®

Patent Litigation 2014

Chicago, October 6-7, 2014New York City, November 10-11, 2014Cleveland, Columbus and New Brunswick Groupcast Locations, November 10-11, 2014Live Webcast, November 10-11, 2014 — www.pli.edu

• NEW! Recent changes in patent law, including an overview of key Supreme Court, Federal Circuit, and District Courtdecisions, and a discussion of recent proposed legislation

• NEW! Views from the Bench: District Court Judges share theirviews on patent litigation, including the impact Patent Ruleshave had on the desired effect and practical tips for the moreefficient handling and disposition of patent cases

• NEW! Considerations for when alternative dispute resolutionproceedings are preferred to, or used in conjunction with,District Court patent litigation

• ENHANCED! Current trends in patent damages in the post-Uniloc environment, and discussion on patent exhaustionand license agreements

• NEW! Current strategies in defending against willfulness andthe role of opinions

Satisfy Your CLE and CPD Requirements!

EarnOne Hour ofEthics Credit

Register Today at www.pli.edu/AHZ4 or Call (800) 260-4PLI

Why You Should AttendRapid changes in patent law make it necessary that, whether you are the plaintiff ’s or defendant’s counsel, you areup-to-date on the current state of the law and can quickly develop successful litigation strategies and tactics. This program is taught by a faculty of both outside and in-house lawyers who have earned national reputations inpatent litigation by trying and managing a wide variety of bench and jury patent trials and U.S. Patent Office post-granttrial proceedings, and provides comprehensive coverage of every phase of these patent matters. This year’s programalso features views from U.S. District Court Judges, who will provide their insights on the state of patent litigation andpractical tips for litigants. Through lecture and demonstration, you will be able to hone your patent litigation skills injust two days.

What You Will Learn• NEW! Recent changes in patent law, including an overview of key Supreme Court, Federal Circuit, and

District Court decisions, and a discussion of recent proposed legislation

• NEW! Views from the Bench: District Court Judges share their views on patent litigation, including the impact that Patent Rules have had on the desired effect, as well as practical tips for the more efficient handling anddisposition of patent cases

• NEW! Considerations for when alternative dispute resolution proceedings are preferred to, or used in conjunctionwith, district court patent litigation

• Strategy and tactics in reexamination and post-grant review proceedings

• NEW! Managing multi-party litigation, including efficient strategies for working in joint defense groups and handlingrelated indemnification matters

• ENHANCED! Current trends in patent damages in the post-Uniloc environment, and discussion on patent exhaustionand license agreements

• NEW! Current strategies in defending against willfulness and the role of opinions

Special Features:• Earn ethics credit

• Demonstration: direct and cross of an expert

Who Should AttendPatent litigators and lawyers in patent firms who advise clients in disputes that may lead to litigation, examination orpost-grant proceedings at the Patent Office; general business litigators whose practice includes patent trials; patentprosecutors whose actions in preparing and prosecuting patents are critical in providing support for the proper claimconstruction and in assessing infringement and invalidity issues; and corporate counsel who will have the responsibilityfor supervising patent litigation, interpreting its progress for management, and pursuing opportunities for settlement,as well as those corporate counsel with responsibility for a company’s overall patent strategy.

Corporate Political Activities 2014:Complying with Campaign Finance,Lobbying and Ethics LawPatent Litigation 2014

Register Today at www.pli.edu/AHZ4 or Call (800) 260-4PLI

LIVE WEBCASTSame Great Program – From Your LocationThe New York City session of this program is available live via the web at www.pli.edu:

Print the Course Handbook, submit questions electronically and get “real-time” education right from your PC!

If you have any questions, please call PLI’s Customer Service Department at (800) 260-4PLI.

Jeanne M. GillsFoley & Lardner LLPChicago

Chair:

Program Attorney: John M. Mola

Michael J. AbernathyK&L Gates LLPChicago

Hugh A. AbramsSidley Austin LLPChicago

Kenneth R. AdamoKirkland & Ellis LLPChicago

Steven BorsandEVP Intellectual PropertyTrading Technologies

International, Inc.Chicago

Samuel A. BrownHusch Blackwell LLPChicago

Gil Calvillo, Ph.D. Owner & PresidentCalvillo & AssociatesLos Angeles

Kara E. F. CenarBryan Cave LLPChicago

Daniel R. CherryHusch Blackwell LLPChicago

Hon. David H. Coar (Ret.)Former District Judge, United

States District Court,Northern District of Illinois

Mediator/ArbitratorJAMSChicago

Tiffany P. CunninghamPerkins Coie LLPChicago

Margaret M. DuncanMcDermott Will & Emery LLPChicago

James R. FergusonMayer Brown LLPChicago

Donald A. GorowskyPresidentFinancial Advisors LLCMinneapolis

David J.F. GrossFaegre Baker Daniels LLPMinneapolis

Clinton H. Hallman, Jr.Chief Counsel, PatentsKraft Foods, Inc.Northfield, Illinois

Julianne M. HartzellMarshall, Gerstein & Borun LLPChicago

Brent A. HawkinsMcDermott Will & Emery LLPChicago

Roy E. HoferLaw Offices of Roy E. HoferBurr Ridge, Illinois

Hon. James F. HoldermanChief JudgeUnited States District Court,

Northern District of IllinoisChicago

Darrick HookerKrieg DeVaultChicago

Keith R. Hummel Cravath, Swaine & Moore LLPNew York City

Christine Abuel PompaFitch, Even, Tabin &

Flannery LLPChicago

George E. QuillinFoley & Lardner LLPWashington, D.C.

Ferlillia V. RobersonKirkland & Ellis LLPChicago

Mindy V. SooterFaegre Baker Daniels LLPDenver

Michelle M. UmbergerPerkins Coie LLPMadison, Wisconsin

FACULTYChicago

Christopher K. HuBlank Rome LLPNew York City

Chair:

George E. BadenochKenyon & Kenyon LLPNew York City

Elaine Herrmann BlaisGoodwin Procter LLPBoston

Carolyn H. BlankenshipSenior Vice President,

Associate General Counsel,Intellectual Property

Thomson ReutersNew York City

Kenneth L. Bressler Blank Rome LLPNew York City

David BrightmanVP, Associate General Counsel

- IP LitigationYahoo! Inc.Sunnyvale, California

Gil Calvillo, Ph.D. Owner & PresidentCalvillo & AssociatesLos Angeles

Arlene L. ChowHogan Lovells US LLPNew York City

Heather A. FaltinSenior Patent CounselComcast Cable

Communications LLCPhiladelphia

Christopher HorganIP Licensing & Litigation

CounselConcert TechnologySan Jose

Keith R. Hummel Cravath, Swaine & Moore LLPNew York City

Constance S. HuttnerBudd Larner P.C.Short Hills, New Jersey

Hon. Edward A. Infante(Ret.) Former Chief Magistrate

Judge, U.S. District Court,Northern District ofCalifornia

JAMSSan Francisco

Gene W. LeeRopes & Gray LLPNew York City

Eric J. LobenfeldHogan Lovells US LLPNew York City

Hon. Colleen McMahonDistrict JudgeUnited States District Court,

Southern District of New York

New York City

Nicholas K. MitrokostasGoodwin Procter LLPBoston

Eugene R. Quinn, Jr.President and Founder,

IPWatchdog.comIP Watchdog, Inc.Leesburg, Virginia

Garreth SarosiFormer Deputy

General Counsel Metropcs/T-MobileRichardson, Texas

Vincent A. Thomas Senior Managing Director,

Co-Leader, IntellectualProperty

FTI Consulting, Inc.Chicago

Hon. Mary Pat ThyngeChief Magistrate JudgeUnited States District Court,

District of DelawareWilmington, Delaware

Hon. William G. YoungDistrict JudgeUnited States District Court,

District of MassachusettsBoston

Jeffrey T. ZachmannCounsel - Corporate LitigationIBM CorporationArmonk, New York

New York City, Groupcast Locations and Live Webcast

Morning Session: 9:00 a.m. – 12:30 p.m.

9:00Program OverviewCHI: Jeanne M. GillsNYC, CLE, COL, NB & WEB: Christopher K. Hu

9:15Recent Developments and Changes in PatentLaw and Their Effects on Patent LitigationThis session is a broad review of the important decisions of theSupreme Court, Federal Circuit and District Courts over thepast year, as well as of still-emerging and developing effects ofthe America Invents Act (AIA) and proposed patent legislation(e.g., the Innovation Act (H.R. 3309)). Key trends anddeveloping patent law doctrines will also be covered.CHI: Margaret M. Duncan, Brent A. HawkinsNYC, CLE, COL, NB & WEB: Elaine Herrmann Blais, Nicholas K. Mitrokostas

10:15Willful Infringement, Current DefensiveStrategies and the Role of Opinions This session will discuss willful infringement and the currentstrategies companies are taking to defend against it. It willdiscuss how courts are applying the Seagate Technology casetoday, and the rise of motions to dismiss willfulness at thepleading stage. Strategies for protection without opinions, andthe question of whether willfulness based solely on post-filingconduct is becoming extinct, will also be discussed. The role ofopinions in defending against willfulness and their possibleimportance in inducement cases will also be explained. CHI: Clinton H. Hallman, Jr., Christine Abuel PompaNYC, CLE, COL, NB & WEB: David Brightman, Heather A. Faltin

11:15 Networking Break

11:30The Patentability of Business Methods: The Continuing Search for a Clear RuleThe long-awaited decision of the U. S. Supreme Court in Bilskiin 2010 was expected to clarify the law with respect to thepatentability of business methods. However, the SupremeCourt’s “flexible” test of patentability, which includes, but is notlimited to, the pre-existing “machine or transformation test,”does not provide a clear resolution of the issue. SubsequentFederal Circuit decisions, including CyberSource, Ultramercialand Dealertrack, make clear that the courts are still searchingfor the boundary between patentable and unpatentable subjectmatter. This session will explore recent developments in thelaw governing the patentabilty of business methods.CHI: Steven Borsand, Tiffany P. Cunningham, Michelle M. UmbergerNYC, CLE, COL, NB & WEB: Carolyn H. Blankenship

12:30 Lunch Break

Afternoon Session: 1:45 p.m. – 5:00 p.m.

1:45Parallel Patent Reexaminations and PTAB ProceedingsThe filing of reexaminations continues to be a strategy forparties against whom a patent of questionable validity has beenasserted. A reexamination proceeding might be initiated inanticipation of litigation or filed soon after litigation has begun. A parallel reexamination proceeding is usually a basis for seekinga stay of the more costly district court proceeding and/or usedto bring the patentee to the bargaining table. Recent statisticsreflect a sharp rise in the filing of inter partes review (IPR) andcovered business method review (CBM) proceedings followingAIA. This session will cover best practices on these newproceedings including: timing of when to file; how to put forth awinning petition; and whether a Patent Owner should file aPreliminary Response. In addition, this session will address theeffects of any such reexamination or post-grant proceeding onlitigation, including stays, as well as the potential effects oncollateral estoppel, claim construction positions, willfulnesscharges, inequitable conduct claims, and on damages andintervening rights (e.g., if claims are amended). CHI: Hugh A. Abrams, George E. QuillinNYC, CLE, COL, NB & WEB: George E. Badenoch

2:45Alternative Dispute ResolutionThis session will analyze the forms of alternative disputeresolution typically seen in patent cases, including mediationand court-supervised settlement discussions. The timing ofalternative dispute resolution procedures, effective mediationstrategies and mediator-selection criteria will be discussed.This session will also include an experienced mediator as aspeaker who will examine the factors that make for successfuland unsuccessful mediations. CHI: Hon. David H. Coar (Ret.), Roy E. Hofer, Hon. James F. HoldermanNYC, CLE, COL, NB & WEB: Christopher Horgan, Hon. Edward A. Infante (Ret.), Garreth Sarosi

3:45 Networking Break

4:00Joint Defense and Indemnification – [Getting Along With Others]Parallel patent infringement actions are often brought at thesame time against multiple defendants. Joint defenseagreements are often entered into for efficiency andconsistency in defending the actions. However, there arenegatives as well as positives and numerous possible pitfalls inentering into joint defense arrangements. This session willdiscuss the legal and practical considerations of workingefficiently with co-defendants and their counsel, includingnegotiating joint defense agreements; managing costs andresponsibilities among numerous parties where positions mayconflict; strategies for when to take the lead and when to ridethe wave; and managing related issues of indemnification/indemnitee interactions.CHI: Samuel A. Brown, Kara E. F. Cenar, Daniel R. CherryNYC, CLE, COL, NB & WEB: Jeffrey T. Zachmann

5:00 Adjourn

PROGRAM SCHEDULEDay One: 9:00 a.m. – 5:00 p.m.

Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival.

Day Two: 9:00 a.m. – 5:00 p.m.

Morning Session: 9:00 a.m. – 12:15 p.m.

9:00Infringement Based on the Acts of Multiple PartiesIn a world that is increasingly connected by networks withservices provided by multiple entities, and in which complexproducts are made up of components from numerous sources,issues of infringement based on the acts of multiple parties arisefar more frequently. This session will cover the constantly evolvinglaw relating to infringement where not all steps are performed byone entity. The relationship between the entities necessary for afinding of infringement will also be covered, including the effect ofthe Akamai and McKesson Federal Circuit decisions. This sessionwill also discuss recent cases on the standards for determiningother forms of multi-party infringement, including inducement ofinfringement and contributory infringement.CHI: Michael J. AbernathyNYC, CLE, COL, NB & WEB: Gene W. Lee

10:00Patent Damages and ExhaustionRecent Federal Circuit and District Court decisions reflect a trendtowards damages awards based less on application of rules thanon evidence of actual harm sustained. This session will coverrecent cases on damages in the aftermath of the Federal Circuit’sUniloc decision, which rejected 25% of an infringer’s anticipatedprofits as a rule of thumb for a reasonable royalty, a rule that hadlong been a reference point for plaintiffs’ experts. The effect of thepatent exhaustion will also be discussed. Other cases on both lostprofits and reasonable royalty damages will be analyzed. The issueof a different royalty rate for ongoing infringing sales where noinjunction is entered will also be addressed.CHI: James R. FergusonNYC, CLE, COL, NB & WEB: Kenneth L. Bressler, Vincent A. Thomas

11:00 Networking Break

11:15Dealing With Experts, Including Rule 26Employee ExpertsExpert witnesses play a critical role in patent litigation withrespect to both liability and damages issues. Often a company’sbest resource on the technology at issue or state of themarketplace is one of its employees. The employee (typically a“non-retained” or “inside” expert) can provide valuableinformation on the state of the prior art or state of the marketand competition, advise on the similarities or differencesbetween the patent claims and the accused products/methods,help keep the company focused on the business issues, and helpidentify outside experts. Any such employee that may be used toprovide expert opinions (in additional to factual testimony) mustlikewise be disclosed as an expert, including disclosure of thesubject matter and underlying opinions and facts to be testifiedon. This session will explore the selection and use of testifyingand non-testifying experts, the use of experts at Markmanhearings, the development of expert opinions, the preparation ofexpert reports, and the discoverability of certain communicationswith the expert. This segment will also consider the use ofevidentiary motions, including Daubert motions and other motionsin limine to exclude or limit expert testimony at trial. A live expertdemonstration will be a component of this session.CHI: Donald A. Gorowsky, David J.F. Gross, Mindy V. SooterNYC, CLE, COL, NB & WEB: Arlene L. Chow, Eric J. Lobenfeld

12:15 Lunch Break

Afternoon Session: 1:45 p.m. – 5:00 p.m.

1:45The Art and Science of PersuasionIn theory, the outcome of a patent litigation depends on thefacts and the applicable law, factors over which litigants havelittle if any control. In the real world, winning a patent casedepends on a variety of factors over which the parties havesome control. Where the litigation is brought and tried, how aparty’s message is conveyed and by whom the message isconveyed all impact the final outcome. Accordingly, how a caseis presented at trial must include consideration of the venue,the makeup of the jury, the judge, the attributes of the parties’witnesses, attorneys and representatives, and non-substantivefacts that may color the jury’s perception of the case. This session will look at the many factors that must beconsidered and addressed in presenting a persuasive case attrial, including jury psychology, jury research, effective witnessand attorney selection, preparation and presentation.CHI, NYC, CLE, COL, NB & WEB: Gil Calvillo, Keith R. Hummel

2:45 Networking Break

3:00 Patent Litigation – Views From The BenchPatent litigation has long been recognized as a form of federalcivil litigation that is typically more complex and expensive thanthe ordinary case. Because of this, much has been written aboutpatent litigation, some of it complimentary and some not soflattering. On one hand, patent cases have been described asamong the best-litigated of all federal cases. On the other hand,patent cases have been characterized as over-litigated,excessively contentious and tedious affairs during which far toomany issues are raised at both the trial and appellate levels. This session will feature current Federal District Court Judges,who will offer their views of patent litigation, including what’sgood, what’s bad and what’s unnecessary. The Judges willdiscuss such topics as Local Patent Rules and Practice, managingmulti-party litigation including scheduling issues, use of expertsin patent cases, mediation and settlement of patent cases, andgeneral practice tips for patent counsel.CHI: Kenneth R. Adamo and Ferlillia V. Roberson,Moderators; Hon. James F. HoldermanNYC, CLE, COL, NB & WEB: Constance S. Huttner, Moderator;Hon. Colleen McMahon, Hon. Mary Pat Thynge, Hon. William G. Young

4:00Ethical Issues in Patent LitigationIn-house and outside counsel face ethical issues in patentlitigation at every step of the process, from pre-suit Rule 11compliance, throughout the discovery process, and continuingthrough to trial and appeal. The sometimes fuzzy boundarybetween ethical transgression and zealous advocacy will beexplained. Ethical issues relating to conflicts will be covered.USPTO ethical rules that apply to practitioners licensed by the USPTO even when practicing in another forum will also be addressed. CHI: Julianne M. Hartzell, Darrick HookerNYC, CLE, COL, NB & WEB: Eugene R. Quinn, Jr.

5:00 Adjourn

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