Inevitable Disclosures
July 15, 2016

Contents

Webinars

Webinar: A Primer on Reasonable Royalty Damages for Trade Secret Litigators

Thursday, July 28, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit
Presented by the Trade Secrets Interest Group.

REGISTER TODAY

In trade secrets cases, reasonable royalties can provide an alternative to lost profit and unjust enrichment damages.  Such an alternative may be useful if trade secret theft is caught before it can be shown that the defendant diverted sales from the plaintiff or gained a profit. In some cases, this may be the only measure of damages available to trade secret plaintiffs because of the unique facts of the case. 

While there has been slow but steady development of case law on reasonable royalty damages in trade secrets cases, most recent developments have occurred in patent cases. This webinar will focus on bringing participants up to speed on these developments and how this case law may influence trade secret damage claims. We will start with a discussion of trade secrets reasonable royalty case law (e.g., Ajaxo and Altavion) and the Georgia Pacific patent royalty factors, followed by a discussion of the two main approaches to calculating a reasonable royalty–-analysis of comparable licenses and analysis of the benefits enabled by the trade secret (be it revenue increases and/or cost savings). Along the way we will cover hot topics such as the Entire Market Value Rule, the Smallest Saleable Unit, apportionment, Uniloc and the 25% rule, and bargaining (including Nash and other methods).

Moderator: Catherine Lui
Speaker: Eric Forister

Dr. Eric Forister is an economist with expertise in industrial organization, applied microeconomics, and applied econometrics. He has extensive experience in applying economic insights to understand firm and market behavior, analyzing large datasets using advanced econometric and statistical techniques, and designing and evaluating surveys. He has co-authored medical research papers and legal publications on class certification and market definition.

Dr. Forister has worked on both the plaintiff and defense sides of antitrust, intellectual property, consumer fraud (marketing), and breach-of-contract cases. As a consultant, he has addressed issues such as market definition, market power, competition, market pricing, merger efficiencies, common impact, materiality, reliance, ascertainability, royalty rates (including FRAND), damages, sampling, survey design, and irreparable harm. Dr. Forister has a BS in mathematics/economics from UCLA and a Ph.D. in Business Administration from Stanford Graduate School of Business. He is based in Econ One’s Los Angeles office.

Cathy Lui is a senior associate in Orrick Herrington & Sutcliffe’s Complex Litigation and Dispute Resolution Group, based in the San Francisco office. Cathy primarily specializes in trade secrets litigation. She has particular expertise in obtaining and defending against temporary restraining orders and preliminary injunctions under exigent circumstances in fast-paced trade secret actions. Cathy’s practice is across multiple jurisdictions in both federal and state courts, and involves a variety of different types of trade secrets including technical secrets, financial information, and products and sales information.

Webinar: Determining Damages For Multiple Different IP Assertions Covering One Product – A Venn Diagrams Exercise

Tuesday, August 23, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

As the importance of intellectual property protections rise, multiple IP registrations are becoming commonplace for a single product.  But, what is the best way to approach damages in situations where copyrights, trademarks, trade secrets, and/or patents may be at issue in a single case?  The presentation evaluates the current law on apportionment, and discusses some practice pointers for developing damage and pleadings strategies in these types of cases involving multiple IP registrations.

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

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.

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.

Interest Group Open Calls

Trade Secrets Interest Group Open Call

Wednesday, July 27, 2016, 12 noon

Please join us on Wednesday July 27, 2016 at 12:00 p.m. (Pacific) for our next Trade Secrets interest group conference call. We’ll discuss ideas for upcoming webinars and conferences 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.

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

Licensing Interest Group Open Call

Friday, August 12, 2016, 12 noon
To participate in the meeting, the dial-in number is 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.

Live Programs

Save the Date! The 2016 IP and the Internet Conference

Tuesday September, 6, 2016 at Salesforce's auditorium, San Francisco.

Join us for a full-day conference to ensure you are up to date with the latest developments. Highlights in the schedule include:

  • CDA Section 230 in the Age of Cyber Civil Rights, with Eric Goldman and Chris Kelly
  • Social Media Takedowns, with Lynne Graybeal, Beth Goldman, and Emily Burns
  • Internet Law Update with Ian Ballon
  • Privacy Like its 1999? Privacy Law Changes at Home and Abroad, with Francoise Gilbert and Joanne McNab
  • General Counsel Roundtable, with Greg Goekner and David Simon
  • Keynote speaker ... to be announced

And ... table topic discussions at lunch. Registration will open this summer. Log onto the IP Section webpage at www.ipsection.org for more details and to register.

Save the Date for the 41st Annual IP Institute "IP on the American Riviera"

Hyatt Santa Barbara November 10-11, 2016
Hyatt Santa Barbara
1111 E. Cabrillo Blvd
Santa Barbara

Join us at the 41st Annual IP Institute, “IP on the American Riviera,” which will be held November 10 - 11 at the beautiful Hyatt Santa Barbara, with a welcome reception on November 9th. In addition to outstanding educational programming, and networking breaks throughout the event, we are pleased to offer several unique networking opportunities:

  • On November 9, 2016, please join us for a welcome reception: Wine From the American Riviera! We will be offering a selection of local Santa Barbara wines and appetizers. Come early and get to know your fellow attendees, our speakers, and members of the IP Section Executive Committee. The reception is free to attend, and open to all attendees.

  • We hope that you will also join us in celebrating this year’s Vanguard Award winners with a memorable lunch ceremony on November 10, 2016, in their honor. Tickets are required; ticketing information will be in the brochure.

  • During the afternoon of our first full day of programming, November 10, 2016, we are excited to be offering a walking tour of the beautiful and historic Santa Barbara Courthouse and Gardens, led by an experienced guide. A delightful trolley will transport attendees to and from the hotel. The walking tour is free to attend, and open to all attendees, although RSVP is required to reserve space on the trolley. Information will be in the brochure.

  • Last, but certainly not least, don’t miss out on an evening testing your luck at our Casino Royale on Thursday, November 10th! The event is free to attend, and open to all attendees.

More information: http://ipsection.calbar.ca.gov/Education/IPInstitute.aspx

THE AMERICAN RIVIERA is a registered trademark of Visit Santa Barbara.

Third Party Programs

Artificial Intelligence and the Law

The Wikimedia Foundation is hosting a free panel event titled "Artificial Intelligence and the Law" on July 19 at 6 pm in San Francisco. Come listen to experts discuss the legal challenges and solutions presented by artificial intelligence, including lethal autonomous weapons, driverless cars, and ROSS, the first robot attorney. There will be time for Q&A, and a reception will follow the panel discussion. Confirmed panelists include: Rebecca Crootof (Executive Director of the Information Society Project at Yale Law School), Jimoh Ovbiagele (Co-Founder and CTO at ROSS Intelligence), Christopher Reed (COO and General Counsel at Zenti), and David Ahn (Partner at Fenwick & West LLP). The panel will be moderated by Chuck Roslof, Legal Counsel at Wikimedia. This event is free, but registration is required. Please register here.

USPTO Programs

  • Patent Brown Bag “Lunch and Learn”
    July 21, 2016, 12 p.m. - 1 p.m. 
    USPTO Silicon Valley Office
    Supervisory patent examiners help inventors and entrepreneurs during live information session.

  • Overview of the Patent Pro Bono Program and Ethical Issues in Representing Pro Bono Clients
    July 26, 2016, 12 p.m. - 1:30 p.m., USPTO Silicon Valley Office
    July 27, 2016, 6 p.m. - 8:30 p.m., Los Angeles, CA
    July 28, 2016, 12 p.m. - 1:30 p.m., San Diego, CA
    The California Lawyers for the Arts hosts a session about the Patent Pro Bono Program.  One (1) hour of California MCLE Ethics will be available.

  • Trademark Tuesday
    August 9, 2016, 12 p.m. - 1 p.m.
    USPTO Silicon Valley Office
    Trademark Assistance Center provides trademark basics and answers questions via videoconference.

 

News

In Memoriam: Former Commissioner for Trademarks Lynne G. Beresford

We are saddened to learn of the passing of former Commissioner for Trademarks Lynne G. Beresford who died June 26, 2016. Ms. Beresford began her career at the USPTO in 1979 as a Trademark Examining Attorney and eventually became the Commissioner for Trademarks in 2005, a position she held until 2010. She chaired every meeting of WIPO’s standing committee on Trademarks, Industrial Designs and Geographical Indications from its inception in 1997 until late 2001 and was instrumental in drafting legislation to implement the Madrid Protocol and the Trademark Law Treaty. She was involved in founding ICANN and was essential in the adoption of its Uniform Domain Name Dispute Resolution Procedure (UDRP).

Commissioner Beresford was also a good friend to the IP Section. She was a frequent speaker at the Section’s bi-annual Trademark Office Comes to California conference and a gracious host to our Washington DC delegation.

Copyright Office Requests Public Comment

The U.S. Copyright Office is seeking public comment on potential changes to the mandatory deposit regulations for electronic works not available in a physical format.  Comments are due July 18, 2016.  More info here.

Thank You for Being a Section Member - Here's 6 Hours MCLE in Legal Ethics!

We're very grateful for your membership in the Section. As a token of that, we're offering six hours of self-study MCLE credit in the area of Legal Ethics. The programs are posted in our Member's Only Area.

Simply watch the programs and read the accompanying materials, and keep track of having done so. You can report this to the State Bar when it's time to demonstrate your compliance with the MCLE requirements.

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 Spring issue, you can earn credit for the article Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste www.calbar.org/self-study 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 newmatterjournal@yahoo.com

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

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

Startups: Avoiding Common Pitfalls of Starting a Company

For entrepreneurs and their counsel. Built a better mousetrap? How do you protect your IP and Other assets? Come learn how to avoid the common legal mistakes entrepreneurs make when forming their companies, in this program featuring speakers from the IP and Business Law sections. What form of entity is best for you? How to get started? How do you raise funds and still protect your equity? How do you make certain no one will steal your ideas? Learn about these issues and more.

1.5 Participatory MCLE Credits
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 Aurelia Schultz.