4.10 Leadership lessons
The day's final panel discussed leadership development. Some advice shared by the six-strong panel (moderated by Bhanu Sadisavan of McDermott Will & Emery) was:
- Don't be afraid; go back and thank those who helped you; take time to recharge and build relationships (Kate Drakos, Microsoft)
- Don't wait to be called a leader; embrace opportunities; factor in me-time as well as work and family time (Kieran Kieckhefer, McDermott)
- Work out what you're passionate abut; look for volunteering opportunities (Laurie Charrington, Intel)
- Have a best friend at work to recharge with; make time to be impactful; acknowledge there's life outside of the office (Elizabeth McBride, Applied Materials)
- Leadership is about influence not just roles; make friends with people in other teams (Sanam Saaber, Box)
The panel also discussed "diversity of thought" in the workforce, and the role diversity and inclusion plays in selecting outside counsel.
3.45 Coffee break
Cheese and pizza at the afternoon networking break!
2.50: Privacy and data protection
Speakers from various companies discussed the challenges of addressing privacy, data protection and ownership issues in agreements - and provided useful practical tips on negotiating agreements and contracts.
Debbie Rosenbaum of AdRoll said she recommends telling the other party about your company and how you operate right at the start of the negotiation: "That's super helpful, especially on privacy when everyone's on eggshells." Endorsing this emphasis on building trust, Nicole Campbell of InsideView said: "Whether or not there is highly sensitive data is the first question ... Some of what I do is talking people off the ledge." She also recommended using the "Comment" function in Word to explain why you are making changes to a document, to improve communication with the other party.
When it comes to IP rights, said Deborah Davis Han of Zynga, an important question is: what are you getting the rights to? "Business folks don't necessarily appreciate the nuances of what they're going after." For example, if you are licensing a song, or the recording of a song? "There may be different steps you need to take them through ... there may be many different rights owners." Not only may the copyright owners be difficult to locate, but they may all want preferential terms. "Being upfront with people about how their content will be used gets you a long way," added Rosenbaum,
The panel also featured Doris Hines and Lily Lim of Finnegan Henderson. Lim discussed the problems that can arise where licensors and licensees don't agree about enforcement: "It's not clear what you can put in the agreement but perhaps you can put time limits on when the licensor needs to act."
2.00: In-house counsel discuss arbitration
Post-lunch, a panel of in-house counsel from Toyota Motor Sales, BlackBerry, Samsung Research Americas and Edgewater Networks led a wide-ranging discussion on IP in arbitration. Christine Lofgren, Mary Huser, Charlotte Falla and Priya Venkat covered questions such as: what kinds of IP disputes are suitable for arbitration? What the pros and cons compared to litigation? One arbitrator or three? Will decisions (including on invalidity) be recognised?
There were lots of questions from the audience, some of whom also shared their experiences and war stories from arbitrations, including on issues such as venue, applicable law, discovery, carve outs and pitfalls to avoid.
The conclusion was that arbitration can be valuable, but is of most benefit where there is an existing relationship, such as a contract or licence, and in particular where there is an enforceable arbitration clause. By contrast, only an estimated 5% of IP infringement cases are arbitrated.
After a busy morning, it's time for lunch!
The hot topic of PTAB was the subject of the pre-lunch session, with a show of hands revealing that many of the audience have experience before the PTAB, either as patent owner or petitioner.
Judge Tina Hulse of the USPTO provided an insight into how cases proceed and offered tips for practitioners with respect to petitions, patent owner responses and oral hearings.
Gabrielle Higgins of Ropes & Gray said she has been impressed by the knowledge of judges: "This is not a jury trial. It's not about telling a high-level story. You need to know your case cold, and know the weaknesses."
Leslie Spencer of Ropes & Gray reviewed various PTAB stats and some of the practical issues that cases raise, such as: "You have a technical expert, but do you also need an economic expert for secondary considerations? And if so what will the interplay be?" She also addressed forum shopping, and the need for a consistent approach in parallel proceedings, for example in claim construction.
The moderator, and question master, for this interactive session was Karna Nisewaner of Cadence Design Systems.
11.20: The UPC rollercoaster
The last six months (since the UK Brexit vote) have led to great uncertainty for Europe's planned Unitary Patent and UPC system, said Bethan Hopewell of Powell Gilbert. But much progress has been made with 11 ratifications so far and much work on the IT system, the Rules of Procedure and the financing.
The latest news, she added, is yesterday's announcement by the UK government that it will proceed with ratification of the UPC Agreement. "What needs to be worked on now is establishing certainty for industry so that the UPC is not undermined when the UK leaves the EU," she said, adding that the UK's role in the system post-Brexit remains to be seen.
Deanna Kwong of Hewlett Packard Enterprise said that despite the progress made there remains a lot of "uncertainty": "I don't know whether it will be a more favourable forum or not ... at the outset it may be a more plaintiff-friendly forum to legitimate it as a forum." Hopewell predicted it will be "fertile ground" for NPEs in the early years.
Kwong highlighted some differences between the UPC and the US system, including less emphasis on expert evidence, faster injunctions and the possibility to amend claims. "Fee shifting is a really big factor - hopefully that will be a counter-balance to the patentee-friendly aspects of the UPC," she added.
The morning coffee break included a speed networking session led by Microsoft!
10.00: The social media revolution
Social media and user-generated content are transforming communication, marketing and advertising - and raising all sorts of legal issues, said moderator Pamela Church of Baker & McKenzie, introducing today's second panel. "Marketers are totally bananas for millennials," added Patricia Svilik of eBay.
Svilik said key legal topics to consider in this area are: permissions, copyright, trademark and immunity under hte DMCA and Communications Decency Act. She also addressed risk mitigation measures.
The panel discussed celebrity (and non-celebrity) endorsement and the right of publicity, and potential tensions with the First Amendment. Church set out the different approaches to publicity rights in US states, asking: "How is it determined which law applies? At least in some cases, it doesn't matter where you die." If you want a celebrity endorsement, she concluded: "Get consent if you can."
Lisa Rosaya of Baker & McKenzie addressed advertising (including native advertising) issues, including the Lord & Taylor case, warning that FTC orders can last for 20 years: "If you're a growing company, it might have a material impact on how much money you can raise."
The session also introduced the audience to the social trend that is the "mirror selfie", and discussed the Prince (Dancing Baby), Richard Prince (artist) and monkey selfie cases.
09.00: Practical tips on protecting software
Today's first panel discussed recent cases and practical strategies for protecting software in the U|S in the light of Federal Circuit and Supreme Court guidance (especially Alice).
The first practical step, said Julie Kane Akhter of Microsoft, is to learn from cases where the patent has been upheld, such as Enfish, Bascom and Planet Blue.
"In the Enfish patent, for example, they were actually improving the operation of the computer itself," she stressed. Lessons from the Enfish decision included: the specification was really important; consider identifying the technical problem in the specification; and avoid being too high level in the claims.
She said Enfish provides several practical strategies for applicants: utilise the interview; talk about the technical improvement; and cite Enfish! Lessons from Bascom are: consider discussing prior solutions and their drawbacks; highlight lack of preemption; and keep drafting software applications! And tips from Planet Blue are: argue the examiner has determined the idea in the claims at too high a level; argue the claim is specific enough and improves the technology; and draft claims with realistic scope and technical effect.
Michelle Holoubek of Sterne Kessler Goldstein & Fox had additional advice for small companies in this field: "Be strategic, don''t expect to get a broad patent without work; think about what distinguishes your company and matches your story - and draft a patent application that corresponds to it."
"There's been a concerted effort in the USPTO to issue guidance that is increasingly meaningful" but there will still be inconsistencies between examiners given the progress of the case law, said Laurie Self of Qualcomm. She also predicted that further legislative proposals on Section 101 would be forthcoming: "There is a sense that the pendulum has swung too far" against patent applicants.
Moderator Tracy-Gene Durkin of Sterne Kessler concluded the panel by discussing the merits of design patents for protecting software innovations (see an article by Durkin on this topi - subscription/free trial required) and previewing the pending Microsoft v Corel case. Holoubek added some comments about using trade secrets to protect software.
Note: as at all our events, panellists speak in a personal capacity and their views don't necessarily reflect those of their employers.