IN-PERSON PASSHOLDERS:
You may use your Pass to register for the live webcast at no charge.
Thursday, September 23, 2021 - Friday, September 24, 2021
8:50 AM - 4:35 PM | Check-In: 8:15 AM
LIVE ONLINE ONLY – NO IN-PERSON ATTENDANCE
In-Person Passholders – You may use your Pass to register for the live webcast at no charge.
Powered by the EventMobi platform, the 2021 Midwest IP Institute will feature:
Jimmie V. Reyna, Circuit Judge
U.S. Court of Appeals for the Federal Circuit
Drew Hirshfeld, Commissioner for Patents
U.S. Patent and Trademark Office
Also currently performing the duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
David S. Gooder, Commissioner for Trademarks
U.S. Patent and Trademark Office
Shira Perlmutter, Register of Copyrights and Director
U.S. Copyright Office
Gerard F. Rogers, Chief Administrative Trademark Judge
Trademark Trial and Appeal Board
U.S. Patent and Trademark Office
Andrei Iancu
Irell & Manella LLP
Former Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (2018-2021)
8:15 – 8:50 a.m.
JOIN ONLINE
8:50 – 9:00 a.m.
WELCOME
9:00 – 9:20 a.m.
A Conversation with Andrew Hirshfeld, Commissioner for Patents
Sandra Nowak from 3M interviews Andrew Hirshfeld, Commissioner for Patents, also currently performing the duties of the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Mr. Hirshfeld began his career as a Patent Examiner in 1994 and has served in many positions at the USPTO since then.
– Andrew Hirshfeld & Sandra K. Nowak
9:20 – 10:20 a.m.
IP 2021 – What Happened, Why It Matters and What’s Next
With the pandemic, changes in D.C., new law, new cases – and more, it can feel like drinking from a fire hose trying to keep up with everything new in IP law that’s impacting your clients. In this session, Felicia Boyd and James Smith distill significant changes into topic “buckets” to provide a digestible big-picture look at what’s new. They also discuss the future implications of today’s new developments – and what other changes tomorrow may bring in the IP space.
– Felicia J. Boyd & James D. Smith
10:20 – 10:40 a.m.
A Conversation with David Gooder, Commissioner for Trademarks
Stephen Lee from Target interviews David Gooder, Commissioner for Trademarks. Prior to joining the USPTO, Mr. Gooder served as the founding Managing Director and Chief Trademark Counsel at Jack Daniel’s Properties.
– Stephen C. Lee & David S. Gooder
10:40 – 10:55 a.m.
BREAK
10:55 – 11:55 a.m.
BREAKOUT SESSION A
001
2021 Patent Law Year in Review
The speakers will discuss recent patent decisions and their practical implications for your legal practice, including follow-up on the Arthrex and Minerva Supreme Court decisions, Federal Circuit decisions that will affect the trend of increasing employee mobility, the flurry of venue decisions out of Texas, and developments in claim construction and Section 101 case law. The presentation will focus on giving you useful practice pointers in each area of law.
– John A. Dragseth & Nitika Gupta Fiorella
002
5 Ways the New Trademark Modernization Act Will Change Your Practice
This session identifies 5 important changes the new Trademark Modernization Act of 2020 brings – and provides practical guidance for leveraging those changes to your clients’ best advantage. You’ll get tips to consider – and be alerted to potential traps to avoid – when dealing with (1) the changes to proceedings to cancel registrations of marks that are not in use; (2) the now-codified rebuttable presumption of irreparable harm for plaintiffs seeking injunctive relief under the Lanham Act; (3) two new ex parte procedures; (4) letters of protest, newly elevated from regulatory to statutory level; and (5) new timeframes that the USPTO can set for Office Action response periods.
– Tiffany A. Blofield & Joshua J. Burke
003
For In-House Attorneys Advising on IP Matters – 20 “Crossover” Practice Tips on Antitrust, Privacy, Bankruptcy, and Advertising Law
Four experts – one each in antitrust, privacy, bankruptcy, and advertising law – answer critical, common questions that you need to understand about how the law of their practice areas intersects with the IP matters you’re handling. A great session to help you avoid traps for the unaware and better advise your clients!
– Kerry Childe, James J. Long, Rita Anne O’Keeffe & Amy J. Swedberg
11:55 a.m. – 12:45 p.m.
LUNCH BREAK
12:45 – 1:45 p.m.
BREAKOUT SESSION B
101
Interview with the Inventor: Considerations and Strategies for Patent Filings and Opinion Work
A discussion of practical considerations for inventor interviews and inventor interactions for patent filings and freedom-to-operate opinion work. The discussion will look at considerations both from the perspective of the practitioner and the perspective of the inventor. Topics that will be addressed include tactics for working with solo inventors and corporate inventors, issues that come into play while working with international inventors, and protecting attorney-client privilege during interactions with technical experts for freedom-to-operate matters.
– Boyd B. Black, Thea E. Reilkoff & Erik Wright
102
How to Combat Failure-to-Function Refusals – Top Strategies for Trademark Applicants Amid a Rise in Refusals
Failure-to-function refusals are on the rise at the USPTO, perhaps as a backstop to the openings created by the elimination of long-standing grounds for refusing marks as disparaging or offensive. It also may simply be the result of what seems to be ever-increasing misguided attempts by individuals and businesses to “own” popular and commonplace words or phrases. Two experienced trademark attorneys guide you through avoiding these kinds of refusals and the types of evidence that applicants can proffer to combat failure-to-function refusals. They will provide practical insights on which tools are strongest – and why – and how to present that evidence most persuasively.
– Stephen R. Baird & Draeke H. Weseman
103
M&A: Understanding the IP Value Drivers and Executing the Deal
E.B. McCusker and Hao Wang share their insights on: Bridging deal objectives and and IP assets; Optimizing resources across the transaction lifecycle; and Tips for addressing key IP issues.
– Elizabeth (E.B.) McCusker & Hao Wang
1:45 – 2:00 p.m.
BREAK
2:00 – 3:00 p.m.
BREAKOUT SESSION C
201
Strategic Patent Drafting: Should You Be Your Own Lexicographer?
Join us for a dialogue between a patent prosecutor and a patent litigator about the pros and cons of defining claim terms in the specifications of patent applications. They’ll share examples and insights from their years of experience.
– Thomas R. Hipkins & Adam R. Steinert
202
2021 Trademark Law Year in Review
Four trademark law experts will discuss a wide range of topics from application of anti-trust laws to trademark settlement agreements, trade dress protection, counterfeiting, willful infringement, and more. This year’s principal cases include 1-800 Contacts, Inc. vs. Federal Trade Commission, Select Comfort Corp. v. Baxter, and Future Proof Brands, L.L.C. v. Molson Coors Beverage Co.
– Dean C. Eyler, Heather J. Kliebenstein, Timothy D. Sitzmann & Ann Dunn Wessberg
203
Practical Tips for Navigating Copyright and Trademark Fair Use Pitfalls
Join us for a practical conversation about fair use. Topics will include use of music, photos, videos, user generated content, and competitors’ alleged and actual trademarks in various contexts, including on social media, in presentations/pitches, and in developing technologies such as NFTs. Be ready the next time a business client or the marketing department asks, “Can I use this?”
– Elizabeth C. Buckingham & Evan Everist
3:00 – 3:15 p.m.
BREAK
3:15 – 3:35 p.m.
A Conversation with Gerard Rogers, Chief Administrative Trademark Judge
Barbara Grahn from the Fox Rothschild firm interviews Gerard Rogers, Chief Administrative Trademark Judge of the Trademark Trial and Appeal Board. Before taking on responsibility for TTAB operations, Chief Judge Rogers spent 10 years serving as one of the board’s judges, sitting on panels to hear appeal and trial cases, and authoring final decisions in such cases.
– Barbara J. Grahn & Gerard F. Rogers
3:35 – 4:35 p.m.
Slanted: How an Asian American Troublemaker Took on the Supreme Court
Simon Tam was the plaintiff in the landmark 2017 trademark case, Matal v. Tam, which clarified First Amendment rights in trademark law. Mr. Tam recounts his journey from childhood to the Supreme Court and shares his insights about the Asian American experience and contemporary race and social justice issues.
– Simon Tam
4:35 – 5:00 p.m.
RECEPTION & PRIZE DRAWING
courtesy of the sponsoring firms
Register for a chance to win one of the following gift cards:
The prize drawing will take place during the virtual reception on Thursday, September 23. Attendees will receive instructions for entering the prize drawing on Thursday morning. Any person may receive entry information on Thursday, September 23, by calling 800-759-8840 by 4:00 p.m. Central. Registration for the 2021 Midwest IP Institute is not required. The following individuals are not eligible to win: employees of Minnesota CLE and the Minnesota State Bar Association, as well as family members of those employees.
8:15 – 8:55 a.m.
JOIN ONLINE
8:55 – 9:00 a.m.
WELCOME
9:00 – 9:20 a.m.
A Conversation with Federal Circuit Judge Jimmie V. Reyna
Enjoy this opportunity to hear from Judge Jimmie V. Reyna in an engaging interview with Merchant & Gould litigator and former Federal Circuit law clerk Rachel Hughey. Judge Reyna was appointed to the United States Court of Appeals for the Federal Circuit in 2011, has provided nearly two decades of leadership in the Hispanic National Bar Association, and is the jurist for whom the first intellectual property Inn of Court in Minnesota was named.
– Rachel C. Hughey & Jimmie V. Reyna
9:20 – 10:20 a.m.
10 Practical Things You Can Do to Promote Diversity, Equity and Inclusion in Your Workplace
1.0 elimination of bias credit applied for
Representatives from the courts, business and law firms will share practical advice for fostering a more diverse and inclusive work environment that you can implement right away.
– Ash Mishra, Bryan K. Phillips, Judge Peter M. Reyes & Whitney Smallwood
– Alexander J. Kim (moderator)
10:20 – 10:40 a.m.
A Conversation with Andrei Iancu, Former Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office
The Institute is pleased to welcome back Andrei Iancu, Former Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (2018-2021), for an interview with Carlson Caspers litigator Joe Winkels. Following this government service, Mr. Iancu has returned to practice with Irell & Manella LLP and, in 2021, co-founded the Renewing American Innovation Project at the bipartisan Center for Strategic and International Studies (CSIS).
– Andrei Iancu & Joseph W. Winkels
10:40 – 10:50 a.m.
BREAK
10:50 – 11:10 a.m.
A Conversation with Shira Perlmutter, Register of Copyrights and Director of the U.S. Copyright Office
IP attorney and litigator Ruth Rivard from the Stinson firm interviews Shira Perlmutter, Register of Copyrights and Director of the U.S. Copyright Office. Register Perlmutter was appointed to this position effective October 25, 2020. In addition to extensive government service, she has a varied background in industry, private practice, academia, and more.
– Shira Perlmutter & Ruth Rivard
11:10 – 11:15 a.m.
BREAK
11:15 a.m. – 12:15 p.m.
BREAKOUT SESSION D
301
Pitfalls of the Patent Exhaustion Doctrine: How the Exhaustion Doctrine Impacts Patents and Associated Business Strategies
The exhaustion doctrine limits patent rights and associated business strategies in ways that are counterintuitive. The doctrine can surprisingly nullify business models that otherwise seem to be based on common sense. Increasingly, the doctrine treats patent owners poorly, and yesterday’s case might not apply tomorrow. Outcomes are hard to predict due to relentless expansion of the doctrine and “creative” use of precedent by the courts and patent challengers. The U.S. Supreme Court has even expanded the doctrine to weaken patent rights based on writings from past centuries that have nothing to do with patents. Even as the exhaustion tide surges, there have been some unexpected instances in which patent owners avoided exhaustion, such as a recent case in which the Federal Circuit purposely ignored its own recent precedents. This presentation analyzes the more recent exhaustion cases and explains how to account for the doctrine when pursuing patent and associated business strategies.
– David B. Kagan
302
2021 Copyright Law Year in Review
This presentation will update you on important developments in U.S. copyright law over the past year, including several interesting copyright decisions related to fair use and the Supreme Court decision in the dispute between Google and Oracle. The speakers also will discuss the recently enacted CASE Act.
– Joel D. Leviton & Ruth Rivard
303
In-House Counsel Perspectives on Trademark Assets
Join a distinguished in-house counsel panel as they discuss their role in managing and protecting their company’s valuable trademark assets, including how they are addressing current developments and challenges in trademark clearance, prosecution, and enforcement.
– Wesley D. Anderson, Alexandria M. Christian & Antonio (Tony) Vann
– Tucker A. Chambers (moderator)
12:15 – 1:00 p.m.
LUNCH BREAK
1:00 – 2:00 p.m.
BREAKOUT SESSION E
401
Intellectual Property Protection for Software after Google v. Oracle
The Supreme Court’s fair use decision in Google v. Oracle reduced the scope of copyright protection available for software, particularly in the context of computer and user interfaces. This session will discuss the impact of the Court’s analysis on fair use law, and how this analysis will impact future software copyright disputes. We will also examine the current scope of patent protection available for software under Alice Corp.
– Daniel A. Tysver
402
The 4 T’s of Tackling Counterfeits Globally and Online
One of the biggest threats facing brand owners, counterfeiting not only cuts into profits and compromises brand integrity and your company’s reputation, but can also pose health and safety risks. This session outlines strategies and offers helpful tips in successfully pursuing counterfeiters. In addition to learning the 4 T’s your key takeaways will include:
– Caldwell Camero
403
Protecting Intellectual Property and Avoiding IP Missteps in the Era of E-Commerce
E-commerce impacts more than just buying and selling of goods or services. It extends to your business as a whole. This session will focus on: protecting your website content and dealing with copyright infringement; understanding your intangible value; clauses of necessity in contracts to protect your intellectual property; properly using and protecting your trademarks; addressing social media concerns, including what happens when influencers use your trademarks; and combating patent trolls.
– Terrance C. Newby & Tricia Ann-Olson Zachary
2:00 – 2:15 p.m.
BREAK
2:15 – 3:15 p.m.
BREAKOUT SESSION F
501
IP, Cryptocurrency and Blockchain
Chris Hoff, Principal at Fish & Richardson, and Lee Schneider, General Counsel at Ava Labs, will discuss blockchain and cryptocurrency technology and the intellectual property issues associated with these technologies.
– Christopher Hoff & Lee Schneider
502
ICANN’s Next Round of New gTLDs – Getting Your .brand and Your Team Ready
It has been nearly 10 years since ICANN allowed new applications for branded registries, and much has changed since then. In a world where the Internet seems increasingly unsafe and chaotic, a brand having its own “corner” of the domain name space over which it can operate greater control has its appeal. Paul McGrady, a global thought leader in the ICANN/domain name space, will share his insights into timing, business case, and process for new gTLDs, focusing on .brands. The session will touch on preventing a third party from obtaining a registry consisting of your brand name, as well as the pitfalls of the application process and the expenses tied with ongoing registry operations.
– Paul D. McGrady
503
Protecting Trade Secrets: “Have We Done Enough?” – Practical Guidance for All Sizes of Businesses
Protecting trade secrets requires reasonable efforts under the circumstances. From a business perspective, there is not a “one size fits all” approach to ensuring that reasonable efforts are also workable. Learn from two experts about reasonable trade-secret-protection measures, and how they may be customized to different companies, depending on the size and nature of the business. The speakers will cover recent case developments and trends seen within trade secret protection programs.
– Kerry L. Bundy & Randall E. Kahnke
3:15 – 3:30 p.m.
BREAK
3:30 – 4:30 p.m.
Close Calls – The Not-So-Easy Ethics Decisions When Your Adversary Makes a Mistake
1.0 ethics credit applied for
Join popular presenter, legal ethics expert, and seasoned litigator Tom Spahn for an interactive program that uses hypotheticals to explore lawyers’ confidentiality and disclosure duties in the context of non-clients’ misunderstanding and mistakes – both in transactional settings and in litigation. This program includes a focus on the tension between professionalism/civility and our duty to zealously represent our clients. Get ready for some thought-provoking content as the hypotheticals Tom poses frequently trigger a 50-50 audience vote.
– Thomas E. Spahn
As a special bonus, Institute attendees may attend the following 3 webcasts for free! A coupon code, along with instructions on how to register for free at www.minncle.org, will be provided at the Institute.
Tuesday, September 28
12:00 – 1:00 p.m.
The Right of Publicity and the NCAA: What Name, Image and Likeness Rights Will Mean for the Future of College Sports
Sports, media and entertainment lawyer, Traci Bransford, and Director of Athletic Compliance at the University of Minnesota, Jeremiah Carter, discuss the NCAA’s new policy regarding collegiate athletes’ use of their name, image and likeness rights, the University of Minnesota’s efforts to develop their own rules, and what these changes will mean for college athletes and the future of college sports.
– Traci V. Bransford & Jeremiah Carter
Wednesday, September 29
12:00 – 1:00 p.m.
Waco v. Marshall: The Insiders’ Guide to Texas Patent Litigation
This presentation features a panel comprised of Riqui Bonilla, Hilda Galvan and David Hoffman to discuss the emergence of two patent plaintiff forums-of-choice in Texas. What makes the courts’ procedures so favorable for patent plaintiffs, how has the Eastern District of Texas responded to the Western District of Texas, and how can defendants navigate cases filed in these venues? Join us to hear the discussion of these issues and answers to questions taken from the audience.
– Ricardo “Riqui” Bonilla, Hilda C. Galvan & David M. Hoffman
– Phillip W. Goter (moderator)
Friday, October 1
9:00 – 10:00 a.m.
The Big Chessboard: Managing Multinational Patent Enforcement and Defense
Hear patent litigation experts from Brazil, China, Germany, and the United States discuss how tribunals receive patent cases and approach issues of infringement, invalidity, and remedies. Hear pros and cons to building portfolios across these jurisdictions with enforcement in mind. The panel will further discuss how overlapping or simultaneous enforcement activity may create challenges or offer advantages across jurisdictions.
– Carlos Aboim, Aaron R. Fahrenkrog & Volkmar Henke
– Emily J. Tremblay (moderator)
LIVE WEBCAST
Thursday-Friday, September 23-24, 2021
Attend online
REPLAYS
There are no replays.
$695 MSBA members / $695 paralegals / $795 standard rate
Other discounts that may apply:
Scholarships available!
Need-based scholarships are available for in-person and online seminars. For further information or to obtain a scholarship application, contact us at 800-759-8840 or customerservice@minncle.org.
CREDITS – INSTITUTE
Minnesota CLE is applying to the Minnesota State Board of CLE for 12.0 total CLE credits including 1.0 ethics credit and 1.0 elimination of bias credit. The maximum number of total credits attendees may claim for this course is 12.0 credits, not including the post-Institute webcasts. Minnesota CLE is an accredited sponsor in Wisconsin and North Dakota.
CREDITS – POST-INSTITUTE WEBCASTS
Minnesota CLE is applying to the Minnesota State Board of CLE for 1.0 standard CLE credit for each post-Institute webcast.
Course materials include an electronic version of the 2021 IP Institute Manual and an electronic version of the 2021 IP Book, filled with concise updates distilling key developments in patent, trademark, copyright and trade secret law over the past year. All attendees also will receive a hard copy of the 2021 IP Book.
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