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Defense 2.0: New Strategies for Reducing Patent Risk

High Tech Law Institute

8:45am – 5:00pm
Locatelli Hall

Conference Speakers and Schedule
Conference Resources
Conference Videos

For many years, technology companies have accumulated large numbers of patents based on the belief that doing so ensures their freedom to operate. This freedom has come under increasing threat from both patent-assertion entities (PAEs), who have enforced their patents against a wide range of high tech companies, and the growing number of lawsuits between product companies. The secondary market has fueled both trends by funneling patents to PAEs and by enabling practicing companies to acquire large patent portfolios, most recently from Nortel and Motorola Mobility.

Companies need to rethink how best to maintain their freedom to develop and launch innovative new products and services in light of these developments. This conference will bring together professors, attorneys and other patent experts to explore new defensive strategies for navigating the evolving patent landscape in the US and abroad.

CLE: This event will qualify for at least 5.5 hours of CLE. Santa Clara Law is a State Bar of California approved MCLE provider.

Sponsored by:

The High Tech Law Institute at Santa Clara University
Berkeley Center for Law and Technology

High Tech Law Institute

Special thanks to the High Tech Law Institute Benefactors

Cooley Schwegman Blakeley Orrick

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Conference Speakers and Schedule

8:45 – 9:00 Welcome (Video)

9:00 – 9:30 Opening Remarks (Video)

  • Laura Sydell, NPR/This American Life (“When Patents Attack”)

9:30 – 9:45 Patent Litigation by the Numbers (Video) (Slides)

9:45 – 10:45 New Challenges in Building a Defensive Portfolio: Market Liquidity and Foreign Patents (Video)

10:45 – 11:15 Break

11:15 – 12:30 Hot Topics: Creative Defensive Strategies (Video) (Slides)

12:30 – 2:00 Lunch

1:15 Lunchtime Panel: A View from the Other Side (Video)

2:00 – 3:00 Market Solutions (Video)

3:00 – 3:15 Rebecca Eisenberg (Video)

3:15 – 3:40 Break

3:40 – 4:40 Data-Driven Risk Management (Video)

4:40 – 5:00 Closing Thoughts: Patent Defense and the America Invents Act (Video)

5:00 – 6:00 Reception

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Conference Resources

Colleen V. Chien, Turn the Tables on Patent Trolls, Forbes, Aug. 9, 2011.

Colleen V. Chien, Predicting Patent Litigation, 90 Tex. L. Rev. ___ (2011).

Colleen V. Chien, Of Trolls, Davids, Goliaths, and Kings: Narratives and Evidence in the Litigation of High-Tech Patents, 87 N.C. L. Rev. 1571 (2009).

Colleen V. Chien, From Arms Race to Marketplace: The New Complex Patent Ecosystem and its Implications for the Patent System, 62 Hastings L.J. 297 (2010).

Leib Dodell & Kimberly Cauthorn, Using Insurance to Manage Patent Risks, IAM Magazine, June 4, 2011.

Rebecca Eisenberg, Patent Costs and Unlicensed Use of Patented Inventions, 78 U. Chi. L. Rev. 53 (2011).

Thomas J. Ewing, Indirect Exploitation of Intellectual Property Rights by Corporations and Investors: IP Privateering & Moderns Letters of Marque & Reprisal, 4 Hastings Sci. & Tech. L.J. (forthcoming Winter 2011).

Thomas J. Ewing, Practical Considerations in the Indirect Deployment of Intellectual Property Rights by Corporations and Investors: Limitations on Letters of Marque & Reprisal for Latter Day Sea Dogs, 4 Hastings Sci. & Tech. L.J. (forthcoming Winter 2011).

Thomas J. Ewing & Robin Feldman, The Giants Among Us, 2012 Stan. Tech. L. Rev. ___

Mark A. Lemley, Things You Should Care About in the New Patent Statute, Sept. 16, 2011.

Steve Lohr, A Bull Market in Tech Patents, The New York Times, Aug. 16, 2011.

Michael J. Mazzeo et al., Excessive or Unpredictable? An Empirical Analysis of Patent Infringement Awards, June 17, 2011.

Katherine Noyes, It’s Clear Why Software Patents Need to Disappear, PC World, Aug. 16, 2011.

Ben Popper, Patent Trolls Come in All Shapes and Sizes, New York Observer, Aug. 8, 2011.

Paul H. Roeder, Resetting Damages in NPE Litigation Against IT Cos., Law 360, April 11, 2011 (registration required).

Laura Sydell, When Patents Attack, This American Life, NPR, July 22, 2011.

Post Event Coverage

Eric Goldman, Notes from HTLI Conference on Defending Against Patent Risk, Technology & Marketing Law Blog, October 31, 2011.

Jeff Roberts, Chinese Trolls and Privateers, paidContent.org, October 14, 2011.

David Smith, Patent War Lawyers Assemble in Silicon Valley, Valley Mole, October 14, 2011

Joff Wilde, IAM Heads to the USA, IAM Magizine, October 11, 2011

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Conference Videos

Welcome (Video)
Eric Goldman, Santa Clara University School of Law
Robert Barr, University of California Berkeley School of Law

Opening Remarks (Video)
Laura Sydell, NPR/This American Life (“When Patents Attack”)

Patent Litigation by the Numbers (Video) (Slides)
Colleen Chien, Santa Clara University School of Law

New Challenges in Building a Defensive Portfolio: Market Liquidity and Foreign Patents (Video)
Moderator: Andre Marais, Schwegman, Lundberg & Woessner
Jeff Draeger, Intel
Eugene Kim, Zynga
Xiang Wang, Orrick (Slides)
Lisa McFall, Ovidian (Slides)

Hot Topics: Creative Defensive Strategies (Video) (Slides)
Moderator: Darren Donnelly, Fenwick & West
Douglas Luftman, CBS Interactive
Paul Roeder, Hewlett-Packard
Lisa Buccino, SAP
Michael McCoy, Appsterdam Legal Defense Fund
Karen Boyd, Turner Boyd

A View from the Other Side (Video)
Moderator: Peter Menell, University of California Berkeley School of Law
Joff Wild, IAM Magazine
Jim Peacock, NociMed, LLC
Tom Ewing, Avancept

Market Solutions (Video)
Moderator: Bijal Vakil, White & Case
Jason Schultz, University of California Berkeley School of Law
Dan Lang, Cisco Systems
Tom Ewing, Avancept
Kimberly Cauthorn, Duff & Phelps

Professor Rebecca Eisenberg (Video)

Data-Driven Risk Management (Video)
Moderator: Mark Flanagan, Wilmer Hale
Colleen Chien, Santa Clara University School of Law (Slides)
Mallun Yen, RPX Corporation
Joshua Walker, Lex Machina (Slides)
Michael Mazzeo, Northwestern University, Kellogg School of Management (Slides)

Closing Thoughts: Patent Defense and the America Invents Act (Video)
Mark Lemley, Stanford Law School

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