PRG Magalog For Spring 2013 Advanced Courses Program

PATENT RESOURCES GROUP
IN PATENT ANNUAL SPRING PROGRAM

PRGs Spring Hotel
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Hyatt Regency Grand Cypress Orlando, FL April 7-13, 2013
Join Us in Florida Get the Training You Need to Be Prepared for the America Invents Act!
Choose from 14 great advanced patent law courses. See page 3
Updated one-day course focused on the latest implications for your practice of the America Invents Act! See page 4
Beautiful venue with many on-site activities. A truly amazing room rate!
See page 32 See page 32
All returning courses updated to reflect the impact of the America Invents Act!
THE ALMA MATER
OF
40,000 PATENT ATTORNEYS
AND
AGENTS.
Register now at www.patentresources.com
PRGs 2013 Annual Spring Program in Patent Law

For over 40 years, Patent Resources Group has been the nations leading educator of patent professionals, providing attorneys, agents, engineers, and scientists from around the world with comprehensive courses and publications that set the industry standard for patent education.
WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN FLORIDA IN APRIL? BECAUSE PRGS ADVANCED COURSES:
Will prepare you for the America Invents Act all of our returning courses have been updated as needed to reflect the ongoing impacts on you and your practice of the America Invents Act (AIA) of 2011, including the changes that take effect in March 2013. We're also bringing back an updated version of our special one-day course focusing solely on the AIA, at a special discounted price for Loyalty Members or for attendees taking more than one course at this Conference. This is a course that every practitioner needs to take. Well help you avoid the dangers that the AIA poses to practitioners in all areas of patent law. Provide an amazing value if you register for your courses by February 6, 2013, you'll pay the same tuition rates that weve been charging since 2005! And if you come to our programs every year, youll continue to benefit from our special Loyalty Program discounts for our Advanced Courses (see below). Go beyond the basics, showing how to apply the law to real-world intellectual property issues and to make 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 patent law and the value you bring to your employer. Provide an unparalleled opportunity for networking and exchanging ideas with our faculty and your fellow attendees.
The bottom line for you and your organization is that in todays challenging environment, you cant afford not to invest in your future. And attending PRGs 2013 Annual Spring Advanced Courses Program is the safest investment you can make. Register soon spaces will fill quickly!
About PRGs Loyalty Program

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses Programs. If you were a paid attendee at any PRG course in 2012 or already in 2013, you are automatically a loyalty member and will be entitled to special pricing when you attend any courses at our 2013 Advanced Courses Programs! And after being a paid attendee at any PRG course in 2013, youll automatically be eligible for Loyalty Program benefits in 2014. Loyalty Program members save $200 on tuition for each 2- or 3-day Advanced Course and $100 for each 1-day course. (But you'll get special Loyalty savings of $200 for the one-day AIA course at the 2013 Annual Spring Program!)
2 www.patentresources.com
Hyatt Regency Grand Cypress

ORLANDO, FL APRIL 7-13, 2013
Three-Day Courses: April 7-9, 2013 (Sun-Tues) Art & Science of Patent Searching Patentability, Validity & Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 6
Faculty: Brian Thurmond and Jonathan Skovholt
Chemical Patent Practice
........................................................... Faculty: Tom Irving, Paul Browning, Jill MacAlpine, Deborah Herzfeld, and Karen Cochran
Crafting and Drafting Winning Patents

Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris
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12
Designing Around Valid U.S. Patents
.......................................... Faculty: Patrick Burns, John Pinkerton, Patricia Prior, and Robert Turner
14
Pharma & Biotech Strategies for Patent Prosecution, Hatch-Waxman & Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
Faculty: Janis Fraser, Mark Ellinger, Terry Mahn, and W. Chad Shear
Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

Faculty: Kevin Laurence and Matthew Phillips
Procuring and Enforcing Business Method and Other Software-Based Patents After Bilski and BMC
Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan
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30
One-Day Course: April 10, 2013 (Wed) America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Faculty: Paul Gardner and Edward Manzo
14 advanced patent law courses are available for the 2013 Annual Spring Advanced Courses Program. Tuition for each three-day course is $2,195 through February 6 and $2,295 after that date. Combined tuition for the Patent Searching Course and Workshop is $2,590 through February 6 and $2,690 after that date. Tuition for the one-day course is $995. Loyalty Program members save $200 on tuition for all Advanced Courses at this program!
Three-Day Courses: April 11-13, 2013 (Thurs-Sat) Comprehensive PCT Practice: How to Master Its Challenges
Faculty: Carol Bidwell and T. David Reed
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10
Drafting Patent License Agreements
............................................. Faculty: D. Patrick O'Reilly, Brian Kacedon, and William Pratt
16
Federal Circuit Law (2011-2013)
.................................................. Faculty: Gale Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll
18
Patent Damages
................................................................... Faculty: Michael Elmer, William Cochran, and Christopher Benson
21
Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman
Patent Infringement Litigation

Faculty: Cole Fauver and Jake Holdreith
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24
Please see page 35 for information about the rest of our 2013 program calendar
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
www.patentresources.com 3
America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions
Projected State Bar CLE Credit:
Course Faculty
6.0 Hours
Orlando, FL April 10, 2013 (Wed) Hyatt Regency Grand Cypress 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m.
Paul Gardner, PRGs academic director, has over 45 years of experience in examining and prosecuting patent applications, litigating patents, and teaching patent law and Patent Office practice to thousands of attendees for PRG and the UCLA, University of Washington, and Seattle University law schools. Edward Manzo, a partner at Husch Blackwell, is known for his groundbreaking patent work in the courtroom, the classroom and the legal community. He has successfully resolved numerous patent and trademark infringements and misappropriations on behalf of clients in a variety of industries. He is an adjunct professor at a major law school and the author and editor-in-chief of three respected reference books.
Registration deadline: March 15, 2013 Register early! Spaces will fill quickly.
PAUL GARDNER
PATENT RESOURCES GROUP ALEXANDRIA, VA
EDWARD MANZO
HUSCH BLACKWELL SANDERS WELSH & KATZ CHICAGO, IL
Why Should You Take This Course? The America Invents Act (AIA), which was signed into law on September 16, 2011, is the most significant development in the patent world in a generation. If you dont have a thorough understanding of how this legislation will affect your practice, then the risks to you, your firm or company, and your clients are great. This course will provide the understanding that you need to practice effectively under the new law, while also highlighting areas where unanswered questions remain. Course Description s all of us in the patent profession know, the time has come for us to become intimately familiar with the extensive, complicated, unprecedented changes and additions to Title 35, some of which have already become effective, and the remainder of which will become effective on March 16, 2013. Not only do patent lawyers and agents have to master the new law, we must during a transition period that will last for many years to come remain acutely aware of the old law and be able to determine 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 patent professionals 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 definitively resolved until the Federal Circuit interprets the law many years from now.
Comment from previous attendee: Lecturers, materials, location everything with PRG exceeds expectations and is of the highest quality. Steve Rost Taft Stettinius & Hollister LLP October 2012 attendee The course will analyze the statutory changes, consequences and unresolved issues, including the following, most significant subjects: 1. The first inventor to file system, which takes effect on March 16, 2013, and replaces the
first to invent system of the current law. The course lecture and materials consider in detail the provisions of completely rewritten Section 102 of Title 35 U.S.C., which expands both geographically and temporally the universe of prior art that may render claims unpatentable for lack of novelty or for obviousness under Section 103, and the applications and patents to which the new law applies. 2. The new Post Grant Review proceeding (so-called by the applicable new statute, Chapter 31, Sections 321-329) before the newly named Patent Trial and Appeal Board, (formerly the Board of Patent Appeals and Interferences). This course considers in
depth the requirements, limitations, potential risks and consequences of such a review, which may be initiated by any third party after September 16, 2012, who desires to challenge the validity of any claims in a patent issued or reissued during the nine month period preceding initiation of the review, on the ground(s) of failure of the claims(s) to comply with the requirements of one or more of Sections 101, 102, 103 or 112 (with the exception of a best mode violation, discussed below). 3. A new Inter Partes Review proceeding before the Board under new and revised Sections 311-319, effective September 16, 2012, which replaces old inter partes reexamination. The new proceeding will permit a third party to seek cancellation of claims in any patent (no matter when filed or issued) for lack of novelty under Section 102 or obviousness under Section 103, but based only on prior patents or printed publications. 4. A revised inter partes reexamination proceeding, which became effective on September 16, 2011 (and expired on September 16, 2012 in favor of Inter Partes Review of paragraph 3 above), revised by imposing a different requirement for granting a request for review. The new requirement is that the information presented in an inter partes review request must provide a showing that there is a reasonable likelihood that the requester will prevail (not merely the prior substantial new question of patentability showing under the previous legal standard). 5. A new derivation proceeding under new Section 291 of the statute, a proceeding before the Board whereby a patent applicant may establish that the inventive entity named in an earlier-filed application published within a year prior to initiation of the proceeding was derived by the earlier filer from the inventive entity initiating the derivation proceeding. 6. Revised Section 301 of the statute
which permits any person to submit not only prior art consisting of patents or printed publications believed to have a bearing on the patentability of a particular patents claims, a limitation of the previous version of the statute, but also statements of the patent owner filed in a federal court or Office proceeding wherein the patent owner expressed a position on the scope of any claim of the particular patent, and also related documentation (e.g., court pleadings and/or evidence). Such written statement(s) and related documentation may be considered by the Office in any proceeding reviewing the patent, but only with respect to interpretation of the claim(s) involved. 7. New Section 257, which permits the owner of a patent to dispose of potential inequitable conduct issues via a request for supplemental examination of the patent by the Office to consider, reconsider, or correct information believed by the applicant to be relevant. Applying the substantial new question of patentability standard, the Office will decide whether to order ex parte reexamination based on the information submitted in support of the patent owners request. If reexamination is ordered, the Office will consider all of the information submitted, not just the patents, printed publications and newly-added written statements to which ex parte reexamination requests are otherwise limited under Chapter 30 of the statute, Sections 301-307. 8. A Transitional [8 years, beginning September 16, 2012] Program for Covered Business Method Patents, a post grant review proceeding before the Board (mentioned in paragraph 2 above), for challenging the validity of any covered business method patent for which the petitioner initiating the proceeding (or his/her privy) had been charged with infringement. (Covered patents are those claiming a method or corresponding apparatus for performing data processing...operations used in the practice...of
a financial product or service other than in technological inventions. Sec. 18(d)(1) of Public Law 112-29.) 9. New best mode law is a step toward global harmonization. The statute retains the best mode disclosure requirement in Section 112, Paragraph 1, but eliminates its violation as the basis for an invalidity or unenforceability (inequitable conduct) defense. Newly rewritten Section 282(a)(3)(A) of Title 35. 10. Prioritized Examination, a procedure for obtaining expedited examination of applications, subject to applicants compliance with certain prerequisites and payment of significant fees, aimed at final disposition of the application with 12 months of the Offices granting of prioritized status. 11. Prior user rights pursuant to rewritten Section 273, under which a good faith, domestic commercial use of a claimed invention more than one year before the effective filing date of a claimed invention (or the date the claimed invention was first disclosed under a limited one-year grace period provided in Section 102(b)) is a defense to infringement. 12. Other changes in the AIA of less substantive concern and/or less frequently encountered, will also be considered, albeit to a lesser extent, such as Added inventors oath or declaration provisions under rewritten Section 115 of Title 35, Very limited patentability of tax strategies, Patent Office fees, including new micro entity fees, Preclusion from evidence of failure of an accused infringer to obtain advice of counsel, and Elimination of qui tam actions for false marking. G
he Hyatt Regency Grand Cypress will be your home away from home while you attend PRG's Spring Advanced Courses Program.
Art and Science of Patent Searching Patentability, Validity & Infringement

... And Optional Patent Searching Workshop
Course Faculty The faculty consists of patent searching and analysis leaders at Landon IP who have
15.0 Hours
Orlando, FL April 7-9, 2013 (Sun-Tues) Hyatt Regency Grand Cypress 8:15 a.m. - 11:30 a.m. and 1:30 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)
expert search experience as attorneys, patent search instructors, and examiners with the U.S. Patent and Trademark Office (USPTO).
BRIAN THURMOND
JONATHAN SKOVHOLT
LANDON IP, INC. ALEXANDRIA, VIRGINIA
Course Description
Why Should You Take This Course? The Patent Searching course presents a systematic process for performing prior art searches with greater efficiency and precision. It is designed to benefit a broad audience, including novice searchers, seasoned patent practitioners, and search professionals. The course also provides unbiased, detailed information concerning the latest databases and tools of the trade. Expert tips from search professionals are provided to enable high-level patent research through proper scoping, structuring, and performance of the search. Patent practitioners will recognize that a robust understanding of the prior art is a vital part of the patent process, particularly in view of accelerated examination demands and the America Invents Act.
It provides direction for determining when a search is needed and what types and sources of 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 solid foundation for those who seek to conduct searches accurately and efficiently. The course teaches when, how, where and why to conduct a search and is appropriate for those who will conduct the search or commission it. Designed for patent attorneys and agents, inventors, paralegals and research managers, the course and 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 to a particular search engine, a database product or a patent information service. Instead, the instructors teach skills that are applicable across databases, both proprietary and public, and without bias toward the features of a particular search engine. Unique among its many features, the course provides a comparison of the major patent search engines and teaches the strengths, weaknesses and benefits of the database providers who provide them.
his course comprehensively teaches how to conduct a professional patent search.
Comments from previous attendees: Well structured course. Good pace. Very useful tips and information. High relevance to my specific 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 and written by twelve practitioners: eight experienced patent information specialists and four former examiners with expertise in both English and foreign language searching. The
curriculum reflects the combined expertise of Landon IP, which is one of only three companies selected by the USPTO to conduct patent searches on its behalf with a view to reducing USPTO examiners towering examination backlog. Upon completion of the course, the attendee will have learned: How to approach a search in a systematic, methodical and exhaustive way. How to properly scope the search before even beginning.
How to carefully search by classification, text query progression, and citations, knowing the benefits and pitfalls of each. Both the major differences and subtle nuances in conducting a patentability, validity or infringement patent search. Issues unique to searching within specific technical disciplines. Approaches to searching non-Englishlanguage patents and published applications. Approaches literature. to searching non-patent
Course materials The text for the course is Art & Science of Patent Searching Patentability, Validity & Infringement, edited by Matthew Rodgers, Long Nguyen and David Hunt. The thoroughness of the text will minimize the need for note-taking at the program.
Optional Patent Searching Workshop

A patent search engine user account is needed for the Workshop. Please contact PRG if you need assistance in obtaining one. This Workshop is an optional add-on to the Art and Science of Patent Searching course. It gives attendees the opportunity to practice hands-on patent searching alongside the course instructors. The faculty will work with the attendees to answer questions and provide guidance as they execute their searches in real time. The Workshop is structured to test each attendees retention of the concepts covered in the course as they put their training to use in several sample search projects. Attendees will be provided with multiple sample disclosures, encompassing a wide variety of technologies, on which they will base their search. The informal, lecture-free setting will allow each attendee to work independently, but in close proximity to an instructor. Attendees must bring their own laptop computers and will be provided with wireless Internet access in the classroom. Attendees are also asked to bring
their own search engine user accounts so that they will be able to practice using familiar search tools. The instructors will be able to provide assistance with any of the major patent search engines. The attendees will be guided through scoping the search, performing the search and analyzing their results. Answer keys will be provided at the end of the Workshop so that participants may gauge their progress and have a reference to use for additional practice following the class. Requirements and Prerequisites: Completion of the immediately preceding 2013 Art and Science of Patent Searching course Important: Wireless-enabled laptop computer (Internet Explorer or Firefox web browser, and Microsoft Office package recommended) Important: Patent search engine user account (in an attempt to focus on course concepts and high-level searching techniques, publicly available search engines cannot be solely relied upon for the lab portion of this course) Important: Unrestricted use of third-party wireless connection (please verify with your IT department that your security settings will allow access to the wireless hub necessary for the course). G
Approaches to reporting search results. Differences between the major patent search engines and important considerations in selecting an appropriate search tool. Ways to get high-level information from patent search results. The basics of several peripheral topics including the use of the USPTO search templates, searching for accelerated examination, and searching using industry standards.
elax in the sun by the half-acre, lagoon-style swimming pool.

Course Faculty
15.0 Hours
(Including 2.0 Hours Legal Ethics)
The faculty has decades of collective experience across the complete spectrum of chemical practice.
Orlando, FL April 7-9, 2013 (Sun-Tues) Hyatt Regency Grand Cypress 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)
TOM IRVING
PAUL BROWNING
JILL MACALPINE
DEBORAH HERZFELD
KAREN COCHRAN DUPONT WILMINGTON, DE
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC
Course Description his up-to-the-minute course teaches the chemical patent practitioner how to use fundamentally sound principles to prepare and prosecute a United States chemical patent application 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 by avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para. 2 invalidity) that is best described as patent profanity; Why Should You Take This Course? Are you well-versed on how chemical claims are constructed and construed? Well enough to avoid an overly narrow, often disastrous claim construction leading to a royalty-free transfer of patented technology to your competitor? Well enough not to trip up on obviousness over KSR? If youd like to answer these questions with a resounding yes then you should attend our highly-acclaimed, comprehensive Chemical Patent Practice course. Dont fail your clients or yourself in these tough economic times learn from the best. 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 postKSR world, including illustrations from several real U.S. patents prosecuted by a faculty member; 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 by customers; 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 Federal Circuit's en banc decision in Therasense and progeny thereof, and the impact of the AIA supplemental examination procedure that went into effect September 16, 2012; and understanding the implications of the various provisions and effective dates of the America Invents Act (AIA), particularly as they relate to filing strategies in and around the rapidlyapproaching March 16, 2013 date when the first inventor to file provisions take effect.
For example, the rising tension within the Federal Circuit panels on the role of the specification in claim construction and the increasing pressure to revisit the Cybor rule of de novo review of claim construction on appeal will bring important developments for practitioners in the very near future on what to expect for claim construction. For the practitioner, the take-home message remains
to prosecute as if your life depended on literal infringement and lay the groundwork in the specification (the single best guide to the meaning of a claim term) for a broad claim construction. This course, presented by an experienced faculty, each with a significant depth of experience, suggests many practical approaches with those objectives in mind. We discuss how to establish patentability
and validity under 103 in the post-KSR world, where knowledge and direction equate power. Case studies, involving real U.S. patents, will provide a framework for creative thinking on the law of prima facie obviousness. We will look closely at the guidelines for best mode disclosure from a substantive and ethical point of view, particularly in view of changes made in the AIA. In addition, we consider the Federal Circuit inequitable conduct decisions in the context of the en banc Therasense decision, including its progeny, many of which will be reviewed for the lessons they provide to both in-house and private practice lawyers. In fact, the inequitable conduct and best mode discussions provide the two hours of ethics that is otherwise sometimes hard to find, particularly on substantive topics related to your practice. The ethics discussion should be from 8:30 to 10:30 a.m. on the second day (as currently estimated). The last day will include a discussion of a hypothetical chemical patent problem that synthesizes and reinforces the teachings of the class. The enactment of the AIA does not wipe the patent law slate clean. Because of the way the various effective date provisions activate and apply, the old law will be relevant to practitioners until at least March 16, 2034! Thats right practitioners will have to be experts in both old and new laws for at least
another 22 years! The Chemical Patent Practice faculty has lectured on the new law extensively and has studied it intensively in conjunction with people who were instrumental in the drafting of the legislation. The faculty will bring all of that background to their presentations to you. And do not be misled into thinking that this course is applicable only to patent prosecutors. The principles taught will greatly help those involved with prelitigations, litigations, Orange Book listings, due diligences and analysis of third-party patents for validity, infringement, and enforceability issues. Comments from previous attendees: This is one of the best courses that I have ever taken. All of the instructors are excellent and provide very helpful practical tips regarding chemical patent practice. The material provided is excellent and a very good reference guide. Mark Cohen Scully, Scott, Murphy & Presser PC October 2009 attendee Good overview and reminders of good practice points. Great consolidation of information and tips 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 the Finnegan, Henderson, Farabow, Garrett & Dunner faculty, with the invaluable assistance of editor Stacy D. Lewis, will be provided to attendees at the course. This treatise covers virtually every situation that can arise in the preparation and prosecution of a chemical patent application. It will remain on your desk and in continual use long after the course. The treatise underwent a complete overhaul in the aftermath of the enactment of the AIA to provide completely updated materials to the course attendees. Although the treatise is of great value, the faculty members have found that the best vehicle for teaching is the use of slides, which will be provided in book form to attendees on the first day of class. The slides book will contain ample room for note-taking and cross-referencing and, as such, will be a valuable addition to your daily kit of chemical patent practice tools. G
njoy the beautiful flowers, landscaping, and statues along the resort's trails for walking, jogging, or biking.
Comprehensive PCT Practice: How to Master Its Challenges

Course Faculty The two faculty members have extensive government and corporate experience in all
15.0 Hours
aspects of PCT matters.
Orlando, FL April 11-13, 2013 (Thurs-Sat) Hyatt Regency Grand Cypress 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m. (Thurs-Fri) 8:15 a.m. 11:30 a.m. (Sat)
CAROL BIDWELL
CONSULTANT ON PCT MATTERS FOR THE WORLD INTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR OF THE USPTO OFFICE OF PCT LEGAL ADMINISTRATION
T. DAVID REED
CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT; FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER & GAMBLE COMPANY, CINCINNATI, OHIO
Course Description ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itself as a valuable way for applicants to obtain patent protection in many countries around the world. The number of PCT Contracting States is currently 146 and growing. PCT members include the vast majority of industrialized, developing and emerging countries of the world. The Comprehensive PCT course guides the attendees chronologically through the international phase of the PCT and into the national phase before the national and regional patent Offices of interest. The instructors present strategies for effective use of the PCT, the benefits obtained and options available when using the PCT. In addition, the course covers the numerous safeguards available for applicants, including the restoration of priority rights and incorporation by reference.
Why Should You Take This Course? Attendees will learn the benefits and advantages of the Patent Cooperation Treaty (PCT) procedure as well as the numerous options and safeguards available for applications filed under the PCT. The Comprehensive PCT course enumerates procedures and strategies designed to obtain patent protection for inventions in multiple countries through the filing of a single international application under the Patent Cooperation Treaty. While a basic working knowledge of the PCT is useful when taking this course, it will prove valuable to both new and experienced users of the PCT.
The PCT allows applicants to secure a filing date in all PCT Contracting States by filing a single application in their home country and in their home language. The PCT provides a comprehensive search of the prior art and a preliminary, nonbinding written opinion on the novelty, inventive step (non-obviousness) and industrial applicability (utility) of the claimed invention. In addition, applicant has an additional 18 months beyond the end of the Paris Convention priority year to make final decisions on where to seek patent protection. The delay in the associated expenses of national filings alone make the PCT a costeffective procedure and can result in a significant cost saving by helping to avoid unnecessary filings and/or allowing filings in countries where commercial importance has grown between international filing and national phase entry. By filing an international application, all PCT Contracting States and four regional offices are automatically designated and are available for
national phase entry later in the process. Whether the international application is the first filing or it claims priority to an earlier filing, the applicant does not have to make the final decision on where to seek patent protection until 30 months from the earliest priority date. The final decisions are based on the information obtained in the international search report and the international preliminary report on patentability as well as information obtained by the applicant regarding the scientific status and commercial value of the invention. In short, through using the PCT, the applicant will have a much better idea of the likelihood of obtaining commercially meaningful patent protection for the claimed invention. In addition, the applicant will have the opportunity to obtain additional search results through the supplementary search option as well as have the opportunity to advance prosecution by using the optional international preliminary examination procedure. Applicant can amend the application and/or provide arguments for
consideration by the examiner prior to the issuance of the international preliminary report on patentability (Chapter II of the PCT). Depending on the International Search and Preliminary Examining Authorities selected by the applicant, certain national and regional patent Offices (including the US) allow a favorable PCT work product (for example, preliminary report on international patentability) to be applicants ticket to accelerated examination on their patent prosecution highway. This Comprehensive PCT course discusses: a) when the use of the PCT is advantageous and when it is not; b) the effects on patent term
based on the first (priority) application; c) selection of international authorities under the PCT for greatest advantage; d) the information received by applicants during the PCT process; e) entering the national phase; f) upcoming changes in the PCT; g) use of PCT search and examination results to utilize the Patent Prosecution Highway; h) the effect of the America Invents Act (AIA) on practice under the PCT; plus a host of other PCT-related topics. In addition, the course presents the growing information available from the WIPO Internet site via the PATENTSCOPE search tool. The Comprehensive PCT course includes a detailed look at patent-related provisions of the Paris Convention.
Comments from attendees of past PCT courses: Excellent instructors - thorough coverage of subject. The course materials are excellent. The lecturers have much experience in PCT-related activities and have the ability to explain that to a class. Outstanding speakers with practical experience. Course Materials A comprehensive text is used in the course presentation that includes detailed explanations of the various topics and sample forms. G
ip a cool beverage on the Grand View Terrace, overlooking the lush Florida surroundings.
Crafting & Drafting Winning Patents

Course Faculty
15.0 Hours
(Including 1.0 Hour Legal Ethics)
Collectively, over 70 years of experience litigating, prosecuting and teaching about patents.
DALE LAZAR
DLA PIPER US LLP RESTON, VA
PAUL ULRICH
DINSMORE & SHOHL LLP, DAYTON, OH
JOHN TSAVARIS
KENYON & KENYON NEW YORK, NY
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).
Why Should You Take This Course? Learn the areas of chaos in Federal Circuit jurisprudence of primary concern to practitioners who prepare and prosecute patents. The course will focus on a series of cases where the patent owner lost, not because of what the litigators did, but because of how the patent practitioner drafted and prosecuted the application. Compounding the problem is the time pressure created by moving to a firstinventor-to-file system under the America Invents Act (AIA) and the anticipated increase in the filings of provisional applications with their many traps for the unwary. The course will teach you how to write provisional applications and draft and prosecute non-provisional patent applications to avoid these pitfalls.
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 from the 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 Surgical Corp., where the court imported the limitation pleated into a broad claim reciting a surgical mesh plug used for hernia repair, relying heavily in doing so on the Summary of the Invention that described a plug having pleats. The court repeatedly referenced the Summary of the Invention throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent did recite a pleated plug, without even mentioning, let alone reconciling, the immutable doctrine of claim differentiation that should have sustained the broad claims. Claim interpretation is only one chaos region. There are others where the Federal Circuit case law is equally inconsistent, including the law concerning the written description requirement, means-plusfunction clauses, the doctrine of equivalents, and prosecution history estoppel. This creates an immense dilemma for conscientious patent practitioners trying to write and prosecute patent applications that will provide their clients with the patent protection they deserve. Which cases should be relied on, and which should be ignored?
Comments from previous attendees: Practical advice for drafting enforceable patent claims, sprinkled with supporting legal authority. Spanning the gap between current Federal Circuit law and actual, practical tips on how to incorporate the latest law into successful prosecution practices. Good coverage of current law and potential pitfalls associated with certain practices (I'm planning to make changes to my practice with regard to various pitfalls you have pointed out).
Answer to the Conundrum. There is a sound basis for dealing with the dilemma generated by the Federal Circuit! A practical ex parte practice path is now in being that navigates through the chaos. Its road sign reads LP-CD (Low Profile, Common Denominator Practice). LP-CD, despite the chaos it penetrates and traverses, is charted clearly and boldly in this PRG course. Crafting & Drafting Winning Patents was designed and created by PRGs Professors Paul Gardner and Irving Kayton and enriched by the PRG course faculty.
This course distills everything from the law (and dicta) of the Federal Circuit and its predecessor courts that has a material bearing now, today, and in the foreseeable future, on how we must successfully: 1. Prepare for drafting the application; 2. Design what must be included in, and excluded from, the provisional application and the nonprovisional application specification and drawings and, very importantly, in what form and format it should be included; 3. Engage in claim drafting strategy designed to result in literal infringement, recognizing that this strategy must be taken into account as a principal factor in the earlier design of the specification; 4. Develop a protocol and a philosophy for prosecuting the application that advance and do not defeat the efforts in (1) through (3); and 5. Balance the accomplishments of (1) through (4) against, first, increased costs of crafting and drafting that sometimes accrue and, second, their effect on the length of the patent term that will result, and third, the time pressure created by moving to a first-inventor-to-file system under the AIA.
Crafting & Drafting is not a survey course covering the broad landscape of patent prosecution or a workshop. Instead the course drills deeply into the six specific areas of Federal Circuit chaos that have most seriously and frequently destroyed the value of patents. We will focus on what we can do as patent prosecutors to prepare and prosecute applications that are immune from the chaos. Crafting & Drafting will almost certainly effect a change in your patent law life, because the Federal Circuit has effectively (albeit unwittingly) dictated that it be so. It is noteworthy that many hundreds of patents have already issued using the Crafting & Drafting techniques set forth in this course (several of which will be reviewed), with beneficial effect in license and litigation negotiations. Legal ethics issues including the recent Therasense decision and its profound changes to the law of inequitable conduct and duty of disclosure will be covered from 9:15-10:15 a.m. on the last day of the course, as currently estimated.
Who Should Take This Course? This course is for patent practitioners with a minimum of two years of practice, and preferably more. It is sufficiently sophisticated for even the most experienced. The faculty knows this to be true because the problems and solutions about which they conferred and debated in bringing this course to fruition plumbed the depths of their combined patent law knowledge, experience and ongoing research and scholarship. Beginning patent practitioners should look forward to PRGs four-day Workshop designed specifically for them, The Winning Patents Workshop. For details visit our website at www.patentresources.com. Course Materials A comprehensive, one-volume course text, entitled Crafting & Drafting Winning Patents, and a bound set of lecture slides, are definitive on the subject and will be given to registrants at the course. The Textbook and slides are constantly updated and revised to include recent decisions and changes in the law including the applicable provisions of the AIA. G
he upper pool deck is a great place to unwind after you are through with your courses for the day.

15.0 Hours
Course Faculty PRG has offered Designing Around Valid U.S. Patents for over 15 years, and it remains one of our most popular courses.
PATRICK BURNS
GREER, BURNS & CRAIN, LTD. CHICAGO, ILLINOIS
JOHN PINKERTON
ROSE WALKER DALLAS, TEXAS
PATRICIA PRIOR
GREER BURNS & CRAIN LTD. CHICAGO, IL
ROBERT TURNER
JONES DAY DALLAS, TEXAS
Course Description n Markman and Cybor, the Federal Circuit required district courts to construe claims as a matter of law and decided to review claim construction de novo. The object was to make claim construction predictable, so that claims would better perform their public notice function. The result has been an unmitigated disaster, often (but not always) reading limitations into 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 notice function of claims ab initio. This course will explore the current condition of claim construction in detail and explain how competitors can use it to their advantage, even when the claims on their face are literally infringed.
Why Should You Take This Course? The Designing Around course distills the patent infringement analysis into comprehensive yet concise step-bystep checklists that can be used by attorneys at all experience levels to assist their clients to develop competitive, noninfringing products.
Comments from previous attendees: Practical explanation of case law to apply to patent drafting, infringement analysis and opinion writing. The substance was excellent. Presentations gave good overviews and the course books give encyclopedic detail for topics of interest. Well organized, very thorough, presenters all know their stuff. Four cookbooks covering (1) literal infringement, (2) infringement under the doctrine of equivalents, (3) infringement of means plus function claim elements, and (4) prosecution history estoppel, are provided. Using and following these cookbooks, which distill opinions by the Federal Circuit and the Supreme Court in cases from Pennwalt to Festo IX, any patent practitioner can counsel his or her client on how to design around the patented invention with almost certain impunity a design that appropriates the patented invention and that, prior to Pennwalt and its progeny, would have been held an infringement rather than the socially desirable activity of designing around.
This course will show practitioners representing potential infringers how to counsel competitive product design under the guidance of Federal Circuit and Supreme Court cases, which will almost always be viewed as effective designing around. How to conduct litigation to achieve a happy ending for your infringement-accused client will be set forth in elegant simplicity. Actual Demonstrations To ensure no confusion on anyones part in this exercise, the faculty and students will go through several claim construction exercises and compare their conclusions with the Federal Circuits claim construction in actual cases. A mock design around exercise will also be presented. The demonstration considers client, marketing and engineering perspectives, in addition to legal analysis. To prepare for the exercises and demonstration, the course faculty will illustrate the accused structures relative to the claims in the landmark, no-infringementby-claim construction cases of C.R. Bard v. U.S.
Surgical Corp. and Nystrom, the noinfringement-by-equivalents cases of Slimfold, Laitram and London, and the super landmark, no-equivalents-at-all after-prosecution-historyestoppel case of Festo IX. These and other cases are presented in literal, graphic clarity.
How to Draft Infringement and Noninfringement Opinions The substance presented in the course teaches what is important in opinions. But the faculty also explains the form and format such opinions should take to have the best posture in litigation for both the plaintiff and defendant. The legal ethical considerations involved in infringement opinions relative to willful infringement considerations are presented on the second day from 2:00 to 4:00 p.m., as currently estimated.
Course Materials The two-volume text for Designing Around Valid U.S. Patents is authored by the distinguished course faculty, each of whom has extensive successful litigation, prosecution and counseling experience. Nothing like these unique books exists anywhere else. G
elax in a Hammock by Lake Windsong, the resort's private lake.
Drafting Patent License Agreements

Course Faculty The faculty teaches by sharing decades of combined experience in licensing.
15.0 Hours
D. PATRICK O'REILLEY
D. BRIAN KACEDON
WILLIAM PRATT
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC
Course Description
his course and its text provide concrete drafting and negotiating advice with precise references to existing law.
Why Should You Take This Course? Licensing is a key strategy by which companies realize significant value from their patents and technology. The ability to draft, negotiate and interpret license agreements is a core skill for IP attorneys and other professionals who deal with licenses. This course provides a comprehensive overview of key licensing concepts, the drafting of key clauses in a license agreement, and the impact of related topics such as competition law, export control law and the Bayh-Dole Act. It is taught by experienced license professionals with an emphasis on practical considerations and provides valuable insights and discussion for both novices and more advanced practitioners.
The course lays the groundwork for a clause-by-clause examination of all significant elements of the patent licensing agreement. The practical questions always focused on are how and whether each 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 execution and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples are used, often in workshop form, with carefully crafted problem handouts distributed to the attendees during the course. Throughout the course, the faculty members emphasize achieving legally satisfactory drafting results by recognizing the logical principles that underlie the job to be done. Sample forms are used to explain the practical considerations upon which they are based. Law and precedent are presented in terms that make clear the legal reasoning behind recommended drafting approaches.
Comments from previous attendees: I have been drafting license agreements for the Federal government for 6 years, and this course helped tie together everything I've learned in this time. Suzanne Seavello Shope Centers for Disease Control & Prevention April 2010 attendee The information is very practical and relevant to the 'real world' problems encountered in drafting and reviewing agreements. Glenn Smith Bausch & Lomb, October 2008 attendee
This course provided a great overview of licensing issues and anecdotal scenarios giving rise to said issues. Andrew Weber Honigman Miller Schwartz and Cohn LLP April 2012 attendee This is a course for the craftsman. Both the course and the text provide a solid basis for responding to virtually every license drafting problem that may arise. Even for the highly experienced licensing lawyer, new insights may be provided; at the very least, the course will be a rich, comprehensive refresher. For the less experienced licensing lawyer, it will open vistas, both with respect to hidden problems and to mechanisms for dealing with them.
Legal ethics in license negotiations will be presented during the afternoon session on Day 2 and in misuse issues during the morning session on Day 3, as currently estimated. Course Materials The text for the course is the Seventh Edition of the classic, Drafting Patent License Agreements (BNA), by Brian G. Brunsvold, D.
Patrick OReilley and D. Brian Kacedon. The thoroughness of the text and accompanying slides will minimize the need for note-taking at the program. Moreover, this Sixth Edition includes a computer disk, which has a set of form paragraphs that can be incorporated, with careful editing, into a license agreement to be prepared by the course attendee.
The hardcopy edition of the course text will be given to each attendee at the program. The volume containing the printed slides that will be used throughout the lectures will also be provided at the course; this volume will include extensive license drafting workshop materials and Justice Department licensing guidelines. G
et the soothing sights and sounds of the pool's waterfall melt away the worries of the day.
Federal Circuit Law (2011-2013)

Course Faculty
INCLUDING COMMENTARY on the America Invents Act
15.0 Hours
The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the courts history, provide matchless inside perspective and candid, unequaled insight to Federal Circuit law past, present and future. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the lecturers commentary on whether and how the AIA may affect Federal Circuit law.
GALE PETERSON
COX SMITH SAN ANTONIO, TX (FORMER TECHNICAL ADVISOR TO THE LATE CHIEF JUDGE MARKEY)
SHARON ISRAEL
MAYER BROWN LLP HOUSTON, TX (FORMER LAW CLERK TO CIRCUIT JUDGE LOURIE)
JON HOKANSON
KARA STOLL
LEWIS BRISBOIS BISGAARD & FINNEGAN, HENDERSON, FARABOW, SMITH LLP, LOS ANGELES, CA GARRETT & DUNNER, LLP (FORMER TECHNICAL WASHINGTON, DC ADVISOR TO THE LATE (FORMER LAW CLERK TO CIRCUIT CIRCUIT JUDGE MILLER) JUDGE SCHALL)
Why Should You Take This Course? Each week the Federal Circuit publishes opinions that materially clarify and sometimes alter existing practice. One cannot competently practice as a patent attorney today, in prosecution, litigation, counseling or licensing without an understanding of the Federal Circuits most recent opinions. The distinguished faculty of Federal Circuit Law (2011-2013) will expertly guide you through two years of relevant and up-to-the-minute cases in an interactive lecture format that encourages active attendee participation. Moreover, lecturers will discuss new cases in the context of prior cases (many outside the two-year time span), thus giving you not only current law, but also a perspective on how the law has changed.
America Invents Act of 2011 (AIA) The AIA was signed into law by President Obama on September 16, 2011, and represents, by many interpretations, the most significant change to the U.S. patent system since 1952. The Act, among other things, initiates a first-inventor-to-file system (FITF), and includes provisions on post grant review (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, a revised grace period and redefinition of prior art to include subject matter that is otherwise available to the public, expands the defense of prior commercial use, retains best mode as a disclosure requirement, but removes best mode as a ground of invalidity, and significantly alters the 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 come until resolved through the courts. Some portions of the Act became effective immediately other portions variously become effective 1 year or 18 months after signing. In general, the FITF portions become effective for applications filed on or after March 16, 2013, and for years to come, practitioners will have to practice under parallel 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 Circuits patent opinions during 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, but without any admission or acknowledgement of the variance by the panel majorities despite pointed, compelling demonstrations thereof in dissents and concurrences. This course provides deep insight into the Federal Circuits opinions over the past two years and tells you what you need to know to continue to be an effective practitioner. As Chief Judge Rader opines, by understatement, these cases must leave practitioners in a quandary. Indeed! Clearly ex parte practice is not what it once was.
Perhaps indicative of the courts split on claim construction, for example, is the opinion in Retractable Technologies, Inc. v. Becton, Dickinson & Co. (2011). The panel majority, led by Judge Lourie, concluded that body in the claims required a one-piece body, while the dissent by Chief Judge Rader urged that the claim language and claim differentiation clearly required the conclusion that body was not limited to a one-piece body. A divided court declined to rehear this case en banc, yet the split in the court still percolates. The court also continually issues panel opinions that do not necessarily overturn prior panel opinions, but significantly limit the same. An example is In re Katz Interactive Call Processing Patent Litigation (2011), that limits WMS Gaming, Inc. v. International Game Technology (1999) and Aristocrat Technologies Australia Pty Ltd v. International Game Technology (2008), in the area of means-plusfunction limitations. Is Katz a narrow exception, as characterized by a panel majority in Ergo Licensing v. CareFusion (2012), or has the court gone too far in following WMS, as Judge Newman advocated in dissent? One of the areas that harbors the most unsettling and startling developments is the courts linking of claim construction to the written description requirement, an area that, according to Chief Judge Rader, has become opaque to the point of obscuring other areas of this courts law. This linking has resulted in a number of seemingly inconsistent panel opinions, especially in instances where the patent-in-suit has facially broad claims, but a narrowly drafted specification. In Ariad
Pharmaceuticals, Inc. v. Eli Lilly Co., the court en banc confirmed that there is a separate written description requirement that applies outside of the priority contextthat separate and apart from whether the specification enables the claims, the specification must contain a written description of the invention. Nevertheless, the court remains splintered on this issue, and several judges believe that the invalidation of a claim on the basis that it is broader than the invention described in the specification is inconsistent with the Federal Circuits rule of claim construction that embodiments from the specification should not 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 Judge Whyte, N.D. Calif., sitting by designation, and over a dissent by Circuit Judge Dyk, reversed a district courts conclusion that the specification lacked sufficient written description support given the breadth of the claims, noting that original claims, in some instances, may provide written description support, despite statements to the contrary in Ariad. Nevertheless, Judge Moore, writing for the court in Boston Scientific Corp. v. Johnson & Johnson (2011), reiterated the rule from Regents of the Univ. of Cal. v. Eli Lilly & Co. (1997) that [a] written description of an invention involving a chemical genus, like a description of a chemical species, requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter sufficient to distinguish it from other materials.
Another hot topic is joint infringement. The Federal Circuit issued its en banc decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp., but avoided answering the fundamental question. As a result, joint infringement may depend on whether a claim may avoid a conclusion that multiple entities are required to infringe if the claim simply defines the environment in which infringement must occur per Advanced Software Design Corp. v. Fiserv, Inc. (2011). The Federal Circuit continues to surprise the bar in other areas as well with its statutory interpretations. For example, in August Technology Corp. v. Camtek, Ltd. (2011), the court rejected a jury instruction based on the AIPLAs model jury instructions, and concluded that a device may be the subject of an offer for sale prior to Its being ready for patenting, but also concluding that there is no actual offer for sale until after conception. Also, practitioners writing applications for computer-aided inventions must thoroughly understand the implications of cases such as Ergo Licensing v. CareFusion (2012), holding claims calling for a programmable control means invalid for failure to disclose a corresponding algorithm although such devices are "off the shelf" devices. And Noah Systems v. Intuit (2012) holding claims invalid because the disclosed algorithm did not implement all claimed steps. Litigation practitioners will be interested in In re Bill of Lading (2012), setting out the ... continued on next page.
he resort's private 21-acre Lake Windsong is the perfect place to enjoy water activities such as canoeing, kayaking, or paddleboating.
pleading requirements for direct, contributory and induced infringement. But the pendulum swings. After the Supreme Courts opinion in KSR International Co. v. Teleflex, Inc. (2007), seemingly rejecting at least a rigid showing of a motivation to combine reference teachings, the validity of many patents drawn to mechanical and many electrical inventions under 103 became doubtful. However, the pendulum appears to be swinging back Judge (now Chief Judge) Raders dissent in Media Technologies Licensing, LLC v. Upper Deck Co. (2010) that [l]urking just beneath the surface of this courts blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts, seems to have sparked (albeit not in that case) a renewed view of the requirement for motivation. Nevertheless, some panels of the Federal Circuit now permit reliance on common sense to find patents invalid under 103, and more egregiously, despite the lack of any reference supporting the same. When this will end is anybodys guess. But Chief Judge Raders opinion in Unigene Laboratories, Inc. v. Apotex, Inc. (2011), suggests that the court will increasingly insist on some showing of motivation, thus perhaps swinging the pendulum back pre-KSR. This course examines the Federal Circuits postKSR cases in detail. Will the many areas of inequitable conduct currently in doubt be resolved by the Federal Circuits en banc view in Therasense? And the courts adoption of a but-for-plus standard of materiality? Doubtful but maybe. For example, how does witness credibility impact on intent? Compare Aventis Pharma v. Hospira (2012) with 1st Media v. Electronic Arts (2012). And what about the flood of cases held back pending the Federal Circuits decision in Therasense? The course will examine Therasense in detail, with suggestions on complaince with Rule 56(a). The AIA also offers supplemental examination which may cure alleged inequitable conduct. Claims of legal malpractice are increasing at an alarming rate. The Federal Circuit has provided some solace in Immunocept, LLC v. Fulbright & Jaworski LLP (2007), holding that it has jurisdiction of legal malpractice claims under certain circumstances. But the Supreme Court has granted cert. in Gunn v. Minton (Tex. 2011) which challenges the Federal Circuit's view. Indeed, Judge O'Malley has actively dissented in several cases in 2012 voicing her view that legal malpractice cases belong in state court. In addition, though, what conduct is subject to sanctions? The Federal Circuit continues to issue opinions that affect the basic practice of patent law.
The Supreme Court has also been active in developing the patent law, often rebuffing the Federal Circuit for failing to adhere to Supreme Court precedent. For example, in In re Bilski, the Federal Circuit attempted to clarify the test for determining whether a claim recites patentable subject matter under 101 by holding that its machine or transformation test is the sole and exclusive inquiry. The Supreme Court promptly rejected the Federal Circuits machine or transformation test as the sole test for patentable subject matter, but declined to articulate a clear test to replace the Federal Circuits test thus leaving a vacuum for the Federal Circuit to fill. The Supreme Court also thoroughly rejected the Federal Circuit's view of 101 in Mayo Collaborative Services v. Prometheus Labs. (S.Ct. 2012), but the Federal Circuit responded in Myriad (2012) in a 106-page opinion continuing to advocate its view of 101. These and other cases involving 101 will be examined in detail. For example, a panel in CyberSource Corp. v. Retail Decisions, Inc. (2011), questioned the validity of Beauregard-type claims, but as a panel opinion could not overturn Beauregard. Does that signal the demise of such claims? And the court has taken CLS Bank v. Alice Corp. (2012) en banc to again address the issue of patent eligibility. In other areas, the Federal Circuit has quashed long-standing abuses. In Uniloc USA, Inc. v. Microsoft Corp. (2011), for example, the Federal Circuit held, in the area of damages, that as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. The 25% rule, used for more than a decade, thus disappears. Indeed, in LaserDynamics v. Quanta Computer (2012), the Federal Circuit further narrowed the entire market value rule almost to oblivion. In yet other areas, the Federal Circuit has further explained and thus limited prior even en banc opinions, such as in Spectralytics, Inc. v. Cordis Corp. (2011) further explaining and limiting In re Seagate Technology, LLC, (2007) (en banc). Those are but highlights. Federal Circuit opinions even over the brief span of two years have created law that practitioners must know especially in light of the changing composition of the court. Additionally, although the focus is on the Federal Circuit, recent Supreme Court cases are addressed as well. For example, the Supreme Court has granted cert. in Bowman v. Monsanto (2012) raising issues of infringement potentially having broad implications to the biotech community. The Supreme Court may, once again, rebuff the Federal Circuit's rationale.
Smoothing the Troubled Waters? PRG formerly characterized this course as Recognizing & Understanding Federal Circuit Russian Roulette. The continually strong attendance at presentations of this Federal Circuit course suggests that the patent bar recognizes this aphorism to ring true. In many respects, this is a user-designed dynamic course. Course evaluations are collected and analyzed to determine the topics and emphasis users desire. For the many that have attended this course punctually every two years, the curriculum, in response to user input, retains the topics you have come to expect, but has been expanded to include separate chapters and lectures on Federal Circuit en banc cases and Supreme Court cases, selected important cases that do not conveniently fit within a single topic (crossover cases) as well as noteworthy practice & procedure cases, noteworthy appellate practice cases, joint infringement, and selected Hatch-Waxman cases, among others and now including the AIA. All of the above represents just some of the continually breaking judicial news from the Federal Circuit that will be covered at the Federal Circuit Law course. As attested by hundreds of past course attendees, the faculty presents just the right amount of factual and legal detail for mastering each case discussed. Legal ethics and inequitable conduct will be presented on the second day from 3:00 to 4:00 p.m., as currently estimated.
Course Materials The full substance of the course is captured in the Federal Circuit Patent Law three-volume text, which extends over 1,500 pages. G Comments from previous attendees: I've been attending this course, periodically, over a number of years, and it continues to get better & better. Steven Fontana Fontana International October 2009 attendee Thorough review of each topic and each CAFC decision. Good discussions among speakers and attendees. Very knowledgeable speakers. Fred Burkhart Gardner, Linn, Burkhart & Flory, LLP October 2012 attendee
Patent Damages
15.0 Hours
Course Faculty All three instructors have been involved in the damages phase of numerous litigation cases, including ivi4 in its successful affirmation of an over $200 million verdict against Microsoft; Crucible Steel Company in its successful effort to obtain an injunction and travel damages against Kloster Speed Steel; and 3M in a dispute with Dentsply, where a creative defensive damage argument resulted in a substantially lower mediation and settlement award.
WILLIAM W. COCHRAN
COCHRAN FREUND & YOUNG, LLC FORT COLLINS, DENVER AND BOULDER, COLORADO
MICHAEL C. ELMER
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP PALO ALTO, CALIFORNIA
CHRISTOPHER BENSON
FULBRIGHT & JAWORSKI L.L.P. AUSTIN, TX
Course Description
he possibility to sue infringers is at the very foundation of US patent law. It is what makes acquiring patents meaningful and is the main enforcement tool of patentees. In the US, more than anywhere else in the world, infringement damages can and do total in the millions.
What does a patentee need to know in order to maximize the chances of a large damages award? What does an alleged infringer need to know to avoid one?
Why Should You Take This Course? Infringement damages in the US can and do total in the millions of dollars. Whether you are representing a patentee wanting to maximize the chances of a large damages award or an alleged infringer trying to avoid one, this course will help you to master this critical aspect of patent law.
Patent damages, an essential remedy for patent holders, is a crucial area of the law for all patent practitioners to understand, whether representing patentees or alleged infringers. This course will equip patent practitioners with the tools necessary to knowledgably and expertly advocate their clients damages demands by exploring the underlying basis for patent damages, how to calculate a reasonable royalty, establishment of lost profits in a patent damages case, evaluation of forum-shopping considerations, enhanced damages, and innovative damage arguments as well as a comparative analysis of U.S. patent damages to patent damages in other countries. This course will discuss and provide the latest case law from the Federal Circuit, and comprehensively cover the current state of the law regarding patent damages.
Topics covered in this course include: General principles of patent damages Actual damages and reasonable royalties under 35 USC 284 Steps to calculate a reasonable royalty The remedies of compensatory lost profits, attorney's fees, prejudgment interest and cost for patent infringement Enhanced damages and willful infringement Comparative analysis of patent damages in US with other countries G
Patent Due Diligence in the AIA Era

Course Faculty
15.0 Hours
The faculty, considered collectively, have participated in over 100 due diligence evaluations and will take you through the process soup to nuts, whether you are representing the target or the acquirer.
BRYAN DINER ANTHONY GUTOWSKI ANDREW HOLTMAN
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC AND RESTON, VA
Course Description his course will provide practical guidance for conducting patent due diligence investigations in todays 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 complete investigations. These tactics apply to both large and small transactions, irrespective of the nature of the specific transaction or the party you might be representing. Now, more than ever, companies contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions, or private equity dealsneed to rely on due diligence counsel to provide a thorough understanding of the value and risks associated with the transfer of intangible assets.
Why Should You Take This Course? As todays tight economy continues to challenge the business of clients, pressure mounts for the patent practitioner to help clients enjoy a higher return on investment in deals involving both acquisitions and licensing-in of patent rights. By the same token, those who represent target companies need to learn the IP strategies that help maximize income from either takeovers or licensing-outs. Attendees consistently grade the Due Diligence course and its faculty with some of the highest ratings of any course that PRG offers. This critically acclaimed course will help you raise your game to new levels, whether you are representing suitors or targets. Sign up now for this 2 day course. Sure, youll miss some time out of the office. But your return on investment will be a finely honed ability to help clients see an increase in their returns on investment.
Comments from previous attendees: Bryan, Tony and Andy are dynamic, very experienced with lots of tips and past cases to share. Jennifer Arnold MBM Intellectual Property Law April 2011 attendee The course is up-to-date with current case law. It used a 'real world' example, and the speakers are dynamic and interested in both the subject matter and in teaching. Julie Henrich Plextronics October 2012 attendee [I liked] the fluency and knowledge of the lecturers on the subject. The content and the lecturers are excellent. Im sure this course can help both patent and non-patent attorneys. April 2011 attendee During the course, you will interact with instructors and other students while exploring case-study examples and lecture topics on a wide range of issues: common legal-interest agreements claim construction freedom to operate validity assessments inequitable conduct patent eligibility, and ownership/transferability. The lively and entertaining presentation covers every phase of a due diligence investigation. Beginning with the initial involvement of patent counsel, the panel navigates a course through early informationgathering, drawing in the attendees as part of the due diligence team to spot critical patent issues that can make or break a deal. The panel
also shares effective strategic approaches to focus investigations and requests for further information during the plunge into the data room and to facilitate making recommendations to the client that may ultimately affect the price and structure of the deal. On Day 1, from approximately 2:30 to 4:45 p.m., as currently estimated, we will discuss potential ethical issues and inequitable conduct hazards that may arise during an IP due diligence investigation. The concluding sessions of the course cover
risk-management issues that provide invaluable, practical suggestions for contractual considerations, including effective uses of representations and warranties. Topics discussed in the course apply both to investigating a targets patent portfolio and to preparing a portfolio for suitors. Youll receive a thorough course book, chock full of notes, examples, and case law. The facultypartners at Finneganare all patent attorneys with extensive experience in due diligence investigations. The panel has
many years of experience in IP practice and expertise in several different areas of technology. Throughout the course, the faculty shares interesting war stories, observations, and practical tips for conducting the investigation in a comprehensive and efficient manner. In short, the knowledge youll gain from this course will enable you to avoid due diligence pitfalls, while more effectively assessing and managing risks endemic in business transactions involving complex IP rights and issues. G
eed a break from relaxing? Challenge yourself on the 24-foot rock climbing wall.
Patent Infringement Litigation

Course Faculty
15.0 Hours
The course is taught by highly experienced trial lawyers at Robins, Kaplan, Miller & Ciresi, LLP, whose record of victories in patent cases is truly remarkable and includes: Personal Audio v. Apple ($12 million judgment, post-trial motions pending); AMD v. Samsung (case involving seven affirmative patents and six counterclaim patents, confidential settlement); Pitney Bowes v. Hewlett-Packard ($400 million); Fonar v. General Electric ($110 million); Atlantic Richfield et al v. Unocal ($69 million); Honeywell v. Minolta ($96 million); Honeywell v. JVC ($30 million); St. Clair v. Canon ($34 million); St. Clair v. Sony ($25 million); Grantley v. Clear Channel Communications ($89 million); TriStrata Technology v. Mary Kay ($43 million); Eolas v. Microsoft (confidential settlement after remand); Ricoh v. Pitney Bowes (defense verdict affirmed on appeal); General Motors v. General Electric (summary judgment of invalidity, affirmed on appeal).
COLE M. FAUVER JAKE HOLDREITH
ROBINS, KAPLAN, MILLER & CIRESI, LLP MINNEAPOLIS, MN
Course Description his course is the most practical, immediately usable patent infringement litigation course ever presented by Patent Resources Group (and perhaps by any institution). The focus is on patent litigation (not litigation in general). The course starts at the first concept of the idea to litigate and the critical initial decision to file suit, continues through discovery and trial, and on to the end of post-trial motions, as well as initial defensive considerations and developing and implementing defensive strategies throughout the case. The course includes a live demonstration of a Markman hearing and a section on damages and injunctive relief.
Why Should You Take This Course? The Patent Infringement Litigation course will show you how to develop and execute a winning strategy to coordinate all aspects of a complex patent case and achieve your business objectives. We will take you through the whole process, from the first concept of the idea to litigate to posttrial motions.
Comments from previous attendees: Well done in all regards. Experienced practitioners, concrete examples, and quite good and interesting. Steven Berryman, Quarles & Brady LLP April 2010 attendee Good overview of entire litigation process with enough insight and detail to be relevant to a broad audience. Bill Hardie, W. L. Gore & Associates April 2012 attendee The course is designed for and directed to corporate counsel who have or expect to have patent litigation supervision responsibilities; experienced litigators who seek to acquire increased competence and abilities in this expanding practice specialty; and private practitioners with limited litigation experience seeking to expand their practice. Legal ethics in the context of willful infringement issues will be presented from 3:15 to 4:15 p.m. on the second day, as currently estimated.
The course includes a detailed treatment of the America Invents Act and how it is impacting litigation right now, including: Provisions restricting joinder of multiple defendants in a single action Elimination of the best mode defense Prior commercial use defense Virtual marking and limitations on false marking lawsuits Course Materials The course is based on the thoroughlyresearched textbook, updated annually by Robins, Kaplan, Miller & Ciresi L.L.P authors to reflect the latest statutory changes, and critical rulings from the Federal Circuit and district courts on infringement, invalidity, damages, discovery, experts, and more. The course materials also include two resource volumes of supplemental, real-life illustrative litigation papers that support the text. All three volumes will be handed out at the course, along with a printed copy of the course slides (with room for note taking) that will be a particularly convenient and useful reference. G
alm trees? Sunshine? Blue skies? You must be in Orlando, Florida!
Pharma & Biotech Strategies for Patent Prosecution, Hatch-Waxman & Litigation
Course Faculty The faculty, all senior principals in Fish & Richardsons vaunted life sciences group, has
16.5 Hours
Orlando, FL April 7-9, 2013 (Sun-Tues) Hyatt Regency Grand Cypress 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:15 p.m. (Sun-Tues)
many decades of experience counseling pharmaceutical and biotech companies in patent prosecution, litigation, and Hatch-Waxman strategies. They teach these topics in the same way they approach them for their clients as a seamless whole.
JANIS FRASER
TERRY MAHN
W. CHAD SHEAR
MARK ELLINGER
FISH & RICHARDSON PC BOSTON, MA MINNEAPOLIS, MN WASHINGTON, DC NEW YORK, NY WILMINGTON, DE
Course Description
D
Why Should You Take This Course? In an industry where billions of dollars often hinge on the viability of a single patent claim, you can't afford to make mistakes. Brush up on the skills needed to prosecute, evaluate, and enforce pharmaceutical and biotech claims in an ever-changing legal and economic climate. Learn cutting-edge techniques for putting the HatchWaxman laws to work for your company's benefit. This highlyregarded course is taught by an experienced team who puts it all together for you.
iscovering and developing new pharmaceuticals whether biomolecules or traditional small molecules entails extraordinary R&D costs (some estimate nearly $1B per drug) with no guarantee of success.
Likewise, biotech companies invest enormous resources in identifying and validating the targets and creating platform technologies that are becoming more and more essential for the drug discovery process. Without the protection afforded by patents and various Hatch-Waxman drug exclusivities, the pharmaceutical and biotech industries as we know them would not exist. At the same time, patents on research tools and drug discovery targets can frustrate the early-stage research efforts of competitors seeking to discover novel drugs. In addition, the generic industry is increasingly aggressive in challenging patents covering FDA-approved drugs, the boundaries of the HatchWaxman Safe Harbor are shifting, FDA reforms have limited the Orange Book as a weapon for pioneers, gene patenting is under serious challenge, and the 2010 legislation authorizing an approval pathway for biosimilars may fundamentally change the life cycle management of biomolecule pharmaceuticals. Against this backdrop, biotechnology and pharmaceutical patent law in particular continues to evolve rapidly perhaps faster than patent law in any other field with numerous abrupt shifts and reversals of policy just in the last decade.
Comment from previous attendee: [The course] provided very practical information related to specification and claims preparation, as well as amendments and arguments to make (and not to make) during prosecution. I also appreciated the in-depth discussion of case law, both historical and current cases, and how they impact biotech practice. Kathryn Hester Dunlap Codding P.C. April 2010 attendee
Course Focus The course conveys both fundamentals and advanced legal strategies in three major, interrelated areas: (1) Biotech and Pharma Patent Prosecution; (2) Hatch-Waxman and Biosimilars strategies; and (3) Pharmaceutical and Biotech Patent Enforcement. These topics are taught as a seamless whole by four principals from Fish & Richardson PC, who utilize frequent cross-references to highlight the interplay among all the topics. For example, relevant patent case law (including the most recent biotech and pharma cases) is discussed from different viewpoints in the context of prosecution and enforcement.
An expert on the Hatch-Waxman and biosimilars laws will provide a coherent overview of these complex provisions; another lecturer will explain these laws critical importance to patent enforcement in the pharmaceutical and biotech fields; and others will show how these laws inform strategy in prosecution. Strategies for managing the life cycle of patented drugs is a theme that echoes throughout the course. This course provides valuable, practical information for the patent practitioner, whether in-house or in private practice, to use in maximizing protection of biotechnology and pharmaceutical inventions. The litigator will come away with a comprehensive understanding of the pertinent case law and concepts necessary to enforce pharmaceutical and biotechnology patents, or to recognize the weaknesses in improvidently granted patents. Company executives tasked with making strategic decisions based on their own companys patent portfolio as well as those of their competitors will benefit immeasurably from the broad understanding of biotech and pharmaceutical patent and Hatch-Waxman law gleaned from this course.
Course Highlights A key feature of the course is its coverage of biotechnology patent law, including both established principles and current developments (such as the recently enacted overhaul of the U.S. patent statute) in this rapidly changing area of the law. In addition, the course highlights patent issues that crop up frequently in the pharmaceutical arts where biotech and small molecule drugs overlap: issues such as enablement, written description, obviousness post-KSR, inherent anticipation, patent-eligible subject matter, inventorship, overbreadth, functional limitations, claim construction, infringement based on in vivo conversion, and infringement under the doctrine of equivalents. The course will present claim strategies for the increasingly common situation in which an organisms genome has been published, and the invention focuses on a single gene. Other important topics include screening or diagnostic assays, methods of treatment, personalized medicine, polymorphs, transgenic animals, antibodies, RNAi, single nucleotide polymorphisms (SNPs), and reachthrough claims. Concepts such as impractical claims (claims difficult or impossible to enforce) are illuminated with real and hypothetical
examples. The increasing importance of the pharmaceutical label as a way to extend the life cycle of an approved drug is explored and specific strategies proposed. Since another PRG course (Chemical Patent Practice) ably covers the fundamentals of chemical prosecution in great detail, the present course instead focuses on issues that concern biotechnology and pharmaceutical inventions in particular. Course Materials Each attendee will receive an over-1000page, two-volume set of course materials. Fondly known as the Purple Book for reasons that will be apparent once you receive yours, these materials are updated by Fish & Richardson each year to keep them current with new cases, new U.S. Patent and Trademark Office directives, and evolving technology. They cover many more topics, and in more depth, than the course itself. The Purple Book is an invaluable resource a very practical how-to manual you will use every day. You will also receive a book of printed lecture slides when you arrive at the course. G
ou will never forget the wonders of nature that surround you at this amazing resort.
Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination

Course Faculty The instructors have extensive experience representing both patent owners and
15.0 Hours
accused infringers in adversarial post-grant matters, particularly reexaminations. They have been actively involved in bar associations efforts to help the PTO design and implement the new review proceedings created by the America Invents Act (AIA). They have written widely on review, reexamination, and reissue topics for Intellectual Property Today.
KEVIN B. LAURENCE STOEL RIVES LLP SALT LAKE CITY, UT
MATTHEW C. PHILLIPS RENAISSANCE IP LAW GROUP LLP PORTLAND, OR
Course Description
Why Should You Take This Course? About 5-6 years ago, reexamination emerged as a popular venue for validity challenges, either alone or alongside court battles. The reasons for that shift were simple. The PTOs Central Examination unit provided a forum where claims are given their broadest possible interpretation. In addition, a reexamination can result in many favorable outcomes, at a small fraction of the cost of litigation. The America Invents Act (AIA) shifted the balance even further in favor of the PTO as the patent validity battlefield of the future by creating new, more powerful, fast-track, litigation-like review proceedings, including postgrant review and inter partes review. Whatever side of the battle you are on, you must know how to engage in the new battlefields called review as well as the existing battlefield called reexamination.
Ten years ago courts were essentially the sole arbiters of validity. About 5-6 years ago, reexamination suddenly emerged as a popular means for challenging patents, either alone or alongside court battles. The reasons for that shift were simple: Would you rather bring your validity attack before an experienced patent examiner with technical expertise in the PTOs Central Reexamination Unit where claims are given their broadest reasonable interpretation and do not enjoy a presumption of validity, or a jury in the Eastern District of Texas? The answer becomes all the more obvious when one considers that a reexamination can cancel claims, eliminate liability for past infringement, create intervening rights to continue accused infringement in the future, open up design-around opportunities, create a more favorable prosecution history, defeat a charge of willful infringement, help avoid an injunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction of the cost of litigation or advantageously deployed in conjunction with litigation.
he battleground of patent validity is shifting from courts to the PTO.
Comments from previous attendees: The materials are outstanding. I will use as reference materials in the future. Lecturers were wide open to questions and very responsive. Interspersing of war stories and examples kept the presentation interesting. Charles Burpee Warner Norcross & Judd LLP October 2009 attendee This course provides a practical framework for using post-grant tools from both the perspective of the owner and challenger, and insight on how they work together. Matt Rabdau IP Counsel, Fluke Corporation October 2012 attendee
The America Invents Act (AIA) shifted the balance even further in favor of the PTO as the patent validity battlefield of the future by creating new more powerful, fast-track, litigation-like review proceedings, including
post-grant review and inter partes review. Inter partes review provides an opportunity to challenge the validity of a patent twice: first at the PTO based on printed publications and subsequently in litigation based on other available grounds. Stays are expected to be granted liberally when inter partes reviews are filed, given the statutory requirement for rapid completion of these new proceedings. As a result, validity challenges are likely to proceed in serial fashion. In the first phase of a bifurcated validity challenge, complicated arguments regarding the prior art can be rapidly resolved by trained specialists at the PTO, whereas in the second phase, less technical arguments regarding commercial activity or other invalidating grounds can be resolved by a judge or jury. This sequential system can simplify claim construction and narrow issues for an infringement portion of the litigation, and thus may reduce the overall costs. Lead counsel in an inter partes review proceeding must be a registered patent attorney, but it is possible for litigation counsel to participate in the proceeding even if the litigation counsel is not registered. Integrating the inter partes review and litigation teams can provide a smooth transition to the litigation upon completion of the review proceeding. Reexamination has often been referred to as a second bite at the apple, but the bite size provided by inter partes review is more on par with that of litigation due to its provisions for limited discovery. The comparative weakness of ex parte reexamination is offset by its absence of estoppel implications. Indeed, the deepest concerns regarding inter partes review often focus on its legal estoppel provisions that prevent a challenger who is unsuccessful in an inter partes review from attacking a claim in any forum based on other printed prior art publications. This concern overlooks the advantages of this new proceeding and does not acknowledge that failure to invalidate a claim in litigation results in much harsher estoppel. The estoppel of inter partes review will have a considerably smaller scope than the estoppel of a failed district court challenge. In light of the complexity of many prior art arguments and the benefits of the serial validity and infringement cases, consideration of a challenge at the PTO should not be a back-up plan, as reexamination often is. Rather, inter partes review should be used prior to or concurrently with litigation. Whatever side of the battle you are on, you must know how to engage in the new battlefields called review as well as the existing battlefield called reexamination.
This two-and-a-half-day course provides comprehensive training on indispensible tools for patent prosecutors and litigators, including new tools created by the AIA: Ex parte reexamination Inter partes reexamination Post-grant review (new under the AIA) Inter partes review (new under the AIA) Transitional program to review business method patents (new under the AIA) Reissue Supplemental examination (new under the AIA) The course covers strategies, tactics, best practices and case studies for reexamination and reissue. In addition, the course will cover the statutory and regulatory framework for the AIAs new review proceedings and supplemental examination, as well as lessons from early proceedings. The course is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators who must deal with the increasingly common role of PTO proceedings in the context of disputes. For patent challengers, the course provides training to: Analyze the benefits and disadvantages of reexamination and review as compared to litigation Make well-informed choices between all types of reexamination and review proceedings Understand the critical role of reexamination and review in the context of a dispute and develop reexamination and/or review strategies based on anticipated or concurrent litigation Appreciate estoppel implications both official and unofficial of reexamination and review Utilize reexamination and review to obtain a stay or other benefits in related litigation Unravel the AIAs review statutes and decipher the PTOs proposed review rules to really understand how reviews will be conducted Prepare a request for reexamination or petition for review that complies with all requirements and gets granted Learn what the reexamination statistics really mean Advantageously utilize the different standards applied for claim interpretation at the PTO and claim construction in litigation as well as the differing burdens of proof
Recognize possible changes to the construction of the claims in the litigation based on the reexamination or review that opens up design-around opportunities, creates a more favorable prosecution history for the purpose of claim construction, or impacts estoppel theories Create intervening rights that eliminate liability for past infringement or allow continuation of accused infringement in the future Tactically use serial ex parte reexamination requests and protests in reissue Correctly and strategically use petitions and declarations Understand the repercussions that reexamination and review can have on settlement The course balances the perspectives of patent challengers and patent owners so the above items are also presented from the view of the patent owner. Additionally, the course provides training for patent owners to: Choose between ex parte reexamination, reissue and supplemental examination to immunize a patent from a third-party attack Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims or from mere argument regarding claim scope Defensively utilize related proceedings, reissue continuations and merger to maximize flexibility and advantage Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings Understand the timing of events in all postissuance PTO proceedings so that you are not caught off guard Navigate the maze of reexamination and reissue procedures to avoid unfortunately common mistakes Master the recapture rule in reissue applications Understand when and how to utilize a certificate of correction or disclaimer, rather than reexamination, reissue or supplemental examination Many other topics related to post-grant PTO proceedings are covered in the course. Legal ethics in the context of reexamination and reissue prosecution will be presented near the end of the second day, as currently estimated. G
Procuring and Enforcing Business Method and Other Software-Based Patents After Bilski and BMC
15.0 Hours
Course Faculty The faculty for this course has prosecuted scores of software-related patents, for business methods and more traditional computer-based technical subject matters, over a collective USPTO experience of more than 60 years. Each has also been involved in litigation and licensing of softwarerelated patents. They can provide a wide range of viewpoints from which to consider strategies for procuring, exploiting and enforcing software patents.
ALDO NOTO
ANDREWS KURTH LLP WASHINGTON, DC
STUART HEMPHILL
DEVAN PADMANABHAN
DORSEY & WHITNEY LLP MINNEAPOLIS, MN
Course Description Why Should You Take This Course?

Director Kappos has recently stated that patents on software are every bit as well deserved as patents on air flight, electric bulbs and such more traditional inventions. At the same time, he acknowledges past often inadequate and inconsistent examination of software patents, but points out improvements at the USPTO for increasing examination quality. This is a critical time to get an important update on software patent law, given: The impact of the America Invents Act (AIA). The need to understand the post-Bilski decisions that attempt to apply its principles (Research Corporation; Ultramercial; Prometheus; et al.). The decisions analyzing infringement when computer-based methods or other activity span borders (Research in Motion; Transocean). The decisions finding no infringement when multiple actors are involved in completing the infringement (Muniauction; Akamai). Patent damages in software cases have been impacted by the decisions of Judges Posner and Alsup. The need to understand how the USPTO and courts are using indefiniteness as a basis for rejection or invalidity of software claims.
his course addresses the difficult and sophisticated task of how best to claim, prosecute, and litigate software-based inventions in their rich variety so as to have their patents held not invalid and infringed by the Federal Circuit. But that rich variety requires a variety of disparate claiming, specification drafting, prosecution, and litigating techniques.
The America Invents Act (AIA) impacts software patents in general and business method patents in particular. Specifically, a new inter partes review proceeding is available during litigation for defendants to challenge certain business method patents at the USPTO on a wide variety of invalidity grounds.
The broad spectrum of available software patent protection opportunities that appeared available after State Street Bank and AT&T v. Excel was questioned in the Bilski decisions. In its Bilski decision, the CAFC retreated from the useful, concrete and tangible result analysis to tied to a particular machine or apparatus or transforms a particular article tests. The Supreme Court found this machine-ortransformation test useful but too narrow. It fell back on general principles of abstractness. It also declined to exclude all business methods from patentability, but it seemed to invite their close scrutiny. Courts as well as the USPTO continue to struggle with the application of the Supreme Court's decision and the CAFC decision it largely affirmed. Practitioners need to understand the signposts left by the Bilski decisions and those that attempt to apply their guidance.
Software-based inventions face another issue. Recent cases have suggested that infringement may be avoided when infringing activity crosses borders or multiple parties are involved in the acts or elements comprising infringement of a claim. The doctrine of joint infringement (a/ka divided infringement) as developed in BMC Resources, Inc. v. Paymentech, Muniauction Inc. v. Thomson Corp. and other cases poses particular problems for proving infringement as more computer-based inventions use processors, storage and specialized data processing services of others, sometimes located in the cloud. Using resources in the cloud can involve multiple actors and jurisdictions. The course and text address why different software applications (e.g., Internet-related software) require special claim drafting, prosecution or litigation techniques. Claim styles
and limitations designed to meet the somewhat unclear post-Bilski 101 standards are discussed. This course also explores the countercurrents arising from concern about the quality of some business method patents and from the open source movement. Legal ethics in the context of duty of disclosure under 37 CFR 1.56 and USPTO conflict of interest issues will be presented from 9:00 to 11:00 a.m. on the third day, as currently estimated.
Comments from previous attendees: Speakers were awesome, articulate, organized, knowledgeable and friendly. The material covered was very focused and practical. Thank you! Examples of claim types were great!
Course Materials The comprehensive text, written by its distinguished faculty, will be handed out at the course. G
hether you have a swim or just relax in the sun with a good book, you will feel refreshed after spending time at the pool.
PRGs Spring Hotel Hyatt Regency Grand Cypress Orlando, FL April 7-13, 2013
One Grand Cypress Boulevard Orlando, FL 32836 888-421-1442 or 402-592-6464
Reservations: 888-421-1442 or 402-592-6464 For information and to make your room reservation online, please go to www.patentresources.com/HotelOverview.aspx and click on the Hotel Information link for Hyatt Regency Grand Cypress. Room reservations must be made by March 15, 2013. When making your reservation, be sure to identify yourself as a Patent Resources Group attendee to obtain the special PRG rate. Room rate: The sleeping room rate available to PRG attendees is only $199.00 per night, single or double, plus tax. This rate is 20% less than what we were able to offer at our Spring 2012 conference.
PRGs 2013 Annual Spring Advanced Courses Program will be held at the lavish Hyatt Regency Grand Cypress in Orlando, FL.
Receptions for Attendees and Faculty: PRG receptions provide an opportunity for networking, plus delicious, complimentary hors doeuvres and beverages on the first evenings of class: Sunday, April 7 and Thursday, April 11. Spouses, children and guests of attendees and faculty are welcome and are certain to have an enjoyable time. Transportation: The Hyatt Regency Grand Cypress is approximately 18 miles from Orlando International Airport (MCO), 77 miles from Tampa Airport (TPA), and 240 miles from Miami International Airport (MIA). The Hyatt Regency Grand Cypress offers both valet parking and self-parking.
Don't Miss This Deal!

his rate of $199 per night is 20% less than what we were able to offer at our 2012 Spring program in Florida.
World-Class Comfort and Style

This luxury resort is a sprawling, secluded oasis in beautiful Orlando, Florida. The 1,500-acre resort offers many opportunities to unwind and is also just minutes from Orlando's theme parks and other attractions. Swim in the half-acre lagoon-style swimming pool or enjoy water sports activities on Lake Windsong. Play a round of golf at one of the resort's four Jack Nicklaus Signature Design courses or try tennis, rock climbing, jogging, or biking. Relax with a massage, facial, or manicure at the salon or get in a workout at the Hyatt Stay Fit gym. And the Hyatt Regency Grand Cypress' world-class restaurants serve wonderful cuisine from around the world. You'll also enjoy complimentary high-speed Internet access; a full-service, 24-hour business center; gift shop; and concierge. For more information about the Hyatt Regency Grand Cypress, go to: http://grandcypress.hyatt.com/hyatt/ hotels-grandcypress
Hyatt Regency Grand Cypress REGISTRATION Orlando, FL April 7-13, 2013

Registration Deadline: March 15, 2013
Three-Day Courses:
Tuition for each three-day course is $2,195 through Feb. 6, 2013 and $2,295 after that date April 7-9, 2013 (Sun-Tues)
Art & Science of Patent Searching Art & Science of Patent Searching and
One-Day Course:
Tuition for the one-day course is $995. (only $795 if you also register for a 3-day course at this conference) April 10, 2013 (Wed)
America Invents Act: Monumental
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, payable to Patent Resources Group, Inc., or by credit card (charges are authorized by your completion of this form). The course tuition does not include hotel accommodations or meals, but does include all instructional materials, and morning and afternoon refreshments, as well as PRGs reception-cocktail party.
Patentability, Validity & Infringement
Changes, the Consequences and the Unanswered Questions
Optional Patent Searching Workshop (combined course and workshop is $2,590 through Feb. 6, 2013 and $2,690 after that date)
Tel: 703-682-4860 Fax: 703-892-4510
Crafting & Drafting Winning Patents
www.patentresources.com
Pharma and Biotech Strategies for Patent Post-Grant Patent Practice: Review,
For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details, go to: www.patentresources.com
Brochure Code: A13M1
Prosecution, Hatch-Waxman & Litigation Reexamination, Reissue, and Supplemental Examination
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Procuring and Enforcing Business
Method and Other Software-Based Patents After Bilski and BMC April 11-13, 2013 (Thurs-Sat)
Comprehensive PCT Practice: How to Drafting Patent License Agreements Federal Circuit Law (2011-2013) Patent Damages
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atent Resources Group, the Alma Mater of 40,000 patent attorneys and agents, now offers customized ON-SITE training for selected courses on a negotiated basis! This is the perfect option for corporations that have 10 or more employees who need the same training. We'll come to your location and will customize the content as needed to meet your specific needs. If you prefer, we can also offer these courses remotely through webconferencing or videoconferencing.
PRG is currently offering these courses* ON-SITE:

Art and Science of Patent Searching: Patentability, Validity & Infringement This course comprehensively teaches how to conduct a professional patent search. The materials and content will be understood by anyone, from the inexperienced to advanced practitioners. The course is perfect for patent attorneys and agents, inventors, paralegals, or research managers anyone who will be involved in conducting searches or commissioning searches. Patent Law Guide for Inventors, Investors, Paralegals & NonPatent Lawyers This course presents that which the inventor, paralegal, and administrator should know (really, must know, according to case law) about patent law and its practice. It provides a bedrock of basic and empowering patent law information that will also be invaluable to non-patent attorneys engaged in any aspect of patent activity, such as licensing, litigating, or counseling.
Contact SVP-Sales Ted Klekman at (916) 404-3908 to learn more.
*Interested in having other courses taught on-site at your location? Ask us!
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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 at http://www.twitter.com/PRGPatentLaw. Become a fan on Facebook to get the latest news at http://www.facebook.com/PatentResourcesGroup.
January 21-25, 2013 Patent Bar Review Course Pasadena, CA Hilton Pasadena March 18-22, 2013 Patent Bar Review Course Washington, DC (Alexandria, VA) The Westin Alexandria April 7-13, 2013 Annual Spring Program Advanced Courses in Patent Law Orlando, FL Hyatt Regency Grand Cypress May 6-10, 2013 Patent Bar Review Course Chicago, IL Four Points By Sheraton June 17-21, 2013 Patent Bar Review Course Boston, MA The Colonnade Hotel
July 9-12, 2013 Winning Patents Workshop Pasadena, CA Hilton Pasadena July 23-26, 2013 Winning Patents Workshop Washington, DC (Alexandria, VA) The Westin Alexandria August 2013 Patent Administration: A Foundation for Success
Check PRG Website for dates, city, and venue
September 2013 Patent Administration: A Foundation for Success

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October 16-22, 2013 Annual Fall Program Advanced Courses in Patent Law Huntington Beach, CA Hyatt Regency Huntington Beach November 2013 Patent Bar Review Course
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Chemical Patent Practice

Crafting and Drafting Winning Patents

Designing Around Valid U.S. Patents

Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

Drafting Patent License Agreements

............................................. Faculty: D. Patrick O'Reilly, Brian Kacedon, and William Pratt

Federal Circuit Law (2011-2013)

................................................................... Faculty: Michael Elmer, William Cochran, and Christopher Benson

Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Patent Infringement Litigation

Art and Science of Patent Searching Patentability, Validity & Infringement

LANDON IP, INC. ALEXANDRIA, VIRGINIA

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

Optional Patent Searching Workshop

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

Chemical Patent Practice

KAREN COCHRAN DUPONT WILMINGTON, DE

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Comprehensive PCT Practice: How to Master Its Challenges

aspects of PCT matters.

Crafting & Drafting Winning Patents

Designing Around Valid U.S. Patents

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

Drafting Patent License Agreements

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Federal Circuit Law (2011-2013)

INCLUDING COMMENTARY on the America Invents Act

Patent Due Diligence in the AIA Era

Patent Infringement Litigation

ROBINS, KAPLAN, MILLER & CIRESI, LLP MINNEAPOLIS, MN

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

FISH & RICHARDSON PC BOSTON, MA MINNEAPOLIS, MN WASHINGTON, DC NEW YORK, NY WILMINGTON, DE

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

KEVIN B. LAURENCE STOEL RIVES LLP SALT LAKE CITY, UT

MATTHEW C. PHILLIPS RENAISSANCE IP LAW GROUP LLP PORTLAND, OR

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

DORSEY & WHITNEY LLP MINNEAPOLIS, MN

Course Description Why Should You Take This Course?

Don't Miss This Deal!

World-Class Comfort and Style

Hyatt Regency Grand Cypress REGISTRATION Orlando, FL April 7-13, 2013

Patentability, Validity & Infringement

Changes, the Consequences and the Unanswered Questions

Chemical Patent Practice

PATENT RESOURCES GROUP

Tel: 703-682-4860 Fax: 703-892-4510

Crafting & Drafting Winning Patents

Designing Around Valid U.S. Patents

Prosecution, Hatch-Waxman & Litigation Reexamination, Reissue, and Supplemental Examination

1. __________ _________________________ STATE ID NO.

Procuring and Enforcing Business

Master Its Challenges

Patent Due Diligence in the AIA Era Patent Infringement Litigation

1. _______________ STATE ID NO.

Credit Card # _____________________ Exp. /