Earn up to 9 hours MCLE credit, includes Legal Ethics, Competency Issues, & Elimination of Bias
November 7-9, 2018
Fairmont San Jose
170 S Market Street
San Jose, CA 95113
Letter From the Chair | Schedule | Luncheon | Hotel & Registration Information | Sponsors
Brochure | Reg Form
Welcome to the 43rd IP Institute and Annual Meeting, State of the Art – Creativity and Innovation in the Arts and Sciences, in the City of San Jose, the capital of Silicon Valley! This year’s multi-day IP Institute celebrates the diversity of IP in our lives and culture by offering outstanding educational programming as well as multiple fun networking events.
You are invited to the iconic Fairmont Hotel in downtown San José on Wednesday evening for an enjoyable welcome and network reception with fellow attendees, speakers, Vanguard Award winners, and members of the California Lawyers Association IP Law Section Executive Committee, with food and refreshments catered by the Fairmont Hotel’s exceptional kitchen.
Thursday begins our in-depth two-day educational program, with two tracks of focused topics and broader general sessions that will appeal to all attendees. This year’s Institute provides a wide range of speakers and presentations on patent, copyright, trademark, trade secret, internet and privacy, cybercrime, technology transfer, licensing, music and entertainment, IP specific ethics, and more. Our speakers are experienced practitioners and thought leaders from leading law firms, law schools, and corporations who will share their insights and practical guidance that will help you in your own practice. Of note, we are once again offering CLE credit in the two difficult to obtain categories of Competence Issues and Recognition and Elimination of Bias.
We are also honored to have The Honorable Richard G. Taranto, U.S. Court of Appeals for the Federal Circuit; Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO; Karyn A. Temple, Acting Register of Copyrights and Director of the U.S. Copyright Office; Courtney H. Bailey, NASA Associate General Counsel for Commercial and Intellectual Property Law and Brian L. Levine, Department of Justice Computer Crime and Intellectual Property Section.
On Thursday afternoon you are invited to join the IP Law Section as we celebrate this year’s 10th Annual Vanguard Awards with a light-hearted and entertaining lunch honoring the accomplishments of our four honorees in the categories of academic, in-house counsel, judicial, and private practice. On Thursday evening there will be additional networking opportunities at our Casino Night, a free event open to all attendees where you are invited to try your luck and have your chance to win an array of fabulous prizes.
While you are here, feel free to explore some of the many other fun and engaging things to do and see in San Jose, such as the The Tech Museum of Innovation, directly across from the hotel, and the San Jose Museum of Art, right next to the hotel.
Come and experience the State of the Art in San Jose. I’m looking forward to seeing you!
Immersion Corporation, San Jose, California
Chair, 2018 IP Institute
5 p.m. - 7 p.m.
8 a.m. - 9 a.m.
8:45 a.m. - 9 a.m.
The objective of this program is to give attorneys the tools they need to ethically identify and eliminate bias in the legal profession. Unconscious bias plays a role in how we organize and interpret the world, but if left unchecked, such biases can—and do—have significant consequences in the practice of law. We must understand our biases, and the vulnerability we have to be influenced by cognitive biases, in order to minimize the harmful effects of biases. In this program, expert attorney and author Amy Oppenheimer will help attendees do just that, covering topics such as: the forms of unconscious bias; the impact bias can have on the legal profession, the Implicit Association Test (IAT) and what it can teach us about unconscious bias; and the risks of confirmation bias.
Speaker: Amy Oppenheimer, Workplace Investigations and Training
9 a.m. - 10 a.m.
Moderator: Emily Yu, Privacy Counsel, Global Privacy, Seagate Technology
The presentation will provide an overview of the Copyright Office’s role in supporting creativity and innovation in the arts and sciences, current Office initiatives in operations as well as law and policy, and highlight some of the future goals of the Office.
Speaker: Karyn A. Temple, Acting Register of Copyrights and Director of the U.S. Copyright Office
10:05 a.m. - 11:05 a.m.
11:05 a.m. - 11:15 a.m.
The presentation will address the current cybercrime and IP threat environment, the role of the Department of Justice in cybercrime and IP, developing relationships with law enforcement before an incident, the importance of involving law enforcement as soon as an incident occurs, and common concerns regarding involvement of law enforcement.
Speaker: Brian L. Levine, Senior Counsel in the Department of Justice’s Computer Crime and Intellectual Property Section (“CCIPS”)
Contemporary law has become grounded in the conviction that not only the outputs of innovation – artistic expressions, scientific methods, and technological advances–but also the inputs of innovation–skills, experience, know-how, professional relationships, creativity and entrepreneurial energies–are subject to control and propertization. Ms. Lobel will discuss the growing field of human capital law, at the intersections of IP, contract, employment law, and antitrust law, and analyze the effects of these battles, using for example the Mattel v. MGA Entertainment cases, which are the subject of her new award winning book: You Don’t Own Me (Norton) and the Waymo v. Uber case to illuminate the costs and benefits of redrawing intellectual ownership lines in contemporary markets.
Speaker: Orly Lobel, Don Weckstein Professor of Law, University of San Diego
11:15 a.m. - 12:15 p.m.
12:30 p.m. - 2:30 p.m.
The panel will discuss attorney-client privilege and work-product issues facing in-house counsel, including developing trends in the United States and select ex-US jurisdictions. Topics will include the differing views across jurisdictions as to whether, and to what extent, communications with in-house counsel are privileged; privilege pitfalls for in-house counsel who serve in both a legal and a business role; and practical ways to best position yourself for defending a privilege challenge.
Moderator: Sanjesh Sharma, IP Counsel, Johnson & Johnson Vision
The significance of trade secret protection has continued to grow exponentially in the last few years. This program will take on some of the most intriguing (and vexing) topics in trade secret litigation and provide you and your clients valuable insights from the trenches. The panel will address a broad range of issues, including the Defend Trade Secrets Act (DTSA); trade secret misappropriation as the predicate act of a RICO claim; damages and entitlement of alternative monetary relief; and anti-SLAPP issues. The panel also will discuss constitutional issues, such as the First Amendment (right to free speech), the Fifth Amendment (right against self-incrimination), and the Seventh Amendment (right to a jury trial). Finally, these experienced litigators will tackle some of the recent headline-making trade secrets cases that we all can’t stop reading about.
Moderator: Angelique Kaounis, Of Counsel, Gibson Dunn
2:45 p.m. - 3:45 p.m.
When most people consider NASA’s achievements, they think of destinations like the moon, mars, or the most distant galaxies in the universe. But you don’t have to look that far to appreciate the benefits of space exploration: commercialized NASA technology—known as NASA spinoffs—can be found in your phone, furniture, and car. They have improved nearly every semi-trailer truck on the road, airplane in the sky, and tractor working the fields. There’s more space in your life than you think.
Speaker: Courtney H. Bailey - Associate General Counsel for the Commercial and Intellectual Property Practice Group, National Aeronautics and Space Administration
The Communications Decency Act, Section 230 after FOSTA and Hassel v Bird The Communications Decency Act, Section 230 (CDA230), has been a hot issue this year with the passage of the “Allow States and Victims to Fight Online Sex Trafficking Act of 2017” (FOSTA) and the California Supreme Court decision in Hassell v Bird. The panel will discuss these developments and the state of CDA230 today.
Moderator: Bennet Kelley, Internet Law Center
3:50 p.m. - 4:50 p.m.
8 p.m. - 12 midnight
Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Andrei Iancu will provide an update on USPTO initiatives and priorities. He will also share his insights on the role of patents in a technology-driven economy and highlight programs advanced by the USPTO to streamline the examination process and foster entrepreneurial activity.
Speaker:Andrei Iancu, Under Secretary of Commerce and USPTO Director
Our speakers will discuss the legal and practical challenges faced by practitioners as they assist their clients in dealing with unauthorized usage of their marks in online marketplaces and social media sites, and offer practical assessments of the available options.
Musicians and artists are taking more control over the production, distribution, performance, and publishing of music, and California IP lawyers are on the leading edge of helping them do so. Bill Colitre and Hannibal Travis will survey the sources and structures of revenue in the digital music business and provide their insights on the future direction of the business for artists and music lovers alike.
Fireside Chat with The Honorable Richard G. Taranto, U.S. Court of Appeals for the Federal Circuit. With the explosive growth in technology, the Federal Circuit continues in its ongoing efforts to bring uniformity and clarity to patent law. In this fireside chat, we will explore a wide range of hotbutton issues, including the current state of patent subject matter eligibility, pending constitutional challenges to Patent Trial and Appeal Board (PTAB) appointments in view of the Supreme Court’s decision in Lucia v. SEC, the procedural impact of SAS Institute on pending appeals, the recovery of foreign patent damages in the U.S. post-WesternGeco, and the recent administrative proposal to adopt the Phillips claim constructionstandard for all future PTAB proceedings.
Speaker: The Honorable Circuit Judge Richard G. Taranto, U.S. Court of Appeals for the Federal Circuit
Moderator: Matthew Powers, Litigation Partner, Tensegrity Law Group
Representing startups, early-stage companies, accelerators, and companies that provide funding or assistance to them presents unique challenges but also a useful prism for assessing some of the many ethical considerations we all encounter in our legal practices. This panel will provide the view from a certified specialist in legal malpractice law, an in-house lawyer, and outside counsel on how to successfully manage these challenges.
12:30 p.m. - 1 p.m.
1:05 p.m. - 1:35 p.m.
David Mann is a graduate of Ohio State University and Stanford Law School. He served as a Deputy Public Defender in San Francisco before becoming a solo criminal defense practitioner. After 12 years of practice, substance abuse-related issues caused him to resign from the Bar with disciplinary charges pending. Following a relentless battle with addiction that included numerous hospitalizations and periods of living on the streets, he succeeded in getting clean and sober in 1998. Since then he has worked, among other things, as a cab driver, a private investigator, a paralegal, and a drug and alcohol rehabilitation counselor. He presently serves as the Northern California Consultant to The Other Bar, a statewide organization of recovering attorneys, judges, and law students. In this capacity, he spends his time providing outreach and education to the legal community and assisting attorneys as they struggle with substance abuse and related challenges that threaten their ability and/or eligibility to practice law.
Speaker: David Mann - The Other Bar
1:45 p.m. - 2:45 p.m.
Thursday, November 8, 12:30 p.m. - 2:30 p.m.
The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property law.
Koret Professor of Law, Berkeley Law, University of California
Litigation Partner, Munger, Tolles & Olson
Hon. Pauline Newman
Circuit Judge of the United States Court of Appeals for the Federal Circuit
Co-founder & COO, SaaStr
We have reserved a limited block of sleeping rooms at the rate of $243 at The Fairmont San Jose, 170 S Market St, San Jose, CA 95113
October 15, 2018
For reservations call: (408) 998-1900. Please identify yourself as part of California Lawyers Association IP Institute to obtain the special hotel rate for our group.
4 Ways to register! Complete the registration form and course selector:
California Lawyers Association
180 Howard Street, Suite 410
San Francisco, CA 94105
October 25, 2018
Please call (415) 795-7104 for special assistance.
For Registration Information, please call Program Registrations at (415) 795-7205.
Registration fees include admission, up to 9 hours of MCLE, course materials, Thursday and Friday breakfast, Interest Group lunch, Casino Game Night, and Wednesday evening reception.
The Thursday Vanguard Award Luncheon is a ticketed event. Tickets must be purchased separately. See registration form.
(Includes enrollment in the Intellectual Property Law Section for 2019)
All requests for refunds must be received (not postmarked) in writing by November 1st, 2018. Refunds will be issued less a $50 non-refundable service charge.
The California Lawyers Association and the Intellectual Property Law Section are approved State Bar of California MCLE providers.