BULLETIN
American Intellectual Property Law Association
2010 Spring Meeting Issue New York, NY
BULLETIN .
OFFICERS 2009 – 2010 Alan J. Kasper. .......................................................................................................................................................... President 2100 Pennsylvania Avenue, NW, Washington, DC 20037 David W. Hill....................................................................................................................................................President-Elect 901 New York Avenue, NW, Washington, DC 20001 William G. Barber.................................................................................................................................... First Vice-President 600 Congress Avenue, Suite 2120, Austin, TX 78701 Jeffrey I.D. Lewis.................................................................................................................................. Second Vice-President 1133 Avenue of the America, New York, NY 10036 Teresa Stanek Rea............................................................................................................................Immediate Past President 1001 Pennsylvania Avenue, NW, Washington, DC 20004 Jonathan W. Richards................................................................................................................................................ Secretary 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111 Kenneth N. Nigon. ..................................................................................................................................................... Treasurer P.O. Box 980, Valley Forge, PA 19482 Q. Todd Dickinson.......................................................................................................................................Executive Director 241 18th Street, South, Suite 700, Arlington, VA 22202
Board of Directors (Terms Expire October 2010) Pamela A. Crocker . ................................................................................................... 343 State Street, Rochester, NY 14650 Denise DeFranco......................................................................... 55 Cambridge Parkway, Suite 700, Cambridge, MA 02142 Amy E. Hamilton............................................................... Lilly Corporate Center, Drop Code 1104, Indianapolis, IN 40205 Anthony M. Zupcic .....................................................................1290 Avenue of the Americas, New York, NY 10104-3800 (Terms Expire October 2011) Robert W. Clarida.......................................................................1133 Avenue of the Americas, New York, NY 10036-6799 Elizabeth Ann Morgan......................................................................... 260 Peachtree Street, Suite 1601, Atlanta, GA 30303 Naomi Abe Voegtli....................................................................................................349 Wine Circle, Blountville, TN 37617 Mark L. Whitaker. ........................................................................ 1299 Pennsylvania Avenue, NW, Washington, DC 20004 (Terms Expire October 2012) Brian B. Darville. ............................................................................. 211 N. Union Street, Suite 100, Alexandria, VA 22314 Mercedes K. Meyer. ...............................................................1500 K Street, NW, Suite 1100, Washington, DC 20005-1209 Philip T. Petti. ......................................................................................................... 550 W. Adams Street, Chicago, IL 60661 Michael W. Piper....................................................................................5601 Granite Parkway, Suite 750, Plano, TX 75024
in this issue...
Cover photos courtesy of Empire Force Events, Inc. & Richard Burgess.
AIPLA
Published from the Association Office AIPLA 241 18th Street South, Suite 700 Arlington, VA 22202 (p) 703.415.0780 (f) 703.415.0786 Web: www.aipla.org Domestic Subscription Rate: $60.00 per year Foreign Subscription Rate: $70.00 ($20.00 per copy)
President’s Page...............................................................................................................................................3 Board of Directors Meeting Dates....................................................................................................................11 Association Activities ...................................................................................................................................12 Membership Applications.................................................................................................................................12 News of Members ...........................................................................................................................................17 Thirty-Seventh Annual Giles Sutherland Rich Memorial Moot Court Competition...........................................18 61st Annual Intel International Science and Engineering Fair..........................................................................19 C.L.E. Update ..................................................................................................................................................20 Future Meetings Calendar................................................................................................................................22 2010 Annual Meeting Flyer...............................................................................................................................25 Copyright Office Affairs.....................................................................................................................................28 Thank You to Sponsors....................................................................................................................................34 Photo Pages.....................................................................................................................................................36 Committee Reports: Alternative Dispute Resolution.........................................................................................................................46 Amicus..............................................................................................................................................................46 Anti-Counterfeiting and Anti-Piracy..................................................................................................................50 Antitrust............................................................................................................................................................51 Biotechnology...................................................................................................................................................51 Chemical Practice............................................................................................................................................51 Copyright Law..................................................................................................................................................52 Corporate Practice...........................................................................................................................................53 Diversity in IP Law............................................................................................................................................58 Education.........................................................................................................................................................58 Electronic and Computer Law..........................................................................................................................60 Emerging Technologies....................................................................................................................................61 Fellows.............................................................................................................................................................62 Industrial Designs.............................................................................................................................................63 International and Foreign Law..........................................................................................................................63 International Education.....................................................................................................................................64 International Trade Commission (ITC).............................................................................................................65 Inventor Issues.................................................................................................................................................65 IP Law Associations..........................................................................................................................................66 IP Practice in Europe........................................................................................................................................67 IP Practice in Japan..........................................................................................................................................67 IP Practice in Latin America..............................................................................................................................69 IP Practice in the Far East................................................................................................................................69 Law Practice Management...............................................................................................................................70 Law Students....................................................................................................................................................70 Licensing and Management of IP Assets.........................................................................................................71 Membership......................................................................................................................................................72 Mentoring.........................................................................................................................................................72 Online Programs..............................................................................................................................................73 Patent Agents...................................................................................................................................................76 Patent Law.......................................................................................................................................................76 Patent Litigation................................................................................................................................................77 Patent Relations with the USPTO....................................................................................................................77 PCT Issues.......................................................................................................................................................78 Professional Programs.....................................................................................................................................78 Professionalism and Ethics..............................................................................................................................79 Public Appointments.........................................................................................................................................79 Public Education...............................................................................................................................................79 Special Committee on the FDA........................................................................................................................81 Special Committee on Genetic Resources, Traditional Knowledge, and Folklore...........................................82 Special Committee on Legislation....................................................................................................................82 Special Committee on Mergers and Acquisitions.............................................................................................83 Special Committee on National IP Practitioner Associations Worldwide..........................................................83 Special Committee on Standards and Open Source........................................................................................84 Trade Secret Law.............................................................................................................................................85 Trademark Internet...........................................................................................................................................85 Trademark Law.................................................................................................................................................86 Trademark Litigation.........................................................................................................................................88 Trademark Treaties and International Law.......................................................................................................88 Trademark-Relations with the USPTO.............................................................................................................88 USPTO Inter Partes Patent Proceedings.........................................................................................................89 Women in IP Law.............................................................................................................................................90 Young Lawyers.................................................................................................................................................91
president’s page by: Alan J. Kasper, AIPLA President
As my term as President all too rapidly draws to an end, the exciting IP universe that we are privileged to observe, participate in and, to some measure influence, seems to be evolving in some quarters at a blistering pace while in others is moving with cautious deliberation or, from some perspectives, not at all. New stars suddenly appear, while others that burned brightly and served reliably for years, begin to fade or at least change their sphere of influence. The promised drama of some evolutionary events, like Patent Law Reform, remains just that—a promise—while the USPTO transformation under Director David Kappos continues its remarkable pace, while holding firm to its commitment to enhanced quality, performance and transparency. Perhaps the most significant changes over the past few months can be found in the courts. A most noteworthy event is the retirement of the Hon. Paul R. Michel from his position of Chief Judge of the US Court of Appeals for the Federal Circuit. Fortunately, his passion and commitment to the sound development of an optimal Intellectual Property system in the US and globally will not be lost, as he continues to champion a strong role for the judiciary in shaping IP law and practice and to advocate for a vibrant and effective IP system. His successor as Chief Judge, Hon. Randall R. Rader, is no stranger to AIPLA and to the IP world, as he has been most generous in the past to offer his insights and perspectives at events around the globe. The move of the Hon. H. Robert Mayer to senior status after many years of dedicated service now leaves three vacancies on the Court. Consistent with its White Paper published late last year, AIPLA supported the naming of respected Federal District Court Judge Kathleen O’Malley of Ohio to fill the vacancy created when the Hon. Alvin Schall took senior status on the Court. AIPLA also has voiced its support for Edward DuMont, a respected and experienced advocate before the US Supreme Court, to fill one of the vacancies on the Court. As to the business of the Court, the Federal Circuit will find itself addressing several significant issues in the remaining months of 2010, including those related to inequitable conduct in Therasense v. Becton Dickinson and the appropriate standard of evidence required to commence a contempt proceeding and to ultimately establish contempt in Tivo v. EchoStar. The long-awaited Supreme Court decision in Bilski v. Kappos now has arrived, leaving intact much of the broad scope of patentable subject matter advocated by AIPLA in its amicus brief, including business methods. AIPLA was among the first to report the details of the decision in AIPLA Direct, and to offer an online program that featured a broad spectrum of experts from the ranks of litigation, academia, IP policy and the judiciary. AIPLA’s voice before the Supreme Court is not limited to patent issues, as shown by our recent filing in Costco v. Omega urging clarification of the copyright first sale doctrine in the context of unauthorized imports.
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president’s page (continued)
The USPTO transformation process has proceeded at a relentless pace, with new initiatives pouring out of the Office across a broad spectrum of issues. In May, AIPLA participated in two USPTO roundtables on “patent quality,” featuring participants from industry, POPA and private practitioners, on opposite coasts. The roundtables were focused on the meaning of “quality” and on the ways that the Office, users and the public can cooperate to ensure the highest quality for issued patents. In June, proposals were made for a “three track prosecution” system in which applicants can choose among a fast track, a deferred-type and a normal examination. June also saw a request for comments on the need for a change in the long standing practice involving restrictions of inventions during prosecution. Most significant, however, is the introduction in July of the draft USPTO FY 2010-2015 Strategic Plan that bundles all of the diverse proposals under a single umbrella that is focused on three major mission-focused goals: (1) optimizing patent quality and timeliness; (2) optimizing trademark quality and timeliness; and (3) establishing global and domestic leadership to improve intellectual property policy, protection and enforcement worldwide. These external performance goals are coupled with a management goal of attaining organizational excellence based on optimized training, meaningful measured performance, improved IT infrastructure and tools and improved employee and stakeholder relations. Holding true to the promise of greater transparency, the Strategic Plan sets out in detail a USPTO Business Scorecard and Performance Metrics that identify meaningful criteria for achieving the stated goals so that the USPTO vision of “Leading the Nation and the World in Intellectual Property Protection and Policy” can be realized. AIPLA will study the proposed Scorecard and Metrics and, where appropriate, will recommend their modification or supplementation so that the best system for all stakeholders can be achieved. Your own input on these and other issues is most welcome and can be expressed and discussed through the AIPLA LinkedIn group and the AIPLA Facebook page. Speaking of AIPLA’s web presence, AIPLA already has implemented major changes to its database and by the Annual Meeting will have announced the completely new face of AIPLA on the web. The all new AIPLA Website has been developed over the past two years with your comments and suggestions in mind It will include a new AIPLA Learning Center using e-Classroom functionality, an online store, a revised job center, and completely revamped Committee Support Resource, which will use SharePoint technology to help with committee and other group collaboration on documents, calendars and programs. Look for the announcements about the new AIPLA Website! The international focus of my Presidency has continued into the spring with AIPLA’s hosting of the Thirteenth Industry Trilateral Meeting in Washington DC, followed by a full day Working Group session with representatives of the Trilateral Offices. Significant progress was made with regard to the definition of a Common Citation Document that would be useable by Offices, applicants and third parties to cite prior art, and the implementation of a common prior art portal that would permit global access to art pertinent to an entire family of related applications world-wide. Other issues
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president’s (continued)
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discussed included progress and plans with respect to the ten Foundation Projects of the IP5, the implementation of PPH on a broader scale and the Common Application Format. In May, AIPLA hosted a one-day users’ meeting on the PPH, at which three of the top five users of the PPH system participated and voiced their strong support for the program on the basis of statistics demonstrating significant advantages to users. The latter part of June saw the successful conclusion of an AIPLA/FICPI sponsored Colloquium on the Backlog Crisis in Edinburgh, Scotland. Approximately 100 executives from Offices large and small, user groups, industry associations and international corporations, as well as academics and IP experts were assembled to address the global crisis in patent application backlog. The small group format permitted an open and frank exchange of ideas and suggestions, providing all attendees, particularly the Office representatives, with invaluable insight into the effect of the backlog on stakeholders and the economy. The Colloquium was followed by an Office-sponsored program on the Patent Prosecution Highway. Finally, as we look toward the fall, AIPLA is cooperating on organization of the second IP Association Global Summit Meeting, which will be held just prior to the AIPPI World Intellectual Property Congress in Paris, France. AIPLA also participated in a survey by the USPTO, in response to a query by WIPO, concerning changes that would be desirable in the Madrid Protocol. Finally, I would like to note that in the coming months, the AIPLA Board will be developing the new AIPLA Strategic Plan for 2010-2013 and will report that plan to you at the Annual Meeting. The success of the plan will be due, in significant part, to your willingness to give your time, energy and insights by participating so actively in the recent Survey of the Members on critical issues that concern our practice, our organization and our future activities in delivering services to you. Make plans now to join us at the Annual Meeting, October 21-23, 2010, where the new Strategic Plan and the new Website will be introduced, and the opportunity for you to participate actively in your organization’s committees can be realized. I look forward to meeting you at the Annual Meeting, discussing current issues and working with you over the remainder of the year to the betterment of our profession.
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AIPLA
2010
upcoming online program
Navigating the Bilski Shoals - Protecting Process Inventions after Bilski v Kappos Wednesday, August 18, 2010 12:30 - 2:00 PM Eastern Course Description: After much anticipation and speculation, the Supreme Court handed down a not-so-decisive decision in Bilski. Despite finding the claims at issue to be ineligible for patenting as abstract ideas, the Court refused to categorically exclude all business methods from the patent system. The Court’s application of the abstract idea doctrine and dismissal of the State Street Bank useful, concrete, and tangible test failed to deliver a new test to help practitioners determine the distinction between a patent-eligible process claim from an ineligible abstract idea. In this program, we will explore the practical impact of the Supreme Court’s Bilski decision on day to day practice across multiple technologies, including business methods, software, medical diagnostics, and gene patent claims. Presented By: Kenneth N. Nigon, RatnerPrestia Denise M. Kettelberger, Faegre & Benson, LLP CLE will be requested. * please note, topics are subject to change* For more information, Check our website: www.aipla.org or call: 703.415.0780
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practical patent boot 2010 prosecution training camp for new lawyers august 25-26, 2010 alexandria, virginia
The 2010 Practical Patent Prosecution Training for New Lawyers Seminar, also referred to as “Boot Camp”, is designed for new practitioners (i.e., those having about 0-2 years of experience) or others that want to learn or update themselves on the basics of patent application preparation and prosecution. This comprehensive CLEaccredited seminar includes instructional sessions and hands-on claims drafting workshops taught by skilled and experienced private and corporate practitioners. United States Patent & Trademark Office representatives will also be invited.
specific topics will include: • • • • • • • • • • • • • • • • • • • • • • • • • 10
Client Interfacing and Goals Determining Patentability Overview of Application Drafting Claim Drafting, including instruction on biotechnology, chemical, electrical, mechanical, and software inventions Specification Drafting Inventorship Filing, including Electronic Filing Restriction Requirements Responding to Examiner Actions Affidavits Examiner Interviews Double Patenting Ethics, IDSs and Duty of Candor Petitions Appeals Interferences Continuation Practice Issuance and Patent Term Certificates of Correction Reissues Ex Parte and Inter Partes Reexaminations Disclaimers Maintenance PCT Filing Overview of International Prosecution
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The program will conclude with a choice of one of three “hands-on” claim drafting workshops: 1. Biotechnology/Chemical Claim Drafting Workshop 2. Electrical/Software Claim Drafting Workshop 3. Mechanical Claim Drafting Workshop
come join us! Westin Alexandria 400 Courthouse Square Alexandria, VA (703) 253-8600 AIPLA Special Room Rate: $179.00 *Please make your room reservations, ASAP. The block cut-off date is Tuesday, August 10.
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2010 Meeting Dates
board of directors
Thursday, September 23, 2010 Evening Welcome Reception Annapolis, MD Friday/Saturday, September 24–25, 2010 Board Meeting Wednesday, October 20, 2010 Board/Committee Chairs Meeting 1:00 pm–5:00 pm Marriott Wardman Park Washington, DC Thursday, October 21, 2010 Board Meeting 2:00 pm–3:30 pm Marriott Wardman Park Washington, DC
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association activities Membership The following applications for membership are being published in accordance with Article II of the By-Laws. We welcome all of our new members.
REGULAR Al Auyeung Seattle, WA Guillermo Baeza Mooresville, NC W. Edward Bailey New York, NY Charles S. Baker Houston, TX Aaron Barkoff Chicago, IL Allen Baum Research Triangle Park, NC Gigette Bejin Northville, MI Susan Billheimer Washington, DC James Blackburn Los Angeles, CA Christopher Borello New York, NY Kregg Brooks Chicago, IL Jason W. Bryan Houston, TX Kristyne Bullock Philadelphia, PA 12 
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Tara A. Byrne New York, NY
Jeffery Maughan Duncan Chicago, IL
Shawn P. Gorman Chicago, IL
Kimberly Cauthorn Houston, TX
Sherri Eastley Austin, TX
Frederick H. Gribbell Cincinnati, OH
Lucian C. Chen New York, NY
Cathleen Ebacher Milwaukee, WI
Ronald S. Grubb Washington, DC
Tina Chen Cupertino, CA
Sean Edman Boston, MA
Melanie K. Kitzan Haindfield Bellevue, WA
Charles Chevalier New York, NY
Stephanie Elmer Washington, DC
Dale B. Halling Colorado Springs, CO
T. Spence Chubb Washington, DC
Barry L. Evans New York, NY
John J. Held Chicago, IL
E. Colin Cicotte Troy, MI
Michael Ferrazano Cupertino, CA
S. Craig Hemenway Denver, CO
Frank L. Cire New York, NY
Laurie Allison Davis Frey Austin, TX
Pablo D. Hendler New York, NY
Chad A. Coberly Richland, MI
Alfred Froebrich New York, NY
Jacob B. Henry Houston, TX
Dominick A. Conde New York, NY
Joanna L. Garelick New York, NY
Gabrielle E. Higgins East Palo Alto, CA
Joseph B. Divinagracia New York, NY
Stephen E. Gillen Cincinnati, OH
Jessica Hiney New York, NY
Michael Doane Washington, DC
Bobby Brian Gillenwater Fort Wayne, IN
Elizabeth F. Holowacz New York, NY
Jacob Doughty Alexandria, VA
Steven M. Giovannetti Palo Alto, CA
James Howard New Bern, NC
Jeffery Maughan Duncan Chicago, IL
Daniel S. Glueck New York, NY
Patricia M. Hoyle Allschwil,Switzerland 2010 spring meeting issue
Thomas Joseph Pittsburgh, PA
Ryan R. Owens Costa Mesa, CA
Edward Van Gieson Palo Alto, CA
David Oedel Macon, GA
Simon Kahn Hod Hasharon,
Carl J. Pellegrini Washington, DC
Dorothy Von Hollen Newark, NJ
Dale P. Olson Morgantown, WV
John Kirkland New York, NY
Lisa B. Pensabene New York, NY
John Wakeley New York, NY
Susan R. Poulter Salt Lake City, UT
Shari Klevens Washington, DC
Mark Perkell Essex Junction, VT
Loretta Weathers Center Valley, PA
Srividhya Ragavan Norman, OK
Edward A. Kmett New York, NY
Thomas K Prah Washington, DC
Robert Winess West Palm Beach, FL
Arti Kaur Rai Durham, NC
Jacob Koering Chicago, IL
Edward J. Prein Indianapolis, IN
Lori A. Wolfe New York, NY
Sandra L. Rierson San Diego, CA
William P. Ladd Washington, DC
Filko Prugo New York, NY
Ha Kung Wong New York, NY
David E. Shipley Athens, GA
Michael Lee Cupertino, CA
Thomas J. Puppa New York, NY
Eric Yoon Cupertino, CA
Ronald W. Staudt Chicago, IL
Stephen R. Loe Plano, TX
Leanne Rakers St. Louis, MO
Larry S. Zelson Philadelphia, PA
Gerald T. Tschura Auburn Hills, MI
Francis Logan Long Beach, CA
Joshua I. Rothman New York, NY
Ling Zhong Berwyn, PA
David Welkowitz Costa Mesa, CA
Christopher E. Loh New York, NY
Diego Scambia New York, NY
Matthew Zinn Alviso, CA
Julie Cromer Young San Diego, CA
Marie MacNichol Allentown, PA
Richard T. Schachner Vienna, VA
ACADEMIC
FOREIGN
John D. Magluyan Costa Mesa, CA
Nicholas Schuneman Austin, TX
Daryl Lim New York, NY
Alexandre Abecassis Montreal, Canada
Alan Marshall Greenville, SC
Robert Schwartz New York, NY
Richardson R. Lynn Atlanta, GA
Sudhir D. Ahuja Calcutta, India
Brant T. Maurer Racine, WI
Gregory B. Sephton New York, NY
Jeffrey A. Maine Portland, ME
Pravin Anand Film City, India
Michael P. McGraw New York, NY
Peter D. Shapiro New York, NY
Roger Maris New York, NY
Alonzo Ancheta Mandaluyong City, Phillipines
Erica Misorek Hicksville, NY
Sandra Shim New York, NY
David N. Mayer Columbus, OH
Monia Baccarelli Milano, Italy
Dale G. Mohlenhoff Spokane, WA
Perry C. Siatis Abbott Park, IL
Adam Mossoff Arlington, VA
Maria Cristina Baldini Torino, Italy
N. Alexander Nolte Houston, TX
Ryan K. Simmons New Bern, NC
Kali Murray Oxford, MS
Heinz Bardehle Munich, Germany
Gregory W. Osterloth Denver, CO
Michael J. Smith Austin, TX
Bradley K. Myers Grand Forks, ND
Budiger Baumann Memmingen, Germany
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Indrani Saha Bhattacharya Calcutta, India
Thierry Sueur Paris, France
Vito Ciaravino Rockford, MI
Katherine Kim Chicago, IL
Pauline Bosman Richmond Hill, Canada
Niclas Uggla Uppsala, Sweden
Jeffrey Crook Dallas, TX
Colleen M. Kramer Whippany, NJ
Mukundan Chakrapani Ottawa, Canada
Jose Vega Panama City, Panama
Mark Deboy Washington, DC
Katherine Lewis Weare, NH
Sean Cummings London, England
Aurel Vollnhals Munich, Germany
Nirav N. Desai Washington, DC
Michael Lindinger Washington, DC
Aliasgar Dholkawala Mumbai, India
Takuji Yamada Osaka, Japan
Michael J. Druzinski Troy, MI
Lynde Lintemuth New York, NY
Sullivan Fountain London, England
Rick Xu Yang Chengdu, Sichuan Province, China
Molly Eichten Minneapolis, MN
Michael Martin San Francisco, CA
Falk Ewers Washington, DC
Jered Matthysse Austin, TX
Andrew Gabriel Sewickley, PA
Dexter L. Mcfarlin Birmingham, AL
Michael Garber New York, NY
Corinne Miller Washington, DC
David Gorski Houston, TX
David Mroz Alexandria, VA
Charles Gray Parker, CO
Peter S. Park Washington, DC
Cheryl Greenly Elyria, OH
Edward Playfair Nashville, TN
Thomas Ho Washington, DC
Matthew B. Rappaport Austin, TX
Scott Hogan Troy, MI
Michael G. Raucci Washington, DC
Katherine S. Jackson San Diego, CA
Christina Revels Richmond, VA
Paul G. Johnson Salt Lake City, UT
Nicole Sasson San Francisco, CA
Elixis Ashley Jones Plano, TX
Rebecca Scarr Milwaukee, WI
Heena Kampani Norcross, GA
Francis Vellano East Amherst, NY
Fadi Kiblawi Washington, DC
Andrew J. Warner South Hamilton, MA
Candice Kim Washington, DC
Corey M. Weideman Houston, TX
Luigi Franzolin Torino, Italy Elizabeth E. Houlihan Melbourne, Australia Adam Hyland Gladesville, Australia Stephen Jiew Dubai, United Arab Emirates Myung Shin Kim Seoul, Korea Uwe Manasse Bremen, Germany Shonagh L. McVean Toronto, Canada Shaun McVicar Melbourne, Australia Tim Meyer-Dulheuer Frankfurt, Germany Yukio Nagasawa Tokyo, Japan Stefan Pfister Memmingen, Germany Roberto Pistolesi Milano, Italy Cristóbal Porzio Santiago, Chile Christopher Shaowei Beijing, China 14
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GOVERNMENT Takeshi Hishinuma New York, NY Johann Richter Ft. Washington, MD
JUNIOR Anishiya Abrol Mclean, VA Todd Behrens Cleveland, OH Austin Bonderer Fullerton, CA Jared J. Braithwaite Salt Lake City, UT Barry Brewington Charlotte, NC Fraser D. Brown Washington, DC Kerry W. Brown Sandy, UT Daniel G. Cardy Washington, DC Jane Chuang New York, NY
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Bridget L. Welborn Richmond, VA Scott K. Witonsky Boston, MA Shaobin Zhu Palo Alto, CA
PATENT AGENT Athena R. Bellomo Ramat Gan, Israel Magdalena Cilella Chicago, IL David Olynick Cupertino, CA Viet Tong Minneapolis, MN PATENT AGENT- Junior Eric Fechter Davis, CA Vikram Iyengar Pittsburgh, PA Tae Jung Milpitas, CA Annette M. Thompson Plano, TX Alan Townsley Washington, DC Christopher John Wickstrom Salt Lake City, UT Ling Wu Potomac, MD USPTO Professional Renee S. Luebke Alexandria, VA Justin Misleh Falls Church, VA Ram R. Shukla Alexandria, VA 2010 spring meeting issue
Jeffrey Siew Arlington, VA
Wendy Cheung San Diego, CA University of San Diego Law School
Kirsten Johnson Arlington, VA George Washington University National Law Center
STUDENTS
Kevin Clark Manchester, NH Franklin Pierce Law Center
Warren Johnson Tempe, AZ Arizona State University College of Law
Serena Aldrich Maple Shade, NJ Rutgers, S.I. Newhouse Center for Law & Justice Angeline R. Babel Chicago, IL Chicago-Kent College of Law Cory Bell Arlington, VA George Washington University National Law Center Matthew Beutler Cleveland, OH Case Western Reserve University Law School Anne Marie Bossart Ithaca, NY Cornell Law School Burke Bourne Concord, NH Franklin Pierce Law Center Peter Bradshaw Gulfport, FL Stetson University College of Law Michael Brandt Bensenville, IL Chicago-Kent College of Law, Illinois Institute of Alysa Brautigam Alexandria, VA American University, Washington College of Law Annelore Cannizzaro Three Rivers, MI Thomas M. Cooley Law School Cindy Chang Forest Hills, NY New York University School of Law
Anthony Converse Denver, CO University of Oregon School of Law James Cooke Washington, DC Georgetown University Law Center Anthony Czuchnicki Elizabethtown, PA Widener University School of Law Mihaela Danca Mendham, NJ New York Law School Elizabeth Dingess-Hammond Indianapolis, IN Indiana University School of Law, Indianapolis Jessica Ekhoff Chicago, IL University of Chicago Law School Ivy Estoesta Baltimore, MD University of Maryland School of Law Alexander T. Hafez Alexandria, VA Franklin Pierce Law Center Merritt Hasbrouck Chicago, IL John Marshall Law School Alicia Hayter Farmington, CT University of Connecticut School of Law
Scott Kelly Fairfax Station, VA University of Virginia School of Law Dennis Kergick Carlisle, PA Pennsylvania State University, Dickinson School of Law Yoon-Gon Kim Cleveland, OH Case Western Reserve University Law School Max Kolar East Lansing, MI Detroit College of Law at Michigan State University Jacqueline Lee Fredericksburg, VA Boston University School of Law Kerry Leonard Munhall, PA University of Pittsburgh School of Law Yue Li Santa Clara, CA Santa Clara University School of Law Jeanette Lieb Chicago, IL John Marshall Law School Jiazhong Luo Lansdale, PA Temple University School of Law Kakoli Mitra Landover, MD George Washington University National Law Center aipla bulletin
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Nathan Newbold Manchester, NH Franklin Pierce Law Center Annie M. Noble Chantilly, VA The Catholic University of America School of Law Christopher Nofal Washington, DC American University, Washington College of Law Joseph Noferi Chicago, IL John Marshall Law School Christopher Nunley Valparaiso, IN Valparaiso University School of Law Teresa Pham Houston, TX South Texas College of Law Javier Ramos Washington, DC Georgetown University Law Center Xiahong Shou Arlington, VA George Washington University National Law Center Brandon Shue Baltimore, MD University of Maryland School of Law
Quinn Stine Tulsa, OK University of Tulsa Law School Erini Svokos Franklin Lakes, NJ Georgetown University Law Center Tum Thach Washington, DC George Washington University National Law Center Chad Thompson Loveland, OH University of Cincinnati College of Law Giles Turner Belton, GA Franklin Pierce Law Center Nicholas Zepnick Saukville, WI Marquette University Law School Michelle Zhang Fairfax, VA George Mason University School of Law Ariana Zimbouski Davis, CA U.C. Davis School of Law
Tanya Solis Chicago, IL Chicago-Kent College of Law Mandy Song Vienna, VA Georgetown University Law Center Ryan Song New York, NY Columbia University School of Law
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aipla bulletin
2010 spring meeting issue
news of members Steve Gillen, Glenn Bellamy, Michael Frey and Sean Owens were part of the expansion of Wood, Herron & Evans IP law practice. The Cincinatti-based firm is the region’s largest and oldest IP law firm. With these additions, Wood, Herron & Evans expands from 42 to 50 attorneys and incorporates an established Publishing and Media Practice. According to a Wood, Herron & Evans press release, the expansion is likely to propel Wood, Herron & Evans into the top 30 trademark firms, nationally. “Wood, Herron & Evans is excited about the significant expansion of our practice,” said AIPLA Member and Senior Partner David Stallard, “and eager to serve our clients with increased breadth and depth of expertise, especially in the fields of advertising, publishing, media, entertainment, and licensing. Ultimately, our clients will realize substantial benefit from this expansion.” --------------Thomas J. Filarski, an intellectual property attorney and shareholder at Brinks Hofer Gilson & Lione, has been named one of “The World’s Leading Life Sciences Patent Litigators” and a top three Illinois patent litigator by Intellectual Asset Management Magazine. Top lawyers were chosen on the basis of their success in potential high-stake patent disputes, in-depth knowledge of the legal process and substantial positive feedback from both peers and clients.
deceased members
Paul Edwin Hodges, whose work for over 50 years had a significant impact on the research and development of scientific technology in areas of international and national IP law, died on Thursday, May 27, 2010. He concluded his work with the merger of clients with Pitts and Brittian, PC, in Knoxville, TN, and his association with the firm as “Of Counsel” which he served from 1998 to his death. Mr. Hodges is a recognized 2010 spring meeting issue
Filarski litigates for clients in the federal district courts and at the US Court of Appeals for the Federal Circuit in the pharmaceutical, biotech, medical device, chemical, and electro-chemical industries. His practice focuses on Hatch-Waxman, patent litigation, trade secrets and International Trade Commission law. He is chair of the Chemical Practice group at Brinks Hofer Gilson & Lione. Filarski was listed in The Best Lawyers in America in 2010 and has been an “Illinois Super Lawyer” in intellectual property litigation for the past five years. He has also been named a “Leading Intellectual Property Lawyer” by the Leading Lawyers Network for the past three years. Filarski has been featured in the Business Edition of Leading Lawyers Network magazine and authored the “Patent Defense” chapter in BNA Books’ 2005 Patent Litigation Series Handbook. He has also spoken at several patent, International Trade Commission and litigation forums. --------------James G. Morrow and Robert A. Lawler, have joined the firm, Reinhart Boerner Van Deuren (Reinhart). Morrow is based in the firm’s Milwaukee office and Lawler in Madison. Reinhart’s Chief Executive Officer and Chairman Jerome M. Janzer stated, “Our IP Practice has seen significant growth over the past several years and we are pleased to have these two talented and experienced patent attorneys to assist our clients. Their scientific backgrounds, history of success in the representation of their clients and dedication to exceptional client service make them a great addition to our IP team.”
member of the Tennessee Bar Association, American Intellectual Property Law Association, Tennessee Intellectual Property Law Association (cofounder and former member Board of Directors), Carolina Patent, Trademark and Copyright Law Association and American Chemical Society. He is survived by his wife of 55 years, Sue Jane Hodges; along with four children, and five grandchildren. aipla bulletin
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Thirty-Seventh Annual Giles Sutherland Rich Memorial Moot Court Competition By Kimberly Van Voorhis
The national finals of the Thirty-Seventh Annual Giles Sutherland Rich Memorial Moot Court Competition, sponsored this year by Circuit Judge Timothy B. Dyk, took place on April 21-23 at the Howard T. Markey National Courts Building in Washington, DC. Stephen Adams and Joshua Lee from University of Tennessee College of Law were awarded the AIPLA Giles Sutherland Rich Memorial Award of $2,000. Greg Kowalski and Christine Peterson from American University, Washington College of Law took runner-up honors and received the Irving Marcus Award of $1,000, sponsored by Oblon Spivak McClelland Maier & Neustadt, PC. The competition opened with an AIPLA-sponsored breakfast on Wednesday, April 21. Kim Van Voorhis, the National Director of the competition, and Lindsay Nalevanko, Meeting Planner for AIPLA, attended the breakfast and welcomed the contestants. Ms. Van Voorhis presented certificates recognizing the students’ achievements in the regional competitions held in March in Boston, Chicago, Houston, and the San Francisco Bay Area. Teams from the following schools participated in this year’s national competition: American University-Washington College of Law, Georgetown University, University of Michigan Law School, Franklin Pierce Law Center, University of Akron School of Law, University of Tennessee College of Law, Temple Law, and University of California-Davis.
of Fish & Richardson, PC; and Kristin Yohannan and Adam Keser of Morrison & Foerster, LLP. Eric Ow, law clerk to the Honorable Paul R. Michel, served as head bailiff. Federal Circuit clerks Yuka Teraguchi, Molly Silfen, Emily Johnson, Farheena Rasheed, Alex Pergament and Jared Hoggan served as bailiffs for the quarterfinal and semi-final rounds. Norma Bennett, Elizabeth Burkhard of Holland & Knight, LLP, Jonathan Mutch of Robins, Kaplan, Miller & Ciresi, LLP, Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff, LLP, and Diana Luo of Morrison & Foerster, LLP served as Regional Directors. The problem was prepared by Stephen Stout of Vinson & Elkins, LLP, Jerry Suva of Baker Botts, LLP, Artem Sokolov of Sughrue Mion, PLLC, Chad Pannell and Rich Miller of King & Spalding, LLP. The bench memorandum was prepared by Stephen Stout of Vinson & Elkins, LLP and Jerry Suva of Baker Botts, LLP. AIPLA congratulates all of the participants in this year’s competition and thanks the judges, bailiffs, and AIPLA staff for their time and effort in helping to make this competition a success.
Circuit Judges Timothy B. Dyk, Alan D. Lourie and Alvin A. Schall judged the final round of the competition. The competition concluded with award presentations and a reception at the Dolley Madison House. The judges for the quarter-final and the semi-final rounds of the national competition included a wide range of experienced attorneys from the private sector as well as the federal government. The quarter-final judges included Associate Solicitors Janet Gongola, Nathan Kelley and William Lamarca of the Solicitor’s Office; Troy Grabow, Rama Elluru, Jason Melvin and Ed Naidich of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Rae Fischer of Venable, LLP; Daniel Shulman of Pactiv Corp.; Vince Capuano of Duane Morris LLP; and David Swenson of Robins, Kaplan, Miller & Ciresi, LLP. The semi-final judges included Naveen Modi and James Sherwood of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Jackie Wright Bonilla of Foley & Lardner, LLP; Ahmed David
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aipla bulletin
Winners Joshua Lee, Stephen Adams, Greg Kowalski & Christine Peterson with Circuit Judges Timothy B. Dyk, Alan D. Lourie and Alvin A. Schall. 2010 spring meeting issue
61st Annual Intel International Science and Engineering Fair By Damon Bowe, Jason Croft, and Yeen Tham
The other First Award prize was presented to Thomas Frederick Wilkason from Macon, Georgia. He developed a video tracking program that acquires and tracks objects in a real-time video sequence, both with and without occlusions. The program efficiently predicts the location of the object through multiple occlusions and consistently reacquires the target at the exact position where it exits the occlusion. An improved video tracking program plays an important role in the fields of surveillance, factory automation, and information gathering.
The 2010 Intel International Science and Engineering Fair (ISEF) was held May 9-14 in San Jose, California. ISEF is the world’s largest international science competition for pre-college students. About 1600 students from nearly 60 countries, regions, and territories participated in this year’s ISEF, presenting more than 600 exhibits. “Grand Awards” were presented in various scientific categories and include scholarships, tuition grants, and scientific field trips. In addition to the “Grand Awards,” “Special Awards” were presented by numerous sponsoring organizations, including the AIPLA. Judging on behalf of the AIPLA this year were Damon Bowe of the New Orleans BioInnovation Center, Jason Croft a patent agent and consultant in Silicon Valley, and Yeen Tham of IBM, Yorktown Heights, New York. The AIPLA awarded two “First Awards” of $1000 and two “Second Awards” of $250.
A Second Award prize was presented to Samantha Sapumalee Nanayakkara from Columbus, Mississippi. She developed an environmentally friendly species selective insecticide by identifying and synthesizing several natural products as acetylcholinesterase inhibitors. The acetylcholinesterase inhibitors can be used to control the Aedes aegypti mosquito, which presented a threat to public health as well, and to control the Formosan subterranean termite, which has flourished rapidly in the US and caused devastation resulting in an estimated cost of over one billion dollars a year. The other Second Award prize was presented to Jun Nishida from Nara, Japan. He developed a low-cost and compact intuitive Human Interface Device using EMG (electric impulses which control muscles.) Existing EMG-based input devices are large, expensive, and complex because they are generally made for enterprise use in hospitals. The low-cost and compact Human Interface Device can be used in various applications, for example, as a bionic hand, a video game controller, a virtual drum, a computer interface, or a home electronics controller.
One of the First Award prizes was presented to team members Melissa Severn McDowell and Michael Charles McDowell from Baton Rouge, Louisiana. They developed a solution to determine the optimal scaffold for three-dimensional bone formation using bovine adipose-derived adult stem cells. Their research results suggest that using stem cells from adipose tissue to initiate bone growth is a viable option for those in need of a bone graft. The scaffolds can also be beneficial in the treatment of bone-related diseases, such as osteoporosis and osteogenesis imperfecta as well as in improving the recovery time after a bone injury.
(Left to right): Judging on behalf of AIPLA this year were Jason Croft, a patent agent and consultant in Silicon Valley, Yeen Tham from IBM, Yorktown Heights, New York, and Damon Bowe, from New Orleans BioInnovation Center. 2010 spring meeting issue
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C.L.E.
update 2010 Spring Meeting • New York Marriott Marquis New York, NY • May 6–8, 2010
ALABAMA.................................................. 16.5 (3.8) ALASKA..................................................... 16.5 (3.8) ARIZONA................................................. 16.5 (3.75) ARKANSAS............................................. 16.5 (3.75) CALIFORNIA........................................... 16.5 (3.75) COLORADO................................................ 20.0 (5.) CONNECTICUT....................................................... DELAWARE............................................... 19.9 (4.5) FLORIDA................................................... 20.0 (4.5) GEORGIA................................................ 16.5 (3.80) IDAHO...................................................................... ILLINOIS.................................................. 15.0 (3.75) INDIANA.................................................... 16.6 (3.7) IOWA......................................................... 12.0 (2.5) KANSAS.................................................... 19.5 (3.5) KENTUCKY............................................. 14.25 (2.5)
LOUISIANA.............................................. 15.08 (4.0) MAINE..................................................... 16.5 (3.75) MINNESOTA............................................ 15.25 (4.0) MISSISSIPPI............................................. 16.6 (3.8) MISSOURI................................................. 19.9 (4.5) MONTANA............................................... 16.5 (3.75) NEBRASKA............................................... 13.0 (3.0) NEVADA.................................................... 15.0 (3.5) NEW HAMPSHIRE.................................... 15.8 (3.8) NEW MEXICO......................................... 16.5 (3.75) NEW YORK............................................... 19.5 (4.5) N. CAROLINA........................................................... N. DAKOTA.............................................. 16.5 (3.75) OHIO..................................................... 15.25 (3.75) OKLAHOMA............................................................. OREGON............................................... 15.75 (3.75)
PENNSYLVANIA........................................ 16.5 (3.5) RHODE ISLAND........................................ 19.9 (4.5) S. CAROLINA........................................ 15.08 (3.75) TENNESSEE............................................................ TEXAS..................................................... 16.5 (3.75) UTAH......................................................... 16.5 (3.5) VERMONT................................................. 16.5 (3.8) VIRGINIA.................................................................. WASHINGTON.......................................... 15.0 (4.0) W. VIRGINIA.............................................. 19.9 (4.5) WISCONSIN............................................................. WYOMING............................................. 16.75 (3.75) Ethics credit is indicated in a parenthesis and is included in the total.
2010 Mid-Winter Institute • La Quinta Resort and Spa La Quinta, CA • January 27–30, 2010 ALABAMA.................................................. 19.0 (4.8) ALASKA..................................................... 18.8 (4.8) ARIZONA................................................... 18.5 (4.5) ARKANSAS........................................... 18.75 (4.75) CALIFORNIA......................................... 18.75 (4.75) COLORADO.............................................. 23.0 (5.8) CONNECTICUT....................................................... DELAWARE............................................... 18.8 (4.8) FLORIDA................................................... 23.0 (6.0) GEORGIA.................................................. 18.8 (4.8) IDAHO..................................................... 17.5 (1.25) ILLINOIS................................................ 18.75 (4.75) INDIANA.................................................... 18.8 (4.8) IOWA..................................................... 18.75 (4.75) KANSAS.................................................... 22.5 (5.5) KENTUCKY..............................................................
LOUISIANA............................................ 18.83 (4.83) MAINE....................................................... 18.8 (8.0) MINNESOTA.............................................. 18.5 (4.0) MISSISSIPPI............................................. 18.0 (4.8) MISSOURI................................................. 21.7 (5.8) MONTANA................................................. 17.3 (4.8) NEBRASKA.............................................................. NEVADA.................................................... 18.5 (4.5) NEW HAMPSHIRE.................................... 20.0 (4.0) NEW MEXICO....................................... 18.75 (4.75) NEW YORK............................................... 22.5 (5.5) N. CAROLINA........................................ 18.75 (4.75) N. DAKOTA............................................ 18.75 (4.75) OHIO........................................................................ OKLAHOMA.............................................. 20.5 (6.0) OREGON................................................. 19.5 (4.75)
PENNSYLVANIA........................................ 18.5 (4.5) RHODE ISLAND........................................ 22.5 (5.5) S. CAROLINA........................................ 17.25 (4.83) TENNESSEE........................................... 20.0 (5.08) TEXAS................................................... 18.75 (4.75) UTAH......................................................... 18.5 (4.5) VERMONT................................................. 18.8 (4.8) VIRGINIA................................................... 18.5 (4.5) WASHINGTON...................................... 18.75 (4.75) W. VIRGINIA.............................................. 22.6 (5.8) WISCONSIN.............................................. 22.5 (5.5) WYOMING................................................. 19.0 (5.0) Ethics credit is indicated in a parenthesis and is included in the total.
2009 Annual Meeting • Marriott Wardman Park Washington, DC • October 15–17, 2009
ALABAMA.................................................. 16.3 (4.2) ALASKA..................................................... 16.3 (4.1) ARIZONA................................................... 16.0 (4.0) ARKANSAS........................................... 16.25 (4.25) CALIFORNIA........................................... 16.25 (4.0) COLORADO.............................................. 20.0 (5.0) CONNECTICUT........................................ 16.0 (4.0) DELAWARE............................................... 19.5 (5.0) FLORIDA................................................... 19.5 (5.0) GEORGIA.................................................. 16.3 (4.1) IDAHO............................................................... 16.0 ILLINOIS.................................................... 14.0 (4.0) INDIANA.................................................... 16.3 (4.2) IOWA..................................................... 16.25 (4.25) KANSAS.................................................... 18.5 (3.0) KENTUCKY........................................... 16.25 (4.25)
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aipla bulletin
LOUISIANA............................................ 16.25 (4.16) MAINE....................................................... 16.1 (3.3) MINNESOTA............................................ 20.25 (4.0) MISSISSIPPI............................................. 16.3 (4.2) MISSOURI................................................. 18.9 (5.0) MONTANA............................................... 16.25 (4.0) NEBRASKA.............................................................. NEVADA.................................................... 16.0 (4.0) NEW HAMPSHIRE.................................... 17.0 (4.0) NEW MEXICO......................................... 16.25 (4.0) NEW YORK............................................... 19.5 (5.0) N. CAROLINA.................................................... 12.0 N. DAKOTA.............................................. 16.25 (1.0) OHIO..................................................... 16.25 (4.25) OKLAHOMA.............................................. 19.0 (5.0) OREGON................................................... 17.0 (0.5)
PENNSYLVANIA........................................ 16.0 (4.0) RHODE ISLAND........................................ 19.5 (5.0) S. CAROLINA........................................ 16.25 (4.17) TENNESSEE........................................... 17.0 (4.17) TEXAS..................................................... 16.25 (4.0) UTAH......................................................... 16.0 (4.0) VERMONT................................................. 16.3 (4.1) VIRGINIA................................................... 16.0 (4.0) WASHINGTON........................................ 16.25 (4.0) W. VIRGINIA.............................................. 19.5 (5.0) WISCONSIN.............................................. 19.5 (4.5) WYOMING............................................. 16.25 (4.25) Ethics credit is indicated in a parenthesis and is included in the total.
2010 spring meeting issue
2009 Partnering in Patents XVI Alexandria, VA • October 14, 2009 ALABAMA.................................................... 3.5 (0.5) ALASKA....................................................... 3.5 (0.5) ARIZONA..................................................... 3.5 (0.5) ARKANSAS......................................................... 3.5 CALIFORNIA............................................... 3.5 (0.5) COLORADO................................................ 4.0 (0.6) CONNECTICUT.................................................. 3.0 DELAWARE.........................................................N/A FLORIDA..................................................... 4.0 (0.5) GEORGIA.................................................... 3.5 (0.5) IDAHO......................................................... 3.5 (0.5) ILLINOIS...................................................... 3.5 (0.5) INDIANA...................................................... 3.5 (0.5) IOWA................................................................... 3.5 KANSAS...................................................... 4.5 (0.5) KENTUCKY................................................. 3.5 (0.5)
LOUISIANA.......................................................... 3.5 MAINE......................................................... 3.5 (0.5) MINNESOTA................................................ 3.5 (0.5) MISSISSIPPI............................................... 3.5 (0.5) MISSOURI................................................... 4.2 (0.6) MONTANA................................................... 3.5 (0.5) NEVADA...................................................... 3.5 (0.5) NEW HAMPSHIRE...................................... 3.5 (0.5) NEW MEXICO............................................. 3.5 (0.5) NEW YORK................................................. 4.0 (0.5) N. CAROLINA.............................................. 3.5 (0.5) N. DAKOTA.................................................. 3.5 (0.5) OHIO........................................................... 3.0 (0.5) OKLAHOMA................................................ 4.0 (0.5) OREGON............................................................. 3.5 PENNSYLVANIA.......................................... 3.5 (0.5)
RHODE ISLAND.......................................... 4.2 (0.6) S. CAROLINA.............................................. 3.5 (0.5) TENNESSEE............................................. 3.67 (0.5) TEXAS......................................................... 3.5 (0.5) UTAH................................................................... 3.5 VERMONT................................................... 3.5 (0.5) VIRGINIA..................................................... 3.5 (0.5) WASHINGTON............................................ 3.5 (0.5) W. VIRGINIA................................................ 4.2 (0.6) WISCONSIN........................................................ 4.0 WYOMING................................................... 3.5 (0.5)
Ethics credit is indicated in a parenthesis and is included in the total.
2009 Boot Camp/Practical Patent Prosecution Training for New Lawyers Alexandria, VA • August 26-28, 2009
ALABAMA.................................................. 22.0 (1.0) ALASKA..................................................... 22.0 (1.0) ARIZONA................................................... 22.0 (1.0) ARKANSAS............................................... 22.0 (1.0) CALIFORNIA............................................. 22.0 (1.0) COLORADO.............................................. 26.0 (1.2) CONNECTICUT........................................ 22.0 (1.0) DELAWARE............................................... 26.4 (1.2) FLORIDA................................................... 26.5 (1.0) GEORGIA.................................................. 22.0 (1.0) IDAHO............................................................. 21.25 ILLINOIS.................................................... 21.0 (1.0) INDIANA.................................................... 22.0 (1.0) IOWA......................................................... 22.0 (1.0) KANSAS.................................................... 24.0 (1.0) KENTUCKY............................................... 22.0 (1.0)
LOUISIANA................................................ 22.0 (1.0) MAINE....................................................... 22.0 (1.0) MINNESOTA.............................................. 14.5 (1.0) MISSISSIPPI............................................................ MISSOURI................................................. 26.4 (1.2) MONTANA................................................. 22.0 (1.0) NEVADA.................................................... 22.0 (1.0) NEW HAMPSHIRE.................................. 22.25 (1.0) NEW MEXICO........................................... 22.0 (1.0) NEW YORK............................................... 26.0 (1.0) N. CAROLINA............................................ 22.0 (1.0) N. DAKOTA................................................ 22.0 (1.0) OHIO......................................................... 22.0 (1.0) OKLAHOMA.............................................. 26.5 (1.0) OREGON................................................... 23.5 (1.0) PENNSYLVANIA........................................ 22.0 (1.0)
RHODE ISLAND........................................ 26.4 (1.2) S. CAROLINA............................................ 22.0 (1.0) TENNESSEE..................................... 22.5 (1.0 dual) TEXAS....................................................... 22.0 (1.0) UTAH......................................................... 22.0 (1.0) VERMONT................................................. 22.0 (1.0) VIRGINIA................................................... 22.0 (1.0) WASHINGTON.......................................... 22.0 (1.0) W. VIRGINIA.............................................. 26.4 (1.2) WISCONSIN.............................................. 16.0 (1.0) WYOMING................................................. 22.0 (1.0)
Ethics credit is indicated in a parenthesis and is included in the total.
2009 Patent Cooperation Treaty Seminar Arlington, VA • July 16-17, 2009 ALABAMA.......................................................... 13.0 ALASKA............................................................. 13.0 ARIZONA........................................................... 13.0 ARKANSAS....................................................... 13.0 CALIFORNIA..................................................... 13.0 COLORADO...................................................... 16.0 CONNECTICUT................................................ 13.0 DELAWARE....................................................... 15.6 FLORIDA........................................................... 14.5 GEORGIA.......................................................... 13.0 IDAHO............................................................. 12.75 ILLINOIS.......................................................... 12.75 INDIANA............................................................ 13.0 IOWA............................................................... 12.75 KANSAS............................................................ 15.5 KENTUCKY....................................................... 13.0
LOUISIANA........................................................ 13.0 MAINE............................................................... 13.0 MINNESOTA...................................................... 13.0 MISSISSIPPI..................................................... 13.0 MISSOURI......................................................... 15.6 MONTANA......................................................... 13.0 NEVADA............................................................ 13.0 NEW HAMPSHIRE............................................ 13.0 NEW MEXICO................................................... 13.0 NEW YORK....................................................... 15.5 N. CAROLINA.................................................. 12.75 N. DAKOTA...................................................... 12.75 OHIO................................................................. 13.0 OKLAHOMA...................................................... 15.5 OREGON........................................................... 13.5 PENNSYLVANIA................................................ 13.0
RHODE ISLAND................................................ 15.6 S. CAROLINA.................................................... 13.0 TENNESSEE................................................... 12.75 TEXAS............................................................... 13.0 UTAH................................................................. 12.0 VERMONT......................................................... 13.0 VIRGINIA........................................................... 13.0 WASHINGTON................................................ 12.75 W. VIRGINIA...................................................... 15.6 WISCONSIN...................................................... 14.0 WYOMING......................................................... 13.0
Please check our website at www.aipla.org for current information. 2010 spring meeting issue
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future meetings calendar 2010 August 25-26 AIPLA Practical Patent Prosecution Training for New Lawyers, Alexandria, VA September, date TBD FICPI 12th OPEN FORUM - Munich, Germany, www.ficpi.org September 12-14 IPO Annual Meeting, The Hyatt Regency, Atlanta, GA (202/466-2396) www.ipo.org October 1-6 AIPPI, 42nd World IP Congress, Paris, France (www.aippi.org) October 21-23 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780) December 6 IPO Education Foundation PTO Day The Ronald Reagan Building & International Trade Center Washington, DC www.ipo.or
February 28-March 2 AUTM Annual Meeting, Caesars Palace, Las Vegas, NV www.autm.net April, Date TBD Design Day, cosponsored by AIPLA, ABA-IPL and IPO, at the USPTO, Alexandria, VA
April 6-9 ABA-IPL Section Annual IP Conference, Arlington, VA (www.abanet.org/intelprop) May 4-6 LES Spring Meeting, New York, NY www.lesi.org May 12-14 AIPLA Spring Meeting, The Palace Hotel, San Francisco, CA (703-415-0780) May 14-18 INTA Annual Meeting, San Francisco, CA (www.inta.org) June, Date TBD AIPLA Trademark Boot Camp July, Date TBD AIPLA PCT Seminar August, Date TBD AIPLA Practical Patent Prosecution Training Boot Camp
2011 February 2-5 AIPLA Mid–Winter Institute, The Peabody Hotel, Orlando, FL (703-415-0780) February 9-11 LES Winter Meeting, San Jose Marriott, San Jose, CA www.lesi.org
August 4-9 ABA Annual Meeting September 11-13 IPO Annual Meeting, Los Angeles, CA (202/466-2396) www.ipo.org October 16-20 LES Annual Meeting, San Diego, CA www.lesi.org October 20-22 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)
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2010 spring meeting issue
2012 January 23-26 AIPLA Mid–Winter Institute, Ceasar’s Palace, Las Vegas, NV (703-415-0780) April, Date TBD Design Day, cosponsored by AIPLA, ABA-IPL and IPO, at the USPTO, Alexandria, VA April, dates TBD ABA-IPL Section Annual IP Conference (www.abanet.org/intelprop)
2013 January 30-February 2 AIPLA Mid–Winter Institute, Tampa, FL (703-415-0780) May 6–8 AIPLA Spring Meeting, Seattle, WA (703-415-0780) October TBD AIPLA Annual Meeting, Hotel TBD, Washington, DC (703415-0780)
May 5-9 INTA Annual Meeting, Washigton, DC (www.inta.org) May 10-12 AIPLA Spring Meeting, Hilton Austin, Austin, TX (703-415-0780) July, dates TBD AIPLA Patent Cooperation Treaty Seminar (703-415-0780) August, dates TBD AIPLA Patent Prosecution Boot Camp. Practical Patent Prosecution Training for New Lawyers. (703-415-0780) September 9-11 IPO Annual Meeting, San Antonio, TX (202/466-2396) www.ipo.org October 25-27 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)
2010 spring meeting issue
aipla bulletin
23
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o c to b e r 2 1 - 2 3 , 2 0 1 0 • m a r r i o tt w a rd m a n p a r k h o te l • w a s h i n g ton , d c Conversations on Cutting-Edge IP Topics: • • • • •
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for articles AIPLA Quarterly Journal The premiere intellectual property journal for intellectual property practitioners, the AIPLA QJ, is seeking articles for publication. The AIPLA QJ is a scholarly journal designed to promote an exchange of intellectual insight and debate on issues of intellectual property law. We welcome submissions on a wide variety of intellectual property topics from all individuals studying and practicing in the area of intellectual property law. Articles should be approximately 7000 words in length (excluding footnotes), double-spaced, with full citation in Bluebook format. All submissions should be e-mailed to submissions@aipla.org. Articles are selected for publication year-round and thus there is no submission deadline. As articles are selected they are slated in the next available Journal issue.
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copyright office affairs by: Wendi A. Maloney & Judith Nierman (photos below)
Mandatory Deposit Requirements Revised to Help print serials. The regulation specifies that a complete copy of an online-only work must include metadata and formatting Library of Congress Acquire Online-Only Works codes, and it establishes new best-edition criteria for onlineOn January 25, 2010, the Copyright Office issued an interim only serials. regulation permitting it to acquire works available only The new regulation is classified as “interim” so that it online (that is, with no print counterpart). The regulation, can be fine-tuned over time. As part of this process, the available at www.copyright.gov/fedreg/2010/75fr3863.pdf, Library and the Copyright Office held a publishers’ forum exempts electronic works published in the United States and on May 10–11, 2010, to discuss with publishers file transfer available only online from the mandatory deposit provision protocols, packaging and transmission standards, content of copyright law until the Copyright Office, at the request of and data models, and metadata and naming conventions the Library of Congress, issues a demand for deposit copies related to the deposit of electronic serials. or phonorecords. Prior to the new rule, Copyright Office regulations exempted “automated databases available only online in the United States” from mandatory deposit. The Copyright Office had interpreted this exemption broadly to apply to all electronic works published only online, in part because the Library of Congress had previously neither the inclination nor the technological means to collect online-only works. However, because a significant amount of creative and scholarly work is now available only on the Internet—the Library estimates that more than 5,000 scholarly journals are now available only online—it has become imperative for the Library to acquire such works through mandatory deposit.
Later this year, the Copyright Office will invite public comment on the operation of the new demand-based system, after which it will finalize the regulation. Each time the Library identifies a new category of work to be subject to demand, the Office will seek public comment and revise the regulations accordingly. Supreme Court Places Settlement in Electronic Rights Case Back on Table
In a unanimous decision on March 2, the US Supreme Court ruled in Reed Elsevier v. Muchnick that section 411(a) of the Copyright Act, which requires registration as a prerequisite Under the new rule, demands will initially be limited to a copyright infringement suit, does not deprive federal to a select group of electronic serials, specifically journals courts of jurisdiction over copyright infringement cases that publish no more often than weekly and have the same involving unregistered works. The decision revived a stalled appearance, formatting, and regular publication schedule as class-action settlement reached between freelance writers
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and publishers in relation to the Court’s 2001 decision in Tasini v. New York Times. In Tasini, the Court found in favor of freelance writers who claimed their copyrights had been infringed when publishers licensed inclusion of the writers’ articles in online databases without requesting permission or providing compensation. After the decision, publishers removed many freelance works from online databases and began securing both print and electronic rights in contracts with freelance writers. In 2005, after lengthy negotiations, authors, publishers, and database companies agreed to consolidate several class-action suits arising from Tasini into a global $18 million settlement. The settlement provides payment to writers depending on whether and when they registered the copyrights to their works with the Copyright Office. The writers who failed to register will potentially receive less money than those who did. The differing payments reflect the fact that section 411(a) of the Copyright Act states that suits for copyright infringement of works of US origin cannot be filed until after registration has been made. In addition, awards of statutory damages and attorney’s fees are available only for infringement of works that are registered before any infringement begins or within three months of publication.
section 411(a) does not affect a court’s jurisdiction but that it is nevertheless an important requirement that courts should ordinarily enforce. The Supreme Court affirmed that section 411(a)’s registration requirement is a precondition to filing a copyright infringement claim, but it also stated that a “copyright holder’s failure to comply with that requirement does not restrict a federal court’s subject-matter jurisdiction over infringement claims involving unregistered works.” In so deciding, it reaffirmed prior decisions that a statutory requirement is jurisdictional only if Congress “clearly states” that it is so, which it did not do in relationship to section 411(a). As a result of the Court’s decision, Reed Elsevier v. Muchnick will go back to the Second Circuit for further proceedings. Register Says Copyright Royalty Judges Can Subpoena Witnesses
The Register of Copyrights issued an opinion in February concluding that the Copyright Royalty Judges can subpoena witnesses in proceedings even when the witnesses are not formally participating in them. The judges asked for her opinion in relation to a proceeding to set royalty rates and terms for the public performance of sound recordings As a class action, the settlement needed approval by by webcasters and for the making of the “ephemeral,” or the federal court in which the suit was filed, the US District temporary, copies needed to facilitate such performances. Court for the Southern District Court of New York. Following Under the Copyright Royalty and Distribution Reform Act of the district court’s approval, a group of freelance writers who 2004, the Copyright Royalty Judges can ask the Register to had not registered their works appealed, objecting in part interpret novel or material questions of substantive law that to the settlement’s reduction of compensation for authors of arise during proceedings before them. nonregistered works. In December 2009, a participant in the rate-setting In November 2007, the US Court of Appeals for the proceeding filed a motion asking that subpoenas be issued Second Circuit declined to approve the district court ruling, for several parties not participating in the proceeding. In but not for the reason put forth by the appellants. The circuit doing so, the participant aimed to compel the nonparticipant court held that federal courts have no jurisdiction over parties to identify corporate witnesses to present documents unregistered works and that the district court erred in ruling and testify at a deposition about factual assertions included in a case made up mostly of such works. in a written statement submitted by another party in the proceeding. The Supreme Court agreed to review the case to decide whether section 411(a) limits the jurisdiction of federal In briefs submitted in December 2009 and January 2010, courts over copyright infringement actions. The Copyright participants objecting to the motion argued, among other Office worked closely with US Solicitor General’s office on a things, that the Copyright Royalty Judges do not have the friend-of-the-court brief filed in the case, which argues that authority to subpoena parties who are neither participants 2010 spring meeting issue
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copyright office affairs (continued)
in a proceeding nor witnesses whose testimony has already been submitted in a written statement in the proceeding.
to subpoenaing it—as long as the testimony is relevant to resolving a material issue of fact, even if the absence of the testimony would not substantially impair the resolution of a In her opinion, the Register looked first to the language proceeding. in the statute to discern its meaning. Section 803 of the Copyright Act clearly authorizes the Copyright Royalty Judges The Register added that although it is unnecessary to “issue a subpoena commanding a participant or witness to look at legislative history for clarification when the plain to appear.” Unfortunately, the Register wrote, section 803 meaning of a statute is clear, the legislative history that exists does not answer the question whether this authority is limited coincides with the “finding that the [Copyright Royalty Judges’] to witnesses whose testimony has already been submitted subpoena power is broad and not restricted to witnesses who in a proceeding, as the objectors to the motion before the have already submitted testimony” to the judges. Copyright Royalty Judges asserted. For the full text of the Register’s opinion, go to www. In such a situation, the Register explained, a “statutory copyright.gov/fedreg/2010/75fr13306.pdf. term should be construed in accordance with its natural meaning.” To determine the meaning of “witness,” the Register consulted Black’s Law Dictionary and Corpus Juris Office Seeks Comment on Gap in Termination Provisions Secundum: A Contemporary Statement of American Law as Derived from Reported Cases and Legislation. Neither of The Copyright Office sought comment (75 FR 15390) on those sources, she wrote, deem “witness” to be restricted to the application of title 17 to the termination of certain grants those whose testimony has already been filed in a proceeding of transfers or licenses relating to copyright. The Office or to those who have previously testified. She concluded that is specifically interested in those terminations for which “witness,” as used in section 803, “includes anyone who execution of the grant or license occurred prior to January 1, knows something that is relevant or, alternatively, anyone 1978, but the work was created on or after January 1, 1978. who has or gives evidence (as opposed to one who has given The deadline for serving notices of termination for 1978 evidence) in a rate determination proceeding.” grants will begin to expire in 2011. It is also useful, the Register wrote, to look to other federal statutes that authorize issuing subpoenas. A plain reading of those statutes supports the conclusion that Congress was empowering the officials named in them to subpoena “witnesses” as the term is commonly understood, not just parties who were already participating in proceedings, the Register stated. The Register noted that the relevant language in section 803 limits the power of the Copyright Royalty Judges to issue subpoenas to situations in which the resolution of a proceeding “would be substantially impaired by the absence of such testimony.” She also observed that the law allows the judges to ask nonparticipants for testimony—as opposed
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Termination is a right given by law to authors and some heirs, beneficiaries, and representatives to end certain grants of copyright assignments or licenses of the copyright owner’s rights to use a copyrighted work. Terminations are subject to time limitations and conditions as set forth in the law. Exercising the right of termination might allow an author or heir a second opportunity to enjoy the economic success of a work. As noted in the Federal Register, “Termination provisions provide authors with a long-term insurance policy on the value of their copyrights.” To exercise the right of termination, the party who is terminating must inform the grantee in writing of the effective date of the termination. This notice must take place within a specified time frame (which differs depending on whether the termination takes place
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under Section 203 or Section 304). The deadline for grants made in 1978 will begin to expire in 2011. Under the 1909 Copyright Act, termination was tied to renewal. If a copyright was renewed in the 28th year of the first term, the copyright reverted to the author or, if that person was deceased, to other specified beneficiaries. The 1976 Act provides for termination through a series of formalistic steps that may only be undertaken by authors and certain heirs specified by statute after prescribed periods of time. Section 304 permits termination of grants of copyright assignments and licenses during the extended renewal term for pre-1978 works. Authors and other qualified successors have been serving notices of termination under section 304 since 1978. Section 203 governs grants and licenses relating to copyrights in works subsisting in the first or renewal term as of January 1, 1978. Terminations for these works may be executed during the five-year period beginning at the end of 35 years from the date of publication of the work under the grant or at the end of 40 years from the date of execution of the grant, whichever is earlier. Unlike termination under section 304, these terminations may only be exercised by authors. They may be exercised as early as January 1, 2013, but notice must have been served no earlier than 10 years prior and no later than two years prior.
termination rights are exercisable in the first place and, if they are, which statutory provision applies. Comments were due April 30, 2010; reply comments, May 21, 2010. For further information, go to www.copyright. gov/docs/termination. Copyright Office and WIPO Cohost International Copyright Training Program
The Copyright Office, together with the World Intellectual Property Organization (WIPO), hosted an international training program March 8–12, 2010, at the Library of Congress. Participants from 22 developing countries and countries in transition gathered to learn about emerging issues in copyright and related rights and to focus on the legal, contractual, and technological issues that influence how copyrighted works are made accessible to blind and visually impaired persons. The week’s events were organized by the Copyright Office of Policy and International Affairs (PIA) under the direction of Associate Register Maria Pallante. Geidy Lung, senior legal officer in WIPO’s Copyright Law Division, presented remarks on behalf of Trevor Clarke, WIPO assistant director general for copyright and related rights, who was unable to attend. She commended the Office for conducting the program and said that emphasis must be placed on identifying obstacles and finding practical solutions, When a notice is served, a copy must be recorded in the as well as providing relief for visually impaired individuals who Copyright Office before the effective date of the termination. use copyrighted works. Ninety percent of all visually impaired If the notice is untimely, the Office may not record it. people, she noted, are poor residents of developing countries. She said that she hoped all participants would work together The Office and some congressional offices have received to develop a common strategy to address issues. “Success questions from stakeholders on a narrow question: whether will depend on WIPO member countries taking on board the and how termination provisions in title 17 apply when the work interests of all stakeholders.” was created after the effective date of the 1976 Copyright Act (January 1, 1978), but the grant was executed under the old law in effect before January 1, 1978. Such cases could include Digitization of Copyright Office Paper Records Includes a composer who agreed to transfer to a music publisher the CCE and Card Catalog copyrights on songs not yet written or a book author who agreed with her publisher in 1977 to deliver a work in 1979. The ongoing Copyright Office project to digitize its According to the Federal Register, confusion and possible paper copyright records is currently focused on imaging the disagreement arise among some stakeholders “as to whether entire collection (660 volumes) of the Catalog of Copyright 2010 spring meeting issue
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Entries (CCE) and the 45 million index cards that make up the copyright card catalog. The Copyright Office published the CCE in print format from 1891 through 1978 and in microfiche format from 1979 through 1982. Some volumes are found in federal depository libraries but the Copyright Office may have the only complete sets. The Office’s copyright card catalog comprises a variety of indexes of Copyright Office records dating to 1870. The Office plans to image the first set of cards—approximately 2.3 million Assignment Cards—by September 2010.
• Managing IP 2010 Outstanding Achievement in IP Award Managing Intellectual Property, a global magazine for intellectual property owners, selected the Register as the 2010 recipient of its Outstanding Achievement in IP Award, which was presented at the North American awards ceremony on April 15, 2010.
Register of Copyrights Receives Two Prestigious Awards • 2010 CHIP Award The Intellectual Property Law Section of the District of Columbia Bar Association awarded Register of Copyrights Marybeth Peters the 2010 Champion of Intellectual Property (CHIP) Award on April 20, 2010. According to the Intellectual Property Law Section’s statement of qualifications, the recipient of the CHIP Award is “a person who has served the intellectual property community with distinction, whose efforts have had an impact on intellectual property policy, who has encouraged innovation and the protection of intellectual property rights, and who continues to inspire and advocate for the intellectual property community.” Said Stephen Belisle and Barbara Berschier, cochairs of the event, “Through your outstanding service and dedication to the United States Copyright Office, you have proven your championship credentials.”
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We’ve expanded our global membership.
Become a member of In recognition of the important role attorneys and agents play in the international protection of proprietary rights, the American Intellectual Property Law Association has expanded its foreign affiliate membership category beyond persons admitted as attorneys-at-law in countries outside the US. AIPLA’s foreign affiliate category is now also open to lawyers or agents registered to practice before the Patent and Trademark offices in their country of citizenship.
“Membership in AIPLA is both prestigious and beneficial in my daily practice. There is no reason not to be a member.” Sangwon Kim AIPLA Member “The biggest and most prominent association of intellectual property professionals.” Kenneth Bassinger AIPLA Member
Upcoming Meetings October 21–23, 2010 AIPLA Annual Meeting Marriott Wardman Park Washington, DC
February 2–5, 2011 AIPLA Mid-Winter Institute The Peabody Hotel Orlando, FL
www.aipla.org • 241 South 18th Street, Suite 700, Arlington, VA 22202 • Phone: +17034150780 • Fax +17034150786
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thank you AIPLA 2010 spring meeting sponsors! gold Sughrue Mion, PLLC Partial Sponsor: Friday Night Mixer
silver Kenyon & Kenyon Sponsor: Friday Lunch Reception Partial Sponsor: Opening Night Reception New York Intellectual Property Law Association Partial Sponsor: Friday Night Mixer
bronze Dickstein Shapiro, LLP Partial Sponsor: Post Meeting CD-DVD Goodwin Proctor LLP Partial Sponsor: Opening Night Reception Howrey, LLP Sponsor: Diversity in IP Law/Women in IP Law Breakfast Meeting Kramer Levin Naftalis & Frankel LLP Partial Sponsor: Opening Night Reception Patterson Belknap Webb & Tyler LLP Sponsor: Thursday Lunch Reception Schwegman Lundberg & Woessner, PA Sponsor: Wednesday New Member/First-Time Attendee Reception
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AIPLA 2010 spring meeting sponsors (cont’d) crystal Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Sponsor: Technology Center Fitzpatrick Cella Harper & Scinto Sponsor: Pop-up Maps Foley Hoag, LLP Sponsor: Patent Law Committee Meeting Reception Herbert L. Jamison & Co., LLC Sponsor: Solo/Small Firm Practitioner Networking Reception
pearl Leonard, Patel & Olson, PC Partial Sponsor: Opening Night Reception
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AIPLA 2010
spring meeting leadership
Alan J. Kasper, President, AIPLA
David Hill, President-Elect
Teresa Stanek Rea, Immediate Past President, AIPLA
Steve Malin, Professional Programs Vice Chair
J. Michael Martinez de Andino, Professional Programs Chair
Q. Todd Dickinson, AIPLA Executive Director
2010 mid-winter institute photographs by: Richard Burgess
William G. Barber, First Vice President
a few speakers
Joseph Re
Mark Wegener
Margaret K. Seif
Kim Choate
Mark Tuff Nancy Klembus
Brian Jaenicke Joyce Talmadge
(left to right): Guy Donatiello, D. Christopher Ohly, Steven Nash
Dawn Buonocore-Atlas
Chen Wang Gordon Arnold
a few more speakers
Neil Henderson
Thomas Irving
Barry Young
Robert Isackson Christopher Cotropia
Sharon Barner, Deputy Director, USPTO
Honorable Paul Luckern, Chief Administrative Law Judge, US International Trade Commission
Nanette Thomas
Honorable Paul Michel, Chief Judge, US Court of Appeals for the Federal Circuit
a few more speakers Herb Hart
Guy Donatiello
Jack Goldstein
Carey Jordan
Jennifer Gordon James Pooley
Kay Paterson
Robert Clarida Robert Kahrl
new member/first-time attendee reception
AIPLA would like to thank the sponsor of the New Member/First-Time Attendee Reception:
Schwegman, Lundberg & Woessner, PA
opening night reception streets of new york
AIPLA would like to thank the sponsors of the opening night reception:
• • • •
Kenyon & Kenyon Goodwin Proctor LLP Kramer Levin Naftalis & Frankel LLP Leonard, Patel & Olson, PC
friday night mixer
AIPLA would like to thank the sponsors of the Friday Night Mixer
NYIPLA Sughrue Mion, PLLC
PAC reception
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2010 annual meeting
o c to b e r 2 1 - 2 3 , 2 0 1 0 • m a r r i o tt w a rd m a n p a r k h o te l • w a s h i n g ton , d c Conversations on Cutting-Edge IP Topics: • • • • •
Copyrights Corporate Ethics International Litigation
• • • • •
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“The annual meetings have been extremely valuable to me. The quality of the speakers and comprehensive materials has been invaluable.” -Trent Martinet, AIPLA Member
Register Today! Visit www.aipla.org/html/annual/2010 American Intellectual Property Law Association 241 18th Street South • Suite 700 • Arlington, VA 22202 Phone: (703) 415-0780 • Fax: (703) 415-0786 www.aipla.org • aipla@aipla.org
if you wish to make a hotel reservation, please call 1-800-228-9290 or (202) 328-2000 room rate: $271 (single/double) the cut-off date to obtain this rate is September 23, 2010
sponsorship opportunities available! for information on sponsorship opportunities, please contact Lindsay Nalevanko at 703.412.4357 or lnalevanko@aipla.org
committee
spring meeting may 6-8, 2010
reports
Alternative Dispute Resolution
Chair: Rex B. Stratton (left photo) Vice Chair: Harrie R. Samaras (right photo) ___________________________________________ The Committee did not meet at the Spring Meeting and has no new business to report.
Amicus
Patrick J. Coyne, Chair (left photo) Edward Robert Reines, Vice-Chair (right photo) ___________________________________________ The Amicus Committee has filed five amicus briefs since our Annual Meeting in the Fall, and is currently in the process of preparing and filing three additional amicus briefs. The Committee is also considering several other amicus opportunities at this time. We have reformed the Amicus Liaison Committee. The Amicus Committee is actively pursuing opportunities to advance the Association’s interests and to improve the administration of justice through appropriate amicus participation. Amicus Liaison Group This group includes liaison members appointed by various of the AIPLA substantive law committees. During monthly telephone conferences, we report on activity by the Amicus Committee, discuss substantive issues we are monitoring, and solicit input from liaison members regarding cases to watch. This process has now been operating effectively since the Fall of 2008. The liaison group has been effective in communicating the Amicus Committee’s progress on various 46
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substantive issues and in soliciting from the various substantive law committees their views on cases that are being considered as well as on new cases in which AIPLA may wish to consider participating. The following members have agreed to serve as liaison between the Amicus Committee and the various substantive law committees for the 2009-2010 Program Year: Substantive Law Committee
Amicus Committee Members
Substantive Law Committee Members
AntiCounterfeiting & Anti-Piracy
Bob Payne Griff Price
Amy Sullivan Cahill
Antitrust Law
Kenneth Burchfiel Patrick Coyne Stephen Stack
Stephen Stack
Biotechnology
Kenneth Burchfiel Barbara Fiacco Ann Mueting Warren Woessner
Warren Woessner David Cupar
2010 spring meeting issue
Chemical Practice
Chris Chalsen Ann Mueting Freddie Park David Ruschke Warren Woessner
Larry Kass
Copyright Law
Graeme Dinwoodie Patrick Coyne Rex Stratton
Deborah (Bea) Swedlow
Electronic and Computer Law
Chris Chalsen Wayne Sobon Andrew Stein Marian Underweiser
Lance Reich Joel Miller
Emerging Technologies
Robert Lindefjeld Ed Reines
Lawrence T. Kass
Industrial Designs
Graeme Dinwoodie Robert Lindefjeld Rex Stratton
Chris Carani Perry Saidman
International Trade Commission
Chris Chalsen Bob Payne Kevin Rhodes Andrew Stein
Ian Taronji Andrew Stein
Licensing and Management of Intellectual Property Assets
Chris Chalsen Mark Halligan Freddie Park David Ruschke Wayne Sobon Marian Underweiser
Philip E. Roux Christopher W. Day
Patent Law
Gordon Arnold Barbara Fiacco Kevin Rhodes David Ruschke Wayne Sobon Marian Underweiser
Patent Litigation
Amicus Network AIPLA participates, along with a number of other associations, in an amicus notification network. This program helps AIPLA share resources and coordinates our positions in appropriate cases, hopefully increasing our impact while lessening the burden on the Court of receiving multiple briefs espousing the same position. The network continues to grow and we anticipate increased coordination among various bar groups as this year progresses and well into the future. Amicus Filings (2009-2010 Program Year):
Gordon Arnold Barbara Fiacco Kevin Rhodes David Ruschke
Dianne Elderkin
Standards & Open Source
Patrick Coyne Edward Reines Marian Underweiser Doug Luftman
Doug Luftman Michele Herman
Trade Secret Law
Mark Halligan Griff Price Rex Stratton
Sid Leach Jerry Cohen
Trademark InternetCyberspace
Graeme Dinwoodie Mark Partridge Griff Price
Rex Donnelly Kelu Sullivan
Trademark Law
Graeme Dinwoodie Mark Partridge Griff Price Allison Strickland
Allison Strickland
Trademark Litigation
Graeme Dinwoodie Mark Partridge Griff Price Allison Strickland
Allison Strickland Ashley Callahan
Focus In order to make our efforts more productive, the Amicus Committee aligns its focus with the Board’s other public policy outreach programs. AIPLA is currently involved in a number of public policy outreach initiatives with 2010 spring meeting issue
respect to patent reform and the administration of the courts. The Committee has identified a number of substantive issues that it has been monitoring this year and is following through on these initiatives, but is also mindful of looking for opportunities where amicus filings can strengthen and support the Board’s public policy outreach initiatives with respect to pending legislation. We are particularly mindful of amicus opportunities with respect to issues of fraud and inequitable conduct and damages.
Therasense v. Beckton Dickinson, Fed. Cir. Nos. 2008-1511, -1512, -1513, -1514, and 1595 (en banc rehearing) (Pending). On January 25, 2010, the panel majority affirmed a district court decision holding the patent at issue, among other things, unenforceable due to inequitable conduct. On April 26, 2010, the court granted rehearing en banc and identified six issues on which it requests briefing. The Court has invited amicus briefs and AIPLA is planning to file an amicus brief in the case. Beer v. United States, On Petition for Writ of Certiorari to the Federal Circuit, filed on May 17, 2010 (Pending). On May 17, 2010, Appellants, seven Article III judges, petitioned for a writ of certiorari, to the US Court of Appeals for the Federal Circuit, which had affirmed a decision of the Court of Federal Claims denying the judges Cost-of-Living-Adjustment (COLA) salary increases. The Association is planning to file a brief in support of the petition. Costco v. Omega, On Writ of Certiorari to the US Court of Appeals for the Ninth Circuit, No. 08-1423 (Pending). On April 19, 2010, the Court granted Costco’s petition for a writ of certiorari to the Ninth Circuit, which had reversed the district court’s holding that the sale of aipla bulletin
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legitimate yet gray-market watches made by Omega and bearing a copyrighted design was subject to the first sale doctrine. The Ninth Circuit reversed, holding that, the first sale of the watches having occurred overseas, the watches were not subject to the first sale provisions of Section 109 of the Copyright Act. The Association is planning on filing an amicus brief. Richardson v. Stanley Works, Inc., Fed. Cir., No. 2009-1354, filed April 22, 2010. AIPLA, in an April 22, 2010, amicus brief supporting a petition for en banc review, argues to the Federal Circuit that design patents protect the claimed overall appearance of an article of manufacture, regardless of whether the constituent elements of the claimed design are functional or ornamental. According to the brief, the panel erred in affirming a district court claim construction of a design patent which disregarded features determined to be “functional” as a matter of law, namely the hammer head, the crowbar, the nail claw and the jaw. The brief maintains that the Federal Circuit incorrectly reasoned that design patent claim construction requires that functional features be identified, separated out and disregarded. The Federal Circuit denied the petition for rehearing on May 24, 2010. Hyatt v. Kappos, en banc Fed. Cir., No. 2007-1066, filed April 9, 2010. AIPLA, in an April 9, 2010, amicus brief, argued to the en banc Federal Circuit that a plaintiff in a district court action against the Patent and Trademark Office under 35 U.S.C. §145 to challenge a refusal to grant a patent is not barred by the Administrative Procedure Act from presenting new evidence beyond that contained in the agency record. The brief was filed in a case where the district court refused to permit an inventor’s declaration to be admitted with an opposition to a PTO summary judgment because the inventor “negligently” failed to present the evidence in the declaration to the PTO in the proceedings below. The AIPLA brief urged the Court to re-assert its precedent that §145 proceedings are de novo with respect to new evidence presented by either party in connection with issues raised with the PTO. In addition, it argued that the limits on presenting evidence in §145 proceedings are found in the Federal Rules of Evidence, the Federal Rules of Civil Procedure, and traditional principles of equity, and that the evidence issue in this case should be remanded for fact findings under the correct evidentiary standard. SEB S.A. v. Montgomery Ward & Co., Fed. Cir., No. 48
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2009-1099, filed March 15, 2010. AIPLA, in a March 15, 2010 amicus brief, filed jointly with the Federal Circuit Bar Association in support of an en banc petition, argues that the en banc Court should clarify the culpable state of mind required to prove liability for inducing patent infringement. According to the brief, the “deliberate indifference” standard recited by the panel in this case adds another layer of uncertainty of the relevant mental state, which has at various times been called specific intent, knowing conduct, recklessness and negligence. According to the brief, the Court should supply a unified legal standard for proving a culpable state of mind for finding of induced infringement. Princo Corp. v. US International Trade Commission, en banc Fed. Cir., No. 2007-1386, filed December 4, 2009. Decision on petition for rehearing and suggestion for rehearing en banc─pending. AIPLA, in a December 4, 2009 amicus brief, argues to the en banc Federal Circuit that patent misuse allegations arising from license restrictions on pooled patents must be analyzed under a “rule of reason” approach. The brief addresses the question of whether a finding that there was no illegal tying resulting from the pooled patent agreements precludes antitrust liability for an agreement not to license outside the patent pool a particular patent on allegedly competing technology. According to the brief, this question must be decided under a “rule of reason” analysis and not on a per se basis. It also urges that the Court clearly place the burden of proving anticompetitive effect under the rule of reason on the party invoking the patent misuse defense or asserting antitrust claims (in this case, Princo). The petition for rehearing and suggestion for rehearing en banc is pending. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., en banc Fed. Cir., No. 2008-1248, filed November 19, 2009. The appeal was argued to the en banc Court on December 7, 2009, and decided on March 22, 2010. AIPLA, in a November 19, 2009 amicus brief, argues that Section 112, ¶1 of the Patent Act contains a written description requirement that is distinct from, but related to, an enablement requirement. It further argues that the purpose and scope of the written description requirement is to act in concert with the other requirements of Section 112 to advance the disclosure objectives of the patent system. In the 2010 spring meeting issue
patent validity context, the requirement should be applied not as an independent measure of compliance with the disclosure requirement of Section 112, but together with the other specification requirements of enablement under Section 112, ¶1, and identification of the invention in the claims under Section 112, ¶2. Compliance with Section 112 should therefore be judged by the sufficiency of the disclosures as a whole, not by the sufficiency of the disclosure under any one requirement. On March 22, 2010, the Court issued an en banc decision, affirming the district court’s holding that the patent is invalid for failure to satisfy the written description requirement and clarifying the scope of the written description requirement as a separate requirement for patentability. Bayer Schering Pharma AG v. Barr Laboratories, Fed. Cir., No. 2008-1282, filed September 28, 2009. Petition for rehearing and suggestion for rehearing en banc─denied.
Bilski v. Kappos, Supreme Court, filed Aug. 6, 2009. The appeal was argued to the Court on November 11, 2009─submitted. AIPLA, in an August 6, 2009 merits amicus brief, argued to the Supreme Court that the Federal Circuit’s “machine or transformation” test for the subject matter eligibility for process patent protection ignores the clear Congressional intent that any process be patenteligible and misinterprets Supreme Court precedent. According to the brief, this test is derived from dictum in Supreme Court case law and is tied to the vocabulary of technologies developed in earlier ages. As such, it is backward-looking and ill-fitted to future discoveries and technologies as yet unimagined. The case was argued on November 9, 2009 and has been submitted. Reed Elsevier, Inc. v. Muchnick, Supreme Court, filed June 8, 2009. The appeal was argued to the Court on October 7, 2009─submitted.
AIPLA, in a September 28, 2009 amicus brief, supports a petition for en banc review of a Federal Circuit panel ruling that a “viable alternative” in a prior art rendered a patented method “obvious to try” and thus invalid under Section 103 of the Patent Act. The AIPLA brief seeks a clarification of the obvious-to-try analysis in light of KSR. It argues that the introduction of “a viable alternative” test confuses the analysis and undermines the requirement of KSR that the prior art alternative be a “predictable” solution. The panel majority’s conclusion that the option in this case was “viable” appears to have been based on hindsight reasoning that was based upon the very work that produced the invention. The Court has denied the petition for rehearing.
AIPLA, in a June 8, 2009 amicus brief, argued to the Supreme Court that the Second Circuit in this case misinterpreted 17 U.S.C. § 411(a) by treating the requirement of copyright registration as a condition precedent to subject matter jurisdiction over an action for copyright infringement. On this basis, it incorrectly barred an action for infringement where some of the works in suit had been registered at the Copyright Office and some had not. The case has been argued and is awaiting decision by the Court.
Agilent Technologies, Inc. v. Affymetrix, Inc., Federal Circuit, filed August 18, 2009. Petition for rehearing and suggestion for rehearing en banc denied September 18, 2009.
AIPLA, in a January 22, 2009 amicus brief, argued to the Federal Circuit that the district court improperly applied 35 U.S.C. 101 to find no patent-eligible subject matter in claims to a method used in treating Crohn’s disease. The brief argues (1) that the claimed methods meet the machine-or-transformation test in Bilski, (2) that the district court overreacted to the dissenting opinion in the Supreme Court’s Lab. Corp decision, and (3) that this case is distinguishable from other decisions finding no patent-eligible subject matter. The Federal Circuit held, on September 16, 2009, that the invention satisfies the “transformation” test under the Federal Circuit’s en banc decision in Bilski. A petition for writ of certiorari was filed on October 22, 2009, and remains pending.
AIPLA, in an August 18, 2009 amicus brief, supported a petition for en banc review of a Federal Circuit panel ruling on claim construction in interferences. According to the brief, the panel incorrectly required consideration of the specification of the copied patent to decide written description issues, and consideration of the specification of the copying application to decide patentability over the prior art. The brief argues that the panel applied an obsolete rule that dates back to a period before issues of validity and priority were merged into a single proceeding. 2010 spring meeting issue
Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Federal Circuit, filed January 22, 2009. Petition for writ of certiorari filed October 22, 2009─pending
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Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Federal Circuit, filed January 30, 2009. Cert denied: January 11, 2010. AIPLA, in a January 30, 2009 amicus brief filed jointly with the Federal Circuit Bar Association, argued to the Federal Circuit that that 35 U.S.C. §271(f), barring the supply of components abroad for combination into a device that infringes a patented invention, does not apply to process claims. The brief argues that the panel ruling to the contrary in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co.,
425 F.3d 1366 (Fed. Cir. 2005), must be overturned as inconsistent with precedent, as based on an incorrect statutory construction, as inconsistent with the legislative history of the statute, and as substantially undermined by Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007). The Federal Circuit held on August 19, 2009 that that Section 271(f) does not apply to process claims. A petition for a writ of certiorari was filed and the petition was denied on January 11, 2010.
Anti-Counterfeiting and Anti-Piracy Chair: Kieran Doyle (left photo) Vice Chair: Sherri L. Schornstein (right photo) ___________________________________________
The Anti-Counterfeiting and Anti-Piracy Committee met during the Spring Meeting in New York City. Attendance was good, with members attending in person and by telephone. The Committee heard reports from Sherri Schornstein on the status and anticipated roll out of the anticounterfeiting/anti-piracy “toolkit,” which is expected to be published in time for the 2010 Annual Meeting in Washington, DC. Jeff Kaufman reported on the status of the Anti-Counterfeiting Trade Agreement (ACTA) treaty and provided a brief overview of the recently released draft ACTA. In addition, Mr. Kaufman and Kieran Doyle discussed the Committee’s response to the request of Intellectual Property Enforcement Coordinator, Victoria Espinel, for comments to the Joint Strategic Plan for federal efforts against intellectual property infringement. Janna Lewis provided an update on continuing changes to the Committee microsite, which includes new pages for subcommittees, committee projects, and ways for committee members to get involved. Ms. Lewis requested feedback, content, and ideas from the Committee for further developing the site so that it will be a helpful resource for committee members. Daniel Hwang filled in for Brett August with an update regarding recent developments in case law. Finally, Amy Cahill updated the Committee on her recent efforts as liaison to the Amicus Committee.
Meeting program “Solutions, Tactics and Remedies for Counterfeiting and Piracy - Various Perspectives from the Front Line.” Attendance at the program was impressive and feedback was overwhelmingly positive. Moderated by Amalia M. Trister of Goodman, LLP, the speakers were as distinguished as they were engaging, and included Dawn Buonocore of Calvin Klein, Inc., Brian T. Jaenicke of Johnson & Johnson, Inc., Clark Silcox of the National Electrical Manufacturers Association, Lisa Jorgensen of STMicroelectronics, Inc., Dax Terrill of the US Customs and Border Protection, and G. Roxanne Elings of Greenberg Traurig. The Committee thanks each of the speakers for their professional contributions to the first of many educational programs the Committee plans to sponsor. Mr. Doyle concluded the meeting with added encouragement to the Committee to provide ideas for future committee-sponsored programs. Those with suggestions regarding programming ideas should contact Kieran Doyle at kgd@cll.com. Likewise, those with suggestions regarding the Committee toolkit or microsite should contact Sherri Schornstein at sherri. schornstein@usdoj.gov or Janna Lewis at jlewis@ wnlaw.com. As always we invite your participation in our Committee’s activities.
For the remainder of the meeting, Mr. Doyle provided the group with an overview of the successful 2010 Spring 50
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Antitrust Law
Chair: Kenneth M. Frankel (photo) Vice Chair: Richard S. Taffet (not pictured) ___________________________________________ See Electronic Patent and Computer Law Committee.
Biotechnology
Chair: Karen S. Canady (left photo) Vice Chair: James J. Kelley (right photo) ___________________________________________
See Special Committee on FDA Law.
Chemical Practice
Chair: Michael R. Dzwonczyk (left photo) Vice Chair: William B. Kezer (right photo) ___________________________________________ The Committee has no new business to report.
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Copyright Law
Chair: Kevin Tottis (left photo) Vice Chair: Amy Cahill (not pictured) ___________________________________________ The AIPLA Copyright Committee has been active this spring with efforts to serve and expand the membership of the copyright attorneys who are active in the AIPLA organization. Committee members have also been a force for positive advancement of intellectual property laws and policy in both the national and international arenas. 2010 Spring Meeting About twenty members of the Copyright Committee attended the Copyright Committee Meeting held during the AIPLA Spring Meeting in New York on May 6, 2010. Following updates by each of the various subcommittee chairs, committee members discussed the recent US Supreme Court decision in Reed Elsevier v. Muchnick, 559 U.S. ___ (2010), as well as the Court’s grant of certiorari in Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008). In addition, Michele Woods, Senior Counsel for Policy & International Affairs from the US Copyright Office updated committee members and guests on the status of various policy initiatives at the US Copyright Office, and delivered news of Register Mary Beth Peters’s retirement after sixteen years as Register of the US Copyright Office.
regulatory developments that may be of interest, including most recently, the Federal Register notice regarding termination of certain grants of transfers or licenses of copyright for which execution of the grant occurred prior to January 1, 1978 and creation of the work occurred on or after January 1, 1978. International Developments Following its long-awaited release in draft form, the Copyright Committee in conjunction with the AntiCounterfeiting and Anti-Piracy Committee weighed in on the Anti-Counterfeiting Trade Agreement (ACTA), a proposed international agreement directed at combating counterfeiting and piracy among the member states. Albert Tramposch, AIPLA Deputy Executive Director—International and Regulatory, will represent the AIPLA’s copyright interests at the meeting of the Standing Committee on Copyrights to be conducted at the World Intellectual Property Organization (“WIPO”) in Geneva, Switzerland this June. Substantive Case Law Summaries
The Spring Meeting offered substantive CLE presentations on various copyright topics of interest including a comprehensive presentation of the Google Book Settlement by Sophie Cohen. Other presentations addressed fashion design protection in the US and Canada, orphan works legislation, copyright termination provisions, and a plenary session on judicial developments affecting copyright damages.
For the first time, the Copyright Committee will make available to AIPLA members summaries of substantive copyright law decisions. Committee member Garfield Goodrum leads this initiative on behalf of the Committee, working with a number of dedicated volunteers, including several from the Law Students Committee. The work is substantial, amounting to between thirty and fifty summaries per month. The Committee appreciates the efforts of these dedicated volunteers.
Legislative Developments
Technical Micro-Site Work
The Copyright Committee has been asked to comment on a number of proposed legislative initiatives during the past six months. The Committee has also provided members with news of proposed
Committee member Nancy Hoffman has agreed to assume responsibility for maintaining and updating the Committee’s microsite. Among other materials, the site will house the copyright case law summaries
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available to all AIPLA members. The microsite development will be designed to complement the new AIPLA web portal to be unveiled this summer. Amicus Curiae Contributions The Copyright Committee has monitored the Munchnik v. Reed Elsevier, 559 U.S. ___ (2010) case which was argued in October 2009 before the US Supreme Court. On March 2, 2010, the Supreme Court issued a decision overruling the Second Circuit’s sua sponte dismissal of the case on grounds of subject matter jurisdiction. AIPLA, with advice and input from the Copyright Committee, submitted an amicus curiae brief in the case, which espoused the position adopted by the US Supreme Court. Justice Clarence Thomas writing for the majority found that Section 411(a)’s registration requirement which serves as a precondition to filing a copyright infringement lawsuit, does not restrict a federal court’s subject matter jurisdiction over infringement claims involving unregistered works. The Court declined to address whether Section 411(a)’s registration requirement is a mandatory precondition to suit that district courts may or should enforce on their own initiative by dismissing copyright infringement claims involving unregistered works.
The Copyright Committee has also been consulted and has provided informal poll results from its members to the Amicus Curiae Committee on the Ninth Circuit’s decision in Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008). The Supreme Court has granted certiorari in this copyright case, which involves the interpretation of two provisions of the Copyright Act -- the interplay of the importation right provided in 17 U.S.C. § 602(a) and the first sale doctrine in 17 U.S.C. § 109(a). The case is expected to resolve issues left open in the Supreme Court’s decision in Quality King Distributors, Inc. v. L’Anza Research International, Inc., 523 U.S. 135 (1998). The Copyright Committee will provide assistance in preparing AIPLA’s amicus curiae brief and will monitor developments in the case for its members. Future Copyright Programming Programming that will address topics relevant to copyright law are planned for both the 2010 Annual Meeting in Washington, DC as well as the 2011 MidWinter Institute in Orlando, Florida.
Corporate Practice
Chair: Georgann S. Grunebach (photo) Vice Chair: Kenneth Seddon (not pictured) ___________________________________________ Plans, Goals and Accomplishments for the Year This Committee develops programming and disseminates information relating to intellectual property law and practice that is particularly useful to Corporate Lawyers. The Committee has established in 2009 and early 2010, strong cooperative relationships with the; Law Practice Management, Pro IP, Copyright, Trademark, PCT, Patent Litigation, Mergers and Acquisitions, IP Law in Europe and Women in IP Law Committees through joint presentations at the Mid-Winter Institute, Spring and Annual Meetings.
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During 2010, this Committee will develop and expand these relationships, and our own internal initiatives. Two key areas of exploration and expansion has been the establishment of two new subcommittees. The first subcommittee, entitled the In-House Best Practices Subcommittee, collects and disseminates practical information to Corporate Counsel Committee members on best practices to get more work for less money and enhance cost efficiencies. Through our working relationship with Law Practice Management we’re looking forward to fielding a survey to our members on the matter of inventorship recognition in the corporate environment.
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The second subcommittee, entitled the In-House Counsel In Transition Subcommittee, promulgates information about transitional education for outside counsel entering Corporate Practice. At the Spring Meeting 2010 we kick-off our first presentation in conjunction with the Mentoring Committee. KEY EVENTS 2009-2010 YEAR: AIPLA 2009 ANNUAL MEETING October 14th – 16th , 2009 Marriott Wardman Park Hotel , Washington, DC Joint Presentation with Women in IP Law Women at the Top of Their Game: How to Get There, How to Stay There, and How to Help Others Along Their Way This panel discussion was moderated by Harrie Samaras. The Panel of esteemed women professionals included, Cynthia Weber, Georgann Grunebach, and Kimberly Van Voorhis. The program was sponsored by Howrey, LLP, and very well attended. IP and Cyber-Insurance - You Have Fire Insurance for Your Building, Shouldn’t You Have It for Your IP?
companies must constantly examine these policies to see if they respond to evolving risks. This seminar traces the development and the range of current cyberpolicies, and discuss the applicability of these policies to such risks as open source software, user generated content and copyright and patent infringement. Moderator and Speakers: • Georgann Grunebach, Chair, Corporate Practice, Fox Group Legal • Robert D. Chesler, Vice Chair, Insurance Subcommittee, Corporate Practice, Lowenstein Sandler PC • Christopher Keegan, Willis HRH Kimberly Klein Cauthorn, Cauthorn Consulting, LLC • George Love, Fleming Pharmaceuticals AGENDA: • Introduction • IP and Cyber-Insurance: An Overview of Legal Issues • Current Marketplace and Trends in CyberInsurance • Current Marketplace and Trends in IP Insurance • IP Insurance From A Corporation’s Perspective • Business Meeting Portion ______________________
Another outstanding FREE Webinar and Joint CLE Committee Education Session hosted by the Corporate Practice and Copyright Law Committees of AIPLA, was sponsored by the law firm of Lowenstein Sandler, PC (no CLE provided to webinar attendees). Webinar recording is available on the Corporate Practice Committee Microsite.
AIPLA MID-WINTER INSTITUTE 2010 La Quinta, California January 27 - 30, 2010
OVERVIEW OF TOPIC (as presented):
The first joint meeting, a FREE Webinar, sponsored by Seyfarth Shaw LLP, was hosted by Corporate Practice and Professionalism and Ethics:
The basic components of cyber-insurance are invasion of privacy, IP infringement, computer disruption and corrupted data. At first, companies tried to gain coverage for these risks through their traditional liability and property policies, but after many years of coverage litigation, that effort has largely failed. Insurance companies moved to fill this gap by the creation of new insurance products–cyber-policies that specifically address these risks. This market is now welldeveloped, and a company can choose from a number of cyber-policies. However, as technology changes,
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The Corporate Practice Committee co-sponsored two joint committee meetings and one Breakfast at the MidWinter Institute.
Drawing the Line: Successfully Avoiding Ethical Challenges Facing In-house Counsel in IP Litigation A webinar recording is available on the Committee microsite. Presentation focused on the critical ethical issues that come up for in-house counsel in IP litigation. Examples abound which can often become outcome determinative of the entire litigation (Qualcom v. Broadcom). Our
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panelists include senior in-house counsel who have faced these issues in the daily performance of their duties. They offer seasoned practical advice for avoiding the pitfalls awaiting an unwary litigant. A view from the bench will include panelist Judge Lourdes Baird (ret.), formerly of the District Court for the Central District of California, author of numerous opinions in the patent and IP field.
phase and on its way to market. Discussion focused on how new technologies survive in the life sciences industry, from overcoming challenges of patent prosecution to procuring funding in a time of tightening purse strings. The panel included representatives of a licensor’s entity, a venture capitalist who targets angel funding efforts, an early stage company that has been acquired, and an acquiring entity.
Topics, Moderator and Speakers:
The panel of speakers:
Moderator and Webinar Organizer Georgann Grunebach, Fox Group Legal
Renee M. Kosslak, PhD, General Patent Counsel, Facet Biotech;
“Avoiding Ethical Pitfalls” Sean SeLegue, Director, Litigation Department, Howard Rice Nemerovski Canady Falk & Rabkin
Gino Sciullo, Partner, Charter Life Sciences;
“Managing Outflow of In-House Information: IT and Other Issues” Charles A. Thomasian, Senior Counsel, IP Raytheon Legal Department “Managing LItigation Counsel to Avoid Pitfalls” Michael Lachuk Deputy General Counsel, Director Science Applications International Corporation “Seasonable Conduct: Where is the Line?” Honorable Lourdes G. Baird (Ret.) JAMS “Proper Interaction of Litigation & Corporate Counsel” Bret Bocchieri Partner Seyfarth Shaw LLP The second joint Committee presentation hosted by Corporate Practice and Biotechnology and was entitled: From the Bench to the Market: Bridging the Gaps for Early Stage Development in a Difficult Economy A panel of speakers addressed the challenges and rewards of advancing life sciences technology in difficult economic times, with an emphasis on bridging the gap between the early, fragile stages of technology development and a mature portfolio ready for marketing to a major entity. The panel spoke on securing, funding, acquiring and/or promoting evolving technology, and the creative measures that are often taken to get this type of technology out of the discovery 2010 spring meeting issue
Christopher Slavinsky, Lead Patent Counsel, Pfizer Inc. Earl Weinstein, Associate Director, Office of Intellectual Property, University of California, Los Angeles Women in IP Law (Breakfast Meeting) Speed Dating 101 for the IP Lawyer Finally, the Corporate Practice Committee again co-sponsored with the Women and IP a “Speed Networking” Breakfast. This unique event gave the participants skills to network and market the woman IP professionals to their boss, colleagues and clients. During the second part of the breakfast a ‘speed networking’ session encouraged our Breakfast attendees to put these new skills into action! ______________________ AIPLA SPRING MEETING 2010 New York City, New York May 6 - 8, 2010 The Corporate Practice Committee co-sponsored four joint committee meetings at the Spring Meeting in New York. Corporate Practice AND Mergers and Acquisitions Thursday, May 6, 2010 3:30 to 5:30 PM This program delved into a hornet’s nest of unfolding problems, and some proposed resolutions, that emerge as the clients and lawyers for Hellco and Goodfellas discuss IP diligence issues in connection aipla bulletin
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with a contemplated M&A deal. The audience was fired-up about these complications, which range from common to uncommon to rare to the issues that just won’t die in such transactions. Rather than being left in purgatory, our panel of experts provided some proposed resolutions to soothe the tortured souls in the audience, who had the opportunity to play dealmaker by suggesting additional alternative solutions. Vice Chair, Ken Seddon, participated from Corporate Practice on the panel. Corporate Practice AND Mentoring Committees Thursday, May 6, 2010 From 3:30 to 5:30 PM Mentoring in a Corporate Environment At the AIPLA Spring Meeting, the Mentoring and Corporate Practice Committees focused on how corporate practitioners can make the most of mentoring, both within their organizations and within the AIPLA Mentoring Program. The first portion of the meeting focused on assisting transitioning attorneys to develop the knowledge and tactics necessary to survive a transition into a new environment, such as a corporate environment. Our first speaker, Georgann Grunebach, shared her tips and tricks on making the transition a success. There was a panel of corporate mentors and mentees, paired by the AIPLA Mentoring Program, who shared their experiences in the Program and their thoughts on how to make the most of the Program. Representatives of the Mentoring Committee were also on hand to answer questions. The second portion of the meeting included a breakout session to facilitate new mentoring pairings within the corporate practice committee. The breakout sessions were set up in a “speed-dating” format to facilitate interaction of as many attendees as possible. The Pairings Subcommittee of the Mentoring Committee was also on-site to create new matches within the AIPLA Mentoring Program. Chair, Georgann Grunebach and her current AIPLA mentee, Chrystina E. Zelaskiewicz, Examiner USPTO, Art Unit 3521 participated on the panel for Corporate Practice.
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Corporate Practice and IP Practice in Europe and Japan Friday, May 7, 2010 From 3:30 to 5:30 PM Corporate Practice provided two speakers to this esteemed panel of international IP practitioners. The topic of IP Ownership in Europe, which included discussions on Germany’s Employee-Inventor ownership law and in-house experiences with European IP rights holders was staffed by Mark Wegener of Witte, Weller and Partner of Berlin, Germany and former Corporate Practice Chair, Chen Wang, Corporate Counsel and IP Leader, of E. I. du Pont de Nemours and Company, respectively. Corporate Practice and Patent Litigation Thursday, May 6, 2010 From 3:30 to 4:30 PM The Patent Litigation Committee reached out to Corporate Practice for a joint meeting in New York entitled, “Wish I Knew Then What I Know Now.” The panelists were litigators who have made the move from outside litigation counsel to in-house counsel. Additionally, Corporate Practice placed one speaker on the panel, friend of the Committee, JoAnna Esty of the Lewis, Brisbois, Bisgaard and Smith, LLP firm. JoAnna has the unique distinction of being an outside litigator, who went in-house at Disney for a period of years, building up their patent portfolio in Imagineering, and then went back into outside patent litigation. ______________________ AIPLA ANNUAL MEETING 2010 Washington, DC October 21-23, 2010 Program Development with Young Lawyers Committee and Corporate Practice The Young Lawyers Committee has offered to work on a joint initiative with the Corporate Practice committee. This initiative would place young lawyers, from either firms or solo practice, in contact with in-house counsel. The in-house counsel could have work performed at a reduced firm rate or gratis by young lawyers volunteering their time. All parties benefit from this program. This proposed Program will distinguish AIPLA from other intellectual property organizations. The best experience young lawyers can have to better assist clients is exposure
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to the in-house environment to better understand time constraints, billing concerns and in-house corporate structure. And, finally in-house counsel may receive cost effective research and discrete solutions to manpower problems. Joint Program between Licensing and Management of IP Assets Committee and Corporate Practice Corporate Practice has agreed to co-sponsor a Committee Program Licensing and Management of IP Assets. Vice Chair, Ken Seddon, is working directly with Kevin Wolff on this presentation. The following is a list of possible topics that have been suggested, and speakers who have been identified and/or volunteered to speak. 1 – Monetizing IP – The Emerging IP Marketplace and How Businesses Can Benefit From It Possible speakers include: • Joseph Miotke • George J. Awad of IAMG, LLC • Michael Lasinski of Capstone Valuation Services LLC • Joel E. Lutzker of IPX International (IP focused stock exchange) established by Ocean Tomo, LLC • Matthew Bernstein of Mintz law firm 2 – Taxation of IP Transactions Possible speaker: • Jill Gilbert Welytok 3 - What You Should Know about Patent Pool Licenses
Possible speaker: • Sara Anne Hook of IU School of Law and IU School of Informatics 6 – Drafting and Negotiating Patent Licenses 7 – The Ethics of License Drafting and Negotiation (including Reasonable Interpretation of License Language) 8 – Current Case Law Update on IP Licensing 9 – Licenses Arising from Settlement of Litigation ______________________ AIPLA MID-WINTER INSTITUTE The Peabody Hotel - Orlando, FL February 2 - 5, 2011 Vice Chair, Ken Seddon, is establishing a panel of key industry Licensing experts (e.g. Rambus, Intel, IBM, FreeScale, STMicro, as well as law firms reps) to give a practical session on strategies and solutions to create patent peace in view of Quanta and Transcore. It is a Corporate Practice goal to have this presentation as part of a Plenary Session at the Mid-Winter Institute or Spring Meeting in 2011. The panelists will focus on the challenging issues which have resulted from both Quanta and Transcore. It is increasingly more difficult to create patent peace between two companies without a greater risk of granting a broader license than intended in view of the exhaustion and implied licensing issues. The goal of the panel is to present practical solutions on how to create patent peace.
Possible speakers: • Jeff Mote of Greenberg Traurig (Confirmed) • Bill Geary of MPEG LA • Carter Elzroth of DVB Project with the European Broadcasting Union 4 – Timely Registration and Correct Marking of Design Copyrights – Oft Neglected, Valuable Assets Possible speakers: • Garfield Goodrum with Saidman DesignLaw Group 5 – IP Piracy and the Ways That Licensing and Management of IP Can Be Used to Combat IP Piracy 2010 spring meeting issue
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Diversity in IP Law
Chair: Diallo Crenshaw (left photo) Vice Chair: Neema Desai (right photo) ___________________________________________ Co-sponsored breakfast with Women in IP Committee - featured speaker Professor Kahler AIPLEF/Diversity Committee reception in NY was successful and well attended. For our business meeting in the fall, we plan to find an accomplished diverse speaker or speakers in the IP sphere to talk to our membership. Topics under consideration include a discussion of best practices in a particular area, personal and professional advice on advancing one’s career in a traditionally nondiverse area of law, etc. We are soliciting names and information of candidates you think would be a good fit for this purpose. Also, if you have a person in mind and you have a personal relationship with that person, please consider broaching this topic with him/her. Send your recommendations to Diallo Crenshaw at dcrenshaw@sughrue.com.
Members of our committee are working on finding a speaker for the Mid-Winter Institute 2011 or the meeting next Spring 2011 in San Francisco. Shayne O’Reilly, who is our committee’s liaison to the Professional Programs committee, is one of the members working on this. The LGBT Subcommittee to the Diversity Committee met in NY, and is spearheading the planning of a reception at the Annual Meeting this fall. Further details will be forthcoming from Wayne Sobon and Nancy Mertzel, the co-chairs of this subcommittee. If you are interested in starting a subcommittee related to a particular focus under the umbrella of diversity, please consider spearheading this subcommittee.
Education
Chair: Troy Grabow (left photo) Vice Chair: Hathaway Russell (right photo) ___________________________________________ 1. New Law Professor Subcommittee. The Education Committee is proud to report the successful launch of its law professor initiative at the 2010 Spring Meeting in May in New York City. Our new IP Law Professor Subcommittee will provide a platform for present and future full-time and adjunct IP law professors to discuss resources available to IP law professors, best practices, techniques for get involved in teaching, and other issues of interest. At the Spring Meeting the Education Committee conducted a joint meeting with the Young Lawyers Committee and the Law Students Committee on Practical Considerations for Present and Future IP 58
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Professors - Everything You Wanted to Know But Didn’t Know Who to Ask. Our distinguished panel included: • Susan Barbieri Montgomery of Foley Hoag and Northeastern University College of Business Administration and School of Law. • Elizabeth Powers of the Powers Law Firm (and Adjunct at Santa Clara) • Professor Annette I. Kahler of Albany Law School • Professor Christopher Cotropia of University of Richmond School of Law The panel discussion covered how to prepare for a position as a full-time or adjunct professor, where 2010 spring meeting issue
to look for opportunities as a professor, what to do once you get an adjunct or full-time position, how to balance working and teaching (for adjuncts), best and worst teaching techniques, and resources available to professors. Attendees had the opportunity to network with other professors to discuss practical concerns, such as textbook selection and preparation of a syllabus. We are in the process of planning future activities for this initiative. Please let us or Jack Hicks (JHicks@ wcsr.com) know if you are interested in additional information about the Subcommittee. 2. Online “Webinar” Programs. Last fall the Education Committee participated in a joint program with the Law Students and Young Lawyers Committees. The program included a panel discussion regarding how not to let the economic downturn slow your professional development. The program was wellattended by a cross section of law students, junior/ senior -level associates, and young partners. The panelists provided strategic advice for all of those in attendance, and answered a wide range of questions. The following AIPLA members were kind enough to share their expertise in this great program: Janet Gongola of the US Patent & Trademark Office; Dan Binstock of BCG Search; DeAnn Smith of Foley Hoag; and Dean Nakamura of MDIP LLC The program was so well received that the Education Committee partnered with the Online Programs Committee to put on a webinar on January 22, 2010 with the same panel. The webinar was a huge success with over 100 attendees. We are planning on having other online programs throughout 2010. For example, we are discussing teaser and follow-up programs related to the Trademark and Patent Boot Camps, discussed below. 3. Annual Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”). The Education Committee is currently planning for this year’s AIPLA Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”), which is scheduled for August 25-26, 2010, at the Westin Alexandria, Virginia. We are experimenting with a 2-day boot camp this year instead of the traditional 3-day format in order to reduce the time and monetary commitment needed from attendees and to streamline the program. This popular program has been offered annually for several years, and includes 2010 spring meeting issue
instructional sessions and hands-on claim drafting workshops taught by skilled and experienced private and corporate practitioners. Last year we also had three talks that were webcast live from the Boot Camp, and we hope to do this again for the 2010 program. The 2009 webcast sections included “Interviewing Examiners and Knowing the USPTO” by Leon Radomsky, “Prosecution Tips from a Patent Litigator’s Perspective” by Paul Tripoli, and “Ethics, IDSs and Duty of Candor” by Jeffrey Townes. The Education Committee also worked with Online Programs for a post-Patent Prosecution Boot Camp online program in October 2009 directed to one of the sections from the Boot Camp - Continuation and RCE Practice: Present and Future Tips. We have also started a subcommittee for planning of the 2010 Patent Boot Camp. Another way for committee members to get involved would be to attend or serve as an instructor at the Boot Camp; please let us know if you would like to volunteer. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend the 2010 program. 4. Annual Trademark Boot Camp. To increase awareness of AIPLA as a preeminent organization and resource for US trademark attorneys and to further the AIPLA strategic mission of enhancing knowledge for a diverse IP community, the Education Committee assisted the Trademark Committee in organizing the first Trademark Boot Camp program in 2009. Generally following the format of the Patent Boot Camp, the Trademark Boot Camp covered basic trademark prosecution techniques and was primarily directed to young attorneys or attorneys new to the area of trademark prosecution. We just held the second annual Boot Camp on June 10, 2010 at the Westin Alexandria. The event was very well attended, actually hitting our maximum limit of attendees. We received many positive comments from attendees. Please contact one of us or Kim Van Voorhis (kvanvoorhis@mofo.com) or Amie Peele Carter (amie.peelecarter@bakerd.com) of the Trademark Committee if you are interested in getting involved with the Trademark Boot Camp. 5. The Coordination Role of the Education Committee: The Education Committee will continue to serve as a communication, networking and teaching resource. The Committee plans to continue its liaison aipla bulletin
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activities with the substantive committees and hold joint meetings with other committees on topics of interest to a cross-section of attorneys. We are also planning various activities with other committees such as the Young Lawyers and Law Students Committees.
Finally, please let us know if you have any ideas for activities or new subcommittees for the Education Committee, or if you would like to volunteer.
Electronic and Computer Law
Chair: Manny Schecter (left photo) Vice Chair: Jacques L. Etkowicz (right photo) ___________________________________________ The Electronic and Computer Law Committee and the Antitrust Law Committee jointly presented a committee session on defensive patent entities – organizations that acquire patents solely for defensive reasons on behalf of their members. The joint session was moderated by Manny Schecter (IBM). A slate of speakers presented the business models of three defensive patent entities and discussed their pros and cons. The speakers were Paul Saraceni (RPX), Dan McCurdy (Allied Security Trust), Keith Bergelt (Open Invention Network), Henry Su (Howrey). Mr. Saraceni explained the business model of RPX. RPX’s objective is to reduce its members exposure to patents of non-practicing entities by acquiring patents before they are asserted. Members pay a single subscription fee scaled to the member’s revenue and receive a license to all patents acquired by RPX. Many patents are sold after licenses are passed on to members. RPX has about 40 members, primarily in the technology industry. Mr. McCurdy explained the business model of Allied Security Trust (AST). AST’s objective is essentially the same as that of RPX. AST members must have minimum revenue and pay the same annual fee, but also put forward funds for the acquisition of specific patents and which are the only patents to which the members receive licenses. As with RPX, patents are sold after licenses are passed on to members. AST has about 20 members, primarily in the technology industry. Mr. Bergelt explained the business model of Open Invention Network (OIN). OIN’s objective is to defend the Linux operating system community. OIN enables 60
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the identification of prior art against patents that threaten Linux and OIN acquires patents that can be used solely to defend members that promote Linux. Because OIN’s focus is not passing on licenses to its members, OIN does not generally sell the patents it acquires. OIN has fewer than 10 members, primarily in the technology industry. Mr. Su specializes in antitrust law practice and reviewed each of the business models for antitrust concerns. Mr. Su broke down his comments in view of the relevant markets, the joint conduct of the members, and the unilateral conduct of the business entity. Mr. Su identified no overwhelming concerns. He also pointed out that buying patents in relatively large quantities may raise the price of patents for sale. The audience posed numerous questions to the speakers during which the following points were also made: The acquisition and resale of patents by RPX and AST may enhance the value of those patents because others will assume the patents have been more thoroughly vetted. There are no regulatory constraints on the sale of patents similar to regulation of real estate, automotive, and financial markets. Defensive patent entities generally service the technology industry because of the presence of nonpracticing entities. As non-practicing entities spread to other industries so will the demand for similar defensive services in those industries.
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Emerging Technologies
Chair: Brian H. Batzli (left photo) Vice Chair: Kirk A. Damman (right photo) ___________________________________________ At the 2010 Spring Meeting, the Emerging Technologies Committee held a joint educational meeting with the Special Committee on Standards and Open Source (“Special Committee”). The topic of the educational meeting was directed toward the concerns in licensing and ownership of Intellectual Property developed as part of open innovation and social networking communities. Mr. Joshua Masur, (Turner Boyd LLP) moderated the session. The session was presented as a panel discussion. The panelists were: • • • • •
Jay Kesan, University of Illinois David Rudin, Microsoft Ben Driscoll, SAP Michele Herman, Woodcock Washburn Sean Kane, Kane & Associates, LLC
In addition to being panelists, Mr. Sean Kane, Mr. Jay Kesan, Mr. David Rudin, and Ms. Michele Hermann gave brief presentations outlining the technical specifics of how open innovation and social networking were being used for innovation and some technical details of how they worked to lay the initial groundwork for the discussion. Following the presentations, there was a lively discussion session with the panelists which only ended due to time constraints. Those in attendance found the presentations presented a variety of interesting and
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potentially concerning questions, many of which did not present clear or simple answers and a variety of possible of solutions were contemplated and debated. The Emerging Technologies Committee wishes to thank each of the panelists and the Special Committee for their contributions. Following the joint educational meeting, Mr. Kirk Damman (Vice Chair of the Emerging Technologies Committee) held a brief business meeting for the Committee. The main agenda items were that the Committee has been asked to monitor and potentially present a position with regards to green technology and certain environmental impact issues and the draft rules relating to Accelerated Examination of “Green” inventions. The possibility of the Committee becoming involved in a nanotechnology and ethics investigation being performed at the University of Georgia was also discussed and members of the Committee were reminded of the need to vote when the Committee requested input on potential position papers in order to remaining voting members of the Committee. A number of individuals indicated at the business meeting their interest in joining the Committee and/or assuming a subcommittee chair position.
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Fellows
Chair: John T. Wiedemann (left photo) Vice Chair: Sheldon H. Klein (right photo) ___________________________________________ Bill Frank and Harrie Samaras provided an update on specific topics and speakers for the Fellows-organized concurrent track at the AIPLA 2010 Annual Meeting on effective IP case management and cost control both before and during litigation. Harrie has been approved to be the moderator. A proposed amendment of the AIPLA By-Laws concerning Fellows who become AIPLA life members was thoroughly discussed. The current By-Laws provide that a Fellow must be a regular or similarly qualified academic or government member. The consensus was that a Fellow who becomes a life member should be permitted to remain as or elect to become a Senior Fellow. A proposed resolution will be prepared for the Board’s consideration.
This year’s Nominations Committee to select AIPLA members for election as a Fellow met after the Fellows’ business meeting to discuss the many proposed candidates. The list of proposed nominees to become Fellows will be submitted to the Board for consideration at its July Board meeting. The Committee is be chaired by Fellows Committee Vice Chair Sheldon Klein. The Fellows Dinner following the 2010 Spring Meeting was held at Lattanzi. Holding the dinner on Friday night instead of Saturday night attracted a crowd of more than 24 Fellows and spouses/significant others. The Fellows dinner following the AIPLA 2010 Annual Meeting will be held at Don Dunner’s home on Saturday, October 23, 2010. Save the date!
Baila Celedonia led a discussion on a proposed topic for a future Fellows-sponsored program at an AIPLA Annual Meeting. The program would focus on how a lawyer’s role in his/her firm changes as they become more “senior,” such as, for example, less focus on billable hours and more on managing and mentoring younger lawyers. The program could also include how firms can best use their senior lawyers and the experience they have gained. A possible speaker could be someone from a consulting firm to get a broader idea of what firms are doing in this area.
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Industrial Designs
Chair: Christopher V. Carani (photo) Vice Chair: Anthony E. Dowell (not pictured) ___________________________________________ The Industrial Designs (“ID”) committee remains busy working on a variety of matters. The biggest news in the ID world has been the Federal Circuit’s three recent design patent decisions: International Seaway v. Walgreens (anticipation and obviousness), Crocs v. ITC (infringement) and Richardson v. Stanley Works (claim construction and infringement). In Richardson v. Stanley Works AIPLA filed an amicus brief in support of the petition for rehearing en banc. ID chair Christopher Carani authored briefs on behalf of AIPLA. The ID committee will be monitoring the effects of these important decisions on design patent jurisprudence. At the Spring Meeting in New York, the ID committee heard presentations from Tracy-Gene Durkin and Damon Neagle. Tracy gave a cutting edge assessment and analysis of design patent re-examination practice. The research was in-depth and current. Damon gave a spirited presentation on International Seaway v. Walgreens (anticipation and obviousness) and Crocs v. ITC (infringement). Damon’s presentation discussed the interplay between these two Federal Circuit decision that both dealt with the ubiquitous water clogs. Forward looking, the Committee is working on several projects. Firstly, the ID Committee is working on assembling model jury instructions for design patent
litigation. Further, the ID Committee is preparing a report of proposed updates of Chapter 1500 of the Manual of Patent Examination Procedure based on recent case law. Still further, the ID Committee will be monitoring the Design Piracy Prohibition Act as it reintroduced to Congress in the coming year. The bill (also known as the “Apparel Bill”) seeks to provide intellectual property protection to useful articles, such as clothing, footwear, headwear, purses, belts, and eyeglass frames. If anyone would like to assist on any of these ongoing matters, please feel free to contact Christopher Carani at ccarani@mcandrews-ip.com, or Anthony Dowell at aedowell@dowellbaker.com.
International and Foreign Law
Chair: Maria Eliseeva (left photo) Vice Chair: William S. Boshnick (right photo) ___________________________________________ The Committee has no new business to report.
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International Education
Chair: Marc A. Hubbard (left photo) Vice Chair: James E. Ruland (right photo) ___________________________________________ MISSION: The Committee has two main functions. First, in response to requests, it meets with visiting delegations and arranges for speakers for lectures, seminars, and other meetings outside the United States. Second, the Committee develops and produces online programs on intellectual property law, which are specifically targeted to practitioners outside the United States. The Committee coordinates its activities with those of the Online Programs, International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, the IP Practice in Latin America, the IP Practice in the Far East Committees, and the Special Committee of International Practitioner Associations. TASKS UPDATE AND PLANS: We conducted our first live, online program on April 28. The presentation featured two German-speaking US patent lawyers, who discussed obviousness after KSR. The program was advertised by email to German-speaking IP lawyers in Germany, Austria and Switzerland. Jim Ruland, Shannon Beech, Kevin Kunzendorf, and Thomas Becker (a German patent lawyer and member of the Committee) coordinated the program. The program was promoted primarily through an email invitation sent to a recipient list that had to be independently compiled without the direct assistance of patent associations in Germany because of legal restrictions. We have plans to produce the program again in November 2010 to better utilize the local patent organizations for promoting the program and increasing attendance. The Committee is planning a program for Singapore and is coordinating its efforts with Association of Singapore Patent Agents, who have agreed to sponsor the program. The program is targeted for August or September. The firm of Schwegman, Lundberg & Woessner will be supplying the speakers.
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We are also in the process of developing a shortlist of candidate programs for 2011. We will also be formalizing the planning process so that it is more easily repeated. Based on our experience with the first online program and our ongoing efforts, we face several hurdles: (1) developing a list of US practitioners who are proficient in foreign languages and who would be interested in making online presentations; (2) increasing the number of program coordinators on our Committee; and (3) publicizing programs. In order to meet these challenges we plan to meet with chairs and vice-chairs of related committees, in particular the International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, the IP Practice in Latin America, and the IP Practice in the Far East Committees, to identify possible ways of collaborating to produce programs by identifying subject matter, speakers and sponsors for online programs. We also want to explore additional avenues for promoting online programs, possibly through more formal arrangements with IP organizations outside the US. We would also like to work with AIPLA to find a way of making recordings of the online programs available on the website, in a location that is easily found by practitioners outside the US who are not AIPLA members, as well as marketing the existence of the programs to those individuals. We will continue, upon request, to meet with visiting foreign delegations and to supply speakers for lectures and seminars in foreign countries. We invite anyone interested in our mission of providing educational programming to those outside the United States to join our committee. We encourage anyone interested in sponsoring, participating in, or coordinating international online programs to contact us.
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International Trade Commission (ITC) Chair: Tom M. Schaumberg (left photo) Vice Chair: L. Scott Oliver (right photo) ___________________________________________
Approximately ten members of the Committee met to discuss three issues that continue to be significant with respect to Section 337 practice: 1. Downstream relief – Section 337 is most effective if infringing products are excluded from entry into the United States, regardless of their form at the time of importation, therefore, the Committee will continue to work on assuring that the ITC has authority to provide downstream relief. In that connection, it was announced that the Board had voted in favor of the Committee’s recommendation to amend Section 337 to provide authority to the Commission to issue limited exclusion orders against downstream products of nonparties, subject to prompt and timely specific notice to affected manufacturers and importers.
and development or licensing would be credited toward the existence of a domestic industry. A discussion was held regarding the reasoning and likely impact of the Commission’s recent decision in the Coaxial Cable Connectors investigation, which analyzed the concept of licensing. 3. Remedy – Section 337 enforcement is the responsibility of both the Commission and the Department of Homeland Security resulting in opportunities for the Committee to continue working on recommendations for effective coordination and implementation. A discussion was held regarding a possible continuing education program.
2. Domestic industry – the 1988 amendments to Section 337 provided that substantial investment in exploitation of IP rights through engineering, research
Inventor Issues
Chair: Mark E. Ungerman (left photo) Vice Chair: Darren Franklin (right photo) ___________________________________________ The Committee has no new business to report.
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IP Law Associations
Chair: Fraser Roy (left photo) Vice Chair: Laura J. Zeman (right photo) ___________________________________________ Attending Fraser Roy (Chair) Laura Zeman (Vice-Chair)* Ken Nigon (Board Liaison) Sharon Israel Salvatore Anastasi J. Timothy Meigs* Amie Peele Carter Timothy J. Maier
Not Attending Kate Spelman
*Via Telephone 1. Welcome and introductions – We welcomed the members of the Committee and discussed the charge of the Committee to enhance the relationships and communications between the local and regional associations and AIPLA. Identified the need for additional members, with two current openings for committee members. 2. AIPLA Committee Liaison – Report from committee members of current liaison efforts with the AIPLA Committees. Develop additional actions, including future contacts and spot-lighting of certain committees during Roundtables.
4. Subcommittee Report – Report from subcommittee chairs of subcommittee activities. These subcommittees included: Emailer Subcommittee – Charged with crafting e-mailers to the regional and local associations, including obtaining content for the emailer, such as Patent and Trademark Boot camp updates, invitation to Women In IP national dinner, and AIPLA’s request for support to oppose legislation or participate as a signatory to an Amicus brief. Microsite Subcommittee – Charged with maintaining accuracy of committee’s microsite, including developing and updating content with committee information, reports, and minutes and increase accessibility to regional and local associations. Roundtable Subcommittee – Charged with developing discussion topics and organizing and hosting regional roundtable discussions with leaders of regional and local associations using GoToMeetings, Webinars, etc.
3. Roundtable Topic Development – We briefly summarized our committee’s goal with the roundtables to enhance communication between geographically positioned regional and local associations and AIPLA. Committee members will host roundtables for their local and regional associations and develop roundtable topics beneficial to those associations. Possible topics included: i. ii. iii. iv. 66
Legislative update Activities to assist local member obtain employment and/or additional skill sets Topics or activities successful to the local/regional association Best practices for local/regional association aipla bulletin
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IP Practice in Europe
Co-Chair: John H. Hornickel (not pictured) Co-Chair: Jonathan M. Madsen (photo) ___________________________________________ In conjunction with the Corporate Practice Committee and the IP Practice in Japan Committee, the IP Practice in Europe Committee sponsored a CLE session at the Spring 2010 Meeting in New York. Moderated by Georgann Grunebach, Chair of the Corporate Practice Committee, the speakers and topics were Germany’s Employee-Inventor Ownership Law Mark Wegener, Witte Weller & Partner • Stuttgart, Germany; In-House Experiences with European IP Rights Ownership Chen Wang, E.I. du Pont de Nemours and Company • Wilmington, DE; How US Assignment Issues Affect European Patent Rights Robert F. Scotti, Klarquist Sparkman, LLP • Portland, OR; Summary of Presentations from IP Practice
in Europe Committee’s 2010 Europe Trip John Hornickel, PolyOne Corporation • Avon Lake, OH; and Summary of Presentations from IP Practice in Japan Committee’s 2010 Japan Trip Mark Guetlich, SAP AG • Walldorf, Germany. All three Committees found this format worthy of repeating after the trips by the various IP Practice committees.
IP Practice in Japan
Co-Chair: Mark Guetlich (photo) Co-Chair: George W. Lewis (not pictured) ___________________________________________ Spring Delegation to Tokyo – April 19-22, 2010 A delegation of 26 committee members planned and executed on an in-person visit to courts, JPO, and counterpart organizations in Tokyo. The visit spanned four days of meeting and receptions, and included AIPLA President Alan Kasper and President-Elect David Hill. This year’s delegation also included five first-time delegates. Meeting presentations from JP organizations and AIPLA presenters are available on the AIPLA hosted committee web site. Highlights of the delegation visit include but are not limited to the following: Japanese Patent Office (JPO) & Trademark Meetings Meetings with Patent officials included a private meeting between JPO Commissioner Hosono and AIPLA President Alan Kasper, along with key leaders 2010 spring meeting issue
from both organizations. Among the topics discussed in this closed meeting was progress with Japanese Patent Law reform studies, status of JPO participation in P5 patent office harmonization efforts, JPO leadership in future Trilateral Patent Office efforts, and US Patent Reform Legislation. Open meeting topics with patent officials included a broad range of JP and US law and practice topics beneficial to a more robust understanding of issues from both sides. For the first time in 25 years of delegation visits, Cochair George Lewis and AIPLA President-Elect David Hill met with Trademark office officials including Director Natsume of the Multilateral Policy Office and six other office officials. This meeting, initiated by AIPLA co-chair George Lewis, was enthusiastically received by the Japanese officials and has opened the door to a new dimension in the growing relationship between AIPLA practitioners and Japanese officials. aipla bulletin
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IP High Court Once again the full IP High Court (~30 Judges) participated in a robust discussion of substantive topics. High Court Judges presented on Dual-track proceedings in Japan, and Trademark litigations. AIPLA presentations requested by the Court included recent CAFC damages decisions, and recent Ariad and Centillion decisions. This is a rare opportunity for candid exchange with Japanese judicial experts that is a highlight of the delegation visit.
Additional Meetings
Japanese Patent Attorney Association (JPAA)
Spring Meeting NYC – May 6-8, 2010
The well established relationship with JPAA includes a closed meeting for candid discussion of current topics in JP and US, and an open meeting attended by the general JPAA membership. In recent years the open meeting has become a must-attend event where significant Japanese continuing legal education credit is available. Attendance in the open meeting exceeded 300 last year, and this year included 400+ attendees – to the extent that seating has once again become a problem due to popularity of the event. One significant draw has been the popular ‘Mock Trial’ that includes a skit played out by AIPLA delegation participants. This year’s Mock Trial included a permanent injunction hearing.
A special committee was held for the first time at the 2010 Spring Meeting to facilitate the sharing of delegation visits from the IP Practice in Europe and the IP Practice in Japan committees. Other international practice committees are encouraged to join this Spring Meeting opportunity in future years so that information learned during external-facing AIPLA trips can be shared with the general membership.
AIPLA Hosted Reception The AIPLA hosted reception is an invitation only event for special guests and leaders of organizations from the various meetings throughout the week. This event is held at the Tokyo American Club and we are pleased that this is among the more effective international outreach events for AIPLA. Attendance has routinely expanded to include key academics and government officials located in or visiting Japan, as well as other international visitors in the Intellectual Property field that happen to be in Japan at the time of the reception. Japanese guests often comment that they rarely have an opportunity to see other Japanese colleagues from such a wide variety of entities even though most everyone is based in and around Tokyo. This event will continue in future years and we hope the reputation and effectiveness of this event will continue to grow through the years.
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Further meetings with Japanese organizations and associations include meetings with American Chamber of Commerce Japan (ACCJ), Japan Trademark Association (JTA), Japan Intellectual Property Owner Association (JPIA), Institute of Intellectual Property (IIP), Licensing Executive Society Japan (LES-J), US Embassy, and the International Association for Protection of IP (AIPPI) and Japan Federation of Bar Associations (JFBA).
This year’s joint committee meeting was sponsored by the Corporate Practice committee and included a panel of US and European practitioners as well as representatives of the IP Practice in Europe and IP Practice in Japan committees. Please contact either co-chair of the IP Practice in Japan Committee with questions or comments.
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IP Practice in Latin America
Chair: Roberto Capriotti (left photo) Vice Chair: James E. Larson (right photo) ___________________________________________ See PCT Issues.
IP Practice in the Far East Chair: William D. Fisher (left photo) Vice Chair: Ying Tuo (right photo)
___________________________________________ William “Skip” Fisher, Chair Ying Tuo, Vice Chair Kenneth Cho, Chair of South Korea Subcommittee Amber Sun, Chair of China Subcommittee Glenn Rhodes, Chair of Taiwan Subcommittee Joseph Root, Chair of India Subcommittee In 2010, the IP Practice in the Far East Committee (IPFEC) will continue its mission of (1) providing its members with updates on IP laws and issues in South Korea, China, Taiwan, and India; (2) providing IP professionals in those jurisdictions with updates on US IP laws and issues; and (3) cultivating exchanges and cooperation between AIPLA and like organizations in those jurisdictions. The IPFEC is having a busy year. In October 2009, the IPFEC received a delegation from the All China Patent Agents Association (ACPAA). We arranged for the ACPAA delegation to visit Fitzpatrick, Cella, Harper & Scinto in New York (a big thank you to the Fitzpatrick firm for hosting the delegation!). We also arranged and accompanied the delegation on visits to the USPTO, the ITC, and George Washington Law School. The delegation met with AIPLA leaders during the Annual Meeting to discuss future cooperation between the two associations. At the Annual Meeting, the IPFEC also joined a meeting between the Korean Patent Attorneys Association (KPAA) and AIPLA leaders to discuss future cooperation between the associations. In January 2010, the IPFEC received a delegation from the China IP Society (CIPS). We arranged and accompanied the CIPS delegation on visits to the 2010 spring meeting issue
USPTO, the Federal Circuit, and Qualcomm (a big thank you to Qualcomm for hosting the delegation!). The delegation met with AIPLA leaders during the MidWinter Institute to discuss future cooperation between the two organizations. At the Spring Meeting in New York in May, the IPFEC held a committee meeting with three invited speakers. Daisy Wang of Lee & Li in Taipei, Taiwan gave a presentation on amendments to the Taiwan Patent Act. Tim Maier of Maier & Maier in Alexandria, Virginia gave an update on Chinese patent law. And Charles Suh of the Finnegan Henderson firm presented on ITC proceedings involving Korean companies. Skip Fisher, Chair of the IPFEC, and Ken Cho, Chair of the Korean Subcommittee, are coordinating a concurrent session on Hot Topics in IP Procurement & Enforcement in East Asia for the 2010 Annual Meeting. The topics for this session are (1) Patent Litigation Under China’s New Patent Regime; (2) Litigating in Taiwan’s IP Court: What’s the Verdict?; (3) A Judge’s Perspective on IP Litigation in Korea; (4) AntiCounterfeiting Strategies in Asia; and (5) Asia’s Innovation Marketplace: Buying and Selling IP Assets. In July 2010, the IPFEC will send delegations to South Korea, China, and Taiwan. The delegations will meet with IP-related government and private organizations; continue fostering AIPLA’s relationships with these organizations, and exchange ideas and information on IP subjects.
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Law Practice Management
Chair: Ashok Mannava (photo) Vice Chair: Steven Auvil (not pictured) ___________________________________________ One of the primary goals of the Law Practice Management Committee is to prepare the Economic Survey. The Survey is generated every two years and this is an off year. However, we have established a subcommittee for the Economic Survey, and the Subcommittee is putting together a team of diverse individuals to review the questions for the next Survey. The team will evaluate the questions from the last Survey and propose revisions and new questions for the next Survey. We have also established a Corporate Practice Subcommittee that will liaise with the Corporate Practice Committee on all matters concerning law practice management for corporate practitioners.
We are currently working with the Corporate Practice Committee on a program for one of their upcoming monthly meetings. We would also like to establish a subcommittee for solo and small firm practitioners, and we are looking for volunteers to participate. For the Spring Meeting, we held a program directed to business development and in particular “Closing the Deal.” The program provided tips for generating business from existing contacts.
Law Students
Chair: Christopher McKeon (left photo) Co-Chair: Jesse Ormsby (right photo) ___________________________________________ The Committee has no new business to report.
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Licensing and Management of IP Assets Chair: Paul S. Hunter (left photo) Vice Chair: Kevin A. Wolff (right photo) ___________________________________________ 2010 Spring Meeting: The Licensing and MIPA committee held a one hour Continuing Legal Education (CLE) session at the 2010 AIPLA Spring meeting in New York city on the general topic of best practices in IP Licensing and Management. Paul Hunter moderated the session. There were three speakers, Keith Derrington an attorney with Bracewell & Giuliani, LLP, William “Skip” Fisher an attorney with Perkins Coie, and Kristyne Bullock an attorney with Flaster Greenberg. Keith Derrington presented on the topic of licensing considerations in view of the Forest Group v. Bon Tool Co. patent false marking case in which the plaintiff, Forest knowingly marked ‘515 patent on articles not covered by the ‘515 patent. The district court found that Forest Group had falsely marked a stilt product and fined them only $500. On Appeal, the Federal Circuit court agreed that the Forest Group had falsely marked the stilt product, but held that a separate offense of false marking occurs each time an “article” is falsely marked. The Federal Circuit court also held that Forest Group’s false marking liability should be reassessed at highest sales price of the stilt article sold, reasoning that depriving the false marker of more than it received fulfills the deterrent goal of 35 U.S.C. § 292. It was noted also that because of the increase in the amount of fines available (up to amount of highest sales price) and the percentage of the fines that a person bringing a false patent marking case may make (50% of the fines), numerous patent false marking cases have been filed since the Forest Group decision (although mostly by one firm). As a result of such high liability, Keith recommended that patent licenses should address patent marking responsibility, standards, accountability and reporting procedures. Skip Fisher presented on the topic of licensing with a non-practicing entity (NPE). Skip noted that even though recent case law all but eliminated the possibility of an NPE asserting their patent rights ever getting a Preliminary Injunction, there are numerous reasons 2010 spring meeting issue
why a company accused of infringing a patent would consider taking a license rather than litigating the matter. Although there is less chance of an NPE patent holder getting permanent injunction under the EBay, Z4, Paice lineage of court decisions, there is still the potential for high damage award, e.g., median damages award for NPEs = $12 million, and median damages award for practicing entities (PEs) = $3.4 million. Although, there is more potential for compulsory license under the Ricoh Company v. Quanta Computer (W.D. WI) case, there is also the cost of patent litigation to consider ($$$) and the stigma that goes with the uncertainty of a patent litigation case against a company, noting that the uncertainty of winning a trial when there is presently a 67.4% win rate at trial for plaintiffs. From this proposition, Skip gave a number of examples of license language for use with NPE’s. The language focused on determining license fees and how to “achieve patent peace” so that the matter was resolved in a positive manner once and for all. Kristyne Bullock spoke on best practice strategies for corporate IP managers related to building a successful overall comprehensive in-house IP management system and program that covers all aspects of IP including patents, trademarks, trade dress, copyrights, and trade secrets. Kristyne gave several suggestions on how a corporate IP manager can better manage IP, including development of specific forms, IP boot camps, use of a prior art library, creation of an IP committee, and managing outside counsel costs. We commend to you to view the slide presentations and copies of the papers related to these presentations and topics is available to meeting registrants and may be found on the AIPLA website. ___________________________________________ 2010 Mid-Winter Institute The Licensing and MIPA committee, including Chair Paul Hunter and Vice-Chair Kevin Wolff, met at the 2010 AIPLA Mid-Winter Institute in La Quinta, California aipla bulletin
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for a working meeting. During the working meeting it was agreed that the Committee would continue the same format of meeting activities for the next year as we have for the last year. As such, our committee will host a CLE qualifying program at the 2010 Spring Meeting and the 2010 Annual Meeting. Further, our Committee will hold a working meeting at the 2011 Mid-Winter Institute. In addition, our committee will continue to support of general session and will be open to working jointly with other AIPLA committees to bring high quality interesting CLE session about licensing and the management of IP assets.
In addition, our committee agreed to continue work on a number of other active committee matters. The active committee matters include redefining our subcommittees and having a representative from each one make reports at the Mid-Winter Institute, defining and actively participate and evaluating involvement with other IP organizations such as Licensing Executive Society (LES), Intellectual Property Owners Association (IPO) – Licensing Committee, and the International Trademark Association (INTA). Further, our committee will continue involvement with legislative and law developments related to licensing and the management of IP assets.
Membership
Chair: Jerry R. Selinger (left photo) Vice Chair: Bryan W. Bockhop (right photo) ___________________________________________ The Membership Committee and the Young Lawyers Committee held a joint meeting to discuss how to become more involved in the AIPLA. Speakers included Elizabeth Ann “Betty” Morgan of the Board of Directors, Michael Valek, Vice Chair of the Young Lawyers Committee and Bryan Bockhop, Vice Chair of the Membership Committee. We discussed how to become involved in committee leadership, board membership and various other opportunities for becoming involved in AIPLA.
After the session, we held our fourth Solo/Small Firm Reception, sponsored by Jamison IP Services. The Reception was well attended by small firm practitioners, solo practitioners and larger firm practitioners who were considering starting a small practice.
Mentoring
Chair: Elizabeth Burke (left photo) Vice Chair: Daphne C. Lainson (right photo) ___________________________________________ The Mentoring Committee presented a program at the Spring meeting directed to mentoring in a corporate environment. The meeting focused on assisting attorneys and agents that have recently transitioned in-house, or
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moved to a new position within a company, through mentoring. Georgann Grunebach of Fox Group Legal shared her tips and tricks on making the transition to an in-house environment to assist transitioning attorneys to develop the knowledge and tactics necessary to survive the transition.
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The Committee also presented a panel discussion comprising: Georgann Grunebach and Chrystina E. Zelaskiewicz (USPTO), her mentee; Chen Wang (E.I. du Pont de Nemours and Company) and Rakesh Mehta (Petter Anderson & Corroon, LLP), her mentee; and Lisa Jorgensen (STMicroelectronics, Inc.), a mentor and co-chair of the Evaluations Subcommittee. The panel provided their insights on a successful mentor/ mentee pairing, and how to make the most of the Program. In each pairing the mentors and mentees cooperated to make the pairing successful, with a common theme being the drive of each mentee to achieve well defined goals that they set.
Hetal Kushwaha, chair of the Pairings Subcommittee, was on-site at the meeting to sign up new mentors and mentees. The Committee is actively recruiting volunteers for participation in its Subcommittees and the Mentoring Program. All volunteers are welcome to contact the Chair, Liz Burke (elizabeth.burke@finnegan.com) or the Vice-Chair, Daphne Lainson (dclainson@smartbiggar.ca). We look forward to seeing you at the Annual meeting!
Online Programs
Chair: Shannon Beech (left photo) Vice Chair: Brad Chin (right photo) ___________________________________________ MISSION: Our Mission is to provide high quality, affordable education by means of online media. Our vision is to develop and prepare technological options and vendors to be able to work with other groups within the organization to identify, develop, and provide, efficiently and effectively, online program content to AIPLA as a whole and to their constituents and to facilitate others in AIPLA to utilize online media for program delivery. EXECUTIVE SUMMARY: The focus in the past calendar year was the preparation and presentation of live online CLE programs based on two primary platforms, KRM and Citrix GoToWebinar. In 2009, Online Programs successfully organized and hosted 13 KRM programs (with additional quick turnaround programs on hot topics), and 8 Citrix GoToWebinar programs. In 2010, we are on track to provide 17 revenue-generating programs per calendar year with the possibility of quick turnaround programs, as appropriate. Moreover, the Committee is developing expertise in the delivery of live online programs through other low cost vehicles in cooperation with other AIPLA Committees. The Committee continues to provide live webinars at the AIPLA Stated Meetings. For example, a third live webinar was organized and hosted for the Corporate Practice and Professionalism 2010 spring meeting issue
and Ethics Joint Committee meeting at the 2010 MidWinter Institute. As the number of programs has grown, Online Programs has increased the number and the practice diversity of our coordinators through the TSC Liaison program and help from the Young Lawyers Committee. To train these liaisons, we have initiated a mentorship program to facilitate the sharing of institutional knowledge between all coordinators. In an effort to keep aware of the many activities of the various AIPLA committees, we have initiated an internal liaison program to reach out to the AIPLA committees on a regular ongoing basis. Additionally, Online Programs continues to work to build and maintain an active and growing catalog of enhanced recorded content from the Stated Meetings, previous online programs and other AIPLA educational events, including providing support for the new live streaming of the Stated Meetings. Further, in cooperation with the Membership Committee, Online Programs created a video for new and potential members to be placed on AIPLA’s website with capture for this video having taken place at the 2009 Spring Meeting. SPECIFIC TASKS UPDATE AND GOING FORWARD: The Online Programs Committee has taken on the following specific tasks to advance the overall goal of the Committee to put on high quality, diverse and financially responsible live, interactive programs. In 2010, Online Programs strives to provide 18 programs aipla bulletin
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per calendar year at a pace of 3 programs every 2 months with the flexibility to offer additional rapid response programs. We have assigned and tasked committee liaisons to substantive committees to facilitate the development of online content. We have focused on developing expertise on the GoToWebinar platform and accompanying procedures through our subcommittee by identifying and training coordinators to host, train, and facilitate webinars for the substantive committees in AIPLA. For example, this subcommittee regularly assists the Corporate Practice and Electronic and Computer Law Committees in performing online programs with Citrix GoToWebinar. In April of 2010, this subcommittee began assisting the International Education and Patent Litigation Committees with performing online programs using Citrix GoToWebinar. An appendix is currently being developed to these procedures in cooperation with other AIPLA Committees, as needed, and has already been completed for the Corporate Practice Committee. To date, the Subcommittee has assisted substantive committees in AIPLA with organizing and hosting six online programs using Citrix GoToWebinar. The goal is to have subcommittee members available to assist other AIPLA committees to use the Citrix platform and reduce the workload on AIPLA headquarters staff. In 2010, the Committee is continuing its support of AIPLA’s sponsorship of the Career and Practice Management series of webinars that is complimentary to all AIPLA members. This series has been performed on the GoToWebinar program with one program offered every 1-3 months. The five programs on January 23, 2009, March 19, 2009, July 22, 2009, January 22, 2010 and April 30, 2010 were very successful. In order to continue offering these programs we have created a Career and Practice Management Webinars Subcommittee that will focus on developing content for these webinars. The co-chairs for the Career and Practice Management Webinars Subcommittee are Hetal Kushwaha and Sheetal Patel. The work on reinvigorating the microsite is ongoing with a subcommittee ensuring that procedures, quality data and attendance parameters for completed programs are updated on an ongoing basis. OVERALL APPROACH: The Committee continues to pursue three major avenues of approach to providing online programs. Recorded Live Presentations. AIPLA continues to explore various platforms for recording live meeting 74 
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content, including recording from live streaming video of the stated meetings. The Online Programs Committee will be working AIPLA staff to assist in this endeavor. Live Moderated Online Programs. The Committee continues to work with KRM to produce and deliver high-end, live, interactive online CLE programs. We continue to provide online programs at a rate of three programs every two months with the flexibility to do 1-3 additional rapid response programs. We anticipate maintaining this frequency of programs in 2011. Internally Administered Web-based Programs. We are using Citrix GoToWebinar as our platform for low cost programs. We have appointed Committee members under the guidance of the Chair and ViceChair to help with coordinating this class of online programs, and as committee numbers increase, it is likely that several members will rotate through this role for respective programs. Our goal is to assist the Corporate Practice Committee to conduct their committee programs to achieve their goals using the Citrix GoToWebinar platform. At this time, the Corporate Practice Committee, Electronic and Computer Law, International Education, and Patent Litigation Committees have conducted programs using this platform. We are also using this platform to present the Career and Practice Management series of webinars sponsored by AIPLA as a value-added service to all AIPLA members. We are currently examining the possibility of using the Citrix platform to perform non-CLE, attendee-paid programs. PROGRESS REPORT ON LIVE, INTERACTIVE ONLINE PROGRAMS: Financials: We have revised the current pricing structure with a goal of obtaining a break-even point at about 100 sites. We are continuously monitoring our financial returns to ascertain the economic success of the programs. Quality (Absolute): The reviews from the attendees through the evaluations have been very good, with a high percentage filling out the online evaluation (compared with the percentage who evaluate the stated meetings). The quality has been about the same or better than the stated meetings. The Programs: A history of the live interactive seminars that Online Programs has completed since December 2004 is available on the Committee microsite. 2010 spring meeting issue
Future: The following is our schedule of upcoming programs for 2010: ONLINE PROGRAMS SCHEDULE Date
Program Substance
Aug 4/10 The Supreme Court’s Reshaping of the IP Landscape in Recent Years (Speaker: Samson Helfgott) Aug Navigating the Bilski 18/10 Shoals - Protecting Process Inventions after Bilski v. Kappos Sep 1/10 Cloud Computing: Legal Challenges Including e-Discovery, Privacy, Compliance, and IP Protection Sep Patent Prosecution 15/10 – Drafting Patent Applications with International Concerns
Program Coordinators Hetal Kushwaha Brad Chin
To increase coordinators and to better the content of programs to the varied AIPLA membership, Online Programs has initiated the TSC Liaison Program with the collective trademark committees to expand the online offerings to members in the trademark practice groups. We have also received a large number of volunteers from the Young Lawyers Committee, all of whom have been matched up with experienced coordinators for training and mentoring purposes. We have instituted an internal liaison program within our committee in which we have matched our coordinators with AIPLA’s substantive committee. Our coordinators will be reaching out to the chairs and vice-chairs of AIPLA’s substantive committee on a regular and ongoing basis to ensure that we are able to provide programs that are current, of interest and are on the hottest topics in intellectual property law.
Orin Paliwoda Arlene Neal
Shannon Beech Jim Berkowitz Kevin Kuzendorf
We are also anticipating a quick turnaround program on the patent reform bill when it comes out. We continue to have dialog with various committees about content they would like to see and/or help develop. We have been assisting the Corporate Practice, Electronic and Computer Law, International Education, and Patent Litigation Committees in performing online programs using GoToWebinar on topics of significant interest for these committee members. The cost of these programs is offset by seeking sponsors to pay a sponsorship fee to cover overhead costs. We are examining the potential to use the GoToWebinar platform to perform pay-per-use nonCLE programs, including the potential to do a series of programs adapting the secretaries and paralegal AIPLA conference to the online format. 2010 spring meeting issue
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Patent Agents
Chair: John Orange (left photo) Vice Chair: Esther M. Kepplinger (right photo) ___________________________________________ The Patent Agents Committee held a joint meeting with the USPTO Patent-Relations Committee at the Spring Meeting. We provided presentations and held a discussion of the recent statistics, including pendency, actions per disposal and allowance rate and proposed changes to practice from the USPTO.
Patent Law
Chair: Nicholas P. Godici (left photo) Vice Chair: Barbara A. Fiacco (right photo) ___________________________________________ At the Spring meeting, the Patent Law Committee held an informal “Think and Drink” discussion titled “Everything You Wanted to Know” with veterans of the USPTO. Our veterans included Esther Kepplinger, former Deputy Commissioner for Patent Operations, Steve Kunin, former Deputy Commissioner for Patent Policy, Lissi Marquis, former Supervisor of the Special Reexamination Unit, and Bill Smith, former Administrative Patent Judge at the BPAI, and Nick Godici, former Commissioner for Patents. Refreshments were provided by Foley Hoag, LLP. The panelists answered questions and provided information on the inner workings of the USPTO and gave their insight on current issues facing the USPTO and the patent community.
and identifying concrete examples applying the KSR decision; (3) a § 101 Subcommittee that is tracking developments in the law of subject matter eligibility and identifying concrete examples applying In re Bilski; (4) a § 112 Subcommittee that is focusing on issues related to enablement and written description and, in particular, the disclosure requirements associated with a means-plus-function claim; (5) an Inequitable Conduct Subcommittee that is tracking developments in inequitable conduct law and how it is being applied, particularly in district court cases; and (6) a “Product-byProcess” Subcommittee. Please contact Nick Godici, Chair, at ngodici@bskb.com or Barbara Fiacco, Vice Chair, at bfiacco@foleyhoag.com, for more information on how to get involved with the Committee’s work.
The Patent Law Committee is continuing its efforts to inform its members of the latest developments in patent law, through its committee meetings and its subcommittee work. The Committee will be examining the Subcommittee structure in light of changes in the administration and recent case law developments to ensure that all areas of patent law are covered. Our current subcommittees include: (1) a Patent Office Rules Subcommittee that is focused on proposed rule changes and on tracking important cases related to rule changes; (2) a § 103 Subcommittee that is tracking developments in the law of obviousness 76
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Patent Litigation
Chair: Robert W. Payne (left photo) Vice Chair: Dianne B. Elderkin (right photo) ___________________________________________ At the spring meeting in New York, the Patent Litigation Committee put on a program entitled, “I Wish I Knew Then What I Know Now.” A panel of speakers who had done IP litigation at outside counsel firms before going in house, and one speaker who had done the reverse, spoke on insights gained from the experience.
The Patent Litigation Committee continues its important work in advising the Board on matters of patent litigation pleading and jury instruction matters.
At the fall meeting in Washington, DC, the Patent Litigation Committee will team with the Patent Law Committee to put on a program on Bilski: The Supreme Court Has Spoken. The Court’s decision was released in June. This committee meeting promises to be one of the first AIPLA meetings to discuss the Supreme Court’s take on this important issue.
Patent-Relations with the USPTO
Chair: Charles E. Van Horn (photo) Vice Chair: Gregory D. Allen (not pictured) ___________________________________________ See Patent Agents Committee Report.
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PCT Issues
Chair: Carl Oppedahl (left photo) Vice Chair: Jay A. Erstling (right photo) ___________________________________________ The IP Practice in Latin America Committee held a two-hour joint committee session with the PCT Issues Committee. The title of the program was “The PCT in Latin America: Recent Developments.” The program was moderated by PCT Issues Committee Chairman, Carl Oppedahl, and included three distinguished speakers from three separate Latin American countries. First, Mr. Jamie Silva Barros from the law firm of Silva & Cia in Santiago, Chile spoke about his country’s very recent ascension to the PCT and what that has meant for Chile and what may be expected in the months and years to come. Secondly, Mr. Luis Diego Castro from the law firm of Castro & Pal in San Jose, Costa Rica spoke about his country’s trials and tribulations after ascending to the PCT 11 years ago. Finally, Mr. Ignacio
Manuel Sanchez from the law firm of Marval, O’Farrell & Mairal in Buenos Aires, Argentina spoke about his country’s current non-membership to the PCT, his perspective on why that may be and what is the current feeling among the Argentine IP Bar to ascending to the PCT. Following the speaker presentations, both Committees provided a brief update on the status of their respective subcommittees.
Professional Programs
Chair: J. Michael Martinez de Andino (left photo) Vice Chair: Steve Malin (right photo) ___________________________________________ The Professional Programs Committee conducted its meeting on May 7, 2010. Approximately thirty five Committee members attended the meeting in person, and four members attended by telephone. Among the topics discussed, the Committee continued its planning of the proposed Annual Meeting Program. Committee Chair J. Michael Martinez thanked the Committee for its hard work in planning the 2010 Annual Meeting and also answered a number of questions from Committee Members relating to Committee business. The Committee also briefly discussed issues pertaining to the 2011 Spring Meeting.
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Professionalism and Ethics
Chair: Guy Donatiello (left photo) Vice Chair: Raymond Van Dyke (right photo) ___________________________________________ The Committee has no new business to report.
Public Appointments
Chair: Rick D. Nydegger (left photo) Vice Chair: Michael K. Kirk (right photo) ___________________________________________ The Committee has no new business to report.
Public Education
Chair: Evelyn H. McConathy (left photo) Vice Chair: Salvatore Anastasi (right photo) ___________________________________________ Vision: Educate the public and its representatives on the benefits and value of intellectual property through greater understanding of its meaning, and to promote cooperation on this effort with the rest of the IP community, while pursuing similar goals and objectives with other AIPLA Committees. Strategic Goals to Achieve Vision: · Develop a simple consensus message on the value and history of Intellectual Property & Patents · Find creative ways to distribute the message across multiple channels of communication to a spectrum of audiences · Work to cooperate with other members of the IP community to learn from their experience and align messages and efforts towards common goals 2010 spring meeting issue
· Both implicitly and explicitly, depending on the audience, enhance the profile of AIPLA and its roles and provide understanding of what the organization is able to provide to its members, the IP community, the government, and the public. The current action plan is to work in parallel on several levels of development. Using the themes and other material the Committee has developed in working with AIPLA and the various committees, groups, and resources the Committee is working to develop a better understanding of the means to effectively communicate the message and distribute materials to the identified target audiences, primarily initially to build an understanding of the needs of key distribution channels to better guide theme and message development. The Committee leadership with the help aipla bulletin
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of the Board and AIPLA Headquarters will reach out and leverage relationships in the IP Community to further their specific goals and missions. Hill Day: This Committee joined with USPTO and WIPO to celebrate World IP Day on April 26th, 2010 with a Joint Program and reception entitled “Protecting Tomorrow: IP and Green Technology.” This event was held on Capitol Hill in the Rayburn House Office Bldg. Speakers included David Kappos of the USPTO, as well as James Poole from WIPO, our own Q. Todd Dickinson, Hon. Victoria Espinel, US IP Enforcement Coordinator, Ambassador Ronald Kirk, US Trade Representative, Hon. Francisco Sanchez, and Chairman John Conyers, with a focus on advocacy and the importance of Intellectual Property to protect and advance new technologies, particularly Green Technologies. Our goal remains to increase awareness and educate others about Intellectual Property, and we are delighted to have had this opportunity, with the full support of the AIPLA Board and Headquarters, to share this program with members of Congress. Such an event would, of course, not have been possible without the support of the Headquarters staff, as well as substantial support from the USPTO and WIPO. Our goal is to set up an event of this type on a recurring, possibly annual basis. Website: The Creativity in Bloom website was launched in September 2009, and we continue to focus on populating that site with articles and reports relating to information that is expressly positive or negative regarding intellectual property rights, as well as reports from the Committee. Michael Stewart is coordinating this effort with Vice Chair Sal Anastasi, and AIPLA Staff members, Randy Sagara and Zehra Fazal. As a key feature on the Website, we continue to report links to relevant articles on blogs found by our many volunteer Blog Monitors, under the direction of Brian Stanton to review the many blogs that discuss IP, with the goal being to report only pro-IP or con-IP articles and comments. The volunteers make weekly reports to Brian, or more often as needed, and then Brian assembles a weekly summary report and links to be posted on the website. This is entirely a monitoring project, initially to determine trends and to provide information to our membership, but there are still issues that need to be resolved to permit better posting of this information. We have also been in contact with key Committees on Patent, Trademark and Copyright at AIPLA to ask for volunteer blog monitors, and also to determine if identified information in the weekly reports would be useful to them for their membership. The 80
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Young Lawyers and Corporate Committees have also indicated an interest. Distribution Channel/Youth Education: Initially, the Committee is focusing on three distribution channels: Youth Education, Corporate Committee, and Internet Committee with others to follow as help and experience is gained and/or as specific needs and volunteers arise. The Subcommittees will each start by identifying what they will need to best succeed in distribution and in what form to help in development and tailoring of the message to suit the appropriate distribution channel. The Youth Education Subcommittee under Vice Chair Sal Anastasi completed, tested and posted on the Creativity in Bloom website a Program for use by our membership. A Survey is under development and will be posted on the website with the Program to gather feedback for refining and enhancing the Program. The Subcommittee is also specifically working to interact with the InventNow group within the National Inventor’s Hall of Fame for their insight into successfully getting out into the schools and effectively reaching the students as well as reaching out to the Copyright Society for insight into their anti-piracy outreach to students. While initially focused on younger children, the Subcommittee has also started efforts to build resources for university students as well through John Calvert at the PTO. Cooperation/Contact with the IP and Innovation Community: The Committee is working with AIPLA Headquarters and its Board liaisons to coordinate contacting other organizations, such as the National Inventors Hall of Fame, the Federal and District Courts, the PTO and Copyright Offices, IPO, ABA-IL, INTA, and the Copyright Society to reach out for shared insight and to establish a foundation for potential cooperation. Once contacts are established, the Committee will identify a liaison for each group it has or builds a relationship with (possibly one with a pre-existing relationship which can be leveraged) to have a single point of contact to reduce potential confusion and avoid overloading or interfering with mutual efforts.
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Special Committee on the FDA
Chair: Freddie K. Park (left photo) Vice Chair: Denise M. Kettelberger (right photo) ___________________________________________ Our mission is to provide AIPLA members a forum for discussion, education, networking, and understanding of Federal Regulatory Law and practice, particularly as this practice interacts with US Intellectual Property Law. The Committee has had a very busy inaugural year. 2010 Spring Meeting – Joint Committee Educational Session At the Spring Meeting, we along with the Biotechnology and Chemical Practice Committees held a Joint Committee Educational CLE Session presenting two topics: (1) The Hatch-Waxman Act; and (2) the recently-enacted Biosimilars Legislation.
Hybrid Pharma (both innovative and generic pharmaceuticals Guy Donatiello, Vice President Intellectual Property, Endo Pharmaceuticals Holdings, Inc. Biosimilars Legislation Steven Nash, Connolly, Bove, Lodge & Hutz LLP, Wilmington, Delaware, presented a comprehensive overview of the recently enacted biosimilars legislation. Copies of the papers and powerpoint presentations will be posted on the Committee’s webpage.
Hatch-Waxman
Upcoming 2010 Annual Meeting
The discussion of the Hatch-Waxman Act featured three speakers representing three different perspectives regarding the Hatch-Waxman Act. Each speaker provided his views on the historical reasons for the passage of the Hatch-Waxman Act, how the Act affects the pharmaceutical industry and, in particular, their segment of the industry, and provided their individual take on the current state of affairs and recommendations for improving the situation.
Our committee is planning a Joint Committee Meeting with the Biotechnology Law Committee for the Annual Meeting. The topic of the meeting is “Pinning down a moving target: patenting biotech in uncertain times and bringing it to market.”
The 3-member panel provided their perspectives on this topic in a very lively point-counterpoint format. Our speakers were:
The presentations will focus on two specific topics: (1) patent prosecution strategy in view of the recentlyenacted biosimilars legislation; and (2) updates on the FDA approval process/experience with biosimilars and the European biosimilars regulatory approval experience.
Innovator Pharma Bob Armitage, Senior Vice President and General Counsel, Eli Lilly Generic Pharma D. Christopher Ohly, Partner, Schiff Hardin LLP, Washington, DC
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Special Committee on Genetic Resources, Traditional Knowledge, and Folklore Chair: Thomas T. Moga (left photo) Vice Chair: DeAnn F. Smith (right photo) ___________________________________________
During the Spring Meeting in New York, the Special Committee on Genetic Resources, Traditional Knowledge & Folklore focused on traditional knowledge. This topic was an appropriate follow-up to the discussion on genetic resources held during our meeting at the Mid-Winter Institute. Matt Adams from AJ Park presented on the New Zealand Patents Bill. The Bill contains provisions to ensure that the interests of the indigenous Maori people are protected. Matt discussed the historical background in New Zealand that includes a Treaty (The Treaty of Waitangi) signed in 1840 between European settlers and Maori. New Zealand is currently waiting for a report from a Waitangi Tribunal that will clarify an enquiry into indigenous flora and fauna and cultural intellectual property.
knowledge or from indigenous plants or animals. If so, the Committee will advise whether commercial exploitation is likely to be contrary to Maori values. Gustavo de Frietas Morais of Dannemann Siemsen presented on the state of traditional knowledge in Brazil. Brazil has a long history of carefully protecting its traditional knowledge, and is recognized as one of the leaders in this area. Gustavo provided a lively discussion of this topic. After the discussion on traditional knowledge we held a business meeting to discuss our program for the Annual Meeting and to look beyond that to the future of the Committee.
The Bill once enacted will establish a Maori Advisory Committee. The Maori Advisory Committee will advise the Commissioner of Patents (on request) on whether an invention is derived from Maori traditional
Special Committee on Legislation Chair: Sharon A. Israel (left photo) Vice Chair: Rick D. Nydegger (right photo) ___________________________________________
The Special Committee on Legislation is a special committee established to assist the AIPLA with its advocacy efforts. The Committee’s goals are twofold: (1) As requested, this Committee works with the appropriate substantive committees to help prioritize and analyze issues and proposed positions, both pro and con, relative to legislative proposals which come before the Board for its consideration; and (2) The Committee also serves as a resource to assist the Board, as instructed or requested from time to time, in developing a proposed agenda of legislative matters for the Board’s consideration and possible adoption. 82
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The Committee structure includes a Core Group and Working Groups for specific substantive areas, with Core Group liaisons to each Working Group. The Committee currently has 5 Working Groups: Patents/Litigation, PTO Agency/Practice, Copyrights, Trademarks, and Industrial Designs. The members of the Legislation Committee come from the leadership of substantive committees, the AIPLA Fellows, and others with specialized knowledge.
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Special Committee on Mergers and Acquisitions
Chair: Nanette S. Thomas (left photo) Vice Chair: Ira J. Levy (right photo) ___________________________________________ The Committee has no new business to report.
Special Committee on National IP Practitioner Associations Worldwide Chair: Mark Guetlich (photo) Vice Chair: Michael K. Kirk
On March 10-12, 2010, the Committee held the first Global IP Practitioner Association Summit at the Gaylord National Hotel in Washington, DC. This Summit was a first step toward forging a framework for future cooperation among leading national and international IP practitioner associations worldwide.
Associations hosted as observer participants included - American Bar Association/IPL Section (ABA-IPL); Asian Patent Attorneys Association (APAA); Asian Patent Attorneys Association –India Group (APAAIndia); and Fédération Internationale des Conseils en Propriété Industrielle (FICPI).
Representatives from 20 national and international IP practitioner associations were invited to attend the Summit. A primary goal of the Summit was to identify critical issues that face all IP professionals worldwide and to forge a framework among the associations for future cooperation to address the identified issues.
The Summit program was designed to be hands on and intensely interactive to facilitate brainstorming and discussion in a ‘round table’ format. This atmosphere of open participation was a roaring success. The 4 primary round-table discussion topics included:
Associations represented in this first Summit included – The Institute of Patent and Trade Mark Attorneys of Australia (IPTA); Associação Brasileira da Propriedade Intelectual (ABPI); Intellectual Property Institute of Canada (IPIC); All-China Patent Agents Association (ACPAA); Compagnie Nationale des Conseils en Propriété Industrialle (CNCPI-France); Patentanwaltskammer (PAK-Germany); Israel Bar Association, Intellectual Property Committee (IBA/ IP Committee); Japan Patent Attorneys Association (JPAA); Korea Patent Attorneys Association (KPAA); Association of Singapore Patent Agents (ASPA); Colegio Oficial de Agentes de la Propriedad Industrial de España (COAPI-Spain); Chartered Institute of Patent Attorneys (CIPA –UK); and American Intellectual Property law Association (AIPLA).
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Topic 1 – Panel discussion of hopes, expectations, what works and what doesn’t Topic 2 – Advocacy needs & desires within and outside domestic environments Topic 3 – International educational exchanges through online programs Topic 4 – International best practices and communications At the conclusion of the Summit, AIPLA President Alan Kasper and President Elect David Hill lead the Summit participants in the selection of a steering committee to provide future guidance for the assembled associations. A mutually agreeable press release was drafted and released to summarize progress of the Summit and expected next steps. One key next step is the piloting of two international online programs through this spring and summer, and a meeting of steering committee members this Fall to analyze results to date and specific actions to lead the group into the new year. aipla bulletin
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Please contact the Chair Mark Guetlich or Board Liaison & President Elect David Hill for further information or discussion as needed. Special thanks to AIPLA President Alan Kasper for his underlying idea and leadership for this Summit. A significant debt of gratitude goes to the AIPLA staff for their endless expertise in executing major Summit events such as
this. A final thanks to special committee members, AIPLA executives and AIPLA board members that served dutifully to plan and staff the round table discussions.
Special Committee on Standards and Open Source
Co-Chair: Michele Herman (left photo) Co-Chair: Douglas Luftman (right photo) ___________________________________________ The Committee organized two programs for the AIPLA Spring Meeting held in New York City. The first session, which included a panel discussion, was entitled “Avoiding Open Wounds: How to Deal with Open Source Licensing Issues from an In–House Perspective.” The panel presented the fundamentals of open source licensing. The presenters also discussed the hallmarks of open source compliance issues and options for the open source licensee when license provisions are not acceptable. In addition, practice tips regarding client counseling for common open source license problems and implied licensing issues were given. The panel wrapped up with a presentation on in-house management of open source licenses. The second session, which was held jointly with the Committee on Emerging Technologies, was entitled “Open Innovation and Social Networking Communities: Ownership and Licensing of Intellectual Property.” The focus of this panel discussion was on available tools and how these tools enable collaboration that results in the sharing and creation of intellectual property. The panel discussed issues associated with Open Innovation and how attorneys may counsel their clients to avoid pitfalls associated with Open Innovation. They also provided ways that online communities could mitigate IP risks. Participants also heard a corporate perspective on policies that address employee participation in online communities. The panel and participants concluded with an open discussion about the benefits and risks of Open Innovation. The Committee’s efforts in 2010 continue to focus on several topics. In particular, the Committee filed comments 84
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regarding the China National Institute of Standardization (“CNIS”) on the Draft National Standard Disposition Rules for the Inclusion of Patents in National Standards. Although the group contended with issues, such as a lack of a definitive English translation, the comments were filed on time. These comments followed comments that were made to the Standards Administration of China (SAC) late last year regarding SAC’s draft regulations. The relationship between CNIS and SAC remains unclear. CNIS has dissected the standards process into five or six stages. These rules are not regulatory, only advisory. They are more in line with international norms, with no stated penalties and no compulsory licensing. There are, however, many disclosure obligations which the Committee discussed in its comments. The Committee continues to collect information such as forms, checklists, guides, and procedures, as well as practical tips, as a resource for AIPLA members. The Committee is working on an OSS license comparison chart which categorizes attributes of twenty of the most widely used open source licenses. Upon completion, this chart may be used by AIPLA members as a quick reference tool. Another central activity of the Committee is to report on relevant lawsuits, enforcement actions, government policies, regulation, and legislation that may be of interest to AIPLA members in the areas of standards and open source. Recent examples include (1) the European Commission’s Draft Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements (SEC (2010) 528/2) and (2) the government of India’s Draft Policy on 2010 spring meeting issue
Open Standards for e-Governance and its accompanying Draft Implementation Manual. The Committee is also planning its annual Partnering on Standards dialogue with Federal agencies such as the Federal Trade Commission (FTC) and Department of Justice (DOJ).
Trade Secret Law
Chair: Nathan A. Schleifer (not pictured) Vice Chair: Daniel P. Westman (not pictured) ___________________________________________ The Committee has no new business to report.
Trademark Internet
Co-Chair: Matthew Nelles (left photo) Co-Chair: Mark Partridge (not pictured) Vice Chair: Joe Keeley (right photo) ___________________________________________ See Trademark Law Committee.
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Trademark Law
Chair: Kimberly N. Van Voorhis (left photo) Vice Chair: Amie Peele Carter (right photo) ___________________________________________ The Trademark Committee continues in its role as both a substantive committee responsible for monitoring the laws and treaties of the United States concerning trademarks, trade names and unfair competition, as well the administrative committee that coordinates the efforts of the specialized AIPLA trademark committees, focusing on international aspects of trademark law, trademarks on the Internet, trademark litigation and trademark relations with the Patent & Trademark Office.
Trademark Boot Camp
Trademark Law Committee
The Committee co-hosted the second annual Trademark Boot Camp on June 10, 2010 in Washington, DC, which is a single-day workshop covering basic trademark prosecution, including international and domestic issues in both a hands-on and lecture format. Boot Camp planning subcommittee chair, Kristin Harkins, worked closely with the Education Committee and AIPLA to plan and administer the program. Many thanks to all those who participated in the program.
Trademark Strategic Plan
Amicus & Legislation
The Trademark Committee leadership met at the Spring Meeting on Friday, May 7th, from 11-12 p.m. We continued to work through the 2008 Strategic Plan and discussed whether we might revisit aspects of the Plan in 2011. The majority of the goals in the Plan have been achieved, and we are continuing to work on others. The underlying mission remains to be reinforcing AIPLA as a preeminent organization and resource for US trademark attorneys.
The Committee continues to consider potential legislative issues and is actively involved in the Amicus Committee. We expect to continue this involvement in 2010, identifying substantive issues of interest and importance to the trademark community.
The Committee recently addressed one of the key objectives of the Plan, local outreach, through firmhosted sessions of the online program, “TTAB 2010: Litigating Under Accelerated Case Resolution and Amended TTAB Rules,” presented by Trademark Relations with the USPTO, Vice Chair, Linda McLeod and Administrative Law Judge Gerard Rogers of the TTAB. The online program was delivered in three separate “host sites”: Palo Alto, Salt Lake City and Washington, DC. The Committee is currently evaluating the effect of the program and next steps for future local programming and outreach. The Committee also continues to work closely with the IP Law Associations Committee to publicize the content at upcoming meetings to local bar associations.
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Mentoring The Committee continues its work with the Mentoring Committee on supporting and mentoring new members and encouraging active participation in AIPLA. New Initiatives Sports & Entertainment Committee The Committee launched our S&E Subcommittee in response to numerous committee member requests. As part of our launch, entertainment mogul, Max Siegel presented a lively discussion of his experiences in the sports and entertainment industry. Max is counsel to Baker & Daniels where he leads the firm’s sports and entertainment industry team serving a diverse group of clients, including corporations and production companies; coaches, athletes and entertainers; labels; and foundations. We thank Max for sharing his unique perspective and look forward to more sports and entertainment events at future meetings.
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Individual Trademark Committee Reports: Trademark-Relations with USPTO Committee (chair: Jody Drake; vice-chairs: Yasmin Tavakoli and Linda McLeod). The Committee reported on a new information technology initiative with the USPTO called Trademarks Next Generation and has recently provided comments to AIPLA on the initiative. Further collaboration is planned for 2010. This Committee also continues to monitor and inform members about new procedural and substantive developments in trademark prosecution practice at the Office and proceedings before the Trademark Trial and Appeal Board. The Committee is also identifying outreach opportunities with the Trademark Office, including potential CLE programming directed specifically to examining attorneys.
Trademark Treaties and International Law Committee (chair: Janet Fuhrer; vice-chair: Michael Ballard) continues to actively review and report on various aspects of international trademark practice and trademark treaties. The Committee recently launched its first web survey regarding the Lisbon Treaty and has also just completed a second survey regarding the Norway proposals to the Madrid Protocol. The Committee also has an exciting joint committee meeting planned for the annual meeting, which will include, among other topics, a comparison of trademark enforcement proceedings in Canada, Europe and Mexico.
Trademark Litigation Committee (chair: Steve Meleen; vice-chair: Jennifer Kovalcik) continues its work on updating the map of the US Circuit Courts of Appeal, which provides an online summary by circuit of leading precedent governing core trademark legal issues as well as its quarterly litigation report. The most recent quarterly report issued shortly after the Spring Meeting. Trademark Internet and Cyberspace Committee (chair: Matt Nelles; vice-chair: Joe Keeley) continues to monitor and participate in IP-focused coalitions commenting on ICANN policy in administrating the domain name system and significant trademark/ internet case law and legislative developments.
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Trademark Litigation
Chair: Stephen P. Meleen (left photo) Vice Chair: Jennifer L. Kovalcik (right photo) ___________________________________________ See Trademark Law Committee.
Trademark Treaties and International Law Chair: Janet M. Fuhrer (left photo) Vice Chair: Michael M. Ballard (right photo) ___________________________________________ See Trademark Law Committee.
Trademark-Relations with the USPTO
Chair: Jody H. Drake (left photo) Vice Chair, Prosecution: Yasmin Tavakoli (center photo) Vice Chair, Inter Partes: Linda K. McLeod (right photo) ___________________________________________ See Trademark Law Committee.
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USPTO Inter Partes Patent Proceedings Chair: W. Todd Baker (left photo) Vice Chair: Herbert D. Hart (right photo) ___________________________________________
At the Spring Meeting in New York City, the USPTO Inter Partes Patent Proceedings Committee conducted a CLE program devoted to inter partes reexamination followed by a business meeting. George Wheeler a director and shareholder at McAndrews Held & Malloy Ltd. addressed the topic of “Inter Partes Reexamination (IPR) Nuts and Bolts”, providing a step-by-step analysis of the inter partes reexamination proceeding. Included were discussions of mechanics and strategies for the preparation of the request, suggestions for communications addressed to the Examiner, and strategies for prosecuting in a manner best suited to prepare for any eventual appeal proceeding, George also provided commentary and guidance concerning the timing of taking actions during the entire proceeding. Cautioning those who might be tempted to “dabble” in inter partes reexamination, particularly as an adjunct to a litigation strategy, he advises: “Since most attorneys seldom use reexamination, and IPRs in particular have procedural pitfalls for the unwary, we highly recommend consultation with attorneys who have extensive experience with reexamination, specifically including experience with inter partes reexamination. If you are considering using reexamination as part of a litigation strategy, we recommend using a firm for the litigation that has specific experience with patent reexamination proceedings related to litigation.” Bruce Stoner, retired Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences, and now Of Counsel at Greenblum & Bernstein, PLC, spoke on the topic of “Case Management Reform – Some Factors To Consider In Choosing A Home For Inter Partes Reexamination.” He provided a detailed analysis of pendency and other statistics available on the PTO web site, providing cautionary advice for relying on the published data. What followed was a thorough review of the feasibility of adopting proposals (including that in S.515) to move the entire inter partes reexamination proceeding under the jurisdiction of
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the Board of Patent Appeals and Interferences in the context of its current workload. His conclusion: “It is difficult for one outside the CRU to know precisely what proportion of the resources of the CRU are devoted to IPR, as distinct from ex parte reexamination. But the CRU already has roughly 60 examiners devoted to handling roughly 2000 pending reexamination proceedings. If only 25% of the examination time is spent on IPRs (my hunch is that is not a ridiculous estimate, and that the truth may be nearer 50%), that still means that the BPAI will need to hire 15 new APJs, or be reassigned at least 15 highly capable primary examiners from the CRU, if it is to have a prayer of handling IPRs in the near term without statutory change. Whether addition of these resources to the BPAI is in the cards remains to be seen.” Jim Anderson, a partner in the Atlanta office of Robins, Kaplan, Miller & Ciresi, LLP., spoke on the topic of “Strategic Uses Of Inter Partes Reexamination Concurrent With District Court Litigation.” Jim’s presentation explored the possible strategic uses of inter partes reexamination by defendants in pending district court patent litigation. Specifically, he reviewed the benefits and risks associated with the inter partes reexamination process, as well as the options available to patentees against whom such a reexamination is filed. As part of that analysis, he compared, using anecdotes, the impact of ex parte and inter partes reexamination. Echoing George Wheeler’s cautionary advice, Jim concluded that: “Before 1999, an accused infringer could request reexamination with little risk in comparison to the potential reward. Ex parte reexamination offered the possibility of cancellation and/or narrowing of the asserted patent claims without any chance that the same arguments made in the USPTO could not be advanced at trial. However, with the introduction of inter partes reexamination, its attendant participatory rights, and the imposition of estoppel, the decision confronting defendants became more complex. The
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issues and concerns discussed in this paper should be evaluated by such parties before filing a request for IPR.” The Committee’s business meeting focused on another area of the Committee’s focus, patent interferences. Specifically, the discussion allowed committee members and other attendees to air their concerns about the impact of the Federal Circuit’s decisions in Agilent Techs. Inc. v. Affymetrix Inc., 567 F.3d 1366 (Fed. Cir. 2009) and Koninklijke Philips Electronics NV v. Cardiac Science Operating Company, No. 2009-1241, 2010
WL 10913 (Fed. Cir. Jan. 5, 2010), as well as the later withdrawal by the Patent and Trademark Office of 37 C.F.R. § 41.200(b), which states that a “claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.” This discussion raised many unanswered questions, as this was the first time in recent years that there were no Administrative Patent Judges in attendance at the Spring Meeting.
Women in IP Law
Chair: Carey C. Jordan (left photo) Vice Chair: Alyson G. Barker (right photo) ___________________________________________ The Women in IP Committee co-hosted its committee meeting with the Diversity Committee in New York City on Thursday, May 6, 2010. Our committee was honored to have Professor Annette Kahler from the Albany Law School speak about “Women in Intellectual Property and the Innovation Ecosystem.” Professor Kahler is the Director of the Albany Law School Center for Law and Innovation and a Visiting Assistant Professor of Law. She teaches intellectual property law and her research interests focus on the legal, social, and economic impact of innovation. Prior to joining Albany Law School, Professor Kahler was CEO and General Counsel of Ascella Technologies in Vienna, Virginia. She was also formerly Vice President, Associate General Counsel, and Director of Intellectual Property at American Management Systems, Inc. in Fairfax, Virginia. Professor Kahler earned a B.A. from the University of Rochester and a J.D. from George Mason University School of Law. She is admitted to practice law in New York, Virginia, and Washington DC, and is a member of the American Bar Association, American Intellectual Property Law Association, International Trademark Association, Licensing Executives Society, among other organizations.
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During the presentation, Dr. Kahler spoke to the fact that it is widely known that women are greatly outnumbered by their male counterparts in the field of intellectual property law, and particularly in the patent sector; however, there have been challenges in measuring the extent of the gender imbalance, determining reasons for the imbalance, and understanding the potential impact. In response, Professor Kahler presented new data and findings from her in-depth study of women’s participation and influence within the field of intellectual property law, as inventors, patent agents, patent attorneys, and throughout the innovation ecosystem. Professor Kahler also presented evidence on why the gender imbalance persists, and how it affects innovation.
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Young Lawyers
Co-Chair: Ehab M. Samuel (left photo) Co-Chair: Michael Valek (right photo) ___________________________________________ The Young Lawyers Committee held two successful joint meetings at the Spring Meeting in NYC. One was with the Education Committee and the Law Student Committee, and a second was with the Membership Committee and Mentoring Committee. We plan to continue to collaborate with all of those committees for future meetings. The Young Lawyers Committee is now focusing its efforts on new initiatives to get more young lawyers involved with AIPLA and provide them with opportunities unmatched by any professional IP association. The Young Lawyers Committee is now working more closely with AIPLA’s Amicus Committee to provide young lawyers the opportunity to contribute to AIPLA Amicus Briefs. Special thanks to our members Athar A. Khan and Justin S. Cohen for assisting the Amicus Committee on an amicus brief filed with the Supreme Court in a Copyright case of Omega S.A. v. Costco Wholesale Corp.. They researched legislative history from 1963 to 1976 for 17 U.S.C. § 109 to determine the legislative intent for changing the language in the code and its effect on the application of the first sale doctrine. If you are interested in assisting on future amicus briefs, please contact Mike Valek (mvalek@ velaw.com) or Ehab Samuel (SamuelE@gtlaw.com).
We are currently in the process of collecting a list of volunteer judges to support this year’s Watson Writing Competition. Both of the Watson Writing Competition Subcommittee Co-Chairs, Jen Kuhn and Janet Gongola, have decided to continue their leadership of this project for this year’s competition. If you are interested in volunteering to help, please contact Mike or Ehab. Finally, if you are a member of another AIPLA Committee who needs help working on a project or a paper, please let Mike or Ehab know. The YLC has a lot of good people who are ready and willing to work with other parts of the AIPLA.
The Young Lawyers Committee also participated at the 61st Annual Intel International Science and Engineering Fair (Intel ISEF), which was held May 9-14 in San Jose, California. Special thanks to our members Damon Bowe, Jason Croft, and Yeen Tham for volunteering to judge the Intel ISEF on behalf of AIPLA. Our Moot Court Subcommittee is about to begin working on the next Giles S. Rich Moot Court Competition problem. If you’re a fan of moot court and want to work on this project, please volunteer ASAP by contacting Mike or Ehab.
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