Law Seminars International Presents

Opening Moves in Patent Disputes

Pre & Early Stage Patent Litigation

Correct Steps for Maximizing Your Chances of Success

October 20, 2004
Crowne Plaza Union Square Hotel in San Francisco, CA
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Who Should Order Homestudy

All attorneys, business executives and expert witnesses involved in Patent Litigation

Why Order

Attorneys. patent holders and accused infringers alike need a well-developed strategy to maximize their chances for success through negotiation or litigation. In this substantive workshop, leading patent litigators will share practical planning strategies that you can use immediately. From claim evaluation, to the warning letter, to filing and managing litigation, you will have an opportunity to learn the steps to follow, and the mistakes to avoid, to put you in a winning position in any patent dispute. ~ Program Co-chairs: Jennifer A. Sklenar, Esq. and Darin Snyder, Esq.

What You Will Learn

Faculty members will draw on their considerable expertise to provide successful planning strategies to patent holders or accused infringers.

Agenda

Wednesday, October 20, 2004
8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Jennifer A. Sklenar, Esq., Program Co-chair
 Howrey Simon Arnold & White, LLP / Los Angeles, CA
  Darin Snyder, Esq., Program Co-chair
 O'Melveny & Myers LLP / San Francisco, CA
8:45 am The Threat Letter
  Preparing the letter: Evaluating the claim; Conducting a prior art investigation and other due diligence; what to include and what to leave out
  George Tacticos, Esq.
 Morgan & Finnegan L.L.P. / San Francisco, CA
  Responding to the letter: Developing your initial strategy; approaches for obtaining opinion of counsel letter and avoiding treble damages; drafting the response
  Claude M Stern, Esq.
 Quinn Emanuel Urquhart Oliver & Hedges, LLP / Redwood Shores, CA
9:45 am Taking the Dispute Back to the Patent Office
  New rules and procedures on reexamination; strategies for reexamination and stay issues; steps before litigation
  Andrea L. Wayda, Esq., Ph.D.
 Morgan & Finnegan L.L.P. / New York, NY
10:30 am Break
10:45 am Filing the Action
  Myths and realities of forum shopping: The accuracy of conventional wisdom on factors such as speed to trial and differences in jury verdicts
  Elliot N. Brown, Esq.
 Irell & Manella LLP / Los Angeles, CA
  Strategies for the patent owner: When to file; what claims to assert; what types of infringement to allege
  Brian L. Ferrall, Esq.
 Keker & Van Nest LLP / San Francisco, CA
12:00 pm Lunch (on your own)
1:15 pm Responding to the Filing
  Strategies for the accused infringer: Declaratory relief considerations; defenses to assert; patent counterclaims; antitrust counterclaims
  Byron W. Cooper, Esq.
 Townsend and Townsend and Crew LLP / Palo Alto, CA
  Equitable affirmative defenses; inequitable conduct and prosecution laches, including lessons learned from Lemelson on loss of patent protection due to conduct before the Patent & Trademark Office
  Craig R. Kaufman, Esq.
 Orrick, Herrington & Sutcliffe LLP / Menlo Park, CA
2:15 pm Case Study on Effective Claim Construction Procedures
  Claim construction in the Northern District of California: Procedures and practices
  Shelley K. Wessels, Esq.
 Wessels Law Group / Cupertino, CA
2:45 pm Discovery Issues
  Document management strategies; dealing with electronic documents; resolving disputes
  Matthew I. Kreeger, Esq.
 Morrison & Foerster LLP / San Francisco, CA
3:15 pm Break
3:30 pm Settlement and Alternative Dispute Resolution
  When and how to negotiate; the roles of inside and outside counsel
  Darin Snyder, Esq., Program Co-chair
 O'Melveny & Myers LLP / San Francisco, CA
  The Hon. Charles A. Legge, Esq. (Ret).
 JAMS / San Francisco, CA
4:30 pm Managing Patent Litigation
  When to closely manage litigation counsel and when to give a free hand; management expecta-tions and common mistakes; etc.
  Jennifer A. Sklenar, Esq., Program Co-chair
 Howrey Simon Arnold & White, LLP / Los Angeles, CA
5:00 pm Adjourn

Cancellation

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

Continuing Education Credits

Law Seminars International automatically obtains CLE credit approval for the state in which a seminar is held. On request, we will apply for CLE credits in other states and other types of credits. Current credits status: CA MCLE 6.75 | GA CLE 6.5 inc 6.5 trial | MO CLE pending | NY CLE 7.5 (no ethics, non-transitional) | WA CLE 6.5 (#126332)

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $605. The course materials alone are available for $100. We will ship your homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (which ever is later).
Order Homestudy

Faculty Bios

Jennifer A. Sklenar, Program Co-chair, is a partner at Howrey Simon Arnold & White, LLP, where she focuses on IP litigation and counseling, particularly in the field of biotechnology. She has participated in all aspects of litigation including discovery, patent claims construction, dispositive motions, trial and appeal.

Darin Snyder, Program Co-chair, is head of O'Melveny & Myers LLP's San Francisco office, as well as head of the IP and Technology Department in the North Carolina offices and Co-Chair of the firm-wide Patent and Technology Litigation practice group. His practice consists of major civil and criminal litigation and consulting matters, with an emphasis on IP and technology-intensive business sectors.

Elliot N. Brown is a partner at Irell & Manella LLP specializing in intellectual property litigation and counseling.

Byron. W. Cooper is a partner in the firm of Townsend and Townsend and Crew LLP. As a co-practice group leader in the Litigation Practice Group he handles all aspects of intellectual property law with emphasis on patent cases in federal district courts across the country and the U. S. International Trade Commission.

Brian L. Ferrall is a Partner at Keker & Van Nest LLP. His practices focuses on intellectual property and complex business litigation including unfair business practices and consumer class actions. Representative clients includeXilinx, Inc., LSI Logic Corporation, national Semiconductor, Inc., and Harris Corporation.

Craig R. Kaufman, an IP partner at Orrick, Herrington & Sutcliffe LLP, focuses his practice on patent infringement litigation, with an emphasis on chemical, pharmaceutical, and biotechnology patents. He has lectured and written frequently on IP issues and before joining Orrick was an Associate Solicitor at the US PTO.

Matthew I. Kreeger, is a partner with Morrison & Foerster LLP where he has focused on patent litigation interference matters, along with other intellectual property disputes, and other complex litigation. He recently served as lead counsel and successfully argued the final hearing before the Board of Patent Appeals and Interferences in a major interference between Chiron Corporation and the National Institutes of Health.

The Hon. Charles A. Legge, JAMS, was selected in a newspaper survey as one of the two most popular arbitrators in Northern California. Previously U.S. District Judge Northern District of California, Judge Legge has conducted over 200 settlement conference and mediations and has particular expertise in complex business litigation and IP cases.

Claude M. Stern is Co-Chair of the IP Practice Group at Quinn Emanuel Urquhart Oliver & Hedges, LLP. He has developed extensive experience in business litigation with an emphasis on IP and technology litigation and was lead trial counsel for Broderbund Software in Broderbund Software, Inc. v. Unison World Inc., the first reported case to recognize and enforce the copyrightability of the user-interface of a non-video game computer program.

George Tacticos was associate general counsel for IP law and licensing at IBM before joining Morgan & Finnegan as Counsel. He has worked in most phases of patent prosecution, mergers & acquisition activities and patent and technology licensing, and has managed departments responsible for IBM's licensing agreements, patent portfolio management, trademarks and copyrights.

Andrea L. Wayda, a partner at Morgan & Finnegan, specializes in patent trial and appellate litigation and IP counseling. Dr Wayda has a Ph.D in Inorganic Chemistry and was the firm's first scientific advisor before she became an associate. Previously she was a member of the Technical Staff at AT&T Bell Laboratories.

Shelley K. Wessels, a principal at Fish & Richardson P.C. focuses her practice on technology and intellectual property litigation. Previously, she has focused on trade secret, patent, computer copyright, and other types of high technology litigation.