Intellectual Property Owners Association

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IP Chat Channel – International

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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Design Patents: International Filing Strategies

Webinar Date: 11/15/2016

More companies these days feel the need for design patent protection in several countries outside the U.S. But complications are plentiful, pitfalls are many, and international harmonization efforts may offer false security. Our panel includes an in-house counsel with experience managing design patent prosecution in more than 15 countries plus the European Community, and two international design patent prosecution veterans. They will examine a number of issues that should be addressed in preparing an effective international filing strategy, including:

  • The significance of the “absolute novelty” standard in nations including China. No grace period means that any disclosure by the inventor or designer anywhere in the world, including in consumer testing and trade shows, is considered prior art before filing;
  • Differences in rules regarding partial designs, where only a particular feature is claimed;
  • Limits in enforceability, such as the “must fit, must match” and “hidden in use” exclusions;
  • Balancing cost and coverage.

Speakers:

  • John Cheek, Caterpillar, Inc.
  • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Robert Katz, Banner & Witcoff, Ltd.



After Brexit: European Patents and Design Rights

Webinar Date: 07/14/2016

Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. These two webinars will help owners of patents and trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Patent owners, for instance, need to be clear on the independence of the European Patent Office from the EU and will want to understand the dynamics that will determine whether the long-gestating United Patent Court ever comes to life. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. Each of our panels includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.

Speakers:

Paul Coletti, Johnson & Johnson
John Conroy, Fish & Richardson
Rowan Freeland, Simmons & Simmons




European Trademarks, Designs and IP Transactions

Webinar Date: 07/13/2016

Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. This webinar will help owners of trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. They also will want to review IP agreements for clauses defining territorial scope and draft future agreements with an eye to new possibilities, such as other countries leaving the EU. The panel includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.

Speakers:

Jonathan Day, Carpmaels & Ransford
Jake Feldman, Johnson & Johnson
Jan Zecher, Fish & Richardson




New EU Trade Secrets Directive: What Does It Mean for IP Owners?

Webinar Date: 06/09/2016

Europe has historically had a patchwork of differing trade secret laws, with some countries having no remedies for the theft of proprietary trade secrets, and many others providing only criminal— but not civil—remedies. So it’s big news that on May 27 the EU Council unanimously adopted the EU Trade Secrets Directive that provides minimum standards for trade secret protection. The 28 Member States have until 2018 to implement the provisions.

This European move comes a mere month after passage of the U.S. Defend Trade Secrets Act, which for the first time provides a federal civil remedy for the misappropriation of trade secrets. Our panelists will discuss and compare the two regimes and give advice on what their implementation means for U.S. companies. Topics to be discussed include “long-arm” provisions, which make it unlawful for a person who was aware or should have been aware of a trade secret theft to offer for sale infringing goods, and could offer a way to ban imports; protections for whistleblowers; and procedures to keep trade secrets private during enforcement and litigation.

Speakers:

Audra Dial, Kilpatrick Townsend & Stockton LLP
James Pooley, James Pooley PLC
Mark Ridgway, Allen & Overy LLP




You Lost the Arbitration: New Options for Appeals

Webinar Date: 04/28/2016

Arbitration isn’t for sore losers: a swift route to finality is traditionally a key to arbitration’s allure and to its risks. Federal and state arbitration laws narrowly limit the grounds upon which a party may challenge an arbitration award (to the integrity of the process) so that errors in the application of law or in determinations of the facts are not included. Of course, non-prevailing parties do try to get a court to revoke an arbitration award. For instance, Sony recently asked a federal judge in the Northern District of California to vacate an arbitration award against it in a patent licensing dispute with Immersion, from whom it had taken a license after an earlier patent infringement battle.

In recent years, however, parties have the option of agreeing in advance to an appeal process within arbitration. Leading arbitration forums such the American Arbitration Association and JAMS have introduced an optional “appeal” contract clause. If both sides agree going in, a losing party in arbitration can call for the forum to assemble a new panel of arbitrators with the power to affirm or reverse the underlying arbitration decision, and its decision becomes the final decision in the case. This webinar will report the latest on how this provision has been used. Our panel includes a lawyer at the AAA, an arbitrator, and a litigator who has extensive experience representing clients in disputes ancillary to litigation.

Speakers:

Sasha Carbone, American Arbitration Association
William Needle, Ballard Spahr
Brian White, King & Spalding




Antitrust in Asia: New IP Guidelines in China, Korea and Japan

Webinar Date: 03/16/2016

For all the scrutiny the U.S. government has given to standard essential patents (SEPs) in recent years and to the commitment to license them under fair, reasonable and non-discriminatory (FRAND) terms, the U.S. Department of Justice has also taken care to express broad approval of patent standards. But in Asia, the governments of China, Korea, and Japan recently have taken a more punishing attitude toward SEPs. All three have either issued or have drafted new guidelines that create a competition law sanction for conduct involving SEPs, based on presumptive rules rather than the effects-based approach of the U.S.

Those same guidelines also blur the distinction between SEPs and valuable patents that are not in a standard, setting the stage for compulsory licensing of the latter. And in China, a draft guideline suggests that a dominant patent holder abuses its market position if it imposes a license that limits the licensee’s ability to challenge the validity of the patent. Our panelists include a founder of a Chinese law firm specializing in technology; a U.S. law firm expert on the intersection of antitrust and IP; and the director of a global antitrust institute who formerly served at the FTC. They will discuss the guidelines.

Speakers:
Jay Jurata, Orrick, Herrington & Sutcliffe LLP
Gabriella Liu, Beijing IParagon Law Firm
Koren Wong-Irvin, George Mason University, Global Antitrust Institute



First Response to Trade Secret Theft: Best Practices for Answering an Alarm

Webinar Date: 03/09/2016

Covetous employees, foreign government hackers, erstwhile suppliers, or disloyal business partners: all can pose the threat of trade secret theft to corporations these days. This webinar will give best practices for secret holders when the alarm of a potential theft first sounds. In those stress-filled hours, a swift and well-focused response can save the day, while a bungled reflex might negatively impact the outcome of the entire episode.

Our panel includes two in-house counsel with first-hand experience in responding to trade-secret theft and a litigator who has seen the impact on plaintiffs of both good and bad first responses to trade secret theft. The panelists will outline:

  • What questions to ask at the first hint of a problem;
  • How to quickly gather and maintain crucial evidence both in-house and externally;
  • Best practices for internal investigations and giving Upjohn warning to employees;
  • How to contact new employers of suspected thieves or other possible bad actors;
  • How to avoid an accusation of bringing a claim of trade secret theft in bad faith;
  • Should we call in law enforcement? Calculating the trade-offs;
  • First moves in litigation: Whether and how best to request a court for temporary restraining order or immediate injunctive relief.
Speakers:
Karen Cochran, DuPont
Jose Gonzales-Magaz, Honeywell
Randall Kahnke, Faegre Baker Daniels



Lexmark: A Bulwark Against Exhaustion?

Webinar Date: 03/03/2016

Covetous employees, foreign government hackers, erstwhile suppliers, or disloyal business partners: all can pose the threat of trade secret theft to corporations these days. This webinar will give best practices for secret holders when the alarm of a potential theft first sounds. In those stress-filled hours, a swift and well-focused response can save the day, while a bungled reflex might negatively impact the outcome of the entire episode.

Our panel includes two in-house counsel with first-hand experience in responding to trade-secret theft and a litigator who has seen the impact on plaintiffs of both good and bad first responses to trade secret theft. The panelists will outline:

  • What questions to ask at the first hint of a problem;
  • How to quickly gather and maintain crucial evidence both in-house and externally;
  • Best practices for internal investigations and giving Upjohn warning to employees;
  • How to contact new employers of suspected thieves or other possible bad actors;
  • How to avoid an accusation of bringing a claim of trade secret theft in bad faith;
  • Should we call in law enforcement? Calculating the trade-offs;
  • First moves in litigation: Whether and how best to request a court for temporary restraining order or immediate injunctive relief.
Speakers:
Jeff Dodd, Andrews Kurth
Mark Patterson, Fordham University School of Law
Susan Van Keulen, O’Melveny & Myers



Damages on Extraterritorial Sales After Carnegie Mellon

Webinar Date: 02/24/2016

A final adjudication of the high-stakes patent litigation Carnegie Mellon v. Marvell could have helped resolve one of the biggest legal uncertainties in IP: whether and how reasonable royalties on domestic use of a patented technology can include extraterritorial sales as part of the royalty base. Litigation on this point often includes complicated fact patterns regarding, for instance, the path of foreign-manufactured components arriving in the U.S. through a long distribution channel. But those looking for answers, including whether a sale may have more than one location, must now look elsewhere — this month Marvell agreed to pay $750 million to CMU to settle all claims. Several ongoing cases incorporating these issues are still underway, however, including Western Geco (Schlumberger) v. Ion. Their results promise to have far-reaching consequences, not just for damages quantification, but also for where companies choose to conduct their R&D and sales support.

Savvy patent owners can already follow the path of recent case law to improve their chances in litigation and licensing. Our panelists will clarify the issues and give advice on new possibilities for royalty structures. Our panel includes a litigator who is involved in long series of cases involving foreign sales; a law professor who studies extraterritoriality; and a damages expert.

Speakers:
David Harkavy, The Claro Group
Blair Jacobs, Paul Hastings
Prof. Amy Lander, Drexel University, Thomas R. Kline School of Law



ITC and the Federal Circuit: Where Do ClearCorrect and Suprema Leave Patent Owners?

Webinar Date: 12/10/2015

This webinar will consider the impact of two important recent Federal Circuit opinions on the jurisdiction of the U.S. International Trade Commission. In Suprema v. ITC, the en banc Federal Circuit reversed an earlier panel decision, finding that the Section 337 statute does give the ITC authority to adjudicate indirect infringement involving a method patent where the direct infringement occurs only after importation. More recently, in ClearCorrect v. ITC, a Federal Circuit panel ruled that the ITC may not block digital transmissions from outside the U.S. because the ITC’s scope is limited to “articles.”

Our panel includes two litigators who were opposing counsel in Suprema at the Federal Circuit, as well as an appellate law specialist. They will consider each case and also how they can (or cannot) be understood to mesh. They will also consider the leeway ClearCorrect leaves the ITC in its infringement analyses and what the end result is likely to be after the ITC pursues its appeal options.

Speakers:

Sasha Mayergoyz, Jones Day
Bert Reiser, Latham & Watkins
Darryl Woo, Vinson & Elkins




Standards and FRAND: Recent Developments in the U.S. and Europe

Webinar Date: 10/13/2015

Our panel will analyze two important recent developments in the world of standards and FRAND and how they will shape events going forward:

  • The Ninth Circuit affirmation of Judge Robards’ FRAND decision in Microsoft v. Motorola and the endorsement of his calculations of FRAND, and
  • The European Union High Court ruling that for the first time provided guidance on what steps the owner of a FRAND-encumbered patent should take before seeking injunctive relief.

The panel will also discuss recent and pending developments at the U.S. International Trade Commission. Our panel, which encompasses a range of view on the issues, will also discuss such timely questions as whether global licensing of SEPs is a thing of the past, with country-by country licenses the new trend.

Speakers:

David Long, Kelley Drye & Warren LLP
Christopher Thomas, Hogan Lovells
Paul Zeineddin, Zeineddin PLLC




3-D Printing Advanced Topics for Patent Lawyers: Repair, Reconstruction, Exhaustion, Inducement

Webinar Date: 08/27/2015

Lawyers who want to give good advice regarding the disruptive technology of 3-D printing need to refresh their understanding of many areas of case law and rethink how it all fits together. For instance, companies with more than one business model – eg, those who both sell repair parts for machines they manufacture and also want to repair machines bought from others – may be subject to competing imperatives.

Our panel includes an IP lawyer at a major multinational manufacturer, a design patent specialist, and a patent litigator. Through the lens of 3-D printing, they will reconsider case law and current litigation involving repair, reconstruction, and exhaustion, including the pending en banc Federal Circuit Lexmark case; the pending Federal Circuit case on whether the International Trade Commission has jurisdiction over imports of digital files; and the issues of inducing and contributory infringement.

 

John Cheek, Caterpillar Inc.
Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Bryan Vogel, Robins Kaplan LLP




Elusive Global Patent Claims - Software and Info Tech Hardware

Webinar Date: 08/12/2015

Economic globalization continues, but patent owners still must reckon with differences among national and regional patent regimes that make it challenging to protect innovation across borders. Speakers will highlight key differences among law and practice that matter in their industry, and give examples when and how it is possible to tweak claims to meet foreign standards and when it is not.

  • How to work with statutory bans against software per se in Europe and China
  • “Inventive step” in Europe; “solving a technical problem” in China
  • Addressing flaws in foreign-drafted applications involving means-plus-function claims before submitting to USPTO
  • The European examiners requirement that all “essential features of invention” be within the claims?”
  • Differences in obviousness and written description standards

Speakers:

James Kulbaski, Oblon
Bo Li, CCPIT Patent and Trademark Law Office
Nicholas Malden, D Young & Co




Elusive Global Patent Claims - Life Sciences

Webinar Date: 08/11/2015

Economic globalization continues, but patent owners still must reckon with differences among national and regional patent regimes that make it challenging to protect innovation across borders. Speakers will highlight key differences among law and practice that matter in their industry, and give examples when and how it is possible to tweak claims to meet foreign standards and when it is not.

  • Methods of treatment (MOT) claims, including combination claims and dosage regimes; MOT v. “medical uses” in Europe, dealing with statutory ban on MOT claims in China
  • Methods of diagnosis claims
  • Personalized medicine and biomarkers
  • Need for more data support in China and Europe
  • Composition of matter claims and Section 101 concerns, including pursuing protection outside the U.S. for inventions that are not patent-eligible here

Speakers:

Michael Lin, Marks & Clerk
James Mullen, Morrison & Foerster, LLP
Edward Oates, Carpmaels & Ransford LLP




International Patent Filing: Best Practices

Webinar Date: 06/25/2015

It’s a big world out there for valuable inventions that could benefit from patent protection. This webinar will provide expert guidance on where to file foreign patent applications and how. Topics include:

  • Factors to consider when deciding whether to file international patents;
  • Comparisons between PCT, EPO and direct filing options;
  • How to reduce costs;
  • Hidden landmines, including the requirement of foreign filing waivers when inventors reside in certain countries; and
  • What’s new, including use of the Hague Agreement for design patents; will Austria become the “Delaware” of the Unitary Patent in Europe?

Speakers:

Philip Cupitt, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Michael Gnibus, General Electric Co.
Robert Siminski, Harness, Dickey & Pierce, P.L.C.




Antitrust Enforcement in China

Webinar Date: 05/07/2015

Just when multinational patent owners were starting to feel better about the odds of protecting their patents in China (thanks to the opening of specialized IP courts and other pro-patent policies), they have a new regulatory worry: the Chinese government’s beefed-up enforcement of the country’s Anti-Monopoly Law.

The loudest shot was the settlement in February between the Chinese National Development and Reform Commission (NDRC) and Qualcomm. The deal requires the U.S. telecommunications company to pay a $975 million fine and face significant limitations on its patent licensing activities. But Qualcomm is not alone in being fined or under investigation for antitrust in China, and any foreign business operating there will now be carefully considering its own IP enforcement and monetization strategies. Our panel will discuss the law and the three government agencies enforcing it: the NDRC, the Ministry of Commerce (MOFCOM) and the State Administration for Industry and Commerce (SAIC), which on April 7, 2015, issued its long-awaited Rules on abusing IP. Our panel will also draw lessons from recent Chinese enforcement actions involving foreign companies, discuss still open questions, and give tips on how to stay out of trouble.

Speakers:

Lei Mei, Mei & Mark LLP
Peter Wang, Jones Day
Koren Wong-Ervin, U.S. Federal Trade Commission




Design-Arounds: Strategy at the ITC and District Courts

Webinar Date: 04/30/2015

Designing around an infringed patent creates many strategic challenges for both plaintiffs and defendants. For example, in district court litigation, plaintiffs can either broadly seek discovery related to potential redesigns (and risk a finding of noninfringement), or sit back and attempt to preclude such evidence. By contrast, defendants must choose between introducing potential design-arounds early in discovery and risking an adverse adjudication, or waiting until later during litigation and risking preclusion or other unwanted consequences. Similarly, in ITC proceedings, parties must consider whether to attempt to force the ITC to adjudicate potential design-arounds during the investigation or to wait until after any exclusion order issues. Then the fight over the scope of the exclusion would move to Customs and Border Protection or may require a return to the ITC to seek an advisory opinion or enforcement order.

Our panel will review the case law regarding redesign and discuss strategy issues relating to timing, discovery, claim construction, and procedures. In addition, an official of the ITC will discuss a new pilot program, announced this winter, that will test the use of expedited procedures to evaluate and rule on new and redesigned products in modification and advisory proceedings.

Speakers:

Steven Bauer, Proskauer Rose, LLP
Brian Busey, Morrison & Foerster, LLP
David Lloyd, U.S. International Trade Commission




IP5 Global Dossier: A New Era in Global Patent Prosecution?

Webinar Date: 04/02/2015

This spring marks the debut of the IP5 Dossier, an international cooperative effort of the patent offices of the U.S., Europe, China, Japan, and Korea. The Dossier is a new software platform on which the government agencies will share work. Patent applicants are also expected to benefit. They will eventually gain the ability to cross-file, plan, execute, and monitor filings in multiple countries from a single on-line portal, promising a big improvement from the duplication of effort now required to file in multiple countries.

USPTO examiners will have access to the first phase of the IP5 Dossier this spring, with access to external stakeholders following this summer. Our panel includes a USPTO official involved in the development of the Dossier and its roll-out, as well as a well-informed law firm attorney and an in-house counsel who will be in a position to make use of the dossier. They will discuss the implications of the new system for corporations and law firms. They also will discuss the Common Citation Document (CCD), which consolidates the prior art cited by all participating offices for the family members of a patent application.

Speakers:

Don Levin, USPTO
Samson Helfgott, Katten Muchin Rosenman LLP
John Treangen, Dow Chemical




The Future of Standards: What's Next After the IEEE Shift?

Webinar Date: 03/18/2015

Last month, after a vigorous debate between supporters and opponents, the Board of Directors of the Institute of Electrical and Electronics Engineers (IEEE) voted to approve a set of amendments to the organization’s patent policy. The changes largely relate to the commitment of IEEE members to license patents to users of IEEE standards on terms that are “fair, reasonable and nondiscriminatory” (FRAND), a commitment that has been the subject of much recent litigation. Because their business models lean heavily on patent royalty revenues, some standards users remain opposed to the changes.

Our panel will discuss a number of questions, including whether important patent contributors will make patents available to IEEE standard development in the future and how future royalty disputes over IEEE standards will play out.

Speakers:

Marc Sandy Block, IBM Corp.
David Long, Kelley Drye & Warren LLP
Earl Nied, Intel Corp.
Paul Zeineddin, Zeineddin PLLC




Cyberattacks on IP: Response and Prevention

Webinar Date: 03/02/2015

The wide-ranging hack into Sony’s computers by North Korea late last year brought corporate cyber security concerns to the forefront. It’s clear that every element of a corporation’s electronic storage and communication can be vulnerable and of value to interlopers, not just consumer data. Earlier last year the U.S. Justice Department, for instance, accused the Chinese military of hacking U.S. Steel Corp., Westinghouse, Alcoa, Allegheny Technologies, and SolarWorld to steal sensitive internal communications that could prove useful to a competitor or a litigation adversary.

Increasingly, businesses are calling upon IP lawyers to assist in the protection of IP assets against these cyber threats, and to assist client victims in responding to cyber crimes. Our panel will explore current trends in cyber threats to industrial and proprietary business data, best practices in the protection of confidential and sensitive data during R&D and pre-patent filing, and data theft and breach response considerations, including offensive litigation and parallel proceedings with government authorities.

Speakers:

David Bateman, K&L Gates
Matt Lundy, Microsoft Corp.
Mauricio Paez, Jones Day




Europe's Unified Patent Court: A Lot to Like?

Webinar Date: 12/03/2014

This webinar is aimed at U.S. lawyers who help U.S. companies to protect their IP in foreign markets. Newly-opened and planned venues for patent and other IP litigation in Europe pose important opportunities and challenges.

In Europe this fall, the Preparatory Committee responsible for drafting the Rules of Procedure for the planned Unified Patent Court clarified some important aspects of the new venue which is now expected to open by 2016.

Our expert panelists will describe the workings of the new legal venues and what choices they pose for U.S. plaintiffs and defendants.

Speakers:

Paul Coletti, Johnson & Johnson
Rowan Freeland, Simmons & Simmons
John Pegram, Fish & Richardson




China's New IP Courts: What U.S. Companies Need to Know

Webinar Date: 12/02/2014

This webinar is aimed at U.S. lawyers who help U.S. companies to protect their IP in foreign markets. Newly-opened and planned venues for patent and other IP litigation in China pose important opportunities and challenges.

This fall the Chinese government opened a new Specialized IP Court in Beijing, with two others, in Shanghai and Guangzhou, slated to open by the end of this year. The new courts have jurisdiction over civil and administrative cases involving patents, new plant varieties, layout designs of integrated circuits, technical secrets, and computer software; administrative cases involving copyright, trademark, and unfair competition; and civil cases involving the affirmation of famous trademarks.

Our expert panelists will describe the workings of the new legal venues and what choices they pose for U.S. plaintiffs and defendants.

Speakers:

Benjamin Bai, Allen & Overy
Mark Allen Cohen, USPTO
Gang Hu, CCPIT Patent and Trademark Law Office




Global Developments in Standards and FRAND

Webinar Date: 08/25/2014

With key information technologies at stake, the possible abuse of standard essential patents (SEPs) is not just a U.S. issue. Investigations, litigation, and draft rules involving SEPs are springing up around the globe. This webinar will focus on recent developments in Asia and Europe, and compare them with the latest in the United States. Our panel includes an official of the U.S. Federal Trade Commission, a standards expert at a U.S. technology company, and a competition-law expert based in Brussels. They will analyze and compare:

  • The U.S. FTC Consent Decrees in Bosch and Motorola/Google
  • The European Commission’s two antitrust decisions this spring in Samsung and Motorola/Google which essentially create a “safe harbor” for willing licensees of FRAND-encumbered SEPs to avoid an injunction and address the circumstances under which a SEP holder may seek injunctive relief.
  • Recent developments in China including the Guangdong High People’s Court decisions in Huawei v. InterDigital, the decision of the Ministry of Finance (MOFCOM) in Microsoft-Nokia, the settlement of the National Development and Reform Commission (NRDC) with Interdigital, and new draft rules on FRAND from the State Administration for Industry and Commerce (SAIC).
  • Developments in other countries, including the decision of the Korean Fair Trade Commission in Apple, and the Competition Commission of India’s Investigative Orders in Ericsson.

Speakers:

  • Earl Nied, Intel Corp.
  • Christopher Thomas, Hogan Lovells
  • Koren Wong-Ervin, U.S. Federal Trade Commission



Are Digital Transmissions an "Article" under Section 337? Looking Ahead to the Federal Circuit

Webinar Date: 05/08/2014

The U.S. International Trade Commission laid claim to the digital world last month, ruling that it has jurisdiction to prevent the transmission into the U.S. of electronic files that infringe patents. The ruling came as part of a long-running patent infringement battle between Align and ClearCorrect, who sell rival teeth straightening systems. The Commission ordered ClearCorrect to stop transmitting from Pakistan the digital data it needs to make its dental molds in Texas.

The case at the ITC was one of first impression, and it drew submissions from interested parties including Google and Nokia. ClearCorrect has already announced its intention to appeal to the Federal Circuit. The case touches on issues that have been addressed in several earlier appellate decisions, such as the reach of U.S. law to other countries (Microsoft v. AT&T), the IP status of digital signals (In Re Nuijten), and the scope of the ITC (Kyocera, Tian Rui and Suprema). Our panel includes an experienced litigator at the ITC, a top expert in software patents, and a litigator who won a case at the Federal Circuit that limits the ITC’s scope.

Speakers:

  • Jonathan Engler, Adduci, Mastriani & Schaumberg, LLP
  • Bart Eppenauer, Shook, Hardy & Bacon, LLP
  • Darryl Woo, Fenwick & West LLP



Export Controls on IP: Understanding and Managing the Risk

Webinar Date: 04/09/2014

A U.S.-based inventor puts drawings or test results in an envelope and mails it to Germany. The same inventor walks across his lab and hands the data to a visiting scientist from China. Each of these is a technology export. So is allowing a foreign national or person in a non-U.S. jurisdiction to retrieve the information from a company or third-party server.

Most U.S. patent lawyers know about the USPTO’s Licensing and Review Office, which administers the Patent Secrecy Act and grants applicants a license to file patents abroad. But if that is all a patent lawyer knows about export controls, it exposes his or her clients to significant risk. Technology exports are also ruled by two other sets of export control regulations: the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR). Penalties that the Commerce Department administers under EAR (which cover “dual use” items), tend to be lower than those assessed by the State Department which administers ITAR (which cover defense/military items). But even EAR penalty exposure can be stiff, with statutory maximum civil penalties “the greater of $250,000 or twice the value of the transaction, per violation.” Then there’s the reputational damage associated with having a corporate name tied to violations of national security-related laws; the disruption and cost of dealing with an investigation; and the possibility of Commerce imposing a “denial of export privileges” and cutting off foreign sales.

Our panel includes the chief IP counsel of a major multinational technology company, and two law firm experts on export controls. They will;

  • give an overview of the export-control challenge facing corporate owners of IP
  • describe the regulatory regimes and the line between controlled and not-controlled information
  • focus on corporate environments (in addition to R&D) where export rules could come into play, such as mergers & acquisitions, cloud computing, and patent searching
  • outline key components of creating and monitoring a corporate compliance effort
  • discuss what it means to clean up past transgressions through a “voluntary disclosure” to federal authorities.

Speakers:

  • Daniel Staudt, Siemens Corp.
  • Scott Flicker, Paul Hastings LLP
  • Robert Torresen, Sidley Austin LLP



Privilege in Patent Disputes: Thorny Issues involving Patent Agents and Foreign Attorneys

Webinar Date: 02/19/2014

Questions of attorney-client privilege come up frequently during the discovery process in patent infringement litigation. If a European company is asserting a U.S. patent in the U.S., does attorney-client privilege protect email from a European law firm attorney to a lawyer working at the company’s U.S. subsidiary? If a U.S. company relies on a patent agent instead of a lawyer to prosecute its patent application at the USPTO, are communications between the inventor and the patent agent privileged?

Though the issues are always fact-intensive, certain broad legal strokes are clear. Most district courts employ a two-step analysis in determining whether non-U.S. counsel’s communications are discoverable in U.S. litigation. First, the court determines whether U.S. or foreign privilege law applies; then it looks to whether the governing law recognizes privilege for the particular communications at issue and the scope of that privilege. Within the U.S., federal district courts are split on whether patent agent communications are privileged, so this issue may be an important factor in selecting a venue to bring a patent complaint.

Our panel, which includes the European managing partner of a top U.S. IP firm, a U.S. patent litigator, and a leading in-house counsel of a major multinational, will discuss the case law that governs these situations and what internal procedures companies and law firms should rely on to maintain privilege whenever possible.

Speakers:

  • Anthony Tridico, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Heather Repicky, Nutter McClennen & Fish LLP
  • Buckmaster De Wolf,General Electric Co.



Inducing Infringement at the ITC: The Federal Circuit Opinion in Suprema

Webinar Date: 01/16/2014

In December, the Federal Circuit released an opinion that significantly restricts the authority of the
International Trade Commission. That decision, Suprema v. ITC, states that inducement of infringement under Section 271(b) is not “completed” until there has been both inducement to infringe and direct infringement, and that the ITC has no power over imports that induce infringement but do not yet directly infringe.

This view, which was opposed in a dissent by Judge Reyna, came as a surprise to many ITC practitioners. Our panel will discuss the legal issues raised by the opinion, and consider the implications for both patent owners and potential infringers, including the possibility of patent owners still pursuing contributory infringement at the ITC. They will also discuss the likelihood of the issue being reheard, and, if it is not, its long-term impact on the ITC as a patent litigation venue.

Speakers:

  • Paul Brinkman, Quinn Emanuel Urquhart & Sullivan LLP
  • Tony Pezzano, King & Spalding
  • Christa Zado, Cisco Systems, Inc.



Downstream Dilemma: Can Licensors Sidestep Patent Exhaustion?

Webinar Date: 12/04/2013

Ever since the Supreme Court addressed the non-statutory doctrine of patent exhaustion in its 2008 Quanta decision, patent owners have tried to figure out how to still earn licensing income from companies at more than one rung of a distribution or manufacturing ladder. Not much encouragement can be found in the two recent Federal Circuit decisions. In Keurig v. Sturm Foods, the Federal Circuit upheld a district court’s decision that Keurig’s patent rights were exhausted by the sale of its coffee brewing machines, and so not infringed by the defendant’s sale of replacement coffee cartridges. (The winning side’s attorney is one of our panelists.) In Lifescan Scotland v. Shasta, the court again ruled for the defendant, finding that LifeScan’s patent on glucose meters was exhausted once the product was distributed to customers and that Shasta did not infringe by selling its own strips for use with LifeScan’s meter.

Despite this trend, our panel will discuss what might prove to be winning strategies for patent owners using both patent prosecution and licensing and litigation. One possible way to avoid exhaustion, for instance, could be to put in a separate patent the claims that might be enforced downstream. In litigation, could a patent owner settle with downstream users first, and thereby not lose the opportunity to work his way up to the manufacturer?

Speakers:

  • Allen Arntsen, Foley & Lardner LLP
  • Charan Sandhu, Weil Gotshal & Manges LLP
  • Andrew Wojnicki, IBM Corp.



Harvesting Inventions: Best Practices Under First-to-File

Webinar Date: 11/14/2013

In the old first-to-invent regime, if necessary, corporations could rely on the chronology of lab notes to serve as a marker of the date of invention of any given new compound or method. But that security is history in the new world created by the America Invents Act. This webinar will focus on the discipline required to rigorously harvest inventions from R&D into patent applications under first-to-file. Our panel includes the top patent counsel of a large technology-driven multinational and two law firm attorneys with broad experience in IP strategy. They will discuss:

  • Practical tips for regularly scheduled meetings with inventors, including dealing with creative self-deprecators who view anything they did last month as not “new.”
  • How to reduce filing time and inculcate a corporate-wide harvesting culture, taking into consideration newly acquired units and different R&D styles.
  • Incorporating IP strategy into the R&D process, with inventors thinking about it early on. For example, what might be more likely to be kept as a trade secret? In some industries, copyright vs. patent should be considered.
  • The increased imperative to understand competitors’ portfolios of patents and patent applications, in part to take advantage of new opportunities to challenge patents post-grant.
  • How to react to the need to “invent patents” in response to the concerns of investors, shareholders, as part of a defensive litigation strategy, or simply because new competitors in China and elsewhere are adding patents at a furious clip.

Speakers:

  • Joseph Berghammer, Banner & Witcoff, Ltd.
  • Stuart Meyer, Fenwick & West LLP
  • Dennis Skarvan, Caterpillar, Inc.



Protecting Trade Secrets in China

Webinar Date: 11/07/2013

This summer, the Shanghai No. 1 Intermediate People’s Court issued an injunction restraining a former employee of Eli Lilly (China) R&D from using or disclosing trade secrets belonging to the company until final judgment in the matter. This is the first injunction of its kind to be granted under China’s revised civil procedure law which became effective at the start of this year. China has had an established system for the grant of interim injunctions in relation to patent, trademark and copyright infringement, but, prior to the new law, there was no counterpart for stopping the disclosure of trade secrets.

This narrow injunction is just one step on the long road toward better enforcement of IP rights in China, but some experts see it as paving the way for further progress. Our panelists will:

  • discuss this and other recent trade secret cases in China
  • review important differences between U.S. and Chinese trade secret law
  • discuss trade secret litigation at the International Trade Commission since the 2011 Tian Rui ruling, which barred the importation into the U.S. of a product made in China by a Chinese company because the product was based on trade secrets misappropriated in China
  • discuss best practices for protecting trade secrets in China, including specifics on security measures and the use of confidentiality and non-compete agreements

Speakers:

  • Benjamin Bai, Allen & Overy LLP
  • Christopher Chalsen, Milbank, Tweed, Hadley & McCloy, LLP
  • Kevin Luo, Microsoft Corp.



SEPs: What Makes a Patent "Essential" to a Standard?

Webinar Date: 09/19/2013

Litigation earlier this year focused on whether owners of infringed Standard-Essential Patents (SEPs) can win an injunction or an ITC exclusion order, and how to calculate a “fair, reasonable, non-discriminatory (FRAND)” royalty. But a July decision by Northern District of Illinois U.S. District Court Judge James Holderman, in Innovatio v. Cisco, is the first to determine what actually makes a patent essential to a standard. That determination is sure to be litigated increasingly as distinctions between the rights of owners of SEPs versus the rights of owners of other patents continue to be defined by courts and others.

Our panel of experts will:

  • Discuss the notion of “essentiality” within the broad context of standards, standard-setting organizations, and patent pools
  • Analyze and assess Judge Holderman’s ruling, including his determinations that defendants bear the burden of proof and that a RAND obligation applies separately for each individual claim within a patent, not an entire patent
  • Debate the future path of litigation on essentiality and what this means for companies who both participate in and implement standards

Speakers:

  • Jorge Contreras, American University, Washington College of Law
  • Earl Nied, Intel Corp.
  • Robert Sachs, Fenwick & West



Design Patents, Trade Dress, Copyright and Utility Patents: How to Prosecute and Enforce Multiple Layers of IP Protection

Webinar Date: 07/17/2013

A corporation or inventor with a potentially valuable product will often want to take a “belt-and-suspenders” approach to protecting intellectual property. Rather than rely only on one layer of IP protection, the owner will try to protect the same product with varying forms: eg, design and utility patents, trade dress protection, and/or copyright.

This webinar will discuss the opportunities and challenges of this strategy both in the U.S. and overseas. One primary opportunity is the possibility of extending protection beyond the “20 years from filing date” term of utility patents and “14 years from date of issue” term of design patents. Enforcement flexibility may also be a goal, eg, the ability to enforce trade dress remedies, set out in the Lanham Act, against a copycat product that doesn’t directly infringe a utility patent.

But practitioners must be careful not to let one form of IP protection negate another. In the 2001 U.S. Supreme Court decision TrafFix Devices. v. Marketing Displays, for instance, the court held that a functional design could not be trademarked, while the 2010 Federal Circuit decision in Richardson v. Stanley Works illustrated the dangers of incorporating functional elements in a design patent. Our panelists — an in-house counsel for a multinational consumer goods company and two law firm litigators — are experienced in the nuances of multiple forms of IP.

Speakers:

  • Mark Charles, Procter & Gamble Co.
  • John Froemming, Jones Day
  • Richard Stockton, Banner & Witcoff, Ltd.



Standard Essential Patents at the ITC: Samsung and Apple

Webinar Date: 07/11/2013

In June the U.S. International Trade Commission banned imports of some Apple products for infringing a Samsung wireless standard essential patent (SEP). The decision marks the first time the agency has ruled on the question of whether companies can win exclusion orders using SEPs that they have promised to license on fair, reasonable and nondiscriminatory (FRAND) terms.

The U.S. Department of Justice, the Federal Trade Commission and the USPTO have all recently suggested to the ITC that its mandate to consider the public interest before issuing an exclusion order encompasses the competitive harm that might stem from allowing SEP holders to use the threat of an import ban to demand higher royalties. Many experts see the agency’s decision to go forward with this ban as contradicting those views.

Our panel includes a patent litigator, the former chair of the ITC who is now at a law firm, and a litigator who works at the intersection of IP and antitrust. Among other things, they will discuss the 2010 Federal Circuit decision in Spansion v. ITC, which found that the standard for the ITC issuing an exclusion order is different than the eBay standard; a recent U.S. district court order that enjoined a patent plaintiff from enforcing exclusionary relief afforded by the ITC because of the plaintiff’s FRAND commitment; and the considerations facing the Obama administration, including whether to overturn the ban and how its decision might mesh with its recent patent litigation proposals.

Speakers:

  • Deanna Okun, Adduci, Mastriani & Schaumberg, LLP
  • Richard Taffet, Bingham McCutchen LLP
  • David Long, Dow Lohnes PLLC



ITC’s Domestic Industry Requirement: Latest Developments

Webinar Date: 04/25/2013

The evolution of the domestic industry requirement at the International Trade Commission took a new turn in March. In In Certain Products Having Laminated Packaging, the commission, for the first time, ordered an administrative law judge to “hold an early evidentiary hearing, find facts, and issue an early decision, as to whether the complainant has satisfied the economic prong of the domestic industry requirement.” The ALJ has 100 days to issue an initial determination. A finding that the economic prong of the domestic industry requirement is not satisfied will effectively end any further litigation unless the commission orders otherwise. This procedural change is seen by some experts as significantly reducing the leverage of complainants who do not manufacture products covered by the patent in question.

This move by the ITC follows the establishment of a three-part threshold to prove a licensing-based domestic industry in Certain Multimedia Display (2011). Our panel will weigh the impact of these decisions against that of the Federal Circuit’s per curiam order on rehearing in InterDigital v. ITC this January. That order found that non-practicing entities (NPEs) may satisfy the ITC’s domestic industry requirement through substantial investment in domestic licensing activities, without any need to prove that any licensed products are actually produced domestically.

Speakers:

  • Paul Brinkman, Quinn Emanuel Urquhart & Sullivan LLP
  • Smith Brittingham IV, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Christa Zado, Cisco Systems, Inc.



Kirtsaeng: Implications for Patent Law

Webinar Date: 04/11/2013

Can a principled distinction concerning international exhaustion be drawn between copyright and patents? That’s a question that is of interest to patent owners since the U.S. Supreme Court’s recent decision in Kirtsaeng v. John Wiley & Sons.In that decision, the court found that an authorized sale of a book manufactured abroad exhausts a company’s U.S. copyright. According to some experts, this result raises questions about U.S. Court of Appeals for the Federal Circuit precedents such as Jazz Photo that reject the notion of international exhaustion for patents. On the other hand, the decision in Kirtsaeng rests heavily on statutory wording and legislative history that have no direct bearing on the judge-created patent doctrine. Early resolution of this uncertainty was forestalled when the U.S. Supreme Court denied certiorari of Ninestar Technology v. Epson just days after it delivered its opinion in Kirtsaeng.Our panel will consider how factors governing international patent exhaustion are different from those governing copyright law and whether they will convince the U.S. Court of Appeals for the Federal Circuit to affirm Jazz Photo when it next has the opportunity. They also will discuss steps patent owners can take now to deal with a possible shift to international patent exhaustion, including:

  • licensing provisions and other contractual restrictions,
  • localizing product offerings, and
  • “tethering” patented products so they require an interaction with a central server using “unlock codes” that restrict international transfer.

Speakers:

  • Buckmaster De Wolf, General Electric Co.
  • Annette Hurst, Orrick, Herrington & Sutcliffe LLP
  • Gary Hoffman, Dickstein Shapiro LLP



Standard Essential Patents: Implications of the FTC-Google Consent Decree

Webinar Date: 03/05/2013

In January there were two important developments at the intersection of patent litigation and standard essential patents (SEPs). First, the Federal Trade Commission released the details of a consent decree with Google regarding the use of injunctions against infringers of SEPs. Then a few days later, the Department of Justice and the USPTO issued an unusual joint policy statement on the same topic. Patent owners and companies whose products may include inventions covered by SEPs are of course interested in what these statements mean for future regulatory action and litigation.Our panel includes a law professor who specializes in issues surrounding standard setting organizations, an experienced patent litigator and the FTC lawyer who managed the investigation of Google. They will discuss:

  • What is the legal basis for the FTC’s jurisdiction in this matter?
  • What does the consent decree mean for other companies?
  • Do the principles articulated in the decree apply equally to U.S. district courts and the Federal Circuit, the ITC, and foreign courts?
  • What will be the role of arbitrators or courts in resolving conflicts over SEPs?
  • Will resolution reached in this consent decree result in more or less injunctions regarding SEPs?

Speakers:

Jorge Contreras, American University Washington College of Law
David Long, Dow Lohnes
Nicholas Widnell, Federal Trade Commission




Design Patent Protection: An International Overview Including the Hague Agreement

Webinar Date: 02/06/2013

Interest in design patents is at an all-time high, due to their high-profile role in global litigation regarding smart phones and tablets. U.S. companies who face the difficult task of protecting their inventions from infringement overseas are now more likely to want to consider these patents as a cost-effective tool, despite their limitations.

Our panel will focus on the filing and uses of design patents outside the U.S., including the Hague Agreement Concerning International Registration of Industrial Designs. In December, the U.S. finally signed into law its implementation of that Agreement, which creates procedures at the USPTO to receive and prosecute international design applications. Late this year, U.S. applicants will be able to file a single design application to target over 40 nations and the European Union. Benefits may even accrue to patent owners in the U.S. market. While the U.S. historically has not published design patent applications, the Hague System publishes applications within six months after WIPO completes its review of formal requirements. Design patent owners whose applications are published by WIPO will have the ability to collect certain damages for pre-issuance infringement in the U.S.

Our panelists will discuss the current state of design patent protection in different countries, and analyze the benefits and shortcomings of design patent protection available under the Hague System, including how it is similar and different from the Patent Cooperation Treaty (PCT). They will also consider the important open questions regarding implementation by the USPTO.

Speakers:

  • David Gerk, USPTO
  • Robert Katz, Banner & Witcoff
  • Damian Porcari, Ford Global Technologies LLC



Global IP Protection and the Transition to the AIA

Webinar Date: 01/17/2013

IP owners who regularly file for patent protection overseas may run into special difficulties in the transition when new U.S. patent application rules come into effect in March.

Consider, for example, an applicant who files a British priority application in May 2012 and then files a PCT designating the US and claiming priority to that British application in May 2013. With application priority and filing dates on either side of the March 16 effective date for the AIA, the PCT application could be examined in one of three ways once it enters the U.S. national stage, depending on whether it includes disclosures not present in the British priority application and depending on how the original PCT claims are drafted. A special case arises where the original PCT claims include some claims fully supported by the British application and some claims that rely on the newly added matter for support.

Our speakers will also consider how the change in the definition of prior art in the AIA will impact international patenting strategy. Under the AIA, prior art is measured against the first effective filing date anywhere in the world, not against the first U.S. filing date. Thus managing the subject matter in foreign applications becomes a major concern. The panel includes the head of patent prosecution at a technology multinational and two top law firm patent prosecutors, one based in Washington and one in Brussels.

Speakers:

  • David Arthur, Xerox Corp.
  • Richard Treanor, Oblon Spivak McClelland Maier & Neustadt, LLP
  • Anthony Tridico, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



European Unitary Patent: An Update

Webinar Date: 01/10/2013

Propelled by a breakthrough vote in the European Parliament in December, a new Unitary Patent for Europe is expected to launch next year, perhaps as early as January 1, 2014. Agreed to after decades of debate, the new system is designed to let patent applicants gain simultaneous protection in all of the 25 Member States participating in enhanced cooperation. Concurrently, Europe hopes to launch a Unified Patent Court through which a patent can be asserted across the EU and enforced with a single court ruling.

The European Patent Office is charged with many new tasks in the new system, from examining applications to registering patents and collecting annual fees. Our panel features an EPO official who is working on implementation, as well as two U.S. lawyers who have thought through issues of concern to U.S. companies. The panel will discuss how both the new patent prosecution and court systems will work, and what the change is likely to mean for patent rights and litigation globally.

Speakers:

  • Paul Coletti, Johnson & Johnson
  • Margot Fröhlinger, European Patent Office
  • John Pegram, Fish & Richardson, PC



Trans-border Infringement: Latest Developments and Outlook

Webinar Date: 11/14/2012

The recent lowering of the standard for inducing infringement in Akamai/McKesson, which held that inducing infringement can be found even if a single entity is not liable for direct infringement, has many patent experts wondering “what will stick and what won’t stick” when potentially infringing players in the inducement web are located in different countries.

The Federal Circuit has taken an expansive view of the reach of U.S. law in a series of decisions, including NTP v. RIM, Centillion, and TransOcean. This expansion, however, has met resistance from the U.S. Supreme Court. In 2007 that Court reversed one of the Federal Circuit’s most significant decisions involving extraterritoriality, AT&T v. Microsoft. Last month the Court heard argument in Kirtsaeng v. Wiley, a case involving international exhaustion of copyright, the decision in which may have an impact on patent law.

Our panel includes two top patent litigators (one recently returned from a stint in Asia and the other a former deputy general counsel of eBay overseeing global IP and litigation), joined by a law school professor who focuses on trans-border infringement. They will discuss the evolution of the case law, the attitudes revealed in the Supreme Court hearing in Kirtsaeng, and their ideas on how the new standard for inducing infringement will play out when some players are located overseas.

Speakers:

  • Steven Baughman, Ropes & Gray
  • Prof. Timothy Holbrook, Emory University
  • Mary Huser, Bingham



Inventor Compensation: A Global Approach Needed

Webinar Date: 10/31/2012

Many countries have detailed laws about the remuneration of employee-inventors that are quite different from U.S. laws, and these laws can prove quite costly. In 2009, for instance, GE Healthcare was told by a British court to pay £1,500,000 to two inventors who, as GE employees, had invented a commercially-successful radioactive imaging agent. Companies in France and Germany face such suits from employees regularly, while China added a new rigorous inventor compensation requirement to the Third Amendment of its patent law that went into force three years ago.

Our panel will illustrate the variations among laws internationally and give advice on how to implement systems within multinationals to aid compliance. For instance, it’s often necessary for inventor compensation to be addressed up-front in an employee’s initial employment contract, and attention needs to be paid to these details when a company is acquired. The panel will also focus on what kinds of records companies should keep, as well as the negative repercussions that can follow if an employer tells one version of the facts to foreign tax authorities and another version to labor regulators. Our panel includes an employment lawyer specializing in cross-border human resources issues, and two in-house patent counsel at large multinationals.

Speakers:

  • John Conway, Sanofi Aventis Groupe
  • Donald Dowling, White & Case
  • Matt Penarczyk, Microsoft Corp.



Standards and FRAND: Hot Issues in Antitrust and Patents

Webinar Date: 06/21/2012

Unanswered questions about the rights and responsibilities of owners of standard-essential patents have long simmered, but they were of concern mostly just to experts. In the past year, acquirers have bought several huge patent portfolios that include standard-essential patents and heated litigation regarding standard-essential patents in telecommunications has boiled over in many venues globally. As a result, courts and regulators feel new urgency to bring some clarity to the conflicting pull of antitrust law and IP law in this area.

Our panel includes a U.S. patent litigator with experience in antitrust matters, a European patent attorney who is closely involved with European and German government competition policy, and the former General Counsel of the American National Standards Institute (ANSI) who currently works in standards for Microsoft. They will discuss the latest events and issues, including:
Do owners of standard-essential patents have the right to win an injunction against infringers?

  • Are there other constraints in their rights that owners of standard-essential patents must accept?
  • Is a royalty FRAND (fair, reasonable, non-discriminatory) if it is uses the final end product as the rate base?
  • Is it FRAND to seek access to non-essential patents in exchange for access to standard-essential ones?
  • Is an earlier FRAND commitment binding on the purchaser of a patent?

The panelists will discuss recent attempts to have standard-setting organizations address more of these questions themselves, and will reference current litigation and government actions, including the U.S. Federal Trade Commission’s recent expression of concern to the ITC. The FTC wants the ITC to refrain from imposing exclusion orders on products found to infringe patents that are necessary to comply with industry standards.

Speakers:

  • Heinz Goddar, Boehmert & Boehmert
  • Amy Marasco, Microsoft
  • Robert Taylor, Arnold & Porter



Licensing Trade Secrets

Webinar Date: 05/17/2012

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



ACTA: What Will Be Different for Owners of U.S. IP?

Webinar Date: 04/15/2012

The last round of negotiations among major trading partners are concluded, and The Anti-Counterfeiting Trade Agreement (ACTA) is almost ready for President Obama’s signature.

But serious questions remain. The new international framework is designed to help IP owners by combating the global proliferation of commercial counterfeiting and piracy. But some of the very companies ACTA is trying to help are troubled by some of its possible implications. For instance, in responding to the USTR request for comments on the final text of ACTA, IPO wrote that “our principal concern with the language used throughout the present draft of ACTA is that it might be interpreted so as to blur the vital difference between what constitutes counterfeiting and piracy per se, from what is merely civil infringement.” For instance, some experts say that ACTA would provide for the seizure of infringing goods in run-of-the-mill disputes involving substantially similar trademarks. What’s more, the definition of IP within the agreement is so wide that that the infringement of patents and
industrial designs could end up being criminally enforceable offenses under U.S. law.

The webinar will consider such questions as:
• Once adopted, what will ACTA change for U.S. companies that are trying to protect their IP?
• Are there any provisions in ACTA that will require a change in existing U.S. law?
• What will be the role of the U.S. IP Czar in relationship to ACTA?
• What is the relationship between ACTA provisions and anti-counterfeiting legislation now under consideration in the U.S. Congress?
• What are the remaining steps to adoption in the U.S. and in other countries?

The panel is comprised of the USTR official who led negotiations for ACTA, the USPTO lead technical adviser on ACTA, and a law firm attorney specializing in digital technology and government relations who has represented clients’ interest during the ACTA negotiations.

Speakers:

Stanford McCoy, Office of the U.S. Trade Representative
James Burger, Dow Lohnes
Peter Fowler, USPTO




Avoiding Pitfalls in IP Due Diligence

Webinar Date: 02/28/2012

A major technology company is on a fast track to sign a deal to acquire a multinational software vendor. In-house counsel at the acquirer engages two law firms to engage in the crucial IP due diligence. Our experienced panelists will rely on their real-life experiences as they act out this scenario, imparting key lessons on assessing ownership, infringement, and invalidity risks in the target company’s IP portfolio.

Among the considerations:

• How to manage the scope of the diligence to provide critical information to the team evaluating the deal
• The growing importance of scans for open-source software code in acquisitions of all types of companies
• Difficulties posed by the multi-national nature of the target, e.g. challenges in moving IP out of foreign jurisdictions and the mechanics of performing effective foreign diligence
• Spotting and managing conflicts, such as when the other clients of the outside firm hired to conduct the IP due diligence has IP agreements with the target
• How does privilege apply in requesting information on litigation strategy and patentability opinions from the target?
• Establishing and taking advantage of a post-closing window to complete deep diligence that could not be completed prior to closing.

Speakers:

  • Joseph Bracken, IBM Corp.
  • Daniel Marti, Kilpatrick Townsend & Stockton, LLP
  • David Teske, Alston & Bird, LLP



Broadening the Reach of the ITC Big Time: The Federal Circuit Decision in TianRui v. ITC

Webinar Date: 11/16/2011

In October the Federal Circuit, in a 2-1 decision in TianRui Group v. ITC, widened the scope of possible rulings by the U.S. International Trade Commission. The court’s opinion, penned by Judge Bryson, affirmed a decision of the ITC barring the importation into the U.S. of a product made in China by a Chinese company because the product was based on trade secrets misappropriated by Chinese employees in China.

The opinion addressed several legal and policy issues relating to whether and to what extent U.S. IP law should reach extraterritorial conduct. The opinion talks in terms of a broad Congressional intent in §337 to prohibit importation of goods made by unfair competition — regardless of whether that unfair competition occurs completely in another country. Some experts can’t see why this unfair competition would be limited to trade secret misappropriation. Judge Moore in her strongly worded dissent claimed that §337 reaches only “unfair acts in the importation of articles” into the U.S. and thus does not create a remedy for “the importation of goods resulting from unfair methods of competition.” She also pointed out that the claimant at the ITC could have obtained a U.S. process patent and thus enjoyed the protection of the U.S. patent law to exclude imports.

Our panel includes an experienced ITC litigator, an appellate specialist, and an in-house counsel for a U.S. company based in China who will report on the reaction of the Chinese government and business community. The panel will discuss the immediate impact of the decision and also the likelihood of a request for a hearing on en banc or at the U.S. Supreme Court.

Speakers:

  • Gregory Castanias, Jones Day
  • Kevin Luo, Microsoft Corp.
  • Jamie Underwood, Alston & Bird LLP



International Patent Filing Strategies

Webinar Date: 08/04/2011

Our panel features executives of two companies with different international patent filing strategies. Procter & Gamble uses the PCT for almost all the inventions it wants to protect internationally, while Xerox almost never does, preferring instead to file with the patent offices of individual nations.

This webinar will explore how legal, business, and technological considerations inform their differing approaches. It will also delve deeper into:

• How to write claims and tailor applications for use both in the U.S. and Europe
• The submission of prior art to different patenting authorities
• Special considerations in patenting software
• How to choose and manage U.S. and foreign law firms to prosecute patents
• Trends in international filing costs

Speakers:

  • David J. Arthur, Xerox Corp.

 

  • Darin J. Gibby, Kilpatrick Townsend & Stockton LLP
  • Timothy B. Guffey, Procter & Gamble Co.



Inducing Infringement: The Implications of the Supreme Court Decision in Global-Tech

Webinar Date: 06/14/2011

In its late May decision in Global-Tech v. SEB, the Supreme Court held that inducement of infringement requires knowledge that the induced conduct itself infringes, and that the knowledge element can be met by a showing of “willful blindness.”  In reaching this conclusion, the Court rejected the Federal Circuit’s adoption of a “deliberate indifference” standard.

  • The opinion clearly sets a new standard, but it still leaves some important uncertainties. Our panel will discuss such questions as:
  • What does the difference between “willful blindness” and “deliberate indifference” mean for those who may be accused of inducing infringement?
  • What are the obligations of a potentially-infringing company for doing a patent search?
  • What are the obligations of a company once it is put on notice by a patent holder that its product may infringe?
  • When does the obligation to get an opinion of counsel arise?
  • Are the lessons of Seagate regarding opinions and willful infringement in concert with the ruling in Global-Tech?
  • Will plaintiffs increasingly abandon charges of induced infringement and be willing to focus on alleged direct infringers?

Our panel includes two top law firm litigators and a law professor, each of whom espoused a different position in an amicus brief before the Supreme Court.

Speakers:

Michael Connor, Alston & Bird
Gary Hoffman, Dickstein Shapiro
Ted Sichelman, University of San Diego Law




The Domestic Industry Requirement at the ITC

Webinar Date: 05/11/2011

It has been 22 years since Congress broadened the domestic industry requirement of §337 to include not just manufacturing in the U.S, but also “exploitation, including engineering, research and development, or licensing” of the IP in question. Not until recently, however, has the Commission really had to focus on these issues. Not surprisingly, the ITC has become a debate forum between those who believe that “exploitation” should have the broadest possible meaning, particularly in the context of litigation activities, and those who argue for a more narrow construction.

A series of recent decisions reveals some confusion. Our panel of experts will consider the following:

 Certain Coaxial Cable Connectors that addressed when litigation expenses can satisfy the economic prong of domestic industry
 Certain Printing and Imaging Devices which raises questions about when repair and services activities can satisfy the requirement
• Certain Video Game Systems and Controllers, which, like Certain Printing and Imaging Devices, addresses the timing of activities used to measure domestic industry
• Certain Stringed Musical Instruments in which an individual inventor failed to establish domestic industry
• Certain Multimedia Display and Navigation Devices, a pending case in which the ITC has asked the public for comments on how it should attribute total expenses in licensing a portfolio toward the exploitation of one asserted patent

Speakers:

• Brian Busey, Morrison & Foerster, LLP
• Peter Roossien, Freescale Semiconductor
• Tom Schaumberg, Adduci, Mastriani & Schaumberg, LLP




Patent Opposition at the European Patent Office & Advanced Strategies in European Oppositions

Webinar Date: 05/04/2011

These webinars are aimed at US practitioners who want to be more familiar with the opposition procedure at the European Patent Office. That post grant proceeding lets any one challenge a patent granted by EPO within nine months of its issuance.

The May 4th webinar will examine under what circumstances it makes sense to file an opposition and the grounds on which it can be based. The focus will be on the objections lacking novelty, lacking inventive step and lacking original disclosure, and will include some basic strategic considerations.

Click here to purchase On Demand

The May 5th webinar will give more detailed explanations regarding original disclosure and sufficiency of disclosure, and will go deeper into strategic considerations through the use of case studies. It also will touch on appeal proceedings and the possibility of a petition for review.

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Our panel is comprised of European lawyers, both in-house and at law firms, who have substantial experience in opposition practice. These webinars should be of interest to companies doing business in Europe and to U.S. lawyers who supervise European attorneys. It also could also be of interest to those looking to opportunities that will follow U.S. patent reform – if new legislation passes, it likely will include some form of post-grant challenge at the USPTO.

Speakers on May 4:

Filip De Corte, Cargill Europe
Frank Peterreins, Fish & Richardson, PC
Hans Prins, Arnold & Siedsma

Speakers on May 5:

Myriam Elseviers, Cargill Europe
Frank Peterreins, Fish & Richardson, PC
Hans Prins, Arnold & Siedsma




Invention Assignment - Global Best Practices

Webinar Date: 04/27/2011

Two high-profile cases in IP involve conflicts between inventors and the companies or universities where they worked. The bitter dispute over Bratz dolls began when Mattel said a designer came up with the idea for the edgy dolls when he worked there, before he moved to MGA which built the dolls in to a hugely profitable franchise.  In Stanford University v. Roche, a case heard recently by the U.S. Supreme Court, some attorneys say Stanford’s plight in losing control of HIV discoveries, tangled with the Bayh-Dole Act, was the result of the University’s failure to negotiate a tight assignment agreement with its researchers and scientists. There are plenty of lower profile cases too. For instance, in the recent Federal Circuit case Advanced Magnetic Closures  v. Rome Fasteners,  an incorrect listing of multiple inventors led to the patent being deemed invalid. St. John’s University is suing the former head of its  Department of Pharmacology and a former grad student for $30 million, 30 percent of the $100 million the two have earned by licensing patents on liquisolid systems.

Our panel of experts will consider best practices for employers globally on this issue. Topics covered will include invention assignment law and practice in the U.S. and in a cross-section of countries around the world. Consideration will also be given to how a multinational corporation should think about managing its invention assignment practices and how to avoid negative surprises after mergers and acquisitions. The panel includes an international employment law specialist, European patent lawyer, and an experienced in-house counsel.

Speakers:

• Daniel Brook
 Susan Eandi
• Noreen Johnson




The Latest on Joint Infringement

Webinar Date: 03/15/2011

The Federal Circuit continues to develop its doctrine on joint infringement, a matter of great concern to many holders of patents that were granted before 2007, when the court began its recent clarifications in BMC v. Paymentech. Moving forward, the court’s views also need to inform the current patent prosecution strategies of many corporations.

In its December decision in Akamai v. Limelight, the court appeared to some experts to have taken a final step toward spelling out how patent holders must show an agency relationship between potential joint infringers, a process that began with BMC. But the next month the court gave its opinion in Centillion v. Qwest which added a new twist. It allowed joint infringement issues to be avoided altogether when dealing with system claims if a customer “puts the system as a whole into service, i.e., controls the system and obtains benefit from it” – even if the customer does not physically possess or own elements of the system.

This new emphasis on “use” seems to make it harder for potential defendants to figure out if they are infringing when they just perform a piece of a patented invention, and likewise, could make it easier for a patent holder to prove infringement. This panel of experts will consider what the dynamic is between Akamai (and its predecessor decisions) and Centillion, and what are the fact situations in which one would override the other. They will also give their ideas on which way the law may move going forward.

Speakers:

• Morgan Chu, Irell & Manella LLP
• Claude Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP
• Brian Way, Altera Corp.




Inducing Infringement: The Oral Argument at the U.S. Supreme Court

Webinar Date: 02/25/2011

With its decision in SEB v. Global Tech last year, the Federal Circuit introduced a new more expansive standard under which an alleged infringer’s deliberately indifferent state of mind can be sufficient to establish induced infringement. Next Wednesday the U.S. Supreme Court will hold oral arguments in the appeal from that decision, and this webinar will describe and analyze that argument and the views expressed by the Justices.

The issue of induced infringement strikes to the heart of the need for patent law to reflect a “balance between the need to encourage innovation and the avoidance of the monopolies which stifle competition” as the Court put it in 1989. As such, the Court’s decision in this case will have a serious impact on much patent litigation.

Each of our panelists wrote an amicus brief in the case and together they represent a broad range of views on the issue, including support for the petitioners, support for the respondent, and advocating a “middle ground” between the two.

Speakers:

  • Mike Connor, Alston & Bird
  • Garry Hoffman, Dickstein Shapiro
  • Ted Sichelman, University of San Diego School of Law



Inducing Infringement: The Oral Argument at the U.S. Supreme Court

Webinar Date: 02/25/2011

With its decision in SEB v. Global Tech last year, the Federal Circuit introduced a new more expansive standard under which an alleged infringer’s deliberately indifferent state of mind can be sufficient to establish induced infringement. Next Wednesday the U.S. Supreme Court will hold oral arguments in the appeal from that decision, and this webinar will describe and analyze that argument and the views expressed by the Justices.

The issue of induced infringement strikes to the heart of the need for patent law to reflect a “balance between the need to encourage innovation and the avoidance of the monopolies which stifle competition” as the Court put it in 1989. As such, the Court’s decision in this case will have a serious impact on much patent litigation.

Each of our panelists wrote an amicus brief in the case and together they represent a broad range of views on the issue, including support for the petitioners, support for the respondent, and advocating a “middle ground” between the two.

Speakers:

  • Mike Connor, Alston & Bird
  • Garry Hoffman, Dickstein Shapiro
  • Ted Sichelman, University of San Diego School of Law



Legal IP Services in China: The Professional Landscape

Webinar Date: 10/28/2010

When China was officially proclaimed the world’s second largest economy this summer, it only underlined what many multinational corporations already knew: ignoring China was not an option. But in China, it’s not only the patent law that’s new — so are many of the professions, organizations, and institutions involved: the profession of patent lawyer, the notion of a privately-owned IP law firm, and other services and institutions involved in filing patents and trademarks and in enforcing IP rights.

This webinar features three U.S. attorneys who were born in China, speak Mandarin fluently, and earned both technical doctorate degrees and law degrees in the U.S. Among the topics they will
discuss:

• The evolution of IP law firms in China
• How to choose, monitor and pay a Chinese law firm for services involving IP
• Differences in codes of conduct
• Translation services
• Differences in pace and procedures in patent procurement and litigation in China vs. the U.S.

Speakers:

• Tong Wu, Merchant & Gould
• Kevin Luo, Microsoft Corp.
• David Shen, Eli Lilly and Co.




The Extraterritorial Reach of the U.S. Patent Law after Transocean

Webinar Date: 10/13/2010

The increasing globalization of commerce means that U.S. courts are facing many cases in which U.S. patent laws are being asserted against actions that take place partially or wholly outside the U.S. The Federal Circuit has taken an expansive view of the reach of U.S. law in a series of decisions including Eolas v. Microsoft, NTP v. Research in Motion, Union Carbide v. Shell Oil and Litecubes v. Northern Lights.

In August, the Federal Circuit supported the position of U.S. patentholders in global markets in Transocean v Maersk, a case involving offshore drilling technology. The court found that “a contract between two U.S. companies for the sale of the patented invention with delivery and performance in the U.S. constitutes a sale under § 271(a) as a matter of law,” regardless of the fact that both the offer for sale and the sale took place in a foreign country.

The U.S. Supreme Court reversed one of Federal Circuit’s most significant decisions involving extraterritoriality, AT&T v. Microsoft, in 2007. In November it will hear Costco v. Omega involving international exhaustion of copyright. This panelists will review the case law, analyze the Transocean decision, and discuss where these issues are likely to surface next.

Speakers:

• Gregory Castanias, Jones Day
• Timothy Holbrook, Emory University
• Matthew McGill, Gibson Dunn




Managing Multi-Country Patent Litigation

Webinar Date: 07/14/2010

When your patent is being infringed in several countries at once, strategy becomes a three-dimensional chess game.  Where best to sue?  How to stage the order of litigation to put the maximum pressure on the adversary?  How to avoid a tactic in one jurisdiction that will boomerang against your side in another jurisdiction?  How to manage several foreign outside counsel each of whom may have his or her own agenda?  This webinar will feature one in-house and two law firm veterans of such battles.  They will review recent multinational fights, point out pitfalls to avoid, and glean best practices.

Speakers:

  • Steve Caltrider, Eli Lilly
  • Samson Helfgott, Katten Muchin Rosenman LLP
  • Neil Jenkins, Bird & Bird



ITC Exclusion Orders – A How-To on Enforcement

Webinar Date: 06/02/2010

Winning an exclusion order from the International Trade Commission is just the first step for patent holders trying keep infringing products out of the U.S. Unless a company takes proactive steps to enforce the order, it runs a high risk that infringing products will continue to find their way to U.S. buyers. Likewise, for respondents subject to exclusion orders, it is crucial to explain to U.S. authorities how enforcement of an exclusion order should be limited, and to distinguish re-designed products that should not be subject to exclusion. This webinar features the head of the Intellectual Property Rights and Restricted Merchandise Branch, Office of International Trade, U.S. Customs and Border Protection (CBP), the agency primarily responsible for the interpretation and implementation of ITC exclusion orders. In addition to an overview of enforcement issues, he will discuss recent developments in CBP’s rulings process regarding exclusion orders. He will also discuss possible changes that would replace the current ex parte process with an inter partes proceeding. The webinar also features an assistant general counsel at the ITC who will give guidance on enforcement and advisory opinion proceedings before the Commission, including how to speed resolution of disputes with Customs.

Speakers:

• Jean Jackson, U.S. ITC, Office of the General Counsel
• Charles Steuart, U.S. Customs and Border Protection, Intellectual Property Rights and Restricted Merchandise Branch
• Richard Belanger, Sidley Austin LLP
• Michael Esch, Wilmer Hale




Standard Setting in China: What Patent Owners Need to Know

Webinar Date: 03/04/2010

In November, the Standardization Administration of the People’s Republic of China (SAC) issued draft regulations on standard setting, patent rights and national technical standards. Then in January the China National Institute of Standardization made available for comment  “Disposal Rules for Inclusion of Patents in National Standards,” a key element in SAC’s proposal. This is China’s first attempt to formalize such rules, and follows recent revisions in China’s patent and anti-monopoly law. The draft rules from SAC and CNIS  touch on a number of matters that will be of concern to foreign companies that own Chinese patents or do business in China.

• Disclosure: Under the proposed rules, patent owners who are either involved in developing a standard or who are even aware that a standard is under development relating to a patent they hold would be obliged to disclose their patents to the relevant standards committee. Those who fail to do so would be obliged to grant a royalty-free license to use the patent. Those who intentionally conceal a relevant patent will face unspecified liability. These rules would be far more onerous that those imposed by international standard setting committees.

• Royalties: Under the draft rules, owners of patents relevant to a standard will be asked to grant either a royalty-free license or a royalty that is “significantly lower than the normal licensing fee.”

• Mandatory standards and compulsory licensing: The proposed rules appear to state that if there is a need to involve a patent in a mandatory standard, the government agency can require compulsory licensing of the relevant patent.

Many different organizations and individuals worldwide have given comments to the Chinese government on the proposed rules, hoping to bring them more in line with international norms. This panel of experts will educate attendees on the draft regulations and what the Chinese are hoping to accomplish, what the possibilities are for the eventual outcome, and the implications for U.S. companies.

Speakers:

• George Willingmyre, President, GTW Associates
• Marc Sandy Block, IBM
• Earl Nied, Intel Corp.




The Pros & Cons of Utility Models – An International Overview

Webinar Date: 02/18/2010

Utility models are underused, say proponents, and they can be a good way to protect products overseas in fast-moving industries because they are much quicker and easier to obtain than more rigorously-examined patents. But there are drawbacks that practitioners need to understand, as well as the complication that rules vary by country. This panel features patent lawyers who have experience with utility models to explicate how they can best be used overseas, how they work with PCT applications, and what are their weaknesses.

Speakers:

• Brett Alten, Apple Inc.
• Alex Chartove, Morrison & Foerster, LLP
• G. Peter Nichols, Brinks Hofer Gilson & Lione




One Year After Kyocera: How Much Harder has the ITC Gotten for Plaintiffs?

Webinar Date: 12/08/2009

The October 2008 Kyocera decision by the Federal Circuit was a watershed event for the ITC and for litigators who practice there. In an opinion written by Judge Randall Rader, the Federal Circuit held that, contrary to prior practice, the ITC could not issue a Limited Exclusion Order (LEO) that excludes third parties’ downstream products when those companies were not specifically named as a respondent — even though their products contain an infringing component. That weakened the remedies available to plaintiffs, who may be unwilling to name companies as respondents when they are also customers.

According to some experts, the ITC has gone further than the Federal Circuit required, and has also toughened the bar for obtaining the other form of relief, a General Exclusion Order. Meanwhile, the ITC Trial Lawyers Association has decided to push for legislative fix to restore the pre-Kyocera status quo. This panel will analyze and discuss these developments.

Speakers:

• Hon. Randall Rader, U.S. Court of Appeals for the Federal Circuit
• Tom M. Schaumberg, Adduci, Mastriani & Schaumberg, LLP
• Karin Norton, Sidley Austin LLP




The Opportunity and Challenge of Internationalized Domain Names

Webinar Date: 12/03/2009

At the October ICANN meeting in Seoul, brand owners got a break: ICANN decided to go slow on introducing controversial new generic top-level domain names. But at the same meeting, ICANN also approved the biggest technical change to the Internet since it was created four decades ago. The new Internationalized Domain Names Fast Track Process will enable countries and territories that use languages based on scripts other than Latin to offer their users domain names in non-Latin characters. Reports indicate that 25 countries are interested and the first round of registrations began in November.

Brand owners will soon be able to communicate with millions of people who don’t use Roman characters, but the job of domain name searching and policing also grows much bigger. Discussing the changes are a law firm attorney intimately involved in the ICANN process, a top Internet official at a country about to launch a suffix in its own non-Latin language, and the top in-house trademark lawyer at a major global corporation.

Speakers:

Andrei Kolesnikov, Director, Coordination Center for TLD RU;
Council Member, Generic Names Supporting Organization of ICANN
Steve Metalitz, Partner, Mitchell Silberberg & Knupp LLP;
Past six-term president of the IP Constituency of ICANN
Carl Roof, Global Trademarks Director, Procter & Gamble Co.