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 Registration

2:00

3:00

3:30

4:00

4:30

6:00

7:00

7:30 8:20

8:30

9:00

9:30 9:45

11:15

11 :45

Afternoon Program Moderator Ed Fein (NASA) Point-Counterpoint: Tom Arnold and Charles De Arbitration vs. Litigation La Garza (Arnold, White &

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 Equivalents (Conle)\ Rose & Tayan); Don

Dunner (Finnegan, Henderson et al.); Bryan Medlock (Richard, Medlock & Andrews); Steve Koch (Exxon Production Research)

Cocktail Reception, San Luis Hotel Dinner (On Your Own)

FRIDAY, SEYfEMBER 29, 1995 Continental Breakfast Opening Remarks Mike Sutton

(Program Chainnan)

Morning Program Moderator:

NAFfA/GATT: Impact on Corporations and Their Handling of IP Rights Trademark Licensing & Product Liability Coffee Break Panel: Utility Guidelines: Section 101

Filing PCT Applications in the USA-A European Perspective Reception and Luncheon

John Norris (Arnold, White & Durkee) Carl Rowold (Baker Hughes Inc.)

Paul Krieger (Pravel, Hewitt, Kimball & Krieger)

Panel Co-Moderators: Jim Burdett (Compaq Computer Corp.) and Denise Kettelberger (Merchant & Gould); Mike Flemming (PTO); Keith Stephens (Taligent); Rene Tegtmeyer (Fish & Richardson) Nigel Frankland (Forrester Ketley & Co.)

Speaker: Chief Judge Glenn Archer (US. Court of Appeals for the Federal Circuit)

Afternoon Program Moderator: Sharon Israel (Fish &

Richardson) 1: 15 DOJ Activities/Enforcement Chris Kelly (U.S. Department

Actions of Justice)

I :45 Strategic Use of Opinions in Litigation

Richard Stanley (Arnold, White & Durkee)

2:15

2:45 3:00

3:30

4:00

6:00

7: 15 8: 10

8:15

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

Evening Social (Dinner at Lnne Star Flight Museum)

Ken Barrow (Fish & Richardson)

Miles Alexander (Kilpatrick & Cody) Todd Volyn (Shell Oil Co.)

Panel Moderator: Prof. Paul Janicke (Univ. of Houston JPP); Judge Nancy Johnson; Judge Mary Milloy , Judge Marcia Crone

SATURDAY, SEYfEMBER 30, 1995 Continental Breakfast Announcements Mike Sutton

(Program Chairman)

Morning Program Moderator: 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)

9: 15 Coffee Break 9:30 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)

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 special-ized 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, Hous-ton) is co-founder of International Centers for Arbitration and a Fellow of the Chartered Insti-tute of Arbitrators, London. He is former pres-ident of AIPLA, LES, and the Houston Bar Association and former chair of the ABA Sec-tion 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, prose-cution, and licensing. He is an adjunct profes-sor 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 back-ground 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 repre-sented clients through trial and appeal to the Supreme Court. He is a former patent examin-er 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 Tex-as. Appointed in 1992, Judge Crone has presid-ed 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 prepar-ing a patent law primer for the federal judicia-ry.

MARC DELFLACHE Marc Delflache (Pravel, Hewitt, Kimball & Krieger; Houston) is involved in all phases of intellectual property litigation with an empha-sis on trademark, trade dress and trade secret litigation.

DON DUNNER Don Dunner (Finnegan, Henderson, Washing-ton) is one of the most prominent patent attor-neys in the United States today, having repre-sented 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 depart-ment. 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 Sec-tion of the State Bar of Texas; and is a member of the Advisory Board of the Intellectual Prop-erty 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 interna-tional 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 pros-ecution.

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 soft-ware as well as patent and trademark prosecu-tion.

DAVID HRICIK David Hricik (Baker & Botts, Houston) is in both IP and trial practice. He has handled numerous motions for disqualification of law-yers, and regularly advises lawyers on ethical issues. Since 1990 he has been adjunct profes-sor 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, prose-cution, and licensing. She is an adjunct profes-sor 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 depart-ment'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, soft-ware, 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 Hous-ton Law Center for many years. His practice is predominantly litigation in those and other IP areas.

• 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.

LAMAR MCCORKLE Lamar McCorkle is judge of the l 33rd Judicial District Court.

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

in 1992, she formerly practiced law in the areas of product liability, negligence, and profession-al liability.

JOHN NORRIS John Norris (Arnold, White & Durkee, Hous-ton) was the firm's board chairman 1990-93 and now is president elect of HIPLA. His prac-tice is in patent litigation.

RICHARD REDANO Richard Redano (Rosenblatt & Redano, Hous-ton), a former member of the HIPLA board of directors, has extensive litigation experience in IP cases, including issues relating to enforce-ability 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 (Arnold, 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 .

KEITH STEPHENS Keith Stephens (Taligent, Cupenino) is Direc-tor of Intellectual Property for Taligent. He chairs the copyright subcommittee of AIPLA's Electronic and Computer Law Committee.

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.

RENE TEGTMEYER Rene Tegtmeyer (Fish & Richardson, Washing-ton) is former Deputy Commissioner of Patents & Trademarks. He is a frequent speaker on fundamental issues facing the Office and the profession.

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 com-puter-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 com-mercial, business, and construction litigation. Long active for the improvement of the profes-sion, 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, Coordina-tors.

Committee Members: 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 Par-tridge, 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, Treasur-er, 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 WRITTEN MATERIALS

Fees: Extensive articles on the presentations will be bound as a Program book and included in the registration fee and handed out during reg-istration.

$275.00 ................ .. .................. HIPLA members up to September 1 $325.00 ............................ Non-HIPLA members up to September I $350.00 ...................................... HIPLA members after September I

HOTEL ACCOMMODATIONS $400.00 .............................. Non-HIPLA member after September 1 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, University of Houston Law Center• Houston, TX 77204-6371

r----------------------------------------------------------------------------------------------------, Please make check payable to HIPLA or use o VISA o MasterCard Card #: Exp. Date:

NAME

AFFILIATION

ADDRESS

CITY/STATE/ZIP

PHONE NUMBER

SPOUSE/PARTNER NAME (If Attending)

.!,, 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)

IL. OTHER EXPENSES !CHECK ALL THAT APPLY! D Friday Lunch

$30 ea. x (#of reservations)= D Friday Spouse's Tour, includes lunch

$35 ea. x (# of reservations) = D Friday night Reception and Dinner

$45 ea. x (#of reservations) = o Golf Saturday Afternoon (24 person limit)

$60 ea. x (# of reservations) = Please indicate handicap ( ------~

D Tennis Saturday Afternoon $20 ea. x (#of reservations)=

AMOUNT

r----------------------------------------------------------------------------------------------------,

I

HOTEL REGISTRATION FORM 11 TH ANNUAL INSTITUTE ON INTELLECTUAL PROPERTY LAW

Mail Hotel Registration to: San Luis Hotel 5222 Seawall Blvd.,Galveston Island, Texas 77550 (800) 392-5937

Registrations Must Be Received By September 7, 1995

Single or Double: o $92 night (all have ocean view)

D VISA D American Express D MasterCard D Other _______ Card Number: __________ Exp. Date: __ _

Cardholder's Name:-------------------------- ---------------Arrival Date: __________________ Departure Date:-------------------

Name: _ _______ ____________ Roommate: _ ___________________ _

l Company/Organization: _______________ ____________ .Phone: ----------' 1 Address: City/State/Zip: _ __________________ _ l ANY CANCELLATIONS MUST BE RECEIVED AT LEAST 24 HRS PRIOR TO ARRIVAL DATE l A// requests subject to availability. Reservations will be considered tentative unless guaranteed by first night's deposit or major credit card. L----------------------------------------------------------------------------------------------------

11 TH 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 Leg-islation in Texas State Courts; (4) IP Implications on the Information Superhighway.

• Thursday afternoon Panel: Doctrine of Equivalents FRIDAY & 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 • 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

• 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 imag-es 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: 800-392-5937; Houston 713-280-3924.

NON-PROFIT ORG. U.S. POSTAGE

PAID HOUSTON, TEXAS PERMIT NO. 7648