Schedule and Faculty
Day 1
8:15 – 8:50 a.m.
CHECK-IN & CONTINENTAL BREAKFAST
8:50 – 9:00 a.m.
WELCOME & INTRODUCTION
9:00 – 11:00 a.m.
MAIN PLENARY SESSION
9:00 – 9:30 a.m.My First Year on the Court of Appeals for the Federal Circuit: Lessons Learned and Advice for Every IP Lawyer
– Judge Jimmie V. Reyna
9:30 – 10:30 a.m.
D.C. Update: Insights from Inside the Beltway
A one-of-a-kind session led by two noted D.C. intellectual property counsel: Roderick McKelvie (former federal judge for the District of Delaware) and Mike Jakes (lead petitioner counsel in Bilski). You’ll watch short video clips of interviews with top federal decisionmakers specially taped for this Institute. Judge McKelvie and Mr. Jakes conducted these interviews and, in this session, provide additional thoughts about the important new IP developments discussed in these clips. Interviewees include:
David Kappos
Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark OfficeRandall R. Rader
Chief Judge of the United States Court of Appeals for the Federal CircuitSuzanne D. Munck
Chief Counsel for Intellectual Property at the Federal Trade Commission– J. Michael Jakes & Roderick R. McKelvie
10:30 – 11:00 a.m.
The America Invents Act – Changing the Landscape of Patent Law
The USPTO General Counsel reviews the major provisions of the AIA.
– Bernard J. Knight, Jr.
ALTERNATE PLENARY SESSION
9:00 – 10:00 a.m.How to Review a Client’s IP Portfolio
Have you checked your IP lately? Companies often start businesses with a business plan, strategies and the ability to do something well, but few companies begin with the strategy of securing their IP. Instead, the IP exists in the company and might not be protected well or at all. This session explores where to begin with the client to help it gain an understanding of what it has and how to confirm its IP is secured.
– Tricia A. Olson
10:00 – 11:00 a.m.
Gotchas, Mistakes, and Deals Gone Wrong! Fundamentals of IP Licensing and Assignments
There are some special "rules" when it comes to transferring trademarks, copyrights, patents and trade secrets. We’ll cover lessons learned from others who used bad (and good) provisions in their licenses and assignments of IP. We’ll take a pragmatic approach, present some real-world scenarios, and provide some exemplary language.
– Robert B. Leonard & Christopher M. Turoski
11:00 – 11:15 a.m.
BREAK
11:15 a.m. – 12:15 p.m.
BREAKOUT SESSION A
001
USPTO Implementation of the America Invents Act – A Behind-the-Scenes View
The USPTO General Counsel will update you on AIA rules issued to date and in the immediate pipeline. Get an insider’s view of the internal considerations in developing the final rules and the impact of the public comments.
– Bernard J. Knight, Jr.
002
The Year in Trademark Law: Lessons from Ten Cases
Trademark attorneys Stephen Baird and Paul Mussell analyze the practical implications of this year’s ten most significant trademark decisions; including issues as wide-ranging as jurisdiction via social media, the extraterritorial reach of U.S. injunctions, personal liability for trademark infringement, the protectability of dripping wax, and a variety of others.
– Stephen R. Baird & Paul W. Mussell
003
Patent Damages: Are There No More "Rules of Thumb"?
The law of patent damages continues to evolve as the Federal Circuit chips away at what had been well-recognized approaches used by plaintiffs over the past two decades. In this session you’ll learn how parties are adapting to the ever-changing landscape, including the increasingly difficult challenge in obtaining damages for an invention that plays an isolated role in an accused product.
– Rachel C. Hughey & Karen D. McDaniel
004
Mergers & Acquisitions – An IP Due Diligence Checklist
An attorney tasked with handling the IP issues of a business transaction must be prepared for due diligence on a wide range of IP types and issues. This session will present a checklist that covers the various types of IP that may be encountered: patent, trademarks, copyrights, trade secrets, and others, less obvious, such as designs, domain names, software, open source, in and out licensed rights, and other variants. It will help identify IP types found in various kinds of businesses, some of the due diligence issues unique to IP types and where searching or inquiry might turn up relevant information for IP due diligence.
– Stuart R. Hemphill & Jacob L. Lee
12:15 – 1:30 p.m.
INSTITUTE LUNCHEON
provided by Minnesota CLE
Minneapolis Marriott City Center
1:30 – 2:30 p.m.
BREAKOUT SESSION B
005
The New Post-Issuance Review Landscape
The America Invents Act (AIA) has already begun changing the way we practice patent law. Patents will soon be tested using new post-grant review and inter partes review procedures provided by the AIA. This session will provide a refresher on the landscape of various options for post-issuance review after the AIA and practical tips for how parties can use them. This session will also include discussion of how litigation and post-issuance review will work together and some of the conflicts presented when post-issuance review and litigation interact.
– Timothy E. Bianchi & Kevin H. Rhodes
006
Celebrity Case Law: Balancing the Right of Publicity with Trademark and Copyright Principles
To what extent can celebrities control how their names and likenesses can be used by others? Tiger Woods, Shirley Jones and Michael Jordan have all been involved in significant right of publicity cases in recent years that have helped define the line between creative expression and commercial use, but many gray areas still exist. Tony Zeuli, defendant’s counsel in the Michael Jordan case, discusses these decisions and opines on the future of the right of publicity.
– Tony R. Zeuli
007
The Future of Joint Infringement in the U.S.: A Review of Akamai and McKesson and Their Potential Impact on Claim Drafting and Enforcement Strategies
The issue of joint infringement can arise when the elements of a claim require the combined acts of two or more entities. In such cases, it is not always clear whether direct or joint liability will apply, particularly in view of the relationship (or lack thereof) between the parties. In November 2011, the Federal Circuit heard oral argument in two separate appeals, Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems, Corp., to reexamine the legal standards and requirements for joint infringement. This presentation will examine the existing standards for analyzing joint infringement, including the nature and type of relationship that must exist between the entities accused of jointly infringing a claim, provide a detailed overview of the Akamai and McKesson appeals and the new or modified legal tests that may emerge from these cases in 2012, and provide practical examples and tips so that claim drafters and patent litigants can better prepare for the future of joint infringement in the U.S.
– J. Michael Jakes
008
Advanced Issues in Trademark and Copyright Licensing for In-House Counsel
This session will address advanced topics in trademark and copyright licensing. Trademark licensing topics will include co-branding and cross-licensing, along with some international issues and a little ambush marketing. Copyright licensing issues will include restrictions in software licensing, mergers and acquisitions, ownership issues, and the impact of technology on format licensing.
– Caldwell Camero & Chris Sullivan
2:30 – 2:45 p.m.
BREAK
2:45 – 3:45 p.m.
BREAKOUT SESSION C
009
The Year in Patent Law at the CAFC and U.S. Supreme Court
This session focuses on noteworthy recent CAFC and U.S. Supreme Court patent decisions, moving beyond the basic holdings to an exploration of how the decisions are really impacting legal counseling and litigation.
– John A. Dragseth & Thomas L. Irving
010
Controlling Brand Identity and Untangling Copyright Complexities in the Mad, Mad, Viral World
A practical look at copyright and trademark law in the rapidly changing social media context. This session explores hot-button copyright issues and tackles trademarks in terms of brand identity maintenance, review of some classic social media mistakes ("Whew! Glad that wasn’t my client!"), and how to help develop corporate awareness, positions and policies to manage risk and maximize brand potential.
– Betsy Butwin & James L. Young
011
How the America Invents Act Changes Patent Litigation
A seasoned IP trial attorney analyzes the impact of the new AIA litigation provisions (including anti-joinder), litigation strategies in light of new provisions and proceedings, ambiguities that exist and what to do in the face of those ambiguities.
– Becky R. Thorson
012
Protecting the Company from Electronic Theft of Intellectual Property
Mark Lanterman, one of the area’s best known experts in computer forensics, describes how your company’s electronic data, trade secrets, and other sensitive information can be stolen by employees and outsiders. Through the review of actual case studies, you will learn the methods that cyber thieves use to steal data, how to prevent hacking and unauthorized access to your network, and best practices for internal security.
– Mark Lanterman
3:45 – 4:00 p.m.
BREAK
4:00 – 5:00 p.m.
BREAKOUT SESSION D
013
Surviving Patent Litigation with Well-Crafted Claims
The specification, file history and claims are always the subject of close scrutiny during patent litigation. Thoughtful drafting of both the patent application and the claims should help favorably influence the outcome of patent litigation for your client by enhancing the chance the court will find claims valid, infringed, and enforceable. This presentation will provide detailed procedures and practical tips for drafting patents and claims with a goal toward having them survive the rigors of patent litigation.
– Thomas L. Irving
014
Settlement Trends in Trademark Cases
An overwhelming percentage of trademark disputes are settled in court, out of court and at the Trademark Trial and Appeal Board. Learn about new developments in substantive law and in court and Board procedures relating to settlements in trademark cases. Hear about the trends here in the Minnesota and across the nation.
– Hildy Bowbeer, Thad Chaloemtiarana & Magistrate Judge Jeanne J. Graham
– Kristine M. Boylan, moderator
015
Are You Mocking My Patent Trial?
We all know that if both sides escape summary judgment in a patent case then a jury of regular citizens will decide who wins the trial. A mock trial is an efficient way to learn which arguments work with "normal people" and which arguments fall apart. In this session you’ll see a mock "mock trial" and learn how to make the most of your next mock trial.
– Theodore M. Budd & Kevin P. Wagner
016
New Developments in International IP: Three Hot Topics in 2012
In this session, Professor Erstling tackles three timely issues in international IP:
The impact of the America Invents Act on the Patent Cooperation Treaty;
Possible results of the USPTO’s new attitude toward harmonization; and
The new Beijing Treaty on Audiovisual Performances.
– Jay Erstling
5:00 – 6:00 p.m.
RECEPTION
Register for a Chance to Win!
Register for a chance to win one of 3 iPad 3s! The prize drawing will take place at the reception on Thursday, September 20, and you must be present at the reception during the prize drawing to win. Any person may receive an entry slip on Thursday, September 20, at the Institute registration desk until the reception begins at 5:00 p.m. Registration for the 2012 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
A behind-the-scenes exploration of local IP stories. You’ll hear about a Minnesota songwriter who is taking on a record company to get the copyright to a popular song back, and an entrepreneur who faced down an Irish whiskey distiller over the Big Ginger cocktail. You’ll also hear from the clients’ attorneys about the legal strategy behind the stories.
– Kenneth J. Abdo, Brian Beutner, Kieran Folliard, Steven Greenberg & Timothy M. Kenny
– Rita A. O’Keeffe, moderator
10:00 – 10:15 a.m.
BREAK
10:15 – 11:15 a.m.
BREAKOUT SESSION E
017
Fast Lane Prosecution: Allowance in One Year
Insights from a veteran patent lawyer and an experienced in-house counsel on:
Strategies for quick patenting;
The AIA’s prioritized examination;
Patent prosecution highway;
The death of accelerated examination; and
Aggressive use of interviewing.
– Thomas D. Franklin & Dion Messer
018
Copyright Year in Review
Two copyright law experts discuss the practical implications of recent copyright developments; including case law on copyright limitations, fair use and the first sale doctrine, as well as legislative efforts aimed at curbing online piracy.
– Calvin L. Litsey & Ruth Rivard
019
Top IP Issues in Contracts
Intellectual property is everywhere, including in your most important and even not-as-important contracts. You may not recognize the IP implications of every contract and deal, but they are still there. An IP litigator and negotiator teams up with in-house counsel to highlight the most important IP issues to look for and deal with in your contracts and licenses.
– David A. Allgeyer & Steven D. Kelley
11:15 – 11:30 a.m.
BREAK
11:30 a.m. – 12:30 p.m.
BREAKOUT SESSION F
020
Adding Mayo v. Prometheus to the Mix – Practical Analysis and Advice for Patent Prosecutors and Litigators
On March 20, 2012, the United States Supreme Court issued a unanimous decision in Mayo Collaborative Services v. Prometheus Labs., Inc., finding invalid Prometheus’s patent claims relating to methods of optimizing the dosage of a drug because those claims sought to cover a law of nature. The panel will discuss what constitutes patentable subject matter and not an abstract idea or law of nature under current court directives including Bilski v. Kappos and how to use those directives in prosecuting claims before the USPTO or in challenging the validity of the claims in litigation.
– Daniel A. Tysver & Ann S. Viksnins
– Felicia J. Boyd, moderator
021
Life in the New .world!
Get the latest updates on ICANN’s new gTLD program. Learn the details regarding the new rights protection mechanisms (RPMs) available to brand holders to protect their marks once new gTLDs like .blog and .food go live. You’ll hear the perspective of a brand owner and how it is preparing for the launch, as well as from the National Arbitration Forum, one of the providers for one of the new RPMs.
– Joshua J. Burke & Kristine F. Dorrain
– Caroline G. Chicoine, moderator
022
Resolving IP Disputes Pre-Suit: Aligning Strategy with Business Needs
Learn from your peers in this practical session with immediate application to your work as in-house counsel. Experienced legal counsel from businesses of differing size and type examine pre-suit resolution of intellectual property disputes – starting with tips for effectively handling matters at that very first indication of trouble. Topics will include the impact of recent legal developments such as the CAFC’s decision in In re MSTG, Inc. (April 2012) regarding discovery of settlement negotiations in "patent troll" cases.
– Christopher A. Curry, Daniel J. Enebo & Dion Messer
– Gregory C. Brown, moderator
12:30 – 1:30 p.m.
LUNCH (on your own)
1:30 – 2:30 p.m.
BREAKOUT SESSION G
023
First-Inventor-To-File (FITF) and Other AIA Prosecution Changes: What’s Your Strategy?
You’ve tried to decipher what the new law says, now, in this session, Brad Pedersen considers the implications of putting the AIA changes to patent prosecution into practice. Sharpen your pencils, charge up your iPads as we dive into real-world FITF filing strategies and other prosecution considerations, including the new third party submission options.
– Brad D. Pedersen
024
Use It or Lose It: Advising Trademark Clients About Post-Registration Matters
A fast-paced review of important post-registration matters that trademark lawyers and their clients should consider, including:
How to monitor and when to enforce trademark rights;
Understanding use requirements and developing trademark use policies;
Addressing domain name issues;
Identifying and avoiding fake solicitations;
And more!
– Daniel J. Kelly
025
Two Doctrines that Impact Patent Licensing: Exhaustion and Implied Licenses
Implied license and exhaustion doctrines crucially impact the drafting and negotiation of patent licenses. This presentation will analyze the current case law that interprets and distinguishes these two doctrines. This presentation also provides frameworks for analyzing implied license and exhaustion issues and then highlights tactics to account for the doctrines when drafting and negotiating licenses. Case law interpreting the Supreme Court’s important Quanta Computer, Inc. v. LG Electronics, Inc. also will be discussed.
– David B. Kagan
2:30 – 2:45 p.m.
BREAK
2:45 – 3:45 p.m.
BREAKOUT SESSION H
026
Patent Law Snapshots
Three brief presentations on three important patent topics: how to find unconventional prior art, virtual patent marking, and strategies for interviewing patent examiners.
– Jon M. Harkness, Stephen M. Komarec & Eric J. Snustad
– Alan M. Koenck, moderator
027
Advanced Issues in Trademark and Copyright Licensing
This session will address advanced topics in trademark and copyright licensing. Trademark licensing topics will include co-branding and cross-licensing, along with some international issues and a little ambush marketing. Copyright licensing issues will include restrictions in software licensing, mergers and acquisitions, ownership issues, and the impact of technology on format licensing.
– Caldwell Camero & Chris Sullivan
028
Protecting the Company from Electronic Theft of Intellectual Property
Mark Lanterman, one of the area’s best known experts in computer forensics, describes how your company’s electronic data, trade secrets, and other sensitive information can be stolen by employees and outsiders. Through the review of actual case studies, you will learn the methods that cyber thieves use to steal data, how to prevent hacking and unauthorized access to your network, and best practices for internal security.
– Mark Lanterman