Momentum: 2016 IP Counsel Exchange


Fish is a Founding Sponsor at the IP Counsel Exchange, December 1, 2016 at Interface in New York, NY.

Principal and Post-Grant Practice Co-Chair Karl Rennerand Principal Tom Rozylowiczare moderators during this premier event for corporate IP counsel. The newly expanded IP Counsel Exchange will focus on IP, patent portfolio management and litigation strategy, and post-grant practice. Panel details below. For more information and to register, visit www.ptabevents.com.

December 1, 2016

10:20am PTAB Litigation Hot Topics: Estoppel, Privy, Real Party in Interest (RPI) and Joint Defense Groups (JDG): An Analysis of the Issues

As recent decisions have shown, improper identification of the RPI can result in the denial of a petition and ultimately trigger the loss of the right to file a corrected petition, thus precluding the filing of an IPR by a petitioner. Related to the RPI issue, often in PTAB proceedings several of the same parties are name in different orrelated actions that may challenge similar or the same patent claims. As a strategy to address issues such as privilege, cost, discovery and evidence, it may prove most fruitful to join or establish a JDG. During this session benefit from an in-depth examination of current issues surrounding RPI, estoppel and JDGs as the paneladdresses such issues as:

  • The timing of the identification of RPIs
  • The potential estoppel impact and res judicata analysis that can be applied in the RPI context
  • The pros and cons of establishing or joining a JDG in a PTAB proceeding:
    • protection of attorney-client privilege and work product
    • alignment of parties with common interest
    • coordination of strategies to create a unified defense strategy
    • the ability to divide and conquer on issues
    • reduced cost implications
    • use of experts

David Killough, Assistant General Counsel, Microsoft Corporation
Deanna Kwong, IP Litigation Counsel, Hewlett Packard Enterprises
W. Karl Renner, Principal, Fish & Richardson

2:10pm Examining the Current State of the Law on Indemnity: Perspectives from the Customer and Supplier Side on the Challenges, Hot Topics and Current Issues

As an in-house IP counsel you are front and center in protecting the interests of your business through the use of effective contract negotiation and drafting. Benefit during this panel from a practical analysis of the key issues surrounding indemnity, how these issues change depending on your position of negotiation and what themost important protections and clauses are that you want to address upfront.

Rouz Tabbador, VP and Chief IP Counsel, Core Logic
Renee Brown, Associate General Counsel, Knowles Corporation
Tom Rozylowicz, Principal, Fish & Richardson

3:45pmCross-Jurisdictional IP Litigation Interplay - Pet Peeves from the Bench on Timing, Discovery, Evidence, Claim Construction and the Management of Joint Proceedings

A rare opportunity to hear directly from a diverse cross-section of the bench representing key jurisdictions, learn what Judges true "pet peeves" are as you hear firsthand on key preferences and dislikes. Understand thetype of information/behavior the Judges will tolerate and reject by parties on both sides and gain insider perspectives on how to best position acase for success.

Hon. Charles E. Bullock,Chief Administrative Law Judge,U.S. International Trade Commission
Hon. Larry J. McKinney,Senior U.S. District Judge,U.S. District Court, Southern District of Indiana
Hon. John D. Love,U.S. Magistrate Judge,U.S. District Court, Eastern District of Texas
W. Karl Renner, Principal, Fish & Richardson
Hon. Kimberly McGraw, Administrative Patent Judge, U.S. Patent Trial Appeal Board