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2012 Mid-Winter Institute Session Handouts

Monday Speaker Materials

​Plenary Session, 1:45 - 3:45 PM

Inside and Outside Counsel Perspectives: Challenges to Finding a Balance of Life, Law and the Pursuit of Happiness

Moderator: Q. Todd Dickinson, Executive Director, AIPLA, Arlington, VA

Don’t miss this panel of distinguished IP professionals as they share personal perspectives on the economic, management and legal challenges they are facing, including: efficiency requirements, budgeting and alternative fee arrangements; international scope of business/practice; team building: diversity, training and succession planning; and retention: work/life balance issues.

Panelists include:

  • Martha Born, Biogen Idec Inc., Weston, MA (Bio, Paper)
  • Don Ware, Foley Hoag LLP, Boston, MA (Bio, Paper)
  • Carl B. Horton, General Electric, Faifield, CT (Bio, Paper)
  • Robert Schulman, Hunton & Williams, Washington, DC
  • Chip Lutton, Apple, Inc., Cupertino, CA (Paper)
  • Lou Brucculeri, Wong Cabello, Houston, TX (Paper)
  • Frederick R. Jorgenson, AuthenTec, Inc., Melbourne, FL (Bio, Paper)
  • Denise DeMory, Dewey & LeBoeuf, LLP, San Francisco, CA (Bio, Paper)


Plenary Session, 4:00 - 5:30 pm

Leading by Example: The Emerging Workforce

Moderator: Nancy Klembus, Kimberly-Clark Corporation, Roswell, GA (Bio)

The workforce and workplace are rapidly changing. Attitudes of incoming professionals often vary widely from those looking to retirement. The work force is also becoming increasingly diverse, forcing managers to have an adaptive approach that will yield the best results for a team. Having employees around the globe, effectively working in a virtual office may create further complications. This program aims to bring practical approaches to the current problems that managers are facing today in the intellectual property profession.

Remote Control: Managing a Patent Department, Two States Away

Robert O. Lindefjeld, Nantero, Inc., Woburn, MA (Bio, Paper, Slides)

Bridging the Diversity Divide

Ingrid M. Foerster, Silicon Valley Labs, San Jose, CA (Bio, Paper, Slides)

The Virtual Office: Challenges and Benefits of a Global Legal Group

Chen Wang, E.I. du Pont de Nemours and Company, Wilmington, DE (Bio, Paper, Slides)

Alexandria Calling Detroit, Come in Detroit: The USPTO Satellite Office Experience

Teresa Stanek Rea, Deputy Director, US Patent & Trademark Office, Alexandria, VA (Slides)

Tuesday Speaker Materials

​Plenary Session, 8:30 - 10:30 am


Managing “Adverse” Relationships: The Role of Civility in Advocacy

Moderator: Terry McMillin, International Game Technology, Reno, NV (Bio)
There is a lot of discussion about an increasing lack of civility in our profession. This panel will explore the costs and benefits of civility from the perspective of the bench, the Patent Office, outside counsel and in-house counsel, asking the tough questions such as whether civility is the best strategy, how the local rules impact parties’ conduct, how to know when one’s outside counsel is the problem in a contentious litigation, how to deal with incivility from the opposing party, and what effect a party’s lack of civility can have on decision-makers.

The Judge’s Perspective - What are the costs and consequences of lack of civility – do local rules have an effect?

Honorable Michael J. Davis, US District Court, District of Minnesota, Minneapolis, MN

Does Hardball Work? - A point-counterpoint

Kenneth Adamo, Kirkland & Ellis, LLP, Chicago, IL (Bio, Paper 1, Paper 2, Paper 3)
James Gilliland, Kilpatrick Townsend, San Francisco, CA (Bio, Paper 1, Paper 2, Paper 3)

In-House Counsel’s Perspective - How do you know when your outside counsel is the problem? When should you use "scorched-earth" tactics?

Philip S. Johnson, Johnson & Johnson, New Brunswick, NJ (Slides)

USPTO Perspective - Is the reputation of patent applicants and attorneys important?

Teresa Stanek Rea, Deputy Director, US Patent & Trademark Office, Alexandria, VA (Invited)

Plenary Session, 10:45 am - 12:00 noon

Some of the Best Things in Life are Free

Moderator: Kevin H. Rhodes, 3M Innovative Properties Company, St. Paul, MN (Bio)

Although rewarding, the practice of law has its challenges with respect to time pressures and competing priorities. However, one of the most rewarding aspects of practicing law is time spent helping others. This panel discussion presents perspectives from practitioners providing legal services to those in need of intellectual property and non-intellectual property services. The recipients may be seeking help with anything from protecting artistic works to patenting inventions, or even non-IP issues such as immigration. The speakers will share their insights and experience in providing public service.

Pro Se Inventor Program: USPTO Perspective

US Patent and Trademark Office Representative, Alexandria, VA (Invited)

PTO Pro Se Inventor Program – Private Practitioner Perspective

Jim Patterson and Candee Goodman, Patterson Thuente Christensen Pedersen, PA, Minneapolis, MN

Protecting the Public from the Abusive Assertion of IP

Corynne McSherry, Electronic Frontier Foundation, San Francisco, CA (Bio, Paper, Appendix)

Pro Bono Opportunities Beyond IP

Juliann Bildhauer, Volunteer Advocates for Immigrant Justice, Seattle, WA (Bio, Paper)


Luncheon: Viva Las Vegas! Game Development (tickets required)


Gregory G. Economos, Senior Vice President, Global Consumer Products, Sony Pictures Entertainment, Culver City, CA

Boris Hallerbach, International Game Technology (IGT), Reno, NV (Bio)

Casino floors in Las Vegas are more than fun and games – they are big business and, increasingly, focus on big brands. Players visiting a Las Vegas casino today are greeted by slot machines featuring their favorite movies, music and television shows.
How are these licensed brands and titles adapted for use in casino slot games? Industry experts Gregory G. Economos and Joe Kaminkow will discuss how licensor and licensee work together to effectively utilize intellectual property content such as brands in casino game development.


Track A, 2:00 - 3:30 pm

The New World of Non-Practicing Entities: The Ethics and Morality of Licensing

Moderator: Naomi Abe Voegtli, SAP, Blountville, TN (Bio)
What new and alternative paths exist to monetize patents and what are the challenges faced by both operating companies and Non-Practicing Entities (NPEs)? How does recent case law affect these strategies? What should
a law firm consider when representing both operating companies and NPEs? The panel will offer different perspectives on recent developments in the world of non-practicing and patent assertion entities.

Challenges and Opportunities Facing Practicing and NPEs to Maximize Strategic and Financial Value of Their Patents

Jim Weisfield, Intellectual Ventures, Bellevue, WA (Bio, Paper, Slides)

NPEs and Patent Assertion Entities: What Are They and How Do You Work With or Against Them?

Cynthia L. Beverage, ST-Ericsson, Santa Clara, CA (Bio, Paper)

Challenges and Opportunities Faced by Outside Counsel Representing Practicing and NPEs, Including Business Conflict Issues and Alternative Billing Arrangements

Michael Rader, Wolf Greenfield, Boston, MA (Bio, Paper)


Track B, Tuesday, 2:00 - 3:30 pm

Trademark and Copyright Registration and Enforcement: How to Balance Risks and Benefits so You Hit the Jackpot!

Moderator: Jennifer L. Kovalcik, Stites and Harbison, PLLC, Nashville, TN (Bio)
Trademark and copyright practice require choices to minimize risk and maximize the client’s return on investment. This panel will offer different perspectives to help practitioners develop strong strategies, even when time and money are in short supply.

Don’t Play Roulette With Creative Works: Know the Bounds of Fair Use in Copyright Law

John Schailbley III, Indiana University School of Law, Indianapolis, IN (Bio, Paper, Slides)

How to Run the Table With a Winning Trademark Registration and Enforcement Strategy

Mark G. Tratos, Greenberg Traurig, LLP, Las Vegas, NV (Bio, Paper, Slides)

Keeping a Poker Face Even When State and Federal Laws Conflict

Kieran Doyle, Cowan Liebowitz & Latman, New York, NY (Bio)

A Question and Answer period will follow

Wednesday Speaker Materials

​Track A, 8:45 - 10:00 am

The Business of Lawyering and Corporate Counsel/ Outside Counsel Teams

Moderator: David Ruschke, Medtronic CardioVascular, Santa Rosa, CA
What are the hidden costs of sending work to outside counsel? Should you represent the Fortune 500 Company whose billing requirements are longer than the Dead Sea Scrolls? What about the cheap client or the $800/hour partner—are they worth the effort and expense? How do large corporate clients review outside counsel? Should in-house counsel use few or many different law firms? Several in-house counsel with outside counsel of their choice will discuss what works, what doesn’t and what they want us to hear.

Maintaining the Working Relationship of Inside and Outside Counsel

Steve Caltrider, Eli Lilly & Company, Indianapolis, IN (Bio, Paper, Slides)
Charlie Lipsey, Finnegan Henderson Farabow Garrett & Dunner, LLP, Reston, VA (Bio, Paper, Slides)

Exploring the Alternate Reality of Alternative Fee Agreements

Hildy Bowbeer, 3M Innovative Properties Company, St. Paul, MN (Bio, Paper)
David J. F. Gross, Faegre & Benson, LLP, Minneapolis, MN (Bio, Paper)

Inside Counsel’s Approval Process for Outside Counsel and the Tensions That Follow

Joseph Shirtz, Johnson & Johnson, New Brunswick, NJ (Paper)
William C. Geary III, Nutter McClennan & Fish, LLP, Boston, MA (Bio, Paper)

Track A, 10:15 am - 12:00 noon

Managing a Project
Moderator: Amy E. Hamilton, Eli Lilly & Company, Indianapolis, IN (Bio)
Leadership and project management are topics that are at most obliquely addressed in law school, yet these skills often determine the degree of success of projects, both large and small, in firms and corporations. This session will address the many complexities of managing projects in today’s incredibly complex legal environment including: forming a complementary team from support staff to lead counsel, including hiring and removal; building loyalty in a team; effective, efficient delegation; mentoring and performance management; communication between diverse team members and between inside and outside counsel; expectation-setting and implementation in litigation matters (two-way street between inside and outside counsel); and effective, user-friendly communication with the client representatives.

Perspectives from a Large Law Firm

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

Perspectives from a Small Business

Soonhee Jang, Danisco, US, Inc., Palo Alto, CA (Bio, Paper, Slides)

Perspectives from a Large Business

David Manspeizer, WilmerHale, New York, NY (Bio, Paper)

Track B, 8:45 - 10:00 am

Rolling the Dice—Getting the Results You Want and Managing the Impact of the Ones You Don’t

Moderator: Spencer Mazyck, Bloomberg Law, New York, NY (Bio)
How can you achieve the result that the business needs? Public relations, litigation and other strategies to handle disputes are tools all attorneys should know how to combine effectively. In this panel discussion, a public relations specialist will discuss crisis management and the ins and outs of trying your case in the court of public opinion. In-house counsel will shed light on the dynamics of the relationship between a company’s lawyer and its business personnel, as well as how specific tools - including outside counsel and PR professionals - can be brought to bear on business problems. Outside counsel will be on hand to discuss how to serve clients as a "problem solver."
Troy R. Lester, Acushnet Company, Fairhaven, MA (Bio, Paper)
Russ Slifer, Micron Technology, Inc., Boise, ID (Bio, Paper)
Richard A. Gaffin, Miller Canfield, Grand Rapids, MI (Bio, Paper)
Marcia Horowitz, Rubenstein Associates, New York, NY (Bio, Paper)

Track B, 10:15 am - 12:00 noon

Breaking Impasses

Moderator: Jennifer Tegfeldt, Charlestown, MA (Bio)
Business negotiations and dispute resolution negotiations often reach impasses. This session will explore factors that contribute to reaching impasses, and ways to overcome such impasses, with particular discussions around the role of the attorney in representing his/her client’s interest and in facilitating ways to overcome such impasses.
Honorable Suzanne K. Nusbaum, Impartia, Los Gatos, CA (Bio, Paper)
Wayne P. Sobon, Rambus, Inc., Sunnyvale, CA (Bio, Paper 1, Paper 2, Paper 3)
Jeff Kichaven, Mediator, Los Angeles, CA

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

Speaker: Margaret Focarino (Slides)
Commissioner for Patents-Designee, US Patent & Trademark Office, Alexandria, VA

Wednesday, Track A, 2:00 - 3:30 pm

When Imbalance Happens: Legal Manager’s Guide to Identifying and Dealing with Imbalance Issues

Moderator: Carey C. Jordan, McDermott Will & Emery, LLP, Houston, TX
Sometimes attorney imbalance happens. As colleagues and managers, we need to help out in these times. This panel will address how to identify and deal with “out of balance” situations and understand the associated ethical and legal risks caused by substance absuse, mental illness/ depression, stress/anger management, the bully lawyer, underproductive individuals and underperformance (including less profitable practice groups).

Identifying and Working with Underproduction/Underperformance Situations in the Workplace and Approaches to Resolve Them

Wendy Peterson, Knobbe Martens, Irvine, CA (Bio, Paper, Slides)

Signs and Symptoms of Impairment and Their Effects on the Workplace, Available Resources and Embracing Work-Life Balance as a Lifestyle Goal

Sharon O’Brien, Ceridian LifeWorks, Blue Bell, PA (Bio, Slides)

What are the Legal and Ethical Obligations Dealing with Imbalance Issues in the Workplace

Molly Peckman, Dechert, LLP, Philadelphia, PA (Article1, Article2. Article3, Article4, Article5, Article6, Article7, Article8, Article9) (Slides)

How to Get a Person into Treatment and Finding Lifetime Recovery

Chris Gordon, Solutions Recovery, Inc., Las Vegas, NV

Wednesday, Track B, 2:00 - 3:30

The Conflict of Interest Conundrum and Ethical Considerations

Moderator: Vicki Margolis, Kimberly-Clark Corporation, Neenah, WI (Bio)
Conflict of Interest is an often used but seldom defined term. This session explores the ethical considerations with an update on conflicts law relating to subject matter conflicts and advance waivers. In-house counsel and outside counsel will present their perspectives on what they consider to be a conflict. This panel will also explore whether to ask for a conflict waiver; whether to give a waiver; and how to handle undisclosed conflicts in patent, trademark, and other IP contexts.

Update on Conflicts Law Including Subject Matter Conflicts and Advance Waivers

David Hricik, Walter F. George School of Law, Macon, GA (Bio, Paper, Slides)

What Does Outside Counsel Think is a Conflict? What Does Inside Counsel Think is a Conflict?

Guy Donatiello, Endo Pharmaceuticals, Chadds Ford, PA
Peter R. Jarvis, Hinshaw & Culbertson, LLP, Portland, OR (Bio, Paper, Slides)

How to Ask for a Conflict Waiver and Whether or Not to Give One

John Steele, Palo Alto, CA (Slides)

How to Deal with Specialized Conflicts-Related Issues for IP Counsel, Including Disqualification of an Expert’s Firm, Conflicts Arising from Third-Party Discover and Representation of Patent Co-Assignees

Lisa Dolak, Syracuse University College of Law, Syracuse, NY (Bio, Paper, Slides)

Committee Meetings, 3:45 - 6:00 pm

Law Practice Management/Patent Law/Professionalism and Ethics (Joint Session)

(60 minutes of ethics CLE requested)

Ethical Issues Under the AIA and Risk Management

Moderator: Raymond Van Dyke, Van Dyke Law, Washington, DC
The America Invents Act raises many ethical issues. Supplementary examination, the new procedures for inventor oaths and declarations and the handling of best mode requirement, among other aspects of the AIA, present new ethical problems. This session will raise and address these issues in an interactive format. Risk management continues to be a concern in law practice generally. Two aspects that deserve special attention are audit letters and the ownership and direction of client companies. 

Ethical Issues Confronting Patent Attorneys Under the America Invents Act

Raymond Van Dyke, Van Dyke Law, Washington, DC (Slides)
Steven M. Auvil, Benesch Friedlander Coplan & Aronoff, LLP, Cleveland, OH

Risk Management—Audit Letters and Ownership/Direction of Client Companies

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

Thursday Speaker Materials

Thursday, Plenary Session, 8:45 - 10:15 am

Where is the Federal Circuit Headed? Views from the Outside Looking In

Moderator: Marketa Trimble, William S. Boyd School of Law, University of Nevada, Las Vegas, Las Vegas, NV (Bio)
This panel will address the expansion of federal common law in IP cases, an overview of patent cases in which a consensus has not been reached, and an overview of judges’ records in IP cases.

Federal Circuit vs. Regional Circuit Law: How Does the Federal Circuit Decide When Its Own Law Applies?

Louis Tompros, WilmerHale, Boston, MA (Bio, Paper, Slides)

The Great Divide—An Overview of Hot Patent Law Issues on Which a Clear Consensus Has Yet to be Reached

Ybet Villacorta, Foley & Lardner, Washington, DC (Bio, Paper, Slides)

Win, Lose, or Draw: An Empirical Overview of Federal Circuit Decisions and a Doctrinal Deep Dive on Defenses in Controversy

Josh Walker, Lex Machina, Inc., Palo Alto, CA (Bio, Paper 1, Paper 2, Paper 3, Paper 4)

Thursday Plenary Session, 10:30 am - 12:00 noon


The Federal Appeals Courts: Effective Advocacy and Consensus-Building

Moderator: Jeffrey I.D. Lewis, Patterson Belknap Webb & Tyler, LLP, New York, NY (Bio)
A panel of distinguished jurists from the US Court of Appeals for the Federal Circuit and the 9th Circuit Court of Appeals discuss what they consider effective advocacy and how their respective courts come to a consensus in deciding cases. A respected social science professor will provide a counterpoint from the Social Sciences perspective on effective consensus-building.
Honorable Randall Rader, US Court of Appeals for the Federal Circuit, Washington, DC
Honorable Pauline Newman, US Court of Appeals for the Federal Circuit, Washington, DC
Honorable Alex Kozinski, US Court of Appeals for the 9th Circuit, Las Vegas, NV (Bio)
Honorable Jay Scott Bybee, US Court of Appeals for the 9th Circuit, Las Vegas, NV
Krystyna Stave, University of Nevada, Las Vegas, Las Vegas, NV