Thursday & Friday, December 12 & 13, 2019
Four Seasons Hotel, East Palo Alto, CA
Thursday Morning, December 12, 2019 |
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| 8:00 a.m. | Registration Opens
Continental Breakfast |
Breakfast sponsored by: |
| 8:50 a.m. |
Welcoming Remarks |
Presiding Officer: |
| 9:00 a.m. – 10:30 a.m. |
§101 Today: Challenges and Strategies This panel, on a topic of perennial interest, will consider recent developments in subject matter eligibility from both the prosecution and litigation perspectives, with a focus on high tech, life sciences, and the convergence of the two industries. Powerpoint: Section 101 Today: Challenge and Strategies |
Yar Chaikovsky, Paul Hastings Moderator: |
| 10:30 a.m. – 10:45 a.m. |
Break |
Break sponsored by:
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| 10:45 a.m. – 11:30 a.m. |
Innovative Case Management An exploration of the latest trends in case management, including the timing of §101 and summary judgment motions, stays, claim narrowing, and damages contentions as well as trial presentation topics, such as timed trials. |
Daralyn Durie, Durie Tangri |
| 11:30 a.m. – 12:15 p.m. |
Third Party Interests This session will consider “real party in interest” and privity issues, which have been hotly contested in the PTAB, as well as the latest views of the Federal Circuit on standing, exploring the connection between the RPI and privity issues and customer/supplier relationships, corporate relationships, and patent defense organizations. |
Anne Cappella, Weil, Gotshal & Manges |
| 12:15 p.m. – 1:00 p.m. |
Lunch |
Lunch sponsored by:
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Thursday Afternoon, December 12, 2019 |
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Presiding Officer: Mackenzie Martin, Baker McKenzie |
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1:00 p.m. – |
International Litigation Strategy and Coordination This panel will highlight litigation trends in Europe and Asia, offering best practices for coordinating international litigation. It will also address the real-life business impact of the different remedies available in international v. U.S. litigation and will consider licensing strategies and coordination between litigation and prosecution. |
Andrew Thomases, Ropes & Gray Moderator: |
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1:45 p.m. – |
Section 112: Recent Cases and Functional Claiming This session will review recent developments, focused on Section 112’s written description requirement in the life sciences and proposed legislative changes to functional claiming under Section 112(f). Powerpoint: Section 112: Recent Cases and Functional Claiming |
Jill Schmidt, Genentech Sue Wang, Sidley & Austin |
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2:15 p.m. – |
Break |
Break sponsored by:
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2:30 p.m. – |
Antitrust Debate continues to swirl around antitrust and tech, with various agencies staking out different positions. This panel will explore antitrust and unfair competition concerns for standards bodies and standards essential patent (SEP) licensors and implementers, the decisions in FTC v. Qualcomm, and recent antitrust developments for life sciences companies. Powerpoint: FTC vs. Qualcomm and Other Recent Antitrust Developments in High Tech and Life Sciences |
DJ Healey, Fish & Richardson |
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3:30 p.m. – |
Licensing and Transactions A discussion of practical considerations in licensing and other agreements involving IP rights, including issues related to SEP licensing, choice of forum clauses, assignments involving some but not all patents in a family, spinouts, acquisitions, and university technology transfers. Powerpoint: Ron Laurie (single slide) |
Marta Beckwith, TechSea Law Moderator: |
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4:15 p.m. – |
Must Inventors Be Human? … and Other Questions About AI Building on the PTO’s August 27 Request for Comments on artificial intelligence and patents, this panel will consider a range of questions, including whether there are any eligibility considerations unique to AI inventions, what is or should be the law where AI contributes to the conception of an invention, and does AI impact the level of a person of ordinary skill in the art? Powerpoint: Must Inventors Be Human?… and Other Questions about AI |
Laurie Rose Lubiano, Climate |
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4:45 p.m. – |
Damages A discussion of the role of damages contentions in patent litigation: aspirations, appropriate requirements, and consequences, including recent experience/decisions from the Northern District. Powerpoint: Damages Contentions: Theory and Practice |
Paul Bondor, Desmarais Moderator: |
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5:30 p.m. |
Reception |
Reception sponsored by:
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Friday Morning, December 13, 2019 |
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| Presiding Officer: Matthias Kamber, Keker, Van Nest & Peters | ||
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8:00 a.m. |
Continental Breakfast |
Breakfast sponsored by:
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| 8:30 a.m. – 9:15 a.m. |
Attacking & Defending Imports at the ITC Insights on recent developments in navigating exclusion orders, evolving standards for domestic industry, and effectively presenting the public interest factors. Powerpoint: Attacking & Defending Imports at the US International Trade Commission |
Paul Ehrlich, Tensegrity Law Group |
| 9:15 a.m. – 9:45 a.m. |
PTAB: Precedent/Rules The panel will address many current issues at the PTAB, including POP panels and other precedential opinions, the updated Trial Practice Guide, the pilot program for amending claims during AIA proceedings, and amending claims during one or more reissue proceedings. Powerpoint: PTAB: Constitutionality/Precedent/Rules |
Peter Chen, Covington |
| 9:45 a.m. – 10:30 a.m. |
IPR Strategy: Claim Construction and Estoppel Considerations A unified Phillips-type claim construction standard, evolving estoppel standards, discretionary denial, and case/court-specific timelines all shape strategy for patent litigants. This session will identify some tips and traps. |
Nick Brown, Greenberg Traurig |
| 10:30 a.m. – 10:45 a.m. |
Break |
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| 10:45 a.m. – 11:45 a.m. |
Less Awareness, More Action: How to Effect Real Change in Diversity and Inclusion
Diversity and inclusion are top of mind for most of the tech industry and for policymakers (see, e.g., the SUCCESS Act). This panel will explore policies for promoting diversity, including hiring guidelines by tech companies that request that their outside counsel align with their customer base and with the population in general. What tactics are being used to promote diversity and inclusion, what are the metes and bounds of hiring requests, and do they have teeth? Have companies changed their purchasing decisions based on, or otherwise incentivized, compliance? How are law firms coping with these requests? |
Colleen Chien, Santa Clara Law School Moderator: |
| 11:45 a.m. – 12:30 p.m. |
Valuation, Prosecution and Metrics This panel will examine the considerations that should inform patent valuation and how departments can leverage data to make better decisions regarding portfolio valuation. Powerpoint: Patent Litigation and Marketplace Update |
Jeremiah Chan, Facebook Moderator: |
| 12:30 p.m. – 1:00 p.m. |
Lunch |
Lunch sponsored by: |
Friday Afternoon, December 13, 2019 |
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Presiding Officer: Christopher J. Byrne |
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1:00 p.m. – |
Willfulness and waiver of privilege Juries love willfulness evidence and are using it to determine infringement—no wonder willfulness allegations are becoming a staple of today’s patent litigation. Successful defense against willfulness often turns on anticipating and managing privilege waiver of in-house counsel and company decision makers. Powerpoint: Willfulness and Privilege Waiver |
Steve Carlson, Robins Kaplan |
| 1:45 p.m. – 2:15 p.m. |
Attorneys’ Fees A look at how the law on exceptional cases and attorney misconduct has developed in the five years since Octane Fitness, including whether (and how) courts have changed the way they analyze attorney misconduct and how the rules of ethics play into this analysis. Powerpoint: Exceptional Cases- Five Years After Octane Fitness |
Alyssa Caridis, Orrick |
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2:15 p.m. – |
Break |
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| 2:30 p.m. – 3:15 p.m. |
From Servers to Car Dealerships: Venue and Transfer This panel will review the ever-evolving caselaw applying the In re Cray venue factors to interpret “regular and established place of business of the defendant.” Powerpoint: From Servers to Car Dealerships: Venue and Transfer |
Vera Elson, Wilson Sonsini
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| 3:15 p.m. – 4:00 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 |
CLE: 13.75 hours, including 1.25 hours in Legal Ethics and 1 hour in Elimination of Bias
(THURS: 7.25; FRI: 6.50, incl. 1.25 Ethics and 1.0 Elim. 0f Bias)