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AGENDA: Thursday, October 1st, 2015

CHAIRPERSON Opening Remarks

The First Line of Defense: A Strong Patent Prosecution Program

Operating companies face a double-edged sword in today’s IP landscape– they must defend market share, protect their IP against rivals and other operating companies, as well as defend against NPEs. Corporations have moved to aggressive monetization models for their IP, paralleled by NPEs bringing a majority of IP infringement and litigation suits. Having strong patents that can withstand infringement claims is a must in today’s environment.

This panel will explore:

  • IP Generation: research, searches, filings and applications
  • Identifying problematic art and FTO issues
  • Working with internal teams: Sales/Marketing, R&D, leadership & building an infrastructure  
  • Strategy: landscape, structuring deals, social media, indemnification

Portfolio Management: Getting Your House in Order

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 solid 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 dilligence in advance and in the moment
  • Creating and implementing your strategy with management buy-in

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

Jury Trial Strategies for Patent Cases

This presentation will explore:

  • Jury research regarding perceptions of patent plaintiffs and defendants
  • Pretrial strategies to build a successful defense
  • Winning at Trial: Theory, Teaching, and Trust

LUNCH 'N' LEARN (Invitation Only)

A Tectonic Shift in Patent Damages: Are patent portfolios about to be crushed?

While Congress, the Supreme Court, and the Patent and Trademark Office have been busy redrawing the meets and bounds of patent property rights, the lower courts have been radically shifting the values attributable to those rights. These shifts are likely to have a significant effect on patent monetization efforts going forward. This session will discuss the latest developments in patent damages including:

• Identifying the “smallest saleable unit” for purposes of calculating an appropriate royalty
• Determining “Reasonable and Non-Discriminatory (RAND)” royalty rates for “standards essential patents”
• Changes to licensing strategies in light of RAND commitments
• Mitigating risk of non-US sales being included in the royalty base

Patent Trial and Appeal Board (PTAB) Developments and Trial Strategy

The discussion will include an analysis of the procedural aspects of PTAB practice, recent developments at the PTO and in the courts, and their impact on case strategy.  Further discussion will include PTAB trial practice strategy and effective techniques before the Board, and mistakes to avoid.
The panel will explore:
Statistics & Developments
• Is institution getting harder?
• Is claim amendment getting easier?
• Will new rules and proposed legislation make a difference?

Petition & Trial Strategy—Experience From Real Cases
• Pitfalls for petitioners (e.g., constructing a petition, real party in interest)
• Pitfalls for patent owners (e.g., use of the preliminary response, discovery, amendment practice)
• Inconsistent decisions at the PTAB
• Preparing for appeal


  1. Unintended Consequences: What Patent Owners Need to Know about Nautilus, Octane, Highmark and Alice
  2. Confronting Trolls in the Cloud
  3. What is Patentable Subject Matter in 2015?
  4. Trade Secrets
  5. Defenses to Functional Claiming
  6. Dynamic Drinkware:  A Trap To Avoid in Your Invalidity Case

Trademark Portfolio Management: Filing and Enforcement Strategies

For some companies, their trademark portfolio is their most valued company asset. Trademarks are more global than ever, and the boundaries of enforcement are of utmost importance to in-house counsel as they consider filing, policing, and enforcing their marks.

This panel will explore:

  • Multi-jurisdictional disputes, including a discussion on strategies of where to file
  • Enforcement boundaries, between vigorous trademark enforcement and improper overreaching
  • Compiling evidence of use or extended use for defense purposes
  • How to determine who can best manage your global portfolio

Defensive Litigation & Trial Strategies

The cold reality is that at some point you are likely to be sued and brought into a patent litigation. 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 and going to trial: working with outside counsel and experts
  • Witness analysis and storytelling through witnesses
  • How to press the advantage and how to bow out