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Parts Unknown:

Global IP in an Increasingly Connected Yet Foreign World


May 6-9, 2019
Sheraton Palo Alto

As business brings us to parts unknown, we navigate a world that is increasingly connected yet foreign with mounting regulatory scrutiny and complexities. Meanwhile, innovation and technological advancement continue to alter the very nature of our IP, driving us to confront new questions and the myriad laws that govern ever-changing markets. How do we develop global IP strategies when today’s tertiary markets may soon be tomorrow’s primary markets? When our partners can easily transport their businesses to other countries where our IP is not protected?

Hear from IP Counsel at 70+ Companies!

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AGENDA HIGHLIGHTS
- Navigating Government Regulations at Home & Abroad
- Chinese vs. U.S. Companies in China: Comparative Discussion
-
Preparing for Brexit, or not
- Litigating in Foreign Jurisdictions
- Trademarks as Alternative to Patent Protection
- And more to come!

- NEW! China IP Workshop with Judge Rader (ret.) & Alibaba
- NEW! Women Law Leaders Program
- NEW! Cycling & Networking Event: Ride with IP Counsel Café! We are pleased to offer a cycling jersey to the first 20 registrants.

CLE
pending approval in California. If you need CLE from another State, IP Counsel Café can provide supporting documents.

Thank you for supporting IP Counsel Café. For more information, click here.


DETAILED AGENDA

MAY 6-9, 2019


MONDAY, MAY 6

PLENARY PROGRAM


6:00-9:00PM
Welcome Dinner for Corporate Counsel

(By invitation only. Space is limited.)


TUESDAY, MAY 7

PLENARY PROGRAM


8:15-8:45AM
Registration & Breakfast


8:45-9:00AM
Welcome Remarks


9:00-9:50AM
IP Protection in the Current Landscape: Recent Changes & Emerging Trends
We have new leadership at the USPTO, the DOJ has announced a new position on SEP licensing, we are amidst a China trade war, Brexit is on the horizon, and U.S. companies are increasingly subject to regulatory scrutiny. How is IP protection’s pendulum swinging against this backdrop? What issues are IP Counsel not thinking about but should?

Moderator:

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Thomas Chia
Director, Patents & Corporate Development
VIA Licensing

Panel:

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Brett Alten
SVP, Deputy General Counsel, Chief IP Counsel
HP Enterprise

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John Cabeca
Director of Silicon Valley Office
USPTO

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Michael Lee
Head of Patents
Google

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Robert Merges
Professor of Law & Co-Director of Berkeley Center for Law & Technology
UC Berkeley School of Law

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Carrie Williamson
Partner
DLA Piper


9:50-10:40AM
Building a Global Portfolio in Today’s Landscape: Balancing Innovation & Speculation
Companies have become more strategic in their filing decisions, valuing quality over quantity. With this goal of filing less, how are companies protecting their IP globally? What is the impact of recent developments and what challenges do they pose? We will examine familiar questions, but in light of recent developments.

- How to develop a portfolio to obtain freedom to operate when you don’t know the threats yet or who the players will be?
- How to direct your filings and patent acquisitions to address future threats?
- How to deal with §101 and §112 rejections?
- How to deal with reduction in pendency at the USPTO and EPO?
- There is increased focus in obtaining patents in foreign jurisdictions such as Germany and China, but other jurisdictions are competing to attract more filings and litigation. What will the landscape look like in 5-10 years?

Moderator:

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Jason Lang
Partner
Orrick Herrington & Sutcliffe

Panel:

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Jeff Draeger
VP, Director of Intel Patent Group
Intel

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Pierre Keeley
Director of Patents
LinkedIn

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John Mulgrew
Head of IP
Uber

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Gilbert Wong
Associate General Counsel, Patents
Facebook


10:40-10:55AM
Coffee Break


10:55-11:45AM
Foreign Prosecution: Considering Different Countries & Cost Cutting Strategies

Although there is increased focus on obtaining IP protection in foreign jurisdictions, companies are also facing pressure to cut cost and reduce the number of countries in which they file. Filing in Germany and China is common practice, yet it is not prudent to ignore other markets. Which countries are companies to choosing to file in and why? What strategies are they using to cut cost?

- Which countries are companies choosing to file in and why?
- How are laws and enforcement strategies changing in different countries?
- Other than China and Germany, are companies choosing to file in second and third tier countries such as Indonesia and Vietnam, and why? How about India, Japan and Korea?
- How to deal with EOP’s early certainty?
- The impact of Brexit?

Moderator:

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Miku Mehta
Partner
Procopio Cory Hargreaves & Savitch

Panel:

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Takuya Izumi
Senior Director, Technology & IP/IP Attaché to Silicon Valley
Silicon Valley Office of NEDO (New Energy & Industrial Technology Development Organization)

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Michelle Park
Senior Patent Counsel
Google

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Kanda Ishihara
Director, Legal - IP
Veritas


11:45 - 12:05PM
Inside the EPO: European Patent Prosecution Strategies for Cost-Cutting and Brexit

Speakers:

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Albert Keyack
Former EPO Attaché to the United States
European Patent Office

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Freddy Thiel
Vice President of San Francisco Liaison Office
Kilburn & Strode




12:05-1:00PM
Strategies for Managing U.S. & Foreign Patent Prosecution
We will discuss the challenges of managing U.S. and Foreign Patent Prosecution. What are some challenges and strategies for improving results and cutting cost? What are some business considerations?

Moderator:

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Ed Guntin
Partner
Guntin & Gust

Panel:

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Scott Lane
Cellular Standards Portfolio Manager
Intel Patent Group

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Ceyda Maisami
Senior Patent Counsel
HP

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Scott Pojunas
Lead Patent Counsel
Google

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Alex Silverman
AVP - Senior Legal Counsel, IP
AT&T


1:00pm
Luncheon Begins

1:15-1:30pm
Lifetime Achievement Award Ceremony
Join us in celebrating Bill Becker’s lifetime of service, contributions, and mentorship to the IP Counsel community.

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Bill Becker
Former Associate General Counsel, IP
Now retired



1:30pm
Keynote Address:

Navigating Government Regulations: Challenges of Being a High-Profile Social Media Company in Today’s Political Environment

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Keynote Speaker:
Paul Grewal
Vice President & Deputy General Counsel, Litigation
Facebook


2:10-3:00PM
The State of PAE Activity and Solutions
We will explore how PAE activity has changed over the past year and what companies are seeing.

- Are companies seeing any patterns in PAE activity?
- How are they responding to assertion letters?
- When is it time to call outside counsel?
- How are companies joining forces to deal with the PAE problem?
- Pros and cons of joining AST, LOT Network, RPX, and Unified Patents?

Moderator:

 

Sarah Guske
Partner
Baker Botts


Panel:

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Elena DiMuzio
Senior Legal Counsel, Litigation & Regulatory
Dropbox


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Ken Korea
SVP & Head of Silicon Valley IP Office
Samsung Electronics

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Joseph Kucera
Director, IP Strategy
Pure Storage

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Sanjeev Mehta
Associate General Counsel & Director
Verizon


3:00-3:15PM
Coffee Break


3:15-4:05PM
Remedies & Evolution of Damages Theory
Having certainty around damages is important for risk management and also licensing deals, yet the case law is constantly evolving. We will look at some of the key cases that have come out of the Supreme Court and Federal Circuit, and address their practical impact.

Moderator:

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Scott Penner
Senior Counsel
Foley & Lardner

Panel:

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Rob Lytle
Assistant General Counsel
Microsoft


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Leah Waterland
Director, IP Litigation
Cisco Systems


4:05-4:55PM
Alternatives to Patent Protection: Globalization and the Rise of Trademarks
As the economy changes, so do our businesses. Traditional means of IP protection may not be as effective. We will consider new approaches to protecting our products in global markets.

- When is trademark enforcement a better option than patent enforcement?
- Who drives trademark protection, legal or marketing? And how much do companies allocate to brand protection?
- How to develop your trademark strategy? Do you file a lot, or do you develop a certain mark and make sure all your costs are covered?
- How to monitor for trademark infringement? What tools do you use?
- How to combat on-line infringement?
- Trade dress vs. design patents: what are the pros and cons?
- Clearing trademarks in very crowded fields: what assessments to make?
- Foreign trademarking: how to approach foreign counsel, translations challenges, and unfamiliar laws in different countries?
- Extraterritorial considerations

Moderator:

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R. Parrish Freeman
Shareholder
Maschoff Brennan

Panel:

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Todd Adler
Managing Counsel
Oracle

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Diane Gabl Kratz
Senior IP Counsel
Seagate Technology

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Rafa Gutierrez
Director of IP
Uber

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Becky Unruh
Associate General Counsel
Western Digital


4:55-5:45PM
IPR & Litigation Strategy Update

- BRI (broadest reasonable interpretation) has been replaced by the Phillips standard, which is the same claim construction standard used to construe patent claims in Federal District Courts. How are companies adjusting their strategies?
- One year ago, the Supreme Court held in SAS that the USPTO, when instituting an IPR, must decide the patentability of all the claims challenged by the Petitioner. What has been the impact?
- How to deal with the Berkheimer Federal Circuit decision, which has taken the wind out of §101?
- What is the jurisprudence on venue and transfer? How are patent trolls trying to keep their cases in E.D. Texas?
- How can TC Heartland be applied? A patent troll can sue an American company’s foreign entity in E.D. Texas in an obvious attempt to get around TC Heartland, which does not apply to foreign entities.

Moderator:

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Jacob Schroeder
Partner
Finnegan Henderson Farabow Garrett & Dunner

Panel:

 

Bryan Sinclair
Senior Director, IP Litigation
Cisco Systems


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Sara Kerrane
Lead IP Counsel
Glaukos Corporation


5:45-6:45PM
Global IP(A)s Reception
Join us for appetizers, IPA beers, and music from all around the globe!


WEDNESDAY, MAY 8

PLENARY PROGRAM


8:15-9:00AM
Leveraging Outside Counsel in IP Department Management

- How are companies leveraging outside counsel to increase efficiencies and reduce cost?
- What functions are IP departments outsourcing to law firms? What are the pros and cons?
- How are small vs. medium vs large companies managing their legal departments?
- How to handle budget and staffing?
- How to work with your inventors and other departments more seamlessly?

Moderator:

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Blake Jackson
Associate
DLA Piper

Panel:

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Tim Farrell
Counsel, Patent Portfolio Management
IBM

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Jennifer Langenberger
Director of IP
University of Pennsylvania


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Dan Wan
Senior Counsel, Patents & Litigation
CBS Interactive


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Linda Wu (to be confirmed)
Senior IP Counsel
Natera


9:00-9:50AM
How General Counsel and IP Counsel Can Support Their Companies’ Diversity & Inclusion Initiatives
Many companies now require the new firms that they engage to have a certain percent of diverse lawyers. What kinds of programs can IP teams roll out internally and externally to support their companies Diversity and Inclusion Initiatives? What types of questions can they ask their law firms, other than those relating to expertise, quality and cost? How can General Counsel and IP Counsel push for more diversity?


Moderator:

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Karineh Khachatourian
Partner
Rimon Law

Panel:

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Carolyn Herzog
EVP & General Counsel
ARM

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Deanna Kwong
IP Litigation Counsel
HP Enterprise


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Chia-Hao La
Senior Patent Counsel
Google

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John Mulgrew
Head of IP
Uber


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Lauren Segal
General Counsel
Phoenix Technologies

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Patrick Zhang
Head of IP - Legal
Atlassian


9:50-10:05AM
Coffee Break


10:05-10:55AM
U.S. v. China IP Litigation & Transactions: a Comparative Discussion
We are beginning to see more licensing demands for Chinese patents. This appears to be the beginnings of a long-anticipated trend. As companies begin to see litigation in China, they have many questions around how Chinese litigation differs from U.S. litigation. Join us for a comparative discussion.

- Who is actively buying Chinese patents?
- How is the litigation process different in China?
- Is there forum shopping in China?
- What remedies are available in China?
- How to find Chinese outside counsel? How do U.S. firms work with Chinese firms?

Panel:

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Benjamin Bai
Chief IP Counsel
Ant Financial

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Elvir Causevic
Managing Director + Co-Head of Tech & IP Advisory
Houlihan Lokey


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Kenneth Chang
Partner
Adsero IP

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Xiao Chang
Senior Corporate Counsel
Cisco Systems

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Peter O’Rourke
Managing Counsel
Oracle


10:55-11:25AM
China Trademarks & Copyright Strategy: What Works, What Doesn’t. Get Insider Tips

Speaker:

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Amy Hsiao
Partner
Adsero IP


11:25-12:15PM
Improving Efficiencies in the Patenting Process, the State of Law Regarding Alice and 101, and Strategies for Overcoming 101 Rejections

The patenting process can be timely and expensive. When your inventors submit invention disclosures, it can take several months of back and forth with your patent agents and external counsel to obtain all the information needed for your patent application.
- What steps can you take to capture invention and keep your inventors engaged?
- How to improve the quality of your invention disclosures?
- What is the current state of law regarding Alice and §101, and strategies for overcoming 101 rejections?

Panel:

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David Chung
Partner
Snyder Clark Lesch & Chung

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Adam Kubelka
Senior Director, IP
Lumentum

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Jonah Probell
IP Strategist
SoundHound Inc.

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Valencia Martin Wallace
Deputy Commissioner for Patent Quality
USPTO


12:15-1:05PM
Challenges of Managing Your IP Portfolio: Choosing and Implementing Management Tools

How are companies choosing and implementing various IP portfolio management tools? We will share best practices and lessons learned.
- What due diligence is required when trying to figure ou which system would work best for you?
- How do IP departments work with their IT and HR groups? and other departments?
- How to extract inventor information?
- What to consider when implementing an IP management system?
- What difficulties are encountered during implementation?
- How to migrate from one system to another?
- How are the same tools used differently by small vs. large companies?
- How are companies using AI tools to manage their portfolios?

Moderator:

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Bradley Hulbert
Partner
McDonnell Boehnen Hulbert & Berghoff

Panel:

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Archana Bhuta
Head of IP Legal & Associate General Counsel
SRI International

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George Simion
Associate General Counsel, Senior Director of IP
Palo Alto Networks

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Liz Weiner
Senior IP Counsel
NetApp


1:05-2:15PM
Luncheon and Panel Discussion

1:30-2:15PM
Making the IP Value Proposition to the C-Suite

Companies have historically justified patent acquisition as a settled industry cost of doing business. But in today’s market, our business teams ask us to justify the cost. We must express the value of the IP. If your company does not emphasize outbound licensing, there are no easy numbers to serve as value indicators. It is no longer enough to point to concepts such as deterrence. How are IP Counsel making the value proposition to their business leaders? Hear from IP Counsel at different types co companies.

Moderator:

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James DeCarlo
Shareholder
Greenberg Traurig

Panel:

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Subroto Bose
Senior Director Global Patent Strategy & IP Operations
Dolby Laboratories


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David Dutcher
Chief Patent Counsel
Western Digital

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James Kovacs
Associate General Counsel, Director, Licensing Trademarks and Standards Group
Intel Corporation

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Michael Martin
Associate General Counsel, Head of Patents
Verizon Media


WEDNESDAY, MAY 8
3:15-7:00PM

WOMEN LAW LEADERS PROGRAM
Come for the discussions, Stay for the Chocolate & Wine Pairing
(This event is available to Women Attorneys only.)


3:15PM
Registration


3:30-3:40PM
Welcome Remarks


3:40-4:20PM
Women on Boards & California’s Law that Mandates It
California is the first State in the country to require publicly traded companies to include women on their boards of directors. By the end of 2019, companies must have at least 1 female director. By the end of 2021, companies must have at least 3 female directors if the board size is 6 or more members; at least 2 female directors if the board size is 5 members; and at least 1 female director if the board size is 4 or fewer members. Olga V. Mack helped spearhead this law. Join us for a discussion on what this means for women’s careers, and how women can best position themselves for board membership.

Speaker:

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Olga V. Mack
VP of Strategy
Quantstamp, Inc.


4:20-5:10PM
Your Personal Brand As You Climb the Ranks: When Being Aggressive Becomes a Liability

As a young, junior attorney, being aggressive may propel you forward in your career, but is this approach effective once you’ve reached the senior ranks? We will discuss how women have built and modified their personal brands as they climbed the ranks from individual contributor to manager. What makes a female manager successful? When is being aggressive a liability? What style works in a small vs. large company?

Moderator:

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Kadie Jelenchick
Partner
Foley & Lardner

Panel:

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Jennifer Langenberger
Director of IP
University of Pennsylvania


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Erin Mehta
Counsel, Litigation & Patents
Hulu

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Priya Venkat
Deputy General Counsel
Ribbon Communications

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Valencia Martin Wallace
Deputy Commissioner for Patent Quality
USPTO


5:10-6:00PM
Work Life Balance at Different Stages of Your Career

How is work life balance different for junior attorneys without children who want to move forward in their industries vs. more senior attorneys with family obligations? How does work life balance look at different stages of your life and career? Join us for personal stories and strategies for success.

Moderator:

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Mindy Morton
Partner
Procopio Cory Hargreaves & Savitch


Panel:

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Diane Gabl Kratz
Senior IP Counsel
Seagate Technology

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Mary Huser
Executive Vice President & Chief Legal and Compliance Officer
Plantronics

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Marie MacNichol
Senior Director, Patent Licensing
Dolby Laboratories

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Alison Wauk
SVP & Chief Digital Counsel
CBS Interactive


6:00-7:00PM
Women’s Wine & Chocolate Pairing Reception


THURSDAY, MAY 9

CHINA IP BREAKFAST WORKSHOP
China vs. U.S. Companies in China
hosted by Judge Randall Rader (ret.)


8:00-9:00AM
Breakfast and Registration


9:00-11:30AM
Comparing Chinese and U.S. Company Perspectives
- Best practices for combatting cross-border IP crimes
- Extra-territorial factors in IP protection. IP is governed by territorial jurisdiction, yet the use of IP is increasingly international without borders. How do we reconcile the territorial limits of IP protection in our increasingly borderless global economy?
- IP protection in e-commerce

Speakers:

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Judge Randall Rader (ret.)
Chief Judge
U.S. Court of Appeals for the Federal Circuit

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Howard Chen
Partner
K&L Gates

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Ted Liu
IP Counsel
DJI Technology Inc.


11:30-12:00PM
Networking Coffee Break


THURSDAY, MAY 9

CYCLING AND NETWORKING EVENT


4:00-7:00PM
Join IP Counsel for a 25-mile social ride.

Pace will be approximately 12 mph. This is a no-drop ride. All levels welcome. Let’s ride! First 10 registrants receive a free cycling jersey.

Please note: Riders must bring their own bikes. Please contact us for bike rental information.

We are pleased to announce that all proceeds will be donated to a charity selected by the IP Counsel Café Advisory Board.

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END OF PROGRAM

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