Inevitable Disclosures
November 15, 2016

Contents

Interest Group Calls

December 9 Licensing Interest Group Call

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.

Webinars

Webinar: A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US

Thursday, November 17, 2016, 12 noon - 1 p.m.

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

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The grey market–or parallel import–is typically defined as the unauthorized importing of a genuine product either intended for a different market or through unauthorized channels. Goods that flow through the grey market can have a staggering impact on the revenue, image, reputation, organization or distribution networks of a company.

Against the backdrop of increased globalization and ubiquitous international exchanges, this webinar will offer a brief outline of the approach to grey market issues in Europe and in the US and suggest some of the tools that can be used by brand owners to combat the grey market from a global perspective.

Moderator: Pete Bromaghim
Speakers:  Béatrice Martinet and Richard Nelson

Béatrice Martinet is special counsel at Sideman Bancroft whose practice focuses primarily on intellectual property litigation, arbitration and transactional work for clients in a wide range of sectors, including in the computer, technology, software, publishing, pharmaceutical, food and beverage, and fashion industries.

Richard Nelson is a partner at Sideman Bancroft who specializes in IP and fraud enforcement, with a focus on complex commercial litigation and internal investigations. Mr. Nelson has extensive jury trial experience in federal and state courts, having tried 32 cases to jury verdict.

Webinar: Managing Influencers and Consumer Content on Social Media

Tuesday, November 22, 2016, 12 noon - 1 p.m.

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

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The use of endorsements and testimonials has become a marketing staple. Brands can leverage an influencer's network and reputation to promote its products and services and use social media to solicit consumer endorsements and encourage consumer interaction. While popular and effective, the use of endorsements and testimonials is replete with legal issues. When do endorsements invite FTC scrutiny? How much responsibility or control do brands actually have? Where have others crossed the line and what lessons have we learned from recent enforcement? This presentation will discuss these issues and provide practical guidance for managing risk.

Speakers: Monique Bhargava and Mark Leonard

Monique Bhargava is an associate in the advertising, marketing, and privacy group at Winston & Strawn. She advises clients in a broad spectrum of industries with respect to advertising, consumer promotions/marketing, trademark, copyright, data privacy, domain name, and other intellectual property matters relating to the entertainment and media sector. Ms. Bhargava has also served as an adjunct professor at the University of Illinois - College of Law, where she has taught on the law of advertising and promotions

Webinar: M&A-Friendly Technology License Agreements

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

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

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Maximizing shareholder value may mean selling the company or its intellectual property. Ensuring that the company's outbound license agreements are M&A-friendly is a paramount objective for tech company counsel. It's especially important to appreciate the unique challenges posed by an exit in the form of an asset purchase, in which the buyer leaves the seller's customer licenses in place after closing. This webinar explores those aspects of technology license agreements that are conducive to such an exit, and those aspects that are not.

Speaker: Sean Hogle

Sean Hogle is Vice Chair of the Licensing Interest Group of the IP Section, managing partner and founder of Sean Hogle PC (epiclaw.net), and the CEO/Founder of Redline (redline.net), an exclusive collaboration environment for lawyers. For more than 20 years, Sean has practiced in the areas of technology, intellectual property, and commercial law for technology ventures worldwide.

Webinar: Intellectual Property Transactions in Israel

Monday, December 5, 2016 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit
Presented by the Intellectual Property Law Section, Licensing Interest Group and the International Interest Group

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Technology and intellectual property are a significant percentage of Israel’s exports. This program will address the negotiation of transactions involving intellectual property developed in Israel or held by Israeli entities. Topics include: (1) aspects of Israeli commercial, contract and tax law significant to intellectual property transactions, (2) the role and regulations of the Israel Innovation Authority, and (3) transactions involving intellectual property developed at Israeli research, academic and medical institutions.

Speaker: Eli Greenbaum

Eli Greenbaum is a partner at Yigal Arnon & Co., one of Israel’s oldest and largest law firms. Eli’s practice focuses on the commercial representation of technology companies with an emphasis on intellectual property and technology-related transactions, and Eli has published widely in those areas. Eli received his M.S. in Applied Physics from Columbia University and his J.D. from Yale Law School. Prior to joining Yigal Arnon & Co., Eli clerked for Justice Miriam Naor of the Supreme Court of Israel and Judge David Cheshin of the District Court of Jerusalem, and worked for a number of years at Cleary, Gottlieb, Steen & Hamilton in New York.

Webinar: Using Surveys and Market Research in IP Litigation

Tuesday, Decenber 6, 2016 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit
Presented by the Litigation Interest Group.

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Surveys and other market research are increasingly used by courts in assessment of intellectual property damages. This webinar discusses a variety of survey and complimentary market research methods, how they have been used in patent and trademark cases, some guidelines for admissibility, and approaches for validating results.

Moderator: Anne-Marie Dao
Speakers: Anjali Oza and Peter Hess

Peter Hess is a Vice President at Analysis Group who specializes in the application of microeconomic theory and analytical methods in litigation, business, and policy contexts. He consults on intellectual property, antitrust, securities/finance, policy, regulatory, and general business matters. Dr. Hess’s work includes assessment of liability and loss causation; estimation of commercial damages, lost profits, and reasonable royalties; analyses of financial, insurance claims, and Internet traffic data; valuation; simulation and forecasting; cost-benefit analysis; and policy evaluation.

Anjali Oza is a Manager at Analysis Group and specializes in the application of economic, statistical, and market research methods to litigation and strategy matters. Dr. Oza is an expert in designing qualitative and quantitative surveys, including conjoint analysis and experiments, involving consumer goods in the context of patent litigation, false advertising, trademark infringement, and class action. She has also worked on estimating damages in health care provider-payor disputes, intellectual property, breach of contract, and employment discrimination cases.

Webinar: Checking In On The Defend The Trade Secrets Act

Wednesday, December 7, 2016, 12 noon - 1 p.m.

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

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On May 11, 2016, President Obama signed into law the Defend the Trade Secrets Act (DTSA)—creating the first federal civil misappropriation of trade secrets claim and marking a major milestone for trade secrets litigation. Since its passage, there has been a significant volume of DTSA cases filed across the nation, with many currently pending. This webinar takes a look at these cases to identify the type of trade secret actions that have taken advantage of DTSA, any significant opinions that have been rendered under DTSA, and what the future may bring for the next wave of DTSA cases. This will be the first State Bar trade secrets interest group webinar devoted to looking at cases since DTSA has passed, and how DTSA is impacting current trade secrets litigation.

Moderator: Angelique Kaounis 
Speakers: Robert Shwarts and Catherine Lui

Webinar: Paranoia Will Distroya – A Close Look at the Duty of Candor under Rule 56

Monday, December 19, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit in Legal Ethics. 
Presented by the Patent Interest Group.

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Rule 56 provides that every individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealing with the Patent Office. This program will explore the requirements under the duty, its relationship to inequitable conduct, timing of disclosures in prosecution and before the USTPO, conflicts of interest in candor, conflicting rules, considerations in submission, and other concerns. It will also discuss the proposed new rule announced in October 2016.

Moderator: Sanjesh Sharma
Speaker: Mercedes K. Meyer

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, and has served as an officer of the Patent Interest Group since 2013. 

Mercedes K. Meyer, Ph.D., co-chairs the Life Science section of the Intellectual Property Practice Group of Drinker Biddle & Reath. Mercedes counsels in the pharmaceutical and biotechnology areas. Mercedes focuses on patent prosecution, transactions, contested proceedings, opinions, and asset management, including due diligence investigations for biotechnology and pharmaceutical patents. 

Mercedes received her bachelor's degree in chemistry from Bryn Mawr College (1988) and her Ph.D. (1994) in virology from the University of Texas Graduate School of Biomedical Sciences at Houston and The University of Texas M.D. Anderson Cancer Center.  She earned her J.D. (1996) from the University of Houston Law Center. She is co-author with Professor David Hricik on Patent Ethics: Prosecution (4th ed., 2016-2017 and the 5th edition is in progress).

Mercedes currently is the co-chair of the Diversity Committee of the Federal Circuit Bar Association (FCBA) and vice chair of the Women’s Committee of IPO.  Mercedes is a Fellow of the American Intellectual Property Law Association (AIPLA), where she is the past chairperson of the Women in IP Law Committee (2005-2007), past vice chair of the Biotechnology Committee (2007-2009), past Board Member and Secretary of the AIPLA Board of Directors (2009-2013). 

Generic Competition and Innovation in the Pharmaceutical Industry: REMS Programs and Life Cycle Management/Product Hopping

Thursday, January 19, 2017, 10:30 a.m. - 12 noon

Note new date and time!

This program offers 1.5 hours participatory MCLE credit.
Co-sponosored by the Antitrust, UCL and Privacy Section.

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The Federal Trade Commission (FTC) and numerous courts are currently analyzing reverse payments within the Sherman Act framework the U.S. Supreme Court set forth in FTC v. Actavis. But these analyses are only part of a much larger universe of intriguing issues being generated by the intersection of antitrust law, intellectual property, and pharmaceutical regulation in litigation across the country.  Generic pharmaceutical company, consumer, and enforcer plaintiffs have alleged that brand pharmaceutical companies abuse certain aspects of Risk Evaluation and Mitigation Strategies ("REMS programs"), which are programs the FDA sometimes requires to minimize the risks associated with certain drugs.  Plaintiffs also allege that branded drug companies violate antitrust laws when they engage in a particular business strategy relating to the timing of new product releases, a strategy that plaintiffs call “product-hopping.”  And earlier this year, a bill was reintroduced that would create a separate cause of action for the type of behavior alleged in cases dealing with REMS (the “CREATES Act”).  Our panelists will comment on these and other developments touching on the complex legal and policy issues at the crossroads of pharmaceutical regulation, IP law, and antitrust law.

Moderator: Anna Fabis
Speakers: Cheryl Johnson, Erika Lietzan and Rosanna McCallips

Anne Fabish, O'Melveny & Meyers LLP

Cheryl Johnson, California Department of Justice

Erika Leitzan, University of Missouri School of Law

Rosanna McCallips, Jones Day

News

Photos from the IP Insitute

The 41st Annual IP Institute happened last week, and was a resounding success. See a bunch of pictures (larger than these) on our Facebook page.


Image from the 2016 IP Institute      Image from the 2016 IP Institute

Image from the 2016 IP Institute       Image from the 2016 IP Institute

Image from the 2016 IP Institute      Image from the 2016 IP Institute

Image from the 2016 IP Institute

USPTO Notice of Roundtables and Request for Comments Related to Patent Subject Matter Eligibility

The United States Patent and Trademark Office (“USPTO”) seeks public input on patent subject matter eligibility in view of recent decisions by the Supreme Court and Court of Appeals for the Federal Circuit. The USPTO remains interested in feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples. The USPTO is also interested in facilitating a discussion among members of the public regarding the legal contours of eligible subject matter in the U.S. patent system. The USPTO will be facilitating these discussions by hosting two roundtable events. The first roundtable will be held on November 14, 2016 in Virginia and will be directed to receiving feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples. The second roundtable will be held at Stanford University on December 5, 2016 and will be focused on receiving feedback regarding larger questions concerning the legal contours of eligible subject matter in the U.S. patent system. The roundtables will provide a forum for discussion of the topics identified in this notice.

DATE/LOCATION for Roundtable 2:  December 5, 2016, 8 a.m. to 5 p.m., Stanford, CA. Written comments are due by January 18, 2017. ADDRESSES: Paul Brest Hall, 555 Salvatierra Walk, Stanford University

FOR FURTHER INFORMATION CONTACT: Requests for additional information regarding registration and speaker presentations should be directed to the attention of Elizabeth Shaw, by telephone at 571-272-9300, or by e-mail at elizabeth.shaw2@uspto.gov. Requests for additional information regarding the topics for written comments and discussion at Roundtable 1 should be directed to Carolyn Kosowski, by telephone at 571-272-7688, or by e-mail at carolyn.kosowski@uspto.gov. Requests for additional information regarding the topics for written comments and discussion at Roundtable 2 should be directed to Amy Nelson, by telephone at 571-272- 8978, or by e-mail at amy.nelson@uspto.gov.

Amended TTAB Rules Published in Federal Register 11/7

Amended TTAB Rules Published in Federal Register. Go here for link and for chart summarizing changes.

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

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

The Ethical View: What’s Right, What’s Wrong, And How to Know the Difference

With lawyers increasingly under a microscope, this panel will address potential ethical pitfalls in trademark practice, illustrated by a case study, and provide pointers on how to avoid becoming a case study. Our experienced panelists will discuss Trademark Office rules, rules of conduct of special importance to trademark attorneys, and case law governing ethical practice.

0.75 Participatory MCLE Credit in Ethics
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 Matt Neco.