Feb. 10-11, 2014
Second Annual Naples Midwinter
Patent Experts Conference
$475 before Jan. 15; $600 thereafter
Welcome reception evening of Feb. 10
Naples Hilton Hotel, Naples, Fla.
Online: Event Registration Form
Up to 6.5 hours of CLE will be requested
The University of Akron School of Law will host the Second Annual Naples Midwinter Patent Experts Conference in Naples, Florida February 10-11, 2014. The conference will be held at the Naples Hilton Hotel. The program, organized by Hal Wegner and chaired by the director of Akron's IP program, Prof. Jeffrey M. Samuels, will include a discussion by leading experts on a host of issues of current interest. Sponsors to date include Sughrue Mion PLLC and Woodcock Washburn.
The faculty for the program includes, from the judiciary, the Hon. Kathleen O'Malley and the Hon. Richard Linn, of the Federal Circuit, as well the Hon. Roger T. Hughes, of the Federal Court of Canada. From the executive branch, the current acting director of the PTO, the Hon. Teresa Stanek Rea, will participate, as will the current Chairman of the Patent Trial and Appeal Board, James S. Smith, and former Administrative Patent Judge William F. Smith. Former PTO Deputy Director Sharon Barner and former Commissioner for Patents Robert Stoll will also participate. Robert A. Armitage, the father of the Leahy-Smith America Invents Act, will also be a featured participant.
A number of law professors who specialize in patent law are also included in the program. They include Dean Timothy Holbrook and Professors Timo Minssen, Christal Sheppard, Dennis Crouch, Jason Rantanen, W. Keith Robinson, William Hubbard and Dr. Heinz Goddar. Senior corporate lawyers include Sharon R. Barner, Vice-President of Cummins Inc., and Richard Rainey, in charge of worldwide IP litigation for GE.
In view of the grant of certiorari in new cases as well as the rapid progress of patent legislation for “abusive” litigation, the topics for the Conference have been updated to include five components outlined below. General information about the Conference is available from Akron Law, the sponsoring organization, including on line reservation information at the website link at the top of the page.
(I) VIEWS FROM THE TOP
What’s Next at the PTO: Remarks from former Under Secretary Teresa Stanek Rea on a Bright Future for the Patent Office. Comments from former Commissioner Robert Stoll.
A Judicial Roundtable: The Hon. Kathleen O’Malley, Hon. Roger Hughes, Hon. Richard Linn and the Hon. Teresa Stanek Rea; Gary Hoffman, moderator. The panelists will explore the intersections among, the different burdens of proof applied by, and the complications arising from parallel actions at the USPTO, the District Courts and the ITC in the current statutory scheme.
(II) SUPREME COURT IMPACT ON PATENT LAW AND PRACTICE
Nautilis v. Biosig: Will § 112(b) become the “new Bilski” as the Court reconsiders indefiniteness under the 1942 United Carbon case. Federal Circuit “insolubly ambiguous” test vs. Canadian “avoidably ambiguous” test of Lord Loreborn.
Alice v. CLS Bank: Beyond “Bilski”, Defining the Scope of Subject Matter Patent-Eligibility: What’s new beyond Bilski. Prof. Hubbard’s paper, The Debilitating Effect of Strong Patents. Do patents “preempt” research: Should the Federal Circuit renounce its limited view of the right to experiment on a patented invention? What is the European approach to § 101 patent-eligibility issues?
Limelight v. Akamai: Will the Supreme Court reverse the Federal Circuit “induced infringement” creation of liability for divided infringement? What practical claim drafting steps will avoid the problem altogether: “How to” draft Limelight-proofed claims. Limelight in the broader context of the “all elements” rule: Drafting shorter claims with fewer elements to obtain the broadest protection.
Octane Fitness; Highmark: Will the Supreme Court overrule the rigid Federal Circuit test for fee shifting to moot or mitigate the need for legislation? Should patentees be encouraged to make post-patent claim corrections by eliminating “intervening rights” to narrowed claims by overruling Seattle Box: A legislative proposal to permit avoidance of the aftermath of Nautilus v. Biosig.
(III) LEGISLATION: CURRENT AND FUTURE ISSUES.
“Abusive” patent litigation, Judicial or Legislative Solution? Will decisions in Octane Fitness or Highmark overrule the rigid Federal Circuit rule for fee shifting under § 285? Is the Goodlatte bill (passed by the House and now at the Senate) a good idea or legislative meddling with areas reserved for the Judiciary?
Clarifying Post-Grant Amendments: A legislative proposal to permit clarification of claimed subject matter to avoid the aftermath of Nautilus v. Biosig changes in the law of § 112(b) without intervening rights.
State Government Actions against “Trolls” bringing suit against local industries: Is there a conflict with Federal law?
New Patent Legislation: A vision for the future for improvements to the patent system by a principal draftsman of the America Invents Act, Robert A. Armitage.
(IV) THE NEW PTAB:
The latest practice advice from the experts on PTAB post-grant proceedings.
(V) PATENT DRAFTING
“Inventive Step” vs. KSR Nonobviousness: The European requirement for an “inventive step” is defined by the EPC treaty as a requirement for nonobviousness. So there is an apparently identical statutory and treaty standard for the United States and Europe. But, there are numerous points of difference: What are the similarities and differences between the American KSR and European “problem”/“solution” approaches to nonobviousness based upon a combination of references: What motiviation needs to be shown to combine references under both theories? Similarities? Differences?
KSR-Focused Drafting without a “Background” Section: What statutory requirements are met by a discussion of the prior art, “problems” and other factors? What admissions are created by a “Background” section? What ambiguities are created as to claim definition and scope by conflicting usage in the “Background” vs. the claims? Given the admissions as to KSR factors that may be inherent in usage of the “problem”/“solution” approach, are the benefits of that approach for Europe sufficient to outweigh the KSR-keyed problems of admissions in the United States? Is there a way to use the “problem”/“solution” approach without creating KSR issues in the United States?
Claim Definiteness: What practical claim drafting measures should be taken to avoid the impact on § 112(b) indefiniteness likely in Nautilis v. Biosig? Will “means”-defined element claiming survive?
Patent-Eligibility: What claim drafting steps should be taken to deal with § 101 issues in Alice v. CLS Bank?
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