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2016 Mid-Winter Institute Session Materials

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Welcome to the 2016 AIPLA Mid-Winter Institute session materials page. Papers are available to all registered ​attendees. If a speaker has submitted material, there will be a link(s) to their bio, paper, and slides next to their name.

A DVD with all the submitted session materials will be sent to all registrants about 6 weeks after the conference.

To access the session handouts, please Sign-In by clicking "Sign In" in the upper right corner of this web page. If you are having any trouble accessing the session handouts, please send us an email or call 703.415.0780.


Download all Session Materials (24 MB - last updated 03/03/2016 at around 7:50 AM EST)


Wednesday Session Materials, January 27, 2016

2:00 – 4:00 pm  Opening Plenary Session

Salon de Flores 4-5

Across The (IP) Universe: Developing a Diverse IP Portfolio Including Trademarks, Trade Secrets and Copyrights In Today’s Changing Protection Eligibility Landscape

           Moderator: Moderator: Mieke K. Malmberg, Glaser Weil Fink Howard Avchen & Shapiro, LLP, Los Angeles, CA      (​ Bio​ )

Identifying the Building Blocks of Biotech and Pharma Protection: Drafting Tips and Strategies for Obtaining Enforceable Protection Products in Light of Recent Developments in Divided Infringement and Subject Matter Eligibility

  •   Denise Main, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, DC ( BioPaper)

 Power Tools! How Design Patents, Product Configuration/Interface—Trademarks and Copyrights Should be Your Client’s First Line of Defense, Not an Afterthought

  •   Michael Lasky, Schwegman Lundberg & Woessner, PA, Atlanta, GA ( Bio  , Paper

Future-Proofing: How Trade Secrets, Global Patent Portfolios and Copyright Diversify Portfolio Protection Against Risk of Policy Change

  •  Wayne Sobon, SVP & General Counsel, Inventergy, Inc., Campbell, CA ( Bio)
Networking Break |3:30 - 4:00 PM
Concurrent Tracks | 4:00 – 5:30 PM

 ​Concurrent Tracks, Session​ I

Track 1

Salon de Flores 4-5

Maximizing Market Monetization— How to Build an Enforceable Portfolio to Maximize Licensing Opportunities in View of US Exhaustion

        Moderator: John A. Burtis, Interim Chief Intellectual Property Counsel, Legal Director of Technology Licensing,           Ecolab Corporation, Eagan, MN ( Bio​)

Overview of Exhaustion and Re-Importation Case Law

  •  Sarah Wasserman Rajec, Professor, William and Mary Law School, Williamsburg, VA ( Bio , Paper)

 Patent Exhaustion Issues in the Pharmaceutical Industry

  •  Jeremy McKown, Assistant General Counsel – Patents, Johnson & Johnson, New Brunswick, NJ    (Bio , Paper​)

 Patent Exhaustion Issues in the Semiconductor Industry


  •  Burch A. Harper, Vice President & Deputy General Counsel for IP Licensing and Technology Transactions, Rambus Inc., Sunnyvale, CA​ ( Bio , Paper)

Track 2

Salon de Flores 6-8

The Wide Wide World of Designs: Best Practices for the Procurement of Design Patents Across Borders and in the US

      Moderator: Richard S. Stockton, Banner & Witcoff, Ltd., Chicago, IL ( Bio )

Hands-on With the Hague Agreement—The Nuts and Bolts of Applying for an International Registration of Industrial Designs

  • Grégoire Bisson, Head of International Registration Legal Services, World Intellectual Property Organization, Geneva, Switzerland (invited) ( Bio , Paper

 Considerations for Making Your Design Patents/ Industrial Design Registrations Enforceable in Multiple International Jurisdictions

  •  Dr. Henning Hartwig, Bardehle Pagenberg Partnerschaft, Munich, Germany( Bio, Paper, Slid)

Advanced Topics on US Design Patent Prosecution—Strategies, Common Pitfalls, Tie-In to Other IP, Inter Partes Review, and Lessons from Litigation

  •  Max Ciccarelli, Thompson & Knight, LLP, Dallas, TX ( Bio​ , Paper​)


 6:00 – 7:00 pm

New Member/First-Time Attendee Networking Reception

Hacienda Grande #735

     Sponsored by: Schwegman, Lundberg & Woessner, PA

Are you a new AIPLA member? New to an AIPLA meeting? You’re invited to attend!


Thuresday, January 28

6:30 – 8:00 AM

Diversity IP Law Committee Fun Run or Metabolic Blast Class


        Sponsored by: Baker Botts

     Join the Diversity Committee for an hour of fitness from 6:30 to 7:30 AM. Run or power walk the Back 9 of the LaQuinta Resort or join a Metabolic Blast class. Afterward network with your colleagues over a healthy breakfast snack.

7:00 – 9:00 AM

Committee Meetings*

7:00 – 9:00 AM

Corporate Practice Committee Breakfast Meeting (For corporate in-house counsel only)

Frank Capra D & E

      Sponsored by: Finnegan Henderson Farabow Garrett & Dunner

   In-house practitioners will connect with each other and can engage with a panel of experts presenting the latest e-discovery strategies, techniques and best practices with a particular focus on the impact of e-discovery on the business’ financial and human capital resources

Global Leadership Group (Leadership group members only)

Salon de Flores 12

Amicus (Committee Members Only)

Salon de Fiesta 13


Salon de Fiesta 11

Professional Programs

Salon de Flores 2

The committee will discuss the planning status of the 2016 Spring Meeting and continue planning, including assigning session coordinators, for the upcoming 2016 Annual Meeting. Participation in the Committee is a great way for members to get more involved in AIPLA and provides numerous opportunities to work alongside leaders in the IP industry, including judges, in-house counsel, professors, and lawyers from law firms of all sizes.

Plenary Session
 Salon de Flores 4-5

ITC—A Brave New World: Obtaining Exclusion Orders Enforcing Trademarks, Copyrights and Essential Patents

         Moderator: James B. Altman, Foster Murphy Altman & Nickel, PC, Washington, DC 

The ITC as an Essential Tool in the IP Enforcement Tool Kit

       An introduction to bringing a claim for infringement or misappropriation at the International Trade Commission: relief, procedure,elements of a claim under  337, evidentiary standard, discovery, testimony, and differences from Federal Courts. 

  • ​Sheryl Koval Garko, Fish & Richardson, Boston, MA ( Bio )

Cranes, Trains, and Digital Goods: Trade Secret and Copyright Developments at the ITC

  •  Stefan M. Mentzer, White & Case, LLP, New York, NY ( Bio , Paper)

 It’s Not Just About Patents: Trademark, Copyright, and Trade Secret Litigation at the ITC

  •  ​Gary J. Rinkerman, Drinker Biddle & Reath, LLP, Washington, DC ( Bio, Paper)

Litigating Standards Essential Patents at the ITC: Practice and Policy

      Moderator: David W. Long, Kelley Drye & Warren, LLP, Washington, DC ( Bio)

Litigating patents essential to implementing technical industry standards (standard essential patents or SEPs), presents unique issues. The US International Trade Commission (ITC) recently has seen much development in SEP litigation. The speakers will address SEP litigation in the ITC, such as when and what evidence may be expected on SEP issues, burdens of proof, public interests, exclusion orders and other issues.



  • F. Scott Kieff, Commissioner, US International Trade Commission, Washington, DC (invited) ( Bio, Paper 1, Paper2 , Slide)
  • Dean A. Pinkert, Vice Chairman, US International Trade Commission, Washington, DC (invited) (Bio​)

Luncheon Reception| 12:00 – 12:30 PM​

Salon de Flores Foyer & Veranda

(open to all attendees)

Sponsored by: Patterson Belknap Webb & Tyler, LLP

12:30 – 2:00 PM


Salon de Fiesta 1-10

  Speaker: The Honorable Andrew J. Guilford, District Judge, US District Court for the Central District of California

 (Bio, )


Concurrent Tracks|2:00 – 3:15 PM

Track 1​

Salon de Flores 4-5

Producers, Providers and Pirates, Oh My! Enforcing Copyright in the Digital Millennium

      Moderator: Elizabeth Valentina, Vice President-Content Protection Legal & Policy, Fox Entertainment Group, Inc., Los Angeles, CA ( Bio)

It’s Mine! The Fight Against Pirates by Content Creators and Producers

  • Gabriel D. Miller, Vice President–Content Protection, Legal & Policy, Paramount Pictures, Hollywood, CA( Bio, Paper)

What is Safe? Examining the Roles and Responsibilities in the US of ISPs and Online Platforms Providing Means to Support Piracy

  • F. Jay Dougherty, Professor of Law, Director, Entertainment & Media Law Institute and Concentration Program, Loyola Law School, Los Angeles, CA ( Bio, Paper)

An International Perspective to Enforcing Copyright in Major Works Online and at the Provider Level

  •  Michael R. Weatherley, Former British MP and Advisor on Intellectual Property to the Prime Minister David Cameron, Motion Picture Licensing Corporation, Los Angeles, CA​ ( Paper 1, Paper 2)

 Track 2

Salon de Flores 6-8

So You Want to Have a Trade Dress? Having Obtained a Design Patent, How Do You Build and Protect a Trade Dress in a Product Design

     Moderator: Moderator: Troy Grabow, General Counsel and Vice President of Intellectual Property, Cabeau, Inc., Woodland Hills, CA ( Bio)

The Ins and Outs of Protecting Non-typical Trade Dress

  • YooSun Park, Trade Counsel, The Coca-Cola Company, Atlanta, GA ( Bio , Paper )

Survey Says…Yes! Challenges Confronted, Lessons Learned, and Practice Pointers for Product Design Trades Dress Surveys in Litigation

  • Michael J. Harris, Banner & Witcoff, Ltd., Chicago, IL ( Bio , Paper)

How to Protect Your Trade Dress in Europe

  •  Markus Gampp, DLA Piper UK, LLP, Munich, Germany​ ( Bio , Paper​)


Committee Educational Sessions* |3:30 – 5:30 PM 

Alternative Dispute Resolution/ Patent Litigation (Joint Session) (120 Minutes of CLE Requested)

Salon de Flores 4-5

Mediation as an Effective Tool to Resolve Patent Disputes

The Advantages of Mediation over Alternative Forms of Dispute Resolution

• How to Avoid the Potential Pitfalls of Mediation

• Factors to Consider in Selecting a Mediator and the Timing of Mediation

• Preparing for a Successful Mediation and Aligning the Parties Expectations

• Forms of Mediation (e.g. mediation of parts of disputes, individual issues, discovery issues)

            Moderator: James M. Amend, JAMS, Chicago, IL


  • The Honorable James Holderman (Retired), JAMS, Chicago, IL (Bio, Paper)
  • Patrick J. Flinn, Alston & Bird, LLP, Atlanta, GA ( Paper)
  • John M. Delehanty, Mintz Levin Cohn Ferris Glovsky and Popeo, PC, New York, NY ( Bio, Paper)
  • Tony Baca, Hewlett-Packard Company, Boise, ID (Bio, Paper)

Anti-Counterfeiting and Anti-Piracy International Trade Commission (Joint Session) (120 Minutes of CLE Requested)
Salon de Flores 6-8

IP Border Enforcement by US Customs and Border Protection

Moderator: Moderator: Gail Podolsky, Carlton Fields Jorden Burt, Atlanta, GA (Bio, Paper)

Officials from key offices within US Customs and Border Protection (Customs) will discuss the recordation of trademarks and copyrights, border enforcement of recorded trademarks and copyrights, border enforcement against imports of unlawful gray-market goods, enforcement of Exclusion Orders issued by the US International Trade Commission under § 337, the organization of the relevant enforcement groups within Customs, and how IP rights holders can interact with Customs officials to maximize the protection of their IP rights.

Overview and Organization of the IP Functions within Customs


  • Charles R. Steuart, US Customs and Border Protection, Washington, DC  ( Bio)
  • Juan J. Porras, US Customs and Border Protection, Office of Field Operations at Laredo International Airport, Laredo, TX
  • Paul Pizzeck, US Customs and Border Protection, Area Port of New Orleans, New Orleans, LA

Overview of Recordation of Trademarks and Copyrights

• Border Enforcement of Recorded Trademarks and Copyrights

• Border Enforcement Against Imports of Unlawful Gray-market Goods

• Enforcement of Exclusion Orders issued by the US International Trade Commission Under § 337

• How IP Rights Holders Can Interact with Customs Officials to Maximize the Protection of Their IP Rights


Biotechnology/Chemical Practice/ Licensing and Management of IP Assets

(Paper, Slids) 

 (Joint Session) (120 Minutes of CLE Requested)

Salon de Flores 1-2

Exactly Who Has the Right to Exclude? An Intellectual Property Case Study On Ownership and Transfer of Patent Rights and the Effect of Claim Construction on the Same

       Moderator: D.C. Toedt, Law Office of D.C. Toedt III, Houston, TX (Bio)(Paper)

This mock trial will present a case study on a pioneering development, subsequently patented, and ultimately successfully launched and marketed by a Fortune 100 company as a robust therapeutic for an advanced stage disease—the result of collegial exchanges between US and non-US researchers associated with different institutions, together with the efforts of a start-up company whose mission is to develop life-saving products. Our panelists will address best practices for portfolio management, institutional agreements, inventorship determinations, due diligence, in-licensing, and the ultimate resolution of disputes which can arise from the inception of research and development through various licensing exchanges, with a promise to be stimulating, engaging, and enlightening.


  • Lisa Haile, DLA Piper, LLP (US), San Diego, CA ( Bio,Paper)
  • Cassie Kelly, UCI Applied Innovation, Invention Transfer Group, Irvine, CA 
  • Robert Titus, Eli Lilly and Company, Indianapolis, IL (Bio ,Paper)
  • J. Michael Warner, Pfizer Inc., South San Francisco, CA (Bio)

Entrepreneurship or Inventorship: Which One is “It”?

• A View from the Discovery Phase: What Your Scientists Really Need to Understand.

• Calling All Investors: Do Your Homework and Read the Fine Print.

• So You Want to Present Broad Claims? Better Think Twice.

• Mock Mediation


Committee Meetings* |3:30 – 5:30 PM


IP Practice in Latin America |3:30 - 4:30 PM

Salon de Fiesta 12

We will hold a committee business meeting to discuss the planning for our upcoming committee delegation trip to Lima, Peru, and Bogotá, Colombia.10

Committee Meetings* (continued)


IP Practice in the Far East |3:30 – 4:30 PM

Salon de Fiesta 13

We will discuss our upcoming April 2016 delegation trip to Korea and Indonesia. We will also discuss proposals and plans for our India Subcommittee.

Legislative Committee (Committee Members Only)

Salon de Fiesta 11

The committee on Legislation will meet to discuss its ongoing analysis of pending federal legislation and any new issues that arise.

 AIPLA Fellows (Committee Members Only) |4:30 - 5:30 PM

Salon de Fiesta 11

IP Practice in Japan Committee Meeting

      Frank Capra C

Our committee meeting will feature a presentation from the JPO/USPTO on a new Collaborative Search Project (CSP) that is being implemented to enhance patent office efficiency and quality. Following the presentation (time permitting), there will also be a brief business meeting for the committee, including discussion of the April Japan trip.

Patent Law

Salon de Fiesta 12

All welcome. Join the Committee as we discuss the recent and planned activities of the committee and its subcommittees including programming, newsletter, § 101, § 112, and other patent law issues. Anyone seeking to get involved is encouraged to attend.

Public Education

Salon de Fiesta 13


 Friday, January 29

 Committee Business Meetings |7:00 – 9:00 AM  

Women in IP Law Committee    (Breakfast Meeting) |7:00 – 9:00 AM 
Frank Capra D & E
Sponsored by: Thomson Reuters
 Collaboration of organizations can offer additional benefits to members of the Women in IP Law Committee. A panel will discuss the importance and advantages of collaboration among select organizations (e.g., AIPLA Women in IP Law Committee and USPTO), current opportunities for such collaboration, and new ways these organizations can work together to achieve common goals.
 IP Law Associations  (Committee Members Only) |8:00 - 9:00 AM
Salon de Fiesta 11
The committee will hold a short business meeting to plan future activities including the Roundtables with local-regional associations to be held in Spring/Summer 2016
Professionalism and Ethics  (Committee Members Only)
Salon de Fiesta 12
Plenary Session | 9:15 AM – 12:00 PM
 Salon de Flores 4-5
The IPR Hurdle: What Patent Owners Can Do to Retain Enforceable Patent Rights
       Moderator: Eldora L. Ellison, Ph.D., Sterne Kessler Goldstein & Fox, PLLC, Washington, DC (Bio)
This session will include in-house counsel representing both biopharma and medical device/ high-tech industries, experienced IPR litigators, and a former APJ judge, to explore IPRs from a patent owner’s perspective. We will discuss how to prepare a patent application with an eye towards a potential IPR challenge, the best strategies for defeating an IPR challenge once initiated, how to juggle ongoing a parallel litigation with the IPR, and the lessons learned by patent owners after the first three years of PTAB reviews. After the break, we will discuss how the patent owner can position themselves for life after the IPR, including strategies for utilizing continuation and reissue applications.
Strategies for Defending an IPR—What’s Working and What’s Not Working
  • Justin J. Oliver, Fitzpatrick Cella Harper & Scinto, Washington, DC ( Paper)
Corporate Perspectives on Best Strategies  for IPRs in the Medical Device/ High-Technology Areas
  •   David P. Ruschke, Chief Patent Counsel, Medtronic CardioVascular, Santa Rosa, CA (Bio)
 Views from the Bench—Insight from a Former PTAB Judge
Key Considerations and Best Strategies for Biopharma IPRs
  • Christopher Verni, Chief Intellectual Property Counsel, Sarepta Therapeutics, Cambridge, MA (Paper)
 Life During and After an IPR—How a Patent Owner Can Best Position Themselves for the Next Battle
  •  R. Danny Huntington, Rothwell Figg Ernst & Manbeck, PC, Washington, DC ( Bio, Paper)


Networking Break | 10:30- 11:00 AM

   Concurrent Tracks | 2:00 – 3:15 PM

  Track 1​
  Salon de Flores 4-5
 Secrets and Lies: The Role of Trade Secrets and Espionage in IP Affairs
    Moderator: John L. Lyon, Thomas|Horstemeyer, LLP,   Atlanta, GA (Bio)
The role of trade secrets as part of a company’s IP portfolio is becoming increasingly more important, and the information containing those trade secrets is more widely accessible—through internet breaches and otherwise—to the entire global community. Misappropriation of this IP is thus a bigger concern than ever before. This rise in trade secret importance has led to stronger protection and enforcement of these assets, from litigation to criminal investigation, including the use of the Economic Espionage Act. This session will explore the role of trade secrets and the various ways of tackling this issue on a global scale.
 How Enforcing a Trade Secret is  Different Than Enforcing a Patent
  • Blair M. Jacobs, Paul Hastings, LLP, Washington, DC (Bio, Paper)
The Role of the Economic Espionage Act in Combatting Misappropriation
  • Elizabeth A. Rowe, Professor of Law, Feldman Gale Term Professor in Intellectual Property, and Director, Program in Intellectual Property Law, University of Florida Levin College of Law, Gainesville, FL (Bio, Paper)
Global Perspective: Differences in Enforcing Trade Secrets in Different Regions of the World
  •  Marcela Trigo de Souza, Trench Rossi and Watanabe,  Rio de Janeiro, Brazil (Bio, Paper)
  Track 2
How to Survive Early Disposition when Litigating 101 Issues
     Moderator: Kenneth Parker, Haynes and Boone, LLP, Costa Mesa, CA (Bio, Paper)
This session will focus on recent decisions on patent eligibility and strategies patent owners can employ when facing § 101 challenges at the trial courts. We will explore the unique patent-eligibility challenges and trends facing business method patents, diagnostic or medical treatment patents, and software patents. In addition, we will discuss strategies that patent owners can advantageously apply to survive  § 101 challenges made during various stages of a case, including motions to dismiss, motions for summary judgment, and post-trial motions for judgment as a matter of law, and how to best address claim-construction issues.
Challenges and Trends Facing Business Method, Hardware and Software Patents
  •  Rouz Tabaddor, VP and Chief Intellectual Property Counsel, CoreLogic, Irvine, CA  (Bio, Paper)
 Challenges and Trends Facing Diagnostic and Medical Treatment Patents
  •  Frederick A. Tecce , McDermott Will & Emery, Washington, DC (Bio)
 Trial-Court Strategies and Procedural Tactics to Use When Facing § 101 Motions
  •  Jeffrey I.D. Lewis, Fried Frank Harris Shriver & Jacobson, LLP, New York, NY (BIo, Paper)
3:30 – 5:30 PM Committee Educational Sessions*
Electronic and Computer Law/Trade  Secret Law (Joint Session) (120 Minutes of CLE Requested)
 Salon de Flores 4-5
The program will address hot topics in data security, federal trade secrets legislation, and the interplay of trade secrets and patents for software related inventions.
Data Security for Lawyers: What You Need to Know
  • Dino Tsibouris, Tsibouris & Associates, LLP, Columbus, OH
3:30 – 5:30 PM Committee Educational Sessions* (continued)
Considerations for Patent Versus Trade Secret Protection for Software Post-“Alice”
  •  Anthony Sammi, Skadden Arps, New York, NY
The Defend Trade Secrets Act of 2015:   A Legislative Update and Primer on  Key Passages
  • John F. Marsh, Hahn Loeser & Parks LLP, Columbus, OH
Mergers and Acquisitions (120 Minutes of CLE Requested)
Salon de Flores 1-2
Beyond the Four Corners: Discussion of the Impact of the Choice of New York, Delaware, Texas, Illinois, and California Law in Contracts
        Introduction to choice of law provisions and comparative jurisdictional considerations
        Discussion of New York and Delaware law regarding key contractual provisions
        Discussion of Texas and Illinois regarding key contractual provisions
        Discussion of California law regarding key contractual provisions
  •  Carey C. Jordan, McDermott Will & Emery, Houston, TX Lacy Kolo, Squire Patton & Boggs, LLP, Washington, DC
3:30 - 5:30 PM Committee Meetings* 
 3:30 - 4:30 PM
 American Intellectual Property Law Education Foundation (AIPLEF)  (Foundation Trustees Only)
Salon de Fiesta 11
 Emerging Technologies
 Salon de Flores 3
 Harmonization Task Force/Patent Agents/ Patent-Relations with the USPTO  (Joint Meeting)
Salon de Flores 6-8
We will have presentations by invited USPTO officials and a hands-on workshop. Our meeting will reprise part of the joint committee meeting on the Global Dossier at the last Annual Meeting. The USPTO professional will talk generally about the Global Dossier and walk the attendees through the process of how to use it.
Standards and Open Source
Salon de Fiesta 12
Everyone is welcome. We plan to discuss potential topics for upcoming AIPLA meetings and the latest developments in the areas of standards and open source. Please join us.
 3:30 - 5:30 PM
Copyright Law/Diversity in IP Law/ Industrial Designs/Law Practice Management/Mentoring/New Lawyers/ Trademark Internet/Trademark Law/ Trademark Litigation/Trademark Treaties and International Law/TrademarkRelations with the USPTO (Joint Meeting and Reception)
Frank Capra D-E Reception Sponsored by: Fish & Richardson
 Have you wondered how to get more involved in AIPLA or how to network more effectively? Getting involved in a committee is a great way to organically network and build relationships in addition to impacting law and policy. Come find out how and start making connections today! And, please join us for a networking reception to immediately follow.
International Education| 4:30 - 5:30 PM
 Salon de Fiesta 11
The committee will meet to discuss upcoming planned webinars and other activities for 2016.
 USPTO Inter Partes Patent Proceedings
Salon de Fiesta 13
An unconventional look at PTAB statistics.  
 Saturday, January 30

Registration Open |7:30 AM – 12:00 PM ​

 (CLE information booth remains open until 1:00 PM) 


2017 Mid Winter Institute Planning Committee Meeting |10:00 – 11:30 AM 

 (Committee members only) 

Salon de Flores 1

Presidents Forum Hot Topics in IP Law |8:00 – 9:00 AM ​


Closing Plenary Session Paying the Piper: Fee Shifting in IP Litigation Outside the US |9:15 AM – 12:00 PM

 Salon de Flores 4-5

     Moderator: Angie M. Hankins, Director of Intellectual Property, Samsung Strategy & Innovation Center, Menlo Park, CA ( Bio)

 Making the Opponent Pick Up the Tab?  Changes and Limits in Major EU Countries

  • Peter Ruess, Arnold Ruess, Düsseldorf, Germany (Bio, Paper)


The Truth About Fee-Shifting and  Damages in South America

  • J. Ian Raisbeck, Raisbeck & Castro, Bogotá, Colombia Pros and Cons of Bringing Suit in  Major Asian Countries Kaoru Kuroda, Abe Ikubo & Katayama, Tokyo, Japan (Bio, Paper)

 Ethics: The Straight and Narrow of  Fee-Shifting in IP Litigation and Ethical Breakdowns on the Road to Exporting Intellectual Property ​ 

 Gotcha! Fee-Shifting in IP Litigation Can Trigger OED Ethics Investigation and USPTO Discipline
  • Michael E. McCabe, Jr., Funk & Bolton, PA, Baltimore, MD ( Bio, Paper)

Ethical Breakdowns on the Road to Exporting Intellectual Property

Roszel C. Thomsen II, Thomsen and Burke, LLP,  Baltimore, MD (Bio, Paper, Slid)


10:30 – 11:00 AM Networking Break


Networking Lunch  Main Lawn Wrap up your Mid-Winter Institute experience by networking with colleagues over lunch! | 12:00 – 1:30 PM _____________________________________________________________________________

Board of Directors Meeting Frank Capra A & B | 12:00 – 4:00 PM

Golf Tournament  Dunes Course (Shotgun Start) 12:30 – 5:00 PM

This par-72 Pete Dye-designed course offers traditional rolling links-style golf with Scottish and Irish flair, characterized by rolling mounds framing manicured fairways and thick rough. The course provides an invigorating round of golf against a backdrop of rugged mountain landscapes. Length, strength and finesse are the key to scoring well on this course, which has hosted the PGA Club Professional Championship, the PGA Tour Final Qualifying School, the California State Open and the Ladies NCAA Championship.

Golf fee is all inclusive except for clubs, shoes and caddy gratuity. Club rentals are $85 for Taylor Made (Arrow Burner metal woods with RSI 1 Irons & Taylor Made Ghost putter). You can wear sneakers or shoes without heels. Please note this is a nonmetal spike facility. Please email if you need to rent clubs, (also indicating if you are left or right handed and your gender). Payment for club rental will be billed to your room. To assist us in assigning golf pairings, please email your handicap to Pairings will be posted on-site prior to the tournament.

Price: $159 Tournament Golf Balls Sponsored by:  McAndrews Held Malloy, LTD

Awards Reception

 Following Tournament Salon de Flores Foyer & Veranda​ 



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