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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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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.

 




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



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



Patent Eligibility in the Life Sciences: Exergen and Praxair- and USPTO Memos on Vanda and Berkheimer

Webinar Date: 06/14/2018

Pity the life sciences patent prosecutor who tries to find a path through recent appellate court decisions regarding patent eligibility.  A recent concurrence in a divided Federal Circuit decision indicated that U.S. Supreme Court decisions like Mayo have left too much uncertainty about what is and is not patent eligible under section 101.  Like others in the IP community, the concurrence indicated that perhaps Congress should act.  But few experts expect a legislative fix to come quickly.  That leaves both patent owners and applicants with a pressing need to assess the impact of recent significant Federal Circuit opinions, such as ExergenVanda and Praxair.

Exergen and Vanda have been the cause for cautious optimism for some life science companies.

Exergen’s invention, a diagnostic patent, was upheld under section 101 by the Federal Circuit, which was considered an important event post-Mayo.  This decision is referenced in the USPTO’s Berkheimer memo of 19 April, which takes the agency into the uncharted territory of trying to decide how much and what kind of evidence it takes to show that an invention is not “well understood, routine and conventional.”

Vanda affirmed a district court’s finding that claims to a personalized method of treatment are patent eligible.  In early June, the USPTO issued a new memo to examiners on Vanda.  The Federal Circuit decision didn’t address a number of relevant issues, however, such as whether a doctor could be a direct infringer through divided infringement.

The most recent of the three decisions is far more ominous for life science inventions.  Praxair, a recent appeal of an IPR decision, could result in many section 101 challenges being made in IPRs in the form of a printed matter/obviousness challenge.

Our panel includes a life sciences expert at the USPTO, a top patent lawyer at a major pharmaceutical company, and a founding shareholder of an IP law firm who specializes in biotech.  They will assess the cumulative impact of recent changes and delineate prosecution strategies to address them.

Speakers:

  • Paul Golian, Bristol-Myers Squibb Company
  • Ali Salimi, S. Patent & Trademark Office
  • Warren Woessner, Schwegman, Lundberg & Woessner, P.A.



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