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  • Wilfullness after Halo (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 06/14/2018

    This webinar will discuss of how corporate strategy and litigation tactics must change in the new legal environment that has developed since the Supreme Court’s Halo decision two years ago.

    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 School of Law
    • Richard Megley, Lee Sheikh Megley & Haan 
    • Kathi Vidal, Winston & Strawn 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).

    Richard Megley

    Lee Sheikh Megley & Haan

    is a founding partner of Lee Sheikh Megley & Haan, a Chicago IP litigation firm that launched in 2015. Rich has been successful in obtaining large damage awards and royalties for patent plaintiffs, and has led licensing campaigns that have brought in revenues of more than $75 million. This spring he succeeded in fending off enhanced damages at the Federal Circuit, despite a jury finding of willfulness.

    Kathi Vidal

    Winston & Strawn LLP

    is a patent litigator and the managing partner of the Silicon Valley office of Winston & Strawn. She has first-chaired many high-stakes litigations involving high tech companies. Earlier in her career, she worked as a systems and software design engineer at GE. This spring she won a jury verdict of willfulness for client Chamberlain Group in the Northern District of Illinois, and an award of enhanced treble damages from the judge.

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

    Contains 5 Component(s), Includes Credits Recorded On: 06/14/2018

    This webinar will discuss discuss the latest Federal Circuit decisions and USPTO guidance on patent eligibility in the life sciences.

    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 decision 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 Exergen, Vanda 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.

    Paul Golian

    Bristol-Myers Squibb

    is Vice President & Assistant Counsel, Intellectual Property at Bristol-Myers Squibb Company.  He is responsible for the oncology therapeutic area, and provides strategic counsel on all facets of patent law.  Paul joined BMS in 2002, having previously worked in law firms.  He chairs the Pharmaceutical & Biotechnology Issues Committee of IPO.

    Ali Salimi

    U.S. Patent & Trademark Office

    is a senior legal advisor in the Office of Patent Legal Administration (OPLA) of the USPTO.  His responsibilities include providing legal and policy guidance to the Deputy Commissioner for Patent Examination Policy and the Director of OPLA, including formulating policy regarding section 101 issues.  Ali examined patents for more than a decade in Technology Group 1600.

    Warren Woessner

    Schwegman Lundberg & Woessner, P.A.

    is a founding partner and chair of the biopharma group at Schwegman Lundberg & Woessner.  Warren works on solutions for complex prosecution problems.  He holds a Ph.D. in organic chemistry and is the author of the blog Patents4Life.

  • A New PTAB Landscape The Impact of SAS, Recent Federal Circuit Decsisions, and the Proposed Change to the BRI Standard (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 05/31/2018

    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.

    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.

    Topping the list of changes are those forced by the Supreme Court in its SAS decision this April. Changing some of the basic ground rules of AIA trials, SAS holds that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision.

    Then, earlier this month the U.S. Patent and Trademark Office proposed a new rule that would change the claim construction standard used in America Invents Act (AIA) reviews. Under the proposal, the PTAB would no longer use the broadest reasonable interpretation standard to interpret the patent claims in an AIA review, replacing it with the standard used by federal courts and the U.S. International Trade Commission.

    Many experts see both of these changes as making the PTAB an even more important venue for patentability challenges. But the Federal Circuit’s affirmance rate of PTAB decisions now hovers at around 70 percent, as it has increasingly demonstrated a willingness to send cases back to the Board. Our litigator panelists will give tips on how to build a successful appeal that results in remand or reversal, while the chief judge is expected to talk about the impact of Federal Circuit decisions on PTAB practice. And panelists will discuss how to try to convince the PTAB to change its mind about invalidating a patent on remand, which occurs about 40 percent of the time.

    Speakers:

    • Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
    • Gregory Castanias, Jones Day
    • Hon. David Ruschke, U.S. Patent and Trademark Office

    Erika Arner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner at Finnegan and a nationally-recognized leader in trial practice before the Patent Trial and Appeal Board. She has represented patent owners and petitioners in more than 100 PTAB trials, primarily as lead counsel, and currently serves as president of the PTAB Bar Association. She has also successfully argued appeals from the PTAB to the Federal Circuit, for instance, winning remand of a PTAB decision invalidating an air freshener patent last fall.

    Gregory Castanias

    Jones Day

    Gregory Castanias heads the Federal Circuit practice at Jones Day. He represented SAS Institute at the Supreme Court, in a 2018 case that transformed the way that patents are litigated at the PTAB, and represented Myriad there in a Section 101 case. He has argued 70+ times at the Federal Circuit and has won numerous appeals from the PTAB. 

    Hon. David Ruschke

    U.S. Patent and Trademark Office

    is Chief Judge for the Patent and Trial Appeal Board, where he has served for the past two years. He manages PTAB trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings, and appeals from adverse examiner decisions in patent applications and reexamination proceedings. Previously, Chief Judge Ruschke served as chief patent counsel of Medtronic’s CSH business unit, with sales in excess of $3 billion. Prior to joining Medtronic, he was a litigator at Covington & Burling and clerked for Chief Judge Glenn L. Archer, Jr. and Circuit Judge Arthur J. Gajarsa at the U.S. Court of Appeals for the Federal Circuit. Chief Judge Ruschke holds a PhD in organometallic chemistry

  • Protecting Brands Under the New European Data Regulation (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 05/10/2018

    This webinar will discuss owners of global brands will face a difficult challenge when the new European General Data Protection Regulation (GDPR) goes into effect on the 25th of May.

    Owners of global brands will face a difficult challenge when the new European General Data Protection Regulation (GDPR) goes into effect on the 25th of May. A key resource for brand owners could even go dark on that date because of stiff new privacy rules implemented in regional laws across the entire European Union.

    That resource is WHOIS information, which for two-decades has helped brand owners identify who owns a domain and how to contact them. Those records, regulated by the Internet Corporation for Assigned Names and Numbers (ICANN), developed into an essential tool for maintaining the integrity of the domain name registration and website ownership process. It is expected the cloaking of that information will provide more cover for the bad actors who populate the on-line space internationally, including cybersquatters, phishers, counterfeiters, and other infringers. Brand owners will need to adopt new tactics to enforce their marks in this altered landscape.

    Our panel includes trademark counsel from a major multinational corporation and two law firm specialists in domain name
    and Internet IP law. They will discuss:


    • The global reach of the GDPR, which will apply to all companies selling to and storing personal information about citizens in Europe, including companies with no facility in that region.
    • ICANN's proposal for implementing the privacy rules.
    • Strategies for brand owners to address the new landscape.
    • Options open to brand owners who will now find it more difficult to bring relatively inexpensive administrative proceedings due to lack of information.
    • Whether expensive court-based enforcement actions will become more common.
    • Whether enforcement budgets will need to grow to keep up with more elusive threats and, if so, how much?

    Speakers:

    • Dennis Prahl, Ladas & Parry LLP
    • Marc Trachtenberg, Greenberg Traurig, LLP
    • Valerie Verret, Exxon Mobil

    Dennis Prahl

    Ladas & Parry LLP

     is a trademark partner at Ladas & Parry LLP and a specialist in domain name and Internet law.  Dennis is a member of the Intellectual Property Constituency (IPC) of ICANN.  He also serves as president of Principium Strategies, Ladas & Parry’s affiliated Brand monitoring service and ICANN-accredited domain name registrar subsidiary.  He is a member of the IPO U.S. Trademark Law committee.

    Marc Trachtenberg

    Greenberg Traurig, LLP

    is a shareholder of Greenberg Traurig, LLP who specializes in trademark law, with a special focus on domain names and social media. He identifies threats to clients’ brands and aggressively enforces rights on their behalf. Marc has participated in the development of Internet policy and governance and is active in the ICANN IP Constituency. Previously, he worked as a software project manager and in the online advertising industry.

    Valerie Verret

    Exxon Mobil Corp.

    is Trademark Counsel for Exxon Mobil Corporation. She helps her business clients obtain, protect, and enforce trademarks globally. Her work includes the ESSO, EXXON and MOBIL marks, as well as non-traditional marks such as service station trade dress. Previously, Valerie was in private practice at Baker Botts. She is Chair of IPO’s U.S. Trademark Law Committee.

  • After SAS: A Transformation of Post-Grant Practice (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 05/04/2018

    This webinar discuss SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

    SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

    SAS held that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA
    review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision. The Supreme
    Court’s opinion left many aspects of the implementation of this change to the PTAB’s discretion. Our panel includes a
    former Lead Administrative Patent Judge who just returned to private practice last fall, a leading practitioner before the
    PTAB who also specializes in appeals of PTAB decisions to the Federal Circuit, and a veteran patent litigator who has
    been involved in many parallel proceedings at the PTAB and in district court. They will analyze and discuss:


    • The implementation decisions that have already been decided and announced by the PTAB.
    • What the changes mean for cases instituted before SAS that are now pending before the PTAB and how both petitioners and patent owners should respond to the “do over.”
    • How should strategy change for challengers considering filing a fresh petition for an IPR and for the patent owner in its preliminary response and throughout the trial?
    • With respect to hundreds of appeals from the PTAB that are now pending at the Federal Circuit that were instituted on only a subset of the petitioner's challenged claims: Should petitioners file a motion to vacate the appeal and remand the case back to the PTAB? What are the Federal Circuit’s options?
    • What will be the impact on parallel district court litigation, the district court’s decision to stay the case pending the PTAB Final Written Decision, and on estoppel of challenged claims?

    Speakers: 

    • Michael Stockwell, Kilpatrick Townsend & Stockton LLP
    • Trenton Ward, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
    • Jon Wright, Sterne Kessler Goldstein & Fox, PLLC

    Mitchell Stockwell

    Kilpatrick Townsend & Stockton LLP

    is a partner and patent litigator at Kilpatrick Townsend & Stockton LLP with extensive experience representing clients before U.S. district courts and the PTAB. He represented a plaintiff in the Middle District of Florida where the court admitted as evidence the PTAB’s denial of the defendants’ petition for an IPR.

    Trenton Ward

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner and patent litigator at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.  Ward joined Finnegan last year from the PTAB where he had spent three years as a Lead Administrative Patent Judge.  He served on the panel for more than 275 Decisions on Institution and Final Written Decisions, authoring many of them.  Trenton assisted the Chief Judge in formulating and executing policy for AIA trials and PTAB operations.  He previously worked as an electrical engineer.

    Jon Wright

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a director in the Trial & Appellate and Electronics Practice Groups of Sterne Kessler Goldstein & Fox, PLLC. Jon focuses primarily on contested proceedings before the PTAB and on appeals of those cases to the United States Court of Appeals for the Federal Circuit. He is a recognized leader in inter partes review practice when there is co-pending district court litigation or a USITC investigation. 

  • Biosimilar and Hatch-Waxman Litigation: Jurisdiction and Venue Issues (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 04/25/2018

    This webinar discusses Infringement litigation over biosimilars and pharmaceuticals poses its own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

    Infringement litigation over biosimilars and pharmaceuticals poses its own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

    These issues are particularly hot right now, with several disputes pending that could have a wide impact going forward, such as Momenta Pharmaceuticals v. Bristol-Myers Squibb. Further, after the Supreme Court’s TC Heartland decision, judges must decide where the artificial act of infringement occurs —and district courts are already split.

    To help you navigate these complex issues, our panel includes the head of U.S. patent litigation for a major international
    pharma and biologic company that is active both as an innovator and in biosimilars, as well as two veteran litigators (one
    who typically represents innovators and the other who represents biosimilar applicants and generic drug
    companies). They will discuss what you need to know, and will make predictions, regarding:

    • Whether a biosimilar applicant will be able to bring BPCIA litigation before the brand sponsor brings its own suit.
    • Will a biosimilar maker who has not yet filed its marketing application with the FDA be able to appeal an
    unsuccessful inter partes review? Or does it need Article III standing to seek an appeal?
    • The complicated calculus regarding venue in both Hatch-Waxman litigation and BPCIA litigation.
    • Issues when there are multiple defendants in different jurisdictions.
    • How to deal with foreign defendants.

    Speakers: 

    • Cynthia Hardman, Procter Goodwin IP
    • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto
    • Peter Waibel, Novartis

    Cynthia Hardman

    Goodwin & Procter, LLP

    is a partner in Procter Goodwin’s IP Litigation Group. Cynthia has significant experience representing generic companies in ANDA patent litigation under the Hatch-Waxman Act and also represents companies in litigation regarding the BPCIA.

    Christopher Loh

    Fitzpatrick, Cella, Harper & Scinto

    is a partner at Fitzpatrick, Cella, Harper & Scinto.  He practices complex patent litigation in the areas of pharmaceuticals, biotechnology and chemistry.  He also counsels clients on transactional and patent prosecution issues concerning both small-molecule drugs and biological products, and advises clients on a range of IP matters including inventorship, trade secrets, and licensing.

    Peter Waibel

    Novartis

    is Vice President, Head of Patent Litigation, for Novartis Pharmaceuticals Corporation. Mr. Waibel is responsible for management of all aspects of patent litigation for Novartis’ innovator pharmaceutical and biopharmaceutical products in the U.S. and Canada. Previously, Peter was a Senior Patent Attorney for NovoNordisk and practiced patent law at Frommer, Lawrence and Haug. 

  • The Role Facts in Patent Eligibility Decisions: Analysis and Strategy (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 04/12/2018

    In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.

    In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.

    The cause of the shift is a trio of patentee-friendly Federal Circuit opinions all penned by Judge Moore. These decisions, Berkheimer, Aatrix and Exergen, together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under section 101. Hewlett Packard, the defendant in Berkheimer, has requested a rehearing of the case by the en banc Federal Circuit. It’s no exaggeration that the future of section 101 law in the U.S. hangs in the balance, given the view of many experts that the Supreme Court is not eager to revisit these issues at present.

    Our panel of experts will address:
    • How to best leverage these decisions to your advantage.
    • What you need to know about how to handle issues that could arise on appeal.
    • Who is likely to decide patent eligibility issues going forward, using what evidence, and at what stage of litigation?
    • What model will prevail: Making the factual decision at trial or a Markman hearing-type model disposing of patent eligibility before trial?
    • How does the analogy to obviousness determinations hold up?

    Speakers:

    • Calvin Griffith, Jones Day
    • Darly Joseffer, King & Spalding
    • Corey Salsberg, Novartis

    Calvin Griffith

    Jones Day

    is a partner and patent litigator at Jones Day. He has won summary judgment, against infringement claims for a number of parties, including Canon and Procter & Gamble. He also represents the Cleveland Clinic Foundation in its petition for certiorari asking the Supreme Court to review a Federal Circuit decision invaliding three patents for claiming patent-ineligible laws of nature.

    Daryl Joseffer

    King & Spalding

    is head of the Appellate, Constitutional and Administrative Law practice at King & Spalding, concentrating mainly on IP cases. Daryl has litigated several Section 101 appeals for Google, and has filed an amicus brief for the Internet Association asking for a rehearing en banc of Berkheimer. Previously, Daryl served as the Principal Deputy Solicitor General.

    Corey Salsberg

    Novartis

    is Vice President and Global Head of IP Affairs for Novartis, a global healthcare company headquartered in Switzerland.  He develops and advocates for the company’s policy positions. Prior to joining Novartis, Corey was an IP litigator in private practice.

  • Patent Prosecution Estoppel from PTAB Proceedings (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 03/29/2018

    This webinar discuss the scope of estoppel triggered by PTAB trials was of concern primarily to litigators, who worried about their arguments being estopped in district court.

    Until recently, the scope of estoppel triggered by PTAB trials was of concern primarily to litigators, who worried about their arguments being estopped in district court.

    But patent prosecutors should also worry about estoppel arising from PTAB proceedings. This was made clear in the latest version of the USPTO’s Manual of Patent Examining Procedure that issued in January 2018, the first revision in two years. It states that, “[PTAB] trial proceedings yield information that may be considered material to pending related patent applications … [An] example of such material information is any assertion that is made during litigation and/or trial proceeding which is contradictory to assertions made to the examiner. Examples include evidence of possible prior public use or sales, questions of inventor ship, [or] prior art.” This sweeping requirement for additional disclosure signals a big change that can create issues for those prosecuting patent applications.


    Our panel, which includes an in-house prosecutor for a technology company with a sophisticated understanding of law and procedure, a post-grant specialist, and former USPTO Deputy Commissioner for Patent Examination Policy, will discuss:
    • The USPTO program run every 2 weeks that creates links between filed petitions for AIA trials and the related applications, which is not accessible to the public or to the attorney of record.
    • How standard operating procedure for patent prosecutors must now change. The MPEP states that the prosecutor is in danger of violating his or her duty of disclosure if anything in the PTAB record known to be material to the patentability of any claim in an application is not submitted to the USPTO. What are the patent
    prosecutor’s responsibilities and how should they be fulfilled? That some commenters have questioned whether the PTAB has authority to issue its estoppel rule, 37 CFR § 42.73(d)(3)(i). Should this have any impact on prosecutors’ behavior? 

    Speakers:

    • Jeffrey Hohenshell, Medtronic Inc.
    • Stephen Kunin, Oblon
    • Scott McKeown, Ropes & Gray LLP

    Jeffrey Hohenshell

    Medtronic, Inc.

    is a senior patent attorney at Medtronic. An experienced patent prosecutor and strategist, he has had success invalidating for double patenting several patents covering patient-monitoring systems that were asserted against Medtronic.

    Stephen Kunin

    Oblon

    is a partner at Oblon Spivak.  He is active representing clients in all aspects of USPTO post-issuance proceedings and related litigation.  Steve worked for more than three decades at the USPTO, and served as Deputy Commissioner for Patent Examination Policy for ten years.  He is a member of the IPO U.S. Post-Grant Patent Office Practice Committee.

    Scott McKeown

    Ropes & Gray LLP

    is a partner in the IP Litigation Practice of Ropes & Gray and chair of its PTAB Group. He has handled more than 250 PTAB matters since 2012 and also focuses on related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott is author of the widely-read Patents Postgrant blog. He worked as an electrical engineer in software, telecomm and related technologies.

  • WAYMO v. UBER: DTSA Test Tube (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 03/15/2018

    The recently-settled trade secret action Waymo v. Uber has received plenty of attention over the past year. This IP Chat Channel webinar won’t focus on the one-off oddities in this case, although there were plenty of them. Instead, the program will examine the dispute as a test case for the new federal trade secret law, the DTSA.

    The recently-settled trade secret action Waymo v. Uber has received plenty of attention over the past year. This IP Chat Channel webinar won’t focus on the one-off oddities in this case, although there were plenty of them. Instead, the program will examine the dispute as a test case for the new federal trade secret law, the DTSA.

    The conclusion reached? Despite the touted advantages, there are serious new perils that should be considered by plaintiffs who are contemplating going to federal court instead of filing in the traditional venue of state court. Our panel, two top trade secret litigators and a mediator who was previously in-house, will analyze this Northern District of California litigation, as well as other recent cases in other federal courts, illustrating how the risks of using the DTSA to bring suit
    compares to the benefits. They will discuss how:
    • Federal judges have been making rigorous demands for specificity of TS description, both at the pleading stage and at the gateway to discovery. For instance, in Space Data v. X, 16-cv-03260-BLF (N.D. Cal. 2017), the defendant’s motion to dismiss was granted because of the failure to specify. The defendant also prevailed on
    summary judgment in Kuryakyn Holdings, LLC v. Ciro (W.D. Wis. 2017).
    • Federal courts are more likely than state courts to challenge experts and theories of harm. In Telesocial v. Orange (N.D. Cal., 2017), plaintiff’s expert report was thrown out and a federal jury largely cleared the defendant. In Waymo v. Uber, the court excluded a damages expert under FRE 702 and 403, for insufficient qualification and for failure to separate benefits derived from the trade secrets from those derived from other, legitimate advantages.


    The advantages and disadvantages must be analyzed carefully by trade secret plaintiffs thinking of seeking redress under the DTSA. The panel will also discuss the legal twists and turns that led to the unexpected settlement in Waymo v. Uber

    Speakers:

    • Diane Seigel Danoff, Dechert LLP
    • James Pooley, James Pooley, PLC
    • Barbara Reeves, JAMS

    Diane Danoff

    Dechert LLP

    is a partner in Dechert LLP’s Intellectual Property Litigation group and chairs the firm’s global Trade Secret Litigation practice.  She has litigated trade secret cases for Microsoft, WebMD, and other clients across a wide range of technologies in federal and state courts.

    James Pooley

    James Pooley, PLC

    founded his own firm in Silicon Valley in 2015, after serving for five years as the Deputy Director General of the World Intellectual Property Organization in Geneva. He spent a year as senior counsel at Orrick before returning to his own firm in September. He acts as a co-counsel in trade secret and patent litigation, and acts as a consultant regarding trade secret and cybersecurity risks. He previously was also an IP litigator and partner at Morrison & Foerster and Milbank, among other firms. He is the author of Secrets: Managing Information Assets in the Age of Cyberespionage (Verus Press 2015).

    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.

  • FRAND Litigation after TCL v. Ericsson (RECORDING)

    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.