7Th Annual Patent Law Institute

Satisfy Your CLE Requirements! 7th Annual Patent Law Institute

New York City, February 4-5, 2013 San Francisco, March 18-19, 2013 Live Webcast, March 18-19, 2013 — www.pli.edu

• Keynote Address by Commissioner of Patents Margaret A. (Peggy) Focarino • A dialogue with prominent members of the bench and bar, including former Federal Circuit Chief Judge Paul R. Michel • The practice impact of the America Invents Act , and recent Supreme Court and Federal Circuit decisions • U.S. District Court judges provide insight on patent law and litigation • Corporate counsel discuss critical issues that keep them awake at night • Earn one hour of legal Ethics credit

Customize your Institute by choosing from 15 breakout sessions!

“Overall the program was excellent and informative.” – Jennifer L. Best-Martin, Associate, Wilson Sonsini Goodrich & Rosati, San Diego “Great program.” – Lance Termes, Senior Associate, Alston & Bird LLP, Menlo Park, California

Erika Harmon Arner New York City, February 4-5, 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP San Francisco, March 18-19, 2013 Reston, Virginia Dorothy R. Auth, Ph.D. Live Webcast, March 18-19, 2013 — www.pli.edu Cadwalader, Wickersham & Taft LLP New York City Kathlyn Card Beckles Intellectual Property and Technology Law, Managing Director and Why You Should Attend Associate General Counsel The Institute is designed to be of ultimate practice value to all three subgroups in the JP Morgan Chase patent law community: patent prosecutors, patent litigators, and strategic/transactional New York City lawyers. The two-day schedule includes seven plenary sessions of interest to all patent Keith Bergelt lawyers and five breakout sessions in each of the three subgroups. Chief Executive Officer Open Invention Network (OIN) You design the two-day schedule that best meets your professional needs. Durham, North Carolina Do not miss this unique opportunity to sharpen your practice skills and network Aaron B. Bernstein Lead Intellectual Property Counsel with federal judges, USPTO officials, in-house counsel and outside patent lawyers. Motorola Solutions, Inc. Holtsville, New York What You Will Learn William Cohen Plenary sessions include: Deputy General Counsel for Policy Studies • Keynote Address by Hon. Margaret A. (Peggy) Focarino, Federal Trade Commission Commissioner of Patents Washington, D.C. • A dialogue with prominent members of the bench and bar, including former Colm J. Dobbyn Group Executive, Associate Federal Circuit Chief Judge Paul R. Michel General Counsel • Key buyers, sellers and brokers of patent assets divulge inner workings MasterCard Worldwide of the patent marketplace Purchase, New York Donald R. Dunner • U.S. District Court judges provide insight on patent law and litigation Finnegan, Henderson, Farabow, Garrett & Dunner, LLP • The practice impact of the America Invents Act, and recent Supreme Court and Washington, D.C. Federal Circuit decisions • Corporate counsel discuss critical issues that keep them awake at night Plus customize your Institute by choosing from 15 breakout sessions! T.J. Angioletti Associate General Counsel, Prosecution Breakout Track: three sessions focused on the avalanche of USPTO rules Technology & Transactions implementing the America Invents Act (AIA) and other important PTO actions; and two Netflix sessions focused on the AIA and chemical and biotechnical patent prosecution. This year, Los Gatos, California and until further notice, the USPTO is all about AIA implementation. You can expect many Kevin Barhydt on-the-fly adjustments as to AIA implementation, so this is your chance to be current VP, Head of Acquisitions across the board. and Analysis RPX Corporation Litigation Breakout Track: containing patent litigation costs; developments in pharma and San Francisco biotech patent litigation; advice from the bench; litigating against non-practicing entities; Asim Bhansali and developments in patent damages. Keker & Van Nest LLP San Francisco Strategic/Transactional Breakout Track: hear about key issues concerning patent Cynthia Bright standards and “essential patents”; patent-eligible subject matter in view of Prometheus Associate General Counsel, and its progeny; joint infringement from attorneys involved in Akamai and other IP Litigation & Public Policy key decisions; and hot tech transfer topics affecting your practice. Hewlett-Packard Palo Alto Special Features Denise De Mory Bunsow De Mory Smith & • Patent system perspectives from industry and a District Court judge Allison LLP • Earn one hour of Ethics credit! Redwood City, California Margaret M. Dunbar, M.S. Senior Director, Intellectual Property Who Should Attend and Legal Affairs Patent litigators, patent prosecutors and patent transactional lawyers, both in-house and Sanford-Burnham Medical outside counsel, should not miss PLI’s Patent Law Institute . In just two days, you will Research Institute hear all of the recent developments you need to know and learn how to adjust your La Jolla, California practice to the new environment. Donald R. Dunner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington, D.C. Joseph T. FitzGerald Senior Vice President of Public and Legal Affairs Reserve your place today, call (800) 260-4PLI. Symantec Corporation Mountain View, California FACULTY

Co-Chairs: Scott M. Alter Douglas R. Nemec John M. White Faegre Baker Skadden, Arps, Slate, Director of Patent Professional Development Daniels LLP Meagher & Flom LLP Practising Law Institute Denver New York City Berenato & White Bethesda, Maryland

NEW YORK CITY

Hon. Margaret A. Hon. Faith S. Hochberg Hon. Paul R. Michel (Retired) Jeffrey M. Sears, Ph.D. (Peggy) Focarino District Judge Chief Judge Associate General Counsel, Commissioner for Patents United States District Court, United States Court of Appeals Office of the General Counsel United States Patent and District of New Jersey for the Federal Circuit Columbia University Trademark Office Newark, New Jersey Alexandria, Virginia New York City Alexandria, Virginia Daryl L. Joseffer Gerald M. Murphy, Jr. Robert J. Spar Neer Gupta King & Spalding LLP Birch, Stewart, Kolasch & Birch, LLP Patent Prosecution and Practice Assistant General Counsel, Washington, D.C. Falls Church, Virginia Specialist, Director (Ret.) Intellectual Property Denise M. Kettelberger, Ph.D. Robert Neuner OPLA, USPTO Verizon Communications Inc. Faegre Baker Daniels LLP Hoffmann & Baron, LLP Silver Spring, Maryland Basking Ridge, New Jersey Minneapolis Parsippany, New Jersey Nanette S. Thomas Dawn Hall Stephen G. Kunin Carter G. Phillips IP & Licensing Consultant Managing Director - Oblon, Spivak, McClelland, Sidley Austin LLP Boonton, New Jersey Forensic Consulting Maier & Neustadt, L.L.P. Washington, D.C. Kimberly N. Van Voorhis FTI Consulting Alexandria, Virginia Eugene R. Quinn, Jr. Morrison & Foerster LLP New York City Hon. Elizabeth D. Laporte President and Founder, Palo Alto John Han Magistrate Judge IPWatchdog.com Michelle Waites-Holder Vice President - Patent Assertion & United States District Court, IP Watchdog, Inc. Senior Patent Counsel, Enforcement, IPR & Licensing Northern District of California Leesburg, Virginia Office of General Counsel Ericsson San Francisco David M. Rosenblatt Xerox Corporation Plano, Texas Richard Ludwin Assistant General Counsel, Norwalk, Connecticut Brian Hanlon Associate General Counsel Intellectual Property Dean John M. Whealan Director, Office of Patent IBM Corporation Thomson Reuters Intellectual Property Advisory Board Legal Administration Armonk, New York New York City Associate Dean for IP Law United States Patent and Frances E. Marshall P. Anthony Sammi George Washington University Trademark Office Special Counsel for Intellectual Skadden, Arps, Slate, Law School Alexandria, Virginia Property, Antitrust Division Meagher & Flom LLP Washington, D.C. Orin Herskowitz United States Department New York City Executive Director and VP of of Justice Hon. Patti B. Saris Intellectual Property and Washington, D.C. District Judge Technology Transfer Deanne E. Maynard United States District Court, Columbia Technology Ventures Morrison & Foerster LLP District of Massachusetts New York City Washington, D.C. Boston

SAN FRANCISCO AND LIVE WEBCAST

Hon. Margaret A. Hon. Faith S. Hochberg Frances E. Marshall P. Anthony Sammi (Peggy) Focarino District Judge Special Counsel for Skadden, Arps, Slate, Commissioner for Patents United States District Court, Intellectual Property, Meagher & Flom LLP United States Patent and District of New Jersey Antitrust Division New York City Trademark Office Newark, New Jersey U.S. Department of Justice Hon. Patti B. Saris Alexandria, Virginia Heath Hoglund Washington, D.C. District Judge Cheryl A. Fragiadakis Chief Patent Counsel Deanne E. Maynard United States District Court, Lawrence Berkeley National Laboratory Dolby Morrison & Foerster LLP District of Massachusetts Technology Transfer Department Head San Francisco Washington, D.C. Boston Berkeley, California Daryl L. Joseffer Hon. Paul R. Michel (Retired) Bernard C. Shek Nicholas Godici King & Spalding LLP Chief Judge Senior Director, Litigation Executive Advisor Washington, D.C. United States Court of Appeals SanDisk Corporation Birch, Stewart, Kolasch & Birch, LLP David Kaefer for the Federal Circuit Milpitas, California San Diego General Manager, Alexandria, Virginia Robert J. Spar Dawn Hall IP Licensing & Sales Nader A. Mousavi Patent Prosecution and Practice Managing Director - Microsoft Corporation Sullivan & Cromwell LLP Specialist, Director (Ret.) Forensic Consulting Redmond, Washington Palo Alto OPLA, USPTO FTI Consulting Hon. Elizabeth D. Laporte Gil Ohana Silver Spring, Maryland New York City Magistrate Judge Senior Director, Antitrust Leonard Richard Svensson Brian Hanlon United States District Court, and Competition Birch, Stewart, Kolasch & Birch, LLP Director, Office of Patent Northern District of California Cisco Systems, Inc. San Diego Legal Administration San Francisco San Jose Kimberly N. Van Voorhis United States Patent and Allen M. Lo Carter G. Phillips Morrison & Foerster LLP Trademark Office Deputy General Counsel, Sidley Austin LLP Palo Alto Alexandria, Virginia Patents and Patent Litigation Washington, D.C. Dean John M. Whealan Roberta Jean Hanson Google Inc. Eugene R. Quinn, Jr. Intellectual Property Advisory Board Faegre Baker Daniels LLP Mountain View, California President and Founder, Associate Dean for IP Law Denver Ken Lustig IPWatchdog.com George Washington University Pamela J. Hays Vice President, Strategic IP Watchdog, Inc. Law School Assistant Director, Acquisitions, Divestitures Leesburg, Virginia Washington, D.C. Patent Acquisitions and Client Engagement Robert R. Sachs Intel Corporation Intellectual Ventures Fenwick & West LLP Hillsboro, Oregon Bellevue, Washington San Francisco Program Attorney: John M. Mola PROGRAM SCHEDULE

Day One: 9:00 a.m. – 5:30 p.m.

Morning Session: 9:00 a.m. – 12:30 p.m. Breakout: Strategic & Transactional (Plenary Sessions) Standards and Essential Patents • Antitrust considerations concerning 9:00 “essential patents” and FRAND issues Program Overview • Effectiveness of current standards setting NYC, SF & WEB: Scott M. Alter, Douglas R. Nemec, and associated patent licensing systems John M. White • Recent cases and issues 9:15 NYC: John Han, Frances E. Marshall PTO Update SF: Frances E. Marshall, Gil Ohana • Implementing the AIA 12:30 Lunch Break • Expectations NYC: Hon. Margaret A. (Peggy) Focarino SF & WEB: A video of the NYC presentation; Afternoon Session: 1:45 p.m. – 5:30 p.m. Brian Hanlon, Moderator 1:45 (Breakout Tracks Continued) 10:15 Breakout: Litigation * Recent Cases Patent Damages – Keeping Up With the • Prometheus Changing Rules • Caraco • Perspectives on the sea change in damages analysis • Myriad • Constructing – or deconstructing – a reasonable • Akamai/McKesson royalty case • The latest patent cases bound for the Supreme Court • Proving lost profits, price erosion, and other “but for” damages • Other decisions of consequence from the Federal Circuit • Getting the most from your damages/ NYC: Robert Neuner economic expert NYC, SF & WEB: Dawn Hall, Kimberly N. Van Voorhis SF & WEB: Denise De Mory Breakout: Prosecution 11:15 Networking Break Implementing the AIA Post-Grant, Part II: The “Windows” Post-Grant Review; 11:30 (Breakout Tracks) Inter Partes Review Breakout: Litigation * • Avoiding litigation or pre-empting litigation Managing Patent Litigation: Containing Costs • The instant dispute resolved at the PTO: and Maintaining Efficiency Post-Grant Review • Tips on efficient management of outside counsel • The “after-the-fact” remedy of Inter Partes Review • Alternative fee arrangements NYC & SF: Brian Hanlon, Robert J. Spar, John M. White • Best practices with litigation vendors and consultants Breakout: Strategic & Transactional • Avoiding e-discovery nightmares The Changing Landscape for Induced and NYC: Michelle Waites-Holder Willful Infringement SF & WEB: Cynthia Bright • Willful blindness considerations after Breakout: Prosecution Global-Tech v. SEB Implementing the AIA Pre- and Post-Grant, • Effect of Bard v. Gore on practical willful Part I: Derivation Proceedings, Third-Party infringement considerations Submissions; Supplemental Examination • Are opinions of counsel still important? • The PTO as post-grant arbiter of validity NYC & SF: Scott M. Alter • Derivation – the interference remnant of old 35 USC 102(f) • Third-party action before and after issue: more latitude • The “cleansing” effect of Supplemental Examination NYC & SF: Brian Hanlon, Robert J. Spar, John M. White

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Day Two: 9:00 a.m. – 5:00 p.m.

2:45 Morning Session: 9:00 a.m. – 12:15 p.m. Breakout: Litigation * 9:00 (Breakout Tracks) Developments in Pharma and Biotech Patent Litigation Breakout: Litigation * • AIA one year and counting – has it impacted Litigation Advice From the Bench pharma and biotech litigation? • A rare opportunity for an interactive discussion • The continuing drama around reverse payment with a sitting Federal judge pharma settlements • Tried and tested approaches to containing • The evolving FDA guidance and rules for e-discovery follow-on biologics • What kinds of evidence really matter – how to • The role of Section 101 challenges in pharma avoid rabbit holes and biotech litigation • Advice on effective advocacy in complex cases NYC: Dorothy R. Auth NYC, SF & WEB: Hon. Elizabeth D. Laporte SF & WEB: Asim Bhansali Breakout: Prosecution Breakout: Prosecution Chemical/Pharma Cases and AIA Concerns Implementing the AIA: First to File: • Staying with PTO practice in light of CAFC and The New 102 Timelines and Deadlines! Supreme Court decisions • First to do what . . . exactly: file or publish? • KSR still evolving in Chem/Pharma • When a grace period is not really a grace period • Taking advantage of new 102 Novelty exceptions • The novelty exceptions to prior art; or how to NYC: Gerald M. Murphy, Jr. extend your term SF: Margaret M. Dunbar, Leonard Richard Svensson NYC: Stephen G. Kunin, Gerald M. Murphy, Jr. Breakout: Strategic & Transactional SF: Nicholas Godici, Leonard Richard Svensson Joint Infringement Post- Akamai/McKesson Breakout: Strategic & Transactional • The new case law Patent-Eligible Subject Matter: Implications • Open questions for the Biotech, Medical Device and • P ractical consequences for drafting claims and Software Industries structuring one’s conduct • Long and short-term effects of the Supreme Court’s NYC & SF: Daryl L. Joseffer, Deanne E. Maynard Mayo v. Prometheus and Bilski v. Kappos decisions • Drafting strategic applications in an uncertain world 10:00 • Impact of recent Federal Circuit and district Breakout: Litigation * court decisions Litigating Against Non-Practicing Entities NYC: Erika Harmon Arner, Denise M. Kettelberger • What is different about litigating against an SF: Roberta Jean Hanson, Robert R. Sachs NPE and why does it matter? • Proven strategies for defeating NPEs 3:45 Networking Break • Special considerations regarding remedies 4:00 • Dealing with joint defense groups Dialogue Between the Bench and the Bar NYC, SF & WEB: P. Anthony Sammi • A frank discussion between the former Chief Judge Breakout: Prosecution of the Federal Circuit and leading members of the Bio Cases and AIA Concerns bench and patent appellate bar on hot patent topics • Staying with PTO practice post- Myriad , Prometheus , affecting your practice and Classen NYC: Donald R. Dunner, Hon. Paul R. Michel (Ret.), • New approaches to protection Carter G. Phillips, Hon. Patti B. Saris, • Taking advantage of new 102 Novelty exceptions Dean John M. Whealan NYC: Gerald M. Murphy SF & WEB: A video of the NYC presentation SF: Margaret M. Dunbar, Leonard Richard Svensson 5:30 Adjourn

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Breakout: Strategic & Transactional Afternoon Session: 1:45 p.m. – 5:00 p.m. Hot Topics in Technology Transfer and Licensing 1:45 • University tech transfer issues Plenary: Patent Markets • Performance, royalty and other provisions • Established and evolving IP monetization models NYC: Orin Herskowitz, Jeffrey M. Sears • Effects of changing legal and economic environments NYC: Keith Bergelt, William Cohen, Neer Gupta, SF: Cheryl A. Fragiadakis, Nader A. Mousavi Richard Ludwin 11:00 Networking Break SF & WEB: Kevin Barhydt, Pamela J. Hays, David Kaefer, Ken Lustig 11:15 (Plenary Sessions) 2:45 Perspectives on the Patent System Corporate Counsel Panel From the Judiciary and Industry • Effects of court decisions and USPTO activity • Perspectives from the judiciary on what parties • Concerns regarding newly enacted legislation are doing right and wrong in patent enforcement • The economy . . .

and defense • Other patent issues weighing on the minds of • Perspectives from in-house counsel on what courts corporate counsel are doing well, and what courts could be doing better NYC: Kathlyn Card Beckles, Colm J. Dobbyn, to achieve efficient and fair outcomes in patent cases David M. Rosenblatt, Nanette S. Thomas • Discussion on techniques to get the most from your SF & WEB: T.J. Angioletti, Joseph T. FitzGerald, time in court Heath Hoglund, Allen M. Lo • Is the patent system working? 3:45 Networking Break NYC: Douglas R. Nemec, Moderator; Aaron B. Bernstein, Hon. Faith S. Hochberg 4:00 SF & WEB: Douglas R. Nemec, Moderator; PTO Ethics and the AIA Hon. Faith S. Hochberg, Bernard C. Shek • Statute of limitations tolling under the AIA 12:15 Lunch Break and PTO rules • The new ethical reality of first-to-file - Mistakes may be catastrophic; malpractice issues - Streamline client intake; setting expectations - Informed consent early and often - “Best practices” advice; new “grace” period - OED decisions and investigations; defining trouble * Live Webcast of breakout session NYC, SF & WEB: Eugene R. Quinn, Jr. 5:00 Adjourn

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