Centerforce Roundtables are informal interactive 20 minute discussions which provide an excellent opportunity to exchange professional insights with peer-level IP Experts. The sessions bring together attendees in confidential, dynamic, cross-industry groups to learn from each other’s experience and discuss common themes.
Reasons to attend?
Gain practical insights from your peers and share your own discoveries with others. Only real life examples and educational discussions.
Small entrepreneurial enterprises and multinational corporations use the cloud to extend their innovation, products and services across the globe. Examples include retailers, music and video streaming services, and mobile application providers. Patent trolls look to capitalize on the the success of these operations by collecting royalties for patents related to distributed systems that support commercial transactions and online services.
In-house counsel often faces troll license demands and threats of litigation that are not attributable to a single supplier of technology for their company’s cloud platform, which
includes IT infrastructure and cloud services from multiple providers. Counsel must sort though a collection of terms and conditions from various suppliers that may not result in any supplier taking ownership of the troll’s claims – leaving in-house counsel to deal with the troll.
Our roundtable discussion will cover strategies to identify weaknesses in the troll’s allegations and drive down royalty expectations to a point that eliminates or reasonably settles the dispute. As part of our discussion, we’ll cover the evolving law around functional claiming, divided infringement, venue, attorney fees, and patentable subject matter, as well as negotiating tactics.
Recent attempts by the courts to combat patent troll behavior and protect patent holders are, unintentionally, hurting all patent holders. With Alice, software patents are placed in jeopardy, with Nautilus, the Court changed the standard for proving indefiniteness, and with Octane and Highmark, fee shifting is likely to become more common and may deter legitimate lawsuits. We will discuss strategies to protect your portfolio in a changing and challenging landscape.
Companies face the oft-times conflicting tasks of protecting and pursuing their own trade secrets as well as defending against claims of misappropriation of trade secrets from competitors. Our roundtable discussion will focus on practical ways to address the myriad issues surrounding trade secrets protection, claims and litigation, such as:
Our roundtable discussion will address functional claiming issues. Functional claims are often asserted in litigation because their scope is broad. We will focus on litigation strategies for challenging such claims as invalid (e.g., indefinite; lack of full scope enablement; lack of written description support) or not infringed (e.g., Section 112(f); reverse doctrine of equivalents).
Functional claims recite a desired result or function, rather than a particular way of achieving it. Such claims may encompass far more than what the inventor actually invented and disclosed. In several older cases, the Supreme Court invalidated such claims as indefinite where the functional limitation was at the point of novelty. In response, Congress authorized such claims but, in Section 112(f), limited their scope to the corresponding structure in the specification. Nevertheless, the Federal Circuit has often approved functional claims, including in computer software patents, without limiting their scope. Recently, the Federal Circuit has questioned its approach, for example, recently ruling en banc that functional limitations should more often be limited to corresponding structure in the specification. We expect functional claiming to be a focus of litigation defense strategy in the next few years.