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The 3rd Annual IP Defense Summit: Chicago

07:30 am
08:30 am
The Evolution of Patent Prosecution and Portfolio Management

The defensive IP landscape is changing, so both prosecution and portfolio management strategies must evolve. The pro-defendant environment has made plaintiffs smarter and their cases more powerful. An operating company’s prosecution and crafting of patents must be stronger while surviving the test of time. Portfolios need to protect current and future products and market share, but also give organizations the ammo to fire back at plaintiffs.

This panel will examine:

  • The current defensive IP landscape and how it has changed in the last 12 months
  • Crafting strong patents and your filing strategy
  • An evolved and adaptable portfolio strategy
  • Business alignment in the real world

09:20 am
CASE STUDY - IP Litigation in China: How to Defend and Protect Your Patents in Today’s China

As China’s IP landscape evolves, the critical issues in enforcing your IP rights are now less about local protectionism and more about the pre-trial evidence preparation in absence of discovery, the selection of jurisdiction, the choice of defensible, evidence-prone patents, and the filing strategies that give you the arsenal to attack infringers. 

This presentation will cover:

  • The perception or misperception of IP enforcement/remedy in China
  • What it takes to enforce or defend your IP positions using real-life litigation experience
  • Patent filing strategies unique to the Chinese market, in line with enforcement and validity
  • The risk of not taking IP measures or strategies in China

10:10 am
10:50 am
NPE Defense: What is the New Normal?

NPE litigation appears to have slowed down with a reduction in the number of middle market NPEs. However, ankle biter NPEs are still being a nuisance and threats are coming from both new and larger NPEs with adapted strategies, budgets and portfolios. This activity is creating a tough operating environment. Cost/benefit analysis may not be the best first approach.

This panel will examine:

  • The new NPE hierarchy
  • Dealing with ankle biters
  • The new NPEs & the patent Ogres: Evolving NPE strategy
  • When to go full “Newegg” and when to settle hard

11:40 am
Operating Company vs Operating Company Litigation: A Proactive Defense

The lesson of the last three years is that when operating companies litigate, their cases have merit, their patents tend to be stronger and they are ready for post issuance and trial. Operating companies are not intimidated by the prospect of going after infringers. Organizations must have a proactive defensive strategy and not simply hope the odds are stacked in their favor.

This panel will examine:

  • How can you prepare for litigating against operating companies?
    • 101 Defenses
  • Managing and preparing resources
  • Working, partnering and managing law firms – going beyond “it depends”
  • Understanding your end-game
  • Witnesses and story development
  • The difference between effective versus vanilla expectation management 

12:30 pm
01:30 pm
Roundtable Discussions

Interactive roundtable discussions hosted by a topic expert. 
(Attendance is for in-house counsel only – except moderators) 

Roundtable 1: 'Navigating Inbound Licensing and Litigation of Standard-Essential Patents (SEPs)'
Moderated by: Charles McMahon, PartnerMcDermott, Will & Emery

Roundtable 2: 'Willful Infringement'
Moderated by: Jay Nuttall, Partner, Steptoe & Johnson LLP

Roundtable 3: 'Problems and Pitfalls in Patent Annuity Pricing'
Moderated by: Dan Bikus, Business Development Manager, Dennemeyer

Roundtable 4: 'Fee Shifting in Patent Litigation'
Moderated by: Tom Duston, Partner, Marshall, Gerstein & Borun LLP

Roundtable 5: 'Competitive Intelligence: Efficient Ways to Monitor Your Environment'
Moderated by: Benjamin Dez, Senior Sales Engineer, Questel

Click here for more information.

02:50 pm
03:20 pm
Risk Management & Strategic Defensive Litigation

Understanding how to manage risk before, during and after litigation is one of the fundamental skills for in-house counsel. The ability to understand the strengths and weaknesses of your portfolio allows you to avoid litigation without looking like an easy mark or weak. Understanding your main internal resources enables you to be more proactive, whether litigation comes from an operating company or an NPE. The partnership with your law firm, when run effectively, minimizes risk and allows the litigation process to move towards your business goals.

This panel examines:

  • Risk management and the competitive landscape
  • How to avoid litigation
  • Defensive litigation and your portfolio
  • Managing risk during litigation
  • Partnering with your law firm

04:10 pm
2017 Defensive Perspectives on Post Issuance Proceedings

Patent owners are more sophisticated and less intimidated when it comes to post issuance proceedings, especially IPRs. Both in-house counsel and especially outside counsel understand how patent owners can survive IPRs. There is also uncertainty around the USPTO – statements say one thing, stats say another. Petitioners need to be prepared for tougher and more complex post issuance proceedings.

This panel will examine:

  • How to best utilize post issuance proceedings, especially IPRs
  • What to expect from patent owners
  • How to change or evolve your strategy
  • Best practices in front of the USPTO
  • What we can learn from the USPTO: The stats and their statements

05:00 pm
Ethical Issues for In-house IP Counsel

This session outlines various ethical issues in intellectual property:

  • Ethics in leadership and business
  • Ethical frameworks
  • Ethics related examples/circumstances that occur in an intellectual property heavy environment; including but not limited to internal ethics processes, regulations and legal mandates

06:00 pm