2023-2024
www.nyipla.org
ASSOCIATION ANNUAL REVIEW
green booklet
NYIPLA Board of Directors ................................................................................................................ 2 Year in Review by Robert J. Rando .................................................................................................... 3-7 Annual Meeting ............................................................................................................................... 8-13 Committee Reports .......................................................................................................................... 14-21 Annual Report of the Treasurer ........................................................................................................ 22-23 102nd Annual Dinner in Honor of the Federal Judiciary ....................................................................... 24-27 Events ............................................................................................................................................. 28-40
Treasurer Jeffrey Coleman
By: Robert J. Rando, 2023 - 2024 NYIPLA President
Diana G. Santos
Jenny Lee
2023 - 2024 Board of Directors
Christopher Loh
Immediate Past President Heather M. Schneider
Mark Schildkraut
David Goldberg
2023 - 2024 Year in Review
President Robert J. Rando
It has truly been an honor and the highlight of my career 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 we as an organization have achieved. It is my great fortune 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. Not the least of which is our premiere event, the 102nd Annual Dinner in Honor of the Federal Judiciary on March 22nd, 2024 at the New York Hilton Midtown Hotel. I was privileged to host the Dinner and present the 22nd Annual Outstanding Public Service (“OPS”) Award to the Honorable Joseph F. Bianco, Circuit Judge of the United States Court of Appeals for the Second Circuit, in recognition of his unparalleled activity in public service. We also engaged a wonderful Keynote Speaker, Five for Fighting’s singer and songwriter, John Ondrasik, who not only provided an inspiring speech but also performed several of his hit songs. (For those of you that may have been unable to attend the Dinner, the text of my introduction for Judge Bianco and John Ondrasik, along with an excerpt of my Dinner remarks, is included at the end of this final report). The Association also reinstated the “Day of the Dinner” Luncheon CLE program. Honorable Christopher J. Burke, Magistrate Judge of the United States District Court for the District of Delaware, Honorable J. Rodney Gilstrap, Chief Judge of the United States District Court for the Eastern District of Texas, Honorable Rebecca R. Pallmeyer, Chief Judge for the United States District Court for the Northern District of Illinois, and moderator Robert M. Isackson, NYIPLA Past President and Partner at Leason Ellis LLP reviewed “The Effects of Recent and Pending IP Law Developments on Case Management.” They had a discussion of the practical impact of changes and trends in the IP field on management of district court proceedings. Topics for analysis included the interplay of parallel PTAB and district court proceedings, evolving Section 101 law, trends in Markman practice, increased reliance on trade secrets, Schedule A filings, and the use of litigation funding. Another great event, which has become a staple for NYIPLA, was the Seventh Annual NYIPLA Summer Associate Moot Court Program, which was held on July 12th, 2023 at the Thurgood Marshall U.S. Courthouse. The program included substantive law topics that were at the forefront of current trademark litigation based on a hypothetical case drawn from the Jack Daniel's Properties, Inc. v. VIP Products LLC case. Each participating firm (Goodwin Procter LLP, Greenspoon Marder LLP, Venable LLP, and Willkie Farr & Gallagher LLP) presented an oral argument on behalf of the interested parties. Hon. Colleen McMahon of the U.S. District Court, Southern District of New York, Hon. Edgardo Ramos of the U.S. District Court, Southern District of New York, and Hon. Elizabeth S. Stong of the U.S. Bankruptcy Court, Eastern District of New York, heard the argument, retired to conference the case, and returned to the bench with their comments. They provided practice guidance and answered many questions related to the mock argument and regarding their deliberations in the case conference. Another popular event was the NYIPLA Half-Day CLE Program on Hot Topics in Trademark and Copyright. The July event featured Honorable Karen Kuhlke, Administrative Trademark Judge, who provided updates from the Trademark, Trial, and Appeal Board; Up in Smoke: The Interplay between Celebrity Branding and Trademark; Artificial Intelligence; Update from the Copyright Office; SCOTUS on Trademarks & Copyrights - More Questions Than Answers; and Social Media & Influencers. During the fall, we had the always well-attended One Day Patent CLE Seminar. The full day of programming included a Fireside Chat with Chief Judge Scott R. Boalick, Patent Trial and Appeal Board (PTAB); Pending Patent Legislation: What You Need to Know; A Conversation with Drew Hirshfeld (Former USPTO Commissioner of Patents); Recent Supreme Court Decisions & Hot Issues; Professional Responsibility and Practice before the USPTO; Artificial Intelligence in Patents and in Practice; and What Every Multi-National Corporation Needs to Know About Trade Secrets. For this year’s Presidents Forum, we focused on having a discussion with U.S. intellectual property policy leaders. Panelists included Chris Israel, Senior Partner, ACG Advocacy; Sharon Israel, Chief Policy Officer and Director for International Affairs, USPTO; Stevan Mitchell, Director of the International Trade Administration's Office of Intellectual Property Rights (OIPR), U.S. Department of Commerce; and Maria Strong, Associate Register of Copyrights and Director of Policy and International Affairs, U.S. Copyright Office. Lastly, the peaceful transfer of power to our current outstanding President, Patrice Jean,was conducted at the Annual Meeting, which was held at The Union League Club on Wednesday, May 8th, 2024, which brought together innovators and professionals from the judiciary, academia, corporate counsel, and leaders in the IP community. We began with a CLE program on “New Landscape of Arbitration/Mediation in the Federal Court System,” which featured Hon. Leda Dunn Wettre, Magistrate Judge for the District Court of New Jersey; Hon. Roslynn R. Mauskopf (Ret.), Former Chief Judge of United States District Court for the Eastern District of New York and Former Director of the Administrative Office of the U.S. Courts, Partner at Bracewell LLP; Hon. Garrett E. Brown Jr.(Ret.), Former Chief Judge for the District Court of New Jersey, JAMS; and Moderator Patrick J. Murphy III, JAMS. We also held the annual election of the NYIPLA Officers and Board Members, in which Patrice Jean started off her presidency. Along with the establishment of new committees (some of which are thriving and others that will take time to build), and revamping of the NYIPLA website, the initiative which has provided an enormous amount of joy for me personally (as well as an enormous benefit for all future leaders of the NYIPLA), is the “Bridge to Future Leaders” podcast series. The series includes interviews with Past-Presidents, influential Association members and other leaders in the intellectual property field. I’ve had captivating conversations throughout the recording of this podcast, and had insightful discussions that bridge the past, present, and future of NYIPLA leadership and IP law. It is readily available on Spotify and the NYIPLA website, and I encourage our members to listen to it! As I close my final word as your NYIPLA President for 2023-2024, I once again want to thank my officers, board members, and committee chairs for their outstanding work and support enabling me to successfully accomplish many of the goals I set for my Presidency. Their hard work and dedication provided an easy pathway for us to achieve those goals. And of course, last but mostcertainly not least, I wish to thank Feikje and her staff at RRR Associates for all of their steadfast and outstanding work, without whom none of what we were able to accomplish together could have been possible. Thank you, Rob TEXT OF THE INTRODUCTORY REMARKS FOR THE 22ND OPS AWARD RECIPIENT, THE HONORABLE JOSEPH F. BIANCO: I am absolutely thrilled to present, on behalf of the NYIPLA, the Outstanding Public Service Award to Judge Bianco. I first met Judge Bianco in a hearing on a motion to compel arbitration that I was opposing, shortly after his appointment as a District Court Judge for the Eastern District of New York. When he entered the courtroom, before taking the bench, he came to the well to introduce himself to counsel and to shake our hands. He then took the bench and proceeded to tell us that, in light of his being a federal prosecutor most of his career, that he would need us to educate him about the substance in our civil case. I was struck by his humility and grace and I was also grateful for his reminder that, although we are bound as zealous advocates for our clients’ cause, our engagement with the court relies on civil collaboration and on educating the court about the law and the facts. As for the outcome of the hearing, while he acknowledged the “creative nature” of my argument, he compelled arbitration. Judge Bianco’s appointment to the Eastern District bench at the age of 39 was only one chapter in what has been an incredible career of public service over the last three decades. He was a federal prosecutor in the Southern District of New York for over eight years, rising to be Chief of the Organized Crime and Terrorism Unit. In that unit, he went from dismantling organized crime groups across New York City, including through the prosecution of the Acting Boss of the Luchese Crime Family, to participating in numerous terrorism investigations and prosecutions, which included the horrific attacks on 9/11. He then went down to Washington, D.C., as a Deputy Assistant Attorney General, overseeing the Department of Justice’s national counterterrorism efforts. As a district judge for 13 years, Judge Bianco presided over numerous complex civil and criminal cases, including those involving dozens of members of the MS-13 street gang, and was appointed to the Second Circuit in 2019. Over the years, I have gotten to know him and who he is, in other capacities, besides his work on cases. His favorite thing to do is to preside over naturalization ceremonies for new United States citizens, and he has administered the oath and welcomed thousands of new citizens in hundreds of ceremonies over the years. He also co-chairs the Second Circuit’s Justice For All civic education programs with Judge Victor Marrero. And as part of those extensive efforts across three states, he created an annual week-long mock trial “Justice Camp” for high school students and has personally hosted over 400 field trips at the courthouse for Long Island schools since becoming a judge. Judge Bianco further contributes to legal education by teaching two courses at his alma mater, Columbia Law School. He also somehow has time to serve as a Deacon for the Catholic Church on Long Island, including preaching at Mass every Sunday. Whether it is inside the courtroom or outside the courtroom, it is crystal clear to me that the Honorable Joseph F. Bianco epitomizes, and he is the perfect embodiment for whom the NYIPLA Outstanding Public Service Award is intended to honor. Judge, it is truly my honor and privilege to present this award to you. TEXT OF THE INTRODUCTORY REMARKS FOR OUR KEYNOTE SPEAKER, FIVE FOR FIGHTING’S JOHN ONDRASIK: Everyone, I hope you enjoyed your dinner. Now is the moment you’ve all been waiting for. His biography is in the booklet and in the interest of time I won’t repeat it here. As all of the NYIPLA past Presidents, present here tonight know, one of the most daunting responsibilities as President is selecting the Keynote Speaker for the Judges’ Dinner. There are many considerations that factor into the decision. Ultimately, it comes down to what type of speaker you would like to hear provide the speech, who you might like to meet, and who will be an appealing speaker for the attendees. The first category was easy. As an amateur musician singer-songwriter (emphasis on amateur), my goal was to select a singer-songwriter. I am always fascinated by the creative processes of songwriting which varies greatly among well-known artist. As for who I might want to meet, it was someone that writes and performs songs with deep and profound universal messaging that resonates with our life experiences individually and communally. Someone who can as easily paint the picture in our mind of our personal relationships and contemplations, as well as strike the perfect chord, all puns intended, with socially-conscious lyrics and music that touches the very fiber of our being. Well, I am excited and extremely grateful to report that tonight our keynote speaker is exactly the person that I was hoping would accept our invitation to speak. And, while I felt I knew him through his songs and as a fan, it has been a wonderful experience getting to know him personally during this process, because his songs are who he is, and every bit of him and us is in a piece of his songs. His incredibly captivating songwriting and his dedication to numerous social causes and charities says it all about who this man is. It does not happen too often, if ever it has, that our NYIPLA OPS award recipient, and our Keynote Speaker, each from different worlds and backgrounds, are kindred spirits in how kind and compassionate they are, and in the contribution of their time and talents, to just causes and to society at large. So, without further ado, I introduce to you our Keynote Speaker this evening, Five For Fighting’s outstanding, world famous, amazing singer-songwriter, John Ondrasik! EXCERPTED TEXT OF THE DINNER REMARKS: I am now tasked with saying a few words about our Dinner and the NYIPLA. I am also under strict rules from Feikje to keep it short. I promise to adhere to the first two mandates, and am fully prepared to suffer the consequences of violating the third. To begin, I would ask for a celebratory full-throated hooray and applause for our third year back from the pandemic, back from the horrors of Covid to our in-person dinners! I am thrilled to report that we have more than 1400 attendees here tonight! We Are Certainly Back! The NYIPLA and this dinner is steeped in a rich history of great influential Presidents and Leaders. From founder, and first President, William Houston Kenyon, who had this little idea to organize a dinner to honor the federal judiciary which first dinner included among the honored guests Augustus and Learned Hand. To the Honorable Giles Rich who was instrumental in drafting the 1952 Patent Act. And Past President Rich, is believed to have been the first patent attorney appointed to the federal bench ultimately serving on the Federal Circuit Court of Appeals. To the Honorable William C. Conner a patent attorney and Past President who served as a District Court Judge in the SDNY. And to historically consequential and impactful members like our beloved member, the honorable Pauline Newman. It is with great honor, a tremendous sense of responsibility, and an infinite abundance of humility, that I stand here tonight at this podium to celebrate the 102nd NYIPLA Dinner in honor of the federal Judiciary. So, how did I get here? Funny you should ask. It was 1990, I was a First year Associate functioning as a library mushroom for Skadden Arps. I received a phone call from the Partner heading up the then fledgling patent litigation group. “Hey Rob, he said, we have this thing called a Patent Prom at the Waldorf on Friday, you need to rent a tux, and you will be the escort for the honored guest at our table.” Well, having never been to the Waldorf and more importantly never been an escort before, I was intrigued to say the least. So I dutifully rented a tux and came to the Waldorf and it was a surrealistic experience; a black-tie affair, at the Waldorf Astoria, all that history and tradition. It was especially surrealistic to me as I grew up in an apartment in Richmond Hill, Queens, above a store, with an up-close and personal view of the “A” train at the Lefferts Boulevard terminal station. So, needless to say I was a little impressed, in fact very impressed, and I thought, well, I don’t know what this organization is about - but I want to be a part of it! As the evening progressed, we were at a table, with our hosted Judge, in the last row. The Partner leans over to me and quietly says, “Hey Rob – you know now that I think of it, I guess he thought my name was “Hey Rob” – so he says, “we have to figure out how to get into the front row next year.” I took a beat, and then I said, “forget about that Ken, I want to figure out how to get up at the podium.” Well, tonight here I am living the dream. And for any of you junior Associates, young folks or even law students who may be sitting in the back of the room, I suggest you prepare your speech now for 2058, because it could take a while to figure out how to get here, let alone, what to say. As part of my mission when I became President of NYIPLA, I felt a responsibility, as a Junior Boomer (as I like to refer to myself), to build a bridge to the new generations of leaders that will follow me. To that end, we have developed new initiatives and Committees to achieve that goal including our video podcast series “The Bridge to Future Leaders.” I have enjoyed the privilege and honor of conversations with most of our thirty-two past presidents and a particularly memorable conversation with one of NYIPLA’s most treasured members, the Honorable Judge Pauline Newman, of the United States Court of Appeals for the Federal Circuit. We have also begun a Membership Drive, in which I encourage all current members to participate. Now, here is a sneak peek of the soon to be released Podcast series. A moment ago, I mentioned “living the dream.” Living the dream. Let’s keep dreaming, it is the fuel that breathes life into new innovations and inventions, inspires new ideas for authors and writings, and forms the backbone for entrepreneurs to start new businesses and brands. How fortunate are we that, as members of NYIPLA and as lawyers, we get to practice alongside and work with dreamers that have taken us to the outer reaches of our solar system, that have improved the human condition and cured diseases, the authors and writers that build on the ideas of the great novelists, playwrights, artists, poets and songwriters to create writings, plays, films and songs that touch the very essence of what it means to be human, and the entrepreneurs that toil in a garage and establish a brand that becomes the hallmark of a generation. To say we are living the dream fails to adequately capture how blessed we are to spend our days (and often our nights) plying our trade in a great and noble profession. So to all of you dreamers here tonight, keep dreaming. Because one day your dream may become a reality. I know tonight my dream has become a reality. And for that, I would like to thank Feikje and her amazing staff at RRR Association, my Officers and Board of Directors and the Committee Chairs, for all of their hard work and efforts that makes all this, and all of the NYIPLA programs, events and activities, some of which are highlighted in the Dinner Booklet, happen seamlessly and successfully. I would also like to thank my firm, Greenspoon Marder, for their support which enables me to devote my time and efforts in fulfilling the mission of the NYIPLA. And, I thank my wonderful wife for all of her support, and for her patience and fortitude that has enabled our marriage to endure for 47 years, my two beautiful daughters Jen and Jess and their husbands Rob and Chris, my amazing grandchildren, Brendan, Robert Douglas, Charlotte, and Theodore, and my sister Maragaret, whose presence here tonight completes my living the dream. One final note. The significance of the 102nd Dinner in honor of the Federal Judiciary, and the 101 which have come before, is found in the word “honor." As the independent check on the political machinations embedded in the other two co-equal branches of government since the founding of our great Republic, they deserve to be honored. Which is also why we refer to them as “The Honorable.” So to all the Judges in attendance tonight, you have earned that title and we are privileged and grateful for the opportunity to honor you. At this time, I welcome all of you to please enjoy your dinners and conversation. Our keynote Speaker, Five For Fighting’s John Ondrasik, will present after the dinner. Thank you.
Ashley L. Ross
First Vice President Abigail Struthers
President Elect Patrice P. Jean
Linnea Cipriano
Lauren B. Emerson
Second Vice President Paul A. Bondor
Eric Greenwald
Secretary Cheryl Wang
members
officers
On May 8, 2024, incoming Association President Patrice P. Jean welcomed members and guests at the Union League Club. Patrice expressed her appreciation for outgoing president, Robert J. Rando.
2024 Annual Meeting
Annual Meeting May 8, 2024 Union League Club
2:15 PM - 3:15 PM CLE Program New Landscape of Arbitration/Mediation in the Federal Court System Hon. Leda Dunn Wettre, Magistrate Judge for the District Court of New Jersey Hon. Roslynn R. Mauskopf (Ret.), Former Chief Judge for the Eastern District of New York, Bracewell LLP Hon. Garrett E. Brown Jr. (Ret.), Former Chief Judge for the District Court of New Jersey, JAMS Patrick J. Murphy III, JAMS (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 Patrice P. Jean fireside chat Honorable Scott R. Boalick Chief Judge USPTO Patent Trial and Appeal Board 2024 Inventor of the Year award Dr. Eren Kurshan, Princeton University Recognized for multiple patents and published patent applications, including those issued in 2023: US Patent No. 11,586,681, issued on Feb. 21, 2023, titled “System and Methods to Mitigate Adversarial Targeting Using Machine Learning”; US Patent No. 11,669,713, issued on June 6, 2023, titled “System and Method for Online Reconfiguration of a Neural Network System”; US Patent No. 11,777,990, issued on Oct. 3, 2023, titled “Machine Learning-Based Event Analysis for Customized Contract Generation and Negotiation in Enhanced Security Peer-to-Peer Interaction Applications”. 2024 Hon. William C. Conner Writing Competition Awards Alexa T. Blandeburgo & Joseph N. Sotile LifeTIME Achievement award Melvin C. Garner Volunteer of the year award Jennifer Rea Deneault Community service award Honorable Garrett E. Brown Jr. (Ret.) Former Chief Judge for the District Court of New Jersey, JAMS 2024 NYIPLEF Diversity Scholarship Sterling Myers 2024 Hon. Giles S. Rich Diversity Scholarship Jing Kong
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.
Honorable Garrett E. Brown Jr. (Ret.)
From Columbia Law School, for his paper entitled IF YOU WANNA USE MY LYRICS: COPYRIGHT PREEMPTION OF BROWSEWRAP CONTRACTS AFTER ML GENIUS HOLDINGS LLC V. GOOGLE LLC
Sterling Myers
second Place Winner Joseph N. Sotile
First Place Winner Alexa T. Blandeburgo
NYIPLEF Diversity Scholarship is awarded to Sterling Myers, a first-year J.D. candidate at Yale Law School. He has been involved with the Yale Black Law Students’ Association (BLSA) and Yale Law First Generation Professionals. Additionally, he has served as an editor for the Yale Journal for Law & Technology and the Yale Journal of Health Policy, Law, and Ethics.
Lifetime Achievement Award
From St. John's University School of Law, for her paper entitled Do You Know Where Your Trademark Is? How the Fourth Circuit’s Interpretation of the Anticybersquatting Consumer Protection Act Correctly Protects Trademark Owners Online
The 2024 Lifetime Achievement Award is presented to Melvin C. Garner in honor of all his achievements. Melvin C. Garner is the NYIPLA 2003-2004 Past-President.
2024 Hon. William C. Conner Writing Competition
Melvin C. Garner
Jennifer Rea Deneault
Award recipients at the 2024 annual meeting
2024 Hon. Giles S. Rich Diversity Scholarship Award
Volunteer of the Year Award
Recognized for multiple patents and published patent applications, including those issued in 2023: US Patent No. 11,586,681, issued on Feb. 21, 2023, titled “System and Methods to Mitigate Adversarial Targeting Using Machine Learning”; US Patent No. 11,669,713, issued on June 6, 2023, titled “System and Method for Online Reconfiguration of a Neural Network System”; US Patent No. 11,777,990, issued on Oct. 3, 2023, titled “Machine Learning-Based Event Analysis for Customized Contract Generation and Negotiation in Enhanced Security Peer-to-Peer Interaction Applications”.
Inventor of the Year Award
2024 NYIPLEF Diversity Scholarship
In recognition of her outstanding efforts as an NYIPLA member, the 2024 Volunteer of the Year Award is presented to Jennifer Rea Deneault, Counsel at Groombridge, Wu, Baughman & Stone LLP, member of the Associates Advisory Committee, and previous co-chair for the NYIPLA Young Lawyers Committee .
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 Garrett E. Brown Jr. (Ret.), Former Chief Judge for the District Court of New Jersey, JAMS.
Community Service Award
Hon. Giles S. Rich Diversity Scholarship is awarded to Jing Kong, a third-year J.D. candidate in the evening division at Rutgers Law School - Newark. She is currently serving as the Co-President of Rutgers Law School Immigrant Rights Collective, Student Representative of the Asian Pacific American Law Students Association, and Student Mentor for first-year law students at the Rutgers Law School, Newark campus. Jing is also a Clinical Student at the Rutgers Law School Intellectual Property Law Clinic, helping clients on trademark and patent related matters.
Jing Kong
Dr. Eren Kurshan
2023 - 2024 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: Diana Santos Amicus Brief Scope of the Committee: To coordinate the activities of the Association relating to the preparation and submission of amicus briefs, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Irena Royzman, Paul Coletti, and Jeff Price board liaison: David Goldberg 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 The Arbitration, Mediation & Neutrals Committee has been active in 2024 organizing panel discussions on impactful topics that feature prominent current/former jurists and alternative dispute resolution neutrals.In May, the Committee was privileged to organize a panel discussion for the afternoon of the Annual Meeting that was moderated by Patrick J. Murphy III and featured the Hon. Leda D. Wettre, U.S.M.J. (D.N.J.), the Hon. Garrett E. Brown, U.S.D.J. (Ret., D.N.J.) and the Hon. Roslynn R. Mauskopf (Ret., E.D.N.Y.).The subjects discussed by that panel included a comparative analysis of mediation programs adopted by various federal courts across the country, as well as best practices for mediating complex intellectual property disputes both in court and privately.Additionally, the Committee is collaborating with the Transactions Committee to organize a panel discussion for the November CLE Event that will focus on best practices in drafting contractual arbitration/alternative dispute resolution clauses. 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 board liaison: Diana Santos 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 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: Aliya Nelson and Michael Patrick board liaison: Cheryl Wang 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 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: Jenny Lee Members: Stephen Ankrom, William Valet, Palak Sharma, Matthew Abbott, Steve Fairchild, Andrew Cochran, Lauren Hamill, Daniel Jones, Richard Brown, Jenny Lee, Timothy Caine 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 2023. 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 27 submissions for the 2023-24 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: “Do You Know Where Your Trademark Is? How the Fourth Circuit’s Interpretation of the Anticybersquatting Consumer Protection Act Correctly Protects Trademark Owners Online” by Alexa T. Blandeburgo (St. John’s University School of Law). 2. Runner-up: “If You Wanna Use My Lyrics: Copyright Preemption of Browsewrap Contracts after ML Genius Hollings LLC v. Google LLC” by Joseph N. Sotile (Columbia Law School). The Committee notified the winner and runner-up, and the NYIPLA followed up with the authors for a presentation at the May 8th 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 board liaison: Heather Schneider ip transactionS Scope of the Committee: To consider issues and agreements that IP practitioners frequently encounter in connection with intellectual property and technology licensing, development, ownership, and sale including in M&A transactions, and to make recommendations to the Board of Directors regarding emerging issues and educational topics related thereto. chair: Ketan Pastakia and Matthew Makover board liaison: Christopher Loh Legislative Action Scope of the Committee: To evaluate proposed federal and state legislation and rules, including USPTO and Court rules, that may impact patent and other intellectual property issues; to develop positions and recommendations on the proposed legislation and rules for consideration by the NYIPLA Board of Directors; and to communicate the NYIPLA's positions and recommendations to the legislative and rule-making bodies, as approved by the Board. co-chairs: Anthony Lo Cicero and Michael Johnson 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, nascent efforts by the New Your State Legislature to enact patent settlement legislation and other relevant proposals. We will also begin a series of fireside chats and will assist the Board with the Presidents’ Forum and other programs. 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 patent Litigation Scope of the Committee: To consider legislation and rules affecting practice and procedural matters in intellectual property litigation outside the Patent and Trademark Office, and other matters relating to practice in such litigation, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Brett Cooper and Leslie Spencer board liaison: Christopher Loh programs Scope of the Committee: To formulate and present a series of monthly continuing legal education programs of interest to the broad spectrum of the Association's membership, and to make recommendations with respect thereto to the Board of Directors. co-chairs: T. David Bomzer and Lynn Russo board liaison: Abigail Struthers 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 Goldberg Over the past year, the PTAB Committee has remained a strong committee that has built many bridges to the 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. Janet Gongola, the Hon. Rachel Townsend, and the Hon. Annette Reimers provided insights on PTAB policy and practice; Chris Israel from the American Continental Group discussed current PTAB legislation on Capitol Hill; and committee members including Jeffrey I. D. Lewis of Foley Hoag LLP and Clint Mehall of Davidson, Davidson & Kappel, LLC analyzed legal developments and new litigation strategies at the PTAB. Meetings have focused in on specific issues like Ex Parte PTAB appeals, estoppel and IPRs, and the PREVAIL Act, among many others. Additionally, the Committee assisted with comments to the USPTO for new rules affecting PTAB proceedings. 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 Brian Doyle board liaison: Patrice Jean sipo OF CHINA / US Bar LIAISON council delegate: Wansheng Jerry Liu trade secrets Scope of the Committee: To consider all aspects of trade secret law in the United States, and to make recommendations regarding trade secret law to the Board of Directors. co-chairs: Laura Chubb and Kevin Ecker board liaison: Mark Schildkraut The trade secret committee continues to be an active and engaging committee. We conduct monthly meetings, with at least one meeting being in person, where we discuss the latest happenings in trade secret law, as well as related topics of interest like professional development issues. Our Committee arranged for law professors to present varying topics of interest and discuss their current research at three of the monthly meetings. CLE credit was awarded to those that attended. Our committee participated in the NYIPLA’s 2023 Fall One-Day CLE and presented a panel on the topic “What Every Multi-National Corporation Needs to Know About Trade Secrets.” The panel was made up of both in-house attorneys as well as outside counsel knowledgeable on the recent developments in the use of, and availability of, non-compete agreements and the impact of proposed non-compete prohibitions, including the FTC’s proposed ban. In addition, the panel spoke about the pros and cons of the extraterritorial reach of U.S. trade secret law. The panel included Laura Hidalgo, Managing Counsel-Latin America, Merck, Robert Isackson, Partner, Leason Ellis LLP, Adam P. Samansky, Member, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., and Ksenia Takhistova, Chief Legal Officer, LCM Biosensor Technologies, LLC. We look forward to our committee’s continued participation in NYIPLA CLE events and updating our members on new developments in trade secret law topics. trademark law & practice Scope of the Committee: To consider all aspects of trademark law and practice, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Deirdre Clarke and Lindsey Utrata board liaison: Lauren Emerson 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 neighboring jurisdictions where our members may have active business and/or client interests, such as certain Quebec regulations relating to the use of the French language in commercial contexts. 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 King & Spalding LLP for the third consecutive year. The program kicked off with keynote speaker, the Honorable Gerard F. Rogers, Chief Administrative Trademark Judge of the Trademark Trial and Appeal Board, followed by updates from both the U.S. Copyright Office and the Federal Trade Commission, plus a thought-provoking panel discussion on current trends in anti-counterfeiting practices, with Alaina Van Horn, Chief of the Intellectual Property Enforcement Branch of the U.S. Customs and Border Protection. The program was rounded out with a report on the current state of AI in IP, a fashion law panel, and a rousing cross-border discussion of brand restrictions. We have also had the pleasure of collaborating on the upcoming virtual IP Transactions Bootcamp to be held in October. We will be presenting the first panel of the Bootcamp, namely, Copyright, Trademark and Fashion law considerations in transactional matters, featuring speakers and a moderator from both private practice and in-house on October 8th. Last but not least, we hosted an in-person happy hour to toast the summer in July at the law offices of MoloLamken. We hope to continue to have one to two in-person meetings each 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 40th annual meeting of the US-Bar EPO Liaison Council took place on October 12-13, 2023 in Munich, Germany. The Council met with 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 Services, and judges from the Technical Board of Appeal. Discussion topics included the latest decisions of the EBoA, Petitions for Review, and Adaptation of the Description. At the EPO, EPO President Antonio Campinos delivered an address highlighting the 50th anniversary of the European Patent Convention (EPC). According to the EPO, US applicants account for 40% of all applicants, second only to EPC member states. EPO representatives provided updates on several key topics, including Quality, Convergence of Practice in Europe, MyEPO services, Substantive Patent Law Harmonization, Unitary Patent and the UPC, interpretation and application by the EPO of Decision G 2/21 on plausibility, and updates to the EPO Guidelines. us Bar - japan patent office council delegates: Raymond Farrell and John Pegram Women in ip law Scope of the Committee: To facilitate and empower women in their practice of intellectual property law, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Lindsey Miller and Anne Li 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, Jasmine De Cock, Lindsey Fleischman, Alekhya Shastry, and Audrey Trace board liaison: Linnea Cipriano Over the past year, the Young Lawyers Committee (YLC) organized several well-attended virtual and in-person events that focused on growing NYIPLA membership through community outreach and collaboration. The YLC understands the importance of being the first exposure to the NYIPLA for law students and burgeoning lawyers in the IP community. The YLC is working to create a welcoming and supportive community environment to keep attorneys (new and mature) in the field and engaged with the organization. In the Fall, the YLC hosted its now-annual happy hour networking event, which was the first of numerous well-attended in-person events. In collaboration with other NYIPLA Committees, the YLC hosted a mock interview and resume review workshop with the Associate Advisory Counsel, a panel on diverse careers in IP for new lawyers and law students, a panel discussion with the Women in Law Committee focused on highlighting the experiences of women who are managing partners or who founded their own IP law firms, and a virtual “Tips and Tricks” for summer interns aimed at law students. The YLC also hosted a speed-networking event in the Spring that was highly attended by attorneys, professors, and law students. In addition to these events, the YLC hosted regular monthly meetings, and assisted with the Trade Secret Committee talk and the Anti-Counterfeiting CLE for the NYIPLA Annual Half Day CLE event. The YLC has seen attendance in virtual and in-person meetings increase over the last year and looks forward to garnering more members and continuing to develop the NYIPLA community.
102nd Annual Dinner in Honor of the Federal Judiciary Friday, March 22, 2024 The New York Intellectual Property Law Association held its 102nd Annual Dinner in Honor of the Federal Judiciary on March 22, 2024, at the New York Hilton Midtown Hotel. President Robert J. Rando welcomed the honored guests, members of the NYIPLA, and their guests. The Association’s Twenty-Second Annual Outstanding Public Service Award was presented to the Honorable Joseph F. Bianco, Circuit Judge of the United States Court of Appeals for the Second Circuit. The Keynote address was given by John Ondrasik, Singer and Songwriter, Five for Fighting.
EVENTS
PTAB Committee Meeting: Discussion of Proposed Rules for PTAB Practice May 16, 2023 In the May 16, 2023 PTAB Committee meeting of the NYIPLA, there was a spirited discussion on the “Key Areas” addressed by the AARM including: Key Area 1: Better ensure our practices align with the USPTO’s mission to promote and protect innovation and investment, and with the congressional intent behind the AIA to provide a less expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment Key Area 2: Enhance and build on existing precedent and guidance regarding exercise of Director’s discretion to determine whether to institute an AIA proceeding Key Area 3: Provide threshold definitions that apply to one or more categories of petitions subject to discretionary denials, setting forth criteria used to determine “substantial relationship,” “substantial overlap,” and “compelling merits” Key Area 4: Provide procedural enhancements Key Area 5: Clarify filing requirements for Settlement Agreements Co-Chairs Charley Macedo and Ken Adamo, and President Rob Rando lead the discussion, with Former APJ Brian Murphy, LAC Co-Chair Anthony Lo Cicero, and our legislative consultant Chris Israel. Patent Law & Practice Committee Meeting May 18, 2023 NYIPLA Patent Law & Practice Committee welcomed Jeanne Clark, the current MPEP Editor at the USPTO. Jeanne discussed the latest MPEP revision, of sections of chapters 100, 200, 400-1500, 1700, 1800, 2000-2200, 2400, 2500, and 2700-2900 and Chapter FPC - Form Paragraphs Consolidated, the Foreword, Introduction, Subject Matter Index, and all appendices except Appendix I and Appendix P. Women in IP Committee Happy Hour Event June 15, 2023 The NYIPLA Women in IP Committee had an evening of cocktails and conversation at Trademark Bar + Kitchen (38 W 36th Street, New York, NY 10018). All were welcome to mix and mingle (discussion of the law is optional). PTAB Committee Meeting: A Second Chance? A look at Amending Claims During IPRs June 20, 2023 How does claim amendment work in an IPR, and impact parallel litigation? What’s PTAB’s views of these actions? What does a successful motion to amend look like? What can you raise to oppose a motion to amend? How do you respond to PTAB’s preliminary views and final decisions on amendments? Attendees joined the NYIPLA PTAB Committee on June 20 and learned about all these issues. Patent Litigation Committee: Lessons Learned from the Western District of Texas June 21, 2023 Attendees joined the NYIPLA's Patent Litigation Committee and welcomed Peter Tong, Partner at Russ August & Kabat for the program 'Lessons Learned From the Western District of Texas'. Judge Albright still has one of the largest patent dockets. Peter Tong clerked for Judge Albright in 2022. He will share lessons learned from countless discovery disputes, hearings, and trials. This includes an in-depth discussion of venue law and transfer motions. Peter continues to monitor the Waco patent docket and summaries interesting decisions on his LinkedIn page. 7th Annual Summer Associate Moot Court Argument CLE Program July 21, 2023 This year's program, which took place at the Thurgood Marshall U.S. Courthouse on July 12, included substantive law topics that are at the forefront of current trademark litigation based on a hypothetical case drawn from the Jack Daniel's Properties, Inc. v. VIP Products LLC case. Participating firms, which included Goodwin Procter LLP, Greenspoon Marder LLP, Venable LLP, and Willkie Farr & Gallagher 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 7:30 PM - 8:30 PM. The Judges' Panel consisted of the following: Hon. Colleen McMahon, U.S. District Court, Southern District of New York, sitting by designation Hon. Edgardo Ramos, 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 PTAB Committee Meeting: Learn About Ex Parte PTAB Appeals from PTAB APJs July 18, 2023 PTAB Committee Co-Chairs Charley Macedo and Ken Adamo, and NYIPLA Board Liaison David Goldberg lead the discussion, joined by USPTO APJs Debra Dennett, Michael Cygan, John Fredman, and Brandon Warner to discuss steps of an ex parte appeal, how to correct mistakes made when filing the appeal briefs, and strategies for preparing an appeal brief. We were excited to have insightful contributions from the USPTO on the processes and procedures of appeal briefs and what can be done when inevitable mistakes arise throughout the process of preparing a brief. Hot Topics In Trademark & Copyright Law July 20, 2023 On July 20, 2023, NYIPLA's US Trademark Law & Practice Committee presented its annual Hot Topics in Trademark & Copyright Law half-day CLE program at the midtown offices of King & Spalding LLP. Judge Karen Kuhlke, of the USPTO’s Trademark Trial and Appeal Board (“TTAB”), kicked off the program as the keynote speaker for the trademark portion. Judge Kuhlke provided a fast-paced and enlightening summary of TTAB stats, recent developments, expert tips for pleading and discovery, and ex parte appeal “dos and don’ts.” Practitioners should note that there is now an established process for nominating a TTAB decision to be designated as precedential. Nominations for precedential status may be filed via the USPTO’s website, and can be submitted anonymously. Providing key updates from a copyright perspective was Deputy General Counsel of the US Copyright Office, Emily Chapuis. Chief among the topics discussed was the Copyright Office’s recently-issued guidance on artificial intelligence, which clarifies that a work created by a machine lacks human authorship and creative control. Thus, copyright registration will not be granted for AI-generated material. In an application for copyright registration for a work which also includes elements of original human composition, all AI-generated elements must be disclaimed. Additionally, IP specialists will be pleased to learn that the US Copyright Office has mostly cleared the backlog created by the pandemic. The Office is also maintaining the pandemic-era accommodation of accepting a digital copy of the best edition of a work, along with a declaration confirming that applicant has sent or intends to send the required physical copies within three (3) days. This allows the Office to examine the digital copy instead of waiting to receive physical deposit copies, and results in faster processing of applications and issuance of registrations. Sherli Furst, IP Counsel at Manatt, Phelps & Phillips, LLP, delivered an inspired and insightful presentation on the ever-evolving challenges of IP protection in the age of artificial intelligence, particularly generative AI. Major factors to be considered include who owns the generated content, as well as the possibility that users of the generative AI platforms may be liable for indemnification to the platforms for any infringement arising from use thereof. The program also featured three panels on attention-grabbing matters, starting with an in-depth discussion of the interaction between trademarks and celebrity branding in the cannabis space. Aliya Nelson, Partner, Greenspoon Marder LLP, moderated a candid and thought-provoking conversation amongst Vinnie Brown of Naughty by Nature, Inc., Mark Spark Welch of Green Leaf Productions, and Vladimir Bautista of Happy Munkey LLC. The panel spoke candidly about the challenges of navigating the intricacies of state and federal cannabis laws and regulations, while simultaneously enforcing against infringers and imitators. Against the backdrop of rapidly changing perspectives on the effects of marijuana use, the panel drove home how important it is to remember and account for those who have been negatively impacted by harsh drug laws and societal stigmas as countless new lucrative entrepreneurial opportunities become available in this industry. Social media influencer Jeannie Ferguson provided an authentic take on what it is really like to be an influencer. Her witty, no-nonsense accounts of successful, as well as less-than ideal engagements provided valuable behind-the-scenes insight. Moderated by Mitchell Stein, Partner, BraunHagey & Borden LLP, the panel also included Eli Nathanson, Partner, Pryor Cashman LLP and Octavia Taylor, Senior Director, Legal & Business Affairs, A+E Networks, who offered valuable insight about major elements of an influencer contract, from a legal representation and business viewpoint, respectively. Exclusivity of the engagement, ownership of the involved IP, morals clauses, and reverse morals clauses are not only foremost among the elements of influencer contracts, but are also most likely to garner major media headlines when things go wrong. Rounding out the stimulating discussions was a thorough and lively summary of the several recent IP decisions handed down by the US Supreme Court. The recent decisions may have resolved some outstanding issues, but on closer review have also raised more questions on key IP concerns. Further litigation would not be surprising, the panel concluded. Barbara Solomon, Partner, Fross Zelnick Lehrman & Zissu, P.C., moderated the discussion on the key takeaways and unresolved concerns at the center of the recent SCOTUS decisions, as presented by Marissa Lewis, Partner, Mitchell Silberberg & Knupp LLP, Ben Quarmby, Partner, Molo Lamken LLP, and Martin Schwimmer, Partner, Leason Ellis LLP. The program was a resounding success, and would not have been possible without the contributions of the many speakers, panelists, and moderators, as well as our law firm host. Sincere thanks to all involved!! Following the program, attendees were invited to network and mingle at a wine reception. The US Trademark Law & Practice Committee’s co-chairs are Deirdre Clarke (IP Counsel, Novartis Pharmaceuticals Corporation) and Lindsey Utrata (IP Counsel, Latham & Watkins). - Lindsey Elise Utrata, IP Counsel, Latham & Watkins LLP PTAB Committee Meeting: USPTO - Updates to the Interim Director Review of PTAB Decisions August 15, 2023 The NYIPLA PTAB Committee discussed the USPTO decisions of the interim process and the extension of the Director Review (DR) option to institution decisions. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, the NYIPLA PTAB Committee welcomeed our distinguished featured guests - Administrative Patent Judges, Kal Deshpande and James Worth – to discuss the new interim director review process. Updates to the interim director's review include: Expanding the process to permit parties to request DR of PTAB decisions on institution in AIA proceedings. Providing updated guidance as to what types of issues the Director will consider in DR, as well as additional guidance on various topics, such as the initiation of DR at the sole discretion of the Director (sua sponte DR), remands to PTAB for further proceedings, and sanction authority of the Director. Providing the Director, the option to delegate review to a new independent panel called the Delegated Rehearing Panel (DRP). Creating a new Appeals Review Panel (ARP), which may be convened by the Director sua sponte, to review PTAB ex parte, reexamination, or reissue appeal decisions. Patent Litigation Committee Meeting: Litigation Funding August 23, 2023 The Patent Litigation Committee delved into the intriguing realm of litigation funding in patent litigation, including insights specific to the Unified Patent Court (UPC). We were honored to have two distinguished guest speakers, Ben Quarmby (Partner, MoloLamken LLP) and Jonathan E. Barbee (Counsel, MoloLamken LLP), who shared their expertise and experiences in this field. PTAB Committee Meeting USPTO - Ex Parte Appeals September 19, 2023 The PTAB Committee discussed Ex Parte Appeals within the USPTO. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, the NYIPLA PTAB Committee welcomed our distinguished featured guests - Hon. Janet Gongola, Hon. Annette Reimers and Hon. Rachel Townsend – to discuss Ex Parte Appeals within the USPTO. e Corporate & Young Lawyers Committee Happy Hour October 4, 2023 The NYIPLA Corporate and Young Lawyers Committees invited attendees to mingle and network with food and drinks! Attendees met other young lawyers and corporate lawyers as they enjoyed a few beers and snacks. Non-members are encouraged to join in as well. PTAB Committee Meeting - (e)STOP! In Name of IPR: A look at Estoppel and IPR October 17, 2023 The PTAB Committee had a discussion regarding IPR estoppel. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, the NYIPLA PTAB Committee welcomed our distinguished featured guests - Jeffrey I. D. Lewis, and Cecilia G. Copperman of Foley Hoag LLP. IPR estoppel, as set out in 35 U.S.C. § 315(e), was designed to be straightforward, but it has encountered various interpretations, applications, and constraints as construed in litigations. The panel analyzed how courts have interpreted and developed this provision and perhaps even anticipate its future trajectory in legal proceedings. Patent Litigation Committee Meeting: Recent Developments In ITC Section 337 Investigations October 25, 2023 Attendees joined the Patent Litigation Committee meeting on Wednesday, October 25, 2023, from 1:00 pm to 2:00 pm. Their October meeting featured a presentation on Recent Developments In Section 337 Investigations before the U.S. International Trade Commission (ITC), including navigating multi-forum litigation. Michael Franzinger (Partner, Dentons) lead a discussion with ITC staff and in-house guests: Peter Guarnieri, Staff Attorney, Office of Unfair Import Investigations, USITC Matthew Bathon, Principal Legal Counsel II, Legal Management, Samsung Electronics Is it obvious? Let’s Reconsider. Design Patent Obviousness vs. Utility Patents November 1, 2023 The NYIPLA Fashion Law Committee held their first in-person event of the year on Wednesday November 1 at Pryor Cashman LLP. This in-person meeting was hosted by Co-Chairs Douglas A. Miro, Partner at Amster, Rothstein & Ebenstein LLP and Dyan Finguerra-DuCharme, Partner at Pryor Cashman LLP, with distinguished guest speakers including Jeffrey L. Snow, Partner and Chair of the Patent Department at Pryor Cashman LLP, Lee Curtis, Partner and Chartered Trademark Attorney, and Suzan Moss, Senior Chartered Trademark Attorney, HGF Limited - a UK based IP firm. For the first time in over five years, the Federal Circuit will be hearing a patent case en banc. The Court will hear LKQ Corporation v. GM Global Technology Operations LLC, which pertains to the current standard of non-obviousness that is applied to design patents. LKQ was a repair part vendor for GM. Currently, there is a two-part test for non-obviousness for design patents, referred to as “the Rosen test.” First, the challenger must show there is a single primary reference which is close to the claimed design. Second, the challenger must show that the difference between the primary reference and the claimed design can be bridged by one or more secondary references. These references must be related enough to the claimed design that “an ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design.” For utility patents and obviousness, KSR v. Teleflex rejected strict tests in determining obviousness for utility patent claims. KSR held, inter alia, that an inventor of ordinary skill in the art could look to nonanalogous art. The Court stated that obviousness inquiries should use “an expansive and flexible approach” rather than “a rigid rule.” LKQ is arguing for the more flexible KSR approach. GM wants things to stay the same with the more rigid Rosen test. Our panel discussed how the LKQ case may impact the fashion industry. In particular, if the Court abandons the Rosen test in favor of KSR approach, design patents may be more vulnerable to attack in litigation, which is fair or unfair depending on which side you are on. Adopting the KSR approach could also lead to uncertainty and more litigation, at least in the beginning, while courts determine how exactly to adapt the KSR standard to design patents. One-Day Patent CLE Seminar November 8, 2023 On Wednesday, November 8, 2023, the NYIPLA held the One-Day Patent CLE Seminar at Willkie Farr & Gallagher LLP. Topics included: Pending Patent Legislation: What You Need to Know A Conversation with Drew Hirshfeld (Former USPTO Commissioner of Patents) Recent Supreme Court Decisions & Hot Issues Professional Responsibility and Practice before the USPTO Artificial Intelligence in Patents and in Practice Keynote Fireside Chat with Chief Judge Scott R. Boalick, Patent Trial and Appeal Board (PTAB) What Every Multi-National Corporation Needs to Know About Trade Secrets NYIPLA Diverse Careers in IP Program November 9, 2023 Have you ever wondered what opportunities are available in today’s intellectual property marketplace? The panelists addressed these topics and more. Attendees joined the NYIPLA on November 9, 2023 at New York Law School for a panel discussing how you can navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Panelists: Lindsey Fleischman, Counsel, Commercial Legal & Business Affairs, WPP Marylee Jenkins, Partner, ArentFox Schiff LLP Marc Walkow, Associate, Greenspoon Marder LLP Conrad Wong, Attorney-Advisor and PTO Intellectual Property Officer, Office of Policy and International Affairs, USPTO Mock Interviews & Resume Review Workshop November 14, 2023 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 at the offices 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. PTAB Committee Meeting - VirnetX v. Mangrove Partners – Can a time-barred person join an instituted IPR? November 21, 2023 The NYIPLA PTAB Committee had a discussion regarding VirnetX v. Mangrove Partners – Can a time-barred person join an instituted IPR? This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Can a time-barred person be joined as a party to an instituted IPR under 35 U.S.C. Section 315(c)? That is the question VirnetX has petitioned the Supreme Court to answer in VirnetX v. Mangrove Partners (No. 23-315), where Apple was time-barred but allowed to join Mangrove's instituted IPR. Join us for a detailed review of this fascinating statutory construction issue. Speakers: Kenneth Adamo, Principal, Law Office of KRAdamo Charles Macedo, Partner, Amster, Rothstein & Ebenstein LLP NYIPLEF 5th Annual Diversity Scholarship Event: Diversity CLE Panel December 5, 2023 The New York Intellectual Property Law Education Foundation (NYIPLEF) held their “5th Annual Diversity Scholarship Event” at Greenberg Traurig LLP from 6:00pm - 9:00pm. The Diversity CLE Presentation was moderated by Stephanie Huang, the 2023 NYIPLEF Hon. Giles S. Rich Diversity Scholarship Recipient. The distinguished panel of in-house counsel included: Krista Aiello, Assistant General Counsel - Patents, Unilever Serena Farquharson Torres, Executive Director, Assistant General Counsel, Bristol Myers Squibb Thomas H. Lee, Special Counsel, Hughes Hubbard & Reed LLP Lisa Jakob, Executive Director, Office of General Counsel, Intellectual Property, Merck & Co., Inc. Patent Litigation Committee Meeting December 12, 2023 The Patent Litigation Committee held an in-person meeting on Tuesday, December 12, 2023, from 12:00 pm to 1:30 pm. Desmarais LLP hosted the Committee for a holiday luncheon at their offices at 230 Park Avenue, 26th Floor. PTAB Committee Meeting: Statutory Deadlines December 19, 2023 The PTAB Committee had a discussion regarding a Question of First Impression: What Happens When the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision? This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. In Purdue Pharma L.P. v. Collegium Pharm., Inc., 2023 WL8043047 (Fed. Cir. Nov. 21, 2023) the question of when the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision, what happens next? It remains to be seen whether the Federal Circuit’s decision will result in more Final Written Decisions being issued after the expiration of the 18-month statutory deadline, and whether mandamus will prove an effective remedy. Attendees joined the committee for a detailed review of this issue and had a discussion of possible effective outcomes. Speaker: Thomas Hart, Associate, Amster, Rothstein & Ebenstein LLP PTAB Committee Meeting - PREVAIL ACT: Congressional Legislative Proposal on Patent Reform January 16, 2024 The NYIPLA PTAB Committee had a discussion regarding the "PREVAIL ACT": Congressional Legislative Proposal on Patent Reform. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. With the new year comes new legislative priorities. PTAB Legislation appears to be high on the legislative agenda. Attendees joined the committee as they discussed the current proposal by Senator Coons, Durbin and Hirono “Promoting and Respecting Economically Vital American Innovation Leadership ACT” (or “Prevail Act”). Speaker: Anthony F. Lo Cicero, Partner, Amster, Rothstein & Ebenstein LLP Zoom Out with NYIPLA! February 6, 2024 Have you made a New Year’s resolution to grow your business? Starting a new role at a company, or making an effort to commute into the office more? Are you tired of networking over Zoom? Well, we can answer yes to all of these questions, but we promise that our networking event will leave you anything but tired of Zoom! On February 6, 2024, attendees were able to have a refreshing event and network with NYIPLA board members, law firm associates and law students before the 102nd Annual Judges’ Dinner. The Associate Advisory Council co-chairs looked back on whether 2023 was a year of firsts or first-in-a-long time for office parties and "mandatory days". Attendees had access to an array of accomplished attorneys, many of whom were willing to share their practice successes from 2023. Speakers: James Breen, Associate, Goodwin Procter LLP Jennifer Deneault, Counsel, Groombridge, Wu, Baughman & Stone LLP Nicholas Forgione, Counsel, Authentic Brands Group LLC Khalil Nobles, Associate, Wilson, Sonsini, Goodrich & Rosati Biologics & Biosimilars: Impact of Amgen and Hot Topics in Biosimilar Litigation February 7, 2024 NYIPLA held an in-person Biologics & Biosimilars program at Kramer Levin. The Supreme Court’s enablement decision in Amgen v. Sanofi is one of the most impactful patent decisions of this century and will shape biologics litigation for decades to come. It also resolves the divide in the biopharma on what enablement requires and how to promote innovation. In this installment of NYIPLA’s Biologics & Biosimilars program, the speakers discussed the impact of Amgen on biologics and biosimilar litigation. The program also covered hot topics in biosimilar litigation, including the outsized role of the PTAB in biosimilar disputes, the continued importance of manufacturing patents, parallel foreign litigation, and more. Speakers: Larry Coury, Vice President, Associate General Counsel, Regeneron Mira Mulvaney, Associate VP - Assistant General Patent Counsel, IP Litigation, Eli Lilly and Company Jen Reda, Assistant General Counsel, Johnson & Johnson Moderator: Irena Royzman, Partner, Head of Life Sciences, Kramer Levin Naftalis & Frankel LLP PTAB Committee Meeting - RCE v. Appeal Considerations February 27, 2024 On February 27, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding the RCE v. Appeal Considerations. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. After receiving a final rejection, applicants have a choice whether to appeal to the PTAB or file a request for continued examination (RCE). A panelist of PTO judges discussed how to navigate that choice. Additionally, they were joined by Clint Mehall, co-chair of NYIPLA's Patent Law & Practice Committee, who discussed an analytical view of different arguments mentioned in PTAB decisions and their correlation to outcome. Speakers: Hon. Jason J. Chung, Administrative Patent Judge, USPTO Hon. Michael T. Cygan, Administrative Patent Judge, USPTO Hon. Debra L. Dennett, Administrative Patent Judge, USPTO Clint Mehall, Partner, Davidson, Davidson & Kappel, LLC Patent Litigation Committee Meeting - Litigation Funding for IP Cases March 5, 2024 The Patent Litigation Committee meeting featured a presentation on Litigation Funding for IP Cases from Michelle (Jacobson) Eber, Managing Director at West U Capital. Women in Leadership March 8, 2024 Attendees had an opportunity to celebrate Women’s History Month with the NYIPLA Young Lawyers and Women in IP Law Committees on Friday, March 8, 2024 between 1-2pm ET. We invited women in NYIPLA’s leadership to share insights into their leadership styles, early career lessons, and advice to those wanting to take on more leadership roles. Speakers: Patrice P. Jean, Partner, Hughes Hubbard & Reed LLP Ashley Ross, Partner, Kirkland & Ellis LLP Leslie M. Spencer, Partner, Desmarais LLP Co-Moderators: Jasmine De Cock, Associate, Fish & Richardson P.C. Lindsey Miller, Partner, Desmarais LLP Young Lawyers Committee Speed Networking March 13, 2024 The NYIPLA Young Lawyers Committee had an evening of networking, food, and drinks! This speed networking 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. This was a wonderful opportunity to expand your professional network and gain valuable knowledge in a relaxed and enjoyable atmosphere. NYIPLA Presidents' Forum: A Discussion with U.S. IP Policy Leaders March 14, 2024 The Forum, which took place on March 14, 2024, was moderated by Past President and Co-Chair of the NYIPLA Legislative Action Committee, Anthony Lo Cicero, and included the following outstanding panel of U.S. IP Policy Leaders: Sharon Israel, Chief Policy Officer and Director for International Affairs, USPTO Stevan Mitchell, Director of the International Trade Administration's Office of Intellectual Property Rights (OIPR), U.S. Department of Commerce Peter-Anthony Pappas, Professional Staff Member Detailee with the U.S. Senate Committee on the Judiciary, Senator Thom Tillis - Ranking Member of the Subcommittee on IP Maria Strong, Associate Register of Copyrights and Director of Policy and International Affairs, U.S. Copyright Office PTAB Committee Meeting - Outcomes of Ex Parte PTAB Appeals March 19, 2024 On March 19, 2024 the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding the Outcomes of Ex Parte PTAB Appeals. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Speakers: Kenneth R. Adamo, Principal, Law Office of KRAdamo Charles R. Macedo, Partner, Amster Rothstein & Ebenstein LLP Clint Mehall, Partner, Davidson, Davidson & Kappel, LLC The Effects of Recent and Pending IP Law Developments on Case Management March 22, 2024 NYIPLA hosted the "Day of Dinner" Luncheon CLE Program on March 22, 2024. The panel discussed the practical impact of changes and trends in the IP field on management of district court proceedings. The program started with opening remarks from Andrei Iancu, Former Undersecretary of Commerce for IP and USPTO Director, provided an overview of pending patent legislation. It was then be followed by the below panel of distinguished speakers: Honorable Christopher J. Burke, Magistrate Judge, U.S. District Court for the District of Delaware Honorable J. Rodney Gilstrap, Chief Judge, U.S. District Court for the Eastern District of Texas Honorable Rebecca R. Pallmeyer, Chief Judge, U.S. District Court for the Northern District of Illinois NYIPLA Diverse Careers in IP Program March 28, 2024 Have you ever wondered what opportunities are available in today’s intellectual property marketplace? The panelists addressed these topics and more. On March 28, 2024 at Maurice A. Deane School of Law at Hofstra University, there was a panel discussing how you can navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Panelists: Peter Ausili, former Judicial Law Clerk for Hon. Leonard D. Wexler, former Assistant Dean for Career and Professional Development, Touro Law Center Maisha Imam, J.D. Candidate, Hofstra Law Robert J. Rando, Partner, Greenspoon Marder LLP Lynn M. Russo, Associate, Hughes Hubbard & Reed LLP Internship Insights: Making the Most of Your Summer Experience April 10, 2024 The NYIPLA Young Lawyers Committee had a virtual panel on Internship Insights: Making the Most of Your Summer Experience. Attendees heard from three accomplished panelists as they shared inside perspectives on their summer internships during law school. Whether you're navigating your first legal internship or aiming to maximize your experience as a summer associate, this event was a perfect opportunity to gain valuable insights from those who have been there. Attendees had the chance to get their pressing questions answered and gained valuable tips on how to excel this summer. Panelists: RJ McLaughlin, Associate, Pryor Cashman LLP Jonathan Presvelis, Associate, Greenberg Traurig LLP Audrey Trace, Associate, Leason Ellis LLP PTAB Committee Meeting: Ask the PTAB April 16, 2024 The NYIPLA PTAB Committee had a discussion regarding FAQs on Appeals, AIA Trials, and Hearings. 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 appeals, AIA trials, and hearings. Speakers: Hon. Jeffrey W. Abraham, Lead Administrative Patent Judge, USPTO Hon. Ifti Ahmed, Lead Administrative Patent Judge, USPTO Patent Litigation Committee Meeting - Current Issues in Patent Damages Analysis April 23, 2024 The Patent Litigation Committee meeting featured a panel discussion on Current Issues in Patent Damages Analysis from Dominic Persechini, Managing Director at Intensity, LLC; John Blair, Managing Director at Berkeley Research Group, LLC; and Na Dawson, Principal at Analysis Group, Inc.
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