IPLAC Newsletter – March 2023

IP in the ‘Burbs – Big IP Issues for Microbreweries – January 18, 2023

This IPLAC CLE event focused on trademark issues faced by small brewers in the current era of enforcement by larger brewers.  Case analysis of recent trademark litigation and enforcement actions in the brewery industry provided opportunities for the attendees to propose strategies to resolve matters at various stages of disputes.  Vigorous debates ensued about the most effective mechanisms for resolution.  The owner of Exit Strategy Brewing Company, Chris Valleau, an attorney-turned-brewer and -entrepreneur, shared insights on industry practices and background on some of the plaintiffs and defendants.  The strategy and debate format of the CLE presentation allowed all participants to engage in the topics and build comradery.  Several attendees stated that this was the “most engaging CLE event” of their careers.  Please join us next month for the next “IP in the ‘Burbs.”  We are always looking for locations and topic recommendations.

Navigating Common Sticking Points in Technology and Licensing Transactions – January 18, 2023

Attendees learned about the most common – and often most difficult – sticking points in any transaction involving IP, data, or technology.  Francesca Cardillo, with her firm experience, and Cole, with his in-house experience, also provided negotiation tips and tricks, offered considerations to keep in mind for both licensor and licensee, and provided guidance on how to discuss these issues with their clients and from their clients’ perspectives.

As part of the presentation, participants received an intake form designed to help both external and internal legal counsel extract information from their clients and spot sticking points from the beginning of a transaction.  Based on the feedback in the evaluation forms, the attendees found this presentation (and the post-presentation tools provided) to be thorough and practical.

Speed Mentoring and Networking Reception – January 19, 2023

The Law School Outreach Committee hosted its first in-person speed mentoring and general reception for law students that permitted small groups of students to rotate through ten tables of attorneys.  Over 65 JD students from Chicago-area law schools met with over twenty attorneys from a range of practice areas that included IP litigation, prosecution, transactional work, and privacy law.  Attorneys at all stages of practice were present, including incoming Present-Elect Peter Prommer.  Students met attorneys from 15 firms that included various sizes of GP and boutique firms, as well as several in-house attorneys.  Many students, including 1Ls meeting IP attorneys for the first time, remarked that they enjoyed the exposure to the wide variety of attorneys, including the multiple career paths open to students without STEM backgrounds.  In addition, although the event was focused on helping students, some of the attorneys enjoyed the opportunity to meet old friends as well as make new ones!

Damages for Trade Secret Misappropriation – January 24, 2023

The IPLAC Trade Secrets and Unfair Competition Committee presented this CLE webinar.  Committee Vice-Chair and business lawyer, Tim Oliver (Grogan, Hesse & Uditsky, P.C.), moderated a panel of two experts in the field, John Bone (Stout) and David Duski (Charles River Associates).  The panelists drew from their wealth of experience as expert witnesses to first provide a high-level view of trade secrets laws and remedies, followed by a narrowly focused discussion on monetary damages.  Find out more about the panelists’ perspectives here. Consider joining the Trade Secrets and Unfair Competition (“TS&UC”) Committee to participate in developing more content in this practice area.  The TS&UC plans to host its annual “Trade Secrets Summit” on May 4, 2023.

The panelists agreed that effective scenario planning is paramount for successful trade secrets litigation strategy.  Unlike patents, trade secrets do not provide defined claims that establish the scope of a dispute from the onset.  In fact, trade secrets litigation often involves educating one’s own client to identify and weigh each trade secret asset in the portfolio at dispute.  The panelists suggested honing in on the strongest trade secret that offers the most “bang for your buck” in terms of damages to strategize for the entire portfolio.  The panelists highlighted other important considerations for trade secrets damages, such as determining the appropriate damages period and figuring out the extent of the misappropriation and use.  Unbeknownst to those unfamiliar with trade secrets litigation, the panelists discussed the potential for seeking both equitable and monetary relief for trade secrets misappropriation.  The panelists posed scenarios where a trade secrets plaintiff could obtain an injunction and still recover damages for previous harm.  The session concluded with some cautionary advice from the panelists:  do not wait long before identifying your potential trade secrets damages.  Missteps early on in a trade secrets misappropriation case may preclude you from later seeking relief that you (and your client) assume will be available.  

Are You Satisfying Your Responsibilities as a Lawyer in Your Career? – January 25, 2023

On January 25, IPLAC and the Linn held a joint lunch-time CLE event on “Are You Satisfying Your Responsibilities as a Lawyer in Your Career?”  The survey results from both organizations were integrated into the presentation.  The presenting panel was hosted at Neal Gerber & Eisenberg and the audience attended via Zoom videoconference.  The presentation qualified for professional responsibility CLE credit.  The event addressed topics including satisfying our responsibilities as lawyers and aligning our career and life goals to be consistent with our responsibilities as lawyers.  The survey results often related to doing pro bono work for those most likely not able to afford legal work.  The discussion also addressed “quasi-pro bono” work, or working with independent inventors and small businesses that were clients of the firm but unable to pay the full bills.  Discussions focused on the benefits to newer attorneys who were gaining experience, and to more senior attorneys who were managing litigation for the first time with such clients.  Having these opportunities earlier in one’s career was stressed by several audience members.  Further, it was suggested that firms partner with in-house counsel to collaborate on pro bono work.  This would provide in-house counsel an opportunity to do pro bono work and build relationships with clients.  The audience enjoyed the joint Linn Inn and IPLAC presentation, and we look forward to the next time these organizations can collaborate.

Careers in Intellectual Property for STEM Professionals – January 27, 2023

On January 27, the Law School Outreach Committee hosted a panel about Careers in Intellectual Property for STEM Professionals.  Between 20 and 25 people, who were mainly students from Northwestern’s Master of Science in Law program, attended the event in person.  In addition, 17 people attended the event remotely over Zoom.  Northwester Professor David Schwartz moderated a panel that included current IPLAC President-Elect Peter Prommer, J. Ritu Chander, a Patent Agent at Helix Patent Services, Anthoula Pomrening, Group Technology Counsel at ITW, and Spencer Strong, a Technical Specialist at Marshall Gerstein.  The panel discussed a range of topics, including:  what life as a patent agent looks like; how to obtain jobs as patent engineers, technical specialists, or agents; when to take the Patent Bar; and the benefits of IPLAC membership as part of a concerted networking strategy.  Students asked pointed questions at the end of the panel, such as how long to try to find a job in IP before considering obtaining an advanced technical degree.  Please look out for future events from the Law School Outreach Committee.

Special Highlight – Learn More About IPLAC Member and Crowell Partner Gang Chen!

Gang Chen is the newest partner at Crowell & Moring in Chicago.  He focuses on patent litigation and prosecution for corporate clients, but also does everything in between, including patent licensing and general IP counseling for corporate clients.  

Gang earned a Ph.D. in Physics, and wrote his thesis on solid-state quantum optical devices for quantum computing.  “For me, that physics background serves as a foundation for my ability to quickly understand technical aspects of the matters I handle.  A physics and electrical engineering background can be broad in that it allowed me to move around in an industrial lab and learn about many adjacent scientific and technological areas before becoming a lawyer.  That’s also very helpful for handling legal issues involving technologies – software, hardware, mechanical, electric, etc.”

Despite Gang’s unique specialization in training, he values the soft skills he learned that have allowed him to handle legal issues across a wide range of technical subject matters including semiconductors, wireless/wireline communications, video/audio processing, artificial intelligence, and more.  On some occasions, Gang has put his special physics training to direct use in handling patent projects relating to quantum computing/information and advanced optical technologies for a number of research-focused University clients.

Gang’s path towards becoming a partner at a major law firm was far from traditional.  Gang grew up in Sezhuan province of China and, following a one-year military service, he earned his undergraduate physics degree at Beijing University.  At the time, the best option for continuing his physics research was graduate school in the United States.  Gang pursued his Ph.D. in Physics at the University of Michigan, earning a Master’s degree in Electric Engineering along the way.  From there, Gang took his talents in solid-state and optical physics to Bell Labs of Lucent Technologies (which became Alcatel-Lucent, and then part of Nokia) for several years.  Gang became interested in IP work and pivoted into working with the legal team at Bell Labs as a patent technology manager.  This is where Gang found his true calling in intellectual property law, which he followed by enrolling in Seton Hall University School of Law, and completing his Ph.D. at night, while simultaneously working in-house. 

Gang feels fortunate that he stumbled upon law after a research-heavy career.  “I’m happy to see that all those years of technical training were not wasted.  I get to utilize every bit of my past experience.  I wish more people who are pursuing technical education could know about intellectual property law or other areas of law that are tied to technologies as a career option early on.”  To that end, Gang hopes to see IPLAC and its members continuing to reach out beyond law schools to technical communities.  “I often run across graduate students who are broadly interested in anything technology, but who are deterred by having to go along a single research direction for a long time.  For those folks, a legal career dealing with broad and flexible technology issues would make a wonderful fit.”

Before becoming a lawyer, Gang was a prolific researcher and engineer with over 100 publications in leading journals and conference proceedings.  Gang is also a holder of over a dozen U.S. and international patents.