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

    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 (RECORDING)

    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

    Victoria Cundiff is a partner at Paul Hastings in New York. She is a leader of the Firm’s nationally ranked global trade secrets litigation practice, which is ranked in “Tier 1” by Legal 500. She has been named a “Leading Lawyer” nationally in the field by Legal 500 and has litigated trade secret and related cases throughout the United States and as a member of cross-border teams. She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside of court and advises on lawful competitive intelligence gathering. Vicki is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law, and at the University of Pennsylvania Law School, where she teaches trade secrets law.

    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 (RECORDING)

    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.