World Congress
  
The 6th Annual Corporate IP Counsel Forum
Platinum Sponsor
Silver Sponsor
Exhibitors
Partners
Wednesday, March 19, 2014
7:30 am -
8:30 am

Registration and Welcome Coffee

8:30 am -
8:45 am

Chairperson’s Opening Remarks

Charles Macedo Charles Macedo
Partner
Amster, Rothstein & Ebenstein, LLP
8:45 am -
9:15 am

KEYNOTE ADDRESS: Patent and Trademark Office Implementation of America Invents Act

Since the new rules have been enacted from the America Invents Act (AIA), making the most significant changes to the U.S. patent law in more than 177 years, this session Keynote Address explores what the effects have been internally and what corporate IP counsel can expect going forward. Hear directly from the USPTO and participate in a one-of-a kind discussion to get all of your most pressing questions answered regarding the changes.

Thought Leader TBA
9:15 am -
10:15 am

Guidelines for Filing an Appeal to the US Court of Appeals for the Federal Circuit

This presentation will provide a step-by-step guideline for filing an appeal with the United States Court of Appeals for the Federal Circuit from a final decision of the Board of Appeals and Interferences. After attending this session you will have the tools necessary to:

  • Initiate an appeal
  • Prepare and file an appeal brief, a reply brief and other related documents
  • Argue before the Federal Circuit
Ray Ashburg Ray Ashburg
Senior Counsel
The Dow Chemical Company
10:15 am -
10:45 am

Networking and Refreshment Break

10:45 am -
11:35 am

Patent Valuation — Determine Which Patents to Keep, License, Litigate, or Sell

  • Learn about successful strategies for identifying your most valuable patents
  • Evaluate your patent portfolio to know where to spend money
  • Gain inside information on tips for buying, selling, and licensing patents
  • Assess the future value of patents based on current trends
  • Discuss the changing nature of litigation and the emerging efficient market for IP
Speaker Photo Unavailable Leanne Fitzgerald
Associate General Counsel
Nuance Communications
Rob Stewart Rob Stewart
Chief Counsel IP
NYSE Euronext
11:35 am -
12:30 pm

Assess the Ramifications of New Patent Wars and Supreme Court Cases to Navigate Your IP Strategy

  • Hear an update on the latest Supreme Court cases and their implications on your corporate IP strategy
  • Review the issues presented, holdings, and the ramifications of each case
  • Understand how recent cases can impact your IP practice in 2014
Moderator:
Charles Macedo Charles Macedo
Partner
Amster, Rothstein & Ebenstein, LLP
Panelists:
Michael A. Springs
Chief Patent Counsel
Bank of America
Timothy Wilson
Senior IP Counsel
SAS Institute
12:30 pm -
1:30 pm

Networking Luncheon

1:30 pm -
2:20 pm

Protect IP and Brand in Social Media

This interactive panel discussion will address IP issues that arise in social networks, as well as suggest best practices in related areas of risk control, brand protection, and privacy. Come hear panelist share strategies on:

  • Implement best approaches now to minimize the risk of future IP and privacy disputes
  • Maintain current and clear terms and conditions concerning ownership and use
  • Actively monitor how your brand is referenced in third-party sites
Moderator:
Michael Kasdan Michael Kasdan
Partner
Amster, Rothstein & Ebenstein, LLP
Panelists:
Brian Chase Brian Chase
General Counsel
Foursquare Labs
Barbara Cornicioiu Barbara Cornicioiu
VP & Senior Counsel- Cyberlaw Unit/Tech & Digital Law Group
American Express
Sarah L. Horvitz
Senior Counsel
MLB Advanced Media- mlb.com
Brian Miller Brian Miller
General Counsel
MediaMath
2:20 pm -
3:10 pm

Understand Standards-Essential Patents (SEPs) That Are Necessary to Implement Technical Standards and How They are Treated in Litigation and Enforcement

Standards-essential patents (SEPs) cover technology that cannot be avoided when implementing ubiquitous technical standards, such as 802.11. To address the use of SEPs to possibly block standards, those involved in developing standards, in standards bodies, typically commit to license their SEPs on so-called fair, reasonable, and non-discriminatory (FRAND) terms. In this session, gain information to help represent SEP owners and implementers of standards that incorporate SEPs, including how to:

  • Appreciate why SEPs are making headlines
  • Understand how standards policies define SEPs and attach duties to SEPs
  • Identify how being essential to a standard affects SEP royalty, availability of injunctive relief, and ROI
  • Examine court and agency perceptions of SEPs
Marc Sandy Block
IP Counsel
IBM
3:10 pm -
3:40 pm

Networking and Refreshment Break

3:40 pm -
4:30 pm

Avoid Willful Infringement Using Opinion Counsel

On March 16, 2013, the new priority and prior art rules under the AIA was implemented in the United States. This means that all new applications filed after the implementation date which do not sufficiently claim an earlier priority date will have the Act’s new prior art and priority rules applied. Join this interactive discussion to:

  • Analyze and dissect the standard set forth In re Seagate to understand the court’s decision
  • Identify the related AIA provisions regarding opinion of counsel
  • Understand in-house counsel’s role in supplying all relevant information to opinion counsel, and reviewing content of outside counsel’s opinion
Steven P. Klocinski
Senior Business Leader, Senior IP Counsel
MasterCard Worldwide
4:30 pm -
5:20 pm

Roundtable Discussions:

Roundtable Discussions are designed to promote targeted group conversation around the most active areas of IP. Each Roundtable is led by a moderator who offers talking points that encourage idea and best practice exchanges. Topics to choose from include:

1) Determine When, Why and How You Involve Outside Counsel on IP Matters
Speaker Photo Unavailable Scott D. Jacobson
General Counsel and Intellectual Property Counsel
Honeywell Electronic Materials
2) Share Best in Class Strategies for Avoiding and Managing IP Litigation
Timothy Wilson
Senior IP Counsel
SAS Institute
3) Explore Recent Developments in Patent Infringement Remedies Law
Michael A. Springs
Chief Patent Counsel
Bank of America
4) Identify How to Properly Communicate with Outside Counsel to Further Your Business Goals
Caldwell A. Camero Caldwell A. Camero
Senior Intellectual Property Counsel, Trademarks
General Mills
5:20 pm -
6:20 pm

Close of Day One • networking cocktail Reception