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The 7th Annual Corporate IP Counsel

The 7th Annual Corporate IP Counsel
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Wednesday, March 11, 2015
7:30 am -
8:30 am

Registration and Morning Coffee

8:30 am -
8:45 am

Congress Chairperson’s Welcome and Opening Remarks

Charles R. Macedo Charles R. Macedo
Partner
Amster, Rothstein & Ebenstein, LLP
8:45 am -
9:35 am

Keynote Address
USPTO Update — Uncover the Most Recent Changes in the IP Industry

Join the Keynote Session to discuss the most important Supreme Court cases in the last 12 months and their impact on the industry. Hear from the U.S. Patent and Trademark Office as they lay the foundation for the conference discussions.

Drew Hirshfeld Drew Hirshfeld
Deputy Commissioner for Patent Examination Policy
U.S. Patent and Trademark Office
9:35 am -
10:25 am

Discuss Divided Infringement and the Implications of Limelight v. Akamai

Due to the rulings of Limelight v. Akamai, along with other recent cases, applicants must adhere to more stringent requirements to ensure claims have appropriate focus.

  • Explore Limelight v. Akamai and other divided infringement cases
  • Uncover claiming strategies in light of these decisions
  • Discuss potential changes based on pending or future cases
Tanzina Chowdhury
IP Counsel
Entegris, Inc.
Speaker Photo Unavailable Anthony Mustillo
Senior Patent Attorney
Endo Pharmaceuticals and Healthtronics
Speaker Photo Unavailable Nathan Weber
Partner
Carter, DeLuca, Farrell & Schmidt, LLP
10:25 am -
10:55 am

Networking and Refreshment Break

10:55 am -
11:45 am

Navigate Patent Eligibility Issues After Alice

There have been a tidal wave of decisions from the Federal Circuit, District Courts, and Patent Office invalidating patents on patent-eligibility grounds since the Supreme Court’s decision in Alice Corporation v. CLS Bank International. While some computer implemented inventions have survived, understanding how to disclose and draft claims to survive patent-eligibility challenges is becoming more and more difficult. This panel addresses:

  • How the new test is being applied by the Courts and the PTAB
  • What types of claims have survived patent-eligibility challenges and why
  • The new forums where patent-eligibility challenges are being raised
Moderator:
Charles R. Macedo Charles R. Macedo
Partner
Amster, Rothstein & Ebenstein, LLP
Panelists:
Speaker Photo Unavailable Mony R. Ghose
Associate Chief Intellectual Property Counsel
Becton, Dickinson and Company
Jay Knobloch
Director, IP Licensing and Litigation
Trading Technologies International, Inc.
11:45 am -
12:35 pm

Explore the Monetization of Intellectual Property

  • Define IP monetization and what it should involve and include
  • Discover the numerous ways IP can be monetized and what it can produce
  • Examine multiple types of monetization agreements, focusing on IP licensing terms and conditions and potential issues that may arise
Richard Weiss Richard Weiss
Chief IP Counsel
NCR Corporation
12:35 pm -
1:50 pm

Luncheon

1:50 pm -
2:40 pm

Understand the Impact of Federalization of Trade Secret Law

  • Discuss the interaction between federal and state trade secret law
  • Explore ways to keep corporate information confidential and enhance your patent program
  • Uncover how to use trade secrets to enforce corporate goals
  • Examine best practices for an internal program
Joe O. Long
Managing Counsel
Wells Fargo Legal Group
2:40 pm -
3:30 pm

Tackle Non-Practicing Entities (NPEs) and Minimize Their Effect on Your Business

  • Uncover best practices for combating NPEs
  • Examine how changes in state law will impact NPE activity
  • Examine defensive pools and other mitigating tools
Moderator:
Anthony F. Lo Cicero Anthony F. Lo Cicero
Partner
Amster, Rothstein & Ebenstein LLP
Panelists:
David Dutcher David Dutcher
Senior Director, Intellectual Property
SanDisk Corporation
Raymond Millien Raymond Millien
Chief Software IP Counsel
GE Healthcare
3:30 pm -
4:00 pm

Networking and Refreshment Break

4:00 pm -
4:50 pm

Determine When to Use Outside Counsel on IP Matters

Not all IP matters can be resolved in house, and it is difficult to determine when to bring in outside assistance and how to work together successfully.

  • Debate scenarios where outside counsel should be engaged to work with in house counsel
  • Discover how to collaborate with outside counsel to meet the goals of the organization
  • Enhance partnerships with foreign counsel in prosecution matters
Joe O. Long
Managing Counsel
Wells Fargo Legal Group
Philip Soo, PhD
Intellectual Property Counsel
3M Innovative Properties Company

Roundtable Discussions

4:50 pm -
5:40 pm

Roundtable #1
Overcome IP Issues in Negotiating Contracts

Speaker Photo Unavailable Jill C. Greenwald, Esq.
Assistant Chief Counsel, Legal Affairs
ABC, Inc.

Roundtable #2
Enforce IP Rights in Social Media

Roundtable #3
Discuss the Use of Native Advertising Across Platforms

5:40 pm -
6:40 pm

Cocktail and Networking Reception