innovations - mcmillan.ca · n monetizing your ip assets: ... protecting your intellectual property...

6
n Surprises from the Federal Circuit: Tackling Recent Federal Decisions n KSR: Obviousness and Strategies For Protecting Your Patent n AT&Tv.Microsoft:Tips on Litigating International Infringement n EchoStar,Seagate: Willfulness and the Use of Opinions of Counsel n Making Strategic Venue Decisions – What are the Pros and Cons? n Learn Effective New Licensing Strategies for Today’s Changing Industry n ITC Remedies: What Are The Options and How Can You Enforce Them? n Reexaminations Today, Post-Grant Review Tomorrow? Current Alternative Strategies and What to Do If the Patent Reform Bill Passes n Damages Apportionment: What Does it Mean for Your Patents? n Monetizing Your IP Assets: Financing Methods for Today and Tomorrow CONFERENCE HIGHLIGHTS: November 9, 2007 The Westin Washington D.C. City Center – Washington, D.C. INNOVATIONS IP LITIGATION A WINTER BRIEFING in Protecting Your Intellectual Property And Maximizing Its Value presents CO-CHAIRS: Brian Nester Principal Fish & Richardson P.C. Mark E. Sullivan, Esq. General Counsel Bose Corporation WELCOME AND OPENING REMARKS: Pamela Sherrid Editor IP Law & Business WHO SHOULD ATTEND: n General Counsel n Chief IP Counsel n Senior In-House IP Counsel n IP Attorneys n IP Advisors IP Professionals Involved in: n Valuing n Protecting and Developing Copyrights, Trademarks and Patents REGISTER TODAY! Call 646.520.4934 n Email: [email protected] www.almevents.com

Upload: trantruc

Post on 29-Jul-2018

214 views

Category:

Documents


0 download

TRANSCRIPT

n Surprises from the Federal Circuit: Tackling Recent Federal Decisions

n �KSR: Obviousness and Strategies For Protecting Your Patent

n AT&T�v.�Microsoft: Tips on Litigating International Infringement

n EchoStar,�Seagate: Willfulness and the Use of Opinions of Counsel

n Making Strategic Venue Decisions – What are the Pros and Cons?

n Learn Effective New Licensing Strategies for Today’s Changing Industry

n ITC Remedies: What Are The Options and How Can You Enforce Them?

n Reexaminations Today, Post-Grant Review Tomorrow? Current Alternative Strategies and What to Do If the Patent Reform Bill Passes

n Damages Apportionment: What Does it Mean for Your Patents?

n Monetizing Your IP Assets: Financing Methods for Today and Tomorrow

CONFERENCE HIgHlIgHTS:WElCOME ANd OpENINg REMARkS

November 9, 2007The Westin Washington d.C. City Center – Washington, d.C.

INNOVATIONS IP LITIGATION

A WINTER BRIEFING

in

protecting Your Intellectual property And Maximizing Its Valuepresents

CO-CHAIRS:Brian NesterPrincipalFish & Richardson P.C.

Mark E. Sullivan, Esq.General CounselBose Corporation

WElCOME ANd OpENINg REMARkS:pamela SherridEditorIP Law & Business

WHO SHOULD ATTEND:n General Counsel n Chief IP Counseln Senior In-House IP Counseln IP Attorneys n IP Advisors IP Professionals Involved in:n Valuingn Protecting and Developing

Copyrights, Trademarks and Patents

REGISTER TODAY!Call 646.520.4934 n email: [email protected]

www.almevents.com

CO-CHAIRS:Brian NesterPrincipalFish & Richardson P.C.

Mark E. Sullivan, Esq.General CounselBose Corporation

WElCOMINg REMARkSpamela SherridEditor in Chief IP Law & Business

FACUlTY lISTgeorge BestPartnerFoley & Lardner

keith BergeltPresident and In-House CounselParadox Capital

Ruffin B. CordellPrincipalFish & Richardson P.C.

paul FehlnerPartnerBaker Botts LLP

Melissa HaapalaSenior Patent CounselSun Microsystems

kiriakoula HatzikiriakosPartnerMcMillan Binch Mendelsohn

libby H. HopeSenior Patent AttorneyPortfolio Manager – Chipsets IP CommitteePatents and Licensing GroupIntel Corp.

A.C. JohnstonPartnerMorrison & Foerster

douglas B. luftmanAssociate General Counsel, Intellectual PropertyPalm, Inc.

William MarsdenPrincipalFish & Richardson P.C.

dax TerrillAttorney Adviser – Office of Regulations and RulingsU.S. Customs and Border Protection

duane ValzVice President and Associate General Counsel, PatentsYahoo!, Inc.

Jeffrey R. WhieldonOf CounselFish & Richardson P.C.

The business role of intellectual property is changing. The last few years have seen a marked increase in the attention paid to our patent laws and their effect on business and innovation. In today’s climate of ever-changing, unpredictable IP law, understanding recent trends is crucial to protecting your client today and tomorrow. Are you ready for what’s next? Do you have the tools to stay ahead of the game? To assist you, IP Law & Business, together with ALM Events, has created

Whether you are in-house counsel or a law firm attorney, this program provides the key updates and new strategies for succeeding in today’s unpredictable IP landscape. Join our expert faculty, led by Co-Chairs Mark E. Sullivan, General Counsel of Bose Corporation, and Brian Nester, Principal at Fish & Richardson P.C., for interactive discussions on today’s most pressing topics, including: n What are the pros and cons of litigating in the top venues? n Has KSR changed the obviousness standard? Is your patent too obvious to be protected? n AT&T v. Microsoft: how do you successfully litigate international infringement in U.S. Courts? n Willfulness: does attorney-client privilege still exist? n ITC Remedies: when are they appropriate and how can you enforce them? n Reexaminations and post-grant review: what are the alternatives? What alternatives will work if the patent

reform bill passes? n Apportionment of damages: what does it mean for patent drafting and valuation, license negotiations and litigation? n Monetizing your IP assets: what strategies work in today’s changing market?

For answers to these questions and much more, plan now to be in Washington, D.C. on November 9th!

a winter briefing

INNOVATIONS IN IP LITIGATION: protecting Your Intellectual property And Maximizing Its Value

a winter briefing

INNOVATIONS IN IP LITIGATION: protecting Your Intellectual property And Maximizing Its ValueNovember 9, 2007 The Westin Washington D.C. City Center

REGISTER TODAY!Call 646.520.4934 n email: [email protected] n www.almevents.com

8:30-9:00 Registration and Continental Breakfast____________________________________________________________________

9:00-9:15 Welcome and Introductionpamela SherridEditor in Chief IP Law & Business____________________________________________________________________

9:15-10:15 Strategic Venue decisions – Tips on Choosing the Right Venue in Today’s Ever-Changing legal landscapeIn 2006, the Central District of California, Eastern District of Texas and North-

ern District of California received the most patent filings. The Southern District

of California, District of Delaware and U.S. International Trade Commission

also remain top choices for patent suits. In today’s ever-changing legal

landscape, join a panel of experts from these top venues to discuss:

n The pros and cons of litigating in the top venues as a plaintiff and defendant

n What you should consider in choosing the right venue

n Recent trends and what to expect in the upcoming months

n How top venues would be affected by the proposed creation of specialty

patent courts

A panel of Fish & Richardson experts, including Ruffin Cordell, Roger A.

denning, William Marsden, Brian Nester and Jeffrey R. Whieldon, will address

the Northern District of California, the Eastern District of Texas, the Central and

Southern Districts of California, the District of Delaware, and the International

Trade Commission. ____________________________________________________________________

10:15-11:05 International Trade Commission Remedies and Their EnforcementThis expert panel, comprised of an attorney who spent 18 years at the

International Trade Commission and an attorney at U.S. Customs and Border

Protection, will examine the types of remedies available at the International

Trade Commission and effective enforcement strategies. Issues to be

discussed include:

n Limited and general exclusion orders

n The effect of settlements in obtaining an exclusion order

n Cease and desist orders

n When to use a certification provision

n Strategies for dealing with downstream products

n The role of the IPR Branch at Customs

n Customs’ role in the enforcement process

dax TerrillAttorney Adviser – Office of Regulations and RulingsU.S. Customs and Border Protection

Jeffrey R. WhieldonOf Counsel Fish & Richardson P.C.____________________________________________________________________

11:05-11:20 Mid-Morning Break____________________________________________________________________

11:20-12:10 KSR�International�v.�Teleflex�– Understanding Obviousness and proActive Strategies for protecting Your patentsA panel of experts will discuss the Supreme Court’s recent decision in KSR

International v. Teleflex Inc. Issues to be discussed include the decision’s

impact on patent litigation and prosecution. The panel will address the

“teaching-suggestion-motivation” requirement for demonstrating that a patent

is obvious, and share new strategies for protecting your patent.

paul FehlnerPartnerBaker Botts LLP

libby H. HopeSenior Patent AttorneyPortfolio Manager – Chipsets IP CommitteePatents and Licensing GroupIntel Corp.____________________________________________________________________

12:10-1:00 AT&T�v.�Microsoft�– Winning Strategies for Avoiding and litigating International InfringementThis session will address the implication of the Supreme Court’s recent deci-

sion in AT&T v. Microsoft, and the expansion of U.S. jurisdiction over activities

occurring outside the United States. This expert panel will discuss how 35

U.S.C. §271(f) has been interpreted and whether companies are protected

against non-U.S. activities. Come and learn new strategies for avoiding inter-

national infringement in U.S. Court, and successfully litigating it.

george BestPartnerFoley & Lardner

Melissa HaapalaSenior Patent CounselSun Microsystems____________________________________________________________________

1:00-2:15 luncheon____________________________________________________________________

2:15-3:05 Willfulness and Use of Opinions of CounselIs reliance on opinions of counsel a defense to inducement? The Federal

Circuit’s recent decision in DSU Medical Corporation v. JMS Co., Ltd. suggests

that it is a defense. EchoStar and Seagate highlight the issues with relying on

opinions of counsel, and the EchoStar progeny contain some pretty shocking

waiver language. This panel discussion will focus on the current state of the

law and expected evolution. Our panel will also provide practical tips on

moving forward.

A.C. JohnstonPartnerMorrison & Foerster____________________________________________________________________

Friday, November 9, 2007

3:05-3:55 Using the Entire Toolbox: Reexaminations today, post-grant Review TomorrowThis session will explore current alternative strategies, and what alternative

strategies might be if the patent reform bill passes. No patent dispute can be

competently addressed without a complete analysis of options at the PTO.

Brian NesterPrincipalFish & Richardson P.C.____________________________________________________________________

3:55-4:10 Afternoon Break____________________________________________________________________

4:10-5:00 Apportionment of damages and New Strategies In the past two years, damages have become more important, as injunctions

are less likely to be granted. The Patent Reform Acts of 2007 propose changes

to damages calculations that could prove challenging to patent owners. Our

expert panel will discuss the current status of the legislation, current strategies,

and what to do if the legislation is passed. Issues to be discussed include:

n Implications of damages apportionment for patent valuation, license

negotiations and litigation strategy

n Implications of damages apportionment for claims strategy in patent drafting

n Importance of patent-savvy economists and damages

experts in appropriate apportionment methodologies

douglas B. luftmanAssociate General Counsel, Intellectual PropertyPalm, Inc.

duane ValzVice President and Associate General Counsel, PatentsYahoo!, Inc.____________________________________________________________________

5:00-5:50 Monetizing Your Ip AssetsIt is not a secret that in today’s global economy, intellectual property assets

have gained considerable importance. There is also a growing awareness that

intellectual property assets can be monetized, that is, companies can use their

IP portfolio to obtain financing. This panel will draw a portrait of the financing

methods and vehicles available for IP assets, as well as the commercial and

legal considerations relating to IP financing.

n Market for IP Financing Transactions

n Financing Vehicles

n Current Status of the Law

n Commercial Considerations

n Case Studies

keith BergeltPresident and In-House CounselParadox Capital

kiriakoula HatzikiriakosPartnerMcMillan Binch Mendelsohn____________________________________________________________________

5:40 Cocktail Reception

On behalf of AIPLA, please join us as we recognize an American Intellectual

Property Law Education Foundation’s 2007 Sidney B. Williams, Jr. Award

Winner:Annora BellStudent, Class of 2008George Washington University School of Law

Special Offer for Attendees: Three Month Complimentary Subscription to Ip law & Business IP Law & Business is THE voice for intellectual property professionals at

firms and corporations alike, addressing the issues most vital to your practice.

Subscribers will receive in-depth information on building, protecting and

profiting from IP portfolios, coverage of the active IP litigation arena, the

business of intellectual property at law firms, and the big deals and suits in

the IP sector. IP Law & Business is an essential resource for anyone who

needs to keep pace with the developments in this fast-moving field. Also

included with your subscription is the annual IP Almanac, chronicling the

year’s most significant changes to intellectual property. To start your free

three month trial subscription to IP Law & Business, check the box on the

registration form. If you wish to continue your subscription for only $99,

a third off the regular rate, you can pay the invoice when it arrives, or you

can write “cancel” on the invoice, return it unpaid, and keep the free trial

issues without any further obligation.

CONFERENCE SpONSORS

Book Your Room Early!Rooms at the Westin Washington D.C. City Center are specially priced for participants of the IP Law & Business Winter Briefing: $239 per person/per night, plus tax, if booked before October 9, 2007. Reserve your room today! Be sure to mention ALM Events. Call 1-202-429-1700.

First Name M.I. Last Name

Title (as it will appear on your badge)

Company/Firm

Address 1

Address 2

City

State Zip Code/Postal Code Country

Phone E-mail Fax

Payment InformationM Visa M Mastercard M American Express M Check enclosed for $_______________________ (Payable to ALM Events®)

Name on Card

Card Number

Expiration

Cardholder’s Signature

Promotion Code

Please enter here any discount codes you were provided Priority/Mailing Code: Please enter the code displayed on the upper right corner of our mailing label

* Job Title:M Agent/Broker M CEO/President/Chairman M Chief Financial Officer (CFO) M Chief Information/Technology Officer (CIO/CTO) M Chief Legal Officer/General Counsel/Corporate Secretary M Chief Marketing Officer (CMO) M Chief Operating Officer (COO) M Consultant M Director/Manager M Executive Management (EVP/SVP/VP/GM/Managing Director) M In-House/Corporate Counsel M Judge M Lawyer, Government M Lawyer, Law Firm Associate M Lawyer, Law Firm Of Counsel M Lawyer, Law Firm Partner M Lawyer, Solo Practitioner M Legal Administrator M Librarian M Litigation Support Manager M Litigation Technology Specialist M MIS Director M Managing Partner M Paralegal/Legal Assistant M Professor M Retired M Student M Systems Administrator

* Job Function/Responsibility:M Corporate/Business (non-legal) Management M Diversity M Finance/Accounting M Human Resources/Training M Information Systems/Technology M Law Department Management M Law Firm Management/Administration M Library/Information Management/Research M Lobbyist/Government Relations M Marketing & Business Development M Office/Facilities/Real Estate Management M Recruitment M VAR

* Practice Area:M Administrative M Admiralty M Alternative Dispute Resolution M Antitrust & Trade Regulation M Banking M Bankruptcy/Creditors & Debtors Rights M Biotechnology M Business M Business Crimes M Civil Practice M Civil Rights & Constitution M Commercial Law M Communications M Construction M Consumer Protection M Copyright M Corporate M Corporate Governance & Compliance M Corporate Transactions M Criminal M Disabilities M Domestic Relations M ERIS M Education M Employment (Private) M Energy & Natural Resources M Entertainment & Media M Environmental M Family M Food and Drug M General Practice M Health Care M Homeland Security M Immigration M Insurance M Intellectual Property M International M Internet & Technology M Juvenile M Labor & Employment M Land Use and Planning M Landlord/Tenant M Litigation M Lobbying & Election M Medical Malpractice M Mergers & Acquisitions M Motor Vehicles M Patent M Personal Injury M Product Liability M Public Utilities M Real Estate M Risk Management M SEC Compliance M Securities M Tax M Torts M Trademark M Trusts and Estates M Unemployment Compensation M Workers’ Compensation

* Firm Type:M Consultant M Government Agency M Law Department M Law Firm M Press M Solo Practice Other: ______________________

* Firm Size:M Solo M 2-19 M 20-39 M 40-99 M 100-249 M 250-499 M 500-999 M 1000+

How To Register• Phone: 646-520-4934 or 212-313-9191• Fax: 212-967-7973• E-mail: [email protected]• Web Site: www.almevents.com• Mail: ALM Events® 333 Seventh Avenue, 9th floor, New York, New York 10001 When you register by phone, fax, or e-mail, please give the following information: the name of the seminar; the dates and location and the code above your name on the mailing label.

CLEContinuing Legal Education Credit [2004 - 2007]

ALM has been certified by the New York State Continuing Legal Education Board as an Accredited Provider of live continuing legal education programs. This program has been approved for experienced attorneys in accordance with the requirements of the New York State Continuing Legal Education Board for a maximum of 8 credit hours. CLE credit is NOT available to transitional attorneys (those admitted to practice two years or less) in New York.

We certify that this seminar has been approved for MCLE credit by the State Bar of California in the amount of 7 credit hours. ALM is a State Bar of California provider.

ALM will apply for approval of seminars in states requiring continuing legal education, subject to the rules, regulations and restrictions dictated by those state organizations. For specific information about CLE contact Lazette Jackson at 646-520-4932 or e-mail [email protected].

Tuition AssistanceTuition assistance is based on need and is available upon application. Special consideration is given to public interest lawyers, government lawyers and recently admitted solo practitioners. To receive an application form, please call our Registrar at 646-520-4932 or e-mail [email protected].

Conference VenueNovember 9, 2007The Westin Washington D.C. City Center1400 M. Street NWWashington, D.C. 2005(202) 429-1700New York, NY 10036

Substitutions and CancellationsSubstitutions may be made at any time. Cancellations are accepted and registration fees refunded (less a 25% cancellation fee) if notice is received in writing by October 19, 2007. If cancellation is received after October 19, 2007, 50% of the fee will be forfeited and the remainder of the fee applied toward another upcoming ALM event (within same calendar year).

If for any reason ALM Events cancels this conference, it is not responsible for any costs (including traveland hotel accommodations) incurred by the registrant. For more information regarding administrative polices such as substitutions, cancellations, refunds, or complaints, you may contact the registration desk at 212-313-9191.

November 9, 2007The Westin Washington D.C. City Center1400 M. Street NWWashington, D.C. 2005(202) 429-1700New York, NY 10036

Early Bird Discount - Before October 12, 2007M Early Bird Single Registration $395M Early Bird Group Registration $295 per person (3 or more)

Standard Registration Fee After October 12, 2007M Single Registration $450M Group Registration $350 per person

(3 or more)

Additional InformationM Please start my free three month trial subscription to

IP Law & Business magazine: [ ] Print [ ] DigitalM Please send me a free subscription of IP Law Business

MagazineM I wish not to receive email from ALM Events

M I wish not to receive email from a business partner of ALM Events

How did you hear about the event?M Association M Brochure M Early Bird Card M Email M Letter / Fax M Magazine AdvertisingM Newspaper Advertising M Newspaper InsertM Phone Call M Postcard M Vendor Invitation Other: ____________________________

RegistrationINNOVATIONS IN IP LITIGATION

a winter briefing

ALM Events

333 Seventh Avenue, 9th Floor

New York, NY 10001

CO-CHAIRS:Brian NesterPrincipalFish & Richardson P.C.

Mark E. Sullivan, Esq.General CounselBose Corporation

WElCOME ANd OpENINg REMARkSpamela SherridEditorIP Law & Business

REGISTER TODAY!Call 646.520.4934 n email: [email protected] n www.almevents.com

INNOVATIONS IP LITIGATION

A WINTER BRIEFING

in

November 9, 2007The Westin Washington d.C. City Center – Washington, d.C.

protecting Your Intellectual property And Maximizing Its Valuepresents