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May 17, Thursday at 2:00pm ET
Licensing Trade Secrets
Licensing of patents continues to grow as a major source of income
for many patent owners, both practicing and non-practicing.
The time may be ripe for more companies to consider monetizing their
trade secrets. It is well known that trade secret protection lasts as
long as the information remains secret, and royalties from the license
of a trade secret can also last a very long time, with some historic
trade secret licenses yielding income to the licensor for over a hundred
years.
This webinar will explore fine points of licensing trade secrets in
manufacturing, technology, data, and software. Topics covered
include:
- Drafting confidentiality, non-disclosure, non-use, and residual
knowledge provisions;
- Structuring a license to include patent rights and know-how;
- Licensing trade secrets in the life sciences, including issues
involving biological materials; and
- Valuing and pricing trade secret licenses.
Our panel includes the head of IP for a major multinational
automotive company, a transaction specialist in the life sciences, and
an expert in the financial valuation of intangible assets.
Speakers
- William Coughlin, Ford Global Technologies
LLC
- Matt Moyers, Ocean Tomo
- Amy Toro, Covington & Burling LLP
May 23, Wednesday at 2:00pm ET
Latest Developments in Multi-Defendant Patent Litigation
In recent years, patent plaintiffs have accused large numbers
of defendants of infringement in a single suit. Many co-defendants had
little opportunity to present individualized defenses on infringement,
willfulness, and damages. Concern about such joinder led Congress to
severely limit it for cases filed after the September 2011 enactment of
the America Invents Act.
Two decisions earlier this month shed light on the options now open to
plaintiffs and defendants:
- In In re Bear Creek Technologies, the Judicial Panel on
Multidistrict Litigation held that plaintiffs enforcing their patent
rights across multiple jurisdictions may still consider MDL as a
possible option to keep infringing defendants before one court up until
trial, even after the enactment of the AIA.
- In In re EMC Corp., the Federal Circuit clarified the standard for
joinder for cases that were already pending when the AIA became law. The
appellate court rejected the liberal standard applied by the Eastern
District of Texas, where defendants could be sued jointly as long as
their infringing products or services “were not dramatically
different,” and adopted a standard much closer to that of the AIA.
However, the court also took care to point out that district courts have
“considerable discretion” not only in how they apply the
relevant factors, but also in their ability “to consolidate cases
for discovery and for trial under Rule 42.’”
Our panel, which consists of two patent litigators and an in-house
counsel at a large tech company, will consider the impact of these two
decisions and discuss still-open questions such as the interplay of
separately-filed cases, transfer and venue jurisprudence.
Speakers
- Douglas Cawley, McKool Smith
- Craig Leavell,
Kirkland & Ellis, LLP
- Christa Zado, Cisco Systems, Inc.
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