Intellectual Property Law Section


Intellectual Property Law Section

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Upcoming Standing Committee Meetings and MCLE Programs

Other News

Third-Party Programs

Upcoming MCLE Programs and Meetings

Licensing Interest Group Teleconference

Wednesday, July 16, 2014, 12 noon - 1 p.m.

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

Monthly "All Hands" conference call for Licensing Interest Group members to talk about upcoming webinars and conferences, discuss new officers and other opportunities for members to get involved and Hot Topics in Licensing. Please note: Our monthly calls are the 3rd Wednesday of every month. For more information about this program, contact Chair James C. Roberts III at

Representing a Corporate Victim of Trade Secrets Misappropriation in Dealing with Criminal Prosecutors

Wednesday, July 16, 2014, 12 noon - 1 p.m.

Presented by the Trade Secrets Interest Group

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

This program will cover the following topics:

  • the pros and cons of making a criminal referral of a trade secrets misappropriation
  • when and how to make a criminal referral
  • working with the government to develop evidence, including witness testimony
  • effect of a criminal proceeding on related civil proceedings
  • issues of privilege
  • protecting the trade secrets during the investigation - protecting the trade secrets during trial (including issues re closing a courtroom)

Moderator: Robert Milligan


  • Jason McDonell (Jones Day partner) focuses his practice on commercial and intellectual property litigation, with an emphasis on disputes arising out of complex business relationships. He has extensive experience with lawsuits involving trade secrets, patent royalty and technology licensing agreements, mergers and acquisitions, joint venture and partnership agreements, and commercial contracts. Jason regularly counsels clients in connection with internal investigations and with the innovative use of mediation and arbitration to minimize or avoid the cost of litigation.

  • Matt Parrella (Assistant United States Attorney) is the chief of the Computer Hacking and Intellectual Property Unit for the U.S. Attorney’s Office for the Northern District of California.  The CHIP Unit, based in Silicon Valley, investigates and prosecutes complex trade secret theft, economic espionage, computer intrusion, and other high-tech crimes.  Mr. Parrella is a career prosecutor with more than 28 years’ experience in U.S. Attorneys’ and District Attorneys’ offices across the nation.  He is a frequent speaker on cyber and IP crime matters, and has been interviewed on National Public Radio’s All Things Considered and KQED’s Forum programs about computer hacking and intellectual property crimes in Silicon Valley.

Webinar: IP Indemnities: Issue Spotting and Practical Proactive Management Thereof – Part 2

Thursday, July 17, 2014, 12 noon - 1 p.m.

Presented by the In-House Counsel Interest Group

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

In House Counsel are the first line of defense in the protection of their client’s interests through dynamic and effective contract negotiation and drafting.  Intellectual Property Indemnification clauses are a critical component in these agreements.  Join us for an in-depth and practical analysis of the key elements of an effective IP indemnity clause, the parties protected and offering protection and the key terms in California that are vital to your client’s rights.  This is Part 2 of a two part presentation.  While Part 1 focused on the various parties and their needs, Part 2 looks at the manner in which the indemnity is triggered, managed and exercised.

Moderator: Derrick Brent, Masimo Corp.


  • Carey C. Jordan is a partner in the law firm of McDermott Will & Emery LLP based in the Firm’s Houston office.  Carey focuses her practice on patent prosecution, transactions and strategic portfolio management in the chemical, materials science, energy and alternative energy sectors.  Carey has extensive experience in client counseling, negotiating and drafting technology transfer agreements, joint development agreements and licenses for various chemical and energy clients.
  • Georgann Grunebach is Vice President, Intellectual Property, Fox Group Legal. She provides domestic and foreign patent, trade secret and transactional advice, education, training and  support to the family of Fox Companies including; Fox Filmed Entertainment, Fox Digital Media,  Fox Sports, Fox Broadcasting Company, Fox Network Engineering and Operations and Blue Sky Studios.

Webinar: How General Patton Would Fight the Troll Wars: Defenses, Offenses Pre and Post Litigation Techniques and Risk Minimization Planning

Wednesday, July 23, 2014, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Litigation and Patent Interest Groups

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

It's a war out there! Patent litigation has exploded in the past decade. Over 3000 cases were filed by non-practicing entities in 2013 alone. The strategy and tactics of one of America's greatest military strategists General George S. Patton will be utilized in this dynamic presentation. This webinar will draw upon over two decades of experience in litigating non-practicing entities since their inception. Techniques developed from defeating a 118 defendant troll case litigated in California will be highlighted, and counter attacks based on the new AIA, new very potent counterclaims as well as the use of new case law allowing easier recovery of attorneys' fees.

Speaker: Breton Bocchieri is a partner in the Los Angeles firm of Novak Druce Connolly Bove + Quigg LLP. He is an intellectual property law trial attorney who concentrates his practice in patent, trademark, copyright, cyber‚Äźpiracy, trade secret, unfair competition, and IP related anti-trust and commercial litigation. He has established a number of important precedents in patent and other areas of IP law which have been reported in the national press, over a dozen legal treatises, law journals, and law school textbooks. He's also an author and lecturer on intellectual property litigation strategy and tactics, and has been featured by CNN Headline News as one of the country's leading practitioners in intellectual property.

Webinar: Making Sense of the Net Neutrality Conflict

Monday, August 11, 2014, 12 p.m. - 1 p.m.

Presented by the Intellectual Property Law Section, Technology, Interenet & Privacy Interest Group

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

Net Neutrality has people up in arms, but what are they really fighting about? How does it affect you personally, or your clients? How did we get here, and what are some realistic steps for the future? We’ll break down what’s really at stake in broadband regulation.

Allen Hammond, Speaker

Professor Allen Hammond IV is a well-regarded scholar and professor of law. He holds the Phil and Bobbie Sanfilippo Chair at Santa Clara University and is director of the Law and Public Policy Program at SCU’s Center for Science, Technology, and Society. A professor at Santa Clara University School of Law since 1998, he currently serves as director of the Broadband Institute of California and leads SCU’s popular Broadband Regulatory clinic. He is the author of many articles and the co-editor of a book on improving the Universal Service process.

Hannah Poteat, Moderator

Hannah Poteat is an IAPP-certified privacy, internet, and IP attorney in San Francisco, CA. She is a solo practitioner at Poteat Law, and works closely with start-ups and app developers.

Technology, Internet, & Privacy Interest Group Teleconference

Wednesday, August 13, 2014, 12 noon - 1 p.m.

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

Please join the Technology, Internet, & Privacy Interest Group for its monthly conference call on Wednesday, August 13 at 12 p.m. Can't be on the call? Follow along as we live tweet our minutes by following #CAIPSection, or contact Hannah Poteat at

Webinar: Octane Fitness & Highmark -- The Supreme Court Eases the Standard for Recovering Attorney's Fees in Patent Cases

Tuesday, August 19, 2014, 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 discuss the highly anticipated Supreme Court cases--Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark, Inc. v. Allcare Health Management Systems, Inc.--which have eased the standard for recovering attorneys' fees in patent cases and which overruled Federal Circuit precedent in Brooks Furniture v. Dutailier Int'l. The program will also discuss recent district court cases interpreting Octane Fitness, including Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al. (C.D. Cal).


  • Sarah Sheldon Brooks is a Shareholder in Stradling Yocca Carlson & Rauth's Intellectual Property group. Ms. Brooks received her bachelor of science in Biology from Tufts University and worked as a laboratory research technician at the Children's Hospital Boston before attending law school at Tulane University. Ms. Brooks started her legal career at the intellectual property boutique of Fitzpatrick Cella Harper & Scinto in New York. Ms. Brooks is an experienced trial attorney and recently served as lead trial counsel in a patent infringement action on behalf of the patentee and secured a jury verdict of willful infringement against the competitor for its patent infringement and copyright infringement. In connection with this action, Ms. Brooks recently had the opportunity to submit briefing requesting attorneys' fees and citing Octane Fitness
  • Sanjesh Sharma is Intellectual Property Counsel at Abbott Medical Optics, where she manages intellectual property matters for the company's Refractive and Laser Cataract 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.

The State Bar of California 87th Annual Meeting, September 11-14, 2014, Grand Hyatt San Diego

The State Bar of California 87th Annual Meeting
September 11-14, 2014
Grand Hyatt San Diego
1 Market Place
San Diego, California

Earn up to 18 hours of MCLE credit and legal specialization, including credit in all MCLE subfields.

Annual Meeting PreviewYou can now REGISTER ONLINE for the Annual Meeting.

  • Early Bird Pre-Registration & Final Hotel Registration Deadline: August 13, 2014
  • Pre-Registration Deadline: August 21, 2014
  • Two-Day Registrations Available!

The State Bar of California returns to San Diego for the 2014 Annual Meeting. The new meeting logo “My Annual Meeting” simply states that this is your annual meeting: an event for legal professionals that blends business, education, entertainment and the opportunity to meet and engage with law professionals from throughout California.

The four-day meeting will showcase an education agenda consisting of 143 MCLE seminars covering a variety of substantive topics, legal technology, access to justice, UPL, attorney advertising, and other key areas of interest.

The Annual Meeting Preview is now online! Be sure to see Special Events for information about luncheons, social events, the California Women Lawyers Annual DinnerAnnual Exhibit Show62st Annual Bench & Bar Art ExhibitConference of California Bar Associations (CCBA), and Sponsorship and Advertising Opportunities. See Hotel and Travel for information about the Annual Meeting hotels, airline and rental car discounts.See the schedules for individual days for a chronological list of all programs, with descriptions: Schedule for ThursdaySchedule for FridaySchedule for SaturdaySchedule for Sunday.

The Section is presenting:

Program 28

Intellectual Property and the First Amendment

Program 74

Current Developments in Trade Secret Law

Program 81

Characters: Intellectual Property and Other Protection Issues

Program 92

What You Always Wanted to Know about Patents, Trademarks, Copyrights and Trade Secrets

Program 122

Shattering Trademark Myths for Non-Intellectual Property Lawyers

Program 132

What to do When the Client Says “You Mean that’s a Protectable Intellectual Property Asset?”

We look forward to seeing you in San Diego.

The Copyright Office Comes to California - Save the Date!

Link to The Copyright Office Comes to California pageSave the Date! The Copyright Office Comes to California program is set for Monday, October 6, 2014 at the Los Angeles Airport Marriott Hotel and Wednesday, October 8, 2014 at the Julia Morgan Ballroom in San Francisco.

This popular full-day conference returns with programming on the activities and priorities of the Copyright Office, useful advice for copyright practitioners, analysis of recent copyright litigation and discussions about the future of copyright law.  Speakers will include senior officials from the U.S. Copyright Office as well as other leading copyright experts.

Get the date on your calendar now! Program details and registration info to follow.

IP Institute Save the Date!

Hyatt Regency, Link to IP Institute PageSave the Date for the 2014 Intellectual Property Institute and 6th Annual IP Vanguard Awards will be held November 6-7, 2014  at the Hyatt Regency Orange County (Disneyland) 11999 Harbor Blvd, Garden Grove, CA.

The 6th Annual IP Vanguard Award Luncheon will be held Friday November 7, 2014, 12 noon - 1 p.m. 

Other News

Entertainment and Sports Law Interest Group Update - Supreme Court - Aereo Violates Networks' Public Performance Right

On June 25, 2014, the U.S. Supreme Court issued its much-anticipated decision in ABC, Inc. v. Aereo, Inc., holding that Aereo violates copyright holders' exclusive right to perform their work publicly by retransmitting captured network broadcasts to paid subscribers without paying license fees. Justice Breyer, writing for the majority, based the decision on the public performance right (17 USC § 106(4)), the Transmit Clause (17 USC § 101), and perceived Congressional intent involved in enacting the 1976 Copyright Act.

The decision separately addresses whether Aereo's behavior is a performance, and whether that performance is public. Regarding the performance issue, the majority likened Aereo's service to the cable TV providers in Fortnightly Corp. v. United Artists Television, Inc. and Teleprompter Corp. v. Columbia Broadcasting Systems, Inc. In both of those cases, the defendant captured broadcast TV signals with large antennas and delivered the programing to its customers via cable. The Supreme Court in both of those cases found that the defendants did not violate the plaintiffs' right to public performance because they did not actually perform copyrighted works. Those cases turned on the fact that the defendants neither created nor selected the content, but simply delivered programing created and selected by others. The majority in Aereo noted that "[i]n 1976 Congress amended the Copyright Act in large part to reject the Court's holdings in Fortnightly and Teleprompter." Pg. 7. Congress brought companies that merely deliver content under the auspice of the Copyright Act by broadening the definition of "perform" and enacting the Transmit Clause, "which specifies that an entity performs publicly when it 'transmit[s] ... a performance ... to the public.'" Thus, the Court held that Aereo's service constitutes a performance under the Act.

Aereo argued, and the dissent agreed, that the fact that Aereo's system "remains inert until a subscriber indicates that she wants to watch a program" distinguishes it significantly from the cable services in Fortnightly and Teleprompter, which constantly delivered their services regardless of consumer behavior. This difference, argued Aereo, means that it is the consumer, not Aereo, that transmits the performance and, thus, Aereo does not perform the program and cannot be found to infringe the public performance right of the copyright holders. The majority found that this argument amounted to a distinction without a difference under the policy of the Copyright Act because Aereo serves largely the same purpose as the defendants in the Fortnightly and Teleprompter, albeit in a different technological context.

Regarding the nature of the Aereo's performance, the majority held that its service constitutes a public performance of copyrighted content to its subscribers and, therefore, violates the Act. This was also based on the Transmit Clause, Aereo's similarities to the defendants in Fortnightly and Teleprompter, and the policy of the Copyright Act. Dismissing Aereo's argument that the performances were private because each transmission of content to each subscriber was unique, the majority stated that, "[i]n terms of the Act's purpose, these differences do not distinguish Aereo's system from cable systems, which do perform 'publicly.'" Pg. 12.

The majority also addressed fears by Aereo, the dissent, and various amici that their decision is overreaching, and will stifle innovation, by stating that its narrow holding only addresses unlicensed retransmission of content. The holding does not extend to those who already own content or content storage companies and is limited by the doctrine of "fair use."

The dissent, written by Justice Scalia and joined by Justices Thomas and Alito, maintains that the majority is incorrect from the outset by analyzing Aereo's behavior as direct infringement. The dissent argues that internet service providers, such as Aereo, that merely provide a platform on which users may infringe should be held to a secondary liability standard, which requires volitional conduct to induce or encourage third party infringement. Aereo, the dissent claims, does not perform and thus cannot be found to directly infringe the public performance right. Notably, the dissent does express uneasiness with Aereo's service, but states that it is not the Court's job to "distort the Copyright Act to forbid it." Dissent Pg. 12. The dissent writers feel that it is the job of Congress to address failures in the Copyright Act through amendment.

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!

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.

LinkedInThe IP Section Is Now on LinkedIn

We invite you to connect with us in our new IP Section LnkedIn Group!

 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

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.

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 Winter 2013 issue, you can earn credit for the article Top 10 Ethics Violations Resulting in Discipline by the USPTO: An Update. 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.

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

Now 50% Off! 2011 Supplement to Trade Secret Litigation and Protection in California (Second Edition)

New! The Trade Secret Treatise is now on sale at 50% off. IP Section members can purchase the Supplement and Treatise together for $55. Or you can get the Treatise for $45 and the Supplement for $10. Non members can get theTreatise and the Supplement for $75.

To take advantage of the special offer, use the Special Offer -- IP Treatise Order Form and return it to The IP Section, The State Bar of California, 180 Howard Street, San Francisco, CA 94105; or fax it to 415-538-2368.

Online CLEDid You Miss One of Our Webinars or Self-Study Tests? Our Recent Programs Have Been Added to Our CLE Catalog

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

A View from the Bench

Chief Judger Rogers will provide a status report on the Board's caseload, review Board outreach efforts and discuss ACR and other best practices that every practitioner should pursue when handling contested inter partes matters in the TTAB. Judge Ritchie will discuss pleadings and proof of claims related to non-use and intent to use, and provide guidance on distinguishing between related but distinct claims that arise in TTAB opposition and cancellation cases. The program will include an informal, interactive question and answer session

2 hours participatory MCLE credit; $70
More Information

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.

Third-Party Programs

Webinar: 2014 Hot Topics: Domain Enforcement and Brand Protection: The Rise of gTLD's

Thursday, July 17, 2014, 12 noon - 1 p.m.

Presented by the Business Law Section, Agribusiness and Cyberspace Committees, Intellectual Property Law Section

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

The introduction of new generic Top Level Domains (“gTLD’s”), such as .wine and .cocacola, has created an environment which presents challenges for the protection of brands worldwide. Literally thousands of new gTLD’s are emerging at this time, with a corresponding increase in expense to brand owners, who must monitor and enforce trademark rights against third parties filing the new domains. This program will explore aspects of the gTLD rollout of importance to brand owners, including new and old enforcement mechanisms and the newly-established Trademark Clearinghouse intended to facilitate protection of established brands.

Speakers: J. Scott Gerien and Chris Passarelli

Contact Us

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