June 5, 2019 Brown Bag CLE: China and Intellectual Property: New Laws, the Courts, and Continuing Change

Topic: China and Intellectual Property: New Laws, the Courts, and Continuing Change

While China has long insisted it has been working hard to improve its protection of intellectual property, skepticism persists and tensions remain on the other side of the Pacific.  Behind the politics of trade and technological competition, how do American companies actually fare in Chinese courts?  Should the focus be on fake watches or on cutting edge technologies like artificial intelligence and 5G?  While problems persist and challenges remain, China has continued to revise and revamp its legal system—updating its Trademark Law and Unfair Competition Law as recently as April, 2019.  During this CLE, we will discuss recent trends, legal developments, and how US companies can intelligently use China’s legal system to protect their competitive advantages.

Materials: To be provided

Speakers: Please join us as speaker Josh Mandell gives a presentation about protecting intellectual property rights in China.

Josh Mandell is a principal of Rouse, an IP services business focused on emerging markets. Josh manages Rouse’s Beijing office and focuses on civil litigation, technology, brand protection, and strategy. Josh mainly works with American and European multinationals to perfect and implement their China intellectual property and business strategies. From trademark portfolio management to patent litigation and anti-counterfeiting, Josh advises clients in industries that include high-tech and semi-conductors, health and pharmaceuticals, and sports and entertainment. Josh also consults on protecting and commercializing emerging technologies, data, and artificial intelligence. Josh has almost 20 years of experience in China and has consulted for the American film industry, advising on a range of intellectual property and market access issues. Josh is a regular speaker at China and intellectual property forums, law schools, and conferences.

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date: June 5, 2019

Time: 12:00 pm – 1:00 pm

Where: The Cleaners @ Ace Hotel Portland

403 SW 10th

Portland, OR 97205

(503) 228-2277

Registration:

Please note updated registration instructions below. Due to a recent change in Bar policy, cash and checks are no longer accepted. You MUST prepay by credit card or ACH using the following registration link:

Click here to register and pay via the Bar website.

$20 – without lunch (you may bring your own lunch; food carts are just 2-blocks away)

$43 – with boxed lunch provided by Clyde Common. Click the “additional selection” box to add the lunch fee to your registration order in the link above. For boxed lunches, your registration and separate lunch order must be received by noon, Thursday, May 30, 2019. After completing your registration via the Bar website, you MUST click here to make your meal selection.

*Law students: May attend for free depending on seat availability; email the registration contact person indicated below.

May 1, 2019 Brown Bag CLE: Design Patents Following Samsung v. Apple – Where Are We?

Please join us as speaker Nika F. Aldrich give a presentation on the current state of design patent law.  In 2016, the Supreme Court issued its first design patent decision since the 1800s, in a case that dramatically changed the legal landscape for design patents.  We will catch up on the state of affairs since the seminal Samsung v. Apple decision, including open issues that are currently awaiting guidance from the Federal Circuit.

Materials: OSB Design Patent Talk

Speaker: Nika Aldrich is a shareholder at Schwabe, Williamson & Wyatt, and adjunct professor of patent law at Lewis & Clark Law School.  His practice focuses on intellectual property litigation, and he has represented clients concerning a number of technologies, including medical devices, software, food, textiles, fuel systems, pharmaceuticals, and more.

Nika was the lead trial attorney in Columbia Sportswear v. Seirus Innovative Accessories, the first design patent case following the Supreme Court decision in Samsung v. Apple to go to trial.  He is also the lead attorney in the appeal in that case, which will be the first case dealing with damages in a design patent case following Samsung.

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:               May 1, 2019

Time:               12:00 pm – 1:00 pm

Where:            The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277

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April 3, 2019 Brown Bag CLE: Everything You Need To Know About Free & Open Source Licensing

Free & Open Source Licensing is a model that has been around for over 30 years, and continues to gain traction as a licensing model for large corporate entities, not only for software, but for other technologies as well. This presentation will give attendees a brief summary of the philosophy and legal mechanics behind open source licensing, so that they understand the model and can intelligently answer basic client questions. The presentation will also explore some recent “hot” topics in the free & open source licensing world, explaining what those topics might mean for the future of the licensing model, and how those topics might impact how attendees advise clients.

Materials:  Open Source Preso for Oregon State Bar IP Section

Speaker:  McCoy Smith handles all IP matters for Intel’s Data Center Group. He chaired, for over a decade, Intel’s Open Source Legal Practice Group, and is a former co-chair for the Open Source Committee for the Intellectual Property Owner’s Association (IPO). He is a current member of the Editorial Committee of the International Free & Open Source Software Law Review (IFOSSLR). From 2006-2007, McCoy was an active participant in one of the discussion committees working on the drafting of the GNU General Public License (GPL), version 3, published in June, 2007, and he authored the BSD+Patent open source license, approved by the Open Source Initiative in 2017. Prior to joining Intel in 1999, McCoy was an attorney in private practice at Kenyon & Kenyon in New York, NY and Washington, DC, specializing in IP litigation and patent prosecution. He was also a patent examiner in the U.S. Patent & Trademark Office prior to law school.

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:               April 3, 2019

Time:               12:00 pm – 1:00 pm

Where:            The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277

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March 6, 2019 Brown Bag CLE: Concurrent Trademark Uses in Different Regions of the United States: Dawn Donut Revisited

Topic:   Concurrent Trademark Uses in Different Regions of the United States: Dawn Donut Revisited

In 1959, the Second Circuit held in Dawn Donut that a trademark holder with a federal registration could not necessarily and automatically enjoin infringers across the United States. Written at a time before the world-wide-web, the court stated: “If the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets, with no likelihood that the registrant will expand his use into defendant’s market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user’s use of the mark.” This CLE will revisit Dawn Donut. Our speaker will survey recent case law on the subject, particularly with a view to better understanding its meaning and application in the Internet Age.

Materials:  Dawn_Donut_CLE

Speaker:  Tomás Gómez-Arostegui is a professor at Lewis & Clark Law School, where he is the Kay Kitagawa & Andy Johnson-Laird IP Faculty Scholar. He teaches trademark law, civil procedure, torts, and a seminar on the history of the common law.

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:               March 6, 2018

Time:               12:00 pm – 1:00 pm

Where:            The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277

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November 7, 2018 Brown Bag CLE: To Apportion or Not to Apportion: A Fascinating Damages Question

Topic:   To Apportion or Not to Apportion: A Fascinating Damages Question

Please join us as speaker Renée E. Rothauge gives a presentation on recent damage trends involving apportionment and the implications for patent disputes.

Materials: OSB RER Apportionment CLE

Speaker:  Renée Rothauge is an experienced trial lawyer specializing in complex business litigation and intellectual property disputes. In her nearly 30 years of practice, Renée has developed a strong track record of success in the resolution or litigation of hundreds of complex business, technology and intellectual property cases. She is often retained by other attorneys to assist with cases which are extremely complex or hold a high degree of business risk. Renée is a fellow of the American College of Trial Lawyers (ACTL) and has been recognized Chambers USA as one of the top commercial litigators in Oregon.

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:                     November 7, 2018

Time:                    12:00 pm – 1:00 pm

Where:                The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277

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September 5, 2018 Brown Bag CLE: Import and Export Issues Impacting Intellectual Property Rights

Topic:   Import and Export Issues Impacting Intellectual Property Rights

Recent developments in the world of international trade have turned the existing regulatory world on its head. As to imports, newly imposed and threatened U.S. tariffs on billions of dollars of imports as retaliation for foreign appropriation of U.S. intellectual property rights, as well as the commencement of the General Data Protection Regulation on E.U. Personal Data, are just two recent developments potentially involving U.S. IP attorneys.  On the exporting side, U.S. companies and their legal counsel should be aware of major U.S. enforcement actions affecting Oregon companies who export technology-based products.

Materials:  Import and Export Issues Impacting IP Rights (5Sep2018)

Speaker:  Akana K.J. Ma is the Chair of Ater Wynne LLP’s Global Trade Group.  For over 30 years, he has advised U.S. and foreign clients in complex international transactions and import/export regulatory compliance.  Akana routinely represents clients in transactions involving the import or export of technology-based products, often involving regulatory approval by multiple U.S. and foreign government agencies.   For the last 5 years, Akana has been an appointed industry advisor to the U.S. Department of Commerce on international trade issues, as a member of the USDOC District Export Counsel.  He is also a regular presenter in regional and national conferences on intellectual property protection, and import and export controls compliance.

Registration: Please fill-out the registration form provided below and make checks payable to: Oregon State Bar IP Section

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:                     September 5, 2018

Time:                    12:00 pm – 1:00 pm

Where:                The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277

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August 1, 2018 Brown Bag CLE: Recent Developments in Patent Law

Topic:   Recent Developments in Patent Law

Slides:   Recent Decisions from the Federal Circuit and Supreme Court

Speakers: Please join us as speakers Scott Eads and Nika Aldrich give a presentation on recent developments in patent law. Our presenters are co-editors of Fresh From the Bench, a weekly publication that summarizes and analyzes all precedential patent law decisions issued by the Federal Circuit and the Supreme Court.  In this hour-long CLE, they will give a summary of many of the most significant or most interesting precedential patent law decisions that issued over the past year

Speakers’ bios:

Scott Eads is the leader of the intellectual proper litigation group at Schwabe, Williamson & Wyatt. He has defended his clients’ key intellectual property rights in district courts across the United States for over 25 years. Scott has acted as first chair trial attorney for clients in patent, copyright, trademark and trade secret cases in a wide range of industries, including semiconductor, medical devices, computer software and hardware, and recombinant DNA.

Nika Aldrich is a shareholder and first chair trial attorney in the intellectual property litigation group at Schwabe, Williamson & Wyatt. He has represented innovative companies nationwide in numerous patent disputes involving computer hardware, computer software, computer algorithms, medical devices, MEMS, and other technologies.

Registration: Please fill-out the registration form at: https://goo.gl/forms/SEdjmQ5diMZ2n4oT2.

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:                     Wednesday, August 1, 2018

Time:                    12:00 pm – 1:00 pm

Where:                The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277

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June 6, 2018 Brown Bag CLE: Patent Claims: Functional Claiming Law in 2018 and 2028

Topic:  Patent Claims:  Functional Claiming Law in 2018 and 2028

Slides: Functional Claiming; Draft Some Claims to Survive in 2028

Description:

Presented by John Vandenberg, Klarquist Sparkman, LLP, this CLE will propose practice tips to patent practitioners regarding functional claiming.  Topics will include intentional and accidental triggering of 112(f), whether uncertain triggering violates Nautilus, step plus function claims, triggering 112(f) as a possible defense to Alice, functional claiming and claim backdating, 112(f) claim diversity, and the benefits of some claims in a patent family reciting “means for” or “step for.”  John will discuss the governing law today and predictions for 2028.

John has been litigating patents for 34 years, including 27 years defending Microsoft in patent infringement actions. John has first-chair tried numerous IP infringement suits, argued a dozen appeals before the Federal Circuit, and successfully argued before the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. for rejection of the Federal Circuit’s “insolubly ambiguous” and “amenable to construction” test for indefiniteness.  John is the primary author of Patent Defenses, an extensive summary of substantive defenses and related strategies in patent infringement suits, posted at www.patentdefenses.com, and speaks throughout the nation on patent law, district-court patent litigation, PTAB patent trials, and patent appellate practice.

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May 2, 2018 Brown Bag CLE: Ethics for IP Professionals

Topic:  Ethics for IP Professionals:  The Three C’s – Communication, Conflicts, and Client Trust Accounting

Slides: Ethics for IP Professionals The Three C’s

Case: Maling v. Finnegan

Description:  Presented by Emil Ali Esq., this CLE will cover topics relevant to patent and trademark practitioners, and provide an in-depth discussion about subject matter conflicts, common communication issues, and how poor accounting practices can lead to discipline. This event is a must for in-house and law firm practitioners to learn best practices, and get a chance to walk through hypothetical situations.  We will also discuss how Oregon’s Rules of Professional Conduct compare to the ABA and USPTO Rules.

Emil Ali is an associate at Carr Butterfield, LLC. Mr. Ali formerly investigated and assisted in the prosecution of attorney misconduct at the United States Patent and Trademark Office, Office of Enrollment and Discipline. While at the OED, Mr. Ali led a team of attorneys to promulgate the USPTO Rules of Professional Conduct, which are based upon the ABA Model Rules of Professional Conduct.

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April 4, 2018 Brown Bag CLE: Will your trademark license become an inadvertent franchise?

Topic:   Will your trademark license become an inadvertent franchise?

Slides:  Power Point – Inadvertent Franchises

Article:   Article – Inadvertent Franchises in Trademark Licensing

Description: Presented by Dennis Steinman. The franchise model has been a useful tool for businesses to expand their concept. Trademarks are generally the cornerstones of the franchise system. However, unsuspecting practitioners may create a franchise relationship through trademark licensing. Franchise laws are onerous, and attorneys should be careful not to subject their clients to these laws inadvertently. This CLE explains what creates a franchise relationship and how to avoid it.

Dennis Steinman is a partner at Kell, Alterman & Runstein, L.L.P.  He received his B.A. from Temple University and his J.D. from Lewis and Clark Law School.  Mr. Steinman is an adjunct professor at Lewis and Clark Law School and he teaches the Federal Litigation Practice Seminar.  Mr. Steinman was a franchise executive for nearly 20 years, he is a leading franchise attorney and is a frequent speaker on franchise-related issues.

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