Inevitable Disclosures
February 29, 2016

Live Programs

Patent Disputes for Our Time: New Realities, New Approaches

Patent Disputes for Our Time graphicMarch 23, 2016

The State Bar of California
180 Howard Street
San Francisco, CA 94105

Earn 5 Hours MCLE Credit!

Click here to register onlineThe deadline to register online is March 16, 2016.

Program Description | Sponsors | Program Schedule | Essential Information | 
Planning Committee | Printable Brochure | Mail / Fax Reg. Form | Register Online

Patent litigation and management of patent disputes have undergone seismic changes in recent years. Patent trolls, PTAB administrative proceedings, Alice, patentability issues, changing business finances, new Federal rules – they all play a part. Nowhere does patent protection play a more vital part, and nowhere are the players more sophisticated, than here in California. Come hear the latest from those who know. Read more!

Save the Date! The 2016 Copyright Law Conference

The 2016 Copyright law conference will be held on May 12, 2016 at the Hilton Universal City Hotel. More information will be available in the near future at


Webinar: Doing Business in China – How to Navigate the Perilous Waters of the Chinese Intellectual Property Enforcement System

Wednesday, March 9, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit. Presented by the IP In-House Interest Group.


Does your company work, sell or manufacture in China? Do you provide intellectual property protection for your company’s products and trade secrets? Have your business executives reached out to you and asked if the expanding and lucrative Chinese market is an attractive teaming partner? STOP! Before you sign a contact, shift manufacturing facilities, or joint venture in the Far East spend an hour getting an overview of the state of IP protection in China. This presentation will focus on China’s intellectual property system, and the available means to enforce patents and trademarks in China. Additionally we will focus on the present IP climate in China, and how IP owners can take proactive steps to protect their IP at the outset in attempt to avoid issues later on. We will also cover some of the challenges and opportunities available for an IP owner in China. With a little bit of foresight, it IS actually possible to protect and enforce intellectual property rights in China.

Moderators: Derrick Brent and Georgann Grunebach

Speaker: Aaron D. Hurvitz

Webinar: Apportionment in Patent Damages: Daubert Proof Patent Damages Using the CAFC Valuation Methodology – Careful Apportionment Using Facts and Circumstances

Monday, March 28, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the IP Patent Interest Group.


The method to determine patent damages seems to be an ever-moving target. The entire market value, the 25 percent rule, the Nash Bargaining Solution and comparable licenses were all once the method du jour until District Court judges and the Federal Circuit came down hard on their use. Recently, the method du jour has been the use of the smallest saleable patented practicing unit, or SSPPU, to determine a royalty base. However, if recent Federal Circuit case law is any indication, the SSPPU methodology is now undergoing similar scrutiny as it is being overly used and rigidly applied. This program will discuss recent Court opinions on apportionment and, in particular, the Federal Circuit’s preferred methodology for determining patent damages; an ala carte menu of methodologies ultimately grounded in the facts and circumstances of the case.

Moderator: Sanjesh Sharma
Speakers: Mieke K. Malmberg and Jim W. Bergman

Jim Bergman, is a Managing Director at Conway MacKenzie and heads the firm’s intellectual property litigation group.  He received a bachelor of arts in economics and his MBA from the University of California at Irvine.  Mr. Bergman specializes in patent litigation, has worked extensively on numerous high-profile patent cases, and has been published in industry recognized publications and quoted by the LA Times.  Before joining Conway MacKenzie, Mr. Bergman worked for various law firms as a financial consultant on numerous intellectual property, commercial and bankruptcy litigation matters.  Mr. Bergman’s prior experience also includes over a decade as an IT professional focusing on networking and internet technologies.

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.

Sanjesh Sharma 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: Inventor Compensation in Japan: Reducing Litigation Risk in Japan

Wednesday, March 30, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit. Presented by the IP International Interest Group.


In the early 2000s, a string of inventors, to include Shuji Nakamura the winner of the 2014 Nobel Prize in Physics for inventing the blue LED, sued their former employers, arguing that they were not fairly compensated for their patent contributions. In many cases, the courts ruled in favor of the employee-inventors, which gave rise to employers’ concern that they would be dragged into costly litigation and forced to provide large sums of remuneration.

Over a decade later, the Japanese Patent Act has now been amended, aiming to protect inventors’ rights under new “business-friendly” regulations. With the amended Act, patent rights can now belong to employers under certain circumstances. In turn, an inventor is entitled to receive “reasonable remuneration or other economic profit.” The Japan Patent Office recently released guidelines to determine the criteria for such “reasonable remuneration or other economic profits.”

US corporations with R&D facilities in Japan must familiarize themselves with these guidelines. This webinar will provide insight as to the procedures corporations should follow in light of these new rules to minimize litigation risk from employee inventors.

Moderators: Rebecca Chen
Speaker: Tatsuya Sawada


Webinar: The Wonderful, Wacky World of Willfulness: Going Beyond Exemplary Damages

Thursday, March 31, 2016, 10 a.m. - 11 a.m.

This program offers 1 hour of participatory MCLE credit. Presented by the IP Litigation Interest Group.


While we generally look at the role of willfulness in terms of exemplary damages, it has a surprising and confusing interplay with compensatory damages as well. This webinar will explore the wacky world of willfulness in non-exemplary damage issues.

Speaker: Robert Payne More Information

Webinar: Mediating Trade Secret Disputes: A Mediator’s Perspective

Friday, May 6, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit. Presented by the IP Litigation Interest Group.


Trade secret litigation often involves deep levels of distrust, heated emotional exchanges, suspicion, and anger on the part of parties and counsel. One source of the problem lies at the heart of a trade secret misappropriation claim: the allegation that a ‘theft’ has occurred, and each party’s perception of the other party resulting from that allegation. The plaintiff alleges its property has been stolen by the defendant. If the plaintiff desires to avoid the time and expense of trial, the victim must now negotiate with the thief, adding insult to injury. The defendant, on the other hand, may express outrage at being accused of theft, and suspect the litigation is merely a "fishing expedition" by the plaintiff to uncover the defendant’s own trade secrets.

The allegation of theft sets the parties on a difficult path from the very outset, which can affect the likelihood of reaching a settlement during the mediation session. How then can the parties overcome these issues and reach agreement during mediation? This webinar provides helpful tips for counsel, from knowing the definition of ‘trade secret’ in the relevant jurisdiction, communicating with opposing counsel and developing trust and cooperation if possible, to conducting thorough discovery and investigations the first time round, moderating use of expert reports and knowing when to ‘stop,’ all with the goal of assisting clients in successfully mediating trade secret disputes.

Moderator: : Anne-Marie Dao
Speaker: Erica Bristol More information

Interest Group Meetings

Licensing Interest Group Meeting

Friday, March 11, 2016, 12 noon

Monthly “All Hands” Licensing IG conference call. We’ll discuss upcoming webinars and conferences, opportunities for members to get involved, and Hot Topics.

This month Kyle Welch (Licensing Associate at the SDSU Technology Transfer Office" will also lead an open discussion on “Tips and Tricks for Working With University Technology Transactions Offices.”

Please note: Our monthly calls are the 2nd Friday of every month.

To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.

Copyright Interest Group Meeting

Tuesday, March 22, 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 Tuesday, March 22nd 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


TTAB Stakeholder Forum

The TTAB will host an external stakeholder forum on March 3, 2016, 1 p.m. - 3 p.m. EST, to discuss the "look and feel" of TTABVUE, the TTAB’s electronic docket system. The goal of this year’s TTABVUE Users’ Forum is to address issues related to presentation and formatting of the electronic docket as well as search and other functions involved in using the system. The forum will be open to anyone who wishes to attend in person and also will be available in webinar. The TTAB asks only that you register your intent to attend by sending an email with your contact information to See the Agenda for more information about the Forum Schedule and Speakers and the "Save the Date" for more information.

Input Requested in Copyright Office Studies

The Copyright Office has announced several new policy studies and is requesting input on each. More information is available on the Copyright Office website.

Studies are on the following topics:

Third Party Program

Video Games and Digital Media Conference

The Entertainment and Sports Law Interest Group is pleased to promote the annual Video Games and Digital Media Conference presented by the ABA Forum on Entertainment and Sports Industries, where experienced professionals will again come together to discuss significant issues impacting the interactive entertainment and digital media spaces. This conference will be held on March 14, 2016, at University of California, Hastings College of the Law in San Francisco, California and will feature leading practitioners, executives and financiers who will participate on the following panel discussions: Virtual Reality: Platform or Passing Fad? Discussion of Related Legal and Business Issues; eSports: The Medium Has Arrived and is Now Mainstream - What are Some of the Hits and Misses to Address?; Privacy and Regulatory Climate in This Age of Social Media Ads and Promotions; Alternative Gaming Platforms and Cloud Gaming; Recent Developments in Litigation Affecting the Video Game and Digital Media Industries; and, Ethics Discussion: Top Ten Ethical Traps When Dealing With Technology, Social Media, the Cloud and Games. There will also be a special lunchtime keynote where Michael Pachter of Wedbush Securities will host a discussion of the Activision / King Deal and other deals in the space. For more details click on this Video Games and Digital Media Conference link. You can also register here. Members of the Entertainment and Sports Law Interest Group may register for the discounted ABA Forum Member price of $300.00; to obtain the $300.00 registration rate, please use coupon code 16VGpartner at check out.

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 issue, you can earn credit for the article Ethics and Cyber Exploitation: Privacy and Copyright Law Considerations by Thomas Ward and Karin Peterka. 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 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.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!


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

2015 IP Institute: Software - Lost in Space

The results of Alice have caused a fire storm in the software protection space. Historically, patent protection for business method and software inventions was secured through the USPTO as a matter of course by financial institutions, start-ups, and multi-national internet and media companies. Suddenly, the scorched earth of one decision, and the fall out of Examiner rejections call into question this mainstay of IP protection. What is the best way to protect software, post Alice? Is it better to maintain software as trade secrets, file copyright registrations, or go back to the USPTO helmet in hand to beg for a patent and face the dreaded §101 rejection. For the first time anywhere, a panel comprising trade secret, copyright, and patent attorney experts will convene to ask and answer the simple question: “How do I protect my client’s software inventions in a world where patents are no longer guaranteed?”

1.75 hours 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.