[Webinar] Latest trends in US patent law and their impact on Japanese companies Part 2 [Subtitles]

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Points of attendance

Our webinar addresses several important recent developments in U.S. patent law and examines their impact on Japanese corporations doing business in the United States.

We start by discussing the continued rise of patent litigation brought by non-practicing entities or NPEs, with a focus on the United States District Court for the Western District of Texas and Judge Alan Albright. We will examine recent developments regarding service under the Hague Convention and the impact on Japanese Corporations sued in the U.S. district courts. We then turn to the increased assertion by NPEs of patents that are encumbered by fair, reasonable, and non-discriminatory (“FRAND”) licensing terms due to commitments made by prior owners of those patents to certain standard-setting organizations. We will present specific and impactful ways that Japanese Corporations can combat such assertions by NPEs. Finally, we will update our audience on recent developments in U.S. law concerning inter partes review (“IPR”) estoppel. This discussion will provide an update from our FRONTEO seminar in July 2019 in Tokyo, when we were preparing for the first trial in the United States to be held on IPR estoppel, which we subsequently won last year. We will conclude with key takeaways for Japanese Corporations.

lecturer

Brian Paul Gearing, Partner

Brian Paul Gearing is a partner in the New York office of Crowell & Moring and a member of the Intellectual Property Group. He has experience in all stages of litigation, from pre-suit investigations through appeal in numerous jurisdictions, and before the ITC. Dr. Gearing has also advised clients on portfolio management and adversarial patent licensing negotiations and has prepared invalidity and non-infringement opinions. He has unique experience working in Tokyo, Japan, where he spent three years representing Asia Pacific-based clients in U.S. litigations and arbitrations. Dr. Gearing has substantial experience with a wide variety of technologies, including mechanics and dynamics of materials, semiconductor and hard disk design and manufacturing, microprocessor technology, wireless communications, and networking equipment and architecture. He also counsels clients on the implementation of new technologies such as blockchain and distributed ledgers, and the development of innovative products such as virtual currencies and blockchain-based assets. Dr. Gearing is an author of fifteen scientific publications and a named inventor on two U.S. patents.

Michael H. Jacobs, Partner

Michael H. Jacobs is a co-chair of Crowell & Moring's Patent Prosecution Group. He focuses on patent, trademark, trade secret, and copyright infringement litigation, post-grant patent proceedings, intellectual property portfolio management, patent procurement, counseling, and licensing. Mr. Jacobs has litigated patent disputes before district courts throughout the United States, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences), the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit. Mr. Jacobs has extensive experience with post-issuance proceedings at the USPTO, managing all aspects of these cases from the pre-declaration stage through final judgment and appeal. Mr. Jacobs' counseling work has involved assisting both large and small clients with the creation and implementation of intellectual property protection and procurement programs, as well as in evaluating infringement and validity issues for patentees and third parties. He has also worked with clients to develop creative solutions to managing intellectual property assets, including the development of portfolio-valuation tools.

Profile

Crowell & Moring LLP

Crowell & Moring LLP is an international law firm with offices in the United States, Europe, MENA, and Asia that represents clients in litigation and arbitration, regulatory and policy, and transactional and corporate matters. The firm is internationally recognized for its representation of Fortune 500 companies in high-stakes litigation and government-facing matters, as well as its ongoing commitment to pro bono service and diversity, equity, and inclusion.