NAPLES MIDWINTER CONFRENCE TOPICS
Topics to be Considered
Federal Circuit Exclusive Appellate Patent Jurisdiction: The proposals by Professor Duffy and others including Seventh Circuit Chief Judge Diane P. Wood to provide for parallel appellate routes in patent cases.
“Indefiniteness”, the New “Bilski”: The Supreme Court Nautilus petition resurrects the ghost of the 1942 United Carbon case which could shift software challenges from § 101 eligibility to § 112 indefiniteness – and open the door to parallel challenges in all areas of technology; prophylactic actions patent drafters can take to avoid the coming era of “indefiniteness” scrutiny.
§ 101 Eligibility and the “Research Preemption”: What may happen in WildTangent v. Ultramercial, Alice v. CLS Bank and Accenture Global; why the Supreme Court may never moderate its anti-eligibility views in Bilski, Prometheus and Myriad without a clear en banc signal from the Federal Circuit that it has abandoned its Prometheus denial of a right to experiment on a patented invention.
KSR after Seven Years – What’s New under the “New” Federal Circuit: What’s new, and what’s likely to happen under the new composition of the Federal Circuit with a 50 % turnover since 2010, with further changes likely; what patent drafters can do to mitigate the coming post-KSR era.
KSR after Seven Years –Comparative Lessons View Overseas: Lessons from the law of “inventive step” from abroad; crafting patent strategies to gain protection in both the United States and overseas under the differing standards.
Miami as a Center of Patent Litigation: The Southern District of Florida is now one of the most popular venues for patent litigation. What differentiates Miami patent litigation from the rest of the country? What litigants need to know.
Federal Circuit “Deference” to the Trial Courts: What will the Supreme Court do when it faces a petition from the expected split en banc decision in Lighting Ballast on claim construction? On other issues as in Highmark v. Allcare? Should the same standards apply to reviews from the Patent Office?
Patent Office “Broadest Reasonable Construction” Claiming: Given that PTAB trial decisions on granted patents provide no legal right to amend claims and that due to intervening rights there often is no practical right to amend, should claims in a PTAB trial be treated differently than in a Court proceeding?
Fresenius v. Baxter: Expected Supreme Court challenge asking when does a Patent Office post-grant invalidity ruling trump a trial court infringement verdict? Implications for new PTAB procedures.
The “All Elements” Patent Infringement Trap: No matter whether the Court grants certiorari in Limelight v. Akamai it is inevitable that the “all elements” rule will return at some point to the Supreme Court. What steps can patent drafters take to avoid Limelight problems? What other problems can be foreseen under the “all elements” rule?
Post-MedImmune Licensing Practice: Implications of the Medtronic Supreme Court case (argument Nov. 5, 2013), on patent licensing in the wake of MedImmune; long range implications.
In re Packard Miyazaki Indefiniteness: Does the Patent Office standard of Ex parte Miyazaki (claim with broad and narrow interpretation fatally indefinite under § 112(b)) trump Athletic Alternatives (maintaining validity but with narrower interpretation)?
Infringement Extraterritoriality: The Maersk Drilling Supreme Court challenge to the Federal Circuit Transocean ruling that a Scandinavian offer for sale may constitute a § 271(a) infringing offer? Implications for other extraterritoriality challenges.
ITC “Domestic Industry” Requirement: The Supreme Court Nokia question “[w]hether the ‘domestic industry’ requirement of section 337 is satisfied by ‘licensing alone’ despite the absence of proof of ‘articles protected by the patent.’”
“Massachusetts v. Utah” Jurisdiction; Sovereign Immunity: Federal Circuit petition challenges denial of Supreme Court original jurisdiction in disputes between two state governments in University of Utah v. Max-Planck-Gesellschaft; sovereign immunity issues.
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