Fall 2012 Advanced Courses Conference Magalog

ADVANCED PATENT LAW COURSES FOR ESTABLISHED PATENT PRACTITIONERS

PATENT RESOURCES GROUP®

Register now at www.patentresources.com

ONLY$169

PER NIGHT!

Choose from 10 great advanced patentlaw courses at our 2012 Annual FallConference. See page 3

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

All returning October courses updated toreflect the impact of the America Invents Act!

Beautiful venue with many on-site activities.See page 26

A truly amazing room rate! See page 26

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

PRG’s Fall Hotel • Hyatt Grand ChampionsResort, Villas and Spa • Indian Wells, CA • October 17-23, 2012

Join Us in California — Get the Training You Need to Be Prepared for the America Invents Act!

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2 www.patentresources.com

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Coursesconferences. If you were a paid attendee at any PRG course in 2011 or already in 2012, you areautomatically a loyalty member and will be entitled to special pricing when you attend any courses at

our August or October 2012 Advanced Courses Conferences! And after being a paid attendee at any PRGcourse in 2012, you’ll automatically be eligible for Loyalty Program benefits in 2013. Loyalty Program memberssave $200 on tuition for each 2- or 3-day Advanced Course and $100 for each 1-day course. However, inAugust and October 2012, we're offering a special savings of $200 on the 1-day AIA course.

About PRG’s Loyalty Program

PRG’s 2012 Annual Fall

P

Conference—Getting You Ready for the AIA

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

WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN CALIFORNIAIN OCTOBER? BECAUSE PRG’S CONFERENCES:

• 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,the most significant development in the patent world in a generation. We're also offering a special one-daycourse focusing solely on the AIA, at a special discounted price for Loyalty Members or for new attendeestaking more than one course at this Conference. This is a course that every practitioner needs to take. We’llhelp you avoid the dangers that the AIA poses to practitioners in all areas of patent law. Different provisionstake effect at different times, so it is important to stay current.

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

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

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

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

• Provide an unparalleled opportunity for networkingand exchanging ideas with our faculty and your fellowattendees.

The bottom line – for you and your organization – isthat in today’s challenging environment, you can’t afford notto invest in your future. And attending PRG’s 2012 AnnualFall Advanced Courses Conference is the safest investment you canmake. Register soon — spaces will fill quickly!

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www.patentresources.com 3

Hyatt Grand Champions Resort, Villas and SpaINDIAN WELLS, CA • OCTOBER 17-23, 2012

Please see page 28 for information about our special one-dayAugust 2012 Conference focusing on the America Invents Act!

• 10 courses are available for the2012 Annual Fall AdvancedCourses Conference.

• Tuition for each three-day courseis $2,195.

• Combined tuition for the PatentSearching Course and Workshopis $2,590.

• Tuition for the two-day course is$1,995.

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

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

Three-Day Courses: October 17-19, 2012 (Wed-Fri)

Federal Circuit Law (2010-2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18Faculty: Gale Peterson, Jon Hokanson, Jason Fowler, and Sharon Israel

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

Post-Grant Patent Practice: Review, Reexamination,Reissue, and Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24Faculty: Kevin Laurence and Matthew Phillips

Two-Day Course: October 17-18, 2012 (Wed-Thurs)

Claim and Specification Drafting fora Single EPO/USPTO Patent Application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10Faculty: Bradley Hulbert and David Meldrum

One-Day Course: October 20, 2012 (Sat)

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

Three-Day Courses: October 21-23, 2012 (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, and Deborah Herzfeld

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

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

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

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

1. The “first inventor to file” system, whichtakes effect on March 16, 2013, and replaces the“first to invent” system of the current law. Thecourse lecture and materials consider in detailthe provisions of completely rewritten Section102 of 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 indepth the requirements, limitations, potentialrisks and consequences of such a review, whichmay be initiated by any third party on or 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,

America Invents Act: MonumentalChanges, the Consequences andthe Unanswered Questions

Course Description

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

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

The content of this course and its accompanying materials 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.

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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:

Indian Wells, CA October 20, 2012 (Sat)

Hyatt Grand Champions Resort, Villas and Spa

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

Registration deadline: October 3, 2012Register early! Spaces will fill quickly.

6.0 Hours

PAUL GARDNERPATENT RESOURCES GROUP

ALEXANDRIA, VA

EDWARD MANZO

HUSCH BLACKWELL SANDERSWELSH & KATZCHICAGO, IL

G NEW COURSE

NEWCOURSEG

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102, 103 or 112 (with the exception of a bestmode violation, discussed below).

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

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

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

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

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

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

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

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

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

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

• Unpatentability of tax strategies,

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

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

• Defense to infringement based on priorcommercial use, and

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

njoy breathtaking views of the natural

beauty of the Resort's surroundings.E

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Indian Wells, CA October 21-23, 2012 (Sun-Tues)


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

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


Comments from previous attendees:

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

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

• “Highly competent instructors.”

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

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

Upon completion of the course, theattendee will have learned:

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

• How to properly scope the search beforeeven beginning.

Art and Science of PatentSearching – Patentability,Validity & Infringement

Course Description

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

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

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

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

15.0 Hours

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

LANDON IP, INC.ALEXANDRIA, VIRGINIA

BRIAN THURMOND JONATHAN SKOVHOLT

... And Optional Patent Searching Workshop


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

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

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

• Issues unique to searching within specifictechnical disciplines.

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

• Approaches to searching non-patentliterature.

• Approaches to reporting search results.

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

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

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

Course materials

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

Optional PatentSearching 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 preceding2012 Art and Science of Patent Searchingcourse

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

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

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

yatt Grand Champions’ elegant accommodations beginin the lobby, the perfect place to relax and unwind.H


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(Including 2.0 Hours Legal Ethics)



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


For example, the rising tension within theFederal Circuit panels on 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.

16.5 Hours

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

TOM IRVING PAUL BROWNING JILL MACALPINE DEBORAH HERZFELD

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. In fact, you can bring itif you want, but you won’t need the coursebook during the lectures. G

ake advantage of the Resort's 24-hour state-of-the-artfitness center when you are not in class.T

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This course is ideal for anyone whofiles patents before both the EPO andthe USPTO. It provides a practicalapproach to developing a single patentapplication that complies with therequirements of both of these patentauthorities.


Indian Wells, CA October 17-18, 2012 (Wed-Thurs)


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


The need for high-quality applicationdrafting, acceptable to both the USPTO andEuropean Patent Office, has never beengreater.

This course will give attendees acomprehensive overview of the principlesunderlying the preparation and prosecution ofpatent applications in both the U.S. and Europe.

The speakers will:

• Compare and contrast the often verydifferent approaches of the USPTO andEuropean Patent Office

• Show the similarities and discrepancies inlanguage that can invalidate or blockapplications in each country, and proposesolutions

• Offer the “best practices” for preparing anapplication that is well suited for filing inboth the US and Europe

• Illustrate the legal basis for such practices.

• Discuss the implications of the AmericaInvents Act on application drafting

Practical application:

• During the course attendees will be dividedinto groups to correct, modify and prepareexisting sample claims.

• This will then be followed by a plenarysession during which attendees andspeakers will discuss the worked examplesto produce an optimal specificationacceptable to both the EPO and USPTO.

The seminar will also include ongoingopportunities for participants to ask questionsand discuss individual concerns.

For course syllabus, go to our website atwww.patentresources.com G

Claim and Specification Draftingfor a Single EPO/USPTOPatent Application

Course Description

hile the EPO and USPTO have similar requirements for patent applications, the sameapplication can have dramatically different results in Europe and the U.S. An applicationoriginating in the U.S. frequently encounters substantial difficulties before the EPO. For

example, the U.S. applicant often finds itself unable to amend claims in a manner clearly availableduring U.S. prosecution because of European "Priority Rules." Recurrently, claims issued by theEPO to a U.S. applicant are unnecessarily narrow by European standards.

This course will show you how to draft and prosecute one patent application which will complywith the differing requirements of both the EPO and the USPTO.

There will be practical worked examples, illustrations, demonstrations of “best practice” and plentyof discussion, ensuring that you will go home with a realistic and workable solution to a perennialproblem.

12 Hours

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Course Faculty • This course is taught by one U.S. and one European patent attorney with experience inboth patent prosecution and litigation for multinational clients.

MCDONNELL BOEHNEN HULBERT & BERGHOFF LLPCHICAGO, IL

BRADLEY HULBERT DAVID MELDRUM

D YOUNG & COLONDON

Brought to you inpartnership with:

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

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

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(Including 1.0 Hour 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)



• “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 & KENYONNEWYORK, NY

JOHN TSAVARISDALE LAZAR


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

DINSMORE & SHOHL LLP,DAYTON, OH

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 the

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

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

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

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

Who Should Take This Course?

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

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

Course Materials

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

ask in the beautiful mountain vistas

while playing a round of golf on one

of the Resort's two popular 18-hole courses.

B


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

I

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

PATRICK BURNSGREER, BURNS& CRAIN, LTD.

CHICAGO, ILLINOIS

JOHN PINKERTONROSEWALKER

DALLAS, TEXAS

PATRICIA PRIORGREER BURNS & CRAIN LTD.

CHICAGO, IL

ROBERT TURNERJONES 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

it by the fountain and relax as you watch the sunset behind the palm trees at the end of the day.S

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8:15 a.m. – 11:30 a.m. (Tues)



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

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

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

— Glenn Smith Bausch & Lomb October 2008 attendee

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

Legal ethics in license negotiations will bepresented from 3:15 to 4:15 p.m. on Day 2and in misuse issues from 10:00 to 11:00 a.m.on Day 3, as currently estimated.

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. PATRICKO'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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Course Materials

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

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

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

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

ake a seat in the beautiful lobby to chat with yourfellow PRG attendees, check your email using

high-speed wireless, or read the newspaper.T

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Indian Wells, CAOctober 17-19, 2012 (Wed-Fri)



8:15 a.m. – 11:30 a.m. (Fri)


Federal Circuit Law(2010-2012)

America Invents Act of 2011 (AIA)

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

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

Course Description

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

emanating from the court. Often those opinions are at variance with established precedent, butwithout any admission or acknowledgement of the variance by the panel majorities despite pointed,compelling demonstrations thereof in dissents and concurrences. From Ariad Pharmaceuticals, Inc.v. Eli Lilly Co. (2010) to Media Technologies Licensing, LLC v. Upper Deck Co. (2010) and beyond,this course provides deep insight into the Federal Circuit’s opinions over the past two years andtells you what you need to know to continue to be an effective practitioner. As Chief Judge Raderopines, by understatement, these cases “must leave practitioners in a quandary.” Indeed! Clearlyex parte practice is not what it once was.

15.0 Hours

I

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

GALE PETERSONCOX SMITH

SAN ANTONIO, TX (FORMER TECHNICAL

ADVISOR TO THE LATE CHIEFJUDGE MARKEY)

SHARON ISRAELMAYER BROWN LLPHOUSTON, TX

(FORMER LAW CLERK TOCIRCUIT JUDGE LOURIE)

JON HOKANSONLEWIS BRISBOIS BISGAARD &SMITH LLP, LOSANGELES, CA

(FORMER TECHNICALADVISOR TO THE LATECIRCUIT JUDGE MILLER)

JASON FOWLERCOVINGTON & BURLING LLP

WASHINGTON, DC(FORMER LAW CLERK TOCIRCUIT JUDGE LINN)


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

INCLUDING COMMENTARYon the America Invents Act

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

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

One of the areas that harbors the mostunsettling and startling developments is thecourt’s linking of claim construction to thewritten description requirement, an area that,according to Chief Judge Rader, has become“opaque to the point of obscuring other areasof this court’s law.” This linking has resulted ina number of seemingly inconsistent panel

opinions, especially in instances where thepatent-in-suit has facially broad claims, but anarrowly drafted specification. In AriadPharmaceuticals, Inc. v. Eli Lilly Co., the courten banc confirmed that there is a separatewritten description requirement that appliesoutside of the priority context—that separateand apart from whether the specificationenables the claims, the specification mustcontain a “written description” of theinvention. The court remains splintered on thisissue, however, and several judges believe thatthe invalidation of a claim on the basis that itis broader than the invention described in thespecification is inconsistent with the FederalCircuit’s rule of claim construction thatembodiments from the specification shouldnot be imported as limitations to the claims.Also, in Crown Packaging Technology, Inc. v.Ball Metal Beverage Container Corp. (2011),the court, in an opinion by District JudgeWhyte, N.D. Calif., sitting by designation, andover a dissent by Circuit Judge Dyk, reversed adistrict court’s conclusion that the specificationlacked sufficient written description supportgiven the breadth of the claims, noting thatoriginal claims, in some instances, may providewritten description support, despite statementsto the contrary in Ariad. Nevertheless, JudgeMoore, writing for the court in BostonScientific Corp. v. Johnson & Johnson (2011),

reiterated the “rule” from Regents of the Univ.of Cal. v. Eli Lilly & Co. (1997) that “[a] writtendescription of an invention involving a chemicalgenus, like a description of a chemical species,‘requires a precise definition, such as bystructure, formula, [or] chemical name,’ of theclaimed subject matter sufficient to distinguishit from other materials.”

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

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

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rom your room, enjoy views of the pools and

golf course, in the midst of nature's grandeur.F

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example - although the fundamental groundsfor determining novelty and loss of right topatent under 35 U.S.C. § 102 have been partof the statute since 1793, and most certainlysince 1836 and 1870, the Federal Circuitcontinues to decide some cases on the narrowground of accepting or rebutting party’sarguments – however bizarre – rather than theunderpinnings of the statutes. In Solvay S.A. v.Honeywell International, Inc. (2010), forexample, the court concludes, on at bestshallow reasoning in response to misguidedparty arguments, and seemingly uncriticalreliance on an ambiguous statutoryamendment, that when § 102(g)(2) isconstrued as a prior art subsection, a prioractual reduction to practice “in this country”before the patentee’s earliest “date ofinvention” does not qualify as “prior art” if thereduction to practice is by one who does notqualify as an “inventor” who “conceived” theinvention. Never before has “novelty” turnedon showing “inventorship.” This is oneexample, though, of where the AIA may affectthe result.

But the pendulum swings. After 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. And what about theflood of cases held back pending the FederalCircuit’s decision in Therasense? The course will

examine Therasense in detail, with suggestionson complaince with Rule 56(a). The AIA alsooffers “supplemental examination” which may“cure” alleged inequitable conduct. Claims oflegal malpractice are increasing at an alarmingrate. The Federal Circuit has provided somesolace in Immunocept, LLC v. Fulbright &Jaworski LLP (2007), holding that it hasjurisdiction of legal malpractice claims undercertain circumstances. In addition, though,what conduct is subject to sanctions? TheFederal Circuit continues to issue opinions thataffect the basic practice of patent law.

The Supreme Court has also been active indeveloping the patent law, often rebuffing theFederal Circuit for failing to adhere to SupremeCourt precedent. For example, in In re Bilski,the Federal Circuit attempted to clarify the testfor determining whether a claim recitespatentable subject matter under § 101 byholding that its “machine or transformationtest” is the sole and exclusive inquiry. TheSupreme Court promptly rejected the FederalCircuit’s machine or transformation test as thesole test for patentable subject matter, butdeclined to articulate a clear test to replace theFederal Circuit’s test thus leaving a vacuum forthe Federal Circuit to fill. The course will coverpost-Bilski developments, and will sort throughthe uncertainty left in the wake of Bilski. Buteach post-Bilski case seems to raise additionalquestions.

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

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

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

Smoothing the Troubled Waters?

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

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

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

Course MaterialsThe full substance of the course is captured

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

Comment from previous attendee:

• “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

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alm trees and fountains provide a perfect backdrop for a

walk, jog, or bike ride through the Resort's grounds.P

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Indian Wells, CA October 17-19, 2012 (Wed-Fri)



8:15 a.m. – 11:30 a.m. (Fri)



• “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 balance between the course matter andcase law was perfect and appropriate.”

— David Hayzer Ph.D. Thomas Kayden Horstemeyer & Risley LLP April 2011 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 (including a discussion ofthe Federal Circuit’s Therasense decision)

• patent eligibility (including a discussion of theSupreme Court’s Prometheus decision), 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

oak in the California sun and relaxwith a book on your e-Reader by one

of the Resort's seven outdoor pools.S

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Indian Wells, CAOctober 17-19, 2012 (Wed-Fri)



8:15 a.m. – 11:30 a.m. (Fri)


Comment from previous attendee:

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

— Charles Burpee Warner Norcross & Judd LLP October 2009 attendee

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

• Ex parte reexamination

• Inter partes reexamination

• Post-grant review (new under the AIA)

• Inter partes review (new under the AIA)

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

Course Description

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

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

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

15.0 Hours

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KEVIN B. LAURENCE MATTHEW C. PHILLIPS

STOEL RIVES LLPSALT LAKE CITY, UT AND PORTLAND, OR

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


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

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

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

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

• Reissue

• Supplemental examination (new under theAIA)

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

For patent challengers, the course providestraining to:

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

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

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

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

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

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

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

• Learn what the reexamination statistics reallymean

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

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

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

• Tactically use serial ex parte reexaminationrequests and protests in reissue

• Correctly and strategically use petitions anddeclarations

• Understand the repercussions thatreexamination and review can have onsettlement

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

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

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

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

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

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

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

• Master the recapture rule in reissueapplications

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

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

egency Club members can enjoy the Regency Club

Lounge for meals or just to relax and enjoy the

views of the pools and the San Jacinto Mountains.

R

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PRG’s Fall Conference HotelHyatt Grand Champions Resort, Villas and SpaIndian Wells, CA • October 17-23, 2012

44-600 Indian Wells Lane

Indian Wells, CA 92210

760-341-1000 or 800-233-1234

PRG’s 2012 Annual Fall

Conference will be held at

the lavish Hyatt Grand

Champions Resort, Villas

and Spa in Indian Wells

(Palm Springs), CA.

Reservations: 760-341-1000 or 800-233-1234

For information, please go towww.patentresources.com/HotelOverview.aspxand click on the Hotel Information link for HyattGrand Champions Resort, Villas and Spa.

Room reservations must be made by October 3,2012. 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 $169.00 per night, single ordouble, plus tax. This rate is 20% less than whatwe were able to offer the last time we hosted ourAdvanced Courses at the Hyatt Grand Champions!

Receptions for Attendees and Faculty: PRGreceptions provide an opportunity for networking,plus delicious, complimentary hors d’oeuvres andbeverages on the first evenings of class:Wednesday, October 17 and Sunday, October 21.Spouses, children and guests of attendees andfaculty are welcome and are certain to have anenjoyable time.

Transportation: The Resort is about 15 miles (lessthan 30 minutes) from the Palm SpringsInternational Airport (PSP). The Resort offers bothvalet parking and self-parking.

his rate of $169 per night is20% less than what we wereable to offer in 2007, the last

time we were at the Hyatt GrandChampions Resort, Villas and Spa.

A Truly Amazing Venue This elegant AAA Four Diamond resort isnestled between the San Jacinto and SantaRosa mountains in its own 45-acre oasis offormal gardens and lush southern Californialandscape. Enjoy the seven outdoor pools, the36-hole Indian Wells Golf Resort, three tenniscourts, fully-equipped 24-hour fitness center,and the Agua Serena Spa and Salon. CampHyatt provides a variety of supervisedentertainment and hands-on activities forchildren ages 3-12 (advance reservationssuggested).

Dining options include Lantana, serving indooror outdoor breakfast, lunch, and dinner; theAgave Sunset lobby bar for cocktails andappetizers; and the Espresso Deli and Cafe,offering coffee and quick meals. The Oasis poolbar and the Roadrunner Cafe offer Californiacasual fare.

The Resort also offers a full-service businesscenter, secretarial support services, gift shop,hair salon, and concierge. In addition, PalmSprings world-class shopping district is nearby.For more information about the Hyatt GrandChampions Resort, Villas and Spa, go to:http://grandchampions.hyatt.com/hyatt/hotels-grandchampions

Don't Miss This Deal!

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REGISTRATIONIndian Wells, CA • October 17-23, 2012


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

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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

October 17-19, 2012 (Wed-Fri)

❍ Federal Circuit Law (2010-2012)

❍ Patent Due Diligence in the AIA Era

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

October 20, 2012 (Sat)

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

October 21-23, 2012 (Sun-Tues)

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

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

❍ Chemical Patent Practice

❍ Crafting and Drafting Winning Patents

❍ “Designing Around” Valid U.S. Patents

❍ Drafting Patent License Agreements

One-Day Course:Three-Day Courses:Tuition for each three-day course is $2,195. Tuition for the one-day course is $995.

October 17-18, 2012 (Wed-Thurs)

❍ Claim and Specification Drafting for aSingle EPO/USPTO Patent Application

Two-Day Course:Tuition for the two-day course is $1,995.

Registration Deadline: October 3, 2012

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

Loyalty Program memberssave $200 on tuition

for every courseat this Conference!

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Special August2012 AmericaInvents Act (AIA)Conference!

Join us in the Washington, DCarea at the Hyatt RegencyCrystal City on August 13,2012 for a special one-dayAdvanced Courses conferencefocused on the impacts of theAmerica Invents Act of 2011.

n this focused one-day

conference, we will provide an

overview of the changes and

consequences introduced by the

America Invents Act. This will be an

updated version of the course we first

introduced at our Spring 2012

Advanced Courses Conference, with

multiple speakers providing the latest

insights and perspectives into the key

provisions of this major legislation.

This is a conference that every patent

practitioner should attend, in order to

avoid the risks that the AIA poses to the

poorly informed. Tuition is $995, and

Loyalty Program members pay only $795.

More details about this conference are

available at

www.patentresources.com.

I


Patent Administration – A Foundation for Successis a complete and thorough 2.5-day certificate coursedesigned to provide patent support professionals – paralegals,secretaries, and administrators – with both a firmunderstanding of the fundamentals of patent law andpractical tips and advice that can be applied on a daily basis tosave time and ensure success in interactions with the USPTO.

Have your staff join us at one of two 2012 sessions:

• August 13-15, 2012 in Washington, DC• September 10-12, 2012 in New York City

Visit our website at www.patentresources.comto see the detailed course syllabus and to register online. Tuition for this outstanding course is only $795.00!

The Perfect Course for Patent Support Professionals!

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

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

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

Y

atent Resources Group, theAlma Mater of 40,000 patent

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

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

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

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

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

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

PRG is currently offering these courses* ON-SITE:

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

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

PRG is Accessible Wherever You Are!

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Register online now at www.patentresources.com

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

July 17-20, 2012Winning Patents WorkshopWashington, DC (Arlington, VA)Hyatt Regency Crystal City

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

August 13-15, 2012Patent Administration: A Foundation for SuccessWashington, DC (Arlington, VA)Hyatt Regency Crystal City

August 13, 2012Advanced CoursesConferenceWashington, DC (Arlington, VA)Hyatt Regency Crystal City

September 10-12, 2012Patent Administration: A Foundation for SuccessNew York, NYConcierge Conference Center

September 10-14, 2012Patent Bar Review CourseNew York, NYConcierge Conference Center

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

November 5-9, 2012Patent Bar Review CourseSan Francisco, CA Executive Conference Center

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

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

Be Prepared for the America Invents Act!

You can’t afford not to invest in your future.See page 2 for details and register today atwww.patentresources.com.


Presorted StandardU.S. Postage

PAIDGraphics East, Inc.

UNPARALLELED COURSES AT AN AMAZING VENUE!INDIAN WELLS, CA • OCTOBER 17-23, 2012

A12M2Patent 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.

Fall 2012 Advanced Courses Conference Magalog

Documents

Transcript of Fall 2012 Advanced Courses Conference Magalog