Law Seminars International Presents: A One-Day In-Depth Workshop on

Patent Strategies After the America Invents Act (AIA)
New PTO Rules and Practical tips for addressing new provisions

(For this past program, we offer two options for purchase: a Homestudy (DVD and written materials) or written materials alone.)

March 19, 2012
Hotel Kabuki in San Francisco, CA

Who Should Order This Homestudy

All attorneys, business executives and expert witnesses involved in patent enforcement and litigation

Why You Should Order

This past year has seen the most significant reform of the U.S. patent system in sixty years, the America Invents Act (AIA). Although some of the consequences of the historic shift to a first-to-file system won't be fully realized for another 12 months, many of the law's provisions will result in substantial immediate and near-term changes. Prosecutors, litigators and licensing professionals will have to adapt their practices to this new reality.

In this intensive one-day seminar, our distinguished faculty of nationally respected patent experts will discuss the provisions of the AIA that will require immediate adaptation by successful patent professionals, as well as the impacts that you can address later if you start thinking about them right away. You will learn new strategies for patent-related contracts and for potential and current infringement litigation from both a plaintiff's and defendant's perspective, new approaches for dealing with provisional applications and public disclosures of inventions, and about the AIA's impacts on choice of forum, already-filed cases, and reexaminations.

These are uncertain times in the world of patent litigation, but they don't have to be. Whatever your role in the field of patent litigation and prosecution, our goal is to prepare you for the changes that lie ahead. Please sign up soon to reserve your seat.

~ Heidi Keefe, Esq. and Edwin H. Taylor, Esq., Program Co-Chairs

What You Will Learn

What Attendees Said


Monday, March 19, 2012

8:00 am

Registration and Continental Breakfast

8:30 am

Introduction and Overview

Heidi Keefe, Esq., Program Co-Chair
Cooley LLP / Palo Alto, CA

Edwin H. Taylor, Esq., Program Co-Chair
Blakely Sokoloff Taylor & Zafman LLP / Sunnyvale, CA

8:45 am

Overview of the Changes in the AIA

Prioritizing your response in terms of impacts requiring immediate adaptation vs. impacts you can address later

Edwin H. Taylor, Esq., Program Co-Chair
Blakely Sokoloff Taylor & Zafman LLP / Sunnyvale, CA

Heidi Keefe, Esq., Program Co-Chair
Cooley LLP / Palo Alto, CA

10:15 am

Break: Coffee, Tea and Conversation

10:30 am

Immediate Impacts on Patent Transactions

Adapting your strategies for licensing, joint research agreements and other patent-related contracts

Jake Handy, Esq.
Fenwick & West LLP / San Francisco, CA

Brian C. Burr, Esq.
B C Burr Law / San Francisco, CA

12:00 pm

Lunch (on your own)

1:15 pm

New Strategies for Provisional Applications and Publication of Inventions Under First to File

Implications and practical tips for updating your internal processes

Robert R. Sachs, Esq.
Fenwick & West LLP / San Francisco, CA

2:00 pm

Impact of the AIA on Patent Litigation: Changes That May Affect Your Choice of Forum

Changes in the interplay between Article 3 court litigation and parallel US Patent and Trademark Office (PTO) review of issued patents; patent litigation before the International Trade Commission (ITC)

Carl C. Charneski, Esq.
Brinks Hofer Gilson & Lione / Washington, DC

2:45 pm

Break: Soda, Tea and Conversation

3:00 pm

New Strategies for Potential and Current Infringement Litigation

Re-exams; cases filed previous to the effective date of AIA vs. those filed afterwards; courts vs. the PTO vs. the ITC as a forum; the future of patent litigation

John D. Vandenberg, Esq., Moderator
Klarquist Sparkman, LLP / Portland, OR

Plaintiff's side

Ryan C. Kirkpatrick, Esq.
Susman Godfrey LLP / Los Angeles, CA

Defendant's side

Stefani E. Shanberg, Esq.
Wilson Sonsini Goodrich & Rosati / Palo Alto, CA

4:30 pm

Wrap Up: AIA Next Steps

David M. Simon, Esq., Associate General Counsel for IP Policy
Intel Corporation / Santa Clara, CA

5:00 pm

Evaluations and Adjourn



Regular tuition for this program is $895 with a group rate of $670 each for two or more registrants from the same firm. For government employees, we offer a special rate of $595. For students and people in their job for less than a year, our rate is $447.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.


There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

Live credits: Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for CA 6.5 MCLE California credits. Upon request, we will apply for, or help you apply for, CLE credits in other states and other types of credits.

Faculty Bios

Heidi Keefe, Program Co-Chair, partner in the Cooley LLP Litigation Department and member of the Intellectual Property Practice Group, represents clients in high-stakes patent trials. Recently, she was named one of the Top 45 Women Lawyers Under 45 by The American Lawyer.

Edwin H. Taylor, Program Co-Chair, member of Blakely Sokoloff Taylor & Zafman LLP's Patent Practice Group, concentrates on business-related patent transactions, strategic patent planning, patent opinions and evaluations of patent portfolios, both for purchase, sale and litigation. He also has experience in electronics, semiconductor, Internet and computer-related technologies.

John D. Vandenberg, Moderator, partner at Klarquist Sparkman, LLP, litigates patents for defendants and plaintiffs around the country. His current cases include representing Microsoft,, eBay and PayPal, CollegeNet, and SAP in patent litigations in California, Delaware, Massachusetts, Texas, and Washington. The Best Lawyers in America recently awarded him as 2011 IP Lawyer of the Year for Portland, OR.

Brian C. Burr, B C Burr Law, represents technology companies in a variety of transactions, including patent licensing; joint ventures; major license development and commercialization agreements, mergers and acquisitions. He represents companies in the biotech, pharmaceutical, medical device and software industries. Previously, he was a partner in the Silicon Valley office of Orrick, Herrington & Sutcliffe LLP where he was head of the technology transactions practice.

Carl C. Charneski, counsel at Brinks Hofer Gilson & Lione, focuses on international trade and litigation with an emphasis on representing clients in Section 337 investigations before the International Trade Commission (ITC). Previously, he was an Administrative Law Judge at the ITC where he managed litigation, presided over evidentiary hearings, and issued initial determinations.

Jake Handy, partner, Fenwick & West LLP, focuses his practice on technology-based transactions, including intellectual property acquisitions and licensing strategies for life sciences and technology companies. Previously, he was a partner and head of the Southern California Life Sciences transactional practice for DLA Piper LLP.

Ryan Kirkpatrick, partner, Susman Godfrey LLP, represents plaintiffs and defendants in a wide variety of commercial litigation matters, including bet-the-company patent infringement litigation, the prosecution of nine-figure antitrust claims in federal courts and the European Union, and complex fraud and breach of contract cases.

Robert R. Sachs, partner in the Intellectual Property Group of Fenwick & West LLP, concentrates on strategic patent counseling and prosecution for software technologies. Particular areas of expertise include Internet technologies, predictive modeling and classification, audio/video technologies and financial applications.

Stefani E. Shanberg, partner at Wilson Sonsini Goodrich & Rosati, specializes in intellectual property litigation with a focus on patent litigation including investigations before the ITC. She has led litigation in the software, semiconductor, Internet, network security and consumer products technology sectors on behalf of companies ranging from Fortune 100 to venture-backed start-ups.

David M. Simon is the Associate General Counsel for IP Policy for Intel Corporation where he is responsible for Intel's policy on intellectual property matters. Prior to joining Intel, he was in private practice specializing in intellectual property, licensing and high technology law.