AGENDA: Wednesday, November 15th

07:30 AM
08:30 AM
Portfolio Management & Patent Prosecution in the Era of IPRs, ALICE & OCTANE

Internal and external due diligence and evaluation are fundamental to running an effective portfolio and prosecution strategy. Companies are addressing the challenges posed by IPRs and decisions like ALICE and Octane, by filing less and focusing efforts on risk avoidance and business alignment. Additionally, foreign filings are getting more strategic in order to balance budget and protection.

This panel will explore:

  • Prosecution: A push to quality
  • Portfolio management: Balancing risk avoidance & building market share
  • Business alignment: What does that mean?
  • Due diligence: Internal analysis, competitive landscape and business goals
  • Evaluating your portfolio's health: Signs of vitality and red flags

09:15 AM
Protecting and Enforcing Your Trade Secrets

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 phones, laptops and tablets
  • The DTSA: The law and options

10:00 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. More and more tactical matters are taking center stage from pre-trial evidence preparation, to jurisdiction selection, and picking the filing strategies that give you the best arsenal to attack infringers. What do you need to consider to protect your patents in China?

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 preparing an IP plan in China

10:50 AM
11:30 AM
Enforcing with Confidence: Lessons Learned in a Post-IPR Landscape

Enforcing IP rights has become less of an uphill battle than in 2015 and 2016. Patent owners are better informed; preparing stronger cases, with a greater understanding of how to navigate Post Issuance Proceedings. The pendulum may be swinging to a more balanced environment, but the advantage is still with the defendant. In order for enforcement efforts to succeed they must be tied to the needs of the business, with clearly mapped out goals and defined end-game strategy.

This panel will examine:

  • How has enforcement evolved over the last two years for operating companies?
  • In the real world of an in-house counsel, what does aligning enforcement with business goals mean?
  • How can you be prepared for success?
  • What type of defensive strategies will infringers use against you?
  • Engaging outside counsel & managing costs

12:15 PM
Post Issuance Proceedings for 2017 and Beyond: Plaintiff and Defensive Perspectives

Patent owners are less fearful of IPRs and they understand how to game-plan for success. Petitioners are likewise prepared and recognize that the process still gives them an advantage. Increased proficiency on both sides has resulted in higher IPR costs, making budget planning an essential part of the litigation preparation process.

This panel will examine:

  • Outlook of the IPR environment: Where are we heading?
  • An overview of PTAB statistics and what they are telling us
  • How should this fit into your overall litigation strategy?
  • Patent owner strategies: There is light at the end of the tunnel
  • How petitioner strategies work against seasoned patent owners 

01:00 PM
01:05 PM
LUNCH 'N' LEARN: Protecting the Crown Jewels: IP Assets in Distressed Transactions

IP assets often play a key role in the company’s operations, supporting distinctive products and services, and on the company’s balance sheet supporting the company’s ability to borrow and pursue financial goals. During this Lunch & Learn presentation, we will discuss examples of deal structures in distressed transactions involving pharmaceutical and medical device collaborations, IP licensing transactions, software licenses, and debt financings and restructurings where the role of IP needs to be carefully managed for success.

(Limited seating - sign up required)

02:15 PM
Roundtable Discussions
Four rotating, 20-minute discussions hosted by a topic expert.
(Attendees are in-house counsel only – except moderators)
  • Roundtable 1: 'Unintended Consequences: What Patent Owners Need to Know about Nautilus, Octane, Highmark and Alice'
    Moderated by: Phil Colburn, Co-Managing Partner, Cantor Colburn
  • Roundtable 2:  Competitive Intelligence: Efficient Ways to Monitor Your Environment’
    Moderated by: Eric Moran, Team Lead - Sales Engineer, Questel
  • Roundtable 3: 'Cross-border Patent Strategies for the U.S. and Europe'
    Moderated by: Christopher Carroll, Partner, White & Case LLP
  • Roundtable 4: 'Post Issuance Proceedings Strategies'
    Moderated by: Reza Mollaaghababa, Partner, Pepper Hamilton LLP

Click here for more information.

03:35 PM
04:05 PM
Defensive Strategy 2.0: Facing a Better Prepared Plaintiff

The pro-defendant environment has created a leaner and better prepared plaintiff. Operating companies are less intimidated by litigation than they were two years ago. Crucial lessons have been learned; stronger cases are being presented, weaker patents have been culled and threatened portfolios have been bolstered. Is your defensive strategy proactive and ready?

This panel will examine:

  • Understanding the new litigation landscape: Defensive perspectives
  • Be proactive and be prepared: Is it possible?
  • Preparing your defense: Maximize resources and know the endgame
  • Anticipating enforcement strategies and formulating your responses
  • “It depends”: Effectively partnering with outside counsel

04:50 PM
KEYNOTE: Doing more with your IP: A Halliburton Case Study

This keynote will explore maintenance of current active patents within your portfolio, addressing core, secondary and tertiary patents. We’ll further explore management of large portfolios with an emphasis towards using your current IP database as a tool to size outcomes, cut costs and facilitate better business decision making.

05:35 PM