Sign In

2011 Mid-Winter Institute Speaker Materials

February 2-5, 2011

The Peabody Hotel

Orlando, Florida

Click here to download all the 2011 AIPLA Mid-Winter Speaker Materials.

Wednesday, February 2


2:00 - 2:15 pm

Association Business Meeting and Mid-Winter Institute Introduction

David Hill
President, AIPLA, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, DC 

William Barber
President-Elect, AIPLA, and Mid-Winter Institute Officer-in-Charge, PirkeyBarber, LLP, Austin, TX

2:15 - 3:45 pm Plenary

Perspectives on Law, Policy and Practice for a Changing Business Environment

Moderator:  Joe Re (Bio)
                  Knobbe Martens, Irvine, CA

What lies ahead for the intellectual property practitioner?  Don’t miss this panel of distinguished IP professionals as they share their own perspectives on the challenges of the changing business environment and how the judiciary and the practice of law will be transformed over the next decade.


Wayne Sobon
Accenture, San Jose, CA 

Peter Menell (Paper 1, Paper 2)
U.C. Berkeley, Berkeley, CA

The Honorable Paul R. Michel (Bio, Paper)
Former Chief Judge, United States Court of Appeals for the Federal Circuit, Washington, DC

4:00 - 5:30 pm Concurrent Tracks

Track A

Section 101 - Past, Present and Future

Moderator: Bradley A. Forrest (Bio)
                 Schwegman Lundburg Woessner, PA, Minneapolis, MN 

In June 2010, the Supreme Court issued its much-anticipated decision regarding subject matter patentability in Bilski v. Kappos.   This session explores the state of Section 101 eight months post-Bilski, including how courts are approaching subject matter patentability in both the computer/electronics and biotech industries.  The session also explores a unique international perspective on subject matter patentability, including the intersection between Section 101 and international treaties.

Life After Bilski: Has Bilski Provided the Clarity We Had All Hoped For? 

Michael Dunnam (Bio, Paper, Slides)
Woodcock Washburn, Philadelphia, PA

Subject Matter Patentability and the Biotech Industry

Christian Platt (Bio, Paper, Slides)
Paul Hastings, San Diego, CA

Subject Matter Patentability and the New Frontier – The Relationship Between Genetic Resource Recording and TRIPS 

Thomas Moga (Bio, Paper, Slides)
Shook Hardy & Bacon, LLP, Washington, DC

Track B

Copyright and Trademark in the Digital World

Moderator: Rose Auslander (Slides)
                Carter Ledyard & Milburn, LLP, New York, NY

There is one thing virtually all businesses have in common:  access to the Internet.  That means there is a second thing they all have in common:  intellectual property issues.  This panel will explore the opportunities and challenges of copyright and trademark laws in cyberspace in areas such as consumer protection, deceptive practices, unfair competition, and rights of publicity/privacy.  How do these issues overlap in the on-line world through interactive promotions, social networking and electronic marketing?  How can you and your clients legally use and protect written materials, trademarks, logos, sounds, videos, photographs, and data? Is there a need for a new interpretation of old terms such as “copy”?  New questions keep arising for every kind of media.  Using hypothetical situations and recently decided cases, this panel will explore possible answers.

“Copy That!” 

Dennis S. Karjala (Paper, Slides
Arizona State University College of Law, Tempe, AZ

It’s More Than Just a Mark

Deborah Peckham (Paper)
Burns & Levinson, LLP, Boston, MA



8:45 - 10:15 am Concurrent Tracks

Track A

Inventions Across Borders: Managing Patent Protection for the "Transnational Widget"

Moderator: Michael J. Didas
                 Harter Secrest & Emery, LLP, Rochester, NY

Many inventions today are born through the global collaboration of inventors residing in multiple countries. This manner of innovation presents unique challenges in patenting such inventions, and in managing tensions among the patent laws of various countries. Patent practitioners should be cognizant of these challenges and tensions in order to advise clients on how best to protect such inventions, including selecting the best jurisdiction in which to first file a patent application.

Inventions Through Global Collaboration: Managing Tensions Among Patent Application Foreign Filing Restrictions and First Filing Requirements in Different Countries

Matthew Zischka (Paper, Slides)
Smart & Biggar, Toronto, Ontario, Canada

Best Practices for Protecting Inventions by Joint Inventors Scattered Across Europe and Beyond

Luigi Franzolin (Bio, Paper, Slides)
Studio Torta, Torino, Italy

Beware of Chinese Laws Affecting Patent Ownership and Establishing Contractual Rights to Inventions

George Chan (Bio, Paper, Slides)
Rouse, Beijing, China

Track B

Ethics of Alternative Fee Arrangements

Moderator: Denise W. DeFranco
                 Finnegan Henderson Farabow Garrett & Dunner, LLP, Cambridge, MA

As alternative fee agreements and arrangements become more common and fee pressures increase, lawyers may find themselves doing more with less. This can result in tensions between client and counsel, and various issues for both sides may arise, especially on the fee front. In addition, as the business environment changes, ethical issues in the IP practice will continue to present themselves.

The Challenges of Getting Paid and Getting Out and Ethical Issues in Alternative Fee Agreements

Thomas A. Leghorn (Paper, Slides)
Wilson Elser, New York, NY

Ethical Issues in the IP Practice in a Changing Business Environment

David Hricik (Paper, Slides)
Mercer University School of Law, Macon, GA

Mercedes Meyer (Bio, Paper, Slides)
Drinker Biddle & Reath, LLP, Washington, DC


10:30 am - 12:00 noon Concurrent Tracks

Track A

The ABCs of Patent Reform

Moderator: John Christopher (Bio)
                 Christopher & Weisberg, PA, Fort Lauderdale, FL

The drums of change have been beating for years and patent reform seems inevitable. Patentees and patent practitioners are faced with fundamental changes in several areas of US patent law that are sure to forever alter the way inventions and patents are developed, prosecuted, litigated and licensed. This program will focus on enacted and/or pending patent law reform efforts in areas such as the first-to-file/first-to-invent priority; post-grant patent review; patent damages; patent litigation venue; and patent marking reform among others. The program will provide perspectives on patent reform from the patent prosecutor, the patent litigator, and the inventive entity.

Patent Reform – The Litigator's Perspective

Nagendra Setty (Slides)
Fish & Richardson, Atlanta, GA

Patent Reform – The Prosecutor's Perspective

W. Todd Baker (Bio, Paper, Slides)
Oblon Spivak McClelland Maier & Neustadt, Alexandria, VA

Patent Reform – The Inventive Entity's Perspective

Paul Elihu Stern (Bio, Paper, Slides)
University of Florida, Gainesville, FL

Track B

Using the Internet for Litigation and Prosecution in the New Information Age

Moderator: Hathaway Pease Russell (Bio)
                 Foley Hoag, Boston, MA

The use of internet evidence in IP litigation and prosecution has never been more prevalent. It can be used to show prior art, the disclosure of alleged trade secrets, or practically any factual predicate. Internet information can also be used to find and research witnesses, jurors and myriad other case-related information. There are, however, hurdles with respect to finding such evidence, and presenting it in admissible form. Learn about the types of information and evidence now available on the internet, how to find it, and how to use and admit it in IP litigation and prosecution.

The Full Reach of Information Available on the Internet and How to Find It

Benjamin Leace (Bio, Paper, Slides)
RatnerPrestia, Valley Forge, PA

How to Use and Introduce Internet Evidence in Litigation

Michelle Sherman (Bio, Paper, Slides)
Sheppard Mullin, Los Angeles, CA

How to Use Internet Evidence in Patent Prosecution and Other Hot Topics

Daniel Brownstone (Bio, Paper, Slides)
Fenwick & West, LLP, San Francisco, CA

12:30 - 1:45 pm Luncheon (Tickets required)

David A. Wolf, BSEE, MD (Bio)
Astronaut, NASA
Lyndon B. Johnson Space Center

2:00 - 3:30 pm - Plenary

IP Rights in a Green World–Opportunities, Challenges and Hazards

Moderator: Dawn M. Cassie (Bio)
Navigant Consulting, Inc., Chicago, IL

"Green" claims abound for just about everything--from candles to cars, from fruit to flooring. But what does "green" really mean? How are IP rights for green technologies being viewed across the globe? Can your "green" claim be claimed as a mark? Can your "green" claim get you into trouble? Are patent rights for green technologies at risk of being weakened on the international stage? In this session, industry experts will discuss the unique issues facing intellectual property owners posed by the "green" movement.

Potential Threats to Patent Rights in Green Technologies

Douglas H. Pearson (Bio, Paper, Slides)
Jones Day, Washington, DC

The Future's So Green, I Gotta Wear Shades: "Greening" Your Brand Without "Greenwashing" It

Maureen B. Gorman (Bio, Paper, Slides)
Marshall Gerstein & Borun, Chicago, IL

Greenwashing in Context: Commercial Consumers, Cleantech Counterfeiters and Eco-Mark Enforcement

Eric L. Lane (Bio, Paper, Slides)
Luce Forward Hamilton & Scripps, LLP, San Diego, CA



3:45 - 6:00 pm - Committee Educational Session

International and Foreign Law/Patent Cooperation Treaty Issues Joint Committee Educational Session (90 minutes of CLE Requested)

Moderator: Rick Neifeld
                 Neifeld IP Law, PC, Alexandria, VA

Updates on PCT

The PCT continues to grow in importance around the world. This session of the PCT Issues Committee will include presentations from a panel of experts to help practitioners deciding whether and how to use the PCT. The topics covered will include patent prosecution highway, procedure in the USPTO and in WIPO in response to PCT filings, and updates on related initiatives at WIPO and USPTO.

Patent Prosecution Highway

Carl Oppedahl (Slides)
Oppedahl Patent Law Firm, LLC, Longmont, CO

PCT Developments

Matthew R. Bryan (Slides)
WIPO, Geneva, Switzerland (invited)

Patent Cooperation Treaty Updates from the USPTO

Michael Neas (Slides)
United States Patent & Trademark Office, Alexandria, VA

Friday, February 4

8:45 - 10:15 am Concurrent Tracks

Track A

Protecting Pioneering Inventions in a Wild, Wild World

Moderator: Denise M. Kettelberger
                 Faegre & Benson, Minneapolis, MN

Recent court decisions have changed the patent landscape for practitioners drafting applications with sufficient support for broad claim protection and within the realm of recently clarified patentable subject matter. In an increasingly complex world, an application is prepared not only with an eye for protection in the United States, but in other jurisdictions as well. This program will provide a summary of recent case law on these points, and will provide patent practitioners useful guidance and insight for drafting and prosecuting applications to meet the recently clarified requirements of written description and patentable subject matter, as well as strategies for preparing an application to meet written description requirements outside the United States.

Written Description and Other Hurdles to Obtaining Broad Patent Coverage

Jane E. Remillard (Bio, Paper, Slides)
Nelson Mullins Riley & Scarborough, LLP, Boston, MA

Bilski's Implications for Claiming Concepts and Discoveries

Chris Holm (Bio, Slides
Milbank Tweed Hadley & McCloy, LLP, Los Angeles, CA

Written Description the World Over: A Look at Requirements in Europe and Other Countries and Patent Drafting Strategies for Collective Compliance

Samson Helfgott (Bio, Paper, Slides)
Katten Muchin Rosenman, LLP, New York, NY

Track B

Infringing Online Content - When to Attack

Moderator: Michael A. Parks
                 Thompson Coburn, LLP, Chicago, IL

When an owner discovers infringing content online, what are the legal theories available for enforcing its intellectual property rights against a party that may be "hosting" the information? And when should a company choose not to take any action at all? This track presents a view from the trademark owner's perspective in the wake of the recent decision in Tiffany (NJ), Inc. v. eBay, Inc., (2nd Cir. Apr. 2, 2010) and a glimpse inside industries where infringing publicity is sometimes better than no publicity at all.

Legal Developments Affecting Liability for Online Sales After Tiffany (NJ), Inc. v. eBay, Inc., (2nd Cir. Apr. 2, 2010)

Michael Potenza (Bio, Paper, Slides)
Debevoise & Plimpton, New York, NY

Business Considerations in Addressing Infringing Online Content

Beth Fulkerson (Bio, Slides)
Encyclopædia Britannica, Inc., Chicago, IL

10:30 am - 12:00 noon Concurrent Tracks

Track A

Strategic Reexamination: Be Careful What You Ask For

Moderator: David A. Divine
                 Lee & Hayes, PLLC, Spokane, WA

Patent reexamination gets a lot of press these days, but why? Seeking reexamination of a patent should be a strategic decision, not an automatic one initiated without consideration of the consequences—and there are consequences, whether established by rule or law or not. This program focuses on leveraging reexamination procedures, how reexamination may affect litigations, and what post-grant patent review of the future may look like.

Insert Patent, Pull Lever–How to Leverage Patent Reexamination Procedures in Your Client's Favor

Greg H. Gardella (Bio, Paper, Slides)
Irell & Manella, Los Angeles, CA

Reexaminations Can't Hurt Your Patent Litigations, Right?

P. Anthony Sammi (Bio, Paper, Slides)
Skadden Arps Slate Meagher & Flom, LLP, New York, NY

Oppositions, Reexaminations, and the Patent Reform Act of the Year: What Does the Out-of-Court Patent Battlefield of the Future Look Like?

Matthew C. Phillips (Bio, Paper, Slides)
Stoel Rives, LLP, Portland, OR

Track B

Cloud Computing 101 – How to Avoid the Hail Storms

Moderator: Barry J. Reingold (Bio)
                 Perkins Coie, LLP, Washington, DC

In the wake of budget cuts, law firms and clients alike are evaluating cloud computing technology. This session will provide an overview of cloud computing and its evolution, discuss emerging issues including contractual concerns, e-discovery and transborder data flow, and lessons learned. The program will conclude with an analysis of ethical and liability concerns raised by cloud computing.

What is Cloud Computing?

James Clessuras (Paper, Slides)
Wilson Sonsini Goodrich & Rosati, Washington, DC

Surviving the Storm–the Main Legal Issues Surrounding Cloud Computing

Peter H. Kang (Bio, Paper)
Sidley Austin, LLP, Palo Alto, CA

Umbrella Needed? Ethics and Liability Concerns Raised by Cloud Computing

Tanya Forsheit (Bio, Paper, Slides)
InfoLawGroup, LLP, Manhattan Beach, CA

2:00 - 3:30 pm Plenary

Social Networking and the Workplace - Managing the Inevitable

Moderator: Daniel C. Winston (Bio)
                 Choate Hall & Stewart, LLP, Boston, MA

While most executives may not use social media – or even be comfortable with it – the simple fact is that many people within their organizations regularly participate in networks such as Facebook, LinkedIn and Twitter. It is almost inevitable that employees use social media inside the workplace and outside the workplace on business matters. The widespread use of social media at and for work is forcing businesses to implement policies to manage its use. In this program, speakers from a corporation and a law firm will discuss how their organizations are dealing with the rise of social media, and an industry risk expert will identify some of the risks that may surface from the explosion of social networking in the workplace and what companies can do to limit those risks.

The Corporate Model: What Companies Are Doing to Address Employees' Use of Social Networking Sites

Robert Boerschel (Bio, Paper)
Best Buy, Richfield, MN

Law Practice Management: Have Law Firms Caught On to Social Networking and What Are They Doing About It?

Scott W. Atherton (Bio, Paper)
Akerman Senterfitt, West Palm Beach, FL

Mitigating the Risk Associated with Social Media Usage in Law Firms and Corporations

Anthony K. Greene (Paper, Slides)
 (Herbert L. Jamison & Co., LLC, West Orange, NJ


3:45 - 6:00 pm  Committee Educational Session

Corporate Practice/Trade Secret Law Joint Committee Educational Session (60 Minutes of CLE Requested)

Addressing International Trade Secret Litigation: Should the Federal Economic Espionage Act Be Amended to Include a Civil Cause of Action?

R. Mark Halligan
Nixon Peabody, Chicago, IL

Victoria Cundiff
Paul Hastings, LLP, New York, NY

Committee Business Meeting



Saturday, February 5

 8:45 - 10:15 am  Plenary

21st Century Media and the Courtroom: The Age of Social Networking

Moderator: Dianne B. Elderkin (Bio)
                 Akin Gump Strauss Hauer & Feld, LLP, Philadelphia, PA

This is the dawning of the age of social media. Facebook, LinkedIn, Twitter and blogs are everywhere. This panel will explore social media as a resource and a challenge to litigants, their trial counsel and judges. Christine Martin, a jury consultant with special expertise in social media will address how social media may impact jury selection as well as how it may be changing the dynamic of jury deliberations. The Honorable Faith Hochberg of the District Court of New Jersey will provide perspectives from the bench. Neel Chatterjee, an IP litigator from Orrick, will identify traps for the unwary as the Rules of Professional Conduct are increasingly being applied to social media

The Web 2.0 Jury: Selection and Decision-Making

Christine Martin (Bio, Paper, Paper2, Paper3, Slides)
DecisionQuest, New York, NY

Control of the Courtroom in the Age of Social Media

The Honorable Faith Hochberg
United States District Court for the District of New Jersey, Newark, NJ

Tweeting, Linking In, and Being Friends: What's Ethical?

Neel Chatterjee (PaperSlides)
Orrick Herrington & Sutcliffe, LLP, Menlo Park, CA

10:30 am - 12:00 noon Plenary

Effectively Using Trade Secrets and Copyright in Addition to or in Lieu of Patents and Trademarks

Moderator: H. Sanders Gwin
                 Shumaker & Sieffert, PA, St. Paul, MN

Copyright and Trade Secrets provide robust protection for technology potentially not protectable by patents or where the timing or disclosure required to obtain patent protection is problematic. In this session, the use of these alternative forms of protection as part of a multifaceted IP strategy will be addressed by both outside and in-house counsel.

The Secret Formula for Effectively Using Trade Secrets

Daniel P. Westman (Bio, Paper, Slides)
Morrison & Foerster, LLP, McLean, VA

Copyright as a Tool for Protecting Technerology

Stephen D. Milbrath (Bio, Paper, Slides)
Allen Dyer Doppelt Milbrath & Gilchrist, PA, Orlando, FL

Putting All Forms of Protection Together In-House

Kim Zerby (Bio, Paper, Slides)
The Procter & Gamble Company, Cincinnati, OH