8:45 a.m. – 5:00 p.m. – Practical Tips on Intellectual Property Law
Separate registration required. Visit the Practical Tips on Intellectual Property Law program site for further details on this one-day program and to register online.

5:00 p.m. – 7:00 p.m. – Open Registration and Check-in Stop by on Wednesday evening to check-in early before the start of programming on Thursday morning. Avoid standing in long lines on Thursday morning by checking in early and picking up your conference materials the evening before.

7:30 a.m. – 5:00 p.m. – Registration and Check-in

8:30 – 11:45 a.m.
Two Concurrent Program Tracks
(there will be a 15-minute break at approximately the midpoint of the sessions)

I. What Works? Best Practices for an IP Trial as Viewed from the Bench and Bar

A panel of prominent judges and IP lawyers (both outside and inside counsel) will engage in an interactive discussion on the best practices for an IP Trial, as viewed from their various perspectives. The panel will not only identify what the best practices are, but also will probe to find out why they are considered “best”.

Opening Remarks: Monique Morneault, Wallenstein Wagner & Rockey, Ltd., Chicago, IL. Program Co-Chair.

Welcome Remarks: E. Anthony Figg, Rothwell, Figg, Ernst & Manbeck, PC, Washington, DC. Chair, ABA Section of Intellectual Property Law.

Moderator:
Mark T. Banner, Banner & Witcoff, Ltd., Chicago, IL

Panelists:

Hon. Paul R. Michel, Chief Judge, U.S. Court of Appeals for the Federal Circuit, Washington, DC

Hon. T.S. Ellis, U.S District Court for the Eastern District of Virginia, Alexandria, VA

Hon. Susan Illston, U.S. District Court for the Northern District of California, San Francisco, CA

Dale Cendali, O’Melveny & Myers LLP, New York , NY Robert G. Krupka, Kirkland & Ellis, LLP, Los Angeles, CA

Joseph R. Re, Knobbe Martens, Olson & Bear LLP, Irvine , CA

William F. Lee, Wilmer Cutler Pickering Hale & Dorr LLP, Boston, MA

Professor Kimberly Pace Moore, George mason University School of Law, Arlington, VA

 

II . Anti-Counterfeiting Strategies, Legal Remedies and Government Initiatives

Administrative Remarks: Amy J. Benjamin, Darby & Darby PC, New York, NY. Program Co-Chair.

Welcome Remarks: Susan B. Montgomery, Floey Hoag LLP, Boston, MA. Chair-Elect, ABA Section of Intellectual Property Law.

Moderator:
Melanye K. Johnson, Senior Counsel, E.I. duPont de Neours and Company, Wilmington, DE

Session 1
Anti-Counterfeiting Strategies
Anti-counterfeiting strategies are at the forefront of this discussion. Both an in-house perspective, and an investigate perspective will be provided by some of the leading and most experienced anti-couterfeiting strategists.

Speakers:
Robert Barchiesi, Director of Investigations, Recording Industry Association of America, New York, NY

Tim A. Cheatham, Associate General Counsel, Intellectual Property, Wal-Mart Stores, Inc., Bentonville, AR

Barbara Kolsun, Senior Vice President and General Counsel, Seven For All Mankind, New York, NY

B. Gary Zhang, Of Counsel, Morrison & Foerster LLP, McLean, VA

Session 2
Legal Rememdies and Government Initiatives
Hear from leading practitioners the best ways to fight counterfeiting under U.S. laws and under the laws of other countries. Also, a discussion of what strategies work, what strategies do not, and whether there are any similarities in the enforcement laws which would allow for a streamlined anti-counterfeiting program.

Speakers:
Edward W. Gray, Jr.
Partner, Morrison & Foerster LLP, Washington, DC

G. Brian Busey
Partner, Morrison & Foerster LLP, Washington, DC

Elaine Wu, Attorney-Advisor, Office of International Relations, U.S. Patent and Trademark Office, Alexandria, VA

 

12:00 – 1:30 p.m.
LUNCHEON (tickets required)
Guest Speaker:
J. Thomas Warlick, General Counsel, Motorsports Authentics, Charlotte, NC"
“Confessions of a Counterfeit Enforcement Junkie”
"Thursday's Luncheon sponsored by Kirland & Ellis LLP"

1:45 – 5:00 p.m.
 Three Concurrent Program Tracks
(there will be a 15-minute break at approximately the midpoint of the sessions)

I. Patent Politics: Issues and Implications of Patent Law Reform

The Patent Act of 2005, a bill that would arguably work the most sweeping changes to the patent system since the 19th Century, is currently under serious consideration by Congress. Although many of the contemplated reforms enjoy broad support, some observers believe that changes of this magnitude, occurring at the same time, do not present the most prudent course for the patent system. This panel will review the latest congressional developments in patent law reform and, from the perspective of legislative staff, different industry sectors, litigators, patent acquision specialists, and academics alike, consider the merits and possible drawbacks of the pending legislation.

Moderator: Professor John R. (Jay) Thomas, Georgetown University Law Center, Washington, DC

Speakers:

Introduction and Overview of Legislation Professor John R. Thomas

Perspective of Legislative Staff
Shanna Winters, Counsel to U.S. Representative Howard Berman (D-Calif.), Washington, DC

Perspectives of Bio/Pharma Industries
Nancy Linck, Biotechnology Industry Organization, Washington, DC

Perspectives of Technology Industries
Emery Simon, Business Software Alliance, Washington, DC

Litigation Issues
David Wille, Baker Botts LLP, Dallas, TX

Xuan-Thao Nguyen, Southern Methodist University School of Law, Dallas, TX

Prosecution Issues
Anu Mittle, United States General Accounting Office, Washington, DC

Charles E. Van Horn, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC

 

II. Grants, Restrictions, and Circumventions: Strategies for the Distribution and Use of Digital Content

There are several different strategies for the distribution and licensing of digital content and software, including, among others, digital rights management, open source and Creative Commons licenses. As a result, business users of such digital content are faced with difficult decisions about how they will use such content within the scope of the applicable licenses and restrictions. Our public policy panel will discuss the advantages and disadvantages of implementing and enforcing such distribution strategies. Our panel of expert practitioners will discuss the practical decisions that users of digital content need to make before they re-distribute, display or otherwise use such content.

Moderator:
Thad Chaloemtiarana, Partner, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP, Chicago, IL

Speakers:

a. Public Policy Panel

David E. Green, Senior Counsel for Public Policy Development, NBC Universal, Washington DC.

Walter McDonough, General Counsel, Future of Music Coalition, Needham, MA

Jason Schultz, Attorney, Electronic Freedom Foundation, San Francisco, CA

b. Practitioner Panel

Victoria Bassetti, Vice President of Industry and Government Affairs EMI Music North America, New York, NY

Lauren S. Fisher, Assistant General Counsel*Intellectual Property, America Online Incorporated, Dulles, VA

Mary Oemig Hewitt, Attorney, Copyright and Trade Secret Practice, Microsoft Corporation

Mia Garlick, General Counsel, Creative Commons, San Francisco, CA

 

IIIa. 1:45 – 3:15 p.m.
Hot Topics and Recent Developments in Licensing and Franchising

The session will emphasize hot topics and recent developments in licensing and franchising from the standpoint of protecting licensor and licensee. The panel will focus on drafting and operational issues in license relationaips. The session will also include discussion of the accidental franchise issues—both avoiding the issue and using it to advantage. In addition, the GNU General Public License will be discussed.

Moderator:
David Gurnick, Lewitt, Hackman, Shapiro, Marshall & Harlan, Encino, CA

Speakers:
Barton E. Showalter, Baker Botts LLP, Dallas, TX

IIIb. 3:30 – 5:00 p.m.
Patent Infringement at the Borders

' This session will be available via ABA-CLE Teleconference

Why all the fuss over shipping software components abroad? Are the courts going to take away your Blackberry®? How can U.S. companies use ITC proceedings to stop infringing at the border? Can District Courts exercise jurisdiction over foreign patent claims? The panel will address these questions and more through a discussion of the recent flurry of Supreme Court and Federal Circuit cases regarding the extraterritoriality of U.S. patents.

Moderator:
Denise W. DeFranco, Foley Hoag, LLP, Boston, MA

Speakers:

Overview of Recent Federal Circuit Case Law Regarding Extraterritoriality
Denise W. DeFranco

Practical Implications of Recent Rulings on Global Companies
T. Andrew Culbert, Associate General Counsel, Microsoft Corporation, Redmond, WA

ITC Practice and Stopping Infringing Imports at the Border
Alice A. Kipel, Steptoe & Johnson LLP, Washington, DC

Voda Issue and Whether U.S. Courts Can Assume Jurisdiction Over Foreign Patent Claims
Jeremy Gaston, Mayer, Brown, Rowe & Maw LLP, Houston, TX

8:00 a.m. – 5:00 p.m. – Registration and Check-in

8:30 – 11:45 a.m.
Three Concurrent Program Tracks

I. Interference Issues in a First-Inventor-to-File World

The proposed patent reform legislation will bring changes not only to the resolution of contested cases, but to portfolio management as well. This panel of experts will provide a wide range of perspectives concerning the legislation itself and the changes it will bring to portfolio management. Join us for practical tips from in-house counsel from smaller and larger companies, outside counsel responsible for portfolio management, and law firm interference specialists.

Moderator:
Herbert D. Hart III, McAndrews, Held & Malloy, Ltd., Chicago, IL

Speakers:

Session 1
Current Legislative Initiatives – What is the current reform proposal and where does it stand? 8:30 – 9:30 a.m.

Robert A. Armitage, Vice President and General Counsel, Eli Lilly and Company, Indianapolis, IN

Session 2
A Change in the Landscape?-- What issues presently decided in patent interferences will remain for decision even after adoption of a first-inventor-to-file system?  9:35 – 10:15 a.m.

“Traditional: Interference Issues
R. Danny Huntington, Bingham McCutcheon LLP, Washington DC

Patentability Issues
Herbert D. Hart III

Session 3
How to Manage Your Portfolio in the New Environment
10:20 – 11:00 a.m.

New Strategies for Managing Your Portfolio in a First Inventor to File World: Strategies for In-House and Outside Counsel

The Smaller Company Perspective
Molly A. Holman, Amylin Pharmaceuticals, Inc., San Diego, CA

The Larger Company Perspective
in-house counsel to be named

Strategies for Outside Counsel
Jeffrey D. Hsi, Ph.D., Edwards Angell Palmer & Dodge LLP, Boston, MA

Panel Discussion
11:05 – 11:45 a.m.

Moderator:
Steven P. Caltrider, Senior Assistant General Patent Counsel, Eli Lilly and Company, Indianapolis, IN

Panelists:
Molly A. Holman
Jeffrey D. Hsi
In-house counsel to be named

II. Ethics: IP Lawyers Under Attack– Why So Many Disqualification Motions, Malpractice Suits and
Discipline Investigations Are Aimed At Us
(there will be a 15-minute break at approximately the midpoint of this session)

(ethics credit available)

The growth of IP law over the last ten years has led to more attacks on IP lawyers. Whether it is disqualification motions, malpractice suits, disciplinary proceedings or new sets of ethical codes, IP lawyers need to look over their shoulders and see if anything is chasing them. This panel will explore the reasons behind the new environment and will suggest approaches that will leave lawyers and their clients better off.

Moderator:
John Steele, Fish & Richardson, PC, Redwood City, CA

Speakers: Pamela Phillips, Rogers Joseph O’Donnell & Phillips, San Francisco, CA

George T. Marcou, Kilpatrick Stockton LLP, Washington, DC

Deborah J. Jeffrey, Zuckerman Spaeder LLP, Washington, DC

 

IIIa. Hot Topics in Antitrust and Intellectual Property Law
8:30 – 10:00 a.m.

Hear from leading antitrust attorneys about hot topics in antitrust and intellectual property law, including the enforcement and compliance issues facing them today. This includes the handling of regulatory agencies domestically and abroad, defining market power and identifying anticompetitive conduct. A decision is anticipated from the U.S. Supreme Court in the Independent Ink case, which may change the rules on ownership of intellectual property and market power.

Moderator:
Kristine Boylan, Merchant & Gould, PC, Minneapolis, MN

Speakers:
Richard J. Wallis, Chief Antitrust Counsel, Microsoft Corporation, Redmond, WA. Immediate Past Chair, ABA Section of Antitrust Law.

Richard C. Siefert, Merchant & Gould, PC, Minneapolis, MN

Barbara A. Caulfield, Executive Vice President and General Counsel, Affymetrix, Incorporated, Santa Clara, CA. Former U.S.
District Court Judge, U.S. District Court for the Northern District of California. (invited)

Gail Levine, Attorney Advisor to Chairman of Federal Trade Commission, Washington, DC. (invited)

Professor Janice M. Mueller, University of Pittsburgh School of Law, Pittsburgh, PA (invited)

In-House counsel tba

IIIb. Internet Law and Litigation Strategy
10:15 – 11:45 a.m.

  Co-sponsored by the ABA Section of Science & Technology Law

This panel, co-sponsored by the ABA Section of Science & Technology Law, will address some of the more interesting issues in Internet-related IP litigation, including the U.S. Supreme Court’s Grokster decision, reverse engineering, new case law on the DMCA’s service provider liability limitations, pop up and key word advertising and cpoyright class action suits.

Moderator:
Ian C. Ballon, Greenberg Traurig, LLP, Santa Monica and East Palo Alto, CA

Speakers:
William S. Coats, White & Case, Menlo Park, CA

other speakers tbd

12:00 – 1:30 p.m.
LUNCHEON (tickets required)

Guest Speaker: Oliver C. Mitchell, Jr., Chairman, Dealer Policy Board, Ford Motor Company, Detroit, MI

1:45 – 5:00 p.m. 
Two Concurrent Program Tracks

I. Copyright Issues

Moderator: Ralph Oman, Dechert, Washington, DC

Session 1
Copyright and the Digital Revolution
1:45 – 2:45 p.m.

The U.S. Copyright Office is at the epicenter of the digital controversies, and the Register of Copyrights will give an up-to-the-minute report on proposed changes in Congressionally-mandated studies on hot issues, pending legislation, changes in Office procedures, and in the Office’s relocation.

Hon. Marybeth Peters, Register of Copyrights of the, U.S. Copyright Office, Washington, DC

Session 2

The Google Print for Libraries Project—Fair or Foul?
2:50 – 3:50 p.m.

A panel of key participants in the controversy will discuss the workings of the Google Print for Libraries project and the lawsuits against Google brought by the Authors Guild and by U.S. publishers, In particular, panelists will address whether or not the activity by Google fits within the fair use exception of copyright.

Robert Kasunic, U.S. Copyright Office, Washington, DC

Allan Adler, Association of American Publishers, Washington, DC (invited)

Alex Macgillivray (or David Drummond), Google, Inc., Mountain View, CA (invited)

Jonathan Band, Jonathan Band, PLLC, Washington, DC

Brewster Kahle, Founder, The Internet Archive, San Francisco, CA (invited)

Siva Vaidyanathan, New York University, New York, NY (invited)

Session 3
Grokster Assessed: New Rules for Copyright Liability in the Digital Age?
4:00 – 5:00 p.m.

Expert panelists will discuss the real-world consequences of the recent Supreme Court decision. Specifically, they will discuss how the decision is shaping the litigation strategies of the record companies and motion picture companies, how the lower courts are applying the new guidelines on secondary liability, whether or not the Court’s opinion provides a roadmap that will permit a new generation of file-sharing facilitators to escape liability, and how the decision impacts consumers, Internet service providers, and legitimate on-line marketing services.

Sarah Deutsch, Vice President and Associate General Counsel, Verizon

Troy Dow, Vice President, Government Relations, The Walt Disney Company, Washington, DC

David O. Carson, General Council, Copyright Office, Washington, DC

Fred von Lohmann, Senior Staff Attorney, Electronic Frontier Foundation, San Francisco, CA (invited)

II. Patent Litigation Fundamentals

(there will be a 15-minute break after Session 1)

Session 1
Markman Marks Ten Years– Are We Better Off?:
The Bench, the Litigator and the Client Weigh In
1:45 – 3:30 p.m.

' This session will be available via ABA-CLE Teleconference from 1:45 – 3:30 p.m.

April 2006 Marks the tenth anniversary of the Supreme Court’s Markman Decision. That occasion, coupled with the CAFC’s recent effort in Phillips to clarify some aspects of claim construction, represents an opportune time to assess the state of claim construction. A panel consisting of a Circuit Judge, District Court Judge, litigator, and in-house counsel will assess the impact of Markman and its promise of greater uniformity and certainty in claim construction on patent litigation.

Moderator:
Luke L. Dauchot, Kirkland & Ellis LLP, Los Angeles, CA

Speakers:
Hon. Randall R. Rader, U.S. Court of Appeals for the Federal Circuit, Washington, DC

Hon. Kathleen McDonald O’Malley, U.S. District Court for the Northern District of Ohio, Cleveland, OH

Robert G. Krupka, Kirkland & Ellis, LLP, Los Angeles, CA

Victor J. Leo, Senior Counsel, Litigation, Eaton Corporation, Cleveland, OH

Debra D. Condino, Chief Patent Counsel, Edwards Lifesciences, Irvine, CA

Session 2

The Doctrine of Equivalents: What’s left, how best to preserve, and how best to defeat
4:00 – 5:00 p.m.

Created to protect claimed inventions from misappropriation through trivial or insubstantial changes, the Doctrine of Equivalents ("DOE") also represents a threat to the public notice function of patents. In Festo, the Federal Circuit cited the latter concern in adopting a complete bar to DOE when prosecution history estoppel arises, only to be overruled by the Supreme Court in 2002, which rejected that holding as too fundamental an assault on DOE. Since then DOE continues to erode, through more expansive definitions of narrowing claim amendments, public dedication, and vitiation. This presentation offers a brief historical perspective on DOE, an analysis of recent trends, and tactical approaches to pursuing or defending against DOE claims in this new climate.

Speaker:
Luke L. Dauchot, Kirkland & Ellis LLP, Los Angeles, CA

Jeffrey B. Elikan, Covington & Burling, Washington, DC

 

5:00 – 6:30 p.m.
Cocktail Reception
"Sponsored by Precise, Inc."

8:00 a.m. – 5:00 p.m. – Registration and Check-in

8:30 – 11:45 a.m. Two Program Tracks
(there will be a 15-minute break at approximately the midpoint of the sessions)

I. A Morning with Corporate Counsel: Hot Topics for the In-House Counsel and Top Ten Tips To Improving Communication Between Private and In-House Attorneys

Join a panel of top in-house counsel for a morning discussion of current issues in the areas of patents, trademarks, copyright and litigation. Then participate in an interactive session between our in-house panelists and audience which discusses ways to improve communication and service between in-house and private practice attorneys.

Moderators:
L. Marisia Campbell, Alcatel Canada Inc., Ottawa, Ontario
Nancy Lambert, 3M Corporation, St. Paul, MN

Speakers:

Kevin Rhodes, Assistant Chief Intellectual Property Counsel, Litigation, 3M Innovative Properties Company, St. Paul, MN

Michael A. Parks, Kirklnad & Ellis LLP, Chicago, IL (former Senior Counsel, Intellectual Property, The Tribune Company)

Stephen W. Bauer, Medtronic, Inc., Minneapolis, MN (invited)

Mary Oemig, Senior Attorney, Copyright Group, Microsoft Corporation, Redmond, CA

Kari L. Moeller, Counsel, Internet Compliance and Enforcement, Turner Broadcasting System, Inc., Atlanta, GA

 

II. Ethics: IP Lawyers Under Attack-- Why So Many Disqualification Motions, Malpractice Suits and Discipline Investigations Are Aimed At Us
(ethics credit available. This session is a repeat of the Ethics session held on Friday afternoon)

The growth of IP law over the last ten years has led to more attacks on IP lawyers. Whether it is disqualification motions, malpractice suits, disciplinary proceedings or new sets of ethical codes, IP lawyers need to look over their shoulders and see if anything is chasing them. This panel will explore the reasons behind the new environment and will suggest approaches that will leave lawyers and their clients better off.

Moderator:
John Steele, Fish & Richardson, PC, Redwood City, CA

Speakers:
Pamela Phillips, Rogers Joseph O’Donnell & Phillips, San Francisco, CA

George T. Marcou, Kilpatrick Stockton LLP, Washington, DC

Deborah J. Jeffrey, Zuckerman Spaeder LLP, Washington, DC

BUFFET LUNCHEON (tickets required)
12:00 – 1:30 p.m.

Come enjoy a last luncheon, buffet-style, with your fellow IP law enthusiasts, and continue the discussion from the morning sessions on In-House Cousel, and on Ethics.