Advanced Patent Law Institute
Thursday & Friday, December 6 & 7, 2018
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Thursday Morning, December 6, 2018 |
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Audio: |
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| 8:00 a.m. | Registration Opens & Continental Breakfast |
Breakfast Sponsored by:
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| 8:50 a.m. |
Welcoming Remarks |
Presiding Officer: |
| 9:00 a.m. |
§101 Update This panel, on a topic of perennial interest, will consider recent developments in patent subject matter eligibility from both prosecution and litigation perspectives. |
Panelists: |
| 10:00 a.m. |
Damages This panel will consider the use of surveys and issues arising under §287(b)(5) as well as extraterritoriality of damages after Western GECO. |
MELISSA PITTAOULIS, NERA Economic Consulting |
| 10:45 a.m. | Break |
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| 11:00 a.m. |
Venue Developments Who is filing where? What cases are being removed and to what districts? Can venue be based on the location of a server hosting a party’s data? What is the role of the Panel on Multi-District Litigation? |
HON. JAMES DONATO, USDC, Northern District of California |
| 12:00 p.m. |
Design Patents Design patents are unique in many ways, not only in the availability of “total profit” damages. This panel will explore the latest developments, including the lower courts’ post-Samsung v. Apple interpretations of “article of manufacture.” |
ALAN HERDA, Haynes and Boone
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Thursday Afternoon, December 6, 2018 |
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Audio: |
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Presiding Officer: CHRISTOPHER J. BYRNE |
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12:30 p.m. |
Networking Lunch |
Lunch Sponsored by: |
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1:15 p.m. |
Multinational Litigation Strategy and Coordination This panel will highlight litigation trends in Europe and Asia, discussing what tech companies and practitioners are seeing and offering best practices for coordinating international litigation and approaching litigation in new international venues. |
MICHAEL HEADLEY, Fish & Richardson RENNY HWANG, Google DAVID KILLOUGH, Microsoft BIJAL VAKIL, White & Case |
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2:15 p.m. |
Obviousness At the PTAB or in district court, on offense or defense, your case may come down to the slippery concept of obviousness – listen in for the latest developments on this foundation of patent law. |
STEVE CARLSON, Robins Kaplan |
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2:45 p.m. |
Litigation Financing Even as the “patent troll” phenomenon has faded, litigation funding for patent cases seems to be growing. When should a patentee consider working with a litigation funder? How can you preserve privilege and work product while the funder conducts due diligence? How much can or should the funder be involved in managing (or settling) the litigation? Are there defense-side analogues to third party litigation funding? What other ethical pitfalls should you look out for when considering working with a litigation funder? |
HARRISON J. (BUZZ) FRAHN, Simpson Thacher
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3:15 p.m. |
Break |
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3:30 p.m. |
Licensing This panel will discuss current issues in patent licensing, using as a hypothetical to introduce the issues an exclusive field-of-use model that facilitates commercialization by identifying specific applications of a particular base technology and bringing them to proof-of-concept stage or beyond, then creating a spin-out entity for each application for acquisition. |
SUZANNE BELL, Covington |
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4:15 p.m. |
New Discovery Rules— The revised discovery practices were announced with much enthusiasm, but the hoped-for cost savings are not materializing. This presentation will address the successes and failures of the revised FRCP discovery rules and best practices for controlling discovery costs in IP cases. |
DEANNA KWONG, HPE |
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4:45 p.m. |
Claim Construction There has been a great deal of confusion over what BRI entails and whether it makes a difference. In what circumstances were BRI and Phillips materially different? Will the switch to Phillips before the PTO change how proceedings are litigated or decided? How does the switch impact choices made in parallel litigation? The panel will address these questions as well as the growing debate over when courts can and should decline to construe terms. |
BARBARA M.G. LYNN, Chief Judge, USDC, Northern Dist. of Texas |
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5:30 p.m. |
End of Day 1 |
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Friday Morning, December 7, 2018 |
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Audio: |
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| Presiding Officer: MACKENZIE MARTIN, Baker & McKenzie | ||
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8:00 a.m. |
Continental Breakfast |
Breakfast Sponsored by:
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| 8:30 a.m. |
AIA Patents in Litigation This session will briefly review what makes a patent an AIA patent, and then highlight some of the specific issues that are likely to arise as AIA patents appear more frequently in litigation. |
Panelists: Moderator: |
| 9:15 a.m. |
Who are you calling a pirate? Willful infringement and enhanced damages Ever since the Supreme Court in Halo adopted a nebulous standard for willful infringement that – no joke – includes the words “characteristic of a pirate,” litigants and lower courts have struggled to determine what kind of “egregious infringement behavior” merits enhanced damages. This panel will examine what facts courts are relying on, which arguments have succeeded…and failed, and whether there’s again a place for opinion letters in enhanced damages practice. |
GABRIEL RAMSEY, Crowell & Moring |
| 9:45 a.m. |
Keynote: The Intersection Between Patent Law and Antitrust |
ASSISTANT ATTORNEY GENERAL |
| 10:15 a.m. | Break |
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| 10:30 a.m. |
Daubert A conversation from multiple perspectives about trends and strategies for supporting and challenging expert opinions in district court. |
HENRY HUANG, Ropes & Gray
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| 11:15 a.m. |
IPR Strategy The Supreme Court’s April 2018 decision in SAS Institute v. Iancu is a game changer for PTAB review proceedings. David Cochran, who represented SAS, will discuss the ruling’s significance, the PTAB’s response, and the strategic implications of the case going forward for both petitioners and patent owners. |
DAVE COCHRAN, Jones Day |
| 11:45 a.m. |
Patents, the PTAB, and Constitutional Law This panel will address whether, in the wake of Oil States, patents are “property” subject to the Takings Clause (as alleged in Christy v. United States); and also whether Congress can validly abrogate the sovereign immunity of states, state universities, and Indian tribes by subjecting sovereign-owned patents to the jurisdiction of the Patent Trial & Appeal Board (particularly in connection with the St. Regis Mohawk Tribe PTAB litigation). |
DAVID BLOCH, Winston & Strawn |
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Friday Afternoon, December 7, 2018 |
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Audio:
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Presiding Officer: DAVID SANKER, Morgan, Lewis & Bockius |
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| 12:15 p.m. |
Lunch |
Lunch Sponsored by:
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12:45 p.m. |
Lunch Keynote: |
ANDREI IANCU, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office |
| 1:15 p.m. | Break |
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1:30 p.m. |
Year in Review A summary of the most important patent law developments in the Supreme Court and Federal Circuit in the past year. |
MARK LEMLEY, Stanford Law |
| 2:15 p.m. |
Accelerating Diversity—What Works and Doesn’t Work? Learn about the concrete actions that law firms and corporations are taking to expand diversity in recruitment, retention and promotions and the impact of the #MeToo movement on inclusion initiatives. |
JESSICA HANNAH, Apple |
| 3:15 p.m. |
Attorneys’ Fees: When Will You or Your Client Be on the Hook? Understand when and why courts sanction parties and counsel, and how to avoid being on the receiving end. |
DARALYN DURIE, Durie Tangri |
| 3:45 p.m. |
IPRs: Coordination & Estoppel In the wake of recent legal and policy developments, coordination between parallel district court and PTAB proceedings has never been more important. The panel will explore the use of district court proceedings at the PTAB, the use of PTAB proceedings in district court, the challenges that parallel proceedings pose for claim construction, and the latest developments in the evolving law of estoppel. |
JARED BOBROW, Orrick |
| 4:15 p.m. |
End of Day 2 |
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