8:00-9:00 a.m.

Registration and Continental Breakfast


9:00-9:15 a.m.

Opening Remarks: IPLAC President, James R. Sobieraj, Partner, Brinks Hofer Gilson & Lione

9:15-9:45 a.m.

Keynote Address: Richard Linn, Circuit Judge, United States Court of Appeals for the Federal Circuit


9:45-10:30 a.m.

Track One: Recent Developments in Patent Law: The Year in Review from MedImmune to eBay to KSR

Edward D. Manzo, Founding Partner, Cook Alex

• Update on obviousness:
  • KSR and its progeny
  • How the Federal Circuit has dealt with the mandate
  • How the USPTO has responded to KSR
  
• Justiciability – DJ jurisdiction in the wake of MedImmune:
  • How the Federal Circuit and District Courts have dealt with the mandate
  
• Pending Legislation:
  • Re jurisdiction of the Federal Circuit and other significant aspects
  
• Consequences of eBay:
  • When and why are permanent injunctions denied?
  • What alternatives are courts using?
  • What, if any, is the effect on preliminary injunctions?
  
• 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

Track Two: Strategic Licensing Considerations in a Global Environment
Vincent A. Sanchez, Partner, 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.

Track One: Litigating IP Rights before the ITC
Jay H. Reiziss, Counsel, Bryan Cave LLP

• The scope of IP Litigation at the ITC: Relief is available for virtually any unfair act in import trade
• Advantages of an ITC action over litigation in U.S. courts
• Tactics and strategies for successful litigation before the ITC
  • Conducting discovery, dealing with ITC staff, trial strategies
  
• Crafting an effective remedy
• Enforcement strategies and considerations

Track Two: New Directions in Patents – Auctions and IP Acquisition Companies
Andrew T. Ramer, President, Ocean Tomo Auctions

• How can patent holders best monetize their patent assets?
• IAM v. (traditional) asset management
• The IP marketplace and IP auctions
• IP in investing and new IP-type financial transactions
• The IP marketplace post eBay, MedImmune, KSR and AT&T

11:30 a.m.-12:15 p.m.

Track One: 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

• Managing outside counsel
• Implementing the best management strategy for the case
• Budgeting for litigation
• The necessity of getting involved in the litigation early on
• Management’s expectations vs. the objective reality
• Issues associated with the impact of the case, including publicity and zealous clients

Track Two: Protecting and Litigating against Theft of Trade Secrets in a High-Tech Environment
R. Mark Halligan, Partner, Lovells LLP

• Trade secret identification and classification protocols
• Protection of trade secrets “in motion” and “at rest”
• Contractual protection of trade secret assets
• Litigation strategies
• Economic Espionage Act of 1996: Evidence of Scienter
• 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.

Track One: Attorney-Client and Work Product Privileges and Ethical Issues in IP Matters
Glen P. Belvis, Partner, Brinks Hofer Gilson & Lione

• Protecting lawyers and clients from inadvertently losing the attorney-client privilege or violating the rules of ethics
• 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
• Key areas where IP lawyers inadvertently find themselves in ethical troubles
• Client intake, conflicts resolution and providing guidance for navigating the gray areas surrounding the attorney-client privilege
• Ethics as they relate to intellectual property law
• Commonality of interest doctrine and the ethical considerations that are under the surface of this doctrine

Track Two: Latest Developments in Trademark Law
Susan Neal, Co-Founder, Neal & McDevitt, LLC (Northfield, IL)

• News from the Supreme Court
• What we have learned from the Federal Circuit
• Nationwide summary of Federal Court decisions
• Recent decisions from the Trademark Trial and Appeal Board

2:45-3:00 p.m.

Afternoon Stretch

3:00-3:45 p.m.

Track One: Asserting Patents against Entire Industries - How To Do It and How To Defend Against It
Raymond P. Niro, Partner, Niro, Scavone, Haller & Niro, Ltd.

• Effectiveness of notice letters
• Early settlement:
  • When is the right time to settle and for the first-to-settle
  
• Choosing your defendants wisely
• Asserting multiple patents
• Joint defense agreements that do not run afoul of antitrust laws
• Skillful use of indemnity agreements

Track Two: The Role of Insurance in Intellectual Property
David R. Melton, Of Counsel, Foley & Lardner LLP

• Patent litigation: insurance and indemnity claims
• Status of case law on insurance coverage
• Indemnity claims under UCC and contract provisions:
  • UCC 2-312(3), identifying contractual indemnity claims
  
• Special problems when method patent claims are asserted
• Notice: when and how to handle notices
• Right to select and control defense counsel: Cumis issues and reservation of rights letters
• Preserving the attorney-client privilege in communications with insurers and indemnitors
• Handling settlement approvals
• 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, United States District Court for the 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 case. 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