Litigating Patents and Trade Secrets Remedies Summit
Who Should Attend
- Patent Litigators
- Damages Experts
- Intellectual Property Licensing Professionals
- Inventors and Patent Owners
- IP Asset Managers
- Corporate Intellectual Property Attorneys
- Business Development Professionals
- Investors
- CEOs and CFOs
- Boards of Directors
- Business Leaders
- Research Directors
- Litigation Funders
Trusted Source
The Certified Patent Valuation Analyst training program has been presented all over the world for more than 13 years.
Leading patent professionals have attended our training in over a dozen cities in the United States as well as in Canada, the United Kingdom, France, Germany, Spain, Belgium, the Netherlands, Denmark, Israel, Dubai, Malaysia, China, Hong Kong, Singapore, Thailand and the Philippines. CPVA designees hail from IBM, Air Liquid, Fujitsu, British Telecom, Philip Morris, DuPont, Exxon, Oracle, Microsoft, Cisco, Elbit Systems, Pfizer, Cox Cable, Stryker, McKesson, Ford Motors, Boeing, Lockheed Martin, General Electric, McGill University, and many other leading companies, universities and national laboratories.
Why You Should Attend
Al Capone said, “You can go a long way with a smile. You can go a lot farther with a smile and a gun.”
So too is the case with monetizing patents. In the world of patents, the path to money is much shorter and certain via assertion than by way of friendly licensing. In fact, patent brokers rarely take on clients if assertion isn’t in the cards.
Virtual Summit Schedule
(at-a-glance)
MORNING
9:50am EST
Welcoming Remarks & Housekeeping
10:00am EST
Patent Infringement and Trade Secret Misappropriation from an Insider’s Perspective
10:45am EST
Working with Contingency Lawyers and Litigation Finance Companies in Patent Infringement Actions
11:30am EST
Injunctive Relief in Standards-Essential Patents Cases
12:15pm EST
Developments Impacting Reasonable Royalty Damages
AFTERNOON
1:00pm EST
LUNCH
1:30pm EST
Developments Impacting Lost Profits
2:15pm EST
Breaking Developments in Damages Calculations
3:00pm EST
Developments in Design Patent Damages
3:45pm EST
Developments in Trade Secret Misappropriation Cases
4:30pm EST
Section 337 Investigations: Leverage & Strategy at the ITC
5:00pm EST
Mediating Patent and Trade Secret Disputes
How much money can patentees expect to receive when they assert their patents?
Code Compliance and Precedense Adherance
It would seem that calculating damages awards is easy.
After all, most damages awards are a function of past infringement and the past is knowable, right?
And the governing code states that the minimum damages that patentees are entitled to is reasonable royalties, which is the just product of reasonable royalty rates and the royalty base.
Sounds simple, right?
Revenue and Royalty Rate Determinations
Nothing could be further from the truth. Calculating damages resulting from patent infringement and trade secret misappropriation is amazingly complex. How much revenue does a product generate? Not so easy to answer given that some products are bundled together, discounts are offered sporadically, prices vacillate based on volumes purchased, and currencies must be converted. And revenues generated by products are probably the easiest part of damages calculations.
Royalty Base and Apportionment
What royalty rates should be used? Given that patents must cover unique inventions and few licensing deals are disclosed, it isn’t easy to determine where comparable royalty rates lie. What about the royalty base? When should the entire product be used as the base and when should the smallest saleable unit be used as the royalty base? How should apportionment be determined? And once apportionment has been applied to the royalty base, do you need to adjust your royalty rates?
If you get the sense that calculating reasonable royalty damages is complicated, you would be right.
But you would also be in for a shock when confronted with the complexity associated with calculating lost profits.
Esteemed Faculty
Gerald E. Rosen
Retired Chief Judge, US District Court for the Eastern District of Michigan
The Retired Chief Judge’s practice has focused on mediation, arbitration, and neutral evaluation of complex business/commercial disputes, complex domestic and international intellectual property disputes, Multi-District Litigation (MDL) and class action matters, False Claims Act litigation, as well as anti-trust and consumer cases.
Jorge L. Contreras
James T. Jensen Endowed Professor for Transactional Law, University of Utah
Jorge L. Contreras teaches and researches in the areas of intellectual property, property law, technical standardization, antitrust and science policy. In 2020 he received the University of Utah’s Distinguished Research Award and is an elected member of the American Law Institute. He has testified before the U.S. Senate Subcommittee on Intellectual Property, and was awarded the Rossman Memorial Award by the Patent & Trademark Office Society in 2022.
Barry Bell
Founder/Managing Director – Echelon Analytics
For more than 27 years, Barry Bell has focused primarily on the analysis and quantification of damages in commercial litigation matters. He is experienced in analyzing complex matters; identifying relevant issues, information and approaches; and cogently communicating, via expert reports and testimony, the resulting opinions to interested parties.
David Shofi
General Counsel – Univercells Technologies
David Shofi is the General Counsel for Univercells Technologies, a biomanufacturing equipment company. David served as Chief IP Counsel for CPA Global. Before joining CPA Global, David held the role of Chief Intellectual Property Counsel for ATMI, an international semiconductor and life sciences corporation and served as IP Counsel for IBM.
Geoffrey White
General Counsel, Chief IP Counsel, – Director for SilcoTek Corporation
Geoffrey White is General Counsel, Chief IP Counsel, and a Director for SilcoTek Corporation, a high-tech materials science company solving challenges for countless of the world’s largest and most innovative organizations (especially in the semiconductor, analytical instrumentation, life science, and energy industries). Geoffrey previously practiced as a patent attorney for a 130+ attorney firm.
Michael O’Shea
Founder – The O’Shea Firm
Michael O’Shea is the founder of The O’Shea Firm, which specializes in patent monetization. The Firm advises clients on a full contingency basis in litigating, licensing and selling their patent portfolios. Before founding the Firm, Mr. O’Shea was as a patent litigation partner in three major law firms.
Neil Zoltowski
Partner – StoneTurn
Neil Zoltowski serves as a consulting and testifying financial expert in complex business disputes, intellectual property litigation, and business and intellectual property valuation matters. Neil has testified as an expert witness on behalf of both Plaintiffs and Defendants in intellectual property disputes and commercial litigation matters with respect to economic damages.
Russell E. Levine
Partner – Kirkland & Ellis LLP
Russell is a Partner at Kirkland & Ellis LLP where he has spent his entire 36+ year career. He focuses his trial, appellate and alternative dispute resolution practice on patent infringement matters and disputes involving and related to technology transfer and patent license agreements.
Russell E. Levine
Partner – Kirkland & Ellis LLP
Russell is a Partner at Kirkland & Ellis LLP where he has spent his entire 36+ year career. He focuses his trial, appellate and alternative dispute resolution practice on patent infringement matters and disputes involving and related to technology transfer and patent license agreements.
Steve Holzen
Managing Director – Stout
Steve Holzen is an expert damages consultant in patent, trademark, copyright, trade secret, and breach of contract litigations. He has testified as an expert witness in federal and state courts, at the U.S. ITC and before the PTAB. He has provided opinions on issues including lost profits, reasonable royalties, unjust enrichment, permanent injunction, and commercial success.
William Woodford
Founder – Avantech Law
William Woodford is an IP lawyer with twenty years of experience handling high-stakes litigation. He has also led numerous appeals, including the landmark Halo Electronics case. Over the past two decades, William has analyzed and valued thousands of patents for potential enforcement, commercialization, and sale. He has also worked with numerous clients on the development of worldwide patent portfolios to protect mission-critical technology.
Michael Dilworth
Founder – Dilworth IP
As an intellectual property attorney, intangible asset advisor, and founder of Dilworth IP – Michael Dilworth speaks the language of innovation and the law, helping his clients protect their treasures with a well-crafted IP strategy to best leverage their most important assets – their intangible assets – so they can succeed in the marketplace.
David S. Abrams
Professor of Law, The University of Pennsylvania and the Wharton School
David Abrams is one of the leading young economists working in empirical law and economics. He has investigated the expected impact of the America Invents Act, examined the effect of patent duration on innovation, and used natural language processing to establish more reliable measures of patent value.
David J. Reibstein
William Stewart Woodside Professor of Marketing, The Wharton School of the University of Pennsylvania
Professor Reibstein has been honored with more than 30 teaching and publishing awards, including the John S. Day Distinguished Alumni Academic Service Award from the Krannert School of Management at Purdue University.
Jeffrey T. Prince
Harold A. Poling Chair in Strategic Management, Professor of Business Economics, and Chairperson of Business Economics, Kelley School of Business at Indiana University
Jeffrey has published research on dynamic demand for computers, internet adoption and usage, the inception of online/offline product competition, telecom bundling, and the economics and regulation of digital platforms.
Aaric Eisenstein
Vice President of Licensing Strategy
Personalized Media Communications, LLCze
Aaric Eisenstein is Vice President of Licensing Strategy. He is responsible for analyzing markets, identifying opportunities, and negotiating transactions. He has contributed to leading publications about PTAB fairness and other subjects and serves each year as a panelist and/or moderator at various industry conferences. He is the Chair of the LES Patent Licensing Standards Committee.
Evan Langdon
Partner / Chair – Fabricant LLP
Evan is an experienced first chair trial attorney who focuses his practice on Section 337 investigations before the ITC, intellectual property litigation in U.S. District Courts, and appeals before the Federal Circuit. Evan counsels both U.S. and foreign companies on intellectual property matters before the ITC. He leverages his mechanical engineering background and experience as a primary examiner at the United States Patent and Trademark Office to litigate disputes across a wide variety of industries.
Ehsun Forghany
Associate – Morgan, Lewis & Bockius LLP
Ehsun Forghany is a trial lawyer specializing in patent, copyright, trade secret, and related intellectual property (IP) disputes. A former prosecutor, Ehsun has tried more than twenty cases to verdict and argued well over fifty case-dispositive motions in both state and federal court. Ehsun has leveraged his trial experience to secure multimillion-dollar verdicts for his clients and defend those verdicts on appeal, including a $268 million jury verdict in a patent infringement action brought on behalf of a nonprofit research foundation.
Frank Jeng
vice President – Purplevine IP Group
Frank Jeng is a vice president of Purplevine IP Group, a global IP service provider based in China. Frank represents and advises clients in over 50 patent litigations and licensing matters worldwide, including China, the United States (district court litigations and ITC investigations), Germany, Japan, Brazil, Italy, and Korea. Frank is particularly well-regarded in electronics, telecommunications, and panel display sectors. Frank is admitted to practice law in New York (USA),Hong Kong SAR (PRC) and Greater Bay Area (PRC).
Jennifer Ying
Partner Intellectual Property Litigation – Morris Nichols
Jen Ying is a partner at Morris Nichols in Wilmington, Delaware. She is an experienced intellectual property litigator who focuses her practice on patent and trade secret disputes in federal and state court. Her experience encompasses all aspects of litigation from outset to mediation, from mediation to trial, and through appeal in both lead counsel and co-counsel roles.
Kate Schofield
Manager – Analysis Group, Inc.
Ms. Schofield specializes in the application of economic and financial theory to questions arising in a range of complex business litigation disputes. Her experience spans several practice areas, including intellectual property (IP), class certification, and antitrust. Her case work has included assessing damages related to patent infringement and trade secret misappropriation; developing, administering, and analyzing surveys in various litigation matters; and evaluating the economic impact of advertising claims.
Lindsey Fisher
Director in the Disputes, Compliance, & Investigations group. – Stout
Lindsey Fisher is a damages expert with a focus on patent and trademark infringement matters. Her work is focused on assisting clients and counsel with complex financial, accounting, and damages matters. She has provided an array of dispute resolution services, including providing expert testimony, preparing and issuing expert reports, analyzing financial issues, developing damages strategies, and building complex financial models.
Candice Cornelius
Director in the intellectual property practice of the Disputes, Compliance, & Investigations group. – Stout
Candice Cornelius is a testifying expert for patent infringement matters. She has extensive expertise in intellectual property disputes and commercial litigation, including providing discovery assistance, constructing complex financial and economic models, writing reports, and providing deposition support. She has provided consulting services on behalf of plaintiffs and defendants, including surrounding issues such as damages, commercial success, preliminary and permanent injunctions, and post-verdict ongoing royalties.
Multiple Patents May Be Litigated In Parallel In Different Countries
To estimate your damages awards, you also need to throw into the mix that multiple patents may be litigated in parallel in different countries, trade secrets misappropriation cases are often tried concurrently, double counting must be avoided, precedents (not always consistent) must be adhered to and caution must be applied to the precedents litigants set, and intense statistical analysis must be presented to a lay jury.
Virtual Summit Sessions
Our summit features an extensive lineup of thought leaders in the world of patent litigation and patent damages.
Session 1
10:00am EST
Patent Infringement and Trade Secret Misappropriation from an Insider’s Perspective
How should overworked General Counsels respond to demand letters?
How should the litigation process commence once alleged infringers or trade secret misapporpriators have been identified?
Which advisors need to be retained? What kinds of documents and reports need to be produced?
How can assertion be put in process on tight budgets?
How can you estimate the return-on-assertion?
Moderator:
Michael Dilworth, Founder & Managing Partner, Dilworth IP
Speakers:
Geoffrey White, General Counsel & Chief IP Counsel, SilcoTek Corporation
David Shofi, General Counsel, Univercells Technologies
Session 2
10:45am EST
Working with Contingency Lawyers and Litigation Finance Companies in Patent Infringement Actions
Negotiating Contingency Fee Arrangement with Your Lawyer
- Exclusive review periods
- Firm and partner selection
- Retainers / expense sharing / splitting of proceeds
- Handling of invalidity challenges and counterclaims
- Authority to settle
- Impact and distribution of treble damages
- Compensating law firm when business arrangements result from assertion
Negotiating with Patent Litigation Finance Firms
- Legal authority to operate
- Representations and warranties
- Extent of financing
- Permissions and veto rights
- Disclosure of party of interest
- Legal exposures to finance firm and patentee
Speakers:
Michael O’Shea, Founder, The O’Shea Firm
William Woodford, Founder, Avantech Law
Session 3
11:30 am EST
Injunctive Relief in Standards-Essential Patents Cases
- Injunctions in SEP cases: US, Europe and China
- US courts versus the ITC
- Huawei v. ZTE in the EU and its progeny
- National FRAND determinations and the “race to the bottom”
- Anti-suit injunctions and jurisdictional competition
- Anti-anti-suit injunctions: judicial and legislative
- Other legislative proposals for dealing with FRAND
Speaker:
Professor Jorge L. Contreras, Director, Program on Intellectual Property and Technology Law, University of Utah
Session 4
12:15 pm EST
Developments Impacting Reasonable Royalty Damages
- Smallest Saleable Unit v. Entire Market Value Rule
- License Comparability
- Litigation Awards or Settlement Agreements
- Daubert Challenges
- Trends in the Georgia Pacific Factors
- The Analytical Method
Speakers:
Stephen Holzen, Managing Director, Stout
Candice Cornelius, Director, Stout
Lindsey Fisher, Director, Stout
Session 5
1:30 pm EST
Developments Impacting Lost Profits
- Panduit Factors
- State Industries v. Mor-Flo Industries
- WesternGeco LLC v. ION Geophysical Corp
Lost Profit Calculations
- Incremental Profits
- Price Erosion
- Capacity to Manufacture and Market
- Non-Infringing Alternatives
Speakers:
Dominic Persechini, Managing Director, INTENSITY, LLC
Session 6
2:15 pm EST
Breaking Developments in Damages Calculations
Learn about breaking damages methodologies and calculations including:
- Hedonic regression
- Conjoint survey analysis
- Design-around costs
- Patent Citations and Real Value
Moderator:
Kate Schofield, Manager, Analysis Group
Speakers:
David S. Abrams, University of Pennsylvania Law School and the Wharton School
David J. Reibstein, The Wharton School of the University of Pennsylvania
Jeffrey T. Prince, Kelley School of Business at Indiana University
Session 7
3:00 pm EST
Developments in Design Patent Damages
This session will discuss issues such as:
- Differences Between Utility Patents and Design Patents
- Articles of Manufacture
- The Two-Step Test as per Samsung v. Apple
- Calculating Infringer’s Total Profits
- Applicability of Treble Damages
Speakers:
Neil Zoltowski, Partner, StoneTurn Group
Ehsun Forghany, Associate, Morgan, Lewis Bockius LLP
Session 8
3:45 pm EST
Developments in Trade Secret Misappropriation Cases
Topics of discussion include:
- Unjust enrichment
- Calculating damages based on nascent products versus established products
- Valuing misappropriated research and development
- Determining the value of faster market entry resulting from trade secret misappropriation
- Modeling disgorgement, diminution of value and reasonable royalties
Speakers:
Barry Bell, Founder & Managing Director, Echelon Analytics
Session 9
4:30 pm EST
Section 337 Investigations: Leverage & Strategy at the ITC
Topics to be discussed include:
- The nature of Section 337 investigations
- The ITC’s unique procedural framework
- Section 337’s statutory injunctive relief for violating articles
- The unparalleled speed of the ITC and how that speed can create significant leverage for patent owners
- Best practices for defending a 337 investigation
Speaker:
Evan Langdon, Chair of International Trade Commission Practice, Fabricant LLP
Session 10
5:00 pm EST
Mediating Patent and Trade Secret Disputes
- The pros and cons of different types of mediation
- The pros and cons of different formats for mediation
- The role of discovery, precedent and pending motions in the underlying litigation
- The ideal time to mediate
- The role of the different participants in the mediation
- Unique issues when mediating SEP/FRAND disputes
- Best practices for a successful mediation
Moderator:
Russell Levine, Partner, Kirkland & Ellis
Speakers:
Aaric S. Eisenstein, Vice President – Licensing Strategy, Personalized Media Communications, LLC
Frank Jeng, Vice President, Purplevine IP Group
Jennifer Ying, Partner, Morris Nichols
Judge Gerald Rosen, Retired Chief Judge, U.S. District Court for the Eastern District of Michigan
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Listen to Professor Feinberg discuss:
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David Wanetick, Chief Executive Officer, IncreMental Advantage, LLC
A valuation firm with an expertise in valuing intangible assets and emerging technologies–based in Princeton, NJ. Clients include companies ranging from start-ups to Fortune 500 companies, technology transfer offices, inclubators, law firms, venture capital firms and private equity players. Representatives from more than 850 Fortune 1000 companies have participated in programs produced by IncreMental Advantage.
John Jarosz, Co-Chairman, Analysis Group
Mr. Jarosz is an economist and director of Analysis Group’s Washington, DC office. He specializes in matters involving intellectual property (IP), commercial damages, licensing, and antitrust. His IP work focuses on evaluating lost profits, reasonable royalties, price erosion, commercial success, licensing terms, best efforts, irreparable harm, and
FRAND commitments.