combined tuition for the Fall PatenSearching Course and Workshop is$2,590 through July 28, 2014 and$2,690 after that date.
Don't finalize your Fall AdvancedCourses registration withoutchecking out our 4 one-daySeminars being offered onSeptember 29 and 30. See page27 to register and pages 28 and 2for details.
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Projected State Bar CLE Credit:
Las Vegas, NV
September 30-October 2, 2014 (Tues-Thurs)
Caesars Palace8:15 a.m. - 11:30 a.m. and
1:30 pm. - 4:45 p.m. (Tues-Wed)
8:15 a.m. - 11:30 a.m. (Thurs)
Optional Workshop
1:30 p.m. - 4:45 p.m. (Thurs)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
Well structured course. Good pace. Very usefultips and information. High relevance to my
specific organization.
I'm entirely new to this field. It was general enough,
but detailed enough, for a beginner like myself.
Highly competent instructors.
The curriculum and text were designed and
written by twelve practitioners: eight
experienced patent information specialists and
four former examiners with expertise in both
English and foreign language searching. The
curriculum reflects the combined expert
Landon IP, which is one of only
companies selected by the USPTO to co
patent searches on its behalf with a vi
reducing USPTO examiners tow
examination backlog.
Upon completion of the course
attendee will have learned:
How to approach a search in a syste
methodical and exhaustive way.
How to properly scope the search b
even beginning.
Art and Science of PatentSearching Patentability,
Validity & Infringement
Course Description
his course comprehensively teaches how to conduct a professional patent search.
It provides direction for determining when a search is needed and what types and sou
of information should be searched in the process. Patent searching is both an art an
science. Consequently, search capability improves with practice. But optimum practice requires a s
foundation for those who seek to conduct searches accurately and efficiently. The course teac
when, how, where and why to conduct a search and is appropriate for those who will conduct
search or commission it.
Designed for patent attorneys and agents, inventors, paralegals and research managers, the cou
and its materials will be understood by anyone from the inexperienced to advanced practition
Unlike workshops that are taught by competing database providers, this global course is not tied
a particular search engine, a database product or a patent information service. Instead, the instruc
teach skills that are applicable across databases, both proprietary and public, and without bias tow
the features of a particular search engine. Unique among its many features, the course provide
comparison of the major patent search engines and teaches the strengths, weaknesses and bene
of the database providers who provide them.
15.0 Hours
T
Course Faculty The faculty consists of patent searching and analysis leaders at Landon IP who hexpert search experience as attorneys, patent search instructors, and examiners with the U.S. Patenand Trademark Office (USPTO).
LANDON IP, INC.ALEXANDRIA, VIRGINIA
BRIAN THURMOND JONATHAN SKOVHOLT
... And Optional Patent Searching Workshop
Why Should You Take This Course?The Patent Searching course presents
a systematic process for performing
prior art searches with greater efficiency
and precision. It is designed to benefit
a broad audience, including novice
searchers, seasoned patent
practitioners, and search professionals.
The course also provides unbiased,
detailed information concerning the
latest databases and tools of the trade.
Expert tips from search professionals are
provided to enable high-level patent
research through proper scoping,
structuring, and performance of thesearch. Patent practitioners will
recognize that a robust understanding
of the prior art is a vital part of the
patent process, particularly in view of
accelerated examination demands and
the America Invents Act.
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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How to carefully search by classification, text
query progression, and citations, knowing
the benefits and pitfalls of each.
Both the major differences and subtle
nuances in conducting a patentability,
validity or infringement patent search.
Issues unique to searching within specific
technical disciplines.
Approaches to searching non-English-
language patents and published applications.
Approaches to searching non-patent
literature.
Approaches to reporting search results.
Differences between the major patent
search engines and important considerations
in selecting an appropriate search tool.
Ways to get high-level information from
patent search results.
The basics of several peripheral topics
including the use of the USPTO searchtemplates, searching for accelerated
examination, and searching using industry
standards.
Course materials
The text for the course is Art & Science of
Patent Searching Patentability, Validity &
Infringement, edited by Matthew Rodgers,
Long Nguyen and David Hunt. The
thoroughness of the text will minimize the
need for note-taking at the program.
Optional PatentSearching Workshop
A patent search engine user account is
needed for the Workshop. Please contact PRG
if you need assistance in obtaining one.
This Workshop is an optional add-on to the
Art and Science of Patent Searching course and
gives attendees the opportunity to practice
hands-on patent searching alongside the
course instructors. Attendees must bring their
own laptops as well as their own search engine
user accounts so that they will be able to
practice using familiar search tools. Wirelessinternet access will be provided during the
Workshop.
The faculty will work with the attendees to
answer questions and provide guidance as they
execute their searches in real time. The
Workshop is structured to test each attendees
retention of the concepts covered in the course
as they put their training to use in several
sample search projects. Attendees will be
provided with multiple sample disclosures,
encompassing a wide variety of technologies,
on which they will base their search
informal, lecture-free setting will allow
attendee to work independently, but in
proximity to an instructor.
The instructors will be able to pr
assistance with any of the major patent s
engines. The attendees will be guided th
scoping the search, performing the searc
analyzing their results. Answer keys w
provided at the end of the Workshop so
participants may gauge their progress and
a reference to use for additional pr
following the class.
Requirements and Prerequisites:
Completion of the immediately prec
2014Art and Science of Patent Sear
course
Important: Wireless-enabled l
computer (Internet Explorer or Firefox
browser, and Microsoft Office parecommended)
Important: Patent search engine
account (in an attempt to focus on c
concepts and high-level sear
techniques, publicly available search en
cannot be solely relied upon for th
portion of this course)
Important: Unrestricted use of third
wireless connection (please verify with
IT department that your security setting
allow access to the wireless hub nece
for the course).
www.patentresources.co
he most recent expansion at The Forum Shops added
175,000 square feet and additional levels that extend the
mall out to Las Vegas Boulevard, where a grand pedestrian plaza
creates a signature entrance for The Forum Shops at Caesars.
T
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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Projected State Bar CLE Credit:
(Including 2.0 Hours Legal Ethics)
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Mon)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
For example, the rising tension within the
Federal Circuit panels on the role of the
specification in claim construction and the
increasing pressure to revisit the Cyborrule of
de novo review of claim construction on appeal
will bring important developments for
practitioners in the very near future on what to
expect for claim construction. For the
practitioner, the take-home message remains
to prosecute as if your life depended on
infringement and lay the groundwork
specification (the single best guide t
meaning of a claim term) for a broad
construction. This course, presented b
experienced faculty, each with a signi
depth of experience, suggests many pra
approaches with those objectives in min
We discuss how to establish patent
ChemicalPatent Practice
Course Description
his up-to-the-minute course teaches the chemical patent practitioner how to
fundamentally sound principles to prepare and prosecute a United States chemical pa
application in a conservative way and in view of all of the opportunities and pitfalls affor
by the AIA,to enhance such possibilities as:
obtaining broad claim construction for literal infringement purposes, particularly
avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para
invalidity) that is best described as patent profanity;
utilizing the doctrine of equivalents to the extent that the doctrine still exists;
surviving Festo;
destroying, not rebutting, a defectiveprima facie case of obviousness in our current pKSR world, including illustrations from several real U.S. patents prosecuted by a fac
member;
obtaining the broadest possible claims by avoiding too many and unduly narrow limitati
obtaining claims that will be directly and literally infringed by competitors rather tha
customers;
proving literal infringement of claims in litigation;
obtaining claims infringed by downstream infringers;
preparing and prosecuting the application to avoid inequitable conduct in view of the Fed
Circuit's en banc decision in Therasense andprogeny thereof, and the impact of the
supplemental examination procedure that went into effect September 16, 2012; and
understanding the implications of the various provisions and effective dates of the Ame
Invents Act (AIA), particularly as they relate to filing strategies in and around the Ma16, 2013 date when the first inventor to file provisions took effect.
18.0 Hours
T
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
WASHINGTON, DC
DUPONT
WILMINGTON, DE
TEVA PHARMACEUTICALS
FRAZER, PA
TOM IRVING JILL MACALPINE DEBORAH HERZFELD KATHRYN SANCHEZRONA NARDONE
Course Faculty
The faculty has decades of collective experience across the complete spectrum of chemical practic
Why Should You Take This Course?
Are you well-versed on how
chemical claims are constructed and
construed? Well enough to avoid an
overly narrow, often disastrous claim
construction leading to a royalty-freetransfer of patented technology to
your competitor? Well enough not to
trip up on obviousness over KSR? If
youd like to answer these questions
with a resounding yes then you
should attend our highly-acclaimed,
comprehensive Chemical Patent
Practice course. Dont fail your clients
or yourself in these tough economic
times learn from the best.
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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www.patentresources.co
and validity under 103 in the post-KSR world,
where knowledge and direction equate power.
Case studies, involving real U.S. patents, will
provide a framework for creative thinking on
the law ofprima facie obviousness.
We will look closely at the guidelines for
best mode disclosure from a substantive and
ethical point of view, particularly in view of
changes made in the AIA. In addition, we
consider the Federal Circuit inequitable conduct
decisions in the context of the en banc
Therasense decision, including its progeny,
many of which will be reviewed for the lessons
they provide to both in-house and private
practice lawyers. In fact, the inequitable
conduct and best mode discussions provide the
two hours of ethics that is otherwise sometimes
hard to find, particularly on substantive topics
related to your practice. The ethics discussion
should take place during the last two hours on
the second day (as currently estimated). The last
day will include a discussion of a hypothetical
chemical patent problem that synthesizes and
reinforces the teachings of the class.
The enactment of the AIA did not wipe the
patent law slate clean. Because of the way the
AIA was written, the old law will be relevant
to practitioners until at least March 16, 2034!
Thats right practitioners will have to be
experts in both old and new laws for at least
another 22 years! The Chemical Patent
Practice faculty has lectured on the new law
extensively and has studied it intensively in
conjunction with people who were
instrumental in the drafting of the legislation.
The faculty will bring all of that background to
their presentations to you.
And do not be misled into thinking that this
course is applicable only to patent prosecutors.
The principles taught will greatly help those
involved with prelitigations, litigations, Orange
Book listings, due diligences and analysis of
third-party patents for validity, infringement,
and enforceability issues.
Comments from previous attendees:
This is one of the best courses that I have ever
taken. All of the instructors are excellent and
provide very helpful practical tips regarding
chemical patent practice. The material provided
is excellent and a very good reference guide.
Mark CohenScully, Scott, Murphy & Presser PC
October 2009 attendee
Good overview and reminders of good practice
points. Great consolidation of information and
tips based on recent case law. Very current.
Heather Gorman
Thomas, Kayden, Horstemeyer & Risley, LLP
April 2010 attendee
Course Materials
The definitive treatise, Chemical Paten
written and continually updated by
Finnegan, Henderson, Farabow, Garr
Dunner faculty, with the invaluable assis
of editor Stacy D. Lewis, will be provid
attendees at the course. This treatise c
virtually every situation that can arise ipreparation and prosecution of a che
patent application. It will remain on you
and in continual use long after the cours
The treatise underwent a complete ove
in the aftermath of the enactment of th
to provide completely updated materials
course attendees. Although the treatise
great value, the faculty members have
that the best vehicle for teaching is the u
slides, which will be provided in book fo
attendees on the first day of class. The
book will contain ample room for note-t
and cross-referencing and, as such, wilvaluable addition to your daily kit of che
patent practice tools.
unique spa experience awaits you at Caesars Palace's Qua Baths and Spa. Enjoy a luxurious
retreat that taps into the natural, healing powers of water to bring you a one-of-a-kind sensation.A
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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Projected State Bar CLE Credit:
Las Vegas, NV
September 30-October 2, 2014 (Tues-Thurs)
Caesars Palace
8:15 a.m. - 11:30 a.m. and
1:30 pm. - 4:45 p.m. (Tues-Wed)
8:15 a.m. - 11:30 a.m. (Thurs)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
The PCT allows applicants to secure a filing
date in all PCT Contracting States by filing a
single application in their home country and in
their home language. The PCT provides a
comprehensive search of the prior art and a
preliminary, nonbinding written opinion on the
novelty, inventive step (non-obviousness) and
industrial applicability (utility) of the claimed
invention. In addition, applicant has an
additional 18 months beyond the end of the
Paris Convention priority year to make final
decisions on where to seek patent protection.The delay in the associated expenses of
national filings alone make the PCT a cost-
effective procedure and can result in a
significant cost saving by helping to avoid
unnecessary filings and/or allowing filings in
countries where commercial importance has
grown between international filing and
national phase entry.
By filing an international application, all PCT
Contracting States and four regional offices are
automatically designated and are available for
national phase entry later in the pro
Whether the international application
first filing or it claims priority to an earlier
the applicant does not have to make the
decision on where to seek patent prote
until 30 months from the earliest priority
The final decisions are based on
information obtained in the interna
search report and the international prelim
report on patentability as well as inform
obtained by the applicant regarding
scientific status and commercial value oinvention. In short, through using the PC
applicant will have a much better idea o
likelihood of obtaining comme
meaningful patent protection for the cla
invention. In addition, the applicant wil
the opportunity to obtain additional s
results through the supplementary s
option as well as have the opportun
advance prosecution by using the op
international preliminary examin
procedure. Applicant can amend
application and/or provide argument
Comprehensive PCT Practice:How to Master Its Challenges
Course Description
ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established it
as a valuable way for applicants to obtain patent protection in many countries around
the world. The number of PCT Contracting States is currently 146 and growing. PCT
members include the vast majority of industrialized, developing and emerging countries of th
world. The Comprehensive PCTcourse guides the attendees chronologically through the
international phase of the PCT and into the national phase before the national and regional
patent Offices of interest. The instructors present strategies for effective use of the PCT, the
benefits obtained and options available when using the PCT. In addition, the course covers th
numerous safeguards available for applicants, including the restoration of priority rights and
incorporation by reference.
15.0 Hours
S
Course Faculty The two faculty members have extensive government and corporate experiencaspects of PCT matters.
CONSULTANT ON PCT MATTERS FORTHE WORLDINTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR
OFTHE USPTO OFFICE OF PCT LEGAL ADMINISTRATION
CAROL BIDWELL T. DAVID REED
CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT;FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER
& GAMBLE COMPANY, CINCINNATI, OHIO
Why Should You Take This Course?
Attendees will learn the benefits and
advantages of the Patent Cooperation
Treaty (PCT) procedure as well as the
numerous options and safeguards
available for applications filed under
the PCT. The Comprehensive PCTcourse enumerates procedures and
strategies designed to obtain patent
protection for inventions in multiple
countries through the filing of a single
international application under the
Patent Cooperation Treaty. While a
basic working knowledge of the PCT is
useful when taking this course, it will
prove valuable to both new and
experienced users of the PCT.
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
9/32
consideration by the examiner prior to the
issuance of the international preliminary report
on patentability (Chapter II of the PCT).
Depending on the International Search and
Preliminary Examining Authorities selected by
the applicant, certain national and regional
patent Offices (including the US) allow a
favorable PCT work product (for example,
international preliminary report on
patentability) to be applicants ticket to
accelerated examination on their patent
prosecution highway.
This Comprehensive PCTcourse discusses: a)
when the use of the PCT is advantageous and
when it is not; b) the effects on patent term
based on the first (priority) application; c)
selection of international authorities under the
PCT for greatest advantage; d) the information
received by applicants during the PCT process;
e) entering the national phase; f) upcoming
changes in the PCT; g) use of PCT search and
examination results to utilize the Patent
Prosecution Highway; h) the effect of the
America Invents Act (AIA) on practice under
the PCT; plus a host of other PCT-related topics.
In addition, the course presents the growing
information available from the WIPO Internet
site via the PATENTSCOPE search tool. The
Comprehensive PCTcourse includes a detailed
look at patent-related provisions of the Paris
Convention.
Comments from attendees of past PCTco
Excellent instructors - thorough cover
subject.
The course materials are excellent. The le
have much experience in PCT-related activiti
have the ability to explain that to a class.
Outstanding speakers with practical exper
Course Materials
A comprehensive text is used in the
presentation that includes detailed explan
of the various topics and sample forms.
amed in USA Today among the top
authentic Cantonese restaurants in
the United States, the Empress Court
specializes in tantalizing seafood dishes
and exotic Asian dining.
N
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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Projected State Bar CLE Credit:
(Including 1.0 Hour Legal Ethics)
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
Practical advice for drafting enforceable patentclaims, sprinkled with supporting legal
authority.
Spanning the gap between current Federal Circuit
law and actual, practical tips on how to incorporate
the latest law into successful prosecution practices.
Good coverage of current law and potential
pitfalls associated with certain practices (I'm
planning to make changes to my practice with
regard to various pitfalls you have pointed out).
Answer to the Conundrum.
There is a sound basis for dealing witdilemma generated by the Federal Circ
practical ex parte practice path is now in
that navigates through the chaos. Its roa
reads LP-CD (Low Profile, Com
Denominator Practice). LP-CD, despit
chaos it penetrates and traverses, is ch
clearly and boldly in this PRG course. Cr
& Drafting Winning Patents was designe
created by PRGs Professors Paul Gardne
Irving Kayton and enriched by the PRG c
faculty.
Crafting & DraftingWinning Patents
Course Description
his Crafting & Drafting course marches to a special drummer and focuses on the end res
producing a winning patent that will be held literallyinfringed and not invalid und
(sec)112(a), f/k/a/ (sec)112, para.1, despite the time pressure created by moving to a fir
inventor-to-file system under the America Invents Act (AIA).
The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U
district courts have begun to say so openly). For example, the importation of claim limitations f
the specification into the claims albeit under the rubric of claim interpretation is now ramp
rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States Surg
Corp., where the court imported the limitation pleated into a broad claim reciting a surgical m
plug used for hernia repair, relying heavily in doing so on the Summary of the Invention
described a plug having pleats. The court repeatedly referenced the Summary of the Inven
throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patentrecite a pleated plug, without even mentioning, let alone reconciling, the immutable doctrin
claim differentiation that should have sustained the broad claims.
Claim interpretation is only one chaos region. There are others where the Federal Circuit case law
equally inconsistent, including the law concerning the written description requirement, means-p
function clauses, the doctrine of equivalents, and prosecution history estoppel.
This creates an immense dilemma for conscientious patent practitioners trying to write and prosec
patent applications that will provide their clients with the patent protection they deserve. Which ca
should be relied on, and which should be ignored?
15.0 Hours
T
Course Faculty
Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.
DLA PIPER US LLPRESTON, VA
KENYON & KENYONNEWYORK, NY
JOHN TSAVARISDALE LAZAR
Why Should You Take This Course?
Learn the areas of chaos in Federal
Circuit jurisprudence of primary
concern to practitioners who prepare
and prosecute patents. The course will
focus on a series of cases where thepatent owner lost, not because of
what the litigators did, but because of
how the patent practitioner drafted
and prosecuted the application.
Compounding the problem is the time
pressure created by moving to a first-
inventor-to-file system under the
America Invents Act (AIA) and the
anticipated increase in the filings of
provisional applications with their
many traps for the unwary. The course
will teach you how to write provisional
applications and draft and prosecute
non-provisional patent applications toavoid these pitfalls.
DINSMORE & SHOHL LLP,DAYTON, OH
PAUL ULRICH
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This course distills everything from the law
(and dicta) of the Federal Circuit and its
predecessor courts that has a material bearing
now, today, and in the foreseeable future, on
how we must successfully:
1. Prepare for drafting the application;
2. Design what must be included in, andexcluded from, the provisional application
and the nonprovisional application
specification and drawings and, very
importantly, in what form and format it
should be included;
3. Engage in claim drafting strategy designed
to result in literal infringement, recognizing
that this strategy must be taken into
account as a principal factor in the earlier
design of the specification;
4. Develop a protocol and a philosophy for
prosecuting the application that advance
and do not defeat the efforts in (1) through
(3); and
5. Balance the accomplishments of (1)
through (4) against, first, increased costs of
crafting and drafting that sometimes
accrue and, second, their effect on the
length of the patent term that will result,
and third, the time pressure created by
moving to a first-inventor-to-file system
under the AIA.
Crafting & Drafting is not a survey course
covering the broad landscape of patent
prosecution or a workshop. Instead the course
drills deeply into the six specific areas of Federal
Circuit chaos that have most seriously and
frequently destroyed the value of patents. We
will focus on what we can do as patent
prosecutors to prepare and prosecute
applications that are immune from the chaos.
Crafting & Drafting will almost certainly
effect a change in your patent law life, because
the Federal Circuit has effectively (albeit
unwittingly) dictated that it be so.
It is noteworthy that many hundreds of
patents have already issued using the Crafting
& Drafting techniques set forth in this course
(several of which will be reviewed), with
beneficial effect in license and litigation
negotiations.
Legal ethics issues including the recent
Therasense decision and its profound changes
to the law of inequitable conduct and duty of
disclosure will be covered from 9:15-10:15
a.m. on the last day of the course, as currently
estimated.
Who Should Take This Course?
This course is for patent practitioners w
minimum of two years of practice,
preferably more. It is sufficiently sophist
for even the most experienced. The f
knows this to be true because the pro
and solutions about which they conferre
debated in bringing this course to frplumbed the depths of their combined p
law knowledge, experience and on
research and scholarship.
Beginning patent practitioners should
forward to PRGs four-day Workshop des
specifically for them, The Winning Pa
Workshop. For details visit our webs
www.patentresources.com.
Course Materials
A comprehensive, one-volume course
entitled Crafting & Drafting Winning Pa
and a bound set of lecture slides, are def
on the subject and will be given to regisat the course. The Textbook and slide
constantly updated and revised to in
recent decisions and changes in the l
including the applicable provisions of the
he beautiful statues, pillars, and paintingsin the Augustus Tower lobby set the tone
for your entire experience.T
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Why Should You Take This Course?
The Designing Aroundcourse distills
the patent infringement analysis into
comprehensive yet concise step-by-
step checklists that can be used by
attorneys at all experience levels to
assist their clients to develop
competitive, noninfringing products.
12 www.patentresources.com
Projected State Bar CLE Credit:
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
Practical explanation of case law to apply to
patent drafting, infringement analysis and
opinion writing.
The substance was excellent. Presentations
gave good overviews and the course books give
encyclopedic detail for topics of interest.
Well organized, very thorough, presenters all
know their stuff.
Four cookbooks covering (1) literal
infringement, (2) infringement under thedoctrine of equivalents, (3) infringement of
means plus function claim elements, and (4)
prosecution history estoppel, are provided.
Using and following these cookbooks, which
distill opinions by the Federal Circuit and the
Supreme Court in cases from Pennwaltto Festo
IX, any patent practitioner can counsel his or
her client on how to design around the
patented invention with almost certain
impunity a design that appropriates the
patented invention and that, prior to Pennwalt
and its progeny, would have been he
infringement rather than the socially des
activity of designing around.
This course will show practit
representing potential infringers how
counsel competitive product design und
guidance of Federal Circuit and Supreme
cases, which will almost always be view
effective designing around. How to co
litigation to achieve a happy ending fo
infringement-accused client will be set fo
elegant simplicity.
Actual Demonstrations
To ensure no confusion on anyones p
this exercise, the faculty and students w
through several claim construction exe
and compare their conclusions with the Fe
Circuits claim construction in actual ca
mock design around exercise will als
presented. The demonstration considers
marketing and engineering perspectiv
addition to legal analysis. To prepare fo
Designing AroundValid U.S. Patents
Course Description
n Markman and Cybor, the Federal Circuit required district courts to construe claims a
matter of law and decided to review claim construction de novo. The object was to ma
claim construction predictable, so that claims would better perform their public not
function. The result has been an unmitigated disaster, often (but not always) reading limitatio
into the claims that the examiner did not require to establish patentability over the art of reco
In fact, the court has often overridden the examination process, undermining the public not
function of claims ab initio. This course will explore the current condition of claim construction
detail and explain how competitors can use it to their advantage, even when the claims on th
face are literally infringed.
15.0 Hours
I
Course Faculty PRG has offered Designing Around Valid U.S. Patentsfor over 15 years, and it reone of our most popular courses.
PATRICK BURNSGREER, BURNS& CRAIN, LTD.
CHICAGO, ILLINOIS
JOHN PINKERTONTHOMPSON & KNIGHT
DALLAS, TEXAS
PATRICIA PRIORGREER BURNS & CRAIN LTD.
CHICAGO, IL
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exercises and demonstration, the course faculty
will illustrate the accused structures relative to
the claims in the landmark, no-infringement-
by-claim construction cases of Alloc and
Nystrom, the no-infringement-by-equivalents
cases of Slimfold, Laitram and London, and the
super landmark, no-equivalents-at-all after-
prosecution-history-estoppel case of Festo IX.
These and other cases are presented in literal,
graphic clarity.
How to Draft Infringement
and Noninfringement Opinions
The effects of Seagate, the AIA, and Bardon
findings of willfulness, enhanced damages,
and fee awards will be discussed in detail. The
faculty also explains the substance and form
opinions should have to maximize their
effectiveness in litigation.
Course Materials
The two-volume text for Desi
Around Valid U.S. Patents is authored b
distinguished course faculty, each of who
extensive successful litigation, prosecutio
counseling experience. Nothing like
unique books exists anywhere else.
he Gordon Ramsay Pub & Grill
provides an authentic English pub
experience in the heart of Las Vegas.
T
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Projected State Bar CLE Credit:
(Including 2.0 Hours Legal Ethics)
Las Vegas, NV
September 30-October 2, 2014 (Tues-Thurs)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Tues-Wed)
8:15 a.m. 11:30 a.m. (Thurs)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
This course provided a great overview of
licensing issues and anecdotal scenarios giving
rise to said issues.
Andrew Weber
Honigman Miller Schwartz and Cohn LLP April 2012 attendee
I have been drafting license agreements for the
Federal government for 6 years, and this course
helped tie together everything I've learned in
this time.
Suzanne Seavello Shope
Centers for Disease Control & Prevention
April 2010 attendee
The information is very practical and re
to the 'real world' problems encounter
drafting and reviewing agreements.
Glenn Smith
Bausch & Lomb,
October 2008 attendee
This is a course for the craftsman. Bot
course and the text provide a solid bas
responding to virtually every license dr
problem that may arise. Even for the h
experienced licensing lawyer, new insight
be provided; at the very least, the cours
be a rich, comprehensive refresher. For th
experienced licensing lawyer, it will open
both with respect to hidden problems a
mechanisms for dealing with them.
Drafting PatentLicense Agreements
Course Description
his course and its text provide concrete drafting and negotiating advice with precise referen
to existing law.
The course lays the groundwork for a clause-by-clause examination of all significant eleme
of the patent licensing agreement. The practical questions always focused on are how and whet
each element is sufficient to serve the business needs of the parties while remaining legally via
The main components of typical licensing agreements, from the opening part through the execu
and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples
used, often in workshop form, with carefully crafted problem handouts distributed to the attend
during the course.
Throughout the course, the faculty members emphasize achieving legally satisfactory drafting res
by recognizing the logical principles that underlie the job to be done. Sample forms are used
explain the practical considerations upon which they are based. Law and precedent are presente
terms that make clear the legal reasoning behind recommended drafting approaches.
15.0 Hours
T
Course Faculty The faculty teaches by sharing decades of combined experience in licensing.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC
D. BRIAN KACEDON WILLIAM PRATT CASEY DWYER ROBERT SHAFFER
Why Should You Take This Course?
Licensing is a key strategy by which
companies realize significant value
from their patents and technology. The
ability to draft, negotiate and interpret
license agreements is a core skill for IPattorneys and other professionals who
deal with licenses. This course provides
a comprehensive overview of key
licensing concepts, the drafting of key
clauses in a license agreement, and the
impact of related topics such as
competition law, export control law
and the Bayh-Dole Act. It is taught by
experienced license professionals with
an emphasis on practical considerations
and provides valuable insights and
discussion for both novices and more
advanced practitioners.
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Legal ethics in license negotiations will be
presented during the afternoon session on Day
2 and in misuse issues during the morning
session on Day 3, as currently estimated.
Course Materials
The text for the course is the Seventh Edition
of the classic, Drafting Patent License
Agreements (BNA), by Brian G. Brunsvold, D.
Patrick OReilley and D. Brian Kacedon. The
thoroughness of the text and accompanying
slides will minimize the need for note-taking at
the program. Moreover, this Seventh Edition
includes a computer disk, which has a set of
form paragraphs that can be incorporated,
with careful editing, into a license agreement
to be prepared by the course attendee.
The hardcopy edition of the course te
be given to each attendee at the program
volume containing the printed slides tha
be used throughout the lectures will al
provided at the course; this volume will in
extensive license drafting workshop ma
and Justice Department licensing guide
he Forum Shops at Caesars are Las Vegas' premier retail, dining
and entertainment destination, featuring more than 160
boutiques and shops, as well as 13 restaurants and specialty food shops.
T
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Projected State Bar CLE Credit:
(Including 1.0 Hour Legal Ethics)
Las Vegas, NV
September 30-October 2, 2014 (Tues-Thurs)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Tues-Wed)
8:15 a.m. 11:30 a.m. (Thurs)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Federal Circuit Law(2012-2014)
America Invents Act (AIA)
The AIA is generally regarded as the most significant change to the U.S. patent system since 19
For years to come, however, practitioners will have to practice under parallel systems the o
law and the new law. The lecturers will explain, as appropriate, how the results in partic
cases may be affected by the AIA.
Course Description - Two Years in Review - Taught by Experienced Lecturers, All Former Techn
Advisers/Law Clerks
his is one of PRGs longest continuously offered courses. Because the course focuses
the last two years, attendees often repeat this course every two years to remain curre
Consequently, this course offers practitioners a unique opportunity to both become cur
in the law, and to remain so. And to do so in an interactive environment that is both informa
and intellectually challenging. The interactive environment (as described below) allows attend
to contribute to the learning experience, and avoid sitting through a series of dull lectures.
There was a time when patent law was considered sufficiently settled such that slip opin
could be allowed to accumulate in a stack until an opportunity or need for review arose. Th
days are gone. Now that stack for many has become a large electronic file and has likely gro
beyond the point of realistically being able to catch-up with the opinions. If this applies to ythen you are a prime candidate for this course.
15.0 Hours
T
Course Faculty
The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the courts history, pmatchless inside perspective and candid, unequaled insight to Federal Circuit law past, presefuture. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the leccommentary on whether and how the AIA may affect Federal Circuit law.
PETE PETERSONCOX SMITH
SAN ANTONIO, TX(FORMER TECHNICAL
ADVISORTO THE LATE CHIEFJUDGE MARKEY)
SHARON ISRAELMAYER BROWN LLP
HOUSTON, TX(FORMER LAW CLERKTOCIRCUIT JUDGE LOURIE)
JON HOKANSONLEWIS BRISBOIS BISGAARD &SMITH LLP, LOSANGELES, CA
(FORMER TECHNICALADVISORTOTHE LATE
CIRCUIT JUDGE MILLER)
KARA STOLLFINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLPWASHINGTON, DC
(FORMER LAW CLERKTO CIRCUITJUDGE SCHALL)
Why Should You Take This Course?
Each week the Federal Circuit
publishes opinions that materially
clarify and sometimes alter
existing practice. One cannot
competently practice as a patentattorney today, in prosecution,
litigation, counseling or licensing
without an understanding of the
Federal Circuits most recent opinions.
The distinguished faculty of Federal
Circuit Law (2012-2014) will expertly
guide you through two years of relevant
and up-to-the-minute cases in an
interactive lecture format that
encourages active attendee
participation. Moreover, lecturers will
discuss new cases in the context of prior
cases (many outside the two-year time
span), thus giving you not only current
law, but also a perspective on how the
law has changed.
INCLUDING COMMENTARYon the America Invents Act
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LLC v. Nike, Inc. (although a trademark case, it
involved covenants-not-to-sue in a context
analogous to patent law), Kirtsaeng v. John
Wiley & Sons, Inc. (international exhaustion
under copyright law - similar issue arises in
patent law), Gunn v. Minton (federal
jurisdiction of legal malpractice actions),
Association for Molecular Pathology v. MyriadGenetics, Inc. (patent eligibility under 101),
and Federal Trade Commn v. Actavis, Inc.
(reverse settlement agreements).
In its current 2013 Term (2013-14), the
Supreme Court has already granted certiorari
in four cases, Medtronic, Inc. v. Boston
Scientific Corp. (burden of proof in declaratory
judgment actions involving a non-breaching
licensee), Octane Fitness, LLC v. ICON Health &
Fitness, Inc. (exceptional case standard),
Highmark Inc. v. Allcare Management Systems,
Inc. (deference to be accorded to district courts
exceptional case determination), and Petrella v.Metro-Goldwyn-Mayer, Inc. (laches in
copyright cases - similar issue arises in patent
law). Pending petitions for certiorarisuggest
that cert. may be granted in 2-3 additional
IP cases maybe more.
Although the primary focus of the course is
on Federal Circuit law, Supreme Court cases
(both decided cases and cases in which cert.
has been granted) are covered as well. Also,
cases such as Gunn are addressed in which
cert. was to the Texas Supreme Court, but
where the net effect of the Supreme Courts
decision overturned the Federal Circuits
decision and rationale in seven cases!
Filling In the Gaps
This course fills in the gap left by
traditional CLE programs and various
published case summaries, and is designed
to allow counsel to comprehensively become
and remain current on todays frequent and
rapid changes in the law. Unlike the one year
or less coverage typically offered by CLE
courses, this course covers a two-year span,
providing in-house and outside counsel alike
an opportunity to remain comprehensively
current on must be aware of cases by
attending biennially.
Also, unlike many CLE courses that offer a
patent law update in a one hour or so time
slot (which necessarily limits focus to but a few
of the 100+ decided cases), this course offers
a comprehensive review of precedential cases
(as well as select non-precedential cases), in
several formats of varying depth so that the
attendee can chose which format works best
namely comprehensive text, PowerPoint
slides, and lectures focused on new
developments:
(A) The course is scheduled over 2 days
time for in-depth review and analysis.
(B) Cases are reviewed in three volumes of
comprehensive text. (C) Case highlights are
addressed in printed PowerPoint slides which
attendees may follow and annotate during the
lectures. (D) Issues unique in each presented
case, and how those issues relate to prior law,will be highlighted, plus the opinions will be
boiled down to various teaching points,
as well as to insights to the Federal Circuit that
are only available through the lens of a
former technical advisor/law clerk.
For example, the written text for cases that
primarily involve novelty and loss of right to a
patent under 102, and obviousness/non-
obviousness under 103, span 400+ pages of
review and analysis. Additionally, those cases
are further digested into PowerPoint slides that
an attendee may annotate during the
discussion of 102 and 103 cases. Thus, anattendee may follow the discussion while
annotating the slides and refer to them later.
The same is true for the numerous other topics
listed in the course syllabus.
Also unlike most CLE courses, this program
is interactive. Questions from attendees (as
well as from the panel), and open discussion,
are activelyencouraged in real time during
the lectures. If you disagree with (or agree
with) a point made by a lecturer, or wish to
raise a question or observation, you need only
raise your hand. The lecturer will stop and
recognize you and whatever
question/comment you have may spark further
debate which we encourage. Over the years
we have found that this interactive
environment is a signature feature of this
course. The issues we talk about are generally
worthy of debate we encourage the same.
Sampling of Cases Reviewed
There are a number of both controversial
and must know decisions that will be
addressed. This is just a sampling.
Practitioners writing applications for
computer-aided inventions should thoroughly
understand the implications of cases such asErgo Licensing v. CareFusion (2012), holding
claims calling for a programmable control
means invalid for failure to disclose a
corresponding algorithm although such
devices are off the shelf devices. And Noah
Systems v. Intuit (2012) holding claims invalid
because the disclosed algorithm did not
implement all claimed steps. But contrast cases
such as Power Integrations, Inc. v. Fairchild
Semiconductor International, Inc. (2013)
(circuit may recite sufficient structure to
avoid construction as a means-plus-function
limitation).
Litigation practitioners will be interes
In re Bill of Lading (2012), setting ou
pleading requirements for direct, contrib
and induced infringement. But
practitioners must consider K
Telecommunications, Inc. v. Time W
Cable, Inc. (2013) where the panel spl
whether compliance with Form 18, FED. P., is sufficient to support a civil actio
patent infringement.
In the area of inequitable conduct, a
majority in Network Signatures, Inc. v.
Farm Mutual Automobile Ins. Co. (
concluded that filing out a PTO form
failure to pay a second maintenance fe
unintentional without any f
supplementation did not constitute inequ
conduct, but a strong, well-reasoned d
argued otherwise. On the other hand
opinion in Intellect Wireless, Inc. v. HTC
(2013) gives us the first clear instanadjudged inequitable conduct follo
Therasense, and which involved a false
132 affidavit. For those thinking that Ro
Haas Co. v. Crystal Chem. Co. (1983) w
longer good law think again.
Case law decisions in the area of p
eligible subject matter under 101
particularly left practitioners without
guidance. In In re Bilski, the Federal C
attempted to clarify the test for determ
whether a claim recited patent-eligible su
matter by holding that its machin
transformation test was the sole and exc
inquiry. The Supreme Court promptly rej
the machine or transformation test as th
test for patentable subject matter, but de
to articulate a clear test thus leaving a va
for the Federal Circuit to fill. The Sup
Court also thoroughly rejected the Fe
Circuits view of 101 in Mayo Collabo
Services v. Prometheus Labs. (S.Ct. 2012
the Federal Circuit responded in Myriad (
in a 106-page collection of three op
continuing to advocate its splintered vi
101. The Supreme Court, on review in
largely rejected the rationale of the Fe
Circuit majority, but did little to clarif
ambit of patent-eligible subject matter o
the specific facts of that case.
Meanwhile, the Federal Circuit con
with its view of patent eligibility under
For example, a panel in CyberSource Co
Retail Decisions, Inc. (2011), questione
validity of Beauregard-type claims, but
panel opinion could not overturn Beaure
Does that signal the demise of such cl
Opinions by some judges in CLS Bank v.
Corp. (2012) en bancsuggest that Beaure
type claims do not avoid the fundam
analysis for patent eligibility under 101
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Claim construction remains controversial.
The Federal Circuit granted en bancreview in
Lighting Ballast Control LLC v. Philips
Electronics North America Corp., and held oral
argument in 2013, on the question whether
the court should overrule Cybor Corp. v. FAS
Technologies, Inc. (1998), namely that claim
construction was a question of law for thecourt. It seems likely that the court will issue
an opinion in early 2014. We must wait to see
whether, and to what extent, the court
fractures in addressing that question.
The court also continues to break new
ground in the interplay of reexamination and
district court infringement litigation. In a
surprise to many observers, the Federal Circuit
in Fresenius USA, Inc. v. Baxter(2013) held that
the PTOs cancellation of claims in
reexamination moots a pending infringement
action on those claims. As a result, the district
courts final, multi-million dollar judgmentwas reversed because it was not final
enough. With the recent denial of en banc
review, and Circuit Judge OMalleys strong
dissent urging a circuit conflict with
Qualcomm, Inc. v. FCC(D.C. Cir. 1999), this is
a must know highly controversial case, with
or without Supreme Court review, affecting
counsels choice to seek reexamination.
Continuing in its run of surprises, the Federal
Circuit held that a license defense can be
effective for broadened reissue claims not in
existence at the time of the original license
agreement. In Intel Corp. v. Negotiated Data
Solutions, Inc. (2012) the Federal Circuit
affirmed the district courts summary judgment
of license and non-infringement defenses in
favor of Intel pursuant to a licensing agreement
with N-Datas predecessor in interest, National
Semiconductor Corp.
In an unusual generic v. generic case,
Momenta Pharms., Inc. v. Amphastar Pharms.,
Inc. (2012) the Federal Circuit vacated a
preliminary injunction against Amphastar and
in doing so appeared to broaden the scope of
the safe harbor provision of the Hatch-
Waxman Act in an unusual way that prompted
an explosive dissent by Chief Judge Rader.
In other areas, the Federal Circuit has
quashed long-standing abuses. In Uniloc USA,
Inc. v. Microsoft Corp. (2011), for example, the
Federal Circuit held, in the area of damages,
that as a matter of Federal Circuit law that the
25% rule of thumb was a fundamentally
flawed tool for determining a baseline royalty
rate in a hypothetical negotiation. The 25%
rule, used for more than a decade, has thus
been relegated to the scrap heap. Continuing
the trend of reining in large damage awards,
in LaserDynamics v. Quanta Computer(2012),
the Federal Circuit further narrowed the entiremarket value rule almost to oblivion.
Those are but highlights. Federal Circuit
and related Supreme Court opinions in the past
two years have created law that practitioners
must know especially in light of the changing
composition of the court.
Smoothing the Troubled Waters?
In many respects, this is a user-designed
dynamic course because we collected and
analyzed course evaluations to determine the
topics and emphasis users desire. For the many
that have attended this course punctually every
two years, the curriculum, in response to userinput, retains the topics you have come to
expect, but has been expanded to include
separate chapters and lectures on Federal
Circuit en banc cases and Supreme Court
cases, selected important cases that do not
conveniently fit within a single
(crossover cases) as well as notew
practice & procedure cases, notew
appellate practice cases, joint infringe
legal ethics within the context of r
inequitable conduct cases, and selected H
Waxman cases, among others and
including the AIA.
All of the above represents just some o
continually breaking judicial news from
Federal Circuit and Supreme Court that w
covered. As attested by hundreds of
course attendees, the faculty presents ju
right amount of factual and legal deta
mastering each case discussed.
Course Materials
The full substance of the course is cap
in the Federal Circuit Patent Lawthree-vo
text, which extends over 1,500 p
supplemented by PowerPoint slides that d
individual cases and court trends on sp
topics.
Comments from previous attendees:
Thorough review of each topic and each
decision. Good discussions among speake
attendees. Very knowledgeable speakers.
Fred Burkhart
Gardner, Linn, Burkhart & Flory, LL
October 2012 attendee
I've been attending this course, period
over a number of years, and it continuesbetter & better.
Steven Fontana
Fontana International
October 2009 attendee
he 11,200 square foot Nobu restaurant
and lounge offers teppanyaki tables, a
sushi bar, a 327-seat lounge and bar, and
a private dining area.
T
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Projected State Bar CLE Credit:
(Including 2.0 Hour Legal Ethics)
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
This is a very comprehensive due diligence
course. The speakers are very knowledgeable
and continually supplement the course
curriculum with real-world war stories. The
course materials are invaluable and include a
great overview of AIA.
Anthony Colesanti
C.R. Bard, Inc.
April 2013/April 2008 attendeee
The course is up-to-date with current case law.
It used a 'real world' example, and the speakers
are dynamic and interested in both the subject
matter and in teaching.
Julie Henrich
Plextronics
October 2012 attendee
[I liked] the fluency and knowledge of the
lecturers on the subject. The content and the
lecturers are excellent. Im sure this course can
help both patent and non-patent attorneys.
April 2011 attendee
During the course, you will interact
instructors and other students while exp
case-study examples and lecture topics
wide range of issues:
common legal-interest agreements
claim construction
freedom to operate
validity assessments
inequitable conduct
patent eligibility, and
ownership/transferability.
The lively and entertaining presen
covers every phase of a due dili
investigation. Beginning with the
involvement of patent counsel, the
navigates a course through early inform
gathering, drawing in the attendees as p
the due diligence team to spot critical p
issues that can make or break a deal. The
also shares effective strategic approach
focus investigations and requests for f
information during the plunge into the
Patent Due Diligencein the AIA Era
Course Description
his course will provide practical guidance for conducting patent due diligence investigati
in todays changing legal environment. The panel will explore how the America Invents
(AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect
due diligence process, while sharing practical techniques and strategies for conducting comp
investigations. These tactics apply to both large and small transactions, irrespective of the na
of the specific transaction or the party you might be representing. Now, more than ever, compa
contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions
private equity dealsneed to rely on due diligence counsel to provide a thorough understand
of the value and risks associated with the transfer of intangible assets.
15.0 Hours
T
Course Faculty
The faculty, considered collectively, have participated in over 100 due diligence evaluations and wyou through the process soup to nuts, whether you are representing the target or the acquirer.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC AND RESTON, VA
ANTHONY GUTOWSKI ANDREW HOLTMANBRYAN DINER
Why Should You Take This Course?
As todays tight economy continues
to challenge the business of clients,
pressure mounts for the patent
practitioner to help clients enjoy a
higher return on investment in deals
involving both acquisitions andlicensing-in of patent rights. By the
same token, those who represent
target companies need to learn the IP
strategies that help maximize income
from either takeovers or licensing-outs.
Attendees consistently grade the
Due Diligence course and its faculty
with some of the highest ratings of any
course that PRG offers. This critically
acclaimed course will help you raise
your game to new levels, whether you
are representing suitors or targets.
Sign up now for this 2 daycourse. Sure, youll miss some time out
of the office. But your return on
investment will be a finely honed
ability to help clients see an increase in
theirreturns on investment.
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room and to facilitate making recommendations
to the client that may ultimately affect the price
and structure of the deal.
On Day 1, from approximately 2:30 to 4:45
p.m., as currently estimated, we will discuss
potential ethical issues and inequitable conduct
hazards that may arise during an IP due
diligence investigation.
The concluding sessions of the course cover
risk-management issues that provide invaluable,
practical suggestions for contractual
considerations, including effective uses of
representations and warranties. Topics discussed
in the course apply both to investigating a
targets patent portfolio and to preparing a
portfolio for suitors.
Youll receive a thorough course book, chock
full of notes, examples, and case law.
The facultypartners at Finneganare all
patent attorneys with extensive experience in
due diligence investigations. The panel has
many years of experience in IP practice and
expertise in several different areas of techn
Throughout the course, the faculty s
interesting war stories, observations
practical tips for conducting the investigat
a comprehensive and efficient manner.
In short, the knowledge youll gain fro
course will enable you to avoid due dili
pitfalls, while more effectively assessingmanaging risks endemic in business transa
involving complex IP rights and issues.
ituated in front of the Neptune Bar, the 5,000-square
foot Neptune Pool offers the perfect place to relax.S
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
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Projected State Bar CLE Credit:
(Including 1.0 Hour Legal Ethics)
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
This course provides a practical framework for
using post-grant tools from both the perspective
of the owner and challenger, and insight on how
they work together.
Matt Rabdau
IP Counsel, Fluke Corporation
October 2012 attendee
The materials are outstanding. I will use as
reference materials in the future. Lecturers
were wide open to questions and very responsive.
Interspersing of war stories and examples kept
the presentation interesting.
Charles Burpee
Warner Norcross & Judd LLP
October 2009 attendee
Ten years ago courts were essentially t
arbiters of patent validity. About 5-6 yea
reexamination suddenly emerged as a p
means for challenging patents, either al
alongside court battles. The reasons f
shift were simple: Would you rather brin
validity attack before an experienced
examiner with technical expertise in the
Central Reexamination Unit where clai
given their broadest reasonable interpr
and do not enjoy a presumption of validitjury in the Eastern District of Texas? The
becomes all the more obvious whe
considers that a reexamination can cancel
eliminate liability for past infringement,
intervening rights to continue a
infringement in the future, open up d
around opportunities, create a more fav
prosecution history, defeat a charge of
infringement, help avoid an injunction,
an inequitable conduct defense, and som
enable a stay of expensive litigation. All
can be achieved at a small fraction of the
Post-Grant Patent Practice:Review and Reexamination
Course Description
he first day of this two-and-a-half-day course focuses on ex parte reexamination and
addresses inter partes reexamination. The second day is dedicated to inter partes revi
Topics covered in the final half day include post-grant review, covered business meth
patent review, and ethical issues related to review proceedings and reexamination. The cou
covers strategies, tactics, best practices and case studies for review and reexamination. The cou
is for both patent practitioners who appear before the PTO in these proceedings, as well as litiga
who must deal with the increasingly common role of PTO proceedings in the context of dispu
15.0 Hours
T
KEVIN B. LAURENCE MATTHEW C. PHILLIPS
OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADTALEXANDRIA, VA
RENAISSANCE IP LAW GROUP LLPPORTLAND, OR
Course Faculty The instructors are experienced at representing both patent owners and accused inin review proceedings and reexaminations. They have taught the Post-Grant Patent Practicecourseyears and continuously update their treatise and slides to provide practical advice based on curreinvolving adversarial post-grant matters. They were actively involved in bar associations efforts to PTO design and implement the new review proceedings created by the America Invents Act (AIA). Thwritten widely on review and reexamination topics for Intellectual Property Today.
Why Should You Take This Course?
The battleground of patent validity is
shifting from courts to the PTO. Review
proceedings, including post-grant
review and inter partes review, are
powerful, fast-track trials before thePatent Trial and Appeal Board. Review
proceedings offer several advantages
over validity challenges in a court
proceeding including cost, predictability,
effectiveness, speed, and the ability to
pursue strategies that would not be
feasible in court. This course explores
these factors and provides training for
participating in review proceedings.
Reexamination remains popular
either alone or alongside court battles.
The PTOs Central Reexamination Unit
provides a forum that can result in
many favorable outcomes, at a smallfraction of the cost of litigation.
Whatever side of the battle you are on,
you must know how to engage in the
new battlefields called review as well as
the existing battlefield called
reexamination.
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litigation or advantageously deployed in
conjunction with litigation.
The Patent Trial and Appeal Board has shifted
the balance in favor of the PTO as the patent
validity battlefield of the future by creating new
more powerful, fast-track, litigation-like review
proceedings, including post-grant review and
inter partes review. Inter partes review providesan opportunity to challenge the validity of a
patent twice: first at the PTO based on printed
publications and subsequently in litigation based
on other available grounds. Stays are being
granted liberally when inter partes reviews are
filed in light of the statutory requirement for
rapid completion of these new proceedings. As
a result, validity challenges are proceeding in
serial fashion. In the first phase of a bifurcated
validity challenge, complicated arguments
regarding the prior art can be rapidly resolved by
trained specialists at the PTO, whereas in the
second phase, less technical arguments
regarding commercial activity or other
invalidating grounds can be resolved by a judge
or jury. This sequential approach can simplify
claim construction and narrow issues for an
infringement portion of the litigation, and thus
may reduce overall costs. Lead counsel in an
inter partes review proceeding must be a
registered patent attorney, but it is possible for
litigation counsel to participate in the proceeding
even if the litigation counsel is not registered.
Integrating the inter partes review and litigation
teams can provide a smooth transition to the
litigation upon completion of the review
proceeding.
Reexamination has often been referred to as
a second bite at the apple, but the bite size
provided by inter partes review is more on par
with that of litigation due to its provisions for
limited discovery. The comparative weakness of
ex parte reexamination is offset by its absence of
estoppel implications. Indeed, the deepest
concerns regarding inter partes review often
focus on its legal estoppel provisions that
prevent a challenger who is unsuccessful in an
inter partes review from attacking a claim in any
forum based on other printed prior art
publications. This concern overlooks the
advantages of this new proceeding and does not
acknowledge that failure to invalidate a claim in
litigation results in much harsher estoppel. The
estoppel of inter partes review will have aconsiderably smaller scope than the estoppel of
a failed district court challenge. In light of the
complexity of many prior art arguments and the
benefits of the serial validity and infringement
cases, consideration of a challenge at the PTO
should not be a back-up plan, as reexamination
often is. Rather, inter partes review should be
used prior to or concurrently with litigation.
For patent challengers, the course provides
training to:
Analyze the advantages and disadvantages
of review and reexamination compared to
litigation
Make well-informed choices between review
proceedings and reexamination
Understand the critical role of review and
reexamination in the context of a dispute
and develop strategies based on anticipated
or concurrent litigation
Appreciate estoppel implications both
official and unofficial of review and
reexamination
Utilize review and reexamination to obtain a
stay or other benefits in related litigation
Unravel the AIAs review statutes and
decipher the PTOs review rules to
understand how reviews are really conducted
Prepare a petition for review or a request for
reexamination that complies with all
requirements and gets granted
Learn what the reexamination statistics really
mean
Advantageously utilize the dif
standards applied for claim interpretat
the PTO and claim construction in litig
as well as the differing burdens of pro
Recognize possible changes to
construction of the claims in the litig
based on the review or reexaminatio
opens up design-around opportu
creates a more favorable prosecution h
for the purpose of claim constructio
impacts estoppel theories
Create intervening rights that elim
liability for past infringement or
continuation of accused infringement
future
Tactically use serial ex parte reexamin
requests
Correctly and strategically use petition
declarations
Understand the repercussions that r
and reexamination can have on settlem
The course balances the perspectiv
patent challengers and patent owners s
above items are also presented from the
of the patent owner. Additionally, the c
provides training for patent owners to:
Avoid, when possible, intervening right
arise via the cancellation or amendme
claims or from mere argument rega
claim scope
Select information to be disclosed to th
from concurrent litigation or other
proceedings
Understand the timing of events in all
issuance PTO proceedings so that you a
caught off guard
Navigate the maze of review
reexamination procedures to
unfortunately common mistakes
as Vegas's nightlife has never been hotter. Plenty of funawaits you as the number of high-profile nightclubs, trendy
lounges, and sizzling entertainment venues continue to grow.L
5/25/2018 PRG Fall 2014 Advanced Courses Catalog
24/3224 www.patentresources.com
Projected State Bar CLE Credit:
(Including 1.0 Hours Legal Ethics)
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
The broad spectrum of available software
patent protection opportunities that appeared
available after State Street BankandAT&T v.
Excel was questioned in the Bilskidecisions. In
its Bilskidecision, the CAFC retreated from the
useful, concrete and tangible result analysis to
tied to a particular machine or apparatus or
transforms a particular article tests. The
Supreme Court found this machine-or-
transformation test useful but too narrow. It
fell back on general principles of abstractness.It also declined to exclude all business methods
from patentability, but it seemed to invite their
close scrutiny. In Mayo v. Prometheus, the
Supreme Court spoke again on abstractness, and
the need to add an inventive concept to a law
of nature. Lower courts as well as the USPTO
continue to struggle with the application of the
Supreme Court's decision and the CAFC decisions
attempting to follow them. WithAlice v. CLS
Bankhaving been taken on certand argued in
March with a decision expected in June, hopes
for a rule on decoding abstractness and f
a decision affecting the value of many com
implemented inventions both exist. Pract
need to understand the signposts left by th
decisons and whatever the new guidance
from the Supreme Court.
Software-based inventions face anothe
Some recent cases have suggested
infringement may be avoided when infr
activity crosses borders or multiple partinvolved in the acts or elements comp
infringement of a claim. The doctrine o
infringement (a/k/adivided infringeme
developed in BMC Resources, In
Paymentech, Muniauction Inc. v. Thomson
and other cases continues to evolve. It
particular problems for proving infringem
more computer-based inventions use proc
storage and specialized data processing s
of others, sometimes located in the c
Using resources in the cloud can i
multiple actors and jurisdictions.
Software Patents: Procuringand Enforcing AfterAlice
his course addresses the difficult and sophisticated task of how best to claim, prosec
and litigate software-based inventions in their rich variety so as to have their patents
not invalid and infringed by the Federal Circuit. But that rich variety requires a variet
disparate claiming, specification drafting, prosecution, and litigating techniques.
The America Invents Act (AIA) impacts software patents in general and business method pat
in particular. Specifically, a new inter partes review proceeding is available during litigation
defendants to challenge certain business method patents at the USPTO on a wide varietinvalidity grounds.
Course Description
15.0 Hours
T
DORSEY & WHITNEY LLPMINNEAPOLIS, MN
WINTHROP & WEINSTINEMINNEAPOLIS, MN
ALDO NOTOANDREWS KURTH LLP
WASHINGTON, DC
STUART HEMPHILL DEVAN PADMANABHAN
Course Faculty The faculty for this course has prosecuted scores of software-related patents, for bmethods and more traditional computer-based technical subject matters, over a collective experience of more than 60 years. Each has also been involved in litigation and licensing of sofrelated patents. They can provide a wide range of viewpoints from which to consider strategprocuring, exploiting and enforcing software patents.
Why Should You Take This Course?
Director Kappos has recently stated that
patents on software are every bit as well
deserved as patents on air flight, electric bulbs
and such more traditional inventions. At the
same time, he acknowledges past, often
inadequate and inconsistent examination of
software patents, but points out improvements
at the USPTO for increasing examination
quality. This is a critical time to get an important
update on software patent law, given the
impact of the America Invents Act (AIA) and
recent and pending CAFC and Supreme Court
decisions, including Alice v. CLS Bank. This
course will cover the different claim drafting,
prosecution, and litigation techniques required
to address the rich variety of software-based
inventions, in the context of current law and
up-to-the-minute court decisions.
UPDATED!
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The course and text address why different
software applications (e.g., Internet-related
software) require special claim drafting,
prosecution or litigation techniques. Claim styles
and limitations designed to meet the somewhat
unclear 101 standards are discussed. This
course also exp