green booklet
ASSOCIATION ANNUAL REVIEW
NYIPLA Board of Directors ................................................................................................................ 2 Year in Review by Patrice P. Jean ...................................................................................................... 3-6 Annual Meeting ............................................................................................................................... 7-12 Committee Reports .......................................................................................................................... 13-24 Annual Report of the Treasurer ........................................................................................................ 25-26 103rd Annual Dinner in Honor of the Federal Judiciary ....................................................................... 27-30 Events ............................................................................................................................................. 31-47
www.nyipla.org
2024-2025
Treasurer Jeffrey Coleman
By: Patrice P. Jean, 2024 - 2025 NYIPLA President
Deirdre Clarke
Jenny Lee
2024 - 2025 Board of Directors
Christopher Loh
Immediate Past President Robert J. Rando
Mark Schildkraut
Jonathan Berschadsky
2024 - 2025 Year in Review
President Patrice P. Jean
It has truly been an honor to have served as your President for the past year. As my NYIPLA Presidency has come to an end, I am filled with gratitude and a strong sense of accomplishment that our organization has achieved. It was my sincerest pleasure to have served with my fellow officers, board members, committee chairs, and other members of the Association that collaborated to advance the mission of NYIPLA through numerous successful programs, events, and initiatives. We had an amazing year and here are some of the highlights. We submitted comments to the United States Patent and Trademark Office (USPTO) on three proposed rules concerning Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting; Director Review of Patent Trial and Appeal Board Decisions; and Patent Trial and Appeal Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations Instituting Parallel and Serial Petitions and Termination Due to Settlement Agreement. Our Programs Committee in collaboration with our committee co-chairs have held numerous successful and well-attended events including our annual Trademark & Copyright Half-Day Program, Fall One-Day Patent CLE Seminar, practice area committee meetings, and our extremely popular IP Transactions Bootcamp. The NYIPLA Annual Second Circuit Summer Associate Moot Court CLE Program led by Past President Rob Rando continued to be a success and offered the opportunity for summer associates to argue IP cases on some of the most cutting-edge legal issues of our time in front of sitting judges. Our Young Lawyer’s Committee brought great programing and fun activities with workshops and networking events to engage the most recent members to enter our profession. We launched the new NYIPLA website, and we boosted our membership numbers to the highest levels that have been in the last decade. It was a pleasure seeing many of you at our extremely successful 103rd Annual Dinner in Honor of the Federal Judiciary. I was privileged to host the dinner and present the 23rd Annual Outstanding Public Service Award to the Honorable Jimmie V. Reyna of the United States Court of Appeals for the Federal Circuit in recognition of his dedication to and extraordinary level of public service to the legal profession, the judiciary, and the nation. We were also honored and privileged to have the Honorable Esther Salas of the United States District Court for the District of New Jersey as the Keynote Speaker. The Daniel Anderl Judicial Security and Privacy Act “Daniel’s Law” named in honor of her son was created to protect federal judges by safeguarding their personal identifiable information. Judge Salas is known for her bravery in speaking up for change in a time of unspeakable tragedy for herself and her family after Daniel’s murder. She continues to educate the public about the dangers that judges face and her profound and timely message moved us all. For those who were not able to attend the dinner, the text of excerpts of some of the speeches from the dinner is included at the end of my remarks. Before the dinner, the NYIPLA held the Day of Dinner CLE Luncheon Program entitled: The Effects of U.S. IP Jurisprudence on the Modern American Economy. The program featured remarks from Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office; Hon. Leonard P. Stark of the United States Court of Appeals for the Federal Circuit; Peter-Anthony Pappas representing the Senate Judiciary Committee, IP Subcommittee (Senator Tillis); Chris Israel, ACG Advocacy, and was moderated by Paul Bondor, then 1st Vice President of NYIPLA. Finally, the peaceful transfer of power to our current outstanding President, Abigail Struthers took place at the Annual Meeting, which was held at The Union League Club on Wednesday, May 7th, 2025, which brought together innovators and professionals from the judiciary, academia, corporate counsel, and leaders in the IP community. We began with a CLE program entitled “The PTAB: Where We’ve Been and Where We’re Going” which featured David J. Kappos, Former Under Secretary of Commerce for IP and Director, USPTO, Cravath, Swaine & Moore LLP; Teresa Stanek Rea, Former Acting Under Secretary of Commerce for IP and Acting Director, USPTO, Rea Consulting LLC; Jamie L. Simpson, Chief Policy Officer and Counsel, Council for Innovation Promotion (C4IP); Kenneth R. Adamo, Principal, Law Office of KRAdamo as Moderator. We also held the annual election of the NYIPLA Officers and Board Members, in which Abigail Struthers started off her presidency. The Annual Meeting concluded with a dinner that featured the Honorable Gary R. Brown of the United States District Court for the Eastern District of New York as Keynote Speaker. Judge Brown delighted attendees with a magic performance and a presentation on the history of the use of intellectual property to protect magic tricks and inventions. Notably, none of the highlights listed above could have been possible without the hard work and dedication of my fellow Officers, NYIPLA Board Members, Committee Co-chairs, and Feikje van Rein and her team at RRR Associations, LLC. I am so grateful to all of you and so proud of all that we accomplished this past year. TEXT OF THE INTRODUCTORY REMARKS FOR THE 23RD OUTSTANDING PUBLIC SERVICE (OPS) AWARD RECIPIENT, THE HONORABLE JIMMIE V. REYNA: Each year, we select a current or former member of the Judiciary who has provided an extraordinary level of public service. This year, I am so happy to present the NYIPLA’s Outstanding Public Service Award this year to the Honorable Jimmie V. Reyna of the United States Court of Appeals for the Federal Circuit. His biography is in the booklet so I will not read it all here, but Judge Reyna is known for his inspirational journey to the bench and for his expertise in trade law. He is a loyal supporter of bar organizations and is recognized by many, including myself, for his sage advice to practitioners on excellence in advocacy before the courts. In fact, I might not be standing here today if it was not for Judge Reyna. When I first met Judge Reyna, he was the honored guest seated at my firm table over a decade ago. He shared with me details about his journey to the bench and how important bar organizations were to the success of his career. He encouraged me to take on more leadership positions and I am pleased to say that I took his advice and sought out leadership positions in professional bar organizations including the NYIPLA. I know that I am not the only one here that has been touched by Judge Reyna’s kindness and generosity. He has changed the trajectory of so many of us in the legal profession. We are honored to acknowledge you with this award for your many contributions and your loyal support and service to the judiciary. Judge Reyna thank you for your advice. Thank you for all that you do to support intellectual property professionals and the legal profession. TEXT OF THE INTRODUCTORY REMARKS FOR OUR KEYNOTE SPEAKER, THE HONORABLE ESTHER SALAS: When the NYIPLA first began its work in 1922, one of its projects was to advocate for improvements in the judges’ quarters in the federal courts. While we no longer advocate for improvements in the quarters, we do champion and promote laws that make a difference in the lives of the judiciary. The NYIPLA supported the passage of the Daniel Anderl Judicial Security and Privacy Act to protect federal judges by safeguarding their personal identifiable information. The NYIPLA Board, Legislative Action Committee, and Past Presidents Anthony Lo Cicero, Colman Ragan, Robert Isackson, and Heather Schneider worked ardently to persuade local congress members in support of this legislation to protect members of the judiciary and their families. Tonight, we have the privilege of hearing from New Jersey District Court Judge Esther Salas as our Keynote Speaker. Judge Salas has served as a district court judge since 2011. She is the first Hispanic woman to serve as a United States District Court Judge in the District of New Jersey. “Daniel’s Law” was named in honor of her son. Judge Salas is known for bravery in speaking up for change in a time of unspeakable tragedy for herself and her family. She continues to educate the public about the dangers that judges face, and we are so grateful that she is here tonight with her husband Mark. Please lower your voices and listen to Judge Salas’s very timely message and story. TEXT OF DINNER REMARKS: On behalf of the New York Intellectual Property Law Association (NYIPLA), I am pleased to welcome you all to the 103rd Annual Dinner in Honor of the Federal Judiciary. Tonight, we celebrate and honor Judges, Magistrate Judges, Court Clerks, Law Clerks, Circuit and District Court Executives, the staff of the Federal Courts and other honored guests. We honor each of you for your great service to our nation. The critical work that they do to interpret and apply the laws of our country, including the intellectual property laws, is of the utmost importance to providing justice to individuals and companies in support of our nation’s great economy and reputation around the world. We also welcome the Congressional representatives and Congressional staff including delegates from the Senate Judiciary Committee that handles the legislative process for intellectual property laws. We celebrate many other honored guests in attendance tonight from NY State Court, as well as leaders and distinguished guests from the USPTO, including a very special guest Coke Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office. We are especially appreciative of the PTAB Administrative Law Judges, Administrative Law Judges, Court of Federal Claims Judges, and Commissioners of the International Trade Commission, that have so often demonstrated that they are fully committed and engaged in their role in ensuring that the intellectual property laws achieve the constitutional rights articulated in the U.S. Constitution. NYIPLA is also honored to have so many members of the IP Inns of Court (the passion project of Judge Richard Linn), including the William Conner Inn of Court (run by Judges Paul Oetken and Roslynn Mauskopf), our other sister IP related organizations, law firms, and companies represented here this evening. The NYIPLA recognizes that many of the firms and institutions present face challenges that the legal industry has never seen before. We stand ready to work with our members to help navigate this unprecedented time. We are stronger if we work together even if we are different in the companies that we represent and the positions that we take for our clients. Speaking of differences, one of the best things that I have personally experienced about the NYIPLA and the NYIPLEF (the education foundation arm of the NYIPLA) is the diversity of perspectives and opinions of our members. Those perspectives that allow us to advocate passionately for clients and even for changes in IP law & practice to keep up with innovation and a fast-moving economy. During a time when critical core values and initiatives seem to be threatened, I think about the very powerful words of the 11th Chief Justice of the Supreme Court from 1930-1941 Charles Evans Hughes. “When we lose the right to be different, we lose the privilege to be free.” He was also one of the founding members of my firm Hughes Hubbard and Reed, so I read those words every day as I enter the place where I work. They inspire me to continue to celebrate who I am and all of the things that make me a unique complex person and citizen of this wonderful country. I will continue to use the last few months of my presidency to honor the many different voices and perspectives of our members. All of you make the NYIPLA one of the greatest bar organizations in this State, this Country and the World. By the way, an important objective of my mission as president-elect last year in partnership with past president Rob Rando and the board has been to strengthen our membership numbers to pre-pandemic numbers. If you are not already an active member of the NYIPLA, we invite you to join us to invigorate our ranks. I am extremely pleased to report that we are now at 950 plus active members almost to our goal of 1,000. We are so proud to have all of you as members and after tonight we expect to surpass our goal. When so many bar organizations are losing members at an alarming rate, we are thriving because of your support and dedication. Thank you! I would like to thank the current NYIPLA Board and past presidents for their hard work and dedication to continuing to pursue the mission of the NYIPLA. You are the heart of this organization and none of the important work that we do would be possible without you. Thank you to Feikje van Rein and her team including Jack, Josephine, and Hanna from RRR Associations, for their hard work not just for organizing this dinner but also for the support they give to NYIPLA in administering our programming, meetings, and events. Thank you to my colleagues and partners at Hughes Hubbard & Reed LLP, (My core IP team Emma Baratta, Dr. Lynn Russo, Sabrina Silverberg - here tonight) for your friendship, encouragement, and support. I am so proud to work with all of you. Last but certainly not least, heartfelt thanks for all the love and support from my family and extended family. To the awesome crew of women that have served as a sounding board for my wildest ideas and shoulders to cry on when things have been tough, Kathy Card Beckles, Serena Farquharson-Torres, Katrina Rainey Tate, Mavis Fowler-Williams and so many others (I cannot possible name all of you), thank you for your faith in me, great counsel, and support. Thank you all for being here tonight and for always showing up. To my mother, Ruth “Cookie” Jean; my twin sister, Raynice Jean Sigur & family; my husband, Darren Collins; and children, Scarlett & DJ, thank you for bringing joy to my life, allowing me to follow my passions, and for your love, warm hugs, and support. You are my life’s greatest blessings!
Ashley L. Ross
First Vice President Paul A. Bondor
President Elect Abigail Struthers
Hon. Roslynn R. Mauskopf (Ret.)
Lauren B. Emerson
Second Vice President David Bomzer
Eric Greenwald
Secretary Cheryl Wang
members
officers
On May 7, 2025, incoming Association President Abigail Struthers welcomed members and guests at the Union League Club. Abigail expressed her appreciation for outgoing president, Patrice P. Jean.
Annual Meeting May 7, 2025 Union League Club
2:15 PM - 3:15 PM CLE Program The PTAB: Where We've Been - and Where We're Going David J. Kappos, Former Under Secretary of Commerce for IP and Director, USPTO, Cravath, Swaine & Moore LLP Teresa Stanek Rea, Former Acting Under Secretary of Commerce for IP and Acting Director, USPTO, Rea Consulting LLC Jamie L. Simpson, Chief Policy Officer and Counsel, Council for Innovation Promotion (C4IP) Kenneth R. Adamo, Principal, Law Office of KRAdamo (Moderator) 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 Abigail Struthers Keynote Speaker - Judge Brown's Magical Properties Honorable Gary R. Brown District Judge United States District Court, Eastern District of New York 2025 Inventor of the Year award Dr. Zachary Lippman, Cold Spring Harbor Laboratory Recognized for his inventions related to enhancing tomato plant yield and leveraging genetic diversity to improve crop breeding in response to global food scarcity challenges. (U.S. Patent Nos. 9,732,352 and 11,624,074). 2025 Hon. William C. Conner Writing Competition Awards Keehle Amicon, 1st Place Winner New York Law School Mary Jane Jung, 2nd Place Winner Fordham University School of Law LifeTIME Achievement award Robert J. Rando NYIPLA Past President, Greenspoon Marder LLP Volunteer of the year award Lynn M. Russo Hughes Hubbard & Reed LLP Community service award Honorable Thomas L. Giannetti Administrative Patent Judge, USPTO 2025 NYIPLEF Scholarship Kayla Flanders Cardozo University 2025 Hon. Giles S. Rich Scholarship Monica Shin Fordham University
2025 Annual Meeting
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 Fordham University School of Law, for her paper entitled Weaving Copyright into Fashion: How Copyright Protection Can Change the Fashion Industry for the Better
second Place Winner Mary Jane Jung
First Place Winner Keehle Amicon
From New York Law School, for her paper entitled The Jack Daniel’s Hangover: Defining “Trademark Use” & the Future of the Rogers Test in Light of the Supreme Court’s Decision
2025 Hon. William C. Conner Writing Competition
Award recipients at the 2025 annual meeting
2025 Hon. Giles S. Rich Scholarship Award
Recognized for his inventions related to enhancing tomato plant yield and leveraging genetic diversity to improve crop breeding in response to global food scarcity challenges. (U.S. Patent Nos. 9,732,352 and 11,624,074).
Inventor of the Year Award
Monica Shin is a third-year J.D. candidate in the Evening Division at Fordham University School of Law, where she serves as a Student Clinic Director for the Fashion Law Institute’s Pop-Up Clinic. By day, she is a patent examiner with the U.S. Patent and Trademark Office, specializing in organic chemistry subject matter. During the Summer of 2024, she served as a Summer Legal Intern for the U.S. Department of Justice’s Civil Intellectual Property Section. Monica received her B.A. in Chemistry and B.S. in Biochemistry from Virginia Tech and her M.S. in Pharmacology from Georgetown University. This summer, she will be joining Crowell & Moring LLP as a Summer Associate.
Monica Shin
Dr. Zachary Lippman
The 2025 Lifetime Achievement Award is presented to Robert J. Rando in honor of all his achievements. Robert J. Rando is the NYIPLA 2023-2024 Past-President.
Honorable Thomas L. Giannetti
Robert J. Rando
Lynn M. Russo
Kayla Flanders
Volunteer of the Year Award
2024 - 2025 Committee Reports
AI, Cybersecurity & Digital Technology Scope of the Committee: To consider all aspects of AI, Cybersecurity and domestic and international privacy laws, and make recommendations thereto the Board of Directors. The Committee will endeavor to conduct a series of substantive CLE programs and networking events, both virtual and in person, exploring each discrete area. co-chairs: Jessica Copeland and Mark Doerr board liaison: Robert Rando 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, Chris Cariello board liaison: Abigail Struthers 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 8, 2024, Amicus Briefs Committee members monitored and considered involvement in cases before the Federal Circuit Court of Appeals and the Supreme Court. The Committee filed a brief in support of certiorari in In re Cellect, LLC, urging the Court to grant review of the double patenting issues presented because of their widespread impact, the inequities that followed the underlying decision, and the motivation behind patent extensions. The Committee led the preparation of the Association’s comment regarding the USPTO’s proposed rule on terminal disclaimers filed to obviate obviousness-type double patenting rejections. The comment urged against adoption of the proposed rule given the significant change to established patent practice that would follow. Ultimately, the USPTO withdrew the proposed rule. The Committee also led the preparation of the Association’s comment regarding proposed amendments to the Federal Rule of Appellate Procedure 29. The comment urged against adoption of the proposed amendments as unnecessary and detrimental to amici efforts. As of submission of this note, the amendments are still under consideration. 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. Nine Association members contributed as authors on the amicus brief discussed above. The Association’s participation in cases ensures that the intellectual property community’s voice is 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. Arbitration, Mediation & Neutrals Committee Scope of the Committee: To provide thought leadership and education with respect to alternative dispute resolution (e.g., arbitration, mediation, neutral case evaluation and special mastership) across the spectrum of intellectual property disciplines. co-chairs: Hon. Garrett E. Brown (Ret.), Thomas L. Creel, and Patrick J. Murphy III Board Liaison: Hon. Roslynn Mauskopf The Arbitration, Mediation & Neutrals Committee has been active in 2024 and 2025 organizing panel discussions on impactful topics that feature prominent current/former jurists and alternative dispute resolution practitioners. In November, 2024, the Committee was privileged to organize a panel discussion for the One-Day Patent CLE Seminar that was moderated by Patrick J. Murphy III and featured the Hon. Gregory M. Sleet, U.S.D.J. (Ret., D. Del.), Thomas Creel, Esq. and Mary E. Bartkus, Esq. The subject was best practices in drafting ADR clauses in IP-focused contracts – e.g., licensing agreements – and the discussion included a detailed comparative analysis of the ADR clauses found within a number of IP-focused licensing agreements in the public domain. Looking forward, the Committee is organizing a panel discussion scheduled for October 22, 2025, that will address neutral case evaluation/moot/mock proceedings in relation to proceedings in litigation. Notably, that panel discussion is the first in a two-part series, with the second panel discussion on a different ADR-based topic anticipated to take place in the winter/spring of 2026. corporate 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: Eric Greenwald and Diana Santos board liaison: Deirdre Clarke 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: Lauren Emerson The 2024–2025 NYIPLA Copyright Law & Practice Committee met monthly to brief members on notable developments in copyright law in an unusually active year marked by widespread media attention and vigorous public debate, most notably relating to AI. Programming featured a CLE program, “Cutting-Edge Developments in AI Litigation,” focusing on copyright issues and the recent decision in Thomson Reuters v. Ross Intelligence, with speakers Mark Doerr (Patrick Doerr PLLC) and Committee Co-Chair Josh Weigensberg (Pryor Cashman LLP). In May, several Committee members helped draft the Association’s comments to the U.S. Copyright Office in response to its Notice of Inquiry regarding the Copyright Claims Board, issued as part of a study mandated by the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020. Throughout the year, the Committee surveyed and discussed the wave of AI-related cases and examined the U.S. Copyright Office’s AI policy guidance. The Committee expects the pace and significance of these issues to continue into 2025–2026 and looks forward to furthering the Association’s thought leadership concerning these and other copyright related topics. Finally, the Committee thanks Mitchell Stein for his dedicated service upon concluding a three-year term as Co-Chair. Design pATENTS Scope of the Committee: To consider and build awareness of all aspects of United States and foreign design patent law and practice, including prosecution, litigation, and strategic use of design patents, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Brendan O'Dea and Ryan Schneer board liaison: Jonathan Berschadsky The newly formed Design Patents Committee had an active and engaging inaugural year. The Committee’s first event in August 2024 was a fireside chat with the USPTO’s Office of Patent Legal Administration, and offered a deep dive into the state of design protection for Graphical User Interfaces (GUIs). The event featured Karen Young, Deputy Commissioner for Patents at the USPTO, as well as Erin M. Harriman and Nicole D. Haines, Senior Legal Advisors in the USPTO’s Office of Patent Legal Administration. This kickoff event drew engagement from the members of other interested NYIPLA committees and generated momentum for further programming. In November 2024, during the Annual One-Day CLE program, the Committee presented a CLE titled Legal Changes to Design Patents Post-LKQ Decision,moderated by Committee Co-Chair Ryan Schneer and featuring panelists Joshua M. Herman (Greenberg Traurig LLP), Robert M. Isackson (Leason Ellis LLP), and Joseph V. Micali (Pryor Cashman LLP). The session explored the evolving standards for design patent obviousness in the wake of LKQ v. GMand the implications for practitioners. The CLE was well-attended and generated meaningful discussion around design patent strategy post-LKQ. In February 2025, Co-Chairs Brendan O’Dea and Ryan Schneer hosted a virtual program featuring Garth Rademaker, Design Practice Specialist at the USPTO’s Technology Center 2900, who provided insight into common rejections in design patent prosecution and offered practical guidance for applicants. In June 2025, the Committee held a brown bag lunch aimed at fostering community and idea-sharing among members, particularly in welcoming newer practitioners. The Committee also hosted a book talk in August 2025 with Thomas Rinaldi, author of Patented: 1,000 Design Patents, examining the history and cultural impact of design patents. Drawing from over 750,000 design patents issued since 1900, Mr. Rinaldi discussed notable examples of his book’s 1,000 representative patents, weaving a narrative that connected iconic designers such as Eero Saarinen, Charles Eames, Isamu Noguchi, Ettore Sottsass, Raymond Loewy, and George Nelson with everyday yet indispensable objects like tape dispensers, pencil sharpeners, and food processors. Looking ahead, the Committee plans an outing to the Cooper Hewitt Smithsonian Design Museum, another virtual program with the USPTO, as well as a co-presentation with the Corporate Committee at the next One-Day Patent CLE on district court litigation trends. The Committee looks forward to continued growth in membership and engagement in the coming year. Entertainment, Sports & Social Media Scope of the Committee: To consider all established and emerging issues related to Entertainment, Sports and Social Media including but not limited to the intersectionality of Intellectual Property, Mergers and Acquisitions, and various aspects of technology law. Once identified, recommendations will be presented to the board for the implementation of dynamic programming. co-chairs: Joseph Gerber and Aliya Nelson board liaison: Cheryl Wang The Committee continues to monitor developments in IP and technology law as they relate to issues affecting individuals, companies, and practitioners in the entertainment, sports, and social media sectors. The recent expansion of artificial intelligence has been a hot topic for the Committee, and others looking to collaborate with the Committee. In June 2025, the Committee coordinated with the Trademark Law & Practice Committee to develop a panel of speakers to discuss the impact of artificial intelligence on their in-house and private practices. The panel was titled "The Impact of AI in Media: Through the Lens of Industry Professionals" and featured in the Trademark Committee’s half-day CLE on Hot Topics in Trademark & Copyright Law. The panel was moderated by Committee member Aliya Nelson and speakers included in-house counsel at well-known media companies and attorneys in private practice at local sports and entertainment firms. In January 2025, the Committee organized a presentation on recent decisions in the Penn State v. Vintage Brands federal court litigation and its impact on ostensibly settled law relating to trademark infringement, licensing, and vintage sports apparel. The panel was spearheaded by Committee member Robert Raskopf and featured information from attorneys that litigated the case. The Committee holds monthly meetings and encourages all NYIPLA members to join and collaborate. It welcomed a new co-chair, Christine-Marie Lauture in 2025 and the Committee thanks former co-chair, Aliya Nelson, for her dedicated service. 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: Dyan Finguerra-Ducharme and Douglas Miro 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: Timothy Caine and Lauren Hamill board liaison: Hon. Roslynn Mauskopf (Ret.) Members: Roslynn Mauskopf; Val Svystun; Richard Brown; Anton Vlahek; Timothy Caine; Lauren Hamill; William Valet; Andrew Cochran; Matthew Abbott; Audrey Trace; Charles Gaglione; Jenny Lee; Steve Royale; Steve Fairchild. 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 Autumn 2024. 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 34 submissions for the 2024-25 competition, a significant increase 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: 1. Winner: “The Jack Daniel's Hangover: Defining "Trademark Use" & the Future of the Rogers Test in Light of the Supreme Court's Decision” by Keehle Amicon (New York Law School). 2. Runner-up: “Weaving Copyright into Fashion: How Copyright Protection Can Change the Fashion Industry for the Better” by Mary Jane Jung (Fordham University School of Law). The Committee notified the winner and runner-up, and the NYIPLA followed up with the authors for a presentation at the May 7th 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: Ksenia Takhistova and Maxine Graham board liaison: Jonathan Berschadsky MEMBERS: Nicholas Diceglie, Alessandro Peschechera, Lori Morrison, Margaret Brivanlou, Justine Gozzi, Mitch Hadley The announcement for the 2025 Inventor of the Year Award was made in the Fall 2024, and regularly promoted throughout the nomination period. The final nomination deadline was February 7, 2025. The Committee received over half a dozen high quality submissions for consideration. All nominations, except one, were first-time submissions, and the repeat submission was last year’s runner-up who was encouraged to reapply. This year’s submissions came from universities, research laboratories, large and small companies, and individual inventors. This year’s nominees work in vastly different technical fields. The patented subject matter of the nominations covers a broad spectrum of technology areas such as elder care technology and products, breast cancer treatment, music streaming, genetically-modified plants, and biotechnology. The IOTY Committee had several substantive meetings reviewing entries, engaging in deep discussions, and selecting the winning submission before making its recommendations to the Board. We considered the importance of discoveries in the fields of nominees’ innovations, their geographic proximity, and impact on the community throughout the greater New York area. The Committee presented its recommendation and two runners up to the Board for discussion and approval, and the Board agreed with the Committee’s first recommendation. At the NYIPLA’s Annual Meeting on May 7, 2025, the Association formally announced the 2025 Inventor of the Year Award Winner—Dr. Zachary Lippman, Professor & HHMI Investigator, Jacob Goldfield Professor of Genetics, and Director of Graduate Studies at Cold Spring Harbor Laboratory—recognized for his work on genetically-modifying plants to improve their yield. The Committee Chairs are delighted to recognize and thank the entire Committee for another successful year, and for Committee members’ excellent work researching, reviewing, and ranking the submissions. We also thank our Board liaison, Jonathan Berschadsky, for his guidance and support along this process. And, as we do each year with new submissions that do not get selected for the IOTY Award, we will encourage the second and third-place nominees to update and resubmit their applications next year. Dr. Zachary B. Lippman is an American plant biologist and the Jacob Goldfield Professor of Genetics at Cold Spring Harbor Laboratory, a Howard Hughes Medical Institute Investigator and a member of the National Academy of Sciences. Dr. Lippman received a BS (2000) from Cornell University and a PhD (2004) from the Watson School of Biological Sciences at Cold Spring Harbor Laboratory (CSHL). Dr. Lippman held a Human Frontiers postdoctoral research fellowship at the Hebrew University of Jerusalem in Israel for three years prior to starting his own research program at CSHL in 2008. In 2019, Dr. Lippman was appointed as a fellow by the McArthur Foundation for his work investigating the genetic networks underpinning plant development and growth. He received the 2020 American Society for Plant Biology (ASPB) Charles Albert Shull Award, and the National Academy of Sciences (NAS) Prize in Food and Agriculture Sciences in the same year. Dr. Lippman’s innovative research improves crop productivity by mutating genes that modulate sympodial growth, increasing inflorescence production, and therefore fruit production. His inventions can form the basis of novel tomato cultivars that will allow existing cropland and agricultural resources to be used more efficiently. These higher yielding tomato plants will help humanity meet its need for increased food production by allowing more food to be produced per unit of existing cropland. More broadly, although the inventions in question relate to tomato plants, the novel genetic strategies they exemplify are generally applicable to many other flowering crops. Dr. Lippman’s research has resulted in U.S. Patent Nos. 9,732,352 and 11,624,074, which relate to tomato plants comprising combinations of gene variants in a core hormonal pathway governing the delicate balance between leaf and flower production, including mutant suppressor of sp1 (ssp1) genes and mutant self pruning (sp) genes. Dr. Lippman’s lab continues to work on improving crop yields, and has several pending U.S. Patent Applications in this field. 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: Thomas Kowalski and Matthew Makover board liaison: Christopher Loh 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: Michael Johnson and Anthony Lo Cicero board liaison: Paul Bondor As it has since its inception, the Committee continues to monitor proposed and pending legislation of interest to Association members and the intellectual property committee in general. We advance this mission by communicating with Members of Congress and their staffs, producing white papers and other documents, and contributing to Association programs. This past year, we continued to monitor developments relating to life sciences-related intellectual property, including proposed use of the Bayh-Dole Act march-in rights as well as efforts in the fields of patent eligibility (including the pending PERA Act), PTAB reform (PREVAIL) and other attempts to improve the America Invents Act. In the coming year, the Committee expects to focus on the legislation described above, renewed interest in march-in rights and other relevant proposals as well as changing Congressional personnel and priorities. We will also assist the Board with the Presidents Forum and host a panel for the Fall Patent One-Day event. Past Presidents' Scope of the Committee: To facilitate the preservation of institutional knowledge through oral histories, mentoring emerging leaders and advising on structural matters like bylaw revisions, and convening annually for networking at the Past Presidents' Dinner. co-chairs: Mark Abate and Robert Isackson board liaison: Robert Rando The Past Presidents' Committee had regular meetings this year. The committee is continuing its efforts to serve as a sounding board for the NYIPLA Board and to mentor committee chairs and Board members as requested. The committee is collaborating with the YLC for a panel on the One-Day Patent program. In addition, the committee discussed beginning monthly programs, in the next association year, on a variety of topics including hosting speakers that can provide historical context for many of the IP law issues of today. MEMBERSHIP SCOPE OF THE COMMITTEE: To expand and enrich the association's membership base. CHAIR: Jennifer Deneault BOARD LIAISON: Robert Rando The membership committee is pleased to report that the association has reached over one thousand members. This past year, the committee focused on reaching out to new members and organizing events like the sharpen your skills series. To encourage membership engagement, we added NYIPLA stickers as a compliment to the NYIPLA pens distributed at events. We look forward to growing the association to 1,100 members and continuing to engage with members. Please reach out to the committee co-chairs Jessica Staurling or Patrice Jean if you would like to help with these efforts. We look forward to another great year. 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: Jeffrey Coleman The mission of the Patent Law & Practice Committee is to monitor, study, and promulgate changes in U.S. patent law and regulations and U.S. Patent & Trademark Office (USPTO) internal practice and to publicly participate in USPTO rule making, practice changes, and policy initiatives on behalf of the NYIPLA. In pursuit of these objectives, the Committee: monitors Federal Register notices relating to USPTO rule making and practice; prepares formal submissions on behalf of the NYIPLA to Federal Register notices where the USPTO is seeking comment(s) from the public and/or practitioners; and holds telephonic meetings with a focus on guest speakers to discuss recent precedential Fed Circuit cases, legislative changes related to patent practice, Federal Register notices, recent USPTO announcements and practice before the Office generally, and any other developments which affect patent practice and patent practitioners. The Committee participates in NYIPLA Continuing Legal Education panels and courses and cooperates with other NYIPLA committees on issues relating to patent law, regulations, and practice. This year, the Committee continued to monitor issues relating to the USPTO handling of patent eligibility under Section 101. John Lee spoke in February on The Restore and Prevail Act – Current Status and Future Outlook. Guest Robert Frederickson the lead counsel in the Recentive Analytics case spoke on the Federal Circuit’s view of Machine Learning and patent ineligible subject matter under 101. The Committee also hosted Rudhir Kristel, who is business development coach and former patent attorney. Rudhir discussed BD strategies that drive sustainable growth for patent lawyers—sharing practical insights from both private practice and in-house perspectives. 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: Joshua Harris and Leslie Spencer board liaison: Christopher Loh The Patent Litigation Committee was proud to present multiple programs this past year. On August 1st, 2024, we hosted a CLE program entitled “Discovery in a Disappearing World,” presented by TransPerfect legal. The panel featured Staci Rosen (Senior Director, Business Development), Megan Goltz (Digital Forensics Manager), Brandon Rimnac (Director, Consulting Services) and Daniel Meyers (President, Consulting and Information Governance). They offered insights into defensible mobile device acquisition, mobile device legal review options, and ephemeral messaging applications. We were also thrilled to contribute to the One-Day Patent CLE Program on November 7th, 2024, where we presented a panel on “AI and the Practice of Law: Ethical and Practical Issues of Using GenAI.” Moderated by Laura Chubb, Director of IP Litigation, Organon, the panel featured Tim Campbell, Senior Director of Commercial Product Management - Patent Intelligence, Clarivate; Hanna Madbak, Senior Director of IP Management, Adeia; Carla Sereny, Senior Legal Counsel – DX AI/ML, Adobe Inc.; and Christopher A. Suarez, Partner, Steptoe LLP. The panel discussed ethical and practical issues of using GenAI. We look forward to the coming year ahead and continuing the important work of our committee. 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: Lynn Russo and Andrew Roper board liaison: David Bomzer This year the Programs Committee continued its service to NYIPLA Members by providing high quality programs, informative presentations, and distinguished keynote speakers. Its slate of programs includes, among others, the Full-Day Patent Program, the Day of Dinner Program, Hot Topics in Trademarks, Biologics and Biosimilars Program, and the IP Transactions Boot Camp. We launched a “Sharpen Your Skills” series targeted at developing practice skills in various aspects of IP practice. We also assisted the PTAB committee with a CLE program focused on the USPTO’s Legal Experience and Advancement Program (LEAP), featuring PTAB judges and NYIPLA members who are also past LEAP participants. The Programs Committee was honored to present, in conjunction with the Second Circuit Court of Appeals, the Ninth Annual Second Circuit Moot Court Argument CLE Program. The proceedings were held at the Thurgood Marshall Courthouse and presided over by the Hon. Debra Ann Livingston, Chief Judge, United States Court of Appeal, Second Circuit, Hon. Richard J. Sullivan, Circuit Judge, U.S. Court of Appeals, Second Circuit, and Hon. J. Paul Oetken, District Judge, U.S. District Court, Southern District of New York. The hypothetical fact pattern concerned the use of generative AI. Further, we coordinated happy hours in collaboration with various other committees. We continue to increase the turnout at events in both virtual and in person formats, as well as facilitate interaction between more junior and more experienced members of the NYIPLA. 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: David Bomzer In 2018, the Association established the Patent Trial and Appeals Board (“PTAB”) Committee to provide thought leadership regarding legislation, rules, and litigation practice with respect to post-issuance proceedings before the PTAB, and to make recommendations to the Board in connection therewith. Over the past year, the PTAB Committee has remained a strong committee that has built many bridges to the U.S. Patent & Trademark Office (“USPTO”). The PTAB Committee continued to hold monthly meetings, which were well-attended, provided attendees with CLE credits, and featured presentations by impressive speakers including judges and administrators from the USPTO. The meetings focused on various topics in line with the Committee’s mission of providing thought leadership regarding legislation, rules, and litigation practice with respect to post-issuance proceedings before the PTAB, and making recommendations to the Board in connection therewith. Recordings of these meetings are available on the Association’s website. This past year, judges such as the Hon. James Worth, the Hon. Miriam Quinn, the Hon. Scott Moore, and the Hon. Michael Cygan provided insights on PTAB policy and practice and Director Review; Thomas Krause, the PTAB Director Review Executive led a discussion regarding Director Review final rules; Anthony Lo Cicero, Co-Chair of the Legislative Action Committee joined us to review the latest version of the PREVAIL Act and discuss the areas where potential reform was suggested; Paul Coletti, Co-Chair of the Amicus Briefs Committee joined us to provide an update on SCOTUS Petitions on Fed. R. Civ. P. 56 and Rule 36 judgments at the Federal Circuit; and committee members including Clint Mehall of Davidson, Davidson & Kappel, LLC analyzed legal developments and new litigation strategies at the PTAB. Meetings have focused on specific issues like Director Review under the new administration, discretionary review decisions, motion to amend final rules and practitioner expansion final rules, and the PREVAIL Act, among many others. The PTAB Committee looks forward to enthusiastically continuing its work in the upcoming year. 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 and Richard Kurz board liaison: Jenny Lee Over the past year, the NYIPLA Publications Committee has focused on strengthening member engagement and increasing contributions to our publications. We continue fostering NYIPLA's culture of participation. Through outreach and follow-up, we encouraged both seasoned attorneys and newer practitioners to share their insights, experiences, and perspectives regarding the full spectrum of intellectual property law. This approach has fostered a richer, more diverse range of content, reflective of the broad talent within our organization. Doing so has not only enhanced the breadth of topics covered but also provided a platform for emerging voices in the intellectual property field. In addition to these efforts, the committee benefited greatly from the addition of our new Co-Chair, Kathryn Bi. Her energy and commitment to support the Publications Committee is instrumental in driving our initiatives forward. Looking ahead, we aim to continue expanding our contributor base, with a particular focus on highlighting diverse perspectives and interdisciplinary approaches to intellectual property issues. CNIPA/ US Bar LIAISON council delegate: Wansheng Jerry Liu The most recent meeting for the CNIPA/US Bar Liaison Council delegation occurred from December 12 – 15, 2023, the first meeting to take place since the pandemic.Jerry Liu represented NYIPLA at the meeting, and the activity report is available here. As of late, the Council has recently elected a new leadership team to serve the next 2 – year term and is conjuring activities for the next two years. These activities include conducting an online program with the CNIPA in 2025 and exploring the possibility to either receive a delegation from the CNIPA or form a delegation to visit CNIPA in 2026. 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 secrets 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 2024 Fall One-Day CLE and presented a panel on the topic “AI and the Practice of Law: Ethical and Practical Issues of Using GenAI” The panel was made up of Industry Experts, in-house attorneys and outside counsel knowledgeable on the use of AI in Patent Drafting, Patent Licensing and Litigation. In addition, the panel spoke about the ethics of using GenAI in the legal field. The panel included Tim Campbell, Sr. Director of Commercial Product Management - Patent Intelligence, Clarivate, Hanna Madbak, Senior Director of IP Management, Adeia, Carla Sereny, Senior Legal Counsel - DX AI/ML, Adobe, Christopher A. Suarez, Partner, Steptoe and was moderated by our Trade Secret Co-Chair, Laura Chubb, Director, IP Litigation, Organon. 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: Benoit Quarmby and Lindsey Utrata board liaison: Deirdre Clarke The US Trademark Law & Practice Committee has approximately 10-20 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. In the coming months, we look forward to welcoming guest speakers to our monthly calls to discuss hot topics in trademark law and developments affecting our members' business and client interests. This past term, the committee has been engaged in a number of activities on behalf of NYIPLA. Most notable, the committee held its annual half-day CLE, Hot Topics in Copyright & Trademark Law, which was graciously hosted at the New York office of Hughes Hubbard and Reed LLP. The program kicked off with keynote speaker, John L. Welch, Senior Counsel at Wolf, Greenfield & Sacks P.C. and the Founder and Publisher of the TTABlog, followed by updates from the Federal Trade Commission and an inside look at Digitial Millenium Copyright Act enforcement from the U.S. Customs and Border Protection. Attendees were treated to thought-provoking panels on the growing impact of AI in media, copyright myth-busting with practical dos and don'ts, as well as an overview of the National Advertising Division paried with engaging and interactive case studies. The program concluded with a deep dive into the rise of "dupes" in the fashion and cosmetics industries, followed by a post- program reception. Looking ahead, the Committee will also be presenting the first panel at the upcoming IP Transactions Bootcamp to be held in October. We continue to have monthly committee meetings and look forward to welcoming new and returning members this term. us Bar - European patent office liaison council Scope of the Committee: To facilitate discussion and communication between senior officials of the European Patent Office (EPO) and US intellectual property organizations that broadly represent the US user community. delegates: Laura Brutman and Jasmine De Cock The annual meeting of the US-Bar EPO Liaison Council took place on November 14-15, 2024 in Munich, Germany. The Council met with the Presiding Judge of the Unified Patent Court Local Division of Munich, the Deputy to the President of the Boards of Appeal, the Chair of the Legal Board of Appeal, the Deputy Chair of the enlarged Board of Appeal (EBoA), the Head of Legal Research Services, and judges from the Technical Board of Appeal. Discussion topics included the latest decisions of the EBoA, Artificial Intelligence, and the shared responsibility of the UPC and EBoA. According to the EPO, US applicants continue to account for 40% of all applicants, second only to EPC member states. EPO representatives provided updates on several key topics, including tips for US users to improve the quality of their EP patent applications, patent eligibility of inventions involving AI-generated subject-matter, Unitary Patent (UP) and the EPO’s services to users (such as the UP dashboard, new UP guidelines, and MyEPO services), referrals to the EBoA on claim interpretation of G1/24, and updates to the EPO Examination Guidelines. us Bar - japan patent office council delegates: Raymond Farrell and Jordan Garner 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 Linnea Cipriano, and Julie Bookbinder board liaison: Ashley Ross During the 2023-2024 year, the Women in IP Law (“WIIP”) Committee held monthly virtual meetings, discussing current updates in the experience of women in the law or exchanging helpful tips for practice management and associate development. In the spring, the WIIP Committee collaborated with the Young Lawyers Committee (“YLC”) for a virtual event titled “Women in Leadership.” In the summer, the WIIP Committee collaborated with the YLC for a virtual event titled “YLC and WIIP Committee Summer Associate and Associate ‘How To’ Roundtable.” Throughout the year, the WIIP Committee has welcomed law students to monthly meetings to foster connections with women practicing IP law in NY. 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: Stephanie Casino, Lindsey Fleischman, and Audrey Trace board liaison: Abigail Struthers Throughout the 2024-2025 year, the Young Lawyers Committee (YLC) continued to support the mission of the NYIPLA by organizing relevant and inclusive programming for law students and early-career professionals in the IP field. The YLC hosted numerous in-person and online events aimed at career development, community-building, and mentorship. These events were organized both independently and in collaboration with other NYIPLA committees and reflect the YLC’s ongoing commitment to serving as the welcoming entry point to the NYIPLA organization and the broader IP legal community. The year began with participation in the NYIPLA’s Trademark and Copyright Half-Day CLE in June and a Women’s Committee Round Table panel event in July. In September, the YLC co-hosted a USPTO Career Panel which featured insights from government practitioners. In October, the YLC held its popular annual Fall Happy Hour, and hosted the second-annual “Mock Interview and Resume Review Workshop”, in collaboration with the Associate Advisory Counsel. The events had high in-person attendance and drew students from 11 different law schools. The YLC continued its cross-committee collaboration efforts throughout the year. In November, the YLC assisted with the NYIPLA’s All-Day Patent CLE, and hosted a discussion on the junior-to-mid-level associate transition, which offered insights from mid-level IP attorneys. In December, the YLC and Associate Advisory Counsel co-hosted a mini-golf social offering a casual networking opportunity for young lawyers and practitioners. In the new year, the YLC assisted the Entertainment, Sports & Social Media Committee with its Trademark Infringement CLE in January, hosted a “Day in the Life as In-House Counsel” Panel in February, and hosted the annual Spring Happy Hour Social in March. The YLC looks forward to building on the momentum of the past year, continuing to attract new members and engage current members across the NYIPLA community.
2025 NYIPLEF Scholarship
In recognition of her outstanding efforts as an NYIPLA member, the 2025 Volunteer of the Year Award is presented to Lynn M. Russo, associate at Hughes Hubbard & Reed and co-chair of the Programs Committee.
Kayla Flanders is a 2L student at the Benjamin N. Cardozo School of Law and a registered patent agent. She serves as the Senior Notes Editor of the Cardozo Arts & Entertainment Law Journal, where her scholarly work focuses on the patent regulation of gene-editing technologies. Her academic interests center on IP law, particularly patents and copyright. Kayla was selected as a 2024 Akin Gump Intellectual Property Scholar and has worked with Volunteer Lawyers for the Arts, where she helped facilitate the USPTO Patent Pro Bono Program. At Cardozo, she has served as Co-President of the Women’s Law Initiative and Co-Patent Chair of the IP Law Society.
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 Thomas L. Giannetti, Administrative Patent Judge, USPTO.
Lifetime Achievement Award
Community Service Award
103rd Annual Dinner in Honor of the Federal Judiciary Friday, March 21, 2025 The New York Intellectual Property Law Association held its 103rd Annual Dinner in Honor of the Federal Judiciary on March 21, 2025, at the New York Hilton Midtown Hotel. President Patrice P. Jean welcomed the honored guests, members of the NYIPLA, and their guests. The Association’s Twenty-Third Annual Outstanding Public Service Award was presented to the Honorable Jimmie V. Reyna, Circuit Judge of the United States Court of Appeals for the Federal Circuit. The Keynote address was given by the Honorable Esther Salas, District Judge of the United States District Court, District of New Jersey.
EVENTS
Trade Secrets Committee Meeting - Survey of Recent Academic Research in Trade Secret Law May 9, 2024 On Thursday, May 9, 2024, from 10:30 am to 11:30 am, attendees joined the Trade Secrets Committee as they discussed a survey of recent academic research in trade secret law from Professor Saurabh Vishnubhakat of Cardozo Law, including his research on trade secret remedies. Professor Vishnubhakat also provided an update on empirical data surrounding the DTSA, including district court and appellate filing trends. PTAB Committee Meeting: Notice of Proposed Rulemaking for the PTAB May 21, 2024 The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Notice of Proposed Rulemaking for the PTAB on May 21, 2024. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. This panel featured frequently asked questions about the appeals, AIA trials, and hearings. Speakers: Hon. Michael Tierney, Vice Chief Administrative Patent Judge, USPTO Hon. James Worth, Administrative Patent Judge, USPTO Connecting at Conferences: 25 Tips June 12, 2024 On June 12, 2024, attendees joined NYIPLA for a Zoom webinar featuring Janet L. Falk, Ph.D. Conference season is in full swing. Whether you are a seasoned networker, speaker and attendee, or you are new to the conference circuit, master these actionable steps to make the most of your attendance at a bar association meeting or an industry event. Learn how to connect with speakers and attendees in advance of the conference. Bring business cards and a small giveaway branded with your law firm's name. Engage in casual conversations over meals and between sessions. Take selfie photos with small groups that you will soon post on social media. Send a follow-up email within a few days after the event and schedule a reminder for a future date to re-connect. You've had a conversation, exchanged contact information and perhaps provided helpful materials with the speakers, attendees and conference organizers. Following these tips will help you establish and deepen these new relationships with colleagues, clients and potential referral sources. Topics to be addressed include: Prepare before the conference: Visit the event/organization website and contact the speakers and attendees in advance During the conference: Focus on the panelists and attendees, not on your email or members of your firm. Be deliberate and spontaneous in your networking conversations, always providing value. After the conference: Follow-up by email and send materials promised and social media connection requests as appropriate, using the template provided. Hot Topics In Trademark & Copyright Law June 26, 2024 On June 26, 2024, NYIPLA presented its annual Hot Topics in Trademark & Copyright Law half-day CLE program at the midtown office of King & Spalding LLP. Sessions included: Update from the Trademark, Trial and Appeal Board - Hon. Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board (TTAB) Report from the Front Lines of AI - Joshua Weigensberg, Partner, Pryor Cashman LLP (Moderator); Joshua Savitt, Director and Counsel, American Express; Michael Adelman, Counsel, Dow Jones; and Henry Behnen, Vice President, Paramount Update from the Federal Trade Commission - Tiffany Woo, Attorney, Federal Trade Commission Update from the Copyright Office - Miriam Lord, Associate Register of Copyrights and Director of Public Information and Education, U.S. Copyright Office How to Protect Fashion Through IP - Douglas A. Miro, Partner, Amster, Rothstein & Ebenstein LLP (Moderator); Felicity Kohn, Partner, Pryor Cashman LLP; and Richard S. Mandaro, Partner, Amster, Rothstein & Ebenstein LLP Anti-Counterfeiting Panel - Kathleen E. McCarthy, Partner, King & Spalding LLP (Moderator); Heather J. McDonald, Of Counsel, Baker & Hostetler LLP; Alaina van Horn, Chief, Intellectual Property Enforcement Branch, U.S. Customs and Border Protection; and Cheryl Wang, Attorney Brand Restrictions: More than Tobacco! What Brand Owners Need to Know in the U.S. and Around the World - Andrea Pitts, Partner, Gowling WLG and Thilo Agthe, Partner, Wuersch & Gering LLP YLC & WIIP Committee Summer Associate and Associate "How To" Roundtable July 12, 2024 The Women in IP Law Committee and the Young Lawyers Committee teamed up for the WIIP monthly meeting on July 12, 2024 at 1:00 pm ET to host a young lawyer and summer associate roundtable event. Attendees split up in breakout sessions to discuss various “how to’s” e.g., network, know if your firm is right for you, identify a mentor, etc. and to answer any questions that young attorneys and summer associates have about the legal field. Participants were encouraged to come prepared to ask questions and participate in the discussion! 8th Annual Summer Associate Moot Court Argument CLE Program July 16, 2024 This year's Summer Associate Moot Court Argument, which took place at the Thurgood Marshall U.S. Courthouse on July 16, 2024, was centered on AI and copyright fair use defense factors, along with stature of limitations and change of venue issues. Participating firms, which included Desmarais LLP; Goodwin Procter LLP; Hughes Hubbard & Reed LLP; Venable LLP, presented an oral argument on behalf of the interested parties. The Judges heard the argument, retired to conference the case, and returned to the bench with their comments. They also answered questions related to the mock argument and their deliberations in the case conference. The program was followed by a Networking Reception from 7:00 PM - 8:00 PM. The Judges' Panel consisted of the following: Hon. Ramon E. Reyes, Jr., U.S. District Court, Eastern District of New York, sitting by designation Hon. J. Paul Oetken, U.S. District Court, Southern District of New York, sitting by designation Hon. Elizabeth S. Stong, U.S. Bankruptcy Court, Eastern District of New York, sitting by designation Hon. Roslynn R. Mauskopf, Former Chief Judge of U.S. District Court, Eastern District of New York and Former Director of the Administrative Office of the U.S. Courts, Current Partner, Bracewell LLP, sitting by designation PTAB Committee Meeting: LEAP (Legal Education and Advancement Program) July 23, 2024 On July 23, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding LEAP (Legal Education and Advancement Program).This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Speaker: Hon. Janet Gongola, Vice Chief Judge for Engagement, USPTO Hon. Ryan Flax, Lead Administrative Patent Judge, USPTO Hon. Cynthia Hardman, Administrative Patent Judge, USPTO LEAP Graduates: Elana Araj, Greenberg Traurig Kaitlin Farrell, Haug Partners Eric Greenwald, Merck & Co. Patent Litigation Committee Meeting - Discovery in a Disappearing World August 1, 2024 Attendees were invited to join the Patent Litigation Committee meeting on Thursday, August 1 from 12:00 pm to 1:00 pm. Transperfect Legal presented a CLE on "Discovery in a Disappearing World" that offered insights into defensible mobile device acquisition, mobile device legal review options, and ephemeral messaging applications. Featured Speakers: Staci Rosen, Senior Director, Business Development, TransPerfect Legal Megan Goltz, Digital Forensics Manager, TransPerfect Legal Brandon Rimnac, Director, Consulting Services, TransPerfect Legal Daniel Meyers, President, Consulting and Information Governance, TransPerfect Legal PTAB Committee Meeting: Motions Practice at PTAB August 20, 2024 On August 20, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Motions Practice at PTAB. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Featured Speakers: Hon. Grace Karaffa Obermann, Lead Administrative Patent Judge, USPTO Hon. Thomas L. Giannetti, Lead Administrative Patent Judge, USPTO Fireside Chat with the USPTO’s Office of Patent Legal Administration: Design Patent Protection for Graphical User Interfaces (GUIs) August 22, 2024 The Patent Law & Practice Committee and the Design Patent Committee of the New York Intellectual Property Law Association (NYIPLA) had a discussion with the USPTO's Office of Patent Legal Administration regarding design patent protection for graphical user interfaces (GUIs) including subject regulations, tips for best practices, and how emerging technologies might fit within this framework. This interactive event was hosted by NYIPLA Design Patent Committee Co-Chairs Brendan O'Dea and Ryan Schneer and Patent Law & Practice Committee Co-Chairs Clint Mehall and Joy Goudie. Featured Speakers: Karen M. Young, Acting Deputy Commissioners for Patents, USPTO Erin M. Harriman, Senior Legal Advisor, USPTO Office of Patent Legal Administration Nicole D. Haines, Senior Legal Advisor, USPTO Office of Patent Legal Administration PTAB Committee Meeting: Best Practices before the PTAB September 17, 2024 The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Best Practices before the PTAB on September 17, 2024. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Featured Speaker: Clint Mehall, Partner, Davidson Kappel LLC Trade Secrets Committee Meeting: Litigating DNA Trade Secrecy September 19, 2024 Are DNA sequences protectable by trade secrecy? If so, recent advances in DNA sequencing technology have the potential to destroy trade secrecy protection for certain kinds of DNA sequence data. On September 19, 2024, Jacob S. Sherkow, Professor of Law, University of Illinois College of Law, reviewed the technology behind these advances, cases that have focused on DNA trade secrecy, and provide some practical suggestions for litigating DNA trade secrecy cases in our new, genomic age. So You Want to Work at the USPTO? September 19, 2024 On September 19, 2024, there was a panel discussion of present and former USPTO legal professionals that is geared towards law students and IP practitioners with an interest in working at the agency. Panelists shared what led them to the USPTO and their experiences. Featured Speakers: Hon. Melanye K. Johnson, Administrative Trademark Judge, USPTO Trademark Trial and Appeal Board Katie McKnight, former Interlocutory Attorney, USPTO Trademark Trial and Appeal Board; current counsel, Markery Law, Professorial Lecturer in Law, The George Washington University School of Law Scott Sisun, former Trademark Examining Attorney, USPTO; current Attorney - Founder, Sisun Law Jennifer Rea Deneault, former patent examiner, USPTO; current partner, Groombridge, Wu, Baughman & Stone LLP Patent Law & Practice Committee Meeting: Unitary Patent & Unified Patent Court September 20, 2024 The program covered the basics of the Unitary Patent, comparing it with the preexisting European patent options. The panel discussed factors and statistics that influence the decision to register a Unitary Patent, provide an overview of the differences between litigating under the Unified Patent Court (UPC) versus individual countries, and share insights from recent UPC case law with practical takeaways for drafting and prosecuting patents. Speakers: Damien Colombie, Partner, Lavoix Camille Pecnard, Partner, Lavoix IP Transactions Bootcamp October 8 - 22, 2024 NYIPLA hosted the 2024 IP Transactions Bootcamp, which was geared towards junior and mid-level associates. This year's program was held virtually, where attendees learned practical skills from experienced attorneys and in-house counsel. On October 8, 2024, the following topics were discussed: Copyright, Trademarks & Fashion A review of issues unique to nuances of trademark and copyright law to keep in mind when negotiating agreements such as licenses, assignments and co-branding joint venture deals. Speakers: Kathleen E. McCarthy, Partner, King & Spalding LLP Lauren B. Emerson, Partner, Leason Ellis LLP David Eshmoili, General Counsel & Corporate Secretary, David Yurman Cheryl Wang, Attorney (Moderator) The Landscape of Name, Image & Likeness in College Sports and Beyond Speakers: Lachauna Edwards, Business, Sports & Entertainment Lawyer, Lachauna Edwards Law, LLC Ahmand Johnson, Partner, Greenspoon Marder LLP A.J. Rudowitz, Associate, Duane Morris LLP On the second day (October 15, 2024) of the IP Transactions Bootcamp, we went over the following: Patents Review of common terms, conditions and issues that arise in patent related IP transactions (joint NDAs, settlements, etc.) Speakers: Jenny Lee, Partner, Haug Partners LLP David Bomzer, Partner, Cantor Colburn LLP Andrew Roper, Partner, Haug Partners LLP Andrew Chien, Head of Intellectual Property of Diagnostics, Siemens Healthineers Thomas J. Kowalski, Partner, Duane Morris LLP Troy LaMontagne, Counsel - Technology Transactions, Axiom Legal Heidi Lunasin, Special Counsel, Duane Morris LLP Nicole Woods, Assistant General Patent Counsel, Eli Lilly and Company Government & University Review of prominent issues relating to university and government contracts. Speakers: Jennifer Mandina, Senior Contracts Manager, University at Buffalo Ankur Parekh, Director & Senior IP Counsel, RTX Richard F. Kurz, Partner, Haug Partners LLP Ethics Speaker: Eugene Gormakh, Associate, Law Offices of Michael S. Ross On the final day (October 22, 2024), attendees had the opportunity to learn about the following topics: Mergers & Acquisitions, Due Diligence Speakers: Briana Barron, VP, Intellectual Property, Arcus Biosciences Timothy McNamara, VP of Legal in the Technology Sourcing and Intellectual Property, Goldman Sachs Eric Greenwald, Director, Merck & Co., Inc. Christopher Loh, Partner, Venable LLP Jonathan Berschadsky, Partner, Merchant & Gould P.C. AI/Software/Cybersecurity/Data Speakers: Mario F. Ayoub, Associate, Bond, Schoeneck & King PLLC Jonathan Berschadsky, Partner, Merchant & Gould P.C. Matthew S. Makover, Partner, Willkie Farr & Gallagher LLP Danny Spencer, Associate, Freshfields Bruckhaus Deringer LLP ADA Guidelines Speaker: Jessica Lipson, Partner, Morrison Cohen LLP Young Lawyers Committee Happy Hour October 9, 2024 The NYIPLA Young Lawyers Committee had an evening of networking, food, and drinks! This social event was a fantastic opportunity to connect with fellow young lawyers and experienced attorneys. Whether you're a member or a non-member, all are welcome to participate. Attendees enjoyed two complimentary drinks and indulged in appetizers while engaging in one-on-one conversations with seasoned attorneys who can provide valuable insights into their practices. PTAB Committee Meeting: Director Review Final Rules October 15, 2024 The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Director Review Final Rules. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Featured Speakers: Thomas Krause, PTAB Director Review Executive, USPTO Hon. James Worth, Senior Lead Administrative Patent Judge, USPTO Mock Interviews & Resume Review Workshop October 23, 2024 The Young Lawyers Committee and the Associate Advisory Counsel of NYIPLA invited our student and active 3- years members to attend a mock interview and resume review workshop on October 23, 2024 at the offices of Groombridge, Wu, Baughman & Stone LLP. The event included three mock interviews and resume reviews with current practicing attorneys, followed by an opportunity to network with the attorneys in attendance. One-Day Patent CLE Seminar November 7, 2024 The NYIPLA held the One-Day Patent CLE Seminar at Hughes Hubbard & Reed LLP. Topics included: AI IP Guidelines IP & Antitrust with the FTC Hot Issues and Appeals: Regenxbio, Post-Amgen 112 and Cellect/Allergan Pending and Proposed IP Legislation Best Practices in Drafting ADR Clauses in IP Contexts Legal Changes to Design Patents Post-LKQ Decision AI and the Practice of Law: Ethical and Practical Issues of Using GenAI Columbia Science and Technology Law Review Fall Symposium 2024 November 8, 2024 On Friday, November 8, Columbia Law School’s Science, Technology & Intellectual Property Law (STIPL) held their annual symposium, “Judging Science.” This year’s symposium explored how the judiciary currently assesses and incorporates scientific and expert testimony in the US legal system, and their panel of leading legal scholars discussed potential improvements to make scientific evidence more reliable and understandable in court proceedings. The Symposium featured a wide range of viewpoints on the state of scientific evidence in the US judicial system. Scholars who contributed their expertise and commentary include: Prof. Edward K. Cheng of Vanderbilt Law School, Prof. Edith Beerdsen of Temple University Beasley School of Law, Prof. Valerie Hans of Cornell Law School, Prof. Maura Grossman of the University of Waterloo, Honorable Paul W. Grimm, Prof. David Faigman of UC Law San Francisco, Prof. Shari Diamond of Northwestern University School of Law, and Prof. Richard Lempert of the University of Michigan Law School. November YLC Meeting: Transition from Junior to Mid-Level Associate November 12, 2024 The YLC Meeting included a panel discussion on the transition from junior to mid-level associate. The below panelists shared their experiences and strategies for navigating this career stage: Featured Speakers: Jennifer Rea Deneault, Partner, Groombridge, Wu, Baughman & Stone LLP Sam Eichner, Counsel, Pillsbury Winthrop Shaw Pittman LLP Eric Greenwald, Director, Merck Justin Fleischacker, Associate, Paul Hastings LLP Nicholas Forgione, IP Counsel, Authentic Brands Group PTAB Committee Meeting: MTA Final Rules & Practitioner Expansion Final Rules November 19, 2024 The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding MTA Final Rules & Practitioner Expansion Final Rules. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, they welcomed their featured guests: Hon. Miriam Quinn, Acting Vice Chief Administrative Patent Judge, USPTO Hon. Scott Moore, Acting Senior Lead Administrative Patent Judge, USPTO Hon. Michael Cygan, Administrative Patent Judge, USPTO PTAB Committee Meeting: Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court December 17, 2024 The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court. Chief Judge Markey at the founding of the Federal Circuit made a promise to the bar: "In our Court there will be an opinion explaining enough to tell you what the law is in every case. ***We do not just render a one-worded decision and go away." Yet, for at least the past decade, over 35% of all appeals and over 45% of appeals from the USPTO are decided by the Federal Circuit under its Local Rule 36 with a single word "affirmed", and no explanation of the basis or rationale therefor. Both Local Rule 36 and its implementation by the Federal Circuit are out-of-step with the other circuit courts, as well as their own review process of district court and PTAB decisions. A pair of petitions for certiorari are pending before the Supreme Court to take on the issue Island and ParkerVision, which are seeking SCOTUS review in this practice. ParkerVision and Island together provide an ideal vehicle for this Court to evaluate the issue of summary affirmances by Court of Appeals generally, and the Federal Circuit's Local Rule 36 in particular, both in the context of the general appeal statute of 28 U.S.C. § 1291 (Island), as well as with respect of the specific appellate statue for appeals from the USPTO to the Federal Circuit under 35 U.S.C § 144 (ParkerVision). Learn more about Local Rule 36 practice, the objections raised in Island and ParkerVision. Speakers: Island's team, Charley Macedo, David Goldberg, John Dellaportas and Jamie Zipper presented. Counsel for ParkerVision's team, Amit Vora and Ronald Daignault spoke. Amicus counsel Robert Rando and Charlie Miller joined the discussion. Counsel for the Amicus Brief in ParkerVision on behalf of the D.C. Bar Association, William Atkins and Matthew Grillo participated. Counsel for the Amicus Brief in Island on behalf of the Boston Intellectual Property Law Association, Kia Freeman and Matthew van Eman, joined. Co-Chair Ken Adamo and Board Liaison David Bomzer was present to host and facilitate discussion. NYIPLEF's 6th Annual Diversity Scholarship Event January 8, 2025 On January 8, 2025, the New York Intellectual Property Law Education Foundation (NYIPLEF) held their 6th Annual Diversity Scholarship Event at Greenberg Traurig LLP. The CLE presentation had a distinguished panel of in-house counsel and was moderated by Jing Kong, the 2024 NYIPLEF Hon. Giles S. Rich Scholarship Recipient. Panelists included Elaine Drager, Bell Labs Solutions, Strategic Partnerships and Technology Leadership Office Lead Counsel, Nokia Bell Labs; Gloria Fuentes, Vice President & Associate General Counsel, Patent Litigations & IP Transactions, Bristol Myers Squibb; and Diana Santos, Senior Counsel, IBM Consulting, Global Generative AI Lead, IBM Corporation. January Entertainment, Sports & Social Media Committee Meeting: Penn State v. Vintage Brand - Trademark Infringement and Retro Merchandise January 15, 2025 On January 15, 2025, the Entertainment, Sports & Social Media Committee held a meeting on Penn State v. Vintage Brand - Trademark Infringement and Retro Merchandise. Notwithstanding a recent jury verdict in favor of Penn State in a trademark infringement matter, pretrial rulings by the trial court in that matter have brought into question whether ostensibly settled law for decades can now be undone. Can products bearing trademarks of their own now be sold without a license from such owner? Featured Speakers: Robert L. Raskopf, Senior Counsel, Bilzin Sumberg LLP Donald Reinhard, Partner, Kasowitz Benson Torres LLP Todd Anten, Partner, Quinn Emanuel Urquhart & Sullivan, LLP PTAB Committee Meeting: PREVAIL Act - Insights in PTAB Reform from the Last Congress January 21, 2025 While we are in the process of an administration change, and await the appointment of the new Commerce Secretary and Deputy Undersecretary for the Patent and Trademark Office, the NYIPLA PTAB Committee in conjunction with the LAC Committee thought it would be useful to look at the recent effort of PTAB Reform as introduced in the last Congress by Senator Coons - the PREVAIL Act. On Tuesday, January 21, 2025 at 4:00pm the PTAB and LAC Committees had a joint webinar for the NYIPLA members. PTAB Committee Co-Chairs, Charley Macedo and Kenneth Adamo, were joined by LAC Committee Co-Chair, Anthony Lo Cicero, to review the latest version of the PREVAIL Act and discussed the areas where potential reform was suggested. Zoom Out with NYIPLA! January 29, 2025 On January 29, 2025, attendees joined a refreshing networking conversation with NYIPLA board members, law firm associates and law students before the 103rd Annual Judges’ Dinner. A free, no-commitments Zoom forum on the year that was 2024, moderated by Associate Advisory Council members. Attendees had access to an array of accomplished attorneys, many of whom shared their successes from 2024. Speakers: James Breen, Associate, Goodwin Procter LLP Nicholas Forgione, Counsel, Authentic Brands Group LLC Eric Greenwald, Director, Merck Christine-Marie Lauture, Senior IP Attorney, EOS Worldwide Jennifer Rea Deneault, Partner, Groombridge, Wu, Baughman & Stone LLP Patent Law & Practice Committee Meeting: The Restore Act and the Prevail Act - Current Status and Future Outlook February 4, 2025 Attendees joined the Patent Law & Practice Group for a remote session featuring John Lee, Chief Counsel for Intellectual Property, U.S. House of Representatives, Committee on the Judiciary, on February 4 at 12:00 PM. John discussed the current and future status of the Restore and Prevail Act, offering valuable insights into its implications for the patent landscape. Biologics & Biosimilars: Hot Topics February 5, 2025 Attendees joined NYIPLA for this year's Biologics & Biosimilars program on Wednesday, February 5 at the offices of Orrick, Herrington & Sutcliffe LLP. Speakers included: Eric Choi, IP Litigation, MSN Pharmaceuticals Inc. Larry Coury, Senior Vice President, Litigation and Dispute Resolution, Regeneron Denise DeFranco, Global Head, IP Litigation, Johnson & Johnson David Dow, Director, Patent and Regulatory Counsel, Boehringer Ingelheim Mira Mulvaney, Associate VP - Assistant General Patent Counsel, IP Litigation, Eli Lilly and Company Colman Ragan, Vice President & General Counsel, North America IP Litigation, Teva Pharmaceuticals Irena Royzman, Partner, Orrick, Herrington & Sutcliffe LLP (Moderator) Avoiding Common Rejections in Design Patent Applications February 13, 2025 On February 13, 2025, attendees joined the Design Patent Committee of the New York Intellectual Property Law Association (NYIPLA) for a discussion with the USPTO's Technology Center 2900 regarding the most common rejections seen in design patent applications from their perspective, and tips on how to avoid them. This interactive event was hosted by NYIPLA Design Patent Committee Co-Chairs Brendan O'Dea and Ryan Schneer. Featured Speaker: Garth Rademaker, Design Practice Specialist, USPTO PTAB Committee Meeting: Update on SCOTUS Petitions on FRCP 56 and Rule 36 Judgments at the Federal Circuit February 18, 2025 The Supreme Court has been presented with a series of petitions that address whether the patent law should be treated like any other area of civil litigation – Does it need to follow the same rules of Summary Judgment under Rule 56? Can the lower courts ignore factual disputes presented by the parties in favor of its own fact finding on patent-eligibility decisions? Does the Federal Circuit have to provide some basis for its judgment, like other appellate courts, when it grants a Rule 36 Judgment affirming a lower court or PTAB decision? There are now four active petitions for certiorari raising one or both of these decisions: Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461 (raising both issues in the context of an appeal under 28 U.S.C. 1391) ParkerVision, Inc. v. TCL Industries Holdings Co., Ltd., No. 24-518 (raising Rule 36 Judgment issue in the context of an appeal from the PTAB under 35 U.S.C. 144) Harris Brumfield v. IBG LLC, No. 24-764 (raising Rule 56 (and related Rule 12(b)(6) issues) Audio Evolution Diagnostics v. United States, No. 24-806 (raising Rule 36 Judgment issue also in context of an appeal under 28 U.S.C. 1391) In this follow up to our December 2024 PTAB Committee meeting on “Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court”, we provided an update on the scope and status of the various petitions, and commentary on these issues. PTAB Committee Co-Chairs, Charley Macedo and Kenneth Adamo, was joined by Amicus Briefs Committee Co-Chair, Paul Coletti. A Day in the Life as In-House Counsel February 25, 2025 On February 25, 2025, the Young Lawyers Committee invited attendees to a panel discussion on the transition from law firm associate to in-house counsel and the experience of being in-house. The below panelists shared their experiences and strategies for navigating this career stage: Lindsey Fleischman, Counsel, Commercial Legal & Business Affairs, WPP Nicholas Forgione, IP Counsel, Authentic Brands Group LLC Eric Greenwald, Director, Merck & Co, Inc. Gabriel J. McCool, Counsel, Wolf, Greenfield & Sacks, P.C.; Former VP of Legal and IP, ReNAgade Therapeutics, Cambridge MA Ashley Valdes, Assistant General Counsel, Warby Parker Young Lawyers Committee Happy Hour March 22, 2025 Attendees joined the NYIPLA Young Lawyers Committee on March 12, 2025 for an evening of networking, food, and drinks! This social event was a fantastic opportunity to connect with fellow young lawyers and experienced attorneys. Whether you're a member or a non-member, all were welcome to participate. Attendees enjoyed two complimentary drinks and indulged in appetizers while engaging in one-on-one conversations with seasoned attorneys who provided valuable insights into their practices. PTAB Committee Meeting: USPTO Rescinds Fintiv Rules from Prior Administration March 18, 2025 Attendees joined the NYIPLA PTAB Committee on Tuesday, March 18, 2025 at 4:00 p.m. ET via zoom for its March 2025 PTAB Committee Meeting. At this meeting, they discussed “USPTO Rescinds Fintiv Rules From Prior Administration: Discretionary Denials at the PTAB Under the Trump Administration”. Co-chairs Charles R. Macedo and Kenneth R. Adamo lead a discussion to address the recent announcement by the USPTO that it has rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum). The USPTO has advised, “Parties to post-grant proceedings should refer to Patent Trial and Appeal Board (PTAB) precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).” The USPTO also announced that “To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.” NYIPLA "Day of Dinner" Luncheon CLE - Effects of U.S. IP Jurisprudence on the Modern American Economy March 21, 2025 The panel discussed the impact on the American economy of various IP-related legislative initiatives, Supreme Court and Federal Circuit decisions (or the lack thereof), as well as Executive Branch agency actions. The program began with opening remarks from Coke Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director, USPTO. It was then followed by a panel discussion on the “Effects of U.S. IP Jurisprudence on the Modern American Economy” moderated by NYIPLA Immediate Past President, Rob Rando, and the below panel of distinguished speakers: Honorable Leonard P. Stark, Circuit Judge, United States Court of Appeals for the Federal Circuit Peter-Anthony Pappas, Director of IP Policy, Senate Judiciary Committee, IP Subcommittee (Senator Tillis) Chris Israel, Senior Partner, ACG Advocacy NYIPLA Diverse Careers in IP Law March 25, 2025 Have you ever wondered what opportunities are available in today’s intellectual property marketplace? The panelists addressed these topics and more. On March 25, 2025 at Columbia School of Law, the panel discussed how you can navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Refreshments, including drinks and light snacks, was served. Panelists: Patrice P. Jean, Partner, Hughes Hubbard & Reed LLP Kathleen E. McCarthy, Partner, King & Spalding LLP William J. Thomashower, Of Counsel, Pryor Cashman LLP Have A Patent Infringement Complaint? Find Out What To Do After Service April 3, 2025 The NYIPLA Sharpen Your Skills Series was pleased to present: Got a patent infringement complaint? There was a lively discussion on what to do after served with a patent infringement complaint. The event was on Thursday, April 3 from 6:00-7:00pm at the offices of Groombridge, Wu, Baughman & Stone LLP (565 Fifth Avenue, Suite 2900, New York, NY 10017). Light bites and refreshments was provided as well. Speakers: Mark J. Abate, Partner, Goodwin Procter LLP Mark A. Baghdassarian, Partner, Kramer Levin Naftalis & Frankel LLP Nangah Tabah, Counsel, IBM Jacob Whitt, Vice President, IP, Eagle Pharmaceuticals, Inc. Moderator: Ananya Pillutla, Associate, Groombridge, Wu, Baughman & Stone LLP AABANY IP Committee x NYIPLA Young Lawyers Committee Presents: Board Game Night April 9, 2025 On April 9, 2025, there was an evening of fun and friendly competition at Board Games Night, co-hosted by the NYIPLA Young Lawyer’s Committee and the Asian American Bar Association of New York IP Committee. The event brought together members from both organizations for a night of casual board games. Food and refreshments was provided. 2025 Sharpen Your Skills Series - M&A IP Due Diligence March 21, 2025 The NYIPLA Sharpen Your Skills Series was pleased to present: M&A IP DUE DILIGENCE program, designed for junior and mid-level associates to develop hands-on due diligence skills. This virtual program provided practical training from experienced attorneys, covering key aspects of IP due diligence in M&A, including identifying risks, assessing IP ownership and encumbrances, and evaluating license agreements. Attendees earned skills CLE credit and participated in interactive exercises, including a mock M&A transaction and data room analysis. Speakers: Jonathan Berschadsky, Partner, Merchant & Gould P.C. Patrick K. McClay, Partner, Baker Botts LLP PTAB Committee Meeting: Revamped Director Review Under the New Administration April 15, 2025 Attendees joined the NYIPLA PTAB Committee on Tuesday, April 15, 2025 at 4:00 p.m. ET via zoom for its April 2025 PTAB Committee Meeting. At this meeting, they discussed “Revamped Director Review Under the New Administration”. Since the new administration took office in January, we have seen a series of new changes in policies and procedures at the U.S. Patent and Trademark Office and throughout the Federal Government. In this session, we focused on the new ranges of procedures involving Director Review, and the new procedure where the Acting Director will take over responsibility in the first instance for the briefing and determination of whether to deny review under discretionary factors. Co-Chairs Charley Macedo and Ken Adamo lead the discussion and reviewed the Director Review decisions since the new administration took over, and the new changes in the policy and procedures as impacting the PTAB. Hot Topics in IP Cases: Litigation Funding April 16, 2025 On Wednesday, April 16, NYIPLA had a litigation funding program at the offices of Orrick, Herrington & Sutcliffe LLP. Speakers: Hon. Jose L. Linares (Ret.), Chief Judge, United States District Court for the District of New Jersey Denise DeFranco, Global Head, IP Litigation, Johnson & Johnson Joshua Harris, Director, Burford Capital LLC Chris Israel, Senior Partner, ACG Advocacy Moderator: Irena Royzman, Partner, Orrick, Herrington & Sutcliffe LLP Cutting-Edge Developments in AI Litigation April 29, 2025 On April 29, 2025, litigators discussed the most recent action in AI-related litigation, focusing on copyrights and the recent decision in Thomson Reuters v. Ross Intelligence. Speakers: Mark Doerr, Partner, Patrick Doerr PLLC Josh Weigensberg, Partner, Pryor Cashman LLP 2025 Sharpen Your Skills Series - Patent Drafting and Prosecution April 30, 2025 This program was designed for junior and mid-level associates to create a lively discussion on best practices in a patent drafting and prosecution. This program provided practical advice from experienced attorneys, covering key aspects of patent drafting and prosecution, including invention disclosure/harvesting, drafting techniques, AI drafting tools, Office Action response strategies, examiner interviews, appeals and continuations. Speakers: Clint Mehall, Partner, Davidson Kappel LLC Tom Satagaj, Principal Counsel, ZT Systems Brittany Penn, Associate, Kramer Levin Naftalis & Frankel LLP
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