NYIPLA Board of Directors ................................................................................................................ 2
Year in Review by Colman B. Ragan .................................................................................................. 3-5
Annual Meeting ............................................................................................................................... 6-7
Committee Reports .......................................................................................................................... 8-17
Annual Report of the Treasurer ........................................................................................................ 18-19
99th Annual Dinner in Honor of the Federal Judiciary ........................................................................ 20-21
Events ............................................................................................................................................. 22-28
ASSOCIATION ANNUAL REVIEW
By: COLMAN B. RAGAN, NYIPLA President
Gene W. Lee
2020 - 2021 Board of Directors
Paul A. Bondor
Immediate Past President
Kathleen E. McCarthy
A. John P. Mancini
Patrice P. Jean
2020 - 2021
Year in Review
Colman B. Ragan
“Who are three people who have never been in my kitchen?” For those of you who are fans of the sitcom Cheers, you will recognize that line from the episode in which Cliff Clavin spectacularly blows his chance to win on Jeopardy! For those of you who have not seen it, look it up on the internet, it is truly a funny episode.
However, I do not think I can say that because all of you who attended this year’s Judges’ Dinner have at least virtually been in my kitchen.
What a year we had. At the very beginning of the year when the pandemic was just beginning, we did not know whether we would pull off any form of the Judges’ Dinner, let alone keep the Association together. Katie McCarthy had to make some courageous and difficult decisions to start things off. Thank you Katie for being a resource all year on some very difficult decisions we as an Association had to make.
However, because of a very strong and resilient membership, including the Board of Directors, we did both! Of course, this year could not have happened without Feikje van Rein and her team at RRR Associations, whose guidance and patience for my nearly daily phone calls truly paid off. I also want to thank all of our members for the support this year. We will need it again this coming year, so get engaged, convince your friends it is time to return to the NYIPLA and get involved in our exciting committees.
I have been a member of this association since I became an IP attorney. Being entrusted with the Presidency of the NYIPLA has been one of the great honors of my professional career. I cannot believe it went so fast.
When 2020 started, I was already nervous about being entrusted with the Presidency of the NYIPLA, then 2020 happened, and I got even more nervous. Too many challenges to count arose for our society and our association during this NYIPLA year. Nevertheless, we made it through together.
Actually, we did a heck of a lot more than make it through. We continued to file consequential and influential amicus briefs, we continued to provide policy papers on significant IP issues, we provided webinars and CLE events -- some free of charge or for a smaller than normal fee, and continued to show our members the value of our association.
The Amicus Brief Committee filed four amicus briefs this year in the following important IP cases:
Ericsson, Inc., Telefonaktiebolaget LM Ericsson, v. Samsung Electronics Co., LTD., Samsung Electronics America, Inc., Samsung Research America, No. 2021-1565, April 9, 2021 (in support of neither party)
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC, No. 20-440, February 25, 2021. (in support of neither party)
American Axle & Manufacturing, Inc., v. Neapco Holdings LLC and Neapco Drivelines LLC, No. 20-891, January 25, 2021. (in support of petitioner)
United States of America v. Arthrex, Inc., et al. Polaris Innovations Limited, v. Kingston Technology Company, Inc., et al. No. 19-1434, No. 19-1459, July 29, 2020. (in support of the grant of the writ of certiorari).
In the Minerva case, the Supreme Court ultimately adopted the position set forth by the NYIPLA in our brief, once again showing the influence the NYIPLA has via its amicus committee. Congratulations to all who worked on the brief for their hard work. Outcomes like Minerva, where the U.S. Supreme Court agrees with the position set forth by the NYIPLA truly show the continuing influence of our Association on important issues regarding intellectual property law.
In 2020, the Legislative Action Committee was also quite busy, working with the Trademark, PTAB and Privacy Committees, among others, to comment on various legislative proposals and proposed agency rule making. The NYIPLA even placed an opinion piece in the Buffalo News in support of innovation in the medical and pharmaceutical arts.Among this year’s LAC highlights were:
NYIPLA comments in response to "Proposed Rule: PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence
NYIPLA Whitepaper "Data Privacy, Copyright Law, and Cybersecurity Issues Related to Distance Learning" July 20, 2020
NYIPLA Submits Letter to the House Judiciary Committee Identifying Three Issues Raised in the Copyright Office's Report, July 27, 2020
NYIPLA Submits Letter in Support of S. 4711 (Daniel Anderl Judicial Security and Privacy Act of 2020)
NYIPLA Letter on Senator Tillis's Questions Regarding Proposed Reforms to DMCA
Joint IP Association Letter Regarding TRIPS Waiver Proposal, March 30, 2021
Another Voice: Intellectual Property Drives Medical Innovations, Buffalo News, Opinion Section April 25, 2021.
It was truly a busy year on the legislative front and the NYIPLA once again was at the forefront of significant issues, including voicing our strong support for the Judicial Security Act in the wake of the tragedy that befell Hon. Esther Salas and her family. The NYIPLA will continue to work with the co-sponsors of the recently re-introduced Judicial Security and Privacy Act, Judge Salas, and the Administrative Office of the U.S. Courts to secure passage of this important piece of legislation. Of course, the NYIPLA, via the LAC, will continue to monitor and comment on the most significant state and federal legislation that could impact the IP ecosphere including proposals to modernize the Copyright Office and the Digital Millennium Copyright Act, proposals regarding Privacy and Cybersecurity, proposals regarding platform liability for IP infringement, proposals regarding Section 101 of the Patent Act, and proposals regarding intellectual property in the biopharmaceutical arts.
This year, instead of having just one President’s Forum, we held several President’s Fora. The first of these was held in October 2020 and focused on the copyright infringement case brought by the band Spirit against Led Zeppelin regarding the song “Stairway to Heaven” (perhaps you have heard of the song?). It was a spirited discussion and the very first Presidents’ Forum held via the Zoom platform. The next of the Fora focused on state and federal legislation aimed at restricting so-called “pay-for delay” settlements between biopharmaceutical companies. Again, this was a very spirited debate with very impressive panelists on both sides of the issue. The third in the series discussed waiver of the IP provisions of the TRIPS treaty as proposed at the WTO by India and South Africa purportedly to help combat the COVID-19 pandemic. This was a spirited debate in which the panelists discussed many in which governments and industry can combat this horrific disease. Finally, we added one more to the series. We held a forum as part of the Judges’ Dinner festivities where Judges Esther Salas (NJ) and Richard Sullivan (2d Cir.) discussed the need to pass the Daniel Anderl Judicial Security and Privacy Act.All of the programs in this series were well-attended and the NYIPLA received several compliments from the attendees of these events.
In addition to the President’s Fora, the NYIPLA also held more than 40 webinars and virtual CLEs throughout the year, including a discussion with Judge Lucy Koh from the Northern District of California, a fireside chat with Chief Judge Leonard Stark of Delaware, virtual mixers, a virtual version of our Full-Day Patent CLE, a virtual version of our biosimilar series, among many others.
Of course, we held the virtual Judge’s Dinner.
We were able to combine the 98th and 99th Annual Dinners in Honor of the Federal Judiciary into one.We were able to Honor Judge Roslynn R. Mauskopf as the 17th Outstanding Public Service Award recipient and Chief Judge Sharon Prost of the Federal Circuit as the 18th recipient. Because it was a virtual event, we had to record the speeches and introductions. Katie McCarthy, Feikje, the video crew and I were lucky that Theater-O in Ossining was willing to allow us to record in their studios, as many offices and other buildings would not allow guests due to COVID restrictions. Once we recorded our speeches (in formal dress!) we had to record a cooking segment from my kitchen and the kitchen of Chef Michael Bourquin. I must admit, I was too scared to look at anything other than the final cut – now I know what actors must go through. The event was held on the REMO platform that allowed users to go to virtual tables and talk to colleagues. The event also included the previously mentioned panel on the Judicial Security and Privacy Act. More than 500 people attended this virtual edition of the Judge’s Dinner, which is a smashing success, considering the circumstances. Here is to hoping the next Dinner is in-person (and that I do not have to give any form of a speech).
I hope you are all looking forward to this coming year as much as I am. I am sure that Rob Isackson will be a great President. For those of you waiting for a music quote from me (because I put one in all of my President’s Corner articles), I will zag a bit and move away from Led Zeppelin to the Grateful Dead: “when you get confused, just listen to the music play.” That mantra definitely helps when you are trying to do the first-ever virtual Judge’s Dinner, and I hope it will serve Rob well this year when he begins his panic about organizing the Judge’s Dinner (as if that has not already started).
Diana G. Santos
First Vice President
Heather M. Schneider
Robert M. Isackson
Marc J. Pensabene
John T. Moehringer
Second Vice President
Robert J. Rando
Alicia A. Russo
First Place Winner
2021 Inventor of the Year Award
Dr. George Yancopoulos
Hon. Giles S. Rich Diversity Scholarship is awarded to Kevin Kuate Fodouop, a second year law student at New York University School of Law. His prior background is in computer science and statistics, and before law school he worked in Tech as a startup Product Manager and Head of Growth. He is interested in the intersection between intellectual property, antitrust, and international law, and in the comparative analysis of models of technology governance promoted by China, Europe, and the US. He notably plans on researching the impact of Artificial Intelligence on IP legal and policy frameworks.
May 12, 2020
Dr. Christos Kyratsous
Dr. George D. Yancopoulos, President and Chief Scientific Officer at Regeneron, and Dr. Christos Kyratsous, Vice President of Research, Infectious Diseases and Viral Vector Technologies at Regeneron, will be recognized as the NYIPLA Inventors of the Year. Dr. Yancopoulos holds more than one hundred U.S. patents and is the recipient of numerous awards. Dr. Kyrastous also holds a number of U.S. patents and has been recognized for his scientific achievements. In addition to their recognized work to develop a novel COVID-19 multi-antibody treatment, both men were leading contributors to Regeneron’s development of the first and only treatment specifically approved for Ebola.
In 2020-2021, Drs. Yancopoulos and Kyratsous drove Regeneron’s rapid response to COVID-19, including its discovery and development of an investigational monoclonal antibody cocktail REGEN-COVTM (casirivimab with imdevimab), one of only a few treatments with emergency use authorization (EUA) from U.S. Food and Drug Administration (FDA) for the treatment of certain high-risk non-hospitalized patients with COVID-19.
Under Drs. Yancopoulos and Kyratsous’ leadership of Regeneron’s infectious disease team, this novel treatment made the journey from discovery to regulatory authorization in just 10 months. In early 2020, the team jumped into action to address the rapidly spreading SARS-CoV-2 virus and were prepared to accelerate the development process as soon as the virus’ genetic sequence was available to study. Unlike other researchers who had to seek out blood samples from COVID-19 survivors, Regeneron was able to immediately deploy its unique antibody technology platform, which had been developed and refined over many years and has produced a number of the company’s other FDA-approved medicines. Regeneron’s VelociSuite® technologies enabled the team to generate a large and diverse pool of SARS-CoV-2 virus-neutralizing antibody candidates from the genetically modified VelocImmune® mice.
Later adding additional antibody candidates from human survivor samples, the team evaluated and selected two potent, complementary and non-competing antibodies, casirivimab and imdevimab, to form REGEN-COV. While pre-clinical testing was still ongoing, these antibodies were quickly moved into large-scale manufacturing to prepare for human clinical trials.
Casirivimab and imdevimab bind tightly to different, non-overlapping parts of the spike protein of the SARS-CoV-2 virus, thereby blocking the virus’ ability to infect healthy cells. As this virus continues to mutate and new variants appear, this combination approach has proven to be critical, as the virus would have to change in multiple locations to evade both of the REGEN-COV antibodies. Indeed, other single antibody approaches have since lost potency, while REGEN-COV remains effective in in vitro studies against the major variants of concern, including those first identified in South Africa, Brazil, the UK, New York and California.
In November of 2020, the FDA granted an EUA for REGEN-COV for the treatment of mild-to-moderate COVID-19 in adults, as well as in pediatric patients (weighing at least 40 kg who are at least 12 years of age), with positive results of direct SARS-CoV-2 viral testing and who are at high risk for progressing to severe COVID-19 and/or hospitalization. Recently, in a large Phase 3 trial of non-hospitalized patients, the treatment showed a reduction of hospitalization and death by 70%. Furthermore, the latest Phase 3 data evaluated its use in the prevention setting, showing REGEN-COV reduced the risk of symptomatic infection by 81%. This suggests the cocktail is a vital tool to complement widespread vaccination strategies, and Regeneron is currently seeking FDA approval to expand authorization to include lower doses, subcutaneous administration and for the purpose of COVID prevention.
NYIPLA is pleased to recognize Drs. Yancopoulos and Kyratsous as the 2021 Inventors of the Year for their important work applying Regeneron’s antibody discovery technologies in rapid response fashion to address the deadly COVID-19 pandemic, leading to an important investigational treatment for the novel coronavirus and shaping how drug developers will address future outbreaks.
second Place Winner
2021 NYIPLEF Diversity Scholarship
kevin kuate fodouop
2021 Hon. Giles S. Rich Diversity Scholarship Award
NYIPLEF Diversity Scholarship is awarded to Ananya Pillutla, a second year law student at New York University School of Law. Ananya grew up in Bettendorf, IA before attending the University of Chicago where she graduated with college and departmental honors, earning a B.A. in physics and a minor in molecular engineering. During college, Ananya conducted condensed matter quantum system and quantum materials research under Professor David Awschalom at the University of Chicago and under Professor Joseph Orenstein at Lawrence Berkeley National Lab, for which she won a funding through the US Department of Energy. In college, she was also on the leadership team of the Chicago Maroo nand a member of the mock trial team. In law school, Ananya is Co-President of the Intellectual Property and Entertainment Law Society. She is also an active member of Law Women and the South Asian Law Students Association.
n May 12, 2020, incoming Association President Colman B. Ragan welcomed members and guests during the virtual Annual Meeting of Members. Colman expressed his appreciation for outgoing president, Kathleen E. McCarthy. Followed by NYIPLA Board of Directors and Past Presidents Meeting.
From Columbia Law School, for her paper entitled Global Diagnosis: The Future of Diagnostic Method Patents in Precision Medicine
From St. John's University School of Law, for his paper entitled Crises and Compulsory: Crafting a More Equitable Work-for-Hire Regime for Comic Book Creators
2021 Hon. William C. Conner Writing Competition
2020 - 2021 Committee Reports
Scope of the Committee: To coordinate the activities of the Association relating to preparation and submission of amicus briefs, and to make recommendations with respect thereto to the Board of Directors.
co-chairs: David Goldberg and Irena Royzman
board liaison: Robert Isackson
Over the past year, the Association has continued its strong history of representing its diverse intellectual property constituency before the courts through the activity of its Amicus Briefs Committee, which coordinates the activities of the Association in the preparation and filing of briefs amicus curiae.
Since the last Annual Meeting on May 12, 2020, Amicus Briefs Committee members participated in the preparation and filing of three briefs in the Supreme Court and one brief in the Federal Circuit. In the Supreme Court, the Committee filed a brief on the merits in Minerva Surgical, Inc. v. Hologic, Inc. (regarding whether the equitable doctrine of assignor estoppel should be eliminated or modified). The Committee also filed a brief at the petition stage in American Axle & Manufacturing, Inc., v. Neapco Holdings LLC (regarding patent eligibility under Section 101 of the Patent Act), and in U.S. v. Arthrex, Inc. and Polaris Innovations Limited, v. Kingston Technology Company, Inc. (regarding the constitutionality of the appointment of PTAB administrative patent judges). In the Federal Circuit, the Committee filed a brief in Ericsson, Inc. v. Samsung Electronics Co., Ltd. (regarding whether a U.S. patent litigation involving FRAND rates for standard essential patents could proceed in the face of a Chinese court’s anti-suit injunction).
The Committee has 21 official members, but additional members of the Association and other committees have also participated in our monthly meetings over the past year. Seventeen Association members participated as authors on the amicus briefs discussed above.
During the past year, the Supreme Court ruled in three cases in which the Committee filed briefs on the merits or at the petition stage, namely Minerva Surgical, Inc. v. Hologic, Inc. (the Supreme Court agreed with the Committee’s position that assignor estoppel is a flexible, equitable doctrine that should not be abolished but that the Federal Circuit’s rigid application of the doctrine should be rejected, and the Court clarified that the doctrine applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations made in assigning the patent), U.S. v. Arthrex, Inc. and Polaris Innovations Limited, v. Kingston Technology Company, Inc. (holding that the authority of PTAB administrative judges to issue final decisions that cannot be reviewed by the USPTO Director is unconstitutional but that the constitutional violation is remedied by ensuring that the USPTO Director can review PTAB final decisions), and U.S.P.T.O. v. Booking.com B.V. (agreeing with the Committee’s position that “generic.com” terms are not unregistrable as federal trademarks per se, and that a term styled “generic.com” is an unregistrable generic name for a class of goods or services only if the term has that meaning to consumers).
The Association’s participation in these cases ensured that the intellectual property community’s voice was heard by the courts in their deliberations on these important issues. The Amicus Briefs Committee will continue its commitment to represent the Association’s interests in all areas of intellectual property law in the courts in the year to come.
copyright law & practice
Scope of the Committee: To consider all aspects of United States, foreign and multi-national copyright law and practice, and to make recommendations with respect thereto to the Board of Directors.
co-chairs: Tatsuya Adachi and Mitchell Stein
board liaison: Kathleen McCarthy
The 2020-2021 NYIPLA Copyright Law & Practice Committee comprised 26 attorneys and law students sharing the common goals of advancing dialogue on emerging issues in copyright law, supporting the various copyright-related initiatives of the NYIPLA and its other committees, and building a community of copyright attorneys through regularly scheduled meetings. Throughout the year, the Committee has convened for monthly videoconferences featuring presentations on notable copyright decisions and proposed rulemakings and legislation.
As part of the Committee’s efforts to engage actively in public discourse concerning important copyright-related issues, the Committee accomplished the following in the past year. The Committee participated in direct discussions with the U.S. Senate Judiciary Subcommittee on Intellectual Property concerning proposed revisions to the Digital Millennium Copyright Act, including the submission of detailed comments in response to the proposed revisions, as well as a roundtable discussion with other bar associations and members of the Subcommittee staff. The Committee produced two podcast episodes as part of the NYIPLA PodBites series, including one concerning the Supreme Court’s decision in Georgia, et al. v. Public.Resource.org, Inc. and another concerning the relationship between artificial intelligence and copyright.A third episode concerning NFTs is forthcoming. Finally, the Committee is currently working with the Amicus Brief Committee on the submission of forthcoming amicus brief in support of the respondents in the Supreme Court case, Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., et al.
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.
co-chairs: Steven Purdy and Laura Sheridan
board liaison: Colman Ragan
Scope of the Committee: To consider established and developing intellectual property issues specific to the fashion industry and to make recommendations with respect thereto to the Board of Directors.
co-chairs: Karla Ng-Aspiras and C. Laure Sawaya
board liaison: Cheryl Wang
Hon. William c. Conner writing competition
Scope of the Committee: To publicize and conduct a law school writing competition on an intellectual property law topic, and to make recommendations to the Board of Directors with respect thereto.
co-chairs: Richard Brown and Jenny Lee
board liaison: Gene Lee
Members: Timothy Caine, Stephen Ankrom, William Valet, Palak Sharma, Matthew Abbott, Steve Fairchild, Andrew Cochran, Lauren Hamill
The Committee solicited and reviewed entries for the William C. Conner Writing Competition.The announcement of the competition was posted on the NYIPLA website in September 2020. Based on special efforts by Jenny Lee, the NYIPLA admin team was able to send 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. As a result of a request by several law schools, the Committee extended the deadline for submissions by about three weeks until March 22, 2021.
The Committee received 29 submissions in for the 2020-21 competition. This was an increase of eleven over the previous year, and the most submissions in five years. Part of the increase is likely to due to the decision to extend the deadline. From those submissions, the Committee selected the top two submissions and sent them to the NYIPLA Board for its consideration.The Board agreed with the recommendations of the Committee and selected the following as first and second place submissions:
Winner: Global Diagnosis: The Future of Diagnostic method Patents in Precision Medicine by Charlotte Geaghan-Breiner
Runner-up: Crises and Compulsory: Crafting a More Equitable Work-for-Hire Regime for Comic Book Creators by Ron Eniclerico
The Committee notified the winner and runner-up, and the NYIPLA arranged for the presentations to be made directly to the recipients in an online format, rather than in-person.
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: Paul Bonder
Members: Patrice Jean, Lori Morrison, Margaret Brivanlou, Justine Gozzi, Robb Roby, Kenneth Sonnenfeld
The 2021 Inventor of the Year Award Committee received several multiple high-quality submissions for consideration. It presented its top two choices to the Board for discussion and approval, and the Board agreed with the Committee’s recommendation. At the NYIPLA Virtual Annual Meeting on May 18, 2021, the Association formally announced the 2021 Inventor of the Year Award Winners,Drs. George D. Yancopoulos and Christos Kyratsous, from Regeneron. The Committee Chair would like to recognize and thank the entire Committee for another successful year, and for Committee members’ excellent work researching, reviewing, and ranking the submissions. We also thank our Board liaison, Paul Bondor, for his guidance and support along this process.
Dr. George D. Yancopoulos, the President and Chief Scientific Officer at Regeneron, and Dr. Christos Kyratsous, Regeneron’s Vice President of Research, Infectious Diseases and Viral Vector Technologies, won this year’s Award for their important work applying Regeneron’s antibody discovery technologies in rapid response fashion to address the deadly COVID-19 pandemic, leading to an important investigational treatment for the novel coronavirus. Dr. Yancopoulos holds more than one hundred U.S. patents and is the recipient of numerous awards. Dr. Kyrastous also holds a number of U.S. patents and has been recognized for his scientific achievements. In addition to their recognized work to develop a novel COVID-19 multi-antibody treatment, both men were leading contributors to Regeneron’s development of the first and only treatment specifically approved for Ebola. In 2020-2021, Drs. Yancopoulos and Kyratsous drove Regeneron’s rapid response to COVID-19, including its discovery and development of an investigational monoclonal antibody cocktail REGEN-COVTM (casirivimab with imdevimab), one of only a few treatments with emergency use authorization (EUA) from U.S. Food and Drug Administration (FDA) for the treatment of certain high-risk non-hospitalized patients with COVID-19.
Under Drs. Yancopoulos and Kyratsous’ leadership of Regeneron’s infectious disease team, this novel treatment made the journey from discovery to regulatory authorization in just 10 months. In early 2020, the team jumped into action to address the rapidly spreading SARS-CoV-2 virus, and was prepared to accelerate the development process as soon as the virus’ genetic sequence was available to study. Regeneron was able to immediately deploy its unique antibody technology platform, which had been developed and refined over many years and has produced a number of the company’s other FDA-approved medicines. In November of 2020, the FDA granted an EUA for REGEN-COV for the treatment of mild-to-moderate COVID-19 in adults, as well as in some pediatric patients, with positive results of direct SARS-CoV-2 viral testing and who are at high risk for progressing to severe COVID-19 and/or hospitalization. Drs. Yancopoulos & Kyratsous are among the co-inventors on the US Patent No. 10,787,501, titled “Anti-SARS-COV-2-spike Glycoprotein Antibodies and Antigen-Binding Fragments,” which covers a monoclonal antibody cocktail directed to the SARS-COV-2 spike glycoprotein and methods of using this antibody cocktail for the treatment or prevention of COVID-19 infection.
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: Kevin Moss
board liaison: Alicia Russo
The IP Transactions Committee (“Committee”) has 20 active members. This past year, the Committee conducted multiple conference calls and organized a webinar event. This event took place on November 19, 2020, and was titled “USPTO Presentation on the Patents 4 Partnerships Program." The presentation was given by a speaker from the US Patent and Trademark Office, Paolo Trevisan, who described a new initiative by the USPTO to facilitate connections between patent holders and potential licensees in key technologies.
Members of the Committee participate in monthly phone calls and discuss various IP transactions-related topics. Going forward, the committee plans to continue holding monthly calls, put on another CLE panel or webinar, and organize an in-person meeting, if permitted.
LAW FIRM MANAGEMENT
Scope of the Committee: To consider aspects of law firm management, particularly as they pertain to law firms and practice groups practicing intellectual property, and to publish and present as appropriate on such topics with respect thereto to the Board of Directors.
co-chairs: Mark Bloomberg and Keith McWha
board liaison: Paul Bonder
The NYIPLA Law Firm Management Committee held a number of Committee meetings and presented two webinars. In September 2020, the Committee hosted a CLE presentation titled “Developing Habits to Improve Your Practice and Take Better Care of Your Clients.” NYIPLA participants learned from the presenter, Ms. Denise Gamez of Atticus Advantage Inc., about key strategies for client time management and how client selection can affect the bottom line. Participants at the CLE presentation learned simple, but powerful, tools to take control of the clock. Ms. Gamez discussed some key strategies to avoid time-robbing interruptions. She also discussed how an attorney’s mindset can impact overall firm operation. She identified and discussed four cornerstones or key principles for law firm practice growth, namely, time management, client development/marketing, building a great team and cash flow/profitability.
On February 24, 2021, the Law Firm Management Committee presented a Webinar titled “Best Practices in the COVID Era,” which examined three important issues that can arise while operating from a remote workplace. Andy Berks described potential issues concerning the unauthorized practice of law where the attorney is situated in a state other than the state where he or she is admitted. Robb Roby examined the challenges and complications of maintaining relationships with clients and colleagues in the absence of in-person meetings and interactions. Jessica Copeland outlined various security and confidentiality issues that can arise when an attorney is using computers outside a firm’s network and where people other than firm personnel may be present at the remote location of the attorney. The panel was moderated by Committee Co-Chair Mark Bloomberg.
Scope of the Committee: To evaluate proposed federal and state legislation and rules, including USPTO and Court rules, that may impact patent and other intellectual property issues; to develop positions and recommendations on the proposed legislation and rules for consideration by the NYIPLA Board of Directors; and to communicate the NYIPLA's positions and recommendations to the legislative and rule-making bodies, as approved by the Board.
co-chairs: Anthony Lo Cicero and Jeanna Wacker
board liaison: Robert Isackson
The Legislative Action Committee continues to support the Association by monitoring proposed and pending legislation of interest to its Members and to the intellectual property committee in general. This past year the Committee has examined bills relating to updating certain trademark law provisions (the Trademark Modernization Act); potential liability of on-line providers for trademark and copyright infringement (the INFORM and SHOP SAFE Acts); the establishment of a small claims board at the Copyright Office (the CASE Act); increasing judicial security (the Daniel Anderl Judicial Security and Privacy Act) as well as numerous bills relating to various life sciences-related legislation, including pay-for-delay settlement bills, pharma pricing bills, and other bills proscribing so-called ‘product hopping’ and ‘patent thicketing,’ among others.
Our activities go beyond merely reporting on legislative developments. Members of the Committee have actively participated in various Roundtables (in Washington, DC) related to patent subject matter eligibility and on-line provider liability; and have been outspoken advocates of the judicial security legislation. We anticipate that these activities will continue and expand in the future.
Scope of the Committee: To coordinate and oversee the public dissemination of significant news regarding key, IP-related legislative and court developments, as well as NYIPLA programs, events, activities and significant achievements, and to make reports and recommendations to the Board of Directors with respect to the foregoing.
chair: Brian Doyle
board liaison: Alicia Russo
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 Carl Wischhusen
board liaison: Jonathan Berschadsky
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: Mitchell Epner and Steven Rizzi
board liaison: Marc Pensabene
Privacy, Big Data & Cybersecurity
Scope of the Committee: To consider all aspects of internet and privacy law in the United States, and to make recommendations with respect thereto to the Board of Directors.
co-chairs: Jessica Copeland and David Leichtman
board liaison: Diana Santos
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: Jonathan Auerbach and Lynn Russo
board liaison: Heather Schneider
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 Adamo and Charles Macedo
board liaison: Robert J. Rando
committee coordinator: Christopher Lisiewski
In 2018, the Association established the Patent Trial and Appeals Board (“PTAB”) Committee to provide thought leadership regarding legislation, rules, and litigation practice with respect to post-issuance proceedings heard by the PTAB, and to make recommendations to the Board in connection therewith.Since then, the PTAB Committee has consistently attracted over 30 members (including counsel working in-house and attorneys in private practice) each year and has been active both in developing a forum where practitioners can discuss legal developments affecting post-issuance proceedings, and in providing practical recommendations to improve PTAB practice by submitting comments on U.S. Patent & Trademark Office (“USPTO”) proposed revisions to PTAB rules.
Over the past year, the pandemic reshaped the way lawyers and legal professionals function and communicate on a daily basis.Adapting to this changing landscape, the PTAB Committee began hosting interactive Zoom Video Conference webinars the first Tuesday of each month to discuss new developments in PTAB practice at the USPTO, recent case findings and PTAB proceedings, and other relevant interesting information related to PTAB practice at the USPTO.During these interactive webinars, the PTAB Committee has been thrilled to be joined by numerous distinguished members of the USPTO, including Vice Chief Judges, PTAB Administrative Patent Judges, and PTAB Attorneys.In addition, the PTAB Committee has also partnered with the Amicus Briefs Committee and Young Lawyers Committee of the Association to reach and educate a wider audience on PTAB practice at the USPTO.The PTAB Committee’s activities continue to ensure that the intellectual property community actively debates important issues affecting PTAB practice, and that the intellectual property community’s voice is heard by the USPTO in their deliberations on PTAB-related issues.The PTAB Committee will continue its commitment to represent the Association’s interests at the PTAB in the year to come.
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: Jessica Sblendorio and Margaret Welsh
board liaison: Patrice Jean
The Publications Committee released several issues of the Report over the last year. The Summer 2021 issue featured articles on PTAB success rates, copyright protection in view of Google v. Oracle, and the future of global diagnostic method patents. This issue of the Report as well as previous issues also included reoccurring pieces on noteworthy trademark decisions, media links, moving on and up, and a historian’s article. Issues of the report also included articles on the inventor of the year, recent supreme court decisions, and spotlights on committee chairs.
sipo OF CHINA / US Bar LIAISON council
delegates: Wansheng Liu and Brian Rothery
Scope of the Committee: To consider all aspects of internet and privacy law in the United States, and to make recommendations with respect thereto to the Board of Directors.
co-chairs: Laura Chubb and Mark Schildkraut
board liaison: John Mancini
The trade secret committee continues to be an active and engaging committee. We conduct monthly meetings where we discuss the latest happenings in trade secret law, as well as related topics of interest like intellectual property protection of non-fungible tokens and professional development matters.
This fall we participated in NYIPLA’s Fall One-Day CLE. Our panel provided a view on the rising importance of trade secrets in IP portfolios where we explored the interplay between patents and trade secrets. We had panelists from both in-house and private practice, as well as different industries (both medical devices and computer software/AI).
This year we also collaborated with the Corporate committee to discuss how trade secrets and their rising importance have affected the committee members’ practices. We look forward to collaborating with that committee and others in meaningful ways into the future.
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: Lauren Emerson and Scott Greenberg
board liaison: Kathleen McCarthy
us Bar - European patent office liaison council
delegates: Laura Brutman and Thomas Spath
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: Alexandra Awai and Linnea Cipriano
board liaison: Abigail Langsam
Biologics & Biosimilars: Where Do We Go From Here?
On March 10, 2021, the Women in IP Law and Litigation Committees hosted the Fifth Annual Biosimilars Panel. Industry leaders, including Raymond Doss (Amgen), Karin Hessler (Association for Accessible Medicine), Margareta Sorensen (Amicus Therapeutics), and Rachel Turow (Teva Pharmaceutical Industries Ltd.) discussed the future of biologics and biosimilars under the Biden administration, changes to the Purple Book, and important developments in case law and legislation during the pandemic. Huiya Wu (Goodwin Procter) moderated this lively and informative discussion. Members of both committees also collaborated with the speakers to prepare detailed and well-received written materials. This virtual Biosimilars Panel was well-attended and enjoyed by many NYIPLA members and non-members.
Celebrating the Legacy of Justice Ginsburg
On March 24, 2021 in honor of Women's History Month, the Women in IP Law Committee hosted a discussion with former Ginsburg Supreme Court clerks to celebrate the life and accomplishments of the late Justice Ginsburg. Joshua Bone, Kelsi Corkran and Ruthanne Deutsch shared some of the lessons they learned in their time working with the Notorious RBG, and their view of her impact on the legal industry and beyond. NYIPLA members and Ginsburg admirers were treated to an insider's view of the Justice's scholarship and perspectives. Attendees recalled the personal impact of Justice Ginsburg's phenomenal work and the example she set over decades of service.
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: Eric Greenwald and Margaret Mortimer
board liaison: Marc Pensabene
This past year, the Young Lawyers Committee (“YLC”) focused on developing connections within our greater IP community and continued to host multiple innovative programs in the virtual environment. YLC kicked off the 2020-2021 year with its annual happy hour networking event co-sponsored with the Corporate Committee. The social event included a lively panel discussing in-house career paths, with Corporate Committee co-chairs Laura Sheridan and Steven Purdy moderating. YLC also hosted an IP Career Roadshow with the Deane Law School at Hofstra this Fall, building on our first Roadshow event at Hofstra in 2017.This year, the Roadshow featured Robert Rando of Taylor English & Duma, Scott Forman of WilmerHale, Melissa Schoffer Farber of BroadwayHD and Michael Sparling of 1-800-Flowers.com.
During the Winter, YLC hosted the social and networking mixer for NYIPLA’s 2020 Fall Patent CLE Series featuring Wilson Sonsini Partner and former PTAB Judge, Hon. Lora Green. In February, YLC organized a first-of-its-kind, IP Student Note Poetry Slam event. This coffeehouse style program highlighted recently published works by law school students and recent law school graduates with a focus on IP-related topics. Participants included last year’s winners of the Conner Inn Writing Competition, Rachel Horn and Danielle Marino. YLC closed out this year’s virtual season with a litigation finance roundtable focused on third-party financing strategies for unlocking monetization potential. Panelists included industry leaders Burford Capital and practioners alike.
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.
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Thursday, April 22, 2021
Message from NYIPLA President Colman B. Ragan – 99th Annual Judges Dinner
On April 22, 2021, the NYIPLA held both the 98th and 99th Annual Dinners in Honor of the Federal Judiciary, albeit in a virtual format. The event was hosted on the Remo virtual event platform, which was fantastic and we have received many compliments from the attendees on the format.
The Judges Dinner started off with a riveting panel discussion between Judge Esther Salas of New Jersey and Judge Richard Sullivan of the Second Circuit regarding the Daniel Anderl Judicial Privacy and Security Act, introduced by Sens. Menendez, Booker and Graham in the last Congress. NYIPLA President Colman Ragan moderated the panel as the Judges explained the need for improved protections (such as removal of personally identifying information from public databases) for federal judges in the wake of tragedies such as that which befell Judge Salas last summer. The NYIPLA has supported this legislation, and the judges showed their appreciation by providing such a spirited and informative discussion.
Kathleen McCarthy and Colman Ragan then delivered short speeches and presented the 18th and 19th OPS awards to Judge Roslynn Mauskopf, Director of the Administrative Office of the Courts, and Chief Judge Sharon Prost of the Federal Circuit, respectively. Both honorees told amazing stories of their, sometimes harrowing, life journeys to public service. We were truly honored that both judges accepted the award.
The night was also interspersed with several songs from the musical Hamilton. Thank you to King & Spalding LLP for sponsoring such great entertainment. We were also entertained by Chef Michael Bourquin trying to teach Colman Ragan how to cook several recipes submitted by judges. And, of course there was networking on the Remo platform, which allowed members and guests to go to virtual tables on one of several floors in the ballroom, beer garden, and lounge room. In the beer garden and lounge rooms, there were also virtual beer tastings of four local beers and a tutorial on how to mix a cocktail.
For the 100th Judges Dinner, we hope to be back in person, but for now, we were glad to see everyone who came to this year’s virtual version of the Judges Dinner.
99th Annual Dinner in Honor of the Federal Judiciary
Discussion with Chief Judge Leonard P. Stark
May 5, 2020
The Programs Committee organized a webinar on May 5, 2020 with the Honorable Leonard P. Stark, Chief Judge of the United States District Court, District of Delaware to discuss the impact of the COVID-19 pandemic on practice before the District Court for the District of Delaware. Judge Stark discussed developing rules and procedures for handling the court’s busy docket and ways the court conducted hearings during these unprecedent times. The webinar was moderated by Heather Schneider, Partner at Willkie Farr & Gallagher LLP.
Discussion with Director Andrei Iancu, USPTO
June 4, 2020
The Programs Committee organized on webinar on June 4, 2020 with Mr. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The webinar was moderated by NYIPLA President, Colman B. Ragan. Director Iancu discussed the impact of the COVID-19 pandemic on the USPTO and its impact on deadlines before the USPTO. Director Iancu explained that the USPTO has been able to continue its full workload and had existing infrastructure to transition to full remote working during this time.
The July 2020 Amendments to the Federal Circuit Rules of Practice
July 8, 2020
On July 8, 2020, the Patent Litigation Committee presented a panel discussion entitled, “July 2020 Amendments to the Federal Circuit Rules of Practice.” This panel provided an overview of the Federal Circuit’s numerous rule changes and updates to various forms, and perspectives on their impact on Federal Circuit appeals and practitioners. The panel included Mark C. Fleming of WilmerHale LLP, Richard M. Koehl of Hughes Hubbard & Reed LLP and Jennifer Rea Deneault of Paul, Weiss, Rifkind, Wharton & Garrison LLP. The panel was well-received and provided a concise summary for appellate practitioners.
Discussion with Judge Lucy H. Koh
July 14, 2020
On July 14, Committee Co-Chair Jon Auerbach moderated a discussion with Hon. Lucy H. Koh, District Judge for the Northern District of California about the Court’s response to COVID-19 and its current practices.
Alternative Dispute Resolution in the COVID-19 World: A Panel Discussion
July 29, 2020
On July 29, Committee Co-Chair Lynn Russo moderated a panel discussion on alternative dispute resolution in the COVID-19 world. The panelists included Judge Garrett Brown, Judge Elizabeth Laporte, James Amend, and P.J. Murphy.
Pandemic Impacts on Trademark Enforcement, Licensing
Breaches/Force Majeure, and Brands in Bankruptcies
August 5, 2020
On August 5, 2020, the NYIPLA Trademark and Programs Committees presented a CLE Webinar on “Pandemic Impacts on Trademark Enforcement, Licensing Breaches/Force Majeure, and Brands Bankruptcies.” The program was to address the issue that the pandemic had reduced access to the courts, thereby affecting trademark policing and enforcement. In addition, some trademark licensees in hard hit industries such as restaurants, hotels, manufacturing and other service business would be impacted by licensees’ difficulties in meeting minimum royalties or sales requirements unless the licensee could avail themselves of force majeure clauses or the impossibility/frustration defense. Finally, the wave of bankruptcies from the pandemic was affecting brand owner-licensors and resellers, sometimes leaving the disposition of branded inventories to be resolved in the bankrupt’s estate. Richard Levy, Jr., a partner in Prior Cashman LLP’s Bankruptcy and Creditors’ Rights Group, discussed the impact of the Supreme Court’s 2019 decision in Mission Products Holdings, Inc. v. Tempnology, LLC, 587 U.S. __, 139 S. Ct. 1652 (2019). This pre-pandemic case declared that a bankrupt licensor’s “rejection” of an unexpired trademark license under federal bankruptcy law operates only as a breach of the license, not as termination, and that the licensee may continue to use the mark in accordance with the contractual terms. In the pandemic context, the bankruptcy of the licensee or reseller could lead to increased rejections of trademark licenses which would also be treated as breaches but not as terminations, but because the license terms and restrictions would remain enforceable just as they existed outside bankruptcy, the bankrupt-licensee could face difficulties in disposing of branded merchandise through regular sell-offs or bulk sales without the licensor’s further consent. Cameron S. Reuber, a partner at Leason Ellis LLP, presented on enforcement of trademark rights and other IP in the midst of the pandemic, which limited the functioning of the courts. As he noted, IP Owners can still file lawsuits, but every other aspect of the process has been upended, making preliminary relief unlikely and progress on the merits much less predictable and slower to achieve. As one federal court in Chicago explained after summarizing the shutdowns and grave limitations cause by the pandemic, a TRO against sales of counterfeit unicorn drawings would be denied without prejudice pending an opportunity for a hearing with a greater showing of harm. In contrast, a motion for preliminary injunction of sales of a product directly tied to the pandemic, N95 masks, at an exorbitant price by a defendant likely to be confused with authorized resellers, was granted in less than 30 days. William Thomashower, a Counsel in Pryor Cashman’s IP Group, discussed force majeure and related contract defenses in trademark licensee breaches caused by the pandemic. The word “pandemic” was not routinely included in the list of events in force majeure clauses, which under New York law, ordinarily provide a defense only for specifically stated events that prevent the party’s performance. At the same time, such clauses often refer to “governmental laws and regulations” which would be applicable when state governments issued pandemic shut down orders or other restrictions affecting contract performance. “Acts of God” was another commonly listed event with potential applicability. In contrast, under New York law, performance rendered unprofitable or even likely to result in bankruptcy is not cognizable as an impossibility defense. He noted that future contract drafting would likely now make use of the word “pandemic” as a specified event in force majeure clauses.
The Growing Scourge of Counterfeiting and Strategies to Tackle It
August 11, 2020
On Tuesday August 11, 2020, James Bikoff of Smith, Gambrell & Russell LLP and Peter Sloane of Leason Ellis LLP participated in a lively panel Q&A entitled "The Growing Scourge of Counterfeiting and Strategies to Tackle It". James and Peter discussed new trends in counterfeiting-scope, harm and remedies. Specific topics included how the nature of counterfeiting has changed in recent years, the ins-and-outs of working with customs, when to consider cooperating with competitors as well as potentially promising legislation on the horizon.
Looking at Booking
August 13, 2020
On August 13, 2020, the Trademark Law and Practice Committee, as part of its virtual half-day program, presented a panel discussion on the Supreme Court’s June 2020 decision in Booking.com which addressed the registrability and protectability of “generic.com” marks. Notably, the Trademark Law and Practice Committee filed an amicus brief in support of the respondent, Booking.com, which ultimately prevailed. The panelists included Frank Misiti of Rivkin Radler LLP and Bruce Baber of King & Spalding LLP and was moderated by Michael Cannata of Rivkin Radler LLP. The panelists addressed many aspects of the decision, including, the importance of consumer perception in evaluating “generic.com” marks, the probative value of consumer survey evidence, and how the decision will affect the examination of .com marks going forward. The panel discussion was well-received and was followed by several thought-provoking questions from the audience.
In-house Counsel Happy Hour
September 9, 2020
On September 9, 2020, the Corporate Committee held its annual in-house counsel happy hour, and invited the Young Lawyers Committee to join. The virtual event featured a conversation with Corporate Counsel members to learn about working in-house and their career paths to get there. Corporate Committee Co-Chairs Laura Sheridan (Google) and Steven Purdy (IBM) moderated the discussion, and members Michele Antis (PwC) and Joshua Harris (Burford Capital), along with other in-house members, shared their insights with the group. The Corporate Committee appreciated the opportunity to engage with the Young Lawyers Committee.
Developing Habits to Improve Your Practice &
Take Better Care of Your Clients
September 30, 2020
The Law Firm Management Committee in September 2020 hosted a CLE presentation titled “Developing Habits to Improve Your Practice and Take Better Care of your Clients.” NYIPLA participants learned from the presenter, Ms. Denise Gamez of Atticus Advantage Inc., about key strategies for client time management, and how client selection can affect your bottom line. Ms. Gamez over the past ten years has advised law firms and attorneys on how to grow their practices in a sustainable way. She has presented at numerous legal conferences, published several articles on law firm practice growth and assisted many law firms with their practices. Participants at the CLE presentation learned simple, but powerful tools to take control of the clock. Ms. Gamez discussed some key strategies to avoid time-robbing interruptions. Also discussed was how an attorney’s mindset can impact overall firm operation. Four cornerstones or key principles for law firm practice growth was explored, namely, time management, client development/marketing, building a great team, and cash flow/profitability. Strategies for each of these key principles were further discussed.
Report on Facebook v. Windy City and its Impact on PTAB Practice
October 6, 2020
On October 6, 2020, the PTAB Committee sponsored an interactive Zoom Video Conference Meeting to discuss the Federal Circuit’s opinion in Facebook v. Windy City Innovations, LLC, which issued on September 4, 2020. Specifically, the Federal Circuit held, inter alia, that that there is no such thing as same party joinder in inter partes reviews and Section 315(c) is about joinder of parties to a proceeding and not joinder of issues. The decision also discusses a host of related decisions on institution, consolidation, appealability and non-appealability of PTAB decisions, POP panel decisions, the Administrative Procedures Act, Chevron deference, Skidmore deference and obviousness. The PTAB Committee was honored to feature Hon. William M. Fink, Vice Chief Administrative Patent Judge at the USPTO. The meeting also featured speakers Charles R. Macedo, PTAB Committee Co-Chair and Partner at Amster, Rothstein & Ebenstein LLP, Kenneth R. Adamo, PTAB Committee Co-Chair and Principal Attorney at Law Offices of Kenneth R. Adamo, Brian Murphy, PTAB Committee Member and Partner at Haug Partners, Christopher Lisiewski, PTAB Committee Member and Associate at Amster, Rothstein & Ebenstein LLP, and Robert J. Rando, Board Liaison and Partner at Taylor English Duma LLP. The speakers discussed the various holdings in the Windy City decision and several related and follow-on decisions before concluding the meeting with a lively conversation open to all attendees.
Diverse Careers in Intellectual Property Law
October 13, 2020
On October 13, 2020, NYIPLA and Hofstra Law School hosted “Diverse Careers in IP Law.” Attorneys practicing in a broad range of intellectual property fields discussed the opportunities available in today’s intellectual property marketplace and how law students can navigate their career paths. The program featured Melissa Schoffer Farber, General Counsel at BroadwayHD, Michael Sparling, Vice President & Assistant General Counsel at 1-800-Flowers.com, Robert Rando, Partner at Taylor English & Duma, and Scott Forman, Senior Associate at WilmerHale.
NYIPLA Presidents' Forum
October 21, 2020
In the first of two President’s Forums, NYIPLA President Colman Ragan showcased his Led Zeppelin fandom and joined NYIPLA Immediate Past President Katie McCarthy in moderating a panel of experts addressing music copyright law, with the focus on the 2020 Ninth Circuit en banc decision involving “the greatest rock song of all time,” STAIRWAY TO HEAVEN. Skidmore v. Zeppelin, 952 F. 3d 1051, 1055 (9th Cir. 2020). For 90 minutes, the invited audience of NYIPLA members and New York City area law students were privileged to hear a diverse array of panelists discuss and debate the challenges presented in music cases and how music infringement assessments may differ from other copyright infringement assessments such as those involving software, written works, photographs, and works of visual art. We heard a judicial perspective from the Hon. Denny Chin, Circuit Judge, United States Court of Appeals for the Second Circuit, as well as the perspective presented in an amicus brief by the U.S. Copyright Office from Nicholas Bartelt, Attorney Advisor at the Copyright Office. We also heard from Prof. Christopher Buccafusco, Professor of Law, Benjamin N. Cardozo School of Law, who along with other professors of law, also submitted an amicus brief. Brian Caplan, Member & Partner, Reitler Kailas & Rosenblatt LLC, presented the music litigator’s point of view, while Alisa Coleman, COO, ABKCO, and Chair, Mechanical Licensing Collective, gave the point of view of a music licensing collective. Dr. E. Michael Harrington, Professor in Music Copyright and Intellectual Property, Berklee College of Music, and a frequent expert witness in copyright cases, was able to further explain and put into historical and musical context the chromatic scale at issue in the STAIRWAY TO HEAVEN case from the point of view of a musicologist. Last, but certainly not least, we also listened to segments of the songs at issue. Copyright committee members Jeremy King and Joshua Weigensberg were instrumental in helping assemble our esteemed panel.
Arthrex at the Supreme Court
November 3, 2020
On November 3, 2020, the PTAB Committee hosted a Zoom Video Conference Meeting to discuss the Supreme Court’s decision to grant certiorari in a trio of related petitions involving the Federal Circuit’s October 31, 2019 decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2020). With a discussion led by Charles R. Macedo, PTAB Committee Co-Chair and Partner at Amster, Rothstein & Ebenstein LLP, and Chandler Sturm, PTAB Committee Member and Associate at Amster, Rothstein & Ebenstein LLP, the session began with a refresher of the Federal Circuit’s decision, how that decision is being criticized and challenged, and the questions the Supreme Court took for review—whether PTAB APJs were principal or inferior officers for purposes of the Appointment Clause of the U.S. Constitution, and if so, if the “fix” worked. The PTAB Committee ended its meeting with a discussion on the USPTO’s request for comments on new proposed rulemaking with respect to PTAB Practice regarding serial petitions, parallel petitions, and proceedings in other tribunals.
Fall Patent CLE Series
November 10, 2020
On November 10, 2020, the PTAB Committee hosted an interactive panel at the NYIPLA’s Fall Patent CLE Series: Mock PTAB Hearing: How to Handle Difficult Issues that Come Up During a PTAB Trial. PTAB trials are similar to but unlike other types of hearings that patent lawyers often participate in at trial court, the Federal Circuit or even PTAB appeals. They have unique guidelines based on the authority granted and not granted to PTAB APJs under the Patent Act, USPTO Regulations and Guidance, PTAB practice, and Federal Circuit and Supreme Court cases. The panel walked through portions of a mock PTAB Trial including, the Pre-Hearing Conference, Petitioner’s Argument, Patent Owner’s Argument, and Rebuttal. The panel members raised some difficult examples of issues that may come up during a PTAB Trial including, handling of confidential information, objections to newly presented evidence, and waiver, with suggestions and commentary on how to address the issues at hand. The panelists leading the discussion included Brian Murphy, PTAB Committee Member and Partner at Haug Partners in the role of PTAB APJ, Charles R. Macedo, PTAB Committee Co-Chair and Partner at Amster, Rothstein & Ebenstein LLP in the role of Petitioner’s Counsel, Kenneth R. Adamo, PTAB Committee Co-Chair and Principal Attorney at Law Offices of Kenneth R. Adamo in the role of Patent Owner’s Counsel, and Christopher Lisiewski, PTAB Committee Member and Associate at Amster, Rothstein & Ebenstein LLP in the role of PTAB Clerk.
Social Mixer - This Is Your Chance to Really Understand the PTAB
November 12, 2020
On November 12, 2020, the Young Lawyers Committee hosted a discussion with former Patent Trial and Appeal Board (“PTAB”) judge and current Wilson Sonsini partner Lora M. Green. She provided a historical perspective on the PTAB as well as practice tips. She also provided her personal perspective on becoming an administrative patent judge. Jennifer Rea Deneault of Paul, Weiss, Rifkind, Wharton & Garrison LLP facilitated the discussion. This social mixer had strong audience engagement. The questions were practical and lead the program in interesting directions that covered a wide range of topics. The event was part of the Fall Patent CLE Series.
PTAB Committee Tackles Discretionary Denials
December 1, 2020
On December 1, 2020, the PTAB Committee hosted a Zoom Video Conference Meeting to discuss the PTAB’s discretion to institute trials before the PTAB and the USPTO’s request for comments on the new proposed rules with respect to discretionary denials. The session began with a presentation discussing the current state of the law related to the PTAB’s discretionary denial power and then delved into whether the proposed rules make sense. The discussion was then opened to committee members to share their thoughts and opinions. Charles R. Macedo, PTAB Committee Co-Chair and Partner at Amster, Rothstein & Ebenstein LLP, and Devin Garrity, PTAB Committee Member and Associate at Amster, Rothstein & Ebenstein LLP led the discussion.
Women in IP Law Trivia Night
December 16, 2020
On December 16, 2020, the Women in IP Committee held an IP Trivia Night. The event was held virtually, and was hosted and moderated by attorneys from Goodwin. Teams of competitors gathered in break out rooms to brainstorm tough categories of questions, including US legal history, notable women jurists, and classic holiday movies. Those in attendance laughed, learned, and reconnected with other NYIPLA members.
Update on Latest PTAB Rules and Precedential Decisions
January 5, 2021
On January 5, 2021, the PTAB Committee hosted a Zoom Video Conference Meeting to discuss the new rules issued by the Patent and Trademarks Office as well as the newly-designated precedential PTAB decisions involving real party-in-interest, copycat petition, and institution issues. The PTAB’s decisions in RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) and SharkNinja Operating LLC, v, iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential) are helpful clarifications of PTAB practice now that the Federal Circuit has confirmed that decisions regarding time bars of petition and real party in interest are no longer considered appealable to the Federal Circuit. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential) is another helpful clarification on the limited scope of joinder motions. In addition, Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential) and Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential) provided insight on the PTAB’s institution analysis under the Fintiv factors. The PTAB Committee also discussed the USPTO’s final rules issued in December 2020 codifying PTAB’s existing practices for burdens of persuasion in motions to amend (85 Fed. Reg. 82923 (Dec. 21, 2020)), as well as rules of practice for instituting an IPR or PGR on all challenged claims and grounds, patent owner responses and sur-replies, and presumptions on institution (85 Fed. Reg. 79120 (Dec. 9, 2020)). Charles R. Macedo, Partner at Amster, Rothstein & Ebenstein LLP and PTAB Committee Co-Chair, and Chandler Sturm and Devin Garrity, Associates at Amster, Rothstein & Ebenstein LLP and PTAB Committee Members, led the discussion before opening conversation regarding the practical application of these decisions and rules to all attendees.
Paths to Equity & Inclusion in Intellectual Property Law
January 28, 2021
On January 28, 2021, the New York Intellectual Property Law Education (NYIPLEF) in collaboration with the NYIPLA co-hosted a panel discussion on efforts to create more inclusivity in the field of IP law. The panel was moderated by Jasmine Whyte, a student at Columbia Law School and winner of the 2020 NYIPLEF Diversity Scholarship. The NYIPLEF Diversity Scholarship was established to provide funds to talented and diverse law students pursuing a career in the IP profession. The panel also included Serena Farquharson-Torres, Senior Corporate Counsel, Innovation Law at Bristol Myers Squibb; Melvin Garner, a Partner at Leason Ellis; Sharonmoyee Goswami, a Partner at Cravath Swaine & Moore; and Bismarck Myrick, Director of the Office of Equal Employment Opportunity and Diversity at the USPTO. The panel of experienced professionals discussed their career journeys and the hurdles and challenges that they have experienced as diverse members of the IP community. The panel also discussed current efforts and advice on creating more inclusivity in the field of Intellectual Property law at law firms, the courts, and at the USPTO. The program offered one CLE credit that qualified for the diversity, inclusion and elimination of bias in the legal profession New York CLE requirement. The New York Intellectual Property Law Education Foundation NYIPLEF is a charitable organization 501(c)(3) whose mission is to promote intellectual property law education to diverse, outstanding law students in the New York area. The Foundation was established in 2015 but functioned prior as a direct scholarship from the New York Intellectual Property Law Association.
PTAB Committee Tackles PTAB’S Fast-Track Appeals Pilot Program
February 2, 2021
On February 2, 2021, the PTAB Committee sponsored an interactive Zoom Video Conference Meeting and was thrilled to have Lead-APJ Dave McKone and Vice Chief Judge for Engagement Janet Gongola join the PTAB Committee to discuss the PTAB’s Fast-Track Appeals Pilot Program that was started in July 2020 for ex parte appeals. Under the Fast-Track Appeals Pilot Program, appellants can have their ex parte appeals advanced out of turn. Appellants simply file a petition to request fast-track review of their ex parte appeal and pay an additional petition fee. The PTAB has set a target of issuing a decision within six months from the date the petition is granted, and the ex parte appeal is entered into the pilot program. Lead APJ Dave McKone and Vice Chief Judge for Engagement Janet Gongola led the discussion providing information how the program functions and statistics about appeals that have applied to take part in the program. They also sought feedback about the program since the 1-year Pilot Program had reached the six-month point before discussion was opened to all attendees to share their thoughts and opinions on important issues related to the program.
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