BNA Patent Litigation Conference

trategies and Advice On Thursday, September 28, 2006, BNA hosted a conference at the Four Seasons Hotel in East Palo Alto. The presenters consisted of an all-star line up. The specific focus of the day was patent litigation strategies. Barry Grossman chaired the event. Important Patent Cases and What to Learn from them The event started with a presentation by one of the leading, if not the leading, patent scholar in the country, Professor Mark Lemley. He reviewed some of the most important current patent law cases. Considering the Supreme Courtââ?¬â?¢s recent interest in patent law, Professor Lemley suggested litigators should consider making arguments in their upcoming cases that they normally wouldnââ?¬â?¢t make. The theory apparently being that it may be beneficial to challenge settled law in order to get the Supreme Courtââ?¬â?¢s attention. Who knows, your case may be the next eBay. If your case does make it to the Supreme Court, Professor Lemley counsels, all bets are off. Donââ?¬â?¢t worry about citing any authority from the Circuits, only Supreme Court precedent will matter. The last piece of advice given by Professor Lemley was to raise all your arguments from the footnotes and put them in the main text. In Smithkline Beecham an argument was rejected because the argument was in a footnote and was not preserved. e-Discovery Ken Brothers and Jerry Riedinger each gave a presentation on e-discovery. Mr. Brothers focused on the importance of knowing the new e-discovery rules. His advice was to never represent that all ESI (Electronically Stored Information) has been disclosed, it hasnââ?¬â?¢t. Mr. Riedinger focused his presentation on how to reduce the immense costs of e-discovery. The best way to reduce cost is to focus your discovery requests and seek a non-aggression pact with opposing counsel. Both speakers mentioned the importance of ââ?¬Ë?clawbackââ?¬â?¢ agreements (agreements that if a privileged document is produced in e-discovery, each counsel agrees it is not waived and can take it back). These agreements help reduce the cost of discovery because each counsel does not need to do an expansive search of their own documents for privilege information. Case Themes Two litigators, Ronald Schutz and Joe Lipner, gave a joint presentation on adopting a theme for your case. Mr. Schutz emphasized answering the question ââ?¬Å?Why should you win?ââ?¬Â? Be sure to manage juror expectations. To do this Mr. Schutz mentioned he makes a point to watch at least 2 ââ?¬Ë?lawyer showsââ?¬â?¢ to have a feel for what the juryââ?¬â?¢s frame of mind may be. He isnââ?¬â?¢t afraid to talk to the jury about CSI and how that kind of thing doesnââ?¬â?¢t happen in real life. Mr. Lipner recognized the need to humanize your client, especially if your client happens to be a corporation. Be sure to not only make the legal arguments concerning the technology, but be sure to stress the importance of the technology. The presentation ended with a demonstration of these techniques using a quick fact pattern and a question and answer portion. An audience member asked about the difficult position defendants are put in when they have to argue non-infringement and alternatively argue for reduced damages. Mr. Schutz shared 2 pieces of advice in these situations: 1) start your closing statement with a discussion of damages and then talk about invalidity and non-infringement and 2) use a different attorney to present the damages evidence to the jury than the attorney who presents the rest of the case. Rule of Law The lunchtime address was given by the William Neukom, the original General Counsel of Microsoft. His speech focused on the importance of the Rule of Law. Creating strong IP rights encourages smart people to expend the sweat equity to innovate, which developing countries should strive to accomplish in order to create a healthy economy. Judges Panel After lunch came a judgeââ?¬â?¢s panel of Judge Susan Illston from the N.D. Cal. and Judge Otero from the C.D. Cal. Both agreed patent cases are easily the most time consuming cases to try. Both also seemed to disagree with the de novo standard of review for Markman hearings. Judgeââ?¬â?¢s Oteroââ?¬â?¢s pet peeves are not owning up to your errors and ââ?¬Ë?kitchen sinkââ?¬â?¢ arguments. Judge Illstonââ?¬â?¢s pet peeve is overly aggressive litigators. Expert Witnesses Sharon Barner and Thomas Smeagal, Jr. gave a joint presentation on how to choose and use an expert witness. Both suggest getting your expert out of his chair and teaching in front of the jury as often as possible. Donââ?¬â?¢t overlook client witnesses as expert witnesses. Consider inventors who own related patents. The last 3 speakers were William LaFuze, Claude Stern, and Joseph Re. Mr. LaFuze was in a rush to catch a plane so he gave a quick presentation on Echostar and the waiver of privilege. Mr. LaFuze asked not to be quoted, but discussions of Echostar can be found on other blogs on this website: Dissing Dish, Clarifying Echostar and Waiver of Privilege, and Another Note on ‘Waiver of Privilege.’ Markman Hearings Mr. Stern gave a presentation on 3 recent Federal Circuit cases (Lava Trading v. Sonic Trading Mgnââ?¬â?¢m, Wilson Sporting Goods v. Hillerich and Bradsby, and MIT v. Abacus Software) and how they relate to Markman hearings. Mr. Stern predicts the new rule from the Federal Circuit is that claim construction should be in proper context; this may be good for District Courts who may now look at the infringing product. This may drastically change the way Markman hearings are performed. All Markman hearings may start to look more like summary judgment hearings due to the amount of relevant evidence parties may present. Appellate Practice Mr. Re appropriately ended the day with a lively, concise, and important presentation on appellate practice. Mr. Re is an accomplished attorney who is quite familiar with winning cases in front of the Federal Circuit. Some of his advice is: 1) never use power point or a whiteboard when presenting to the Federal Circuit, they want all visuals in the brief, 2) when the judges ask a question, stop, listen, answer and make sure that judge is satisfied with the answer, and 3) pick your issues to appeal on the standard of review. He noted a pet peeve of the Federal Circuit is cross-appeal abuse. This conference was well run and informative. It was a pleasure to listen to these attorneys at the top of the game.

The Effects of Changing U.S. Patent Law

On November 20, 2007, the Santa Clara High Tech Law Institute co-sponsored a panel discussion with the Berkeley Center for Law and Technology, and the Silicon Valley Intellectual Property Law Association. The distinguished panel included SCU Professor Colleen Chien; Robert Freitas, a partner at Orrick, Herrington, and Sutcliffe LLC; Paul Stone, Chief Counsel at AllChemie; and Judge Ronald Whyte of the District Court for the Northern District of California. Robert Barr, the Executive Director of the Berkeley Center for Law and Technology moderated. See the video here.

How Changes to Patent Law Will Affect Patent Practice

On April 19, 2007, Professor Robert Barr of Boalt Hall moderated a discussion about recent Supreme Court and Federal Circuit Court patent law developments. Panelists included Professor Robert P. Merges of Boalt Hall, Edwin H. Taylor of Blakely Sokoloff Taylor and Zafman, Dr. Elizabeth A. Howard of Orrick, Herrington and Sutcliffe, and Thomas E. Kuhnle of Bingham McCutcheon. Co-Sponsored with Silicon Valley Intellectual Property Law Association and the Berkeley Center for Law and Technology
View The Affect of Changing Patent Law on FORA.tv
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Patent Scholars Conference

On October 27, 2006, the Berkeley Center for Law and Technology and Santa Clara’s High Technology Law Insitute co-sponsored Patent Policy in the Supreme Court and Congress. Here you can see patent law experts from the conference discuss the Court’s 2006 decisions and the big issues of 2007.

Streaming video (Windows Media) with synchronized transcripts, MPEG-4 podcast video downloads, and stand-alone transcript files are available for each of these panels. Simply follow the link to the panel and use the media buttons to select a preferred file type.

The Supreme Court Year in Review – 1:35
Moderated by Tyler Ochoa, Santa Clara University School of Law, this panel includes:

• Christopher Cotropia, University of Richmond School of Law
• Richard Gruner, Whittier Law School
• Ted Hagelin, Syracuse University College of Law
• Cynthia Ho, Loyola University of Chicago School of Law
• Chris Holman, University of Missouri at Kansas City School of Law
• Adam Mossoff, Michigan State University School of Law

The Supreme Court Year in Preview – 2:00
Moderated by Robert Merges, BCLT, Boalt Hall School of Law, this panel includes:

• Dan Burk, University of Minnesota Law School
• Lisa Dolak, Syracuse University School of Law
• Gregory Mandel, Albany Law School
• Joseph Scott Miller, Lewis and Clark Law School
• Toshiko Takenaka, University of Washington School of Law

Incentives and Invention – 1:50
Moderated by Molly Van Houweling, BCLT, Boalt Hall School of Law, this panel includes:

• Paul Heald, University of Georgia School of Law
• F. Scott Kieff, Washington University of St. Louis
• Charles McManis, Washington University of St. Louis
• Gary Pulsinelli, University of Tennessee College of Law
• Katherine Strandburg, DePaul University College of Law

Claim Construction and Infringement – 1:12
Moderated by Eric Goldman, HTLI, Santa Clara University School of Law, this panel includes:

• Margo Bagley, University of Virginia School of Law
• Michael Meurer, Boston University School of Law
• Glynn S. Lunney, Jr., Tulane University School of Law
• R. Polk Wagner, University of Pennsylvania Law School

Prospects for Patent Litigation in Congress – 1:00
Moderated by Robert Barr, BCLT, Berkeley Center for Law and Technology, this panel includes:

• Rebecca Eisenberg, University of Michigan Law School
• Robert Merges, Boalt Hall School of Law
• Kevin Outterson, West Virginia University College of Law

Seasoned Patent Counsel Opine on Recent PTO Rulemaking Proposals

he PTO has made several recent proposals on the topic of continuations, information disclosure statements, accelerated examination and alternative patent products. Join us to hear experts on this topic – Glenn Von Tersch of Perkins Coie as moderator, Brian Hickman of Hickman Palermo Truong and Becker, Monte Cooper of Orrick, Jim Mullen of Forrison and Foerster, and Vern Noviel of Wilson Sonsini Goodrich and Rosati – describe these proposals and examine their usefulness for the bar, their potential impact on business clients, and the likelihood of implementation. This discussion took place on October 26, 2006 and is 1 hour and 32 minutes long. Co-Sponsored with Silicon Valley Intellectual Property Law Association
View Recent PTO Rulemaking Proposals on FORA.tv
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IP Transaction Intermediaries: Leading Silicon Valley Brokers and Advisors Speak About What They Do

Companies have emerged that offer a variety of specialized services to facilitate the high tech companiesââ?¬â?¢ IP valuation as well as purchase and sale of IP assets. A panel discussion with Rick Frenkel of Cisco as moderator, Joe Chernesky of IPotential, Phil Hartstein of Ocean Tomo, and David Smith of Tynax speak on the topic of ââ?¬Å?IP Transactional Intermediaries: Who are they and what do they do?ââ?¬Â? This discussion took place on October 25, 2006 and is 1 hour and 11 minutes long. Co-sponsored with Licensing Executives Society – Silicon Valley Chapter
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Judge Newman on the Court of Appeals for the Federal Circuit

Judge Pauline Newman of the Court of Appeals for the Federal Circuit spoke to an audience of practitioners and SCU law faculty on September 13, 2006. Her focus was on the rationale for instituting the court, its development, and its future. Judge Newman gave this speech on September 13, 2006, and the video is 36 minutes long.
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Founder of Public Patent Foundation Speaks on Patent Reform

Daniel Ravicher, founder and Executive Director of the New York based non-profit Public Patent Foundation, speaks to a group of Silicon Valley practioners and SCU law faculty and students as to what patent reform is all about, why we should care, and why it concerns the public. Ravicher gave his talk on September 20, 2006. The video is 56 minutes long.
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Senior In-House Counsels Debate Patent Reform

A roundtable of senior in-house counsel ââ?¬â?? including Mallun Yen of Cisco, John Danforth of Rambus, Doug Luftman of Palm Inc, Peter Detkin of Intellectual Ventures with Mike Jacobs of Morrison and Foerster as moderator ââ?¬â?? discuss and debate specific proposals for patent reform including the recently proposed Leahy-Hatch bill in the Senate.
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Debate: Counsel for Perfect 10 v. Google Square Off

On February 2, 2007, Justin Hughes, Director of the Cardozo Law School’s intellectual property program, moderated a panel discussion at Santa Clara University. The talk focused on the Perfect 10 v. Google case and its implications for Internet copyright.

The panelists include:

• Andrew Bridges of Winston and Strawn is Google’s lead defense counsel in the case
• Russ Frackman of Mitchell, Silverberg, and Knupp represents Perfect 10 in this case
• Fred Von Lohmann is Senior Staff Counsel at the Electronic Frontier Foundation
• Tyler Ochoa teaches copyright law at the Santa Clara University School of Law

View Counsel for Perfect 10 vs. Google Square Off on FORA.tv
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