The Federal Circuit Bar Association 13001 Street, NW, Suite 700 Washington, DC 20005 phone 202-408-4205 fax 202-354-5791 www.fedcirbar.org The Federal Circuit Bar Association

Sixth Bench & Bar Conference Workbook The Broadmoor Colorado Springs, CO June 26-28, 2004 I The Federal Circuit Bar Association eeeeeee® Thank you to the Sponsors of the Sixth Bench & Bar Conference Adduci Mastriani & Schaumberg LLP Banner & Witcoff Ltd Brinks Hofer Gilson & Lione PC Connolly Bove Lodge & Hutz LLP Crowell & Moring LLP Dewey Ballantine LLP Fenwick & West LLP Finnegan Henderson Farabow Garrett & Dünner LLP Fish & Neave Fitzpatrick Celia Harper & Scinto Foley Hoag LLP Frommer Lawrence & Haug LLP Gibson Dunn & Crutcher LLP Gray Cary Ware & Freidenrich LLP Heller Ehrman White & McAuliffe LLP Hogan & Hartson LLP Howrey Simon Arnold & White LLP Jenner & Block Kaye Scholar LLP Kenyon & Kenyon Kirkland & Ellis LLP Knobbe Martens Olson & Bear LLP McDermott Will & Emery McDonnell Boehnen Hulbert & Berghoff LLP Milbank Tweed Hadley & McCloy LLP Morgan & Finnegan LLP Morris Nichols Arsht & Tunnell Morrison & Foerster LLP RatnerPrestia LLC Sidley Austin Brown & Wood LLP Simpson Thacher & Bartlett LLP Spriggs & Hollingsworth Steptoe & Johnson LLP Townsend and Townsend and Crew LLP Weil Gothsal & Manges LLP Wiley Rein & Fielding Wilmer Cutler Pickering Hale and Dorr LLP Woodcock Washbum LLP Young Conaway Stargatt & Taylor LLP App

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West Building The Federal Circuit Bar Association Officers and Board of Governors 2003-2004

Officers

PRESIDENT PRESIDENT-ELECT Stephen L. Peterson Charles F. Schill Finnegan, Henderson, Farabow, Garrett & Dünner, LLP Steptoe & Johnson

TREASURER SECRETARY Martha B. Schneider Michael J. Schaengold U.S. Merit Systems Proection Board Patton Boggs

Board of Governors V. James Adduci, Esquire Henry A. Petri, Jr. Adduci Mastriani & Schaumberg LLP Howrey Simon Arnold & White LLP

Robert L. Baechtold, Esquire Terry Petrie Fitzpatrick Celia Harper & Scinto LLP U.S. Department of Justice

Denise W. DeFranco, Esquire Pasquale A. Razzano Foley Hoag LLP Fitzpatrick Celia Harper & Scinto LLP

Joyce G Friedman Joseph R. Re U.S. Merit Systems Protection Board Knobbe, Martens, Olson & Bear

Scott M. McCaleb Edward R. Reines Wiley, Rein & Fielding Weil Gotshal & Manges LLP

Sharon A. Israel, Esquire Terence P. Stewart Jenkens & Gilchrist PC Stewart and Stewart

Joseph A. Violante Disabled American Veterans

EXECUTIVE DIRECTOR FOUNDING EXECUTIVE DIRECTOR James E. Brookshire George E. Hutchinson EX OFFICIO ABA DELEGATE Honorable Jan Horbaly Douglas B. Henderson

United States Court of Appeals for the Federal Circuit

Chief Judge Haldane Robert Mayer

Circuit Judge Pauline Newman Circuit Judge Richard Linn Circuit Judge Paul R. Michel Circuit JudgeTimothy B. Dyk Circuit Judge Alan D. Lourie Circuit Judge Sharon Prost Circuit Judge Raymond C. Clevenger, III Senior Judge Wilson Cowen Circuit Judge Randall R. Rader Senior Judge Daniel M. Friedman Circuit Judge Alvin A. Schall Senior Judge Glenn L. Archer, Jr. Circuit Judge WilliamC. Bryson Senior Judge S. Jay Plager Circuit Judge Arthur J. Gajarsa Programming Committee Chair Timothy Q. Delaney Brinks Hofer Gilson & Lione PC Committee Stephen L. Peterson Finnegan Henderson Farabow Mark J. Abate Garrett & Dünner LLP Morgan & Finnegan

Judge Barbara S. Mintz V. James Adduci II US Merit Systems Protection Board Adduci Mastriani & Schaumberg LLP

Helen S. Irza Barbara A. Murphy Morrison & Foerster Adduci Mastriani & Schaumberg LLP

Monique Drake Kristine S. Tardiff Gibson Dunn & Crutcher LLP US Department of Justice

David A. Segal Meredith Martin Addy Gibson Dunn & Crutcher LLP Brinks Hofer Gilson & Lione PC

Jerry Stouck Harry J. Roper Spriggs & Hollingsworth Jenner & Block

Conference Manager

Susan E. Clements Conference Team

Amy Smyth Douglas Agoposwicz Washington Assistant Conference Manager Federal Circuit Bar Association Federal Circuit Bar Association Karen Hilliou Alexandra Manolas Steptoe & Johnson Onsite Assistant Conference Manager Brinks Hofer Gilson & Lione PC Linda Keller RatnerPrestia Br o a d m o o rWe s t

Br o a d m o o r So u t h

Br o a d m o o r(¡o l fClu b App

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Broadmoor Property Map R o o m

D 1 a g r a m s TABLE OF CONTENTS

Biographies MarkJ. Abate...... 1 V. James Adduci, II...... 1 Meredith Martin Addy...... 2 BethS. Brinkmann...... 2 Bemiece A. Browne...... 3 Circuit Judge WilliamC. Bryson...... 3 Judge Gregory W. Carman...... 3 Chief Judge Edward J. Damich...... 4 Susan S. DeSanti...... 5 Monique Drake...... 5 Circuit Judge Timothy Dyk...... 5 Judge Joseph J. Faman...... 6 Charles M. Fish...... 6 Joyce G Friedman...... 6 Senior Circuit Judge Daniel M. Friedman...... 7 Circuit JudgeArthur J. Gajarsa...... 8 C. Edward Good...... 8 Professor Brian Gray...... 8 Alexander J. Hadjis...... 9 Walter G Hanchuk...... 9 Edgar H. Haug...... 9 Julia Heaney...... 10 Justice Gregory Hobbs...... 10 Judge James F. Holderman...... 10 JanHorbaly...... 11 Helen S.Irza...... 11 Kelly A. Johnson...... 11 Frank Kozak...... 12 James Kinsella...... 12 Professor Jan Laitos...... 13 William Lazarus...... 13 Professor Mark Lemley...... 13 Circuit Judge Richard Linn...... 14 CircuitJudgeAlanD.Lourie...... 14 Judge Paul J. Luckem...... 15 Chief Judge Haldane Robert Mayer...... 15 Peter C. McCabe III...... 16 Barbara Clarke McCurdy...... 16 NeilA.G McPhie...... 17 Mark A. Melnick...... 17 Circuit judge Paul R. Michel...... 18 Judge George Miller...... 18 Judge Barbaras. Mintz...... 19 Circuit Judge Pauline Newman...... 19 Chairman Deanna Tanner Okun...... 19 Biographies continued Judge Kathleen M. O’Malley...... 20 Chief District Judge Marilyn H. Patel...... 21 Arthur Patterson...... 22 Stephen L. Peterson...... 22 Senior CircuitJudgeS. Jay Plager...... 23 Joseph M. Potenza...... 23 Matthew D. Powers...... 24 Circuit Judge Sharon Prost...... 24 Circuit Judge Randall R. Rader...... 24 Chief Judge Emeritus Edward D. Re...... 25 Joseph R. Re...... 26 Harry J. Roper...... 26 Denis R. Salmon...... 26 Circuit JudgeAlvinA. Schall...... 27 Charles F. Schill...... 27 DavidA. Segal...... 28 Charles Shifley...... 28 Ron E. Shulman...... 29 Leif R. Sigmond...... 29 Stuart J. Sinder...... 30 Judge Loren A. Smith...... 30 Ronald L. Smith...... 31 Gerald Sobel...... 31 Jerry Stouck...... 32 Kevin R. Sullivan...... 32 Kristine S.Tardiff...... 33 JohnM. Whealan...... 33 Lewis S. Wiener...... 34 KentYalowitz...... 34

PROGRAM Friday, June 25 Registration and Check-In...... 37

Saturday, June 26 Registration and Check-In...... 37 Federal Circuit Historical Society Luncheon...... 37 Welcome and Introductions...... 38 State of the Court...... 38 Writing the Effective Appellate Brief...... 38 Crafting Your Oral Argument for the Federal Circuit...... 39 Best Practices from Differing Perspectives of Practitioner, Trial Court, and Appellate Court...... 40 Federal Circuit Decision Making...... 41 Annual Meeting...... 42 Welcome Reception -Sponsored by Frommer, Lawrence & Haug LLP...... 42 Dinner Dance...... 42

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R o o m

D 1 a g r a m s 5. Using the same 1-10 scale, how would you rate the materials? Comments:

6. Do you have any suggestions of how future Conferences or Horizons Seminars might be improved:

7. What topics would you like to see presented at future Conferences or Horizons Seminars?

8. Additional comments:

After completing this form, please fax or mail it to: Susan Clements The Federal Circuit Bar Association 13001 Street, NW, Suite 700 Washington, DC 20005 fax 202-216-5323 Sunday, June 27 CONCURRENT BREAKOUT SESSIONS Cou rt of Fede ral Claims : Important Cases from the U.S. Court of Federal Claims in 2003...... 43 Water Rights, Contracts, and Takings - A Perspective from the West...... 44 Inte ll ect ual Prop ert y : The Impact of State Street Bank: Six Years Later...... 45 Hatch Waxman Act Litigation...... 46 Interlocutory Appeals from Markman Hearings...... 47 Internati onal Tra de Commi ss ion Appe als : Increasing and Successful Assertion of Misuse Defense in Section 337 Investigations...... 48 Precedential Value of NAFTAand WTO Panel Decisions for Agency and Appellate Practice in Antidumping and Countervailing Duty Law...... 49 Water Rights Luncheon...... 50 Reception and Dinner...... 50

Monday, June 28 Lessons in Appellate Advocacy and Related Case Management: Preparing Your Case for Appeal from Day One...... 51 Decisions in Precedent: Two Roads Diverged in a Wood...... 52 Ethics and the Litigator: Some Frequently Recurring Issues Involving Duties to the Client, the Adversary, and the Court...... 53 Closing Comments...... 53

APPENDICES CLE Form ...... App A

Critique Sheet ...... AppB

Conference Room Diagrams The Broadmoor Map...... App C-l West Building Diagram...... App C-2

Sponsors ...... Inside Back Cover

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THE FEDERAL CIRCUIT BAR ASSOCIATION CRITIQUE SHEET Sixth Bench and Bar Conference The Broadmoor June 26-28, 2004 Please let us know what you think about this Conference. Your thoughts and comments are very important as we plan for future conferences and meetings.

1. Your total years of practice a. less than two years b. 2-5 years c. 6-10 years d. 11-25 years e. over 25 years

2. Your current practice organization a. solepractititioner b. firm of less than 10 lawyers c. firm of 11-50 lawyers d. firm of over 50 lawyers e. in-house corporate counsel f. government agency g. law school faculty h. judiciary 1 other______

3. Using a scale of 1-10,10 representing the highest rating, how would you rate the Conference as a whole? Comments:

4. Using the same 1-10 scale, how would you rate the speakers or panelists? Comments:

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1 e s The Federal Circuit Bar Association BENCHOc BAR The Federal Circuit Bar Association Certificate of Attendance The Broadmoor 1 Lake Avenue Colorado Springs, CO 80906 SATURDAY, JUNE 26

___ 1 Hour Writing the Effective Appellate Brief ___ 1 Hour Crafting Your Oral Argument for the Federal Circuit ___ 1 Hour Best Practices from Differing Perspectives of Practitioner, Trial Court, and Appellate Court ___ 1 Hour Federal Circuit Decision Making

SUNDAY, JUNE 27 Breakout Sessions ___45 Min. Important Cases from the U.S. Court of Federal Claims in 2003 ___2 Hours Water Rights, Contracts and Takings - A Perspective from the West ___1 Hour The Impact of State Street Bank: Six Years Later ___ 1 Hour Hatch Waxman Act Litigation ___ 1 Hour Interlocutory Appeals From Markman Hearings ___1.5 Hours Increasing and Successful Assertion of Misuse Defense in Section 337 Investigations ___1.5 Hours Precedential Value of NAFTA and WTO Panel Decisions for Agency and Appellate Practice in Antidumping and Countervailing Duty Law ___1.5 Hours Water Rights Presentation

MONDAY, JUNE 28 . 2 Hours 45 Min. Lessons in Appellate Advocacy and Related Case Management: Preparing Your Case for Appeal from Day One ___lHour Decisions in Precedent: “Two Roads Diverged in a Wood ...” ___ 1 Hour Ethics and the Litigator: Some Frequently Recurring Issues Involving Duties to the Client, the Adversary, and the Court I hereby certify that I attended above panels at the Federal Circuit Bar Association’s Sixth Bench and Bar Conference held at the Broadmoor, Colorado Springs, Colorado, June 26-28,2004, and request that my attendance be reported for Continuing Legal Education credit to the state bar associations listed below.

State Bar No. Print Full Name

State Bar No. Signature

State Bar No. Firm

Address

Phone Please return this completed form to the registration desk before leaving the meeting or mail it within 15 days to: Kevin W. Goldstein, Esquire Ratnerprestia A Professional Corporation 1235 Westlake Boulevard, Suite 301 One West Lake Berwyn PA 19512 Phone: 610-407-0700 Fax: 610-407-0701

App-A pq .w A P P e n d 1 c e s Mark J. Abate Mr. Abate was employed as a patent examiner at the United States Patent and Trademark Office from 1984 to 1985 and as a law clerk to Chief Judge Howard T. Markey of the United States Court of Appeals for the Federal Circuit from 1988 to 1990. He has been with Morgan & Finnegan since 1990 and is a partner of the firm. His practice centers on patent trials and appeals. He has been involved in a number of actions in the United States District Courts, including having first chaired a jury trial in the Eastern District of New York. He successfully argued, in what was then a case of first impression, that a district court ruling on claim construction was entitled to collateral estoppel in the case of TM Patents v. IBM. Since joining Morgan & Finnegan, Mr. Abate has also been involved in a number of appeals before the Federal Circuit. He authored the amicus brief of IBM, Ford and Kodak that was followed and cited by the Federal Circuit in the landmark en banc case of Festo v. Shoketsu. Although trial and appellate litigation is Mr. Abate’s focus, he has counseled clients on various intellectual property and related matters. Mr. Abate is an active member of state, local and national bar associations including the ABA, AIPLA, NYIPLA and Federal Circuit Bar Association, has chaired numerous committees and subcommittees for those associations, is the Secretary of the NYIPLA and is a past member of the Board of Governors of the FCBA. Mr. Abate is a frequent lecturer and author. He is a fellow of the American Bar Foundation and is listed in Who’s Who in American Law.

Mr. Abate holds a B.S. degree, with highest honors, from Rutgers University and a J.D. degree, with high honors, from George Washington University. He was on the George Washington Law Review and is a member of the Order of the Coif and Tau Beta Pi.

Mr. Abate is admitted to the bars of the states of New York and New Jersey, the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, and the U.S. District Courts for the Southern and Eastern Districts of New York. He is registered to practice before the U.S. Patent and Trademark Office.

V. James Adduci Jim Adduci is a partner in the Washington D.C firm, Adduci, Mastriani, & Schaumberg L.L.P. Before establishing the firm in 1981, Mr. Adduci served for two years as legal counsel to a Commissioner of the U.S. International Trade Commission, where he dealt with all matters within the Commission’s jurisdiction including unfair competition cases, antidumping and countervailing duty actions and escape clause proceedings. He was later appointed by the U.S. Trade Representative, Robert Strauss, to the United States Delegation to the GATT in Geneva, Switzerland, where he was involved in negotiating an international code on import safeguard actions.

Since entering private practice, Mr. Adduci has represented both foreign and domestic clients in connection with all of the major U.S. trade statutes, including trade remedy cases before the U.S. International Trade Commission, the U.S. Department of Commerce, the U.S. Customs Service, and before the reviewing courts for those agencies.

Mr. Adduci has written and lectured extensively on U.S. trade law and policy, and currently serves on the Board of Governors of the Federal Circuit Bar Association. He received his B .A. from the University of Colorado and is a 1975 graduate of the John Marshall Law School. He resides in Washington D.C.

1 Meredith Martin Addy Meredith Martin Addy is a shareholder at Brinks Hofer Gilson & Lione where she focuses on appeals before the United Stated Court of Appeals for the Federal Circuit and patent litigation at the district court level. She recently was named one of the “40 Attorneys Under 40 in Illinois to Watch” by Law Bulletin Publishing Company. Ms. Addy has appellate experience in the biotech, pharmaceutical, chemical, and electrical arts. She has significant experience as a Court Appointed Expert and Special Master presiding over Markman hearings,drafting Markman decisions, and drafting decisions on motions for summary judgment in complex patent litigations.

With a background in electrical engineering, Ms. Addy has procured, defended, and enforced IP rights in audio and video technologies, voice synthesis, telecommunications, Internet telephony, software,hardware, and electrical connectors. She is responsible for development of patent portfolios including prosecution, supervision, and preparation of patent applications from filing to issuance.

Ms. Addy is a former law clerk to the Honorable Paul R. Michel, Circuit Judge, United States Court of Appeals for the Federal Circuit. She has a B .S. in Electrical Engineering and a B .A. in Studio Art from Rice University; her J.D. is from the University of Georgia School of Law, and she has an LL.M, in Intellectual Property from The John Marshall Law School.

Beth S. Brinkmann Beth S. Brinkmann is a partner in the Washington, D.C. office of Morrison & Foerster LLP. Her primary focus is on litigation in the Supreme Court of the United States and other appellate matters. She has argued more cases before the Supreme Court than any other woman in practice today.

Since joining Morrison & Foerster in early 2002, Ms. Brinkmann has filed more than 15 briefs in the Supreme Court in a wide range of cases involving issues of federal antitrust law, constitutional law, copyright, banking regulations, international arbitration, and federal preemption. She also argued a case involving educational privacy rights before the Supreme Court in 2002.

Ms. Brinkmann consults regularly on complex civil litigation that the firm handles, including cases in the Federal Circuit, and federal regulatory matters. From 1993 to 2001, Ms. Brinkmann served as Assistant to the Solicitor General of the United States. During that time, she argued 18 cases before the Supreme Court involving issues of constitutional and administrative law, civil rights, ERISA, Indian law, immigration law, and criminal law. She also participated in briefing more than 30 cases before the Court on the merits, and filed numerous petitions for writs of certiorari, briefs in opposition, and other briefs at the certiorari stage.

Ms. Brinkmann served as an Assistant Federal Public Defender from 1991 to 1993. She represented defendants at both the trial and appellate levels, including approximately a dozen felony jury trials, and she argued cases before the District of Columbia Circuit. From 1987 to 1991, she worked as an associate in a San Francisco litigation firm, Turner & Brorby, where she appeared in both state and federal courts.

Ms. Brinkmann served as a law clerk to the Honorable Harry A. Blackmun, Supreme Court of the United States, from 1986 to 1987, and to the Honorable Phyllis A. Kravitch, United States Court of Appeals for the Eleventh Circuit, in Savannah, Georgia, from 1985 to 1986. Ms. Brinkmann is a 1980 graduate of the University of California, Berkeley, where she received an A.B. with great distinction and graduated Phi Beta Kappa. She received her J.D. from Yale Law School in 1985, where she served as Note Editor on the Yale Law Journal. She is a member of the Edward Coke Inn of Court for Appellate Practice. She is admitted to practice in California and the District of Columbia.

2 P P e n d 1 c e s

Berniece Browne Berniece A. Browne has a B.A. in history from the University of Maine and received her J.D. from the Columbus School of Law at the Catholic University of America in Washington, D. C. in 1976. She began her career with the United States Customs Service where she provided legal advice on antidumping and countervailing duty cases in the Office of Regulations and Rulings and later in the Office of the Chief Counsel.

Ms. Browne moved to the United States Commerce Department in 1980 when the administration of the antidumping and countervailing duty laws were transferred to that agency. Since moving to Commerce most of Ms. Browne’s work has involved supervising the Commerce attorneys involved in defending the department’s antidumping and countervailing duty determinations before the Court of International Trade, the Court of Appeals for the Federal Circuit, NAFTA Panels and WTO reviewing entities.

Federal Circuit Judge William C. Bryson

Circuit judge; bom August 19,1945, in Houston, TX; A.B., Harvard University, 1969; J.D., University of Texas School of Law, 1973; married, two children; law clerk to Hon. Henry J. Friendly, circuitjudge, U.S. Court of Appeals for the Second Circuit (1973-74), and Hon. Thurgood Marshall, associate justice, U.S. Supreme Court (1974-75); associate, Miller, Cassidy, Larroca and Lewin, Washington, DC (1975-78); Department of Justice, Criminal Division (1979-86), Office of Solicitor General (1978-79, 1986-94), and Office of the Associate Attorney General (1994); nominated in June 1994 by President Clinton to be circuit judge, U.S. Court of Appeals for the Federal Circuit, and assumed duties of the office on October 7,1994.

Judge Gregory W. Carman Judge Gregory W. Carman, a native of Farmingdale, Long Island, is the son o f the late Judge Willis B. Carman and Marjorie Sosa Carman. He received his law degree, with Honors, from St.. John’s University School of Law, where he was a member of the Law Review, and was an Honors Graduate of the Judge Advocate General’s Program at the University of Virginia Law School.

Judge Carman served in the United States Army, was discharged in 1964 with the rank of Captain, and was awarded the Army Commendation Medal for Meritorious Service. Thereafter he practiced law with the firm of Carman, Callahan & Sabino in Farmingdale, until 1983 when he was appointed to the Federal Judiciary. He served as a Councilman for the Town of Oyster Bay (second largest township in the United States) from 1972 to 1980, and was elected to the United States House of Representatives in 1981. During his tenure as a Member of the House of Representatives, he served as U.S. Congressional D elegate to the International Monetary Fund Conference, and as Member of the International Trade, Investment, and Monetary Policy Subcommittee of the House Banking Committee.

He is a Fellow of the American Bar Foundation; Member, American Bar Association; Me mber of the New York State Bar Association, Member and former Chair of its Committee on Courts and the Community, and recipient of the Committee’s 1996 Special Recognition Award. He is a Member of the Executive Board, and President of the Theodore Roosevelt American Inn of Court; Member and Director of the Respect For Law Alliance, Inc.; The Center for the Study of the United Nations Order and the Global Legal Order. The Degree of Doctor of Laws, honoris causa, was conferred upon him in 1999 by Nova Southeastern University. He was named Distinguished Jurist in Residence by Touro College Law Center in 2000. His alma mater, St. John’s University, conferred upon him the Degree of Doctor of Laws, honoris causa, in 2002. In 2003 he was the recipient of St. Lawrence University’s Alumni Citation.

In 1983 Judge Carman was appointed a Judge of the United States Court of International Trade. He served as Acting Chief Judge in 1991, and as Chief Judge, 1996- 2003. He served as a statutory member of the Judicial Conference of the United States, a M ember of its Executive Committee, Committee on the Judicial Branch, and Subcommittee on Long Range Planning. He frequently sits by designation with other federal courts, including the United States Courts of Appeals for the Second, Third, Eighth and Federal Circuits, and the United States District Court for the Eastern District of New York. 3 Chief Judge Edward J. Damich

Edward J. Damich was appointed a judge of the United States Court of Federal Claims on October 22, 1998, by President Bill Clinton, and was designated Chief Judge by President George W. Bush on May 13, 2002. Judges of the Court serve for a term of 15 years. The United States Court of Federal Claims, based in Washington, D.C., hears cases for monetary damages against the federal government, except cases for physical injury. Its docket includes cases involving government contracts, tax refunds, civil service and military pay, land use, Indian lands, and patent and copyright.

A resident of Washington, D.C., Chief Judge Damich was bom in Pittsburgh, Pennsylvania, and raised in Miami, Florida. Chief Judge Damich has an A.B. degree from St. Stephen’s College, Dover, Massachusetts; a J.D. degree from Catholic University; and L.L.M. and J.S.D. degrees from Columbia University. From 1995-98 Chief Judge Damich served as Chief Intellectual Property Counsel for the Senate Judiciary Committee. During his tenure on the Committee, he assisted the Chairman, Senator Orrin Hatch, with the passage of the Digital Millennium Copyright Act (DMCA), the most significant change in copyright law since the Copyright Act of 1976. The DMCA updated U.S. law for the digital age and for the Internet. In addition, he worked on the Omnibus Patent Act, the basis for the 1999 American Inventors Protection Act. He was also a member of the U.S. delegation at the World Intellectual Property Organization (WIPO) diplomatic conference, which concluded the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.

In September 1992, Chief Judge Damich was appointed by President George H. W. Bush to be a Commissioner of the Copyright Royalty Tribunal (CRT). In formal adjudicatory proceedings, the CRT set rates and distributed royalties under the statutory license provisions of the Copyright Act regarding cable television, non-commercial broadcasting, satellite television, sound recordings, and digital audio recording technology. He served as a Commissioner until November 1993.

At present Chief Judge Damich is an adjunct professor of law at the Georgetown University Law Center. He has also been a professor of law at George Mason University and at Delaware Law School of Widener University. Chief Judge Damich is the author of numerous articles, mostly on copyright law, but also on jurisprudence, land use planning, and criminal law. His copyright law articles have been cited in three federal district court opinions, most notably in Wojnarowicz v. American Family Assn. (745 F. Supp. 130 (S.D.N.Y. 1990)), in which the court adopted his interpretation of a New York statute. His articles are cited in all the major casebooks in copyright law and in the leading treatise, Nimmer on Copyright. He has testified before congressional committees on five occasions on copyright issues and on U.S. foreign policy regarding the former Yugoslavia.

Chief Judge Damich is admitted to the Bars of the Supreme Court of the United States, the Federal Circuit, the District of Columbia and the Commonwealth of Pennsylvania. He is a member of the District of Columbia Bar Association, the Bar Association of the District of Columbia, the Pennsylvania Bar Association, the American Bar Association, and the Association Littéraire et Artistique Internationale.

Chief Judge Damich was the first president of the National Federation of Croatian Americans.

4 MONDAY, JUNE 28,2004 Location: Rocky Mountain Ballroom A/B

11:50-12:50 ------Ethics and the Litigator: Some Frequently Recurring Issues ____ Involving Duties to the Client, the Adversary, and the Court ____

Moderator: Harry J. Roper, ------Jenner & B lock _____

Panelists: Circuit Judge Arthur J. Gajarsa, U.S. Court of Appeals for the Federal Circuit

Judge Joseph J. Farnan, Jr., U.S. District Court for Delaware

RonE. Shulman, Wilson Sonsini Goodrich & Rosati

Litigators that practice before the Federal Circuit not only owe duties to their clients, but also to their adversaries, the courts, and often administration agencies, such as the Patent and Trademark Office. This session will present questions and fact scenarios which present ethical issues familiar to litigators practicing before the Federal Circuit.

12:50 Closing Comments

1:00 End of Conference

53 MONDAY, JUNE 28,2004 Location: Rocky Mountain Ballroom A/B 10:40-11:40 Decisions in Precedent: “Two Roads Diverged in a Wood,..

Moderator: Meredith Martin Addy, Brinks Hofer Gilson & Lione, PC

Panelists: John Whealan, Solicitor, U.S. Patent and Trademark Office ‘ Written Description v. Enablement, Does it Really Make a Difference? ’

Charles F. Schill, Steptoe & Johnson LLP ‘When Does aNegative Number Equal Zero? ‘Zeroing’ in Antidumping Cases ”

Charles Shifley, Banner &Witcoff ‘ ‘Markman, Vitronics, Texas Digital - Why Texas Digital?”

Ronald L. Smith, Chief Appellate Counsel, Disabled American Veterans “Wells: Shifting the Burden to Veterans”

Lewis S. Wiener, Sutherland, Asbill & Brennan “‘Taking’ a Look at the 5th Amendment: Is Hindsight Always 20/20?”

This panel analyzes selected Federal Circuit decisions in the different areas of the Court’s jurisdiction. The panel looks at the basis for the Court’s holdings and considers the decisions’ effect on precedent.

A When Does a Negative Number Equal Zero? “Zeroing” in Antidumping Cases.

B. Wells: Shifting the Burden to Veterans.

C. “Taking” a Look a the 5th Amendment: Is Hindsight Always 20/20?

D. Markman, Vitronics. Texas Digital - Why Texas Digital?

E. Written Description & Enablement, Does it Really Make a Difference?

52 Susan Stark DeSanti Susan Stark DeSanti is Deputy General Counsel for Policy Studies at the Federal Trade Commission. She had primary responsibility for the FTC’s Oct. 2003 report, entitled “To Promote Innovation: The Proper Balance for Competition and Patent Law and Policy,” and for the Hearings leading to that report. She also oversaw the July 2002 FTC Study, “Generic Drug Entry Prior to Patent Expiration.”

As Director of the FTC’s Policy Planning, Ms. DeSantis was responsible for producing two FTC staff reports: “Entering the 21 st Century: Competition Policy in the World of B2B Electronic Marketplaces” (Oct. 2000), and “Anticipating the 21 st Century: Competition Policy in the New High-Tech, Global Marketplace” (May 1996). Ms. DeSanti has led workshops on factors that affect prices for refined petroleum products, e-commerce competition issues, and slotting allowances, and is one of the principal authors of the FTC/DOJ Competitor Collaboration Guidelines.

Ms. DeSanti previously served as Assistant Director for Policy and Evaluation in the Bureau of Competition of the FTC, and as an attorney advisor to former Chairman Robert Pitofsky and former Commissioner Dennis Yao.

Prior to joining the Federal Trade Commission, Ms. DeSanti was a partner at the Washington, D.C. law firm of Hogan & Hartson, where her practice centered on antitrust litigation and counseling and other regulatory matters. She has held a variety of positions in the American Bar Association Antitrust Section and is a frequent speaker on antitrust issues. She received her J.D. cum laude in 1981 from Boston University School of Law, where she was a member of the Law Review.

Monique Drake Monique Drake is a partner in Gibson, Dunn & Crutcher’s Denver office and a member of the firm’s Intellectual Property Practice Group. Ms. Drake’s practice focuses on patent infringement and trade secret litigation. She has litigated cases around the country in a diverse range of technical fields, including cellular telecommunications, computer technologies, building construction, battery technology, medical devices and sporting goods. Ms. Drake also has litigation experience in matters involving antitrust, copyrights, false advertising and corporate commercial disputes.

Ms. Drake is registered to practice before the United States Patent and Trademark Office and is admitted to the State Bars of California and Colorado.

Ms. Drake earned her law degree in 1993 from the University of Chicago, where she served as an Editor of the Law Review. She received a Bachelor of Science degree with honors in mechanical engineering from the University of California at Berkeley in 1990.

Federal Circuit Judge Timothy Dyk Circuit Judge, United States Court of Appeals for the Federal Circuit. Nominated for appointment April 1,1998 by President Clinton; confirmed by Senate, May 24,2000; entered on duty June 9,2000. Education: Harvard College, A.B., (cum laude) 1958; Harvard Law School, LL.B., (magna cum laude), 1961. Prior Employment: Law Clerk to Justices Reed and Burton (retired), 1961 -62; Law Clerk to Chief Justice Warren, 1962-63; Special Assistant to Assistant Attorney General, Louis F. Oberdörfer, 1963-64; Associate and Partner, Wilmer Cutler & Pickering, 1964-90; Partner and Chair Issues & Appeals Practice area (until nomination), Jones, Day, Reavis and Pogue, 1990-2000; and Adjunct Professor Yale, University of Virginia and Georgetown Law Schools.

5 Joseph R. Farnan Judge Farnan received his Bachelor of Arts degree in Government from King’s College, Wilkes-Barre, Pennsylvania, in June of 1967. Judge Farnan received his J .D. degree from the University of Toledo College of Law in June of 1970. While at Toledo, Judge Farnan was named an editor of the Law Review and awarded the Alumni Scholarship in recognition of academic achievement.

From September of 1970 until June of 1973, Judge Farnan was Dean of Students and Director of the Criminal Justice Program at Wilmington College. After leaving the college as an administrator and faculty member, he continued as a part- time instructor until 1981.

From December of 1972 until December of 1976, Judge Farnan was in the private practice of law in Wilmington, Delaware. During this time he also served as a part-time assistant public defender. From December of 1976 until January of 1979, he was County Attorney for New Castle County, Delaware. From January of 1979 until August of 1981, he was Chief Deputy Attorney General for the State of Delaware, and in August of 1981, he was appointed United States Attorney for the District of Delaware, where he served until his appointment to the federal bench in July of 1985. Judge Farnan served as Chief Judge of the District Court from July 1997 until July 2000.

Judge Farnan is a member of the New Jersey Bar (1970) and the Delaware Bar (1972).

Charles M. Fish Chuck Fish is Vice President & Chief Patent Counsel of Time Warner Inc. He is a 1984 graduate of the U.S. Naval Academy, where he was a national champion parliamentary debator and achieved two coveted black N awards. After commissioning, he served on a destroyer and a Patrol Wing Staff in the Western Pacific until “President Reagan won the Cold War and we ran out of targets.” He then attended Wayne State University Law School, graduating cum laude in 1992. While in Detroit at Wayne State he founded the Wayne Law Film Society and was active in the Federalist Society. He was especially pleased by Justice Thomas’ mention of Wayne State Law School as possibly embodying a compelling state interest (unlike the University of Michigan Law School) in the recent dissent in Grutterv. Bollinger. Following graduation Chuck worked at Morgan & Finnegan, Sony, General Instrument Corporation and Motorola Inc. prior to beginning his current job in September of 2002. He has spoken on legal and patent topics for the AIPLA, Pittsburgh IPLA, Philadelphia IPLA and the Anstine Excellence in Public Service Series.

Joyce G. Friedman Joyce G. Friedman is an attorney with the Office of General Counsel, U.S. Merit Systems Protection Board (MSPB or Board). Ms. Friedman has also been an attorney with the MSPB’s Office of Appeals Counsel, an Equal Employment Opportunity Counselor, and has served as legal counsel to members of the Board.

Prior to joining the MSPB, Ms. Friedman was an Assistant District Attorney in the Suffolk County District Attorney’s Office (New York). She also served as an assistant to the Director of Development of the American Committee for UNICEF in New York City.

Ms. Friedman received a B.A. degree from Hunter College and her J.D. degree from Hofstra University School of Law.

6 MONDAY, JUNE 28,2004 Location: Rocky Mountain Ballroom A/B 8:45-10:30 Lessons in Appellate Advocacy and Related Case Management: Preparing Your Case for Appeal from Day One ------

Moderator: Kristine S. Tardiff, U.S. Department of Justice, Environment & Natural Resources Div

Panelists: Senior Circuit Judges Daniel M. Friedman, U.S. Court of Appeals for the Federal Circuit

Chief Judge Edward J. Damich, U.S. Court of Federal Claims

Douglas B. McFadden, McFadden & Shoreman, P.C.

Mark A. Melnick, Assistant Director, U.S. Department of Justice, Commercial Litigation Branch, Civil Div

I. Overview of the Program and Introduction to the Case

II. Preparing Your Case for Appeal at the Trial Level

III. Mock Summary Judgment Argument & Decision from the Bench

TV. Transitioning Your Case from the Trial Court to the Federal Circuit

V. Mock Appellate Argument

VI. Lessons Learned, Closing Remarks and Questions

51 SUNDAY, JUNE 27,2004

12:30 - 2:00 Water Rights Luncheon West Ballroom and Foyer Sponsored by: Spriggs & Hollingsworth

“How Water Invented Western America: From the Native Americans and Hispanos to the Present Day, An Historical Overview" Justice Gregory Hobbs Colorado Supreme Court

6:30-11:00 Reception and Dinner (tickets required) Cheyenne Lodge

Co-Sponsored by: Connolly Bove Lodge & Hutz LLP and Finnegan Henderson Farabow Garrett & Dünner LLP

50 Federal Circuit Judge Daniel M. Friedman Daniel Mortimer Friedman was bom on February 8,1916, in New York City, the only child of Henry M. (1878-1961), an insurance broker, and Julia (Freedman) Friedman (1882-1952), a nurse. He is a descendant of English and Russian ancestors, his paternal great-grandfather having come to this country from England, and his material great-grandparents both having come from Russia.

Judge Friedman’s career is that of a career civil servant. All but two of his years since graduation from law school have been in the employment of the United States Government. In 1942 he joined the legal staff of the Public Utilities Division of the Securities and Exchange Commission in Philadelphia. From September 1942 to February 1946 he was in the Quartermaster Corps, U.S. Army, saw service in Europe, and was honorably discharged as a master sergeant. Upon completion of his military service he returned to the Securities and Exchange Commission where he engaged in corporate and securities law matters, assisted in the preparation of major commission opinions, and acted as legal assistant to a commissioner.

In 1951, Judge Friedman joined the Antitrust Division of the United States Department of Justice, Washington, D.C., where he performed appellate work in antitrust and administrative law, becoming Assistant Chief of the Appellate Section in 1954. In 1959 he joined the Office of the Solicitor General, serving as Assistant to the Solicitor General from 1959 to 1962, as Second Assistant from 1962 to 1968, and as First Assistant, later First Deputy Solicitor General, from 1968 to 1978. In the latter position he was senior lawyer, next to the Solicitor General. In 1977 he was Acting Solicitor General. He argued eighty cases before the Supreme Court and was recognized for his outstanding skill as a lawyer. He worked on and was responsible for Supreme Court briefs in hundreds of cases in addition to the many he argued. His experience in the law has been almost entirely at the appellate level.

In 1969, Judge Friedman received the highest award of his Department, the Exceptional Service Award of the Attorney General. In 1976 he received the Justice Tom C. Clark Award presented by the District of Columbia Chapter of the Federal Bar Association, and in the same year received the National Civil Service League Career Service Award presented annually to ten outstanding career civil servants throughout the Federal Government.

On January 16,1955, Judge Friedman married to Leah L. Lipson (1912-1969). On October 18,1975, he married Elizabeth M. Ellis (1922-2002).There are no children of these two marriages.

On March 22, 1978, President Carter nominated Daniel M. Friedman to be the eleventh Chief Judge of the United States Court of Claims. He was the fourth Chief Judge to be appointed who was not previously an Associate Judge of the Court of Claims. The Senate confirmed his nomination on May 1,1978, and he took his oath of office, which was administered by the Chief Justice of the United States, Warren E. Burger, on May 24,1978. The investiture of the new Chief Judge was in the main courtroom of the courthouse in Washington, D.C., in the presence of his family, the judges, officials and employees of the court, and his friends from the Department of Justice and the bar.

While Chief Judge of the United States Court of Claims, Judge Friedman was a member of the Judicial Conference of the United States from 1978 to 1982. Upon the establishment of the United States Court of Appeals for the Federal Circuit on October 1,1982, Judge Friedman became an active Circuit Judge of that court. He is a member of the American Law Institute and the American and Federal Bar Associations. From 1983 to 1987 he was a member of the board of directors of the Federal Judicial Center. By designation of the Chief Justice, he has frequently sat on the Courts of Appeals for the Second and District of Columbia Circuits. He has also sat with the Eighth Circuit. Since 1983 Judge Friedman has been a senior lecturer in law at Duke Law School, teaching appellate advocacy; taught appellate advocacy in 1987 as an adjunct professor at the Washington College of Law of American University; and is the author of several law review articles. His principal interest is legal work, but he also finds some time for stamp collecting and photography as hobbies. He is an Ethical Culturist by religion, a political Independent, and a member of the Washington Ethical Society, the American Philatelic Society, the United States Philatelic Classics Society, and the Cosmos Club.

In 1988, Judge Friedman’s law clerks presented a portrait of the judge to the court, and it now hangs in the courthouse.

Judge Friedman assumed the status of Senior Circuit Judge on November 1,1989, and remains active in the work of the United States Court of Appeals for the Federal Circuit. He also continues to sit on the bench of other courts of appeals.

7 Federal Circuit Judge Arthur J. Gajarsa Circuit judge, bom March 1,1941 in Norcia (Pro. Perugia), Italy Married. Five children. Education: Rensselaer Polytechnic Institute, Troy, NY, 1958-62, B.S.E.E., Catholic University of America, Washington, D.C., 1968; M.A. in economics, graduate studies; Georgetown University Law Center, Washington, D.C. 1967, J.D.; Career Record: 1962-1963; Patent Examiner, U.S. Patent Office, Dept, of Commerce; 1963-64, Patent Adviser, U.S. Air Force, Dept, of Defense; 1964- 67, Patent Adviser, Cushman, Darby and Cushman; 1967-68, Law Clerk to Honorable Joseph McGarraghy, U.S. District Court for the District of Columbia, Washington, D.C.; 1968-69, attorney, Office of General Counsel, Aetna Life and Casualty Co.; 1969-71, Special Counsel and Asst, to the Commissioner of Indian Affairs. Bureau of Indian Affairs, Dept, of Interior; 1971-72, Associate, Duncan and Brown; 1972-78, Partner, Gajarsa, Liss and Sterenbuch; 1978-80, Partner, Gajarsa, Liss and Conroy; 1980-86, Partner, Wender, Murase and White; 1987-97, Partner and Officer, Joseph, Gajarsa, McDermott and Reiner, PC. Registered Patent Agent, Registered Patent Attorney, 1963. Admitted to DC Bar 1968, CT State Bar, 1969. Nominated for appointment April 18, 1996 by President William Jefferson Clinton (D); was confirmed by Senate July 31,1997. Entered service September 12,1997. C. Edward Good Ed Good is a member of Finnegan Henderson Farabow Garrett & Dunner LLP’s IP Specialties Practice Group. Prior to joining the firm, he served as a faculty member at the University of Virginia School of Law, heading the School’s program in legal writing for all first-year students. In 1977, he took a one-year leave of absence from Virginia to serve as a Judicial Fellow at the U.S. Supreme Court.

In 1980, Mr. Good started his own consulting service, providing seminars and on-site training programs in effective legal writing for law firms, corporations, and federal agencies across the country. His most ambitious program was developing and conducting a four-day training program in persuasive brief writing for litigators at the Internal Revenue Service. More than 15001RS attorneys have completed this intensive training, many ranking it the best training program they have ever attended.

Brian E. Gray Brian E. Gray is a Professor of Law at the University of California, Hastings College of Law, in San Francisco. He teaches courses on environmental law, water resources, federal public lands and natural resources, property, takings, and related subjects. Professor Gray is the author of numerous articles in these fields.

Professor Gray has argued several water resources cases before the United States Court of Appeals for the Ninth Circuit on behalf of environmental organizations. The subjects of these cases include the legality of the designation of five northern California rivers as components of the National Wild and Scenic Rivers system; the constitutionality of the Reclamation Reform Act of 1982; and the relationship of the Central Valley Project Improvement Act of 1992 to NEPA and other laws.

Professor Gray was the principal author of “A Model Water Transfer Act for California,” portions of which were enacted into law. He also has been a consultant to the California Business Roundtable on water transfer policy, the City and County of San Francisco in the Bay-Delta proceedings, the State of Missouri on interstate water litigation, the United States Environmental Protection Agency and the San Joaquin Valley Drainage Program on water rights issues, and the California Law Revision Commission on the proposed consolidation of California’s environmental laws.

Professor Gray is a past chair of the Committee on the Environment of the State Bar of California and has served on the Board of Directors of the Berkeley Law Foundation and the Natural Heritage Institute. He is a recipient of the Hastings Outstanding Teacher Award and the Nature Conservancy’s Volunteer Service Award. During the 1999- 2000 academic year, Professor Gray held the Harry and Lillian Hastings Research Professorship.

Professor Gray currently is working on a history of Hetch Hetchy entitled No Holier Temple: Hetch Hetchy and the American Environmental Movement.

8 SUNDAY, JUNE 27,2004 Int er na tion al Trade Commis sion Appe als - Rocky Mountain D 10:40-12:10 Precedential Value of NAFTA and WTO Panel Decisions for Agency and Appellate Practice in Antidumping and ------Countervailing Duty Law ------

Moderator: Barbara A. Murphy, Adduci, Mastriani & Schaumberg LLP

Panelists: Judge Gregory Carman, U.S. Court of International Trade

Chairman Deanna Tanner Okun, U.S. International Trade Commission

BemieceA. Browne, Office of the General Counsel, U.S. Department of Commerce

49 SUNDAY, JUNE 27,2004 Interna tiona l Trad e Commis si on Appe als - Rocky Mountain D 9:00-10:30 ----- Increasing and Successful Assertion of Misuse Defense in ----- Section 337 Investigations

Moderator: ____ V. James Adduci, U, Adduci, Mastriani & Schaumberg LLP ------

Panelists: Judge Paul J. Luckem, U.S. International Trade Commission

Alexander J. Hadjis, Fish & Richardson PC

Joseph M. Potenza, Banner & Witcoff, Ltd.

Kevin R. Sullivan, King & Spalding LLP I. Introduction

II. Patent Pooling and Package Licensing A. “Patent Pools” Defined B. Purpose of Patent Pools C. Potential Pro-competitive Effects of Patent Pools D. Potential Anticompetitive Effects of Patent Pools E. “Package Licenses” Defined F. Purpose of Package Licenses G Potential Pro-competitive Effects of Package Licenses H. Potential Anticompetitive Effects of Package Licenses

III. Historical Treatment of Patent Pools and Package Licenses A. Pre-1995 DOJ Antitrust Guidelines B. 1995 DOJ Antitrust Guidelines C. Post-1995 DOJ Antitrust Guidelines

IV. The Recordable and Rewritable CDs Case A. Parties B. Procedural History Leading to the ITC Case C. Philips’s § 337 Allegations D. Princo’s Patent Misuse Defense E. Patent Misuse Defined F. Princo’s Tying Allegations G “Essential” Defined H. “Essential”Applied I. The ‘ ‘Orange Book J. The Philips Licenses K. The Philips/Sony/Taiyo Yuden/Ricoh Patent Pools L. The Philips-only Licenses M. The Packaged Patents N. Philips’s Essentiality Determination O. Non-essential ‘ ‘Essential’ ’ Patents P. Market Power Q. Philips Patent Misuse

V. Current Case Status

VI. Future Implications 48 Alexander J. Hadjis Mr. Hadjis received his B.S. in Electrical Engineering from The Ohio State University. He went on to receive his JD degree from the University of Pittsburgh School of Law and later received his LL.M, in Intellectual Property from The George Washington University Law School. He also served as a Judicial Clerk to the Honorable Wilson Cowen of the United States Court of Appeals for the Federal Circuit. Mr. Hadjis is currently admitted to the bar in Virginia, the District of Columbia, and the Federal Circuit. He is also registered to practice before the United States Patent and Trademark Office.

Mr. Hadjis is currently a Principal Partner at Fish & Richardson PC. where his practice focuses on complex litigation, intellectual property litigation, ITC proceedings, appellate, and antitrust litigation. He has litigated patent infringement, antitrust, and breach of contract cases in several federal district courts and the U.S. International Trade Commission. The technologies involved in the cases he has litigated include various types of semiconductors and semiconductor processing techniques, telecommunications, software, xerography, chemical, and automotive components.

Walter Hanchuk

Walter Hanchuk is a partner in the New York Office of Morgan & Finnegan, LLP. He has extensive experience in the procurement, licensing and enforcement of patent rights in the financial service and information technology industries. Prior to joining Morgan & Finnegan, Mr. Hanchuk served as an Examiner in the US Patent & Trademark Office. He received his JD, cum laude, from the George Washington University and his engineering degree from The Cooper Union.

Edgar H. Haug Edgar H. Haug is one of the founding partners of Frommer Lawrence & Haug LLP. His extensive trial and appellate experience includes appearances before the U.S. Court of Appeals for the Federal Circuit, the U.S. Court of Claims, the Federal District Courts, and the U.S. Patent and Trademark Office. As a member of the New York State Bar Association, Mr. Haug chaired the International Intellectual Property Protection Committee. He is also a member of the Federal Circuit Bar Association, the American Bar Association, the New York Intellectual Property Law Association, where he was chair of the antitrust and patent misuse committee, and the International Patent and Trademark Association. Mr. Haug is also a faculty member and lecturer with the Practising Law Institute.

His ability to communicate complex subject matter to a judge or a jury places Mr. Haug in the very front ranks of intellectual property litigators. He has handled litigation involving patents, trademarks, copyrights and trade secrets for many of the world’s leading companies. Mr. Haug has litigated in complex technical fields including semi-conductor equipment and processing and shape memory alloys. In addition, Mr. Haug is one of the leading practitioners in the field of pharmaceutical patent litigation arising under the Hatch-Waxman Amendments to the Federal Food Drug and Cosmetics Act.

Mr. Haug has also had significant experience in due diligence investigation. In addition, he has conducted complex licensing transactions and client intellectual property counseling. Mr. Haug has substantial experience before foreign jurisdictions, having litigated before the UK High Court, the German Federal Supreme Court and the Tokyo High Court.

Mr. Haug attended the University of Notre Dame where he was a Ford Merit Scholar (B.S., Chemical Engineering, 1974) and received his law degree from St. John’s University in 1979. He also engaged in law studies at the University of Exeter, England. 9 Julia Heaney

Julia Heaney is a partner in the Wilmington, Delaware firm of Morris, Nichols, Arsht and Tunnell, where her practice concentrates on intellectual property litigation. She has litigated cases involving a wide range of technologies in District Courts and the Delaware Court of Chancery. She has served as chair of the Intellectual Property Section of the Delaware State Bar Association. Ms. Heaney is a graduate of Columbia Law School and holds a B.S. degree from the Whiting School of Engineering of Johns Hopkins University.

Justice Gregory J. Hobbs, Jr. Justice Gregory J. Hobbs, Jr. was appointed by Governor to the Colorado Supreme Court April 18,1996. Retained by Colorado voters for ten-year term commencing January 1999. Practiced law for 25 years, with emphasis on water, environment, land use, and transportation. Judge Hobbs was a former senior partner, Hobbs, Trout & Raley PC.; Partner, Davis, Graham & Stubbs. He was first Assistant Attorney General, Natural Resources Section, State of Colorado; Enforcement Attorney, U.S. Environmental Protection Agency and a Law Clerk for Judge William E. Doyle, U.S. Tenth Circuit Court of Appeals. He also taught sixth grade in New York City and served with the Peace Corps in South America.

Judge Hobbs was the Vice President, Colorado Foundation for Water Education; Co-Convenor, Dividing the Waters (Western Water Judges Project) and former Vice Chair, Colorado Air Quality Commission. Former Member; Regional Air Quality Council; Metropolitan Transportation Development Commission; Governor’s Water Roundtable, Governor’s Transportation Roundtable; and Wilderness Air Quality Related Values Task Force.

He was bom December 15,1944, in Gainesville, Florida. Received A.B. in History, Magna Cum Laude, from University of Notre Dame, 1966. Judge Hobbs received J.D. from the University of California at Berkeley (Boalt Hall), 1971.

James F. Holderman Judge James F. Holderman has been a United States District Judge in Chicago since 1985. During his tenure on the bench, Judge Holderman has presided over numerous cases in all areas of federal jurisdiction, including intellectual property cases. He has also served by designation as a judge of the United States Court of Appeals for the Seventh Circuit.

Before his life-tenure appointment to the United States District Court, Judge Holderman was a partner in the Chicago law firm of Sonnenschein Nath & Rosenthal where he specialized in federal court litigation across the United States. Before his years in private practice, he was an Assistant United States Attorney in Chicago and a frequent lecturer at the United States Attorney General’s Advocacy Institute in Washington, D.C.

Judge Holderman has been a speaker at numerous judicial and bar association seminars, both nationally and internationally. He has also been a long-standing faculty member at trial advocacy programs sponsored by the National Institute for Trial Advocacy. Additionally, Judge Holderman has taught various courses at several law schools, including the University of Chicago, the University of Illinois College of Law, and the John Marshall Law School in Chicago, where he currently teaches an intensive course entitled ‘ ‘Intellectual Property Trial Advocacy’ ’ with his wife, Adjunct Professor Paula Holderman.

Judge Holderman has authored several articles for law reviews and other legal publications on various legal topics. While he was in private practice, he represented the members of the American Bar Association before the United States Congress on ways to improve the rules and procedures applied by the United States Courts. Judge Holderman received both his undergraduate degree and his law degree from the University of Illinois at Urbana-Champaign and during law school served as the managing editor of the law review. 10 SUNDAY, JUNE 27,2004 Inte ll ect ual Proper ty - Rocky Mountain A/B 11:20-12:20 Interlocutory Appeals From Markman Hearings

Moderator: Leif R. Sigmond, Jr., McDonnell Boehnen Hulbert & Berghoff

Panelists: Circuit Judge Pauline Newman, U.S. Court of Appeals for the Federal Circuit

Circuit Judge Timothy Dyk, U.S. Court of Appeals for the Federal Circuit

Judge Kathleen O’Malley, U.S. District Court for Northern Ohio

Julia Heaney, Morris, Nichols, Arsht & Tunnell

Stuart J. Sinder, Kenyon & Kenyon

I. Introduction A. State of the Law

B. The Federal Circuit and Claim Construction 1. Reversal Record 2. De Novo Review

C. The Litigant’s View 1. Litigation Costs 2. Strategy Considerations (plaintiff v. defendant) 3. Settlement Opportunities 4. Speed In Determining Key Issues 5. Third Party Point Of View

D. The Court’s View 1. District Court 2. Federal Circuit 3. Docket Considerations 4. Timing Considerations

47 SUNDAY, JUNE 27,2004 Inte lle ctu al Property - Rocky Mountain A/B 10:10 - 11:10 ----- Hatch Waxman Act Litigation -----

Moderator: ------Edgar H. Haug, Frommer Lawrence & Haug LLP ____

Panelists: ------Circuit Judge Randall R. Rader, U.S. Court of Appeals for the Federal Circuit ------

Chief District Judge Marilyn H. Patel, U.S. District Court for the Northern District of California

Susan S. DeSanti, Deputy General Counsel for Policy Studies, Office of the General Counsel, Federal Trade Commission

Gerald Sobel, Kaye Scholer LLP I. Introduction A. Brief summary of the interplay of the regulatory and statutory schemes of the Hatch-Waxman Act and how such schemes present unique issues in patent litigations under this Act. n. Impact ofAugust, 2003 Revised FDA Rules Governing Generic Drugs in Hatch Waxman Litigation A. Does the revised declaration required to be submitted by a Brand Manufacturer protect against the listing of an unauthorized patent?

III. Impact of December, 2003 Medicare Modernization Act on Hatch- Waxman Litigation A. Does a district court have subject matter jurisdiction to hear a counterclaim for patent delisting pursuant to the revised Hatch- Waxman statute? B. Does a district court have subject matter jurisdiction to hear a declaratory judgment action pursuant to the revised Hatch-Waxman statute?

IV. Patent Delisting Issues A. Do the revised FDA rules regarding the detailed patent declaration change the FDA’s responsibilities regarding patent listing? B. Should the FDA be allowed to abdicate deciding patent listing issues? C. Does the patent delisting counterclaim provided for under the revised Hatch-Waxman statute resolve the issue of whether a delisting claim is a civil action ‘ ‘arising under any Act of Congress relating to patents”? D. Does the Federal Circuit have jurisdiction over appeals that raise issues of patent listing or delisting?

V. Antitrust Issues in Hatch-Waxman Patent Litigation A. Does the agreement disclosure provision in the Medicare Modernization Act affect the structuring of brand-generic or generic- generic agreements? B. When if at all, is a brand-generic agreement per se illegal?

VI. Authorized Generics A. Background B. Are authorized generics anticompetitive?

VII. Is there a right to a jury trial in a patent litigation under the Hatch- Waxman Act? 46 Honorable Jan Horbaly Jan Horbaly is circuit executive and clerk of court for the United States Court of Appeals for the Federal Circuit. Prior to joining the court, Mr. Horbaly was in private practice in Washington, C.,D. where he specialized in Supreme Court practice, federal court litigation, and military law. In 1990, former Secretary of Labor W. J. Usery, Jr., selected Mr. Horbaly to be executive director of the Coal Commission at the Department of Labor. From 1980 to 1984, Mr. Horbaly served as special assistant to The Chief Justice of the United States, Warren E. Burger. Prior to his service with the Chief Justice, Mr. Horbaly was a law clerk to Chief Judge Frank J. Battisti of the United States District Court for the Northern District of Ohio. From 1969 to 1976 Mr. Horbaly served on active duty in the United States Army as a captain in The Judge Advocate General ’ s Corps. He entered the United States Army Reserve in 1976 and retired as a colonel in 2000. Mr. Horbaly is a graduate of the United States Army W ar College and United States Army Command and General Staff College. For his service he has been awarded the Legion of Merit and Bronze Star. Mr. Horbaly has a J.S.D. from Yale University, a LL.M, from the University of VirginiaLaw School, aM.A. from the Woodrow Wilson Department of Government and Foreign Affairs at the University of Virginia, and a J.D. and A.B. from Case Western Reserve University.

Helen S. Irza Ms. Irza is an associate in Morrison & Foerster LLP’s San Diego office and a member of the Intellectual Property Practice. Ms. Irza was previously with the law firm of Baker & McKenzie, where she focused her practice on commercial and civil litigation.

Ms. Irza received her legal education from the University of San Diego School of Law (J.D., cum laude, 1997) where she was a member of the Order of the Coif and the San Diego Law Review, and was a recipient of an Alumni Scholarship (1996-97) and two Merit Scholarships. She received her undergraduate education from Stanford University (B.A., International Relations, 1988). Prior to joining Baker & McKenzie, Ms. Irza was an information systems consultant with Andersen Consulting in their New Orleans and Seville offices. While at Andersen, she trained, managed and evaluated teams of programmers in order to implement new information system designs for client corporations. Ms. Irza speaks Spanish and French.

Kelly A. Johnson

Kelly A. Johnson is the Principal Deputy Assistant Attorney General in the Environment and Natural Resources Division at the U.S. Department of Justice where she is the primary advisor to Assistant Attorney General Thomas L. Sansonetti. Prior to joining the Department of Justice in August 2001, Ms. Johnson was Senior Counsel on the Senate Energy and Natural Resources Committee where she specialized in natural resources, parks and public lands issues. She served as one of three members of the Bush-Cheney transition team for the Department of the Interior. From August 1990 through Junel995, Ms. Johnson was an associate in the natural resources and environmental law group of Holland & Hart.

Ms. Johnson graduated magna cum laude from the Indiana University School of Law where she was on the editorial staff of the Indiana Law Journal. She also has a Masters of Public Affairs in environmental management from the Indiana University School of Public and Environmental Affairs. Ms. Johnson earned a Bachelor of Science, with high honors, in environmental management from Cook College-Rutgers University.

11 Frank Kozak Frank joined NAVTEQ (formerly, Navigation Technologies) in 1998 to lead the company’s patent program and to create the company’s in-house patent department. Under Frank, NAVTEQ’s patent program has grown rapidly and demonstrated its success by producing more than 120 U.S. patents since 1998. NAVTEQ’s patents cover a broad range of the company’s activities including field collection of geographic data, database organization and formats, database maintenance, software applications, and data distribution methods. The US Patent Office recognized NAVTEQ’s patent program by inviting NAVTEQ to make a presentation for the technical education and professional advancement of its Examiners at the USPTO’s Forum 2002. The US Patent Office further recognized NAVTEQ’s patent program by conducting an educational field trip for some of its Examiners to NAVTEQ’s offices in 2002.

Before joining NAVTEQ, Frank was a partner at Brinks Hofer Gilson & Lione, in Chicago, Illinois. At Brinks Hofer, Frank concentrated on patent prosecution, in particular relating to software and computer-related technologies, and medical devices. Frank also advised clients on patent portfolio development and patenting strategies. Prior to joining Brinks Hofer in 1989, Frank was a patent attorney in the public sector at the US Department of Energy where he prosecuted patents for computer- related inventions developed at federally funded research facilities, such Argonne National Laboratory and Fermilab.

Frank earned his JD at Northwestern University and an electrical engineering degree from the University of Illinois at Chicago. Frank is a licensed attorney in Illinois and registered before the U.S. Patent and Trademark Office. He is also a member of the American Bar Association and the Intellectual Property Law Association of Illinois.

James M. Kinsella James M. Kinsella has served with the Department of Justice in the National Courts office of the Commercial Litigation Branch, Civil Division, from 1987 to the present. Since 1999, he has served as Deputy Branch Director, in which he supervises the efforts of trial attorneys in claims involving Government procurement, civilian and military personnel matters, and other claims in the United States Court of Federal Claims, and appeals from that court, as well as appeals from the Court of Veterans Appeals, the boards of contract appeals, and the Merit Systems Protec- tion Board in the United States Court of Appeals for the Federal Circuit. From 1990-1999, he served as an Assistant Branch Director. Mr. Kinsella began his Department of Justice career in 1987 as a trial attorney; he was responsible for conducting all phases of litigation, including writing motions, briefs, pre-trial memoranda, conducting discovery and trials, and presenting oral arguments.

Mr. Kinsella served on active duty in the United States Air Force from 1973-1978 and again from 1979-1987. Following college, he enlisted in the Air Force as a medical services specialist and served for five years; he was promoted to the rank of Sergeant. While serving, he attended law school. After passing the bar, Mr. Kinsella was commissioned an officer and served as a Captain and a Major in various assignments. Mr. Kinsella served as a civil trial attorney in the litigation office of the Judge Advocate General, where he was responsible for the conduct of all phases of trial and appellate litigation, and assisting Department of Justice attorneys in over 100 cases representing the United States in personnel and tort claims in Federal district courts and the then-Claims Court.

Mr. Kinsella received his Bachelor of Arts in 1972 from the Cleveland State University, Cleveland, Ohio, and his law degree from Creighton University, Omaha, Nebraska in 1978. He is a member of the bars of the United States Supreme Court, the Supreme Court of the State of Nebraska, the United States Court of Appeals for the Federal Circuit, and the United States Court of Federal Claims.

Mr. Kinsella is married to Kathryn A. Bleecker; he has three children and two grandchildren.

72 SUNDAY, JUNE 27,2004 Inte llec tua l Prope rty - Rocky Mountain A/B

9:00-10:00 ____ The Impact of State Street Bank: Six Years Later

Moderator: Walter G Hanchuk, Morgan Finnegan LLP

Panelists: Circuit Judge Richard Linn, U.S. Court of Appeals for the Federal Circuit

Charles M. Fish, Time Warner Inc.

Frank Kozak, Chief Intellectual Property Counsel, Navigation Technologies Corporation

Coordinator: Mark J. Abate, Morgan & Finnegan

1. The S ignature Financial Patent

2. New Filings in Class 705 since the State Street Decision - Information Technologies - Financial Services - E-Commerce - Business Methods

3. New Filings by Industry/Class - Multi-media - Wall Street - Start-ups - Fortune 500 - Start-ups - Sole Inventors

4. USPTO Practice - 2-3 year backlog - the “second eye review” - following State Street? - in re Bowman - continuing difficulties in searching? - oncoming appeal onslaught?

5. District Court and Federal Circuit decisions since State Street - what practioners see view from the bench

6. Are trends emerging? - international developments - legislative / regulatory - US Courts 45 SUNDAY, JUNE 27,2004 Court of Fede ral Clai ms - Rocky Mountain C

9:55-12:10 Water Rights, Contracts and Takings - A Perspective from the West

Moderator: Jerry Stouck, Spriggs & Hollingsworth

Panelists: Circuit Judge Alvin A. Schall, U.S. Court of Appeals for the Federal Circuit

Justice Gregory Hobbs, Colorado Supreme Court

Judge George Miller, U.S. Court of Federal Claims

Honorable Kelly Johnson, Deputy Assistant Attorney General, U.S. Department of Justice

Professor Brian Gray, University of California, Hastings College of Law

Professor Jan Laitos, University of Denver Law School

Panel members will discuss the source and nature of rights in water; allocation of water and water rights pursuant to federal reclamation contracts and other contractual schemes; federal policy concerns and objectives in water rights litigation; specific issues of federal contract and takings law that have been addressed or need to be addressed in these water rights cases; the relationship between contract and takings issues both in these cases and more generally.

44 Jan Laitos Jan Laitos is the John A. Carver, Jr. Professor of Law and Director of the Natural Resources and Environmental Law Program at the University of Denver College of Law. He is a Reporter for the Land Use Law & Zoning Digest, published monthly by the American Planning Association, and also a Board Member of the Rocky Mountain Land Use Institute. He has served as a commissioner (and Vice Chair) on the Colorado Water Quality Control Commission from 1985- 1992. He is a trustee of the Rocky Mountain Mineral Law Foundation. He received his B. A. from Yale, his J.D. from the University of Colorado Law School, and his S. J.D. from the University of Wisconsin Law School. In 1996, he was selected by the University of Denver for the University’s Distinguished Teaching Award

Prior to joining the faculty at the Denver Law School, he was the law clerk to the Chief Justice of the Colorado Supreme Court, and an attorney in the Office of Legal Counsel at the U.S. Department of Justice in Washington, D.C. He is the author of several articles on natural resources and environmental law, and many on the Takings Clause and Retroactivity. He is also the author of six books: Hornbook on Natural Resources Law (West Publishing, 2002); Regulation of Toxic Substances and Hazardous Wastes (Foundation Press, 2000); Law of Property Rights Protection: Limitations on Governmental Powers (Aspen Law and Business, 1999), and annual updates; Energy and Natural Resources Law (West Publishing, 1992); Cases and Materials on Natural Resources Law (West Publishing, 1985); and A Legal Economic History of Air Pollution Controls (Carrollton Press, 1980). The West Publishing Company will be publishing the second edition of his casebook on Natural Resources Law in 2004, and the Foundation Press will publish The Law of CERCLA and RCRA in 2005. He is a contributing author to a book published by Duke University Press in 2002 entitled The Moral Austerity of Environmental Decisionmaking.

William Lazarus Mr. Lazarus is an Assistant Chief in the Appellate Section of the Justice Department’s Environment and Natural Resources Division (ENRD). He is a 1970 graduate of the University of Chicago, and a 1982 graduate of the University of Pennsylvania School of Law. Following law school, Mr. Lazarus was a law clerk for Judge Oscar H. Davis for two years, which spanned the final month of the former Court of Claims and the establishment of the Federal Circuit. He then joined the ENRD Appellate Section through the Attorney General’s honors program. Mr. Lazarus’s responsibilities in ENRD Appellate include overseeing appeals in the Federal Circuit involving takings claims against the United States and breach of trust suits by Indian tribes.

Mark A. Lemley Mark A. Lemley is the Elizabeth Josslyn Boalt Chair in Law at the Boalt Hall School of Law, University of California at Berkeley, and a co-Director of the Berkeley Center for Law and Technology. He teaches intellectual property, computer and Internet law, patent law, and antitrust. He is of counsel to the law firm of Keker & Van Nest, where he litigates in the areas of antitrust, intellectual property and computer law. He is the author of six books and 53 articles on these and related subjects, including the two-volume treatise IP and Antitrust. He has taught intellectual property law to federal and state judges at numerous Federal Judicial Center and AB A programs, has testified five times before Congress or the Federal Trade Commission on patent, antitrust and constitutional law matters, and has filed numerous amicus briefs before the U.S. Supreme Court, the California Supreme Court, and the federal circuit courts of appeals.

Professor Lemley received his J.D. from Boalt Hall School of Law at the University of California at Berkeley, and his A.B. from Stanford University. In 2002 he was chosen Boalt’s Young Alumnus of the Year. After graduating from law school, he clerked for Judge Dorothy Nelson on the United States Court of Appeals for the Ninth Circuit, and has practiced law in Silicon Valley with Brown & Bain and with Fish & Richardson. Before joining the Boalt faculty in January 2000 as a Professor of Law, he was the Marrs McLean Professor of Law at the University of Texas School of Law. In Fall 2003 he was a Visiting Professor at Stanford Law School.

13 Federal Circuit Judge Richard Linn Circuit Judge, United States Court of Appeals for the Federal Circuit; nominated by President Clinton on September 28,1999; confirmed by the Senate on November 19,1999; assumed duties of the office on January 1, 2000; bom, Brooklyn, New York, April 13, 1944; B.E.E., Rensselaer Polytechnic Institute, 1965; J.D., Georgetown University Law Center, 1969; patent examiner, U.S. Patent Office, 1965-68; patent agent, U.S. Naval Research Laboratory, 1968- 69; associate, Brenner, O’Brien, Guay & Connors, 1970-71; patent advisor, U.S. Naval Air Systems Command, 1971-72; associate, Stepno & Neilan, 1972-73; partner, Stepno, Schwaab & Linn, 1973-74; partner, Irnirie, Smiley & Linn, 1974-77; partner, Marks and Murase, L.L.P. 1977-1997, member of executive committee, 1987-97; partner and Practice Group Leader, Electronics Practice Group, Intellectual Property Department, Foley & Lardner, 1997-99; admitted to the Virginia Bar in 1969, the District of Columbia Bar in 1970, and the New York Bar in 1994; member, founding Board of Governors, Virginia State Bar Section on Patent, Trademark and Copyright Law, Chairman, 1975; recipient, Rensselaer Alumni Association Fellows Award for 2000; Professorial Lecturer in Law, George Washington University Law School, 2001-date; member. Intellectual Property Advisory Board, George Washington University Law School; master, Giles Southerland Rich American Inn of Court 2001 -date.

Prior to taking the oath of office at the stroke of midnight, January 1,2000, to become the first federal judge of the 21 st century, Judge Linn counseled clients on the law, served as first chair in over 30 intellectual property and entertainment law litigations before trial and appellate courts, and acted as lead negotiator in the settlement of several global intellectual property disputes. Before his appointment to the bench, Judge Linn participated in local and national bar association activities and worked as a volunteer for the Juvenile Diabetes Research Foundation, serving as a member of the Board in 1994-1996, as vice-president for government relations in 1996-1998, as president of the Board in 1998-1999, and as president-emeritus in 1999. Federal Circuit Judge Alan D. Lourie Circuit judge; bom January 13,1935, in Boston, MA; son of Joseph and Rose Lourie; educated in public schools in Brookline, MA; A.B., Harvard University, (1956); M.S., University of Wisconsin, (1958); Ph.D., University of Pennsylvania, (1965); and J.D., Temple University, (1970); married to the former L. Elizabeth D. Schwartz; children, Deborah L. Rapoport and Linda S. Lourie; employed at Monsanto Company (chemist, 1957-59); Wyeth Laboratories (chemist, literature scientist, patent liaison specialist, 1959-64); SmithKline Beecham Corporation, (Patent Agent, 1964-70; assistant director, Corporate Patents, 1970-76; director, Corporate Patents, 1976-77; vice president, Corporate Patents and Trademarks and Associate General Counsel, 1977-90); vice chairman of the Industry Functional Advisory Committee on Intellectual Property Rights for Trade Policy Matters (IFAC 3) for the Department of Commerce and the Office of the U.S. Trade Representative (1987-90); Treasurer of the Association of Corporate Patent Counsel (1987— 89); President of the Philadelphia Patent Law Association ( 1984—85); member of the board of directors of the American Intellectual Property Law Association (formerly American Patent Law Association) (1982-85); member of the U.S. delegation to the Diplomatic Conference on the Revision of the Paris Convention for the Protection of Industrial Property, October-November 1982, March 1984; chairman of the Patent Committee of the Law Section of the Pharmaceutical Manufacturers Association (1980-85); member of the American Bar Association, the American Chemical Society, the Cosmos Club, and the Harvard Club of Washington; member of the Judicial Conference Committee on Financial Disclosure ( 1990-1998); member of Temple Law School Board of Visitors ( 1996- ) admitted to: Supreme Court of Pennsylvania, U.S. District Court for the Eastern District of Pennsylvania, U.S. Court of Appeals for the Third Circuit, U.S. Court of Appeals for the Federal Circuit, U.S. Supreme Court; awarded Jefferson Medal by the New Jersey Intellectual Property Law Assoc, for outstanding contributions to intellectual property law -1998; nominated January 25, 1990, by President George Bush to be circuit judge, U.S. Court of Appeals for the Federal Circuit, confirmed by Senate on April 5,1990, and assumed duties of the office on April 11,1990. 74 SUNDAY, JUNE 27,2004 Cour t of Feder al Claim s - Rocky Mountain C

This year the Court of Federal Claims breakout session addresses federal ------contract and Fifth Amendment takings issues together, rather than in separate ____ sessions as in past years. The breakout session is in two parts. Part 1 will be a discussion of important Federal Circuit decisions rendered in the past year in appeals from the Court of Federal Claims. Part 2 will be a panel ------discussion of federal contract and takings issues arising in cases involving disputes over water rights. Many of these cases arise in the Western United States, although the cases have been brought both in the Court of Federal ------Claims for monetary relief and in federal district courts in the West for non- ____ monetary relief.

9:00-9:45 Important Cases from the U.S. Court of Federal Claims in 2003 Moderator: Jerry Stouck, Spriggs & Hollingsworth

Defendant: James Kinsella, U.S. Department of Justice, Commercial Litigation Branch, Civil Div

Plaintiff: KentYalowitz, Arnold & Porter

The Court of Federal Claims breakout session will begin with a discussion of the most important Federal Circuit decisions of the past year in cases from the Court of Federal Claims. A Justice Department attorney and a private practitioner will each discuss the decisions he deems most important. Following this discussion, the breakout session will continue with a panel discussion on Water, Rights, Contracts and Takings: A Perspective from the West.

43 SATURDAY, JUNE 26,2004

5:05 - 5:15 Annual Meeting Rocky Mountain Ballroom A/B

6:00 - 11:30 Kids Night Out Pre-registration Required

FCBA Explorer Kids FCBA Adventure Bees (ages 3-12) (ages 7-12) West Exhibit Hall Louis Stratta Room

Welcome Reception for the Sixth Bench and Bar Conference < Saturday, June 26th * 6:00 - 7:30 pm e The Mountrtinrieto Terrace music, cocktails and appetizers

sponsored btj FROMMER LAIVRENCE & HAUG LLP

7:30 - 11:00 Dinner Dance (tickets required) Rocky Mountain Ballroom Entertainment by Ken Miller Trio 42 Paul J. Luckern Paul J. Luckern has been a permanent administrative law judge at the U.S. International Trade Commission (ITC) since August 1984. Judge Luckern’s specialty is administrative law and intellectual property law.

A native of Auburn, New York, Judge Luckern received a B.S. degree in chemistry, cum laude, from Georgetown University and an M.S. degree in organic chemistry from Cornell University. After working as a chemist at Eastman Kodak, he did further graduate work under a research grant, and taught chemistry, at the University of Southern California. Judge Luckern was appointed as an administrative law judge with the Social Security Administration in Pittsburgh, Pa. in November 1981. He was on detail with the ITC from April 30,1984 to August 13,1984.

From 1956 to 1960 Judge Luckern was a patent examiner in the United States Patent and Trademark Office. He received an LL.B (J.D.) degree from Georgetown University in 1959. From 1960 to 1962 Judge Luckern worked under a contract as a patent consultant in Basil, Switzerland from J.R. Geigy, A.G. From 1962 to 1964, he was a technical advisor to the late Hon. I. Jack Martin of the United States Court of Customs and Patent Appeals. He received an LL.M degree from Georgetown University in 1964.

Judge Luckern started as an associate with Fish & Neave of New York City in August 1964 and later became a junior partner there. In 1971 he resigned from that firm to become a trial attorney in intellectual property with the U.S. Department of Justice. Judge Luckern received U.S. Department of Justice Special Commendation awards for outstanding service in 1975 and 1979.

Chief Judge Haldane Robert Mayer Haldane Robert Mayer, chief judge; bom in Buffalo, New York, February 21,1941; son of Haldane and Myrtle (Gaude) Mayer; educated in the public schools of Lockport, New York; United States Military Academy, West Point, New York, B.S., 1963; and Marshall-Wythe School of Law, The College of William and Mary in Virginia, J.D., 1971; editor-in-chief, William and Mary Law Review. Omicron Delta Kappa; admitted to practice in Virginia and the District of Columbia; Board of Directors, William and Mary Law School Association, 1979-85; served in the Army of the United States from 1963 until 1975, in the Infantry and the Judge Advocate General’s Corps; awarded the Bronze Star Medal, Meritorious Service Medal, Army Commendation Medal with Oak Leaf Cluster, Combat Infantryman Badge, Parachutist Badge, Ranger Tab, Ranger Combat Badge, Campaign and Service Ribbons; resigned from Regular Army and was commissioned in the United States Army Reserve, currently Lieutenant Colonel, retired; law clerk for Judge John D. Butzner, Jr., United States Court of Appeals for the Fourth Circuit, 1971-72; private practice with McGuire, Woods & Battle in Charlottesville, Virginia, 1975-77; adjunct professor, University of Virginia School of Law, 1975-77, 1992-94, George Washington University National Law Center, 1992-96; Special Assistant to the Chief Justice of the United States, Warren E. Burger, 1977-80; private practice with Baker & McKenzie in Washington, D.C., 1980-81; Deputy and Acting Special Counsel (by designation of the President), United States Merit Systems Protection Board, 1981-82; appointed by President Reagan to the United States Claims Court, 1982; appointed by President Reagan to the United States Court ofAppeals for the Federal Circuit, June 15,1987; assumed duties ofthe office, June 19,1987; assumed position of Chief Judge on December 25,1997; Judicial Conference of the United States Committee on the International Appellate Judges Conference, 1988-1991; Committee on Judicial Resources, 1990-1997; Member of the Judicial Conference of the United States, 1997-present; married Mary Anne McCurdy, August 13,1966; they have two daughters, Anne Christian and Rebecca Paige.

75 Peter C. McCabe III Mr. McCabe is a partner at Winston & Strawn, LLP where he has spent his entire legal career. For the last 10 years, Mr. McCabe has specialized in litigating patent cases. Mr. McCabe has tried several major patent cases to juries including Nobelpharma v. Implant Innovations Inc. and Syndia Corp. v. The Gillette Company. In Nobelpharma, Mr. McCabe's client obtained a $10 million jury verdict on a Walker Process antitrust counterclaim. The district court’s decision upholding the jury’s verdict was affirmed by the Federal Circuit. In Syndia, Mr. McCabe’s client obtained a $ 10 million jury verdict on patent infringement claims made against Gillette’s Mach 3 Razorblades. The case settled while post-trial motions were pending.

Mr. McCabe recently authored, “Conflicts in Federal Circuit Patent Law Decisions: The Written Description Requirement of § 112, First Paragraph,” which appeared in The Federal Circuit Bar Journal at Volume 11, no. 3 at p. 725.

Mr. McCabe is a 1985 graduate of the Indiana University School of Law and a 1982 graduate of Harvard College.

Barbara McCurdy Barbara McCurdy, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s Mechanical Practice Group, has over 17 years of experience creating, enforcing and defending IP assets, particularly in the area of medical devices and methods. She has broad experience in patent prosecution and counseling, patent interferences, district court patent litigation, and appeals before the U.S. Court of Appeals for the Federal Circuit.

Focused on providing full service to clients—from start-ups to established companies — she provides a full range of patent counseling including patent preparation, patent portfolio management, validity and infringement opinions, evaluations of new designs and litigation strategy. Ms. McCurdy enjoys developing strategies that meet the business goals of the client, including advising clients on how to build patent portfolios in significant new technology areas through preparing and prosecuting patents, developing IP positions that take into account competitors’ IP, advising on acquisitions or licensing of technology, and developing offensive and defensive litigation strategies.

Ms. McCurdy has extensive litigation experience, having guided many clients through complicated patent interferences, district court litigation, and Federal Circuit appeals. For example, in 2000, leading a team of Finnegan Henderson lawyers, she obtained the reversal of a jury verdict of patent infringement against a small medical device company by convincing the district court judge to overturn the jury’s verdict against the client. A successful appeal at the Federal Circuit followed. As a result, the client was free from a patent infringement ruling that could have severely affected the small device company. In 2001 and again in 2003, she obtained additional judgments of noninfringement for the client in cases involving the same opponent and related patents. These litigation successes have allowed the small device company to thrive unencumbered by the negative effects of damages payments and possible injunction.

Among the medical technologies she has been involved in are a variety of cardiovascular procedures and devices, various endoscopic and urologic devices and procedures, catheters, implants, inhalation devices, blood testing devices, periodontal materials, and transdermal systems for delivery of pharmaceuticals.

As an Adjunct Professor of Law at the Washington College of Law of the American University from 1993 to 1996, Ms. McCurdy taught over 200 law students the fundamentals of patent law. She is currently an instructor of the patent interference course offered by Patent Resources Group, where she teaches the subspecialty of patent interference practice to other patent lawyers. She has coauthored a number of publications on interference practice and has lectured throughout the United States and Europe on the changes to U.S. patent law occasioned by the NAFTA and GATT agreements. 16 SATURDAY, JUNE 26,2004 Location: Rocky Mountain Ballroom A/B 4:05 - 5:05 Federal Circuit Decision Making ------Moderator: Denis R. Salmon, Gibson, Dunn & Crutcher LLP

Panelists: Circuit Judge Alan D. Lourie, U.S. Court of Appeals for the Federal Circuit

Senior Circuit Judge S. Jay Plager, U.S. Court of Appeals for the Federal Circuit

Professor Mark Lemley, Stanford Law School

Matthew D. Powers, Weil, Gotshal & Manges LLP

Coordinators: Monique Drake and David A. Segal, Gibson, Dunn & Crutcher LLP

I. INTRODUCTION

II. DECISION MAKING PROCESS

A. PANEL DYNAMICS 1. BEFORE ARGUMENT a. Briefs of the Parties b. Amicus Briefs c. Motions 2. DURING ARGUMENT 3. AFTER ARGUMENT

B. OPINIONS 1. Forming a Majority 2. Concurrences and Dissents 3. Precedent and Publication 4. Dicta 5. Remand Considerations

C. REVIEW OF DECISION 1. Petition for Panel Rehearing 2. En Banc Consideration

III. TRENDS AND DIRECTIONS IN DECISION MAKING

A. RULES vs. STANDARDS 1. Rule “Formalism” 2. Certainty: Enhanced or Reduced by Recent Trends in Decision Making? 3. Conflicting Panel Decisions 4. En Banc Determinations and Rulemaking 5. Judicial Discretion and Reversal Rate

B. NUMBER OF PRECEDENTIAL OPINIONS

C. SCOPE OF FEDERAL CIRCUIT JURISDICTION

D. REMAND vs. FINAL DETERMINATION ON APPEAL 41 SATURDAY, JUNE 26, 2004 Location: Rocky Mountain Ballroom A/B 3:00 - 4:00 Best Practices from Differing Perspectives of Practitioner, Trial Court, and Appellate Court ------Moderator: ______Helen S. Irza, Morrison & Foerster LLP

Panelists: ______Circuit Judge Paul R. Michel, U.S. Court of Appeals for the Federal Circuit ------

Neil A.G McPhie, Chairman, U.S. Merit Systems Protection Board

Judge James F. Holderman, U.S. District Court for the Northern District of Illinois

Judge Loren A. Smith, U.S. Court of Federal Claims

Beth S. Brinkmann, Morrison & Foerster

Peter C. McCabe III, Winston & Strawn LLP

This panel presentation will consist of an exchange of opinions about various aspects of appellate court practice. The discussion will focus on practical, logistical, and strategic considerations as opposed to oral argument and brief writing, which are being addressed in other sessions.

The topics to be addressed will ultimately depend on the opinions expressed by the panelists. Topics to be raised and potentially considered are as follows:

• Taking an Interlocutory Appeal

• Appealing From Injunctive Orders

• Post-Judgment Motions

• Trial Court Findings

• The Record on Appeal

• Demonstrative Exhibits

• Amicus Briefs

• Motion Practice in the Federal Circuit

• Remand and Remand Instructions

40 Chairman Neil A.G. McPhie Neil Anthony Gordon McPhie has served as Acting Chairman of the Merit Systems Protection Board since December 10, 2003 when he was designated by President Bush to be Vice Chairman. (Under the Board’s governing statute, the Vice Chairman serves as Acting Chairman when the position of Chairman is vacant.). He became a member of the Merit Systems Protection Board on April 23,2003, following his nomination and appointment submitted by President Bush to the United States Senate on January 9, 2003 to serve the remainder of a 7-year term that expires on March 1,2009.

Together with the other appointees to the three-member bipartisan Board, Mr. McPhie renders published precedential opinions in personnel cases affecting a Federal workforce of almost three million members. The Board has jurisdiction over appeals of adverse personnel actions involving misconduct or poor performance, whistle blower and discrimination claims raised in appeals, retirement matters, and complaints of Hatch Act violations.

At the time of his nomination, Mr. McPhie served as Senior Assistant Attorney General in the Office of the Attorney General of Virginia where he served in a number of senior management positions and provided supervision to teams of attorneys and support personnel. Mr. McPhie served as Chief of the Finance and Government Section having served earlier as the Chief of the Employment Law Section. From 1982 to 1988, Mr. McPhie was an Assistant Attorney General with the same Office defending state agencies and officials injury and non-jury trials in both state and Federal courts. From 1998 to 2002, Mr. McPhie was Executive Director of the Virginia Department of Employment Dispute Resolution (EDR), overseeing the internal management of the agency, including strategic planning, staffing, and budgeting. In that position, he directed implementation of EDR’s statewide grievance, mediation, training and consultation programs. Mr. McPhie was an Assistant Attorney General in the Office of the Attorney General of Virginia from 1982 to 1998, defending state agencies and officials injury and non-jury trials in both state and Federal courts. From 1976 until he joined the Attorney General’s Office, he was a Trial and Appellate Attorney in the Office of the General Counsel at the U.S. Equal Employment Opportunity Commission. Mr. McPhie received his J.D. from Georgetown University Law Center in 1976.

He received a B.A. in Economics from Howard University in 1973, graduating magna cum laude. He is a member of Phi Beta Kappa. He is admitted to the bars of the District of Columbia, Virginia, New York and Iowa, the United States Supreme Court, the United States District Court for the District of Columbia, several of the United States circuit courts of appeals, and district courts in Virginia.

Mark A. Melnick Mark A. Melnick is an Assistant Director of the Commercial Litigation Branch, Civil Division, Department of Justice. He both represents the government, and supervises attorneys representing the government, in a variety of commercial litigation in the United States Court of Federal Claims, United States Court of Appeals for the Federal Circuit, and other federal courts. The types of litigation he participates in include government contracts, takings, and various other claims for monetary compensation arising from government programs or activities. He has been with the Department of Justice since 1988. He received his J.D. from the University of Virginia School of Law, and a B.S. in Economics from the Pennsylvania State University.

17 Circuit Judge Paul R. Michel Circuit judge; bom February 3,1941, in Philadelphia, PA; son of Lincoln M. Michel and Dor- othy Kelley; educated in public schools in Wayne and Radnor, PA; B.A., Williams College, 1963, J.D., University of Virginia Law School, 1966; married Sally Ann Clark, 1965 (divorced, 1987); children, Sarah Elizabeth and Margaret Kelley; married Dr. Elizabeth Morgan, 1989; Second Lieutenant, U.S. Army Reserve (1966-72); admitted to practice: Pennsylvania (1967), U.S. district court (1968), U.S. circuit court (1969), and U.S. Supreme Court (1969); assistant district attorney, Philadelphia, PA (1967-71); Deputy District Attorney for Investigations (1972- 74); Assistant Watergate Special Prosecutor (1974-75); assistant counsel, Senate Intelligence Committee (1975-76); deputy chief, Public Integrity Section, Criminal Division, U.S. Depart- ment of Justice (1976-78); “Koreagate” prosecutor (1976-78); Associate Deputy Attorney General (1978-81); Act- ing Deputy Attorney General (Dec. 1979-Feb. 1980); counsel and administrative assistant to Senator Arlen Specter (1981-88); nominated December 19,1987 by President Ronald Reagan to be circuit judge, U.S. Court of Appeals for the Federal Circuit, confirmed by Senate on February 29,1988, and assumed duties of the office on March 8,1988.

Judge George W. Miller Judge Miller was sworn in as a Judge of the United States Court of Federal Claims on January 7,2004. He was previously a trial attorney with the law firm of Hogan & Hartson with which he had been associated for 33 years, the last 26 as a partner. In addition to handling a broad range of civil litigation and commercial arbitration matters, he developed an active practice representing both property owners and governmental entities in “takings” cases. His clients included Whitney Benefits, Inc. and Peter Kiewit Sons’ Co., for whom he secured a $200 million settlement in 1995.

In 1994, then Chief Judge Loren A. Smith appointed Judge Miller to the Court of Federal Claims Advisory Council, which consists of Court of Federal Claims bar members whose practices are representative of the court’s docket. The Council advises the court on matters pertaining to court administration and the court’s relationship with the bar and the public. Judge Miller was re-appointed to the Advisory Council in 1999 by then Chief Judge Lawrence M. Baskir and was a member of the Advisory Council at the time of his appointment to the Court of Federal Claims. He also served on a court-appointed Litigation Practice Task Force, which was established following the 1995 Judicial Conference of the Court of Federal Claims to consider ways to expedite proceedings and improve the litigation process in the court. Judge Miller was also a member of the U.S. Court of Federal Claims Bar Association’s Board of Governors and served on the Board at the time of his appointment.

In July 1991, Judge Miller completed a two-year term as Chairman of the D.C. Court of Appeals’ Board on Professional Responsibility, the court-appointed body that administers the lawyer disciplinary system in the District of Columbia. Judge Miller was appointed by the Court of Appeals to the nine-member Board on Professional Responsibility in 1985 and served as its Vice-Chairman from February 1988toJuly 1989. He also served as co-chair of Hogan&Hartson’s Legal Ethics Committee.

Chief Judge Douglas H. Ginsburg appointed Judge Miller in 2002 to serve as a member of the U. S. Court of Appeals for the District of Columbia Circuit’s Advisory Committee on Admissions and Grievances. Judge Miller served in that capacity until his appointment to the bench.

Judge Miller was born and raised in Schenectady, N. Y. He received his A.B. degree from Princeton, magna cum laude, in 1963, his law degree from Harvard Law School in 1966, and a Master of Laws in taxation from George Washington University Law School in 1968. Before joining Hogan & Hartson in 1970, he was a law clerk to the late Judge Bruce M. Forrester of the United States Tax Court and served on active duty for three years with the U.S. Navy Judge Advocate General’s Corps. 18 SATURDAY, JUNE 26,2004 Location: Rocky Mountain Ballroom A/B 1:50-2:50 Crafting Your Oral Argument for the Federal Circuit Moderator: ------Judge Bobbe Mintz, ______U.S. Merit Systems Protection Board Panelists: Circuit Judge William C. Bryson, U.S. Court of Appeals for the Federal Circuit ------

Joyce M. Friedman, Senior Counsel, Office of General Counsel, U.S. Merit Systems Protection Board

William Lazarus, Assistant Chief, Appellate Section, Environment & Natural Resource Division

Barbara Clarke McCurdy, Finnegan, Henderson, Farabow, Garrett and Dünner, LLP

Arthur Patterson, Ph.D., Senior Vice President, DecisionQuest

• The value of an oral argument.

• What makes for a strong and persuasive presentation.

• Principles of nonverbal communication as they relate to oral argument.

• Research detailing what judges find useful to help them understand oral arguments.

• Presenting oral arguments dealing with complex technical issues in a comprehensible way.

• Coping with the performance anxiety.

• Presenting oral arguments dealing with inverse condemnation cases.

• Presenting oral arguments in cases involving Indian tribes seeking damages for breaches of trust.

39 SATURDAY, JUNE 26,2004 Location: Rocky Mountain Ballroom A/B 12:30-12:45 Opening Remarks President Stephen L. Peterson, ------Finnegan Henderson Farabow Garrett and Dünner LLP ______

State of the Court Chief Judge Haldane Robert Mayer, U.S. Court of Appeals for the Federal Circuit

12:45-1:45 Writing the Effective Appellate Brief Moderator: Circuit Judge Sharon Prost, U.S. Court of Appeals for the Federal Circuit Panelists: Chief Judge Emeritus Edward D. Re, U.S. Court of International Trade “Characteristics of Good Appellate Briefs”

C. Edward Good, Finnegan, Henderson Farabow Garrett & Dunner LLP “How to Write Effectively”

Joseph R. Re, Knobbe, Martens, Olson & Bear LLP “How Good Drafts Become Bad Briefs”

Coordinator: Stephen L. Peterson, Finnegan Henderson Farabow Garrett and Dunner LLP

This panel presentation will consist of three presentations, and an exchange of views, from various perspectives, concerning the most important component of an effective appeal - the brief.

The discussion will be chaired by Circuit Judge Sharon Prost of the Court of Appeals of the Federal Circuit. Ed Good, the “writer in residence” at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, will discuss some important language concepts that affect the power and clarity of the written brief. Chief Judge Emeritus of the Court of International Trade, Edward Re, will discuss important aspects of how judges react to and are persuaded by effective briefs and how they are dissuaded by ineffective briefs. Judge Re’s son Joseph Re, of Knobbe, Martins, Olson and Bear LLP will discuss the problems of writing the effective appellate brief.

38 Judge Barbara Mintz Barbara S. Mintz has been an Administrative Judge with the Merit Systems Protection Board since April 2001. She received a Bachelor’s Degree in business administration, with a major in accounting, from Temple University in 1969. After working in the accounting field. Judge Mintz attended The George Washington University School of Law where she received her J.D., with honors, in 1983. She began her legal practice in the employment and labor law field when she was with the Office of Chief Counsel, Internal Revenue Service, from 1983 until 1994. She then headed the Employment and Labor Law Team at the U.S. Patent and Trademark Office for the Department of Commerce from 1994 until 1997 beforejoining the Merit Systems Protection Board in 1997 as a senior attorney in its Office of General Counsel.

Judge Mintz’s experience and practice has been primarily focused on employment, labor and EEO litigation at the administrative level and in the district and appellate courts. She has been involved in all phases of litigation, from pre-litigation counseling through pre-trial preparation and trial, as well as on Federal Circuit appeals. Currently, she hears and decides appeals from Federal employees, applicants for Federal employment, and Federal annuitants concerning any matter over which the Merit Systems Protection Board has appellate jurisdiction. Federal Circuit Judge Pauline Newman Pauline Newman, judge, United States Court of Appeals for the Federal Circuit. Received B.A. from Vassar College, M. A. in Pure Science from Columbia University, Ph.D. in Chemistry from Yale University, and LL.B. from New York University School of Law. Before appointment as circuit judge in 1984, was Director of Patents and Licensing atFMC Corporation in Philadelphia. Worked as Science Policy Specialist at UNESCO, Paris, and as research chemist at American Cyanamid Company. Served as adviser to various governmental programs, and officer and director of several bar and scientific associations. Awarded the Wilbur Cross Medal of Yale University, the Vanderbilt Medal of New York University School of Law, the Jefferson Medal of the New Jersey Patent Law Association, and the Award for Outstanding Contributions to International Cooperation of the Pacific Industrial Property Association. Distinguished Professor of Law at George Mason University School of Law. Author of articles in the fields of innovation and science and the law. Deanna Tanner Okun Deanna Tanner Okun, a Republican of Idaho, is the Chairman of the United States International Trade Commission. Chairman Okun was nominated to the ETC by President Clinton on November 10, 1999, and confirmed by the U.S. Senate on November 19, 1999. She was sworn in as a member of the Commission on January 3,2000, for a term expiring on June 16,2008. She served as Vice Chairman of the ITC from June 17, 2000, to June 16, 2002. President George W. Bush designated her Chairman for the term June 17,2002, through June 16,2004.

Prior to her appointment, Chairman Okun served as counsel for international affairs to Senator Frank Murkowski (R-AK) from 1993-1999, where she was responsible for the international trade issues with which the Senator was involved as a member of the Senate Finance Committee. She also handled international energy and foreign relations issues for the Senator in his position as Chairman of the Senate Energy and Natural Resources Committee.

Earlier, Chairman Okun served as a legislative assistant to Senator Murkowski, where she was responsible for his Foreign Relations Committee work, with an emphasis on East Asian affairs. Prior to her work with the Senator, Ms. Okun was an associate attorney and member of the International Trade Group at the Washington, DC, law firm of Hogan & Hartson. Earlier in her career, Ms. Okun was a research associate specializing in trade at the Competitive Enterprise Institute in Washington. DC.

Chairman Okun holds a Bachelor ofArts degree in pol itical science with honors from Utah State University and received her J.D. with honors from the Duke University School of Law. She is originally from Paul, Idaho. Currently, Chairman Okun resides in McLean, Virginia, with her husband, Bob Okun, and two daughters, Rachel and Kelsi. 19 Judge Kathleen McDonald O’Malley Judge O’Malley was appointed to the United States District Court for the Northern District of Ohio by President William J. Clinton on October 12,1994.

Prior to her appointment to the bench, Judge O’Malley served as First Assistant Attorney General and Chief of Staff to Ohio Attorney General Lee Fisher from 1992-1994, where she was responsible, under the direction of the Attorney General, for the overall functioning and management of all divisions of the Attorney General’s Office. From 1991 - 1992, Judge O’Malley was Chief Counsel to the Attorney General, overseeing the legal work of the office’s 350 attorneys and acting as Counsel of Record in the state’s more sensitive and complex legal battles.

From 1985-1991, Judge O’Malley practiced law at Porter, Wright, Morris & Arthur, where she became a partner in the firm’s litigation department. Judge O’Malley’s practice involved complex corporate and commercial litigations, including intellectual property, securities fraud, trade secrets, shareholder’s rights and large-scale coverage disputes. From 1983-1985, she was an associate at Jones, Day, Reavis and Pogue, where she was primarily involved in patent litigation. Judge O’Malley began her legal career as a law clerk to the Honorable Nathaniel R. Jones, Sixth Circuit Court of Appeals.

Judge O’Malley attended Kenyon College in Gambier, Ohio where she graduated magna cum laude and phi beta kappa in 1979. Her majors were honors history and economics; she graduated in both with distinction. In 1995, Judge O’Malley received an honorary Doctor of Laws Degree from Kenyon, when she was honored as the first female alum to deliver the college’s commencement address. She received her J.D. degree from Case Western Reserve University School of Law, Order of the Coif, in 1982, where she served on Law Review, was Chair of the National Mock Trial Team and won several awards, including the International Trial Practice Award. In 1992, Judge O’Malley was named the law school’s Distinguished Recent Graduate.

Judge O’Malley is currently Case Western Reserve Law School’s Distinguished Visiting Jurist, where she teaches patent litigation and regularly serves as a guest lecturer in areas such as trial tactics, evidence and criminal procedure. She has also been a member of Case Western Reserve Law Schools’s Visiting Committee since 1996 and is an inaugural member of the University of Maryland School of Law’s Intellectual Property Program Advisory Board.

In her eight years on the bench, Judge O’Malley has presided over numerous high profile criminal prosecutions, including organized crime and public corruption trials, and has handled many complex civil matters, including Tn re: Inter-Op Hip Prosthesis Liability Litigation, a multi-district matter assigned to her by the Judicial Panel on Multi- district Litigation. Judge O’Malley was one of the first judges in the nation to have a full range of technology installed in her courtroom. Judge O’Malley is a frequent lecturer and panelist on topics involving patent litigation, use of technology in the courtroom, multi-district litigation, constitutional law, and litigation tactics and strategy.

20 FRIDAY, JUNE 25,2004 12:00 - 5:00 p.m. Registration and Check-In Rocky Mountain Ballroom Lobby

SATURDAY, JUNE 26,2004

9:00 - 5:00 p.m. Registration and Check-In Rocky Mountain Foyer

11:30 a.m. -12:30 p.m. Historical Society Luncheon West Ballroom

“A Brief History of the United States Court of Customs and Patent Appeals” John F. Witherspoon, Law Office of John Witherspoon Professor and Director Emeritus, Intellectual Property Program George Mason University School of Law

Chief Judge Marilyn Hall Patel

Judge Marilyn Hall Patel is currently the Chief Judge of the Northern District of California. She is the first woman to hold this position in the Northern District. Judge Patel is no stranger to being the first woman in a number of areas. Not only was she the first woman ever appointed to the Federal bench of the Northern District of California, she remained the sole woman for eight years. Now the Northern District Bench has ten women judges. Some of this is surely attributable to her pioneering efforts.

In her role as Chief, Judge Patel continues to carry a substantial caseload while juggling the administrative responsibilities of the District. Renowned as a judge of great independence, Judge Patel has proven this time and again, taking the U.S. government to task in the case of a Japanese-American who had been interned during World War II and also taking the unprecedented step of finding the gas chamber to be cruel and unusual punishment, in violation of the United States Constitution. Judge Patel has also found that federal export regulations restraining the transmission of computer encryption programs are unlawful restrictions on the First Amendment. While she has never shied away from controversy, Judge Patel understands the importance of building consensus. Negotiation skills are a necessity in attempting to lead a group of judges, all of whom enjoy lifetime tenure. The Northern District has the most widely recognized Alternative Dispute Resolution (ADR) program of any U.S. District Court in the nation.

In her handling of both controversial and mundane matters, Judge Patel maintains a reputation for professional excellence. She is one of the most sought after judges on the continuing legal education circuit, speaking on such diverse topics as securities, patent, biotechnology, tort, criminal and civil rights law, on federal, civil and criminal procedure, ethics and attorneys’ fees, to mention only a few. She is also one of the most frequently cited judges of the Federal District court bench.

The force of Judge Patel’s presence in the San Francisco Bay Area legal community and on the bench has been significant. She was the national Vice President for Legal Affairs for the National Organization for Women in the late sixties and early seventies. In that capacity and in her private practice she was at the forefront of enforcement of employment discrimination laws. She represented many women who were battling discrimination in academe, police departments, labor unions and other non-traditional occupations. She was a founder of Advocates for Women, which was an early alternate dispute resolution approach to problems of discrimination in the work force. She also handled many immigration cases and was one of the first persons to teach immigration law, serving as an adjunct professor at Hastings School of Law.

Judge Patel has been very active injudicial education programs on gender bias and equity, having been instrumental in introducing the first such program while she was on the state court bench. The program, which started under the aegis of the California Judicial Education and Research Project, was the first of its kind in the country. These programs are now a staple injudicial education in state and national curricula. Judge Patel also initiated the first such program in the federal system at a seminar in the Ninth Circuit. The issue is now part of the regular curriculum of federal courts through its Federal Judicial Center. The program led to the first gender bias study in the Federal Courts, where Judge Patel served on the Ninth Circuit Gender Bias Committee and pushed for the adoption of the Circuit’s current gender bias rules.

21 Arthur H. Patterson Dr. Arthur H. Patterson is a Senior Vice President of Bowne DecisionQuest, the country’s leading litigation support firm. Bowne DecisionQuest has consulted on thousands of civil and criminal cases in over 100 federal and state jurisdictions throughout the country. Dr. Patterson obtained his Ph.D. degree in social psychology from Northwestern University, and was previously a tenured associate professor of Administration of Justice at the Pennsylvania State University. He has received peer review research grants from federal, state, and private agencies to conduct a variety of social science research projects.

Dr. Patterson has published numerous articles in both legal and psychological journals. Among his recent publications is “Removing Juror Bias by Applying Psychology to Challenges for Cause,” which appeared in the Cornell Journal of Law and Public Policy. He has lectured frequently to organizations such as the American Bar Association, the Pennsylvania Bar Association, the Philadelphia Bar Association, the National Institute for Trial Advocacy (NITA), ALI-AB A, and the American Psychological Association.

Stephen L. Peterson Steve Peterson, a partner at Finnegan Henderson Farabow Garrett & Dunner ULP, is active in firm management and served previously as the Group Practice Leader for the Chemical/ Metallurgical Practice Group. Mr. Peterson has extensive experience in the preparation, prosecution, and litigation of utility and design patents. In addition to patent-based litigation, he has litigated a number of trade secret actions. In that regard, he represented the Australian syndicate that won the America’s Cup in 1983 in patent and trade secret matters, protecting the famous “winged keel.” Mr. Peterson has been lead counsel in litigation in state courts and United States district courts and the International Trade Commission. With a background in material science and metallurgical engineering, he has supervised and trained associates in patent practice relating to that area of technology.

Prior to joining the firm, Mr. Peterson worked for the Battelle Memorial Institute in Columbus, Ohio. He was a research metallurgist and conducted research in the areas of mechanical metallurgy, remote testing of nuclear structural materials, and fracture mechanics processes before joining its patent and legal department. In the Patent Department, he received his initial experience writing and prosecuting metallurgical patent applications in the area of rapid solidification techniques and powder metallurgy.

Mr. Peterson frequently lectures on a variety of intellectual property topics including practice before the International Trade Commission, enforcement of design patents, and the prosecution of materials and metallurgical-based patent applications. He has published articles on patent damages, patent prosecution, and, as an engineer, on the effect of nuclear radiation on structural and cladding materials. Mr. Peterson is currently the President of The Federal Circuit Bar Association.

22 P r o g r a m Lewis Wiener Lewis Wiener is a trial lawyer with Sutherland, Asbill & Brennan. He focuses his practice on complex commercial litigation, internal investigations/ corporate compliance matters, construction law and eminent domain/inverse condemnation litigation before state and federal trial and appellate courts. Prior to joining Sutherland, Mr. Wiener served as a trial lawyer with the United States Department of Justice where he was twice recognized by the Attorney General for special achievement in the handling of litigation matters on behalf of the United States. While at the Department of Justice, Mr. Wiener represented the United States in numerous lawsuits involving 5th Amendment takings (regulatory and physical inverse condemnation), Indian gaming, CERCLA (Superfund) environmental prosecutions and other environmental matters. Mr. Wiener was also lead Government counsel in one of the largest class actions ever filed against the United States.

Mr. Wiener lectures regularly on 5th Amendment takings law, litigation strategy, and trial practice issues. He is a past President of the Court of Federal Claims Bar Association and currently serves as the Association’s Treasurer. Mr. Wiener is also a judicially-appointed member of the Court of Federal Claims Advisory Council. Mr. Wiener was the 2002 recipient of the State University of New York at Albany distinguished alumni award and is the co-chair of the SUNY Albany/Rockefeller College Advisory Board.

Kent Yalowitz Kent Yalowitz is a partner in Arnold & Porter LEP, resident in New York. He has a broad- based practice in state and federal courts around the nation, with a focus on commercial matters.

Mr. Yalowitz represents plaintiffs before the Court of Federal Claims and in the Court of Appeals for the Federal Circuit in Winstar-related and other matters. He has represented a wide variety of domestic and international clients, including Centex Corp., Credit Suisse First Boston, the State of Delaware, General Electric, Gilat Satalite Networks, the State of Israel, Eumenis Ltd., Montgomery Ward, Monsanto, Viacom, and a number of other Fortune 100 companies in matters involving business disputes on a variety of topics.

Mr. Yalowitz earned his undergraduate degree from Yale College and his law degree from Columbia Faw School. Before entering private practice, he served as a law clerk for Judge Edmund L. Palmieri of the United States District Court for the Southern District of New York.

34 Federal Circuit Judge S. Jay Plager Senior judge; bom 1931; educated public schools, Long Branch, NJ; A.B., University of North Carolina, 1952; J.D., University of Florida, with high honors, 1958; LL.M., Columbia University, 1961; Phi Beta Kappa, Phi Kappa Phi, Order of the Coif, Holloway fellow, University of North Carolina; Editor- in-Chief, University of Florida Law Review; Charles Evans Hughes Fellow, Columbia University; three children; commissioned, Ensign U.S. Navy, 1952; active duty Korean conflict; honorable discharge as Commander, USNR, 1971; professor, Faculty of Law, University of Florida, 1958-64; University of Illinois, 1964-77; Indiana University School of Law, Bloomington, 1977-89; visiting research professor of law, University of Wisconsin, 1967-68; visiting fellow, Trinity College and visiting professor, Cambridge University, 1980; visiting scholar, Stanford University Law School, 1984-85; dean and professor, Indiana University School of Law, Bloomington, 1977-84; counselor to the Under Secretary, U.S. Department of Health and Human Services, 1986-87; Associate Director, Office of Management and Budget, Executive Office of the President of the United States, 1987-88; Administrator, Office of Information and Regulatory Affairs, Office of Management and Budget, Executive Office of the President of the United States, 1988-89; circuit judge, U.S. Court of Appeals for the Federal Circuit, appointed by President George Bush, November 1989; retired from active service November 30,2000, and assumed status of senior judge; author of numerous articles and books.

Joseph M. Potenza Joseph M. Potenza is a member of Banner & Witcoff, Ltd. He concentrates in litigation, Section 337 investigations at the United States International Trade Commission, licensing, counseling on patent and copyright matters, and the preparation and prosecution of patent and copyright applications. He has been an adjunct professor of law at Georgetown University Law Center since 1985 and has served as a member and office of numerous bar associations and committees.

Mr. Potenza has edited a variety of American B ar Association monographs. He has served in the ABA House of Delegates and as Co-Chair of the ABA Patent Trail Advocacy Institute, Program Chair of the NITA and director of the AB A Young Lawyers Division. He is past Chair of the ABA Section of Science and Technology, Secretary of the ABA Section of Intellectual Property Law, past President of the Patent Lawyers Club of Washington, and is a founding member, Past President, and Master of the Giles S. Rich American Inn of Court, and a member of the Brookings Institution Task Force on Intangibles, which published the book “Unseen Wealth. ”

Mr. Potenza has also authored and lectured extensively in the area of patent and copyright law; the Internet, e- commerce, and business-method patents; and recently was a contributing author in the Patent Litigation Strategies Handbook, BNA 2000. Mr. Potenza is listed in Euromoney’s 2003 “Guide to the World’s Leading Patent Law Experts. ” He is also listed in The Best Lawyers in America 2003-2004 for his work in Intellectual Property.

23 Matthew D. Powers Matthew D. Powers is a trial lawyer with Weil, Gotshal & Manges’ Silicon Valley Office, specializing in patent and trade secret litigation and counseling. He has litigated and tried cases in jurisdictions nationwide involving a wide range of technologies, including semiconductor, biomedical, computer, computer peripherals, cellular, holographic, digital media and specialty chemical products. He has published several articles on various aspects of intellectual property law and litigation, and is a frequent lecturer nationally and internationally on intellectual property litigation issues. Mr. Powers received his J.D. from Harvard Law School and a B.S. from Northwestern University.

In January 2003, Mr. powers was recognized by the American lawyer as one of the top 45 lawyers in the country under forty-five in all fields, he was also listed as one of the seven top young ip trial attorneys in the country in the October 2002 issue of IP worldwide. Mr. Powers was recognized in the January 2001 issue of the London-based publication The Lawyer as one of the “top 10” attorneys in Silicon Valley (he was the only intellectual property specialist or litigator so recognized), and also as one of the “top 100” attorneys in the world (he was one of only two U.S. attorneys so recognized). In the 2002 Chambers Global Guide, Mr. Powers was named as one of only 5 attorneys in all fields in the U.S. as having a “star” rating, and one of only 50 in the world with such a rating. In the 2001 edition, Mr. Powers was one of only 8 attorneys in all fields in the United States with a “star” rating. Mr. Powers was also named the “go to” patent litigator in northern California by The Recorder, an American Lawyer publication, on November 10,2003.

Federal Circuit Judge Sharon Prost Circuit Judge, appointed by President Bush, 2001; B.S., Cornell University, 1973; M.B.A., George Washington University, 1975; J.D., Washington College of Law, American University, 1979; LL.M., George Washington University School of Law, 1984; Labor Relations Specialist, United States Civil Service Commission, 1973-76; Labor Relations Specialist/Auditor, United States General Accounting Office, 1976-80; Field Attorney, Federal Labor Relations Authority, 1980-83; Attorney, Internal Revenue Office, 1983-84; Assistant Solicitor, Associate Solicitor, Acting Solicitor, National Labor Relations Board, 1984-89; Chief Labor Counsel (Minority), Senate Committee on Labor and Human Resources, 1989-93; Minority Chief Counsel, Deputy Chief Counsel, Chief Counsel, Committee on the Judiciary, United States Senate, 1993-2001. Bom in Newburyport, MA, children Matthew and Jeffrey.

Federal Circuit Judge Randall R. Rader Judge Rader is a Circuit Judge on the United States Court of Appeals for the Federal Circuit. He was bom on April 21,1949, in Hastings, Nebraska. He obtained a B. A. in English from Brigham Young University in 1974 and a J.D. from George Washington University in 1978. President Ronald Reagan appointed him to the United States Claims Court in 1988. President George Bush nominated Judge Rader to the Court of Appeals for the Federal Circuit in 1990.

While on the appellate bench, Judge Rader has also served actively as an educator. From 1993- 1999, he taught Patent Law I and Patent Law 11 at the University of Virginia School of Law, Charlottesville, Virginia; from 1998-99 Comparative Patent Law at Georgetown University Law Center, Washington, D.C.; and from 1993-97 Trial Advocacy at the George Washington University Law School, Washington, D.C. Currently Judge Rader teaches several general and specialized intellectual property law courses at George Washington University. In addition, he serves on advisory boards affiliated with three law schools. Judge Rader is co-author of a casebook, Patent Law, West Publishing, 1998 - a text used at over 45 law schools. Judge Rader has led or participated in twenty-six delegations to foreign nations, usually to teach rule of law or intellectual property concepts in developing nations. Before his appointment to the bench, Judge Rader served members of the House of Representatives (1975-1980) and as counsel to the Senate Judiciary Committee (1980-88). While counsel to the Judiciary Committee, he was Chief Counsel or Minority Chief Counsel for the Subcommittee on the Constitution and the Subcommittee on Patents, Trademarks, and Copyrights. 24 Kristine S. Tardiff Kris Tardiff has been a trial attorney in the General Litigation Section of the Environment & Natural Resources Division at the United States Department of Justice since 1995. In this position, Ms. Tardiff represents the United States in Fifth Amendment takings litigation and public land law matters. Ms. Tardiff received her J.D. from Northeastern University School of Law in Boston. Massachusetts. Prior to joining the Department of Justice under the Attorney General’s Honors Program, Ms. Tardiff served for two years as law clerk to the late Honorable Shane Devine, Senior Judge for the United States District Court for the District of New Hampshire. Ms. Tardiff served on the Board of Directors for the Federal Circuit Bar Association from 2000 to 2003, and served as the Co-Chair of the Association’s Environment and Natural Resources Committee from 1998 to 2000.

John M. Whealan

John Whealan is the Deputy General Counsel for Intellectual Property Law and Solicitor for the United States Patent and Trademark Office. Mr. Whealan has held this position since January 2001.

As the Solicitor, Mr. Whealan manages an office of twenty five people who represent the PTO in all federal court IP litigation and provide legal and policy advice to the rest of the PTO on IP matters. Mr. Whealan has worked in the Solicitor’s Office since 1996, previously holding the positions of Acting Deputy Solicitor and Associate Solicitor.

Mr. Whealan has personally argued and briefed numerous cases before the U.S. Court of Appeals for the Federal Circuit. His staff is typically involved in over fifty such appeals in any given year. In addition, Mr. Whealan and his staff have recently increased their dealings with the Justice Department in filing amicus briefs at the Supreme Court as well as other regional Circuit Courts. For example, just over the last year, Mr. Whealan’s office worked with the Justice Department on three cases involving intellectual property argued at the Supreme Court: Festo, Eldred, and Victoria Secret.

Mr. Whealan is an adjunct professor and has taught at various law schools including Franklin Pierce, George Mason, and Chicago-Kent.

Prior to joining the PTO, Mr. Whealan worked as a Staff Attorney for the U.S. International Trade Commission. At the ITC, Mr. Whealan litigated several Section 337 investigations involving intellectual property matters.

Mr. Whealan has clerked both at the appellate and trial court levels, serving as law clerk to Judge Randall R. Rader of the Federal Circuit, and Judge James T. Turner of the U.S. Court of Federal Claims. Prior to working for the government, Mr. Whealan worked in private practice for Fish & Neave in New York.

Mr. Whealan received his JD from Harvard Law School, and holds both graduate and undergraduate degrees in Electrical Engineering. Mr. Whealan worked as a design engineer for General Electric prior to attending law school.

33 Jerry Stouck Mr. Stouck of Spriggs & Hollingsworth has a wide-ranging corporate and commercial litigation practice. He has particular expertise in pursuing monetary relief claims against the federal government on contract-based and Fifth Amendment takings theories. Mr. Stouck litigates such claims frequently in the U.S. Court of Federal Claims and before the U.S. Court of Appeals for the Federal Circuit.

Mr. Stouck represented Glendale Federal Bank, one of the three “test case” plaintiffs in the landmark Winstar litigation, from the inception of the Winstar case in 1990 through the completion of Glendale’s billion dollar-plus damages trial. He also has represented ten other Winstar-related plaintiffs in the Court of Federal Claims and is a member of the Winstar Plaintiffs’ Coordinating Committee. Mr. Stouck represents nuclear utility companies asserting contract-based and Fifth Amendment taking claims seeking compensation for the government’s failure to pick-up and dispose of spent nuclear fuel. He represented a different group of utilities in one of the leading cases asserting a constitutional challenge to retroactive monetary assessments imposed by Congress. Mr. Stouck also has successfully litigated regulatory taking cases arising from the denial of federal wetlands permits and from other federal regulatory action.

Mr. Stouck regularly participates in and speaks at the annual judicial conferences of both the Court of Federal Claims and the Federal Circuit, is a member of the Court of Federal Claims Advisory Council, and is Chair of the Government Contracts and Construction Law Committee of the Federal Circuit Bar Association. He has prepared amicus briefs for a variety of clients in important federal contract and Fifth Amendment taking cases in the Court of Federal Claims, the Federal Circuit and the Supreme Court. Mr. Stouck also frequently serves as special counsel in such cases.

Mr. Stouck graduated from Wesleyan University with his B .A., magna cum laude in 1977, and from New York University School of Law with his J.D. in 1980. Following law school, Mr. Stock clerked for then-Chief Judge Raymond J. Pettine, in the District of Rhode Island. Kevin Sullivan Kevin Sullivan, leader of King & Spalding’s Litigation and Antitrust team, is a partner who divides his time between King & Spalding’s Washington, D.C. and London offices. His practice includes a wide variety of criminal and civil litigation. Because of the clients he represents and his experience at the U.S. Justice Department Antitrust Division, he has developed extensive experience in antitrust, white collar defense work, and civil litigation. In addition, because he was Lead Counsel in charge of the AT&T consent decree from 1984 -1986, Mr. Sullivan has a subject matter background in antitrust issues relating to telecommunications.

Presently, Mr. Sullivan represents a variety of clients involved in federal antitrust criminal investigations and civil cases. Mr. Sullivan defends and prosecutes antitrust civil cases from initiation through trial and appeal. He also provides counseling services to clients on antitrust and telecommunications issues. In addition, Mr. Sullivan has extensive experience in international antitrust matters and has coordinated merger approvals and responses to foreign government antitrust investigations in Europe, before the European Commission and its Member States, Canada, Japan, and South Korea.

Prior to entering private practice in 1986, Mr. Sullivan served as trial attorney and then Assistant Section Chief at the Department of Justice. Mr. Sullivan was lead counsel on more than a dozen grand juries and civil antitrust investigations. Mr. Sullivan speaks and writes widely on antitrust and telecommunications issues. He is the editor-in-chief of the ABA Handbook on Antitrust Grand Jury Investigations, a member of the AB A Antitrust Section International Task Force, and former co-chair of the AB A Antitrust Section Criminal Practice and Procedure Committee. Mr. Sullivan is currently Annual Meeting Program Chair of the AB A Antitrust Section.

After receiving his bachelor’s degree in 1971 from Gannon University, Mr. Sullivan earned his law degree from Catholic University in 1975. He is a member of The District of Columbia Bar, the Pennsylvania Bar, several Federal Appellate and District Bars, and the bar of the United States Supreme Court. 32 Chief Judge Edward D. Re Chief Judge Edward D. Re served as the first Chief Judge of the United States Court of International Trade. He retired after twenty-three years of judicial service and was named Chief Judge Emeritus of the Court. Upon retirement he returned to St. John’s University School of Law as Distinguished Professor of Law.

From 1958 to 1969 Judge Re served as a member of the Board of Higher Education of the City of New York. In 1961 Judge Re was appointed by President John F. Kennedy Chairman of the Foreign Claims Settlement Commission of the United States, an independent quasi-judicial agency. He chaired a three member Commission whose responsibility included the adjudication of countless claims by Americans for losses sustained by foreign confiscations, nationalizations and war damages. The decisions of the Commission are final and not subject to appeal. President Lyndon B. Johnson appointed Judge Re to serve as Assistant Secretary of State for Educational and Cultural Affairs with jurisdiction over the Fulbright program.

In 1968 he was appointed a Judge of the United States Customs Court by President Johnson, and in 1977 was named Chief Judge by President Jimmy Carter. Chief Justice Warren Burger presided at the Investiture Ceremony which is reported in 439 Federal Supplement. In 1980 he became the first Chief Judge of the United States Court of International Trade. As Chief Judge he served as a statutory member of the Judicial Conference of the United States, and in 1990 was appointed by Chief Justice Rehnquist to its Executive Committee. In 1990 he was appointed to the Conference Committee on Long Range Planning. Pursuant to fifty-two separate designations by Chief Justice Burger and Chief Justice Rehnquist, Judge Re served on eight United States Circuit Courts of Appeals and four United States District Courts throughout the United States.

A summa cum laude graduate of St. John’s Law School, after military service in World War II, in 1947, Judge Re was appointed to the faculty of St. John’s Law School. In 1950 he received his Doctor of Juridical Science degree from New York University School of Law. In 1997 he was awarded the Matheson Medal for fifty years of service on the St. John’s law school faculty. The author of a dozen legal texts and casebooks, the recipient of over twenty honorary degrees, Judge Re is a Colonel in the Judge Advocate General’s Department of the U.S. Air Force Reserve (Retired).

The recipient of many honors and awards, Judge Re in 1956 received the Distinguished Service Award of the U.S. Junior Chamber of Commerce, in 1987 the St. Thomas More Award from the University of San Francisco and from St. John’s University on January 24,2003; in 1986 the Liberty Medal of the City of New York; in 1986 the Grand Cross of the “Order of Merit” of the Republic of Italy and on May 12,2001 Judge Re was awarded the Ellis Island Medal of Honor. By appointment of the Holy See, Judge Re has served as Consultant to the Delegation of the Holy See at the United Nations at the 1961 United Nations Conference on Narcotic Drugs and in 1992 as Consultant at the United Nations Conference on International Trade Law.

Judge Re is married to Margaret A. Corcoran, a graduate of Manhattanville College, St. John’s University School of Law, and a member of the New York and U.S. Supreme Court Bar. Judge and Mrs. Re are the parents of twelve children.

25 Joseph R. Re Mr. Joseph R. Re is a partner at Knobbe, Martens, Olson & Bear in Irvine, California, where he manages an intellectual property litigation practice.

Mr. Re was bom in New York City and graduated from the College of Engineering at Rutgers University and from St. John’s University School of Eaw, where he was the Note and Comments Editor of the Law Review. Upon graduation from law school, Mr. Re served as a law clerk to the Honorable Howard T. Markey, Chief Judge of the United States Court of Appeals for the Federal Circuit. Since his clerkship, Joe has been practicing at Knobbe, Martens, where he became a partner in 1990.

In addition to writing numerous articles, Mr. Re also writes in West’s Federal Forms concerning practice and procedure before the Federal Circuit. He is also a co-author on the latest editions of BriefWriting and Oral Argument, published by Oceana Publications. Mr. Re is currently serving on the Board of Governors of the Federal Circuit Bar Association and on the Board of Directors of American Intellectual Property Law Association.

Harry J. Roper

Mr. Roper received his B achelor of Electrical Engineering, Rensselaer Polytechnic Institute and his law degree from New York University Law School. He is a partner in the Chicago firm of Jenner and Block where he specializes in trials and appeals of patent cases. He has written and lectured extensively concerning patent infringement, trade secret and antitrust litigation matters. He was Chairman of the Intellectual Property Committee of the Litigation Section of the American Bar Association from 1982 to 1986 and was a member of the Federal Circuit Bar Association Committee on Jury Instructions. He is admitted to practice before the Supreme Court of Illinois; the United States Supreme Court; United States Courts of Appeals for the Federal Circuit, and the United States Patent and Trademark Office.

Denis R. Salmon Denis R. Salmon is Co-Chair of Gibson, Dunn & Crutcher’s Intellectual Property Group, and Partner-in-Charge of the firm’s Palo Alto office. He has more than twenty-five years’ experience litigating patent, trademark, copyright and trade secret cases for technology companies in Silicon Valley and elsewhere. He has been lead counsel in intellectual property cases involving wireless communications, medical devices, semiconductors, software and numerous other technologies. In addition to his extensive experience appearing in trial courts throughout the United States, Mr. Salmon has had appellate successes in the Federal Circuit in such cases as Teletronics Pacing Sys., Inc, v. Ventritex, Inc.. 982 F.2d 1520 (Fed. Cir. 1992). involving the statutory exemption from patent infringement for medical devices undergoing clinical trials, and Cardiac Pacemakers, Inc, v. St. Jude Medical, 296 F.3d 1106 (Fed. Cir. 2002), upholding an indefiniteness defense to means-plus-function claims. Clients he has represented recently in intellectual property matters include Cingular Wireless, St. Jude Medical, Xilinx and ValueClick. Mr. Salmon was recently named by a legal periodical as one of California’s top intellectual property litigators, and he is frequently invited to conduct seminars on intellectual property and high technology law topics for audiences ranging from law school classes to business groups in the Silicon Valley.

Mr. Salmon received his J.D., magna cum laude, from the University of Minnesota Law School in 1976 and his B.A., magna cum laude, from Hamline University in 1973. He is a member of the American Intellectual Property Law Association; American Bar Association, Litigation Section; State Bar of California, Intellectual Property Section; Federal Circuit Bar Association. Mr. Salmon is admitted to practice in all California state and federal courts, the United States Court of Appeals for the Federal Circuit and the Ninth Circuit.

26 Ronald L. Smith

Ronald L. Smith is Chief Appellate Counsel for the Disabled American Veterans. Prior to joining the DAV in February 1989, Mr. Smith worked in the Department of Veterans Affairs Office of Inspector General. His practice over the past fifteen years has generally been limited to representing appellants before the United States Court of Appeals for the Federal Circuit and the United States Court of Appeals for Veterans Claims.

Mr. Smith has prosecuted more than 200 appeals to the Federal Circuit and the Court of Appeals for Veterans Claims. He has participated in more than thirty oral arguments and is associated with some of the earliest decisions of the Court of Appeals for Veterans Claims. His cases have resulted in more than fifty published opinions. Mr. Smith has been appointed to both the Federal Circuit Advisory Committee and the Rules Advisory Committee of the Court of Appeals for Veterans Claims, where he presently serves as Chair.

Mr. Smith is a past President of the Federal Circuit Bar Association and a past Chair of the Federal Bar Association Veterans’ Law Section. He is a Co-Chair of the Veterans Affairs Committee of the ABA Section of Administrative Law and Regulatory Practice. Mr. Smith has lectured throughout the United States and authored a number of articles on veteran’s law topics.

Gerald Sobel Gerald Sobel is a partner at the law firm of Kaye Scholer LLP. He has tried and litigated many major patent and antitrust matters, at both trial and appellate levels. By way of illustration, he represented Xoma in Xoma’s win before a jury in Xomav. Centocor, the longest biotech patent infringement trial; he represented Xerox in its win before a jury in the landmark, year-long patent-antitrust trial, SCM v. Xerox, the longest federal civil jury trial; and he recently argued for Pfizer at the Federal Circuit in University of Rochester v, Pfizer.

Mr. Sobel has published numerous articles relating to litigation, patent and antitrust issues in law reviews and other publications. He has been active in chairing and lecturing at programs on patent litigation, antitrust jury trials and appeals for professional organizations and at law schools.

31 Stuart J. Sinder Stuart J. Sinder is co-chair of Kenyon & Kenyon’s Electrical/Computer/Mechanical Practice Management Group, which supervises both the firm’s patent litigation and patent prosecution in these fields. He has been practicing intellectual property law at the firm for over thirty years. His practice spans the entire scope of intellectual property matters.

Mr. Sinder represents clients in a wide range of business fields, from universities and publishers, to toy companies, nutritional supplement companies, software companies and telecommunications companies. He counsels clients regarding obtaining intellectual property protection for their new products and services and enforcing those rights through licensing, and if necessary, litigation. He has been lead counsel in dozens of Federal Court litigations throughout the United States concerning such diverse matters as Internet communication, computer software protection, false advertising, entertainment media licenses, and a variety of patent, trademark and copyright infringement disputes involving numerous technological or entertainment areas. His litigation experience encompasses both patent infringement and numerous trademark infringement matters.

In addition to litigation, Mr. Sinder administers worldwide patent and trademark protection programs for major clients, and he advises clients on intellectual property portfolios involved in licensing, acquisition, financing and securities offering situations. Mr. Sinder is particularly active in representing clients in the telecommunications field, and specifically wireless telephony and packet switched networking.

Among the many bar organizations in which Mr. Sinder is active are the American Bar Association, the American Intellectual Property Law Association, the New York State Bar Association, the New Jersey State Bar Association, the New York Intellectual Property Law Association, the New York County Lawyers Association, the International Trademark Association and the Licensing Industry Merchandisers Association. He has spoken at seminars and has appeared on panels sponsored by several of these organizations.

Senior Judge Loren A. Smith

Senior Judge Smith was appointed a judge of the United States Court of Federal Claims on July 11,1985 and entered duty on September 12,1985. He was designated Chief Judge on January 14,1986. He graduated from Northwestern University, receiving a B.A. in 1966; he attended Northwestern University School of Law, receiving a J.D. in 1969.

Judge Smith formerly served as Chairman of the Administrative Conference of the United States from 1981 to 1985. During his tenure as Chairman, Judge Smith was a member of the President’s Cabinet Councils on Legal Policy and on Management and Administration. He also served as the Chairman of the Council of Independent Regulatory Agencies.

Judge Smith was Deputy Director of the Executive Branch Management Office of Presidential Transition from 1980- 81 ; Chief Counsel, Reagan for President campaigns in 1976 and 1980; Professor of Law, Delaware Law School, 1976-1984; Special Assistant United States Attorney for the District of Columbia, 1974-75; Assistant to the Special Counsel to the President, 1973-74; General Attorney, Federal Communications Commission in 1973; and Consultant, Sidley & Austin, Chicago, 1972-73. Also in 1972 he served as host of a nightly radio talk show called What’s Bestfor America?

In 1970, he ran for Illinois General Assembly with the endorsement of the Chicago Tribune. Judge Smith is author of many pubheations.

30 Federal Circuit Judge Alvin A. Schall Alvin A. Schall was appointed to the United States Court of Appeals for the Federal Circuit by President George Bush on August 17,1992. He took the oath and assumed the duties of office on August 19,1992.

Prior to his appointment, from 1988 to 1992, Judge Schall served as an Assistant to the Attorney General of the United States, with responsibility for civil matters, under Attorneys General Dick Thornburgh and William P. Barr. From 1987 to 1988, Judge Schall was a member of the Washington, D.C. law firm of Perlman and Partners, where he specialized in commercial litigation, with an emphasis on government contract and procurement law.

From 1978 to 1987, Judge Schall served in the Commercial Litigation Branch of the Civil Division of the Justice Department, first as Trial Attorney and then as Senior Trial Counsel. In that capacity, he represented the United States in government contract and civilian and military personnel litigation in the United States Court of Claims and in its successor courts, the United States Court of Appeals for the Federal Circuit and the United States Claims Court. From 1973 to 1978, Judge Schall was an Assistant United States Attorney in the Office of the United States Attorney for the Eastern District of New York, where he served first in the Criminal Division and then in the Appeals Division, first as Deputy Chief and then as Chief. As a member of the Criminal Division, Judge Schall represented the United States in criminal litigation in the United States District Court for the Eastern District of New York. As Deputy Chief and then Chief of the Appeals Division, he represented the United States in appeals in the United States Court of Appeals for the Second Circuit and supervised other Assistant United States Attorneys in brief writing and in oral argument in both civil and criminal cases.

From 1969 to 1973, Judge Schall was an associate with the law firm of Shearman and Sterling in New York City. His four years at Shearman and Sterling were equally divided between corporate and banking work. Judge Schall is a member of the bars of the State of New York and the District of Columbia. He is admitted to practice before the United States Supreme Court, the United States Court of Appeals for the Second Circuit, the United States District Courts for the Eastern and Southern Districts of New York, the United States Court of Appeals for the District of Columbia Circuit, the United States District Court for the District of Columbia, the United States Court of Appeals for the Federal Circuit, and the United States Court of Federal Claims.

Judge Schall graduated from the Tulane Law School in 1969. He received his undergraduate degree from Princeton University in 1966, where he majored in history. He received his secondary education from St. Paul’s School in Concord, New Hampshire, from which he graduated in 1962. Judge Schall was bom in New York City on April 4,1944. His parents were Gordon W. Schall and Helen Schall. Judge Schall is married to the former Sharon Frances LeBlanc. The Schalls have two children: Amanda and Anthony. Charles F. Schill Charles F. Schill is a partner in the Washington office of Steptoe & Johnson LLP. He is a member of the firm’s International Trade & Investment and Technology, Internet & Media departments.

Mr. Schill is an experienced international trade and patent litigator with more than 25 years of law firm and government experience, including service as a Senior Staff Attorney in the Office of Legal Services and the Office of General Counsel at the US International Trade Commission. He has successfully argued a patent case before the US Supreme Court and litigated more than 60 unfair trade practice cases under Section 337 of the Tariff Act of 1930 at the US International Trade Commission.

Mr. Schill has extensive experience in intellectual property evaluation, licensing and transfer of patent, copyright, database, trademark, trade secret rights, and in litigation in the courts and at federal agencies, particularly in the context of international commerce and trade. He has represented clients before the US Customs Service and in antidumping, countervailing duty and escape clause investigations.

He is a frequent author and speaker to bar and industry groups in the US and abroad on international trade regulation, the WTO, and intellectual property protection and litigation. Mr. Schill currently serves as President-Elect of The Federal Circuit Bar Association. 27 David Andrew Segai David Andrew Segal is a partner in the Orange County office of Gibson, Dunn & Crutcher. He is a member of the firm’s Intellectual Property and Technology Practice Groups. He has received substantial litigation and transactional experience in patent, trademark, and copyright matters, as well as having worked extensively on several jury trial matters.

Mr. Segal earned his law degree magna cum laude in 1992 from Fordham University School of Law, where he was a member of the Order of the Coif and served as the Annual Survey Editor of the Fordham Law Review. He received a Bachelors of Science degree in Computer Science and Engineering from the Massachusetts Institute of Technology in 1989, with a concentration in economics.

Prior to joining the firm in 1993, Mr. Segal clerked for the late Honorable J. Daniel Mahoney of the United States Court of Appeals for the Second Circuit. Mr. Segal is admitted to practice in the State Courts of California and New York, several district courts, and the Court of Appeals for the Federal Circuit. Prior to pursuing his law degree, Mr. Segal programmed customized business software and was a computer software and systems design consultant.

Charles Shifley For over 25 years, Charles Shifley has concentrated on intellectual property cases and trials.

Mr. Shifley has served as lead and co-counsel in numerous successful trials for Fortune 100 and additional companies, across the country. Technical subjects have included Internet delivery software; digital video disks; photochemistry; photographic software; engines, electronic components, and automotive hardware; human heart pacemakers and defibrillators; welding equipment; computerized controls; high technology valves; industrial franchise operations; high- technology metal casting and consumer goods. He has generated several large claims for damages, including one for $30 million based on $300,000 in accused sales. He has been consistently sensitive to costs and client communication.

In addition, Mr. Shifley has also developed capable settlement, negotiation, patent procurement and interference skills, and counseled, prepared opinions, and negotiated many valuable contracts concerning patents, trademarks, copyrights, trade secrets, and franchises. He is proud to have brought an individual inventor patent license royalties in excess of $ 1 million, for a single invention.

Mr. Shifley lectures on patent litigation and related matters, and authors articles espousing critical thinking in handling intellectual property concerns. He has taught trial and appellate advocacy at John Marshall and Chicago Kent Colleges of Law with Federal Circuit Court of Appeals Judge Paul Michel since 1998, and has taught Law for Engineering Managers at Northwestern University from 1984 until recently. He is an Adjunct Professor at Northwestern University, IIT Kent Law School, and John Marshall Law School.

Mr. Shifley earned a Bachelor of Science degree in Mechanical Engineering, summa cum laude, and a Juris Doctor degree, cum laude, both from The Ohio State University.

Mr. Shifley practices in the Chicago office of Banner & Witcoff, Ltd.

28 Ron Shulman Ron Shulman is a partner at Wilson Sonsini Goodrich & Rosati, where he focuses on intellectual property litigation.

Mr. Shulman has specialized in patent litigation throughout his career, focusing primarily on defending companies against claims of infringement. He has represented clients in more than 50 patent suits throughout the United States, and has tried numerous cases, all of which resulted in victories for his clients. In June 2002, The National Law Journal named Mr. Shulman as one of the top ten jury trial lawyers in the country.

Mr. Shulman was twice a member of the Attorney Advisory Committee established by the United States District Court for the Northern District of California to propose Local Rules for the administration of patent infringement actions in the district. He also has been a lawyer representative to the Northern District of California.

Mr. Shulman received his J.D. from Rutgers Law School in 1981 and his undergraduate degree from Amherst College in 1977. Prior to joining Wilson Sonsini Goodrich & Rosati as a partner in 1995, Mr. Shulman was a partner at Fish & Neave in New York where he began practicing in 1981.

Leif R. Sigmond, Jr. Leif R. Sigmond, Jr. is the managing partner of McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois. He practices intellectual property law and has concentrated in litigation.

He is a member of the American Bar Association, the Licensing Executive Society, the American Intellectual Property Law Association, the Federal Circuit Bar Association, the Institute of Electrical and Electronics Engineers, and the Chicago Bar Association.

He earned his J.D., magnet cum laude, in 1990 from Widener University School of Law, and his B.S. in Electrical Engineering in 1987 from Lafayette College. He is admitted to the bars of Illinois, New Jersey, New York and various federal courts including the United States Supreme Court and the United States Court of Appeals for the Federal Circuit. Mr. Sigmond is also registered to practice before the United States Patent and Trademark Office.

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