Law Seminars International Presents: An Intensive Advanced Conference on

Litigating Patent Damages
Strategic issues for proving and refuting damages claims



May 29 & 30, 2014
San Francisco Marriott Union Square Hotel in San Francisco, CA

Who Should Order This Homestudy

Attorneys and business executives involved with patent transactions and patent litigation

Why You Should Order

Asserting or defending against a patent infringement liability case is easy. Dealing with the patent damages case, plaintiff side or defense, is hard. The last five years have seen remarkable changes in the law and practice of damages standards. Damage verdicts, and claims and awards in patent cases can, and occasionally, do reach levels in the hundreds of millions or billions of dollars. These results can prompt unreasonable expectations by plaintiffs and create understandable apprehension in the eyes of defense-side General Counsels. The uncertainty of damages calculations, the rise of NPE litigation and the lack of consistency between cases, is the source of considerable concern to policymakers and the courts who have reacted with proposed changes in law, changes in procedures and more careful scrutiny of damages theories. These developments have complicated the task of litigators in presenting their damage cases.

This comprehensive conference is designed for the sophisticated patent trial lawyer and business executive, and will enhance everyone's understanding of the state of the art in basis for patent damages analysis. Leading judges, attorneys and damages experts will describe the current standards for calculating damages.

~ Program Co-Chairs: Alan J. Cox, Ph.D. of NERA Economic Consulting and Claude M. Stern, Esq. of Quinn Emanuel Urquhart & Sullivan, LLP

What You Will Learn



Agenda

Thursday, May 29, 2014

8:00 am

Registration Opens

 
8:30 am

Introduction and Overview

Alan J. Cox, Ph.D., Program Co-Chair, Senior Vice-President
NERA Economic Consulting / San Francisco, CA

Claude M. Stern, Esq., Program Co-Chair
Quinn Emanuel Urquhart & Sullivan, LLP / Redwood Shores, CA

 
8:45 am

Case Law Trends for Patent Damages

Big picture overview of key cases and the search for guidance

Christopher Marchese, Esq.
Fish & Richardson P.C. / San Diego, CA

 
9:30 am

Injunctions and Damages for Design Patent Claims vs. Utility Patent Claims

The generous statutory provisions for design patent damages, the Apple v. Samsung verdict, and strategies for defendants

Christopher V. Carani, Esq.
McAndrews, Held & Malloy, Ltd. / Chicago, IL

 
10:15 am

Break

 
10:30 am

Causation: Proving and Refuting the Patented Feature's Value

The use and risks of surveys and other techniques to determine the value of a patent: Apple v. Samsung; HTC Corp. v. Technology Properties

Reuben Chen, Esq.
Cooley LLP / Palo Alto, CA

Christopher J. Banks, Esq.
Morgan, Lewis & Bockius LLP / San Francisco, CA

 
11:45 am

Lunch (on your own)

 
1:00 pm

The Entire Market Value Rule

Recent trends in the evolution of the rule and the way courts are applying it for convoyed sales, derivative sales, and sales of a single complex device (incorporating a patented feature together with unpatented features)

Edward G. Poplawski, Esq.
Wilson Sonsini Goodrich & Rosati / Los Angeles, CA

Case study of Network Protection Sciences, LLC v. Fortinet, Inc

John M. Neukom, Esq.
Quinn Emanuel Urquhart & Sullivan, LLP / San Francisco, CA

 
2:00 pm

Role of the Expert after Apple v. Motorola: Reports, Motions in Limine and Preparing for Trial

Vernon M. Winters, Esq.
Sidley Austin LLP / San Francisco, CA

Mohan Rao, Ph.D., Managing Director and Principal
Navigant Economics / Chicago, IL

 
3:00 pm

Break

 
3:15 pm

How to Construct the Hypothetical Negotiation in Light of Recent Law

Comparability since ResQNet: What is required to demonstrate comparability? Role of the "Book of Wisdom" concept in calculating damages

Mario A. Lopez, Ph.D.
Edgeworth Economics, L.L.C. / San Francisco, CA

Daralyn J. Durie, Esq.
Durie Tangri / San Francisco, CA

 
4:15 pm

Special Address: A View from the Bench on Damages Issues in Patent Litigation

Patent damages; Daubert motions, lawyer presentations, and methodological issues

The Hon. Paul Singh Grewal, Magistrate Judge
United States District Court, Northern District of California / San Jose, CA

 
5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by NERA Economic Consulting and Quinn Emanuel Urquhart & Sullivan, LLP

 

Friday, May 30, 2014

8:30 am

Patent Valuation: Lessons from Recent Transactions in the Patent Monetization Marketplace

Panel discussion on recent trends in monetization and the role of litigation

Claude M. Stern, Esq., Moderator, Program Co-Chair
Quinn Emanuel Urquhart & Sullivan, LLP / Redwood City, CA

Ron Epstein, Esq., CEO
Epicenter IP Group LLC / San Mateo, CA

Chad Hilyard, Esq., Chief IP Counsel
Rockstar / Plano, TX

 
9:30 am

Issues Raised in CMU v. Marvell: Foreign Sales; The Rate Base Implementation of Analytical Methods to Measure Value

The use of the Analytical Method as an alternative to the Hypothetical Negotiation, including product made and sold outside the U.S. in the royalty base

Alan J. Cox, Ph.D., Program Co-Chair, Senior Vice President
NERA Economic Consulting / San Francisco, CA

Strategic and tactical implications for the party offering the witness, and the party challenging the testimony; issues involving the way the expert goes about developing the opinion

Paul Alexander, Esq.
Arnold & Porter LLP / Palo Alto, CA

 
10:30 am

Break

 
10:45 am

Splitting Profits Between Patent Owners and Manufacturers

Pros and cons of various economic approaches and how the courts are treating them: Determining the incremental benefit from incorporating a patented feature; the appropriate role for the Nash Bargaining Solution

Bryan K. Anderson, Esq.
Sidley Austin LLP / Palo Alto, CA

William C. Rooklidge, Esq.
Jones Day / Irvine, CA

 
12:15 pm

Lunch (on your own)

 
1:30 pm

Apportionment When There are Several Blocking Patents

What to do when many patents are part of the product and all are essential

David Blackburn, Ph.D., Vice President
NERA Economic Consulting / Washington, DC

Annette L. Hurst, Esq.
Orrick, Herrington & Sutcliffe LLP / San Francisco, CA

Scott R. Mosko, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Palo Alto, CA

 
2:45 pm

Break

 
3:00 pm

Calculating Market Shares and Other Issues in Lost Profits Calculations

William S. Choi, Ph.D., Managing Director
AlixPartners, LLP / Los Angeles, CA

Douglas E. Lumish, Esq.
Latham & Watkins LLP / Menlo Park, CA

 
4:00 pm

Determining Reasonable Royalty Rates for FRAND Encumbered Patents

Impact of Microsoft v. Motorola; innovation and other decisions on FRAND licensing in the U.S.

Chad Hilyard, Esq., Chief IP Counsel, Moderator
Rockstar / Plano, TX

Matthew R. Lynde, Ph.D., Vice President
Cornerstone Research / Hillsborough, CA

J. Gregory Sidak, Esq.
Criterion Economics LLC / Washington, DC

 
5:00 pm

Evaluations and Adjourn

 


Cost

Regular tuition for this program is $1245 with a group rate of $935 each for two or more registrants from the same firm. For government employees, we offer a special rate of $830. For students and people in their job for less than a year, our rate is $622.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Continuing Education Credits

Live credits: Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 13.5 California MCLE credits. Upon request, we will apply for, or help you apply for, CLE credits in other states and other types of credits.



Cancellation

There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders



Faculty Bios

Alan J. Cox, Ph.D., Program Co-Chair, is Senior Vice President, economist and damages expert at NERA Economic Consulting. He has estimated and testified on intellectual property damages in patent infringement, patent fraud, alleged misappropriation of trade secrets and other intellectual property matters in a wide variety of industries.

Claude M. Stern, Program Co-Chair, partner at Quinn Emanuel Urquhart & Sullivan, LLP, co-chairs the National Intellectual Property Litigation Practice and focuses on intellectual property and technology litigation. He is a Super Lawyer and ranked in California Intellectual Property Patent Litigation, Chambers USA 2013.

Paul Alexander, senior counsel in the Intellectual Property and Business Litigation practice groups at Arnold & Porter LLP, is experienced in civil jury and nonjury trials and arbitrations in commercial cases involving antitrust laws, unfair competition laws, patent laws, trade secret laws, fraud and contract matters.

Bryan K. Anderson, partner in Sidley Austin LLP's Patent Litigation group, represents clients in intellectual property disputes. His litigation responsibilities have included all aspects of patent case preparation and trial.

Christopher J. Banks, partner, Morgan, Lewis & Bockius LLP, focuses on jury trials and representing clients in the information technology and biopharmaceutical industries with disputes related to unfair business practices, intellectual property, antitrust, breach of contract, employee raiding, and non-competition issues.

David Blackburn, Ph.D., Vice President at NERA Economic Consulting, is experienced in intellectual property, antitrust and competition policy, and econometric analysis.

Christopher V. Carani , partner at McAndrews, Held & Malloy Ltd., a leading practitioner in the field of Design IP Law, is experienced in litigating and securing design rights and represents some of the world's most design centric companies. He is past chair of ABA's and AIPLA's Design Law Committees.

Reuben Chen, partner, Cooley LLP, focuses on technology and intellectual property litigation and counseling and assists clients in intellectual property matters across a wide range of technologies.

William S. Choi, Ph.D., Managing Director in AlixPartners, LLP's Financial Advisory Services practice, is an economist specializing in quantitative methods, finance, statistics, intellectual property, antitrust, and commercial damages.

Daralyn J. Durie, co-founder, Durie Tangri, serves as lead counsel in high-stakes patent cases for companies and also represents defendants in nationwide and international class actions.

Ron Epstein, CEO at Epicenter IP Group LLC, is experienced in developing, optimizing, and transacting intellectual property asset portfolios. He is recognized as a global leader in helping patent owners maximize the value of their IP.

The Hon. Paul Singh Grewal, Special Address, is Magistrate Judge at the United States District Court, Northern District of California and has presided over and settled criminal and civil cases in a wide range of subject areas, including patent, employment, civil rights, commercial contract, trademark, and federal misdemeanor cases.

Chad Hilyard, Chief IP Counsel at Rockstar, is experienced in intellectual property business, including licensing, litigation, sales, offensive patent assertions, portfolio development and management, and intellectual property counseling.

Annette L. Hurst, partner and member of the Intellectual Property Group at Orrick, Herrington & Sutcliffe LLP, is an experienced trial lawyer who has tried patent, copyright, trade secret, trademark and business tort claims. She was named "Female Litigator of the Year West" in 2013 by Benchmark Litigation.

Mario A. Lopez, Ph.D., partner at Edgeworth Economics, L.L.C., is an expert in the application of rigorous economic methods to complex legal disputes and regulatory matters and in the economic valuations of patents and other forms of intellectual property.

Douglas E. Lumish, partner at Latham & Watkins LLP, is a patent litigator who has served as lead trial counsel on numerous matters for the country's leading technology companies.

Matthew R. Lynde, Ph.D., Vice President at Cornerstone Research, is experienced as an economist in government, academic, and commercial environments. Previously, he was a professor at City College of New York and a partner at PricewaterhouseCoopers.

Christopher Marchese, principal, Fish & Richardson P.C., focuses on patent litigation, including cases involving computer networking, hardware, and software, as well as integrated circuits, compression technology, and wireless communications.
Full bio and contact info for Christopher Marchese at Fish & Richardson P.C.

Scott R. Mosko, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, focuses on intellectual property litigation and has represented both plaintiffs and defendants in patent, copyright and trade secret cases involving a variety of technologies.
Full bio and contact info for Scott R. Mosko at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

John M. Neukom, partner at Quinn Emanuel Urquhart & Sullivan, LLP, is lead counsel in numerous high-stakes commercial disputes.

Edward G. Poplawski, partner, is head of Wilson Sonsini Goodrich & Rosati's patent litigation practice and focuses on patent litigation, including jury trials and proceedings before the International Trade Commission.

Mohan Rao, Ph.D., Managing Director and Principal with Navigant Economics, is an Adjunct Professor in the Department of Industrial Engineering and Management Sciences at the McCormick School of Engineering and Applied Science at Northwestern University.

William C. Rooklidge, partner at Jones Day, practices intellectual property litigation and related counseling, focusing on patent infringement trial and appellate litigation.

J. Gregory Sidak, Criterion Economics LLC, is an expert on antitrust, regulation, intellectual property, damages, and commercial litigation. He is also the founding editor of the Journal of Competition Law & Economics for the Oxford University Press.

Vernon M. Winters, Moderator, partner at Sidley Austin LLP, is known for finding ways to win hard patent cases. He has worked with a number of the country's leading high-technology and biopharmaceutical companies. He has been involved in high-stakes jury, bench, and arbitration trials.

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