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Intellectual Property Law

44th Intellectual Property Law Section Institute

IP Without Borders at the Wynn, Las Vegas

IP Institute image

Earn Up to 12.5 Hours of CLE Credit; Includes Legal Ethics, Competency Issues and Recognition and Elimination Of Bias In The Legal Profession and Society

Thursday-Saturday, November 14-16, 2019

Wynn Las Vegas
3131 S Las Vegas Blvd
Las Vegas, NV 89109

Schedule | Essential Info | Hotel Info | Chair’s Message | Vanguard Awards | Sponsors | Full Brochure | Reg Form

Letter from the Chair

image of Heather A. Antoine

The practice of intellectual property law is global and diverse. our clients’ IP needs are not confined to a particular state, or even a particular country. Our clients are business owners, innovators, creators, and artists. Their work regularly crosses state line, so why shouldn’t we?

Welcome to IP Without Borders, the 44th IP Institute at the spectacular Wynn Las Vegas!

We have a fantastic line up of programming and events scheduled for you all. We are fortunate and excited to bring together preeminent speakers from leading companies, government, and law firms to share their tips and tricks. With 12.5 hours of MCLE credits – including bias, competency, and ethics – we promise to keep you current on legal developments and trends in IP law. We have also incorporated some outstanding networking opportunities throughout the conference.

Thursday kicks off with Nuts and Bolts sessions on patent, copyright, trademark, and licensing; featuring both fundamental information for new attorneys in these areas as well as best practices more experienced practitioners will find valuable. Afterward, mix and mingle with your fellow attendees at our Welcome Reception at Top Golf for a fun and unique networking opportunity.

Friday’s programming spans the IP spectrum and features panels on privacy, franchising, AI, blockchain, and more. Attendees are then invited to enjoy a celebratory and entertaining meal as we congratulate and honor this year’s 11th Annual Vanguard Awards recipients. Stick around for an after-hours networking event you won’t want to miss.

The programming continues on Saturday as we explore implicit bias in the law, patent damages, loot boxes, and so much more! During lunch, we will have a special “speed networking” event so you can better connect and collaborate with fellow attendees. Finally, please join us at the Mob Museum after closing remarks for an interactive journey through the history of organized crime and law enforcement.

Get ready for a three-day celebration of our truly spectacular area of law. Viva Las Vegas!

Heather A. Antoine
Stubbs Alderton & Markiles, LLP
Chair of the 44th IP Institute
#IPSection

Vanguard Awards Winners

Congratulations to the Vanguard Awards Winners!

Private Practice

Francoise Gilbert, CEO of Data Minding Legal

Francoise Gilbert, CEO of Data Minding Legal

In-House

Catherine Lacavera, Vice President of Google LLC

Catherine Lacavera, Vice President of Google LLC

Academic

Anthony Reese Chancellor’s Professor of Law, University of California, Irvine

Anthony Reese, Chancellor’s Professor of Law, University of California, Irvine

Judicial

Hon. Michael Fitzgerald, United States District Court, Central District of California

Hon. Michael Fitzgerald, United States District Court, Central District of California

Sponsors

Gold Sponsor

image of Stubbs Alderton & Markiles, LLP logo
  • Stubbs Alderton & Markiles, LLP

Silver Sponsor

image of Chen Yoshimura LLP logo
  • Chen Yoshimura LLP

Event Sponsors

logos of Afro-IP, EB Resource Group, and Skiermont Derby LLP
  • Afro-IP
  • EB Resource Group
  • Skiermont Derby LLP

Bronze Sponsors

image of bronze sponsors logos
  • Alt Legal
  • Brutzkus Gubner
  • Knobbe Martens
  • Mintz
  • Steptoe & Johnson LLP

Saturday Breakfast Sponsor

Lewitt Hackman logo
  • Lewitt Hackman

Vanguard Awards Sponsors

Miles and Stockbridge logo
  • Miles & Stockbridge P.C.

Schedule

Registration Hours

  • Thursday: 11/14/19 – 12 noon – 5:20 p.m.
  • Friday: 11/15/2019 – 7:30 a.m. – 5:50 p.m.
  • Saturday: 11/16/2019 – 7:30 a.m. – 4:10 p.m.

Thursday, November 14

3:30 p.m. – 4:20 p.m. Concurrent Session

[1] Patent: Patent Prosecution for New Attorneys?

Speaker: TJ Singh, Klein, O’Neill & Singh, LLP

Practice tips regarding current topics in patent prosecution. CLE: .75 Hour

[2] Trademark: How to best utilize TESS for trademark clearance and prosecution

Speaker: Pete Bromaghim, Womble Bond Dickinson, LLP

The USPTO’s TESS database is familiar to all trademark practitioners, but understanding its finer points provides advantages not just in clearance searching, but also in prosecution, enforcement, and disputes. CLE: .75 Hour

4:30 p.m. – 5:20 p.m. Concurrent Session

[3] Licensing: What are the key terms of a license agreement?

Speaker: Kevin DeBre, Stubbs Alderton & Markiles, LLP

The difference of a few words matters. Kevin DeBré, a 20+ year licensing attorney, will discuss familiar licensing provisions and how courts have interpreted them. You will never look at an indemnification clause the same way. CLE: .75 Hour

[4] Copyright: What are the key terms of a work-for-hire agreement?

Speaker: Carmen Aviles, Hopkins & Carley, ALC

Understanding the legal nuances in work made for hire agreements and their practical effect. CLE: .75 Hour

6 p.m. – 8 p.m. | [22] Welcome Reception: Top Golf – MGM Grand Hotel & Casino

Friday, November 15

8 a.m. – 8:50 a.m. | [23] Networking Breakfast

Join us at our networking breakfast

8:50 a.m. – 9 a.m. | Welcome and Opening Remarks

Welcome and Opening Remarks

9 a.m. – 10 a.m. | General Session: [5] Stories From The Bench

Speakers: Hon. Andrew P. Gordon, USDC Nevada; Hon. Phillip M. Pro (Ret.), JAMS;
Andrew Stroud, Hanson Bridgett, LLP U.S., District Court, District of Nevada

Ever wanted to know how things work behind the scenes, in the back of the house? Join United States District Judge, District of Nevada, Andrew P. Gordon and the Hon. Philip M. Pro (Ret.) as they discuss tips of the trade, and offer advise on how to hold a winning hand in your intellectual property matters filed in federal court.

CLE: 1.0 Hour

10:05 a.m. – 11:05 a.m. Concurrent Session

[6] Are the House Odds for Baccarat Really That Different At the EPO Than the Patent Trial and Appeal Board?

Track 1: Patent

Speakers:
Albert Keyack, Kilburn & Strode, LLP
Thomas Leonard, Kilburn & Strode, LLP

Ever wonder about the advantages and disadvantages of challenging a patent in an inter partes review or post grant proceeding before the PTAB instead of pursuing an opposition or nullity action before the EPO? Albert Keyack, former USPTO Intellectual Property attache to Latin America, and EPO attache to the United States, will discuss the applicable rules and procedures as well as the comparative outcomes for patent challenges before the PTAB & EPO, including costs of bringing action, findings on invalidity, estoppel, and standards of review.

CLE: 1.0 Hour

[7] What Happens in the EU doesn’t stay in the EU: Is CCPA the new GDPR?

Track 2: Other

Speakers:
Christine Lyon, Morrison & Moerster, LLP
Zerina Curevac, Eaze Technologies, Inc.
Lorrie Ma, Uber Technologies, Inc.
Catherine Gellis, CGA Counsel

This panel will discuss the new California Consumer Privacy Act of 2018 and make comparisons to GDPR as well as provide some tips on leveraging the work companies have done for GDPR compliance.

CLE: 1.0 Hour

11:20 a.m. – 12:20 p.m. Concurrent Session

[8] You Ain’t Seen Nothing Yet: Litigating Pharmaceutical Trade Secrets Cases

Track 1: Patent

Speakers:
Jayashree Mitra, Zuber Lawler & Del Duca, LLP
Thomas Wallerstein, Venabl, LLP

This panel will cover how life sciences companies are increasingly using the Defend Trade Secrets Act to protect and enforce their intellectual property rights, especially as trade secrets and know how become more relevant with fluid employee mobility and digital information sharing. The speakers will discuss recent developments in trade secret litigation matters, and practical strategies for in-house counsel and practitioners litigating such claims.

CLE: 1.0 Hour

[9] So You Thought it was a License Agreement … Craps! Avoiding the Franchise Surprise

Track 2: Other

Speakers:
Dawn Newton, Donahue Fitzgerald
Tal Grinblat, Lewitt Hackman

Not every trademark license is created equally. This program will discuss what constitutes a franchise, how a trademark license can inadvertently become a franchise arrangement, franchise regulations and disclosure obligations, risks of violating the franchise laws, and creative ways to avoid crossing the line and becoming a franchise.

CLE: 1.0 Hour

12:30 p.m. – 2 p.m. | [24] Table Topic Lunch

During the lunch break a variety of table topics will be hosted by various conference speakers and practitioners to make lunch a lively and interactive opportunity for attendees. Registrants will have an opportunity to sign up for one table topic on-site at the registration table. Seats are limited per table and will be available on a first-come, first-served basis. (No CLE provided.)

2:05 p.m. – 3:05 p.m. Concurrent Session

[10] Is Doubling Down on Artificial Intelligence and Big Data Patents a Safe Bet – or a Gamble?

Track 1: Patent

Speakers:
Yoon Chae, Baker McKenzie, LLP
Jeff Risher, Tandem Diabetes Care, Inc.
Andrea Weiss Jeffries, Jones Day

The panel will discuss the recent surge in global patent filings in this area, which the UN has described as a “quantum leap,” and look into the various industries and markets that are impacted as well as the uncertainties & unique challenges with subject matter eligibility, inventorship, proving infringement, dual actor infringement issues, etc.

CLE: 1.0 Hour

[11] Ante Up – Waging Your Bet on Successful Enforcement Efforts in China

Track 2: Other

Speakers:
Jason Yao, Wanhuida Peksung, Beijing, China
Devon Beck, Stussy

This panel of experts will explain enforcement strategies in China, including administrative, civil and criminal proceedings. Learn about recent changes to the trademark laws in China and how these changes will help brand owners tackle trademark squatting. This panel will explain how to play the game in China to ensure you have a winning hand.

CLE: 1.0 Hour

3:10 p.m. – 4:10 p.m. Concurrent Session

[12] Bet the Block: Blockchain and Smart Contract Patents and Licenses

Track 1: Patent

Speakers:
David Randall, Brooks Kushman
Pem Guerry, SIGNiX
Bridget Smith, Knobbe Martens

Blockchain technology, while not necessarily new in terms of distributed computing, has some novel features, and is being and will be used in FinTech, Supply Chain Management, Smart Contracts and Licenses, Identity and Reputation Authentication, Cryptocurrency, and more. Some of the largest patent holders in the US and the world, such as IBM and Walmart have pursued and been granted patents, and are pursuing more. This panel will discuss blockchain related patents, “open source” patents, and might touch upon smart contracts and licenses for other intellectual property, such as copyrights and consumer use of content. CLE: 1.0 Hour

[13] The Show Must Go On: Entertainment Agreements in the Live Entertainment Industries

Track 2: Other

Speakers:
Mark Tratos, Greenberg Traurig, LLP
Jennifer Ko Craft, Dickinson Wright, PLLC

Entertainment law may seem glamorous and exciting and at times it is, but the moment your technology lease or IP licensing agreement is transformed into a more nuanced entertainment agreement, it may not seem all that fun anymore. If this sounds familiar, this is the presentation for you. Two of Las Vegas’ most experienced entertainment attorneys will focus on key issues that commonly arise in live performance and personal services agreements – from two- and four-wall deals to meet and greets and endorsement agreements. This program will help you issue spot and recognize potential pitfalls in live entertainment agreements.

CLE: 1.0 Hour

4:20 p.m. – 5:20 p.m. | [14] Play to Win: Professional Responsibility and Practice Before the United States Patent and Trademark Office (USPTO)

Track 1: Patent

Speaker: William Covey, United States Patent and Trademark Office

William Covey, the Deputy General Counsel for Enrollment and Discipline of the USPTO, will provide an overview of common ethical issues faced by practitioners who practice either patent law or trademark law before the USPTO, and appear before the Patent Trial and Appeals Board (PTAB) and Trademark Trial and Appeal Board (TTAB). Mr. Covey will share OED guidelines as well as best practices for developing an ethical and competent patent practice that steers clear of OED scrutiny.

CLE: 1.0 Hours Legal Ethics

6 p.m. – 8:30 p.m. | [25] Vanguard Awards Dinner

Host: Tsan Abrahamson, Cobalt Law, LLP

Separate tickets required. See registration form.

Saturday, November 16

8 a.m. – 8:50 am | [26] Networking Breakfast

Networking breakfast

9 a.m. – 10 a.m. | General Session – [15] Winning Together: A Conversation about Courageous Collaboration & Implicit Bias

Speaker: Dana Tippin Cutler, James W. Tippin & Associates

The language of inclusion is evolving. Most people don’t want to offend, but inadvertently do so. During this session, you’ll learn from an attorney (and court TV celebrity) known and honored for her outstanding leadership in promoting all aspects of diversity in her legal community. Dana will cover timely topics including micro-aggression, the #MeToo movement, and implicit bias. Dana will keep it real, keep it relevant and keep it entertaining.

CLE: 1.0 Hours Recognition and Elimination of Bias in the Legal Profession and Society

10:05 a.m. – 11:05 a.m. Concurrent Session

[16] No Limit! The Extraterritorial Reach of Patent Damages

Track 1: Patent

Speakers:
Jenny L. Colgate, Rothwell Figg Ernst & Manbeck
Andrew Michaels, University of Houston Law Center

In this panel, our speakers will discuss the practical impact of WesternGeco, examine the specific application of WesternGeco in recent cases, and explore ways in which practitioners can navigate their clients safely in increasingly global markets post-WesternGeco.

The presumption against extraterritoriality is a longstanding American principle that U.S. law applies only within the U.S. territorial jurisdiction. It plays an important role in maintaining political harmony and state sovereignty between the U.S. and foreign nations. In patent law, this presumption has been applied to exclude foreign profits flowing from domestic infringement. In 2018, the U.S. Supreme Court in WesternGeco v. ION Geophysical rejected the application of this presumption in awarding patent damages, effectively allowing patent owners to recover lost profits arising from foreign sales and strengthening the general damages principle that a patentee is entitled to full compensation regardless of where such damages occur.

CLE: 1.0 Hour

[17] Let’s Roll the Dice!: Understanding the Legalities of Loot boxes and Microtransactions

Track 2: Other

Speakers:
Sean C. Kane, Frankfurt Klein & Selz, P.C.
Chrissie Scelsi, Wargaming, Inc.

Loot boxes and microtransactions are a core element of video game monetization in the modern era.

However, as the international law on the topic becomes more expansive and complicated — particularly when coupled with the laws at home — setting up the legalities of loot boxes has become more and more difficult. Come learn the details of the law and best practices for this difficult topic.

CLE: 1.0 Hour

11:20 a.m. – 12:20 p.m. Concurrent Session

[18] Win, Lose, or Draw: Managing Patent Due Diligence and Licensing in M&A Transactions

Speakers:
Jill Hubbard, Intel Corporation
Carrie Le Roy, Gibson, Dunn, & Crutcher, LLP

Overbroad or inappropriately narrow patent licenses, as well as covenants not to sue not infrequently buried in commercial agreements, require significant attention and create risk for many M&A transactions. Questionable patent prosecution histories and chain of title issues are similarly concerning to practitioners.

Please join this experienced panel for a discussion of best practices in conducting patent due diligence in M&A transactions. Additionally, we will explore various risk mitigation techniques, including specific representations and warranties, indemnities, and closing conditions, to help ensure that the transaction will meet the needs and expectations of clients.

CLE: 1.0 Hour

[19] Avoiding the Crap Out: How IP Intersects with Employment, Estate, and Bankruptcy Laws

Track 2: Other

Speakers:
Nannina Angioni, Kaedian, LLP
Charles Kolstad, Withers Worldwide
Robyn Sokol, Brutzkus Gubner Rozansky Seror Weber, LLP

This panel will address ways to protect IP during and after the employment relationship- along with examining the Dynamex decision and how a contractor/employee relationship change may affect IP protections. Learn how to examine the winners and losers when a party holding IP or licensing IP files for bankruptcy protection.

CLE: 1.0 Hour

2:05 p.m. – 3:05 p.m. | General Session – [20] Meet Me at The Buffet: Food and Intellectual Property

Speakers:
Beatrice Martinet, Sideman Bancroft, LLP
Mark Leonard, Jelly Belly Candy Company

In the highly competitive food and beverage business companies are using IP to help distinguish their products from their competitors. This panel will discuss the increasing role of nontraditional marks and other novel protection schemes (patent, design, indication of origin, and trade secret) in the United States and European Union to protect novel features of their products and attract consumers.

CLE: 1.0 Hour

3:10 p.m. – 4:10 p.m. | General Session – [21] Competence and Mindful Lawyering

Speaker: Mark Fingerman, ADR Services, Inc.

Being skillful as a lawyer requires clarity of both intention and perception. The rigors of practice tend to reduce that clarity, with a cascading effect that adversely impacts a lawyer’s work and clients. In this course, mediator and functional mindfulness teacher Mark Fingerman will identify and discuss mental issues that impair a lawyer’s ability to practice skillfully and teach basic mindfulness practices which reduce that impairment. These simple practices develop the ability to calmly focus on what matters, to act rather than react, to have better relations, to live with less stress and to have an easier time getting better results at whatever you do.

CLE: 1.0 Hour Competence Issues

4:10 p.m. – 4:30 p.m. | Raffle and Closing Remarks

Raffle along with closing remarks

5 p.m. – 7 p.m. | [28] The Mob Museum

Essential Info

Reservation deadline: October 15, 2019

How to Register

  • Register Online Here
  • Mail the registration form to: Program Registrations, California Lawyers Association, 400 Capitol Mall, Suite 650, Sacramento, CA 95814
  • Email Program Registrations at ProgramRegistrations@CALawyers.org. In order to email your registration, credit card information is MANDATORY. (Photocopies of checks will NOT be accepted.)
  • Walk-in: Subject to available space, walk-in registration is available. Call to confirm space availability (916) 516-1757

Registration Info

The Intellectual Property Law Section welcomes all who are interested in Intellectual Property. You need not be a lawyer to attend, enjoy, and benefit from this program.

Registration includes up to 12.5 hours of CLE, course materials, breakfast and lunch on Saturday, and a ticket to our Welcome Recpetion at Top Golf Las Vegas.

The Vanguard Awards Dinner is a ticketed event. Tickets must be purchased separately. See registration form.

Registration Fees

  • IP Section Members – $795
  • Non-Members of the IP Section – $890*
  • In-House/Solo Practitioner – $595
  • Government/Academic – $395
  • Law Student or Class of 2016-2018 – $295

* includes enrollment in the Intellectual Property Law Section

Hotel Info

There is a limited block of sleeping rooms at the rate of $199 at The Wynn Hotel, 3131 Las Vegas Blvd, Las Vegas, NV 89109.

Please book your hotel room using this website: https://book.passkey.com/go/CLAIP2019.

Cancellations

All requests for refunds must be received in writing by October 15, 2019. Refunds will be issued less a $50 non-refundable service charge.

Special Assistance

Please call (916) 516-1712 for special assistance.

For Registration Information, please call Program Registrations at (916) 516-1757.

The California Lawyers Association is an approved State Bar of California MCLE provider.

This event may be recorded. By attending this event, you consent to be photographed, filmed, and/or otherwise recorded, and to any use, by the CLA of your likeness, voice, and name and any and all media including social media. If you do not want your name or pohto to be used, please let us know in advance. We cannot, however, honor requests to opt out of the use of your image or voice if you choose to ask a question duing one of the event sessions.

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