About
KEYNOTE ADDRESS
Bernard Knight
USPTO General Counsel
PATENT REFORM: Is It All We Had Hoped For?
Patent reform has finally become a reality, but is it all we had hoped for? As the USPTO releases rules for implementing provisions of the America Invents Act (AIA), industry leaders will gather to share strategies for not only meeting new requirements, but also addressing shortcomings of the AIA. How does the AIA make a difference? Has it solved all of our problems? What new problems will it bring? How are companies modifying their strategies to stay at the forefront of IP law? Don't miss the Keynote Address by USPTO General Counsel Bernard Knight.
OTHER HIGHLIGHTS:
- AIA: Strategic Considerations
- NPEs: Changing Tactics
- Is Litigation Getting Tougher In Certain Venues?
- Managing Volatile Patent Prices
- Reexam: How Do Inter Partes & Ex Parte Fit Together under the AIA?
- China IP Development & Protection
- Are Patents Hurting Innovation?
- Crafting License Agreements
and more!
This program will SELL OUT.
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DAY ONE
8:15-8:45
Registration & Breakfast
8:45-9:00
Opening Remarks
Speaker:
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Michelle Lee
Head of Patents, Patent Strategy and Partnerships &
Deputy General Counsel
Google
9:00-9:50
KEYNOTE: American Invents Act: Making Patent Reform a Reality
Bernard Knight
General Counsel
USPTO
The Patent Reform Bill was signed into law in September 2011 and the USPTO has begun publishing proposed rules for implementing various provisions. Join us for this special Keynote Address by Bernard Knight, General Counsel, USPTO, on what these rules mean and how we can work together to implement them.
9:50-10:30
America Invents Act: The Long Road to Reform
Speaker:
Neel Chatterjee
Partner
Orrick Herrington & Sutcliffe
10:30-11:20
America Invents Act: Strategic Considerations
The Patent Reform Bill was signed into law in September 2011. Some changes have gone into effect almost immediately, while the more significant changes will go into effect in September 2012. What do companies need to be aware of? How can companies prepare? What are we not thinking about but should? This panel discussion will provide a roadmap of what companies have done and should do in the upcoming months.
- How can companies take advantage of their new options?
- How can companies prepare for the upcoming changes?
- What are companies doing with post-grant review?
- Are companies using provisionals?
Speakers:
Ted Joe
Patent Counsel
Salesforce.com
Katherine Kelly Lutton
Principal
Fish & Richardson
Emily Ward
Vice President & Deputy General Counsel
eBay
11:20-11:30
Break
11:30-12:10
This in-depth discussion will focus on how the AIA has changed companies’ patent prosecution strategy. What are companies doing with regard to the change in first to file rules? How are companies dealing with the new prior art provisions?
Speakers:
Paul Barker
Partner
Finnegan Henderson Farabow Garrett & Dunner
12:10-1:00
Reexamination and Opposition Practice under AIA
- How has the Patent Reform Bill changed opposition practice?
- Should you cite prior art at the risk that examiners will apply it differently, thus precluding future opportunities to assert it? - What do
the reexam and inter partes guidelines reveal?
- Why would you pick one vs. the other? How do the two fit together?
- When would ex parte be more useful than inter partes?
Speakers:
William Mandir
Partner
Sughrue Mion
Anup Tikku
Senior Litigation Counsel
eBay
Philip McGarrigle
General Counsel and Chief IP Officer
Nodality
1:00-2:30
Luncheon & Panel Discussion: Are Patents Hurting Innovation?
Speakers:
Laura Sydell
“When Patents Attack”
Digital Culture Correspondent
NPR
Brian Cronquist
VP Technology & IP
Monolithic 3D Inc.
2:30-3:20
Is Litigation Getting Tougher in Certain Venues?
This panel will discuss challenges that companies have experienced in various districts around discovery and transfer issues. Find out how companies are dealing with these challenges.
- Are certain districts becoming more strict?
- Do defendants in multi-defendant lawsuits have a meaningful opportunity to defend themselves?
- What are recent experiences around discovery and Special Masters?
Speakers:
Floyd E. Anderson
VP, Chief Patent Counsel
Avago Technologies
William Robinson
Partner
Foley & Lardner
Catherine Lacavera
Director of Litigation
Google
Hilary Ware
Associate General Counsel, Litigation
Netflix
3:20-4:10
NPE Litigation: Changing Patterns and the Impact of AIA
As defendants modify their strategies, NPEs are also changing their tactics. NPEs are bringing actions against more companies, demanding higher settlement amounts, using the ITC to their advantage, and more. What have companies’ experiences been over the past year, pre-litigation and during litigation? What changes can we expect the AIA to bring?
- Are judges demanding more during discovery?
- Do defendants in multi-defendant suits have a real opportunity to defend themselves at trial?
- What are we experiencing re: venue transfer?
- What are we experiencing re: the ITC and third party subpoenas?
- What impact will the AIA have on NPE litigation?
Speakers:
Clint Duke
Patent Attorney
Durham Jones
Douglas Luftman
Vice President, Innovation Services & Chief Patent Counsel
CBS
NolaMae McBain
Associate General Counsel, Patents
Xerox
Marilyn Riddervold
General Counsel
Wordtech Systems
4:10-4:20
Break
4:20-5:10
Damages Law Update: What are the Challenges Around Damages Theory?
This panel will discuss key cases that have shaped damages law over the past year, as well as developments of past cases. What are the challenges, pre-litigation and during litigation, around damages theory?
Speakers:
Ethan Andelman
Director of IP
NXP Semiconductor
Marta Beckwith
Director of Patent Litigation
Cisco Systems
Andrea Jeffries
Partner
Wilmer Hale
5:10-6:00
How to Manage Your IP Portfolio in Today’s Volatile Market
It is increasingly challenging to develop a comprehensive patent strategy that defuses threats to your company’s overall livelihood. Contributing to this volatile climate is the emergence of relatively robust secondary market for patents and patent portfolios and the implications of AIA relative to the viability of your IP assets. Join us for this timely, interactive discussion addressing key elements of how IP strategy can be used to achieve your business objectives in today’s changing market.
- How does the AIA change the calculus of aligning IP strategy with business strategy for IT/high-tech companies?
- Do the acceleration techniques provided by the AIA and prior rule-making now represent a desirable alternative to the old
strategy of filing (and waiting)?
- How can you use the AIA to address potential threats before they materialize?
- What factors determine where you spend your IP dollars?
- Considerations for prioritizing business objectives, technology assets, marketplace needs, and competition threats to
establish a well-integrated IP strategy
Speakers:
Michael Johnson
Patent Counsel
Qualcomm
Douglas Kundrat
VP, Deputy General Counsel & Director of IP
Agilent Technologies
John Lanza
Partner
Foley & Lardner
Naomi Obinata
Corporate VP of Legal and IP
SuVolta
6:00-7:00
Cocktail Reception
DAY TWO
7:45-8:00
Check-in
8:00
Breakfast and Round-tables
8:00-8:50
Watermark Breakfast Roundtable:
Is In–House Practice Changing for the Better?
Speakers:
Diane Ferguson
Deputy General Counsel
VCE Company
Karineh Khachatourian
Advisor
Watermark
Jason Smalley
IP Counsel
IGT
Monica Winghart
Executive Vice President & General Counsel
Article One Partners
9:00-9:50
America Invents Act and Your Law Firm
The AIA poses new risks to companies and their law firms. Companies must modify their strategies. Law firms face greater liability if filings are not completed on time. The cost of law firm malpractice insurance may increase, thus potentially increasing law firm cost. How can companies successfully work with their law firms to comply with the new requirements?
- How are law firms responding to the new requirements?
- Should companies establish guidelines with their law firms?
- How can alternative fee arrangements be used to control new costs?
- How can In-House Counsel work with their law firm to meet new requirements?
Speakers:
Bill Becker
Senior IP Director
Align Technology
Bryan Butler
IP Counsel, Systems Networking
IBM
Stephen Hankins
Partner
Schiff Hardin
9:50-10:40
Streamlining operations so In-House Counsel can focus on high value work
Legal departments must do more with less. IP Counsel spend too much time on operational tasks. This panel will explore ways in which IP Counsel have become more efficient so that they can focus on high value work.
- What to outsource to law firms vs. keeping In-House?
- What tools to streamline operations?
- How to keep track of day to day matters?
- How to quickly find existing deals?
- How to quickly find patent applications?
Speakers:
Shailendra Bhumralkar
VP, IP Portfolio Development
SAP
Jeremiah Chan
Director of IP
JDSU
Arien Ferrell
IP Counsel, Assistant General Counsel
Intuit
Ingrid Foerster
IP Counsel
Information Management Division & SVL Site
Silicon Valley Labs
Jessica Hudak
IP Manager
Baxano
10:40-10:50
Break
10:50 - 11:40
TRACK 1
China: IP Development & Enforcement
Since 1984, China has undergone four revisions to its patent laws. What is the status of IP protection in China? How are companies developing and protecting their IP?
Speakers:
Chris Byrne
Vice President for IP Strategy
Tessera
Horace Ng
Managing IP Counsel & Director of Patent Procurement
Marvell Semiconductor
Allen Tao
Partner
Liu Shen & Associates
Brent Yamashita
Partner
DLA Piper
10:50-11:40
TRACK 2
Exploring New AIA Rules
Several provisions of the America Invents Act will go into effect on September 16, 2012. The USPTO is assembling Notices of Proposed Rulemaking which is scheduled for release to the public in mid-to-late January 2012. This discussion will explore the various rules and their implementation.
Speakers:
Frank Bernstein
Partner
Kenyon & Kenyon
George Simion
Senior Patent Counsel
Oracle
11:40-12:30
TRACK 1
Collaborative Defense: Does It Work?
Companies facing NPE litigation have few alternatives other than calling outside counsel. However, companies have been collaborating to share resources and information. What are companies’ experiences with the various patent aggregators?
- What market solutions have the best value propositions for mitigating risk?
- How do you reach that value proposition?
- What have companies experienced with different vehicles?
- What is the future of these vehicles?
- What other aggregating plans are there?
Speakers:
James Batchelder
Partner
Ropes & Gray
Scott Coonan
Director of IP Litigation & Licensing
Juniper Networks
Michael Shpizner
Vice President & General Counsel
Fujitsu America
Brian Way
Director of IP
Altera
11:40-12:30
TRACK 2
Crafting License agreements
This panel will address how to establish contractual relationships with various players, and how the AIA might change licensing considerations. Join us for discussion on best practices, drafting tips, and sample contract provisions for technology licensing and IP development agreements.
Speakers:
William Geary, Jr.
Vice President
MPEG LA
Michael Lachuk
Deputy General Counsel
Science Applications International Corporation
Jaime Siegel
Senior IP Counsel
Sony
12:30-2:00
Luncheon & Discussion
Due Diligence Done Right: Determining and Maximizing Value While Minimizing Risk
Whether your company is pre-IPO or engaged in an M&A transaction, this discussion will help you to determine true value while minimizing risk.
Speakers:
Hopkins Guy
Partner
Orrick Herrington & Sutcliffe
DAY 3
9:00-5:00
Patent Prosecution Bootcamp
Save time and money. Get your applications right the first time!
Avoid rejections and invalidations. This workshop will cover the basics of patent prosecution as well as tips for avoiding sloppy mistakes in written descriptions
-How to write a patent application from scratch?
-How to draft a claim that meets transformation test under Bilski?
-What tools are available for facilitating patent application and prosecution?
-How to respond to rejections? How to get your cases allowed?
-How to avoid prior art rejections?
-When and how to interview?
-After an application has been filed, are there things you should or should not do to obtain a patent that is stronger or enforceable?
-Should you grant elections over the phone? Why or why not?
-What to say or not say to an examiner on the phone?
-Should you use declarations and if yes, what should be in there?
Speaker:
Miku Mehta
Partner
Sughrue Mion
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For more information, please contact us at: info@ipcounselcafe.com or call (646) 867-3808.
sponsored by
PLATINUM SPONSOR
Foley & Lardner LLP is one of the only general practice firms in the country to be recognized as a leader for both patent litigation (by Corporate Counsel magazine) and patent and trademark procurement (by IP Today). With more than 200 IP attorneys, Foley delivers a full life cycle of IP services to obtain, protect, and add value to our clients' IP assets. We are among the nation’s leaders in securing high-quality patents, trademarks, and copyrights; we provide product clearance opinions; conduct licensing programs; and handle the IP due diligence for corporate transactions. And when and if our clients IP assets are in jeopardy, we handle the IP enforcement proceedings using our skilled and experienced IP litigators. Our team develops IP management strategies that complement each client’s overall competitive strategy. Since 1842, Foley has expanded, with offices throughout the United States and in Brussels, Shanghai, and Tokyo. For more information, please visit www.foley.com/ip.
PLATINUM SPONSOR
Orrick’s Intellectual Property group is a leading global law firm and was recently selected as one of Law360’s “Top IP Groups of the Year for 2010.” Orrick has more than 150 lawyers who are involved with IP matters and many have advanced technical degrees. In addition, 60 of our lawyers are admitted to practice before the United States Patent and Trademark Office. We are regularly chosen by leading companies in many industries for our comprehensive, innovative and collaborative approach to IP planning. Our successes in IP litigation and our appellate work make our IP team the go-to choice for resolving bet-the-company IP disputes and for helping to keep companies out of the courtroom.
We advise and represent clients in patent, trademark, copyright, trade secret and litigation matters. In addition, we regularly counsel clients on cloud computing issues, including mergers of providers, outsourcing agreements, regulatory review of anticompetitive conduct, privacy and data management issues and criminal investigations involving search and seizures. Our highly ranked attorneys also advise on antitrust actions, strategic IP counseling, United States International Trade Commission actions, contentious licensing, patent and trademark infringement, branding issues, unfair competition, commercial disputes, Internet safety and liability and United States Patent and Trademark Office interference issues.
For further information about Orrick’s IP practice, please visit us at www.orrick.com/ip.
PLATINUM SPONSOR
Durham Jones & Pinegar is a leading law firm with offices in Utah and Nevada, offering a full spectrum of services in more than 20 specialized fields. These include Business & Finance, Commercial Litigation, Intellectual Property (including Patents, Trademarks, Copyrights, Trade Secrets, IP litigation and IP strategies), Governmental Relations, Estate Planning, Real Estate, Bankruptcy, Employment, Tax Law, Family Law and more. For information, visit www.djplaw.com.
PLATINUM SPONSOR
Drawing from the experience of over eighty registered patent and trademark attorneys, Sughrue Mion offers unmatched expertise in a wide range of intellectual property matters. Our ability to succeed in specialized IP forums is built upon our recognized strength and leadership in patent law, both before the U.S. Patent and Trademark Office and before the U.S. federal courts and international trade courts. Historically, Sughrue Mion ranks in the top firms for the number of patents obtained from the U.S. Patent Office and also led the rankings in the number of trademark filings. From offices in Washington, D.C., California, and Tokyo, Sughrue Mion is proud to serve the world’s largest patent and trademark holders. www.sughrue.com
GOLD SPONSOR
DLA Piper is highly-regarded Patent Litigation practice ranks among the most active practices in US District Courts and in the ITC (IP Law & Business, 2004-2009). We are especially strong in complex multi-jurisdictional patent litigation, including global litigation. DLA Piper's Patent Prosecution lawyers counsel innovative companies on strategic patent prosecution in the US and worldwide. Our Trademarks practice handles more than 50,000 marks in over 150 countries, and regularly ranks among the top five in new US trademark registrations (Intellectual Property Today, 2004-2009). We also rank in the top ten nationally in both trademark litigation and copyright litigation (IP Law360, 2009).
GOLD SPONSOR
With 375 intellectual property lawyers, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in the United States, Europe, and Asia, the firm practices all aspects of trademark, copyright, patent, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan represents clients in virtually every business sector -- consumer products, financial services, the Internet, telecommunications, manufacturing, publishing, biotechnology, pharmaceutical, chemical, medical device, healthcare IT, alternative energy, electronics, and computer -- on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For more information, please visit http://www.finnegan.com
GOLD SPONSOR
Fish & Richardson is a global law firm providing strategic counseling and litigation services to innovative clients who seek to protect and maximize the value of their intellectual property (IP). With more than 375 attorneys and technology specialists practicing IP strategy and counseling, IP litigation, and business litigation, Fish is known for its superior technical expertise. Fish has been named top patent litigation firm in the country for eight straight years, a premier IP firm for America’s biggest companies, and an elite top tier law practice. For more information, visit www.fr.com or follow @fishrichardson on Twitter.
GOLD SPONSOR
FTI Consulting, Inc. is a global business advisory firm with more than 3,500 professionals that work closely with clients to anticipate, illuminate, and overcome complex business challenges in areas such as investigations, litigation, mergers and acquisitions, regulatory issues, reputation management and restructuring. FTIís Intellectual Property team is dedicated to intellectual property matters, including litigation support and damages quantification, intangible asset valuation, royalty investigation and compliance, due diligence, licensing, and technology and intellectual property management. With offices across 6 continents, we have one of the largest and most integrated teams of professionals that assist in effectively addressing intellectual property management challenges, both inside and outside of your organization.
GOLD SPONSOR
Kenyon & Kenyon LLP combines strong technical sophistication with adept proficiency in intellectual property law to successfully enforce and defend the IP rights of many of the world's most innovative companies. Kenyon represents clients in IP litigation, prosecution, counseling, licensing and transactional matters pertaining to patent, trademark, copyright, trade secret, unfair competition, false advertising, IP antitrust, and technology transfer issues. Kenyon has particularly extensive experience handling IP matters for companies in industries including academia, chemicals, pharmaceuticals, biotechnology, consumer products, computers, software, Internet and e-commerce, semiconductors, consumer electronics, telecommunications, financial services, automotive and aerospace, materials science, industrial and equipment manufacturing, energy, entertainment, media and sports. To learn more about Kenyon’s attorneys, experience and rankings, please visit www.kenyon.com
GOLD SPONSOR
Founded in 1993, Liu, Shen & Associates is a law firm and also a patent and trademark agency, specializing in intellectual property and related laws. The firm’s practice focuses on filing and prosecuting patent applications, registering trademarks, legal counseling on all phases of intellectual property, and enforcement of intellectual property, including administrative actions, and judicial litigation.
Liu, Shen & Associates has now a team of around 320, including 190 professionals of patent and trademark attorneys, attorney-at-law, and patent engineers with expertise that covers almost all areas of technology.
Serving thousands of clients ranging from multinational corporations and world famous brand owners to individual inventors, Liu, Shen & Associates has grown to become one of the largest law firms and a leading intellectual property firm in China. The firm’s well-received reputation around the world is built on the team efforts to provide high quality services, and on the experienced professionals and well trained staff. The firm will continue its commitment to the excellence in the years to come.
GOLD SPONSOR
Global law firm Ropes & Gray, with 1,000 attorneys in nine offices on three continents, is a trusted legal advisor to clients in all stages of development across all sectors of the world economy. Among the top 10 firms with the most national first-tier rankings in the U.S. News-Best Lawyers survey of U.S. law firms, Ropes & Gray offers a range of practices universally recognized for the quality of their performances. From mission critical transactions to “bet the company” litigation, Ropes & Gray works collaboratively to assemble flexible, results-oriented teams that address clients’ singularly complex needs and promote their success.
GOLD SPONSOR
At Schiff Hardin we believe that understanding our clients' needs and goals is our most important job. More than 50 Schiff Hardin attorneys practice in the field of intellectual property law, in offices across the country. We provide a broad range of litigation, counseling, and transactional services involving patents, trademarks, trade dress, trade secrets, copyrights, franchising, licensing and electronic commerce of all types. Our intellectual property clients include some of the best-known names in the United States and abroad. These include manufacturers, retailers, sports celebrities, engineering firms, financial exchanges, universities, research laboratories, generic pharmaceutical companies, distributors, e-businesses, licensors and franchisors.
GOLD SPONSOR
Thomson Reuters is the world’s leading source of intelligent information for businesses and professionals. We combine industry expertise with innovative technology to deliver critical information to leading decision makers in the financial, legal, tax and accounting, scientific, healthcare and media markets, powered by the world’s most trusted news organization. With headquarters in New York and major operations in London and Eagan, Minnesota, Thomson Reuters employs more than 50,000 people in more than 100 countries. For more information, go to www.thomsonreuters.com.
GOLD SPONSOR
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BRONZE SPONSOR
K&L Gates has more than 225 lawyers worldwide who devote their practice to protecting and commercializing clients' intellectual property assets, whether in the form of patents, trademarks, copyrights, or trade secrets. We have been involved in cases spanning a broad spectrum of technologies ñ from medical devices and computer networking technologies to clean technology and semiconductors. We also advise and represent some of the world's most prominent companies on cutting-edge IP issues, earning the firm recognition among the busiest trademark practices in the U.S. In addition to traditional IP work, the firm is at the forefront of IP asset monetization, using capital markets and other financial transactions to achieve clients' goals.
BRONZE SPONSOR
UBIC North America provides customizable, end-to-end eDiscovery and data-forensic services and solutions that cover the entire EDRM life-cycle for corporate litigation strategy and crisis management. A subsidiary of Tokyo-based UBIC Inc. (TYO:2158), the company’s proprietary, advanced technology platform, Lit i View™, accurately handles Korean, Japanese and Chinese-language characters, encoding schemes and native file systems as well as those in English and other major European languages. Since 2003, UBIC has completed more than 500 corporate investigations across Asia. In North America, UBIC has completed more than 250 administrative and legal proceedings, including DoJ, ITC and SEC investigations.
BASIC EXHIBITOR
For more information, please contact us at: info@ipcounselcafe.com or call (646) 867-3808.
Thank you to our Advisory Board.
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MICHELLE LEE Head of Patents, Patent Strategy and Partnerships & Deputy General Counsel |
SAM O'ROURKE Deputy General Counsel, IP |
DOUGLAS LUFTMAN Vice President, Innovation Services & Chief Patent Counsel CBS |
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BJ WATROUS Vice President & Chief IP Counsel Apple |
BILL BECKER Senior Director of IP Align Technology |
JOSEPH FITZGERALD Sr. Vice President, Legal & Deputy General Counsel Symantec Corp. |
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ANIRMA GUPTA Deputy General Counsel, IP & Litigation Intuit |
ALLEN LO Deputy General Counsel |
DEREK MINIHANE Head of IP Strategy Cochlear |
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STEPHANA PATTON Associate General Counsel, IP & Licensing Salix Pharmaceuticals |
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Legal & Business Program Advisor: LISA MCFALL Founder & Managing Director Ovidian Group |
Diversity Advisor: KARINEH KHACHATOURIAN Advisory Board Member Watermark |
Legal & Business Program Advisor: MALLUN YEN Executive Vice President RPX Corp. |
PLATINUM SPONSOR
Foley & Lardner LLP is one of the only general practice firms in the country to be recognized as a leader for both patent litigation (by Corporate Counsel magazine) and patent and trademark procurement (by IP Today). With more than 200 IP attorneys, Foley delivers a full life cycle of IP services to obtain, protect, and add value to our clients' IP assets. We are among the nation’s leaders in securing high-quality patents, trademarks, and copyrights; we provide product clearance opinions; conduct licensing programs; and handle the IP due diligence for corporate transactions. And when and if our clients IP assets are in jeopardy, we handle the IP enforcement proceedings using our skilled and experienced IP litigators. Our team develops IP management strategies that complement each client’s overall competitive strategy. Since 1842, Foley has expanded, with offices throughout the United States and in Brussels, Shanghai, and Tokyo. For more information, please visit www.foley.com/ip.
PLATINUM SPONSOR
Orrick’s Intellectual Property group is a leading global law firm and was recently selected as one of Law360’s “Top IP Groups of the Year for 2010.” Orrick has more than 150 lawyers who are involved with IP matters and many have advanced technical degrees. In addition, 60 of our lawyers are admitted to practice before the United States Patent and Trademark Office. We are regularly chosen by leading companies in many industries for our comprehensive, innovative and collaborative approach to IP planning. Our successes in IP litigation and our appellate work make our IP team the go-to choice for resolving bet-the-company IP disputes and for helping to keep companies out of the courtroom.
We advise and represent clients in patent, trademark, copyright, trade secret and litigation matters. In addition, we regularly counsel clients on cloud computing issues, including mergers of providers, outsourcing agreements, regulatory review of anticompetitive conduct, privacy and data management issues and criminal investigations involving search and seizures. Our highly ranked attorneys also advise on antitrust actions, strategic IP counseling, United States International Trade Commission actions, contentious licensing, patent and trademark infringement, branding issues, unfair competition, commercial disputes, Internet safety and liability and United States Patent and Trademark Office interference issues.
For further information about Orrick’s IP practice, please visit us at www.orrick.com/ip.
PLATINUM SPONSOR
Durham Jones & Pinegar is a leading law firm with offices in Utah and Nevada, offering a full spectrum of services in more than 20 specialized fields. These include Business & Finance, Commercial Litigation, Intellectual Property (including Patents, Trademarks, Copyrights, Trade Secrets, IP litigation and IP strategies), Governmental Relations, Estate Planning, Real Estate, Bankruptcy, Employment, Tax Law, Family Law and more. For information, visit www.djplaw.com.
PLATINUM SPONSOR
Drawing from the experience of over eighty registered patent and trademark attorneys, Sughrue Mion offers unmatched expertise in a wide range of intellectual property matters. Our ability to succeed in specialized IP forums is built upon our recognized strength and leadership in patent law, both before the U.S. Patent and Trademark Office and before the U.S. federal courts and international trade courts. Historically, Sughrue Mion ranks in the top firms for the number of patents obtained from the U.S. Patent Office and also led the rankings in the number of trademark filings. From offices in Washington, D.C., California, and Tokyo, Sughrue Mion is proud to serve the world’s largest patent and trademark holders. www.sughrue.com
GOLD SPONSOR
DLA Piper is highly-regarded Patent Litigation practice ranks among the most active practices in US District Courts and in the ITC (IP Law & Business, 2004-2009). We are especially strong in complex multi-jurisdictional patent litigation, including global litigation. DLA Piper's Patent Prosecution lawyers counsel innovative companies on strategic patent prosecution in the US and worldwide. Our Trademarks practice handles more than 50,000 marks in over 150 countries, and regularly ranks among the top five in new US trademark registrations (Intellectual Property Today, 2004-2009). We also rank in the top ten nationally in both trademark litigation and copyright litigation (IP Law360, 2009).
GOLD SPONSOR
With 375 intellectual property lawyers, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in the United States, Europe, and Asia, the firm practices all aspects of trademark, copyright, patent, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan represents clients in virtually every business sector -- consumer products, financial services, the Internet, telecommunications, manufacturing, publishing, biotechnology, pharmaceutical, chemical, medical device, healthcare IT, alternative energy, electronics, and computer -- on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For more information, please visit http://www.finnegan.com
GOLD SPONSOR
Fish & Richardson is a global law firm providing strategic counseling and litigation services to innovative clients who seek to protect and maximize the value of their intellectual property (IP). With more than 375 attorneys and technology specialists practicing IP strategy and counseling, IP litigation, and business litigation, Fish is known for its superior technical expertise. Fish has been named top patent litigation firm in the country for eight straight years, a premier IP firm for America’s biggest companies, and an elite top tier law practice. For more information, visit www.fr.com or follow @fishrichardson on Twitter.
GOLD SPONSOR
FTI Consulting, Inc. is a global business advisory firm with more than 3,500 professionals that work closely with clients to anticipate, illuminate, and overcome complex business challenges in areas such as investigations, litigation, mergers and acquisitions, regulatory issues, reputation management and restructuring. FTIís Intellectual Property team is dedicated to intellectual property matters, including litigation support and damages quantification, intangible asset valuation, royalty investigation and compliance, due diligence, licensing, and technology and intellectual property management. With offices across 6 continents, we have one of the largest and most integrated teams of professionals that assist in effectively addressing intellectual property management challenges, both inside and outside of your organization.
GOLD SPONSOR
Kenyon & Kenyon LLP combines strong technical sophistication with adept proficiency in intellectual property law to successfully enforce and defend the IP rights of many of the world's most innovative companies. Kenyon represents clients in IP litigation, prosecution, counseling, licensing and transactional matters pertaining to patent, trademark, copyright, trade secret, unfair competition, false advertising, IP antitrust, and technology transfer issues. Kenyon has particularly extensive experience handling IP matters for companies in industries including academia, chemicals, pharmaceuticals, biotechnology, consumer products, computers, software, Internet and e-commerce, semiconductors, consumer electronics, telecommunications, financial services, automotive and aerospace, materials science, industrial and equipment manufacturing, energy, entertainment, media and sports. To learn more about Kenyon’s attorneys, experience and rankings, please visit www.kenyon.com
GOLD SPONSOR
Founded in 1993, Liu, Shen & Associates is a law firm and also a patent and trademark agency, specializing in intellectual property and related laws. The firm’s practice focuses on filing and prosecuting patent applications, registering trademarks, legal counseling on all phases of intellectual property, and enforcement of intellectual property, including administrative actions, and judicial litigation.
Liu, Shen & Associates has now a team of around 320, including 190 professionals of patent and trademark attorneys, attorney-at-law, and patent engineers with expertise that covers almost all areas of technology.
Serving thousands of clients ranging from multinational corporations and world famous brand owners to individual inventors, Liu, Shen & Associates has grown to become one of the largest law firms and a leading intellectual property firm in China. The firm’s well-received reputation around the world is built on the team efforts to provide high quality services, and on the experienced professionals and well trained staff. The firm will continue its commitment to the excellence in the years to come.
GOLD SPONSOR
Global law firm Ropes & Gray, with 1,000 attorneys in nine offices on three continents, is a trusted legal advisor to clients in all stages of development across all sectors of the world economy. Among the top 10 firms with the most national first-tier rankings in the U.S. News-Best Lawyers survey of U.S. law firms, Ropes & Gray offers a range of practices universally recognized for the quality of their performances. From mission critical transactions to “bet the company” litigation, Ropes & Gray works collaboratively to assemble flexible, results-oriented teams that address clients’ singularly complex needs and promote their success.
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At Schiff Hardin we believe that understanding our clients' needs and goals is our most important job. More than 50 Schiff Hardin attorneys practice in the field of intellectual property law, in offices across the country. We provide a broad range of litigation, counseling, and transactional services involving patents, trademarks, trade dress, trade secrets, copyrights, franchising, licensing and electronic commerce of all types. Our intellectual property clients include some of the best-known names in the United States and abroad. These include manufacturers, retailers, sports celebrities, engineering firms, financial exchanges, universities, research laboratories, generic pharmaceutical companies, distributors, e-businesses, licensors and franchisors.
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Thomson Reuters is the world’s leading source of intelligent information for businesses and professionals. We combine industry expertise with innovative technology to deliver critical information to leading decision makers in the financial, legal, tax and accounting, scientific, healthcare and media markets, powered by the world’s most trusted news organization. With headquarters in New York and major operations in London and Eagan, Minnesota, Thomson Reuters employs more than 50,000 people in more than 100 countries. For more information, go to www.thomsonreuters.com.
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K&L Gates has more than 225 lawyers worldwide who devote their practice to protecting and commercializing clients' intellectual property assets, whether in the form of patents, trademarks, copyrights, or trade secrets. We have been involved in cases spanning a broad spectrum of technologies ñ from medical devices and computer networking technologies to clean technology and semiconductors. We also advise and represent some of the world's most prominent companies on cutting-edge IP issues, earning the firm recognition among the busiest trademark practices in the U.S. In addition to traditional IP work, the firm is at the forefront of IP asset monetization, using capital markets and other financial transactions to achieve clients' goals.
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UBIC North America provides customizable, end-to-end eDiscovery and data-forensic services and solutions that cover the entire EDRM life-cycle for corporate litigation strategy and crisis management. A subsidiary of Tokyo-based UBIC Inc. (TYO:2158), the company’s proprietary, advanced technology platform, Lit i View™, accurately handles Korean, Japanese and Chinese-language characters, encoding schemes and native file systems as well as those in English and other major European languages. Since 2003, UBIC has completed more than 500 corporate investigations across Asia. In North America, UBIC has completed more than 250 administrative and legal proceedings, including DoJ, ITC and SEC investigations.
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For more information, please contact us at: info@ipcounselcafe.com or call (646) 867-3808.
For partnering opportunities, please contact us at: info@ipcounselcafe.com or call (646) 867-3808.
PALO ALTO AGENDA
April 18-20, 2012
50+ IP Counsel speakers already confirmed.
Don't miss this opportunity to be part of the dialogue.
This program will SELL OUT.
DAY ONE
8:15-8:45
Registration & Breakfast
8:45-9:00
Opening Remarks
Speaker:
Michelle Lee
Head of Patents, Patent Strategy and Partnerships &
Deputy General Counsel
Google
9:00-9:50
KEYNOTE: American Invents Act: Making Patent Reform a Reality
Bernard Knight
General Counsel
USPTO
The Patent Reform Bill was signed into law in September 2011 and the USPTO has begun publishing proposed rules for implementing various provisions. Join us for this special Keynote Address by Bernard Knight, General Counsel, USPTO, on what these rules mean and how we can work together to implement them.
9:50-10:30
America Invents Act: The Long Road to Reform
Speaker:
Neel Chatterjee
Partner
Orrick Herrington & Sutcliffe
10:30-11:20
America Invents Act: Strategic Considerations
The Patent Reform Bill was signed into law in September 2011. Some changes have gone into effect almost immediately, while the more significant changes will go into effect in September 2012. What do companies need to be aware of? How can companies prepare? What are we not thinking about but should? This panel discussion will provide a roadmap of what companies have done and should do in the upcoming months.
- How can companies take advantage of their new options?
- How can companies prepare for the upcoming changes?
- What are companies doing with post-grant review?
- Are companies using provisionals?
Speakers:
Ted Joe
Patent Counsel
Salesforce.com
Katherine Kelly Lutton
Principal
Fish & Richardson
Emily Ward
Vice President & Deputy General Counsel
eBay
11:20-11:30
Break
11:30-12:10
This in-depth discussion will focus on how the AIA has changed companies’ patent prosecution strategy. What are companies doing with regard to the change in first to file rules? How are companies dealing with the new prior art provisions?
Speakers:
Paul Barker
Partner
Finnegan Henderson Farabow Garrett & Dunner
12:10-1:00
Reexamination and Opposition Practice under AIA
- How has the Patent Reform Bill changed opposition practice?
- Should you cite prior art at the risk that examiners will apply it differently, thus precluding future opportunities to assert it? - What do
the reexam and inter partes guidelines reveal?
- Why would you pick one vs. the other? How do the two fit together?
- When would ex parte be more useful than inter partes?
Speakers:
William Mandir
Partner
Sughrue Mion
Anup Tikku
Senior Litigation Counsel
eBay
Philip McGarrigle
General Counsel and Chief IP Officer
Nodality
1:00-2:30
Luncheon & Panel Discussion: Are Patents Hurting Innovation?
Speakers:
Laura Sydell
“When Patents Attack”
Digital Culture Correspondent
NPR
Brian Cronquist
VP Technology & IP
Monolithic 3D Inc.
2:30-3:20
Is Litigation Getting Tougher in Certain Venues?
This panel will discuss challenges that companies have experienced in various districts around discovery and transfer issues. Find out how companies are dealing with these challenges.
- Are certain districts becoming more strict?
- Do defendants in multi-defendant lawsuits have a meaningful opportunity to defend themselves?
- What are recent experiences around discovery and Special Masters?
Speakers:
Floyd E. Anderson
VP, Chief Patent Counsel
Avago Technologies
William Robinson
Partner
Foley & Lardner
Catherine Lacavera
Director of Litigation
Google
Hilary Ware
Associate General Counsel, Litigation
Netflix
3:20-4:10
NPE Litigation: Changing Patterns and the Impact of AIA
As defendants modify their strategies, NPEs are also changing their tactics. NPEs are bringing actions against more companies, demanding higher settlement amounts, using the ITC to their advantage, and more. What have companies’ experiences been over the past year, pre-litigation and during litigation? What changes can we expect the AIA to bring?
- Are judges demanding more during discovery?
- Do defendants in multi-defendant suits have a real opportunity to defend themselves at trial?
- What are we experiencing re: venue transfer?
- What are we experiencing re: the ITC and third party subpoenas?
- What impact will the AIA have on NPE litigation?
Speakers:
Clint Duke
Patent Attorney
Durham Jones
Douglas Luftman
Vice President, Innovation Services & Chief Patent Counsel
CBS
NolaMae McBain
Associate General Counsel, Patents
Xerox
Marilyn Riddervold
General Counsel
Wordtech Systems
4:10-4:20
Break
4:20-5:10
Damages Law Update: What are the Challenges Around Damages Theory?
This panel will discuss key cases that have shaped damages law over the past year, as well as developments of past cases. What are the challenges, pre-litigation and during litigation, around damages theory?
Speakers:
Ethan Andelman
Director of IP
NXP Semiconductor
Marta Beckwith
Director of Patent Litigation
Cisco Systems
Andrea Jeffries
Partner
Wilmer Hale
5:10-6:00
How to Manage Your IP Portfolio in Today’s Volatile Market
It is increasingly challenging to develop a comprehensive patent strategy that defuses threats to your company’s overall livelihood. Contributing to this volatile climate is the emergence of relatively robust secondary market for patents and patent portfolios and the implications of AIA relative to the viability of your IP assets. Join us for this timely, interactive discussion addressing key elements of how IP strategy can be used to achieve your business objectives in today’s changing market.
- How does the AIA change the calculus of aligning IP strategy with business strategy for IT/high-tech companies?
- Do the acceleration techniques provided by the AIA and prior rule-making now represent a desirable alternative to the old
strategy of filing (and waiting)?
- How can you use the AIA to address potential threats before they materialize?
- What factors determine where you spend your IP dollars?
- Considerations for prioritizing business objectives, technology assets, marketplace needs, and competition threats to
establish a well-integrated IP strategy
Speakers:
Michael Johnson
Patent Counsel
Qualcomm
Douglas Kundrat
VP, Deputy General Counsel & Director of IP
Agilent Technologies
John Lanza
Partner
Foley & Lardner
Naomi Obinata
Corporate VP of Legal and IP
SuVolta
6:00-7:00
Cocktail Reception
DAY TWO
7:45-8:00
Check-in
8:00
Breakfast and Round-tables
8:00-8:50
Watermark Breakfast Roundtable:
Is In–House Practice Changing for the Better?
Speakers:
Diane Ferguson
Deputy General Counsel
VCE Company
Karineh Khachatourian
Advisor
Watermark
Jason Smalley
IP Counsel
IGT
Monica Winghart
Executive Vice President & General Counsel
Article One Partners
9:00-9:50
America Invents Act and Your Law Firm
The AIA poses new risks to companies and law firms. Companies must modify their strategies. Law firms face greater liability if filings are not completed on time. The cost of law firm malpractice insurance may increase, thus potentially increasing law firm cost. How can companies successfully work with their law firms to comply with the new requirements?
- How are law firms responding to the new requirements?
- Should companies establish guidelines with their law firms?
- How can alternative fee arrangements be used to control new costs?
- How can In-House Counsel work with their law firm to meet new requirements?
Speakers:
Bill Becker
Senior IP Director
Align Technology
Bryan Butler
IP Counsel, Systems Networking
IBM
Stephen Hankins
Partner
Schiff Hardin
9:50-10:40
Streamlining operations so In-House Counsel can focus on high value work
Legal departments must do more with less. IP Counsel spend too much time on operational tasks. This panel will explore ways in which IP Counsel have become more efficient so that they can focus on high value work.
- What to outsource to law firms vs. keeping In-House?
- What tools to streamline operations?
- How to keep track of day to day matters?
- How to quickly find existing deals?
- How to quickly find patent applications?
Speakers:
Shailendra Bhumralkar
VP, IP Portfolio Development
SAP
Jeremiah Chan
Director of IP
JDSU
Arien Ferrell
IP Counsel, Assistant General Counsel
Intuit
Ingrid Foerster
IP Counsel
Information Management Division & SVL Site
Silicon Valley Labs
Jessica Hudak
IP Manager
Baxano
10:40-10:50
Break
10:50 - 11:40
TRACK 1
China: IP Development & Enforcement
Since 1984, China has undergone four revisions to its patent laws. What is the status of IP protection in China? How are companies developing and protecting their IP?
Speakers:
Chris Byrne
Vice President for IP Strategy
Tessera
Horace Ng
Managing IP Counsel & Director of Patent Procurement
Marvell Semiconductor
Allen Tao
Partner
Liu Shen & Associates
Brent Yamashita
Partner
DLA Piper
10:50-11:40
TRACK 2
Exploring New AIA Rules
Several provisions of the America Invents Act will go into effect on September 16, 2012. The USPTO is assembling Notices of Proposed Rulemaking which is scheduled for release to the public in mid-to-late January 2012. This discussion will explore the various rules and their implementation.
Speakers:
Frank Bernstein
Partner
Kenyon & Kenyon
George Simion
Senior Patent Counsel
Oracle
11:40-12:30
TRACK 1
Collaborative Defense: Does It Work?
Companies facing NPE litigation have few alternatives other than calling outside counsel. However, companies have been collaborating to share resources and information. What are companies’ experiences with the various patent aggregators?
- What market solutions have the best value propositions for mitigating risk?
- How do you reach that value proposition?
- What have companies experienced with different vehicles?
- What is the future of these vehicles?
- What other aggregating plans are there?
Speakers:
James Batchelder
Partner
Ropes & Gray
Scott Coonan
Director of IP Litigation & Licensing
Juniper Networks
Michael Shpizner
Vice President & General Counsel
Fujitsu America
Brian Way
Director of IP
Altera
11:40-12:30
TRACK 2
Crafting License agreements
This panel will address how to establish contractual relationships with various players, and how the AIA might change licensing considerations. Join us for discussion on best practices, drafting tips, and sample contract provisions for technology licensing and IP development agreements.
Speakers:
William Geary, Jr.
Vice President
MPEG LA
Michael Lachuk
Deputy General Counsel
Science Applications International Corporation
Jaime Siegel
Senior iP Counsel
Sony
12:30-2:00
Luncheon & Discussion
Due Diligence Done Right: Determining and Maximizing Value While Minimizing Risk
Whether your company is pre-IPO or engaged in an M&A transaction, this discussion will help you to determine true value while minimizing risk.
Speakers:
Hopkins Guy
Partner
Orrick Herrington & Sutcliffe
DAY 3
9:00-5:00
Patent Prosecution Bootcamp
Save time and money. Get your applications right the first time!
Avoid rejections and invalidations. This workshop will cover the basics of patent prosecution as well as tips for avoiding sloppy mistakes in written descriptions
-How to write a patent application from scratch?
-How to draft a claim that meets transformation test under Bilski?
-What tools are available for facilitating patent application and prosecution?
-How to respond to rejections? How to get your cases allowed?
-How to avoid prior art rejections?
-When and how to interview?
-After an application has been filed, are there things you should or should not do to obtain a patent that is stronger or enforceable?
-Should you grant elections over the phone? Why or why not?
-What to say or not say to an examiner on the phone?
-Should you use declarations and if yes, what should be in there?
Speaker:
Miku Mehta
Partner
Sughrue Mion
|
online event registration
by Regonline |
50+ IP Counsel Speakers already confirmed!
ETHAN ANDELMAN, Director of IP, NXP Semiconductor
FLOYD ANDERSON, VP, Chief Patent Counsel, Avago Technologies
PAUL BARKER, Partner, Finnegan Henderson Farabow Garrett & Dunner
JAMES BATCHELDER, Partner, Ropes & Gray
BILL BECKER, Senior IP Director, Align Technology
MARTA BECKWITH, Director of Patent Litigation, Cisco Systems
FRANK BERNSTEIN, Partner, Kenyon & Kenyon
SHAILENDRA BHUMRALKAR, VP, IP Portfolio Development, SAP
BRYAN BUTLER, IP Counsel, Systems Networking, IBM
CHRISTOPHER BYRNE, VP for IP Strategy, Tessera
JEREMIAH CHAN, Director of IP, JDSU
NEEL CHATTERJEE, Partner, Orrick Herrington & Sutcliffe
SCOTT COONAN, Director of IP Litigation & Licensing, Juniper Networks
BRIAN CRONQUIST, VP Technology & IP, Monolithic 3D Inc.
CLINT DUKE, Patent Attorney, Durham Jones
DIANE FERGUSON, Deputy General Counsel, VCE Company
ARIEN FERRELL, IP Counsel, Assistant General Counsel, Intuit
INGRID FOERSTER, IP Counsel, Information Management Division & SVL Site, Silicon Valley Labs
WILLIAM GEARY, JR., Vice President, MPEG LA
HOPKINS GUY, Partner, Orrick Herrington & Sutcliffe
STEPHEN HANKINS, Partner, Schiff Hardin
JESSICA HUDAK, IP Manager, Baxano
ANDREA JEFFRIES, Partner, WilmerHale
TED JOE, Patent Counsel, Salesforce.com
MICHAEL JOHNSON, Patent Counsel, Qualcomm
KARINEH KHACHATOURIAN, Partner, K&L Gates
BERNARD KNIGHT, General Counsel, USPTO
DOUGLAS KUNDRAT, VP, Deputy General Counsel & Director of IP, Agilent Technologies
CATHERINE LACAVERA, Director of Litigation, Google
MICHAEL LACHUK, Deputy General Counsel, Science Applications International Corporation
JOHN LANZA, Partner, Foley & Lardner
MICHELLE LEE, Head of Patents, Patent Strategy and Partnerships & Deputy General Counsel, Google
DOUGLAS LUFTMAN, Vice President, Innovation Services & Chief Patent Counsel, CBS
KATHERINE KELLY LUTTON, Principal, Fish & Richardson
WILLIAM MANDIR, Partner, Sughrue Mion
NOLAMAE MCBAIN, Associate General Counsel, Patents, Xerox
PHILIP MCGARRIGLE, General Counsel and Chief IP Officer, Nodality
MIKU MEHTA, Partner, Sughrue Mion
HORACE NG, Managing IP Counsel & Director of Patent Procurement, Marvell Semiconductor
NAOMI OBINATA, Corporate VP of Legal and IP, SuVolta
MARILYN RIDDERVOLD, General Counsel, Wordtech Systems
WILLIAM ROBINSON, Partner, Foley & Lardner
MICHAEL SHPIZNER, Vice President & General Counsel, Fujitsu America
JAIME SIEGEL, Senior IP Counsel, Sony
GEORGE SIMION, Senior Patent Counsel, Oracle
JASON SMALLEY, IP Counsel, IGT
LAURA SYDELL, Digital Culture Correspondent behind "When Patents Attack", NPR
ALLEN TAO, Partner, Liu Shen & Associates
ANUP TIKKU, Sr. Litigation Counsel, eBay
EMILY WARD, Vice President & Deputy General Counsel, eBay
HILARY WARE, Associate General Counsel, Litigation, Netflix
BRIAN WAY, Director of IP, Altera
MONICA WINGHART, Executive Vice President & General Counsel, Article One Partners
BRENT YAMASHITA, Partner, DLA Piper
For more information, please contact us at: info@ipcounselcafe.om or call (646) 867-3808.
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Palo Alto, CA
To make reservations, please call: 888-422-2264 or click here.
A special room rate is available to conference attendees before March 19th. When making your reservation, please mention code: OL6.
