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