Schedule and Faculty
8:15 – 8:50 a.m.
CHECK-IN & CONTINENTAL BREAKFAST
Continental breakfast sponsored by
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
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.
10:10 – 10:35 a.m.
An Insider’s Guide to the Eastern District
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
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
Media, Entertainment and Technology Counsel
Formerly of DIRECTV Sports Networks and Microsoft Corporation
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
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
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
The Year in Trademark Law: Time Machines, Red Shoes and the Ale House
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
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.
12:15 – 1:30 p.m.
Minneapolis Marriott City Center
1:30 – 2:30 p.m.
BREAKOUT SESSION B
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
PTAB Post Grant
Challenges: Process Refresher, Strategy Update and Early Filing
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
The Year in Copyright Law: The U.S. Supreme Court Tackles the Copyright
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
Calvin L. Litsey, Ruth Okediji & Ruth Rivard
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
Michael M. Lafeber
2:30 – 2:45 p.m.
2:45 – 3:45 p.m.
BREAKOUT SESSION C
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
PTAB Post Grant
Challenges: PTAB Trial Refresher, Survey of Board Decisions, and
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
Jake M. Holdreith & Scott A. McKeown
Timothy E. Bianchi, moderator
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
Kenneth E. Levitt & Alicia Griffin Mills
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
Steve Tapia & James L. Young
3:45 – 4:00 p.m.
4:00 – 5:00 p.m.
BREAKOUT SESSION D
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.
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
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
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.
Register for a Chance to Win 1 of 5 Apple iPad Minis!
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
for making the reception a truly five-star affair!
8:30 – 9:00 a.m.
9:00 – 10:00 a.m.
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.
10:15 – 11:15 a.m.
BREAKOUT SESSION E
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
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
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.
11:30 a.m. – 12:30 p.m.
BREAKOUT SESSION F
Myriad Perspectives on the Supreme Court’s Ruling in
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
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
You Received a Cease-and-Desist. There’s a Possible Indemnitor. Now
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
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
William J. Griffin & Brent E. Routman
Kristine M. Boylan, moderator
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
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.
2:45 – 3:45 p.m.
BREAKOUT SESSION H
A Patent Landscape Analysis of Vascular Grafts, The Patent Monetizers’
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
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
Barbara Grahn & Scott W. Johnston
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.
3:45 – 4:00 p.m.
4:00 – 5:00 p.m.
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
Hildy Bowbeer, Ann N. Cathcart Chaplin, Jan M. Conlin, Ann M. Mueting &
Kathleen A. Marron, moderator