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| Overview | Back to Top |
Come to the heart of Silicon Valley and hear from and interact with leading judges, academics and practitioners. The nationally-recognized faculty includes USPTO Director David Kappos, IP counsel from Google, Microsoft, Intel and Genentech; practitioners from around the nation; and academics from Stanford and Berkeley. The conference is jointly presented with the Stanford Program in Law, Science & Technology and the Berkeley Center for Law & Technology at UC Berkeley.
| Program for Patent Law - California | 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. |
| 8:35 am | Welcoming Remarks |
| 8:45 am | Patentable Subject Matter and Practice Strategies in the Shadow of Bilski In re Bilski, now on appeal to the Supreme Court, has already sent shockwaves throughout the patent community and may change our fundamental notions of patentable subject matter. The panelists discuss the immediate impact of the Federal Circuit decision on litigation, the PTO response to the decision in its post decision practice and draft guidelines, post-Bilski appeal board decisions, and offer both prosecution and litigation strategies in view of this important case. |
Moderator: Deanna Kwong Covington & Burling LLP - Panelist: Henry N. Garrana Haynes and Boone, LLP - Panelist: Jonathan E. Singer Fish & Richardson P.C. - Panelist: Lee Van Pelt Van Pelt, Yi & James LLP - |
| 9:45 am | Strategic Patent Prosecution Building a patent portfolio that meets the needs of any business requires focused consideration of the underlying R&D, product markets, eco-systems, and geography. It also requires intimate knowledge of local laws and costs. Two experienced practitioners provide both in-house and outside counsel perspectives across a broad range of industries. |
Jean Burke Fordis Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - David M. Simon Intel Corporation - |
| 10:30 am | Break |
| 10:45 am | What Is Obvious in the post-KSR World? The KSR decision may have posed some difficult questions. When does the previously disfavored “obvious to try” standard come into play? How can you establish that a result is not predictable? What was wrong with the comfortable, but rigid, teaching-suggestion-motivation test? By considering approaches revealed in decisions in the wake of KSR, this discussion provides strategies for navigating through an obviousness analysis. |
M. Paul Barker Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - |
| 11:15 am | TransCore, LP v. Electronic Transaction Consultants Corp. Implications for patent exhaustion, implied license and related strategy for patent transactions. |
William I. Schwartz Morrison & Foerster LLP - David M. Simon Intel Corporation - |
THURSDAY
AFTERNOON
Presiding Officer(s)
Christopher J. Byrne, Tessera, Inc. - San Jose, CA
Presiding Officer(s)
Christopher J. Byrne, Tessera, Inc. - San Jose, CA
| LUNCHEON PRESENTATION Sponsored by Dewey & LeBoeuf LLP |
| 12:00 pm | Pick Up Lunch Included in conference registration. |
| 12:15 pm | Update from the USPTO The new Director of the U.S. Patent and Trademark Office discusses the state of the USPTO and his goals for the agency. |
David Kappos U.S. Patent and Trademark Office - |
| 1:00 pm | Break |
| 1:15 pm | Venue Transfers and Strategic Forum Selection Forum selection and venue transfer continue to be key aspects of patent litigation strategy. This panel provides an overview of the law applicable to transfer motions and discusses trends of district courts deciding transfer motions in popular venues. Moving beyond these core issues, the panel discusses additional forum selection and venue considerations, including how district courts in various venues are resolving motions to dismiss in light of Ashcroft v. Iqbal and similar case law, motions to sever defendants in multi-party patent litigation, and motions to stay or adjust case schedules in light of reexamination requests to the USPTO or requests to the Judicial Panel on Multidistrict Litigation. |
Yar R. Chaikovsky Sonnenschein Nath & Rosenthal LLP - Eric R. Lamison Kirkland & Ellis LLP - |
| 2:00 pm | Managing Cost and Strategies in Multi-Party Cases: Pretrial and During Trial Patent cases involving numerous defendants are increasingly filed. In many cases, the alleged infringement of each defendant is substantially different. In others, both manufacturers and their customers are named. In yet a third category, several cases are filed with overlapping patents and issues. Each one of these cases can become more expensive due to the need to coordinate between parties. This presentation discusses strategies to reduce cost and ensure that cases with multiple parties stay on track and that the parties are prepared for trial. |
Daralyn J. Durie Durie Tangri Page Lemley Roberts & Kent LLP - Fabio Marino Orrick, Herrington & Sutcliff LLP - |
| 2:45 pm | Foreign Complainants, NPEs, FRAND and the ITC: What Are the Limits on the ITC's Jurisdiction? The U.S. International Trade Commission is empowered to investigate patent infringement claims in order to protect "domestic industries" from unfair competition from imported goods. Its sole available remedies are injunctive exclusion and cease and desist orders. Yet the ITC has long accepted cases filed by foreign patent holders with minimal domestic operations. Recently, a growing number of non-practicing entities (NPEs) are filing in the ITC - relying on their licensing and litigation efforts, as are holders of patents subject to an obligation to license under Fair, Reasonable and Non-Discriminatory (FRAND) terms. This session discusses the "domestic industry" requirement and whether it imposes real limitations on the ITC's jurisdiction. |
Sean P. Debruine Alston + Bird LLP - |
| 3:15 pm | Break |
| 3:30 pm | SSO Developments Recent decisions in FTC v. Rambus, FTC v. N-Data, and Broadcom v. Qualcomm, as well as policy statements by antitrust enforcers, have brought SSOs back into the antitrust spotlight. This presentation analyzes the impact of those developments on licensors (e.g., how to ensure that your patents do not become inadvertently encumbered through participation in an SSO) and licensees (e.g., how to protect yourself against a patent ambush or a refusal by a licensor to honor RAND commitments). |
Hanno F. Kaiser Latham & Watkins LLP - |
| 4:00 pm | Injunction, Post-Judgment Royalties and Apportionment When can a patentee get an injunction? What do they get if they don't get an injunction? And how should damages be calculated in multi-component industries? These issues and others are discussed. |
Mark A. Lemley Stanford Law School - Taraneh Maghame Tessera, Inc. - |
| 4:45 pm | Judicial Panel Leading district court judges discuss effective litigation procedures and practices. |
Moderator: Vernon M. Winters Weil, Gotshal & Manges LLP - Panelist: Hon. Andrew J. Guilford U.S. District Court, Central District of California - Panelist: Hon. Marilyn Hall Patel U.S. District Court, Northern District of California - |
| 5:30 pm | Adjourn |
FRIDAY
MORNING
Presiding Officer(s)
Colleen Chien, Santa Clara University - Santa Clara, CA
Presiding Officer(s)
Colleen Chien, Santa Clara University - Santa Clara, CA
| 8:00 am | Conference Room Opens Includes continental breakfast. |
| 8:30 am | Joint Infringement and Section 271(f) A method claim is directly infringed if each step of the claimed method is performed by an alleged infringer. But what if different steps of the method are performed by different parties? This session examines joint infringement and its implications for both transactional attorneys and litigators. How to structure agreements, describe relationships, or apportion or outsource the provision of services may all have an impact on potential joint infringement liability. Likewise, determination of who does what and why may drive the outcome of litigation, and present strategic challenges and opportunities for the Plaintiff and the Defense. |
Glenn E. Westreich Winston & Strawn LLP - |
| 9:00 am | Enablement, Written Description, and Indefiniteness—Oh, My! Over the last several years, Section 112 issues—previously relegated to biotech and chemical practice—have firmly ensconced themselves across the breadth of technologies in patent law. This session provides an update on recent case law, and attempts to answer the eternal Section 112 question: what IS the difference between written description and enablement? |
Karen Boyd Turner Boyd LLP - |
| 9:30 am | 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 - |
| 10:00 am | Break |
| 10:15 am | Knowing When to Hold and When to Fold: Choosing and Settling Your Disputes Wisely Best practices and pointers in choosing whether and how to raise patent disputes, how to evaluate your case, and when and how to settle. This session balances perspectives of in-house counsel, law firms, and the court. |
Moderator: Gary H. Loeb Genentech, Inc. - Panelist: Barbara A. Caulfield Dewey & LeBoeuf LLP - Panelist: Douglas A. Cawley McKool Smith PC - Panelist: Andy Culbert Microsoft - |
| 11:15 am | Strategic Use of Opinions of Counsel for Defending against Willful Infringement and Indirect Infringement A discussion of the value of opinions of counsel, particularly in response to charges of willful infringement and inducing infringement, and a case law update including the aftermath of In re Seagate and Broadcom v. Qualcomm. Effect of not producing an opinion and scope of waiver for use of opinions used for defense against willfulness and indirect infringement is also examined. |
Moderator: Tim Crean SAP AG - Panelist: Heidi Keefe Cooley Godward Kronish LLP - Panelist: Michael Schallop Van Pelt, Yi & James LLP - |
FRIDAY
AFTERNOON
Presiding Officer(s)
Elizabeth Dean, Navigant Consulting, Inc. - San Francisco, CA
Presiding Officer(s)
Elizabeth Dean, Navigant Consulting, Inc. - San Francisco, CA
| LUNCHEON PRESENTATION Sponsored by Inflexion Point Strategy, LLC |
| 12:00 pm | Pick Up Lunch Included in conference registration. |
| 12:15 pm | The Importance of Amicus Briefs to Successful Appellate Advocacy Amicus briefs are a vital tool in the workshop of the appellate advocate. Learn more about how they can be used effectively to shape the law generally and win your appeal specifically. |
Edward R. Reines Weil, Gotshal & Manges LLP - |
| 12:45 pm | Break |
| 1:00 pm | Cost Management for IP Litigation: Strategies for Dealing with "Frivolous" Law Suits With rising litigation costs, tightening budgets and upward trends in IP litigation, companies and their legal departments are under increasing pressure to find creative ways to achieve good results in complex IP litigation at a reasonable cost. The challenges are even greater with lower risk litigation where costs can still be high and harder to justify. Counsel with both in-house and outside experience discuss creative solutions including leveraging internal litigation attorneys and paralegals, as well as strategies for partnering with outside counsel, managing budgets and case schedules, containing discovery, capturing efficiencies across cases, addressing lack of merit early and often, choosing mediators and mediating, and a variety of other issues. |
John Labarre Google Inc. - Michael J. Malecek Dewey & LeBoeuf LLP - |
| 1:40 pm | Patent Markets and IP Valuations: Where Are We Now and What's Ahead? An overview of the current patent monetization market and predictions for the future; a discussion of how the patent valuation challenge, and particularly the difficulties in pricing IP risk, affect deal completion and market stability; and a look at some innovative models for using patents to finance corporate M&A and R&D. |
Ronald S. Laurie Inflexion Point Strategy, LLC - Vincent Pluvinage Intellectual Ventures - Joseph K. Siino Ovidian Group, LLP - |
| 2:20 pm | IP Diligence during Patent Acquisitions and Corporate Mergers and Acquisitions A practical look at portfolio assessment, pre-existing licenses, freedom to operate, litigation risk, the treatment of opinion letters and preserving common interest privilege. |
William S. Galliani Cooley Godward Kronish LLP - Mallun Yen Cisco Systems, Inc. - |
| 3:00 pm | Managing Patent E-Discovery Risks, Costs, and Burdens: An In-House Perspective An examination of strategies and techniques to efficiently address the growing costs and risks associated with patent litigation discovery with a particular emphasis on Federal Rules of Civil Procedure objective of a "just, speedy and inexpensive determination of every action." |
Stephanie Mendelsohn Genentech, Inc. - Mark E. Michels Cisco Systems, Inc. - |
| 3:45 pm | Adjourn |
| Conference Faculty | Back to Top |
|
M. Paul Barker
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Karen Boyd Turner Boyd LLP Palo Alto, CA Barbara A. Caulfield Dewey & LeBoeuf LLP East Palo Alto, CA Douglas A. Cawley McKool Smith PC Dallas, TX Yar R. Chaikovsky Sonnenschein Nath & Rosenthal LLP Palo Alto, CA Tim Crean SAP AG Palo Alto, CA Andy Culbert Microsoft Redmond, WA Sean P. Debruine Alston + Bird LLP Palo Alto, CA Daralyn J. Durie Durie Tangri Page Lemley Roberts & Kent LLP San Francisco, CA Jean Burke Fordis Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA William S. Galliani Cooley Godward Kronish LLP Palo Alto, CA Henry N. Garrana Haynes and Boone, LLP Austin, TX Robert J. Goldman Ropes & Gray, LLP East Palo Alto, CA Hon. Andrew J. Guilford U.S. District Court, Central District of California Santa Ana, CA Dana W. Hayter Intel Corporation Santa Clara, CA Hanno F. Kaiser Latham & Watkins LLP San Francisco, CA David Kappos U.S. Patent and Trademark Office Alexandria, VA Heidi Keefe Cooley Godward Kronish LLP Palo Alto, CA Ryan Kent Durie Tangri LLP San Francisco, CA Deanna Kwong Covington & Burling LLP Redwood City, CA John Labarre Google Inc. Mountain View, CA Eric R. Lamison Kirkland & Ellis LLP San Francisco, CA Ronald S. Laurie Inflexion Point Strategy, LLC Palo Alto, CA |
Mark A. Lemley
Stanford Law School Stanford, CA Gary H. Loeb Genentech, Inc. San Francisco, CA Taraneh Maghame Tessera, Inc. San Jose, CA Michael J. Malecek Dewey & LeBoeuf LLP East Palo Alto, CA Fabio Marino Orrick, Herrington & Sutcliff LLP Menlo Park, CA David L. McCombs Haynes and Boone, LLP Dallas, TX Stephanie Mendelsohn Genentech, Inc. South San Francisco, CA Mark E. Michels Cisco Systems, Inc. San Jose, CA Raymond Millien The PCT Companies Washington, DC Hon. Marilyn Hall Patel U.S. District Court, Northern District of California San Francisco, CA Vincent Pluvinage Intellectual Ventures Palo Alto, CA Edward R. Reines Weil, Gotshal & Manges LLP Redwood City, CA Clem Roberts Durie Tangri LLP San Francisco, CA Michael Schallop Van Pelt, Yi & James LLP Cupertino, CA William I. Schwartz Morrison & Foerster LLP San Francisco, CA Joseph K. Siino Ovidian Group, LLP Berkeley, CA David M. Simon Intel Corporation Santa Clara, CA Jonathan E. Singer Fish & Richardson P.C. Minneapolis, MN Lee Van Pelt Van Pelt, Yi & James LLP Cupertino, CA Glenn E. Westreich Winston & Strawn LLP San Francisco, CA Vernon M. Winters Weil, Gotshal & Manges LLP Redwood City, CA 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 Turner Boyd LLP Palo Alto, CA Christopher J. Byrne Tessera, Inc. San Jose, 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 Brian Coleman Perkins Coie LLP Menlo Park, CA James L. Day Latham & Watkins LLP San Francisco, CA Elizabeth Dean Navigant Consulting, Inc. San Francisco, CA Sean P. Debruine Alston + Bird LLP Palo Alto, CA Jean Burke Fordis Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Palo Alto, CA Robert D. Fram Covington & Burling LLP San Francisco, CA Thomas J. Friel, Jr. Cooley Godward Kronish LLP San Francisco, CA William S. Galliani Cooley Godward Kronish LLP Palo Alto, CA Robert J. Goldman Ropes & Gray, LLP East Palo Alto, CA Sandeep Jaggi Health Hero Network Palo Alto, CA Catherine Lacavera Google, Inc. Mountain View, CA Eric R. Lamison Kirkland & Ellis LLP San Francisco, CA |
Ronald S. Laurie
Inflexion Point Strategy, LLC Palo Alto, CA Gary H. Loeb Genentech, Inc. San Francisco, CA Chip Lutton Apple Inc. Cupertino, CA Taraneh Maghame Tessera, Inc. San Jose, CA Michael J. Malecek Dewey & LeBoeuf LLP East Palo Alto, CA Michael M. Markman Covington & Burling LLP San Francisco, CA Robert A. McFarlane Townsend and Townsend and Crew LLP San Francisco, CA Phillip B. Philbin Haynes and Boone, LLP Dallas, TX 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 Ovidian Group, LLP Berkeley, CA David M. Simon Intel Corporation Santa Clara, CA Julie S. Turner Turner Boyd LLP Palo Alto, CA Lee Van Pelt Van Pelt, Yi & James LLP Cupertino, CA Glenn E. Westreich Winston & Strawn LLP San Francisco, CA Vernon M. Winters Weil, Gotshal & Manges LLP Redwood City, CA Mallun Yen Cisco Systems, Inc. San Jose, CA |
| Hotels/Venues | Back to Top |
| PALO ALTO | ||
Special rate:
$255
good through November 23, 2009
(subject to availability) Parking: Self Parking $12 per day & Valet $22 |
| Key Dates: Cancellations, last-minute registrations, and related charges | Back to Top |
|
Palo Alto
Last day for early registration:
Dec 2, 2009, 5 p.m.
— Add $50 for registrations received after this time Last day for full refund: Dec 4, 2009, 5 p.m. Last day for partial refunds: Dec 7, 2009, 5 p.m. $50 processing fee applied |
| Credit Hours | Back to Top |
| MCLE |
|
Texas MCLE: Course #901183440 14.25 hrs, includes 2.00 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.aspCalifornia MCLE: Provider #1944 14.25 hrs, includes 2.00 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 |
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TX CPE-Accountants: Sponsor #250 16.00 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 Sponsors
