PRG Magalog for Spring 2013 Advanced Courses Program

ANNUAL SPRING PROGRAM

PATENT RESOURCES GROUP®

Register now at www.patentresources.com

ONLY$199

PER NIGHT!

Choose from 14 great advanced patentlaw courses. See page 3

Updated one-day course focused on thelatest implications for your practice of theAmerica Invents Act! See page 4

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

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

A truly amazing room rate! See page 32

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

PRG’s Spring HotelHyatt Regency Grand Cypress • Orlando, FL • April 7-13, 2013

Join Us in Florida — Get the Training You Needto Be Prepared for the America Invents Act!

IN PATENT LAW

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2 www.patentresources.com

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced CoursesPrograms. If you were a paid attendee at any PRG course in 2012 or already in 2013, you areautomatically a loyalty member and will be entitled to special pricing when you attend any courses at

our 2013 Advanced Courses Programs! And after being a paid attendee at any PRG course in 2013, you’llautomatically be eligible for Loyalty Program benefits in 2014. Loyalty Program members save $200 on tuitionfor each 2- or 3-day Advanced Course and $100 for each 1-day course. (But you'll get special Loyalty savingsof $200 for the one-day AIA course at the 2013 Annual Spring Program!)

About PRG’s Loyalty Program

PRG’s 2013 Annual Spring Program

P

— in Patent Law

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

WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN FLORIDAIN APRIL? BECAUSE PRG’S ADVANCED COURSES:

• Will prepare you for the America Invents Act – all of our returning courses have been updated asneeded to reflect the ongoing impacts on you and your practice of the America Invents Act (AIA) of 2011,including the changes that take effect in March 2013. We're also bringing back an updated version of ourspecial one-day course focusing solely on the AIA, at a special discounted price for Loyalty Members or forattendees taking more than one course at this Conference. This is a course that every practitioner needs totake. We’ll help you avoid the dangers that the AIA poses to practitioners in all areas of patent law.

• Provide an amazing value – if you register for your courses by February 6, 2013, you'll pay the sametuition rates that we’ve been charging since 2005! And if you come to our programs every year, you’llcontinue to benefit from our special Loyalty Program discounts for our Advanced Courses (see below).

• Go beyond the basics, showing how to apply the law to real-world intellectual property issues and tomake calculated legal and business decisions.

• Give you practical insights that you can apply immediately when you get back to the office.

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

• Provide an unparalleled opportunity fornetworking and exchanging ideas with our faculty andyour fellow attendees.

The bottom line – for you and your organization –is that in today’s challenging environment, you can’t affordnot to invest in your future. And attending PRG’s 2013Annual Spring Advanced Courses Program is the safest investmentyou can make. Register soon — spaces will fill quickly!

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www.patentresources.com 3

Hyatt Regency Grand CypressORLANDO, FL • APRIL 7-13, 2013

Please see page 35 for information aboutthe rest of our 2013 program calendar

• 14 advanced patent law coursesare available for the 2013 AnnualSpring Advanced Courses Program.

• Tuition for each three-day courseis $2,195 through February 6 and$2,295 after that date.

• Combined tuition for the PatentSearching Course and Workshopis $2,590 through February 6 and$2,690 after that date.

• Tuition for the one-day course is$995.

• Loyalty Program members save$200 on tuition for all AdvancedCourses at this program!

Three-Day Courses: April 7-9, 2013 (Sun-Tues)

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

Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8Faculty: Tom Irving, Paul Browning, Jill MacAlpine, Deborah Herzfeld, and Karen Cochran

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

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

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

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

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

One-Day Course: April 10, 2013 (Wed)

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

Three-Day Courses: April 11-13, 2013 (Thurs-Sat)

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

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

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

Patent Damages . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21Faculty: Michael Elmer, William Cochran, and Christopher Benson

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

Patent Infringement Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24Faculty: Cole Fauver and Jake Holdreith

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

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Comment from previous attendee:

• “Lecturers, materials, location — everything withPRG exceeds expectations and is of the highestquality.”

— Steve Rost Taft Stettinius & Hollister LLP October 2012 attendee

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

1. The “first inventor to file” system, whichtakes effect on March 16, 2013, and replaces the

“first to invent” system of the current law. Thecourse lecture and materials consider in detailthe provisions of completely rewritten Section102 of Title 35 U.S.C., which expands – bothgeographically and temporally – the universe ofprior art that may render claims unpatentablefor lack of novelty or for obviousness underSection 103, and the applications and patentsto which the new law applies.

2. The new “Post Grant Review”proceeding (so-called by the applicable newstatute, Chapter 31, Sections 321-329) beforethe newly named Patent Trial and AppealBoard, (formerly the Board of Patent Appealsand Interferences). This course considers in

America Invents Act: MonumentalChanges, the Consequences andthe Unanswered Questions

Course Description

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

effective on March 16, 2013. Not only do patent lawyers and agents have to master the new law,we must — during a transition period that will last for many years to come — remain acutely awareof the “old” law and be able to determine whether the old or new law applies under any given setof circumstances.

The content of this course and its accompanying materials were created in an effort to assist patentprofessionals in acquiring a more or less profound understanding of the new law, its consequences,and the important unanswered issues raised by the changes, many of which will not be definitivelyresolved until the Federal Circuit interprets the law many years from now.

A

Course FacultyPaul Gardner, PRG’s academic director, has over 45 years of experience in examining and prosecutingpatent applications, litigating patents, and teaching patent law and Patent Office practice to thousands ofattendees for PRG and the UCLA, University of Washington, and Seattle University law schools. EdwardManzo, a partner at Husch Blackwell, is known for his groundbreaking patent work in the courtroom, theclassroom and the legal community. He has successfully resolved numerous patent and trademarkinfringements and misappropriations on behalf of clients in a variety of industries. He is an adjunct professorat a major law school and the author and editor-in-chief of three respected reference books.

Why Should You Take This Course?

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

Projected State Bar CLE Credit:

Orlando, FL April 10, 2013 (Wed)

Hyatt Regency Grand Cypress

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

Registration deadline: March 15, 2013Register early! Spaces will fill quickly.

6.0 Hours

PAUL GARDNER

PATENT RESOURCES GROUP

ALEXANDRIA, VA

EDWARD MANZO

HUSCH BLACKWELL SANDERS WELSH & KATZ

CHICAGO, IL

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depth the requirements, limitations, potentialrisks and consequences of such a review, whichmay be initiated by any third party afterSeptember 16, 2012, who desires to challengethe validity of any claims in a patent issued orreissued during the nine month period precedinginitiation of the review, on the ground(s) offailure of the claims(s) to comply with therequirements of one or more of Sections 101,102, 103 or 112 (with the exception of a bestmode violation, discussed below).

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

4. A revised inter partes reexaminationproceeding, which became effective onSeptember 16, 2011 (and expired onSeptember 16, 2012 in favor of “Inter PartesReview” of paragraph 3 above), revised byimposing a different requirement for grantinga request for review. The new requirement isthat the information presented in an interpartes review request must provide a showingthat there is “a reasonable likelihood that therequester will prevail” (not merely the prior“substantial new question of patentability”showing under the previous legal standard).

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

6. Revised Section 301 of the statute

which permits any person to submit not only“prior art consisting of patents or printedpublications” believed to have a bearing on thepatentability of a particular patent’s claims, alimitation of the previous version of the statute,but also statements of the patent owner filedin a federal court or Office proceeding whereinthe patent owner expressed a position on thescope of any claim of the particular patent, andalso related documentation (e.g., courtpleadings and/or evidence). Such writtenstatement(s) and related documentation maybe considered by the Office in any proceedingreviewing the patent, but only with respect tointerpretation of the claim(s) involved.

7. New Section 257, which permits theowner of a patent to dispose of potentialinequitable conduct issues via a request for“supplemental examination” of the patent bythe Office to consider, reconsider, or correctinformation believed by the applicant to berelevant. Applying the “substantial newquestion of patentability” standard, the Officewill decide whether to order ex partereexamination based on the informationsubmitted in support of the patent owner’srequest. If reexamination is ordered, the Officewill consider all of the information submitted,not just the patents, printed publications andnewly-added “written statements” to which exparte reexamination requests are otherwiselimited under Chapter 30 of the statute,Sections 301-307.

8. A “Transitional [8 years, beginningSeptember 16, 2012] Program for CoveredBusiness Method Patents,” a post grant reviewproceeding before the Board (mentioned inparagraph 2 above), for challenging the validityof any “covered” business method patent forwhich the petitioner initiating the proceeding(or his/her privy) had been charged withinfringement. (“Covered” patents are thoseclaiming “a method or correspondingapparatus for performing dataprocessing...operations used in the practice...of

a financial product or service” other than in‘technological inventions.’” Sec. 18(d)(1) ofPublic Law 112-29.)

9. New “best mode” law is a step towardglobal harmonization. The statute retains thebest mode disclosure requirement in Section112, Paragraph 1, but eliminates its violation asthe basis for an invalidity or unenforceability(inequitable conduct) defense. Newly rewrittenSection 282(a)(3)(A) of Title 35.

10. “Prioritized Examination,” a procedurefor obtaining expedited examination ofapplications, subject to applicant’s compliancewith certain prerequisites and payment ofsignificant fees, aimed at final disposition ofthe application with 12 months of the Office’sgranting of “prioritized” status.

11. Prior user rights pursuant to rewrittenSection 273, under which a good faith,domestic commercial use of a claimedinvention more than one year before theeffective filing date of a claimed invention (orthe date the claimed invention was firstdisclosed under a limited one-year grace periodprovided in Section 102(b)) is a defense toinfringement.

12. Other changes in the AIA of lesssubstantive concern and/or less frequentlyencountered, will also be considered, albeit toa lesser extent, such as

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

• Very limited patentability of tax strategies,

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

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

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

he Hyatt Regency Grand Cypress will be your home away from

home while you attend PRG's Spring Advanced Courses Program.T

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Orlando, FL April 7-9, 2013 (Sun-Tues)


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

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

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


Comments from previous attendees:

• “Well structured course. Good pace. Very usefultips and information. High relevance to myspecific organization.”

• “I'm entirely new to this field. It was general enough,but detailed enough, for a beginner like myself.”

• “Highly competent instructors.”

The curriculum and text were designed andwritten by twelve practitioners: eightexperienced patent information specialists andfour former examiners with expertise in bothEnglish and foreign language searching. The

curriculum reflects the combined expertise ofLandon IP, which is one of only threecompanies selected by the USPTO to conductpatent searches on its behalf with a view toreducing USPTO examiners’ toweringexamination backlog.

Upon completion of the course, theattendee will have learned:

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

• How to properly scope the search beforeeven beginning.

Art and Science of PatentSearching – Patentability,Validity & Infringement

Course Description

his course comprehensively teaches how to conduct a professional patent search.

It provides direction for determining when a search is needed and what types and sourcesof information should be searched in the process. Patent searching is both an art and a

science. Consequently, search capability improves with practice. But optimum practice requires a solidfoundation for those who seek to conduct searches accurately and efficiently. The course teacheswhen, how, where and why to conduct a search and is appropriate for those who will conduct thesearch or commission it.

Designed for patent attorneys and agents, inventors, paralegals and research managers, the courseand its materials will be understood by anyone from the inexperienced to advanced practitioners.Unlike workshops that are taught by competing database providers, this global course is not tied toa particular search engine, a database product or a patent information service. Instead, the instructorsteach skills that are applicable across databases, both proprietary and public, and without bias towardthe features of a particular search engine. Unique among its many features, the course provides acomparison of the major patent search engines and teaches the strengths, weaknesses and benefitsof the database providers who provide them.

15.0 Hours

T

Course Faculty • The faculty consists of patent searching and analysis leaders at Landon IP who haveexpert search experience as attorneys, patent search instructors, and examiners with the U.S. Patentand Trademark Office (USPTO).

LANDON IP, INC.ALEXANDRIA, VIRGINIA

BRIAN THURMOND JONATHAN SKOVHOLT

... And Optional Patent Searching Workshop


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

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

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

• Issues unique to searching within specifictechnical disciplines.

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

• Approaches to searching non-patentliterature.

• Approaches to reporting search results.

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

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

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

Course materials

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

Optional PatentSearching Workshop

A patent search engine user account isneeded for the Workshop. Please contact PRGif you need assistance in obtaining one.

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

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

Requirements and Prerequisites:

• Completion of the immediately preceding2013 Art and Science of Patent Searchingcourse

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

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

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

elax in the sun by the half-acre,lagoon-style swimming pool.R


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(Including 2.0 Hours Legal Ethics)



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

8:15 a.m. – 11:30 a.m. (Tues)


For example, the rising tension within theFederal Circuit panels on the role of thespecification in claim construction and theincreasing pressure to revisit the Cybor rule ofde novo review of claim construction on appealwill bring important developments forpractitioners in the very near future on what toexpect for claim construction. For thepractitioner, the take-home message remains

to prosecute as if your life depended on literalinfringement and lay the groundwork in thespecification (the “single best guide” to themeaning of a claim term) for a broad claimconstruction. This course, presented by anexperienced faculty, each with a significantdepth of experience, suggests many practicalapproaches with those objectives in mind.

We discuss how to establish patentability

Chemical Patent Practice

Course Description

his up-to-the-minute course teaches the chemical patent practitioner how to usefundamentally sound principles to prepare and prosecute a United States chemical patentapplication in a conservative way and in view of all of the opportunities and pitfalls afforded

by the AIA,to enhance such possibilities as:

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

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

• surviving Festo;

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

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

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

• proving literal infringement of claims in litigation;

• obtaining claims infringed by “downstream” infringers;

• preparing and prosecuting the application to avoid inequitable conduct in view of the FederalCircuit's en banc decision in Therasense and progeny thereof, and the impact of the AIAsupplemental examination procedure that went into effect September 16, 2012; and

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

15.0 Hours

T

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

DUPONT

WILMINGTON, DE

TOM IRVING PAUL BROWNING JILL MACALPINE DEBORAH HERZFELD KAREN COCHRAN

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


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

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and validity under §103 in the post-KSR world,where knowledge and direction equate power.Case studies, involving real U.S. patents, willprovide a framework for creative thinking onthe law of prima facie obviousness.

We will look closely at the guidelines for“best mode” disclosure from a substantive andethical point of view, particularly in view ofchanges made in the AIA. In addition, weconsider the Federal Circuit inequitable conductdecisions in the context of the en bancTherasense decision, including its progeny,many of which will be reviewed for the lessonsthey provide to both in-house and privatepractice lawyers. In fact, the inequitableconduct and best mode discussions provide thetwo hours of ethics that is otherwise sometimeshard to find, particularly on substantive topicsrelated to your practice. The ethics discussionshould be from 8:30 to 10:30 a.m. on thesecond day (as currently estimated). The lastday will include a discussion of a hypotheticalchemical patent problem that synthesizes andreinforces the teachings of the class.

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

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

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


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

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

• “Good overview and reminders of good practicepoints. Great consolidation of information andtips based on recent case law. Very current.”

— Heather Gorman Thomas, Kayden, Horstemeyer & Risley, LLP April 2010 attendee

Course Materials

The definitive treatise, Chemical Patent Law,written and continually updated by theFinnegan, Henderson, Farabow, Garrett &Dunner faculty, with the invaluable assistanceof editor Stacy D. Lewis, will be provided toattendees at the course. This treatise coversvirtually every situation that can arise in thepreparation and prosecution of a chemicalpatent application. It will remain on your deskand in continual use long after the course.

The treatise underwent a complete overhaulin the aftermath of the enactment of the AIAto provide completely updated materials to thecourse attendees. Although the treatise is ofgreat value, the faculty members have foundthat the best vehicle for teaching is the use ofslides, which will be provided in book form toattendees on the first day of class. The slidesbook will contain ample room for note-takingand cross-referencing and, as such, will be avaluable addition to your daily kit of chemicalpatent practice tools. G

njoy the beautiful flowers, landscaping, and statuesalong the resort's trails for walking, jogging, or biking.E

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Orlando, FL April 11-13, 2013 (Thurs-Sat)Hyatt Regency Grand Cypress

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

8:15 a.m. – 11:30 a.m. (Sat)


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

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

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

Comprehensive PCT Practice:How to Master Its Challenges

Course Description

ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itselfas a valuable way for applicants to obtain patent protection in many countries aroundthe world. The number of PCT Contracting States is currently 146 and growing. PCT

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

15.0 Hours

S

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

CONSULTANT ON PCT MATTERS FOR THE WORLD

INTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR

OF THE USPTO OFFICE OF PCT LEGAL ADMINISTRATION

CAROL BIDWELL T. DAVID REED

CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT;FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER

& GAMBLE COMPANY, CINCINNATI, OHIO


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

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

This Comprehensive PCT course discusses: a)when the use of the PCT is advantageous andwhen it is not; b) the effects on patent term

based on the first (priority) application; c)selection of international authorities under thePCT for greatest advantage; d) the informationreceived by applicants during the PCT process;e) entering the national phase; f) upcomingchanges in the PCT; g) use of PCT search andexamination results to utilize the PatentProsecution Highway; h) the effect of theAmerica Invents Act (AIA) on practice underthe PCT; plus a host of other PCT-related topics.In addition, the course presents the growinginformation available from the WIPO Internetsite via the PATENTSCOPE® search tool. TheComprehensive PCT course includes a detailedlook at patent-related provisions of the ParisConvention.

Comments from attendees of past PCT courses:

• “Excellent instructors - thorough coverage ofsubject.”

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

• “Outstanding speakers with practical experience.”

Course MaterialsA comprehensive text is used in the course

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

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(Including 1.0 Hour Legal Ethics)




8:15 a.m. – 11:30 a.m. (Tues)



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

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

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

Answer to the Conundrum.

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

Crafting & DraftingWinning Patents

Course Description

his Crafting & Drafting course marches to a special drummer and focuses on the end result– producing a “winning patent” that will be held literally infringed and not invalid under§112, para. 1, despite the time pressure created by moving to a first-inventor-to-file system

under the America Invents Act (AIA).

The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U.S.district courts have begun to say so openly). For example, the importation of claim limitations fromthe specification into the claims – albeit under the rubric of “claim interpretation” – is now rampant,rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States SurgicalCorp., where the court imported the limitation “pleated” into a broad claim reciting a surgical meshplug used for hernia repair, relying heavily in doing so on the “Summary of the Invention” thatdescribed a plug having pleats. The court repeatedly referenced the Summary of the Inventionthroughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent didrecite a pleated plug, without even mentioning, let alone reconciling, the “immutable” doctrine ofclaim differentiation that should have sustained the broad claims.

Claim interpretation is only one chaos region. There are others where the Federal Circuit case law isequally inconsistent, including the law concerning the written description requirement, means-plus-function clauses, the doctrine of equivalents, and prosecution history estoppel.

This creates an immense dilemma for conscientious patent practitioners trying to write and prosecutepatent applications that will provide their clients with the patent protection they deserve. Which casesshould be relied on, and which should be ignored?

15.0 Hours

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

DLA PIPER US LLPRESTON, VA

KENYON & KENYON

NEW YORK, NY

JOHN TSAVARISDALE LAZAR


Learn the areas of chaos in FederalCircuit jurisprudence of primaryconcern to practitioners who prepareand prosecute patents. The course willfocus on a series of cases where thepatent owner lost, not because ofwhat the litigators did, but because ofhow the patent practitioner draftedand prosecuted the application.Compounding the problem is the timepressure created by moving to a first-inventor-to-file system under theAmerica Invents Act (AIA) and theanticipated increase in the filings ofprovisional applications — with theirmany traps for the unwary. The coursewill teach you how to write provisionalapplications and draft and prosecutenon-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 itspredecessor courts that has a material bearingnow, today, and in the foreseeable future, onhow we must successfully:

1. Prepare for drafting the application;

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

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

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

5. Balance the accomplishments of (1)through (4) against, first, increased costs ofcrafting and drafting that sometimesaccrue and, second, their effect on thelength of the patent term that will result,and third, the time pressure created bymoving to a first-inventor-to-file systemunder the AIA.

Crafting & Drafting is not a survey coursecovering the broad landscape of patentprosecution or a workshop. Instead the coursedrills deeply into the six specific areas of FederalCircuit chaos that have most seriously andfrequently destroyed the value of patents. Wewill focus on what we can do as patentprosecutors to prepare and prosecuteapplications that are immune from the chaos.

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

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

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

Who Should Take This Course?

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

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

Course Materials

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

he upper pool deck is a great place to unwind after

you are through with your courses for the day.T


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

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8:15 a.m. – 11:30 a.m. (Tues)



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

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

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

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

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

Actual Demonstrations

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

“Designing Around”Valid U.S. Patents

Course Description

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

function. The result has been an unmitigated disaster, often (but not always) reading limitationsinto the claims that the examiner did not require to establish patentability over the art of record.In fact, the court has often overridden the examination process, undermining the public noticefunction of claims ab initio. This course will explore the current condition of claim construction indetail and explain how competitors can use it to their advantage, even when the claims on theirface are literally infringed.

15.0 Hours

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

PATRICK BURNS

GREER, BURNS

& CRAIN, LTD. CHICAGO, ILLINOIS

JOHN PINKERTON

ROSE WALKER

DALLAS, TEXAS

PATRICIA PRIOR

GREER BURNS & CRAIN LTD.CHICAGO, IL

ROBERT TURNER

JONES DAY

DALLAS, TEXAS

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Surgical Corp. and Nystrom, the no-infringement-by-equivalents cases of Slimfold,Laitram and London, and the super landmark,no-equivalents-at-all after-prosecution-history-estoppel case of Festo IX. These and othercases are presented in literal, graphic clarity.

How to Draft Infringementand Noninfringement Opinions

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

Course MaterialsThe two-volume text for “Designing

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

elax in a Hammock by Lake Windsong,the resort's private lake.R

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8:15 a.m. – 11:30 a.m. (Sat)



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

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

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

— Glenn Smith Bausch & Lomb, October 2008 attendee

• “This course provided a great overview oflicensing issues and anecdotal scenarios givingrise to said issues.”

— Andrew Weber Honigman Miller Schwartz and Cohn LLP April 2012 attendee

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

Drafting PatentLicense Agreements

Course Description

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

The course lays the groundwork for a clause-by-clause examination of all significant elementsof the patent licensing agreement. The practical questions always focused on are how and whethereach element is sufficient to serve the business needs of the parties while remaining legally viable.The main components of typical licensing agreements, from the opening part through the executionand authentication provisions, are examined in detail. Practical, hypothetical illustrative examples areused, often in workshop form, with carefully crafted problem handouts distributed to the attendeesduring the course.

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

15.0 Hours

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

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

D. BRIAN KACEDOND. PATRICK O'REILLEY WILLIAM PRATT


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

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Legal ethics in license negotiations will bepresented during the afternoon session on Day2 and in misuse issues during the morningsession on Day 3, as currently estimated.

Course Materials

The text for the course is the Seventh Editionof the classic, Drafting Patent LicenseAgreements (BNA), by Brian G. Brunsvold, D.

Patrick O’Reilley and D. Brian Kacedon. Thethoroughness of the text and accompanyingslides will minimize the need for note-taking atthe program. Moreover, this Sixth Editionincludes a computer disk, which has a set ofform paragraphs that can be incorporated,with careful editing, into a license agreementto be prepared by the course attendee.

The hardcopy edition of the course text willbe given to each attendee at the program. Thevolume containing the printed slides that willbe used throughout the lectures will also beprovided at the course; this volume will includeextensive license drafting workshop materialsand Justice Department licensing guidelines.G

et the soothing sights and sounds of the pool'swaterfall melt away the worries of the day.L

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Orlando, FLApril 11-13, 2013 (Thurs-Sat)Hyatt Regency Grand Cypress


8:15 a.m. – 11:30 a.m. (Sat)


Federal Circuit Law(2011-2013)

America Invents Act of 2011 (AIA)

The AIA was signed into law by President Obama on September 16, 2011, and represents, by manyinterpretations, the most significant change to the U.S. patent system since 1952. The Act, amongother things, initiates a “first-inventor-to-file” system (FITF), and includes provisions on post grantreview (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, arevised “grace period” and redefinition of prior art to include subject matter that is “otherwiseavailable to the public,” expands the defense of prior commercial use, retains best mode as adisclosure requirement, but removes best mode as a ground of invalidity, and significantly altersthe false marking statute. But those are just the highlights. Apart from the sweeping changes,including a rewrite of Section 102, the Act has sections that will raise questions for years to comeuntil resolved through the courts.

Some portions of the Act became effective immediately – other portions variously become effective1 year or 18 months after signing. In general, the FITF portions become effective for applicationsfiled on or after March 16, 2013, and for years to come, practitioners will have to practice underparallel systems – the “old” law and the “new” law. The lecturers will explain, as appropriate,how the results in particular cases may be affected by the AIA.

Course Description

f you have not been reading and closely analyzing all of the Federal Circuit’s patent opinionsduring the past years, you may unwittingly be flying blind in some areas of your practice.In virtually every area of patent practice, surprising and often startling opinions are

emanating from the court. Often those opinions are at variance with established precedent, butwithout any admission or acknowledgement of the variance by the panel majorities despite pointed,compelling demonstrations thereof in dissents and concurrences. This course provides deep insightinto the Federal Circuit’s opinions over the past two years and tells you what you need to know tocontinue to be an effective practitioner. As Chief Judge Rader opines, by understatement, thesecases “must leave practitioners in a quandary.” Indeed! Clearly ex parte practice is not what itonce was.

15.0 Hours

I

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

GALE PETERSON

COX SMITH

SAN ANTONIO, TX (FORMER TECHNICAL

ADVISOR TO THE LATE CHIEF

JUDGE MARKEY)

SHARON ISRAEL

MAYER BROWN LLPHOUSTON, TX

(FORMER LAW CLERK TO

CIRCUIT JUDGE LOURIE)

JON HOKANSON

LEWIS BRISBOIS BISGAARD &SMITH LLP, LOS ANGELES, CA

(FORMER TECHNICAL

ADVISOR TO THE LATE

CIRCUIT JUDGE MILLER)

KARA STOLL

FINNEGAN, HENDERSON, FARABOW,GARRETT & DUNNER, LLP

WASHINGTON, DC(FORMER LAW CLERK TO CIRCUIT

JUDGE SCHALL)


Each week the Federal Circuitpublishes opinions that materially“clarify” and sometimes “alter”existing practice. One cannotcompetently practice as a patentattorney today, in prosecution,litigation, counseling or licensingwithout an understanding of theFederal Circuit’s most recent opinions.The distinguished faculty of FederalCircuit Law (2011-2013) will expertlyguide you through two years of relevantand up-to-the-minute cases in aninteractive lecture format thatencourages active attendeeparticipation. Moreover, lecturers willdiscuss new cases in the context of priorcases (many outside the two-year timespan), thus giving you not only “currentlaw,” but also a perspective on how thelaw has changed.

INCLUDING COMMENTARYon the America Invents Act

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

The court also continually issues panelopinions that do not necessarily overturn priorpanel opinions, but significantly limit the same.An example is In re Katz Interactive CallProcessing Patent Litigation (2011), that limitsWMS Gaming, Inc. v. International GameTechnology (1999) and Aristocrat TechnologiesAustralia Pty Ltd v. International GameTechnology (2008), in the area of means-plus-function limitations. Is Katz a “narrowexception,” as characterized by a panelmajority in Ergo Licensing v. CareFusion (2012),or has the court gone too far in followingWMS, as Judge Newman advocated in dissent?

One of the areas that harbors the mostunsettling and startling developments is thecourt’s linking of claim construction to thewritten description requirement, an area that,according to Chief Judge Rader, has become“opaque to the point of obscuring other areasof this court’s law.” This linking has resulted ina number of seemingly inconsistent panelopinions, especially in instances where thepatent-in-suit has facially broad claims, but anarrowly drafted specification. In Ariad

Pharmaceuticals, Inc. v. Eli Lilly Co., the courten banc confirmed that there is a separatewritten description requirement that appliesoutside of the priority context—that separateand apart from whether the specificationenables the claims, the specification mustcontain a “written description” of theinvention. Nevertheless, the court remainssplintered on this issue, and several judgesbelieve that the invalidation of a claim on thebasis that it is broader than the inventiondescribed in the specification is inconsistentwith the Federal Circuit’s rule of claimconstruction that embodiments from thespecification should not be imported aslimitations to the claims. Also, in CrownPackaging Technology, Inc. v. Ball MetalBeverage Container Corp. (2011), the court, inan opinion by District Judge Whyte, N.D. Calif.,sitting by designation, and over a dissent byCircuit Judge Dyk, reversed a district court’sconclusion that the specification lackedsufficient written description support given thebreadth of the claims, noting that originalclaims, in some instances, may provide writtendescription support, despite statements to thecontrary in Ariad. Nevertheless, Judge Moore,writing for the court in Boston Scientific Corp.v. Johnson & Johnson (2011), reiterated the“rule” from Regents of the Univ. of Cal. v. EliLilly & Co. (1997) that “[a] written descriptionof an invention involving a chemical genus, likea description of a chemical species, ‘requires aprecise definition, such as by structure,formula, [or] chemical name,’ of the claimedsubject matter sufficient to distinguish it fromother materials.”

Another “hot” topic is “joint infringement.”The Federal Circuit issued its en banc decisionin Akamai Technologies, Inc. v. LimelightNetworks, Inc. and McKesson Technologies,Inc. v. Epic Systems Corp., but avoidedanswering the fundamental question. As aresult, joint infringement may depend onwhether a claim may avoid a conclusion thatmultiple entities are required to infringe if theclaim simply defines the “environment” inwhich infringement must occur per AdvancedSoftware Design Corp. v. Fiserv, Inc. (2011).

The Federal Circuit continues to surprise thebar in other areas as well with its statutoryinterpretations. For example, in AugustTechnology Corp. v. Camtek, Ltd. (2011), thecourt rejected a jury instruction based on theAIPLA’s model jury instructions, and concludedthat a device may be the subject of an offer forsale prior to Its “being ready for patenting,”but also concluding that there is no actual offerfor sale until after conception.

Also, practitioners writing applications forcomputer-aided inventions must thoroughlyunderstand the implications of cases such asErgo Licensing v. CareFusion (2012), holdingclaims calling for a “programmable controlmeans” invalid for failure to disclose acorresponding algorithm — although suchdevices are "off the shelf" devices. And NoahSystems v. Intuit (2012) holding claims invalidbecause the disclosed algorithm did notimplement all claimed steps.

Litigation practitioners will be interested inIn re Bill of Lading (2012), setting out the

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he resort's private 21-acre Lake Windsong is the perfect place to

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pleading requirements for direct, contributoryand induced infringement.

But the pendulum swings. After theSupreme Court’s opinion in KSR InternationalCo. v. Teleflex, Inc. (2007), seemingly rejectingat least a rigid showing of a motivation tocombine reference teachings, the validity ofmany patents drawn to mechanical and manyelectrical inventions under § 103 becamedoubtful. However, the pendulum appears tobe swinging back — Judge (now Chief Judge)Rader’s dissent in Media TechnologiesLicensing, LLC v. Upper Deck Co. (2010) that“[l]urking just beneath the surface of thiscourt’s blindness to the underlying factssupporting non-obviousness is a bias againstnon-technical arts,” seems to have sparked(albeit not in that case) a renewed view of therequirement for motivation. Nevertheless,some panels of the Federal Circuit now permitreliance on “common sense” to find patentsinvalid under § 103, — and more egregiously,despite the lack of any reference supportingthe same. When this will end is anybody’sguess. But Chief Judge Rader’s opinion inUnigene Laboratories, Inc. v. Apotex, Inc.(2011), suggests that the court will increasinglyinsist on some showing of motivation, thusperhaps swinging the pendulum back pre-KSR.This course examines the Federal Circuit’s post-KSR cases in detail. Will the many areas ofinequitable conduct currently in doubt beresolved by the Federal Circuit’s en banc viewin Therasense? And the court’s adoption of a“but-for-plus” standard of materiality?Doubtful — but maybe. For example, how doeswitness credibility impact on “intent”?Compare Aventis Pharma v. Hospira (2012)with 1st Media v. Electronic Arts (2012). Andwhat about the flood of cases held backpending the Federal Circuit’s decision inTherasense? The course will examineTherasense in detail, with suggestions oncomplaince with Rule 56(a). The AIA alsooffers “supplemental examination” which may“cure” alleged inequitable conduct. Claims oflegal malpractice are increasing at an alarmingrate. The Federal Circuit has provided somesolace in Immunocept, LLC v. Fulbright &Jaworski LLP (2007), holding that it hasjurisdiction of legal malpractice claims undercertain circumstances. But the Supreme Courthas granted cert. in Gunn v. Minton (Tex. 2011)which challenges the Federal Circuit's view.Indeed, Judge O'Malley has actively dissentedin several cases in 2012 voicing her view thatlegal malpractice cases belong in state court.In addition, though, what conduct is subject tosanctions? The Federal Circuit continues toissue opinions that affect the basic practice ofpatent law.

The Supreme Court has also been active indeveloping the patent law, often rebuffing theFederal Circuit for failing to adhere to SupremeCourt precedent. For example, in In re Bilski,the Federal Circuit attempted to clarify the testfor determining whether a claim recitespatentable subject matter under § 101 byholding that its “machine or transformationtest” is the sole and exclusive inquiry. TheSupreme Court promptly rejected the FederalCircuit’s machine or transformation test as thesole test for patentable subject matter, butdeclined to articulate a clear test to replace theFederal Circuit’s test thus leaving a vacuum forthe Federal Circuit to fill. The Supreme Courtalso thoroughly rejected the Federal Circuit'sview of § 101 in Mayo Collaborative Servicesv. Prometheus Labs. (S.Ct. 2012), but theFederal Circuit responded in Myriad (2012) ina 106-page opinion continuing to advocate itsview of § 101. These and other cases involving§ 101 will be examined in detail.

For example, a panel in CyberSource Corp. v.Retail Decisions, Inc. (2011), questioned thevalidity of Beauregard-type claims, but as apanel opinion could not overturn Beauregard.Does that signal the demise of such claims? Andthe court has taken CLS Bank v. Alice Corp.(2012) en banc to again address the issue ofpatent eligibility. In other areas, the FederalCircuit has quashed long-standing abuses. InUniloc USA, Inc. v. Microsoft Corp. (2011), forexample, the Federal Circuit held, in the area ofdamages, that “as a matter of Federal Circuitlaw that the 25 percent rule of thumb is afundamentally flawed tool for determining abaseline royalty rate in a hypotheticalnegotiation.” The 25% rule, used for morethan a decade, thus disappears. Indeed, inLaserDynamics v. Quanta Computer (2012), theFederal Circuit further narrowed the entiremarket value rule almost to oblivion.

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

Those are but highlights. Federal Circuitopinions even over the brief span of two yearshave created law that practitioners must know– especially in light of the changing compositionof the court. Additionally, although the focus ison the Federal Circuit, recent Supreme Courtcases are addressed as well. For example, theSupreme Court has granted cert. in Bowman v.Monsanto (2012) raising issues of infringementpotentially having broad implications to thebiotech community. The Supreme Court may,once again, rebuff the Federal Circuit's rationale.

Smoothing the Troubled Waters?

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

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

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

Course MaterialsThe full substance of the course is captured

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


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

— Steven Fontana Fontana International October 2009 attendee

• “Thorough review of each topic and each CAFCdecision. Good discussions among speakers andattendees. Very knowledgeable speakers.”

— Fred Burkhart Gardner, Linn, Burkhart & Flory, LLP October 2012 attendee

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8:15 a.m. – 11:30 a.m. (Sat)


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

Topics covered in this course include:

• General principles of patent damages

• Actual damages and reasonable royaltiesunder 35 USC §284

• Steps to calculate a reasonable royalty

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

• Enhanced damages and willful infringement

• Comparative analysis of patent damages inUS with other countries G

Patent Damages

Course Description

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

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

15.0 Hours

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

MICHAEL C. ELMER

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

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

COCHRAN FREUND & YOUNG, LLC

FORT COLLINS, DENVER AND

BOULDER, COLORADO

WILLIAM W. COCHRAN CHRISTOPHER BENSON


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

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8:15 a.m. – 11:30 a.m. (Sat)



• “Bryan, Tony and Andy are dynamic, veryexperienced with lots of tips and past cases toshare.”

— Jennifer Arnold MBM Intellectual Property Law April 2011 attendee

• “The course is up-to-date with current case law.It used a 'real world' example, and the speakersare dynamic and interested in both the subjectmatter and in teaching.”

— Julie Henrich Plextronics October 2012 attendee

• “[I liked] the fluency and knowledge of thelecturers on the subject. The content and thelecturers are excellent. I’m sure this course canhelp both patent and non-patent attorneys.”

— April 2011 attendee

During the course, you will interact withinstructors and other students while exploringcase-study examples and lecture topics on awide 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 presentationcovers every phase of a due diligenceinvestigation. Beginning with the initialinvolvement of patent counsel, the panelnavigates a course through early information-gathering, drawing in the attendees as part ofthe due diligence team to spot critical patentissues that can make or break a deal. The panel

Patent Due Diligencein the AIA Era

Course Description

his course will provide practical guidance for conducting patent due diligence investigationsin today’s changing legal environment. The panel will explore how the America Invents Act(AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the

due diligence process, while sharing practical techniques and strategies for conducting completeinvestigations. These tactics apply to both large and small transactions, irrespective of the natureof the specific transaction or the party you might be representing. Now, more than ever, companiescontemplating commercial transactions—be they licensing, corporate mergers, acquisitions, orprivate equity deals—need to rely on due diligence counsel to provide a thorough understandingof the value and risks associated with the transfer of intangible assets.

15.0 Hours

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Course FacultyThe faculty, considered collectively, have participated in over 100 due diligence evaluations and will takeyou through the process “soup to nuts,” whether you are representing the target or the acquirer.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC AND RESTON, VA

ANTHONY GUTOWSKI ANDREW HOLTMANBRYAN DINER


As today’s tight economy continuesto challenge the business of clients,pressure mounts for the patentpractitioner to help clients enjoy ahigher return on investment in dealsinvolving both acquisitions andlicensing-in of patent rights. By thesame token, those who representtarget companies need to learn the IPstrategies that help maximize incomefrom either takeovers or licensing-outs.

Attendees consistently grade theDue Diligence course and its facultywith some of the highest ratings of anycourse that PRG offers. This criticallyacclaimed course will help you raiseyour game to new levels, whether youare representing suitors or targets.

Sign up now for this 2 ½ daycourse. Sure, you’ll miss some time outof the office. But your return oninvestment will be a finely honedability to help clients see an increase intheir returns on investment.

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also shares effective strategic approaches tofocus investigations and requests for furtherinformation during the plunge into the dataroom and to facilitate making recommendationsto the client that may ultimately affect the priceand structure of the deal.

On Day 1, from approximately 2:30 to 4:45p.m., as currently estimated, we will discusspotential ethical issues and inequitable conducthazards that may arise during an IP duediligence investigation.

The concluding sessions of the course cover

risk-management issues that provide invaluable,practical suggestions for contractualconsiderations, including effective uses ofrepresentations and warranties. Topics discussedin the course apply both to investigating atarget’s patent portfolio and to preparing aportfolio for suitors.

You’ll receive a thorough course book, chockfull of notes, examples, and case law.

The faculty—partners at Finnegan—are allpatent attorneys with extensive experience indue diligence investigations. The panel has

many years of experience in IP practice andexpertise in several different areas of technology.Throughout the course, the faculty sharesinteresting “war stories,” observations, andpractical tips for conducting the investigation ina comprehensive and efficient manner.

In short, the knowledge you’ll gain from thiscourse will enable you to avoid due diligencepitfalls, while more effectively assessing andmanaging risks endemic in business transactionsinvolving complex IP rights and issues. G

eed a break from relaxing?Challenge yourself on the

24-foot rock climbing wall.N

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8:15 a.m. – 11:30 a.m. (Sat)



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

— Steven Berryman, Quarles & Brady LLP April 2010 attendee

• “Good overview of entire litigation process withenough insight and detail to be relevant to abroad audience.”

— Bill Hardie, W. L. Gore & Associates April 2012 attendee

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

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

The course includes a detailed treatment ofthe America Invents Act and how it isimpacting litigation right now, including:

• Provisions restricting joinder of multipledefendants in a single action

• Elimination of the best mode defense

• Prior commercial use defense

• Virtual marking and limitations on falsemarking lawsuits

Course MaterialsThe course is based on the thoroughly-

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

Patent Infringement Litigation

Course Description

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

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

15.0 Hours

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ROBINS, KAPLAN, MILLER & CIRESI, LLPMINNEAPOLIS, MN

COLE M. FAUVER JAKE HOLDREITH

Course FacultyThe course is taught by highly experienced trial lawyers at Robins, Kaplan, Miller & Ciresi, LLP, whoserecord of victories in patent cases is truly remarkable and includes: Personal Audio v. Apple ($12 millionjudgment, post-trial motions pending); AMD v. Samsung (case involving seven affirmative patents and sixcounterclaim patents, confidential settlement); Pitney Bowes v. Hewlett-Packard ($400 million); Fonar v.General Electric ($110 million); Atlantic Richfield et al v. Unocal ($69 million); Honeywell v. Minolta ($96million); Honeywell v. JVC ($30 million); St. Clair v. Canon ($34 million); St. Clair v. Sony ($25 million);Grantley v. Clear Channel Communications ($89 million); TriStrata Technology v. Mary Kay ($43 million);Eolas v. Microsoft (confidential settlement after remand); Ricoh v. Pitney Bowes (defense verdict affirmedon appeal); General Motors v. General Electric (summary judgment of invalidity, affirmed on appeal).


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

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alm trees? Sunshine? Blue skies?You must be in Orlando, Florida!P

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


Comment from previous attendee:

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

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

Course Focus

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

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

Course Description

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

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

16.5 Hours

D

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

FISH & RICHARDSON PCBOSTON, MA • MINNEAPOLIS, MN • WASHINGTON, DC • NEW YORK, NY • WILMINGTON, DE

JANIS FRASER TERRY MAHN W. CHAD SHEAR MARK ELLINGER


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

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

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

Course Highlights

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

examples. The increasing importance of thepharmaceutical label as a way to extend the lifecycle of an approved drug is explored andspecific strategies proposed.

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

Course Materials

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

ou will never forget the wonders of nature

that surround you at this amazing resort.Y

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8:15 a.m. – 11:30 a.m. (Tues)



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

— Charles Burpee Warner Norcross & Judd LLP October 2009 attendee

• “This course provides a practical framework forusing post-grant tools from both the perspectiveof the owner and challenger, and insight on howthey work together.”

— Matt Rabdau IP Counsel, Fluke Corporation October 2012 attendee

The America Invents Act (AIA) shifted thebalance even further in favor of the PTO as thepatent validity battlefield of the future bycreating new more powerful, fast-track,litigation-like review proceedings, including

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

Course Description

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

Ten years ago courts were essentially the sole arbiters of validity. About 5-6 years ago,reexamination suddenly emerged as a popular means for challenging patents, either alone oralongside court battles. The reasons for that shift were simple: Would you rather bring your validityattack before an experienced patent examiner with technical expertise in the PTO’s CentralReexamination Unit where claims are given their broadest reasonable interpretation and do notenjoy a presumption of validity, or a jury in the Eastern District of Texas? The answer becomes allthe more obvious when one considers that a reexamination can cancel claims, eliminate liabilityfor past infringement, create intervening rights to continue accused infringement in the future,open up design-around opportunities, create a more favorable prosecution history, defeat a chargeof willful infringement, help avoid an injunction, bolster an inequitable conduct defense, andsometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction ofthe cost of litigation or advantageously deployed in conjunction with litigation.

15.0 Hours

T

KEVIN B. LAURENCE MATTHEW C. PHILLIPS

STOEL RIVES LLPSALT LAKE CITY, UT

RENAISSANCE IP LAW GROUP LLPPORTLAND, OR

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


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

The America Invents Act (AIA) shiftedthe balance even further in favor of thePTO as the patent validity battlefield ofthe future by creating new, morepowerful, fast-track, litigation-likereview proceedings, including post-grant review and inter partes review.

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

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post-grant review and inter partes review. Interpartes review provides an opportunity tochallenge the validity of a patent twice: first atthe PTO based on printed publications andsubsequently in litigation based on otheravailable grounds. Stays are expected to begranted liberally when inter partes reviews arefiled, given the statutory requirement for rapidcompletion of these new proceedings. As aresult, validity challenges are likely to proceed inserial fashion. In the first phase of a bifurcatedvalidity challenge, complicated argumentsregarding the prior art can be rapidly resolvedby trained specialists at the PTO, whereas in thesecond phase, less technical argumentsregarding commercial activity or otherinvalidating grounds can be resolved by a judgeor jury. This sequential system can simplify claimconstruction and narrow issues for aninfringement portion of the litigation, and thusmay reduce the overall costs. Lead counsel inan inter partes review proceeding must be aregistered patent attorney, but it is possible forlitigation counsel to participate in theproceeding even if the litigation counsel is notregistered. Integrating the inter partes reviewand litigation teams can provide a smoothtransition to the litigation upon completion ofthe review proceeding.

Reexamination has often been referred to asa second bite at the apple, but the bite sizeprovided by inter partes review is more on parwith that of litigation due to its provisions forlimited discovery. The comparative weakness ofex parte reexamination is offset by its absenceof estoppel implications. Indeed, the deepestconcerns regarding inter partes review oftenfocus on its legal estoppel provisions thatprevent a challenger who is unsuccessful in aninter partes review from attacking a claim in anyforum based on other printed prior artpublications. This concern overlooks theadvantages of this new proceeding and doesnot acknowledge that failure to invalidate aclaim in litigation results in much harsherestoppel. The estoppel of inter partes reviewwill have a considerably smaller scope than theestoppel of a failed district court challenge. Inlight of the complexity of many prior artarguments and the benefits of the serial validityand infringement cases, consideration of achallenge at the PTO should not be a back-upplan, as reexamination often is. Rather, interpartes review should be used prior to orconcurrently with litigation.

Whatever side of the battle you are on, youmust know how to engage in the newbattlefields called review as well as the existingbattlefield called reexamination.

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

• Ex parte reexamination

• Inter partes reexamination

• Post-grant review (new under the AIA)

• Inter partes review (new under the AIA)

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

• Reissue

• Supplemental examination (new under theAIA)

The course covers strategies, tactics, bestpractices and case studies for reexaminationand reissue. In addition, the course will coverthe statutory and regulatory framework for theAIA’s new review proceedings andsupplemental examination, as well as lessonsfrom early proceedings. The course is for bothpatent practitioners who appear before the PTOin these proceedings, as well as litigators whomust deal with the increasingly common role ofPTO proceedings in the context of disputes.

For patent challengers, the course providestraining to:

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

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

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

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

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

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

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

• Learn what the reexamination statistics reallymean

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

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

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

• Tactically use serial ex parte reexaminationrequests and protests in reissue

• Correctly and strategically use petitions anddeclarations

• Understand the repercussions thatreexamination and review can have onsettlement

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

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

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

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

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

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

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

• Master the recapture rule in reissueapplications

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

Many other topics related to post-grant PTOproceedings are covered in the course. Legalethics in the context of reexamination andreissue prosecution will be presented near theend of the second day, as currently estimated.G

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8:15 a.m. – 11:30 a.m. (Tues)


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

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

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

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

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

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

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

Course Description

15.0 Hours

T

DORSEY & WHITNEY LLPMINNEAPOLIS, MN

ALDO NOTO

ANDREWS KURTH LLPWASHINGTON, DC

STUART HEMPHILL DEVAN PADMANABHAN

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


Director Kappos has recently stated thatpatents on software are “every bit as welldeserved” as patents on air flight, electric bulbsand such more traditional inventions. At thesame time, he acknowledges past ofteninadequate and inconsistent examination ofsoftware patents, but points out improvementsat the USPTO for increasing examinationquality. This is a critical time to get an importantupdate on software patent law, given:

• The impact of the America Invents Act (AIA).

• The need to understand the post-Bilskidecisions that attempt to apply its principles(Research Corporation; Ultramercial;Prometheus; et al.).

• The decisions analyzing infringement whencomputer-based methods or other activity spanborders (Research in Motion; Transocean).

• The decisions finding no infringement whenmultiple actors are involved in completingthe infringement (Muniauction; Akamai).

• Patent damages in software cases have beenimpacted by the decisions of Judges Posnerand Alsup.

• The need to understand how the USPTO andcourts are using indefiniteness as a basis forrejection or invalidity of software claims.

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and limitations designed to meet the somewhatunclear post-Bilski §101 standards arediscussed. This course also explores thecountercurrents arising from concern about thequality of some business method patents andfrom the open source movement.

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


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

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

• “Examples of claim types were great!”

Course Materials

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

hether you have a swim or just relax in the sun with a good book,

you will feel refreshed after spending time at the pool.W

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PRG’s Spring HotelHyatt Regency Grand CypressOrlando, FL • April 7-13, 2013

One Grand Cypress Boulevard

Orlando, FL 32836

888-421-1442 or 402-592-6464

PRG’s 2013 Annual SpringAdvanced Courses Program will beheld at the lavish Hyatt RegencyGrand Cypress in Orlando, FL.

Reservations: 888-421-1442 or 402-592-6464

For information and to make your room reservationonline, please go towww.patentresources.com/HotelOverview.aspxand click on the Hotel Information link for HyattRegency Grand Cypress.

Room reservations must be made by March 15,2013. When making your reservation, be sure toidentify yourself as a Patent Resources Groupattendee to obtain the special PRG rate.

Room rate: The sleeping room rate available toPRG attendees is only $199.00 per night, single ordouble, plus tax. This rate is 20% less than whatwe were able to offer at our Spring 2012conference.

Receptions for Attendees and Faculty:PRG receptions provide an opportunity fornetworking, plus delicious, complimentaryhors d’oeuvres and beverages on the firstevenings of class: Sunday, April 7 andThursday, April 11. Spouses, children andguests of attendees and faculty are welcomeand are certain to have an enjoyable time.

Transportation: The Hyatt Regency GrandCypress is approximately 18 miles fromOrlando International Airport (MCO), 77miles from Tampa Airport (TPA), and 240miles from Miami International Airport (MIA).The Hyatt Regency Grand Cypress offers bothvalet parking and self-parking.

his rate of $199 per night is20% less than what we wereable to offer at our 2012

Spring program in Florida.

World-Class Comfort and Style

This luxury resort is a sprawling, secluded oasisin beautiful Orlando, Florida. The 1,500-acreresort offers many opportunities to unwind andis also just minutes from Orlando's theme parksand other attractions.

Swim in the half-acre lagoon-style swimmingpool or enjoy water sports activities on LakeWindsong. Play a round of golf at one of theresort's four Jack Nicklaus Signature Designcourses or try tennis, rock climbing, jogging, orbiking. Relax with a massage, facial, ormanicure at the salon or get in a workout atthe Hyatt Stay Fit gym. And the Hyatt RegencyGrand Cypress' world-class restaurants servewonderful cuisine from around the world.

You'll also enjoy complimentary high-speedInternet access; a full-service, 24-hour businesscenter; gift shop; and concierge. For moreinformation about the Hyatt RegencyGrand Cypress, go to:

http://grandcypress.hyatt.com/hyatt/hotels-grandcypress

Don't Miss This Deal!

T

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Hyatt Regency Grand CypressREGISTRATION

Orlando, FL • April 7-13, 2013

PRINT Name of Cardholder

SIGNATURE of Cardholder

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

Charge $______________________ to:

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I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:

1. __________ _________________________ 2.___________ ______________________ STATE ID NO. STATE ID NO.

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email ________________________________________________________________________

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PLEASE PRINT

Brochure Code: A13M1

REGISTRATION OPTIONS:


Mail or Overnight: 1725 Jamieson Avenue Alexandria, VA 22314

FAX: (703) 892-4510

ONLINE: www.patentresources.com

You may register online or by fax, mail or courier.You may submit tuition either by check, payableto Patent Resources Group, Inc., or by credit card(charges are authorized by your completion ofthis form). The course tuition does not includehotel accommodations or meals, but doesinclude all instructional materials, and morningand afternoon refreshments, as well as PRG’sreception-cocktail party.

Tel: 703-682-4860Fax: 703-892-4510www.patentresources.com

April 7-9, 2013 (Sun-Tues)

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

❍ Art & Science of Patent Searching andOptional Patent Searching Workshop(combined course and workshop is$2,590 through Feb. 6, 2013 and$2,690 after that date)

❍ Chemical Patent Practice

❍ Crafting & Drafting Winning Patents

❍ “Designing Around” Valid U.S. Patents

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

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

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

April 10, 2013 (Wed)

❍ America Invents Act: MonumentalChanges, the Consequences and theUnanswered Questions

April 11-13, 2013 (Thurs-Sat)

❍ Comprehensive PCT Practice: How toMaster Its Challenges

❍ Drafting Patent License Agreements

❍ Federal Circuit Law (2011-2013)

❍ Patent Damages

❍ Patent Due Diligence in the AIA Era

❍ Patent Infringement Litigation

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

through Feb. 6, 2013 and $2,295after that date

Tuition for the one-day course is $995.(only $795 if you also register for a

3-day course at this conference)

Registration Deadline: March 15, 2013

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

Loyalty Program memberssave $200 on tuition

for every courseat this Program!

For information about registration deadlines; cancellation, transfer and substitution privileges;CLE; and other details, go to: www.patentresources.com

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

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

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

Y

atent Resources Group, theAlma Mater of 40,000 patent

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

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

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

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

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

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

PRG is currently offering these courses* ON-SITE:

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

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

Follow PRG in the World of Social Media!

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Register online now at www.patentresources.com

January 21-25, 2013Patent Bar Review CoursePasadena, CAHilton Pasadena

March 18-22, 2013Patent Bar Review CourseWashington, DC (Alexandria, VA)The Westin Alexandria

April 7-13, 2013Annual Spring ProgramAdvanced Courses in Patent LawOrlando, FLHyatt Regency Grand Cypress

May 6-10, 2013Patent Bar Review CourseChicago, ILFour Points By Sheraton

June 17-21, 2013Patent Bar Review CourseBoston, MAThe Colonnade Hotel

July 9-12, 2013Winning Patents WorkshopPasadena, CAHilton Pasadena

July 23-26, 2013Winning Patents WorkshopWashington, DC (Alexandria, VA)The Westin Alexandria

August 2013Patent Administration: A Foundation for SuccessCheck PRG Website for dates, city, and venue

August 2013Annual Summer ProgramAdvanced Courses in Patent LawCheck PRG Website for dates, city, and venue

September 2013Patent Administration: A Foundation for SuccessCheck PRG Website for dates, city, and venue

September 2013Patent Bar Review CourseCheck PRG Website for dates, city, and venue

October 16-22, 2013Annual Fall ProgramAdvanced Courses in Patent LawHuntington Beach, CAHyatt Regency Huntington Beach

November 2013Patent Bar Review CourseCheck PRG Website for dates, city, and venue

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

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

Presorted StandardU.S. Postage

PAIDGraphics East, Inc.

UNPARALLELED COURSES AT AN AMAZING VENUE!ORLANDO, FL • APRIL 7-13, 2013

A13M1Patent Resources Group provides the industry's leading patent law education programs. The company hastaught patent law and related courses to 40,000 patent attorneys, agents, engineers and scientists since 1969.

Register today atwww.patentresources.com!

ANNUAL SPRING PROGRAM


IN PATENT LAW

PRG Magalog for Spring 2013 Advanced Courses Program

Documents

Transcript of PRG Magalog for Spring 2013 Advanced Courses Program