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DAY ONE
WEDNESDAY, APRIL 14th
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8:15-9:00 Registration & Breakfast
9:00-9:10 Opening Remarks
9:10-10:00 Day One Keynote: Evolving IP Marketplace
Join us for this highly anticipated Keynote Address by our Washington, DC Insider, Suzanne T. Michel, Director for Office of Policy Planning at
the Federal Trade Commission. Ms. Michel heads the FTC’s project on the “Evolving IP Marketplace.” Over the past year, the FTC
completed a series of hearings exploring how markets for technology and patents operate, how they can promote or burden innovation, and
how they are affected by patent law doctrines. Ms. Michel’s Keynote will reveal lessons learned from the hearings as the FTC nears
completion of the resulting report. What are the implications for patent and antitrust issues? What do they mean for the future of IP and
Innovation in Silicon Valley and beyond?
Speaker:
Suzanne T. Michel
Deputy Director, Office of Policy Planning
Federal Trade Commission
10:00-10:20 • Damages Law and Policy (Part I): Case Law Update
There has been a great deal of debate around the role that Damages plays. We begin our damages debate by focusing on the key cases
that have emerged over the past year. Join us for a discussion on cases such as Lucent v. Microsoft as well as injunction decisions that
have emerged since eBay.
Speaker:
Andrew Valentine
Managing Partner
DLA Piper
10:20-11:20 • Damages Law and Policy (Part II): Legislative Role of Patent Damages
After examining the key cases that have emerged this past year, we will tackle the problems that these cases create with regard to patent
reform. What is the legislative role of these key cases? What is the status of damages apportionment?
Speakers:
T. Rao Coca
Senior Director of Portfolio Development & Licensing
NVIDIA
Christopher Marchese
Principal
Fish & Richardson PC
Taraneh Maghamé
Attorney-at-Law
Brian Napper
Senior Managing Director – Forensic and Litigation Consulting
FTI Consulting
11:20-12:15 • Damages Law and Policy (Part III): Business Role of Patent Damages
This panel will discuss the ramifications of recent case law, the business consequences, and how companies are responding. Join us for
a practical discussion on how to negotiate licenses and settlements in light of recent developments.
Speakers:
Nicholas N. Leach
Managing Counsel, Chief Patent Counsel
Chevron Corporation
Brian H. Way
Director of Intellectual Property Law
Altera Corporation
Bobbie J. Wilson
Chair of IP Litigation Practice Group
Howard Rice Nemerovski Canady Falk & Rabkin
12:15-1:45 Luncheon
1:45-2:40 Winning Defense Strategies for Multi-Defendant Lawsuits
Plaintiffs such as patent-holding companies are increasingly naming numerous defendants in a single complaint. Rather than settle
immediately, there are other considerations that may benefit defendants in the longer run.
- How should defendants respond?
- What are the benefits of working together?
- What should defendants consider?
- What are good defense strategies?
- What can a defendant do to avoid bearing all defense cost?
Speakers:
Archana Bhuta
Director of IP, SLT Group
Juniper Networks
William Mandir
Partner
Sughrue Mion
Matthew Sarboraria
Senior Patent Counsel
Oracle Corporation
John Scherling
Partner
Sughrue Mion
2:40-3:30 Creative Budget Control: How to Structure Your Fee Arrangements
In today’s economic environment, legal departments are facing increased budget cuts while legal expenses continue to rise. How are
different companies structuring their fee arrangements? Join us for a discussion on what works in various situations –
- What are some successful flat-fee budget approaches for multi-defendant cases brought by patent-holding companies?
- How to control the cost of patent prosecutions?
- How can your company get more with less?
Speakers:
Diane Honda
Vice President, General Counsel & Secretary
Extreme Networks
Jeremy Kashian
Associate General Counsel
NEC Corporation of America
Michael J. Shpizner
Vice President & General Counsel
Fujitsu America, Inc.
Neel Chatterjee
Partner
Orrick Herrington & Sutcliffe LLP
3:30-4:00 Café Break
Various presentations will be held in the Exhibitor Area during this break. Feel free to stop by any of them!
• Insider Tips on Patent Protection in China – Jay Sha, Liu Shen & Associates
• How Much Should It Really Cost? - Joseph Karcinell, Park IP Translations
• Foreign Filing Strategies for a Tight Budget – Justin Simpson, Inovia
• Climbing the IP Value Hierarchy - Unycom
• WIPLA Roundtable (Women IP Lawyers Association) – come by to learn more!
• SFIPLA Roundtable (San Francisco IP Lawyers Association) – come by to learn more!
4:00-4:50 Reexaminations Under the New Administration
Reexaminations are used more frequently than expected as a litigation tool rather than a pre-litigation tool. What should your strategy be?
How have reexaminations changed under the USPTO’s new Director, David Kappos? Are examiners handling it differently? How has the
process changed over the last year? What have companies’ experiences been?
Speakers:
Jeff Draeger
Director of Patent Analysis
Intel
David Foster
IP Counsel
Actel Corporation
Matthew A. Smith
Author of Inter Partes Reexamination, a West Publication
Attorney, Foley & Lardner
4:50-5:40 Foreign Filing and Foreign Prosecution: Experiences in Asia and Europe
Legal departments are facing increased budget cuts. With limited resources, legal departments are more discriminating with regard
to foreign filing and prosecutions. This panel will address --
-International vs. US practice: What to do differently?
-Are we receiving fair examinations in foreign countries?
-Do political reasons determine the outcome?
-How to speed up foreign prosecutions?
-Should we file in Japan despite low success rates? Why?
-Experiences in BRIC countries?
-Experiences with opposition practice?
- When to use PCT?
-When to use utility models?
-3rd party observations?
Speakers:
Brett G. Alten, Ph.D.
Director of Patent Development
Apple, Inc.
Bill Becker
Senior Director of IP
Align Technology
Michael Johnson
Patent Counsel
Qualcomm
Phil McGarrigle
General Counsel & Chief IP Counsel
Nodality, Inc.
Justin Simpson
Founder & Executive Director
inovia
5:40 Cocktail Reception
- END OF DAY ONE -
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DAY TWO
THURSDAY, APRIL 15th
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8:00-8:45 Breakfast and WIPLA Roundtable: The IP Counsel's Career Path
In today's uncertain times, IP Counsel face numerous career choices, yet little mentoring is available. What options are available to IP
Counsel? Hear a panel of diverse experiences.
-Law firm to in-house
-In-house to private practice
-IP Counsel to General Counsel?
- What's in-between?
Speakers:
Julie Brush
Founding Partner
Solutus Legal Search
Karineh Khachatourian
President, WIPLA
Partner, K&L Gates
Lisa McFall
Founder & Managing Director
Ovidian Group
Carol Webster Millie
Mediator
Silicon Valley Mediation Group
Laura Lee Norris
General Counsel Services
Eve Saltman
Vice President, Legal Affairs
OnLive
8:45 - 9:45 Patent Pools: Solution to Standards and Fragmented IP Rights?
Standard setting is increasingly vital to the commercialization of new technologies, but it also poses many challenges to innovation. Is
patent pooling a solution to the problem of access?
- What are the recent trends in standard setting?
- Are patent pools a solution to fragmented IP rights?
- Are patent pools creating more problems?
- What is the status of patent pool regulation?
- What are the anti-trust challenges?
- What are the conditions under which pools are easy or difficult to perform?
- Will we see more patent pools in the future?
Moderator:
Steven A. Moore
Senior Counsel
Foley & Lardner
Panelists:
Paul Bawel
Senior Attorney
Microsoft Corp.
Bill Geary
Vice President
MPEG LA
Dan Lang
Director of IP
Cisco Systems, Inc.
Doug Luftman
Associate General Counsel, IP
Palm, Inc.
Marc Mayer
Managing Counsel, IP Practice Group
Agilent Technologies
9:45-10:40 How is Damages Law Affecting the Patent Market?
Damages law has undergone changes over the past year. This panel will discuss how damages law has affected the buying and selling of
patents. Is the lack of predictable valuation model for damages affecting the patent market? What are the recent trends? What should we
consider when buying and selling? What can we expect to see in the next year? What is the future of your company's patent portfolio?
Speakers:
Ron Laurie
Managing Director
Inflexion Point Strategy
Lisa McFall
Founder & Managing Director
Ovidian Group
Jeffrey Myers
Director & Associate General Counsel, Head of Patent Practice Group
Adobe Systems, Inc.
Paul Saraceni
Chief IP Counsel
RPX Corp.
Two Tracks - Attend One or Both!
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10:40-11:30 Building Value: How to Position Your Legal
Department as a Strategic Business Partner Within Your
Organization
Legal departments have to work with the Company’s Board and
other departments. Often viewed as a cost-center, how can legal
departments increase their value? Hear how other companies have
positioned their legal departments, and the resources that can help
you achieve value.
-How can in-house counsel take control of their legal operations?
-How to gain greater visibility into your legal and IP matters while
simplifying internal processes and reducing costs?
-How to optimize legal dept performance?
-How to liaise with other departments?
Speakers:
Jeremiah Chan
Senior IP Counsel
JDSU
Guy Ellis
Director of Patent Operations
Intellectual Ventures
Domenic Leo
Senior VP & General Manager, IP
DataCert
Samir Raiyani
CEO
Dolcera
Tanya de la Fuente
Litigation Counsel
San Disk
11:30-11:40 Café Break
11:40-12:30 Open Source: Risks and Opportunities
Open-source licensing offers many benefits, but it also poses many
risks, particularly to its licensees. Find out why companies are
embracing open-source, and how they are setting up their
programs.
-What are the risks and opportunities?
-What is the impact on your patent portfolio?
-What are the intellectual property issues?
-How are companies setting up their compliance programs?
Speakers:
Stephen Gillespie
Partner
Fenwick & West
Sam O’Rourke
Associate General Counsel, IP & Litigation
Facebook, Inc.
Angela Ziegenhorn
Director, Strategic Licensing
Symantec Corp.
12:30-1:20 Hands-On Workshop: Winning Strategies for
Negotiating IP Indemnification
IP indemnification is often overlooked in deal-making and tacked on
at the end of negotiations, yet it often ends up being the most time
consuming part of deal-making. We will break up into teams to
discuss hypotheticals, issues, and possible solutions.
-How far have you been pushed?
-What indemnities are you willing to give?
-What indemnities do you want to get?
-What resolution makes sense under different circumstances, and
for different products?
-What is the range of possibilities?
-What to consider?
-Should it be negotiated first or last?
-Mere assertions vs. actual litigated claims - how many times have IP
provisions actually been litigated?
-Case law review – what do the terms mean?
-How do cases like quanta have impact on negotiations?
Speakers:
Beatrice Nguyen
Partner
Crowell & Moring
Kimberley Chen Nobles
Partner
Crowell & Moring
10:40-11:30 Asia IP Strategy: Limits to Patent Protection,
Exploring the Alternatives
Companies will discuss the benefits of patent protection, and
when it is necessary to consider alternatives such as trade
secrets, copyright and trademark protection.
-What is the status of patent protection in Asia?
-When to utilize alternatives?
-What are the pros and cons of trade secret, copyright,
and trademarks protection?
-What is the status of trademark protection in Asia?
Speakers:
Katherine Basile
Partner
Novak Druce + Quigg
Marilyn Glaubensklee
Patent Portfolio Development Director
SanDisk
Naomi Obinata
Deputy Director, IP Division
Taiwan Semiconductor Manufacturing Company
Jay Sha
Partner
Liu, Shen & Associates
11:30-11:40 Café Break
11:40-12:30 KSR and its Aftermath: Overcoming
Obviousness Rejections
Three years after the US Supreme Court issued its opinion in KSR
v. Teleflex, companies continue to grapple with the obviousness
standard. How are companies faring? Some questions to be
addressed include --
-How are companies overcoming obviousness rejections?
-What is the impact on high tech vs. biotech companies?
-When you add a functional aspect to a claim and turn a business
method claim into a quasi-structured claim, how do you handle it
during licensing?
Speakers:
Jonathan Feuchtwang
Vice President of IP
eValve, Inc.
Andre Marais
Patent Attorney and Managing Shareholder
Schwegman Lundberg Woessner
Loren McRoss
Senior IP Counsel
Sony Corporation of America
12:30-1:20 Training Your Engineers to Innovate
Engineers and lawyers work very differently to meet their goals, but
with a little bit of training, engineers can successfully collaborate
with legal departments to innovate and protect inventions. This
panel will address --
-What kinds of training should legal departments provide?
-How much training do engineers need?
-Should legal departments explain the patent system to
engineers?
Moderator:
Richard Hsu
Partner
Townsend & Townsend & Crew
Panelists:
Leonard Heyman
IP Counsel
VMWare, Inc.
Lesley Boveri
Associate General Counsel, IP
Phoenix Technologies
Nola Mae McBain
Associate General Patent Counsel
Xerox Corporation
Stuart Smolen
IP Director & Associate General Counsel
Juniper Networks
2:30-3:15 BONUS SESSION: RAPID RESPONSE! What to Do When You’re Under the Gun?
Don’t miss this special Luncheon Round-table Discussion designed for today’s increasingly dynamic IP Counsel. More than ever, IP
Counsel can play key roles in communicating IP matters to the public, business partners, the media, and investors. Responding rapidly
and effectively to potentially adverse attention is crucial to minimizing legal and reputational harm. Join us for this round-table discussion
of shared experiences, lessons learned, and practices to follow when the heat is on. Find out how key players at leading companies
transformed potentially disastrous media attention into positive (or at least non-detrimental) results for their companies. A session not to
be missed!
Speakers:
John Moriarty
Senior Vice President - Law
Elan Pharmaceuticals
Dana Wagner
Senior Competition Counsel
Google Inc.
Joshua Galper
Partner
Orrick, Herrington & Sutcliffe LLP
Adam Goldberg
Partner
Orrick, Herrington & Sutcliffe LLP
-- END OF CONFERENCE. See you in 2011! --
AGENDA AS OF FEBRUARY 16, 2010. Please check back for updates.
1:20-2:30 Luncheon & Panel: How to Develop A Comprehensive Patent Strategy - where does the leadership reside?
Given the role of today’s patents, developing a comprehensive patent strategy is vital to a company’s livelihood. This expert panel of senior
IP Counsel in diverse industries will address your greatest questions --
- Where does the leadership for patent strategy really reside?
- Does/should the legal dept play a leadership or supporting role?
- What structures and linkages are necessary to develop a successful patent strategy, so that you end up with the cream of the crop?
- How to resource your patent strategy?
- How to get senior management team on board?
- How do IP Counsel at larger, more sophisticated organizations deal with these issues on a factual and practical level?
Moderator:
Joseph Siino
CEO
Ovidian Group
Panelists:
Christopher Byrne
Vice President of IP Strategy
Tessera Technologies
George Jonas
Head IP Counsel
SunPower Corporation
Larry Rozsnyai
Director of IP and Licensing
NovaBay Pharmaceuticals
BJ Watrous
Vice President & Associate General Counsel, IP Licensing
Hewlett-Packard
Thank you to our Sponsors for making this event possible.
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ADVISORY BOARD'S COCKTAIL RECEPTION Tuesday, April 13th, 6:00-9:00PM Join us for a lively brainstorm on inventing a new method of patent dispute resolution! Space is limited. RSVP required. Contact IP Counsel Café for details!
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IP Counsel Café, co-sponsored by ACC - Association of Corporate Counsel, proudly presents
"Future of IP and Entrepreneurship in Silicon Valley and Beyond" Crowne Plaza Cabana, Palo Alto April 14-15, 2010
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Suzanne T. Michel
Deputy Director, Office of Policy Planning
Federal Trade Commission, Washington, DC
Keynote Announced: "The Evolving IP Marketplace"
Suzanne T. Michel heads the FTC’s project on the “Evolving IP Marketplace.” Over the past year, the FTC
completed a series of hearings exploring how markets for technology and patents operate, how they can promote
or burden innovation, and how they are affected by patent law doctrines. Ms. Michel’s Keynote will reveal lessons
learned from the hearings as the FTC nears completion of the resulting report. What are the implications for
patent and antitrust issues? What do they mean for the future of IP and Innovation in Silicon Valley and beyond?