Intellectual Property Rights Protection

The Federal Rule Changes, Form 18, and the New Pleading Requirements

Synopsis

The esteemed panel discusses various issues surrounding the recent changes to the Federal Rules of Civil Procedure regarding pleadings and pleading requirements in connection with patent infringement actions. Among the many topics they cover are an overview of the history leading up to the changes, a look at how the changes are having an effect in the courtroom, and best practices for navigating through the changes.



Outline

I. Effect of Changes to Federal Rules
    A. Panel Introduction
    B. Timeline of Events
        1. Prior to December 2015
        2. Rule 84 Abrogation
    C. A Judge's Perspective
        1. Iqbal and Twombly Motions
        2. Look at the Facts Ahead of Time
        3. Three Strike Rule
        4. Prejudicial Motion to Dismiss
    D. Best Practices to Help Get Through the Changes
        1. Addressing the Stringent Requirements
        2. Pleading Standards
        3. Counterclaims and Affirmative Defenses
        4. Patent Claims Shouldn't Be Any Different
    E.  A View from the ITC
        1. Heightened Pleading Standards
        2. Proportionality Standards
        3. Specificity of Pleadings and Discovery
        4. Requirements Helpful at the District Court Level
    F.  Litigation Holds
        1. What Has Changed
        2. Relationship Between Proportionality and Pleadings in the Post-Form Era
        3. Specificity of Complaint and Litigation Holds
        4. Arguments as to Proportionality
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The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 16,000 members. 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. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement 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.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 45 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.
AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

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, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts 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 conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association 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 electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

 





Speakers / Authors:

Photo of Cathy Bissoon

Judge Cathy Bissoon

Judge Cathy Bissoon was nominated to the United States District Court for the Western District of Pennsylvania by President Barack Obama on November 17, 2010 and was confirmed by the Senate on October 17, 2011.  She received her commission on October 19, 2011, and was sworn in as a district judge on October 20, 2011.  With her appointment, Judge Bissoon became the first Hispanic female Article III judge in Pennsylvania, the first Asian American Article III judge in Pennsylvania and the first South Asian American female Article III judge in the United States.

Following law school, Judge Bissoon joined Reed Smith’s Pittsburgh office as an associate.  In 1994, she took a year-long “sabbatical” from private practice, during which she clerked for the Honorable Gary L. Lancaster of this Court.  In 1995, Judge Bissoon returned to Reed Smith where she ultimately became a partner and the firm-wide head of the Employment Group.

Judge Bissoon also served as Reed Smith’s Director of Diversity for six years, earning various accolades for her efforts to increase diversity within the legal profession.  Most notably, Judge Bissoon was recognized for her many efforts in the area of diversity with the Honorable Thurgood Marshall award from Minorities in Business Magazine during its 2006 Multicultural Prism Awards ceremony.

In 2007, Judge Bissoon joined the Pittsburgh law firm of Cohen & Grigsby, where she was a director and served as the head of the Labor & Employment Group.

Shortly thereafter, Judge Bissoon was selected by the Board of Judges of the Western District of Pennsylvania to serve as a United States Magistrate Judge.  She was sworn in on August 1, 2008.  Judge Bissoon, who is both Hispanic and Indian, became the first woman of color to sit on the federal bench in Pittsburgh, and the first woman of South Asian descent to sit on a federal bench in the United States.

Judge Bissoon also sits as one of the Court’s designated patent judges and is one of the founding members of the Q. Todd Dickinson Intellectual Property American Inn of Court. The Dickinson Inn provides a unique opportunity for members to hone their legal skills in a social setting with no agenda other than collegiality and with a shared interest in professionalism and excellence.  It also provides an opportunity for younger lawyer and student members to gain experience and insight from member judges and experienced lawyers from among the best of the Pittsburgh IP community.  In 2012, Judge Bissoon was elected the first president of Dickinson Inn.

Over the course of her years in private practice, Judge Bissoon was named a Fellow of the Litigation Council of America; listed multiple years in the Best Lawyers in America; named a “Pennsylvania Super Lawyer” by Philadelphia Magazine; listed in Chambers USA America’s Leading Lawyers; and was recognized as one of the top 50 lawyers in Pennsylvania under the age of 40 by Pennsylvania Law Weekly.  Additionally, she served on both the Lawyers Advisory Committee for the Third Judicial Circuit as well as the Local Rules Advisory Committee for the U.S. District Court for the Western District of Pennsylvania.

Judge Bisson received her B.A., summa cum laude, from Alfred University in 1990 and received her J.D. from Harvard Law School in 1993.

Photo of Brian Busey

Brian Busey

Brian Busey is a partner in Morrison & Foerster LLP’s Intellectual Property Group. Mr. Busey’s practice focuses on complex intellectual property matters—particularly those before the U.S. International Trade Commission (ITC).He has litigated more than 30 Section 337 cases before the ITC and has served as the president of the ITC’s Trial Lawyers Association.

In addition to his active ITC practice, Mr. Busey has handled cross-border patent, trademark, and trade secret disputes in federal district court and before alternative dispute resolution tribunals. He also has counseled clients concerning intellectual property licensing issues and represented airports and airport proprietors in major administrative and court litigation.

Mr. Busey is a frequent speaker and author, both in the U.S. and in Asia, on ITC practice and procedure. He has been recognized as a leader in the ITC and intellectual property litigation practice by Chambers USA (2013–2016), Chambers Global (2014–2016), Legal 500 US (2011–2016), Best Lawyers in America (2010–2017), and IAM Patent 1000 (2014–2016). He was recognized as the top lawyer in Washington, D.C. for intellectual property by the Washington Business Journal (2009).

Mr. Busey received his J.D. from Georgetown University Law Center in 1982, where he was an editor of the Georgetown Law Journal. He Received his M.A. in 1976 and his B.A. in 1974, both from Georgetown University.

Photo of Aaron Nathan

Aaron Nathan

Aaron Nathan is a partner at Tensegrity Law Group LLP. He has plaintiff and defense experience in patent and contract litigation. In addition to practicing in U.S. district courts, he has contributed to successful representations before the United States Court of Appeals for the Federal Circuit. His practice involves a broad range of technologies, including computer hardware and software, network technology, computer security, mobile payment technologies, location technology, wireless communications, pharmaceuticals, and biotechnology.

Before joining Tensegrity Law Group in 2012, Mr. Nathan was law clerk to the Honorable Richard Linn of the United States Court of Appeals for the Federal Circuit. Prior to his clerkship, he was an associate at Durie Tangri LLP and Weil, Gotshal & Manges LLP.

Mr. Nathan received his J.D. in 2007 from Stanford Law, his PhD in 2003 from U.C. Berkeley, his M.A. in 2000 from U.C. Berkeley, and his B.A. in 1999 from University of Michigan.

Photo of Steven G. Spears

Steven G. Spears

Steven G. Spears is partner-in-charge of the Houston office of the law firm of McDermott Will & Emery where he represents clients on all aspects of intellectual property controversies. He focuses his practice on patent, trade secret and other technology-related litigation in the chemical, biotechnology, telecommunications and oilfield services industries.

Mr. Spears has litigated matters in numerous U.S. jurisdictions and arbitration proceedings, and has assisted in many parallel foreign actions. In addition, he counsels clients in inter partes reviews, intellectual property enforcement, freedom to operate and licensing issues. Steven earned his bachelor’s degree in chemistry.

Mr. Spear’s litigation experience includes the following, patent infringement, lead counsel in many inter partes reviews, trade secrets, IP due diligence and FTO review, arbitration of intellectual property agreements, and commercial disputes

Mr. Spear’s received his J.D., cum laude, from the University of Texas School of Law in 1991, and his B.A., cum laude, in Chemistry in 1988.

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Details

Course Code : 772541

Release Date: 12/29/2016


Length: 1hr 14min
Recorded Date: 10/27/2016


Format Type: Video
Mobile Compatible


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