IP Chat Channel – Trademarks/Internet/Copyright
Webinars are listed in chronological order with the most recent at the top of the page.
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Blockchain: What IP Lawyers Need to KnowWebinar Date: 08/23/2016
Will blockchain technology soon leap beyond its initial success in the currency Bitcoin to disrupt many industries and the legal profession itself? That remains to be seen. But companies and clients are curious about blockchain’s potential, regardless of its timetable or ultimate impact, and IP lawyers can benefit from a better understanding of the distributed ledger technology and its implications.
Our panelists include a legal pioneer who is the former General Counsel of the Bitcoin Foundation, the executive vice president of IP at a technology company specializing in digital watermarking who has questions about blockchain, and a patent litigator. After a brief introduction to the technology itself, they will discuss:
- New Applications: Which industries beyond finance will embrace new blockchain applications – 3D printing and digital rights management, logistics and supply chain management, energy grid management, capital markets trading, real property transfers?
- Smart Contracts: These are contracts written in source code, recorded on a blockchain and then automatically performed and enforced without the involvement of contracting parties or central authorities. Will smart contracts enter the mainstream? Do they challenge the basic principles of contract law, contract interpretation and the application of equitable principles
- Security: What is the focus of the debate about blockchain security?
The IP landscape of blockchain — Open source or proprietary?: Many founders of Bitcoin embrace open-source models, but at least one pioneer is reported to have recently filed patent applications on the building blocks of blockchain. Other companies are quickly trying to amass patent portfolios around blockchain applications. But questions about patent eligibility and obviousness loom. Are many blockchain patents and applications little more than the computerized and non-novel application of an “abstract idea”?
Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, LLP
Open Source Due Diligence in M&AWebinar Date: 08/04/2016
Open source software (OSS) can shorten product development cycles and is likely something you use every day. OSS, however, is not free, and compliance with open source software may be in terms of a patent or copyright license instead of a monetary payment. In fact, OSS costs in an acquisition or merger can impact the valuation of the target, delay, or even scuttle the deal.
This webinar will focus on exploring OSS issues during due diligence. This includes examining how OSS was used by the target of the acquisition and whether such use aligns with the acquirer’s business model. The discussion will include:
- Exploring how an acquisition target uses the open source;
- Determining possible impacts on a target’s intellectual property both in terms of copyright and patents;
- Determining possible impacts on the acquirer’s intellectual property; and
- Possible ways to mitigate open source use of the target when such use does not align with the acquirer’s business model.
The moderator and panelists are experts in OSS at major technology companies.
Moderator: Joseph D’Angelo, EMC Corporation
Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.
Internet of Things: Standards, Licensing, or Litigation?Webinar Date: 06/16/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at a major buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about the inclusion of non-U.S. patents, the optimal size of a portfolio, the use of brokers, and bilateral licenses to the seller from the buyer.
Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, LLP
Nuts & Bolts of Registering Copyright on SoftwareWebinar Date: 05/12/2016
Our panel on May 12 will take a practical “how-to” approach on decisions companies face if they want to run a rigorous software copyright registration program. Software is protected under copyright law as a “literary work.” Software developers need to decide whether they want to copyright every revision of a program or just major releases. IP lawyers need to sort out issues involving work by coding contractors, how much and what to redact in submissions to the Copyright Office, and how to involve the software engineers who are a necessary part of the process.
J. Scott Evans, Adobe
Kate Spelman, Lane Powel
Karen Williams, SAP
Copyright on Software: What's Covered and What's NotWebinar Date: 05/11/2016
Our panel on May 11 will consider the development and future of copyright law concerning software, including matters of originality and fair use. Many experts believe the outcome of Oracle v. Google will have a significant impact on how the law will evolve. If Google’s fair use defense fails, they see a bigger chance of a circuit split eventually developing between the Federal Circuit and another Circuit court on the question of APIs’ copyrightability. The panel will also discuss the implications of a recent divergence between how U.S. and European law view APIs.
Jonathan Band, Jonathan Band PLLC
Dave Green, Microsoft
Jane Froyd, Jones Day
ITC and the Federal Circuit: Where Do ClearCorrect and Suprema Leave Patent Owners?Webinar Date: 12/10/2015
This webinar will consider the impact of two important recent Federal Circuit opinions on the jurisdiction of the U.S. International Trade Commission. In Suprema v. ITC, the en banc Federal Circuit reversed an earlier panel decision, finding that the Section 337 statute does give the ITC authority to adjudicate indirect infringement involving a method patent where the direct infringement occurs only after importation. More recently, in ClearCorrect v. ITC, a Federal Circuit panel ruled that the ITC may not block digital transmissions from outside the U.S. because the ITC’s scope is limited to “articles.”
Our panel includes two litigators who were opposing counsel in Suprema at the Federal Circuit, as well as an appellate law specialist. They will consider each case and also how they can (or cannot) be understood to mesh. They will also consider the leeway ClearCorrect leaves the ITC in its infringement analyses and what the end result is likely to be after the ITC pursues its appeal options.
Sasha Mayergoyz, Jones Day
Bert Reiser, Latham & Watkins
Darryl Woo, Vinson & Elkins
3-D Printing Advanced Topics for Patent Lawyers: Repair, Reconstruction, Exhaustion, InducementWebinar Date: 08/27/2015
Lawyers who want to give good advice regarding the disruptive technology of 3-D printing need to refresh their understanding of many areas of case law and rethink how it all fits together. For instance, companies with more than one business model – eg, those who both sell repair parts for machines they manufacture and also want to repair machines bought from others – may be subject to competing imperatives.
Our panel includes an IP lawyer at a major multinational manufacturer, a design patent specialist, and a patent litigator. Through the lens of 3-D printing, they will reconsider case law and current litigation involving repair, reconstruction, and exhaustion, including the pending en banc Federal Circuit Lexmark case; the pending Federal Circuit case on whether the International Trade Commission has jurisdiction over imports of digital files; and the issues of inducing and contributory infringement.
John Cheek, Caterpillar Inc.
Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Bryan Vogel, Robins Kaplan LLP
Safeguarding GUIs: Best Practices Using Multiple Layers of IP, including Design Patents, Utility Patents, Copyright and Trade DressWebinar Date: 04/29/2015
Protecting the IP of Graphical User Interfaces (GUI) is tricky – and crucial. Successful GUI is key to strategy at many corporations these days, as more manufactured products offer sophisticated digital features and connectivity through the Internet of Things. Our panelists — an attorney expert in design patents, an in-house lawyer who works to protect the inventions of an “experience design” team, and a software IP specialist — will discuss how best to protect GUIs using multiple layers of IP.
Design patents are certainly important, and have come to the fore recently because of Apple’s success in enforcing a GUI design patent against Samsung. But some sophisticated companies have actually backed off from filing design patents on GUI, concerned about how crowded the field is with prior art and how the quick pace of design changes during product development and even after launch make it necessary to file multiple applications to have any hope of a patent strong enough to enforce.
Utility patents protecting the functionality of GUI are facing their own challenges. A number of these patents have been invalidated in post-grant proceedings based on prior art. New patent applications face a higher hurdle because of Alice. Some experts wonder if copyright protection could fill the gap. Trade dress claims can be preempted by a registered copyright, but alone they may well be effective in protecting a GUI from copycats — if the GUI is already well-known and is associated by consumers with its particular source.
Michael Hsu, Adobe Systems Inc.
Robert Katz, Banner & Witcoff, Ltd.
Robert Lord, Osha Liang, LLP
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
What Every IP Attorney Should Know About Open Source SoftwareWebinar Date: 07/31/2014
Hosted by IPO’s Open Source Committee
Moderator: Kenneth Corsello, IBM Corp.
If software is eating the world, then open source software has swallowed a big bite. Many products sold today – from gene sequencers to electric trains to stand alone software applications – contain open source software as part of or as a complement to that product. While product developers find open source to be a very valuable tool, it comes with some legal strings attached and should be used properly. Unfortunately, many business and IP professionals are unfamiliar with the legal issues and compliance requirements that open source licenses impose. As a result, many businesses do not have in place a review process to ensure compliance with the open license and to advise the business team on the legal impact of using a particular open source software package. Tune in to this webinar to learn the basics of open source from an IP law perspective.
- What are “open source software” and “open source licenses”?
- What are examples of conditions set by open source licenses and what is their relationship with IP law?
- What happens if you use or distribute code without complying with an open source license?
- How do you manage the risks associated with open source code?
Our panel includes in-house practitioners who advise their clients on open source issues on a regular basis. Among the issues they will discuss are:
- Victor Huang, Illumina
- Joseph D’Angelo, EMC Corp.
- Elaine Lee, Hewlett-Packard Co.
Design Patents and Trade Dress: Significant Recent LitigationWebinar Date: 01/22/2014
Interest in design rights is at an all-time high thanks to their role in global smart phone and tablet litigation. The number of applications for design patents at the USPTO is growing rapidly. Jurisprudence for design rights continues to evolve, and the results of recent significant U.S. litigation should play a role in future litigation and patent prosecution strategy. Our panel will discuss:
- the Sixth Circuit decision in Groeneveld Transport v. Lubecore , which discusses the nonfunctionality requirement for trade dress protection
- the Federal Circuit decision in High Point Design v. Buyer’s Direct, which clarifies the design patent test for obviousness
- the PTAB’s decision not to grant a petition for inter partes review to ATAS, which was trying to invalidate a design patent for a building panel owned by Centria
- the recent Federal Circuit decision in Pacific Coast Marine v. Malibu Boats, holding that the principles of prosecution history estoppel apply to design patents.
- Tracy-Gene Durkin, Sterne, Kessler, Goldstein & Fox, PLLC
- Richard McKenna, Foley & Lardner, LLP
- John Cheek,Caterpillar Inc.
Oracle v. Google at the Federal CircuitWebinar Date: 11/20/2013
On December 4, a Federal Circuit panel will hear an appeal brought by Oracle of a decision against it this spring in the Northern District of California. That decision, in a case involving the Android and Java mobile telecommunication platforms, found that application programming interfaces (APIs) cannot be copyrighted. The appeal’s outcome is of great importance to the software industry: APIs are the sets of instructions that allow different software programs to be interoperable.
The case is being heard at the Federal Circuit, rather than at the Ninth Circuit, because the original action in district court included patent infringement claims. Interestingly, the Federal Circuit is having its own internal debates about the patentability of software, as evidenced by the recent divided en banc opinions in CLS Bank.
Our panel includes a recently retired judge from the Federal Circuit and authors of amicus briefs for the opposing parties. They will discuss what the Federal Circuit panel is likely to rely on in its deliberations and the possible outcomes, including whether the case must be decided on the “all-or-nothing” basis on which it was argued.
- Hon. Arthur Gajarsa, Wilmer Cutler Pickering Hale and Dorr LLP
- Professor Pamela Samuelson, University of California at Berkeley
- Lance Koonce, Davis Wright Tremaine LLP
Design Patents, Trade Dress, Copyright and Utility Patents: How to Prosecute and Enforce Multiple Layers of IP ProtectionWebinar Date: 07/17/2013
A corporation or inventor with a potentially valuable product will often want to take a “belt-and-suspenders” approach to protecting intellectual property. Rather than rely only on one layer of IP protection, the owner will try to protect the same product with varying forms: eg, design and utility patents, trade dress protection, and/or copyright.
This webinar will discuss the opportunities and challenges of this strategy both in the U.S. and overseas. One primary opportunity is the possibility of extending protection beyond the “20 years from filing date” term of utility patents and “14 years from date of issue” term of design patents. Enforcement flexibility may also be a goal, eg, the ability to enforce trade dress remedies, set out in the Lanham Act, against a copycat product that doesn’t directly infringe a utility patent.
But practitioners must be careful not to let one form of IP protection negate another. In the 2001 U.S. Supreme Court decision TrafFix Devices. v. Marketing Displays, for instance, the court held that a functional design could not be trademarked, while the 2010 Federal Circuit decision in Richardson v. Stanley Works illustrated the dangers of incorporating functional elements in a design patent. Our panelists — an in-house counsel for a multinational consumer goods company and two law firm litigators — are experienced in the nuances of multiple forms of IP.
- Mark Charles, Procter & Gamble Co.
- John Froemming, Jones Day
- Richard Stockton, Banner & Witcoff, Ltd.
Kirtsaeng: Implications for Patent LawWebinar Date: 04/11/2013
Can a principled distinction concerning international exhaustion be drawn between copyright and patents? That’s a question that is of interest to patent owners since the U.S. Supreme Court’s recent decision in Kirtsaeng v. John Wiley & Sons.In that decision, the court found that an authorized sale of a book manufactured abroad exhausts a company’s U.S. copyright. According to some experts, this result raises questions about U.S. Court of Appeals for the Federal Circuit precedents such as Jazz Photo that reject the notion of international exhaustion for patents. On the other hand, the decision in Kirtsaeng rests heavily on statutory wording and legislative history that have no direct bearing on the judge-created patent doctrine. Early resolution of this uncertainty was forestalled when the U.S. Supreme Court denied certiorari of Ninestar Technology v. Epson just days after it delivered its opinion in Kirtsaeng.Our panel will consider how factors governing international patent exhaustion are different from those governing copyright law and whether they will convince the U.S. Court of Appeals for the Federal Circuit to affirm Jazz Photo when it next has the opportunity. They also will discuss steps patent owners can take now to deal with a possible shift to international patent exhaustion, including:
- licensing provisions and other contractual restrictions,
- localizing product offerings, and
- “tethering” patented products so they require an interaction with a central server using “unlock codes” that restrict international transfer.
- Buckmaster De Wolf, General Electric Co.
- Annette Hurst, Orrick, Herrington & Sutcliffe LLP
- Gary Hoffman, Dickstein Shapiro LLP
3-D Printing: IP Challenges AheadWebinar Date: 03/25/2013
3D printing has burst into the public consciousness. Creating an object by layering thin layers of material, one on top of the other – “printing” in three dimensions – promises to deliver big gains in manufacturing efficiency with far less waste. It also has the potential to unleash creativity, allowing, for instance, the far more rapid and inexpensive creation of prototypes.But as the potential of 3D printing becomes more apparent, so does its potential to disrupt existing business models and legal frameworks. The looming analogy: the effect of the video recorder and digital files on the music, film and other media industries, still reeling from the impact of copying and low-cost distribution.The turbulent cultural and political history of the “copyright wars” to date is also sure to influence the evolution of 3D printing.This webinar will examine the challenges 3D printing poses to owners of IP, including patents, copyright, and trademarks.The panel includes an in-house patent counsel at a major international equipment company, a copyright attorney with specialized knowledge of open source software, and a public interest lawyer specializing in digital rights. Among the topics they will consider:
- How much patent infringement will take place thanks to 3D printing, and what efforts will patent owners take to enforce their patents as a result?
- Will 3D industry players, such as printer manufacturers, makers of scanners, and printing services, be found liable for inducement of infringement?
- How does copyright intersect with 3D printing and to what extent does the Digital Millennium Copyright Act apply?
- How will 3D printing affect the value of trademarks?
- John Cheek, Caterpillar Inc.
- Mark Radcliffe, DLA Piper
- Michael Weinberg, Public Knowledge
Part 2: IP in BankruptcyWebinar Date: 08/02/2012
IP can often be a troublesome issue in bankruptcy, and no wonder: the goals of bankruptcy law and IP law are often at odds. Bankruptcy law was designed to maximize the debtor’s value, while IP law aims to protect a party’s right to control access to its IP.
For example, when a company enters bankruptcy, a debtor generally enjoys nearly unfettered discretion to sell company assets and to assume, assign or reject contracts notwithstanding contractual provisions. But the rules become far more complicated, and the debtor’s options may be dramatically restricted, where the IP rights at issue are the subject of a license. Where the debtor has licensed its IP to an unaffiliated third party, section 365(n) of the Bankruptcy Code permits the licensee to retain certain of its rights under the license even after it has been rejected by the debtor-licensor if the licensee continues to pay all royalties. And if the debtor has licensed IP rights from a third party, IP laws may altogether prevent the debtor from assuming or assigning the underlying license absent the licensor’s consent.
Our panel, which includes two bankruptcy attorneys and an IP lawyer specializing in transactions, will consider key issues, including the current split among federal appellate courts regarding the test applied to determine whether a debtor-licensee may assume an IP license and when a debtor-licensee may assign its IP license to an unaffiliated third party. The panelists will also address section 365(n) and the ways in which patents, copyrights, and trademarks are treated differently in bankruptcy.
- David Klein, Foley & Lardner, LLP
- Kimberly Posin, Latham & Watkins LLP
- Glenn Walter, Skadden, Arps, Slate, Meagher & Flom LLP
Part 1: IP in Debt TransactionsWebinar Date: 08/01/2012
As IP is increasingly recognized as a valuable asset, there are new opportunities for companies to use it as collateral or security for loans. For instance, the Financial Times recently reported that several U.S. banks want to insure the value of the IP holdings of some borrowers as a way of trimming the banks’ capital requirements. Such a move should allow the borrowers to win lower loan rates.
Our panel will analyze a broad spectrum of issues raised by IP in debt transactions, including due diligence, documentation, and perfection of the lender’s security interest. Sometimes IP can pose a hurdle in financing, for instance when a would-be borrower is a licensee of a valuable license for which no assignment can be made without the licensor’s consent. The possibilities and impediments to using IP rights in cross-border financial transactions will also be addressed.
Our panel includes three lawyers with experience in technology transactions, including the use of IP as collateral.
- Roxanne Christ, Latham & Watkins LLP
- David Klein, Foley & Lardner, LLP
- Elaine Ziff, Skadden, Arps, Slate, Meagher & Flom LLP
Design Patent LitigationWebinar Date: 06/07/2012
Design patents have come to the fore in the smart phone wars. For instance, Apple could win a preliminary injunction in the U.S. against Samsung’s Galaxy tablet on the basis of infringement of one of Apple’s design patents covering its iPad. On May 14, the Federal Circuit partially vacated an order denying Apple a preliminary injunction and remanding the matter for further proceedings.
This webinar will examine hot topics in design patent litigation, and how they are playing out in recent decisions. Among the issues to be discussed:
- What is the current state of law on the issues of design patent obviousness and anticipation?
- Will the Apple v. Samsung court’s strict reading of the In re Rosen “basically the same” requirement make it more difficult to prove obviousness in future design patent cases?
- How have courts been addressing so-called “functional features” in view of the Federal Circuit’s decision in Richardson v. Stanley Works?
- What are the implications of the Federal Circuit accepting Apple’s “design dilution” theory of irreparable harm?
- Will the court’s requirement of a “nexus” between a patented feature and market demand become a factor in injunction analysis for both design patents and utility patents?
Our panel includes design-patent specialists at two law firms and an in-house IP enforcement counsel.
- Daniel Brean, The Webb Law Firm
- Chris Carani, McAndrews, Held & Malloy, Ltd.
- Lucy Nichols, Nokia Inc.
ACTA: What Will Be Different for Owners of U.S. IP?Webinar Date: 04/15/2012
The last round of negotiations among major trading partners are concluded, and The Anti-Counterfeiting Trade Agreement (ACTA) is almost ready for President Obama’s signature.
But serious questions remain. The new international framework is designed to help IP owners by combating the global proliferation of commercial counterfeiting and piracy. But some of the very companies ACTA is trying to help are troubled by some of its possible implications. For instance, in responding to the USTR request for comments on the final text of ACTA, IPO wrote that “our principal concern with the language used throughout the present draft of ACTA is that it might be interpreted so as to blur the vital difference between what constitutes counterfeiting and piracy per se, from what is merely civil infringement.” For instance, some experts say that ACTA would provide for the seizure of infringing goods in run-of-the-mill disputes involving substantially similar trademarks. What’s more, the definition of IP within the agreement is so wide that that the infringement of patents and
industrial designs could end up being criminally enforceable offenses under U.S. law.
The webinar will consider such questions as:
• Once adopted, what will ACTA change for U.S. companies that are trying to protect their IP?
• Are there any provisions in ACTA that will require a change in existing U.S. law?
• What will be the role of the U.S. IP Czar in relationship to ACTA?
• What is the relationship between ACTA provisions and anti-counterfeiting legislation now under consideration in the U.S. Congress?
• What are the remaining steps to adoption in the U.S. and in other countries?
The panel is comprised of the USTR official who led negotiations for ACTA, the USPTO lead technical adviser on ACTA, and a law firm attorney specializing in digital technology and government relations who has represented clients’ interest during the ACTA negotiations.
• Stanford McCoy, Office of the U.S. Trade Representative
• James Burger, Dow Lohnes
• Peter Fowler, USPTO
Dilution of Famous Marks: The Second Circuit Decision on “Charbucks”Webinar Date: 12/17/2009
When the Trademark Dilution Revision Act was signed in to law in 2006, it was seen as a great victory for owners of famous brands. But subsequent decisions, such as the holding that Louis Vuitton failure to prove dilution by pet toy Chewy Vuitton at the Fourth Circuit, have raised the question of just what it takes to prove dilution. Now the influential Second Circuit has weighed in, delivering its decision on the case of Starbucks Corp. v. Wolfe’s Borough Coffee, the seller of Mr. Charbucks and Charbucks blend coffee. This panel will discuss and analyze the Second Circuit’s decision and distill lessons for brand owners.
• David Bernstein, Litigation Partner, Debevoise & Plimpton LLP
• Ted Max, Partner, Sheppard, Mullin, Richter & Hampton, LLP
• Russell Pangborn, Associate General Counsel for Trademarks, Microsoft Corp.
The Opportunity and Challenge of Internationalized Domain NamesWebinar Date: 12/03/2009
At the October ICANN meeting in Seoul, brand owners got a break: ICANN decided to go slow on introducing controversial new generic top-level domain names. But at the same meeting, ICANN also approved the biggest technical change to the Internet since it was created four decades ago. The new Internationalized Domain Names Fast Track Process will enable countries and territories that use languages based on scripts other than Latin to offer their users domain names in non-Latin characters. Reports indicate that 25 countries are interested and the first round of registrations began in November.
Brand owners will soon be able to communicate with millions of people who don’t use Roman characters, but the job of domain name searching and policing also grows much bigger. Discussing the changes are a law firm attorney intimately involved in the ICANN process, a top Internet official at a country about to launch a suffix in its own non-Latin language, and the top in-house trademark lawyer at a major global corporation.
• Andrei Kolesnikov, Director, Coordination Center for TLD RU;
Council Member, Generic Names Supporting Organization of ICANN
• Steve Metalitz, Partner, Mitchell Silberberg & Knupp LLP;
Past six-term president of the IP Constituency of ICANN
• Carl Roof, Global Trademarks Director, Procter & Gamble Co.