Avoiding Patent Litigation Pitfalls and Attorney’s Fees Under 35 U.S.C. § 285

Why Attend?

• Gain an understanding of how courts currently apply the attorney’s fees provision of 35 U.S.C. § 285.
• Discover the weaknesses in a party’s prefiling investigation that courts have found warranted attorney’s fees.
• Learn how a party’s positions after a court’s Markman order made their conduct “exceptional” under Section 285.
• Obtain a working knowledge of the litigation conduct courts have recently found warranted awarding attorney’s fees.

The Patent Act allows district courts to award attorney’s fees in “exceptional cases” under 35 U.S.C. § 285. An “exceptional case” is “simply” one that stands out from others due to the strength of a party’s positions or the way the case was pursed, according to the Supreme Court in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 572 U.S. 545, 554 (2014). But there is “no precise rule or formula” to make this determination. Id. This program will examine several recent court decisions awarding attorney’s fees and will highlight pitfalls to avoid. Key topics covered include Rule 11, prefiling investigations, how to navigate a court’s Markman order, and conduct that courts found strayed beyond vigorously representing a client.

Registration Deadlines:

Cancellation Policy: Cancellation/transfer requests will be honored until 5:00 p.m. the day preceding the seminar. You will, however, be charged $40 if you cancel or transfer your registration to a different seminar after the link to the materials has been e-mailed by Virginia CLE^®.

Full refunds or transfers are available up to two days after a webcast in the unlikely event that you experience technical difficulties.

Dietary Restrictions: If you have dietary restrictions and are attending the seminar in person, please email deanna.mcglothlin@vacle.org.

Inclement Weather Policy and Updates

MCLE Credit Caveat: The MCLE Board measures credits by the time you spend in attendance. If you enter a seminar late or leave it early, or both, you must reflect those adjustments accurately in the credits you report on your credit reporting form. A code will be given at the end of the seminar, which must be written on your MCLE form.

Private recording of this program is prohibited.

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Course Schedule

• Q&A will be handled via chat room for Webcast attendees.
• Q&A will be handled via e-mail for telephone seminar attendees.

Faculty

Robert A. Hall, Mei & Mark LLP / Washington, DC

P. Andrew Riley, Mei & Mark LLP / Washington, DC

About the Speakers

Robert A. Hall, Mei & Mark LLP / Washington, DC

Robert A. Hall is a registered patent attorney and patent litigator with a particular focus on investigations before the U.S. International Trade Commission (ITC). Mr. Hall’s patent litigation background involves various areas of computer science and electrical engineering, including 3G and 4G wireless communications, computer architecture, and software. Mr. Hall served for more than four years as an attorney-advisor (and for one year as a judicial intern) to former Chief Administrative Law Judge Paul J. Luckern at the ITC. He has taught legal drafting as an adjunct professor at George Mason University School of Law. Prior to entering the legal field, Mr. Hall worked for more than ten years in information technology and software development.

P. Andrew Riley, Mei & Mark LLP / Washington, DC

Andrew Riley is a first-chair trial attorney with experience litigating patents, trade secrets, trademarks, and commercial disputes in both federal and state courts, focusing on complex disputes before U.S. district courts, the U.S. International Trade Commission (ITC), the U.S. Court of Appeals for the Federal Circuit, and the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Mr. Riley has acted as lead counsel and primary backup counsel in more than 25 inter partes review (IPR) and ex parte reexamination proceedings. He has also acted as lead counsel and ITC local counsel in many ITC Section 337 Investigations. Starting in 2014, Mr. Riley became an adjunct associate professor at American University Washington College of Law, where he continues to teach a course on intellectual property practice at the ITC.