2014 Mid-Winter Institute eBulletin by AIPLA

BULLETIN American Intellectual Property Law Association

AIPLA 2014 Mid-Winter Institute

AIPLA Summer Road Show Series

Chicago, IL Arlington, VA

Bringing Quality CLE to a Town Near You! Patent Cooperation Treaty (PCT) Seminar: From initial filing to entries into the national stage

Remember to mark your calendars— Legal Secretaries & Administrators’ Conference

July 21-22, 2014 Denver, CO

on USPTO operations, services, and procedures

July 24-25, 2014 Arlington, VA

December 1–2, 2014 Arlington, VA

Practical Patent Prosecution Training for New Lawyers: with hands-on claim drafting workshops and prosecution tips from a litigator’s perspective

August 7–8, 2014 Arlington, VA

in this issue...

AIPLA Board of Directors........................................................................................................................... 4 President’s Report....................................................................................................................................... 6 Copyright Office Affairs.................................................................................................................................. 8 Upcoming AIPLA Online Programs.............................................................................................................. 12 Future Industry Events................................................................................................................................ 13 Thank You 2014 Mid-Winter Institute Sponsors.......................................................................................... 14 Photo Pages................................................................................................................................................ 17 Member News............................................................................................................................................. 32 Committee Reports: Content and Branding Committees Anti-Counterfeiting and Anti-Piracy �� 33 Copyright Law ........................................................ 33 Industrial Designs .................................................. 34 Trademark Internet................................................. 35 Trademark Law....................................................... 35 Trademark Litigation............................................... 36 Trademark-Relations with the USPTO �� 37 Education Services Committees Education................................................................ 38 International Education........................................... 39 IP Law Associations................................................ 40 Law Practice Management..................................... 42 Online Programs..................................................... 42 Professional Programs .......................................... 43 Professionalism and Ethics.................................... 43 Public Education..................................................... 44

Photo Credit: Dick Burgess (unless otherwise noted) 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)

International Committees AIPPI-US................................................................ 46 International and Foreign Law................................ 47 IP Practice in China ............................................... 47 IP Practice in Europe.............................................. 47 IP Practice in the Far East...................................... 49 IP Practice in Israel ................................................. 49 IP Practice in Japan................................................ 49 IP Practice in Latin America ................................... 50 Patent Cooperation Treaty Issues �� 52 Patent Treaties and International Policy �� 52 Trademark Treaties and International Law �� 52 US Bar–European Patent Office Liaison Council....................................................... 52 US Bar–Japan Patent Office Liaison Council....................................................... 53 US Bar–China State Intellectual Property Office Liaison Council....................................................... 53

Member Services Committee AIPLA Fellows........................................................ 54 Corporate Practice.................................................. 54 Diversity in IP Law.................................................. 55 Law Students.......................................................... 55 Membership............................................................ 56 Mentoring................................................................ 56 New Lawyers ......................................................... 58 Public Appointments............................................... 59 Women in IP Law................................................... 60 Patent Committees Biotechnology ........................................................ 62 Chemical Practice .................................................. 65 Electronic and Computer Law ............................... 65 Food and Drug........................................................ 68 Patent Agents ........................................................ 68 Patent Law.............................................................. 69 Patent Litigation...................................................... 71 Patent-Relations with the USPTO.......................... 72 USPTO Inter Partes Patent Proceedings �� 72 Specialized IP Committees Alternative Dispute Resolution............................... 74 Amicus.................................................................... 74 Antitrust Law .......................................................... 74 Emerging Technologies.......................................... 75 International Trade Commission............................. 75 Legislation .............................................................. 75 Licensing and Management of IP Assets �� 76 Mergers and Acquisitions ...................................... 77 Standards and Open Source ................................. 77 Trade Secret Law .................................................. 77

New Members............................................................................................................................................. 78

*For CLE from the Mid-Winter Institute, please go to: www.aipla.org/learningcenter/cle/Pages/2014-Mid-Winter-Institute.aspx 2014 mid-winter institute issue

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Officers

Bulletin

President Wayne P. Sobon Inventergy 19925 Stevens Creek Boulevard, Suite 100 Cupertino, CA 95014

Immediate Past President Jeffrey I.D. Lewis Patterson Belknap Webb & Tyler, LLP 1133 Avenue of the Americas New York, NY 10036

President-Elect Sharon A. Israel Mayer Brown LLP 700 Louisiana Street, Ste. 3400 Houston, TX 77002-2730

Secretary David P. Ruschke Medtronic CardioVascular 3576 Unocal Place Santa Rosa, CA 95403

First Vice President Denise W. DeFranco Finnegan Henderson Farabow Garrett & Dunner, LLP Two Seaport Lane Boston, MA 02210

Treasurer John H. Hornickel PolyOne Corporation 33587 Walker Road Avon Lake, OH 44012

Second Vice President Mark L. Whitaker Baker Botts, LLP 1299 Pennsylvania Avenue, NW Washington, DC 20004

Board of Directors

term expires october 2014

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Barbara A. Fiacco Foley Hoag LLP Seaport West 155 Seaport Boulevard Boston, MA 02210-2600

J. Michael Martinez de Andino Hunton and Williams Riverfront Plaza, East Tower 951 Byrd Street Richmond, VA 23219

Kevin Tottis Law Offices of Kevin Tottis Suite 1200 211 West Wacker Drive Chicago, IL 60606

Chen Wang E.I. du Pont de Nemours and Company Barley Mill Plaza 25/1208 4417 Lancaster Pike Wilmington, DE 19805

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term expires october 2015 W. Todd Baker Oblon Spivak McClelland Maier and Nuestadt, LLP 1940 Duke Street Alexandria, VA 22314

Amie Peele Carter Faegre Baker Daniels, LLP Suite 2700 300 N. Meridian Street Indianapolis, IN 46204

Bradley A. Forrest Schwegman Lundberg & Woessner, PA TCF Building 121 South 8th Street, Suite 1600 Minneapolis, MN 55402

Kevin H. Rhodes 3M Innovative Properties Company 3M Center PO Box 33428 St. Paul, MN 55133-3428

Karen S. Canady canady + lortz, LLP 3701 Wilshire Boulevard Suite 508 Los Angeles, CA 90010

Kenneth K. Cho Kim & Chang Jeongdong Building, 17F Jeongdong-gil, Jung-gu Seoul 110-784, South Korea

Jody H. Drake Sughrue Mion, PLLC 2100 Pennsylvania Ave. Suite 800 Washington, DC 20037

Manny W. Schecter IBM Corporation North Castle Drive NC-109 Armonk, NY 10504

Executive Director Q. Todd Dickinson AIPLA 241 18th St. S Arlington, VA 22202

General Counsel Bernard J. Knight, Jr. McDermott Will & Emery, LLP 500 North Capitol St. NW Washington, DC 20001

term expires october 2016

Board of Directors 2014 Meeting Dates & Locations July 23, 2014 · Arlington, VA October 22–25, 2014 · September 11, 2014 · Sonoma, CA Washington, DC

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Presidentâ&#x20AC;&#x2122;s Report by: Wayne P. Sobon, AIPLA President Coming soon!

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Register of Copyrights Maria A. Pallante called for review of US copyright law in the prestigious Manges Lecture at Columbia Law School on March 4, 2014, and in testimony before the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet on March 20, 2014. On April 24, 2014, Rep. Bob Goodlatte, chair of the Judiciary Committee, announced his intention to undertake a comprehensive examination of the law in a speech at the Library of Congress celebrating World Intellectual Property Day.

Subcommittee Conducts January Hearing on Scope of Copyright Protection On January 14, 2014, the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet conducted a hearing on copyright protection. Entitled “The Scope of Copyright Protection,” the hearing was another in a series of the Subcommittee’s review of US copyright law. A capacity crowd was in attendance.

Four witnesses testified: Sebastian Holst, representing PreEmptive Solutions and the Association for Competitive Technology; John McCoskey, executive vice president and chief technology officer with the Motion Picture Association of America; Paul Misener, vice president for global public policy at Amazon.com; and David Sohn, general counsel and director at the Center for Democracy and Technology.

continued Conyers. He said that the former ranking member, Melvin Watt, who has since been appointed to the position of head of the Federal Housing Finance Agency, sent a letter to the Office in December requesting a study of the making available right together with recommendations for Congress. The study is to examine in particular how American consumers fare under the current law in the context of digital on-demand transmissions and how the competitiveness of US technologies can be strengthened in the global marketplace.

Subcommittee Chairman Howard Coble cited the issues on which testimony would be received, including expansion of The House Judiciary Committee’s Subcommittee on Courts, the exclusive rights granted by copyright to include a making Intellectual Property, and the Internet has conducted several available right. He noted that David Nimmer has updated his hearings beginning in May 2013. treatise to say that filesharing, a type of making available, is infringement. November Hearing Continues Copyright Law Review Representative John Conyers said in an opening statement, On November 19, 2013, the House Subcommittee on Courts, “The hearing today provides an important opportunity to Intellectual Property, and the Internet conducted a hearing on consider various provisions of copyright law and to examine “The Rise of Innovative Business Models, Content Delivery whether the law continues to protect creators and promote Methods in the Digital Age.” The Committee members heard innovation in light of developing technologies that were not testimony from four witnesses as part of an ongoing series of contemplated when these provisions were originally enacted. hearings to review the US copyright law. There are several factors that we should keep in mind, In his opening statement, Chairman Howard Coble said including the making available right, which gives copyright that Americans have more access to more content than at owners the exclusive right to authorize the manner and terms any time in history. One reason for this plethora of content to make their content available to the public.” The law does is that “our nation’s intellectual property laws are designed not need to be changed with regard to the making available to reward those who invest their time and resources into right, he said, because existing law already includes this right, the development of original works of intellectual property.” and the United States is party to certain international treaties The Internet, he said, simultaneously creates new business that require the right. models while destroying old ones. “We should consider guidance from the Copyright Office,”

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Those testifying included Patricia Griffin, vice president and general counsel, American National Standards Institute; James Love, director, Knowledge Ecology International; Glynn Lunney Jr., McGlinchey Stafford professor of law, Tulane University School of Law; Carl Malamud, president, Public.Resource.Org.; David Nimmer, of counsel with Irell & Manella; and Mark Schultz, associate professor of law and director of faculty development, Southern Illinois University School of Law.

University of Georgia; Naomi Novik, author and cofounder of the Organization for Transformative Works; and Kurt Wimmer, general counsel, Newspaper Association of America. PRIORITIES, POLICY, AND SPECIAL PROJECTS The Copyright Office moved toward completing goals set forth in Priorities and Special Projects of the United States Copyright Office, 2011–13, available at www.copyright.gov/ docs/priorities.pdf.

Copyright Office Releases New Report on Resale House Subcommittee Looks at Fair Use Royalties The House Subcommittee on Courts, Intellectual Property, On December 13, 2013, the Copyright Office publicly and the Internet continued its rigorous review of the US released a report on the issue of resale royalties for visual copyright law with a hearing on “The Scope of Fair Use” on artists, or the “droit de suite.” The report was requested by January 28, 2014. Congressman Jerrold Nadler and Senator Herb Kohl in 2012, and is an adjunct to the Office’s 1992 report on the same Chairman Howard Coble said that fair use, which was topic. incorporated into US law in 1976 and has an important role in our copyright system, has been at the center of The Copyright Office has concluded that certain visual artists many disputes. The strength of fair use, he said, is that it is may operate at a disadvantage under the copyright law relative somewhat ambiguous, leaving the courts with the discretion to authors of other types of creative works. Contrary to its to clarify what is and what is not fair use. This ambiguity 1992 report, the Office is supportive of further congressional is also its greatest weakness, particularly in the digital era exploration of a resale royalty at this time. It also supports because new technologies develop far faster than disputes exploration of alternative or complementary options that may are resolved in the courts. “ take into account the broader context of art industry norms “It is true that fair use can be very controversial,” he said. and art market practices, for example, voluntary initiatives or best practices for transactions and financial provisions In his opening statement, Representative John Conyers said involving artworks. The report reflects the diversity of public that the hearing provided an important opportunity to examine comments received by the Office over the past year, and the scope of the fair use doctrine. “Fair use is an affirmative makes a number of observations and recommendations that defense against infringement under certain criteria. I generally Congress may wish to consider in its deliberations. believe that fair use is working as intended,” he said. “Current law, while not perfect, provides reliable guidance to copyright Some seventy countries have enacted resale royalty holders,” but we should reexamine the application of the provisions in their laws, over thirty of them since 1992, transformative use standard, which has become all things to including the United Kingdom, which is home to one of the all people. world’s most significant art markets. Bob Goodlatte, chairman of the House Judiciary Committee, in his opening statement said that fair use is a crucial component of our nation’s copyright law system. While there is no doubt that flexibility in our copyright system is beneficial, he continued, certainty with regard to our legal system is just as beneficial. Four witnesses testified. They included June Besek, professor and executive director of the Kernochan Center of Law, Media, and the Arts at Columbia Law School; Peter Jaszi, professor and faculty director of the GlushkoSamuelson Intellectual Property Law Clinic at American University Washington College of Law; David Lowery, singer, songwriter, and lecturer, Terry College of Business at the 2014 mid-winter institute issue

The full report is available at www.copyright.gov/docs/ resaleroyalty/usco-resaleroyalty.pdf. Copyright Office Requests Public Comment on Proposed Key Elements of Reengineering the Documents Recordation Function; Schedules Public Meetings The Copyright Office requested public comment on proposed key elements relevant to reengineering the function of recording documents pertaining to copyright pursuant to 17 USC. section 205 (79 FR 2696). The Office also announced a series of public hearings on these elements (79 FR 6636). The elements have been developed with the aid of previous comments obtained during the Office’s two-year special projects process, particularly the special project on technical upgrades to registration and recordation functions. View that aipla bulletin

project’s notice of inquiry and resulting comments at www. copyright.gov/docs/technical_upgrades/. In particular, the Office is seeking comment and holding public hearings on the following elements: (1) a guided remitter responsibility model of electronic recordation; (2) the use of structured electronic documents that contain their own indexing information; (3) the linking of recordation records to registration records; (4) the use of standard identifiers, and other metadata standards, in recorded documents and the catalog of such documents; and (5) potential additional incentives to record documents pertaining to copyrights. Comments were due on or before March 15, 2014. The dates for public hearings on the east and west coasts were March 25, 26, and 28, 2014. Office Administrators Describe Status of Special Projects In a December 2013 Copyright Office staff meeting, the Register and Office administrators discussed the status of initiatives announced in Priorities and Special Projects of the United States Copyright Office. The Register said that findings and recommendations from the work carried out under the document will inform the Office’s future direction.

Updating regulations, as appropriate, is the second phase of the Compendium revision, for example. Similarly, the Office’s Website will soon unveil a new, more modern look, followed by a second phase of redevelopment that will address the underlying architecture of the site. The first phase of reengineering the system for recording copyright-related documents, which is well under way, will move documents recordation away from dated legacy systems to the electronic Copyright Office. In a second phase, the Office will consider broader questions, such as what types of copyright-related documents should be submitted for recordation. Regarding the Office’s project to digitize historical records from 1870 to 1977, the senior advisor reported that the Office scanned 8.7 million catalog cards in fiscal 2013, bringing the total number of cards digitized to 31.2 million. He also informed staff that the Office proposed a new fee schedule to Congress in November took effect around April 1, 2014.

Public Outreach and Copyright Education The Register initiated a lecture series in 2011 titled Copyright Matters. On December 4, 2013, the Office hosted lawyers Robert Clarida and Thomas Kjellberg, who recapped important The Register explained a plan for reorganizing the Office’s copyright cases from 2013 in the Coolidge Auditorium of the Information and Records (I&R) Division into two units, one Library of Congress. Each year, the pair coauthor a review of focused on public information and outreach, the other on copyright decisions published in the Journal of the Copyright copyright records and the building of a secure repository for Society of the USA, and they deliver the review orally at the them. Dividing I&R based on these functions will allow the society’s annual meeting. Office to provide services more effectively to the public, she said. On January 29, 2014, the Copyright Office celebrated the Dramatists Guild’s centennial. Maria A. Pallante, Register The Register also reported on the completion of a draft of Copyrights, introduced representatives of the guild at revision of the Compendium of Copyright Office Practices. the year’s first Copyright Matters lecture. She thanked The draft is under review by outside legal groups, she said, the Dramatists Guild for its “storied participation in the and a beta version will be posted on the Office’s Website for development of American copyright law.” public comment. A volunteer trade association, the guild is not a union. It To upgrade the Office’s technical work-processing systems, began as a Subcommittee of the Author’s League but became the Office solicited comments about current capabilities and independent in 1911. Its Minimum Basic Agreement between future possibilities, the Register said. The comments reveal producers and playwrights, still in use today, established that constituents want a better user experience, improved terms and conditions for the performance of plays and public records, and capabilities like cloud computing, among solidified authors’ rights to royalties. other enhancements. The Register noted that staff have been maintaining legacy systems and fixing problems with Speaking were Stephen Schwartz, president and author of the online registration system. But she said the Office is also Wicked and Pippin, plays that are now on Broadway; Ralph “thinking big” about ways to handle digital content in the Sevush, executive director of business affairs for the guild; future, given the rapid expansion of digital media. Gwydion Suilebhan, regional representative of the guild, playwright, and writer for screen, print, and blogs; and Doug A senior advisor to the Register offered details about select Wright, secretary of the guild and Pulitzer Prize winner for his special projects from the two-year work plan, explaining play I Am My Own Wife. that many of the projects will be implemented in phases. 10

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On February 25, 2014, to mark the 100th anniversary of ASCAP, the American Society of Composers, Authors, and Publishers, the Office hosted a Copyright Matters event exploring the history and future of composers, authors, and music publishers. In addition to live music, the presentation featured two speakers: ASCAP’s president and chairman, Paul Williams (“Love Boat” theme; “Rainbow Connection”; “We’ve Only Just Begun”), and Jimmy Webb, ASCAP’s vice chairman (“By the Time I Get to Phoenix”; “MacArthur Park”; “Wichita Lineman”; “Up, Up, and Away”). Former White House press secretary and political and media analyst Dee Dee Meyers moderated the discussion. DOMESTIC AND INTERNATIONAL OUTREACH The Register delivered the Christopher Meyer Memorial Lecture at George Washington University on November 20, 2013. Titled “The Next Generation Copyright Office: What It Means and Why It Matters,” the lecture described the Office’s achievements over the past two years and explored ways the Office will need to evolve in the 21st century to support changes in the copyright system. The lecture was a bookend to a series of presentations the Register delivered in 2013, the first of which was the Horace S. Manges Lecture at Columbia Law School in March. Titled “The Next Great Copyright Act,” that lecture helped initiate a congressional review of copyright law discussed above.

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Upcoming Online Programs

Limelight: Its Effect on Multiple-Actor Infringement Liability

PTAB: Tactics for Launching a Patent Attack & for Surviving One

In a unanimous decision, the Supreme Court in Limelight Networks, Inc. v. Akamai Technologies, Inc., held that induced infringement of a patent under 271(b) requires a predicate finding of direct infringement under 271(a). The Supreme Court left open the question of whether a single party acting in concert with another party could incur 271(a) direct infringement liability, leaving the Federal Circuit’s Muniauction case law intact for now.

Learn the mechanics and substantive considerations for the new PTAB review systems. The panelists will discuss the available processes from both the initiating and responding parties’ perspectives, including (1) how to determine when it is appropriate to launch a post-grant attack, (2) which type of post-grant attack is appropriate between an Inter Partes Review (IPR) and Post-Grant Review (PGR), (3) how to prepare for the review,(4) and how a responding party can survive the attack.

Tuesday, July 8, 2014 12:30–2:00 pm, EST

High-value patents and patent applications directed toward mobile devices, internet technology, medical methods, healthcare IT, among other technologies may be affected by Limelight, as the use of inventions in those areas often involve multiple actors. Join our esteemed panel, including AIPLA President-Elect, Sharon Israel, and Scott Howard (co-author of AIPLA’s amicus brief), as they review Limelight and its practice implications. The panel will investigate concrete practice tips, including best practices for application and claim drafting, freedom-to-operate considerations, and litigation. Presented by: Sharon Israel, AIPLA President-Elect, Partner, Mayer Brown Scott Howard, Co-author of AIPLA’s amicus brief, Partner, Patterson Belknap Webb & Tyler, LLP

Thursday, July 17, 2014 12:30–2:00 pm, EST

Presented by: Erica Arner, Finnegan Henderson Farabow Garrett & Dunner, LLP Todd Baker, Oblon Spivak McClelland Maier & Neustadt, LLP Justin Oliver, Fitzpatrick Cella Harper & Scinto

PTA and PTE: Laws that Extend the Lives of Patents Thursday, July 31, 2014 12:30–2:00 pm, EST

Discussions will include current issues in patent term adjustment (PTA) and patent term extension (PTE); the changes to PTA calculation brought about by the America Invents Act (AIA) and by recent court decisions such as Exelixis v. Kappos; the effect on PTE of recent court decisions; proposed changes to the calculation of PTA that are being considered in pending legislation, such as the Goodlatte bill; and strategies for maximizing PTA and PTE in light of all these changes. Presented by: Robert W. Ashbrook, Dechert, LLP James J. Kelley, Eli Lilly Deborah Plehn-Dujowich (Moderator), Drinker Biddle & Reath, LLP

For CLE information, visit the “Live Web Based Programs” page in the Learning Center on AIPLA’s Website.

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Future Industry Events 2014 June 22–25 ACPC Summer Meeting, Chicago, IL

June 10–13 ECTA Annual Meeting Hamburg, Germany

August 4–9 ABA Annual Meeting San Francisco, CA

July 30–August 4 ABA Annual Meeting Chicago, IL

September 11–13 IPO Annual Meeting New York, NY

September 14–18 AIPPI World Congress, Toronto, Canada

September 27–29 IPO Annual Meeting Chicago, IL

September 16–22 AIPPI World Congress Milan, Italy

October 5–8 LES US- Canada Annual Meeting, San Francisco, CA

October 8–13 AIPPI World Congress Rio de Janeiro, Brazil

October 5–8 FICPI EXCO and Open Forum St. Petersburg, Russia

October 23–25 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

October 22–24 AIPLA Annual Meeting Marriott Wardman Park Washington, DC

October 23–26 LES US + Canada Annual Meeting Vancouver, BC, Canada

August 7–12 ABA Annual Meeting, Boston, MA September 7–9 IPO Annual Meeting, Vancouver, BC, Canada

November 5–8 FICPI Open Forum, Barcelona, Spain

2015 January 28–31 AIPLA Mid-Winter Institute, Hyatt Regency Orlando Orlando, FL February 4–10 ABA Midyear Meeting, Chicago, IL

October 25–28 LES US + Canada Annual Meeting New York, NY

2016 January 27–30* (tentative) AIPLA Mid–Winter Institute, LaQuinta Resort and Club Palm Springs, CA

April 12–15 LESI Annual Conference, Brussels, Belgium

February 3–9 ABA Midyear Meeting San Diego, CA

April 13–17 FICPI World Congress Cape Town, South Africa

February 12–14 Copyright Society of the USA Mid-Winter Meeting Nashville, TN

April 30–May 2 AIPLA Spring Meeting JW Marriott Los Angeles, CA

April 13–17 FICPI World Congress Cape Town, South Africa

May 2–6 INTA Annual Meeting San Diego, CA June 6–9 Copyright Society of the USA Annual Meeting Newport, Rhode Island

October 27–29 AIPLA Annual Meeting Washington, DC

2017 February 1–7 ABA Midyear Meeting Miami, Florida May 6–10 INTA Annual Meeting Vienna, Austria August 10–15 ABA Annual Meeting New York, NY September 17–19 IPO Annual Meeting San Francisco, CA September 17-19, 2017

May 18–20 AIPLA Spring Meeting Minneapolis, MN May 21–25 INTA Annual Meeting Orlando, FL

*For CLE information, visit: www.aipla.org/learningcenter/cle 2014 mid-winter institute issue

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Thank You to Our AIPLA 2014 Mid-Winter Institute Sponsors Bronze Carter, DeLuca, Farrell & Schmidt, LLP Co-Sponsor: Thursday Dinner & Entertainment

Mayer Brown LLP Co-Sponsor: Opening Night Reception

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Co- Sponsor: Women in IP Law Committee Breakfast

McDermott Will & Emery LLP Sponsor: Corporate Practice Breakfast

Fitzpatrick Cella Harper & Scinto Sponsor: Friday Lunch Reception

Patterson Belknap Webb & Tyler LLP Sponsor: Thursday Lunch Reception

Global Patent Solutions, LLC Co-Sponsor: Opening Night Reception

Perkins Coie Sponsor: Thursday AM Break

Honigman Miller Schwartz and Cohn, LLP Co-Sponsor: Women in IP Law Committee Breakfast

Schwegman Lundberg & Woessner, PA Sponsor: Wednesday New Member/First-Time Attendee Reception

Hunton & Williams LLP Co-Sponsor: Thursday Dinner & Entertainment

Sughrue Mion, PLLC Co-Sponsor: Thursday Dinner & Entertainment

Kim & Chang Co-Sponsor: Opening Night Reception Marks & Clerk LLP Co-Sponsor: Opening Night Reception

Pearl Grant Patent Services Co-Sponsor: Opening Night Reception

Inventergy Partial Sponsor: Cyber Café

Henderson Legal Services Co-Sponsor: Thursday Dinner & Entertainment

McAndrews Held & Malloy, LTD Sponsor: Tournament Golf Balls

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IP Practice in Japan Pre-Meeting Co-Sponsors Borden Ladner Gervais LLP Carter, DeLuca, Farrell & Schmidt LLP Red Chalk Group LLC Nutter McClennen & Fish LLP Orrick Herrington & Sutcliffe LLP Osha Liang LLP

Pearne & Gordon LLP Pepper Hamilton LLP Smart & Biggar/Fetherstonhaugh Sughrue Mion PLLC Westerman Hattori Daniels & Adrian, LLP

Thursday Committee Expo Sponsors Banner & Witcoff Carlton Fields Jordon Burt Design IP Delos, LLC Drinker Biddle & Reath, LLP Duane Morris, LLP Finnegan Henderson Farabow Garrett & Dunner, LLP FrankADR Garfield Goodrum Design Law Kelly IP, LLP

LECLAIRRYAN McAndrews Held & Malloy, LTD Nixon Peabody Oppedahl Law Firm, LLC Patterson & Sheridan, LLP RatnerPrestia Smith, Gambrell & Russell, LLP Stites & Harbison, PLLC Sughrue Mion, PLLC

Friday Committee Expo Sponsors Bracewell & Guliani CCPIT Patent & Trademark Office China Patent Agent (H.K.) Ltd. Creativity in Bloom Dannemann Siemsen Drinker Biddle & Reath, LLP Finnegan Henderson Farabow Garrett & Dunner, LLP Fildes & Outland, PC Fish & Richardson Fitzpatrick Cella Harper & Scinto Goldstein Patent Law

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Kirby Eades Gale Baker The Law Offices of Joseph F. Murphy Novak Druce Connolly Bove & Quigg, LLP NTD Intellectual Property Attornys Panawell & Partners, LLC Peksung Intellectual Property RatnerPrestia Sanford T. Colb & Company Schiff Hardin, LLP Shumaker & Sieffert, PA Sughrue Mion, PLLC

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Intelligence @ work

AIPLA 2014

Mid-Winter Institute Leadership

Wayne P. Sobon – President Phillip Petti – Program Chair

Sharon Israel – Officer in Charge

Karen S. Canady – Program Vice Chair

Q. Todd Dickinson – Executive Director 2014 mid-winter institute issue

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Distinguished Speakers

Clockwise, from top left: The Honorable Andrew Gilford, Judge, US District Court, Central District of California; The Honorable Mark Hornak, Judge US District Court, Western District of Pennsylvania; Michele K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Rob Doerfler, and Patrick McBride (center).

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Distinguished Speakers

Clockwise, from top left: Cynthia Raposo; Vineet Kohli; Scott Ryan; the Friday Plenary Panel of: Joseph Melnik, Naomi Abe Voegtli, Daniel McGlynn, Mark J. Gorman, Mark Campagna, and Jeremy K. McKown; Kevin Rhodes, and Colene H. Blank (center).

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New Member/First-Time Attendee Reception

AIPLA would like to thank the sponsor of the New Member/First-Time Attendee Reception: 20â&#x20AC;&#x192;

Opening Night Reception— “Cowboys and Coyotes”

AIPLA would like to thank the co-sponsors of the Opening Night Reception:

Thursday Committee Expo

AIPLA would like to thank the sponsors of the Thursday Committee Expo:

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Oppedahl

GARFIELD GOODRUM, DESIGN LAW

Patent Law Firm

| LLC

Friday Committee Expo

AIPLA would like to thank the sponsors of the Friday Committee Expo:

Corporate Practice Breakfast

AIPLA would like to thank the sponsor of the Corporate Practice Breakfast: 24â&#x20AC;&#x192;

Women in IP Law Breakfast

AIPLA would like to thank the sponsors of the Women in IP Law Breakfast: â&#x20AC;&#x192; 25

Thursday Luncheon Reception:

AIPLA would like to thank the sponsor of the Thursday Luncheon Reception: 26

Friday Luncheon Reception:

AIPLA would like to thank the sponsors of the Friday Luncheon Reception: â&#x20AC;&#x192; 27

Friday Dinner & Entertainment— “A Native American Experience”

AIPLA would like to thank the co-sponsors of the Friday Dinner & Entertainment:

Golf Tournament— Devil’s Claw Course

AIPLA would like to thank the sponsors of the Tournament Golf Balls:

More Meeting Photos:

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Member News Retirement

New Position

Paul F. Prestia

Jason M. Rockman

Congratulations, Paul, upon completion of a very highly successful career in patent law and your retirement from your firm, Ratner Prestia! Paul is one of many highly successful patent lawyers to graduate from the Georgetown University Law Center; he was the senior and name partner in Ratner Prestia.

Bass, Berry & Sims PLC is pleased to announce that Jason M. Rockman has joined as Counsel in the firm’s Washington, DC office. Previously an associate at Dickstein Shapiro, the addition of Rockman bolsters the firm’s intellectual property and technology practice.

Paul was a key leader of the American Intellectual Property Law Association in the latter part of the twentieth century; he was elected as a Founding Fellow of the Association.

“Jason’s commitment to delivering the best results based on his clients’ needs is representative of the firm’s values,” said John Kelly, Managing Partner of the firm’s Washington, DC office. “His expansive experience with intellectual property matters and deep technological background strengthen the firm’s ability to serve our clients’ business objectives.” Rockman focuses his practice on patent litigation and client counseling, including patent preparation and prosecution, portfolio management and transaction guidance. He has represented clients before various US district courts, the US International Trade Commission (ITC) and the US Court of Appeals for the Federal Circuit. He also is a member of the American Intellectual Property Law Association’s Inter Partes Patent Proceedings and Litigation Committees. Rockman received his undergraduate degree from Lehigh University and his law degree from the Benjamin N. Cardozo School of Law at Yeshiva University.

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2014 mid-winter institute issue

Committee Reports January 29–February 1, 2014 Mid-Winter Institute

In 2013, we organized our Committees into “Groupings” to encourage collaboration and information sharing. Their reports are presented below by Committee Groupings. The Groupings are: Content & Branding, Education Services, International, Member Services, Patents, and Specialized IP and Policy. At the Mid-Winter Institute, we had the unique opportunity to hold a “Committee Expo.” Committee leadership and members worked tirelessly preparing for the Expo, so you may notice some have chosen not to include Committee Reports in the Mid-Winter Institute eBulletin. Be sure to check out photos of the events on page __. Look for more news on the exciting things they’re accomplishing in the 2014 Spring Meeting eBulletin!

Content & Branding Committees Anti-Counterfeiting and Anti-Piracy Chair: Toni Y. Hickey Vice Chair: Gail E. Podolsky

Projects:

Plans for stated meetings: We held a substantive Committee meeting and educational sessions at the 2014 Spring meeting on important copyright issues, such as copyright review efforts in Congress, the Department of Commerce Green Paper, and developments in copyright litigation. Plans for coordination between stated meetings: The leadership plans to have scheduled calls to plan Committee work. In addition, the Committee is active in number of initiatives that require regular communications and discussions at the leadership and Committee-wide level.

The Committee has no business to report.

Chair: Stefan Mentzer Vice Chair: Matthew Wagner

Vision, Mission and Values The Copyright Law Committee seeks to increase the interest and involvement of AIPLA members in copyright law and to improve copyright policy, legislation, and jurisprudence by working directly with the US Copyright Office and other government agencies and by providing input to Congress and the courts. 2014 mid-winter institute issue

Advocacy: The Committee is actively involved in several Advocacy areas: Copyright review: Congress is holding a series of hearings on whether and how to reform the Copyright Act. The Committee has covered these hearings and reported to the Committee and others with summaries. To the extent possible, the Committee will offer input to the US Copyright Office on these hearings. Green Paper: The Department of Commerce Internet Policy Task Force has authored a “Green Paper” that analyzes current copyright policy, makes recommendations for substantive reform in a number of areas, and requests further input from the public. The Committee is engaged in the Green Paper process, having attended one round table forum in Washington DC, circulating summaries of the issues, and preparing post-hearing comments (which were ultimately submitted by AIPLA on January 17, 2014). We plan to prepare a digest of the Green Paper as a resource for AIPLA members and to assist the AIPLA Board during the copyright review process. We will continue to focus on the development of substantive policy recommendations by AIPLA. aipla bulletin

Amicus briefing: Supreme Court granted cert. in the Petrella case on the equitable defense of laches, and AIPLA submitted an amicus brief in the case. The Supreme Court has also granted cert. in the Aereo case. If AIPLA decides to participate, the Committee will be active in developing arguments for the brief. In addition, the Committee is actively monitoring other amicus opportunities. Member Service: The Committee is monitoring the copyright review hearings in Congress and has established a process and template for summarizing each of these hearings. These summaries are available as an educational resource for Committee members, AIPLA leadership, and AIPLA members generally. Global Outreach: The Committee will seek out opportunities to assist in and contribute to AIPPI-US involvement in copyright issues. The Committee will also continue its efforts to find ways to participate in WIPO activities and initiatives.

Industrial Designs Chair: Garfield Goodrum Vice Chair: Margaret Polson

Vision, Mission and Values: The Mission of the Industrial Designs (ID) Committee is as follows: Sec. 1. This Committee shall: (a) Consider design patent, trade dress and copyright laws, rules, regulations and judicial decisions applicable to the protection of industrial designs. (b) Consider new legislation pertaining to the protection of industrial designs. (c) Consider ways to strengthen the predictability and enforceability of industrial design rights. (d) Establish a liaison with the U. S. Patent and Trademark Office and Copyright Office to identify and solve problem areas encountered during prosecution of applications to register and/or patent industrial designs. (e) Report to the Board of Directors recommendations in regard thereto.

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Advocacy: The ID Committee continues to be very active in Advocacy, including considerable effort at regarding US accession to the Hague System for the International Registration of Industrial Designs. The Committee prepared and vetted a formal response to USPTO’s notice of rulemaking on Hague, which the Board adopted and submitted, and presented at USPTO’s Design Day on same. We had a good amount of informal back-and-forth with the USPTO, and also presented on the subject at the Annual Meeting. Most recently, the Committee has been very active and formed a Subcommittee for the Committee’s work on USPTO’s call for input on the Written Description requirement under Section 112 for design patents. USPTO hosted a roundtable re same on March 5, 2014, at which the Subcommittee CoChair gave a presentation on AIPLA’s position to date. The Committee has also been active in responding to an informal request made by USPTO during a presentation at our 2013 Annual Meeting Committee Meeting regarding registration certificate print quality, as the USPTO’s vendor contract is up for renewal/renegotiation. We’ve gathered Committee-input, communicated same informally to USPTO and the requester and continue to be active on the task. We were monitoring In re Owens, a design patent case at the federal circuit, awaiting a panel decision concerning continuation practice and reliance on unclaimed boundary lines. Third-party commentary suggests the case would major (“catastrophic”) significance. However, the US Federal Circuit subsequently denied rehearing, and the issue is dead. Member input suggests the holding is best limited to its facts (one can’t surreptitiously add a broken line boundary). A Subcommittee has worked in the past on making US design patents recordable with US Customs and Border Protection (CBP), and members met with that service last year along with other IP organizations. We will return to this work presently. Public Education The ID Committee has formed a Subcommittee for the Committee’s work on USPTO’s call for input on the Written Description requirement under Section 112 for design patents, which will post information on our site. Member Service We continue to think about increasing member use of our AIPLA Committee Website, and have sought a member to be our “web guru” and continue to implement that position. Previously, we opened the permissions for use of the calendar there. We’re also posting our materials for the various topics addressed above and new areas, e.g., Hague implementation, Sec. 112 Written Descriptions, DP recordation at Customs, soft protection of designs, etc. 2014 mid-winter institute issue

Global Outreach Subcommittee Co-Chair Richard Stockton represented AIPLA at the WIPO Standing Committee on Trademarks, Designs and Geographical Indications in March 2014 (SCT/31 – 3/17-21-2014), which reviewed draft articles and regulations for a new design law formalities treaty, country name and domain name protection and a filing system for geographical indications, including a proposal that WIPO undertake a world survey of same for the next SCT 32.

Trademark Law

Chair: Kristin Jordan Harkins Vice Chair: Jennifer L. Kovalcik

Subcommittees: Legislation Subcommittee, Richard Stockton, Chair Sec. 112 Written Description, Margaret Polson and Richard Stockton, Co-Chairs In re Owens, Richard Stockton, Chair Hague System, Margaret Polson, Chair and Richard Stockton, Co-Chairs Design Patent Recordation w/ CBP, Perry Saidman, Chair

Trademark Internet Chair: Mark V.B. Partridge Vice Chair: Janet M. Fuhrer

The Committee has no business to report.

Vision, Mission and Values: The mission of the Trademark Committee is to educate its members regarding changes in trademark legislation in the US and abroad; provide educational content and resources for AIPLA members; serve as a resource for other Committees in areas of trademark law; provide opportunities for meaningful volunteer work and serve as a training ground for future leaders of the organization. Advocacy The Trademark Committee is working with the Committee on Legislation to provide comments for Board consideration on companion bills from the House and Senate to amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms or other official insignia of the United States of America or any State or local government. The Committee is working with the Trademark-Relations with the USPTO Committee to assist the AIPPI-US Division on a study question for the AIPPI Congress in Toronto in September 2014 that relates to trademark law. The main issue is “The Basic Mark Requirement Under the Madrid System” and the Committee will consider and provide comments for Board consideration. The Committee has worked with the IP Practice in China Committee to provide comments which the Board has approved regarding the proposed Trademark Review and Adjudication Rules published in China. The Committee has worked with the Committee on Legislation to provide comments for Board consideration on a bill before the House relating to the treatment of trademarks in bankruptcy. The Committee works through its Amicus liaison on judicial Advocacy matters. PUBLIC EDUCATION The Trademark Committee held the Annual Trademark Boot Camp to in Arlington, Virginia on June 5-6, 2014. This

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year the boot camp expanded from a single day program to a two-day program based on continued requests from attendees. The first day focused on the basics of trademark law and prosecution, and was followed by a day focused on trademark disputes, including TTAB practice, investigations, cease and desist campaigns, and litigation topics. The Trademark Committee actively works with the Professional Programs Committee to develop programs relating to trademark law issues, including providing topics and speakers for the 2014 Spring Meeting and for the 2014 Annual Meeting. For the 2014 Spring Meeting, the Trademark Committee hosted a discussion on the Right of Publicity and how it relates to changing technology. Trademark Committee members participate in seminars and workshops on trademark law issues, reaching other members of the legal and business community not generally involved in AIPLA matters.

Social Media On-Line Programs Liaison Legislation False Advertising Technology/Microsite Rapid Response Liaison Amicus Liaison Professional Programs Liaison

Trademark Litigation Chair: Stephanie H. Bald Vice Chair: John Crosetto

Member Service The Trademark Committee serves the AIPLA membership by creating educational programs and proposing public comments for adoption by the Board. The Trademark Committee also serves its members through the use of the Committee Website, telephone conferences to discuss relevant issues, and at Committee meetings held during AIPLA’s Mid-Winter Institute, Spring Meeting and Annual Meeting.

The Committee has no business to report.

Increasing its membership is one of the Trademark Committee’s areas of focus. The Committee Expo at the 2014 MWI provided an opportunity for an outreach campaign to increase active involvement of existing members as well as recruiting efforts for new members. The Trademark Committee is working with the New Lawyers’ Committee to create a liaison position within the Committee to encourage new lawyers to become involved with Trademark Committee initiatives. Global Outreach Through liaisons with the Trademark Treaties and International Law Committee, the Trademark Committee engages with other Committees focused on international law matters. Trademark Committee members also engage in professional programming and reinforce the importance of considering international trademark issues. Subcommittees: Membership Communications Sports & Entertainment TM Boot Camp 2014 36

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Trademark-Relations with the USPTO Chair: Jessie N. Roberts Vice Chair: Vacant

Vision, Mission and Values The Trademark-Relations with the USPTO Committee has been active at and since the Mid-Winter Institute. The Committee had a booth at the Committee Expo that featured a slide show of its mission and activities. The give-away was a button that interlaced the AIPLA initials with those of the USPTO. If you see the Chair of the Committee, Jessie Roberts, at an AIPLA function, ask her for a buttonâ&#x20AC;&#x201D;there were a few left over from the Expo. The Committee helped draft comments on the USPTO proposal to allow amendments to the identification of goods and services that reflected changes in technology in post-registration actions. Jessie Roberts, the Chair of the Committee participated in a round table on this topic at the USPTO that was held on April 11, 2014.

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Education Services Committees Education

Chair: Ehab M. Samuel Vice Chair: Mickie A. Piatt

2014 Mid-Winter Meeting. The Committee participated in the Committee Expo, educating the attendees on the Committee’s mission and soliciting ideas to further improve the services we offer to our members. Special thanks to Don Cameron of Bereskin & Parr, adjunct professor in Toronto, for representing the Education Committee at the Committee Expo. Annual Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”). The Education Committee coordinates the AIPLA Patent Boot Camp in Arlington, Virginia. This popular program has been offered annually for many years, and includes instructional sessions and hands-on claim drafting workshops taught by experienced private and corporate practitioners. We have started a Subcommittee for planning of the 2014 Trademark Boot Camp. One way for Committee members to get involved would be to attend or serve as an instructor at the Boot Camp. If you are interested to get involved, please send an email to Myra H. McCormack at mmccorm1@its. jnj.com and Ehab Samuel at samuele@dicksteinshapiro.com who are coordinating the program. The 2014 Patent Boot Camp—Practical Patent Prosecution Training for New Laywers—is now scheduled for August 7–8, 2014, in Arlington, VA. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend the 2014 program. Additionally, we are currently proposing a ‘West Coast’ Boot Camp, and will announce details in the near future. Law Professor Subcommittee. The Education Committee continues to build on its commitment for expanding the law professor initiative. Our IP Law Professor Subcommittee provides a platform for present and future full-time and adjunct IP law professors to discuss resources available to IP law professors, best practices, techniques 38

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to get involved in teaching, and other issues of interest. Working together with Don Cameron, adjunct professor at York University, are Kristin Osenga, a full-time professor from the University of Richmond, and David Berry, a full-time professor from Cooley Law School. Please contact any of them with questions, ideas, suggestions, and expressions of interest: dcameron@bereskinparr.com, kosenga@ richmond.edu, berryd@cooley.edu. We have set up a LinkedIn®® page for the Law Professor Subcommittee. If you are interested in sharing ideas and connecting with fellow IP professors on our LinkedIn®® page, please send an email to Don Cameron at dcamaron@ bereskinparr.com. This has proven to be a good start for networking among adjunct professors and full-time IP professors. Please let us know if you are interested in additional information about this Subcommittee. Education Committee Newsletter. The Education Committee is excited to launch a new initiative for a Committee newsletter that can provide a forum for the exchange of information about teaching resources, pedagogy, and ideas in order to assist adjunct professors with ideas as well as to keep full-time faculty members in touch with the practice. This appears to be particularly important and timely in light of the recent trend in legal education to integrating experiential teaching and maintaining closer ties to practice in the classrooms, as well as to keep members apprised of the status of pending legislation and recent developments in Federal Circuit law. If you are interested in participating in, sharinge an opinion, or publishing in the newsletter, please email Donika Pentcheva (dpentcheva@wck.com) and Mickie Piatt (mvpiatt@kentlaw.iit.edu). 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 cross-section of attorneys. We are also planning various activities with other Committees such as the New Lawyers and Law Students Committees. If you are interested in learning about how you can get more involved in the AIPLA and the Education Committee, please send an e-mail to Ehab Samuel at samuele@ dicksteinshapiro.com and Mickie Piatt at mvpiatt@kentlaw. iit.edu.

2014 mid-winter institute issue

International Education Chair: Shannon L. Beech Vice Chair: Bea Koempel-Thomas

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Vereinigung von Fachleuten Rechtsschutzes (VPP )#

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Österreichische Vereinigung(ÖV) #

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AIPPI – Germany #

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Patentanwaltskammer #

des

Gewerblichen

English–speaking European and Israeli Countries Focus Countries: United Kingdom, Israel* Target Organizations: • Vision, Mission and Values International Education develops and produces educational programming for international audiences, primarily through online programs, on topics of US IP law and practice, thereby providing education for global members and reaching out to non-members. This education programming also provides AIPLA’s members who serve as speakers with an opportunity to reach out to and educate global colleagues. These programs can be put on in coordination with other international Committees (i.e. IP Practice in China, IP Practice in Europe, IP Practice in Latin America, International and Foreign Law) or upon contact from foreign IP practitioners and/or foreign sister organizations. SPECIFIC TASKS UPDATE AND GOING FORWARD: Our goals are to hold webinars in the coming months as outlined below. The Committee is currently working on organizing programs for the following jurisdictions and will be trying to establish relationships with the listed foreign sister organizations to AIPLA. Given that most of our work is done virtually, all communication between meetings is done through telephone calls, email and webinar training sessions. Key: + Countries with established relationships * Potential Outreach Countries # Organizations for which we are seeking assistance in establishing relationships @ Organizations with which we have established relationships German–speaking European Countries Focus Countries: Germany, Austria Target Organizations: •

UK Chartered Institute of Patent Attorneys @

Suggestions for other appropriate English–speaking European and Israeli IP associations are appreciated Arabic–speaking Countries Focus Countries: Unspecified Arabic Countries Target Organizations: •

Arab Society for Intellectual Property (ASIP) @

Spanish Language Program Focus Countries: Spain+, Mexico, Spanish–speaking Central and South American Countries Target Organizations: •

AIPPI-Spain@

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Spanish Association of Patent Attorneys @

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Asociación Interamericana de la Propiedad Intelectual (ASIPI) #

Suggestions for other appropriate Mexican, Spanish– speaking Central and South American Countries associations are appreciated English–speaking Pacific Rim Countries Focus Countries: Australia+, New Zealand+, Singapore+, Hong Kong*, Malaysia* Target Organizations: •

The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) @

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New Zealand Intellectual Property Association (NZIPA) @

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Association of Singapore Patent Agents (ASPA) @

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Malaysian Intellectual Property Association (MIPA) @

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Hong Kong Intellectual Property Society #

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Asian Patent Attorneys Association Hong Kong Group (APAA) #

German Association for the Protection of Intellectual Property (GRUR) #

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INVOLVEMENT OPPORTUNITIES The IE Committee partners with the organizations of foreign countries in bringing programs to audiences in identified jurisdictions. The IE Committee is seeking assistance in establishing relationships with the IP associations in these jurisdictions as set out below in order to provide programs in these jurisdictions. International Coordinators Each program has at least one international coordinator working with at least one local coordinator to develop a program. •

interface with sister IP organization(s)

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establish a topic of interest for a program

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establish mechanisms for marketing the program through the IP organization(s)

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act as the moderator for the program

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assist the local coordinator in handling technical aspects of a program

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train speakers and host the program

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trained by the Chair or Vice Chair of Online Programs to use the web platform that enables the online programs

Program and Speaker Development •

identify potential topics of interest in different jurisdictions

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find sponsors for the program since these program are provided to members of other organizations free of charge

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find speakers for the program (likely the sponsor of the program)

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in coordination with the international coordinator and the speaker, identify a date for the program

Local Coordinator Each online program has at least one local coordinator working with at least one international coordinator to develop and put on a program. •

connect with the international coordinator to assist in identifying a topic for a program

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be the primary person handling technical aspects of a program

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set up registration and handle related questions

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triage all questions about the program both prior to and during the program

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identify speakers/sponsor for the program if required

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train speakers and host the program

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trained by the Chair or Vice Chair of Online Programs to use the web platform that enables the online programs

Speakers US attorneys presenting in the local language. Programs are typically 1 to 1.5 hours in length with 2 or more speakers •

sponsor the program to cover program costs allowing all attendees free attendance

IP Law Associations Chair: Anthony M. Zupcic Vice Chair: Troy Grabow

Vision, Mission and Values: The IP Law Associations Committee is AIPLA’s outreach vehicle to all other IP law associations, both local and regional, throughout the United States. The Committee maintains a roster of the leadership of these other IP law associations and fosters cooperation and an exchange of ideas between the IP law associations. Advocacy: One of the tasks assigned to the Committee is to maintain the Amicus Notification Network, which is a Lyris List that enables AIPLA to distribute to member organizations its amicus briefs and similarly to receive copies of amicus briefs filed by other IP law associations that are members of the Network. During each Regional Roundtable, new members to the network are solicited. The network is useful not only because it enables AIPLA to share with other associations and its members AIPLA’s Advocacy work, but it also helps local and regional associations provide a further benefit to their members at no additional expense. The Committee works through Headquarters and the Amicus Committee to distribute in a timely fashion all AIPLA amicus briefs to the Amicus Network. Public Education: Regional Roundtables are also used as a vehicle to advise local and regional IP law associations of the efforts AIPLA is making in educating both the patent bar and the general public. 2014 mid-winter institute issue

In the latest series of Regional Roundtables, the Committee discussed the 2013 World IP Day, showed a short video of the events and solicited local interest in participating in the 2014 World IP Day. The latest series of Roundtables were also used to highlight the educational materials available at the creativity in bloom Website (www.creativityinbloom.org). Several roundtable participants have expressed interest in reviewing these educational materials developed by our Education Committee and will consider using them for local events. Member Service: The Roundtables also provide a vehicle for learning what benefits other organizations offer their members that might also be implemented by AIPLA in attracting new members. At the same time, AIPLA has offered local and regional associations AIPLA work product that the local and regional associations might not be otherwise able to offer to their members. The Amicus Network and AIPLAâ&#x20AC;&#x2122;s educational materials are two examples of such work product. In order to assist local associations obtain speakers for their programs, the Committee has also updated our Microsite to include recent AIPLA speakers who might be contacted to speak at these local programs. The Committee continues to coordinate with the New Lawyers Committee to provide them with local contacts as that Committee tries to set up local events that attract young attorneys. Subcommittees: Regional Roundtable Subcommittee, E-Mailer Subcommittee, Microsite Subcommittee, and Business Associations Subcommittee

additional Committee members. In addition, an e-mailer was sent to the local and regional IP associations prior to the Mid-Winter Institute. There was no Committee Meeting at the Mid-Winter Institute since the planners had decided to have a Committee Expo with all Committees being assigned a table for distributing materials to help explain what their Committees do. Troy Grabow prepared a map showing all the local and regional associations the Committee communicates with together with other materials for our table. At the Expo we offered $10 Starbucks gift cards for anyone who could identify an association not on the Committee contact list and we were able to identify nine such associations. Our Committee Meeting was conducted via teleconference after the Mid-Winter Institute, during which the leadership reported on our Expo table, that the Committee was waiting for the appointment of three new members and there was a discussion of potential topics for the 2014 Regional Roundtables. Between the Mid-Winter and Spring Meetings, the Regional Roundtable Subcommittee will prepare the slides and script for use during the 2014 Regional Roundtable, while the E-Mailer Subcommittee will prepare an e-mailer for distribution to all local and regional IP law associations prior to the Spring Meeting. At the Spring Meeting, the Committee will meet and finalize the 2014 Regional Roundtable script and will select the speakers and dates for the five Regional Roundtables.

Committee Meeting, Plans and Goals At our Annual Committee Meeting in October, Vince Garlock presented a legislative update, which took up most of our one-hour time slot. IP law associations from across the country were invited to attend either in person or to listen in and view the slides using GoToMeeting. About a half dozen local leaders participated either on line or in person. The Committee welcomed its newest members, Georgann Grunebach, David Tsai, Marylee Jenkins, and Ray Van Dyke, and thanked the outgoing members, Laura Zeman-Mullen, Sal Anastasi, Ken Nigon, and Ehab Samuel, for their excellent work over the years. The Committee also discussed starting a new Business Association Subcommittee that would be a liaison to the various non-IP business associations throughout the country. This idea is strongly supported by the AIPLA leadership. Between the Annual and Mid-Winter Meetings, the Committee leadership offered existing members the chance to switch from their assigned Subcommittee to the new Business Association Subcommittee and made proposals for three 2014 mid-winter institute issue

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Law Practice Management Chair: David A. Divine Vice Chair: Richard W. Goldstein

The Committee has no business to report.

Online Programs

Chair: Stephen E. Belisle Vice Chair: Jennifer M.K. Rogers

Mission: Our mission is to provide high quality, affordable education by means of online media. Our vision is to develop and prepare technological options and vendors to be able to work with the leadership and other Committees within the organization to identify, develop, and provide efficient and effective online program content to AIPLA as a whole and to their constituents and to facilitate others in AIPLA to utilize online media for program delivery. Online Programs provides substantial means to AIPLA to expand its role as an innovator, powerful advocate, and visible global leader in intellectual property, including through its interactive and timely Internet-based (and thus global) programming. Online Programs also provides AIPLA with the capacity to serve its members, public policy leaders, and the public. Projects: Online Programs takes advantage of each of the AIPLA stated meetings to meet face-to-face and via teleconference with as many Committee members and potential members as possible. During this time, the Committee reviews recently hosted webinars and upcoming webinars, solicits ideas for 42

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future programming, makes coordinator assignments, and addresses any logistical or programming issues. Members of the Committee also use stated meetings as an opportunity to recruit new webinar coordinators and identify programs held during each of the meetings that could be reproduced as online webinars. The Committee communicates with its members frequently between stated meetings. Indeed, the Committee hosts a monthly teleconference on the third Wednesday of each month to discuss the status of future webinars, make coordinator assignments, address any outstanding questions or issues, and solicit ideas for future webinars. In addition, the Committee leadership communicates with AIPLA headquarters on almost a daily basis concerning webinar programming. The Committee meets with its Board Liaison at stated meetings, and remains in communication therewith through email correspondence and the Committee’s monthly teleconference. Advocacy: The Committee provides AIPLA with means to directly connect with its membership and the public. While Online Programs itself does not engage in Advocacy, its capacity to communicate information to and among target groups via online programming provides AIPLA with an invaluable tool in today’s instant information world. Programs like Sidebar give the Association the opportunity to provide members with an inside look at Supreme Court oral arguments. Public Education: While Online Programs has historically provided excellent intellectual property programming for members of AIPLA and others, there is room to further leverage Online Programs to educate the general (non-member) public about the daily value of intellectual property and to funnel that programming to specific target groups. Thus, Online Programs is continuing to evaluate potential programming topics, audience groups, and cost-sensitive online delivery means in this regard, and coordinating with AIPLA regarding preferred practices for notifying such target groups of the online programming opportunities. Member Service: Online Programs provides substantial services to the members of AIPLA through two primary online platforms, namely Citrix GoToWebinars and webinars professionally hosted by KRM Information Services, Inc. (“KRM”). Online Programs also has facilitated two new series of webinars, namely “Sidebars,” which timely address high-profile oral arguments, and “Front & Center,” which provide the business perspective of IP. Webinars typically attract between about 50 and 350 registrations. Online Programs expects to host 2014 mid-winter institute issue

about 35-40 webinars in 2014, covering a wide range of subject matter to reach a broader scope of the membership of AIPLA. Online Programs also provides a substantial channel for the members of AIPLA to obtain needed CLE credits. The CLE requests, which have historically originated from at least 44 of the 50 US states, demonstrate the geographically diverse reach of Online Program’s efforts. Online Programs coordinates with several other AIPLA Committees to provide and continue to expand online programming subject matter and geographic reach. Most recently, Online Programs has been coordinating with the New Lawyers Committee to recruit new program coordinators and to provide the means to take geographically targeted (localized) programming under development by New Lawyers and offer that programming online. The Committee also has the following Subcommittees whose collective mission is to cooperate with other Committees of AIPLA to expand and enhance Member Services: 1. Citrix Training Subcommittee: charged with ensuring that Online Programs has a sufficient pool of coordinators trained to use Citrix GoToWebinar and capable of training others to use the platform, as well as with management and allocation of such coordinators to provide any required Citrix training coverage; and 2. Online Presence Subcommittee: charged with evaluating and improving the overall online presence and marketing of the programming of Online Programs, including through such channels as Facebook®, LinkedIn®, Twitter®, Blogs, and the AIPLA Website. Global Outreach: Online Programs provides AIPLA with Global Outreach through its online programming, which by its very nature is without boundaries (of course, time zones and language barriers affect the audience for any given webinar). Online Programs continues to coordinate with the International Education Committee to identify and develop relevant online programming for international audiences, and to increase AIPLA’s international membership.

Professional Programs Chair: Jacques L. Etkowicz Vice Chair: Michael L. Drapkin

Vision, Mission and Values: The Professional Programs Committee organizes the agenda and speakers for the AIPLA Spring and Annual Meetings with the objective of providing world-class IP programs by respected speakers and thought leaders. Member Service: The Professional Programs Committee is currently putting the finishing touches the 2014 Spring Meeting. The Professional Programs Committee is also in the process of organizing the 2014 Annual Meeting program. The agenda topics have been solidified with continued emphasis on the American Invents Act and its effect on the patent bar. Session coordinators were selected during our Committee meeting during the 2014 Mid-Winter Institute Meeting (on Thursday morning). Subcommittees: 2014 Annual Meeting Topic Subcommittee, Paik Saber, Subcommittee Chair.

Professionalism and Ethics Chair: Rodney K. Caldwell Vice Chair: Salvatore Anastasi

Initiatives: In order to expand the program offerings to the AIPLA membership, Online Programs holds monthly conference calls, which are open to Committee members, AIPLA Committee Chairs and Vice Chairs, AIPLA leadership, and the general AIPLA membership as a forum to discuss upcoming programs and to collaborate with other AIPLA Committees to define additional program offerings.

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The Committee has no business to report.

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Public Education

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Usage tracking (e.g., how many presentations are downloaded and following up on usage for constructive feedback)

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Social media communicating (e.g., Twitter® and Facebook®)

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Rapid Response interface and content dissemination of Rapid Response work product more generally

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AIPLA pre-existing content recovery and dissemination (review of AIPLA intranet and paper files for materials of interest or use to the general public)

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USPTO interface (e.g., for speaking opportunities, participation in programs, feedback on youth portion of USPTO web site and the like)

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Third party collaborations (e.g., Street Law, First, Small Business Administration, Anti-Counterfeiting Task Force, INTA)

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Youth presentations

World IP Day

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Young-adult presentations

We coordinated the following programs for World IP Day 2014:

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Adult presentations

Chair: Michael B. Stewart Vice Chair: Elise Selinger

USPTO Partnership Agreement The PTO continues to work on a proposed partnership agreement, but timing has been affected with some of the personnel changes at the Office. We hope to receive a working draft for consideration by the AIPLA sometime after the completion of World IP Day.

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Alexandria, VA

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Detroit, MI

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Atlanta, GA

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Minneapolis, MN

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Boston, MA

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New York, NY

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Boulder, CO

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Washington, DC/Capitol Hill

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Dallas, TX

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San Francisco, CA

Committee Growth Vice Chair—We are pleased to announce that Elise Selinger agreed to serve in the role of Vice Chair. Committee Subcommittees—Ideally, it would be highly desirable to have assistance of a number of Subcommittees with respect to a number of Subcommittees to carry out the goals of the Committee. Possible Subcommittees include the following:

In reviewing the Committee structure, it would be ideal to be able to leverage the efforts of other Committees within AIPLA to promote Public Education. Possible liaison relationships include the following Committees: •

Copyright § § Efforts have been made to encourage the USPTO to put copyright materials in each of the satellite offices and to make the materials of the Copyright Office more readily available to the public § § We get requests for a more neutral series of presentations concerning the importance of copyright law that is more balanced than that perceived to come from certain special interest organizations.

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Education—Identifying and making available preexisting materials of more general interest to the public.

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Patent

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Trademark § § The Public Education Committee is seeking greater involvement in the USPTO trademark expo from the Content & Branding Group. Discussions have begun with respect to this issue.

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World IP Day

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Trade Secret Law

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Creativity in Bloom Website

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Fellows

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Update Website look and feel/functionality

§ § Speakers

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Regularized content updating so that the site is “fresh”

§ § Pair with New Lawyers or Women in IP Law when appropriate in speaking to develop mentor/mentee

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relationships and provide more diverse point of view for audiences. •

New Lawyers/Women in IP Law § § Use enthusiasm to provide content to Website § § Speakers § § Pair with Fellows when appropriate in speaking to develop mentor/mentee relationships and provide more diverse point of view for audiences.

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International Education—See interest in Canada above re: World IP Day as well as our interaction with WIPO.

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IP Law Associations—We see many synergies here where a lot of our work product can be shared more broadly.

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Law Students—Basic education on intellectual property to develop interest in our profession.

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Membership—Bringing AIPLA to our members with local education and speaking opportunities in the communities where our members live.

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Online Programs—Educate our own members on the resources of the Public Education Committee that are available and possibly to use the infrastructure to educate the public directly through e-seminars.

Possible communication to the members highlighting available Public Education opportunities/resources.

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International Committees AIPPI-US

Chair: David W. Hill Vice Chair: Philip C. Swain

We have received the Working Guidelines on the four Toronto working questions. The following are the four Study Questions for Toronto: 1. Second Medical Use or Indication Claims 2. The Basic Mark Requirement under the Madrid System 3. Exhaustion Issues in Copyright Law 4. IP Licensing and Insolvency In addition, there is a fifth study question being considered in Toronto on the topic of “Prior User Rights.” A team of volunteers is working on each of the reports and drafts are expected to be completed in late March.

Vision, Mission and Values:

Advocacy:

The AIPPI-US Division serves as the US National Group of the international organization AIPPI (the “Association Internationale pour la Protection de la Propriete Intellectuelle”), an international federation of national groups of intellectual property practitioners from over 100 countries that has over 9,000 members worldwide. The AIPPI-US Division’s main mission is to work within the framework of AIPLA to participate in the activities of the AIPPI organization. Those activities include conducting comparative law studies of intellectual property laws, with the goal of proposing measures to achieve harmonization of those laws on an international basis, which are then supplied to the WIPO, the WTO, and, national patent and trademark offices around the world. AIPPI conducts annual meetings every year to discuss and reach agreement on these resolutions, and also conducts workshops and seminars on other international intellectual property comparative law issues. In formulating its position on these issues, the AIPPIUS Division coordinates its actions, positions, resolutions, and communications with the appropriate Committees and leadership of AIPLA, in accordance with AIPLA procedures.

As noted above, the AIPPI-US Division participates in comparative law studies in the larger international AIPPI organization on issues concerning harmonization of intellectual property laws. In that regard, the AIPPI-US Division generally advocates that the United States position or rule should be adopted when the international body agrees on a resolution for a harmonized proposal. When the AIPPI-US Division is developing its position on these issues, it seeks the guidance of the substantive AIPLA Committees which are responsible for the respective area of intellectual property law for each individual question that is being studied.

Projects:

The AIPPI-US Division will publish its reports on questions of comparative law that it has prepared. In addition, the annual meetings of the AIPPI international organization, which are open to all AIPPI members, include workshops and seminars on international intellectual property law issues. All AIPPI published materials are available on the AIPPI Website, www.aippi.org, or the AIPPI-US Website at www.aippi-us. org.

The AIPPI Toronto World Congress September 14-18, 2014 The AIPPI 2014 Toronto Congress is scheduled for September 14-18, 2014. This event promises to be one of the best AIPPI meetings in many years. Our AIPPI-US Division was singled out in Helsinki as the fastest growing group in the past year. Our goal is to reach 500 members by the Toronto Congress, and we are asking our members to recruit new members from their firms and companies.

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The AIPPI-US Division also expects that it may, from time to time, recommend that the AIPLA take positions in amicus briefs on issues that may affect areas in which its members may have an interest, such as international harmonization of intellectual property laws. The Division filed an Amicus brief on behalf of AIPPI in the US Supreme Court in the case of . Public Education:

During the AIPLA Mid-Winter Meeting, the Division participated in the Expo activity on Friday, January 31, 2014. The Division will also meet during the AIPLA Spring Meeting in Philadelphia.

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Member Service: The AIPPI-US Division will have meetings at each of the AIPLA regular stated meetings. It also makes available opportunities to all of its members to participate in preparing the United States reports on the comparative law studies for the international harmonization resolutions. All of its members also have the opportunity to attend the international meetings of the AIPPI organization, where they can attend the seminars and workshops as well as the discussions of the resolutions on international harmonization, and also provides members the opportunity to network with international companies and practitioners. In addition, there are several Subcommittees of the AIPPI-US Division which may join with other AIPLA Committees to make international trips or organize AIPPIUS Division trips where they can meet with counterpart AIPPI organizations in other countries. For example, the Asia-Pacific Subcommittee traveled to Japan, China, and Korea in November to meet with the AIPPI groups in those countries. That Subcommittee is coordinating its activities with the appropriate AIPLA international Committees. Global Outreach: As noted above, the principal activity of the AIPPI-US Division is Global Outreach, to work within the framework of the AIPPI international organization toward international harmonization of intellectual property laws. Our members attend the international meetings of the AIPPI international organization, and we have Subcommittees which promote visits from time to time with their counterpart AIPPI national groups in other countries, in cooperation with other AIPLA international Committees.

International and Foreign Law Co-Chair: Matt Adams Co-Chair: DeAnn F. Smith

IP Practice in China

Chair: Ying Tuo (not pictured) Co- Vice Chair: Patrick J. Coyne (not pictured) Co-Vice Chair: Zhun Lu

The Committee has no business to report.

IP Practice in Europe Co-Chair: Laura Brutman Co-Chair: Iris Mok

Mission: The IP Practice in Europe Committee seeks to inform our members, and members of AIPLA in general, of key developments in intellectual property law and practice in Europe, through the establishment and maintenance of relations with professional IP organizations whose members are expert in intellectual property law and practice in Europe. 2013 Annual Meeting: The Committee, together with the PCT Issues Committee, presented a two-hour CLE session.

The Committee has no business to report.

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The first hour was directed to Patentable Subject Matter in Europe - A Perspective on Computer Implemented Inventions and the Biotechnology Field. The speakers were Ilya Kazi of Mathys & Squire (London) and Andrew Bentham of J. A. Kemp (London). The second hour was directed to Upcoming Changes in PCT Procedures, and Amended Rule 36 EPC. Reinoud Hesper, Lawyer International Legal Affairs – PCT of the European Patent Office, discussed the EPO’s decision to amend Rule 36 EPC for filing divisional applications. He also discussed two upcoming changes to the PCT procedures at the EPO: aipla bulletin

(1) Top-up searches being performed in Chapter II PCT; and (2) Amended Rule 164 on non-unity and further searches upon entry into the European phase. Matthew Bryan, Director, PCT Legal Division, WIPO discussed recent and future developments in the PCT. Mid-Winter Meeting 2014: The Committee participated in the Committee Expo—“A World’s Fair of IP.” Annual Trip 2014:

a European team of advisors that, as members of EPLAW (European Patent Lawyers Association), have been at the forefront of the development of the new Court system. The questions will be embedded in representative case study. The advisor panel will explain the existing enforcement options as well as the additional options provided under the UPC. The questions to be addressed to the panel will cover the following aspects, crucial for a European strategy under the UPC:

The Committee conducted its annual visit to Europe the week beginning 10th March 2014. The trip included meetings with patent organizations such as the Chartered Institute of Patent Attorneys (CIPA), the Intellectual Property Lawyers’ Association (IPLA), and the Institute of Trade Mark Attorneys (ITMA) in London, Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI; National Company of the Patent Attorneys) and the Association des Praticiens du Droit des Marques et des Modèles (APRAM; Association of Practitioners and Trademark Law Models) in Paris, Patentenwaltskammer (Chamber of Patent Attorneys), European Patent Institute (EPI) and the European Patent Office (EPO) in Munich, and the World Intellectual Property Organization (WIPO) in Geneva.

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potential venues under the UPC (local, regional divisions, central divisions) and for national enforcement; criteria for forum shopping (applicable law, governing language, composition of the Court …);

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pre-trial evidence and discovery under the UPC and under national rules; cross border privileged issues;

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timing of actions under the UPC (local divisions, central divisions) and in national proceedings;

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remedies available under the UPC and in national law; and

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costs of enforcement proceedings under the UPC and in national proceedings.

Spring Meeting 2014:

CLE Session:

The Committee, together with the IP Practice in Japan Committee, will present a two-hour CLE program regarding the role of expert evidence in IP litigation. Expert evidence is a key factor in IP litigation; the role of the expert however varies significantly in various legal systems. The program will address these differences through a series of questions that will be answered from the perspective of different jurisdictions (Germany, UK, Netherlands), the new European patent litigation system UPC and the US.

The Committee will also present a two-hour CLE program regarding licenses in European patent litigation.

Annual Meeting 2014:

The questions to be addressed to the panel will cover the following aspects:

Plenary Session: The Committee will present a plenary session program regarding the UPC in the European patent litigation landscape. The Unified Patent Court (UPC) will add a further, litigation structure to the existing system of national litigation. In addition to the currently known and tested options for patent litigation in Europe (national enforcement, panEuropean enforcement in front of national Courts, opposition proceedings in front of the EPO) the UPC will thus provide a further option to patentees to enforce or invalidate patents. The panel will cover the strategic questions that US companies will have to consider when preparing a decision on enforcement or invalidation proceedings in Europe. The questions will be addressed by a US in-house counsel to 48

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Continuing the plenary session on the UPC in the European patent litigation landscape, this program will focus specifically on the roles of licenses in European patent litigation including the UPC. Licenses currently involve questions of national law and of European law. The UPC will add further procedural rules that may have an impact on the role that licenses play in patent litigation.

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license defense in patent infringement litigation (FRAND): the position of the European Commission, European Court of Justice and national practices; FRAND defense under the UPC procedural rules; impact of the FRAND defense on remedies requested by the patentee;

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impact of the UPC on license agreements (rules for opting out, use of the UPC vs. national law…);

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impact of bankruptcies on existing licenses; and

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impact of patent sales on enforcement under national law and under the UPC.

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IP Practice in the Far East Chair: Christopher J. Maier Co-Vice Chair: Kevin Kunzendorf Co-Vice Chair: Daniel Mulveny

The Committee has no business to report.

IP Practice in Israel Co-Chair: David R. M. Colb (not pictured) Co-Chair: William H. Mandir

The Committee has no business to report.

IP Practice in Japan Co-Chair: Christopher J. Fildes Co-Chair: Daphne C. Lainson

Institute (“MWI”)) each lasting for one and a half days as well as a week-long delegation visit to Japan, generally undertaken in April of each year. Prior to this year’s MWI, the Committee conducted a day and a half Pre-Meeting in which twenty presentations on current IP issues were presented. On January 28, 2014 CoChair Chris Fildes welcomed the attendees beginning a daylong meeting. Kaoru Kuroda on behalf of the Japan Patent Attorneys Association and Shoichi Okuyama, Vice President of AIPPI Japan, gave opening remarks. Presentations were made by members of the Committee, JPAA, and the Japanese group of AIPPI. After the first day of meeting, the Committee hosted a reception and dinner for the attendees. The Pre-Meeting continued for a half day on January 29th and afterward the Committee members and our Japanese colleagues played golf or went horseback riding. On Friday January 31, 2014, Co-Chair Chris Fildes together with past Co-Chairs Pam Crocker and John Johnson participated in AIPLA’s Mid-Winter Committee Expo highlighting the events and past successes of the Japan Committee over a twenty five year period. After the Expo, Chris Fildes conducted a one hour business session reflecting on the previous Pre-Meeting and upcoming Japan trip. The Annual April trip was held from April 7 through 10, 2014. It was a great success and is being reported in the Trip Report. Highlights of this trip include our third Women in IP Law meeting as well as our third seminar with JPAA in Osaka. The April meeting planning allowed our Committee members to participate in the FICPI Japan Kyoto Symposium held April 10 through 12, 2014 in Kyoto, Japan. The Committee continues to explore having expanded meetings in Japan with Japanese IP groups including the possibility of splitting the AIPLA delegation to meet with additional groups. The Committee currently has about 160 Active Voting Members. It is the Committee’s intent to increase active participation of its members, and to encourage joining of new members by:

Vision, Mission and Values: The Committee is maintaining a high-level of visibility through its interactions with key Japanese IP organizations to promote the exchange of information on significant IP developments in the US and Japan. These exchanges have historically occurred at two “Pre-Meetings” (prior to the October AIPLA Annual Meeting and the January Mid-Winter 2014 mid-winter institute issue

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posting more information on its web page; and

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taking advantage of the annual April trip to Japan to promote AIPLA memberships among the IP professionals working in Japan.

Finally, while historically the Committee has been focused on exchanging information with the Japanese IP organizations, the Committee is now increasing its focus on Advocacy, consistent with the AIPLA objectives. To that end, during our April 2014 Trip, the delegation had discussions with the JPO Director of International Affairs and judges of the Tokyo High Court. aipla bulletin

IP Practice in Latin America Co-Chair: Joaquim Eugenio Goulart Co-Chair: Robert Wells

Vision, Mission and Values: The IP Practice in Latin America Committee’s (“IPP-LatAm”) mission is to foster a better understanding of the complex differences among the numerous countries of Latin America by educating its members and the AIPLA body as a whole. IPP-LatAm works to this end by constantly reminding its members through its Committee programs, web postings, social networking and its annual trips that there are three distinct major languages spoken throughout Latin America (English, Spanish and Portuguese), not including the numerous indigenous languages that can be found in each country, and that each Latin American country is very unique in its culture, political system, history and of course its approach to the procurement of intellectual property. IPPLatAm fosters to bring these differences together within the best of its abilities and to assist IP Practioners and company executives throughout the world to better understand Latin America as a whole and in particular the procurement and enforcement of IP in the region. IPP-LatAm’s vision is to include IP Practioners from every Latin American country as members of the Committee and as members of the AIPLA community as a whole. IPP-LatAm’s values are identical to those of the greater membership of the AIPLA in its belief to the enduring power and importance of all areas of Intellectual Property for creating economic growth and prosperity for all of Latin America. Advocacy: The IP Practice in Latin America Committee is very committed to acting as advocates for furthering the understanding and development of IP systems in Latin America. IPP-LatAm works with many sister IP associations throughout Latin American to assist them in embracing common ideals and systems that are proven to work from other countries with more developed and longer established IP procurement systems. However, IPP-LatAm always remains cognizant of the unique cultural differences in each Latin American country and as well always remembers that just because a certain system works in one country, does not mean that it will necessarily work in any another Latin American country. 50

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IPP-LatAm looks to fellow AILPA Committees such as the International and Foreign Law Committee, the PCT Issues Committee, the various Trademark Committees, as well the international focused IPP Committees covering Japan, Europe and the Far East, to name just a few, for assistance, mutual cooperation and guidance. As well, IPP-LatAm has established a Liaison relationship with AIPLA’s Biotechnology and International and Foreign Law Committees to foster greater awareness and cooperation with these two important sister Committees. Still further, IPP-LatAm has established a strong working relationships with both USPTO IP attachés working out of the US Embassies in Mexico City (covering Mexico, Central America and the Caribbean) and Rio de Janeiro (covering all of South America). Public Education: The IP Practice in Latin America Committee is committed to the highest level of Public Education as it relates to IP procurement and enforcement in Latin American. As a means to this ends, IPP-LatAm will continue to work with a multitude of the other AIPLA Committees in sponsoring joint Committee sessions, especially at each year’s Spring and Annual Meetings. However, IPP-LatAm will not regulate itself to only working with other “internationally focused” Committees, but will strive to incorporate programs that are co-sponsored by a wide variety of the numerous AIPLA Committees so long as the educational program is helpful to the IPP-LatAm membership and the greater AIPLA community as whole. IPP-LatAm had a joint session during the Annual Meeting with PCT Issues Committee, IP Practice in the Far East Committee, the Arabian Practice Subcommittee, Patent Treaties and International Policy Committee and the International & Foreign Committee to discuss the “growing pains” of newly ascended and smaller PCT member states, such as Chile, Saudi Arabia and India (with invited speakers for each jurisdiction) and Matthew Bryan, Director from the PCT Legal Division of WIPO. Still further, IPP-LatAm has a Subcommittee called the “Subcommittee for the Maintenance of the AIPLA IPP-LatAm Website” which was established for the express purpose of providing the latest information to its Committee membership and the AIPLA membership as a whole in regards to the latest IP issues occurring in Latin America. And even further, IPP-LatAm now has a LinkedIn® sub-group page under the umbrella of the greater AIPLA LinkedIn® group, which is updated and managed by its “Subcommittee for the Development and Integration of Social Networking in Latin America.” Member Service: The IP Practice in Latin America is wholly committed to expanding its membership to include at least one, if not many, members from each Latin American country in the region. IPP-LatAm is also committed to including its members in its educational Committee programs by asking them to speak 2014 mid-winter institute issue

at any of the three annual meetings when their specific area of expertise fits within the programmed Committee session. Further, IPP-LatAm has formed Subcommittees to maintain both its AIPLA microsite and its newly started LinkedIn® subgroup page for the express purpose of keeping its members more informed with the most updated information in regards to important changes occurring in the IP world throughout the Latin American region. Still further, IPP-LatAm is actively pursuing AIPLA delegation speaking opportunities with its sister Latin American associations such as the Brazilian IP Association (or “ABPI”), the “Asociación Interamericana de la Propiedad Intelectual” (or “ASIPI”) and the “Asociación Mexicana para la Protección de la Propiedad Intelectual” (or “AMPPI”), to name just a few. Finally, IPP-LatAm is actively seeking AIPLA Board approval to establish Liaison relationships with sister IP organizations such as ABPI, ASIPI, AMPPI and AAAPI (of Argentina). Global Outreach: Each of the IP Practice in Latin America Committee’s Vision, Mission and Values as well its Advocacy, Public Education and Member Services will work in coincidence to provide a greater Global Outreach. Latin America, as whole, has become an important economic market to the world and we should expect to see IP procurement increase steadily each year throughout the region. IPP-LatAm intends to help foster a Global Outreach by planning an annual trip to at least one Latin America country to visit its local Industrial Property Office and as well to coordinate a visit with each county’s IP association and its Judicial Bar. Planning is already underway for the 2014 trip, set for August 2014 to Santiago, Chile and Buenos Aires, Argentina. Updated news about the annual trip, as well as past trips, is available at the IPPLatAm microsite on the larger AIPLA web site and as well, on its LinkedIn® subgroup page. Other trips are also being considered that would coincide with meetings arranged by ASIPI and other sister Latin American IP organizations. Again, news will be posted on the IPP-LatAm microsite and the LinkedIn® sub-group page as the information becomes available, and as well, will be disseminated by both membership e-mails (Lyris) and announcements at any one or all of the three annual AIPLA meetings during IPPLatAm’s Committee sessions. Subcommittees: Subcommittee Reporting on IP Developments in South America for 2014 Ury Fischer—Co-Chairman Lott & Fischer, PL Miami, Florida ufischer@lottfischer.com

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Arturo Covarrubias—Co-Chairman Covarrubias & Silva Santiago, Chile acovarrubias@cs.cl Subcommittee Reporting on IP Developments in Mexico & Central America for 2014 Eugenio Pérez—Co-Chairman Uhthoff Gomez Vega & Uhthoff, SC Mexico City, México eugenioperez@uhthoff.com.mx Guilhermo López Davis—Co-Chairman Bufelco Abogados Guatemala City, Guatemala glopezdavis@bufelco.com.gt Subcommittee for the Maintenance of the AIPLA LAC microsite Eduardo da Gama Camara Junior—Chairman Dannemann Siemsen Advogados Rio de Janeiro, Brazil edu@dannemann.com.br Subcommittee for the Development and Integration of Social Networking in Latin America James E. Larson—Co-Chairman Desert Development Company SA San José, Costa Rica jlarson@desertdevco.com Luis Diego Castro— Co-Chairman Castro & Pal Abogados San José, Costa Rica ldcastro2@castropal.com Subcommittee for the Coordination and Planning of the 2014 Annual Latin American Trip Ignacio Manuel Sánchez Echagüe—Co-Chairman Marval O’Farrell & Mairal Buenos Aires, Argentina IMSE@marval.com.ar Jaime Silva— Co-Chairman Covarrubias & Silva Santiago, Chile jsilva@cs.cl Eduardo Molina V.—Co-Chairman Estudio Villaseca Santiago, Chile emolina@villaseca.cl

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Patent Cooperation Treaty Issues Chair: Jay A. Erstling Vice Chair: Brooke Schumm III

Trademark Treaties and International Law Co-Chair: Jonathan W. Richards Co-Chair: Kimberly N. Van Voorhis

No business to report at this time. No business to report at this time.

Patent Treaties and International Policy Chair: Thomas T. Moga Vice Chair: Anthony Venturino

US Bar – European Patent Office Liaison Council AIPLA Delegates: Michael K. Kirk John B. Pegram

The Committee has no business to report. The purpose of the US Bar – EPO Liaison Council is for delegates from US IP organizations to meet annually with EPO officials as users of the EPO system. The AIPLA delegates coordinate their work with AIPLA leadership and the IP Practice in Europe Committee.

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US Bar – Japan Patent Office Liaison Council AIPLA Delegates: David W. Hill Paik Saber

The Committee has no business to report.

US Bar – China’s State Intellectual Property Office Liaison Council AIPLA Delegates: William D. “Skip” Fisher Ying Tuo

The Committee has no business to report.

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Member Services Committees AIPLA Fellows Chair: William L. LaFuze Vice Chair: Alan J. Kasper

in Various Jurisdictions, and Patent and Trademark Best Practices in Korea. At the Corporate Practice Breakfast during the Spring Meeting, partners from the sponsoring firm of McDermott led an interactive discussion about strategic uses of US Patent Office tools to cost effectively streamline patent prosecution. Public Education: Members of the Corporate Practice Committee helped to plan and participated in various World IP Day activities around the country. Member Service:

No business to report at this time.

Corporate Practice Chair: Valerie Calloway Vice Chair: Lila A.T. Akrad

In addition to its monthly Brown Bag Lunch Sessions and Committee Breakfasts, the Corporate Practice Committee has initiated its “Lunch Bunch” program focused on getting its geographically co-located members together for lunch on a regular basis to facilitate member in-person engagement and additional face to face interaction. Global Outreach: Membership in the Corporate Practice Committee is open to all in-house corporate intellectual property practitioners regardless of geography. However, the vast majority of the Committee’s members are based in the United States. Many members of the Committee serve clients all over the world so Brown Bag session leaders include attorneys from outside of the United States. Subcommittees:

Vision, Mission and Values: The overall mission of the Corporate Practice Committee is to serve the particular needs and interests of the corporate intellectual property segment of the AIPLA membership. Advocacy:

Breakfast Meeting Planning for 2014 Spring AIPLA Meeting (Nancy Klembus—Subcommittee Leader); Breakfast Meeting Planning for 2014 Annual Meeting (Subcommittee Leader— TBD); Monthly Brown Bag Lunch Session Planning (Nancy Klembus—Subcommittee Leaders); and Local Lunch Bunch (Subcommittee Leaders from various jurisdictions—TBD).

The Corporate Practice Committee educates its membership about current important intellectual property law-related and in-house corporate intellectual property practicerelated issues through its monthly Brown Bag lunch session discussions and its breakfast meetings. The Brown Bag lunch session discussions are held on the third Tuesday of each month at alternating noon East coast and noon West coast times. The breakfast meetings are held at each of AIPLA’s Annual, Mid-Winter, and Spring meetings. Brown Bag Lunch session discussions over the last months have included topics such as: Patent and Trademark Law Practice in Colombia, Comparison of Trade Secret Laws 54

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Diversity in IP Law

including the New Lawyers Committee newsletter.

Chair: Shayne E. O’Reilly Vice Chair: Vacant

Public Education:

No business to report at this time.

At the Mid-Winter Institute, the Committee participated in the Committee Fair. Our booth was managed by Suneeta Tumati and Rona Lamiquiz with assistance from Dolly J. Krishnaswamy. They prepared and presented a large poster board with a map of the liaisons the LSC has amassed at law schools throughout the country, and displayed work products that have been generated by the Committee, allowing other Committees to gain insight into the activities of our Committee.

Law Students

Chair: Yelena Morozova Vice Chair: Samuel V. Eichner

Vision, Mission and Values: The Law Student Committee’s mission is to help the association better identify with the concerns and needs of law students. The Committee wishes not only to invigorate AIPLA’s current law student members, but also to welcome more students to join the association as active members. Law student outreach is critical to the growth and development of the AIPLA membership base; the law student community is far and away the largest pool of potential new AIPLA members. As a result, the major goals of the Law Student Committee are to expand the AIPLA presence at law schools around the country, educate law students about AIPLA’s role in the IP community, emphasize the benefits of AIPLA affiliation, and provide law students with guidance and tools necessary to start and develop their IP careers. By expanding the AIPLA law student membership base, we can increase AIPLA membership in the long term and accomplish more as a Committee and as an organization. Advocacy: The Law Students Committee continues to work with the New Lawyers Committee on various projects. Our Committees continue to collaborate in the areas of law student mentorship by new lawyers, and preparation of various work-product 2014 mid-winter institute issue

At the Annual 2013 Meeting, the Committee held a joint session with the Education Committee. The Law Student Committee presented a panel discussion: “Bringing Your Career Online: Personal Branding and Social Media for Law Students.” The panel discussion focused on how law students can benefit from a more fully developed social media presence, as well as the pitfalls of pursuing such a strategy, with an emphasis on securing entry-level legal employment. The panel also discussed strategies for effectively leveraging social media tools as an attorney.

In conjunction with the Copyright Society and Cardozo Law School, the Committee organized a panel discussion on “What Entrepreneurs Need to Know about Intellectual Property” that was held at Cardozo Law School on March 4, 2014. The panel focused on how attorneys protect creative works and other intellectual property for start-ups in several different industries. A special thank you to our members Samuel Van Eichner, Francesca Montalvo, and Giancarlo Scaccia for organizing this event. At the 2014 Spring Meeting, the Committee will hold a session on how to make the most of internship, externship, or summer associate positions. Our speakers will share insights and provide advice on increasing chances of subsequently securing that or another legal job and acquiring skills and knowledge that will help law students to advance their careers. Member Service: On April 17, 2014, The Law Student Committee in conjunction with the Online Programs Committee held a webinar “Becoming an Active AIPLA Member: Why, When, and How?” as an edition of the AIPLA Career and Practice Management Series. The webinar offered insight into the range of opportunities AIPLA provides to law students and young lawyers. Our distinguished speakers drew upon their personal experiences to provide tips and sage advice on finding opportunities within AIPLA, what to do when volunteering, and maximizing the benefits of the AIPLA membership and involvement within the association. Special thank you to our members Yelena Morozova and Dolly J. Krishnaswamy for organizing the webinar. aipla bulletin

In conjunction with the New Lawyers Committee, the Committee coordinates the Mentorship Initiative, which pairs law students with new lawyers. Under this Initiative, the Mentors (New Lawyers) provide Mentees (Law Students) with guidance on starting and developing their careers in IP law, becoming active within AIPLA, networking, and on other issues as well. The Committee is currently recruiting Student Liaisons in law schools across the country to facilitate contact between AIPLA and the law schools, recruit new law student members, market AIPLA events to the law student community, and help in coordinating local AIPLA events. The number of Student Liaisons is slowly growing. Subcommittees: Social Media/Marketing Subcommittee: Giancarlo Scaccia, Chair

Jeremy D. Ray, University of Tennessee College of Law, 2015 Sam Kilb, Cardozo School of Law, 2015 Reema Mahbubani, Hofstra University School of Law, 2016 Kristen F. Barnhart, University of Idaho College of Law, 2016 Jordan Stott, University of Idaho College of Law, 2015 Adriana Ibarra Vazquez, Mercer Law School, 2015

Membership

Chair: Michael W. Piper Vice Chair: Elizabeth Ann “Betty” Morgan

Substantive Projects Subcommittee: Francesca Montalvo, Co-chair Joshua Kresh, Co-chair Student Liaison Subcommittee: Quinn Stine, Co-chair Julia Weis, Acting Co-chair Law School Liaisons: Navid Ahmadin, University of New Hampshire School of Law, 2014 Amelia Wong, American University Washington College of Law, 2014 Lane Webster, SMU Dedman School of Law, 2014 Nate Camuti, Chapman University School of Law, 2014

No business to report at this time.

Mentoring

Chair: Hetal Kushwaha Vice Chair: Deb Sengupta

Camelia Mokri, New York Law School, 2014 Jordan Sinclair Brooklyn Law School

2014

Jake Berdine, George Washington University Law School, 2015 William Kauffman, Villanova University School of Law, 2015 Sonja Gerrard, University of Washington, 2015 Dolly J. Krishnaswamy, New York University School of Law, 2015

Vision, Mission and Values:

Elizabeth Farrell, Washington & Lee School of Law, 2015

Report on and Plans for stated meetings:

Abtin Amir, USC Gould School of Law, 2015

2014 Mid-Winter: We continued with the onsite mentoring program, which was run by Scott Allen. The Mentoring Committee also participated in the Committee Expo. The highlight of the Mentoring Committee booth was a Bollywoodthemed mentoring program—many AIPLA members, including President Sobon, were mentored through the steps of a short Bollywood dance. Our booth also included

Hannah Fields, University of Maryland Francis King Carey School of Law, 2015 Dominic Yee, Suffolk University Law School, 2015 Suneeta Tumati, ASU Sandra Day O’Connor College of Law, 2015 56

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Projects:

2014 mid-winter institute issue

giveaways including a brochure highlighting the programs run by the Committee, and two raffle drawings.

We also plan to implement a post-conference review of the on-site pairings in order to improve the mentoring experience.

2014 Spring: The Mentoring Committee partnered with the New Lawyers, Biotechnology, Diversity in IP Law, Education and Electronic & Computer Law Committees in hosting an information session followed by a sponsored networking reception. We also continued with our on-site mentoring program.

We have now implemented a mid-year feedback system for mentors and mentees in the program. We hope that this new initiative, headed by Elise Selinger, will improve the annual mentoring program.

2014 Annual: We hope to put on a joint program with other Committees to discuss the importance of mentoring in the profession. We will also continue with our on-site mentoring program. Plans for coordination between stated meetings: The Committee relies mostly on email communication between Subcommittee members. However, the Committee may introduce regular conference calls with members for status updates and regular feedback. Plans for communication with the Committee clusters/board liaisons: The Committee usually corresponds fairly regularly via email with our board liaisons. Advocacy: The Mentoring Committee does not have a formal role with respect to Advocacy. However, through pairings, our mentors introduce their mentees to substantive Committees which have a role in Advocacy. Public Education: The Mentoring Committee contributes to Public Education by supporting Committees like the Education Committee. Our pairings can also increase to AIPLA members becoming more involved in Public Education, with interested mentees being introduced to AIPLA leadership tasked with this objective. Member Service: We believe that the Mentoring Committee draws in new members interested in becoming more involved in AIPLA and who may want professional mentoring. One of the ways that we contribute to Member Services is through our onsite mentoring programs. Another way that we contribute to Member Services is with the Klitzman Award. One objective of the Award is to assist junior corporate counsel in becoming more involved in the AIPLA; the recipient is paired with an experienced AIPLA member for the duration of the annual meeting. The 2013 recipient was Jessica Ergmann, a member of the in-house legal department for Dräger in North America. We also continue to annually reward our outstanding mentors with a Mentor of the Year award, which is chosen based on mentee feedback through our selection Committee. It was announced at the Annual Meeting that the 2013 recipient was Amie Peele Carter. 2014 mid-winter institute issue

Global Outreach: Our Committee has and will continue to improve ways for our members to become more involved outside of stated meetings. This allows members who are not able to travel to meetings to become involved in and learn more about AIPLA. We are a global Committee: foreign members are involved in the mentoring program at the leadership level and within the mentoring program as mentors and mentees. We are trying to develop new ways to reach out to our members using our Committee Microsite as well as other Online resources. In furtherance of this objective, we recently started a LinkedIn® group for our Committee, where we plan to provide resources for our members in addition to information to be posted to our Microsite. Rudy Hoffman is heading up this new initiative. Subcommittees: On-Site Mentoring Subcommittee: Scott Allen •

This Subcommittee organizes the onsite pairings initiative.

Pairings Subcommittee: Jenae Gureff •

Mentor/Mentee Pre-Screening: Jennifer Rogers

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Mentor/Mentee Mid-Year Feedback: Elise Selinger

This Subcommittee is the heart of the Committee since they are responsible for managing all of the mentor/mentee pairings ongoing throughout the year. Evaluations Subcommittee: Lisa Jorgenson; Strickland Ricketts

Allison

This Subcommittee is responsible for reviewing applicants for Mentor of the Year Award. Klitzman Award Selection Subcommittee: Rakesh Mehta This Subcommittee is responsible for reviewing applicants for the Klitzman award. Technology Subcommittee: Jack Abid This Subcommittee is responsible for maintaining the Committee mircosite. Social Media Subcommittee: Rudy Hoffman This Subcommittee is tasked with initially getting the LinkedIn® group active. aipla bulletin

New Lawyers Co-Chair: Melissa A. Sikorski Co-Chair: Frank L. Gerratana

Plans for coordination between stated meetings: The NLC has been tasked with improving upon AIPLA’s social media policy. A team of NLC member volunteers is being created to research and work on a first draft to be completed prior to the 2014 Spring Meeting. Plans are already underway for our 4th Annual Summer Retreat Weekend, to be held in San Francisco Friday, August 15th–Sunday, August 17th, 2014. San Francisco and Palo Alto local networking leadership are organizing. Local networking happy hours continue to be held regularly in many major cities.

Vision, Mission and Values: The New Lawyers Committee focuses on members in their first ten years of practice. The Committee provides educational and networking opportunities to new lawyers in the association through the stated meetings and receptions. In addition, the Committee serves as a central resource to communicate with other Committee chairs and members of AIPLA’s Board to provide new lawyers opportunities to become more involved in the association. NLC members are active participants in planning substantive programs for the stated meetings, co-authoring CLE papers with speakers, judging and administering the AIPLA Giles Rich Moot Court Competition and the Watson Writing Competition, and assisting substantive Committees with a variety of activities, including research and writing projects, meeting planning and developing educational materials. Projects: Plans for stated meetings: The NLC participated in the Committee Expo at the 2014 Mid-Winter Institute. For Expo marketing materials, we limited paper consumption and created business cards for the NLC. The cards were free to generate and contained a QR code linking to our online “brochure,” past newsletter issues, local networking contact information and Committee reports, so that all our Committee info can be easily located on our Committee page on aipla. org. We also distributed print copies of the latest issue of our Committee’s newsletter, Business Casual. As a fun draw and in support of local Phoenix small business, our booth featured a local magician who performed for visitors to our booth. The magician made our Expo offerings a tremendous success by drawing a big crowd and facilitating fun and relaxed networking conversation among the attendees. During the Expo, the Committee also recruited several NLC members to volunteer for Committee projects. The booth was sponsored by Fish & Richardson P.C. For the 2014 Spring Meeting, the NLC held a brief joint Committee session with the AIPPI-US Division, Biotechnology, Diversity in IP Law, Education, Electronic & 58

Computer Law, and Mentoring Committees, followed by a fun networking reception sponsored by Marks & Clerk.

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The NLC has new TSC liaisons for a number of AIPLA’s substantive Committees and is actively looking for more volunteers. The NLC continues to solicit volunteers across all its many initiatives. Plans for communication with the Committee clusters/ board liaisons: Updates and opportunities to work with other Member Services Committees will be discussed in the next monthly conference call. Advocacy: The NLC assists with the administration of the AIPLA Giles Rich Moot Court Competition. Special thanks to the ongoing efforts of Subcommittee Chair David Gosse and the many NLC member volunteers listed below. The problem for the 2013-14 competition is posted on the AIPLA Website. Briefs were turned in January 31. Arguments in the regional competitions were held from March 21-23, 2014 and the national finals were held April 23-25, 2014. NLC members welcome the opportunity to volunteer for other Advocacy-related initiatives, such as Amicus Committee briefs. Public Education: The New Lawyers Committee supplied two judges for the 2014 Intel Science Fair and is looking for judges for the AIPLA’s 2014 Watson Writing Competition. NLC members are available to volunteer for any Public Education-oriented AIPLA projects. Please send volunteer requests to NLC Chair Missy Sikorski at missysikorski@gmail.com. Member Service: The NLC coordinates a number of opportunities for NLC members to be active and serve within the organization. Volunteers are already being lined up to assist 2014 Spring Meeting panelists with their CLE track papers. NLC CLE Subcommittee: The NLC CLE initiative, now in its second year, serves to organize lunchtime CLE lectures 2014 mid-winter institute issue

geared toward providing local educational, CLE, and networking opportunities. Our most recent program, titled “ETHICS: Spotting Conflicts of Interest in Prosecution, Litigation & Opinion Work” was held on November 9, 2013 via videoconference in 9 cities. Our most recent program was held April 10, 2014, on the topic of restriction practice in patent prosecution. The program was held live in Washington, DC and held in multiple cities via videoconference. NLC Local Networking Subcommittee: Seattle, WA is a new addition to this initiative’s many active cities. In addition, the Austin, TX networking Subcommittee has a new leader and held its first happy hour on February 24. Law Student Mentoring Subcommittee: The NLC continues to grow its new law student mentoring initiative in cooperation with the Law Students Committee, and is currently in need of volunteers to be mentors to AIPLA law student members. Newsletter: The new Business Casual newsletter staff has just completed the latest issue, which has been distributed online and at the Mid-Winter Institute. The next issue will be published later this Spring.

4. Law Student Mentoring: Subcommittee Co-chairs, Reid Morris and Rob Weaver. Current NLC Mentors: Frank Gerratana, Sam Eichner, Yelena Morozova, Rob Wells, Ben Siders, Roy Isaac, Michael Bentley, Dan Hegner, Teri Karobonik and Kassity Liu 5. Local Networking Subcommittee Leaders: Atlanta – Russell Blythe and David Moreland, Austin – Jennifer Nall, Boston – Missy Sikorski and Frank Gerratana, Charlotte – Seth Hudson, Dallas/Ft. Worth – Justin Cohen and Victoria Helling, DC/VA/MD – Josh Miller, Pier DeRoo, and Steve Holzen (Chair of the Patent Agents Committee’s Local Networking Subcommittee, liaison to NLC Local Networking in DC), Detroit – Isaac Slutsky, Miami – Rob Weaver, Minneapolis – Al Vredeveld, New York – Ceyda Maisami and Joe Diciocco, Orange County/LA – Ehab Samuel, Palo Alto – Aaron Capron and Jack Lin, Philadelphia – Debora Plehn–Dujowich, San Francisco – Jeffrey Smyth and Carlos Rosario, Seattle – Janice Goh, Tampa – Nathan Suedmeyer, London, England – Julie Carlisle and James Seadon

Global Outreach:

6. Business Casual Newsletter: Subcommittee Co-Chairs and Editors-in-Chief, Erin Bryan and Alison Karmalek.

The NLC has recently expanded local networking internationally to London, England. The Committee continues to achieve Global Outreach through our social media platforms. Additionally, NLC member volunteers regularly assist international Committees with projects.

Public Appointments

Subcommittees:

Chair: Roger W. Parkhurst Vice Chair: Edward Robert Reines

1. NLC CLE: Subcommittee Chair, Theresa A. Gresl. Topic and Speaker Selection Subcommittee: Joe Dicioccio and Kaileigh Morgan; Program Coordinating Subcommittee: Dhairya Jani, and Janice Goh; Timeline Coordinating Subcommittee: Elizabeth Glasson. 2. AIPLA Giles Rich Moot Court Competition: Subcommittee Chair, David Gosse; Regional Directors: Josh Dalton, Kevin E. Noonan, William P. Ramey III, Roman Swoopes, Stefan Szpajda; Research Group: Kristin Beidinger, Josh Miller, Josh Lee, Jason Croft, Ryan Schermerhorn, Joe DiCioccio, Matt Brigman and Tanya Dunbar; Drafting team: Ida Wahlquist-Ortiz, Erick Lee, Victoria Hall, Lars Taavola, James Chang, Alexis Simpson and David Gosse; bench memorandum prepared by Ryan Schermerhorn, Scott Allen and David Gosse.

The Committee has no business to report.

3. NLC/Substantive Committee Liaisons: Copyright, Quinn Stine; Industrial Designs, James Aquilina; Trademark Internet, Missy Sikorski; Education, Donika Pentcheva; Patent Cooperation Treaty Issues, Bryan Dobbs; Biotechnology, Wen Xie; Patent Litigation, Keith O’Doherty; Emerging Technologies, Margaret M. Welsh; Licensing and Management of IP Assets, David Gosse; Online Programs, Jameson Ma 2014 mid-winter institute issue

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Women in IP Law Chair: Hathaway Russell Vice Chair: Randi L. Karpinia

various AIPLA and IP related issues. The Chair and Vice Chair of AIPLA’s Women In IP Committee also speak briefly. In addition, there is a roll call of all of the participating cities. Communications and Electronic Outreach Subcommittee: Arlene Neal (Subcommittee chair) •

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Webinars: Yelena Morozova (lead)—2 webinars per year, free of charge, focused on work/life balance and professional growth Thursday, March 13, 2014: Mentorship and Sponsorship—The Road to Success

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Newsletter: Sonsy P. Rajan (lead)—2 per year—mailed to all Committee membership and also available on AIPLA Committee Microsite. Includes: letter from chair, Subcommittee happenings, featured professional articles, member spotlight, book review, news and notes. Example: http://www.aipla.org/Committees/ Committee_pages/Women_in_IP_Law/newsletters/ sp2013newletter/Pages/default.aspx

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Social Media: Debora Plehn-Dujowich (lead)—provide multiple social media avenues for Committee members to share information and interact including Facebook®, Twitter®, LinkedIn®, Committee blog and Committee Microsite:

Vision, Mission and Values: This Committee shall act to facilitate and empower women in their practice of intellectual property law. The Women in IP Law Committee is focused on developing substantive and relevant programming that focuses on and promotes women in IP law. In addition, the Committee seeks to develop leadership opportunities within AIPLA for female members. Projects: Plans for stated meetings: 2014 Spring Meeting: We invited all attendees to join a breakfast panel discussion on strategies for effective communication. Our panelists described techniques they use to confidently communicate with clients, including C-level executives and non-lawyers, and strategies for answering questions on risk evaluation and likelihood of success. The discussion also featured insights on personal branding for successful positioning within an organization. 2014 Annual Meeting: •

AIPLA Past Presidents Panel

Plans for coordination between stated meetings: 2014 Women in IP Law Networking Event: Carol ThorstadForsyth and Elise Selinger (co-chairs) The AIPLA Women in Intellectual Property (“IP”) Networking Event was held for the seventh year on Thursday, May 22, 2014. The event is a simultaneous meeting of women located in the US and/or abroad who practice IP law and/or are regularly faced with IP issues in the course of ordinary business. In this regard, numerous events are concurrently held in various domestic and foreign locations by law firms and/or corporations. These events may include a seated dinner, a cocktail party, passed hors d’hoeuvres, or other type of gathering. At 8:30PM EST, all of the events are joined together via a teleconference and/or video conference. During the conference, the AIPLA President and Executive Director address all of the guests and speak briefly about 60

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Event communications: Jennifer Nall (lead)— Communicate information specific to each stated meeting, webinar, and the networking event via all social media formats at intervals before and during the meeting, webinar, or event (example enclosed)

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https://www.Facebook®.com/pages/Women-in-IPLaw-AIPLA/290965038221

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https://Twitter®.com/womeninip

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http://www.LinkedIn®.com/groups?gid=2108091& goback=%2Eanp_2108091_1329526809020_1

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http://womeninip.wordpress.com/

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http://www.aipla.org/Committees/Committee_ pages/Women_in_IP_Law/Pages/default.aspx

Book Reviews: Hetal Kushwaha (lead)—provide book summaries and reviews for books related to work/life balance and professional growth to Committee members via blog and newsletter.

Plans for communication with the Committee clusters/ board liaisons: Advocacy: The Committee has a number of programs planned that advocate for women in the profession. In particular, the Committee hosts programs at the three stated meetings, in addition to free webinars between the meetings and the 2014 mid-winter institute issue

National Networking dinners that take place each May. At the 2013 Annual meeting, the Committee will be presenting the findings of Dr. Annette Kahler related to the last two AIPLA membership surveys, and the Committee will lead a discussion that will result in the development of an action plan to increase engagement of women in leadership positions in the profession.

Communications and Electronic Outreach Subcommittee: Arlene Neal (Subcommittee chair) Advancement and Retention Subcommittee: Meg Boulware and Melissa Buss(co-chairs) Liaison Coordinator: Bea Koempel-Thomas (chair)

Public Education: As noted above, the Committee hosts a number of free webinars on topics of interest to female members and the Committee hosts the National Networking events to help educate the public about AIPLA and the benefits of membership. Member Service: Webinars: Yelena Morozova (lead)—2 webinars per year, free of charge, focused on work/life balance and professional growth Newsletter: Sonsy P. Rajan (lead)—2 per year—mailed to all Committee membership and also available on AIPLA Committee Microsite. Includes: letter from chair, Subcommittee happenings, featured professional articles, member spotlight, book review, news and notes. Example: h t t p : / / w w w. a i p l a . o r g / C o m m i t t e e s / C o m m i t t e e _ p a g e s / Women_in_IP_Law/newsletters/sp2013newletter/Pages/ default.aspx 2014 Women in IP Law Networking Event: May 22, 2014 —Carol Thorstad-Forsyth and Elise Selinger (co-chairs) —Each city host provides a program – some of which are educational programs. Women in IP Lean-In Circle (co-chairs Deborah Plehn and Jessica Ergmann): monthly conference calls following the Lean In progression and providing professional development advice along with an opportunity for discussion and sharing. Two meetings held thus far with the topics “Power and Influence” and “Creating a Level Playing Field.” Global Outreach: 2014 Women in IP Law Networking Event: May 22, 2014 —Carol Thorstad-Forsyth and Elise Selinger (co-chairs)— In recent years the National Networking receptions have expanded to include international locations including events in Canada and Hong Kong. We plan to expand the 2014 event to include other non-USA groups. To-date we have confirmed New Delhi, India; Shanghai, China; Sydney, Australia; Auckland, New Zealand; and Wellington, New Zealand. We are also adding a parallel Europe event in conjunction with the AIPLA Europe Committee. Subcommittees: 2014 Women in IP Law Networking Event: Carol ThorstadForsyth and Elise Selinger (co-chairs) 2014 mid-winter institute issue

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Patent Committees Biotechnology

Chair: Suzannah K. Sundby Vice Chair: J. Timothy Meigs

High Tech Biotech – Roy Issac and Ashok K. Mannava Hot Biotech – Noel Courage and George Yu Industrial Biotech – Judy Roesler and Gerald Swiss International – David Read and Trevor Davies Liaisons – James J. Kelley and Suzannah K. Sundby Plant Biotech – Alice Martin and Bruce Vrana PTAB Actions – Herbert Hart Public Communications – Gene Quinn Regional/Social – Ling Zhong

Vision, Mission and Values:

SWAT – Carla Mouta

To realize the promise of Biotechnology in health, energy, environment, and food requires a reliable, global IP system that rewards innovation without inhibiting it and protects investments in new products and new jobs. Biotechnology IP practitioners and companies, however, face very significant challenges in helping the world realize this promise. The overall mission of the Biotechnology Committee is to serve as resource, educator, and advocate for its members, AIPLA, government institutions, and people everywhere so that the promise of Biotechnology may be more fully realized globally.

Technology Transfer & Licensing – Eric Mirabel and Vladimir Drozdoff

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Noel Courage reported on biosimilar antibodies approved in Europe and Canada.

Buzz Editor – Jessica Zurlo

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Lynn C. Tyler reported on the January 2014 notice by the FDA that it plans to issue five draft Guidance documents related to biosimilars in 2014.

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Kristin Connarn provided an in-depth summary of the FTC’s Workshop on Follow-on Biologics on held February 4, 2014.

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Maria A. Stubbings reported on India’s approval of a biosimilar Herceptin® for Mylan and Indian biologics partner Biocon, following shortly after Roche’s decision not to continue defending its patent in India.

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Lynn Tyler provided a scorecard on various states’ legislation on biosimilars which place restrictions on the substitution of biosimilars for pioneer biologic medicines.

USPTO Relations – Joseph Mallon and Suzannah K. Sundby Webinars – Debora Plehn-Dujowich Subcommittee ACTIVITIES Biosimilars

Microsite Master – John Marquardt TSC Liaisons: Law Students – Kelly Lu New Lawyers – Wen Xi Women in IP Law – Carine Doyle Diversity in IP Law – Roy Issac Corporate – James J. Kelley Subcommittee SUB-CHAIRS Academia & Research Institutions – Mark Bloom Biosimilars – Lynn Tyler and Kristen Connarn Biotech Litigation – Bryan Diner, Carolin Shining, and George Yu

Biotech Litigation •

Marcus Kretzschmar and Bryan Diner reported on the Federal Circuit’s Institut Pasteur decision, which provides useful and valuable positions for biotech patent enforcement in the wake of the Galderma case, which created a dangerous new precedent for determining obviousness of selection inventions.

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Sanya Sukduang provided a quick report on Sandoz, Inc. v Amgen, Inc., the first court decision to interpret the

Biotech Patent Education – Betsy Haanes Case Law Reviews – Melanie Szweras and Nicholas Landau Corporate – James J. Kelley Diagnostics & Gene Patenting – Ling Zhong and David P. Dalke 62

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Biologics Price Competition and Innovation Act (BPCIA). Biotech Patent Education •

Betsy Haanes provided a review of Leo Pharmaceutical Products, Ltd. v. Teresa Stanek Rea, Acting Director, United States Patent and Trademark Office, Slip Op. 2012-1520 (Fed. Cir. August 12, 2013).

Case Law Reviews •

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Melanie Szweras and Amar Rana provided an informative review of Abbvie Corporation v. Janssen, Inc. regarding Abbvie’s infringement action against Janssen in Canada. Dorothy Auth and Qian Wang provided a review of SmartGene, Inc. v. Advanced Biological Lab., No. 20131186, 2014 US App. LEXIS 1357 (Fed. Cir. Jan. 24, 2014). Lynn C. Tyler and Michael R. Brunelle reported on Sanofi-Aventis v. Pfizer Inc., (Fed. Cir. Nov. 5, 2013) in which the Court agreed that conception and reduction to practice of a nucleotide sequence does not require the full correct sequence as long as the DNA has been isolated and its function has been appreciated. D. Benjamin Boron reported on Sunovion Pharmaceuticals, Inc., v. Teva Pharmaceuticals USA, Inc., (Fed. Cir. Sep. 26, 2013) in which the Court held that when the specification of the ANDA literally infringes, a certification that only non-infringing versions will be sold is not a defense.

International •

David Read reported on the case brought by Actavis Group against Boehringer Ingelheim which concerns once more the validity of a combination SPC and the number of specific issues raised which had not been considered by the CJEU previously.

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Li Feng, Xin Liu, Ningling Wang, and Chunhua Wu provided a comparison of patent term extension and data exclusivity between China and the United States.

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Chuanhong Long and Juhua Lou provided an outline of the SIPO examination standard required for assessing sufficient disclosure of chemical/medical inventions in China.

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Chong-Yee Koo summarized the amendments to the Singapore Patents Act which came into force on February 14, 2014.

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Sarah Matheson reported on a recent decision of the High Court confirming that methods of medical treatment of the human body are patentable inventions in Australia.

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David Read reported on the patentability of methods making use of human embryos at the European Patent Office and recommended practice points.

PATENT TERM EXTENSION •

Argentina – Mariana Bullrich reported that patent term extensions are not available in Brazil; however, there are possible ways of extending the life of the patent beyond the 20 year term.

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Australia – Linda Govenlock and Trevor Davies advised what one needs to know about the general requirements and calculation of patent term extension in Australia.

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Brazil – Leonor Galvao reported that despite the non– availability of patent term extension per se in Brazil, there are provisions which compensate applicants for slow prosecution before the BPTO.

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Canada – Noel Courage reported on data exclusivity and the future possibility of patent term extension for a drug in Canada.

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Europe – David Read provided an article on patent term extension in Europe and how to qualify / apply for a Supplementary Protection Certificate (“SPC”).

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India – Tarun Gandhi provided an outline of patent term extension in India.

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Japan – Ayako Kobayashi reported on patent term extension in Japan and how to maximize the benefits of PTE.

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Korea – Yoon S. Shin provided an outline of patent term extension in Korea.

Diagnostics & Gene Patenting •

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D. Benjamin Borson reported on the Federal Circuit decision in SmartGene, Inc. v. Advanced Biological Labs and that claims drawn to abstract ideas or mental steps, which include only a general purpose computer, are likely ineligible for patenting. Ling Zhong reported on In Ariosa Diagnostics, Inc. v. Sequenom, Inc., one of the first decisions on patent eligibility of diagnostic methods since the Myriad decision, the district court invalidated diagnostic method claims as drawn to patent ineligible subject matter.

Hot Biotech •

Carla Mouta reported on the February 5, 2014, hearing in In Re Roslin, at which the Federal Circuit heard arguments on the patent eligibility of mammalian clones.

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Jason Harp and George Yu reported on a newly filed case, Phigenix v. Genentech (N.D. Ga. 14-cv-287), one of the first cases involving antibody-drug conjugate technology.

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Christopher Thomas reported on the Senate Judiciary Committee’s hearing on the Innovation Act.

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Liaisons •

The Biotechnology Committee Chair of JPAA, Soichi Ogou, asked us to poll our members on a few questions on the US Supreme Court Decision in Association for Molecular Pathology v. Myriad Genetics and its impact on biotech patents. Karen G. Potter and Kate Rigaut reported on the results of the survey.

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On February 24th Suzannah K. Sundby and a few other members met with Soichi Ogou in Washington, DC.

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We have established liaisons within the AIPLA community and with various sister organizations and Committees.

Plant Biotech •

Renata Campello Afonso reported on the availability of plant IP protection in Brazil.

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The Plant Biotech Subcommittee assisted with arranging an AIPLA webinar on January 22, 2014, on The Truth about Genetically Modified Plants and Best Practices for Protecting Surrounding Innovations.

Committee Dinner on January 31, 2014, in Phoenix, AZ. •

Technology Transfer & Licensing •

Ypsita Demunshi and Vladimir Drozdoff reported on the FTC’s new Hart-Scott-Rodino (“HSR”) Act rules, which expand HSR reporting obligations to transfers of “all commercially significant rights,” a change from the previous HSR rules under which transfers of most—but not all—rights were not subject to notification and review.

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Eric Mirabel, Vladimir Drozdoff, and Noel Courage provided an exemplary agreement for collaborative development and exclusive licensing along with comments and related case law.

USPTO Relations •

John Marquardt and Suzannah K. Sundby arranged for the Committee to host the materials from the Biotech/ Chem/Pharma USPTO Customer Partnership meetings.

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Suzannah K. Sunday presented plaques to Mr. Ed Cabic and Ms. Cecilia Tsang in recognition for their many years of support for the BCP USPTO Customer Partnership meetings.

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Joseph Mallon provided summaries of each BCP USPTO Customer Partnership meeting.

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Joseph Mallon and Suzannah K. Sundby continue to arrange informal Happy Hours after the BCP meetings.

PTAB Actions •

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Robert F. Kappers, Herbert D. Hart III and Malaika Tyson reported on a trio of related decisions in companion IPR actions issued by the Patent Trial and Appeal Board (“the Board”) on December 17, 2013, each instituting inter partes review of three patents directed to oncedaily formulations containing tetracyclines, which are also the subject of ANDA litigations. Robert F. Kappers, Herbert D. Hart III and Malaika Tyson reported on the PTAB’s denial of a petition for IPR in BioDelivery Sciences v. MonoSol RX holding that 35 USC. § 315(b) bars petitions filed more than one year after service of a complaint asserting infringement but less than one year after claims are amended by reexamination certificate. Robert F. Kappers, Herbert D. Hart III and Malaika Tyson reported on St. Jude Medical, Cardiology Division v. Volcano Corp. in which the PTAB denied a petition for IPR holding that counterclaim alleging infringement is within the meaning of “a complaint alleging infringement” under 35 USC. § 315(b).

Public Communications •

Gene Quinn discussed his views on the Myriad decision and why he believes Myriad overrules Chakrabarty.

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Gene Quinn is also assisting Committee members with writing articles targeted to the general public.

Regional/Social • 64

Angie Sebor arranged and reported on the 2014 Biotechnology Committee Mid-Winter Institute aipla bulletin

Karen G. Potter arranged and hosted at her firm, Mckenna, Long & Aldridge, LLP, offices in San Diego, a breakfast social in conjunction with the January 22nd webinar on genetically modified organisms.

Webinars •

Debora Plehn-Dujowich, in collaboration with the Online Programs Committee, arranged a webinar, entitled “GMO-Related IP Challenges and Strategies”, on held on Wednesday January 22, 2014.

OTHER Committee ACTIVITIES Christopher Thomas, Bryan Diner, and Debora PlehnDujowich, wrote an in-depth article entitled “Lessons for the Biotechnology Practitioner from the first Inter Partes Review Decision (Garmin).” THE MID-WINTER INSTITUTE Despite the weather (cancelled flights due to snow and gorgeous golfing weather locally), we had a great turnout at our Expo Booth. Thanks go to Lynn Tyler, Debora PlehnDujowich, Vicki Norton, Roy Isaac, and Tarun Ghandi for their huge help in making our booth a success. At the Expo, we handed out glow sticks, funky hats and glasses in our Committee colors. We also gave away Petridishes of M&M’s (in our colors of course) with the names of 2014 mid-winter institute issue

Electronic and Computer Law

our firm sponsors. Special thanks to our sponsors:

Chair: James D. Hallenbeck Vice Chair: Michael P. Dunnam

Duane Morris Drinker Biddle & Reath RatnerPrestia Smith Gambrell & Russell, LLP During our informal Committee meeting and conversations, 2 new Subcommittees were born: •

•

other

High-Tech Biotech – This Subcommittee will cover issues relating to high-tech that crosses over into biotech, e.g., telecommunications, telemedicine, microfluidics, semiconductor chips, biosensors, etc. SWAT – Strike With Action and Truth—The primary objective of this Subcommittee is to strike fast against proposals that could have a detrimental impact on biotech.

Chemical Practice Chair: Jeffrey N. Townes Vice Chair: Carol M. Nielsen

The Committee has no business to report.

Vision, Mission and Values: The Electronic and Computer Law Committee (ECLC) has the mission of considering electronic, computer, and software technology and the laws, administrative practices, and judicial decisions, both foreign and domestic, with respect to securing, promoting, and enforcing the various intellectual property rights in such technology and to cooperate with the AIPLA Board of Directors with recommendations as requested in such matters. As detailed below, the ECLC has fulfilled this mission quite substantially through the work of the Committee, through collaboration with the USPTO on various projects and open communication, and by including practitioners in the leadership of our Committee from several diverse countries. The ECLC also strives to meet the AIPLA vision of expanding its role as an innovator, powerful advocate, and visible global leader in intellectual property through our Committee’s commitment to education, outreach, Member Service, and Advocacy by way of our Annual Electronic and Computer Patent Law Summit and webinars. Further, the registration fees for the Electronic and Computer Patent Law Summit, thanks to our efforts to obtain financial support from law firms and community-focused patent law associations throughout the country, is a very low cost when compared to comparable programs. By obtaining the financial support from law firms and community-focused patent law associations, we are not only able to keep the registration fee low, we are also gaining buy-in from the sponsoring firms and associations thereby expanding our reach and building a stronger, more cooperative IP community. As also detailed below, the ECLC has partnered with the New Lawyers, Women in IP Law, Diversity in IP Law, Patent Law, Patent Litigation, and Corporate Practice Committees to continue building Committee relationships, cohesiveness in the AIPLA community, and to encourage participation by all AIPLA members in the activities and leadership of our Committee.

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Projects: Past Efforts and Plans for upcoming meetings: 2013 Annual Meeting •

20th Annual Partnering in Patents program at the USPTO on October 23, 2013

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Annual Committee Leadership and USPTO Tech Center Directors Luncheon at the USPTO on October 25, 2013

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Joint CLE Committee Session with the Patent Law Committee •

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“Through the Looking Glass: Section 101 in View of CLS Bank v. Alice and Myriad”

Committee Leadership Meeting

2014 Mid-Winter Meeting •

Participant in the Committee Expo

2014 Spring Meeting •

Committee Meeting: We conducted a Committee leadership meeting to discuss the upcoming Electronic and Computer Patent Law Summit, Committee activities for the Annual Meeting, and other Committee initiatives.

Plans for coordination between stated meetings: The ECLC utilizes the Lyris list to stay in touch with the membership between meetings and to distribute newsletters (with links to the ECLC Microsite). The ECLC leadership has teleconferences as needed and exchanges email amongst the leadership group and subsets thereof on a frequent basis. The ECLC also conducts the annual Electronic and Computer Patent Law Summit each year as well as a teleconference in late spring with the USPTO technology center directors. Plans for communication with the Committee clusters/ board liaisons: The ECLC stays in contact with certain other Committees, such as for partnering in Committee programming at stated meetings. However, this should be a continuing topic of discussion. Advocacy: The ECLC continues to monitor major case law and legislation. The ECLC will advise AIPLA and request AIPLA participation as relevant issues arise, particular as to the scope of patentable subject matter. In the recent past the ECLC surveyed our Committee on AIPLA positions relating to the scope of patentable subject matter and reported results to the Amicus Committee. Our surveys were used as background in forming AIPLA amicus briefs, to which the ECLC contributed by drafting, editing, and/or organizing. The ECLC also created a helpful compilation of decisions subsequent to the CAFC’s Bilski decision. The ECLC maintains a Subcommittee that is ready to respond when 66

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requested or when the Committee otherwise identifies an issue in need of attention. Public Education: The ECLC is planning the 2014 Electronic and Computer Patent Law Summit to be held at the Illinois Institute of Technology, Chicago-Kent College of Law on June 17, 2014. In recent years, the ECLC has been active in hosting webinars on topics of interest to the ECLC and will continue to do so. The most recent webinar was entitled “Using the USPTO’s Bilski/Section 101 Guidelines to Gain Allowance of Software and Business Method Inventions.” The Webinar Subcommittee is currently planning additional webinars for presentation over the next year. The ECLC will continue the annual Partnering in Patents program hosted jointly with the USPTO. The 19th annual program was presented last October at the USPTO. The 20th annual program took place on October 23, 2013. Planning for the program in 2014 will begin in Spring 2014 The ECLC will continue to maintain its long standing a dialog with group directors in technology centers corresponding to electronics and computer related inventions. Our most recent roundtable lunch discussion, held last October during the AIPLA Annual meeting, was the best-attended and most productive meeting to date. New initiatives were planned by the USPTO in which the ECLC will actively participate. We also held our annual teleconference in June and will continue this practice. The ECLC will continue to work cooperatively with the New Lawyers, Women in IP Law, Diversity in IP Law, and Corporate Practice Committees. For example, the New Lawyers Committee and the ECLC have been working together in support of ECLC organized track and Committee education sessions, and pairing mentors and mentees within the AIPLA mentoring program. The collaboration has been very positive. Member Service: The ECLC will continue to procure track and Committee sessions at upcoming stated meetings. At the 2013 Annual Meeting, the ECLC again partnered with the Patent Law Committee to conduct a CLE Committee educational session regarding patent eligible subject matter following the CLS Bank v. Alice and Myriad decisions. The moderator wass Robert Wilkes of Magna International and the speakers were Bruce Sunstein, Courtenay Brinkerhoff, and Jerry Selinger. The large, allotted room was standing room only. New for the ECLC this past year was the addition of a Newsletter Subcommittee. The purpose of this Subcommittee is to provide informational updates to the ECLC membership 2014 mid-winter institute issue

regarding past and upcoming events, requests for input and participation, and an outlet for the membership to provide short articles with regard to issues of interest to practitioners from the US and other jurisdictions. Through the newsletter, it is hoped the large ECLC membership will be more informed and become more engaged in Committee activities. The publication is electronic and accessible from the ECLC portion of the AIPLA Website. Two editions of the newsletter have been published and it has been well received. We will look to increase the publication to at least three times over the next year. The next issue will likely publish in February or March. The ECLC has numerous Subcommittees that focus on different aspects of IP practice. We continue to encourage the Subcommittees to remain active and to encourage participation by the general membership. The current list of Subcommittees is set forth on the following page. Global Outreach:

Pryor A. Garnett; pgarnett@us.ibm.com John P. Sumner; TSC Subcommittee – Liaison to New Lawyers Chair: Frank Bruno fbruno@gibbonslaw.com Coordinates interactions between ECLC and Young Lawyers Liaison to Women in IP Law Committee Chair: Bea Koempel-Thomas bea@leehayes.com Coordinates interactions between ECLC and Women Lawyers Committee Liaison to the Diversity in IP Law Committee Chair: Manav Das mdas@middletonlaw.com Coordinates interactions between ECLC and Diversity Committee

At recent AIPLA meetings, the ECLC has partnered with the IP Practice in Japan, Europe, Latin America, and Far East Committees in presenting joint Committee sessions. These sessions have included speakers not only from the US, but also from the relevant jurisdictions of the other Committees. The ECLC has also recently conducted a Committee session that included a presentation on the state of patent eligibility of computer-implemented inventions in Canada and Europe. Members of the ECLC have also participated in webinars organized by the International Education Committee for attorneys outside of the US. Additionally, ECLC Subcommittees include leaders from outside the US and in-house attorneys from non-US entities.

Liaison to Corporate Practice Committee

Subcommittees:

Chairs: Ed Round eround@marks-clerk.com; Jennifer Jannuska jjannuska@dww.com;

ECLC Leadership and Subcommittees (2013-2014) Chair: James Hallenbeck jhallenbeck@slwip.com Vice Chair: Mike Dunnam dunnam@woodcock.com Secretary: Steve Weed sjweed@ratnerprestia.com Immediate Past Chair: ratnerprestia.com

Jacques Etkowicz jletkowicz@

Board Liaison: David Ruschke david.p.ruschke@medtronic.com Chairs Emeritus: Manny Schecter Schecter@us.ibm.com Brad Forrest bforrest@slwip.com Mike Stein, stein@woodcockwashburn.com David Clark, dclark@microsoft.com George H. Gates, ggates@gates-cooper.com Kenneth N. Nigon; knnigon@ratnerprestia.com 2014 mid-winter institute issue

Chair: Valentina Boyet valentina.boyet@sap.com Coordinates interactions between ECLC and Corporate Practice Committee Copyright Subcommittee Chair: David Einhorn deinhorn@bakerlaw.com Addresses issues related to securing copyright protection for computer software. Liaison with the Copyright Committee. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee. International Affairs Subcommittee

Tracks changes in the laws of other countries and informs the Committee of these changes. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee. Patents, Legislative Affairs, and Advocacy Subcommittee Chairs: Lance Reich lance@leehayes.com; David Swenson dpswenson@rkmc.com; Jeff Ranck jranck@slwip.com; Robert O’Connell roconnel@qualcomm.com; Justin Dillon justin.dillon@ca.com; Eamon Wall ewall@walltong.com; Track pending legislation, particularly concerning the patenting of electronic and computer technologies. Monitor judicial matters and pending cases, rulemaking, and corporate issues, especially emerging issues. Interfaces with USPTO Relations Subcommittee and other AIPLA Committees as needed (e.g., Amicus, Copyright, Patent Law, Patent Litigation, Patent-Relations with the USPTO, Committee on Legislation, Public Education). Identify law aipla bulletin

review articles and other media of interest to the ECLC and generate responses, in coordination with the larger AIPLA community, as determined necessary. Coordinate a presentation periodically throughout the year during webinars as arranged by the Webinar Subcommittee. USPTO Relations Subcommittee Chairs: Lynn Anderson lynneandersonesq@gmail.com; Mike Stein stein@woodcock.com; Organizes the Partnering in Patents seminar, the annual Brown Bag lunch meetings with TC directors, and manages our Committeeâ&#x20AC;&#x2122;s efforts to provide technical training to PTO examiners. Licensing, Transactions, and Monetization Subcommittee Chairs: Wenjie Li wenjieli@us.ibm.com; Ernie Beffel ebeffel@hmbay.com; Addresses issues concerning licensing, transaction, and monetization of electronic and computer technologies. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee. Professional Programs Subcommittee Chair: John Salazar jsalazar@middreut.com; Vice Chair: Tim Christman tchristman@slwip.com; Michael Drapkin mldrapkin@hollandhard.com;

Electronic and Computer Patent Prosecution Subcommittee Chairs: Tim Bianchi tbianchi@slwip.com; Scott Stinebruner sstinebruner@whepatent.com; Holds periodic electronic round table meetings to discuss current patent prosecution issues. This will likely include at least one webinar per year with the cooperation of the Webinar Subcommittee. Newsletter Subcommittee Chairs: Scott Higdon shigdon@middletonlaw.com; Francisco Castro FCastro@hollandhart.com; Per Larsen PHLarsen@ hollandhart.com; Paul Schramm PMSchramm@hollandhart. com; Gathers updates from the Chair, Vice Chair, and Subcommittee chairs to inform the membership on Committee activities and upcoming events/activities and request and receive articles from the Committee membership.

Food and Drug Chair: Stephen B. Parker Vice Chair: William R. Childs

Responsible for the educational programs presented by the ECLC during stated meetings and the Electronic and Computer Patent Law Summit. Webinars Subcommittee Chairs: Steve Lundberg SLundberg@slwip.com; Thiery Lo tlo@slwip.com; Responsible for on-line education programs presented by the ECLC. Partner with the other Subcommittees to develop content.

The Committee has no business to report.

Technology and Business Subcommittee Chairs: Sandy Godsey sgodsey@ebay.com; Randy Canis rlcanis@express-scripts.com; Addresses the advancement of technology, research, and development in business related computing with a focus on business methods and Covered Business Methods under the AIA. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

Patent Agents Chair: Esther M. Kepplinger Vice Chair: J. Ritu Chander (not pictured)

ECLC Website Subcommittee Chair: Steve Weed sjweed@ratnerprestia.com Maintains ECLC Website and dissemination of information to the membership. The Committee has no business to report. 68â&#x20AC;&#x192;

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2014 mid-winter institute issue

Patent Law

Chair: Marc A. Hubbard Vice Chair: Paul R. Kitch

or defend themselves against patent infringement claims. Speakers will include David J. Kappos (Partner, Cravath, Swaine & Moore LLP and former ‎Under Secretary of Commerce and Director of the US Patent and Trademark Office), Kevin H. Rhodes (Chief Intellectual Property Counsel | President, 3M Innovative Properties Company), Professor R. Polk Wagner (University of Pennsylvania Law School), and Scott J. Pivnick (Partner, Alston & Bird LLP). Barbara Fiacco (Partner, Foley Hoag LLP) will moderate this session. 2014 Annual Meeting: We plan to put on a substantive CLE on a topic to be determined.

Vision, Mission and Values:

Plans for coordination between stated meetings:

The Patent Law Committee provides an open community for the exchange of ideas and concerns on US patent law and underlying policy, disseminates information on recent developments in patent law, develops educational programming on patent law for the membership and policy leaders, assists other Committees with developing educational and other programming, identifies to the membership and AIPLA important issues of patent law, and assists with developing positions on issues of patent law to be advocated by the AIPLA. The Committee will do so without regard to any particular technology.

The leadership of the Committee will coordinate activities via email and teleconferences. Committee leadership intends to have regular, monthly conference calls. The Committee plans to coordinate with the Committee at large via the newsletter, the Microsite, emails, LinkedIn® group posts, and periodic substantive teleconferences.

Projects: Plans and activities for stated meetings: 2014 Mid-Winter: The Committee participated in the Committee Expo held during the MWI. At our booth representatives from the Committee including Marc Hubbard (Chair – Hubbard Law PLLC), Paul Kitch (Vice Chair – Nixon Peabody LLP), Sarah Knight (Chair of PLC Programs Subcommittee – Saliwanchik, Lloyd & Eisenschenk) and Ashok Mannava (Vice Chair of PLC Programs Subcommittee – Mannava & Kang, PC) met with those interested in learning more about our Committee and explained the various opportunities get involved. Participants were invited to take a patent law trivia quiz to win a very coveted AIPLA Patent Law Committee lapel pin. 2014 Spring: Together with the Patent Litigation Committee, the Patent Law Committee will host a CLE on the Patent Reform Legislation. This session will address the patent reform legislation which has been introduced in Congress by Representative Goodlatte and others to deal with the socalled “patent troll” issue. An esteemed panel of speakers from industry, private practice and academia will summarize various provisions of the recent patent reform legislation and will discuss how it may impact your practice. Also, a moderated discussion will be held to discuss whether provisions of the patent reform legislation will be able to curb “patent troll” practices and whether they may have unintended consequences on companies trying to enforce their patents 2014 mid-winter institute issue

Plans for communication with the Committee clusters/ board liaisons: The Committee has regular communications with other Committees as needed such as in planning Joint Sessions at the stated meetings. Advocacy: One of the Committee’s primary objectives is to assist the AIPLA in its Advocacy by monitoring issues that arise concerning the substantive aspects of US patent law and bringing those issues to the attention of the membership and the AIPLA. The Committee gathers input from its members on issues involving patent law, and recommends positions to be taken by the AIPLA. It also drafts, on behalf of the AIPLA, resolutions, and comments in response to requests from governmental agencies concerning patent law. The Advocacy Subcommittee assists the Committee in these efforts. In addition to their efforts in summarizing and soliciting and collecting comments on the NPRMs the Advocacy Subcommittee continues to monitor case law, USPTO publications and NPRMs for issues that may need to be addressed by AIPLA. If an issue is deemed worthy by the Subcommittee, they will make recommendations to the Amicus Committee or prepare a draft resolution for consideration by the Board. Recent activities of the Patent Law Committee relating to Advocacy The Committee has assisted the Patent-Relations with the USPTO Committee in collecting comments from Committee members in response to Federal Register Notices relating aipla bulletin

to (1), the USPTO’s strategic plan for 2014-2018, (2) the searching software-related patent applications, and (3) the identification of the attributable owner of patents and patent applications. Public Education: The Committee is a resource for the Public Education Committee for developing materials for use in Public Education. In January, we reviewed and commented upon educational materials prepared for middle-school students by the Public Education Committee. We will continue to work with the Public Education Committee to insure that issues relating to the public perception of IP law are addressed. Vice Chair Marc Hubbard worked with Michael Piper and the Public Education Committee on coordinating the World IP Day event for Dallas. The event was co-hosted by the Greater Dallas Chamber. Member Service: The Committee serves members of the Committee and the AIPLA through a number of different avenues. First, our substantive Subcommittees provide forums or communities through which Committee members exchange information and thoughts on current legal developments and policy questions. As described above, the Advocacy Subcommittee has solicited and submitted comments to the AIPLA Task Force regarding the Notices of Proposed Rule Making under the AIA. The Patent Law Committee is fortunate to have a technically-diverse membership, enabling it to cover all technologies that arise, including software and the life sciences. Because of the success of the subject matter eligibility Subcommittee, we have expanded its scope to include all issues relating to patentability and renamed it to the Patentability Issues Subcommittee. This Subcommittee is co-chaired by Ben Borson and Gary Cohen. Second, the Committee regularly arranges and sponsors educational programming during the Stated AIPLA meetings, often for CLE credit through its Programs Subcommittee, which is chaired by Sarah Knight of Saliwanchick, Lloyd Eisenschenk and Ashok Mannava of Mannava & Kang. The Subcommittee is responsible for planning educational content during the Committee’s meetings. The Programs Subcommittee has been coordinating with the Professional Programs and the Midwinter Institute Committees, as well as the Online Education Committee, by providing to those Committees ideas for programming, and assistance and resources in connection with producing the programming. Third, the Committee assists other Committees with programming content. Fourth, the Committee informs its members of important legislative and administrative initiatives, and provides a mechanism through which members may contribute 70

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collectively to comments that will be submitted in response to those initiatives. Newsletter The quarterly newsletter will contain articles written by Committee members that highlight current activities of the Committee and important developments relating to the patent system. Daniel Hegner of Reising Ethington is the editor in chief. Other members of the Committee are assisting with the editing process. Social Media The Committee recently set up a LinkedIn® group. The Committee’s intention is to use the group as an additional avenue of providing information to members on current activities and interests of the Committee, and as a forum for Committee members to discuss important topics and to provide feedback to the Committee in connection with its activities. Activities of the Programs Subcommittee •

The Subcommittee assisted with the preparation and hosting of the Patent Law Committee booth during the Committee Rush held at the 2014 AIPLA Mid-Winter meeting in Phoenix.

•

The Subcommittee is planning a CLE session at the Spring Meeting focused on the pending patent reform legislation

Global Outreach: Our Programs Subcommittee will work with the International Education Committee by making available resources and speakers on US patent law, as well as suggest possible topics and program that might be of interest to an international audience. Subcommittees: Patent Policy: Co-Chairs Gary Cohen and Ben Borson. This Subcommittee plans teleconferences and suggests speakers related to patent eligible subject. We are expanding its scope to include developing proactive, forward looking patent proposals such as potential legislative and/or PTO rule making proposals. Professional Programs: Sarah Knight (Chair) and Ashok Mannava (Vice Chair) plan and serve as coordinators for the Committee sponsored CLEs at the stated meeting. Advocacy: Chair S. Gregory Herrman Legislation: Co-chairs Lance Reich and Eric Mirabel – See Advocacy section above. Communications Newsletter: Chair Dan Hegner. The Winter edition of the Patent Law Committee Newsletter is expected to be released soon. Additionally, the Committee has requested articles 2014 mid-winter institute issue

from its members as well as authors to prepare regular columns for the Newsletter. Social Media Mechanical Patent Practice – Co-Chairs Christopher Rothe and William Pegg. The Subcommittee has begun the process of establishing an ongoing partnership with the mechanical technology centers at the USPTO. The purpose of the partnership is to exchange information and ideas, to provide feedback, and to address concerns of practitioners and examiners relating to examination of patent applications in the mechanical arts. Like similar “partners in patenting” programs run by the Electronic and Computer Law Committee and the Biotech and Chemical Practice Committees, our goal is to improve the examination process, and to use the information that we learn to inform our educational and Advocacy efforts. The Subcommittee plans to hold regular conference calls and meetings with representatives of the mechanical technology centers, and then brief the Patent Law Committee on what it learns. The Committee is working on revising its “mission statement” and the “mission statements” of its Subcommittees. We have had miscellaneous calls with Subcommittees to discuss planning for the upcoming year and the potential reorganization of the Subcommittees

Patent Litigation

Chair: Scott J. Pivnick Vice Chair: Matthias A. Kamber

Patent Reform Subcommittee – In late 2013, the House of Representatives passed an amended version of Representative Goodlatte’s bill and the Senate held its first hearing on Senator Leahy’s proposed patent reform bill. The bills have received much attention from patent practitioners and the public at large, and the White House continues to press patent improvement and litigation reform issues. Accordingly, the Subcommittee will monitor these efforts and report them to the Patent Committee, as well as interact with the Patent Law’s Committee’s related Subcommittee and AIPLA leadership as necessary.

Conference is in the process of amending the Federal Rules of Civil Procedure, and many of these amendments will impact patent litigation. The Subcommittee will monitor the proposed changes and provide guidance to the Patent Litigation Committee and AIPLA, as well as possibly provide written comments to the Judicial Conference on the proposed changes. This Subcommittee will also work closely with the Patent Reform Subcommittee. Model Patent Jury Instructions – Because there have been no updates made in the last year, the Subcommittee is reviewing the current Model Jury Instructions to see if they need to be updated based upon intervening case law. This Subcommittee will then continue to monitor legal developments to determine whether further amendments are necessary, preferably on a quarterly basis. Model Patent Rules Subcommittee – This Committee has undertaken an analysis of current patent rules in place from various district courts and attempt to reach consensus on a set of Model Patent Rules. We will then work with AIPLA Board to see if we can get them to endorse the Model Rules and advocate for their adoption by the Judicial Conference and/or the district courts. Professional Programs Subcommittee – This Subcommittee is developing ideas for programs to be held at the various stated meetings, as well as webinars. The Subcommittee will submit ideas to the Professional Programs Subcommittee and lobby to have them included in plenary sessions at stated meetings, as well as provide coordinators for any topics that are accepted. Diversity Subcommittee – This Subcommittee is working with the AIPLA Diversity in IP Law Committee and Women in IP Law Committees to find sponsors for and plan presentations at various colleges and universities with large numbers of female and minority engineering students to educate these students about opportunities in IP Law. The plan is to expose these students to the opportunities available for technically trained attorneys, with the goal of increasing the numbers of women and minorities who choose careers in patent law. Committee Web Page Subcommittee – This Subcommittee is keeping the Committee webpage up to date.

Civil Procedure Amendment Subcommittee – The Judicial 2014 mid-winter institute issue

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Patent-Relations with the USPTO Chair: Gregory D. Allen Vice Chair: Nicholas P. Godici

Advocacy The Committee continues to provide comments and advice to the AIPLA Board as requested, particularly pertaining to rulemaking under the America Invents Act. Public Education & Member Service The Committee put on a two-part Webinar series on the new review proceedings with the AIPLA Online Committee in May. At the Annual Meeting, we had a Committee meeting with the traditional “State of the Board” presentation by a member of the Board followed by a Q&A session from the audience.

The Committee has no business to report.

Here is quick update on the progress we have made on our four Subcommittees that were formed at the Annual Meeting.

Chair: Brad Pedersen Vice Chair: Steven M. Auvil

Steve Auvil is heading our Program Subcommittee. Unfortunately, Steve was unable to attend the Mid-Winter Institute, but he is working on setting up the first of what we hope will be monthly conference calls for the Committee that should start in March. We currently have identified both a sponsor and our first presenter at these hour-long monthly call-in meetings. Also, if anyone has an interest in helping to start a bi-monthly newsletter, we are looking for volunteers. New Committee member Shawn Ambwani from Unified Patents has volunteered to underwrite the monthly conference calls. Shawn also pointed out an interesting update on Review Proceeding statistics prepared by the Harness Dickey firm.

Vision, Mission and Values

Rick Neifeld and Jason DeMont are heading up our Digest Subcommittee that is looking to generate summaries of important PTAB (and eventually CAFC) decisions in our area. We are talking to the Board about whether we can bulk access pdfs from the PRPS Website to better facilitate this process. In the meantime, we are encouraging Committee members to join the Yahoo group that Rick runs to keep up to date and have a forum for asking questions.

USPTO Inter Partes Patent Proceedings

The areas of responsibility of the USPTO Inter Partes Patent Proceedings Committee include all aspects of post-grant patent practice in the US, including interferences, post-grant review, inter partes review, inter partes reexamination, ex parte reexamination, supplemental examination, derivation proceedings, transitional program for covered business method patents, and reissue proceedings. The Committee plans to continue to study issues raised by the Final Rules and Practice Guidelines for the Trial Division of the Patent Trial and Appeal Board, and by the members of the Committee, related to post-grant proceedings in the USPTO. The Committee will consider Trial Division decisions and orders, Federal Circuit opinions, possible legislation relating to post-grant proceedings and potential additional rule changes concerning formal and substantive issues concerning such proceedings. After receiving approval from the Board, the Committee will report any approved recommendations to the USPTO and the Trial Division, as appropriate, on behalf of AIPLA. 72

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Bruce Stoner is heading up our Order Nominations Subcommittee that is identifying cases which we will put up for Committee vote on whether to make recommendations for designating cases as Representative status by the PTAB, or possibly even Precedential/Informative status. We are still working through the logistics with the AIPLA Board on whether these recommendations can be made by the Committee, or whether they need to be routed through the normal channels for Board approval. Bruce and his group have already identified several interesting decisions that we hopefully can consider and vote on using Survey Monkey or a similar email voting system. Todd Baker and Todd Walters have been talking with Board members on behalf of our Committee to see about arrangements for periodic but informal get-togethers with the Trial Division APJs as a forum to exchange feedback and ideas for improving inter partes proceedings at the 2014 mid-winter institute issue

Board. Todd Walters used to run these get-togethers for the old “interference” Committee. Currently, it looks like the Trial Division is thinking of something a little more formal given the larger and more diverse character of the review proceedings bar—perhaps quarterly meetings open to the public at the USPTO conference center in Alexandria.

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Specialized IP & Policy Committees Alternative Dispute Resolution Chair: J. William Frank III Vice Chair: John M. Delehanty

but not limited to the Patent Law Committee, the Patent Litigation Committee, the Copyright Law Committee, the Trademark Law Committee, the Antitrust Law Committee, the Chemical Practice Committee, the Electronic and Computer Law Committee, the Biotech Committee, and the Trademark Litigation Committee. Public Education: Amicus briefs originating from internal Committee discussion are circulated to other IP associations by one of our sister Committees. In addition, the amicus briefs are posted on the AIPLA Website.

The Committee has no business to report.

Amicus Chair: Jerry R. Selinger Vice Chair: Guy Donatiello (not pictured)

Member Service: See above. In addition, briefs filed by AIPLA are posted on its Website. The amicus Committee participated in the Committee Expo during the Mid-Winter meeting. Global Outreach: See above. In addition, briefs filed by AIPLA are posted on its Website. Subcommittees: None

Antitrust Law

Chair: Geoffrey D. Oliver Vice Chair: Paul Ragusa Vision, Mission and Values: The Committee’s overall mission is to scrutinize judicial and administrative decisions which involve significant issues of law or practice which affect intellectual property, and make recommendations to the Board of directors that amicus briefs be filed (or not filed) in appropriate circumstances. The Committee’s overall mission involves its own due diligence, as well as responding to requests from party advocates, members of substantive Committees, and the Board. The Committee also makes recommendations to the Board as to brief drafters, and members often volunteer their services pro bono to do so.

The Committee has no business to report.

Advocacy: As set forth above, much of the Committee’s work relates to Advocacy and Member Services. The Committee routinely seeks input from whichever substantive Committees might have interest in a judicial or administrative decision, including 74

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Emerging Technologies Chair: Robert Capriotti Vice Chair: Denise M. Kettelberger

speaker: Margaret Macdonald, Director of the ITC’s Office of Unfair Import Investigations will talk about New Developments at OUII and How to Work with OUII in Section 337 Investigations at the ITC. At our Committee meeting on June 26, we hope to have a panel presentation from some or all of the Commissioners’ Attorney-Advisors on the Role of Commissioner AttorneyAdvisors at the ITC. We hope over the Summer and Fall to identify one or more topics on which the Committee can take Advocacy positions in support of the Commission’s activities and Section 337. Subcommittees:

No business to report at this time.

International Trade Commission Chair: James B. Altman Vice Chair: Michael L. Doane (not pictured)

Recent activities: The Committee prepared to assist in potentially filing an amicus curiae brief in connection with the ITC’s request for rehearing or rehearing en banc at the Federal Circuit in Suprema, Inc. v. International Trade Commission. Had the Federal Circuit requested briefing (which it did not do), the brief, if submitted, would have addressed the underlying panel decision holding that the US International Trade Commission does not have authority to issue an exclusion order based on induced infringement by an importer. The Committee met on March 27. Our guest speaker was Juliana Cofrancesco, Attorney-Advisor to Commissioner Broadbent. Ms. Cofrancesco addressed “Some of the Recent Section 337 Rule Changes and, As Important, What Other Changes Do You Think We Should Make?” The Committee will meet on April 24 to discuss future projects and Subcommittee structure and membership. Future Projects: At our Committee meeting at the AIPLA Spring Meeting (Friday, May 16, 3:30 – 4:30), we will have a featured 2014 mid-winter institute issue

We are in the process of establishing Subcommittees. We intend to establish Subcommittees on: •

Advocacy (public affairs, amicus, legislative, and other public positions)

•

AIPLA-wide programming and joint programming with other AIPLA Committees

•

Committee programs (substantive presentations at our Committee meetings)

•

Current/recent developments at the ITC and Federal Circuit related to Section 337

•

Web (Committee’s web page)

Legislation

Chair: Ann Mueting Vice Chair: Kenneth Nigon

Vision, Mission and Values: The overall mission of the Committee is to support the Board and facilitate rapid consideration of legislative proposals. This includes generation of proposals, as well as consideration of both internally-generated and externally generated proposals. The Committee also works closely with the various substantive law Committees to ensure that the Board has feedback from the relevant substantive law Committees on legislative proposals.

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The Committee on Legislation supports the Vision of the organization by continually seeking to improve the laws governing intellectual property rights, by considering members views as represented by the Committee membership and substantive law Committees with whom we coordinate and communicate, and by supporting the Board and leadership of the AIPLA in advocating on the Congress. The Committee on Legislation supports the Associationâ&#x20AC;&#x2122;s Mission by keeping members informed regarding legislative developments and initiatives and advocating for fair and effective intellectual property laws. The Committee serves the Association by generating legislative proposals and providing to the Board and the leadership of the Association commentary and views of the membership on various legislative proposals. Projects: Plans for stated meetings: The Committee members will meet at the stated meetings and discuss outstanding issues. Plans for coordination between stated meetings: The Committee members will have teleconferences as needed to discuss outstanding issues. Plans for communication with the Committee clusters/board liaisons: The Committee leadership will participate in any cluster meetings and teleconferences. Advocacy: The Committee supports the Board and leadership, as requested. This includes generating, reviewing, commenting on, and preparing legislative proposals, positions on legislative proposals, and testimony regarding legislative proposals. We work closely with the substantive law Committees in doing so and serve a liaison between the Board and the substantive law Committees to ensure that proposals are carefully considered by persons within the organization having the relevant expertise and experience to provide to the Board sound recommendations and the studied judgment of the members. The Committee on Legislation is currently monitoring several issues, including: proposals governing Non-Practicing Entities, patent litigation reform, double patenting, copyright issues, trademark issues and other issues on which the Board has requested assistance from the Committee.

provide the Board with a sense of the membership on the various issues that are considered by the Committee. Global Outreach: As the Committee is directed to US legislation, we consider and coordinate primarily regarding US legislation. Nonetheless, a number of legislative proposals require consideration of various international issues, as well as harmonization with other countriesâ&#x20AC;&#x2122; laws. The Committee addresses these issues in the regular course of its work. Subcommittees: The Committee on Legislation addresses issues, in coordination with substantive law Committees, in various areas, including: Copyright Industrial Designs Patents/Litigation PTO/Agency Practice Trademark Committee membership is by appointment.

Licensing and Management of IP Assets Chair: Robert O. Lindefjeld Vice Chair: Penny Lynn Prater

No business to report at this time.

Public Education: The Committee on Legislation works primarily through the Board, the leadership of the Association, and substantive law Committees. Member Service: The Committee on Legislation actively solicits the substantive law Committees in performing its mission. We seek to 76â&#x20AC;&#x192;

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Mergers and Acquisitions

Â Chair: Peter E. Mims Vice Chair: Carey C. Jordan

No business to report at this time.

Standards and Open Source Co-Chair: Monica M. Barone Co-Chair: Christopher J. Dervishian

No business to report at this time.

Trade Secret Law Chair: Janet Craycroft Vice Chair: John F. Marsh

No business to report at this time.

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â&#x20AC;&#x192; 77

New Members

The following applications for membership are being published as of June 13, 2014 in accordance with Article II of the By-Laws. We welcome all of our new members. REGULAR Paul Ashley Ainsworth Washington, DC Philip Alden Santa Clara, CA Adam R. Alper San Francisco, CA Jennifer Sheehan Anderson Ann Arbor, MI Jeremy Anderson Wilmington, DE Joshua B. Aronson Atlanta, GA Jonathan E. Bachand Washington, DC Andrew S. Baluch Washington, DC Jamie B. Beaber Washington, DC Michael Beylkin Denver, CO Asim M. Bhansali San Francisco, CA Carole A. Boelitz Redmond, CA Heather Champion Brady New Brunswick, NJ Daniel H. Brean Pittsburgh, PA Sandra Brown Boston, MA Theodore Budd Minneapolis, MN 78â&#x20AC;&#x192;

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Charles A. Burke Winston Salem, NC

Thomas Dover Los Angeles, CA

John J. Gresens Chicago, IL

Melinda Buurma Royal Oak, MI

Matthew D. Durell Boston, MA

George Hopkins Guy Palo Alto, CA

Christopher Byrne Menlo Park, CA

Daralyn J. Durie San Francisco, CA

Arlene Hanks Morrisville, NC

Cynthia Caren Cannady Altadena, CA

Thomas J. Durling Philadelphia, PA

James R. Hannah Menlo Park, CA

Dale Cendali New York, NY

Erik F. Dyhrkopp Farmington Hills, MI

Lawrence Harbin Washington, DC

Jay C. Chiu Los Angeles, CA

Marcus Efthimiou Owego, NY

Jeffrey D. Harty Des Moines, IA

J. Trevor Cloak Philadelphia, PA

Ryan W. Falk Cleveland, OH

Brent A. Hawkins Chicago, IL

John J. Cotter Boston, MA

Raymond R. Ferrera Houston, TX

Thomas B. Hildebrandt Atlanta, GA

Matthew Cutler St. Louis, MO

MaryAnn Fick Southfield, MI

Timothy Hsieh Tysons Corner, VA

Dale J. Davis Greenville, SC

Magdalena Mik Fincham Ridgefield, CT

Jason Huang Houston, TX

William E. Davis Longview, TX

Dan Fiul Washington, DC

Leanne M. Innet North Charleston, SC

Maryanne DeAngelo Cardiff by the Sea, CA

Frank Gao Columbus, OH

Bethew Bertrand Jennings Houston, TX

Patrick R. Delaney Silver Spring, MD

Joshua Gigger Salt Lake City, UT

Sulay D. Jhaveri Washington, DC

Peter Deluca Melville, NY

Adam Gill Chicago, IL

Paul G. Johnson Park City, UT

Bruce D. Derenzi New York, NY

Matthew J. Golden East Hanover, NJ

Eran Kahana Minneapolis, MN

Jay Deshmukh Washington, DC

Michael R. Greco Radnor, PA

Andrea Kamage Oegstgeest, Netherlands

Azuka C. Dike Chicago, IL

Neil F. Greenblum Reston, VA

Yun Jeong Kim Los Angeles, CA 2014 mid-winter institute issue

Lawrence B. Kong Palo Alto, CA

David T. Mcdonald Seattle, WA

Ali S. Razai Irvine, CA

Jonathan Pieter Van Es Chicago, IL

Katherine Kowalchyk Minneapolis, MN

Matthew B. McFarlane New York, NY

Todd Reed Austin, TX

Steven H. VerSteeg Houston, TX

Anne-Kathrin Kroemer San Francisco, CA

Rebecca Mather McNeill Belmont, MA

Nicole E. Reifman Chicago, IL

Jason M. Vogel New York, NY

William Krovatin Rahway, NJ

Jill Ann Mello Boston, MA

Marcia J. Rodgers Kansas City, MO

Anandita Vyakarnam Short Hills, NJ

Clark W. Lackert New York, NY

Daniel J. Melman New York, NY

Curtis G. Rose Corvallis, OR

Robert M. Wasnofski New York, NY

Daniel D. Ledesma San Jose, CA

Charles B. Meyer The Woodlands, TX

Michelle Safer Austin, TX

Brian D. Wassom Bloomfield Hills, MI

Robert B. Levy Neshanic Station, NJ

Neil D. Miles Syracuse, NY

Phillip Samouris San Diego, CA

Seth A. Watkins Arlington, VA

Peng Li Los Angeles, CA

Justin Blair Miller Harrison Township, MI

Jonathan Charles Sanders Palo Alto, CA

Kenneth J. Weatherwax Los Angeles, CA

Dominic Lindauer Austin, TX

Robert B. Mitchell Seattle, WA

Jeffrey Sargent Battle Creek, MI

Chrisotpher Wheeler Washington, DC

Nikki Little Chicago, IL

Mita Mukherjee Gaithersburg, MD

Adam P. Seitz Overland Park, KS

Kristin Michelle Whidby Washington, DC

Thomas Lizzi Harmony, PA

John Frank Murphy Philadelphia, PA

Mark R. Shanks Washington, DC

Mark D. Wieczorek San Diego, CA

Thomas L. Lockhart Grand Rapids, MI

Jeffrey A. Nelson Seattle, WA

Laura F. Shunk Cuuyahoga Falls, OH

David E. Wildman South San Francisco, CA

Nathan Lowenstein Los Angeles, CA

Walter Ottesen North Potomas, MD

Jessica Bromall Sparkman Los Angeles, CA

Douglas J. Wood New York, NY

Lionel L. Lucchesi St. Louis, MO

Danielle Anne Phillip Chicago, IL

Eric Stenshoel New York, NY

Limin Zheng Redwood City, CA

Aaron Mace Pittsburgh, PA

Andrew F. Pratt Washington, DC

Lee Stepina Minneapolis, MN

Robert F. Zielinski Jenkintown, PA

Dave Maki Seattle, WA

Lauren T. Rabinovic Horsham, PA

Robert M. Sullivan Tucson, AZ

ACADEMIC Robert H. Hu San Antonio, TX

Timothy Manning Cleveland, OH

Robert Ray Neubiberg, Germany

Rachelle H. Thompson Raleigh, NC

Jose R. Mata Bend, OR

Paul M. Raya Chicago, IL

Edward Tracy Alexandria, VA

2014 mid-winter institute issue

Shine S Tu Morgantown, WV

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FOREIGN AFFILIATE Simon Ayrton London, United Kingdom Anne Buchet Dardilly Cedex, France Mariana Bullrich Buenos Aires, Argentina Kristina Cornish London, United Kingdom Paul Derry London, United Kingdom Colin B. Ingram Ottawa, ON Canada Andrew R. O. Jones Toronto, ON Canada Nevin Jacob Koshy Dubai, United Arab Emirates Rodrigo Maior Rio de Janeiro, Brazil Richard Mair London, United Kingdom Julia Matl Munich, Germany Melissa A. McGrath Sydney, Australia Amandine Metier Paris, France Richa Pandey Gurgaon, India Raymundo Perez Alvaro Obregon, Mexico Vincent Pons Dardilly Cedex, France Matthias Roessler Duesseldorf, Germany

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Isabelle Romet Paris, France Hiroshi Sakamoto Kobe, Hyogo, Japan Volker Spitz Munich, Germany Javier Ungria Madrid, Spain Takafumi Watanabe Kobe, Hyogo, Japan Jonathan White Dublin, Ireland Alex Wilson London, United Kingdom Eduardo Zamora Paramus, NJ GOVERNMENT Virginia Ackerman Arlington, VA Jimmy Doan Washington, DC Chad Hardaway Columbia, SC Margaret Macdonald Garrett Park, MD Meghan Sheehan Dayton, OH Ariana Zimbouski Alexandria, VA GOVERNMENT AFFILIATE Steven Keller Windsor, CT Jacob S. Simpson Baton Rouge, LA

IP PROFESSIONAL AFFILIATE Alan J. Cox San Francisco, CA Rudy Gaines Chapel Hill, NC Benjamin Hoffmann London, United Kingdom E. Deborah Jay San Francisco, CA Michael Jeffords Chicago, IL Carol Ludington Willernie, MN Matthew Lynde San Francisco, CA Mark Peterson Chicago, IL Sara D. Rinke Chicago, IL Avi Rosman New York, NY Sigram Schindler Berlin, Germany Jennifer Vanderhart Washington, DC

Nancy Brennan Boston, MA Rayhao Chung Plano, TX John Joseph DiMarco Stamford, CT Michael H. Durbin Washington, DC Michael A. Erbele Minneapolis, MN Michael J. Flynn Wilmington, DE Hang Gao Jersey City, NJ Brian Goldberg Alpharetta, GA Mia Mitchell Grandpre New Orleans, LA Daniel Griffith Columbus, GA Charles Hagadorn, III Seattle, WA Emily Holmes Denver, CO Heidi C. Hood Greenville, SC

JUNIOR Andres F. Arrubla Washington, DC

George Howarah Annandale, VA

Stephen Barrett New York, NY

Guorong Gordon Huang Poway, CA

Jennell Christine Bilek Minneapolis, MN

Andrea Hicks Jasinek Portland, OR

Adam Boger Boston, MA

Eric L. Johnson Louisville, KY

Pamela Boling Santa Rosa, CA

Tiffany A. Johnson Alexandria, VA 2014 mid-winter institute issue

Marya Jones Millburn, NJ

Gayatry S. Nair Atlanta, GA

Samar Shah Marietta, GA

Kent Jordan Atlanta, GA

Zhi-Xiang Oh Seattle, WA

Charlie Shonkwiler Redmond, WA

Mamoru Kakuda McLean, VA

Hyunseok Park Washington, DC

Kyle Siegal Phoenix, AZ

Matthew J. Kinnier Albany, NY

Yasin Kamaal Patterson Omaha, NE

Benjamin T. Sirolly Washington, DC

Anthony M. Klemptner Northville, MI

Anne W. Pearlman Washington, DC

David Spellman Gilbert, AZ

Drew Koning San Diego, CA

James Pechacek St. Paul, MN

Jonathan M. Spenner Chicago, IL

Aaron J. Kraft Boulder, CO

Jason M. Perilla Alpharetta, GA

Erin Elizabeth Stewart Tulsa, OK

David Kuklewicz Atlanta, GA

Lauren Murphy Pringle Dallas, TX

Blake D. Stovall Austin, TX

Blain Lagergren Kansas City, MO

Anna Quinn Overland Park, KS

Ryan M. Truesdale Naperville, IL

PATENT AGENT Heather Bakalyar Baltimore, MD Elizabeth R. Healey Pittsburgh, PA Michael J. Herman Wilmington, DE Christina L. Mangelsen Greenville, SC Christopher Persaud Winnetka, CA Earl Jennings Taylor Clayton, OH PATENT AGENT–JUNIOR David S. Ampagoomian Arlington, VA Nikki Charles Laurelton, NY Nicholas Collura Philadelphia, PA

Seth Lindner Austin, TX

Ryen Christopher Rasmus McLean, VA

Mary Katherine Vigness Washington, DC

Zhiqiang Liu Bridgewater, NJ

Sivananda Reddy Bosotn, MA

Dane Voris San Diego, CA

Jonathan H. Love Salt Lake City, UT

David L. Reider Oldsmar, FL

Rex W. Watkins Salt Lake City, UT

Samantha Quigley Lawrence Arlington, VA

Jonathan Markman Arlington, VA

Nathan Renov Woodmore, NY

Travis Daniel Whitsitt Fort Collins, CO

Christopher D. Lynch Santa Monica, CA

Tyler Todd McAllister Seattle, WA

Chad Rothschild Akron, OH

Kristen M. Wickham Woodcliff Lake, NJ

Steven M. Mieskoski Strongsville, OH

Jason B. McCammon Salt Lake City, UT

Carrie Ryan Gallia Minneapolis, MN

Daniel Zeilberger Washington, DC

Lydia A. Scarpelli Chicago, IL

Kenneth McClure Dallas, TX

Christopher Dale Ryan Buffalo Grove, IL

Lihua Zheng New York, NY

Victoria L. Vaughn Los Angeles, CA

Christopher Mckeon Houston, TX

Michael Y. Saji Boston, MA

JUDICIAL Barbara M.G. Lynn Dallas, TX

Raffaello Verardi Washington, DC

Claire J. Mitchell Seattle, WA

John M. Schafer Chicago, IL

2014 mid-winter institute issue

Mihal E. Gross Arlington, VA

Kangmee M. Woo Dallas, TX aipla bulletin

PARALEGAL/ TECHNICAL ADVISOR AFFILIATE Moin Uddin Adeni Karachi, Pakistan Nicholas Ernest Bencivenga Cambridge, MA Calvin Michael Brien Great Mills, MD Imtiaz Ahmed Chughtai Karachi, Pakistan Justin Clark Phoenix, AZ Natalie Galley Boston, MA Shirley Hopkins Baskin New York, NY Michelle Leibelt Seattle, WA Kyle Mahoney Washington, DC Maureen Manson Summit, NJ Victoria J. O’Connor Washington, DC Jeretha C. Pearson Plano, TX Sherri A. Phillips Phoenix, AZ Tarryn Pillay-Diaz Westlake Village, CA Xuan Ren St.Louis, MO Kelly Smoker Keswick, VA Janet Stoy Annandale, VA 82

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USPTO PROFESSIONAL Howard Sanders Baltimore, MD

Jae Young Chon William Mitchell College of Law St. Paul, MN

Samy Harmoush Syracuse University College of Law Syracuse, NY

STUDENT Christopher Asmar Thomas Jefferson School of Law San Diego, CA

Timothy Chou University of Washington School of Law Seattle, WA

Siamak Hefazi California Western School of Law San Diego, CA

Aleksander Danielyan University of California Irvine, CA

John C. Heinbockel American University, Washington College of Law Washington, DC

Damon P. Banks George Washington University National Law Center Washington, DC Joanna Barakat Fordham University School of Law New York, NY Janelle Barriero Stetson University College of Law Riverview, FL Lindsay Berkstresser Pennsylvania State University, Dickinson School of Law Waterfall, PA

Nicole DeAbrantes George Washington University National Law Center Arlington, VA Winsome A. Dunn Emory University Atlanta, GA Alexandra El-Bayeh American University, Washington College of Law North Bethesda, MD Taylor Felton Texas Southern University Richmond, TX

George Blazeski Seton Hall University School of Law hoboken, NJ

Laura Figel Santa Clara University School of Law Santa Clara, CA

Megan Briskman New York University School of Law New York, NY

Jonathan Browning Fitzgerald University of Kansas School of Law Lenexa, KS

Thomas J. Brodbeck University of Dayton School of Law Dayton, OH Larysa Castro Pace University School of Law New York, NY

David Gable University of California, Hastings College of Law San Jose, CA Aryane Garansi The Catholic University of America School of Law Silver Spring, MD

Bradley Hyde University of Arizona College of Law Tucson, AZ Adriana Ibarra Vazquez Mercer University Law School Stockbridge, GA Daniel T. Kane The Catholic University of America School of Law Silver Spring, MD Dewey Kang Fordham University School of Law New York, NY Yoonhee Kim American University, Washington College of Law Rockville, MD Liliya Kovalenko Atlanta’s John Marshall Law School Lawrenceville, GA Tyler C. Krauth Atlanta’s John Marshall Law School Atlanta, GA Jacob Lederle The Catholic University of America School of Law Fredericksburg, VA 2014 mid-winter institute issue

Wei-Ting Liu University of Arizona College of Law Tucson, AZ

James Morris American University, Washington College of Law Manassas, VA

Jacob Mace George Mason University School of Law Arlington, VA

Erik Andrew Nackerud Lewis and Clark Law School Portland, OR

Christopher Machado University of Miami School of Law Miami, FL

Kaustubh Nadkarni Franklin Pierce Law Center Hooksett, NH

Rene E. Mai The University of Texas School of Law Friendswood, TX Yvonne Marialaki University of La Verne Whittier, CA

Isabella V. Ortiz John Marshall Law School Albuquerque, NM Bryn E. Owen University of Miami School of Law Miami, FL

Mark Mashack George Washington University National Law Center Washington, DC

Ronald H. Park Yeshiva University, Benjamin N. Cardozo School of Law New York, NY

Katherine M. Maskell The Ohio State University College of Law Westerville, OH Tunisia

Gerald Eames Porter George Mason University School of Law Arlington, VA

Robert Vincent Mazzola University of California, Hastings College of Law San Francisco, CA

Geoff Quelch University of Denver College of Law Westminster, CO

Lauren McDonald Loyola Law School Los Angeles, CA

Arjun Rangarajan University of California at Los Angeles School of Law San Diego, CA

Charu Miglani Franklin Pierce Law Center Concord, NH Jeremy Wayne Miller George Mason University School of Law Arlington, VA

Christine Rea American University, Washington College of Law Washington, DC Philip Christopher Reichel Yeshiva University, Benjamin N. Cardozo School of Law New York, NY

2014 mid-winter institute issue

Daniel Roth Chicago-Kent College of Law, Illinois Institute of Technology Wheaton, IL Erica Rothenberg George Washington University National Law Center Petaluma, CA Vincent Rotty William Mitchell College of Law Rochester, MN Mark Sarcone University of Wisconsin Law School Madison, WI Kiwon Seo Santa Clara University School of Law Santa Clara, CA Saloni Singh George Washington University National Law Center washington, DC Paul Smelcer Washington University School of Law St. Louis, MO Jared Smith Saint Louis University School of Law Saint Louis, MO Russell M. Steinbrenner Marquette University Law School Saint Paul, MN Lauren Stewart Arizona State University College of Law Phoenix, AZ

Brandon R. Theiss Rutgers, State University of New Jersey New Brunswick, NJ Woli Urbe Yeshiva University, Benjamin N. Cardozo School of Law Florham Park, NJ Beau Walker University of California at Los Angeles School of Law Mission Viejo, CA Jennifer J Wehrman Creighton University School of Law Omaha, NE Robyn T. Williams Drexel University School of Law Philadelphia, PA Michael Wolfe George Washington University National Law Center Bartlesville, OK Morgan Xu George Washington University National Law Center Washington, DC Racquel Yarmish Yeshiva University, Benjamin N. Cardozo School of Law Brooklyn, NY Montra Yazdani George Washington University National Law Center Washington, DC Bolin Zhang University of Arizona College of Law Tucson, AZ

Andrew John Sutton George Washington University National Law Center San Diego, CA aipla bulletin

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• Post-grant proceedings after the AIA

October 23-25, 2014 Marriott Wardman Park Hotel Washington, DC

• 101 invalidation in view of CLS, Bilski, and Prometheus • IP and Regulatory Protection in the Pharmaceutical Field in Latin America • The Unified Patent Court in the European patent litigation landscape • Best Practices in Trade Secret Protection and the latest in Cyber Security Law and Standards

Here’s a Sneak Peek at What We Have in Store for You—

• Year in Review: Trademark, Copyright, Trade Secret and Patents

• EPO President— Benoît Battistelli—Thursday Luncheon keynote speaker

Save the Date!