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2009 Mid-Winter Institute Speaker Materials

32nd Mid-Winter Insitute

January 28 - 31, 2009

Doral Golf Resort & Spa

Miami, Florida


Welcome to the 2009 Mid-Winter Institute Speaker Materials

Members Only
These meeting materials are a benefit of AIPLA membersip.  To learn more about becomming an AIPLA member, click HERE.
  • CLICK HERE TO DOWNLOAD NOW  (18.5 MB - last updated 2/22/2009) — Download for All Speaker Papers for the 2009 Mid-Winter Meeting. Papers are organized by speaker's last name or track ID. If you have any questions, please refer to the track listed below or contact AIPLA by e-mailing
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Enforcing IP Rights Internationally and Coping with Uncertain Local IP Rights
Overview: Today companies are required to perform manufacturing and distribution activities in more parts of the world than ever before. The quest for new efficiencies in manufacturing and new markets in distribution has required modern
companies to expose their technologies and other intellectual property across borders and into political systems in which IP protection is less certain than in the United States. This session considers strategies and tactics that companies may
adopt to defend their intellectual property employed in other nations, and to defend their own markets from erosion by products made in countries having less stable intellectual property laws and enforcement mechanisms.
Moderator: Benjamin Sley (Bio, Cover Slide), Foxconn Electronics, Inc. Harrisburg, PA
Stopping Goods at the Border: When & How to Do It
  • Friedrich Klinkert (Bio, Paper, Slides), Heymann & Partner Rechtsanwaelte
  • Frankfurt, Germany
    Gary M. Hnath (Bio, Paper, Slides), Bingham McCutchen Washington, DC
  • Dwayne S. Rawlings (BioSlides), Department of Homeland Security Washington DC
Coping with Companies Operating in Countries Having Uncertain IP Enforcement
  • Hernán Ríos (Bio, Paper), Porzio Rios & Asociadosr Santiago, Chile
Coping with Markets in Countries Having Uncertain IP Enforcement
  • Denis Khabarov (Bio, Slides), Baker & McKenzie - CIS, Ltd Moscow, Russia
  • Sergio Ellmann (BioSlides), Marval, O’Farrell & Mairal Buenos Aires, Argentina
  • Daniel Goytia (BioPaperSlides), Daniel Goytia & Associates Buenos Aires, Argentina
  • Dev Robinson (Slides), Amarchand Mangaldas New Delhi, India
Lessons Learned by Olympic Sponsors in China
  • Larry Rickles (BioSlides), Johnson & Johnson New Brunswick, NJ


THURSDAY - PLENARY SESSION (9:00 am - 12:00 pm)

The Legislative Agenda for the 111th Congress–Patents, Copyrights and Trademarks
Overview: The Patent Reform Act continues to be a top priority among many in the industry, and several copyright and trademark legislative initiatives are in the works. This program will introduce the many legislative initiatives likely to be significant in the 111th Congress and will discuss the prospects of patent law reform and possible changes to copyright and trademark law.
Moderator: E. Anthony Figg (Bio, Slides), Rothwell Figg Ernst & Manbeck, PC
Washington, DC
Copyrights, Trademarks and a New Patent Reform Bill: What are the Prospects?
  • Ryan Triplette, Senate Committee on the Judiciary Washington, DC
First-to-File, Best Mode, Publication, Grace Period, AQS, and International Harmonization
  • Q. Todd Dickinson (Slides), AIPLA Arlington, VA
Inequitable Conduct and Post Grant Review
  • Robert A. Armitage (Bio, Paper, Slides), Eli Lilly and Company Indianapolis, IN
Willful Infringement and Prior User Rights
  • Philip S. Johnson, Johnson & Johnson New Brunswick, NJ
Damages, Venue, and Appeals
New Trademark Initiatives
  • Susan Barbieri Montgomery (BioPaperSlides), Foley Hoag, LLP
    Boston, MA
New Copyright Initiatives
  • Honorable Marybeth Peters, US Register of Copyrights Library of Congress
    Washington, DC
Views from the Federal Circuit
  • Chief Judge Paul R. Michel, US Court of Appeals for the Federal Circuit
    Washington, DC


"Future Goals and Notable Challenges for WIPO"
Luncheon Speaker: Francis Gurry (Bio), Director General, World Intellectual Property Organization Geneva, Switzerland

THURSDAY - CONCURRENT TRACK 1 (2:00 pm – 4:00 pm)

Understanding the Impact of Cultural Sensitivities in International Business
Dealings Focus: India, China, Russia and Latin America
Overview:  The session will focus on cultural sensitivities and best practices of business conduct in China, India, Russia, and Latin America.  The session will also address IP management and enforcement in these countries, their court systems, and best practices for business conduct with respect to licensing, due diligence, settlement negotiations, and IP transactions.
Moderator: Arlene P. Neal (Bio), Connoly Bove Lodge & Hutz, LLP
Washington, DC
India: Cultural Sensitivities and Best Practices of Business Conduct in India Regarding IP Transactions in the Biotechnology and Pharmaceutical Industries
  • Chid S. Lyer (Slides), Mumbai, India
China: Cultural Sensitivities and Best Practices of Business Conduct in China Regarding IP Transactions in the Electronics, Telecommunications, and Consumer Products Industries
  • Poh Chua (BioPaper, Slides), TTE Corporation Shenzhen, Guangdong, China
Russia: Cultural Sensitivities and Best Practices for Business Conduct in Russia
  • Maria Eliseeva (Slides), Houston Eliseeva, LLP Lexington, MA
Latin America: Cultural Sensitivities and Best Practices of Business Conduct in Latin America Regarding IP Transactions in the Medical Device, Diagnostic, and Chemical Industries
  • Randy Godard (Bio, Paper) Johnson & Johnson Miami, FL


THURSDAY - CONCURRENT TRACK 2 (2:00 pm – 4:00 pm)

Maximizing IP in an Ever-More Global Economy: The Impact of Quanta, The FTC, IP Holding Companies and Other National and International Events
Overview: This session will focus on maximizing IP assets in this changing global economy. We will explore patent exhaustion via Quanta v. LG Electronics, the role of FTC standards, how IP holding companies impact IP value and foreign IP acquisition, enforcement and deal-making.
Moderator: Melvin Garner, Darby & Darby, PC New York, NY
Patent Exhaustion: First-Sale Doctrine–Absolute or Conditional Under Quanta v. LG Electronics?
  • Rachel Hughey (Bio, Paper, Slides), Merchant & Gould, PC    Minneapolis, MN
Patents and Global Standards; The Impact of Recent Litigation and Enforcement Actions
  • Michele K. Herman (BioPaper, Slides), Woodcock Washburn, LLP
    Seattle, WA
Legal Nuances When an IP Holding Company Seeks to Enforce a Patent
  • Robert A. Matthews, Jr. (BioPaperSlides), Latimer Mayberry & Matthews IP Law, LLP Blacksburg, VA
Enforcing Trademarks Outside of the United States: GEEK SQUAD Case Study
  • Caldwell Camero (BioPaperSlides), Best Buy Enterprise Services, Inc.
    Richfield, MN


IP Practice in Europe Committee Educational Session
IP Enforcement in Europe
Moderator: Melissa Bitting, PPC International Syracuse, NY
EPO Oppostion Practice vs. Litigation
  • Richard Howson (BioSlides), Kilburn & Strode London, United Kingdom

The Enforcement Directive

  • András Kupecz (BioPaper, Slides), Freshfields Brukhaus Deringer, LLP
    Munich Germany
Recent Developments
  • Joseph A. Calvaruso (BioPaperSlides), Orrick Herrington & Sutcliffe, LLP
    New York, NY
Managing European Patent Litigation from a US Perspective
  • James A Forstner (BioPaperSlides), Kuhnen & Wacker Intellectual Property Law Firm Munich, Germany


FRIDAY PLENARY SESSION (9:00 am - 12:00 noon)

New Decisions/New Approaches: Rethinking Litigation Strategy
Overview: A panel of top trial lawyers will discuss how recent developments in IP law should shape and focus your litigation strategy.
Moderator: Karen Y. Spencer, Nike Golf Beaverton, OR
Considering Remedies Upfront
How Equitable Relief Drives Pre-Trial Decisions
  • Meredith Martin Addy (Slides)
    Brinks Hofer Gilson & Lione
    Chicago, IL
Figuring Damages Post e-Bay

  • Sara A. Poulos (BioPaperSlides)
    Robins Kaplan Miller & Ciresi, LLP
    Minneapolis, MN
Shanghai or Marshall? How Forum Selection Helps You Get the Most Bang for Your Euro
That’s All Well and Good, But How Do We Prove It? Evidence and Hot Substantive Issues
  • Dale Cendali (Bio, Paper)
    O’Melveny & Myers
    New York, NY
Did They Really Mean It? Willfulness and the Rise of Inequitable Conduct
  • David Healey (Slides)
    Fish & Richardson, PC
    Redwood City, CA
Can You End This Thing Quickly? How All These Changes Affect Settlement

FRIDAY LUNCHEON (12:30 pm–2:00 pm)

Connecting Across Cultures
The luncheon will feature an interactive presentation by Josy Gallagher of Futurework Institute that will highlight culturally sensitive issues that may be encountered when doing business with international clients. Attendees will learn to recognize the critical importance of managing cultural differences in cross-border business relationships, gain a better appreciation of cultural differences and gain a better Knowledge of how business dealings are impacted by the specific cultural context.
  • Josy Laza Gallagher (Bio), Future Work Institute Brooklyn, NY

FRIDAY - CONCURRENT TRACK 1 (2:00 pm – 4:00 pm)

Global Perspectives on Branding, Trademarks, and Trade Dress: Maintaining a Competitive Edge in the Face of Global IP Reform Global Branding Strategies
Overview: The global marketplace presents special challenges to developing and protecting corporate brands, trademarks, and trade dress. This program will address the desirability of alternative foreign registration strategies under international treaties, cultural considerations in selecting trademarks for use abroad, alternative approaches to IP valuation, and the special considerations given to protection of registered and unregistered product configuration in marketing goods and services abroad.
  • Moderator: Leslie Lott (Bio, Slides), Lott & Freidland Coral Gables, FL
Legal Issues and Registration Strategies for Global Brand Protection
  • Teresa Hechmer Anzalone (BioPaperSlides), Glaxosmithkline
  • King of Prussia, PA
Approaches to Brand Valuation in a Global Marketplace
  • Jeffrey S. Andrien (BioPaper, Slides), CRA International Austin, TX
Cross-Cultural Issues in Global Branding–How Political, Cultural and Moral Issues Affect the Selection and Protection of Trademarks Throughout the World
Global Perspectives on Trade Dress Protection: Best Practices for Protecting Product Shapes and Designs – US, Canadian, European & Latin American Perspectives Perspectives on Methods and Limits of Trade Dress Protection
Moderator: Karen A. Butcher (Bio), Morgan Lewis & Bockius Washington, DC
The US Perspective on Trade Dress Protection
  • Christopher Schulte (Bio, PaperSlides), Merchant & Gould, PC
    Minneapolis, MN
The Canadian Perspective on Trade Dress Protection
  • Justine Wiebe (BioPaper, Slides), Bereskin & Part       
  • Toronto, Ontario, Canada
The European Perspective on Trade Dress Protection
  • Katie Cameron (Bio, PaperSlides), RGC Jenkins & Co.
    London, United Kingdom
The Latin Perspective on Trade Dress Protection

FRIDAY - CONCURRENT TRACK 2 (2:00 pm – 4:00 pm)

Global Patent Strategies: Protecting Innovation in a World of Change
Moderator: Gavin Bogle, Lovate Health Sciences, Inc.
Oakville, Ontario, Canada
What in the World is Happening with Post-Grant Patent Opposition?
  • Gary L. Griswold (Slides), 3M Innovative Properties Company
    St. Paul, MN
Watch Out! Compulsory Licensing Lurks Around Global Corners
  • Matthew Zischka (BioPaperSlides), Smart & Biggar         
  • Toronto, Ontario, Canada
Where Will the “Patent Prosecution Highway” Take You?
  • Stephen G. Kunin (PaperSlides), Oblon Spivak McClelland Maier & Neustadt, PC
    Alexandria, VA
“Royalty Reform”–Who Gets to Pick Your Royalty Rate?
  • Lisa M. Tittemore (BioPaperSlides), Bromberg & Sunstein, LLP   Boston, MA
“What” is Patentable? That Depends on the Country and When You Ask!
  • Christian Rupp (Bio, Paper, Slides), Mitscherlich & Partner              Munich, Germany
  • Donald R. Steinberg (BioPaperSlides), WilmerHale Boston, MA


Special Committee on Mergers & Acquisitions - Committee Educational Session
Overview on transfer issues and the differences between the sale of IP alone versus the sale of IP in the context of an asset purchase agreement (e.g., as part of a business).
IP Overview: Sale of Intellectual Property versus Sale of Intellectual Property Ancillary to the
Sale of a Business
Due Diligence
Assignments of Intellectual Property
Assignment of Intellectual Property Agreements
Delivery of Technology (Books and Records)
  • Peter Mims (Slides), Vinson & Elkins, LLP Houston, Texas
Detailed IP Issues in the Asset Purchase Agreement
Licensing Issues in Asset Purchase Transactions (Shared Intellectual Property Retained Businesses)
IP Representations and Warranties
IP Indemnification
  • James W. Repass (BioSlides), Fulbright & Jaworski, LLP Houston, TX


SATURDAY - PLENARY SESSION (9:00 am–12:00 noon)

Counterfeiting Across the Globe: Experts Provide Tools and Techniques to Protect Corporate Interests and Stop the Creation, Trafficking, and Profit Incentives for False and Counterfeit Goods
Moderator: Janet Marvel, Pattishall McAuliffe Newbury Hilliard & Geraldson, LLP
Chicago, IL
  • Lin Geffory, Lovells, LLP Shanghai, China
South America
  • Harley I. Lewin (BioPaper, Slides), Greenberg Traurig, LLP
    New York, NY
  • Maria Aronikova (BioPaperSlides), Uskov & Partners                          St. Petersburg, Russia
Worldwide Perspective
  • Stephen M. Gaffigan (BioPaper). Fort Lauderdale, FL
Ethics Before the USPTO – What You Need to Know to Keep Your License
  • Robert Oberleitner (Slides), Acting Deputy Commissioner for Patent Operations United States Patent and Trademark Office Alexandria, VA