Patent Litigation Best Practices - Working Group 10

We are pleased to extend a new opportunity to become more involved in Working Groups 9 and 10 (WGs 9/10). The Steering Committees are forming one new Brainstorming Group. Please see the more fulsome description below. If interested, be sure to follow the subsequent instructions for applying and note that the deadline for submitting an application to participate is May 3, 2024.

The Proper Role of the Prosecution History in Patent Litigation

A patent’s prosecution history reflects the record of proceedings between the applicant and the Patent Office and as such is considered intrinsic evidence for claim construction purposes. Many courts, however, are reluctant to rely on the prosecution history during claim construction unless it reflects a “clear and unmistakable” disclaimer of subject matter. This improperly diminishes the prosecution history’s role in claim construction. Apart from claim construction, the prosecution history may also play an important role in the infringement analysis, including consideration of infringement under the doctrine of equivalents. The proposed Commentary will explore how the prosecution history may assist in both the claim construction process and in determining infringement, in the U.S. courts, the Unified Patent Court, and other fora throughout the world.

We are looking for members of the Working Groups to form a Brainstorming Group to explore this topic and develop a project charter to be submitted to the WGs 9/10 Steering Committees. If the charter is approved, working group members (including those on the Brainstorming Group) will be invited to apply to participate on the Drafting Team that will work to develop a Commentary based on the approved project charter.

The target completion date for an initial project charter draft is May 30, 2024.

Expectations of Brainstorming Group Members

Brainstorming Groups are typically larger in size than Drafting Teams and usually function over a relatively short period of time. In this regard, the work of a Brainstorming Group is more like a sprint than a marathon. Brainstorming Group members are expected to make the following commitments:

• Participation in Brainstorming Groups is a benefit of individual Sedona Conference Working Group Series membership. All Brainstorming Group members must always keep their membership current during the process.
• As the name suggests, Brainstorming Group members are encouraged to think creatively and actually "brainstorm", which may go beyond or even challenge the premise of the Brainstorming Group, as warranted.
• Accordingly, Brainstorming Group members are expected to regularly join and participate in Brainstorming Group virtual meetings. Brainstorming Group leaders will take attendance for all meetings and track meeting participation and contributions. One or more Brainstorming Group members will be asked to take notes of Group meetings.
• Brainstorming Group members will be expected to draft or assist in drafting portions of the outline/project charter and/or perform research as needed.
• Brainstorming Group members are expected to review all team drafts that are circulated, and comment and/or revise/edit as necessary.
• Brainstorming Group members are expected to dialogue, not debate, and work collaboratively as part of a team to achieve consensus.
• If feasible, Brainstorming Group members are encouraged, but not required, to attend WGs 9/10 meetings where their work product is presented to the membership through a panel discussion and dialogue.

It is critical that all Brainstorming Group members are active, engaged participants in the outline/project charter drafting efforts to produce high-quality work product in a limited timeframe.

Factors in Brainstorming Group Selection:

It is important that a wide range of perspectives and backgrounds are represented. Accordingly, the Steering Committees will work to ensure these perspectives are fairly represented. Please keep in mind, however, we do not seek differing perspectives so that one may advocate on behalf of a particular perspective or constituency; we seek differing viewpoints, backgrounds, and experiences to build consensus that is beneficial to all stakeholders. Perspectives we will seek to have represented on the Brainstorming Group may include, among others:

• In-House Counsel
• Outside Counsel
• Judges
• Judicial Clerks
• Government Counsel
• Academics
• Service Providers/Technology Companies
• Small Firms/Solo Practitioners

We will likely have more well-qualified, well-rounded applicants than we have openings. As a result, we may have a ranked waiting list. Brainstorming Group member participation and contributions will be evaluated by the Steering Committee liaisons to the Brainstorming Group. If a member is unable to maintain the commitment to actively participate and contribute, it is possible that the member may need to be replaced to timely achieve the Brainstorming Group’s objectives.

How to Apply

NOTE: If you are not currently a Working Group member but are interested in participating, you may become a member by signing up for a Working Group Series (WGS) membership. Once a WGS member, one is eligible to take part in the activities of all Working Groups, including WGs 9/10. If you have any questions about how to sign up for a membership or encounter any difficulties while doing so, please contact our office at [email protected] or (602) 258-4910.

To be considered for this Brainstorming Group, please provide separate answers to each of the questions below and submit to Casey Mangan at [email protected] no later than May 3, 2024. Please be brief when answering the questions; no more than 50 words per answer to a question.

• What is your profession and expertise?
• What organization do you work for?
• How many years of experience do you have?
• What qualifications or experiences make you particularly qualified to serve on this Brainstorming Group?
• Are you willing and able to attend WGs 9/10 meetings to dialogue on the Brainstorming Group's work?

Please do not be discouraged if you are not selected for the Brainstorming Group. Because The Sedona Conference is a self-selected group of engaged, proactive people, we get many more excellent and eminently qualified applicants seeking to join a Brainstorming Group than we can take. If you do not get selected for a Group, please try again! Even if you are not selected, your application and eagerness to be involved are favorably considered the next time you apply for a Brainstorming Group or Drafting Team. Also remember that as a member of WGs 9/10, you will have the opportunity to review and comment on any member-only work-product written by this Brainstorming Group.

Important Note About Subsequently Formed Drafting Teams

Frequently, after the Brainstorming Group has presented an outline to the membership and after a short period of member review and comment, the Steering Committees will approve the formation of a Drafting Team to produce a draft publication on the proposed topic. Being a member of the Brainstorming Group does factor into consideration for Drafting Team membership, but it is not a guarantee that you will be selected. This is because Drafting Teams are usually smaller than Brainstorming Groups, function over a longer period of time, and require a particular balance of perspectives and experiences in order to build a consensus-based document that is beneficial to all stakeholders.