Patent Litigation 2009

Co-Chair(s)

Speaker(s)

Program Attorney(s)

Why You Should Attend

Patent litigation is very expensive, damage awards can be large and business disruption is a critical risk. Rapid changes in patent law make it necessary, whether you are plaintiff’s or defendant’s counsel, to ensure that you are up-to-date on the current state of the law and on how to develop successful litigation strategies and tactics. Patent litigation is a potent tool to protect patents. Damage awards, attorney fees and associated costs can easily run into millions of dollars, potentially closing business operations overnight. This course is taught by a faculty of judges and lawyers who have earned national reputations in patent litigation by trying a wide variety of bench and jury patent trials, and provides comprehensive coverage of every phase of a patent lawsuit.

The program schedule has been revised, based on comments from prior year attendees at this popular annual program.

What You Will Learn

New for 2009!

• An expanded opening session focusing on the impact of new case law on patent litigation, including recent Supreme Court and Federal Circuit decisions
• Managing litigation and controlling costs from an in-house and outside lawyer perspective
• In re Bilski: the current status of patentability explained
• The rapid development of permanent injunction jurisprudence over the last year
• Understand the impact of reexamination on litigation strategy and tactics
• Patent damages: entire market value, apportionment, and the impact of Quanta
• Dealing with experts throughout the litigation life-cycle

• How to successfully handle discovery, including e-Discovery, in patent litigation
• Opinion Letters, representation issues, the impact of Knorr-Bremse, and willful infringement after Seagate and Qualcomm

Who Should Attend

Patent litigators and lawyers in patent firms who advise clients in disputes that may lead to litigation; general business litigators whose practice includes patent trials; patent prosecutors whose actions in preparing and prosecuting patents are critical in providing support for the proper claim construction; corporate counsel who will have the responsibility for supervising patent litigation, interpreting its progress for management and pursuing opportunities for settlement.

Please plan to arrive with enough time to register before the conference begins. A continental breakfast will be available upon your arrival.

DAY ONE: 9:00 A.M. - 5:00 P.M.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00 Program Overview

Nagendra (Nick) Setty, Mitchell G. Stockwell

9:15 Recent Developments in Patent Law and Their Impact on Patent Litigation

Seminal Supreme Court and Federal Circuit decisions and their impact on your litigation practice are surveyed. The Tafas v. Doll decision and U.S. Patent and Trademark Office (USPTO) rule implementation and other relevant USPTO actions and their impact on litigation is discussed. The patent legislation in the 111th Congress is analyzed. What’s in store at the USPTO with the new leadership soon to be in place?

Angela Payne James

10:15 Networking Break

10:30 Managing Patent Litigation, Part 1: Successful Results at Reasonable Cost

The economy demands that every business reevaluate expenses and operations. Pre-litigation trends in litigation financing, the expanding market for patents and potential patent litigation insurance are addressed. What alternative billing structures really work for patent cases and where they can go awry? What are the best practices in discovery, including e-Discovery, management? How can expert costs be controlled? What are the successful techniques of handling multi-party litigation?

Christopher O. Green

11:30 Managing Patent Litigation, Part 2: Effective Settlement

The vast majority of patent cases settle. Effective, and efficient, settlement requires as much work and thought as a winning claim construction argument. Effective settlement strategies, including: early case assessment, preparing the client, practical problems of implementing design-arounds, use of reexamination and claim construction, and properly timing ADR are discussed. The unique problems of settling with non-practicing entities, choosing the right type of ADR, and the right person for mediating or arbitrating your case, and navigating the local ADR practices of key patent litigation venues is explored.

F. Leslie Bessenger, III

12:30 Lunch Break

Afternoon Session: 1:45 p.m. - 5:00 p.m.

1:45 Discovery Issues

Over two years after the Federal Rules of Civil Procedure were amended, discovery of electronically stored information (ESI) remains front and center in patent litigation due to the number of potential ESI custodians and the sheer volume of ESI. The ability to avoid ESI discovery problems depends, in part, on how well clients manage and store their ESI before litigation and the accessibility of ESI during litigation. Learn how to advise clients on developing and implementing effective ESI retention and destruction policies, craft litigation hold letters and when to initiate holds, navigate the district courts’ specific discovery rules for patent cases, draft multi-tiered protective orders, including appropriate claw-back provisions in light of Fed. R. Civ. P. 26(b)(5) and new Fed. R. Evid. 502, productively and defensibly search for responsive ESI, and what to do if privileged or work-product protected ESI is inadvertently produced or received.

Audra A. Dial

2:45 Injunctions

Permanent injunction jurisprudence has evolved at a rapid pace over the last year. The heightened analysis that a number of courts are applying to factors, such as irreparable harm and adequacy of monetary relief, and the use of a running royalty and sunset provisions as an alternative to permanent injunctive relief are discussed. The effect of the patentee’s status as a competitor or non-practicing entity, prior licenses, and market factors on the prospects for permanent injunctive relief, and the use of empirical evidence are analyzed. You will learn about other considerations, such as evidentiary hearings, stays of injunctive relief pending appeal, and injunctive discovery.

Holmes J. Hawkins, III

3:45 Networking Break

4:00 Parallel Patent Reexaminations

More and more infringement litigation defendants seek parallel USPTO reexaminations. The USPTO ex parte and inter partes reexamination process is explained. Understand the impact of reexamination on litigation strategy and tactics; cutting-edge issues including collateral estoppel and intervening rights; conflicts between reexamination and court findings, NTP v. RIM and eBay v. MercExchange; and motions for stay based on pending reexamination proceedings.

Matthew A. Smith

5:00 Adjourn

DAY TWO: 9:00 A.M. - 5:00 P.M.

Morning Session: 9:00 a.m. - 12:15 p.m.

9:00 In the Aftermath of In re Bilski

The Federal Circuit’s en banc decision in In re Bilski ostensibly clarified the test for determining whether a particular process constitutes patent eligible subject matter under 35 U.S.C. § 101. The implications of this decision for litigating and licensing not only business method and software patents, but also biotechnology patents are discussed.

Jeffrey R. Kuester

10:00 Opinion Letters

The use of Opinion Letters post-Knorr-Bremse is explored. Proof of willfulness post-In re Seagate Technology and Broadcom v. Qualcomm, the scope of waivers of privilege, advising clients regarding whether and when to obtain an Opinion Letter, and considerations in producing opinions are discussed.

Matthew C. Gaudet

11:00 Networking Break

11:15 Entire Market Value, Apportionment, Quanta and Use Damages

Damages in patent litigation often amount to determining what the patent owner can persuasively prove. Guiding principles are covered, but the focus is on practical experience implementing those principles, including: how can a patentee use the entire market value rule to maximize the value of a patent claim, while maintaining credibility; how does the defense respond; how do you address apportionment; what strategies can you use to press, or defend, potential claims for “use” damages from downstream IP users; when does Quanta impact damages and how will it impact existing licenses; do juries really care that a patentee paid far less for the asserted patents than the damages claim; how do you integrate the damages and liability cases?

Nagendra (Nick) Setty

12:15 Lunch Break

Afternoon Session: 1:45 p.m. - 5:00 p.m.

1:45 Dealing with Experts

Use of testifying and non-testifying experts, discoverability of expert work - product and communications, preparation of expert reports, the scope and content of expert reports and other expert discovery issues are covered.

Mitchell G. Stockwell

2:45 Networking Break

3:00 Expert Direct/Cross Demonstration on Section 112 Defenses

Recent Federal Circuit cases have made clear that defenses under 35 U.S.C. § 112, especially non-enablement, may be as important as more common anticipation and obviousness defenses. This segment will include a demonstration of the direct and cross examination of an expert witness on Section 112 defenses.

Mitchell G. Stockwell (Moderator); A. James Anderson, John P. Fry

4:00 Ethical Issues in Patent Litigation

The bounds of zealous advocacy, the Medtronic cases, lawyer sanctions in Qualcomm, inequitable conduct, and Rule 11 issues are discussed.

Prof. David Hricik

5:00 Adjourn