Schedule and Faculty

DAY 1

8:30 – 9:00 a.m.

CHECK-IN & CONTINENTAL BREAKFAST

MORNING PLENARY SESSIONS

9:00 – 10:00 a.m.

Chief IP Counsel on Controlling Costs in IP Protection and Defense – A Session for Private Practitioners
The panel will share their insights and cost-effective strategies for private practitioners on: Obtaining patent protection and opposing
infringement claims; Alternatives to patent protection; Cost effective litigation strategies, including special fee arrangements; Use of ADR in IP disputes; Fixed fee arrangements; Trademark protection and defense; Copyright registration.

– Harry J. Gwinnell, Kevin H. Rhodes & Andrew Ubel
– David A. Allgeyer, moderator

 OR

The Power IP Update for In-House Counsel – 2009
You’ll learn the latest and greatest cases in each major area of IP law: patents, trademarks and copyrights. Whether you prosecute patents, register trademarks and copyrights, do transactional work or manage litigation, you won’t want to miss this essential update.  

– David J. F. Gross

 

10:00 – 10:15 a.m.

BREAK

 

10:15 – 11:15 a.m.

The Power IP Update for Private Practitioners – 2009
You’ll learn the latest and greatest cases in each major area of IP law: patents, trademarks and copyrights. Whether you prosecute patents, register trademarks and copyrights, or litigate, you won’t want to miss this essential update.  

– David J. F. Gross

 OR

Chief IP Counsel on Controlling Costs in IP Protection and Defense – A Session for In-House Counsel
The panel will share their insights and cost-effective strategies for in-house counsel on: Obtaining patent protection and opposing
infringement claims; Alternatives to patent protection; Cost effective litigation strategies, including special fee arrangements; Use of ADR in IP disputes; Fixed fee arrangements; Trademark protection and defense; Copyright registration.

– Harry J. Gwinnell, Kevin H. Rhodes & Andrew Ubel
– David A. Allgeyer, moderator

11:15 – 11:30 a.m.

BREAK

11:30 – 12:30 p.m.

BREAKOUT SESSION A

1. The Year in Patent Law: Bilski, the CAFC, Proposed Reform and More
Patent attorney John Dragseth reviews significant legal developments over the past year, with a focus on the latest CAFC decisions and trends, plus a "status update" on the PTO patent rules and on proposed patent reform legislation.

– John A. Dragseth

 

2. Can’t We Just Get Along? – How to Resolve Trademark Disputes Through Coexistence Agreements and Consents
Trademark owners frequently use coexistence agreements to settle trademark disputes and avoid lawsuits, oppositions and cancellation actions. Four experienced trademark lawyers share their advice on negotiating coexistence agreements in both domestic and international matters while keeping in mind future use considerations, the client’s interest and the public interest. They also will discuss how to use consents in obtaining registration in the U. S. and other countries.

– Stephen W. Feingold, Laura J. Hein & Sarah Lockner
– Barbara Grahn, moderator

 

3. Serving Up 10 Hot Topics in IP Licensing
Changes in technology, the current business climate, and recent judicial decisions have caused interesting changes in how practitioners approach IP licensing. This session covers ten of these changes. Topics include: Jacobson v. Katzer, the Open-Source Software Movement, and Copyright Protections; Unanswered Questions Following Quanta v. LG.; Navigating the Spectrum of Control – from Naked Licensing to Inadvertent Franchise; The Impact of Bankruptcy on Intellectual Property Licensing; Shaping IP Licenses After MedImmune; and much more.

– Felicia J. Boyd

12:30 – 1:30 p.m.

INSTITUTE LUNCHEON
The Institute luncheon is being provided by Minnesota CLE and will be held at the Marriott City Center.

SPECIAL LUNCHEON PRESENTATION

Why I Love Trying Cases
presented by Morgan Chu

Morgan Chu is a partner of Irell & Manella LLP in Los Angeles. He has been recognized as one of the "Top 10 Trial Lawyers" in the nation and one of the "100 Most Influential Lawyers in America" by The National Law Journal and "The Outstanding Intellectual Property Lawyer in the United States" by Chambers & Partners. Chambers described Mr. Chu as "beyond doubt the most gifted trial lawyer in the USA," who "delivers staggering results for clients."

1:30 – 1:45 p.m.

BREAK

1:45 – 2:45 p.m.

BREAKOUT SESSION B

4. Patenting Green: Issues Relating to the Emergence of Patents Concerning Green Technologies
With the ever increasing emphasis on implementation of technology with "green" considerations, there can be advantages in considering relevant factors when crafting claim sets for many types of inventions, whether or not the invention is initially perceived as "green." Session topics include: how to identify the key to patentability, how to draft the specification and claims in anticipation of future obviousness rejections (particularly for claims dealing with topics such as substitution of materials or repurposing of existing materials), and possible strategies for accelerating prosecution of "green" inventions. We also will explore the potential for taking advantage of related government regulations in defining claim scope, as well as some international issues.

– Julie R. Daulton & Randy A. Hillson

 

5. The Year in Trademark Law – Search Engines, Counterfeit Goods and Other Compelling Topics Tackled by the Courts
Trademark attorneys Stephen Baird and Stephen Feingold will analyze the practical implications of this year’s most significant trademark decisions, including Tiffany Inc. v. eBay, Rescuecom Corp. v. Google, Pro Football v. Harjo and more.

– Stephen R. Baird & Stephen W. Feingold

 

6. Pre-filing Considerations in IP Cases
Nationally renowned IP litigator Morgan Chu discusses legal and strategic considerations including: Strategy secrets and pre-filing considerations in IP cases; Pitfalls and problems for a proper infringement analysis under Rule 11; Strategic issues, including venue selection; New pleading potholes to avoid.

– Morgan Chu

 

7. Technotainment: Legal Issues on the New Virtual Frontier
The evolution of the Internet into a mainstream communications and promotional toolbox means that once-fringe applications and practices have created new legal concerns involving privacy, misuse of trademarks, unauthorized use of creative works, user generated content, defamation and fraud. This session will examine the emerging legal issues raised for each.

– Stephen R. Bergerson

2:45 – 3:00 p.m.

BREAK

3:00 – 4:00 p.m.

BREAKOUT SESSION C

8. Best Practices After Bilski
A discussion on the drafting lessons learned from the In re Bilski case, including a brief review of the Federal Circuit’s decision and the subsequent opinions that have analyzed and interpreted Bilski. We will consider claim drafting strategies that give the best chance to overcome statutory subject matter attacks in light of these existing decisions and the potential approaches to the issue that may be taken in the upcoming U.S. Supreme Court decision.

– Daniel A. Tysver

 

9. Getting into the Gazette: Tips for ®esponding to ®efusals, ®equests and ®equirements
A panel of three former trademark examining attorneys gives you the inside scoop on how best to respond to trademark office actions. Learn what arguments and evidence are the most persuasive in overcoming refusals based on likelihood of confusion, descriptiveness, surnames, and the failure to function as a mark. The panel will also discuss the importance of honesty and candor in your dealings with the Trademark Office and the consequences of fraud.

– Scott M. Oslick & James F. Voegeli
– Danielle I. Mattessich, moderator

 

10. A Judge’s View of Patent Cases – What Works and What Doesn’t
Even experienced litigators can make costly errors in patent trials. Judge Ron Clark will discuss common mistakes he sees in his court and provide suggestions for successful presentation of your case, including tips on trying a case in the Eastern District of Texas. Plus, you’ll have the opportunity to ask Judge Clark your questions about patent practice.

– Judge Ron Clark
– Jake M. Holdreith, moderator

 

11. Can You Keep a Secret? The Top 10 Mistakes Companies Make Protecting Trade Secrets and How to Avoid Them
From access to zero tolerance, from creation to obsolescence, learn the importance of developing a strong trade secret protocol and enforcing it consistently. Two in-house counsel with decades of trade secret experience share their best tips with you.

– Renee L. Jackson & Scott Piering

4:00 – 4:15 p.m.

BREAK

4:15 – 5:15 p.m.

BREAKOUT SESSION D

12. How to Position a Patent for Success in China
This session is formatted to provide practical information and real-world context regarding the differences in prosecuting patents in China v. the United States. What issues frequently arise in prosecuting patents in China? And what are concrete ways to overcome those problems?

– Nongfan Zhu
– Edna Vassilovski, moderator

 

13. Copyrights in a Digital World – The Google Booksearch Program and More
The Google Booksearch program may be the greatest literary salvage operation in history – if the settlement is approved, Google may rescue from oblivion millions of orphan works that have gone out of print but remain protected by copyright. It also may be the death knell for "traditional" literary works copyrights, bestowing on a single owner a virtual worldwide monopoly over not only orphans but works in the public domain. Learn how the collision of technological innovation and copyright laws struggling vainly to harness the Worldwide Web is expected to affect authors, academics, publishers, journalists, and libraries worldwide.

– Bruce H. Little

 

14. Hot Topics in Patent Remedies and Damages
Review of the hottest case law developments and trends related to these issues: Apportionment of damages; Developments in reasonable royalty calculations; Impact of the proposed Patent Reform Act on damages; The district courts’ gatekeeper role in allowing evidence related to the calculation of damages.

– Professor Thomas F. Cotter & Devan V. Padmanabhan

 

15. The Client’s IP Portfolio: Better Understanding the Business Issues to Better Align Your Legal Advice to Business Needs
A client’s development strategies, cost concerns and business plan affect the role that IP plays in its business choices. As an IP attorney, it’s important to understand these business needs and the client’s own perspective regarding its IP portfolio. This panel, moderated by an IP attorney, will provide insight into how "the business" views the role of the IP portfolio in its operations, how they have worked successfully (or not so well) with legal counsel in leveraging those assets, and what trends they have seen with respect to IP matters in today’s economic climate.

– Michele Earney, Sam Herrmann & Eran Kahana
– Tricia A. Olson, moderator

5:15 – 6:00 p.m.

FIVE-STAR RECEPTION

Join your colleagues for:

• Gourmet hors d’oeuvres

• Fine wines

• Local beers

• Networking in a relaxed setting

• A chance to win great prizes!

Register for a Chance to Win!

Register for a chance to win a Herman Miller Aeron Chair or a 32-inch LCD Television. The prize drawing will take place at the reception on Thursday, September 24, and you must be present at the reception during the prize drawing to win. Any person may receive an entry slip on Thursday, September 24, at the Institute registration desk until the reception begins at 5:15 p.m. Registration for the 2009 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.

CHECK-IN & CONTINENTAL BREAKFAST

MORNING PLENARY SESSIONS

9:00 – 10:00 a.m.

Changing the Game: Strategies for Mediating IP Deals and Disputes
Hesha Abrams is a nationally acclaimed private negotiator/settlement counsel and mediator known for crafting highly creative settlements in very difficult cases. She specializes in creating innovative solutions for complex commercial cases and intellectual property matters. She also coordinates "Deal Mediations," in which she drives a complex business deal to successful signing. In this session, Ms. Abrams shares her game-changing strategies for finding common ground among parties, encouraging creative problem-solving, and overcoming impasse so that the parties involved can resolve disputes and get the deal done.

– Hesha Abrams

 

10:00 – 10:45 a.m.

Searching Inside Google: Cases, Controversies and the Future of the World’s Most Provocative Company
For a company whose motto is "Do No Evil" Google certainly has its share of detractors. The company is at the center of numerous controversies that will determine how people use the Internet, find information, and communicate with each other. Professor Jon Garon explores the cases that will shape Google’s future and the implications for copyright and trademark owners, including: The latest AdWords’ case Rescuecom v. Google, the proposed Book Search settlement, the Viacom v. YouTube copyright infringement case, and looming antitrust investigations. He also will speculate about the future of Google as it consolidates its control over online search and advertising and expands into telecommunications, mobile devices and cloud computing.

– Professor Jon M. Garon

10:45 – 11:00 a.m.

BREAK

11:00 – 12:00 p.m.

BREAKOUT SESSION E

16. Inter Partes Reexamination Panel Discussion
Not long ago, patent attorneys hesitated to file an inter partes reexamination request because of concerns about estoppel issues and expectation of success of the reexamination. Times have changed and interest in inter partes reexaminations has never been higher. The KSR v. Teleflex decision and a host of other decisions have changed the way examiners and patent attorneys view inter partes reexamination practice. Our panel includes attorneys experienced with the use of inter partes reexamination in both prosecution and litigation, and will cover strategies in filing inter partes reexamination requests from both a prosecution and litigation perspective. The panel also will discuss recent trends and events affecting inter partes reexamination requests.

– Greg H. Gardella, Brad D. Pedersen & Becky R. Thorson
– Timothy E. Bianchi, moderator

 

17. Extending Your Trademark Rights into the U.K. and the Rest of Europe – A Practical "How To" Discussion Via a Mock Counseling Session
Come watch and participate in a mock trademark counseling session in which a U.S. attorney and a U.K. attorney discuss a U.S. client’s expansion of its business into Europe and cover all the trademark and related issues that the client must consider to make sure it protects its rights in the U.K. and the rest of Europe.

– Timothy M. Kenny & Allan Poulter

 

18. Use It or Lose It: Preventing Privilege Waivers and the Ethical Duty to Protect Client Confidences

1.0 ethics credit applied for

Attorneys have an ethical obligation to protect their clients’ privileged information. Learn the different types of waivers and how to avoid inadvertent waivers.

– Eric T. Cooperstein

12:00 – 1:15 p.m.

LUNCH (on your own)

1:15 – 2:15 p.m.

BREAKOUT SESSION F

19. Divided Infringement: When Multiple Actors Are Required to Satisfy All the Steps of a Method Claim
There can be no cause of action for infringement unless each and every step of a claimed process is performed by a single actor or a "mastermind" that directs or controls the entire process. In this presentation, we will discuss recent Federal Circuit decisions addressing divided infringement and the "mastermind" requirement to establish direct or vicarious infringement liability. We also will discuss claim drafting techniques to ensure a claimed process can be satisfied by a single actor even though actual performance of the invention involves multiple parties.

– Thomas J. Oppold

 

20. The Year in Copyright Law
Copyright law expert Cal Litsey discusses the practical implications of recent copyright developments including the new PRO-IP Act and cases such as Capital Records v. Thomas, the grant of cert in In re Literary Works in Electronic Databases Copyright Litigation, and more.

– Calvin L. Litsey

 

21. Trademark Monitoring and Enforcement – An In-House Counsel Panel on What Works, What Doesn’t, and When to Seek Outside Help
Learn how senior legal counsel at companies representing a range of industries, and of diverse size, help their clients acquire and protect their valuable trademarks. This is no small feat given the explosion of social networking sites, as well as limited budgets and headcount. Hear what steps these attorneys take – from setting strategies and budgets, to leveraging internal and external resources – to help protect their clients’ portfolios. You’ll get candid insight on what these experienced in-house attorneys spend their time doing to construct and manage effective trademark and enforcement efforts, and which tools they consider ineffective uses of their resources.

– Michael Blum, Christopher A. Curry & Sarah L. Nelsen
– Kari J. Wangensteen, moderator

2:15 – 2:30 p.m.

BREAK

2:30 – 3:30 p.m.

BREAKOUT SESSION G

22. Prosecuting Patent Applications to Overcome the Pro-Rejection Pattern at the PTO
For the last several years, the allowance rate at the USPTO has been decreasing. Applicants have found that several rounds of RCEs are often necessary to make progress in prosecution. This session will deal with substantive and procedural practices that can, in some cases, reduce the delay and/or expense of prosecuting applications in the current climate at the USPTO.

– Alan M. Koenck

 

23. How to Protect Your Marks – Both Offensively and Defensively – in the Expanded Domain Name System
Come and learn how ICANN intends to protect the rights of trademark owners in an expanded domain name system. This session will provide you with an update on the status of the new gTLD rollout, as well as a discussion on key issues regarding the application process and the mechanisms that may be available to protect your marks both offensively and defensively in the new gTLD space.

– Caroline G. Chicoine

 

24. How to Web 2.0: Hands-On Guidance to Social Networking and New Technologies for IP Lawyers and Businesses
Hundreds of thousands of lawyers are creating online profiles on sites like LinkedIn, Legal OnRamp, JD Supra and Martindale-Hubbell Connected. They are downloading business applications to iPhones and Smartphones. They are blogging, texting and even tweeting. In-house counsel are using these new "Web 2.0" technologies to vet providers, hire law firms, research opposing counsel, update their contact lists, reconnect and collaborate with colleagues, generate trusted referrals, and get suggestions for best practices and insights into compliance issues in their industries. Come to this workshop to learn which of these new technologies can address your existing professional needs and are worth your time and energy. All ability levels and legal specialties welcome.

– Leora Maccabee