Patent work is perhaps the most lucrative of all expert witness case types. Fees for experts in patent cases commonly run in the six figures. This new course is designed to assist those technical and medical experts who wish to excel in patent cases or those who wish to break into this field. Patent cases are often the highest stakes civil litigation, with disputes in the seven to ten figure range. Attorneys in these cases are highly selective, well-funded and are looking for experts who understand the nuances of working on these challenging and rewarding cases. This course will provide attendees with the insights, skills and information to enable them to excel at patent cases. How to Excel and Succeed as an Expert Witness in Patent Cases: Special Techniques will not be offered again in 2017.
Who is this course appropriate for? Existing or prospective patent expert witnesses. In terms of areas of expertise, the most commonly litigated and lucrative patent issues often involve data communications and networking, molecular and cell biology, electronic systems, integrated circuits, electro-mechanical and microprocessor-controlled devices, medical devices, computer hardware and software, voice recognition and synthesis, chemistry, food science, biochemistry, textiles, plastics, optics and imaging, x-ray systems, metallurgy, ceramics, magnetic recording, fluid control systems and mechanical devices.
September 14-15, 2017, The Sea Crest Beach Hotel, Falmouth, Cape Cod, Massachusetts
Click here for a PDF of the conference brochure
LOCATION/HOTEL ACCOMMODATIONS: A limited block of rooms will be available at special rates at the site hotel, The Sea Crest Beach Hotel (Single/Double $175). To make your reservations please call 1-800-225-3110 and mention that you are with SEAK Training or click here. Rooms are limited and this rate expires on August 23, 2017 so you are strongly encouraged to make your reservations as soon as possible.
REGISTRATION INFORMATION: Tuition is $1295 until July 15, 2017; $1395 July 16, 2017–August 23, 2017; $1495 after August 23, 2017. Register early and save!
GROUP DISCOUNTS: Group discounts are available for two or more persons registering from the same organization. Discount prices depend on the size of the group. Our programs can also be brought on site to your organization. Please call 508-457-1111.
CANCELLATIONS: Conference cancellations received in writing on or prior to August 23, 2017 will receive a full tuition refund. Persons cancelling after August 23, 2017 will receive a full tuition credit.
Continuing Education Credits: If your specialty does not appear below and you desire credits, please contact Karen Cerbarano (Karen@seak.com or 781-826-4974). We can often obtain desired credits upon request, but unfortunately, obtaining some types of credits are not feasible. Please register early, as we can only apply for credits after your registration form has been received and it can take time to get the requested approvals back from the accrediting agencies.
Accountants: Earn 16.5 CPE credits in the field of study of Specialized Knowledge and Applications. SEAK, Inc. is registered with the National Association of State Boards of Accountancy (NASBA) as a sponsor of continuing professional education on the National Registry of CPE Sponsors. State boards of accountancy have final authority on the acceptance of individual courses for CPE credit. Complaints regarding registered sponsors may be addressed to the National Registry of CPE Sponsors through its website: www.learningmarket.org. For SEAK’s complaint and program cancellation policies please call SEAK, Inc. at 508-457-1111. All attendees should have the education and experience that would qualify them as an expert witness. This is an advanced group-live program. Advanced Preparation: None. This program was created in December 2016. Attorneys: Credit varies by state. Continuing legal education credits for attorneys will be applied for if requested in writing at the time of registration. Engineers: 14 PDHs. The acceptance of this course is dependent upon your state(s) of registration. The vast majority of states do not require preapproval of either courses or course sponsors. Physicians: SEAK, Inc. is accredited by the Accreditation Council for Continuing Medical Education to provide continuing medical education for physicians. SEAK, Inc. designates this live activity for a maximum of 14 AMA PRA Category 1 Credit(s)TM. Physicians should claim only the credit commensurate with the extent of their participation in the activity.
NOTE: SEAK does not accept commercial support for its programs and does not use faculty members with conflicts of interest.
Steven Babitsky, Esq. is president of SEAK INC., has trained thousands of expert witnesses and has wide experience in preparing patent experts for depositions and trials.
Andrew Calman, MD, PhD is an ophthalmologist and expert witness in San Francisco, CA. He is also an assistant clinical professor at UCSF. He received his BS and MS from Yale University and his MD and PhD from the University of California. Dr. Calman is an experienced patent expert with knowledge about pharmacologic patent law including Hatch-Waxman, Paragraph IV filings, inter parte review and BPCIA.
Jeffrey Gotro, PhD is a chemistry polymer and intellectual property expert witness with wide experience in patent litigation. Dr. Gotro received his PhD from Northwestern University and his BSME from Marquette University. He has 59 technical publications in the field of polymers and has 14 issued patents and 5 patents pending. Dr. Gotro is President of InnoCentrix.
Nathan Speed, Esq. is a trial attorney in the law firm of Wolf Greenfield. Attorney Speed has experience litigating patent cases in federal district courts across the country, including in the District of Massachusetts, the Southern District of New York, the District of Delaware, as well as the United States International Trade Commission and the Court of Appeals for the Federal Circuit. Attorney Speed’s patent litigation and post-grant review experience includes a wide array of subject matters, including data protection and recovery software, 3-D printing technologies, computer and graphics processors, voice-over-internet telephone technologies, digital cinema cameras, bionic prosthetics, and pharmaceutical compounds.
DAY ONE, Thursday, September 14, 2017
7:30 – 8:00am REGISTRATION & CONTINENTAL BREAKFAST (Provided with Faculty)
8:00am – 9:00am Patent Law for Expert Witnesses – Substantive
Success as a patent expert witness requires a nuanced understanding of patent law. In this segment attendees will learn the key concepts of U.S. Patent law including eligibility, utility, anticipation/prior art, novelty, nonobviousness, infringement, and damages including lost profits, reasonable royalty, and Georgia Pacific. Questions & Answers.
9:00am – 10:00am Patent Law for Expert Witnesses – Procedural
Patent litigation takes place in U.S. District Court or in proceedings before the United States Patent and Trademark Office (USPTO). In this segment attendees will learn the key procedures that govern such proceedings in District Court including Rule 26 reports, Rule 26 discoverability including communications with counsel, and draft reports. Faculty will explain the reexamination process and parallel litigation. In addition, attendees will learn the purpose and key rules relating to expert witnesses for USPTO post grant reviews and inter partes reviews as well as proceedings before the Patent Trial and Appeal Board. Questions & Answers.
10:00am – 10:15am BREAK AND NETWORKING OPPORTUNITY
10:15am – 11:00am Your Qualifications – How to Avoid and Defeat Challenges
An easy way for an opposing attorney to attack you is to challenge your qualifications. This can result in either a diminution of your credibility or even worse, your exclusion from testifying. In this segment the faculty will review relevant case law and provide specific, practical advice regarding how opposing counsel will attack your qualifications, which cases to accept and which cases to pass on, how to connect the dots and articulate your qualifications, and how to insulate yourself from attack. Questions & Answers.
11:00am – 12:00pm Claim Construction and the Expert Witness
The construction of patent claims plays a crucial role in patent cases and often impacts infringement, validity, and unenforceability. In this section faculty will explain, with examples, how to analyze claim construction including whether construction of a claim term is required and interpretation of a claim term. Discussion will include the role of the expert in proper construction and the terms of art “ordinary meaning” and “initial understanding.” Questions & Answers.
12:00pm – 12:45pm LUNCH (Provided with Faculty)
12:45pm – 1:45pm How to Insulate Against and Survive Daubert Challenges
Considering the amount at stake in many patent infringement lawsuits, a Daubert challenge of the experts in the case is the rule rather than the exception. An adverse Daubert ruling can have a devastating effect on both the case at hand and the expert’s future employability as a patent expert witness. In this segment the faculty will provide a refresher on the Daubert standard and provide specific techniques and suggestions for avoiding and surviving such challenges in patent cases. Questions & Answers.
1:45pm – 2:00pm BREAK AND NETWORKING OPPORTUNITY
2:00pm – 3:00pm The Role of the Expert in Markman Hearings
In Markman hearings, also known as claim construction hearings, the judge will determine the meaning of words in the patent dispute. Faculty will discuss the crucial role experts play in these hearings including helping counsel understand the technical meaning of the patents, writing declarations, and providing tutorials (both live or on video) for the judge. Questions & Answers.
3:00pm – 4:00pm Patent Validity – How to Develop Defensible Opinions
In order for an invention to be patentable in the U.S. it must be new and non-obvious. In this segment faculty will explain aspects of validity determination, with examples, including: anticipation, inherency, differences between prior art and the invention, long felt need, unexpected results, and the failures of others. Faculty will demonstrate a protocol for developing defensible opinions on patent validity. Questions & Answers.
4:00pm – 5:00pm How to Market Yourself and Break into Patent Work
Patent work can be highly lucrative. The cases may involve extremely large amounts of money. This reality means that lawyers can often be hesitant to employ inexperienced experts. In this section we will provide practical techniques to define your niche(s), get the word out, break into the field and build a lucrative practice. Questions & Answers.
DAY TWO, Friday, September 15, 2017
6:30 – 7:00am CONTINENTAL BREAKFAST (Provided with Faculty)
7:00am – 8:00am Patent Infringement – How to Develop Defensible Opinions
Infringement is the unauthorized making, using, or offering for sale of any patented invention within the U.S. Faculty will explain and demonstrate with examples: “reading” a claim, the doctrine of equivalents, and how it is applied to claims limitation. The types of patent infringement: direct literal, direct, divided, indirect, induced, and contributory will be explained and demonstrated. Faculty will provide a protocol for developing defensible opinions on patent infringement. Questions & Answers.
8:00am – 9:00am The Role of the Expert in The Discovery Process
Discovery is an integral part of patent litigation. Faculty will explain, with examples, the crucial role experts play in the discovery process, including assisting counsel with document requests and production, interrogatories, requests for admissions, depositions, subpoenas, and expert discovery. Questions & Answers.
9:00am – 9:15am BREAK AND NETWORKING OPPORTUNITY
9:15am – 10:15am How to Write a Superb Report in Patent Cases – Special Techniques
Patent litigation takes place in federal court and must follow the requirements of FRCP 26. In this segment attendees will learn special techniques for drafting powerful and persuasive reports pursuant to FRCP 26. Included will be a discussion of how far retaining counsel can go in assisting you to prepare the report. Faculty will provide and discuss examples of well written reports in patent cases. Questions & Answers.
10:15am – 10:30am BREAK AND NETWORKING OPPORTUNITY
10:30am – 11:15am How to Excel as a Patent Expert at Deposition – Special Techniques
In this segment you will learn how to deal with the trick and difficult deposition questions specific to patent cases. In addition, you will learn how to recognize and defeat the specialized tactics opposing counsel may use against you during a patent litigation deposition. Questions & Answers.
11:15am – 12:00pm How to Screen Retaining Lawyers and Properly Manage the Relationship with Retaining Counsel
Patent prosecution and litigation is a highly specialized field. In addition, patent litigation can often involve the highest financial stakes. Working with a competent and ethical lawyer is essential. In this segment the faculty will provide suggestions for performing due diligence on retaining counsel before accepting the case. They will also provide specific advice for avoiding the ethical pitfalls that can sometimes crop up when lawyers are under tremendous pressure to win. Questions & Answers.
12:00pm – 12:45pm LUNCH (Provided with Faculty)
12:45pm – 1:30pm How to Excel as a Patent Expert Witness During Direct Examination – Special Techniques
Effective expert witness direct testimony can be quite challenging. The expert will be called upon to explain technical concepts to a lay audience in a way that is both understandable and persuasive. In this segment you will learn special techniques to excel during direct testimony in patent litigation cases. Faculty will illustrate these direct examination best practices with demonstrations. Questions & Answers.
1:30pm – 2:30pm How to Excel as a Patent Expert Witness During Cross-Examination – Special Techniques
Given the stakes, you should expect opposing counsel to be very competent, extremely well prepared, and very aggressive. In this segment attendees will learn how to deal with trick and difficult questions in patent cases as well as how to recognize and defeat the specialized tactics opposing counsel may use against you during cross examination. Faculty will present the 20 questions patent experts must be able to answer to succeed. The faculty will illustrate cross-examination best practices. Questions & Answers.