"Designing Around" Valid U.S. Patents
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
PRG has offered "Designing Around Valid U.S. Patents" course for 15 years, and it remains one of the most popular course offerings.
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 covering (1) literal infringement, (2) infringement under the doctrine of equivalents, (3) infringement of means plus function claim elements, and (4) prosecution history estoppel, are provided. 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.
Actual Demonstrations
To ensure no confusion on anyone’s part in this exercise, the faculty and students will go through several claim construction exercises and compare their conclusions with the Federal Circuit’s claim construction in actual cases. A mock design around exercise will also be presented. The demonstration considers client, marketing and engineering perspectives, in addition to legal analysis. To prepare for the exercises and demonstration, the course faculty will illustrate the accused structures relative to the claims in the landmark, no-infringement -by-claim construction cases of C.R. Bard v. U.S. Surgical Corp. and Nystrom, the no-infringement-by-equivalents cases of Slimfold, Laitram and London, and the super landmark, no-equivalents-at-all-after prosecution-history-estoppel case of Festo IX. These and other cases are presented in literal, graphic clarity.
How to Draft Infringement and Noninfringement Opinions
The effect of Seagate, the AIA and Bard on findings of willfulness, enhanced damages, and fee awards will be discussed in detail. The faculty also explains the substance and form opinions should have to maximize their effectiveness in litigation.
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.