June 7, 2013 LAS VEGAS

1. LAIPLA Spring seminarBest practices post aia:Don’T GAMBLE WITH YOUR CLIENT’S INTELLECTUAL PROPERTY June 7, 2013 LAS VEGAS

2. PANELISTS – Our Dealers Tonight! • Andrew D. Mickelsen – McDermott Will & Emery • Dealer One • Robert Z. Evora - Patent Counsel – Legal Munchkin, Inc. • Dealer Two • David L. Hoffman – Hoffman Patent Group • Dealer Three • Georgann S. Grunebach – Vice President, IP Fox Group Legal • Dealer Four • Teresa Stanek Rea - Acting Under Secretary of Commerce for IP and Acting Director of the United States Patent and Trademark Office • The Pit Boss

3. Best practices post aia – Dealer One • Adapting Day to Day Practices to a “First to File” World • Filing Decisions • In-House Education and Training • Docketing • Understanding Disclosures Under Section 102

4. Best Practices Under AIA Portfolio Objectives Invention Harvesting Filing Decisions Application Prep and Filing

5. Transform reactive into proactive • PORTFOLIO OBJECTIVES • Define from multiple perspectives • Management buy-in • Use to motivate and educate INVENTION HARVESTING • Meetings • Frequency and duration • Invitees • Invention Disclosure Submissions • Simplify forms and submission process • Incentives

6. Transform reactive into proactive • FILING DECISIONS • Designate decision makers • Evaluate and act on submissions frequently • Increase transparency APPLICATION PREP AND FILING • Specify and follow reasonable timeline • Drafting • Review • Plan/Docket prospectively • Use provisional filing strategies

7. Records and disclosures • EVIDENCE OF INVENTION • Continue to maintain inventor notebooks, design documents, etc. • Evidence in derivation proceedings • Document trade secrets EVIDENCE OF DISCLOSURE • Track and record external business activity • Technical presentations, marketing materials, JRAs, NDAs, etc. • Who? What? When? Where? Why? • Disqualify art under § 102(b) exceptions • Preclude competitor patenting • Evidence in derivation proceedings

8. Best practices post aia – DEaler two • Virtual Marking of Manufactured Products – From a Corporate Perspective • Priority Issues Pre and Post March 15, 2013 • Additional First To File Considerations

9. BEST PRACTICES UNDER AIA – DEALER TWO • Preserving the “First-To-Invent” (pre-AIA) §102 / §103 Status • For Applications filed before March 16, 2013. • Each claim has an EFD of 3/15/13 or earlier. • Caveats: • 1. Filing a non-prov app based on pre-AIA prov app. • 2. Filing a CIP app based on pre-AIA app. • 3. Claims in post AIA app are literally supported but invention was enabled on, or after, 3/16/13. • 4 Claims in post-AIA app constitute new mater. • Continuation Applications

10. Best Practices Under AIA – dealer two • First-To-File • Effective Filing Date Grace Period: Disclosures made by an inventor Patent Applications • No geographical limitations • No Antedating

11. Best Practices Under AIA – Dealer two • Virtual Marking • U.S. virtual marking v. International marking • Patents: http://www.munchkin.com.patent • Although most search engines are fairly intuitive, keep http://. • Does packaging and products have to be changed at the same time? • Transition time for package vs. tooling changes is reasonable. • Patent marking review embedded in the company package review process.

12. Best practices post aia – Dealer three • Post Grant Review (PGR) • Inter Partes Review (IPR) • Business Methods Patents Under AIA

13. Patent Owner Reply To Opposi-tion (if any) to Amend-ment Petition Filed Patent Owner Response To Decision & Optional Motion To Amend Claims Petitioner Reply To Patent Owner Response & Opposition to Motion to Amend (if any) 3mo 3mo 3mo 1mo TIMELINE FOR PGR, IPR & CBM Patent Owner Preliminary Response (Optional) PTO Final Decision (≤12 mos from initial decision) ≤ 3mo Cross Examination After Supplemental Evidence Due 1mo Petitioner Motion To Supplement Oral Hearing On Request PTO (Initial) DECISION ON PETITION (then scheduling order) Patent Owner Discovery Period Petitioner Discovery Period Patent Owner Second Discovery Period Period For Observations Re Testimony & Motions To Exclude

14. FACTORS FOR STAYS OF CO-PENDING LITIGATION 1. SIMPLIFY ISSUES & TRIAL? 2. DISCOVERY COMPLETE/TRIAL DATE SET? 3. UNDUE PREJUDICE TO NON-MOVING PARTY? 4. REDUCE LITIGATION BURDEN ON PARTIES & COURT?

15. ESTOPPEL EFFECTS UPON FINAL DECISION For the claims attacked or added PGR Any ground that petitioner raised or reasonably could have raised IPR Any ground that petitioner raised or reasonably could have raised CBM Any ground that petitioner actually raised

16. Best practices post aia- Dealer four • Developing Patent Portfolios in Underdeveloped Technology Areas • Documentation of Prior Commercial Use Under AIA • Pro Bono Work in Support of Financially Challenged Inventors

17. BEST PRACTICES POST AIA- DEALER FOUR • Developing portfolios in underdeveloped technology areas, you are seldom dealt a winning hand! • Establish and understand business and patent portfolio goals • Evaluate the Company assets by mining and analyzing existing IP assets • Determine if the Company must procure assets to fill out their portfolio • Deploy the IP assets through licensing and litigation

18. Best practices post aia- Dealer four • Carefully study the hand you’ve been dealt! • Determination of ownership and inventorship is critical under AIA • Carefully examine all Company agreements related to: • Executives • Employees • Vendors • Contractors/Subcontractors/Consultants • Joint Development and R & D Relationships

19. BEST PRACTICES POST AIA- DEALER FOUR • Draw some new ‘cards’ into your hand • Propose Standard Terms and Conditions • Focus on IP Ownership, Indemnification, Third Party Licenses • Audit your Client’s internal and external communications • Interject your Office into the Communication flow • Interject your Office into the Agreement Review/Approval Process • Interject your Office into the HR function • Interject your Office into the Configuration Control Function • Interject your Office into Project Review Process (PDRs and CDRs) • Audit all publications released in any form transmitted.

20. BEST PRACTICES POST AIA- DEALER FOUR • Prior Users Rights Under AIA • The AIA expanded the “prior user rights” defense to infringement and broadened the classes of patents eligible for this defense. • Prior user rights protect third parties who can demonstrate they were commercially using the invention for at least one year prior to the filing date of a patent application relative to such invention. • Prior user rights are not NEW! Previously established in 1999, limited to patents directed to methods of conducting business. • Prior user rights now extend under AIA to patents covering ALL technologies.

21. BEST PRACTICES POST AIA- DEALER FOUR • Limitations to Prior Users Rights Under AIA • Prohibition against license, assignment or transfer of the defense other than in connection with an assignment or transfer of the entire business to which the defense relates • Defense geographically limited to cover only those sites where invention was used before the critical date (patent filing date). • Explicit exception to the defense for patents owned by or assigned to universities or affiliated tech transfer organizations. • DOCUMENTATION OF YOUR CLIENT’S INTERNAL USE ACTIVITY IS CRITICAL TO SUPPORT THIS DEFENSE! • KNOW YOUR CLIENT’S HAND!

22. BEST PRACTICES POST AIA- DEALER FOUR • Pro Bono Work in Support of Challenged Inventors – Section 32 of the AIA • Section 32 of the AIA established: • “The Director shall work with and support Intellectual Property Law Associations across the Country in the Establishment of Pro Bono Programs designed to assist financially under-resourced independent inventors and small businesses.” • Section 32 ‘levels the gaming table’ and facilitates participation in the patent process by innovators who don’t have the requisite ‘grub stake’ to sit at the table. • In 2011 Pilot Program initiated in Minnesota with first ‘player’ joining the ‘table’ within moments of signing of AIA • Pilot has produced 20 clients, 2 issued patents • In 2012 – Additional programs established in CA, CO and DC Metro Area, and Nationwide Clearing House Established with the Federal Circuit Bar • Nationwide Task Force – AIPLA, ABA, IPO, USPTO Fed Cir Bar, Judiciary • Goal of 2013 an additional 10 Programs • Goal of 2014 Regional Programs

23. BEST PRACTICES POST AIA- DEALER FOUR • Nationwide Clearing House • Initial Screening and Referral of Prospective Pro Bono Clients (linked to USPTO.gov) • Three Criteria of Potential “Players” • Understanding the Patent Processs • Filing Receipt – Provisional or Non Provisional • Successful completion of USPTO Certificate training • Patent Search Question • Brief Description of the Invention • Matching with Volunteer In-House or Outside Counsel

24. Q AND A WITH OUR “PIT BOSS” • Questions for and Comments by Acting Director Rea

25. SCENARIO ONE • A start-up company, with an exciting new product consists of a small team of key personnel who have known each other since their university days.  They wish to document and capture through a series of filings a portfolio that they can monetize.  They have approached outside counsel for suggestions on this incubator? • The key personnel work out of an open store front in a business center, which is open to the public. • They attend every meeting of peer groups in their technology area, often making sole and joint presentations on their latest research. • During their start up, they have ‘paid’ for vendor work by allowing the vendors to work for free, but providing their review and analysis of the vendor’s products. • This company has no written agreements between the key personnel, vendors or others that you can locate.

26. SCENARIO TWO • A multi-national corporation specializes in software development for the financial industry (BANKSOFT) has adopted a new docketing system in response to requests from management to facilitate support of the new issues associated with AIA, and evaluation of their patent portfolio under the new rules.  • The corporation institutes an OG watch for financial industry patents issuing in their field and becomes aware of a recently issued patent of concern. The patent has an effective filing date of after March 16, 2013. The corporation dockets the PGR 9 month deadline. The patent has claims that may cover a newly implemented computer driven process (post filing date of the patent) that sends financial information to its customers’ smart phones, but there is a key “means plus function” term in one claim and a key phrase in another claim that are difficult to interpret. The corporation has not done a patent validity search yet on this patent, but is aware of its own patent that is prior art. • What should the corporation consider in deciding whether to bring a PGR proceeding against the patent versus a subsequent CBM petition or IPR petition?   • What impact does the AIA in conjunction with various case law have on this unique area covered by business method patents?

27. SCENARIO THREE • A traditional US based aerospace corporation (AEROFLIT) with a massive (16,000 plus) patent portfolio must update their traditional patent disclosure, committee and award system in light of AIA.  They have approached your firm for recommendations? • AEROFLIT has a well entrenched patent disclosure system and an existing patent committee, the system is primarily on paper, but they have recently expanded to a electronic docketing system. The company has dozens of specialized divisions which are located throughout the US and Europe. • The Company has two in-house counsel, one senior, one junior. They primarily manage the portfolio and outside counsel from their offices in CA. They travel seldom to the outlying divisions and are not engaged on a daily basis with the business executives or engineers.

28. Questions from our players? • Thank you all and thank the Los Angeles Intellectual Property Law Association for their gracious invitation to speak to you today! • Good luck as you ‘play’ under the AIA!!! • And remember, don’t GAMBLE with your Client’s IP rights!