Patent Disputes Forum South
The preferred IP event among patent litigators and in-house counsel
2016 Patent Disputes Forum South is a full day rich in valuable information and intelligence for in-house and corporate counsel, intellectual property litigators, and those involved in the ever-changing Patent environment. Delegates will walk away armed with best practices and insights concerning key IP issues that impact their clients, companies and even careers.
About our Chairs
William F. Abrams
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.
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.
Christopher Marchese is a principal in the Southern California office of Fish & Richardson. His practice focuses on patent and high tech litigation involving a wide range of technologies, including computer networking, hardware, and software, as well as integrated circuits and wireless communications. He has litigated and tried major patent cases in multiple jurisdictions across the U.S. He is co-author of a treatise on patent damages and co-authors a patent damages blog (www.patent-damages.com) with Danielle Williams, another co-chair for this SoCal Patent Disputes Forum.
Danielle Williams is a principal in Fish’s Atlanta office and 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. An experienced patent litigator, Ms. Williams has extensive experience in handling high-risk, multi-patent, multi-product, multi-defendant cases in a broad range of technologies. Ms. Williams is a frequent author and presenter and co-authors a blog focused on patent damages: www.patent-damages.com.
About our Speakers
Brett Bachtell is Senior Legal Counsel at Qualcomm Incorporated where he manages intellectual property litigations and licensing disputes. He joined Qualcomm in 2016 and was previously a partner in the IP litigation group at McDermott, Will & Emery LLP. He received his J.D. from The DePaul College of Law and his B.S.E.E. from the University of Illinois at Urbana-Champaign.
Kenneth C. Cheney
Kenneth (Ken) C. Cheney focuses his practice on intellectual property (IP) matters.
Ken’s transactional experience includes preparing and prosecuting patent applications, conducting due diligence investigations in connection with funding, acquisition and merger transactions, and preparing legal opinions on patent validity, infringement and non-infringement. His litigation experience has involved patent and trademark infringement, trade secrets, fraud and breach of contract. Ken’s practice also involves the representation of clients post-issuance patent challenges before the US Patent and Trademark Office (USPTO) Patent Trial & Appeal Board.
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
Ted Dane is a partner in the Los Angeles office of Munger, Tolles & Olson. Mr. Dane’s principal areas of practice are intellectual property, with an emphasis on patent litigation and antitrust.
In the patent area, Mr. Dane has represented a variety of client, including Abbott Laboratories, Microsoft, Southern California Edison, Takeda Pharmaceuticals and Verizon, in diverse technological areas including avionics, digital security software, medical devices, pharmaceutical products, radio frequency identification devices, telecommunications, and wireless networks.
Mr. Dane received his A.B. degree in English in 1986 from Harvard University (magna cum laude), where he was elected to Phi Beta Kappa. Mr. Dane received his J.D. in 1989 from Stanford University, where he was elected to the Order of the Coif. Mr. Dane served as a law clerk to the Honorable Harry Edwards of the District of Columbia Court of Appeals during the 1990-1991 term. In addition to his work at Munger Tolles, Mr. Dane also worked spent a brief sojourn as in-house counsel for Warner Bros.
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.
Denise De Mory
Denise De Mory is a leading intellectual property litigator. For over twenty years, her practice has focused on litigation in software and electrical fields. She is an experienced trial attorney. Her firm understanding of what matters at trial and what it takes to effectively communicate about any issue, ranging from the most complicated technical issue to an emotionally charged employment issue, enables her to develop and pursue successful strategies for her clients. She was a member of the US DOJ’s trial team in U.S. v. Microsoft antitrust litigation. She has been named a Top Women Litigator and Super Lawyer.
Eric Forister is an economist with expertise in industrial organization, applied microeconomics, and applied econometrics. He has extensive experience in applying economic insights to understand firm and market behavior, analyzing large datasets using advanced econometric and statistical techniques, and designing and evaluating surveys. He has co-authored medical research papers and legal publications on class certification and market definition.
Dr. Forister has worked on both the plaintiff and defense sides of antitrust, intellectual property, consumer fraud (marketing), and breach-of-contract cases. As a consultant, he has addressed issues such as market definition, market power, competition, market pricing, merger efficiencies, common impact, materiality, reliance, ascertainability, royalty rates (including FRAND), damages, sampling, survey design, and irreparable harm. Dr. Forister has analyzed dozens of industries including consumer packaged goods, luxury goods, food products, medical services, biotechnology, legal services, fitness, clothing, entertainment, real estate, air and ground transportation, telecommunications, television, electronics, heavy industry, advertising, restaurants, automobiles, gasoline, payment processing, and illicit markets.
Hon. William V. Gallo
Judge William V. Gallo was appointed a U.S. Magistrate Judge for the Southern District of California on October 15, 2009. Before taking the bench, Judge Gallo served as a state or federal prosecutor for twenty-three years in the County Attorney’s Office in Yuma, AZ from 1986 to 1989, the U.S. Attorney’s Office in the Northern District of Illinois (Chicago) from 1989-1991, and most recently from 1991-2009 in the U.S. Attorney’s Office in the Southern District of California (San Diego).
Judge Gallo, a native of Pittsburgh, Pennsylvania, received his undergraduate degree at Duquesne University in Pittsburgh in 1976 and his law degree from the Loyola University School of Law in Chicago, Illinois in 1979. While in law school, Judge Gallo earned a commission as a Second Lieutenant and served in the United States Marine Corps and Marine Corps Reserve from 1978 to 2005 retiring at the rank of Colonel. Judge Gallo returned to law school in 2013 to earn a LLM in Intellectual Property from the University of San Diego School of Law.
While serving in the Marine Corps Reserve from 1986 to 2005, Judge Gallo held a variety of assignments. Most notably, in January 2003, Judge Gallo was called to active duty as a Reservist in response to a Presidential call up in support of Operation Iraqi Freedom and reported to Camp Pendleton, California. From January to October, 2003, Judge Gallo served as the Commanding Officer of the First Marine Expeditionary Force Headquarters Group. Thereafter, from October 2003 to April 2005, he served as the Staff Judge Advocate, that is, the senior legal advisor, to the Commanding General of the First Marine Expeditionary.
After returning to the U.S. Attorney’s Office, Judge Gallo was offered the position of Director, Law and Order Task Force in Iraq working directly for General David Petraeus, the Commander of all troops in Iraq at the time. Judge Gallo held this position from January to October 2008.
Judge Gallo’s chambers is in San Diego.
Eric W. Hagen
McDermott Will & Emery Partner Eric W. Hagen counsels and represents Fortune 500 clients and emerging growth companies in complex commercial cases involving patents, trade secrets, trademarks, copyrights, unfair competition claims and related matters. He serves as leader of the Firm’s Trade Secrets Practice and has successfully represented clients in the life sciences, smartphone, disk drive, semiconductor, advertising, financial services, apparel, sports and entertainment industries. Eric also manages the intellectual property portfolios of several start-up companies, and he serves on the Board of Advisors for JibJab Media Inc.
Eric has been repeatedly recognized by The Legal 500 United States as a leading lawyer in the fields of patent litigation and trade secret litigation in the United States. He is an adjunct professor at Loyola Law School where he teaches patent litigation.
Margaret P. Kammerud
Meg Kammerud is of counsel in Steptoe & Johnson’s Palo Alto office, where she is a member of the Intellectual Property Group. Ms. Kammerud has wide-ranging experience in patent, copyright, and trade secret matters. She represents clients in courts throughout the United States and before the US International Trade Commission in complex cases involving a diverse array of subject matters, including internet search systems, internet advertising systems, smartphone technologies, location technologies, semiconductors, robotics, and pharmaceuticals.
Hon. Victor B. Kenton (Ret.)
Hon. Victor B. Kenton (Ret.) was appointed a Federal Magistrate Judge for the Central District of California in 2001, where he retired July 2015. He is now available as an arbitrator, mediator, private judge and discovery special master. Prior to his judicial service, Judge Kenton was an attorney in both private and public practice, where he tried over 150 civil and criminal bench and jury trials to conclusion. As a Magistrate Judge, he presided over numerous trials and mediated over 500 cases, in areas including intellectual property, ERISA, ADA, IDEA and FAPE (education), civil rights, employment, wage and hour disputes, pharmaceuticals, complex business disputes, class actions, and commercial litigation.
Judge Kenton has a reputation for his ability to engender trust from both attorneys and parties. Attorneys who appeared before Judge Kenton found him to be patient, sharp and effective. One attorney who mediated cases in his court commented that “He understood the complex facts of the case, and was able to distill the important issues and work through them – ultimately leading to resolution.” A partner at a law firm said, “Judge Kenton’s integrity, humility and sense of humor will make him an exceptional mediator. His experience on the bench and deep understanding of law speaks for itself, as an arbitrator. He will be an excellent choice for any party.”
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 Top Neutrals list eight times. He is a member of the American Law Institute and has taught the Master Class for Mediators for his alma mater, Harvard Law School.
Vince Lam has been practicing patent law for over a dozen years, having handled several hundred cases in district courts and in the International Trade Commission. He is currently the Chief Patent Litigation Counsel for HTC Corporation, which has one of the busiest patent litigation dockets in the country. Under his leadership, HTC has amassed an unparalleled number of victories against its competitors and against NPEs. Prior to joining HTC, Vince was a patent litigator at DLA Piper LLP where he focused on the high tech sector. Vince graduated from UC Berkeley with a BS in Chemistry and received his JD from Santa Clara University School of Law.
Dwayne L. Mason
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.
Daniel M. McGavock
Daniel McGavock is Vice President and IP Practice leader of Charles River Associates and has dedicated his business consulting practice to intellectual property (IP) valuation, strategy, transactions, and economic damages analysis for over 30 years. He has provided expert testimony in over 75 IP matters in a variety of forums, including arbitral tribunals, federal and state courts, the U.S. Court of Claims, the ITC, and the PTAB. Mr. McGavock has addressed all areas of potential economic recovery in IP disputes, including lost profits, price erosion, reasonable royalty, FRAND licensing terms, profit disgorgement, and unjust enrichment. He has also addressed the issues of commercial success and the economic impact of injunctions. Outside of litigation, Mr. McGavock has performed IP valuations for business and transactional purposes and has participated directly in license negotiations. Mr. McGavock is a Certified Public Accountant (CPA), Certified Licensing Professional (CLP), and is an Adjunct Professor at the Northwestern School of Law where he teaches a course on IP valuation.”
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, 2005-2015 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.
Hon. Christa Zado
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.
Westin South Coast Plaza
686 Anton Blvd.
Costa Mesa, CA 92626
Registration & Breakfast
8:15 am - 8:55 am
Introduction by Co-Chairs
8:55 am - 9:00 am
Inter Partes Reviews: What Have We Really Learned?
9:00 am - 10:00 am
Inter Partes Reviews: What Have We Really Learned?
Are certain district courts more apt to stay cases? The first application of IPR estoppel provisions.
Moderator: Dwayne Mason, Shareholder, Greenberg Traurig LLP
Kenneth C. Cheney, Partner, McDermott Will & Emery
Hon. Christa Zado, Administrative Patent Judge, United States Patent and Trademark Office
The best defense can be a great offense and save the expense of trial:
10:00 am - 11:00 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 Joyner, Shareholder, Greenberg Traurig LLP
Meg Kammerud, Of Counsel, Steptoe & Johnson LLP
Hon. Victor B. Kenton (Ret.) Judicate West
Jeff Kichaven, Principal Mediator, Jeff Kichaven Commercial Mediation
11:00 am - 11:15 am
Presenting damages at trial: How to relate your damages case to the jury
11:15 am - 12:15 pm
Patent damages are part of every patent infringement case. Not all damages theories succeed. This panel will bring their extensive, recent trial experience and jury research across several jurisdictions, including the Central District of California, the Eastern District of Texas 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 jury trial.
Moderator: Christopher Marchese, Principal, Fish & Richardson P.C., co-author “Patent Damages: Law and Practice”; co-author of the blog www.patent-damages.com.
Eric Forister Ph.D., Senior Economist, Econ One Research Inc.
Eric W. Hagen, Partner, McDermott Will & Emery
Vincent Lam, Chief Patent Litigation Counsel, HTC
Dan McGavock, Vice President and Intellectual Property Practice Leader, Charles River Associates
12:15 pm - 1:15 pm
Patent Trial Best Practices: Judge and Bar Perspectives
1:15 pm - 2:15 pm
Prominent jurists will address strategies in litigation and patent disputes, giving you the rare, up-close chance to ask questions and get their candid views in a relaxed setting. Giving personal experience and professional views, the panelists offer an exceptional opportunity for the audience to delve into their minds. The highlight of the day, you will not want to miss this special session!
Bill Abrams, Partner, Steptoe & Johnson LLP
Hon. William V. Gallo, Magistrate Judge, Southern District of California
Light at the End of the Rabbit Hole? Is Preemption Finally Returning to the Alice Analysis?
2:15 pm - 3:15 pm
Jim DeCarlo, Shareholder, Greenberg Traurig L.L.P
Ted Dane, Partner, Munger Tolles & Olson
Denise De Mory, Partner, Bunsow De Mory Smith & Allison LLP
Mark D. Flanagan, Partner, Wilmer Cutler Pickering Hale and Dorr LLP
3:15 pm - 3:30 pm
Supreme Court Update & Cases to Watch
3:30 pm - 4:30 pm
Review leading patent cases from the Supreme Court from 2015 – 2016, including:
- Halo Electronics, Inc. v. Pulse Electronics
- Stryker Corporation, et al. v. Zimmer, Inc.
- Cuozzo Speed Technologies, LLC v. Lee
- Apple v. Samsung
Review the Supreme Court’s pending cases, including:
- Star Athletica, LLC v. Varsity Brands, Inc.
- Life Techs. Corp. v. Promega Corp.
- Samsung v. Apple
- SCA v. First Quality
Danielle Williams, Principal, Fish & Richardson P.C.
Brett Bachtell, Senior Legal Counsel, Qualcomm
Debra Condino, Senior Vice President, Chief Intellectual Property Counsel, Assistant Secretary, Allergan plc
Craig Countryman, Principal, Fish & Richardson P.C.
Ted Dane, Partner, Munger Tolles & Olson
Networking Cocktail Reception
4:30 pm - 5:30 pm
- USPTO Statistics (Inter Partes Reviews: What Have We Really Learned?)
- http://www.callawyer.com/wp-content/uploads/2016/05/Final-2016-Fall-Patent-Disputes-Panel-2.pptx (The best defense can be a great offense and save the expense of trial:)
- http://www.callawyer.com/wp-content/uploads/2016/05/2016-10-17-101-Presentation-re-CAFC-Cases.pptx (Light at the End of the Rabbit Hole? Is Preemption Finally Returning to the Alice Analysis?)
- http://www.callawyer.com/wp-content/uploads/2016/05/SCOTUS-Patent-2016-10-11-1.pptx (Supreme Court Update & Cases to Watch)