2018 All Hands Meeting
October 16 Session
Advanced IP Track Agenda

9:00AM-10:00AM   Room 203/204
The Patent Trial and Appeal Board: Trends and Developments

Matthew Argenti, Lora Green & Richard Torczon
Wilson Sonsini Goodrich & Rosati PC

The PTAB has a prominent, but rapidly evolving role in the U.S. patent system. A panel including two former PTAB judges will explore developments, including two Supreme Court cases this year on Board patent reviews, Federal Circuit decisions that are rewriting assumptions about PTAB proceedings (even issues once thought to be unreviewable), as well as initiatives from the USPTO Director to reform how the Board works. The panel will also look at possible changes on the horizon that may affect how patent owners and challengers pursue their patent strategies.

10:30AM-11:15 AM   Room 203/204
Patent Litigation Damages Update

Cass Christenson/Nisha Mody
Dentons/OSKR, LLC

The Federal Circuit has issued many recent decisions that dramatically impact how patent damages are calculated and what methodologies or evidence can support a damages claim for patent infringement. Expert witnesses often are caught in the cross-hairs, as virtually every patent case involves Daubert motions asserting that damages experts fail to comply with recent changes in the law. To navigate this evolving area, it is necessary to understand how courts are viewing attacks on damages experts and what issues are most important to recover or limit damages. This session will explore recent trends and developments concerning Daubert motions and damages experts that can make or break a patent case.

11:15AM-12:00PM   Room 203/204
Prosecution Update: What's the Matter with Patentability?

Christopher Eide

It’s not just you - prosecuting valid patents has become more difficult in recent years. Most notably, Alice and post-Alice 101 case law have created difficult and unpredictable examination before the USPTO with respect to the basic understanding of what is patentable subject matter. It’s important to understand what changes have occurred and may still occur in the coming years to position your patent applications to survive examination and possible litigation. This session will explore recent trends and developments at the USPTO and CAFC, with a focus on patentable subject matter.

1:30PM-2:15PM   Room 203/204
The IPRs' Impact on Trial

B.C. Boren & Sarah Guske
Baker Botts LLP

Patent holders and patent challengers watch IPR statistics as carefully as Moneyball managers follow baseball stats, to divine trends in PTAB determinations. Seven years after its signing, the AIA continues to evolve through interpretation and applications. This presentation will discuss recent developments affecting how IPR impacts trial, and the implications for trial strategy going forward.

2:20PM-3:05PM   Room 203/204
Extraterritoriality: A Big Word That Just Got Smaller

Justin Hendrix & Jacob Schroeder

Can your U.S. patent stop infringing conduct overseas? Although U.S. patent rights generally do not extend beyond the borders of this country, sometimes activity overseas may be infringing, such as when a component of a patented invention is supplied from the United States. When building a supply chain and drafting patents, companies should consider how the U.S. patent system may be used to reach foreign conduct and the available remedies. The governing law continues to evolve, with the Supreme Court recently deciding in WesternGeco that damages for infringement may sometimes include foreign lost profits.

3:30PM-4:30PM   Theater
Lessons in Trade Secret Law from Waymo v. Uber

Karen Dunn & Meredith Dearborn
Boies Schiller Flexner LLP

Karen Dunn and Meredith Dearborn represented Uber in this year’s “battle royale” over trade secrets, Waymo v. Uber, which ended in a settlement after four days of evidence. Karen was co-lead trial counsel, and examined Travis Kalanick during Waymo’s case-in-chief; Meredith led the team of Uber’s lawyers working on the jury instructions, which would have blazed new ground on several underexplored areas in trade secret law. Their presentation will focus on three areas: (1) the key legal issues that the case explored, including the “fault line” between California’s strong public policy in favor of employee mobility and trade secrets; (2) how to try a trade-secrets case, particularly one in the media spotlight; and (3) a few practical tips on trade-secret issues for in-house practitioners. Expect a few war stories!

Please Note: Program details are subject to change without notice

2018 Participating Law Firms & Companies