Intellectual Property Law Institute 2009 (15th Annual)

Overview

Why You Should Attend

PLI’s 15th Annual Institute on Intellectual Property Law is a “must attend” program for IP lawyers. In this two-day program you will learn about many of the most important developments in patent, trademark, copyright, and trade secret law. A highlight of the program will be a panel of in-house IP counsel from prominent companies discussing IP management in difficult economic times, and suggesting some best practices for dealing with these problems. Other plenary sessions will treat IP in the new administration, protecting content in new technologies, privacy and data protection, IP issues in standard setting, a trade secret law update, and ethics for the IP lawyer.

This year’s program will also feature four breakout sessions, each with three current topics that will focus respectively on copyrights, licensing, patents, and trademarks. Among the breakout topics will be recent business method patent cases, the ramifications of the Second Circuit’s Cablevision decision, trademark damages and valuation, and recent developments in U.S. licensing law.

What You Will Learn

• The latest updates in the law of patents, copyrights, trademarks, and trade secrets
• Current in-house thinking on the major IP issues confronting corporations
• Ethics, as applied to the practice of IP law (one full hour of ethics credit)
• Developments in licensing law, including in Europe and Asia
• Fair use of trademarks online
• Reverse engineering of software
• Inducing infringement and opinions of counsel
• Developments in copyright misuse
• The continuing impact of KSR

Who Should Attend

General practitioners, intellectual property attorneys, in-house counsel and others who need a comprehensive update on the major areas of intellectual property law. Join Institute Co-Chairs David Bender and Bob Taylor, and a faculty of distinguished intellectual property practitioners from major corporations and law firms in the United States and Europe. Don’t miss this once-a-year opportunity to learn from the best and to network with in-house and outside intellectual property lawyers from around the world. In just two days, you will become up to date on many of the important intellectual property developments, learn best practices in a variety of practice settings, hear best practices to maximize the value of intellectual property assets, and earn ethics credit too!

Special Features

Live Webcast - Simultaneous live webcast of the San Francisco session is available for individual viewing. Webcast participants will receive streaming audio and/or video of the program, view and print the Course Handbook, and have the ability to submit questions electronically.

For more information click on the Live Webcast link in the Related Items box.

Special Bonus to all Registrants

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

Please Note: Webcast attendees will receive a downloadable version of the Handbook one business day prior to the program.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount.  For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Schedule

Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival.

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00  Program Overview

Robert P. Taylor

9:15  Protecting Content in New Technologies

• Internet and online content
• Mobile technology and content distribution
• Videogames/online gaming/computerentertainment/virtual worlds
• DVR recording and the ramifications of Cablevision
• Evolution of the first-sale doctrine: what is a distribution?

Raymond T. Nimmer

10:15  Privacy, Information Security and Data Protection Developments 

• The commercial benefits of privacy in challengingeconomic times
• Privacy issues in cloud computing
• Privacy and targeted advertising
• The “red flag” identity theft rules
• The need for a global cross-border data transfer paradigm
• The cost of a data security breach

David Bender

11:15  Networking Break

11:30  Trade Secrets in a Post-Bilski World

• What information should be protected as a trade secret?
• How can it be protected? The interplay between trade secrets, non-solicitation and (sometimes, some places) non-compete agreements
• A brave new world for trade secrets?
• Recent key decisions
• Litigation advantages and pitfalls
• Remedies - alternatives to simple “don’t use or disclose” injunctions, and the rise of major damages awards

Karineh Khachatourian

12:30  Lunch

Afternoon Session:  1:45 p.m. - 5:00 p.m

1:45  Breakout Session No. 1a - COPYRIGHT

Google Print Settlement/Book Rights Registry

• How the Google Print Settlement (GPS) came into existence: its history, and the platform that the
  class action presents
• Fair Use: the decision that was averted; impact of settlement on the Fair Use Doctrine
• Innovation: ‘non-display uses’ and data mining opportunities - who benefits?
• Are public domain materials impacted by the settlement?
• If Google becomes the default place to search, browse and buy books, will Google’s ability to retain and collate this data with other data violate your privacy?
• A new “Book Rights Registry” will mediate relationships among authors, publishers, and copyright owners: what is the status of launching the BRR?

Katherine C. Spelman

Reverse Engineering

• Understanding reverse engineering 
• Contract prohibitions against reverse engineering 
• Effect on trade secrets 
• Fair use, intermediate copying and other copyright issues
• DMCA anticircumvention exception 
• Clean-room procedures

William Sloan Coats

Copyright Misuse

• History of the defense
• Ramifications of copyright misuse
• Recent developments
• Examples of copyright misuse

G. Gervaise Davis III

1:45  Breakout Session No. 1b - PATENT

How In re Bilski Is Changing the Patent Landscape for Business Method and Other Patents

• In re Bilski 101 - anatomy of the ruling
• Supreme Court review
• The potential impact of Bilski on other businesses (such as software and life sciences)
• The potential impact of Bilski on other types of patent claims (such as apparatus, system,
  and section 112(6) claims)
• How In re Bilski is being applied in the BPAI and the district courts
• The future of business method patents in the courts, the Patent Office, and the Federal Circuit

James R. Myers

Defending Charges of Culpable Infringement with Opinions of Counsel

• Review of post-Seagate and post-DSU Medical cases on willful infringement and inducement
• Role of legal opinions in defending against such claims 
• Privilege and work product issues associated with the use of opinions
• Other practice tips regarding opinions of counsel

Robert M. Galvin

The Evolution of Obviousness after KSR

• What has happened to the TSM test?
• What tests are being applied by courts after KSR?
• How has the role of secondary considerations evolved?
• How has the role of expert witnesses developed?
• What are emerging considerations for patentees?
• What are emerging considerations for challengers?

Christopher A. Mathews

3:15  Networking Break

3:30  Breakout Session No. 2a - LICENSING

Licensing in Asia

• Comparative review of selected IP laws of major countries in Asia and how differences affect specific license provisions
• Common “gotchas” in cross-border license agreements and how to avoid them
• Review of governing law, arbitration and other similar issues in the context of cross-border licensing arrangements
• Anticipating counterparty insolvency

Laurie S. Hane

Licensing in the EU 

• IP protection in the EU - state of play
• European Commission vs. Microsoft: the continuing saga
• The European Commission’s other IP priorities
• Recent case-law affecting IP licensing in Europe

George Metaxas

Licensing in the U.S. (Recent Cases)

• Arbitration clauses 
• Incorporation by reference of terms posted on a website
• Enforcing open source licenses 
• Traps for the unwary in licensing joint improvements 
• Quanta - how are companies managing the implications?
• Licensing under Bilski

Denis T. Rice

3:30  Breakout Session No. 2b - TRADEMARK

When, Where, How & Who: Anticounterfeiting Enforcement in the Wake of Ebay and the Struggling Economy

• Internet advertising and trademark issues – U.S./EU perspectives, including eBay infringement cases
• The Internet and counterfeits: ISP liability and the latest eBay cases 
• PRO-IP Act: are brands feeling the effects?
• Enforcement strategies in a struggling economy: latest trends in online enforcement strategies

Lisa Greenwald-Swire

Fair Use of Trademarks Online

• Can they do that? Is use of your mark in third party advertising a “fair use”? 
• Using trademarks to make you smile - or think? Opportunism or fair use? Reconciling Dr. Seuss with Barbie - three 9th Circuit opinions
• Nominative fair use - when can you use a mark to describe your own goods and services?
• Giving users tools to create third party trademarks - is the HULK created by a fan a liability?

Anne Hiaring Hocking

Trademark Damages and Valuation

• Current damages landscape and calculations
• Statutory provisions
• Recent cases
• Role of intent-to-infringe and actual confusion

Richard L. Kirkpatrick

5:00  Adjourn

Day Two:  9:00 a.m. - 4:15 p.m.

Morning Session:  9:00 a.m. - 12:15 p.m.

9:00  Trademark Hot Topics: Progress in Bridging the Great Divides?

• “Use in Commerce” and likely confusion on the Internet: is it still the Second Circuit vs. the rest of the country?
• Protecting famous marks that are not used in the U.S.: the Second Circuit vs. the Ninth Circuit 
• Dilution: the First Amendment vs. the trademark owner
• Trade Dress: national brands vs. private labels - The Splenda saga
• What is the proper standard for fraud on the USPTO? The Trademark Trial and Appeal Board vs. trademark applicants
• Aftermath of the Supreme Court’s Walmart decision: product packaging vs. product design

Karen Frank

10:00  Standard Setting Issues

• Where are we after the denial of certiorari in Rambus?
• The consent judgment in Negotiated Data Solutions
• The evolving solutions in Standard Setting Organizations
• Estoppel, waiver and the Federal Circuit decision in Qualcomm
• Managing the standard setting process for new technologies

Robert P. Taylor

11:00  Networking Break

11:15  IP in the New Administration

• What’s happened so far?
• What’s on the horizon and where are we headed?
• Patent reform legislation
• Green IP
• IP Czar
• PTO operations

James Pooley

12:15  Lunch

Afternoon Session: 1:30 p.m. - 4:15 p.m.

1:30  Corporate Counsel Panel: Managing IP in a Challenging Economic Environment

• Modifying your filing decisions (fewer countries? fewer inventions/trademarks?)
• Re-thinking the “whether-to-file-a-provisional” determination
• Rebalancing the in-house/outside counsel load
• Reducing software costs - negotiating lower license fees and migrating to cloud computing
• Increasing the efficiency of the IP operation
• Seizing the initiative to generate additional revenues
• Monetizing IP to raise cash
• Rethinking opinions of counsel
• How in-house counsel can pay for themselves

Brett Alten; Keith G. Askoff; Ron Laurie; Jean Liu; Seth J. Steinberg

3:00  Networking Break

3:15  IP Lawyer Ethical Issues

• Trends in IP malpractice suits
• How to avoid malpractice claims
• Best practices
• Conflicts and confidentiality issues

Jerry A. Riedinger

4:15  Adjourn

Faculty

Co-Chair(s)

David Bender, Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor, Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C.

Speaker(s)

Brett Alten, Director of Patent Development, Apple, Inc.
Keith G. Askoff, Vice President and Associate General Counsel, Varian Medical Systems, Inc.
William Sloan Coats, Kaye Scholer LLP
G. Gervaise Davis, Terra Law LLP
Karen Frank, Coblentz, Patch, Duffy & Bass LLP
Robert M. Galvin, Howrey LLP
Lisa Greenwald-Swire, Fish & Richardson, P.C.
Laurie S. Hane, Morrison & Foerster LLP
Anne Hiaring Hocking, Hiaring+Smith, LLP
Karineh Khachatourian, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Richard L. Kirkpatrick, Pillsbury Winthrop Shaw Pittman LLP
Ron Laurie, Managing Director, Inflexion Point Strategy, LLC
Jean Liu, Senior Vice President & General Counsel, DURECT Corporation
Christopher A. Mathews, Quinn Emanuel Urquhart Oliver & Hedges, LLP
George Metaxas, Oswell & Vahida
James R. Myers, Ropes & Gray LLP
Raymond T. Nimmer, Dean & Leonard H. Childs Professor of Law, University of Houston Law Center
James Pooley, Morrison & Foerster LLP
Denis T. Rice, Howard Rice Nemerovski Canady Falk & Rabkin, P.C.
Jerry A. Riedinger, Perkins Coie LLP
Katherine C. Spelman, Cobalt LLP
Seth J. Steinberg, Principal, D i g i t a l A r t s L a w

Program Attorney(s)

Tamara C. Kiwi, Program Attorney, Practising Law Institute

CLE Credit

Travel Information

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.

San Francisco Hotel Accommodations

The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.

Due to high demand we recommend reserving hotel rooms as early as possible.