green booklet
2022-2023
www.nyipla.org
NYIPLA Board of Directors ................................................................................................................ 2 Year in Review by Heather M. Schneider ........................................................................................... 3-5 Annual Meeting ............................................................................................................................... 6-11 Committee Reports .......................................................................................................................... 12-21 Annual Report of the Treasurer ........................................................................................................ 22-23 101st Annual Dinner in Honor of the Federal Judiciary ........................................................................ 24-27 Events ............................................................................................................................................. 28-39
ASSOCIATION ANNUAL REVIEW
Treasurer Scott Greenberg
By: Heather M. Schneider, 2022 - 2023 NYIPLA President
Diana G. Santos
Jenny Lee
2022 - 2023 Board of Directors
Christopher Loh
Immediate Past President Robert M. Isackson
Mark Schildkraut
David Goldberg
2022 - 2023 Year in Review
President Heather M. Schneider
I want to thank the Board, the administrative staff, and all of our members for helping to grow the organization this year after our rebound from COVID. I’m proud of all the programming the Association has done this year and wish the best of luck to my successor, Robert Rando. A few highlights of the year are discussed below. Most recently, I was proud to host the 101st Annual Dinner in Honor of the Federal Judiciary on March 31, 2023 at the New York Hilton Midtown with keynote speaker Dr. Mae C. Jemison. As a physician, engineer, astronaut, and leader of the 100 Year Starship non-profit for space exploration, I cannot think of a better person to inspire our members as we start our organizations next 100 years. I was also deeply honored to present the 21st Annual Outstanding Public Service Award to Chief Judge J. Rodney Gilstrap of the U.S. District Court for the Eastern District of Texas. He has been one of the most influential and well-known patent judges of my legal career, and his “Carnac the Magnificent” patent speech will certainly be remembered in the annals of Judges Dinners for years to come. Looking back at the rest of the year, I started my tenure at the Annual Meeting in May, where I was honored to present keynote speaker Delaware District Judge Maryellen Norieka. I have known Judge Noreika since I was an associate—often on the opposing sides of Hatch-Waxman cases—and am so pleased to see her accomplishments. Over the summer of 2022, we had a variety of programming, including our annual Hot Topics in Trademark & Copyright Law. That is one of the Association’s flagship events, and this year we were pleased to hear remarks form Hon. Jonathan Hudis, Administrative Trademark Judge, as well as an update from Nick Bartelt of the U.S. Copyright Office. Our very active PTAB Committee also hosted two PTAB Bootcamps, with primers on the milestones in a PTAB trial and a review of PTAB decisions. In September, the Amicus Brief Committee hosted a panel on Hot Topics for Congress and the USPTO: 101 Patent Eligibility and PTAB Director Review. Irena Royzman and Robert Rando hosted a world-class panel including the former Chief Judge of the Federal Circuit Hon. Paul R. Michel; Acting Lead PTAB Judge Hon. Scott Howard; Administrative Patent Judge Hon. Donna Praiss; and former USPTO Director David J. Kappos. We continued programming in October with the IP Transactions Bootcamp. The program ran over three weeks with panels by outside counsel and in-house counsel from NielsenIQ, Mitsubishi Power, Siemens Medical Diagnostics Inc., Canon USA, SABIC, Eli Lilly and Company, IBM Corporation, University of Buffalo, Pacific Northwest National Laboratory, Raytheon, U.S. Bank, Affini-T Therapeutics, Regeneron, and University of Connecticut. We appreciate so many people taking the time to teach this bootcamp, particularly Programs Committee Co-Chair David Bomzer. We have now graduated two cadres of students, and I expect this will be part of our annual programming roster for years to come. In November, I was pleased to host the One-Day Patent CLE at Willkie Farr & Gallagher LLP. The event was well-attended, with a lot of great energy from being back in person. The Programs Committee and other Committees organized a day of fantastic programming, with a keynote address from PTAB Chief Judge Scott R. Boalick, and panels with in-house counsel from a who’s who of life science, finance, insurance and tech companies—Bristol Meyers Squibb, Alix Partners, Ernst & Young, Becton, Dickinson and Company, Marsh & McLennan, Alvotech, Peloton Interactive, Sandoz Inc., and Google. We were also joined by Kendra Ervin, US DOJ Deputy Chief of IP, Computer Crime & Intellectual Property Section, who addressed trade secret protection, and District Judge Hon. Esther Salas and Magistrate Judge Hon. Douglas Arpert from the District of New Jersey, who discussed the Daniel Anderl Judicial Security and Privacy Act, which the NYIPLA was proud to actively support through its passage last year. As many of you remember, I started the year wanting to focus my Presidency on the life sciences field, given the impact it has had on all of our lives due to the COVID pandemic. In January I was proud to host a President’s Forum on The Impact of the Inflation Reduction Act and Other Policies on the Pharmaceutical Industry. This event brought together thought leaders to discuss the IRA’s impact on everything from innovation and drug development to drug pricing and investments. We were honored to have speakers from the The Brookings Institution, Bristol Meyers Squibb, the Association for Accessible Medicines, and Marathon Asset Management for this insightful discussion. Not long after that, in February, we held the Association’s Annual Biologics and Biosimilars event on Section 112 at the Supreme Court. This event had speakers from Regeneron, Merck & Co., Inc., Eli Lilly and Company, and Johnson & Johnson. We also hosted a variety of events focused more on transactional law and privacy considerations. In early March, the Firm Management and Young Lawyers Committees hosted a panel discussion on emerging issues in privacy law from the perspectives of in-house counsel, which had speakers from Torii, Thomson Reuters Practical Law, and Horizon Blue Cross Blue Shield. Then the IP Transactions Committee conducted an overview of considerations to take into account when using open source software and reviewing open source software disclosures, including what steps to take when you run into a potential issue, with the General Manager of Black Duck at Synopsys. Throughout this time, the PTAB Committee continued having its active meetings with CLEs, including a review of PTAB precedential and informational decisions and an examination of faulty rulemaking challenges in the Federal Circuit’s recent Apple v. Vidal decision. The Patent Litigation Committee also had a useful CLE on creating a winning trial team, taught by a team from Desmarais that recently won a jury verdict and damages award for willful infringement. In the area of diversity in law, the organization hosted a Diverse Careers in IP Program at Quinnipiac University School of Law. On World IP Day, the US Bar-EPO and Women in IP Committees hosted a program titled “From Conception to the Patent Office: Women Inventors across the US and EU” with speakers from Curated Innovation, the USPTO, IBM, the EPO, and the University of Kentucky. After that, we held the Annual Meeting at which I handed the reins over to Robert Rando. I know he will lead you all through a productive, educational, and entertaining year. Thank you all again for a wonderful year, I will never forget it.
A. John P. Mancini
First Vice President Patrice P. Jean
President Elect Robert J. Rando
Linnea Cipriano
Jonathan Berschadsky
Second Vice President Abigail Struthers
Paul A. Bondor
Secretary Cheryl Wang
members
officers
On May 10, 2023, incoming Association President Robert J. Rando welcomed members and guests at the Union League Club. Robert expressed his appreciation for outgoing president, Heather M. Schneider.
2023 Annual Meeting
Annual Meeting May 10, 2023 Union League Club
2:15 PM - 3:15 PM CLE Program Artificial Intelligence: Where Will AI Take the Law? Dorothy Auth, Cadwalader, Wickersham & Taft LLP Mark Doerr, Greenspoon Marder LLP Chris Israel, American Continental Group Diana Santos, IBM Joshua Weigensberg, Pryor Cashman 3:30 PM - 4:15 PM Committee meetings 4:30 PM - 5:30 PM Annual meeting of members 5:30 PM - 6:00 PM board meeting 5:30 PM - 9:00 PM Cocktail Reception and dinner Awards Dinner Program welcome nyipla incoming president Robert J. Rando fireside chat Honorable Kathleen O'Malley (Ret.) United States Court of Appeals, Federal Circuit 2023 Inventor of the Year award Dr. Andre S. Bachmann, Michigan State University Dr. Caleb P.Bupp, Corewell Health Dr. Surender Rajasekaran, Corewell Health Recognized for their dedication on the FDA approved drug, called DFMO for the treatment of an ultrarare pediatric indication known as Bachmann-Bupp Syndrome (BABS, OMIM #619075) (US Patent No. 11,273,137 B2). 2023 Hon. William C. Conner Writing Competition Awards Hannah Scott & Omid Shamim LifeTIME Achievement award Thomas J. Meloro Volunteer of the year award Charley Macedo Community service award Honorable Janet Gongola Vice Chief Judge for Engagement, USPTO Patent Trial and Appeal Board 2023 NYIPLEF Diversity Scholarship Brittany Grego 2023 Hon. Giles S. Rich Diversity Scholarship Stephanie Huang
Honorable Janet Gongola
The 2017-2018 NYIPLA Copyright Law & Practice Committee comprises 16 attorneys and law students sharing the common goals of advancing dialogue on emerging issues in copyright law, supporting the various initiatives of the NYIPLA and its other committees relating to copyright law, and building a community of copyright attorneys through in-person events and regularly scheduled meetings. The Committee held a kick-off happy hour at the beginning of the year, and has since convened for monthly teleconferences focusing on notable copyright decisions, including Goldman v. Breitbart News, LLC, Fox News Network, LLC v. TVEyes, Inc., and Oracle America, Inc. v. Google, Inc., as well as pending copyright legislation, including the CASE Act of 2017 and various music reform bills. In March, the Committee hosted its second in-person meeting featuring guest speaker Nicholas M. O’Donnell, author of A Tragic Fate: Law and Ethics in the Battle over Nazi-Looted Art. Over the past year, the Committee has collaborated with other NYIPLA Committees. In particular, the Copyright Committee worked with the Legislative Action Committee to contribute to discussions on pending music reform legislation. The Copyright Committee authored a working draft of a White Paper in February of this year, providing analysis and proposed recommendations. One of the Committee’s members is presently drafting a summary of the current bill for The Report. Recently, the Committee provided feedback on a proposal for an amicus brief in Syngenta Crop Protection, LLC v. Willowood, LLC. We will also have a Committee-member speaker at the CLE program at the NYIPLA Annual Meeting on May 15 entitled Predictability & the Standard of Review in IP Cases.
From Albany Law School, for his paper entitled Copyright is Not Keeping Up with Technology: How AI-Generative Works are Challenging the U.S. System
Brittany Grego
second Place Winner omid shamim
First Place Winner Hannah scott
Dr. Caleb P.Bupp
NYIPLEF Diversity Scholarship is awarded to Brittany Grego, a first-year law student at Yale Law School. While at law school, she has been actively involved with BLSA, YLBS, and YLW+. She is also a member of the Entrepreneurship and Innovation Clinic.
Lifetime Achievement Award
From Quinnipiac University School of Law, for her paper entitled You Don't Own Me: A Look at Tattoos, Copyrights, and Likeness
The 2023 Lifetime Achievement Award is presented to Thomas J. Meloro in honor of all his achievements. Thomas J. Meloro is a NYIPLA Past-President and founder of the New York Intellectual Property Law Education Foundation (NYIPLEF).
2023 Hon. William C. Conner Writing Competition
Thomas J. Meloro
Charley Macedo
Dr. Surender Rajasekaran
Award recipients at the 2023 annual meeting
2023 Hon. Giles S. Rich Diversity Scholarship Award
Volunteer of the Year Award
Recognized for their dedication on the FDA approved drug, called DFMO for the treatment of an ultrarare pediatric indication known as Bachmann-Bupp Syndrome (BABS, OMIM #619075) (US Patent No. 11,273,137 B2). BABS patients have a mutation in a gene called ornithine decarboxylase (ODC), which causes the ODC protein to accumulate in these patients. As a result, the patients face significant neurological and developmental delays, which may manifest as delays in achieving milestones such as standing, cruising, or sitting and limited fine motor skills.
Inventor of the Year Award
2023 NYIPLEF Diversity Scholarship
In recognition of his outstanding efforts as an NYIPLA member, the 2023 Volunteer of the Year Award is presented to Charley Macedo, Partner at Amster Rothstein & Ebenstein LLP and NYIPLA PTAB Committee co-chair.
The Community Service Award is in recognition of their efforts to advance the mission of the association. This year, the NYIPLA presented the Community Service Award to the Honorable Janet Gongola, Vice Chief Judge for Engagement of the USPTO Patent Trial and Appeal Board.
Community Service Award
Hon. Giles S. Rich Diversity Scholarship is awarded to Stephanie Huang, a second-year J.D. candidate in the evening division at Fordham University School of Law. She has served as a staff member of the Fordham Intellectual Property, Media & Entertainment Law Journal (IPLJ), a teaching assistant for first-year Legal Writing, and a student advisor for the Board of Student Advisors. Stephanie will also be serving as a Notes and Articles Editor for the IPLJ Board during the 2023-2024 academic year.
Stephanie Huang
Dr. Andre S. Bachmann
2022 - 2023 Committee Reports
Amicus Brief Scope of the Committee: To coordinate the activities of the Association relating to the preparation and submission of amicus briefs, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Irena Royzman, Paul Coletti, and Jeff Price board liaison: David Goldberg The Association continued its strong history of representing its diverse intellectual property constituency before the courts through the activity of its Amicus Briefs Committee, which coordinates the activities of the Association in the preparation and filing of briefs amicus curiae. Since the last Annual Meeting on May 18, 2023, Amicus Briefs Committee members participated in the preparation and filing of briefs before the Federal Circuit Court of Appeals. The Committee filed a brief on the merits in support of neither party in LKQ Corp., et al., v. GM Global Tech. Ops. LLC, urging the court to adopt a more flexible approach to determining obviousness of design patents, where the rigid Rosen test remains a potential but non-exclusive rationale. The Committee has 21 official members, but additional members of the Association and other committees have participated in our monthly meetings over the past year. Twelve Association members contributed as authors on the amicus briefs discussed above. During the past year, the Supreme Court ruled on three cases in which the Committee filed briefs at the merits stage, namely Jack Daniel’s Properties, Inc. v. VIP Products LLC (vacating the ‘9th Circuit’s decision on the basis that the Lanham Act does not shield parody, criticism, or commentary from dilution liability when the diluter uses a mark as its own source identifier.”); Amgen Inc. v. Sanofi (when a patent claims an entire class, the specification must enable a POSITA to make and use the entire class); and The Andy Warhol Fdn. For the Visual Arts, Inc. v. Goldsmith (the first fair use factor considers not only whether the allegedly infringing work is “transformative” but whether the original and derivative works “share substantially the same purpose,” so absent another justification, where the original and derivative works are both commercial in nature, the first fair use factor will likely weigh against fair use). The Association’s participation in these cases ensured that the intellectual property community’s voice was heard by the courts in their deliberations on these important issues. The Amicus Briefs Committee will continue its commitment to represent the Association’s interests in all areas of intellectual property law in the courts in the year to come. copyright law & practice Scope of the Committee: To consider all aspects of United States, foreign and multi-national copyright law and practice, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Mitchell Stein and Joshua Weigensberg board liaison: Scott Greenberg The 2022-2023 NYIPLA Copyright Law and Practice Committee is comprised of attorneys and law students sharing the common goals of advancing dialogue on emerging issues in copyright law, supporting the various copyright-related initiatives of the NYIPLA and its other committees, and building a community of copyright attorneys through regularly scheduled meetings. Throughout the year, the Committee convened for monthly video conferences featuring presentations on notable copyright decisions, proposed rulemakings and legislation, administrative developments, and other notable issues and events in the field of copyright law. As part of the Committee’s efforts to engage actively in public discourse concerning important copyright-related issues, the Committee accomplished the following in the past year. The Committee, working with the Amicus Briefs Committee prepared and filed an amicus brief before the US Supreme Court in the blockbuster copyright fair use case Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith. As a follow up, the Committee, working with the Young Lawyers Committee and the Amicus Brief Committee, hosted a moderated CLE panel discussion addressing the Warhol case in which Committee co-chair Mitchell Stein participated as a panelist. The Committee responded to a Copyright Office NOI regarding “Smaller Claim” rules proposed for use by the Copyright Claims Board, as well as an NOI regarding the impact of NFTs on copyright law, and any potential challenges that would need to be addressed via legislation. The Committee also posted a podcast on NFTs for the Association’s Pod Bites podcast series. Finally, the Committee focused much of its attention on burgeoning new copyright challenges created by the growth of artificial intelligence, culminating in Committee Co-Chair Josh Weigensberg participating in a CLE panel discussion at the Association’s annual meeting in May 2023. Fashion Law Scope of the Committee: To consider established and developing intellectual property issues specific to the fashion industry and to make recommendations with respect thereto to the Board of Directors. co-chairs: Karla Ng-Aspiras and C. Laure Sawaya board liaison: Cheryl Wang Hon. William c. Conner writing competition Scope of the Committee: To publicize and conduct a law school writing competition on intellectual property law topics, and to make recommendations to the Board of Directors with respect thereto. co-chairs: Richard Brown and Timothy Caine board liaison: Jenny Lee Members: Stephen Ankrom, William Valet, Palak Sharma, Matthew Abbott, Steve Fairchild, Andrew Cochran, Lauren Hamill, Daniel Jones The Committee solicited and reviewed entries for the William C. Conner Writing Competition. The announcement of the competition was posted on the NYIPLA website in September 2022. The NYIPLA admin team sent targeted updates to professors at a number of law schools, law journals and student organizations to ask that the writing competition announcement be posted to ensure the students were aware of the opportunity. The Committee received 17 submissions for the 2022-23 competition, a decrease over the previous year. From those submissions, the Committee made recommendations, and the NYIPLA Board selected the following papers as the first and second place submissions: Winner: YOU DON’T OWN ME: A LOOK AT TATTOOS, COPYRIGHTS, AND LIKENESS, by Hannah Scott Runner-up: COPYRIGHT IS NOT KEEPING UP WITH TECHNOLOGY: HOW AI-GENERATIVE WORKS ARE CHALLENGING THE U.S. SYSTEM, by Omid Michael Shamim The Committee notified the winner and runner-up, and the NYIPLA followed up with the authors for a presentation at the May 10 annual meeting and dinner. inventor of the year (ioty) award Scope of the Committee: To consider intellectual property issues having an impact on in-house intellectual property counsel, and to make recommendations with respect thereto to the Board of Directors. chair: Christopher Lisiewski and Ksenia Takhistova board liaison: Paul Bonder ip transactionS Scope of the Committee: To consider issues and agreements that IP practitioners frequently encounter in connection with intellectual property and technology licensing, development, ownership, and sale including in M&A transactions, and to make recommendations to the Board of Directors regarding emerging issues and educational topics related thereto. chair: Ketan Pastakia and Matthew Makover board liaison: Christopher Loh In 2023, the IP Transactions Committee conducted periodic meetings, and assisted with the IP Transactions Bootcamp. The Committee hosted a CLE during the November 9, 2022 One Day Patent CLE on “Hot Topics and Pitfalls When Negotiating Commercial Agreements” with Genevieve Dorment (Partner, Willkie Farr & Gallagher), Daniel Forester (Partner, Orrick Herrington & Sutcliffe) and Laureen Forkas (Senior Assistant General Counsel, Marsh & McLennan Companies). This CLE was well attended and discussed practice points and potential risks in commercial agreements. The IP Transactions Committee also hosted a separate CLE on March 15, 2023 on the topic of “Open Source Code Usage: What To Know” with Spencer Simon (Partner, Willkie Farr & Gallagher) and Phil Odence (General Manager, Black Duck at Synopsys). The CLE was well received and feature an overview of considerations to take into account when using open source software and reviewing open source software disclosures, including what steps to take when you run into a potential issue. Members of the Committee participate in period meetings and discuss IP transaction-related topics that are of interest, as well as soliciting ideas for future meetings. Going forward the Committee plans to continue having meetings and organizing additional CLEs. Legislative Action Scope of the Committee: To evaluate proposed federal and state legislation and rules, including USPTO and Court rules, that may impact patent and other intellectual property issues; to develop positions and recommendations on the proposed legislation and rules for consideration by the NYIPLA Board of Directors; and to communicate the NYIPLA's positions and recommendations to the legislative and rule-making bodies, as approved by the Board. co-chairs: Anthony Lo Cicero and Jeanna Wacker board liaison: Robert Isackson As it has since its inception, the Committee continues to monitor proposed and pending legislation of interest to Association members and the intellectual property community in general. We advance this mission by communicating with Members of Congress and their staffs, producing white papers and other documents, contributing to Association programs and coordinating with other Association committees. This past year, we celebrated passage of the Daniel Anderl Judicial Security and Privacy Act, which the Association has supported for several years. We have also continued to monitor developments relating to life sciences-related intellectual property, including proposed legislation at both the federal and state levels. As we had done with the comparable California bill, we prepared a white paper on the proposed NY State patent settlement bill. We have cooperated with the Copyright Committee on emerging issues in the field of artificial intelligence, with the Copyright and Trademark Committees on anti-counterfeiting issues and with the PTAB Committee on legislative and regulatory initiatives. In the coming year, the Committee expects to focus on legislation proposed by Senator Tillis relating to patent eligibility, PTAB reform, patent injunction issues and other subjects and to follow developments relating to the Inflation Reduction Act’s drug-related provisions, including the recently filed lawsuit filed by Merck. patent law & Practice Scope of the Committee: To consider all aspects of patent laws and practice which affect the right of United States entities in technology, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Joy Gaudie and Clint Mehall board liaison: Jonathan Berschadsky On June 24, 2022, the Patent and Law Practice Group held the monthly meeting featuring a guest speaker, Dr. Julie Burke. She spoke to us about special examiners at the USPTO. These examiners are assigned art units 1699, 1759, 2198, 2419, 2699, 2896, 3619, and 3799. On August 8, committee member Nicholas Bertram, admitted in the US and Canada, spoke about upcoming changes to Canadian Patent Rules. In October Brad Watts, Minority Chief Counsel of the Senate Judiciary Committee Subcommittee on IP spoke to the Patent Law and Practice Committee and Legislative Action Committee regarding the recently proposed patent reform legislation. Frank Cullen, previously served as Vice President of U.S. Policy at the U.S. Chamber of Commerce, where he led the Chamber’s domestic intellectual property policy work. Frank spoke to the Patent Law and Practice Committee on December 1, 2022, regarding the recently formed Council for Innovation Promotion (C4IP). patent Litigation Scope of the Committee: To consider legislation and rules affecting practice and procedural matters in intellectual property litigation outside the Patent and Trademark Office, and other matters relating to practice in such litigation, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Brett Cooper and Leslie Spencer board liaison: Christopher Loh Members: Abby Parsons, Alan Bornstein, Alex Chachkes, Anthony Giaccio, Brian Doyle, Brian Sift, Bruce Haas, Chi Eng, Corey Tam, Daniel Huttle, Derrick Carman, Drew B. Hollander, Gonzalo Merino, Heather Schneider, Iyah Chen, James Higgins, Jenniter Cieluch, John Kenneth Felter, Jonathan Caplan, Jonathan Yim, Kenneth Adamo, Lauren Kim, Laurie Stempler, Matthew Langer, Maya Bourgeois, Melanie Sharp, Melvin Garner, Micah Rappazzo, Michael Rader, Mitchell Epner, Quintin Cassady, Ryan Singer, Seth Hasenour, Stephen Latuso, Steven J. Rizzi, Stuart Pollack, Taskeen Aman, Youngik Moon The Patent Litigation Committee made great strides during 2022-2023 reinvigorating the committee with renewed interest sparked by relevant guest speakers. Committee meetings were generally held every other month via Zoom allowing for the virtual getting together of folks, some of whom are located across the country. Recent meetings included discussion on: extraterritoriality and implications of recent decisions, selecting a winning jury in patent trials, managing complex multi-defendant / multi-jurisdiction case in a way that trained and empowered young, talented lawyers to take on big roles at trial, and developments in the Western District of Texas. The committee is very grateful to all of our guest participants as well as the members in making it a great year. The 101st Annual Dinner on March 31, 20223 was, of course, another amazing event. We look forward to another year and continuing the important work of our committee. Privacy, Big Data & Cybersecurity Scope of the Committee: To consider all aspects of internet and privacy law in the United States, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Jessica Copeland and David Leichtman board liaison: Diana Santos programs Scope of the Committee: To formulate and present a series of monthly continuing legal education programs of interest to the broad spectrum of the Association's membership, and to make recommendations with respect thereto to the Board of Directors. co-chairs: T. David Bomzer and Lynn Russo board liaison: Abigail Struthers The NYIPLA Programs Committee had a busy year coordinating a number of events in 2022-23. The big story for last year was the transition back to more live programs, but there are many benefits to having a variety of format options, and it is clear that remote and hybrid programming are here to stay. The major events we coordinated over the past year were the IP Transactions Bootcamp and the Fall One-Day CLE Program in Fall 2022, the Biosimilars Program in Winter 2023, and a panel on Diverse Careers at Quinnipiac College in the Spring. In addition to these terrific events, we also helped coordinate various other programs throughout the year, such as programs on recent Supreme Court decisions and the Trademark Half-Day Program. We were very pleased with the turnout and content associated with the year’s programs and are looking for more great content in the year ahead. PTAB Scope of the Committee: To provide thought leadership in legislation, rules and litigation relating to post-issuance proceedings before the Patent Trial and Appeals Board ("PTAB"), and to make recommendations to the Board. Also to provide lectures and information on latest trends and practice pointers for practice before the PTAB and appeals from PTAB decisions. co-chairs: Kenneth R. Adamo and Charles R. Macedo board liaison: Robert J. Rando publications Scope of the Committee: To prepare, edit, publish and disseminate such publications as may be requested by the Board of Directors, and to make recommendations to the Board of Directors. co-chairs: Giselle Ayala, Kyle Koemm and Margaret Welsh board liaison: Patrice Jean The NYIPLA Publications Committee has been highly active in the past year. We have successfully collaborated with other members to provide each publication with captivating, practical, and valuable information from an academic standpoint. In the last year, we released four issues: the NYIPLA Reports for Spring 2022, Summer 2022, Winter 2022, and Spring 2023. The NYIPLA has particularly focused on discussing cutting-edge cases and topics, including artificial intelligence and copyright, trademark protection, patent protection and litigation, and trade secrets management and preventive measures. Furthermore, under the leadership of our new president, Robert Rando, the NYIPLA Publications Committee is now working closely with the Programs Committee. The goal is for both committees to collaborate in producing not only articles on the most pressing IP issues but also content related to the various events hosted by the NYIPLA for its members and the IP community. Lastly, there has been a change in co-chairs for the Publications Committee this past year. After four years of exceptional work, Margaret Welsh stepped down from her position as co-chair. The new co-chairs, Giselle Ayala and Brian Doyle, now oversee the committee's work. In the upcoming year, the Publications Committee will continue its efforts to deliver a publication that is both engaging and informative to the IP legal community. sipo OF CHINA / US Bar LIAISON council delegates: Wansheng Jerry Liu and Brian Rothery trade secrets Scope of the Committee: To consider all aspects of trade secret law in the United States, and to make recommendations regarding trade secret law to the Board of Directors. co-chairs: Laura Chubb and Kevin Ecker board liaison: Mark Schildkraut The trade secret committee continues to be an active and engaging committee. We conduct monthly meetings, with at least one meeting being in person, where we discuss the latest happenings in trade secret law, as well as related topics of interest like professional development issues. Our committee participated in the NYIPLA’s 2022 Fall One-Day CLE and presented a panel on the topic “Beyond Taking ‘Reasonable Measures of Protection,’ Essential Collaboration Required to Maintain and Enforce Trade Secrets.” The panel was made up of experts in cybersecurity, digital investigations and forensics, criminal enforcement for computer crimes and IP theft, and employment law. Specifically, the panel included Nick Chambers of Alix Partners; Brian Levine of Ernst & Young Parthenon; Kendra Ervin of the U.S. Department of Justice; and Ebonee Lewis of Becton, Dickinson and Company. The experts provided their insight on how collaborating with each of them is essential to advising clients about trade secret protection. We look forward to our committee’s continued participation in NYIPLA CLE events and updating our members on new developments in trade secret law topics. trademark law & practice Scope of the Committee: To consider all aspects of trademark law and practice, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Deirdre Clarke and Lauren Emerson board liaison: Scott Greenberg The Trademark Law & Practice Committee has approximately 10 active members who are attorneys in private practice and in-house as well as law students. Members participate in monthly calls where we discuss emerging issues in trademark law and recent noteworthy decisions at the Trademark Trial and Appeal Board as well as the federal courts. This past July, the committee put on its annual half-day CLE, Hot Topics in Copyright & Trademark Law, which was held at the New York office of King & Spalding LLP. The program featured updates from representatives from the USPTO and US Copyright Office as well as panels on notable cases, social media influencers, AI and cannabis. us Bar - European patent office liaison council delegates: Laura Brutman and Jasmine De Cock us Bar - japan patent office council delegates: Raymond Farrell and John Pegram Women in ip law Scope of the Committee: To facilitate and empower women in their practice of intellectual property law, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Lindsey Miller, Ashley Ross, and Anne Li board liaison: Linnea Cipriano young lawyers Scope of the Committee: To address the concerns and needs of minorities, women and newly-admitted lawyers, and to report with respect thereto to the Board of Directors co-chairs: Jennifer Deneault, Lindsey Fleischman, Alekhya Shastry, and Jasmine De Cock board liaison: Robert Isackson Over the past year, the Young Lawyers Committee (YLC) organized several well-attended virtual and in-person events with a focus on growing NYIPLA membership through law school outreach and collaborating with other committees. In the Fall, the YLC co-hosted a virtual event on the U.S. Supreme Court case Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith to discuss the future of fair use in copyright law. The YLC continued its tradition of networking over happy hour with a Fall in-person gathering to bring old and new members together. In the Spring, the YLC co-hosted an in-person panel discussion with the Law Firm Management Committee providing a primer on privacy law and identifying emerging issues from the perspective of in-house counsel. The panel satisfied the new New York privacy law CLE requirement. It was followed by a social gathering at a nearby restaurant. Also in the Spring, the YLC co-hosted a virtual event with the Women’s Committee and the US Bar – EPO Liaison Council titled “From Conception to the Patent Office: Women Inventors Across the US and EU." Finally, the YLC co-hosted two virtual CLE presentations with the PTAB Committee addressing the basics of PTAB proceedings and recent PTAB decisions in the Fall and Spring, respectively.
101st Annual Dinner in Honor of the Federal Judiciary Friday, March 31, 2023 The New York Intellectual Property Law Association held its 101st Annual Dinner in Honor of the Federal Judiciary on March 31, 2023, at the New York Hilton Midtown Hotel. President Heather M. Schneider welcomed the honored guests, members of the NYIPLA, and their guests. The Association’s Twenty-First Annual Outstanding Public Service Award was presented to the Honorable J. Rodney Gilstrap, Chief Judge of the United States District Court for the Eastern District of Texas. The Keynote address was given by Dr. Mae C. Jemison, physician, engineer, former NASA astronaut, leader of 100 Year Starship non-profit for space exploration.
EVENTS
SFIPLA / NYIPLA Navigating Russian and Ukrainian IP Issues May 12, 2022 The NYIPLA collaborated with the San Francisco Intellectual Property Law Association (SFIPLA) for the Thursday, May 12 program entitled "Navigating Russian and Ukrainian IP Issues". This bicoastal webinar, featuring speakers from across the U.S., encompassed multiple issues involving Russian intellectual property, including an overview of Russian sanctions and Russian and Ukrainian IP; key considerations in Russian IP disputes and licensing/collaboration agreements; export controls related to Russia/Belarus; and dealing with the USOFAC (U.S. Office of Foreign Assets Control). Our panel will answer your questions on how to protect IP in Russia and beyond. Issues of intellectual property specific to practice in Ukraine, including recently passed laws by the Ukraine Parliament that are directed to navigating the conflict with Russia. Strategies for maintaining IP in Eurasian Patent Convention jurisdictions other than Russia without going through the Eurasian Patent Organization and without using lawyers in Russia. Patent Law and Pratice Meeting June 24, 2022 The Patent Law and Practice Group held their monthly meeting featuring a guest speaker, Dr. Julie Burke. In 2020, Dr. Burke founded IP Quality Pro LLC, a patent prosecution consulting venture, providing guidance to help patent practitioners efficiently and effectively navigate procedural obstacles with the USPTO. From 1995-2015, Julie served as a Primary Examiner, Special Program Examiner and then as Quality Assurance Specialist in Technology Center 1600 of the USPTO, where she drafted petition decisions, reviewed quality of Office Actions and allowances and evaluated patent examination practices to identify targets for quality improvement. Dr. Burke spoke to The Patent Law and Practice Group about special examiners in Search and Classification Art Units 1699, 1759, 2189, 2419, 2699, 2899, 3619, and 3799. These Art Units are not listed in USPC. Applications are routed to the best examiner in these art units via Cooperative Patent Classification(CPC) as identified by a C* internal indicator. The examiners in these units are all experienced examiners who perform additional searches and spend additional time reviewing the applications. Dr, Burke was not able to determine why these Art Units were formed and what determines if an application is sent to one of these units. If you find your application is in one of these units or if you are having any examiner problems, Dr. Burke suggested the following: Note any procedural issues and bring these issues to the supervisor’s attention. Once you are in front of the senior examiner you have an opportunity to present your prosecution points; and In the case of a supervisor issue, try writing the group director on a policy clarification matte. PTAB Bootcamp: A Primer of Milestones in a PTAB Trial July 5, 2022 THe PTAB Committee and Young Lawyers Committee of the New York Intellectual Property Law Association held a joint virtual PTAB Bootcamp meeting. In Session 1 of the PTAB Bootcamp, our panelists lead by Co-Chairs Charley Macedo and Ken Adamo, walked through the key procedural steps in a PTAB Trial, including both Inter Partes Review and PGR. Our young lawyers discussed different steps in the process. This primer is a great review on the latest in PTAB Procedures for newly admitted attorneys and experienced counsel. Hot Topics In Trademark & Copyright Law July 13, 2022 The NYIPLA Trademark Committee hosted the 2022 Half-Day CLE Program at King & Spalding LLP. Speakers discussed the latest topics in Trademark Law, which included: Update from the Trademark Trial and Appeal Board NFTs & IP - It's Complicated Combating Misrepresentations in Trademark Prosecution and Maintenance Update from the Copyright Office Understanding Sanctions - Prosecuting Inventions and Trademanrks in Russia PTAB Bootcamp: A Primer Review Of PTAB Decisions August 2, 2022 The PTAB Committee and Young Lawyers Committee of the New York Intellectual Property Law Association held their second joint virtual PTAB Bootcamp meeting. In Session 2 of the PTAB Bootcamp, our panelists lead by Co-Chairs Charley Macedo and Ken Adamo, walked through the key procedural steps for review of PTAB Decisions, including final written decisions in both Inter Partes Review and PGR. Our young lawyers discussed different review options available for final written decisions by the PTAB from trials. Patent Law: Amendments to the Canadian Patent Law Rules August 5, 2022 The Patent Law & Practice's Committee held their meeting on Friday, August 5, 2022. Nick Bertram, an NYIPLA member and Canadian patent lawyer, discussed amendments to the Canadian Patent Rules. Nick discussed the amendments, which includes the possibility of requesting examination before October 3, 2022 to avoid the new fees; double patenting issues caused by the new changes; the lack of limit in the number of independent claims; and that multiple dependencies are not counted as extra claims for the purpose of calculating claim fees. PTAB Committee Meeting: Director Review, POP Panel Review, and Decision Circulation September 6, 2022 The NYIPLA PTAB Committee discussed Director review, POP panel review, and decision circulation. In this interactive meeting, a distinguished group of USPTO officials, including Vice Chief Judge Kal Deshpande and Vice Chief Judge Melissa Haapala shared insights on the latest updates and current status of Director review, POP panel review, and decision circulation at the USPTO. U.S. - China 2022 Developments In Trademark Law and Practice Perspectives September 8, 2022 The program featured trademark experts from the United States Patent and Trademark Office (USPTO) and the China National Intellectual Property Administration (CNIPA), along with intellectual property (IP) practitioners from both countries, who will offer: Concise summaries of the latest changes in trademark law in both the Unites States and China Details about developments at the USPTO and CNIPA Testimonies from the field by experienced IP practitioners This was a unique opportunity that businesses, brand owners, IP lawyers, and other IP stakeholders did not want to miss. Hot Topics for Congress and the USPTO: 101 Patent Eligibility and PTAB Director Review September 14, 2022 The NYIPLA Amicus Brief Committee had a discussion on two hot topics: patent eligibility and Director review. The panel discussed patent eligibility across technologies, including in life sciences, after the Supreme Court's denial of certiorari in American Axle and the impact of the views expressed by the United States - urging the Court to grant certiorari to address what it views as the Federal Circuit's clearly incorrect interpretation of the Court's Alice/Mayo patent eligibility framework - going forward. The panel also discussed attempts to remedy the current state of patent eligibility jurisprudence by the legislation in view of the Supreme Court's denial of certiorari. In particular, the panel discussed Senator Tillis' recent patent eligibility reform proposal, crafted specifically to address the Federal Circuit's application of Alice/Mayo. The speakers also addressed the Director review process at the PTAB, created to implement the Supreme Court's decision in Arthrex, including available guidance, scope for review, interplay with Precedential Opinion Panel (POP) review, and the role of amici. Young Lawyers / Corporate Happy Hour September 21, 2022 The NYIPLA Young Lawyers and Corporate Committees held a Happy Hour at Pennsylvania 6. Attendees were able to mingle and network with other young lawyers and corporate lawyers while enjoying food and drinks! PTAB Committee Meeting: USPTO Argue Mock Ex Parte Appeal October 4, 2022 On October 4, 2022, the PTAB Committee discussed effectively arguing an mock ex parte appeal at the USPTO. In this interactive meeting, a distinguished group of USPTO officials, including Lead Judge Phil Kauffman, Lead Judge Ryan Flax, Lead Judge Alyssa Finamore, Judge Bill Baumeister, Vice Chief Judge Kal Deshpande, and Vice Chief Judge Janet Gongola shared tips for effective written advocacy and argue a mock ex parte appeal with stop/start action to share commentary and insights about effective oral advocacy. IP Transactions Bootcamp October 6 - October 19, 2022 The IP Transactions Bootcamp, which was geared towards junior and mid-level associates, allowed attendees to learn practical skills from experienced attorneys and in-house counsel. Topics included: Copyright, Trademarks Agreement Patent Agreements Cybersecurity, IP, and Privacy Issues in Technology Transactions. Government and University Agreements Mergers, Acquisitions, Due Diligence & Ethics Ethics Transactions & An In-House Perspective Patent Law: Patent Eligibility Restoration Act of 2022 October 28, 2022 NYIPLA invited members to join the Patent Law & Practice and Legislative Action Committee's joint program on October 28, 2022. Brad Watts, Minority Chief Counsel of the Senate Judiciary Committee Subcommittee on IP spoke to the Patent Law and Practice Committee and Legislative Action Committee on October 28, 2022, regarding the recently proposed patent reform legislation. Key points covered included: The bill excludes from patent protection “NON-TECHNOLOGICAL economic, financial, business, social, cultural or artistic process” that is not “embodied in a machine or manufacture, unless that machine or manufacture is recited in a patent claim without integrating, beyond merely storing and executing, the steps of the process that the machine or manufacture perform. Mr. Watts indicated that Senator Tillis did not want to define “technological” because technology evolves over time and it is difficult to predict how industry will change in the future. He did not want to provide a definition that was too restrictive. However, Mr. Watts indicated that the intent was to have a low bar for what is considered “technological.” He used the term “de minimis” in this regard. When I asked if that term could be included in the legislation in the future, Mr. Watts said that it probably would not, as it could be considered as too minimal of a filter if taken to an extreme. Thus, “technological” essentially means something a little more than “de minimis.” After further discussion, Mr. Watts indicated that part of the intent was to prevent patents from being issued for inventions that were essentially the mere automation of conventional techniques previously performed manually. It is unlikely any legislation would get passed until approximately 6 to 8 years from 2022. The above-mentioned limitations of some of the language will evolve, so the intent at this point is more important than the specific terminology.” PTAB Committee Meeting: USPTO Discuss Presenting Technology to the Patent Trial and Appeal Board November 1, 2022 The NYIPLA PTAB Committee had a discussion on effective ways to present technology to the Patent Trial and Appeal Board. In this interactive meeting, Administrative Patent Judge Kim McGraw and Administrative Patent Judge Russell Cass explained best practices and effective ways to present technology to the PTAB. One-Day Patent CLE Seminar November 9, 2022 On Wednesday, November 9, the NYIPLA held the One-Day Patent CLE Seminar at Willkie Farr & Gallagher LLP. Topics included: Significant Emerging Issues in Patent Lae Beyond Taking “Reasonable Measures of Protection,” Essential Collaboration Required to Maintain and Enforce Trade Secrets Hot Topics in Pending and Proposed Legislation Hot Topics and Pitfalls When Negotiating Commercial Agreements Interactive Ethics CLE Recent Federal Circuit Decisions Impacting Patent Law An In-House Perspective on Managing Outside Counsel From the Arbitrator's Perspective: A Discussion of Best Practices in IP/Patent Arbitration The Future of Fair Use After Warhol v. Goldsmith November 16, 2022 On Wednesday, November 16, NYIPLA's Copyright Committee, Amicus Brief Committee, and Young Lawyer's Committee had a evening round-table discussion about the Warhol v. Goldsmith case and its impact on the fair use and transformativeness analysis in the U.S. Intellectual Property and Art law. Specialists discussed the recent Supreme Court hearing on the case, previous SCOTUS decisions on fair use, the future of fair use analysis, and its impact on the world of visual art and content creation. Patent Law: Discussion on the Council for Innovation Promotion (C4IP) December 2, 2022 On Friday, December 2, NYIPLA's Patent Law & Practice Committee welcomed Frank Cullen, Executive Director of the Council for Innovation Promotion, to speak at their committee meeting. Mr. Cullen is part of the recently formed Council for Innovation Promotion (C4IP). He spoke about why the group was formed, what the goal of the group is, who is the group meant to serve; and what are the plans for involving patent practitioners. PTAB Committee Meeting: USPTO Returns to NYIPLA PTAB Committee to Hold an Advanced AIA Trial Practice December 6, 2022 On December 6, 2022, NYIPLA's PTAB Committee discussed several topics during an advanced AIA trial practice session. During this interactive meeting, USPTO Judges Kevin Cherry and Linda Horner were joined by former Vice Chief Judge, Senior Legal Advisor to the Director, and current Partner at O'Melveny & Myers Tim Fink and General Counsel at Unified Patents Jonathan Stroud in a panel moderated by PTAB Committee Co-Chair Charles Macedo. The panel held an advanced AIA trial practice session and discussed some of the following important trial topics: When to file more than 1 petition against same patent (serial or parallel) When to challenge fewer than all claims When to file a Sotera stipulation When to ask for a Preliminary Reply How to navigate co-pending claim construction when filing an IPR How to address arguably indefinite claim terms When to move to strike for new argument versus letting it play out Contents of expert declaration and incorporation by reference Reach of estoppel When to object to demonstratives Patent Litigation Committee: Extraterritoriality Revisted: Implications of Abitron for Patent Law December 7, 2022 The NYIPLA's Patent Litigation Committee welcomed Cassandra Roth, Counsel at Ropes & Gray LLP for the program 'Extraterritoriality Revisited: Implications of Abitron for Patent Law.' The Supreme Court recently decided to review the extraterritorial reach of the Lanham Act in Abitron Austria GmbH et al. v. Hetronic International Inc. Attendees learned about this pending case and its potential implications for extraterritoriality in patent law. Corporate Committee: Legislative Update December 8, 2022 The NYIPLA Corporate Committee invited in-house counsel members to join their December 8 virtual meeting for a Legislative Update from Chris Israel of AGC. PTAB Committee Meeting: USPTO Returns to NYIPLA PTAB Committee to Provide a Recap of What Happened at the PTAB in 2022 and Explore What to Expect at the PTAB in 2023 January 3, 2023 On January 3, 2023, USPTO Vice Chief Judge Janet Gongola provided PTAB committee members with an update and recap of what happened at the PTAB in 2022 and explore what to expect at the PTAB in 2023. NYIPLA Presidents' Forum: The Impact of the Inflation Reduction Act and Other Policies on the Pharmaceutical Industry January 19, 2023 On January 19, 2023, the President’s Forum brought together thought leaders to consider the impact of the Inflation Reduction Act (IRA) and other policies, such as price controls and IP waivers, on the pharmaceutical industry. They discussed the public policy and economic reasoning both for and against the IRA and similar policies. They addressed the IRA’s impact on innovation and drug development, as well as potential consequences for end consumers. Speakers also considered how the IRA and similar policies could impact investments in the pharmaceutical sector.This Forum provided different perspectives from legal experts on these crucial issues, and the NYIPLA hopes this Forum can help move all parties closer to agreement. Speakers included: Richard Frank, Leonard Schaeffer Chair in Economic Studies, Director of Schaffer Initiative on Health Policy, The Brookings Institution Henry Hadad, Senior Vice President and Deputy General Counsel, Bristol Myers Squibb Karin Hessler, General Counsel, Association for Accessible Medicines Anna Makki, Managing Director, Marathon Asset Management Zoom Out with NYIPLA! February 2, 2023 Have you made a New Year’s resolution to grow your business? Making an effort to commute into the office more, or for the first time? Are you tired of networking over Zoom? Well, we can answer yes to all of these questions, but we promise that our networking event will leave you anything but tired of Zoom! On February 2, 2023, attendees were able to join NYIPLA board members, law firm associates and law students before the 101st Annual Judges’ Dinner for a refreshing and networking event. Associate Advisory Council co-chairs Eric Greenwald, Christine-Marie Lauture, and Khalil Nobles discussed surviving your first year (back) in the office. Attendees will have access to an array of accomplished attorneys, many of whom are willing to share their practice successes from 2022. PTAB Committee Meeting: NYIPLA PTAB Committee to Discuss Scope of IPR Estoppel February 7, 2023 On February 7, 2023, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee explored the current scope of IPR estoppel at the PTAB. In 2022, the Federal Circuit overruled its prior precedent to clarify “that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not in the IPR but which reasonably could have been included in the petition” in California Institute of Technology v. Broadcom Ltd. (Fed. Cir. Feb. 4, 2022). Apple and Broadcom subsequently filed a petition for a writ of certiorari at the Supreme Court on September 2, 2022. On January 17, 2023, the Supreme Court invited the Solicitor General to file a brief in this case expressing the views of the United States. In this interactive meeting, Brian Murphy, Partner at Haug Partners and former Administrative Patent Judge at the PTAB lead a discussion on The Many Flavors of IPR Estoppel: A Review and Update, including the implications of the CalTech v. Broadcom decision and the current scope of IPR estoppel at the PTAB. Biologics & Biosimilars – Section 112 at the Supreme Court February 7, 2023 On Tuesday, February 7, 2023, NYIPLA held the Biologics & Biosimilars hybrid program at Kramer Levin or by Zoom. Written description and enablement of biotech inventions is currently a hotbed of controversy and has divided the biopharma industry. The industry is divided on two fronts: whether there is a separate written description requirement and whether the full scope of the claimed invention has to be described and enabled. The Supreme Court declined to hear the dispute regarding written description in Juno v. Kite. But the Court has taken up enablement of functionally-defined antibody claims in Amgen v. Sanofi, and is set to address whether the full scope of functional genus claims, i.e., claims to all therapies to a particular biological target, has to be enabled. Both the Amgen and Juno cases have garnered significant attention from patent professionals and various amici regarding the scope of disclosure required for claims to a genus of biological materials defined by their function, not the structure or sequence of the materials. Some argue that it is not possible to describe or enable the full scope of functionally-defined biological materials and that the standard for enablement has to be lowered in order to allow return on investment by allowing control of a therapeutic target based on limited disclosure of biological materials with the requisite function. Others argue that functionally-defined biological materials have to be described and enabled across their scope and that functional genus claims suppress rather than promote innovation. In this installment of NYIPLA’s Biologics & Biosimilars program, the speakers discussed the current state of the law, the industry divide, the issues before the Supreme Court and potential impact on innovation of biologics and on biosimilar litigation. Patent Litigation Committee: Selecting a Winning Jury in Patent Trials February 15, 2023 The NYIPLA Patent Litigation Committee was joined by speaker Sam Baxtler, Principal, McKool Smith. Although the jury selection process varies among courts and judges, trial attorneys can employ key tools and strategies to help ensure the right jurors decide their patent case. This includes gathering critical details about the court, the judge and prospective jurors. Recognized as one of the 2022 Lawdragon 500 Leading Litigators in America, Sam shareed some of his secrets for skillfully picking a winning jury, and connecting with jurors. Leading Ladies of Law - Advice from the Top February 15, 2023 Attendees were able to join some leading ladies in law as they discussed their career, how they got here, and lessons they wish they knew as more junior selves. They answered questions from the audience so that they can provide guidance on how everyone can be the start of their own careers. Speakers included Hon. Loretta Preska, Senior Judge, U.S. District Court of the Southern District of New York; Hon. Donna Praiss, Administrative Patent Judge, USPTO; Diana Santos, Senior Attorney, Global Markets, IBM,; and Vi Tran, Associate, Desmarais LLP. Linnea Cipriano, Partner, Goodwin moderated the program. A Primer on Privacy Law and a Discussion of Emerging Issues from the Perspectives of In-House Counsel & Happy Hour Event March 7, 2023 The NYIPLA Law Firm Management Committee and Young Lawyers Committee presented a panel discussion on emerging issues in privacy law from the perspectives of in-house counsel. Panelists included Elizabeth Benegas, General Counsel and DPO, Torii; Sarah Cleffi Muhlstock, Senior Legal Editor, Privacy & Data Security, Thomson Reuters Practical Law; and Carrie Parikh, Chief Privacy Officer and Assistant General Counsel, Horizon Blue Cross Blue Shield. The moderator was Chih-wei Wu, Associate, Groombridge, Wu, Baughman & Stone LLP. Following the program, attendees were invited to join a happy hour event at Jane Doe Bar & Restaurant. Open Source Code Usage: What to Know March 15, 2023 The NYIPLA IP Transactions Committee welcomed speakers Phil Odence, General Manager of Black Duck at Synopsys, and Spencer Simon, Partner, Intellectual Property, Willkie, Farr & Gallagher LLP for an overview of considerations to take into account when using open source software and reviewing open source software disclosures, including what steps to take when you run into a potential issue. PTAB Committee Meeting: NYIPLA PTAB Committee to Review Recent PTAB Precedential and Informational Decisions March 21, 2023 On March 21, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee discussed recent PTAB precedential and informational decisions. In this interactive meeting, Charley Macedo, Partner at Amster Rothstein & Ebenstein LLP and PTAB Committee Co-Chair, Chris Lisiewski, Associate at Amster Rothstein & Ebenstein LLP, PTAB Committee Coordinator and Co-Chair of the Inventor of the Year Committee, Keith Barkaus, Senior Counsel at Amster Rothstein & Ebenstein LLP, Yangfan Xu, Associate at Amster Rothstein & Ebenstein LLP, Thomas Hart, Law Clerk at Amster Rothstein & Ebenstein LLP, Jenna Deneault, Counsel at Groombridge, Wu, Baughman & Stone LLP and Co-Chair of the Young Lawyers Committee, and Mike Milea, Associate at Groombridge, Wu, Baughman & Stone LLP lead a discussion on the recent PTAB precedential and informational decisions. The panel reviewed and discussed the following recent decisons: Nested Bean, Inc. v. Big Beings Pty Ltd., Case IPR2020-01234, Paper 42 (Feb. 24, 2023) [AIA, 35 U.S.C. § 112, fifth paragraph – granting rehearing and modifying the Final Written Decision, addressing the treatment of multiple dependent claims]; Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (designated: Feb. 10, 2023) [AIA, denying institution – holding declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning]; Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124 et al., Paper 14 (Dec. 21, 2022) (designated: Jan. 4, 2023) [AIA – vacating adverse judgments and remanding proceedings to confirm whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims] (sua sponte Director review decision); Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 102 (Dec. 22, 2022) [AIA – holding Petitioner’s conduct was an abuse of the inter partes review process, sanctioning Petitioner, and determining whether the petition, based only on the record before the Board prior to institution, presents a compelling, meritorious challenge] (sua sponte Director review decision); OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102 (Oct. 4, 2022) [AIA – holding Petitioner’s conduct was an abuse of the inter partes review process, sanctioning Petitioner, and remanding for a determination of whether the petition, based only on the record before the Board prior to institution, presents a compelling, meritorious challenge] (sua sponte Director review decision); NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) [AIA § 314(a), affirming decision denying rehearing – the only appropriate time for a petitioner to offer a stipulation related to Fintiv factor 4 is prior to the Board’s decision on institution] (sua sponte Director review decision); Code200, UAB v. Bright Data, Ltd., IPR2022-00861 & IPR2022-00862, Paper 18 (Aug. 23, 2022) [AIA § 314(a), vacating decision denying institution – analysis of General Plastic factors relating to a second-filed petition when the first-filed petition was not evaluated on the merits] (sua sponte Director review decision); and Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (Feb. 24, 2023) [decision vacating the Decision Denying Institution and remanding for further proceedings]. PTAB Committee Meeting: Examining Faulty Rulemaking Challenges in the Federal Circuit's Recent Apple v. Vidal Decision April 18, 2023 On April 18, 2023 the New York Intellectual Property Law Association (NYIPLA) PTAB Committee discussed faulty rulemaking challenges and the Federal Circuit's recent Apple v. Vidal decision. In this interactive meeting, Ken Adamo, Principal Attorney at the Law Office of KRAdamo and PTAB Committee Co-Chair lead a discussion on the implications of the recent Federal Circuit decision in Apple v. Vidal. Patent Litigation Committee Meeting: Creating a Winning Trial Team April 19, 2023 The NYIPLA Patent Litigation Committee welcomed speakers Kerri-Ann Limbeek, Partner, Desmarais LLP and Deborah Mariottini, Associate, Desmarais LLP, who recently secured a jury verdict of willful infringement for biotech company Ravgen against testing giant LabCorp. The verdict of $272.5 million through trial was the third largest patent verdict of 2022. Kerri-Ann led the case on behalf of Ravgen in parallel with seven other district court litigations against other defendants as well as ten inter partes review proceedings challenging Ravgen’s patents. At trial, four associates (including Deb) conducted their first witness examinations. Kerri-Ann and Deb provideed perspectives on how to create a winning team that is focused on strategy at every level in complex, multi-defendant patent litigations across various jurisdictions and at the Patent Office. NYIPLA Diverse Careers in IP Program April 19, 2023 Have you ever wondered what opportunities are available in today’s intellectual property marketplace? On April 19, 2023, attendees were able to join our panelists and moderator at the Quinnipiac University School of Law for a panel discussion on how to navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Panelists included Dena M. Castricone, Managing Member at DMC Law LLC; Marina F. Cunningham, Managing Partner at McCormick, Paulding & Huber PLLC; Todd E. Garabedian, Partner at Cantor Colburn LLP; Lisa Moyles, Partner at Womble Bond Dickinson (US) LLP; and Robert Rosasco, Partner at Getz Balich LLC. Dale Carlson from Quinnipiac University School of Law moderated of this program. From Conception to the Patent Office: Women Inventors Across the US and EU April 26, 2023 On April 26, 2023 - World IP Day - we celebrated the achievements of women inventors, creators, and entrepreneurs. The European Patent Office (EPO) published a study in November 2022 looking at women’s participation in inventive activity across time, country, technology and applicant type. Despite there being more women graduates in STEM fields, the number of women inventors trails behind the number of male inventors. During the panel, we discussed the key findings of this EPO study, provided a comparison within the U.S. Patent & Trademark Office (USPTO), and discussed potential shared solutions to this common transatlantic issue. Panelists provideed their perspective from the patent office, academia and industry. Panelists: Dr. Natalya Bailey, Chief Operating Officer, Curated Innovation Karin Ferriter, Senior Advisor, Office of the Deputy Commissioner for Patents, USPTO Alexis Hatzis, Patent Attorney, IBM Yann Ménière, Chief Economist, European Patent Office Taunya Phillips, Director, Office of Technology Commercialization, University of Kentucky Roberta Romano-Götsch, Chief Sustainability Officer, European Patent Office Moderator: Jasmine De Cock of Fish & Richardson P.C.
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