Dunes^® CLE in Las Vegas

Bilski and the Future of Patentable Subject Matter - Robert Ryan Morishita

The cases interpreting 35 U.S.C. section 101 decided by the Board of Patent Appeals and Interferences and the Federal Circuit are piling up. Last year, the Federal Circuit issued decisions in the cases In re Comiskey and In re Nuijten. However, further developments in these cases may arise since a petition for en banc rehearing has been filed in Comiskey and a petition for a writ of certiorari has been filed in Nuijten. Two more cases, In re Ferguson and the case that has the greatest potential to change the scope of patentable subject matter, In re Bilski, should be decided in by the end of this year. Add to those cases the recent BPAI decisions in Ex parte Langemyr and Ex parte Wasynczuk, and the subject matter eligible for patents in 2009 may be vastly different than the subject matter eligible in 2007. This presentation will examine the decisions in these cases and project what may happen in a Supreme Court review of these cases based on the Court's previous statements in Ex parte Lundgren, Labcorp v. Metabolite Labs, and ATT v. Microsoft.

Disaggregation of Patent Damages - Lara Swensen

Patent damages are a topic often muddled or given short-shrift by courts, lawyers, and the very experts retained to opine on them. One area of interest in recent case law and commentary is reconciling the “entire market value” rule with long-standing requirements that damages must be apportioned. In short, how should damages be assessed where only certain components of a product are infringing, and it is not clear which components drive overall demand for the product? This presentation will give a brief overview of the damages standards in patent cases, present a case study with opposing views of the appropriate methodology under recent case law, and offer a potential means of addressing this legal and economic dilemma in practice.

The PTO's New Disciplinary Rules - Jon H. Muskin

On August 14, 2008, the USPTO published a Final Rule Notice entitled "Changes to Representation of Others Before the United States Patent and Trademark Office," 73 Fed. Reg. 47650 (Aug. 14, 2008). Noteworthy changes include revisions to: the conduct of disciplinary investigations, the conduct of disciplinary proceedings, requirements of signature and certificate correspondence filed in the Office, and what the USPTO now considers to be "practice before the office." The latter is arguably the most significant of the rule changes, as this changes the extent of how certain individuals (i.e., patent agents, non-attorneys, attorneys not registered before the USPTO) can involve themselves in patent and trademark matters. This presentation will review and summarize all of the significant rule changes.

Year in Review II (Case Law Update) - J. Matthew Buchanan

An overview of several key developments in patent case law, including opinions from the Court of Appeals for the Federal Circuit, Supreme Court petitions for certiorari, and decisions from district courts.