| Minnesota Intellectual Property Law Association |
2021 MIPLA Stampede Sessions
Monday, May 17th - Thursday, May 20th
European Priority Claims
Providing practical tips to ensure that a priority claim is not found invalid in Europe. This is especially relevant when listing the applicants for a PCT application when it is first filed, following which it may not be possible to recover the priority claim in Europe. If the priority claim is lost and if there is relevant prior art that was published between the priority date and the PCT filing date, then the scope of protection that is available in Europe can be significantly reduced.
- Ben Hoffmann, Potter Clarkson - Ben has worked in private practice since joining the patent profession in 2005, and is a UK and European patent attorney. With a strong technical background in chemistry, most of his patent work has been in the chemical and materials sciences, particularly for new technologies where the invention lies in the novel properties of the chemicals or materials being used in the device or product. Ben has extensive experience handling opposition and appeal work at the European Patent Office in technologies ranging from medical devices, pharmaceuticals, manufacturing and materials science, with several high value cases being handled alongside co-pending litigations in a number of jurisdictions.
- Dave Clark, Potter Clarkson - Dave is an experienced UK and European patent attorney, having been in the patent profession since 2003. Dave has a background in the physical sciences, with a particular focus on computer-implemented and electronics-based inventions. He has extensive experience in drafting patent specifications, engaging with patent examiners, managing patent portfolios, and representing his clients in hearings at the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO), as well as performing due diligence and freedom-to-operate exercises. He has been involved in appeals from the UKIPO to the courts in relation to the patentability of computer implemented inventions, including a successful appeal to the English High Court for Astron Clinica et al, following which the UKIPO's practice of not granting claims for computer programs was overturned
Introduction to Trademark Law: How to Clear and Register Trademarks
Learn the importance of searching and clearing trademarks so that you select a mark that does not infringe on another’s trademark rights. Understand how to federally register trademarks and why it is important to do so. A trademark clearance checklist, a sample trademark clearance opinion, and a checklist for preparing a trademark application will be provided.
- Stephanie Gamache Tungseth is Senior Counsel at Polaroid where she oversees the company’s legal affairs in the Americas. She is an experienced corporate counsel within the consumer electronics industry, and skilled in the areas of trademarks, copyrights, IP licensing, contract negotiation, corporate governance, legal compliance, and privacy. Her primary responsibilities include the management of Polaroid’s global licensing program, and the protection and enforcement of Polaroid’s robust worldwide trademark portfolio. Stephanie is an Adjunct Professor at Mitchell Hamline School of Law, and she is a member of the International Trademark Association (INTA), Association of Corporate Counsel (ACC), Minnesota Intellectual Property Law Association (MIPLA), and the Jimmie V. Reyna IP American Inns of Court. In her free time, Stephanie enjoys playing tennis, gardening, listening to true crime podcasts, and spending time with her husband and two dogs.
- Patrick Gallagher is a partner at Barnes & Thornburg. Consistently providing strategic advice and serving as an invaluable confidante, Patrick Gallagher has worked diligently for his clients – and continues to do so – to help them realize a return on their investment regarding their brands, creative assets, innovations, and transformative products and services. Clients consider Patrick to be a trustworthy resource. With a broad spectrum of intellectual property skills developed over his two decades of practice, Patrick helps clients understand the best path to take to effectively protect and defend their valuable brands and other intangible assets. He accomplishes this through practical and efficient use of IP law, including trademarks, copyrights, trade secrets and patents. He serves clients across a wide range of industries, including professional sports and entertainment, retail, education, agriculture, transportation, software and information technology, consumer goods, food service, and industrial equipment. Patrick is currently an adjunct professor at the University of Minnesota, teaching Trademarks, and he has previously been an adjunct professor at University of St. Thomas School of Law and Mitchell Hamline School of Law, teaching various IP topics.
Fraudulent Trademark Filings and a New Tool in the Toolbox: the Trademark Modernization Act
Over the past handful of years, there has been a growing crisis affecting the very structure of our trademark registration system. There has been a parabolic growth curve of fraudulent trademark applications flooding the United States Patent and Trademark Office which could effectively clutter and block legitimate filers’ efforts to secure their own trademark rights. Moreover, these fraudulent marks undermine the very integrity of the U.S. trademark system. So, what’s being done and what are some proposed solutions? One tool that has been recently added in our arsenal to combat this threat is the Trademark Modernization Act (TMA). Join us for this trademark session to hear about the extent of the problem, how it can affect businesses of all sizes, how to identify key attributes of these fraudulent applications to help you and your clients, and what the TMA hopes to accomplish.
- Stephen Lee is Chief I.P. Counsel at Target and has been with the company for the past 18 years. His practice has covered the entire spectrum of I.P. matters, as he had been responsible for all trademark, copyright and patent work. Particularly rewarding is the fact that his team provides legal services and advice to practically every business team within Target and has touched almost every one of Target’s key strategic initiatives. He manages a team of 24 high-functioning I.P. professionals, and he has first-hand experience leading his team through the ups and downs of the retail landscape transformation. For the eight years prior to joining Target, Stephen practiced law as a partner at Fish & Richardson and as an associate at Faegre & Benson both in Minneapolis. In private practice, Stephen’s practice was equally diverse as it covered all aspects of I.P.: portfolio maintenance, litigation, contract drafting and negotiation, and strategy and counseling. Stephen is a proud graduate of the University of Texas where he received both his B.A. and J.D. degrees. Stephen is married and has three children, ages 15, 13 and 4.
Preventing and Defending Against Trade Secret Misappropriation Claims
Non-disclosure agreements (NDAs) and master service or software agreements (MSAs) are widely known and used when two companies engage in confidential discussions for product development, vendor engagement, or other joint activities. But what happens when the discussions fizzle out and/or the companies part ways, and one of them develops technology that was the subject of the discussion? Companies that are on the receiving end of confidential information may have exposed themselves to later claims of trade secret misappropriation. What can companies to do prevent or defend against such claims when their own development efforts were truly independent of the confidential discussions?
This presentation will cover best practices to prevent and defend against trade misappropriation, touching upon drafting non-disclosure contracts and software license agreements, setting up clean rooms for in-house development, and litigation strategies.
- Lauren Linderman, Partner, Faegre Drinker – Lauren litigates complex commercial disputes, advocating for businesses during trade-secret and non-compete litigation and other business torts and contractual disputes. She helps companies protect the valuable trade secrets and intellectual property that are critical to their business, including by providing strategic advice and oversight on trade secret protection programs and implementation of clean room development plans. Lauren has extensive consulting, pretrial, and trial experience with complex commercial and intellectual property disputes and is licensed to practice law in two states (Minnesota and California). Lauren’s experience includes a part-time secondment with UnitedHealth Group’s IP Legal team. Lauren is a former federal law clerk and graduated order of the coif from the University of Southern California Gould School of Law, where she served as Editor-in-Chief of the Southern California Law Review.
- Linhda Nguyen, Senior Associate General Counsel, UnitedHealth Group – Linhda is an in-house lawyer in UnitedHealth Group’s IP Legal team and is based in the Minnetonka, MN headquarters. Linhda provides support and counseling to internal business leaders and employees across the Enterprise (including subsidiaries UnitedHealthcare and Optum) on all aspects of IP. She wears many hats within her team, due to her broad subject matter knowledge of all IP areas, ranging from patents to trademarks, copyright, trade secret, contracting and clean room software development. Her day-to-day work involves managing patent and trademark review, clearance and filings from end-to-end, negotiating and drafting IP contracts, and advising on IP risks. Prior to joining UnitedHealth Group, Linhda had a unique dual role as an IP litigator and trademark prosecutor as an associate at Merchant & Gould, P.C.
-
Ryan Strom, Director Counsel – Intellectual Property, Target – Ryan received his undergraduate degree from Stanford University, and his J.D. and Master’s Degree in Mechanical Engineering from the University of Minnesota. He began his legal career at several Twin Cities-area law firms – first as a litigator and then as a patent prosecutor. He then moved in-house as Senior Counsel for Philip Morris International, overseeing its Brand Integrity function in Latin America & Canada. Ryan is now Director Counsel, Intellectual Property at Target. His current responsibilities include managing Target’s data science, supply chain and footwear patent portfolios, providing legal counsel in connection with Target’s open source software program, and negotiating software, technology and licensing agreements.
-
Maximizing Value When Acquiring or Divesting Patents for Assertion
For those who invest in or own intellectual property assets, there are practical considerations that should be kept in mind regarding licensing terms to include, or avoid, when either acquiring IP assets or spinning out new IP-driven entities. In this presentation, gain a litigator’s perspective on how to preserve and maximize value in these transactions. Presenters will discuss best practices for provisions related to topics such as 1) standing, including revenue sharing provisions, rights retained by prior IP holder, and scope of prior commitments; 2) damages, including prior offers and licenses; 3) participation by inventors; and 4) how the acquisition documents may be used in litigation, including concrete steps that can be taken to maximize the value of such documents through the use of prophylactic language.
- John K. Harting, Partner, Robins Kaplan LLP - John Harting is a partner in the Robins Kaplan LLP Intellectual Property and Technology Group. His practice primarily focuses on IP-related matters, with an emphasis in patent and copyright litigation. He represents both plaintiffs and defendants in forums including district courts, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). John has helped his clients obtain over $100 million in settlements and judgments while also successfully defending against large-scale patent infringement allegations.
- Jessica L. Gutierrez, Associate, Robins Kaplan LLP - Jessica Gutierrez is an associate in the Robins Kaplan LLP Intellectual Property and Technology Group. She leverages her technical background in engineering and broad IP experience to help her clients navigate every stage of the litigation process, from pre-suit evaluation to trial. She has represented clients in district court and before the Patent Trial and Appeal Board. She also has experience preparing and prosecuting patent applications, conducting freedom to operate analyses, drafting non-infringement and invalidity opinions, and preparing licensing agreements.
-
Ryan Schultz is a partner in the Robins Kaplan LLP Intellectual Property and Technology Litigation Group. As a trial lawyer who helps his clients obtain value and protection for their technology, Mr. Schultz works with his clients to align litigation strategy with business objectives. He leverages his background in genetics and biochemistry to obtain a deep understanding of his clients’ core technologies. He has experience in litigation related to consumer electronics, software, teleradiology, semiconductors, pharmaceuticals, medical devices, ophthalmic devices, video gaming machines, and wireless and cellular communication systems. Mr. Schultz also helps his clients monetize their intellectual property, including performing due diligence on IP issues and conducting valuations of extensive patent portfolios.
Proving Patent Infringement under the Doctrine of Equivalents: What Is Required and Current Case Law Trends
The presentation will provide an overview of the current standard for proving infringement under the doctrine of equivalents. The presentation will cover controlling Supreme Court precedent, and recent Federal Circuit and district court decisions applying this standard. Examples of equivalency claims will be reviewed, including graphics used to prove equivalency from an actual patent trial. The presentation will provide a complete picture regarding what has been found to infringe under the doctrine of equivalents, what has not, and how equivalency has been successfully proven or defeated.
The presentation will also review the procedural requirements for sufficiently pleading equivalency, disclosing equivalency theories in court-required infringement contentions, and proving equivalency by experts and other evidentiary means. Issues concerning bars to equivalency due to patent prosecution will also be reviewed. The presentation will be designed to engage the interest of intellectual property litigators, in-house patent counsel, and patent prosecution practitioners.
- Courtland Merrill is a trial lawyer and partner at the Minneapolis firm of Anthony Ostlund Baer & Louwagie P.A. His practice focuses exclusively on civil litigation, including claims of patent infringement and other intellectual property litigation matters. He tried patent cases to juries in federal courts, including a successful claim for infringement under the doctrine of equivalents, and argued before the U.S. Court of Appeals for the Federal Circuit.
Surviving and Thriving in Challenging Times: Bias & Trauma (1 hour Elimination of Bias)
In the best of circumstances, the practice of law is stressful. In addition to the higher levels of stress legal professions endure, we are often exposed to traumatic events and situations of varying intensity. Both stress and trauma exact physical, emotional, and mental tolls on our well-being. This program examines the effects of chronic and acute stress, the four types of trauma, and the role that bias and stigma play in our ability to manage our well-being effectively through challenging times.
- Joan Bibelhausen has served as Executive Director of Lawyers Concerned for Lawyers since 2005. She is an attorney and is nationally recognized for her work in the lawyer assistance and diversity and inclusion realms. Joan has significant additional training in counseling, mental health and addiction, diversity, employment issues, and management. She has spent more than two decades working with lawyers, judges, and law students at a crossroads because of mental illness and addiction concerns and well-being, stress, and related issues.
- Bob Schuneman, JD, MBA, is LCL’s Outreach Coordinator. Bob is a graduate of Mitchell Hamline School of Law and holds an MBA in Marketing from the University of Saint Thomas. Before becoming a lawyer, Bob was a business executive for many years. He taught business courses on graduate and undergraduate levels at Twin Cities colleges and universities for nineteen years. Before joining LCL, Bob practiced as a solo attorney in Woodbury, representing business and individual clients.
Panel Discussion on PTAB particularly Fast Track Appeal
Come hear James Smith (Ecolab) and Judge Scott Boalick (USPTO) discuss current issues regarding the Patent Trial Appeal Board (PTAB). We will discuss the Fast Track Appeal process, the Legal Experience and Advancement Program (LEAP), and Arthrex and what it might mean for PTAB.
- Scott Boalick, Chief Judge, USPTO, is the Chief Judge for the Patent Trial and Appeal Board (PTAB). In this role, he leads the PTAB as it conducts post-grant trials, including inter partes reviews, post-grant reviews, covered business method patent reviews and derivation proceedings, and as it hears appeals from adverse examiner decisions in patent applications and reexamination proceedings. Chief Judge Boalick was appointed to the Board in 2007. Prior to becoming the Chief Judge, he served as an Administrative Patent Judge, Lead Judge, Vice Chief Judge, and Deputy Chief Judge. Before joining the USPTO, Judge Boalick served as a patent attorney with the Department of the Navy at the Naval Surface Warfare Center Carderock Division and the Naval Surface Warfare Center Dahlgren Laboratory. In these roles, he advised clients concerning a wide range of intellectual property issues, including patent, trademark, copyright, technology transfer, administrative claims, and rights in technical data and computer software. He prepared and prosecuted patent applications and assisted the Invention Evaluation Board to select and prioritize inventions for patenting. Before that, he practiced with Fish & Richardson in Washington, D.C., where he counseled clients on all aspects of protecting intellectual property, including patent acquisition, portfolio management, and litigation. He litigated claims of patent infringement in the International Trade Commission, district court, and the Federal Circuit, and also prepared and prosecuted numerous patent applications in a variety of technology areas. Prior to his time at Fish & Richardson, Judge Boalick served as a law clerk to the Hon. Alvin A. Schall of the United States Court of Appeals for the Federal Circuit. Judge Boalick began his career as an officer in the U.S. Navy, serving as a division officer on the USS Mobile Bay (CG-53) and as an instructor at the Surface Warfare Officer School. After his active duty service, he worked as a radar systems engineer at Technology Service Corporation. Judge Boalick earned a J.D., magna cum laude, from Georgetown University Law Center where he was a Notes and Comments Editor of The Georgetown Law Journal and received the Leon Robbin Patent Award. He earned both an M.S.E. in Systems Engineering and a B.S.E. in Electrical Engineering, magna cum laude, from the University of Pennsylvania.
-
James Donald Smith serves as Chief IP Counsel of Ecolab USA. In his current position, Smith oversees the company’s global operations relating to patents, trademarks, and copyrights, and other matters related to protection of Ecolab innovation. Early in his career, Smith served as a judicial clerk to now retired Chief Judge Paul Michel at the United States Court of Appeals for the Federal Circuit. He also practiced with Arnold White & Durkee and, later, Dewey Ballantine, serving as the office managing partner of Dewey's Texas office. Mr. Smith, who is also a former Assistant Dean of the law school at Emory University in Atlanta, has experience both as a patent litigator and patent prosecutor, and he has led in-house IP teams for three multi-national corporations, serving as Lexmark’s Chief IP Counsel, Nokia’s Global Director of Licensing, and as Associate General Counsel and Chief IP Counsel of Baxter International. Most recently, Mr. Smith served as the Chief Administrative Patent Judge at the United States Patent and Trademark Office (USPTO), where he led the Patent Board and oversaw its transition from the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board. Mr. Smith holds a bachelor’s degree in electrical engineering from the University of Maryland, and a juris doctor degree from Duke University. He is also a registered patent attorney.
Music Modernization Act
We will cover: Music copyright basics and how copyright law was changed by the Music Modernization Act. What are mechanical licenses? Who is entitled to royalties from mechanical licenses? Who collects royalties from mechanical licenses? How it worked before the Music Modernization Act and how it will work now. The new Mechanical Licensing Collective (MLC): what it is, what it collects, who should join, and how to join. Other types of royalties and who collects them.
- Alexandria (Alex) Mueller is an award-winning composer and multi-instrumentalist with a keen interest in building instruments and designing experimental performance techniques and customized sounds to augment her sonic palette. Alex studied film scoring at Berklee College of Music and the Seattle Film Institute. A student of many styles, her musical range includes everything from subtle strings and minimalist piano to moody synth and bombastic orchestral scores. She composes for films, television, video games and other media as well as concert music for orchestra, wind band, chamber ensembles and choir. In addition, Alex is an entertainment attorney and the Chair of the Sports, Art and Entertainment Law Section of the Minnesota State Bar Association. She works with businesses of all sizes in a variety of industries including filmmakers, event vendors, musicians and performing ensembles, composers, artists, authors and game and software developers to manage their rights and maximize their market potential. Her entrepreneurial mindset and experience “in the trenches” of the entertainment industry provide a common bond with clients who put their hearts and souls into both their creative and business endeavors.
Keynote Address
Uncommonly Together in Law & Life: Exploring the Value of Diversity at Work as Legal Professionals and Outside of Work as World Citizens
We have seen how the world has been easily upended by a pandemic. We also witnessed inexplicable killings of black Americans by police, endless instances of hate displayed toward Asian and Pacific Island Americans, and an unprecedented storming of the seat of our government. As lawyers, we’re called to a higher standard and how we respond and engage in times like these matters. Let’s discuss how we as legal professionals can impact diversity, equity, and inclusion in our workplaces, with our clients, our customers, and the world at large and why we should seek to do so.
- Dara M. Kendall, Vice President & Associate General Counsel, Global Fabric & Home Care, The Procter & Gamble Company - Dara Kendall leads the legal team supporting P&G’s global Fabric & Home Care businesses, which account for over $23 billion in annual sales. Her work spans IP development strategy and enforcement, advertising, and product safety. She and her team partner with their global business teams to propel stretch market objectives to deliver delightful product experiences to the consumer. She spent six years in Asia, where she led the patent teams in China, Japan, and Singapore that handled P&G’s businesses in Greater China and APAC. Over the span of her P&G career, Dara has worked in the majority of P&G’s businesses. Dara earned a B.S. in Chemical Engineering, an M.S. in Engineering (both from North Carolina Agricultural & Technical State University), and a J.D. from North Carolina Central University. Dara is a member of the Ohio bar and is registered to practice before the US Patent and Trademark Office. She spends considerable time serving the community as a member and vice president of her chapter of Delta Sigma Theta Sorority, Inc. and as a board member of the Taft Museum. She is an active member of the Black Lawyers Association of Cincinnati as well. Dara is a strong believer in servant leadership and pushes her team members to be their best versus her best.