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Third Annual Naples Midwinter
Patent Experts Conference 
$500 before Jan. 15; $625 thereafter 

Welcome reception evening of Feb. 9 
The Naples Beach Hotel & Golf Club, Naples, Fla.

To Register: 
Phone: 330-972-7988 

Online: Event Registration Form
CLE credits will be available

Accommodations:  A block of rooms at the group rate of $285 per night (plus applicable taxes and service charge) has been reserved at The Naples Beach Hotel & Golf Club. Reservations are accepted within this group block until Jan. 9, 2015. Reservation requests made after Jan. 9, 2015 will be accepted by the hotel on a space–available, rate–available basis. Please contact the hotel directly to make your reservations.  By phone: 239-261-2222 or 800-237-7600; please reference the group name: University of Akron.

Full list of Speakers

The faculty for the Third Annual Naples Midwinter Patent Law Experts Conference includes the following:

From the Judiciary and former officials at the USPTO

  • Hon. Sharon R. Barner, former Deputy Under Secretary of Commerce (invited)
  • Hon. Q. Todd Dickinson, former Under Secretary of Commerce
  • Hon. James Holderman, former Chief Judge, U.S. District Court for the Northern District of Illinois
  • Hon. Roger T. Hughes, Federal Court of Canada
  • Hon. David J. Kappos, former Under Secretary of Commerce
  • Hon. Stephen Kunin, former Deputy Commissioner for Patents
  • Hon. Richard Linn, U.S. Court of Appeals for the Federal Circuit
  • Hon. Teresa Stanek Rea, former Deputy Under Secretary of Commerce
  • Professor Emeritus Jeffrey M. Samuels, former Assistant Commissioner for Trademarks
  • Hon. William F. Smith, former Administrative Patent Judge
  • Hon. Robert Stoll, former Commissioner for Patents 

The faculty is expected to also include the following individuals:

  • Meredith Martin Addy, Katten Muchin Rosenman
  • Professor J. Jonas Anderson, American University Washington College of Law
  • Robert A. Armitage, former Vice-President, Eli Lilly; consultant IP Strategy & Policy
  • Andrew S. Baluch, former White House Director. of Int’l IP Enforcement
  • Paul Cole, editor, CIPA Guide; Lucas & Co. (United Kingdom)
  • Professor Dennis Crouch, University of Missouri Law School; editor/publisher, Patently O blog 
  • Michael R. Dzwonczyk, George Washington University Law School; Sughrue Mion LLP
  • Prof. Francis J. Fodale, Ave Maria School of Law
  • Professor Dr. Heinz Goddar, Boehmert & Boehmert (Germany)
  • James Gould, Gould Intellectual Property Consulting Group
  • Professor J. Jeffrey Hawley, University of New Hampshire
  • Professor Timothy R. Holbrook, Associate Dean, Emory University Law School
  • Jerold A. Jacover, Foley & Lardner LLP
  • Otto Licks, Licks Advogados (Brazil)
  • Professor Timo Minssen, University of Copenhagen (Denmark/Sweden)
  • Aaron Nathan, Tensegrity Law Group LLP
  • Dr. Shoichi Okuyama, Okuyama & Sasajima (Japan)
  • David C.L. Perkins (Great Britain)
  • Janet A. Pioli, Brinks Gilson & Lione,
  • Susan Peacock, Esq.
  • Louis W. Tompros, Wilmer Hale
  • Philip Warrick, Klarquist Sparkman LLP 
  • Warren Woesner, Schwegman, Lundberg & Woessner, P.A.; Patents-4-Life blog
  • Richard Rainey, Executive Counsel, IP Litigation, General Electric Co. 
  • Professor W. Keith Robinson, Southern Methodist University Law School
  • Professor Christal Sheppard, University of Nebraska School of Law; former Chief IP Counsel, House Judiciary Committee.
  • Professor Matthew A. Smith, George Washington Law School; Turner Boyd LLP   

Full list of Topics

The agenda includes the topics set forth below.  Additional topics may be added to take account of changes in practice and court decisions.

Judicial Roundtable

Moderated by Gary Hoffman

Hon. James Holderman, former Chief Judge, U.S. District Court for the Northern District of Illinois

Hon. Roger T. Hughes, Federal Court of Canada  

Hon. Richard Linn, U.S. Court of Appeals for the Federal Circuit

Legislative Reforms:  We are pleased that Robert A. Armitage, former Vice-President of Eli Lilly and one of the principal drafters of the Leahy-Smith America Invents Act, will participate in the program, as well as several notable former Patent and Trademark Office officials.

International Comparative Expertise David C.L. Perkins (Great Britain) will lead a discussion on comparative issues.  Other participants include Paul Cole, editor, CIPA Guide (United Kingdom); Prof. Dr. Heinz Goddar (Germany); Hon. Roger Hughes (Canada); Otto Licks (Brazil); Professor Timo Minssen (Denmark/Sweden); and Shoichi Okuyama  (Japan).

§ 101 Patent-Eligibility, a Multi-Dimensional View:   Recent arguments at both the Federal Circuit and Supreme Court have parsed the most recent case law to the neglect of original research into the history of the law.  Despite a rich tradition of statutory open patent-eligibility going back to the 1623-1624 Statute of Monopolies and domestic statutes of 1790 and 1793 and open patent-eligibility case law throughout the nineteenth century, recent scholarship has narrowly focused on cases from just the recent past – including false characterizations of case law from “150 years” ago.   We will take a “deep dive” into multiple areas in an analysis of § 101 patent-eligibility:

  • Does Alice comply with American TRIPS Obligations? 
  • Do Alice and Myriad fit the statutory scheme explained by Judge Rich? 
  • Do patents “preempt” research as stated by Justice Breyer?
  • If an invention passes patentability muster under §§102, 103, 112, what other subject matter can be denied under § 101?
  • Should the PTO examine patentability before patent-eligibility?
  • Is statutory reform an answer? 

“Nautilus Module” will focus on a variety of issues related to §112(b):  In the first instance, the Federal Circuit “top-down” is now filling in the blanks on the law of claiming particularity in the wake of the general guidance offered by the Supreme Court in Nautilus.  At the same time, this task will be performed “bottom up” by the Patent Trial and Appeal Board. In the end, §112(b) will be a major source of administrative patent litigation as an issue perfect for the special skills of the APJ’s of the PTAB who will be best suited to make fact-based determinations whether a claim meets whatever test is determined by the Federal Circuit.

Nonobviousness where a “law of nature” is unknown:  It is taken as a given that a known natural relationship may provide motivation for a combination of that relationship with a conventional element to deny a patent (whether under § 101, § 103, or both).  But, if the natural relationship is one of “nature’s secrets” – not known to those skilled in the art – should the combination be patent-eligible and nonobvious?  (cf. Funk v. Kalo).   What motivation is there to make the claimed invention if the natural relationship is unknown to those skilled in the art?  

If the mechanism of a natural phenomenon is unknown, what motivation is there to modify the prior art?  Cf. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007 (“If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.”) (emphasis added).

What judicial weight should the Patent Office guidelines on patent-eligibility have in the face of conflicting case law? 

Should the PTAB be the voice of the Office to interpret patent-eligibility case law (vis a vis the current situation of an administrative leader under the auspices of the Under Secretary)?

Relationship between §112 Nautilus and §101 Patent-Eligibility:  To what extent does §112 provide a proper statutory basis to deny patentability to claims to innovations that are today treated under §101 patent-eligibility?  To what extent does a Nautilus-keyed broadened view of §112, coupled with traditional §§102, 103 analysis, leave room for denial of patent-eligibility under §101 beyond matters already covered by §§102, 103, and 112?

PTAB Invalidity Trials:   Former Deputy Under Secretary Teresa Stanek Rea will moderate a panel discussion of experts that will follow a keynote speech by former Deputy Patent Commissioner Stephen G. Kunin.   A current member of the PTAB is invited, subject to government approval.  Also participating will be a former Board member, the Hon. William F. Smith, as well as former PTO official Andrew S. Baluch.

Drafting the Global Patent ApplicationMultinational patent organizations have long sought a harmonized model for a basic patent application that can serve as a priority document around the world. 

  • To what extent is there a global model? 
  • To what extent do unique quirks in local laws require deviation from a global model? 
  • What is the best model for the first application that will serve for priority rights around the world?
  • What are the minimum requirements for utility?
  • Should a “problem”, “solution”, “advantage” or “object” be disclosed in the specification?  To what extent can any of such items be relied upon without disclosure?  To what extent is it “new matter” to add any of these features?
  • What are the common standards for “nonobviousness” and “inventive step”?
  • How should differences in prior art status be dealt with for earlier-filed later-published patent applications?
Presented by:
The University of Akron School of Law
Platinum Sponsor:
Sughrue Mion PLLC
Gold Sponsor:
Licks Advogados
Silver Sponsors:
Boehmert & Boehmert
Hahn Loeser
Katten Muchin Rosenman LLP
Okuyama & Sasajima
Schwegman, Lundberg & Woessner, P.A.
Oblon, Spivak, McClelland, Maier & Neustadt, LLP

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