October 12, 2007 n Hyatt Regency n Chicago
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1 West Legalworks and the Intellectual Property Law Association of Chicago Present: Intellectual Property Law Summit 2007 Strategic Tools and Best Practices for Leveraging and Protecting Your IP in Today s Competitive Market Hear from top attorneys at these leading companies: n McDonald s Corporation n General Motors n Ocean Tomo n Motorola n Lovells LLP n DLA Piper n Bryan Cave LLP n Niro, Scavone, Haller & Niro n Cook Alex n USG Corporation n Foley & Lardner LLP n Siemens n Illinois Tool Works n and more..!!!! Sponsor: October 12, 2007 n Hyatt Regency n Chicago Program Developers:
2 Strategic Tools and Best Practices for Leveraging Your IP in Today s Competitive Market It is not enough to understand the laws of Intellectual Property. It must be actively used as a management tool to direct businesses into the future. James Conley, Kellogg Center for Research and Technology Intangible assets, including intellectual property, account for nearly one-third of the value of all U.S. stocks, about $5 trillion to $5.5 trillion, or 45% of U.S. GDP, this according to the Wall Street Journal. Successful intellectual property portfolio management, therefore, is essential to a business s continued growth and development. Failing to manage and protect your IP can result in lost revenue and may also lead to loss of future rights. Now, more than ever, attorneys must be equipped with up-to-the-minute legal and business strategies for successfully managing, enforcing and protecting patents, copyrights, trademarks and other intangible assets. West Legalworks and the Intellectual Property Law Association of Chicago (IPLAC) has created this one-of-a-kind event to help you protect your (or your client s) IP from legal challenges. We have brought together a distinguished faculty of patent, trademark and copyright experts to share their experiences and insights to date. These experts will address such key issues as: n Identifying the right licensing strategy for your company n Impact of KSR, MedImmune, ebay and other key decisions on your patent portfolio n Latest news on patent auctions n Keeping the lid on trade secrets and what to do when they re exposed n Advantages of an ITC action over litigation in U.S. courts n Common mistakes to avoid when litigating an IP infringement case n Key areas where IP lawyers inadvertently find themselves in ethical troubles Co-Chairs Mark I. Feldman DLA Piper James R. Sobieraj Brinks Hofer Gilson & Lione From the Bench: Honorable James F. Holderman Chief Judge of the U.S. District Court for the Northern District of Illinois Honorable Matthew F. Kennelly Northern District of Illinois Honorable James L. Robart Western District of Washington Honorable James M. Rosenbaum District of Minnesota Speakers Glen P. Belvis Brinks Hofer Gilson & Lione Mark W. Croll Vice-President, Patents and Technology Illinois Tool Works Inc. Glenview, IL Michael M. Geoffrey Chief Intellectual Property Counsel USG Corporation R. Mark Halligan Lovells LLP Edward D. Manzo Founding Cook Alex David R. Melton Of Counsel Foley & Lardner LLP Jonathan P. Meyer Senior Vice President, Intellectual Property Motorola, Inc. Schaumburg, IL Susan Neal Co-Founder Neal & McDevitt, LLC Northfield, IL Raymond P. Niro Niro, Scavone, Haller & Niro, Ltd. Andrew T. Ramer President Ocean Tomo Auctions Jay Reiziss Counsel Bryan Cave LLP Washington DC Vincent A. Sanchez DLA Piper Anthony Luke Simon Attorney General Motors Detroit, MI Laura M. Slenzak Senior Intellectual Property Counsel Siemens Corporation Auburn Hills, MI Dave Weidenfeld Managing Counsel McDonald s Corporation Oak Brook, IL
3 Program Highlights 8:00-9:00 a.m. Registration and Continental Breakfast 9:00-9:15 a.m. Opening Remarks: IPLAC President, James R. Sobieraj,, Brinks Hofer Gilson & Lione 9:15-9:45 a.m. Keynote Address: 9:45-10:30 a.m. Recent Developments in Patent Law: The Year in Review from MedImmune to ebay to KSR Edward D. Manzo, Founding, Cook Alex n Update on obviousness: KSR and its progeny How the Federal Circuit has dealt with the mandate How the USPTO has responded to KSR n Justiciability DJ jurisdiction in the wake of MedImmune: How the Federal Circuit and District Courts have dealt with the mandate n Pending Legislation: Re jurisdiction of the Federal Circuit and other significant aspects n Consequences of ebay: When and why are permanent injunctions denied? What alternatives are courts using? What, if any, is the effect on preliminary injunctions? n Active Inducement: The Federal Circuit s 2007 en banc clarification of conflicting precedents How the test for inducement applies How evidence of non-willfulness may relate to active inducement Strategic Licensing Considerations in a Global Environment Vincent A. Sanchez,, DLA Piper Dave Weidenfeld, Managing Counsel, McDonald s Corporation Key licensing terms from the licensor s and licensee s perspective Cross-border licensing transactions Enforcing license agreements in multiple jurisdictions Managing the financial and reputational risk in cross-border transactions Recovering your intellectual property from another country 10:30-10:45 a.m. Morning Coffee Break 10:45-11:30 a.m. Litigating IP Rights before the ITC Jay H. Reiziss, Counsel, Bryan Cave LLP n The scope of IP Litigation at the ITC: Relief is available for virtually any unfair act in import trade n Advantages of an ITC action over litigation in U.S. courts n Tactics and strategies for successful litigation before the ITC: Conducting discovery, dealing with ITC staff, trial strategies n Crafting an effective remedy n Enforcement strategies and considerations: New Directions in Patents Auctions and IP Acquisition Companies Andrew T. Ramer, President, Ocean Tomo Auctions n How can patent holders best monetize their patent assets? n IAM v. (traditional) asset management n The IP marketplace and IP auctions n IP in investing and new IP-type financial transactions n The IP marketplace post ebay, MedImmune, KSR and AT&T 11:30 a.m.-12:15 p.m. Managing IP Litigation from In-House Counsel s Perspective Mark W. Croll, Vice-President, Patents and Technology, Illinois Tool Works Inc. Michael M. Geoffrey, Chief Intellectual Property Counsel, USG Corporation Jonathan P. Meyer, Senior Vice President, Intellectual Property, Motorola, Inc. Anthony Luke Simon, Attorney, General Motors Laura M. Slenzak, Senior Intellectual Property Counsel, Siemens Corporation n Managing outside counsel n Implementing the best management strategy for the case n Budgeting for litigation n The necessity of getting involved in the litigation early on n Management s expectations vs. the objective reality n Issues associated with the impact of the case, including publicity and zealous clients Protecting and Litigating against Theft of Trade Secrets in a High-Tech Environment R. Mark Halligan,, Lovells LLP
4 n October 12, 2007 n 9:00am - 4:45pm n 8:00-9:00am - Registration & Breakfast n 5:00pm - Cocktail Reception n Trade secret identification and classification protocols n Protection of trade secrets in motion and at rest n Contractual protection of trade secret assets n Litigation strategies n Economic Espionage Act of 1996: Evidence of Scienter n Computer Fraud & Abuse Act: Unauthorized access 12:15-1:45 p.m. Luncheon Keynote Speaker Honorable James F. Holderman, Chief Judge of the U.S. District Court for the Northern District of Illinois 1:45-2:45 p.m. Attorney-Client and Work Product Privileges and Ethical Issues in IP Matters Glen P. Belvis,, Brinks Hofer Gilson & Lione n Protecting lawyers and clients from inadvertently losing the attorney-client privilege or violating the rules of ethics n Ethical and privilege issues with use of new collaborative electronic databases and virtual work rooms in the context of patent prosecution, due diligence and other IP settings n Key areas where IP lawyers inadvertently find themselves in ethical troubles n Client intake, conflicts resolution and providing guidance for navigating the gray areas surrounding the attorney-client privilege n Ethics as they relate to intellectual property law n Commonality of interest doctrine and the ethical considerations that are under the surface of this doctrine Latest Developments in Trademark Law Susan Neal, Co-Founder, Neal & McDevitt, LLC (Northfield, IL) n News from the Supreme Court n What we have learned from the Federal Circuit n Nationwide summary of Federal Court decisions n Recent decisions from the Trademark Trial and Appeal Board 2:45-3:00 p.m. Afternoon Stretch 3:00-3:45 p.m. Asserting Patents against Entire Industries - How To Do It and How To Defend Against It Raymond P. Niro,, Niro, Scavone, Haller & Niro, Ltd. n Effectiveness of notice letters n Early settlement: When is the right time to settle and for the first-to-settle n Asserting multiple patents n J oint defense agreements that do not run afoul of antitrust laws n Skillful use of indemnity agreements The Role of Insurance in Intellectual Property David R. Melton, Of Counsel, Foley & Lardner LLP n Patent litigation: insurance and indemnity claims n Status of case law on insurance coverage n Indemnity claims under UCC and contract provisions: UCC 2-312(3), identifying contractual indemnity claims n Special problems when method patent claims are asserted n Notice: when and how to handle notices n Right to select and control defense counsel: Cumis issues and reservation of rights letters n Preserving the attorney-client privilege in communications with insurers and indemnitors n Handling settlement approvals n Timing and strategy for declaratory judgment actions 3:45-4:45 p.m. A View from the Bench: Judges Speak Out on Patent Litigation Honorable Matthew F. Kennelly, United States District Court for the Northern District of Illinois Honorable James L. Robart, Western District of Washington Honorable James M. Rosenbaum, Chief District Court Judge, District of Minnesota Three distinguished federal judges will candidly discuss what they consider when deciding patent infringement cases. Gain an insider s view of the judges thought processes. Learn what you should be doing in the courtroom as well as what mistakes you should be avoiding! 5:00 p.m. Cocktail Reception Who Should Attend: patent, trademark and copyright attorneys; in-house counsel; IP consultants; patent agents; litigators n Choosing your defendants wisely
5 Claim Construction in the Federal Circuit 2007 Edition by Edward D. Manzo & the Intellectual Property Law Association of Chicago-Litigation Committee A concise and handy review of precedential cases of the U.S. Court of Appeals for the Federal Circuit dealing with patent claim construction in 2007 One Softbound Volume Updated Annually product code: $95.00 HOW TO ORDER: PHONE: OR FAX: west.legalworkspublications@thomson.com ONLINE: Program Developers Sponsor Founded in 1884, IPLAC is our nation s oldest intellectual property law association. Today, IPLAC is one of the most active IP law associations with approximately 1,000 members. IPLAC offers affordable, convenient, seminars that help professionals meet their CLE requirements in the rapidly-changing IP field. IPLAC committees cover every aspect of IP law, and have submitted amicus briefs to the Federal Circuit and Supreme Court. West Legalworks, a Thomson West business, develops and executes over one hundred business of law, practice of law, and custom professional events annually. Our world-class legal content and end-to-end execution capabilities consistently provide the best value and level of service to event attendees, speakers, and sponsors. Our capabilities include access to unparalleled relationships with prestigious faculty, speakers, and over 2,000 Thomson West authors, editors, and lecturers. West Legalworks also publishes books and newsletters for the industries that we serve. Thomson Scientific s IP law products and services provide unparalleled depth and breadth of patent and trademark content, coupled with unique tools for intellectual property research, analysis, prosecution and reporting, including Aureka, Delphion, Dialog, DWPI, PatentWeb and Thomson Data Analyzer. Together, our IP products, services and solutions will help you maximize the value you deliver to your clients. 3 EASY WAYS TO REGISTER Phone: (800) or (212) west.legalworksregistration@thomson.com Visit us at: REGISTRATION Intellectual Property Law Summit 2007 October 12, 2007 Hyatt Regency Chicago The registration fee includes the conference, luncheon, reception and course materials. All payments must be received prior to the start of the conference. (code ) for non-iplac members... $795 (code ) for IPLAC members... $695 CANCELLATIONS AND CHANGES: Cancellations received two weeks prior will receive a full refund, less a $95.00 fee. Cancellations received less than two weeks before the event will be credited towards another seminar (to be used within 12 months) less the administrative charge of $ Seminars are held subject to enrollment. Dates, venue and program details are based on information available upon publication of the brochure, and may be subject to change. In the event of a conference cancellation, West Legalworks will make a full refund of any registration fees paid but assumes no liability for non-refundable transportation costs, hotel accommodations or additional costs incurred by registrants. CONTINUING EDUCATION CREDIT: States have widely varying regulations regarding CLE credit. Please contact West Legalworks for inquiries about the availability of CLE credit in your state. West Legalworks is an approved CLE provider in New York, California and Illinois. Financial assistance is available in the event of hardship. Call (800) for details. West Legalworks is registered with the National Association of State Boards of Accountancy (NASBA) as a sponsor of continuing professional education on the National Registry of CPE Sponsors. State boards of accountancy have final authority on the acceptance of individual courses for CPE credit. Complaints regarding registered sponsors may be addressed to the National Registry of CPE sponsors, 150 Fourth Avenue North, Suite 700, Nashville, TN Web site: For more information regarding administrative policies such as complaints and refunds, please contact our offices at Intermediate level. No advanced preparation required. Previous training or experience with field of study a prerequisite. For specific CPE credits contact West Legalworks at CONFERENCE SITE LOCATION: Hyatt Regency Chicago, 151 E. Wacker Drive, PHONE: For hotel rates and reservations, Laura Holtzman at laura.holtzman@thomson.com. NO TAPE RECORDING PERMITTED. DISCLAIMER: The West Legalworks team has the right to refuse any registration at its own discretion.
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