Sign In

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)