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AGENDA: Thursday, March 19th, 2015

Patent Prosecution: Producing Enforceable Patents

The biggest challenge facing patent prosecution programs post Leahy Smith: America Invents Act isn’t the first to file provision.  It is, instead, the issue of producing patents that can survive Post Issuance Proceedings.  Producing enforceable patents is the best way to create a strong foundation for your portfolio and give you more options when it comes to enforcement.

This panel will examine:

• Landscape and impact of AIA and ALICE 
• Implementing feedback from portfolio evaluation
• Competitive landscape and intelligence
• Ranking caliber of R&D and potential fillings

Preparing For Enforcement & Litigation

The AIA was intended to change the filing process and help combat the NPE problem; however, post issuance proceedings, IPRs and CBMs make it a hostile enforcement environment. Preparing for any type of enforcement action, including litigation, is now the key to be successful.

This panel will examine:

• The difference between rivals and operating companies
• Due diligence on potential licensees & infringers
• Preparing for litigation
   o Case history
   o Unifying your team
   o Working with outside counsel
   o Building your strategy

Going To Trial: Enforcement Focused Strategies

The stakes are high and your reputation could be on the line. Have you picked the right law firm? Are your patents going to hold up? Will your witness come through in court? Is management ready to go the distance? These and many more questions come up as your prepare for trial. Hear how seasoned IP leaders have prepared and run effective trial campaigns.

This panel will examine:

• Preparation – the key to success
• Getting management buy-in
 Developing the story
• Preparing witnesses
• Mock trails
• When to settle?

Surviving The Patent Killer: Navigating Post Issuance Proceedings

Over 2500 requests for Inter Partes Reviews (IPRs) and Covered Business Method (CBM) have been filed in the short time these new proceedings have been available. The first wave of these decisions are now reaching the Federal Circuit.  Fundamental issues to be decided in these imminent appellate decisions may include:

• Whether the PTAB has the authority to institute IPRs on grounds not identified in the Petitions.
• Whether the “broadest reasonable interpretation” standard is the proper standard for claim construction, instead of the narrower standard enunciated in Phillips v. AHW Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005).
• Whether CBM reviews may be instituted based on 35 U.S.C. § 101 challenges.
• Whether the Director’s decision to institute an IPR is reviewable under the Administrative Procedure Act.

This presentation will explore the strategic impact of these important decisions. How will they affect pending and new proceedings? Do they impact patent prosecution or litigation strategy?


Lunch’n’Learn (Invitation Only)

Utilizing the ITC in your Enforcement Strategy

This session will explore how companies can use the rapid pace and global reach of the International Trade Commission, the most effective venue for combating patent and other intellectual property infringement, as part of an overall enforcement strategy. Former ALJ Carl Charneski and Managing Partner Lyle Vander Schaaf will provide practical advice on how companies should revise and update their ITC strategies in light of recent decisions from the Supreme Court and Federal Circuit.

Presented by Brinks Gilson & Lione


Roundtable Discussions Hosted By Topic Experts On The Following Topics:


Implementing a Trade Secrets Protection Program

Real Party-In-Interest and Privies and How They Affect Your Filings

The Proposed STRONG Act and your Enforcement Strategy

Better understanding the competitive landscape and your Freedom To Operate

Managing Litigation Costs

The cost of an average patent lawsuit is $1.6 million through the end of discovery and $2.8 million through final disposition. If you have multiple litigations in a year, the total can top $20 million. As an enforcer, keeping litigation costs down gives you  more strategic options.

This panel will examine:

• Due diligence on your defendant
• E-discovery and administrative costs
• Working with outside counsel
  o Setting budget criteria
  o Perspectives on a successful relationship

How Will Infringers Defend Themselves?

The current environment is more favorable to defendants—so they won’t be pulling out their checkbooks without a fight. The best way to overcome these defensive strategies is to prepare for them in advance.

This panel will examine:

 Due diligence – know you infringers’ go-to strategies
• The difference between core and non-core
• Common mistake made
• Defensive trends