Inevitable Disclosures
March 31, 2016

Live Programs

Snapshots from "Patent Disputes"

Thank you to everyone who came to our program, "Patent Disputes for Our Time: New Realities, New Approaches," which took place March 23 at the State Bar San Francisco office. Click here for more photos from our program.

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

Save the Date! IP Institute, November 10-11, 2016, with a Welcome Reception November 9

The 41st Annual IP Institute, "IP on the American Riviera," will be held November 10-11 at the beautiful Hyatt Santa Barbara, with a welcome reception November 9.

The conference will cover a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, entertainment, right of publicity, licensing, and internet law, as well as practical sessions and IP-specific ethics panels.  The event will also feature the always popular Annual Vanguard Awards luncheon celebrating pioneers in our field in a festive atmosphere.

The program will feature speakers from leading law firms and companies, numerous networking and socializing opportunities, as well as options to experience some of the gorgeous local sites of Santa Barbara.

We hope to see you there!  Watch your inboxes and our website for more information!

For questions, please contact IP Institute Program Chair Elizabeth J. Rest at


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. Sean Hogle will lead a discussion concerning online terms of use and service, with topics such as enforceability; choice of law; limitation of liability; and arbitration and class action waivers. 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.

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

Third Party Programs

Silicon Valley USPTO Public Tour

Friday, April 1, 2016, 12 noon - 1 p.m.
USPTO Silicon Valley Office
26 South 4th Street, San Jose, CA

The Silicon Valley USPTO will host an informational public tour of its new offices located in the wing of the San Jose City Hall. Participants will tour the office and learn about the U.S. Patent and Trademark Office from USPTO representatives.  
The USPTO is a federal facility, participants must show a valid form of government issued ID, and may be subject to screening. Click here for more.

Patent Quality Chat Webinar

Join the USPTO at its new Silicon Valley offices in San Jose to view the Patent Quality Chat webinar broadcast live from USPTO headquarters in Alexandria, Virginia.

Tuesday, April 12, 2016, 9 a.m. - 10 a.m.
USPTO Silicon Valley Office (live stream)
26 South 4th Street, San Jose, CA
Excellence in Customer Service:  Meet the Regional Offices:

  • Christal Sheppard
    Director of the Elijah J. McCoy Midwest Regional Office (Detroit)
  • Molly Kocialski
    Director of the Rocky Mountain Regional Office (Denver)
  • John Cabeca
    Director of the Silicon Valley West Coast Regional Office (San Jose)
  • Hope Shimabuku
    Director of the Texas Regional Office (Dallas)

After the webinar, a Silicon Valley USPTO resource supervisory patent examiner will lead a discussion.
This content of this event is for someone with intermediate to advanced knowledge of the patent system.
Not able to attend in person? Visit the Patent Quality Chat website for complete webinar participation instructions, upcoming events, and recordings of past events. The USPTO’s facility is a Federal Government building. Please bring a government issued form of ID. Visitors may be subject to security screening. The event is free, but space is limited. RSVP by April 11. 

Authors, Attribution, and Integrity: Examining Moral Rights in the United States

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.

Celebrate a Decade Dedicated to Design Patents!

2016 USPTO Design Day
Tuesday, April 19, 2016 from 11:00 AM to 8:00 PM (PST)
26 South 4th Street, San Jose, CA

Join the USPTO for thought-provoking discussions about all aspects of design patents, from conception through enforcement via webinar from the USPTO Silicon Valley Office. Spend the day at this free seminar with United States Patent and Trademark Office Design Examiners, Managers, Design Patent Practitioners and Industrial Designers from across the country. (There is no fee to attend; however, you must register in advance.) No CLE credit is offered for this event.

Learn about:

  • Developments at the USPTO including training of new design patent examiners, and the new ID5 initiative
  • Updates on U.S. implementation of the Hague system from WIPO’s perspective
  • Best practice tips and pitfalls of design patent prosecution from a panel of experienced practitioners and USPTO examiners
  • From industry leaders about how to take a design from concept to patenting to enforcement
  • Updates and changes to the MPEP and the effect on design practice
  • Important design patent decisions over the past year, as summarized in the popular case law wrap-up

In preparation for the panel on best practice tips and pitfalls, please email your own personal tips for success or issues that frustrate you during design patent prosecution before the USPTO that you’d like to see improved to Beth Ferrill at

NEW THIS YEAR! Design Day will be webcast from all four USPTO regional offices; Silicon Valley, CA; Denver, CO; Dallas, TX; and Detroit, MI. In your registration, please indicate whether you will be joining them in Alexandria or attending via webcast from a regional USPTO office. Please provide an accurate email address so they can send an email with the specific location at the regional office once that information is available. Also when you register check your affiliation, Government, Private Practice, In-House Counsel, Industry, Industrial Designer, Academic or Other.


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.