How to Effectively Deal with NPE Patent Litigation
Patents incentivize invention and creativity, support commercialization, and allow innovators and inventors to protect their investments. As patents have become a necessity to support commercialization, a new class of patent owners, referred to as non-practicing entities (NPEs) or pejoratively called “patent trolls,” has emerged. These NPEs are formed for the sole purpose of acquiring and asserting patents. Hardly a threat initially, nowadays lawsuits brought by NPEs account for more than 60% of all patent litigation. These lawsuits present challenges not present in patent litigation between competitors, because the parties do not face parallel risks from the process.
In this two-hour LIVE Webcast, a panel of key thought leaders and professionals assembled by The Knowledge Group will discuss specialized defense strategies and tools for handling NPE litigation, and recent developments, trends and challenges related to NPEs in patent litigation.
Key topics include:
- Non-Practicing Entities: An Overview
- How to Define an NPE
- NPE Proofing
- NPE Patent Litigation: Background and Trends
- Minimizing the Threats of NPE Patent Litigation
- Impact of Alice Corp. v. CLS Bank and other U.S. Supreme Court Decisions
- Best Strategies for Responding to NPE Lawsuits
- Other Defense Tools
Robert Kohse, Associate
Sutherland Asbill & Brennan LLP
Ann Fort, Partner
Sutherland Asbill & Brennan LLP
- Reacting to the first contact by an NPE
- Deciding whether to settle or fight
- Reoccurring settlement issues for consideration:
- Signing non-disclosure agreements
- Past settlement agreements
- Considering PTAB review
- Reoccurring litigation issues for consideration:
- New pleading standards under the Federal Rules
- Forum considerations
- Consider the “scorpion approach”
- Current legislative proposals for patent reform
Julie P. Bookbinder, Of Counsel
Greenberg Traurig, LLP
- Impact of indemnification agreements on defense of NPE litigation
- Coordinating with other defendants in actions brought by a common plaintiff, consolidated or not consolidated
- Maximizing discovery efficiencies
- Considering bifurcation or phased schedule, early summary judgment motions, early or late damages discovery
- Early motion to dismiss
Philip D. Segrest, Jr., Partner
- Scope of Discovery and Needs of the Case Against NPEs
- Attorneys Fees Pose Risks and Opportunity
- Non-patent Defenses Such As Laches
- Attacking the Damages Case As Limiting The Incentive To Sue
- Lessons from the field: stories of strategies that worked.
Who Should Attend:
- Patent Litigators
- In-House Counsel likely for Tech, Bio/Pharma, Manufacturing, Publishing, Software & all firms who hold patents on products or plan to seek patents.
- Patent Licensing Attorneys
- Patent Counsel
- Patent Owners
- IP Attorneys & Related Consultants
- Other Related/Interested Professionals
Rob Kohse represents technology sector clients in patent litigation and counseling matters. Rob advises clients in patent litigation involving electrical devices and wireless networks, as well as computer software and business methods. He represents clients in the consumer electronics, medical device, banking, telecommunications, and software industries. In support of patent litigation, Rob conducts pre-filing investigation activity, fact and expert discovery; prepares claim construction, summary judgment, judgment as a matter of law (JMOL) briefs; takes and defends depositions of experts and non-experts; and presents oral argument in Court. Rob is admitted to the Georgia and New York bars and is registered to practice before the U.S. Patent and Trademark Office.
Rob Kohse represents technology sector clients in patent litigation and counseling matters. Rob advises clients in patent litigation involving electrical …
Ann Fort protects the IP rights of clients in the U.S. and abroad. A seasoned litigator, her practice encompasses patent infringement, licensing disputes, trade secret protection and unfair competition. She tries cases in both federal and state courts and represents clients in alternative dispute resolution, such as arbitration and mediation. Her recent experiences include defending claims brought by non-practicing entities. Ann has handled cases involving financial institution software products, Internet-based information management systems, wireless data transmission systems, automated materials handling systems, ground fault circuit interrupters, power management unit chips, interactive television program guides, computer network security protection systems, and medical information systems.
An active leader in Sutherland’s pro bono program, Ann's public service work includes serving on the board for the Federal Circuit Bar Association PTO Pro Bono Committee, the Southern Center For Human Rights, and TurningPoint Breast Cancer Rehabilitation and the Women in Technology Foundation.
Ann Fort protects the IP rights of clients in the U.S. and abroad. A seasoned litigator, her practice encompasses patent …
Philip Segrest is a partner in the Chicago office of Husch Blackwell, where his practice focuses on patent litigation and other aspects of intellectual property law, including prosecution, licensing, and counseling. He began his career as a law clerk at the Federal Circuit, and since entering private practice twenty years ago his work has included dealing efficiently with cases asserting claims against entire industries, technologies, or standards. His extensive litigation and patent prosecution experience includes information and computer related technologies, including data compression, e-commerce systems, business methods and other technologies in electrical, mechanical and chemical technical arts, as well as extensive experience with pharmaceutical patent litigation. In addition to his trial experience, Philip has briefed and argued numerous appeals at courts including the Federal Circuit. Philip has also taught patent law as an adjunct professor at DePaul University College of Law, and frequently speaks and writes on patent law topics.
Philip Segrest is a partner in the Chicago office of Husch Blackwell, where his practice focuses on patent litigation and …
Julie P. Bookbinder is a registered patent attorney with over 10 years of experience. She has worked in many areas of IP including patent, trademark, copyright, and trade secret litigation, patent prosecution, and non-litigation enforcement of trademarks and copyrights. Julie has participated in one patent trial, two trademark trials, and an arbitration relating to copyright and contract issues at which she took a witness. Julie has taken and defended numerous fact and expert witness depositions, and argued at motion and Markman hearings in federal courts. Her experience spans a wide range of technologies and industry sectors, including financial services, aerospace, automotive, avionics, biotechnology, chemical, consumer products, electronics, medical devices, and online/website technology.
Julie P. Bookbinder is a registered patent attorney with over 10 years of experience. She has worked in many areas …
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About Sutherland Asbill & Brennan LLP
Sutherland is an international legal service provider helping the world’s largest companies, industry leaders, sector innovators and business entrepreneurs solve their biggest challenges and reach their business goals. More than 400 lawyers across seven major practice areas—corporate, energy and environmental, financial services, intellectual property, litigation, real estate and tax—provide the framework for an extensive range of focus areas. Sutherland is composed of associated legal practices that are separate entities, doing business in the United States as Sutherland Asbill & Brennan LLP, and as Sutherland (Europe) LLP in London and Geneva. Sutherland (Europe) LLP is a limited liability partnership and is registered in England and Wales with registered number OC348198. Its registered office is at Marble Quay, St. Katharine Docks, London E1W 1UH. Sutherland (Europe) LLP is authorized and regulated by the Solicitors Regulation Authority of England and Wales whose regulatory requirements can be accessed at https://www.sra.org.uk/solicitors/handbook/code/content.page. A list of the members of Sutherland (Europe) LLP and their professional qualifications is open to inspection at its registered office.
About Husch Blackwell
Husch Blackwell is an industry-focused, full-service litigation and business law firm with locations in 15 U.S. cities and in London. We represent national and global leaders in major industries including energy and natural resources; financial services; food and agribusiness; healthcare, life sciences and education; real estate, development and construction; and technology, manufacturing and transportation.
About Greenberg Traurig, LLP
Greenberg Traurig is an international law firm with approximately 1900 attorneys and governmental affairs professionals in 38 commercial and government centers across the United States and in Latin America, Europe, the Middle East, and Asia. Greenberg Traurig provides integrated, business-focused legal services for clients ranging from Fortune 500 corporations to innovative start-ups. The firm’s multidisciplinary teams include senior lawyers who have served as chief legal officers at major multinational companies and have spent years solving real-world problems in the business, political and legal arenas. For additional information, please visit www.gtlaw.com.