Law Seminars International Presents

Second Annual One-Day Workshop on New Developments in

Patent Claim Construction

Tips for more successful claim drafting and patent litigation

February 16, 2007
The Gleacher Center in Chicago, IL
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Who Should Attend

Attorneys, both in-house and private practice, and business executives involved with patent prosecution and litigation

Why Attend

Claim construction is at the heart of virtually every patent dispute. It dominates validity and infringement issues and is central also to determining inventorship. Having decided in 2005 that the specification is the primary guide for claim interpretation, the Federal Circuit has nevertheless left questions unanswered. Some decisions ruled that without broad statements in the specification, the claim should not be construed broadly. Other decisions look at the patent specification as providing only examples, construing the claim broadly. In this comprehensive workshop we’ll take a look at how the Court is using the written description in its claim interpretations. Our distinguished faculty will provide tips and strategies for addressing the key issues in claim construction today. ~ Program Co-Chairs: Bradford P. Lyerla, Esq. and Edward D. Manzo, Esq.

What You Will Learn

* 2006 Case law update on claim construction * Philosophical thoughts on claim construction * Litigation strategies * Views from the bench * Strategies for addressing key issues in claim construction today * Choosing and working with outside counsel * Handling claim construction on appeal

What Attendees Have Said About Similar Programs

~ Overall, an outstanding day! ~ The judge was a highlight - we lawyers can say what we wish, but what the judge says counts! ~ The panel discussion was excellent ~ Many useful and interesting business ideas

Agenda

Friday, February 16, 2007

8:00 am Registration & Continental Breakfast
8:30 am Introduction & Overview
  Bradford P. Lyerla, Esq., Program Co-Chair
Marshall, Gerstein & Borun LLP / Chicago, IL
  Edward D. Manzo, Esq., Program Co-Chair
Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. / Chicago, IL
8:45 am 2006 Case Law Update on Claim Construction
  Federal circuit court review
  Edward D. Manzo, Esq., Program Co-Chair
Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. / Chicago, IL
9:30 am Philosophical Thoughts on Claim Construction
  Resolving ambiguities in patent claims: The fundamental unresolvable dichotomy; advantages and disadvantages of looking empirically vs linguistically; historical perspective of philosophical issue of universals; Phillips' issues
  Bradford P. Lyerla, Esq., Program Co-Chair
Marshall, Gerstein & Borun LLP / Chicago, IL
10:15 am Break
10:30 am Litigation Strategies
  Advantages and disadvantages of evidentiary hearings; laying the groundwork for successful summary judgment motions; what to do after the claim construction ruling
  Asim Bhansali, Esq.
Keker & Van Nest LLP / San Francisco, CA
11:15 am Views From the Bench
  The most effective advocacy tactics in presenting your case at a Markman Hearing; the proper view of the relationship of the Markman Hearing to other activities such as summary judgment motions
  Bradford P. Lyerla, Esq., Program Co-Chair, Moderator
Marshall, Gerstein & Borun LLP / Chicago, IL
  The Hon. James F. Holderman, Chief U.S. Distict Court Judge
United States District Court / Chicago, IL
  The Hon. David H. Coar, U.S. District Court Judge
United States District Court / Chicago, IL
12:00 pm Lunch (on your own)
1:15 pm Strategies for Addressing the Key Issues in Claim Construction Today
  Deciding what was invented; construing with that in mind; proper use of dictionaries and reference materials; inherent definitions in the specification or file history; what to look for in disclaimers and disavowals; persons of ordinary skill in the art
  Edward D. Manzo, Esq., Program Co-Chair, Moderator
Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. / Chicago, IL
  Meredith Martin Addy, Esq.
Brinks Hofer Gilson & Lione / Chicago, IL
  Asim Bhansali, Esq.
Keker & Van Nest LLP / San Francisco, CA
  Debbie K. Wright, Esq., Chief Counsel of Global Open Innovations & Global Supply Chain
Kraft Foods Inc. / Northfield, IL
3:15 pm Break
3:30 pm Choosing and Working with Outside Counsel
  Steps required to handle a patent litigation; selection criteria for choosing outside counsel; roles of in-house counsel & outside counsel
  Debbie K. Wright, Esq., Chief Counsel of Global Open Innovations & Global Supply Chain
Kraft Foods Inc. / Northfield, IL
4:15 pm Handling Claim Construction on Appeal
  Application of waiver and/or estoppel to new claim construction arguments on appeal; does deference play a role; what appellate strategies work and what strategies do not
  Meredith Martin Addy, Esq.
Brinks Hofer Gilson & Lione / Chicago, IL
5:00 pm Evaluations & Adjourn

Tuition

Regular tuition for this program is $695 with a group rate of $620 each for two or more registrants from the same firm. For government employees, we offer a special rate of $545. For students and people in their job for less than a year, our rate is $347.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Cancellation & Substitution

You may substitute another person at any time. We will refund tuition, less a $50 cancellation fee, if we receive your cancellation by 5:00 p.m. on Friday, February 9, 2007. After that time, we will credit your tuition toward attendance at another program or the purchase of a homestudy. There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders.

Continuing Education Credits

Illinois CLE credits are pending. Upon request, we will apply for CLE credits in other states and other types of credits.

Location

The conference will be held at The Gleacher Center at 450 North Cityfront Plaza Drive in Chicago, IL 60611, phone 312-464-8787. Check The Gleacher Center website for a list of area hotels at http://www.gleachercenter.com.
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If You Cannot Attend

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

Bradford P. Lyerla, Program Co-Chair, a senior partner at Marshall, Gerstein & Borun LLP, focuses on trade secret and patent infringement lawsuits. He is listed in Who’s Who in America, Who’s Who in American Law, America’s Leading Lawyers and Illinois Super Lawyers, and is a Life Fellow of the American Bar Foundation and a recipient of the John Powers Crowley Justice Award for Pro Bono trial work. He has tried cases for such well-known companies as AM International, Quaker Oats, General Dynamics, MCI, Solo Cup Company, Chris-Craft Industries and US Robotics.

Edward D. Manzo, Program Co-Chair, is a founding shareholder of Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. He was principal counsel for IPLAC as amicus curiae in Phillips v. AWH Corp. (Fed. Cir. 2005 en banc) (patent claim construction), ITW v. Independent Ink (S. Ct. 2006) (patent/anti-trust presumptions), and Of Counsel to IPLAC in KSR Intl v. Teleflex (S. Ct. 2006-07) (patent obviousness). He is Editor-in-Chief of Claim Construction in the Federal Circuit, an annual review published by West Legalworks, and he is on the Patents Subcommittee of the Pattern Jury Instruction Committee for the Seventh Circuit (2006).

Meredith Martin Addy, partner at Brinks Hofer Gilson & Lione, focuses on IP litigation and is active at the Federal Circuit, as counsel and as a member of the Federal Circuit Advisory Council. She has been a Court Appointed Expert and Special Master, drafting claim construction decisions and decisions on motions for summary judgment. She is listed as a Leading Illinois IP Lawyer by Chambers, in The Best Lawyers of America, and as one of the top 50 Female Illinois Super Lawyers.

Asim Bhansali is a partner at Keker & Van Nest LLP. His practice focuses on complex business litigation, including securities, RICO, intellectual property, and commercial cases. He has successfully defended clients in these matters, obtaining numerous dismissals of securities and general fraud claims in federal court.

The Honorable David H. Coar is a United States District Court Judge in the Northern District of Illinois. He was appointed on October 7, 1994.

The Honorable James F. Holderman is the Chief United States Distict Court Judge for the Northern District of Illinois. He was appointed to the Court on April 4, 1985 and was named Chief Judge in July, 2006.

Debbie K. Wright, Chief Counsel of Global Open Innovations & Global Supply Chain for Kraft Foods Inc., has primary responsibility for all Intellectual Property issues for the Open Innovation and Global Supply Chain groups. Previously she was Chief Counsel Global Patents for Kraft. She is also Assistant Secretary for Kraft Foods Holdings, Inc.