AGENDA: Tuesday, October 24th

The enforcement environment is currently complex and challenging. In order to enforce or monetize your patents they must be well crafted and your portfolio managed effectively. A push to quality has been balanced against budgetary pressures and a need to focus only on important international jurisdictions. The confidence to enforce gives your organization an advantage but it all starts with strong patents.

This panel will examine:

• Prosecution, portfolio management and enforcement: The current landscape
• Effective patent prosecution: Can you make your patents IPR-proof?
• Motivating engineers and inventors
• Portfolio management: A more stringent ranking of current patents
• What can you learn from the competitive landscape?

Patent owners’ approach to Post Issuance Proceedings is savvier and there has been talk of the tide turning. However, in the first quarter of 2017, overall patent survival rates were 21.5% which is an improvement but still a daunting statistic. The good news is there are tried and tested strategies for surviving the PTAB and achieving your organization’s objectives.

This panel will examine:

• Proactive strategies: How to prepare for IPRs?
• How will petitioners look to derail your enforcement with IPRs?
• What to expect and how to present at the PTAB?
• What pitfalls should you avoid?

The consistent message is that this enforcement environment is tough. Interestingly, litigation was only down 9% last year, with the biggest drop coming in NPE litigation. Comparatively, Operating Company vs Operating Company litigation has remained consistent year over year. Companies still enforce when they believe their innovation and patents are being infringed. The stakes are high - revenue, market share, and stock price are all on the line. What are some best practices to achieve your goals?

This panel will examine:

• Be ready: Prepare to succeed or prepare to fail
• The difference between facing rivals and non-core operating companies
• Due diligence on potential infringers
• Pushing for the right settlement
• Gearing up to go to trial

Is it still possible for an operating company to run a profitable and effective IP monetization program? As budgets tighten, IP departments are increasingly seen as cost centers. Running some form of monetization program could offset cost and take pressure off IP resources. What do you need to successfully run a monetization program in today’s environment?

This panel will examine:

• Purpose – What’s driving your monetization efforts?
• Evaluating the portfolio and identifying the monetization opportunities
• Running a licensing program
  • Is the company committed?
  • Paper tigers beware – enforcement needs to be a real option
  • Organizational buy-in:
    • Overcoming internal obstacles
    • Working and clashing with other divisions
    • Winning support
  • What due diligence to run on your licensee?
• Selling patents
  • How to package patents and portfolios?
• Spin-offs and corporate transactions

Four 20-minute roundtable discussions hosted by a topic expert.
(Attendance is for in-house counsel only – except moderators)

Roundtable 1: ‘Unintended Consequences of Nautilus, Highmark, Octane & ALICE for Patent Owners’
Moderated by: Phil Colburn, Co-managing Partner, Cantor Colburn

Roundtable 2: 'Trade Secrets Enforcement'
Moderated by: Thomas Fitzpatrick, Partner, Pepper Hamilton 

Roundtable 3: 'Post Issuance Proceeding Strategies'
Moderated by: Thomas King, Partner, Haynes & Boone

Roundtable 4: 'IP Monetization for Operating Companies'
Moderated by: Jonathan Caplan, Partner, Kramer Levin Naftalis & Frankel

Click here for more info.

The Waymo LLC v. Uber Technologies, Inc. case is garnering a lot of attention because of the big brands involved. However, the focus on trade secrets is not a new phenomenon. Budget cuts and complex enforcement proceedings have made trade secrets a viable alternative for safeguarding IP. To protect and enforce trade secrets, you must be willing to manage and enforce internally as well as when there is a breach. In addition to trade secrets issues, organizations now also need to contend with cyber security threats and deploy data protection measures.

This panel will examine:

• Lessons learned from current big name trade secrets litigation
• Internally, are you a trade secrets paper tiger? Policy, training education, but no bite?
• Security considerations with trade secrets
• Managing devices: Smart phone, laptops and tablets
• The DTSA: The law and options

The number of patent cases going through the ITC has risen sharply with 54 cases instituted in 2016. Interest in the ITC can be attributed to favorable market share outcomes compared to damages with IPR proceedings. There are benefits, but is the ITC the right venue for your organization? What must you consider when making your decision? Who should be involved in the decision-making process? 

 This panel will examine:

• Recent development at the ITC
• When does the ITC make sense it/when doesn’t it make sense?
• How to prepare?
• How best to use ITC in parallel proceedings?
• What to expect?