Strategies for Claim Drafting and Prosecution to Maximize Enforcement of Patent Rights

A live 90-minute CLE webinar/teleconference with interactive Q&A
Sponsored by the Legal Publishing Group of Strafford Publications
Thursday, April 1, 2010 ~ 1:00pm-2:30pm EDT
Price: $297

Please note: You will be taken to the Strafford website to complete your order.

This CLE seminar will discuss how courts are treating divided infringement claims and the actions patent owners and counsel can take in claims drafting to anticipate such infringement. The panel will outline strategies for prosecution and litigation of divided infringement allegations.

Description

The law of patent infringement addresses infringement by a single actor. However, modern technology has exposed a loophole in the statutory infringement scheme. Where patents require action by more than one actor, divided infringement claims are difficult to prove.

Recent decisions by the Federal Circuit raised the bar for proving infringement. Patent owners and counsel must take proactive steps in drafting patent claims to prevent divided infringement to successfully enforce patent rights.

When facing divided infringement prosecution or litigation, counsel must carefully advise the patent owner about the risks of such claims, and consider matters such as reissue applications, level of control of the alleged mastermind, and alternatives to litigation in U.S. courts.

Listen as our authoritative panel of IP attorneys examines court treatment of divided infringement claims and discusses steps that patent owners and counsel can take in drafting claims to protect patent rights. The panel will offer strategies for prosecution and litigation where divided infringement is alleged.

Outline

• Court treatment
  • Pre-BMC case law
  • BMC Resources v. Paymentech (Fed. Cir. 2007)
  • Muniauction v. Thompson Corp. (Fed. Cir. 2008)
  • Emtel v. Lipidlabs (S.D. Tex. 2008)
  • Global Patent Holdings v. Panthers BRHC (S.D. Fla. 2008)
  • Keithley v. Homestore.com Inc. (N.D. Cal. 2008)
  • Centillion Data Systems v. Quest Corp. (on appeal Fed. Cir. 2010)
• Patent claim drafting considerations
  • Steps in each claim satisfied by single actor
  • Claims for systems
  • Products of patented processes – 35 U.S.C. section 271(g)
• Post-issuance considerations
  • Filing a reissue application
  • Pleading control of the “mastermind”
  • Targeting “control” issue in discovery
  • Alternatives to filing in district court

Benefits

The panel will review these and other key questions:

• How are the federal courts treating the issue of divided infringement?
• If a patent application is being drafted, what steps should counsel take to avoid divided infringement problems?
• If a patent has been issued, what can be done to minimize the likelihood of divided infringement?
• What are the key considerations for counsel when preparing for litigation on divided infringement claims?

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Michael A. Cicero, Member
Womble Carlyle Sandridge & Rice, Atlanta
He focuses on intellectual property litigation exclusively. He handles patent infringement litigation and participates in Markman hearings, trials, and motion proceedings. He has also prepared and prosecuted patent applications.

Richard S.J. Hung, Partner
Morrison & Foerster, San Francisco
He focuses on intellectual property litigation and counseling. He has litigated a variety of technology matters and advises clients on strategic patent issues. He also has been involved in trade secrets litigation in state court and in commercial arbitration before the American Arbitration Association.

Stephen Schreiner, Partner
Goodwin Procter, Washington, D.C.
He focuses on all aspects of intellectual property law including patent litigation, patent prosecution, counseling and due diligence related to electronics, signal processing, software, e-commerce, business methods, digital television, telecommunications, interactive media, the Internet and other areas.

Register Today!
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

Please note: You will be taken to the
Strafford website to complete your order.