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BULLETIN American Intellectual Property Law A ssociation

2009 Spring Meeting Issue San Diego, CA


in this issue...

President’s Page....................................................................................................................................................3 60th Intel International Science & Engineering Fair Article.....................................................................................6 36th Annual Giles Sutherland Rich Memorial Moot Court Competition Article........................................................7 2010 Robert C. Watson Competition Information....................................................................................................8 16th Annual AIPLA Quarterly Journal Publication Staff Competition Information....................................................9 36th Annual Giles Sutherland Rich Memorial Moot Court Competition................................................................. 11 General Counsel’s View......................................................................................................................................13 Association Activities ............................................................................................................................................18 Membership Applications......................................................................................................................................18 News of Members ................................................................................................................................................35 Deceased Members .............................................................................................................................................36 Future Meetings Calendar.....................................................................................................................................37 CLE Update ..........................................................................................................................................................39

Classified Ads ................................................................................................................................................. 41 Copyright Office Affairs..........................................................................................................................................43 2009 Spring Meeting, May 13–15, 2009.............................................................................................................49 Thank You to Sponsors.........................................................................................................................................53 Photo Pages..........................................................................................................................................................54 Committee Reports: Anti-Counterfeiting & Anti-Piracy...........................................................................................................................62 Young Lawyers......................................................................................................................................................63 Trademark Law......................................................................................................................................................64 Amicus...................................................................................................................................................................65 Mentoring..............................................................................................................................................................70 IP Law Associations...............................................................................................................................................71 Membership...........................................................................................................................................................72 Online Programs...................................................................................................................................................72 Professional Programs..........................................................................................................................................75 Education..............................................................................................................................................................76 Diversity in IP Law.................................................................................................................................................77

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)

Law Students................................................................................................................................................... 78 Alternative Dispute Resolution........................................................................................................................ 78 Copyright Law.......................................................................................................................................................79 Emerging Technologies................................................................................................................................... 80 Electronic & Computer Law............................................................................................................................. 81 Women in IP Law............................................................................................................................................ 82 Antitrust........................................................................................................................................................... 82 Biotechnology.................................................................................................................................................. 83 Interference..................................................................................................................................................... 84 Corporate Practice................................................................................................................................................85 Law Practice Management.............................................................................................................................. 88 Licensing & Management of IP Assets............................................................................................................ 88 Chemical Practice........................................................................................................................................... 89 Patent-Relations with the USPTO................................................................................................................... 89 Committee on the ITC..................................................................................................................................... 90 Patent Law...................................................................................................................................................... 91 Patent Litigation............................................................................................................................................... 92 Public Education.............................................................................................................................................. 93 Special Committee on Standards and Open Source....................................................................................... 95 Special Committee on the FDA....................................................................................................................... 96 Special Committee on Legislation................................................................................................................... 96

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BULLETIN OFFICERS 2008 – 2009 Teresa Stanek Rea..................................................................................................................................................... President 1001 Pennsylvania Avenue NW, Washington, DC 20004 Alan J. Kasper. .................................................................................................................................................President-Elect 2100 Pennsylvania Avenue NW, Washington, DC 20037 David W. Hill............................................................................................................................................ First Vice-President 11955 Freedom Dr., Two Freedom Square, Reston, VA 20190 William G. Barber................................................................................................................................ Second Vice-President 600 Congress Avenue, Suite 2120, Austin, TX 78701 James Pooley.................................................................................................................................... Immediate Past-President 755 Page Mill Road, Palo Alto, CA 94304 Jonathan 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 2009)

Gordon T. Arnold .................................................................................2401 Fountain View, Suite 630, Houston, TX 77057 Joseph S. Cianfrani . .....................................................................................2040 Main Street, 14th Floor, Irvine, CA 92614 John T. Johnson ........................................ 153 East 53rd Street, CitiGroup Center, 52nd Floor, New York, NY 10022-4611 (Terms Expire October 2010) Pamela A. Crocker . ................................................................................................... 343 State Street, Rochester, NY 14650 Denise W. DeFranco. .................................................................. 55 Cambridge Parkway, Suite 700, Cambridge, MA 02142 Amy E. Hamilton.......................................................................... Lilly Corporate Center, Drop Code 1104, Indianapolis, IN Anthony M. Zupcic .....................................................................................30 Rockefeller Plaza, New York, NY 10112-380 (Terms Expire October 2011) Robert W. Clarida ............................................................................... 1133 Avenue of the Americas, New York, NY 10036 Elizabeth Ann (Betty) Morgan. .................................................................... 1180 Peachtree Street, NE, Atlanta, GA 30309 Naomi Abe Voegtli.............................................................................................3410 Hillview Avenue, Palo Alto, CA 94303 Mark L. Whitaker . ....................................................................... 1299 Pennsylvania Avenue, NW, Washington, DC 20004

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president’s page by: Teresa Stanek Rea, AIPLA President

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t this writing, our own Dave Kappos, Board Member since 2006, is settling into his job as the new Director of the Patent and Trademark Office, and we congratulate him on his new assignment (although we regret his resignation from the AIPLA Board). It is also fitting here to congratulate another Board member, Immediate Past President Jim Pooley, who has accepted a position as Deputy Director General of WIPO for the Patent Cooperation Treaty. I hope you share my pride in this development as it reflects the Association’s ability to attract the best and the brightest in intellectual property law. In the years I’ve known and worked with Dave and Jim, they have both excelled not only in their professional work, but more importantly, they have demonstrated an appreciation of and dedication to the well-being of the US intellectual property system. We’re confident that bright days are ahead with Dave at the PTO and Jim at WIPO. ADVOCACY Patent Reform: The end of the first session of the 111th Congress is fast approaching, and patent reform sits in a holding pattern. The current status is a Senate compromise version that is poised to move on to floor consideration if lingering disputes are resolved. Since the Senate Judiciary Committee signed off on a bill that was a great improvement over proposals along the way, that bill has been a target for critics who are not ready for a first-to-file system or post-grant review procedures. Our hope is that the version that emerged from the Senate Judiciary Committee withstands the slings and arrows that may be ahead. It retains the essential provisions on first-inventor-to-file, willful infringement, and third-party submission of prior art. It resolves the extremely controversial issues of damages, post-grant review, and venue in a way that is very close to AIPLA’s longstanding positions on those matters. It also includes provisions from S. 299 to create a pilot program that would encourage the assignment of patent cases to experienced district court judges. Unfortunately, the patent reform bill approved by the Senate Judiciary Committee still lacks a provision that ensures reliable and adequate funding of the U.S. Patent and Trademark Office. This issue recently assumed great significance when Congress had to pass emergency legislation to compensate for the revenue downturn at the USPTO which nearly resulted in furloughs and lay-offs. On the other hand, it was a positive sign that both bodies once again passed annual USPTO appropriation bills which give the agency complete access to its fee revenue for the fiscal year. We continue to work for a permanent anti-diversion provision that will bring stability and predictability to USPTO operations by providing funding that it can rely on for more than one year at a time. Biologics: In July we witnessed the way patent issues can be swept into the fast-moving health care legislation. The increased use of biologics as a medical treatment has produced an initiative to permit 2009 spring meeting issue

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the data developed for FDA approval of patented biologics to be used for FDA consideration and approval of generic biologics. On July 14th I appeared before House Judiciary Subcommittee on Courts and Competition Policy to present the AIPLA position that any new legislation on this issue must include an effective pre-launch process for patent enforcement. I’m happy to report that the provision incorporated into the House health reform bill was very similar to one we supported. Furloughs Averted: As could be expected, the economic hard times finally reached the PTO this spring. A downturn in application filings and in the corresponding revenue appeared to present the disastrous risk of furloughs and reductions-in-force for patent examiners. AIPLA weighed in on emergency legislation (H.R. 3114) that was enacted to amend Patent Act language to make trademark fees available for patent operations if needed. In the Courts: Our amicus efforts most recently bore fruit in Cardiac Pacemakers Inc. v. St. Jude Medicines, Inc., Bose, Inc. v. Hexaware, and Prometheus Laboratories, Inc. v. Mayo Collaborative Services. In Cardiac the en banc Federal Circuit adopted our view that Section 271(f) does not apply to process patent claims. Our participation in this case was a joint effort with the Federal Circuit Bar Association, and the collaboration worked well and obviously achieved the desired result. Our view of the law was also vindicated in Bose, where a Federal Circuit panel reversed a long line of Trademark Trial and Appeal Board decisions that persisted in finding fraud with inadequate evidence of deceptive intent. And we were again on the right side in Prometheus, where a Federal Circuit panel held that a method of administering a drug and determining the level of its metabolites to treat Crohn’s disease satisfies the “transformation” test under Bilski to qualify as patent-eligible subject matter under 35 U.S.C. 101 Speaking of Bilski, the suspense continues to mount as we and a record number of other amici await the November oral argument in that Supreme Court. The government’s brief was recently filed, supporting the Federal Circuit’s machine-ortransformation test for deciding patent eligibility for method claims. The other Supreme Court case in which we filed is Reed Elsevier, Inc. v. Muchnick, where we disputed the Second Circuit’s conclusion that the copyright registration requirement at 17 U.S.C. §411(a) is a precondition to the subject matter jurisdiction for infringement actions. We contended that the requirement was mandatory, but not jurisdictional, and questions from the Justices at the recent oral argument suggested a preference that position as well. Our long participation in Tafas v. Kappos, a lawsuit challenging a PTO rules package on claims and continuation practice, appears to be coming to a conclusion. Director Kappos recently announced his intention to rescind those rules, and the PTO has joined a motion to dismiss the Federal Circuit appeal and to vacate the District Court ruling below. We welcome this conclusion of an unhappy episode between the PTO and the bar, and look forward to fruitful cooperation in the future. In another important case, the en banc Federal Circuit has decided to address the status of the written description requirement for patent applications: is it separate from the enablement requirement, or can a proper enablement disclosure alone satisfy the written description requirement? For more than a decade, the former answer has been the law, but disagreement on the court and in the bar could be resolved in Ariad Pharmaceuticals Inc. v. Eli Lilly & Co. Still pending, however, is a decision in Shire v. Sandoz, where we argued that a prior district court claim construction does not automatically bar, under issue preclusion, a later court’s independent claim construction in a later suit over the same patent

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president’s page (continued)

claim against a different defendant. And most recently we have urged the court to clarify “obvious to try” issues in Bayer Schering Pharma AG v. Barr Laboratories, Inc. in the wake of Supreme Court comments in KSR. As you can see, our amicus plate is rather full.

INTERNATIONAL ACTIVITIES In April of 2009, AIPLA followed up with detailed comments to the ICANN Board and its Generic Names Supporting Organization (“GNSO”) on the Second Draft Applicant Guidebook for New gTLDs (“Second Draft”). The comments continued to oppose the implementation of the new gTLD process set forth in the Applicant Guidebook until at least the following conditions occur: (1) ICANN completes and publishes the economic study called for in October 2006, and provides adequate opportunity for the public to study and comment on the results of the study; and (2) adequate measures (such as those being studied by the IRT) are incorporated to protect intellectual property rights and prevent cybersquatting and other abuses. The pursuit of procedures to introduce new efficiencies in international patent practice continues, and Sam Helfgott of our PCT Issues Committee attended a WIPO PCT Working Group Session last May which examined the pending issues. Under the Working Group’s “Roadmap for Further Work,” there was considered the aspirations for a single search for both international and national phases, more complete and relevant examinations, and more collaboration in prior art searches. Short of a general solution through WIPO, I think that we can look forward to improvements through efforts made in the Trilateral meetings. In June, Alan Kasper reported on the progress made at the Industry Trilateral in Tokyo on developing a common application format, on expanding the Industry Trilateral to include China and Korea, and on developing a consolidated search system through the Patent Prosecution Highway program. In July, Jim Pooley reported to the Board on a WIPO meeting entitled “Policy Conference on IP and Global Challenges.” Jim noted that the meeting reflected an effort to ensure that WIPO becomes the clearinghouse for other U.N. agencies (WTO, WHO, WMO, etc.) on intellectual property items. MEMBERSHIP AIPLA’s Membership Committee last May recommended that two new membership categories be created: one for registered foreign patent/trademark attorney or agent affiliates, and another for United States Patent and Trademark Office affiliates (limited to Patent Examiners). I’m happy to report that the Board made the necessary Bylaw amendments and created those new membership categories, demonstrating AIPLA’s continued growth as the pre-eminent representative of stakeholders in the US IP system. The change was marked at a recent Board meeting, at which President Bob Budens and Treasurer Randy Meyers of the Patent Office Professionals Association conveyed their appreciation on behalf of POPA’s 6,500 members for the opportunity to join AIPLA. Conclusion All in all, this year in IP lived up to its billing as an exciting time, and nothing can compare to serving in the leadership of the world’s leading IP association. I’m happy to say that AIPLA continues in that role thanks to the extraordinary contributions of its members.

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The 60th Intel International Science and Engineering Fair by: Benjamin Deming & Zachary Fansler The 2009 Intel International Science and Engineering Fair (ISEF) was held May 10-15 in Reno, Nevada. ISEF is the world’s largest pre-college celebration of science. It is held annually in May in a different city and attracts top high school students from around the world. In recent years, the competition has been sponsored by Intel Corporation. Approximately 1,500 of the best and brightest high school science students from the United States and 40 foreign countries participated in this year’s ISEF, presenting 1,225 exhibits. The winners were awarded nearly $4 million in scholarships, internships, and scientific field trips from government agencies, corporations, and organizations such as AIPLA. AIPLA judges Benjamin Deming of Howrey LLP, Los Angeles, California, and Zachary Fansler of RatnerPrestia, Wilmington, Delaware were on hand to award two “First Awards” of $1,000 and two “Second Awards” of $250. In selecting winners for AIPLA awards, the judges looked for projects that showed not only solid scientific and engineering talent, but that also showed promise as “intellectual property.” Although there were many amazing science projects on display, four in particular stood out as worthy recipients for the AIPLA awards. First Award winner Ying Pan (Guangzhou, China) developed a novel solution to fitting prosthetic limbs. As recipients

Pictured from left to right: Olexandr Olenyev, Matthew Stegall, Grant Edwards, John Hinkel, and Ying Pan.

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of prosthetic limbs grow, their artificial limbs became uncomfortable and require frequent resizing. Ms. Pan developed her silicon rubber prosthetic limb after hearing neighbors complain of the problem. For her work, Ms. Pan was awarded $1,000 from AIPLA. AIPLA’s other First Award winner also showed initiative in developing a device to assist handicapped people. John Hinkel (Hopkinton, Massachusetts) wrote a computer program that allows paraplegic computer users to operate a mouse with the aid of a simple head-mounted pointing device. Mr. Hinkel’s computer program is novel in that it combines both pointing and clicking by only moving one’s head, whereas most prior art devices only point or click. Mr. Hinkel was also awarded $1,000 for his work. Olexandr Olenyev (Zaporizhzhya, Ukraine) and the team of Matthew Stegall and Grant Edwards (Charlotte, North Carolina) received second prizes from AIPLA. Mr. Olenyev created and developed a working prototype of a “Versatile Wind Velocity and Direction Transducer.” The combination of low cost, durability, and near absence of moving parts makes the device suitable for a wide range of applications. Meanwhile, Messrs. Stegall and Edwards created a “Personal Audio Disruption Device” that signals headphone users of approaching cars, trains, or emergency vehicles. The pair created four working prototypes out of spare parts salvaged from their neighborhood.

Photo caption: Judging on behalf of AIPLA this year were Benjamin Deming from Howrey LLP, Los Angeles, California, and Zachary Fansler from RatnerPrestia, Wilmington, Delaware.

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The Giles Sutherland Rich Moot Court Competition Presenting Problems in Intellectual Property Law by: Kimberly Van Voorhis The national finals of the 36th Annual Giles Sutherland Rich Memorial Moot Court Competition, sponsored this year by Circuit Judge Sharon Prost, took place on April 22-24 at the Howard T. Markey National Courts Building in Washington, DC. Matthew Christoff and Michael Kaley Karson of John Marshall Law School were awarded the AIPLA Giles Sutherland Rich Memorial Award of $2,000. Alexis Fairweather and Matt McNeill of Georgia State University 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 22. 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: Catholic University of America Columbus School of Law, George Washington University School of Law, John Marshall Law School, Loyola University School of Law, Georgia State University College of Law, Franklin Pierce Law Center, University of Utah–S. J. Quinney College of Law and University of California, Berkeley–Boalt Hall.

First Place (left to right): Matthew C. Christoff, Judge Clevenger, Judge Prost, Judge Moore, Michael D. Karson

Circuit Judges Sharon Prost, Kimberly Moore and Raymond Clevenger 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 quarterfinal judges included Administrative Patent Judges Robert Nappi, Rom Delmendo and Daniel Song of the Board of Patent Appeals and Interferences, Associate Solicitors Janet Gongola, Robert McManus, and Nathan Kelley of the Solicitor’s Office, Troy Grabow, Rama Elluru and Ed Naidich of Finnegan Henderson Farabow Garrett & Dunner, LLP, Kristin Yohannan of Morrison & Foerster LLP, Jackie Wright Bonilla of Foley & Lardner, LLP, and Arthur Coviello of WilmerHale.

First Place (left to right): Matthew C. Christoff, Michael D. Karson; Runners up: Matt McNeil, Alexis Fairweather

The semi-final judges included Administrative Patent Judge Ken Barrett, Associate Solicitor Scott Weidenfeller of the Solictor’s Office, Amy Nelson of WilmerHale, Daniel Shulman of Pactiv Corp., Antigone Kriss of Finnegan Henderson Farabow Garrett & Dunner, LLP, and Richard Ruzich of Duane Morris LLP. Jesse Fender, law clerk to the Honorable Sharon Prost, served as head bailiff. Federal Circuit clerks Christopher Nalevanko, Jennifer Nall, Garth Baer, John Murphy, Allison Kerndt and Neal Hannan served as bailiffs for the quarter-final and semi-final rounds. Norma Bennett of Fish & Richardson P.C., Weil Gotshal & Manges, Thomas Johnston of Holland & Knight, LLP, Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff, and Diana Luo of Morrison & Foerster LLP served as Regional Directors. The problem and bench memorandum were prepared by Michael Valek and Stephen Stout of Vinson & Elkins 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. 2009 spring meeting issue

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AIPLA Presents:

2010 Robert C. Watson Competition Award:

$2,000

Submission Deadline:

June 30, 2010

Award will be presented Friday, October 22, 2010 during the AIPLA Luncheon in Washington, DC. Author of best article on a subject relating to the protection of intellectual property written or published between July 1, 2009 and June 30, 2010.

To be eligible for consideration, the article must have Judges will consider the merit of the article as a been written solely by a student or students either in contribution to the knowledge respecting intellectual full-time attendance at a law school (day or evening) property and the extent to which it displays original or prepared in connection with a law school course. and creative thought or information not previously The article must be submitted to the American written or published by the author prior to July 1, Intellectual Property Law Association on or before 2009. June 30, 2010. Papers should be approximately the equivalent of 10 law review pages, including Reasonable expenses will be reimbursed to the footnotes (30–40 pages typed copy). Submission author of the winning paper to travel to Washington, of 20 copies is required. Submission must include DC to receive the Watson Award on October 22, the submitter’s name, current address, current 2010. Submit articles to: telephone number, and employment information, if applicable.

American Intellectual Property Law Association Watson Award Competition 241 18th Street, South, Suite 700 Arlington, Virginia 22202 Telephone: (703) 415-0780

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American Intellectual Property Law Association

Sixteenth Annual AIPLA Quarterly Journal Publication Staff Competition Writing Competition March 12–15, 2010 Staff Selection Announced August 2010 Publication Staff Participation August 2010 – May 2012 Competition Rules All students who will have exactly two full academic years remaining in an ABA accredited law school beginning August 2010, are eligible to compete for a position as a Publication Staff member for the period August 2010 through May 2012. This includes both first-year full-time JD candidates and second-year part-time JD candidates. The Publication Staff’s responsibilities are similar to that of members on other student-run journals and are coordinated by several student editors, selected each year from among the first-year Publication Staff.

For more information, please contact:

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Students wishing to compete must submit (by fax or mail) a Request to Compete form and a signed copy of the Candidate Agreement by close of business (5:00 p.m. EST) on Friday, March 5, 2010. These forms are available on the AIPLA website: www.aipla.org. The competition packet will be delivered to each applicant on March 12, and must be returned by mail, postmarked no later than the following Monday, March 15, 2010. Complete instructions will be included with the competition packet.

AIPLA Quarterly Journal Attention: Executive Notes Editor 2000 H Street, N.W. Washington, DC 20052 (202) 994-8620 Fax: (202) 994-8626 E-mail: QJ@aipla.org Or visit: www.aipla.org

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AIPLA

2009

online programs All of these programs run from 12:30 PM – 2:00 PM ET and CLE will be requested. October 7

Protecting Your Client’s Brands: Using the National Advertising Division as a Cost Effective Mechanism for Resolving Advertising Disputes:

October 21

Continuation and RCE Practice: Present and Future Tips

November 12

Year End Review

December 3

Ethics * 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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The 37th Annual Giles Sutherland Rich Memorial Moot Court Competition “Presenting Problems in Intellectual Property Law”

National First Place:

AIPLA Giles Sutherland Rich Memorial Award - $2,000

National Second Place:

Irving Marcus Award - $1,000 Regional Competitions March 19 - 21, 2010 Boston – Chicago – Houston – Silicon Valley National Finals Competition: April 21 - 23, 2010 Washington, DC Sponsored by: American Intellectual Property Law Association For More Information, Visit www.aipla.org

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THE GLOBAL MAGAZINE FOR IP OWNERS

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FIND OUT MORE Take a FREE TRIAL at www.managingip.com/freetrial or call +44 20 7779 8999 (UK); +1 212 224 3570 (US)

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general counsel’s view Intellectual Property: General Counsel’s View

By Donald J. Rosenberg Executive Vice President, General Counsel & Corporate Secretary, Qualcomm Incorporated Presented May 14, 2009 during the luncheon AIPLA 2009 Spring Meeting San Diego, California

W

e are at a critical moment in time. The financial crisis, the rise of a global economy and the ubiquity of technology require us to look carefully at our existing institutions and determine whether they will support our future prosperity. Yet at this critical time, when the US economy is and will be for the foreseeable future, dependent on a culture of innovation, there are clear warning signs that the fundamental building blocks of our information society are being threatened. I speak of patent rights and a patent system that was central to the industrial revolution and a critical underpinning of the information age which has been flourishing for over half a century. I have spent my professional life in the technology industry and I have a keen understanding of and interest in the value of intellectual property. I have been fortunate during my career to participate in many of the watershed events in the history of the laws’ impact on technology. At IBM, I arrived in the midst of the Department of Justice’s thirteenyear monopolization case. A few years later, I actively participated in the defense of a Statement of Objections issued by the European Commission’s competition enforcement body, today called DG Competition. The issues in those cases involving the interface information, technology transfer and interoperability foreshadowed many of the issues that would occupy the time and attention of lawyers, economists and regulators for decades to come. I was there for the “copyright wars” that engaged the PC industry and the question of IP protection for software. I sat at counsels’ table in the Supreme Court when the Lotus v. Borland case was argued (the same day that Markman was heard). I participated in what was perhaps the longest and most expensive international arbitration, involving issues of software copyright and trade secret misappropriation – an arbitration I personally triggered in 1984 and, following two job transfers, came back to preside over its conclusion 2009 spring meeting issue

in 1996. Shortly before I retired from IBM, I negotiated a settlement of IBM’s claims against Microsoft following the district court’s findings of monopoly power. I was at Apple for the introduction of the iPhone and helped secure the trademark rights. And shortly before I left, I sat in a Brussels hearing room and zealously argued in opposition to the Statement of Objections issued by DG Competition that had challenged the iTunes business model. So what is the significance of all this history? I share it with you so that you can measure my words in context. I have pretty much seen it all. And now I am at Qualcomm. And it is an extraordinary place with an extraordinary, albeit short, history. I am here at an inflection point. Once again, I find myself in the middle of the storm and in the middle of developments in the law that will shape the future. And I am passionate about the cause. Qualcomm is first and foremost an innovation company. All of us in this room know that innovation is an expensive and risky undertaking. This is especially true in industries like the wireless communications sector with its intense competition among many active participants, including large vertically integrated manufacturers, operators, infrastructure providers and suppliers. An industry characterized by ever changing consumer demand and ever increasing expectations. From the beginning, Qualcomm relied on the patent system – indeed it epitomizes the success of that system and what it can deliver to consumers. It is the patent system that provided Qualcomm with the means to secure its inventive efforts, and it is the patent system that has allowed Qualcomm to obtain the capital required to fund its extensive research and development program. Every year, a substantial portion of our licensing revenues are aipla bulletin

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invested in improving existing technologies and inventing or acquiring new ones. When Qualcomm was founded in 1985, Code Division Multiple Access (or CDMA technology) was widely perceived as a risky and “disruptive” technology. But the promise of that technology, combined with the patent system, allowed us to attract essential private capital. Despite enormous odds and unrelenting opposition from the entrenched industry participants, Qualcomm pressed on in its conviction that CDMA was the best technology to achieve the promise of all that wireless communications would enable. Qualcomm’s fight was not easy. It even had to develop and operate its own infrastructure and handset businesses just to promote its new technology. Even after Qualcomm built and successfully demonstrated a small CDMA system incorporating its solutions, a Stanford professor infamously stated that we would not succeed because our technology “defied the laws of physics”. The first commercial CDMA network began operation in the fall of 1995 in Hong Kong, followed by networks in South Korea and then the United States. Eventually, CDMA was adopted globally and it became the basis for third generation (or “3G”) wireless services. Today, more than 780 million people worldwide use 3G wireless phones enabled by Qualcomm and analysts estimate that number will grow to 1.6 billion by 2012. Qualcomm’s philosophy is to enable many others companies in the wireless value chain to succeed. That is the source of the licensing business model that has generated our continuing R&D investments. Eventually, Qualcomm sold its infrastructure and handset businesses to manufacturers who had the ability to support the high volume requirements of the global CDMA market. This has allowed Qualcomm to focus on its core competency: inventing solutions to problems that impact the cost, capacity and capabilities of wireless networks and devices. Today, in addition to inventing and licensing technology, Qualcomm is the world’s largest fabless supplier of wireless semiconductors and software. Qualcomm’s patent portfolio includes more than 10,000 issued and pending US patents and more than 48,000 issued and pending foreign patents. Qualcomm has licensed its patents to more than 165 companies throughout the world. We typically license nearly our entire patent portfolio at a low, single-digit royalty rate. Qualcomm has not increased its standard royalty rate even though our portfolio has continued to grow as a result of ongoing R&D efforts. This ensures the broadest possible dissemination of our technology and 14 

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maximizes the efficiency of our licensing program. Our wireless innovations have created new opportunities for manufacturers and service providers. We have fed an enormous ecosystem which has grown from a $97 billion industry in 2002 to a $350 billion industry in 2007. Qualcomm’s revenues are a fraction of overall industry revenues. For example, in 2007, Qualcomm’s revenues were $9 billion relative to the $350 billion+ of the wireless sector overall. Thanks largely to Qualcomm’s innovations, today’s consumers enjoy higher-quality, feature-rich wireless services and devices at continually declining prices. A critical motivation for innovation is the system of risk and reward. Qualcomm’s shareholders allow us to take risks based on the confidence that, if we do successfully innovate, a strong patent system will support an appropriate return on the risk the investment entails. We have adopted a licensing business model that ensures continued innovation by plowing back over 20% of our revenues into R&D. In 2008, this amounted to approximately $2.3 billion. Most companies can’t do that – they require funding from lenders who will want a return on their investment. But access to funding is scarcer than it was in the past. There is a need to ensure that risk capital is available for research, development and commercialization. The main motivator for risk capital to look at investment opportunities is return on investment. If there are limits to this return, whether through weaker intellectual property protection or regulatory intervention, capital will not flow to markets and innovation will suffer – affecting our prosperity and quality of life. But as we sit here today, innovation is threatened. There is a growing tendency to devalue intellectual property and it’s a worldwide phenomenon. It comes in at least two forms, both of which I will touch on in my remarks. Some firms that rely primarily or exclusively on sales of downstream products or services are increasingly arguing that licensing business models are bad for consumers. According to these firms, license fees increase their product costs and, ultimately, prices to consumers. These arguments have fueled a debate about the legitimacy of IP and its usage; should one distinguish between good and bad enjoyment of IP? Are Non Practicing Entities (NPEs) nothing more than patent trolls? Are all Non Practicing Entities bad for markets? Presumably universities are not. Small inventors are not. Who decides which Non Practicing Entities’ business models are illegitimate? Surely, it should not be the licensees. 2009 spring meeting issue


As CAFC Chief Judge Michel has stated so eloquently: “why are these patentees seen as somehow illegitimate? A patent imparts the right to exclude others, not the obligation to manufacture yourself.” There is a great benefit in allowing innovation to happen regardless of business models, while relying on market forces to deter and correct any abuses. The proposals of critics of NPEs do not seem to be concerned that “reforms” may just as likely harm universities and small inventors and other innovators. One might ask why not? Is it because they are genuinely unable to devise reforms that are able to distinguish among good NPEs and bad NPEs or reliably identify and address “abusive” conduct? Or is it because they are threatened by competition from and disruption caused by innovation firms – whether or not such firms meet the elusive definition of a troll? The answer may not matter, as the effect would be the same – important inventors and their inventions could be lost. When it comes to the protection and reward for ideas, we should not be tempted by the market’s desire for shor-term gain over long-term innovation and economic growth. Dr. Irwin Jacobs, Qualcomm’s founder, put it succinctly at the Progress & Freedom Foundation’s Aspen Summit in 2006 when he said: “We should not strengthen this tendency by changing the rules that support the rewards of innovation; else we’ll measure the cost by the bells that don’t ring, the cures that are not developed and the technologies that aren’t invented. In the long run, society will be the poorer for it.” Again, Qualcomm is testament. We are not, by anyone’s definition, a troll. As I noted earlier, we are the largest fabless supplier of semiconductors in the world. But early on Qualcomm took a big risk in developing CDMA technology. It did so because of the promise of being rewarded in the market should its technology succeed. And succeed it did. Qualcomm’s technology is largely responsible for the explosive growth in the wireless industry over the past decade; and Qualcomm has plowed back its returns into new innovations resulting in the continued enhancement and performance of affordable wireless services and devices. Yet our business model – based on the virtuous cycle of R&D investment fueled by licensing revenues reinvested in more R&D to create more and more innovative technology – could be imperiled if the value of intellectual property is diminished in the name of so-called “patent reform.” This is not to say that our patent system is perfect. I would love to see the efficiency of the PTO improved and the quality of patents enhanced. But we must carefully consider the need for and consequences of any changes, and ensure 2009 spring meeting issue

that those changes are narrowly tailored to address real problems without undermining the fundamental workings of, and incentives created by, the patent system. While patent reform is being debated in Congress, it is being addressed in the courts. It is my view that we should allow recent judicial decisions involving patent law to be absorbed into the body of our jurisprudence before making broader and unnecessary changes to the patent system. In the years following the last FTC study of the US patent system, the Supreme Court and Federal Circuit have addressed virtually every “litigation reform” issue at the heart of the patent legislative debate. Significantly, each of these decisions has favored the litigation position of patent users. o On remedies: • eBay: Has made it more difficult for nonmanufacturing patent owners to obtain permanent injunctions, undermining the leverage that so-called trolls once had to obtain large settlements. •

Seagate: Has significantly heightened the standard for proving willful infringement.

Alcatel-Lucent: May lead to a reexamination of damages rules.

o On patent quality and reexamination: • KSR: Has made it more difficult to obtain patent rights and defend against invalidity challenges. •

Bilski: Has significantly narrowed the scope ofsubject matter eligibility for business method patents.

o On enforceability of patent licenses: • MedImmune: Undermines the enforceability of patent licenses and encourages invalidity challenges by existing licensees. •

Quanta: Addresses a patent holder’s ability to enforce its rights against downstream users.

o On venue: • Volkswagen/TS Tech: Makes it far easier to challenge venue, especially in the Eastern District of Texas. When viewed as a whole, these cases represent the most sweeping set of judicial reforms to the patent system in recent memory. And if the concern is that certain NPEs unfairly exploit their patents, these decisions have made aipla bulletin

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it more difficult for so-called patent speculators and have shifted the balance of power between patent plaintiffs and alleged infringer. The patent system is hardly perfect, but I see no evidence of widespread systemic defects. And as Chief Judge Michel told the FTC earlier this year, there is not a patent litigation crisis. The number of patent infringement cases filed hasn’t increased dramatically nor has the average jury award been excessive. The cost of litigation is driven not by anything unique to the patent system, but rather by the ever increasing costs of discovery. Further changes to our patent system should preserve its core strength while aiming to enhance the fairness, predictability and efficiency of patent rules and procedures for owners and users alike. To that end, our innovation economy would be best served by measures designed to improve the quality, efficiency and procedural predictability of USPTO examination. Thus far in my remarks, I have focused primarily on Qualcomm’s licensing business, and less on Qualcomm as a supplier of semiconductor products, software and services. However, we have been on the defendant’s side of the “v” much more often than the plaintiffs’ side. We know what it is like to live with an injunction or exclusion order. It is not a pleasant experience. But that just makes my point stronger. We know there are abuses. We know there are cases where the courts just get it wrong – I’d say everyone in this room agrees with that – at least every time they lose a case. But let’s not throw the baby out with the bath water. Let’s not legislate for the margins. Another tool that certain private commercial interests have sought to use in the campaign to devalue IPR and the incentives that drive innovation is competition law, or what may be characterized as government regulation under the guise of competition law. As noted, I have spent my career at the intersection of Intellectual property rights and competition policy. When I joined IBM, the company was still living with the 1956 consent decree which was the result of an earlier Department of Justice antitrust enforcement case. Among other things, that decree required IBM to license its patents on reasonable and non-discriminatory terms and conditions. Sound familiar? While the two disciplines – IP and competition policy – intersect, they don’t necessarily converge. Patents, as we know, provide a right to exclude. This right to exclude, to control the fruits of ones inventive genius, is at the core of the patent system. 16 

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Competition law on the other hand, seeks to promote the free flow of goods and the efficient allocation of scarce resources. One can immediately see the potential for conflict. Yet conflict is not inevitable. Indeed the US patent system with its roots in Article 1 of our Constitution, continued to function quite effectively even after the Sherman Act was passed in the late 19th Century. And of course, continues to function effectively today. Nevertheless, conflict has existed. In particular, conflict exists in technology industries where patent rights have fueled the success of so many companies. That success has invariably brought claims of dominance or monopoly power attributed at least in part to the power of the patent to exclude. But as antitrust lawyers know, possession of monopoly power alone is not illegal. It is the abuse of that power that is actionable. And how can exercising a government granted right be viewed as improper? In the US, our jurisprudence has evolved to the point where absent certain exceptional circumstances, exercising one’s patent rights, including refusal to license, is immune from antitrust liability. And licensing has been viewed as an activity that aids rather than impedes competition. As stated in the Department of Justice and Fair Trade Commission’s 1995 Antitrust Guidelines: “IP licensing allows firms to combine complementary factors of production and is generally pro-competitive...licensing, cross licensing, or otherwise transferring IP...can facilitate integration of the licensed property with complementary factors of production... This integration can lead to more efficient exploitation of the IP, benefiting consumers through reduction of costs and the introduction of new products. Such arrangements increase the value of the intellectual property to consumers and to the developers of the technology.” Similarly the European Union’s competition authority has said: “The existence and exercise of an industrial property right are not of themselves incompatible with competition law...Therefore, antitrust doctrine does not presume the existence of market power from the mere presence of an intellectual property right.” In other jurisdictions it is less clear. And the trend seems to be heading in the wrong direction. There are now over 100 countries with competition laws and many of those laws are in their infancy. As they develop, they are influenced by a number of factors including the state of their home-grown industries and the social, political and economic backgrounds of their society. China, the largest emerging market in the world, enacted its Anti-Monopoly Law last year. And there are already clear 2009 spring meeting issue


indications that patent rights and the value of intellectual property may be subrogated to the dominance of competition law. But the developing countries are not alone in their suspicions of IP rights. Even in this country some still contend that the exercise of IP rights, especially licensing, can be used to restrict competition. They therefore seek to use competition law to create an enormous, ambiguous and ultimately arbitrary qualification of IPR. They may say that the exercise of IPR is not an “abuse” of “dominance,” as those terms are used in competition law. But they then add an exception that threatens to swallow the rule. That is, they want courts and agencies to examine the licensor’s royalty rates and other terms to determine whether they are “reasonable.” So, the rule they support reads, in substance, that “the exercise of IPR is not an ‘abuse’ of ‘dominance’ unless it is ‘abusive.’” It is difficult to imagine a more uncertain, incentive-draining “rule” than this one. Moreover, the advocates of this amorphous “reasonableness” qualification to patent rights are not really invoking competition law, but rather principles akin to public utility regulation. Of course, the history of public utility regulation is not a happy one. This is mainly because of the difficulty for regulators to determine socially and economically optimal prices and terms. Those difficulties are magnified greatly when the good or property in question is intangible like, IP, and subject to high fixed costs and the prospect that regulators will mandate its availability at lower prices after investment has been sunk. Proposals to subject patent licensing to the perils and uncertainty of public utility-type regulation would not merely be inconsistent with the patent system, but would be a perverse rejection of it. Think of the irony of a world where upstream IP is deemed to be valueless because of its essential value. And what about the consumer? The concepts of consumer harm and consumer welfare are often not well understood. IP protection seeks to ensure return on investment as an incentive to innovate and let society share in such endeavors. We should not presume that short-term desire for public access to valuable private property at regulated rates is more valuable to society than promoting incentives to innovate on the next generation of technology or new technologies. The patent laws embody the opposite presumption; that is, consumer welfare is enhanced overall, not harmed, by the incentives created by a strong patent law system, which is intended to ensure patent owners that they may either enjoy the exclusive use of their patented inventions or set the terms upon which others may use them. Competition law should not be used to undermine those assurances. 2009 spring meeting issue

Developing economies are watching us closely. If we weaken IPR protections, our ability to persuade foreign countries to adopt IP regimes that are consistent with international norms and to respect traditional notions of IP will be greatly diminished. Given all of these facts, and considering the enormous economic implications for our nation and for intellectual property generally, we all need to carefully consider the following: •

Can we pull ourselves out of a financial crisis by devaluing knowledge in a knowledge-based economy?

Why would we do anything to de-value the building blocks of an innovation society?

Changes to the current patent system should focus on those areas of patent reform that do not diminish the value of patents. Specifically, that means we should focus on measures designed to improve the quality, efficiency and predictability of USPTO examinations.

For starters, we absolutely need to address the huge backlog of patent applications currently sitting in the PTO. The number of patent applications is actually down – not surprising, given the economic crisis – which leads to a decrease in the fees the PTO is taking in when the agency already lacks adequate resources to address its backlog.

Legislators, regulators and courts should resist demands to impose innovation-stifling, and public utility-like regulation under the guise of competition law. And we should urge other countries to do the same.

As I alluded to at the outset, this is not the first time we have confronted difficult issues relating to intellectual property protection. One of the strengths of our legal system has been its ability to adapt to meet rapidly changing needs. We have the ability to meet new challenges but we must do so without inflicting a damaging blow to our innovation economy. The importance of a strong patent system and the innovation it promotes should be unquestioned. This is especially true in today’s economic climate. The amount of manufacturing we do here, relative to the rest of the world, continues to decline as manufacturing shifts to countries with lower costs of production. Our economy is also affected by increases in the outsourcing of services to other countries. However, thanks to a strong patent system, we have kept our edge in innovation. Thus it is critical to our economy that we maintain, not undermine, the incentives that drive and reward innovation. aipla bulletin

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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 Thomas A. Adams Cincinnati, OH Joseph Agostino Florham Park, NJ Brenda Akins Iowa City, IA Philip Albert Palo Alto, CA Scott B. Allison Whippany, NJ Paula Ambrosini San Dimas, CA Margaret Anderson Austin, TX Orion Armon Bronfield, CO Elizabeth W. Baio Chicago, IL Stanley Baker Fayetteville, AR Cynthia K. Barnett Warsaw, IN Harmonhinder S. Bedi San Francisco, CA Scott Benjamin Carlsbad, CA

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Brad Biddle Chandler, AZ

Alicia Carney Washington, DC

Michael Crowley Irving, TX

Denver S. Bisignano Houston, TX

Maribeth Day Case Research Triangle Park, NC

Theodore P. Cummings Cincinnati, OH

Nicholas M. Boivin Lexington, MA

Arun Chandra New York, NY

Mirut Dalal Chicago, IL

Cynthia M. Bouchez Washington, DC

Edward Charbonneau Norcross, GA

Bradley Davis Washington, DC

Brian Boyer Redwood, CA

Kimberly Chasteen Yorktown, VA

Jason L. DeFrancesco Washington, DC

Karri K. Bradley Portland, OR

Peter Chen Menlo Park, CA

David Devernoe Washington, DC

Marc Braner Redmond, WA

John Astor Cleveland, Jr. Indianapolis, IN

Daniel Dinapoli New York, NY

Robert Brewer Nashville, TN

David N. Cohan Roanoke, VA

Gregory Dorland Memphis, TN

Adam Burton Riverside, CA

Christopher Cole Washington, DC

Matthew A. Doscotch Edina, MN

Mark Buscher Gainesville, VA

Tipton Cole Austin, TX

Staci Dresher San Francisco, CA

Patrick Caldwell Dallas, TX

John D. Conway Bridgewater, NJ

Gerard Dunne New York, NY

Jesse Camacho Kansas City, MO

Brent Cooper Dallas, TX

Steven Eck Wildwood, MO

Randy Campbell, Jr. Indianapolis, IN

Martin J. Cosenza Washington, DC

Ron Epstein San Mateo, CA

Paul V. Campo Weehawken, NJ

Darren Crew Washington, DC

Mark Fox Evens Washington, DC 2009 spring meeting issue


Mitchell Feller New York, NY

Michael Guiliana Irvine, CA

William Hulsey, III Austin, TX

Laurie B. Lawrence Cambridge, MA

Donald Firca, Jr. Cleveland, OH

Ed Guntin Barrington, IL

Michael Jaffe Highland Heights, OH

Nancy LeSourd McLean, VA

Carlos A. Fisher Irvine, CA

Richard Hake San Diego, CA

Lisa Jaklitsch Croton on Hudson, NY

Arrienne M. Lezak Palo Alto, CA

Kari Footland Washington, DC

Robert H. Hammer, III Charlotte, NC

John M. Janeway Bellevue, WA

Marcella Lillis San Francisco, CA

Jane L. Froyd Palo Alto, CA

Michael Hardaway Santa Cruz, CA

Bruce D. Jobee Boston, MA

Ryan E. Lindsey Irvine, CA

Gloria Fuentes Kenilworth, NJ

Michael J. Harris Chicago, IL

Grant A. Johnson Rochester, MN

Daniel Ling Cleveland, OH

Eric Fues Washington, DC

Paul Hashim Plano, TX

Brandon Judkins Indianapolis, IN

Natalie A. Lissy Cambridge, MA

Janet Moreira Gamble Ft. Lauderdale, FL

Brad Haymond Troy, MI

Staci Julie Horsham, PA

Edward J. Lynch San Francisco, CA

Christine Garcia Lexington, KY

Michael Hendershot Palo Alto, CA

Ted Karr Beaverton, OR

James MacDonald San Jose, CA

William Garvin Washington, DC

Matthew C. Henderson Savannah, GA

Amy C. Kelly Kansas City, MO

Robert S. Macwright Washington, DC

Paul Gennari Washington, DC

Eve Henson Dallas, TX

Kristopher R. Kiel Chicago, IL

Stephen J. Manich Warsaw, IN

Melinda S. Giftos Madison, WI

Gilberto Hernandez Darien, IL

Curtis Kinghorn Rancho Cordova, CA

Guy V. Manning Fort Worth, TX

Daniel Glazer New York, NY

Andrew C. Hess Cincinnati, OH

Kelly J. Kirkland Houston, TX

Catherine Maresh San Jose, CA

Edward R. Gomez Suffern, NY

John Hilten McLean, VA

Philip L. Kirkpatrick Dumont, NJ

Gregg Marrazzo Neenah, WI

George Gordon Philadelphia, PA

Nicholas Hoffman Appleton, WI

Keith E. Kline Palo Alto, CA

Clark W. Martin Bedford, MA

Joy S. Goudie New York, NY

Philip J. Hoffmann Woodbridge, VA

Richard Knauer Indianapolis, IN

Michael J. Mauriel New York , NY

Mark S. Graham Knoxville, TN

Andrew P. Holland Palo Alto, CA

Robert Knechtel Scottsdale, AZ

Catherine M. McCarty Cambridge, MA

Matthew Graham Minneapolis, MN

Elizabeth Holoha Bellevue, WA

Peter J. Knudsen Seattle, WA

Rolando Medina Boston , MA

Scott T. Griggs Dallas, TX

Christopher A. Hower New York, NY

Timothy R. Krogh Parma, OH

Wesley C. Meinerding Hartville, OH

Richard J. Grochala Kenilworth, NJ

Rachel Hughey Minneapolis, MN

Matthew J. Lattig The Plains, VA

Dion Messer Tempe, AR

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Charles L. Miller Chicago, IL

Wonki Park Washington, DC

Gabriel M. Ramsey Menlo Park, CA

Scott P. Shaw Newport Beach, CA

Donald Min Fairfax, VA

Victor Pascucci San Antonio, TX

Megan Redmond Kansas City, MO

Timothy Shea Washington, DC

Andrea Mirin West Chester, PA

Michael Pate Salt Lake City, UT

Heidi Reese Washington, DC

Carolin Shining Sherman Oaks, CA

Angel D. Mitchell Kansas City, MO

E. Kay Patterson Fairfax, VA

Ellen Reilly Denver, CO

Kenneth D. Sibley Raleigh, NC

Gary Monka Marlboro, NJ

Edward Pergament Woodbridge, NJ

Kelly K. Reynolds Chapel Hill, NC

Ranjeev K. Singh Austin, TX

Misha Morgan Roseville, CA

Steven M. Perry Sandy, UT

Jennifer Knapp Riggs Kansas City, MO

Robert A. Skitol Washington, DC

Brian Morrill Bridgewater, NJ

Scott K. Peterson Andover, MA

Todd J. Roberts St. Clair Shores, MI

Scott M. Smith Menlo Park, CA

Wesley O. Mueller Chicago, IL

George A. Phocas Jackson, WY

Stephen Robison Cincinnati, OH

Victor Song South San Francisco, CA

Robert Muller Los Angeles, CA

Thomas J. Pienkos Milwaukee, WI

Kenneth J. Rodriguez Washington, DC

Randy J. Soriano St. Louis, MO

Michael A. Myers Tampa, FL

Kenya Pierre Atlanta, GA

Daniel Rosenberg Minneapolis, MN

Matthew Spohn Denver, CO

Robert D. Nagel Abbott Park, IL

Edward S. Podszus Boston, MA

Joel Rothfus New Brunswick, NJ

Daniel C. Stelter Waukegan, IL

Andrea Neagle Allentown, PA

R. Clifford Potter Sammamish, WA

Amy M. Salmela Minneapolis, MN

Carli E. Stewart Indianapolis, IN

Ashley Nicholls McLean, VA

Kimberly Powell Birmingham, AL

David Sawrie Pelham, AL

David Stitzel Alexandria, VA

Alexander Nolte Houston, TX

Cary M. Pumphrey Deerfield, IL

Mark C. Scarsi Los Angeles, CA

Todd Stockwell Lexington, KY

Amy Oberst Reston, VA

Jennifer Puplava Grand Rapids, MI

Thomas A. Schwyn St. Joseph, MI

Clinton R. Stuart Plano, TX

Curtis Ollila Boulder, CO

Paul E. Purwin Annandale, NJ

Melanie Seelig Seattle, WA

Khannan Suntharam Houston, TX

Christine Orich Indianapolis, IN

Matthew D. Rabe Milwaukee, WI

Jon Self Washington, DC

Winifred L. Swan Lawrence, MA

Jeffrey B. Oster Mercer Island, WA

Mark Radcliffe East Palo Alto, CA

Jacques Semmelman New York, NY

Olivier Taillieu Los Angeles, CA

Bill C. Panagos Bloomfield Hills, MI

Mohammad Sharique Rahman Columbia, MD

John Sganga Irvine, CA

Edwin P. Tarver El Segundo, CA

Joseph A. Parisi McLean, VA

John Raley, III Houston, TX

Michael E. Shanahan New York, NY

Jennifer Warren Linwood, MI

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2009 spring meeting issue


Sue Watson Conyers, GA

Björn Andersson Malmö, Sweden

Jonathan Jackson Southampton, United Kingdom

Lena Shen Beijing, China

Cynthia Weber Washington, DC

Thomas Becher Munich, Germany

Wes Jones Auckland, New Zealand

Susumu Shiozaki Shinjuku-Ku, Tokyo, Japan

Bryan Webster Redmond, WA

Nahanny Canal Mexico City, D. F., Mexico

Oleg Joukov Moscow, Russian Federation

Jatin Trivedi Ahmedabad, India

Hill Wellford Arlington, VA

Luis Diego Castro San Jose, Costa Rica

Takashi Kato Tokyo, Japan

Rajiv Tuli Delhi, India

John T. Westermeier Reston, VA

Leon Chen Beijing, China

Jennifer Kaufman-Shaw Vancouver, Canada

Antonio Turco Toronto, Canada

Karla M. Weyand Tarrytown, NY

Yuri Chumak Toronto, Canada

Anthony Lee Adelaide, SC, Australia

Mark Vickers Ottawa, Canada

Daniel V. Williams Washington, DC

António Corte-Real Lisboa, Portugal

Jay K. Lee Seoul, Republic of Korea

Weiqi Wand Beijing, China

Keith Milton Wilson Mountain View, CA

Debra D’ade Port-of-Spain, Trinidad and Tobago

Suntaek Lee Vienna, VA

Lidan Yan Beijing, China

Kathleen Lemieux Ottawa, Canada

Taiji Yoshino Ottawa, Canada

Julie Millburn London, United Kingdom

GOVERNMENT

Julio Montes Guatemala, Guatemala

David S. Andreasen Alexandria, VA

Hiroyuki Nakao San Diego, CA

Robert Bahr Great Falls, VA

Carolina Nakata Sao Paulo, Brazil

Dana Dobson Temple Hills, MD

Takashi Nazazaki Tokyo, Japan

Daniel Gacek Wheaton, IL

Jean L. Pire Brussels, Belgium

Henry Goldfine Somerset, NJ

Ivan Poli Buenos Aires, Argentina

Vincent Gonzales Arlington, VA

Endra A. Prabawa Jakarta, Indonesia

Lianchao Han Arlington, VA

Rakesh Prasad New Delhi, India

Chad Hardaway, Jr. Columbia, SC

William D. Regan Toronto, Canada

John Hocker Alexandria, VA

Juha-Pekka Ruuskanen London, United Kingdom

Robert D. Jones Germantown, MD

Douglas Winter Los Angeles, CA Richard Wolfram New York, NY Gregory Byron Wood Los Angeles, CA Eric Wright Washington, DC Julie A. Zavoral Milwaukee, WI

Jonathan Mark DeVile South Hampton, United Kingdom Ramesh C. Dhawan Gurgaon, India Tanya Indra Escamilla Lujan Mexico City, Mexico Roner Fabris Porto Alegre - RS, Brazil Eiji Fujimoto Munich, Germany

ACADEMIC

Anthony Gao Beijing, China

Chester Chuang San Francisco, CA

Heinz Goddar Munich, Germany

Jason DuMont Chicago, IL

Paul Green Sydney, Australia

David Scott Levine Greensboro, NC

Qingqing He Beijing, China

FOREIGN

Terry Healy Melbourne, Australia

Stefan Abel Munich, Germany

Aloys Hüttermann Düsseldorf, Germany

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Barbara Martin Los Angeles, CA

Corey M. Beaubien Royal Oak, MI

Graham M. Buccigross San Diego, CA

Cyndra Crenshaw Boston, MA

Michael J. O’Connell Berkeley, CA

Carrie M. Benjamin Cincinnati, OH

David Buck Minneapolis, MN

Zachary Cromer Alexandria, VA

Christopher Reed Arlington, VA

Gregory Bennett Alexandria, VA

Jason S. Burnette Bloomfield Hills, MI

Seaton Curran Las Vegas, NV

Nora Rooney Alexandria, VA

Peter Betaneli Princeton, NJ

Sarah Burrows San Diego, CA

William D. Day Rockville, MD

Heather D. Schafroth Washington, DC

Christopher J. Bezak Washington, DC

Shawn Cage Alexandria, VA

Christopher P. Demas Cleveland, OH

Melissa Stalder Washington, DC

Sheila Birrell Glastonbury, CT

Philip John Cardinale, Jr. Washington, DC

Raymond W. Deppen O’Fallon, MO

Nancy Ulrich Washington, DC

Matthew S. Bodenstein Philadelphia, PA

James P. Carey Cincinnati, OH

Adam Diament Irvine, CA

Kandace Walter Richardson, TX

Adnan H. Bohri Alexandria, VA

Thomas J. Carroll, Jr. Moosic, PA

John T. Dipre Cincinnaati, OH

William Washington, II North Potomac, MD

Raazia Bokhari Lake Forest, CA

Brian Cash Los Angeles, CA

Alesha Dominique Washington, DC

Marni Weiss New York, NY

Samuel M. Borowski Atlanta, GA

Danielle C. Chalson Forest Hills, NY

Bradford Donovan Tempe, AZ

Steven A. Wood, Jr. Alexandria, VA

Benton Bradshaw Chesterfield, MO

Y. Jenny Chen Needham, MA

Timothy Dortch Dallas, TX

JUNIOR

Ryan R. Brady Alexandria, VA

Matthew Chen Palo Alto, CA

Frederick W. Dour New York, NY

Camilo Ernesto Adames Passaic, NJ

Danielle H. Bratek Ft. Lauderdale, FL

Elisa Choi-Muller Rockville, MD

Timothy Doyle New York, NY

Tom Andersen Ashburn, VA

Diana D. Brehob Dearborn, MI

Greg Chrisman Cleveland, OH

Matthew Duane Bronx, NY

Margie B. Aoki Seatle, WA

Alix Bretonniere New York, NY

W. Ryan Clark Bellevue, WA

James L. Duncan, III Houston, TX

Arthur Au Pleasanton, CA

Jeremy Bridge Rockford, IL

Krystyna Colantoni Annandale, VA

Joseph Dunne New York, NY

Gregory C. Baker Salt Lake City, UT

Brian Brisnehan Washington, DC

Columbus Coleman, Jr. New York, NY

Ryan Dykal Kansas City, MO

Cara J. Baldwin Salt Lake City, UT

Robbie B. Brown, Jr. Seattle, WA

Jonathan Cooper Chicago, IL

Daniel Ehrlich Oshkosh, WI

Harper Batts Palo Alto, CA

Sandra Brown New York, NY

Alfonso Cornish, Jr. Madison, WI

Adam Ellsworth Gaithersburg, MD

Elizabeth Batts Cleveland, OH

Joshua R. Brown Gainesville, FL

Adam E. Crawford Milwaukee, WI

Olubunmi Emenanjo Odenton, MD

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2009 spring meeting issue


Billie Evans, III Bristol, PA

James M. Heinen, Jr. St. Louis, MO

Amanda Jenkins Dallas, TX

Lauren Krupka Frederick, MD

Zachary J. Fansler West Chester, PA

Kyle Hepner Washington, DC

Travis Jensen Palo Alto, CA

Nicholas J. Lane Arlington, VA

Christopher A. Fasel Saint Louis, MO

Patricia Y. Ho Denver, CO

Justin Jernigan Charlotte, NC

Indhira LaPuma Omaha, NE

Jason Fedon Glenmoore, PA

Jack L. Hobaugh, Jr. Washington, DC

Shaum Jhansale Chicago, IL

Robert A. Lawler Milwaukee, WI

Li Feng Washington, DC

Thomas Hoehner Syracuse, NY

Kamran Jivani Atlanta, GA

Hon-Man Lee Bellaire, TX

David Fitzgerald, II Cincinnati, OH

Valarie N. Hogan Itasca, IL

Robert Johnson New Haven, CT

Nicholas Lee Los Angles, CA

Terrance Fitzgerald Boulder, CO

Joshua Holmes Pennsville, NJ

Wade Johnson Houston, TX

Eun Kyeong Lee Seoul, Republic of Korea

David Foster Seattle, WA

David Hornberger Austin, TX

Christopher Jordan Oakland, CA

Brian Leege San Francisco, CA

Jeff Fougere Washington, DC

Jason O. Howard Kansas City, MO

Isabelle Jung Boca Raton, FL

Tracy Leibovitz Houston, TX

Aaron Fountain Austin, TX

J. Dustin Howell Salt Lake City, UT

Candace Kamperman Houston, TX

Robert Leighton Chicago, IL

Henry Frampton, IV Charleston, SC

Vicki Huang Footscray, Victoria, Australia

Erik C. Kane Washington, DC

Stephen R. Lewis Houston, TX

Preston P. Frischknecht Salt Lake City, UT

Wenrong Huang Palo Alto, CA

Justin Katz New York, NY

Paul J. Linden Cincinnati, OH

James Goepel Blue Bell, PA

Thomas Hunter Washington, DC

Ryan E. Keller Salt Lake City, UT

Alan Littmann Chicago, IL

Sejal R. Gosalia Washington, DC

Aaron D. Hurvitz Beijing, China

Erin A. Kelly Denver, CO

David A. Lovell Dallas, TX

John R. Guice, Jr. Manassas, VA

Daniel Ilan New York, NY

Thomas Y. Kendrick Columbus, OH

Olivia T. Luk Chicago, IL

Brian Haan Chicago, IL

Yusuke Inui Tokyo, Japan

MacLane Key Woodbridge, VA

Michael C. Lynn Boston, MA

William J. Halford Bloomfield Hills, MI

Akira Irie Washington, DC

Loree Kim Newnan, GA

Craig Lytle Washington, DC

Jonathon Hance Houston, TX

Jennifer Lynn Jadlow Dallas, TX

Kathryn M. Kizer Lexington, MA

Roger M. Masson Chicago, IL

Daniel I. Hanrahan Wauwatosa, WI

William L. Jaffe Sunnyvale, CA

Robert Kohse New York, NY

Matthew J. Mattson Dallas, TX

Allyson Hatton Watertown, MA

Lawrence E. James, Jr. Chicago, IL

Nicole Kopinski Chicago, IL

Timothy P. McAnulty Washington, DC

2009 spring meeting issue

aipla bulletin

  23


Mark McCormick Rolling Meadows, IL

Rajesh Noronha Alexandria, VA

Erica Reed New York, NY

Emer Simic Chicago, IL

Mark McMaster Duvall, WA

Taylor Norton New Orleans, LA

Alina Reeves Naperville, IL

Rachel M. Slade Salt Lake City, UT

Kristin McNamara New York, NY

Daniel O’Brien Dallas, TX

Victoria A. Reinhart Houston, TX

Kristin D. Smith Kansas City, MO

David Mess Columbus, OH

Robert C. O’Loughlin Kansas City, MO

Elizabeth A. Richardson Washington, DC

Steffen Soller Salt Lake City, UT

John L. Miller Paragus, NJ

Patrick Orme Pasadena, CA

Joshua Richman San Diego, CA

Peter Song New York, NY

Colin Moodie New York, NY

Martin Ostrowski Washington, DC

Rebecca C. Riley-Vargas Saint Louis, MO

James Spencer Landenberg, PA

William Allen Moon Dallas, TX

Michael Park Los Angeles, CA

Kyle Robertson Boston, MA

Adam J. Stegge Phoenix, AZ

Damien C. Moore Atlanta, GA

Aaron Pederson Minneapolis, MN

Michael E. Robinson Knoxville, TN

Katrina Stransky Alexandria, VA

Tomohiro Mori Osaka, Japan

Kathy Peng Mclean, VA

Ronnen Roy Bethesda, MD

Jonathan Szarzynski Dallas, TX

Aaron J. Morrow Chicago, IL

Aaron Dale Perkins Houston, TX

Terry Saad Dallas, TX

Aaron Taggart San Francisco, CA

Jerold B. Murphy Washington, DC

Paul Perricone Durham, CT

Alison N. Sachs Wayzata, MN

Jinghus Karen Tang Sunnyvale, CA

Daniel L. Myers Richmond, ME

Heather M. Petruzzi Washington, DC

Jonathan D. Sandys Toledo, OH

Blake Tankersley Washington, DC

Heather G. Nabwaring Salt Lake City, UT

Michael Pettit Harrison, NY

Scott Schaller Arlington, VA

Claire Terrebonne Kansas City, MO

Erica Navar Chicago, IL

Michael Polidoro New York, NY

Jonathan Schlaifer Washington, DC

Adrienne Thompson Kansas City, MO

Ha S. Nguyen Evanston, IL

Kelly R. Preece Salt Lake City, UT

Danwill Schwender San Diego, CA

Jeffrey Tinker Dallas, TX

David P. Nigro Phoenix, AZ

Adam G. Pugh Cincinnati, OH

Kimberly J. Seluga Boston, MA

Jonathan Todd Fenton, MO

Aleksandar Nikolic Rushville, NY

Katrina Y. P. Quach Columbia, MD

Nima Seyedali Seattle, WA

Deborah Tolomeo Redwood Shores, CA

Jason Nixon Salt Lake City, UT

Joseph Raffetto Washington, DC

Kent Shum Irvine, CA

Margaret Tomaska Philadelphia, PA

Mark Noel Washington, DC

Anna Raimer Los Angeles, CA

John Sieman Washington, DC

Stanley Tripodianos Roslyn Heights, NY

Adele Noon San Deigo, CA

Renita Rathinam Washington, DC

Jarrett L. Silver Alexandria, VA

Dimos Tripodianos Roslyn Heights, NY

24 

aipla bulletin

2009 spring meeting issue


Laura Ulatowski Cleveland, OH Samantha A. Updegraff Albuquerque, NM Thomas Urquidez Dallas, TX Sherry Valdez Salt Lake City, UT Joseph Varley, Jr. Brooklyn, NY James Walters San Diego, CA Connie Wan Issaquah, WA Joseph J. Wang San Jose, CA Aaron Ward Falls Church, VA Colin Lee Weir Cincinnati, OH Moshe K. Wilensky Alexandria, VA Stephanie L. Willatt Washington, DC Lisa Willis Brooklyn, NY Kazuto Yamamoto Chicago, IL Rachel C. Young Savannah, GA James Youngs Syracuse, NY Anne-Marie C. Yvon New York, NY Peter Zacharias Valley Forg, PA Jason Zack New York, NY Sonny Zhan Skaneateles Falls, NY 2009 spring meeting issue

PATENT AGENT Dean Adams St. George, VT

Fraline Allgaier Glencoe, IL Jessica Baxter Cumberland, RI Nema Berezny Washington, DC Chhaya B. Bhakta Fremont, CA Erich Boger Kensington, MD Adam M. Breier Washington, DC Pei Chen Chicago, IL Christopher M. Cherry Cockeysville, MD Elaine Chi Albany, NY William Cuchlinski Palm Beach Gardens, FL Lynne R. Edmondson Northfield, OH John Ezcurra Duluth, GA Alan Flum Ridgefield, WA Walter L. Fournier Rochester Hills, MI Kellie S. Fredericks Albany, NY Konata M. George Bowie, MD Bilyana Petrova Georgieva New York, NY Shane F. Gerstl Milwaukee, WI

Gerald F. Gibbs, Jr. Buffalo, NY

Amy F. Mendel Newton, MA

Clay Hagler Canby, OR

Ali Mireshghi San Jose, CA

David Harburger New Haven, CT

Ken Mueller Cambridge, MA

John Henri Longmont, CO

Avery Munoz Eagle River, AK

Ardith E. Hertzog Raleigh, NC

George Murphy Austin, TX

Geoffrey R. Hudson Madison, WI

Michael Nelson Washington, DC

Sanjay Jivraj Indianapolis, IN

Steven Oppenheimer Washington, DC

David P. Jones San Antonio, TX

Gus Pappas Alexandria, VA

Pamela A. Kachur Greensburg, IN

Kameshwari Pappu College Station, TX

Lisa Kajisa Santa Clara, CA

Gajanan Prabhu Chelmsford, MA

Tunde A. Koble San Diego, CA

Pedro A. Rojas Richmond Hill, NY

Kah Sun Lee Fleming Island, FL

John R. Sanders, Jr. Falls Church, VA

Richard Leung Philadelphia, PA

Lisa Seaney Chicago, IL

Paul D. Levin Indianola, PA

Stephen Singer Spencerport, NY

Chang-Hsing (Jason) Liang San Diego, CA

John Sipos Alexandria, VA

Wen-Jeng Lue Sunnyvale, CA

Michael Smith Vashon, WA

Karen V. Martin Boston, MA

Randall W. Smith Englewood, CO

Alejandro Martinez Indianapolis, IN

Jeremy Spier Oldsmar, FL

Kristine E. Matthews Camas, WA

Varad Srivastava Rockford, IL

Amar K. Mehta New York, NY

Otto Steinbusch Palo Alto, CA aipla bulletin

  25


Mark Stevenosky, Jr. Concord, NH Leslie Streeter Houston, TX Nagomi Tsuchida Brisbane, CA Joanne M. Volosky Munhall, PA Jennifer L. Watkins Richardson, TX Peiyong Weng Alexandria, VA Brent K. Whitlock Chicago, IL Michael G. Williams Saint Paul, MN Douglas J. Winkler Minneapolis, MN Daniel R. Wolka Warren, MI Zhuo Xu Washington, DC Lina Yang Allentown, PA Qingshan Ye Minneapolis, MN Jihwang Yeo Bethesda, MD Jeffrey A. Young Kansas City, MO Xin Zhao San Diego, CA

Jacqueline Aguilar Hempstead, NY New York Law School Roman Aguilera Lubbock, TX Texas Tech University School of Law Syed Ahmed Spring, TX University of Houston Law Center Rory Alegria Ridgewood, NJ Rutgers, S.I. Newhouse Center for Law & Justice Melissa Alfred Houston, TX University of Houston Law Center Caroline S. Allen Toledo, OH University of Toledo College of Law David Anderson Alexandria, VA George Washington University National Law Center Jaimie Anderson Roswell, GA Emory University School of Law Meilee Arevalo Philadelphia, PA Temple University Beasley School of Law Ali Atefi Solana Beach, CA Yeshiva University, Benjamin N. Cardozo School of Law

STUDENTS

Bradley Aycock Raleigh, NC University of North Carolina School of Law

Brandon Adkins Arlington, VA Georgetown University Law Center

Emmanuel Azih Athens, GA University of Georgia School of Law

26 

aipla bulletin

Vandana Balakrishnan Redwood City, CA University of California Davis School of Law

Andrew Blair Washington, DC George Washington University National Law Center

Athina Balta Washington, DC George Washington University National Law Center

Rachel Blunk Carrboro, NC University of North Carolina School of Law

Trevor Bannister Pittsburgh, PA University of Pittsburgh School of Law

Danielle Boland-Brown Bloomfield, NJ College of William and Mary Marshall-Wythe School

Sara Barker Nashville, TN Vanderbilt University School of Law

Trentice Bolar Chicago, IL Northwestern University School of Law

Scott Barrett Norwood, MA University of Connecticut School of Law

Nathan Bowers Alexandria, VA George Mason University School of Law

Derek Battisti Humble, TX University of Houston Law Center

Carl Bowers Santa Clara, CA Santa Clara University School of Law

Dustin Bednarz Bryn Mawr, PA Villanova University School of Law Matthew Benavides Evanston, IL Thomas M. Cooley Law School Andre Bennin Provo, UT Brigham Young University J. Reuben Clark Law School Michael Berkey New York, NY Yeshiva University, Benjamin N. Cardozo School of Law Bryan Berman Tustin, CA Whittier Law School Margaux Birdsall Chicago, IL Chicago-Kent College of Law

Andrew Boynton Richmond, VA College of William and Mary Marshall-Wythe School Starr Brookins Fairfax, VA George Washington University National Law Center Matthew Brophy Alexandria, VA George Washington University National Law Center Matthew Brown Pensacola, FL Samford University Cumberland School of Law Alisha R. Buckman San Francisco, CA Golden Gate University Law School Mark Buisseret Evanston, IL Chicago-Kent College of Law Illinois Institute of Technology 2009 spring meeting issue


Jennifer Burgomaster Brooklyn, NY Brooklyn Law School Adam Burrowbridge Washington, DC American University Washington College of Law

Jillian A. Centanni Cherry Hill, NJ Rutgers, The State University of New Jersey, Camden Robin Cerka Macomb, MI Thomas M. Cooley Law School

Beau Burton Baltimore, MD University of Maryland School of Law

Arunava Chakravarti South Orange, N Rutgers, The State University of New Jersey School of Law

Dustin Butler Preston, MD George Mason University School of Law

Yikkan Chan Hartford, CT University of Connecticut School of Law

Eric Bycer Washington, DC American University Washington College of Law

Josephine L. Chang Cleveland, OH Case Western Reserve University Law School

Alice Cabrera Concord, NH Franklin Pierce Law Center

Chanson Chang Chicago, IL Northwestern University School of Law

Nathaniel Carie Kokomo, IN Hofstra University School of Law William A. Carroll Evanston, IL John Marshall Law School Andrea Castetter Indianapolis, IN Indiana University School of Law Indianapolis Daniel Cavallari Arlington, VA The Catholic University of America School of Law Krista Celentano Redwood City, CA University of California Davis School of Law Erwin Cena Sacramento, CA University of California Davis School of Law

2009 spring meeting issue

Aborn Chao Concord, NH Franklin Pierce Law Center Azhar Chaudhary Chevy Chase, MD Georgetown University Law Center Richard Cheng Amherst, NY State University of New York at Buffalo School of Law Shang-Cheng Chiang Concord, NH Franklin Pierce Law Center Abby Chianglin Washington, DC George Washington University National Law Center Jeffrey B. Childers Morgantown, WV West Virginia University Law School

Katherine Chin Quee New York, NY Yeshiva University Benjamin N. Cardozo School of Law Christine Chiramel Jersey City, NJ Yeshiva University Benjamin N. Cardozo School of Law Kuan-Hsun Chiu St. Louis, MO Washington University in St. Louis Anna Christopoulos Redondo Beach, CA Southwestern University School of Law Teresa Clark Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology Trevor J. Clarke Chicago, IL DePaul University Linda Claude-Oben Kinnelon, NJ Yeshiva University Benjamin N. Cardozo School of Law William Clayton Carrboro, NC University of North Carolina School of Law Kellen Clemons Washington, DC American University Washington College of Law Fitz Collings Williamsburg, VA College of William and Mary Marshall-Wythe School David Connaughton, Jr. Concord, NH Franklin Pierce Law Center Girard Courteau Santa Fe, TX University of Houston Law Center

Michelle Cristaldi Ridgewood, NJ Seton Hall University School of Law Michael D’Angelo Maybrook, NY Pennsylvania State University School of Law Kristina Davey Arlington, VA The Catholic University of America School of Law Dan Davidson Washington, DC George Washington University National Law Center Bryan Dean Grand Marais, MN George Washington University National Law Center Kevin DeJong Lebanon, NH Franklin Pierce Law Center Magali Delhaye Houston, TX University of Houston Law Center James Denker Woodbury, MN William Mitchell College of Law Jerad Denton Boulder, CO University of Colorado School of Law Emily DeStefano Washington, DC George Washington University National Law Center Julie Devine Medford Lakes, NJ Drexel University School of Law Alexandros Diamantis Springfield, VA Franklin Pierce Law Center

aipla bulletin

  27


Jacqueline A. DiRamio Alexandria, VA Georgetown University Law Center

Andrea Emanuele Charlottesville, VA University of Virginia School of Law

Margaret Frederick Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology

Yijun Ge Minneapolis, MN University of Minnesota Law School

Bryan Dobbs Alexandria, VA American University Washington College of Law

Colleen Ewell East Lansing, MI Thomas M. Cooley Law School

Jason French Toledo, OH University of Toledo College of Law

Deric X. Geng Boston, MA Suffolk University Law School

Gerard M. Donovan Falls Church, VA Drexel College of Law

Maria Faconti Gualala, CA College of William and Mary Marshall-Wythe School

Ranjit Doraiswamy Ellicott City, MD University of Baltimore School of Law

Jonathan Falk Richmond, VA University of Richmond T. C. Williams School of Law

Megan Doughty Richmond, VA University of Richmond T. C. Williams School of Law

Neil Friedrich Winston-Salem, NC Wake Forest University School of Law

Tiffany D. Gehrke Chicago, IL Loyola University School of Law, Chicago

Anthony R. Frisch Lansing, MI Thomas M. Cooley Law School

Jason German Los Angeles, CA University of California at Los Angeles School of Law

Lee Fanyo Lakewood, CO University of Denver College of Law

Amy Lynn Fuetterer Chicago, IL Loyola University School of Law, Chicago

Golkouh Ghassemlou Washington, DC The Catholic University of America School of Law

Yangzhou Du Jamesburg, NJ Seton Hall University School of Law

Fatema Fathnezhad Toledo, OH University of Toledo College of Law

June Gachui Vienna, VA George Washington University National Law Center

Tawfik Goma Arlington, VA George Washington University National Law Center

Delaine Ducan Brooklyn, NY Yeshiva University Benjamin N. Cardozo School of Law

Jesse Robert Feldman Plantation, FL Nova Southeastern University Shepard Broad Law Center

Joel Gaffney Brooklyn, NY Brooklyn Law School

G. Andrew Gordon San Jose, CA Santa Clara University

Daniel Gajewski Syracuse, NY George Washington University National Law Center

Michael Gordon Chapel Hill, NC University of North Carolina School of Law

Omar Galiano Manchester, NH Franklin Pierce Law Center

Jodie Graham Arlington, VA George Washington University National Law Center

Brian Dupuis Lansings, MI Thomas M. Cooley Law School Leah Edelman Gainesville, FL University of Florida College of Law Benjamin Edlavitch Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology Zachary Edmonds Philadelphia, PA Temple University School of Law Joy Einstein Williamsburg, VA College of William and Mary Marshall-Wythe School

28 

aipla bulletin

Tiffany Fendle Mount Vernon, NY Yeshiva University Benjamin N. Cardozo School of Law Timothy Fisher Oakland, CA University of California Hastings College of the Law Jason Fitzsimmons Arlington, VA George Washington University National Law Center Jessica Flores Washington, DC American University Washington College of Law Maureen Frank Roseville, MN William Mitchell College of Law

Michael Gamble Austin, TX The University of Texas School of Law Brett Gardner Concord, NH Franklin Pierce Law Center Rakiat Gbadamosi Edison, NJ Fordham University School of Law

Robert Gravois Gainesville, FL University of Florida College of Law Paul Green Maple Glen, PA University of Baltimore School of Law William Grigos Huntingdon Valley, PA Drexel University School of Law

2009 spring meeting issue


Allen Grove Miami, FL University of Miami School of Law Aaron Guile New York, NY Yeshiva University Benjamin N. Cardozo School of Law

Alice Qian Han Bayside, NY Yeshiva University Benjamin N. Cardozo School of Law Qiang Hao Houston, TX University of Houston Law Center

Arnold J. Gunn San Deigo, CA University of San Diego School of Law

Peter Hapeman Sammamish, WA Seattle University School of Law

Jeremy Gustrowsky Brownsburg, IN Indiana University School of Law, Indianapolis

Zev Hardman Berkeley, CA University of California - Hastings Law School

Jeremy Gustrowsky Brownsburg, IN Indiana University School of Law, Indianapolis

Steven Hardy Columbia, SC University of South Carolina School of Law

Steven Gutke Centerville, UT University of Illinois College of Law

Brandon Harrell New Orleans, LA Tulane University School of Law

Andrew Haberman Washington, DC American University Washington College of Law William Hales Houston, TX University of Houston Law Center Joshua Hallock Alexandria, VA George Mason University School of Law Young-Ji Ham Brookline, MA Suffolk University Law School Matthew W. Hammersley Charleston, SC Crawford Hampson Valrico, FL College of William and Mary Marshall-Wythe School

2009 spring meeting issue

Kimberly Honeycutt Saint Mary’s, KS Washburn University School of Law Kristen Hoover Stow, OH University of Akron C. Blake McDowell Law Center

Shereka Johnson-Lawrence Baton Rouge, LA Southern University Law Center Randy Jones Bloomington, IN Indiana University School of Law-Bloomington

Meng Tien Hsieh Houston, TX University of Houston Law Center

Tim Josef Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology

Fei Hu Toledo, OH The University of Toledo College of Law

Yongae Jun Akron, OH University of Akron C. Blake McDowell Law Center

Justin Huddleson Watertown, MA Boston University School of Law

Kristin Kafka Washington, DC Georgetown University Law Center

Thaddeus Ilg Skokie, IL Chicago-Kent College of Law Illinois Institute of Technology

Scott Kammlade Atlanta, GA Emory University School of Law

Olivene Harris St. Petersburg, FL Stetson University College of Law

Kelsey Ingram New York, NY Columbia University School of Law

Stephanie Hartung Woodland, CA McGeorge School of Law University of the Pacific

Emi Ito Olney, MD The Catholic University of America School of Law

Hope Hongzhu He San Diego, CA University of Baltimore School of Law

Brian Jackson Pittsburgh, PA University of Pittsburgh School of Law

Michael Keefe Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology

Charlotte Hickman Concord, NH Franklin Pierce Law Center

Katherine Jackson Houston, TX University of Houston Law Center

Whitney Hilton New York, NY Yeshiva University Benjamin N. Cardozo School of Law

Neha Jaiswal San Diego, CA California Western School of Law

Megan Kilzy New York, NY Yeshiva University Benjamin N. Cardozo School of Law

David Holt Chantilly, VA George Washington University National Law Center

Robert Jensen Boston, MA Suffolk University Law School Brian Johnson Alexandria, VA George Washington University National Law Center

Alison Karmelek New York, NY Yeshiva University Benjamin N. Cardozo School of Law Braden Katterheinrich Minneapolis, MN William Mitchell College of Law

Stephen Kim Concord, NH Franklin Pierce Law Center Seon Jeong (Nicole) Kim Astoria, NY Yeshiva University Benjamin N. Cardozo School of Law aipla bulletin

  29


Yongwoon Kim Houston, TX University of Houston Law Center Monica King Bellevue, WA Seattle University School of Law John Kington, II St. Louis, MO Washington University School of Law Lail Kleinman Monroe, NY New York Law School Michael Knierim Williamsburg, VA College of William and Mary Marshall-Wythe School Theodoros Konstantakopoulos \New York, NY Fordham University School of Law Michael Korson Notre Dame, IN Notre Dame Law School Greg Kowalski Washington, DC American University Washington College of Law Ross Krutsinger Concord, NH Franklin Pierce Law Center David Kuklewicz Gainesville, FL University of Florida College of Law

David Lansky Great Neck, NY Fordham University School of Law

Ammon Lesher Columbia, SC University of South Carolina School of Law

David Lukach Kingsport, TN Wake Forest University Schhol of Law

Guillermo Lara Lubbock, TX Texas Wesleyan University School of Law

Ka Chun Leung Pittsburgh, PA University of Pittsburgh School of Law

Stephen Lund Philadelphia, PA The Earl Mack School of Law at Drexel University

Christa Laser Alexandria, VA George Washington University National Law Center

He Li Falls Church, VA The Catholic University of America School of Law

Kenneth Luptak Chicago, IL Loyola University School of Law, Chicago

Tod Leaven Chapel Hill, NC University of North Carolina School of Law

Michelle Lin Brooklyn, NY Fordham University School of Law

Andrew Maas Canton. OH University of Akron C. Blake McDowell Law Center

Erick Lee Arlington, VA George Washington University National Law Center

Xiaohong Lin Gainesville, FL University of Florida College of Law

James Mac William Dumont, NJ Seton Hall University School of Law

Betty Lee Alexandria, VA George Mason University School of Law

Haixia Lin Cambridge, MA Harvard University

Catherine J. Mader Hillsborough, NC North Carolina Central University School of Law

Kerri Lee Wood Ridge, NJ Seton Hall University School of Law Sul lee New York, NY Yeshiva University Benjamin N. Cardozo School of Law Mark Lee Ann Arbor, MI Thomas M. Cooley Law School

Jason LaBerteaux West Hartford, CT University of Connecticut School of Law

Brian Lee Atherton, CA Golden Gate University School of Law

Janine S. Ladislaw Boston, MA Boston College

Ryan (Seung W.) Lee Atlanta, GA Emory University School of Law

Jennifer Lake Lexington, VA Washington and Lee University School of Law

Sasha Legere Edmond, OK University of Oklahoma Law Center

30 

aipla bulletin

Sydney Lisy Joliet, IL Valparaiso University School of Law

Bahram Mahdavi Corona del Mar, CA Whittier Law School

Xiaoxiang Liu Rivervale, NJ Seton Hall University Law School

Travis Manfredi San Francisco, CA University of San Francisco School of Law

Andrew S. Lo Voorhees, NJ Widener University School of Law

Jonathan Marenus New York,NY Yeshiva University Benjamin N. Cardozo School of Law

Christopher Lotzow Bainbridge, IN Indiana University School of Law, Indianapolis William R. Lovin Frisco, TX University of Tulsa Law School Hao Lu Atlanta, GA Georgia State University College of Law

Erin Martell West Hartford, CT University of Connecticut Law School Aaron Marx New York, NY Brooklyn Law School Margaret McInerney New York, NY Fordham University School of Law 2009 spring meeting issue


John C. McIntire Chanhassen, MN University of Minnesota School of Law Erin McLaughlin New Orleans, LA Tulane University School of Law Scott A. McMurray New York, NY Fordham University School of Law Amar Mehta Brighton, MA Boston College Law School Harry Metka Glenmoore, PA Felicia Metz Greenbelt, MD University of Baltimore School of Law Ryan Miller Philadelphia, PA Drexel University School of Law Amy A. Mills San Diego, CA University of San Diego Joseph Monaghan Cranford, NJ Matthew Mong Glendale, CA Southwestern University School of Law Daniel Moon New York, NY Yeshiva University Benjamin N. Cardozo School of Law Jacob Moore Gainesville, FL University of Florida College of Law Matthew Moore Durham, NC Duke University School of Law

2009 spring meeting issue

Danielle Moriber New York, NY Yeshiva University, Benjamin N. Cardozo School of Law Jordan Morris Durham, NC Duke University School of Law Angela Morrison Boulder, CO University of Colorado School of Law Michael Mort Arlington, VA George Washington University Jessica Morton Philadelphia, PA Temple University School of Law Bryon Moser Astoria, NY Yeshiva University Benjamin N. Cardozo School of Law Ari Moskowitz Washington, DC George Washington University National Law Center Amar Movva Arlington, VA George Mason University School of Law Adam Muzika New York, NY New York Law School Leora Naamat Far Rockaway, NY Hofstra University School of Law James Nachtwey San Francisco, CA University of California, Hastings College of the Law Koichiro Nakamura Houston, TX University of Houston Law Center

Christopher Neahring Chicago, IL John Marshall Law School

Brendan O’Dea Brooklyn, NY Brooklyn Law School

Thomas Negley Winter Haven, FL Georgetown University Law Center

Steven John Olsen Portage, IN Valparaiso University

Jason Nehmer Rockville, MD The Catholic University of America School of Law JaMel Nelson Southfield, MI George Washington University National Law Center Anastasia Newell Jersey City, NJ Seton Hall University School of Law Karla Ng New York, NY Yeshiva University Benjamin N. Cardozo School of Law Mark Nickas Wilmington, MA Boston University School of Law Ebony Nicolas New York, NY Yeshiva University Benjamin N. Cardozo School of Law Athas Nikolakakos Philadelphia, PA Temple University School of Law Siri Nilsson Jamaica Plain, MA Boston College Law School John Norton Concord, NH Franklin Pierce Law Center Alborz Nowamooz Houston, TX University of Houston Law Center

Gabriel Opatken Nashville, TN Vanderbilt University School of Law Hauwa Otori Washington, DC American University Washington College of Law Christian Ottesen North Potomac, MD Leslie Owen Waldo, FL University of Florida College of Law Rene Pabon-Ortiz Gainesville, FL University of Florida College of Law Conrad Pack Staten Island, NY Yeshiva University Benjamin N. Cardozo School of Law Ying Pan Milwaukee, WI Marquette University Law School Lin Pang Greenbelt, MD University of Maryland School of Law Khachatur Papanyan Houston, TX University of Houston Law Center Eileen Pape Houston, TX University of Houston Law Center Ahseon Park Centreville, VA University of Connecticut Law School aipla bulletin

  31


Seong Jun Park Concord, NH Franklin Pierce Law Center Brian G. Parke Washington, DC George Mason University Law School Valerie Paul Provo, UT Brigham Young University J. Reuben Clark Law School Zhe Peng Seattle, WA University of Washington School of Law Susan Perera St. Louis Park, MN University of Minnesota Law School Matthew Perez Floral Park, NY Yeshiva University Benjamin N. Cardozo School of Law Alexander Perry Washington, DC Georgetown University Law Center Isaac Pflaum Manlus, NY Georgetown University Law Center April Pinder Camby, IN Indiana University School of Law

Margaret Pollard Washington, DC George Washington University National Law Center

Jose Recio Washington, DC George Washington University National Law Center

Brett Postal North Potomac, MD George Washington University National Law Center

Brian Reese Clifton Park, NY Albany Law School Union University

James A. Potter Omaha, NE Creighton University School of Law

Elizabeth Rezaizadeh Rockville, MD University of Maryland School of Law

Courtney Proctor Silver Spring, MD George Washington University National Law Center

Christopher Ricciuti Philadelphia, PA

Philip Prorok Arlington Heights, IL Chicago-Kent College of Law Illinois Institute of Technology Amiel Provosty New Orleans, LA Tulane University School of Law Chunbo Qin Rego Park, NY Fordham University School of Law Sean Quinn Broadview Heights, OH University of Akron C. Blake McDowell Law Center Stephanie L. Raines Howell, MI Wayne State Law School

Justin Pine New Bedford, MA Boston College Law School

Simana Rao Metuchen, NJ Rutgers, State University of New Jersey School of Law

Brian Plunkett Washington, DC George Washington University National Law Center

Palani Rathinasamy Washington, DC Georgetown University Law Center

Stephen P. Podobinski Saint Paul, MN William Mitchel College of Law

Keivan E. Razavi New York, NY New York Law School

32 

aipla bulletin

Peter Richman Philadelphia, PA Temple University School of Law Benjamin Roberts Arlington, VA George Washington University National Law Center Stephanie Roberts New Orleans, LA Tulane University School of Law Trenton Roche Washington, DC The Catholic University of America School of Law Brian Rockwell Washington, DC American University Washington College of Law Jesse Rodgers Newark, NJ Seton Hall University School of Law

Felicia N. Rovegno Howard Beach, NY St. John University Ernesto Rubi Miramar, FL Florida International College of Law Krystle M. Rudzinski Silver Spring, MD Catholic University of America Setareh Samii Washington, DC George Washington University National Law Center Jeff Sanchez Spanish Fork, UT Brigham Young University J. Ruben Clark Law School Michael Sander New York, NY Rutgers, State University of New Jersey School of Law Aaron Sanders Alexandria, VA George Mason University School of Law Hilari A. Sautbine Noblesville, IN Indiana University - Indianapolis School of Law Matthew A. Schandler North Huntingdon, PA Duquesne University Ryan Schermerhorn Chicago, IL DePaul University Law School

Jonathan Rogers Richmond, VA University of Richmond T. C. Williams School of Law

Kristen Schuck New York, NY Rutgers, State University of New Jersey School of Law

Timothy J. Rogers Westford, MA Franklin Pierce Law Center

Jared Schuettenhelm San Jose, CA Santa Clara University School of Law

Daniel Rosenholtz Washington, DC American University Washington College of Law

2009 spring meeting issue


Melanie Seader Baltimore, MD University of Baltimore School of Law Eric M. Seidmon Davie, FL Nova Southeastern University Law School Elise Selinger Houston, TX University of Houston Law Center Andrew Sellars West Townsend, MA George Washington University National Law Center

Meghan Shumaker New Orleans, LA Tulane University School of Law Christopher Siebens Charlottesville, VA University of Virginia School of Law Melissa A. Sikorski Charlestown, MA Suffolk University Frederico Simone Chicago, IL Cassius Sims Durham, NC Duke University School of Law

David Seto Diamond Bar, CA University of San Diego School of Law

Priya Singh Washington, DC American University Washington College of Law

Mehul Shah Los Angeles, CA Southwestern University School of Law

Roshni Sitapara Derwood, MD The Catholic University of America School of Law

Elijah Sheets Concord, NH Franklin Pierce Law Center

Steven Skelley New York, NY Yeshiva University Benjamin N. Cardozo School of Law

David Shim Chicago, IL Chicago-Kent College of Law Marcela Shirsat College Park, MD American University Washington College of Law Pranjal Shirwaik Jersey City, NJ Yeshiva University Benjamin N. Cardozo School of Law John Shiver San Francisco, CA University of San Francisco School of Law Jenny Shum Newton, MA Boston College School of Law

2009 spring meeting issue

Ryan Smith San Diego, CA University of San Diego School of Law Vincent Smolczynski Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology Peter Solinsky Philadelphia, PA Temple University David Son New York, NY Yeshiva University Benjamin N. Cardozo School of Law

Sunghun Son Astoria, NY Fordham University School of Law

Kathy Swett Valparaiso, IN Valparaiso University School of Law

Wei Song Groton, CT University of Connecticut School of Law

Wayne K. Swier Eugene, OR University of Oregon Law School

Thomas Song Irvine, CA Loyola Law School Alfred Soriano New York, NY Yeshiva University Benjamin N. Cardozo School of Law Ronald Stern Seattle, WA Seattle University School of Law Shannon Stevens Newark, NJ Seton Hall University School of Law Scott Stiefel Western Springs, IL The Catholic University of America School of Law Michelle Stoll Boulder, CO University of Colorado School of Law Lisa Strauss Washington, DC George Washington University National Law Center Hilary Sumner Richland, PA University of Connecticut Kristina Swanson Chicago, IL John Marshall Law School Jeffrey Baron Swartz Fair Oaks Ranch, TX University of Texas

Matthew Swingle Baton Rouge, LA Louisiana State University Law Center David Tamaroff Miami, FL University of Miami School of Law Elliot Taylor Lexington, KY University of Kentucky College of Law Chika Teranishi Concord, NH Franklin Pierce Law Center Michael Thomas Los Angeles, CA Loyola Law School Theodore Thompson, II St. Paul, MN William Mitchell College of Law William Tierney, Jr. Sterling Heights, MI Wayne State University Law School John Torcivia Yorktown, VA College of William and Mary Marshall-Wythe School Tyler Torgrimson St. Paul, MN William Mitchell College of Law Ethan Townsend Wilmington, DE Villanova University School of Law Antigoni Trachaliou Washington, DC George Washington University National Law Center aipla bulletin

  33


Tho Q. Tran St. Louis, MO Saint Louis University School of Law

Christie Walton Washington, DC George Washington University National Law Center

Richard Tuminello, Jr. Marina Del Rey, CA Loyola Law School

Hao Wang Indianapolis, IN Indiana University School of Law Indianapolis

Parithosh Tungaturthi Alexandria, VA University of Baltimore School of Law Tomiyo Turner Washington, DC American University Washington College of Law

Xinghao Wang Minneapolis, MN University of Minnesota Law School Megan H. Wantland Gainesville, FL University of Florida

Antigone Tzakis Astoria, NY St. John’s University Law School

Nicole Wanty Butternut, WI Franklin Pierce Law Center

Melissa Ung Arlington, VA The Catholic University of America School of Law

Ryan Ward Lubbock, TX Texas Tech University School of Law

Ali M. Uyanik Cupertino, CA Santa Clara University School of Law

Risa Weaver Durham, NC Duke University School of Law

Michael Van Handel Washington, DC George Washington University National Law Center Anita van Tilburg Los Angeles, CA Loyola Law School G. Steven Vanni Alexandria, VA George Washington University Alexander Varond San Diego, CA George Washington University National Law Center Umashankar Venkatesan Willianston, SC Thomas M. Cooley Law School Michael Visconti, III Boston, MA Boston College Law School 34 

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Allison Weimer Bloomington, IN Indiana University School of Law Bloomington Christopher Wen Little Falls, NJ Brooklyn Law School Jonathan Whitcomb Concord, NH Franklin Pierce Law Center Tyson Wilde Aurora, CO University of Denver College of Law Jason Williams Beavercreek, OH University of Dayton School of Law William Wong Los Angeles, CA University of California at Los Angeles School of Law

Alisha Wood Newport Coast, CA Whittier Law School Lin Xiao Chicago, IL The University of Michigan Law School Yue Xu Fremont, CA University of San Francisco Zhang Lei Yan Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology Liuchun Yang Vernon Hills, IL An-Mean Yeh Williamsville, NY University of Buffalo School of Law

Yi Zhang Monterey Park, CA University of California at Los Angeles School of Law Joe Weiguo Zhou Havertown, PA Temple University School of Law Feng Zhou Washington, DC George Washington University National Law Center Dmitry Zuev Wallingford, CT University of Connecticut School of Law Eric Zylstra San Francisco, CA University of San Francisco School of Law

Robert Yost Yardley, PA Temple University School of Law Michael Young, Jr. Chapel Hill, NC University of North Carolina School of Law Wallace Young Concord, NH Franklin Pierce Law Center Elizabeth R. Youngkin Pittsburgh, PA University of Pittsburgh School of Law Logan Yu East Brunswick, NJ Brooklyn Law School Staci Zaretsky Springfield, MA Western New England College School of Law Zhijun Zhang Oakdale, CT University of Connecticut School of Law

2009 spring meeting issue


news of members James L. Young has been elected president of the board of directors of the Minnesota Inventors Hall of Fame. The Minnesota Inventors Hall of Fame honors those Minnesota inventors who have made significant contributions to society through their inventive efforts. Inductees into the Minnesota Inventors Hall of Fame are honored at the Minnesota Inventors Hall of Fame permanent exhibit in Redwood Falls, Minnesota (home of the Minnesota Inventors Congress), as well as online at www.minnesotainventors.org. Mr. Young continues to practice intellectual property law at the Minneapolis law firm of Westman, Champlin and Kelly. Mr. Young is involved in domestic and international patent and trademark prosecution, due diligence, clearance, counseling and licensing. He received his JD and BS-Industrial Engineering degrees from the University of Nebraska. Mr. Young is admitted to the bar in Minnesota, Nebraska and the US Patent and Trademark Office. Christopher A. Rothe has also become a shareholder of RatnerPrestia. Mr. Rothe focuses his practice in intellecting, and commercializing technology and intellectual property assets. Daniel F. Drexler, a partner at Cantor Colburn LLP in Hartford, has been appointed president of the Connecticut Intellectual Property Law Association (CIPLA), for a yearlong term.

Mr. Drexler has been a patent attorney for ten years. He concentrates his practice on patent preparation and procurement, strategic intellectual property (IP) portfolio development, due diligence in IP acquisitions, and client counseling and risk assessment in the areas of patent noninfringement, invalidity, and right-to-practice. Mr. Drexler holds a Bachelor of Science in Civil and Environmental Engineering from Rutgers University’s College of Engineering and a law degree from Pace University School of Law. CIPLA elected another Cantor Colburn attorney as its Program Chair: Ian J.S. Lodovice, an associate with the firm, will serve in that post for a year. Mr. Lodovice was a research scientist with Pfizer before joining Cantor Colburn. He holds an MA in molecular genetics and a BS in microbiology from the University of Rhode Island, and a JD from the University of Connecticut Law School. The mission of the CIPLA is to promote a standard of ethics and professionalism among its members, to aid in the preservation of intellectual property rights and in the future development of patent and trademark and copyright laws, and to generally consider matters of common interest to the profession and of the public’s best interest. Cantor Colburn LLP, the largest intellectual property boutique law firm in Connecticut, has longstanding ties with the CIPLA. Michael J. Rye, a litigation partner, is a past president and currently serves on the board of governors. Iván Alfredo Poli has joined Marval, O’Farrell & Mairal as a Partner.

Daniel F. Drexler

Ian J.S. Lodovic

“It’s an honor to have a leadership role in the thriving Connecticut intellectual property community.” said Mr. Drexler. 2009 spring meeting issue

Iván was previously the Senior Partner at Korsky & Co., a specialist IP boutique that had been in practice for more than 50 years. Marval O’Farrell & Mairal’s IP practice has now incorporated Korsky & Co. Iván has long been regarded by his peers in Argentina as one of the country’s leading IP attorneys, particularly in the patent and design field. We are committed to giving our clients specialist legal expertise that reflect the needs of their business and specific industries. Ivan’s specialist aipla bulletin

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knowledge in this area of IP law will give our clients an edge in both protecting and enforcing their valued IP rights. According to Chambers Latin America (2008), Mr. Poli is considered “absolutely brilliant” in trademarks, but “it is in all aspects of industrial design work and patents that are regarded as his true forte, areas in which he is regarded as ‘deeply impressive and probably one of the top five in the market’”. He graduated as a lawyer from the Universidad de Buenos Aires in 1973 and obtained a Master of Comparative Law (Foreign Practice) from The George Washington University (Washington, D.C.) in 1978. In 1981 he obtained his Ph.D. from the Universidad de Buenos Aires. Mr. Poli has lectured in several seminars on industrial property and has written various articles in national and foreign publications, as well as three books, respectively

deceased members

Frank Burruss Pugsley, AIPLA Past President (196667), passed away on Tuesday, September 22, 2009, in Houston, Texas. He was 89. Frank was born on the 3rd of April 1920, in Kansas City, Missouri, to Charles Silvey and Emma Burruss Pugsley. As a child he moved with his family to San Benito, Texas, where he met his future wife and love of his life, Aline East. Frank earned an engineering degree in 1941 from the University of Texas, where he served as president of his engineering class and was a member of Friars. He then promptly enlisted in the United States Navy, serving in the Pacific. He and Aline were married in May of 1943 in San Benito, Texas. At the end of the war, they moved to New York where Frank began working as an engineer for General Electric. While there he obtained a law degree, and then moved to Houston, joining the firm of Baker & Botts. While at Baker & Botts, he founded its intellectual property section, and served as president of the American Intellectual Property Law Association. In 1983 Frank was asked to lead the first delegation of intellectual property lawyers to China. Tom Arnold, AIPLA Past President (1979-1980), passed away on Thursday, June 4, 2009. He was 85. In 1957, Tom founded and was the force behind the Houston law firm, Arnold, White & Durkee (AWD), which merged with Howrey in 2000 to become Howrey, Simon, Arnold & 36 

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on utility models, patents, and industrial designs. He currently is a postgraduate Professor of Industrial Property (utility models and industrial designs) in the Universidad de Buenos Aires and the Universidad Austral. He also speaks Spanish, English, German and French. Sandra M. Sovinski announces formation of Innovative IP, LLC, a new Central Florida intellectual property boutique. The firm is based out of New Smyrna Beach, and serves clients worldwide in various industries and technologies, representing corporate and individual clients in a variety of patent, trademark, copyright, licensing, and related matters. Ms. Sovinski focuses her practice on domestic and international patent and trademark prosecution, client counseling, and opinions. She has over nine years experience, having previously been Managing Partner of Kaplan Ward & Patel’s Florida office, and is admitted to the bar in Florida and Georgia, and the US Patent and Trademark Office.

Please see our upcoming Annual Meeting Bulletin for more detailed tributes to these past presidents. White. He specialized in IP law for more than 50 years and had been instrumental in the AWD’s growth into a nationally recognized intellectual property firm. Tom was born in Houston, Texas in 1923. He received his BSEE with honors from the University of Texas- Austin. Prior to his law practice, Tom served in the US Navy during the WWII era, where he was trained in the area of diesel, electrical, and steam power plants, hydraulics, and radar. Upon receiving his law degree with honors from the University of Texas - Austin, he went to work for the Department of Justice Section on Patent Law and later entered private practice. Tom was a well known author in his field authoring over 400 books, articles and speeches on intellectual property, litigation, licensing, antitrust, bankruptcy, mediation, arbitration, and related subject matters. In 1956, Tom had founded his own patent law firm and developed it into one of the most prominent and well known patent law firms in the country. In 2004, Tom received the Lifetime Achievement Award from The National Inventors Hall of Fame, Inc., an organization dedicated to honoring and fostering creativity and invention which normally only recognizes inventors. The organization chose to honor Tom because of his standing in the field of intellectual property law. Tom will be honored at the AIPLA Annual Meeting with the 2009 AIPLA Excellence Award. 2009 spring meeting issue


future meetings calendar

For updated schedule, visit www.aipla.org.

2009

2010

October 14 – 17

AIPPI Forum, Buenos Aires, Argentina (www.aippi.org)

January 27 – 30

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, La Quinta Resort & Club, La Quinta, CA (703-415-0780)

October 14

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVI, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

May 6 – 8

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, New York Marriott Marquis, New York, NY (703-415-0780)

October 15 – 17

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

May 22 – 26

INTA Annual Meeting, Boston, MA (www.inta.org)

October 24 – 28

ASIPI Congress, Lima, Peru (www.asipi.org)

August 5 – 10

ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)

November 4 – 6

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

November 18 – 22

APAA, 15th General Assembly and 56th & 57th Council Meetings, Hong Kong (www.apaaonline.org)

2009 spring meeting issue

September 12 – 14 IPO Annual Meeting, The Hyatt Regency, Atlanta, GA (www.ipo.org) October 1 – 6

AIPPI, 42nd World IP Congress, Paris, France (www.aippi.org)

October 20

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 21 – 23

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

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future meetings calendar For updated schedule, visit www.aipla.org.

2011 February 2 – 5

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, The Peabody Hotel, Orlando, FL

May 12 – 14

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, The Palace Hotel, San Francisco, CA

May 14 – 18

INTA Annual Meeting, San Francisco, CA (www.inta.org)

August 5 – 10

ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)

September 11 – 13

IPO Annual Meeting, Los Angeles, CA (www.ipo.org)

October 19

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVIII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 20-22

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)

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2012 May 5 – 9

INTA Annual Meeting, Washington, DC (www.inta.org)

October 24

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XIX, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 25-27

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)

2009 spring meeting issue


2008 Annual Meeting Washington, DC • October 23-25, 2008

Alabama............................................... 16.2 (1.0) Alaska...................................................16.0 (1.0) Arizona.................................................16.0 (1.0) Arkansas...........................................16.25 (1.0) California...........................................16.0 (1.0) Colorado . .........................................19.0 (1.2) Connecticut......................................16.0 (1.0) Delaware.............................................19.4 (1.2) Florida.................................................19.0 (1.0) Georgia................................................16.1 (1.0) Idaho.......................................................... 15.75 Illinois..................................................16.0 (1.0) Indiana..................................................16.2 (1.0) Iowa.....................................................16.25 (1.0) Kansas..................................................19.0 (1.0) Kentucky...........................................16.25 (1.0)

Alabama................................................16.6 (1.0) Alaska...................................................16.5 (1.0) Arizona.................................................16.5 (1.0) Arkansas.............................................16.5 (1.0) California...........................................16.5 (1.0) Colorado............................................20.0 (1.2) Connecticut......................................16.5 (1.0) Delaware.............................................20.1 (1.2) Florida.................................................20.0 (1.0) Georgia................................................17.5 (1.0) Idaho...........................................................16.75 Illinois..................................................16.5 (1.0) Indiana..................................................16.6 (1.0) Iowa.......................................................16.5 (1.0) Kansas..................................................20.0 (1.0) Kentucky.............................................16.5 (1.0)

ALABAMA................................................16.0 (1.0) ALASKA...................................................16.0 (1.0) ARIZONA.................................................16.0 (1.0) ARKANSAS.............................................16.0 (1.0) CALIFORNIA...........................................16.0 (1.0) COLORADO............................................19.0 (1.2) CONNECTICUT......................................16.0 (1.0) DELAWARE.............................................19.2 (1.2) FLORIDA.................................................19.0 (1.0) GEORGIA................................................16.0 (1.0) IDAHO.......................................................... 14.75 ILLINOIS..............................................15.75 (1.75) INDIANA..................................................16.0 (1.0) IOWA.......................................................16.0 (1.0) KANSAS..................................................19.0 (1.0) KENTUCKY.............................................16.0 (1.0)

2009 spring meeting issue

Louisiana............................................16.16 (1.0) Maine.....................................................16.1 (1.0) Minnesota......................................... 15.75 (1.0) Mississippi...........................................16.2 (1.0) Missouri...............................................18.9 (1.2) Montana.............................................16.17 (1.0) Nevada..................................................16.0 (1.0) New Hampshire..................................17.3 (1.0) New Mexico.........................................16.0 (1.0) New York.............................................19.0 (1.0) North Carolina.................................16.0 (1.0) North Dakota....................................16.0 (1.0) Ohio.....................................................16.25 (1.0) Oklahoma............................................19.5 (1.0) Oregon.................................................17.0 (1.0) Pennsylvania......................................16.0 (1.0)

2009 Mid-Winter Institute Miami, FL • January 28-31, 2009 Louisiana............................................16.58 (1.0) Maine.....................................................16.5 (1.0) Minnesota............................................16.5 (1.0) Mississippi...........................................16.6 (1.0) MissourI...............................................20.1 (1.2) Montana.............................................16.58 (1.0) Nevada..................................................16.5 (1.0) New Hampshire..................................17.5 (1.0) New Mexico.........................................16.5 (1.0) New York.............................................20.0 (1.0) North Carolina.................................16.5 (1.0) North Dakota....................................16.5 (1.0) Ohio.......................................................16.5 (1.0) Oklahoma............................................20.0 (1.0) Oregon.................................................16.5 (1.0) Pennsylvania......................................16.5 (1.0)

2009 Spring Meeting San Diego, CA • May 13-15, 2009 LOUISIANA..............................................16.0 (1.0) MAINE.....................................................16.0 (1.0) MINNESOTA..........................................15.75 (1.0) MISSISSIPPI...........................................16.0 (1.0) MISSOURI...............................................18.9 (1.2) MONTANA...............................................16.0 (1.0) NEVADA..................................................16.0 (1.0) NEW HAMPSHIRE..................................23.5 (1.5) NEW MEXICO.........................................16.0 (1.0) NEW YORK.............................................19.0 (1.0) N. CAROLINA..........................................16.0 (1.0) N. DAKOTA..............................................16.0 (1.0) OHIO.....................................................16.25 (1.0) OKLAHOMA............................................19.0 (1.0) OREGON.................................................17.0 (1.0) PENNSYLVANIA......................................16.0 (1.0)

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update

Rhode Island......................................19.0 (1.0) South Carolina...............................16.17 (1.0) Tennessee.........................................17.08 (1.0) Texas.....................................................16.0 (1.0) Utah.......................................................16.0 (1.0) Vermont...............................................16.0 (1.0) Virginia.................................................15.5 (1.0) Washington........................................16.0 (1.0) West Virginia......................................19.4 (1.2) Wisconsin............................................19.0 (1.0) Wyoming.............................................16.25 (1.0)

Ethics credit is indicated in parenthesis and is included in the total.

Rhode Island......................................20.0 (1.0) South Carolina...............................17.58 (1.0) Tennessee.........................................17.58 (1.0) Texas.....................................................16.5 (1.0) Utah.......................................................16.5 (1.0) Vermont...............................................16.5 (1.0) Virginia.................................................16.5 (1.0) Washington........................................16.5 (1.0) West Virginia......................................20.1 (1.2) Wisconsin............................................20.0 (1.0) Wyoming.............................................16.75 (1.0) Ethics credit is indicated in parenthesis and is included in the total.

RHODE ISLAND......................................19.0 (1.0) S. CAROLINA..........................................16.0 (1.0) TENNESSEE.......................................16.58 (1.58) TEXAS.....................................................16.0 (1.0) UTAH.......................................................16.0 (1.0) VERMONT...............................................16.0 (1.0) VIRGINIA.................................................16.0 (1.0) WASHINGTON........................................16.0 (1.0) W. VIRGINIA............................................19.2 (2.5) WISCONSIN............................................22.5 (1.0) WYOMING...............................................16.0 (1.0) Ethics credit is indicated in parenthesis and is included in the total.

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ALABAMA......................................................... 7.8 ALASKA.......................................................... 7.75 ARIZONA........................................................ 7.75 ARKANSAS.................................................... 7.75 CALIFORNIA.................................................. 7.75 COLORADO..................................................... 8.0 CONNECTICUT............................................... 7.5 DELAWARE...................................................... 9.3 FLORIDA........................................................ 10.5 GEORGIA......................................................... 7.7 IDAHO............................................................ 7.75 ILLINOIS......................................................... 7.75 INDIANA........................................................... 7.8 IOWA.............................................................. 7.75 KANSAS........................................................... 9.0 KENTUCKY.................................................... 7.75

2009 Trademark Boot Camp Alexandria, VA • June 17, 2009 LOUISIANA..................................................... 7.75 MAINE.................................................................... MINNESOTA................................................... 7.75 MISSISSIPPI.................................................... 7.8 MISSOURI........................................................ 9.0 MONTANA...................................................... 7.75 NEVADA........................................................... 7.5 NEW HAMPSHIRE......................................... 7.75 NEW MEXICO................................................ 7.75 NEW YORK...................................................... 9.0 N. CAROLINA................................................. 7.75 N. DAKOTA....................................................... 7.5 OHIO.............................................................. 7.75 OKLAHOMA..................................................... 9.5 OREGON........................................................ 8.25 PENNSYLVANIA............................................... 7.5

RHODE ISLAND............................................... 9.0 S. CAROLINA................................................. 7.75 TENNESSEE.................................................. 7.75 TEXAS.............................................................. 7.5 UTAH................................................................ 7.5 VERMONT...................................................... 7.75 VIRGINIA.......................................................... 8.0 WASHINGTON............................................... 7.75 W. VIRGINIA..................................................... 9.3 WISCONSIN..................................................... 9.0 WYOMING...................................................... 7.75

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

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)

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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 parenthesis and is included in the total.

2009 spring meeting issue


AIPLA call

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. 2009 spring meeting issue

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aipla bulletin

2009 spring meeting issue


copyright office affairs by: Wendi A. Maloney & Judith Nierman (photos below)

Office Proposes Fee Adjustments The Register of Copyrights submitted a report to Congress on March 15 proposing a new fee schedule for copyright services to take effect on or about August 1. Thanks to cost-savings achieved through increased Office automation, some fees will remain the same or decrease. Other fees—mostly for services requiring manual labor—will rise. The report analyzes changes in costs resulting from the August 2007 Office reengineering and the introduction in July 2008 of the electronic Copyright Office’s eService system. In addition, it assesses economic factors and takes into account the legal requirement that fees be fair and equitable and support the objectives of the copyright system.

by staff—the Office is proposing fee increases to offset rising costs. In addition to registrations filed on paper applications, services affected include document recordation and searches of records. “More than 50 percent of copyright claims are now being submitted through eService,” says Register of Copyrights Marybeth Peters. “If the new fee structure inspires another 30 to 40 percent of filers to use eService, the total annual savings for filers and the government will be tremendous, and filers will get their registration certificates more quickly—the waiting time to receive certificates is much shorter for users of eService than for those who submit paper applications.” To read the full report, go to www.copyright.gov/ reports/fees2009.pdf. For a list of adjusted fees, go to www.copyright.gov/docs/fees.html. Under copyright law, fee adjustments proposed by the Register of Copyrights can be implemented 120 days after a new schedule is submitted to Congress unless Congress enacts a law beforehand stating that it does not approve the new fees.

The proposed fee for filing a copyright application online using eService remains $35. The report explains that the Office realizes substantial savings from eService as a result of not “having to process a paper form, manually enter and qualityreview data, [and] process a fee payment.” The proposed new fee for filings on fill-in Form CO, which includes a 2D barcode, is $50; the new fee Current Copyright Office Processing Time and Service for traditional paper applications is $65. The Copyright Office is working diligently to improve For other services for which costs have remained processing times and service to the public. Current constant or dropped since fees were last processing times by filing method are as follows: adjusted in July 2006, the Office is proposing that • E-Service with electronic deposit: 4.5 months for 90 percent to be completed; 33 percent corresponding fees stay the same or be adjusted completed in 2.5 months. downward. For services for which costs have gone up—specifically those requiring manual work 2009 spring meeting issue

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• E-Service with physical deposit: 6.5 months for 90 percent to be completed; 33 percent completed in 3.5 months. • Paper claims: 19 months for 90 percent to be completed; 33 percent completed in 14 months.

• •

You can save money and time and help us improve our services by filing claims online through the • electronic Copyright Office (eCO). Please visit www.copyright.gov for more information. • Office Adopts Amendments to Termination Regulations By publication in the Federal Register (74 FR 12554), the Copyright Office adopted amendments to its regulations regarding termination. Termination is the reversion of the rights of copyright to the author, or to other specified beneficiaries if the author is dead, after a specified number of years and under certain conditions. Termination is achieved by serving a timely written notice on the transferee. Notices of termination can be served by authors or certain heirs or representatives of authors as specified in the law to end grants of transfer, licenses of copyright, or the divisible rights under the copyright law. The provisions for termination allow authors or heirs a second opportunity to share in the economic success of their works. The announcement says, “By all accounts, the termination provisions are dense and formalistic, particularly for a nonlawyer. In summary, the author (or, if the author is deceased, the party specified by statute) must serve the notice of termination in writing on a grantee or the grantee’s successorin-title not less than two or more than ten years before the effective date in a form and manner prescribed by regulation.” The notice of termination must be recorded in the Copyright Office prior to the effective date of the termination.

it as a document pertaining to copyright but will not index it as a notice of termination; clarify that recordation of a notice of termination by the Office does not necessarily mean that the document is legally sufficient; update the legibility requirements for all recorded documents, including notices of termination; make minor explanatory edits to the fee schedule for multiple titles within a document; establish a new mailing address to which notices of termination should be sent. The new address is Copyright Office, Notices of Termination, P.O. Box 71537, Washington, DC 20024-1537.

To read a discussion of the amendments, go to the Copyright Office website at www.copyright.gov/ fedreg. For further information on termination, read page 6 of Circular 1, Copyright Basics, available on the Office website. Register Testifies about Cable and Satellite Licenses Register of Copyrights Marybeth Peters testified before the House Judiciary Committee on February 25 about the cable and satellite statutory licenses in the copyright law, one of which will expire at the end of this year unless Congress renews it. The hearing was among three that took place in the House and the Senate on February 24–25 on the same subject. John Conyers (D-Mich.), chair of the House Judiciary Committee, said the hearing before his committee was the first in a series of discussions to take place throughout the spring.

In her testimony, Peters reiterated points from a June 2008 report the Office submitted to Congress recommending that the distant-signal licenses contained in sections 111 and 119 of the Copyright Act be phased out. Section 111 permits cable operators to retransmit copyrighted works on distant broadcast signals in exchange for payment The purpose of the amendments is to: of royalties at government-regulated rates; • communicate the Office’s practices as to section 119, which is set to expire on December its receipt of notices of termination that are 31, allows satellite carriers to do the same. untimely. If the notice is early, it will be returned. Under the licenses, cable and satellite operators If the notice is late, the Office will offer to record submit royalty payments to the Copyright Office, 44 

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which are subsequently redistributed to owners of copyrighted content that was retransmitted on distant signals. “It is time for change,” the Register testified. “New technology and transmission systems have materialized over the past decade, and the communications marketplace has responded with innovative business models, yet the distant signal licenses and their antiquated structures have not kept up with the times.” In the short term, the Office recommends replacing sections 111 and 119 with a unified license featuring a streamlined rate structure for retransmitting distant broadcast signals and a royalty-free license for retransmitting local broadcast signals. The license would apply to both cable and satellite providers, and it would commence on January 1, 2010, and end on December 30, 2014.

is separate from the royalty paid to songwriters and composers by all music outlets, including AM and FM stations. The legislation is called the Performance Rights Act; a bill of the same title was introduced but not passed during the last Congress, and the Register of Copyrights testified in favor of it last year. Radio stations in most other countries pay royalties to performers whose music they play. Foreign stations do not, however, have to pay US artists to broadcast their music, because the United States has no radio performance right.

The Office’s report explains that the temporary license is needed to help cable and satellite providers respond to the likelihood that some viewers will have trouble receiving digital broadcast signals following the impending nationwide transition to digital television. In addition, the license would give the parties involved time to devise voluntary licensing agreements for the carriage of programming on distant broadcast signals.

In recent years, financial problems have afflicted both the music and the radio industries. Declining record sales in the music industry have translated into lower revenues not only for record companies, but also for performers, music publishers, and songwriters. Citing fears that consumers no longer purchase music, and that the main revenue sources for music are shifting to services that offer public performances, industry observers question whether the longstanding exemption enjoyed by radio broadcasters continues to make sense. At the same time, radio stations have seen listeners turn to other music outlets and advertising revenue drop. Radio industry stakeholders worry that the performance royalty will bring more financial hardship.

Recognizing that Congress, given its other legislative priorities, may not be able to repeal sections 111 and 119 and enact a new unified license by the end of this year, the Register cited recommendations from the Office’s June 2008 report about ways to update the licenses and achieve greater parity between cable operators and satellite carriers.

To limit its economic impact, the bill establishes a flat annual fee in lieu of royalty payments for radio stations whose gross annual revenue is less than $1.25 million and for noncommercial, public broadcast stations. In addition, it grants an exemption from royalty payments for music broadcast during religious services and for incidental uses of music sound recordings.

Congress Reintroduces Performance Rights Act The House and Senate Judiciary Committees reintroduced legislation on February 4 proposing that AM and FM radio stations pay royalties to performers whose music they broadcast. Webcasters, satellite radio providers, and cable companies already pay such a royalty, which 2009 spring meeting issue

“We are sensitive to the needs of broadcast radio stations,” said Patrick Leahy (D-Vt.), chair of the Senate Judiciary Committee. “We intend to nurture, not threaten, small commercial broadcasters.” Sen. Orrin Hatch (R-Utah) called the bill an “attempt to strike a harmonious balance between fair compensation for artists and a vibrant radio industry in the United States.” aipla bulletin

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Supreme Court to Revisit Electronic Rights Case The Supreme Court agreed in March to review an appeals court ruling that invalidated a settlement reached between freelance writers 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 further compensating them or requesting permission. In its ruling, the Court noted that the parties could enter into agreements that would allow the writers’ works to continue to be included in online databases, such as the New York Times archives and Lexis-Nexis. In 2005, after lengthy negotiations, they did so, consenting to a class-action settlement involving $18 million that provided payment to writers depending on whether and when they had registered the copyrights to their works with the Copyright Office. As a class action, the settlement required approval by a federal court, which the Southern District Court of New York subsequently provided. Afterward, however, a group of freelance writers appealed, claiming that the settlement allocated insufficient funds to authors of unregistered works. In November 2007, the Second Circuit Court of Appeals declined to approve the district court ruling, but not for the reason put forth by the appellants. The court stated that under section 411(a) of the Copyright Act, only writers who had registered their works with the Copyright Office were eligible to file claims for damage. Most of the freelance writers involved in the class action had not registered their works. The appeals court held that federal courts have no jurisdiction over unregistered works, and the district court erred in ruling in a case made up mostly of such works. The Supreme Court has agreed to review the case to decide whether section 411(a) restricts the jurisdiction of federal courts over copyright infringement actions. The justices will hear oral arguments in the fall in the case, called Reed Elsevier v. Muchnick. 46 

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The Copyright Office worked with the Department of Justice on an amicus brief submitted to the Supreme Court in June that emphasizes the importance of registration requirement in section 411(a) while proposing a way to permit approval of the class-action settlement. Uncertain Copyright Status Limits Access to Early Sound Recordings Major legal impediments confront libraries and archives seeking to preserve and make available unpublished sound recordings created before 1972, according to a report released in March by the Library of Congress and the Council on Library and Information Resources. Sound recordings made on or after February 15, 1972, fall under federal copyright protection; an assortment of state laws applies to recordings made earlier. Determining who holds the rights to pre-1972 recordings and what laws govern them can be “positively vexing,” Deanna Marcum, associate librarian for library services at the Library of Congress, writes in the report’s foreword. June M. Besek, executive director of the Kernochan Center for Law, Media, and the Arts at Columbia University, wrote the report, titled Copyright and Related Issues Relevant to Digital Preservation and Dissemination of Unpublished Pre-1972 Sound Recordings by Libraries and Archives. A companion 2005 study addresses copyright issues related to pre-1972 commercial sound recordings. Unlike commercial sound recordings, which are meant for reproduction and sale to the public, unpublished sound recordings are created for private use, or even broadcast, but they have not been copied for public distribution with a right holder’s consent. Examples include tapes of radio news broadcasts, oral history interviews, and live musical performances. Many such recordings are unique and have been donated to or purchased by libraries and archives. For the unpublished sound recordings in their holdings, librarians and archivists must determine which laws govern them and ascertain whether the recordings embody underlying copyrighted works, such as musical compositions, for which 2009 spring meeting issue


they must also clear rights. Marcum calls this task a “tremendous burden,” noting that “almost all pre1972 recordings will be controlled by myriad state laws and common law until the year 2067.” To help librarians and archivists, the report cites examples of specific types of unpublished sound recordings and examines the laws that apply to those created before 1972. The report concludes that “it is unlikely that a library would be liable under federal or state law for preservation copying or limited streaming for research and scholarship of pre-1972 sound recordings that were never commercially distributed. Still, in some cases libraries do risk liability...For that reason, it is neither realistic nor practicable to create categorical rules of use applicable to all pre-1972 sound recordings, or even to all pre-1972 unpublished sound recordings, without reference to when, where, and by whom they were created and under what circumstances; [who] currently [owns them]; and what they contain.” The report is available at www.clir.org/pubs/ abstract/pub144abst.html. Office Holds Hearings in Anticircumvention Rulemaking The Copyright Office held hearings in May as part of a rulemaking proceeding under section 1201 of the Copyright Act. Section 1201 prohibits circumvention of technological measures that protect access to copyrighted works. The Digital Millennium Copyright Act of 1998 requires the Copyright Office to conduct such a rulemaking every three years to determine whether prohibitions on circumvention technology adversely affect users in their ability to make noninfringing uses of copyrighted works. The Office received 25 proposed exemptions for consideration, including, for example, exemptions to allow extraction of clips from DVDs for use in documentary films or for educational or noncommercial purposes. The proceeding involved a hearing on May 1 in Palo Alto, California, and three additional days of testimony on May 6-8 in the Copyright Office in Washington, DC. 2009 spring meeting issue

In consultation with the Assistant Secretary for Communications and Information at the U.S. Department of Commerce, the Register of Copyrights will make a recommendation to the Librarian of Congress based on the record in the rulemaking proceeding. The Librarian will decide on any exemptions by October 28, 2009, and any issued will last for the ensuing three-year period. Judges from Chile Learn about U.S. Copyright On February 25 the Copyright Office hosted a group of judges from Chile, including a member of the Supreme Court of Chile. The jurists were participating in the International Judicial Academy’s (IJA) seminar on intellectual property protection. The Copyright Office presented an afternoon of talks on the work of the Office of Policy and International Affairs; an overview of the Copyright Office, including the history of how the Office came to be located in the Library of Congress; and the principles of US copyright law, the registration system, and the procedures for recording documents. Two interpreters provided simultaneous interpretation for those participants who did not understand English. The IJA is a nonprofit educational organization that provides programs for judges and court officials from around the world. It is headquartered in Washington, DC, and Buenos Aires, Argentina. Office Holds Hearing about Access to Copyrighted Works The Copyright Office hosted a public meeting on May 18 to hear comments about access to copyrighted works by blind people and others with disabilities. The hearing was part of a fact-finding effort undertaken by the Copyright Office and the U.S. Patent and Trademark Office to prepare for a May 25–29 meeting of the Standing Committee on Copyright and Related Rights (SCCR) of the World Intellectual Property Organization (WIPO). At that meeting, member states of WIPO, including the United States, shared information about national laws and experience relating to access to copyrighted works. Those testifying at the May 18 hearing included members of the blind and visually impaired communities and representatives of aipla bulletin

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public interest organizations, publishers, libraries, and firms that develop adaptive technologies. Hearing testimony were staff from the Copyright Office and the Patent and Trademark Office. Register of Copyrights Marybeth Peters delivered opening remarks.

Carson’s lecture will be published in a forthcoming issue of the Columbia Journal of Law and the Arts.

Former Register of Copyrights Barbara Ringer Dies Barbara Ringer, the principal architect of the 1976 David Carson Delivers Manges Lecture Copyright Act who served as Register of Copyrights David Carson, the Copyright Office’s general from 1973 to 1980 and as Acting Register from counsel, delivered the Horace S. Manges 1993 to 1994, died April 9, 2009, in Lexington, Lecture on February 3 at Columbia University. Virginia. She had been in declining health for The lecture is sponsored by the university’s several years. Ringer was known for her brilliance Kernochan Center for Law, Media, and the in drafting legislation, her authorship of works on Arts. Previous lecturers include Registers of copyright, and her ability to harmonize divergent Copyright Barbara Ringer and Marybeth Peters, points of view. She was a key advisor to Congress Sen. Howard Coble, Rep. Robert Kastenmeier, in the preparation and passage of legislation resulting in the first major revision of the copyright and prominent academics and judges. law since 1909, and the resulting Copyright Act of Carson analyzed whether US copyright law 1976 remains her most significant legacy. includes a making-available right, and he explored the implications of such a right for peer-to-peer file To read the complete obituary, go to www. sharing. “Making available” refers to an exclusive copyright.gov/history/index.html and click on right of authors to make their works available to Ringer’s name. the public on the Internet or a similar network in a way that permits individuals to access the works from a place and at a time of their choice.

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2009 Spring Meeting Hotel Del Coronado San Diego, California May 13 - 15, 2009 WEDNESDAY, MAY 13, 2009 MORNING CONCURRENT TRACK #1 (9:00 AM - 12:00 NOON) Taming Dragons & Tigers: Practical Solutions for Trademark Protection in Asia Moderator: Michael I. Davis Entrenching Your Brand in China: Registering Your Mark, Creating Fame, and Kicking Out Imitators -Vivien Chan (Bio, Paper, Slides) Don’t Look Back in Danger: Developments Following the 2007 Amendment to the ‘Intent to Use’ Requirement and the Potential Impact of a False Submission to the Japanese Patent Office -Yoshikazu Iwase (Bio, Paper, Slides) Perfect Irony: Review of “Perfect” Trademark Licenses That Still Lead to Ugly Disputes -Jay K. Lee (Bio, Paper, Slides) Latest IP Trends in India: An Indian Summer?

-Rajendra Kumar (Bio, Paper, Slides) Simplified Chinese Characters vs. Classical Chinese Characters – Why it is Necessary to File Separate Trademark Applications in China and Taiwan -Julia Y.M. Hung (Bio, Paper, Slides) Panel Discussion on Comparing Strategies & Practices

MORNING CONCURRENT TRACK #2 (9:00 AM - 12:00 NOON) Wielding Swords and Shields on the Patent Battlefield- New Tactics Moderator: Ann M. Mueting Wielding the APA Against USPTO Rules-Things to Think About -Arti K. Rai (Bio, Paper, Slides) Tafas/Gsk – A Journey Along the Amicus Trail from Preliminary Injunction to the Federal Circuit

-Jerry R. Selinger (Bio, Paper, Slides) The A-B-C’s of Patent Term Adjustment -Patricia Carson (Bio, Paper, Slides) Joint Patent Infringement- It’s Argued, But Does it Really Exist? -Maya M. Eckstein (Bio, Paper, Slides) Is the Inequitable Conduct Doctrine Becoming Inequitable? -David Hricik (Paper, Slides) The Impact of Opinions of Counsel on Patent Litigation Strategy in a Post-Seagate World -Charles S. Barquist (Bio, Paper, Slides) Obviousness Challenges, Inter Partes Reexamination vs. District Court: When is the USPTO a Superior Forum? -Harold C. Wegner (Bio, Paper, Slides) Panel Discussion

MORNING CONCURRENT TRACK #3 (9:00 AM - 12:00 NOON) Hot Topic in Law Practice Management: Caring for Your Employees While Protecting Your Clients and Firm Moderator: Mercedes K. Meyer (Bio) Putting Pen to Paper: Drafting Employee Guidelines to Prevent Issues Before They Arise -Richard Kopenhefer (Bio, Paper, Slides)

Wednesday Morning Continued Facilitating Resolution of Employee Issues: Why Your Firm or Company Should Have an Ombudsman

-John Nadolenco (Bio, Paper, Slides) Preventing Workplace Discrimination: What it is, Why it Matters and How to Address it Growing Your Practice: Why Eliminating Discrimination Makes Sound Business Sense

-David B. Chidlaw (Bio, Paper, Slides) Dispelling Myths and Preventing Crises: Addressing Mental Illness or Substance Abuse in the Workplace Protecting Your Firm: How Substance Abuse Puts Your Firm (and Insurance Premiums) at Risk -Anthony K. Greene (Slides) Full Disclosure vs. Privacy: If, When, and How Colleagues and Clients Should Be Advised Once Mental Illness or Substance Abuse Has Been Identified -Matthew Bernstein (Bio, Paper, Slides) Audience Challenge: Hypotheticals AFTERNOON CONCURRENT TRACK #1 (2:00 PM - 3:30 PM) Depositions in Patent Litigation- Dealing With the Usual Suspects – Tips, Tricks and Best Practices Moderator Stephen Charles Stout (Bio) Inventor Depositions: Gold Mine or Land Mine? -Dianne B. Elderkin (Bio, Paper, Slides) Rule 30(B)(6) Depositions: The Corporation Speaks -Dominic Zanfardino (Bio, Paper, Slides) Third Party Depositions: Friends or Foes? -Kim Jessum (Bio, Paper. Slides) Expert Depositions: Sage Advice or Waged Device? -Gregory S. Cordrey (Bio, Paper, Slides)

AFTERNOON CONCURRENT TRACK #2 (2:00 PM - 3:30 PM) Trademark- Related Fraud on the USPTO- What to Look Out for Prosecution, TTAB Proceedings and Court Actions Moderator: Jane Shay Wald The TTAB’s New Rules of Practice – Are You Prepared? -Uli Widmaier (Bio, Paper, Slides) The Wise and Careful Practitioner: Ethics and Trademark Practice Before the USPTO -Beth M. Goldman (Bio, Paper, Slides) TTAB’s New Rules: How Are They Working -Christopher C. Larkin (Bio, Paper, Slides) Raising the Ante: Moving from TTAB Inter Partes Proceedings into District Court Litigation -Lynda Zadra-Symes (Bio, Papers, Slides) Panel Discussion AFTERNOON CONCURRENT TRACK #3 (2:00 PM – 3:30 PM) Penny for Your Thought and a Dollar for Your Intellectual Property Rights- Business Agreement Considerations and the Money Matters Moderator: Scott Gilfillan Patent Indemnification: Allocating Risks Where the Dangers of Patent Infringement Are Unknown -Alan J. Kasper (Slides)


Concurrent Track # 3 Continued Impact of the Quanta v. LG Case on IP Licensing Strategies -Kenneth M. Seddon (Slides) Trademark Licensing in M&A Deals- Some Strategic Considerations for Sellers and Buyers -Daniel Ilan (Bio, Paper, Slides) Panel Discussion on Comparing Strategies and Practices JOINT COMMITTEE EDUCATIONAL SESSIONS (3:30PM – 5:30PM) Antitrust Law, Electronic & Computer Law, Licensing & Management of IP Assets and Patent Litigation Committees Licensing Patents for Standards: Royalties, Damages, Injunctions, Antitrust and Other Practical Issues Moderator: Ken Frankel Do You Want to Play “Ex Ante”? Negotiating Royalty or Other License Terms Before the Standard is Set -William Blumenthal (Bio, Paper,) -Michael A. Lindsay (Bio, Paper) -Jack D. Slobod (Bio, Paper) -Richard S. Taffet (Bio, Paper) RAND/FRAND Royalties – Opportunities and Pitfalls as Courts Begin to Shape the Rules -Michael A. Lindsay -Jack D. Slobod -Richard S. Taffet Continuing Impact of the FTC- Standards- Setting in the New Administration -William Blumenthal (Slides) Risks and Benefits of Joining Patent Pools Covering Standards -Jack D. Slobod (Audio) Panel Discussion JOINT COMMITTEE EDUCATIONAL SESSION (3:30PM – 5:30PM) IP Practice in Europe Committee and Chartered Institute of Patent Attorneys (CIPA) From the United Kingdom Practical European Patent Issues Moderator: Doug McCall Is There a Doctrine of Equivalents in Europe? -Michael Williams (Bio, Paper, Slides) A Practical Guide to the European Patent System -Jonathan Jackson (Bio, Paper, Slides) A Guide to Pharmaceutical Patents and Supplementary Certificates of Protection in Europe -Gordon Wright (Bio, Paper, Slides) Safely Navigating European Novelty: More Draconian than US Applicants Imagine -Timothy Platt (Bio, Paper, Slides) Panel Discussion THURSDAY MAY 14 MORNING CONCURRENT TRACK #1 (9:00 AM - 12:00 NOON) Current Perspectives on Advertising and Publicity Law Moderator: Amie Peele Carter Advertising Law 101 -Charulata Pagar (Paper, Slides) Litigating Advertising Clams (Including Defenses) -Michael Mervis (Slides) Is the NAD the Right Forum for You? Arguing Advertising Disputes Before the National Division of the Council of Better Business Bureaus -Sheldon H. Klein (Paper, Slides) Trends in Advertising Law

Celebrities & Recent Developments in Right of Publicity -Mark Roesler (Paper) Biting the Hand that Feeds You: Product Placement & Unauthorized Depictions -Jody Zucker (Bio, Paper) Panel Discussion MORNING CONCURRENT TRACK #2 (9:00 AM -12:00 NOON) Building the Castle Before the Battle: Prosecution in View of Imminent Litigation Moderator: Robert J. O’Connell (Bio) Gaps in the Walls: Lessons to be Learned from Patent Enforcement Top Mistake in Prosecution from a Litigator’s Point of View -Robert H. Sloss (Bio, Paper) Patent Profanities in Drafting and Prosecution -Thomas L. Irving (Bio, Slides) Putting the Blocks Together Best Practices for the Life Sciences/Chemical Arts -Peter Munson (Bio, Slides) Best Practices for the Electrical & Software Arts -Gregory L. Maurer (Bio, Paper, Slides) Delivering the Castle on Time and on Budget Reducing Pendency Times and Costs -Lawrence E. Ashery (Bio, Paper, Slides) Panel Discussion on Comparing Strategies and Practices MORNING CONCURRENT TRACK #3 (9:00 AM -12:00 NOON) Patent Litigation- From Discovery Through Appeal Moderator: David P. Ruschke (Bio) Be Careful What You Wish For: Mandatory Disclosure of “All Relevant Evidence” in the Eastern District of Texas -David J. Healey (Paper, Slides) “Flash of Reality”- Lessons and Trends from the Kearns Windshield Wiper Cases -Christopher R. Benson (Bio, Slides) Damages- Litigating Damage Apportionment Issues -Chief Judge Paul R. Michel (Audio) De Novo Review of Markman Rulings by the Federal Circuit -Frank Bernstein (Bio, Paper, Slides) “The Claim Construction Game” -Edward D. Manzo (Bio, Paper, Slides) AFTERNOON CONCURRENT TRACK #1 (2:00PM – 3:30PM) All’s Fair That Ends Fair- A Survey of Fair Use In Patent, Trademark and Copyright Moderator: Kate Spelman (Bio) Copyrights- Hot Topics: Recent Decisions Regarding Copyright Fair Use

-Claudia Ray (Bio, Paper, Slides) Trademarks- Fair Use is Not Just About Copyrights -Neil D. Greenstein (Bio, Paper, Slides) Trademarks- Statutory Fair Use, Nominative Fair Use and Parody -Kieran G. Doyle (Bio, Paper, Slides) Patents- The Pale Reflection of Fair Use in Patent Law: Section 271(e) and eBay -Michael J. Meurer (Bio, Paper, Audio)

Panel Discussion on Fair Use


-Charulata Pagar (Paper, Slides) Continuing Afternoon Concurrent Track #2 AFTERNOON CONCURRENT TRACK #2 (2:00PM – 3:30PM) Tools for Moving’ Up the Ladder in Your Career, Law Firm and AIPLA Moderator-Ashok Mannava (Bio) Maximize Your Career Development: Effective Mentoring Strategie -Ida Abbot (Bio, Paper, Slides) How to Make it in Your Law Firm: Perspectives on Making Partner Perspectives on Tracking a Course to Partnership at a Large Law Firm -Richard de Bodo (Slides) Perspectives on Navigating a Path to Partnership at a MediumSized Law Firm -Pattric Rawlins (Slides) Becoming an AIPLA leader: The Corporate Perspective from a Former AIPLA President -Judith Saffer (Bio, Audio)

FRIDAY MAY 15 PLENARY SESSION (8:00AM – 12:00 NOON) Remedies in a Post-eBay World Moderator: Bea Swedlow (Bio) Why eBay Really, Really Matters -Carol Nielsen (Bio, Paper, Slides) eBay Meets Georgia Pacific: How to Value the Right to Exclude -Christopher C. Barry (Bio, Paper) Post-eBay: What Patent Litigators Need to Consider -Lisa J. Pirozolo (Bio, Paper, Slides) Trademark Litigation Strategy Post-eBay: eBay’s Ramifications Beyond the Patent World -Gina Durham (Bio, Paper, Slides) Post-eBay: What Does it Mean for Judges -Honorable Joseph J. Farnan (Audio)

Panel Discussion on Comparing Strategies and Practices

ETHIC PROGRAM Contingent Fee Patent Infringement Litigation from a Small Firm Perspective (And the Ethical Issues That Go Along With Such Representation) -Jonathan T. Suder (Bio, Paper, Audio) Staying on the Right Side in Litigation: From Rule 11 to Section 285 -Julia Heaney (Bio, Paper, Slides)

AFTERNOON CONCURRENT TRACK #3 (2:00PM – 3:30PM) Copyright Unboxed Moderator: Georgann S. Grunebach Copyright Live: Witness a Performance and Hear How Precedent Jives with Improvisation Jazz -Jonathan Z. King (Audio) Copyright in the Quiver of Unfair Competition Claims – How the Copyright Law Extends Protection to Insurance Contract Language, Employee Manuals, Developer Suits for As-Built Structures and Other Non-Traditional Works -John Harbin (Bio, Papers) JOINT COMMITTEE EDUCATIONAL SESSION (3:30PM – 5:30PM) IP Practice in Europe Committee and Chartered Institute of Patent Attorneys (CIPA) From the United Kingdom Understanding Patent Change on Both Sides of the Atlantic Moderator: Matt Rainey Understanding Patents Without Borders: Extraterritorial Enforcement of US Patents -James H. Wallace, Jr. (Bio, Paper, Slides) What European/UK Attorneys Should Understand About In re Bilski -John Duffy, Jr. (Slides) Surviving the Changing Sea of Software Patents in Europe -Torsten Duhme (Bio, Paper, Slides) A Tale of Two Patent Offices: Problems Facing the EPO and USPTO and How Office Leadership is Addressing Them -Jim Boff (Bio, Paper, Slides) Panel Discussion COMMITTEE EDUCATIONAL SESSION (3:30PM – 5:30PM) Industrial Design The Application of Section 112 to Design Patent -John S. Artz (Paper) The Aftershock of Egyptian Goddess: An Analysis of PostEgyptian Goddess Case Law -Christopher Carani (Slides) Panel Discussion

Panel Discussion


2009 SPRING MEETING – SAN DIEGO CD-DVD ORDER FORM *Please note the CD-DVD features audio and all speaker materials submitted to AIPLA. Total cost for the 2009 Spring Meeting CD-DVD (please check Member or Non-Member):

Member: $195 plus $5 shipping (via UPS Ground) and handling for each CD-DVD

Non-Member: $295 plus $5 shipping (via UPS Ground) and handling for each CD-DVD

Overseas orders will not be charged the $5 shipping and handling charge; however, they will be invoiced at cost. To ensure safe delivery, all orders will be shipped via United Parcel Service. Be sure to include full street address, suite or apartment number, zip code, and contact phone number. No P.O. Box Numbers. Please indicate if RUSH delivery is needed. Additional fees for rushed orders will added to total charges.

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Name on Card: Signature: If paying by check, make checks payable to: AIPLA All order forms and payments should be sent to: AIPLA, 241 18th St. South, Suite 700, Arlington, VA, 22202 703-415-0786 (Fax) For Credit Card Orders Only. PLEASE Contact us at 703-415-0780 with any questions.

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thank you AIPLA 2009 spring meeting sponsors! gold Knobbe Martens Sponsor: Wednesday Dessert Reception Sughrue Mion, PLLC Sponsor: Thursday Dessert Reception

bronze DLA Piper Partial Sponsor: Opening Night Reception Kenyon & Kenyon Partial Sponsor: Opening Night Reception Fitzpatrick Cella Harper & Scinto Sponsor: AIPLA Cyber Café Howrey, LLP Sponsor: Diversity in IP Law/Women in IP Law Breakfast Meeting Finnegan Sponsor: Thursday Lunch Reception

crystal Herbert L. Jamison & Co., LLC Sponsor: Solo/Small Firm Practitioner Networking Reception Klein, O’Neill & Singh, LLP Sponsor: Thursday AM Beverage Break Schwegman Lundberg & Woessner, PA Sponsor: Wednesday New Member/First-Time Attendee Reception

2009 spring meeting issue

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AIPLA

2009

spring meeting

leadership President: Teresa Stanek Rea

Professional Programs Vice-Chair: Steve Malin

Professional Programs Chair: J. Michael Martinez de Andino

2009 spring meeting photographs by: Richard Burgess

Officer-in-Charge: David Hill

Executive Director: Q. Todd Dickinson


a few speakers Christopher Barry

Anthony K. Greene

Daphne Lainson

Arti Rai

Chief Judge Paul R. Michel

David Hricik

Charulata Pagar

Donald J. Rosenberg

Ida Abbott

Joseph J. Farnan, Jr.

Jack Slobod

Mercedes Meyer Richard Kopenhefer John Nadolenco

* speakers names are listed either to the left or right of the photo.

Jane Shay Wald


a few more speakers Torsten Duhme

Yoshikazu Iwase

Mercedes Meyer

John Duffy

Julia Heaney

Mark Roesler

Marilyn Huff

Robert Sloss Thomas Irving Peter Munson Gregory Maurer

Chief Judge Paul R. Michel Frank Bernstein Edward Manzo Freddie Bryant and Jonathan King

Sheldon Klein Michael Mervis

* speakers names are listed either to the left or right of the photo.

Charulata Pagar Amie Peele Carter


new member/first-time attendee reception

A Special Thank You to:

Schwegman Lundberg & Woessner, PA

for sponsoring the New Member/First-Time Attendee Reception


wednesday evening events A Special Thank You to:

• DLA Piper • Kenyon & Kenyon for partially sponsoring the Opening Night Reception

A Special Thank You to:

Knobbe Martens

for sponsoring the Dessert Reception


PAC reception


thursday evening events A Special Thank You to:

Sughrue Mion, PLLC for sponsoring the Thursday Dessert Reception


AIPLA

2010 mid-winter institute

January 27–30, 2010 La Quinta Resort and Club • La Quinta, CA

Efficient and Effective: IP Counsel’s Quest

Efficiency in IP Management, Defense, Assertion and Acquisition: Finding Opportunities, Managing Risk and Preserving Value

Global changes in the worldwide economy, laws and governments, provide IP practitioners with the opportunity to be innovative in providing efficiency in IP management, defense, assertion and acquisition. The agenda for the Mid-Winter Institute of the AIPLA, has been developed with the influence and guidance of all AIPLA Committees to assist and provide our members with information, ideas and directions on seeking and understanding opportunities for managing risk, preserving value of IP and identifying and implementing practice efficiencies as global changes continue to take place. The Mid-Winter Institute will provide worldwide updates of key developments in the courts, regulations, laws and patent offices as all aspects of IP practice continue to change. The Mid-Winter Institute considers the following current trends: • Companies are maintaining IP portfolios on tighter budgets and with innovative approaches. • Outside counsel are continuing to face many requests for proposal and restructured arrangements from long term clients, as both try to find the right partners to see their way through changing times. • As the global monetary system improves, acquisitions will increase as the healthiest investors attempt to take advantage of historic buying opportunities where IP assets are a key component. • Many are working to maximize the value of their own or newly acquired assets through licensing and efficient litigation while managing the challenges of defending their own activities against their competitors and other IP holders. The Mid-Winter Institute agenda and the new TABLE TALK, Luncheon Program has been developed to compliment proposed AIPLA Committee meetings that may take place in conjunction with each program Track and the Luncheon.

The Mid-Winter Institute will address many issues including the following: • Building Strong IP on a Smaller Budget • Peering Into the 2010 Crystal Ball: What Awaits the IP Practioner? • New Luncheon Program: TABLE TALK – participants will have the opportunity to have interactive discussions with other members on a selection of topics of interest during the luncheon as facilitated by the AIPLA Committees • Buying and Selling IP • Fact or Fiction? How To Really Make Patent Prosecution More Efficient • IP Licensing • The Ethical Minefields of Arbitration and Mediation – What Every Lawyer Needs to Know • To Buy or Not To Buy: Acquired Patents as Litigation Tools • Leveraging Value From Marks and Copyrights • Making and Selling Confidential Information • Enforcing Efficiently – Where To Litigate in the US and Europe • Ethics and Loss Prevention

Reservation Information Call in your reservation and ask for the AIPLA Mid-Winter Institute rate - $305.00 (single/double) (there is a resort fee of $10.00 plus tax per room, per day in effect at the time of check-in) For reservations, please call 1-800-598-3828. The deadline for the AIPLA rate is January 2, 2010 For sponsorship information, please contact Lindsay Nalevanko at 703.412.4357 lnalevanko@aipla.org

If you can’t join us in person for the meeting, portions of the Mid-Winter Institute will be available via live web streaming.


committee

reports

spring meeting may 13-15, 2009 Anti-Counterfeiting & Anti-Piracy Kieran Doyle, Chair (right photo) Sherri Schornstein, Vice-Chair ___________________________________________

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he Anti-Counterfeiting and Anti-Piracy Committee met during the Spring Meeting in San Diego. Turn out was strong 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.” Jeff Kaufman reported on the status of the Anti-Counterfeiting Trade Agreement (ACTA) treaty. Finally, Amy Cahill updated the committee on her recent efforts as liason to the Amicus Committee. For the remainder of the meeting, Kieran Doyle led the group in a discussion of possible programming topics for upcoming AIPLA meetings. The committee will be coordinating a 90-minute track at the Spring 2010 meeting, and is also eager to present educational content in future committee meetings. Owing to great attendance and even greater enthusiasm from many of the committee members, many great ideas were discussed. The three topics that were most widely embraced were (1) a country-bycountry, or perhaps region-by-region, review of either anti-counterfeiting enforcement generally, or customs and border interception specifically; (2) a discussion of

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the types of counterfeiting problems faced by specific major industries and the most effective solutions to those problems; and (3) a program to introduce the anti-counterfeiting/anti-piracy tool kit. The group concluded that the toolkit program would most likely be presented at a future committee-level meeting, perhaps at the annual meeting, that the 90 minute track at the Spring 2010 meeting would focus on either the countryby-county or industry-by-industry analysis, and that whichever of these was not addressed in the Spring 2010 track would be addressed either in a future track or at a future committee-level program. Those with suggestions regarding these programming ideas should contact Kieran Doyle at kgd@cll.com. As always we invite your participation in our committee’s activities.

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Young Lawyers

Alyson Barker, Co-Chair (left photo) Michael A. Valek, Co-Chair (right photo) ___________________________________________

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he Young Lawyers Committee has been very busy since the Mid-Winter Institute in Miami. Notably, members of the Young Lawyers Committee have been actively involved in working with the Professional Programs Committee to help co-coordinate programs for the Spring Meeting and the 2009 Annual Meeting. In addition to helping to coordinate programs for the stated meetings, members of the Young Lawyers Committee also helped to co-author CLE papers for the Spring meeting and we even had a couple of Young Lawyers Committee members who spoke or moderated programs at the Spring meeting. The committee would like to thank the chairs of the Professional Programs Committee for reaching out and providing our membership with opportunities to take a more active role in the association and the meetings in particular. Moreover, many members of the committee have assisted with the Giles Rich Moot Court competition by grading briefs and serving as judges at the regional competitions. Thank you to all of the volunteers but especially to Kimberly Van Voorhis of Morrison and Foerster, LLP who again graciously agreed to serve as National Director for the competition. Kim’s leadership of the competition is invaluable. In addition, we were pleased to hear positive feedback from participants and judges, including members of the judiciary, who commented on the high quality of this year’s

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problem. Thank you to the members of our Giles Rich Subcommittee including co-chairs Stephen Stout and Darren Franklin for taking the charge and drafting such a superb problem. The subcommittee is working on compiling a list of volunteers to work on next year’s problem. If you are interested, please contact Alyson Barker (barkera@howrey.com) or Michael Valek (mvalek@velaw.com). Further, as we look ahead to the summer months, the Watson writing competition will be here before we know it. This year marks the first year that the Young Lawyers Committee has a dedicated subcommittee to coordinate grading of the papers. Thank you to Janet Gongola and Jen Kuhn for volunteering to chair the sub-committee. If you are interested in volunteering to grade papers, please send an e-mail to Alyson or Michael. The Young Lawyers Committee is currently working with the Education and Law Student Committees to co-host a program for the Annual Meeting. The program will focus on maintaining career development and momentum in a challenging economy. If you are interested in helping with this program, please let Alyson or Michael know. We look forward to seeing everyone in Washington, DC for the Annual Meeting.

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Trademark Law

Kimberly Van Voorhis, Chair (left photo) Amie Peele Carter, Vice-Chair (right photo) ___________________________________________

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he Trademark Committee met at the Spring Meeting and heard a presentation from WIPO representative Alan Morgan Datri, Senior Counsellor at the Office of the Director General. Mr. Datri gave a detailed presentation on the “Madrid System: Beyond Dependency.” A lively discussion followed his informative presentation. The Committee is grateful for his help. Committee Reports The following Committees gave reports: International Trademark Treaties (Brett Heavner (reporting), Janet Fuhrer): Representatives of this committee plan to attend the June WIPO meeting at which certification marks, design patents and non-traditional trademarks are expected to be discussed. The committee still is collecting comments on the issue of central attack and so far, respondents are split in their opinions. A full report will follow at the AIPLA Annual Meeting. Litigation (Steve Meleen, Jennifer Kovalcik): Steve discussed the quarterly updates provided by the Litigation Committee and said that they would be live on the website in a few days. The circuit map and the legal standards chart should be updated by October. Volunteers were solicited to help. Internet Committee (Matt Nelles): Matt gave a report on new ICANN developments, including new .gTLDs and the process for obtaining them. ICANN has published a new applicant guidebook, and it is available online. Matt noted that last year, AIPLA participated in the development of this guidebook by making comments on two rounds of the guidebook while it was being drafted. In March, ICANN asked for a committee from GNSO to develop

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an Implementation Recommendation Team (IRT). As of April 24, 2009, the report was to be posted on the ICANN website. The current memorandum of understanding between ICANN and the United States Department of Commerce and Oversight will expire on September 30, 2009. (It was noted that AIPLA commented on that document when it was being drafted as well.) Volunteers were requested to help assist with the various projects underway for this Committee. Copyright (Elizabeth “Betty” Morgan): Betty asked for volunteers to work on the Copyright Committee’s legislative sub-committee to evaluate the Orphan Works Act, a proposal for which has resurfaced this summer. The bill is expected to be passed this year tacked on to a virtually mandatory piece of legislation regarding the renewal of broadcast rights. Amicus (Kevin Totis): Kevin discussed the In Re Reed Elsevier case and the AIPLA’s participation in the amicus briefing in that case. He requested volunteers to evaluate two cases involving contributory infringement (CNN/ Cartoon Network, 2nd Cir.) and public performance in the digital recording industry. General Discussion Bill Barber discussed Board consideration of a position for AIPLA to take regarding the doctrine of well-known marks and next steps in the event the resolutions are passed. Rex Donnelley (Trademark Committee liaison to the Amicus Committee) asked for potential briefing topics. The meeting was adjourned at approximately 5:30 p.m.

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Amicus

Patrick J. Coyne, Chair (pictured) Edward Robert Reines, Vice-Chair ___________________________________________

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micus participation is a critical component of AIPLA’s public policy efforts. Frequently, however, we find out about opportunities to participate as amicus late in the process. This often precludes us from participating effectively. We have undertaken a number of initiatives this year to address this concern and get ahead of the curve. These efforts—involving five separate initiatives to screen a larger number of cases—largely have been effective to date and we continue to work diligently to broaden the number of opportunities for the AIPLA to participate. Amicus Liaison Group First, the Amicus Committee has involved various of the substantive law committees in our consideration of cases. Some of these efforts have been informal, through increased contact with various substantive committee chairs on an ad hoc basis to elicit their views on issues that the committee is considering, while others have been more formal, including monthly conference calls. In October, members of the Amicus Committee were assigned to a number of the substantive law committees and the substantive law committees appointed liaison members to the Amicus Committee. This process has now been operating effectively for several months and the liaison group continues to hold monthly telephone conference calls to discuss the Amicus Committee’s progress on various substantive issues and to solicit from the various substantive law committees their views on cases that are being considered as well as on new cases in which the AIPLA may wish to consider participating. This process has brought and continues to bring a number of new cases to the committee’s attention.

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Substantive Law Committee

Law Committee Liaison to the Amicus Committee

Amicus Committee Liaison to the Substantive Law Committee

Anti-Counterfeiting & Anti-Piracy

Amy Sullivan Cahill

Bob Clarida Andrew Stein

Antitrust Law

Steve Stack

Guy Donatiello Patrick Coyne

Biotechnology

Dave Cupar

Warren Woessner Ann Mueting Ann Mueting Warren Woessner

Chemical Practice Copyright Law

Kevin Tottis

Bob Clarida Ralph Oman Rex Stratton

Electronic & Computer Law

Lance Reich

Andrew Stein Alyson Barker

Emerging Technologies

Raymond Van Dyke

Freddie Park Jerry Sellinger

Industrial Designs

Chris Carani

Griff Price Barbara Fiacco

International Trade Commission

Jay Reiziss Patricia Larios

Andrew Stein Joe Re Patrick Coyne

Licensing & Management of IP Assets

Christopher Day

Freddie Park David Ruschke

Patent Law

Barbara Fiacco

Sam Helfgott David Ruschke

Patent Litigation

Robert Payne

Alyson Barker Ed Reines Bob Payne

Trade Secret Law

Nathan Schleifer

Mike Jakes Michael Klipper

Trademark InternetCyberspace

Rex Donnelly

Mark Partridge Kevin Rhodes

Trademark Law

Allison Strickland Sheldon Klein Rex Donnelly

Rex Stratton Graeme Dinwoodie

Trademark Litigation

Rex Donnelly

Rex Stratton Graeme Dinwoodie

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Federal Circuit Rule Change Second, several months ago, the US Court of Appeals for the Federal Circuit recently amended its rules to permit additional time for petitions for rehearing and for the filing of amicus briefs. In November of last year, the Court considered a proposed rule change that would have expanded the time for filing a petition for rehearing, and the time for filing an amicus brief. In December, the AIPLA submitted comments to the Rules Committee of the US Court of Appeals for the Federal Circuit, encouraging the Court to adopt these expanded time limits. In this letter we identified specific cases in which expansion of the time limits as proposed by the Court might have permitted the AIPLA to participate in cases in which it did not have sufficient time either to consider its position fully or prepare a suitable amicus filing. The AIPLA was among several amicus “frequent filers” who supported the proposed rule change. On February 6, 2009, the Federal Circuit issued changes to Federal Circuit Rules 35 and 40. Specifically, the time for filing a petition for rehearing has been revised to 30 days (from 14) after the entry of judgment and, in cases in which the United States is a party, 45 days after entry of judgment. An amicus brief filed in connection with a petition for rehearing must now be filed within 14 calendar days (from 7) of the date of filing of the petition or response that the amicus curiae supports. These changes provide AIPLA critical additional time within which to consider participating in cases that are before the Federal Circuit on a petition for rehearing and to file a substantive brief with the court. Provided AIPLA is aware of the case prior to the filing of the petition for rehearing, these rule changes will give AIPLA up to an additional three weeks of time to consider and draft an amicus brief. This is a huge benefit to the association and its members. Accelerate Consideration of Amicus Opportunities Third, we have attempted to accelerate the time period for consideration of amicus participation by attempting to identify cases early in the review process, even before a petition for rehearing or petition for writ of certiorari is filed. The Amicus Committee is reviewing a substantial number of cases, many of them prior to the time when petitions for rehearing or a petition for writ of certiorari are actually filed. The number of cases reviewed and submitted for a formal vote of the committee since last October is substantially larger than the number we have reviewed during comparable time periods in prior years. Although this process has placed increased burdens on the committee’s 66 

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members, it has expanded greatly the time available for consultation with the substantive law committees, for formulating our substantive positions on various issues, and for preparing our amicus submissions. Focus Fourth, as a consequence of these efforts, the number of cases that the Amicus Committee has evaluated has expanded this year, relative to prior years. In order to make these efforts more productive, the Amicus Committee is aligning its focus with the Board’s other public policy outreach programs. AIPLA is currently involved in a number of public policy outreach initiatives with respect to patent reform and the administration of the courts. In October, the committee identified a number of substantive issues that it was planning to monitor this year. The committee 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. Among the several topics identified in the committee’s October report, we are particularly mindful of amicus opportunities with respect to issues of fraud and inequitable conduct, and damages. Amicus Network The Board recently instituted a mechanism to coordinate amicus filings among other frequent amicus filers with whom AIPLA is often aligned. This program will help share resources and coordinate our positions in appropriate cases, hopefully increasing our impact while lessening the burden on the Court of receiving multiple briefs espousing the same position. This effort has already generated substantial benefits and we have filed jointly with the Federal Circuit Bar Association an amicus brief in the Cardiac Pacemakers rehearing petition and merits consideration by the Court. The network continues to grow and we anticipate increased coordination among various bar groups as this year progresses and well into the future. I. Amicus Filings (2008-2009) Since October, the Amicus Committee has considered over 40 cases on the merits. Of these, formal votes have been taken in approximately 30 cases. Briefs have been filed in four cases.

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Bose v. Hexwave (2008-1448) is an appeal to the Federal Circuit from a decision of the Trademark Trial and Appeal Board cancelling a registration on grounds of fraud. Bose renewed its registration leaving among the goods and services listed a good that it was no longer selling as a retail product. Bose asserts that its use of the mark in conjunction with warranty service and repair of the product constitutes use in interstate commerce. The TTAB held not only that it is not use in commerce but also that reliance on this interpretation, supported by the requisite affidavit of use, is fraudulent. AIPLA filed an amicus brief on October 11, 2008, at the panel stage and oral argument was heard on May 6, 2009. AIPLA’s brief urges that the Court set the standard for fraud at the TTAB to be knowledge or reckless disregard of the truth. Haulapai Tribe v. Grand Canyon West (2009-1012) is an appeal to the Federal Circuit from a decision of the Trademark Trial and Appeal Board. The Grand Canyon West case involves the trademark “GRAND CANYON WEST” for use in conjunction with air transportation services, an activity that is regulated and requires a license from the appropriate regulatory authorities. The Trademark Trial and Appeal Board held that the applicant committed fraud on the Trademark Office in claiming first use at a time when such use would have been unlicensed and canceled the registrant’s registration for the mark. This case raises issues similar to those in the Bose case in which the association participated as amicus last year. Bill Barber drafted a brief on behalf of AIPLA articulating the same positions that the association had previously taken in the Bose case. The brief was filed on December 4, 2008. The appeal is now in mediation and the oral argument originally scheduled for May 7, 2009, was taken off-calendar . Prometheus v. Mayo Labs (2008-1403) is an appeal to the US Court of Appeals for the Federal Circuit from a decision of the US District Court for the Southern District of California. The Prometheus case is pending at the prepanel decision level at the Federal Circuit. The case was originally scheduled to be heard last year and the Court continued the briefing schedule in Prometheus in view of the Court’s impending en banc decision in In re Bilski. After the Bilski decision was issued last year, the Court reset the briefing schedule in Prometheus. In Prometheus, the district court held that the intermediate metabolite that was formed by ingesting a drug is a “naturally occurring” substance and therefore unpatentable. At the panel stage, we are, as is the panel, bound by the Court’s en banc ruling in In re Bilski. The Association’s brief, which

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was drafted by Ed Reines, articulates why the invention at issue in Prometheus is patentable under the standard articulated by the Court in Bilski. Cardiac Pacemakers v. St. Jude (2007-1296) involves whether, under Section 271(f), supply of material abroad for use in a patented process infringes a method claim. This issue was raised previously in the Union Carbide v. Shell case. The association participated as amicus in the Union Carbide case but the case was resolved by settlement prior to a decision on the merits. The same issue is raised again in Cardiac Pacemakers. In the Union Carbide case, AIPLA filed jointly with the Federal Circuit Bar Association an amicus brief articulating why Section 271(f) should not operate to limit damages in the manner the court below ruled that it did. The associations again cooperated in preparation of a brief in the Cardiac Pacemakers case on the petition for rehearing, filed January 30, 2009, articulating the positions that they had espoused in the prior Union Carbide appeal. Subsequently, the Court announced that it would consider the case en banc, and AIPLA filed again in that proceeding. Our amicus brief, again filed jointly with the Federal Circuit Bar Association, was filed on April 15, 2009. In re Bilski. On January 28, 2009, Bilski filed a petition for a writ of certiorari with the United States Supreme Court asking the Court to modify the Federal Circuit’s en banc decision in the In re Bilski case, establishing the “machine-or-transformation test” as the standard for subject matter patentability of a process claim. AIPLA previously filed an amicus brief in the Bilski case when it was pending at the US Court of Appeals for the Federal Circuit. The Federal Circuit, however, declined to follow AIPLA’s recommendations, and AIPLA has submitted an amicus brief, pursuing this issue further, supporting Bilski’s petition for writ of certiorari. AIPLA’s brief, authored by Bill West, was filed on March 2, 2009. The Solicitor filed a brief in opposition to the Petition on May 1, 2009 for the US, opposing the petition. II. Cases in Which the Association is Considering Participating In the Ciprofloxacin antitrust litigation, the Federal Circuit previously held that a settlement involving “reverse payments” to a generic drug maker by the patent owner did not violate the antitrust laws. The antitrust plaintiffs filed a petition for a writ of certiorari to the US Supreme Court. The AIPLA Amicus Committee previously considered this case when it was pending at the Federal Circuit and, for

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a variety of reasons, did not to participate at that time. We are monitoring the outcome of the petition and, in the event the Court grants the petition, will evaluate this and other opportunities to support the legality under the rule of reason of reverse payments settlement agreements under circumstances similar to those presented in this case. CNN v. CSC (2007-1480 & 1511) involves a petition for a writ of certiorari from the US Court of Appeals for the Second Circuit. The Second Circuit held that a copy that is held in a buffer on a server for a limited amount of time (1.2 seconds in this case) is not “fixed” in a tangible medium of expression for a sufficient time to constitute “copying” for purposes of infringement liability under the Copyright Act. The Second Circuit reversed summary judgment for the copyright owner and vacated the injunction issued by the district court. A petition for writ of certiorari was filed in October 2008, and on January 12, 2009, the Supreme Court requested the certiorari views of the Solicitor General (CVSG) about the case. III. Cases in Which Cert was Denied The Amicus Committee has also been monitoring a number of cases in which petitions for a writ of certiorari were ultimately denied. In re Volkswagen involves an appeal from the Fifth Circuit Court of Appeals’ issuance of a writ of mandamus to the US District Court for the Eastern District of Texas requiring that the case be transferred to the Dallas Division. The VW case involved a motor vehicle accident in which the events occurred and the witnesses and participants resided in the Dallas Division (N.D. Tex.). Plaintiff chose to file the case in the Eastern District of Texas, which is typically viewed as a pro-plaintiff jurisdiction. The Fifth Circuit, in a divided en banc decision, issued a writ of mandamus requiring that the case be transferred to the US District Court for the Northern District of Texas. The plaintiff petitioned for writ of certiorari, which was denied on February 23, 2009. FTC v. Rambus involves participation in consensus standards-setting activity. The Federal Trade Commission held that Rambus had violated the custom and usage of trade by failing to disclose to other members of the standards setting organization (JEDEC) its intellectual property rights that were essential to the standard. The FTC held Rambus’ patents unenforceable. The US Court of Appeals for the District of Columbia Circuit reversed, holding that the Federal Trade Commission had not established that Rambus’ acts were the cause of any

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injury to competition. The Federal Trade Commission filed a petition for writ of certiorari, supported by numerous amicus filings. On February 23, 2009, the Supreme Court denied the petition for writ of certiorari. IV. Pending Cases The Committee is currently monitoring a number of pending cases. Reed Elsevier v. Muchnick (2008-103). Both Petitioners and Respondents seek review by the US Supreme Court of a decision by the US Court of Appeals for the Second Circuit, holding that the district court does not have subject matter jurisdiction over copyright infringement claims by a class of freelance authors some of whom had failed to register their copyrighted works. The authors had licensed their works for publication in the print edition of the Times. In an earlier case, Tasini v New York Times, the freelance authors sued the New York Times and various electronic publishers for copyright infringement based on the electronic republication of their articles. Following the authors’ success on the merits of their copyright infringement claims in the Tasini litigation, the district court certified a class, including authors of both registered and unregistered copyrighted works, as a basis for entry of a settlement. The Second Circuit reversed, holding that the district court lacks jurisdiction to certify a class that includes authors of unregistered works in view of the Copyright Act’s requirement that the work must be registered in order to bring an infringement action. Shire v. Sandoz (2008-1180). Shire appeals from a decision of the US District Court for the District of Colorado declining to accord collateral estoppel effect to a prior claim construction decision by the US District Court for the District of Delaware. Sandoz prosecuted prior infringement claims in Delaware and Maryland on the same patent, both of which resulted in consent judgments. The district court in both prior cases construed the claims of the patent, reaching divergent holdings. Shire requested that the Colorado Court give the claims the same construction accorded by the District of Delaware based on collateral estoppel and the district court declined to do so. The district court certified the case for interlocutory appeal to the Federal Circuit. TransCore v. ECT (2008-1430). TransCore appeals from a decision of the US District Court for the Northern District of Texas, holding that Appellant’s patent rights are exhausted and granting summary judgment in favor of Appellee.

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Transcore settled prior litigation with Mark IV, the maker of the EZ Pass electronic toll system, covenanting not to assert ten specific patents against Mark IV. Mark IV sold EZ Pass systems to Electronic Transaction Consultants (“ECT”) and TransCore sued ECT for infringement under three of the patents that were subject to the non-assert in the Mark IV case, as well a one additional patent that issued after settlement and was expressly excluded from the non assert. The district court, equating the covenant not to assert with the express license granted in Quanta, and following Quanta, held that the asserted patents are exhausted. Tafas v. Doll (2008-1532). The Federal Circuit’s panel decision in Tafas reversed-in-part the PTO’s issuance of new rules limiting continuation and divisional practice and requiring information disclosure statements in appropriate cases. The parties are requesting additional time within which to file their respective petitions for rehearing. In re Comiskey (2006-1286). In addition to the Bilski decision, the Federal Circuit recently issued an en banc decision in the In re Comiskey case involving whether claims to an auction process are patentable subject matter. The Federal Circuit has held that under the en banc decision in In re Bilski, certain claims are not patentable and remanded other claims back to the PTO for determination of subject matter patentability. The Comiskey case came to the Federal Circuit on an obviousness rejection. The Board of Patent Appeals and Interferences did not raise an issue of subject matter patentability; the Court raised this issue sua sponte. It is anticipated that a decision by the Supreme Court in the In re Bilski case could have a substantial impact on the outcome in the Comiskey case. The committee has also considered a number of appeals and petitions relating to inequitable conduct issues, including, Praxair v. ATMI (2007-1483, 1509) and Aventis Pharma, S.A. v. Amphastar Pharmaceuticals, Inc.

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Lucent v. Dell and Microsoft (2008-1495) is currently pending at the Federal Circuit at the pre-panel decision stage. Microsoft and Lucent settled most of the issues in their case and reserved issues relating to infringement damages, a topic that attracted much attention on Capitol Hill during Patent Reform Legislation deliberations. The case received significant consideration at both the Amicus Committee and the AIPLA Board because of the significance of these issues, which we expect to reemerge during this Congressional session. Specifically, Microsoft is arguing, among other issues, that the quantum of damages for infringement for inducement should be limited to the degree of direct infringement that has actually been proven. We are continuing to monitor cases raising similar damages issues for appropriate cases in which to participate. In addition, the committee is carefully screening cases to attempt to identify an appropriate vehicle for the Court to reconsider its Cybor decision, involving whether or not deference should be given to the district court on issues of claim construction. The Amicus Committee continues to solicit input from all members of AIPLA regarding appropriate cases in which to participate. In particular, we are looking for cases to support the Board’s public policy initiatives, particularly with respect to fraud and inequitable conduct and patent damages. Please feel free to contact Ed Reines or myself if there are any cases that you feel that we should consider or wish to participate in our monthly liaison calls.

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Mentoring

Troy M. Schmelzer, Chair (photo left) Amie Peele Carter, Vice-Chair (photo right) ___________________________________________

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he Mentoring Committee had a very productive spring business meeting, addressing particularly the issues of mentor recruitment, increasing mentoring feedback in anticipation of the Mentor of the Year Award, and our ongoing dedication to refining and improving the mentoring program. We discussed our ongoing need to collaborate with the Young Lawyers Committee and potentially other committees to find suitable mentors for our large and diverse mentee candidate pool. It is an ongoing priority for the committee to attract qualified mentors and mentees who will have intentions and expectations that are consistent with the original purpose of the mentoring program. In light of this objective, we reviewed our current utilization of AIPLA communications outlets to advertise the mentoring program, and there was a good deal of discussion surrounding how best to refine our publicity campaigns. Our plan for ongoing success includes re-education of the AIPLA community regarding the purpose and benefits of the mentoring program, as well as re-direction to other organizations and resources that may help candidates make better choices about their needs vis a vis the mentoring program. Many of these outreach and education efforts will involve the Mentoring Committee’s webpage, which is still a work in progress. We also will work on printed materials, particularly the announcements in AIPLA

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direct and a revised version of the mentoring program brochure and sign-up sheet. The Committee also discussed the importance of thorough receiving from mentoring program participants, particularly in light of the upcoming Mentor of the Year Award (to be presented at the Annual Meeting). Last autumn, Elizabeth Burke graciously spent the time to overhaul our evaluation forms, making them more thorough and balanced, and providing committee members better fodder for award decisionmaking. Our response rate has been slightly lower than anticipated, however, and the committee had a lengthy brainstorming session on the subject of how to increase the response rate. We resolved to: increase the frequency of our mentoring program “check-ins,” require active responses to status request emails for better pairs tracking, offer the evaluation surveys in electronic form for ease of completion, and include the evaluation forms on the Mentoring Committee website to provide constant access to the surveys. We have received a number of evaluations for Mentor of the Year candidates, and are continuing to receive evaluations for this purpose. Once the evaluations are in, the committee leadership will conduct its review and make its honoree recommendation.

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IP Law Associations

Philip T. Petti, Chair (photo left) Fraser Roy, Vice-Chair (photo right) _________________________________

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ntroduction of and Presentation by the Special Committee For Public Education Michael Piper gave a presentation on the work and initiative of the Special Committee For Public Education. We discussed featuring a presentation from the Special Committee For Public Education at our planned regional virtual roundtables. We concluded that sharing ideas on promoting IP rights would be a good topic for our roundtable and Mike’s committee would work with us on this project. Introduction of our new committee member Kate Spelman Kate will be the liaison for the regional and local associations in California, Hawaii, Nevada and Utah. Kate also will be the contact member for the AIPLA Corporate Practice, Education, International Education and IP Practice in Europe Committees. Discussion of Regional/Local Association Virtual “Roundtables” We agreed that Philip Petti and Fraser Roy would start the virtual roundtables with the mid-western states in their regions. See outline below.The second roundtable would be for the New England states that are covered by Guy Donatiello and Ken Nigon. Next E-Mailer Jerry Selinger and Laura Zeman will take the lead on preparing and drafting this e-mailer to the local associations. They are accepting suggestions for the content of the e-mailer. Microsite Update Philip Petti updated our microsite as of the beginning of May. Randy Sagara also has set up the microsite so that we can edit the IP Law Associations Map to keep it up to date. Annual Meeting Plans The tentative plan is to ask Vince Garlock to supply a legislative update. Other ideas also are solicited. We will ask for late afternoon time for the meeting to ensure

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that the West Coast participants do not have to wake up at early hours. We also will issue a separate e-mail invitation to the regional/local associations to attend that meeting. OUTLINE FOR REGIONAL “ROUNDTABLES” AIPLA IP LAW ASSOCIATIONS COMMITTEE I. Purpose A. To engage the Regional/Local Associations in a more personal dialog with our Committee. B. To expand format to include other AIPLA committees and/or Regional/Local Associations on specific topics. II. Format A. A series of telephone dial-in conference calls coupled with an interactive internet presentation using GoToMeetings software. B. Limit the roundtable to 8 – 10 participants in same region, and all associations will be included in at least one roundtable. C. Limit to about 90 minuets. D. Partially presentation and part discussion. E. Organized and moderated by Committee member responsible for region. F. Committee member supported by note taker to provide report back to the participants III. Topics – Open For Suggestions A. Topics that have been suggested: • Mentoring • Increasing diversity in IP law • How to get activities going in IP associations • What regional associations would like to see from AIPLA • Major activities of regional associations – what is working and what is not • CLE speakers – share or pitch speakers (recommendations) • Increasing corporate involvement

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• Regional associations’ interface with PTO, IV. Next Steps amicus briefs, legislation A. Schedule dates for first roundtables – first efforts • AIPLA Public Education Committee and to try out and trouble shoot collecting news stories on IP issues B. Roll out nationwide schedule • Legislation and rules update – AIPLA “inside” information B. Other proposed topics?

Membership

Jerry R. Selinger, Chair (photo left) Bryan W. Bockhop, Vice Chair (photo right) ___________________________________________

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he Membership Committee met during the Spring Meeting. One topic we discussed was the ongoing Membership Video project, which is being coordinated jointly by the Membership Committee and the Online Programs Committee. Cheryl Agris is spearheading the project for the Membership Committee. Cheryl reported that the video clips to be used in the on-line video were being shot at the Spring Meeting and that editing would begin at the conclusion of the Meeting. She also indicated that on-line video should be completed before the Annual Meeting. We also discussed the TSC Liaison program. Bryan Bockhop indicated that there were still liaison positions

available to anyone who was interested in serving. He also indicated that being a TSC liaison is an excellent way to get involved in AIPLA. We also discussed the Small Firm/Solo Practice subcommittee, of which Cheryl Agris is chair. Cheryl indicated that the previous vice chair had to resign because of a conflict with his new job and she said she would welcome a volunteer. Finally, we held a Small Firm/Solo Practitioner Reception, sponsored by Herbert L. Jamison & Co., LLC, which was well attended.

Online Programs

James E. Ruland, Chair (left photo) Shannon Beech, Vice-Chair (right photo) ___________________________________________ MISSION: Our Mission is to provide high quality, affordable education by means of an 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 the AIPLA as a whole and to their constituents and to facilitate others in AIPLA to utilize online media for program delivery. 72 

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EXECUTIVE SUMMARY: The focus in the past calendar year has been the preparation and presentation of live online CLE programs. Online Programs has performed 11-12 scheduled programs per year (with additional quick turnaround programs on hot topics) but starting in the fall of 2009 we will be adding an additional program every two months for a total of 18 revenue generating programs per calendar year in 2010 with the possibility of quick turnaround programs as appropriate. Moreover, the committee is developing expertise in the 2009 spring meeting issue


delivery of live online programs through other low cost vehicles in cooperation with other AIPLA Committees. The first live webinar was performed at the Corporate Practice and ADR Joint Committee meeting at the 2009 Spring Meeting with great success and a total of 83 registrants. As the number of programs has grown, Online Programs has been working to increase the number and the practice diversity of our coordinators through the TSC Liaison program and help from the Young Lawyers Committee.

program offered every 1-3 months. The two programs on January 23, 2009 and March 19, 2009 have been very successful. The next program will likely occur on July 22, 2009 and will focus on public education.

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 is creating 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.

We are working on putting together a new and potential members video to be placed on AIPLA’s website as an introduction to AIPLA. In cooperation with the Membership Committee we are capturing video segments from AIPLA members speaking about their experiences at this 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. Our goal is to perform 18 programs per calendar year at a pace of three programs every two months with the flexibility to do additional rapid response programs. We are working with other substantive committees to develop online content.

Recorded Live Presentations. AIPLA is continuing to explore various platforms for recording live meeting content, including recording from live streaming video of the stated meetings. The Online Programs Committee with be working AIPLA staff to assist in this endeavor.

We have been focusing on developing expertise on GoToWebinar platform and accompanying procedures through our subcommittee. This subcommittee has been assisting the Corporate Practice and Electronic and Computer Law Committees in performing online programs with Citrix GoToWebinar. An appendix to these procedures will be developed in cooperation with other AIPLA Committees as needed and has already been completed for the Corporate Practice Committee. We conducted a trial webinar live from the Corporate Practice and ADR Joint Committee meeting at the 2009 Spring Meeting, which was a great success. The goal is to have subcommittee members available to assist other AIPLA committees to use the Citrix platforms and reduce the workload on AIPLA headquarters staff. In response to the changing economic environment, starting on January 23, 2009 AIPLA has been sponsoring a Career and Practice Management series of webinars that will be complimentary to all AIPLA members. This series will be performed on the GoToWebinar program with one 2009 spring meeting issue

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.

Live Moderated Online Programs. The Committee continues to work with KRM to produce and deliver high-end, live, interactive online CLE programs. We will try to maintain our pace of one program a month and increasing to three programs every two months beginning in September 2009 with the flexibility to do 1-3 additional rapid response programs. Internally Administered Web-based Programs. We have started using Citrix GoToWebinar as our platform for future low cost programs. We have appointed committee members under the guidance of the Chair and Vice-Chair to help with coordinating this class of online programs, and as numbers increase likely 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 has conducted three programs and the Electronic and Computer Law Committee has conducted one program using this platform. We are also using this platform to present the Career and Practice Management series of webinars sponsored by AIPLA as a valueadded service to all AIPLA members. We are currently examining the possibility of using the Citrix platform to aipla bulletin

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perform non-CLE, attendee-paid programs, such as adapting the secretaries and paralegals conference to an online program. 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. Future: The following is our schedule of upcoming programs for 2009: ONLINE PROGRAMS SCHEDULE Oct 7/09 Foreign Law and Trademarks Program Coordinators: Darren Franklin, Michael Ballard, Tashia Bunch Nov 4/09 TBD Program Coordinators: Brad Chin, Arlene Neal, Sheetal Patel

We are working with the Trademark Committee to present a program on a quick turnaround basis after the anticipated Bose decision. 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 and Electronic and Computer Law 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 non-CLE programs, including the potential to do a series of programs adapting the secretaries and paralegal AIPLA conference to the online format. We are also developing a series of AIPLA Career Practice Management programs with the next program on July 22, 2009. It is anticipated that these programs will address different areas of practice management during difficult economic circumstances. To increase coordinators and to better the content of programs to the varied AIPLA membership, Online Programs is initiating 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.

Dec 2/09 Email Ethics Program Coordinators: Phil Pett, Hetal Kushwaha, Orin Paliwoda

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Professional Programs

J. Michael Martinez de Andino, Chair Steve Malin, Vice Chair ___________________________________________

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t the 2009 Spring Meeting in San Diego, the Professional Programs Committee conducted a successful one-hour business meeting. The meeting was chaired by J. Michael Martinez de Andino and Steve Malin. Various issues were addressed during the meeting, including (1) a discussion of the committee’s goals for the current year, which include improvements in program content and speaker quality; (2) continued emphasis on trademark and copyright presentations, as well as patent presentations; (3) finalizing details regarding the 2009 Annual Program; and (4) commencing the planning work for the Spring 2010 Program. Potential topics for the Spring 2010 meeting include: Corporate budgets; efficiencies in the new economy; practice management tips; regional differences in litigation; alternative fee arrangements; division of workflow between in house and outside counsel;

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managing IP workflow; district judge panel; real world effect of recent ‘big’ cases (e.g., KSR, Medimmune, etc.); CAFC statistical analysis; foreign alternatives to US litigation; appeals; recent interest in the ITC; law of blogging; mobility in today’s economy; patents in the current economic crisis; comparison of new and traditional patent applications; In re Bilski discussion; open source issues; data export rules; venture capital and IP; fashion design protection; fair use (TM and CR); ICANN and TM remedies; counterfeiting; residual goodwill in TM; Takeda v. AlphaPharm; patent reform; green technologies; finance issues; IP indemnity. The Committee meeting was well attended with 27 members present at the meeting and seven members attending by telephone. Questions regarding the Committee and its activities can be addressed to either Mike Martinez or Steve Malin.

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Education

J. Timothy Meigs, Chair (left photo) Troy E. Grabow, Vice-Chair (right photo) ___________________________________________

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t the 2009 Spring Meeting, the Education Committee participated in a joint meeting, with the Young Lawyers Committee and Law Students Committee, directed to deposition training, and conducted a joint business meeting directed to our plans for the upcoming year. The Education Committee’s plans and goals for the rest of the year include: 1. Practical Patent Prosecution Training for New Lawyers Program (“Boot Camp”). The Education Committee is well underway in planning for this year’s AIPLA Practical Patent Prosecution Training for New Lawyers Program (“Boot Camp”), which is scheduled for August 26-28, 2009, at the Westin Alexandria, Virginia. The Boot Camp has been offered annually for several years, and includes instructional sessions and handson claims drafting workshops taught by skilled and experienced private and corporate practitioners. This popular three-day program hit a new record in August, 2008, with over 200 in attendance. We anticipate at least as much interest this year in view of the various actual and proposed changes in the USPTO’s rules and the patent laws. We have started a new subcommittee for planning of the Boot Camp; please let us know if you would like to volunteer. Another way for committee members to get involved would be to attend or serve as an instructor at the Boot Camp. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend. 2. The First 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 a one-day Trademark Boot Camp program, which was held at the Westin Alexandria on June 17, 2009. The program was a great success, attracting almost 100 participants, and receiving rave reviews from the attendees. 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 plan on making this an 76 

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annual event. Please contact one of us or Kim Van Voorhis if you are interested in getting involved in future Trademark Boot Camps. 3. 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 activities with the substantive committees and hold joint meetings with other committees on topics of interest to a crosssection of attorneys. For example, we worked with the Online Programs committee to develop the June, 2008, live online seminar: “Initial ‘Inventor’ Interview: Practical Legal and Business Considerations,” which served as a “teaser” for the 2008 Patent Boot Camp. At the 2008 Annual Meeting, the Education Committee participated in a joint program with the Young Lawyers and Law Students Committees on how to become involved in the leadership of AIPLA. At the 2009 Mid-Winter Institute, we participated in a joint program with the Young Lawyers and Law Students Committees on how to prepare for a possible career as an in-house counsel. We are also planning an online seminar in the fall 2009 with the Online Programs committee that will be a follow up to the Patent Prosecution Boot Camp. At the 2009 Annual Meeting, we will have a joint meeting with the Young Lawyers and Law Students Committees on the timely issue of how to deliver value to your firm and its clients in a troubled economy. The committee meeting will include a panel discussion which addresses strategic advice in the area of professional development for law students, junior/senior-level associates and young partners. Finally, the Education Committee is in the process of forming several subcommittees relating to the planning and organization of Boot Camp, educating law students, law school administrators, and others concerning careers in intellectual property law. Please let us know if you would like to volunteer. Once again, we are always looking for new ideas so let us know if you have any suggestions. For information on the Education Committee, please contact Tim Meigs (timothy_meigs@bd.com) or Troy Grabow (troy.grabow@finnegan.com). 2009 spring meeting issue


Diversity in IP Law

Diallo Crenshaw, Chair (left photo) Neema Desai, Vice-Chair (right photo) ___________________________________________ Summary I. Liaison Updates: Diallo Crenshaw encouraged everyone to become a Liaison to a “Substantive” AIPLA Committee Current Diversity Committee Liaisons Shawn Cage (Liaison to Electronic & Computer Law Committee) Todd Baker (Liaison to Interference Committee) Shayne O’Reilly (Liaison to Professional Programs Committee)

Reports from Liaisons Todd Baker discussed the meeting of the Interference committee held at the 2009 Spring Meeting. The interference committee held a CLE program where BPAI Chief Judge Fleming discussed appeals before the BPAI. Judge Fleming also discussed updates regarding interferences and reexaminations. Todd Baker agreed to forward any documents distributed during the Interference committee meeting to the Diversity committee. Report from Board John Richards, Secretary of AIPLA, discussed AIPLA’s focus on increasing, enhancing and fostering diversity. AIPLA adopted a policy statement on diversity. Also, AIPLA would like to increase the number of diverse leaders in the organization. If you have any ideas or concepts on increasing diversity within AIPLA, or any questions or comments, please email John Richards at jrichards@wnlaw.com II. Subcommittee Updates: Initiatives Organizing a picture book or memoir to reflect the progress of the diversity committee

Annual Meeting Joanna Esty and Nicole Morris are spearheading this project. Joanna discusses a possible diversity reception that will be conducted in the evening during the 2009 Annual Meeting. Both Joanna and Nicole have generated a letter to send to other diversity organizations and local schools/ universities to gauge their interest in having their members or students attend such an event. Joanna and Nicole are developing a matrix of organizations and schools/universities to target. Joanna and Nicole will be seeking sponsors for the event. It was agreed that we should conduct the diversity pipeline reception in conjunction with the AIPLEF reception. Diallo also encourages all members of the committee to assist Joanna and Nicole with this effort. In particular, the sponsorship and matrix development aspects. Diallo agreed to work with Phil Hampton (AIPLEF), Chris McKeon (Law Students Committee), Joanna and Nicole to help plan this event. III. Open Discussion CLE hours for attending diversity committee business meetings. A discussion on how the diversity committee can sponsor a CLE. It was concluded that a program outline must be submitted to the Professional Programs Committee chair to request approval. Attendees: Maurice Williams, Diallo Crenshaw, Fatima Al Heyari, W. Todd Baker, John Richards (Secretary of AIPLA), Shayne O’Reilly, Sheetah Patel, Joanna Esty, Mark Whitaker

Possible Diversity Pipeline Reception at the 2009 2009 spring meeting issue

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Law Students

Christopher McKeon, Co-Chair (left photo) Jesse Ormsby, Co-Chair (right photo) ___________________________________________

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he Law Student Committee is teaming up with the Public Education Committee to aid in monitoring IP Internet traffic. Such traffic includes blogging and podcasts. The Student Committee will begin seeking student member volunteers. These volunteers will be responsible for monitoring particular sites. They will then forward reports on those sites to the Student Committee for vetting. Reports of interest will be sent to the Public Education Committee. The overall purpose is to provide the Public Education Committee with information on what is being said throughout the IP blogosphere.

Alternative Dispute Resolution Rex B. Stratton, Chair (left photo) Harrie R. Samras, Vice-Chair (right photo) ___________________________________________

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he Alternative Dispute Resolution Committee, in a joint meeting with the Corporate Practice Committee, presented a two-hour program, “There is More Than One Way to Skin A Cat: Cost Effective Alternatives to Litigating IP Disputes,” at the meeting which was simulcast via webinar to the membership of both committees. The program was sponsored by Bromberg & Sunstein to cover the cost of the webinar presentation. The speakers were: Hon. Louisa S. Porter, US Magistrate Judge, Southern District of California, Lee Carl Bromberg, Bromberg & Sunstein, Hon. William F. McDonald (Ret.) JAMS, Thomas J. Stipanowich, Professor of Law and Academic Director Straus Institute for Dispute Resolution, Pepperdine School of Law, Freddie Park, BioForm Medical, Inc. and Georgann Grunebach, Fox Entertainment Group moderated.

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The webinar approach was agreed upon because of the economy and the likelihood that both committees would experience low member attendance. The program was a trial effort to present a committee program via webinar and was successfully received. The presentation in this program was exceptional and both committees have uploaded the presentation to their respective microsites to make its substantive content available to members, in particular the many useful clauses that can be used in contract drafting of arbitration, mediation and “step” provisions. The presentation is well worth committee members reviewing for its detailed information, which is unusual for many PowerPoint slide shows. Please see: http://www.aipla. org/MSTemplate.cfm?Site=Alternative_Dispute_Resol ution&CFID=725437&CFTOKEN=10906582

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Copyright Law

Elizabeth Ann Morgan, Chair (left photo) Harry M. Barton, Vice-Chair (right photo) ___________________________________________

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he Copyright Committee and members of AIPLA’s Professional Programs Committee coordinated 1.5 hours of CLE presentation related to copyright law for the Spring Meeting, entitled “Copyright Unboxed.” The Copyright Committee is collaborating with the Trademark, Anti-Counterfeit and Industrial Design Committees for an Annual Meeting program concerning product configuration protection from a multidisciplinary approach, specifically related to functionality. The committee is also coordinating a joint educational session, with the Trademark and IP Practice in Far East Committees, which will also take place at the 2009 Annual Meeting. For the 2010 Mid-Winter Institute, Copyright Committee members are collaborating with the Trademark Committee to plan a program concerning the creation of additional value from copyrights and trademarks in a down economy. An educational session, also coordinated with the Trademark Committee, is anticipated to follow this program. The Copyright Committee is also planning programs for the 2010 Spring Meeting. Members of the Committee are encouraged to contact the Chair, Elizabeth Ann “Betty” Morgan and the Vice Chair, Harry M. Barton with ideas for programs for the 2010 Spring Meeting and to volunteer for future projects.

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The committee also worked with AIPLA staff and committee members to formulate AIPLA’s position on recent legislation concerning Orphan Works. Specifically, the committee and several volunteers drafted comments for presentation to the AIPLA Board concerning various legislative bills. Finally, the Copyright Committee formed an Amicus Subcommittee for the purpose of seeking opportunities to submit amicus briefs concerning issues affecting copyright law. The Chair of the Amicus Subcommittee, Kevin Tottis, has worked with Amy Cahill from the AntiCounterfeiting and Anti-Piracy Committee, as well as with members of the Amicus Committee, on a proposed brief concerning the recent Second Circuit decision in Reed Elsevier v. Muchnick. The Amicus Subcommittee also considered the recent Second Circuit decision, Cartoon Network, LP v. CSC Holdings, Inc. and formed recommendations to the full Amicus Committee for ultimate consideration by the AIPLA Board of Directors regarding potential intervention in the petition to the Supreme Court.

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Emerging Technologies

Raymond Van Dyke, Chair (left photo) Brian H. Batzli, Vice-Chair (right photo) ___________________________________________

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he Emerging Technology Committee, in a joint meeting with the International Law Committee, had a lively two hour meeting on the broad topic of emerging technologies across the globe. Emerging Technology Committee Chair Ray Van Dyke moderated the session and also spoke. The Emerging Technology Committee (including Brian Batzli, Vice Chair) and the International Law Committee (Tom Moga, Chair) thank the speakers for their presentations. Starting the presentations in the Pacific, Matt Adams of AJ Park in Wellington, New Zealand, covered patent protections in Australia and New Zealand, with an emphasis on information and communications technologies, software and business methods. Lili Wu of CCPIT Patent and Trademark Law Office in Beijing then addressed trends in software patenting in China, the growth of patent filings, litigation and comparisons with other jurisdictions. Continuing Westward, Calab Gabriel of K&S Partners in New Delhi, India gave a lively talk on patenting in several high-tech areas, including polymorphs, genes and software. David Read of W.P. Thompson & Co in London spoke on stem cell patenting in the UK. Gustavo Morais of Danneman in Sao Paulo, Brazil and Hector Manoff of Vitale, Manoff & Feilbogen in Buenos Aires, Argentina spoke on patenting emerging technologies in South America. New General Counsel at Nantero, Robert Lindefjeld addressed several innovations coming out

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of his cutting-edge company. Ray Van Dyke completed the world tour and spoke on the history and future of software, business method and emerging technology patenting in the United States. The outgoing Chair, Ray Van Dyke, wishes to express his thanks to all the members of the Emerging Technology Committee, particularly his Vice Chair, Brian Batzli, who shall assume the Chair position in the fall. Many thanks also to the members of the Emerging Technology Committee and the speakers over the past few years who gave us all glimmers of the wondrous technologies being developed and tips on how best to protect these innovations in a changing legal landscape. Nanotechnological and other revolutions in technologies are happening now, and it has been my privilege to lead this committee over the past two years. Many thanks also to our Board liaisons and outgoing International Law Committee Chair Tom Moga. At the Annual Meeting, the Emerging Technology Committee partners with the Electronic and Computer Law Committee, with a lively talk on cutting-edge advances in emerging technologies from technologists. The joint meeting will also address patenting these innovations in an afternoon CLE session.

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Electronic & Computer Law

Manny Schecter, Chair (left photo) Jacques L. Etkowicz, Vice-Chair (right photo) ___________________________________________

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t the 2009 Spring Meeting, the Antitrust, Electronic & Computer Law (ECLC), Licensing & Management of IP Assets, and Patent Litigation Committees hosted a joint two-hour and CLE-qualified session titled “Licensing Patents for Standards: Royalties, Damages, Injunctions, Antitrust, and Other Practical Issues”. Ken Frankel of the Antitrust Committee served as the session moderator. The distinguished speakers included William Blumenthal (Clifford, Chance), Michael Lindsay (Dorsey & Whitney), Jack Slobod (Philips), and Richard Taffet (Bingham). The session was a mix of two panel discussions and two individual presentations with focus on patent issues in technical standards setting organizations (SSOs). The session began with a panel discussion of “ex ante” standards activity, which refers to activity before a standard has been set. The panel explained the basics of ex ante standards activity, including both ex ante disclosure of applicable patents and associated li-censing terms, and also ex ante negotiation of patent licenses. SSO policies vary from silence to simple encouragement to actual requirement of ex ante activity. Generally, SSO policies focus on the intentions of patentees and do not require licensing. Ex ante activity is an attempt to avoid “hold-up” resulting from potentially excessive royalties achievable because of leverage gained by a patentee once a standard is set. Some panel members indicated that ex ante issues have been under discussion for many years and advocated no need for requirements of ex ante negotiations. They also indicated that ex ante negotiations slow the standards setting process and preferred preservation of patentee licensing term flexibility. Other panel members argued that not at least determining a royalty rate in advance of setting a standard is like agreeing to a purchase before knowing the price – costs should be determined as early as possible. They indicated that standards implementers want assurances needed for business decision purposes. Another panel session concentrated on (Fair) Reasonable and Non-Discriminatory licensing – commonly known as (F)RAND. It is common 2009 spring meeting issue

for patentees to committee to license standards implementers under (F)RAND conditions. The panel explained, however, that such a commitment does not require identical licensing terms as each licensee and business situation places different values on different licensing terms. As a result, licensing terms are generally not imposed and may vary considerably. Precisely what qualifies as (F)RAND is unknown. Mr. Blumenthal spoke about the new Obama Administration’s attitude towards standards. The recent Unocal, Rambus, and Negotiated Data Solutions cases have brought increased attention from government antitrust authorities. Although the authorities have indicated that ex ante licensing is permissible to reduce hold-up, such practice is still in the minority. Furthermore, the Federal Trade Commission (FTC) appears to be more concerned about hold-up than the Department of Justice. As a result, the FTC is seeking to expand its Section 5 scope of authority. Mr. Slobod described patent pools in the final presentation. Patent pools are considered to be an alternative to ex ante licensing. A patent pool is characterized by joint patent licensing of patents essential to a standard. Licensing must be nondiscriminatory and an administrator is required to oversee the process. Patent pools alleviate hold-up, help navigate patent thickets, provide one-stop license shopping, reduce transaction overhead, and promote implementation of standards. Mr. Slobod also discussed potential licensing terms and patent pool history (the first known patent pool was thought to relate to sewing machines in the 1840s). He considered early patent pool formation and consideration of the pool’s value to licensees among the keys to patent pool success. The session concluded with the panel responding to numerous questions from the audience. Related Matter AIPLA has established a new Special Committee on Standards and Open Source Software. Both the Antitrust aipla bulletin

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Committee and ECLC had substantial activity, including sub-committees, on this topic. With increasing activity it was apparent that the topic deserved a committee of its own. The new committee will be co-chaired by Michele

Herman (Woodcock, Washburn) and Doug Luftman (Palm). The joint CLE session described above helped identify potential new members for the new committee, which held its first in-person meeting the following day.

Women in IP Law

Daphne C. Lainson, Chair (left photo) Carey C. Jordan, Vice-Chair (right photo) ___________________________________________ The Women in IP Law Committee had an excellent turn-out for its breakfast meeting at the Spring Meeting in San Diego. The Committee met on Thursday, May 14 and welcomed Philip Cohen and Laura Hess from SPARK International who helped attendees answer the question “Does Your Life Meet the Joy Test?TM”. Philip and Laura are Master Certified Coaches who led us in an interactive session geared at giving us the tools for achieving work-life harmony. A key exercise at the meeting was to identify the core value at the center of each of our lives. We each engaged in the simple exercise of identifying our top 10 values, and then we were asked to give up values in order of least importance in exchange for something ostensibly more important. At the end of the exercise we were each left with one value: the central value that should govern the answer to whether our life meets the joy test. Philip and Laura shared stories of their own experiences in answering this question, and how the answer led them away from their former careers as CPAs to their present roles. Anecdotes and stories of the success of

others on their journeys to answer the question were also shared. To conclude the meeting, Philip and Laura graciously provided a certificate for a free hour of coaching to anyone in attendance, and a book authored by Laura together with a kit, including a cd-rom with further exercises and materials. In addition to Philip and Laura’s presentation, we also introduced the next book for the book club: “The Feminine Mistake: Are We Giving Up Too Much” by Leslie Bennetts, moderated by Elaine Specter. For those wanting to become involved in the book club, please contact the book club chair, Christine McCarthy at christine.mccarthy@btlaw.com. We hope that you can join us for our breakfast meeting at the Annual Meeting in Washington, DC. The Women in IP Law Committee will be co-hosting the meeting with Corporate Practice. Our topic: “Women at the Top of Their Game: How to Get There, How to Stay There & How to Help Others Along Their Way.” See you in DC!

Antitrust

Kenneth M. Frankel, Chair (left photo) Pryor A. Garnett, Vice-Chair (right photo) ___________________________________________ Please see Electronic and Computer Law.

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Biotechnology

DeAnn F. Smith, Chair (left photo) Mercedes K. Meyer, Vice-Chair (right photo) ___________________________________________

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n Thursday May 14, 2009, the Chemical and Biotechnology committees held a joint meeting. The first half of the meeting was directed to discussions of reconstructing prior art examples and the use of such information in litigation. Scientist Dr. Leonard J. Chyall of Aptuit Consulting spoke about using a scientific expert to reproduce examples and testify in patent litigation. Following Dr. Chyall’s presentation, there was a pointed talk about strategies surrounding the use of a scientific expert and related issues that can arise during litigation. The second half focused on patent term adjustment (“PTA”), patent term extensions (“PTE”), terminal disclaimers and how best to avoid delay in the US and foreign patent offices in order to maximize patent life term. James J. Kelley, Assistant General Patent Counsel of Eli Lilly & Co. moderated and spoke to the importance of patent term. He began by identifying the motivation for the session in both concerns over the pursuit of patent scope at the risk of lost patent term and due diligence observations. He specifically discussed how PTE is applied in light of PTA, and the limits on the amount of patent term to be restored for drug products and total period of Effective Patent Term (“EPT”) and how relevant the timing of these terms are with respect to clinical testing. He spoke to attorney influence over the effective patent term (EPT), highlighting the fact that the attorney has the most influence over the time it takes to issue the patent and some influence over the time between the start of patent term and the start of testing phase. Jim provided the results of a survey of 48 human drugs that qualified for PTE since 1996 and the average times for various milestones including: (1) patent issuance; (2) the amount of time from the beginning of the patent term until IND effective date (“delay”); (3) time from IND effective date to NDA completion (“testing” period); (4) time from the NDA acceptance until NDA approval (“review” period); and (5) EPT, each for both biologics and small molecules. Jim also provided the group with a mathematical model illustrating PTE considering the variables of the length of review, prosecution, delay and clinical testing. To conclude, Jim compared and summarized the effects

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of PTE and PTA on drug products. Jim’s presentation as well of those of the other speakers in the second half of the meeting are available at: http://www.aipla. org/MSTemplate.cfm?Section=Spring_20091&Site =Biotechnology&Template=/ContentManagement/ ContentDisplay.cfm&ContentID=21332. Jeffrey P. Kushan of Sidley Austin (Washington, DC) introduced the basis for accumulating PTA credit under 35 U.S.C. Section 154 and discussed how one can lose accumulated PTA credit. Jeff also highlighted the ongoing dispute over the PTO’s interpretation of the overlap between prosecution delay PTA and the 3-year PTA. Jeff provided illusory examples of the overlap issue, and took several questions from the group. He warned that supplemental submissions such as a supplemental IDS or any paper that does not fall within an exemption will be charged as delay after a first response by the applicant. Jeff further discussed certain safe harbors and cautioned that PTO inaction can be held against applicant even if the applicant makes a written status inquiry after a response is filed. Finally, Jeff recommended to preserve your rights under Wyeth v. Doll and request reconsideration (petition) of the PTA within 2 months of issue date of the patent. Vicki G. Norton, Ph.D. of Duane Morris (San Diego, CA) discussed the “patent squeeze” of recent decisions under Sections 102, 103 and 112. She specifically addressed recent decisions: In re Gleave and In re Chuang where bispecific antisense oligodeoxynucleotides and isolated polypeptides respectively were held not patentable under Section 102 based on prior art disclosures. Vicki also discussed In re Kubin, where an isolated nucleic acid molecule was held not patentable under Section 103. She aslo addressed the written description issues raised in Ariad v. Eli Lilly where a method for reducing NF-kB activity was found unpatentable, and ICU Medical v. Alaris, where claims to needleless connector valves were found to lack a written description. Pamela D. Politis, Ph.D. of Endo Pharmaceuticals addressed the strategies that maximum patent term and the balancing act one must do between aipla bulletin

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aggressively protecting claim scope against the onslaught of considerations over patent term, and patent term adjustments and extensions. She provided an instructive timeline related to pharmaceutical patent protections and highlighted the priorities in procuring

protections for innovative pharmaceuticals. She recommended that less may mean more in filing the initial patent application covering a small molecule platform.

Interference

W. Todd Baker, Chair (left photo) Herbert D. Hart, Vice-Chair (right photo) ___________________________________________

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he Interference Committee has continued its tradition of receiving State of the Board of Patent Appeals and Interferences (“BPAI”) reports at each of the AIPLA’s stated meetings. At the Spring Meeting, the committee was pleased to receive a report from Chief Administrative Patent Judge Fleming. In addition to receiving the State of the BPAI report, the Interference Committee hosted a roundtable discussion focusing on proposals for improving the case management of inter partes reexaminations. A case management model which was a primary topic of the discussion can be found on the Interference Committee’s web page: http://www.aipla.org/ MembersOnly.cfm?ContentFileID=22239. The Post-Grant Review Subcommittee consists of Donna Meuth, Chico Gholz and Jonathan Sick. This subcommittee has held various conference calls as well as email exchanges. Topics of discussion related to the “Patent Reform Bills” introduced by the House and Senate earlier this year. The Subcommittee discussed differences in the House and Senate versions of the Bills. The Subcommittee prepared a report, comparing certain provisions of these Bills relating to Post-Grant Review proceedings. This report appears at http://www.aipla.org/MembersOnly. cfm?ContentFileID=20969. The Subcommittee also discussed presentations by the Board relating to PostGrant Review and Inter Partes Reexamination. How the Board will handle the increased work load as well

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as procedures the Board would dictate to be followed, for example, were addressed. The subcommittee will address any additional Bills that are introduced by Congress including provisions relating to Post-Grant Review. Members of the AIPLA Subcommittee on Patent Reexamination have: •explored the statutory and historical bases of the existing inter partes reexamination rules and the reasons for their present form; •identified processes, most notably motions practice associated with the initial or patentability phase of interferences, that might be useful models for making inter partes reexamination a just, speedy and inexpensive proceeding; and, •outlined models for such a practice under existing statutory authority. Members of the Rules & Standing Order Subcommittee have had a subcommittee meeting. We are currently preparing proposed revisions to Section 41 and SO interference provisions to circulate to subcommittee members. Among the proposed changes, we are contemplating adding the copying claims notice requirement of MPEP 2001.06(d) to Section 41.

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Corporate Practice

Chen Wang, Chair (left photo) Georgann S. Grunebach, Vice-Chair (right photo) ___________________________________________

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his committee develops programming and disseminates information relating to intellectual property law and practice that is particularly useful to corporate lawyers. During 2009, the committee continues to develop the 2008 initiatives and explore more ways to encourage participation in AIPLA by more corporate lawyers. Our committee’s additional focus this year also included leveraging technology to deliver such programming in a way that maximizes the limited time available to in-house counsel in obtaining developments and updates in intellectual property law and practice, as well as promotes efficient exchanges of best practices. With simultaneous and interactive Webcast sponsored by the law firm of Bromberg & Sunstein LLP. (recorded at https://www1.gotomeeting.com/register/680435721) Topic: There Is More Than One Way to Skin A Cat: Cost Effective Alternatives to Litigating IP Disputes Speakers: Speakers: Hon. Louisa S. Porter, Magistrate Judge, United States District Court; Hon. William F. McDonald (Ret.), c/o JAMS; Thomas J. Stipanowich, Academic Director, Straus Institute for Dispute Resolution, Pepperdine University -- School of Law; Lee Carl Bromberg, Bromberg & Sunstein LLP; Freddie K. Park, BioForm Medical, Inc. Moderator: Georgann Grunebach, Fox Group Legal Program Summary: Corporate counsel are constantly confronted with handling disputes about intellectual property. Disputes may range from oral exchanges, to written exchanges, to formal papers filed with adjudicatory tribunals.

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Although each dispute deserves attention and requires resources to resolve, not all can receive the same level of attention and resources, particularly in these economically stressed times. Through generalized examples the presenters will provide practical ideas for using and customizing ADR for creatively resolving domestic and international IP disputes in comparison to litigated alternatives. Through the use of able technology provided by AIPLA, and the generous sponsorship of Bromberg and Sunstein, LLP, almost 100 attendees were able to hear and see this groundbreaking presentation. From a uniform, combined view graph set, each speaker had the opportunity to individually address in detail their unique thoughts and perspectives regarding ADR versus Litigation. Judges Porter and McDonald (ret.) brought an especially relevant view point based upon their years on the bench. In-house participants, Georgann Grunebach and Freddie Park shared the challenges of providing contractual review and drafting and general counsel support to their corporate clients in today’s economically challenged environment. Finally, Tom Stipanowich provided a thought-provoking and thoroughly researched presentation based upon his years of in-house, outside firm and academic studies in the field of ADR. All the materials from this presentation were either provided to the on-site participants, or posted on the AIPLA CorporatePractice Committee website for ongoing use and education. Focus of 2009 Association Year In addition to programming at Stated Meetings, the Corporate Practice Committee is focused on the following 2008 initiatives for the upcoming association year. New in 2009: We are seeking to bring our committee together through the professional networking facility of LinkedIn Group for Corporate Practice Committee

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LinkedIn Group for Corporate Practice Commttee Subcommittee Chair: Vince Egolf The LinkedIn Group was created in June 2009, we invite all committee members to join this Group and begin to have discussions and circulate events of particular interest to in-house counsel in this group. Send any upgrade suggestions to Vince Egolf. Pro-IP Public Relations Campaign Consistent with the Strategic Plan under the Professional Development Goal, the Corporate Practice Committee will continue to work with the Special Committee on IP Education to formulate a pro-IP communications/ marketing program as a way to improve the public’s perception of intellectual property. The focus of the plan is to develop consistent pro-IP messages that can be used by all industries and sizes of companies to help promote the value of IP. Vice Chair, Georgann Grunebach has been tasked with taking the lead on this project. In-House Counsel “Lunch” Call Program Subcommittee Chair: looking for volunteer The Corporate Practice Committee launched its first regularly scheduled “lunch” teleconferences for inhouse counsel ONLY participation in the beginning 2008 Association Year. These one-hour teleconferences, in a multi-media format were designed to address topics of particular interest to in-house IP practitioners in an environment that enabled the free flow of ideas and benchmarking among inhouse practitioners that were members of the Corporate Practice Committee. During 2009, we are planning to bring timely topics of particular interest to in-house counsel including PCT Practice Pointers and cost savings idea sharing among in-house counsel. During the 2008 Association Year, we brought three “lunch” call webinar programs with substantial assistance of the On-Line Program Committee and the AIPLA staff and Program Subcommittee Chair Valentina Boyet: 1)  November 8, 2007 entitled, “The Road Ahead: GSK v. Dudas and Patent Prosecution Strategies under the New USPTO Rules”, presented by William E. McCracken, Edward M. O’Toole, and Nicholas P. Schmidbauer from the law firm of McCracken & Frank;

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2)  February 14, 2008 entitled, “Patent Application Preparation and Prosecution Cost Management Effort”, presented by a panel of in-house practitioners, a firm practitioner focused on the offshore perspective, and a moderator presented anonymous firm practitioner perspectives; 3)  July 10, 2008 entitled, “Utilizing Centralized Opposition Proceedings Before the EPO to Invalidate Patents In Europe”, presented by Dr. jur. Daniele Schiuma, European patent attorney, and Dr. rer.nat. Joachim Hock, European patent attorney of Müller - Boré & Partner IP Law Firm; 4)  September 11, 2008 entitled, “IP Insurance: The Big Secret Corporate Counsel Cannot Ignore ”, presented by panelists Leib Dodell, Chairman, Media/Professional Insurance; Chad Milton, National Practice Leader for Media, Marsh Inc., moderated by the IP Insurance Subcommittee of the Corporate Practice Committee. If you are an in-house counsel and would like to help out with the running of this program, please contact Chen Wang. IP Insurance Subcommittee Subcommittee Chair: Kurt Goudy Subcommittee Vice-Chair: Robert Chesler The goal of the IP Insurance Subcommittee is multifaceted. For inhouse counsel and IP risk managers, we need to improve awareness of IP insurance coverage in the marketplace particularly as it relates to infringement litigation. We need to teach the substantive breadth of IP insurance coverage under existing policies, and the potential role of IP insurance in connection with mergers & acquisitions and business income protection. Part of the education will include providing corporate counsel and risk managers (users of such coverage) with an understanding of the existing IP coverage in CGL forms and other standard products, and reveal the state of the market for specialty IP coverage and product trends. If we create more knowledgeable and sophisticated insurance purchasers, corporations will in turn be able to demand more from the insurance agents and brokers which in turn should lead to increased demand for IP insurance products and ultimately promote an expansion of IP products and markets over time. Education will also reduce the likelihood of corporate malfeasance and malpractice associated with failing to report IP claims to insurance carriers.

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If you would like to participate in this subcommittee, please contact Kurt Goudy. Online CLE Program As during the 2008 Association Year, the Corporate Practice Committee will collaborate with the Online Programs Committee to bring an online CLE session on IP Insurance titled “Advising Clients on Procuring and Using Insurance to Address Intellectual Property Law Suits” on February 4, 2009. 2009 Annual Meeting The Corporate Practice Committee has been invited by Women in IP Law to co-sponsor the Friday morning Breakfast on October 16, 2009 at 7:00 AM. Title: “Women at The Top Of Their Game: How to Get There, How to Stay There, and How to Help Others Along the Way.” Speakers: Cindy Weber, Esq. Sughrue Georgann S. Grunebach, Fox Group Legal Moderator: Harrie Samaras, Mediation

Independent

Practice ADR/

The Corporate Practice is also planning a CLE program on IP Insurance, co-sponsored by the Copyright Committee. Additionally, in view of the tremendous success of the 2009 Spring Meeting Webinar, the Corporate Practice Committee is actively seeking sponsorship for this presentation, with a goal of a second successful Webinar at the Annual Meeting! Title: CYBER-INSURANCE You have fire insurance for your building. Shouldn’t you have cyber-insurance for your IP? If you worked for any time in a corporation, you’ve had the opportunity to explore the use of intellectual property insurance. Perhaps your board of directors has approached you about its value to their shareholder? Maybe in house counsel, or your procurement department brought an agreement to your attention that was ripe for insurance coverage, because it lacked an indemnification clause? That was then, and this is now. 2009 spring meeting issue

Technology has driven the issue of intellectual property insurance to places never considered ten, or even five years ago. Can a traditional intellectual property insurance policy protect your company’s assets under the new and dangerous activities that rise from the internet? 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 have now moved to fill this gap by the creation of new insurance products - cyber-policies that specifically address these risks. This market is now well-developed, and a company can choose from a number of cyber-policies. However, as technology changes, companies must constantly examine these policies to see if they respond to evolving risks. This seminar will trace the development and the range of current cyber-policies, and discuss the applicability of these policies to such risks as open source software, user-generated content and copyright and patent infringement. Moderator: Robert D. Chesler, Lowenstein Sandler Speakers: Christopher Keegan - Willis Kim Cauthorn - Insurance Industry Representative T/BA - In-House Representative

Past 2009 Stated Meetings 2009 Mid-Winter Institute: During the 2009 Mid-Winter Institute at the Marriott Doral Golf Resort & Spa in Miami, FL. We held a joint meeting of the Corporate Practice Committee and PCT Issues Committee. Our committee members also participated in the Beta testing of a live webcast of one of the Plenary session titled “Maximizing IP in an Ever-More Global Economy: The Impact of Quanta, the FTC, IP Holding Companies and Other National and International Events,” as AIPLA explores more ways to encourage membership participation through technology.

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Joint Meeting Program Description: In trying times, corporate patent departments must try to squeeze the most out of limited budgets. The Australian Patent Office has just now become available as a PCT searching authority for US applicants. We heard about the technology areas in which the Australian Patent Office has said it will and will not be willing to serve as an ISA (International Search Authority).

authority for US applicants. We heard actual filers’ results using KIPO as an ISA. We heard about statistics for timeliness of searching and examination by various ISAs (US, EP, KR, AU) as well as recent changes in fees charged by the ISAs. Supplemental Search became available by the date of the Mid-Winter Meeting, and learned about its availability to US filers at that time.

The Korean Intellectual Property Office has been available for some time now as a PCT searching

Law Practice Management

Ashok Mannava, Chair Manisha Chakrabarti, Vice-Chair ___________________________________________

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he Law Practice Management Committee met during the Spring Meeting to discuss the status of the Economic Survey. We also discussed programs for future meetings and partnering with other committees, such as Membership, for future CLE programs. We are in the process of establishing a subcommittee for developing these programs and exploring various topics. We welcome any participation from our members.

the 2009 AIPLA Report on the Economic Survey. We are currently trying to finalize the report for printing. We are also discussing making survey data from the 2009 Report available online, and more specifically, discussing what data to make available and in what format. This will be one or our primary focuses after completing the 2009 Report.

The Law Practice Management Committee’s main focus this year is the preparation and the distribution of

Licensing & Management of IP Assets Paul S. Hunter, Chair (left photo) Kevin Wolff, Vice-Chair (right photo) ___________________________________________ Please see Electronic and Computer Law.

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Chemical Practice

Jeffrey A. Lindeman, Chair (left photo) Michael R. Dzwonczyk, Vice-Chair (right photo) ___________________________________________

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or the 2009 Spring Meeting, the Chemical Practice Committee and the Biotechnology Practice Committee conducted a joint committee meeting on two topics of interest to chemical and biotech practitioners. The first topic addressed the roles of scientific experts. Dr. Len Chyall of Aptuit, Inc. spoke from the perspective, and experience, of a scientific expert. Darrell Olson of Knobbe Martens Olson & Bear LLP then provided the patent litigator’s view of working with scientific experts. The second topic addressed patent term. James Kelly of Eli Lilly and Company opened the discussion with a presentation on why

patent term matters, setting the stage for the need for a strategic approach to maximizing effective patent term. Jeffrey Kushan of Sidley Austin LLP discussed the mechanics of the patent term adjustment variables under 35 U.S.C. § 154. Vicki Norton of Duane Morris LLP contrasted claim scope and patent term examining recent decisions to see how decisions relating to claim scope impacted patent tern. Pam Politis of Endo Pharmaceuticals concluded the discussion on patent term by presenting strategies to maximize patent term and to balance claim scope and patent term.

Patent-Relations with the USPTO Charles E. Van Horn, Chair (left photo) Gregory D. Allen, Vice-Chair (right photo) ___________________________________________

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ur joint committees meeting featured a presentation by Bruce Kisliuk who participated via telephone conference because of USPTO travel limitations. We have electronically distributed copies of his presentation and summarize some of the highlights. The USPTO has received about 1.2% less patent applications through the first half of FY ’09 than it received during an equivalent time last year. The number of original filings is down about 10% and the payment of maintenance fees is also down. This has contributed to about a $100 million shortfall to date in fee revenues. The number of new examiners hired this year has been capped at about 600, and current plans call for replacing attritions next year. Pendency continues to increase, reaching an average of 26.9 months to first action and 33.7 months to issue or abandonment. The average allowance rate continues to decline to 41% by mid-FY 09, but the allowance error rate (based on Quality Review statistics for a 2% sample) is holding steady at about 4%. The effects of appeal conferences shows that while only 40% were followed by an

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Examiner’s Answer in FY ’03, that number has risen to 61.3% at the end of FY ’08. The fact that 40% of appeal briefs never get to the Board (11.4% allowed) is still a lot of largely wasted resources. However, Chief Judge Fleming of the USPTO Board of Patent Appeals and Interferences indicated that for those appellants who have voluntarily followed the new, but not yet implemented Board Rules, about 90% indicated that new arguments were presented in the Appeal Brief. Chief Judge Fleming also announced the current plan for republishing the Board rules for comment (30 days). As to current Board statistics, the examiner is being affirmed or affirmed in part in 77% of the cases - the highest in recent memory. Depressed about the declining allowance rate, try accelerated examination - 69.7% allowance for FY ’08 and 80.3% allowance for FY ’09. On average (611 applications allowed), it takes only 197 days to complete prosecution. No report on whether any have been tested in litigation or if any practitioner was found to have intentionally misled the Office through a flawed effort to comply with USPTO requirements. aipla bulletin

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Committee on the ITC

Tom M. Schaumberg, Chair (left photo) L. Scott Oliver, Vice-Chair (right photo) ___________________________________________ I.  Committee Members in Attendance Tom Schaumberg, Chair Scott Oliver, Vice Chair Ken Nigon, Liaison to the Board of Directors Kim Choate William Nash Mark Triettel Ben Davidson Via Telephone: Lyle Vander Schaaf Merritt Blakeslee Shirley Church Jeannine Sano Neil Smith II.  White Paper on ITC Procedural Innovation Tom, Scott and Kim led the discussion. Sections I-III:  Kim gave members a summary of the history of the White Paper and the status of the current draft. Kim will revise the red-lined version, and post the draft to the website. She will also email the members the paper and call for a vote. The goal is to have a final vote before the October meeting – the results of which will be announced at the October meeting. Section IV:  Tom shared with the group that IPO had decided that it would be futile to disrupt the protective order procedure at the ITC, and that the parties may wish to do more at the outset of the case to get inhouse counsel more access. This position is set forth in Section IV of the White Paper, and supports IPO’s position and efforts. Tom asked for comments on taking this position. The Committee members who responded were in favor of supporting this position. III.  Proposed Amendment to Section 337 in view of Kyocera Tom and Scott led the discussion.

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The committee members agreed that there are two main issues on the table with respect to amending Section 337, as proposed in the memo and proposed amendment to the legislation in view of the Kyocera decision. The first issue is whether section (d)(2) should be left alone and unamended. The second is whether, in the new addition of (d)(3), reference to the EPROM factors should be made, or whether the EPROM factors should be left out of the draft legislation. A brief summary of these two topics is set forth below. Tom explained that the goal of the proposed legislation was to put Section 337 back into the shape that the ITC viewed the statute before the Kyocera decision. A. Section 337(d)(2) Merritt Blakeslee shared that at a recent ITCTLA meeting, Dave Foster suggested amending (d)(2) to reflect downstream language (that is, articles not limited to persons, but to articles by particular entities). Regarding the (d)(2) portion of Section 337, there was much discussion as to whether or not this section should be amended or left alone. Tom explained the history behind the (d)(2) portion of the statute. Because this portion has its own “history” and reasons for getting into the statute, the pros and cons of changing this portion of the statute were discussed. B. Section 337(d)(3) In view of the above controversies concerning amending (d)(2), members discussed correcting the Kyocera decision by adding a new section, (d)(3). The draft discussed at the meeting included a listing of the EPROM factors. A member questioned whether or not the ITC would want to be “locked in” to the current EPROM factors. Tom explained that our draft proposed legislation was already phrased such that it that would allow the ITC to use any one of the currently used EPROM factors or use any other factor that the ITC deemed necessary. The members agreed that this would likely address the issue of the ITC being “locked in” and would provide them with enough leeway. 2009 spring meeting issue


A discussion was held as to how to get the ITC’s view on it, but with keeping in mind that the ITC cannot lobby Congress or officially set forth a position. If we could determine unofficially what the ITC thinks would be best, we should set forth and support that position. C. Preliminary Vote Members agreed that there are essentially two issues to decide with respect to this issue: (1) amend or not amend (d)(2) and instead add new section (d)(3); (2) whether the EPROM factors should be added in (d)(3). A preliminary vote was held on these two issues. D. Conclusions from Meeting The committee members agreed that we should try to send this draft proposal on out for a vote to the committee within the next 30 days, and then send it on up to the AIPLA Board for approval.

Scott announced that the committee is working on ideas/structures for future programs and requested that members offer any suggestions and ideas for future meetings, including possible other committees in which our committee could join. Tom provided the group with an interesting statistic that has recently been released: 15% of all patent cases that went to trial last year, went to trial at the ITC. Thus, our Committee is important, as it represents a large forum of patent cases. Kim announced that in the future, our committee would make every effort to have a dial-in number for our AIPLA Committee meetings for members who are not able to physically attend.

IV. Other Matters Tom reminded members to sign up for voting rights on the ITC Committee website.

Patent Law

Nicholas P. Godici (left photo) Barbara A. Fiacco, Vice-Chair (right photo) ___________________________________________

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he Patent Law Committee met on Thursday afternoon at the 2008 Spring Meeting in Houston. The committee had a panel discussion on competing views of what constitutes patentable subject matter under 35 U.S.C. §101 and speculated on the possible outcomes in the forthcoming decision from the Federal Circuit in In re Bilski. The panelists were Lance Reich of Woodcock Washburn, Jeff Ranck, Senior Attorney at Microsoft, and Wayne Sobon, Associate General Counsel and Director of Intellectual Property of the Legal Group of Accenture. Both Microsoft and Accenture have filed amicus briefs in In re Bilski.

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Mr. Ranck spoke first and outlined the issues present in In re Bilski. He then stated Microsoft’s position on patent-eligible subject matter as set forth in the Dell/ Miscrosoft Amicus brief. Specifically, that: 1. The requirement of Section 101 is that a patent-eligible invention be physical is satisfied by computer software-implemented processes and programmed computers operating pursuant to software instructions .

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2. “Useful, Concrete and Tangible” is not an independent test under Section 101. 3. Concerns with respect to claims that include only general recitations of physical “structure” are properly addressed under Sections 102, 103, and 112, not Section 101. Mr. Reich spoke second and advocated a very expansive view of what constitutes patentable subject matter, basically that a low threshold of “utility” was necessary in order meet the requirements of Section 101. Mr. Reich suggested that ideas that are very abstract are not properly rejected under Section 101, but rather properly rejected as indefinite under Section 112. Mr. Reich speculated that Bilski is almost exclusively focused on software and business method patents, but may also adversely impact patenting in other subject matter areas. He also noted other Federal Circuit cases that have recently been hostile to patentable subject matter, specifically In re Comiskey and In re Nuijten.

Mr. Sobon spoke third and outlined a broad patentability standard that would specifically protect innovative business methods. He stated that much of the wealth in the economy is now focused on the intellectual property protecting business-related processes, and to now remove patentability would put large portfolios— to include Accenture’s—at risk and upset the settled expectations of the inventing public. He advocated that Diamond v Diehr provides the correct standard to analyze the patentability of business method claims, and that a “physical transformation” is not required to be patentable subject matter under Section 101. He concluded his presentation with information on an organization and forum, NewEconomyPatents.org (www.neweconomypatents.org), that was recently created to advocate for an open and technologyneutral US patent system, and against the curtailing of the patent eligibility of business-related methods. Announcements of current and planned PLC projects were also made at the meeting.

Patent Litigation

Philip S. Johnson, Chair (left photo) Robert W. Payne, Vice-Chair (right photo) ___________________________________________ Please see Electronic and Computer Law.

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Public Education

Michael W. Piper, Chair (left photo) Evelyn H. McConathy, Vice-Chair (right photo) ___________________________________________ Vision: Educate the public and its representatives on IP and its value in cooperation with the rest of the IP community.

Theme & Story Development: The approved theme and logo are shown here:

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. 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. Substantive Tasks from Mid-Winter Meeting: To take the overall vision and place it in a manageable and scalable form, the current plan is to work in parallel on several levels of development. This committee needs to work with AIPLA and the various committees, groups, and resources within AIPLA to develop, refine, and select themes and stories and other material supporting those themes. At the same time the committee will begin 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. Creativity in Bloom has been chosen as the theme and initial sub-committees have been established to develop the channels of distribution with further efforts developing as interest and ideas grow. Finally, the Committee leadership with the help of the Board, the ExCo, and AIPLA Headquarters will reach out and leverage relationships in the IP Community to further their specific goals and missions. 2009 spring meeting issue

Now that the theme has been finally selected, the goal is to start integrating the theme to ongoing efforts such as the Youth Education effort and the nascent independent website. Distribution Channel Development: Initially, the Committee is focusing on three distribution channels (Youth Education (sub-committee chair Sal Anastasi), Corporate (new sub-committee chair to be named to interact with the Corporate Practice Committee), Internet (sub-committee chair Emily Johnson)) with others to follow as help and experience is gained and/ or as specific needs and volunteers arise (such as a proposed “Hill Day� below). The sub-committees 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 sub-committee under Sal Anastasi successfully presented a live demonstration with specific teaching examples and a citation list for finding additional materials to use in the committee session at the Spring Meeting in Houston. A refined and enhanced version of the presentation was made to spouses and children of AIPLA members at the Annual Meeting and significant additional feedback was aipla bulletin

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gathered and this resulted in improvements ofr notes for the lsides to help make the teaching more easily interactive with the students. The Spring Meeting was spent working on packetizing this work for availability for distribution by mid-Summer. More feedback and volunteers are being gathered to work towards a goal of continuing to develop additional resources and find ways to organize them for ease of use as well as get permissions from selected sources to incorporate their materials into pre-made packets for distribution to volunteers wanting to go into schools and make presentations about IP law. The sub-committee is also specifically working to interact with representatives of the PTO who came to the Annual Meeting and of 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 sub-committee has also started efforts to build resources for university students as well. In a recent development, the head of the PTO’s University Outreach program has inquired about finding ways to work together which may provide an opportunity to jump start efforts on the education at the University level. The current goal is to find volunteers to go along with the PTO representative on some of the outreach visits to campuses this fall as a pilot for larger cooperation. The Internet sub-committee now under Michael Stewart has launched an effort with the AIPLA Fellows coordinated by Freddie Park to set up and train a group of volunteer Fellows to begin interacting with Wikipedia definitions of key IP terminology in an attempt to provide a balanced viewpoint informed with the wisdom of the Fellows in those definitions. The Internet subcommittee in cooperation with Ken Nigon is also working on procedures to enlist volunteers to monitor many of the major IP blogs and identify areas of interest both for information and also over time for potential response. Finally, now that we have locked down approval for a theme, the sub-committee is working with AIPLA Headquarters, Committee Leadership, and the other sub-committees to define and build a separate web presence within AIPLA’s servers but with relevant alternative URL’s to publish the work of the committee and of its sub-committees to more general audiences as well as AIPLA members and friends. This effort may also provide the opportunity to leverage, display, and distribute the recorded speech of Judge Rader on the generational gift of IP and relevant accompanying materials both potentially on our own web site as well 94 

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as through possible posting on relevant blogs or other more mainstream collective internet sites. The Corporate sub-committee is again in transition as we work to best determine how to leverage the new leadership of the Corporate Practice Committee and other active and involved members of the Corporate Practice Committee to try and understand how best to spur, enable, and leverage the energy and interest of our members in corporate life and their companies. The Vice-Chair, Evelyn McConathy, is also working on a proposed project to develop procedures and support for a “Hill Day” potentially to occur in coordination with the WIPO World IP Day. While probably initially starting on a more limited basis, in the long run it is hoped to mature and grow to provide an opportunity for AIPLA members more generally to visit the District and their individual representatives (even representatives who are not key defined players in IP committees and sub-committees) to increase awareness and education on Intellectual Property and its value and impact to them and other constituents. The committee and HQ would help coordinate the effort of getting appropriate appointments as well as organizing a social event at or around HQ for those members who travel to participate. The goal would be to find a way to set this up on a recurring, possibly annual basis, at a time when the congressmen and women are likely to be reasonably available, but do so in a way which reduces possible negative impacts to specific AIPLA lobbying efforts and instead maintains a much more general, consensus, theme level approach to the interactions. Because of timing and change in leadership at WIPO, the committee is starting work now to lay ground work for a first Hill Day in 2010 on World IP Day. A sub-committee for Congress & the Courts identified previously may be created to help with this and future efforts in this channel or direction. The Committee is also working with Jeff Lewis to propose a program to help with the education of judges in restricted roundtable discussions facilitated among Judges regionally. Evelyn McConathy is also spearheading the committee’s potential involvement here which could also eventually move into the Congress & the Courts sub-committee. In a brief initiative, the committee worked with the PTO to reaffirm the use of the Director’s Office at AIPLA as an asset in responding to specific inquires by the press on specific issues in IP. Additionally the committee is organizing and working towards presenting collections of articles and papers which have been identified by various members and friends into a form which 2009 spring meeting issue


can provide a reference base or set of links to help respond to issues and “negative perceptions” which arise in the media or otherwise. In a similar vein, the Committee will present a free online seminar July 22 in cooperation with the Online Programs Committee. In the seminar Professor Lisa Dolak will discuss the appearance of IP in the media to better understand how IP is being reported on. Later presentations in small podcast video and paper/web-based form are being developed hopefully using an all-star cast each working on selected points to educate AIPLA members and friends on detailed facts and arguments to help them effectively rebut some of the negative perceptions about the IP system as they circulate through their respective communities and relationships. A pilot piece in this area is being worked on with AIPLA members at IBM on one of the negative perceptions identified. This could be presented online and could also include a paper for ease of reference. The results would also be posted in one of the Committee websites and snippets of video or audio could be posted more broadly on the internet or made available through more universally

distributed podcasts. Finally, the Committee has been asked to work in cooperation with Scientific American on an insert to a fall 2009 issue focused on “The Value of IP to Innovation.” Ultimately this suite of projects could fall under the proposed sub-committee for Press and the Media. 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 Licensing Executive Society, 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. The Committee is actively working with Jennifer RankinByrne at the PTO and Tom Filarksi at the Licensing Executive Society to find opportunities to cooperate towards our common goals.

Special Committee on Standards and Open Source Michele Herman, Chair (left photo) Douglas Luftman, Vice-Chair (right photo) ___________________________________________

W

e are pleased to announce that the new AIPLA Special Committee on Standards and Open Source had its inaugural committee meeting on May 14, 2009 at the Spring AIPLA meeting in San Diego, California.

standards and software respectively. This committee will also develop and share information on policies and current practices involving the use and promulgation of intellectual property rights incorporated in technology standards and open source software.

The committee’s ratified charter is as follows:

Sec. 3. This committee shall give attention to the foregoing and make recommendations to the Board in regard thereto.

Sec. 1. This committee shall consider the laws, regulations, and judicial and administrative decisions which affect collaborative technology development. In particular, it shall consider matters relating to industry standards and open source software issues insofar as they relate to intellectual property in any form. Sec. 2. This Committee shall develop and share information on policies and current practices for participating in standards setting organizations (SSOs) and software development communities in which participants share intellectual property rights to develop 2009 spring meeting issue

For those interested in getting involved, please register at the committee’s home page at: http://www.aipla.org/MSTemplate.cfm?Site=Special_ Cmte__on_Standards_and_Open_Source&CFID=268 2483&CFTOKEN=39291486 We look forward to working with those interested in our committee. aipla bulletin

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Special Committee on the FDA Myra H. McCormack, Chair (left photo) Freddie K. Park, Vice-Chair (right photo) ___________________________________________

T

he Special Committee on FDA Law was recently formed and held its first meeting in January 2009. Since that time we have added four subcommittees to our organization. These are: Jeff Lewis, Chair of the Paragraph IV Litigation Subcommittee gave a presentation entitled “Stays and DJs: An Update on Two Recent Paragraph IV Issues.” A copy of his PowerPoint presentation is available on the committee’s webpage under 2009 Spring Meeting Documents. The Biosimilar Subcommittee: Chair: Denise Kettleberger and Vice-Chair: Pam Politis. Pam Politis provided a presentation to the members at the Spring Meeting on US and Canadian biosimilars legislative developments. A comparison of the various pending bills was provided and Pam’s presentation is posted on the committee’s webpage. The FDA Law Committee and the Biotech Law Committee surveyed their members to solicit comments

on the recent draft report to the Secretary of Health and Human Services entitled: “Public Consultation Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests” 74 (52) Federal Register 11730 (March 19, 2009) (hereinafter SACGHS). The committees jointly drafted comments for consideration by the AIPLA Board which were approved and submitted to the NIH on the May 15, 2009 deadline. A copy of the comments is posted on the committee’s webpage. The FDA Clearance of Trade/Brand Names Subcommittee has recruited 21 members with the help of the Trademark Committee. Michael Lang, Chair of this subcommittee will be in charge of the committee’s meeting at the upcoming Annual Meeting and will present on the FDA’s clearance process. A representative of a firm that specializes in advising pharma/biotech/medical device clients on FDA brand name clearance has been invited to speak at the committee meeting.

Special Committee on Legislation Sharon A. Israel, Co-Chair (left photo) Rick D. Nydegger, Co-Chair (right photo) ___________________________________________

T

he Special Committee on Legislation is a special committee that was established to assist AIPLA with its advocacy efforts. The committee’s goals are two-fold: (1) As requested, this committee works with 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 96 

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for the Board’s consideration and possible adoption. 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. 2009 spring meeting issue


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AIPLA

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Have you seen our online Career Center? AIPLA | Professional Development - Career Center

The AIPLA Career Center helps job seekers in the intellectual property law industry find new employment opportunities. The job board allows members of the association, and site users, a place to post their resumes for free. Along with a resume bank, the site offers listings of career opportunities. To get started you need to first set up an account.

Search

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2009 AIPLA Spring Meeting Bulletin  

The publication of the 2009 Spring Meeting. Includes reports from Committees on their work and meetings held during the Meeting as well as l...

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