2016 All Hands Meeting
November 17 Session
Advanced IP Track Agenda

Design Patents: Modern Uses for a Classic Form of Intellectual Property

Elizabeth Ferrill

The first design patent issued for a typeface in 1842. Today, innovative design owners use them to protect everything from hip implants and truck bumpers to food stuffs and user interfaces. For a variety of businesses, design patents are vital IP tools for fighting knock-offs, protecting high-value replacement parts, or creating distance between your company’s “look and feel” and your competitor’s. And this year, the Supreme Court will consider design patent law for the first time in more than a century in the Apple v. Samsung case. How can your company protect your product designs? When is a design patent the right choice? How would design patents fit into your overall IP portfolio? If you already have a design patent portfolio, how may Apple v. Samsung affect that portfolio? Join us for an overview of design patents as well as discussion of these important emerging areas.

I've Looked At Life Patents From Both Sides Now

Travis Thomas/Mark Lemley/Larry Rozsnyai/Jennifer Zanocco
Baker Botts L.L.P./Stanford Law School/Gilead Sciences, Inc./Google, Inc.

In-house counsel tend, for good reason, to be less specialized than their colleagues in private practice, taking a more holistic view that considers all the aspects of a legal objective in order to avoid pursuing ultimately unenforceable rights. This is especially important for portfolio management strategy, because patents must have claims with detectable infringement and be capable of withstanding validity challenges in different forums. This presentation will examine the interplay of prosecution, licensing, litigation, and post grant procedures, illustrated with real-world examples of prosecuting patents with a litigator's mindset, and litigating patents from the perspective of a patent prosecutor.

Nonce-sense: Functional Claiming in the Modern Era

Douglas Lumish
Latham & Watkins LLP

Since its origin in the 1800s, the ebbs and flows in the proscription against purely functional claiming have had a critical role in shaping the way inventions have been claimed and litigated. Today, post Williamson and Alice, the battleground over functional claims has shifted, leaving many to wonder whether the doctrine still persists as an independent basis for invalidity, or whether it has been subsumed by the more active jurisprudence related to §101 eligibility and means-plus-function claiming. This session will explore that question and review some of the pivotal cases on point.

Willful Infringement, Enhanced Damages & Recovery of Attorney Fees in Patent Litigation

Robert Kramer/Hon. Faith Hochberg/Dana Rao
Dentons/Hochberg ADR LLC/Adobe Systems Inc.

This summer, in the Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. cases, the U.S. Supreme Court provided new guidelines for awarding enhanced damages for patent infringement. This discussion will look at how companies can prepare to avoid a finding of willfulness for patent assertions by competitors and NPEs, in light of these decisions.

New Adventures for Alice

Richard Hung & Bita Rahebi
Morrison & Foerster LLP

In the two years since the U.S. Supreme Court decided Alice v. CLS Bank, there has been an ebb and flow of patents successfully resisting Section 101 challenges. After an initial surge in Section 101 rejection rates and district court invalidations based on Alice, there are signs that the trend may be reversing, both in the courts and at the USPTO. This discussion will examine these trends, and suggest how companies can adjust their strategies to "go with the flow."

Please Note: Program details are subject to change without notice

2016 Participating Law Firms & Companies