Dunes™ CLE in Las Vegas

Registration & Continental Breakfast

Claim Construction After Phillips v. AWH - Wesley L. Austin

This presentation discussed the Federal Circuit's en banc decision of Phillips v. AWH, which issued on July 12, 2005. The importance of dictionaries and their role after Phillips were covered, which included the specific role of dictionaries versus the specification. Topics such as technical versus general dictionaries, a single dictionary definition and multiple dictionary definitions were also presented. Patent preparation and prosecution techniques were examined in view of Phillips, as well as claim construction in the context of litigation.

A number of cases have applied Phillips since the en banc decision. Several cases applying Phillips were discussed including Datamize v. Plumtree Software, Tantivy v. Lucent and Pfizer v. Ajix.

Ethics and Inequitable Conduct in Patent Prosecution - Robert Ryan Morishita

Ethics and Inequitable Conduct in Patent Prosecution: Assertions of invalidity of patents for inequitable conduct are raised in nearly every patent infringement case. The most common form of inequitable conduct is the intentional concealment or misrepresentation of a fact material to the examination of the patent. As a first point of discussion, this presentation reviewed the state of the law in determining “intent,” “concealment,” “misrepresentation,” and “material” to try to provide guidelines for minimizing the likelihood that inequitable conduct will be found.

However, there are circumstances where ethical duties to the client or to other clients may raise questions as to whether an otherwise “material” fact should be disclosed. Complicating the matter further, patent attorneys are governed by state ethical rules as well as the canons and disciplinary rules of the Patent Office. Thus, as a second point of discussion, this presentation examined the disclosure requirements required to avoid an assertion of inequitable conduct in light of the ethical duties under the model rules and the Patent Office canons and rules.

Break

Experimental Use Exemptions to Patent Infringement - Professor Vanessa B. Pierce

The presentation provided practitioners with a comprehensive update on "experimental use". When one mentions experimental use in the context of patent law, most practitioners recall (hazily, fondly, or otherwise) their studies of corsets and pavement. In those cases, the difference between an invalidating public use and an experimental use was the inventor's control over and monitoring of the alleged experiment. On July 28, 2005, the Federal Circuit reiterated the importance of the inventor's control over the experimental use in Electromotive Division of GM v. Transportation Systems Division of GE.

"Experimental use" also applies to activities that would otherwise constitute infringement. Under the FDA research exemption, activities that are reasonably related to the submission of information to the FDA are exempt from infringement pursuant to 35 U.S.C. §271(e)(1). In the case of Merck v. Integra, decided on June 13, 2005, the Supreme Court broadly interpreted this exemption to apply to both early pre-clinical testing as well as later clinical testing.

Under the common law experimental use exemption, purely philosophical research does not amount to infringement. In the recent case of Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002), however, the Federal Circuit has indicated that this exemption is very narrow and strictly limited.

Lunch

Patent Strategies for Emerging Growth and Start-Up Companies - Greg Sueoka

This presentation discussed various strategies for developing a patent portfolio. Topics covered included: the changing landscape for patents, understanding the different reasons why companies need to develop a patent portfolio, factors to consider in developing a patent strategy and portfolio, example portfolio development strategies, and once developed, options for monetizing a patent portfolio.

The Evolving Role of Inherency in Patent Law - Mark Sandbaken, Ph.D.

This presentation discussed the Federal Circuit's recent case law concerning inherency, with an emphasis on its application to biotechnology. Inherency is usually applied in anticipation to show the presence of an unrecited claim limitation. Inherency also can be applied as part of an obviousness argument, however. This presentation discussed the role of inherency in recent cases such as SmithKline Beecham Corp. v. Apotex Corp. and Rasmusson v. SmithKline Beecham Corp. Patent preparation and prosecution strategies were discussed, as well as offensive and defensive strategies for litigation.

Break

Proposed Legislative Changes to Title 35--Patent Reform: Patent Act of 2005 - Panel Discussion
Professor Vanessa B. Pierce (moderator)
Greg Sueoka
Mark Sandbaken, Ph.D.
Wesley L. Austin
Robert Ryan Morishita

On June 8, 2005, Congressman Lamar Smith (R-TX) introduced the Patent Reform Act of 2005. (H.R. 2795). Congressman Smith has said the bill "is without question, the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act."

The proposed bill includes sweeping changes to U.S. patent law. In one of the most controversial provisions, the bill would alter the availability of injunctive relief by adding a "fairness" factor to the determination, and by staying injunctions pending appeals unless patent owners can show irreparable harm. The bill also seeks to harmonize the U.S. system with those of Europe and Japan by moving from the present first-to-invent to a first-to-file system. Other changes include elimination of the best mode requirement; introduction of post-grant opposition procedures; and limitation of damage awards. The panel discussion focused on the issues surrounding these and other key provisions of the Patent Reform Act.

Adjourn