Agenda

Registration Opens + Continental Breakfast

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Welcoming Remarks

Presiding Officer:
G. HOPKINS GUY, III, Baker Botts LLP

§101 Case Update

This panel will discuss how to navigate subject matter patentability in the PTO and
the courts, the variance in how Sec. 101 is applied procedurally and substantively, and the status of proposed legislation. It will also discuss the impact of 101 on patent portfolio management.

Moderator:
LEE VAN PELT, Van Pelt, Yi, and James LLP
Panelists:
HEIDI KEEFE, Cooley LLP
DEANNA KWONG, Hewlett Packard Enterprise
PETER MENELL, UC Berkeley Law School, BCLT
CHRISTOPHER J. PALERMO, Hickman Palermo Becker Bingham LLP

Venue

The Supreme Court’s decision in TC Heartland has fundamentally changed the
patent litigation landscape in district courts throughout the country. This panel will
focus on strategic considerations that are now raised in selecting and challenging
venue.

KATHI VIDAL, Winston & Strawn LLP
JARED BOBROW, Weil, Gotshal & Manges LLP
CHRISTIAN E. MAMMEN, Hogan Lovells
MICHAEL SACKSTEDER, Fenwick & West LLP

15 Minute Break

Damages

Infringement, validity, and procedural maneuvering are all fine and good, but the reason businesses care about patent litigation is the money. This panel will draw on the experience of both outside and in-house counsel to explore damages issues, including apportionment, enhanced damages, and the impact of evolving local rules on damages.

Moderator:
GREG PINSONNEAULT, LitiNomics
Panelists:
KAREN BOYD, Turner Boyd
TINA CHAPPELL, Intel
SONAL MEHTA, Durie Tangri
LEAH WATERLAND, Cisco

Lunch

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Presiding Officer:
CHRIS BYRNE, Samsung Electronics

Lunch Keynote: Interview with Michelle Lee

Bijal Vakil will discuss with Michelle Lee her experience as head of
the PTO and her thoughts on the future of the U.S. patent system.

MICHELLE LEE, Former Director, USPTO
BIJAL VAKIL, White & Case LLP

2:00 PM

FRAND/SEPS

This session will examine issues implicated by FRAND and SEPs, including royalty
stacking, IP BOMS, patent pools, and recent judicial decisions on FRAND obligations, defenses, and remedies.

MIKE LEE, Google
LISA NGUYEN, Latham & Watkins LLP

Indemnification

Using an interactive approach, our panelists will walk through the key issues
in indemnifications, the key trade-offs in negotiations, and how the issues play out in response to assertions and litigation.

ISABELLA FU, Microsoft
DAVID SIMON, Salesforce

15 Minute Break

The Patent Markets

This panel will discuss the current state of the secondary patent market, who’s buying, who’s selling, and at what price? It will look at what happens to patents after a sale, including the chance of winning on a bought patent. It will examine both stand-alone sales and the relatively invisible marketplace in which patents contribute significant value to a deal, including M&As, technology spinouts, JV’s, tech-transfers, and exclusive field-of-use licenses.

RON LAURIE, Inflexion Point Strategy, LLC
KENT RICHARDSON, Richardson Oliver

§102/103

This session will provide a comprehensive review of recent decisions on Sections
102 and 103, including an analysis of the “effective filing date” and what counts as prior art under the “new” 102 provision.

BETTY CHEN, Fish & Richardson

Judges Panel

Judges experienced in presiding over patent disputes will offer insights on patent trial and litigation issues in light of the rapidly evolving patent law landscape.

Moderator:
VERN WINTERS, Sidley Austin LLP
Panelists:
HON. JAMES DONATO, USDC, Northern District of California
HON. SUSAN DAVIS WIGENTON, USDC, District of New Jersey
HON. MARK RAYMOND HORNAK, USDC, Western District of Pennsylvania
HON. ANDREW J. GUILFORD, USDC, Central District of California

5:30 PM

Closing Remarks

Continental Breakfast

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Presiding Officer:
HARRISON J. (BUZZ) FRAHN, Simpson Thatcher & Bartlett LLP

PTAB Practice and Strategy 

What do petitioners and patent owners need to know in an era of tapering institution and claim cancellation rates and in view of increasingly aggressive Federal Circuit review?

HARPER BATTS, Baker Botts LLP
DAVID O’BRIEN, Haynes & Boone LLP
TERRY REA, Crowell & Moring LLP
WINSLOW TAUB, Covington & Burling LLP

Debate: Is the PTAB Constitutional? 

Oil States is arguably the most important patent law case of the decade. The question in the case is whether the IPR proceeding created in the America Invents Act is unconstitutional because only juries, or at least Article III courts, can lawfully cancel patents. The implications could go beyond IPRs. This debate-style panel will preview some of arguments likely to be considered by the Supreme Court.

DMITRY KARSHTEDT, George Washington University Law School
BRIAN MATSUI, Morrison & Foerster

15 Minute Break

Those Products Flew in From Abroad, Are Your Patents Exhausted?

The Supreme Court’s holding in Impression Products v. Lexmark disrupted a multitude of sales and licensing models built on decades of Federal Circuit case law concerning the exhaustion doctrine. This presentation will navigate effective offensive and defensive litigation strategies in light of the new post-Lexmark rules. Structures for licensing and product sales to avoid post-Lexmark exhaustion will also be addressed.

YAR CHAIKOVSKY, Paul Hastings LLP

Business Planning Around Changes in the Law

This panel will consider the relationship among Supreme Court patent law decisions, business strategy, and in-house legal planning: how have businesses responded? For example, after Lexmark, does a company change its strategy on sales abroad, or on manufacture abroad? Could TC Heartland cause businesses to rethink where they locate their facilities? Have Alice and the near death of business method (and medical diagnostic?) patents affected corporate and legal planning?

MARTA BECKWITH, PacTech Law
DAN LANG, Cisco
GILLIAN THACKRAY, The Clorox Company

Lunch

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Presiding Officer:
MATTHIAS KAMER, Keker, Van Nest & Peters LLP

Privilege in Multinational Litigations

Most significant IP litigations now involve an international dimension, such as concurrent litigation of counterpart patents in multiple jurisdictions. Yet privilege and work product rules may differ significantly between these jurisdictions, and maintaining privilege will likely require compliance with varying privilege requirements. This session will discuss differences in the rules between the
major jurisdictions, as well as strategies to maintain attorney-client, work product, and common interest privileges where litigations have international components.

KEITH SLENKOVICH, WilmerHale
ROMAN KRUPENIN, Yandex

Disclosures in Prosecution and Litigation

This session will first describe the different disclosure obligations in prosecution and post-grant review and compare and contrast them. Then it will analyze how concurrent prosecution, post-grant proceedings, and litigation can create traps for the unwary.

DAVID HRICIK, Mercer University School of Law

Patent Year in Review

A summary of the most important developments in Supreme Court and Federal Circuit law this year.

MARK LEMLEY, Stanford Law School

15 Minute Break

Identifying Trade Secrets in Litigation

Uniquely among IP rights, trade secrets are not defined until they are litigated.
Existing procedures can consume enormous resources as the parties fight over an
omnibus list of claimed secrets. This session will explore practical case management techniques directed at identifying the secrets that matter.

JIM POOLEY, James Pooley PLC

Elimination of Bias

Despite the $8 billion spent annually by corporations to eliminate bias and increase
diversity and inclusion, the needle hasn’t moved much. Numerous studies have
shown that although unconscious bias training is a great tool for creating awareness, it doesn’t have a significant effect in changing behaviors. So, what does work? This session will examine recent behavioral research, ROI findings, and first-hand experiences regarding the tools, strategies, programs, and policies that are seemingly making a positive impact.

Moderator:
MALLUN YEN, ChIPs Network Inc.

Panelists:
PAUL GREWAL, Facebook
CAREN ULRICH STACY, Diversity Lab
SARITA VENKAT, Apple

4:15 PM

Closing Remarks