Agenda

Thursday & Friday, December 12 & 13, 2019
Four Seasons Hotel, East Palo Alto, CA

 

Thursday Morning, December 12, 2019

8:00 a.m. Registration Opens

Continental Breakfast

Breakfast sponsored by: 

8:50 a.m.

Welcoming Remarks

Presiding Officer:
Christopher J. Palermo, Hickman Palermo Becker Bingham

9:00 a.m. –
10:30 a.m.

§101 Today:  Challenges and Strategies

This panel, on a topic of perennial interest, will consider recent developments in subject matter eligibility from both the prosecution and litigation perspectives, with a focus on high tech, life sciences, and the convergence of the two industries.

Yar Chaikovsky, Paul Hastings
Bill James, Van Pelt, Yi & James
Bhanu Sadasivan, McDermott Will & Emery
Hon. Jon Tigar, N.D. Cal.

Moderator:
Mika Reiner Mayer, Cooley

10:30 a.m. –
10:45 a.m.

Break

 Sponsored by:

10:45 a.m. –
11:30 a.m.

Innovative Case Management

An exploration of the latest trends in case management, including the timing of §101 and summary judgment motions, stays, claim narrowing, and damages contentions as well as trial presentation topics, such as timed trials. 

Daralyn Durie, Durie Tangri
Hon. Robert W. Schroeder III, E.D. Tex.
Stefani Shanberg, Morrison Foerster

11:30 a.m. –
12:15 p.m. 

Third Party Interests

This session will consider “real party in interest” and privity issues, which have been hotly contested in the PTAB, as well as the latest views of the Federal Circuit on standing, exploring the connection between the RPI and privity issues and customer/supplier relationships, corporate relationships, and patent defense organizations.

Anne Cappella, Weil, Gotshal & Manges
Fabio Marino, Polsinelli
Jonathan Stroud, Unified Patents

12:15 p.m. –
1:00 p.m.

Lunch

Sponsored by:

Thursday Afternoon, December 12, 2019

Presiding Officer: Mackenzie Martin, Baker McKenzie

1:00 p.m. – 
1:45 p.m. 

International Litigation Strategy and Coordination

This panel will highlight litigation trends in Europe and Asia, offering best practices for coordinating international litigation. It will also address the real-life business impact of the different remedies available in international v. U.S. litigation and will consider licensing strategies and coordination between litigation and prosecution.

Andrew Thomases, Ropes & Gray
Jennifer Yokoyama, Microsoft
Michael HendershotJones Day 

Moderator:
Rajiv Patel, Fenwick & West

1:45 p.m. –
2:15 p.m.

§112 – Enablement

Recent developments, both in the case law and in proposed legislation, in Section 112’s written description requirement, including developments in functional claiming.

Sue Wang, Sidley & Austin 

2:15 p.m. –
2:30 p.m.

Break

 Sponsored by:

2:30 p.m. –
3:30 p.m.

Antitrust

Debate continues to swirl around antitrust and tech, with various agencies staking out different positions. This panel will explore antitrust and unfair competition concerns for standards bodies and standards essential patent (SEP) licensors and implementers, the decisions in FTC v. Qualcomm, and recent antitrust developments for life sciences companies.

DJ Healey, Fish & Richardson
Celeste Saravia, Cornerstone Research
Laura Storto, Genentech
Ellisen Turner, Kirkland & Ellis 

3:30 p.m. –
4:15 p.m.

Licensing and Transactions

A discussion of practical considerations in licensing and other agreements involving IP rights, including issues related to SEP licensing, choice of forum clauses, assignments involving some but not all patents in a family, spinouts, acquisitions, and university technology transfers.

Marta Beckwith, TechSea Law
Tom Chia, Via Licensing

Moderator:
Ron Laurie, Inflexion Point Strategy

4:15 p.m. –
4:45 p.m.

Must Inventors Be Human? … and Other Questions About AI

Building on the PTO’s August 27 Request for Comments on artificial intelligence and patents, this panel will consider a range of questions, including whether there are any eligibility considerations unique to AI inventions, what is or should be the law where AI contributes to the conception of an invention, and does AI impact the level of a person of ordinary skill in the art? 

Laurie Rose Lubiano, Climate
Christian Mammen, Womble Bond Dickinson

4:45 p.m. –
5:30 p.m.

Damages

A discussion of the role of damages contentions in patent litigation:  aspirations, appropriate requirements, and consequences, including recent experience/decisions from the Northern District.

Paul Bondor, Desmarais
Hon. Susan van Keulen, N.D. Cal.

Moderator:
Greg Pinsonneault, LitiNomics

5:30 p.m.

Reception

Sponsored by:

Friday Morning, December 13, 2019

Presiding Officer: Matthias KamberKeker, Van Nest & Peters

8:00 a.m.

Continental Breakfast

Breakfast sponsored by: 

 

8:30 a.m. –
9:15 a.m.

Attacking & Defending Imports at the ITC

Insights on recent developments in navigating exclusion orders, evolving standards for domestic industry, and effectively presenting the public interest factors.

Paul Ehrlich, Tensegrity Law Group
Julie Holloway, Latham and Watkins
Joshua Pond, Kilpatrick Townsend

9:15 a.m. –
9:45 a.m.

PTAB: Precedent/Rules

The panel will address many current issues at the PTAB, including POP panels and other precedential opinions, the updated Trial Practice Guide, the pilot program for amending claims during AIA proceedings, and amending claims during one or more reissue proceedings.

 

Peter Chen, Covington
Terry Rea, Crowell & Moring

9:45 a.m. –
10:30 a.m. 

IPR Strategy: Claim Construction and Estoppel Considerations

A unified Phillips-type claim construction standard, evolving estoppel standards, discretionary denial, and case/court-specific timelines all shape strategy for patent litigants.  This session will identify some tips and traps.

Nick Brown, Greenberg Traurig
David O’Brien, Haynes & Boone
Brad Waugh, Intel

10:30 a.m. –
10:45 a.m.

Break

 
10:45 a.m. –
11:45 a.m.
Less Awareness, More Action:  How to Effect Real Change in Diversity and Inclusion
 

Diversity and inclusion are top of mind for most of the tech industry and for policymakers (see, e.g., the SUCCESS Act).  This panel will explore policies for promoting diversity, including hiring guidelines by tech companies that request that their outside counsel align with their customer base and with the population in general. What tactics are being used to promote diversity and inclusion, what are the metes and bounds of hiring requests, and do they have teeth?  Have companies changed their purchasing decisions based on, or otherwise incentivized, compliance? How are law firms coping with these requests?

Colleen Chien, Santa Clara Law School
John Mulgrew, Uber
Kathi Vidal, Winston & Strawn

Moderator:
Bijal Vakil, White & Case 

11:45 a.m. –
12:30 p.m.

Valuation, Prosecution and Metrics

This panel will examine the considerations that should inform patent valuation and how departments can leverage data to make better decisions regarding portfolio valuation.

Jeremiah Chan, Facebook
Mike Lee, Google

Moderator:
Brian Howard, RPX

12:30 p.m. –
1:00 p.m.

Lunch

Sponsored by:

Friday Afternoon, December 13, 2019

Presiding Officer: Christopher J. Byrne

1:00 p.m. –
1:45 p.m.

Willfulness and waiver of privilege

 Juries love willfulness evidence and are using it to determine infringement—no wonder willfulness allegations are becoming a staple of today’s patent litigation.  Successful defense against willfulness often turns on anticipating and managing privilege waiver of in-house counsel and company decision makers.

Steve Carlson, Robins Kaplan
Deanna Kwong, HPE
Wayne Stacy, Baker Botts

1:45 p.m. –
2:15 p.m.

Attorneys’ Fees

A look at how the law on exceptional cases and attorney misconduct has developed in the five years since Octane Fitness, including whether (and how) courts have changed the way they analyze attorney misconduct and how the rules of ethics play into this analysis.

Alyssa Caridis, Orrick

2:15 p.m. – 
2:30 p.m.

Break

 
2:30 p.m. –
3:15 p.m.

From Servers to Car Dealerships: Venue and Transfer

This panel will review the ever-evolving caselaw applying the In re Cray venue factors to interpret “regular and established place of business of the defendant.” 

Vera Elson, Wilson Sonsini
Megan Whyman Olesek, Turner Boyd
Hon. Leonard Stark, D. Del.

 

3:15 p.m. – 
4:00 p.m.

Year in Review

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

Mark Lemley, Stanford Law

CLE: 13.75 hours, including 1.25 hours in Legal Ethics and 1 hour in Elimination of Bias
(THURS: 7.25; FRI: 6.50, incl. 1.25 Ethics and 1.0 Elim. 0f Bias)