2023 Intellectual Property Law Section Program

8:55 Welcome and Introductions

9:00 IP Due Diligence in Mergers and Acquisitions

Spencer C. Joffrion, Dechert LLP, New York, NY

Discuss the legal and practical considerations for conducting intellectual property due diligence in the context of a merger and acquisition, including issues related to confirming completeness and accuracy of disclosure schedules, confirming ownership of registered and unregistered intellectual property, and inbound and outbound licenses.

10:00 Break

10:10 Inequitable Conduct Lives!

Thomas L. "Tom" Irving, Finnegan Henderson Farabow Garrett & Dunner LLP, Washington, DC

Some thought the 2011 en banc Therasense Federal Circuit decision sounded a death knell to the defense of inequitable conduct, but that was not the case! The defense is still alive, as are its cousins "unclean hands" and prosecution laches, and they continue to have broad applications, as seen in several recent cases. Review these cases and hear examples of both successful and unsuccessful arguments. Then learn about the latest notice from the United States Patent and Trademark Office (USPTO) regarding disclosures to other agencies.

11:10 Break

11:20 Artificial Intelligence (AI) Meets Intellectual Property

Lincoln S. Essig, Knobbe Martens, Washington, DC

This session focuses on the relationship between IP and AI, including a technological overview of machine learning (ML) and a legal overview of the current state of IP law with respect to ML. Specifically, we discuss what aspects of ML are/are not protectable under current IP statutes, rules and case law.

12:20 Lunch Break

1:20 Trademark Hot Topics

Emily M. Haas, Michael Best & Friedrich LLP, Raleigh

Examine a survey of recent trademark case law, including recent decisions and current hot-topic cases in the courts. Then cover what we have learned thus far from the implementation of the Trademark Modernization Act and trademark trends at the USPTO and discuss best practices in light of these recent developments.

2:20 Break

2:30 Patent Law Updates

Lance A. Lawson, Burr Forman McNair LLP, Charlotte
Richard T. Matthews, Williams Mullen, Raleigh

Review the most significant updates in IP law from 2022.

3:30 Break

3:40 Untangling the Web: Understanding and Adapting to Recent Data Privacy and Security Developments^*‡

Graham T. Dean, Troutman Pepper Hamilton Sanders LLP, Raleigh
James "Jim" Koenig, Troutman Pepper Hamilton Sanders LLP, New York, NY

Last year, comprehensive privacy legislation was introduced in twenty-seven state legislatures and adopted in Utah and Connecticut. At the federal level, data privacy and security issues were the topic of numerous Congressional hearings and related legislation achieved an unprecedented level of bipartisan support. These developments and new waves of privacy and security-related litigation have contributed to an already complex web of legal considerations and ethical obligations for lawyers. During this CLE presentation, we attempt to “untangle the web”, addressing these developments and providing ten practical steps lawyers can take to comply with the applicable regulatory and ethical obligations. We also provide practical guidance related to protecting personal information obtained from customers/clients, including insights generated from recent cyberattack trends.

4:40 Adjourn

* Indicates portion providing Ethics/Professional Responsibility credit
‡ Indicates portion providing Technology Training credit

Thank you

Thank you for joining us for 2023 Intellectual Property Law Section Program.

Description

The evolving landscape of intellectual property continues to impact a variety of different areas.

Contributors

Graham T. Dean

Graham T. Dean is an associate at Troutman Pepper Hamilton Sanders LLP in Raleigh, and part of the Privacy + Cyber Practice Group. In this role, he assists clients across various industries with issues related to data privacy. He has experience handling matters relating to the CCPA, CPRA, FCRA, CDPA, CPA, PIPA, LGPD, and a plethora of other privacy and banking secrecy laws in the Americas.

Prior to joining the firm, Graham worked as Americas Legal Data Protection counsel at Credit Suisse. At Credit Suisse he also participated in a sixteen-month long development program, during which he worked on the following general counsel teams: Equity Derivatives, Contract Risk Advisory, and Bank Regulatory. Graham's in-house background allows him to better understand the privacy-related challenges faced by our clients and provide actionable advice.

Dean earned his B.A., summa cum laude, in Political Science from North Carolina State University and his J.D. from the University of North Carolina School of Law. While attending law school, he competed on the Corporate Moot Court Team and served as the institute editor for the North Carolina Banking Institute Journal. Graham is a Certified Information Privacy Professional in the United States (CIPP/US).

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Lincoln S. Essig

Lincoln S. Essig is a partner at Knobbe Martens in Washington, DC. With a focus on all aspects of patent prosecution and counseling, licensing, and due diligence, Lincoln is totally dedicated to helping businesses at every phase of development build valuable patent portfolios in the U.S. and abroad. His industry skills are extensive, and include medical devices, software, electronics, and information technology, among others. He offers honed experience in big data analytics, data storage and backup, healthcare IT, non-invasive patient monitoring, medical device guidance, prosthetics, consumer electronics, analog circuits, and internet security.

A Super Lawyers magazine "Rising Star," Lincoln goes out of his way to understand his clients' businesses and distinct technologies. He is appreciated for crafting legal strategies that are uniquely tailored for each client's patent portfolio and align with their commercial goals. Responsive, hard-working, diligent and conscientious, Lincoln's personal drive to excel is reflected in the consistently high-quality work product he provides and his immutable commitment to safeguarding creativity.

Lincoln is particularly effective at taking the abstract and difficult aspects of complex innovations and distilling them into understandable concepts. He immerses himself in the technologies of his clients and leverages that knowledge to work productively with the Patent Office and expedite the patenting process. He is able to hone in on core issues that, once resolved, result in a far more streamlined and efficient approval process.

Prior to the law, Lincoln worked as an electrical engineering assistant at Space Dynamics Laboratory. While attending law school, he served as a law clerk for Senator Orrin G. Hatch on the U.S. Senate Judiciary Committee, working on intellectual property issues.

Lincoln earned his B.S., magna cum laude, in Electrical Engineering from Utah State University and is J.D. from The George Washington University Law School.

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David J. Grant

David J. Grant is a Shareholder and Patent Attorney with Stanek Lemon Crouse + Meeks PA in Raleigh. He manages patent prosecution in various domains including software, communications, semiconductors, electrical engineering, mechanical technology, medical devices, and emerging technologies such as artificial intelligence and machine learning. His expertise extends to securing patents for a wide array of healthcare innovations, including digital imaging systems, wearable health monitoring devices, computer-assisted surgical tools, and consumer healthcare technologies such as mobile health applications, electronic personal care devices, and interactive patient care systems.

In his practice, David provides counseling, licensing, and due diligence, supporting clients from startups to large corporations in developing strong patent portfolios both domestically and internationally. His approach involves a deep dive into each client's business and technology to devise patent strategies aligned with their unique commercial objectives. His commitment to excellence is evident in his tailored counsel and unwavering dedication to protecting innovation.

David earned his B.A., summa cum laude, in Electrical Engineering from North Carolina State University. While working on his undergraduate degree, he worked as an engineering co-op for a Fortune 250 power generation and supply company. He earned his J.D. from the University of North Carolina School of Law, where he served on the board of the Intellectual Property Association.

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Emily M. Haas

Emily M. Haas is Senior Counsel at Michael Best & Friedrich LLP in Raleigh. She focuses her practice in the areas of trademark and copyright law. She counsels clients on prosecution, portfolio management, clearance, enforcement, and dispute resolution, helping businesses protect and defend their valuable brand assets.

In the U.S., Emily has represented clients before state and federal trial and appeals courts, including the North Carolina Supreme Court, as well as the United States Patent and Trademark Office, and the Trademark Trial and Appeal Board. She also works closely with clients to help coordinate international protection programs around the world, including a number of major brands with significant IP portfolios. Emily has particular expertise representing clients in the fintech, pharmaceutical, tourism, and retail sectors.

Emily has built a strong enforcement and defense practice in the ever-evolving internet, social media, and e-commerce space. Additionally, she advises and defends clients with respect to trade secret and unfair competition disputes, contracts and related business torts, and litigation.

Prior to joining Michael Best, Emily was an associate and later a member of a Cary law firm where she focused on trademark, copyright, and patent litigation.

Emilee earned her B.S./B.A., magna cum laude and with departmental honors, in Chemistry and Computer Science from Gettysburg College, her M.S. in Chemistry from the University of North Carolina at Chapel Hill and her J.D., cum laude, from Campbell University Norman Adrian Wiggins School of Law.

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Seth L. Hudson

Seth L. Hudson is with Clements Bernard Walker PLLC in Charlotte. He was recently a member at Nexsen Pruet LLC in Charlotte.

Seth is a registered patent attorney with over 17 years of experience in all phases of international and domestic patent matters. His practice includes patents, trademarks, trade secrets, copyrights, and non-competes. Seth's experience consists of patent and trademark preparation and prosecution before both the United States Patent and Trademark Office and foreign patent and trademark offices in the chemical, mechanical, and electro-mechanical fields.

Seth regularly litigates complex patent, trademark, and copyright infringement and trade secret misappropriation cases. He litigates cases through discovery, trial, and appeal in state and federal courts in North Carolina, South Carolina, Missouri, New Jersey, New York, Texas, Georgia, Idaho, and California.

Seth also works with clients in areas such as data security, trade secret, advertising, and non-competition issues, including best practices to minimize litigation risks. He regularly conducts trade secret audits and advises his clients on strategies to employ to protect their trade secrets and drafts appropriate nondisclosure and nonuse agreements for protected disclosure.

Seth earned his B.S. in Chemistry and Mechanical Engineering from North Carolina State University and his J.D. from University of Richmond School of Law.

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Thomas L. "Tom" Irving

Thomas L. "Tom" Irving is a partner at Finnegan Henderson Farabow Garrett & Dunner LLP in Washington, DC. He has some 47 years of experience in intellectual property law. His U.S. pharma practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, reissue, and reexamination. In addition to advising on procuring strong U.S. patents, Tom counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability, supplemental examination, and validity analysis. He has served as lead counsel in numerous patent interferences, reissues, and reexaminations; as lead counsel in numerous AIA post-grant proceedings; and as an expert witness in patent litigation and patent procurement.

Tom's current practice is heavy on due diligence analysis, as well as AIA post-grant proceedings, including how to evaluate and enhance the strength of U.S. patents in the pharmaceutical space to protect against post-grant challenges. Tom directed the preparation of two highly complex IPRs, which worked out well for the innovative pharma patent owner. Tom also focuses on 35 U.S.C. § 112(f), supplemental examination, and Sanofi v. Watson-type claims, all of which he considers to be under-utilized. He has been extensively involved in counseling, due diligence, prosecution and prelitigation for matters involving major drugs.

For more than 25 years, Tom served as principal teacher of the Patent Resources Group (PRG) Chemical Patent Practice course, a comprehensive course on U.S. chemical patent law taught twice a year, and he coauthored the multi-volume treatise used in the course. He originated PRG's Orange Book and Due Diligence courses, which helped prepare patent owners, through effective application drafting and prosecution, to withstand the rigors of AIA's inter partes review (IPR) and post-grant review (PGR). He presents analyses of U.S. Court of Appeals for the Federal Circuit and Patent Trial and Appeal Board (PTAB) decisions for many state bar association groups and has spoken at numerous national trade and bar association meetings, including the now ubiquitous virtual presentations, such as Intellectual Property Owners Association, American Intellectual Property Law Association (AIPLA), and American Bar Association. Tom has lectured at many law schools in both the United States and China, and at the Patent Office of the State Intellectual Property Office (SIPO) of the People's Republic of China. He has participated in more than 150 Strafford Webinars on U.S. patent law topics, including several that dealt with 35 U.S.C. § 112(f), Sanofi v. Watson-type claims, supplemental examination, inducement to infringe, claim construction, enablement, written description, claim definiteness, and AIA post-grant proceedings.

Over the years, Tom has been recognized by Intellectual Asset Management as a global IP leader and leading patent prosecutor in the D.C. metro area, as well as nationally for post-grant procedures. The Legal 500 U.S. has recognized him for patent portfolio management and licensing, and he has been ranked as a patent "IP Star" by Managing Intellectual Property (MIP) since 2016. Tom was inducted into the LMG Life Sciences Hall of Fame and recognized as the Patent Strategy & Management Attorney of the Year for the District of Columbia. The American Intellectual Property Law Association (AIPLA) declared him a "Titan of the IP Bar".

Tom earned B.A., magna cum laude, in Chemistry from the University of Utah and his J.D. from Duke University School of Law.

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Spencer C. Joffrion

Spencer C. Joffrion is an associate at Dechert LLP in New York, NY. He represents clients in intellectual property transactional matters across a variety of industries, including technology, entertainment, fashion, consumer goods, financial services, and healthcare. He has significant experience negotiating sophisticated domestic and foreign transactions involving intellectual property and technology assets, including acquisitions, licenses, joint ventures, and financings. Spencer also advises clients on the protection, management and enforcement of their patents, trademarks, copyrights and trade secrets.

Prior to joining Dechert, Spencer was resident in an international law firm's New York office where he served as an associate in their corporate practice. He has also an adjunct professor at New York Law School, where he supervised a clinic on trademark prosecution.

Spencer was recently named a 2023 Best Lawyers: Ones to Watch and has been identified in The Legal 500 for Intellectual Property: Trademarks: Non-contentious.

Spencer earned his B.S. in Philosophy from New York University and his J.D. from New York University School of Law.

Click here for more information about Spencer.
James "Jim" Koenig

James "Jim" Koenig is a partner at Troutman Pepper Hamilton Sanders LLP in New York, NY. He co-chairs the firm's Privacy + Cyber Practice Group. For the past ten years, he has represented global clients in the financial services, energy, retail, pharmaceutical/health care, cable, telecommunications, car rental, airline, social media, technology, and manufacturing industries, including 35% of Fortune 100-listed companies. He has represented an array of global clients on privacy and data security projects involving more than 125 countries. He also co-founded the International Association of Privacy Professionals (IAPP).

Jim applies years of experience assisting clients with new and emerging technologies, including artificial intelligence, machine learning, smart homes and cities, power grid, biotechnology and medical devices, genetics, blockchain, security, internet of things, AdTech, and autonomous vehicles/connected cars.

Drawing on his experience and reputation with regulators, Jim also regularly advises companies on compliance practices and through regulatory investigations. His work has included serving as the lead subject matter expert designing security, privacy, and business solutions in several high-profile U.S. Federal Trade Commission (FTC) and U.S. Department of Health and Human Services' Office of Civil Rights (OCR) enforcement proceedings involving social media, mobile, and health care companies.

Prior to joining the firm, Jim led the privacy and cybersecurity practices of two Am Law 100 firms. He also built and led the privacy, and co-led the cybersecurity practices at PricewaterhouseCoopers and Booz Allen. Jim has also held senior marketing, management, and legal positions at QVC and MaMaMedia.com (a children's education internet startup) and was named inventor or co-inventor on six patent applications, relating to security and privacy-enhancing technologies.

Jim earned his B.S. in Finance from Massachusetts Institute of Technology and his J.D. from University of Miami School of Law.

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Lance A. Lawson

Lance A Lawson is a Partner at Burr & Forman LLP in Charlotte. He is a member of the firm's Intellectual Property practice group. A licensed Professional Engineer with an advanced degree in engineering, Lance is a first-chair litigator with 25 years of experience obtaining outstanding results for his technology clients. He focuses on patent infringement and other intellectual property litigation including trademarks, trade dress, copyrights, and trade secrets, as well as commercial disputes involving technology and licensing.

Lance has represented companies in intellectual property disputes before the International Trade Commission, Patent Trial and Appeal Board, in U.S. district courts throughout the country, and in appeals to the Federal Circuit and other Courts of Appeal. He also has extensive experience in strategic planning concerning patent and trademark procurement and portfolio management, including acquisition, maintenance, and licensing of U.S. and foreign patent and trademark assets. Lance served over four years on the Executive Committee at his previous law firm before it merged with Burr Forman.

Lance has leveraged his experience as a licensed professional engineer to advise clients in intellectual property disputes in diverse technologies, including medical devices, mobile phones, air-to-ground communications, Wi-Fi, night vision devices, computer software and disc drives, electric automobiles, navigation systems, lithium batteries, light-emitting diodes (LEDs), cancer screening systems, pharmaceuticals, breathable films, and non-woven fabrics. In addition to his many speaking engagements on intellectual property issues, Lance is a guest lecturer on leadership and international security issues for Senior Executives courses at the Harvard Kennedy School at Harvard University. For his legal work and involvement in his community, Lance recently was the recipient of the North Carolina Bar Association's Citizen Lawyer Award.

Prior to pursuing law, Lance served nine years on active duty as an engineer officer with the United States Army Corps of Engineers, including three years as chief of engineering and design, and one year commanding in combat an engineer unit in both Iraq and Saudi Arabia during Operations Desert Shield and Desert Storm. Lance later served as a JAG attorney at the rank of Lieutenant Colonel in the United States Army Reserves, while performing duties as the general counsel to several military units in the Southeast. During his time in the U.S. military, Lance was awarded the Master Parachutist Badge, the U.S. Army Ranger Tab, and the Bronze Star for actions in combat.

Lance earned his B.S., with honors, from the United States Military Academy at West Point, his M.S. from Stanford University and his J.D., cum laude, from the University of Notre Dame Law School.

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Richard T. "Rick" Matthews

Richard T. "Rick" Matthews is a Partner at Williams Mullen in Raleigh. He concentrates his practice on intellectual property matters, including patent, trademark, copyright, trade secret, licensing and related litigation. He has represented companies in intellectual property disputes in over 40 states as a first-chair trial attorney and in bet-the-company litigation. He has extensive experience handling every aspect of litigation through trial and appeal. His cases have spanned federal courts across the country and before the Patent Trial and Board (PTAB), International Trade Commission (ITC), Trademark Trial and Appeal Board (TTAB), Fourth Circuit, Sixth Circuit, Federal Circuit and Supreme Court.

While Rick has been practicing patent law since 2003, he is also certified by the North Carolina State Bar Board of Legal Specialization as a Specialist in Trademark Law. Rick has been recognized by Chambers USA for Intellectual Property Law (2019). He has also been named among North Carolina's "Legal Elite" by Business North Carolina (2014-present); listed in The Best Lawyers in America© for Trademark Law and Patent Law (2017-present); listed in North Carolina Super Lawyers for Intellectual Property Law (2011-2016, 2022); and named among the Top 40 Lawyers Under 40 in Intellectual Property for North Carolina by the American Society of Legal Advocates. He is licensed to practice law in North Carolina, Virginia and the District of Columbia, and he is registered to practice before the U.S. Patent and Trademark Office (USPTO).

Rick earned his B.S. in chemistry, with a focus in biochemistry, from the University of North Carolina at Chapel Hill, J.D. from the Campbell University Norman Adrian Wiggins School of Law and a Masters of Law degree in intellectual property law from the George Washington University Law School. He clerked in the ITC's Office of Unfair Import Investigation, focusing on Section 337 patent cases. In addition, he interned at the U.S. Court of Federal Claims for the Honorable Judge Susan G. Braden.

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Sarah Wesley Wheaton

Sarah Wesley Wheaton is an Associate at Dechert LLP in Charlotte, where she is a member the firm's global private equity group. She advises private equity funds, institutional investors, and other strategic acquirers in connection with mergers and acquisitions, asset purchases and dispositions, corporate financing transactions, co-investments strategic collaboration, and general corporate matters. Leveraging a background in intellectual property law, she brings a diverse perspective when helping clients navigate emerging trends and regulations on a local and global scale.

In the strategic investor and private equity space, Sarah has experience on both buy and sell-side transactions across various sectors, including software and new technologies, infrastructure, distribution and manufacturing, natural gas and regulation markets. She has a particular focus on private equity healthcare and life sciences, having advised on deals involving physician services, autism services, vision services, behavioral health, fertility clinics, pharmacies home health and care, ambulatory surgery centers, telehealth and telemedicine, and health technology.

Sarah earend her B.A.in Communications, History and and Cinema from the University of North Carolina at Chapel Hill and her J.D. from Wake Forest University School of Law.

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Thank you

Description

Contributors

Graham T. Dean

Lincoln S. Essig

David J. Grant

Emily M. Haas

Seth L. Hudson

Thomas L. "Tom" Irving

Spencer C. Joffrion

James "Jim" Koenig

Lance A. Lawson

Richard T. "Rick" Matthews

Sarah Wesley Wheaton

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