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IP Counsel Café
Annual Silicon Valley Conference
Sheraton, Palo Alto, CALIFORNIA
May 10-12, 2017

"IP Protection in America: Where Are We In Eradicating Weak Patents?"

Companies struggle to secure new patents in the U.S., while the validity of their existing patents continue to be challenged. Our ability to obtain and defend patents under Section 101 was frustrated by the Supreme Court's decisions in Mayo, Myriad and Alice.  As we continue to strengthen the American patent system, what are the unintended consequences? And as the pendulum swings, how are companies preparing for upcoming changes?  Don't miss this opportunity to stay ahead!

Agenda Highlights:

  • Litigation Trends and Re-emerging Patent Wars

  • Articulating IP Valuation to Your C-Suite

  • Patent Trolls on the Rise in Asia and Europe

  • Open Source: A Necessity and Threat, Role of SEPs

  • Trademark Portfolio Building: Engage Your Sales and Marketing Teams

  • Patent Sales: State of the Market

  • and more!

Hear from IP Counsel at 60+ Companies

Space is limited. Don't miss this opportunity to join industry leaders.  Register now!

CLE - this program will provide approximately 20 CLE credits.




6:30 - 9:30
Opening Night Cocktail Reception & Welcome Dinner for Corporate Counsel. 

By Invitation Only.  Space is limited.


8:30 - 9:00
Breakfast and Registration

9:00 - 9:15
Welcome Remarks

9:15 - 10:00
Day 1 Keynote: "An Insider View of What's Happening at the USPTO"
Joining us from the USPTO, Greg Vidovich, Associate Commissioner for Patent Quality at the USPTO, will share an inside view of recent happenings at the USPTO. Douglas Luftman, General Counsel & Chief Innovation Officer at Lecorpio, will lead this fireside chat. Stakeholders will have an opportunity to ask questions and provide feedback.  What improvements do you want to see?

  • How has the USPTO changed over the past decade, and what changes are on the horizon?

  • What recent developments should we take note of?

  • What were the results and some of the lessons learned from the Enhanced Patent Quality Initiative?

  • What is the status of some of the various pilot programs, such as the Post-Prosecution Pilot (P3) Program, After Final Consideration Pilot (AFCP 2.0), and Pre-Appeal Brief Conference Pilot?

  • Looking ahead: Is the USPTO exploring any new pilots?

-Douglas Luftman, General Counsel & Chief Innovation Officer, Lecorpio
-Greg Vidovich, Associate Commissioner for Patent Quality, USPTO

10:00 - 10:55
Challenges of Patent Portfolio Building in Today’s IP Market

Patent portfolio building has changed tremendously since the AIA was passed in 2011.  From PTAB to IPRs, Alice to Enfish, IP Counsel must confront an entirely new set of considerations.  A decade ago, the goal was to build a large arsenal for litigation purposes.  Times have changed and the emphasis is now on building leaner portfolios. At the same time, global changes pose additional challenges.  This panel will address:

  • What is the interplay of the broader IP market state?

  • What has been the impact of PTAB, IPRs, recent litigation, and Brexit?

  • How are different companies forecasting the market?

  • How to communicate these changes to your business leaders?

  • How to enter a market, and how to modify your strategy as the company grows?

-Brett Alten, Associate General Counsel - IP, Tesla, Inc.
-Aaron Capron, Partner, Finnegan Henderson Farabow Garrett & Dunner
-Tyler Gee, Senior Managing Counsel, Head of IP, GoPro
-Mike Lee, Lead Counsel, Patent Product Area (Mobile),
-Carolyn Krull Tomberlin, IP Manager, Rockwell Collins

Coffee Break


Re-Emerging Patent Wars:  Litigation Trends and What You Can Do to Mitigate Risk Now

Litigation filings are reportedly down, but they are still occurring.  While non-operating companies may be less active, litigation among operating companies is still occurring, if not increasing.  Gabe Ramsey will highlight key cases that you need to know about, litigation trends, how they may impact your company, and what you can do now to mitigate risk.   

Gabriel Ramsey, Partner, Orrick Herrington & Sutcliffe

The State of Patent Litigation in the U.S. and Abroad

Last year’s patent litigation district court filings decreased by 24.8% from the year prior.  Meanwhile, companies are increasingly filing and litigating in Europe and Asia. What has been the impact of Alice, PTAB and IPRs on patent litigation? What are the unintended consequences, if any, of patent reform and the effort to eradicate weak patents?  What is the effect of Brexit and the status of the UPC? How to deal with trolls branching out to Europe, Germany specifically, and Asia?

-Will Chuang, Vice President, RPX Corporation
-Patrick Fitch, Legal Director, Head of Litigation (US), LeEco
-Andrew Valentine, Partner, DLA Piper
-Karin Norton, VP & Senior Counsel, Samsung Electronics
-Brian Way, Senior Director of Patent Licensing, Dolby Laboratories


Lunch and Panel Discussion: "Empowering Your IP Departments: Data Analytics and Tools for Portfolio Management, Competitive Intelligence and Risk Mitigation"

Using the right tools and data can empower us to effectively manage our portfolios and competitive intelligence while mitigating risk.  We will discuss challenges and solutions for understanding what’s in an established portfolio and determining which assets are important. We will also consider tools for helping IP Counsel with innovation management, application drafting and analyzing office actions.  Finally, we will examine the role of data analytics and how it can enable you to empower your IP department. What's wrong with current approaches?

-Bradley Hulbert, Partner, McDonnell Boehnen Hulbert & Berghoff

-Jasminder Brar, Director of Strategic Development and IP, Titan Medical

-Jeremiah Chan, Legal Director, Global Patents, Google
-Kanda Ishihara, Senior Corporate Counsel, Veritas Technologies
-Tao Zhang, Senior Director of IP Strategy, Huawei Device USA

Presentation: "Empowering Your IP Department: the Power of Data Analytics"
-Dr. Jay Yonamine, Chief Data Scientist, Global Patents, Google


2:10 - 3:05
How to Speed or Slow Prosecution, 101 Rejections, and More

This panel will share how companies are dealing with 101 rejections, Enfish and other Post-Alice opinions.  They will reveal tips for obtaining the best examiners and technology silos for your applications, how to effectively use PTO pilot programs, and ways to delay prosecution.  

-Louis Diep, Senior IP Specialist, Nokia Technologies
-Michael Chu, Partner, McDermott Will & Emery
-Jennifer Johnson, PhD, Asst Chief IP Counsel, DuPont Industrial Biosciences

-Phil McGarrigle, Senior IP Counsel, Jazz Pharmaceuticals
-Thanh Vuong, IP Lead, Synaptive Medical

3:05 - 3:15
Coffee Break


Patent Harvesting: Finding Inventions and Choosing Between Patent and Trade Secret Protection

Litigation filings decreased last year, allowing companies to focus more on finding inventions.  This panel discussion will examine how IP Counsel are working with their engineers to flesh out inventions and choose between trade secret and patent protection.   We will explore a variety of pre-allowance issues and how to convert ideas into assets.

  • How to decide where your focus should be?

  • How to patent in spaces where others have not started patenting in yet?

  • How to work with law firms to help identify inventions?

  • How to increase DIs and make it more efficient?

  • How to promote your patent program internally?

  • Weighing trade secret and patent protection during patent harvesting process.

  • Trade secrets: what's the best protocol?

  • Do you have to keep a register of trade secrets?

  • Are there different levels of trade secrets?

  • Is there a real difference between trade secrets and confidential information?

-Miku Mehta, Partner, Procopio Cory Hargreaves & Savitch

-Suvashis Bhattacharya, Senior IP Attorney, NetApp
-Duo Chen, Director of IP, Box
-Scott Hauser, Associate General Counsel, IP, Fitbit
-Lopa Sengupta, Senior Patent Counsel, Kudelski Group

Global Filing Strategy for a Shifting Landscape

Today’s companies can have significant presence in multiple jurisdictions.  A company can originate an idea in one country, implement it in another country, and then send the product into another country.  What are best practices for filing patents when you have multiple inventors, multiple jurisdictions, and multiple markets?  Issues to be covered include:

  • Where should you file first?

  • How much better would the application be if it were originally written in English and then translated?

  • What are strategies for filing design protection?

  • Where should you file first and why?

  • Has 101 affected your global strategy?

  • How to reduce the cost of filing in Europe, and what is the impact of Brexit and the UPC?

  • With limited budgets for filing, which countries provide the most value?

  • What is the patent cost overall in different countries? How many years of value do you get? Can you get an injunction or lost profits?

-Archana Bhuta, Head of IP Portfolio, US, LeEco
-Arthur Bobel, Partner, Leydig Voit & Mayer
-Micah Jeppsen,  Senior IP Specialist Counsel, Nokia Technologies
-Michael Meehan, Director of IP, Uber
-Elizabeth Morris, Assistant General Counsel & Director of IP Law, KLA-Tencor Corp.

Cocktail Reception


8:15 - 9:00
Breakfast Panel Discussion: "Developing A Strong Trademark Strategy"

Today’s IP Counsel are increasingly responsible for a variety of different functions.  IP Counsel who have traditionally focused on patents are being asked to develop and monetize trademark portfolios as well.  This panel will discuss the differences between patent and trademark portfolio building, protection and monetization. IP Counsel from various industries will address:

  • How much trademark policing must you do?

  • Which potentially infringing activity requires your response?

  • How do you invest your resources wisely?

  • What trademark counsel should you hire?

  • How to engage with marketing in a meaningful way? How to name products in a way that makes sense to marketing?

  • How to clear trademarks at minimal cost?

  • How to record trademarks so the next person 20 years later understands why you did it this way?

-Jennifer Chung, Assistant General Counsel, Time Inc.
-Diane Gabl Kratz, Senior IP Counsel, Seagate Technology
-Eric Maschoff, Partner, Maschoff Brennan
-Liz Weiner, IP Attorney, NetApp

Day 2 Keynote: "The Evolving Role of Corporate Counsel: Our Power to Drive Change and Lead"

We are excited to confirm Suzan (Sam) Miller as our Day 2 Keynote!  Join us for a fireside chat with Suzan (Sam) Miller, Corporate Vice President, Corporate Secretary & Deputy General Counsel, Legal & Corporate Affairs at Intel Corporation.  Suzan will reflect on how her career and role at a global high-tech company have evolved over the past two decades.

  • How has the industry changed, and how has it shaped your career path?

  • How is the industry continuing to change?

  • What trends, if any, do we need to recognize and prepare for?

  • What challenges do you face in your field (high-tech)?

  • How can Corporate Counsel drive change and lead within our companies and beyond?

  • Any words of advice or caution? Show me the crystal ball!

- Lisa McFall, Deputy General Counsel, IP, Workday

- Suzan Miller, Corporate Vice President, Corporate Secretary & Deputy General Counsel, Intel Corporation

IP Valuation Methodologies and Explaining Them to Your C-Suite

How many times has your C-suite asked you: How much is that patent worth?  The valuation of your IP is completely context-driven. It is different for a corporate M&A, patent M&A, litigation, licensing program, and start-up valuation.  The practice of valuing IP is a relatively new discipline that is continuing to evolve as data becomes increasingly accessible. Join us for a concise review of recent valuation trends, and how you can explain these differences to your C-suite.

  • How do you determine which approach to use?

  • What are the contextual differences?

  • How do you best articulate these differences to your C-suite?

Elvir Causevic, Co-Head of Tech+IP Advisory, Managing Director, Houlihan Lokey and Former CEO+Founder of Blackstone IP


US and International Damages and Injunctions

As litigation decreases in the US, we are seeing increased litigation in countries with lower litigation costs, such as Germany, China and even India. This panel will discuss damages and injunctions, and what’s available in the US and abroad. To what extent can US patent holders assert U.S. damages models with regard to infringing activities conducted abroad by foreign entities?  To what extent can damages be attributed to design?  What is the state of law with regard to the types of damages you can get, the bases for damages, and the criteria for getting or losing different types of damages? In June 2016, the Supreme Court issued it’s opinion in Halo, which lowers the standard for awarding increased damages to patent holders when an infringer is found to have willfully infringed. Are companies doing anything differently?

- Cynthia Bright, VP & Associate General Counsel, US Litigation, HP Inc.
- Bryan Butler, IP Counsel, IBM
- Mike McGurk, Partner, DLA Piper

- Ben Wang, Vice President & Chief IP Counsel, ZTE
- Leah Waterland, Director, Legal Services & IP Litigation, Cisco Systems

Coffee Break

Current PTAB and Litigation Issues

We will share recent litigation trends and how companies are faring at the PTAB.  Issues include:

  • How to deal with demand letters to minimize willfulness claims?

  • How to deal with the different claim construction standards in PTO vs. District Courts (Philips vs. BRI)

  • Transfer issues: Strategically, when should you transfer?

  • Forum shopping: What to do with the Eastern District of Texas?

  • IPR strategy: should you join your co-defendants’ IPR? What if you already filed your own IPR – should you wait for your institution decision first, before deciding to join co-defendant’s IPR?

  • How to deal with estoppel issues? How to avoid estoppel with regard to your co-defendant’s IPRs?

-Matthew Clements, Lead Administrative Patent Judge, PTAB, USPTO
-Rob Kramer, Partner, Dentons US LLP
-Deanna Kwong, IP Counsel, HP Enterprise
-Erin Mehta, Counsel, Litigation and Patents, Hulu

Open Source:  A Necessity and Threat

The open source world is changing.  Once collaborative and non-litigious, enforcement actions for open source software rights are now on the rise.  This is an alarming development, since open source cannot be avoided for software development: open source drives the Internet of Things (IoT) and self-driving vehicles. Christoph Hellwig’s lawsuit against VMware over alleged GPL violations is evidence that companies must act now to ensure compliance, or risk litigation.

Join us for a discussion on how IP Counsel are working with their engineers to ensure compliance. Issues to be addressed include:

  • How to establish standardized practices for documentation and assurances of software development practices, so that your supply chain can be comfortable that there are no open source problems?

  • What is in-house counsel’s role with regard to open source and IP protection?

  • What is the right balance of gatekeeper and business person?

  • What litigation is pending? What are the different theories of litigation around the world?

-Hogene Choi, Partner, Baker Botts

-Kevin Brown, Director of IP, NVIDIA
-Hung Chang, Director of IP, Open Source Counsel, HARMAN International
-Ibrahim Haddad, VP R&D and Head of Open Source, Samsung Research America - Silicon Valley
-George Simion, Director of IP, NetApp
-McCoy Smith, IP & Open Source Attorney, Intel Corporation
-Oskar Swirtun, CEO, FOSSID AB

Lunch and Panel Discussion:
Safeguarding Your Company from Patent Disaggregation:  Best Practices for Buying and Selling in the Secondary Market

Companies divest patent assets in order to generate revenue, change strategic positions, and a variety of other reasons.  There are steps you can take to avoid negative consequences down the road.  We will examine the state of the market and tackle key issues:

  • What are the issues and pitfalls to be aware of when you are approached by a potential buyer or seller of patents or a patent broker?

  • How do you decide which patents to sell?

  • What are some of the immediate and subsequent consequences of selling your patents that you should think about? How can you mitigate those potential consequences now?

  • How can a LOT agreement help your company and what should you include in these types of deals?

-Joanne Suh, Managing Counsel, Patent Licensing Group, Intel Corporation

-Russ Binns, CEO and General Counsel, Allied Security Trust
-James Kovacs, Associate General Counsel, Director of Patent Licensing Group, Intel Corporation
-John Mulgrew, Global Head of IP, Uber
-William J. Robinson, Chair, IP Litigation, Foley & Lardner


Open Source 101: How to Set Up Your Compliance Program?

Join us for a basic workshop on how to set up your open source compliance program and due diligence

Introduction to open source and the different license categories.
How companies use proprietary software with different OS licenses.
Which risks are involved with the usage of open source?
How to handle licensing conflicts?
How to set up open source policies and compliance process?
How to set up successful due diligence process for M&A?

-Jon Aldama, VP, Products and Services, FOSSID AB

-Peter Kirk, IP Counsel, Peter Kirk
-Arho Suominen, Chairman of the Board, Teqmine Analytics

FRIDAY, May 12, 2017

8:30 - 12:00
Breakfast Workshop:
"The Secret to Obtaining a High-Quality Patent: Patent Harvesting Thru Post-Grant Prosecution - Strategies For Every Stage of Your Invention Life-Cycle"

What is the secret behind obtaining a high-quality patent?  You can take simple steps at every stage of your invention life-cycle to create a fool-proof patent that can withstand various challenges.  From patent harvesting to post-grant prosecution, Miku Mehta and his team will share simple steps that you can take to obtain a patent that can withstand various challenges. Hear from seasoned patent prosecutors, including a former patent examiner. We are also pleased to introduce Patrick Ross, Former Chief of Communications at the USPTO.  Issues to be addressed include:

  • How to work with your engineers during patent harvesting meetings?

  • What art units are favorable to your technology and how do you land in those art units?

  • What are examiners looking for?

  • What guidance is provided to examiners following Court decisions?

-Miku Mehta, Partner, Procopio Cory Hargreaves & Savitch

-Patrick Ross, Former Chief of Communications, USPTO, Senior Manager, Procopio Cory Hargreaves & Savitch

- End of Program -



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