AGENDA: Tuesday, March 6, 2018

08:00 AM
09:10 AM
Building a Defensive IP Strategy: Leveraging the Favorable Landscape

The landscape has long been favorable to the defendant, but recent decisions are pointing towards the patent owner. As the winds shift, are you leveraging your defensive strategy beyond IPRs? If patent owners do bring a case now, it will be a strong one; so the ability to be prepared with your defensive strategy is key. Preparing your resources, team and portfolio means you will be less reactive.

This panel will explore:

  • Preparing your defense and aligning with organizational resources
  • Scenario planning: What to do when approached?
  • Anticipating enforcement strategies
  • Considering the consequences: Going beyond just the financials

10:00 AM
The “New Normal”: A Push to Quality in Prosecution and Portfolio Management

Quality patents are the only way forward in your filings and portfolio in today's post AIA landscape. To overcome legal and business challenges, companies must be more thorough in core elements like portfolio management, patent prosecution and resource allocation. Meeting these fundamental shifts means counsel must go beyond the standard clearance efforts and engage stakeholders at all levels of the organization to achieve a fully aligned patent strategy.

This panel will explore:

  • Portfolio management and alignment to core organization goals
  • Developing a more sophisticated patent prosecution strategy
  • Portfolio evaluations: Due diligence, market competitiveness and
    internal analysis
  • People, process and resource coordination

10:50 AM
11:25 AM
Enforcement as an Operating Company

IPRs have made patent enforcement a tougher and more complex undertaking. Nevertheless, it remains a crucial tool in safeguarding the essential business assets that are patents. You have to understand what’s in your portfolio, the capabilities of the opposition and most importantly be ready to face an IPR. Successful enforcement requires communication across the organization as well as buy-in from high level decision makers.

This panel will explore:

  • The keys to litigation success: Prepare to succeed or prepare to fail
  • Engaging outside counsel & managing costs
  • Reevaluating and updating IP enforcement plans
  • Running more in-depth due diligence
  • Allocating and managing resources 

12:15 PM
Trade Secrets in Your IP Strategy: Business Alignment, Implementation & People

As uncertainty at the PTAB and the threat of invalidity complicate patenting, trade secrets are becoming a new strategic option for IP leaders. At its core, a successful trade secret strategy relies on two equally important factors: people and process.

This panel will explore:

  • The business choice between trade secrets and patents
  • Developing and maintaining a trade secrets process
    • Key elements in program development
  • The human factors and implementation
    • Education
    • Engagement
    • Reinforcement
    • Procedures
  • Proactive and preventative measures
  • Responses to a breach

01:05 PM
01:45 PM
Dessert & Coffee Presentation - Litigation Trends in 2018 & Beyond

Is 2018 shaping up to be a year of profound change? There is considerable fallout from the TC Heartland case shifting some lawsuits away from the Eastern District of Texas and pushing more into Delaware and California. The tide of post-Alice opinions may be turning in favor of patent owners, as the Federal Circuit has recently acknowledged that the Section 101 inquiry may involve factual issues precluding summary judgment of invalidity.  With SCOTUS deciding two important cases (the Oil States Case and SAS Institute), and with the arrival of a new Director of the USPTO, there could be a shakeup at the PTAB.

 This panel will explore:

  • TC Heartland – repercussions

·    What is a “Regular and established place of business?”

·    Potential increases in Multi-District Litigation

  • Genuine Factual Disputes Post-Alice: Recent Federal Circuit Opinions

·    Aatrix Software, Inc. v. Green Shades Software, Inc.

·    Berkheimer v. HP Inc.

·    How genuine factual disputes as to whether a claimed invention transforms an invention into “well understood, routine and conventional activities” may weaken the power to resolve cases early on Alice grounds

·    How patent owners can persuasively argue that validity should not be resolved on a motion to dismiss or on summary judgment

  •  Supreme Court Opinions Affecting the PTAB

·    The Constitutionality of post-grant proceedings before the PTAB: Oil States

02:20 PM

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

Roundtable 1: 'Problems and Pitfalls in Patent Annuity Pricing'  
Moderated by: Cary Levitt, Chief Operating Officer, Dennemeyer

Roundtable 2: 'How we Expect the Trump Administration’s New Appointees to the DOJ and FTC to Apply the Antitrust Laws to IP Practices'
Moderated by: William Diaz, Partner, McDermott Will & Emery

Roundtable 3: 'Protecting your IP from Departing Employees'
Moderated by: Kristin Cleveland, Partner, Klarquist Sparkman LLP 

Roundtable 4: 'The Hybrid In-House/Outside Counsel Patent Prosecution Model – What Works'
Moderated by: Tom Chen, Partner, Haynes and Boone

Roundtable 5: 'Offensive Strategies Under the Current Venue and PTAB Regimes'
Moderated by: Bryan Kohm, Partner,  Litigation, Fenwick & West LLP

Click here for more details.

04:00 PM
04:30 PM
The Evolution of Post Issuance Proceedings (PIP) Strategy

Running a successful IPR demands greater sophistication from all stakeholders. Patent owners are adapting to the tougher landscape and petitioners still have great odds of being successful. Judges have also adapted, and seem to have evolved their thinking and process. As both petitioners and patent owners gain more experience and in-house and outside counsel gain more sophistication, opportunity arises to benchmark the evolution of PIP.

 This panel will explore:

  • Where are PIP heading next? What does the environment look like?
  • Hazards to avoid and PIP best practices
  • How can you transform your litigation strategy?
  • Future trends and crucial lessons learned

05:20 PM