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Ethics Developments in IP Practice-2017

Program Number: 2727IP Presenter: Anthony F. Lo Cicero, Esq.

Anthony Lo Cicero of Amster, Rothstein & Ebenstein, LLP, discusses recent developments in the law of ethics as it applies to intellectual property, including such subjects as formation and termination of the client relationship, under, e.g. ABA Rules 1.16, 1.18; duties owed to current and former clients under Rules 1.7-1.9; the bases for disqualification and the ever-challenging issue of subject matter conflicts, including developments after the decision in Maling v. Finnegan Henderson, 473 Mass. 336 (2015).

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Post-Grant Patent Office Proceedings After the AIA: Lessons from the First Five Years

Program Number: 2724IP Presenter: Brian A. Jones, Esq., Amol Parikh, Esq.

The creation of Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method Review (CBMR) has drastically impacted and shifted patent litigation strategy since 2012. These proceedings have proven to be a relatively cost-effective approach for a party seeking to challenge the validity of a patent. But these proceedings are not without their critics, and numerous issues have developed relating to the authority of the Patent Office concerning grant or denial of institution, the applicable claim construction and invalidity standards, and the effect of estoppel, just to name a few. This presentation focuses on the evolution of Post-Grant Patent Office proceedings, recent reforms, current trends, and potential changes that may occur in the near future.

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Supreme Court Review: IP Cases for the October 2016 through June 2017 Term

Program Number: 2712IP Presenter: Anthony F. Lo Cicero, Esq.

During the 2016-2017 term, the Supreme Court is expected to issue decisions in SCA Hygiene v. First Quality, dealing with laches in patent cases; Lexmark International v. Impression Products, dealing with patent exhaustion; TC Heartland v. Kraft Foods, on the all-important patent venue issue; and Lee v. Tam, considering the ban on registration of offensive trademarks. Join Anthony Lo Cicero of Amster, Rothstein & Ebenstein LLP for a discussion of these important cases and their likely ramifications.

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Defend Trade Secrets Act: New Role for the Federal Courts in Trade Secret Enforcement

Program Number: 2646IP Presenter: Anthony F. Lo Cicero, Esq.

The Defend Trade Secrets Act has been described as the most significant expansion of federal intellectual property jurisdiction since passage of the Lanham Act in 1946. Anthony LoCicero of Amster, Rothstein and Ebenstein discusses this new legislation, its likely impact on employer/employee and other relationships, its seizure provisions and how companies should modify their practices in light of it.

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Patent Exhaustion after the Federal Circuit’s Decision in Lexmark International, Inc., v. Impression Products, Inc.

Program Number: 2635IP Presenter: Casey Campbell, Esq., Amol Parikh, Esq.

Amol Parikh and Casey Campbell, McDermott Will & Emery, discuss the impact of the Federal Circuit’s decision in Lexmark International, Inc., v. Impression Products, Inc. on the issue of patent exhaustion. Topics include the history of the patent exhaustion doctrine, the changes in the law pronounced by the Federal Circuit, and considerations of potential licensing strategies in view of the case.

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Supreme Court Review: IP Cases from the October 2015 through June 2016 Term

Program Number: 2627IP Presenter: Anthony F. Lo Cicero, Esq.

During the 2015-2016 term, the Supreme Court is expected to issue decisions in Stryker Corp. v. Zimmer, Inc. and Halo Elec. V. Pulse Elec., relating to the award of enhanced damages in patent cases; Samsung Elec. V, Apple, Inc., regarding the design patent scope and monetary recovery; and Cuzzo Speed Tech. v. Lee, dealing with the scope of claim construction in PTAB proceedings and the reviewability of institution decisions. Join Anthony Lo Cicero of Amster, Rothstein & Ebenstein LLP for a discussion of these important cases and their likely ramifications.

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Ethics: Conflicts of Interest Principles Applied To IP Law

Program Number: 2626 Presenter: Anthony F. Lo Cicero, Esq.

Few subjects are as important to IP practitioners as the ethical considerations involved in the representation of clients when potential conflicts of interest arise. Anthony Lo Cicero of Amster, Rothstein & Ebenstein discusses the Rules of Professional Conduct (and the corresponding ABA Model Rules) that apply to conflicts of interest involving current clients (Rule 1.7) and former clients (Rule 1.9); the identification of the client (Rule 1.11); the formation and termination of the client relationship (Rule 1.16); and other subjects. Also covered: the decision in Maling v. Finnegan, Henderson, SJC 11800 (Mass. 2015), which rejected an attempt to create a conflict of interest situation where a firm prosecutes patents of similar subject matter for different clients.

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Willful Patent Infringement: A Changing Landscape, from the Celesq®-West LegalEdcenter IP Master Series

Program Number: 2570IP Presenter: Brett E. Bachtell, Esq., Shaun B. Hawkinson, Esq., Amol Parikh, Esq.

The law of willful infringement in patent cases has undergone significant change over the last several decades, with order being restored in 2007 when the Federal Circuit issued the Seagate decision. However, two recent Supreme Court cases – Highmark and Octane Fitness – have muddled the waters by relaxing the standard for finding exceptional cases in the attorneys’ fees context, which some argue is analogous to the willfulness test. The Supreme Court is once again poised to change the landscape of willful infringement, having recently granted review of cases involving Halo Electronics Inc. and Stryker Corp. in order to review the Federal Circuit’s willfulness standard. Amol Parikh, Brett Bachtell and Shaun Hawkinson, McDermott Will & Emery, discuss the current state of affairs for willful infringement, the Octane Fitness and Highmark cases and their impact on the willfulness standard, the Halo and Stryker cases that the Supreme Court will review, and practical implications these

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