Spring Program




Hyatt Regency Coconut Point Resort and Spa Bonita Springs, FL • March 30-April 5, 2014

Join Us in Florida for the BEST Advanced Patent Training in the World!

• Choose from 15 of the best advanced patent law courses.

See page 3.

• Be sure to register for one of our 2 brand new one-day courses and our expanded/updated one-day course on the impacts of the AIA. See page 3. • Take advantage of our amazing room rate, available only to PRG attendees! • Enjoy a one-of-a-kind venue with many on-site activities.
See page 36. See page 36.






Register now at

PRG’s 2014 Annual Spring Program — in Patent Law
For over 40 years, Patent Resources Group has been the nation’s 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.
• Will arm you to deal with the complexities of the America Invents Act – the final changes resulting from the America Invents Act (AIA) took effect in March 2013. However, the effects of this landmark legislation will be impacting all aspects of patent practice for years to come. Our Spring 2014 Program features a significantly revised and expanded one-day course on the AIA that focuses on understanding its implications going forward. In addition, all of our returning courses have been updated as needed to reflect the ongoing impacts of the AIA. Provide an amazing value – if you register for your Spring Program courses by February 10, 2014, you'll pay the same tuition rates that we’ve been charging since 2005! And if you come to our programs every year, you’ll 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. Offer the CLE credits you need 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.

• • • •

Register soon — spaces will fill quickly!


About PRG’s 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 2013, you are automatically a loyalty member for 2014 and will be entitled to special pricing when you attend any courses at our 2014 Spring or Fall Advanced Courses Programs! And after being a paid attendee at any PRG course in 2014, you’ll automatically be eligible for Loyalty Program benefits for the rest of 2014 and for 2015. If you didn't attend any PRG courses in 2013, your 2014 loyalty program benefits will kick in after your first 2014 course — so if you sign up for multiple courses at the Spring 2014 Advanced Courses program, you'll pay full price for the first course and get loyalty pricing for the other courses at this Program. Loyalty Program members save $200 on tuition for each 3-day Advanced Course and $100 for each 1-day course.



Hyatt Regency Coconut Point Resort and Spa
Three-Day Courses: March 30-April 1, 2014 (Sun-Tues) Art & Science of Patent Searching — Patentability, Validity & Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 6
Faculty: Brian Thurmond and Jonathan Skovholt

Register by February 10, 2014 for Lowest Spring Tuition!

Chemical Patent Practice



Faculty: Tom Irving, Jill MacAlpine, Deborah Herzfeld, Paul Browning, Kathryn Sanchez, and Rona Nardone

“Designing Around” Valid U.S. Patents
Faculty: Patrick Burns, John Pinkerton, and Patricia Prior



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

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 and Reexamination
Faculty: Kevin Laurence and Matthew Phillips



One-Day Courses: April 2, 2014 (Wed) America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions GEXPANDED AND UPDATED!
Faculty: Paul Gardner



Post-Grant Patent Practice: Reissue, Owner-Requested Reexamination, and Supplemental Examination GNEW COURSE! . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
Faculty: Kevin Laurence and Matthew Phillips

• 15 advanced patent law courses are available for the 2014 Annual Spring Advanced Courses Program. • Tuition for each Spring three-day course is $2,195 through February 10, 2014 and $2,295 after that date. • Combined tuition for the Spring Patent Searching Course and Workshop is $2,590 through February 10, 2014 and $2,690 after that date. • Tuition for each Spring one-day course is $995.

Strategic Patent Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands GNEW COURSE! . . . . . . . . . . . . . . . . . . . . . . . . . . . 34
Faculty: Matt Buchanan

Three-Day Courses: April 3-5, 2014 (Thurs-Sat) Crafting and Drafting Winning Patents
Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris


Drafting Patent License Agreements



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

Federal Circuit Law (2012-2014)


Faculty: Gale Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll

Patent Drafting & Prosecution Based on a Single EPO/USPTO Specification
Faculty: Bradley Hulbert and David Meldrum



Patent Infringement Litigation



Faculty: William Manning, Jake Holdreith, Aaron Fahrenkrog, and Marla Butler

Procuring and Enforcing Business Method and Other Software-Based Patents After Bilski and BMC
Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan



Please note that the faculty members listed for each course are subject to change prior to the actual course date. 3

America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions
Projected State Bar CLE Credit:
Course Faculty

6.0 Hours

Paul Gardner, PRG’s 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.

Bonita Springs, FL April 2, 2014 (Wed) Hyatt Regency Coconut Point Resort and Spa 8:15 a.m. - 11:30 a.m. and 1:30 p.m. - 4:45 p.m.

Registration deadline: March 10, 2014


Course Description Why Should You Take This Course? The America Invents Act, which is now fully effective, is the most significant development in the patent profession in a generation. Those who lack a thorough understanding of the full impact of this legislation run the risk of untold consequences to their practices and their clients’ businesses. This course provides crucial insights into the new law, its consequences, nuances, and ambiguities, and also to the different possible interpretations that the Federal Circuit will be called on to resolve in the years ahead, insights that will be invaluable to those who attend the course. he extensive, complicated, unprecedented statutory changes and additions made by the America Invents Act have now become fully effective. Not only is it necessary for all patent professionals to know the new law, we must – during a transition period that will last for many years to come – be able to determine when the AIA law applies and when the pre-AIA version of the law applies.


The content of this course was created with the goal of assisting patent attorneys and agents in fully understanding the new law, its consequences, nuances, ambiguities and unresolved issues created by the new statutory language.

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 lectures and materials include analyses of the following aspects of the AIA law: 1. The “first inventor to file” system, which became effective on March 16, 2013, and replaces the “first to invent” system of the preAIA law. The course lectures and materials analyze 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. Incorporated in

our analyses and materials are the Patent Office’s new rules implementing the firstinventor-to-file regimen, its extensive commentary interpreting the several unclear provisions of the AIA version of Section 102, and its extensive examination guidelines. 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 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 pre-AIA 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 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. 5. 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 patent’s 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.

6. 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 owner’s 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. 7. A “Transitional [8 years, ending September 16, 2020] 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.) 8. 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. 9. “Prioritized Examination,” a procedure for obtaining expedited examination of applications, subject to applicant’s compliance with certain prerequisites and payment of significant fees, aimed at final disposition of the application with 12 months of the Office’s granting of “prioritized” status. 10. 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. 11. 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 inventor’s 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


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Art and Science of Patent Searching – Patentability, Validity & Infringement
... And Optional Patent Searching Workshop
Projected State Bar CLE Credit:
Course Faculty • The faculty consists of patent searching and analysis leaders at Landon IP who have

15.0 Hours
Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues) Hyatt Regency Coconut Point Resort and Spa 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).




Course Description

Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

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 attendee’s 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 2014 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.


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Chemical Patent Practice
Projected State Bar CLE Credit:
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.

Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues) Hyatt Regency Coconut Point Resort and Spa 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)








Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

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:


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 you’d like to answer these questions with a resounding “yes” then you should attend our highly-acclaimed, comprehensive Chemical Patent Practice course. Don’t fail your clients or yourself in these tough economic times – learn from the best.

• 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; • 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 March 16, 2013 date when the first inventor to file provisions took 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 take place during the last two hours 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 did not wipe the patent law slate clean. Because of the way the AIA was written, the “old” law will be relevant to practitioners until at least March 16, 2034! That’s 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


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Crafting & Drafting Winning Patents
Projected State Bar CLE Credit:
Course Faculty

15.0 Hours
(Including 1.0 Hour Legal Ethics)

Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.

Bonita Springs, FL April 3-5, 2014 (Thurs-Sat) Hyatt Regency Coconut Point Resort and Spa 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)




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 (sec)112(a), f/k/a/ (sec)112, para.1, despite the time pressure created by moving to a firstinventor-to-file system under the America Invents Act (AIA).

Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)


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 PRG’s 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 PRG’s four-day Workshop designed specifically for them, The Winning Patents Workshop. For details visit our website at 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


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“Designing Around” Valid U.S. Patents
Projected State Bar CLE Credit:

15.0 Hours
Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues) Hyatt Regency Coconut Point Resort and Spa 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)

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




Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

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 anyone’s part in this exercise, the faculty and students will go through several claim construction exercises and compare their conclusions with the Federal Circuit’s 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 Alloc and Nystrom, the no-infringement-by-equivalents cases of Slimfold, Laitram and London, and the super landmark, no-equivalents-at-all afterprosecution-history-estoppel case of Festo IX. These and other cases are presented in literal, graphic clarity.

How to Draft Infringement and Noninfringement Opinions The effects of Seagate, the AIA, and Bard on findings of willfulness, enhanced damages, and fee awards will be discussed in detail. The faculty also explains the substance and form opinions should have to maximize their effectiveness in litigation.

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

he attentive staff at the Stillwater Spa are ready to provide you with a variety of rejuvenating services, including massage therapy, facial skin care, water therapy, and spa body treatments.

T 13

Drafting Patent License Agreements
Projected State Bar CLE Credit:
Course Faculty • The faculty teaches by sharing decades of combined experience in licensing.

15.0 Hours
(Including 2.0 Hours Legal Ethics)

Bonita Springs, FL April 3-5, 2014 (Thurs-Sat) Hyatt Regency Coconut Point Resort and Spa 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)






Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

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: • “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 • “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 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 O’Reilley and D. Brian Kacedon. The thoroughness of the text and accompanying slides will minimize the need for note-taking at the program. Moreover, this Seventh 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


eed to burn some energy after class? Test your skills, strength, and stamina on the rock-climbing wall! 15

Federal Circuit Law (2012-2014)
Projected State Bar CLE Credit:
Course Faculty

INCLUDING COMMENTARY on the America Invents Act

15.0 Hours
(Including 1.0 Hour Legal Ethics)

The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the court’s 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.

Bonita Springs, FL April 3-5, 2014 (Thurs-Sat) Hyatt Regency Coconut Point Resort and Spa 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)





Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)


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 Circuit’s most recent opinions. The distinguished faculty of Federal Circuit Law (2012-2014) 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 (AIA) The AIA is generally regarded as the most significant change to the U.S. patent system since 1952. For years to come, however, 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 - Two Years in Review - Taught by Experienced Lecturers, All Former Technical Advisers/Law Clerks his is one of PRG’s longest continuously offered courses. Because the course focuses on the last two years, attendees often repeat this course every two years to remain current. Consequently, this course offers practitioners a unique opportunity to both become current in the law, and to remain so. And to do so in an interactive environment that is both informative and intellectually challenging. The interactive environment (as described below) allows attendees to contribute to the learning experience, and avoid sitting through a series of dull lectures.


There was a time when “patent law” was considered sufficiently “settled” such that slip opinions could be allowed to accumulate in a “stack” until an opportunity or need for review arose. Those days are gone. Now that “stack” for many has become a large electronic file and has likely grown beyond the point of realistically being able to “catch-up” with the opinions. If this applies to you, then you are a prime candidate for this course.


Every practitioner knows the importance, if not the fundamental requirement, of staying up-to-date on Federal Circuit and Supreme Court law. But the Federal Circuit weekly hands down opinions, frequently precedential opinions in patent cases that, according to the Federal Circuit’s Internal Operating Procedures for precedential opinions (IOP # 10), add something to the existing body of case law, as opposed to simply resolving the parties’ dispute. Thus, each precedential opinion was considered, by definition, noteworthy enough that the Federal Circuit elected to issue a precedential opinion. Although some may question that choice, failing to stay up-to-date on at least precedential opinions, by definition, results in “flying blind” in the face of sometimes rapidly developing changes, many times involving opinions creating new “issues,” and “new law,” for litigators and prosecutors alike. What’s more, even taking the time to religiously read the opinions is frequently not enough. The Federal Circuit unfortunately often issues opinions that vary from established precedent – sometimes dramatically, sometimes more subtly - and often without even mentioning prior contrary authority. Or, in which contrary authority is buried in dissenting and concurring opinions. Such opinions are highlighted in the course. The Changing “Face” of the Federal Circuit Of equal importance, the “face” of the Federal Circuit has changed dramatically over the past three years. The Federal Circuit is not a monolith, but rather a collection today of twelve active and six senior judges, each of whom have individual judicial philosophies that impact various patent law issues. The “judicial philosophy” of those eighteen active and senior judges is far from uniform. For example,

some of the judges favor limiting claim construction to “the invention” that is the subject of the “written description,” while others focus more on the claim language. Some judges take a narrow view of the Supreme Court’s recent decisions involving patent eligibility under § 101, while others take a more expansive view. The list goes on. As a result, actually understanding Federal Circuit opinions today frequently involves going beyond the printed words, and requires examining the views of individual judges participating in that opinion – whether writing, joining, concurring or dissenting. For example, in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (2013), although issued as an en banc opinion on patent eligibility under § 101, diverse opinions totaling 135 pages were handed down on several issues – collectively only garnering plurality (not majority) support on core issues necessary to resolve the dispute. As a result, although likely to be subject to Supreme Court review, there was no single “majority” precedential opinion. Strongly held individual judicial philosophies foreshadow similar results in the future on a variety of issues not limited to § 101. New judges necessarily mean new judicial philosophies, and possible “refinements,” if not outright changes, in existing law. We are already seeing some of that. Judge Wallach, confirmed in 2011, emphasized in Plantronics, Inc. v. Aliph, Inc. (2013) that in connection with the “secondary” or “objective” factors under § 103, “we have required courts to consider evidence of the objective indicia of nonobviousness prior to making the ultimate determination of whether an invention is obvious.” Judge Reyna, also confirmed in 2011, concurring in Apple, Inc. v. U.S. Int’l

Trade Comm’n (2013), wrote that “I emphasize that objective evidence of nonobviousness, such as that gleaned from the patented product’s role in the marketplace, is the indicia of the innovation principle upon which rests our system of patents.” Thus, these two new, active judges have expressed judicial philosophies that emphasize the importance of “secondary” or “objective” evidence of nonobviousness that, while correct, add elements of timing and weight not seen recently. Also, in important cases such as CLS Bank Int’l v. Alice Corp. Pty. Ltd., new judges Taranto, Chen and Hughes did not participate, and Judge Linn has assumed senior status. Because of the close votes, those changes could sway the Federal Circuit one way or the other on fundamental issues involving § 101. Indeed, since 2010, when Chief Judge Rader succeeded Chief Judge Michel, two active judges have resigned, two active judges have assumed senior status, two senior judges have died, and six new active judges have been confirmed – three in 2013 alone. Thus, fully one-half of the Federal Circuit’s complement of twelve active judges has been replaced since 2010 – a rare event by itself - and the “judicial philosophy” of the most recent appointees is just emerging. The changing “face” of the Federal Circuit suggests even more significant changes in the law in upcoming opinions. Increased Supreme Court Review The U.S. Supreme Court has, over the past few years, granted certiorari in a record number of IP cases. In its 2012 Term (20122013) for example, the Supreme Court decided six cases involving IP issues - Bowman v. Monsanto Co. (patent exhaustion), Already, ... continued on next page.


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LLC v. Nike, Inc. (although a trademark case, it involved covenants-not-to-sue in a context analogous to patent law), Kirtsaeng v. John Wiley & Sons, Inc. (international exhaustion under copyright law - similar issue arises in patent law), Gunn v. Minton (federal jurisdiction of legal malpractice actions), Association for Molecular Pathology v. Myriad Genetics, Inc. (patent eligibility under § 101), and Federal Trade Comm’n v. Actavis, Inc. (reverse settlement agreements). In its current 2013 Term (2013-14), the Supreme Court has already granted certiorari in four cases, Medtronic, Inc. v. Boston Scientific Corp. (burden of proof in declaratory judgment actions involving a non-breaching licensee), Octane Fitness, LLC v. ICON Health & Fitness, Inc. (“exceptional” case standard), Highmark Inc. v. Allcare Management Systems, Inc. (deference to be accorded to district court’s exceptional case determination), and Petrella v. Metro-Goldwyn-Mayer, Inc. (laches in copyright cases - similar issue arises in patent law). Pending petitions for certiorari suggest that “cert.” may be granted in 2-3 additional IP cases – maybe more. Although the primary focus of the course is on Federal Circuit law, Supreme Court cases (both decided cases and cases in which “cert.” has been granted) are covered as well. Also, cases such as Gunn are addressed in which “cert.” was to the Texas Supreme Court, but where the net effect of the Supreme Court’s decision overturned the Federal Circuit’s decision and rationale in seven cases! Filling In the Gaps This course “fills in the gap” left by “traditional” CLE programs and various published “case summaries,” and is designed to allow counsel to comprehensively become and remain current on today’s frequent and rapid changes in the law. Unlike the one year or less coverage typically offered by CLE courses, this course covers a two-year span, providing in-house and outside counsel alike an opportunity to remain comprehensively current on “must be aware of” cases by attending biennially. Also, unlike many CLE courses that offer a “patent law update” in a one hour or so time slot (which necessarily limits focus to but a few of the 100+ decided cases), this course offers a comprehensive review of precedential cases (as well as select non-precedential cases), in several formats of varying depth so that the attendee can chose which format works best – namely comprehensive text, PowerPoint slides, and lectures focused on “new developments”:

(A) The course is scheduled over 2 ½ days – time for in-depth review and analysis. (B) Cases are reviewed in three volumes of comprehensive text. (C) Case highlights are addressed in printed PowerPoint slides which attendees may follow and annotate during the lectures. (D) Issues unique in each presented case, and how those issues relate to prior law, will be highlighted, plus the opinions will be “boiled down” to various “teaching points,” as well as to insights to the Federal Circuit that are only available through the “lens” of a former technical advisor/law clerk. For example, the written text for cases that primarily involve novelty and loss of right to a patent under § 102, and obviousness/nonobviousness under § 103, span 400+ pages of review and analysis. Additionally, those cases are further digested into PowerPoint slides that an attendee may annotate during the discussion of §§ 102 and 103 cases. Thus, an attendee may follow the discussion while annotating the slides and refer to them later. The same is true for the numerous other topics listed in the course syllabus. Also unlike most CLE courses, this program is “interactive.” Questions from attendees (as well as from the panel), and open discussion, are actively encouraged in “real time” during the lectures. If you disagree with (or agree with) a point made by a lecturer, or wish to raise a question or observation, you need only raise your hand. The lecturer will stop and recognize you – and whatever question/comment you have may spark further debate – which we encourage. Over the years we have found that this “interactive” environment is a “signature” feature of this course. The issues we talk about are generally worthy of debate – we encourage the same. Sampling of Cases Reviewed There are a number of both controversial and “must know” decisions that will be addressed. This is just a sampling. Practitioners writing applications for computer-aided inventions should 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. But contrast cases such as Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. (2013) (“circuit” may recite sufficient structure to avoid construction as a means-plus-function limitation).

Litigation practitioners will be interested in In re Bill of Lading (2012), setting out the pleading requirements for direct, contributory and induced infringement. But also practitioners must consider K-Tech Telecommunications, Inc. v. Time Warner Cable, Inc. (2013) where the panel splits on whether compliance with Form 18, FED. R. CIV. P., is sufficient to support a civil action for patent infringement. In the area of inequitable conduct, a panel majority in Network Signatures, Inc. v. State Farm Mutual Automobile Ins. Co. (2013) concluded that filing out a PTO form that failure to pay a second maintenance fee was “unintentional” without any further supplementation did not constitute inequitable conduct, but a strong, well-reasoned dissent argued otherwise. On the other hand, the opinion in Intellect Wireless, Inc. v. HTC Corp. (2013) gives us the first clear instance of adjudged inequitable conduct following Therasense, and which involved a false Rule 132 affidavit. For those thinking that Rohm & Haas Co. v. Crystal Chem. Co. (1983) was no longer good law – think again. Case law decisions in the area of patenteligible subject matter under § 101 have particularly left practitioners without true guidance. In In re Bilski, the Federal Circuit attempted to clarify the test for determining whether a claim recited patent-eligible subject matter by holding that its “machine or transformation test” was the sole and exclusive inquiry. The Supreme Court promptly rejected the machine or transformation test as the sole test for patentable subject matter, but declined to articulate a clear 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 collection of three opinions continuing to advocate its splintered view of § 101. The Supreme Court, on review in 2013, largely rejected the rationale of the Federal Circuit majority, but did little to clarify the ambit of patent-eligible subject matter outside the specific facts of that case. Meanwhile, the Federal Circuit continues with its view of patent eligibility under § 101. 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? Opinions by some judges in CLS Bank v. Alice Corp. (2012) en banc suggest that Beauregardtype claims do not avoid the fundamental analysis for patent eligibility under § 101.


Claim construction remains controversial. The Federal Circuit granted en banc review in Lighting Ballast Control LLC v. Philips Electronics North America Corp., and held oral argument in 2013, on the question whether the court should overrule Cybor Corp. v. FAS Technologies, Inc. (1998), namely that claim construction was a question of law for the court. It seems likely that the court will issue an opinion in early 2014. We must wait to see whether, and to what extent, the court fractures in addressing that question. The court also continues to break new ground in the interplay of reexamination and district court infringement litigation. In a surprise to many observers, the Federal Circuit in Fresenius USA, Inc. v. Baxter (2013) held that the PTO’s cancellation of claims in reexamination moots a pending infringement action on those claims. As a result, the district court’s “final,” multi-million dollar judgment was reversed because it was not “final enough.” With the recent denial of en banc review, and Circuit Judge O’Malley’s strong dissent urging a circuit conflict with Qualcomm, Inc. v. FCC (D.C. Cir. 1999), this is a “must know” highly controversial case, with or without Supreme Court review, affecting counsel’s choice to seek reexamination. Continuing in its run of surprises, the Federal Circuit held that a license defense can be effective for broadened reissue claims not in existence at the time of the original license agreement. In Intel Corp. v. Negotiated Data Solutions, Inc. (2012) the Federal Circuit affirmed the district court’s summary judgment of license and non-infringement defenses in favor of Intel pursuant to a licensing agreement with N-Data’s predecessor in interest, National Semiconductor Corp.

In an unusual generic v. generic case, Momenta Pharms., Inc. v. Amphastar Pharms., Inc. (2012) the Federal Circuit vacated a preliminary injunction against Amphastar and in doing so appeared to broaden the scope of the safe harbor provision of the HatchWaxman Act in an unusual way that prompted an explosive dissent by Chief Judge Rader. 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% rule of thumb was a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation.” The 25% rule, used for more than a decade, has thus been relegated to the scrap heap. Continuing the trend of reining in large damage awards, in LaserDynamics v. Quanta Computer (2012), the Federal Circuit further narrowed the entire market value rule almost to oblivion. Those are but highlights. Federal Circuit and related Supreme Court opinions in the past two years have created law that practitioners must know – especially in light of the changing composition of the court. Smoothing the Troubled Waters? In many respects, this is a user-designed dynamic course because we collected and analyzed course evaluations 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, legal ethics within the context of recent inequitable conduct cases, and selected HatchWaxman 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 and Supreme Court that will be covered. 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. 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, supplemented by PowerPoint slides that digest individual cases and court trends on specfic topics. G Comments from previous attendees: • “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 • “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

he Belvedere Room, just off the main lobby, provides comfortable sofas and armchairs and a peaceful space to relax; play a game of backgammon, chess, or checkers; or enjoy a cocktail.

T 19

Patent Drafting & Prosecution Based on a Single EPO/USPTO Specification
Projected State Bar CLE Credit:
Course Faculty • This course is taught by one U.S. and one European patent attorney with experience in

15 Hours
Bonita Springs, FL April 3-5, 2014 (Thurs-Sat) Hyatt Regency Coconut Point Resort and Spa 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)

both patent prosecution and litigation for multinational clients.



Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

Course Description hile the EPO and USPTO have similar requirements for patent applications, the same application can have dramatically different results in Europe and the U.S. An application originating in the U.S. frequently encounters substantial difficulties before the EPO. For example, the U.S. applicant often finds itself unable to amend claims in a manner clearly available during U.S. prosecution because of European "Priority Rules." Recurrently, claims issued by the EPO to a U.S. applicant are unnecessarily narrow by European standards.

Brought to you in partnership with:


This course will show you how to draft and prosecute one, optimized patent application that will comply with the differing requirements of both the EPO and the USPTO. There will be practical worked examples, illustrations, demonstrations of “best practice” and plenty of discussion, ensuring that you will go home with a realistic and workable solution to a perennial problem.

Why Should You Take This Course? This course is ideal for anyone who files patents before both the EPO and the USPTO. It provides a practical approach to developing a single patent application that complies with the requirements of both of these patent authorities.

The need for optimizing a patent application, so as to meet the requirements of both the USPTO and European Patent Office, has never been greater. And USPTO and EPO Examiners continue to act on divergent expectations regarding the applications they review. This course will give attendees a comprehensive overview of the principles underlying the preparation and prosecution of patent applications in both the U.S. and Europe. The speakers will: • Explain key, major differences between practice before the USPTO and European Patent Office • Compare and contrast the sometimes quite different statutory requirements in each jurisdiction, and propose solutions to maximize the scope of protection and minimize costs

• Offer the "best practices" for preparing an application that is well-suited for filing in both the U.S. and Europe • Discuss the implications of different EPO/U.S. prosecution procedures and timelines • Describe differences in "prior art" definitions between the EPO and the USPTO • Show how to draft effective responses to EPO rejections, comparing EPO "inventive step" and USPTO "obviousness" arguments Practical application: • During the course attendees will be invited to edit sample claims, specfications, and responses to Official Actions. • Such sessions will be followed by plenary sessions during which attendees and speakers will discuss the worked examples to produce optimal submissions to the EPO and USPTO.


The seminar will also include ongoing opportunities for participants to ask questions and discuss individual concerns.

For course syllabus, go to our website at G

ocated on 26 acres overlooking the breathtaking Estero Bay Aquatic Preserve, this enticing Bonita Springs, Florida hotel offers limitless recreation, personalized service, and attention to detail at every turn.

L 21

Patent Due Diligence in the AIA Era
Projected State Bar CLE Credit:
Course Faculty

15.0 Hours
(Including 2.0 Hour Legal Ethics)

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.

Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues) Hyatt Regency Coconut Point Resort and Spa 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)

Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

Course Description his course will provide practical guidance for conducting patent due diligence investigations in today’s changing legal environment. The panel will explore how the America Invents Act (AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the due diligence process, while sharing practical techniques and strategies for conducting 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 transactions—be they licensing, corporate mergers, acquisitions, or private equity deals—need 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 today’s 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 ½ day course. Sure, you’ll 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: • “This is a very comprehensive due diligence course. The speakers are very knowledgeable and continually supplement the course curriculum with real-world war stories. The course materials are invaluable and include a great overview of AIA.” — Anthony Colesanti C.R. Bard, Inc. April 2013/April 2008 attendeee • “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. I’m 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, suggestions for contractual practical

considerations, including effective uses of representations and warranties. Topics discussed in the course apply both to investigating a target’s patent portfolio and to preparing a portfolio for suitors. You’ll receive a thorough course book, chock full of notes, examples, and case law. The faculty—partners at Finnegan—are 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 you’ll 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


he poolside Corkscrew is a full-service bar and grill offering mouth-watering fare and fabulous drinks in a casual and tropical atmosphere. 23

Patent Infringement Litigation
Projected State Bar CLE Credit:
Course Faculty

15.0 Hours
(Including 1.0 Hour Legal Ethics)

Bonita Springs, FL April 3-5, 2014 (Thurs-Sat) Hyatt Regency Coconut Point Resort and Spa 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)

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).

Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)


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.

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.


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.

The 2014 Patent Infringement Litigation course will include several new items on the cutting-edge of both advocacy strategies and substantive developments in the law. These include: • A demonstration of how to conduct the most effective claim construction presentations at the highest level, including the use of two screens with synchronized presentations, animations, and integration of technical tutorial with argument on claim terms; • An in-depth discussion of the America Invents Act and its impact on patent litigation; and • A bonus presentation of how to move a billion dollars across the table in patent litigation without trial or appeal. 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.


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


lide down the 140-foot corkscrew slide at the Adventure Pool or catch up on some leisure reading under Florida’s amazing blue skies. 25

Pharma & Biotech Strategies for Patent Prosecution, Hatch-Waxman & Litigation
Projected State Bar CLE Credit:
Course Faculty • The faculty, all senior principals in Fish & Richardson’s vaunted life sciences group, has

16.5 Hours
Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues) Hyatt Regency Coconut Point Resort and Spa 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.





Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)


Course Description

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 the various market exclusivities provided by Hatch-Waxman and the 2009 Biologic Price Competition and Innovation Act, 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 Hatch-Waxman 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 company’s 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, overbreadth, functional limitations, claim construction, infringement based on in vivo conversion, and infringement under the doctrine of equivalents. The course will present claim strategies that address the Supreme Court's landmark holding in the Myriad case regarding gene patents, including repercussions for other types of biomolecules. Other important topics include screening or diagnostic assays, methods of treatment, personalized medicine, polymorphs, transgenic animals, antibodies, RNAi, single nucleotide polymorphisms (SNPs), and reach-through 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. G


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Post-Grant Patent Practice: Reissue, Owner-Requested Reexamination, and Supplemental Examination
Projected State Bar CLE Credit:
Course Faculty • The instructors are experienced in filing and prosecuting reissue applications. They were

6 Hours

actively involved in bar associations’ efforts to help the PTO design and implement the supplemental examination proceedings created by the America Invents Act (AIA). They have written widely on such topics for Intellectual Property Today. Additionally, they have lectured on these topics since 2009 for Patent Resources Group.

Bonita Springs, FL April 2, 2014 (Wed) Hyatt Regency Coconut Point Resort and Spa 8:15 a.m. - 11:30 a.m. and 1:30 p.m. - 4:45 p.m



Registration deadline: March 10, 2014

Why Should You Take This Course? Reissue is an indispensable tool for every patent owner, especially those who find themselves having a valuable patent that no longer has a continuation pending. Several recent developments have made reissue a more attractive vehicle. In other situations, owner-requested ex parte reexamination or the new supplemental examination procedures created by the AIA may good options to pursue.

Course Description


eissue is an indispensable tool for every patent owner, especially those who find themselves having a valuable patent that no longer has a continuation pending.

Several recent developments in the law have made reissue a more attractive vehicle. Those developments include the following: • Elimination of the requirement to say the “error” being corrected by reissue arose without deceptive intent • The ability to file a reissue application merely to add a new dependent claim • The ability to file reissue continuation applications to broaden claims in new ways after the twoyear broadening deadline • The rule against recapture has been clarified and relaxed • Reissue pendency is improving at the PTO In addition to reissue, owner-requested ex parte reexamination remains an option to have a patent reconsidered in light of newly discovered prior art or overlooked patentability issues with respect to previously considered prior art. The supplemental examination procedures created by the America Invents Act (AIA) is another option that can sometimes quickly eliminate potential issues of inequitable conduct if relevant information was not considered during original prosecution.

This one-day course covers the following tools for patent prosecutors: • Reissue • Owner-requested ex parte reexamination • Supplemental examination (new under the AIA)

• Other options such as certificate of correction, disclaimer, and “corrective” claim construction The course covers strategies, tactics, best practices and case studies for each tool. In addition, the course provides training for patent owners to:


• Choose among ex parte reexamination, reissue and supplemental examination to best strengthen and improve a patent • Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims • Understand how and when proceedings may be merged these

• Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings • Understand the timing of events in these proceedings so that you are not caught off guard • Navigate the maze of procedures to avoid unfortunately common mistakes

• Master the recapture rule • Understand when and how to utilize a certificate of correction, disclaimer, or “corrective” claim construction, rather than reexamination, reissue or supplemental examination


njoy breathtaking views of the Resort’s natural beauty from your casually elegant guest room, the perfect place to relax or catch up on business. 29

Post-Grant Patent Practice: Review and Reexamination
Projected State Bar CLE Credit:

15.0 Hours
(Including 1.0 Hour Legal Ethics)

Course Faculty • The instructors are experienced at representing both patent owners and accused infringers in review proceedings and reexaminations. They have taught the Post-Grant Patent Practice course for five years and continuously update their treatise and slides to provide practical advice based on current cases involving adversarial post-grant matters. They were 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 and reexamination topics for Intellectual Property Today.

Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues) Hyatt Regency Coconut Point Resort and Spa 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)

Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)



Course Description Why Should You Take This Course? The battleground of patent validity is shifting from courts to the PTO. Review proceedings, including post-grant review and inter partes review, are powerful, fast-track trials before the Patent Trial and Appeal Board. Review proceedings offer several advantages over validity challenges in a court proceeding including cost, predictability, effectiveness, speed, and the ability to pursue strategies that would not be feasible in court. This course explores these factors and provides training for participating in review proceedings. Reexamination remains popular either alone or alongside court battles. The PTO’s Central Reexamination Unit provides a forum that can result in many favorable outcomes, at a small fraction of the cost of 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. he first day of this two-and-a-half-day course focuses on ex parte reexamination and also addresses inter partes reexamination. The second day is dedicated to inter partes review. Topics covered in the final half day include post-grant review, covered business method patent review, and ethical issues related to review proceedings and reexamination. The course covers strategies, tactics, best practices and case studies for review and reexamination. 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.


Comments from previous attendees: • “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 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

Ten years ago courts were essentially the sole arbiters of patent 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 PTO’s 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 designaround 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. The Patent Trial and Appeal Board has shifted the balance 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 being granted liberally when inter partes reviews are filed in light of the statutory requirement for rapid completion of these new proceedings. As a result, validity challenges are proceeding 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 approach can simplify claim construction and narrow issues for an infringement portion of the litigation, and thus may reduce 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. For patent challengers, the course provides training to: • Analyze the advantages and disadvantages of review and reexamination compared to litigation • Make well-informed choices between review proceedings and reexamination • Understand the critical role of review and reexamination in the context of a dispute and develop strategies based on anticipated or concurrent litigation • Appreciate estoppel implications – both official and unofficial – of review and reexamination • Utilize review and reexamination to obtain a stay or other benefits in related litigation • Unravel the AIA’s review statutes and decipher the PTO’s review rules to understand how reviews are really conducted • Prepare a petition for review or a request for reexamination 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 review or reexamination 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 • Correctly and strategically use petitions and declarations • Understand the repercussions that review and reexamination 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: • Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims – or from mere argument regarding claim scope • 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 review and reexamination procedures to avoid unfortunately common mistakes G


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Procuring and Enforcing Business Method and Other Software-Based Patents After Bilski and BMC
Projected State Bar CLE Credit:

15.0 Hours
(Including 2.0 Hours Legal Ethics)

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.

Bonita Springs, FL April 3-5, 2014 (Thurs-Sat) Hyatt Regency Coconut Point Resort and Spa 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)




Registration deadline: March 10, 2014 (Register by February 10 for best tuition rates!)

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/k/a“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 At the Course, attendees will receive a comprehensive text and slides, written by the distinguished faculty. G


lay a round of golf amid beautifully preserved natural surroundings on a world-class course designed by golf legend Raymond Floyd. 33

Strategic Patent Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands
Projected State Bar CLE Credit:
Course Faculty

6.0 Hours
Bonita Springs, FL April 2, 2014 (Wed) Hyatt Regency Coconut Point Resort and Spa 8:15 a.m. – 11:30 p.m. and 1:30 p.m. – 4:45 p.m.

Matt Buchanan has helped numerous startup and established companies design and implement effective portfolio development and management systems. He has developed a thriving consulting practice in the field that complements his active U.S. and international patent preparation and prosecution practice.



Registration deadline: March 10, 2014


Why Should You Take This Course? The course provides a detailed overview of effective corporate portfolio development and management systems, from invention capture to foreign filing and maintenance fee decisions. In-house patent counsel and other professionals responsible for designing, implementing and/or managing systems for capturing, reviewing and evaluating inventions and patents will gain practical knowledge that will aid in the designing or revising of their own corporate systems. Attorneys in private practice that help clients at a systems-level will also find the course beneficial.

Course Description he reign of Federal Circuit chaos continues and now we’ve jumped into the brave new world of first-to-file. Economic realities have served as a backdrop to this upheaval, placing heightened budget demands on patent work across all industries like never before. Despite this ushering in of unprecedented change over the last several years, most organizations continue to live with antiquated or non-existent portfolio development and management systems. While they still value and desire strong patent protection in this strange new world – filings continue to reach record levels – organizations now require faster delivery of higher quality applications for less. Meeting these three objectives is proving difficult for many, though, as simple demands that outside counsel do more for less reach their limit.


Patent professionals in portfolio-building organizations stand at a crossroads, then, having to decide whether to accept a current system that addresses less than all of these objectives or to begin rethinking the tools and processes they use in the building of their portfolios. This course provides practical knowledge that enables the patent professional to set the organization down the second path, toward implementation of a comprehensive, systems-based approach to portfolio development and management that is designed for the realities of the modern patent world. The pressures of case law chaos, first-to-file and budget demands require the implementation of a portfolio development and management system that is strategic,

timely and efficient. “Living with” a corporate system designed for yesteryear will only allow an organization to respond to less than all of these pressures and, over time, will necessarily produce a less valuable portfolio. The current patent environment demands a rethinking of everything from idea capture and documentation to review and evaluation for filing, and from filing strategies to expectations placed on outside counsel. The course provides a detailed overview of a model system and examples of its implementation in various types of organizations. Attendees will receive valuable and practical knowledge that can be put to use while designing new or modifying existing systems in their own organization. Specific topics discussed include:


• Forms for documenting ideas • Guidelines for deciding whether protection is desirable • Patent committee structure, make-up and responsibilities • Application filing strategies, including optimized chaining of provisional applications

• Expectations to place on outside counsel • Idea recycling • Portfolio review • Leveraging the system through knowledge dissemination within the organization.

Course Materials Attendees will receive a comprehensive set of slides. G


et your cares slip away in the soothing spa pool while overlooking the green lushness of the natural Florida surroundings. 35

PRG’s Fall Hotel Hyatt Regency Coconut Point Resort and Spa Bonita Springs, FL • March 30-April 5, 2014
5001 Coconut Road Bonita Springs, FL 34134
(888) 421-1442 or (239) 444-1234
For information and to make your room reservation online, please go to and click on the Hotel Information link for Hyatt Regency Coconut Point Resort and Spa. Room reservations must be made by March 10, 2014. When making your reservation, be sure to identify yourself as a Patent Resources Group attendee to obtain the special PRG rate.

PRG’s 2014 Annual Spring Advanced Courses Program will be held at the elegant Hyatt Regency Coconut Point Resort and Spa in Bonita Springs, FL.
Receptions for Attendees and Faculty: PRG receptions provide an opportunity for networking, plus delicious, complimentary hors d’oeuvres and beverages on the first evenings of class: Sunday, March 30 and Thursday, April 3. Spouses, children and guests of attendees and faculty are welcome and are certain to have an enjoyable time. Transportation: The Hyatt Regency Coconut Point Resort and Spa is about 16 miles (approximately 25 minutes) south of Southwest Florida International Airport (RSW), which is served by a variety of major airlines with nonstop flights from many cities throughout the United States. The Resort offers on-site valet parking and complementary self-parking for guests.

An Outstanding Venue!
ituated on 26 lush acres, the Hyatt Regency Coconut Point provides stunning views of the Gulf Coast, along with casual elegance and southernstyle hospitality. The Resort features the world-class Stillwater Spa; the 18-hole Raptor Bay gold course, designed by Raymond Floyd; a 5,000-square foot lagoon-style Adventure Pool with a 140-foot corkscrew water slide; hot tubs; and an adults-only heated lap pool. Hotel guests may also take a short ferry ride to the Resort's private Gulf Coast beach at Big Hickory Island, arrange for a variety of water and wildlife excursions in Estero Bay, or kayak through the mangroves of the Estero River.


Room rate: The sleeping room rate available to PRG attendees is only $259.00 per night, single or double, plus tax. This rate is 30% less than the Resort’s standard rate during this period!

The Hyatt Regency Coconut Point boasts seven restaurants and bars, including the Tanglewood Restaurant (serving breakfast, lunch, and dinner and featuring international cuisine) and the casual Tarpon Bay Restaurant with lake and fountain views. Hotel facilities also include a full-service business center, a 24-hour Stay Fit fitness center, wireless internet access, a video arcade, and tennis courts. For more information about the Hyatt Regency Coconut Point Resort and Spa, go to:


Hyatt Regency Coconut Point Resort and Spa REGISTRATION Bonita Springs, FL • March 30-April 5, 2014
Brochure Code: A14M1

Three-Day Courses:
Tuition for each three-day course is $2,195 through February 10, 2014 and $2,295 after that date March 30-April 1, 2014 (Sun-Tues)
❍ Art & Science of Patent Searching —

One-Day Courses:
Tuition for each one-day course is $995. April 2, 2014 (Wed)

REGISTRATION OPTIONS: Mail or Overnight: 1725 Jamieson Avenue Alexandria, VA 22314 FAX: (703) 892-4510 ONLINE: 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 PRG’s reception-cocktail party.
Early Registration Deadline: February 10, 2014 Final Registration Deadline: March 10, 2014


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

America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions Practice: Reissue, Owner-Requested Reexamination, and Supplemental Examination

GNEW COURSE Post-Grant Patent GNEW COURSE Strategic Patent

Optional Patent Searching Workshop (combined course and workshop is $2,590 through February 10, 2014 and $2,690 after that date)
❍ Chemical Patent Practice ❍ “Designing Around” Valid U.S. Patents ❍ Patent Due Diligence in the AIA Era ❍ Pharma & Biotech Strategies for Patent

Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands


Prosecution, Hatch-Waxman, & Litigation
❍ Post-Grant Patent Practice: Review and

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

For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details, go to:

I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:

Reexamination April 3-5, 2014 (Thurs-Sat)
❍ Crafting and Drafting Winning Patents ❍ Drafting Patent License Agreements ❍ Federal Circuit Law (2012-2014) ❍ Patent Drafting & Prosecution Based on

1. __________ _________________________ STATE ID NO.
❑ MR. ❑ DR. ❑ MS. ❑ PROF.

2. ___________ STATE

______________________ ID NO.

Name ___________________________________________ Title ________________________ Tel _____________________________________________ Fax ________________________ email ________________________________________________________________________ Organization ______________________________________ Suite or Mail Stop No. ___________
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January 27-31, 2014 Patent Bar Review Course Dallas, TX Doubletree by Hilton Near the Galleria March 10-14, 2014 Patent Bar Review Course Atlanta, GA Executive Conference Center March 30-April 5, 2014 Annual Spring Program Advanced Courses in Patent Law Bonita Springs, FL Hyatt Regency Coconut Point Resort and Spa

May 19-23, 2014 Patent Bar Review Course Washington, DC (Arlington, VA) Hilton Crystal City June 9-13, 2014 Patent Bar Review Course New York, NY Executive Conference Center June 9-11, 2014 Patent Administration: A Foundation for Success New York, NY Executive Conference Center July 8-10, 2014 Patent Administration: A Foundation for Success Washington, DC (Arlington, VA) Hilton Crystal City

July 8-11, 2014 Winning Patents Workshop Washington, DC (Arlington, VA) Hilton Crystal City August 4-8, 2014 Patent Bar Review Course Chicago, IL Four Points by Sheraton September 27-October 2, 2014 Annual Fall Program Advanced Courses in Patent Law Las Vegas, NV Caesars Palace November 2014 Patent Bar Review Course West Coast Location Check PRG website for dates, city, and venue

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atent Resources Group, the choice of every generation of patent attorneys since 1969, now offers customized ON-SITE training for selected courses on a negotiated basis!

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. America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions The content of this course was created with the goal of assisting patent attorneys and agents in fully understanding the AIA, its consequences, nuances, ambiguities, and unresolved issues created by the new statutory language. Practitioners must know the new law, but must also be able to determine when the AIA applies and when pre-AIA law applies.

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. 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! 39

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Patent Resources Group provides the industry's leading patent law education programs. The company has taught patent law and related courses to 40,000 patent attorneys, agents, engineers and scientists since 1969.


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