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Past CLE events, and related materials

Patent Strategies in Europe in View of UPC/BREXIT by Dr. Heinz Goddar, Partner with Boehmert & Boehmert

Patent Strategies in Europe in View of BREXIT and Protection of Software-related Inventions under European Laws & Practice given by Dr. Heinz Goddar, Partner with Boehmert & Boehmert

 Currently, there is no European patent that would be centrally enforceable. However, the European patent with unitary effect (EPUE) or the “Unitary Patent” is in advanced stage of adoption in participating member states of the European Union. The EU Unitary Patent System will give possibility to obtain a central EU Unitary Patent which will be centrally enforceable. What is the EU Unitary Patent System and when will the EU Patent Package is in force? In addition, how the software-related inventions are protected in Europe?

This CLE will present two topics:

  1. Dr. Goddar will speak about the status of EU unitary patent system, structure of European patent court. Further Dr. Goddar will provide suggests/recommendationsfor patent filing/prosecution in Europe based on current EP patent situation.
  2. Dr. Goddar will speak about the patentability of computer implemented inventions at EPO and German and make recommendations for specification drafting for software-related inventions in Europe and Germany.

Dr. Heinz Goddar

Heinz Goddar, Prof., Dr., a German Patent Attorney and European Patent and Trademark Attorney, is a partner of Boehmert & Boehmert, with his office at Munich, Germany. Technical background (as well as PhD degree) in physics, with a focus on polymer physics. He teaches Patent and Licensing Law as an Honorary Professor at the University of Bremen, Germany, as a Lecturer at the Munich Intellectual Property Law Center (MIPLC), Munich, Germany, as a Visiting Professor at the University of Washington, Seattle, WA, U.S.A., and the National ChengChi University, Taipei, and as a Consultant Professor at the University of Huazhong, Wuhan, China. He is a member of the Advisory Board of the Tongji Global Intellectual Property Institute (TGIPI), Shanghai, China. Prof. Dr. Goddar is an Adjunct Professor and an Honorable Consultant in International Legal Services at the National Yunlin University of Science and Technology, Yunlin, Taiwan. He is also a Director at the Global Institute of Intellectual Property (GIIP), Delhi. He is a Past President of LES International and of LES Germany and has received the Gold Medal of LES International. In 2014 he has been inducted into the IP Hall of Fame.

Where: Kells Irish Pub, 112 SW 2nd Ave, Portland,  OR 97204
When: July 19th from 12:00-1:00 Cost: $30 w/ lunch; $18 w/o lunch
Registration: opens Fri. June 16, 2017. Just go to the Event Registration tab on OPLA’s website here => http://orpatlaw.org/ Registration at the door is $18 and does not include lunch. We will take checks made out to Oregon Patent Law Association or cash only.

19 07 2017 - Patent Strategies in Europe in View of BREXIT

19 07 2017 - Protection of Software-related Inventions

Price: $30.00

Date: July 19, 2017

Patent Enforcement and Trends in China by Dr. James Zhu, Ph.D. , Partner with JunHe LLP

Title:  Patent Enforcement and Trends in China
Speaker: Dr. James Zhu, Partner and the Head of IP Practice at JunHe LLP
Description: Effective on April 1, 2017, Chinese patent office (SIPO) will consider software-based computer methods (no longer non-patentable subject matter), post-filing data supplement, and certain flexibility in claim amendment during invalidation proceedings.  In light of these changes and in combination with real-life experience enforcing or defending IP rights for US companies in China, Dr. Zhu will discuss a variety of topics including:

  • the reality of patent enforcement in China
  • the underlining difference in patent litigations between the US and China that leads to frustration or misconceptions of US counsel and companies
  • the improving IP court system in China
  • the impact of the changing patent regulations in favor of patent holders
  • strategies for US companies to:
    • ease qualms about PRC patent litigation
    • leverage the difference between patent laws in the US and China
    • obtain enforceable IP rights to defend or enforce these rights against potential infringers or competitors (not necessarily just domestic China companies) in the world’s second largest marker

Dr. James J. Zhu, a patent partner at JunHe LLP, is the head of intellectual property practice and the managing partner in the firm’s Silicon Valley office.  James' practice areas include patent litigation, procurement, opinion, strategies, technology licensing, primarily focusing on biopharmaceuticals, chemistry/materials, medical device, and computer/electronics.

James represents clients to obtain and enforce their patent rights in China.  For example, James helps clients to enforce or defend intellectual Property (IP) rights by leading litigation effort in China, procures PRC patent rights, provides strategic IP counselling for companies’ market entry into PRC, and conducts due diligence in investment and M&A to evaluate and mitigate IP risks.

James spent eight years at Perkin Coie LLP, became a partner in Perkins Coie's Los Angeles Office in 2007, and the Managing Partner of Perkins Coie's Beijing Office in 2008.  Prior to his legal career, James was a co-founder & General Counsel of GanTech International, a Silicon Valley venture-backed start-up.

James is a frequent author and speaker in the field. James was the Chairman of the Board of BayHelix Group. The BusinessWeek elected James as one of most influential "sea turtles" (US returnees) in the Sino-American community.  James graduated from Fudan University, Shanghai. Within a total of seven academic years, James earned a Ph.D. degree from the California Institute of Technology and J.D. & MBA from Columbia University.

20170504 ChinaPatent

Price: $30.00

Date: May 4, 2017

"Do's and Don'ts at the PTAB"

On November 17, 2016, the Oregon Patent Law Organization (OPLA) will hold its Annual Meeting. In addition to conducting OPLA business (voting on officers for 2017), OPLA will also welcome two PTAB judges, Frances Ippolito and Terrence McMillin. Judge Ippolito and McMillin will give a presentation titled:
Do's and Don'ts at the PTAB


Frances Ippolito, Esquire was appointed as an Administrative Patent Judge on September 23, 2013, to decide appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office, and to preside over trials to determine patentability of claims in patents subsequent to issuance. The aforementioned Judge Ippolito earned her law degree from the University of California Davis School of Law; she also earned a Teaching Certificate in Secondary Education from Harvard Graduate School of Education and a Bachelor of Arts degree in Chemistry from Harvard University.
Judge Ippolito practiced with the law firm Knobbe Martens Olson & Bear LLP and, most recently, the law firm Shay Glenn LLP.

Terrence W. McMillin, Esquire was appointed as an Administrative Patent Judge on June 16, 2014, to decide appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office, and to preside over trials to determine patentability of claims in patents subsequent to issuance. The aforementioned Judge Terrence McMillin earned his law degree from DePaul University College of Law and a Bachelor of Science degree in Biology from the University of Illinois.

Judge McMillin practiced law at the firms Bell, Boyd & Lloyd; Gerstman, Ellis & McMillin, LLP; and Marshall, O’Toole, Gerstein, Murray & Borun. He also served as the Executive Director of the Intellectual Property Department at International Game Technology. He most recently practiced with the law firm Klarquist Sparkman LLP

The OPLA Board will also conduct its year-end officer and Board elections. Usman Mughal will become president in 2017, and the Board plans to make the following nominations for 2017:

• President-Elect – Michelle Craig
• Secretary – Scott Gilbert
• Treasurer / First Board Member – Todd Siegel
• Second Board Member – Tom Vesbit
• Third Board Member – Wes Nicholson
• Immediate Past-President – Charlie Moore


Price: $18.00

Date: November 17, 2016

2016 Salishan Patent Law Conference

Salishan Patent Law Conference

April 15th – 17th 2016 at the Salishan Spa and Golf Resort (www.salishan.com)


Sponsored by:

Klarquist Sparkman



2016 Speakers (topics forthcoming):

Salishan Year in Review (April 2016)
Baluch - Patent Reform Beyond the Basics

Bencivengo Updated Salishan Presentation 041316

Drange - In-House IP Litigation Management

Herzfeld - Enhancing The Possibilities Of Success For The Patent Owner in AIA Post-Grant Proceedings

O'Donnell - The GC's Role in IP Portfolio Management

Russell - Conflicts of Interest in Patent Law

We are applying for 6 general CLE credits, and 1 ethics CLE credit.

This conference is special for two reasons.  The size of the group is intimate in comparison to intellectual property law conferences held in large metropolitan areas by large sponsoring organizations.  We expect attendance of about 80 attorneys from Oregon and around the Northwest.  The location of the conference at Salishan on the beautiful Oregon coast is difficult to match.  Salishan is a first class, nationally acclaimed resort.  Although Salishan is relatively small in comparison to many conference sites, its charm and rustic elegance are unsurpassed. 


Price: $700.00

Date: April 15, 2016

Implementing a Corporate Strategy for Intellectual Property

Implementing a Corporate Strategy for Intellectual Property:  What To Do In-House and What You Want From Outside Counsel.

An in-house perspective on building and managing patents and other IP, this CLE will cover such topics as:

  • Considerations in developing your IP strategy.
  • Building and communicating your IP strategy, both internally and externally.
  • Implementing your IP strategy, including securing, leveraging, and enforcing patents and other forms of IP.
  • Dealing with changing legal landscapes.
  • The role(s) that outside counsel can play throughout the process.


Karna Nisewaner11Karna_Nisewaner

Karna is the Associate General Counsel for Intellectual Property at Cadence Design Systems, Inc. and legal business partner to the Verification business unit. Karna leads a team of patent attorneys and paralegals responsible for all of Cadence's patent portfolio, including building a strategic portfolio plan for the executive team. She also manages the legal end of Cadence's open source registration system and anti-piracy program.  In her career, she has created open source processes and systems, created IP Due Diligence processes for M&A, advised on complex IP agreements, drafted IP asset agreements, along with drafting and prosecuting many patent applications.  Karna was chair of the ACC's National Intellectual Property Committee from 2013-2015. Karna received an engineering degree from Princeton University and her law degree from UCLA School of Law and is a registered patent attorney.

Implementing a Corporate Strategy for Intellectual Property Presentation





Price: $20.00

Date: December 8, 2015

The Cleaners at the Ace Hotel
403 SW 10th Avenue
at Stark Street
Portland, OR
97204 Map and Directions

Available Spaces: Unlimited

Tips For Patent Prosecution and Litigation Based on Recent Decisions

Patent Defenses Klarquist Update and Tips

This CLE will present:

  1. A buffet of practical tips for patent prosecutors, counselors, and litigators, based on recent Supreme Court and Federal Circuit decisions.  Examples include: treasures defendants look for in specifications; 10 ways to diversify claim sets; 10 uses for a prior art reference; what types of clearance opinions remain useful at trial; blocking claim backdating; and doing more in Markman.
  2. Predictions for future developments on “functional claiming” and claim “indefiniteness,” as well as some mystery defenses.

This CLE will not survey recent cases or address Alice.

John D. Vandenbergjdv

John is a partner of Klarquist Sparkman, LLP and has been litigating patents around the country. He currently is representing Amazon.com, American Express, Mentor Graphics, Microsoft, and Nautilus, among others, in patent litigations in California, Delaware, Massachusetts, Texas, and the Patent Trial and Appeal Board.

Mr. Vandenberg successfully argued before the Supreme Court of the United States in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, for rejection of the Federal Circuit’s “insolubly ambiguous” and “amenable to construction” test for enforcing the Patent Act’s mandate that patent claims “particularly point[] out and distinctly claim[]” the patent’s invention.

Time: 12:00pm-1:00 pm

Price with Food: $30.00

Price without Food: $18.00

Price: $18.00

Date: October 1, 2015


Kells Irish Pub
112 SW 2nd Ave
Portland, OR
97204 Map and Directions

Post-Alice Landscape: A Litigators View on Alices Impact on Patent Litigation and Prosecution

Post Alice Landscape:  A Litigator's View Slides

The Supreme Court’s Alice decision on patent eligibility and subsequent Federal Circuit decisions applying that decision have had a significant impact on patent practice in the United States.  How has patent litigation changed since Alice?  Is there anything patent prosecutors can do in light Alice?  Are there other issues related to patent eligibility that are still unresolved?   This CLE covers what patent prosecutors, litigators, and in-house counsel should consider in view of Alice.

Matthew Bernstein

Perkins Coie - Matthew BernsteinMatthew is the managing partner for the San Diego office of Perkins Coie and is a partner in the firm's Patent Litigation group.  His practice focuses on patent litigation and patent trial work.  He has represented both plaintiffs and defendants extensively, in district courts throughout the country and before the International Trade Commission.  Matthew recently tried five patent jury cases in district court and a patent case at the ITC.


Price: $18.00

Date: July 14, 2015

Kell's Irish Pub
112 SW 2nd Ave
Portland, OR
97204 Map and Directions

Markman Hearings after Teva v. Sandoz: What Now?

Teva v Sandoz Presentation Slides


Many have touted the Supreme Court’s January decision in Teva v Sandoz as reversing 20 years of federal practice since Markman v. Westview.  What did Teva change?  Was the change as substantial as touted?  How have practices changed in the months since issuance?  This CLE covers what patent prosecutors, litigators, and in-house counsel should consider in view of Teva.

Imron T. Aly



Imron T. Aly serves as co-chair of Schiff Hardin's Pharmaceuticals and Biologics Patent Litigation Team. He focuses his practice in patent infringement and trade secret misappropriation litigation. He has litigated and managed patent infringement and trade secret matters for pharmaceuticals, medical implants and devices, DNA arrays, mechanical production assemblies, computer business methods and financial trading systems.

Price: $30.00

Date: April 23, 2015

The Cleaners at The Ace Hotel
1022 SW Stark St.
Portland, OR
97205 Map and Directions

Updates from the USPTO:

Updates from the USPTO Slides

Description:  Mr. Cabeca will speak about updates on patent operations, administrative trial proceedings, and important initiatives at the USPTO, including progress on the establishment of the West Coast office in the Silicon Valley.   

John Cabeca,
Director of the Silicon Valley USPTO
United States Patent and Trademark Office

Price: $35.00

Date: December 4, 2014

Prior Art Masterpieces: Key prior art in computer science

Prior-Art Masterpieces Slides

Description: Prior Art is central to patent litigation and finding the right piece of art in computer science can be a difficult assignment. In this course, Elysium Digital's experts identify several key pieces of prior art in computer science, review several case studies of the prior art in the computer software and electrical engineering patent space. The course also will educate the audience on best practices in conducting function- and system-oriented prior art searches in computer-patent matters. Elysium often conducts prior art search for clients and Christian is glad to be able to discuss the topic of prior art in this presentation.

Christian Hicks, President, Elysium Digital

Mr. Hicks has advised clients on more than 150 matters relating to intellectual property and computer forensics. He has testified as an expert in Federal Court, submitted expert reports and affidavits, and has been deposed in several cases. Before co-founding Elysium Digital, he worked as a consultant for the AT&T Consumer Lab, where he developed data mining techniques and researched Internet programs and protocols. He is co-inventor on two patents on systems for unlocking remote electronic data. Mr. Hicks graduated summa cum laude from Princeton University with an A.B. in Computer Science. While there, his academic research focused on artificial intelligence and earned him the Computer Science Senior Prize.

Price: $30.00

Date: February 11, 2014

112 Second Avenue
Portland, OR Map and Directions