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41st Annual IP Institute: IP on the American Riviera

California PoppiesProgram Schedule

Wednesday, November 9, 2016
Thursday, November 10, 2016
Friday, November 11, 2016

Wednesday, November 9, 2016

5 p.m. – 7 p.m.

SoCal IP Law Group LLP(15) Welcome Reception: Wine From the American Riviera

Sponsored by: SoCal IP Law Group LLP

Thursday, November 10, 2016

8 a.m. – 9 a.m.

Continental Networking Breakfast

8 a.m. – 2:15 p.m.

Registration, Exhibitors, and Interest Group Booths Open

8:45 a.m. – 9 a.m.

Welcome and Opening Remarks with Elizabeth J. Rest, Chair, Intellectual Property Law Section

9 a.m. – 10 a.m. - General Session

(1) IP and ADR: Developments, Cases, and Trends Every IP Practitioner Should Know About

(1 Hour MCLE)

This panel will provide IP practitioners with important developments, cases, and trends in arbitration and mediation affecting the practice of IP law, such as: the California Law Revision Commission’s proposed revisions to mediation confidentiality in California; differences in mediation confidentiality and privilege between state and federal courts affecting IP matters; ethical considerations when advising clients on mediation confidentiality in IP cases; and an update on significant mediation and arbitration cases affecting IP disputes.


  • Erica Bristol, EB Resource Group
  • Phyllis G. Pollack, PGP Mediation
  • Marc D. Alexander, AlvaradoSmith, APC

10 a.m. – 11 a.m. - Concurrent Sessions

(2) Patent Practice: Using Recent IPR and Court Decisions to Better Defend or Defeat Patents and Maximize Your Portfolio Strength

(1 Hour MCLE)

Recent Patent Trial and Appeal Board (PTAB) decisions and Federal Court rulings are changing the best practices for developing and maintaining defensible patent portfolios, or for defeating overly broad patents. Our speakers will discuss the new legal realities facing patent practitioners, including how to best obtain timely and effective patent coverage or else defeat overly broad patents in this rapidly changing landscape.


  • John Alemanni, Kilpatrick Townsend & Stockton LLP
  • Andrea Bauer-Barbuto, IBM Corporation
  • Kimberly Schmitt, Intel Corporation

(3) Trademark Ethics: Ethical Considerations in Practicing Before the USPTO

(1 Hour of Legal Ethics)

What are the common ethical issues faced by practitioners when filing and prosecuting trademark applications before the USPTO and appearing before the Trademark Trial and Appeal Board (TTAB)? This panel will examine recent cases brought by the PTO’s Office of Enrollment and Discipline and review its guidelines.


  • William J. Griffin, U.S. Patent and Trademark Office
  • John L. Welch, Wolf, Greenfield& Sacks, P.C.

11 a.m. – 11:15 a.m.


11:15 a.m. – 12:15 p.m. - Concurrent Sessions

(4) Patent Ethics: Ethical Considerations in Practicing Before the USPTO

(1 Hour of Legal Ethics)

William J. Griffin, the Deputy Director at the Office of Enrollment and Discipline of the USPTO, will provide an overview of common ethical issues faced by practitioners who file and prosecute patent applications before the USPTO, and appear before the Patent Trial and Appeals Board (PTAB). Deputy Director Griffin will share OED guidelines as well as best practices for developing an ethical and competent patent practice that steers clear of OED scrutiny.

Speaker: William J. Griffin, U.S. Patent and Trademark Office

(5) Alcoholic Beverage IP: Nuts and Bolts

(1 Hour MCLE)

Nowhere are IP issues more complex and hotly contested than in the heavily-regulated alcohol and beverage industries. Topics will include trademark, trade dress, copyright, and labeling issues, and the presentation will highlight unique concerns such as Certificates of Label Approval and prohibited terms and images, while focusing on practice pointers for attendees.


  • Genevieve Burch, WX
  • Robert Burlingame, Pillsbury Winthrop Shaw Pittman LLP

12:15 p.m. – 2:15 p.m.

(16) Vanguard Award Luncheon

Hosted by Andrew Stroud, Hanson Bridgett LLP
Ticketed event $45

Honoring leaders at the forefront of intellectual property law.

2:15 p.m. – 5 p.m.

Santa Barbara Courthouse(17) Walking Tour of Santa Barbara Courthouse and Gardens

Trolley transportation Sponsored by: Crown, LLP

Crown Attorneys at Law

Please join us for a complimentary networking event at the historic Santa Barbara courthouse and gardens. Please RSVP in advance to save a spot on the trolley.

A docent will show the group the Mural Room, tell the charming history of Santa Barbara and the courthouse, and show the group the mechanical clock and view from the tower.

8 p.m. - 12 Midnight

Late Night on the Riviera

Join us for an evening of entertainment. Non-ticketed event and everyone is welcome!

Friday, November 11, 2016

8 a.m. – 9 a.m.

Continental Networking Breakfast

8 a.m. – 5 p.m.

Registration, Exhibitors, and Interest Group Booths Open

9 a.m. – 10 a.m. - Concurrent Sessions

(6) Global Patents: Best Practices for Building and Maintaining Your International Patent Portfolio

(1 Hour MCLE)

This panel will discuss the best practices for building and maintaining international patent portfolios in the current IP landscape in the United States and globally. The speakers will discuss offensive and defensive strategies for managing patent portfolios in the U.S., Europe, and emerging market jurisdictions, such as Brazil, China, India, and Russia. They will also
discuss the ramifications of the Unitary Patent Court on patent practice in Europe.


  • David Diamond, K&L Gates LLP
  • Bernie Greenspan, Prometheus Laboratories
  • Enrica Bruno, Steinfl & Bruno LLP

(7) Fan Fiction and Fan Art: Copyright and Trademark Issues Involving User-Generated Content

(1 Hour MCLE)

Almost every day we hear about an area of IP law that divides the forces. Very few are as contentious as fan art and fan fiction. Generating a number of copyright and trademark issues, it is a topic that not only pits copyright and trademark owners against fans, but pits lawyers against lawyers. Whether it’s the creation of fan fiction for a well-liked fantasy book series, fan art related to a popular movie, or user-generated fan creations based on copyright protected music, creators’ rights are at the core of this messy dispute. Join the professor and the practitioner as they walk us through the issues (from both perspectives), best practices in counseling clients, and potential landmines an IP owner is sure to face as they navigate this muddled and untidy arena.


  • Marc Greenberg, Golden Gate University School of Law
  • Linda Joy Kattwinkel, Owen, Wickersham & Erickson, P.C.

Moderator: Francine D. Ward, Monty White LLP

Sunset over a vineyard10 a.m. – 11:15 a.m. - General Session

(8) Top 5 IP & Technology Concerns of In-House Counsel and How to Address Them

(1.25 Hours MCLE)

This panel will discuss recurrent and topical issues seen in an in-house legal practice and how such issues are typically addressed. The discussion will include a review of key transactional strategies and recent case law. Our panelists will address the IP concerns that they have in their capacities as in-house counsel for well-known companies, IP issues that arise in their particular industries, and how they utilize outside counsel to assist with those issues.


  • Adam Berry, Twitter, Inc.
  • Christopher Miller, DreamWorks Animation SKG, Inc.

11:15 a.m. – 11:30 a.m.


11:30 a.m. – 12:30 p.m. - Concurrent Sessions

(9) The Road to Ex Parte Appeal: From Final Office Action to Notice of Appeal

(1 Hour MCLE)

You’ve received a Final Office Action, now what? You’re ready to appeal but you still have options to give it at least one last shot to advance prosecution before you file that appeal brief. Our panelists will discuss strategies and options available as applicants move towards filing a Notice of Appeal. Our panelists will also explore the use of pilot programs, such as the After Final Consideration Pilot 2.0 and Pre-Appeal Brief Conference programs.


  • John Cabeca, United States Patent and Trademark Office – Silicon Valley
  • TJ Singh, Klein, O’Neill & Singh LLP

(10) Sink or Swim: IP Advice for New Ventures

(1 Hour MCLE)

The “next big thing” can become “opportunity lost” if an entrepreneur fails to identify and properly protect the critical information assets that comprise a new venture, or falls into the unseen traps that can erode or even forfeit essential intellectual property rights. This panel will focus on how a sound IP strategy must go beyond registration, and will share insights on the impact of IP on early-stage capital raising, building and protecting brand value and market share, and long-term business success. Non-obvious risks will be discussed, including: how the IP should be owned; the impact of equity incentive programs; dealing with employees, independent contractors, and “volunteers”; avoiding the “on sale bar”; the risks of overvaluing and undervaluing IP assets; problems with work for hire and non-disclosure agreements; foreign law issues;
and planning for succession or business exit.


  • Dennis Loomis, Baker Hostetler
  • Joe Agiato, Newlight Capital, LLC

Moderator: Deborah Greaves, Brutzkus Gubner Rozansky Seror Weber LLP

12:30 p.m. – 1:30 p.m. - Interest Group Luncheon Meetings

VineyardEach Interest Group (IG) meeting listed below is open to all Institute registrants. Please select the IG luncheon meetings you wish to attend by checking the appropriate boxes on the registration form.

12:30 p.m. – 1 p.m.

(19) Entertainment & Sports
(20) Licensing
(21) International
(22) Technology, Internet, and Privacy
(23) Copyright

1 p.m. – 1:30 p.m.

(24) In-House Counsel
(25) Trademark
(26) Patent
(27) Litigation
(28) Trade Secret

1:30 p.m. – 1:45 p.m.


1:45 p.m. – 3:15 p.m. - Concurrent Sessions

(11) Your Guide to Penguin Super Heroes—Open Source Software Advantages, Compliance, and Enforcement

(1.5 Hours MCLE)

The technology press says open source software is “eating the world.” Once the domain of hackers and hobbyists, open source software development is now ubiquitous in the technology industry, and an understanding of open source licensing is now an essential tool in the skill set of all IP licensing lawyers. Our panel of experts will discuss the “origin story” and basic paradigm of open source software licensing, provide practical and effective tips for license compliance, and discuss the latest in license enforcement activities.


  • Heather Meeker, O’Melveny& Myers LLP
  • Dave Marr, Qualcomm Technologies
  • Jim Markwith, Symons Markwith LLP

(12) Zombie Licensing: Rock & Roll, Intellectual Property, and Raising the Dead Without Getting Dirt Under Your Fingernails (Copyright, Right of Publicity, and Trademark Interplay When Dealing with “Zombie Licensing”)

(1.5 Hours MCLE)

While Halloween may be over, it will still be with us in spirit—or spirits—when this panel takes the stage. It will “raise the dead” to confront the macabre topic of “Zombie Licensing”: beyond the grave performances by beloved, deceased musicians we can’t live without. Tupac at Coachella was just the beginning. Now, he’s got company: Buddy Holly, Judy Garland, Whitney Houston to name a few. Touching on all of the major legal issues surrounding this ghostly topic name/likeness licensing; copyright licenses; music sync, mechanical, and master use licenses; and the technical creation/licensing of the deceased’s holographic performances), this panel promises great visuals, good music, and possibly even a ghoulish surprise. Please note: those who are faint of heart may wish to skip this panel!


  • Jonathan Pink, Lewis Brisbois Bisgaard & Smith, LLP
  • David Hirshland, BMG
  • Mark Roesler, CMG Worldwide, Inc.
  • Alkiviades David, Hologram USA, Inc.

3:15 p.m. – 3:45 p.m. - General Session

(13) White House Office of the U.S. Intellectual Property Enforcement Coordinator (“IPEC”)

(0.5 Hour MCLE)

The Office of the U.S. Intellectual Property Enforcement Coordinator (“IPEC”) is charged with developing the Federal Government’s intellectual property enforcement strategy, and is the primary office responsible for coordinating the efforts of the criminal, national security, and economic agencies engaged in intellectual property policy and enforcement. IPEC’s goal is to minimize illegal and damaging intellectual property theft. IPEC works with relevant federal agencies, law enforcement
organizations, foreign governments, private companies, public interest groups, and others to develop and implement the best
strategies to conduct this fight. IPEC aims to foster and protect invention and creativity by reducing infringement at home and abroad. We have invited Daniel (Danny) Marti, the current U.S. Intellectual Property Enforcement Coordinator, to speak about IPEC and its ongoing efforts in the field of intellectual property rights enforcement.


  • Daniel Marti, U.S. Intellectual Property Enforcement Coordinator at The White House (Invited)

3:45 p.m. – 4 p.m.


4 p.m. – 5 p.m. - General Session

(14) Surf’s Up! Patents, Trademarks, Trade Dress, Copyrights, and Rights of Publicity in Surf and Board Sports

(1 Hour MCLE)

The world surfing market is forecast to reach $13 billion by the year 2017. Leading this growth are apparel makers, equipment manufacturers, marketers, and associations focused on making surfing and other board sports more accessible to a broader demographic. Since we are in Santa Barbara, the heart of surf culture, this panel presents practitioners who regularly work with patent, trademark, trade dress, copyright, and right of publicity issues for surf and board sport manufactures, distributors, athletes, and sponsors. The panelists will discuss industry-specific IP issues relating to surfboards, paddleboards, and sailboards and the athletes who ride them. The panel will include an inside account of the patent and other IP issues surrounding the latest innovation and “next big thing” in the surf world—professional surf legend Kelly Slater’s man-made “perfect” wave technology. The panelists will also address various issues relating to sponsorship and endorsement of surf and board sport athletes.


  • Owen Seitel, Crown, LLP