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All Roads Lead to Markman: Why Claim Construction Is as Important as Trial



Tuesday, October 16, 2012
Product Code - LGN62
Speaker(s): Douglas R. Nemec, Skadden, Arps, Slate, Meagher & Flom LLP; P. Anthony Sammi, Skadden, Arps, Slate, Meagher & Flom LLP
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Nearly 20 years have passed since the Supreme Court held in Markman v. Westview Instruments that construing the scope of patent claims is a matter of law for courts. The Markman decision wrought huge changes on the patent litigation landscape and triggered a cascade of Federal Circuit decisions discussing the proper approach to construing claims.

The debate over how claims should be construed has cooled in recent years, but claim construction remains at the heart of every patent case. Recent lines of Federal Circuit cases showcase how even slight nuances in the construction of a patent claim may mean the difference between validity and invalidity, infringement and non-infringement. Among the key issues in play are (1) patentability under 35 U.S.C. § 101; (2) definiteness under 35 U.S.C. § 112, 2, (3) written description under 35 U.S.C. § 112, 1, and (4) divided infringement in the context of method claims.

The purpose of this program is to examine how claim construction intersects with the aforementioned issues and to provide the audience with practical instruction – based on Federal Circuit case law – on how best to achieve their clients' objectives by considering all of these issues when drafting and construing patent claims.

Educational Objectives:

• Understand an overview of the current state of the law on patent claim construction.
• Learn to examine issues that may arise depending on the way claims are construed.
• Find out about case law examples where case claim construction was case dispositive (other than traditional non-infringement cases).

Who would benefit from attending the program?

The presentation is intended to be relevant to those drafting patent applications, those litigating patent applications, and those studying the scope and strength of patents in transactional contexts.

Program Level: Intermediate.

Credit Available: CLE. For more information, please click on the “CLE Credit” tab.

Douglas R. Nemec, Skadden, Arps, Slate, Meagher & Flom LLP; P. Anthony Sammi, Skadden, Arps, Slate, Meagher & Flom LLP

Douglas R. Nemec, Skadden, Arps, Slate, Meagher & Flom LLP
Douglas R. Nemec concentrates on intellectual property litigation and related counseling, including providing intellectual property advice in connection with corporate transactions. Mr. Nemec has litigated numerous cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in patent interference proceedings and other matters.

Mr. Nemec has spoken and written extensively on patent issues and is a member of the American and New York Intellectual Property Law Associations. He earned a J.D. from the University of Minnesota Law School and a B.S.E. in Bioengineering from the University of Pennsylvania.

P. Anthony Sammi, Skadden, Arps, Slate, Meagher & Flom LLP
P. Anthony Sammi concentrates his practice on litigating intellectual property cases, particularly high-technology patent cases, at the trial level.

With a background in electrical engineering and physics, Mr. Sammi has litigated a broad range of matters involving software, hardware, business method and e-commerce patents as well as computer source code copyrights and trade secret misappropriation actions. His practice also includes counseling both U.S. and multinational clients on evaluating, licensing and protecting intellectual property portfolios.

Mr. Sammi earned a J.D. from Cornell Law School and a B.S. in Electrical Engineering from the University of Maryland.

This program is CLE-credit eligible.

If you have further questions regarding a specific state or how to file for CLE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the Legal and Business CLE Accreditation Coordinator.

Hardship Policy
Bloomberg BNA offers a hardship policy for any attorney earning less than $30,000 per year. If an attorney wishes to take advantage of this option, he or she must do so in writing and also provide proof of hardship. If approval is granted, a discount of 50% off the full registration price of the program will be awarded.

Questions
For more information about Mandatory or Minimum Continuing Legal Education (MCLE) requirements, visit the American Bar Association website at http://www.abanet.org/cle/mandatory.html.