Trial of a Patent Case
What You Will Learn
You have a patent dispute where it appears that you, as the alleged infringer, will lose on infringement. Is all lost for your client? Or, despite the unfavorable liability determination that is likely to come down, can you help your client maintain its market position and avoid a substantial damage award? Can you present your arguments at trial in a clear, understandable, and persuasive manner?
This innovative course of study, now in its fifteenth year and comprising over 12 hours of instruction, answers this question and many more.
The framework for the discussions is the demonstration of a hypothetical case that presents issues litigated in patent infringement actions. The sessions combine several methods of presentation: demonstration openings, examinations of expert witnesses, and closings in the hypothetical case; post-mortem commentary on the demonstrations by judges and practitioners; and straightforward explication. The faculty includes six federal judges with vast experience in patent cases, as well as leading patent practitioners.
The course helps registrants become conversant with several issues they can expect to see tried more frequently in the future. These include
• Obviousness after the Supreme Court decision in KSR International v. Teleflex Inc.;
• Inequitable conduct in the light of recent Federal Circuit precedents;
• Damages, injunctions, compulsory licenses, and other forms of relief in the wake of eBay v. MercExchange; and
• How recent changes in the law of willful infringement (including the Federal Circuit's decision in In re Seagate) will play out.
While concentrating on the changes to these four very different areas of patent litigation, the course will provide practitioners with practical tips on how best to structure and present persuasive arguments in view of the relevant case law.
The program also features an open forum during which registrants can get answers to their questions from a panel of distinguished trial and appellate judges. Over the years this has proven to be one of the most popular elements of the course.
This advanced course is designed for in-house litigation counsel responsible for the active management of patent matters and for private practitioners with at least moderate experience in patent matters. By the end of the course, registrants will have a better understanding of how to present the complex issues in a patent case through the use of simple themes employing proof consistent with Federal Circuit precedent.
Planning Chairs
(also on faculty)
Marvin J. Garbis, U.S. District Judge, Baltimore
George F. Pappas, Covington & Burling LLP, Washington, D.C.
Faculty
Judges
André M. Davis, U.S. District Judge, Baltimore
Kent A. Jordan, U.S. Circuit Judge, Wilmington, Delaware
Larry J. McKinney, Chief U.S. District Judge, Indianapolis
Liam O'Grady, U.S. District Judge, Alexandria, Virginia
Kathleen M. O'Malley, U.S. District Judge, Cleveland
Others
Kevin B. Collins, Covington & Burling LLP, Washington, D.C.
Ahmed J. Davis, Fish & Richardson, P.C., Washington, D.C.
Isabella Fu, Senior Attorney, Microsoft Corporation, Redmond, Washington
Philip Green, Hoffman Alvary & Company LLC, Newton, Massachusetts
Philip S. Johnson, Chief Patent Counsel, Johnson & Johnson, New Brunswick, New Jersey
Michael E. Jones, Potter Minton, P.C., Tyler, Texas
Sherry M. Knowles, Senior Vice President - Corporate Intellectual Property, GlaxoSmithKline, King of Prussia, Pennsylvania
Patrick D. Lane, Associate General Counsel - Patent Litigation, Proctor & Gamble Company, Cincinnati
Robert O. Lindefjeld, Jones Day, Pittsburgh
Kevin D. McDonald, Jones Day, Washington, D.C.
Christine Meyer, Ph.D., Vice President, National Economic Research Associates, Inc., White Plains, New York
Michael A. Morin, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C.
Richard L. Rainey, Covington & Burling LLP, Washington, D.C
ALI-ABA Staff: William S. Stevens, Assistant Director, Office of Courses of Study (wstevens@ali-aba.org)
Note: the discussions include at least one full hour on ethics and professional responsibility issues, accepted as such by most, but not all, MCLE jurisdictions.
Program Schedule
THURSDAY, FEBRUARY 28, 2008
8:00 a.m. Registration and Continental Breakfast
9:00 a.m. Introductory Remarks and Introduction to Case Problem
9:15 a.m. Plaintiff's and Defendant's Opening Statements
10:00 a.m. Life after KSR: Recent Federal Circuit Decisions and KSR's Effect on Trying Cases
10:45 a.m. Networking Break
11:00 a.m. Direct and Cross-Examination of Plaintiff's Technical Expert Witness on Invalidity
12:00 noon Lunch Break
1:15 p.m. Direct and Cross-Examination of Defendant's Technical Expert Witness on Invalidity
2:15 p.m. Enacted/Proposed Patent Reform Legislation that Might Affect Handling of Your Patent Cases
3:00 p.m. Networking Break
3:15 p.m. Rebutting a Defendant's Prima Facie Case of Obviousness with Objective Considerations of Non-obviousness
3:45 p.m. Inequitable Conduct and the Federal Circuit's New-found Interest in the Topic: Recent Decisions and Where Are We Headed?
4:30 p.m. In-House Counsels' Views on Recent Federal Circuit Decisions and Other Developments Affecting Patent Infringement Litigation
5:15 p.m. Adjournment for the Day
FRIDAY, FEBRUARY 29, 2008
8:30 a.m. Continental Breakfast
9:00 a.m. Developments at the Intersection of Antitrust and Patent Law
9:45 a.m. Direct and Cross-Examination of Plaintiff's Damages Expert
10:30 a.m. Networking Break
10:45 a.m. Direct and Cross-Examination of Defendant's Damages Expert
11:30 a.m. The Emerging Role of the Supreme Court in Intellectual Property Cases
12:00 noon Lunch Break
1:15 p.m. Closing Arguments on Damages
2:00 p.m. e Bay and Its Aftermath: How It Has Been Applied and What It Means Now as to the Availability of Permanent Injunctions
2:45 p.m. Case Management Issues in Patent Litigation
3:15 p.m. Networking Break
3:30 p.m. Willful Infringement Claims in the Aftermath of In re Seagate
4:00 p.m. Open Forum: Ask the Judges About Patent Litigation
4:45 p.m. Adjournment
Total 60-minute hours of instruction: 12.5
Suggested Prerequisite: Some experience in legal practice in subject matter
Educational Objective: Acquisition of knowledge and skills to develop proficiency as a practitioner; provision of information on recent legal developments; development of proficiency in performance of intricate and complex legal tasks within a narrow area
Level of Instruction: Advanced
Here's what registrants have said about this course:
"Excellent fact pattern to delve into the diverse issues. Lawyers presented issues in a clear and concise manner and judges' analysis was helpful in practical aspects."
"ALI-ABA programs are consistently among the best programs substantively."
"The course was extremely good. I am new to patent/IP practice, and it was so informative to hear the simulated in-court presentations. The interaction of the judges with the participants was particularly good."
"Excellent course and great panel."
"Panel discussions between judges and between corporate counsel were highly insightful."
"Fantastic! I am so appreciative of the judges and moot court advocates, especially."
"The best and most unique aspect of this seminar is the opportunity to hear the perspectives and practices of a number of diligent and intelligent federal judges."
