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Course Information
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1053 Current Trends in Inequitable Conduct in Patent Litigation
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 No cost or obligation
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| Course Length |
90 minutes
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| Course Price |
$ 119.00
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Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.
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Accreditation Information
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About the Instructor(s)
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Karl Fink
Fitch, Even, Tabin & Flannery
Karl R. Fink has been a partner in the firm of Fitch, Even, Tabin & Flannery since 1995. His practice includes all aspects of intellectual property creation, management, enforcement and licensing, with particular emphasis on intellectual property litigation. He has been a full time first-chair trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the country, both at trial and on appeal. He represents numerous public and privately held companies, ranging in size from the Fortune 100 to closely held companies.
Mr. Fink has handled a variety of intellectual property, commercial and tort litigations as lead trial counsel, with particular experience in patent, trademark, unfair competition, copyright, and trade secret actions. He has developed a particular expertise in patent infringement actions, both on the plaintiff’s side and the defendant’s side. He has handled cases involving a wide range of technologies, including software, remote controls, digital imaging, interactive computer interfaces, electronic signaling, encryption, digital media, graphical user interfaces, data transmission, convergence of data, sound and video transmission, mechanical controls, biotechnology, medical devices, blood processing, digital microscopy, defibrillators, farm equipment, furniture design, mineral processing, disposable diapers, electronic components, inductors, fire and smoke alarms, car waxers, wristwatches, sirens and alarms, soap dispensers, engine cooling systems, windshield wipers, printing presses, punch and brake presses, advertising literature, trademarks, and copyrights. He has played a leading role in a variety of successful patent enforcement and licensing campaigns on behalf of the firm’s clients.
Mr. Fink also advises clients on infringement, validity and patentability opinions, IP valuation, joint ventures, IP licensing, and other related business decisions.
Mr. Fink serves as the firm’s managing partner, and serves on the firm’s Executive Committee (chair), Finance Committee, Hiring Committee and Diversity Committee. Karl is on the list of Leading Illinois Attorneys, and has been named one of the Illinois Super Lawyers since 2006 for his accomplishments in the field of intellectual property litigation. He is a member of the National Knowledge and Intellectual Property Management Taskforce, and is past president and program chairman of the Chicago Lincoln American Inn of Court.
In 1978, Mr. Fink earned a B.S. in engineering, magna cum laude, from the University of Michigan. He earned his J.D. from the University of Michigan in 1981. He is admitted to practice in Illinois and before the U.S. Patent and Trademark Office, Illinois Supreme Court, U.S. Supreme Court, U.S. Courts of Appeals for the Seventh and Federal Circuits, and numerous U.S. District Courts.
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Christopher Harnett
Ropes & Gray LLP
Christopher J. Harnett is a partner with Ropes & Gray LLP in New York. He has handled numerous litigations involving pharmaceuticals, biotechnology, medical devices, electronics and consumer products. He is active in speaking and writing engagements for organizations including CLE International. He is a member of the Association of the Bar of the City of New York, the American Intellectual Property Law Association, the Federal Circuit Bar Association, the New Jersey Intellectual Property Law Association and the New York Intellectual Property Law Association. Chris has also been listed in The Best Lawyers in America (2009, 2010), New York Super Lawyers (2006-2008) and Lawdragon 500 “New Stars, New Worlds.”
Mr. Harnett is admitted to practice by the bar of New York and the U.S. Patent and Trademark Office, the U.S. Supreme Court, the U.S. District Court for the Southern District of New York, the U.S. District Court for the Eastern District of New York, the U.S. Court of Appeals for the Federal Circuit and the U.S. Court of Appeals for the First Circuit. He is a cum laude graduate of Georgetown University Law Center and also holds an M.A. in cellular and molecular biology from American University and a B.A. in English and biology (with distinction) from the State University of New York at Binghamton.
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Paul Michel
United States Court of Appeals for the Federal Circuit
Paul R. Michel was appointed to the U.S. Court of Appeals for the Federal Circuit in March 1988. Since his elevation to chief judge on Dec. 25, 2004, he has served as one of 27 judges comprising the Judicial Conference of the United States, the governing body of the judicial branch. In 2005 he was appointed by the Chief Justice of the United States to serve on the seven-judge Executive Committee of the Judicial Conference. He is also a member of the Ad Hoc Advisory Committee on Judiciary Planning. He previously was a member of the Committee on Inter-Circuit Assignments.
Chief Judge Michel has judged several thousand appeals and written more than 800 opinions in the diverse legal areas covered by his circuit: patent, government contracts, international trade, veterans’ benefits, government takings of private property, tax, childhood vaccine injuries, military and civilian promotions, trademark, civilian government personnel, and whistle-blower cases. By designation of the chief justice, he has also regularly sat with the Second, Third, Ninth and District of Columbia circuits, where he decided and authored opinions in constitutional, criminal, administrative, securities, immigration and state law cases.
Prior to his appointment to the bench, Chief Judge Michel served in the executive and legislative branches of the government for 22 years. A graduate of Williams College in 1963 and the University of Virginia Law School in 1966, he served as an assistant district attorney and then deputy district attorney for investigations under Arlen Specter in Philadelphia, where he was responsible for investigating police and public official corruption. As assistant special Watergate prosecutor from 1974 to 1975 under Leon Jaworski, he was responsible for investigating President Nixon’s slush fund, Howard Hughes, Bebe Rebozo, and Mr. Nixon’s secretary, Rosemary Woods. From 1975 to 1976 he was an assistant counsel for the Senate Select Committee on Intelligence (Church Committee), assisting Chief Counsel Frederick A.O. Schwarz investigate abuses of civil liberties by U.S. law enforcement and intelligence agencies targeting American citizens. Chief Judge Michel also helped draft proposed legislation to ensure that NSA, CIA, and IRS practices conformed to the Constitution and statutes.
From 1976 to 1978, he served under Dick Thornburgh as deputy chief of the Justice Department’s new Public Integrity Section, where he directed the “Koreagate” investigation involving alleged payments to 110 members of Congress. In 1978 he was appointed by Benjamin Civiletti as an associate deputy attorney general, helping to supervise U.S. attorneys, the Criminal Division, the FBI, and the Marshals Service. He was a principal author of the legislative charter proposed in 1978 for the FBI and of revisions to Attorney General Guidelines authorizing and constraining certain FBI investigative and intelligence-gathering practices. He helped supervise the prosecutions of FBI executives Mark Felt (who was later revealed as “Deep Throat” of Watergate fame) and Edward Miller. From 1978 to 1980 he was co-chair of the inter-agency Committee to Combat Terrorism and supervised policy aspects of each domestic terrorism incident.
In 1980 he briefly served as acting deputy attorney general and acting attorney general. During this period, he was responsible for supervising security arrangements at six locations for the 10,000 refugees who suddenly began arriving in the Cuban-Haitian boatlift.
From April 1981 until March of 1988, he served on Senator Arlen Specter’s staff, including as counsel and chief of staff. There, he worked on legislation dealing with career criminals, arms control, gun control, mining safety, nuclear arms summit meetings and many other subjects.
In 2006, Chief Judge Michel testified before the Senate Judiciary Committee opposing legislation to divert to the Court of Appeals for the Federal Circuit, which receives 1,300 appeals per year, 13,000 immigration appeals. The proposal was dropped. In 2007, Chief Judge Michel served as a panelist for the American Constitution Society on improving the immigration litigation system’s handling of asylum and torture claims. In 2008, Chief Judge Michel, along with Circuit Judge Jane Roth and Frederick A.O. Shwartz, conducted a mock trial on the clash between the president and Congress over the chief executive’s power to wage war without a Congressional declaration of war before the American Bar Association Section on International law.
Chief Judge Michel has received numerous awards and honors in recent years for his contributions to intellectual property law. He has spoken at hundreds of conferences for national, state and local bar associations, including the American Intellectual Property Law Association, the American Bar Association sections of Intellectual Property and Public Contracts, the Intellectual Property Owners, the Licensing Executive Society and the Association of Corporate Patent Counsel.
Chief Judge Michel has taught courses in appellate practice and procedure and patent enforcement at George Washington University’s National Law Center, and masters classes in appellate advocacy at John Marshall Law School, which awarded him an Honorary Doctor of Laws degree in June 2001. He served on intellectual property advisory boards for George Washington University’s National Law Center and the University of Maryland Law School, has given masters classes in patent litigation at Chicago Kent Law School, and has spoken at law schools across the country. He also was a featured speaker for the Max Planck Institute in Munich, Germany and taught seminars for the Australian Intellectual Property Law Association in Canberra, Australia and Ettington Chase, England.
Chief Judge Michel was a founding member of the George Washington Inn of Court, a member of the Giles S. Rich Inn, and a founder and president (from 2003 to 2004) of the Edward Coke Appellate Inn of Court.
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Theodore Mlynar
Hogan & Hartson LLP
Theodore J. Mlynar is a partner with Hogan & Hartson LLP in New York. As an intellectual property litigator with more than 15 years of experience, he has successfully represented clients in patent, trademark, copyright, trade secret, and unfair competition cases and related contractual disputes, including at trial, through appeal, in arbitrations and mediations, and in administrative proceedings. He has worked with a wide range of clientele, from multinational conglomerates to small start-up companies and individual inventors, in connection with a broad spectrum of technologies and industries. He frequently provides advice on the acquisition, divestiture, exploitation, policing, and licensing of intellectual property assets.
Of recent note, Mr. Mlynar co-chaired a trial and led an international team in successful patent actions on behalf of a high technology company against a multinational industrial gas manufacturer. After two U.S. federal litigations, and substantial actions in Belgium, Germany, Korea, Taiwan, and the European Patent Office, a global settlement was reached. Working closely with numerous local counsel and foreign experts, he helped obtain rare preliminary injunctions in Belgium and Germany, and assisted in the defense of those decisions in numerous appellate proceedings, including to the Belgian Supreme Court.
Mr. Mlynar earned his B.S. from the California Institute of Technology in 1991 and his J.D. from the University of Southern California in 1994. He is admitted to practice in New York and New Jersey, and before the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit, U.S. District Courts for the Southern and Eastern Districts of New York, the Eastern District of Michigan, the Eastern District of Texas, and the District of New Jersey.
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Leland Schultz
Lockheed Martin Systems Integration
Leland D. Schultz is assistant general counsel for intellectual property with Lockheed Martin Systems Integration in Owego, N.Y. He holds a bachelor of mechanical engineering degree from the University of Minnesota, a J.D. from South Texas College of Law, and an M.S. in the management of technology from the University of Minnesota.
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Outline + Synopsis
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Outline
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Synopsis
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Current Trends in Inequitable Conduct in Patent Litigation
I. Introduction
A. Program Introduction
II. How Far Do You Have to Look?
A. Overview
B. Applicable Rules
C. Federal Circuit Case Law
D. Client Information
E. Third-Party Information
III. Praxair in View of Star Scientific and Larson
A. Introduction
B. Praxair Background
C. Patent Details
D. Materilaity and Intent
E. Good-Faith Explanation
IV. Inferring Intent
A. Public Interest
B. Broader Than Fraud
C. The Issue in Praxair
D. Earlier Case Law
E. Criticisms
V. V. Judicial View of Inequitable Conduct During Litigation
A. Consistency Needed
B. Prong 1: Materiality
C. Prong 2: Intent
D. Facts vs. Panels
E. What Can Be Done?
VI. Questions and Answers
A. Witness Credibility
B. Further Questions
AfterWords®
How to Obtain a Certificate
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Three leading patent litigators and the chief judge of the Federal Circuit Court of Appeals cover the doctrine of inequitable conduct and how it has played out in recent Federal Circuit cases. The course begins with a discussion about the extent to which a patent attorney is obligated to search for and disclose potentially invalidating prior art when filing and prosecuting a patent application, followed by a spirited debate over how courts should deal with charges of inequitable conduct by counsel from opposite sides of Praxair v. ATMI. Chief Judge Paul Michel rounds out the program with his view from the bench.
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Content Provided By
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The American Intellectual Property Law Association (AIPLA) is a 16,000-member, national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright and unfair competition law, as well as other fields of law affecting intellectual property. Members represent both owners and users of intellectual property.
AIPLA was formed in 1897 in order to maintain a high standard of professional ethics, to aid in the improvements in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.
To qualify for membership, applicants must be members in good standing of the bar of a court of record of the United States or any state. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries to be considered for membership, or be registered to practice with the Patent and/or Trademark Office of their country of citizenship. AIPLA also has student memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools. Approximately 70% of the active members are in private practice, 30% in corporate practice, with the remainder in the government or academia.
AIPLA holds three regularly scheduled conferences a year, Mid-Winter, Spring and Fall, at which the association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA holds many stand-alone seminars on specialized areas of intellectual property law at varying times of the year in locations around the United States. The association also produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published online three times a year), and CD-ROMs and tapes which include papers or speeches presented by speakers at the meetings. The AIPLA also publishes the Report of the Economic Survey biennially.
Furthermore, the AIPLA is actively involved in shaping U.S. intellectual property policy through its work on legislation and federal regulations affecting intellectual property cases in the U.S. courts. Internationally, the AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents, regularly participates in meetings of the World Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.
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Purchase course
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1053 Current Trends in Inequitable Conduct in Patent Litigation
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| Course Price |
$ 119.00
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Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.
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