8:00AM - 9:00AM
Registration (Includes Continental Breakfast)

9:00AM - 9:10AM
Chairman's Welcoming Remarks

9:10AM - 10:15AM
Overview of Current Claim Construction Practice in View of Phillips

• Pre-Phillips legal landscape
• How Phillips has changed the approach to claim construction arguments
• Impact of Phillips on the application of the doctrine of equivalents in light of the Festo line of decisions
• Strategies regarding number of claims to assert; impact on the number of claim terms to define on the claim construction process
• Construction of claims utilizing §112¶6
• Is there truly a hierarchy to the strength of evidence that Courts recognize?
• Literal infringement:
• Is it increasingly less important in light of claim construction developments?
• Are claim construction strategies aimed only at literal infringement?
• Jurisdictional considerations: choosing the right district court to file your claim

10:15AM - 11:00AM
Maximizing the Use of Intrinsic Evidence

• Why you should focus on intrinsic evidence
• Finding the answer in the claims themselves
• Consequences of overlooking dependent and/or unasserted claims
• Landmines in the specification
• What really matters in the prosecution history
• When is it "interpreting the claim limitation" and when is it "reading in limitations from the specification?"
• Special problems with §112¶6

11:00AM - 11:15AM
Morning Coffee Break

11:15AM - 12:00PM
Extrinsic Evidence in a Post-Phillips World

• What is extrinsic evidence and where does the case law stand?
• Influencing the claim construction process through dictionaries, treatises, experts and fact witnesses:
• Which dictionaries should be used and when?
• Technical vs. general dictionaries: should you rely on one over the other?
• Approaches for minimizing the impact of extrinsic evidence
• The role of a person of ordinary skill in the art for purposes of arguing claim construction positions

12:00PM - 12:45PM
Claim Construction from an In-House Perspective: A Peek from 10,000 Feet

• Considering claim construction in deciding whether to file suit
• How claim construction issues affect settlement choices and how to manage claim construction issues during settlement negotiations
• Do country-to-country differences in claim construction affect portfolio management?
• Does claim construction affect prosecution and reexamination strategies, i.e., appeal or amend?, where to appeal?
• What should you say - or not say - to the Patent Office in an interview?
• Do you need to worry about what your engineers say in their internal documents, and if so, what can in-house counsel do about it?

12:45PM - 1:45PM
Luncheon

1:45PM - 2:30PM
Avoiding and Exploiting Latently Narrow Patents

A series of recent Federal Circuit decisions is signaling a revolution underway in patent law. Historically, patents written with broad claims would almost certainly result in broad patent protection. But recent Federal Circuit decisions suggest that is no longer a given. For a variety of reasons, the Federal Circuit is curtailing patent protection, finding no infringement in cases where the words of the claims alone counsel the opposite conclusion. This alarming trend flows from the manner in which patents are written. Mr. Panitch will discuss six common problems in patents that tend to result in judicial narrowing, with a focus on ways patent drafters can avoid them and patent litigators can exploit them.

2:30PM - 3:30PM
A View from the Bench: Trial Judges' Perspective on Patent Claim Construction

3:30PM - 3:45PM
Afternoon Stretch

3:45PM - 5:00PM
What is the Best Way to Present Claim Construction Positions?

• Is the claim construction hearing evidentiary or argument?
• How to structure briefs supporting argument to maximize impact
• Is argument alone enough?
• Minimizing terms for resolution to increase chance of success
• Factors to consider in structuring presentation
• How best to use tutorial:
• Who should do the presentation: lawyer/technical expert?
• Should there be a record of the tutorial
• Use of demonstratives and enhancing the substance through technology
• The need to provoke the Court's questions
• Evidentiary hearings: Who can/should be witnesses?
• Should the evidence be a tutorial or an explication of the intrinsic evidence?
• Use of depositions in hearings
• Are post-hearing briefings necessary to summarize evidence?
• Presenting claim construction to the Federal Circuit on appeal

5:00PM - 5:30PM
Judgments and Appeals: Claim Construction and Subsequent Proceedings

• Appellate review of claim construction rulings
• Impact of de novo review of claim construction by the Federal Circuit on litigation strategy
• Applicability of collateral estoppel or stare decisis to claim construction
• Effect of prior construction of different claims on claims at issue
• Effect of claim construction rulings on later cases