Section of Intellectual Property Law | 24th Annual IPL Conference

IPL local logo

Program Schedule

In cooperation with the ABA Section of Science & Technology Law

(tentative—titles and descriptions subject to change)

Conference Home / Full Brochure / Printable Registration Form / Registration Info / Sponsors / Committees Day

Wednesday, April 1, 2009

8:00 - 5:00 p.m.
Committees Day

12:00 - 1:30 p.m.

Committees Day Luncheon

PATHWAYS TO SUCCESS FOR IP LAWYERS - BALANCING WORK AND LIFE TO ACHIEVE YOUR GOALS

This program features a diverse panel of speakers from the public and private sectors, each of whom has chosen a different career path in IP law. The panelist will describe their current positions and the choices, encouragements, and setbacks that they have experienced, as well as providing strategies and practical guidance as to how to achieve professional and personal goals, including tips for successful business development.

Moderators
Adriana S. Luedke, Dorsey & Whitney, LLP, Minneapolis, MN
Kimberly S. Grimsley, Bowie & Jensen, LLC, Towson, MD

Panelists
Lois E. Boland, Director of Office of International Affairs, U.S. Patent and Trademark Office, Alexandria, VA
Nancy M. Lambert, 3M, St. Paul, MN
Marylee Jenkins, Arent Fox LLP, New York, NY
Antoinette M. Tease, Antoinette M. Tease, PLLC, Billings, MT

Thursday, April 2, 2009

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

8:30 - 10:00 a.m.
Two Concurrent Session

I. The Patent Reform Movement – Where Is It Going and Will It Get There?

With Court decisions increasing narrowing patent rights, patent legislation stalling in Congress last year and a new President in office, where is patent reform going and what does it mean? This panel of speakers will discuss the competing interests that are driving the current initiatives in changing the patent laws and rules, the likelihood of success of these initiatives and what it means to those handling strategic IP planning and the practice of IP law.

Welcome Remarks:
Gordon T. Arnold, Arnold & Knobloch, L.L.P., Houston, TX
Chair, ABA Secion of Intellectual Propery Law
Administrative Remarks:
Kim Jessum, Stradley Ronon Stevens & Young LLP, Philadelphia, PA
Program Chair.
Moderator:
James Hanft, Darby & Darby P.C., New York, NY
Speakers:
John Whealan, Associate Dean, George Washington University, Washington, DC
Hon. Michael R. Fleming, Chief Administrative Patent Judge, Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office, Alexandria, VA
Matt Rainey, Vice President of Intellectual Property, Intellectual Ventures, Alexandria, VA (invited)

II. The Year in Copyright

Copyright case law continues to inform and shape the topography of disruptive and old technology and content alike. This presentation will focus on the most important cases and developments – the Google cases and settlement, DMCA, Jacobsen v. Katzer and what nonmonetary consideration might serve for a software license to be valid; remote DVR recording; BitTorrent and peer to peer copying; Fair Use and whether there are now two types of ‘transformative’; and the usual issues of preemption, attorneys fees, substantial similarity and the like.

Welcome Remarks:
Don W. MartensKnobbe Martens Olson & Bear, LLP, Irvine, CA
Chair-Elect, Section of Intellectual Property Law
Moderator
Eric J. Schwartz , Mitchell, Silberberg and Knupp, LLP, Washington, DC
Program Co-Chair.
Speakers:
Katherine Spelman , Cobalt LLP, Berkeley, CA
J. Michael Keyes, Kirkpatrick & Lockhart Preston Gates Ellis LLP, Spokane, WA

10:15 - 11:45 a.m.
Two Concurrent Session

I. From Drafting to Appeal – The Changing U.S. Prosecution Practice

Panelists i this session will discuss In re Bilski and teh effect of the Federal Circuit's ruling upon the selection of disclosures for filing, specification and claim drafting, framing of responses to sec. 101 rejections, and briefing of appeals to the BPAI. The panel wil also discuss the increasing difficulties in claiming priority to prior applications and satisfying 112(1), particularly when claims scope is expanded through continuations, and discuss the filing of appeals with regard to the new rules, the best ways to advocate, and cost effective representation at the appeals stage.

Moderator:
David Shofi , ATMI, Inc. 7 Commerce Dr. Danbury, CT
Speakers
Jeffrey R. Kuester, Thomas, Kayden, Horstemeyer & Risley LLP, Atlanta, GA
Lawrence E. Ashery, RatnerPrestia, Valley Forge, PA
Charles A. Bieneman, Rader, Fishman & Grauer, LLC
Joel MillerEast Orange, CA

II. The Year in Trademark

TELECONFERENCE
A panel of trademark practitioners and key government officials will review the past year’s key developments in trademark infringement litigation, Patent and Trademark Office practice and procedure, Trademark Trial and Appeal Board case decisions under the new Board rules, and more. For anyone involved in trademark counseling, trademark enforcement, and/or opposition and cancellation proceedings at the Board, this is a must-attend session.

Moderator:
James R. Sims III , Morgan, Lewis & Bockius LLP
Speakers:
Kristin H. Altoff, Morgan, Lewis & Bockius LLP, Washington, DC
Hon. Lynne G. Beresford, Commissioner for Trademarks, Trademark Trial and Appeal Board, U.S. Patent and Trademark Office, Washington, DC (invited)
Hon. J. David Sams, SChief Administrative Judge, Trademark Trial and Appeal Board, U.S. Patent and Trademark Office, Washington, DC (invited)

12:00 - 1:30 p.m.

LUNCHEON

Tickets required
Flash of Reality: The Intermittent Windshield Wiper Case
Guest speaker
Christopher R. Benson-Partner , Fulbright & Jaworski L.L.P.

1:45 - 3:15 p.m.
Three Concurrent Sessions

I. Prosecuting for Enforcement Success in Europe, China, Japan and Australia

A panel of speakers from Europe, China, Japan and Australia will provide guidelines on preparing and prosecuting patent applications in their respective jurisdictions, with a view to achieving enforcement success. The following topics will be covered:
> Preparing multi-laterally enforceable patent specifications
> Possibility of speedy grant and provisional protection
> Divisional applications
> Assessment of damages
> Overview of current court practice - how long and how much

Moderator:
Jay Erstling , Patterson, Thuente, Skaar & Christensen, Minneapolis, MN
Speakers:
Barry Eagar, Cullen & Co., Brisbane, Australia
Ma Lianyuan, Lian and Lien, Beijing, China
Makoto Onda, President, Onda Techno,Tokyo, Japan
Gwilym Roberts, Kilburn & Strode, London, England

II. Orphan Works & Emerging Image Recognition Technologies

This program convenes cutting-edge digital image technology developers with visual artists and other interested parties to determine whether emerging technologies can solve problems relating to “orphan works” – copyrightable works for which owners cannot be identified. The panel will discuss the potential passage of orphan works legislation in the 111th Congress and the probable impacts, demonstrate several existing technologies and consider best practices for orphan work searches. Trademark practitioners may be interested in attending this session to familiarize themselves with technologies to monitor online infringement of logos and other design marks.

Moderator:
Janet Fries, Drinker Biddle & Reath LLP, Washington, DC
Speakers:
Victor S. Perlman, General Counsel & Managing Director, American Society of Media Photographers, Inc., Philadelphia, PA
Nancy E. Wolff, Cowan, DeBaets, Abrahams & Sheppard LLP, New York, NY
Offir Gutelzon, CCEO, PicScout Inc., San Francisco, CA
Leila Bougnane, Idee, Toronto, Canada
Steven M. Tepp, U.S. Copyright Office
Representative from Hewleett Packard to be announced

III. The Role of Intellectual Property in Personalized Medicine

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

Personalized medicine took center stage at the 2008 Biotechnology Industry Organization Annual Meeting, and many consider it to be the “next big thing” for the pharmaceutical and biotechnology industries. Personalized medicine generally refers to using information about a patient’s genetic makeup to tailor medical care to that patient’s individual needs. Such information could be used to help stratify disease status, select between different medications and/or tailor their dosage, provide a specific therapy for an individual’s disease, or initiate a preventative measure that is particularly suited to that patient at the time of administration. Many of the fundamental discoveries that will serve as the foundation for the future personalized medicine breakthroughs are potentially patentable, and indeed many such inventions have already been patented. Some argue that patents on these discoveries will have a detrimental impact on the development of personalized medicine, while others counter that patents will be key in providing the necessary incentive and funding to bring the promise of this technology to fruition. This panel will address the role of patents in the development of personalized medicine, the patentability of personalized medicine discoveries, and the policy implications.

Moderator:
Manette Dennis, Ostrager, Chong, Flaherty & Broitman P.C., New York, NY
Speakers:
Christopher M. Holman, Associate Professor of Law, University of Missouri, Kansas City School of Law, Kansas City, MO
Shawnmarie Mayrand-Chung , Phd, JD, NIH Program Director
Gina Shishima, JD, PhD, Fulbright & Jaworski, LLP, Austin, TX
Robert Wells, JD, HeathFutures LLC, Washington, DC

3:30 - 5:00 p.m.
Three Concurrent Sessions

I. Swearing-in Ceremony and Mock Appellate Argument at the U.S. Court of Appeals for the Federal Circuit

Transportation provided

Trial participants:
Panel of Judges:
Hon. Paul R. Michel, Chief Judge, U.S. Court of Appeals for the Federal Circuit, Washington, DC
Hon. Randall R. Rader, Circuit Judge, U.S. Court of Appeals for the Federal Circuit, Washington, DC
Hon. S. Jay Plager, Circuit Judge, U.S. Court of Appeals for the Federal Circuit, Washington, DC

Panel of Lawyers
Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC
Richard G. Taranto, Farr & Taranto, Washington, DC

Moderator
Richard L. Rainey, Covington & Burling LLP, Washington, DC

II. Clearance and Protection of Slogan Marks

This session will examine the unique issues that arise when a company attempts to protect a slogan as a brand; i.e., as an identifier of origin for its goods and services. We will look at trademark clearance issues unique to these types of trademarks, in particular the descriptiveness hurdles inherent in brands that consist of “catchy sentences.” We will also examine how companies can best protect their slogan marks, and recent cases that have arisen, including the American Express v. Goetz case involving slogan ownership. For those involved in the trademark practice, this session will provide invaluable insight, especially with an anticipated focus in 2009 by companies on protecting all of their intellectual property assets.

Speakers:
Kimbery A. Eckhart, Winston & Strawn, San Francisco, CA
Edward G. Lance IV, McDonald’s Corporation, Oak Brook, IL (invited)
Ruth J. Lebed - Rofes Trademark Counsel, S.C. Johnson & Sons, Racine, WI

III. Internet Advertising: Circuit Splits and Forum Shopping

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

Litigation involving key words, metatags and sponsored links involve issues under the Lanham Act where the circuits are split on critical issues and where a party is sued or sues could itself be outcome determinative. For example, the Second Circuit applies a test for use in commerce that is more restrictive in Internet advertising cases than any other circuit. Circuit splits on initial interest confusion and nominative fair use also substantially impact how a case will be decided. This program will feature a panel of in-house counsel and outside lawyers discussing the law, practical policies and strategy for both transactional lawyers and litigators operating in this environment of uncertainty.

Moderator:
Ian C. Ballon, Greenberg Traurig, LLP, Palo Alto and Los Angeles, CA
Speakers:
Andrew Van Arsdel , Corporate Attorney, Microsoft Corporation
Eulonda Skyles, Skyles Law Group

6:30 - 9:00 p.m.

Special Evening Reception at the Dolley Madison House

Ticketed required
All conference participants and their spouses and guests are invited to join us for a special reception at the Dolley Madison House, part of the National Courts Complex, hosted by the Section.
The reception will be held following the day’s programming on Thursday, April 2. Cocktails and hors d’oeuvres will be served. Our successful reception in 2008 drew 200 attendees, so purchase your tickets early! Buses board for the reception at 5:30 pm in front of the hotel, and depart at 5:45 pm.

Sponsored by
McAndrews Held & Malloy Ltd.

Thursday's coffee breaks sponsored by
BNA

Friday, April 3, 2009

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

8:30 - 10:00 a.m.
Three Concurrent Session

I. Litigating Multi-Party, Multi-Patent Patent Cases: Challenges, Considerations and Solutions

This panel will examine the anatomy of a patent litigation case including procedure and cost with specific emphasis on the unique challenges of litigating multi-party, multi-patent cases. The panel will also cover how counsel and courts handle these complex cases, including strategies employed by the courts to manage these cases and strategies by plaintiff counsel and defense counsel to reduce the cost of litigating.

Moderator:
Charlena L. Thorpe, Alston & Bird LLP, Atlanta, GA
Speakers:
Patrick J. Flinn, Partner, Alston & Bird LLP, Atlanta, GA
Danielle Williams, Kilpatrick Stockton, Winston-Salem, NC
Hon. Marilyn L. Huff, U.S. District Court for the Southern District of California, San Diego, California
Christopher W. Day, Senior Counsel, AOL LLC, Dulles, VA

II. Champagne and Feta: An Imperfect Pairing?

The interplay between Geographic Indications (GIs) and traditional intellectual property concepts is not a perfect pairing. Experienced practitioners will cover the latest developments regarding the protection of GIs and the inherent tension between international/treaty norms and traditional intellectual property concepts. These experts will also explore the protection of GIs as certification marks and other proposals to provide protection for the names of unique geographically identified products.

Moderator:
Karen Butcher, Partner, Morgan, Lewis, & Bockius LLP, Washington, DC
Speakers:
Stanton J. Lovenworth, Dewey & LeBoeuf LLP, San Francisco, CA
Amy Cotton, Office of Intellectual Property Policy and Enforcement,
U.S. Patent and Trademark Office, Arlington, VA

III. Cost Containment in a Corporation

Public and private corporations are always aiming to maximize resources and value while simultaneously maintaining or improving quality. Legal departments, frequently viewed as “cost centers” can be a positive part of this equation. The speakers on this panel will share their perspectives on managing legal costs while maintaining quality legal work, how outside counsel can be a partner of the legal department in achieving cost management, internal clients, and outside counsel.

Moderator:
Melanye K. Johnson , Senior Attorney, National Institutes of Health, Office of the Genearal Counsel, Bethesda, MD
Speakers:
Barbara Kolsun, General Counsel, Stuart Weitzman, New York, NY
L. Marisia Campbell, Associate Counsel, QNX Software Systems, Ottawa, Ontario, Canada
Chris Farris, Senior Director – North America Legal, Sun Microsystems, McLean, VA

10:15 - 11:45 a.m.
Three Concurrent Sessions

I. Hot Topics in Design Law: Fifth Avenue to Main Street – Egyptian Goddess, Runway Chic and Dominoes

This session will cover hot topics and recent developments in design law from the standpoint of enforcement actions and protection of innovative designs. Join us for a discussion from in-house counsel, outside counsel responsible for portfolio management and academics alike as they consider a wide range of perspectives concerning intellectual property protection for designs, congressional developments and the changes that it may bring to portfolio management.

Moderator:
Darrell G. Mottley, Shareholder, Banner & Witcoff, Ltd., Washington, DC
Speakers:
Susan Scafidi, Visiting Professor of Law, Fordham University Law School, New York, NY
Frederick Linton Medlin, Lin Medlin Law, P.C, Dallas, TX
Patricia E. Hong, Partner, Plumsea Law Group, LLC, Bethesda, MD

II. Attention Trademark & Copyright Lawyers….What You Don’t Know About the Supreme Court’s Patent Jurisprudence Could Hurt You

The Supreme Court’s Medimmune decision discussed DJ jurisdiction in the context of patent licensing. The Court’s eBay decision discussed the standards for the grant of a permanent injunction even after patent validity and infringement are demonstrated. The Court’s Sony v. Universal and MGM v. Grokster decisions borrowed significantly from patent law. Trademark and copyright lawyers who continue to practice in ignorance of the Supreme Court’s patent decisions could be litigating trademark and copyright cases, or advising clients in trademark and copyright matters, without a complete understanding of their legal ramifications. This program would discuss how the Court’s patent decisions affect the practice of trademark and copyright law.

Moderator:
Jonathan Hudis, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Alexandria, VA
Speakers:
Todd W. Baker, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Alexandria, VA
Douglas Rettew , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC
Dale Cendali, Kirkland & Ellis LLP, New York, NY

III. How to Extract Value from an IP Portfolio

The value of intellectual property (IP) is often not adequately appreciated and thus many opportunities for future profit overlooked. The strategic utilization of IP assets can substantially enhance a company’s value as well as provide a revenue stream when properly acquired, maintained, valued and managed to extract its full value. This panel will focus on the role of intellectual property in value creation for companies. Representatives from several diverse viewpoints will discuss intellectual property and value creation. These experts include representatives from the legal profession, including corporate and firm IP attorneys, and IP Value managers. These speakers will discuss intellectual property and value creation by using concrete examples based on their vast experience in this area.

Moderator:
Donna P. Suchy, Legal US IP Counsel, Eastman Kodak Company, Rochester, NY
Speakers:
Donna P. Suchy, Legal US IP Counsel, Eastman Kodak Company, Rochester, NY
Paul J. Riley, Vice President, Licensing, IPVALUE Management, Inc., Bridgewater, NJ
Todd M. Friedman, Partner, Kirkland & Ellis LLP, New York, NY
Sue Foster, PhD, JD, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo LLP, London, England
Andrew T. Ramer, Managing Director, Ocean Tomo, Chicago, IL

12:00-1:30 p.m.

LUNCHEON

Are Governments Overreaching? Current Challenges to Our Intellectual Property

Guest speaker
Sherry M. Knowles, Senior Vice President and Chief IP Counsel, GlaxoSmithKline
Ticketed event
Sponsored by
Kirkland & Ellis LLP

1:30 to 4:30

New Westlaw Patents Demo

Come see a demonstration of the latest patent legal research innovations from Westlaw, including a fully-searchable online archive of patent file histories, redlined Claims Version Comparator, Markman orders database, and time-saving Graphical Displays of patent claims and patent families.
Please stop by to provide feedback on a 15 minute patent demo and register to win a Sony Blu-ray player!

Saturday, April 4, 2009

8:30-11:45 a.m.
Hot Topics in Copyright, Trademark and Patent Law

8:30 - 9:45 a.m.

Session I: It’s A Bold New Virtual World Out There...Should We Be Worried?

Companies and consumers are rushing to join the online world, participating in interactive forums, posting and sharing content, and using new technologies like the mobile web in record numbers. Social networking, blogging, product reviews, mobile coupons, text-based voting and sweepstakes, virtual worlds, these technologies are raising numbers of new legal issues for the intellectual property practitioner. This session will look at these technologies, the legal issues they raise, and recent cases in this area, including DMCA and CDA protections, trademark infringement issues unique to the online world, special issues for employee blogging, text message entries for sweepstakes, and more.

Moderator:
Joyce L. Morrison, Vice President, Intellectual Property, Xencor, Inc., Monrovia, CA

Speakers:
Shahrzad Poormosleh, Sughrue Mion, PLLC, Washington, DC
Liisa Thomas, Winston & Strawn, Chicago, IL

10:15 - 11:45 a.m.

Session II: Supreme Court’s Effect on Patent Licensing Practice

Post license (and sale) restrictions and patent exhaustion/implied licenses issues, recently dealt with by the Supreme Court in Quanta v. LG Electronics, as well as 11th Amendment immunity for universities (CAFC, Baum v. University of Massachusetts) are important issues for attorneys drafting license agreements and business people negotiating them. In addition, the eBay decision is creating considerable confusion as to the proper determination of royalties, the extent of the protection afforded by patent rights, and the value of IP. The decision has an impact on negotiations over royalties even before there is a threat of litigation since a licensee or accused infringer knows that the owner of the IP may not be granted an injunction. There are also important issues of how post-verdict royalties are being discussed in front of juries and the degree of prejudice that may be introduced if jury instructions include discussion of such royalties. This program will review recent rulings, give advice to lawyers managing IP portfolios and drafting licensing agreements and describe some of the pitfalls facing attorneys preparing for trial.

Moderator:
Alan Cox, NERA Economic Consulting, San Francisco, CA
Speakers:
Nancy Lambert, 3M Company, Saint Paul, MN
George Frank, PhD, Drinker Biddle & Reath, LLP, Philadelphia, PA
Marc L. Delflache, Fulbright & Jaworski L.L.P., Dallas, TX
David M. Madrid, Day Casebeer Madrid & Batchelder LLP, Cupertino, CA

11:45 a.m.-1:00 p.m.
Conference Networking Buffet Luncheon
Tickets required

Conference Home / Full Brochure / Printable Registration Form / Registration Info / Sponsors / Committees Day

Section Officers, Council and Editorial Board Meetings

Wednesday, April 1

8:30-10:30 a.m.
Magazine Board Meeting

10:30 a.m-12:30 p.m.
Books Board Meeting

12:30-2:30 p.m.
Annual Review Board Meeting

2:30-5:00 p.m
Content Advisory Board Meeting

Friday, April 3

7:00-9:00 p.m.
Section Council Dinner

Saturday, April 4

8:00-10:00 a.m.
Section Officers Meeting

10:00 a.m.-4:00 p.m.
Section Council Meeting

12:00- 1:00 p.m.
Section Council Luncheon