2018 All Hands Meeting
October 16 Session
Technology Agreements & E-Commerce Track Agenda

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

Andrew Thomases/Vani Suvarna
Ropes & Gray/Verily Life Sciences

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   Theater
Adventures in Blockchain-Friendly Commercial Transactions

Glynna Christian/Andrea Tinianow/Kevin Rothman/Jay Hull
Orrick, Herrington & Sutcliffe LLP/Global Kompass Strategies/American Express/Integra, Inc.

Automating commercial agreements in whole or in part is taking a giant leap forward as companies around the world incorporate distributed ledger technology into contracts. In this presentation, a panel of counsel will discuss their successes, failures, and future plans for incorporating and accommodating revolutionary new tools for forming and executing contracts.

1:30PM-2:15PM   Theater
Responding to Aggressive Auditing of Technology Licenses

Arthur Beeman & Joel Muchmore
Crowell & Moring LLP

If your company is a customer of a major database management system vendor, odds are that you are currently in the middle of an audit, or will be in the near future. Unfortunately, the unprepared customer can be surprised by aggressive vendor auditing tactics, including unexpectedly expansive inquiries into system architecture, an eventual audit report that alleges unforeseen (and often hotly contested) licensing shortfalls, and a demand to correct in as little as 30 days.  Auditing policies by one major supplier can directly affect hundreds of thousands of business customers, including most of the Fortune 500, with downstream effects on broader markets.

Using Oracle licensing audits as a primary example, Arthur S. Beeman and Joel T. Muchmore, the lead attorneys in the Mars v. Oracle matter (the only publicly-filed complaint addressing Oracle's licensing and auditing techniques) will cover the following topics regarding licensing audits:
  • A typical audit "script," including the key role of a licensee's use of virtualization software;
  • The limit of a typical licensee's contractual obligation to respond to requests for litigation;
  • Responding to the audit report and findings;
  • Closing an audit without compromising a licensee's interests through restrictive replacement agreements;
  • Identifying potential remedies and protecting the record in the event of litigation; and
  • Licensor endgame (moving its licensees to its cloud hosting services).

2:20PM-3:05PM   Theater
Risk Allocation – Drafting and Negotiating Effective Indemnity and Limitation of Liability Clauses in Commercial Contracts

Anthony Klein & J.D. Marple
Latham & Watkins LLP

This presentation will provide practical tips to help you avoid some common pitfalls in core risk-allocation provisions. We will explore in particular indemnity and liability limitation provisions, and discuss best practices and negotiation strategies in the context of commercial contracts and IP licenses.

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