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  • SEPs and the Autos: Lessons for the Internet of Things (RECORDING)

    Contains 4 Component(s), Includes Credits

    This webinar will discuss the importance and evolving legal concepts that inform negotiations in this area, as well practical ideas for improving approaches to licensing discussions

    As cars quickly adopt improved connectivity, SEP owners and those in auto-related industries find themselves at the center of new developments in technology and the law.  5G SEP owners and automakers are experiencing a unique collision in business and IP cultures.  The lessons that emerge will be useful for other industries that want to become part of the Internet of Things (IOT).

    Our panel includes the senior vice president of a patent pool of SEP owners geared to autos and the IOT, the director of IP at the leading ride-sharing company, and a law professor who specializes in standards.  They will focus on important and evolving legal concepts that inform negotiations in this area, as well practical ideas for improving approaches to licensing discussions.  Among the topics to be discussed:

    • Can SEP owners vary royalties based on device characteristics, or the level in the distribution chain, and remain compliant with FRAND?
    • How to establish a FRAND royalty in a new market with no comparable licenses
    • The strengths and weaknesses of patent pool solutions
    • The possible use of third-party experts to opine on the essentiality of patents included in standards
    • How negotiation issues between SEP owners and carmakers differ from issues involving smartphones
    • Other lessons applicable to the IOT


    Speakers:  

    • Jorge Contreras, University of Utah School of Law
    • Bill Harmon, Uber
    • Luke McLeroy, Avanci

  • Patent Term: The Impact of Recent Cases for Addressing Insights for Prosecution and Litigation (RECORDING)

    Contains 5 Component(s), Includes Credits

    This webinar will help patent owners and their counsel navigate both patent prosecution and litigation issues related to patent term.

    This webinar will help patent owners and their counsel navigate both patent prosecution and litigation issues related to patent term by drawing on insights from three recent Federal Circuit decisions: Novartis AG v. Ezra Ventures LLC, Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, and Supernus Pharmaceuticals, Inc. v. Iancu. Some commentators believe that these decisions give patent owners a chance to obtain potentially lucrative extensions of patent term, and that they have reined in the scope of obvious-type double-patenting.

    Ezra addresses what happens when one patent expires later than another related patent due to a patent term extension. Breckenridge deals with a scenario where one patent filed earlier expires later than another due to a 1995 law that changed the length of patent terms. Supernus limited the USPTO’s ability to reduce patent term adjustment (PTA) based on delays in prosecution.

    Our panel has vast experience with issues relating to PTA and patent term extension (PTE). It includes an in-house counsel at a medical device manufacturer, a patent prosecutor in biotech and pharma, and a life science patent litigator who represents both innovator and challenger entities. They will discuss:

    • Strategies for obtaining PTA/PTE at the USPTO, including deciding which of multiple patents covering a product are best suited for PTE
    • How to try to avoid terminal disclaimers
    • Options for applicants with pending patent applications
    • The remaining threat of double-patenting challenges in litigation


    Speakers:  

    • Jack Brennan, Fish & Richardson, P.C.
    • Jeff Hohenshell, Medtronic, Inc.
    • Nicholas Mitrokostas, Goodwin Procter, LLP

    Jack Brennan

    Fish & Richardson, P.C.

    Jack Brennan is a principal in the New York office of Fish & Richardson P.C.  His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals.  Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371.  He holds a Ph.D. in genetics.

    Jeffrey Hohenshell

    Medtronic, Inc.

    is a senior patent attorney at Medtronic. An experienced patent prosecutor and strategist, he has had success invalidating for double patenting several patents covering patient-monitoring systems that were asserted against Medtronic.

    Nicholas Mitrokostas

    Goodwin Procter LLP

    is a patent litigator and partner in Goodwin Procter’s IP Litigation group.  Nick has extensive trial and PTAB experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation.  He represents both innovator and challenger entities, is an editor of the Biosimilars Reference Guide, and co-leads a biosimilars blog, www.bigmoleculewatch.com.

  • Strategies for Addressing Patent Venue Issues (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 02/28/2019

    This webinar will discuss important Federal Circuit decisions since TC Heartland regarding venue.

    Patent venue issues continue to be the subject of much interest ‒ and litigation. This webinar will look at important Federal Circuit decisions since TC Heartland regarding venue. The panel will also give tactical tips regarding still open questions — and common battles in district courts.

    Most recently, earlier this month, the Federal Circuit refused to rehear en banc Google’s petition for a writ of mandamus that contested a decision in the Eastern District of Texas that had found venue based upon the fact that Google servers are housed in third-party facilities in the district.  The dissenting opinion stated, however, that there is “growing uncertainty among district courts and litigants as to the requirements of § 1400(b) when conducting business virtually through servers and similar equipment...”

    Our panel will not only review recent cases, but will provide insights on strategies to address venue issues.  It includes an in-house counsel who has overseen a lengthy venue fight, a litigator who won a Federal Circuit case creating new law on venue, and an expert on Federal Circuit practice and policy.  Among the subjects they will discuss are:

    • Considerations for defendants when weighing the risks of a potentially unfriendly venue vs. the cost of challenging venue
    • Conflicting district court fact-­intensive decisions over the § 1400(b) “regular and established place of business” inquiry
    • How best to approach open issues such as waiver and time period in determining venue


    Speakers:  

    • John Dragseth, Fish & Richardson, P.C.
    • Eileen Hunter, 3M Innovative Properties Co.
    • Charlie McMahon, McDermott Will & Emery

    Jack Brennan

    Fish & Richardson, P.C.

    Jack Brennan is a principal in the New York office of Fish & Richardson P.C.  His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals.  Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371.  He holds a Ph.D. in genetics.

    Eileen Hunter

    3M Innovative Properties Co.

    is Senior IP Counsel at 3M. She manages IP disputes globally, which include patent litigation venue disputes within the U.S. She also serves on 3M’s Global Trade Secret Protection Program task force. Eileen was a Partner at Faegre Baker Daniels and clerked for the Eighth Circuit Court of Appeals. She is a vice chair of IPO’s Litigation Committee.

    Charlie McMahon

    McDermott Will & Emery

    is a Partner at McDermott Will & Emery. His practice focuses on IP litigation. He successfully convinced the Federal Circuit to vacate an Eastern District of Texas ruling that ZTE, which had had contracted with a call center in Plano, Texas, could be sued in the district. In that case, the Federal Circuit clarified that, upon motion by the defendant challenging venue in a patent case, the plaintiff bore the burden of establishing proper venue.

  • Tech Transactions after Helsinn (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 02/13/2019

    This webinar will discuss the Supreme's Court decision last month in Helsinn v. Teva highlights.

    The Supreme Court’s decision last month in Helsinn v. Teva highlights the importance of carefully evaluating the structure of technology-driven investments, joint ventures, joint development agreements, and other supply arrangements to minimize the likelihood that a conditional transaction will be characterized as an offer to sell a later-patented invention. These issues are particularly applicable to companies seeking to invest in the development of emerging technologies (or pharmaceuticals) that are not yet the subject of patent applications, and the attorneys who represent them.

    Through the use of hypotheticals, our panelists will explore the impact of Helsinn and other cases related to the on-sale bar ‒ and provide important takeaways for counsel.

    They will analyze key decisions, including Barry v. Medtronic, a recent Federal Circuit opinion subsequent to Helsinn decision, which addressed both the “public use” and “on-sale” bars. They will also address the en banc Federal Circuit decision in Medicines Company v. Hospira, which may now take on additional importance. In that case, the Federal Circuit held that a supplier’s provision of “manufacturing services” did not invalidate product-by-process claims, overruling earlier decisions "to the extent language in those cases might be viewed as dictating a different result here.” But the opinion added the important caveat that the Court is not creating "a blanket 'supplier exception'.” 

    Our panelists will provide insights on the combined impact of these opinions, as well as practical tips on how to best navigate on-sale bar issues in light of them.

    Speakers:  

    • Jennifer Carnahan, Dow Chemical Company
    • Randall Colson, Haynes and Boone, LLP
    • Robert Isackson, Leason Ellis

    Jennifer Carnahan

    Dow Chemical Company

    is Senior Counsel at The Dow Chemical Co. She advises clients on strategic IP matters including agreements for joint development, licensing and nondisclosure. Additionally, she has global IP responsibility for several Dow businesses, which includes portfolio management, freedom of action assessments, and general counseling.  Earlier she worked as a patent attorney at Shell Oil Co. Jennifer holds a Ph.D. in physical chemistry. She is co-Chair of the IPO Licensing Committee.

    Randall Colson

    Haynes and Boone, LLP

    is the head of the Technology Transactions and Technology M&A Practice Groups at Haynes & Boone. He has extensive experience counseling clients with a myriad of technology and IP-related transactions, including outsourcing, software development and licensing, and cloud computing. Randy represents both providers and customers of these services. He also provides counseling on the use and procurement of patents, and due diligence related to joint ventures. Prior to law school, Randy worked as an electrical engineer designing computer hardware and software.

    Robert Isackson

    Leason Ellis

    Robert Isackson is a partner at Leason Ellis. He has a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues. His practice includes appellate litigation, strategic counseling, providing advice and opinions on freedom to operate and litigation risks, and IP transactions. He is a member of IPO’s Trade Secrets and Amicus Brief Committees and was the author of IPO’s amicus brief to the U.S. Supreme Court in Helsinn.

  • Disqualification: Lessons from Recent Cases

    Contains 13 Component(s), Includes Credits

    This webinar will discuss responsibility decisions as well as the approaches taken by courts when considering disqualification of counsel

    CLE NOTICE: IPO will apply for Ethics credit for this webinar. Please note that not all states will approve for Ethics credit.

    Conflicts of interest in litigation settings plague law firms and their clients, spurred by long term trends such as the advent of megafirms, the proliferation of corporate subsidiaries, and acquisitions.  It is thought that most difficult disputes never become public.  But disqualification proceedings in courtrooms are far from rare.  This webinar will extract lessons for both law firms and their corporate clients on how to try to avoid this minefield, including by analyzing recent disqualification fights in both state and federal courts. 

    In addition to the professional responsibility issues that are implicated, the economic consequences of disqualification loom large.  Law firms can suffer damage to their reputation just by being the target of a disqualification proceeding.  In addition, disqualification can be financially costly.

    This seminar will look at professional responsibility decisions, as well as the approaches taken by courts when considering disqualification of counsel.  It will discuss whether court disqualification will generally occur solely because of an ethical violation — or whether the totality of the circumstances will be analyzed.

    Our panel includes a senior litigation counsel at a major tech company, the general counsel of a large international law firm, and an attorney who specializes in legal professional responsibility and ethics.  They will analyze recent cases with conflicts issues, including those relating to:

    • Corporate affiliations
    • Advance conflict waivers
    • Marketing conversations with prospective clients
    • Lateral hires
    • The hot potato doctrine


    Speakers:  

    • William Freivogel, Independent Consultant
    • Martin Kaminsky, Greenberg Traurig LLP
    • Deanna Kwong, Hewlett Packard Enterprise

    Neal Dahiya

    Bristol-Myers Squibb Company

    is an assistant general counsel at Bristol-Myers Squibb, handling global patent litigations as well as business development for the IP group. Prior to joining BMS in 2012, Neal was in private practice for nine years at major law firms in New York.

    Martin Kaminsky

    Greenberg Traurig LLP

    serves as the general counsel of Greenberg Traurig, an international law firm with a large IP litigation practice.  Previously, Marty represented clients that included public companies, exchanges, and professional services firms and their principals in litigation, including professional responsibility matters.  He is author of “Legal and Ethical Issues Involved in Representing Affiliates or Principals of Clients.”

    Deanna Kwong

    Hewlett Packard Enterprise

    is senior IP litigation counsel within the Office of Legal and Administrative Affairs at Hewlett Packard Enterprise Company (HPE).  She and the HPE IP litigation team are responsible for managing all IP lawsuits that are filed against or by HPE worldwide.  Prior to joining HPE, Deanna was in private practice for over a decade.  Deanna serves on the IPO Damages Committee.

  • IPR Estoppel One Year After SAS

    Contains 13 Component(s), Includes Credits

    This webinar will address how district courts have applied IPR estoppel in the year since SAS was decided

    In SAS v. Iancu, the U.S. Supreme Court required the PTAB to decide the patentability of every claim challenged in a petition for inter partes review. SAS did not directly address IPR estoppel, but its holding has indirectly broadened this doctrine. This development is now playing itself out in the courts, with significant consequences for all those involved.

    This seminar will address how district courts have applied IPR estoppel in the year since SAS was decided. Panelists will not only highlight recent cases, but will also provide tactics for both plaintiffs and defendants to make arguments about the proper scope of IPR estoppel in district court litigation. This is ever more important because of the large shift in district court fights to a case-by-case analysis to determine what art “reasonably could have been raised.”

    The panel will include the post-grant proceedings director of a major patent owner and two law firm attorneys with vast experience before the PTAB, district courts, and the Federal Circuit. The topics they will address include:

    • SiOnyx v. Hamamatsu Photonics (D. Mass.) and the principle that “after SAS [a narrow view of AIA estoppel] cannot be correct”
    • Oil-Dri Corp. of America v. Nestle Purina Co. (N.D. Ill.) and the increasing importance of on-sale prior art that can be used in district court, but that could not have been raised in the IPR
    • The pending Federal Circuit appeal in BTG International Ltd. et al. v. Amneal Pharmaceuticals LLC et al. and whether the America Invents Act stops patent challengers who won at the PTAB from pursuing their winning arguments in court

    Speakers:  

    • Grantland Drutchas, McDonnell Boehnen Hulbert & Berghoff LLP
    • James Hietala, Intellectual Ventures Management, LLC
    • Eliot Williams, Baker Botts LLP

    Grantland Drutchas

    McDonnell Boehnen Hulbert & Berghoff LLP

    is a founder and current managing partner of McDonnell Boehnen Hulbert & Berghoff LLP. He has more than 20 years of experience in the practice of IP law, with a particular emphasis on litigation, licensing, and client counseling. Grant serves as chair of the firm’s PTAB Trials Practice Group, its Licensing Practice Group, and its Litigation & Appeals Practice Group. His experience includes both jury and bench trials, as well as arguing before the U.S. Court of Appeals for the Federal Circuit.  He is a vice chair of IPO’s Pharmaceutical and Biotechnology Issues committee.

    James Hietala

    Intellectual Ventures Management LLC

    is director of post-grant proceedings at Intellectual Ventures Management LLC. He has, at times, managed 30 simultaneous cases at the PTAB. He also plays an influential role at his company in setting the strategic direction on post-grant (IPR, CBM, and reexam) proceedings involving mechanical and electrical technology. Previously, James worked in private practice. He is a member of the IPO Post-Grant Patent Office Practice committee.

    Eliot Williams

    Baker Botts LLP

    is co-chair of the PTAB practice at Baker Botts.  He has represented clients in many CBMs and IPRs, as well as in district court. He has appeared as counsel in more than 100 PTAB trials, making him one of the most experienced PTAB litigators nationwide.

  • Summary Judgment After Berkheimer

    Contains 5 Component(s), Includes Credits Recorded On: 01/31/2019

    This webinar will examine what’s been happening at district courts since Berkheimer v HP Inc., the early 2018 Federal Circuit decision indicating that the determination of patent eligibility under section 101 is ultimately a question of law, but may have factual underpinnings.

    This webinar will examine what’s been happening at district courts since Berkheimer v HP Inc., the early 2018 Federal Circuit decision indicating that the determination of patent eligibility under section 101 is ultimately a question of law, but may have factual underpinnings.  Our expert panel of veteran litigators will extract lessons for both plaintiffs and defendants.

    Berkheimer has had an extensive reach.  In the months since it was decided, more than fifty-five district court opinions have cited it – with divergent outcomes.  District courts remain willing to invalidate patents under section 101 at the summary judgment or motion to dismiss stage.  They have also denied summary judgment or a motion to dismiss on a section 101 challenge, pending consideration of additional evidence outside the scope of the pleadings.

    This is the confusing landscape in which litigators must operate today and for at least the immediate future.  HP has filed a petition for certiorari to the U.S. Supreme Court.  Yet, even if cert. is granted to HP, a Supreme Court decision is still a long way off.

    Our panelists will consider and analyze:

    • Cases referencing Berkheimer where early 35 U.S.C. § 101 challenges were granted, such as iSentium v. Bloomberg Fin. (S.D.N.Y.)
    • Finjan, Inc. v. Juniper Network, Inc. (N.D. Cal.), where the court ordered the section 101 invalidity defense be decided at trial, but the ultimate jury instructions and verdict form did not address Section 101
    • Data Engine v. Google (D.Del), where the court granted a motion for judgment on the pleadings, but was reversed-in-part by the Federal Circuit
    • When, in trial proceedings, it’s best to pose, or to resist, a § 101 challenge
    • The distinctive approach taken by some judges in the Eastern District of Texas

    Speakers:  

    • Christopher Hughes, Cadwalader, Wickersham & Taft LLP
    • Frank Nuzzi, Siemens Corp.
    • Jonathan Waldrop, Kasowitz Benson Torres & Friedman, LLP

    Christopher Hughes

    Cadwalader, Wickersham & Taft LLP

     is a Senior Counsel at Cadwalader Wickersham & Taft and head of its IP Group.  Chris has more than 40 years of experience in complex patent litigations and trials in district courts and at the ITC, as well as in arbitrations, and has served as a special master. He has represented clients in several successful motions for summary judgment.

    Frank Nuzzi

    Siemens Corp.

    is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey. He manages simple and complex U.S. patent litigation for Siemens. Prior to joining Siemens, Frank was in the litigation department of Clifford Chance.

    Jonathan Waldrop

    Kasowitz Benson Torres & Friedman, LLP

    a patent litigator and managing partner of the Silicon Valley office of Kasowitz Benson Torres LLP, represents industry-leading companies such as Google, Uber and Adobe. He helped Google secure a complete dismissal on 101 grounds in a six-patent infringement case brought by Data Engine Technologies in the District of Delaware. That decision was later overturned by the Federal Circuit.

  • Section 101: Revised USPTO Guidance on Patent Eligibilty

    Contains 5 Component(s), Includes Credits Recorded On: 01/23/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    This webinar features the USPTO’s Deputy Commissioner for Patent Examination Policy, a top in-house counsel, and an experienced patent prosecutor.  They will analyze the USPTO’s revised guidance on patent eligibility that was issued earlier this month ‒ and discuss how the Office is expected apply the U.S. Supreme Court’s Alice/Mayo test for subject matter eligibility going forward.

    The new guidance supersedes conflicting sections in the Manual of Patent Examining Procedure, prior guidance, and prior memoranda.  The panel will elucidate the key ways the new guidance is expected to impact criteria and procedures.  In addition, the panel will explore:

    • What some see as remaining ambiguities in the guidance, such as the determination of what constitutes a “practical application”
    • Arguments that could be made to examiners based on the new guidance
    • How to best make a request to file supplemental briefing to show how claims are compliant with the new guidance
    • The challenges the USPTO faces in interpreting Federal Circuit case law on this topic

    Speakers:  

    • Robert Bahr, U.S. Patent & Trademark Office 
    • Gary Ganzi, Evoqua Water Technologies
    • Michelle Holoubek, Sterne, Kessler, Goldstein & Fox, PLLC

    Robert Bahr

    U.S. Patent & Trademark Office

    is Deputy Commissioner for Patent Examination Policy at the USPTO,
    overseeing examining practice and procedure and establishing patent examination
    and documentation policy standards for the Commissioner for Patents. Prior to
    his current position, Mr. Bahr served as the Senior Patent Counsel to the
    Deputy Commissioner for Patent Examination Policy, where he was involved in
    virtually every patents-related rulemaking since 1995. He began his career at
    the USPTO in 1984 as a patent examiner.

    Gary Ganzi

    Evoqua Water Technologies LLC

    is Senior Counsel and Head of Intellectual Property for Evoqua Water Technologies, as he was for its corporate predecessor Siemens Water Technologies.  He is named as an inventor on 35 U.S. patents in fields related to water treatment.  Gary serves on the Board of Directors of IPO and as board liaison of the IPO U.S. Patent Office Practice Committee.

    Michelle Holoubek

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a Director in the Electronics Group at Sterne Kessler Goldstein &
    Fox. She has handled hundreds of software and business method applications at
    the USPTO. Patent-eligible subject matter is her special area of expertise. In
    addition to the preparation and prosecution of patents, she has been lead
    counsel in IPRs, CBMs, and reexaminations for both patent owners and
    challengers.

  • Extraterritorial Liability: Spotlight After WesternGeco

    Contains 5 Component(s), Includes Credits Recorded On: 01/17/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    The case law regarding extraterritorial liability for patent infringement is extraordinarily complicated ‒ and evolving.

    Last year the Supreme Court decided WesternGeco v. ION, widening the scope of 35 U.S.C. § 271(f) by holding that once a domestic act of infringement has been proven under § 271(f)(2), damages resulting from the infringement may be recoverable regardless of where they occur in the world.

    This month the Supreme Court asked for the views of the Solicitor General regarding the cert. petition in Texas Advanced Optoelectronic Solutions v. Renesas Electronics America. That case challenges the holding inTransOcean v. Maersk, a 2010 Federal Circuit opinion that found an offer to sell was “within the United States,” even though negotiation and execution of the contract took place abroad, when the two contracting entities were U.S. companies and delivery was to be in the U.S.

    Our panel of experts will discuss how district courts have applied WesternGeco to date (including in Power Integrations v. Fairchild in the District of Delaware) and the open questions that remain. They will also analyze relevant case law at both the Supreme Court and the Federal Circuit. In addition, they will also address the challenges in litigating these issues. The cases to be discussed include:

    • Halo v. Pulse (Fed. Circ. 2014)
    • NTP v. Rim (Fed. Circ. 2005)
    • Microsoft v. AT&T (S. Ct. 2007)
    • Cardiac Pacemakers v. St. Jude Medical (Fed. Circ. 2009) and
    • Life Technologies v. Promega (S. Ct. 2017)

    Speakers:  

    • Danielle Joy Healey, Fish & Richardson, PC 
    • Prof. Timothy Holbrook, Emory University School of Law 
    • Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP

    Danielle (DJ) Healey

    Fish & Richardson, PC

    is a Senior Principal at Fish & Richardson, PC. A patent litigator,
    DJ has tried cases in the federal courts, ITC, and various arbitration venues.
    She has argued appeals before the Federal Circuit, Fourth Circuit,
    and Fifth Circuit, and has planned and executed multi-jurisdictional
    strategies involving courts and government agencies in the U.S. and Europe. She
    also serves as an arbitrator and mediator. She is the author of the recent
    article “Patent Infringement Liability
    for Extraterritorial Acts” 
    and was one of the attorneys for
    ION Geophysical in the Supreme Court.

    Timothy Holbrook

    Emory University School of Law

    is a professor at the Emory University School of Law, as well as the University’s vice provost for faculty affairs. A leading patent law scholar,
    his work has been cited in briefs before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit itself has cited his work. He is the author of “Boundaries, Extraterritoriality, and Patent Infringement Damages” as well as the forthcoming “Extraterritoriality and Proximate Cause after WesternGeco.”

    Thomas Saunders

    Wilmer Cutler Pickering Hale and Dorr, LLP

    is a partner, appellate advocate, and litigator at Wilmer Cutler Pickering Hale and Dorr LLP. His practice focuses on IP. In addition to having won several cases at the Federal Circuit, Tom argued and won Kimble v. Marvel Enterprises, Inc.,(S. Ct. 2015), a case about collection of royalties after patent expiration,and was part of the team representing Promega in Life Technologies v. Promega at both the Federal Circuit and the Supreme Court. Tom served as a clerk to the Hon. Ruth Bader Ginsburg of the U.S. Supreme Court.

  • Inequitable Conduct After Regeneron: What Litigators, Patent Prosecutors and Patent Owners Need to Know

    Contains 5 Component(s), Includes Credits Recorded On: 01/10/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    A Federal Circuit decision in 2017 found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. This widened the scope of possible inequitable conduct claims, which traditionally focused only on the prosecution of the patent before the USPTO.

    Critics of the decision hoped first for an en banc rehearing by the Federal Circuit — and then that the Supreme Court would grant Regeneron’s petition for certiorari. Those hopes were dashed late last year.

    This webinar features experts who will assess Regeneron’s significant ongoing impact on litigation and patent prosecution. The panel includes a patent prosecutor who urged the Supreme Court to grant cert. to Regeneron, a leading academic expert on legal ethics and IP, and a patent litigator who represented Therasense at the en banc Federal Circuit in Therasense v. Becton Dickenson (2011), a case that raised the bar for proving inequitable conduct. The panelists will discuss:

    • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron.
    • Howmedica Osteonics v. Zimmer, in the District of New Jersey (2018), where the court granted the defendant’s motion for $13 million in attorney fees and costs in part because of plaintiff’s inequitable conduct before the USPTO
    • The relationship between materiality under Therasense, the court’s claim construction, and the prosecutor’s judgment about what is cumulative
    • Approaches that may be taken by defendants’ experts at trial
    • The reinforced imperative for patent owners who are plaintiffs to closely oversee aggressive litigation counsel

    Speakers:

    • David Hricik, Mercer University School of Law
    • Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
    • Rohit Singla, Munger, Tolles & Olson LLP

    David Hricik

    Mercer University School of Law

    is a professor at Mercer University School of Law, where he teaches legal ethics, patent law, and federal civil procedure.  In 2012-13, he served as a law clerk to Chief Judge Randall Rader at the Federal Circuit. He also is counsel at Taylor English Duma, LLP, where represents clients in patent cases and other complex types of litigation. David has authored a treatise on ethical issues in patent litigation and co-authored a treatise on ethical issues in patent prosecution.

    Kevin Noonan

    McDonnell Boehnen Hulbert & Berghoff LLP

    is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and chair of its Biotechnology & Pharmaceuticals Practice Group. A Ph.D. in molecular biology, Kevin’s practice involves all aspects of patent prosecution and litigation. He is a founding author of the Patent Docs blog. Kevin authored an amicus brief in favor of Regeneron’s petition for certiorari to the U.S. Supreme Court.

    Rohit Singla

    Munger, Tolles & Olson LLP

    is a litigation partner at Munger, Tolles & Olson LLP who focuses on antitrust and IP disputes in high tech industries. Rohit clerked for Judge Alfred Goodwin of the U.S. Court of Appeals for the Ninth Circuit. He has argued cases in the Ninth, Eleventh, and Federal Circuits. As lead appellate counsel for TheraSense, he persuaded the Federal Circuit to accept TheraSense v. Becton Dickinson for en banc review.