| Time |
Session |
Panelists |
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Monday, May 15, 2023 (all times PDT) |
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| 5:30 — 7:30 |
Evening Welcome Reception |
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Tuesday, May 16, 2023 (all times PDT) |
|
| 7:30 — 8:30 |
Breakfast & Sign-in |
|
| 8:30 — 8:45 |
Welcome & Introductions |
Ferguson, Weinlein |
| 8:45 — 10:00 |
Panel 1 - IP Developments Around the World |
Geiszler, Metier, Obermann, Powers*, Wuttke |
| |
A lot has been happening since we last met in Boston. Our dialogue leaders in this panel will delve into the EU’s April 2023 Proposal for Regulation of the European Parliament and of the Council Establishing a Framework for Transparent Licensing of Standards Essential Patents. Both our German- and French-based dialogue leaders will provide their perspectives. Also, our dialogue leaders will explore the recent UK InterDigital v. Lenovo decision. The panel will discuss proposed changes announced by the USPTO in late April 2023 regarding discretionary institution practices. Our China expert will explore recent developments and trends in that part of the world. Other cases, regulations or policy statements may also be addressed. |
|
| 10:00 — 10:15 |
Morning Break |
|
| 10:15 — 11:30 |
Panel 2 - Unified Patent Court |
Bremer, Metier, Rastemborski, Sterne, Wuttke* |
| |
Under the soon-to-be-introduced Unified Patent Court (UPC) system with a current start date of June 1, 2023, a new patent jurisdiction will arise potentially spanning the whole of the European Union (EU). The advantages are obvious - More cost-efficient litigation with the chance of obtaining an EU-wide injunction. Nevertheless, as with all new laws and regulations (let alone courts), there will be significant uncertainty around the first pending proceedings and how they will be managed by the UPC. To mitigate these uncertainties, judges and lawyers need not only consider a whole new set of provisions and rules but also the existing case law under the different current European patent law regimes to better understand how to interpret the new rules and resolve the disputes in an efficient, fair and equitable manner. The Framework for Analysis for the Efficient Resolution of Disputes before the Forthcoming European Unified Patent Court addresses these topics and will serve in this session as a vehicle for prompting dialogue with the WG 9/10 membership. |
|
| 11:30 — 12:30 |
Lunch |
|
| 12:30 — 1:30 |
Panel 3 - Cross-Border Discovery Issues in Patent and Trade Secret Cases (Stage 3) |
Cooper*, Jameson, Metier, Pade, Wuttke |
| |
The Joint WG10 and WG12 Commentary on Cross-Border Discovery in U.S. Patent and Trade Secret Cases drafting team was launched in 2019. Stage One of the draft Commentary was brought to publication for public comment in May 2021. Stage Two of the draft Commentary was a focus of dialogue at the WG12 Annual Meeting in Reston, Virginia, in September 2022; the WG9&10 Joint Annual Meeting in Boston, Massachusetts, in June 2022; the WG12 Annual Meeting in Phoenix, Arizona, in December 2021; and the WG9&10 Joint Annual Meeting, Online, in November 2021. Stage Three, which is the subject of dialogue at this Portland meeting, is focusing on, among other topics, privilege issues relating to cross-border discovery and foreign enforcement of discovery orders. |
|
| 1:30 — 2:30 |
Panel 4 - IP Litigation Funding Panel |
Carlson, Kerstein, Merkin, Nelson*, Stern, Stroud |
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This panel will discuss various aspects of litigation funding for IP matters. Topics will include litigation funding arrangements; the impact of litigation funding on cases; sources of litigation funding; and defensive litigation funding. The panel will also consider what impact litigation funding has had in in-house practices. |
|
| 2:30 — 2:45 |
Afternoon Break |
|
| 2:45 — 4:00 |
Panel 5 - Case Management of Patent Damages and Remedies Issues |
Hadzimehmedovic*, Jarosz, Levine, Mooney, Selwyn |
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This panel will provide an update on its work on this topic and seek input from membership. Since Boston in June 2022, the drafting team has been updating its Commentary on Case Management of Patent Damages and Remedies Issues which is the second paper following The Sedona Conference’s original work, Commentary on Patent Reasonable Royalty Determinations. The current Commentary presents principles and best practices for addressing and managing patent damages and remedies issues as they arise in the various stages of litigation, including:
- pretrial management of patent damages and remedies issues: fact discovery; expert discovery; and damages hearings;
- trial management of patent damages and remedies issues: trial time allocation; bifurcation of liability and damages for discovery or trial; and jury instructions and jury verdict forms; and
- posttrial management of patent damages and remedies issues: injunctions, ongoing royalties, and attorneys’ fees.
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|
| 4:00 — 4:15 |
Afternoon Break |
|
| 4:15 — 5:30 |
Panel 6 - Unified Framework for Analysis of Section 101 Patent Eligibility Determinations |
Groombridge, Matal, Powers* |
| |
In October 2022, due to its collective effort, a subgroup of The Sedona Conference’s Working Group 10 on Patent Litigation Best Practices submitted a set of proposed revisions to the USPTO Patent Subject Matter Eligibility Guidance issued on January 7, 2019. These proposed revisions were specifically submitted in response to a request from the USPTO. This subgroup was formed of representatives of a variety of key stakeholders in the U.S. patent litigation system (acting in their personal capacities) and each of these individuals well understood the Sedona consensus, non-partisan spirit. Due to time constraints, however, this document did not benefit from the review of The Sedona Conference’s entire WG10 membership or the WG10 Steering Committee. This panel will describe the subgroup’s work, seek member feedback and engage in dialogue on whether a drafting team should be formed to proceed with a Commentary on this topic. |
|
| 5:30 — 7:30 |
Reception (guests invited) |
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Wednesday, May 17, 2023 (all times PDT) |
|
| 7:30 — 8:45 |
Breakfast & Sign-in |
|
| 8:45 — 10:00 |
Panel 7 - Town Hall and Brainstorming |
Ferguson*, Groombridge*, Powers* |
| |
A lot has happened since we last met as a group in Boston in June 2022. And the Working Groups must again identify future projects warranting the attention and resources of WGs 9 and 10 membership. In this session, we’ll briefly highlight the content published over the last year. We’ll then turn our attention to identifying future projects that merit development going forward, starting with new brainstorming groups. |
|
| 10:00 — 10:30 |
Morning Break |
|
| 10:30 — 11:45 |
Panel 8 - The Evolving Relationship Between Federal Courts and Administrative Agencies |
Nathan*, Obermann, Patnaik, Salsberg, Stroud |
| |
The focus of this session is to seek dialogue on the current version of the WG10 Commentary on The Evolving Relationship Between Federal Courts and Administrative Agencies. This Commentary seeks to explore various issues that arise from related proceedings in Federal District and Appellate Courts, before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and Section 337 investigations at the International Trade Commission (ITC). Issues explored in this Commentary include stays of litigation, accelerated and conflicting trial scheduling, estoppel, ANDA provisions, standing, and availability of judicial review. |
|
| 11:45 — 1:00 |
Panel 9 - In-House Panel |
Ferguson*, Geiszler, Kim, Salsberg, Whitaker |
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The changing dynamics of intellectual property law impact the legal profession as a whole, but have specific implications for counsel who advise their employer clients on the rewards and risks inherent in the shifting intellectual property terrain. And the role of IP may be different based on the industry in which in-house counsel practices. We’re fortunate on this panel to have in-house counsel from a variety of fields (software and AI, telecommunications equipment and smart devices, healthcare and gene therapy, and DNA sequencing). With their varied backgrounds and perspectives, we will explore some of the other panel topics covered in this program and how such topics impact their individual practices. We’ll also discuss with these dialogue leader experts some of the issues that are the most challenging for in-house counsel and their clients, how in-house practice has changed over time and the impact the pandemic has had on in-house legal governance. Join the dialogue as we learn more about IP practice from the in-house perspectives of this experienced panel. |
|
| 1:00 — 1:15 |
Closing Statements |
Weinlein |
| 1:15 — 2:15 |
Grab-&-Go Lunch (provided) |
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