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IP Chat Channel – Licensing

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. 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 in China

Webinar Date: 10/25/2018

This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China.  Experts say design patents are underutilized in China by foreign companies, to their detriment.  Chinese companies certainly act as if Chinese design patents can give them an edge.  More than one-third of all patent applications filed in China by domestic entities are for design patents, compared to just 10 percent of all patent applications filed in China by foreign applicants.

As many a foreign company has discovered, if it doesn’t register its designs in China, there’s a good chance a Chinese company will — and the foreign company may be forced to pay a license for use of its own design.  U.S., Japanese, and Korean automakers have repeatedly accused Chinese companies of stealing their designs, only to find the accused patented the designs first in China.  Last year, Apple faced a widely reported ban on sales of its iPhone 6 in China after an administrative agency found that the iPhone 6 and iPhone 6 Plus infringed on the design patent rights of a Chinese manufacturer, Shenzhen Baili.  The Beijing Intellectual Property Court later revoked the ban and Apple’s sales continue unimpeded.

Our panel – a leader of the USPTO’s “China team” who was previously a law-firm patent litigator, a Beijing-based lawyer who specializes in design patents, and an in-house patent counsel at a major multinational – will discuss the role of different Chinese government entities and regulators in infringement disputes.  Other issues they will discuss include:

  • The ramifications of China’s refusal to recognize partial designs.
  • Differences between U.S. law and Chinese law with respect to protection against unauthorized use of a product protected by a design patent.
  • Special concerns in patenting GUIs (graphical user interfaces).
  • The interaction of utility patents and design patents in China, differences in the jurisprudence applicable to each, and whether it is possible to obtain both types of protection on one product.

Speakers:

  • Bart Fisher, Caterpillar Inc. 
  • Biqing Huang, CCPIT Patent and Trademark Law Office
  • Elaine Wu, U.S. Patent & Trademark Office



Biosimilars in the Antitrust Spotlight: Patent, Litigation and Settlement

Webinar Date: 10/04/2018

It’s been a little over five years since the U.S. Supreme Court issued its landmark decision in FTC v. Actavis, finding that payments made by brand­name drug companies to generic manufacturers in patent settlements can raise antitrust concerns. The prolific and ongoing litigation stemming from that decision is limited to the small-molecule drugs governed by the Hatch-Waxman regulatory scheme. Now some commentators believe that the FDA has set down a pro-competition gauntlet regarding large molecule biologic drugs governed by the BPCIA — and that the FTC is not far behind.

Up until now the economic arguments associated with pharmaceutical IP and antitrust litigation were based on the pattern of small molecule drugs, where generics usually achieve a substantial share of the market quickly with large price discounts. But the complexity and costs of developing biosimilar drugs, along with substantially different regulatory and market conditions, has already shaped a different pattern for biosimilar competition, raising new issues of which practitioners need to be aware.

Our panel – a veteran pharma litigator, an antitrust lawyer who formerly worked at the FTC and who was involved in FTC v. Actavis, and a healthcare economist and expert witness – will address these issues and look ahead and discuss:

-The likely shape of settlements in patent litigation between innovator biologic companies and biosimilar aspirants
-In light of FTC challenges to a series of contemporaneous business deals including patent settlements, the future of non-cash forms of compensation
-As multiple patents in biosimilar infringement litigation can be asserted in staggered waves over time, whether “at-risk” entry is more or less likely than for traditional generic drugs

 

Speakers:

  • Nicholas Mitrokostas, Goodwin Procter, LLP
  • Richard Mortimer, Analysis Group
  • Michael Perry, Baker Botts LLP



Assignor Estoppel: The Current State of the Law

Webinar Date: 08/30/2018

Confusion can result if agencies and courts address similar legal issues. A case in point is the current muddle over the common law doctrine of assignor estoppel in patent litigation, where disputes over patent validity often proceed in parallel before the USPTO’s Patent Trial and Appeal Board and federal district courts. The doctrine, which prevents an inventor or patent owner who assigns a patent to another party from later challenging the validity of the patent, plays a role in a significant number of high-profile patent disputes. The Federal Circuit gives assignor estoppel a wide scope, while the PTAB has determined that assignor estoppel does not apply to AIAinter partes review (IPR) proceedings.

It appeared as if this conflict might be resolved soon, but that possibility has seemingly evaporated. EVE-USA/Synopsys petitioned the Supreme Court for certiorari, after assignor estoppel was applied against it in its case against Mentor Graphics. The Supreme Court asked for the views of the Solicitor General on the petition. But the parties stipulated to dismissal of the case in July.

Our panelists – two litigators both recently involved in significant cases involving assignor estoppel, as well as in-house counsel at a tech company, will discuss the fluid state of the law. The Federal Circuit in Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. held that it lacked jurisdiction to review the PTAB’s determination that IPR challenges are not barred by assignor estoppel. But that decision relied on Achates, an earlier Federal Circuit decision which the Court has since overturned. The panel will also consider such corporate concerns as inventor mobility and patent sales in light of assignor estoppel.

Speakers:

  • Mark Miller, O’Melveny & Myers LLP
  • Marshall Schmitt, Michael Best & Friedrich LLP
  • Marian Underweiser, IBM Corp.

 




After RPX: Privity, RPI and Estoppel in AIA- Post Grant Proceedings

Webinar Date: 08/23/2018

The issues of privity, real parties in interest (RPI), and estoppel are becoming ever more important in the post-grant context. The recent Federal Circuit decision in Applications in Internet Time (AIT) v. RPX, an appeal from a PTAB inter partes review decision, found that the PTAB took an “impermissibly shallow” look at evidence presented by the patent owner about the relationship between the petitioner and another party. Our panel of experts will discuss how this decision is a significant addition to the Federal Circuit’s oversight of the PTAB and what the resulting implications are for practitioners.
They will also discuss the relationship of these issues with the time bar under Section 315(b) and the ongoing impact of the en banc Federal Circuit decision in Wi-Fi One v. Broadcom Corporation. That decision held “that time-bar determinations under §315(b) are reviewable by this court,” reversing the original Federal Circuit panel that had cited the Court’s holding in Achates that such judicial review was prohibited.
Questions of RPI and privity are woven throughout the AIA. Its estoppel provisions involving district court and ITC litigation apply not only to entities that are directly involved in adversarial proceedings, but also to privies. Likewise, in many IPRs, questions of RPI and/or privity are not limited to the business model of defensive groups, but are also raised by common fact patterns in supplier-customer relationships, indemnities, mergers & acquisitions, and use of the same counsel.
Our panel includes a PTAB specialist with extensive experience representing patent owners, a veteran patent litigator, and an appellate lawyer who recently represented a client at the Supreme Court in a case that changed PTAB practice. They will discuss:
• How patent owners can take advantage of RPX decision and what changes may it require in the business models of some frequent IPR petitioners
• The options for patent owners who previously lost on privity issues at the PTAB or were denied discovery
• The widely reported expectation that Wi-Fi One will file a petition for certiorari with the U.S. Supreme Court – as well as its efforts before the PTAB to raise the issue of a relationship alleged to be subject to the 315(b) time bar. 

Speakers:

  • Gregory Castanias, Jones Day
  • Craig Countryman, Fish & Richardson P.C
  • Eldora Ellison, Sterne Kessler Goldstein & Fox, PLLC



Protecting Big Data Inventions Globally

Webinar Date: 08/16/2018

These days, many companies are asking questions that cut “across” datasets. They are looking for trends and opportunities that, absent the marriage of multiple data sources, would have otherwise gone unrecognized. The advent of cloud storage, open-source database software, and large-scale commercial processing services has drastically reduced the costs to capture, store, and analyze a new flood of data coming from sensors, devices, video/audio, networks, log files, transactional applications, web, and social media – much of it generated in real time.The increased focus on big data has brought with it challenging questions about how companies can protect their intellectual property. This webinar takes a global and comparative look at protecting inventions to collect, process, and make sense of big data.

Our panelists are an in-house attorney with a U.S. company at the forefront of related developments, a European IP attorney and software expert who has spent more than a decade in managerial roles for American, Swiss, and German companies, and a Chinese patent prosecutor who specializes in telecommunications and software. They will discuss:

• The decision whether to pursue patent protection or to rely on trade secrets
• Subject-matter guidelines regarding patent eligibility in the U.S., Europe, and China
• Limitations on functional claiming
• How to show patent examiners in Europe that a big data invention is “technical” enough to be entitled to protection

Speakers:

  • Paul Leblond, Google Inc.
  • Guide Quiram, Michalski Hüetterman & Partner
  • Tiecheng Yang, Unitalen Attorneys at Law



An Update on the On-Sale Bar: Helsinn at the Supreme Court

Webinar Date: 07/19/2018

The U.S. Supreme Court granted certiorari in Helsinn v. Teva in late June, teeing up an important question about the on- sale bar under the AIA. In this particular case, which the Federal Circuit declined to rehear en banc, a patent was invalidated after the sale was partially made public: the details of the invention, an anti-nausea drug, were kept secret, but the existence of the sale was publicly disclosed.

Our panel of experts, including a top Supreme Court advocate, in-house counsel, and a patent litigator, will review the current status quo after two significant Federal Circuit decisions in recent years on the on-sale and public use bars, Merck & CIE v. Watson Labs and The Medicines Co. v. Hospira. These decisions raised in-house concerns about patent prosecution practices, confidentiality, and guidance to commercial teams. The panelists will also consider what questions may remain unanswered after Helsinn, such as (1) does a fully-secret sales offer count to bar a patent under section 102? and
(2) even if it serves as a bar to patentability under section 102, to what extent does a secret sale count as “prior art” for obviousness purposes? They will also consider the Justices’ options in this case.

 

Speakers:

  • John Duffy, University of Virginia
  • Jennifer Johnson,DuPont
  • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto



Damages after Western Geco: Impact on Patent Litigation Strategy and Client Counseling

Webinar Date: 07/12/2018

At the U.S. Supreme Court oral argument in Western Geco v. Ion, a case about expanding the damages for infringing a U.S. patent to include foreign lost profits, a heated and far-ranging debate ensued.  Earlier, some amici curiae had stressed the huge stakes at issue.  For instance, Fairchild Semiconductor joined forces with The Internet Association, arguing that allowing lost profits damages from outside the U.S. “would have negative fallout for economic policy, U.S. commerce, and foreign relations.”  Even the “threat [of such damages] would encourage important industries to relocate abroad,” they claimed.

In late June, the Court disposed of the matter with an opinion from Justice Thomas.  This webinar will focus on the impact of this decision on patent litigation strategy, as well as client counseling.  The Court’s decision overturned decades of Federal Circuit precedent by holding that Western Geco’s award for lost profits was a permissible domestic application of § 284.  Our panel includes the chief IP counsel for a major multinational; the former head of patents at Microsoft who is now with a law firm where he focuses on strategic IP counseling, IP transactions, and license agreements; and a patent litigator who has been involved in these issues for years on behalf of a patent owner. They will discuss:

  • How Western Geco might impact decisions regarding the location of R&D, manufacturing, and contract signing.
  • The immediate and long term effects on litigation strategy for both plaintiffs and defendants.
  • Whether the impact will be limited to § 271(f)(2) cases or may be broader.
  • What kind of proof plaintiffs will need to bolster their claims for worldwide damages.
  • How the question of proximate cause “could limit or preclude damages in particular cases,” an issue the Court explicitly declined to address.

Speakers:

  • Buckmaster de Wolf, General Electric Company
  • Bart Eppenauer, Shook, Hardy & Bacon LLP
  • Blair Jacobs, Paul Hastings LLP



Wilfullness after Halo

Webinar Date: 06/26/2018

Enhanced damages for patent infringement no longer is a rarity in the two years since the Supreme Court lowered the bar for alleging and proving willfulness in its Halo decision.  In just the last few months, Illinois federal Judge Harry Leinenweber raised Chamberlain’s $3.8 million trial verdict to $11.4 million after finding the conduct of a rival garage door opener maker to be egregious.  In May, Texas federal Judge Rodney Gilstrap found deliberate copying of a water filter design and awarded Whirlpool Corp. $3.8 million in enhanced damages on a $7.6 million verdict.

In this webinar, our expert panel will describe winning corporate strategy and litigation tactics in this new environment.  Two of the panelists are litigators with recent courtroom successes involving willfulness issues — and the third is a leading academic expert on patent law and damages.  They will analyze recent case law from both district courts and the Federal Circuit and describe:

  • Current pleading standards for willfulness, including proving knowledge of the patent or willful blindness, and the impact of letters of counsel;
  • The effect of Halo on the availability of pre- suit and post-suit willfulness and the impact of the timing of the notice of infringement; and
  • The relevance of the Read factors (Read Corp. v. Portec, Inc., Fed. Cir. 1992) for egregious behavior in light of the fact that enhancement needn’t always follow a finding of willfulness.

Speakers:

  • Thomas Cotter, University of Minnesota
  • Richard Megley, Lee Sheikh Megley & Haan LLC
  • Kathi Vidal, Winston & Strawn LLP



Exhaustion Tamed? Early Reports and New Ideas on After Lexmark

Webinar Date: 02/08/2018

Last year’s Supreme Court Lexmark decision poses a major problem for patent owners across many industries by dramatically broadening the scope of patent exhaustion. Apple’s pending litigation against Qualcomm underlines Lexmark’s impact because it challenges the chip maker’s business model for allegedly requiring customers to both purchase chips and take a patent license.

The IP world still awaits a significant Federal Circuit decision on exhaustion in the eight months since Lexmark. But many cases have been bubbling up from district courts, and companies would do well to examine these decisions and other fresh ideas that have been proposed to ameliorate Lexmark’s impact.

Our panel includes the Chief IP Counsel of a major drug company, an attorney with vast experience in licensing matters, and a litigator who won an exhaustion case for his defendant on summary judgment. They will discuss strategies and recent court cases that involve:

  • Staking out the claim that a sale is not an “authorized sale” — Chrimar v. Alcatel Lucent and Sunoco v. U.S. Venture;
  • Using claims of tortious interference under state law against competitors if they interfere with the patent owner’s contracts with purchasers;
  • Obtaining patent protection on each component of a system, as well as on the system as a whole; and
  • Obtaining separate patents on an inventions’ different methods of use.

Speakers:

  • Jorge Goldstein, Sterne, Kessler, Goldstein & Fox PLLC
  • Brian Kacedon, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • William Krovatin, Merck & Co., Inc.



FRAND and SEP Update: Asia

Webinar Date: 08/08/2017

Standard essential patents (SEPs) are a key part of global commerce. For instance, an Internet of Things or 5G mobile network can only be built using standards that are licensed at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet traditional jurisprudence has shown itself problematic for disputes involving SEPs.

This webinar will consider the impact of recent developments with SEPs in China, Korea, Japan, and India. Our panel, which includes a senior competition lawyer at a SEP owner, an attorney who represents implementers, and a leading academic authority, will discuss topics including:

  • The April release of the Beijing High People’s Court Guidelines for Patent Infringement Determination;
  • The decision of the Beijing IP Court in March finding Sony infringed a SEP and was an unwilling licensee, resulting in the first injunction in favor of an SEP holder in China;
  • The decision of the Korean Fair Trade Commission, now being appealed, to impose a $853 million fine on Qualcomm for FRAND violations;
  • The ongoing assertion campaign by Japanese sovereign patent fund IP Bridge; and
  • Ericsson’s campaign to win licensing royalties from local and Chinese phone makers in India.

Speakers:

  • Jorge Contreras, University of Utah School of Law
  • James Harlan, InterDigital Holdings, Inc.
  • Paul Zeineddin, Zeineddin PLLC



Exhaustion Unleashed: Licensing, Patenting Strategy, and Litigation After Lexmark 

Webinar Date: 06/28/2017

This webinar will explore the significant ramifications of the recent U.S. Supreme Court decision in Impression Products v. Lexmark. Exhaustion of patent rights is a very simple matter, the Court said, and the Federal Circuit has been wrong both to allow domestic post-sale restrictions under patent law and to allow U.S. patent owners to sue for infringement of products imported into the U.S. that the patentee first sold abroad. The opinion notes, “We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.” 

Our panelists include the top IP lawyer at a multinational pharmaceutical company, a law firm attorney who was formerly the head of IP litigation at GE, and a licensing expert. They will discuss how companies will need to react to the newly-fortified power of exhaustion, including: 

  • Structuring licenses as a way around exhaustion; 
  • Antitrust concerns about enforcing post-sale restrictions through contracts after Lexmark; 
  • Structuring patent ownership, supply chain management, and inventory management to reduce exhaustion, and important tax implications. 

Speakers: 

  • Paul Jahn, Morrison & Foerster LLP 
  • William Krovatin, Merck & Co., Inc. 
  • Richard Rainey, Covington & Burling LLP



On-Sale Bar After Helsinn: What is the Scope? 

Webinar Date: 06/01/2017

How can a recent Federal Circuit opinion on the on-sale bar, that appears to maintain the status quo, all the same be causing anxiety in the minds of some in-house counsel? This webinar will explore the ramifications of the April decision Helsinn v. Teva, that reversed a lower court by holding that the 2011 America Invents Act on-sale bar provision renders patents invalid if the invention was sold prior to patenting, even if the sale did not publicly disclose the invention.

Helsinn appears to be consistent with a long line of cases about secret sales, including Metallizing. But some in-house counsel, particularly in pharma and other regulated industries, are concerned about the facts of the case, in which the public disclosure of a private purchase-and-supply agreement between Helsinn and a third-party distributor was found invalidating. They worry that many contracts regularly inked by their in-house clients prior to filing a patent application will now need the added scrutiny of IP counsel. And if such transactions are known by the prosecuting patent attorney, will they have to be disclosed to the USPTO?

Our panel includes an in-house counsel at a global chemical company, a pharmaceutical industry litigator, and a professor of patent law.

Speakers:

  • Prof. Dennis Crouch, University of Missouri School of Law
  • Deborah Fishman, Arnold & Porter Kaye Scholer LLP
  • Jennifer Johnson, DuPont



Global FRAND Update - Europe

Webinar Date: 05/24/2017

This webinar will consider the impact of recent important judicial decisions and institutional initiatives in Europe concerning SEPs. The past decade has demonstrated that traditional patent jurisprudence is ill-suited for disputes involving standard-essential patents (SEPs) and the promise to license them at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet the technological future, including the Internet of Things and 5G mobile networks, can only be built using standards and patent licenses. Courts and governments worldwide are straining to adapt. 

Our panel includes a senior competition lawyer at both an owner of SEPs and an implementer, as well as a leading academic authority on standards.They will discuss:  

  • Unwired Planet v.Huawei, the recent decision of the U.K. High Court that determined the value of a worldwide FRAND portfolio license to Unwired Planet’s patent portfolio, and decreed that Huawei must license it at that rate or face an injunction; 
  • The outcome of numerous SEP cases that have followed Huawei v. ZTE, the 2015 ruling from the European Court of Justice that spelled out conditions under which a SEP holder can ask for an injunction without infringing competition law; 
  • The April announcement by the European Union that it is preparing a “roadmap” to provide a framework for licensors and licensees of SEPs, and an early leak of its contents. 

Speakers: 

  • Jorge Contreras, University of Utah 
  • James Harlan, InterDigital, Inc. 
  • Gil Ohana, Cisco Systems 

 




After Laches: Equitable Estoppel Redux? 

Webinar Date: 05/11/2017

The recent U.S. Supreme Court decision in SCA Hygiene v. First Quality rejected, 7-1, the defense of laches for damages incurred within the six-year period of limitations prescribed by Section 286. This webinar will focus on a separate point mentioned by both the majority and the dissent – that equitable estoppel can protect against some of the consequences that may ensue from the court’s decision, problems described by the majority as “unscrupulous patentees inducing potential targets of infringement suits to invest in the production of arguably infringing products.” 

Our panel — an in–house counsel and two law firm litigators — will explore whether equitable estoppel defense can indeed be used in many fact scenarios where laches previously applied. According to the Federal Circuit, equitable estoppel can entirely bar a patent infringement suit, if (1) the patentee, through misleading conduct, led the alleged infringer to reasonably believe that the patentee did not intend to enforce its patent; (2) the alleged infringer relied on that conduct; and (3) due to its reliance, the alleged infringer would be materially prejudiced if the patentee were permitted to proceed with its charge of infringement. A defendant has successfully used equitable estoppel, for instance, where a patentee sent a cease-and-desist letter, but did not file suit for an extended period of time. 

Speakers: 

  • Roger Cook, Kilpatrick Townsend & Stockton LLP 
  • Ann Fort, Eversheds Sutherland LLP 
  • David Kelley, Ford Global Technologies LLC 



Settlement Agreements as Comparables: New Comprehensive Analysis from the Federal Circuit

Webinar Date: 04/20/2017

Last month, Federal Circuit Judge Taranto, writing for a unanimous panel, laid out a complete road map to the admissibility of settlements in patent infringement litigation. That detailed opinion, Prism v. Sprint, is likely to put an end to the seven-year unsettled period that has followed the Federal Circuit decision in ResONet v.  Lansa. That 2010 opinion upset case law reaching back to 1889 that rarely deemed settlement agreements admissible in patent infringement litigation. ResONet asserted, to the contrary, that “the most reliable license in this record arose out of litigation.” Since then, district courts have tended to follow their own inclinations on the issue, with some assessing the admissibility of settlements in a fact-dependent case-by-case analysis, and others remaining more inclined to exclude settlements.

In Prism, the Federal Circuit lays out a detailed scheme for the balancing act required under Rule 403, whereby a district court “may exclude relevant evidence if its probative value is substantially outweighed” by such dangers as unfair prejudice and misleading the jury. The opinion addresses such issues as:

  • What evidence is needed to show value of the asserted patents when the old settlement covers more than the patents in the present controversy;
  • How the timing of the settlement of an earlier dispute affects its probative value for a settlement late in trial, meaning the record was more fully developed; and
  • How settlements are not that different from licenses, because “the potential for litigation…must loom over patent licenses generally, including those signed without any suit ever being filed.”

Our panel, which includes two litigators and a damages expert, will discuss how to best leverage Prism to keep settlements both in and out of evidence. They will also analyze Sprint’s recent filing of a petition for rehearing or rehearing en banc and discuss possible outcomes.

Speakers:

  • Stephen Holzen, Stout Risius Ross
  • Samuel Walling, Robins Kaplan LLP
  • Karen Weil, Knobbe, Martens, Olson & Bear LLP



After Life Tech v. Promega: Litigation and Business Strategies for Patent Owners and Defendants

Webinar 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.

Speakers:

  • 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 Know

Webinar 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.

Speakers:

  • 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&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.




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




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




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;
  • Encumbrances;
  • 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.

Speakers:

Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, 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




Settling ANDA Litigation: Options and Risks

Webinar 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.

Speakers:
Daniel Butrymowicz, Federal Trade Commission
Kevin Nelson, Duane Morris
Bruce Wexler, Paul Hastings



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



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