2015 All Hands Meeting
October 29 Session
Advanced IP Track Agenda

Has the Time Come for Post-Grant Reviews?

Stuart Meyer
Fenwick & West LLP

Everyone knows that Inter Partes Reviews and Covered Business Method reviews have become popular proceedings to invalidate patents outside of court, but what of the Post-Grant Review? There have been only a handful of these filed, and for good reason. However, the PGR is likely to become much more important in 2016 for several different reasons. A significant number of qualifying patents will be issuing in 2016, the scary PGR estoppel provisions are likely to be relaxed, and more sophisticated automated techniques are becoming available to identify competitors' patents and evaluate their vulnerabilities in the narrow 9-month PGR window. This discussion will examine the concerns that have made PGR the poor cousin of IPRs and CBMs and detail what is about to change. We will address what companies should be doing now to prepare, both offensively and defensively, for PGRs. For any doubters out there, even if PGRs were to wither on the vine, the practices we outline will help ensure good IP hygiene in any event.

Portfolio Management Strategies

Craig Largent, Paul Haughey & Sean DeBruine/Kevin McLintock/Isik Kizilyalli
Kilpatrick Townsend & Stockton LLP/Logitech, Inc./Avogy, Inc.

Patent Prosecution Strategies – From fundamental research to rapidly changing consumer electronics, companies large and small need to protect the innovation that powers their market success. We will discuss strategies and practice tips for leveraging resources to deliver cost-effective patent protection over a range of product life cycles.

Results and Lessons Learned for Inter Partes Review – The America Invents Act (AIA) established the Patent Trial and Appeal Board (PTAB) to replace inter partes patent reexamination with two inter partes dispute proceedings — inter partes review (IPR) and post-grant review (PGR) — while adding a covered business method (CBM) review proceeding. Strategies for blocking institutions of IPRs (patent owner’s perspective) as well as anticipating attacks on the petition (petitioner’s perspective) will be reviewed with an emphasis on aligning IPR strategy with business objectives.

Patent Litigation Update – Litigation strategies and outcomes in patent cases have been in constant flux as a result of the new post-grant proceedings (IRP, PGR and CBM) and their differing estoppel provisions, the impact of challenges based on unpatentable subject matter under 35 USC Section 101, the proof needed to establish indirect infringement, tightening standards for proof of damages and the prospect of further statutory changes. A discussion of developments and the key considerations for instituting and defending patent infringement suits in this uncertain environment.

Trade Secret Misappropriation: A Discussion on Violation, Accusation, and Legislation

Robert McCauley/William Goldman
Finnegan/Kudelski Group

Advances in technology and employee mobility have increased the threat of trade secret misappropriation. Losses in the U.S. are estimated to be $300 billion each year, and litigation is on the rise. How can your company avoid a trade secret claim when hiring an employee from a competitor? What should your company do if it is accused of trade secret misappropriation, and in the event of litigation, how can it prevent competitor access to its confidential information? Given that many trade secret thefts occur overseas, how can the U.S. International Trade Commission block imported goods that are the fruits of misappropriated trade secrets? What are the impacts and status of Congressional proposals for new legislation to govern trade secret misappropriation? Please join us for a discussion on these topics.

Listening to the Supremes: How Lower Courts Are Implementing SCOTUS Decisions Involving IP Rights

Robert Sloss
Procopio, Cory, Hargreaves & Savitch LLP

A review of how the Federal Circuit and district courts have responded to Supreme Court patent cases decided in 2014 and 2015, and how lower courts’ approaches to the issues have changed regarding:
  • Exceptional cases/award of attorneys’ fees
  • Patent eligible subject matter/sec. 101
  • Divided infringement
  • Indefiniteness/sec. 112
  • Standard of review re claim construction (Teva)
  • Scienter for indirect infringement and opinion of counsel on invalidity

TTAB Year in Review: Latest Developments

Lisa Greenwald-Swire/Shannon King/Ron Sarian/Denise Yee
Fish & Richardson, P.C./Chevron Corporation/eHarmony, Inc/Visa

This panel will take a closer look at some of most talked-about cases in the Trademark Trial and Appeal Board (TTAB) over the past year. Panelists will discuss key decisions since 2014 and provide best practices for brand owners and trademark applicants. Topics discussed during the panel will include:
  • The Supreme Court’s recent decision in B & B Hardware regarding the preclusive effect of TTAB decisions.
  • Two key disparagement cases concerning the marks REDSKINS and THE SLANTS.
  • Cases addressing genericness, distinctiveness, and descriptiveness.
  • Cases addressing likelihood of confusion and dilution claims.
  • Cases addressing fraud claims and the use of sanctions.
  • Precedential procedural and evidentiary decisions.

Please Note: Program details are subject to change without notice

2015 Participating Law Firms & Companies