Dunes CLE - Intellectual Property Seminars, CLE, Patent CLE, Trademark CLE

Agenda for Current Issues in Patent Law 2006 on August 25, 2006 at the Bellagio in Las Vegas

Current Issues in Patent Law 2006 was held on August 25, 2006 at the Bellagio hotel and casino in Las Vegas. The speakers included Vanessa B. Pierce, an Assistant Professor of Law at Ave Maria School of Law, Lance Venable, the Managing Partner in the law firm of Venable, Campillo, Logan & Meaney, J. Matthew Buchanan, of Counsel to Dunlap, Codding & Rogers, P.C. and author of the Promote the Progress legal blog that focuses on worldwide patent law and policy issues, Eric L. Maschoff, a shareholder with the law firm of Workman Nydegger and an adjunct professor of law at the University of Utah College of Law teaching patent law and patent prosecution, Douglas J. Sorocco, a registered patent attorney and partner with Dunlap Codding & Rogers, P.C. and founder and editor of PHOSITA, a legal blog that focuses on topical and informational news dealing with intellectual property, and Robert Ryan Morishita, founder of the Morishita Law Firm.

This CLE was held in the Da Vinci 1 conference room at the Bellagio hotel and casino. The Agenda for this CLE was as follows:

	August 25, 2006 (Friday)
8:30 – 9:00	Registration & Continental Breakfast
9:00 – 10:00	Patent Law Reform – An Update on Legislative, Administrative, and Judicial Activities - J. Matthew Buchanan Patent reform has been a focus of considerable attention in the last several sessions of Congress. Last year saw the introduction of the Patent Act of 2005, the most significant attempt at patent reform to date. The comprehensive nature of the bill, however, has stalled its progress in the House and most now view it as dead. But the push for reform marches on. In Congress, the House Subcommittee on Courts, the Internet, and Intellectual Property continues to hold oversight hearings at a record pace and new, less-comprehensive legislation has been introduced. The Senate has provided a few subtle hints at its views on patent reform and the Supreme Court picked up the controversial injunctive relief issue, which played a significant role in the stalling of the Patent Act of 2005, in eBay v. MercExchange. Earlier this year, the Patent and Trademark Office gave a strong signal of its willingness to advance reform by introducing a pair of controversial rule changes aimed at tackling its overwhelming application backlog. This presentation will provide a comprehensive review of the various legislative, administrative, and judicial patent reform efforts and will present a strategy for preparing corporate organizations for reform.
10:00 – 11:00	eBay v. MercExchange and Its Impact On Patent Litigation and the Marketplace - Lance Venable The U.S. Supreme Court’s ruling in eBay Inc. v. MercExchange LLC reversed the Federal Circuit’s long-standing jurisprudence as it pertained to enjoining adjudicated patent infringers. The presentation will examine the background of the dispute, an analysis of the decision, and the impact of the decision on potential litigants including factors for plaintiffs to consider in providing the best opportunity to obtain permanent injunctive relief. The presentation will also include a discussion on the ruling’s long range impact on the marketplace.
11:00 – 11:15	Break
11:15 – 12:15	Ethics in Patent Litigation and Patent Prosecution - Robert Ryan Morishita The Federal Circuit continues to issues rulings that raise substantial ethical issues relating to patent practice. Recent cases touch primarily on the ethical issues of client confidentiality, candor before the USPTO, and litigation conduct (or misconduct) as the courts continue to define the contours of inequitable conduct in view of such cases as Molins PLC v. Textron Inc. and Brasseler U.S.A. I, L.P. v. Stryker Sales Corp. and willful infringement in view of Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corp. This presentation will examine several cases decided in late-2005 through 2006 that could impact how attorneys prosecute patents, write infringement and non-infringement opinions, and conduct litigation in view of these recent cases.
12:15 – 1:30	Lunch Break
1:30 – 2:30	Non-Obviousness Reform and the Propriety of the Federal Circuit’s “Teaching, Suggestion, or Motivation” Test - Eric L. Maschoff The case Teleflex, Inc v. KSR Intern. Co. has attracted attention as the United States Supreme Court considers whether to address the propriety of the Federal Circuit’s usage of the suggestion test. Even though the decision was unpublished, there has been significant interest from a wide range of interest groups. In particular, a group of twenty-four law professors, among others, have joined KSR in petitioning the Supreme Court to grant certiorari. However, many patent practitioners agree with the Federal Circuit’s test as an essential tool for preventing hindsight reconstruction of their client’s claims. Mr. Maschoff will discuss the purpose of the nonobviousness requirement and the Federal Circuit’s suggestion requirement. Mr. Maschoff will also discuss the opposing arguments submitted to the United States Supreme Court and potential ramifications if the Supreme Court sides with KSR.
2:30 – 3:30	Defining and Implementing Strategic Patenting Initiatives - Douglas J. Sorocco As buzzwords go, the phrase “strategic patenting” evokes a visceral response that directly correlates to the listener’s experience and role in the patenting process. While the phrase oftentimes is associated with notions of "more patenting" or creating mazes of complex and technically dense patent documents -- a more sophisticated and complicated definition more appropriately encompasses three broad categories of patenting activities: (1) patenting to block other companies from patenting an invention; (2) use of patent assets in negotiations for cross-licenses or other forms of technology access; and (3) use of patent assets to prevent patent infringement suits. For purposes of corporate and applied science research, at least two types of strategic patenting activities are generally being implemented - defensive and offensive patenting. Given the Supreme Court's recent decision in eBay v. MercExchange,the unusual interest of the Supreme Court with respect to patent issues this year, and the patent reform efforts underway at both the USPTO and Congress, the role and function of strategic patenting activities must be rethought and revised in order to anticipate substantive changes that appear to be taking hold in U.S. patent law. Mr. Sorocco will discuss the traditional uses of strategic patenting initiatives, the impact of recent patent law decisions and patent reform efforts on such efforts, and outline suggested strategies and methodologies to minimize the effects of such changes on current and planned strategic patenting initiatives.
3:30 – 3:45	Break
3:45 – 4:45	Patentable Subject Matter in Light of Lundgren & LabCorp. - Vanessa B. Pierce In the fall of 2005, in the case of In re Lundgren, the BPAI expanded the scope of patentable subject matter for business method patents when it eliminated any perceived “technological arts” requirement. On the heels of that decision, the USPTO issued Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility. According to the Guidelines, an invention falls within the scope of patentable subject matter “if the claimed invention physically transforms an article or physical object to a different state or thing, or if the claimed invention otherwise produces a useful, concrete, and tangible result.” Yet many question the validity of existing business method patents as improperly claiming judicially-recognized unpatentable subject matter (abstract ideas, laws of nature, natural phenomena). Many believed that a case argued before the Supreme Court last spring, though related to medical diagnostic methods, would have had broad implications for the patentability of business methods. In Labcorp v. Metabolite the Supreme Court was to decide the validity of a claim including a step directing a party simply to “correlate” test results. The critical inquiry was whether the Court was ready to embrace thinking as patentable subject matter. Yet, the Supreme Court dismissed the writ of certiorari as improvidently granted, leaving the Federal Circuit judgment in place. This presentation will address Lundgren, the Interim Guidelines, and the “decision” of the Supreme Court in Labcorp.
4:45	Adjourn

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Current Issues in Patent Law in Las Vegas - Aug. 2006

Agenda for Current Issues in Patent Law 2006 on August 25, 2006 at the Bellagio in Las Vegas