Approved for 8.0 hours of CLE credit, including 2.0 hours of Ethics & Professionalism in Kansas and Missouri.
8:30 a.m. Check-in & Registration
9:00 a.m. Inequitable Conduct, Unclean Hands and Supplemental Examination
Tom Irving, Finnegan, Henderson, Farabow, Garrett & Dunner LLP., Washington DC
Tom will discuss recent post-Therasense Federal Circuit inequitable conduct cases, as well as developments in unclean hands and equitable remedies cases. He will also consider practical tactics to implement to try to avoid inequitable content in patent prosecution, including the possibility created by the AIA supplemental examination procedure.
9:50 a.m. Design Rights: Funtionality and Scope of Protection
Christopher V. Carani,McAndrews, Held & Malloy Ltd., Chicago, IL
Since the landmark Apple v. Samsung design patent case of 2012, the protection of designs has rapidly developed as a distinct and critical area of intellectual property law, important to overall business strategy. Consumers’ appetites for appealing, yet useful, designs have reached an all-time high. To match this increased interest, a better understanding of design law and its underlying policies, including its functionality doctrine, are desperately needed. Issues to be discussed in this session include:
*The availability of design right protection, including substantive and procedural requirement
*Strategies to mount, or fend off, challenges to the validity of design rights based on functionality
*How to determine a design right’s scope of protection, including the treatment of any portions of the overall appearance that are old or functionally-driven.
The presentation will reference Chris’ new first-in-kind book titled “Design Rights: Functionality and Scope of Protection,” which was published by Wolters Kluwer in October 2017. The book provides not only the foundational requirements for securing and protecting design rights in 27 key jurisdictions worldwide, but also a detailed country-by-country analysis of the contentious and critical issue of functionality (i.e., to what extent can the appearance of useful products or portions thereof be protected by design rights?
The book is available for purchase on most on-line booksellers and also at Wolters Kluwer. https://lrus.wolterskluwer.com/store/product/design-rights-functionality-and-scope-of-protection
10:40 a.m. IP Attorney of the Year Award Presentation
10:45 a.m. Break
10:55 a.m. The Intersection of Legal Ethics with Data Security (ETHICS)
Rebecca Stroder, FireEye, Inc., Kansas City
Law firms increasingly find themselves the targets of hackers and advanced threat actors, who seek to obtain confidential information in order to gain industry or financial advantage. This program will help educate lawyers on their ethical obligations to stop, detect and remediate security incidents, and what they can do today to help ensure they’re engaging in security best practices to meet their ethical obligations.
11:45 a.m. Lunch (provided)
12:30 p.m. U.S. Patent and Trademark Office: The Top Things You Should Know
Allen Parker, United States Patent Trade Office, Denver, CO
Allen is going to cover any recent Rules, Notices/Request for Comment, Innitiative and Programs and Resources about which practitioners should be aware.
1:20 p.m. Recent PTAB Post-Grant Related Decisions and Trends
Andrew Cheslock, Foley & Lardner LLP, Washington DC
This presentation will focus on recent Supreme Court and Federal Circuit decisions concerning PTAB post-grant proceedings, and significant decisions of the PTAB itself. There will also be a segment discussing certain trends at the PTAB, including a discussion of studies the PTAB itself has conducted and statistics it has published regarding post-grant proceedings.
2:10 p.m. Break
2:20 p.m. Secondary Liability in Trademark: Dilution, Counterfeiting, Cybersquatting
Professor Jasmine Abdel-Khalik, UMKC School of Law, Kansas City, MO
An exploration of how and when courts have extended secondary liability from trademark infringement to other theories related to trademark.
3:10 p.m. IP Ethics – What You Need to Know in 2018 (ETHICS)
Michelle Galloway, Cooley LLP., Palo Alto, CA
Do you enjoy IP practice because you like complex issues and challenges? The multiple layers of complexity include the relationships between individuals and corporations, the technologies involved, the different legal doctrines and standards applied in the PTO and the courts, and the global complexity of IP protection. And, with each new layer, different ethics issues can trip you up. This seminar focuses on recent cases in District Courts and the PTO regarding ethics and professional responsibility including: duty of loyalty (conflicts and disqualification); duty to communicate with clients, duty of candor; confidential information in IP cases; and the duty to supervise.
4:00 p.m. Recent Trends and Cases
John Garretson, Shook, Hardy & Bacon LLP, Kansas City, MO
This presentation will address recent trends and cases in the Federal Circuit, as well as key district courts, relating to patent validity, damages, venue and sovereign immunity.
4:50 p.m. Adjourned
~~ Lunch is included in registration fee ~~
- KBA Intellectual Property Section Member $225
- KBA Young Lawyers Section Member $255
- KBA Member Registration $275
- Non-member Registration $520
- Paralegal Registration $205
- Paper Materials (optional) $30
Tom Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC
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. A significant portion of Tom'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. Tom directed the preparation of two highly complex IPRs for possible use in settling litigation. For more than 25 years, Tom has served as principal teacher of the Patent Resources Group (PRG) Chemical Patent Practice course, a comprehensive course on U.S. chemical patent law taught twice a year; he coauthors the multi-volume treatise used in the course. He 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 has spoken at numerous national trade and bar association meetings such as the Intellectual Property Owners Association, American Intellectual Property Law Association (AIPLA), and American Bar Association. Tom has lectured at many law schools in both the United States and China, and at the Patent Office of the State Intellectual Property Office (SIPO) of the People's Republic of China. He has participated in multiple Strafford Webinars on patent law topics, including several that deal with AIA post-grant proceedings. Over the years, Tom has been recognized by Intellectual Asset Management as a leading patent prosecutor in the D.C. area, and nationally for post-grant procedures. The Legal 500 U.S. recognized him for patent portfolio management and licensing. Tom was inducted into the LMG Life Sciences Hall of Fame and recognized as the Patent Strategy & Management Attorney of the Year—District of Columbia.
Christopher V. Carani, McAndrews, Held & Malloy Ltd., Chicago, IL
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.
Rebecca Stroder, FireEye Inc., Kansas City
Rebecca Stroder is Vice President of Legal for FireEye, a leading information security and information response company. Prior to joining FireEye and its division Mandiant, Rebecca practiced with SNR Denton (now Dentons), where she specialized in copyright and technology matters, including large technology procurement transactions, software copyright and trade secret litigation, and open source licensing issues. Rebecca is Adjunct Professor of Intellectual Property Law at the University of Missouri-Kansas City School of Law, and serves as the immediate Past President of Kansas City Volunteer Lawyers and Accountants for the Arts, a non-profit dedicated to providing pro bono legal assistance to low-income artists and arts organizations in Kansas and Western Missouri.
Professor Jasmine Abdel-Khalik, UMKC School of Law, Kansas City, MO
Jasmine Abdel-khalik is an Associate Professor at the University of Missouri-Kansas City School of Law, where her research and teaching interests include trademarks, unfair competition claims, copyright, and contracts. Professor Abdel-khalik has been honored to receive several teaching awards at UMKC, including the 2010 Elmer F. Pierson Good Teaching Award and the 2012 and 2014 Outstanding Professor Award, as well as recognition for her research with the Daniel E. Brenner Faculty Publishing Award in 2007. 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 and her J.D. from the University of Michigan in 2000.
Allen Parker, U.S Patent and Trademark Office, Denver, CO
Allen Parker joined the U.S. Patent and Trademark Office (USPTO) in March of 2008 in Technology Center 2800. He began his career at the Office examining Semiconductor Devices and Methods in Art Unit 2893, and subsequently moved to Art Unit 2892 in 2012. Allen also received his Master’s Level Certification in 2012 and then became a Primary Examiner in 2013. After working as a Primary Examiner for a number of years, Allen was promoted to Supervisory Patent Examiner (SPE) of Art Unit 2819, semiconductors/memory. While a junior examiner, Allen was selected as a winner of the 2010 Patent Innovation and Creativity Competition for an Electronic Journal Tool he developed to increase efficiencies in the examination process. He has served on several career development rotations at the USPTO, including in the Central Reexamination Unit in 2011 and the Patent Training Academy, and also trained examiners as a Primary Examiner. Allen received a Bachelor of Arts in Philosophy and Physics in 2004 and a Master of Science in Physics in 2007 from Clemson University. He, his wife and two children currently live in Denver, CO.
Andrew Cheslock, Foley & Lardner LLP, Washington, DC
Andrew Cheslock is a senior counsel and intellectual property lawyer with Foley & Lardner LLP. He has extensive experience in patent litigation, AIA post-grant proceedings, reexamination, and counseling in the electronics and software fields. Mr. Cheslock is a member of the firm’s IP Litigation, Patent Office Trials, and Electronics Practices, where his practice has most recently focused on AIA post-grant proceedings and International Trade Commission (ITC) Investigations. Mr. Cheslock’s technical background includes familiarity and practical engineering experience with operating systems , compilers and programming languages, embedded systems, microprocessors, logic devices, database management systems and network security. He has been involved in a number of legal matters spanning a variety of different software, electrical and mechanical technology disciplines, including but not limited to: cellular telephone technology, wireless network technology, database integration, encryption technology, semiconductor chip packaging, backup and restore software, medical devices, wellfracturing, and wave energy conversion technology.
Michelle Galloway, Cooley LLP., Palo Alto, CA
Michelle Greer Galloway is currently Of Counsel to the Cooley Litigation department and its IP group. Her practice focuses on patent litigation. She also counsels clients in information governance and e-Discovery. She currently serves as Chair of the ABA Intellectual Property Section, Ethics and Professional Responsibility Committee and Chaired the ABA Task Force regarding USPTO proposed disciplinary rule changes. In 2013, she was awarded the ABA IPL Recognition of Outstanding Leadership Contribution. She is a contributing editor of The Sedona Conference Primer on Social Media (2012). In addition to her practice, she is a lecturer teaching courses in patent litigation and professional development and management 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 ethics, leadership, professional skills, litigation and patent topics.
John Garretson, Shook Hardy & Bacon LLP., Kansas City, MO
John Garretson's national patent litigation and counseling practice focuses on pharmaceuticals, biotech, medical devices and information technology. He has successfully handled cases in federal courts across the country, including more than a dozen trials and appeals to the Federal Circuit, and has first-chaired cases for both domestic and international clients. He is a co-author of "U.S. Patent Litigation — 150 Questions and Answers," published in Japan, and is a contributing author to Patent Resources Group's "Pharma and Biotech Strategies — Hatch-Waxman and Litigation" (2011). He is frequently quoted in industry publications such as Law360, Genetic Engineering and Biotechnology News, Ingram's and Inside Counsel with respect to biotech, Food and Drug Administration and pharmaceutical patent issues. Before his legal career, Mr. Garretson was a sailing, celestial navigation and coastal charting instructor at Culver Summer Naval School in Culver, Indiana. He also served as technical director and as a board member of the Georgetown Gilbert & Sullivan Society, a community musical theater group in Washington, D.C. A former trombonist, orchestra member and occasional jazz group musician, Mr. Garretson sang baritone in the University Glee Club of New York City, a men's choral group that gives concerts in the United States and internationally. In addition, he is a member of the Samaritan’s Circle for the New York City Rescue Mission, a ministry and shelter that reaches out to New York City’s homeless population.
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