IP Counsel Café presents

Patentability & Ambiguity: Navigating Today's Reality

Annual Silicon Valley Conference

April 22-24, 2015
Crowne Plaza Cabana
Palo Alto

The state of patent protection will likely not be settled in our lifetime.  In June 2014, the Supreme Court issued the Alice opinion which changed the Rules of patentability.  Patent reform efforts continue in Congress.  The uncertainty over the future of patent protection in America has impacted patent prosecution, licensing, litigation, and acquisitions.  Will our portfolios, which we have spent so much time and money building, be worth nothing tomorrow?  Rather than be paralyzed by the uncertainty, what can companies do to find ways to navigate the unknown and still generate value for their companies?

Other Program Highlights:

  • Patent Portfolio Building Post-Alice
  • Navigating Patentability
  • IP Issues in Cloud Services
  • Post-Grant Procedures and Cost-Cutting Considerations
  • Impact of Europe's Unified Patent Court
  • Licensing Overseas: Traps for the Unwary
  • And more!

PLUS, don’t miss the Patent Prosecution Bootcamp, April 24th, 9am-5pm

CLE – Earn up to 24 CLE credits!

AGENDA

Day 1
Wednesday, April 22, 2015

8:00-9:00
Registration & Breakfast

9:00-9:10
Opening Remarks

9:10-10:00
Keynote Address: Navigating the USPTO in the face of Alice and Nautilus

The recent Supreme Court opinions in Alice and Nautilus have created a great deal of ambiguity around the requirements for patent validity.  How are patent examiners dealing with the ambiguity?  What factors do they consider in patent applications and post-grant review?  What guidance is the patent office offering to its examiners? 

Speaker:
John Cabeca
Director of the Silicon Valley
USPTO
 

10:00-11:00
Strategic Patent Portfolio Building in Today’s Shifting Landscape: Alice, IPRs and Other Considerations

Strategic portfolio building is important not only for defense and monetization, but also for keeping a company at the head of innovation. In the recent past, companies aimed to build large patent portfolios to increase their war chest, but the Supreme Court’s Alice opinion and the new post-grant proceedings have brought patent quality under greater scrutiny.  What are the new strategic considerations?

-       How to balance product protection and revenue generation?
-       How to deal with the uncertainty caused by the recent Alice decision?
-       Using Competitive Analysis for Portfolio Building
-       The role of big data
-       Considerations for high-growth industries

Speakers:
Brett Alten

Head of IP
SolarCity

Jeremiah Chan
Senior Patent Counsel
Google

Mark Davis
IP Counsel
Microchip Technology

Bradley Hulbert
Partner
McDonnell Boehnen Hulbert& Berghoff

Lisa McFall
Deputy General Counsel, IP
Workday

Heather Molleur
Associate Patent Counsel
Kinestral

Stuart Smolen
Senior Associate General Counsel
Walmart eCommerce
 

11:00-11:15
Break

 

11:15-12:15
How to Get Your Claims Through the Patent Office?

The rules for patentability have changed, causing uncertainty around software patents at a time when many companies rely heavily on these very patents.  Based on these new rules, what is the best approach for getting your software-related claims through the patent office?   And what are some international considerations?

-       What software claims are getting through the patent office?
-       What language is good or bad for you?
-       If you have a case pending, should you file another set of claims that is more likely to withstand scrutiny?
-       What is the best approach for cleaning up your existing patents that were written before the rule changes?  Pros and cons of re-issue
-       Is outsourcing of patent prosecution effective, especially in light of recent Supreme Court opinions?
-       How do you draft an application that provides enough fall back positions for prosecution that may occur in different countries?

Speakers:
Aaron Brodsky

Chief IP Counsel
Trimble

Miku Mehta
Partner
Procopio Cory Hargreaves & Savitch

George Simion
Director, Intellectual Property
NetApp
 

12:15-12:45
"The Impact of Alice and Nautilus on Your IP Litigation Practice"

Speaker:
Stanley Panikowski
Partner
DLA Piper
 

12:45-2:15
Luncheon and Discussion: "Long-Term Considerations for Developing Your Patent Portfolio"
This is an open discussion on how changes in the US and abroad influence our long-term patent portfolio strategy.  What long-term factorsdo we need to recognize now and grapple with today?

Speakers:
William Mandir
Partner
Sughrue Mion

Christopher Byrne
VP, IP Strategy
Samsung Electronics, Strategy & Innovation Center
 

2:15-3:15
IP Issues in Cloud Services

When a company provides a cloud service, or a company uses cloud services, many IP-related issues arise. What are the ramifications of embracing the cloud? Where does your data reside and which jurisdiction’s rules apply?   Where does the consumer reside?  How are companies dealing with data protection and confidentiality issues in the cloud?  How to deal with indemnity?  What are the benefits of using open source cloud computing software platforms such as OpenStack?

Speakers:
Eileen Evans
Vice President & Deputy General Counsel, Cloud Computing & Open Source
Hewlett-Packard Co.

Douglas Luftman
Chief Patent Counsel
NetApp

Brian McCormack
Partner
Baker & McKenzie

Sarah Tierney Niyogi
Legal Counsel
Dropbox
 

3:15-4:15
Current State of Patent Litigation and How Companies are Partnering to Reduce the NPE Threat

Over the past year, companies have embraced new solutions for working together to reduce the NPE threat.  We will explore some of these new solutions and whether they have impacted U.S. litigation.

Speakers:
Neel Chatterjee
Partner
Orrick Herrington & Sutcliffe

Kevin Jakel
CEO
Unified Patents

Sean Riley
SVP & Associate General Counsel
The Clearing House Payments Company

Eric Schulman
Director, Patents
Google
 

4:15-4:30
Break

 

4:30-5:30
Post-Grant Procedures: Cost-Cutting and Strategic Considerations

The post-grant proceedings have changed the patent litigation landscape.  This panel will discuss high-level considerations for litigation strategy and cost-cutting.  Issues to be addressed include:

Speakers:
Mary Huser
Senior Vice President & Associate General Counsel
McKesson

Peter O’Rourke
Senior Corporate Counsel
Oracle

Erik Puknys
Partner
Finnegan  Henderson Farabow Garrett & Dunner

Tim Wilson
Senior IP Counsel
SAS
 

5:30-6:30
Cocktail Reception

 

DAY 2
Thursday, April 23, 2015

 

8:00-9:00
Breakfast & Roundtable: Working for An NPE: Career Moves

Speakers:
Linda Beach
IP Counsel
Rovi Corp.

Karineh Khachatourian
Managing Partner, Silicon Valley
Duane Morris

Lisa McFall
Deputy General Counsel, IP
Workday


9:00-9:45

Keynote Address

Speaker:

Douglas Luftman
Chief Patent Counsel
NetApp
 

9:45-10:15
Key Cases in the Development of Damages Law

Speaker:

Stephen Hankins
Partner
Schiff Hardin

 

10:15-11:15
Evolution of Damages Law and the Status of RAND: Are We Finally Seeing Clarity

In the past year, there has been a litany of district and federal circuit cases in which the court has provided increasing clarity on how to calculate damages as well as reasonable and non-discriminatory licensing rates for the standard essential patents.  The courts appear to be shifting towards more reasonable damages awards, causing settlement and licensing fees to go down.   This panel will discuss the recent decisions and their impact on licensing and settlement negotiations.

Speakers:
Tina Chappell
Director of IP Policy
Intel

Mike Lee
Director of IP Strategy, Marketplace & Policy
Cisco

Daniel McGavock
Vice President, Practice Leader of IP
Charles River Associates

Mark Selwyn
Partner in Charge (Silicon Valley) & Co-Chair, IP Litigation Practice Group
WilmerHale

Brian Way
Senior Director, Licensing
Dolby


11:15-11:30
Break

11:30-12:30
Impact of the European Unified Patent Court

The European Unified Patent Court is on the path to ratification.  A single court ruling will be directly applicable to all its members states, resulting in widespread consequences for its plaintiffs and defendants.  The impact of an injunction award could be hugely detrimental to a defendant. Under what circumstances will you be entitled to an injunction? What impact will it have on licensing and strategy?

Speaker:
Dan Brook
Partner
Hogan Lovells

David Mason
Senior Director of Patent Portfolio
Align Technology
 

12:30-2:00
Luncheon & Discussion: Licensing Overseas – Traps for the Unwary Across the Globe

As our markets and industries expand, our IP licenses are increasingly subject to international political and economic factors, such as export control, transfer tax systems, general trade policies, and anti-trust regulations.  We will discuss challenges and best practices for some of the issues that have arisen in different parts of the world.

Speakers:

Jay Jurata
Partner
Orrick Herrington & Sutcliffe

Michael Lawrence
Senior Competition Counsel
Google

Dave Rockower
Chief IP Counsel
Pandora Media
 

DAY 3
Friday, April 24, 2015


9:00am-5:00pm
Patent Prosecution Workshop – How to Deal with Alice and Nautilus

Speaker:

Miku Mehta
Partner
Procopio Cory Hargreaves & Savitch