Embed Size (px)
Citation preview
IPINSTITUTE
THE 2018 MIDWEST
COMPREHENSIVE UPDATES
STELLAR FACULTY
PRACTICAL, ACTIONABLE CONTENT
NEW TRACKS
NEW IP BOOK
AND MORE!
“Look forward to the Institute each year!
Great way to keep up with law and friends.
A must-attend.
”September 27 & 28, 2018 | Minnesota CLE Conference Center | Minneapolis
KEY CONFERENCE BENEFITS
The Midwest IP Institute provides extensive coverage of the critical issues you deal with every day in practice. The conference features a thorough IP curriculum – with a special focus on practical “how to” and “best practices” that counsel should know.
From a wide array of helpful topics, you create a program to meet your individual needs. Conference sessions cover key intellectual property law areas – with focus on the toughest practice questions. Sessions on patent prosecution, trademark, copyright, IP litigation, IP in business ventures, PTAB developments – in total, 37 session topics at the 2018 Institute.
This year’s roster includes:• National and regional USPTO representatives
• Lead counsel for recently decided U.S. Supreme Court and Federal Circuit cases
• 20 in-house counsel – from Best Buy, 3M, UnitedHealthcare, General Mills, Honeywell and more!
• Judges
• Private practice IP advisors and litigators
• And more!
What else can you expect from the 2018 Midwest IP Institute?You’ll get time-saving tools to aid your client work. Every attendee will receive the 2018 edition of The IP Book, which distills what you need to know about the year’s most important IP developments. This year’s edition is enhanced by the addition of 5 industry-specific chapters focused on IP developments affecting regional industries like medical device, manufacturing, retail, food, and more.
Attendees also receive faculty written materials accompanying their sessions at the conference. These materials and The IP Book are two information-packed resources for the practitioner, at the conference and beyond in practice.
UNMATCHED COVERAGE
REGISTER TODAY! • 651-227-8266 • 800-759-8840 • WWW.MINNCLE.ORG2
Expert Voices on Key IP DevelopmentsA team of conference faculty and planners spends hundreds of hours distilling information – new cases and rules, business trends, frequently asked client questions, and more – so you don’t have to. At the conference, you’ll hear experts from private practice, in-house legal, business and government – all there to share real-world advice and practice tips for tackling complex legal, technical and business issues.
6 Tracks Filled with Practical, Actionable Education – All Will Help You Help Your ClientsIn addition to the 4 plenary sessions, you’ll select from 33 session options in 6 tracks. The 2018 agenda includes new tracks and topics, new sessions in the annual Patent, Copyright and Trademark, and In-House Counsel tracks – plus options for elimination-of-bias and legal ethics credit.
1
2
PICK TWO – FREE FOR ATTENDEES!
NEW OPTION!
NEW OPTION!
”The preeminent IP-related CLE in Minnesota. It’s a must-attend.
Well-organized program, professionally presented info.
In-Person Connections – 2 Days with Clients, Friends and ColleaguesThe 2018 Midwest IP Institute is a terrific educational event – and fun, to boot! You’ll enjoy the energy, the learning, the conference amenities – and spending time with clients, colleagues and friends. You’ll be a part of a premier regional IP conference, and you’ll benefit from irreplaceable in-person connections that everyone knows are still critical even in today’s digital world.
5 Industry-Specific Presentations in an All-New TrackThis year’s Institute offers a new set of breakout sessions, each focused on the key IP law developments for a specific industry over the past year – and what an attorney advising clients in that industry should keep an eye on for the near future. Industries include: Retail; food, beverage and restaurant; medical device; digital technologies; and manufacturing.
Mastering Mockery – Real Lessons from Fake Trials, 3 Related Breakout SessionsThe number of actual civil trials is declining. But the number of mock trials is increasing – significantly. We are excited to offer an all-new track featuring 3 breakout sessions – with 3 perspectives – about the hot topic of mock trials. You’ll hear from experienced in-house lawyers, trial consultants from around the country, and trial judges with views from the bench.
Post-Conference Webcasts for Even More Credit, More LearningSee page 8 for more details.
3
4
5
6
3
IND
UST
RY
SP
OTL
IGH
T 504
IP Trends in the Food, Beverage and Restaurant IndustriesBoland, Buckingham & Hayden
604
Digital Technologies – An Industry Update on the Changing Protection Provided by Copyright and Patent LawsTysver
PATE
NT
501
Meet the SPEs: Best Practice Tips from Supervisory Patent ExaminersKindred, Montalvo & Wilson Koenck (moderator)
601
Understanding the USPTO Examiner Production System Foit
TRA
DE
MA
RK
/C
OP
YR
IGH
T 502
The Year in Copyright Law – Noteworthy Decisions and Their Impact on Your PracticeLitsey, Mussell & Rivard
602
The Resurrection of Niche FameBerghammer & Fink
603 1.0 elimination of bias credit applied for
Disrupting Bias: How In-House and Outside Counsel Can Drive Diversity and InclusionAnaya & Haydock Jenrette-Thomas (moderator)
SPEC
IAL
C
RE
DIT
SIN
-HO
USE
C
OU
NSE
L 503
Trademark Survival Guidance for In-House Patent and IP CounselBaird, Sherburne, Smock & Stone
IN-HOUSE COUNSEL –Recommended selections at sessions 603 & 604.
102
Canada’s New Trademark Law: What American Trademark Lawyers Need to Know Now Bereskin
TRA
DE
MA
RK
/C
OP
YR
IGH
T
103
In-House IP Toolkit: 10 Useful Contract Provisions for IP TransactionsHappe & Privratsky
IN-H
OU
SE
CO
UN
SEL
LITIGATORS –Recommended selections at sessions 101, 102 & 103.
AD
VO
CA
CY
101
2018 Patent Law Update – What Happened and Why It MattersDragseth & KelleyPA
TEN
T8:15 – 8:50 a.m.CHECK-IN & CONTINENTAL BREAKFAST
8:50 – 9:00 a.m.WELCOME
9:00 – 10:00 a.m.
2018 Update on New Developments at the USPTODrew Hirshfeld, Commissioner for Patents, provides the latest news and insights from the USPTO. Following Mr. Hirshfeld’s remarks, Joseph Winkels will moderate a question and answer session. Drew Hirshfeld Joseph W. Winkels
10:00 – 11:00 a.m.
Working at Internet Speed: Perspectives from Amazon’s Senior Trademark CounselAmazon is Earth’s Most Customer-Centric Company. Stephen Coates, Senior Trademark Counsel from Amazon, likes to think of trademark law as the Most Customer-Centric Body of Law. Steve will share his experience, including his role as Twitter’s first trademark counsel, and perspective on how he brings that customer focus to his practice at Amazon, and how that shapes the way he solves problems. Steve will also discuss some recent legal trends that are impacting brand owners.Stephen J. Coates
12:15 – 12:45 p.m.BOXED LUNCHES PROVIDED TO ALL ATTENDEES
12:45 – 1:15 p.m.SPECIAL LUNCHEON PRESENTATION
My Day at the Supreme CourtGregory A. Castanias, Lead attorney in SAS Institute Inc. v. Iancu (U.S. 2018)
1:15 – 1:30 p.m.BREAK
8:50 – 11:00 a.m.
PLENARY SESSIONLUNCH
11:15 a.m. – 12:15 p.m.
BREAKOUT SESSION A
8:30 – 8:55 a.m.CONTINENTAL BREAKFAST
8:55 – 9:00 a.m.WELCOME
9:00 – 10:00 a.m.
Inside Minnesota IP: Meet the Inventors, Artists and EntrepreneursJoin this panel for a fun, behind-the-scenes exploration of local IP stories. You’ll hear from the inventors of POPS! Diabetes Care, an innovative diabetes management system, and an inventor from the LegalCORPS Inventor Assistance Program.Daniel Bruzzone Dan Davis Debra George Thomas R. Hipkins Lonny Stormo Rita Anne O’Keeffe (moderator)
8:55 – 10:00 a.m.
PLENARY SESSION10:15 – 11:15 a.m.
BREAKOUT SESSION E11:30 a.m. – 12:30 p.m.
BREAKOUT SESSION F
DAY 1 | AT-A-GLANCE
DAY 2 | AT-A-GLANCE
4
803
Patent Law Developments Impacting the Biotechnology, Medical Device and Digital Health Industries Marsili & Werner
704
Hot Topics in Retail IPErickson, Kraft & Wessberg
903
Protecting IP in Manufacturing and Distribution Relationships: Helsinn and MoreLockner & Louwagie
901
Tom Irving’s Top Tips for Overcoming Section 103 Obviousness RejectionsIrving
801
Inter Partes Review: Tips from the TrenchesAlton
701
WesternGeco: International Patent Damages, and BeyondFahrenkrog & Yun Sauer
TRADEMARK COUNSEL –Recommended selection at session 802.
TRADEMARK COUNSEL –Recommended selection at session 902.
702
The 10 Weirdest Things About the Copyright Act: Quirky Law That May Trip Up Your ClientBoyd & Jay
802 1.0 ethics credit applied for
Ethical Issues in Trademark Prosecution Debrow
703 1.0 ethics credit applied for
An Alternative for Impaired Lawyers Facing Ethics Charges: The Office of Enrollment and Discipline’s Diversion Pilot ProgramBibelhausen & Canter
902
Mobile Device Cyber Security for IP LawyersCarney
GE
NE
RA
L
INTE
RES
T
IN-HOUSE COUNSEL –Recommended selections at sessions 702 & 704.
IN-HOUSE COUNSEL –Recommended selections at sessions 802 & 803.
IN-HOUSE COUNSEL –Recommended selections at sessions 902 & 903.
402
To Tweet or Not to Tweet (or Post or Snap or Gram) Ewald & Littman
302
Effectively Managing Brand Transitions – Brand Refreshes, New Brands, and Legacy Phase-OutsBrennan & Toms
202
The Year in Trademark Law: Noteworthy Decisions and Their Impact on Your PracticeCoates, Hefte & Sitzmann
203
Treating Data as an Intellectual Property AssetMartinez
403
MAD JVs: IP Issues in Strategic Alliances – Mergers, Acquisitions, Divestitures and Joint Ventures Leonard & Prim Turoski (moderator)
303
European IP Law: Significant Developments in 2018Beverley-Smith, DeSchane & Lefort
304
The Secrets to a Successful Mock Trial – The Consultant PerspectiveCarrane, Dominic, O’Toole & Pitera Gulati (moderator)
404
The Judicial Perspective – Lessons Learned from Real Trials and How Mock Exercises Might Have Helped Brasel, Rosenbaum & Wahl Bullard & Ellingboe (moderators)
204
The In-House Perspective on Real Lessons from Fake TrialsDummett, Hunter, Jackson & Zaetta Kahnke (moderator)
201
How to Successfully Navigate the Sea Changes in Patent Enforcement and PTAB Practice Boyd, Castanias & Smith Bianchi (moderator)
401
Untangling Alice – A New Blueprint for “Abstract Idea” Litigation and for Patent Prosecution?Larson & Lunseth
301
Venue Decisions and Trends Post-TC HeartlandHughey
1:30 – 2:30 p.m.
BREAKOUT SESSION B2:45 – 3:45 p.m.
BREAKOUT SESSION C4:00 – 5:00 p.m.
BREAKOUT SESSION D
12:30 – 1:30 p.m.LUNCH – ON YOUR OWN
2:45 – 3:45 p.m.
BREAKOUT SESSION H1:30 – 2:30 p.m.
BREAKOUT SESSION G4:00 – 5:00 p.m.
BREAKOUT SESSION ILUNCH
5:00 – 6:00 p.m.
RECEPTION
Register for a chance to win a Peloton Bike Trainer – including subscription, delivery and set-up – or one of three Fitbit Fitness Bands!
The prize drawing will take place at the reception on Thursday, September 27, and you must be present at the reception during the prize drawing to win. Any person may receive an entry form on Thursday, September 27, at the Institute registration desk until the reception begins at 5:00 p.m. Registration for the 2018 Midwest IP Institute is not required. The following individuals are not eligible to win: employees of Minnesota CLE and the Minnesota State Bar Association, as well as family members of those employees.
courtesy of the sponsoring firms
FOOD, FUN AND A CHANCE TO WIN BIG PRIZES!
5
8:15 – 8:50 a.m. CHECK-IN & CONTINENTAL BREAKFAST
8:50 – 9:00 a.m. WELCOME
PLENARY SESSION
9:00 – 10:00 a.m.
2018 Update on New Developments at the USPTODrew Hirshfeld, Commissioner for Patents, provides the latest news and insights from the USPTO. Following Mr. Hirshfeld’s remarks, Joseph Winkels will moderate a question and answer session.
Drew Hirshfeld & Joseph W. Winkels
10:00 – 11:00 a.m.
Working at Internet Speed: Perspectives from Amazon’s Senior Trademark CounselAmazon is Earth’s Most Customer-Centric Company. Stephen Coates, Senior Trademark Counsel from Amazon, likes to think of trademark law as the Most Customer-Centric Body of Law. Steve will share his experience, including his role as Twitter’s first trademark counsel, and perspective on how he brings that customer focus to his practice at Amazon, and how that shapes the way he solves problems. Steve will also discuss some recent legal trends that are impacting brand owners.
Stephen J. Coates
11:00 – 11:15 a.m. BREAK
11:15 a.m. – 12:15 p.m.
BREAKOUT SESSION A
101
2018 Patent Law Update – What Happened and Why It MattersYour annual patent law update on the Federal Circuit and Supreme Court decisions of the past 12 months – and what they mean for you and your clients.
John A. Dragseth & Nathan Kelley
102
Canada’s New Trademark Law: What American Trademark Lawyers Need to Know Now Significant changes to Canada’s new Trademark Law will be implemented in 2019 affecting Canadian trademark owners. Changes include: elimination of use as a basis for registration, Nice classification and Madrid Protocol. These and other amendments will necessitate changes to Canadian trademark protection strategies, enforcement and portfolio management.
Janice M. Bereskin
103
In-House IP Toolkit: 10 Useful Contract Provisions for IP TransactionsVirtually every transaction, whether commercial or litigation-based, includes a type of intellectual property for which specific terms and conditions ought to be considered. From patents and trademarks to confidential information and other data, it is critical to include contractual provisions – in the bet-the-company and the day-to-day business agreements – that are tailored to protecting the parties’ IP interests and reducing the related risks. No longer should boiler plate language be accepted as good enough. Join our presenters as they discuss and provide examples of common provisions that every in-house counsel should have in her or his repertoire to ensure that no intellectual property assets are lost or forgotten.
Daniel G. Happe & Mark R. Privratsky
2:45 – 3:45 p.m.
BREAKOUT SESSION C
301
Venue Decisions and Trends Post-TC HeartlandRachel C. Hughey discusses the evolving legal issues surrounding venue in the year since the Supreme Court’s TC Heartland decision, including timing and burden of proof for establishing venue, what constitutes a regular and established place of business, and what comprises an act of infringement.
Rachel C. Hughey
302
Effectively Managing Brand Transitions – Brand Refreshes, New Brands, and Legacy Phase-OutsAs a business grows and changes, its brand often needs to grow and change as well. A brand transition can be anything from a brand refresh to phasing out a legacy brand or adopting an entirely new brand. When your company goes through any sort of brand transition, trademark counsel’s role is critical in making sure the transition goes smoothly and that, whenever possible, the goodwill is effectively transitioned with the brand. This presentation will identify some of the key issues to consider, and key pitfalls to avoid, before, during, and after the transition.
Karen A. Brennan & Keith Toms
303
European IP Law: Significant Developments in 2018Huw Beverley-Smith and Brian Lefort will bring you up to speed on Europe’s dynamic IP landscape, including: Update on the Unified Patent Court; Germany’s first compulsory patent license; Reform of the European Union’s trademark laws; Developments in non-traditional trademarks; Obligations under the General Data Protection Regulation; And more!
Huw Beverley-Smith, Jodi DeSchane & Brian D. Lefort
304
The Secrets to a Successful Mock Trial – The Consultant PerspectiveTrial consultants offer unique skills that can make or break a mock trial exercise. Experienced trial consultants from around the country will address the different types of exercises that are available, who should consider pursuing a mock trial, the secrets to crafting and executing a successful mock trial, the keys to theme development, and how to make the complex simple.
Johanna Carrane, Chris Dominic, Thomas M. O’Toole, Ph.D. & Merrie Jo Pitera, Ph.D. Ani Gulati (moderator)
3:45 – 4:00 p.m. BREAK
4:00 – 5:00 p.m.
BREAKOUT SESSION D
401
Untangling Alice – A New Blueprint for “Abstract Idea” Litigation and for Patent Prosecution?Since 2014 the Federal Circuit and District Courts have invalidated a frightening number of software and medical treatment patents under the “abstract idea” jurisprudence of Alice Corp. v. CLS Bank Int’l (U.S. 2014). These results, and the Alice doctrine itself, have been
12:15 – 1:30 p.m.
LUNCH, PRESENTATION & BREAK(boxed lunches provided to all attendees)
12:45 – 1:15 p.m.
SPECIAL LUNCHEON PRESENTATION
My Day at the Supreme CourtGregory A. Castanias, Lead attorney in SAS Institute Inc. v. Iancu (U.S. 2018)
1:30 – 2:30 p.m.
BREAKOUT SESSION B
201
How to Successfully Navigate the Sea Changes in Patent Enforcement and PTAB Practice The Supreme Court and Federal Circuit are now rapidly deciding cases that are changing the course of PTAB practice and patent enforcement. Whether you are a patent stakeholder, patent drafter, or patent litigator, you need to know how the courts and the PTAB are affected by these sea changes. Hear perspectives from experienced patent attorneys who are experts in litigation, prosecution, and PTAB practice to chart and navigate a course for your success. Guest speakers on this expert panel include the Chief IP Counsel at Ecolab (formerly Chief Patent Judge of the PTAB), as well as a lead attorney for SAS Institute Inc. in its recent 5-4 win before the U.S. Supreme Court – a decision that will transform litigation practice before the PTAB.
Felicia J. Boyd, Gregory A. Castanias & James D. SmithTimothy E. Bianchi (moderator)
202
The Year in Trademark Law: Noteworthy Decisions and Their Impact on Your PracticeThree trademark law experts discuss significant trademark decisions from the past year and their practical implications for in-house and outside counsel. Whether the cases involve restaurants, whiskey or rifle scopes, many of the cases involve in-depth discussion of affirmative defenses, from the First Amendment to laches, and fair use to functionality.
Stephen J. Coates, Carrie A. Hefte & Timothy D. Sitzmann
203
Treating Data as an Intellectual Property AssetWhether your company is dealing with big data or little data, you’re managing a huge asset. As businesses become more digital, they become even more dependent on data. But changing business considerations, as well as the emerging regulatory landscape and new litigation risks surrounding data, can all substantially enhance – or impair – the value of data. Furthermore, the acquisition, transfer, sharing and sale of data have numerous intellectual property implications. Join us for this session to learn more about managing data as an intellectual property asset.
Richard M. Martinez
204
The In-House Perspective on Real Lessons from Fake TrialsThe number of actual civil trials is declining. But the number of mock trials is increasing – significantly. Experienced in-house lawyers will address the different goals that can be accomplished through a mock-trial exercise, who the proper audience is, what the most effective formats are, pitfalls to avoid, and timing and risk considerations.
Lynn A. Dummett, Eileen M. Hunter, Renee L. Jackson & Christopher R. ZaettaRandall E. Kahnke (moderator)
2:30 – 2:45 p.m. BREAK
DAY 1 – THURSDAY, SEPTEMBER 27
6
controversial. Come learn from the lead lawyer in Aatrix Software, Inc. v. Green Shades Software, Inc. (Fed. Cir. 2018) what that new decision – as well as Berkheimer v. HP (Fed. Cir. 2018) – tell us the Federal Circuit wants to see in a patent to withstand motions to dismiss and for summary judgment in the face of “abstract idea” challenges. You’ll also hear from an experienced patent prosecutor about how the Patent Office is handling the examination of these patents, including new USPTO guidelines issued in light of these 2018 decisions.
James A. Larson & John B. Lunseth
402
To Tweet or Not to Tweet (or Post or Snap or Gram) Clients often ask whether it is O.K. to post or repost something online, or alternatively, how they can get something unflattering taken off the Internet. We’ll explore the rules of the road when it comes to social media advertising best practices, endorsement issues inherent in reposts, right of publicity issues online, copyright risks related to gifs, online takedown tools and more. We will also discuss new case law related to embedded linking and how to deal with copyright trolls. Bring your social media legal questions and war stories.
Ashley Bennett Ewald & Molly R. Littman
403
MAD JVs: IP Issues in Strategic Alliances – Mergers, Acquisitions, Divestitures and Joint Ventures You can’t do it alone. Corporations need third-party partners such as universities to develop and commercialize intellectual property. But no marriage or partnership is perfect. This panel will cover your questions and IP considerations in the formation, maintenance and dissolution of strategic alliances (e.g. joint ventures, joint developments, joint commercialization, etc.). IP issues in each phase of the life a Strategic Alliance are considered: (1) Formation; (2) Integration/Maintenance; and (3) Dissolution. Stakeholders such as deal leads, IP lawyers, and IP specialists will discuss their role in each phase of the life of the Strategic Alliance.
Robert B. Leonard & Richard F. PrimChristopher M. Turoski (moderator)
404
The Judicial Perspective – Lessons Learned from Real Trials and How Mock Exercises Might Have Helped A panel of experienced trial judges will discuss lessons learned from real trials and how lawyers can improve their trial presentations through mock exercises. These judges will talk about revising and refining themes through mock exercises, how to identify and strategize about key evidentiary issues through mock exercises, and how simply more practice can help improve the trial presentation and enable better trial results.
Judge Nancy E. Brasel, Judge James M. Rosenbaum (ret.) & Judge Edward T. WahlElsa M. Bullard & Deborah A. Ellingboe (moderators)
5:00 – 6:00 p.m.
RECEPTION – courtesy of the sponsoring firms
FOOD, FUN AND A CHANCE TO WIN BIG PRIZES!Register for a chance to win a Peloton Bike Trainer – including subscription, delivery and set-up – or one of three Fitbit Fitness Bands!
See page 5 for details.
DAY 2 – FRIDAY, SEPTEMBER 28
8:30 – 8:55 a.m.
CONTINENTAL BREAKFAST
8:55 – 9:00 a.m.
WELCOME
PLENARY SESSION
9:00 – 10:00 a.m.
Inside Minnesota IP: Meet the Inventors, Artists and EntrepreneursJoin this panel for a fun, behind-the-scenes exploration of local IP stories. You’ll hear from the inventors of POPS! Diabetes Care, an innovative diabetes management system, and an inventor from the LegalCORPS Inventor Assistance Program.
Daniel Bruzzone, Dan Davis, Debra George, Thomas R. Hipkins & Lonny StormoRita Anne O’Keeffe (moderator)
10:00 – 10:15 a.m. BREAK
10:15 – 11:15 a.m.
BREAKOUT SESSION E
501
Meet the SPEs: Best Practice Tips from Supervisory Patent ExaminersA panel of Supervisory Patent Examiners (SPEs) who specialize in the computer science, chemical/biological and bio-medical areas will discuss their roles and responsibilities at the USPTO. Learn how they assist applicants and what they expect from them. You will also hear what their pet peeves are, and how to position your application for success.
Alford Kindred, Eva Montalvo & James WilsonAlan M. Koenck (moderator)
502
The Year in Copyright Law – Noteworthy Decisions and Their Impact on Your PracticeJoin experienced in-house counsel and private practitioners for an in-depth review of significant copyright developments, including recent decisions involving questions of copyrightability, substantial similarity, fair use, implied licenses and more.
Calvin L. Litsey, Paul W. Mussell & Ruth Rivard
503
Trademark Survival Guidance for In-House Patent and IP CounselThis session is specifically designed for in-house patent and intellectual property counsel wanting to be more comfortable and effective handling or supervising trademark matters. Over the last quarter century intellectual property expertise has become more and more subspecialized. Yet, not all companies have dedicated in-house trademark counsel, so in-house patent counsel is often expected to have at least a working knowledge of the ever-changing trademark landscape. Learn and apply valuable trademark knowledge to your day-to-day work, and take away the top six trademark tips that will improve and strengthen your trademark advice to business leaders and marketing professionals.
Stephen R. Baird, Paul Sherburne, Gregory W. Smock & Kirsten K. Stone
504
IP Trends in the Food, Beverage and Restaurant IndustriesJoin us for a discussion of IP trends in the food, beverage and restaurant industries. Topics will include the IP implications of the focus on transparency and healthy products, the desire for local and craft products, the growth of ordering and delivery platforms, and the need for traceability in the supply chain. The panelists will share updates and practice tips about advertising claims, BE logos, trademark trends, certification marks, licensing, and blockchain patents.
Michael Boland, Elizabeth C. Buckingham & Bridget Hayden
11:15 – 11:30 a.m. BREAK
11:30 a.m. – 12:30 p.m.
BREAKOUT SESSION F
601
Understanding the USPTO Examiner Production System How and when is examiner performance assessed? What types of actions are most rewarded? How can patent practitioners utilize this information to make U.S. prosecution more efficient? Linda Foit, a patent agent in New York, answers these questions and yours.
Linda Foit, Ph.D.
602
The Resurrection of Niche FameAs seen in Buc-ee’s recent trademark victory in federal court, there are certain states like Texas where you can establish dilution if you show that your trademark is famous throughout the state or in any geographic area within the state. And if successful, you can prevent others from using your trademark in the corresponding state or geographic area. In this presentation, we will use our perspective as Buc-ee’s counsel to explain why you should be creative when involved in trademark lawsuits by looking to all potential causes of action, including state law trademark causes of action. We will also discuss the benefits of obtaining state trademark registrations for use in litigation.
Joseph J. Berghammer & Katie Laatsch Fink
603
Disrupting Bias: How In-House and Outside Counsel Can Drive Diversity and Inclusion1.0 elimination of bias credit applied for From greater innovation to greater profits, studies show numerous benefits of having a workplace that is inclusive of diverse perspectives. Yet obtaining a truly diverse and inclusive workplace remains a challenge within the legal profession. The culprit may be implicit or unconscious bias. Bias prevents objective decision-making and can adversely impact workplace equality and inclusion. This program will address how bias may impact the legal profession and identify specific strategies in-house counsel and law firms can do to drive inclusion by disrupting bias. Panelists will share some of the strategies that they are employing to drive greater diversity and inclusion throughout the profession.
Ann Anaya & Jackie HaydockAnn Jenrette-Thomas (moderator)
7
As another special bonus of attending the Institute, you may view 2 of the 3 webcasts listed below for free! A coupon code, along with instructions on how to register for free at www.minncle.org, will be distributed at the Institute.
AFTER THE CONFERENCE…
2 FREE WEBCASTS
2:45 – 3:45 p.m.
BREAKOUT SESSION H
801
Inter Partes Review: Tips from the TrenchesIntellectual property litigator Larina Alton provides practical advice for navigating the developing inter partes review forum. From avoiding the pitfalls of a defective petition or patent owner response to charting a path through motion practice, depositions, and final submissions, she provides prudent guidance for succeeding at IPR.
Larina A. Alton
802
Ethical Issues in Trademark Prosecution 1.0 ethics credit applied forThere are a number of ethical rules that impact a trademark prosecution practice, including conflicts of interest, fee disclosures, the unauthorized practice of law, and authority issues for work instructed by foreign law firms. This seminar will dive into common ethical issues faced by trademark attorneys, potential consequences, and recommendations on how to avoid ethical missteps.
Jennifer C. Debrow
803
Patent Law Developments Impacting the Biotechnology, Medical Device and Digital Health Industries We will discuss how evolving jurisprudence concerning issues such as patent eligibility and standing impact life sciences industries. We will also discuss biotechnology companies’ use of IPRs to challenge biologics patents and provide a summary and update on patent disputes related to groundbreaking CRISPR technology.
Caroline L. Marsili & Todd Werner
3:45 – 4:00 p.m. BREAK
4:00 – 5:00 p.m.
BREAKOUT SESSION I
901
Tom Irving’s Top Tips for Overcoming Section 103 Obviousness RejectionsTom Irving brings more than 40 years of patent prosecution and teaching experience to this presentation. Attendees will learn his time-tested strategies for overcoming obviousness rejections.
Tom Irving
902
Mobile Device Cyber Security for IP LawyersWhat can you do to protect your business or personal mobile device? This presentation will focus on proactive steps that IP attorneys can take to limit risk of mobile data loss, breach, or corruption. It will also provide advice they can share with their clients on avoiding spyware, ransomware, and other malware common to iPhone and Android smart phones.
John J. Carney
903
Protecting IP in Manufacturing and Distribution Relationships: Helsinn and MoreRelationships between manufacturers and third parties can inadvertently prejudice both parties’ intellectual property rights. The Supreme Court’s upcoming decision in Helsinn v. Teva highlights one potential risk that companies face when entering this type of relationship. This breakout session will discuss a few of these risks and suggest practical steps that businesses can take to mitigate them.
Samuel T. Lockner & Nathan D. Louwagie
604
Digital Technologies – An Industry Update on the Changing Protection Provided by Copyright and Patent LawsRecent decisions have impacted the scope of copyright protection provided to computer software, apps, and other digital technologies, especially in the area of user interfaces and AI-generated works. This session will discuss these issues and their impact on the industry. The session will also analyze recent developments in design patent protection for digital technologies, and present new approaches to obtaining utility patent protection for software and digital technologies under the Alice Corp. decision.
Daniel A. Tysver
12:30 – 1:30 p.m. LUNCH (on your own)
1:30 – 2:30 p.m.
BREAKOUT SESSION G
701
WesternGeco: International Patent Damages, and BeyondThe Supreme Court’s decision in WesternGeco has potentially broad implications for patent damages. Here, we will explore the depth of WesternGeco’s legal and practical effects from the perspectives of both patent owners and companies accused of infringement. We will also consider how the law may continue to evolve and what strategies in-house and outside counsel can implement now to create the most value for their clients going forward as WesternGeco’s effects emerge.
Aaron R. Fahrenkrog & Christine S. Yun Sauer
702
The 10 Weirdest Things About the Copyright Act: Quirky Law That May Trip Up Your ClientA popular session returns! Discover some of the hidden quirks of the Copyright Act and the oddities that can flow from the application of various provisions.
Felicia J. Boyd & Jonathan D. Jay
703
An Alternative for Impaired Lawyers Facing Ethics Charges: The Office of Enrollment and Discipline’s Diversion Pilot Program1.0 ethics credit applied forLegal profession media tells stories about lawyer impairment and, more recently, realistic strategies for improving lawyer well-being to reduce those risks. Disciplinary investigations commonly involve physical or mental health issues (including substance or alcohol use) or law practice management deficiencies. The USPTO Office of Enrollment and Discipline (OED) has launched a pilot diversion program to offer an alternative in appropriate cases. Learn about the OED and the diversion program, the unique challenges faced by IP lawyers and the resources available through lawyer assistance programs, the American Bar Association and others.
Joan Bibelhausen & Melanie Canter
704
Hot Topics in Retail IPWhat key IP issues is the retail industry encountering? What can you expect to see more of? This session addresses case law decided over the last year, novel issues from new cases filed, matters keeping retailers up at night, and what to anticipate in the year to come.
Linzey A. Erickson, Renee S. Kraft & Ann Dunn Wessberg
2:30 – 2:45 p.m. BREAK
DAY 2 – FRIDAY, SEPTEMBER 28 (CONT.)
1Monday, October 29, 2018 9:00 – 10:00 a.m.1.0 CLE credit applied for
TTAB Update – Top 10 Decisions from the Trademark Trial and Appeal Board for 2017-18Tiffany Blofield & Bradley J. Walz
2Monday, October 29, 2018 12:00 – 1:00 p.m.1.0 CLE credit applied for
Trade Secrets 2017-18 – Key Developments and TakeawaysKerry L. Bundy, Randall E. Kahnke & Tyler A. Young
3Monday, October 29, 2018 2:00 – 3:00 p.m.1.0 CLE credit applied for
Patent Damages and More – Top 10 Federal District Court Patent Cases 2017-18Niall A. MacLeod & Aaron A. Myers
8
GREGORY A. CASTANIASJones Day Washington, D.C.
STEPHEN J. COATESAmazon Seattle, Washington
DAN DAVISPOPS! Diabetes Care Oak Park Heights
JENNIFER C. DEBROWGray Plant Mooty Minneapolis
JODI DESCHANEFaegre Baker Daniels LLP Minneapolis
CHRIS DOMINICTsongas Litigation Consulting, Inc. Portland, Oregon
JOHN A. DRAGSETHFish & Richardson, P.C. Minneapolis
LYNN A. DUMMETTHoneywell Atlanta, Georgia
DEBORAH A. ELLINGBOEFaegre Baker Daniels LLP Minneapolis
LINZEY A. ERICKSONBluestem Brands, Inc. Eden Prairie
ASHLEY BENNETT EWALDGray Plant Mooty Minneapolis
DEAN EYLERGray Plant Mooty Minneapolis
AARON R. FAHRENKROGRobins Kaplan LLP Minneapolis
KATIE LAATSCH FINKBanner & Witcoff, Ltd. Chicago, Illinois
LINDA FOIT, PH.D.Fox Rothschild LLP New York, New York
DEBRA GEORGE Cat Toy Theater Saint Paul
ANI GULATIGeneral Mills Inc. Golden Valley
DANIEL G. HAPPETSI Inc. Shoreview
BRIDGET HAYDENDorsey & Whitney LLP Minneapolis
JACKIE HAYDOCKMicrosoft Minneapolis
CARRIE A. HEFTEWells Fargo & Company Minneapolis
STUART R. HEMPHILLDorsey & Whitney LLP Minneapolis
THOMAS R. HIPKINSFredrikson & Byron, P.A. Minneapolis
DREW HIRSHFELDUnited States Patent and Trademark Office Alexandria, Virginia
RACHEL C. HUGHEY Merchant & Gould, P.C. Minneapolis
EILEEN M. HUNTER3M Saint Paul
TOM IRVINGFinnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington, D.C.
RENEE L. JACKSONCapella Education Company Minneapolis
JONATHAN D. JAYHellmuth & Johnson PLLC Edina
ANN JENRETTE-THOMASStinson Leonard Street LLP Minneapolis
RANDALL E. KAHNKEFaegre Baker Daniels LLP Minneapolis
NATHAN KELLEYFormer USPTO Solicitor & Deputy General Counsel for Intellectual Property Law Alexandria, Virginia
TIMOTHY M. KENNYNorton Rose Fulbright Minneapolis
ALFORD KINDREDUnited States Patent and Trademark Office Detroit, Michigan
ALAN M. KOENCKKinney & Lange Minneapolis
RENEE S. KRAFTTarget Minneapolis
MICHAEL M. LAFEBERBriggs and Morgan, P.A. Minneapolis
JAMES A. LARSONHamre, Schumann, Mueller & Larson, P.C. Minneapolis
BRIAN D. LEFORTFaegre Baker Daniels LLP Boulder, Colorado
ROBERT B. LEONARDFaegre Baker Daniels LLP Minneapolis
CRAIG LERVICKLarkin, Hoffman, Daly & Lindgren, Ltd. Minneapolis
CALVIN L. LITSEYFaegre Baker Daniels LLP East Palo Alto, California
MOLLY R. LITTMANGray Plant Mooty Minneapolis
SAMUEL T. LOCKNERCarlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A. Minneapolis
NATHAN D. LOUWAGIECarlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A. Minneapolis
JOHN B. LUNSETHBriggs and Morgan, P.A. Minneapolis
NIALL A. MACLEODKutak Rock LLP Minneapolis
CAROLINE L. MARSILICarlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A. Minneapolis
RICHARD M. MARTINEZJones Day Minneapolis
TODD MESSAL Boston Scientific Corporation Maple Grove
EVA MONTALVOUnited States Patent and Trademark Office Detroit, Michigan
PAUL W. MUSSELLNCS Pearson Bloomington
AARON A. MYERSKutak Rock LLP Minneapolis
TERRANCE C. NEWBYMaslon LLP Minneapolis
RITA ANNE O’KEEFFEMarketing Architects Minneapolis
THOMAS M. O’TOOLE, PH.D.Sound Jury Consulting Seattle, Washington
BRAD D. PEDERSENPatterson Thuente Pedersen, P.A. Minneapolis
MERRIE JO PITERA, PH.D.Litigation Insights Overland Park, Kansas
RICHARD F. PRIMUnited Health Group Minnetonka
MARK R. PRIVRATSKYBallard Spahr LLP Minneapolis
RUTH RIVARDStinson Leonard Street LLP Minneapolis
JUDGE JAMES M. ROSENBAUM (RET.)JAMS Minneapolis
CHRISTINE S. YUN SAUERRobins Kaplan LLP Mountain View, California
PAUL SHERBURNEGraco, Inc. Minneapolis
FACULTY & PLANNERS
TIMOTHY D. SITZMANNWinthrop & Weinstine, P.A. Minneapolis
JAMES D. SMITHEcolab Inc. Saint Paul
GREGORY W. SMOCKTeleflex Inc. Maple Grove
KIRSTEN K. STONEH.B. Fuller Vadnais Heights
LONNY STORMOPOPS! Diabetes Care Oak Park Heights
KEITH TOMSMcCarter and English, LLP Boston, Massachusetts
CHRISTOPHER M. TUROSKIUniversity of Minnesota Law School Minneapolis
DANIEL A. TYSVERBeck Tysver Evans, PLLC Minneapolis
JUDGE EDWARD T. WAHLFourth Judicial District Minneapolis
BRADLEY J. WALZWinthrop & Weinstine, P.A. Minneapolis
KARI WANGENSTEENCarlson Wagonlit Minneapolis
GARRETT WEBERBallard Spahr LLP Minneapolis
TODD WERNERCarlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A. Minneapolis
ANN DUNN WESSBERGFredrikson & Byron, P.A. Minneapolis
JAMES WILSONUnited States Patent and Trademark Office Detroit, Michigan
JOSEPH W. WINKELSCarlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A. Minneapolis
ELIZABETH COWAN WRIGHTFaegre Baker Daniels LLP Minneapolis
BARBARA A. WRIGLEYFox Rothschild LLP Minneapolis
TYLER A. YOUNGFaegre Baker Daniels LLP Minneapolis
TRICIA ANN-OLSON ZACHARYOvaile Law Group Minneapolis
CHRISTOPHER R. ZAETTAUnitedHealthcare Minnetonka
JOHN ADKISSONFish & Richardson, P.C. Minneapolis
LARINA A. ALTONFox Rothschild LLP Minneapolis
ANN ANAYA3M Saint Paul
STEPHEN R. BAIRDWinthrop & Weinstine, P.A. Minneapolis
JANICE M. BERESKINBereskin & Parr LLP Toronto, Canada
JOSEPH J. BERGHAMMERBanner & Witcoff, Ltd. Chicago, Illinois
HUW BEVERLEY-SMITHFaegre Baker Daniels LLP London, England
TIMOTHY E. BIANCHISchwegman Lundberg & Woessner, P.A. Minneapolis
JOAN BIBELHAUSENLawyers Concerned for Lawyers Saint Paul
TIFFANY BLOFIELDWinthrop & Weinstine, P.A. Minneapolis
MICHAEL BOLANDThe Food Industry Center University of Minnesota Saint Paul
FELICIA J. BOYDBarnes & Thornburg, LLP Minneapolis
JUDGE NANCY E. BRASELFourth Judicial District Minneapolis
KAREN A. BRENNANBest Buy Co. Richfield
DANIEL BRUZZONEPatterson Thuente Pedersen, P.A. Minneapolis
ELIZABETH C. BUCKINGHAMDorsey & Whitney LLP Minneapolis
ELSA M. BULLARDFaegre Baker Daniels LLP Minneapolis
KERRY L. BUNDYFaegre Baker Daniels LLP Minneapolis
MELANIE CANTERUnited States Patent and Trademark Office Alexandria, Virginia
JOHN J. CARNEYCarney Forensics Saint Paul
JOHANNA CARRANEJuryScope, Inc. Eden Prairie
VISITING SPEAKER
PLANNER
9
TOTE BAG SPONSOR
LUNCHEON SPONSOR
SPONSORING FIRMSSPECIAL THANKS TO OUR
WE ALSO THANK:
10
DATE & LOCATIONThursday & Friday, September 27 & 28, 2018 Minnesota CLE Conference Center
600 Nicollet Mall, Suite 370 (Third Floor City Center) Minneapolis, Minnesota
HOTEL ACCOMMODATIONSGo to the Visit Minneapolis website to search for hotels and book your room. The closest hotels to the Minnesota CLE Conference Center are the Minneapolis Marriott City Center and the Radisson Blu Minneapolis. http://www.minneapolis.org/
PARKING SPECIALParking is available in the City Center parking ramp for only $13 per day if you arrive before 8:30 a.m. and leave after 1:00 p.m.
CREDITS – MIDWEST IP INSTITUTEMinnesota CLE is applying to the Minnesota State Board of CLE for 12.5 total CLE credits. This total includes 1.0 elimination of bias credit for session #603 and 1.0 ethics credit each for sessions #703 and #802. The maximum number of total credits attendees may claim for this course is 12.5 credits. Minnesota CLE is an accredited sponsor in Wisconsin and North Dakota.
CREDITS – FREE WEBCASTSAttendees also may view, for free, two of the three webcasts listed on page 8. Minnesota CLE is applying for 1.0 standard CLE credit for each webcast.
ACCOMMODATIONIf you have a disability and need an accommodation in order to attend, please contact us in advance of the program at Minnesota CLE, 2550 University Avenue West, Suite 160-S, Saint Paul, MN 55114 or call 651-227-8266 or 800-759-8840.
CANCELLATION / NO-SHOW POLICYPaid registrants who cancel their registration at least 3 business days before the program will receive a full credit on their account; if fewer than 3 business days, a $25 administrative fee will be deducted. Paid registrants who do not cancel, yet fail to attend, will receive the electronic version of both the 2018 Institute Manual and the 2018 IP Book. Passholders may purchase the materials at 50% of the full retail price.
SCHOLARSHIPS AVAILABLEMinnesota CLE maintains a scholarship program for those individuals with a financial need. Most scholarships awarded are 50% off the seminar price. To obtain a scholarship application, contact Grant at [email protected] or 651-254-2111.
QUESTIONS?Call Minnesota CLE at 651-227-8266 or 800-759-8840, or visit www.minncle.org.
Radisson Blu
Please “” appropriate box:
$695 MSBA member
$695 paralegal
$795 standard rate
I have a Minnesota CLE Season PassSM.
Please “” one:
In-house counsel
Patent attorney
Litigator
Trademark/ Copyright attorney
Business professional
Other
2018 MIDWEST
IP INSTITUTESEPTEMBER 27 & 28, 2018 MINNESOTA CLE CONFERENCE CENTER, MINNEAPOLIS
Can’t Attend?You can still get the program materials!
The hardcopy of the 2018 IP Book only is available for $75 (plus tax and handling). Please call Minnesota CLE at 651-227-8266 or 800-759-8840 to place your order. Orders will be filled after the Institute.
The electronic version of the 2018 Institute Manual + the electronic version of the 2018 IP Book is available for $125 (plus tax). This electronic version package may be purchased at www.minncle.org after October 12.
2331-19 | tmm | lmp
Check here if address below is new.
Name
Firm
Address
City/State/Zip
Phone
Attorney License No. (if applicable)
Profession, if non-attorney
(first) (mi)
(last)
New Lawyer Discount! I have been admitted to the bar for fewer than 3 years and am deducting 50%
from the registration fee marked above.
Scholarships AvailableMinnesota CLE maintains a scholarship program for those individuals with a financial need. Most scholarships awarded are 50% off the seminar price. To obtain a scholarship application, contact Grant at [email protected] or 651-254-2111.
Join the MSBA and pay less for Minnesota CLE seminars!To join the MSBA go to www.mnbar.orgOr for more membership advantages call 1-800-882-6722
MAIL TO: Minnesota CLE 2550 University Ave. West, Suite 160-S St. Paul, MN 55114
PAYMENT:
Enclosed is a check payable to Minnesota CLE for $ To pay by credit card, please register online or by phone.
COURSE INFORMATION
To pay by credit card,
register online or by phone.
REGISTER TODAY!WWW.MINNCLE.ORG 651-227-8266 • 800-759-8840
11
IPINSTITUTE
THE 2018 MIDWEST
Minnesota Continuing Legal Education
2550 UNIVERSITY AVE W #160-S, SAINT PAUL MN 55114
DATED MATERIAL — PLEASE EXPEDITE!
Nonprofit Org.U.S. Postage
P A I DMinnesota Continuing
Legal Education
SEPTEMBER 27 & 28, 2018
MINNESOTA CLE CONFERENCE CENTER
MINNEAPOLIS
