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  • FRAND Litigation after TCL v. Ericsson

    Contains 5 Component(s), Includes Credits Recorded On: 02/28/2018

    At the end of last year, Judge Selna of the U.S. District Court for the Central District California issued a very significantbdecision in TCL v. Ericsson, a case centering on a license royalty dispute between a major Chinese cell phone maker and Erics on, the owner of a large number of standard-essential patents (SEPs) for 3G and 4G mobile service.

    At the end of last year, Judge Selna of the U.S. District Court for the Central District California issued a very significantbdecision in TCL v. Ericsson, a case centering on a license royalty dispute between a major Chinese cell phone maker and Erics on, the owner of a large number of standard-essential patents (SEPs) for 3G and 4G mobile service.

    This decision now joins a handful of other recent influential court decisions in the U.S. and the U.K. that have each devised their own methodology to calculate fair, reasonable, and nondiscriminatory (FRAND) for SEPs.


    Our panel, includes two academic experts on SEPs, both of whom have also practiced law, and a Brussels-based
    competition lawyer. They will discuss:


    • What are the strengths and weaknesses of the “top down” approach implemented in the TCL and Unwired Planet decisions vs. the “bottom up” approach of Microsoft v. Motorola? Is there a consensus emerging?
    • What are the implications of the non-discrimination prong of the TCL decision that says that small players in a market should not have to pay higher royalty rates than big players?
    • How does recent SEP competition policy in Europe differ from that in the U.S.----, and what has changed with the recent release of the European Commission’s Communication on Standard Essential Patents? 

    This webinar will help listeners understand where FRAND jurisprudence is heading, a critically important issue, for those who care about standards and FRAND. Judge Selna's decision is of great interest, for the details of how he set the royalty rates for the technology at issue. It is being compared with an important recent British decision. Unwired Planet v. Huawei, and the earlier U.S. decision Microsoft v. Motorola.

    Speakers:

    • Jorge Contreras, University of Utah School of Law
    • Thomas Cotter, University of Minnesota School of Law
    • Christopher Thomas, Hogan Lovells LLP

    Thomas Cotter

    University of Minnesota School of Law

    is the Briggs and Morgan Professor of Law at the University of Minnesota School of Law in Minneapolis. Prior to joining academia, he clerked for the Hon. Lawrence Pierce, U.S. Court of Appeals for the Second Circuit, and worked in private practice. He is the author of the blog Comparative Patent Remedies and of a book of the same name (Oxford U. Press, 2013).

    Jorge Contreras

    University of Utah School of Law

    is a professor of law at the University of Utah. His research focuses on IP and innovation and the development of technical standards. He is a member of the IP Rights Policy Committee of the American National Standards Institute (ANSI), among other non-academic posts, and he was previously a partner at Wilmer Hale. He recently co-edited the book Patent Pledges: Global Perspectives on Patent Law's Private Ordering Frontier. 

    Christopher Thomas

    Hogan Lovells

    is the head of the Antitrust, Competition, and Economic Regulation practice of Hogan Lovells in Brussels. In the SEP context, he has assisted multiple clients in patent litigation defenses and pro-active antitrust claims in national courts across Europe, as well as before the European Commission. Christopher previously worked as a référendaire at the EU General Court, and is a member of the European law committee of the Belgian bar.

  • PTAB After Wi-Fi One: What's Next for Appeals?

    Contains 5 Component(s), Includes Credits Recorded On: 02/22/2018

    Defining the prerogatives of the USPTO’s Patent Trial and Appeal Board under the America Invents Act is one of the great unfinished tasks in U.S. patent law.

    Defining the prerogatives of the USPTO’s Patent Trial and Appeal Board under the America Invents Act is one of the great unfinished tasks in U.S. patent law.
    The en banc Federal Circuit made an important contribution to that effort in January, ruling inWi-Fi One LLC v. Broadcom
    Corp. that PTAB time-bar determinations under 35 U.S.C. § 315(b) are appealable because they do not fall within the
    scope of the judicial-review prohibition of § 314(d). This overruled an earlier panel decision in Achates v. Apple.


    Our panel includes a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board who has
    helped develop devise the rules for proceedings under the AIA, a former PTAB Administrative Judge now in private
    practice, an IP Counsel with Ford Global Technologies LLC who oversees its PTAB docket, and litigator who practices
    both at the PTAB and before U.S. district courts.
    Our panelists will discuss:
    • The AIA’s various time bars as adjudicated by the PTAB – and whether there is a standing inconsistency among
    PTAB panels.
    • On which other issues are litigants likely to press for appeals such as the naming of all interested parties, or the
    reach of estoppel.
    • Real-party-in-interest and privacy, because in practice many potential appeals involve situations with various
    parties including joint defense groups, indemnification, and patent aggregators.
    • How will the PTAB respond to increased demands for discovery?

    Speakers:

    • Judge Michael Tierney, U.S. Patent and Trademark Office
    • David Kelley, Ford Global Technologies LLC
    • Scott Kamholz, Covington & Burling LLP
    • Matt Berkowitz, Shearman & Sterling LLP

    Matt Berkowitz

    Shearman & Sterling

    is a partner and IP litigator at Shearman & Sterling who practices in front of the Federal Circuit, U.S. district courts, the ITC, and the PTAB.  He has been lead counsel in numerous inter partes review proceedings, and has also won both post-grant review and inter partes reexamination challenges at the PTAB.  He has a particular interest in, and experience in, issues relating to real-party-in-interest and privity at the PTAB.

    Scott Kamholz

    Covington & Burling LLP

    is of counsel at Covington & Burling and a former Administrative Patent Judge at the PTAB. He joined Covington last year, after handling more than 120 inter partes review and Covered Business Method proceedings at the PTAB. Scott holds a Ph.D in Physiology and Biophysics and an M.D.

    David Kelley

    Ford Global Technologies LLC

    is an IP Counsel with Ford Global Technologies LLC. A lawyer at Ford for 23 years, Dave manages IP litigation for Ford in multiple venues and has been involved in launching more than 30 inter partes reviews. He is past chair of IPO’s ITC Committee and its Post-grant Patent Office Practice Committee.

    Hon. Michael Tierney

    U.S. Patent and Trademark Office

    is a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board. He handles trial proceedings brought under the AIA, as well as chemical and electrical ex parte appeals. He continues to play a leading role in devising the rules for proceedings under the AIA.

  • Divided Infringement after Tropp

    Contains 5 Component(s), Includes Credits Recorded On: 02/15/2018

    This webinar features the Chief Judge of the PTAB in conversation with two top litigators — one a leading practitioner at the PTAB and the other a preeminent advocate at the Federal Circuit and the Supreme Court — to discuss the path ahead after the recent host of major developments that will affect PTAB practice.

    The 2015 en banc Federal Circuit opinion in Akamai V refined divided infringement, but left room for further judicial fine tuning. One such shift took place last December, in a Federal Circuit panel decision, Tropp v. Travel Sentry. That opinion considered when multiple parties can be found to have infringed a patent together ---- and it could lead to greater liability for joint infringement. It also likely means such decisions will have to be made by jurors, not judges. Another 2017 earlier Federal Circuit opinion, Lilly v. Teva, addressed divided infringement in the context of the pharmaceutical industry for the first time.

    Our panel includes the winning appellate attorney for the inventor/plaintiff in Tropp, who will discuss how the new opinion fits into the framework created by Akamai V., an attorney who manages litigation for a high tech company, and a litigator who won summary judgment for a defendant in an Eastern District of Texas case involving divided infringement. They will consider recent federal district court decisions involving divided infringement, including Sonrai Sys. v. AMCS Group., PersonalWeb Techs v. IBM, and Progme Corp. v. Comcast Cable, and discuss how the outcomes for similar fact patterns might be different in light of Tropp.

    Speakers: 

    • John Carlin, Fitzpatrick, Cella, Harper & Scinto LLP
    • Paul Hughes, Mayer Brown LLP
    • Frank Nuzzi, Siemens Corp.

    John Carlin

    Fitzpatrick, Cella, Harper & Scinto

    is a partner and litigator at Fitzpatrick, Cella, Harper & Scinto LLP. John recently won summary judgment dismissal of claims asserted against his client Geotab in the Eastern District of Texas. The plaintiff couldn’t convince the judge that Geotab’s actions rose to the level of directing or controlling its customers as required in Akamai

    Paul Hughes

    Mayer Brown LLP

    is a partner in Mayer Brown’s Supreme Court & Appellate practice. He recently represented the inventor/plaintiff David Tropp at the Federal Circuit in an infringement case over Tropp’s luggage inspection system. Paul authored the winning Supreme Court briefs in the patent exhaustion case Lexmark (2017), one of 200 appellate matters he has handled. He previously served as a law clerk to the Honorable Diana Gribbon Motz of the U.S. Court of Appeals for the Fourth Circuit.

    Frank Nuzzi

    Siemens Corp.

    is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey. He manages simple and complex U.S. patent litigation for Siemens. Prior to joining Siemens, Frank was in the litigation department of Clifford Chance.

  • Exhaustion Tamed? Early Reports and New Ideas on After Lexmark

    Contains 5 Component(s), Includes Credits Recorded On: 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.

    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.

    Brian Kacedon

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    William Krovatin

    Merck & Co Inc.

    Bill Krovatin is senior vice president and assistant general counsel at Merck & Co., Inc. and is responsible for IP matters at Merck including patents, trademarks, copyrights, and IP litigation.  Bill joined Merck in 1993 as an attorney in the IP litigation group.  Previously, he was an attorney at Hoffmann-La Roche and at Morgan & Finnegan.  He is the Board Liaison to IPO’s Licensing Committee. 

    Jorge Goldstein

    Sterne, Kessler, Goldstein & Fox, PLLC

  • Settling Trade Secret Disputes

    Contains 5 Component(s), Includes Credits Recorded On: 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 office 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.

    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 office 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 they 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

    Alan Cox

    NERA Economic Consulting

    Victoria Cundiff

    Paul Hastings LLP

    Barbara Reeves

    JAMS

    is a mediator and arbitrator at JAMS. Before becoming a full-time neutral, she was a litigator for more than 30 years. She has served with the U.S. Department of Justice, Antitrust Division, as a partner at Paul Hastings and Morrison Foerster, and as Associate General Counsel and Vice President for Southern California Edison and Edison International.

  • USPTO on Using Declarations Regarding Prior Art under the AIA

    Contains 5 Component(s), Includes Credits Recorded On: 01/11/2018

    It’s been five years since a new regulation regarding declarations was promulgated by the USPTO through 37 C.F.R. §1.130. As patents prosecuted under the AIA begin to flow in larger numbers, practitioners would do well to understand the choices the USPTO has made in implementing those rules.

    It’s been five years since a new regulation regarding declarations was promulgated by the USPTO through 37 C.F.R. §1.130. As patents prosecuted under the AIA begin to flow in larger numbers, practitioners would do well to understand the

    choices the USPTO has made in implementing those rules.


    For instance, the USPTO has arguably taken a hard line on the issue of whether a section 102(b)(1)(B) or 102(b)(2)(B)
    exception regarding prior art applies. It has narrowly defined the provision that an exception applies when there has been
    a previous inventor-originated public disclosure of the same subject matter as that of a third party's potential prior art
    disclosure, including when a third party discloses an obvious variant of the invention.


    The USPTO is frequently having to make decisions on when to apply a section 102(a)(1) exception. This situation arises
    when prior art has another person’s name on it, e.g., along with the inventor’s. A declaration by the inventor is necessary
    to explain that the other person was, for example, a graduate student working under the inventor’s direct supervision.
    Our panel features a Senior Legal Advisor at the USPTO, and chief IP attorney for a technology company, and a veteran
    patent prosecutor at a major law firm.

    Speakers:

    • Kathleen Fonda, U.S. Patent & Trademark Office
    • Courtenay Brinckerhoff, Foley & Lardner LLP
    • Gary Ganzi, Evoqua

    Courtenay Brinckerhoff

    Foley & Lardner LLP

    is a partner with Foley & Lardner in Washington, D.C. She is chair of the firm’s IP Law and Practice Committee and a member of the firm's Life Sciences Industry Team, Patent Trials Group and Appellate Practice Team, and as well as editor and primary author for Foley’s PharmaPatentsBlog. She is vice chair of IPO’s U.S. Patent Office Practice Committee and a member of its Section 101 Legislation Task Force. 

    Kathleen Fonda

    U.S. Patent and Trademark Office

    is a partner with Foley & Lardner in Washington, D.C. She is chair of the firm’s IP Law and Practice Committee and a member of the firm's Life Sciences Industry Team, Patent Trials Group and Appellate Practice Team, and as well as editor and primary author for Foley’s PharmaPatentsBlog. She is vice chair of IPO’s U.S. Patent Office Practice Committee and a member of its Section 101 Legislation Task Force. 

    Gary Ganzi

    Evoqua Water Technologies LLC

    is Senior Counsel and Head of Intellectual Property for Evoqua Water Technologies, as he was for its corporate predecessor Siemens Water Technologies.  He is named as an inventor on 35 U.S. patents in fields related to water treatment.  Gary serves on the Board of Directors of IPO and as board liaison of the IPO U.S. Patent Office Practice Committee.