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IP Law Summit – September 14-16

The IP Law Summit will be held from September 14, 2014, through September 16, 2014, at the Eau Palm Beach Resort & Spa, Palm Beach, Florida. The event will bring together senior IP Counsel from large corporations and mid-market organizations with service providers. The Summit is an invitation-only event that will take place behind closed doors.

The key topics will include:


Navigating the Litigation and Inter Partes Review Collision Course
Matthew J. Kelly, Chief Intellectual Property Counsel & Managing Director, CME Group

A year after the inter partes review (IPR), its impact on concurrent litigation for the same patent is still largely overlooked in part to the lack of guidance, either from case law, publications or other sources on how to approach the two. However, forward-thinking counsel have managed to overcome the two greatest obstacles in these proceedings by achieving appropriate balance between choice of counsel and right to confidentiality through careful drafting and prosecution bars within protective orders. This presentation will provide an analysis of post grant review proceedings including litigation, filings, management, strategies and success rate of these filings.


Best Practices for Challenging Bad Patent Claims by Non-Practicing Entities
Dana Rao, Vice President, Intellectual Property & Litigation, Adobe Systems, Inc.

Non-Practicing Entities pose an increasing problem for in-house companies, both in their varying tactics and in their increasing volume. This keynote presentation will examine, based on the presenter’s experiences, a variety of strategies and tools available for challenging bad patents, in and out of the courtroom, and strategies for dealing with the NPEs by:

  • Providing insider updates on NPE trends and tactics
  • Exploring use of AIA tools to challenge patents
  • Examining successful strategies for defending against NPE litigation
  • Reviewing the current state of NPE related legislative reform and their impact on NPEs and operating companies


Practical Considerations for Multi-Jurisdictional Patent Licensing
Timothy M. Lynch, Chief IP Officer & Deputy General Counsel, Vice President, Eastman Kodak Company
Nadeem G. Bridi, Chief Intellectual Property Counsel, Kinetic Concepts, Inc.

As industries become increasingly reliant on Standard Essential Patents (SEP) and realize the benefits of tapping into the revenue potential of licensing, in-house counsel are forced to confront the unique strategic and compliance implications of dealing with patents. The key to success, in light of these implications, is a well calculated plan for their acquisition, assertion, licensing and management. This presentation will take an analytic look at the issues surrounding global patent licensing and aim to provide strategic insights to:

  • Accurately assessing your portfolio and establishing a pricing strategy
  • Lessons learned and strategic considerations for drafting SEP and non-SEP licensing agreements
  • Managing global compliance, especially within the PCT block
  • Successfully negotiating with aggregators


Improving the Efficiency of Your Global Portfolio Management Strategy
Sarah Guichard, Vice President, Associate General Counsel – Patent & Standards, BlackBerry

IP portfolio management can be an overwhelming responsibility, especially for companies with worldwide operations. While every company uses a different strategy, the truth is there is no right or wrong strategy. However, a clever management strategy, when well executed, can be the difference between early settlement and costly litigation. This presentation will examine successful management strategies to highlight the key factors to efficiently and accurately execute your strategy with considerations for:

  • Determining what your competition has
  • Steps you can take to avoid liability in the future once you know what is out there
  • Best practices for improving the efficiency and accuracy of your portfolio management strategies to ensure it is aligned with your corporate strategy


If you are interested in attending you can visit the IP Law Summit website and register your interest in receiving an invitation to attend. For more information you can also contact Jenny Keane, Marketing Manager, j.keane@marcusevansch.com.



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