Presented by
The Stanford Program in Law, Science & Technology
Berkeley Center for Law & Technology at UC Berkeley
The University of Texas School of Law

MAJOR SPONSOR
Navigant Consulting, Inc.

Luncheon Sponsors
Chadbourne & Parke LLP
Covington & Burling LLP

Download Brochure (PDF)

Overview

Come to Palo Alto in the heart of Silicon Valley and join leading judges, academics and practitioners for two days of in-depth presentations. The nationally-recognized faculty includes IP counsel from Apple, Cisco, Yahoo! and Mozilla, practitioners from around the nation, and academics from Stanford and Berkeley.

The Conference is jointly presented with the Stanford Program in Law, Science & Technology and the Berkeley Center for Law & Technology at UC Berkeley.

Event Schedule

Program is subject to change.
All times are Central Time Zone.

  • Time
    Credit
    Subject
    Speaker
  • Thursday Morning, Dec. 9, 2010
    Presiding Officer:
    Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA
  • 7:45 am
    Registration Opens
    Includes continental breakfast.

  • 8:30 am
    Welcoming Remarks

  • 8:40 am
    0.33 hr
    Patent Prosecution: The PTO's Use of Prior Art Submissions
    A short look at some recent empirical results on what examiners do (and don't) pay attention to.

    Mark A. Lemley, Stanford Law School - Stanford, CA

  • 9:00 am
    0.75 hr
    Claim Drafting Strategies: Prosecutor and Litigator Perspectives on Drafting and Prosecuting Claims
    The prosecutor has thousands of dollars to draft and negotiate issued claims. The litigator has millions of dollars to argue over what they mean. Given the backdrop of the current patent law, this panel considers what claims drafting techniques can be taken to strengthen your patents for litigation, without exceeding your prosecution budget.

    Moderator:
    Michael J. Schallop, Van Pelt, Yi & James LLP - Cupertino, CA
    Panelists:
    Michael W. Farn, Fenwick & West LLP - Mountain View, CA
    Panelists:
    Erik R. Puknys, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Palo Alto, CA

  • 9:45 am
    0.50 hr
    Managing Patent Prosecution and Portfolios: Effective Use of New USPTO Options and Initiatives
    An evaluation of rule and policy changes at the USPTO under David Kappos, including recommendations and cautions for managing corporate portfolios.

    Duane R. Valz, Chadbourne & Parke LLP - Los Angeles, CA

  • 10:15 am
    Break

  • 10:30 am
    0.75 hr
    Reexamination and Concurrent Patent Litigation
    A tour of the parallel universe of patent reexamination and concurrent patent litigation in the district courts and the USITC. Hot button topics to be addressed include PTO stats and timelines, the SNQ requirement, request requirements, ex parte interviews, responses to Office Actions and the use of declaration evidence, KSR issues, petition practice, protective orders and the duty of disclosure, stays, use of reexam developments in trial, difference standards between reexams and the courts, and concurrency issues between tribunals.

    Moderator:
    Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox, P.L.L.C. - Washington, DC
    Panelist:
    Barton 'Bart' E. Showalter, Baker Botts L.L.P. - Dallas, TX

  • 11:15 am
    0.50 hr
    Examiner Interviews: Why, When and How
    Interviews with examiners can advance common understanding of an invention, resolve conflicts in interpreting claims and prior art, and efficiently move cases toward allowance, but few practitioners receive training or think strategically about effective interview structure and presentation. In this session, a litigator and a prosecutor address key considerations and skills in the art of planning and holding the interview, with mock dialogue to illustrate particular techniques and a discussion of visual presentation tools.

    Karl J. Kramer, Morrison & Foerster LLP - Palo Alto, CA
    Christopher J. Palermo, Hickman Palermo Truong & Becker LLP - San Jose, CA

  • 11:45 am
    0.83 hr
    Successful Multilateral International Patent Prosecution
    Successfully building a valuable international patent portfolio is a tremendous challenge in light of differences in local laws and patent practices. Panelists from Australia and the United Kingdom provide perspectives across a range of industries.

    Moderator:
    Edward Van Gieson, Beyer Law Group LLP - Cupertino, CA
    Panelists:
    Richard Howson, Kilburn & Strode LLP - London, United Kingdom
    Panelists:
    Anthony Lee, Madderns Patent & Trade Mark Attorneys - Adelaide, Australia

  • Thursday Afternoon, Dec. 9, 2010
    Presiding Officer:
    James Pampinella, Navigant Consulting, Inc. - San Francisco, CA
  • LUNCHEON PRESENTATION
    Sponsored by Covington & Burling LLP

  • 12:35 pm
    Pick up Lunch
    Included in conference registration fee.

  • 12:50 pm
    0.75 hr
    Patentable Subject Matter: Back in the Federal Circuit’s Court
    In Bilski, the Supreme Court reaffirmed the bar against patenting “abstract ideas” while rejecting the exclusivity of a machine-or-transformation test for process patentability. Where might the law go from here, and how might private parties react?

    Mark A. Lemley, Stanford Law School - Stanford, CA
    Robert R. Sachs, Fenwick & West LLP - San Francisco, CA

  • 1:35 pm
    Break

  • 1:50 pm
    0.75 hr
    Antitrust Issues: Patent Pooling, Aggregators, Misuse, SSOs, etc.
    Deception in the standard-setting context has been a major issue for regulators and private litigants on both sides of the Atlantic. This session looks at the most recent developments and what they mean for licensees, licensors and SSO administrators. In addition, the Federal Circuit’s August 2010 decision in Princo Corp. has brought the misuse doctrine back into the spotlight. This presentation also discusses the impact of Princo and likely future developments.

    Hanno F. Kaiser, Latham & Watkins LLP - San Francisco, CA

  • 2:35 pm
    0.50 hr
    Anticipating the Worst: Anti-Injunction Strategies, Design Arounds and Avoiding Contempt Proceedings
    This session addresses the impact of recent decisions concerning injunctions, design arounds and contempt proceedings, including i4i v. Microsoft and TiVo v. Echostar, especially from the defense perspective.  The need for early planning is explored, as well as strategies for injecting design arounds into the underlying action to avoid injunctions and contempt proceedings.

    Michael A. Ladra, Wilson, Sonsini, Goodrich & Rosati - Palo Alto, CA
    Michael J. Malecek, Kaye Scholer LLP - Menlo Park, CA

  • 3:05 pm
    0.50 hr ethics
    Spoliation and Its Impact on Patent Litigation and Document Hold Practices
    Spoliation can have a substantial impact on patentees seeking to enforce their patents as well as defendants. This session covers some interesting current legal issues in the context of patent infringement suits and spoliation, including a discussion of a number of different matters where spoliation may have impacted the outcome and the different ways courts have addressed spoliation issues.

    Eric R. Lamison, Kirkland & Ellis LLP - San Francisco, CA

  • 3:35 pm
    Break

  • 3:50 pm
    0.75 hr
    Patent Defense 2.0: New Models in Patent Disputes
    Patent litigation is expensive, risky and  time consuming. This panel considers emerging alternative and  counter strategies including reexamination, collective buying, crowd sourcing, use of aggregators and other innovative approaches.

    Moderator:
    Glenn E. Westreich, Haynes and Boone, LLP - San Jose, CA
    Panelists:
    Chip Lutton, Apple Inc. - Cupertino, CA
    Panelists:
    Joseph Siino, Ovidian Group, LLC - Berkeley, CA
    Panelists:
    Mallun Yen, RPX Corporation - San Francisco, CA

  • 4:35 pm
    0.92 hr
    0.50 hr ethics
    Judicial Panel
    Leading District Court judges discuss cutting-edge and patent litigation issues.

    Moderator:
    Vernon M. Winters, Greenberg Traurig LLP - San Francisco, CA
    Panelists:
    Hon. Andrew J. Guilford, U.S. District Court, Central District of California - Santa Ana, CA
    Panelists:
    Hon. Lucy H. Koh, U.S. District Court, Northern District of California - San Jose, CA

  • 5:30 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Friday Morning, Dec. 10, 2010
    Presiding Officer:
    Christopher J. Byrne, Tessera, Inc. - San Jose, CA
  • 8:00 am
    Conference Room Opens
    Includes continental breakfast.

  • 8:30 am
    0.50 hr ethics
    Inequitable Conduct
    The Federal Circuit's decision to revisit the inequitable conduct doctrine in Therasense has brought this area of the law to a crossroads. The presentation looks at the en banc briefing and argument that is scheduled to take place in November 2010, and considers whether the law is likely to change and, if so, how. In addition, the speaker discusses best practices under the current law to avoid charges of patent unenforceability and to defeat such charges at trial if necessary.

    Robert J. Goldman, Ropes & Gray, LLP - East Palo Alto, CA

  • 9:00 am
    0.50 hr
    Design Patents and Utility Patents: Where the Twain Meet and Even Overlap
    Statutory subject matter for design patents must be “ornamental,” while that for utility patents must be “useful.” For design patents, the ornamental boundary is defined by the doctrine of functionality, while for utility patents, usefulness is couched in terms of providing some identifiable benefit. This presentation analyzes those boundaries, and shows how they can actually overlap, i.e., how design patents can be used to protect functional features of products, and how utility patents can be used to protect ornamental features. 

    Perry Saidman, Saidman DesignLaw Group, LLC - Silver Spring, MD

  • 9:30 am
    0.75 hr
    Licensing Update
    A look at recent developments and trends related to patent licensing (in the areas of patent misuse, licenses vs. covenants not to sue, and exhaustion), as well as an examination of the issues and trends regarding patents and standards, and the intersection of patents and open source licenses and projects.

    Karen N. Ballack, Weil, Gotshal & Manges LLP - Redwood City, CA
    Gary Ross, NetApp, Inc. - Sunnyvale, CA

  • 10:15 am
    Break

  • 10:30 am
    0.50 hr
    Patent Marking: True AND False
    Proper patent marking can vastly increase your ability to recover damages, but overdoing it can lead to scary liability for false marking. This session covers the basics of proper marking, as well as the nuances of the quickly evolving false marking case law.

    Karen Boyd, Turner Boyd LLP - Mountain View, CA

  • 11:00 am
    0.75 hr
    ITC Section 337 Patent Enforcement Update
    This session examines the emergence of the ITC as a patent enforcement forum, developments in ITC case management, the role of non-practicing entities at the ITC, and the interaction between ITC and district court patent cases.

    Moderator:
    Peter S. Menell, University of California at Berkeley School of Law and Berkeley Center for Law & Technology - Berkeley, CA
    Panelists:
    Yar R. Chaikovsky, McDermott Will & Emery - Menlo Park, CA
    Panelists:
    Robert D. Fram, Covington & Burling LLP - San Francisco, CA

  • 11:45 am
    0.75 hr
    Preserving Issues for Appeal
    The presentation identifies issues of particular importance in appeals involving patent cases.  It describes the various methods of preserving those issues for appeal and identifies some of the risks of not being careful about preserving errors by the district courts.

    Daralyn J. Durie, Durie Tangri LLP - San Francisco, CA
    Carter G. Phillips, Sidley Austin LLP - Washington, DC

  • Friday Afternoon, Dec. 10, 2010
    Presiding Officer:
    Robert Barr, Berkeley Center for Law & Technology - Berkeley, CA
  • LUNCHEON PRESENTATION
    Sponsored by Chadbourne & Parke LLP

  • 12:30 pm
    Pick up Lunch
    Included in conference registration fee.

  • 12:45 pm
    0.75 hr
    Administrative Innovation at the PTO
    Although patent reform is often envisioned in legislative terms, the PTO enjoys some ability to promote administrative reform that may reduce backlog and improve patent quality. This presentation evaluates enacted and proposed reforms in light of available empirical data.

    Arti K. Rai, Duke University School of Law - Durham, NC

  • 1:30 pm
    Break

  • 1:45 pm
    0.75 hr
    Alternative Fee Arrangements and Cost Control: Bidding for Cases
    The advent of the patent troll, changes in patent law and an increasingly competitive marketplace have collectively impacted, and in many ways fundamentally changed, the business of how patent cases are budgeted and handled.  The panel explores alternative fee arrangements, case budgets and other cost control measures both from an in-house and outside counsel perspective.  The panel also looks at how tighter corporate budgets are impacting the bidding and selection process for litigation counsel.

    Moderator:
    Theodore T. "Ted" Herhold, Townsend and Townsend and Crew LLP - Palo Alto, CA
    Panelists:
    Wab Kadaba, Kilpatrick Stockton LLP - Atlanta, GA
    Panelists:
    Emily Ward, eBay, Inc. - San Jose, CA
    Panelists:
    Karen K. Williams, Sybase, Inc. - Dublin, CA

  • 2:30 pm
    0.50 hr
    Protective Orders in Patent Cases: Who Can Keep a Secret?
    Strategies for keeping confidential information from adversaries, including patent prosecution bars after In re Deutsche Bank (2010), cases interpreting FRE 502 and clawback agreements, and a review of local rules and model protective orders from several district courts.

    Michelle Greer Galloway, Cooley LLP - Palo Alto, CA
    Mark E. Michels, Cisco Systems, Inc. - San Jose, CA

  • 3:00 pm
    0.75 hr
    Damages
    The role of the entire market value rule in the calculation of patent damages has been the subject of much discussion in the context of both litigated cases and patent law reform efforts.  Parties often disagree about how much of the value of an accused product should be subject to a damages calculation, where the invention of the patent at issue arguably does not implicate, or create the demand for, the entire product.  This panel explores the current state of the law under the Lucent and Cornell decisions and offers practical insights on how best to present and defend against damages claims in light of the applicable law.

    Moderator:
    Stanley Young, Covington & Burling LLP - Redwood City, CA
    Panelists:
    Colleen Chien, Santa Clara University - Santa Clara, CA
    Panelists:
    Jeffrey Dubin, Anderson School of Management, UCLA - Los Angeles, CA
    Panelists:
    Howard G. Pollack, Fish & Richardson P.C. - Redwood City, CA

  • 3:45 pm
    Adjourn

Download Schedule

Conference Faculty

Karen N. Ballack

Weil, Gotshal & Manges LLP
Redwood City, CA

Karen Boyd

Turner Boyd LLP
Mountain View, CA

Yar R. Chaikovsky

McDermott Will & Emery
Menlo Park, CA

Colleen Chien

Santa Clara University
Santa Clara, CA

Jeffrey Dubin

Anderson School of Management, UCLA
Los Angeles, CA

Daralyn J. Durie

Durie Tangri LLP
San Francisco, CA

Michael W. Farn

Fenwick & West LLP
Mountain View, CA

Robert D. Fram

Covington & Burling LLP
San Francisco, CA

Michelle Greer Galloway

Cooley LLP
Palo Alto, CA

Robert J. Goldman

Ropes & Gray, LLP
East Palo Alto, CA

Hon. Andrew J. Guilford

U.S. District Court, Central District of California
Santa Ana, CA

Theodore T. "Ted" Herhold

Townsend and Townsend and Crew LLP
Palo Alto, CA

Richard Howson

Kilburn & Strode LLP
London, United Kingdom

Wab Kadaba

Kilpatrick Stockton LLP
Atlanta, GA

Hanno F. Kaiser

Latham & Watkins LLP
San Francisco, CA

Hon. Lucy H. Koh

U.S. District Court, Northern District of California
San Jose, CA

Karl J. Kramer

Morrison & Foerster LLP
Palo Alto, CA

Michael A. Ladra

Wilson, Sonsini, Goodrich & Rosati
Palo Alto, CA

Eric R. Lamison

Kirkland & Ellis LLP
San Francisco, CA

Anthony Lee

Madderns Patent & Trade Mark Attorneys
Adelaide, Australia

Mark A. Lemley

Stanford Law School
Stanford, CA

Chip Lutton

Apple Inc.
Cupertino, CA

Michael J. Malecek

Kaye Scholer LLP
Menlo Park, CA

Peter S. Menell

University of California at Berkeley School of Law and Berkeley Center for Law & Technology
Berkeley, CA

Mark E. Michels

Cisco Systems, Inc.
San Jose, CA

Christopher J. Palermo

Hickman Palermo Truong & Becker LLP
San Jose, CA

Carter G. Phillips

Sidley Austin LLP
Washington, DC

Howard G. Pollack

Fish & Richardson P.C.
Redwood City, CA

Erik R. Puknys

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Palo Alto, CA

Arti K. Rai

Duke University School of Law
Durham, NC

Gary Ross

NetApp, Inc.
Sunnyvale, CA

Robert R. Sachs

Fenwick & West LLP
San Francisco, CA

Perry Saidman

Saidman DesignLaw Group, LLC
Silver Spring, MD

Michael J. Schallop

Van Pelt, Yi & James LLP
Cupertino, CA

Barton 'Bart' E. Showalter

Baker Botts L.L.P.
Dallas, TX

Joseph Siino

Ovidian Group, LLC
Berkeley, CA

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox, P.L.L.C.
Washington, DC

Duane R. Valz

Chadbourne & Parke LLP
Los Angeles, CA

Edward Van Gieson

Beyer Law Group LLP
Cupertino, CA

Emily Ward

eBay, Inc.
San Jose, CA

Glenn E. Westreich

Haynes and Boone, LLP
San Jose, CA

Karen K. Williams

Sybase, Inc.
Dublin, CA

Vernon M. Winters

Greenberg Traurig LLP
San Francisco, CA

Mallun Yen

RPX Corporation
San Francisco, CA

Stanley Young

Covington & Burling LLP
Redwood City, CA

Planning Committee

Robert Barr—Co-Chair

Berkeley Center for Law & Technology
Berkeley, CA

Mark A. Lemley—Co-Chair

Stanford Law School
Stanford, CA

Bradley Baugh

North Weber & Baugh LLP
Palo Alto, CA

Karen Boyd

Turner Boyd LLP
Mountain View, CA

Christopher J. Byrne

Tessera, Inc.
San Jose, CA

Yar R. Chaikovsky

McDermott Will & Emery
Menlo Park, CA

Tim Crean

SAP AG
Palo Alto, CA

Sean P. DeBruine

Alston + Bird LLP
Menlo Park, CA

Michael W. Farn

Fenwick & West LLP
Mountain View, CA

John M. Farrell

Fish & Richardson P.C.
Redwood City, CA

Robert J. Goldman

Ropes & Gray, LLP
East Palo Alto, CA

David W. Hansen

Skadden, Arps, Slate, Meagher & Flom LLP
Palo Alto, CA

Jeanine Hayes

Yahoo! Inc.
Sunnyvale, CA

Theodore T. "Ted" Herhold

Townsend and Townsend and Crew LLP
Palo Alto, CA

Julie M. Holloway

Wilson Sonsini Goodrich & Rosati
Palo Alto, CA

Stephen C. Holmes

Dewey & LeBoeuf
East Palo Alto, CA

Karl J. Kramer

Morrison & Foerster LLP
Palo Alto, CA

Leo L. Lam

Keker & Van Nest LLP
San Francisco, CA

Eric R. Lamison

Kirkland & Ellis LLP
San Francisco, CA

Michelle Lee

Google, Inc.
Mountain View, CA

Gary H. Loeb

Genentech, Inc.
San Francisco, CA

Chip Lutton

Apple Inc.
Cupertino, CA

Christopher J. Palermo

Hickman Palermo Truong & Becker LLP
San Jose, CA

Jeannine Yoo Sano

White & Case LLP
Palo Alto, CA

John F. Stark

Navigant Consulting, Inc.
San Francisco, CA

M. Patricia Thayer

Sidley Austin LLP
San Francisco, CA

Duane R. Valz

Chadbourne & Parke LLP
Los Angeles, CA

Edward Van Gieson

Beyer Law Group LLP
Cupertino, CA

Glenn E. Westreich

Haynes and Boone, LLP
San Jose, CA

Vernon M. Winters

Greenberg Traurig LLP
San Francisco, CA

Mallun Yen

RPX Corporation
San Francisco, CA

Stanley Young

Covington & Burling LLP
Redwood City, CA

Credit Info

MCLE Credit
A Texas MCLE Reporting Form will be included in your course materials. Please complete and return to the registration desk and UT Law CLE will report credit on your behalf to the State Bar of Texas, or you can self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Attendance will be provided at the conference to keep for your records.  
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Note on Self-Reporting Your Credits in Another State
If you wish to satisfy MCLE or other professional education requirements in another state for a program offered by the University of Texas School of Law, please check with the state bar or other licensing authority in that state before taking the program to ensure it will qualify for self-reporting your credits.
Other Credit
The University of Texas School of Law (Provider #250) live conferences are presumptively approved by The Texas State Board of Public Accountancy for Texas Accounting CPE credit based on a 50-minute credit hour. Approved for general CPE credit only.

At the conference, you will need to sign in on the Accounting CPE Record of Attendance form at the registration desk. You will receive a Texas Accounting Certificate of Completion at the conference for your records. Self-report your CPE credit directly to TSBPA. UT Law CLE will maintain Attendance Records for four years.  

Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.

Key Dates

Palo Alto, CA – Dec 9-10, 2010 – Four Seasons Hotel
Conference Concluded
Buy
Palo Alto, CA
Last day for Standard Registration early registration: Dec 3, 2010

Add $50 for registrations received after this time

Last day for cancellation (full refund): Dec 3, 2010

$50 processing fee applied after this date

Last day for cancellation: Dec 6, 2010

Venue

speaker

Four Seasons Hotel

2050 University Avenue
Palo Alto, CA
(650) 566-1200 (reservations)

Accommodations

$0.00 good through Nov 8, 2010

Parking Information

Complimentary Self-Parking, Valet $22 per day

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