2018 All Hands Meeting
October 16 Session
Advanced IP Track Agenda

9:00AM-10:00AM   Room 210
Pitfalls in Intellectual Property Licensing: Litigation and Transactional Perspectives and Lessons Learned

Andrew Thomases
Ropes & Gray

This presentation covers strategies and practice tips for drafting intellectual property licenses while keeping future litigation in mind. Transactional lawyers will learn about litigation risks associated with certain contract drafting strategies in order to maximize the chances of success during litigation or avoid costly litigation all together. Litigators will learn about the implications of various contract provisions that can influence trial strategy. Don’t wait for the opposing party in litigation to tell you how you should have drafted that intellectual property license!

10:30AM-12:00PM   Room 210
USPTO Prosecution Update/Patent Litigation Damages Update

Christopher Eide & Robert Kramer

1:30PM-2:15PM   Room 210
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 210
Extraterritoriality: A Big Word That Just Got Smaller 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   Room 210
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 tradesecrets, 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 and 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