| Time |
Session |
Panelists |
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Monday, September 23, 2024 |
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| 5:30 — 7:30 p.m. |
Evening Welcome Reception |
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Tuesday, September 24, 2024 |
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| 7:30 — 8:30 a.m. |
Breakfast & Registration |
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| 8:30 — 8:45 a.m. |
Welcome & Announcements |
|
| 8:45 — 10:00 a.m. |
Panel 1 - Patent Developments Around the World - Last 12 Months |
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Over the past year, there have been significant patents trends and developments which our panel will explore. Among those include: the current status of and third party comments on the European Commission’s proposal to regulate Standard Essential Patents, developments in the Chinese patent system, adoption of a new obviousness test for design patents, the patentability of AI inventions, obviousness after Amgen and the PTO’s examiner statement on Wands, the PTAB’s finding that real party in interest status is impacted by an indemnity agreement, the pending PREVAIL Act, and a $525M patent verdict against Amazon, setting the bar high for 2024. |
|
| 10:00 — 10:15 a.m. |
Morning Break |
|
| 10:15 — 11:30 a.m. |
Panel 2 - Cross Border Discovery (Stage 3) |
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The Joint WG10 and WG12 Drafting Team has prepared two previous iterations of its Commentary on Cross-Border Discovery in U.S. Patent and Trade Secret Cases and is commencing drafting its Stage Three version focusing on, among other topics, privilege issues relating to cross-border discovery and foreign enforcement of discovery orders. Member feedback on these and additional topics will be sought during our meeting. |
|
| 11:30 — 12:30 p.m. |
Lunch |
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| 12:30 — 1:30 p.m. |
Panel 3 - Brainstorming Session - Injunctive Relief Across Jurisdictions |
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This brainstorming group will make a recommendation about whether WG9/10 should prepare a commentary on best practices relating to bases and rationales in connection with injunctive relief. A potential commentary might consider current practices across jurisdictions, including the United States, the United Kingdom, Germany, the UPC, and China. It might analyze factors currently considered in each jurisdiction and evaluate the extent to which current practice overlaps and differs. The commentary could present a recommendation as to what considerations, if any, there should be in connection with injunctive relief. If so, it could advance recommendations for harmonization across jurisdictions. It might further consider whether different considerations should apply in different jurisdictions. Members of the brainstorming group will solicit member feedback and input on this topic. |
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| 1:30 — 2:30 p.m. |
Panel 4 - Global FRAND Commentary |
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The assertion and valuation of standard-essential patents, and the determination of a fair, reasonable, and non-discriminatory (FRAND) royalty rate, continues to be hot topic worldwide. Whether it’s the European Commission’s proposed “framework” for SEPs, the continued rise of SEP patent pools, or the question of who determines a global FRAND rate, our panel will address these topics and provide insight from industry insiders. The panel will also solicit input and guidance from the membership about the proper scope for a commentary on the Global FRAND topic. |
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| 2:30 — 2:45 p.m. |
Afternoon Break |
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| 2:45 — 4:00 p.m. |
Panel 5 - Case Management of Patent Damages and Remedies Issues |
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This panel will provide an update on its work on this topic and seek input from membership. The current Commentary presents principles and best practices for addressing and managing patent damages and remedies issues as they arise in various stages of litigation, including:
- Pre-trial 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
- Post-trial management of patent damages and remedies issues: injunctions, ongoing royalties, and attorney fees
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|
| 4:00 — 4:15 p.m. |
Afternoon Break |
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| 4:15 — 5:30 p.m. |
Panel 6 - Brainstorming Session - AI and Patent Law |
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The widespread adoption of generative artificial intelligence by the business world will have far-reaching implications in the patent litigation space. A critical component of every patent case concerns the definition of the hypothetical person of ordinary skill in the art (“POSITA”). This definition has implications for claim construction and infringement purposes, and invalidity analyses under 35 U.S.C. §§ 102, 103, and 112. There is an open question whether the POSITA definition should assume access to generative AI platforms. Would such access greatly expand the POSITA’s knowledge? And if access to generative AI platforms is assumed, what are the contours of those platform(s)? If a POSITA is assumed to have access to AI, what are the implications for the motivation to combine analysis and analogous art issues under § 103? What are the implications for considering whether a patent contains an enabling disclosure under § 112? Additionally, generative AI can now be used to propose numerous solutions to stated problems. Those solutions can be posted to a website or other database. Should these AI-generated disclosures qualify as “prior art” within the meaning of 35 USC § 102? Do they meet the statutory definition and court-developed applications of that definition? If, as many courts have determined, only a person can qualify as an inventor for purposes of obtaining a patent, then should a disclosure qualify as “prior art” only if it was created by a person? The purpose of this brainstorming group is to propose an outline based on dialogue and consensus that may be used to draft a Commentary addressing these important issues. The panel will elicit input from members on these issues at this meeting with the goal of helping frame the resulting project charter.
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| 5:30 — 7:30 p.m. |
Reception (guests invited) |
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Wednessday, September 25, 2024 |
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| 7:30 — 8:45 a.m. |
Breakfast & Registration |
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| 8:45 — 10:00 a.m. |
Panel 7 - The Proper Role of the Prosecution History in Patent Litigation |
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A patent’s prosecution history reflects the record of proceedings between the applicant and the Patent Office and as such is considered intrinsic evidence for claim construction purposes. Many courts, however, are reluctant to rely on the prosecution history during claim construction unless it reflects a “clear and unmistakable” disclaimer of subject matter. This improperly diminishes the prosecution history’s role in claim construction. Apart from claim construction, the prosecution history may also play an important role in the infringement analysis, including consideration of infringement under the doctrine of equivalents. The proposed Commentary will explore how the prosecution history may assist in both the claim construction process and in determining infringement, in the U.S. courts, the Unified Patent Court, and other fora throughout the world. Members of this brainstorming group will solicit the input and guidance of the membership at this meeting in framing the issues to be considered as part of the brainstorming group’s project charter. |
|
| 10:00 — 10:30 a.m. |
Morning Break |
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| 10:30 — 11:45 a.m. |
Panel 8 - The Evolving Relationship Between Federal Courts and Administrative Agencies |
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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. |
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| 11:45 — 1:00 p.m. |
Panel 9 - In-House Panel |
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The changing dynamics of intellectual property law impact the legal profession including in-house counsel. Against the background of our panelists’ varied perspectives and experience, we will explore panel topics covered in this program and how such topics impact their individual practices. We’ll also discuss the issues that are the most challenging for in-house counsel and their clients, how in-house practice has changed over time and what they enjoy most about their in-house work. Join the dialogue as we learn more about the IP practices of our experienced in-house practitioners comprising this panel. |
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| 1:00— 1:15 p.m. |
Closing Statements |
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| 1:15 — 1:30 p.m. |
Grab-&-Go Lunch (provided) |
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