The 40th Annual IP Institute, November 12,-13, 2015, Rancho Mirage.  The Final Frontier

Intellectual Property Law Section


Intellectual Property Law Section

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Live Programs

State Bar of California Annual Meeting

My Annual MeetingThe State Bar of California 88th Annual Meeting
October 8-11, 2015
Anaheim, California

The State Bar of California returns to sunny Anaheim for the 2015 Annual Meeting. The Annual Meeting is a multiday showcase of continuing legal education courses, celebrity speakers, and noted legal scholars. Each day gives you several choices of courses and special events.

The Annual Meeting registration fee is structured to make it more affordable to attend. You can select either a Full Meeting Pass or a 2-Day Pass. Special fees are available for Young Lawyers and New Admittees. September 14 is the deadline for the lowest fee.

More than 100 programs are planned for the Annual Meeting, including these from the IP Section:

  • Program 41: Lions, Tigers & Friends: Social Media Case Law Review
  • Program 66: Intellectual Property Law: Patent, Trademarks, Copyrights and Trade Secrets
  • Program 74: Navigating the Process: Best Practices in Clearing, Filing & Managing Trademarks
  • Program 75: Intellectual Property Law: Hot Topics in Data Protection
  • Program 86: Intellectual Property for Non-IP Attorneys: Spotting and Dealing With IP Issues

For more information, see The State Bar of California Annual Meeting.

Registration Is Open! The 2015 Intellectual Property Institute and the 7th Annual IP Vanguard Awards

November 12-13, 2015
Westin Mission Hills
Golf Resort & Spa
71333 Dinah Shore Drive
Rancho Mirage, CA 92270

Earn up to 12.25 Hours of Participatory MCLE Credit

Hotel Reservation Deadline: October 12, 2015

Pre-Registration Deadline: November 6, 2015

You can now REGISTER ONLINE for this program.  Online registration will close when the pre-registration deadline passes.

Westin Rancho MirageEssential Information | Schedule of Events | Programs at a Glance
Sponsors | Vanguard Awards Event | 
Printable Brochure | Mail / Fax Reg. Form

Featuring an Update from USPTO Director, John Cabeca
Keynote Luncheon Speaker: Adam Nimoy

Includes Sessions on:

  • The Undiscovered Country: What Must Be Found In An IP Audit
  • Software: Lost In Space
  • The Final Frontier: Patent Quality And the Voyages of the Starship USPTO
  • The Darknet: A Black Hole
  • Blurred Borders: An Exploration of IP In Wearable Tech
  • The Trade Dress Universe
  • Cryptocurrencies: Evolving Regulatory Issues and Prospects for a Cashless Society
  • Attack of the Drones
  • Bring Your Phasers: Reasonable Secrecy Measures and Criminal Prosecution of Trade Secret Misappropriation
  • Augmented Reality: A Galaxy Not So Far Away
  • Pushing the Boundaries: Is There Room In Copyright Law for the First Admendment To Live Long And Prosper?
  • IP in the After Life: IP Asset Estate Planning
  • Internet Law Update
  • In Search Of Unidentified Objects: Due Diligence In Privacy Policies And Terms of Use Agreements
  • and a Drone Demonstration!

 For the full schedule of events, see IP Institute.


Webinar: IP Considerations for International Business Transactions

Friday, October 23, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, International Interest Group

This program offers 1 hour of participatory MCLE credit. You must REGISTER IN ADVANCE in order to participate.

Technological developments and the increased ease of transportation and communication have opened up channels for international trade for California businesses. While the opportunities have expanded, companies need to learn how to navigate intellectual property rights and limitations to stay in business and not run afoul of foreign laws. Experiences with domestic and international clients to provide an overview of considerations for professionals with clients intending to operate outside the US or for foreign companies entering the US market will be shared.

Speaker: Soyeun D. Choi has run her own office since 2000, focusing on business transactions and intellectual property. Her clients originate locally and globally, with interests in Korea, China, Japan, Egypt, and Europe, in a variety of industries.

Ms. Choi supports the community by volunteering for various organizations, for example, as: President of the Palo Alto Area Bar Association (PAABA), Co-Chair of the PAABA IP Committee, Co-Chair of the Solo and Small Firm Committee of the Asian American Bar Association of Silicon Valley, Co-Chair of the Newsletter Committee of the Asian American Bar Association of San Francisco, Chair of the IP Committee and Vice Chair of the Diversity Committee for the San Mateo County Bar Association, Guest Lecturer for various classes at Skyline College, Director of Bay Area Benefit, Member of the Alumni Council of the University of California at Santa Cruz and Foster Home to the German Shepherd Rescue of Northern California.

Ms. Choi received her BA in Psychology at the University of California at Santa Cruz, a JD from the University of California at Los Angeles School of Law, was named a 2011 Northern California Rising Star by Super Lawyers magazine and has guest lectured on business and IP topics for Stanford University and other institutions.

Moderator: Rebecca Chen

Webinar: Slaying the Dragon: Understanding and Effectively Managing the Use of the Model Order on E-Discovery in Patent Cases

Tuesday, October 27, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Patent Interest Group

This program offers 1 hour of participatory MCLE credit. You must REGISTER IN ADVANCE in order to participate.

Many times parties stipulate to the Model Order on E-Discovery in patent cases, only to discover later on that they now need to negotiate a multitude of unanticipated issues. This program will discuss areas of continuing concern and include some practice pointers on how to evaluate E-Discovery issues early on and how to best utilize the Model Order, in conjunction with other available tools, in order to cost-effectively and judiciously manage E-Discovery in patent cases.

Speaker: Mieke K. Malmberg is a partner in Glaser Weil's Intellectual Property group. She received her bachelor of science degree in Biochemistry and Cell Biology from U.C. San Diego and her J.D. from U.C. Hastings College of the Law. Ms. Malmberg has more than fifteen years of experience litigating and advising clients on patent, trademark, copyright and trade secret disputes throughout the United States, as well as Section 337 investigations before the International Trade Commission. She is an expert in handling patent litigation matters from early case evaluation through appeal and has handled multiple cases involving complex electronic discovery issues and extremely high volumes of electronic data.

Moderator: Sanjesh is IP Counsel at Abbott Medical Optics, where she manages all aspects of patent, trademark, and copyright matters for the company's Refractive and Laser Cataract Surgical Equipment portfolios. Since 2013, she has served as Vice Chair of the Patent Interest Group for the State Bar of California's IP Section.

Webinar: Negotiating Data Licenses

Thursday, October 29, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Licensing Interest Group

This program offers 1 hour of participatory MCLE credit. You must REGISTER IN ADVANCE in order to participate.

This program will cover the most heavily negotiated clauses in data license agreements. Topics include:

  • Ownership, license scope, and permitted and restricted uses
  • Privacy and data security
  • Warranties
  • Indemnities
  • Limitation of liability


  • Josh Fisher represents start-up, small, and mid-market businesses in transactional and corporate matters, with focus on complex supply-chain and intellectual property agreements. READ MORE

  • John Pavolotsky is a Senior Attorney at Intel Corporation, supporting its Technology and Manufacturing Group and is co-Vice Chair of the Section's Licensing Interest Group. READ MORE

Webinar: FRAND Developments in Japan

Monday, November 23, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section

This program offers 1 hour of participatory MCLE credit. You must REGISTER IN ADVANCE in order to participate.

In the wake of Apple v. Samsung and the recent draft amendments regarding FRAND agreements under the Japan Antimonopoly law by the Japan Fair Trade Commission (JFTC), the Japan patent licensing system has taken a very pro-licensee stance. Specifically, the new draft amendment now includes provisions effectively barring patentees from obtaining injunctive relief against third party licensees who are "willing to take a license under FRAND terms." To allow injunctive relief against a wiling licensee would be an unfair trade practice. Furthermore, a negotiating third party licensee is still "willing" if they have the demonstrated intent of entering a licensing agreement, regardless of whether they challenge validity or assert non-infringement of the patent. The only relief available to patentees against infringers of their SEP is monetary damages in an amount equivalent to a "reasonable royalty rate."

Speaker: Aki Ryuka is the principal of RYUKA IP Law Firm. He is a Japan patent attorney, certified to practice IP litigation in Japan and an attorney at law in California. Mr. Ryuka specializes in electronics, semiconductors, software, data communication, and radio communication. Mr. Ryuka began his career as an electrical engineer at Canon Inc. Later, he joined Tani & Abe. From 1995 to 1998, Mr. Ryuka worked in the Washington, DC office of Cushman Darby & Cushman (now Pillsbury). He has lectured extensively in Japan and abroad on IP topics and has published numerous articles including detailing RYUKA's invention consulting services (Patent Visualization).

Moderator: Rebecca Chen


Update from the Technology, Internet, and Privacy Interest Group

Written by Hannah Poteat

FTC Ruling in Wyndham Hotels and Resorts

The long-awaited Third Circuit ruling in the FTC's case against Wyndham Hotels and Resorts came down recently, holding that the FTC may bring unfair trade practice suits against organizations that fail to reasonably protect and secure consumers' personal information. READ MORE

Breaking News from the Technology, Internet, and Privacy Interest Group

The Ninth Circuit released its decision in Lenz v. Universal yesterday morning, September 14, 2015,-- the case about the baby dancing in his kitchen to Prince's "Let's Go Crazy." It's a ruling that gives a lot of gifts all around.

The main takeaway is the court's holding that fair use is a right granted by the Copyright Act, and is wholly authorized by the law. It is not an affirmative defense to infringement, despite often being labeled as such for procedural reasons ("That fair use may be labeled as an affirmative defense due to the procedural posture of the case is no different than labeling a license as an affirmative defense for the same reason.") It is, the court said, a mistake to conflate it with those affirmative defenses that excuse impermissible conduct; fair use is a wholly authorized and lawful use. Therefore, for purposes of the DMCA, a copyright holder must consider fair use before sending a DMCA takedown notice. READ MORE

Congratulations to the Recipients of the 2015 IP Vanguard Awards!

The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards will be presented during a special Awards ceremony at the 2015 IP Institute, the flagship event of the Intellectual Property Law Section.

Join us at the 2015 Intellectual Property Law Section Annual Institute on November 12-13 at the Westin Mission Hills in Rancho Mirage. 2015 IP Institute information will be posted in the near future.

The 2015 honorees are:

In-House Counsel
Mei Lan Start

Mei-lan Stark
Senior Vice President, Intellectual Property
Fox Entertainment Group, USA

Margaret McKeown

Honorable M. Margaret McKeown
United States Court of Appeals for the Ninth Circuit

Private Practice
Jonathan Pink

Jonathan Pink
Lewis Brisbois Bisgaard & Smith

Academic or Public Policy
Dan Burk

Dan L. Burk
Chancellor's Professor of Law
University of California , Irvine School of Law

Message from the Licensing Interest Group

Lawyers who draft dispute resolution provisions in their agreements will want to take a look at Delaware’s new “rapid arbitration” procedure, which recently went into effect. In principle, the procedure does what its name suggests: expedite dispute resolution. Consistent with Delaware’s approach to law, many, but not all, of the aspects of the procedure can be modified by law. However, both parties must be corporate entities and at least one must be a Delaware corporate entity. These new procedures should be popular not only because of the high number of corporations incorporated under Delaware law but also because of the flexibility available to structure dispute resolution under this new law. The text of the law, as well as commentary on the new procedure can be found HERE.

Copyright Office Calendar

Copyright Office Extends Period for Reply Comments in Notice of Inquiry Regarding Copyright Protection for Certain Visual Works:  The Copyright Office has published a Federal Register notice extending the deadline for public reply comments that reply to initial comments submitted in connection with the Office’s April 24, 2015, Notice of Inquiry on Copyright Protection for Certain Visual Works. Reply comments are now due on October 1, 2015.  For more information, please see

The Copyright Office is also still accepting comments on its Orphan Works and Mass Digitization Report.  The full report is available at The Notice of Inquiry is available Written comments are due on or before October 9, 2015.

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  A Closer Look at Section 1202 Litigation and the Developing Jurisprudence of Copyright Management Information by Austin Ray Phillips. 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.

Did You Know You Can Track Your CLE through Your State Bar Profile?

Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.

Note: Future releases will allow you to manually add courses completed through other providers.

Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile.

The New Trade Secret Treatise Is Available for Order

Members $115/Non-Members $155. Go HERE for a description, and HERE to order. You will need to click on Intellectual Property.


Inquiries about writing for New Matter, please contact

Online Catalog

Featured CLE Program from Our Catalog!

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

2015 Trademark Office Comes to California: From Dot Coms to "Not Coms": Protecting Marks, Enhancing Brands, Valuing and Transferring Rights

This program will cover the following topics:

How can you assist clients in estimating the value of domain names they want to buy or sell, and what are the key considerations in negotiating a transfer? How can you best guide clients through the new gTLD landscape to protect and enhance the value of their most important marks? Our panelists will offer practical advice and share strategies based on their extensive legal and industry experience in trademark protection, domain portfolio management, and digital marketing.

1 hour participatory MCLE credit
More Information 

For other Intellectual Property Law Section programs, see and select Intellectual Property Law Section.

Contact Us

We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:

Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Aurelia Schultz.

Contact Us

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