Intellectual Property Law Section


Intellectual Property Law Section

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Upcoming Standing Committee Meetings and MCLE Programs

Other News

Upcoming MCLE Programs and Meetings

Webinar: New Year and New Developments: 3-D Printing, Big Data, and The Internet of Things

Wednesday, January 14, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Licensing Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.

This program will review emerging trends in 3D printing, Big Data and IOT technologies and explore the intellectual property and other legal issues raised by applications of these technologies. We will discuss a number of use cases, including those helping to transform the supply chain.


  • John Pavolotsky is Senior Attorney at Intel Corporation, supporting its Technology and Manufacturing Group. Prior to joining Intel, John was Of Counsel in the Intellectual Property and Technology Group of Greenberg Traurig LLP. John is Co-Vice Chair of the Licensing Interest Group of the IP Section of the State Bar of California. He is a graduate of the U.C. Davis School of Law and Haas (U.C. Berkeley) School of Business.

  • James C. Roberts III is the managing principal of Global Capital Law Group PC and its consulting arm, Global Capital Strategic Group, advising on technology, international and transactional matters. Clients range from large corporations to start-ups in digital media, mobile, software, biotech and greentech. James is Chair of The State Bar of California IP Section's Licensing Interest Group. He frequently writes or speaks on startups and venture capital.

Webinar: Old Bias Learning New Tricks in New Media: An IP and Privacy Overview

Thursday, January 15, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Patent Interest Group

This program offers 1 hour participatory MCLE credit in Elimination of Bias in the Legal Profession. You must register in advance in order to participate.

While technology and related intellectual property move at breakneck speed, some may be surprised that many historical bias issues have found new lives on the Internet. Take a moment to reflect with the speakers about how it came about that the Apple celebrity photo breach involved photos of female actresses. Learn about the California Attorney General’s February 2014 announcement of the arrest of the alleged owner and operator of a revenge porn website who facilitated the posting of 400+ sexually explicit photos of (mostly women) whose ex-boyfriends and husbands posted photos and then allegedly extorted victims for as much as $250 each to remove the illicit content. Learn how social networking websites that solicit content from users that characterize women in unflattering and defamatory ways have used the Communications Decency Act to defend themselves. Learn how cyber-bullying has included disturbing references to race, gender and sexual orientation. What role should social networking sites play in controlling and monitoring hate speech? Consider shifting bias reflected in the trademark dispute over Washington’s football team name. Who’s responsible for diversity in emoticons? What about homophobic lyrics in popular music? And, on the copyright front, is a spin-off or a parody of a classic to transform it into different cultural context, an original work protected under the Copyright Act in its own right, or is this infringement? Discuss these issues and many more in this 1 hour technology and bias-packed session.


  • Michelle Cooke, Partner, Manatt, Phelps & Phillips. Michelle’s practice includes intellectual property counseling, transactions, and enforcement to help clients exploit, monetize and protect brands and content particularly online. She has been named to the Daily Journal’s “Top 25 IP Portfolio Managers and Patent Prosecutors in California” 4 consecutive years; recognized as a leading trademark attorney by both World Trademark Review and Legal 500 USA (2013-2014), and is currently ranked in Chambers USA (IP: Trademark, Copyright & Trade Secrets (California)).

  • Dominique Shelton, Partner, Alston & Bird. Dominique focuses on privacy, intellectual property, and unfair competition litigation. As a counselor, she advises companies on digital issue, mobile apps and Big Data. She was named Intellectual Property Lawyer of the Year by the Century City Bar Association (2012). The LA Business Journal named her as one of the Most Influential Lawyers: Digital Media and E-Commerce Law (2014). The Recorder named her a Leader in Technology Law (2014).


  • Sanjesh Sharma, IP Counsel, Abbott Medical Optics. Sanjesh is Intellectual Property Counsel at Abbott Medical Optics, where she manages patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. Since 2013, Ms. Sharma has served as the Secretary of the Patent Interest Group for the State Bar of California’s IP Section.

Webinar: The Post-Alice/CLS Bank Jurisprudence - How the Supreme Court Has Altered the Way Courts Are Reviewing and Deciding Section 101 Patent Challenges

Wednesday, February 11, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Patent Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.

This program will review how district courts and the Federal Circuit are applying precedents established in Alice v. CLS Bank in deciding patent-eligible subject matter challenges.


  • Richard G. Frenkel, Partner, Latham & Watkins LLP. Rick is a litigation partner in the Silicon Valley office of Latham & Watkins. He has extensive experience in every aspect of patent litigation, including trials and appeals. Rick obtained one of the first dismissals at the pleading stage based on invalidity under § 101. After several appeals before the Federal Circuit and Supreme Court, this decision was affirmed in November 2014 in the Ultramercial v. Hulu decision. Currently, Rick is litigating § 101 issues for various Internet and Digital Media clients. Prior to joining Latham, Rick served as the Director of Intellectual Property for Consumer and Emerging Technologies at Cisco Systems, managing patent litigation, advising on patent assertions and patent-purchase opportunities, negotiated patent licenses, and providing counseling on IP strategy.

  • Vernon M. Winters, Partner, Sidley Austin LLP. Vern is a litigation partner in the San Francisco office of Sidley Austin LLP, and has recently published on the § 101 issue. Regarded as a thought leader in the fields of patent and federal court litigation, Vern has spoken at Federal Judicial Center and has written amicus briefs in the Supreme Court of the United States, in the United States Court of Appeals for the Federal Circuit, and in the United States International Trade Commission. From 2002-2010, Vern taught patent litigation at the UC, Berkeley School of Law. Vern is a co-author of the treatise Modern Patent Litigation, currently serves on the Board of Editors of the Intellectual Property & Technology Law Journal, sits on the Advisory Board of the Center for the Advanced Study and Research on Intellectual Property at the University of Washington School of Law (Seattle), and is on the National Editorial Board of The Federal Lawyer.


  • Jeffrey M. Olson, Partner, Sidley Austin LLP. Jeff is a litigation partner and serves as the head of Sidley's Los Angeles Intellectual Property Litigation practice group. He has broad trial and appellate experience, on behalf of both patentees and accused infringers, having entered an appearance in over 130 litigated matters, with over 80 reported opinions. Jeff has been repeatedly recognized by his peers as one of the leading patent infringement litigators in California and in the United States, including in Chambers USA, Legal 500, The Best Lawyers in America, LMG Life Sciences and Southern California Super Lawyers. The Daily Journal has named Mr. Olson a Top 75 IP Litigator in California.

Other News

Call for Applications: Join the IP Section Executive Committee Application Deadline: February 2, 2015

Each year the IP Section offers attorneys in California an opportunity to contribute to the legal profession and the public by volunteering to serve on its Executive Committee. This gives IP Section members a great opportunity to get more involved with the Section, to network with colleagues, and to work on programs and other projects of interest. Our Executive Committee:

  • communicates recent developments and current issues in IP law and practice to the Section membership and facilitates interaction among its members;
  • presents MCLE-accredited programs throughout the year;
  • holds retreats and networking receptions, among other exciting activities;
  • publishes New Matter.

For more information and details on how to apply, see

The New Trade Secret Treatise Is Available for Order

The new Trade Secret Treatise is available for order!  The IP Section proudly announces publication of the Third Edition of its practice guide “Trade Secret Litigation and Protection in California.”  This twenty-seven chapter treatise provides a comprehensive review and analysis of California trade secret law.  Written by California practitioners, this treatise explains the fundamentals and intricacies of California trade secret law.  The treatise is a resource for anyone working with trade secrets in litigation or providing counsel on trade secret issues.  The Third Edition includes two new chapters on digital forensics and the pursuit of trade secret claims at the International Trade Commission, as well as a model non-disclosure agreement and protective order.  The new edition also provides updates of the recent case developments in the trade secret law since the 2nd Edition.

Members $115/Non-Members $155. For a limited time, IP Section members can get the special price of $95. Use the promo code IP Institute2014 and the discount will be applied at check-out. Order here: If you have any trouble with that link, go HERE and click on Intellectual Property.

USPTO Roundtable on Ensuring the Accuracy and Integrity of the Trademark Register

The USPTO will be holding a roundtable discussion of suggestions for ensuring the accuracy and integrity of the trademark register on Friday, December 12, 2014 from 2 - 3 pm in the Paris Room of the Global Intellectual Property Academy at the USPTO main campus, located at 600 Dulany Street, Alexandria, Virginia 22314. A webcast option also will be provided. Part of the discussion will focus on data compiled from the USPTO’s pilot program to assess the accuracy and integrity of the trademark register as to the actual use of marks with the goods and/or services identified in the registrations. For additional information about the event, including an updated status report on the pilot, view the full notice at

6 Hours of Self-Study CLE in the Specialty Areas -- Complimentary for Members of the IP Section!

As a 2014 benefit of Section membership, we are pleased to offer six hours of MCLE credit, offering credit in all of the MCLE subfields.

The Section thanks you for your membership!If you were purchasing these courses individually in our Online Catalog, they would cost $210 -- so that's your Section membership more than paid for, and then some!

Just watch these programs, and keep a record of having done so in the event you're audited for MCLE compliance.

You can access these programs and the accompanying written materials any time this year in the Members Only Area.

Elimination of Bias in the Legal Profession

  • Navigating Diversity
Detection and Prevention of Substance Abuse and Emotional Distress
  • Coping with the Unique Challenges of Legal Practice
Legal Ethics
  • Avoiding the State Bar Disciplinary System
  • Client Trust Accounting Fundamentals
  • Ethical Implications for Lawyers in Cyberspace and Social Media
  • Ethics and Civility: Want an Extension? Forget about It!

One Hour MCLE Is Available in the Latest Issue of New Matter

Self-Study CLE Tests One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.

For the Summer issue, you can earn credit for the article The Next Battle Over FRAND: The Definition of FRAND Terms and Multi-Level Licensing by Karl D. Belgum One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste for details. Watch for other MCLE credit available in future issues of New Matter.

 WRITERS WANTED for New Matter

New Matter invites you to write and submit original articles on current issues relating to intellectual property, such as reasoned opinion, practice tips, or  scholarly analysis.

New Matter is looking for articles between 1500-6000 words.  Please contact the Acquisitions Editor, Amanda Nye for more details.

For more information, please contact our editorial staff at

Interested in Advertising in New Matter?

If you're interested in advertising in New Matter, please note our ad rates.

Eligible Advertisers:

Law Firms,
Court Reporting Services,
IP Search Services,
IP Insurance Services,
eDiscovery Service Companies,
Legal Research Companies,
Legal Staffing Companies
And any other legal service company.

Ad Size/ Issues 1 Issue 2 Issues 3 Issues 4 Issues
¼ Page $1,200 $2,300 $3,300 $4,000
½ Page $1,600 $3,000 $4,200 $5,000
Full Page $2,400 $4,500 $6,300 $7,500

Did You Miss One of Our Webinars or Self-Study Tests?Online CLE

Listen to Intellectual Property Law Section programs over the internet for participatory MCLE credit. Choose from more than a hundred hours of IP-related programs, and hundreds of other official State Bar of California MCLE programs.

For more information, see and select Intellectual Property Law Section.

Featured CLE Program from Our Catalog!

Did you miss this program? It's available in our online catalog for CLE credit!

Ethics Post -- AIA: Surviving the AIA Apocalypse -- A Guided Tour of the Brave New World

Patent Ethics treatise co-author, Dr. Mercedes K. Meyer will provide an examination of the patent practitioner’s world post-AIA. Her examination will place an ‘ethical lens’ over day-to-day procedures for both patent prosecution and claims drafting. Dr. Meyer will review the shift of duties, new duties, changes to averments and date relevance under AIA. The America Invents Act (AIA) was enacted into law on September 16, 2011 with portions of the Act became effective. Others portions became effective on September 16, 2012 or March 16, 2013. The USPTO Office of Enrollment and Discipline (OED) has had no complaints that practitioners have committed any ethical violations under the newly enacted AIA laws. Nor are there any legal malpractice claims arising under the AIA that we are currently aware of. However, some aspects of the AIA pose greater concern than other areas. Concerns fall into one of three areas: (1) new dates to miss; (2) new averments or certifications that pose heightened risk; and (3) failures to comply with a new duty under the AIA. In addition, we will discuss the effect of the new statute of limitation on OED proceedings.

1 hour participatory MCLE credit in Legal Ethics; $35
More Information

Listen to Intellectual Property Law Section programs over the internet for participatory MCLE credit. Choose from more than a hundred hours of IP-related programs, and hundreds of other official State Bar of California MCLE programs.

Did You Know You Can Beef Up Your Member Record on the State Bar's Website?

Were you aware of the feature on the State Bar's website that allows you to add a photo and otherwise expand your State Bar profile?

Using a secure link within My State Bar Profile, attorneys may add information to their public record to include area(s) of practice, any additional language(s) spoken, their law firm's website address and a photo.

To get started, log in to My State Bar Profile, and click on the “Expanded Profile” link.

Save Money with CEB

CEB Discount Program for Section MembersContinuing Education of the Bar, California (CEB) is extending some special discount offers to our section. As a member of the Intellectual Property Law Section, you're eligible for:

  • 10% off selected CEB print or online books
  • A rebate on your section dues that can be applied to the cost of a CEB Gold CLE Passport or a CLE program ticket

A complete list of the products eligible for a discount is available on a CEB web page accessible through our Members Only Area. Information about the section dues rebate program can be found on the CEB Web site.

Contact Us

Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
415-538-2368 fax