2013 All Hands Meeting
December 5th Main Session
Advanced IP Track Agenda

Preparing for the Inevitable: New Patent Reforms in Process

Katherine Kelly Lutton/Cynthia Bright/Christa Zado
Fish & Richardson, P.C./HewlettPackard/Cisco Systems, Inc.

The ink was barely dry on the America Invents Act before new demands for patent reform began rolling out of the White House, Congress, state legislatures and agencies determined to address growing concerns about the perceived shortcomings of America’s patent system. In this session, a panel including in-house IP counsel from two of the technology sector’s largest enterprises will join a high-stakes Silicon Valley patent litigator to explore the pending proposals and their potential impacts on the way Silicon Valley legal departments address IP issues.

Inter Partes Review and Covered Business Method Reviews – A Reality Check

Wab Kadaba & Michael Pavento
Kilpatrick Townsend & Stockton LLP

Now part of the patent landscape for more than a year, what lessons have we learned about Inter Partes Reviews and Covered Business Method reviews and how can these proceedings be effectively incorporated into your patent strategy? This panel will examine critical features of IPR and CBM reviews, assess current filing trends and discuss lessons learned and practical considerations for your business. We will also discuss the use of IPR and CMB reviews in conjunction with litigation and the impact of the new rules on patent litigation strategy.

Defending Against NPEs: Updates to Case Law and Strategies

Robert Artuz & James Isbester/Eric Hutchins
Kilpatrick Townsend & Stockton LLP/Oracle Corporation

Despite growing attention from Congress, the President, and the FTC, Non Practicing Entities filed more than half of all patent infringement lawsuits in 2012. As it has previously done when other branches of government make noises about intervening in its jurisprudence, the Federal Circuit and district courts have issued decisions responding to the rise of NPE litigation. In this program we will share updates on the changing landscape of NPE litigation, including recent decisions impacting NPE suits in particular and strategic options if/when you are contacted by an NPE.

Tuning up Your Profits Through Patent Licensing

James Brelsford/Bernard Shek
Skadden, Arps, Slate, Meagher & Flom LLP/SanDisk Corporation

High-margin revenue is music to every CEO's ears, but identifying new sources is challenging. Increasingly, companies are singing a new song: IP monetization. Should your company consider an IP licensing program? What steps should a legal department take to conduct or expand such a program? Our panel will discuss these topics, including the pros and cons of direct licensing or outsourcing it to third parties such as patent assertion entities. You may already know enough to hum a few bars, but this panel could have the CEO and shareholders singing your praises.

International Trade Commission Update

Rachel Krevans
Morrison & Foerster LLP

The relief available in Section 337 proceedings—an exclusion order coupled with cease and desist order—can be an extremely potent weapon against infringing companies and their distributors. But what is the likelihood of success, and at what cost? This ITC briefing will include the very latest in trends and recent ITC decisions from an attorney who has been involved in some of the highest profile proceedings before the commission. Rachel Krevans of Morrison & Foerster will discuss recent enforcement decisions, strategic considerations between bringing district and ITC actions, and advice on working with customs to enforce exclusion orders. She will also provide practical pointers when responding to third-party ITC subpoenas.

IP and Tax – Managing Intercompany Licensing and Acquisitions

Paul DiSangro & James Ferguson
Mayer Brown LLP

In this presentation, IP and tax experts join to provide dual expertise, a balanced perspective, and practical solutions to common structures and issues encountered by large and small Silicon Valley companies. The speakers will address common IP holding company structures and tax planning (including intercompany licensing and cost sharing). The discussion will also touch on tax planning and IP enforcement goals and tensions, and offer solutions in the context of existing regulations and case law. Finally, acquisitions will be discussed, and ways in which IP and tax departments can work together to determine how the acquired IP or IP-owning target will best fit into the existing structure.

The future of software and medical diagnostic patents in light of recent White House initiatives and Supreme Court opinions

Bernard Knight/Douglas Luftman/Michael Harms
McDermott Will & Emery/NetApp, Inc./Medtronic Cardiovascular

Medical diagnostics and software patents have been the focus recently of both the United States Supreme Court and the White House. The Court has breathed new life into the judicially created exceptions to patentability for abstract ideas and natural phenomenon. The White House has announced Executive Actions that must be taken by the USPTO to provide greater clarity to software claims and to combat the ability of patent trolls to hide their ownership of patents. In the Bilski and Mayo decisions, the Court has again rejected bright line tests in favor of a more flexible approach. Although this approach has left many patents in place, it is indeed difficult to interpret the Court’s decisions distinguishing patent eligible method claims from “abstract ideas” and “natural phenomenon.” These decisions make it difficult for the United States Patent and Trademark Office to provide instructions to examiners and for IP counsels to provide guidance to their clients. Bernie Knight, the former USPTO General Counsel, will discuss how the USPTO interpreted these decisions in providing guidance to examiners and in determining litigation positions before the United States Court of Appeals for the Federal Circuit. He also will discuss the USPTO’s role in implementing the White House’s Executive Actions regarding “High-Tech Patent Issues.” David Ruschke, Chief Patent Counsel at Medtronic CardioVascular will provide an expert view on the effect, if any, that the Mayo decision has had on the medical diagnostics industry. Doug Luftman, Chief IP Counsl at NetApp, will provide an insider’s view on the effect of the Bilski decision and the recent White House initiatives on the software industry.

Please Note: Program details are subject to change without notice

Participating Law Firms & Companies