Patent Disputes Forum North
The preferred IP event among patent litigators and in-house counsel
2017 Patent Disputes Forum North is a full day rich in valuable information and intelligence for corporate counsel, intellectual property litigators, and those involved in the ever-changing Patent environment. Delegates will walk away armed with insights concerning key IP issues that impact their clients, companies and even careers.
More than just an educational conference, 2017 Patent Disputes Forum North offers unparalleled networking and business development opportunities.
About our Keynote
Director, West Coast United States Patent and Trademark Office in Silicon Valley
As the Regional Director of the West Coast United States Patent and Trademark Office (USPTO), John Cabeca carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and is responsible for establishing and leading the USPTO’s west coast regional office located in Silicon Valley. Focusing on the region and actively engaging with the community, Mr. Cabeca ensures the USPTO’s initiatives and programs are tailored to the region’s unique ecosystem of industries and stakeholders.
A veteran of the U.S. Patent and Trademark Office for over 28 years, Mr. Cabeca previously served as the Senior Advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. In this role, he worked closely across the Agency’s leadership to implement the policies and priorities for the USPTO. He began his career at the USPTO as a patent examiner after graduating from Widener University with a bachelor’s degree in electrical engineering. Mr. Cabeca became a Supervisory Patent Examiner in 1997 and joined the Senior Executive Service in 2008 serving as a Patent Technology Center Director over the semiconductor and electrical systems technologies.
Mr. Cabeca has dedicated much of his career to the USPTO’s outreach and education programs focusing on small businesses, startups and entrepreneurs. Over the years, he served in the Office of Petitions, the Office of Patent Legal Administration, the Office of Governmental Affairs and the Office of the Under Secretary. In 2006, Mr. Cabeca was appointed a Department of Commerce Science and Technology Fellow and served on special assignment to the Executive Office of the President in the United States Trade Representative’s Office. At USTR, he worked with multiple agencies on a variety of international intellectual property rights issues and played an integral role in the Free Trade Agreement negotiations with the Republic of Korea.
About our Chairs
Partner, Steptoe & Johnson LLP
William F. 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.
Shareholder, Greenberg Traurig LLP
Jeff Joyner’s experience includes patent, trademark, and copyright litigation, trials, appeals, enforcement, protection and licensing. He also focuses on technology, including green technologies, entertainment, Internet and new media law.
Jeff has represented major electronics companies, technology companies, internet companies, semiconductor companies, media companies, consumer products companies, medical companies, fashion designers, sports organizations, entertainment companies, artists, photographers, international and domestic food and beverage companies, alternative energy and clean technology projects, in litigation involving substantial damage claims and the development and execution of worldwide intellectual property development, acquisition, protection, compliance, enforcement, branding and licensing programs for patents, famous trademarks, trade dress and copyrighted works.
Jeff advises and is a limited partner of one of the first clean technology venture funds that includes a portfolio of solar, carbon credit management, water purification and bio pesticide companies. He also advises other ventures and companies using technologies for solar, wind, biomass, solar thermal, waste to-energy, green building material, transportation, infrastructure and smart grid projects, among others. Jeff is a Board member, Advisor or Co-Founder of incubators, accelerators, and emerging technology companies including U.S.-China Clean Tech Center, Los Angeles Cleantech Incubator, California-China Foreign Trade and Investment Office, e4 Mobility Alliance, e4 Advanced Transportation Center, Los Angeles Economic Development Agency, Bay Area Council, among others.
Principal, Fish & Richardson
As a principal at Fish & Richardson, Kathi Vidal (formerly Lutton) leads and tries high-profile, high-stakes patent litigation. Ms. Vidal served for four years in firm management, leading the firm’s litigation group and separately serving on the firm’s Management Committee. Located in Fish’s Silicon Valley office, she advises clients ranging from Fortune 100 companies to start-ups on patent protection and enforcement and other intellectual property matters. Inside and outside of the courtroom, Ms. Vidal is often called upon as an expert on case strategy and hot topics in the law.
About our Speakers
Shareholder, Greenberg Traurig LLP
James J. DeCarlo is an Intellectual Property Shareholder in Greenberg Traurig’s New York and New Jersey offices. A registered patent attorney and Electrical Engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets and drafting infringement, validity and freedom to operate opinions. He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as electronic commerce, cloud computing, virtual and augmented reality, streaming media, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware. In addition, Jim’s matters have covered other wide ranging technology areas including pharmaceuticals, medical devices, semiconductors, fiber optics, cameras, manufacturing, toys, pulp and paper, steel production, electronics and electro-mechanical devices.
Hon. James Donato
District Judge, Northern District of California
Judge James Donato is a United States District Judge for the Northern District of California, with chambers in the San Francisco courthouse. He is a member of the Northern District’s Local Rules Committee and the Patent Local Rules Committee, and is the Liaison Judge for the Standing Committee on Professional Conduct. He is also a district judge on the Patent Pilot Program.
Prior to entering judicial service, Judge Donato was a partner at Shearman & Sterling LLP, and in private practice for over 20 years. His practice focused on technology clients with an emphasis on competition-related litigation. He has served as President of the Bar Association of San Francisco and the Volunteer Legal Services Program, now known as the Justice & Diversity Center, and as a board member of the Northern California Innocence Project, among other legal services work.
Judge Donato was nominated by President Barack Obama on January 6, 2014, and confirmed by the Senate on February 25, 2014. He graduated with a B.A. in history from the University of California, Berkeley, in 1983, an A.M. in history from Harvard University in 1984 and a J.D. from Stanford Law School in 1988. He served as a judicial law clerk to the Hon. Procter R. Hug, Jr., United States Court of Appeals for the Ninth Circuit, 1988-1989. He has been admitted to practice in California and Hawaii
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 intellectual property 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 Intellectual Property Law and as Chair of the Entertainment Law and Intellectual Property 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.
Mediator and Arbitrator, Judicate West
Mark LeHocky is a former litigator specializing in IP, antitrust and other business tort disputes, the former general counsel to two public companies, and a full-time mediator and arbitrator with Judicate West focusing on IP and other complex matters. Mark has been mediating since the 1990s, first at the request of the Northern District of California federal court, and since 2012 as a full-time neutral. Mark received his law degree from the University of California Berkeley (Boalt Hall) School of Law and his undergraduate degree from U.C.L.A.
Named among the Best Lawyers in America for Mediation for three years running by U.S. News-Best Lawyersã, Mark has also taught Mediation Advocacy at the University of California, Davis’ School of Law. As well, during his tenure as general counsel, Mark crafted and installed company-wide early dispute resolution programs and related attorney and executive training to successfully accelerate the disposition of IP and all other litigation matters. He also writes extensively on the topics of ADR and litigation management. See www.marklehocky.com.
Global Vice Chair, Litigation and Trial Department, Latham & Watkins LLP
Doug Lumish is the Global Vice Chair of Latham’s Litigation and Trial Department. He is a trial lawyer with over 20 years of experience litigating complex intellectual property cases in venues across the country for the world’s leading companies. He has won jury trials and summary judgments for plaintiffs and defendants alike, and defeated billions of dollars in patent infringement claims against his clients.
Dwayne L. Mason
Shareholder, Greenberg Traurig LLP
Dwayne L. Mason, Shareholder of Greenberg Traurig serves as the Head of the Texas Intellectual Property Litigation Practice. Dwayne’s practice focuses on patent, trademark, copyright, trade secret and technology-based commercial litigation. Dwayne also manages patent and trademark portfolios, and assists companies in protecting and commercializing their intellectual property. Dwayne has litigated numerous intellectual property disputes in various state and federal district courts, the U.S. Judicial Panel on Multidistrict Litigation, the U.S. Court of Appeals for the Federal and 5th Circuits, and in domestic and international arbitration proceedings before the American Arbitration Association and International Chamber of Commerce. His technology experience includes pharmaceuticals, biotechnology, nanotechnology, hydrocarbon and chemical processing, oil and gas production, process control, software and business methods.
Amos L. Mazzant, III
District Judge, United States District Court, Eastern District of Texas
Amos Mazzant currently serves as a United States District Judge for the Eastern District of Texas, Sherman Division. Judge Mazzant was appointed to this position on December 19, 2014. He served as a U. S. Magistrate Judge in Sherman from April of 2009 until the date of his current appointment.
Prior to his position as U. S. Magistrate Judge, Judge Mazzant served as a Justice on the Fifth District Court of Appeals at Dallas, and formerly served as a briefing attorney for twelve years for Judges Paul Brown, Robert Faulkner and Don D. Bush. Judge Mazzant also worked in private practice at Wolfe Tidwell & McCoy, P.C. in Sherman, Texas. He graduated from the University of Pittsburgh with a B.A. in 1987 and from Baylor Law School in 1990. Judge Mazzant served as the President of the Texas Young Lawyers Association and as a Director for the State Bar of Texas.
Judge Mazzant created Junior Judges: Helping Kids Make Smart Choices, an elementary school project adopted by the Dallas I.S.D. and used in over 1,300 elementary schools in Texas. Judge Mazzant and his wife Michelle, a teacher, have two daughters, and attend St. Mary’s Catholic Church
Hon. Beverly Reid O’Connell
District Judge, Central District of California
In April 2013, Judge Beverly Reid O’Connell was unanimously confirmed as a federal judge in the United States District Court for the Central District of California. She has the distinction of being Pepperdine University School of Law’s first federal judge. Prior to her federal appointment, in 2005, Governor Schwarzenegger appointed Judge Reid O’Connell to the Los Angeles Superior Court. Judge Reid O’Connell also served as a Justice Pro Tem for the California Court of Appeal, District Two, Division Eight. Prior to being appointed to the bench, Judge O’Connell served as an Assistant United States Attorney for the Central District of California. Judge Reid O’Connell began her legal career as an associate at the law firm of Morrison & Foerster, specializing in litigation matters. Judge Reid O’Connell has also lectured as an Adjunct Professor of Law at Loyola Law School and Pepperdine University School of Law,. She teaches regularly on topics of civil procedure, technology and making an effective record.
She currently serves on the Ninth Circuit Jury Instruction Committee and the Ninth Circuit Technology Committee. She chairs the Technology Committee for the United States District Court, Central District of California.
She graduated from UCLA, with a B.A. in Political Science, and graduated, magna cum laude, from Pepperdine University School of Law, where she served as the Managing Editor of the Pepperdine Law Review
Erik R. Puknys
Partner Finnegan, Henderson, Farabow, Garrett & Dunner
Erik Puknys is a seasoned litigator and leads Finnegan’s appellate section. He represents clients across industries in intellectual property disputes filed in state and federal district courts and government agencies. Mr. Puknys lectures on patent and trade secret law at conferences hosted by industry, government, and academic organizations. He has been recognized as a leading patent litigator in California by Intellectual Asset Management, an “IP Star” in Palo Alto by Managing Intellectual Property, and for “superior client service” in The 2015 BTI Client Service All-Stars.
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.
Vice President and Deputy General Counsel, Yahoo
and Vice President of Excalibur IP, LLC.
Ray Strimaitis is Vice President and Deputy General Counsel for Yahoo and Vice President of Excalibur IP, LLC. He leads a global team of intellectual property professionals and is responsible for all of the company’s intellectual property matters. In his current role, Mr. Strimaitis is responsible for setting patent strategy, monetizing the company patent portfolio, managing patent risk, guiding patent advocacy, and overseeing all trademark/copyright matters.
Since joining Yahoo in 2010, Mr. Strimaitis initiated and successfully established and led a program to monetize Yahoo patents that has resulted in $600 million in patent sales and license transactions. In 2016 he led the effort to form Excalibur IP, LLC – a wholly owned Yahoo subsidiary established to further optimize patent value to Yahoo shareholders.
Before joining Yahoo, Mr. Strimaitis served in various legal, management and patent monetization roles at IBM. He received his BS in electrical engineering and JD from Cleveland State University.
Hon. Kevin C. Trock
Administrative Patent Judge, Patent Trial & Appeal
Board, USPTO Silicon Valley
Kevin C. Trock is an Administrative Patent Judge at the Patent Trial and Appeal Board in the Silicon Valley office. Judge Trock earned his law degree from Loyola University. He also earned Bachelor of Science Degrees in Science Education and Biology from Oregon State University. Prior to his appointment in August 2014, Judge Trock was an Intellectual Property Litigation Partner at Alston & Bird and K&L Gates, with over 20 years of patent litigation trial experience in a broad range of high technology fields.
Senior Litigation Counsel, Google Inc.
Patrick Weston joined Google in 2012. As Senior Litigation Counsel, he is part of a team that manages a docket of more than 100 pending patent and other intellectual property litigation matters both within and outside of the United States. Prior to joining Google, Mr. Weston was a litigator in Palo Alto, California at a large global law firm. Mr. Weston earned a B.S. in Symbolic Systems from Stanford, and a J.D. from the University of California at Berkeley. He is admitted to practice law in California, the U.S. Court of Appeals for the Federal Circuit, and various other federal courts around the country
Partner, Winston & Strawn LLP
Danielle Williams is a litigation partner in the firm’s Charlotte office. An experienced trial and arbitration attorney, Ms. Williams has handled a wide range of business disputes, including patent infringement, securities fraud, and complex contract matters in a number of federal and state courts. Ms. Williams has extensive experience in handling high-risk, multi-patent, multi-product, and multi-defendant cases in a broad range of technologies, in federal courts across the country. She regularly advises clients regarding various pre-suit patent litigation issues, including indemnity obligations and declaratory judgment options.
Senior Director of IP Strategy,
Huawei Device USA
Tao Zhang is Senior Director of IP Strategy at Huawei Device USA. Her responsibilities include IP transactions, patent portfolio development, and litigation support. Prior to Huawei, she was Director of IP Licensing at Hewlett-Packard Company; lead online patent sales, storage patent licensing, and HP Labs technology transfer.
Tao is a member of the California Bar and a Patent Attorney registered with USPTO. In addition, she is author of the book “Mining Ideas for Diamonds – Comparing China and US IP Practices from Invention Selection to Patent Monetization”.
Tao is fluent in English, Chinese, and studied Japanese for two years. She enjoys practicing Shadow Yoga (a style of Hatha Yoga) in her spare time.
2825 Sand Hill Rd.
Menlo Park, CA 94025
Registration & Breakfast
8:00am - 8:55am
Introduction by Co-Chairs
8:55am - 9:00am
An Alice Update
9:00am - 10:00am
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
Doug Lumish, Partner, Latham & Watkins LLP
The best defense can be a great offense and save the expense of trial
10:00am - 11:00am
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 Joyner, Shareholder, Greenberg Traurig LLP
Jeff Kichaven, Principal Mediator, Jeff Kichaven Commercial Mediation
Mark LeHocky, Mediator Judicate West
Dwayne L. Mason, Shareholder, Greenberg Traurig LLP
11:00am - 11:20am
Patent Valuation versus Patent Damages: Is There/Should There Be a Difference?
11:20am - 12:20pm
Why is a patent often valued differently in litigation versus when it is sold in the open market? Hear how these seasoned industry professionals approach patent valuation, the issues and metrics considered, and explore why their opinions converge/diverge in valuing a patent.
Jim DeCarlo, Shareholder, Greenberg Traurig LLP
Erik Puknys, Partner Finnegan, Henderson, Farabow, Garrett & Dunner
Kim Schenk, Principal, Charles River Associates
Ray Strimaitis, Vice President and Deputy General Counsel, Yahoo! Inc
Tao Zhang, Senior Director of IP Strategy, Huawei Device USA
12:20pm - 1:30pm
John Cabeca, Director, Silicon Valley United States Patent and Trademark Office
Kathi Vidal, Principal, Fish & Richardson
Patent Trial Best Practices: What Do The Judges Really Want
1:30pm - 2:30pm
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. James Donato, District Judge, Northern District of California
Hon. Kimberly C. Priest Johnson, Magistrate Judge, United States District Court, Eastern District of Texas
Hon. Amos L. Mazzant, III, District Judge, United States District Court, Eastern District of Texas
Hon. Beverly Reid O’Connell, District Judge, Central District of California
Hon. Kevin C. Trock, Administrative Patent Judge, Patent Trial & Appeal Board, USPTO Silicon Valley
2:30pm - 2:45pm
What’s New in Patent Damages?
2:45pm - 3:45pm
Since we last met in April 2016, the Supreme Court has taken up several damages issues, including enhanced damages, extraterritoriality, design patent damages, and patent exhaustion. This panel will bring their extensive patent case experience to discuss how recent cases are factoring into overall strategies for patent cases.
Danielle Williams, Partner, Winston & Strawn LLP
Erik Puknys, Partner Finnegan, Henderson, Farabow, Garrett & Dunner
Kim Schenk, Principal, Charles River Associates
Patrick Weston, Senior Litigation Counsel, Google, Inc.
Cybersecurity and Patent Protection
3:45pm - 4:45pm
4:45pm - 5:45pm
Agenda Subject to Change