Philip Brooks' Patent Infringement Updates

Best Tax Practices for Managing Intellectual and Intangible Property

On July 9, 2009, CCH is hosting a live audio seminar titled, "Managing Your Intellectual and Intangible Propery: Best Tax Practices for Domestic and Cross-Border Operations."

Learn the best tax strategies for working with intangible assets — in a timely and convenient two-hour audio seminar that you can participate in — right from your office — on Thursday, July 9th.

Intellectual property (IP) of U.S.-owned companies operating in interstate or cross-border commerce is increasingly becoming the most sophisticated and cutting-edge tax-efficient planning tool in the tax professional’s arsenal. Using the proper strategies and techniques available under present tax laws, there are significant opportunities available through the transfer of the exploitation rights of IP to the proper state and/or foreign jurisdictions.

Join noted tax advisor, author and presenter, William “Bill” Elliott, CPA, ABV, J.D., LL.M. on Thursday, July 9, in a timely and informative two-hour program as he discusses the fundamentals of intangible assets while providing practical strategies to manage the overall IP portfolio. Mr. Elliott will provide thorough coverage of the tax impact on intangibles for both domestic and international transactions. Visit the links above for complete details on this seminar.

Learn more and register here.

2nd Annual Pharmaceutical Congress on Paragraph IV Disputes

The Center for Business Intelligence is hosting the above-titled conference in Philadelphia, PA on October 22-23, 2009.

Paragraph IV litigation is reaching an all-time high with almost $85 billion in product sales that potentially could be affected by pending litigation and more than twenty-five drugs going off patent before 2012.  Today’s pharmaceutical companies, both brand and generic, have much at stake in this costly, complex and constantly changing area of patent litigation.  CBI’s 2nd Annual Pharmaceutical Congress on Paragraph IV Disputes brings both sides of the issue together for two days of presentations and panel discussions to discuss litigation strategies, statutory guidelines, current cases and their landmark decisions.

 Confirmed Sessions Include:

    Inequitable Conduct and Exceptional Cases – What Does Recent Case Law Tell Us?

        * Inequitable conduct and recent Federal Circuit decisions
              o Aventis Pharma v. Amphastar Pharmaceuticals and Teva 
        * Exceptional cases
              o What makes a case exceptional?
              o Assess Takeda v. Apotex and Alphapharm and prior “exceptional” case examples

        Anthony J. Viola, Partner, Edwards Angell Palmer & Dodge LLP

    Analyze FTC Enforcement Activity and Reverse Payment Policy Initiatives

        * Evaluate continuing development of antitrust litigation
        * Analyze pending reverse payment policy and evaluate the force(s) behind it
        * Discuss authorized generics and their impact on competition
        * Understand the FTC’s findings in their report on FOB market entry and pioneer/FOB competition

        Saralisa Brau, Deputy Assistant Director, Health Care Division, Federal Trade Commission

Learn more and register here.

Developments in Pharmaceutical and Biotech Patent Law 2009

PLI is hosting the above-titled conference in New York City on September 17, 2009 (along with groupcasts in Boston, Philadelphia and Pittsburgh and a live webcast) and in San Francisco on October 14, 2009.

This year’s program is totally new! Pharmaceutical and biotech patent law is an important and rapidly changing practice area and the program is designed to give you the information you need to maintain your practice edge.

Technological innovation, Federal Circuit appellate oversight, Congressional action and Supreme Court decisions have all driven significant changes in the law. Several different perspectives on many of the most pressing issues will be offered from experienced in-house and outside counsel.

Do not miss this opportunity to fully understand the impact of appellate decisions and the pending patent legislation on your pharmaceutical and biotechnology patent practice.

What You Will Learn

• The patentability of pharmaceutical products post-KSR v. Teleflex from the Federal Circuit and District Court perspectives
• Inequitable conduct in biotechnology and pharmaceutical patent cases; recent Supreme Court and Federal Circuit developments
• Section 112 developments regarding enablement and written description requirements: the impact of U.S. Patent and Trademark Office (USPTO) Written Description Guidelines
• Cutting-edge issues impacting your pharma and biotech patent prosecution practice
• Patent misuse and other issues in pharma and biotech licensing
• At the intersection of antitrust and pharma and biotech patent cases: unique issues that can arise and strategies to avoid antitrust liability

Faculty

Co-Chairs

    David K. Barr, Kaye Scholer LLP
    Daniel L. Reisner, Kaye Scholer LLP

Speakers

    Karen I. Boyd, Turner Boyd LLP
    Jennifer Gordon, Baker Botts L.L.P.
    Timothy R. Holbrook, Professor at Law, Emory University School of Law
    Lisa A. Schneider, Sidley Austin LLP
    Gerald Sobel, Kaye Scholer LLP
    Darryl L. Webster, Senior Patent Counsel, Wyeth
    Cynthia H. Zhang, Ph.D., Director, Intellectual Property, Gilead Sciences Inc

Program Attorneys

    John M. Mola, Practising Law Institute

More information and registration are available here.

 

Elite Group of Chief Intellectual Property Officers to Convene For Groundbreaking Meeting

The following is excerpted from a June 2, 2009 IAM press release:

Intellectual Asset Management (IAM) magazine, the world’s leading provider of IP business news, today announced it will host the inaugural meeting of the Chief Intellectual Property Officer (CIPO) Manifesto Working Group.  The event will be attended by a number of top CIPOs from around the world, including: Marshall Phelps, Microsoft; Damon Matteo, PARC; Sherry Knowles, GlaxoSmithKline; Carl Horton, GE; Ruud Peters, Philips IP & Standards; Peter Cicala, Shire Pharmaceuticals; Bill Elkington, Rockwell Collins; Beatrix de Russé, Thomson; and Scott Frank, AT&T. Other leading IP thought-leaders will also be taking part in the invitation-only meeting, which is being held in Chicago on 21st June.
 
Through a series of innovative and interactive exercises, led by Luke Hohmann the CEO of Enthiosys Inc, the group will explore the ideal CIPO profile and the organizational environment within which the CIPO should operate, as well as the responsibilities that should come with the role and the metrics by which CIPO performance should be measured.
 
“We believe the CIPO role will become increasingly important, as businesses begin to understand just how important IP rights are to their core performance. We hope this meeting will form the basis for on-going research into the role and how it can best be shaped to meet the needs of the 21st century corporation,” explained Joff Wild, IAM magazine’s Editor.  “We intend to share and discuss the results of the meeting with IP Business Congress delegates during breakout and plenary sessions.”
 
The IP Business Congress is expected to be the single most important gathering in the IP community this year.  Over 300 top executives, including Chief IP Officers from Fortune 500 companies, heads of IP at other major companies, global IP thought leaders and senior policy makers, will gather for two days of top-level discussion and debate at the Four Seasons Hotel in Chicago from the 21st to the 23rd of June.
 
For more information on the event and to register please visit www.IPBC2009.com/PR.  As a limited promotion, IAM is offering a reduced rate of $1,350 (standard rate $1,500) for those that register online and enter the code WC10.

Eastern District of Texas Venue Update

The American Bar Association's Section of Intellectual Property Law is hosting the above-titled teleconference and live audio webcast on May 15, 2009.

In light of recent orders and appeals from orders on motions to transfer venue from the Eastern District of Texas, many litigants are considering and even filing their own motions to transfer to other districts nationwide. The program will evaluate the latest legal precedents, discuss the developing standards for motions to transfer, and preview the venue provisions contained in the patent reform legislation pending in Congress.

Faculty

• Todd E. Landis, Akin Gump Strauss Hauer & Feld, LLP

• Susan McGahan (Moderator), AT&T

• Fred I. Williams, Akin Gump Strauss Hauer & Feld, LLP

More information and registration are available here.

Estimating Damages of Patent Infringement

IncreMental Advantage is hosting the above-titled seminar:

Patent damages are outlined in the 35 USC § 284 statute and state that a patent holder is entitled to at least a reasonable royalty as damages. This code also defines the compensatory nature of patent damages and allows for any damages necessary to adequately compensate the patent holder. The compensatory damages can include lost profits, price erosion, harm to company’s reputation, harm to company’s relationships with its customers and suppliers, and so on (besides a reasonable royalty).

This course is designed to address the issues that arise in the determination of reasonable royalty damages. We start with the basics of how to determine a reasonable royalty including:

* The Georgia-Pacific factors

* Cost of next best alternatives

* Milestone payments

This course will also discuss how to determine the lost sales and associated lost profits using incremental costs approach. It will look into methods used to assess price erosion and other economic harms to the patent holder. Note, patent damages do not allow for disgorgement of the infringer’s profit unless it is a design patent.

This course will be held on June 9, 2009 in Washington, DC and as a Live Webinar.  Learn more and register here.

Invention Analysis and Claiming Seminar

Based on Ronald Slusky's widely praised book, the Invention Analysis and Claiming Seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims.  Through this interactive seminar, participants will enhance their skills in a classroom setting.

The two-day seminar is first held on May 19-20, 2009 in Chicago, Illinois.  Subsequent sessions throughout the year will take place in Boston, MA; Santa Clara, CA; Philadelphia, PA; Washington, DC; Dallas, TX and New York, NY.

The practitioner’s first task is to identify the invention—the broad inventive concept underlying the embodiments—and only then to undertake to draft the claims. So although we will be drafting claims, this isn’t a claim-drafting course per se. The focus is on claiming strategies based on our analysis of the invention and its fallback features. Various sessions will thus look at…

• Why simply whittling down a claim may not capture the broad invention.
• The problem-solution statement as the key to discovering the breadth of the invention.
• How to draft independent claims based on the problem-solution statement and the inventive departure.
• Using the paradigm of the Planned Retreat to draft meaningful dependent claims.

Learn more and register here.

Trolls II - Realities & Myths in Patent Litigation Today

In 2005, the Intellectual Property Owners Association (IPO) sponsored its wildly successful “Patent Trolls and Patent Property Rights” conference, the first national conference to explore how patent litigation was being affected by “trolls” and other “non-practicing” patent owners. This year IPO is assembling world class speakers to revisit the topic after four years of legislative, judicial, and academic debate. Hence, “TROLLS II.”

Join your colleagues to discuss the types of non-practicing patent owners and developments in patent litigation in U.S. courts, at the ITC, and in Asia. Speakers, to be announced on the IPO website shortly, will provide varying perspectives on who is a “troll,” in the pejorative sense. Experts will address litigation trends and cost containment strategies for in-house counsel. Space is limited.

TOPICS COVERED

• Trends in Patent Litigation
• The Effect of “Trolls” on the Patent Litigation Landscape
• Non-Practicing Entities in the ITC
• Non-Practicing Entities in Asia
• Best Practices for Corporations That are Potential Defendants
• The Patent Owner: Asserting Allegations of Patent Infringement
• Venue: A Friend or Foe?
• Corporate Discovery in the Information Age
• In-House Perspectives on Controlling the Costs of Patent Litigation
• Post eBay Damages and Injunctions
• Tips for Getting the Best IP License and for Using Standing as a Defense to Patent Infringement

Learn more about this May 28-29, 2009 Washington, DC conference here.

Enforcing Intellectual Property at the U.S. International Trade Commission

The American Bar Association is hosting the above-titled teleconference and live audio webcast program on May 5, 2009.

The U.S. International Trade Commission is increasingly the forum of choice for litigation directed against importers and distributors of products that infringe U.S. patents, trademarks, copyrights, or that are otherwise somehow tainted by unfair methods of competition. These cases (so-called “Section 337 cases”) are so popular because:

• they are much faster and less expensive than comparable court cases (even in “rocket dockets”);
• they are tried to experienced Administrative Law Judges who handle these cases exclusively;
• an ITC Staff attorney is involved in every case to assure that private parties have access to assistance if they need it;
• injunctive relief is automatically granted if the complaining party wins;
• U.S. Customs and Border Protection automatically excludes any further importations of goods found to infringe — at no cost to and without further involvement by the complaining party;
• any company conducting legitimate activities in the U.S. that is the victim of unfair trade practices from abroad can bring a Section 337 case, regardless of it country of origin (Section 337 cases have been brought by companies based in virtually every industrialized country in the world);
• accused infringers cannot avoid the ITC’s in rem jurisdiction once their products have entered into the U.S.;
• and relief is automatically awarded against defaulters.

Faculty

Thomas Fusco, U.S. International Trade Commission
Marylee Jenkins (Moderator), Arent Fox, LLP
Ralph Mittleberger, Arent Fox, LLP

More details and registration are available here. 

Indemnification in IP Transactions: Critical Issues You Need To Know

This National Constitution Center 60-minute audio conference is scheduled for Thursday, May 7, 2009:

Intellectual Property Indemnification Nuts & Bolts
**   Who is entitled to indemnification & what types of losses are covered
**   What factors influence indemnification terms?
**   What are the most critical provisions and when do you need them?
**   IP Indemnity issues from both the licensor & licensee’s perspective

IP Contract Essentials: Keys To Drafting & Negotiating
**   "Grant Back" provisions: How & when should you use them?
**   Key clauses: Sandbagging, Limitation, Survival & more
**   Defining when the indemnity is triggered and survival periods for claims

Indemnification Provisions: Keys to Minimizing Risk
**   Keys to handling potential estoppel issues
**   Determining indemnification caps and exclusivity of remedies
**   Often-disputed issues in IP indemnity & how to solve them
**   Deductible "baskets" and indemnity "thresholds": Which is best for you?

The program speaker is Karen F. Copenhaver, partner in Choate Hall & Stewart LLP's Business & Technology Group.  Learn more and register here.