Conference Program

Monday, November 7, 2011

8:00 a.m.

Registration and continental breakfast

PATENT LITIGATION

Session Chair: Theodore Stevenson III • McKool Smith, PC (Dallas, Texas)

9:00 - 9:30 a.m.

THE STATE OF THE UNION: EASTERN DISTRICT OF TEXAS

T. John Ward, United States District Court, Eastern District of Texas (Marshall, Texas) (retired)

Samuel F. Baxter, McKool Smith, PC (Dallas, Texas)

9:30 - 10:00 a.m.

IS RELIEF STILL SPELLED I-T-C?

Recent case law impact the patent owner's ability to obtain injunctive relief in the International Trade Commission. Will this reverse the trend of increased filings in the ITC by Non-Practicing Entities? Will another court become the NPE favorite? This presentation will answer these questions and more.

Hilda C. Galvan, Jones Day (Dallas, Texas)

10:00 - 10:30 a.m.

DIVIDE OR CONQUER: WHEN IS INFRINGEMENT DIVIDED AND WHEN IS IT JOINT?

The latest developments respecting both method and systems claims, with implications for patent litigation and claim drafting.

Scott Breedlove, Vinson & Elkins LLP (Dallas, Texas)

10:30 - 10:45 a.m.

Break

10:45 - 11:15 a.m.

DISQUALIFICATION MOTIONS: OPPORTUNITIES AND PITFALLS

This presentation will cover the latest legal developments in disqualification motions in IP cases, including practical advice on how to present and defend against such motions.

Thomas Melsheimer, Fish & Richardson, PC (Dallas, Texas)

NOTE: Due to unforeseen circumstances, Mr. Melsheimer was unable to present at the conference. We are grateful that his colleague, Mr. Johnson graciously agreed to serve as his stand-in.

11:15 - Noon

DAMAGES AFTER UNILOC V. MICROSOFT: REPORTS OF THE DEARTH OF PATENT INFRINGEMENT DAMAGES ARE GREATLY EXAGGERATED

In opinions from Lucent v. Gateway to Uniloc v. Microsoft, the Federal Circuit has emphasized the need for increased rigor in presenting and reviewing a claim for patent infringement damages, and litigants and trial courts alike have struggled to explore the outlines of this damages regime. A host of recent trial court orders on Daubert and in limine motions, as well as on JMOL and new trial motions, have provided data points that our panel will assemble into a portrait of the evolving state of patent infringement damages law and trial strategy.

Moderator:

Theodore Stevenson III, McKool Smith, PC (Dallas, Texas)

Panelists:

Dr. Keith R. Ugone, Managing Principal, Analysis Group, Inc. (Dallas, Texas)

William C. Rooklidge, Jones Day (Irvine, California)

Noon - 12:15 p.m.

Pick Up Boxed Lunch

12:15 - 1:15 p.m.

A JUDICIAL CONVERSATION

The Administrative Office of the U.S. Courts announced in June 2011 that both the Eastern and Northern Districts of Texas had been selected to participate in the congressionally-created 10-year pilot program to give district court judges greater expertise in patent cases. Our panel will discuss how this will work in practice and the implications for IP lawyers in these districts.

Phillip B. Philbin, Haynes and Boone, LLP (Dallas, Texas)

in conversation with

Hon. Barbara M. G. Lynn, United States District Court, Northern District of Texas (Dallas, Texas)

1:15 - 1:30 p.m.

Break

TRADEMARK AND COPYRIGHT

Session Chair: Rob King • Silicon Laboratories (Austin, Texas)

1:30 - 2:15 p.m.

THE YEAR IN COPYRIGHT LAW

A review of 2010-11 cases and controversies involving copyright law, including issues related to fair use, digital media, and remedies. Ethical considerations facing copyright practitioners will be discussed at the beginning (1:30-1:45).

Kevin J. Meek, Baker Botts LLP (Austin, Texas)

2:15 - 2:45 p.m.

ANTI-SOCIAL MEDIA? HOW TO PROTECT YOUR CLIENT'S RIGHTS IN A BRAVE, NEW NETWORKED WORLD

An update of trademark, copyright and other laws regulating the burgeoning use of social media.

Steven C. Malin, Sidley Austin LLP (Dallas, Texas)

2:45 - 3:15 p.m.

TRADEMARK LAW UPDATE

Courts continue struggling to apply concepts of trademark infringement and secondary liability in the Internet context. Meanwhile, the Ninth Circuit sent shockwaves through the trademark community by reviving the discredited doctrine of aesthetic functionality.

Susan J. Hightower, Pirkey Barber LLP (Austin, Texas)

3:15 - 3:30 p.m.

Break

3:30 - 4:15 p.m.

TRADEMARK USE: INFRINGING OR FAIR USE?

What constitutes "use" for the purposes of trademark infringement, and what uses are protected under the defenses of fair use and functionality?

John M. Cone, Hitchcock Evert LLP (Dallas, Texas)

4:15 - 5:00 p.m.

WINNING THE TRADEMARK CASE BEFORE TRIAL

Conventional wisdom tells us that trademark cases are usually too fact intensive to be won before trial. In reality, there are many legal issues and many common fact patterns that may be create opportunities for summary judgment or other actions that can win the case early in the litigation process. This presentation will describe some of the strategies used by sophisticated trademark counsel and their clients to win trademark disputes at a fraction of the cost of traditional litigation.

John "Rocky" Rawls III, Baker Williams Matthiesen LLP (Houston, Texas)

5:00 p.m.

Cocktail Party on The Center's Terrace

Tuesday, November 8, 2011

PATENT PROSECUTION

Session Chair: Ira Matsil • Slater & Matsil, LLP (Dallas, Texas)

7:15 - 9:00 a.m.

Breakfast Available

OPTIONAL BREAKFAST ROUNDTABLES

9:00 - 10:00 a.m.

THE YEAR IN PATENT LAW

A study of 2010-2011 patent law decisions by the United States Supreme Court and the Federal Circuit.

Gale R. "Pete" Peterson, Cox Smith & Matthews Incorporated (San Antonio, Texas)

Note: Mr. Peterson is unable to present in person, but his paper is available to conference attendees, and his colleague, Mr. Pizarro, has graciously agreed to stand in for him.

Derrick Pizarro, Cox Smith & Matthews Incorporated (San Antonio, Texas)

10:00 - 10:15 a.m.

Break

10:15 - 10:45 a.m.

PATENT PROSECUTION IN THE KAPPOS ERA – CHANGES, PRACTICE POINTERS, AND RANDOM TIPS

David Kappos brings a wealth of industry experience to his job as the Director of the USPTO. What changes has he wrought, and how is the Kappos era different for patent prosecutors? We will explore new programs, attitudes, and strategies.

Colin P. Cahoon, Carstens & Cahoon, LLP (Dallas, Texas)

10:45 - 11:15 a.m.

U.S. REEXAMINATION AND ITS IMPACT ON PATENT ENFORCEMENT, MONETIZATION, AND VALUATION

Reexamination is a game-changer today in many areas of patent law. We will address all of the critical variables including what is really happening at the Central Reexamination Unit, the BPAI, and the Federal Circuit in terms of reexamination proceedings, and how the Federal courts and the USITC are dealing with stay requests, damages, and remedies due to reexamination developments.

Robert G. Sterne, Sterne Kessler Goldstein & Fox PLLC (Washington, DC)

11:15 a.m. - Noon

ETHICS PRESENTATION: INEQUITABLE CONDUCT

Therasense, Rule 56, Patent Law Reform: The State of the State on Inequitable Conduct

Thomas L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)

Noon - 12:15 p.m.

Pick Up Boxed Lunches

12:15 - 1:15 p.m.

THE VANISHING TRIAL

Hon. Patrick Higginbotham, United States Court of Appeals, Fifth Circuit (Austin, Texas)

1:15 - 1:30 p.m.

Break

TECHNOLOGY, LICENSING, & IP RIGHTS

Session Chair: Marc Hubbard • Gardere Wynne Sewell LLP (Dallas, Texas)

1:30 - 2:00 p.m.

AN OPEN SOURCE SOFTWARE PRIMER FOR LAWYERS

There is a good chance that your clients are using open source software (OSS) internally, and they may even be distributing it externally. OSS and the business models that use it will be explained, and examples will be given for how it may be brought knowingly and unknowingly into companies. After a description of different types of OSS licenses, the presentation will analyze the legal issues and practical ramifications of each and conclude with a discussion of enforcement of OSS licenses and strategies for dealing with enforcement actions.

Joanne Montague, Davis Wright Tremaine LLP (Seattle, Washington)

2:00 - 3:15 p.m.

REMEMBERING THOSE NOT AT THE TABLE – POSSIBLE IMPACT AND INFLUENCE OF THIRD PARTIES ON IP TRANSACTIONS

Frequently, IP licensing is viewed as a transaction involving only two parties, the licensor and the licensee. A prudent analysis of a licensing transaction, however, should contemplate the impact of the transaction on, and the potential influence on the transaction by, third parties. Issues such as assignability, change of control, bankruptcy, and indemnification expand the scope of an IP transaction far beyond the two parties "at the table." The impact on and influence of third parties on valuation of an IP transaction will also be discussed.

Panelists:

Lee Chastain, Freescale Semiconductor, Inc. (Austin, Texas)

Steven H. Slater, Slater & Matsil, LLP (Dallas, Texas)

Stephen E. Stein, Thompson & Knight LLP (Dallas, Texas)

3:15 - 3:30 p.m.

Break

3:30 - 4:15 p.m.

DATA PRIVACY, ACCESS, AND SECURITY CONSIDERATIONS FOR CLOUD PROVIDERS AND USERS

Cloud providers and their clients have some shared and some competing interests when it comes to making data and applications available throughout a global network infrastructure. Data access, privacy and security as well as other issues can be a difficult part of negotiating any cloud services agreement and must be managed long after its execution.

Allen Lineberry, Siemens Product Lifecycle Management Software, Inc. (Plano, Texas)

4:15 - 5:00 p.m.

PROPRIETARY RIGHTS IN THE BRAINS OF EMPLOYEES – TRADE SECRETS, EMPLOYEE PROPRIETARY RIGHTS AGREEMENTS, AND THE INEVITABLE DISCLOSURE DOCTRINE

Companies that have hired individuals from competitors are frequently accused of trade secret theft. Some recent significant verdicts against such companies suggest that the new employer needs to take great care following the hiring. We will look at the applicable legal doctrines and how employers can best protect themselves.

Theodore Anderson III, Kilgore & Kilgore, PLLC (Dallas, Texas)

5:00 p.m.

Adjourn

FOUR WAYS TO REGISTER

1. Register online
2. Print and fill out registration form and mail to: Institute for Law and Technology, 5201 Democracy Drive, Plano, Texas 75042 USA
3. Print and fill out registration form, then fax to: (972) 244-3401.
4. Call (972) 244-3400 to register (credit card only).