Agenda

Thursday Morning, December 14, 2017  

 Breakfast sponsored by: 

 Welcoming Remarks

§101 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.

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.

JARED BOBROW, Weil, Gotshal & Manges LLP
TINA CHAPPELL, Intel
CHRISTIAN E. MAMMEN, Hogan Lovells
MICHAEL SACKSTEDER, Fenwick & West LLP
NIMALKA WICKRAMASEKERA, Winston & Strawn LLP

Powerpoints
Tina Chappell
Jared Bobrow
Chris Mammen
Mike Sacksteder
Nimalka Wickramasekera

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
DARALYN DURIE, Durie Tangri
LEAH WATERLAND, Cisco

Powerpoint

Thursday Afternoon, December 14, 2017

Presiding Officer: Chris Byrne, Samsung Electronics

12:15pm

Lunch 

 Lunch sponsored by: 

12:45pm

Lunch Keynote: Fireside Chat 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 Undersecretary of
Commerce and Director, USPTO
BIJAL VAKIL, White & Case LLP

1:15pm

International Developments and Strategy 

This session will consider a range of international issues, including the status of Europe’s Unified Patent Court and its impact on strategy for patent procurement, enforcement, and defense, as well as the significance of Asia and alternative venues.

STEVEN CARLSON, Kasowitz Benson Torres LLP
LAURA STORTO, Genentech
FREDDY THIEL, Kilburn Strode LLP

Powerpoint

2:00pm

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

Powerpoint

2:30pm

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

Powerpoint

3:00pm

15 Minute Break

3:15pm

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 standalone sales and the relatively invisible marketplace in which patents contribute significant value to a deal, including M&As, technology spinouts, JVs, tech-transfers, and exclusive field-of-use licenses. 

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

Powerpoints
Ron Laurie
Kent Richardson

4:00pm

 §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.

ADAM ALPER, Kirkland & Ellis LLP
BETTY CHEN, Fish & Richardson

Powerpoint

4:30pm

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.

5:30pm

Reception

Reception sponsored by: 

Friday Morning, December 15, 2017  

Presiding Officer: Harrison J. (Buzz) Frahn, Simpson Thacher & Bartlett LLP

8:00am

Continental Breakfast

Continental Breakfast sponsored by: 

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

Powerpoint

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 review some of arguments presented to the Supreme Court.

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

Powerpoint

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?

Friday Afternoon, December 15, 2017  

Presiding Officer: Matthias Kamber, Keker, Van Nest & Peters, LLP

Networking Lunch

Networking Lunch sponsored by: 

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

Powerpoint

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

Powerpoint

Patent Year in Review

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

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

Powerpoint

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.

Closing Remarks