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  • Artificial Intelligence: Patentability and Inventorship in Europe (RECORDING)

    Contains 5 Component(s), Includes Credits

    Some of the most interesting and talked-about IP issues, both nationally and internationally, are those relating to artificial intelligence (AI). Among AI issues, patentability and inventorship are hot topics that will likely only continue to increase in importance. On this webinar, panelists will discuss how those issues are playing out in Europe.

    Some of the most interesting and talked-about IP issues, both nationally and internationally, are those relating to artificial intelligence (AI). Among AI issues, patentability and inventorship are hot topics that will likely only continue to increase in importance. On this webinar, panelists will discuss how those issues are playing out in Europe, including:

    • Developments at the European Patent Office related to AI patenting
    • The principles applied by the EPO when assessing AI patent applications and AI inventorship
    • Addressing hurdles to patenting AI technology
    • Protection of training methods and data and
    • Computer simulation case G1/19.


    Speakers will include Heli Pihlajamaa (the Director of Patent Law at the EPO) and Mike Jennings (of CIPA’s Computer Technology Committee), as well as IPO European Practice Committee co-vice chair James Signor and Committee member Tobias Kaufmann. If you expect that you will be encountering patent issues relating to AI in the future, or if you are already encountering such issues, this webinar is not to be missed.

  • Practical Guide to Diversity in the Legal Profession in a Post-George Floyd Era (RECORDING)

    Contains 5 Component(s), Includes Credits

    In this timely session of the IP Chat Channel, speakers will discuss the Practical Guide to D&I in the legal profession and reflect on how to improve diversity and inclusion. They will also highlight current issues affecting black IP professionals and the negative impact on diversity in general by the economic slowdown. They will offer concrete suggestions about what we can each do to promote these values in our profession for the good of all.

    A focus on diversity and inclusion in our profession is imperative in the post-George Floyd era.  In this timely session of the IP Chat Channel, speakers will discuss the Practical Guide to D&I in the legal profession and reflect on how to improve diversity and inclusion. They will also highlight current issues affecting black IP professionals and the negative impact on diversity in general by the economic slowdown. They will offer concrete suggestions about what we can each do to promote these values in our profession for the good of all. 

    Shruti Costales

    HP Inc.

    is patent counsel at HP Inc. with over fourteen years of experience in patent application preparation, patent application prosecution, patent counseling, and transactional and litigation matters. Prior to HP Inc., Shruti was in private practice for about thirteen years. During this time, Shruti worked for a mid-sized law firm and two patent boutiques. She also successfully founded and ran her own patent boutique for over six years. Shruti is also a former patent examiner in the polymers and fuels technology areas. Her technical experience includes undergraduate research on drug delivery systems and working as an engineering intern at Fortune 500 chemical and pharmaceutical companies. Shruti earned a BS in Chemical Engineering from Purdue University in 2000 and a JD from Franklin Pierce Law Center (now University of New Hampshire School of Law) in 2003. Shruti is chair of IPO’s Diversity & Inclusion Committee. 

    Eldora Ellison

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a director at Sterne, Kessler, Goldstein & Fox. Over the course of her 24-year career, Dr. Ellison has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Dr. Ellison’s practice also includes preparing and prosecuting patent applications; evaluating patent portfolios; counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. She represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations. She is a member of the firm’s Executive Committee, and she previously chaired the firm’s Professional Development Committee and the Diversity Committee. She earned her J.D. from Georgetown University Law Center, her Ph.D. in biochemistry, molecular and cell biology from Cornell University, and her B.S. in biology from Haverford College.

    Serena Farquharson-Torres

    Bristol-Meyers Squibb Company

    is senior counsel at Bristol-Myers Squibb Company where she is responsible for all aspects of patent procurement, counseling, due diligence, litigation and policy. She is located in Lawrenceville, NJ. Serena is focused on the global protection of the company’s innovation and brands. Serena works closely with R&D, manufacturing, and business colleagues to ensure meaningful exclusivity and freedom of operation for BMS products. Serena is also passionate about diversity and inclusion issues and is part of IPO’s Women in IP Committee and Diversity task force as well as the Diversity & Inclusion team of BMS legal department. Prior to joining BMS in 2016, Serena was Senior Counsel at Sanofi, Schering-Plough Corporation and in private practice. Serena has a B.S. in Chemistry from Howard University, Ph.D. in Biological Chemistry from the University of Minnesota and a J.D., from the University of North Carolina School of Law. Serena has frequently presented on IP topics on behalf of law associations and industry groups.

    Joel Stern

    NAMWOLF

    is the Chief Executive Officer of the National Association of Minority and Women Owned Law Firms, Inc. (NAMWOLF). NAMWOLF, founded in 2001, is a nonprofit trade association comprised of over 195 minority and women owned law firms in 44 states. NAMWOLF’S mission is to provide corporations the premier place to go to locate and hire minority and women owned law firms of the very highest caliber. Prior to this role, Joel was the Global Deputy General Counsel and COO Legal at Accenture.  Joel managed the Americas Legal team and also had primary responsibilities as the Chief Operations Officer of the 420+ member global legal group managing all operations of the Legal team including finance, IT, human resources, communications, facilities and support services. Additionally, he managed all outside counsel relationships across the globe.  During his tenure at Accenture, he was also tasked with revitalizing and then leading the Accenture Contract Management group. Throughout Joel’s accomplished career, he personally championed key diversity and inclusion initiatives including leading Accenture Legal Group’s award-winning diversity and inclusion programs.

  • Ethical Issues in Litigation Funding: An Update (RECORDING)

    Contains 5 Component(s), Includes Credits

    The webinar will analyze the many legal ethics issues raised for lawyers by litigation funding, including the question of who controls the litigation; the traditional law of champerty; confidentiality and privilege; disclosure and client consent; and possible conflicts if the case litigator is the one negotiating the funding.

    The hardship imposed on the economy by the coronavirus pandemic is ricocheting through the legal industry. Cuts in salaries and partner payouts, furloughs, and layoffs have become commonplace among law firms in recent months. 

    Litigation financers are ready to step into the breach with investments to pay attorney fees and expenses related to patent enforcement in return for hefty returns if the litigation successfully results in damages. Due to an inflow of new capital, about 40 commercial litigation funders are now active in the U.S. market, with combined assets under management estimated at $9.5 billion. Those funders also work directly with corporate or university patent owners to pay legal fees. 

    The webinar will analyze the many legal ethics issues raised for lawyers by litigation funding, including the question of who controls the litigation; the traditional law of champerty; confidentiality and privilege; disclosure and client consent; and possible conflicts if the case litigator is the one negotiating the funding. Panelists include a law professor who is an expert on legal ethics and litigation finance; the founder of an IP litigation firm that often takes patent cases on contingency and has held many discussions with funders; and a law firm litigator and legal ethics specialist who is hired to assess the ethics risks in funding deals.  

  • Litigation Funding Underwriting: How Good Is Your Patent Case? (RECORDING)

    Contains 5 Component(s), Includes Credits

    The webinar will give attendees sophisticated insight into how funders decide in which cases they will invest and what determines the pricing; how the calculus has changed since the advent of IPRs; surprises patent owners and law firms may encounter in their search for funds; and what work a law firm needs to accomplish on a case before seeking funding.

    The hardship imposed on the economy by the coronavirus pandemic is ricocheting through the legal industry. Cuts in salaries and partner payouts, furloughs, and layoffs have become commonplace among law firms in recent months. 

    Litigation financers are ready to step into the breach with investments to pay attorney fees and expenses related to patent enforcement in return for hefty returns if the litigation successfully results in damages. Due to an inflow of new capital, about 40 commercial litigation funders are now active in the U.S. market, with combined assets under management estimated at $9.5 billion. Those funders also work directly with corporate or university patent owners to pay legal fees. 

    The webinar will give attendees sophisticated insight into how funders decide in which cases they will invest and what determines the pricing; how the calculus has changed since the advent of IPRs; surprises patent owners and law firms may encounter in their search for funds; and what work a law firm needs to accomplish on a case before seeking funding. Panelists include a lawyer/executive with responsibility for assessing and underwriting legal risk in the IP space at a large litigation finance firm; the CEO of a brokerage firm dedicated to helping law firms and patent owners find litigation financing; and the founder of an IP litigation firm that has done deals with funders. 

    Charles Agee

    Westfleet Advisors

    is managing partner of Westfleet Advisors, a leading litigation finance advisor and broker. For fifteen years prior to founding Westfleet, he was a capital provider in the litigation finance industry and has personally overseen the origination, investment diligence, and structuring of financing transactions in over a thousand complex litigation matters.

    Eric Carlson

    Burford Capital

    is an IP principal at Burford Capital, a large litigation funder. Eric assesses and underwrites legal risk in the IP space. He works with law firms and IP holders to assess legal claims and leverage litigation finance. Prior to joining Burford, Eric worked as an IP attorney in private practice.

    Christopher Lee

    Lee Sheikh Megley & Hahn

    is a founder of the IP litigation boutique Lee Sheikh Megley & Hahn. He has served as winning trial counsel in high-stakes patent cases and has also advised companies in industry-wide licensing campaigns.

     

  • Discussion with Senior PTAB Judges on PTAB Operations in Light of COVID-19 (RECORDING)

    Contains 1 Component(s)

    This timely—and free for IPO members—webinar will feature a panel discussion with three senior PTAB judges. Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Michael Tierney, and Acting Vice Chief Judge Michael Kim will talk with Todd Walters (Buchanan Ingersoll), Co-Vice Chair of IPO’s U.S. Post-Grant Practice Office Practice Committee.

    This timely—and free for IPO members—webinar will feature a panel discussion with three senior PTAB judges. Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Michael Tierney, and Acting Vice Chief Judge Michael Kim will talk with Todd Walters (Buchanan Ingersoll), Co-Vice Chair of IPO’s U.S. Post-Grant Practice Office Practice Committee. They will discuss PTAB operations and recent trends and developments in practice before the PTAB in light of COVID-19. Topics to be addressed include maintaining schedules, handling requests for extensions of time, complying with statutory mandates, depositions, oral hearings, and unique issues that have arisen in light of current events.

    Todd Walters

    Buchanan Ingersoll & Rooney PC

    Todd Walters is the Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section. He is a current Vice-Chair of the Post-Grant Practice Committee of the Intellectual Property Owners, a past Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and a past Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. He has previously served as a member of the firm’s Board of Directors, and Executive Management team and Co-leader of the IP Section. He has also served as Vice-chair of the Interference Committee of the Intellectual Property Owners (IPO) association for approximately 10 years.

    Hon. Jacqueline Wright Bonilla

    U.S. Patent and Trademark Office

    The Honorable Jacqueline Wright Bonilla serves as Deputy Chief Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). Since her appointment as an Administrative Patent Judge in January 2012, she has conducted numerous post-grant patent trials under the America Invents Act (AIA), heard appeals from adverse examiner decisions in patent applications and reexamination proceedings, and rendered decisions in interferences. In her current role, she helps lead the PTAB as it handles cases and renders decisions in all areas of its jurisdiction. Previously, she worked for twelve years in private practice, including as a partner at Foley & Lardner, LLP. She also served as a judicial law clerk to the now-retired Chief Judge Randall Rader at the U.S. Court of Appeals for the Federal Circuit. 

    Hon. Michael W. Kim

    U.S. Patent and Trademark Office

    The Honorable Michael W. Kim serves as the Acting Vice Chief Administrative Patent Judge for Operations at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO) as of November 2, 2019. He was appointed to the PTAB on April 24, 2011. He was then appointed to Lead Judge in 2013. In addition to his management responsibilities, which includes coordinating the PTAB policy on subject matter eligibility and running the Judicial Law Clerk program, Judge Kim has conducted hundreds of inter partes reviews and post-grant reviews under the America Invents Act (AIA), and also has reviewed over a thousand adverse decisions of examiners upon applications for patents. He works primarily in the business methods, mechanical, and electrical technology areas. Prior to his appointment, Judge Kim was a patent attorney for PTAB. 

    Hon. Michael Tierney

    U.S. Patent and Trademark Office

    The Honorable Michael P. Tierney serves as Vice Chief Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). Vice Chief Judge Tierney was appointed to the PTAB on July 31, 2000 as an administrative patent judge in the Chemical Section, where he handled ex parte appeals of chemical cases. Judge Tierney joined the USPTO as a patent examiner, where he primarily examined applications for chemical compositions. Since being appointed as an administrative patent judge, Judge Tierney worked as a member of the Interference Trial Section, where he worked on interferences, reexaminations, and supervised two patent attorneys working on ex parte appeals. As part of the USPTO implementation of the America Invents Act (AIA), Judge Tierney led the PTAB’s comprehensive effort on trial rulemaking.

  • Impacts of Coronavirus & Major Business Disruption on Remedies in IP Cases (RECORDING)

    Contains 7 Component(s), Includes Credits

    On this webinar, panelists will discuss the economic impact of the pandemic, how these economic issues factor in when assessing intellectual property remedies, and existing case law on the impact of “acts of god” on remedies in intellectual property cases.

    The COVID-19 pandemic has caused serious business disruptions in most industries, and the effects are likely to be felt for years.  On this webinar, panelists will discuss the economic impact of the pandemic, how these economic issues factor in when assessing intellectual property remedies, and existing case law on the impact of “acts of god” on remedies in intellectual property cases.

    Douglas Frank

    Analysis Group

    Douglas H. Frank is   vice president of Analysis Group’s Washington DC office as well as an applied microeconomist with expertise in industrial organization, competitive strategy, and organizational and personnel economics. He has consulted to numerous organizations around the world in the areas of strategy, governance, and organization design. Dr. Frank has extensive litigation experience. He has estimated damages from patent infringement, copyright infringement, misappropriation of trade secrets, and breach of contract; assessed the effects of corporate actions and proposed misconduct remedies on competition; analyzed economic factors associated with motions for injunctive relief; evaluated commercial success; and assessed the reasonableness of charges and payments in commercial disputes. Dr. Frank is an adjunct professor at INSEAD, where he formerly served on the full-time faculty, and has taught at the Kellogg School of Management at Northwestern University and the European School of Management and Technology.

    John Jarosz

    Analysis Group

    John Jarosz is an economist and director of Analysis Group’s Washington, DC office. He specializes in matters involving IP, commercial damages, licensing, and antitrust. His IP work focuses on evaluating lost profits, reasonable royalties, price erosion, commercial success, licensing terms, best efforts, irreparable harm, and FRAND commitments. John has significant expertise testifying in patent, trademark, copyright, and trade secret tort and contract matters. He is also experienced in both U.S. and international arbitration, often serving as an expert witness in matters involving IP rights.

    Jenna Pellecchia

    Akin Gump Strauss Hauer & Feld

    Jenna Pellecchia is a counsel at Akin Gump where her practice concentrates on IP, with an emphasis on patent infringement litigation. Jenna is experienced in all phases of patent infringement litigation, including pre-suit investigation, discovery, motion practice, claim construction, trials, and appeals. She also represents clients in inter partes review proceedings before the USPTO and assists clients in patent prosecution strategy. She has helped clients assert and defend against patents in high-stakes litigation, obtain stays of injunctions at the Federal Circuit, and defend against trade secret misappropriation claims.

    Lucy Wheatley

    McGuireWoods LLP

    Lucy Jewett Wheatley is a partner at McGuireWoods LLP.  Her practice focuses on Lanham Act litigation, domestic and international trademark enforcement, and IP counseling. In addition, she offers significant experience with franchise disputes, anti-counterfeiting, false advertising, trade secrets and copyright litigation. Lucy has appeared in federal district courts and appellate courts throughout the U.S., and represented clients in inter partes disputes before the Trademark Trial and Appeal Board (TTAB) at the USPTO.  Lucy has managed litigations and trademark enforcement programs for clients across a broad range of industries, including consumer foods, energy, apparel, luxury goods, telecommunications, and software.

  • The Impact of COVID-19 on Trademark Prosecution and Examination (RECORDING)

    Contains 7 Component(s), Includes Credits

    Panelists will discuss the latest information regarding such measures. Speakers will include officials from the World Intellectual Property Organization’s Madrid Division, as well as private practitioners who can address this topic from both a U.S. and a global perspective. They will address safeguards against missed time-limits and other changes in procedures and operations at WIPO, the USPTO, and other IP offices.

    IP Offices around the world are taking a range of different approaches to assist trademark applicants with addressing challenges created by the COVID-19 pandemic. On this webinar, panelists will discuss the latest information regarding such measures. Speakers will include officials from the World Intellectual Property Organization’s Madrid Division, as well as private practitioners who can address this topic from both a U.S. and a global perspective. They will address safeguards against missed time-limits and other changes in procedures and operations at WIPO, the USPTO, and other IP offices. 

  • Alice and Mayo at Trial: Section 101 Litigation After Berkheimer (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar will focus on litigation strategy now that many more Section 101 issues are going to trial -- and even to a jury. Prior to 2018, the majority of district court cases involving the Supreme Court’s Alice and Mayo decisions ended in invalidation of patents early on after a motion to dismiss or by summary judgment. But then the Federal Circuit decided Berkheimer, and found that these issues can involve factual questions inappropriate for early resolution. Judges are acting accordingly, but these practices are so at the cutting edge that improvisation is needed.

    This webinar will focus on litigation strategy now that many more Section 101 issues are going to trial -- and even to a jury. Prior to 2018, the majority of district court cases involving the Supreme Court’s Alice and Mayo decisions ended in invalidation of patents early on after a motion to dismiss or by summary judgment. But then the Federal Circuit decided Berkheimer, and found that these issues can involve factual questions inappropriate for early resolution. Judges are acting accordingly, but these practices are so at the cutting edge that improvisation is needed.  

    The results of the first such subsequent jury trials are instructional and unexpected. Many experts thought the new regime would be a big plus for plaintiffs, and, in some cases, defendants were prompted to quickly throw in the towel and settle.

     Our panel, which features two litigators who represented clients in the first such jury trials, will explain that plaintiffs should be careful what they wish for. It will address how Alice can arm defendants with a way to invalidate a patent that is easier than painstakingly mapping out how each patent claim was disclosed in prior art, and also how these arguments might also help to overcome the presumption of validity.

    The panel will also consider recent Federal Circuit decisions such as Exergen Corp. v. Kaz and CardioNet v. InfoBionic, which bear on whether and how eligibility questions may ultimately reach a jury.

  • Mental Health & Well-Being During A Time of Crisis (RECORDING)

    Contains 6 Component(s), Includes Credits

    The webinar will review the intersection of mental health challenges and attorneys’ ethical obligation to provide clients with competent representation. We will provide a brief overview of the eye-opening statistics around depression, substance abuse, and mental health in the bar. We will discuss potential impacts on productivity and work quality, the responsibilities of managers and supervisors, and wellness focused solutions as well as how the USPTO’s Diversion Pilot Program and employers can help affected practitioners.

    Today we all are experiencing tremendous stress due to the epidemic. At the best of times, attorneys are susceptible to mental health stressors, that can lead to problems including alcohol and substance abuse, anxiety and depression, and suicide. There are a variety of risk factors and causes for these problems, such as the individual personality types who are attracted to the profession, the nature of the profession, and environmental stressors like workplace culture. The COVID-19 pandemic, and the related economic instability, only compound these existing risk factors—mental health experts predict a tsunami of mental health challenges in the coming months.

    The webinar will review the intersection of mental health challenges and attorneys’ ethical obligation to provide clients with competent representation. We will provide a brief overview of the eye-opening pre-epidemic statistics around depression, substance abuse, and mental health in the bar. We will discuss potential impacts on productivity and work quality, the responsibilities of managers and supervisors, and wellness focused solutions as well as how the USPTO’s Diversion Pilot Program and employers can help affected practitioners.

  • Defining the PTAB: Click to Call and Windy City (RECORDING)

    Contains 7 Component(s), Includes Credits

    The America Invents Act became law more than seven years ago, but the adjudicatory power of its signature creation, the Patent Trial and Appeal Board, continues to be refined by the judiciary. In the past few months, the Federal Circuit, with its decision in Facebook v. Windy City, and the Supreme Court, in Thryv v. Click to Call, both made important clarifications regarding the PTAB’s authority in important matters such as the time bar and joinder.

    The America Invents Act became law more than seven years ago, but the adjudicatory power of its signature creation, the Patent Trial and Appeal Board, continues to be refined by the judiciary. In the past few months, the Federal Circuit, with its decision in Facebook v. Windy City, and the Supreme Court, in Thryv v. Click to Call, both made important clarifications regarding the PTAB’s authority in important matters such as the time bar and joinder.

    Not all the implications of these cases are obvious, nor are they ways in which they interact.  Panelists include a litigator who helped change post-grant practice on behalf of a client in the Supreme Court’s 2018 SAS case; a law professor who is an authority on the Federal Circuit; and a leading practitioner at the PTAB. They will untangle the complexities involving all the players including the PTAB, the director of the USPTO, and the Federal Circuit, and assess who emerges as a winner and in what way. They also will give an analysis of how practice could change, including:

    • What other PTAB determinations will be found to be “final and nonappealable” in addition to time bar determinations?
    • What happens to appeals that have been decided or are pending at the Federal Circuit on matters that now are no longer appealable?
    • What is the impact on proceedings involving state sovereign immunity?
    • What are the implications of the PTAB having enlarged unchecked power? What is the role of the USPTO’s Precedential Opinion Panel (POP)?