​​​​Copyright 2019 DBA IP Section. All rights reserved. Photo credits: Wikimedia Commons.

CLE

Noon CLE meetings are typically held on the fourth Friday of every month (with some exceptions).

 

We also host periodic breakfast CLE roundtable discussions at a North Dallas location on important IP topics.

2015 CLE Calendar

 

January 23 (Noon)

Lawyers, Ethics, and Money:  A Look at Current Ethical Issues Relating to Fee Issues and an Update

David Hricik

Mercer University

Walter F. George School of Law

 

 

February 27 Noon

Navigating Deep Waters – Negotiating IP Licenses

Brian McCormack & Heiko Burrow

Baker McKenzie

 

The presentation will cover approaches to negotiating an IP license, issues that may arise or should be addressed in the license, and specific terms of a license agreement, and will do so from the perspective of both the licensor and the licensee.

 

March 27 Noon

A Panel Discussion of Section 101 – Substance and Procedure at the Patent Office and in Court

John Mockler (Carter Scholer)

Ira Matsil (Slater & Matsil)

Eric Buether (Buether, Joe & Carpenter)

David Wille (Baker Botts)

 

A panel representing patent litigators and Patent Office practitioners will give an update on 35 U.S.C. section 101 concerning patentable subject matter.  The panelists will discuss trends and strategies from the perspectives of patent applicants, plaintiffs, and defendants.  They will consider issues of procedure – from motions to dismiss under FRCP 12(b)(6) to strategies for drafting claims and responding to Office Actions – and of substance, such as patentability-related arguments that have been successful, and not so successful, respecting computer-implemented methods.

 

April 8 - North Dallas IP Section Breakfast Seminar

Navigating Ethical Dilemmas Faced by Patent Prosecutors

Location:  Lazaranda (SW Corner Dallas North Tollway/Beltline)

Time:        8-9am

1 Hr. CLE (Ethics) Approved

 

Ethical duties imposed by the Texas Bar and the USPTO present unique challenges to the patent practitioner.  Join moderated table discussions about the ethical issues presented by real-world examples of situations faced by patent prosecutors in their daily practice.  Topics to be discussed include disclosure dilemmas, inventorship issues, subject matter conflicts, and client identity problems.

 

April 24 - Noon

Teva’s Prescription To Cure What Ails Claim Construction – A Bench-Bar Brainstorming Session

Panelists:

Judge Rodney Gilstrap (E.D. Tx.)

Judge Barbara M.G. Lynn (N.D. Tx.)

Don Puckett (Skiermont Puckett LLP)

Bruce Sostek (Thompson & Knight LLP)

Scott Breedlove (Vinson & Elkins LLP), moderator

 

Description: Federal court Judges from the Northern and Eastern Districts of Texas, along with litigators for patent holders and accused infringers, will address the impact of the recent Teva decision handed down by the United States Supreme Court. The moderated panel will discuss trends and strategies around the framing of claim construction arguments, use of experts, and advocacy and evidence at Markman claim construction hearings.

 

May 22 - Noon

Top (Ten) Tips for U.S. Counsel for Obtaining Value from European Patent and Trademark Filings:  What Your European Counsel Wish You Knew

John Lawrence

Barker Brettell LLP (UK)

 

Description: This presentation will provide tips for U.S. counsel to obtain value from European patent and trademark filings, with a specific emphasis on things a European counsel wished his U.S. counterpart understood. Topics will include drafting PCT applications with the rest of the world in mind, including claim structures, added matter issues, translation costs issues, statutory bars in Europe, and approaches to be considered; considerations on the search authority to use; EPO national phase entry considerations, including how many independent claims, which will get examined , which are just wasteful, number of claims, timescale to defer decisions, and revising the claim set at EPO entry; how the unitary patent will sit in the mix, and when you need to choose to go unitary or stay with the current EPO system; and practices we see from U.S. attorneys that make life more expensive or difficult, including a hundred claims, 8 independent claims, amendments using completely new language, intermediate generalizations, added matter, and the EPO's strict approach.

 

June 4 - 6 pm Reception, 7 pm Panel Discussion

In-House Counsel Panel Discussion

Jones Day 2727 North Harwood Street, Dallas, Texas 75201

5th Floor, Rooms A-C (Free Parking Available Outside Building and on P1 Level of Garage)

 

Description:  New Lawyers Committee of the Dallas Bar Association’s Intellectual Property Section Presents a panel of “new” in-house counsel will discuss topics relating to their experiences, practice tips, and advice.  The panel will be comprised of attorneys who act as in-house counsel in the field of intellectual property.  The panel and its peer-group audience will delve into intellectual property issues encountered by new attorneys, outside counsel’s do’s and don’ts of working with in-house counsel, how to develop and maintain a relationship with in-house counsel, and how I survived my first few years as an in-house attorney.

 

Hors d’oeuvres and drinks will be provided by the New Lawyers Committee of the Dallas Bar Intellectual Property Section.  Target Audience is "new" lawyers that that have been practicing for 10 years or less. 

 

June 12 - Noon (Belo)

Latest Update on Patent Reform - Panel Discussion

Jointly Sponsored:   Dallas Asian American Bar Association &

                                 IP Section, Dallas Bar Association

Panelists:

David Taylor (SMU Dedman Law School)

Andrew Spangler (Spangler Law P.C.)

Jim Harlan (PanOptis Patent Management, LLC)

Hope Shimabuku (Xerox Corporation)

Tim Wang (Ni, Wang & Massand, PLLC), moderator

 

Description: A panel representing diverse views on patent reform will give an update on the latest developments in Congress.  There are at least four major bills that have been introduced in Congress earlier this year.  If passed, they could have profound effects on patent litigation and licensing.  The panel will discuss the pros and cons of the major provisions in the proposed bills.  They will also provide insights on the prospect of these bills being passed.

 

June 26 - Noon

Trademark Trial and Appeal Board (TTAB) - Year in Review

S. Roxanne Edwards and James Creedon

Klemchuk, LLP 

 

Description:  The presenters will explore recent decisions from the Trademark Trial and Appeal Board (TTAB).  The presentation will highlight key cases and decisions, discuss facts, issues and outcomes of cases and provide helpful tips for similar cases in the future and decisions to watch for in the near future. 

 

July 24 - Noon

Copyright Law Update

Kevin Meek

Baker Botts

 

Description:  Copyright topics of authorship, subject matter of protection, cloned video games, and “appropriation art” will be covered. The presentation will also examine recent developments in copyright law.

 

 

August 26

AIPLA/USPTO Road Show

Enhancing Patent Quality and Conducting AIA Trials

Belo Mansion, Dallas, TX

(Co-sponsored by the IP Section of the Dallas Bar Association)

 

Hear from high level USPTO representatives from the Office of Patent Quality and the Patent Trial and Appeal Board as they walk attendees through changes in the rules, as well as experienced practitioners who have examined how these changes will impact patent practice going forward, and provide useful tips on how to adapt.​  

 

Register, click here.  All Dallas Bar IP Members are eligible for AIPLA Member rates for this program.

 

August 28

Two Recent Trademark Decisions from the Supreme Court

John Cone

Hitchcock Evert

 

Description:  The presenter will explore two recent U.S. Supreme Court decisions in the field of Trademark Law, which includes a review of pertinent facts, issues and outcomes of these cases.  The presenter may also provide helpful tips for handling certain Trademark matters in the future in light of these recent decisions.   

 

September 25

The Intersection of IPR and Patent Drafting: Tips to

Increase Chances of Surviving Validity Challenges

Thomas Kelton

David O’Dell

Haynes and Boone LLP

 

Description:  This CLE will cover how actions in procuring patents can affect a patentee’s ability to defend those patents against a validity challenge.  Practice tips will include actions that can be taken when a patent is drafted and prosecuted to make that patent stronger in the face of a potential IPR or district court challenge.  Spending a little more money and effort up front to draft a better patent application may pay off in real dollars when it comes time to enforce the patent.

 

 

October 7 - North Dallas IP Breakfast Seminar

Practical Solutions to Ethics Issues Faced by IP Lawyers  

Location: Lazaranda (SW corner of Dallas North Tollway and Belt Line)  8:00-9:00 a.m.

Ethical duties imposed by the Texas Bar and the USPTO present unique challenges to the patent practitioner. Join moderated table discussions about the ethical issues presented by real-world examples of situations faced by intellectual property lawyers and firms. Topics to be discussed include evaluating potential clients, engagement and disengagement letters, disclosure dilemmas, attorney as inventor issues, billing disputes, and client identity problems.

 

October 23

Intellectual Property Issues in M&A Transactions

Steve Stein

Craig Carpenter 

Jesse Betts

Thompson & Knight, LLP

 

Description:  This presentation would provide an overview of the IP issues triggered by an M&A transaction and how to deal with those issues. The presentation would walk through the steps of a typical M&A transaction, identifying and discussing IP-related issues along the way. We would discuss: IP considerations in deal structure, IP due diligence, important provisions in the transaction documents (including indemnity, IP reps, etc.), chain of title and transfer issues, and data privacy issues.

 

November

NO MEETING 

 

December 4 

PTAB Year in Review

Peter J. Ayers

Lee & Hayes

 

Description:  The presenter will explore recent decisions from the PTAB and the Court of Appeals for the Federal Circuit, which will includes a review of pertinent facts, issues and outcomes of these cases.

 

 

2014 CLE Calendar

January 24

Troll Hunting: Legislative Update Over Perceived Patent Abuses by Non-Practicing Entities

Panelists:

Scott Burt

Conversant (formerly MOSAID)

 

Max Ciccarelli

Thompson & Knight LLP

 

Brett Johnson

Farney Daniel PC

 

Moderated by:

James Gourley

Carstens & Cahoon, LLP

Presentation

 

February 28

Litigation Strategies at the International Trade Commission

Mark Whitaker

Baker Botts, LLP

Presentation

 

March 28

Seeking and Avoiding Stays of Litigation Pending Post-AIA Patent Review

Austin Champion

Klemchuk Kubasta LLP

Presentation

 

April 9

North Dallas Breakfast CLE

"What Can I Do to Stop Them" or How to Advise Your Client on the Use of AIA Pre and Post Issuance Tools Against Competitors

Location: Pho House

                   5301 Alpha Road (near the Galleria)

Time:       8-9PM

Presentation and Moderated Round Table Discussions

 

April 25

Intellectual Property Holding Company: Tax, Standing, Damages, and Other Litigation Issues

Prof. Xuan-Thao Nguyen

Southern Methodist Univ. Dedman School of Law

 

May 23

Recent Precedential Cases from the Trademark Trial and Appeal Board (TTAB)

Molly Buck Richard

Richard Law Group

Presentation

 

June 27

Patent Damages Case Law update

Dwayne Norton

Alston & Bird LLP

Presentation

 

July 25

SCOTUS Patent Cases Update

Gale R. "Pete" Peterson 

Law Offices of Gale R. Peterson

Presentation

 

August 22

Patent Case Preferences and Pet Peeves - What I know Now as a Judge that I Didn’t Know as a Lawyer

Hon. Barbara M. G. Lynn

U.S. District Judge

Northern District of Texas

 

September 10

North Dallas Breakfast CLE

Advising Your Client In Light of Alice Corp. v. CLS Bank International and USPTO Guidelines

Location: Pho House

                   5301 Alpha Road (near the Galleria)

Time:       8-9PM

Presentation and Moderated Round Table Discussions

Handout Material

 

September 26

The Interplay of PTO Review and District Court Litigation

David McCombs

Haynes and Boone LLP

&

Charles Fowler

McKool Smith

 

October 24

Copyright Law Update

Kevin Meek

Baker Botts, LLP

Presentation

 

November

NO MEETING 

 

December 4

Inventorship: Who Is the Inventor, Why It Matters, and What Happens When You Don't Get It Right

Jason Wietjes

Bracewell & Giuliani, LLP

Presentation

 

 

Next CLE:  Dec. 5 (Belo)

Copyright Trial Perspectives:

DynaStudy, Inc. v. Houston Independent School District

The presentation will cover aspects of trial for copyright and DMCA cases, including voir dire strategy, witness examinations, how to present statutory damages evidence to a jury, insights from trial from the perspectives of both parties, and closing argument strategies when statutory damages for copyright and DMCA are at issue.