Law Seminars International Presents

Opening Moves in Patent Disputes

Pre & Early Stage Patent Litigation

Strategies that put you in a winning position

October 14, 2005
Marriott Downtown Los Angeles in Los Angeles, CA
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Who Should Order Homestudy

Attorneys, product developers and executives with responsibility for patent protection.

Why Order

The resolution of patent disputes often turns on decisions made well before trial, frequently before the complaint is filed or in the early stages of litigation. The Plaintiff's pre-suit infringement analysis, the defendant's receipt and response to a cease and desist letter, and the request for and litigation of a preliminary injunction motion often dictate the ultimate outcome. Attorneys, patent holders and accused infringers alike need a well-developed strategy to strengthen their case and maximize their chances for success during these critical stages. During this seminar, leading patent litigators will share practical advice and real-world experience on early stage patent litigation issues that in-house and outside trial counsel must consider to succeed. Every participant should come away with a better understanding of strategies to follow and mistakes to avoid in crafting a winning approach in any patent dispute. ~ Program Co-Chairs: Jennifer A. Sklenar, Esq. and Darin Snyder, Esq.

What You Will Learn

- Preparing and Responding to the Threat Letter - Taking the Dispute Back to the Patent Office - Filing the Action - Responding to the Filing - Pretrial Processes & Procedures - Effective Claim Construction Practices and Procedures - Settlement and Alternative Dispute Resolution - Managing Patent Litigation

What Attendees Said

~ Best patent law CLE course I have ever attended. ~ That was unquestionably the best seminar that I have ever participated in ~ Excellent ideas to relate to my practice ~ Learned many relevant and current ideas

Agenda

Friday, October 14, 2005
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; deciding what to include and what to leave out
  Wayne Barsky, Esq.
 Gibson Dunn & Crutcher LLP / East Los Angeles, CA
  Responding to the letter: Developing your initial strategy; considering an opinion of counsel letter and avoiding treble damages; drafting the response
  Mark J. Itri, Esq.
 McDermott Will & Emery / Irvine, CA
9:45 am Taking the Dispute Back to the Patent Office
  Strategies for handling reexamination and stay issues; steps before litigation
  Alan H. Blankenheimer, Esq.
 Heller Ehrman LLP / San Diego, CA
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
  Jonathan S. Kagan, Esq.
 Irell & Manella LLP / Los Angeles, CA
  When to file; what claims to assert; what types of infringement to allege
  Daralyn J. Durie, 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
  Bruce D. Kuyper, Esq.
 Latham & Watkins LLP / Los Angeles, CA
  Equitable affirmative defenses: Inequitable conduct and prosecution laches, including lessons learned from the 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
2:30 pm Pretrial Processes & Procedures
  The growing importance of effectively using and managing electronic discovery; protective orders and issues for house counsel and experts; procedures for sealing documents
  Jennifer A. Sklenar, Esq., Program Co-Chair
 Howrey Simon Arnold & White, LLP / Los Angeles, CA
3:15 pm Break
3:30 pm Effective Claim Construction Practices & Procedures
  Different approaches to claim construction hearings; use of technical tutorials and experts
  Shelley K. Wessels, Esq.
 Wessels Law Group / Cupertino, CA
4:00 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
  Victor S. de Gyarfas, Esq.
 Foley & Lardner LLP / Los Angeles, CA
5:00 pm Managing Patent Litigation
  Management expectations and common mistakes; balancing cost savings against the risk of adverse court action; managing multiple law firms; partnering with outside counsel to chart litigation strategy
  Monique Cordray, Esq., Senior Associate General Counsel
 Amgen / Thousand Oaks, CA
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 MCLE 7.25

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $705. The written 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 (whichever is later).
Order Homestudy

Faculty Bios

Jennifer A. Sklenar, Program Co-Chair, and a Partner at Howrey Simon Arnold & White, LLP, focuses on IP ltigation and counseling, particularly in the field of biotechnology. She has managed cases involving medical devices, monoclonal antibodies, DNA labeling and microarray technology. Ms. Sklenar has represented clients in electronics-based patents, chemical composition patents, trademark, copyright and trade secret litigation. She has drafted and negotiated license agreements and counseled clients on intellectual property matters for corporate transactions, including conducting IP due diligence.

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.

Wayne Barsky is a Partner in the Century City office of Gibson Dunn & Crutcher LLP, and National Co-Chair of the firm's Intellectual Property Practice Group. He focuses on patent litigation for clients in the biotechnology, computer and software industries, and has extensive trial and appellate experience in federal court. Wayne is routinely involved in high-profile, high-stakes patent litigation cases throughout the country.

Alan H. Blankenheimer is a Shareholder with Heller Ehrman, LLP with substantial experience litigating patent cases, intellectual property matters and antitrust disputes for the semiconductor, computer hardware and software industries. He has represented leading technology companies such as Maxim Integrated Products, Microchip Technology, Cypress Semiconductor, Integrated Circuit Systems, Intel Corporation, Micron Technology and Dell Computer.

Monique Cordray is Senior Associate General Counsel at Amgen Inc. and Amgen's Senior Director responsible for its patent litigation. Her practice includes third party proceedings such as patent interferences, Canadian conflict proceedings and European Opposition proceedings. She partners with a variety of outside counsel to chart and implement Amgen's litigation strategy.

Victor S. de Gyarfas is a Partner in Foley & Lardner LLP's Los Angeles office. He has been lead counsel or second chair in numerous cases concerning patent, copyright, trademark, and trade secret causes of action. His litigation experience has involved a range of technologies, including electrical circuits, computer software, television tuners, communications, automatic vehicle identification products, and medical devices.

Daralyn J. Durie is a Partner with Keker & Van Nest, LLP. She is listed in Chambers & Partners as one of the top intellectual property lawyers on the West Coast, and was voted a 2004 Super Lawyer by San Francisco Magazine in the area of intellectual property litigation. She has tried cases in both the state and federal courts in a wide range of areas including patent, trade secret, and unfair competition.

Mark J. Itri is a Partner in the law firm of McDermott Will & Emery based in the Orange County and Silicon Valley offices. His practice encompasses the preparation and prosecution of patent and trademark applications with involvement in both patent and trademark litigation matters.

Jonathan S. Kagan is a Partner with Irell & Manella LLP, named by Chambers & Partners as "U.S. Intellectual Property Law firm of the Year." From the firm's Century City office, Mr. Kagan writes and lectures in the area of intellectual property litigation, both in this country and abroad.

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 Patent & Trademark Office.

Bruce D. Kuyper is a Partner in Latham & Watkins LLP's Los Angeles office. He is a member of both the Litigation Department and the Intellectual Property and Technology Litigation Practice Group, licensed to practice before the U.S. Patent and Trademark Office. His practice focuses on intellectual property and related litigation, particularly in high technology. Mr. Kuyper also has extensive experience in drafting and negotiating complex licensing agreements, joint development agreements, and other transactions relating to all forms of intellectual property, including patents, trademarks, copyrights, and trade secrets.

Shelley K. Wessels, a Principal at Wessels Law Group, 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.