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. (more…)

Patent Law Institute Live Blog: Ethics – from the USPTO to Trial

Welcome to the final panel of the day! The Patent Law Institute live blog concludes with the ethics portion of the seminar. The panel is titled, “Ethics: from the USPTO to Trial”.  The panel is led by Kenneth W. Brothers, a partner in the Intellectual Property Practice of Dickstein Shapiro. The ethics panel discusses the quandary of single advocacy at the PTO, facing requirements for information, cross citing case-to-case in the PTO, and other advocacy ethics issues. Here are the highlights: (more…)

Patent Law Institute Live Blog: What’s Keeping Corporate Counsel Awake at Night?

Welcome back from the networking break! The Patent Law Institute live blog continues with coverage of the panel, “What’s Keeping Corporate Counsel Awake at Night?”  This panel features Mark Costello, Alyssa Harvey Dawson, Colm J. Dobbyn, David W. Highet, and David M. Shofi. These panelists spend time discussing the effects of court decisions and USPTO activity and what a corporate counsel’s concerns are regarding newly enacted legislation. Here are the highlights:  (more…)

Patent Law Institute Live Blog: Judges’ Panel

Welcome back from the lunch break! The Patent Law Institute live blog continues with the “Judges Panel” which presents judiciary perspectives on effective trial presentation and when and how discovery disputes should be brought before the court, in particular the patent pilot program. The panel features Douglas R. Nemec as moderator and includes Hon. Tonianne J. Bongiovanni, Magistrate Judge at the United States District Court, District of New Jersey, Hon. Denise Cote, District Judge at the United States District Court, Southern District of New York, and Hon. Mitchell S. Goldberg, District Judge at the United States District Court, Eastern District of Pennsylvania. Here are the highlights:

Hon. Denise Cote:

  • Of the people who didn’t chose to be in the patent project pilot, 4/5 judges kept their cases. Only in 6 cases out of 26 did a judge asked to have the case reassigned to a patent project judge. Federal judges enjoy patent cases even though they don’t have a patent background. Patent cases are intellectually challenging and judges enjoy the challenge and the work. A new patent case can bring an opportunity for a judge to learn about a new field in science or technology that they wouldn’t have been exposed to otherwise.
  • There’s no local patent rules because the patent cases tend to not be one size fits all.

Hon. Bongiovanni

  • Patent law is a difficult area, especially the pharmaceutical area, a judge can’t intuit a lot of the underlying issues. Despite patent law is so technical, very may judges won’t dodge hearing a patent case.
  • The patent rules have streamlined the time lines for initial discovery. Most interesting is if the attorneys have an e-discovery plan in place.
  • Know that the judge’s time is sensitive and needs you to get to the point and needs you to cooperate with your adversaries.

Hon. Goldberg

  • The backgrounds of patent attorneys is equally intimidating and interesting. There was no adoption of local patent rules in the Eastern District of Pennsylvania.
  • Because judges want to actually learn about what is underlying the case, patent attorneys are encouraged to share their discovery as early as possible.
  • Try to understand that sometimes its possible to give a judge too much to read.

Patent Law Institute Live Blog: Litigating in the International Trade Commission

The Patent Law Institute live blog continues with the panel entitled, “Litigating in the International Trade Commission”. This panel features Asim Bhansali, Partner at Keker & Van Nest LLP. Asim’s discussion focuses on the increasing popularity of the ITC forum for domestic and foreign litigants and the remedies the ITC provides. Asim also discusses parallel district court litigation. Here are some of the highlights (more…)