Law Seminars International Presents

Early Stage Patent Litigation

September 24, 2004
Hilton Chicago Hotel in Chicago, IL
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Who Should Order Homestudy

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

Why Order

"Here are the opening moves that put you in a winning position to avoid litigation or gain victory if a suit is filed. You need a well-developed strategy in early stage patent litigation to get what you want, and maximize your chances for success. In this comprehensive workshop, leading patent litigators will share practical planning strategies that you can use immediately. Whether you are the patent holder or accused infringer, you will learn how to avoid or to prevail in litigation, giving you new insights on the threat letter, managing the litigation and alternative dispute resolution." ~ Program Co-Chairs: Peter J. Meyer, Esq. and Michael P. Padden, Esq.

Agenda

Friday, September 24, 2004
8:30 am Introduction & Overview
  Peter J. Meyer, Esq., Program Co-Chair
 Gardner Carton & Douglas LLP / Chicago, IL
  Michael P. Padden, Esq., Program Co-Chair
 Howrey Simon Arnold & White LLP / Chicago, IL
8:45 am The Threat Letter
  Responding to the letter
  Michael Geoffrey, Esq., Chief Intellectual Property Counsel
 USG Corporation / Chicago, IL
  Preparing the letter
  Brett A. Hesterberg, Esq.
 Leydig, Voit & Mayer, Ltd. / Chicago, IL
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
  Richard A. Sharpe, Esq.
 Pearne & Gordon LLP / Cleveland, OH
10:30 am Break
10:45 am Filing the Action
  Strategies for the patent holder: Where to file; when to file; what claims to assert; what types of infringement to allege
  Maxine Y. Graham, Esq.
 Kirkland & Ellis LLP / New York, NY
  Strategies for the accused infringer: Declaratory judgment actions; defenses to assert; patent counterclaims; antitrust counterclaims
  Hilda C. Galvan, Esq.
 Jones Day / Dallas, TX
12:00 pm Lunch (on your own)
1:15 pm Managing Patent Litigation
  When to closely manage litigation counsel and when to give litigation counsel a free hand; corporate management expectations and common mistakes; tips for cost-efficient work that optimally balances cost savings
  Michael P. Padden, Esq., Moderator
 Howrey Simon Arnold & White LLP / Chicago, IL
  Joseph P. Reagen, Esq., Managing IP Counsel
 Baxter Healthcare Corporation / Deerfield, IL
  Richard J. Rodrick, Esq., General Patent Counsel
 S.C. Johnson & Son, Inc. / Racine, WI
  Brian C. Rupp, Esq.
 Gardner Carton & Douglas LLP / Chicago, IL
2:30 pm Judicial Perspectives on Claim Construction Procedures
  Procedures to focus and resolve claim construction issues: how to flush out claim construction disputes; Markman procedures, on the papers, by presentation and argument, or live witnesses; when and how to decide claim construction
  Edward M. O'Toole, Esq., Moderator
 Howrey Simon Arnold & White LLP / Chicago, IL
  The Hon. James B. Moran, Esq.
 United States District Court / Chicago, IL
  The Hon. James F. Holderman, Esq.
 United States District Court / Chicago, IL
3:15 pm Break
3:30 pm Settlement and Alternative Dispute Resolution
  Whether and when to dispute; when to negotiate; role of inside and outside counsel; use of ADR, mediation advocacy; pre-litigation presentations
  Peter J. Meyer, Esq.
 Gardner Carton & Douglas LLP Gardner Carton & Douglas LLC / Chicago, IL
  Warren S. Radler, Esq., Principal
 Trial Run Inc. / Chicago, IL
  Charles W. Shifley, Esq.
 Banner & Witcoff, Ltd / Chicago, IL
4:30 pm Ethical Issues for Litigation Counsel
  When, and what to do, when the ethical obligation of litigation counsel to comply with a client’s wishes comes into conflict with other ethical requirements
  Jerry A. Riedinger, Esq.
 Perkins Coie LLP / Seattle, WA
5:30 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 7.25 inc 1 eth; CO 8 inc 1.2 eth; IA 7 inc 1 eth; IN 7 inc 1 eth;7 new lwyr (080202); MO 8.4 inc 1.2 eth; MN 7 inc 1 eth (84643); NY 8 inc 1 eth (nontrans'l); OH 7 inc 1 eth (000145446); PA 7 inc 1 eth;| WA 7 inc 1 eth (124174; WI 8 inc 1 eth

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

Peter J. Meyer, Program Co-Chair, is a partner with Gardner Carton & Douglas LLP. He focuses his practice on patent, intellectual property and other business litigation. He has represented clients in patent disputes involving a wide variety of technologies, including zoom lens cameras, the Internet and computer networks, electronic components, in-flight entertainment, healthcare, and personal care products

Michael P. Padden, Program Co-Chair, is a litigation partner at Howrey Simon Arnold & White, LLP. Mr. Padden has special expertise in litigating patent, trade secret, trade dress and licensing disputes. His patent litigation experience includes claims of infringement in a diverse variety of industries including pharmaceutical drugs, inkjet printers, dental products, internet commerce and mattresses. His extensive trial experience also includes other complex litigation arising from breach of contract, fraud, antitrust, and other business tort claims.

Edward M. O’Toole is a partner in the Intellectual Property Group at Howrey Simon Arnold & White, LLP. As a litigation specialist, Mr. O’Toole has served clients in the chemical, biotechnology, pharmaceutical, and mechanical industries as chief trial counsel in over 95 cases involving intellectual property disputes. While he has concentrated on patent infringement he has also handled arbitrations and has tried trademark and trade secret cases.

Hilda C. Galvan is a partner at Jones Day, practicing in the area of intellectual property law, including patent, trademark, copyright, trade secret, and unfair competition, and has worked with such diverse technologies as computer software, specialized mobile radio technology, semiconductor processing techniques, semiconductor memory designs, car speakers, offshore oil and gas platforms, optic lenses, and soft drink preparation systems. Ms. Galvan also has substantial patent litigation experience.

Michael M. Geoffrey is Chief Intellectual Property Counsel for USG Corporation, having responsibility for intellectual property matters of the corporation and its subsidiaries worldwide. Prior to joining USG, Mr. Geoffrey was a partner in the intellectual property practice of Gardner Carton & Douglas LLP.

Maxine Y. Graham is an intellectual property partner at Kirkland & Ellis LLP where she focuses on intellectual property litigation and transactions. Ms. Graham has litigated patent matters involving medical testing equipment, voltage control circuitry, computer hardware and software, roofing products, and pharmaceutical drugs. In addition, she has been involved in transactions in the biotechnology field.

Brett A. Hesterberg is a partner at Leydig, Voit & Mayer, Ltd. where he is active in all phases of patent, trademark and trade secret law. He has prepared and prosecuted patents in numerous technical fields and also advised clients on many patent and trademark validity and infringement issues. Mr. Hesterberg also has extensive litigation experience regarding patent, trademark and trade secret issues.

The Hon. James F. Holderman was appointed to the United States District Court for the Northern District of Illinois in April, 1985 and presides there currently.

The Hon. James B. Moran was appointed to the United States District Court for the Northern District of Illinois by Former President Jimmy Carter in September, 1979. He served as Chief Judge for a five year term from 1990-1995 before assuming the senior status which he currently holds.

Warren S. Radler is a Principal of Trial Run Inc., a litigation consulting and trial training firm. Mr. Radler is the former chairman and senior trial partner of a large multi-state litigation firm and is a Fellow of the American College of Trial Lawyers. During his years in private practice, he tried numerous complex cases to jury verdict on behalf of plaintiffs and defendants. He has defended multi-national chemical and drug companies in product liability cases and served as national coordinating counsel in complex product liability and construction litigation cases.

Joseph P. Reagen is Managing IP Counsel at Baxter Healthcare Corporation where he is responsible for all IP work for mechanical devices. Mr. Reagen manages IP litigation, conducts risk assessment and product clearance analysis, negotiates license agreements, and manages development of Baxter’s IP portfolio.

Jerry A. Riedinger is a partner at Perkins Coie LLP. His areas of focus are patent infringement cases and complex intellectual property litigation.

Richard J. Rodrick is the General Patent Counsel of S.C. Johnson & Son, one of the world’s leading manufacturers of household cleaning products, and products for home storage, insect control and personal care. Mr. Rodrick manages the Patent Department, handling the worldwide patent procurement activities of the company. Mr. Rodrick also works on patent strategies, manages patent and related litigation, and handles various transactional matters.

Brian C. Rupp is a partner in the Gardner Carton & Douglas LLP Technology Department. His practice is concentrated in patent matters, computer law and intellectual property licensing. Mr. Rupp counsels clients regarding all aspects of patent issues, including patentability, infringement, validity, licensing, design-around and the right to use new technologies. He prosecutes and enforces patents and negotiates intellectual property and technology development agreements.

Richard A. Sharpe is a partner at Pearne & Gordon LLP. Mr. Sharpe has expertise in all aspects of patent, trademark and copyright law, including preparation and prosecution of patent and trademark applications, management of international patent and trademark portfolios and complex patent litigation. His practice emphasizes infringement and validity opinions and counseling on chemical, pharmaceutical and biotechnology litigation, validity and infringement issues.

Charles W. Shifley is a partner at Banner & Witcoff, Ltd. where he concentrates his practice on intellectual property cases and trials. Recently Mr. Shifley enforced a patent for a start up company against a multimillion-dollar defense effort and ended defense of a rail supply company, and currently is defending an Internet subscription delivery company and began an offensive case for a pharmaceutical software provider.