53rd Annual Conference on Intellectual Property Law

Overview

Highlights

• Annual patent, trademark and copyright law updates
• Deep dive track on hot issues in patent litigation
• Overcoming challenges in drafting and prosecuting patent applications on software inventions
• A half day on conducting PTAB trials
• Alice and the patent eligibility morass - How did we get her, how bad is it, and can we fix it?
• Recent developments in patent portfolio licensing models
• The new Texas Uniform Trade Secrets Act and pitfalls to avoid when hiring technology employees
• Introduction to the Texas Regional PTO Office

Download the Brochure (pdf)

For more details, download the online brochure.

Conference Co-Chairs

Schedule and Faculty

Monday, November 16

7:15 am

Networking Breakfast

Presented by the Women in IP Task Force – State Bar of Texas
The Networking Breakfast will be served from 7:15 a.m., and the presentation will begin at 7:45 a.m.

Moderator:

• Cathryn Berryman, Winstead PC, Dallas, Texas

Panelists:

• The Hon. Stacey G. White, USPTO, Dallas, Texas
• The Hon. Miriam L. Quinn, USPTO, Dallas, Texas

8:45 am

Welcome

The IP Year in Review and Patent Law Retrospective

Module Chair: Marc Hubbard,  Hubbard Law, PLLC, Dallas, Texas

9:00 am

Patent Year in Review

• Gale R. (“Pete”) Peterson, Law Offices of Gale R. Peterson, San Antonio, Texas

9:45 am

Copyright Year in Review

• Kevin Tottis, TottisLaw, Chicago, Illinois

10:15 am

Trademark Year in Review

• Dyan House, Carter Scholer Arnett Hamada & Mockler, Dallas, Texas

10:45 am

Break

11:00 am

Patent Law Retrospective

The pace of change in patent law has been dizzying over the last decade. An experienced panel of practitioners and judges will address the changes and how the patent litigation landscape has changed.

Moderator:

• Theodore Stevenson, III, McKool Smith, Dallas, Texas

Presenter:

• Jeffrey Bragalone, Bragalone Conroy, PC, Dallas, TX

12:15 pm

Pick Up Boxed Lunch

12:30 pm

Ethics at the USPTO

• Professor David Hricik, Mercer University School of Law, Macon, Georgia

Moderator:

• Steve Malin, Chen Malin LLP, Dallas, Texas

PTAB Proceedings

Module Chair: J. Andrew Lowes, Haynes and Boone LLP, Richardson, Texas

1:45 pm

State of the Board

• The Hon. Michael P. Tierney, U.S. Patent and Trademark Office, Alexandria, Virginia

2:15 pm

Patent Owner Survival in the Wake of the PTAB: How to Avoid the Darwin Awards

The Darwin Awards commemorate those who improve our gene pool by removing themselves from it. Patent owners are facing similar self-selection challenges in crafting their patents to avoid extinction under PTAB scrutiny. How should you prepare and prosecute patents to withstand critical review by the Patent Trial and Appeal Board (PTAB)?

• Tom L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C.

3:00 pm

Break

3:15 pm

Hot Issues in PTAB Trials
Session 1: PTAB Procedural Developments and Impact of Ongoing Reform

Presenters will provide a run down on procedural aspects of PTAB practice, directed to recent developments and their influence on overall case strategy. Topics include:

• Drop in Institution Rate – Market Factors and Board Approach to Petition Defects
• Serial Petitions and the Application of Section 325 discretion/estoppel
• New rules and proposed reform legislation

Moderator:

• J. Andrew Lowes, Haynes and Boone LLP, Richardson, Texas

Presenters:

• Douglas A. Robinson, Harness, Dickey & Pierce, PLC, Saint Louis, Missouri
• Dan Smith, Fish & Richardson LLP, Dallas, Texas
• Gita Srivastava, Norton Rose Fulbright LLP, Dallas, Texas

4:00 pm

Hot Issues in PTAB Trials
Session 2: Coordination with District Court Litigation

The panel will discuss PTAB trials and their experiences from real cases on what works most effectively, mistakes to avoid, and the interplay with district court litigation. Topics include:

• IPR Timing with Litigation
• Use of Institution Decision at the District Court
• Claim Construction Considerations
• Federal Circuit Appeal – Scope; Likelihood; Then What?

Moderator:

• J. Andrew Lowes, Haynes and Boone LLP, Dallas, Texas

Presenters:

• Chris Dunstan, Ericsson Inc., Plano, Texas
• Sharon Israel, Mayer Brown LLP, Houston, Texas
• Donald Puckett, Skiermont Puckett LLP, Dallas, Texas
• The Hon. Michael P. Tierney, U.S. Patent and Trademark Office, Alexandria, Virginia

5:00 pm

Adjourn

5:15 pm

Reception for all participants and faculty

Tuesday, November 17

7:45 - 8:45 am

Breakfast Roundtables: Help Me Help You

Join your peers in moderated discussions between patent prosecutors and litigators as they exchange their pet peeves about the other and explore ways for improving licensing and enforcement of patents during the entire life cycle of a patent.

Moderator: Adam C. Davenport, Dallas, Texas

• Andrew J. Wright, Bruster PLLC, Southlake, Texas
• Austin Champion, Griffith Bates Champion & Harper LLP, Dallas, Texas
• Juanita Deloach, Ph.D., Dentons US LLP, Dallas, Texas
• Kandace D. Walter, Wilson Legal Group, PC, Dallas, Texas
• Matthew C. Acosta, Jackson Walker L.L.P., Dallas, Texas
• Michael Henry, Ph.D., Henry Patent Law Firm PLLC, Dallas, Texas
• Mimi Yu, Jones Day, Dallas, Texas
• Tara Clothier, Essilor of America, Inc., Dallas, Texas

Patent Prosecution & Patent Litigation Concurrent Sessions (9:00 am - 12:00 pm)

Patent Prosecution

Module Chair: Michael Piper, Conley Rose PC, Plano, Texas

9:00 am

Software Prosecution: Dealing with the Hard Realities of a Software Practice

Developing disclosures and draft software cases to be prepared for the future, managing patent office prosecution for software cases already filed, and answering the challenges of functional claiming.

• Christa Brown-Sanford, Baker Botts L.L.P., Dallas, Texas
• David Carstens, Carstens & Cahoon, Dallas, Texas
• Jay Lytle, Sughrue Mion PLLC, Washington, DC
• Sarah Knight, Talem IP Law, Gainesville, Florida

10:30 am

Break

10:45 am

Indefiniteness in Patent Claims – Definitely an Issue

In view of the Supreme Court’s decision in Nautilus and the USPTO’s increasing scrutiny, patent attorneys need to focus on drafting specifications and claims to withstand the future challenges.

• Ira Matsil, Slater & Matsil, Dallas, Texas
• Brian McCormack, Baker & McKenzie, Dallas, Texas

11:45 am

How do I take advantage of having the PTO in my own backyard for the benefit of my community, my clients, and my practice?

• What opportunities will it create?
• Searching with PTO Tools
• Interviewing for Efficiency
• Oral Argument for Appeal

• Ram Shukla, Regional Manager, U.S. Patent and Trademark Office, Dallas, Texas

Patent Litigation

Module Chair: Bruce Sostek, Thompson & Knight LLP, Dallas, Texas

9:00 am

RAND, FRAND, SEP, SSO, IEEE, - Making Sense Out of Alphabet Soup

A Panel Discussion on the importance of FRAND/RAND Commitments and their significance for patent litigation

• Allen S. Lineberry, Siemens PLM Software, Plano, Texas
• Chad Hilyard, Marquis Technologies, Centennial, Colorado
• Luke McLeroy, Ericsson Inc., Plano, Texas

9:45 am

Recent Ethics/Malpractice Developments for Attorneys Handling Patent Litigation (includes .25 hours of ethics)

• Susan Fortney, Texas A&M University School of Law, Fort Worth, Texas
• Saurabh Vishnubhakat, Texas A&M University School of Law, Fort Worth, Texas

10:15 am

Break

10:30 am

The Federal Circuit and the ITC - Who's Calling the Shots?

Suprema, Align Technologies, Lelo, and Other Recent Developments

• James L. Quarles, III, WilmerHale, Washington, D.C.

11:00 am

Flying High or Crash And Burn? Getting Patent Damages Right

Panel discussion on recovering patent damages in the current environment.

Moderator:

• Adrienne E. Dominguez, Thompson & Knight LLP, Dallas, TX

Panelists:

• Christopher C. Barry, CPA/MBA, CFF, Partner, PricewaterhouseCoopers LLP, Boston, Massachusetts
• Daubert Challenges to Financial Experts
• 2015 Patent Litigation Study
• Roy Weinstein, Managing Director, Micronomics, Los Angeles, California
• Andrew W. Carter, Founding Partner, Managing Director and Chief Operating Officer, Ocean Tomo, Chicago, Illinois

• Download PowerPoint

12:00 pm

Lunch

12:30 pm

Ethics Roundtables - A Nuts and Bolts Discussion on Common Ethical Problems Encountered by IP Lawyers

Roundtable discussions organized by Colin Cahoon, Carstens & Cahoon, Dallas, Texas and Paul Storm, Gardere Wynne Sewell LLP, Dallas, Texas

1:30 pm

Break

Tech Transfer & Miscellaneous

Module Chair: Mike Pegues, Polsinelli PC, Dallas, Texas

1:45 pm

Patent Portfolio Licensing Models - Circling the wagons while internally running a Licensing Program

Circling the wagons while internally running a Licensing Program (Discussion of LOT, RPX, et al. and traditional licensing.)

• Nainesh Shah, STMicroelectronics
• Download PowerPoint
• Shival Virmani, SanDisk Corporation

2:15 pm

The New Texas Uniform Trade Secrets Act

Texas adopted its version of the UTSA in 2012. Learn what the Act has changed the way businesses litigate trade secret theft claims. Learn too about how business are using the Act to control the hiring of technology employees (i.e., Is the inevitable disclosure doctrine alive and kickin’ in Texas?) Finally, investigate whether the Act makes it easier or harder to obtain TROs (and the ethics challenges that arise in the TRO context).

• Stephen Fox, Polsinelli PC, Dallas, Texas

2:45 pm

Boilerplate Blunders

Boilerplate provisions are often cut and pasted from one license agreement to another with little thought about the impact of their use. This talk will assist counsel in identifying and avoiding the pitfalls of using boilerplate provisions and provide practical guidance for adapting provisions to meet the needs of each transaction.

• Robert H. Johnston, Johnston Law, Dallas, Texas
• Download PowerPoint

3:15 pm

Break

3:30 pm

The Patent Eligibility Morass: How did we get here, how bad is it, and can we fix it?

In these presentations we will assess the current patent eligibility landscape based on statistical analyses of court decisions and USPTO office actions since Alice was decided in June 2014. The panel will then review the larger historical developments in eligibility theory to show how the courts have improperly incorporated concepts of inventiveness into eligibility, concepts which Congress expressly attempted to eliminate in the 1952 Act. Finally, the panel will discuss potential legislative changes to the patent statute.

• Robert R. Sachs, Fenwick & West LLP, San Francisco, California
• Prof. David O. Taylor, SMU Dedman School of Law, Dallas, Texas
• Russ Emerson, Haynes & Boone LLP, Dallas, Texas

5:00 pm

Adjourn

CLE Credit

MCLE Credit

This program is approved by the State Bar of Texas for a total of 15.75 hours, including 2.25 hour of ethics. Course ID Number: 901328982. Credit hours for other states will vary and are subject to each state’s approval and credit rounding rules.

For this conference, ILT will directly apply (if requested) for course accreditation in the following states: California, Minnesota, New Mexico, Ohio, Oklahoma, Pennsylvania, Texas and Virginia. Some of these states may not approve a program for credit hours before the program occurs. Attorneys may be eligible to receive CLE credit through reciprocity or attorney self-submission in other states. IEL conferences are typically accredited by all mandatory CLE states.

Overnight Accommodations

The cost of housing is not included in tuition. However, rooms (in limited number) have been reserved at Dallas/Plano Marriott at Legacy Town Center, 7121 Bishop Road, Plano, Texas 75024. Registrants should advise them they will be attending the IP Law Program to receive the reduced room rate of $174 + tax. The last day to obtain this special rate is October 26, 2015.

BOOK HOTEL ONLINE

Sponsorship Opportunities

General Conference Sponsor - $2,500 each

• Recognition in the Conference brochure, which will be mailed and/or emailed to several thousand IP professionals
• Company/firm logo prominently displayed in the Conference brochure and final program
• Recognition on the Conference website, with link back to company/firm website
• 2 complimentary registrants at the Conference
• Recognition at the conference
• An opportunity to display company/firm materials at the conference

Conference Reception - $1,500 each

• Recognition in the Conference brochure, which will be mailed and/or emailed to several thousand IP professionals
• Company/firm logo displayed in the Conference brochure and final program
• Recognition on the Conference website, with link back to company/firm website
• 1 complimentary registrant at the Conference
• Recognition at the Reception
• An opportunity to display company/firm materials at the reception

Exhibitor - $1,000 each
(Non-law Firms only)

• Space to display company/firm materials at the conference
• Name/logo on Conference website with link to company page

Other Information

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