Inevitable Disclosures
March 15, 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: 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 More information

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 More information

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: IP Issues in Digital Entertainment Startups

Wednesday, April 14, 2016, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit.
Presented by the IP Entertainment & Sports Law Interest Group.


This program will provide an overview of common IP issues in advising digital entertainment start-ups and pointers on how to address those issues. Our speakers will follow the lifecycle of intellectual property from creation, to commercialization, to enforcement, discussing the underlying issues, the associated best legal practices, and strategic business and risk considerations in IP protection and exploitation.

Moderator: Dave Murphy
Speakers: Kiley Wong and Hiro Tachibana

Hiro Tachibana is Vice President and General Counsel of Capcom U.S.A. in San Mateo, California. Capcom is a leading video game publisher, and he brings a career-long passion for law, technology, and liberal arts to his role in Capcom’s expanding video, mobile game, and merchandise licensing business in North and South America. Previously, Mr. Tachibana was a partner with Fenwick & West, a leading Silicon Valley law firm, Vice President and General Counsel of Digeo, a Paul Allen company, and Of Counsel with Dorsey & Whitney. He holds a B.S. from Yale College and an M.S. from Yale University, a J.D. from U.C. Hastings College of Law and a LL. M. in taxation from NYU School of Law. He is a registered patent attorney.

Kiley Wong is an associate in the Corporate and Finance and Entertainment and Media practice groups in the firm’s Los Angeles office. Her practice focuses on a range of corporate and entertainment matters, including start-up company formation, early-stage finance, film finance, and other corporate and entertainment transactional matters. Ms. Wong represents film and television industry clients, as well as financial institutions and hedge funds, in equity and debt finance deals, distribution and licensing deals, and branded entertainment matters. Ms. Wong also advises emerging companies in the digital media, technology, consumer products, social enterprise and nonprofit sectors in issues related to company formation and corporate compliance. She represents both emerging companies and venture capital investors in seed and venture capital financings (both equity and debt), and has represented buyers, sellers, issuers and investors in investments, business combinations and buyout transactions in the digital media, technology and consumer products sectors.

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, April 8, 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, 2016, 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

Trade Secrets Group Meeting

Wednesday, April 27, 2016, 12 noon - 1 p.m.

Call-in number: (855) 520-7605 Conference Code: 1211276419#

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.

Third Party Programs

The U.S. Copyright Office and the George Mason University School of Law and its Center for the Protection of Intellectual Property will host a symposium on “Authors, Attribution, and Integrity: Examining Moral Rights in the United States" on Monday, April 18, 2016. More info.


Neil Boorstyn Passes Away

We were saddened to learn that Neil Boorstyn passed away on March 1, 2016. Mr. Boorstyn was the author of the nationally acclaimed treatises Copyright Law and Boorstyn on Copyright, and the bi-monthly newsletter The Copyright Law Journal. Over his 60+ year career, Mr. Boorstyn chaired the Copyright Committee of the State Bar of California, served on the Executive Committee of the IP Section, chaired the Software Protection Committee of the San Francisco Bar, and chaired the Industrial Products Committee of the International Patent & Trademark Association.

He was counsel in the first major software case, Apple Computer, Inc. v. Microsoft Corp., (N.D. Cal. 1992) and in 2001, he was appointed Special Master by the Court in A&M Records, Inc. v. Napster, Inc. In addition, Mr. Boorstyn has taught both copyright and computer law at Hastings College of the Law, U.C. Berkeley (Boalt Hall), U.C. Davis Law School, and Golden Gate University School of Law. Notable clients include The Beatles, Hewlett-Packard, Lockheed Martin, Sony Corporation, Warner/Chappell Music, and Frank Gehry.

Those who knew him know he always had a smile on his face, and loved nothing more than to discuss current copyright cases, preferably over a good cigar. He will be deeply missed. Funeral services were held on March 7th at Sinai Memorial Chapel in San Francisco.

Input Requested in Copyright Office Studies

The comment period is still open on the Copyright Office study on Section 512. Comments are due March 21. More information is available on the Copyright Office website.

Featured CLE program: Recent Developments in Biosimilars

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!

Recent Developments in Biosimilars

This program will discuss recent developments in biosimilar case law, including the Amgen v. Sandoz and the Janssen Biotech v. Celltrion cases, which discuss the correct statutory construction of the ACA’s Biologics Price Competition and Innovation Act. The program will also include a discussion of the FDA’s draft guidance regarding naming biosimilars, as well as the institution of a recent IPR, and the resulting implications for patents on biosimilars.

1 hour 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.