Library: 2019 Spring Meeting
In This Section
What The © Is Going On?
May 15th, 2019
2019 Spring Meeting
(1) A Review of Copyright Developments in Music, Film and Software; (2) What Can RuPaul’s Drag Race Teach Us About Fair Use Under Copyright?; and (3) Evaluating the DMCA After 25 Years and the Future of Copyright Protections in the Digital Economy.
- Moderator — Nancy Mertzel, Mertzel Law, PLLC, New York, NY
- What Can RuPaul’s Drag Race Teach Us About Fair Use Under Copyright? — Brian Murphy, Frankfurt Kurnit Klein & Selz, PC, New York, NY
- Evaluating the DMCA After 25 Years and the Future of Copyright Protections in the Digital Economy — Victoria Sheckler, RIAA, Washington, DC
Staying on Top of A Gyrating Patent Landscape – What You Need To Know
May 15th, 2019
2019 Spring Meeting
(1) Getting Developers and Inventors to “Yes” - Overcoming Obstacles to Full Participation in the Invention Mining and IP Protection Process; (2) How Current On-Sale Bar, Public Use, and Grace Period Jurisprudence Affect Best Practices for In-House Counsel; and (3) Legislative and PTO Update: Pending IP Bills and Expected PTO Rule Changes.
- Moderator — Guy Donatiello, Endo Pharmaceuticals Inc., Malvern, PA
- Getting Developers and Inventors to “Yes” - Overcoming Obstacles to Full Participation in the Invention Mining and IP Protection Process — Jon Chiodo, Johnson & Johnson, New Brunswick, NJ
- How Current On-Sale Bar, Public Use, and Grace Period Jurisprudence Affect Best Practices for In-House Counsel — Priya G. Prasad, Exxon Mobil Corporation, Annandale, NJ
- Legislative and PTO Update: Pending IP Bills and Expected PTO Rule Changes — Matthew Sked, Senior Legal Advisori, United States Patent & Trademark Office, Alexandria, VA (invited)
Can You Draft A Single Patent Application for Success in Multiple Jurisdictions?
May 15th, 2019
2019 Spring Meeting
(1) Global Thinking: Tips for Drafting Applications for Filing in the US While Keeping in Mind Requirements of Other Jurisdictions US and EP Perspective (Germany/UK/ EPO); (2) US and Asia Perspective (China/Japan/India); and (3) Determining Inventorship In Virtual and Artificial Worlds.
- Moderator — Robin S. Quartin, Spark Technologies, Inc., Philadelphia, PA
- Global Thinking: Tips for Drafting Applications for Filing in the US While Keeping in Mind Requirements of Other Jurisdictions US and EP Perspective (Germany/UK/ EPO — Alessandro Steinfl, Steinfl+BrunoLLP, Pasadena, CA
- US and Asia Perspective (China/Japan/India — Lars H. Genieser, Panitch Schwarze Belisario & Nade, LLP, Philadelphia, PA
- Determining Inventorship In Virtual and Artificial Worlds — Saurabh Vishnubhakat, Texas A&M University Law School, Fort Worth, TX
Presenting Your Trademark Case at Trial
May 15th, 2019
2019 Spring Meeting
(1) Keys to Winning Damages, Profits and Attorney’s Fees at Trial; and (2) Best Practices for Presenting Your Trademark Case at Trial.
- Keys to Winning Damages, Profits and Attorney’s Fees at Trial — Bill Barber, Pirkey Barber, LLP, Austin, TX
- Moderator — Lauren Keller Katzenellenbogen, Knobbe Martens Olson & Bear, LLP, Irvine, CA
- Best Practices for Presenting Your Trademark Case at Trial — Hon. Michael Adlin, United States Patent & Trademark Office, Alexandria, VA (invited), David Franklyn, Golden Gate University, San Francisco, CA, Deborah Jay, Jay Survey Strategics, LLC, Redwood City, CA, Jeffrey H. Kinrich, Analysis Group, Los Angeles, CA, Bill Barber, Pirkey Barber, LLP, Austin, TX
Establishing Remedies for Trademark Infringement
May 15th, 2019
2019 Spring Meeting
(1) Know Your Forum: A Circuit Comparison of Requirements for Obtaining Monetary Relief Satisfying the Irreparable Harm Requirement for Preliminary Injunctions; (2) Trademark Surveys: Threshold Issues; and (3) Working with Experts to Present a Compelling Damages Case.
- Moderator — Lauren Keller Katzenellenbogen, Knobbe Martens Olson & Bear, LLP, Irvine, CA
- Know Your Forum: A Circuit Comparison of Requirements for Obtaining Monetary Relief Satisfying the Irreparable Harm Requirement for Preliminary Injunctions — David Franklyn, Golden Gate University, San Francisco, CA
- Trademark Surveys: Threshold Issues — Deborah Jay, Jay Survey Strategics, LLC, Redwood City, CA
- Working with Experts to Present a Compelling Damages Case — Jeffrey H. Kinrich, Analysis Group, Los Angeles, CA
It’s All About the Money: The More the Better!
May 15th, 2019
2019 Spring Meeting
(1) Lost Profits, Royalties, and Possible Extraterritoriality Issues in Patent Cases in View of WesternGeCo; and (2) Views from the Bench and Patent Litigation: A Conversation with US District Court Judge Leonard Stark.
- Moderator — Rivka Jungreis, Teva Pharmaceuticals, New York, NY
- Lost Profits, Royalties, and Possible Extraterritoriality Issues in Patent Cases in View of WesternGeCo — Dawn Hall, FTI Consulting, New York, NY
- Views from the Bench and Patent Litigation: A Conversation with US District Court Judge Leonard Stark — Hon. Leonard P. Stark, United States District Court for the District of Delaware, Wilmington, DE
Let the Force Be with You and Your Patent: Strategies for Minimizing The Risk Of Inequitable Conduct Or Unclean Hands
May 15th, 2019
2019 Spring Meeting
(1) On the Origin of Inequitable Conduct, and Insights Gained from Recent Decisions on Unenforceability/Unclean Hands; (2) Cleaning House: Strategies to Minimize the Risk of Allegations of Unclean Hands During Patent Enforcement Litigation; (3) Supplemental Examination - Cleaning Unclean Hands; and (4) Keeping Shipshape: Tips on Coordinating Global Patent and Regulatory Strategies to Minimize the Risk of Inequitable Conduct .
- Moderator — Stephen Farris, Ice Miller, Indianapolis, IN
- On the Origin of Inequitable Conduct, and Insights Gained from Recent Decisions on Unenforceability/Unclean Hands — Nancy Linck, Linck Consulting, Indianapolis, IN
- Cleaning House: Strategies to Minimize the Risk of Allegations of Unclean Hands During Patent Enforcement Litigation — Jeff Dyess, Bradley Arent, Birmingham, AL
- Supplemental Examination - Cleaning Unclean Hands — Tina McKeon, Kilpatrick Townsend, Atlanta, GA
- Keeping Shipshape: Tips on Coordinating Global Patent and Regulatory Strategies to Minimize the Risk of Inequitable Conduct — Jim Kelley, Nielsen IP Law, LLC, Houston, TX
Functionality and Eligibility Issues in Protecting User Experiences
May 15th, 2019
2019 Spring Meeting
(1) Separating Wheat from Chaff: Functionality Doctrine vs. Ornamentality Test vs. Separability Doctrine; (2) Altered States: Protection and Eligibility Issues for Projected, Virtual, and Transient Designs; and (3) Utility Patents: Protection and Eligibility Issues for Graphical User Interfaces.
- Moderator — Brianna Hinojosa-Smith, Microsoft Corporation, Redmond, WA
- Separating Wheat from Chaff: Functionality Doctrine vs. Ornamentality Test vs. Separability Doctrine — James Aquilina, Design IP, Allentown, PA
- Altered States: Protection and Eligibility Issues for Projected, Virtual, and Transient Designs — Tracy-Gene G. Durkin, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC
- Utility Patents: Protection and Eligibility Issues for Graphical User Interfaces — Malgorzata (Gosia) A. Kulczycka, Hickman Palermo Becker Bingham, LLP, San Jose, CA
Adventures in Patent Drafting: Making Your Crystal Ball Work for You!
May 15th, 2019
2019 Spring Meeting
(1) Strategically Drafting Specifications with Everything in Mind; (2) Written Description Issues in the Life Sciences; and (3) Tactically Drafting Claims for Potential Litigation.
- Moderator — Lynn B. Morreale, Intellectual Property Law Department of Arkema, Inc., King of Prussia, PA
- Strategically Drafting Specifications with Everything in Mind — Hayley J. Talbert, Seed IP Law Group, LLP, Seattle, WA
- Written Description Issues in the Life Sciences — Sharon E. Roberg-Perez, Robins Kaplan, LLP, Minneapolis, MN
- Tactically Drafting Claims for Potential Litigation — Benjamin E. Leace, RatnerPrestia, King of Prussia, PA
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Apple v. Samsung: Design Patent Damages After the War
May 15th, 2019
2019 Spring Meeting
(1) The State of the § 289 “Total Profits” Damages Regime: How Courts Are Applying “Article of Manufacture” and Other Factors for Damages Considerations; (2) Patent Prosecution Strategies for Design Patents: Practical Tips to Maximize Future Damages; and (3) Special Considerations When Litigating Design Patent Cases.
- Moderator — Matthew C. Wagner, PDC Brands, Stamford, CT
- The State of the § 289 “Total Profits” Damages Regime: How Courts Are Applying “Article of Manufacture” and Other Factors for Damages Considerations — Perry Saidman, Saidman Design Law Group, Silver Spring, MD
- Patent Prosecution Strategies for Design Patents: Practical Tips to Maximize Future Damages — Margaret Polson, Polson IP Law, Westminster, CO
- Special Considerations When Litigating Design Patent Cases — Chris Carani, McAndrews Held Malloy, Chicago, IL
Startup Stock Ownership: How to Contribute IP For Equity
May 15th, 2019
2019 Spring Meeting
Early-stage startups seek investment through one or more funding rounds. When IP is contributed to the startup along with investor funds, equity, alone or in combination with fees and/or royalties, is often exchanged for the grant of IP. This program will help IP attorneys understand the basic corporate transactions involved in equity financings and the relevant implications those transactions have on IP agreements for contributed IP. Topics: (1) Formation of a Business: Considerations in Selecting the Form of Entity and Type of Equity; (2) Key Terms of an IP Contribution Agreement; and (3) Accomplishing an Acquisition.
- Moderator — Jeremy K. McKown, Johnson & Johnson, New Brunswick, NJ
- Formation of a Business: Considerations in Selecting the Form of Entity and Type of Equity — Trevor J. Chaplick, Greenberg Traurig, Washington, DC
- Key Terms of an IP Contribution Agreement — Michele Herman, JusTech Law, PLLC, Bellevue, WA
- Accomplishing an Acquisition — Violetta A. Kokolus, Dechert, LLP, New York, NY
Welcome to The Digital Health Era: Navigating The Regulatory, IP and Privacy Issues
May 15th, 2019
2019 Spring Meeting
Joint Session of Food and Drug Law Committee, Emerging Technologies Committee, and Special Committee on Privacy and Data Security.
- Panel — Josh Sanders, GlaxoSmithKline, Warren, NJ, Jennifer McGee, Otsuka America Pharmaceutical, Inc, Rockville, MD, Mark Plotkin, HCA HealthCare, Nashville, TN
Luncheon Keynote (Hon. Mitchell S. Goldberg)
May 15th, 2019
2019 Spring Meeting
Keynote Speaker: The Honorable Mitchell S. Goldberg, United States District Court for the Eastern District of Pennsylvania, Philadelphia, PA
- Keynote — Hon. Mitchell S. Goldberg, United States District Court for the Eastern District of Pennsylvania, Philadelphia, PA
Peace, Love, And Litigation: Strategies for Defusing Unnecessary Disputes and Reducing Costs
May 16th, 2019
2019 Spring Meeting
(1) Administrative Forums (ITC Investigations, PTAB, TTAB); (2) Federal Courts — Litigation, Licensing, and Settlement; and (3) Trade Secret Misappropriation Lawsuits.
- Moderator — Yelena Morozova, Finnegan Henderson Farabow Garrett & Dunner, London, United Kingdom
- Administrative Forums (ITC Investigations, PTAB, TTAB —
- In-House Perspective — Andrew Johnson, Donaldson Company Inc., Minneapolis, MN
- Federal Courts — Litigation, Licensing, and Settlement — Lauren Steinhaeuser, Faegre Baker Daniels, LLP, Indianapolis, IN
- Trade Secret Misappropriation Lawsuits — Adam R. Steinert, Fredrikson & Byron, PA, Minneapolis, MN
Patent Pro Bono Program Call to Action
May 16th, 2019
2019 Spring Meeting
(1) An OED Ethics Update, the Latest Updates from the Office of Enrollment and Discipline; (2) A Patent Pro Bono Pro Program Overview – USPTO Patent Pro Bono Administrator; (3) Regional Pro Bono Practice Update; (4) Practitioner Experience with the Pro Bono Program; and (5) Inventor Experience with the Pro Bono Program.
- Moderator — Jeffrey I.D. Lewis, Norton Rose Fulbright US LLP, New York NY
- A Patent Pro Bono Pro Program Overview – USPTO Patent Pro Bono Administrator — Keith Dixon, United States Patent & Trademark Office, Alexandria, VA (invited)
- Regional Pro Bono Practice Update — Ryan W. Morris, Arts & Business Council for Greater Philadelphia, Philadelphia, PA
- Practitioner Experience with the Pro Bono Program — John A. Chionchio, Ballard Spahr, LLP, Philadelphia, PA
- Inventor Experience with the Pro Bono Program — Kyle Snowberger, Founder and CEO, Intercept Nexus, LLC, Hagerstown, MD
Your Trade Secrets Are Properly Protected, Right? Setting Up an Effective Trade Secret Protective Environment
May 16th, 2019
2019 Spring Meeting
(1) An Ounce of Prevention: The Importance of Employee Training and Engagement for Protecting Trade Secrets; (2) Managing Misappropriation: What to Do When Trade Secret Misappropriation is Suspected or Discovered; and (3)Trade Secret Protection: Reasonable Measures Meets Best Practices.
- Moderator — Gregory J. Commins, Jr., Baker Hostetler, Washington, DC
- An Ounce of Prevention: The Importance of Employee Training and Engagement for Protecting Trade Secrets — Stanton D. Weinstein, Fort Washington, PA
- Managing Misappropriation: What to Do When Trade Secret Misappropriation is Suspected or Discovered — Russell Beck, Beck Reed Riden, LLP, Boston, MA
- Unique Challenges of Trade Secret Protection in Co-Working Spaces Like WeWork —
- Trade Secret Protection: Reasonable Measures Meets Best Practices — Nicole Galli, Law Offices of N.D. Galli, LLC, Philadelphia, PA
A Survey of Cybersecurity and Privacy Issues in An Ever-Evolving World
May 16th, 2019
2019 Spring Meeting
(1) Are You GDPR Compliant? Understanding Its Requirements, Penalties, and Impact on the IP World; (2) The California Privacy Act of 2018: A Review of California’s New Privacy Law and Tips for Implementing Compliance Measures; and (3) So, You’re Drafting a Cybersecurity Policy? What IP Law Firms Must Know!.
- Moderator — Andrea Castetter, Eli Lilly, Indianapolis, IN
- Are You GDPR Compliant? Understanding Its Requirements, Penalties, and Impact on the IP World — Carol A.F. Umhoefer, DLA Piper, LLP, Washington, DC
- So, You’re Drafting a Cybersecurity Policy? What IP Law Firms Must Know! — James Goepel, Fathom Cyber, Philadelphia, PA
Let’s Talk It Out, Please Step Away from That Courthouse!
May 16th, 2019
2019 Spring Meeting
(1) Preserving and Enforcing Your ADR Remedies: Practical Drafting Issues for ADR in IP Agreements; (2) Win Your Mediation! Strategies for Preparation and Advocacy in IP Disputes; and (3) Can Arbitration Fix the Patent System: Use of ADR to Streamline PTAB Proceedings.
- Preserving and Enforcing Your ADR Remedies: Practical Drafting Issues for ADR in IP Agreements — Gary Benton, Silicon Valley Arbitration & Mediation Center, Palo Alto, CA
- Win Your Mediation! Strategies for Preparation and Advocacy in IP Disputes — James Amend, JAMS, Minneapolis, MN
- Can Arbitration Fix the Patent System: Use of ADR to Streamline PTAB Proceedings — David Newman, Gould & Ratner, LLP, Chicago, IL
Litigating Damages in Trade Secret Cases: What Every Lawyer Needs to Know
May 16th, 2019
2019 Spring Meeting
(1) So Many Theories, So Little Time: Figuring Out Which Damages Theory is Best for Your Case; (2) How Patent Damages Concepts May Provide Useful Analogues In Trade Secret Damages: A Discussion Of Apportionment And The Potential Application Of The Georgia Pacific Factors In Trade Secrets Cases; (3) The Space Between Lost Profits and Unjust Enrichment Damages; and (4) Measuring Damages Where Trade Secrets Have Not Yet Been Commercialized.
- Moderator — Dave Bohrer, Greenfield Southwick LLP, San Jose, CA
- So Many Theories, So Little Time: Figuring Out Which Damages Theory is Best for Your Case — Mark Klapow, Crowell & Moring, LLP, Washington, DC
- How Patent Damages Concepts May Provide Useful Analogues In Trade Secret Damages: A Discussion Of Apportionment And The Potential Application Of The Georgia Pacific Factors In Trade Secrets Cases — Nicole Galli, Law Offices of N.D. Galli, LLC, Philadelphia, PA
- The Space Between Lost Profits and Unjust Enrichment Damages — Walter Bratic, Whitley Penn, LLP, Houston, TX
Stand Ready! The Future of Certain Trademark and Copyright Protection Mechanisms
May 16th, 2019
2019 Spring Meeting
(1) Trademark & Copyright Protection in the Domain Name System: Where We Are & Where We’re Going; (2) Tackling the Beasts: Perspectives on Enforcing Rights in Online Marketplaces [Amazon, Ebay, Alibaba]; and (3) Content Takedowns: Controlling Content in Social Media and on Corporate Web- sites [Youtube, Facebook, Twitter].
- Moderator — Richard Peirce, Eckert Seamens, Philadelphia, PA
- Trademark & Copyright Protection in the Domain Name System: Where We Are & Where We’re Going — Mark Partridge, Partridge Partners, Chicago, IL
- Tackling the Beasts: Perspectives on Enforcing Rights in Online Marketplaces [Amazon, Ebay, Alibaba] — Terence A. Dixon, GlaxoSmithKline, Philadelphia, PA, Xinghao Wang, Alibaba Group
- Content Takedowns: Controlling Content in Social Media and on Corporate Web- sites [Youtube, Facebook, Twitter] — Roberta Jacobs Meadway, Baker Hostetler, Philadelphia, PA
Tools for Meeting the Cybersecurity Challenge
May 16th, 2019
2019 Spring Meeting
(1) Whose Data Is It Anyway? Issues at the Intersection of IP, Data Privacy and Cybersecurity; (2) De-identification, Pseudonymization, Anonymization – the Alphabet Soup of Rendering Personal Information Non-Identifiable; and (3) Navigating Through the Data Breach Notification Thicket: Preparing and Coordinating Your Response Team Jurisdiction by Jurisdiction.
- Moderator — Andrea Castetter, Eli Lilly, Indianapolis, IN
- Whose Data Is It Anyway? Issues at the Intersection of IP, Data Privacy and Cybersecurity — Lavonne Hopkins, Johnson & Johnson, New Brunswick, NJ
- De-identification, Pseudonymization, Anonymization – the Alphabet Soup of Rendering Personal Information Non-Identifiable — Kim Gray, IQVIA, Plymouth Meeting, PA
- Navigating Through the Data Breach Notification Thicket: Preparing and Coordinating Your Response Team Jurisdiction by Jurisdiction — Seth Jaffe, LEO Cyber Security, Dallas, TX
The Real IP Attorneys of The World: Strategies for Making Life Easier!
May 16th, 2019
2019 Spring Meeting
(1) You Represent a Global Corporation with Connected Innovation Centers Around the World: Have You Reviewed the Company’s Invention Disclosure Process Lately?; (2) The CEO Just Told You Her Company Will Fight the Multi-Country Litigation to the End: What’s Your Reaction and Guidance?; and (3) While Visiting the Korean Headquarters of Your Client Concerning a US and EU Litigation, the CTO Told You He Made Damaging Documents Disappear, So Don’t Worry: What Do You Do?.
- You Represent a Global Corporation with Connected Innovation Centers Around the World: Have You Reviewed the Company’s Invention Disclosure Process Lately? — Catherine J. Toppin, Clements Bernard Walker, Charlotte, NC
- The CEO Just Told You Her Company Will Fight the Multi-Country Litigation to the End: What’s Your Reaction and Guidance? — Markus R. Frick, Walder Wyss, Ltd., Zurich, Switzerland
- While Visiting the Korean Headquarters of Your Client Concerning a US and EU Litigation, the CTO Told You He Made Damaging Documents Disappear, So Don’t Worry: What Do You Do? — Christian Heine, KNH Patantänwalte PartG mbB, Düsseldorf, Germany
Words Matter! Actions Matter! People Matter!
May 16th, 2019
2019 Spring Meeting
Effective Persuasion: Negotiating and Litigating with Cross Cultural Awareness in China, Japan, Korea, Europe and Russia.
- Moderator —
- China — Jie Chai, Tian Yuan Law Firm, Beijing, China
- Japan and Korea — Kevin C. Kunzendorf, Sughrue Mion, PLLC, Washington, DC
- Europe and Russia — Siobodan Petoševic ́, Petoševic ́ Group, Brussels, Belgium
Parallel Proceedings in the PTAB/ITC/District Court – A View From The Bench
May 16th, 2019
2019 Spring Meeting
Joint Session of International Trade Commission and PTAB Trial Committees.
- Moderator — Tom Hassing, California Lawyers Association, Sacramento, CA
- Panel — Hon. Christopher J. Burke, Magistrate Judge, US District Court for the District of Delaware, Wilmington, DE, Hon. William Fink, Vice Chief Administrative Patent Judge, United States Patent & Trademark Office, Alexandria, VA (invited), Shara L. Aranoff, Covington & Burling, LLP, Washington, DC
Luncheon Keynote (Joaquin Duato, Johnson & Johnson)
May 16th, 2019
2019 Spring Meeting
Keynote Speaker: Joaquin Duato, Vice Chairman, Johnson & Johnson Executive Committee.
- Keynote Speaker — Joaquin Duato, Vice Chairman, Johnson & Johnson Executive Committee
Mission: Incomprehensible – Indefiniteness and Support in Post-Grant Trials
May 16th, 2019
2019 Spring Meeting
Panelists will consider various aspects of post-grant proceedings, particularly from the perspective of 35 U.S.C. § 112 and EPC Art. 123(2). Takeaways will be provided to assist prosecutors before the die is cast. Topics: (1) Tactics for IPR Petitioners – Interplay Between IPR and District Court Litigation; (2) Precluding the Problem: Tips and Pitfalls for Prosecutors; and (3) An International Perspective – Art. 123(2) in Opposition Proceedings.
- Moderator — Albert (Al) W. Vredeveld, Shumaker and Sieffert, PA, St. Paul, MN
- Precluding the Problem: Tips and Pitfalls for Prosecutors — Stephanie Schonewald, Choate Hall & Stewart, LLP, Boston, MA
- An International Perspective – Art. 123(2and in Opposition Proceedings — Emily Hayes, Mewburn Ellis, LLP, London, United Kingdom
Closing Plenary: Mid-Year in Review
May 17th, 2019
2019 Spring Meeting
(1) Trademark; (2) Patent; (3) Trade Secret; and (4) Copyright.
- Moderator — Rosaleen Morris Oskanian, Draeger Medical Systems, Inc., Treford, PA
- Trademark — Timothy Getzoff, Holland & Hart, LLP, Boulder, CO
- Patent — Amy L. Landers, Drexel Kline School of Law, Philadelphia, PA
- Trade Secret — Kelsey I. Nix, Jones Day, New York, NY
- Copyright — Joshua L. Simmons, Kirkland & Ellis, LLP, New York, NY
Ethics: “Don’t Try This at Home: The Questionable Ethics of Better Call Saul”
May 17th, 2019
2019 Spring Meeting
Closing Plenary Ethics CLE Presentation by Mercedes Meyer of Drinker Biddle, Washington, DC.
- Lawyer Up!! – Better Call Saul: Cloaking the Ambulance Chaser to Look Like a Refined IP Attorney — Mercedes Meyer, Drinker Biddle & Reath, LLP, Washington, DC