A stellar panel of experts in patent law including Judge Whyte of the District Court of Northern California, Professor Don Chisum (Santa Clara), Professor Mark Lemley (Stanford), Mike Jacobs (Morrison & Foerster) and Doug Lumish (Weil, Gotschal) speak on the recent interest of the Supreme Court in patent cases. Eight cases are discussed including: Independent Ink v. Illinois Tool Works; Ebay v. MercExchange; Labcorp v. Metabolite; Medimmune v. Genentech; KSR v. Teleflex; Federal Trade Commission v. Schering-Plough; Smithkline v. Apotex; AT&T v. Microsoft- Tech LawForum
Donald S. Chisum
Donald S. Chisum was Professor of Law at Santa Clara University in Santa Clara, California from 1997 to 2006. He was the Inez Mabie Professor of Law at Santa Clara University from 2001 to 2006. He received his A.B. degree in 1966 and his law degree in 1968, both from Stanford University. He was Professor of Law at the University of Washington from 1969 to 1996.
Chisum is a leading authority in the increasingly important area of patent law and intellectual property rights in technology. He is the author of the twenty-six volume reference text on patent law, Chisum on Patents, published by Matthew Bender, a part of Lexis Publishing, and co-author with Michael Jacobs of the text, Understanding Intellectual Property (1992). Chisum continually supplements and revises the Patents Treatise to include patent law developments. Chisum has authored numerous journal articles, including â€œPatent Law and the Presumption of Moral Regularity: A Critical Review of Recent Federal Circuit Decisions on Inequitable Conduct and Willful Infringement,â€ 69 J.P.T.O.S. 27 (1987); â€œComment: Anticipation, Enablement and Obviousness: An Eternal Golden Braid,â€ 15 AIPLA Q.J. 57 (1987), and â€œThe Patentability of Algorithms,â€ 47 U. Pitt L. Rev. 959 (1986). The last article received the Gerald Rose Memorial Award, John Marshall Law School, Chicago, Illinois, February 1987.
Chisum has also testified before the U.S. House of Representatives Committee on the Judiciary, Subcommittee on Intellectual Property and Judicial Administration, on the subject of patents in space (1985), the Transgenic Animal Reform Act (1989) and the Biotechnology Patent Protection Act of 1991.
Chisum is active in national and international professional organizations. He was on the Board of Directors of the American Intellectual Property Law Association and was Editor of the Associationâ€™s AIPLA Quarterly Journal. He attended, as an observer, the World Intellectual Property Organizationâ€™s Committee of Experts meetings on international patent law harmonization. In 1979, he was a visiting scholar at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich, Germany.
Chisum regularly lectures at patent law meetings and conferences, having addressed the Judicial Conference of the Court of Appeals for the Federal Circuit, the Patent Academy of the Patent and Trademark Office, the annual meeting of the American Intellectual Property Law Association, and regional patent law associations, state bar intellectual property sections, and corporate and law school symposia in California, Texas, Michigan, Indiana, New York, Ohio, Illinois, British Columbia, Delaware, Arizona and Missouri.
Michael A. Jacobs
Michael A. Jacobs has concentrated his practice on litigation of high-technology and intellectual property matters. Representing a broad array of clients, his work in several landmark cases has helped to shape the laws governing emerging technologies. He has litigated a wide range of patent, contract, and trade secret disputes in the information technology and life sciences field. He has also handled numerous high-profile arbitrations, several of which involved the interplay between arbitration and court proceedings.
Mr. Jacobs is co-author, with Professor Donald Chisum, of World Intellectual Property Guidebook, United States, published in 1992 by Matthew Bender & Company, New York. Prior to the start of his legal career, Mr. Jacobs held assignments with the United States Foreign Service in Kingston, Jamaica, and Washington, D.C.
Mr. Jacobs joined Morrison & Foerster in 1983 and is a partner in its San Francisco office. He served as co-head of the firmâ€™s intellectual property practice since its founding in 1990 until February 2003. He also served as the firmâ€™s Managing Partner for Operations from 1995 to 1997.
Mr. Jacobs was identified as a top 100 "Super Lawyer" by Northern California Super Lawyers and as a leading intellectual property lawyer by Chambers & Partners . He was also highly recommended by the 2006 PLC Which Lawyer? Yearbook in Intellectual Property law. PLC notes Mr. Jacobs as "a highly rated contentious specialist." In addition, Mr. Jacobs is listed in The Best Lawyers in America (2007) as a leader in the field of Intellectual Property law.
Mark A. Lemley
Mark A. Lemley is a William H. Neukom Professor of Law at Stanford University.
Widely recognized as a preeminent scholar of intellectual property law, Mark A. Lemley is a prolific writer, having published over 70 articles and six books, and an accomplished litigator, having tried cases before the Supreme Court of the United States, the California Supreme Court, and federal district courts. His major contributions to legal scholarship focus on how the economics and technology of the Internet affect patent law, copyright law, and trademark law. Professor Lemley has testified numerous times before Congress and the California legislature on patent, trade secret, antitrust, and constitutional law matters and currently serves as of counsel at Keker & Van Nest in their intellectual property and antitrust divisions. Before joining the Stanford Law School faculty in 2004, he was a professor of law at the University of California at Berkeley School of Law (Boalt Hall) and at the University of Texas School of Law, and served as of counsel at Fish & Richardson. He clerked for Judge Dorothy W. Nelson of the U.S. Court of Appeals for the Ninth Circuit.
Doug Lumish has extensive experience litigating complex patent cases in jurisdictions nationwide. His cases have involved diverse technologies including database software, data caching, virtual memory techniques, camcorders and PC connectivity, internet software distribution, data networking equipment and networking protocols, semiconductor equipment and processes, capillary electrophoresis equipment and processes, PCR equipment and processes, disk drives, cellular technology, biotechnology equipment and processes, medical devices, and analog and digital circuit design. Mr. Lumish has successfully represented industry leading companies in critical patent cases including Oracle Corporation, Cisco Systems, Intel, Matsushita, JVC, Applera, National Semiconductor, Hyperion Solutions, Marimba, and Lawson Software among others.
Mr. Lumish was recognized in 2007 by Chambers USA - Americaâ€™s Leading Lawyers for Business in the field of Intellectual Property: Patent. Mr. Lumish was also recognized by the Silicon Valley Business Journal as one of "40 people to watch" under 40 years old. He has served on the High Technology Advisory Council and High Technology Advisory Board to Santa Clara Universityâ€™s School of Law, and is on the Board of Editors for Patent Strategy & Management, an American Lawyer Media publication. Prior to his legal career, Mr. Lumish was a systems consultant to computer and high technology companies and designed and implemented strategies to automate various business functions, employing a diverse mixture of mainframe, minicomputer, UNIX, and PC technologies.
Ronald M. Whyte
The Honorable Ronald M. Whyte was appointed to the United States District Court for the Northern District of California by President George Bush and took his oath of office on March 2, 1992. Prior to his appointment to the federal bench, Judge Whyte served as Judge of the Superior Court of the State of California for Santa Clara County, appointed by Governor George Deukmejian in 1989.
From 1977-1989 he was a member of the law firm of Hoge, Fenton, Jones and Appel, Inc., in San Jose, California, with extensive trial experience. From 1971-1977 he was an associate with the same firm handling civil litigation matters in the state and federal courts. Judge Whyte served as Lieutenant, Judge Advocate General's Corps, U.S. Naval Reserve from 1968-1971 where he prosecuted and defended Naval and Marine personnel at Special and General Courts-Martial. He also served as a Military Judge at Special Courts-Martial and presided at many jury and non-jury trials.
In addition, Judge Whyte has lectured for the Federal Bar Association, California Continuing Education of the Bar, The Rutter Group, the Santa Clara County Bar Association, the Orange County Bar Association, the State Bar of California and other organizations on various subjects including patent law, trial practice, civil procedure, law and motion, judicial arbitration and governmental tort liability.
Judge Whyte is also the recipient of the Santa Clara County Trial Lawyers Association's Judge of the Year Award (1992). He is a member of the State Bar of California; U.S. District Court, Northern District of California; U.S. District Court, Central District of California; U.S. Court of Appeals for the Ninth Circuit; Santa Clara County Bar Association; and Federal Judges Association.