Home / Meetings & Education / Library of Meeting Materials

Library: 2019 Mid-Winter Institute

In This Section

Diversity & Inclusion: Views from In-House

January 30th, 2019
2019 Mid-Winter Institute

The panel will provide views from in-house counsel on diversity and inclusion. We will also hear from in-house counsel on how they can impact on recruiting and retaining diverse candidates and on succession planning; the use of programs, such as secondments to advance diversity at firms; and how outside counsel can assist in advancing in-house counsel within their companies.

Speakers:
  • Moderator — Sarah Harris, General Counsel, United States Patent and Trademark Office, Alexandria, VA
  • Panel — Eileen Hunter, Senior IP Litigation Counsel, 3M Company, St. Paul, MN, Barbara Fisher, Chief IP Counsel, Lockheed Martin Corporation, Manassas, VA, Ernie Torain, Chief IP Counsel, ITW, Glenview, IL

Diversity & Inclusion: Views from the Bench

January 30th, 2019
2019 Mid-Winter Institute

The panel will provide views from the bench on diversity and inclusion, including how the court can and is promoting diversity and opportunities for meaningful roles and experience for junior associates and diverse candidate.

Speakers:
  • Moderator — Hon. Sue L. Robinson (Ret.), Farnan, LLP, Wilmington, DE
  • Panel — Hon. Cathy Bissoon, U.S. District Court, Western District of Pennsylvania, Pittsburgh, PA, Hon. Adalberto Jordan, U.S. Court of Appeals, Eleventh Circuit, Atlanta, GA, Hon. Hildy Bowbeer, U.S. District Court, District of Minnesota, St. Paul, MN

Searching, Registering and Enforcing Trademarks and Trade Dress Worldwide: New Trends and New Technology

January 31st, 2019
2019 Mid-Winter Institute

(1) Fraudulent Trademark Filings at the USPTO - A Report by Commissioner Denison; (2) Trademark Searching and Enforcement - The Latest Tools and Tips; and (3) Emerging Trade Dress Issues in Europe.

Speakers:
  • Moderator — Ury Fischer, Lott & Fischer, PL, Coral Gables, FL
  • Fraudulent Trademark Filings at the USPTO - A Report by Commissioner Denison — Mary Boney Denison, United States Patent and Trademark Office, Alexandria, VA
  • Trademark Searching and Enforcement - The Latest Tools and Tips — Glenn A. Gundersen, Dechert LLP, Philadelphia, PA
  • Emerging Trade Dress Issues in Europe — Vincenzo Melilli, Bugnion S.p.A., Milan, Italy

Joint and Contributory Infringement Claims

January 31st, 2019
2019 Mid-Winter Institute

(1) Issues and Considerations in Drafting Opinion of Counsel Involving Joint and Contributory Infringement; (2) Issues and Considerations in Pre-Suit Investigations and Due Diligence in Joint and Contributory Infringement Claims; and (3) Ethical Considerations in Pursuing Joint and Contributory Infringement Claims.

Speakers:
  • Moderator — Adrian Looney, Pfizer Inc., New York, NY
  • Issues and Considerations in Drafting Opinion of Counsel Involving Joint and Contributory Infringement — Dominick A. Conde, Venable LLP, New York, NY
  • Issues and Considerations in Pre-Suit Investigations and Due Diligence in Joint and Contributory Infringement Claims — Aaron R. Fahrenkrog, Robins Kaplan LLP, Minneapolis, MN
  • Ethical Considerations in Pursuing Joint and Contributory Infringement Claims — Karen Boyd, Turner Boyd LLP, Redwood City, CA

The Social Media Effect

January 31st, 2019
2019 Mid-Winter Institute

How Social Media Content Ripples Through IP Law in Court, in Chambers, and in the Jury Room.

Speakers:
  • Moderator — Jim Shead, ARRIS, Austin, TX
  • Intellectual Property Pitfalls on Social Media — Margaret A. Esquenet, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C.
  • In Search of a Fair Trial: The Use of Social Media in Jury Selection — G. Christopher Ritter, The Focal Point LLC, Oakland, CA

Adapting to Adapting Technologies

January 31st, 2019
2019 Mid-Winter Institute

This program will consider: (1) Adoption of AI within the national offices to facilitate their work; and (2) Patenting AI and other emerging technologies (e.g. blockchain) at the national offices, where: (i) AI is claimed as part of a computer implemented invention; and, (ii) AI has been used to generate the claimed invention, for example in drug repurposing.

Speakers:
  • Moderator — Bruce D. Sunstein, Sunstein Kann Murphy & Timbers LLP, Boston, MA
  • Patenting Artificial Intelligence (USPTO) — Bob Bahr, United States Patent and Trademark Office, Alexandria, VA
  • EPOs Approach to Artificial Intelligence — Christian Platzer, European Patent Office
  • IP System for Promoting Use of Artificial Intelligence and IoT technologies in Japan — Toru Matsuoka, Japan Patent Office, Tokyo, Japan

In-house/Outside Counsel Working Together

January 31st, 2019
2019 Mid-Winter Institute

This program will explore how to elicit the information you need from outside counsel and how to respond to give a company what they need. This will be done within the context of a hypothetical Request for Proposal (RFP), addressing the initial written response and in-person pitch, using a panel of in-house experts to evaluate and assess the pitch both the good and the bad. Topics: (1) What in-house counsel is looking for in outside counsel - and mechanisms to get these desires across; and (2) The Pitch.

Speakers:
  • Moderator — Robert A. Weaver, Cozen OConnor, Miami, FL
  • Panel — W. Todd Baker, Oblon, McClelland, Maier & Neustadt, L.L.P., Alexandria, VA, Valerie L. Calloway, IBM, Armonk, NY, Philmore H. Colburn, Cantor Colburn LLP, Hartford, CT, Gauri Dhavan, ZOLL Medical Corporation, Chelmsford, MA, Eric F. Wagner, Duke University, Durham, NC, Jenifer Ward, General Electric, Albany, NY

Working Together: How Outside Counsel and In-House Legal Operations Work Together To Modernize Today’s IP Practice

January 31st, 2019
2019 Mid-Winter Institute

Today’s in-house attorney must juggle multiple and sometimes competing demands when delivering value to an enterprise. Outside counsel, more than ever, is expected to partner with the in-house legal organization to bring value and impact in a cost conscious, long view approach. This panel will dive into how the outside counsel/in-house relationship can be used to: (1) Manage cost pressures such as finding cost-effective solutions to budget mandates; (2) Find synergistic divisions of work between inside and outside counsel, as well as vendors; (3) Develop preferred vendor relationships; and (4) Impact the diversity of legal pipeline.

Speakers:
  • Moderator — Steven Lundberg, Schwegman Lundberg & Woessner, P.A., Minneapolis, MN
  • Panel — Alex Long, GE Aviation, Cincinnati, OH, Lissi Mojica, Answers IP, LLC, Alexandria, VA, Lata Setty, UnitedLex Corporation, Overland Park, KS, Angela Wilson, GlaxoSmithKline, PLC, Research Triangle Park, NC

Licensing-in and Acquiring Technologies

February 1st, 2019
2019 Mid-Winter Institute

(1) Bankruptcy: how to address in licensing, disposing of trademark and other IP assets post-bankruptcy; (2) Due Diligence and antitrust issues: Considering the mega-deals and the evolving framework; and (3) Partnering with universities and other small entities.

Speakers:
  • Moderator — Prof. Harry First, New York University School of Law, New York, NY
  • Bankruptcy: how to address in licensing, disposing of trademark and other IP assets post-bankruptcy — Mark A. Salzberg, Squire Patton Boggs LLP, Washington, DC
  • Due Diligence and antitrust issues: Considering the mega-deals and the evolving framework — Jesse Solomon, Davis Polk & Wardwell LLP, Washington, DC
  • Partnering with universities and other small entities — Valerie Landrio McDevitt, University of South Florida, Tampa, FL

Oracle v. Google – Getting More (or Less) Than You Licensed

February 1st, 2019
2019 Mid-Winter Institute

(1) Case Summary; (2) Implications on Proprietary and Open Source Software Licensing; and (3) Impact on the Application of the Fair Use Doctrine and Interoperability in the US and Abroad.

Speakers:
  • Moderator — John L. Lyon, Thomas Horstemeyer, LLP, Atlanta, GA
  • Case Summary — Paul E. Burns, Procopio, Cory, Hargreaves & Savitch LLP, Los Angeles, CA, Sean B. Fernandes, Intel Corporation, Beaverton, OR
  • Implications on Proprietary and Open Source Software Licensing — Jeffrey W. Gluck, Panitch Schwarze Belisario & Nadel LLP, Philadelphia, PA
  • Impact on the Application of the Fair Use Doctrine and Interoperability in the US and Abroad — Prof. Gary Myers, University of Missouri School of Law, Columbia, MO

Don’t Get Too Close to the Edge: What Life Science Companies Need to Know about Managing Standards Setting and Open Source Risks

February 1st, 2019
2019 Mid-Winter Institute

(1) Momenta v. Amphistar (D. Mass./Fed. Cir.) ; (2) Patent Licensing Solutions for Standards and Platforms; (3) CRISPR: Editing the Code of Life; and (4) Thinking Beyond Standards Setting & Open Source.

Speakers:
  • Moderator — Thomas J. Kowalski, Duane Morris LLP, New York, NY
  • Momenta v. Amphistar (D. Mass./Fed. Cir.) — David W. Long, Essential Patent LLC, Oak Hill, VA
  • Patent Licensing Solutions for Standards and Platforms & CRISPR Patent Pool — Kristin Neuman, MPEG-LA, New York, NY
  • Thinking Beyond Standards Setting & Open Source — Nate Kurtis, The Broad Institute, Inc., Cambridge, MA

Persuasion in Various Settings

February 1st, 2019
2019 Mid-Winter Institute

(1) Persuading Patent Examiners; (2) Settlement Negotiation; and (3) Persuading Tribunals: ITC.

Speakers:
  • Moderator — Jeffrey I. D. Lewis, Norton Rose Fulbright US LLP, New York, NY
  • Persuading Patent Examiners — Daniel R. Brownstone, Fenwick & West LLP, New York, NY, Wendy Garber, United States Patent & Trademark Office, Alexandria, VA
  • Settlement Negotiation — Steve Bossone, Alnylam Pharmaceuticals, Cambridge, MA, Freddie Park, Park IP Conuslting, Los Altos, CA
  • Persuading Tribunals: ITC — James B. Altman, Foster, Murphy, Altman & Nickel, PC, Washington, DC, Andrew F. Pratt, Venable LLP, Washington, DC

Persuasion in Practice: Persuading Judges and Juries

February 1st, 2019
2019 Mid-Winter Institute

A panel discussion on the use of political science and psychology to make you more persuasive and a more effective negotiator, including mock arguments based on actual Supreme Court arguments. This panel is a follow-up to an earlier presentation on negotiations by renowned political scientist and author Bruce Bueno de Mesquita.

Speakers:
  • Moderator — Tara Trask, Trask Consulting, San Francisco, CA
  • Mock Argument — Erik Combs, Pirkey Barber PLLC, Austin, TX, Kristin M. Whidby, Fried, Frank, Harris, Shriver & Jacobson LLP, Washington, DC
  • Additional Panelists — Hon. Jose L. Linares, United States District Court, District of New Jersey, Prof. Bruce Bueno de Mesquita, New York University, New York, NY, Prof. Christopher Roby, University of Tampa, Tampa, FL, Russ Rosenzweig, Co-Founder of Round Table Group (n/k/a Thomson Reuters Expert Witness Services), Chicago, IL

The Art of Persuasion and Effective Negotiation for Tomorrow’s Leaders: The Essential Principles of Persuasion

February 1st, 2019
2019 Mid-Winter Institute

Can political science and psychology make you more persuasive and a more effective negotiator? Yes! Renowned political scientist and author Bruce Bueno de Mesquita will explain his method for modeling negotiations. Prof. Bueno de Mesquita is specializes in international relations, foreign policy, and nation building. He has authored numerous books on negotiation theory. Prof. Christopher Roby of the University of Tampa will offer insights on behavioral economics and ways in which this rapidly evolving branch of psychology can make us more persuasive.

Speakers:
  • Moderator — Russ Rosenzweig, Co-Founder of Round Table Group (n/k/a Thomson Reuters Expert Witness Services), Chicago, IL
  • The Predictioneers Game: Improving Litigation Outcomes — Prof. Bruce Bueno de Mesquita, New York University, New York, NY
  • Irrationality and How to Deal with (Some of) It — Prof. Christopher Roby, University of Tampa, Tampa, FL

What Every IP Practitioner Needs to Know About Risk Management

February 2nd, 2019
2019 Mid-Winter Institute

(1) Attorneys, Clients and Sex: The Ethical and Legal Dilemmas; (2) Employment Law Issues for Law Firms; and (3) Risk of Social Media for Law Firms and Attorneys.

Speakers:
  • Moderator — Nicole Wanty, Talem IP Law LLP, Gainesville, Florida
  • Attorneys, Clients and Sex: The Ethical and Legal Dilemmas — Michael E. McCabe, Jr., McCabe Law LLC, Potomac, MD
  • Employment Law Issues for Law Firms — Jonathan W. Yarbrough, Constangy Brooks, Smith & Prophete LLP, Asheville, NC
  • Risk of Social Media for Law Firms and Attorneys — Prof. David Hricik, Mercer University School of Law, Macon, GA

What Every IP Practitioner Needs to Know About Privacy and Cybersecurity

February 2nd, 2019
2019 Mid-Winter Institute

(1) Protecting Against a (Cyber) Security Breach; (2) Dealing with the Breach; and (3) The After-Breach.

Speakers:
  • Moderator — Dennis Duncan, Dolby Laboratories, San Francisco, CA
  • Protecting Against a (Cyber) Security Breach — Chris Pierson, BLACKCLOAK, Orlando, FL
  • Dealing with the Breach — Cheri Caddy, National Security Agency, Washington, DC
  • The After-Breach — Eric W. Spore, Federal Bureau of Investigation, Tampa, FL

President's Forum: § 101

February 2nd, 2019
2019 Mid-Winter Institute

Section 101 in 2019: A Look Ahead.

Speakers:
  • Moderator — Barbara A. Fiacco, Foley Hoag LLP, Boston, MA
  • Panel — Vincent Garlock, Deputy Executive Director, AIPLA, Arlington, Virginia, Robert L. Stoll, Drinker Biddle & Reath LLP, Washington, DC, Russ Slifer, Schwegman Lundberg & Woessner, P.A., Boise, ID, Robert A. Armitage, Intellectual Property Consultant and Former Senior Vice President and General Counsel of Eli Lilly and Company, Marco Island, FL