UTC LE
2006
AdvAnced PAtent LAw InstItute
A unique series of presentations by senior USPTO officials,
leading academics, practitioners, and members of the judiciary.
Earn up to 13.50 Hours of Credit Including 1.75 Hours of Ethics Credit
M C L E C r e d i t a v a i l a b l e i n Te x a s a n d C a l i f o r n i a .
C r e d i t a p p l i e d f o r i n V i r g i n i a , N e w Yo r k , a n d P e n n s y l v a n i a .
november 16-17, 2006
usP tO – Main Auditorium
A l e x a n d r i a , vA
SponSored by:
GeorGe MaSon UniverSity School of l aw
the UniverSity of texaS School of l aw
in cooperation with:
United StateS patent and tradeMark office
Major SponSorShip provided by:
2006
AdvAnced PAtent LAw InstItute
n o v e m b e r 1 6 - 1 7 , 2 0 0 6 • u s P t O – M a i n A u d i t o r i u m • A l e x a n d r i a , vA
E a r n u p t o 1 3 . 5 0 H o u r s o f C re d i t I n c l u d i n g 1 . 7 5 H o u r s o f E t h i c s C re d i t
THURSDAY MORNING, NOv. 16, 2006 10:45 a.m. .50 hr ethics 2:45 p.m. .75 hr
Opinions, Willfulness, Scope of Privilege, Standard-Setting and Pooling
Presiding Officer: Stephen G. Kunin An overview of the IP, antitrust and other legal
Waiver
Oblon, Spivak, McClelland, Maier & Nuestadt implications of establishing and participating in
A discussion of key practical and ethical issues
Alexandria, vA standard-setting organizations, including a re-
arising from drafting exculpatory patent opin-
view of the recent decision by the Federal Trade
ions and special problems involving waiver of
Commission in the Rambus case.
8:00 a.m. Registration Opens privilege, including implications of Knorr Bremse.
Adam C. Hemlock, Weil, Gotshal &
Steven P. Weihrouch, Oblon, Spivak, Manges LLP, New York, NY
Includes continental breakfast.
McClelland, Maier & Neustadt, P.C.
Alexandria, VA 3:30 p.m. Break
8:50 a.m. Welcoming Remarks
Stephen G. Kunin, Oblon, Spivak, 11:15 a.m. .75 hr 3:45 p.m. .50 hr
McClelland, Maier & Nuestadt, Alexandria, VA
Strategies for Operating Under the New
Jay P. Lucas, United States Patent and Current Developments in Claim Construction
Continuing Application and Claim Rules
Trademark Office, Alexandria, VA The Federal Circuit is one year post Phillips v
AWH. Where does the court appear to be on The USPTO has proposed new rules that will se-
verely restrict the patent applicant’s ability to
claim construction (including single embodi-
9:00 a.m. .50 hr file continuing applications or requests for con-
ment, power of the specification, and FH ef-
tinued examination, and limit the number of ex-
Patent Quality Initiatives at the USPTO fects), and what the trial courts are doing at the
amined claims without the submission of an ex-
“first instance”/real-world level will be the focus
The presentation will focus on the objectives of amination support document. These proposed
of this session.
the Community Patent Review project for third rules will have a profound effect on patent
party submission of prior art references to pat- Kenneth R. Adamo, Jones Day, Dallas, TX prosecution. The panelists will discuss the key
ent examiners under Rule 1.99. A pilot for the features of the proposed rules and provide sug-
project is expected to begin in 2007. 12:00 p.m. Lunch on Your Own gestions for how to best practice under these
proposed rules, should the USPTO issue them as
Jack B. Harvey, United States Patent and
final without substantial revision.
Trademark Office, Alexandria, VA
THURSDAY AFTERNOON Stephen G. Kunin, Oblon, Spivak,
Manny W. Schecter, IBM Corporation
McClelland, Maier & Nuestadt, Alexandria, VA
Armonk, NY
Presiding Officer: Jay P. Lucas Charles E. Van Horn, Finnegan, Henderson,
United States Patent and Trademark Office Farabow, Garrett & Dunner, L.L.P.,
9:30 a.m. .50 hr Alexandria, vA Washington, DC
Patent Process Reform at the USPTO Reexamination Litigation StRategieS
1:15 p.m. .75 hr
This session includes a discussion of some of the and PRoceSSeS
USPTO’s efforts to reform patent process through Patentable Subject Matter and
initiatives such as the “patent suite of products,” Examination Guidelines 4:15 p.m. .75 hr
accelerated examination of patent applica-
This topic will focus primarily on the current
tions, and peer review of published patent Inside the USPTO’s Central Reexamination Unit
applications. USPTO guidelines for the examination of business
A discussion of the new Central Reexamination
method and e-commerce patents, in light of
Jay P. Lucas, United States Patent and Unit’s internal structure and operations, how the
recent Federal Circuit rulings.
Trademark Office, Alexandria, VA Unit deals with requesters and patent owners,
Edward J. Kessler, Sterne, Kessler, Goldstein & and their experience and results to date.
Fox, P.L.L.C., Washington, DC
10:00 a.m. .50 hr How to Make Reexamination Filings
Examiner-Friendly
E-Filing and E-Commerce at the USPTO 2:00 p.m. .75 hr
USPTO and practitioner perspectives on for-
An overview of the USPTO’s e-filing system, as Obviousness mat, organization, exhibits and presentation of
well as other e-commerce initiatives. arguments that may be considered in reexamination.
A discussion of the current state of obviousness
James E. Beyer, Dinsmore & Shohl LLP law, including the pending KSR Int’l Co. v. Tele- Moderator: David L. McCombs
Dayton, OH flex, Inc. case before the Supreme Court and re- Haynes and Boone, LLP, Dallas, TX
Jay P. Lucas, United States Patent and cent developments at the United States Patent Robert A. Clarke, United States Patent and
Trademark Office, Alexandria, VA and Trademark Office. Trademark Office, Alexandria, VA
William Stryjewski, United States Patent and Christopher A. Cotropia, University of Lissi Mojica Marquis, United States Patent and
Trademark Office, Alexandria, VA Richmond School of Law, Richmond, VA Trademark Office, Alexandria, VA
Hon. Michael R. Fleming, United States David M. O’Dell, Haynes and Boone, LLP
10:30 a.m. Break Patent and Trademark Office, Alexandria, VA Richardson, TX
Phone: 512-475-6700 Fax: 512-475-6876
5:00 p.m. .50 hr 10:30 a.m. .75 hr 1:45 p.m. .75 hr
The Strategic Use of Reexams during the Remedies and Injunctions Patent Suits Against the Government in the
Course of Litigation A practical discussion of current issues relating Court of Federal Claims: A Practitioner’s
A discussion of pre-litigation issues, ex parte vs. to remedies in patent infringement actions, in- Perspective
inter partes filings, motions to stay pending reex- cluding the changing landscape of injunctive This discussion focuses on suits against the Unit-
amination, post verdict considerations, and case relief in view of the U.S. Supreme Court’s deci- ed States pursuant to 28 U.S.C. §1498 for un-
study reviews of recent high profile matters. sion in eBay Inc. v. MercExchange LLC, and authorized manufacture or use of a patented
recent district court decisions applying eBay. invention. It notes both similarities and differ-
David J. Healey, Weil, Gotshal & Manges LLP
Houston, TX Christopher J. Renk, Banner & Witcoff, Ltd. ences between practices in the Court of Fed-
Chicago, IL eral Claims for these suits and in district courts
David L. McCombs, Haynes and Boone, LLP
for patent infringement cases.
Dallas, TX
John Fargo, U.S. Department of Justice
11:15 a.m. .50 hr Washington, DC
5:30 p.m. Adjourn
David Schlitz, Baker Botts LLP, Washington, DC
Fundamentals and Trends in Section 337
Hon. Loren A. Smith, United States Court of
Investigations at the ITC: A Practitioner’s
Federal Claims, Washington, DC
FRIDAY MORNING, NOv. 17, 2006 Perspective
Joshua Lathrop, Navigant Consulting, Inc. 2:30 p.m. Break
Presiding Officer: John F. Witherspoon, New York, NY
Law Office of John Witherspoon,
Bert C. Reiser, Howrey, LLP, Washington, DC 2:45 p.m. 1.00 hr ethics
Washington, D.C.
7:30 a.m. Conference Room Opens Ethical Considerations in Rendering Patent
LUNCHEON PRESENTATION
Includes continental breakfast. Opinions
The presentation examines the ethics, art and
11:45 a.m. Pick Up Box Lunch
philosophy of rendering patent opinions, includ-
8:30 a.m. .75 hr ing ethical requirements which compel a bal-
anced, complete and suitably qualified opinion.
Designing Products and Processes to Avoid 12:15 p.m. .75 hr
Also discussed is the impact of the Knorr-Bremse
Infringement view from the Federal Circuit case on the ethics of opinion practice.
The Federal Circuit has been shrinking the literal A discussion of effective advocacy before the Samuel C. Miller III, Buchanan Ingersoll &
scope of patents, as well as the protection pro- U.S. Court of Appeals for the Federal Circuit. Rooney PC, Alexandria, VA
vided by the doctrine of equivalents. As a re-
Hon. Richard Linn, U.S. Court of Appeals for
sult, with careful planning, patent infringement
the Federal Circuit, Washington, DC 3:45 p.m. .75 hr including .25 hr ethics
can be avoided with near certainty. Learn a
systematic, step-by-step approach for designing Comments and Questions:
products and processes that avoid infringement.
Hon. Roderick R. McKelvie, Covington & Electronic Discovery Landmines to Avoid
Dale S. Lazar, DLA Piper Rudnick Gray Cary Burling LLP, Washington, DC The new electronic discovery rules take effect
Reston, VA
Richard L. Rainey, Covington & Burling LLP December 1, 2006: this session covers key issues
Washington, DC under the new rules and key case law developments
9:15 a.m. .50 hr of interest to all practitioners.
Alan D. Albright, Fish and Richardson P.C.
Indirect Infringement Austin, TX
A discussion of indirect infringement and its ef- FRIDAY AFTERNOON
fect on participants of today’s business climate. 4:30 p.m. Adjourn
This session will explore the differing legal stan- Presiding Officer: Hon. Roderick R. McKelvie
dards for establishing active inducement and Covington & Burling
provide some specific suggestions when litigating
a claim on indirect infringement.
Washington, DC About the Conference
H. Keeto Sabharwal, Blank Rome LLP Join USPTO senior staff, leading practitio-
Washington, DC 1:15 p.m. .50 hr ners, academics and members of the fed-
eral judiciary from a variety of courts and
Options at the District Court forums in the Washington DC area, for two
9:45 a.m. .50 hr
A leading district court judge discusses effective days at the USPTO. The Advanced Patent
Responding to Patent Infringement Claims litigation strategies.
Law Institute provides unique insights into
on Essential Patents Hon. Liam O’Grady, United States District claim construction; standard-setting and
Court for the Eastern District of Virginia,
A discussion of the counterclaims available to a pooling; avoiding patent infringement; rem-
Alexandria, VA
defendant accused of infringing a patent that edies and injunctions; the search process;
has been declared essential in a standard- Comments and Questions: patent reform and USPTO patent quality ini-
setting context.
Hon. Roderick R. McKelvie tiatives. The conference is jointly sponsored
Hilda C. Galvan, Jones Day, Dallas, TX
Covington & Burling LLP, Washington, DC by George Mason University School of Law
Richard L. Rainey, Covington & and The University of Texas School of Law.
10:15 a.m. Break Burling LLP, Washington, DC
Phone: 512-475-6700 Fax: 512-475-6876
C O N F E R E N C E FA C U L T Y
Top Reasons to Attend APLI
KENNETH R. ADAMO EDWARD J. KESSLER RICHARD L. RAINEY
at the USPTO Jones Day Of Counsel Partner
Dallas, TX Sterne, Kessler, Goldstein & Fox, P.L.L.C. Covington & Burling
Washington, DC Washington, DC
The venue—Inside the USPTO in ALAN D. ALBRIGHT
Fish and Richardson P.C. STEPHEN G. KUNIN
Alexandria, vA Special counsel BERT C. REISER
Austin, TX
Oblon, Spivak, McClelland, Maier & Partner
See the beautiful new USPTO campus and
Neustadt Howrey, LLP
collections, with presentations in the Main JAMES E. BEYER Alexandria, VA Washington, DC
Partner
Auditorium of the Madison building in Alexan- Dinsmore & Shohl LLP JOSHUA LATHROP
dria. Easy access via Metro with great shop- Dayton, OH Director CHRISTOPHER J. RENK
ping and restaurants in Old Town Alexandria. Navigant Consulting, Inc. Banner & Witcoff, Ltd.
ROBERT A. CLARKE New York, NY Chicago, IL
Deputy Director of the Office of
Patent Legal Administration DALE S. LAZAR
New Initiatives and Reform at the USPTO United States Patent and Partner H. KEETO SABHARWAL
Get the insider’s perspective on patent quality Trademark Office DLA Piper Rudnick Gray Cary Partner—Intellectual Property
Alexandria, VA Reston, VA Blank Rome LLP
initiatives, patent process reform, plus e-filing
Washington, DC
and e-commerce at the USPTO. HON. RICHARD LINN
CHRISTOPHER A. COTROPIA
U.S. Court of Appeals for the
Associate Professor of Law
Federal Circuit MANNY W. SCHECTER
Intellectual Property Institute
Washington, DC Associate General Counsel,
Opportunities to Hear and Speak with University of Richmond School of Law
Intellectual Property Law
Richmond, VA JAY P. LUCAS
Senior USPTO Officials and Staff IBM Corporation
Deputy Commissioner for Patent Armonk, NY
Senior USPTO staff, from examinations, JOHN FARGO Examination Policy
Director, Intellectual Property Staff United States Patent and
appeals, review, and more will be presenting
Commercial Litigation Branch, Trademark Office DAVID SCHLITZ
and in attendance at this major conference. Civil Division Alexandria, VA Partner, Intellectual Property
Department of Justice Baker Botts LLP
Washington, DC LISSI MOJICA MARQUIS Washington, DC
Director of the Central
How to Make Reexamination Filings
HON. MICHAEL R. FLEMING Reexamination Unit
Examiner-Friendly United States Patent and HON. LOREN A. SMITH
United States Patent and
A two-part discussion by USPTO staff and Trademark Office Senior Judge
Trademark Office
Alexandria, VA United States Court of Federal Claims
practitioners explores (1) the new Central Board of Patent Appeals
and Interferences Washington, DC
Reexamination Unit’s internal structure and DAVID L. MCCOMBS
Alexandria, VA Haynes and Boone, LLP
operations and (2) format, organization,
Dallas, TX WILLIAM STRYJEWSKI
exhibits and presentation of arguments that HILDA C. GALVAN Patent Program Liaison, Office of
may be considered in reexamination. Partner HON. RODERICK R. MCKELVIE Patent Automation
Jones Day Partner
United States Patent and
Dallas, TX Covington & Burling
Trademark Office
Washington, DC
Alexandria, VA
The Intersection of Antitrust and Patents JACK B. HARVEY
United States Patent and SAMUEL C. MILLER III
Standard-setting, economics, patent Special Counsel
Trademark Office
Buchanan Ingersoll & Rooney PC
CHARLES E. VAN HORN
pooling, strategies, and practical solutions Alexandria, VA Partner
Alexandria, VA
for tough issues—it‘s all here, presented by Finnegan, Henderson, Farabow,
leading academics and practitioners. DAVID J. HEALEY DAVID M. O’DELL Garrett & Dunner, L.L.P.
Partner Haynes and Boone, LLP Washington, DC
Weil, Gotshal & Manges LLP Richardson, TX
Houston, TX
HON. LIAM O’GRADY STEVEN P. WEIHROUCH
ADAM C. HEMLOCK Magistrate Judge Partner
Partner United States District Court for the Oblon, Spivak, McClelland, Maier &
Weil, Gotshal & Manges LLP Eastern District of Virginia Neustadt, P.C.
New York, NY Alexandria, VA Alexandria, VA
PLANNING COMMITTEE
STEPHEN G. KUNIN - CO-CHAIR HILDA C. GALVAN DAVID L. MCCOMBS
Oblon, Spivak, McClelland, Maier & Jones Day Haynes and Boone, LLP
Neustadt Dallas, TX Dallas, TX
Alexandria, VA
ADAM C. HEMLOCK CHRISTOPHER J. RENK
JOHN F. WITHERSPOON - CO-CHAIR Weil, Gotshal & Manges LLP Banner & Witcoff, Ltd.
Law Office of John Witherspoon New York, NY Chicago, IL
Washington, DC
EDWARD J. KESSLER
JAMES E. BEYER W. KARL RENNER
Sterne, Kessler, Goldstein & Fox, P.L.L.C.
Dinsmore & Shohl LLP Fish & Richardson P.C.
Washington, DC
Dayton, OH Washington, DC
ANDREW J. DILLON JOSHUA LATHROP
Navigant Consulting, Inc. H. KEETO SABHARWAL
Dillon & Yudell LLP
New York, NY Blank Rome LLP
Austin, TX
Washington, DC
MICHAEL J. ESPOSITO JAY P. LUCAS
The University of Texas School of Law United States Patent and DAVID SCHLITZ
Continuing Legal Education Trademark Office Baker Botts LLP
U S P T O C a m p u s • A l e x a n d r i a , VAVA Austin, TX Alexandria, VA Washington, DC
Phone: 512-475-6700 Fax: 512-475-6876
HOW TO REGISTER R E G I S T R A T I O N F O R P V 0 6
The University of Texas Mail this registration form to:
School of Law
Attn: CLE - PV06
P.O. Box 7759
The University of Texas School of Law, Attn. PV06
P.O. Box 7759, Austin, TX 78713-7759 or fax a copy to: (512) 475-6876
Austin, TX 78713-7759 PLEASE PRINT CLEARLY
WEB: www.utcle.org Bar Card# TX Other State: N/A
FAX: 512-475-6876 Name [ Mr. / Ms. ]
PHONE: 512-475-6700
Firm
Address
City State Zip
Course Binder
The Advanced Patent Law In- Telephone Fax
stitute generates a definitive
Registrant’s Email (required)
IP resource guide. Don’t miss
updated case law, current
Assistant’s Email (optional)
developments, articles and Invoices, confirmations and receipts are emailed to these addresses.
planning strategies — over
500 pages of practical materials. REGISTRATION:
Includes Course Binder and Friday Box Lunch Presentation
Audio CD Set Early Registration Fee due by Wednesday, Nov. 8, 2006 $595.00
The Advanced Patent Law Registration Fee after Wednesday, Nov. 8, 2006 $645.00
Institute presentations are
available on CD. Listen to
USPTO Special Registration Rate $250.00
(increases to $300 after Nov. 8, 2006)
the entire conference or indi-
vidual sessions at your conve- CONFERENCE PUBLICATIONS AND MEDIA
Allow 2–4 weeks from the conference date for delivery.
nience.
Course Binder Without Conference Registration $200.00
eBinder on CD Note: Conference registration includes Course Binder.
Get the entire conference Audio CD Set $175.00
binder on CD, in electronic
PDF format. Only $50 if added eBinder on CD (PDF format) $200.00/$50.00
($200 purchased alone, $50 with registration or purchase of Course Binder or Audio CD Set)
to a registration or purchase
of Course binder or Audio CD
Set. $200 purchased alone. IN-HOUSE CLE: Bring the conference in-house and learn at your convenience .
Allow 2–4 weeks from the conference date for delivery.
In-House CLE In-House CLE for 2—Includes Audio CD Set and Course Binder $750.00
Would your firm like to run an Add participants (includes Course Binder) for $200 each $
in-house version of this con- TOTAL ENCLOSED $
METHOD OF PAYMENT
ference, with full participa-
tory credit? Order In-House
Check (make checks payable to: The University of Texas at Austin)
CLE and we’ll also provide an VISA or Mastercard (sorry, no AMEX or Discover)
---
Audio CD Set for the group
Card #
and a Course Binder for each
participant.
X /
Authorized Signature Exp. Date (mm/yy)
Phone: 512-475-6700 Fax: 512-475-6876
ALEXANDRIA,VA
November 16-17, 2006
CONFERENCE LOCATION
USPTO—Main Auditorium
Concourse Level of the Madison
Building (Main Building on the
USPTO Campus)
600 Dulany Street
Alexandria, VA 22313-1450
Please visit
www.uspto.gov/main/visiting.htm
for directions and information about
public transportation.
Nearby accommodations:
Embassy Suites Hotel Alexandria (Old Town)
1900 Diagonal Road
Alexandria, VA 22314
703-684-5900
SPECIAL RATE $229 (subject to availability)
good through October 16, 2006. Other Advanced Patent Law Programs
Parking: $16 overnight
(subject to change)
•••••••••••••••••••••••••••••
KEY DATES PATENT LAW IN AUSTIN PATENT LAW IN SAN JOSE
Registration & Cancellation October 25-27, 2006 November 29-December 1, 2006
November 8, 2006—5 p.m.
last day for early registration Four Seasons Hotel, Austin, TX The Fairmont San Jose, San Jose, CA
add $50 for registrations
received after this time Join leading practitioners, academics and in- Come to the heart of Silicon Valley, and join lead-
house counsel from the Southwest and Silicon ing judges, practitioners and in-house counsel
November 10, 2006—5 p.m.
Valley in Austin, Texas for two days of presen- from Apple, Google, National Semiconductor,
last day for full refund
tations on a rich array of prosecution and liti- and Hewlett-Packard at the Fairmont San Jose.
November 13, 2006—5 p.m. This conference is jointly sponsored with the Berke-
gation topics. Cool weather, great city, great
last day for partial refunds
music and food—at the Four Seasons Austin. ley Center for Law and Technology at Boalt Hall
$50 processing fee applied
School of Law and Stanford Law School.
November 16, 2006—9 a.m.
For registration information, visit www.utcle.org. For registration information, visit www.utcle.org.
conference begins
UTC LE ADVANCED PATENT LAW INSTITUTE
2006
NON-PROFIT-ORG
U.S. Postage Paid
The University of
T he U niversiTy of T exas aT a UsTin Texas
November 16-17, 2006 • USPTO – Main Auditorium • Alexandria, VA
THE UNIVERSITY OF TEXAS SCHOOL OF LAW School of Law
P.O. Box 7759 • Austin, TX 78713-7759
This program is not printed or mailed at state expense.
M This course has been approved for
Minimum Continuing Legal Educa-
C tion credit by the State Bar of Texas
Committee on MCLE in the amount
L of 13.50 hours, of which 1.75 credit
hour will apply to legal ethics/pro-
E fessional responsibility credit.
E-mail us at
utcle@law.utexas.edu
or call us at
512-475-6700
for more information