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AGENDA: Tuesday October 13th, 2015

Defensive Portfolio Management & Due Diligence Strategies

A strategic approach to patent portfolio management must include a robust defensive element. Patents that protect your company's products and outmaneuver your competition are the keys to success. This panel tackles how to develop a robust IP portfolio and to establish and defend your market position.

This panel will explore:

  • Aligning your portfolio with business goals - Is it protecting your organization?
  • Evaluating your portfolio's strengths and weaknesses
  • Conducting due diligence in advance and in the moment
  • Creating and implementing your strategy with management buy-in

Preparing for Litigation: Getting Battle-Ready

The cold reality is that at some point you are likely to be sued and brought into a patent litigation. Proper preparation is vital. As the risks have increased over the last 5-10 years, so has the complexity. There are more and more factors to consider when defending: What should you expect, what is working, and when should you fight at all costs?

This panel will explore: 

  • Preparing for litigation: evaluating case validity, tackling internal challenges, conducting eDiscovery, and developing a strategy
  • Preparing for trial: working with outside counsel and experts
  • Witness analysis and storytelling through witnesses
  • How to press the advantage and how to bow out

The Latest Developments In Sec. 101: Light At the End of the Tunnel? Or a Train Headed Our Way?

Description: The Supreme Court’s decisions interpreting Sec. 101 continue upending well-entrenched assumptions in patent litigation and patent prosecution. Both the courts and the PTO are seeking procedures and rationale that strike the appropriate balance between rewarding inventors and protecting the public. Caught in the middle, lawyers and clients struggle to understand a landscape that seemingly has no solid footing. This session will seek to bring to clients an improved level of clarity on these issues, in particular:

• How we got here: a brief summary of recent Supreme Court Decisions;
• Which industries are feeling the impact of the current situation most and why, e.g., life science and digital technology;
• What are the Courts doing with respect to the procedures and substance of dealing with the application of Sec. 101, and what does that mean for litigants;
• What is the PTO doing to apply Sec. 101, including its latest guidances, and what does that mean for patent applicants; and
• Possible statutory fixes under consideration.

Defending with Post Issuance Proceedings

The AIA created three pseudo-litigation proceedings for challenging patents after issue: post-grant review, inter partes review, and CBM, plus the new supplemental examination. These proceedings provide opportunities to raise the risk factor on potential plaintiffs and potentially stop litigation in its tracks—if you can utilize them strategically.

This panel will explore:

  • IPR - is the "Patent Killer" still so deadly?
  • How to effectively utilize the proceedings to get what you really want
  • Defensive strategic implications of the new proceedings
  • Cost and timing considerations


Informal, interactive 20-minute roundtable discussions.

  1. Alice and its impact on your IP Strategy
  2. Strategies for Maximizing Effectiveness of Northern District of Illinois and/or Post-Grant Proceedings
  3. Managing your defense counsel on a budget
  4. 3D Printing
  5. Using the New Law of Attorneys’ Fees to Your Benefit
  6. The Strategy of District Court Litigation vs. IPR in view of recent appellate decisions

Defending Against NPEs - Fight or Flight?

The majority of IP infringement and litigation suits are brought on by NPEs. However, there is no “one size fits all” strategy for dealing with them, so IP leaders must develop a coherent understanding of when to fight and when to settle.

This panel will explore:

  • Identifying what NPE you're facing and the specific threat it poses
  • Strategies to deter NPEs at the outset
  • Risks and benefits of "taking a stand"
  • Joint defense groups

KEYNOTE INTERVIEW: Defensive Trial Strategies: Let the Games Begin

Defending IP cases can pose unique challenges when you go to trial, as the material is complex and new to jurors. Plus, this may be the first time that senior management is involved in this type of trial, and the stakes can be high. What are the best ways to manage the trial and how can you run it so that you achieve your goals?

This panel will explore:

  • Calculating risk factors
  • How strong is their case, really?
  • Working with outside counsel
  • Settlement & post-trial strategy