Cardozo School of Law Patent Law Summer Intensive

This week-long course offers a rigorous introduction to patent law as well as a chance to engage with members of the bar, bench, industry, and government on today's most pressing patent law issues.  The Summer Intensive has two one-credit components.  Students can take one or both and receive up to two credits. The first, offered each morning from 9 am to noon, is a patent law survey course designed for those new to the subject.  It covers the basics of patentability, infringement, and remedies.  The second, offered each afternoon, features a series of keynotes and expert panels discussing topics such as the Supreme Court's most recent patent cases and ongoing patent reform efforts, as well as a skills workshop.

  • Introduction to Patent Law
    Monday – Friday 9 am  - 12 noon
     
  • Critical Issues in Patent Practice *CANCELLED*
    *The Supreme Court Patent Term in Review: Monday 12 noon -3 pm
    *Navigating the AIA Review Proceedings: Tuesday 12 noon -3 pm
    *Patent Reform in the Courts and Congress: Friday 12 noon -3 pm
    Panels include lunch
  • Patent Skills Workshops *CANCELLED*
    *Patent Prosecution and Litigation: Wednesday and Thursday 1 - 4

Cardozo Patent Law Summer Intensive at a Glance:

  • 2014 Dates: July 14-July 18, 2014
  • Program Audience: Practicing attorneys and law students from the U.S. and abroad who wish to get grounding in the most compelling issues in U.S. patent law
  • Cost: $75 Application Fee
 / See below under "Program Fees and Payment" for details
  • Credit:

    Current J.D. and LL.M. students will receive one credit on a pass/fail basis for each of the five-day morning and five-day afternoon sessions, for two credits total.  Cardozo students who have completed Patent Law are not eligible for credit for the morning session, but can earn one credit for the afternoon session. No scientific or technical background is necessary and there are no prerequisites.

    The method of evaluation for the course will be short take-home examinations.  
    New York CLE credit is available for practicing attorneys

  • Further information: Contact nysummer@yu.edu

Schedule

This course provides a rigorous introduction to the basic principles of United States patent law and their application to contemporary problems of practice and policy.  The course will cover the basic principles of patent validity, infringement, and remedies, including patentable subject matter, disclosure, novelty, nonobviousness, claim construction, direct and indirect infringement, and the availability of damages or injunctive relief. The Critical Issues panels will engage participants in dialogue with expert practitioners, academics, and judges on hot topics in patent law, including the Supreme Court's most recent patent decisions, navigating the procedural and substantive changes of the America Invents Act, and ongoing congressional patent reform efforts.  The Patent Skills Workshop will feature claim drafting and patent litigation simulations.   Lunch will be provided daily and will include a keynote speaker from the bar, bench, or industry. Students may enroll in either or both of the morning and afternoon components of the course.

PLEASE NOTE THAT THE "Critical Issues in Patent Practice" AND THE "Patent Skills Workshop" HAVE BEEN CANCELLED DUE TO CIRCUMSTANCES BEYOND OUR CONTROL. We apologize for any inconvenience this causes.

Monday, July 14

9 am - noon

Patentable Subject Matter
Some of the most significant patent controversies in recent years have involved the basic question: What is patentable?  Is software patentable?  Genes?  This first lesson addresses the threshold question of subject matter eligibility through a detailed study of the Supreme Court’s latest decisions in the area.

Professor Michael Burstein

12 noon
Lunch and Keynote Speaker

Malcolm Stewart, Deputy Solicitor General, United States Department of Justice 

 

 

1 – 3 pm

The Supreme Court Patent Term in Review

This panel will consider and critically evaluate the Supreme Court's major patent decisions from the just-completed Term, including Alice Corp. v. CLS Bank, Limelight v. Akamai, Nautilus v. Biosig, Octane and Highmark, and Medtronic.

Panelists:

James Dabney,
Fried Frank

Daniel Ravicher, Public Patent Foundation

 

Tuesday, July 15

9 am - noon

Disclosure and Novelty (I)
This morning will begin with an examination of the disclosure requirements – what information an inventor must share with the world in order to receive a grant of exclusive rights.  We will then move on to the fundamental requirement that a patent claim something new.  We will cover both the traditional novelty provisions and the changes enacted in the America Invents Act.

Professor Michael Burstein

12 noon
Lunch and Keynote Speaker

Hon. James Smith, Chief Judge, Patent Trial and Appeal Board

 

 

1 – 3 pm

Navigating the AIA Review Proceedings

This panel will focus on the new inter parties review, post grant review, and covered business method proceedings.  Topics will include the differences between agency practice and litigation, the interaction between the new proceedings and district court actions, and strategic considerations for plaintiffs and defendants.
 

Panelists:

Brian Rothery,
Stroock

Peter Thurlow, Jones Day

John Alemanni, Kilpatrick Townsend

 

Wednesday, July 16

9 am - noon

Novelty (II) and nonobviousness

We conclude our discussion of novelty and then examine the requirement that a patent claim something that would not have been obvious to others working in the field; that is, that it takes an “inventive step.”

Professor Michael Burstein

Lunch 

 

 

 

1 – 4 pm

Patent Skills Workshop I

This two-day workshop designed for students and practitioners with little or no practice experience begins with an exercise in patent drafting.  Students will work in teams to evaluate a new technology in light of the prior art and draft a patent disclosure and claims.

Professor Michael Burstein

 

 

 

Thursday, July 17

9 am - noon

Infringement (claim construction, literal infringement, doctrine of equivalents)

Having determined what is required to obtain a patent, this part of the course explores what a patent holder can do with her right.  We begin with claim construction, the process of interpreting the scope of patents, and then discuss infringement – literally and by equivalents, and direct and indirect.  We will briefly consider defenses to infringement.

Professor Michael Burstein

Lunch 

 

 

 

1 – 4 pm

Patent Skills Workshop II

Having drafted a patent the previous day, the second day of the skills workshop will ask students to enforce or defend against that patent in a simulated litigation exercise involving both briefwriting and oral argument.

Professor Michael Burstein

 

 

Friday, July 18

9 am - noon

Remedies

Here we examine the remedies availability to patent holders who have pursued successful infringement claims.  These remedies include injunctions and damages, and this segment will provide an overview of when these remedies are available and how modulating the scope of remedies impacts patent policy.

Professor Michael Burstein

12 noon
Lunch and Keynote Speaker

John Amster, Chief Executive Officer and Co-Founder, RPX Corp

 

 

1 – 3 pm

Patent Reform in the Courts and Congress 

This panel will explore the continued desirability of and shape of legislative patent reform efforts, particularly in light of recent developments in the Supreme Court and Federal Circuit.
 

Panelists:

Jeffrey I.D. Lewis, Patterson Belknap

Marian Underweiser, IBM

John LaBarre, Google

 

 

Faculty, Keynote Speakers, and Panelists

FACULTY

Program Director Professor Michael Burstein's research focuses on the institutional structures - both private and public - that shape innovation. He is interested primarily in the intersections between intellectual property and both corporate law and public law. Professor Burstein has previously written about the administrative structure of the U.S. Patent and Trademark Office, and is currently working on projects to clarify the law of patent standing and to develop insights into how private and public sector actors can make effective use of prizes for innovation.

Professor Daniel Ravicher serves as executive director of the Public Patent Foundation (PUBPAT) at Cardozo Law, where he works to protect freedom in the patent system. His case against Myriad Genetics will be heard by the Supreme Court in April 2013. The suit charges that patents on two human genes associated with breast and ovarian cancer are unconstitutional. Labeled a modern day 'Robin Hood' by Science magazine, and awarded an Echoing Green Fellowship for social entrepreneurship, Professor Ravicher is a registered patent attorney who writes and speaks frequently on patent law and policy, including twice testifying as an invited witness before Congress on the topic of patent reform. As a result of his accomplishments and professional reputation, Professor Ravicher was named to both Managing Intellectual Property magazine's '50 Most Influential People in IP' list and IP Law & Business magazine's 'Top 50 Under 45' list.

 

KEYNOTE SPEAKERS

Malcolm Stewart, Assistant to the Solicitor General, United States Department of Justice

Malcolm Stewart earned an A.B., at Princeton University, and M.A., J.D., and M.Phil degrees at Yale University. He served as Law Clerk to Chief Judge Patricia M. Wald, United States Court of Appeals for the District of Columbia Circuit, 1988-1989; Law Clerk to Justice Harry A. Blackmun, United States Supreme Court, 1989-1990; as Attorney in the Civil Division of the United States Department of Justice, 1991-1993; as Assistant to the Solicitor General, United States Department of Justice, 1993-2008; and has been Deputy Solicitor General, United States Department of Justice from 2008-present.  He received the Department of Justice Distinguished Service Award in 1999; the Department of Justice John Marshall Award in 2004 and 2010; the Department of Justice Distinguished Service Award in 2010 and the Presidential Rank Award in 2012.

Honorable James Smith, Chief Judge, Patent Trial and Appeal Board (invited)

John Amster, Chief Executive Officer and Co-founder, RPX Corp

John A. Amster is the CEO and co-founder of RPX Corp. Prior to co-founding RPX, Mr. Amster was the General Manager of Strategic Acquisitions and Vice President of Licensing at Intellectual Ventures, responsible for strategic acquisitions of patent portfolios as well as developing the software and e-commerce licensing programs.

Prior to joining IV, Mr. Amster was Managing Director and founded the M&A Advisory practice for Ocean Tomo, completing several important transactions in the early patent market, including the sale of Commerce One.  Prior to joining Ocean Tomo, Mr. Amster was Vice President and Secretary at InterTrust Technologies, where he worked on intellectual property transactions, merger and acquisition activities, and late-stage financing activities, including the sale of InterTrust to a Philips-Sony joint venture for $453 million. Mr. Amster started his career as an associate at Weil Gotshal & Manges, where his practice included mergers and acquisitions, equity investments, venture capital financings, intellectual property licensing, and patent litigation.

PANELISTS

John C. Alemanni, Kilpatrick Townsend

John C. Alemanni concentrates his practice in intellectual property law, with a primary focus on client counseling, patent litigation, strategic patent prosecution, and contentious inter and ex parte post grant and reissue work.  He provides creative, cost-effective solutions for his clients — including patent portfolio design as well as employing strategic inter partes review (IPR/PGR/CBM) and ex parte reexamination tactics as well as litigation.

Mr. Alemanni manages the portfolios of both established and emerging companies. He is a registered patent attorney and focusses on hardware and software technologies, including mobile devices, operating system and applications software, computer peripheral devices and control methods, haptics, network security, bioinformatics and laboratory information management, medical device simulation and haptic feedback, e-commerce, and telecommunications.

 

Mr. Alemanni has been recognized as a 2013 "IP Star" by Managing Intellectual Property magazine.

James W. Dabney, Fried Frank

James Dabney is a litigation partner and head of the Firm's Intellectual Property and Technology Practice.  He has successfully handled jury and non-jury trials; arbitrations; preliminary injunction proceedings; PTO administrative proceedings; and appeals involving patents, trademarks, and other intellectual property rights.  Mr. Dabney is also an adjunct professor at Cornell Law School.  Prior to joining Fried Frank, Mr. Dabney was a partner in Pennie & Edmonds LLP between 1989 and 2003.   

John LaBarre, Senior Counsel, Google

Jeffrey I.D. Lewis, Patterson Belknap Webb & Tyler LLP
Jeffrey I.D. Lewis is Immediate Past President of the American Intellectual Property Law Association (AIPLA). A member of the firm, he is a Chemical Engineer and Registered Patent Attorney concentrating his practice in patent litigation and patent-related matters. A graduate, cum laude, of Benjamin N. Cardozo School of Law, Mr. Lewis served as an Alexander Judicial Fellow to Hon. Marion T. Bennett of the U.S. Court of Appeals for the Federal Circuit. He has represented both patent holders and accused infringers in all aspects of patent litigation. Mr. Lewis has represented both plaintiffs and defendants in chemical and pharmaceutical companies, including the pharmaceutical innovator in numerous Abbreviated New Drug Application (ANDA) patent litigations and also has represented companies in many other technology areas. He also regularly counsels clients on intellectual property matters, including providing formal opinions, and represents them in transactions. In addition, Mr. Lewis has served as an Adjunct Professor of Law at Benjamin N. Cardozo School of Law, where since 1999 he has taught a seminar on Biotechnology and Pharmaceutical Patent Law.

Mr. Lewis is recognized by Chambers USA, which characterizes him as “relaxed, gracious and exceptionally good in court.” Mr. Lewis is also recognized by Super Lawyers in the area of Intellectual Property and is listed in The International Who's Who of Life Sciences Lawyers. Euromoney Institutional Investor PLC’s Benchmark: America's Leading Litigation Firms and Attorneys lists Mr. Lewis as a "Litigation Star" for New York and a "National Star" for Intellectual Property. Mr. Lewis also is Immediate Past President of the United States branch of Association Internationale pour la Protection de la Propriété Intellectuelle (International Association for the Protection of Intellectual Property, AIPPI). In addition, he is active in the New York Intellectual Property Law Association, where he currently serves on its Amicus Committee and previously Chaired the Pro Bono Committee, and the American Bar Association’s Intellectual Property Section where he Chaired a subcommittee on Willful Patent Infringement. He is also a member of the American Institute of Chemical Engineers. Mr. Lewis is on the Advisory Board of IP Litigator magazine, and he also is a frequent author and lecturer on patent and patent litigation issues. In addition, Mr. Lewis has been a Trustee of the American Intellectual Property Law Educational Foundation, and is a member of the Federal Circuit Bar Association, Licensing Executive Society, and American Institute of Chemical Engineers. 

Brian M. Rothery, Stroock

Brian Rothery has litigated federal patent and trademark and state unfair competition and business tort claims for plaintiffs and defendants involving medical devices, dietary supplements, automotive components, consumer products, electromechanical devices, semiconductors, robotic devices, bicycles, vending machines, window coverings and product packaging.

As a litigator, Mr. Rothery has participated in all aspects of discovery, pretrial preparations and submissions, and trial. He has acted as trial counsel before federal trial and appellate courts throughout the United States, including the district courts for New York, Virginia, Delaware, Texas, Illinois, Minnesota, Michigan, Pennsylvania, Florida, Massachusetts, Indiana, Tennessee and California. Mr. Rothery also has been involved with three cases before the Court of Appeals for the Federal Circuit, two resulting in favorable reversals of lower court decisions and one resulting in a favorable settlement.

In addition to his litigation experience, Mr. Rothery also performs substantial counseling on intellectual property matters, including advising clients on the development and management of international and domestic intellectual property portfolios involving patents, trademarks and trade secrets to protect the client's research and development activities, commercial products and marketing strategies. Mr. Rothery has participated in patent reexaminations and lectured before the American Society of Mechanical Engineers (ASME) on patent portfolio development.

Peter G. Thurlow, Jones Day

Pete Thurlow is the coordinator of Jones Day's global patent prosecution group. He has experience in all aspects of domestic and international patent prosecution, including post-grant proceedings in the USPTO (e.g, ex parte reexamination, Patent Trial and Appeals Board (PTAB) proceedings). Pete also has significant experience providing patentability, freedom to operate, and invalidity opinions in the mechanical and electrical arts. He provides support for patent litigations in the federal courts especially those with parallel PTAB proceedings. He also advises clients on IP licensing matters.

Pete was appointed to serve a three-year term on the U.S. Patent and Trademark Office's Patent Public Advisory Committee ("PPAC") starting in November 2012. PPAC is a nine-member advisory committee that advises the USPTO on patent policies and procedures and submits an annual report to the President, Secretary of Commerce, and the Judiciary Committee. For PPAC, Pete is chair of the PTAB and Patent Quality Subcommittees. He helped the USPTO coordinate the recent PTAB Roundtables, and was a panelist at the first PTAB Roundtable held at the USPTO on April 15, 2014.

Pete has been an active member of the New York Intellectual Property Law Association (NYIPLA) for the past 15 years, having served as chair of several committees including the Patent Law Committee. Pete became a member of the NYIPLA Board of Directors in May 2014.

Marian Underweiser, IBM

Marian Underweiser is IBM’s Counsel for IP Law Strategy and Policy. Dr. Underweiser develops IBM’s policy on a broad spectrum of IP matters, including legislative, PTO, and judicial reform. She worked extensively representing IBM’s position on the America Invents Act throughout the legislative process, and continues to do so through current implementation efforts. Her amicus work includes IBM’s briefs to the Supreme Court in Microsoft v. i4i, eBay v. Mercexchange, KSR v. Teleflex, Bilski v. Kappos, and Quanta v. LG. Dr. Underweiser has held several prior positions at IBM with responsibilities including the management and oversight of IBM’s worldwide patent portfolio and management of the IP department at IBM’s T.J. Watson Research Center.  As a member of IBM’s Corporate IP licensing team, Dr. Underweiser negotiated major IP transactions including patent and technology licenses, litigation settlements, and business line divestitures. 

She is chair of the IPO’s US Patent Law Committee and a member of the American Intellectual Property Law Association and the American Physical Society.

Dr. Underweiser is a graduate of Harvard University where she received her AB in Physics. She received her PhD in Physics from UCLA, where she specialized in Condensed Matter Physics, and her JD from Columbia Law School where she was a Stone and Kent scholar.

Accommodation

Cardozo does not offer accommodation for this program.  Recommended hotels in walking distance of Cardozo are available hereA list of more hotels, in a range of prices, is available from the New York Convention and Visitors Bureau.

Visa

Program program participants may enter the U.S. as a B-1, B-2 or WT visitor. This is appropriate for those who are coming to the United States primarily for tourism," and "also incidentally will engage in a short course of study during their visit."  Therefore, if you choose the B-2/WT visa, you are entering the U.S. with "tourist" intentions, which is your primary purpose.  Your "study" at Cardozo is your secondary purpose.  It is "incidental and avocational" to your primary tourist purpose.

Cardozo Law does NOT require any specific visa type to attend the Summer Seminar.  We only offer official and competent guidance to enable you to make a prudent choice customized for your personal case.  If you would like to pursue the option of applying for a student visa, please send an email to nysummer@yu.edu.

How to Apply

  1. Current Cardozo students: Cardozo students should register in person at the Registrar’s Office on the 10th floor no later than 5 pm on June 9.  
  2. All others: Complete the online application and submit the non-refundable application fee of $75 online at our secure payment site. Please contact nysummer@yu.edu with any questions or problems.

Applications will be accepted on a first-come, first-served basis. Because enrollment is limited, we encourage you to apply as soon as possible.

Program Fees and Payment

A non-refundable application fee of $75 must be submitted with the application for all participants not currently enrolled in a Cardozo J.D. or LL.M. Program. 

In addition, program fees are as follows:

Student Type Program Fee
Full Program (Morning and Afternoon)  
Cardozo Law J.D. or LL.M. student $1100
All others $2500
Five Day Morning or Five-Day Afternoon Program Only  
Cardozo Law J.D. or LL.M. student $550
All others $1250
Critical Issues in Patent Practice Series
Individual Afternoon $275
Three-part Series $750


Payment

Current law students seeking academic credit will be billed by the Cardozo School of Law Office of Student Finance. 

Participants who are not seeking academic credit and/or who are seeking CLE credit have several ways to pay fees:

  • Online payment by credit card through our secure site 
  • Personal check drawn on a U.S. bank or money order, including international money orders, sent to Patent Law Summer Intensive, Cardozo School of Law, 55 Fifth Avenue Room 1007, New York, NY 10003
  • Direct transfer or wiring of funds to Yeshiva University's account at:

JP Morgan Chase
1166 Avenue of the Americas
New York, NY 10036‐2708
ABA/Routing # 021000021
Acct Name Chem 4
Acct # 114‐003327
Swift Code CHASUS33

Please make sure that your name and the words "Patent Summer Intensive" appear on the wire. Please review the wiring procedures with your bank and be sure to add any fees incurred onto your total to ensure the full balance is credited to the university account.


Withdrawal and Refund Policy:
Students withdrawing from the program in writing via email to nysummer@yu.edu no later than July 3, 2014 are eligible for a 100% program fee refunds. The application fee of $75 is non-refundable.  

Cardozo students intending to withdraw must do so in person at the Office of the Registrar by close of business on July 3, 2014.