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2019 Intellectual Property Institute
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Approved for 7.0 hours of CLE credit, including 1.0 hour of Ethics and Professionalism in Kansas and Missouri.

5/3/2019
When: Friday, May 3, 2019
Check- in & Registration begin at 8:00
Where: Sprint Corporation (Sprint Campus)
6050 Sprint Parkway
Overland Park, Kansas  66251
United States
Contact: Nancy Burghart
785-861-8827


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

2019 Midwest Intellectual Property Institute

Friday, May 3, 2019
Sprint Corporation, Overland Park


8:00 a.m.- Check-in & Registration

8:30 a.m.- All Things Infringement (100 minutes)

Kathleen A, Daley, Finnegan, HendersonFarabow, Garrett & Dunner LLP., Washington DC
Tom Irving, Finnegan, Henderson, Farabow, Garrett & Dunner LLP., Washington DC
J. Michael Jakes, Finnegan, HendersonFarabow, Garrett & Dunner LLP., Washington DC
Dr. Denise Main, Finnegan, HendersonFarabow, Garrett & Dunner LLP., Washington DC
Practitioners strive to secure valid and enforceable U.S. patent claims that will be construed to have the scope intended by the inventor, whether in litigation or before the Patent Trial and Appeal Board (PTAB). Claim construction is often determinative of infringement. But drafting patent claims and specifications is not an easy task. Tom Irving and Dori Hines will discuss best (and worst) practices spanning from the initial drafting of the patent specification to the winning arguments to the examiner, PTAB, and the courts, to obtain claims of varying scope, as desired, that have utility, novelty, and non-obviousness, and also are definite, enabled, and pass muster under written description. All of that with the idea of having patentable/not invalid claims for which infringement, can be proven, under at least one of literal infringement and doctrine of equivalents and under at least one of direct infringement, induced infringement, and contributory infringement. Highlighted in the discussion will be the recent Federal Circuit cases of Duncan Parking Technologies, Inc. v. IPS Group, Inc. (Fed. Cir. Jan. 31, 2019), dealing with issues of claim construction, literal infringement, and infringement under the doctrine of equivalents, as well as the non-precedential decision in Brigham and Women’s Hospital, Inc. v. Perrigo Co, --F.3d __ (Fed. Cir. Feb. 28, 2019), a study in how to fail to prove infringement.

10:15 a.m.- Break

10:25 a.m.- Recent Guidance on Eligibility under Section 101 and Computer Implemented Functional Language under Section 112
Molly Kocialski, 
Rocky Mountain US Patent Trade Office, Denver, CO
In January, the US Patent and Trademark Office published the "2019 Revised Patent Subject Matter Eligibility Guidance" and also guidance on "Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112."  The revised guidance was provided to increase clarity, predictability, and consistency during examination, and applies to examiners and administrative patent judges at the Patent office.  Director Kocialski will discuss these updated 101 and 112 guidance documents, including background of the revisions and their impacts on examination.

11:15 a.m.- Intellectual Property, Brands and Blockchain
Professor Shontavia Johnson, Clemson University, Clemson, SC
Blockchain technology, at its core, is a digital record-keeping mechanism. In the past decade, there has been a frenzy of press and attention around the technology, and it can be hard to separate reality from hype. This presentation will provide a blockchain overview and begin to untangle the current state of the technology. It will also articulate blockchain's impact on traditional intellectual property rights and branding. Open blockchain protocols are generally based on open-source software, where intellectual property rights (patent, copyright, and trademark) are generally not pursued. However, intellectual property questions remain when apps are built on top of open platforms. Building a product or service “on the block” requires savvy entrepreneurs and companies to manage and leverage intellectual property rights and protections. In addition, companies can differentiate themselves and their brands by leveraging blockchain technology, especially as it relates to privacy concerns. 

12:05 a.m.- Lunch (provided)

1:00 p.m.- Digital Transformation and Copyright
Ned Locke,
Microsoft Corporation, Seattle, WA
It’s been said that every company will become a software company. This session led by a Microsoft attorney will explore some of the copyright issues that arise in today’s digital transformation context, with an emphasis on modern solutions such as cloud computing and machine learning. Use of proprietary and open source software, interfacing with systems pro-grammatically, use of data, and related topics will be covered with an eye to recent developments and cases.

1:50 p.m.- Design Patents - Claim Scope and Prior Art
Andrew D. O'Brien, Shook Hardy & Bacon, Kansas City
A look at recent cases and real-life examples to better understand what parts of a design-patent application might be used to construe a claim and what art is relevant.

2:40 p.m.- Break

2:50 p.m.-  Attorney Ethical Obligations for Data Security and Privacy (Ethics)
Rebecca Stroder, FireEye Inc., Kansas City
In this session, we’ll talk about the evolving landscape of cyber threats to law firms, in particular IP firms and small firms, the ethical rules that guide attorneys in how to secure their environments against cyber-attacks and data loss, and most importantly, what attorneys can do today to better secure their practices against these threats.

3:40 p.m.- Adjourned 

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  Registration Information
~~ Lunch is included in registration fee ~~
  • KBA Intellectual Property Section Member: $225
  • KBA Young Lawyers Section Member: $235
  • KBA Member Registration: $275
  • Non-member Registration: $380
  • Paralegal Registration: $205
  • Student: $25
  • Paper Materials (optional): $30

 

Program Presenters:

 

Kathleen A. Daley, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC
Kathleen Daley has significant experience in trial and appellate litigation. She has led litigation teams and been involved in all aspects of patent litigation, in district court and the U.S. International Trade Commission (ITC), and she has argued appeals before the U.S. Court of Appeals for the Federal Circuit. Kathleen also counsels clients on obtaining and protecting intellectual property rights, including providing infringement and validity opinions and advising on strategic patent prosecution matters. She has been involved in more than 60 post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including reexamination and inter partes review (IPR) proceedings. She has served as lead counsel before the PTAB and has successfully represented both petitioner and patent owner. Kathleen has extensive experience with licensing and technology transfer issues, including preparing and negotiating technology transfer agreements and advising clients regarding disputes under existing agreements. She has lectured and taught courses on drafting patent and know-how license agreements. Her practice encompasses a wide range of technologies, such as mechanical devices, semiconductor devices, and pharmaceuticals, with a particular emphasis on medical devices. While a patent examiner at the USPTO, she examined applications in the medical arts. Kathleen has served as member of the firm's management committee and as leader of the mechanical practice group.

  

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.

 

J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC
Mike Jakes concentrates his practice on patent litigation and related counseling. He serves as lead counsel in federal district courts and the U.S. International Trade Commission (ITC), and before arbitration panels. Mike deals mainly with computer, electronics, semiconductor, software, and medical device technologies. Mike has vast experience at the U.S. Court of Appeals for the Federal Circuit, having argued 40 appeals and prepared and filed briefs in many more. He served as a law clerk to the Honorable Giles S. Rich at the Federal Circuit. Since 1993, he has served as coauthor of Court of Appeals for the Federal Circuit: Practice & Procedure, published by LexisNexis. He is a former member of the Federal Circuit's Advisory Council and previously led the firm’s appellate section. Mike has been described in Chambers USA as "one of the most talented patent lawyers out there," "an exceptionally talented litigator who is picked by clients when hundreds of millions are at stake," and "one of the premier appellate litigators for cases involving electronics and medical devices." Mike has been recognized as a leading patent litigator in the D.C. area and nationally before the Federal Circuit by Intellectual Asset Management and was named one of the top ten business litigators in D.C. by Legal Times. He has ranked among top U.S. patent lawyers in Legal Media Group's Guide to the World's Leading Patent Law Practitioners since 2015. Mike has served as both a special master and technical advisor to various U.S. district courts, assisting with claim construction and summary judgment motions on patents covering a wide variety of subjects. He is also a trained mediator, having completed the American Arbitration Association's mediator training course.


Molly Kocialski, U.S Patent and Trademark OfficeDenver, CO
As the Director of the Rocky Mountain Regional United States Patent and Trademark Office (USPTO), since January 2016, Mollybeth (Molly) Kocialski carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and is responsible for leading the Rocky Mountain regional office. Focusing on the nine states within this region and actively engaging with the community, Ms. Kocialski ensures the USPTO’s initiatives and programs are tailored to the region’s unique ecosystem of industries and stakeholders. Ms. Kocialski brings more than 20 years of intellectual property experience to the USPTO. Most recently, Ms. Kocialski was the Senior Patent Counsel for Oracle America, Inc, where she was responsible for managing an active patent prosecution docket and was also responsible for all of the post-grant procedures and patent investigations for Oracle and its subsidiaries. Prior to Oracle, she worked at Qwest Corporation and was also in private practice in both New York and Colorado focusing on intellectual property litigation for multiple high-tech companies while maintaining an active prosecution docket. Ms. Kocialski is a recognized IP leader in the Rocky Mountain region. Ms. Kocialski currently serves on the Colorado Federal Executive Board’s Executive Committee. Ms. Kocialski is the Vice President of the Colorado IP Inn of Court and was previously the Chair of the Planning Committee and a member of the Board of Directors of the Colorado IP Inn of Court. Further, Ms. Kocialski is a member of the Planning Committee for the Rocky Mountain Intellectual Property Institute, an annual two-day conference on intellectual property that attracts over 500 attendees. She was the Chair of the Intellectual Property Section of the Colorado Bar Association and served on the Colorado Bar Association’s Board of Governors. Ms. Kocialski served as the head of the IP Committee and was a member of the Board of Directors for the Colorado Chapter of the Association of Corporate Counsel and served on the National IP Committee of the Association of the Corporate Counsel. In 2015, Ms. Kocialski was recognized by ManagingIP magazine as one of its North America Corporate IP Stars. Ms. Kocialski is a graduate of the State University of New York at Buffalo School of Law and received a Bachelor of Science in Chemical Engineering from the University of New Mexico. Ms. Kocialski is a registered patent attorney and is admitted to the U.S. Patent and Trademark Office, the New York and Colorado state bars as well as to the United States Courts in those jurisdictions.

 

Professor Shontavia Johnson, Clemson University, Clemson, SC
Shontavia Johnson serves as Associate Vice President for Academic Partnerships and Innovation at Clemson University. She has also the founded Johnson International Group, a firm that helps entrepreneurs improve their brands using law and technology. Her company manages Pop Culture U, a brand that combines pop culture, research and education to break down complicated topics. She is dedicated to sharing big ideas, connecting people to resources, and using the world as a classroom.  Shontavia is a sought-after speaker who has spoken on the stages of TEDxAtlanta, SXSW and at various universities and bar associations around the world.  Her public writing has appeared in TIME, the Washington Post, and Fortune. Her academic writing has received the Ladas Memorial Award, which identifies the best trademark law article in the world each year.  Shontavia was named one of the best Young Lawyers in America by the American Bar Association and placed on the prestigious Fulbright Specialist Roster. In 2018, she was named one of 200 Black Women in Tech to Follow on Twitter (@ShontaviaJEsq). Shontavia received her B.S. in Biosystems Engineering from Clemson University. She received her J.D. from the University of Arkansas School of Law. She also studied at law at the University of the Western Cape in Cape Town, South Africa.

 

 

 

Ned Locke, Microsoft Corporation, Seattle, WA
Ned Locke is a Senior Attorney at Microsoft, where he supports enterprise cloud data services and analytics for the Microsoft Azure business. He previously supported Microsoft’s team of data scientists working with customers on digital transformation projects. Before Microsoft, Ned worked in the Silicon Valley office of Latham & Watkins and clerked at the U.S. Court of Appeals for the Ninth Circuit in San Francisco. Prior to law school, Ned worked as a software engineer and designer for technology companies in the Bay Area. He received his A.B. in Computer Science and Certificate in Cognitive Studies from Princeton University, and his J.D. from Harvard Law School, where he served on the Harvard Law Review.

 

 

 

Dr. Denise Main, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP,Washington, DC
Denise Main, Ph.D., is a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s Washington, D.C. office. Her practice focuses on U.S. district court and appellate litigation, with particular experience related to the Hatch-Waxman Act governing the approval of pharmaceutical drugs. She manages day-to-day litigation activities in actions involving multiple parties. Denise’s broad experience includes conducting offensive and defensive discovery, drafting and arguing dispositive motions, taking and defending witnesses in court, drafting trial and appellate briefs, conducting U.S. and foreign prosecution, and preparing patent applications and ex parte reexaminations. Denise has handled matters involving a wide array of technologies with a focus on the pharmaceutical, chemical, biotechnology, and mechanical arts. She has assisted clients in the fields of pharmaceutical products, cosmetics, hair dyes, pesticides, packaging materials, polymeric materials, and drug delivery systems. In addition to her litigation practice, Denise advises clients on a variety of patent matters, including polymorph issues, Orange-Book listing patents, U.S. and foreign IP portfolio management, freedom to operate, settlement, licensing, and antitrust issues. She holds a J.D. from American University, Washington College of Law and a Ph.D. in organic chemistry from University of Florida.

 

Andrew D. O’Brien, Shook, Hardy & Bacon, Kansas City
A look at recent cases and real-life examples to better understand what parts of a design-patent application might be used to construe a claim and what art is relevant. 

 

 

 

 

 

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.

 

 

Thank You To Our Program Sponsors:

  To Sponsor this program please contact Nancy Burghart (785)861-8827 or nburghart@ksbar.org