Agenda / Materials

Thursday, December 12, 2013

Time Description CLE Credit
7:30 a.m. Registration Opens  
8:15 a.m. Welcoming Remarks 0.25 Hour
8:30 a.m.

Claim Construction and
De Novo Review

This session will discuss the pending Federal Circuit en banc review in Lighting Ballast Control v. Philips Electronics, empirical research on appellate review of claim construction decisions, and ramifications for patent case management.

  • Julie M. Holloway, Latham & Watkins LLP—
    San Francisco, CA
  • Christian E. Mammen, Hogan Lovells US LLP— San Francisco, CA


Panel Resources:

    0.75 Hour
    9:15 a.m.

    Post-Grant Proceedings in the USPTO: Developments, Issues and Strategies

    Much can be learned from the first year of patent challenge
    proceedings before the Patent Trial and Appeal Board under the America
    Invents Act (“AIA”). This panel will discuss successful and
    not-so-successful examples of strategies used by patent owners and
    challengers, the challenges of coordinating strategy between PTAB
    proceedings and co-pending litigation, and up-to-date PTAB statistics.
    They will also address ethical issues raised by the real party in
    interest disclosure requirements for inter partes and post grant
    reviews.

    • Erika Harmon Arner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP—Reston, VA
    • Matthew I. Kreeger, Morrison & Foerster LLP—
      San Francisco, CA


    Panel Resources:

      0.75 Hour (0.25 Ethics)
      10:00 a.m. Break
      10:15 a.m.

      Patentable Subject Matter

      Myriad, CLS Bank, Ultramercial, Guidewire:
      the 101 cases keep coming, but is the law any more clear as a
      consequence? Where are we headed? Are we developing an
      industry-specific 101 standard? What is the relationship between 101
      and 103? And can thoughtful prosecution strategies avoid the 101
      question altogether? This panel will tackle these questions and more.

      Moderator:

      • Daralyn J. Durie, Durie Tangri LLP—San Francisco, CA

      Panelists:

      • Gary Loeb, VP, Legal, Counsyl—South San Francisco, CA
      • Tim Porter, Google, Inc.—Mountain View, CA


      Panel Resources:

        1.00 Hour
        11:15 a.m.

        Remedies: Developments in Damages and Injunctive Relief

        Is injunctive relief appropriate in your case? Lost profits
        damages? A reasonable royalty? And to what extent do the parties’
        relationships with third parties bear on the inquiry? The panelists
        will address cutting edge developments and the most recent decisions in
        the evolving legal landscape governing damages and injunctions.


        Moderator:

        • Tamara Fraizer, Fish & Richardson P.C.—Redwood City, CA

        Panelists:

        • Eric R. Lamison, Kirkland & Ellis LLP—San Francisco, CA
        • James Pampinella, Navigant Consulting, Inc.—San Francisco, CA
        • Bijal Vakil, White & Case LLP—Palo Alto, CA
        • Siddhartha Venkatesan, Orrick, Herrington & Sutcliffe LLP—Menlo Park, CA


        Panel Resources:

          1.00 Hour
          12:15 p.m. Break to pick up lunch
          12:30 p.m.

          Luncheon Presentation:
          Updates from the United States Patent & Trademark Office

          Lunch sponsored by: Hickman Palermo Truong Becker Bingham Wong

          Michelle Lee, Silicon Valley Director of the United States
          Patent & Trademark Office (USPTO), will discuss the USPTO’s efforts
          on the White House’s initiatives to reduce abusive patent litigation as
          well as the goals, vision and latest developments on the Silicon Valley
          USPTO.

          • Michelle Lee, Director, Silicon Valley U.S. Patent and Trademark Office—Menlo Park, CA

          Panel Resources:

            0.75 Hour
            1:15 p.m. Break
            1:30 p.m.

            Standard Essential Patents: Recent Developments and Key Issues

            The past year has seen several developments regarding the
            enforcement of patents that have been declared to be essential to a
            standard and subject to a commitment to license on fair, reasonable and
            nondiscriminatory (FRAND) terms. This panel will discuss the first case
            Microsoft v. Motorola that actually determined a FRAND royalty rate, the
            limited availability of injunctive relief and ITC exclusion orders, and
            efforts by government regulators to interpret and enforce FRAND
            commitments.

            • Robert D. Fram, Covington & Burling LLP—
              San Francisco, CA
            • Gil Ohana, Cisco Systems—San Jose, CA


            Panel Resources:

              0.75 Hour
              2:15 p.m.

              Recent Decisions in Patent Exhaustion: Bowman, Kirtsaeng and Other Developments Impacting the Exhaustion Doctrine

              In Bowman v. Monsanto, the Supreme Court ruled that
              “[p]atent exhaustion does not permit a farmer to reproduce patented
              seeds through planting and harvesting without the patent holder’s
              permission.” The impact of the Court’s ruling on other cases of patent
              exhaustion remains to be seen. In Kirtsaeng v. John Wiley & Sons,
              the Supreme Court held that an authorized sale of a copy, occurring
              anywhere in the world, exhausted the copyright owner’s rights in that
              copy of the work. The Court denied certiorari in another case which put
              the question of international patent exhaustion squarely before the
              Court: Whether the initial authorized sale outside the United States of a
              patented item terminates all patent rights to that item. This panel
              will consider evolving patent exhaustion arguments following Bowman, Kirtsaeng and other developments in the field of patent exhaustion.

              • Yar R. Chaikovsky, McDermott Will & Emery—Menlo Park, CA
              • Keith L. Slenkovich, Wilmer Cutler Pickering Hale and Dorr LLP—Palo Alto, CA


              Panel Resources:

                0.50 Hour
                2:45 p.m.

                Coordinating Litigation

                The panel will review the impact of the America Invents Act on
                patent litigation and the new opportunities emerging for both patent
                owners and challengers. Topics will include overall case management
                considerations including the economics of case funding; joint defense
                groups; estoppel, prosecution bar, and related considerations; the
                latest tactical developments in venue selection and transfer practice;
                the evolution of Federal Circuit case law favoring defendants; and the
                interplay between proceedings in the courts and PTAB.

                Moderator:

                • David L. McCombs, Haynes and Boone LLP—Dallas, TX


                Panelists:

                • Jared Bobrow, Weil, Gotshal & Manges LLP—Redwood Shores, CA
                • Isaac Peterson, Netflix, Inc.—San Francisco, CA


                Panel Resources:

                  0.75 Hour
                  3:30 p.m. Break
                  3:45 p.m.

                  The Right to a Jury Trial on Validity

                  Is there a Seventh Amendment right to have juries decide if
                  patents are valid? We assume the answer is yes, but the support for such
                  a claim is surprisingly weak. What would change if juries didn’t decide
                  validity?

                  • Mark Lemley, Stanford Law School; Durie Tangri LLP—Stanford, CA


                  Panel Resources:

                    0.50 Hour
                    4:15 p.m.

                    Judges Panel: Efficiently Managing Patent Litigation in a Time of Flux

                    Patent law is in a state of flux on fundamental issues ranging
                    from the parameters of patentable subject matter to appellate review of
                    bifurcated trials and sanctions for litigation misconduct. This panel of
                    highly-regarded jurists from leading patent jurisdictions will discuss
                    ways to manage patent litigation effectively and efficiently in the face
                    of that flux.


                    Moderator:

                    • Vernon M. Winters, Sidley Austin LLP—San Francisco, CA

                    Panelists:

                    • The Honorable Yvonne Gonzalez Rogers, US District Court for the Northern District of CA
                    • The Honorable Marilyn L. Huff, US District Court for the Southern District of CA
                    • The Honorable Jon S. Tigar, US District Court for the Northern District of CA

                    Panel Resources:

                      1.00 Hour (0.50 Ethics)
                      5:15 p.m. Closing Remarks

                      Friday, December 13, 2013

                      Time Description CLE Credit
                      8:00 a.m. Continental Breakfast
                      8:30 a.m.

                      Indirect and Divided Infringement

                      An indirect infringer must know of, or be willfully blind to, its
                      own infringement. How does this standard, articulated by the Supreme
                      Court in 2011, play out in practice? When does evidence of a patent’s
                      invalidity defeat indirect infringement? And for those patent claims
                      where more than one actor is necessary to perform all the patented
                      steps, what evidence of intent is required? This panel will discuss the
                      Federal Circuit’s decision in Akamai Techs. v. Limelight Networks and other recent cases on indirect and divided infringement.

                      • Steven C. Carlson, Kasowitz, Benson, Torres & Friedman LLP—Redwood Shores, CA
                      • Alison M. Tucher, Morrison & Foerster LLP—
                        San Francisco, CA


                      Panel Resources:

                        0.75 Hour
                        9:15 a.m. Break
                        9:30 a.m.

                        Best Patent Prosecution Practices for Damages and Licensing Purposes

                        When evaluating an invitation to license a patent or a patent
                        assertion opportunity, there are salient patent prosecution issues to
                        scrutinize. Patent enforcement perspectives are used to inform a
                        practical discussion of best patent prosecution practices.

                        • William S. Galliani, Cooley LLP—Palo Alto, CA


                        Panel Resources:

                          0.50 Hour
                          10:00 a.m.

                          Functional Claiming

                          This session will discuss strategies for drafting broad claims and how to deal with the issue of functional claiming.

                          • Lee Van Pelt, Van Pelt, Yi & James LLP—Cupertino, CA


                          Panel Resources:

                            0.50 Hour
                            10:30 a.m.

                            Safeguarding Confidential and Privileged Information in Complex Litigation

                            The
                            ability to store and rapidly transmit vast
                            quantities of information has dramatically altered
                            the landscape of discovery in civil litigation.
                            As a result, the risk that sensitive information
                            will be mishandled in the course of litigation is
                            very real, and the consequences of such
                            mishandling can be grave.  This session will
                            survey best practices for protecting confidential
                            and privileged information in discovery, and
                            handling situations in which sensitive information
                            is improperly disclosed. 

                            • Douglas R. Nemec, Skadden, Arps, Slate, Meagher & Flom LLP—New York, NY


                            Panel Resources:

                              0.50 Hour
                              11:00 a.m. Break
                              11:15 a.m.

                              Pharmaceutical “Reverse Payment” Patent Settlements

                              After fifteen years of government and private litigation
                              regarding “reverse payment” settlements, the Supreme Court weighed in
                              this year in FTC v. Actavis. This panel will discuss what it means, not just for pharmaceutical companies, but for all IP owners.

                              • Mark Lemley, Stanford Law School; Durie Tangri LLP—Stanford, CA
                              • Seth C. Silber, Wilson Sonsini Goodrich & Rosati—Washington, DC


                              Panel Resources:

                                0.50 Hour
                                11:45 a.m.

                                Obviousness: The Rise, Fall and Return of Objective Evidence

                                Recent Federal Circuit decisions have indicated a renewed
                                insistence that Courts fairly weigh factors such as commercial success,
                                the failure of others, and other “objective evidence” of non-obviousness
                                or obviousness. This panel will examine the recent case law, and
                                discuss how it affects both the litigation and prosecution environments.
                                We will also consider how the obviousness defense may factor into the
                                new PTO procedures under the AIA.

                                • Robert J. Goldman, Ropes & Gray LLP—East Palo Alto, CA
                                • Christopher J. Palermo, Hickman Palermo Truong Becker Bingham Wong LLP—San Jose, CA


                                Panel Resources:

                                  0.50 Hour
                                  12:15 p.m. Break to pick up lunch
                                  12:30 p.m.

                                  Lunch Presentation:
                                  Patent Reform Update

                                  Despite the recent passage of the America Invents Act after years
                                  of debate, both Congress and the White House are again considering
                                  patent reform proposals, and several state attorneys general have become
                                  active on the patent front. What proposals are gaining traction? A
                                  panel of experts will explore legislative proposals, state-level
                                  efforts, Presidential and FTC efforts, e-discovery reform, fee shifting
                                  and sanctions.


                                  Moderator:

                                  • Katherine Kelly Lutton, Fish & Richardson P.C.—Redwood City, CA


                                  Panelists:

                                  • David S. Bloch, Winston & Strawn LLP—San Francisco, CA
                                  • David Jones, Microsoft Corp.—Redmond, WA
                                  • Brian Love , Santa Clara University—Santa Clara, CA
                                  • Suzanne Michel, Google, Inc.—Mountain View, CA
                                  • Aaron Nathan, Tensegrity Law Group LLP—Santa Clara, CA


                                  Panel Resources:

                                    1.00 Hour
                                    1:30 p.m. Break
                                    1:45 p.m.

                                    New PTO Conduct Rules

                                    Changes were made in the new PTO ethics rules, effective May 2013. What do patent lawyers need to know about these changes?

                                    • John Steele, Steele Law Firm—Palo Alto, CA


                                    Panel Resources:

                                      0.50 Ethics
                                      2:15 p.m.

                                      Life under the New Novelty Regime: Interpreting Section 102—Prior Art, Exceptions, and More

                                      The transition this year to “First Inventor to File” represents a
                                      fundamental shift in US patent practice. Section 102 of the AIA
                                      altered how novelty, the relevant prior art, and the grace period are
                                      determined. While the scope of the changes to Section 102 may take
                                      years and several cases to help define, this panel will discuss Section
                                      102, some potential issues, and strategies for helping clients function
                                      in this new regime.

                                      • Bradley D. Baugh, North Weber & Baugh LLP—Palo Alto, CA
                                      • Michael W. Farn, Fenwick & West LLP—Mountain View, CA


                                      Panel Resources:

                                        0.50 Hour
                                        2:45 p.m.

                                        The Patent Marketplace: Trends and Perspectives – An Interactive Discussion Among Seasoned Domain Experts

                                        This panel will discuss the state of the patent marketplace, the
                                        data, the players, the business models and the likely near, mid and
                                        longer term changes in the ecosystems.

                                        Moderator:

                                        • Christopher Byrne, Samsung Electronics Co., Ltd.—
                                          San Jose, CA

                                        Panelists:

                                        • Dan Lang, Cisco Systems—San Jose, CA
                                        • Ronald S. Laurie, Inflexion Point Strategy, LLC—Palo Alto, CA
                                        • Mallun Yen, RPX Corp.—San Francisco, CA


                                        Panel Resources:

                                          0.75 Hour
                                          3:30 p.m. Closing Remarks