IPLAC Newsletter – April 2021
In This Issue:
- President’s Corner
- Upcoming Events
- Patent Focus: Section 101 - May 6, 2021
- IPLAC Annual Meeting and Election - May 19, 2021
- A Year In Review - May 25, 2021
- In-Person Events Resume – Save the Dates! (Golf Outing/Field Day & Annual Judges Dinner)
- Past Events
- Recap: Book Club Discussion of We Were Eight Years in Power: An American Tragedy
- Recap: Trade Secrets Litigation at the ITC with ITC Judge Cameron Elliot
- Recap: Virtual Patent Law Career Planning Event
- Renew Your IPLAC Membership
- Special Feature: Get to Know President-Elect Erin Lothson!
- Trivia Question
President’s Corner:
As the Chicago weather warms, spring showers inundate, and flowers bloom, I feel very grateful that we are finally coming out of the Covid winter-like hibernation. This is my last President’s message, as my term expires in May at the upcoming Annual Meeting. It has been my honor and privilege to have served as your President of IPLAC this past year, despite that it has been spent in what feels like suspended animation under a Covid lockdown/lock-in. I cannot imagine how much worse things were 100 years ago in the 1917-1919 pandemic.
Thankfully, it will be only too soon that life returns to normal, thanks to the inventions that brought us the new vaccines in record time. The pace of innovation has risen dramatically in just one generation, as a year ago people were predicting that it could take ten years to bring the vaccines to the public. We are now sending people into space in record numbers, and before the decade is out we will be back on the moon, and perhaps Mars. 5G cellphones are here, with blistering speed faster than room-size supercomputers of the 1990s. I am grateful for the opportunity to work in the intellectual property law profession at the center of this revolution.
I am also grateful that IPLAC has managed to maintain the connection between many of its members, by going virtual and developing new, innovative programming. I am grateful for the whole team of editors, volunteers, and contributors, who have helped bring this Newsletter to you all each month this past year. I am grateful to the excellent work of many of the Committee leaders developing, planning, and implementing the great programs that I have attended from the comfort of my home office. This virtual transformation of IPLAC has been a fantastic benefit for our members from all across the Chicagoland area, and has brought in new members from outside the region and from overseas. I am very proud of the IPLAC Officers and Board of Managers who have led us through this virtual transformation.
As we plan our second virtual Annual Meeting and Elections on May 19, I look forward to seeing the continued growth of IPLAC under the leadership of the incoming President, Erin Lothson. I know she will be fantastic as the new President, to transition IPLAC into a new era. There will be some exciting changes ahead as we transition back to in-person meetings. Please save the dates for our traditional in-person Field Day Golf Outing on August 12, and Judges Dinner on October 222. It will be great to see you there, reconnect with old friends, and finally meet in-person with many new virtual friends.
In the meantime, we have some terrific virtual programming coming up soon, so please renew your membership with IPLAC, or join for the first time. IPLAC starts its new membership year on May 1. Our Corporate Committee event on May 6 features former USPTO Director Andre Iancu and former Director of the Midwest Regional USPTO Office in Detroit, Christal Sheppard, discussing patent eligibility. On May 25, the AIA Trial Committee will host a conversation with PTAB Vice Chief Judge Michael Tierney. And the Women in IP Committee is planning a to-be-scheduled program directed to improving mental health resiliency during the pandemic. With great events like these, we hope that many of you will spread the word and encourage your colleagues and friends to join IPLAC. With time running out, please hurry and join, or renew your membership, to take advantage of our early-bird discount. And just this year, we revised our membership dues structure to offer reduced dues to attorneys with two to six years’ experience, to encourage more members to stay involved and develop their leadership skills and professional networks.
Though my term as your President will expire soon, I will remain involved. Please let me know what more IPLAC can do to help you, our valued member, to grow and develop personally and professionally. We have many leadership and volunteer opportunities available within IPLAC. We are always looking to add more innovative opportunities for our members. So bring your ideas, your energy, and most important yourself to participate in IPLAC events and activities.
Marc V. Richards
136th IPLAC President
mrichards@brinksgilson.com
Upcoming Events:
1. Patent Focus: Section 101 – May 6, 2021
The IPLAC Corporate Committee invites you to a panel discussion focusing on topics related to Section 101. The panel will be on May 6, 2021, at 11 A.M. Central time. Attendees can email Billie Hinnen to register for the panel discussion. Christal Sheppard, Professor of Law at the University of Nebraska – Lincoln, will lead a discussion featuring Andrei Iancu, Partner at Irell & Manella and Former Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent & Trademark Office; Rob Sterne, Founding Director at Sterne, Kessler, Goldstein and Fox; and Gwilym Roberts, Chairman, Kilburn & Strode. The panel will discuss the state of Section 101 of Chapter 35 of the U.S. Code – including public policy of the USPTO, the Federal Circuit/Supreme Court and Congress, current pending cases, and best practices.
2. IPLAC Annual Meeting and Election – May 19, 2021
Annual Elections will be held at the IPLAC Annual Meeting on May 19, 2021. There are four open positions for members of the Board of Managers and certain Officer positions: Treasurer, Vice-President, and President-Elect. If you are interested in being considered for a position by the IPLAC Nominating Committee, please send an email describing your interest and qualifications to the IPLAC President, Marc Richards.
3. A Year in Review: PTAB Practice Updates, the Impact of COVID, and Lessons Learned Along the Way – May 25, 2021
Since its creation, parties have filed thousands of petitions to the Patent Trial and Appeal Board (“PTAB”). Today, these proceedings and the PTAB are a significant aspect of every major patent litigation, but the contours of these proceedings continue to change. On top of these changes, COVID has presented a particularly difficult landscape for most practice areas, including patent litigation, but PTAB practice has persevered.
In light of the changes and challenges in the past year, Vice Chief Michael Tierney and MBHB partner George “Trey” Lyons, III will take a look at these topics and the impact they have on AIA Trial Proceedings, including: discretionary denials, motion to amend pilot program, § 101, and appealability, as well as the lessons learned from COVID that will influence PTAB practice moving forward. Please save the date and join us on May 25 from 10-11 A.M. Central time for this event. Register here.
4. In-Person Events Resume – Save the Dates!
The Golf Outing/Field Day is scheduled for August 12, 2021. The Annual Judges Dinner is scheduled for October 22, 2021 at the Mid-America Club, at the top of the Aon Center, at 5:30 P.M.
Recaps of Past Events:
5. Recap: Book Club Discussion of We Were Eight Years in Power: An American Tragedy, by Te-Nehisi Coates – March 31, 2021
DE&I Committee Co-chairperson Cynthia Assam and DE&I Committee Vice-Chairperson Caleb Norris led our discussion of We Were Eight Years in Power: An American Tragedy by Te-Nehisi Coates. They navigated a group of 10-15 participants through the complex issues in the book, including American society’s view of different communities of color as well as the case for reparations. That led to an enlightened discussion on different ways we could all assist in providing equity to people from traditionally marginalized communities in the IP workplace, including equitable work allocation, and mentorship programs.
6. Recap: Trade Secrets Litigation at the ITC with ITC Judge Cameron Elliot – April 8, 2021
On April 8, IPLAC’s Litigation Committee made a one-hour presentation by Zoom, entitled “Trade Secrets Litigation at the ITC.” It is not well known among practitioners that Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), provides jurisdiction for the International Trade Commission to hear and decide complaints involving not only U.S. patent infringement, but also trade secret misappropriation. In fact, the Commission has been quite busy in recent years, hearing and deciding a number of these investigations involving battery technology for electric cars, Botox, bone cements, and other technologies. IPLAC’s presentation began with a short overview by moderator Tom James of Fitch Even, on recent issues arising in trade secrets litigation at the International Trade Commission; and then moderator Paul Steadman of DLA Piper spent nearly an hour interviewing ITC Judge Cameron Elliot about the jurisdictional bases for these investigations, the specifics of proof required to present such a case, how the domestic industry requirement can be met, and the remedies available. Judge Elliot proved to be an excellent guest, providing a host of valuable insights on these types of cases.
7. Recap: Virtual Patent Law Career Planning Event – April 14, 2021
IPLAC’s Women in IP Committee and DE&I Committee co-hosted a Virtual Patent Law Career Planning Event on April 14, 2021, with the University of Illinois at Urbana-Champaign and Northwestern University Chapters of the Society of Women Engineers (“SWE”), sponsored by the law firm of Leydig, Voit & Meyer. The program included a panel discussion regarding pursuing a career in patent law and the way in which an engineering degree can assist in such a career. Over thirty women currently studying engineering participated in the event by listening to our engaging panelists and asking thoughtful questions. We are grateful for the following panelists who made this a wonderful event: Mary Fetsco (Associate at Von Briesen & Roper); Lillian Ficht (Patent Agent at Marshall & Gerstein); Manisha Bhangare (Associate General Counsel, Product at Facebook); Keelin Bielski (Associate at Leydig, Voit & Meyer); and Atanu Das (Moderator – Of Counsel at Guntin & Gust). For those interested, a link to the recording of the event can be viewed here.
Renew Your IPLAC Membership:
It is time to renew your IPLAC Membership here! IPLAC’s Members include:
• Trademark Practitioners;
• Copyright Practitioners;
• Media & Advertising Practitioners;
• Patent Practitioners;
• Technology, Licensing, & IT Practitioners;
• Data & Privacy Practitioners;
• Machine Learning & Artificial Intelligence Practitioners;
• Patent Agents;
• Paralegals; and
• Law Students.
By maintaining membership in IPLAC, you can continue to:
• Make your mark in the city and in your community;
• Connect to Chicago’s legal and tech scene;
• Understand where innovation is happening in Chicago;
• Connect to Chicago’s biggest companies;
• Amplify ground-breaking work; and
• Change the way law is practiced.
Special Feature – Get to Know President-Elect Erin Lothson
Erin Lothson is the incoming President of IPLAC. In advance of her first formal address as President, Erin agreed to share more about her plans for the future of IPLAC as well as her background and career path.
Q: If you could describe your goals for IPLAC during your term in one sentence, what would it be?
A: “This is the year of opportunity.” Meaning, I want to create as much space and opportunity for every young person who wants it. So, if you want to participate on a committee, or speak on a topic, we are going to create a place for you to shine.
Earlier in my career, it would have meant the world to me if a sponsor had said: “I believe in you. Let’s take you to the next level.” And that’s exactly what I want to do at scale for IPLAC members – create opportunities for people who want to build their reputation in the IP community and to make a name for themselves in Chicago. I believe in our members and I want to highlight their unique talents and skills. We are incredibly fortunate to practice in a market with such extraordinarily talented IP practitioners.
Q: Are there any particular initiatives that are part of the year of opportunity?
A: We are laser focused on diversity, equity, and inclusion (DE&I) in IPLAC. As an organization and community, we want to make room at the table for everyone to participate and excel. We have a number of forthcoming initiatives that will hopefully expand our universe of members and leaders.
Q: What do you hope will be the result of all your work?
A: I hope to help drive IPLAC forward in the following ways:
• Increasing the diversity of our membership, both in terms of composition as well as in diversity of thoughts and perspectives;
• Expanding the breadth of our focus to include cutting-edge areas like AI/machine learning, privacy and cybersecurity, and product development;
• Elevating our organization’s profile and reputation throughout Chicago and nationwide.
Q: What advice might you give to younger members early in their career?
A: First, when you are starting out, it is so important to lean in and really embrace working hard. It can be trying as a young associate because your skills are developing. I’d encourage our young members to embrace those challenges, and have confidence in knowing that it does get better, thankfully.
Second, begin to think through the importance of building one’s reputation. As you work with colleagues day in and day out, it’s important to bring a positive attitude to whatever you’re approaching, to be reliable and consistent, and perhaps most importantly, to demonstrate some degree of flexibility because the nature of our work changes frequently.
She acknowledges how lucky she was during that time and is immensely thankful for the experience to work in a law firm environment. After a number of years as outside counsel, an opportunity to go in-house arose at Groupon and Erin jumped at the chance. Today, Erin works at Uber with the Uber Freight business division. She has a generalist practice and routinely uses her IP knowledge to advise clients.
In addition to her day job, Erin believes that the magic of IPLAC rests in its membership and she’s excited about what’s ahead.
Trivia Question:
This individual was largely credited with the invention of the radio. He was initially unable to obtain a patent on the radio on the grounds that his work relied on the use of Tesla coils. However, in 1901, this physicist transmitted the first transatlantic telegraph. Finally, in 1904, the U.S. Patent Office inexplicably reversed its earlier decision and gave this individual the patent for invention of the radio. In 1909, he won the Nobel Prize in Physics. However, in 1943 his company sued the U.S. government for patent infringement during World War I, and to avoid the lawsuit, the U.S. Supreme Court upheld Patent No. 645,576, restoring Nikola Tesla as the inventor of the radio.
The Italian physicist largely credited with the invention of the radio was Guglielmo Marconi. Read more about the saga here.