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| Overview | Back to Top |
Come to the heart of Silicon Valley, and join leading judges and practitioners from major corporations such as Google, Yahoo!, and Genentech. This conference is jointly sponsored by the Berkeley Center for Law & Technology at UC Berkeley and the Stanford Program in Law, Science & Technology.
| Program for Patent Law - Santa Clara | Back to Top |
THURSDAY
MORNING
Presiding Officer(s)
Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA
Presiding Officer(s)
Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA
| 8:00 am | Registration Opens Includes continental breakfast. |
| 8:50 am | Welcoming Remarks |
| 9:00 am | Obviousness After KSR In KSR, the Supreme Court changed the standard for obviousness. This session will explore the impact of the KSR decision. Is it really easier to win summary judgment of obviousness? How are obviousness cases tried to the jury? What can you expect by way of a jury instruction? What is the role of secondary indicia of non-obviousness? |
Daralyn J. Durie Keker & Van Nest, LLP - |
| 9:30 am | Current Licensing Issues: Exhaustion and Implied License Doctrines after MedImmune and Quanta This session will address how recent Supreme Court decisions affect some vital substantive and procedural aspects of patent licensing. Discussion will include the impact of these recent cases on (i) the drafting of licensing provisions designed to restrict the rights of licensees' customers and downstream business partners; (ii) the drafting of provisions regarding the rights of licensors and licensees when a licensing agreement or the patents underlying it come into dispute; and (iii) strategy and tactics for resolving disputes over licensing agreements, including where and when a patent can be challenged in litigation, and the effect of such a challenge on the ongoing licensing relationship. |
Robert P. Merges Berkeley Center for Law & Technology - Keith E. Witek Advanced Micro Devices, Inc. - |
| 10:30 am | Break |
| 10:45 am | Developments in Claims Construction |
Matthew D. Powers Weil, Gotshal & Manges LLP - |
| 11:15 am | Disasters in Litigation: What Patent Prosecutors Could Have Done to Prevent the Carnage Ten case histories, with disastrous results for the patentee, will be discussed. In each instance there will be suggestions as to what the patent prosecutor could have done to avoid the bad result. |
Richard A. Killworth Dinsmore & Shohl, LLP - Dale S. Lazar DLA Piper - |
THURSDAY
AFTERNOON
Presiding Officer(s)
Christopher J. Byrne, National Semiconductor - Santa Clara, CA
Presiding Officer(s)
Christopher J. Byrne, National Semiconductor - Santa Clara, CA
| LUNCHEON PRESENTATION Sponsored by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP |
| 12:15 pm | Pick Up Buffet Lunch Included in conference registration. |
| 12:40 pm | The Shocking Truth about Patent Litigation: Data from the IP Litigation Clearinghouse Professor Lemley will present preliminary findings from the most comprehensive collection of patent litigation data in the country, including the real truth about how many patent trolls are out there, whether defendants copy inventions, and the best district to get your patent case to trial (hint: it's NOT the Eastern District of Texas). |
Mark A. Lemley Stanford Law School - |
| 1:10 pm | Break |
| CONCURRENT SESSIONS |
TRACK A: LITIGATION TRACK
| 1:30 pm | Forum Selection This presentation will discuss the various ways jurisdictions are managing patent infringement cases, provide certain statistical data related to various fora, identify the popularity of various jurisdictions, and provide estimated average times to trial in some of the popular jurisdictions. The presentation will also discuss the various considerations with proceeding in some of the more popular jurisdictions. |
I. Neel Chatterjee Orrick, Herrington & Sutcliffe LLP - |
| 2:00 pm | IP Enforcement in the Wake of eBay: Obtaining Injunctive Relief at the U.S. International Trade Commission. The near-automatic issuance of injunctions against patent infringers ended with the Supreme Court’s decision in eBay that now requires a showing of irreparable injury, proof that monetary remedies are inadequate, a balancing of hardships between the patent owner and the infringer, and a public interest analysis. However, the U.S. International Trade Commission (ITC) has found that its issuance of exclusion orders prohibiting further importation of infringing articles into the United States is not limited by the decision in eBay. The discussion concludes with a survey of the procedural and substantive requirements for these ITC investigations, as well as the logistics and strategy of handling these cases in the wake of eBay. |
Paul C. Goulet Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - |
| 2:30 pm | E-Discovery and Spoliation A discussion of the impact of the new rules, their interpretations, and practical suggestions for electronic evidence. |
Barbara A. Caulfield Dewey & LeBoeuf LLP - Richard Finkelman Navigant Consulting, Inc. - Phillip B. Philbin Haynes and Boone, LLP - |
| 3:15 pm | Top 10 Do’s and Don’ts for Trial Practice Trying IP cases, especially patent cases, is half science / half art / half experience / half theatre, with a little law thrown in to avoid complacency and maintain adrenalin flow, with the further challenge that one important part of your audience isn't even in the room. While nothing is written in stone about trials, certain "have to's" and "never should's" become apparent . Ten of these do's and don'ts will be the focus of this (warhorse's) presentation. |
Kenneth R. Adamo Jones Day - |
| 3:45 pm | Break |
TRACK B: CORPORATE TRACK
Presiding Officer:
Christopher J. Byrne, National Semiconductor - Santa Clara, CA
Presiding Officer:
Christopher J. Byrne, National Semiconductor - Santa Clara, CA
| 1:30 pm | Strategic Patent Monetization: Brokers, Auctions, Acquisitions and Due Diligence This panel will address the difference between private sales and auctions, understanding valuation expectations, the value of marketing materials from the buyers perspective and the key due diligence issues on which to focus. |
John A. Amster RPX Corp. - Gary J. Edwards Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Joseph K. Siino Yahoo! Inc. - |
| 2:30 pm | When to Hold, When to Fold: Litigation Judgment and Settlement Strategies in Patent Cases Deciding when and how to settle patent cases, and which cases to take to trial, is a critical business decision that requires not only an assessment of the risks and benefits in a specific case but also a strategic sense of the long-term interests of the company. This panel of in-house counsel will discuss the various factors to consider and provide an overview of the different approaches taken by companies. |
Michelle Lee Google, Inc. - Lisa McFall Yahoo! Inc. - |
| 3:15 pm | Offshore Holding Companies for IP: Licensing and Tax Issues A company's intellectual property is often its most valuable asset. It is also generally the asset that is the easiest to move across borders. An IP holding company can help to significantly reduce a U.S. company's worldwide effective tax rate, or it can lead to a large tax bill from the IRS. This session will identify opportunities and pitfalls involved in setting up an international IP holding company and address the issues that may arise. |
Ward S. Connolly Fenwick & West LLP - |
| 3:45 pm | Break |
| RETURN TO GENERAL SESSION |
| 4:00 pm | Judicial Panel Leading district court judges discuss effective litigation procedures and practices. |
Moderator: Vernon M. Winters Weil, Gotshal & Manges LLP - Hon. Jeremy D. Fogel U.S. District Court, Northern District of California - Hon. Marilyn Hall Patel U.S. District Court, Northern District of California - |
| 5:00 pm | Adjourn |
FRIDAY
MORNING
Presiding Officer(s)
James Pooley, Morrison & Foerster, LLP - Palo Alto, CA
Presiding Officer(s)
James Pooley, Morrison & Foerster, LLP - Palo Alto, CA
| 8:30 am | Declaratory Judgment Jurisdiction: Case Law and Practical Application MedImmune turned declaratory judgment standards and licensing tactics on their heads. Or did it? Are patentees still able to negotiate with potential licensees or collaborators without opening themselves up to an invalidity challenge? This session will explore both sides of the equation by discussing declaratory judgment actions by potential infringers and patent licensees, and attempts by patentees to avoid such actions, in and out of the licensing context. We will discuss specific applications of the standard post-MedImmune, evaluate emerging licensing strategies, and predict how courts will respond to the changing environment. |
Karen Boyd Patent Mediation and Consulting - Gary H. Loeb Genentech, Inc. - |
| 9:15 am | Litigation and Counseling Lessons After Seagate In its August 2007 en banc decision In Re Seagate Technology, LLC, the Federal Circuit rewrote the rules of the game relating to willful patent infringement. Overruling 24 years of case law stretching back to the 1983 Underwater Devices case, the Federal Circuit held that the duty to exercise due care to avoid infringing others patents did not necessarily include the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity. From the perspective of a little over a year later, this panel will discuss what the district courts have done with Seagate and how the Seagate opinion has impacted both litigation and counseling in high-stakes patent matters. |
Heidi Keefe White & Case LLP - Lee Van Pelt Van Pelt, Yi & James - Matthew F. Weil McDermott, Will & Emery - |
| 10:00 am | Antitrust and SSO Developments A discussion of recent developments in antitrust cases concerning IP issues arising in standard setting. |
Daniel M. Wall Latham & Watkins LLP - |
| 10:30 am | Break |
| 10:45 am | The Return of Patentable Subject Matter After a decade of dormancy, section 101 is back, with a tough new set of standards in the PTO and a troika of new Federal Circuit cases limiting the patentability of software, business methods, and processes. Learn how to navigate the new minefield in prosecution and litigation. |
Robert D. Fram Covington & Burling LLP - Mark A. Lemley Stanford Law School - Michael J. Shuster Fenwick & West LLP - |
| 11:30 am | Remedies: Reasonable Royalties, Apportionment, Injunctions and Compulsory Licenses In the past two years, the patent remedies landscape has undergone dramatic change. Tried and true remedies--such as permanent injunctive relief--may no longer be available in some cases. How has eBay been applied, and how have courts addressed future infringement when injunctive relief is denied? Is the entire market value rule being rethought as Congress pushes "apportionment" to rein in damages? Can the royalty base ever extend beyond US borders after AT&T v. Microsoft? This session will review these changes and discuss their implications in patent practice today. |
Kelly C. Hunsaker Fish & Richardson, PC - Julie S. Turner Turner Boyd LLP - |
FRIDAY
AFTERNOON
Presiding Officer(s)
Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA
Presiding Officer(s)
Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA
| LUNCHEON PRESENTATION |
| 12:15 pm | Pick up Box Lunch Included in conference registration. |
| 12:35 pm | Top 10 Ethics Issues for Patent Practitioners In terms of frequency and severity, what are the top ten ethics issues for patent practitioners? What recent suits and publicized fiascoes illustrate those issues? |
John Steele Fish & Richardson P.C. - |
| 1:05 pm | Break |
| 1:20 pm | Inequitable Conduct A review of current issues relating to the inequitable conduct defense, as framed by recent Federal Circuit decisions, and a discussion of best practices to avoid charges of patent unenforceability. |
Robert J. Goldman Ropes & Gray, LLP - |
| 1:50 pm | Joint Defense Strategies and Agreements A recent explosion of multi-defendant patent lawsuits has led to a proliferation of joint defense groups to respond to these suits. This panel will explore the various types of joint defense arrangements and the benefits--and pitfalls--of each. The discussion will range from the formation of a joint defense group, preparation of joint defense agreements, use of common counsel and experts, utilization of a common defense strategy prior to litigation, and execution of joint defense strategies in practice throughout litigation (from preparation of the answer through trial). It will also discuss ethical and practical considerations facing defense groups as a result of indemnification disputes or other competing interests. |
Jonathan S. Kagan Irell & Manella LLP - Michael M. Markman Covington & Burling LLP - Mallun Yen Cisco Systems, Inc. - |
| 2:35 pm | Reexamination and Litigation: When Worlds Collide When Congress instituted the patent reexamination process (ex parte in 1980, and inter partes in 1999), it intended to simplify the process of reviewing the validity of U.S. patents. The result has been anything but simple. Increasingly, reexaminations are being used not as a replacement for litigation, but as a litigation tactic. When litigation and reexamination collide, numerous questions are raised about whether the procedures can or should run in parallel, whether the court proceeding should be stayed, and how the findings in one proceeding impact the other. Using both case studies and empirical analysis, these issues will be explored. |
Yar R. Chaikovsky Sonnenschein Nath & Rosenthal LLP - Ralph Eckardt Institute for Progress - |
| 3:20 pm | Indirect Infringement: Method Claims and International Issues A review of the law and strategy involved when litigating method patent claims in the United States against overseas manufacturers, including the challenges of proving contributory or induced infringement and damages. |
Sean P. DeBruine Alston + Bird LLP - |
| 3:50 pm | Adjourn |
| Conference Faculty | Back to Top |
|
Kenneth R. Adamo
Jones Day Dallas, TX John A. Amster RPX Corp. San Francisco, CA Karen Boyd Patent Mediation and Consulting Palo Alto, CA Barbara A. Caulfield Dewey & LeBoeuf LLP East Palo Alto, CA Yar R. Chaikovsky Sonnenschein Nath & Rosenthal LLP Palo Alto, CA I. Neel Chatterjee Orrick, Herrington & Sutcliffe LLP Menlo Park, CA Ward S. Connolly Fenwick & West LLP Mountain View, CA Christopher A. Cotropia Intellectual Property Institute, University of Richmond School of Law Richmond, VA Sean P. DeBruine Alston + Bird LLP Palo Alto, CA Daralyn J. Durie Keker & Van Nest, LLP San Francisco, CA Ralph Eckardt Institute for Progress Boston, MA Gary J. Edwards Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Richard Finkelman Navigant Consulting, Inc. Irvine, CA Hon. Jeremy D. Fogel U.S. District Court, Northern District of California San Jose, CA Robert D. Fram Covington & Burling LLP San Francisco, CA Robert J. Goldman Ropes & Gray, LLP Palo Alto, CA Paul C. Goulet Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington, DC Kelly C. Hunsaker Fish & Richardson, PC Redwood City, CA Jonathan S. Kagan Irell & Manella LLP Los Angeles, CA Heidi Keefe White & Case LLP Palo Alto, CA Richard A. Killworth Dinsmore & Shohl, LLP Dayton, OH |
Dale S. Lazar
DLA Piper Reston, VA Michelle Lee Google, Inc. Mountain View, CA Mark A. Lemley Stanford Law School Stanford, CA Gary H. Loeb Genentech, Inc. San Francisco, CA Michael M. Markman Covington & Burling LLP San Francisco, CA Lisa McFall Yahoo! Inc. Sunnyvale, CA Robert P. Merges Berkeley Center for Law & Technology Berkeley, CA Hon. Marilyn Hall Patel U.S. District Court, Northern District of California San Francisco, CA Phillip B. Philbin Haynes and Boone, LLP Dallas, TX Matthew D. Powers Weil, Gotshal & Manges LLP Redwood Shores, CA Michael J. Shuster Fenwick & West LLP San Francisco, CA Joseph K. Siino Yahoo! Inc. Sunnyvale, CA John Steele Fish & Richardson P.C. Redwood City, CA Julie S. Turner Turner Boyd LLP Palo Alto, CA Lee Van Pelt Van Pelt, Yi & James Cupertino, CA Daniel M. Wall Latham & Watkins LLP San Francisco, CA Matthew F. Weil McDermott, Will & Emery Irvine, CA Vernon M. Winters Weil, Gotshal & Manges LLP Redwood Shores, CA Keith E. Witek Advanced Micro Devices, Inc. Austin, TX Mallun Yen Cisco Systems, Inc. San Jose, CA |
| Planning Committee | Back to Top |
|
Robert Barr —CO-CHAIR
Berkeley Center for Law & Technology Berkeley, CA Mark A. Lemley —CO-CHAIR Stanford Law School Stanford, CA Karen Boyd Patent Mediation and Consulting Palo Alto, CA Christopher J. Byrne National Semiconductor Santa Clara, CA Barbara A. Caulfield Dewey & LeBoeuf LLP East Palo Alto, CA Yar R. Chaikovsky Sonnenschein Nath & Rosenthal LLP Palo Alto, CA I. Neel Chatterjee Orrick, Herrington & Sutcliffe LLP Menlo Park, CA William Sloan Coats White & Case LLP Palo Alto, CA Sean P. DeBruine Alston + Bird LLP Palo Alto, CA Michael J. Esposito The University of Texas School of Law Austin, TX Thomas J. Friel, Jr. Cooley Godward LLP San Francisco, CA Robert J. Goldman Ropes & Gray, LLP Palo Alto, CA Sandeep Jaggi Health Hero Network Redwood City, CA Jonathan S. Kagan Irell & Manella LLP Los Angeles, CA Edward C. Kwok MacPherson Kwok Chen & Heid LLP San Jose, CA Dale S. Lazar DLA Piper Reston, VA Michelle Lee Google, Inc. Mountain View, CA |
Gary H. Loeb
Genentech, Inc. San Francisco, CA Katherine Kelly Lutton Fish & Richardson P.C. Redwood City, CA Taraneh Maghame Tessera San Jose, CA Michael M. Markman Covington & Burling LLP San Francisco, CA David L. McCombs Haynes & Boone, LLP Dallas, TX Robert A. McFarlane Townsend and Townsend and Crew LLP San Francisco, CA Lynn H. Pasahow Fenwick & West LLP Mountain View, CA James Pooley Morrison & Foerster, LLP Palo Alto, CA Erik R. Puknys Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Alfred C. Server Wilmer Cutler Pickering Hale and Dorr LLP Boston, MA Joseph K. Siino Yahoo! Inc. Sunnyvale, CA John F. Stark Navigant Consulting, Inc. San Francisco, CA Julie S. Turner Turner Boyd LLP Palo Alto, CA Lee Van Pelt Van Pelt, Yi & James Cupertino, CA Matthew F. Weil McDermott, Will & Emery Irvine, CA Vernon M. Winters Weil, Gotshal & Manges LLP Redwood Shores, CA |
| Hotels/Venues | Back to Top |
| SANTA CLARA | ||
Special rate:
$179
good through November 12, 2008
(subject to availability) Parking: Complimentary Self-Parking |
| Key Dates: Cancellations, last-minute registrations, and related charges | Back to Top |
|
Santa Clara
Last day for early registration:
Dec 5, 2008, 5 p.m.
— Add $50 for registrations received after this time Last day for full refund: Dec 5, 2008, 5 p.m. Last day for partial refunds: Dec 8, 2008, 5 p.m. $50 processing fee applied |
| Credit Hours | Back to Top |
| MCLE |
|
Texas MCLE: Course #900051760 13.25 hrs, includes 2.75 hrs ethics
Credit is submitted to the State Bar of Texas within seven business days following the conference. To claim immediate credit, self-report via the SBOT web site at http://www.texasbarcle.com/CLE/home.aspLegal Specialization: Civil Trial California MCLE: Provider #1944 13.25 hrs, includes 2.75 hrs ethics
This course is approved for California MCLE credit. A Certificate of Completion and related course reporting documentation for CA MCLE credit will be available at the conference.
See http://calbar.ca.gov/state/calbar/calbar_generic.jsp?cid=10964&id=4991#recordkeeping for more information.
Other Jurisdictions: LA, NM, OK, NV, etc.
Many jurisdictions accept courses offered by the University of Texas School of Law, and approved by the State Bar of Texas, for CLE credit. Please check with your state bar association. A Certificate of Completion, and related course reporting documentation for MCLE credit will be available at the conference.
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| Other Credit |
|
TX CPE-Accountants: Sponsor #250 15.00 hrs (50-min. hrs)
Texas CPE credit is calculated based on 50 minute hours, and must be self-reported. A Certificate of Completion will be available at the conference.
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| Sponsors | Back to Top |
Major Sponsor
Luncheon Sponsor
