Partners Steven Lieberman and Jennifer Nock ("Jen") will participate in two panels during the Biotechnology Innovation Organization (BIO) IP Counsel Committee (IPCC) meeting from March 30-April 1, 2016, in San Antonio, Texas.
The first panel, called Getting out of Dodge – What in-house practitioners need to know about looming developments in patent venue, personal jurisdiction, and other factors that determine where patents can be litigated, will explore emerging questions about personal jurisdiction in patent cases after the Supreme Court’s Daimler decision, especially in drug and biologics patent litigation; ongoing efforts to force a judicial reinterpretation of the patent venue statute in the Federal Circuit; and activities that can or cannot subject a patentee to declaratory judgment jurisdiction in the infringer’s home state (such as notice, warning, or cease-and-desist letters, patent enforcement, and other contacts). Pending legislative initiatives to change patent venue may also be discussed. This panel is geared not just towards patent litigators, but first and foremost seeks to provide in-house counsel with practical information about events that can trigger patent litigation – sometimes unexpectedly – and the possibility that such litigation could occur in an undesirable or disadvantageous forum.
The panel will be moderated by Jen and will feature speakers Professor John M. Golden, Loomer Family Professor in Law at The University of Texas at Austin, and Steven.
The second panel, called Lessons Learned from the AIA Trenches – The School of Hard Knocks, will discuss the statutes and rules that provide the basic framework as to how AIA proceedings must be conducted. But there are many gaps left by the statutes and rules. How those gaps will be filled by PTAB Administrative Patent Judges can only be learned by "working in the trenches" or by learning from those who have worked in the trenches. Case law and statistical analyses of AIA reviews provide additional, enlightening information in this developing area of the law. This panel will explore “lessons learned” by the panelists from their experience, from the case law, and from AIA review statistics (including those for group 1600 cases) and will provide insights regarding pre- and post-institution considerations and actions based on those lessons. It also will explore unique considerations for paragraph IV cases that are not part of the considerations for cases in other areas.