54th Annual Conference on Intellectual Property Law

Overview

Conference Co-Chairs

Schedule and Faculty

Monday, November 14

7:15 - 8:45 am

Networking Breakfast Presented by the Women in IP Committee – State Bar of Texas

Having the Hard Conversations: The ethical and practical considerations for advising clients on prosecution, litigation, post-grant, and transactional matters in light of new and changing laws.

**Note: This breakfast has its own CLE course number (Course ID 901359347) for 1 hour of ethics. Please indicate on the registration form if you would like to attend.  CLE credit will only be provided in Texas for this breakfast session.

Moderator:

• Hope Shimabuku, U.S. Patent and Trademark Office, Dallas, Texas

Panelists:

• How to Agree on the Agreement: Ethical, practical, and legal considerations for advising clients on drafting patent licenses when some or all claims of the subject patent(s) licensed are found to be invalid.
  This session will additionally address points to consider when advising clients on the validity of licenses and strategies for patent licensing in light of the Brexit vote.
• Lisa Jorgensen, AIPLA, Coppell, Texas
• Virginia Driver, Page White, London, United Kingdom
• Two Roads Diverged: The Ethics of Counseling Clients While Navigating IPRs Through The Lens of Litigation.
  This portion of the panel will address the ethics and strategy behind advising clients on filing, joining, and responding to IPRs, especially in light of any pending or imminent litigation associated with the subject patents. This session will also discuss issues relevant to multi-defendant litigations.
• Mieke K. Malmberg, Skiermont Derby LLP, Los Angeles, California
• Mayo—Alice: Why Has My Patent Attorney Been Talking About Sandwiches and a Children’s Book, and What is She Talking About Now?
  Ethical considerations while advising clients on new filings, pending applications, and existing portfolios in light of the change in the application of 101
• Bea Koempel-Thomas, Lee & Hayes, PLLC, Spokane, Washington

8:45 am

Welcome

The IP Year in Review and Judicial Panel

Module Chair: Wei Wei Jeang, Grable Martin Fulton PLLC, Dallas, Texas

9:00 am

Patent Year in Review

• Gale “Pete” Peterson, Law Offices of Gale R. Peterson, San Antonio, Texas

9:45 am

Copyright Year in Review

• Kevin J. Meek, Baker Botts L.L.P., Austin, Texas

10:15 am

Break

10:30 am

Judicial Panel

Moderator: Theodore Stevenson, III, McKool Smith, Dallas, Texas

Panelists:

• The Hon. Amos L. Mazzant, III, U.S. District Court Eastern District of Texas, Sherman, TX
• The Hon. Barbara M.G. Lynn, U.S. District Court Northern District of Texas, Dallas, TX

11:45 am

Trademark Year in Review

• Shannon Bates, Griffith Bates Champion & Harper LLP, Dallas, Texas

12:15 pm

Break

12:30 pm

The First Patent Litigation Explosion

In this all-too-timely talk, Professor Beauchamp outlines the forgotten history of the first patent litigation explosion, starting by describing the rise of large-scale patent enforcement in the middle of the nineteenth century, and then exploring the leading causes of the litigation boom. Finally, he examines the profound consequences of this phenomenon for the law and politics of the patent system, and suggests that the history of patent law during this formative era offers fresh perspectives on the patent reform debates of today.

• Professor Christopher Beauchamp, Brooklyn Law School, Brooklyn, New York

1:30 pm

Break

Section 101 / Ethics

Module Chair: Max Ciccarelli, Thompson & Knight LLP, Dallas, Texas

1:45 pm

Alice at 2 ½: Evolving Case Law and Perspectives on USPTO Guidelines

• Ryan P. McCarthy, Fish & Richardson, Austin, Texas

2:30 pm

101 - Revised PTO Sec. 101 guidelines

• Ann M. LaFeir, Intellectual Property Counsel at USAA, San Antonio, Texas

3:15 pm

Break

3:30 pm

Ethics and 101

More than three years after the Federal Circuit’s en banc opinion in CLS Bank Int’l v. Alice Corp., the question of “what is patentable” remains somewhat in flux. With such indefinite boundaries, we will discuss ethical considerations in asserting and challenging patents in light of current 35 U.S.C. §101 jurisprudence.

• Vishal H. Patel, Thompson & Knight LLP, Dallas, Texas

4:15 pm

Ethics and Inequitable Conduct

Even after Therasense, the inequitable conduct plague won’t go away.

• Thomas L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner,, Washington, D.C.

5:00 pm

Recess

5:00 pm

Reception for all participants and faculty

Tuesday, November 15

7:45 am

Breakfast presentation moderated by the DBA IP Section’s New Lawyers Committee

Coordinator: Austin Champion, Griffith Bates Champion & Harper LLP, Dallas, Texas

Roundtable discussions between litigators and prosecutors concerning PTAB proceedings.

Panel:

• Jeff Becker, Baker Botts L.L.P., Dallas, Texas
• Krista Chan, Carstens & Cahoon, LLP, Dallas, Texas
• Adam Davenport, Davenport IP Law, PLLC, Dallas, Texas
• Timothy Dyll, AT&T Services, Inc., Dallas, Texas
• Michael Henry, Henry Patent Law Firm PLLC, Dallas, Texas
• Brian Kearns, Ericsson Inc., Dallas, Texas
• Mackenzie Martin, Baker & McKenzie, Dallas, Texas
• Scott Jarratt, Haynes and Boone, LLP, Dallas, Texas
• Dan Smith, Fish & Richardson P.C., Dallas, Texas
• Mimi Yu, Jones Day, Dallas, Texas

Patent Prosecution and Patent Litigation

Module Chairs:
Patent Prosecution: Gerald T. Welch, Principal, Harness, Dickey & Pierce, PLC, Frisco, Texas
Patent Litigation: Jason Wietjes, Polsinelli PC, Dallas, Texas

Patent Prosecution

9:00 am

The USPTO Enhanced Patent Quality Initiative (EPQI) Program - Three Perspectives

Panel discussion regarding the meaning of the “Q” in EPQI, how that differs from the meaning to other stakeholders, and how this might prompt changes in their prosecution strategy.

• USPTO: Dan Ryman, Office of Patent Quality
• Intellectual Property Counsel: Ann M. LaFeir, Intellectual Property Counsel at USAA, San Antonio, Texas
• Practitioner: Steven H. Slater, Slater & Matsil, Dallas, Texas

10:00 am

Break

10:15 am

Functional Fun With Claims While Avoiding Indefiniteness and Alice plus Other Topics

• Michael R. Nye, Principal, Harness Dickey & Pierce Troy, Michigan
• Bill Mason, CeloNova BioSciences, Inc., San Antonio, Texas
• Kevin Cronin, Acelity, San Antonio, Texas

11:15 am

Amended PTAB Rules: 5 Things You Should Know About the New Rules

What are the new rules and what was omitted from the new rules; how they will affect post grant proceedings going forward.

• Matthew L. Cutler, Harness Dickey & Pierce Saint Louis, Missouri
• Chris Dunstan, Ericsson, Plano, Texas
• Nadeem Bridi, Acelity, San Antonio, Texas
• Nainesh Shah, ST Microelectronics, Coppell, Texas

Patent Litigation

9:00 am

Supreme Court rulings in 2016

• Christa Brown-Sanford, Baker Botts L.L.P., Dallas, Texas

9:30 am

“I'll see you in court!” – Patent Infringement Remedies from Injunctions to Attorney Fees

The infringement remedies available to patent owners continue to evolve under Supreme Court and Federal Circuit precedent. This session will examine the current landscape, including injunctions, monetary damages, increased damages for willful infringement and attorney fees.

• Jason A. Wietjes, Polsinelli PC, Dallas, Texas

10:00 am

Break

10:15 am

Changes to scope of discovery; new pleading rules post-Form 18 withdrawal

• Michael Smith, Siebman Burg, Phillips & Smith, LLP, Marshall, Texas
• Jay E. Heidrick, Polsinelli PC, Kansas City, Missouri

11:15 pm

Are Patent Agents Privileged: In re Queens University (Fed Cir. 2016) v. In re Silver (2016)

Moderator:

• Prof. W. Keith Robinson, SMU Dedman School of Law, Dallas, TX

• Timothy Shelby, Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C., Houston, Texas
• Brett C. Govett, Norton Rose Fulbright US LLP, Dallas, Texas

12:15 pm

Break

12:30 pm

Lunch – In-House Counsel Panel General Discussion (what criteria they use to hire/fire lawyers, billing issues, ethical questions)

Moderator: Wei Wei Jeang, Grable Martin Fulton PLLC, Dallas, Texas

• Suzy Fulton, Appspace, Inc. Dallas, Texas
• Jody Bishop, Genband, Frisco, Texas
• Tim Dyll, AT&T, Dallas, Texas

1:30 pm

Break

Trade Secrets / Cyber Security / Design / Frand

Module Chair: Russ Emerson, Haynes and Boone, LLP, Dallas, Texas

1:45 pm

What’s new in Trade Secrets?

Learn about the new federal Defend Trade Secrets Act, how it compares to the Texas Uniform Trade Secrets Act, and recent developments in state and federal trade secret law.

• Austin Champion, Griffith Bates Champion & Harper LLP, Dallas, Texas

2:45 pm

Cyber Security

• David Kinsinger, L-3 Communications Integrated Systems, Greenville, Texas

3:30 pm

Break

3:45 pm

Design Patents

The discussion will cover recent developments concerning design patents in the areas of validity, infringement, and damages, including a discussion of the October 2016 Supreme Court oral arguments in Apple v. Samsung.

• Charles M. Jones, II, Haynes and Boone, LLP, Dallas, Texas

4:15 pm

IEEE patent policy / FRAND litigation issues panel

• James Harlan, InterDigital Administrative Solutions, Inc., Washington, D.C.

5:00 pm

Adjourn

CLE Credit

MCLE Credit

This program is approved by the State Bar of Texas for a total of 14.0 hours, including 1.5 hour of ethics. Course ID Number: 901362232. Credit hours for other states will vary and are subject to each state’s approval and credit rounding rules.

For this conference, ILT will directly apply (if requested) for course accreditation in the following states: California, Minnesota, New Mexico, Ohio, Oklahoma, Pennsylvania, Texas and Virginia. Some of these states may not approve a program for credit hours before the program occurs. Attorneys may be eligible to receive CLE credit through reciprocity or attorney self-submission in other states. ILT conferences are typically accredited by all mandatory CLE states.

Overnight Accommodations

The cost of housing is not included in tuition. However, rooms (in limited number) have been reserved at Dallas/Plano Marriott at Legacy Town Center, 7121 Bishop Road, Plano, Texas 75024. Guests may call Marriott Reservations directly at 1-800-228-9290 and mention "The Center for American & International Law" to receive the reduced room rate of $195 + tax. The last day to obtain this special rate is October 29, 2016.

BOOK HOTEL ONLINE

Sponsorship Opportunities

General Conference Sponsor - $2,500 each

• Recognition in the Conference brochure, which will be mailed and/or emailed to several thousand IP professionals
• Company/firm logo prominently displayed in the Conference brochure and final program
• Recognition on the Conference website, with link back to company/firm website
• 2 complimentary registrants at the Conference
• Up to 3 guests at the Reception
• Recognition at the Conference
• An opportunity to display company/firm materials at the Conference

Conference Reception - $2,000 each

• Recognition in the Conference brochure, which will be mailed and/or emailed to several thousand IP professionals
• Company/firm logo displayed in the Conference brochure and final program
• Recognition on the Conference website, with link back to company/firm website
• 1 complimentary registrant at the Conference
• Up to 3 guests at the Reception
• Recognition at the Reception
• An opportunity to display company/firm materials at the Conference

Exhibitor - $1,000 each
(Non-law Firms only)

• Space to display company/firm materials at the conference
• Name/logo on Conference website with link to company page

Other Information

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