March 11, 2013


Full Brochure


I. When Should Patent Owners Be Required to Reduce the Number of Asserted Claims and Select Claims for Trial?

One of the most fervently contested issues in patent litigation today is the timing and process for reducing the number of claims asserted in cases where patent owners initially assert a large number of patent claims. In this program, an experienced panel of IP practitioners will review and explore recent district court decisions on narrowing asserted claims, discuss the trends, and provide recommendations for successfully addressing claim limitation.

Orion Armon, Cooley LLP, Broomfield, CO

Hon. Mary L. Cooper, US District Court for the District of New Jersey, Trenton, NJ

Laurie Gallun Fitzgerald, McKool Smith, Austin, TX

Sean S. Pak, Quinn Emanuel, San Francisco, CA

II. Copyright Infringement in Patent Prosecution: Might Your Firm Be the Next Litigation Target?

Four patent prosecution firms were sued in 2012 for copyright infringement by two STM publishers, who alleged that the copies of journal articles made and submitted as a part of each firm’s information disclosure obligation infringed the copyrights of the STM publishers. Are these cases outliers, or is this the beginning of a new trend? In this program, a panel representing the perspectives of patent prosecution firms, the STM publishers, their licensing agent for the Copyright Clearance Center, and the US Patent and Trademark Office will examine the issues and offer insight on the arguments, the business forces driving these cases, and risk management strategies for law firms that may be future targets.

Stephen Gillen, Wood, Herron & Evans LLP, Cincinnati, OH

Allan Adler, Association of American Publishers, Washington, DC

Dale Cendali, Kirkland & Ellis, New York, NY

Fred Haber, Copyright Clearance Center, Danvers, MA

Robert L. Stoll, Drinker Biddle & Reath LLP, Washington, DC

III. Right of Publicity for Entertainers and Athletes
Sponsored by the ABA Forum on the Entertainment & Sports Industries

One of the more valuable assets a celebrity or athlete may possess is his or her identity or persona. How does one protect the use of his or her persona from wrongful appropriation? What limits apply to that protection?  In this program, panelists will provide an overview of the right of publicity laws as it applies to entertainers and athletes. Recent cases will be reviewed, including cases specific to uses of music performances and musician images in games, actor images in advertising and merchandise, and professional and amateur athletes in games, etc., while also addressing special issues for user-generated content, the Internet, and social media.

Cydney A. Tune, Pillsbury Winthrop Shaw Pittman LLP, San Francisco, CA

Ronald S. Katz, Manatt, Palo Alto, CA

Ahmad Nassar, NFL Players Association

Kelli Sager, Davis Wright Tremaine LLP, Los Angeles, CA

Ben Sheffner, Motion Picture Association of America


I. Patent Examiner Interviewing: Strategies and Skills

Encouraging interviews is a priority for the US Patent and Trademark Office to quickly resolve prosecution and address backlog.  In this program, both examiners and patent attorneys will conduct mock interviews, while sharing valuable insight and advice on conducting these proceedings.  In addition, the panel will explore applicant benefits and provide an analysis of interview outcomes. Discussion during the interviews will review pilot and mechanics of the First Action Interview (FAI). Practical advice to leverage oral advocacy and quickly achieve allowance, while reducing prosecution history and expense will be acquired by attending this program. A patent office representative will demonstrate their new video conferencing equiptment in a live mock interview.

MaCharri Vorndran- Jones, Eli Lilly and Company, Indianapolis, IN

Speakers:                                                                                    Timothy Callahan, US Patent and Trademark Office, Alexandria, VA

Thomas D. Franklin, Kilpatrick Townsend & Stockton, LLP, Denver, CO

Arrienne “Angel” Lezak, Kilpatrick Townsend & Stockton, LLP and Former Patent Examiner, Menlo Park, CA

II. When a Personal Touch Matters: Prosecuting Trademark Applications

Discussing a difficult trademark prosecution issue with the Examining Attorney can sometimes be more effective than a written response to an Office Action. Managing/Senior Attorneys from the US Patent and Trademark Office and experienced trademark practitioners will discuss and demonstrate the effective use of telephone interviews in the prosecution of trademark applications.

Patricia S. Smart, Smart & Bostjancich, Chicago, IL

Chris Doninger, US Patent and Trademark Office, Alexandria, VA

Kathleen Cooney-Porter, Oblon, Spivak, McClelland, Maier, Neustadt, LLP, Alexandria, VA

Myriah Habeeb, US Patent and Trademark Office, Alexandria, VA

Mariam Mahmoudi,  US Patent and Trademark Office, Alexandria, VA

Francine D. Ward, Law Office of Francine Denise Ward, Mill Valley, CA


III. The International Institute for Conflict Prevention and Resolution: "Effective Practices Protocol" for Patent Mediation

The International Institute for Conflict Prevention and Resolution (CPR) formed a task force to explore ways to improve the use of mediation in patent cases. The task force received comments from stakeholders that included in-house and outside counsel, mediators, former judges and NPE representatives.  The task force has synthesized this information to develop an “Effective Practices Protocol”.  In this program, attendees will learn to identify and overcome barriers to mediation in patent disputes, resulting in more successful mediations, more satisfied clients, and more savings of time and money for clients.

Harrie Samaras, ADR & Law Office of Harrie Samaras, West Chester, PA

Kathy Bryan, International Institute for Conflict Prevention and Resolution, New York, NY

Kevin Casey, Stradley, Ronon, Stevens & Young, LLP, Malvern, PA

John M. Delehanty, Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C., New York, NY

Manny W. Schecter, IBM Corporation, Armonk, NY


I. The Expanding Madrid System: A Practical and Comparative Evaluation

In recent years, jurisdictions within the Madrid System continue to increase. Just days after Colombia, the Mexican Senate also approved the treaty. Brazil and Argentina are working towards joining and the member countries of the Association of Southeast Asian Nations (ASEAN) are required to accede by 2015. In this program, IP practitioners with first-hand experience of the Madrid System will discuss the effects it has on practice, prosecution issues and costs, and combining the perspectives of counsel in countries where the Madrid System has already been adopted with those of counsel in the new countries.

Matthew D. Asbell, Ladas & Parry LLP, New York, NY

Victor Adames, Becerril, Coca & Becerril, S.C., Mexico

Danny Chen, Unitalen Attorneys at Law, Beijing, China

Alicia Lloreda, Lloreda Camacho & Co, Bogotá, Colombia

Dennis S. Prahl, Ladas & Parry LLP, New York, NY

II. China in the 21st Century: New Laws Proposed on Copyright, Patent and Competition

China has recently accelerated efforts to revise copyright, patent, competition laws, and judicial guidelines interpreting digital use to comply with international treaties and global trade. In this program, panelists will share their first-hand practical experience in protecting rights in China, and positioning multinational, corporate and individual clients for internet and traditional trade and branding, culture, media, entertainment and more. Learn how these new proposals may impact your practice, how China fits into the international IP puzzle, and how to navigate your clients’ interests in China during the transitory period.

Alexandra Darraby, The Art Law Firm, Los Angeles, CA

Elaine Wu, US Patent and Trademark Office, Alexandria, VA

Elizabeth Chien-Hale, Eaton Corporation, Beijing, China

Fred Koenig, Volpe and Koenig, Philadelphia PA

Kate Spelman, Cobalt Law, Berkeley, CA

III. Fraud on the US Patent and Trademark Office: Has the Plague of Inequitable Conduct Been Eradicated?

The habit of charging inequitable conduct in almost every major patent case has been characterized by the Court of Appeals for the Federal Circuit as an “absolute plague”. Has it been eradicated? In this program, discussion will focus on the implications of Exergen, Therasense and related cases, the new procedures for supplemental examination implemented in response to the passage of the America Invents Act, and the pending rule changes for supplemental examination and the revisions to the rule of candor when dealing with the US Patent and Trademark Office. Close attention will be paid to the ethical standards that now apply during prosecution and supplemental examination before the US Patent and Trademark Office. Panelists will provide various perspectives on the current state of the law and provide guidance to litigators and prosecutors on how to handle these issues in both litigation and prosecution.

Nicole Galli, Benesch, Friedlander, Coplan & Aronoff, LLP, Philadelphia, PA

Lisa Dolak, Syracuse University, Syracuse, NY

Janet Hendrickson, Senniger Powers LLP, St. Louis, MO

Konrad Sherinian, The Law Offices of Konrad Sherinian, LLC, Naperville, IL


I. Aggrandizing “Petty Innovation”: The Growing Use of Utility Models

Utility models grant rights similar to a patent. However, utility models have a shorter term of exclusivity and lowered requirements for grant, often not even requiring substantive examination. Yet, utility model owners can enforce these rights against alleged infringers. This program will provide an overview of utility models, where available, subject matter which may be covered, requirements for grant, and the rights conferred. Discussion will also focus on how utility models are being used and misused in enforcement, and reviewing the case of Chint v. Schneider in China, in which the court awarded 330 million RMB damages (over 5 million USD) for utility model infringement.

Paula K. Davis, Eli Lilly and Company, Indianapolis, IN

Frank M. Peterreins, Fish & Richardson P.C., Munich, Germany

Uma Suthersanen, Queen Mary University of London School of Law, London, United Kingdom

Stephen Yang, Peksung Intellectual Property Ltd., Beijing, China

II. The Future of Copyright and Fair Use

“Fair Use” can be a powerful tool in maintaining the balance between private rights and the public interest. The application of “fair use” principles continues to be fraught with confusion and uncertainty.  In this program, a panel of academic, administrative, legislative, and judicial experts, will discuss current controversies in fair use doctrine and the various efforts (legislative and otherwise) to solve fair use problems going forward. Attendees will gain a greater understanding of basic “fair use” principles through the panel’s discussion focusing on a critique of “best practices in fair use”, consideration of proposed and potential legislative and administrative changes, and an analysis of the application of “fair use” principles to the problem of orphan works.

Jennifer Rothman, Loyola Law School, Loyola Marymount University, Los Angeles, CA

III. From the Inside Looking Out: An In-House Counsel Perspective on US International Trade Commission Investigations

The number of Section 337 investigations conducted by the US International Trade Commission continues to grow. Today, companies are dedicating more resources and in-house counsel personnel to managing these investigations.  In this program, a panel of both in-house counsel, ranging from junior associate to partner level, and outside counsel will share their insight on the growing number of Section 337 Investigations. Panelists will discuss and explore current trends, practices, issues and preferences, providing various perspectives and advice on managing investigations.

Monisha Deka, US International Trade Commission, Office of Unfair Import Investigations, Washington DC

Karin J. Norton, Samsung Electronics, Washington, DC

Kimberly R. Parke, Dickstein Shapiro LLP, Washington, DC

John Thorne, Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C., Washington, D.C.

Vaishali Udupa, Hewlett-Packard, Herndon, VA

Wednesday, April 3
International Networking Luncheon
12:00p – 1:00p
Bonjour, Guten Tag, Ciào, Hola, Li-ho… Begin the conference by saying “Hello” in your language during this newly added networking event for promoting International IP relationships. Both national and international attendees will have the opportunity to discuss the latest IP global issues and challenges. Various international cuisines will be served. Take the opportunity to meet overseas colleagues, share experiences and explore the potential for practicing International IP law.

Thursday, April 4
Keynote Luncheon:
12:00p – 1:30p
Steven W. Miller
Vice President
General Counsel
The Procter & Gamble Co.

Friday, April 5
Keynote Luncheon:
12:00p – 1:30p
Richard L. Rainey
Executive Counsel
IP Litigation
General Electric Company

(Tickets are required for the Thursday and Friday Luncheons)

“Apps and Omelets”

Thursday, April 4
7:00am – 8:00am

(Ticketed Event)                                         The world of apps can be overwhelming.  Finding the best apps for effectively managing your practice and even your life can be difficult, since there are so many apps in the marketplace.  The “Apps and Omelets” breakfast will provide an opportunity for IP professionals to share and learn of each other’s favorite apps for tablets and smartphones.  In just one hour, attendees will learn what their colleagues consider to be the most popular and effective apps for business as well as for their busy lifestyles.

Opportunities for Publishing with the
ABA-IPL Section:

Thursday, April 4
5:00pm – 6:00pm

Immediately following the day’s programming there will be a reception hosted by members of the Section’s Books Editorial Board to highlight publishing opportunities with ABA-IPL—featuring the Section’s new authors and book titles. All conference attendees are invited to participate!

Thursday, April 4
6:30pm – 9:30pm

(Ticketed Event)

Ronald Regan Building and International Trade Center
1300 Pennsylvania Avenue NW, Washington, DC
Pavilion Room

Experience a location that is “reflective of the symbolic importance of the historic character of Pennsylvania Avenue and the nation’s capital” and “represents the dignity of the Federal Government”.  Conference attendees and their guests are invited to enjoy cocktails and hors d’oeuvres in the infamous Pavilion Room.  Transportation will be provided.