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Intellectual Property Review—Updates and Changes from 2016 Intellectual Property Review—Updates and Changes from 2016 Cosponsored by the Intellectual Property Section Friday, February 17, 2017 9 a.m.–1:30 p.m. 4 General CLE credits INTELLECTUAL PROPERTY REVIEW—UPDATES AND CHANGES FROM 2016 SECTION PLANNERS Anne Koch, Wyse Kadish LLP, Portland Parna Mehrbani, Lane Powell PC, Portland John Rake, Larkins Vacura Kayser LLP, Portland John Russell, Alleman Hall McCoy Russell & Tuttle LLP, Portland Thomas Vesbit, Lorenz & Kopf LLP, Portland OREGON STATE BAR INTELLECTUAL PROPERTY SECTION EXECUTIVE COMMITTEE John D. Russell, Chair Thomas E. Vesbit, Chair-Elect Anne E. Koch, Past Chair Parna A. Mehrbani, Treasurer Ian D. Gates, Secretary Timothy S. DeJong Scott D. Eads Christopher D. Erickson Kimberly Nicole Fisher Amelia Forsberg Tomas Gomez-Arostegui Andrea Hicks Jasinek Elizabeth Tedesco Milesnick John Cathcart Rake Mark W. Wilson The materials and forms in this manual are published by the Oregon State Bar exclusively for the use of attorneys. Neither the Oregon State Bar nor the contributors make either express or implied warranties in regard to the use of the materials and/or forms. Each attorney must depend on his or her own knowledge of the law and expertise in the use or modification of these materials. Copyright © 2017 OREGON STATE BAR 16037 SW Upper Boones Ferry Road P.O. Box 231935 Tigard, OR 97281-1935 Intellectual Property Review—Updates and Changes from 2016 ii TABLE OF CONTENTS Schedule . v Faculty . vii 1. 2016 Patent Law Review—Presentation Slides . 1–i — Kevin Ross, Marger Johnson & McCollom PC, Portland, Oregon 2. Trademarks. 2–i Michael Heilbronner, IdeaLegal PC, Portland, Oregon — Andrea Jasinek, IdeaLegal PC, Portland, Oregon 3. Copyright Law Review 2017 . 3–i — Katherine Spelman, Lane Powell PC, Seattle, Washington 4. A Name Worth Fighting For: How Naming a Band Called The Slants Got Me to the Supreme Court. 4–i — Simon Tam, The Slants, Portland, Oregon Intellectual Property Review—Updates and Changes from 2016 iii Intellectual Property Review—Updates and Changes from 2016 iv SCHEDULE 8:00 Registration 9:00 Patent Law Review F 2016 Supreme Court patent decisions F Federal Circuit developments F Post-grant proceedings in the Patent and Trademark Office (PTO) F Patent-related legislation Kevin Ross, Marger Johnson & McCollom PC, Portland 10:00 Trademark Law Review F Federal cases F Trademark Trial and Appeal Board (TTAB) proceedings Michael Heilbronner, IdeaLegal PC, Portland Andrea Jasinek, IdeaLegal PC, Portland 11:00 Break 11:15 Copyright Law Review F 2016 decisions F Copyright Office developments F Pending cases and legislative proposals to watch in 2017 Katherine Spelman, Lane Powell PC, Seattle 12:15 Lunch: “A Name Worth Fighting For: How Naming a Band Called The Slants Got Me to the Supreme Court” Simon Tam, The Slants, Portland 1:30 Adjourn Intellectual Property Review—Updates and Changes from 2016 v Intellectual Property Review—Updates and Changes from 2016 vi FACULTY Michael Heilbronner, IdeaLegal PC, Portland. Mr. Heilbronner is president of IdeaLegal, a law firm he founded in 2004 after more than six years as in-house counsel for Adidas. There, he designed and implemented the company’s first comprehensive strategy for protecting its iconic Three-Stripe trademark in North America. Before joining Adidas, he worked as an associate with a prestigious intellectual property group. Mr. Heilbronner also serves as an adjunct professor of law at Lewis and Clark Law School, where he teaches the Advanced Trademark Practice and Strategy course. Andrea Jasinek, IdeaLegal PC, Portland. Ms. Jasinek focuses her practice in the areas of brand protection and enforcement, copyright, e-commerce transactions, and marketing. She began her legal career in the Technology and Intellectual Property group at Stoel Rives LLP, where she worked with clients ranging from Fortune 500 consumer brands to start-up app developers and small wineries. Kevin Ross, Marger Johnson & McCollom PC, Portland. Mr. Ross has experience drafting and prosecuting domestic and international patent applications in reconfigurable computing, digital circuits, video compression, computer memory systems, semiconductor fabrication, gaming systems, accelerometers, medical devices, camera lenses, and Internet business systems, among others. Mr. Ross is a member of the Oregon Patent Law Association and TechAmerica. In addition to his JD, he holds a degree in computer science. He is admitted to practice in Oregon, Washington, and Missouri and before the U.S. Patent and Trademark Office. Katherine Spelman, Lane Powell PC, Seattle. Ms. Spelman focuses her practice on copyright and digital publishing. She advises clients on cutting-edge copyright matters and provides strategic advice, design, and implementation counsel for large, midsized, and startup companies, including those engaging in personal digital devices and wireless technology. Ms. Spelman is a frequent speaker and author on the progress of emerging copyright and digital publishing issues and is a member of the Creative Commons board of directors. Simon Tam, The Slants, Portland. Mr. Tam is an award-winning musician, author, entrepreneur, and social justice activist. He has been a performer, presenter, and keynote at TEDx, SXSW, Comic-Con, the Department of Defense, Stanford University, and over 1,200 other events across North America, Europe, and Asia. He has set a world record by appearing on the TEDx stage 10 times. Mr. Tam is best known as the founder and bassist of The Slants, the world’s first and only all–Asian American dance rock and anti-racism band. He has been fighting a landmark case against the United States Trademark Office, which recently helped expand constitutional rights for marginalized communities. The case is now pending before the Supreme Court. Intellectual Property Review—Updates and Changes from 2016 vii Intellectual Property Review—Updates and Changes from 2016 viii Chapter 1 2016 Patent Law Review—Presentation Slides KEVIN ROSS Marger Johnson & McCollom PC Portland, Oregon Chapter 1—2016 Patent Law Review—Presentation Slides Intellectual Property Review—Updates and Changes from 2016 1–ii 2/14/2017 Chapter 1—2016 Patent Law Review—Presentation Slides 2016 Patent Law Review Kevin Ross Marger Johnson is a … • Full service Intellectual Property boutique law firm • Patents/Trademarks/Copyrights/Licensing/Enforcement • 9 attorneys, all USPTO registered • Founded in Portland in 1986 • Prior to his current position as a partner at Marger Johnson, Kevin Ross was in-house counsel to a startup, served as a US Patent specialist working in Italy, and began his patent career at a large Seattle boutique IP firm. Before law school Kevin was a computer application programmer. Intellectual Property Review—Updates and Changes from 2016 1–1 1 2/14/2017 Chapter 1—2016 Patent Law Review—Presentation Slides Plan for the next 55 minutes: Top 10 Issues in Patent Law 2016 • Odds and ends • #10 - Procrastination • #9 - Patent Agent/Client Privilege • Damages • #8 - Design Patent Damages • #7 - Willful Patent Damages (3x) • Bad Supreme Court Patent decision (for background) • Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) • Alice Corp v. CLS Bank International (2014) • USPTO tries to determine what the Supreme Ct. means • #6 – Constrained by the Courts to follow along • Fed. Cir. tries to determine what the Supreme Ct. means • #5 – Exactly 6 Fed. Circuit cases since the 2014 Alice decision pass difficult test Plan for the next 55 minutes: Top 10 Issues in Patent Law 2016 • #4 Supreme Court Decisions other than Alice-related • #3 Fed. Cir. decisions other than Alice-related • #2 The Unified Patent plan of Europe • #1 Pending legislation • #0 Post-Grant actions (PGR, IPR, CBM) Intellectual Property Review—Updates and Changes from 2016 1–2 2 2/14/2017 Chapter 1—2016 Patent Law Review—Presentation Slides Top issues in Patent law 2016 #10 • Procrastinators – time to celebrate, or time to plan ahead? • Immersion Corp. v. HTC Corp (Fed. Cir. 2016) • Does “before” mean “before”? #10) Immersion Corp v. HTC 35 USC §120 (1952)- Continuation application is valid … “if filed before the patenting or abandonment of or termination of proceedings on the first application”… MPEP §211.01(B) (1961)- … “it is sufficient for the second application to be copending with [the first application] if the second application is filed on the same day or before the patenting of the first application.” Immersion Corp filed for a line of continuation applications on the same day, then sued HTC on the child patents. HTC raised an invalidity challenge, as they were not filed “before” the parent applications issued. Intellectual Property Review—Updates and Changes from 2016 1–3 3 2/14/2017 Chapter 1—2016 Patent Law Review—Presentation Slides What is the right outcome? a) The child patents are invalid because they were not filed “before” issuance of the parent. b) The child patents are valid because of the MPEP guidance. #9 Patent Agent/Client Privilege • Is there a privilege in patent litigation related to communications between a patent holder/asserter and the patent agent who helped secure the patents? • In Re: Queens University at Kingston (Fed. Cir, 2016) • Writ of Mandamus after a discovery dispute in E.D. Tex. Intellectual Property Review—Updates and Changes from 2016 1–4 4 2/14/2017 Chapter 1—2016 Patent Law Review—Presentation Slides In Re: Queens University at Kingston (Fed. Cir, 2016) Queens University (CA) generates (US) patents through use of Patent Agent, later sues Samsung. Samsung requests fact discovery regarding communication between the University and its Patent Agent. Queens University refuses to produce documents, but produces 3 privilege logs identifying the documents and citing the reason for non-production as “Agent privilege” What is the right outcome? a) Patent agent privilege in the context of litigation exists – They don’t need to produce the documents b) There is no patent agent privilege – Produce the documents Intellectual Property Review—Updates and Changes from 2016 1–5 5 2/14/2017 Chapter 1—2016 Patent Law Review—Presentation Slides Fed Cir.
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