AGENDA: Thursday, October 27, 2016

The management of your IP portfolio is the nexus of key components: prosecution, portfolio management due diligence and alignment with business goals. From working with R&D, deciding what to file, what to keep, the competitive landscape and how to manage your portfolio, all are central to your success as an IP leader. This panel tackles how to use a combination of offensive and defensive approaches to develop a robust intellectual property strategy that aligns with your business goals.

This panel will explore:

• Portfolio management and prosecution as the innovation gatekeeper
• Patent Prosecution in the era of IPRs, CBMs, ALICE and Octane
• Due Diligence: Internal analysis, competitive landscape and the business goals
• Evaluating your portfolio's health: Signs of vitality and red flags

IP professionals are taking a close look at Trade Secrets, especially if their products can’t be reverse engineered or hacked. In light of the DTSA, how should IP professionals view trade secrets? The human element is always the most difficult to manage with trade secrets: managing employees and running the program can be labor intensive. Clearly, there are advantages and disadvantages to trade secrets.

This panel will examine:

• Trade Secrets Vs Patent: What are the criteria for using trade secrets?
• How can Trade secrets be used in tandem with Patents
• Key elements of running a trade secrets program
• What happens when there is a breach?

Enforcing your IP rights in 2017 is going to be complicated. Before litigating an important question to ask is how is this serving the business needs? Is your case as strong as you think? Does Management have the fortitude to follow through? Do you have the internal resources in place? Are you working with the right outside counsel?

This panel will examine:

• Internal Due Diligence – are your patents strong enough?
• Aligning your enforcement strategy with your business goals
• Managing internal resources, Management, R&D, legal team – Are you ready?
• Engaging outside counsel & managing costs
• The keys to litigation success – prepare to succeed or prepare to fail

If you have an IP portfolio, innovative products, or produce substantial revenue, you will get sued. Whether you are accused of infringement from an NPE or another operating company, IP litigation is a risky business with high stakes. Today’s environment still favors the defendant, but what strategies are effective and efficient today?

This panel will examine:

• You will get sued: proactive preparation strategies
• What to do when approached: Engaging and understanding motivation
• Preparing your defense: Buy time, maximize resources, know the endgame
• Anticipating enforcement strategies and formulating your responses
• Considering the consequences when defending against rivals

Four 15-minute interactive discussions hosted by experts on the following topics:
(Attendees are in-house counsel only, with the exception of the Moderators)

• Roundtable 1: Unintended Consequences: What Patent Owners Need to Know About Nautilus, Octane, Highmark and Alice
  Moderator: Phil Colburn, Co-Managing Partner, Cantor Colburn

• Roundtable 2: The Madness in the Method: Valuing, Enforcing and Drafting Method Claims in light of Recent Decisions
  Moderator: Matthew Siegal, Partner, Stroock & Stroock & Lavan LLP

• Roundtable 3: Hot Topics in IP Damages: Evolving Case Law
  Moderator: Dana Trexler Smith, Partner, EisnerAmper

• Roundtable 4: A New Era: How the Changes to the Pleadings Standard are Affecting Patent Litigation  
  Moderator: Jeremy Oczek, Member, Bond Schoeneck & King

Click HERE for more information

Companies are increasingly recognizing the value of their data as a business asset and the opportunities to drive revenue from their data. In order to protect data, companies are moving to intellectual property rights through patents, trade secrets, copyright laws and licensing agreements.

This panel will examine:

• How data is protected as IP:
  • Trade secret
  • Copyright
  • Patent protection
  • Data as an intangible property
• Approaches to Data Licensing:
  • License scope
  • Original vs Derived
  • Considerations & payment terms

What will 2017 hold in store for Post Issuance Proceedings? The PTAB statistics have shifted slightly making PIP favorable to the defendant, but not quite the patent killer that it was. Have the weak and badly crafted patents been flushed out of the system?

This panel will examine:

• How is the environment? And where are we heading?
• An overview of PTAB statistics and what they are telling us
  • Do we have enough to start benchmarking?
• The impact on NPE defense
• Pitfalls to avoid and strong strategies to employ
• How should this fit into your overall litigation strategy?

Uncertainty & Lack of Clarity:

• Questionable fairness of AIA review procedures
• Inconsistent results between PTAB and courts
       - Uncertainty of validity under the KSR “Common Sense” doctrine
• Growing uncertainty for owners and investors
• Short sellers filing IPRs to manipulate market prices (Kyle Bass and Spanberger)

Damages and Enforcement:

• Damages: New limitations on calculations
• Revising venue to limit resort to Eastern District of Texas
• Problem of abusive demand letters
• Disadvantaged smaller entities who cannot afford litigation

What’s Coming Next?

• Patent policy of the new Administration
• Fate of patent reform bills in 2017