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2016 Midwest Intellectual Property Institute
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Approved for 7.0 hours of CLE credit, including 1.0 hour of ethics and professionalism credit in Kansas and Missouri.

5/6/2016
When: Friday, May 6, 2016
Registration: 8:30 a.m. - Adjourns: 4:35 p.m. (lunch is included in registration fee)
Where: Sprint Corporation
6050 Sprint Pkwy.
(Sprint Campus)
Overland Park 66211
United States
Contact: Dawn Phoenix
785-861-8811


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On line registration for this event is now closed.  However, space is still available.  To register, please call 785-234-5696 between 8:00 a.m. & 5:00 p.m.  Electronic program materials can be emailed to you at no cost.  A limited number of paper materials will be available for purchase at the program for $30. Please let the KBA representative know your preference. 

 

Approved for 7.0 hours of CLE credit, including 1.0 hour of ethics and professionalism credit in Kansas and Missouri.


Course Schedule

8:30 a.m. • Registration & Continental Breakfast

9:00 a.m. • To Tell the Truth: IP Ethics is No Game Show
Michelle Galloway,
Cooley LLP, Palo Alto, California

This seminar addresses ethics in IP practices including: the duties of loyalty (conflicts and disqualification); duty of candor (including recent cases involving misrepresentation or falsification of evidence); duties related to confidentiality and privilege; the duty to supervise; and the USPTO Code of Professional Conduct and USPTO enforcement.

9:50 a.m. • Developments in AIA Post Grant Proceedings by Tom Irving
Thomas L. Irving, Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP, Washington D.C.

Tom Irving will discuss recent developments in AIA post-grant proceedings, IPRs and PGRs, as Patent Trial and Appeal Board case law matures and the patent bar begins to get some judicial guidance from the Federal Circuit. The IPR petition grant rate and the claim cancellation rate both remain high. Mr. Irving will focus on some take-home lessons learned so far so practitioners can try to draft and prosecute U.S. patents to enhance the chances of withstanding litigation and AIA post-grant proceedings.

10:40 a.m. • IP Attorney of the Year Award Presentation

10:45 a.m. • Break

10:55 a.m. • Looks Matter: Strategic IP Considerations for Product Design IP Protection and Enforcement
Christopher V. Carani,
McAndrews, Held & Malloy, Ltd., Chicago, IL

In the world-wide battle royale between consumer tech titans Apple and Samsung, design rights have taken center stage. In the US, a jury recently awarded Apple $1.05B, representing at the time the largest US patent infringement damages award of all time. The lion’s share of the award relates to Samsung’s infringement of US design patents, which are before the United States Supreme Court.

In the wake of this blockbuster verdict, companies and designers the world over are taking a second, hard look at design rights. In this session, leading design patent attorney Christopher V. Carani will discuss the U.S. Supreme Court’s 1871 design patent case Gorham v. White (spoons) and also the on-going battle of Apple v. Samsung (smartphones). He will discuss cutting edge concepts for protecting and enforcing not only traditional industrial design, but also graphic user interfaces and icons.

11:45 a.m. • Lunch (provided)

1:00 p.m. • Patenting Diagnostic Methods after Prometheus
Courtenay C. Brinckerhoff,
Foley & Lardner LLP, Washington D.C.

A review of Supreme Court and Federal circuit decisions after Prometheus and patent office guidance on patenting diagnostic methods. Possible claim strategies will be discussed.

1:50 p.m. • Responding to Change in the IP Landscape
John P. Mulgrew,
Shook, Hardy & Bacon LLP, Seattle, Washington
Brian J. Malm, U.S. Patent Agent, AOL Inc.

One of the macro trends in IP law has been that significant regulatory and legal changes are causing people to rethink previously well-established strategies, and the impact of these changes are far reaching. Well established strategies for portfolio development, risk mitigation, outbound licensing and patent litigation are open for change. Questions like “how many patents should we file?”, “how do we control litigation costs?”, and “how can our patent portfolio help us compete in the marketplace” are being answered differently today than even just a few years ago. This presentation will discuss some of the observations about how different companies and law firms are responding to these changes.

2:40 p.m. • Break

2:55 p.m. • Copyright Developments – A Year in Review
Mark H. Wittow,
K&L Gates LLP, Seattle, Washington

Mark Wittow’s presentation will look at noteworthy recent decisions and pending cases, including fair use (Google Books and other searchable databases, APIs, viral videos), copyrightable subject matter (cheerleading uniform design, Klingon/stardates, monkey selfies, yoga poses, acting performances), music licensing, substantial similarity (Blurred Lines) and termination rights, and note pending legislative and administrative developments.

3:45 p.m. • Disparaging Trademarks, the First Amendment, and the Impact on Other Statutory Objections
Jasmine Abdel-khalik,
UMKC School of Law, KCMO

In In re Tam, the Federal Circuit held that the Lanham Act disparaging trademark prohibition is unconstitutional. While both a decision on whether to file a petition for certiorari and the Fourth Circuit Blackhorse decision are pending, it is worth exploring whether similar reasoning could apply more broadly to the Lanham Act.

4:35 p.m. • Adjourned

 

Program Sponsors


 R2FACT Product Development


Shook, Hardy & Bacon LLP


Kutak Rock LLP


Hovey Williams LLP


Lathrop & Gage LLP

 

 

 

 

Presenters

Jasmine Abdel-khalik has been an Associate Professor at the University of Missouri-Kansas City School of Law for more than a decade. She teaches courses in the intellectual property, unfair competition, and commercial realms, including Intellectual Property, Business Torts & Unfair Competition, Intellectual Property Litigation, Advance Trademark, and Contracts I and II. She has also guest lectured about intellectual property in several entrepreneurship classes, both at the Law School and in the Executive MBA program. Professor Abdel-khalik has been honored to receive the 2010 Elmer F. Pierson Good Teaching Award and the 2012 and 2014 Outstanding Professor Award at the law school, as selected by the law school graduating class.
Interested in how language within intellectual property interests affect broader social concerns, Professor Abdel-khalik’s research focuses on various aspects of trademark and copyright law as well as contract formation and interpretation issues. Most recently, she has been examining how intellectual property doctrine may re-entrench existing stereotypes and biases as well as the intersect of intellectual property laws and protection of speech. Her research was recognized by her colleagues in 2007 with the Daniel E. Brenner Faculty Publishing Award.

Prior to joining the faculty, Professor Abdel-khalik was a practicing attorney in Chicago, Illinois, initially with Baker & McKenzie and then with Freeborn & Peters. Her practice areas included trademark, advertising and marketing compliance, patent litigation, and general commercial litigation, including breach of contract and antitrust matters. A Florida native, Professor Abdel-khalik earned her B.A. from Cornell University in 1997 in history and sociology and her J.D. from the University of Michigan in 2000.


Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s Medical Device Initiative and Nutraceuticals Team. Ms. Brinckerhoff is the editor and primary author for Foley’s PharmaPatentsBlog.com.

Over the past 20 years, Ms. Brinckerhoff has represented clients before the U.S. Patent Office, the Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit, and has been involved in complex patent matters, including a four party interference, Inter Partes Reexamination processings, and Inter Partes Review proceedings. Ms. Brinckerhoff works with clients in diverse industries, including pharmaceuticals (chemical and biotechnological), human and animal food products, nutraceuticals, and medical devices. She has particular experience with transdermal pharmaceutical products (patches, gels and liquids), oral dosage forms (including controlled release and extended release formulations), enzyme-based technologies, diagnostic and therapeutic antibodies, active and passive immunization therapies, and personalized medicine.

Ms. Brinckerhoff joined Foley as an associate in the fall of 2001, after clerking for the Honorable Judge Schall on the U.S. Court of Appeals for the Federal Circuit. Prior to her clerkship, she worked at Foley as a patent agent and law clerk."


Christopher V. Carani, Esq. is a partner at the Chicago-based IP law firm of McAndrews, Held & Malloy, Ltd., where he has been since 1995. Chris is current chair of AIPPI Committee on Designs, and past chair of both AIPLA and ABA Design Rights Committees. He is a leading authority in the field of design law, having published and lectured extensively on the topic, including presentations before the USPTO, SIPO, KIPO, WIPO, and OHIM. In addition to numerous successful enforcement actions, Carani has worked with clients to secure over 2000 design rights, both in the U.S and in over 70 countries around the world. In the landmark design patent case Egyptian Goddess v. Swisa, he authored amicus briefs on behalf of the AIPLA at both the petition and en banc stages taking positions ultimately adopted by the court and reshaping design patent jurisprudence. Chris is on faculty at Northwestern University School of Law as an Adjunct Professor teaching IP law. Chris was conferred his J.D. from The Law School at The University of Chicago. He also holds a Bachelor of Science in Engineering from Marquette University. Prior to joining McAndrews, Mr. Carani served as a law clerk to the Honorable Rebecca R. Pallmeyer at the U.S. District Court for the Northern District of Illinois. Away from the law, Chris is a studied jazz musician playing upright bass on the Chicago jazz circuit.


Michelle Greer Galloway has been an associate, partner and is currently of counsel to the Cooley Litigation department and its IP group. Her practice focuses on patent litigation and she also advises clients on the legal, strategic and technical issues of information governance, including electronically stored information. She serves on the Advisory Board of the Georgetown University Law Center's Advanced E-Discovery Institute and is a member of The Sedona Conference Working Group on Electronic Document Retention and Production. She is a Contributing Editor of The Sedona Conference® Primer on Social Media (2012).

Ms. Galloway also advises clients in the area of risk management, compliance, and ethics. She currently serves as Chair of the ABA Intellectual Property Section, Ethics and Professional Responsibility Committee and Chairs the ABA Task Force regarding USPTO proposed disciplinary rule changes. In 2013, she was awarded the ABA IPL Recognition of Outstanding Leadership Contribution.

In addition to her practice, she is a lecturer teaching courses in patent litigation and 21st century lawyering skills at Stanford Law School and a lecturer at Santa Clara Law School teaching courses in patent litigation, pre-trial litigation techniques, and law practice management.

She writes and speaks on a wide range of both general and IP litigation topics. She also conducts mock trials with middle schoolers and is an active community volunteer.


Tom Irving has more than 40 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis, and litigation. A significant portion of Mr. Irving's current practice is focused on AIA post-grant proceedings, including how to enhance the strength of patents in the pharmaceutical space to protect against post-grant challenges. He has served as lead counsel in numerous patent interferences, reissues, and reexaminations; as counsel in numerous AIA post -grant proceedings; and as an expert witness in patent litigation.

Mr. Irving has served for 25 years as principal teacher of the Patent Resources Group (PRG) Chemical Patent Practice course, a comprehensive U.S. chemical patent law course taught three times a year, and he coauthors the multi-volume treatise used in the course. In addition, Mr. Irving originated PRG's Orange Book and Due Diligence courses, which help prepare patent owners, through effective application drafting and prosecution, to withstand the rigors of AIA's inter partes review (IPR) and post-grant review (PGR). He presents analyses of U.S. Court of Appeals for the Federal Circuit patent decisions for many state bar association groups and is a frequent speaker at national bar association meeting such as the American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association, and American Bar Association. Mr. Irving has lectured at many law schools in both the United States and China. He also has presented nearly 50 Strafford Webinars on patent law topics, including a number that deal with AIA's post-grant proceedings. Outside of the patent law field, he has been involved in public health and safety issues related to the preparation of Citizen Petitions before the FDA.

  

One of Brian's many roles is to develop and carry out strategies for growing AOL's patent portfolio. Brian has had a varied experience carrying out different IP strategies as in house counsel. A few years ago he was instrumental in orchestrating the sale of some of AOL's patents for over $1 billion, which resulted in AOL's stock jumping over 40% on the news. Now his focus is on rebuilding the portfolio. Before joining AOL, Brian led a patent team at a highly successful medical devices company called Globus Medical, where he was charged with developing an international IP portfolio that served the business priorities of Globus. He also has worked in law firms and helped companies protect their innovation with parents.

 



John focuses his practice on patent licensing and counseling. Before coming to Shook, John served as associate general counsel at Microsoft Corporation, where he led a team that analyzed patents for conflicts, outbound licensing, litigation support and risk mitigation. He also completed a two-year international assignment for Microsoft, handling intellectual property matters originating in Europe, the Middle East and Africa. In addition, John taught a class on intellectual property licensing at Seattle University School of Law as an adjunct professor from 2005 to 2011.

While at George Washington University Law School, John served as notes editor of The Journal of International Law and Economics and on the publication staff of AIPLA Quarterly Journal. He also worked at the U.S. International Trade Commission as well as the U.S. Court of Claims for The Honorable Wilkes C. Robinson in Washington, D.C. John received his bachelor’s degree in mechanical engineering from Rice University, where he served as president of the Rice Engineering Association and the American Society of Mechanical Engineers, Rice Chapter.


Mr. Wittow is a partner in the Seattle office of K&L Gates, where he leads the firm’s IP-technology transactions and data protection practice group. His work focuses on all types of intellectual property and technology transactions and counseling including the acquisition, development, marketing, licensing and distribution of mobile applications and computing devices, software and related services, other types of technology and media content, electronic commerce issues, and complex patent licensing and patent dispositions.

Mr. Wittow’s recent experience includes representing clients of all sizes, including start-up, mid-size and Fortune 100 companies, in preparing and negotiating patent and technology licensing and purchase agreements and product development, licensing, distribution and services (particularly cloud services) agreements for technology, online retail, media (film, music, electronic games, books and periodicals), health care, energy, financial services, engineering, transportation and telecommunications businesses; providing counseling on strategic trade secret and copyright issues; preparing and negotiating agreements, supervising due diligence and resolving issues for the acquisition of technology companies or assets and in conjunction with the resolution of intellectual property litigation; assisting international businesses with the legal issues and agreements associated with the creation and operation of cloud services, mobile applications, interactive websites and product and software distribution, including open source software issues; and assisting authors, filmmakers, musicians and artists with licensing and distribution of their works. Mr. Wittow is a frequent presenter and author on cloud computing, copyright and trade secret law developments and on technology and patent licensing and transaction issues.

Mr. Wittow co-chairs the Northwest Chapter or the Copyright Law Society of the United States and is a member of the CLE Board of the intellectual property law section of the American Bar Association. Mr. Wittow is an adjunct professor at the Seattle University Law School, where he teaches the Arts Legal Clinic course.


 
 
 

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