Best of the 6th Annual Patent Law Institute


We here at the Practising Law Institute are pretty excited at how this past week’s 6th Annual Patent Law Institute exceeded expectations in the caliber and frankness of the featured panelists. The panels ranged from patent prosecution and litigation, to strategic and transactional discussions, to the ultimate in panels: the judges’ panel where federal & district court judges discussed the most relevant issues facing their courts along with some of the top patent attorneys in the country. If you missed this amazing institute, you’re not out of luck! The Patent Law Institute will have a second run in San Francisco, California from March 19-20, 2012, and registration is still open. Until then, here is a list of highlights, a best of the best if you will, from select panels throughout the Patent Law Institute.

PTO Keynote Address: Bob L. Stoll gave the keynote address on the first day of the Institute. He has had a long career with the USPTO, serving as Commissioner for Patents, Dean of Training and Education, and director of the Office of Enforcement for the United States Patent and Trademark Office (USPTO). Although Bob is currently at Drinker, Biddle, & Reath LLP, he was able to provide in-depth knowledge of how the PTO’s goals are to reduce pendency and how there has been a focus on clearing the oldest patent application for the sake of efficiency. Bob also shared that the extremely critical provisions of the AIA that will change the way patent prosecution will occur are the following: supplemental examination, inter partes review, and post grant review.

Dialogue Between the Bench and Bar: This panel had a truly great lineup including Hon. Randall R. Rader,the Chief Judge of the Federal Circuit and Hon. William G. Young,  United States District Judge for the District of Massachusetts and a former Justice of the Massachusetts Superior Court. The judges discusses and debated the role of the United States Supreme Court and concluded the Supreme Court sees itself as a court of harmonization, taking cases not to correct a past judicial error but rather they take cases to unify the law across the land. The panel also featured leading members of the patent appellate bar such as Donald R. Dunner,  Seth P. WaxmanDean John M. Whealan.

Litigating Against NPEs: This panel featured P. Anthony Sammi, Partner at Skadden, Arps, Slate, Meagher & Flom LLP discussing his personal experience with litigating against non-practicing entities within the Eastern District of Texas and with federal litigation in general. Tony placed major emphasis on not underestimating the strength or litigation savvy of an NPE. They are very skilled federal litigators. Patent litigation is simply a subset of litigation. At the end of the day, you’re in a federal litigation in front of a jury. Therefore, the message was to choose your battles wisely: be prepared to go to litigation when dealing with an NPE.

Patent Quality and Cost-Effectiveness – Views from In-House: This panel’s featured panelists were Valerie CallowaySerena Farquharson-Torres, and David M. Shofi. Together they shared the in-house perspective on the strategies for enhancing the quality of a portfolio, and the strategic use of a portfolio to deter patent threats. An important tip the panelists all agreed on was to  make yourself available to the inventors that work for your client. Some of them may never have had experience with patents. Make the invention submission as easy as possible for your client’s team of inventors. It’s essential to have an IP liaison to go back and forth between the R&D and the inventors and the legal team.  Another great tip was for the outside counsel in the room:  in-house strategies can still assist outside counsel in being better attorneys for their own clients.

Judges’ Panel: This panel presented judiciary perspectives on effective trial presentation and in particular the patent pilot program. The panel featured Douglas R. Nemec as moderator, with Hon. Tonianne J. Bongiovanni, Magistrate Judge, United States District Court, District of New Jersey, Hon. Denise Cote, District Judge, United States District Court, Southern District of New York, and Hon. Mitchell S. Goldberg, District Judge, United States District Court, Eastern District of Pennsylvania. The panel revolved around the mutual agreement that patent attorneys present some of the most intellectually challenging cases before the court, and although there is a lack of patent training behind the bench, judges more often than not relish the opportunity to hear a patent case.

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