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: 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.

Copyright Interest Group Teleconference

Thursday, February 18, 2015, 12 noon - 1 p.m.

Call-in number: (855) 520-7605 Conference Code: 1211276419#

Please join the Copyright Interest Group for a member call on Wednesday, February 18th at 12 noon. During the call we will have open discussion about important new copyright cases and other recent copyright developments. All IP Section members are invited to participate. For more information about the call or the Copyright Interest Group, contact Chair Chris Lockard at

Webinar: How Did They Do That? Counterclaim Defensive Strikes: Smaller Company Strategies for Fast Ramping a Patent Portfolio

Thursday, February 19, 2015, 12 noon. - 1 p.m.

Presented by the Intellectual Property Law Section, Litigation Interest Group

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

To add to the defensive response to patent assertion, counter claims asserting patents can be effective. With large companies with robust patent portfolios, this is an obvious tactic. For smaller companies with nascent portfolios, this appears to be less of an opportunity. Public examples like Nest, Vivint and Fuisz point to alternatives for small growing companies that need to quickly ramp up their patent portfolios. The speaker will discuss the strategy for avoiding problems in advance and securing defense assets in a cost effective way. We will outline some of the elements for a strategic portfolio development plan for early stage companies that are at risk for patent assertion.

Adults Only IP

Adults Only IPTuesday, February 24, 2015
Los Angeles Airport Marriott
5855 West Century Boulevard
Los Angeles, CA 90045

Earn 7.5 Hours of MCLE Credit which includes 1.25 Hours of Legal Ethics

Program package includes program materials, continental breakfast, lunch, and presentations on:

  • Growing Like a Weed: IP Law for Cannabis Businesses
  • Protecting Highly Infringed Content: Copyright and the Adult Industry
  • Luncheon Keynote with Paul Cambria: Having It All: Protecting Free Expression and IP Rights
  • Getting Down and Dirty with the USPTO: IP for the Immoral and Scandalous
  • 50 Shades of IP: Adult-Oriented Transformative Works
  • In the Footsteps of Saul Goodman: The Ethics and Morals of Representing Controversial Clients

You can now REGISTER ONLINE for this program. For more the full schedule and more information see Adults Only IP.

Webinar: Music Rights, Licensing and Clearances: From the Basics to the Outer Limits

Thursday, February 26, 2015, 12 noon. - 1 p.m.

Presented by the Intellectual Property Law Section, Copyright Interest Group

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

Music rights and licensing are complex and can be confusing to those who do not specialize in this area. Digital music has changed the way music is used and licensed, both online and in traditional media, presenting challenges even for practitioners who have some experience in this area. This presentation will include an overview of basic music rights, the different types of music licenses, and music clearance issues and strategies.


  • Cathy Carapella is Vice President of Global Image Works, an independent stock footage library with an active Film Research & Rights Clearance department, where she works with an in-house team of researchers and right clearance professionals. Her specialty is archival music performance footage and filmmaking, and she has more than 20 years of experience with rights clearance and licensing projects in the fields of music and media licensing.

  • Cydney Tune is a senior counsel at Pillsbury's San Francisco office, where she leads the firm's Copyrights group and Media & Entertainment industry teams. Her practice includes a wide variety of intellectual property issues, including copyrights and trademarks, as well as a broad array of entertainment, licensing and E-Commerce matters. She has extensive experience with music licensing and clearances, both for archival and contemporary projects.
  • Corporate Counsel at the Clorox Company, Chris Lockard advises consumer brands on issues related to digital platforms, content and talent rights, branded entertainment, contests and sweepstakes and privacy issues. Mr. Lockard is the chair of the Copyright Interest Group of the State Bar of California’s Intellectual Property Law 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, March 18, 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.

Join as our panelists cover the latest developments in the law of 35 U.S.C. §112, including how the section's definiteness, enablement, and written description requirements have been applied in litigation and in USPTO proceedings.


  • Jonathan Jaech, Jonathan's practice includes intellectual property counseling, due diligence, licensing and transactions, patent prosecution including appeals and reissue, and reexaminations (ex parte or inter partes). His technical experience extends to a variety of areas, including mechanical, electrical and electromechanical devices, methods and manufacturing processes, computer-implemented technology, telecommunications and networking, micro-electronics and nanotechnology, medical devices, chemical compositions and materials, oil and gas, entertainment and gaming methods, computer graphics and image processing, and business methods. Jonathan was recognized as a 2011 Top Patent Prosecutor by the Patent Research Review.
  • Greer Shaw, Greer has more than 15 years of experience in intellectual property litigation and dispute resolution. He has litigated to jury verdict or summary judgment numerous patent infringement matters involving a wide variety of technologies. He has been actively involved in the Intellectual Property Owners Association (Litigation Committee, 2014-2015), the Los Angeles Intellectual Property Law Association (Board of Directors, 2012-2015), the USC Intellectual Property Institute (Planning Committee, 2014-2015), and The Judge Paul R. Michel Intellectual Property American Inn of Court (Program Chair, 2012-2014). Greer has been recognized as a Southern California "Super Lawyer" in IP litigation in 2014 and 2015.


  • Sanjesh Sharma. 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.

Other News

TTAB Stakeholder Forum

TTAB will host an external stakeholder forum on January 29, 2015, from 1 to 3 pm, to discuss issues related to its e-filing system or ESTTA (Electronic System for Trademark Trials and Appeals).

TTAB is considering potential updates to ESTTA that are critical from our perspective and from that of our stakeholders. The goal of the forum is to gain stakeholder input as to capabilities considered to be critical, both for the purpose of enhancing ESTTA functionality in the near term and to assist us in planning for the aspects of TMNG that will impact TTAB.

The forum will be open to anyone who wishes to attend in person and also will be available in webinar format.  Register to attend by sending an e-mail with your contact information to Please indicate whether you intend to attend in person or via the web.

More info:

USPTO Announces new Trademark Commissioner

On December 19, the USPTO announed that Deputy Commissioner for Trademarks Mary Denison has been appointed as the new Commissioner. She will assume the post on January 1, 2015. Click here for the press release.

U.S. Copyright Office Releases the Compendium of U.S. Copyright Office Practices, Third Edition

On December 22, 2014, Register of Copyrights Maria A. Pallante released the official version of the Compendium of U.S. Copyright Office Practices, Third Edition. It is available on the Office’s website at

The Third Edition is effective as of December 22, 2014 and is the governing administrative manual for registrations and recordations issued by the Office on or after December 22, 2014. It may be cited as follows:

Short form citation: COMPENDIUM (THIRD) § 101.1(A).

The Compendium serves as a technical manual for the Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public. More than three times the size of the previous edition, the Third Edition represents a comprehensive overhaul and makes the Office’s practices and standards more accessible and transparent to the public. As in the past, it addresses fundamental principles of copyright law, such as creation, publication, registration, and renewal. It addresses routine questions such as who may file an application and who may request copies of the Office’s records. It describes recent changes to the Office’s recordation practices, such as the new option for submitting titles and registration numbers in electronic form. It also contains a new Table of Authorities that lists the cases, statutory provisions, and other legal authorities cited in the Third Edition and the relevant section where each citation may be found.

In the years ahead, the Copyright Office will introduce a number of public discussions regarding the application and deposit requirements for many digital works, including websites, software, photographs, e-books, audiovisual works, and musical works, many of which have multiple authors, multiple dates of creation, and multiple dates of publication. A key objective will be creating digital copyright records that are accurate, affordable, and as useful as possible when it comes to the identification of ownership and copyrighted works.

Members of the public may provide feedback on the Third Edition at any time. See for more information.

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. Order here: If you have any trouble with that link, go HERE and click on Intellectual Property.

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