Inevitable Disclosures
April 14, 2017

Licensing Interest Group Call -- TODAY (April 14)

Time: 12 noon – 1 p.m.
Dial-in number is 855-520-7605, passcode 1211276419#.

 

Contents

Live Programs

Save the Date: Intellectual Property Law Section Mix and Mingle!

Please join members of the IP Law Section for a Networking Mix & Mingle on Thursday, May 18, 2017, at 6 p.m.!

The mixer will be held simultaneously at six locations around the state! If you are, have been, or are interested in being a member of the IP Section, come meet a broad array of diverse practitioners in a relaxed and inviting venue. IP Law Section Executive Committee members and Interest Group officers will be at each location to answer questions, provide information about the Section, or simply to chat.

The six cities are (details about the venues will be announced soon):

  • Century City/Beverly Hills
  • Sacramento
  • San Diego
  • San Francisco
  • San Jose
  • Santa Monica

Look for additional information and details on Twitter @CalbarIPsection and Facebook, as well as in future editions of Inevitable Disclosures.

Interest Group Calls

Licensing Interest Group Call

Friday, April 14, 2017
12 noon – 1 p.m.

Dial-in number 855-520-7605, passcode 1211276419#.

Monthly “All Hands” Licensing IG conference call. We’ll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics. Please note: Our monthly calls are the 2nd Friday of every month.

In-House Counsel Interest Group Call

Tuesday, April 25, 2017
12 noon – 1 p.m.

Dial-in number 855-520-7605, passcode 1211276419#.

Calling all in-house counsels! On this complimentary member call, we will discuss topics of interest to the group and share practice tips and resources "from the trenches." We especially want to hear from YOU about topics you want us to cover in webinars, and how this Interest Group can best serve you. We will also discuss opportunities to write articles, coordinate webinars, speak on webinars, and participate in the IP section in other ways. For questions or input, please contact Interest Group Chair Mark Leonard or Vice-Chair Sophie Cohen.

Trade Secret Interest Group Call

Quarterly Trade Secret Interest Group Open Call

Wednesday, April 26, 2017
12 noon - 1p.m.

Dial-in number 855-520-7605, passcode 1211276419#.

Please join us on Wednesday April 26, 2016 at 12:00 p.m. (Pacific) for our next Trade Secrets interest group conference call. We’ll discuss ideas for upcoming webinars and opportunities for members to get involved. All IP Section members are invited to participate. For more information about the call or the Trade Secrets Interest Group, contact ​Chair Angelique Kaounis or Vice-Chair Robert Milligan.

Copyright Interest Group Call

Wednesday, May 3, 2017
12 noon

Dial-in number 855-520-7605, passcode 1211276419#.

Join the Copyright IG for its monthly conference call. This month we welcome Joshua Simmons, partner with Kirkland & Ellis LLP. Josh will lead the discussion on fair use, with a focus on the Oracle America v. Google infringement case. The case is set for further review this year and is a case for copyright practitioners to watch. Join us this month and every month for current copyright-related cases and developments. Please note: Our monthly calls are the 1st Wednesday of every month at 12 noon.

Webinars


Webinar: Unpacking the California Supreme Court’s Ruling in Hassell v Bird

Wednesday, April 19, 2017, 12 noon - 1p.m.

Sponsored by the Technology, Internet & Privacy Law Interest Group 
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The plaintiff in Hassell v. Bird was a lawyer who sued a former client, claiming the client posted a negative review of her on Yelp. The client never responded. The lawyer then asked the court to enter an order requiring Yelp – who was not a party to the suit - to remove the post. Yelp challenged the order. Surprisingly, in June of this year, the California Court of Appeal held that the court could force Yelp to remove the post. The court also held that this order was consistent with § 230 of the Communications Decency Act, which provides Internet service providers immunity for content created by their users (with a couple exceptions). Yelp has since asked the California Supreme Court to review the case, which was granted on Sep. 21, 2016. The court’s opinion in Hassell v Bird has been called wrong, terrible, and even brutally ugly. It touches upon the First Amendment, Section 230, due process, and prior restraint. Get ready for a lively and exciting discussion!

Moderator: Bennet Kelley
Speakers: David Gingras and Karl S. Kronenberger

Webinar: Getting Your Copy Right — Copyright Considerations in Advertising

Thursday, April 20, 2017, 12 noon - 1p.m.

Sponsored by the Copyright Interest Group, and planned by the Patent Interest Group 
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The use of creative works in advertising presents unique copyright issues. This presentation will discuss the clearance and use of such works in traditional advertising and social media, and enforcement of copyrights, including as a way to prevent false advertising and unfair competition.

Moderator: Sanjesh Sharma

Sanjesh Sharma is IP Counsel at Abbott Vision, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. She is the Chair of the Patent Interest Group for the State Bar of California’s IP Section, and has served as an officer of the Patent Interest Group since 2013.

Speakers: Dale M. Cendali and Bonnie L. Jarrett  

Dale M. Cendali heads Kirkland & Ellis LLP’s Copyright, Trademark, Internet and Advertising Group. She is a nationally recognized leader in the field of intellectual property litigation, having successfully litigated and tried numerous high-profile cases, and having argued before the U.S. Supreme Court. Her practice encompasses copyright, trademark, false advertising, patent, Internet, and trade secrets law, as well as defamation, the right of publicity, privacy, complex contract disputes and similar areas, including electronic discovery.

In 2016, Law360 named Dale one of the 25 “Icons of IP” who have “made an indelible mark in the IP area.” In 2013, The National Law Journal selected Dale as one of the “100 Most Influential Lawyers in America.” The National Law Journal had previously named her one of “America’s Top 50 Women Litigators,” one of the “50 Most Influential Women Lawyers in America,” and one of “The Most Influential Lawyers” for media and entertainment. Dale has repeatedly been ranked as a “top tier” lawyer by Chambers Global and Chambers USA, which describes her as “one of the best lawyers in the country” in her field who combines “intellectual acuity” with a “tough, hard-working attitude”; a “superb litigator” who “thinks quickly on her feet and vigorously defends her clients.”

Dale is also an adjunct professor at Harvard Law School, teaching copyright and trademark litigation. She is also a prolific writer and has long been active in the bar. In 2010, INTA elected Dale to serve as Counsel, the highest-ranking position in the organization for an outside counsel. She also previously chaired INTA’s Dilution and Enforcement Committees, and is the current chair of INTA’s inaugural Copyright Committee. Dale was also the Vice Chair of the Copyright Division and chair of the IP Special Issues Division for the IP Section of the ABA, and currently serves on Council for the ABA IP Section. Among many other positions in the bar, Dale is also the former Chair of the Trademarks and Unfair Competition Committee of the Association of the Bar of the City of New York. In 2015, Dale was selected as an Adviser for the American Law Institute’s project, Restatement of the Law, Copyright.

Bonnie L. Jarrett is a partner at Kirkland & Ellis LLP’s New York office. Her practice focuses on intellectual properly litigation, including trademarks, copyrights, and false advertising. She represents clients across a wide range of industries, including entertainment and media, technology, pharmaceuticals, and consumer products. Bonnie also represents clients in trademark proceedings before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board, and counsels clients regarding the acquisition and retention of intellectual property rights.

Bonnie is a member of INTA and the Trademark Litigation Committee of the ABA Intellectual Property Law Section, where she serves on the Nominative Fair Use and Anti-Counterfeiting Subcommittees.

In 2014 and 2015, Super Lawyers Magazine named Bonnie a “Rising Star” in intellectual property litigation.

Webinar: The 2016 TTAB Year in Review

Tuesday, May 2, 2017, 12 noon - 1 p.m.

Sponsored by the Trademark and In-House Counsel Interest Groups
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

John L. Welch’s blog, The TTABlog®, is a must-read for all trademark practitioners, and his insightful reviews of TTAB decisions are always informative and entertaining. This is a great opportunity to get caught up on those decisions you may have missed. Q&A will follow the presentation.

Moderator: Mary A. Harris
Speaker: John L. Welch

John L. Welch has represented clients in scores of patent, trademark, copyright, unfair competition, and domain name lawsuits across the country, and has handled hundreds of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office.

Webinar: Current Developments in U.S. Patent Law With An Emphasis On Litigation and Licensing

Tuesday, May 16, 2017, 12 noon - 1 p.m.

Sponsored by the Patent Interest Group.
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The speakers will discuss new and ongoing developments in the areas of patent litigation and licensing, including  upcoming changes in venue for patent cases in TC Heartland, including important differences for domestic and foreign defendants; the potential impact of Lexmark on patent exhaustion, post-sale use restrictions, and extraterritorial application of the patent law; the impact of the recent decision in Life Technologies and how the law may further develop for liability under §271(f)(1); and the future of the laches defense in view of SCA Hygiene.

Moderator: Sanjesh Sharma
Speakers: Robert Benson 
Christina Von der Ahe

Robert Benson is a partner at Orrick. His practice integrates over 25 years of experience in patent litigation, licensing, and other commercial and intellectual property litigation in federal and state courts. From significant multi-jurisdictional litigation to disputes between small competitors, Robert has a consistent track record of winning on the merits and achieving favorable results on behalf of his clients. He has extensive experience in all phases of litigation, through trial and appeal. His breadth of experience includes obtaining injunctive relief, litigating section 337 cases before the ITC and arguing before the Federal Circuit. He also integrates reexamination, inter partes review and other PTO proceedings into broader litigation and licensing strategies. Robert’s experience encompasses both defensive patent litigation and offensive patent enforcement through licensing and litigation. As a result of his frequent representation of clients in Taiwan, Japan and China, Robert has also developed an expertise in litigating issues that arise in the context of global businesses, multinational litigation and cross-border disputes. Patent litigation and licenses often give rise to unique issues, claims and defenses in the international context. Robert collaborates with each client to develop creative and cost-efficient strategies tailored to achieve his client’s objectives in each situation. He has been named a Super Lawyer for 13 consecutive years, from 2005 through 2017. His cases have involved a wide range of technologies, including semiconductors and semiconductor manufacturing, mobile devices, computer hardware and software, telecommunications, monitors, LCDs, LEDs, printers, cameras, and other consumer electronics.

Christina Von der Ahe is a partner in the Intellectual Property group in Orrick's Orange County Office. She has represented plaintiffs and defendants in high-profile patent, copyright, and trade secret litigation, as well as several other varieties of commercial disputes. A recovering gamer, Christy focuses her IP practice on representing clients in the fields of video games, interactive entertainment, new media and content and content-related technology. She serves as Co-Lead of Orrick's Video Game Group. Christy has a mechanical engineering degree from Stanford, and, as such, is able to immerse herself deeply in highly technical matters. She also prides herself on her oral and written advocacy, and has filed several successful dispositive motions, including motions for summary judgment of non-infringement. Christy is a founding member of the Howard T. Markey Intellectual Property Inn of Court in Orange County, and has served as Secretary, Membership Chair, and Programs Chair for that organization. She is an Editor of Orrick's Trade Secrets Watch Blog. Prior to joining Orrick, Christina clerked for one year for the Honorable Andrew Guilford of the Federal District Court of the Central District of California.

Sanjesh Sharma is IP Counsel at Johnson & Johnson Vision, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. She is the Chair of the Patent Interest Group for the State Bar of California’s IP Section, and has served as an officer of the Patent Interest Group since 2013.

Webinar: Hot Off the Press: 2017 Trademark Trial and Appeal Board (TTAB) Rule Changes

Tuesday, June 13, 2017, 12 noon - 1 p.m.

Sponsored by the Trademark Interest Group and In-House Interest Group.
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

In January 2017, the Trademark Trial and Appeal Board (TTAB) issued the broadest revision of its rules in a decade. Gain insight into the practical application of the new rules in inter partes and ex parte cases through a discussion of the changes with Administrative Trademark Judge Cindy Greenbaum and Interlocutory Attorney Benjamin Okeke. Topics will include mandatory electronic filing, changes to service of the initial complaint, discovery matters, and introduction of evidence during the trial period. Learn how to navigate the new rules and avoid the pitfalls that may plague those relying on old forms and practices. This presentation is a great opportunity to get caught up on the changes to the TTAB rules and will benefit attorneys with various levels of experience practicing before the TTAB.

Moderator: Carole Barrett
Speakers: Cindy Greenbaum and Benjamin Okeke

Cindy Greenbaum is an Administrative Trademark Judge with the TTAB and previously served as a Managing Interlocutory Attorney, an Interlocutory Attorney, and a Trademark Examining Attorney.

Benjamin Okeke is an Interlocutory Attorney with the TTAB where he decides non-dispositive motions in inter partes proceedings and previously served as a Senior Attorney, and a Trademark Examining Attorney.

News

Vanguard Award Nominations Now Open

IP Vanguard Awards

Nominations sought for the IP Vanguard Awards. Start thinking about your nominations for the 2017 Vanguard Awards! Achievements are honored in the following categories: 

  • In-House Counsel 
  • Private Practice 
  • Academic/Public Policy 
  • Judicial

The full criteria and information about past honorees are available at IP Vanguard Awards. Please submit your nominations for the 2017 IP Vanguard Awards by June 30, 2017, using the  2017 Nomination Form (.pdf). The 2017 Vanguard Awards will be presented at the always fun Vanguard Awards ceremonial luncheon during the IP Section's Annual Meeting at the 42nd Annual IP Institute occurring November 1 - 3, 2017.

USPTO announces the Patent Pro Bono Program

For years legal professionals have offered pro bono services in many other areas of law, such as domestic relations, tax, and immigration. Now, patent practitioners can donate their time to help inventors who cannot afford to obtain legal advice on the filing and prosecution of patent applications. Because only patent practitioners are registered to represent inventors before the USPTO, they are in a unique position among legal professionals to offer pro bono patent services to under-resourced inventors and small businesses. The program provides opportunities for patent practitioners to work with the regional program in their area to find a commitment that is suitable for them, while providing under-resourced inventors across the U.S. opportunities to secure legal assistance for their patent needs.

Those who provide at least 50 hours of patent pro bono service to their local pro bono program during calendar year 2017 will receive a certificate of recognition. The personalized certificates will be signed by Commissioner of Patents Andrew Hirshfeld and William Covey, Director for the Office of Enrollment and Discipline. In addition, the names of the practitioners will be posted on the USPTO website. We hope that our membership will take advantage of this opportunity.

Why should I volunteer my time?

You will have the fulfilling experience of making a real difference in the lives of your clients and in your community while practicing in your field of expertise. Each regional program acts as a matchmaker, using a carefully screened and vetted process to ensure that applicants are qualified to receive pro bono patent filing and prosecution services. By making the patent system available to all, pro bono patent practitioners fulfill important needs such as providing equal access to the U.S. patent system and fostering economic growth and entrepreneurship. Patent practitioners nationwide have already answered the call to volunteer. Show your interest by contacting your local regional program today!

Members of the State Bar of California can volunteer through the California Inventors Assistance Program. Please see www.uspto.gov/probonopatents for more information or contact Grant Corboy grant.corboy@uspto.gov or John Kirkpatrick john.kirkpatrick@uspto.gov.

Call for Applications for New Matter Editors

Application deadline: June 2, 2017

New Matter is the quarterly official publication of the Intellectual Property Law Section. It is a journal of current comment and analysis of cases and issues vital to the use of intellectual property. The journal is sent free to members of the Intellectual Property Law Section. IP Section members volunteer for a variety of editor positions for a term of 1 year subject to reappointment. This is an opportunity to contribute to the legal profession and the public and a great opportunity to get more involved with the Section, network with colleagues, and work on an excellent publication.

If you are currently a member of the IP Section and are interested in being considered for an editorial position, please provide the following information to Section Coordinator John Buelter at John.Buelter@calbar.ca.gov no later than June 2, 2017:

  1. a statement of interest setting forth the reason you want the position and why you should be selected for it;
  2. a resume providing general information about your legal and publishing background;
  3. a work product /writing sample;
  4. letter(s) of recommendation (optional).

Third-Party Programs

Consumer Messaging in Connection with Online Transactions Involving Copyrighted Works

The U.S. Department of Commerce’s Internet Policy Task Force will host a public meeting on Consumer Messaging in Connection with Online Transactions Involving Copyrighted Works from 1 p.m. - 5 p.m. ET on April 18, 2017 at the U.S. Patent and Trademark Offices headquarters in Alexandria, Virginia. The meeting will be webcast, and members of the public will have opportunities to participate.

In its January 2016 White Paper on Remix, First Sale, and Statutory Damages, the Task Force concluded that when consumers download copies of works (such as eBooks, music, and motion pictures), they do not appear to have a clear understanding of what they can legally do with those copies. It also determined that consumers may benefit from having more information about the nature of their transactions related to copyrighted works delivered online including whether they are paying for access to content or for ownership of a copy to instill greater confidence and enhance participation in the online marketplace. The Task Force is therefore convening this meeting to facilitate a dialogue about ways to improve consumers understanding of license terms and restrictions in connection with online transactions involving copyrighted works. The goal is to explore issues and facilitate a discussion, and to determine in what ways government can be of assistance.

Visit the USPTO's event page for more details and webcast information. For non-press inquiries, please contact Linda Quigley, Attorney-Adviser, Office of Policy and International Affairs (Copyright), USPTO, at linda.quigley@uspto.gov.

AIPLA 2017 Spring Meeting

May 17 – 19
San Diego, California

Make plans now to join more than 500 IP practitioners from around the globe for the second of AIPLA's three annual meetings. This year's Spring Meeting offers three days—each one comprised of three comprehensive CLE program tracks and network building. AIPLA makes earning the CLE minutes you need to maintain your credentials convenient, affordable, and professionally rewarding! In all, this year's Spring Meeting offers IP law professionals a total of 885 CLE minutes, including 1.0 hour of legal ethics. For more information, click here: http://www.aipla.org/learningcenter/SM17/Pages/default.aspx

The Silicon Valley Branch of the Patent and Trademark Office Announces Free Upcoming Events

  • April 20, 2017, 12 PM – 1 PM PT
    Patent Brown Bag “Lunch and Learn”
    Silicon Valley USPTO
    Supervisory patent examiner helps inventors and entrepreneurs during live information session.

  • April 25, 2017, 8 AM – 2 PM PT
    2017 Design Day – Live Stream
    Silicon Valley USPTO
    Join us for a lively discussion about all aspects of design patents.

  • April 25, 2017, 5 PM - 7 PM PT
    World IP Day--Silicon Valley
    Silicon Valley USPTO
    The Bay Area intellectual property (IP) community is invited to a reception celebrating World Intellectual Property Day, Innovation--Improving Lives.

  • April 27, 2017, 12 PM - 2 PM PT
    Hands-on Patent Search Workshop
    Silicon Valley USPTO
    Supervisory patent examiner will provide hands-on training on patent searching and using USPTO search tools.

  • April 29, 2017, 10 AM – 4 PM PT
    STEM Central
    Santa Clara Central Park Library
    Stop by the Silicon Valley USPTO station for information and activities.

  • May 5, 2017, 12 PM - 1 PM PT
    Silicon Valley USPTO Public Tour
    Silicon Valley USPTO
    Tour of the Silicon Valley regional office and its available resources to entrepreneurs and innovators.

  • May 9, 2017, 12 PM PT - 1 PM PT
    Trademark Tuesday
    Silicon Valley USPTO
    The Trademark Assistance Center provides trademark basics and answers questions via video conference.

  • May 18, 2017, 12 PM - 1 PM PT 
    Patent Brown Bag "Lunch and Learn"
    Silicon Valley USPTO
    Supervisory patent examiner helps inventors and entrepreneurs during live information session.

  • May 23, 2017, 12 PM - 2 PM PT
    Hands-on Patent Search Workshop
    Silicon Valley USPTO
    Supervisory patent examiner will provide hands-on training on patent searching and using USPTO search tools,

The Silicon Valley, known as one of the most prodigious and innovative entrepreneurial communities in the country, was selected as our West Coast presence to assist the USPTO in fostering and protecting innovation.  Looking for information focused on startups? Visit our Startup Resources page.

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE Did you miss it? All programs from IP Protection & Social Media Issues in the Workplace now available On-Demand

2014 IP Institute: Coupons and Sweepstakes and Ads, Oh My! An Overview of Recent Legal Updates ND Marketing Trends Affecting Brands

Recent changes in state law, increasing use of viral marketing, major updates to federal law, and the increasing use of social media to disseminate advertising all mean companies can destroy their brand overnight if they’re not careful.  The program will  look at trends in marketing, including native advertising, use of big data, and social media promotions, and the like as well as identify recent legal updates, including the new Telephone Communications Privacy Act,  state law regarding, gift cards,  group coupons, rebates, the FTC  dot com disclosures, and more.

1 participatory MCLE credit
More Information

For other Intellectual Property Law Section programs, see www.calbar.org/online-cle 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 Matt Neco.