Spring 2012 Course Highlight: “Designing Around” Valid U.S. Patents

PRG’s Spring 2012 Advanced Courses Program will be held from March 25-31, 2012 at the Hyatt Regency Coconut Point Resort & Spa in Bonita Springs, Florida, and all courses have been updated to reflect the many impacts of AIA.  We’ve already posted an overview of all Spring 2012 Advanced Courses, so let’s take a closer look at individual courses.  Today, we’ll focus on the “Designing Around Valid U.S. Patents” course, which has been offered by PRG for 15 years, and it remains one of the most popular course offerings!

General Information: “Designing Around Valid U.S. Patents”

• Course Dates: March 29, 2012 – March 31, 2012
• Course Times: 8:15-11:30; 1:30-4:45 (Thurs-Fri); 8:15-11:30 (Sat)
• Projected CLE: 15.0 hours
• Projected Ethics Credit: 2.0 hours
• Instructors (Please note that the faculty members listed for this course are subject to change prior to the actual course date): Patrick Burns, John Pinkerton, Patricia Prior, and Robert Turner
• For more detailed information on this course, visit this page of the PRG website.

Why Should You Take This Course?
The Designing Around course distills the patent infringement analysis into comprehensive yet concise step-by-step checklists that can be used by attorneys at all experience levels to assist their clients in developing competitive, noninfringing products.

Course Description

In Markman and Cybor, the Federal Circuit required district courts to construe claims as a matter of law, and decided to review claim construction de novo. The object was to make claim construction predictable, so that claims would better perform their public notice function. The result has been an unmitigated disaster, often (but not always) reading limitations into the claims that the examiner did not require to establish patentability over the art of record. In fact, the court has often overridden the examination process, undermining the public notice function of claims ab initio. This course will explore the current condition of claim construction in detail and explain how competitors can use it to their advantage, even when the claims on their face are literally infringed.

Four cookbooks are provided, covering:

1. Literal infringement.
2. Infringement under the doctrine of equivalents.
3. Infringement of means plus function claim elements.
4. Prosecution history estoppel.

Using and following these cookbooks, which distill opinions by the Federal Circuit and the Supreme Court in cases from Pennwalt to Festo IX, any patent practitioner can counsel his or her client on how to “design around” the patented invention with almost certain impunity – a design that appropriates the patented invention and that, prior to Pennwalt and its progeny, would have been held an infringement rather than the socially desirable activity of “designing around.”

This course will show practitioners representing potential infringers how to counsel competitive product design under the guidance of Federal Circuit and Supreme Court cases, which will almost always be viewed as effective “designing around.” How to conduct litigation to achieve a happy ending for your infringement-accused client will be set forth in elegant simplicity.

Course Materials

The two-volume text for “Designing Around” Valid U.S. Patents is authored by the distinguished course faculty, each of whom has extensive successful litigation, prosecution and counseling experience. Nothing like these unique books exists anywhere else.

Registration, Hotel Information, FAQs, and Special Offers:

• If you’re interested in registering online for this Spring 2012 Advanced Course, visit this page on the PRG website!
• You can also view the Spring 2012 Advanced Courses Catalog, which included a print registration form.
• Visit this page for more information on the Hyatt Regency Coconut Point Resort and Spa in Bonita Spring, FL.
• Want general information on PRG’s Advanced Courses? Visit this FAQ page.
• And finally, learn about all the ways you can save through PRG’s Special Offers!

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