2009 aipla mid-winter institute bulletin

BULLETINAmerican Intellectual Proper ty Law A ssociation

2009 Mid-Winter Institute IssueWashington, DC

www.mirandah.com

in this issue.. .

Published from the Association Office

AIPLA241 18th Street South, Suite 700Arlington, VA 22202(p) 703.415.0780(f) 703.415.0786Web: www.aipla.org

Domestic Subscription Rate: $60.00 per yearForeign Subscription Rate:$70.00($20.00 per copy)

President’s Page ...................................................................................................................................................32009 Robert C. Watson Competition Information ...................................................................................................7

Association Activities .........................................................................................................................................9Membership Applications........................................................................................................................................92009 AIPLA Board of Directors’ Meetings ............................................................................................................19News of Members ................................................................................................................................................20Future Meetings Calendar ....................................................................................................................................22C.L.E Update .......................................................................................................................................................24Classified Ads ................................................................................................................................................ 26Copyright Office Affairs .........................................................................................................................................28Classified Ads ......................................................................................................................................................30Thank You to Sponsors ........................................................................................................................................32

2009 Mid-Winter Institute ...................................................................................................................................34Photo Pages .........................................................................................................................................................34

Committee Reports:Anti-Counterfeiting & Anti-Piracy ..........................................................................................................................45Trademark Law .....................................................................................................................................................45Trademark Litigation .............................................................................................................................................46Trademark-Relations with the USPTO .................................................................................................................47Trademark Treaties and International Law ...........................................................................................................47Trademark Internet ...............................................................................................................................................47Amicus ..................................................................................................................................................................48Mentoring..............................................................................................................................................................51Education..............................................................................................................................................................52IP Law Associations ..............................................................................................................................................53Membership ..........................................................................................................................................................54Online Programs...................................................................................................................................................54IP Practice in Europe ............................................................................................................................................57IP Practice in Japan ..............................................................................................................................................58IP Practice in Latin America ..................................................................................................................................59International Education .........................................................................................................................................59International and Foreign Law ..............................................................................................................................60Chemical Practice........................................................................................................................................... 60Patent Cooperation Treaty Issues ........................................................................................................................61Corporate Practice................................................................................................................................................61Copyright Law.......................................................................................................................................................61Women in IP Law ........................................................................................................................................... 62Diversity in IP Law ................................................................................................................................................63Electronic & Computer Law ............................................................................................................................ 64Emerging Technologies .................................................................................................................................. 65Patent Agents ................................................................................................................................................. 66Patent-Relations with the USPTO .................................................................................................................. 67Young Lawyers ............................................................................................................................................... 67Law Students .................................................................................................................................................. 68Alternative Dispute Resolution ....................................................................................................................... 69Biotechnology ................................................................................................................................................. 69Patent Law...................................................................................................................................................... 71Interference .................................................................................................................................................... 71Professional Programs ................................................................................................................................... 73Law Practice Management ............................................................................................................................. 74Licensing & Management of IP Assets ........................................................................................................... 74Patent Litigation .............................................................................................................................................. 77Public Education ............................................................................................................................................. 78International Trade Commission ..................................................................................................................... 80Special Committee on the FDA ...................................................................................................................... 81Special Committee on Legislation .................................................................................................................. 81

Classified Ads ......................................................................................................................................................82AIPLA Career Center Flyer ...................................................................................................................................84Display Ads ..................................................................................................................................................... 85AIPLA Corporate Patent Treaty Seminar Flyer ............................................................................................... 96

AIPLA

http://www.aipla.org

Teresa sTanek rea .................................................................................................................................................... President1001 Pennsylvania Avenue NW, Washington, DC 20004

alan J. kasper ..................................................................................................................................................President-Elect2100 Pennsylvania Avenue NW, Washington, DC 20037

DaviD W. Hill ........................................................................................................................................... First Vice-President11955 Freedom Dr., Two Freedom Square, Reston, VA 20190-5675

William G. BarBer ...............................................................................................................................Second Vice-President600 Congress Avenue, Suite 2120, Austin, TX 78701

James pooley ....................................................................................................................................Immediate Past President755 Page Mill Road, Palo Alto, CA 94304

JonaTHan W. ricHarDs ............................................................................................................................................... Secretary1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111

kenneTH n. niGon ......................................................................................................................................................TreasurerP.O. Box 980, Valley Forge, PA 19482

Q. ToDD Dickinson ......................................................................................................................................Executive Director241 18th Street, South, Suite 700, Arlington, VA 22202

Board of Directors(Terms Expire October 2009)

GorDon T. arnolD ................................................................................2401 Fountain View, Suite 630, Houston, TX 77057 JosepH s. cianfrani ......................................................................................2040 Main Street, 14th Floor, Irvine, CA 92614 JoHn T. JoHnson ........................................ 153 East 53rd Street, CitiGroup Center, 52nd Floor, New York, NY 10022-4611 DaviD J. kappos ............................................................................................................ North Castle Dr., Armonk, NY 10504

(Terms Expire October 2010)

pamela a. crocker .................................................................................................... 343 State Street, Rochester, NY 14650Denise Defranco ........................................................................ 55 Cambridge Parkway, Suite 700, Cambridge, MA 02142amy e. HamilTon ......................................................................... Lilly Corporate Center, Drop Code 1104, Indianapolis, INanTHony m. Zupcic .....................................................................................30 Rockefeller Plaza, New York, NY 10112-380

(Terms Expire October 2011)

roBerT W. clariDa ......................................................................1133 Avenue of the Americas, New York, NY 10036-6799kimBerly s. JorDaHl ............................................................................. Post Office Box 59, Marine on St. Croix, MN 55047naomi aBe voeGTli ............................................................................................3410 Hillview Avenue, Palo Alto, CA 94304mark l. WHiTaker ......................................................................... 1299 Pennsylvania Avenue, NW, Washington, DC 20004

BULLETIN

OFFICERS 2008 – 2009

2 aipla bulletin 2009 mid-winter institute issue

president’spageby: Teresa Stanek Rea, AIPLA President

My second report to you as AIPLA President requires a different tone than the first. The serious tailspin of the economy has all of us feeling apprehensive and cautious, but it has

also opened our eyes and stirred a determination to bring our affairs under control. While AIPLA is not unaffected, I can assure you that the Association is on firm ground and that its extraordinary education and advocacy efforts continue.

ADVOCACYPatent Reform: Last year at this time, we thought there was a chance that patent reform would get to the Senate floor following House passage, but we were disappointed. Our focus now is on the new compromise version of the patent reform legislation approved by the Senate Judiciary Committee. While the final outcome remains uncertain until the the bill clears the whole Senate and the whole House, we are pleased with the version that has emerged from the Committee. In addition to retaining essential provisions on first-inventor-to-file, willful infringement, and third-party submission of prior art, the compromise bill’s resolution of the extremely controversial issues of damages, post-grant review, and venue is very close to longstanding AIPLA positions on those matters. Our efforts in support of a pilot program to encourage the assignment of patent cases to experienced district court judges bore fruit in March 2009 with the House passage of H.R. 628. This important bill has received favorable reviews and is incorporated into the general patent reform legislation approved by the Senate Judiciary Committee.

Unfortunately, the patent reform bill approved by the Senate Judiciary Committee still lacks a provision that ensures reliable and adequate funding of the U.S. Patent and Trademark Office. On the other hand, it was a positive sign that Congress once again enacted an annual USPTO appropriations bill which gives the agency to complete access to its fee revenue for the fiscal year. We continue to work for a permanent anti-diversion provision that will bring stability and predictability to USPTO management by allowing it to rely on funding for more than one year at a time.

As for the executive branch, we had the opportunity at the beginning of the year to meet with members of the Obama transition team and to convey our desire to serve as a partner in making improvements to all aspects of intellectual property law. In that spirit, we followed up with a letter to President Obama, expressing those same sentiments and outlining our views on leadership and funding at the USPTO, the continuation and claiming practice rulemaking, patent reform, and judicial salaries and appointments.

In the Courts: AIPLA’s advocacy in the judiciary remains unabated. The most recent development was the Federal Circuit’s decision in Tafas v. Dudas. The Association has been advocating on behalf

2009 mid-winter institute issue aipla bulletin 3

of its members in this case since the district court filing. We resisted the USPTO’s rulemaking on claiming and continuation practice from the beginning, primarily focusing on the unfairness of the retroactive application of those rules. The Federal Circuit agreed with us and found the continuation rules inconsistent with the Patent Act, but did, however, decline to find the claiming rules beyond the agency’s statutory authority to regulate proceedings in the Office. Significantly, the case has been remanded on certain undecided issues, including retroactivity; whether Supreme Court review is sought remains to be seen.

In addition to our involvement in the Tafas case, we joined the Supreme Court challenge to the en banc Federal Circuit’s “machine or transformation” requirement in Bilski for determining patent eligibility for method claims; we filed in Cardiac Pacemakers Inc., to argue to a Federal Circuit panel (now before the en banc court) that 35 U.S.C. §271(f) does not apply to process claims; and in Prometheus Laboratories, Inc., we argued to a Federal Circuit panel that the district court improperly found a claimed method for treating Crohn’s disease failed to satisfy 35 U.S.C. §101 for patent eligibility. With all of this, there still remains on the committee’s plate cases involving collateral estoppel and claim construction, copyright registration and settlements, with the issues of damages and inequitable conduct waiting in the wings. AIPLA has ramped up its advocacy in the courts and we thank the Amicus Committee for rising to the challenge.

At the Federal Trade Commission: On another recent occasion, I represented AIPLA at an FTC hearing entitled “The Evolving IP Marketplace,” which considered the extent to which the patent system adequately fulfills its notice function. The focus of the hearing was on whether various patent law doctrines give competing firms working with innovative technologies clear and reliable information on the existence and scope of patent rights that could cover those technologies.

At the USPTO: As part of the search for improved patenting procedures, the USPTO held a roundtable discussion of deferred examination, and Executive Director Q. Todd Dickinson attended to our position that, while we have opposed deferred examination in the past, we are open to reconsider the matter, particularly if certain concerns were addressed. The discussion revealed the potential benefits of such a process for the PTO, but also highlighted the uncertainties that would result for competitors trying to decide how to commercialize under a cloud of unexamined patent applications.

At the Copyright Office: Finally, AIPLA last February offered comments to the Copyright Office on the occasion of its triennial report on the exemptions available for copyright users adversely affected by the anti-circumvention provisions of the Digital Millennium Copyright Act. The comments acknowledged the need for some exemptions and questioned the need for others, generally advocating a narrow application of statutory provisions to the classes of copyrighted works.

INTERNATIONAL ACTIVITIESAIPLA continues to be a player on the international stage as well. With efforts spearheaded by the Antitrust Committee, AIPLA in January 2009 submitted comments to the European Commission on its

president’spage(continued)


Preliminary Report on competition in the pharmaceutical industry. In March of 2009, we endorsed a WIPO Standing Committee on Patents undertaking to study the question of privilege for professional intellectual property advice. More generally, I represented AIPLA in Geneva at a recent WIPO meeting on the Patent Cooperation Treaty.

In addition, we have maintained our strong relationship with sister organizations in Japan and Australia at recent meetings with the Japanese Patent Office, the Japanese Intellectual Property Association, the Japanese Trademark Association, the Japanese Patent Attorneys Association, and the Institute of Patent and Trademark Attorneys of Australia. These activities reaffirmed my conviction that AIPLA remains an important player on the international stage of intellectual property law.

COMMITTEE ACTIONSpecial Committees: I recently formed, under the talented leadership of Sharon Israel and Rick Nydegger, a Special Committee on Legislation. The value of that group became quickly apparent, and AIPLA’s participation in the patent reform process has greatly benefited from their assistance. The availability of a cadre of experienced practitioners to provide guidance on the many substantive issues raised in this process is essential to maintaining AIPLA’s reputation for providing thoughtful and objective comments on the questions of the day.

The newly created Special Committee on the FDA also was quickly put to work, preparing draft comments for the Board to submit on the Food and Drug Administration’s implementation of certain provisions of the Q1 Program Supplemental Funding Act. This Act concerns old antibiotics and addresses which sponsors of new drug applications (NDAs) must submit patent information under the Q1 Act, and the comments addressed questions on the applicability of particular provisions of the Hatch-Waxman Act. This type of specialized focus on matters of intense importance to large industries is precisely the role envisioned for this special committee.

More recently, the ever expanding scope of IP concerns has given rise to the new Special Committee on Standards and Open Source, co-chaired by Michele Herman and Doug Luftman. This committee will track and untangle the complex issues arising out of the IP sharing and collaboration that are inherent in the development of standards and open source software.

Education and Networking: Committee activites continue to be a source of valuable education and networking. This is particularly evident from the prolific output of the Antitrust Committee in its “Antitrust News” and the many postings on its committee page of the AIPLA web site. It is also evident from the repeat success of the multi-city dinner event in February, sponsored by the Women in IP Committee. Once again the Women in IP Committee produced an event, held in 25 cities across the nation, that provided female intellectual property law attorneys with an opportunity to meet with other women for an evening of mentoring, networking, and education.

2009 Report of the Economic Survey: The data collection for the 2009 Survey Report is complete and we will be bringing you the survey in the coming months. This ever-popular work, prepared under the direction of the Law Practice Management Committee, continues to be cited regularly in the news media and relied upon in private and official documents.

EDUCATIONIn-person Programs: The 2009 Mid-Winter Institute was a great success. The program topics covered the unprecedented challenges of the global economic downturn, the increased challenges of IP procurement and enforcement, and barriers to entry in foreign markets. The educational sessions


offered insights of outside counsel experts from around the world and invaluable advice from in-house corporate counsel. In addition to the comprehensive educational tracks, the occasion featured outstanding committee sessions and valuable networking opportunities.

In May, we will host the Spring Meeting at the Hotel del Coronado in San Diego. The program includes best practices tips for patent litigation, for practicing IP law in the new economy, and for avoiding pitfalls in prosecution and litigation. We are also looking forward to luncheon presentations from District Judge Marilyn Huff and Donald J. Rosenberg of Qualcomm, Inc. In addition, Chief Judge Paul Michel will join a panel to talk about claim construction and damages apportionment.

AIPLA again joined with IPO and the ABA-IPL Section to sponsor Design Day on April 6 at the USPTO, and we will sponsor the first Trademark Bootcamp on June 17, 2009. In addition, we will continue offering our successful Legal Secretaries and Administrator’s conference in June and November, as well as the PCT Seminar in July and the Patent Prosecution Bootcamp in August.

Internet Programs: AIPLA continues to bring you the highest quality CLE available online. Since the beginning of 2009 we’ve produced four live online CLE programs, including a presentation from the USPTO’s Director of Enforcement and Discipline on practicing before the USPTO in today’s market. The expectation is that we will offer at least one live webinar per month throughout 2009.

To expand members services and provide career and practice management guidance to our members, we have also launched an e-learning series. We conducted two programs so far this year, and plan to continue offering these free programs throughout 2009. More than 500 members have taken advantage of these programs, and we hope to serve even more.

Web Streaming: Finally, after a successful pilot program at the 2009 Mid-Winter Institute, we are proud to announce that we will incorporate live web streaming of our stated meetings. Go to www.legalspan.com/aipla/webcasts.asp for more information subscribing to the 2009 Spring Meeting webcast.

The range of activities just reviewed is both daunting and inspiring, especially in the current economic climate. It again reaffirms my belief that AIPLA has no equal, even in difficult times, and that we can all take pride in our contribution to quality of IP legal practice and to the dependability of this organization.

president’spage(continued)


http://www.legalspan

AIPLA Presents:

2009Robert C. Watson Competition

To be eligible for consideration, the article must have

been written solely by a student or students either in

full-time attendance at a law school (day or evening)

or prepared in connection with a law school course.

The article must be submitted to the American

Intellectual Property Law Association on or before

June 30, 2009. Papers should be approximately

the equivalent of 10 law review pages, including

footnotes (30–40 pages typed copy). Submission

of 20 copies is required. Submission must include

the submitter’s name, current address, current

telephone number, and employment information, if

applicable.

Judges will consider the merit of the article as a

contribution to the knowledge respecting intellectual

property and the extent to which it displays original

and creative thought or information not previously

written or published by the author prior to July 1,

2008.

Reasonable expenses will be reimbursed to the

author of the winning paper to travel to Washington,

DC to receive the Watson Award on October 16,

2009. Submit articles to:

American Intellectual Property Law AssociationWatson Award Competition

241 18th Street, South, Suite 700Arlington, Virginia 22202

Telephone: (703) 415-0780

Award: $2000 Submission Deadline: June 30, 2009 Award will be presented Friday, October 16, 2009 during the AIPLA Luncheon in Washington, DC.

Author of best article on a subject relating to the protection of intellectual property written or published between July 1, 2008 and June 30, 2009.

For More Information, Visit www.aipla.org2009 mid-winter institute issue aipla bulletin 7


CPI_Ad_Design_BW.indd 1 1/23/09 3:12:32 PM8 aipla bulletin 2009 mid-winter institute issue

computerpackages.com

www.computerpackages.com

association activities

MembershipThe following applications for membership are being published in accordance with Article II of the By-Laws. We welcome all of our new members.

REGULAR

Robert Anthony Ambrose Duluth, GA Bryan Anderson San Francisco, CA Brian C. Anscomb New York, NY Ahab Ayoub San Antonio, TX Stephen L. Baker Raritan, NJ Gary Oliver Bennett New York, NY Karen Berry New York, NY Patrick Bible Portland, OR Joseph Bird, III Birmingham, AL George Blosser St. Louis, MO Kenneth Burraston Salt Lake City, UT Ryan C. Cady Washington, DC

Donald M. Carley Bloomington, IL Catherine A. Cavella Doylestown, PA Crystal Jui-Yuan Chen Taipei, TAIWAN Robert D. Chesler Roseland, NJ Steve Yong-Soo Cho Mukilteo, WA Paul Clark Wellesley, MA Crystina Coats San Diego, CA J.P. Cody Las Vegas, NV Benjamin Cotton Phoenix, AZ Katheryn E. Cox Davenport, IA Andrea L. D’Ambra Philadelphia, PA Jason T. Daniel Alexandria, VA Jason W. Deats Austin, TX

James DeCamp Boston, MA Mary Catherine DiNunzio New York, NY

Gerald Paul Dodson Menlo Park, CA W. Charles Ehlers Cincinnati, OH Kimberly Elkjer Dallas, TX Brian Erickson Austin, TX Grant Fairbairn Minneapolis, MN Russell Farr Phoenix, AZ Ian Feinberg Palo Alto, CA John Kenneth Felter Boston, MA Karl Fink Chicago, IL Clifford E. Ford Carlsbad, CA Jeremy S. Forest Palo Alto, CA

Michelle Freeman Irving, TX Gregory Glover Washington, DC Sandra L. Godsey San Jose, CA Michael D. Goggans Meridian, MS Francie Gorowitz Los Angeles, CA Michael E. Hall Fairfax, VA Laura A. Handley Austin, TX Stephen Hankins San Francisco, CA Salim A. Hasan Chicago, IL Averie Hason Branchburg, NJ E. Rico Hernandez McLean, VA Donald Hill, Jr. Charlotte, NC Steven Hirsch San Francisco, CA


Robert Horowitz New York, NY Geoffrey M. Howard San Francisco, CA Monika J. Hussell Charleston, WV William A. Jeckle Spokane, WA

Reem F. Jishi Madison, NJ Jason W. Johnston Greenville, SC Karen Kaiser Bridgewater, NJ Andrew B. Karp Chicago, IL Kurt Karst Washington, DC Michael O. Kassak Cherry Hill, NJ John Kinton San Diego, CA Eric D. Kirsch New York, NY Louis Knobbe Santa Ana, CA Alexander Koff Baltimore, MD Brian D. Ledahl Los Angeles, CA Karen Leisten Princeton, NJ William Lenz Chicago, IL Douglas C. Limbach San Mateo, CA

Geoffrey Lin Shanghai, CHINA Valerie E. Looper Columbia, MD Paul R. Lucchese Sudbury, MA Edward Marshall Austin, TX Mary B. Matterer Wilmington, DE Julie Matthews Chicago, IL

Kathleen Milsark Philadelphia, PA Erin C. Ming San Jose, CA David G. Moore Denton, TX Alan Nemes St. Louis, MO Edward F. O’Connor Irvine, CA Patrick O’Connor Miami, FL Gilad Ohana Sunnyvale, CA Maria Luisa Palmese New York, NY John P. Passarelli Omaha, NE David M. Perry Philadelphia, PA

Andy Pho Santa Clara, CA James A. Pinto Denver, CO

Susan Pitchford Portland, OR Blaire Postman Alexandria, VA Elizabeth E. Powers Los Gatos, CA Lisa Primerano Buffalo, NY Mohammad Sharique Rahman Columbia, MD Gajan Retnasaba Irving, TX Kara Ries Shoreview, MN Edward Robinson Fallbrook, CA

Peter Roeser Chicago, IL Carol Romej Bloomfield Hills, MI Joseph Dominic Rossi Malvern, PA Giovanni Ruscitti Boulder, CO Paul F. Rusyn Bellevue, WA Kenneth A. Seaman Charlotte, NC Daniel H. Shulman Lake Forest, IL Brian D. Siff New York, NY Matthew Smith Washington, DC

Steven Stern New York, NY Michael A. Tomasulo Los Angeles, CA Mark Treitel Los Angeles, CA Mauricio A. Uribe Seattle, WA Thomas E. Vanderbloemen Greenville, SC Alberta A. Vitale Madison, CT Mialeeka C. Williams-Bibbs Atlanta, GA Ashley D. Wilson Duncan, SC Richard Woldin Philadelphia, PA Brendan G. Woodard New York, NY Johnathan Wynn Arlington Heights, IL

ACADEMIC MEMBERS

Paul D. Callister Kansas City, MO Martin Ogbede-Nwachukwu Kent, WA Andrew A. Schwartz Boulder, CO Brenda Simon Stanford, CA

FOREIGN

Ritika Ahuja New Delhi, INDIA


Katherine Cameron London, UNITED KINGDOM Rahul Chaudhry Gurgaon, INDIA Armand Ciamala-Kanyinda Kinshasa/Gombe, CONGO Simon Cooper Nottingham, UNITED KINGDOM Andrew Docherty Glasgow, SCOTLAND Anna Duffus London, UNITED KINGDOM Per Ericsson Loddekopinge, SWEDEN Richard Howson London, UNITED KINGDOM Björn Joachim Hamburg, GERMANY Andras Kupecz Amsterdam, NETHERLANDS

Peter Lewis Vancouver, BC, CANADA Nitin Masilamani Dew Delhi, INDIA Patrick Mirandah Klongtoey, Klongtoey, Bangkok, THAILAND Dev Robinson New Delhi, INDIA RIkard Roos Helsingborg, SWEDEN Yoshimi Saigoh Tokyo, JAPAN Michael Schneider Munich, GERMANY

Eduardo Silva Arlington, VA Mikael Sollerhed Lund, SWEDEN Andrea Tobos Mateus Bogata, COLOMBIA Criton Tornaritis Nicosia, CYPRUS Kimberlee Weatherall St Lucia, Queensland, AUSTRALIA Robin Zhao Beijing, CHINA

GOVERNMENT

Randy P. Boyer Alexandria, VA Bradley Garris Arlington, VA Christopher R. Nalevanko Washington, DC Michael Norris McAllen, TX

Lynda Oswald Ann Arbor, MI

Kevin M. Rosenbaum Alexandria, VA Maria Sekul Alexandria, VA

JUNIOR

Lisa Adelson Washington, DC Christopher David Agnew Boston, MA Ryan Alley Reston, VA

David Almeling San Francisco, CA Richard T. Armstrong Boston, MA Isaac S. Ashkenazi New York, NY Lawrence Baratta Charlotte, NC Tenley I. Beals Providence, RI Jason Benedict Troy, MI Erin Bowles Southfield, MI Edward L. Brant Philadelphia, PA James Burns, III Cary, NC Nathan Calvert Austin, TX Jonathan D. Carpenter Minneapolis, MN David Hiu-Fung Chan Irvine, CA

Dean Cheley Los Angeles, CA

Cathy Chen McLean, VA

Shengfeng Chen San Francisco, CA David Choi Irvine, CA Marin Cionca Orange, CA Adam J. Citrin Altanta, GA

Emmanuel Coffy Shrewsbury, NJ Jason H. Conway Saint Louis, MO Thomas J. Corbett Minneapolis, MN Brie A. Crawford Algonquin, IL Brenda L. Danek Washington, DC William C. Devine, II Las Vegas, NV Diana DiBerardino Pittsburgh, PA Nicholas J. DiCeglie, Jr. New York, NY Cynthia A. Dixon Santa Monica, CA Jonathan Doloff Princeton, NJ Michael Dreznes Del Mar, CA Joshua L. Emory Irvine, CA Jonathan L. Falker Washington, DC Tao Feng Mountain View, CA

Anna B. Folgers Chicago, IL Darrell FordSouthfield, MI Matthew Frisbee McLean, VA Erik Fuehrer Palo Alto, CA


Gorka Garcia Washington, DC Stephen Gardner Arlington, VA Thomas Gillespie Rockville, MD John G. Graves, II Atlanta, GA Ronald D. Griffith, Jr. Ypsilanti, MI Joe C. Hao Walnut Creek, CA Jennifer Hayes Palo Alto, CA Nicholas Heesters, Jr. Hockessin, DE

Corley Hines Dallas, TX Christine Hlavka Washington, DC Bach V. Hoang Washington, DC Jamilla N. Holomon Katy, TX Barry Horwitz Chicago, IL Jianjie (Jamie) Hu Jersey City, NJ Imran Jaswal Rockaway Beach, NY Travis Jensen Palo Alto, CA Laba Karki Washington, DC Amol Kavathekar Minneapolis, MN

Anthony J. Kefalos Park Ridge, NJ Kelley Keller Alexandria, VA Jeremiah J. Kelly Baltimore, MD Sara N. Kerrane Irvine, CA Lawrence B. Kong Palo Alto, CA Craig M. Kuchi Chicago, IL Nicholas Kuhlmann Maplewood, MN Jeffrey M. Kuhn Oakland, CA Amy Kuo Washington, DC Pou-I Lee New York, NY Richard T. Lee Chicago, IL Lisa Jie Li San Francisco, CA

Jake Linford Chicago, IL Jill Link Des Moines, IA Wansheng Jerry Liu Lawrenceville, NJ Christopher Ma Vienna, VA Ryan Marsh Glendale, AZ Stuart B. Martens Lincoln, NE

Brent D. Martin Hartville, OH Mark P. Mathison Walnut Creek, CA Wyatt P. McConnell Jamaica Plain, MA James McPherson Rochester Hills, MI Michael Meehan Washington, DC Yvette Meldrum Franklin, TN Jennifer Ming San Francisco, CA Matthew F. Mottice Dublin, OH Marcia Belinda Moulon New Ross, IRELAND Laura L. Myeres Minneapolis, MN Nicholas Myers Irvine, CA Tiffany Nichols Washington, DC Reece W. Nienstadt Washington, DC Ravi K. Nigam Ann Arbor, MI Victor S. Nolan Cleveland, OH Amos Olubunmi Houston, TX Sun Y. Pae Rockford, IL Justin Pan Vienna, VA

Nicole Pannoni Santa Clara, CA Seunghee Park Herndon, VA Aseet Patel Chicago, IL Matthew Phillips Fairfax, VA Christopher Ponder Houston, TX Andrew Pouzeshi Denver, CO Clark E. Proffitt Tucson, AZ George Raynal Silver Spring, MD Aaron Reed Kansas City, MO Joseph E. Reed San Diego, CA Robert Reid Reno, NV Elizabeth Reilly Tacoma, WA Michael George Rodriguez Dallas, TX Ashton B. Rufener Milwaukee, WI Ryan T. Santurri Orlando, FL Colleen Schaller Ft. Washington, PA Joel Z. Scharz Las Vegas, NV Kelley A. Schnieders Kansas City, MO


Daniel Scolnick Berwyn, PA Katie J. L. Scott Cupertino, CA Bart Seeley Riverside, CA Beth Shaw Reston, VA Ari Sherwin University Hts, OH Lorenz Siddiqi Irvine, CA Shannon L. Silversmith Topeka, KS Jennifer Simpson Boca Raton, FL Patricia Smith Akron, OH Eric L. Smith San Jose, CA Peter K. Sollins Boston, MA Elizabeth Stanley Dallas, TX Sara Stephenson Dekalb, IL Hayley Stevens Seattle, WA John C. Stull Washington, DC Andre Sulmers Brooklyn, NY Mario Tabone Plymouth, MI Jie Tan McKinney, TX

James Tario San Francisco, CA Alexanader Tsarouhas Cleveland, OH Edward L. Tulin New York, NY Imran Vakil Anaheim, CA Pamela Van Dort Washington, DC Amanda L. Vaught New York, NY Sam Wakefield Layton, UT

Leita Walker Minneapolis, MN Marlan D. Walker Irvine, CA George Wang Washington, DC Chad J. Wickman Minneapolis, MN Brock F. Wilson Irvine, CA Matthew Winterroth Newark, NJ Nicole Woods Branchburg, NJ Laurie Young Minneapolis, MN Alla Zagrebelsky Riverview, FL Jihong Zang New York, NY Jianping Zhang Carrollton, TX

Assaf Zilbering Camp Hill, PA

Claire Zopf Concord, NH John A. Zurawski Berwyn, PA

PATENT AGENT

Anne Carlson Portland, OR Marina Heusch Littleton, CO Leif Sloan Seattle, WA

PATENT AGENT JUNIOR

Daniel P. Archibald Washington, DC

Jamison T. Arimoto Madison, WI David F. Bassett Macedon, NY Brandon S. Bludau Washington, DC Brian Burkinshaw Pflugerville, TX Marta Cavero-Tomas Wayland, MA Andrew M. Deschere Arlington, VA Christopher G. Devry Meno Park, CA Berkan K. Endres Saint Paul, MN Paul Feng Minneapolis, MN

Brian E. Hearn Fredericksburg, VA Joseph Jones Putnam Valley, NY Lincoln Khan Alexandria, VA Monique Kierlin-Duncan Decatur, GA Colin Lebens Portland, OR Jing Li Bethesda, MD Lissi Marquis Dunkirk, MD Kelly McGlashen Belmont, MA

Usman A. Mughal Beaverton, OR

Lian Ouyang Cambridge, MA Jillian Pesin-Fulop San Francisco, CA Brigitte Phan Irvine, CA Darren Smith Houston, TX Richard Stamper Terre Haute, IN Kelly Sullivan Somerset, NJ Corrie L. Vaa Bellevue, WA Denise H. Wong San Francisco, CA Xiaobin You Washington, DC


Jiaxiao Zhang Alexandria, VA

STUDENT

Mark Abellera Chicago, IL John Marshall Law School Paul D. Ajibogun Houston, TX South Texas College of Law Michael Albaneze Mount Vernon, NH Franklin Pierce Law Center Kendria Alt Boulder, CO University of ColoradoSchool of Law Kristin Ballobin Lawrence, KS University of KansasSchool of Law

Ellen Bass Tiburon, CA University of San Francisco School of Law Gregory D. Behringer Ada, OH Ohio Northern UniversityLaw School Markus Bergauer New York, NY Fordham UniversityLaw School Jennifer Best-Martin San Diego, CA University of San DiegoSchool of Law Melissa Beyer Eugene, OR University of OregonSchool of Law

Trenton Boaldin Oklahoma City, OK Florida CoastalSchool of Law Elizabeth A. Brown Stoneham, MA Georgetown UniversityLaw Center Carl Bryan Yellow Springs, OH University of DaytonSchool of Law Scott Burkette West Sacramento, CA University of California at Davis School of Law Erreka T. Campbell Plano, TX Southern Methodist UniversityLaw School Matthew Carlson Quincy, MA Suffolk University Law School Justin Chang Santa Clara, CA Santa Clara UniversitySchool of Law

Reagan Charney Atlanta, GA Georgia State UniversityCollege of Law Ruoying Chen Duluth, GA Gerogia State UniversityLaw School Nezihe Colak East Lansing, MI Thomas M. Cooley Law School Ian Coyle Washington, DC George Washington University Law School

Kellyann Creelman San Diego, CA California WesternSchool of Law Deborah Cwalina Pinole, CA University of California Hastings College of Law Qian Dai San Mateo, CA Santa Clara UniversitySchool of Law Amanie Daou Durham, NC North Carolina Central University School of Law Akinwunmi Doherty Little Rock, AR University of Arkansasat Little Rock, School of Law George Dolina FallsChurch, VA George Washington UniversityLaw School William Dukes Oxford, MS University of MississippiSchool of Law Brian Eller Davis, CA University of California at Davis School of Law Kyle John Emkes Savoy, IL Ave Maria School of Law

Briana Erickson Boston, MA Suffolk University Law School Mary Eshaghian Los Angeles, CA Thomas JeffersonSchool of Law

Dorine Etonga Lansing, MI Thomas M. Cooley Law School Daniel Evans Atlanta, GA Georgia State UniversityCollege of Law Matt Ferry Studio City, CA University of California atLos Angeles, School of Law Gregory Finch Topeka, KS Washburn UniversitySchool of Law Jennifer Foy Carlisle, PA Pennsylvania State University, Dickinson School of Law Tiffany Garland Baton Rouge, LA Louisiana StateUniversity Law Center William L. Gavatt Oxford, MS University of MississippiLaw School Sammetria Goodson Philadelphia, PA Temple UniversitySchool of Law Adriane Grace Washington, DC American University, Washington College of Law

Meagan Guerzon McLean, VA George Washington UniversityLaw School Ingo Hardt Coronado, CA University of San DiegoSchool of Law


Jonathan A. Hareid Inver Grove Heights, MN University of MinnesotaLaw School

Mary Hargett St. Louis, MO Saint Louis UniversitySchool of Law Jennifer Hearne Moscow, ID University of IdahoCollege of Law Damon Hickman Weatherford, TX Texas WesleyanUniversity School of Law John Hillert Tallahassee, FL Florida State UniversityCollege of Law Michael Hope, II Houston, TX Texas Southern University, Thurgood MarshallSchool of Law

Karen Horiuchi Sacramento, CA University of the Pacific, McGeorge School of Law Eric Hsu Cupertino, CA University of California at Davis School of Law Natalie Hudson Houston, TX University of HoustonLaw Center Thomas D. Huycke Oakton, VA West Virginia UniversityLaw School

Nicole Janovick Savoy, IL University of IllinoisCollege of Law Katherine D. Jochim San Diego, CA University of San DiegoLaw School

John Clifford Johnston Mount Pleasant, SC Charleston School of Law

Eric Andrew Jones Lincoln, NE University of NebraskaLaw School Aimee Joshua Ellicott City, MD University of BaltimoreSchool of Law Jamie Joshua Ellicott City, MD University of BaltimoreSchool of Law Mudit Kakar Seattle, WA University of WashingtonSchool of Law Chitra Kalyanaraman Washington, DC American University, Washington College of Law Alison Karmelek New York, NY Yeshiva University, Benjamin N. CardozoSchool of Law Joshua Kay Scotch Plains, NJ Villanova UniversitySchool of Law

Nishla Keiser Cambridge, MA Suffolk University Law School

Yu Kim-Reynolds Wadsworth, OH University of Akron, C. Blake McDowell Law Center

John Kirkpatrick Arlington, VA The Catholic University of America School of Law Richard S. Kitei Allentown, PA Temple UniversityLaw School

Nicholas Kliewer Houston, TX University of HoustonLaw Center

Megan Koenig Saint Louis, MO Washington UniversitySchool of Law Jeannette M. Kuhn Perrysburg, OH University of ToledoLaw School William P. Laird San Francisco, CA Golden Gate University Jon LarsonCleveland Heights, OH Case Western Reserve University Law School Basil Lashley Roswell, GA John Marshall Law School Robert Lichter Washington, DC George Washington University

Chang Sik Lim Ithaca, NY Cornell Law School Erica Lin Glenview, IL Indiana UniversitySchool of Law-Bloomington Karen Lo Seattle, WA Seattle UniversitySchool of Law J. Brian Loker Chicago, IL DePaul UniversityCollege of Law

Adel J. Lomibao Easton, PA Albany Law School Jihong Lou San Diego, CA University of San DiegoSchool of Law

Richard B. Mandal Saratoga, CA Thomas M. Cooley Law School Edward Martindale Costa Mesa, CA California WesternSchool of Law

Nicholas Maull Cincinnati, OH University of ToledoCollege of Law Ryan McCleary Royal Oak, MI Thomas M. Cooley Law School Paul McSheffrey, Jr. Allston, MA New England School of Law


Darrell Messer, II Chicago, IL DePaul UniversityCollege of Law Myshala Middleton Baltimore, MD University of BaltimoreSchool of Law Miriam Milstein San Diego, CA University of San DiegoSchool of Law Susan E. Mince Burton, MI Thomas M. Cooley Law School Richard Mitchell St. John, IN Valparaiso UniversitySchool of Law Brett Mock Valparaiso, IN Valparaiso UniversitySchool of Law Stephen H. Montgomery Vernon Hills, IL John Marshall School of Law Carla Mouta-Bellum Washington, DC The Catholic University of America, School of Law Adam Muzika New York, NY New York Law School David Namgung Wayne, NJ Rutgers State University ofNew Jersey School of Law Adam Neal Richmond, VA University of Richmond T. C. Williams School of Law

Uyen Nguyen Portland, OR Lewis & Clark UniversityLaw School Quinn Nichols Santa Clara, CA Santa Clara UniversitySchool of Law Christopher O’Connor White Plains, NY Pace University School of Law Dennis Ostrovsky Silver Spring, MD George Washington UniversityLaw School Abioye Oyewole Baltimore, MD University of BaltimoreSchool of Law Min Pan St. Louis, MO Washington UniversitySchool of Law Mital Patel Greensboro, NC Elon University School of Law Kellan Ponikiewicz Boston, MA Suffolk University Law School Karen Potter San Diego, CA California WesternSchool of Law Daniel Richards Berkeley, CA Santa Clara UniversitySchool of Law Daniel Salinas Chula Vista, CA California WesternSchool of Law

Jeffrey Salomon Washington, DC Franklin Pierce Law Center

John Samples Davis, CA Case Western Reserve University Law School Lynn Scanlon-Hernandez Amherst, NH Franklin Pierce Law Center Charles Shonkwiler Spokane, WA University of OregonSchool of Law

Kenneth A. Smith Dublin, OH Capital University Law School Ryan C. Smith Saint Paul, MN William Mitchell College of Law Benny Spiewak Washington, DC George Washington UniversityLaw School Christopher John Thomas Wilmington, DE Widener University Gabrielle Thompson Crestwood, KY Northern Kentucky University Salmon P. ChaseCollege of Law Aidan Toombs Berkeley, CA Georgetown UniversityLaw Center Mary Beth Tung Columbia, MD University of MarylandLaw School

Cory Valley Silver Spring, MD University of MarylandSchool of Law

Derek Vanbuer Dekalb, IL Northern Illinois UniversityLaw School Lindsay Alexis Voirin Tallahassee, FL Florida State University

Tam H. Vuong Sugar Land, TX South Texas College of Law Yuke Wang Richardson, TX Southern Methodist UniversityLaw School Zoretta Ward-Holloway Westfield, IN Indiana UniversityLaw School Arthur R. Weaver Coral Gable, FL University of MiamiLaw School Geoffrey Weg New York, NY New York Law School Gideon Weinerth New York, NY Yeshiva University Benjamin N. CardozoSchool of Law Kimberly Weinreich Washington, DC Fordham UniversitySchool of Law Rachel Weiss New York, NY Brooklyn Law School


Lindsey Weisselberg Chicago, IL John Marshall Law School Eric Wendler Arlington, VA George Washington UniversityLaw School

Randal Whitehead Washington, DC University of MarylandSchool of Law Kristi M. Wilcox Columbus, OH Ohio State UniversityLaw School

Benjamin C. Wiles Winston Salem, NC Wake Forest UniversityLaw School

Seth Wilson Jersey City, NJ Seton Hall UniversitySchool of Law Million Woldesenbet Missouri City, TX University of HoustonLaw Center

Trevor Woodage Saint Paul, MN University of MinnesotaLaw School

Christopher Worrel Troy, MI University of ToledoCollege of Law Benjamin Wutt Saint Paul, MN University of MinnesotaLaw School Yuji Yamaguchi Falls Church, VA Cornell Law School Jeanne Yang San Francisco, CA University of California Hastings College of Law

Sam Yip San Francisco, CA University of San FranciscoSchool of Law Richard E. Zelenka Denver, CO University of DenverLaw School


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2009Meeting Dates

board ofdirectors

Wednesday, May 13, 2009Hotel del Coronado

San Diego, CA

Friday, May 15, 2009Hotel del Coronado

San Diego, CA

Thursday, July 16, 2009Headquarters Boardroom

Arlington, VA

Thursday, September 10, 2009Evening Welcome Reception

TBD

Friday & Saturday September 11-12, 2009TBD

Thursday, October 15, 2009Marriott Wardman Park

Washington, DC


news of members

Edmund P. Anderson joins Cantor Colburn, LLP as a partner in the Detroit office. He focuses his practice on metallurgy and materials science in a wide variety of applications, including the automotive, aerospace and defense and biomedical arts, as well as the electrical, electro-mechanical and mechanical arts generally. In addition to patent prosecution, he also devotes a significant portion of his practice to client counseling, product clearance investigations and opinions and IP transactions, including due diligence and the drafting and negotiation of a various IP agreements. Mr. Anderson has extensive in-house experience, having previously managed the IP for multi-billion business units of several Fortune 100 companies, as well as extensive private practice experience as a former partner in the IP practice group at Dickinson Wright, PLLC. He received a JD from William Mitchell College of Law; his undergraduate degree is in Metallurgical Engineering from Michigan Technological University. Mr. Anderson is admitted to the bar in Michigan, Minnesota and the US Patent and Trademark Office._______________________________________________

Stroock & Stroock & Lavan, LLP a national law firm has announced the addition of two AIPLA members to its Intellectual Property Practice Group in New York City.

The team includes Partner Ronald M. Daignault who has represented companies across a broad range of industries in a variety of patent, trademark, unfair competition, false advertising, trade secret and copyright cases. Though he has represented clients in various technology areas, including consumer electronics and proprietary business methods, over the past nine years, Mr. Daignault’s practice has focused on pharmaceutical products and ANDA/Hatch-Waxman litigations, including trials on both the branded and generic sides of the business. Mr. Daignault is involved in domestic and international trademark prosecution, due diligence, counseling, and licensing. He has been involved in combating trademark counterfeiting, and has brought and conducted numerous ex parte seizures of counterfeit goods.

Also included is Special Counsel Richard H. An. Mr. Ahn’s practice focuses on all phases of intellectual property litigation with an emphasis on patent litigation. He has litigated patent cases from many different fields, including electrical, mechanical, and chemical engineering, pharmaceuticals, dietary supplements, and Internet technologies. Mr. An’s experience includes the direct and cross-examination of fact and expert witnesses at bench and jury trials and arbitrations;

first-chair responsibility at summary judgment and Markman hearings; arguing a variety of motions before district courts; and conducting oral arguments on appeal, including before the Federal Circuit. Mr. An is also a registered patent attorney before the United States Patent and Trademark Office and is experienced in the prosecution of utility and design patents and drafting opinions of counsel regarding patent infringement and patent validity._______________________________________________

Scott A. McBain joins Cantor Colburn, LLP a partner in the Detroit office. As an attorney at Delphi Corporation, he was Division IP Counsel for several different multi-billion dollar business units. At Delphi, Mr. McBain managed both domestic and international IP portfolios and led the IP portfolio development efforts in a wide range of technologies, encompassing automotive safety and comfort and even medical devices. Mr. McBain has supported numerous acquisitions and divestitures and has significant experience in M&A activities, drafting and negotiating technology transfer agreements and other IP agreements. Mr. McBain was also responsible for managing Delphi’s worldwide trademark portfolio for the last four years and was a leader in establishing and implementing Delphi’s worldwide anti-counterfeiting strategy. Prior to his eight years at Delphi, Mr. McBain spent almost nine years at Vickers, Daniels and Young in Cleveland, where he was extensively involved in both patent and trademark litigation in federal court and in the US Patent and Trademark Office. Mr. McBain began his career as an engineer at American Electric Power in Columbus, Ohio. He received his JD from Thomas M. Cooley Law School, from which he graduated magna cum laude, and his BS in civil engineering is from Michigan Technological University. Mr. McBain is admitted to the bar in Michigan, Ohio and the US Patent and Trademark Office._______________________________________________

The Boston Patent Law Association is pleased to announce its elected officers for 2009. The officers are:

President-Elect: Lisa AdamsVice President: J. Grant HoustonTreasurer: Neil P. FerraroSecretary: Joseph M. MaraiaBoard Member: Leslie Meyer-LeonBoard Member: Donna M. MeuthBoard Member: Gregory J. SieczkiewiczBoard Member: Erik Paul Belt_______________________________________________


Connolly Bove Lodge & Hutz, LLP welcomes several associates and elects two partners as its IP group continues to expand.

Jennifer Fraser, Chair of Connoly Bove’s Trademark and Copyright section, represents clients in a variety of areas including trademark prosecution and trademark and copyright litigation. Her practice focuses primarily on the selection, use and enforcement of trademarks including prosecuting US and foreign applications, litigating rights before the courts and the Trademark Trial and Appeal Board, and resolving domain name disputes. She is a former Examining Attorney with the United States Patent and Trademark Office. She is also a member of the Intellectual Property Owners’ Trademark Office Practice Committee.

Aaron R. Ettelman practices in Connolly Bove’s Intellectual Property Group. He has a technical background in organic synthesis, vitamins and dietary supplements, agricultural adjuvants and actives, cosmetics and surfactants, measurement devices and sensors, medical devices, fuels and lubricants, coatings, plastics and polymers, electrochemical and battery sciences, semiconductors and non-volatile memory, mineral extraction and textile treatments. Prior to joining the firm, Ettleman was chief intellectual property counsel and assistant secretary for the US subsidiary of a global specialty chemicals company. He is registered to practice before the United States Patent and Trademark office.

The new associates to the firm include:

Daniel M. Attaway practices in the firm’s Intellectual Property Group in Wilmington. He represents clients in patent prosecution, litigation, and counseling in the chemical and pharmaceutical industries. He received his JD from Chicago-Kent College of Law, where he was an associate editor of the Journal of Intellectual Property, the editor of the Seventh Circuit Review, and editor-in-chief of Access to Justice. He received his BA and BS from Rice University in Chemical Engineering and English.

Charles W. Chesney practices in the firm’s Intellectual Property Group in Washington, D.C. He represents clients in a variety of intellectual property matters including patent prosecution, patent litigation, patent counseling and opinions, and trade secrets in the electrical and medical devices arts. Prior to returning to private practice, Chesney was the director and counsel of intellectual property for a

wireless communications company developing technology for emerging OFDMA based wireless communications networks. Prior to practicing law, Chesney worked as a systems engineer in the telecommunications industry. He received his JD from The University of Virginia School of Law, his MSEE from The George Washington University and his BSEE from The Pennsylvania State University.

Peter M. Jay practices in the firm’s Intellectual Property Group in Wilmington. He represents clients in a variety of areas, including patent litigation, patent prosecution and counseling in the chemical and pharmaceutical fields. He received his JD from the State University of New York at Buffalo School of Law, where he was executive publications editor of the Buffalo Intellectual Property Law Journal. He also received his ME and BS from the State University of New York at Buffalo, majoring in Chemical Engineering._______________________________________________

Herbert W. Larson, 74, of Largo, FL died at home March 2, 2009, after a year long illness. Born in New York City, Herb was a 1956 graduate of Northwestern University with degrees in Biology and Chemistry. He completed law school at the University of Pennsylvania in 1961. He was Patent Counsel for the DuPont Company for 24 years before retiring from DuPont in 1985. He then moved to the Tampa Bay, Florida area and opened his own IP boutique law firm, Larson & Larson, P.A. with two of his sons. Herb was a retired Commander in the United States Navy, a U.S. Registered Patent Attorney since 1963 and held memberships in the DC, Delaware and Florida Bars. Herb was also a member of the AIPLA for almost his entire 46 year career as a Patent Attorney. He is survived by his wife of 50 years, Mildred “Middy”; his three sons Bill (Michelle), Eric (Jill) and James (Catalina); and four grandchildren.

deceased members


April 1 – 3 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

May 13 – 15 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, Hotel del Coronado, San Diego, CA (703-415-0780)

May 16 – 20 INTA Annual Meeting, Seattle, WA (www.inta.org)

June 6 – 10 FICPI World Congress, Washington, DC (www.ficpi.org)

June 17 – 19 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

July 30 – August 4 ABA-IPL Section Annual Meeting Chicago, IL (www.abanet.org/intelprop)

August 26– 28 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Practical Patent Prosecution Training for New Lawyers (Boot Camp) Alexandria Westin, Alexandria, VA (703-415-0780)

September 13 – 15 IPO Annual Meeting, The Chicago Hilton, Chicago, IL (www.ipo.org)

October 14 – 17 AIPPI Forum, Buenos Aires, Argentina (www.aippi.org)

October 14 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVI, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 15 – 17 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

October 24 – 28 ASIPI Congress, Lima, Peru (www.asipi.org)

November 4 – 6 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

November 18 – 22 APAA, 15th General Assembly and 56th & 57th Council Meetings, Hong Kong (www.appaonline.org)

January 27 – 30 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, La Quinta Resort & Club, La Quinta, CA (703-415-0780)

May 6 – 8 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, New York Marriott Marquis, New York, NY (703-415-0780)

May 22 – 26 INTA Annual Meeting, Boston, MA (www.inta.org)

August 5 – 10 ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)

2009

2010

future meetingscalendar


http://www.inta.org

http://www.ficpi.org

http://www.abanet.org/intelprop

http://www.ipo.org

http://www.aippi.org

http://www.asipi.org

http://www.appaonline.org

http://www.inta.org


2011

September 12 – 14 IPO Annual Meeting, The Hyatt Regency, Atlanta, GA (www.ipo.org)

October 1 – 6 AIPPI, 42nd World IP Congress, Paris, France (www.aippi.org)

October 20 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 21 – 23 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

February 2 – 5 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, The Peabody Hotel, Orlando, FL

May 12 – 14 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, The Palace Hotel, San Francisco, CA

May 14 – 18 INTA Annual Meeting, San Francisco, CA (www.inta.org)

August 5 – 10 ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)

September 11 – 13 IPO Annual Meeting, Los Angeles, CA (www.ipo.org)

October 19 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVIII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 20-22 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)

May 5 – 9 INTA Annual Meeting, Washington, DC (www.inta.org)

October 24 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XIX, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 25-27 AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)

2012


http://www.ipo.org

http://www.aippi.org

http://www.inta.org


http://www.ipo.org

http://www.inta.org

C.L.E. update

Alabama .................................................. 15.4 (3.8)Alaska ................................................... 15.25 (3.75)Arizona ................................................. 15.25 (3.75)Arkansas ................................................. 15.5 (3.75)California .............................................. 15.25 (3.75)Colorado .................................................. 18.0 (4.5)Connecticut ............................................... 15.0 (3.5)Delaware .................................................. 15.5 (3.8)Florida ....................................................... 18.5 (4.5)Georgia ................................................. 15.35 (3.75)Idaho............................................................... 14.75Illinois .................................................... 15.25 (3.75)Indiana ...................................................... 15.4 (3.8)Iowa ........................................................ 15.5 (3.75)Kansas ...................................................... 18.5 (4.5)Kentucky ................................................. 15.5 (3.75)

Louisiana ................................................ 15.4 (3.75)Maine ...................................................... 15.4 (3.75)Minnesota ............................................ 15.75 (3.75)Mississippi ................................................ 15.4 (3.8)Missouri .................................................... 18.5 (4.5)Montana .................................................. 15.4 (3.75)Nevada ..................................................... 15.0 (3.5)New Hampshire ........................................ 16.4 (4.0)New Mexico .......................................... 15.25 (3.75)New York .................................................. 18.5 (4.5)North Carolina ...................................... 15.25 (3.75)North Dakota ........................................ 15.25 (3.75)Ohio ...................................................... 15.25 (3.75)Oklahoma ................................................. 18.5 (4.5)Oregon ......16.25 (3.5) also 0.5 practical skills included in the total

Pennsylvania ............................................ 15.0 (3.5)

Rhode Island ............................................ 18.5 (4.5)South Carolina ...................................... 15.42 (3.75)Tennessee .............................................. 16.42 (4.0)Texas .................................................... 15.25 (3.75)Utah .......................................................... 15.4 (3.7)Vermont .................................................... 15.4 (3.7)Virginia ...................................................... 15.0 (2.5)Washington ............................................. 15.5 (3.75)West Virginia ............................................ 18.5 (4.5)Wisconsin ................................................. 18.5 (4.5)Wyoming ................................................. 15.5 (3.75)

2008 Spring Meeting • InterContinental HoustonHouston, TX • May 14–16, 2008

Alabama .......................................................... 13.0Alaska ............................................................... 13.0Arizona ............................................................. 13.0Arkansas ........................................................... 13.0California .......................................................... 13.0Colorado .......................................................... 16.0Connecticut ....................................................... 13.0Delaware ............................... accreditation pendingFlorida ............................................................... 16.0Georgia ............................................................. 13.0Idaho..................................................................11.5Illinois .............................................................. 12.75Indiana .............................................................. 13.0Iowa .................................................................. 13.0Kansas .............................................................. 15.5Kentucky ........................................................... 13.0

Louisiana .......................................................... 13.0Maine ................................................................ 13.0Minnesota ....................................................... 12.75Mississippi ........................................................ 14.0Missouri ............................................................ 15.3 Montana ............................................................ 13.0Nevada ............................................................. 13.0New Hampshire ................................................ 13.0New Mexico ...................................................... 13.0New York .................................................. 15.0/13.0North Carolina ................................................ 12.75North Dakota .................................................... 13.0Ohio ................................................................ 12.75Oklahoma ......................................................... 15.5Oregon .............................................................. 13.5Pennsylvania .................................................... 13.0

Rhode Island .................................................... 15.5South Carolina .................................................. 13.0Tennessee ...................................................... 12.25Texas ................................................................ 13.0Utah .................................................................. 13.0Vermont ............................................................ 13.0Virginia .............................................................. 13.0Washington ..................................................... 12.75West Virginia .................................................... 15.6Wisconsin ......................................................... 15.5Wyoming ........................................................... 13.0

2008 Advanced Patent Cooperation Treaty SeminarJuly 10–11: New York, NY • July 14–15: Denver, CO

Alabama .................................................. 22.5 (1.0)Alaska ....................................................... 22.5 (1.0)Arizona ..................................................... 22.5 (1.0)Arkansas ................................................... 22.5 (1.0)California .................................................. 22.5 (1.0)Colorado .................................................. 27.0 (1.2)Connecticut ............................................... 22.5 (1.0)Delaware .................................................. 22.5 (1.0)Florida ....................................................... 27.0 (1.0)Georgia ..................................................... 22.5 (1.0)Idaho......................................................... 22.5 (1.0)Illinois ........................................................ 22.5 (1.0)Indiana ...................................................... 22.5 (1.0)Iowa .......................................................... 22.5 (1.0)Kansas ...................................................... 24.0 (1.0)Kentucky ................................................... 22.5 (1.0)

Louisiana .................................................. 22.5 (1.0)Maine ........................................................ 22.5 (1.0)Minnesota ................................................ 15.0 (1.0)Mississippi ................................................ 18.0 (1.0)Missouri .................................................... 27.0 (1.2) Montana .................................................. 22.25 (1.0)Nevada ..................................................... 22.5 (1.0)New Hampshire ...................................... 22.75 (1.0)New Mexico .............................................. 22.5 (1.0)New York .................................................. 27.0 (1.0)North Carolina ......................................... 22.0 (1.0)North Dakota ............................................ 22.5 (1.0)Ohio .......................................................... 22.5 (1.0)Oklahoma ................................................. 27.0 (1.0)Oregon ...................................................... 24.0 (1.0)Pennsylvania ............................................ 22.5 (1.0)

Rhode Island ............................................ 20.0 (1.0)South Carolina .......................................... 22.5 (1.0)Tennessee .............................................. 22.75 (1.0)Texas ........................................................ 22.5 (1.0)Utah .......................................................... 22.5 (1.0)Vermont .................................................... 22.5 (1.0)Virginia ...................................................... 22.5 (1.0)Washington ............................................... 22.5 (1.0)West Virginia ............................................ 27.0 (1.2)Wisconsin ................................................. 27.0 (1.0)Wyoming ................................................... 22.5 (1.0)

2008 Practical Patent Prosecution Training for New Lawyers Alexandria, VA • August 20–22, 2008


Alabama .................................................. 16.2 (1.0)Alaska ....................................................... 16.0 (1.0)Arizona ..................................................... 16.0 (1.0)Arkansas ................................................. 16.25 (1.0)California .................................................. 16.0 (1.0)Colorado .................................................. 19.0 (1.2)Connecticut ............................................... 16.0 (1.0)Delaware .................................................. 19.4 (1.2)Florida ....................................................... 19.0 (1.0)Georgia .................................. accreditation pendingIdaho............................................................... 15.75 Illinois ........................................................ 16.0 (1.0)Indiana ...................................................... 16.2 (1.0)Iowa ........................................................ 16.25 (1.0)Kansas ...................................................... 19.0 (1.0)Kentucky ................................................. 16.25 (1.0)

Louisiana ................................................ 16.16 (1.0)Maine ........................................................ 16.1 (1.0)Minnesota .............................................. 15.75 (1.0)Mississippi ................................................ 16.2 (1.0)Missouri ................................. accreditation pending Montana .................................................. 16.17 (1.0)Nevada ..................................................... 16.0 (1.0)New Hampshire ........................................ 17.3 (1.0)New Mexico .............................................. 16.0 (1.0)New York .................................................. 19.0 (1.0)North Carolina .......................................... 16.0 (1.0)North Dakota ............................................ 16.0 (1.0)Ohio ........................................................ 16.25 (1.0)Oklahoma ................................................. 19.5 (1.0)Oregon ...................................................... 17.0 (1.0)Pennsylvania ............................................ 16.0 (1.0)

Rhode Island ............................................ 19.0 (1.0)South Carolina ........................................ 16.17 (1.0)Tennessee .............................................. 17.08 (1.0)Texas ........................................................ 16.0 (1.0)Utah .......................................................... 16.0 (1.0)Vermont .................................................... 16.0 (1.0)Virginia ...................................................... 15.5 (1.0)Washington ............................................... 16.0 (1.0)West Virginia ............................................ 19.4 (1.2)Wisconsin .............................. accreditation pendingWyoming ................................................. 16.25 (1.0)

Ethics credit is indicated in a parenthesis and is included in the total.

2008 Annual Meeting • Marriott Wardman ParkWashington, DC • October 23–25, 2008

Alabama ............................................................. 3.8 Alaska ............................................................... 3.75Arizona ............................................................. 3.75Arkansas ........................................................... 3.75California .......................................................... 3.75Colorado ............................................................ 5.0Connecticut ......................................................... 3.5Delaware ............................................................ 4.5Florida ................................................................. 4.5Georgia .................................. accreditation pendingIdaho................................................................. 2.75Illinois ................................................................ 3.75Indiana ................................................................ 3.8Iowa .................................................................. 3.75Kansas ................................................................ 4.5Kentucky ........................................................... 3.75

Louisiana .......................................................... 3.75Maine ................................................................ 3.75Minnesota ........................................................ 3.75Mississippi .......................................................... 3.8Missouri ................................. accreditation pending Montana ............................................................ 3.75Nevada ............................................................... 3.5New Hampshire .................................................. 3.9New Mexico ...................................................... 3.75New York ............................................................ 4.5North Carolina .................................................. 3.75North Dakota .................................................... 3.75Ohio .................................................................. 2.75Oklahoma ........................................................... 4.5Oregon .............................................................. 3.75Pennsylvania ...................................................... 3.5

Rhode Island ...................................................... 4.5South Carolina .................................................. 3.75Tennessee ........................................................ 3.92Texas ................................................................ 3.75Utah .................................................................... 3.5Vermont .............................................................. 3.8Virginia ................................................................ 3.0Washington ....................................................... 3.75West Virginia ...................................................... 4.5Wisconsin ........................................................... 4.5Wyoming ........................................................... 3.75

2008 Partnering in Patents XVAlexandria, VA • October 17, 2007

Please check our website at www.aipla.org for current information.

Alabama ................................................... 16.6 (1.0)Alaska ....................................................... 16.5 (1.0)Arizona ..................................................... 16.5 (1.0)Arkansas ................................................... 16.5 (1.0)California .................................................. 16.5 (1.0)Colorado .................................................. 20.0 (1.2)Connecticut ............................ accreditation pendingDelaware .................................................. 20.1 (1.2)Florida ....................................................... 20.0 (1.0)Georgia .................................. accreditation pendingIdaho............................................................... 16.75 Illinois ........................................................ 16.5 (1.0)Indiana ...................................................... 16.6 (1.0)Iowa .......................................................... 16.5 (1.0)Kansas ...................................................... 20.0 (1.0)Kentucky ................................................... 16.5 (1.0)

Louisiana ................................................ 16.58 (1.0)Maine ........................................................ 16.5 (1.0)Minnesota ................................................ 16.5 (1.0)Mississippi ................................................ 16.6 (1.0)Missouri .................................................... 20.1 (1.2) Montana .................................................. 16.58 (1.0)Nevada ..................................................... 16.5 (1.0)New Hampshire ........................................ 17.5 (1.0)New Mexico .............................................. 16.5 (1.0)New York .................................................. 20.0 (1.0)North Carolina .......................................... 16.5 (1.0)North Dakota ............................................ 16.5 (1.0)Ohio .......................................................... 16.5 (1.0)Oklahoma .............................. accreditation pendingOregon ...................................................... 16.5 (1.0)Pennsylvania ............................................ 16.5 (1.0)

Rhode Island ............................................ 20.0 (1.0)South Carolina ....................... accreditation pendingTennessee .............................................. 17.58 (1.0)Texas ........................................................ 16.5 (1.0)Utah .......................................................... 16.5 (1.0)Vermont .................................................... 16.5 (1.0)Virginia ...................................................... 16.5 (1.0)Washington ............................................... 16.5 (1.0)West Virginia ............................................ 20.1 (1.2)Wisconsin ................................................. 20.0 (1.0)Wyoming ................................................. 16.75 (1.0)

Ethics credit is indicated in a parenthesis and is included in the total.

2009 Mid-Winter Institute • Doral Golf Resort & SpaMiami, FL • January 28–31, 2009



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Register of Copyrights Issues Decision on Material Questions of Substantive Law Regarding CRJ DecisionThe Register of Copyrights issued her decision identifying and correcting erroneous resolutions on material questions of substantive law under title 17 that underlie or are contained in the final determination of the Copyright Royalty Judges (CRJs) regarding adjustment of reasonable rates and terms of royalty payments for the making and distribution of phonorecords of musical works. Docket No. 2006-3 CRB DPR, issued November 24, 2008, and available at www.loc.gov/crb/proceedings/2006-3/dpra-public-final-rate-terms.pdf, sets rates and terms for phonorecords, ringtones, digital downloads, digital phonorecord deliveries, limited downloads, and interactive streams.

The Register concluded that the CRJs erroneously did not refer two novel questions of law as required under the statute; that they were in error in their conclusions regarding both their and the Register’s authority to review regulations submitted to them under an agreement by the participants; and that their conclusion that they could not review the agreement submitted by the participants led to the inclusion of regulations that constitute erroneous resolution by the CRJs of material questions of substantive law under title 17. The Register’s decision corrects such errors and will be made part of the record of Docket No. 2006-3 CRB DPR.

The final determination of the CRJs and the Register’s decision were submitted to the Federal Register on January 26, 2009. For further information, go to www.copyright.gov/crb-referrals/115review/ and to www.loc.gov/crb/fedreg/.

Copyright Office Solicits Comments for Rulemaking on Exemption from Prohibition on Circumvention of Technological Measures That Control Access to WorksIn its triennial rulemaking proceeding regarding possible exemption by the Librarian of Congress of certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works, the Copyright Office received 19 proposals for classes of works to be subject to exemptions. The Office published a notice of proposed rulemaking announcing the proposed exemptions and sought comments from members of the public who support or oppose any of the proposed exemptions. The purpose of this rulemaking proceeding is to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make noninfringing uses due to the prohibition on circumvention.All comments proposing classes of works for exemption are available on the Copyright Office website at www.copyright.gov/1201/2008 and at the U.S. Copyright Office. The notice of proposed

copyright office affairsby: Wendi A. Maloney & Judith Nierman (photos below)


http://www.loc.gov/crb/proceedings/2006-3/

http://www.copyright.gov/crb-referrals/115review/

http://www.copyright.gov/crb-referrals/115review/

http://www.loc.gov/crb/fedreg/

http://www.loc.gov/crb/fedreg/

http://www.copyright.gov/1201/2008

rulemaking was published December 29, 2008, and is available on the Copyright Office website at www.copyright.gov/fedreg/2008/73fr79425.pdf. Comments in support or in opposition to the classes proposed were submitted during the 30-day period that ended February 2, 2009. For further information, go to www.copyright.gov/1201/. Copyright Office Signs Agreement with Chinese CounterpartRegister of Copyrights Marybeth Peters signed an agreement on October 25, 2008, in Beijing in which the Office committed to work with the U.S. Patent and Trademark Office (USPTO) and the National Copyright Administration of China (NCAC) to streamline protection of intellectual property. Jon Dudas, director of the USPTO, signed on behalf of his agency, and Liu Binjie, director of the NCAC and minister of China’s General Administration of Press and Publication, signed for the NCAC.

Formally titled a “memorandum of understanding for strategic cooperation,” the agreement cites the connection between global economic prosperity and protection of intellectual property, and it calls on the signatories to establish a framework for exchanging information and best practices. Specifically, it advocates the sharing of details about national copyright-related legislation and measures to administer and enforce copyrights, and it encourages

discussion of ways to deter Internet copyright infringement and piracy across borders.

The initiative for the agreement came out of the Intellectual Property Rights (IPR) Working Group of the U.S.–China Joint Commission on Commerce and Trade (JCCT). Established in 1984, the JCCT is a forum for resolving trade concerns and promoting bilateral commercial opportunities. Peters noted that the Copyright Office has maintained a relationship with the NCAC since its founding in 1985.

Office Adds MLs to WebsiteThe Office has made available an additional 45 MLs on its website. Prior to the development of the Internet and for a few years thereafter, official Office announcements were mailed to interested parties, hence the name “ML” for a document on the mailing list. These documents were numbered consecutively, beginning with ML-1 in November 1954 and ending at ML-711 dated December 2001. The name “ML” lingers although this type of information is no longer mailed but placed on the Office website.

View all MLs on the website at www.copyright.gov/history/index.html. These announcements are historical in nature. Many of the regulations, policies, and practices noted in the MLs have been superseded and are no longer in force.


http://www.copyright.gov/fedreg/2008/73fr79425.pdf

http://www.copyright.gov/fedreg/2008/73fr79425.pdf

http://www.copyright.gov/1201/

http://www.copyright.gov/1201/

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April 1–3, 2009The Westin AlexandriaAlexandria, VA

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This conference is provided to offer Legal Secretaries and Administrators from private corporations and law firms training in Patent and Trademark Office operations, services and procedures.

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thank you AIPLA 2009 mid-winter institute sponsors!

platinumSughrue Mion, PLLC Sponsor: Corporate In-House Counsel Lunch Thursday Dinner Theme & Entertainment

silver

Bereskin & Parr Sponsor: Awards Reception for Golf & Tennis

bronze

crystalBuckingham Doolittle & Burroughs, LLP Sponsor: Meeting Signage

Crowell & Moring Sponsor: AIPLA Technology Center

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Carlton Fields PA Sponsor: Thursday Lunch Reception

Fitzpatrick Cella Harper & Scinto Sponsor: AIPLA Cyber Café

Howrey, LLPSponsor: Women in IP Law & Diversity in IP Law Breakfast Meeting

Orrick Herrington & Sutcliffe, LLPSponsor: Opening Night Reception

Schwegman Lundberg & Woessner, PASponsor: New Member & First Time Attendee Reception

Sughrue Mion, PLLCSponsor: Thursday Lunch Reception



www.grantpatents.com

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2009 annual meeting

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leadership

Not Pictured:Li Chen, Program Co-Chair

Teresa Stanek Rea, President, AIPLA

Alan J. Kasper, Officer-in-Charge,President-Elect, AIPLA

Q. Todd Dickinson, AIPLA Executive Director

Myra H. McCormack, Program Co-Chair

Brian B. Darville, Program Co-Chair

a few speakers

Honorable Paul R. Michel

Dwayne S. Rawlings

(left to right) Christopher Schulte, Justine Wiebe, Katie Cameron

Arlene Neal

Christian Rupp

Francisco Silva

Caldwell Camero

Denis Khabarov

Friedrich Klinkert

Andras Kupecz

a few more speakers

Honorable Marybeth Peters

Maria Eliseeva

(left to right) Gerald Steinberg, Christian Rupp, Lisa Tittemore, Steve Kunin, Gary Griswold and Matthew Zischka

Harley I. LewinGeoffrey Lin

Leslie Lott

Melvin Garner

Harry Moatz

Lisa Tittemore

Michael Grow

a few more speakers

Poh Chua

Maria Aronikova Ryan Triplette

(left to right) Gary Hnath, Benjamin Sley, Dwayne Rawlings, Hernan Rios

thursday’s plenary session

Rachel Hughey

Susan Barbieri Montgomery

Randy Goddard

new member/first-time attendee reception

a special thank you to:

•Schwegman Lundberg & Woessner, PAfor sponsoring the New Member/First-Time Attendee Reception

wednesday opening night reception “miami spice”


• Orrick Herrington & Sutcliffe, PC for sponsoring the Opening Night Reception

thursday evening dinner:“latin nights”


• Sughrue Mion, PLLC for sponsoring the Thursday Dinner Theme and Entertainment

friday networking reception & saturday networking luncheon

awards reception for golf & tennis


• Bereskin & Parrfor sponsoring the Awards Reception for Golf and Tennis

annual meetingoctober 23-25, 2008committee

reports

Anti-Counterfeiting & Anti-PiracyKieran Doyle, Chair (left photo)Sherri L. Schornstein (right photo)___________________________________________

Trademark LawKimberly Van Voorhis, Chair (left photo)Amie Peele Carter, Vice-Chair (right photo)___________________________________________

The Trademark Committees had an active and productive Mid-Winter meeting.

On Thursday, the Trademark Committees along with

the Anti-Counterfeiting and Anti-Piracy Committee and the Copyright Committee co-hosted a series of presentations on a variety of topics of interest to trademark, copyright and design lawyers.

The Anti-Counterfeiting and Anti-Piracy Committee along with the Copyright Committee and the

various Trademark Committees co-hosted a series of presentations on a variety of topics of interest to trademark, copyright and design lawyers.

First, Betty Morgan led a discussion of product configuration protection from a multidisciplinary approach. Out of this meeting, the Committees intend to develop a program for the AIPLA Annual Meeting on this topic.

Next, Amy Cahill of the Anti-Counterfeiting and Anti-Piracy Committee presented an overview of S. 3325, the Prioritizing Resources and Organization for Intellectual Property Act (“the PRO-IP Act”), signed into law in October 2008.

This legislation strengthens both civil and criminal laws against counterfeiting and piracy. Specifically, the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration’s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts.

Next, Deirdre Sheridan gave a brief presentation regarding trademark damages, which included an update on damages case law and a discussion regarding willfulness as a prerequisite to damages.


Trademark LitigationStephen P. Meleen, Chair (left photo)Jennifer L. Kovalcik, Vice-Chair (right photo)___________________________________________

Please see Trademark Law Committee for report.


Next, Amy Cahill of the Anti-Counterfeiting and Anti-Piracy Committee presented an overview of S. 3325, the Prioritizing Resources and Organization for Intellectual Property Act (“the PRO-IP Act”), signed into law in October 2008. This legislation strengthens both civil and criminal laws against counterfeiting and piracy. Specifically, the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration’s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts.

Finally, Deirdre Sheridan gave a brief presentation regarding trademark damages, which included an update on damages case law and a discussion

regarding willfulness as a prerequisite to damages.

Following the presentations, the Committees addressed general committee business, including, for the Trademark Committees, an overview of the current activities by the various committees and requests for volunteers on upcoming projects such as the trademark boot camp, proposed legislation, upcoming professional programs, including on-line programs, a public education project proposed by the Public Education Committee, and ongoing case summaries prepared by the Trademark Litigation Committee. The Trademark Litigation Committee’s January 2009 Case Summary report, covering cases decided in the 4th quarter of 2008, is available on its committee page at the AIPLA website.

On Friday, the Trademark Law Committee held a one-hour working session on proposed legislation to amend the Lanham Act to include protection for well-known marks. The session was well attended and the group had a lively and informative discussion about the proposed changes. The Committee is presently updating its proposed resolutions based on this meeting and will be voting on them shortly.


Trademark InternetMatthew Nelles, Chair (left photo)Joe Keeley, Vice-Chair (right photo)___________________________________________

Trademark Treaties & International LawB. Brett Heavner, Chair (left photo)Janet M. Fuhrer, Vice-Chair (right photo)___________________________________________



Trademark-Relations with the USPTOTerence Dixon, Chair (left photo)Linda McLeod, Vice-Chair–Inter Partes (center photo)Jody H. Drake, Vice-Chair–Prosecution (right photo)___________________________________________



AmicusPatrick J. Coyne, Chair (photo right)Edward Robert Reines___________________________________________

Amicus participation is a critical component of the AIPLA’s public policy efforts. Too often,

however, we find out about opportunities too late in the process to participate effectively. In order to address this concern, the Amicus Committee, in conjunction with the Board, has undertaken five major initiatives since October to attempt to expedite our consideration of the issues in cases in which we may wish to participate.

Amicus LiaisonThe Amicus Committee has undertaken to involve various of the substantive law committees in our consideration of cases. Some of these efforts have been informal, through increased contact with substantive Committee Chairs on an ad hoc basis to elicit their views on issues that the Committee is considering, while others have been more formal. In October, members of the Amicus Committee were assigned to a number of the substantive law committees and the substantive law committees were solicited to appoint liaison members to the Amicus Committee. This process is now well-underway and the liaison group is holding monthly telephone conference calls to discuss the Amicus Committee’s progress on various substantive issues and to solicit from the various substantive law committees their views on cases that are being considered as well as on new cases in which the AIPLA may wish to consider participating. This process has brought a number of new cases to the Committee’s attention. A complete list of liaisons is available on the Amicus Committee’s microsite.

Federal Circuit Rule ChangeThe US Court of Appeals for the Federal Circuit recently amended its rules to permit additional time for the filing of amicus briefs. In November of last year, the Court considered a proposed rule change that would have expanded the time for filing a petition

for rehearing, and the time for filing an amicus brief. In December, AIPLA submitted comments to the Rules Committee of the US Court of Appeals for the Federal Circuit, encouraging the Court to adopt these expanded time limits. In this letter we identified specific cases in which expansion of the time limits as proposed by the Court might have permitted AIPLA to participate in cases in which it did not have sufficient time either to consider its position fully or prepare a suitable amicus filing. AIPLA was among several amicus filers who supported the proposed rule change.

On February 6, 2009, the Federal Circuit issued changes to Federal Circuit Rules 35 and 40. Specifically, the time for filing a petition for rehearing has been revised to 30 days (from 14) after the entry of judgment and, in cases in which the United States is a party, 45 days after entry of judgment. An amicus brief related to a petition for rehearing must now be filed within 14 calendar days (from 7) of the date of filing of the petition or response that the amicus curiae supports.

These changes will provide AIPLA substantial additional time within which to consider participating in cases that are before the Federal Circuit on a petition for rehearing and to file a substantive brief with the court. For example, provided AIPLA is aware of the case prior to the filing of the petition, these rule changes will give AIPLA up to an additional three weeks of time to consider and draft an amicus submission. This will be a huge benefit to the Association and its members.

Accelerate Consideration of Amicus OpportunitiesWe have attempted to accelerate the time period for consideration of amicus participation by attempting to identify cases early in the review process, even


before a petition for rehearing or petition for writ of certiorari is filed. To this end, the Amicus Committee is reviewing a substantial number of cases, many of them prior to the time when petitions for rehearing or a petition for writ of certiorari are actually filed. This has also expanded the time available for consultation with the substantive law committees, for formulating our positions on various issues, and for preparing our amicus submissions.

FocusIn view of the increasing number of cases enjoying en banc rehearing and Supreme Court review, the number of cases that the Amicus Committee has evaluated has expanded this year, relative to prior years. In order to make these efforts more productive, the Amicus Committee has aligned its focus with the Board’s other public policy outreach programs. AIPLA is currently involved in a number of public policy outreach initiatives with respect to patent reform and the administration of the courts.

In October, the Committee identified a number of substantive issues that it was planning to monitor this year. The Committee has followed through on these initiatives but is also mindful of looking for opportunities where amicus filings can strengthen and support the Board’s public policy outreach initiatives. Among the several topics identified in the Committee’s October report, we are particularly mindful of amicus opportunities with respect to issues of fraud and inequitable conduct, and damages.

Amicus NetworkThe Board recently instituted a mechanism to coordinate amicus filings among other frequent amicus filers with whom the AIPLA is often aligned. This program will help share resources and coordinate our positions in appropriate cases, hopefully increasing our impact while lessening the burden on the Court of receiving multiple briefs espousing the same position.

I. Recent Amicus FilingsSince October, the Amicus Committee has considered over 40 cases on the merits. Of these, formal votes have been taken in approximately 30 cases. Briefs have been filed in 4 cases.

Haulapai Tribe v. Grand Canyon West (2009-1012) is an appeal to the Federal Circuit from a decision of the Trademark Trial and Appeal Board. The Grand Canyon West case involves the trademark “GRAND CANYON WEST” for use in conjunction with air transportation services, an activity that is regulated and requires a license from the appropriate regulatory authorities. The Trademark Trial and Appeal Board held that the applicant committed fraud on the Trademark Office in claiming first use at a time when such use would have been unlicensed and canceled the registrant’s registration for the mark. This case raises issues similar to those in the Bose case in which the Association participated as amicus last year. Bill Barber drafted a brief on behalf of AIPLA articulating the same positions that the Association had previously taken in the Bose case. The brief was filed on December 4, 2008, and the case is currently awaiting decision at the Federal Circuit.

Prometheus v. Mayo Labs. (2008-1403) is an appeal to the US Court of Appeals for the Federal Circuit from a decision of the US District Court for the Southern District of California. The Prometheus case is pending at the pre-panel decision level at the Federal Circuit. The case was originally scheduled to be heard last year and the Court continued the briefing schedule in Prometheus in view of the Court’s impending en banc decision in In re Bilski. After the Bilski decision was issued last year, the Court reset the briefing schedule in Prometheus.

In Prometheus, the district court held that the intermediate metabolite that was formed by ingesting a drug is a “naturally occurring” substance and therefore unpatentable. At the panel stage, we are, as is the panel, bound by the Court’s en banc ruling in In re Bilski. The Association’s brief, which was drafted by Ed Reines, articulates why the invention at issue in Prometheus is patentable under the standard articulated by the Court in Bilski.

Cardiac Pacemakers v. St. Jude (2007-1296) involves whether Section 271(f) limits the damages that can be recovered for infringement of a method


claim. This issue was raised previously in the Union Carbide v. Shell case. The Association participated as amicus in the Union Carbide case but the case was resolved prior to a decision on the merits. The same issue is raised again in Cardiac Pacemakers. In the Union Carbide case, AIPLA filed jointly with the Federal Circuit Bar Association an amicus brief articulating why Section 271(f) should not operate to limit damages in the manner the court below ruled that it did. The Associations again cooperated in preparation of a brief in the Cardiac Pacemakers case, articulating the positions that they had espoused in the prior Union Carbide appeal.

In re Bilski. On January 28, 2009, Bilski filed a petition for a writ of certiorari with the United States Supreme Court asking the Court to modify the Federal Circuit’s en banc decision in the In re Bilski case, establishing the “machine-or-transformation test” as the standard for subject matter patentability of a process claim. AIPLA previously filed an amicus brief in the Bilski case when it was pending at the US Court of Appeals for the Federal Circuit. The Federal Circuit, however, declined to follow AIPLA’s recommendations and AIPLA has submitted an amicus brief, pursuing this issue further, on Bilski’s petition for writ of certiorari. AIPLA’s brief, authored by Bill West, was filed on March 2, 2009.

II. Cases in Which Cert was DeniedThe Amicus Committee has also been monitoring a number of cases in which petitions for a writ of certiorari were ultimately denied.

In re Volkswagen involves an appeal from the Fifth Circuit Court of Appeals’ issuance of a writ of mandamus to the US District Court for the Eastern District of Texas requiring that the case be transferred to the Dallas Division. The VW case involved a motor vehicle accident in which the events occurred and the witnesses and participants resided in the Dallas Division (N.D. Tex.). Plaintiff chose to file the case in the Eastern District of Texas, which is typically viewed as a pro-plaintiff jurisdiction. The Fifth Circuit, in a divided en banc decision, issued a writ of

mandamus requiring that the case be transferred to the US District Court for the Northern District of Texas. The plaintiff petitioned for writ of certiorari, which was denied on February 23, 2009.

FTC v. Rambus involves participation in consensus standards-setting activity. The Federal Trade Commission held that Rambus had violated the custom and usage of trade by failing to disclose to other members of the standards setting organization (JEDEC) its intellectual property rights that were essential to the standard. The FTC held Rambus’ patents unenforceable. The US Court of Appeals for the District of Columbia Circuit reversed, holding that the Federal Trade Commission had not established that Rambus’ acts were the cause of any injury to competition. The Federal Trade Commission filed a petition for writ of certiorari, supported by numerous amicus filings. On February 23, 2009, the Supreme Court denied the petition for writ of certiorari.

Since October, the Committee has considered a number of other cases.

III. Pending CasesThe Committee is currently monitoring a number of other pending cases.

In re Comiskey. In addition to the Bilski decision, the Federal Circuit recently issued an en banc decision in the In re Comiskey case (2006-1286), involving whether claims to an auction process are patentable subject matter. The Federal Circuit has held that under the en banc decision in In re Bilski, certain claims are not patentable and remanded other claims back to the PTO for determination of subject matter patentability. The Comiskey case came to the Federal Circuit on an obviousness rejection. The Board of Patent Appeals and Interferences did not raise an issue of subject matter patentability; the Court raised this issue sua sponte. It is anticipated that a decision by the Supreme Court in the In re Bilski case could have a substantial impact on the outcome in the Comiskey case.

The Committee has also considered a number of appeals and petitions relating to inequitable


MentoringTroy M. Schmelzer, Chair (left photo)Kristiana M. Brugger, Vice-Chair (right photo)___________________________________________

conduct issues, including, Praxair v. ATMI (2007-1483, 1509) and Aventis Pharma, S.A. v. Amphastar Pharmaceuticals, Inc.

Lucent v. Dell and Microsoft (2008-1495) is currently pending at the Federal Circuit at the pre-panel decision stage. Microsoft and Lucent settled most of the issues in their case and reserved issues relating to infringement damages, a topic that attracted much attention on Capitol Hill during Patent Reform Legislation deliberations. Microsoft is arguing, among other issues, that the quantum of damages for infringement for inducement should be limited to the degree of direct infringement that has actually been proven.

We are continuing to monitor cases raising similar damages issues for appropriate cases in which to participate. In addition, the Committee is carefully screening cases to attempt to identify an appropriate vehicle for the Court to reconsider its Cybor decision, involving whether or not deference should be given to the district court on issues of claim construction.

The Amicus Committee continues to solicit input from all members of AIPLA regarding appropriate cases. In particular, we are looking for cases to support the Board’s public policy initiatives. Please feel free to contact Ed Reines or myself if there are any cases that you feel that we should consider or wish to participate in our monthly liaison calls.

The Mentoring Committee met at the 2009 Mid-Winter Institute. The discussion focused

primarily on the Mentor of the Year award, which the Board has approved and will be awarded for the first time at the 2009 Annual Meeting. The Committee discussed how to encourage feedback and return of evaluations by mentors and mentees, which are important to the decision-making process for the award. Theresa Corneau and Daphne Lainson, who were present at the meeting, agreed to help in follow up with mentors and mentees to obtain the needed feedback. The Committee also decided that its business meeting at the 2009 Spring Meeting will be dedicated primarily to Mentor of the Year consideration.

The Committee also discussed the continuing need to update its Committee microsite and make it more visible and accessible to potential mentors and mentees. Daphne Lainson, who recently upgraded the Women in IP Law Committee

microsite, agreed to help improve the Mentoring Committee site.

The Committee discussed its continuing efforts to increase recognition and acknowledgement of mentors. In this regard, the Committee is pleased to report that an insert was included with the 2008 Annual Meeting Bulletin providing a listing of those mentors completing at least one full year as mentors, and recognizing their service and dedication.

Finally, the Committee wrapped up its discussion and planning for the Mentoring/Leadership track at the 2009 Spring Meeting.


EducationJ. Timothy Meigs, Chair (left photo)Troy E. Grabow, Vice-Chair (right photo)___________________________________________

At the 2009 Mid-Winter Institute, the Education Committee participated in a joint program with

the Young Lawyers and Law Students Committees that featured a panel discussion on transitioning in-house: skills that young lawyers need to develop before making the leap. In particular, Wayne Sobon of Accenture, Manny Schecter of IBM, Guy Donatiello of Endo Pharmaceuticals, James Carruth of Shell Oil, and Education Committee Chair Tim Meigs of BD discussed the type and nature of work perfomed by in-house counsel and the skills needed to work in-house. The panelists also discussed the skills a young lawyer/junior associate should develop if they want to go in-house in the future. Additional details are in the report by the Young Lawyers and Law Student Committees, but the Education Committee would like to thank Ehab Samuel of the Young Lawyers Committee for moderating this lively and interesting panel discussion.

I. Practical Patent Prosecution Training for New Lawyers Program (“Boot Camp”).The Education Committee is actively planning for this year’s AIPLA Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”), which is scheduled for August 26-28, 2009, at the Westin Alexandria. The Patent Boot Camp has been offered annually for several years, and includes instructional sessions and hand-on claims drafting workshops taught by skilled and experienced private and corporate practitioners. This popular three-day program hit a new record in August, 2008, with over 200 in attendance. We anticipate at least as much interest next year in view of the various actual and proposed changes in the PTO’s rules and the patent laws. We have started a new subcommittee for planning of the Boot Camp; please let us know if you would like to volunteer. Another way for committee members to get involved would be to attend or serve as an instructor at the Patent Boot Camp. Please be

sure to look for our upcoming announcements and encourage your friends and colleagues to attend.

II. Trademark Boot Camp. To increase awareness of AIPLA as a preeminent organization and resource for U.S. trademark attorneys and to further the AIPLA strategic mission of enhancing knowledge for a diverse IP community, the Education Committee is assisting the Trademark Committee in organizing a one-day Trademark Boot Camp program, which will be held at the Westin Alexandria on June 17, 2009. Generally following the format of the Patent Boot Camp, the Trademark Boot Camp will cover basic trademark prosecution techniques and will be primarily directed to young attorneys or attorneys new to the area of trademark prosecution. Please contact one of us or Kim Van Voorhis if you are interested in getting involved.

III. The Coordination Role of the Education Committee:The Education Committee will continue to serve as a communication, networking and teaching resource. The Committee plans to continue its liaison activities with the substantive committees and hold joint meetings with other Committees on topics of interest to a cross-section of attorneys. For example, in addition to the in-house panel discussion at the 2009 Mid-Winter Institute, the Education Committee joined with the Young Lawyers Committee at the 2008 Spring Meeting for a program on e-discovery. We worked with the Online Programs committee to develop the June 2008, live online seminar: “Initial ‘Inventor’ Interview: Practical Legal and Business Considerations,” which served as a “teaser” for the 2008 Patent Boot Camp. And, at the 2008 Annual Meeting, the Education Committee participated in a joint program with the Young Lawyers and Law Students Committees on how to get involved in the leadership of the AIPLA. Finally, the Education


IP Law AssociationsPhilip T. Petti, Chair (left photo)Fraser Roy, Vice-Chair (right photo)___________________________________________

Committee is in the process of forming several subcommittees relating to educating law students, law school administrators, and others concerning careers in intellectual property law. Please let us know if you would like to volunteer. Once again, we are always looking for new ideas so let us know if you have any suggestions.

For information on the Education Committee, please contact:Tim Meigs ([email protected]) orTroy Grabow ([email protected]).

Our committee meeting at the January 2009 Mid-Winter was used as a planning and

organizational meeting resulting in the creation of three sub-committees (E-Mailer Sub-Committee, Micro-Site Sub-Committee, and Regional Roundtable Sub-Committee) and updating of AIPLA Committee Liaison appointments and Regional Association assignments. To briefly summarize our meeting:

I. Welcome and introductions– We welcomed the members of the committee and discussed the charge of the committee to enhance the relationships and communications between the local and regional associations and the AIPLA. Identified the need for additional members, with two current openings for committee members.

II. Sub-committee Creation– Identified specific sub-committees, sub-committee members, and associated responsibilities, focuses, and purposes. These sub-committees included:

E-Mailer Sub-Committee – Charged with crafting e-mailers to the regional and local associations, including obtaining content for the emailer, such as Patent and Trademark Boot camp updates, invitation to Women in IP national dinner, and AIPLA’s request for support to oppose legislation or participate as a signatory to an Amicus brief.

Micro-Site Sub-Committee – Charged with maintaining accuracy of committee’s microsite, including developing and updating content with committee information, reports, and minutes and increase accessibility to regional and local associations.

Regional Roundtable Sub-Committee – Charged with developing discussion topics and organizing and hosting regional roundtable discussions with leaders of regional and local associations using GoToMeetings, Webinairs, etc.

III. AIPLA Committee Liaison Appointments – Appointment of new liaisons for the following AIPLA Committees: Biotechnology, Diversity in IP Law, Law Student, Mentoring, Women In IP Law, Alternative Dispute Resolution, Online Programs, and Professional Programs.

IV. Roundtable Topic Development– We briefly summarized our committee’s goal with the roundtables to enhance communication between geographically positioned regional and local associations and AIPLA. Committee members will host roundtables for their local and regional associations and develop roundtable topics beneficial to those associations.

A complete list of Sub-Committee assignments and duties will be posted to our Committee’s microsite.




MembershipJerry Selinger, Chair (left photo)Bryan W. Bockhop Vice-Chair (right photo)___________________________________________

The Membership Committee met during the Mid-Winter Institute. One topic we discussed was the

ongoing Membership Video project, which is being coordinated by the Online Programs Committee. Shannon Bates, Vice Chair of the Online Programs Committee, attended the meeting. Cheryl Agris is spearheading the project for the Membership Committee. The outside consultant responsible for that project also attended the committee meeting and shared his insights and expertise with us. We discussed the issue of reduced dues for senior members who have not completely retired. It was noted that there is a mechanism to accommodate people having financial hardships; and information on this mechanism on renewal cards will be included. The Committee has been asked to

consider the possibility of creating an “associate membership” classification for non-attorneys who are not registered United States Patent Agents. Associate members could include anyone who has an interest in IP law. Jerry Selinger will take the laboring oar on this issue. Finally, we discussed programs for the Spring Meeting and the Annual Meeting. Our Spring Meeting will be a networking reception for solo and small firm practitioners. We had a very successful reception at the Annual Meeting, but thought west coast members who are solo or small firm practitioners might not have had an opportunity to participate in that event. We expect to have a sponsor for that event.

Online ProgramsJames E. Ruland, Chair (left photo)Shannon Beech, Vice-Chair (right photo)___________________________________________

Our Mission is to provide high quality, affordable education by means of an online media.

Our vision is to develop and prepare technological options and vendors to be able to work with other groups within the organization to identify, develop, and provide, efficiently and effectively, online program content to the AIPLA as a whole and to their constituents and to facilitate others in the AIPLA to utilize online media for program delivery.

EXECUTIVE SUMMARYThe focus in the past calendar year has been the

preparation and presentation of live online CLE programs. Our program on PCT Updates on April 9, 2008 had the largest attendance for any regularly scheduled online program to date with 410 sites and 1272 attendees. Our program on A Practical Response to KSR on August 6, 2008 was also very well received with 395 sites and 1189 attendees. The program with the largest attendance to date is our program on the proposed USPTO rules put on in September 2007 with over 650 sites registered and 3,194 attendees. We conducted twelve programs in 2008, two of which were quick turnaround programs, and we will be conducting eleven


scheduled programs in 2009 with at least one or two additional quick turnaround programs (with one such program being presented in January 2009). Moreover, the Committee is developing expertise in the delivery of live online programs through other low cost vehicles in cooperation with other AIPLA Committees. As the number of programs has grown, Online Programs has been working to increase not only the number, but the practice diversity of our coordinators. The Committee is initiating use of the TSC liaison program to accomplish this goal. Additionally, Online Programs continues to work to build and maintain an active and growing catalog of enhanced recorded content from the Stated Meetings, previous online programs and other AIPLA educational events. Further, in cooperation with the Membership Committee, Online Programs is creating a video for new and potential members to be placed on AIPLA’s website with capture for this video being performed at the 2009 Spring Meeting. Previously recorded online programs are being marketed for re-sale in packages during the winter of 2009. In sum, Online Programs is steadily expanding interactive content.

SPECIFIC TASKS UPDATE AND GOING FORWARDThe Online Programs Committee has taken on the following specific tasks to advance the overall goal of the Committee to put on high quality, diverse and financially responsible live, interactive programs. Our goal is to maintain our pace of about one program a month with the flexibility to do 1-3 additional rapid response programs. We are working with other substantive committees to develop online content.

With the license for the GoToMeeting and GoToWebinar products we have been focusing on developing expertise on GoToWebinar and accompanying procedures through our subcommittee. The general GoToWebinar procedures are now complete. This subcommittee has been assisting the Corporate Practice Committee in performing online programs with Citrix GoToWebinar. An appendix to the GoToWebinar procedures will be developed in cooperation with other AIPLA Committees as needed and has

already been completed for the Corporate Practice Committee. The subcommittee is working with the Electronic and Computer Law Committee to develop webinars for members of that committee. The goal is to have subcommittee members available as a resource to assist other AIPLA committees to use the Citrix platforms and reduce the workload on AIPLA headquarters staff.

In response to the changing economic environment, starting on January 23, 2009 AIPLA is sponsoring a Career and Practice Management series of webinars that will be complimentary to all AIPLA members. This series will be performed on the GoToWebinar program with one program offered every 1-2 months. The first program on January 23, 2009 was very successful. The second program was held on March 19, 2009 and attendance grew from the January program.

The work on reinvigorating the microsite is ongoing with a subcommittee ensuring that procedures, quality data and attendance parameters for completed programs are updated on an ongoing basis.

We will also assist with identifying solutions and evaluating platforms for improving systems for improving customer services and processing customer requirements, such as CLE applications.

OVERALL APPROACH:The Committee continues to pursue three major avenues of approach to providing online programs.

Recorded Live PresentationsAIPLA is continuing to explore various platforms for recording live meeting content, including recording from live streaming video of the meeting.

Live Moderated Online ProgramsThe Committee continues to work with KRM to produce and deliver high-end, live, interactive online CLE programs. The subject matter has been diverse and the response has been pretty uniformly positive. The financial results have provided not only payback of direct costs, but have also made an overhead contribution to indirect


costs while providing a profit to AIPLA. We have various programs already in different stages of development for 2009. We will try to maintain our pace of one program a month with the flexibility to do 1-3 additional rapid response programs.

Internally Administered Web-based ProgramsTwo trial programs utilizing Genesys were performed on May 15, 2007 and November 8, 2007. However, with the license from Citrix GoToWebinar, Genesys is not currently being utilized. Rather, we have started using Citrix GoToWebinar as our platform for future low cost programs with the first such program conducted February 14, 2008. We have appointed Committee members under the guidance of the Chair and Vice-Chair to help with coordinating this class of online programs, and as numbers increase likely several members will rotate through this role for respective programs.

PROGRESS REPORT ON LIVE, INTERACTIVE ONLINE PROGRAMS:

FinancialsWe have revised the current pricing structure with a goal of obtaining a break-even point at about 100 sites. We are continuously monitoring our financial returns to ascertain the economic success of the programs.

Quality (Absolute)The reviews from the attendees through the evaluations have been very good, with a high percentage filling out the online evaluation (compared with the percentage who evaluate the stated meetings). The quality has been about the same or better than the stated meetings.

The ProgramsA history of the live interactive seminars that Online Programs has completed since December 2004 is available on the committee microsite.

FutureWe are working with the IP Law Association Committee to explore promoting programs to non-AIPLA groups. We are working toward a long-term goal of a program every month while avoiding the stated meetings.

We are continuing to work with the Corporate Practice Committee and the Electronic and Computer Law Committee to put on regular programs for members of these committees on topics of interest.

The following is our schedule of upcoming programs for 2009:

ONLINE PROGRAMS SCHEDULEMay 6, 2009 - Initial Considerations in Seeking Trademark ProtectionCooridinators: Jim Ruland, Cheryl Agris

June 3, 2009 - Patent Prosecution Highway Cooridinators: Shannon Beech, Jennifer Rogers

July 1, 2009 - Confidentiality Agreements Cooridinators: Noel Humphreys, Tracey Harrach

August 5, 2009 - User Generated Content Cooridinators: Darren Frankling, Brian Bockhop

September 2, 2009 - Subject Matter Eligibility Cooridinators: Shannon Beech, Cheryl Agris

October 7, 2009 - Foreign Law and Trademarks Cooridinators: Jim Ruland, Michael Ballard

November 4, 2009 - Year End Review Cooridinators: Brad Chin, Arlene Neal

December 2, 2009 - Email Ethics Cooridinators: Phil Petti, Hetal Kushwaha

We are working with the Trademark Committee to present a program on a quick turnaround basis after the anticipated Bose decision.

We are also anticipating a quick turnaround program on the patent reform bill when it comes out. We continue to have dialog with various committees about content they would like to see and/or help develop.

To increase coordinators and to better the content of programs to the varied AIPLA membership, Online Programs is initiating the TSC Liaison Program with the collective trademark committees to expand the online offerings to members in the trademark practice groups.


IP Practice in EuropeJames D. Carruth, Co-Chair (left photo)Jonathan M. Madsen, Co-Chair (right photo)___________________________________________

The IP Practice in Europe Committee works to establish and maintain relations with professional

societies in Europe whose members are interested in intellectual property law. Committee members study European law and practice and report on issues of interest to the association Board of Directors and membership.

The Committee also provides information on US intellectual property law to any interested party in Europe, if called upon to do so. This Committee coordinates its activities with the International and Foreign Law Committee.

The Committee has been active in working to accomplish committee objectives. At the Mid-Winter Institute we held a CLE session focused on IP Enforcement in Europe, where a panel of speakers presented on topics such as: EPO Opposition Practice vs. Litigation; The Enforcement Directive; Recent Developments in European IP Protection; and Managing European Patent Litigation from a US Perspective.

During the first week of March (March 2 – March 6), the Committee is holding its second Annual European Trip. This year more than twenty delegates representing both the Committee and AIPLA in general will travel to Europe to meet with various European intellectual property law organizations, such as: the Chartered Institute of Patent Attorneys based in the UK; the French Corporate Patent Attorney’s Association; the German Patent Attorneys Association, the European Patent Office, and the Swiss and European Patent Attorneys Association (VESPA). The delegates will give formal presentations on various IP topics.

The Committee has been and will continue to gather information and commentary for inclusion in possible

amicus submittals in pertinent proceedings involving European IP practice. For example, Committee members have worked to provide comments to be submitted on behalf of AIPLA at the request of the European Commission and with regard to the recent Preliminary Report on the European Commission’s Pharmaceutical Sector Inquiry. In addition, Committee members have provided feedback for an amicus submission in the present matter before the EPO Enlarged Board of Appeals regarding the patentability of computer programs in Europe. The Committee continues to seek the input of its members to help AIPLA influence the ever-changing landscape of intellectual property law.

At the Spring Meeting, the Committee has organized a special Joint CLE session with the Chartered Institute of Patent Attorneys (CIPA). Members of CIPA will present topics about Practical European Patent Issues. In return, our Committee members will present topics to CIPA on issues relative to current US patent practice. The Joint CLE session marks the second time in recent years that our Committee has teamed with CIPA to provide broad-based educational training about IP matters that span the Atlantic.

To keep on pace with our goal of providing CLE training at every Committee meeting, we plan on holding another Joint Committee CLE session at the 2009 Annual meeting with the Biotechnology Committee and the IP Practice in Japan Committee. We also plan to hold another separate educational session just with our committee.


IP Practice in JapanDavid Schnapf, Co-Chair (left photo)Mark A. Guetlich, Co-Chair (right photo)___________________________________________

The IP Practice in Japan Committee held its customary one and a half day “pre-

meeting” prior to the AIPLA’s 2009 Mid-Winter Meeting in Miami. The pre-meeting, held on Tuesday and Wednesday January 27 and 28, 2009, was attended by more than 25 committee members and a dozen delegates from Japan. This is considered to be a solid turnout for the committee’s Mid-Winter pre-meeting, especially in a down year. The Japanese delegates included representatives from the Japan Patent Attorneys Association (JPAA) and AIPPI/JFBA Japan. The meeting was presided over by Committee Co-Chairs David Schnapf and Mark Guetlich.

As usual, committee members and Japanese delegates alternated giving presentations on topics concerning US and Japanese law and practice of interest to the group. Copies of the presentation materials from the pre-meeting have been posted on the committee section of AIPLA’s web site.

After welcoming remarks from both sides, the Tuesday morning session included presentations by Ranja Sourirajan (2008 Federal Circuit Review), Tom Engellener (Mars v. Coin Acceptors – Damages where patent held by subsidiary), Sumiko Kobayashi (Appeal Proceedings before the JPO), Mercedes Meyer (Update on USPTO Rulemaking Initiatives), Yoshi Inaba (Correction of Claims Against Invalidation Defense), Shinichi Kimura (Invalidation before JPO) and Doug Sorensen (Texas Venue Decisions).

After a committee sponsored lunch, the afternoon session opened with a panel discussion on “Software and Business Method Patents,” with panelists David Schnapf (moderator), Hung Bui, Kay Konishi, Shoiichi Okuyama and Neil Henderson, followed by presentations by Steve Meyer (ITC Exclusion Orders), Masaharu

Takamura (Amendment Procedure after Invalidating Decisions in Invalidity or Opposition Proceedings), Takahiro Fujioka (Attorney-Client Privilege from JP Perspective), Joe Calvaruso (Qualcomm Decision and Inducement) and Austin Renfroe (Comparison of U.S. and European eBay Decisions). The group then adjourned for dinner at Texas de Brazil. Thanks to Chris Fildes for organizing the dinner event.

The meeting resumed Wednesday morning with presentations by Richard Beem (Obviousness-type Double Patenting), Darryl Webster (Patent Term Adjustment), Masashi Yanagida (Accelerated Examination and Super Accelerated Examination) and Bill Boshnick (U.S. Inter Partes Reexamination). The session ended with a second panel discussion on the “Intersection of Trademarks, Copyrights and Design Patents,” with panelists Mark Guetlich (moderator), Fumihiko Hirose, Dave Hill, George Lewis and Kozo Yabe.

This year’s Mid-Winter pre-meeting was considered to be very successful by all those who attended. The committee wishes to thank all those who gave presentations or who helped with the events. Questions regarding the committee and its activities can be addressed to either of the current Co-Chairs David Schnapf or Mark Guetlich.

The committee joined with the Electronic and Computer Law and the IP Practice in Asia Committees for a two-hour education meeting on software patents held on Thursday, January 29. There is a separate report for that joint meeting.

It is with deep regret that the committee recently learned of the death of Shinichi Kimura, who gave an informative presentation at the pre-meeting. Mr. Kimura was a frequent attendee and presenter at committee events and will be missed by all.


IP Practice in Latin AmericaJames A. Larson, Chair (left photo)Roberto Capriotti, Vice-Chair (right photo)___________________________________________

At the Mid-Winter Meeting, the IP Practice in Latin America Committee (“LAC”) conducted

a one-hour business meeting. The meeting was chaired by Mr. James Larson.

The meeting included a presentation by Mr. Richard Browne of De Sola, Pate & Browne of Caracas, Venezuela on recent changes in Venezuela’s IP laws along with general discussion of the same. The presentation was well received, and the LAC wishes to thank Mr. Browne for his time and insights.

Following the presentation, the chair introduced to the committee the concept of starting two subcommittees, one focused on Mexico/Central America, the other focused on South America. The role of the committees would be to report on changes in laws, regulations, case law, IP trends, etc. in those regions. The committee discussed the workings of such subcommittees and how often each subcommittee would report.

Finally, a brief update on the Latin America committee trip was provided, along with a discussion of upcoming topics for committee meetings.

International EducationWilliam S. Boshnick, Chair (left photo)Marc Hubbard, Vice-Chair (right photo)___________________________________________

On different occasions in 2008, members of the Committee met with delegates from People’s

Republic of China and South Korea to discuss US intellectual property policies and regulations and US governmental support and protection of intellectual property. For the upcoming year, the International Education Committee intends to continue to meet with such delegates.

For the 2008 Annual Meeting, the Committee held a well-attended joint CLE educational session with the PCT Issues Committee. The program for the

session, moderated by Vice-Chair Marc Hubbard, was entitled, “PCT Issues and International Education Joint Committee Education Session: A Global Patent Application.”

For the 2009 Mid-Winter Institute, the International Education Committee conducted a joint session with the Chemical Practice Committee and International and Foreign Law Committee, entitled “The Effect of Recent Changes in the Obviousness/Inventive Step Analysis on the Chemical and Pharmaceutical Industries – An International

The committee is currently working on its annual trip to Tokyo. In view of the effort involved in planning the Tokyo trip, the committee does not

plan to hold a meeting at the AIPLA Spring Meeting in San Diego.


Perspective.” This panel discussion was moderated by Mr. Michael Dzwonczyk of Sughrue Mion PLLC, and international panelists included Dr. Denis Schertenleib of Hirsch & Partners, who provided a French perspective; Mr. David Wilson of Herbert Smith, who provided a UK perspective; Mr. András Kupecz of Freshfields Bruckhaus Deringer LLP, who provided a Dutch perspective; and Michael E. Charles of Bereskin & Parr, who provided a Canadian perspective.

For 2009, the International Education Committee intends to continue to make arrangements for a

series of intellectual property lectures in Asia, and is currently directing its attention to the development of intellectual property laws and regulations in the African continent.

The International Education Committee, in response to requests, arranges seminars and lectures domestically and in foreign countries in order to educate those nations on the U.S. intellectual property law system. This committee also coordinates its activities with the other foreign law committees.

International and Foreign LawThomas T. Moga, Chair (left photo)Maria Eliseeva, Vice-Chair (right photo)___________________________________________

The International & Foreign Law Committee held a very successful joint committee meeting at

the Mid-Winter Institute with the Chemical Practice Committee and the International Education Committee. The title of the program was “The Effect of Recent Changes in the Obviousness/Inventive Step Analysis on the Chemical and Pharmaceutical Industries – An International Perspective.” The program was moderated by Mr. Michael Dzwonczyk of Sughrue Mion PLLC. The panel included Michael E. Charles of Bereskin & Parr (Canada), András Kupecz of Freshfields Brukhaus Deringer, LLP (Germany), Denis Schertenleib of Hirsch & Partners (France), and David Wilson of Herbert Smith (United Kingdom).

The International & Foreign Law Committee will hold a joint committee meeting with the Emerging Technologies Committee at the Spring Meeting. The topic will be the state of software protection in China, Europe, India, Latin America, and the US.

Looking ahead to the Annual Meeting, the I&FLC is assisting the Industrial Designs Committee and the Copyright Law Committee in formulating a program focused on the very timely and interesting topic of the intersection of design patent, copyright and trade dress laws and practice.

We hope to see all of you at the Spring Meeting in San Diego.

Chemical PracticeJeffrey A. Lindeman, Chair (left photo)Michael R. Dzwonczyk, Vice-Chair (right photo)___________________________________________

See International and Foreign Law Committee for report.


Corporate PracticeChen Wang, Chair (left photo)Georgann S. Grunebach, Vice-Chair (right photo)___________________________________________

Please see Patent Cooperation Treaty Issues Committee for report.

Copyright LawElizabeth Ann Morgan, Chair (left photo)Harry M. Barton, Vice-Chair (right photo)___________________________________________

To begin the year, the Copyright Law Committee is working with members of the AIPLA’s

Professional Programs Committee to coordinate 1.5 hours of CLE presentation related to copyright law for the Spring Meeting, to be held in San Diego from May 13-15, 2009. The Committee also anticipates coordinating copyright related programming for the

AIPLA’s 2009 Annual Meeting. Specifically, the Copyright Law Committee is collaborating with the Trademark Law, Anti-Counterfeiting and Anti-Piracy and Industrial Design Committees to plan a program concerning product configuration protection from a multidisciplinary approach, specifically related to funcitonality. In addition to these educational program

Patent Cooperation Treaty IssuesCarl Oppedahl, Chair (left photo)Jay A. Erstling, Vice-Chair (right photo)___________________________________________

The Corporate Practice Committee and the PCT Issues Committee met in joint session.

Samson Helfgott was thanked for his service to the PCT Issues Committee as chair. Succeeding him as chair is Carl Oppedahl, and Jay Erstling is now vice-chair of the PCT Issues Committee.

Matthew Bryan of WIPO presented on recent changes and developments for PCT. One important recent development is the availability of Supplemental International Searches.

A PCT applicant may now obtain SISs, which are supplemental searches in addition to the search carried out based upon the initial filing of a PCT application. This might for example permit an applicant to obtain art in different languages than the language or languages initially searched.

Members of the committees compared their experiences with various International Searching Authorities, particularly Korea.


efforts, the Committee will work with the Trademark committees on strategic planning and increasing membership and participation in AIPLA by copyright and trademark practitioners as well as academics. The Copyright Law Committee participated with the Trademark committees in the past year to survey AIPLA’s academic community to seek ideas for programming, prospective legislation and additional participation. Members of the committee are encouraged to contact the chair, Elizabeth Ann “Betty” Morgan and the vice chair, Harry M. Barton, with ideas for programs and to volunteer for projects such as monitoring legislation.

In early 2009, the Copyright Law Committee spearheaded the process of collecting input from AIPLA members related to the Copyright Office’s Notice of Proposed Rulemaking for Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies. The Copyright Office solicited comments from interested parties related to proposed exemptions to the Digital Millennium Copyright Act’s Anti-Circumvention provisions for certain classes of works. After soliciting input from the members of the Copyright Committee, Betty Morgan and Harry Barton drafted a resolution concerning the AIPLA’s positions on a number of the proposed exemptions, which Betty Morgan presented to the AIPLA Board at the Mid-Winter Institute. The Board did not formally adopt the resolution, but Todd Dickenson sent correspondence to the Copyright Office’s General Counsel expressing the AIPLA’s positions concerning the proposed exemptions. The Copyright Law Committee will continue to actively seek such opportunities to make the AIPLA’s positions on proposed legislation known.

At the 2009 Mid-Winter Institute, the Copyright Law Committee, along with the Anti-Counterfeiting and Anti-Piracy Committee and various Trademark Committees co-hosted a series of presentations on a variety of topics of interest to trademark, copyright and design lawyers.


Next, Amy Cahill of the Anti-Counterfeiting and Anti-Piracy Committee presented an overview of S. 3325, the Prioritizing Resources and Organization for Intellectual Property Act (“the PRO-IP Act”), signed into law in October 2008. This legislation strengthens both civil and criminal laws against counterfeiting and piracy. Specifically, the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration’s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts.

Next, Deirdre Sheridan gave a brief presentation regarding trademark damages, which included an update on damages case law and a discussion regarding willfulness as a prerequisite to damages.

Women in IP LawDaphne C. Lainson, Chair (left photo)Carey C. Jordan, Vice-Chair (right photo)___________________________________________

Nearly 100 participants gathered at the January AIPLA joint meeting of the Women

in IP Law and Diversity Committee Meeting.

Daphne Lainson, chair of the Women in IP Law Committee and Diallo Crenshaw, Chair of the Diversity in IP Law Committee provided updates


Please see Women in IP Law Committee for report.

Diversity in IP LawDiallo Crenshaw, Chair (left photo)Neema R. Desai, Vice-Chair (right photo)___________________________________________

on the activities of their committees. Check out the committee websites for information on these activities!

Special thanks to Howrey, who has graciously sponsored this breakfast meeting for many years!

Sharon R. Barner, a partner with Foley & Lardner, LLP and Chair of the firm’s 250 member Intellectual Property Department, spoke on “Management Tales from the Front Lines.” Although it is not possible to do justice to her talk in such a short format, Ms. Barner covered the following essential points:

Welcome to the Future: During the last 15 • years, the legal profession has been in an unsustainable growth pattern. So how do you sustain your career path in these times?

Have a Forward Focus: The conversations • need to be around getting out of the denial phase and moving on. Get back to delivering good quality legal service and value to the clients. A strict focus on numbers needs to be balanced with the quality of work and quality of life for all firm members. A law firm’s long term viability will depend on effective lawyer utilization, management of and investment in people, and clearly communicated expectations and performance feedback.

Build a Sustainable Business, Practice and • Career: These things can and must be taught to others in the firm. Each person needs to

establish a plan to build their own practice that they can see with one, three and five year goals. Time should be taken every day to build your practice – this is paying yourself first! Manage your workload so that you can invest in your future.

In Slow Times: Credential yourself. Learn, • write articles, and attend business meetings. Create efficiencies in your work, which will be needed to sustain your career. Be the architect of your own career. Have a Plan B.

Be Bold: Manage yourself and others by • seeking and providing regular, real-time transparent feedback and constructive criticism. Flexibility in the legal practice will help firms and attorneys get through these tough times. Technology doesn’t require attorneys to be in the office every day.

Be a good Corporate Citizen. Be a part of • your community at large – not just the legal community. Good citizens are needed now more than ever.

Connecting with Millenials: Harkening back to • the qualities of old, a profession that allows us to use our scientific abilities and service abilities will help us to reconnect with Millenials.

Ms. Barner’s talk was followed by a vigorous question and answer session. Our special thanks to Ms. Barner for sharing her valuable insights with us.


Electronic & Computer LawManny Schecter, Chair (left photo)Jacques L. Etkowicz, Vice-Chair (right photo)___________________________________________

At the 2009 Mid-Winter Meeting, the Electronic and Computer Law, IP Practice in Japan, and

IP Practice in the Far East Committees hosted a joint two-hour session titled “Patentability of Computer Implemented Inventions Domestically and Internationally.”

Skip Fisher and Jim Hallenbeck (Schwegman, Lundberg & Woessner) were the principle organizers of the session and Mr. Hallenbeck served as the session moderator. The distinguished speakers included Professor Ann McCrackin (Franklin Pierce Law School and Schwegman, Lundberg & Woessner), Doctor John Collins (Marks & Clerk), Kazunori Kurusu (Kurusu Patent Law Office), and Robin Zhao (Jeekai & Partners). The focus of the session was a comparison of the scope of patentable subject matter in the US, Europe, Japan, and China.

Ms. McCrackin opened the presentations with a review of US jurisprudence relating to computer implemented inventions. After reviewing 35 USC 101, she explained that the relevant USPTO Examination Guidelines are currently being revised. Ms. McCrackin then briefed the audience on In re Bilski. In Bilski, the CAFC recently held an abstract claim to a method of managing commodity consumption risk to be outside the scope of patentable subject matter and established the “machine or transformation” test for process claim patentability. In addition, the CAFC held that mere field of use limitations and insignificant extra-solution activities are insufficient to render patentable an otherwise unpatentable claim. Ms. McCrackin explained that subsequent lower court and USPTO Board of Patent Appeals and Interferences decisions have inconsistently interpreted the impact of Bilski on the patentability of machine-readable medium claims – even though such claims are not drawn

to processes. She also referenced In re Nuitjen as establishing that claims drawn to signals are not patentable.

Mr. Collins followed with a review of current jurisprudence in Europe. Mr. Collins cited the Comvik case for the current test for patentable subject matter in the EPO, requiring both technical content and a technical solution to a technical problem (ignoring non-technical features). He then contrasted the Comvik case with the status of the law of EPO member states Germany, France, and the United Kingdom. In an attempt to harmonize differences in the state of the law, particular with respect to the UK, Alison Brimelow, president of the EPO, recently referred a series of questions relating to the patentability of computer programs to the enlarged EPO Board of Appeals. Mr. Collins also indicated that claims directed to a computer program product, a computer readable medium having a computer program thereon, and a signal carrying a computer program are all patentable subject matter in the EPO. The claim adjudicated in Bilski was thought unlikely to qualify as patentable subject matter in the EPO or the major member states.

Mr. Kurusu summarized current jurisprudence in Japan. He explained that an invention in Japan must be technical. In addition, a software invention must either employ laws of nature or employ hardware resources interrelated with the software. Because business methods do not employ the laws of nature, business method claims require hardware recitations to be patentable. Mr. Kurusu indicated that claims directed to a computer program product or a computer readable medium having a computer program thereon may be patentable, but that claims directed to a signal carrying a computer


program are not patentable in Japan. The claim adjudicated in Bilski was thought unlikely to qualify as patentable subject matter in Japan. Mr. Zhao completed the presentations with a review of current jurisprudence in China. Mr. Zhao indicated that an invention in China must be a new technical solution using technical means and achieving a technical result. He explained that claims directed to a computer program product, a computer readable medium having a computer program thereon, and a signal carrying a computer program are not patentable in China. The claim adjudicated in Bilski was thought unlikely to qualify as patentable subject matter in China.

At the conclusion of the presentations, Mr. Hallenbeck presented claims recently adjudi-cated in the US and asked the non-US panelists to speculate as to their patentability in their

respective jurisdictions. In a demonstration of the inconsistency across jurisdictions, one claim which was found patentable in the US was also thought to be of patentable format in China, but not of patentable format in the EPO or Japan. The session concluded with the panel responding to questions from the audience.

Related MattersThe Electronic & Computer Law Committee is working with the Amicus Committee, Patent Law Committee, and others on input for an AIPLA amicus brief relating to the petition for cert in In re Bilski. Also, the Electronic & Computer Law Committee is working with the Amicus Committee, IP Practice in Europe Committee, and others on input for an AIPLA submission to the enlarged EPO Board of Appeals relating to the referral on software patentability by Alison Brimelow.

Emerging TechnologiesRaymond Van Dyke, Chair (left photo)Brian H. Batzli, Vice-Chair (right photo)___________________________________________

At the 2009 Mid-Winter Institute, the Emerging Technologies Committee conducted an

educational meeting followed by a brief business meeting. The meeting was chaired by Mr. Brian Batzli, the Vice Chair of the Emerging Technologies Committee.

After the welcomes and introductions, Mr. Batzli introduced two speakers from NASA’s Goddard Space Flight Center:

Ms. Nona Minnifield Cheeks (Director • Innovative Partnerships Program Office, Goddard Space Flight Center, NASA). Ms. Minnifield Cheeks described a number of the programs included within the Innovative Business Practices group at the Goddard Space Flight Center.

Mr. Bryan Geurts (Chief Patent Counsel, • Goddard Space Flight Center, NASA). Mr. Geurts’ spoke on the results, methodology and licensing structure associated with a recent patent license auction for underutilized Goddard Space Flight Center patents.

Outlines of the presentations will be posted on the Emerging Technologies Committee website shortly. The presentations were both well received, and the Emerging Technologies Committee wishes to thank Ms. Minnifield Cheeks and Mr. Geurts for their contributions.

At the conclusion of the educational portion of the meeting, Mr. Batzli led a brief discussion of the Emerging Technologies Committee plans for 2009. In the coming year, the Committee expects


to continue to study and provide educational opportunities. A joint educational meeting with the International and Foreign Law Committee will

be held at the Spring Stated meeting. The joint meeting will focus on emerging technology updates from around the world.

Patent AgentsJohn Orange, Chair (photo right)Esther M. Kepplinger, Vice-Chair (photo left)___________________________________________

The Patent-Relations with the USPTO and Patent Agents Committees held a joint meeting.

Continuing the tradition of having a USPTO official report on the status of operations at the USPTO, Robert Oberleitner, Acting Deputy Commissioner for Patent Operations, provided an informative review of PTO operations. A copy of his powerpoint presentation is posted on our committee page.

Some of the highlights of USPTO patent activities include:

a growth of 6.1% in the number of patent 1. applications filed in FY ’08 compared to FY ’07, although the number of applications filed in the first quarter of FY ’09 was down 1% from the same quarter last year;

filings of RCEs have tripled in the last ten years 2. to 24% of filings in FY ’08;

the examining staff now totals over 6,000 3. examiners with a 9.5% attrition rate in FY ’08 - the average number of years of service for each examiner is 5.73 years;

the rate of allowance of applications continues 4. to fall to 42% in the first quarter of FY ’09 from about 72% in FY ’00 - among other adverse affects, this reduces the fee income to the USPTO for issue and maintenance fees;

the rate of affirmance and affirmances-in-part at 5. the Board of Patent Appeals has grown to 74% in FY ’08 from about 40% in FY ’02;

an increase in the number of applicants (FY 6. ’08 - 1905 applicants) have used the provisions of Rule 138(d) to abandon applications before examination that were filed on/after December 8, 2004 and obtain a refund of any search and excess claims fees paid in that application; and

those applicants electing accelerated 7. examination can expect an average pendency of 194 days to complete prosecution, and those applications experienced an allowance rate of 69.7% in FY ’08.

Our committee prepared comments in response to the USPTO request for views on deferred examination. While AIPLA has traditionally opposed deferred examination due to concerns over delayed determination of the scope and content of patent rights and the increased uncertainty that such delay creates, AIPLA expressed a willingness to take a fresh look at the issue given the USPTO’s continuing struggle with pendency. A copy of the text of those comments is posted on the AIPLA website.


Young LawyersAlyson Barker, Co-Chair (left photo)Michael A. Valek, Co-Chair (right photo)___________________________________________

The Young Lawyers Committee had a very productive meeting in Miami. Thanks to the

organizational efforts of Ehab Samuel, the YLC hosted a Joint Meeting with the Law Student Committee on what young lawyers need to know if interested in a future career in-house. Ehab lined-up an all star group of panelists, including Manny Schechter (IBM), Guy Donatiello (Endo Pharmaceuticals), Wayne Sobon (Accenture), Timothy Meigs (Becton, Dickinson & Co.), and James Carruth (Shell Oil Company). Ehab served as moderator and had a series of probing questions for our panelists that led to an interesting and informative discussion.

The YLC also announced plans to increase opportunities for YLC members to interact with members of the Electronics and Computer Law Committee. The ECLC requested YLC volunteers to help coordinate a program on green technologies at the 2009 Annual Meeting and over 30 YLC members answered the call. The YLC and ECLC will continue to find opportunities for all of our interested volunteers. Thank you to Michael Nguyen and David Potashnik, our liaisons to the ECLC, for being proactive in reaching out to the ECLC. We encourage all of our liaisons to follow Michael and David’s lead and reach out to committee chairs to identify opportunities where you and other members of the YLC can get involved.

The YLC is currently in the grading period for the Annual Giles Rich Moot Court competition. Special thanks to Kimberly Van Voorhis for graciously volunteering to continue her tenure as National Director of the competition. With Kim at the helm the competition is always a great success. In addition, thank you to all of our regional directors and graders for taking time to participate in the competition. Plans are already underway for next year’s moot court competition. If you are interested in helping to co-author the problem for next year, please contain Alyson Barker ([email protected]) or Michael Valek ([email protected]).

The Watson Writing Competition is just around the corner and we have two new co-chairs, Jen Kuhn and Janet Gongola, for the YLC subcommittee that oversees the judging of submissions. Thanks Jen and Janet for volunteering to head this up.

As we move into Spring, the YLC has an exciting line-up of programs at the Spring Meeting in San Diego. Following a plenary session on Best Practices in Taking and Defending Depositions (moderated by YLC member Stephen Stout), the Young Lawyers Committee and the Education Committee will hold a joint-meeting to provide a hands-on opportunity for improving your deposition skills. We will have mock witnesses and a mock set of facts and YLC members will have an opportunity

Patent-Relations with the USPTOCharles E. Van Horn, Chair (left photo)Gregory D. Allen, Vice-Chair (right photo)___________________________________________

Please see Patent Agents Committee for report.





Law StudentsChristopher McKeon, Co-Chair (left photo)Jesse Ormsby, Co-Chair (right photo)___________________________________________

Currently the Law Student Committee is developing a network of student

representatives at law schools across the country to increase involvement in AIPLA.

Student representatives will be responsible for:

Correlation between your student IP 1. organizations and AIPLA;

Communicating of-interest information from 2. the Student Committee to your student body;

The local promotion of IP scholarship and 3. student interest in IP law by hosting at least one event at your law school per semester as an AIPLA event. These can be as simple as an informational lecture from a professor or practicing IP attorney, a meet-and-greet with local practitioners, etc. The event may also be co-hosted with your local IP student org, and law schools in the same city may work together if they’d like; and

Promoting student AIPLA membership.4.

We have volunteers from the following schools:

University of Virginia School of LawSanta Clara University School of LawTexas Wesleyan School of LawUniversity of Michigan Florida Coastal School of LawSouthwestern Law School

George Washington University Law SchoolMichigan State UniversityTulane University Law SchoolChicago-Kent College of LawGeorge Washington University Law SchoolSuffolk University Law SchoolGolden Gate University School of LawSt. John’s University School of LawUniversity of Houston Law CenterAmerican University, Washington College of LawIndiana University School of Law, John Marshall Law SchoolYeshiva University, Benjamin N. Cardozo School of LawAbraham Lincoln Law SchoolStanford University Law SchoolUniversity of Maryland School of LawDePaul University College of LawNew York Law SchoolUniversity of Baltimore, School of LawCase Western Reserve School of LawUniversity of San FranciscoUniversity of the Pacific, Mc George School of LawWilliam Mitchell College of LawTexas Tech School of LawSouth Texas College of LawBrooklyn Law SchoolNew York Law School

We are always looking for lawyers who are interested in working with the students. If you are interested in presenting or participating in student events at any of these schools, please email the Student Committee Co-Chairs.

to depose and defend the witnesses. Seasoned litigators will be on-hand to provide constructive feedback for improving your deposition skills.

If you are interested in helping to organize this program, please let Alyson or Mike know.


Alternative Dispute ResolutionRex B. Stratton, Chair (left photo)Harrie R. Samras, Vice-Chair (right photo)___________________________________________

BiotechnologyDeAnn F. Smith, Chair (left photo)Mercedes K. Meyer, Vice-Chair (right photo)___________________________________________

The ADR committee reviewed and discussed at the proposed neutral certification program

for ADR mediators who are AIPLA members and who have committed to mediation training and experience. The committee also discussed implementation of a new registry. A draft report was presented to the committee for review and comment and will be revised and then presented to the committee for further before the 2009 Spring Meeting in San Diego, California. The draft, as revised, is posted on our microsite for comment by active committee members before the Spring Meeting.

The committee also discussed the need to facilitate ADR-specific CLE that is not redundant of previous programs and to broaden the base of educational opportunities offered for ADR specific education. The Committee discussed presenting a two hour joint committee meeting with the Corporate Practice Committee at the 2009 Spring Meeting and to participate in a three hour breakout with the Trademark Committees at the 2009 Annual Meeting. The Committee also addressed doing a three hour breakout session at the 2010 Mid-Winter Institute at La Quinta.

The Patent Law and Biotechnology Committees held a joint meeting focusing on the recent

en banc Federal Circuit opinion, In re Bilski. Interestingly enough, our joint Committee Meeting was held the day after a petition for certiorari was filed with the Supreme Court raising two basic questions. First, whether the Federal Circuit erred by holding that a process must be tied to a particular machine or apparatus or transform a particular article to be eligible for patent protection. Second, whether the machine or transformation test for patent eligibility contradicts the clear Congressional intent that patents protect methods of conducting business under 35 U.S.C. § 273.

Three speakers addressed In re Bilski from different perspectives. Bradley Forrest focused

his presentation on what might happen to business methods and software after In re Bilski. Dr. Hans Sauer spoke to the implications that Bilski might have on biotechnology inventions. John Love addressed the Patent Office’s need to have clear standards for an examining core exceeding 6000 Examiners.

Mr. Forrest is a registered patent attorney and shareholder of Schwegman, Lundberg & Woessner. His practice is focused on patent prosecution for complex technologies, IP counseling and IP strategy formation, and opinion work and licensing. He is currently Vice Chair of the AIPLA Electronics and Computer Law Committee, and is an active speaker and publisher on all areas of intellectual property protection.


As part of his presentation, Mr. Forrest gave a comprehensive review of how the Bilski opinion dealt with the early decisions of Benson, Flook and Diehr over patentable subject matter. Mr. Forrest highlighted in his presentation that it was only 35 years ago (in 1972) when the Benson Court grappled over whether software should be patentable at all. Relying on the Supreme Court in Gottschalk v. Benson, the Bilski majority held that a claimed process is surely patent-eligible under §101 if it is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing. The Federal Circuit further acknowledged that a claim might contain statutory subject matter if it describes how to select the appropriate margin of safety, such as adjusting an alarm system or other variables articulated in Flook.

Mr. Forrest further identified the tests rejected by the Bilski court including the Freeman-Walter-Abele test (e.g., is the recited algorithm applied in any manner to physical elements or process steps?), and the State Street Bank test (e.g., does the transformation of data produce a useful, concrete and tangible result?). In his discussion on In re Abele, Mr. Forrest pointed out that the otherwise unpatentable display of the value of a difference as a point in a picture may be made patentable by displaying the same on a display device. He pointed out that the court noted that the transformation could apply to intangible subject matter representative of or constituting physical activity or objects. Mr. Forrest also spoke to field of use limitations and the possibility that such limitations may be considered a pre-emption. Finally, Mr. Forrest reviewed Board cases since Bilski and provided advice on what to claim now, particularly in the high tech area and until we receive further guidance.

Hans Sauer, Ph.D., J.D., offered a perspective from the biotech industry on Bilski. Dr. Sauer is the Associate General Counsel for Intellectual Property for the Biotechnology Industry Organization (BIO), a trade organization representing more than 1200 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.

Dr. Sauer began his presentation with a comparison of the clearly limited scope of the claims of Diehr with the broadly claimed, abstract and mathematical algorithm of Benson. Dr. Sauer then addressed the issues presented in Bilski: (1) whether the claim recites a fundamental principle and (2) if so, does the claim pre-empt substantially all uses of that fundamental principle. He spoke to how the court’s opinion linked preemption to a machine or transformation, and discussed what is not preempted. Dr. Sauer commented on the view of several of the Supreme Court Justices dissenting in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. that the claim to a method for detecting a deficiency of cobalamin or folate in warm-blooded animals was unpatentable subject matter. He also spoke about certain case law decided since Bilski including Classen v. Biogen Idec and Ex Parte Roberts. He introduced the Committees to some of the Patent Office’s efforts to implement Bilski (which was further expounded upon by our last speaker, John Love) and discussed in detail the Prometheus v. Mayo appeal and different positions taken by the Amicus Briefs submitted. Dr. Sauer mentioned the pending appeal in Ariad v. Lilly and noted that there were many questions raised by Bilski.

John J. Love was named Deputy Commissioner for Patent Examination Policy for the United States Patent and Trademark Office (USPTO) in January 2007. He is responsible for changes in patent practice, rules of practice and procedures, examining priorities, and classification of technological arts. He leads the operations of the Patent Legal Administration, Patent Cooperation Treaty (PCT) Legal Administration, and the Office of Petitions.

Mr. Love’s presentation went straight to the heart of the Patent Office’s attempt to implement the Bilski decision and its struggle to draw lines around whether a fundamental principle recited in a claim would “pre-empt substantially all uses of that fundamental principle if allowed.” Mr. Love informed the Committees that the USPTO was in the middle of its analysis to revise the guidelines with respect to software inventions. For this purpose, the Patent Office has engaged a cross functional team from


InterferenceW. Todd Baker, Chair (left photo)Herbert D. Hart, Vice-Chair (right photo)___________________________________________

External Affairs, the Board of Appeals and others. Once the guidelines are written, the Patent Office will seek public opinion. Mr. Love was not certain as to when this might happen. He noted that the petition for certiorari would complicate the timing of the revised guidelines process.

To give some insight on how difficult it is for the Patent Office to draft guidelines, Mr. Love walked the Committees through an analysis of: What is a machine? For example, is a transistor a machine? What about an integrated circuit or a data base? Does a system claim having method steps or physical structure fall under this statutory category of invention? What case law governs subject matter eligibility of a machine? Will Bilski creep into machine claims?

Mr. Love discussed two difficulties in applying Bilski. First, how much matter do you need to get into a claim? For example, if the process is tied to a computer, is this enough? Must it be a general purpose computer, or a particular computer? Second, do treatment claims (methods of treatment) represent a transformation of a particular article? Mr. Love indicated that he was a proponent of the useful, concrete and tangible result test. Mr. Love also suggested that diagnostic tests were at risk under Claussen. Lastly, Mr. Love suggested that, in his opinion, correlation claims in the life sciences are more likely to make their way to the Supreme Court.

Copies of the PowerPoint presentations made by Mr. Forrest and Dr. Sauer are available on the Patent Law Committee’s microsite.

The Interference Committee held an open discussion regarding how to improve

inter partes reexaminations conducted by the Central Reexamination Unit and appeals of the reexaminations to the Board of Patent Appeals and Interferences. The discussion focused on the following eight questions.

How can the contested case rules and the 1. rules governing inter partes reexamination be better integrated and/or formulated to ensure full, fair, and expeditious resolution of inter partes reexamination issues?

Patent LawNicholas P. Godici (left photo)Barbara A. Fiacco, Vice-Chair (right photo)___________________________________________

Please see Biotechnology Committe for report.


Several committee members discussed the merits of making inter partes reexamination follow similar procedures as interference practice. In particular, many members opined that case management techniques used by the BPAI to adjudicate interferences could improve inter partes reexaminations. Other members expressed concern that such a dramatic change would not be well received by a broader cross-section of the bar.

Should the rules create a form of “motion 2. practice,” resembling that in current interference practice, which will set the stage for a decision by the Office as to whether or not to grant the request for reexamination?

Several members of the committee indicated that implementing a motion practice would improve how the patentability issues to be considered by the CRU are framed. If the request for reexamination is granted, then following a motions type practice will result in a case having well defined issues for appeal. However, one committee member noted that the CRU would be overwhelmed by the volume of work product created by a motions type practice.

Could a “motions list” procedure eliminate the 3. opportunity and/or incentive for a requester to file multiple requests that rely on closely-related grounds of alleged unpatentability?

In interference practice, the BPAI requires each party to identify – at the beginning of the case – all motions it intends to file for approval/rejection by the APJ managing the case. The committee discussed the potential benefits of reducing the chances for a “second bite at the apple” in inter partes reexamination by employing a similar procedure. There was also a discussion of what changes could be made within the current regulations and statutes to reduce multiple closely related requests.

For example, could the rules grant authority to 4. a non-Examiner interlocutory decision-maker over proceedings to determine whether or not the request is granted?

One committee member indicated the PTO has hired several “patent attorneys” to assist the APJs with ex parte appeals. The patent attorneys at the Board could serve as non-examiner interlocutory decision-makers. However, the statutes provide for appeals to the BPAI. Thus, if an APJ or patent attorney served in this capacity, then that APJ or patent attorney would have to be excluded from the appeal process.

What level of decision-maker would be 5. appropriate? What qualifications should such a decision-maker have?

Several committee members indicated that it is beneficial to have the same person determine whether a substantial new question of patentability has been presented and examine the case. In any event, the decision-maker should be a high level examiner (e.g., a CRU examiner), an APJ, or a patent attorney working at the BPAI.

Are there any Appointments Clause issues 6. raised by the use of such a decision-maker?

One member expressed the view that, as in interferences, decisions in inter partes reexaminations will affect the substantive rights of the parties. For that reason, the decision-maker would likely have to be appointed by the Secretary, as are APJs.

The discussion then turned to a question of how far the procedural rules can be changed without stepping beyond what the statute allows. One committee member discussed recommendations that included, among other things, the BPAI controlling all parts of the proceeding and the requester proposing the first Office Action.

However, the discussion then returned to the question of how the BPAI could control inter partes reexamination proceedings without running afoul of the statutory requirements for examination and appeal to the BPAI. To address the need for “examination,” a


Professional ProgramsJ.Michael Martinez de Andino, ChairSteve Malin, Vice-Chair___________________________________________

committee member suggested that the senior examiners that are currently in the CRU could be managed by the BPAI. In the alternative, the patent attorneys that currently work with the BPAI could be designated as “Examiners.”

Would the express adoption of the evidentiary 7. rules presently in place for interferences for inter partes reexamination facilitate the creation of a better record for decision and review?

Several committee members expressed their support for this idea.

Should time limits, parallel to those in place 8. for interferences, be adopted for inter partes reexamination?

Several committee members expressed their support for this idea.

The Interference Committee and the Patent Law Committee have agreed to hold a two hour joint committee meeting at the upcoming Spring Meeting. During the meeting we will hold a town hall forum to continue discussing improving the

inter partes reexamination process. This portion of the meeting will begin with vice chair of the Interference committee, Herb Hart of McAndrews Held & Malloy, and past chair of the Interference Committee, Gene Rzucidlo of Hunton & Williams, reporting on the discussion at the ABA-IPL Committee 104 – Patent Inter Partes Proceedings CLE Roundtable. It is planned that members of a newly-formed joint subcommittee on inter partes reexamination will also present some specific ideas and proposals for improving the inter partes reexamination process. Topics for discussion will include questions such as where should jurisdiction for reexamination lie, what level of decision-maker is appropriate to pre-order practice, what standard should be used for deciding whether to initiate a proceeding, what is the best time table for a proceeding, what are the best practices/rules for expediting proceedings, and how appeals can be streamlined or expedited. With patent law reform back on the legislative agenda, there is a great deal of debate surrounding inter partes proceedings and the proposed post-grant review procedures. We expect this discussion will be lively and very relevant to all patent practitioners, and we welcome everyone’s participation.

At the 2009 Mid-Winter Institute in Miami, the Professional Programs Committee conducted

a successful one-hour business meeting. The meeting was chaired by J. Michael Martinez de Andino and Steve Malin. Various issues were discussed during the meeting, including (1) a discussion of the Committee’s goals for the current year, which include focusing on copyright, trademark and trade secret presentations, as well as patent presentations; (2) continuing the planning work for the Annual 2009 Program, including identifying coordinators and potential speakers for the Annual Meeting Program; (3) finalizing

details regarding the 2009 Spring Program. To assist the Committee in accomplishing its goals and objectives, we discussed the continuing use of the Speaker Topic Suggestion Form and the improved use of the Committee’s website for publishing more information.

The Committee meeting was well attended with 36 members present at the meeting and 12 members attending by telephone. Questions regarding the Committee and its activities can be addressed to either Mike Martinez or Steve Malin.


Law Practice ManagementAshok Mannava, Chair (left photo)Manisha Chakrabarti, Vice-Chair (right photo)___________________________________________

Licensing & Management of IP AssetsPaul S. Hunter, Chair (left photo)Kevin A. Wolff, Vice-Chair (right photo)___________________________________________

The Law Practice Management Committee’s main focus this year is the preparation and the

distribution of the results of the 2009 AIPLA Report on the Economic Survey. The preliminary draft of the 2009 Report will have been forwarded to the LPMC and AIPLA for review prior to the Spring Meeting. We will discuss making survey data from the 2009 Report available online and more specifically, consider what data to make available

and in what format. We will also discuss any other outstanding issues associated with the preparation of the final draft of the Report for 2009 before it is sent to the printers.

We also intend on holding presentations and panel discussions at future meetings. We will discuss potential topics, and will also explore joint programs with other AIPLA committees.

Welcome

The committee would like to welcome two new members. Welcome to Kristen Harkins of the

Conley Rose firm who would like to participate on the Best Practices subcommittee and to Lizbeth Hasse of the Creative Industry Law Group who would like to participate on the Trademark & Copyright subcommittee. Thank you for attending the 2009 AIPLA Mid-Winter meeting and joining our committee.

2009 Mid-Winter MeetingThe Licensing and Management of IP Asset Committee held a working meeting at the 2009 AIPLA Mid-Winter Meeting. The discussion focused on reviewing the present and future subcommittees, their chairs, and the specific future activities. It was discussed that the Licensing and Management of IP Asset Committee would continue to participate in planning and presenting

various informational and/or educational programs at the upcoming 2009 AIPLA Spring Meeting and the 2009 AIPLA Annual Meeting, and should try to have two programs per year and one working session meeting per year.

This year at the 2009 AIPLA Spring Meeting the Licensing and Management of IP Asset Committee will present a joint committee CLE program entitled Licensing Patents for Standards in conjunction with the Antitrust and the Electronic and Computer Committees. The topic for the Annual Meeting program is presently under discussion but includes topics such as a panel discussing some unique aspects of Licensing and Management of IP Assets around the world (e.g., Latin and South America, Asia, Europe, etc.), presentation of Unity of Invention issues and United Nations security interest, and a panel discussion or presentation of the current value of


IP protection in various countries around the world.

It was agreed that the Licensing and Management of IP Asset Committee should continue to include all the present subcommittees and begin working on deliverables again including sample materials and best practices. There was discussion that the Committee should commend the creation of a list of licensing and MIPA materials presently available from our past works and programs, perhaps using members of the Young Lawyers Committee. Further, the Committee noted that involvement with legislation and/or law developments may occur via the new liaisons with the Amicus Committee (see below).

There was a brief discussion of the involvement of the Committee with other bar organizations, e.g., the IPO, LES, INTA, local bars, etc. The Committee Vice-Chair, Kevin Wolff, met with a representative of the LES (Licensing Executive Society) after the Committee meeting, along with leaders of the AIPLA including Teresa Stanek Rea, Q. Todd Dickenson, Vincent Garlock and Jonathan Richards met with a representative of LES, Tom Filarski. The group decided that the AIPLA and LES would try to coordinate meeting schedules so that at least one of the leaders from each organization could attend the others meetings. The AIPLA Licensing and Management of IP Assets Committee will follow-up with the LES to determine if there are aspects of each group where further coordination and cooperation are possible and synergistic. More to follow.

With respect to subcommittee structure, in this regard the Committee will now determine whether the presently identified subcommittee chair persons are still interested in continuing as chairs. The list of subcommittees and their chairs will be revised over the next year and as presently understood follow.

SUBCOMMITTEE LIST AND PRESENTLY CHAIRS

IP CostsDomenic Leo, DataCert Inc. Houston, TX

Robert Silverman, Millennium PharmaceuticalsCambridge, MA

The subcommittee has been commissioned to coordinate a future educational session on tracking, managing, and analyzing costs related to identifying, creating, maintaining, and leveraging IP.

DiversityBill “Skip” Fisher, Schwabe, Williamson & WyattSeattle, WA

The subcommittee has been commissioned represent the Committee as liaison to the Diversity Committee (DC), to report to the Committee on issues and developments of the DC, and to coordinate activities of the Committee in support the DC.

Young LawyersAnkur Shah, Freddie MacMcLean, VA

Lesley Craig

The subcommittee has been commissioned represent the Committee as liaison to the Young Lawyers Committee (YLC), to report to the Committee on issues and developments of the YLC, and to coordinate activities of the Committee in support the YLC.

Trademark & CopyrightGretchen Prochaska Testerman,Qwest CommunicationsDenver, CO

The subcommittee has been commissioned to monitor and report to the Committee on issues and developments affecting creation, maintenance, licensing, and enforcement of trademarks and copyrights.

FormalitiesMarc Hubbard, Gardere, Wynne Sewell LLPDallas, TX

Kevin O’Brien, Alston & Bird, LLPCharlotte, NC


The subcommittee has been commissioned to take meeting minutes, collect necessary formal materials, and work with the Internet subcommittee to post updated materials.

Attended Mid-winter meeting. Will continue • as chairs. Need to add the chairs of this subcommittee to the AIPLA administration distribution list so that they can help prepare the Committee reports to the AIPLA.

InternetSalvatore Anastasi, Barley Snyder LLCBerwyn, PA

The subcommittee has been commissioned to maintain the committee’s micro site (http://www.aipla.org/MSTemplate.cfm?Site=Management_of_IP_Assets1).

In attendance. Will continue as chair of • subcommittee.

InternationalRobert Bauer, Lackenback Siegel, LLPScarsdale, NY

Jackie Klosek, Goodwin Proctor LLPNew York, NY

The subcommittee has been commissioned to monitor and report on international issues and developments that significantly affect creation, maintenance, licensing, and enforcement of IP assets.

Robert was in attendance and will continue • as chair. Brought up the discussion of issues relating to Unity of Invention and United Nations security interest.

Corporate PracticeRichard Ludwin, IBMArmonk, NJ

Mike Noonan, Freescale SemiconductorAustin, TX

The subcommittee has been commissioned to facilitate sharing of best practices and networking among in-house members of the committee.

Richard was in attendance at the Mid-winter • meeting and will continue as chair. He raised the issue of the topic current value of IP protection in various countries around the world. Proposal presented about possibly providing legal case summaries. Also, question about including Corporate Practice subcommittee within IP Protection and Maintenance subcommittee.

Capturing IP ValuePrevious Chairs: Tom Isaacson, Greg Novak, and Gina Durham. Salvatore Anastasi interested in being new chair.

This subcommittee had previously put together best practice flow charts and procedures related to capturing IP value. Some parts may need revision and there was a recommendation to take the revisions and any new best practices in smaller chunks for deliverables.

IP Protection & MaintenancePrevious Chairs: Kevin Wolff

This subcommittee had previously developed a check-list for due diligence studies. New chair needed for this subcommittee. Perhaps the Corporate Practice subcommittee chairs can chair this and role the two subcommittees together.

Competitive AssessmentsPrevious Chairs: Robin Coster and Craig Larson

This subcommittee had previously developed best practices related to comparing patents, patent families, and patent portfolios. For example, various patent mapping techniques were created and identified. Chairs were not present at Mid-winter Meeting. Determine if new chairs are needed.


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Leveraging IP/Strategy (Formerly IP Value Extraction)Previous Chairs: Gerald Welch and Lena Vinitskaya

This subcommittee is directed to IP monetization strategies. Best practices using various approaches have been developed and need to be determined where they are now. The chairs were not present at the Mid-winter Meeting and it is suggested that new chairs may be needed. Liaisons to the Amicus CommitteeChristopher Day of AOL and Jeff Sheldon of Sheldon Mak Rose & Anderson are the liaisons of the Licensing and Management of IP Asset

Committee to the Amicus Committee. In this role, they participate in a monthly conference call with all of the committee liaison members to revise and update the list of issues that the Amicus Committee is tracking; to identify potential amicus opportunities; and to identify potential drafters. 2008 Annual MeetingThe Licensing and Management of IP Asset Committee held a 1 1/2 hour CLE-requested meeting featuring speakers on licensing royalty rates and the effects of the Supreme Court decision in the Quanta case. See our report in the 2008 Annual Meeting Bulletin for details.

Patent LitigationPhilip S. Johnson, ChairRobert W. Payne, Vice-Chair (photo right)___________________________________________

The Patent Litigation Committee met in a well attended session at Mid-Winter Meeting on

Friday afternoon, January 30, 2009.

Members of the Committee interested in working on the updating of AIPLA’s Model Jury Instructions were asked to contact Vice-Chair Robert Payne, who is leading this project.

The remainder of the meeting was devoted to a presentation by G. Christopher Ritter, Esq., Member and Chief of Visual Trial Strategy at Focal Point. Mr. Ritter is a former trial lawyer who is now applying his considerable experience to the development and provision of demonstrative exhibits and visual aids for use in trials, particularly patent trials.

No written description can do justice to Mr. Ritter’s visual presentation, which focused not only on the “what” of demonstrative exhibits, but also on the “why” and “how” of getting a judge or jury to understand complex technical and/or legal concepts with the help of properly conceived and executed visuals.

Following Mr. Ritter’s presentation, an active discussion ensued where committee members shared their views and experiences in different jurisdictions with different forms of demonstratives. The discussion would have lasted longer, but for the fact that the room was otherwise committed.The Chair received numerous comments throughout the remainder of the meeting that the presentation was one of the best and most entertaining that they had seen at any AIPLA meeting in recent recollection.


Public EducationMichael Piper, Chair (photo left)Evelyn McConathy, Vice-Chair (photo right)___________________________________________

Vision: Educate the public and its representatives on IP and its value in cooperation with the rest of

the IP community.

Strategic Goals to Achieve Vision:Develop a simple consensus message on the • value and history of Intellectual Property & Patents

Find creative ways to distribute the message • across multiple channels of communication to a spectrum of audiences

Work to cooperate with other members of the IP • community to learn from their experience and align messages and efforts towards common goals

Both implicitly and explicitly, depending on the • audience, enhance the profile of AIPLA and its roles and provide understanding of what the organization is able to provide to its members, the IP community, the government, and the public

Substantive Tasks from Mid-Winter Meeting:To take the overall vision and place it in a manageable and scalable form, the current plan is to work in parallel on several levels of development. This Committee needs to work with AIPLA and the various committees, groups, and resources within AIPLA to develop, refine, and select themes and stories and other material supporting those themes. At the same time the Committee will begin to develop a better understanding of the means to effectively communicate the message and distribute materials to the identified target audiences, primarily initially to build an understanding of the needs of key distribution channels to better guide theme and message development. Creativity in Bloom has been chosen as the theme and initial sub-committees have been established to develop the channels of distribution with

further efforts developing as interest and ideas grow. Finally, the Committee leadership with the help of the Board, the ExCo, and AIPLA Headquarters will reach out and leverage relationships in the IP Community to further their specific goals and missions.

Theme & Story Development: At the Annual Meeting Committee Leadership made a presentation to the Board of a refined version of the Theme and Logo. These are now approved. Now that the theme has been finally selected, the goal is to start integrating the theme to ongoing efforts such as the Youth Education effort and the nascent independent website.

Distribution Channel Development:Initially, the Committee is focusing on three distribution channels (Youth Education (sub-committee chair Sal Anastasi), Corporate (new sub-committee chair to be named to interact with the Corporate Practice Committee), Internet (sub-committee chair Emily Johnson)) with others to follow as help and experience is gained and/or as specific needs and volunteers arise (such as a proposed “Hill Day” below). The sub-committees will each start by identifying what they will need to best succeed in distribution and in what form to help in development and tailoring of the message to suit the appropriate distribution channel.

The Youth Education sub-committee under Sal Anastasi successfully presented a live demonstration with specific teaching examples and a citation list for finding additional materials to use in the committee session at the Spring Meeting in Houston. A refined and enhanced version of the presentation was made to spouses and children of AIPLA members at the Annual Meeting and significant additional feedback was gathered which we are confident will result in substantial further ideas and improvements. More feedback and volunteers are being gathered to work towards a goal of continuing to develop additional


resources and find ways to organize them for ease of use as well as get permissions from selected sources to incorporate their materials into pre-made packets for distribution to volunteers wanting to go into schools and make presentations about IP law. The sub-committee is also specifically working to interact with representatives of the PTO who came to the Annual Meeting and of the InventNow group within the National Inventor’s Hall of Fame for their insight into successfully getting out into the schools and effectively reaching the students as well as reaching out to the Copyright Society for insight into their anti-piracy outreach to students. While initially focused on younger children, the sub-committee has also started efforts to build resources for university students as well. In a recent development, the head of the PTO’s University Outreach program has inquired about finding ways to work together which may provide an opportunity to jump start efforts on the education at the University level.

The Internet sub-committee under Emily Johnson launched an effort with the AIPLA Fellows coordinated by Freddie Park to set up and train a group of volunteer Fellows to begin interacting with Wikipedia definitions of key IP terminology in an attempt to provide a balanced viewpoint informed with the wisdom of the Fellows in those definitions. The Internet sub-committee in cooperation with Ken Nigon is also working on procedures to enlist volunteers to monitor many of the major IP blogs and identify areas of interest both for information and also over time for potential response. Finally, now that we have locked down approval for a theme, the sub-committee is working with AIPLA Headquarters, Committee Leadership, and the other sub-committees to define and build a separate web presence within AIPLA’s servers but with relevant alternative URL’s to publish the work of the committee and of its sub-committees to more general audiences as well as AIPLA members and friends. This effort may also provide the opportunity to leverage, display, and distribute the recorded speech of Judge Rader on the generational gift of IP and relevant accompanying materials both potentially on our own web site as well as through possible posting on relevant blogs or other more mainstream collective internet sites.

The Corporate sub-committee is again in transition as we work to best determine how to leverage the new

leadership of the Corporate Practice Committee and other active and involved members of the Corporate Practice Committee to try and understand how best to spur, enable, and leverage the energy and interest of our members in corporate life and their companies.

The Vice-Chair, Evelyn McConathy, is also working on a proposed project to develop procedures and support for a “Hill Day” potentially to occur in coordination with the WIPO World IP Day. While probably initially starting on a more limited basis, in the long run it is hoped to mature and grow to provide an opportunity for AIPLA members more generally to visit their individual representatives to increase awareness and education on Intellectual Property and its value and impact to them and other constituents. The Committee and HQ would help coordinate the effort of getting appropriate appointments as well as organizing a social event at or around HQ for those members who travel to participate. The goal would be to find a way to set this up on a recurring, possibly annual basis, and do so in a way which reduces possible negative impacts to specific AIPLA lobbying efforts and instead maintains a much more general, consensus, theme level approach to the interactions. Because of timing and change in leadership at WIPO the Committee is starting work now to lay ground work for a first Hill Day in 2010 on World IP Day. A sub-committee for Congress & the Courts identified previously may be created to help with this and future efforts in this channel or direction. Jeff Lewis has also expressed an interest in the education of Judges in support and cooperation with an effort he is already involved in. Evelyn McConathy is also spearheading the committee’s potential involvement here which could also eventually move into the Congress & the Courts sub-committee.

In a new initiative, the Committee will investigate how AIPLA can help assist agencies like the USPTO in responding to specific inquires by the press on specific issues in IP. The Committee is beginning to assess how to organize and present collections of articles and papers which have been identified by various members and friends into a form which can provide a reference base or set of links to help respond to issues and “negative perceptions” which arise in the media or otherwise. In a similar vein, the Committee is targeting a free online seminar for summer by Professor Lisa Dolak regarding the appearance of


IP in the media to better understand how IP is being reported on. A later paper and presentation are being developed hopefully using an all-star cast each working on selected points to educate AIPLA members and friends on detailed facts and arguments to help them effectively rebut some of the negative perceptions about the IP system as they circulate through their respective communities and relationships. This could be presented online and could also include a paper for ease of reference. The results would also be posted in one of the Committee websites and snippets of video or audio could be posted more broadly on the internet or made available through podcasts. Ultimately this suite of projects could fall under the proposed sub-committee for Press and the Media.

Cooperation/Contact with the IP and Innovation Community:The Committee is working with AIPLA Headquarters and its Board liaisons to coordinate contacting other organizations, such as the National Inventors Hall of Fame, the Federal and District Courts, the PTO and Copyright Offices, IPO, ABA-IL, INTA, and the

Copyright Society to reach out for shared insight and to establish a foundation for potential cooperation. Once contacts are established, the Committee will identify a liaison for each group it has or builds a relationship with (possibly one with a pre-existing relationship which can be leveraged) to have a single point of contact to reduce potential confusion and avoid overloading or interfering with mutual efforts. The Committee leadership should make sure each sub-committee and working group knows who the liaisons are.

A growing and evolving detailed structured outline which includes potential themes, the distribution channels and potential initial and long-term tasks, and groups for contact by the Committee and potential liaisons is available for HQ, Committee Members, and others who are interested. The outline tries to capture and prioritize many of the possible or feasible ideas addressed in any significant detail since the initiation of the Special Committee. Similarly the Youth Education Sub-Committee has a working document setting out their goals and directions which is also available on request.

International Trade Commission Tom. M. Schaumberg, Chair (left photo)L. Scott Oliver, Vice-Chair (right photo)___________________________________________

The Committee on the International Trade Commission (ITC) met at the AIPLA’s 2009 Mid-

Winter Institute. The Committee’s meeting was presided over by its Chair, Tom M. Schaumberg and Vice-Chair, L. Scott Oliver.

The committee members discussed the impact of the U.S. Court of Appeals for the Federal Circuit’s Kyocera v. International Trade Commission decision. The committee members discussed the effect that the decision has on the ITC’s authority to issue downstream relief against non-parties. The committee members discussed legislative relief to address the impact of the Kyocera decision.

In addition, there was a discussion of submitting

proposed legislation to provide additional funding to the United States Customs and Border Protection, including the Office of Regulations & Rulings, IPR Branch and the Office of Field Operations, the departments that administer and process exclusion orders issued by the ITC (“Customs”).

It was decided that the Committee would consider drafting legislation addressing both post-Kyocera downstream relief and additional funding for Customs and send a survey to its committee members once the proposed legislation is drafted. Finally, the Committee will re-visit its latest proposed draft White Paper on Procedural Innovation at the ITC at the next meeting.


Special Committee on the FDA Myra H. McCormack, Chair (left photo)Freddie K. Park, Vice-Chair (right photo)___________________________________________

The committee held its inaugural meeting January 29, 2009, at the Mid-Winter Institute in

Miami. Prior to the meeting, Kurt Karst of Hyman Phelps & McNamara, a member of the Committee and the Hatch-Waxman Subcommittee, prepared draft comments on FDA’s implementation of Section 4 of the QI Act, which amends Section 505 of the FDCA Act and made Hatch-Waxman benefits available for so-called “old” antibiotics. A core group of Hatch-Waxman Subcommittee members reviewed the comments and finalized them for submission to the AIPLA Board for

consideration at the Mid-Winter Institute. The AIPLA Board approved the comments, which were then forwarded to the FDA. Section 4 of the QI Act, Section 505 of the FDCA Act and the Final Comments as submitted to the FDA by the AIPLA are posted on the Committee’s webpage.

In addition, Denise Kettelberger of Faegre & Benson and Co-Chair of the Follow-On Biologics Subcommittee, presented a discussion on Hot Topics in Biosimilars -2009. Denise’s presentation is posted on the Committee’s AIPLA webpage.

Special Committee on LegislationSharon A. Israel, Co-ChairRick D. Nydegger, Co-Chair (photo right)___________________________________________

The Special Committee on Legislation is a newly formed special committee established to assist

the AIPLA with its advocacy efforts. The Committee’s goals are two-fold: (1) As requested, this Committee will work with the appropriate substantive committees to help prioritize and analyze issues and proposed positions, both pro and con, relative to legislative proposals which come before the Board for its consideration; and (2) the Committee also will serve as a resource to assist the Board, as instructed or requested from time to time, in developing a proposed agenda of legislative matters for the Board’s

consideration and possible adoption.

The Committee structure includes a Core Group and Working Groups for specific substantive areas, with Core Group liaisons to each Working Group. The Committee currently has 5 Working Groups: Patents/Litigation, PTO Agency/Practice, Copyrights, Trademarks, and Industrial Designs. The members of the Legislation Committee come from the leadership of substantive committees, the AIPLA Fellows, and others with specialized knowledge.

The following Committees had no business to report from the 2009 Mid-Winter Institute:Antitrust, AIPLA Fellows, Industrial Designs, Inventor Issues, IP Practice in the Far East,Mergers & Aquisitions, Public Appointments, Professionalism & Ethics and Trade Secret Law.

Be sure to visit all of our committees online in our Committee Center at www.aipla.org.2009 mid-winter institute issue aipla bulletin 81


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