IP Chat Channel – Legal Department and Law Firm Management
Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below. Then click on “View Event Recordings” in the upper right hand corner. All recordings are in chronological order, and can be searched by title using the find feature in your browser.
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Launching a Post-Grant Proceeding: In-house Perspective and StrategyWebinar Date: 12/01/2016
This webinar will consider best practices for the in-house counsel regarding the decision to launch an inter partes review (IPR) proceeding against a patent and managing the process of AIA petition and trial. Our panel includes two in-house counsel from different industries as well as an experienced USPTO litigator. They will discuss:
- How to assess the strongest defensive case against the assertion of a patent and when not to launch an IPR;
- Finding guidance in PTAB statistics;
- The impact of the Halo and Commil decisions on the decision to launch;
- Hiring outside counsel and predicting costs;
- Overseeing the petition, the choice of expert, and the preparation for oral hearing;
- Whether to file an appeal if you lose.
- Matthew Cutler, Harness, Dickey & Pierce PLC
- David Kelley, Ford Global Technologies LLC
- Kimberly Schmitt, Intel Corp.
Conflicts of Interest in Patent Prosecution after Maling v. FinneganWebinar Date: 02/10/2016
The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”
Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.
Insider Threat: Employee Mobility and Trade SecretsWebinar Date: 01/20/2016
Litigation against former insiders accounts for a significant amount of all trade secret cases. However, these disputes are difficult to win. Our panel will discuss best practices for safeguarding trade secret and other confidential corporate information from appropriation by employees, as well as contractors, and consultants.
A litigator will highlight how not meeting this high bar will cause a plaintiff’s case to fail. An employment law specialist will discuss emerging issues in non-compete agreements, such as the need to give current employees a bonus or profit-sharing consideration in exchange for signing a tougher non-compete. And an in-house counsel of a global technology company that will discuss survival in a world without non-competes. Our panel will also consider the flip side of the issue: best practices for avoiding a lawsuit when hiring an employee from a competitor.
Clifford Atlas, Jackson Lewis
Buckmaster De Wolf, General Electric Co.
Randall Kay, Jones Day
Advance Conflict Waivers: How to Avoid Unpleasant SurprisesWebinar Date: 09/22/2015
CLE Ethic credits will be applied for
Law firms asking current clients for written permission to be averse to them in future matters is a custom of recent vintage, but now takes place frequently. Corporations large and small grant such waivers because they want to work with a specific law firm lawyer or because they don’t foresee a real threat of a conflict. But when push comes to shove, these waivers don’t do much to lessen bad feelings between client and law firm, and their enforceability is tested in court repeatedly. For instance, in one recent case, a magistrate judge in the Western District of Pennsylvania enjoined a law firm from representing a company that had launched an unfriendly takeover bid for another of the firm’s clients, despite the existence of an advance waiver between the law firm and the target company.
Our panel, consisting of a law school professor who specializes in ethics in IP practice, an in-house counsel at a major multinational, and a law firm litigator, will examine the status of such waivers under law and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both client and law firm.
Prof. Lisa Dolak, University of Syracuse School of Law
Jennifer Johnson, DuPont
Daniel Tabak, Cohen & Gresser
Cyberattacks on IP: Response and PreventionWebinar Date: 03/02/2015
The wide-ranging hack into Sony’s computers by North Korea late last year brought corporate cyber security concerns to the forefront. It’s clear that every element of a corporation’s electronic storage and communication can be vulnerable and of value to interlopers, not just consumer data. Earlier last year the U.S. Justice Department, for instance, accused the Chinese military of hacking U.S. Steel Corp., Westinghouse, Alcoa, Allegheny Technologies, and SolarWorld to steal sensitive internal communications that could prove useful to a competitor or a litigation adversary.
Increasingly, businesses are calling upon IP lawyers to assist in the protection of IP assets against these cyber threats, and to assist client victims in responding to cyber crimes. Our panel will explore current trends in cyber threats to industrial and proprietary business data, best practices in the protection of confidential and sensitive data during R&D and pre-patent filing, and data theft and breach response considerations, including offensive litigation and parallel proceedings with government authorities.
David Bateman, K&L Gates
Matt Lundy, Microsoft Corp.
Mauricio Paez, Jones Day
Conflicts of Interest: Opinions of Counsel and Patent Litigation (including Disqualification)Webinar Date: 04/23/2014
Patent practice offers many opportunities for conflicts of interest between corporate clients and their law firm attorneys. This webinar will examine conflict rules and scenarios in both opinion work and litigation. Our panel includes the deputy chief of IP at a major multinational company, a leading academic authority on IP and legal ethics and an experienced patent litigator. Their discussion will
- quickly review the ABA Model Rules of Professional Conduct, implementation by states, and differences among regional circuits regarding disqualification;
- discuss conflict scenarios involving opinion work, such as when a corporate client hires a law firm to opine that a patent is invalid, only to discover that the firm represents the patent owner;
- assess varying scenarios involving conflicts in litigation, such as whether a law firm should ask a client for a waiver to represent a party opposing the client, and conflicts arising after information is shared during “meet-and-greet” sessions between a law firm and a potential client; and
- examine where the line falls between clear-cut ethical lapses and client expectations of loyalty.
- John Cheek, Caterpillar Inc.
- Lisa Dolak, Syracuse University College of Law
- Christopher Larus, Robins, Kaplan, Miller & Ciresi, LLP
Export Controls on IP: Understanding and Managing the RiskWebinar Date: 04/09/2014
A U.S.-based inventor puts drawings or test results in an envelope and mails it to Germany. The same inventor walks across his lab and hands the data to a visiting scientist from China. Each of these is a technology export. So is allowing a foreign national or person in a non-U.S. jurisdiction to retrieve the information from a company or third-party server.
Most U.S. patent lawyers know about the USPTO’s Licensing and Review Office, which administers the Patent Secrecy Act and grants applicants a license to file patents abroad. But if that is all a patent lawyer knows about export controls, it exposes his or her clients to significant risk. Technology exports are also ruled by two other sets of export control regulations: the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR). Penalties that the Commerce Department administers under EAR (which cover “dual use” items), tend to be lower than those assessed by the State Department which administers ITAR (which cover defense/military items). But even EAR penalty exposure can be stiff, with statutory maximum civil penalties “the greater of $250,000 or twice the value of the transaction, per violation.” Then there’s the reputational damage associated with having a corporate name tied to violations of national security-related laws; the disruption and cost of dealing with an investigation; and the possibility of Commerce imposing a “denial of export privileges” and cutting off foreign sales.
Our panel includes the chief IP counsel of a major multinational technology company, and two law firm experts on export controls. They will;
- give an overview of the export-control challenge facing corporate owners of IP
- describe the regulatory regimes and the line between controlled and not-controlled information
- focus on corporate environments (in addition to R&D) where export rules could come into play, such as mergers & acquisitions, cloud computing, and patent searching
- outline key components of creating and monitoring a corporate compliance effort
- discuss what it means to clean up past transgressions through a “voluntary disclosure” to federal authorities.
- Daniel Staudt, Siemens Corp.
- Scott Flicker, Paul Hastings LLP
- Robert Torresen, Sidley Austin LLP
Privilege in Patent Disputes: Thorny Issues involving Patent Agents and Foreign AttorneysWebinar Date: 02/19/2014
Questions of attorney-client privilege come up frequently during the discovery process in patent infringement litigation. If a European company is asserting a U.S. patent in the U.S., does attorney-client privilege protect email from a European law firm attorney to a lawyer working at the company’s U.S. subsidiary? If a U.S. company relies on a patent agent instead of a lawyer to prosecute its patent application at the USPTO, are communications between the inventor and the patent agent privileged?
Though the issues are always fact-intensive, certain broad legal strokes are clear. Most district courts employ a two-step analysis in determining whether non-U.S. counsel’s communications are discoverable in U.S. litigation. First, the court determines whether U.S. or foreign privilege law applies; then it looks to whether the governing law recognizes privilege for the particular communications at issue and the scope of that privilege. Within the U.S., federal district courts are split on whether patent agent communications are privileged, so this issue may be an important factor in selecting a venue to bring a patent complaint.
Our panel, which includes the European managing partner of a top U.S. IP firm, a U.S. patent litigator, and a leading in-house counsel of a major multinational, will discuss the case law that governs these situations and what internal procedures companies and law firms should rely on to maintain privilege whenever possible.
- Anthony Tridico, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Heather Repicky, Nutter McClennen & Fish LLP
- Buckmaster De Wolf,General Electric Co.
Mediation in Patent Disputes: Best Practices, Worst PracticesWebinar Date: 01/30/2014
The CEOs of Apple and Samsung will meet soon to discuss settlement of their expensive and protracted patent disputes, consenting to a mediation suggested by Judge Lucy Koh of the U.S. Court for the Northern District of California. The two sides have agreed on a mediator and will sit down together by February 19. At that meeting, each CEO will be accompanied by three or four in-house counsel, but no outside counsel will be allowed.
Will mediation work in this particular situation? Some onlookers have expressed skepticism. But others have a more optimistic view of the potential for mediation in patent litigation in general. Mediation continues to be underutilized in patent disputes, according to the International Institute for Conflict Prevention and Resolution. Aided by a blue-chip task force of IP lawyers, that organization recently issued a report that identifies best practices and attempts to identify and overcome the barriers to the effective use of mediation in patent litigation.
Our panel will use that report’s conclusions and their own varied experiences to discuss best ways to proceed in the mediation of patent disputes. Topics will include:
- The decision to try mediation
- Timing – early, before/after Markman, just before trial, etc
- Choosing a mediator
- Information exchange between parties
- Who attends
- Process, including pre-mediation conferences and preparation, opening statements, private caucuses, and nailing down a deal
- Alan Albright, Bracewell Giuliani LLP
- R. Tulloss Delk, IBM Corp.
- Harrie Samaras,ADR and Law Office of Harrie Samaras
Harvesting Inventions: Best Practices Under First-to-FileWebinar Date: 11/14/2013
In the old first-to-invent regime, if necessary, corporations could rely on the chronology of lab notes to serve as a marker of the date of invention of any given new compound or method. But that security is history in the new world created by the America Invents Act. This webinar will focus on the discipline required to rigorously harvest inventions from R&D into patent applications under first-to-file. Our panel includes the top patent counsel of a large technology-driven multinational and two law firm attorneys with broad experience in IP strategy. They will discuss:
- Practical tips for regularly scheduled meetings with inventors, including dealing with creative self-deprecators who view anything they did last month as not “new.”
- How to reduce filing time and inculcate a corporate-wide harvesting culture, taking into consideration newly acquired units and different R&D styles.
- Incorporating IP strategy into the R&D process, with inventors thinking about it early on. For example, what might be more likely to be kept as a trade secret? In some industries, copyright vs. patent should be considered.
- The increased imperative to understand competitors’ portfolios of patents and patent applications, in part to take advantage of new opportunities to challenge patents post-grant.
- How to react to the need to “invent patents” in response to the concerns of investors, shareholders, as part of a defensive litigation strategy, or simply because new competitors in China and elsewhere are adding patents at a furious clip.
- Joseph Berghammer, Banner & Witcoff, Ltd.
- Stuart Meyer, Fenwick & West LLP
- Dennis Skarvan, Caterpillar, Inc.
New USPTO Rules of ConductWebinar Date: 06/06/2013
A major overhaul of the USPTO Rules of Professional Conduct went into effect on May 3rd. This change probably is welcome for most attorneys because the new USPTO Rules seek to conform the ethical obligations for representing others before the USPTO to the ABA Model Rules of Professional Conduct, which have been adopted in some form by every state (except California) and the District of Columbia. Until this revision, the USPTO rules were based on an outdated ABA Model Code from 1980.
However, practitioners need to pay attention to some important differences between the ABA rules and the current USPTO Rules, as well as to some new potential ethical dilemmas created by the AIA. Our panel includes an in-house prosecution counsel for a major international energy company, a law firm patent prosecutor specializing in computer-related inventions, and an attorney in the USPTO’s Office of Enrollment & Discipline. They will consider:
- the ethical quandary lawyers may face because of conflicts between the rules’ requirement for full disclosure to the USPTO and the obligation of confidentiality to clients
- the ethics implications of the new Supplemental Examination proceeding created by the AIA
- the AIA’s elimination of the best mode invalidity defense in litigation and the implications for practice before the USPTO
- the duty of patent prosecutors to research the ownership of patents and patent applications to avoid client conflicts-of-interest
- new requirements for financial record-keeping
- Glenn Barrett, Exxon Mobil
- Bradley Forrest, Schwegman Lundberg & Woessner
- James Silbermann, USPTO
Inventor Compensation: A Global Approach NeededWebinar Date: 10/31/2012
Many countries have detailed laws about the remuneration of employee-inventors that are quite different from U.S. laws, and these laws can prove quite costly. In 2009, for instance, GE Healthcare was told by a British court to pay £1,500,000 to two inventors who, as GE employees, had invented a commercially-successful radioactive imaging agent. Companies in France and Germany face such suits from employees regularly, while China added a new rigorous inventor compensation requirement to the Third Amendment of its patent law that went into force three years ago.
Our panel will illustrate the variations among laws internationally and give advice on how to implement systems within multinationals to aid compliance. For instance, it’s often necessary for inventor compensation to be addressed up-front in an employee’s initial employment contract, and attention needs to be paid to these details when a company is acquired. The panel will also focus on what kinds of records companies should keep, as well as the negative repercussions that can follow if an employer tells one version of the facts to foreign tax authorities and another version to labor regulators. Our panel includes an employment lawyer specializing in cross-border human resources issues, and two in-house patent counsel at large multinationals.
- John Conway, Sanofi Aventis Groupe
- Donald Dowling, White & Case
- Matt Penarczyk, Microsoft Corp.
The New "Prior Commercial Use" DefenseWebinar Date: 02/01/2012
Just how widespread will the new “prior commercial use” defense created by the AIA become? What will defendants need to mount it, and how will plaintiffs try to counter it? This webinar will address Section 282(b), considering its impact on both IP protection strategy and litigation strategy.
Our panelists will:
• Review the details of the law and highlight critical provisions;
• Discuss how and to what degree the new law impacts the trade-off between patents and trade secret protection;
• Consider how defendants accused of patent infringement should decide whether or not to use the defense, and what internal records would be necessary to mount it; and
• Consider specific litigation concerns in mounting and countering such a defense, such as the interrelationship between prior use and invalidity. The assertion of the prior use defense may require the parties to take on novel roles: for instance, the plaintiff may wind up insisting that the defendant protected the relevant technology as a trade secret in order to avoid becoming vulnerable to an obviousness or prior art defense.
Our panel includes an in-house IP counsel at a leading financial institution, and two patent litigators.
•Cedric DeLaCruz, The Hartford
•David Donoghue, Holland & Knight
•Gary Hoffman, Dickstein Shapiro LLP
Making the Move to First-to-FileWebinar Date: 01/18/2012
The change to a first-to-file (FTF) patent system was the biggest headline after the passage of patent reform law last year. But because the legislation also contained so many other complex provisions and FTF doesn’t kick in for many applications until March 16, 2013, it has been easy to put off addressing specific legal and operational options FTF puts in play. Experts caution, however, that the time to be thinking about those changes is now. Even companies that are used to FTF practices overseas may need to change their ways, given that they no longer will have the backstop of securing the U.S. market by being first-to-invent.
Our panel of experts will:
• Give recommendations on how companies can restructure their invention disclosure and priority filing systems, including consideration of trade secret protection.
• Consider how the new U.S. first-to-file system will be different than those that now exist internationally, and how those differences should be dealt with operationally.
• Focus in detail on the advantages and risks of provisional applications, particularly in light of the recent more-stringent requirements regarding description and enablement required by by courts and the USPTO .
• Discuss the special challenges FTF poses for biotech and other life sciences companies.
• Suggest strategies for investors with relatively limited R&D resources, such as inventors and universities.
Our panel includes the head of IP at a major biotech company, an international patent expert, and a law firm attorney among whose clients include number many startup companies and universities.
• Ned Israelsen, Knobble Martens Olson & Bear, LLP
• Stuart Watt, Amgen Inc.
• Harold Wegner, Foley & Lardner, LLP
Attorney-Client Privilege in Patent Prosecution and LitigationWebinar Date: 07/28/2011
Controversies about attorney-client privilege can arise throughout the life of a patent, from the preparation of the application through later enforcement. For instance, one IP boutique recently had to defend itself from charges of malpractice involving the prosecution of a patent for a group of assignees. The judge ruled that the firm had engaged in sufficient activity with regard to that assignee to result in an attorney-client relationship and fiduciary duty, giving rise to a conflict of interest in a subsequent matter.
The first part of the webinar will highlight possible pitfalls involving privilege in such joint development agreements, as well as in proceedings before the USPTO and immediately after a patent is granted. The discussion will then move to privilege issues in patent litigation, including recent cases involving spoliation, new rules regarding “clawback” and expert witnesses, and controversies that can arise in joint defense groups.
Our panel includes an academic expert in ethics & IP, a law firm attorney specializing in professional responsibility, and a manager of US IP litigation at a major technology company.
• David Hricik, Mercer University School of Law
• Peter Jarvis, Hinshaw & Culbertson
• Frank Nuzzi, Siemens
The Implications of Stanford v. RocheWebinar Date: 06/17/2011
In its June decision in Stanford v. Roche, the U.S. Supreme Court held that the Bayh-Dole Act does not give federal contractors automatic ownership of inventions that spring from federally funded research. Most universities will have already tightened up their invention assignment contracts to make sure that they don’t repeat Stanford’s mistake.
However, other aspects of the opinion are already engendering uncertainty. For instance, the Court cited the Federal Circuit’s 1991 FilmTec decision, which also involved a situation in which the inventor agreed to assign rights to an invention that resulted from research. In a footnote, however, the Court noted that it had “no occasion to pass on the validity of the lower court’s construction of those agreements.” And in his dissent, Justice Breyer explicitly criticized the Federal Circuit’s contract interpretation, while Justice Sotomayor’s concurrence stated that she understood the majority opinion to permit consideration of these arguments in a future case.
This panel will consider the contract terms at issue here. It will also examine the impact of the opinion on the patent reform debate, including the first-to-file provision.
• Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
• Ned Israelsen, Knobbe Martens Olson & Bear, LLP
• Jon Soderstrom, Yale University, Office of Cooperative Research
Invention Assignment - Global Best PracticesWebinar Date: 04/27/2011
Two high-profile cases in IP involve conflicts between inventors and the companies or universities where they worked. The bitter dispute over Bratz dolls began when Mattel said a designer came up with the idea for the edgy dolls when he worked there, before he moved to MGA which built the dolls in to a hugely profitable franchise. In Stanford University v. Roche, a case heard recently by the U.S. Supreme Court, some attorneys say Stanford’s plight in losing control of HIV discoveries, tangled with the Bayh-Dole Act, was the result of the University’s failure to negotiate a tight assignment agreement with its researchers and scientists. There are plenty of lower profile cases too. For instance, in the recent Federal Circuit case Advanced Magnetic Closures v. Rome Fasteners, an incorrect listing of multiple inventors led to the patent being deemed invalid. St. John’s University is suing the former head of its Department of Pharmacology and a former grad student for $30 million, 30 percent of the $100 million the two have earned by licensing patents on liquisolid systems.
Our panel of experts will consider best practices for employers globally on this issue. Topics covered will include invention assignment law and practice in the U.S. and in a cross-section of countries around the world. Consideration will also be given to how a multinational corporation should think about managing its invention assignment practices and how to avoid negative surprises after mergers and acquisitions. The panel includes an international employment law specialist, European patent lawyer, and an experienced in-house counsel.
• Daniel Brook
• Susan Eandi
• Noreen Johnson
Conflicts of Interest in Patent Prosecution and LitigationWebinar Date: 02/17/2011
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The unpleasant consequences of conflicts of interest in patent prosecution and litigation are a constant fact of life in the IP community. At present, at least two IP law firms are being sued for conflicts of interest regarding patent prosecution, where potential subject matter conflicts may be slow to become visible. On the litigation front, in the bitter conflict regarding the rights to Bratz dolls, an entire sideshow has centered on the disqualification of MGA’s lead counsel by Mattel.
Our panel of experts includes a law professor, the founder of a law firm, and an in-house counsel. They will discuss obvious conflicts, analyze many more ambiguous situations, and will lay out best practices on how to avoid trouble.
• Professor Lisa Dolak, Syracuse University
• Frank Nuzzi, Siemens Corp.
• Howard Skaist, Berkeley Law & Technology Group
How to Get the Most Out of a Royalty Audit – What IP Lawyers and Executives Need to KnowWebinar Date: 11/19/2010
In the current economic environment, companies need to squeeze every dollar of revenue they can out of their IP. And the work isn’t over for a licensor company once a licensee agrees to pay a royalty to use a given trademark or technology. The licensor also needs to be sure that the licensee is honest, accurate, and paying what it should. This webinar will spell out best practices for royalty audit provisions in licensing agreements and for actual audits, keeping in mind the goal of not needlessly aggravating the licensee.
• Sidney P. Blum, Green, Hasson and Janks
• Michael Labbee, Intel Corp.
• Jeff Leedom, PriceWaterhouseCoopers
• Ryan Pilgram, Qualcomm, Inc.
How to Solicit an Alternative Fee Bid for Patent Litigation: The Essentials for In-house CounselWebinar Date: 03/18/2010
The disadvantages of basing litigation legal fees on the billable hour have been discussed at much length. But coming up with a workable alternative – one that better aligns incentives for the client and the outside law firm – is hard work. This webinar features three speakers each of whom has hands on experience with that effort. An in-house legal procurement executive will share a detailed litigation proposal template developed at his company, based on cutting litigation into bite-sized “components.” The head of litigation at another company will share his cutting-edge experiments in alternative fees in patent litigation. And a consultant to in-house law departments will describe how and why in-house IP attorneys need to lose their wariness about alternative fee deals.
• Jeffrey N. Myers, Pfizer Inc.
• Chandan Sarkar, Johnson & Johnson
• Jason Winmill, Argopoint
How to Make an Alternative Fee Bid for Patent Litigation Work: The Essentials for Law Firm AttorneysWebinar Date: 03/16/2010
Patent litigation has been one of the last hold outs, but the trend away from the billable hour continues to erode the traditional law firm business model. Many law firms practicing IP law realize they need to be prepared to make alternative fee bids to win work. Yet in a poll taken during an IP Chat Channel webinar in November, nearly a quarter of the outside counsel responding said that their work on patent litigation using an alternative fee arrangement had been unprofitable or barely broke even. Clearly, alternative fee models make new demands on firms to collect and analyze data on their past experiences and to project future costs. This panel of experts includes a top consultant on law firm business, and two law firm attorneys, one with successful experience developing contingency fee arrangements, the other from a firm that has conducted an extensive data collection and analysis project aimed at developing profitable alternative fee work.
• Tim B. Corcoran, Altman Weil, Inc.
• David J.F. Gross, Faegre & Benson, LLP
• Jake Holdreith, Robins, Kaplan, Miller & Ciresi LLP
• Garret A. Leach, Kirkland & Ellis, LLP
Moving Away From the Billable Hour in Patent LitigationWebinar Date: 11/12/2009
The demise of the billable hour has been predicted for years, but today’s economic woes are finally pushing alternative fee arrangements into the mainstream. Fixed fees seem an odd fit for high-stakes patent litigation, but that doesn’t mean they haven’t been tried. Hear how the experiment works out for clients and top law firms.
• Kevin Rhodes, 3M Innovative Properties
• John Adkisson, Fish & Richardson
• William Lee, WilmerHale