ELEVENTH ANNUAL INSTITUTE ON
INTELLECTUAL PROPERTY LAW
San Luis Hotel Galveston, Texas
September 28-30, 1995
Co-Sponsored by:
Houston Intellectual Property
Law Association
University of Houston Law Center
Intellectual Property Program
Generously Underwritten by:
Grant Thornton
KPMG Peat Marwick
Peterson Consulting
PROGRAM HIGHLICHTS
Chief Judge Glenn Archer of the Federal Circuit
Panel of Federal Magistrates on
Management of Complex Litigation Today
Panel of Texas Judges on
Intellectual Property in State Court
Author Ed Cavazos on
Implications of the lnfonnation Superhighway
Don Dunner, Bryan Medlock, and Steve Koch on
The Future of the Doctrine of Equivalents
11 TH ANNuAL INSTITUTE ON INTELLECTUAL PROPERTY LAW
San Luis Hotel, Galveston, Texas· Sept. 28 - 30, 1995
PROGRAM
THURSDAY, SEYfEMBER 28, 1995
1:30
2:00
3:00
3:30
4:00
4:30
6:00
7:00
7:30
8:20
I:45
Strategic Use of Opinions
in Litigation
Richard Stanley (Arnold, White
& Durkee)
2:15
Conception, Contribution,
Collaboration: the 3 C's
of Joint Inventor
Challenges
Coffee Break
Dilution and Third
Party Uses
Practical Solutions to
Source Code Licensing
Panel: Federal Magistrate:
IP Litigation Under
the New Rules
Ken Barrow (Fish &
Richardson)
Registration
Afternoon Program
Moderator
Ed Fein (NASA)
Point-Counterpoint:
Tom Arnold and Charles De
La Garza (Arnold, White &
Arbitration vs. Litigation
Durkee)
Enforcement and Structure
Richard Redano (Rosenblatt
of Settlement Agreements
& Redano)
Tort Reform Legislation
Lynne Liberato (Haynes &
in the Texas State Courts
Boone)
IP Implications on the
Ed Cavazos (Andrews & Kurth)
Information Superhighway
Panel: Doctrine of
Panel Moderator: Ned Conley
(Conle)\ Rose & Tayan); Don
Equivalents
Dunner (Finnegan, Henderson et
al.); Bryan Medlock (Richard,
Medlock & Andrews); Steve
Koch (Exxon Production
Research)
Cocktail Reception, San Luis
Hotel
Dinner (On Your Own)
2:45
3:00
3:30
4:00
6:00
7: 15
8: 10
FRIDAY, SEYfEMBER 29, 1995
Continental Breakfast
Opening Remarks
Mike Sutton
(Program Chainnan)
8:30
9:00
9:30
9:45
11:15
11:45
Afternoon Program
Sharon Israel (Fish &
Richardson)
DOJ Activities/Enforcement
Chris Kelly (U.S. Department
Actions
of Justice)
Moderator:
1:15
Panel Moderator: Prof. Paul
Janicke (Univ. of Houston JPP);
Judge Nancy Johnson; Judge
Mary Milloy , Judge Marcia
Crone
Evening Social
(Dinner at Lnne Star Flight
Museum)
SATURDAY, SEYfEMBER 30, 1995
Continental Breakfast
Announcements
Mike Sutton
(Program Chairman)
Morning Program
Marc DelFlache (Pravel,
Hewitt, Kimball & Krieger)
Ethics Vignettes: Ethics
David Hricik (Baker & Botts);
and the Practice of
Gregory Beaves; Mark Gilbreth
Intellectual Property Law
(Gilbreth & Adler);Sarah
Harris(System One Co.);Denise
Kettelberger (Merchant &
Gould)
Coffee Break
Panel: Litigating
Moderator: Paul Van Slyke
Proprietary Rights in
(Pravel, Hewitt, Kimball &
State Court
Krieger); Greg Abbott (/29th
Judicial District Court);
Clarence Eriksen (Arnold, White
& Durrkee); John Feather
(Vaden, Eickenroht, Thompson
& Feather); Lamar McCorkle
(133rd Judicial District
Court);Sharolyn Wood (127th
Judicial District Court)
Moderator:
8:15
Morning Program
John Norris (Arnold, White &
Moderator:
Durkee)
Carl Rowold (Baker Hughes
NAFfA/GATT: Impact on
Corporations and
Inc.)
Their Handling of IP
Rights
Trademark Licensing &
Paul Krieger (Pravel, Hewitt,
Kimball & Krieger)
Product Liability
Coffee Break
Panel Co-Moderators: Jim
Panel: Utility Guidelines:
Burdett (Compaq Computer
Section 101
Corp.) and Denise Kettelberger
(Merchant & Gould); Mike
Flemming (PTO); Keith
Stephens (Taligent);
Rene Tegtmeyer (Fish &
Richardson)
Filing PCT Applications
Nigel Frankland (Forrester
in the USA-A
Ketley & Co.)
European Perspective
Speaker: Chief Judge Glenn
Reception and Luncheon
Archer
(US. Court ofAppeals for
the Federal Circuit)
Miles Alexander (Kilpatrick &
Cody)
Todd Volyn (Shell Oil Co.)
9: 15
9:30
FRIDAY MORNING
Spouse Activities: Call Sherry Sutton for details (713-743-2180)
SATURDAY AFTERNOON
Golf: Call Jim Riley, Pravel, Hewitt, et al for details (713-850-0909)
Tennis: Call Jennifer Sickler, Jenkens & Gilchrist for details (713-951-3300)
BACKGROUND OF PARTICIPANTS
GREG ABBOTT
Greg Abbott is judge of the !29th Judicial
District Court, where he has served since 1992.
Prior to election, his private practice specialized in tort and employment litigation. He has
been voted Most Outstanding State Judge in
Harris County by the Houston Bar Association
for 1995 and 1993.
MILES ALEXANDER
Miles Alexander (Kilpatrick & Cody, Atlanta)
is his firm's senior IP partner. He is a former
editor of the Trademark Reporter and an expert
in trademark infringement and dilution Jaw.
GLENN ARCHER
Glenn Archer is Chief Judge of the U.S. Court
of Appeals for the Federal Circuit. Appointed
to the court in 1986, he was formerly Assistant
Attorney General for the Tax Division, and
assumed the position of Chief Judge of the
Federal Circuit in 1994.
TOM ARNOLD
Tom Arnold (Arnold, White & Durkee, Houston) is co-founder of International Centers for
Arbitration and a Fellow of the Chartered Institute of Arbitrators, London. He is former president of AIPLA, LES, and the Houston Bar
Association and former chair of the ABA Section of IP Law.
KEN BARROW
Ken Barrow (Fish & Richardson, Houston),
formerly law clerk to Judge Alan Lourie of the
Federal Circuit, is engaged in litigation, prosecution, and licensing. He is an adjunct professor at the University of Houston Law Center.
GREGORY DEAVES
Gregory Beaves served one year as Briefing
Attorney to Judge Lee Duggan, Jr., Justice of
Texas' First Court of Appeals. He has a background in materials science and engineering
design.
JIM BURDETT
Jim Burdett is Director of worldwide patent
development for Compaq (Houston), where his
commission is to protect the company's R&D
investment by patents.
ED CAVAZOS
Ed Cavazos (Andrew & Kurth, Houston) is the
noted author of Cyberspace and the Law
(MIT Press 1994). He practices network Jaw.
NED CONLEY
Ned Conley (Conley, Rose & Tayon, Houston)
has been lead counsel in a number of national-
ly publicized patent cases, where he has represented clients through trial and appeal to the
Supreme Court. He is a former patent examiner and is the author of many published articles
on patent law topics.
MARCIA CRONE
Marcia Crone is a Magistrate Judge of the U.S.
District Court for the Southern District of Texas. Appointed in 1992, Judge Crone has presided over a number of major IP cases.
CHARLES DE LA GARZA
Charles De La Garza (Arnold, White & Durkee,
Houston) emphasizes jury trials in his practice.
He is the current chairman of the State Bar IP
Section and heads an ABA committee preparing a patent law primer for the federal judiciary.
MARC DELFLACHE
Marc Delflache (Pravel, Hewitt, Kimball &
Krieger; Houston) is involved in all phases of
intellectual property litigation with an emphasis on trademark, trade dress and trade secret
litigation.
DON DUNNER
Don Dunner (Finnegan, Henderson, Washington) is one of the most prominent patent attorneys in the United States today, having represented more clients before the Federal Circuit
appeals than any other lawyer. He is former
chairman of the court's rules committee and
former president of AIPLA.
CLARENCE ERIKSEN
Clarence Eriksen (A rnold, White & Durkee,
Houston) litigates IP cases of all types and g
cases involving covenants not to compete. He
is the editor of Employee Noncompetition Law,
which has been cited by the Texas Supreme
Court.
JOHN FEATHER
John Feather (Vaden, Eickenroht, Thompson &
Feather) is head of the firm's litigation department. He is a trial specialist of wide experience
in federal and state courts.
ED FEIN
Ed Fein is Patent Counsel of the Johnson Space
Center. He is a past president of the HIPLA; a
past chair of the Intellectual Property Law Section of the State Bar of Texas; and is a member
of the Advisory Board of the Intellectual Property Law Program, University of Houston Law
Center.
MIKE FLEMMING
Mike Flemming is a Patent Law Judge to the
Patent and Trademark Office. A former PTO
supervisory primary examiner, he has been at
the forefront in addressing computer-software
patentability issues.
NIGEL FRANKLAND
Nigel Frankland (Forrester & Boehmert,
Munich) is a practitioner in the European Patent
Office. He is also a partner in Forrester &
Ketley, London chartered patent and trademark
attorneys. In Munich he handles the international and regional phases of International
Applications at the EPO.
MARK GILBRETH
Mark Gilbreth's (Gilbreth & Adler) JO years of
intellectual property experience include both
corporate and private practice. His practice is
devoted largely to patent preparation and prosecution.
SARAH HARRIS
Sarah Harris (System One Co.. Houston), a
graduate of the University of Houston Law
Center, is J.P. Counsel of System One. Her
work involves international licensing of software as well as patent and trademark prosecution.
DAVID HRICIK
David Hricik (Baker & Botts, Houston) is in
both IP and trial practice. He has handled
numerous motions for disqualification of lawyers, and regularly advises lawyers on ethical
issues. Since 1990 he has been adjunct professor of law at the University of Houston Law
Center, teaching legal writing.
SHARON ISRAEL
Sharon Israel (Fish & Richardson, Houston),
formerly law clerk to Judge Alan Lourie of the
Federal Circuit, is engaged in litigation, prosecution, and licensing. She is an adjunct professor of law at the University of Houston Law
Center.
PAUL JANICKE
Paul Janicke is Professor and Co-Director, with
Prof. Craig Joyce, of the IP Program at the
University of Houston Law Center. He was
until 1992 a member of Arnold, White &
Durkee, with a practice predominantly in patent
litigation.
NANCY JOHNSON
Nancy Johnson is a Magistrate Judge of the
U.S. District Court for the Southern District of
Texas (Houston). Since her appointment in
1990 she has presided over several patent
cases.
BACKGROUND OF PARTICIPANTS (cont'd)
CHRIS KELLY
Chris Kelly (Dept. of Justice, Washington) is
Deputy Assistant Attorney General in the
Antitrust Division and with Assistant Attorney
General Anne Bingaman is one of the department's principal spokespersons on antitrust
issues affecting intellectual property law.
DENISE KEITELBERGER
Dr. Denise Kettelberger (Merchant & Gould,
Minneapolis) has a practice in the chemical and
biotechnology areas, including pharmaceutical
and medical devices. Prior to moving to
Minneapolis she was for many years an active
HIPLA member as well as a HIPLA board
member.
STEVE KOCH
Steve Koch (Exxon Production Research,
Houston) specializes in the preparation of
patent applications relating to geophysics, software, and offshore production systems. He has
backgrounds m mathematics, EE, and ocean
engineering.
PAUL KRIEGER
Paul Krieger (Pravel, Hewitt, Kimball &
Krieger, Houston) has taught trademark law
and trade secret law at the University of Houston Law Center for many years. His practice is
predominantly litigation in those and other IP
areas.
•
in 1992, she formerly practiced law in the areas
of product liability, negligence, and professional liability.
JOHN NORRIS
John Norris (A rnold, White & Durkee, Houston) was the firm's board chairman 1990-93
and now is president elect of HIPLA. His practice is in patent litigation.
RICHARD REDANO
Richard Redano (Rosenblatt & Redano, Houston), a former member of the HIPLA board of
directors, has extensive litigation experience in
IP cases, including issues relating to enforceability of settlement agreements.
CARL ROWOLD
Carl Rowold (Baker Hughes, Houston) is Chief
Patent Counsel for Baker Hughes. He has been
a patent examiner and private practitioner
before moving to the corporate world. He has
been a frequent bar association speaker on IP
topics.
RICHARD STANLEY
Richard Stanley (A rnold, White & Durkee,
Houston), a former Federal Circuit law clerk,
now emphasizes appellate practice in his IP
work. Last year he successfully argued the
Asgrow Seed case before the U.S. Supreme
Court.
LYNNE LIBERATO
Lynne Liberato (Haynes & Boone, Houston) is
the immediate past president of the Houston
Bar Association and is a director of the State
Bar of Texas. She is an appellate specialist and
is board certified in civil appellate law.
KEITH STEPHENS
Keith Stephens (Taligent, Cupenino) is Director of Intellectual Property for Taligent. He
chairs the copyright subcommittee of AIPLA's
Electronic and Computer Law Committee.
LAMAR MCCORKLE
Lamar McCorkle is judge of the l 33rd Judicial
District Court.
MIKE SUITON
Mike Sutton (Fish & Richardson, Houston) is
the senior partner in charge of the firm's
Houston office. His practice is in patent and
trademark litigation, in which he has extensive
experience.
BRYAN MEDLOCK
Bryan Medlock (Richards, Medlock &
Andrews, Dallas) is one of the foremost patent
litigators in the United States. He is one of the
first lawyers to try a significant number of
patent cases to juries. He is former chairman of
the ABA Litigation Section's committee on
MARY MILLOY
Mary Milloy is a Magistrate Judge of the U.S.
District Court for the Southern District of Texas
(Houston). Appointed to the bench
PAUL VAN SLYKE
Paul Van Slyke (Pravel, Hewill, Kimball &
Krieger, Houston) has extensive state court
experience, including acting as lead counsel in
over 25 temporary injunction hearings in trade
secret cases. He is the current President of
HIPLA.
TODDVOLYN
John Todd Volyn (Shell Oil Co., Houston) is
involved in chemical patent practice and computer-related copyright and licensing issues.
He is a former Research Fellow at Franklin
Pierce Law Center.
SHAROLYN WOOD
Sharolyn Wood is judge of the !27th Judicial
District Court, where she has served since
1985. She comes from a background of commercial, business, and construction litigation.
Long active for the improvement of the profession, she was selected as 1991 Trial Judge of
the Year by the Texas Association of Civil and
Appellate Specialists.
PROGRAM
ADMINISTRATION
Mike Sutton, Fish & Richardson, Chairman;
Prof. Paul Janicke, University of Houston
Law Center, Vice-Chairman ; Sharon Israel,
Fish & Richardson, Arrangements; Lorelei
Puebla and Kimberly Lopez, IPP, Coordinators.
Committee Members:
RENE TEGTMEYER
Rene Tegtmeyer (Fish & Richardson, Washington) is former Deputy Commissioner of Patents
& Trademarks. He is a frequent speaker on
fundamental issues facing the Office and the
profession.
Gordon Arnold, Doug Baldwin, Ron Bliss,
Meg Boulware, Louis Brucculeri, James
Burdett, Sal Casamassima, Steven Christian,
David Clonts, Ned Conley, Tim Cook, Charles
De La Garza, Marc Delflache, Ed Fein, Valerie
Friedreich, Jack Goldstein, Wayne Harding,
Sarah Harris, Loren Helmreich, Les Hewitt,
David Hricik, Denise Kettleberger, Steven
Koch, Glenn Korfhage, Sally McAttee, Steven
McDaniel, Otto Meyer, John Norris, Scott Partridge, Richard Redano, Jim Repass, Carl
Rowold, Bill Slusser, Randy Smith, Gene
Spears, Richard Stanley, Ben Tobar, Alan
Thiele, Karen Tripp, Paul Van Slyke, Denise
Wolfs
Houston Intellectual Property Law Association: Paul Van Slyke, President, John Norris, President-Elect, Mark Gilbreth, Secretary, Mike Heim, Treasurer, Meg Boulware, Immediate Past President.
Intellectual Property Law Program of the University of Houston Law Center: Prof. Paul Janicke and Prof. Craig Joyce, Co-Directors.
REGISTRATION INFORMATION
REGISTER IN ADVANCE
Fees:
$275.00 ................ ....................HIPLA members up to September
$325.00 ............................ Non-HIPLA members up to September
$350.00 ...................................... HIPLA members after September
$400.00 .............................. Non-HIPLA member after September
WRITTEN MATERIALS
Extensive articles on the presentations will be bound as a Program
book and included in the registration fee and handed out during registration.
1
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HOTEL ACCOMMODATIONS
You must communicate directly with the San Luis Hotel in order to
reserve a room. A registration form is included in this brochure
which should be completed and mailed to the San Luis Hotel. The
deadline for making your reservation is September 15, 1995. After
this date, reservations are made on a space available basis only.
Telephone Number is (800) 392-5937.
Refunds will be granted only if they are requested in writing and
postmarked no later than September 7, 1995. If you do not attend
the program and do not request a refund, you will be mailed the
written materials.
QUESTIONS?
If you have any questions about the Program, please call Lorelei
Puebla of UHIPP, at (713) 743-2180.
REGISTRATION FORM
INSTITUTE ON INTELLECTUAL PROPERTY LAW• SEPTEMBER
28 - 30, 1995
San Luis Hotel, Galveston, Texas
MAIL REGISTRATION FORM or PROGRAM BOOK REQUEST TO:
Lorelei Puebla, Uni versity of Houston Law Center• Houston, TX 77204-6371
r----------------------------------------------------------------------------------------------------,
Please make check payable to HIPLA or use
o VISA o MasterCard Card #:
Exp. Date:
.!,, REGISTRATION FEES !CHECK ONEl
D $275 HIPLA members up to Sept. 1 (book incl.)
o $325 Non-HIPLA members up to Sept. 1 (book incl.)
D $350 HIPLA members after Sept. 1 (book incl.)
D $400 Non-HIPLA members after Sept. 1 (book incl.)
o $ 35 Limited Student Enrollment (lunch not incl.)
o $ 75 Program Book only (will not attend seminar)
NAME
AFFILIATION
AMOUNT
IL. OTHER EXPENSES !CHECK ALL THAT APPLY!
D Friday Lunch
ADDRESS
$30 ea. x
(#of reservations)=
D Friday Spouse's Tour, includes lunch
CITY/STATE/ZIP
$35 ea. x
(# of reservations) =
D Friday night Reception and Dinner
PHONE NUMBER
(#of reservations) =
$45 ea. x
Golf Saturday Afternoon (24 person limit)
(# of reservations) =
$60 ea. x
Please indicate handicap ( ------~
D Tennis Saturday Afternoon
$20 ea. x
(#of reservations)=
o
SPOUSE/PARTNER NAME (If Attending)
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HOTEL REGISTRATION FORM
11 TH ANNUAL I NSTITUTE ON
INTELLECTUAL PROPERTY LAW
Registrations Must Be Received By September 7, 1995
Mail Hotel Registration to:
San Luis Hotel
5222 Seawall Blvd.,Galveston Island, Texas 77550
(800) 392-5937
D VISA
I
D American Express
D MasterCard
Single or Double: o $92 night (all have ocean view)
D Other _ _ _____Card Number: _ _ _ _ _ _ _ ___Exp. Date: _ __
Cardholder's Name: - - - - - - - - - - - - - - - - - - - - - - - - -- - - - - -- -- - - - - - -Arrival Date: _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _Departure Date: - -- - - - -- -- - - - - -- - - Name: _ _ __ _ _ __ _ _ _ _ _ _ _ _ _ _ _ _Roommate:_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __ _ _ __
l
Company/Organization: _ _ _ _ _ _ _ _ __ _ _ _ __ _ __ _ _ _ _ _ ____.Phone: - - - - - -- - - -
'
Address:
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City/State/Zip:_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __
ANY CANCELLATIONS MUST BE RECEIVED AT LEAST 24 HRS PRIOR TO ARRIVAL DATE
A// requests subject to availability. Reservations will be considered tentative unless guaranteed by first night's deposit or major credit card.
L----------------------------------------------------------------------------------------------------
11TH ANNUAL INSTITUTE ON INTELLECTUAL PROPERTY LAW
San Luis Hotel, Galveston, Texas• September 28 - 30, 1995
Summary of the Program
Casual attire is encouraged for all aspects of the Program.
•
THURSDAY SESSIONS
•
•
Thursday afternoon sessions will include: (I) Arbitration vs. Litigation; (2)
Enforcement and Structure of Settlement Agreements; (3) Tort Reform Legislation in Texas State Courts; (4) IP Implications on the Information
Superhighway.
Thursday afternoon Panel: Doctrine of Equivalents
FRIDAY
•
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& SATURDAY SESSIONS
Eight lectures on topics of current IP interest including Chris Kelly on
Department of Justice Activities/Enforcement Actions
Special Features:
(I ) Panel on Utility Guidelines Section IOI.
(2) Federal Magistrate Panel on IP Litigation under the new rules.
(3) Panel on Proprietary Rights Litigation in State Court.
(4) Lunch with Chief Judge Glenn Archer of the Federal Circuit.
RECREATIONAL AND SOCIAL ACTIVITIES
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THURSDAY COCKTAIL RECEPTION: Cocktails and soft drinks will
be served at the San Luis Hotel on Thursday evening.
FRIDAY DINNER AT LONE STAR FLIGHT MUSEUM: Take a trip
back in time as buses shuttle our program registrants and their guests to the
intriguing Lone Star Flight Museum, one of the world's finest collections of
1940s' aircraft. We will enjoy dinner nestled among the bombers, fighters.
and other vintage aircraft. A cash bar will be available.
Lorelei Puebla
University of Houston Law Center
Houston, Texas 77204
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SPOUSE AND GUEST TRIP TO MOODY GARDENS: Begins Friday
morning at the 3-D IMAX Theater (one of only three in the world). The
award winning film The lAst Buffalo becomes incredibly realistic as images seem to leap from a six-story tall screen. Then experience the rain forests
of Africa, Asia, and south America in the ten-story-tall glass pyramid. After
lunch at the waterfront Garden Restaruant, the group will be returned to the
San Luis Hotel. Those wishing to shop will be deposited at the Strand, but
must arrange their own transportation back to the hotel. Total Cost: $35.00.
SATURDAY AFTERNOON RECREATION: Golf and Tennis will be
available Saturday afternoon following the program sessions for anyone
interested in playing.
MINIMuM CONTINUING LEGAL EDUCATION
This program is pending approval for Minimum Continuing Legal Education
credit by the State Bar of Texas. The Friday and Saturday portions will total
10.0 hours with an additional 3.0 hours for the Thursday sessions.
LOCATION
The San Luis Hotel is located in Galveston, Texas, on Seawall Boulevard.
From Houston, take 1-45 South to the Seawall. Proceed south (tum right) on
Seawall Boulevard to 5222 Seawall Boulevard. Telephone number: 800-3925937; Houston 713-280-3924.
NON-PROFIT ORG.
U.S. POSTAGE
PAID
HOUSTON, TEXAS
PERMIT NO. 7648