2014 All Hands Meeting
November 7th Main Session
Advanced IP Track Agenda

Room 203/204
Patent Damages and Attorneys’ Fees Update

Vera Elson & Ed Poplawski
Wilson Sonsini Goodrich & Rosati PC

Join us for a damages update on issues that may significantly impact your exposure (or recovery) in high-stakes patent litigation. The panel will provide an update on the current status of the law and practical implications regarding: (i) the changing landscape for pursuing royalty damages; and (ii) key developments on lost profits damages. This will include dramatic changes in conventional royalty assessment, the evolution of alternative ways to determine royalties, and challenges to allowing presentation of royalty methodologies to a jury.

Room 203/204
Two Years of the PTAB: Tales from In-House and Outside Counsel

Erika Arner, M. Paul Barker, Aaron Capron & Kathleen A. Daley/Lisa Buccino/Renny Hwang/Kirupa Pushparaj
Finnegan/SAP/Google Inc./Square, Inc.

In the two years since the first filings of petitions for inter partes review and post-grant review of covered business method patents, practitioners have pioneered through untested procedures, learned myriad lessons, and recalibrated strategies in response to the new realities of patent practice. There is much more to come as the first post-grant review cases enter the process and the Federal Circuit rules on Patent Trial and Appeal Board (PTAB) decisions. This session brings together panels of in-house and outside counsel to share their insights and best practices in this exciting new arena.

Room 203
Patent Office Litigation By the Numbers: How effective are the new procedures for resolving litigation? And how dangerous are the new procedures to your own patents?

Wayne Stacy/Molly Kocialski
Cooley LLP/Oracle America, Inc.

The America Invents Act implemented new proceedings for reviewing the patentability of issued patents. These new procedures have already profoundly changed patent litigation and patent prosecution. But change does not necessarily correlate with effectiveness. How effective are these procedures in resolving patent litigation? And do they pose a threat to your own patents? Too often these questions are answered based on hyperbole and personal, past experiences with patent litigation. Drawing from a proprietary dataset of over 150,000 data points culled from the Patent Office records, this presentation provides objective answers about the effectiveness of using AIA proceedings to challenge patents and the risks they pose to your own patent portfolio.

Room 204
Multijurisdictional IP issues

David Barron/C.J. Veverka & David R. Wright
Wragge Lawrence Graham & Co LLP/Maschoff Brennan

In this interactive presentation (audience participation encouraged!) our speakers will discuss their experiences of some key pitfalls which can arise in multi-jurisdictional patent litigation unless appropriate care is taken. Our speakers will focus on the common situation where there are concurrent proceedings in both the US and Europe. Particular topics to be addressed – war stories guaranteed! - include:
  • Use of evidence obtained in one jurisdiction in another, foreign jurisdiction
  • The impact of protective orders between jurisdictions (including prosecution bars)
  • Preserving privilege in communications with non-US counsel
  • The EU's highly-restrictive approach to privilege for in-house counsel
  • Differing approaches to the preservation of confidential material between the US and Europe
Our speakers from EU (Wragge Lawrence Graham & Co) and US (Maschoff Brennan) based practices have successfully coordinated cross-border patent actions in the US and Europe.

Room 203
Surviving PTAB Trials as a Patent Owner: How to Protect Your IP Portfolio Value Against The PTAB "Death Squads"

Eliot Williams
Baker Botts

The creation of adversarial Trials before the Patent Trial and Appeals Board in the 2011 America Invents Act was in response to numerous complaints over the last decade that the ex parte patent examination process was leading to the issuance of low quality patents, which were impeding innovation and raising litigation costs for industry participants. For this reason, the panels of judges hearing these PTAB Trials have been called "death squads, killing property rights." The PTAB’s Chief Judge has reportedly agreed (in part) with that characterization, saying that the AIA “calls on” the PTAB to be “doing some ‘death squadding.’ ” Accordingly, the existence of the PTAB Trial procedure potentially threatens the value of many sizable patent portfolios. In this session, presenter Eliot Williams, who testified before the House Judiciary Committee in its hearings regarding implementation of the AIA, will analyze strategies that have been successful for patent owners in PTAB trials to-date. Mr. Williams will also discuss strategic procedural options for the Patent Owner to consider -- such as reissue proceedings to impede the PTAB’s jurisdiction, terminal disclaimers to avoid application of the "broadest reasonable interpretation" of disputed claim terms, and other ex parte patent prosecution strategies that may help the patent owner minimize the potential disruption that a PTAB Trial could have on IP portfolio value and patent enforcement programs.

Room 204
The Changing Landscape For Proving and Defending Against Claims of Inducing Patent Infringement

Robert Kramer & Russell Tonkovich/Jason Anderson/Roy Wang
Dentons/DataStax, Inc./Marvell, Inc.

This presentation will feature a moderated panel of in-house counsel discussing recent developments in the changing landscape for proving and defending against claims of inducing patent infringement that may significantly impact your exposure (or recovery) in patent litigation. The ground has shifted, with the U.S. Supreme Court weighing in on the requirements for proving inducement to infringe patents in a June 2014 decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., reversing an en banc Federal Circuit decision. The panel will provide an update on the current status of the law and practical implications regarding the circumstances in which patents may be infringed by business partners and your company may be accused of inducing infringement based on how it structures its relationships and business interactions with its suppliers and customers.

Room 204
APJs and the Evolving Landscape of IPRs, CBMs and PGR

Katherine Kelly Lutton & W. Karl Renner/Hon. Matt Clements, Hon. Tina Hulse & Hon. Frances Ippolito
Fish & Richardson, P.C./Patent Trial & Appeal Board, USPTO

This moderated discussion with a panel of Administrative Patent Judges will discuss the landscape in terms of IPRs, CBMs and PGR. What is the USPTO doing to manage these post-grant procedures? What are they seeing and what do the statistics really tell us (or not tell us)?

Please Note: Program details are subject to change without notice

Participating Law Firms & Companies