IP Chat Channel – Licensing
Webinars are listed in chronological order with the most recent at the top of the page.
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After Life Tech v. Promega: Litigation and Business Strategies for Patent Owners and DefendantsWebinar Date: 03/09/2017
This webinar will consider what new legal battles are likely to follow from last month’s U.S. Supreme Court decision in Life Tech v. Promega. The decision reversed the Federal Circuit by finding that Thermo Fisher Scientific’s Life Technologies unit did not infringe by shipping a single component of Promega’s patented invention overseas, in a case involving Section 271(f)(1) of the Patent Act.
In parsing that statute, the Justices declined to rule on how close to “all” of an invention’s components must be exported in order to be the “substantial portion” that is needed to infringe. Presumably, that determination will be argued in front of a jury. It is also not clear whether it will be a judge or the jury who will answer the question of exactly how many “components” are defined within a patent. Patent owners will want to argue that there are multiple components in the part of an invention shipped overseas, while alleged infringers will want to include many parts of a patent in one component.
Our panel, which includes the head of IP for a large technology company and two litigators, each of whom was involved in an amicus brief in the case, will also discuss strategies for patent prosecution and global supply chain management going forward. For instance, inventors may want to look harder at procuring foreign patents in countries where competitors are likely to repackage or use components of an invention that now is patented only in the U.S.
- Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
- Irena Royzman, Patterson Belknap Webb & Tyler LLP
- Bradford Schmidt, Agilent Technologies
Economics of Settlement: What Patent Litigators Need to KnowWebinar Date: 02/07/2017
A damages expert is not always in the room when in-house counsel and their outside litigators must make money calculations regarding settlement of a patent infringement case. This webinar will consider what data is needed to calculate a settlement offer at every major point along the litigation timeline, how to use that data to calculate a timely range of offers, and when an outside expert might be needed. At the outset, for instance, an alleged infringer must decide how much it is willing to pay to make the other side go away — unless it has a deterrence policy of never settling with non-practicing entities. Parties may want to assess the value of a case early on before substantial legal costs are incurred, a process encouraged (at least in theory) by last year’s change in the Rules of Federal Procedure. The time period after an IPR petition is filed — but before the PTAB makes its institution decision — has turned into a productive window for settlement decisions. And, of course, there is important new data on the tables after a damages judgment, but before appeal.
Our panelists are an in-house counsel at a major multinational technology company, a litigator who often represents patent plaintiffs, and a damages expert.
- Laurie Gathman Kowalsky, Koninklijke Philips N.V.
- Christopher Lee, Lee Sheikh Megley & Haan LLC
- Kimberly Schenk, Charles River Associates
Open Source Due Diligence in M&AWebinar Date: 08/04/2016
Open source software (OSS) can shorten product development cycles and is likely something you use every day. OSS, however, is not free, and compliance with open source software may be in terms of a patent or copyright license instead of a monetary payment. In fact, OSS costs in an acquisition or merger can impact the valuation of the target, delay, or even scuttle the deal.
This webinar will focus on exploring OSS issues during due diligence. This includes examining how OSS was used by the target of the acquisition and whether such use aligns with the acquirer’s business model. The discussion will include:
- Exploring how an acquisition target uses the open source;
- Determining possible impacts on a target’s intellectual property both in terms of copyright and patents;
- Determining possible impacts on the acquirer’s intellectual property; and
- Possible ways to mitigate open source use of the target when such use does not align with the acquirer’s business model.
The moderator and panelists are experts in OSS at major technology companies.
Moderator: Joseph D’Angelo, EMC Corporation
Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.
After Brexit: European Patents and Design RightsWebinar 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.
Paul Coletti, Johnson & Johnson
John Conroy, Fish & Richardson
Rowan Freeland, Simmons & Simmons
European Trademarks, Designs and IP TransactionsWebinar 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.
Jonathan Day, Carpmaels & Ransford
Jake Feldman, Johnson & Johnson
Jan Zecher, Fish & Richardson
Readying a Patent Portfolio for SaleWebinar Date: 06/22/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at an active buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about how to best highlight the value of a portfolio, the inclusion of non-U.S. patents, the optimal size of a portfolio, and the use of brokers.
Themis Chryssostomides, Qualcomm, Inc.
Kent Richardson, Richardson Oliver Law Group
James Trueman, Ocean Tomo
Internet of Things: Standards, Licensing, or Litigation?Webinar Date: 06/16/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at a major buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about the inclusion of non-U.S. patents, the optimal size of a portfolio, the use of brokers, and bilateral licenses to the seller from the buyer.
Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, LLP
You Lost the Arbitration: New Options for AppealsWebinar 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.
Sasha Carbone, American Arbitration Association
William Needle, Ballard Spahr
Brian White, King & Spalding
Settling ANDA Litigation: Options and RisksWebinar Date: 03/23/2016
The recent First Circuit opinion in the In Re Loestrin reverse-payment litigation appears to have clarified that non-cash payments to a generic company from a branded pharmaceutical company can be targeted as anti-competitive under the U.S. Supreme Court 2013 decision in FTC v. Actavis. But many other antitrust-related issues about settling Hatch-Waxman litigation remain open, such as:
- How big must a reverse payment be to count as a “large and unjustified” under Actavis?
- Does the promise of “no authorized generic” amount to an unlawful reverse payment?
- May side deals that are profitable for the generic manufacturer and reflect commercially reasonable arm’s-length terms be freely entered into by settling parties
- What role will arguments about patent strength play if a reverse-payments antitrust case goes to trial?
Our panel, which will discuss these and other issues, features an attorney at the Federal Trade Commission, and two law firm litigators, one from each side of the innovator/generic divide.
Kevin Nelson, Duane Morris
Bruce Wexler, Paul Hastings
Antitrust in Asia: New IP Guidelines in China, Korea and JapanWebinar 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.
Gabriella Liu, Beijing IParagon Law Firm
Koren Wong-Irvin, George Mason University, Global Antitrust Institute
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.
Mark Patterson, Fordham University School of Law
Susan Van Keulen, O’Melveny & Myers
Damages on Extraterritorial Sales After Carnegie MellonWebinar 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.
Blair Jacobs, Paul Hastings
Prof. Amy Lander, Drexel University, Thomas R. Kline School of Law
FRAND Damages: Comparing the Four Leading Cases, Including CSIROWebinar Date: 12/16/2015
This month the Federal Circuit issued its decision in CSIRO v. Cisco that agreed-in-part and disagreed-in-part with the district court’s damages award regarding a patent essential to a WiFi standard. Our panel will compare CSIRO with three key earlier opinions that give insight into proving and determining a reasonable royalty for a standard essential patent (SEP): the Federal Circuit’s earlier decision in Ericsson v. D-Link, the Ninth Circuit’s decision in Microsoft v. Motorola, and Judge Holderman’s Northern District of Illinois decision in In Re Innovatio IP Ventures.
Our panel includes a patent counsel at a company that owns valuable SEPs, a law firm litigator who has represented technology implementers against owners of SEPs, and a law school professor who authors a blog on patent damages. They will discuss where the opinions converge and the nuances in how they differ, and how courts are likely to view these issues in the future.
Prof. Thomas Cotter, University of Minnesota Law School
Mark Snyder, Qualcomm
Timothy Syrett, WilmerHale
Standards and FRAND: Recent Developments in the U.S. and EuropeWebinar 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.
David Long, Kelley Drye & Warren LLP
Christopher Thomas, Hogan Lovells
Paul Zeineddin, Zeineddin PLLC
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
Antitrust Enforcement in ChinaWebinar 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.
Lei Mei, Mei & Mark LLP
Peter Wang, Jones Day
Koren Wong-Ervin, U.S. Federal Trade Commission
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.
Marc Sandy Block, IBM Corp.
David Long, Kelley Drye & Warren LLP
Earl Nied, Intel Corp.
Paul Zeineddin, Zeineddin PLLC
Proving FRAND Damages: Ericsson v. D-LinkWebinar Date: 01/27/2015
Last month the Federal Circuit for the first time gave its views on what methodology to apply to determine a royalty rate for infringed patents subject to fair, reasonable and non-discriminatory (FRAND) commitments related to a standard. That opinion, Ericsson v. D-Link, rejected the Georgia-Pacific framework for FRAND-encumbered patents and covers a lot of ground, including guidance regarding the incremental value of the invention, apportionment issues for standard essential patents (SEPs), and jury instructions regarding patent hold-up and royalty stacking.Our panel of experts will discuss the opinion, and questions that remain open, such as:
- How can a patent owner be fairly compensated for committing an entire portfolio of patents to a standard if royalty rates are set only on the few patents named in a particular suit?
- How can focusing on the “smallest saleable unit” result in a fair result for an invention that reads on the entire product, where it is an important but not the sole driver of demand?
- The Federal Circuit agreed with the district court’s decision not to instruct the jury on patent hold-up or royalty stacking because there was no evidenced offer for either. What evidence will be necessary to show such harm in future cases?
Jorge Contreras, University of Utah, College of Law
Anne Layne-Farrar, Charles River Associates
Richard Stark, Cravath, Swaine & Moore LLP