3 Lessons From An IP Conference

The Proving IP conference, hosted by NYU Law, reached the loftiest of academic heights.

(Image via Getty)

For many IP lawyers, springtime is conference time. A chance to hobnob with fellow practitioners, ideally in an interesting locale — with CLE on offer, of course. While some conferences are an opportunity for networking, others can take on a more serious bent, with in-depth exploration of hot topics of interest to the IP bar. The best conferences offer a bit of both, impressing upon attendees the importance of staying current with both developments in the law as well as professional developments in the lives of their acquaintances and colleagues. At a minimum, conferences present an opportunity for a break with routine, which can be beneficial in and of itself for otherwise busy practitioners.

The best conferences, however, make a more lasting impact. Often, that impact is measured less by the answers one receives by attending the conference and more by the questions one confronts while there. Put another way, the best conferences leave us thinking more deeply on the way out than we were on the way in, at least with respect to timely issues that impact on the advice we give our clients. One recent conference I attended, “Proving IP,” hosted by NYU Law, reached those lofty heights in my view. Admittedly, my expectations were high going in, based on the distinguished speakers on offer, from leading appellate jurists to prolific academics to titans of the IP bar. That the conference exceeded those expectations was an even more welcome surprise.

Due to some ongoing client matters, I was unable to attend each and every session over the day-and-a-half that Proving IP was held. But I did manage to catch Second Circuit luminary the Honorable Pierre Leval’s keynote on fair use in copyright, as well as the afternoon sessions on day one of the conference. The first of those sessions focused on how to prove the relevant markets for the goods and services at issue in any given intellectual property dispute. The second session was directed at the challenges presented in proving damages, including discussion of apportionment challenges as well as the restrictions practitioners often face in making their damages case at trial. Each presentation was lively and followed by intensive questioning for the speakers from the audience. To call the afternoon an intellectually stimulating one would be an understatement.

With the distance of a few days from my attendance, a number of thoughts continue to percolate in my head concerning what I heard and saw at the conference. Congruent with my statement above that the best conferences help us focus on the pressing questions of the day, for purposes of this column I would like to touch on three such questions, each regarding a different branch of IP law, that I think are worthy of continued focus. While I think these questions are representative of the quality of the presentations at Proving IP, they are in no way comprehensive, or even reflective of the true depth of the discussion I encountered while attending. That said, there is still much of value in considering these issues and continuing to look for developments in the law that help bring greater clarity to the murky legal waters that these issues represent.

First and foremost, I would be remiss if I did not lead with the weighty yet engaging presentation given by Judge Leval on fair use in copyright disputes. As with other leading jurists, Judge Leval did not hesitate to call out what he thought was erroneous thinking on the part of some in the copyright realm, in particular with respect to trying to ascertain whether copying was done in good or bad faith as part of the fair use analysis. Rather than focus on such subjective inquiries, Judge Leval urged the audience to think of the fair use analysis as one more interested in determining whether the use of the copyrighted material by the second creator was for a productive purpose. More importantly, he reminded the audience of the merit in supporting fair use that results in new works and benefits for the greater public, even in the face of the copyright owner’s interest in controlling all uses of the copyrighted work. In sum, it was a thought-provoking discussion of one of copyright’s thorniest legal doctrines, from the very mouth of the jurist famous for penning perhaps the seminal decision on that doctrine.

The next two questions — that the conference still has me thinking about — revolve around the perennial difficulty litigants have in terms of valuing their IP cases. These difficulties are perhaps most acute in the patent space, where there is no fallback as in copyright on statutory damages. And where assessing the factors that go into determining a reasonable royalty is harder than conducting a damages analysis in a typical trademark case. Not surprisingly, therefore, there was a good bit of discussion around patent damages during the panel on proving IP damages. Representing academia was Sarah Burstein, who I deemed the “design patent guru” in the title of my written interview of her on these pages.  The main takeaway from her presentation for me was the pressing need for more rigorous analysis around determining the “article of manufacture” in design patent matters, since that is such a key to properly valuing design patent claims. As with many things design patent, however, the relative paucity of cases and experienced practitioners working in the field makes developing law an exercise in patience. In the interim, the question of how to properly analyze and value a design patent claim remains a worthy one.

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The last question is one that I have grappled with for my entire career to some extent. Which is what is the best mechanism for proving patent damages to a factfinder, in a way that is consistent with the true value of the patented technology? Our guide for the discussion was none other than John Desmarais, who has been involved in many a patent trial that called for deft handling of damages issues. Particularly thought-provoking were his comments on the roadblocks trial lawyers often encounter in terms of putting on real-world damages evidence at trial.  While easy answers are hard to come by, proving damages in a patent case remains one of the more difficult intellectual nuts for any IP lawyer to crack.

Ultimately, we all have limited amounts of time to dedicate toward attending conferences, even in light of the CLE and networking benefits that they promise. When we are fortunate enough to attend a conference that is a worthwhile one, it behooves us to take the lessons we learn and really try to apply them to our practice. Moreover, even if a conference does not live up to expectations, like everything else in life we must try to take something positive from the experience. Because learning from everything and everyone never did anyone wrong.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.


Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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