Schedule and Faculty
Day 1
8:15 – 8:50 a.m.
CHECK-IN & CONTINENTAL BREAKFAST
Continental breakfast sponsored by Shepherd Data Services
8:50 – 9:00 a.m.
WELCOME & INTRODUCTION
9:00 – 11:00 a.m.
MAIN PLENARY SESSION
9:00 – 9:45 a.m.
The Impact To-Date of the AIA, and Global IP Developments
The AIA was an ambitious piece of legislation, requiring much ongoing effort and commitment to implement. The new law also ushered in a new era in U.S. patent policy, one focused on harmonization, transparency, and speed. Mr. Kappos will discuss both of these aspects of the AIA – the progress and challenges in its implementation, and the implications of the policy shift for the future of the U.S. and global patent systems. Mr. Kappos also will discuss the larger macro-trends shaping the IP system, and how they in turn are shaping our nation’s and the world’s innovation ecosystem.
David J. Kappos
Cravath, Swaine & Moore LLP
New York, New York
9:45 – 10:10 a.m.
New Tools for Battling Patent Trolls: The AIA, Executive Orders and State Actions
An April 2013 report reveals the significant increase – up to 58% of patent suits in 2012 – in suits by patent trolls. The President recently issued five executive orders to curb these suits. The America Invents Act limits the ability to join unrelated parties, and Congress is working on legislation that seeks to curtail frivolous suits. In May 2013, Vermont became the first state to allow targets of trolls to countersue. Scott McKeown will discuss how these measures may impact patent troll litigation, how counsel can act to minimize the threat of patent troll litigation and what defense strategies are effective in combating patent trolls in litigation.
Scott A. McKeown
Oblon, Spivak, McClelland, Meier & Neustadt, L.L.P.
Alexandria, Virginia
10:10 – 10:35 a.m.
An Insider’s Guide to the Eastern District of Texas
Michael Smith is the author of EDTexweblog.com, a blog devoted to patent litigation practice in the U.S. District Court for the Eastern District of Texas. He is a partner in the Marshall office of Siebman, Burg, Phillips & Smith, LLP, where he specializes in complex commercial and patent litigation in federal court. Mr. Smith, who has appeared as counsel of record in over 600 civil cases in the U.S. District Court for the Eastern District of Texas, pulls back the curtain on the Eastern District and reveals his best tips for litigators who practice there.
Michael C. Smith
Siebman, Burg, Phillips & Smith, LLP
Marshall, Texas
10:35 – 11:00 a.m.
A Frontal Assault on Copyrights, Patents and Other IP: Technology and Today’s Content-Driven Markets
For 250 years, IP law has provided a rational and almost invisible way for creators to be rewarded for their creations. However, the increasing success of mobile platforms, search engines and “over-the-top” distribution of TV shows and movies has so radically changed pricing and distribution models that royalties and other IP law-driven protections may no longer make sense. At the same time, patent fights have distorted the legal costs of going to market. This presentation will explore what IP lawyers need to consider in advising their clients in the current IP law chaos.
Steve Tapia
Media, Entertainment and Technology Counsel
Formerly of DIRECTV Sports Networks and Microsoft Corporation
Seattle, Washington
ALTERNATE PLENARY SESSION
9:00 – 10:00 a.m.
IP and Your Client’s Employees: Protecting IP Assets from the Start of the Employment Relationship
Join these experienced lawyers as they discuss how to protect intellectual property at the beginning of an employment relationship to avoid losing this valuable asset as an employee departs. Highlights will include: Work for hire and pre-invention assignment clauses, disclosure provisions, validity and enforceability issues, and jurisdictional and choice of law considerations.
Anneliese S. Mayer, Paul W. Mussell & Penelope J. Phillips
10:00 – 11:00 a.m.
The AIA for the IP Generalist
Join two IP counsel at Cargill for a fast-paced review of how the U.S. patent system has changed under the America Invents Act (“AIA”) and implications of these changes for corporate counsel. Ann Benjamin and Chris Turoski will: debunk several common myths about the AIA; share practical advice for managing your corporate patent portfolio and applying for new patents; and discuss some of the advantages and limitations of the new post-grant review process.
Ann Benjamin & Christopher M. Turoski
11:15 a.m. – 12:15 p.m.
BREAKOUT SESSION A
001
The Year in Patent Law at the C.A.F.C. and the U.S. Supreme Court
This session focuses on noteworthy recent C.A.F.C. and U.S. Supreme Court patent decisions, moving beyond the holdings to explore how the decisions really impact legal counseling and litigation.
John A. Dragseth & Nathan Kelley
002
Discovery Update 2013: The Latest Developments in Patent Cases
This session will provide a comprehensive update on discovery issues, including model orders, local rules, and the Federal Circuit’s latest stance on e-discovery in patent cases. This session will also include updates and tips on e-discovery and post-grant review discovery.
Timothy E. Grimsrud & Elizabeth Cowan Wright
003
The Year in Trademark Law: Time Machines, Red Shoes and the Ale House Blues
Stephen Baird and Eric Goldman analyze the practical implications of the past year’s ten most significant trademark decisions; including issues as wide-ranging as the distinctiveness of single-color marks, initial interest confusion and restaurant trade dress to procedural issues such as claim preclusion. They will also provide an update on generic top level domain applications.
Stephen R. Baird & Eric Goldman
004
Are You Under-Utilizing Copyright Protection to Protect Your Tech IP?
Copyright law is about more than stopping unauthorized copies. It offers technology owners a full tool belt of strategies and tactics to protect the underlying creation. This session offers attendees an experienced in-house counsel’s insights on maximizing your client’s use of copyright protection for the client’s technology-related intellectual property.
Steve Tapia
12:15 – 1:30 p.m.
INSTITUTE LUNCHEON
Minneapolis Marriott City Center
1:30 – 2:30 p.m.
BREAKOUT SESSION B
005
Inventor Identification and Ownership – Best Practices
This session provides practical instruction on critical topics: identification of inventors; correction of inventorship; and invention ownership and assignment issues. Your presenters will review the relevant legal principles, provide information on best practices, assess the pros and cons to various approaches, highlight implications of new legal developments, and identify selected ethics issues.
Julie R. Daulton & Randall A. Hillson
006
PTAB Post Grant Challenges: Process Refresher, Strategy Update and Early Filing Information
This "PTAB Post Grant Challenges" track begins with a refresher of the inter-partes, covered business method, and post-grant review processes, then turns to a discussion of strategic filing considerations, and concludes with a statistical review of early filings.
Stephen R. Schaefer
Timothy E. Bianchi, moderator
007
The Year in Copyright Law: The U.S. Supreme Court Tackles the Copyright Act
From damages to the DMCA, from fair use to first sale, the past year has been a busy one for copyrights in the courts. In this session, three copyright law experts discuss the practical implications of recent developments; including the Kirtsaeng decision from the U.S. Supreme Court.
Calvin L. Litsey, Ruth Okediji & Ruth Rivard
008
Settlement Checklist for Patent and Trademark Disputes
Ensure your settlement agreement does not lead to future disputes. Learn tips for avoiding common pitfalls that can lead to additional litigation.
Michael M. Lafeber
2:30 – 2:45 p.m.
BREAK
2:45 – 3:45 p.m.
BREAKOUT SESSION C
009
European Patent Drafting – Top Tips for U.S. Practitioners
Are you compromising European patent protection by drafting with U.S. law blinders? Learn some simple tips to improve your chances in European prosecution and opposition.
Jon Gowshall & Edward Hotchkiss
010
PTAB Post Grant Challenges: PTAB Trial Refresher, Survey of Board Decisions, and Parallel Litigation
Guest speaker Scott McKeown offers a refresher on PTAB trial procedure and reviews the significant Board decisions from the first year. Jake Holdreith then discusses issues to consider when there is parallel litigation.
Jake M. Holdreith & Scott A. McKeown
Timothy E. Bianchi, moderator
011
Design Patent and Trade Dress Lessons from the Smartphone Wars
In August of 2012, a California jury awarded Apple a billion-dollar verdict in its suit against Samsung. The case brought design patent and trade dress issues to the forefront of the smartphone wars. Join Ken Levitt and Alicia Griffin Mills for an in-depth review of design patent and trade dress principles, a summary of how the law was applied in the Apple case, and an outlook on possible future battlegrounds for these issues.
Kenneth E. Levitt & Alicia Griffin Mills
012
IP Due Diligence in M&A
A practical overview of the critical issues to consider when conducting intellectual property diligence on a target’s IP portfolio. Topics will include trademark, copyright, domain name, licensing, patent diligence and more. Special focus will be given to open source matters – how to evaluate the software assets of companies that your client may acquire to identify open-source software and manage any remediation effort that is necessary.
Steve Tapia & James L. Young
3:45 – 4:00 p.m.
BREAK
4:00 – 5:00 p.m.
BREAKOUT SESSION D
013
New Developments in Patent and Copyright Protection for Software
Recent decisions by the courts, the CAFC and the PTAB in high-profile software cases (Oracle v. Google, CLS Bank v. Alice Corp., and SAP America v. Versata Development Group) have done little to clarify the protectability of software and business method patents. Professor Okediji reviews the case holdings and shares best practices for protecting software in these uncertain times.
Ruth Okediji
014
PTAB Post Grant Challenges: Practical Considerations, Bills Before Congress, and the Future of Post-Grant Practice
In the final session of this "PTAB Post Grant Challenges" track, the panel discusses practical considerations related to due diligence, petitions and discovery, then examines bills currently before Congress, and speculates on the future of post-grant practice.
Scott A. McKeown & Cyrus A. Morton
Timothy E. Bianchi, moderator
015
International Brand Management – How to Protect Your Company’s Most Important Asset Worldwide
Many CEOs, CFOs, GCs and marketers consider their brands to be their companies’ most important assets. The strength and breadth of a brand’s underlying trademark protection is a crucial consideration in overall brand valuation, and strong trademark protection on an international scale is the foundation of any strong global brand. Join Patrick Gallagher and four very experienced trademark counsel as they engage in a spirited and insightful discussion about establishing and maintaining brand value through strong trademark protection. The panel will focus their discussion on strategies, tactics and methodologies employed to protect trademarks on an international level, and the panel will provide some practical tips related to engaging and working with other trademark lawyers throughout the world.
Travis Bachman, Joshua J. Burke, Justin Davidson & Ann Wessberg
Patrick Gallagher, moderator
016
Teaching IP Concepts to Millennials – What Sticks?
Warning: This session may feature sweeping generational stereotypes.
Members of the millennial generation (born in the 1980s and 1990s) are just starting to enter the workforce in significant numbers. Because they grew up with the Internet and social media, their values with respect to media and brands may not necessarily align with your company’s IP principles. How can you encourage creativity while still maintaining respect for your company’s IP and the IP of others? What can millennials teach us about IP? A panel of in-house lawyers and educators discuss the challenges and benefits of working with millennials and share strategies for teaching IP concepts that really “stick.”
Eric Goldman, Renee Kraft, Steve Tapia & Kari J. Wangensteen
Caldwell Camero, moderator
5:00 – 6:00 p.m.
RECEPTION
Register for a Chance to Win 1 of 5 Apple iPad Minis!
The prize drawing will take place at the reception on Thursday, September 26, and you must be present at the reception during the prize drawing to win. Any person may receive an entry slip on Thursday, September 26, at the Institute registration desk until the reception begins at 5:00 p.m. Registration for the 2013 Midwest IP Institute is not required. The following individuals are not eligible to win: Institute faculty, planners and IP Book authors; employees of Minnesota CLE and the Minnesota State Bar Association, as well as family members of those employees.
Special thanks to our Sponsoring Firms for making the reception a truly five-star affair!
DAY 2
8:30 – 9:00 a.m.
CONTINENTAL BREAKFAST
9:00 – 10:00 a.m.
PLENARY SESSION
Inside Minnesota IP: Meet the Inventors, Artists and Entrepreneurs
Join this panel for a fun, behind-the-scenes exploration of three local IP stories. You’ll hear from an entrepreneur whose family created a scheduling software for divorced families that is being used all over the world, a songwriter (and IP lawyer) who started a record label to release his band’s comeback album, and a busy mom who developed a line of safe and healthy food storage containers. You’ll also hear about the IP strategy behind the stories.
Bradley A. Forrest, Juhi Gulati, Jai Kissoon & David G. Schelzel
Rita A. O’Keeffe, moderator
10:00 – 10:15 a.m.
BREAK
10:15 – 11:15 a.m.
BREAKOUT SESSION E
017
Chief Patent Counsel on “The Next Wave of AIA Issues”
The unprecedented statutory overhaul of the U.S. patent system made by the America Invents Act is now fully effective. This session will focus on the new issues that Chief Patent Counsel see on the horizon as the statute plays itself out and the courts work to implement and interpret the new provisions and procedures contemplated by the statute.
Daniel J. Enebo ,William (Bill) Miller & Kevin H. Rhodes
Felicia J. Boyd, moderator
018
Trademark Bullies – A Problem in Need of a Cure?
From Monster Energy Drinks going after The Vermontster beer to Minnesota’s involvement in the spat about “the other white meat” (i.e., unicorns), trademark bullying is a hot topic today – so hot that a trademark bullying bill was introduced at the Minnesota state legislature last year, and received its first hearing this year. The panel will discuss trademark bullying: what it is, what it isn’t, and the degree to which trademark law may have contributed to the problem. The panel also will explore how concepts such as dilution and the need to enforce rights or lose them are contributing to the perception or reality of bullying, how social media’s role may play into the equation, and the degree to which the trademark bar is involved in creating the problem and how it can be involved in the cure.
Cecelia Dempsey, Joyce Peppin & Kenneth Port
Dean Karau, moderator
019
IP Issues in Commercial Agreements
Intellectual property frequently plays an important role in supply agreements, licenses, R&D agreements, consulting arrangements and other commercial agreements. Even when intellectual property isn’t driving the deal, it’s still important to understand and address the intellectual property issues that can arise in these transactions. This breakout session will discuss some of the key intellectual property issues to consider when drafting or negotiating common commercial agreements.
David C. West
11:15 – 11:30 a.m.
BREAK
11:30 a.m. – 12:30 p.m.
BREAKOUT SESSION F
020
Myriad Perspectives on the Supreme Court’s Ruling in Association for Molecular Pathology v. Myriad Genetics, Inc.
In recent years, the U.S. Supreme Court has taken a great interest in the question of what constitutes patentable subject matter. The latest opinion in this highly controversial area of patent law came on June 13, 2013, with the Court’s unanimous ruling in Association for Molecular Pathology v. Myriad Genetics, Inc. In this session, an expert panel of patent practitioners will attempt to place this prominent case into historical and legal context – and they will offer insights on what the case might mean for patent practice today and tomorrow.
Jon M. Harkness, PhD, Ann S. Viksnins & Warren D. Woessner
Teresa A. Lavoie, PhD, moderator
021
Shakedown Street: The Rise of Mass Copyright Infringement Claims
From Righthaven to Wiley to Ingenuity, mass copyright claims, whether ultimately successful or not, have been on the rise in recent years. In this session, the panel will discuss the current status of these and other emerging cases and analyze the strengths and weaknesses of the claims. The panel will also highlight claims of infringement based on law firms’ compliance with the duty to disclose prior art non-patent literature to the Patent Office.
Thomas F. Cotter & Bradley A. Forrest
Devan V. Padmanaban, moderator
022
You Received a Cease-and-Desist. There’s a Possible Indemnitor. Now What?
Figuring out how or if to respond to a cease and desist letter – or invitation to license – is complex. And one of the particularly significant complexities: How do you proceed without jeopardizing any indemnification your client might have as to the alleged infringement? Come listen to a panel of expert IP practitioners – both in-house and outside counsel – to hear the panelists’ viewpoints on this tricky matter. Learn the pros and cons of various courses of actions and potential implications to the company receiving the cease-and-desist as well as the potentially idemnifying entity. The panel will focus its discussion on patent C&D’s from non-practicing entities, sometimes called “patent trolls.”
Christopher K. Larus, Karen D. McDaniel & Andrew D. Sorensen
Kari J. Wangensteen, moderator
12:30 – 1:30 p.m.
LUNCH (on your own)
1:30 – 2:30 p.m.
BREAKOUT SESSION G
023
The New USPTO Ethics Rules: A Roundtable Discussion
1.0 ethics credit applied for
Effective May 3, 2013, the U.S. Patent & Trademark Office issued final ethics rules. These rules bring practice before the Office into closer conformity with the state ethics rules applicable to attorneys. In this roundtable format, we examine the new USPTO Professional Responsibility and Ethics Rules and talk about what has changed, what hasn’t, best practices, and what the rules mean for patent practitioners before the USPTO. The USPTO’s Office of Enrollment & Discipline’s Deputy Director William J. Griffin brings the Office’s perspective to this important discussion.
William J. Griffin & Brent E. Routman
Kristine M. Boylan, moderator
024
BANG! ZOOM! ZOWIE! – IP and the Comic Book
From the Man of Steel to The Walking Dead, comic book properties routinely raise issues of authorship, ownership, licensing, copyright, and trademark. This blockbuster session will explore the legal metropolis of the big business of comic books and will answer the question, is Quicksilver an Avenger or an X-Man?
Bruce H. Little & Chris Sullivan
025
It Takes More than a Confidentiality Agreement – How to Set Up Systems and Train Employees to Maintain Trade Secrets
Each year, trade secret theft threatens U.S. businesses. As the pace of corporate espionage accelerates, the government is undertaking efforts to improve trade secret legislation and enhance trade secret enforcement. Equally important, companies must ensure that they have procedures in place that effectively protect their valuable IP. Gone are the days when a confidentiality agreement was enough to protect confidential information. This session will discuss tips and pitfalls in creating and implementing a trade secret protection program.
Kerry L. Bundy & Tricia A. Olson
2:30 – 2:45 p.m.
BREAK
2:45 – 3:45 p.m.
BREAKOUT SESSION H
026
A Patent Landscape Analysis of Vascular Grafts, The Patent Monetizers’ Next Frontier
Patent Assertion Entities have continued to focus on acquiring and asserting high tech, software and business method patents. The current legislation pending in Congress, ongoing FTC investigations, and President Obama’s efforts to curb litigation brought by “Patent Trolls” are having a significant effect on the areas in which PAEs focus. Recently, PAEs have started to acquire patents and partner with companies in the medical device space. This session will explore the emergence of this trend toward medical devices through examining the vascular grafts competitive patent landscape and highlight how patent analytics enable companies and investors to make informed R&D and business decisions.
Matthew Rappaport
027
Interactive Ethics: Resolving Ethical Dilemmas in Trademark Practice
1.0 ethics credit applied for
In addition to state regulation, attorneys who practice trademark law are subject to the ethical rules of the USPTO. How well do you know the rules? Join two experienced trademark lawyers for an interactive exploration of the ethical duties of the trademark attorney. You’ll review a series of ethical dilemmas in trademark practice including clearance, prosecution, enforcement and TTAB scenarios. Then you’ll vote on the best resolution for each situation. Whether you agree with the presenters or not, you’ll be sure to sharpen your understanding of your ethical duties.
Barbara Grahn & Scott W. Johnston
028
Coffee is for Closers: How to Close an IP Deal
Drawing on her wealth of experience negotiating and closing licensing deals in the energy and chemicals industries, Ada Nielsen shares the rules and tools required for closing IP deals. Attendees will learn that closing deals isn’t about being the best wordsmith or exchanging drafts as a substitute for negotiation. It’s really about preparing for the negotiation, understanding the people involved, determining if a deal can be made, and, ultimately, pulling the trigger.
Ada Nielsen
3:45 – 4:00 p.m.
BREAK
4:00 – 5:00 p.m.
CONCLUDING PLENARY
Elimination of Bias: Women Leaders in IP Law
1.0 elimination of bias credit applied for
Join Kathleen Marron and a panel of talented women lawyers for a lively discussion of the bias and other challenges women have faced in achieving leadership positions in intellectual property practice, a traditionally male-dominated field where science meets the law. Our panel will reflect on their experiences in the legal workplace, the courtroom, and the IP area in particular. You will hear what has changed over the years, what has not, and what is on the horizon. And you will learn how these women and others have confronted and overcome significant challenges to become respected lawyers, leaders and role models.
Hildy Bowbeer, Ann N. Cathcart Chaplin, Jan M. Conlin, Ann M. Mueting & Ada Nielsen
Kathleen A. Marron, moderator