The 2019 Sedona Conference on Global Aspects of Patent Litigation

Date: 
Tuesday, November 19, 2019 - 8:30am to Wednesday, November 20, 2019 - 1:30pm

Location:
The Carton House
County Kildare, Ireland

Registration is open for the 2019 Sedona Conference on Global Aspects of Patent Litigation. The Conference will be held on November 19-20, 2019 at the historic Carton House estate in County Kildare, Ireland, just outside of Dublin, and will continue the in-depth dialogue from our 2017 Conference on Patent Litigation: Global Strategies for Managing Both Multifront Domestic and International Litigation of IP Assets and our 2018 Conference on International Patent Litigation: Aspirations Toward Attaining Effective Global IP Protection, and also from The Sedona Conference’s extensive Working Group 9 and 10 (patent litigation) commentary drafting team efforts over the past five+ years which have been focused on the U.S. patent litigation space and are now expanding to a global perspective.

As markets and technologies grow increasingly interconnected around the world, patent litigants, both owners and defendants, are re-orienting their litigation strategies to reflect global realities. At the same time, changes in the legal landscape in the U.S., Europe and Asia, are giving rise to both new risks of and new opportunities for patent litigation. Rapidly evolving case law, new guidelines from national competition authorities and other institutions, and legislative initiatives constantly shape and re-shape the ever more complex framework for both plaintiffs and defendants. For a working detailed agenda please click here (updated 9/17/2019).

We have secured highly favorable group rates of EUR 225 single, EUR 255 twin BB, per night on a limited block of Superior or House Deluxe rooms at Carton House, for the evenings of 18–19 November 2019. The group rates are inclusive of all taxes, charges, and fees, and include full Irish and International Breakfast Buffet. The group rates are also available for the three days preceding and the three days following the Conference but completely subject to room availability because there is no room block for these nights. The room block expires on 17 October 2019. After that date, room availability is not guaranteed. Complete hotel information will be provided with your registration confirmation email.

Our co-chairs and a distinguished faculty of judges, government officials, and counsel from around the world will lead the dialogue on topics identifying and explaining the wide range of issues arising in international patent litigation, and comparative approaches across different international patent jurisdictions.

Confirmed judicial participants include:

  • Hon. Dr. Klaus Bacher, Xth Civil Senate of the German Federal Court of Justice
  • Hon. Cathy Ann Bencivengo, U.S. District Judge, S.D. Cal.
  • Hon. Mr. Justice Colin Birss, High Court of Justice of England and Wales
  • Hon. Mr. Justice Peter Charleton, The Supreme Court of Ireland
  • Hon. Susan Y. Illston, U.S. District Judge, N.D. Cal.
  • Hon. Kent A. Jordan, U.S. Circuit Judge, 3d Cir.
  • Hon. Rian Kalden, Court of Appeal, The Hague
  • Hon. Paul R. Michel (ret.), U.S. Circuit Judge, Fed. Cir.

The Sedona Conference is pleased to launch this global initiative to expand the scope of its efforts to move the law forward in a reasoned and just way. The increasing economic and legal globalization trends have made it clear that legal issues are more interconnected than ever before. The Sedona Conference believes that all jurisdictions can benefit from a dialogue about the benefits of various approaches being used in different jurisdictions. This Ireland conference continues the Sedona tradition of bringing diverse thought leaders together for an in-depth dialogue about the most pressing issues of today and tomorrow.

Co-Chairs

Boehmert & Boehmert

Munich, Germany

Fieldfisher (Germany) LLP

Düsseldorf, Germany

Tensegrity Law Group

San Francisco, CA, USA

Crowell & Moring LLP

Washington, DC, USA

WilmerHale LLP

London, United Kingdom

Cisco Systems, Inc.

San Jose, CA, USA

Faculty

Licks Attorneys

Rio de Janerio, Brazil

Boehmert & Boehmert

Munich, Germany

Asamura Patent Office, p.c.

Tokyo, Japan

Federal Court of Justice

Karlsruhe, Germany

U.S. District Court, Southern District of California

San Diego, CA, USA

High Court of Justice of England and Wales

London, United Kingdom

ZTE Deutschland GmbH

Düsseldorf, Germany

Morrison & Foerster LLP

Washington, DC, USA

Sandoz

Princeton, NJ, USA

The Supreme Court of Ireland

Dublin, Ireland

Gilt Chambers

Hong Kong

Goodwin Procter LLP

Redwood City, CA, USA

Kirkland & Ellis International LLP

London, United Kingdom

Davè Law Group, LLC

Alexandria, VA, USA

Ericsson

Dallas, TX, USA

Ericsson

Plano, TX, USA

Brinkhof

Amsterdam, Netherlands

Eisenführ Speiser

Hamburg, Germany

Intellectual Ventures Management LLC

Bellevue, WA, USA

Huawei

Dallas, TX, USA

Jones Day

Hong Kong

MorphoSys AG

Munich, Germany

U.S. District Court, Northern District of California

San Francisco, CA, USA

Fortress Investment Group LLC

San Francisco, CA, USA

U.S. Court of Appeals for the Third Circuit

Wilmington, DE, USA

Court of Appeal, The Hague

The Hague, Netherlands

Licks Attorneys

Rio de Janeiro, Brazil

ASML

Pleasanton, CA, USA

Alexandria, VA, USA

BARDEHLE PAGENBERG

Munich, Germany

Bird & Bird LLP

London, United Kingdom

S. Horowitz & Co.

Tel-Aviv, Israel

Oracle

Redwood City, CA, USA

Boehmert & Boehmert

Munich, Germany

Darts-ip

Brussels, Belgium

Cravath, Swaine & Moore LLP

New York City, NY, USA

Sterne, Kessler, Goldstein & Fox PLLC

Washington, DC, USA

Hoyng Rokh Monegier

Paris, France

Facebook

San Francisco, CA, USA

AirTies Wireless Networks

Istanbal, Turkey

Bitmain

Beijing, China

Han Kun Law Offices

Shanghai, China

WilmerHale LLP

London, United Kingdom

Freshfields Bruckhaus Deringer

London, United Kingdom

Volkswagen AG

Wolfsburg, Germany

Liu Shen & Associates

Bejing, China

JunHe LLP

Shanghai, China

[Panel 2] Cross-Border Discovery Issues for Patent Litigation and Trade Secrets Litigation

Date: 
Tuesday, November 19, 2019 - 10:15am to 11:30am
Panel Description: 

Increasingly, the globalization of technology markets has complicated how businesses and individuals protect and enforce their intellectual property rights. While international laws generally protect rights in patents, copyrights, trade secrets, and trademarks, the enforcement of such rights is complicated by unique requirements of how discovery functions within individual nations. For instance, transnational patent and trade secret litigation in one country often involves parties who require evidence that is within the custody and control of both parties and non-parties located in any number of other countries’ jurisdictions. Yet such other states often employ significantly different discovery practices than what may be permitted in the country were litigation is filed and may not allow the parties to, e.g., take depositions or demand specific forms of documentation. These differences are further complicated by the fact that how patents and trade secrets are enforced internationally requires an evaluation of the legal protections afforded such rights on a country-by-country basis. As patent and trade secret enforcement disputes themselves become increasingly international, such that it is no longer uncommon for parties to file multiple actions involving the same underlying intellectual property in myriad jurisdictions across the globe, the complexities of coordinated cross-border discovery and the implications of how to address related concerns such as protective orders, privacy requirements, and equitable relief may seem overwhelming to many practitioners.

This panel will follow the work of the Sedona Conference’s drafting team on this topic, combining the collected wisdom of the Sedona Conference’s Working Groups 9, 10 and 12 (addressing best practices in both patent and trade secret litigation), will examine issues arising from this new reality, focusing its guidance on what are the best practices to ensure that the parties to international patent and trade secret litigation can ensure that they receive available discovery from all sources so as to ensure that their claims and defenses are adequately presented to the courts addressing such disputes.

[Panel 3] Patent Invalidity Court Proceedings in Litigation Across Different Jurisdictions

Date: 
Tuesday, November 19, 2019 - 11:30am to 12:45pm
Panel Description: 

The international landscape concerning ways in which defenses in patent litigation can be based on invalidity arguments has become ever more complicated in recent years. There are some countries in which patent validity must be argued in patent litigation procedures in the same case as the infringement action at ordinary civil courts. In other countries, validity must be made the subject of a separate procedure in the civil courts, i.e., in the form of mandatory bifurcation. There are also other countries which have mixed systems in which defendants have the choice of either arguing validity in litigation or in a separate procedure (e.g., utility model cases in Germany). Furthermore, there are some systems where the applicant has a choice between various routes to contest validity (e.g., opposition and invalidation procedures). And a further variation exists in countries like Germany, where, depending on the timing of the litigation, the use of post-grant opposition procedures in litigation may be permissive or even mandatory before invalidation procedures can be initiated at specialized courts, like the German Federal Patent Court. This variety of mechanisms to assert patent invalidity has led to a remarkable degree of forum-shopping, particularly in Europe. This panel will lead a discussion on the mechanisms and pros and cons of the various invalidity procedures available around the world.

[Panel 4] Post-Grant Administrative Invalidity Proceedings Across Different Jurisdictions

Date: 
Tuesday, November 19, 2019 - 1:45pm to 3:00pm
Panel Description: 

The international legal mechanisms to invalidate patents continue to expand. While some countries require all validity challenges to be conducted in ordinary civil courts, most countries now have available a variety of administrative procedures or specialized tribunals to address patent validity. These administrative proceedings can have a profound impact on not only patent validity but on the way proceedings flow and are managed in the civil courts. In some systems, such as the U.S.A., patent validity can be challenged administratively within the Patent Office in an inter partes review, post-grant review, or ex parte reexamination proceeding. Europe offers not only a wide variety of countries and legal systems but there is the concurrent opportunity to be involved in an EPO opposition proceeding. Thus, administrative and specialized tribunal invalidity challenges can take many forms, and the strategy taken during administrative proceedings can be dependent on the options and timing of the civil courts. The variety of non-judicial proceedings can occur in many jurisdictions and each offers its own set of advantages.

[Panel 5] International Issues in Biopharma Patent Litigation

Date: 
Tuesday, November 19, 2019 - 3:00pm to 4:15pm
Panel Description: 

Biologic and pharmaceutical patent litigation differs from other types of patent litigation in significant ways. Biopharma litigation are frequently the result of statutory provisions for resolving patent disputes that are part of the generic drug or biosimilar approval framework. These provisions create unique substantive and case management issues. Where innovative biologic and pharmaceutical products requiring first-time FDA approvals are involved, other unique legal and case management issues often arise. Biologic and pharmaceutical patent litigations also frequently call on courts to balance the public’s interest in encouraging and rewarding the discovery and development of new drugs and biologics against that of making differentiated, life-altering, and/or lifesustaining therapies available to patients who may benefit from them. Topics include small molecules, generic pharmaceuticals, biologics, biosimilars, PTEs, and SPCs.

[Panel 6] Global Litigation of Standard-Essential Patent (SEP) and Fair, Reasonable, and Non-Discriminatory (FRAND) Issues

Date: 
Tuesday, November 19, 2019 - 4:30pm to 5:45pm
Panel Description: 

This panel will deal with current issues arising in SEP-related litigations across patent jurisdictions. The discussion will focus on the effects of commitments made to license patents on FRAND terms in infringement suits. In multiple jurisdictions, including Europe, the U.S., and China, courts have been called upon to examine the meaning of FRAND and the appropriate methodologies to determine a FRAND rate. For example, U.S., U.K., and German case law has recently addressed the meaning of “non-discrimination” in the FRAND commitment. In Europe, courts have been applying various approaches to further define the obligations of parties in FRAND license negotiations established by the Court of Justice of the European Union (CJEU) in its 2015 Huawei v. ZTE decision. Disputes across multiple jurisdictions have centered on the availability and adequacy of injunctions, the determination of global FRAND royalties, and the international jurisdiction of courts. The discussion will include developing case law in Asia, as recently Chinese courts have more frequently been involved in international litigations, as well as the increasing relevance of standard-essential patents in new markets for interconnected devices provided by traditional industries (“Internet of Things” applications, “smart cars,” etc.). The panel will cover:

  • Issues surrounding the availability of injunctive relief in SEP cases
  • consequences of FRAND obligations for the traditional concept of damages in patent law;
  • approaches to the calculation of FRAND royalties;
  • FRAND-specific cross-border procedural issues; and
  • how the developing global case law is shaping licensing and litigation strategies of patent owners and implementers.

[Panel 7] In-House Roundtable Company Perspectives on Global Patent Litigation

Date: 
Wednesday, November 20, 2019 - 8:00am to 9:15am
Panel Description: 

This panel will include a range of in-house counsel across different industries and business practices who manage global portfolios of patent litigation. Our dialogue will highlight their diverse perspectives, including their differing goals and concerns about the state of patent litigation across multiple jurisdictions. We’ll discuss the critical strategy issues they face and the fundamental considerations that impact their litigation decision-making.

[Panel 8] Strategic and Tactical Considerations in Selecting Venues for International Patent Litigation

Date: 
Wednesday, November 20, 2019 - 9:15am to 10:30am
Panel Description: 

This panel will summarize and compare the procedures and relief available in the principal international patent venues and consider the strategic and tactical considerations informing the choice of various venues, including the location of litigants, the size of the market, the quality of adjudication, the time to trial and final relief, available relief, availability of preliminary relief, the opportunity for defendant initiated litigation (e.g., declarations of noninfringement, non-essentiality, nullity actions, and actions affecting other jurisdictions), the cost of litigation, and recovery of fees. Current trends and advantages and disadvantages of multi-venue litigation will also be discussed. These issues will be addressed from the perspective of different types of plaintiffs and defendants.

[Panel 9] Patent Remedies Issues Across Different Jurisdictions

Date: 
Wednesday, November 20, 2019 - 10:45am to 12:00pm
Panel Description: 

This panel will discuss the various legal and procedural issues across major jurisdictions that play a role in patent remedies proceedings. These can be embedded in the technical part of the dispute (dealing with infringement and validity), separately, or in a "staggered" fashion, which raises a number of case management questions to be considered. There also is a wide variety of ways courts go about the calculation of damages, in particular reasonable royalties. The availability of and the requirements for other remedies such as the destruction and recall of infringing products has been harmonized in the EU, but not necessarily interpreted uniformly by the courts in different member states. Therefore, a patent owner should consider carefully what claim in which country will realistically be possible to enforce using a reasonable effort.