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AGENDA: Thursday, April 21, 2016

07:30 am
08:30 am
Crafting Patents for Monetization & Enforcement

What are the criteria for crafting patents that give your organization the best monetization and enforcement options in today’s challenging environment? The ability to license, sell and enforce effectively gives your organization a strong advantage, but it all starts with strong patents.

 This panel will examine:

  • The new IP landscape – How challenging and complex is it 
  • Patent Prosecution: the gate keeper for innovation & R&D
  • More stringent ranking of potential fillings
  • Can you make your patents IPR-proof?
  • What can you learn from the competitive landscape

09:20 am
A Patent Owner’s Guide to Surviving Post Issuance Proceedings

Everyone has seen the data: Post Issuance Proceedings still give the advantage to defendants. Post Issuance Proceedings - especially IPRs and CBMs - are infringers and defendants’ best tool to delay, deflect and invalidate. The good news is plaintiffs can now benchmark which strategies can effectively navigate through post issuance proceedings.

This panel will examine:

  • Proactive strategies– Hint: expect to face IPRs and CBMs
  • How are infringers using Post Issuance when facing:
    • IPRs
    • CBMs
  • Pitfalls to avoid
  • Most effective strategies

10:00 am
10:50 am
Pre-Trial Litigation Strategy

As the litigation landscape becomes more complex, the plaintiff’s advantages have now become even more important. The ability to plan, prepare and foresee the potential defenses that you may face will give you an advantage. Once the litigation commences, managing and executing that plan gives your organization the best opportunity to achieve its goals.

This panel will examine:

  • Prepare to succeed or prepare to fail
  • The difference between facing rivals and non-core operating companies
  • Due diligence on potential infringers
  • Preparing for litigation:
    • Case history
    • Building your team
    • Working with outside counsel
    • Building your strategy

11:00 am
Settlement & Trial Strategy – Your End Game

As the plaintiff, what are the best ways to achieve your end game? Litigation is most likely going to end in settlement (during or before trial). While a settlement gives your organization consistency, it may not achieve your long term strategic goals. If you go to trial, what are the best ways to leverage your advantage and achieve your organizational goals? How can you run your end game to close your litigation successfully?

This panel will examine:

  • What is your goal
  • What are the most effective ways to reach settlement
  • How to best utilize your witnesses
  • What is the story
  • Undermining their case/story – “big bad corporation coming after us”

12:30 pm
12:35 pm
Lunch ’n’ Learn: IP Enforcement in 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 Lunch & Learn 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

01:45 pm

Four rotating 20 minute discussion hosted by a topic expert on the following topics:

1. "Unintended Consequences of Nautilus, Highmark, Octane & ALICE for Patent Owners" 
Phil Colburn – Co-managing Partner, Cantor Colburn

2. "Best Practices in Invention Disclosure Management & IP Budget Forecasting" 
Joseph Corrales, Strategic Account Manager, Questel

3. "Concurrent Litigation Proceedings" 
Jonathan Tuminaro – Director, Sterne Kessler

4. "Trade Secrets Enforcement"
Tom Fitzpatrick - Partner, Pepper Hamilton


5. "The 2 Chair Patent Drafting Model"
Varun Shah -
Principal Patent/IP Attorney, Precision IP



03:05 pm
03:35 pm
Portfolio Analysis & Due Diligence for Monetization

There are two types of analysis and due diligence when it comes to monetization – internal and external. In today’s landscape, in order to successfully license, sell or transfer technology you must understand which are your best patents, why they give you the best opportunity to drive value, and which patent to let go? The external work is understanding the competitive landscape: what companies to target and why? Crucially, where are the gaps in the market that you can leverage for organizational success?

This panel will examine:

  • Internal analysis:
    • What’s in your portfolio
    • What to look for
    • Red flags
    • IP Valuation – what is your portfolio worth
  • A penny saved – a penny made
    • What to keep, sell, license, cut
  • External Analysis
    • Competitive Analysis
      • Where are the monetization opportunities
      • Due diligence – where are the gaps

04:25 pm
Running a Licensing Program – An Operating Company Perspective

Successful licensing programs are utilizing an array of tools: strong internal communication, handling management expectations and securing their buy-in, as well as being open to new, win-win deal structures. The fundamentals, however, still apply although the time lines may be longer and the deals more complex. How can an operating company run a licensing program in today’s landscape?

The panel will examine:

  • Why are you running a licensing program
    • Is the company committed
    • Paper tigers beware – enforcement needs to be a real option
  • Organizational Buy-in:
    • Setting expectations
    • Gaining support from important internal partners
    • Internal obstacles – working and clashing with other divisions
  • Licensee as:
    • Infringer
    • Partner
    • Customer
      • The engagement of your licensee
  • What due diligence to run on your licensee

05:15 pm