Dunes^® CLE in Las Vegas

Inequitable Conduct After McKesson: Has The "Plague" Returned? - Thomas M. Hardman

In McKesson Information Solutions v. Bridge Medical, the Federal Circuit upheld the district court's finding of inequitable conduct based on the failure to submit certain information to the Patent Office during prosecution. In her dissent, Judge Newman remarked that with McKesson, the Federal Circuit "returns to the 'plague' of encouraging unwarranted charges of inequitable conduct, spawning the opportunistic litigation that here succeeded despite consistently contrary precedent." Is the dissent in McKesson right? Will McKesson give rise to a "plague" of opportunistic litigation? And if so, what steps should patent prosecutors take to keep from getting "infected"? This presentation will first provide an overview of prior caselaw relevant to inequitable conduct based on a failure to disclose. Following this overview, the presentation will then examine to what extent, if at all, the legal standard for showing inequitable conduct has been changed by the Federal Circuit's decision in McKesson.

USPTO Claims and Continuation Practice Final Rules: Where Are We Now? - Mark Sandbaken

The USPTO has issued its Claims and Continuation Practice Files Rules. In this presentation, we will review highlights of the new rules and discuss tactics for prosecuting existing applications and for filing new applications.

Statutory Subject Matter in 2007 and Beyond - Robert Ryan Morishita

Labcorp v. Metabolite was supposed to provide the latest word from the US Supreme Court in statutory subject matter under section 101 of the Patent Act. When the Supreme Court dismissed the grant of certiorari, however, focus shifted squarely to the Federal Circuit. The Federal Circuit currently has three major cases pending before it that include issues relating to statutory subject matter. In re Nuijten concerns a patent application with claims directed to "a signal." In re Bilski and In re Comiskey both concern "methods" that are not limited to machine implementation. Some commentators theorize that the Federal Circuit and/or the US Supreme Court may use one or more of these cases to revisit State Street Bank and redefine statutory subject matter. This presentation will review the current state of statutory subject matter and the arguments presented in these three cases, and attempt to project the potential impact of decisions in these cases by the Federal Circuit.

Patent Law and Policy Update 2007 - A Comprehensive Review of Significant Developments in Congress and the Federal Circuit (Part 2) - J. Matthew Buchanan

(Part 2) This presentation will provide an update on patent reform developments in Congress as well as a review of major caselaw developments from the Court of Appeals for the Federal Circuit.