IP Chat Channel – Legal Department and Law Firm Management
Webinars are listed in chronological order with the most recent at the top of the page.
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Willfulness, Enhanced Damages, and Opinion of Counsel Since HaloWebinar Date: 02/23/2017
It has been more than six months since the U.S. Supreme Court’s Halo decision lowered the bar for proving willful infringement, and this boon for plaintiffs is quickly changing trial strategy. Our panel of experienced litigators will begin by examining how courts post-Halo have decided the sufficiency of pleading for enhanced damages at the motion-to-dismiss stage. Then, the panel will consider the factors that have most strongly influenced recent district court decision to enhance — or not enhance — damages, including notice by the patent owner (cases such as CH20 and Finjan), copying (Westerbeke, Imperium, and PPC), and opinions of counsel (Dominion, Presidio, and Boston University). A favorably timed opinion of counsel can prove successful in warding off a finding of willfulness, but defendants need to consider the effect of an opinion of counsel on attorney-client privilege.
- Natalie Hanlon Leh, Wilmer Cutler Pickering Hale and Dorr LLP
- Christopher Marchese, Fish & Richardson PC
- Michael Zeliger, K&L Gates LLP
Launching a Post-Grant Proceeding: In-house Perspective and StrategyWebinar Date: 12/01/2016
This webinar will consider best practices for the in-house counsel regarding the decision to launch an inter partes review (IPR) proceeding against a patent and managing the process of AIA petition and trial. Our panel includes two in-house counsel from different industries as well as an experienced USPTO litigator. They will discuss:
- How to assess the strongest defensive case against the assertion of a patent and when not to launch an IPR;
- Finding guidance in PTAB statistics;
- The impact of the Halo and Commil decisions on the decision to launch;
- Hiring outside counsel and predicting costs;
- Overseeing the petition, the choice of expert, and the preparation for oral hearing;
- Whether to file an appeal if you lose.
- Matthew Cutler, Harness, Dickey & Pierce PLC
- David Kelley, Ford Global Technologies LLC
- Kimberly Schmitt, Intel Corp.
Conflicts of Interest in Patent Prosecution after Maling v. FinneganWebinar Date: 02/10/2016
The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”
Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.
Insider Threat: Employee Mobility and Trade SecretsWebinar Date: 01/20/2016
Litigation against former insiders accounts for a significant amount of all trade secret cases. However, these disputes are difficult to win. Our panel will discuss best practices for safeguarding trade secret and other confidential corporate information from appropriation by employees, as well as contractors, and consultants.
A litigator will highlight how not meeting this high bar will cause a plaintiff’s case to fail. An employment law specialist will discuss emerging issues in non-compete agreements, such as the need to give current employees a bonus or profit-sharing consideration in exchange for signing a tougher non-compete. And an in-house counsel of a global technology company that will discuss survival in a world without non-competes. Our panel will also consider the flip side of the issue: best practices for avoiding a lawsuit when hiring an employee from a competitor.
Clifford Atlas, Jackson Lewis
Buckmaster De Wolf, General Electric Co.
Randall Kay, Jones Day
Advance Conflict Waivers: How to Avoid Unpleasant SurprisesWebinar Date: 09/22/2015
CLE Ethic credits will be applied for
Law firms asking current clients for written permission to be averse to them in future matters is a custom of recent vintage, but now takes place frequently. Corporations large and small grant such waivers because they want to work with a specific law firm lawyer or because they don’t foresee a real threat of a conflict. But when push comes to shove, these waivers don’t do much to lessen bad feelings between client and law firm, and their enforceability is tested in court repeatedly. For instance, in one recent case, a magistrate judge in the Western District of Pennsylvania enjoined a law firm from representing a company that had launched an unfriendly takeover bid for another of the firm’s clients, despite the existence of an advance waiver between the law firm and the target company.
Our panel, consisting of a law school professor who specializes in ethics in IP practice, an in-house counsel at a major multinational, and a law firm litigator, will examine the status of such waivers under law and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both client and law firm.
Prof. Lisa Dolak, University of Syracuse School of Law
Jennifer Johnson, DuPont
Daniel Tabak, Cohen & Gresser
Cyberattacks on IP: Response and PreventionWebinar 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.
David Bateman, K&L Gates
Matt Lundy, Microsoft Corp.
Mauricio Paez, Jones Day