USC Law School 2004 Intellectual Property Institute

Transcription

1 BEVERLY HILLS TUESDAY THE BEVERLY HILLS HOTEL MAY 25, 2004 USC Law School 2004 Intellectual Property Institute This one-day institute is designed to provide an unmatched service to bar and business as the premier educational event for all those seriously involved in intellectual property matters in Southern California. Don t miss being a part of this valuable and cutting-edge program.

2 We are pleased to invite you to attend what we believe will be the region s most important conference focusing on key legal and business issues in patent, trademark, copyright and related The Law School fields. Filling an unmet need for interchange among the wide variety of arenas in which intellectual property issues arise, the program will bring together sophisticated legal and business professionals to share creative ideas and up-to-the-minute information on the crucial challenges in the field. This one-day institute is designed to provide an unmatched service to bar and business as the premier educational event for all those seriously involved in intellectual property matters in Southern California. Don t miss being a part of this valuable and cutting-edge program. i contact information USC Law School Continuing Legal Education Telephone: Fax: cle@law.usc.edu Our office hours are 9:00 am to 5:00 pm visit our Web site 2

3 sponsors USC Law School gratefully acknowledges the sponsors of the 2004 program: Arnold & Porter Bowne DecisionQuest Christie Parker & Hale LLP Cornerstone Research Deloitte & Touche LLP Ernst & Young LLP Fenwick & West LLP Fish & Neave FTI Consulting, Inc. Gibson, Dunn & Crutcher LLP Greenberg Traurig, LLP Heller Ehrman White & McAuliffe LLP Hennigan, Bennett & Dorman LLP Irell & Manella LLP Jeffer, Mangels, Butler & Marmaro LLP Jones Day Kirkland & Ellis LLP Kroll Zolfo Cooper LLC Latham & Watkins LLP LECG Loeb & Loeb LLP McDermott, Will & Emery Mitchell Silberberg & Knupp LLP Morrison & Foerster LLP Munger, Tolles & Olson LLP O Melveny & Myers LLP Paul, Hastings, Janofsky & Walker LLP Pillsbury Winthrop LLP Quinn Emanuel Urquhart Oliver & Hedges LLP Sheppard, Mullin, Richter & Hampton LLP Sidley Austin Brown & Wood LLP Sonnenschein Nath & Rosenthal LLP Squire, Sanders & Dempsey L.L.P. The Wilson Sonsini Goodrich & Rosati Foundation Townsend and Townsend and Crew LLP Warner Bros. Entertainment Inc. Willenken Wilson Loh & Stris LLP 3

4 quick program schedule MAY 25, :30 AM Registration and Continental Breakfast 8:30 Welcome and Introduction 8:45 Digital Copyright: Online Content Protection Chasing Technology 10:00 Break 10:15 Mock Preliminary Injunction Hearing in a Patent Case 11:30 Fact or Fiction in Patent Prosecution Today and 12:45 PM Luncheon The Tension Between Antitrust Obligations and IP Rights: Where to Draw the Line? 2:15 Preparing for Battle: Critical Steps Before Filing Patent Suits and Brand Management: Protection, Exploitation, and Enforcement and 3:30 Break International Patent Strategy 3:45 Assessing and Proving Damages from Infringement and 5:00 Adjournment Contemporary Licensing Issues: Semiconductors, Software, and Biotechnology 4

5 USC Law School 2004 Intellectual Property Institute 08:30 start>>> 8:30 AM Welcome and Introduction Morgan Chu Institute Chair Irell & Manella LLP Richard S. Shaffran Institute Executive Director Assistant Dean Continuing Legal Education USC Law School 8:45 AM Digital Copyright: Online Content Protection Chasing Technology Copyright protection in virtually every industry, particularly including music and film, is increasingly challenged by cutting-edge technologies, evolving online business and file sharing models, and the expanding Internet capabilities to act extraterritorially and under fictitious identities. Our distinguished panel of experts will explore the resulting copyright challenges in chasing the convergence of these considerations arising from evolving online technologies, including developments in the law of secondary liability following Sony/Betamax and the application of its principles to the new technologies; the potential liability of online content aggregators, service providers and device suppliers; emerging issues under the DMCA and CDA; and the public policy debate over what constitutes Fair Use and the proper scope of First Amendment protection online. This fast-paced, interactive session promises to provide new insights into these ever-evolving issues of copyright law, strategies for protecting your investment in content, as well as controlling liability when conducting business online, and substantive approaches toward future solutions on digital copyright content protection. David L. Hayes Fenwick & West LLP Charles Nesson William F. Weld Professor of Law and Co-Founder and Co-Director, The Berkman Center for Internet & Society Harvard Law School David Nimmer Visiting Professor, UCLA School of Law Irell & Manella LLP Shira Perlmutter Vice President and Associate General Counsel Intellectual Property Policy AOL Time Warner, Inc. 5

6 10:15 AM Mock Preliminary Injunction Hearing in a Patent Case Two federal judges will preside over a mock hearing on a motion for a preliminary injunction in a patent infringement action. The dispute will center on an actual patent, a prosecution history excerpt, a simple set of claims, and some basic information about the prior art and the accused device. Before the hearing, the audience will receive short briefs from the parties, together with factual background materials. At the hearing, the motion will be argued by two teams of attorneys, who will present their client s competing positions on the issues. Following the argument, there will be a moderated discussion with the judicial panel regarding the substantive and procedural issues presented by the case, and an opportunity for questions to all participants from the audience. The judicial panel includes: The Honorable Gary A. Feess Judge United States District Court, Central District of California The Honorable Roderick R. McKelvie Judge United States District Court, District of Delaware (Retired) Fish & Neave The attorney teams include: Charles S. Barquist Morrison & Foerster LLP Frederick Brown Gibson, Dunn & Crutcher LLP Eric R. Lamison Kirkland & Ellis LLP Victor Savikas Jones Day Moderator: Wayne M. Barsky Gibson, Dunn & Crutcher LLP 11:30 AM Fact or Fiction in Patent Prosecution Today A dynamic panel consisting of the Deputy Commissioner for Patent Examination Policy at the United States Patent and Trademark Office, the Director of the Office of Technology Licensing of a leading University and two leading patent prosecution practitioners will provide differing views in multiple hot topics in patent prosecution. The dynamic dialogue between the panelists will provide the attendees with differing insights on pressing patent prosecution issues, such as, the quality of the patents being issued, the costs of patent prosecution and the effects of recent case law on patent prosecution. Robert A. Green Christie, Parker & Hale LLP Scott C. Harris Fish & Richardson P.C. Katharine Ku Director of Technology Licensing Stanford University Stephen G. Kunin Deputy Commissioner for Patent Examination Policy United States Patent and Trademark Office 6

7 questions for our speakers? don t miss your chance send them to us now?is there a specific question you d like one of our speakers to address in his or her presentation? That issue which just doesn t seem to be resolved? Here s your chance. Simply send an now with your question and the speaker to whom it is addressed to cle@law.usc.edu and we ll pass it along for their consideration! 11:30 AM The Tension Between Antitrust Obligations and IP Rights: Where to Draw the Line? The overarching theme of the session will explore the question of how antitrust analysis and competition concerns interact with enforcement of patent rights and the policies supporting patent law. The panelists will address various governmental initiatives and enforcement actions as well as judicial determinations in which antitrust concepts have been used to limit or constrain the rights of patent holders. The tension between the two disciplines will be discussed using examples arising in the patent litigation settlement, standard setting and other IP contexts. In balancing antitrust and intellectual property concerns what is a) feasible and b) sensible from a policy perspective? Susan Stark DeSanti Deputy General Counsel for Policy Studies Federal Trade Commission Gary L. Reback Carr & Ferrell LLP Suzanne Scotchmer Professor of Economics and Public Policy University of California Berkeley Jeffrey I. Weinberger Munger, Tolles & Olson LLP register online by going to 7

8 2:15 PM Preparing for Battle: Critical Steps Before Filing Patent Suits The panelists will address the steps one must take, and the strategies one should consider, before initiating a patent battle. The discussion will cover subjects including: conducting and documenting the prefiling investigation preserving privilege associated with an investigation determining what liability issues beyond infringement should be considered preliminary financial valuation of a case that has not yet been filed getting one s litigation ducks in a row before filing The panel will, like most prefiling investigations, conclude with a discussion of strategies for selecting the most favorable venue for a particular patent suit. The panelists will address the pros and cons of current patent litigation hotspots. Don W. Martens Knobbe Martens Olson & Bear LLP Kimberly Moore Professor of Law School of Law George Mason University Herbert F. Schwartz Fish & Neave Jonathan H. Steinberg Irell & Manella LLP 2:15 PM Brand Management: Protection, Exploitation, and Enforcement Using real-life examples, the brand management panel provides the trademark practitioner with useful tools for managing a worldwide trademark portfolio. Drawing on his longtime experience in the entertainment industry, Nils Montan of Warner Bros. will explain the fundamentals of portfolio management including when to file, what to file and pitfalls to avoid. Susan Heller of Loeb & Loeb will discuss the impact of the Madrid Protocol and other international treaties on trademark practice. Drawing from the Starbucks experience, David Landau will discuss enforcement issues, including proof problems and other practice challenges facing the owners of major brands. To recap, Adrian Pruetz of Quinn Emanuel will talk about the recent trademark cases that made a difference. Susan L. Heller Loeb & Loeb LLP David Landau Senior Vice President and Deputy General Counsel Starbucks Coffee Company Nils V. Montan Senior Trademark Counsel Warner Bros. Entertainment Inc. Adrian M. Pruetz Quinn Emanuel Urquhart Oliver & Hedges LLP 8

9 2:15 PM International Patent Strategy This will be a panel discussion focusing on the entire breadth of international patent strategy and tactics. The panel will address patent prosecution, licensing, arbitration and litigation. The panel comprises three attorneys from law firms and two attorneys with inhouse experience with Fortune 500 technology companies. Richard L. Donaldson Consultant Former Senior Vice President and General Patent Counsel Texas Instruments, Inc. Jeffrey S. Draeger Assistant Director, Patent Practice Group Intel Corp. Richard T. Ogawa Townsend and Townsend and Crew LLP Michael A. Tomasulo Jones Day Robert C. Weiss Jones Day Richard H. Zaitlen Pillsbury Winthrop LLP >>>continued upcoming programs USC Law School Beverly Hills Bar Association 2004 Institute on Entertainment Law and Business Saturday, September 18, 2004 USC University Park Campus USC Law School 2004 Probate and Trust Conference Friday, November 19, 2004 USC Law School 2005 Tax Institute Monday Wednesday, January 24 26,

10 3:45 PM Assessing and Proving Damages from Infringement A critical element of the protection of intellectual property is the proving of damages in litigation. While there exist guideposts in case law and within the analytical frameworks of economics, finance and accounting, there remain recurrent areas of disagreement in the determinate elements of damage calculations. Moreover, given a set of facts and circumstances, the effective presentation of a case by attorneys, including the use of experts, introduces a human element to this important facet of a case and, ultimately, to the value of intellectual property. This session will explore some of the frequently debated areas regarding damages within litigation, specifically as seen in a mock hearing on damages in a patent case before a Federal District Court judge. The judge will then offer his thoughts on the issues and the arguments as made by the two opposing attorney/expert teams. The session will conclude with a discussion on other current topics in the damages area. Bowne DecisionQuest s Moment to Moment System will be used to provide attendees with immediate reactions to the effectiveness of the arguments presented. Frederick A. Lorig Bright & Lorig, PC Matthew D. Powers Weil, Gotshal & Manges LLP George G. Strong, Jr. Cornerstone Research Christian Tregillis Managing Director Kroll Zolfo Cooper LLC Michael J. Wagner InteCap Inc. The Honorable James B. Zagel Judge U.S. District Court, Northern District of Illinois (Chicago) 3:45 PM Contemporary Licensing Issues: Semiconductors, Software, and Biotechnology This panel will explore contemporary issues in technology licensing post the high technology bubble in three different fields, semiconductors, software, and biotechnology. Each panelist will discuss changes in their field of licensing and the complexities of a more dense patent landscape. Specific emphasis will be placed on semiconductor cross-licensing issues, open source software licensing, and university biotechnology licensing. James R. Bramson America Online, Inc. Michael Cleare Executive Director Science & Technology Ventures Columbia University Michael Stolarski Vice President and Director of Intellectual Property Licensing Motorola, Inc. 5:00 adjournment<<< 10

11 *minimum continuing legal education MCLE credit USC Law School, a State Bar of California approved MCLE provider, certifies that this activity qualifies for Minimum Continuing Legal Education credit in the amount of 6.25 hours. This event may meet the requirements for continuing legal education credits in other states. Please check with the State Bar Association or Supreme Court in the state in which you are seeking continuing legal education credits to see if this program is eligible. hotel information The Beverly Hills Hotel and Bungalows 9641 Sunset Boulevard Beverly Hills, CA (310) The discounted parking rate for the event is $ Your valet ticket will be color coded to reflect this discounted rate. No stamp is necessary. 11

12 planning committee Morgan Chu, Chair Irell & Manella LLP Richard S. Shaffran, Executive Director Assistant Dean Continuing Legal Education USC Law School Robert G. Badal Heller Ehrman White & McAuliffe LLP Penelope Bahn Senior Manager, Corporate Finance Ernst & Young LLP Charles S. Barquist Morrison & Foerster LLP Wayne M. Barsky Gibson, Dunn & Crutcher LLP Duncan J. Cameron Managing Director LECG Gary Clark Sheppard, Mullin, Richter & Hampton LLP Terence J. Clark Greenberg Traurig, LLP Adam Cochran Intellectual Property Counsel California Institute of Technology Allan H. Colman Senior Vice President Bowne DecisionQuest Roderick G. Dorman Hennigan, Bennett & Dorman LLP Lorelei de Larena Intellectual Property Manager UCLA Mark A. Flagel Latham & Watkins, LLP Adam R. Fox Squire, Sanders & Dempsey L.L.P. Russell J. Frackman Mitchell Silberberg & Knupp LLP Michael A. Gold Jeffer, Mangels, Butler & Marmaro LLP Gillian K. Hadfield Professor, USC Law School Principal, LECG Benjamin W. Hattenbach Irell & Manella LLP David L. Hayes Fenwick & West LLP Susan L. Heller Loeb & Loeb LLP Richard C. Hsu Townsend and Townsend and Crew LLP Ronald L. Johnston Arnold & Porter Mimi H. Justice Deloitte & Touche LLP Catherine S. Kirkman Wilson Sonsini Goodrich & Rosati Kelly M. Klaus Munger, Tolles & Olson LLP Daniel M. Klerman Professor of Law and History USC Law School 12

13 Michael M. Krieger Willenken Wilson Loh & Stris LLP Robert G. Krupka Kirkland & Ellis LLP Philip H. Lam Intellectual Property Counsel City of Los Angeles Michael K. Lindsey Paul, Hastings, Janofsky & Walker LLP Cynthia Alison Lock McDermott, Will & Emery Constantine (Gus) Marantidis Christie Parker & Hale LLP Edward J. McCaffery Robert C. Packard Trustee Chair in Law USC Law School Richard T. Ogawa Townsend and Townsend and Crew LLP Edward G. Poplawski Sidley Austin Brown & Wood LLP Adrian M. Pruetz Quinn Emanuel Urquhart Oliver & Hedges LLP Mark A. Samuels O Melveny & Myers LLP Herbert F. Schwartz Fish & Neave George G. Strong, Jr. Cornerstone Research Michael A. Tomasulo Jones Day Christian Tregillis Managing Director Kroll Zolfo Cooper LLC Bryan Vitner Senior Managing Consultant LECG Robert C. Weiss Jones Day Jeremy Williams Senior Vice President, Deputy General Counsel Warner Bros. Entertainment Inc. Jason H. Wilson Willenken Wilson Loh & Stris LLP Richmond A. Wolf Associate Director, Office of Technology Transfer California Institute of Technology Stephen Yamaguchi University Counsel Office of the General Counsel University of Southern California Richard H. Zaitlen Pillsbury Winthrop LLP Robert F. Scoular Sonnenschein Nath & Rosenthal LLP Jonathan H. Steinberg Irell & Manella LLP 13

14 registration Registration Fee includes all program sessions, program luncheon, refreshment breaks, and a copy of the Institute syllabus, an up-to-date volume of analysis and practical materials prepared by our speakers. All badges will be held at Registration, which opens at 7:30am on the morning of the program. Registration is located downstairs in the Crystal Foyer. All requests for refunds must be in writing and postmarked, ed, or faxed no later than May 11, 2004, to IPI Refunds, USC Law School Continuing Legal Education, Los Angeles, CA All refund requests must be accompanied by the registrant s Social Security Number (or Federal Identification Number if the refund is for a firm or corporation). Please note that a processing fee of $55 ($25 for student registrations) will be deducted from all refunds and that no refunds will be processed prior to the Institute. *syllabus A syllabus of up-to-date analysis and practical materials prepared by our speakers will be distributed at the program. Subject to availability, additional copies of the syllabus may be purchased following the program for $135. For more information or to make a purchase, please cle@law.usc.edu. 14 i contact information USC Law School Continuing Legal Education Telephone: Fax: cle@law.usc.edu Our office hours are 9:00 am to 5:00 pm visit our Web site

15 registration form USC LAW SCHOOL 2004 INTELLECTUAL PROPERTY INSTITUTE TUESDAY, MAY 25, 2004 MAIL COMPLETED FORM WITH CHECK OR CREDIT CARD INFORMATION TO: IPI Registration/Continuing Legal Education The Law School University of Southern California Los Angeles, California OR FAX COMPLETED FORM WITH CREDIT CARD INFORMATION TO: Please select your registration type (check only one): $450 Early Bird Registration (postmarked or faxed on or before May 11, 2004) $495 Standard Registration (postmarked or faxed on or before May 11, 2004) $100 Full-Time Student Registration School: How did you hear about this Institute? (check as many as apply) Flyer Friend/Colleague Internet Brochure Other: (Please specify) Please select the 11:30 am session you plan to attend (check only one): Fact or Fiction in Patent Prosecution Today The Tension Between Antitrust Obligations and IP Rights: Where to Draw the Line? Please select the 2:15 pm session you plan to attend (check only one): Preparing for Battle: Critical Steps Before Filing Patent Suits Brand Management: Protection, Exploitation, and Enforcement International Patent Strategy Please select the 3:45 pm session you plan to attend (check only one): Assessing and Proving Damages from Infringement Contemporary Licensing Issues: Semiconductors, Software, and Biotechnology Name of registrant: Firm/Company: (Please photocopy form for additional registrants) Address: City: State: Zip: Telephone: Fax: If you are faxing this completed form, please enter the letter printed to the right of the addressee s name (overleaf): PAYMENT BY CHECK: Please make checks payable to USC Law School. PAYMENT BY CREDIT CARD (Visa or MasterCard only): I authorize the University of Southern California to charge my Institute registration fee as noted above to the following account: Visa MasterCard Cardholder name as printed on card: Account #: Exp.: Cardholder s signature: 15

16 CONTINUING LEGAL EDUCATION The Law School University of Southern California Los Angeles, California Non-Profit Org. U.S. Postage PAID University of Southern California The Law School USC Law School 2004 Intellectual Property Institute