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2014 Mid-Winter Institute Session Materials

Go to the Cutting Edge: IP Strategies from Start-up to Going Global

January 29 - February 1, 2014

Sheraton Wild Horse Pass

Phoenix, AZ

 

Download all Session Material (13MB zip file, updated as of 1/29/2014)  

Wednesday Sessions

Why You Need a Total Global IP Strategy

Gone are the days when one could focus a business and its intellectual property solely on the United States. Experienced corporate counsel make the case for the necessity of a comprehensive IP strategy—from patents to copyrights to trademarks and from the pharmaceutical to construction to apparel industries.Then, we delve into ethical, bias and personal issues of substance abuse and work-life balance that are a part of today’s 24/7 IP practice.f a comprehensive IP strategy—from patents to copyrights to trademarks and from the pharmaceutical to construction to apparel industries.Then, we delve into ethical, bias and personal issues of substance abuse and work-life balance that are a part of today’s 24/7 IP practice.

 

​2:00 – 3:30 pm - Opening Plenary Session

The Essential Total Global IP Strategy

Moderator: Daniel R. Brownstone, Of Counsel, Fenwick & West LLP, San Francisco, CA (Bio)

The Global Reality: It’s an Integrated, Shrinking World

Global businesses must have a global IP strategy. In the healthcare industry, that means confronting complex issues raised by recent US Supreme Court decisions and the latest developments in emerging markets such as India, China and others.

Vineet Kohli, Senior Director of Patents, Ventana Medical Systems, Inc., Oro Valley, AZ (Bio,Paper)

If You Build It, They Will Come—Not Baseball Players, IP Lawyers

The construction industry—a hot bed of IP issues? Patented construction methods and copyrighted architectural designs are only some of the IP concerns for counsel in this essential part of our economy.

Scott Ryan, Executive Vice President, Global Partner Holdings LLC, Las Vegas, NV (Bio) (Paper, Slides

Protect This House! Building IP Protection for a Fitness Revolution

How did a sports apparel start-up build its brand through targeted, strategic IP protection? You may be surprised.

Cynthia Raposo, Vice President-Legal, Under Armour, Inc., Baltimore, MD (Bio) (Paper) (Slides)

3:30 – 5:30 pm Concurrent Track 1 - Cross-Cultural Communication, Elimination of Bias and Prevention of Substance Abuse

Moderator: Brad Donovan, Senior Counsel, Global Intellectual Property Services, Deere & Company, Moline, IL (Bio)

What’s Wrong with Me/Him/Her? Dealing with Substance Abuse in the Legal Profession

Unfortunately, addiction is a constant risk in our everdemanding legal profession. Hear what you should know about identifying, preventing and treating addiction and the effects of substance abuse.

Michael A. Sucher, Medical Director, Community Bridges, Inc., Scottsdale, AZ  (Bio, Paper 1, Paper 2, Slides)

Practicing Law from the Inside Out—Western Science and Eastern Techniques to Enhance Clarity and Compassion

A global IP practice demands striking a healthy balance between personal life and law. Learn how to better manage your time to maintain and deal with bias issues in everyday practice that can disrupt that necessary balance.

Alisa J. Gray, Shareholder, Tiffany & Bosco PA, Phoenix, AZ (Bio)

James A Fassold, Shareholder, Tiffany & Bosco PA, Phoenix, AZ (Bio) (Paper) (Slides)

 

3:30 – 5:30 pm Concurrent Track 2 - IP Ethics—Corruption, Bullying, Media, Clients, and the Public

Moderator: Doug Mullen, Assistant General Counsel - IP Aerospace, Honeywell, Phoenix, AZ (Bio)

Ethical Issues in Complying with the Foreign Corrupt Practices Act

Today’s multinational business environment places ethical obligations on attorneys that you should not ignore.

Stephen R. Martin, II, Managing Director, Baker McKenzie Consulting LLC, Washington, DC (Bio) (Slides)

“Carlos Danger” and Other Ethical Dangers Posed by Social Media

Social media can really help a business. But what about the ethical boundaries? Find out in this session.

Nicole France Stanton, Partner, Quarles & Brady LLP, Phoenix, AZ (Bio) (Paper, Slides)

When You Leap, Don’t Miss the Bar!— Patent Ethical Issues

Inequitable conduct continues to be a concern for all US patent practitioners. Learn about the latest developments and the ethical issues that result from charges of inequitable conduct.

Robert C. Faber, Partner, Ostrolenk Faber LLP, New York, NY (Bio) (Paper) (Slides)

Beyond the Schoolyard—Ethics Rules That Address Trademark Bullying

What is trademark bullying? Are there ethical rules that apply to trademark protection, and how do you protect against charges down the line?

Jason M. Vogel, Partner, Kilpatrick Townsend and Stockton LLP, New York, NY (Bio) (Paper)

 

 


 

 

Thursday Sessions

Essential IP Strategies for Evolving Technologies

Developing technology is essential to business success; so too is developing and protecting key intellectual property assets. The morning session focuses on IP issues for evolving technologies, as well as those facing growing companies. The afternoon workshops will dive into key topics in IP litigation, product clearance, IP portfolio development, and the world of financing new IP and technology.

 

8:30 am – 12:00 pm Plenary Session

Come hear newly appointed Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the US Patent and Trademark Office, and the challenges facing the Office.

IP Essentials for Incubating, Launching and Nurturing Emerging Technologies

Moderator: J. Michael Warner, Assistant General Counsel, Pfizer Inc., South San Francisco, CA (Bio)

Part I—Walk Before You Run: IP Building Blocks for Evolving Technologies

Lions, and Tigers and Bears, Oh My! Open Source Code, Cease and Desist Letters, and Import/Export Controls for New Technologies

We are not in Kansas anymore! Learn how to deal with the threats facing new technologies in today’s complex IP landscape.

Patrick McBride, Director, Patent Attorney— Global, Red Hat, Inc., Raleigh, NC

Think Strategy, Not Portfolio: from Start-up to Mid-Stage, the Value of a Global IP Strategy

Why should the growing  company look to the horizon not just the road ahead? Learn how to meet today’s IP challenges, while preparing for the  potential for going global.

Angela Dallas Sebor, Senior Director, Intellectual Property, GlobeImmune, Louisville, CO (Bio) (Paper)

For the New Company on the Block: How Cool Do You Want to Be?

Your products are new and need to gain public awareness. What are the branding strategies that will leverage the value of your trademark, what are the international considerations and how does social media play for you?

Meg Boulware, Partner, Boulware & Valoir, Houston, TX (Paper)

Part II—Hitting Your Stride: Commercializing Established Technology in a Globalized Market

In a Swamp Full of Alligators: How to Keep Your Company Focused and its Market Position on Track

The faster your technology advances and the faster your company grows, the more important your IP issues will  become. How will you get ahead of the curve?

Timothy J. Douros, Vice President, Chief Intellectual Property Counsel & Head of Litigation, Cubist Pharmaceuticals, Inc., Boston, MA (Paper)

Lessons Learned: Practical Approaches to Trademark Portfolio Management, Brand Protection, Licensing and Enforcement

Are there practical approaches to trademark portfolio management, brand protection, licensing and enforcement? Learn from the hard-won experience of an experienced in-house counsel.

Rob Doerfler, Senior Trademark Counsel, Harley Davidson USA, LLC, Milwaukee, WI

So You Think Your Company is Unstoppable: Tap into the Sea of Knowledge and Experience and Avoid Unnecessary Mishaps

How will you avoid repeating other’s mistakes? Hear what experience can offer a growing business headed toward IP hurdles.

Paul T. Parker, Partner, Perkins Coie LLP, Seattle, WA (Bio, Paper)

 


Speaker: TBD
12:30 – 2:00 pm - Luncheon and Association Business Meeting


 

 

2:00 – 3:30 pm Workshop Breakouts

Panels of very experienced in-house and outside counsel will lead hands-on, interactive workshops focusing on cutting-edge issues in IP litigation, product clearance, IP portfolio development, and conversion of IP into business deals. The setting is informal, give and take is encouraged, and you will leave with knowledge and tips that you can use in your everyday practice.

 

 

W1 - IP Litigation: David vs. Goliath—Can David Still Beat Goliath?

Join our experts to form a small company litigation strategy. Define the goals, evaluate the litigation options, and debate the best approach for a successful business plan against a big company utilizing the current state of the law and best practices.

Moderator: Michael N. Rader, Co-Chair, Litigation Practice Group, Wolf, Greenfield & Sacks, PC, Boston, MA (Paper)

Instructors:

Blair Jacobs, Partner, McDermott Will & Emery, Washington, DC (Bio) (Paper)

Vaishali Udupa, IP Litigation Counsel, Hewlett-Packard Company, Herndon, VA (Paper)

W2- Product Clearance Workshop for that Next Million (or Billion) Dollar Idea

WhipCo® has a great, sure-fire invention, but it uses elements that were known to others. Can they still be used without ending up with a cease and desist letter or worse? What is the risk and exposure? What to do, what to do? This session goes from soup-to-nuts...diligenceto- clearance…evaluation-to-strategy…court-to-market launch.

Moderator: Nancy Lambert, Director, Intellectual Property, Donaldson Company, Inc., Bloomington, MN (Paper for Workshop 2, Paper 2 for Wkshp 2)

Speakers:

Mike Boeve, Senior Patent/IP Attorney, Seagate Technology, LLC, Shakopee, MN (Bio)

Valerie Calloway, Chief Intellectual Property Counsel, Alltech, Inc., Nicholasville, KY (Bio)

Instructors:

Colene H. Blank, Assistant Chief Intellectual Property Counsel, 3M Innovative Properties Company, St Paul, MN            (Bio) , (Paper)

Adrian Eggen, Senior Patents Counsel, Philip Morris Products, SA, Neuchatel, Switzerland (Bio)

Rick Franzen, Principal Patent Counsel, Medtronic, Inc., Minneapolis, MN  (Bio)

W3 -  IP Portfolio Development: Developing a Meaningful Portfolio for a Growing Company

Help a small/emerging company develop its IP portfolio from the ground up. What are the best practices for identifying key inventions and growing a meaningful IP portfolio? Learn how to implement a successful strategy to build that portfolio, while managing costs and reaching its goals.

Moderator: C. Gregory Gramenopoulos, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC

Instructors:

Chuck Cappellari, Associate Vice President, Chief Intellectual Property Counsel, Gen-Probe Inc., San Diego, CA

Adam Eltoukhy, Legal Counsel, Palantir Technologies, Palo Alto, CA Nair Flores, Associate General Counsel, Patents, Facebook Inc., Menlo Park, CA (Bio)

Brian Carroll, General Counsel, Level Up  

W4 - IP Business Transactions: Financing for the Early Stage Business

A successful start-up needs to commercialize an exciting new technology developed by a large multinational corporation. How will you do the deal, representing the multinational corporation, investors in the new start-up, or the start-up’s management team? Develop strategies for company formation, licensing, exit, due diligence and key contractual terms, and lay it all out in the term sheet for the deal.

Moderator: Gary Marchant, Regents’ Professor and Lincoln Professor of Emerging Technologies, Law & Ethics, Faculty Director, Sandra Day O’Connor College of Law, Arizona State University, Tempe, AZ

Materials for workshop 4: Narrative, Example Agreements

Instructors:

Andrea Radosevich, Senior Counsel, Intellectual Ventures, Bellevue, WA

Amy Toro, Partner, Covington & Burling, LLP, San Francisco, CA 

3:30 – 5:30 pm Committee Expo— A World’s Fair of IP

AIPLA’s Committees provide dynamic leadership for AIPLA and the IP community. Their contributions are thought-leading and key to AIPLA’s recognized worldwide leadership in intellectual property law. AIPLA’s Committees also are remarkable in their eagerness to enlist your energy in their work—to your personal benefit and theirs. Come to a unique showcase of AIPLA’s Committees to learn more about their mission and accomplishments. Half of the Committees will be showcased today and half tomorrow.

After the showcase, join the Committees that catch your interest from 4:30–5:30 pm for a breakout Committee Group meeting.


 

Friday Sessions

IP Protection on a Global Stage

Established technologies moving to the international stage are exposed to theft and misuse. Navigating the complexities of international IP protections for that technology can be treacherous. The morning’s session focuses on IP protections for technology going global. The afternoon workshops explore the international side of key topics in IP litigation, product clearance, IP portfolio development and IP business deals.

 

9:00 am – 12:00 pm - Plenary Session - We’re Established...What Next Globally?

Part I—Protecting and Enforcing Your IP Globally

Moderator: Pamela R. Crocker, Senior Patent Counsel, The Vanguard Group, Valley Forge, PA (Bio)

Formulating a Global IP Plan

Outside counsel can have a unique perspective from working with many different clients. What does that perspective tell us about key factors for formulating a global IP strategy?

Joseph Melnik, Partner, Jones Day, Palo Alto, CA (Bio) (Paper)

Acquiring IP Internationally

Your global IP strategy may look beyond home-grown IP to acquiring IP through international acquisitions. What due diligence, transfer issues, valuation and other factors can affect those decisions?

Naomi Abe Voegtli, Vice President, Global Intellectual Property, SAP Labs China, Shanghai, Peoples’ Republic of China (Bio, Paper)

Licensing and Litigation Factors in Formulating a Global IP Plan

You have acquired international IP, now what do you do with it? Do you litigate or license? What are the concerns you should have with transactional litigation? What are some other strategic considerations?

Daniel McGlynn, Chief IP Counsel, EMCORE Corporation, Albuquerque, NM (Bio, Paper)

Part II—Guided Panel Discussion on Formulation and Execution of Real-World Global IP Plans across Industries

Join a lively, interactive discussion with a panel of speakers from leading companies across a variety of industries. Our speakers share their experiences in formulating and implementing a global IP plan.

Mark J. Gorman, Chief Patent Counsel, Smith & Nephew, Inc., Memphis, TN (Bio)

Mark Campagna, Litigation Counsel, Google, Inc., Mountain View, CA (Bio) (Paper)

Jeremy K. McKown, Assistant General Counsel— Patents, Johnson & Johnson, New Brunswick, NJ (Bio) (Paper)

 


Speaker: TBD
12:30 – 2:00 pm - Luncheon 

 


 

2:00 – 3:30 pm - Workshop Breakouts

Our expert panels move to the international stage in workshops on cutting-edge international IP litigation, product clearance, IP portfolio development and IP business deals. Participate in one of today’s workshops, give and take exchanges and take-aways that you can use in your everyday practice.

W1 -  IP Litigation: David vs. Goliath—David Has Struck, but Goliath Is Determined to Not Allow History to Repeat Itself

Join our experts in formulating the best litigation strategy for Big Company to respond to the recent attack by Small Company. Our experts will help lead the workshop in a debate taking into account current trends in both domestic and international IP law.

Moderator/Instructor: Michael N. Rader, Co-Chair, Litigation Practice Group, Wolf, Greenfield & Sacks, PC, Boston, MA (paper)

Instructors:

Niklas Ostman, Senior Director, IPG Licensing & Law, Microsoft Corporation, Redmond, WA

Asim Bhansali, Partner, Keker & Van Nest LLP, San Francisco, CA (Paper)

W2 - IP Mergers and Acquisitions Due Diligence Workshop: Not an Eleventh Hour Undertaking

In his after hours, Dr. Stan Lee developed Earwaxx, a headache cure using a blue-tooth based electrostimulator. Now, Dr. Lee has put his company, STIMCO, on the auction block. How do you sort out employee’s rights, marital estates, trade secrets, copyrights, trademarks, and the value of STIMCO? This session is designed to help you sort fact from fiction and align human nature with entrepreneurship.

Moderator: Nancy Lambert, Director, Intellectual Property, Donaldson Company, Inc., Bloomington, MN (Paper for Workshop 2, Paper 2 for Wkshp 2)

Speakers:

Rick Franzen, Principal Patent Counsel, Medtronic, Inc., Minneapolis, MN  (Bio)

Adrian Eggen, Senior Patents Counsel, Philip Morris Products, SA, Neuchatel, Switzerland (Bio)

Instructors:

Colene H. Blank, Assistant Chief Intellectual Property Counsel, 3M Innovative Properties Company, St Paul, MN (Bio) , (Paper)

Mike Boeve, Senior Patent/IP Attorney, Seagate Technology LLC, Shakopee, MN  (Bio)

Valerie Calloway, Chief Intellectual Property Counsel, Alltech, Inc., Nicholasville, KY  (Bio)

IP Portfolio Development: Maintaining a Meaningful Portfolio for an Established Company

Can you further develop and maintain a meaningful IP portfolio for an established company in a competitive marketplace? Discuss and share best practices for strategically leveraging and adapting an established portfolio to ever-changing business goals.

Moderator: C. Gregory Gramenopoulos, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC

Instructors:

Amy E. Hamilton, Vice President—Deputy General Patent Counsel, Eli Lilly and Company, Indianapolis, IN (Bio)

Soonhee Jang, Vice President and Chief IP Counsel, DuPont Industrial Biosciences, Palo Alto, CA

Brian J. Malm, Assistant General Counsel, AOL, Inc., Dulles, VA

John Mulgrew, Assistant General Counsel, Microsoft Corporation, Redmond, WA

IP Business Transactions: Tax and Finance for the Global/International IP Player

So you think that going global is simply an IP issue? Think again. In this workshop, wrestle with the complex interaction of IP, tax and finance that is at the center of often high-stakes international business deals and licensing campaigns. Leave with a foundation that will prepare you for the next big deal.

Moderator: Gary Marchant, Regents’ Professor and Lincoln Professor of Emerging Technologies, Law & Ethics, Faculty Director, Sandra Day O’Connor College of Law, Arizona State University, Tempe, AZ

Instructors:

Andrea Radosevich, Senior Counsel, Intellectual Ventures, Bellevue, WA

Amy Toro, Partner, Covington & Burling LLP, San Francisco, CA

3:30 – 5:30 pm - Committepm - Committee Expo— A World’s Fair of IP

Join us for the second half of our AIPLA Committee Showcase . Learn how these AIPLA Committees lead AIPLA and the IP community in cutting-edge, worldwide intellectual property law issues. After the showcase, join the Committees that catch your interest from 4:30–5:30 pm for a breakout Committee Group meeting.


 

Saturday Sessions

Enforcing Global IP Rights in Today’s Market

Enforcement of IP rights on the global stage is a challenge that every company must consider in today’s IP world. This morning’s session focuses on international IP enforcement issues: arbitration or litigation, how to pick your forum and issues, the impact on in-house counsel managing international litigation and ethical traps for the unwary when one leaves the US shores.

 

8:00 – 9:00 am - President’s Forum

With so much IP-related activity in the legislative and executive branches, learn what you need to know from inside the beltway.

9:00 am – 12:00 pm - Closing Plenary Session

Global IP Enforcement: Litigation Strategies, Dealing with Agreements, Protecting Communications and Ethics

Moderator: Adrian Eggen, Senior Patent Counsel, Philip Morris Products SA, Neuchatel, Switzerland (Bio)

Part I—Global Enforcement: Litigation on the International Stage

Alternatives to Standing Your Ground or Pistols at 20 Paces

Do you fight first and ask questions later? Argue your case before a court that does not speak your language or the basics of IP law? Public forum or private resolution? Learn about the arbitration and alternative dispute resolution terms that will advance your agreement strategies.

J. William Frank, III, Principal, Frank ADR, Racine, WI (Bio)(Paper) (Paper2) (Slides)

Opportunities and Pitfalls

How do you choose where to file? What are the presuit, discovery and case management issues in a global environment? Hear from experienced in-house counsel on central concerns for litigation on a global scale.

Richard L. Rainey, Executive Counsel, IP Litigation, General Electric Company, Fairfield, CT (Bio) (Paper)

Strategies for Negotiation, Licensing and Settlement of Global Disputes

Learn how resolving global disputes differs from resolving disputes in the US. What settlement and licensing strategies can be effective in an international setting when there is a dispute?

Colene H. Blank, Assistant Chief Intellectual Property Counsel, 3M Innovative Properties Company, St. Paul, MN (Bio) , (Paper)

Part II—Global IP Enforcement: Ethics

Inadvertently Practicing Law in Foreign Jurisdictions 

Do attorneys risk the unauthorized practice of law when they conduct business or give advice in foreign locations or via the Internet? Learn about the issues that will keep you out of ethical hot water.

Amar Sarwal, Vice President & Chief Legal Strategist, Association of Corporate Counsel, Washington, DC (Paper)

Challenges of Global Ethical IP Enforcement from a Corporate Perspective

How well do you understand the ethical challenges that in-house counsel face in international IP litigation? Learn more about the practical concerns of issuing and monitoring ligation holds, managing internal and external communications, preparing senior management, and what to do when intracorporate disputes erupt and individuals or factions take conflicting positions.

Bernard F. Plantz, General Counsel, Pharmaceuticals Group, Johnson & Johnson, New Brunswick, NJ (Bio) (Paper) (Slides)

Patent Agents Communications Overseas—Are They Protected from Forced Disclosure during Litigation?

The attorney-client privilege shields any legal advice from your foreign counsel, right? Navigate with experienced counsel the uncertainties and ethical concerns of protected communications between a client and foreign agents, many of whom are not “lawyers,” even though they provide legal advice.

Steven Garland, Partner, Smart & Biggar/Fetherstonhaugh, Ottawa, Ontario, Canada (Bio) (Paper)


 Wrap up your 2014 Mid-Winter Institute experience by networking with colleagues over lunch.
12:00 – 2:00 pm Networking Lunch