August 5, 2013
July 10, 2013
July 18, 2013 – July 19, 2013
About the Program
The IP Section of the State Bar of Wisconsin presents our Eighth Annual Door County IP Academy. Join your colleagues in beautiful Sturgeon Bay, Wisconsin on Thursday, July 18 and Friday, July 19, 2013 for a continuing legal education program focusing on cutting edge analysis of today’s hottest IP issues. Link to program: http://marketplace.wisbar.org/Pages/eventDetails.aspx?category=&cat=&pid=SA5213
This year’s IP Academy will feature world-renowned speakers, including chief judges, USPTO officials, leading in-house counselors, jury consultants, and IP subject matter experts, all presenting best-in-class IP CLE sessions.
Christopher Carani - McAndrews Held & Malloy
Chief Judge Randall Rader – United States Court of Appeals for the Federal Circuit
Manny Schecter – Chief Patent Counsel at IBM
Chief Judge James Smith – Chief Administrative Patent Judge over the Patent Trial and Appeal Board
Mike Dillon – General Counsel of Adobe Systems, Inc.
Ted Davis – Kilpatrick Townsend & Stockton LLP
Tom Irving – Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Eric Rudich - Senior Litigation Consultant with Magna Legal Services
Bios for Faculty: 2013 Intellectual Property Academy
Christopher Carani is a partner & shareholder with McAndrews Held & Malloy, a Chicago-based IP firm. For 15 years, he has been a leading voice in design law, counseling clients on strategic design protection and enforcement issues. Chris currently chairs the ABA’s Design Rights Committee and is the past chair of the AIPLA’s Industrial Designs Committee. He has a nation-wide audience as a frequent contributor to CNN on IP issues, and other media outlets as well, including the NY Times, Wall Street Journal, Forbes, NPR, PBS TV, CNBC TV, BBC, Bloomberg TV, and Reuters. In the landmark design patent case of Egyptian Goddess v. Swisa, Chris authored amicus briefs on behalf of AIPLA at both the petition and en banc stages, taking positions that helped set forth the ultimately re-shaped law on design patents by the Federal Circuit.
Ted Davis is a partner in the Atlanta office of Kilpatrick Townsend & Stockton LLP, where he divides his practice between client counseling and litigation in the fields of TM, copyright, false advertising, and unfair competition law. Ted is also currently the CFO for the ABA’s IP Section, as well as a former member of the Board of Directors of INTA, for which he has provided primary representation for a number of amicus curiae briefs filed with the US Supreme Court. He has taught as an adjunct professor at Emory University, the University of Georgia, and the John Marshall law schools, and has testified numerous times before Congress on substantive TM and Internet issues. Ted is also a former Editor-in-Chief of the Georgia Bar Journal and, while in law school, he also served as Notes Editor for the Virginia Law Review. His articles on IP subjects and matters have appeared in at least the Minnesota Law Review, the University of Illinois Law Review, the Washington & Lee Law Review, the Ohio State Law Journal, the Wake Forest Law Review, the Florida Law Review, and the Vanderbilt Journal of Transnational Law, as well as in numerous specialized publications, such as the Trademark Reporter and the Journal of IP Law.
Mike Dillon joins us from San Jose, CA, where he is currently serving as the GC of Adobe Systems, Inc. This is Mike’s 4th GC role, after having also done so for Silver Spring Networks, Sun Microsystems, Inc. (“Sun”), and ONI Systems Corp. With full responsibility for all legal functions at these organizations, he also managed all of the legal support for Sun’s $7.4B sale to Oracle Corporation. Mike will be sharing some of the perspectives he has gained during his career as a GC and in-house counsel.
Tom Irving is a partner in the Washington DC office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, for whom he has practiced IP law for some 38 years in their DC and Belgian offices. His practice includes patent counseling, design-arounds, due diligence, enforceability and infringement analyses, interferences, litigation and pre-litigation analyses, prosecution, re-examinations, re-issues, and validity analyses, particularly in the chemical and pharmaceutical fields, as well as Orange Book listing patents covering FDA-approved drugs. Tom has lectured to an estimated some 20,000 people on the American Invents Act (“AIA”), and he is apparently an original and sole inventor of a Jedi Master Mixer, which utilizes both AIA transition sections 3n1 and 3n2. In addition, Tom has also, for some 20 years, served as a principal teacher of a PRG Chemical Patent Practice Course. He also originated PRG’s Orange Book and Due Diligence courses. Tom frequently presents to many state bar associations, national bar associations, and law schools. Tom also lectures extensively in China on US patent law. Tom has also published law review articles in Dayton, Santa Clara, and Virginia law journals. He is a long running selectee of America’s Best Lawyers and IAM.
Chief Judge Randall Rader joins us from the United States Court of Appeals for the Federal Circuit. He was appointed to the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Judge on June 1, 2010. He was appointed to the United States Claims Court (now the US Court of Federal Claims) by President Ronald W. Reagan in 1988. Chief Judge Rader’s most prized title may well be “Professor Rader,” however, and there probably isn’t an IP practitioner, world-wide, whose daily practice has not been affected by our esteemed Chief!
Eric Rudich is a Senior Litigation Consultant with Magna Legal Services in New York, New York. He is an expert in jury psychology and specializes in identifying and testing trial themes and strategies, creating persuasive visual graphics, developing sophisticated juror profiles, and preparing trial witnesses. Dr. Rudich has consulted on hundreds of civil and criminal cases throughout the US, and he has developed a unique niche of consulting on IP jury trials. He has also appeared as an invited guest on CourtTV and MSNBC, conducted numerous CLEs, spoken at numerous litigation conferences, and published several articles in leading legal journals.
Manny Schecter is the Chief Patent Counsel at IBM, the #1 recipient of US patents for 20 consecutive years. He believes that the patent system is not broken, but can certainly be improved. He also believes that we can reduce patent litigation by promoting certainty early in the patent life cycle, particularly by enhancing claim clarity. Manny also organized a Peer-to-Patent project, a highly-regarded patent quality initiative, elements of which were ultimately incorporated into the AIA’s patent examination procedures.
Chief Judge James Smith is the Chief Administrative Patent Judge over the Patent Trial and Appeal Board (PTAB), which is, as of September 16, 2012, the successor to the Board of Patent Appeals and Interferences (BPAI). Appointed by Director David Kappos and beloved by all, he began this new role on May 8, 2011, having most recently served as the Chief IP Counsel for Baxter International. Chief Judge Smith replaced Chief Judge Michael Fleming, who stepped down in 2010, and Jay Moore who had been the Acting Chief Judge for several months. And Chief Judge Smith marked the transition from the BPAI to the PTAB by keeping the PTAB open and staffed during the entire 24-hour period of its first day!
June 6, 2013
Carani Interiewed on BloombergTV regarding ITC’s Import Ban on Certain iPhones and iPads for Violating Samsung FRAND Patent
Apple Inc. faces a ban on imports of some older devices, including the iPhone 4, iPhone 3GS, iPhone 3, iPad 3G and iPad 2 3G made for ATT Inc. Carani speaks with Jon Erlichman on Bloomberg Television’s “Bloomberg West.” (Source: Bloomberg)
May 28, 2013
CLE Description: In the world-wide battle royale between consumer tech titans Apple and Samsung, design rights have taken center stage. The lion share of the $1.05B jury award in the U.S. case relates to Samsung’s infringement of design patents. In the wake of this blockbuster verdict, companies and practitioners the world over are taking a second, hard look at design rights. In this CLE, leading design patent attorney Christopher V. Carani of McAndrews, Held & Malloy, Ltd. will discuss (1) cutting edge design prosecution techniques to protect not only the industrial design, but also the graphic user interfaces and icons, and (2) various design-specific litigation issues, including design patent infringement, functionality, claim construction, obviousness, anticipation and remedies. Further, the presentation will include a discussion of recent design patent cases, including the U.S. Court of Appeals for the Federal Circuit’s opinion in In Re Owens and the USPTO’s first grant of an inter partes review of a design patent in Munchkin v. Luv n’ Care. Lastly, the presentation will include suggested best practices for filing for design protection under the Hague Agreement.
321 S Plymouth Ct
Chicago, IL 60604
May 22, 2013
Intellectual Property Owners Association Webinar, 5/23, 2pmET, Advanced Design Patent Prosecution Topics, Speakers: Carani (McAndrews), Maksym (Nike) and Sincavage (USPTO)
May 9, 2013
McAndrews, Held & Malloy Shareholder Christopher V. Carani was a featured speaker at the American Intellectual Property Law Association (AIPLA) 2013 Spring Meeting on May 2, 2013, in Seattle. At the event, Chris presented a comparative and historical analysis of the available remedies for design patents, trademarks and copyrights, and their application in the landmark case Apple v. Samsung. He focused on a series of U.S. Supreme Court decisions from the late 1800′s regarding carpet designs (“The Carpet Wars”) that culminated in the Design Patent Act of 1887. See Dobson v. Hartford (1885); Dobson v. Bigelow (1885); Dobson v. Dornan (1886). A copy of his slide deck can be viewed here. Remedies for Design Infringement (AIPLA Spring Meeting 2013) (Carani) (FINAL) (4 panel)
AIPLA’s Spring Meeting is an annual, three-day event that provides attendees with in-depth educational tracks on the latest developments in intellectual property law. A copy of the program is found here: Program 2013 AIPLA Spring. For the educational track focused on design law, Carani shared the stage with other notable design patent experts:
Tracy-Gene G. Durkin, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC: Protecting the Look of Smartphone Apps— Design Patent, Trademark and Copyright Protection for Icons and GUIs
Richard Stockton, Banner & Witcoff, Ltd., Chicago, IL: Functionality in the Design World—The Doctrine of Functionality and Its Implications in Design Protection
Christopher V. Carani, McAndrews Held & Malloy, Ltd., Chicago, IL; Design Law Infringement Remedies: When Sorry Is Not Enough
Lance D. Reich, Lee & Hayes, PLLC, Seattle, WA: Design Protection on a Global Scale—Now and After the Patent Law Treaties
Francois Guay, Smart & Biggar/Fetherstonhaugh, Ottawa, Ontario, Canada: Design Protection inCanada—The Double-Wall Perspective
April 17, 2013
McAndrews, Held & Malloy Shareholder Christopher V. Carani to Speak at USPTO’s Seventh Annual Design Day Conference
McAndrews, Held & Malloy Shareholder Christopher V. Caraniwill present at the U.S. Patent & Trademark Office’s (USPTO) Design Day 2013: Designs in the New Digital Age, on April 22, 2013. Chris, along with co-presenters Charles L. Mauro (Mauro New Media) and Robert S. Katz (Banner & Witcoff), will speak before the USPTO’s patent examiners and discuss current design patent jurisprudence along with issues on how errors in prosecution can ultimately impact enforcement efforts.
At Design Day 2013, Chris will join other attorneys, judges, examiners and industrial designers from across the country to exchange ideas and educate each other on important issues impacting the design patent practice. Topics include:
- How the USPTO is preparing to examine applications filed under the Hague Agreement
- Rules and techniques relating to claiming icons and graphical user interfaces in the United States and Japan
- Microsoft’s design patent portfolio
- Design patents in post-grant proceedings
- Best practices to obtain the strongest protection of industrial designs in the United States
Design Day is open to all and there is no fee to attend. To register, visit: http://2013designday.eventbrite.com/#.
March 8, 2013
McAndrews, Held & Malloy Shareholder Christopher V. Carani will present at the Eighth Annual JTIP Symposium, hosted by the Northwestern Journal of Technology and Intellectual Property (JTIP), in conjunction with the Searle Center on Law, Regulation and Economic Growth. Carani will participate in the session titled, “FRAND: What constitutes reasonable patent licensing terms?” on March 8, 2013, from 12:45-2:30 pm.
Specifically, Carani will present on the implications of the FTC’s decision and consent order in relation to its investigation of Google related to Standard Essential Patents and FRAND licensing. Other speakers featured on the distinguished panel include:
• Latonia Gordon, Director, Standards Policy, Microsoft
• Alden Abbott, Director, Global Patent Law & Competition Strategy, Blackberry
• Mark Snyder, Corporate Litigation, Qualcomm
• Jorge L. Contreras, American University College of Law, Contreras Legal Strategy LLC
• Jason Sheasby, Irell & Manella
Other topics at the Eighth Annual JTIP Symposium include:
• Net Neutrality: Government Overreach or the Key to Innovation?
• The Past, Present and Future of Social Media
Each year, the JTIP Symposium brings together students, academics and practitioners from across the country to discuss legal topics at the forefront of technology and intellectual property. For more information and to register, click here.
The full program is available here. 2013 Symposium Program
February 28, 2013
Design Patents in the Modern World Conference
Date: April 5-6, 2013
Location: Stanford Law School. The Law School is located at 559 Nathan Abbott Way, Stanford CA 94305.
“Stanford Law School will host a major conference on design patents April 5-6, 2013. Long neglected in practice and academic scholarship,design patents have exploded in importance as a result both of recent changes in the law and high-profile cases like Apple v. Samsung. Drawing on the experience of lawyers, in-house counsel and academics, our conference will explore both practical and policy ramifications of these developments. Along with the public conference, on April 5, Stanford will host a one-day academic symposium with papers on design patents from the leading scholars in the world on these issues.”
Sarah Burstein, University of Oklahoma
Christopher V. Carani, McAndrews Held & Malloy, Ltd.
Dennis Crouch, University of Missouri
Alan Morgan Datri, WIPO
Brian Hanlon, USPTO
Laura Heymann, William & Mary Law School
James Juo, Fulwider Patton
Robert Katz, Banner & Witcoff
Mark Lemley, Stanford Law School
Jaime Lemons, Nike
Katie Maksym, Nike
Michael Meehan, Google Inc.
Mark McKenna, Notre Dame Law School
Tom Moga, Shook Hardy & Bacon
John Pratt, Kilpatrick Townsend
Michael Risch, Villanova
Perry Saidman, Saidman Design Law
Michael Risch, Villanova Law School
Program for April 5th Design Patents in the Modern World Public Conference: Link
Program for April 6th Design Patents Academic Conference: Link
The conference is co-sponsored by the Stanford Program in Law, Science, & Technology, Google, Samsung Electronics, and Nike.
February 11, 2013
Giles S. Rich American Inn of Court
What: Panel Discussion entitled “A Deep Dive Into Design Patent Law”
When: 5:30pm, February 13, 2013
Where: Washington, DC, U.S. Court of Appeals for the Federal Circuit
I will participate in a panel discussion entitled “A Deep Dive Into Design Patent Law” at the Giles S. Rich American Inn of Court on February 13, 2013. The other panelist will be David Gerk from the USPTO’s Office of Policy & External Affairs. The program will take place at the U.S. Court of Appeals for the Federal Circuit in Washington, DC. For more information please see the Giles S. Rich American Inn of Court website.