Law Seminars International Presents

An Advanced Workshop on the Best Opening Moves in Patent Disputes

Pre & Early Stage Patent Litigation

Strategies to put you in a winning position

December 7, 2005
Loews Philadelphia Hotel in Philadelphia, PA
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Who Should Order Homestudy

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

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: Kevin R. Casey, Esq. and Dianne B. Elderkin, Esq.

What You Will Learn

*Strategies for responding to the warning letter *Obtaining opinion of counsel letter and the impact of Knorr-Bremse *Design-around strategies *New procedures on reexamination *How litigation strategies may be affected under new FTC proposals and proposed legislation in the House *Updates on choice of forum issues *Procedures to focus and resolve claim construction issues *Planning strategies for selecting expert witnesses *Managing litigation counsel for cost-efficient work *When and how to use mediation to settle patent disputes

What Attendees Said

~ Steps in early patent litigation made strategies very clear to me ~ Managing Litigation panel was outstanding! Great insights ~ Learned many relevant and current ideas ~ Real life experiences and details made presentations interesting and helpful ~ Judge's insights were terrific ~ Very thorough program ~ Brought new ideas and theories of recovery to light ~ Best patent law CLE course I have ever attended

Agenda

Wednesday, December 07, 2005

8:00 am Registration and Continental Breakfast
8:30 am Introduction & Overview
  Kevin R. Casey, Esq., Program Co-Chair
Stradley Ronon Stevens & Young, LLP / Philadelphia, PA
  Dianne B. Elderkin, Esq., Program Co-Chair
Woodcock Washburn LLP / Philadelphia, PA
8:45 am Pre-Filing Investigation and Warning Letter
  Rule 11 obligations; conducting prior art investigation and other due diligence; claim interpretation a la Markman; finding and using experts in early stage patent disputes; prior litigation and the potential for res judicata and collateral estoppel
  Gary H. Levin, Esq.
Woodcock Washburn LLP / Philadelphia, PA
9:30 am Responding to the Warning Letter
  Developing your initial strategy; approaches for obtaining opinion of counsel letter (the impact of Knorr-Bremse one year later); waiver implications; who should provide opinion; design around strategies
  Allan M. Wheatcraft, Esq., IP Counsel
W.L. Gore & Associates, Inc. / Newark, DE
10:15 am Break
10:30 am Taking the Dispute Back to the PTO
  New procedures on reexamination; strategies for seeking stay of litigation; post grant opposition procedures under new FTC proposals and under legislation proposed in the House and how they are likely to affect litigation strategies, if adopted
  Patricia Smink Rogowski, Esq.
Connolly Bove Lodge & Hutz LLP / Wilmington, DE
11:15 am Choice of Forum - Does it Really Make a Difference?
  Where to file: Current thoughts on differences in the districts; update on the latest rocket dockets and unique considerations in the Western District of Wisconsin and Eastern District of Virginia
  R. Polk Wagner, Esq., Assistant Professor of Law
Penn Law, University of Pennsylvania Law School / Philadelphia, PA
12:00 pm Lunch (on your own)
1:15 pm Judicial Perspectives on Pretrial Scheduling and Claim Construction Timing and Procedures
  Procedures to focus and resolve claim construction issues: Markman hearing timing and practices, use of technical tutorials and experts, effective presentations; discovery management including timing for disclosure of opinions of counsel; bifurcation
  The Hon. Berle M. Schiller
U.S. District Court for the Eastern District of Pennsylvania / Philadelphia, PA
2:00 pm Planning Ahead for Expert Witnesses
  Selecting experts; use of in-house experts; patent experts on U.S. Patent and Trademark Office procedures; Federal Judicial Center video; Fish & Richardson study of video; technical experts
  Thomas L. Halkowski, Esq.
Fish & Richardson P.C. / Wilmington, DE
  Bill Hueter, Vice President of Business Development
IMS ExpertServices / Marietta, GA
2:45 pm Break
3:00 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; early case assessment; budgeting
  Keith R. Dutill, Esq., Moderator
Stradley Ronon Stevens & Young, LLP / Malvern, PA
  Mark Rachlin, Esq., Senior Patent Litigation Counsel - Corporate IP
GlaxoSmithKline / King of Prussia, PA
  Gina M. Nagvajara, Ph.D., VP, U.S. Regulatory Affairs, Research & Intellectual Property
Orthovita, Inc. / Malvern, PA
  Robert M. Rauker, Esq., Vice President, Chief Patent Counsel
Synthes, Inc. / West Chester, PA
4:30 pm Settlement & Mediation of Patent Disputes/ADR as an Option to Litigation
  Use of mediation to settle patent disputes; role of mediator; role of counsel in mediation; preparation for mediation; when and how to negotiate; the roles of inside and outside counsel
  Harrie R. Samaras, Esq.
RatnerPrestia P.C. / Valley Forge, PA
  R. Bruce Whitney, Esq., Assistant General Counsel, Litigation
Air Products and Chemicals, Inc. / Allentown, PA
5:30 pm Evaluations & Adjourn

Cancellation

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

Continuing Education Credits

This program qualifies for 7 PA CLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.

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

Kevin R. Casey, Program Co-Chair, is Chair of the IP Group at Stradley Ronon Stevens & Young, LLP. Following a judicial clerkship with Chief Judge Helen W. Nies on the Federal Circuit, his IP litigation practice has included two or three significant cases per year for a total over fifty. He was ranked as one of the leading IP attorneys in Pennsylvania by "America's Leading Lawyers for Business, The Client's Guide" and was recently named a "Super Lawyer" in the June 2005 edition of the Philadelphia Magazine.
Full bio and contact info for Kevin R. Casey at Stradley Ronon Stevens & Young, LLP

Dianne B. Elderkin, Program Co-Chair, is a member of Woodcock Washburn LLP's Litigation Practice Group and concentrates on trying patent infringement cases. She has argued before the Court of Appeals for the Federal Circuit and represented clients in arbitrations. She authors a regular column on alternative dispute resolution for the IP Litigator. She is the only Pennsylvania lawyer, and one of few females, named to the International Who's Who of Patent Law.

Keith R. Dutill is a trial lawyer at Stradley Ronon Stevens & Young, LLP. He represents clients in complex commercial and IP litigation. He has tried more than 40 cases to final verdict or award in multiple federal and state courts. He focuses exclusively on the trial of complex business disputes. In October of 2004, he was inducted as a Fellow in the American College of Trial Lawyers and was named a "Super Lawyer" in the June 2004 and 2005 editions of the Philadelphia Magazine.
Full bio and contact info for Keith R. Dutill at Stradley Ronon Stevens & Young, LLP

Thomas L. Halkowski is a Principal of Fish & Richardson P.C. In his Intellectual Property Litigation practice, he focuses on Internet and Mechanical Engineering technologies. His broad experience with expert witnesses includes engineers and other environmental experts during his service as a Senior Trial Attorney for the Environment & Natural Resources Division of the U.S. Department of Justice.

Bill Hueter is Vice President of Business Development at IMS Expert Services. He has delivered legal case consultants and high-level expert witnesses for many of the top law firms in the country. His professional experience includes senior positions in eCommerce Global Business Development for Deloitte Consulting and Andersen Consulting, New Technology Business Development for CompuServe, and Vice President of Radio Programming for South Florida Public Telecommunications..

Gary H. Levin is co-chair of the Litigation Group at Woodcock Washburn LLP. He concentrates his practice in all aspects of patent litigation, including counseling and investigation, discovery, trial, and appeal work. The technical fields his patent work has covered include polymer formation and processing, filtration, fluid catalytic cracking processes and related catalysts and additives, powder metallurgy, complex medical devices, and immunoassay systems.

Gina M. Nagvajara is Vice President, U.S. Regulatory Affairs, Research & IP at Orthovita, Inc. Her responsibilities include managing IP and U.S. Regulatory Affairs in pursuit of FDA product clearances and approvals, and all pre-clinical evaluations including biocompatibility, analytical and mechanical testing. She is a Registered Patent Agent and was employed at the U.S. Patent and Trademark Office as a Patent Examiner in the medical arts arena.

Mark Rachlin is Senior Patent Litigation Counsel for GlaxoSmithKline. He manages pharmaceutical patent litigation under the Hatch Waxman Act and counsels regarding potential litigation issues. Previously, he was senior in house counsel with Dow Chemical and Union Carbide. Prior to that, he was with Sidley Austin Brown & Wood LLP and the U.S. Department of Justice.

Robert M. Rauker is Vice President and Chief Patent Counsel of Synthes, Inc., a $1.8 billion international medical device company, specializing in the development, manufacturing and marketing of instruments and implants for the surgical treatment of bones. His experience in the medical device industry includes managing numerous litigations, mergers and acquisitions, licenses in the U.S. and abroad.

Patricia Smink Rogowski is a partner at Connolly Bove Lodge & Hutz LLP where she leads the Firm's Patent Prosecution Section. She is a mechanical engineer. Her experience includes patent, trademark and copyright prosecution, litigation in federal district courts and in appeals to the Court of Appeals for the Federal Circuit. She is Vice President of the Philadelphia Intellectual Property Law Association.

Harrie R. Samaras co-chairs the Dispute Resolution Department at RatnerPrestia P.C., focusing her practice in IP litigation and alternative dispute resolution. Her practice also includes serving as a neutral, advising clients in negotiating pre-dispute resolution clauses, and representing clients in ADR processes. She serves as a neutral for AAA, WIPO, CPR, INTA, NAF and various courts.
Full bio and contact info for Harrie R. Samaras at RatnerPrestia P.C.

The Honorable Berle M. Schiller is a Judge in the Federal District Court for the Eastern District of Pennsylvania. He is a member of the American Bar Association; Executive Committee - National Conference of Federal Trial Judges, currently Chair-Elect; and Chair of the Congressional Relations Committee.

R. Polk Wagner focuses his teaching and research at Penn Law, University of Pennsylvania Law School, in the emerging fields of IP and Internet/cyberspace law. He has published articles concerning the viability of contemporary control-based criticisms of IP laws; the relationship between technology and patent law; the way to understand the patent doctrine of prosecution history estoppel; the constitutionality of government-supported Internet filtering; the First Amendment and software regulation, and the Anticybersquatting Consumer Protection Act.

Allan M. Wheatcraft is In-House Intellectual Property Counsel for W.L. Gore & Associates, Inc. He is currently serving as President of the Philadelphia IP Law Association.

R. Bruce Whitney is Assistant General Counsel, Litigation, in the Chemicals Group at Air Products and Chemicals, Inc. His recent practice has focused on plaintiff's actions in complex commercial litigation. He manages any adversarial situation, in court or before an agency, with the exceptions of tax and human resource issues.

Firm Links

RatnerPrestia P.C.
Stradley Ronon Stevens & Young, LLP