Law Seminars International Presents

An Advanced One-Day Workshop on

Current Patent Claim Construction Practice

Key issues, case law updates, litigation strategies & effective appellate advocacy

October 10, 2007
Crowne Plaza Philadelphia Center in Philadelphia, PA
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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 also central to determining inventorship. The Court of Appeals for the Federal Circuit issued a "course correction" opinion in 2005 that closed a schism that had developed in that Court over the proper use of dictionaries. Numerous issues still confront the litigator and opinion writer. How do you know when the intrinsic evidence is enough? What is proper extrinsic evidence? Are dictionaries forbidden now, and if not, how can you use them? How should you present claim construction arguments to the district court? How should you handle the issue on appeal? When is an argument going to be deemed waived? If no summary judgment has been entered and the case goes to a jury, do you have to object to jury instructions that embody the claim constructions? ~ Program Co-Chairs: Martin J. Black, Esq. and John J. Marshall, Esq.

What You Will Learn

~ Case law and legislative update ~ The impact of Phillips on the Federal Circuit ~ Litigation strategies ~ Effective advocacy tactics for a Markman hearing ~ Strategies for addressing key issues ~ Successful claim drafting ~ Handling claim construction on appeal

What Attendees Have Said About Similar Programs

~ Content and speakers very good ~ Outstanding presentations ~ Great program! ~ Overall, an outstanding day! ~ Many useful and interesting business ideas ~ The judge was a highlight - we lawyers can say what we wish, but what the judge says counts!

Agenda

Wednesday, October 10, 2007

8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Martin J. Black, Esq., Program Co-Chair
Dechert LLP / Philadelphia, PA
  John J. Marshall, Esq., Program Co-Chair
Drinker Biddle & Reath LLP / Berwyn, PA
8:45 am Case Law and Legislative Update on Claim Construction
  Federal circuit court review; prospects for legislative changes to allow interlocutory review
  Edward D. Manzo, Esq.
Cook Alex / Chicago, IL
9:30 am Is the Federal Circuit Succeeding: An Empirical Assessment of the Impact of Phillips
  A study of claim construction by the court in the light of the prescriptive basis of Markman; an evaluation of the impact of the court's decision in Phillips v. AWH
  R. Polk Wagner, Esq., Professor of Law
University of Pennsylvania School of Law / Philadelphia, PA
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
  Dianne B. Elderkin, Esq.
Woodcock Washburn LLP / Philadelphia, PA
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
  Martin J. Black, Esq., Moderator, Program Co-Chair
Dechert LLP / Philadelphia, PA
  The Hon. Berle M. Schiller
U.S. District Court, Eastern Dist. of Pennsylvania / Philadelphia, PA
  The Hon. Gregory M. Sleet, Chief Judge
U.S. District Court, District of Delaware / Wilmington, DE
12:30 pm Lunch (on your own)
1:45 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
  John J. Marshall, Esq., Program Co-Chair
Drinker Biddle & Reath LLP / Berwyn, PA
  James J. Kozuch, Esq.
Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd. / Philadelphia, PA
3:15 pm Break
3:30 pm Tips for Successful Claim Drafting
  Managing patent drafting both internally and with outside counsel; ensuring the people who are drafting your patent use adequately plain language and get the results you want
  Ann M. Caviani Pease, Esq., Ph.D.
Dechert LLP / Palo Alto, CA
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
  Benjamin E. Leace, Esq.
RatnerPrestia, P.C. / Valley Forge, PA
5:00 pm Evaluations and 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 Thursday, October 4, 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

This program qualifies for 6.5 PA CLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.

Location

The workshop will be held at the Crowne Plaza Philadelphia Center City Hotel at 1800 Market Street in Philadelphia, PA 19103. Call the hotel directly at (215) 5617500 for reservations at the special negotiated rate of $179 and mention that you are attending a Law Seminars International workshop. Rooms are on a first come, first served basis.
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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).
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Faculty Bios

John J. Marshall, Program Co-Chair, is a partner with Drinker Biddle & Reath LLP's Intellectual Property Practice Group. A registered patent attorney, he represents patent applicants in diverse technologies, provides advice to clients on matters of patent scope and validity, and assists clients in developing business strategies for exploiting their intellectual property assets.

Martin J. Black, Program Co-Chair, is a partner with Dechert LLP and chairs the firm's Intellectual Property Group. He regularly acts as trial counsel for plaintiffs and defendants in patent, trademark, copyright, trade secret and software litigation. Mr. Black is experienced in creating licensing and litigation campaigns to enforce intellectual property rights and has advised multi-national companies how to monetize their intellectual property.

Dianne B. Elderkin, a partner at Woodcock Washburn LLP, and chair of the firm's Litigation Practice Group, focuses on trying patent infringement cases and counseling clients on patentability and freedom to operate issues. She is currently lead counsel in multiple pending patent infringement suits and has represented her clients at five Markman hearings in the last year.

James J. Kozuch, P.E., is a partner with Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd. His practice includes all aspects of intellectual property law, with particular emphasis on litigation, client counseling and prosecution of U.S. and international patent applications. He is also a licensed Professional Engineer and previously worked in engineering, strategic planning and financial analysis for energy-related companies before becoming an attorney.

Benjamin E. Leace is a partner at RatnerPrestia, P.C. and represents clients in intellectual property areas including litigation, licensing, agreements, opinions/counseling and patent/trademark/copyright procurement. He is a past chair of the firm's Litigation and Trademark Practice areas and has been listed in "Philadelphia Magazine" as a "Pennsylvania Super Lawyer."

Edward D. Manzo, an IP specialist since 1975, is a founding partner of Cook Alex in Chicago. He focuses on patent litigation and counseling. He is editor-in-chief of "Claim Construction in the Federal Circuit" (Thomson-West), is on a committee writing pattern jury instructions for patent cases for the 7th Circuit, and participated in KSR, ITW and Phillips.

Ann M. Caviani Pease, Ph.D., is chair of Dechert LLP's Patent Practice and a partner in the Intellectual Property Group. As a registered patent attorney, she counsels clients in the biotechnology, pharmaceutical and medical device industries on intellectual property strategy. Dr. Pease is named in "Best Lawyers in America."

The Hon. Berle M. Schiller is a judge on the U.S. District Court for the Eastern District of Pennsylvania. He is a member of the American Bar Association, former Chair of the National Conference of Federal Trial Judges, and Chair of the Congressional Relations Committee.

The Hon. Gregory M. Sleet is Chief Judge of the U.S. District Court for the District of Delaware. Prior to becoming a judge, he held a number of civil and criminal litigation and corporate legal positions including in-house counsel with Hercules Incorporated, U.S. Attorney for the District of Delaware, member of the U.S. Attorney General's Advisory Committee, and assistant public defender with the Defender Association of Philadelphia.

R. Polk Wagner, Professor of Law at the University of Pennsylvania School of Law, focuses his teaching and research in IP law and policy, with a special interest in patent law. He has published articles ranging from the First Amendment status of software programs to judicial decision-making in patent law. Professor Wagner also founded the FedCir Project, an on-going effort to study the performance of the U.S. Court of Appeals for the Federal Circuit.