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• IP Strategies In Deals. Seminar Summary of Speaker Robert E. Krebs of Thelen Reid and Priest LLP ( June 2004 )
  FindLaw M V

  Robert E. Krebs, Partner and Co-chair, Intellectual Property and Trade Regulation Group at Thelen, Reid and Priest, discussed patent reexamination as a possible alternative strategy to litigation. The importance of reexamination came up recently when the patent office held a UC patent invalid after it had a $520 million infringement verdict against Microsoft.

• Federal Circuit Decides Festo on Remand from the Supreme Court ( January 2004 )
  Estelle J. Tsevdos, Maria Luisa Palmese, Patrice P. Jean and Kathlyn M. Card-Beckles of Kenyon & Kenyon LLP

  On September 26, 2003, the Federal Circuit decided <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.</i>, 344 F.3d 1359 (Fed. Cir. 2003), which was on remand from the Supreme Court. The Federal Circuit's decision appears to be directed towards a very limited exception to the total surrender presumption, and the minority opinions illustrate that there is tension within the Federal Circuit regarding the approach to barring equivalents.

• Stanford Biotech Strategies Seminar. Seminar Summaries of Speakers Michael Shuster and Lynn Pasahow of Fenwick & West. ( January 2004 )
  FindLaw M V

  Michael Shuster spoke on protecting early stage technology. Lynn Pasahow presented an update on biotech patent litigation with a special focus on selected recent cases.

• Dreams of the Moon and Gold Do Not a Valid Patent Make ( August 2003 )
  William A. Meunier of Testa Hurwitz & Thibeault, LLP

  Most people with a even a passing familiarity with patents realize that for a U.S. patent to be valid, it must claim an invention that is new. What many do not know, however, is that a patent must satisfy other requirements that, while less well known, are just as important to the validity of the patent. The District Court for the Western District of New York's recent decision in <i>University of Rochester v. G.D. Searle & Company</i> illustrates the pitfalls of failing to meet one such requirement—the written-description requirement.

• IP Litigation Strategies: Patents: Markman Hearings (Part 1) ( September 2003 )
  Michael J. Bettinger of Kirkpatrick & Lockhart Preston Gates Ellis, LLP

  Michael Bettinger, leader of the Intellectual Property Litigation Group at Preston Gates & Ellis LLP, discussed the Markman hearing, which in patent litigation determines the meaning and scope of the patent claims in dispute. In the Supreme Court's Markman decision, Mr. Bettinger explained, the court held that meaning of patent claims is to be determined by judges as a matter of law, not by juries. According to Mr. Bettinger, it is now the single biggest event that happens in a patent case prior to trial.

• Technology Licensing Agreements: Findlaw Interview with Richard C. Hsu of Townsend and Townsend and Crew ( August 2003 )
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  Richard C. Hsu is Co-Chair of the Technology Licensing Group, where he counsels and provides companies advice on all licensing transactions and associated intellectual property issues. He has extensive experience in licensing, development, acquisitions, service and other partnering agreements for a variety of industries, including semiconductors, life sciences, medical devices, hardware, software and telecommunications.

• Intellectual Property Strategies in Security and Privacy ( September 2003 )
  Dennis S Fernandez of

  Current technological advances ranging from biotech and nanotechnology to electronics and software can be used to both protect and jeopardize the security and privacy of individuals. This paper highlights some Intellectual Property (IP) strategies to successfully navigate the competitive landscape of these technical industries.

• FindLaw Interview with William J. Bohler of Townsend and Townsend and Crew ( August 2003 )
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  William J. Bohler is a partner in Townsend and Townsend and Crew LLP’s San Francisco office. He has extensive experience in all phases of intellectual property practice, including patent preparation and prosecution, client counseling, technology licensing, and litigation. Mr. Bohler received his J.D. from Southern Illinois University magna cum laude, and a B.S. in Electrical Engineering from Purdue University.

• Effective Patent Asset Management ( June 2003 )
  Edward J. Kelly of Ropes & Gray LLP

  Edward J. Kelly, a partner at Ropes & Gray, led an informative discussion focusing on both patent asset management and the relationship between inside and outside counsel. Together with Marc Foodman, Chief Patent Counsel at Sun Microsystems, Inc., they focused the lively discussion on the following topics: IP Department infrastructure, patent asset management, settlement strategies and coordinating litigation.

• First In Class: A Conversation with Joe Liebeschuetz, Ph.D. on the Affymetrix GeneChip® Array Patent ( June 2003 )
  FindLaw M V

  Companies and universities use the GeneChip® array in the laboratory for research, particularly for drug discovery purposes and detecting polymorphisms. The GeneChip® array is also used for diagnostic purposes; however, more diagnostic applications will likely be developed in the future. Researching drug discovery is the most common application at present.