Inevitable Disclosures
July 29, 2016


Live Programs

Register Now! The 2016 IP and the Internet Conference

2016 IP and the Internet Conference imageTuesday, September 6, 2016
101 Spear Street
San Francisco, CA 94105

Earn 5.75 hours MCLE credit


Program Schedule | Essential Info | Printable Brochure | Mail/Fax Reg. Form

Join us for a full-day conference to ensure you are up to date with the latest developments.

  • Keynote speaker: Richard Downing, Acting Deputy Assistant Attorney General, US Department of Justice

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
And ... table topic discussions at lunch. MORE INFORMATION.

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.

We are pleased to be offering several opportunities to obtain ethics credits, including:

  • Trademark Ethics:  Ethical Considerations in Practicing Before the USPTO. Please join William J. Griffin, Deputy Director, Office of Enrollment and Discipline and Office of the General Counsel, U.S. Patent and Trademark Office, and well-known trademark attorney and blogger John L. Welch as they explore some of 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. This panel will examine recent cases brought by the PTO’s Office of Enrollment and Discipline and review its guidelines.

  • Patent Ethics:  Ethical Considerations in Practicing Before the USPTO. William J. Griffin, Deputy Director, Office of Enrollment and Discipline and Office of the General Counsel, U.S. Patent and Trademark Office, 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 Appeal Board. 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.

  • IP and ADR – Developments, Cases and Trends Every IP Practitioner Should Know About. 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.

More information: IP Institute

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


Webinar: Determining Damages For 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.


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 a combination of copyrights, trademarks, trade secrets, 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
               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

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.

Third-Party Programs

USPTO Program

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.


New Copyright Office General Counsel

Sarang (“Sy”) Damle has been promoted to General Counsel and Associate Register of Copyrights of the U.S. Copyright Office by Register of Copyrights Maria Pallante. Damle, who has served as Deputy General Counsel of the Copyright Office since January 2015, succeeds Jacqueline Charlesworth, who is stepping down after four years at the Copyright Office. Prior to joining the Copyright Office, Damle served as senior counsel at the Consumer Financial Protection Bureau and as an appellate litigator in the Department of Justice's Civil Division. He holds a J.D. from the University of Virginia School of Law and engineering and business degrees from the University of Pennsylvania.

The Office of the General Counsel manages the legal portfolio of the Copyright Office and assists the Register on legal interpretation of copyright law. The General Counsel liaises with other federal departments, including the Department of Justice, on litigation and other copyright matters. The General Counsel also oversees the formulation and promulgation of regulations and the adoption of the Copyright Office's legal positions on policy and practices.

State Records Copyright Issue Removed from Bill

Last month, we mentioned that the Judiciary committee of California's Assembly introduced a bill proposing legislation that would, among other things, allow California governmental entities to hold copyright in their works. The legislature recently amended the bill to remove the provisions granting copyright in state works. More information available here.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!


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

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 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.