Clarifying KSR & Impact on Patent Law
Overview:The recent Supreme Court Ruling KSR v Teleflex which
dismissed "obvious" or rigid interpretation in favor of "flexible"
may perhaps usher one of the most significant with the eighth
changes in Patent law in decades. How will KSR affect your
ability to protect your companies' intellectual property?
The Knowledge Congress has assembled panel of distinguished
experts to help make these policies clear to the organizations
most impacted. The panel will present their findings in a
livetwo-hour teleconference scheduled for November.
Presumption of validity and the clear and convincing standard for proving obviousness;
· Litigation strategy, including:
§ Prior art fact discovery;
§ Expert reports/opinions;
§ Motions for summary judgment;
§ Breadth of admissible prior art;
§ Trial presentation;
· Pending litigation considerations;
· Appeals; and
· The Patent and Trademark Office, including:
§ The PTO’s memo regarding its application of KSR;
§ Pending applications; and
Please note this section will be updated frequently as the faculty panel continues to submit course material
Who Should Attend:
In-house Counsel, IP Attorneys & Consultants, Corporate Senior Management.
John J. Love was named Deputy Commissioner for Patent Examination Policy for the United States Patent and Trademark Office (USPTO) in January 2007. He is responsible for changes in patent practice, rules of practice and procedures, examining priorities, and classification of technological arts. He leads the operations of the Patent Legal Administration, Patent Cooperation Treaty (PCT) Legal Administration, and the Office of Petitions.
Previously, Mr. Love worked on establishing patent examination policy for business methods and computer-related inventions. He has given numerous presentations on this topic at national and international meetings.
Mr. Love joined the USPTO in 1969. After achieving primary examiner status in 1975, he was selected as a Supervisory Patent Examiner in 1978. He was appointed to the Senior Executive Service in 1988 as Director for Group 330, which included medical treatment and diagnostics subject matter patent applications. He joined Technology Center 2700 in 2000 to manage patent application examination in the growing area of business methods.
Mr. Love was a participant in the 1984-85 Department of Commerce Science and Technology Fellowship Program, during which he was detailed to the International Trade Administration. He has served as chairman of the Supervisory Patent Examiners and Classifiers Organization (SPECO), and he is a member of Pi Tau Sigma, the honorary mechanical engineering fraternity.
Mr. Love received his undergraduate degree in mechanical engineering from the University of Detroit. He earned a juris doctor degree from Georgetown University, and is a member of the Virginia State Bar.
John J. Love was named Deputy Commissioner for Patent Examination Policy for the United States Patent and Trademark Office (USPTO) …
Recent representative matters and recognition include:
Joined the appellate team for his client, Genentech, in obtaining review by the California Supreme Court of a $500 million jury verdict for breach of a patent license agreement;
Represented Applied Materials before the California Court of Appeal in a case involving indemnification for method patent claims;
Won an appeal for Intel before the U.S. Court of Appeals for the Federal Circuit regarding declaratory judgment jurisdiction in patent cases;
Won a jury trial in Delaware for McKesson Corporation on a patent covering medical computer systems; and
Won a landmark case for eBay before the U.S. Supreme Court, establishing that injunctions should not be presumed in patent cases (recognized in 2007 by Managing Intellectual Property as “Case of the Year,” for taking patent trolls head on; establishing it as “as one of the most important U.S. patent cases in many years”).
In January of this year, The American Lawyer named Mr. Randall to its list of “Fabulous 50” Rising Stars in Litigation, recognizing 50 lawyers who have made their mark in and out of the courtroom and who “will set the pace for the conflict ridden future.” Mr. Randall was also recently named one of “California’s Top 30 IP Attorneys” by the Daily Journal and was listed in its “Rainmakers” supplement in 2005 and 2006. In addition, he was selected for inclusion in Chambers USA: America’s Leading Lawyers for Business 2007.
Recent representative matters and recognition include: Joined the appellate team for his client, Genentech, in obtaining review by the California …
SAs lead counsel, Jeffrey K. Sherwood has tried many matters for the firm's clients.
For the past several years, Mr. Sherwood’s practice has concentrated on patent infringement and intellectual property litigation. His cases have encompassed many diverse areas of engineering, science and technology, including semiconductor products, telecommunications, satellite technology, nuclear power technology, pharmaceutical and chemical products, Internet technologies and many other areas. Mr. Sherwood has successfully handled several Markman hearings and technology tutorials, presenting complex technical and legal concepts in clear, understandable terms.
Over the course of Mr. Sherwood’s career, he has served as trial counsel defending many other science, engineering and medical cases involving trade secrets, domain name disputes, products liability and other tort claims, employment contract claims, and insurance coverage claims. He served as one of the principal architects of a consensus monograph by scientists from around the world on the benefits and risks of a major cancer drug. Mr. Sherwood also has handled several appeals, including a case before the District of Columbia Court of Appeals that established that market share liability is not a viable theory of recovery in the District of Columbia. He also has participated in a variety of alternative dispute proceedings, including mediation, arbitration and a summary jury trial.
Mr. Sherwood received his A.B. from Colby College in 1975 and his J.D. from Stanford Law School in 1979. He is a member of the of Virginia, District of Columbia and Texas Bars.
SAs lead counsel, Jeffrey K. Sherwood has tried many matters for the firm's clients. For the past several years, Mr. …
John Dragseth is a principal of Fish & Richardson P.C. His practice emphasizes complex analytical and writing work in patent law—including federal appeals, patent prosecution, pre-suit and due diligence investigations, and patent opinions. He writes and lectures frequently on a variety of patent law topics.
Mr. Dragseth has led the briefing on more than 30 appeals to the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, where he was previously a law clerk to the Honorable Raymond C. Clevenger III. He has extensive experience in taking over cases on appeal and framing them for the Federal Circuit, while working closely with trial counsel. As part of his appellate practice, he frequently consults with trial teams to ensure that they are properly preparing their cases for the best result on appeal.
Mr. Dragseth focuses on technologies in the fields of medical devices, software, electronics, and business methods. He grew up on a small grain and sugar beet farm and was a law clerk at Honeywell Inc. (1994-1995), and a consulting project engineer in the medical group at Ellerbe Becket, Inc. (1991-1993).
He earned a B.S. degree in Mechanical Engineering from the University of Minnesota, and a J.D. from the University of Minnesota Law School.
John Dragseth is a principal of Fish & Richardson P.C. His practice emphasizes complex analytical and writing work in patent …
Mr. Bass began his legal career clerking for Justice Hugo Black of the Supreme Court. In the past 35 years, he has briefed and argued cases in federal and state courts across the country. Mr. Bass was co-counsel for Teleflex in KSR v. Teleflex, the most significant Supreme Court decision in patent law in the past 40 years. He was one of the authors of the petitioner's brief in Wal-Mart v. Samara, where the Supreme Court unanimously reversed the Second Circuit and established a significant principle for trade dress protection. He was a principal author of AWH's brief in Phillips v. AWH that involves reconsideration of all of the significant principles of patent claim construction.
Mr. Bass is a Past President of the prestigious American Academy of Appellate Lawyers and a founding Master of the Edward Coke Inn of Appellate Practice.
A sought-after legal commentator, Mr. Bass is comfortable in all facets of the media and has recently been a guest on MSNBC's Hardball with Chris Matthews.
Mr. Bass has particular technical experience in electronics and computer programming.
Juris Doctor, Yale University, cum laude, • A.B., Chemistry, Duke University, summa cum laude
Mr. Bass began his legal career clerking for Justice Hugo Black of the Supreme Court. In the past 35 years, …
Thomas J. Colson is a registered patent attorney with deep experience in both prosecution and litigation. Unlike most other attorneys throughout the world though, Mr. Colson has years of hands-on experience in business. Since the legal function exists solely to support the business goals of clients, such business experience is of critical importance. And, since intellectual property has become the business weapon of choice, such combination experience is fast becoming a requirement for all visionary companies. Simply put, without an intimate appreciation of the business challenges and goals of clients, an attorney cannot adequately support its clients’ needs within the realities of global competition.
Throughout his career, Mr. Colson has succeeded in business roles from Sales & Marketing, to Operational Management, to President. As the president of a Manning & Napier company, he assisted clients in creating and implementing robust intellectual property strategies to support business goals such as building market entry barriers, enhancing product/service margins, creating distribution networks, leveraging partner relationships, increasing corporate valuations, and generating low cost licensing revenue.
To assist clients in implementing such business driven intellectual property strategies, Mr. Colson has created client specific processes (using industry best practices and tools) for invention creation, invention and information capture, and intellectual property exploitation.
And, as much as deep business experience enables a patent attorney to fully appreciate the needs of a business client, to fully appreciate the needs of an inventor, a patent attorney must himself be an inventor. Mr. Colson is an inventor. He has invented software and business methods associated with the efficient analysis and management of intellectual property. He is currently the named inventor in eight United States patent applications.
Through his work with customers across the United States, Mr. Colson has become a recognized expert in the creation and implementation of intellectual property strategies. He has been a primary speaker at events sponsored by the American Intellectual Property Lawyers Association, ARMA, American Bar Association, Licensing Executive Society, Corporate Intellectual Property Institute, SIPO (Chinese Patent Office), Intellectual Property Society of San Jose, North Carolina Bar Association, LinuxWorld, American Chemical Engineers Association, Association of Food Scientists, Database 2002 of Tokyo, Upstate Alliance For Innovation, Women in Computers, Marcus Evans, and others.
Moreover, Mr. Colson’s opinions on intellectual property issues have been solicited by members of the United States Congress, and he has been quoted in articles appearing in the New York Times, London Financial Times, California Lawyer, many other magazines and journals, and a book entitled, “Edison in the Boardroom.” As well, Mr. Colson has written many articles related to intellectual property that have been published in journals and magazines such as Directors & Boards, Patent World, Ivy Business Journal, Chemical Innovation, CIO, BioTech, IndustryWeek, IAM Magazine, Patent Strategy & Management, Successful Meetings, Machine Design, Law.com, MIP, and Future and the Inventor.
Thomas J. Colson is a registered patent attorney with deep experience in both prosecution and litigation. Unlike most other attorneys …
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About Fish & Richardson P.C.
Fish & Richardson P.C. is an international law firm with
more than 425 lawyers in 11 offices throughout the United
States as well as in Munich, Germany. The firm is one of the
largest in the United States practicing intellectual property,
litigation, and corporate law and offers global services that
include worldwide IP strategy and representation in multi-
national litigation. Founded in 1878, the firm represented
Thomas Edison, Alexander Graham Bell, and the Wright
Brothers. For more than 125 years we have served great
innovators, helping to protect countless ideas, nurture
discoveries, and bring new concepts to market. The firm
prosecuted and litigated many of the fundamental patents of
an industrialized America, serving corporations creating the
cutting-edge technologies of the day: the telephone, the air-
brake, the steam turbine, the automobile, and the radio.
Frederick Fish, the firm's founder, was for many years the
acknowledged leader of the patent bar of the entire country
at a time when patents were more important than they had
ever been. Today, the firm continues to represent great
innovators working in cutting-edge technologies. In fact, Fish
represents 11 of the top 25 World's Most Innovative
Companies, as identified in a Spring 2007 Business Week