Law Seminars International Presents

A Comprehensive One-Day Workshop on

Managing Patent Prosecution and Litigation

New regulations, rules and challenges, along with practical tips for success

August 24, 2007
Crowne Plaza Union Square in San Francisco, CA
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Who Should Attend

Patent attorneys in private, corporate, or public agency practice, patent managers, inventors, and anyone dealing with patent preparation and prosecution

Why Attend

The importance of patents continues to grow in today's globally competitive environment while patent procurement and enforcement are getting ever more complex. Recent patent reforms and pending proposals are changing the prosecution and litigation landscape, and companies need the latest strategies to build and maintain effective patent programs and to develop, acquire, and leverage their patent portfolio. This program helps in-house and outside attorneys, patent managers and business executives manage patent assets, from the inception of an invention to the enforcement of a patent. The implications of on-going PTO and legislative changes are analyzed and discussed, and strategic patent portfolio development and patent litigation management are explored from an in-house perspective across major technology areas. Our distinguished faculty will offer an examination of the pros and cons in the use of PTO proceedings, explore key elements for successful patent litigation relationships and help answer questions such as: What are the best practices in drafting claims and disclosures in light of recent patent law changes? What is the impact of major recent court cases on prosecution and litigation? How can major international patent prosecution and litigation be managed? ~ Program Co-Chairs: Todd A. Lorenz, Esq. and Stefani E. Shanberg, Esq.

What You Will Learn

~Recent patent reforms and pending proposals in Congress and the PTO, and analysis of implications for prosecution and litigation ~Best practices in drafting claims and disclosures in light of recent patent law changes ~Portfolio development, with in-house counsel of software, network and security; biotechnology and pharmaceuticals; and semiconductors and hardware industries ~Major recent court cases: How they effect damages and the economics of licensing

What Attendees Have Said About Similar Programs

~Thank you for your commitment to providing us with world class education opportunities. ~[LSI] provide(s) in-depth, focused seminars on fairly narrow topics, rather than an overview. This is important for someone actually hoping to learn something at a conference (as opposed to just racking up some CLE hours).


Friday, August 24, 2007

8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Stefani E. Shanberg, Esq., Program Co-Chair
Wilson Sonsini Goodrich & Rosati / Palo Alto, CA
  Todd A. Lorenz, Esq., Program Co-Chair
Dorsey & Whitney LLP / San Francisco, CA
8:45 am Recent Patent Reforms and Pending Proposals in Congress and the PTO, and Analysis of Implications for Prosecution and Litigation
  Who is advocating what changes before the PTO and legislative bodies? Who is opposed? What are the prospects for change? How would they change the way companies do their jobs?
  William Tucker, Ph.D., Executive Director
University of California-Office of Technology Transfer / Oakland, CA
  Maggie Kanter, Esq., Ph.D., Vice President and Intellectual Property Counsel
Genzyme Corporation / Cambridge, MA
  The economic implications of current proposals and why business effects vary by industry
  Kenneth Serwin, Ph.D., Director
LECG, LLC / Emeryville, CA
9:45 am Preparing Patent Applications for Successful Litigation and Licensing
  Best practices in light of recent patent law changes
  Edward Bulchis, Esq.
Dorsey & Whitney LLP / Seattle, WA
  Todd A. Lorenz, Esq., Program Co-Chair
Dorsey & Whitney LLP / San Francisco, CA
10:45 am Break
11:00 am Portfolio Development from In-House Counsel: Putting the 'Strategy' Back into a Strategic IP Program; Building and Maintaining a Multi-Faceted Cross-Functional Program to Develop, Acquire and Leverage Strategically Important Patents
  Software, network and security
  Todd Nelson, Esq., Vice President of Legal
Fortinet Inc. / Sunnyvale, CA
  Biotechnology and pharmaceuticals
  Donald W. Wyatt, Esq., Vice President of Legal and Corporate Secretary
Cell Therapeutics, Inc. / Seattle, WA
  Semiconductors and hardware
  Michael L. Lynch, Esq.
Schwegman, Lundberg, Woessner & Kluth / Austin, TX
12:15 pm Lunch (on your own)
1:30 pm Impact of Major Recent Court Cases on Prosecution and Litigation
  Stefani E. Shanberg, Esq., Program Co-Chair
Wilson Sonsini Goodrich & Rosati / Palo Alto, CA
  How the decisions effect damages and the economics of licensing in patent litigation
  Clarke Nelson, C.P.A., Managing Director
FTI Consulting / Salt Lake City, UT
3:00 pm Management of International Patent Litigation
  James C. Otteson, Esq.
Wilson Sonsini Goodrich & Rosati / Palo Alto, CA
3:30 pm Break
3:45 pm Strategic Use of the PTO Proceedings in Litigation
  Examination of the pros and cons for plaintiffs and defendants in the use of PTO proceedings during litigation, including when PTO proceedings should be used, what the scope of those proceedings should be, and what effect they will have on the litigation
  Maya M. Eckstein, Esq.
Hunton & Williams LLP / Richmond, VA
4:30 pm Managing Patent Litigation for In-House and Outside Counsel
  Panel explores the key elements for successful relationships and provides tips for determining reasonable costs and ensuring good quality representation
  Jonathan M. James, Esq.
Perkins Coie LLP / Phoenix, AZ
  Melissa A. Finocchio, Esq.
Micron Technology, Inc. / Boise, ID
5:30 pm Evaluations and Adjourn


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, August 17, 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

Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 6.25 California MCLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.


The workshop will be held at the Crowne Plaza Union Square Hotel at 480 Sutter Street in San Francisco, CA 94108. Call the hotel directly at (415) 398-8900 for reservations at the special negotiated rate of $169/nt and mention that you are attending Law Seminars International's "Managing Patent Prosecution and Litgation" 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).
Order Homestudy

Faculty Bios

Todd A. Lorenz, Program Co-Chair, is a partner with Dorsey & Whitney LLP and chair of the firm's Life Sciences and Health Care Practice Group. He works on the acquisition, licensing, and litigation of biotech patents, with a focus on strategic counseling, patent portfolio management and transactional advice.

Stefani E. Shanberg, Program Co-Chair, is a partner with Wilson Sonsini Goodrich & Rosati and specializes in intellectual property litigation with a focus on patent litigation, including investigations before the International Trade Commission. She has led litigation in the software, semiconductor, Internet, product design, and consumer products technology sectors.

Edward Bulchis, partner in the Intellectual Property Practice Group at Dorsey & Whitney LLP, practices intellectual property law with emphasis on patent prosecution and counseling in complex electrical technologies and patent litigation. He is listed in America's Leading Lawyers and Best Lawyers in America and named a "Super Lawyer".

Maya M. Eckstein, partner at Hunton & Williams LLP, focuses on complex litigation, particularly patent infringement, commercial and appellate litigation. She is named in Who's Who in America, Who's Who of Emerging Leaders, and is a "Virginia Super Lawyer".

Melissa A. Finocchio, Senior Assistant General Counsel at Micron Technology, Inc., manages high-stakes litigation matters, including patent and other intellectual property disputes. Previously she litigated complex commercial and intellectual property cases in Silicon Valley and was a partner at Orrick, Herrington & Sutcliffe LLP.

Jonathan M. James, partner with Perkins Coie LLP, focuses on patent, intellectual property and other commercial litigation for technology companies. Recently he has been assisting U.S. technology companies in intellectual property infringement and licensing/unfair competition litigation matters in China.

Maggie Kanter, Ph.D. is Vice President and Intellectual Property Counsel at Genzyme Corporation, where she is responsible for managing the creation, protection, licensing and enforcement of intellectual property relating to protein, gene and cell therapeutics.

Michael L. Lynch, registered patent attorney and shareholder with Schwegman Lundberg Woessner & Kluth, focuses on patent preparation and prosecution, opinions on patent validity and infringement, IP development and enforcement strategies, complex licensing and other technology transfer agreements. Previously he was Chief Patent Counsel at Micron Technology, Inc., where he managed or participated in virtually all aspects of IP development, management and enforcement while directing the growth of Micron's patent portfolio from a few hundred to several thousand U.S. patents.

Clarke Nelson, Managing Director with FTI Consulting's Forensic and Litigation Consulting Practice, specializes in damages and other quantitative analyses involving IP disputes. He is a Certified Public Accountant licensed in Utah and Colorado.

Todd Nelson, Vice President of Legal (and formerly General Counsel) with Fortinet Inc., oversees legal matters, including intellectual property, contracts and corporate development/transactions. He is experienced in the legal and technology industries, including engineering and engineer management.

James C. Otteson, partner with Wilson Sonsini Goodrich & Rosati, focuses on intellectual property litigation, including patent litigation in the U.S. district courts and the U.S. International Trade Commission (ITC).

Kenneth Serwin, Ph.D., Director at LECG, LLC, is an economist specializing in the economics and valuation of intellectual property and has testified on the determination of commercial economic damages in intellectual property and securities matters. He provides strategic intellectual property consulting services and has supported intellectual property licensing negotiations.

William Tucker, Ph.D. is Executive Director of the University of California's Office of Technology Transfer. He focuses on patenting and licensing inventions and in working with industry in support of the University's education, research, and public service missions.

Donald Wyatt, Vice President of Legal and Corporate Secretary for Cell Therapeutics, Inc., a global biopharmaceutical company, is responsible for in-house legal management, including intellectual property strategy and risk management.