Library: 2016 Mid-Winter Institute
In This Section
2016 Mid-Winter Institute Papers & Audio
The Wide Wide World of Designs: Best Practices for the Procurement of Design Patents Across Borders and in the US
January 27th, 2016
2016 Mid-Winter Institute
(1) Hands–on With the Hague Agreement—The Nuts and Bolts of Applying for an International Registration of Industrial Designs; (2) Considerations for Making Your Design Patents/Industrial Design Registrations Enforceable in Multiple International Jurisdictions; and (3) Advanced Topics on US Design Patent Prosecution—Strategies, Common Pitfalls, Tie–In to Other IP, Inter Partes Review, and Lessons from Litigation.
- Moderator — Richard S. Stockton, Banner & Witcoff, Ltd., Chicago, IL
- Hands–on With the Hague Agreement—The Nuts and Bolts of Applying for an International Registration of Industrial Designs — Grégoire Bisson, World Intellectual Property Organization, Geneva, Switzerland
- Considerations for Making Your Design Patents/Industrial Design Registrations Enforceable in Multiple International Jurisdictions — Dr. Henning Hartwig, Bardehle Pagenberg Partnerschaft, Munich, Germany
- 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
Across The (IP) Universe: Developing a Diverse IP Portfolio Including Trademarks, Trade Secrets and Copyrights In Today's Changing Protection Eligibility Landscape
January 27th, 2016
2016 Mid-Winter Institute
(1) 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; (2) Power Tools! How Design Patents, Product Configuration/Interface–Trademarks and Copyrights Should be Your Client's First Line of Defense, Not an Afterthought; and (3) Future–Proofing: How Trade Secrets, Global Patent Portfolios and Copyright Diversify Portfolio Protection Against Risk of Policy Change.
- Moderator — Mieke K. Malmberg, Glaser Weil Fink Howard Avchen & Shapiro, LLP, Los Angeles, CA
- 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
- 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
- Future–Proofing: How Trade Secrets, Global Patent Portfolios and Copyright Diversify Portfolio Protection Against Risk of Policy Change — Wayne Sobon, Inventergy, Inc., Campbell, CA
Maximizing Market Monetization—How to Build an Enforceable Portfolio to Maximize Licensing Opportunities in View of US Exhaustion
January 27th, 2016
2016 Mid-Winter Institute
(1) Overview of Exhaustion and Re–Importation Case Law; (2) Patent Exhaustion Issues in the Pharmaceutical Industry; and (3) Patent Exhaustion Issues in the Semiconductor Industry.
- Moderator — John A. Burtis, Ecolab Corporation, Eagan, MN
- Overview of Exhaustion and Re–Importation Case Law — Sarah Wasserman Rajec, William and Mary Law School, Williamsburg, VA
- Patent Exhaustion Issues in the Pharmaceutical Industry — Jeremy McKown, Johnson & Johnson, New Brunswick, NJ
- Patent Exhaustion Issues in the Semiconductor Industry — Burch A. Harper, Rambus Inc., Sunnyvale, CA
Producers, Providers and Pirates, Oh My! Enforcing Copyright in the Digital Millennium
January 28th, 2016
2016 Mid-Winter Institute
(1) It's Mine! The Fight Against Pirates by Content Creators and Producers; (2) What is Safe? Examining the Roles and Responsibilities in the US of ISPs and Online Platforms Providing Means to Support Piracy; and (3) An International Perspective to Enforcing Copyright in Major Works Online and at the Provider Level.
- Moderator — Elizabeth Valentina, Fox Entertainment Group, Inc., Los Angeles, CA
- It's Mine! The Fight Against Pirates by Content Creators and Producers — Gabriel D. Miller, Paramount Pictures, Hollywood, CA
- What is Safe? Examining the Roles and Responsibilities in the US of ISPs and Online Platforms Providing Means to Support Piracy — F. Jay Dougherty, Loyola Law School, Los Angeles, CA
- An International Perspective to Enforcing Copyright in Major Works Online and at the Provider Level — Michael R. Weatherley, Motion Picture Licensing Corporation, Los Angeles, CA
[Alternative Dispute Resolution/Patent Litigation] Mediation as an Effective Tool to Resolve Patent Disputes
January 28th, 2016
2016 Mid-Winter Institute
(1) The Advantages of Mediation over Alternative Forms of Dispute Resolution; (2) How to Avoid the Potential Pitfalls of Mediation; (3) Factors to Consider in Selecting a Mediator and the Timing of Mediation; (4) Preparing for a Successful Mediation and Aligning the Parties Expectations; and (5) Forms of Mediation (e.g. mediation of parts of disputes, individual issues, discovery issues).
- Moderator — James M. Amend, JAMS, Chicago, IL
- Panel — The Honorable James Holderman (Retired), JAMS, Chicago, IL, Patrick J. Flinn, Alston & Bird, LLP, Atlanta, GA, John M. Delehanty, Mintz Levin Cohn Ferris Glovsky and Popeo, PC, New York, NY, Tony Baca, Hewlett-Packard Company, Boise, ID
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
January 28th, 2016
2016 Mid-Winter Institute
(1) The Ins and Outs of Protecting Non–typical Trade Dress; (2) Survey Says…Yes! Challenges Confronted, Lessons Learned, and Practice Pointers for Product Design Trade Dress Surveys in Litigation; and (3) How to Protect Your Trade Dress in Europe.
- Moderator — Troy Grabow, Cabeau, Inc., Woodland Hills, CA
- The Ins and Outs of Protecting Non–typical Trade Dress — YooSun Park, The Coca-Cola Company, Atlanta, GA
- Survey Says…Yes! Challenges Confronted, Lessons Learned, and Practice Pointers for Product Design Trade Dress Surveys in Litigation — Michael J. Harris, Banner & Witcoff, Ltd., Chicago, IL
- How to Protect Your Trade Dress in Europe — Markus Gampp, DLA Piper UK, LLP, Munich, Germany
(A) ITC—A Brave New World: Obtaining Exclusion Orders Enforcing Trademarks, Copyrights and Essential Patents; and (B) Litigating Standards Essential Patents at the ITC: Practice and Policy
January 28th, 2016
2016 Mid-Winter Institute
(1) The ITC as an Essential Tool in the IP Enforcement Tool Kit [An introduction to bringing a claim for infringement or misappropriation, at the US International Trade Commission (ITC): relief, procedure,, elements of a claim under § 337, evidentiary standard, discovery,, testimony, and differences from Federal Courts.]; (2) Cranes, Trains, and Digital Goods: Trade Secret and Copyright Developments at the ITC; (3) It's Not Just About Patents: Trademark, Copyright, and Trade Secret Litigation at the ITC; and (4) Litigating Standards Essential Patents at the ITC: Practice and Policy [Litigating patents essential to implementing technical industry standards, (standard essential patents or SEPs) presents unique issues. The 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.].
- Moderator — James B. Altman, Foster Murphy Altman & Nickel, PC, Washington, DC, David W. Long, Kelley Drye & Warren, LLP, 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 US International Trade Commission (ITCand: relief, procedure,, elements of a claim under § 337, evidentiary standard, discovery,, testimony, and differences from Federal Courts.] — Sheryl Koval Garko, Fish & Richardson, Boston, MA
- Cranes, Trains, and Digital Goods: Trade Secret and Copyright Developments at the ITC — Stefan M. Mentzer, White & Case, LLP, New York, NY
- It's Not Just About Patents: Trademark, Copyright, and Trade Secret Litigation at the ITC — Gary J. Rinkerman, Drinker Biddle & Reath, LLP Washington, DC
- Litigating Standards Essential Patents at the ITC: Practice and Policy [Litigating patents essential to implementing technical industry standards, (standard essential patents or SEPsand presents unique issues. The 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, US International Trade Commission, Washington, DC, Dean A. Pinkert, US International Trade Commission Washington, DC
[Anti–Counterfeiting and Anti–Piracy International Trade Commission] IP Border Enforcement by US Customs and Border
January 28th, 2016
2016 Mid-Winter Institute
Protection 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: (1) Overview of Recordation of Trademarks and Copyrights; (2) Border Enforcement of Recorded Trademarks and Copyrights; (3) Border Enforcement Against Imports of Unlawful Gray–market Goods; (4) Enforcement of Exclusion Orders issued by the US International Trade Commission Under § 337; and (5) How IP Rights Holders Can Interact with Customs Officials to Maximize the Protection of Their IP Rights.
- Moderator — Gail Podolsky, Carlton Fields Jorden Burt, Atlanta, GA
- Panel — Charles R. Steuart, US Customs and Border Protection, Washington, DC, Juan J. Porras, US Customs and Border Protection, Laredo, TX, Paul Pizzeck, US Customs and Border Protection, New Orleans, LA
[Biotechnology/Chemical Practice/Licensing and Management of IP Assets] IP 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
January 28th, 2016
2016 Mid-Winter Institute
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. Overview and Organization of the IP Functions within Customs: (1) Entrepreneurship or Inventorship: Which One is “It”?; (2) A View from the Discovery Phase: What Your Scientists Really Need to Understand; (3) Calling All Investors: Do Your Homework and Read the Fine Print; (4) So You Want to Present Broad Claims? Better Think Twice; and (5) Mock Mediation.
- Moderator — D.C. Toedt, Law Office of D.C. Toedt III, Houston, TX
- Panel — Lisa Haile, DLA Piper, LLP (US) San Diego, CA, Cassie Kelly, UCI Applied Innovation, Invention Transfer Group Irvine, CA, Robert Titus, Eli Lilly and Company, Indianapolis, IL, J. Michael Warner, Pfizer Inc. South, San Francisco, CA
[Mergers and Acquisitions] Beyond the Four Corners: Discussion of the Impact of the Choice of New York, Delaware, Texas, Illinois, and California Law in Contracts
January 29th, 2016
2016 Mid-Winter Institute
(1) Introduction to choice of law provisions and comparative jurisdictional considerations; (2) Discussion of New York and Delaware law regarding key contractual provisions; (3) Discussion of Texas and Illinois regarding key contractual provisions; and (4) Discussion of California law regarding key contractual provisions.
- Moderator — Carey C. Jordan, McDermott Will & Emery, Houston, TX
- Panel — Lacy Kolo, Squire Patton & Boggs, LLP, Washington, DC, Ivan Rothman, Squire Patton & Boggs, LLP, San Francisco, CA
Joint Session of the Electronic and Computer Law & Trade Secret Law Committees
January 29th, 2016
2016 Mid-Winter Institute
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. Topics: (1) Data Security for Lawyers: What You Need to Know; (2) Issues for In-House Counsel Data Security; (3) Considerations for Patent Versus Trade Secret Protection for Software Post–“Alice”; and (4) The Defend Trade Secrets Act of 2015: A Legislative Update and Primer on Key Passages.
- Moderator — Michael Dunnam, Baker Hostetler, Philadelphia, PA
- Data Security for Lawyers: What You Need to Know — Kelly Kay, Lyft, San Francisco, CA
- Issues for In-House Counsel Data Security — Dino Tsibouris, Tsibouris & Associates, LLP, Columbus, OH
- Considerations for Patent Versus Trade Secret Protection for Software Post–“Alice” — P. Anthony Sammi, Skadden Arps, Slate Meagher & Flom, LLP, 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
Secrets and Lies: The Role of Trade Secrets and Espionage in IP Affairs
January 29th, 2016
2016 Mid-Winter Institute
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. Topics: (1) How Enforcing a Trade Secret is Different Than Enforcing a Patent; (2) The Role of the Economic Espionage Act in Combatting Misappropriation; and (3) Global Perspective: Differences in Enforcing Trade Secrets in Different Regions of the World.
- Moderator — John L. Lyon, Thomas|Horstemeyer, LLP, Atlanta, GA
- How Enforcing a Trade Secret is Different Than Enforcing a Patent — Blair M. Jacobs, Paul Hastings, LLP, Washington, DC
- The Role of the Economic Espionage Act in Combatting Misappropriation — Elizabeth A. Rowe, University of Florida Levin College of Law, Gainesville, FL
- 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
How to Survive Early Disposition when Litigating 101 Issues
January 29th, 2016
2016 Mid-Winter Institute
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. Topics: (1) Challenges and Trends Facing Business Method, Hardware and Software Patents; (2) Challenges and Trends Facing Diagnostic and Medical Treatment Patents; and (3) Trial–Court Strategies and Procedural Tactics to Use When Facing § 101 Motions.
- Moderator — Kenneth Parker, Haynes and Boone, LLP, Costa Mesa, CA
- Challenges and Trends Facing Business Method, Hardware and Software Patents — Rouz Tabaddor, CoreLogic, Irvine, CA
- Challenges and Trends Facing Diagnostic and Medical Treatment Patents — Frederick Tecce, Panitch Schwarze Belisario & Nadel, LLP, Philadelphia, PA
- 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
The IPR Hurdle: What Patent Owners Can Do to Retain Enforceable Patent Rights
January 29th, 2016
2016 Mid-Winter Institute
This session will include in–house counsel representing both biopharma and medical device/high–tech industries, experienced IPR litigators, and a former APJ, 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. Topics: (1) Strategies for Defending an IPR—What's Working and What's Not Working; (2) Corporate Perspectives on Best Strategies for IPRs in the Medical Device/High–Technology Areas; (3) Views from the Bench—Insight from a Former PTAB Judge; (4) Key Considerations and Best Strategies for Biopharma IPRs; and (5) Life During and After an IPR—How a Patent Owner Can Best Position Themselves for the Next Battle.
- Moderator — Eldora L. Ellison, Ph.D., Sterne Kessler Goldstein & Fox, PLLC, Washington, DC
- Strategies for Defending an IPR—What's Working and What's Not Working — Justin J. Oliver, Fitzpatrick Cella Harper & Scinto, Washington, DC
- Corporate Perspectives on Best Strategies for IPRs in the Medical Device/High–Technology Areas — David P. Ruschke, Medtronic CardioVascular, Santa Rosa, CA
- Views from the Bench—Insight from a Former PTAB Judge — Scott E. Kamholz, Foley Hoag, LLP, Washigton, DC
- Key Considerations and Best Strategies for Biopharma IPRs — Christopher Verni, Sarepta Therapeutics, Cambridge, MA
- 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
Closing Plenary: (A) Paying the Piper: Fee Shifting in IP Litigation Outside the US; and (B) Ethics: The Straight and Narrow of Fee–Shifting in IP Litigation and Ethical Breakdowns on the Road to Exporting Intellectual Property
January 30th, 2016
2016 Mid-Winter Institute
(1) Making the Opponent Pick Up the Tab? Changes and Limits in Major EU Countries; (2) The Truth About Fee–Shifting and Damages in South America; (3) Pros and Cons of Bringing Suit in Major Asian Countries; (4) Gotcha! Fee–Shifting in IP Litigation Can Trigger OED Ethics Investigation and USPTO Discipline; and (5) Ethical Breakdowns on the Road to Exporting Intellectual Property.
- Moderator — Angie M. Hankins, Samsung Strategy & Innovation Center, Menlo Park, CA
- Making the Opponent Pick Up the Tab? Changes and Limits in Major EU Countries — Peter Ruess, Arnold Ruess, Düsseldorf, Germany
- 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
- Gotcha! Fee–Shifting in IP Litigation Can Trigger OED Ethics Investigation and USPTO Discipline — Michael E. McCabe Jr., Funk & Bolton, PA, Baltimore, MD
- Ethical Breakdowns on the Road to Exporting Intellectual Property — Roszel C. Thomsen II, Thomsen and Burke, LLP, Baltimore, MD