HomeWebcast2011 Patent Reform Act
 CLE

2011 Patent Reform Act

Live Webcast Date: Wednesday, August 31, 2011 from 12:00 pm to 2:00 pm (ET)
Legal (CLE)Recording
Recording for this event is not available.

Join us for this Knowledge Group Webinar. Recently, the U.S. Senate and House of Representatives passed similar versions of the Patent Reform Act of 2011 (S. 23 and H.R. 1249, respectively). These bills, also known as The America Invents Act, include many significant changes such as the move from a first-to-invent to a first-inventor-to-file system, and new post-grant proceedings to be conducted in the PTO.

If enacted, this new legislation will result in far-reaching, fundamental changes to the current Patent Act. IP law watchers, business people, and inventors should have a complete and clear understanding of how patent law ‘reform’ will affect them.

The Knowledge Group has assembled a team of experts who will help you understand the most important aspects of this new legislation. A panel of thought-leaders will present their findings and best practices in a two-hour webcast. This event is a must attend for anyone interested in understanding the future of the U.S. patent system.

Agenda

Charles E. Miller, Senior Counsel, Intellectual Property Group
Senior Counsel, Intellectual Property Group

Paul Devinsky, Partner
McDermott Will & Emery LLP

Ronen Arad, Director
PricewaterhouseCoopers LLP

Dr. Shine S. (Sean) Tu, Associate Professor of Law
West Virginia Law School

Who Should Attend

Patent Litigators In-House Counsel for Firms that own or License Patents Patent Licensing Attorneys IP Attorneys & Consultants Corporate Senior Management

Charles E. Miller, Senior Counsel, Intellectual Property Group
Senior Counsel, Intellectual Property Group

Paul Devinsky, Partner
McDermott Will & Emery LLP

Ronen Arad, Director
PricewaterhouseCoopers LLP

Dr. Shine S. (Sean) Tu, Associate Professor of Law
West Virginia Law School

Charles E. MillerSenior Counsel, Intellectual Property GroupSenior Counsel, Intellectual Property Group

Charles E. Miller joined Dickstein Shapiro in March 2003, as a partner in the Intellectual Property Practice. He has doctorate degrees in both chemistry and law and practices primarily patent law in the firm’s New York office. At Dickstein Shapiro, Dr. Miller continues his practice in counseling clients mainly in the chemical and pharmaceutical industries, managing their intellectual property portfolios, and representing their interests extensively in technology-related litigation, proceedings before the U.S. Patent and Trademark Office, alternative dispute resolution, and licensing. PROFESSIONAL BACKGROUND Prior to joining Dickstein Shapiro, Dr. Miller was a partner at Pennie & Edmonds LLP, where he practiced intellectual property law beginning in 1971. In that firm’s governance, he served on the executive, membership/partner compensation, recruitment, and practice development committees. Before that, from 1966 to 1971, he worked in the law departments of Allied Chemical Corporation (now Honeywell International, Inc.) and of Celanese Corporation, where he was involved in patenting the companies’ inventions.

Paul DevinskyPartnerMcDermott Will & Emery LLP

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office. He focuses his practice on patent, trademark, copyright and trade secret litigation counseling, licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences. In addition to serving approximately four years as a patent examiner, Paul served for approximately four years as patent counsel to the U.S. Department of Energy, rising to the position of chief of patent litigation prior to entering private practice in 1980. Paul has extensive experience in litigating patent, trademark and unfair competition-based federal district court infringement actions and in litigating patent-based investigations before the U.S. International Trade Commission (ITC). He also has experience in litigating invention priority (interferences) and ownership disputes, in arbitrating trade secret disputes and ICANN domain name disputes. Paul’s inter parte PTO cases include U.S. Department of Energy vs. Frisch et al., Piltch et al. vs. Szylagi et al., Nutrasweet vs. Ajinamato, Dixit et al. vs. Reed, et al. and others. Paul has handled various federal district court unfair competition cases, such as Toyotomi v. Saunders and Hartmann Luggage v. Seward Luggage, as well as patent infringement cases, including IJR v. Sodick Co. Ltd. et al., Japax v. Sodick Co. Ltd. et al., AGIE v. Sodick, IGT v. WMS Gaming, Harris v. Nokia et al., Millennium v. Top Image Systems, et al.; Ricoh v. CMC Magnetics Corp., et al., Silicon Image v. Genesis Microchip; Naturopathic v. Dermal, Aerotel vs. IDT, Ricoh Co. Ltd. V. CMC Magnetics Corp., et. al., Papst Licensing vs. Ricoh, Tesseron vs. Ricoh, TTi vs. Hitachi Koki, Hitachi Koki vs. Milwaukee Electric Tool Co. and Freescale Semiconductors v. Panasonic et. al. (representing Funai). Paul has led a patent license arbitration, Actel vs. BTR and trade secret disputes, including IBA v. Theragentics. In addition, he has handled several ITC 337 cases including In re Certain Electrical Discharge Machines and Components Thereof; and In re Certain Single In Line Memory Module Connectors; In re Certain Rechargeable Lithium Ion Batteries; In re Certain Mobile Telephone Handsets and In re Certain Integrated Circuit Chipsets and Products Containing Same.

Ronen AradDirectorPricewaterhouseCoopers LLP

Mr. Arad is a Director in the Forensic Services practice of PricewaterhouseCoopers LLP. Since joining PwC in Atlanta in 2001, he has been involved in many aspects of complex business and financial analyses, both in the normal course of business and in the context of litigation. He has extensive and wide-ranging experience advising law firms, public corporations and closely-held companies regarding the calculation of economic damages, the analysis and interpretation of large data sets of electronically stored information (ESI), the identification of misappropriated assets, the detection of fraud, and the identification of under-reported contractual payments. Mr. Arad has also worked on various financial consulting engagements involving the application of business analytics for a range of purposes, including customer profitability analyses, business valuations, and return on investment analyses. Additionally, he has experience on various intellectual property licensing engagements, and in particular, royalty examinations, across a range of client industries. Mr. Arad is a Chartered Financial Analyst (CFA) charter-holder. He holds a Bachelor of Science degree in Commerce with concentrations in Finance and Accounting from the University of Virginia.

Dr. Shine S. (Sean) TuAssociate Professor of LawWest Virginia Law School

Prior to joining the faculty at the WVU College of Law Associate Professor Shine (Sean) Tu was an associate with Foley & Lardner LLP and was a member of the firm’s Chemical, Biotechnology & Pharmaceutical Practice, and the Life Sciences and Nanotechnology Industry Teams. Prior to joining Foley, Dr. Tu worked as a research assistant for Judge Richard A. Posner of the United States Court of Appeals for the Seventh Circuit. Dr. Tu was granted the National Research Service Award as part of his post-doctoral fellowship. He was a postdoctoral fellow at the La Jolla Institute for Allergy and Immunology under the guidance of Dr. Doug Green. He also studied at the College of Veterinary Medicine at Cornell University. Dr. Tu received his law degree, with honors, from the University of Chicago Law School, (J.D., 2008). He received his graduate degree (Ph.D., 2003) from Cornell University Graduate School, in pharmacology and cancer cell biology. Dr. Tu earned bachelor’s degrees in both chemistry and microbiology from the University of Florida (B.S./B.S., 1997). Dr. Tu is a registered patent attorney who can practice before the United States Patent & Trademark Office in patent cases. He is admitted to practice in the District of Columbia and Virginia.


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Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   NONE

Course Code:
   114126

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Dickstein Shapiro LLP, founded in 1953, is internationally recognized for its work with clients, from start-ups to Fortune 500 corporations. Dickstein Shapiro provides strategic counsel and develops multidisciplinary legal solutions by leveraging its core strengths—litigation, regulatory, transactions, and advocacy—to successfully advance clients’ business interests.

Website: #https://www.dicksteinshapiro.com/

Charles E. Miller joined Dickstein Shapiro in March 2003, as a partner in the Intellectual Property Practice. He has doctorate degrees in both chemistry and law and practices primarily patent law in the firm’s New York office. At Dickstein Shapiro, Dr. Miller continues his practice in counseling clients mainly in the chemical and pharmaceutical industries, managing their intellectual property portfolios, and representing their interests extensively in technology-related litigation, proceedings before the U.S. Patent and Trademark Office, alternative dispute resolution, and licensing. PROFESSIONAL BACKGROUND Prior to joining Dickstein Shapiro, Dr. Miller was a partner at Pennie & Edmonds LLP, where he practiced intellectual property law beginning in 1971. In that firm’s governance, he served on the executive, membership/partner compensation, recruitment, and practice development committees. Before that, from 1966 to 1971, he worked in the law departments of Allied Chemical Corporation (now Honeywell International, Inc.) and of Celanese Corporation, where he was involved in patenting the companies’ inventions.

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office. He focuses his practice on patent, trademark, copyright and trade secret litigation counseling, licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences. In addition to serving approximately four years as a patent examiner, Paul served for approximately four years as patent counsel to the U.S. Department of Energy, rising to the position of chief of patent litigation prior to entering private practice in 1980. Paul has extensive experience in litigating patent, trademark and unfair competition-based federal district court infringement actions and in litigating patent-based investigations before the U.S. International Trade Commission (ITC). He also has experience in litigating invention priority (interferences) and ownership disputes, in arbitrating trade secret disputes and ICANN domain name disputes. Paul’s inter parte PTO cases include U.S. Department of Energy vs. Frisch et al., Piltch et al. vs. Szylagi et al., Nutrasweet vs. Ajinamato, Dixit et al. vs. Reed, et al. and others. Paul has handled various federal district court unfair competition cases, such as Toyotomi v. Saunders and Hartmann Luggage v. Seward Luggage, as well as patent infringement cases, including IJR v. Sodick Co. Ltd. et al., Japax v. Sodick Co. Ltd. et al., AGIE v. Sodick, IGT v. WMS Gaming, Harris v. Nokia et al., Millennium v. Top Image Systems, et al.; Ricoh v. CMC Magnetics Corp., et al., Silicon Image v. Genesis Microchip; Naturopathic v. Dermal, Aerotel vs. IDT, Ricoh Co. Ltd. V. CMC Magnetics Corp., et. al., Papst Licensing vs. Ricoh, Tesseron vs. Ricoh, TTi vs. Hitachi Koki, Hitachi Koki vs. Milwaukee Electric Tool Co. and Freescale Semiconductors v. Panasonic et. al. (representing Funai). Paul has led a patent license arbitration, Actel vs. BTR and trade secret disputes, including IBA v. Theragentics. In addition, he has handled several ITC 337 cases including In re Certain Electrical Discharge Machines and Components Thereof; and In re Certain Single In Line Memory Module Connectors; In re Certain Rechargeable Lithium Ion Batteries; In re Certain Mobile Telephone Handsets and In re Certain Integrated Circuit Chipsets and Products Containing Same.

Mr. Arad is a Director in the Forensic Services practice of PricewaterhouseCoopers LLP. Since joining PwC in Atlanta in 2001, he has been involved in many aspects of complex business and financial analyses, both in the normal course of business and in the context of litigation. He has extensive and wide-ranging experience advising law firms, public corporations and closely-held companies regarding the calculation of economic damages, the analysis and interpretation of large data sets of electronically stored information (ESI), the identification of misappropriated assets, the detection of fraud, and the identification of under-reported contractual payments. Mr. Arad has also worked on various financial consulting engagements involving the application of business analytics for a range of purposes, including customer profitability analyses, business valuations, and return on investment analyses. Additionally, he has experience on various intellectual property licensing engagements, and in particular, royalty examinations, across a range of client industries. Mr. Arad is a Chartered Financial Analyst (CFA) charter-holder. He holds a Bachelor of Science degree in Commerce with concentrations in Finance and Accounting from the University of Virginia.

Prior to joining the faculty at the WVU College of Law Associate Professor Shine (Sean) Tu was an associate with Foley & Lardner LLP and was a member of the firm’s Chemical, Biotechnology & Pharmaceutical Practice, and the Life Sciences and Nanotechnology Industry Teams. Prior to joining Foley, Dr. Tu worked as a research assistant for Judge Richard A. Posner of the United States Court of Appeals for the Seventh Circuit. Dr. Tu was granted the National Research Service Award as part of his post-doctoral fellowship. He was a postdoctoral fellow at the La Jolla Institute for Allergy and Immunology under the guidance of Dr. Doug Green. He also studied at the College of Veterinary Medicine at Cornell University. Dr. Tu received his law degree, with honors, from the University of Chicago Law School, (J.D., 2008). He received his graduate degree (Ph.D., 2003) from Cornell University Graduate School, in pharmacology and cancer cell biology. Dr. Tu earned bachelor’s degrees in both chemistry and microbiology from the University of Florida (B.S./B.S., 1997). Dr. Tu is a registered patent attorney who can practice before the United States Patent & Trademark Office in patent cases. He is admitted to practice in the District of Columbia and Virginia.

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