Advanced Patent Law Seminar: New York City – Spring 2013

The Chisum Patent Academy’s latest New York City seminar was held February 20-22, 2013 .


American Elm conference room (Suite 503), Helmsley Park Lane Hotel, 36 Central Park South, New York, NY 10019.


Our three-day Intensive Patent Law Seminars run from 9 am to 12 noon and 1 pm to 4 pm each day, for a total of 18 seminar hours.

Our seminars are limited to ten (10) attendees. To maximize opportunities for discussion and questioning, we conduct the seminars in interactive, round-table style. All sessions are co-taught by Donald Chisum and Janice Mueller.

Seminar Coverage:

We update the syllabus for every seminar to include the latest and most significant Federal Circuit and Supreme Court patent law developments. The NYC 2013 seminar will focus in great depth on two timely and controversial patent law topics: patent claim interpretation and active inducement (particularly in the context of multi-actor method claims). We will also cover America Invents Act developments including the USPTO’s final rules on first inventor to file (taking effect three weeks after our seminar); preliminary injunctions and design patents; and inequitable conduct decisions post-Therasense. Here are additional details for each topic:

*Claims as the “Name of the Game”: Lessons on Patent Claim Drafting and Interpretation from Recent Federal Circuit Cases. Nothing is more important to patent prosecution, evaluation, licensing and litigation than patents’ claims and their construction. We will analyze and discuss in detail a significant number of recent decisions. They demonstrate that Federal Circuit judges hold radically conflicting views on the doctrine of “claim differentiation” versus the weight to be given a specification’s disclosure and examples. When is there a “disclaimer” or an “implicit definition” that narrows the “ordinary meaning” of a claim term? We will also look at certain recurring claim interpretation problems including (1) “joinder” phrases such as “attached,” “movable,” and “releasably” (that is, how must two components be related?); (2) singular and plural (that is, when does “a widget” mean only one widget?); and (3) the “comprising” transition and recitation of additional elements (that is, when is an added element merely an addition as opposed to a negation of an element?).

*Active Inducement, Method and System Claims, and Joint Infringement. Cases including the Federal Circuit’s DSU (2006) en banc decision and the Supreme Court’s Global-Tech (2011) decision focus on the requirement of scienter (knowledge and/or intent) for indirect infringement, a requirement not applicable to direct infringement. Congress has also weighed in with Section 17 of the America Invents Act (AIA), barring reliance on a party’s failure to obtain advice of counsel to show active inducement. Is the scienter element of active inducement now fully synonymous with willful infringement? Does a good faith non-infringement position per se preclude active inducement liability? Active inducement is now intertwined with joint (or distributed) infringement. The Federal Circuit’s 6-4-1 en banc majority decision in Akamai (2012) held that active inducement requires proof of direct infringement but not proof of a single direct infringer. What is Akamai‘s impact on the law of inducement? What is the test for direct infringement after Akamai? Also problematic is the geographic scope of the active inducement remedy. Must a patent owner prove that all steps of a method are carried out in the United States? How does the analysis of any of these issues change if a claim is drafted to a “system,” which effectively contains all the same steps as a corresponding method claim?

*America Invents Act’s “First Inventor to File” Principle on the Eve of Its Effective Date (March 16, 2013). The AIA’s Section 3 implements a “first inventor to file” (FITF) principle, a historic shift away from the venerable first to invent system. Section 3 takes effect on March 16, 2013, and applies only to applications that are (1) filed on or after that date and (2) contain (at any time) a claim having an effective filing date on or after that date. By the time of our NYC seminar, the USPTO will have issued both final rules and examination guidelines on FITF addressing key points of ambiguity including the on sale bar and its “exceptions” (grace period). Using a straightforward example, we will plumb all aspects of the AIA’s Section 3, including its effective date provisions (Section 3(n)) and its wholesale revision of Section 102 of the Patent Act.

*Preliminary Injunctions and Design Patents: Apple v. Samsung. In 2012, the Federal Circuit rendered two important decisions on preliminary injunctions in the context of alleged infringement of Apple’s design and utility patents on smartphones and tablets. We will examine these fascinating decisions together with other decisions on preliminary injunctions and design patents.

*Inequitable Conduct: Decisions Since Therasense. In the Federal Circuit’s landmark Therasense decision (2011) (en banc), the majority, over a vigorous dissent, set a new standard of “but for” materiality and tightened the requirements for showing intent to deceive. The majority sought to cure the “plague” of inequitable conduct assertions in litigation. Did it succeed? We will analyze a number of post-Therasense Federal Circuit panel decisions, including Aventis Pharma S.A. v. Hospira, Inc. (2012) (upholding an inequitable conduct finding), 1st Media, LLC v. Electronic Arts, Inc. (2012) (no inequitable conduct), and Outside the Box Innovations, LLC v. Travel Caddy, Inc. (2012) (no inequitable conduct).

Complete syllabi from our 2012, 2011, 2010, and 2009 seminars are available here.

MCLE Credit:

In 2012, the Chisum Patent Academy’s NYC seminar was approved by the New York State CLE Board for twenty (20.0) “Areas of Professional Practice” CLE credit hours, including 1.0 “Ethics and Professionalism” CLE credit hour. We will apply for CLE accredidation from the New York State CLE Board for the February 2013 seminar.

CLE credit for other states: The Chisum Patent Academy applies for CLE accreditation in those states where we conduct seminars. Where state bars require, we submit attendees’ names as they are listed on the sign-in sheet. If you are seeking CLE credit for a state other than where that seminar is being held, please apply directly to the appropriate state bar.

Registration Fee:

$2,750 per attendee.


Continental breakfast will be provided each morning, plus afternoon snacks. Lunch is on your own.

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