Patent Disputes Forum South
Patent Litigation Strategy for in-house patent counsel
Our 2017 Patent Disputes Forum is a full-day conference, rich in valuable strategic information, which will ensure you are prepared for upcoming developments and challenges in the IP landscape. This conference is for corporate counsel, intellectual property litigators, and those involved in the ever-shifting Patent environment. Delegates will walk away armed with insights concerning key IP issues that impact their clients, companies and careers
About our Chairs
William F. Abrams
Partner, Steptoe & Johnson LLP
Bill Abrams, the managing partner of Steptoe’s Palo Alto office, is a seasoned trial and appellate lawyer who is, as reported by Chambers USA, “frankly brilliant at what he does; he finds the fight his client can fight, and performs very well,” as well as a “wizard of the patent bar… a courageous litigator who understands both the broader picture and the social context surrounding issues.” He was named a “California Lawyer of the Year” by California Magazine and a Top 100 Lawyer and Top 75 IP Lawyer by The Daily Journal.
Betty H. Chen
Principal, Fish & Richardson
Betty Chen, a Principal in the Silicon Valley office of Fish & Richardson, is the firm’s Global Hiring Principal and has an expansive litigation practice that spans all areas of intellectual property litigation and complex commercial litigation. Betty has successfully tried and managed matters through all phases of litigation in a variety of forums, including federal district courts, state courts, the International Trade Commission, and arbitration. She has substantial experience in patent litigation involving a myriad of technologies. Recently, Ms. Chen was recognized by the Silicon Valley Business Journal as a 2017 “Women of Influence” and distinguished as a “40 Under 40” in 2016. Ms. Chen also won the 2017 “Women Worth Watching in STEM” Award presented by the Profiles in Diversity Journal.
Roger A. Denning
Principal, Fish & Richardson
Roger Denning is a trial lawyer specializing in complex litigation, including patent infringement and other technology-related cases. As lead counsel, Roger has helped some of the world’s best-known companies win their most important cases. Roger has tried patent cases to verdict throughout the country, particularly in the patent-heavy dockets in California, Texas, Delaware, as well as the International Trade Commission. Roger also has tried to verdict a number of complex commercial cases, including in the areas of products liability, unfair competition and the False Claims Act. Roger also has advised clients in inter partes review proceedings in the Patent and Trademark Office.
About our General Counsel Advisor
David J. Harshman, Esq.
Vice President of Legal and Administration, General Counsel & Secretary, Toshiba America Information Systems, Inc.
David Harshman is Vice President of Legal and Administration, General Counsel and Secretary of Toshiba America Information Systems, Inc. headquartered in Irvine, CA. This Toshiba US subsidiary provides digital products, services and solutions in the United States and Latin America covering a wide range of products including portable computers. Before joining Toshiba Mr. Harshman’s experience included serving in private law practice specializing in intellectual property matters. Prior to becoming an attorney, Mr. Harshman worked as an industrial and systems engineer in computer manufacturing and service businesses.
Mr. Harshman has Bachelor and Master degrees of Industrial Engineering from The Ohio State University, and a J.D. from the University of San Diego School of Law. Mr. Harshman is also a patent attorney registered with the United States Patent and Trademark Office. In addition to practicing law Mr. Harshman is on the faculty of the School of Business and Economics at California State University Fullerton teaching Internet, Entertainment, and Employment Law courses. Mr. Harshman is a past winner of the Orange County Business Journal’s award for Outstanding General Counsel of a private company. Last but not least he is a lifetime member of the ARC organization for helping people with intellectual and developmental disabilities
About The Judges
Hon. Andrew J. Guilford
District Judge, United States District Court, Central District of California
United States District Judge Andrew Guilford sits in the Southern Division of the Central District of California, where he is a Patent Pilot Program Judge. He has sat by designation with the Federal and Ninth Circuit Courts of Appeal.
Before becoming a judge, Andrew Guilford was a trial lawyer with Sheppard Mullin Richter & Hampton, handling cases relating to issues like intellectual property, finance, and professional liability. He received his AB degree in economics summa cum laude from UCLA in 1972 as a Regent Scholar, and his JD degree in 1975, also from UCLA, where he was elected to Phi Beta Kappa and was an associate editor of the Law Review.
In 1992, he was elected to the American College of Trial Lawyers. He was selected five times by the Daily Journal as one of California’s Top 100 Lawyers. Guilford served as President of the State Bar of California and Orange County Bar Association. He serves on the Committee on Codes of Conduct of the Judicial Council of the United States; is a founder of the Howard T. Markey Intellectual Property American Inn of Court; is a Contributing Editor of The Rutter Group’s Federal Civil Procedure Before Trial; and is an Adjunct Professor at the UC Irvine School of Law.
Supporting volunteer legal services, Guilford served as President of the Public Law Center and was awarded the State Bar President’s Pro Bono Service Award and the Poverty Law Center Outstanding Service Award. He served on the State Bar Commission on Access to Justice
Hon. Leonard P. Stark
Chief Judge, United States District Court, District of Delaware
Judge Stark is a graduate of the University of Delaware (Honors B.A. Political Science ’91, B.S. with Distinction Economics ’91, M.A. European History ‘91), University of Oxford (Magdalen College) (D. Phil. British Politics 1993), and Yale Law School (J.D. 1996). He clerked for the Honorable Walter K. Stapleton of the U.S. Court of Appeals for the Third Circuit during the 1996-97 term. From 1997 to 2001, Judge Stark was a litigation associate in the Wilmington, Delaware office of Skadden, Arps, Slate, Meagher & Flom. Between 2002 and 2007, he served as an Assistant United States Attorney for the District of Delaware. Judge Stark was appointed to a newly-created federal magistrate judge position for the United States District Court for the District of Delaware on August 6, 2007. On March 17, 2010, he was nominated by President Obama as a District Judge for the District of Delaware and, following Senate confirmation on August 5, 2010, he was appointed to this position on August 16, 2010. He became Chief Judge on July 1, 2014
Hon. Christa Zado
Administrative Patent Judge, United States Patent and Trademark Office
Christa Zado is an Administrative Patent Judge at the Patent Trial and Appeal Board in the Silicon Valley office. She earned her law degree from the University of California at Berkeley Boalt Hall School of Law, and a Master of Science in Electrical Engineering from Stanford University. Prior to her appointment in July 2014, Judge Zado served as Senior Corporate Counsel of Global IP at Cisco Systems, Inc., and as a private practitioner litigating patents at Fish & Neave and Ropes & Gray.
About our Panelists
Zachary M. Briers
Munger, Tolles & Olson LLP
Zachary Briers is a technology and litigation attorney in the Los Angeles office of Munger, Tolles & Olson. His practice focuses on complex civil litigation, with an emphasis on patent litigation and consumer class actions. Mr. Briers has a particular interest in consumer electronics, pharmaceuticals and medical devices. In addition to his litigation practice, Mr. Briers also counsels technology clients regarding a variety of issues, including compliance with Internet-based regulations, intellectual property matters and privacy concerns.
Principal, Fish & Richardson
Craig is a principal with Fish & Richardson P.C. in its San Diego office. His practice includes a mix of appellate and trial court work, and he was counsel for Halo Electronics in the Supreme Court’s recent decision Halo Electronics, Inc. v. Pulse Electronics, Inc. Craig has led the briefing in over 30 appeals at the Federal Circuit in cases involving a range of technologies, including glaucoma drugs, spinal implants, coronary guidewires, power supply controller chips, network security, and genetic testing. He has written dozens of articles on various topics in patent law, including post-grant review, ITC jurisdiction, inequitable conduct, obviousness, damages, and inducement. Craig holds a degree in Chemistry from Caltech and graduated from UCLA Law School.
Mark D. Flanagan
Partner in Charge, Palo Alto Office, WilmerHale
Mark Flanagan is the partner-in-charge of the firm’s Palo Alto office, a partner in the firm’s Litigation/Controversy Department, and a member of the Intellectual Property Litigation, International Arbitration, International Litigation, and Investigations and Criminal Litigation Practice Groups. Mr. Flanagan is a seasoned trial attorney with in-depth experience in IP litigation, white collar criminal defense and international arbitration. He represents clients principally in the semiconductor, computer, telecommunications, clean tech and publishing industries in a variety of matters, including patent and copyright infringement, trade secret misappropriation and licensing disputes. His practice spans a variety of jurisdictions and fora, including district and appellate courts throughout the country and arbitration organizations throughout the world. Prior to joining WilmerHale, Mr. Flanagan served as an Assistant United States Attorney in the Central District of California.
Principal Mediator, Jeff Kichaven Commercial Mediation
Jeff Kichaven is an independent mediator with a nationwide practice and extensive experience and expertise in IP cases. He has been honored as California Lawyer Attorney of the Year in ADR and has been named to the Daily Journal’s list of California’s Top Neutrals eight times. In 2015, Best Lawyers named him the Best Mediation Lawyer in Los Angeles. He is an Honors Graduate of Harvard Law School (J.D. Cum Laude, 1980) and a Phi Beta Kappa Graduate of the University of California, Berkeley (A.B. Economics, 1977). He is also a member of the American Law Institute and has taught the Master Class for Mediators for his alma mater, Harvard Law. He has served as Chair of the ADR Committee in the ABA Section of IP Law and as Chair of the Entertainment Law and IP Section of the Los Angeles County Bar Association. His views on mediation have been cited in The New York Times and The Wall Street Journal.
Jeff does not approach mediation as a feel-good kumbaya. He blends a friendly personality and soft demeanor with a rock-hard, rigorous legal analysis of the strengths and weaknesses of every case.
According to Jeff, “The only ‘force’ that works well in mediation is the force of logic. In high-end cases, top-flight attorneys and their clients are bully-proof. They’re smart and successful. They’ll make the right decisions, given the chance. That’s how we get tough cases settled.”
Principal, Charles River Associates
Ms. Schenk’s practice focuses on financial and economic analysis and expert witness testimony in intellectual property litigation matters. She has 15 years of experience spanning a wide variety of industries and including evaluation of lost profit and reasonable royalty damages, commercial success, and irreparable harm. She has testified in deposition and trial, in matters in Federal and State Court. In addition to her experience in intellectual property matters, Ms. Schenk has performed damages assessments for a variety of other types of business disputes, including breach of contract litigation and false marketing. She has also been involved in valuations of privately held businesses, patents and patent portfolios, trademarks, non-competition agreements, and other intangible assets. Ms. Schenk is a Certified Public Accountant, and she is an active members of the American Intellectual Property Law Association (AIPLA) and the Global IP Project.
Mark Selwyn is a partner at WilmerHale in the Litigation/Controversy Department, co-chair of the Intellectual Property Litigation Practice Group and a member of the firm’s Management Committee. He has been recognized for exceptional standing in the legal community in the area of intellectual property in Chambers USA: America’s Leading Lawyers for Business, 2005-2016 editions. Sources say “he is one of the hardest-working practitioners around” and is “top notch.” Major corporations have relied on him to litigate biomedical, electrical, chemical, mechanical, and business method patents involving a diverse array of technologies, including wireless communications, electronic commerce, digital cameras, solid state disk drives, location sensing, biosensors, water and wastewater filtration, integrated circuits and angioplasty catheters. He has represented clients in dozens of patent and other intellectual property cases in federal courts throughout the country and before the International Trade Commission. Mr. Selwyn counts among his clients many of Silicon Valley’s most prominent technology companies.
The Montage Beverly Hills
225 N Canon Drive
Beverly Hills, CA 90210
Registration & Breakfast
8:00am - 8:55am
Introduction by Co-Chairs
8:55am - 9:00am
The Best Defense is Often a Great Offense
9:00 am - 10:00 am
Develop your game plan now for early disposition as a result of pre-trial motions and mediation during litigation, or patent aggregation and licensing prior to litigation.
Jeff Kichaven, Principal Mediator, Jeff Kichaven Commercial Mediation
An Alice Update
10:00 am - 11:00 am
We have seen a number of significant Federal Circuit decisions addressing 101 issues in the last year. Is this producing greater clarity and consistency, or just more fodder for debate on what the law is?
Mark D. Selwyn, Partner, WilmerHale
Mark Flanagan, Partner-in-Charge, WilmerHale
11:00 am - 11:20 am
The Future of IPR
11:20 am - 12:20 pm
Roger A. Denning, Principal, Fish & Richardson
Karl Renner, Principal, Fish & Richardson
Mike Rider, General Counsel – Americas, ResMed
Hon. Christa Zado, Administrative Patent Judge, United States Patent and Trademark Office
Luncheon Discussion: General and Patent Counsel Panel
12:20 pm - 1:30 pm
David Harshman, Vice President of Legal and Administration, General Counsel, and Secretary, Toshiba America Information Systems, Inc.
Supreme Court Update and Cases to Watch
1:30 pm - 2:30 pm
Two patent cases will be decided by the Supreme Court this coming term, both concerning the use of IPR. Oil States Energy Services LLC v. Greene’s Energy Group LLC, will decide if the IPR procedure under the AIA violates Article III of the Constitution by allowing patents to be invalidated by an executive tribunal instead of a federal court.
The second case, SAS Institute Inc. v. Lee, concerns the PTAB’s “partial review” practice of deciding which patent claims to examine in AIA reviews and limiting its final decision to those claims it agreed to review. Both these cases will have an enormous impact on patent litigation and are closely watched. The panel will discuss these cases and several Federal Circuit cases that are awaiting decision or en banc review, and possibly review by the Supreme Court.
TBD, Steptoe & Johnson LLP
Craig Countryman, Principal, Fish & Richardson
2:30 pm - 2:45 pm
2:45 pm - 3:45 pm
Patent damages law has continued to evolve with respect to apportionment, treatment of standard essential patents, the entire market value rule, and the availability of injunctive relief. This panel will bring their extensive, recent trial experience and jury research across several jurisdictions, including the Central District of California and other jurisdictions, to discuss strategies for presenting your damages case to the jury. Whether you are a plaintiff or a defendant, this panel will provide you with practical considerations for presenting your damages case in your next trial.
Betty H. Chen, Principal, Fish & Richardson
Kim Schenk, Principal, Charles River Associates
Patent Trial Best Practices: What do the Judges Really Want?
3:45 pm - 4:45 pm
What do judges (and their clerks) really want from counsel? What their pet peeves and never do that’s, and what makes them happy? We will have a panel of judges who will show you the do’s and don’ts of patent litigation. The highlight of the day, you will not want to miss this special session!
Bill Abrams, Partner, Steptoe & Johnson LLP
Hon. Andrew J. Guilford, District Judge, United States District Court, Central District of California
Hon. Leonard P. Stark, Chief Judge, United States District Court, District of Delaware
Hon. Christa Zado, Administrative Patent Judge, United States Patent and Trademark Office
4:45 pm - 5:30 pm
- The Myth Of The Forceful Mediator (The Best Defense is Often a Great Offense)