Agenda - Legal Executive Institute

04.09.15
New IP Business Models: Innovation or Commoditization?
Sheraton Palo Alto Hotel
625 El Camino Road
Palo Alto, CA 94301
April 23, 2015
7:45-8:45AM
Registration and Continental Breakfast
8:45-9:00AM
Introduction: The Rule Set for IP
An enforceable patent fuels innovation. Healthy innovation powers the economy. Will innovation sustain, and be sustainable in, the United States?
The rule set for the patent system, rooted in the Constitution, continues to evolve today – facilitating invention, innovation and established market
powers. The current myth of the US patent owner is influenced by the media, legislation, and Supreme Court decisions. Even if pending legislation
stalls, increasingly expensive enforcement, implementation of the American Invents Act, the exceptional volume of litigation at the PTAB, major Supreme
Court decisions, judicial conference recommendations, and shifts in industry activity due to efficiencies and opportunities in the US and abroad, create
uncertainty for the patent system.
Surprisingly, while the negative environment clouding patents the past few years continues to drift, it also spurs new IP business models. Today’s
conference will focus on all aspects of innovation and IP: the current rules, likely changes in the near term, and how new entrants continue to find fresh
business models.
Robert Greene Sterne, Co-Chair; Founding Director, Sterne, Kessler, Goldstein & Fox P.L.L.C.
Chief Judge (ret.) Paul Michel, Court of Appeals for the Federal Circuit
Caren Yusem, Co-Chair; Expert, New IP Business Landscape
9:00-10:00AM
New Normal: Patent-Eligible Subject Matter and Infringement Damages
Patent-eligible subject matter has been significantly restricted from the Supreme Court’s 1980 Chakrabarty decision, which expanded patentable subject
matter to anything “under the Sun made by man.” Recent Supreme Court decisions, such as Myriad (2013), Mayo (2012), and Alice (2012) – have
eliminated patent subject-matter status in some of the most high-profile and important technologies, such as biotech, personalized medicine, business
methods and algorithms, software and social media.
American innovators and investors are likewise uncertain if courts will provide sufficient monetary relief for infringement. As appropriating ideas has
gained legitimacy as a sound business proposition, licensing activity and commercialization have dropped sharply. With so many opportunities to defeat
the patent owner, litigation has become more efficient than anticipating healthy damage awards. However, new business models, including joint
ventures and independent companies, are recapturing lost value in the market.
This panel will discuss the viability of new business models created to work around reduced patent-eligible subject matter and lowered expectations for
damages.
Moderators:
Ashley Keller, Gerchen Keller Capital, LLC
Ray Niro, Senior Partner, Niro, Haller & Niro
Panel:
Michelle Holoubek, Director, Sterne Kessler Goldstein & Fox PLLC
Matthew Lynde, Ph.D., Vice President, Cornerstone Research
04.09.15
Adam Mossoff, Professor of Law at George Mason University and Director of Academic Programs and Senior Scholar at the Center for the Protection
of Intellectual Property at Mason Law
Hans Sauer, Deputy General Counsel for Intellectual Property at the Biotechnology Industry Organization and Georgetown University School of Law
10:00-10:15AM
Break
10:15-11:15AM
New Normal: Enforcing Patents in the US and Europe
It is unlikely that a non-practicing patent owner will receive exclusionary remedies in the United States since the Supreme Court 2006 eBay decision.
Patent enforcement in Europe, particularly the United Kingdom and Germany, appears expeditious, economical, and predictable, offering a greater
likelihood of injunctive relief. In a dramatic change, strategic innovators around the world now consider Europe a more favorable venue for patent
enforcement compared to the United States. Will US start-ups patent overseas before patenting in the US? How will the US patent system affect the
expansion plans for European and Asian companies, especially lowest cost producers?
This panel will discuss the dynamics for global patent owners protecting and monetizing portfolios here and abroad.
Moderators:
Deirdre Leane, CEO, IP Navigation Group, LLC
Ami Patel Shah, Managing Director at Fortress Investment Group’s Intellectual Property Finance Group
Panel:
Lorna Brazell, Head of Patent Litigation Practice, Intellectual Property Disputes, Osborne Clarke, London
Campbell Forsyth, Partner, King & Wood Mallesons
Gillian McColgan, Chief Technology Officer, Marquis Technologies
Ralph Nack, Partner, Noerr LLP
11:15-12:15PM
Seeing Double - Validity Tests in the US and Europe: District Court, USPTO, and Federal Circuit
The United States is the only country offering parallel processes to assess patent validity: in the district courts and the United States Patent & Trademark
Office. However, the rules for claim construction and burden of proof are not parallel for both venues.
In 2012, three new proceedings were created to test the validity of patents at the USPTO. The patent owner must succeed in all proceedings that test
validity in order to recover for infringement. In contrast, validity in the UK is tested in the court proceeding; in Germany, the validity is tested in the
Federal Patent Court after the regional court has determined infringement. The U.S. approach is more time consuming, uncertain, and expensive.
American patent owners face a much higher chance of losing their issued patent due to these parallel proceedings. The uncertainty for validity in this
country has signaled a new market for arbitrage.
This panel will discuss the impact of changing risks and rewards for businesses leveraging patents in the US and abroad.
Moderator:
Robert Greene Sterne, Co-Chair; Founding Director, Sterne, Kessler, Goldstein & Fox P.L.L.C.
Panel:
Douglas A Cawley, Principal, McKool Smith PC
Phil Hartstein, President & CEO, Finjan Holdings, Inc.
Hy Hetherington, Founder, 1624 LLC
Corey Horowitz, Chairman and CEO, Network-1
Kevin Jakel, CEO, Unified Patents Inc.
Robert Saltzberg, Managing Director, Ovidian Group, LLC
12:15-1:30PM
Luncheon Keynote: The Global Patent Landscape
Chief Judge (ret.) Paul Michel, Court of Appeals for the Federal Circuit
04.09.15
1:30-2:30PM
Innovation: Electronics, e-Commerce, and Internet
With waves of legislated ”Patent Reform,” Supreme Court decisions, and the rise of the PTAB proceedings in the US, along with important changes to
the licensing and enforcement of patents in other places around the world, many are starting to question the impact of all this to the future of Innovation
in the US and globally.
This panel will explore where intellectual property and innovation are now and where they may be going in the future. The panel will explore examples of
how strong IP supporting their investments in innovation has played an important role in supporting the ROI and decision to invest, and how they see the
changes in the landscape for IP in the US and Europe impacting the ROI of these investments going forward.
Moderator:
Rob Aronoff, Managing Partner, Pluritas, LLC
Panel:
Fergal Clarke, Director, IP Business Analysis, Lenovo
Brian Hinman, Chief Intellectual Property Officer for Royal Philips
Jin Kim, Director, Innovation Business Development, United Technologies (UTC)
Jeremy Salesin, Head of Acquisitions, Intellectual Ventures
Boris Teksler, President Technology Group, SEVP Technicolor
2:30-3:30PM
Innovation: Pharmaceuticals, Biotech, Medical Devices, and Energy
What is the best course of action for IPR trolling and the standing question of third parties? District courts sometimes permit third parties to join
proceedings. Should the PTAB be different? IPR and CBM proceedings were created expressly to address tech patents rather pharmaceutical patents.
Why are we seeing the opposite phenomena? The PTAB is ironically highlighting how undervalued patents have been. Is the secondary market betting
for and against PTAB proceedings more profitable than betting on pharmaceutical new compounds or treatments?
How will scientists be incented to solve health and welfare issues in the future? Are new biotech solutions patentable in the US? Will the leading edge
the US built in biotech via Chakrabarty migrate elsewhere? Will scientists from around the world come to the United States to experiment, or stay put?
This panel will explore the business models for companies operating in the highly competitive markets for pharmaceuticals, biotech, medical devices,
and energy.
Moderator:
Hans Sauer, Deputy General Counsel for Intellectual Property at the Biotechnology Industry Organization and Georgetown University School of Law
Panel:
Carl Gulbrandsen, Managing Director, Wisconsin Alumni Research Foundation
Michael LoCascio, Manager of Intellectual Property Strategy, Catalysts, BASF
Craig Smith, Development and Commercialization Professional, Sandia National Laboratories
Paul A. Stone, General Counsel, Chief Operating Officer, 5AM Ventures
Roy Waldron, SVP and Associate General Counsel, Chief IP Counsel, Pfizer
3:30-3:45PM
Break
3:45-4:45PM
Best Practices: Innovation or Commoditization?
Best practices demonstrate commercial durability and competitiveness. Commodification is driven not by best practices but by copyists who want to
diminish the ability of a disruptor to change the status quo and threaten the incumbent’s legacy products and market power. Best practices tell the entire
market, operating and non-operating alike, to step up their game and play by a threshold set of rules. It is like securities dealers after World War II?
When they ran amok, the NASD emerged to self-regulate and to avoid a patchwork of state and federal rules. Now the NASDAQ is an innovator and
platform that has grown additional markets and industries.
04.09.15
This panel will share best practices to encourage innovation using intellectual property. We will ask which changes to the patents system might enhance
performance and secure innovation for future generations.
Moderator:
Chief Judge (ret.) Paul Michel, Court of Appeals for the Federal Circuit
Panel:
Robert Greene Sterne, Co-Chair; Founding Director, Sterne, Kessler, Goldstein & Fox P.L.L.C.
Carl Gulbrandsen, Managing Director, Wisconsin Alumni Research Foundation
Kevin Rivette, Managing Partner, 3LP Advisors LLC
John Veschi, CEO at Marquis Technologies, former CEO, Rockstar, former Chief IP Officer, Nortel, Formerly GM of IP Businesses at Agere Systems
and LSI, Former Board Member, Mosaid Technologies
Caren Yusem, Co-Chair; Expert, New IP Business Landscape
4:45-5:00PM
Closing Remarks
Robert Greene Sterne, Co-Chair; Founding Director, Sterne, Kessler, Goldstein & Fox P.L.L.C.
Chief Judge (ret.) Paul Michel, Court of Appeals for the Federal Circuit
Caren Yusem, Co-Chair; Expert, New IP Business Landscape
5:00-6:30PM
Inventor Reception
Celebrate the real subject of the patent system: inventors who change the way we work and live.