Intellectual Property Owners Association

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IP Chat Channel – Transactions

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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Settling Trade Secret Disputes

Webinar Date: 01/30/2018

Like most IP litigation, most trade secret disputes end in settlement. But trade secrets involve distinctive settlement concerns and strategies that effective lawyers would do well to master. For instance, consider the complex negotiations that ensued after Move, which operates Realtor.com for the National Association of Realtors, lost its chief strategy officer to rival Zillow in 2014. Move filed a trade secret suit claiming that Zillow owed the company $2 billion in damages. The dispute ended in settlement in 2016 with Zillow agreeing to pay Move $130 million.

Our experienced panel, which includes a mediator who was formerly an in-house counsel, a trade secret litigator, and an experienced damages expert, will discuss the special nuances of trade secret settlement negotiations, including:

  • Settlement can actually provide better protection for sensitive information than a court victory. The plaintiff can’t dictate to a judge the terms of a court order. But a settlement can set down in great detail what happens to the information and what a defecting employee is permitted to do at the new employer. Settlement can also protect from discovery the defendant’s trade secrets, for example, when it has been quietly working on a similar product for years.
  • What are the key points in litigation that make settlement most likely?
  • Differing theories for trade secret damages (e.g., disgorgement of profits vs. a reasonable royalty) result in numbers that are universes apart. Is there a disciplined way to bridge the gap?

Panelists will also give tips on how to help clients master the unruly emotions that can make a mutually beneficial settlement difficult to achieve.

Speakers:

  • Alan Cox, NERA Economic Consulting
  • Victoria Cundiff, Paul Hastings LLP
  • Barbara Reeves, JAMS



Outsourcing Patent Work: Avoiding Pitfalls (Ethics)

Webinar Date: 11/16/2017

The patenting process demands many capabilities, from informed legal analysis about the future direction of the law on patent eligibility and indefiniteness to clerical data entry about filed applications. The global legal outsourcing industry has grown dramatically in the last 10 years to over $2 billion annually, as corporations and law firms try to disaggregate those disparate tasks and have them handled cost-effectively by different parties.

Outsourcing in itself does not, however, simplify the patenting process and presents its own pitfalls. This webinar will examine the possible hazards that can trip up customers of patent services, and what due diligence and supervision is required to do outsourcing correctly. Regulator and ethical monitors have identified many areas that can raise red flags including:

• Offshoring technical data in disregard of USPTO guidance;
• Improper fee-splitting;
• Monitoring suppliers for conflicts of interest;
• Getting the informed consent of the ultimate client; and
• Aiding and abetting the unauthorized practice of law.

Our panel includes the head of patent operations at a major multinational who has supervised patent service providers for many years, an India-based executive of a patent services provider, and an attorney who specializes in ethical issues facing IP lawyers and who represents them in disciplinary matters.

Speakers:

  • Mukundan Chakrapani, Clairvolex
  • Michael Gnibus, General Electric
  • Michael McCabe, IP Ethics Law



Sovereign Immunity at the PTAB: Gimmick or Genius?

Webinar Date: 10/24/2017

When drug maker Allergan announced in early September that it had transferred patents on a best-selling eye drug to the Saint Regis Mohawk Tribe in upstate New York, IP experts were caught flat-footed. Allergan’s move to sidestep an inter parties review at the PTAB by taking advantage of the Tribe’s sovereign immunity brought patent law deep into unfamiliar territory.

The terrain might be strange, but many patent owners and petitioners now realize they need to understand the lay of the land. The St. Regis Tribe has also partnered with a company in the computer sector, making it clear that sovereign immunity is a challenge not only for generic drug companies but for any company threatened with patent assertion. Right now, deal makers far and wide are scrambling to do more transactions based on immunity. Our multi-disciplinary panel will address such questions as:
What is the nature of tribal immunity? Do Indian tribes offer special advantages in these deals, or could a patent owner just as well make a deal for a state government to harbor patents?
What was the basis for the PTAB’s earlier decisions this year to grant immunity to state university patent owners such as the University of Florida? How does tribal immunity differ from states’ immunity?
Does it make a difference to the legal analysis that the St. Regis Tribe took ownership of patents that were already being challenged at the PTAB?
Will the PTAB’s decision regarding the Allergan case be appealable?

Speakers:

  • Brendan Johnson, Robins Kaplan LLP
  • Lissi Mojica, Brooks Kushman PC
  • Shashank Upadhye, Amit Talati Upadhye



Blockchain: What IP Lawyers Need to Know

Webinar Date: 08/23/2016

Will blockchain technology soon leap beyond its initial success in the currency Bitcoin to disrupt many industries and the legal profession itself? That remains to be seen. But companies and clients are curious about blockchain’s potential, regardless of its timetable or ultimate impact, and IP lawyers can benefit from a better understanding of the distributed ledger technology and its implications.

Our panelists include a legal pioneer who is the former General Counsel of the Bitcoin Foundation, the executive vice president of IP at a technology company specializing in digital watermarking who has questions about blockchain, and a patent litigator. After a brief introduction to the technology itself, they will discuss:

  • New Applications: Which industries beyond finance will embrace new blockchain applications – 3D printing and digital rights management, logistics and supply chain management, energy grid management, capital markets trading, real property transfers?
  • Smart Contracts: These are contracts written in source code, recorded on a blockchain and then automatically performed and enforced without the involvement of contracting parties or central authorities. Will smart contracts enter the mainstream? Do they challenge the basic principles of contract law, contract interpretation and the application of equitable principles
  • Security:  What is the focus of the debate about blockchain security?

The IP landscape of blockchain — Open source or proprietary?: Many founders of Bitcoin embrace open-source models, but at least one pioneer is reported to have recently filed patent applications on the building blocks of blockchain. Other companies are quickly trying to amass patent portfolios around blockchain applications. But questions about patent eligibility and obviousness loom. Are many blockchain patents and applications little more than the computerized and non-novel application of an “abstract idea”?

Speakers:

Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, LLP




Open Source Due Diligence in M&A

Webinar Date: 08/04/2016

Click here to register to listen.

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

Speakers:

Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.




Readying a Patent Portfolio for Sale

Webinar 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;
  • Encumbrances;
  • 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.

Speakers:

Themis Chryssostomides, Qualcomm, Inc.
Kent Richardson, Richardson Oliver Law Group
James Trueman, Ocean Tomo




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