Dear IPLAC Members,
As we enter into the fall season, I want to extend my warmest thanks for your engagement and enthusiasm as we transition back to all-virtual programming. IPLAC was able to host some wonderful in-person events this summer, like the Rosé Tasting, and decided to postpone others to the spring, like the Annual Judges Dinner. Thank you for your flexibility and support.
I also want to celebrate our IPLAC veterans, current service members, and their families. Veteran’s Day is November 11th and I want to highlight our very own Matthew Marrone, CLE Committee Chair, who served in the Army National Guard, and Kyle Gerstner, Mentoring Committee Vice-Chair, who served in the Air Force. This month, instead of featuring my photo, I decided to share a photo of my father, Dale Wright, who recently passed away in late August. My dad served at the height of the Vietnam War, from 1965 to 1968, as an infantry solder in the U.S. Army. As the daughter of a veteran, I saw first-hand the impact and importance of my dad’s service. Conversely, as the father of a veteran, Immediate Past President Marc Richards beams with pride when he talks about his son, who recently completed his service in the Army. You may also have stories similar to these, and if you see me around at upcoming events, be sure to tell me, because I’d love to hear them. I believe we honor our veterans and their service by sharing and celebrating their stories.
Finally, I want to highlight IPLAC’s deep and rich history in the Chicago IP community as the first IP bar association in the nation. And although we were the first, we now stand in good company and actively embrace working with other IP bar associations in the city. IPLAC’s Litigation Committee co-hosted an event with The Richard Linn American Inn of Court on October 21st and the Women in IP Committee is hosting an event with ChiWiP on November 10th. Bravo for raising the bar on cross-collaboration! IPLAC celebrates its members’ involvement in our community.
Wishing you and your family a Happy Thanksgiving.
137th IPLAC President
Board Member Announcements
Selena Spritz is a Senior Director & Managing Counsel of the Commercial Retail and Intellectual Property Legal Group at Walgreen Co. Selena leads the Intellectual Property group with respect to Walgreens’ trademark, copyright, and domain name portfolios, including clearance, prosecution, monitoring, and enforcement worldwide. She also supports the marketing, digital, and private-label businesses of Walgreen Co. As a trusted advisor with over a decade of legal experience, Selena provides pragmatic and concise advice in all legal aspects of advertising, intellectual property, consumer product regulations, calling/texting practices, privacy, and data protection. She handles matters across the full product lifecycle, including concept analysis, claim substantiation, label review, quality and recall scenarios, as well as contested matters involving the FTC, National Advertising Division, and States Attorneys General. Selena is an active and passionate member of Walgreens’ Legal Department’s Technology and Diversity, Equity and Inclusion Committees. Prior to joining Walgreens, Selena worked as a Senior Counsel, Marketing at Sears Holdings Corporation and began her career as an associate IP attorney at Fitch, Even, Tabin & Flannery.
Azuka Dike has also joined the IPLAC Board. We look forward to sharing more about Azuka in our next newsletter.
Are you a student, junior attorney, patent agent, or paralegal looking for opportunities to build your professional network within the Chicago IP community and to develop leadership skills? Have you considered getting more involved in bar associations, but don’t know where to begin? Join the Membership and Mentoring Committees for an interactive virtual discussion about ways to get involved in IPLAC as a law student and attorney on Tuesday, November 9, from 12 – 1 PM Central!
Speakers will talk about their experiences in IPLAC, describe their pathways to leadership roles, and answer participant questions. A Zoom link will be provided prior to the event. Confirmed speakers include: Tiffany Gehrke, IPLAC President-Elect; Ritu Chander, IPLAC Board of Managers Member; and Kenny Matuszewski, Membership Committee Chair and Past Chair of the Mentoring Committee.
Recaps of Past Events
On September 23, 2021, the IPLAC Corporate Committee hosted its “Thinking About Going In-House” panel. Panelists included Alexandra Kleiman, General Counsel and VP of Business Ventures at Momofuku; Ann Palma, Senior Corporate Counsel, Intellectual Property, at Groupon; Megan Sindel Agnew, Head of Legal at Heyday; and Susan Lester, Senior Counsel, Marketing & Intellectual Property, at McDonald’s Corporation. The panel was moderated by Kara DeAngelis, Counsel, Privacy & Information Governance, at McDonald’s Corporation. The panelists discussed hot topics for corporate counsel, such as compensation, benefits, and work-life balance. Some of the key takeaways were that in-house counsel have more control of their time and can prioritize projects as needed. The panelists all mentioned that whether one works for a large, well-known company or smaller start-up, one ends up being extremely passionate about the work one does by working so closely with the business clients and taking pride in the company’s successes. The audience also was particularly interested to learn about how to land a first in-house counsel role, and the panelists recommended searching job boards, reaching out to internal law firm career placement services, and networking. All the panelists agreed that there is never a dull moment working in-house!
Last month, the Diversity Equity & Inclusion Committee held a small virtual film discussion for the movie One Night In Miami – a fictional account of one night, during which Muhammad Ali, Malcom X, Jim Brown, and Sam Cooke had a conversation about the civil rights movement. We discussed some of the themes of the movie and how we could apply the lessons taught in the movie to the current IP workplace. For example, a major theme in the movie included African-Americans being shut out from economic opportunities by the status quo at the time the movie took place. In response, the group discussed that in the IP workplace, we need to continue to provide opportunities to underrepresented and marginalized groups within law firms and legal practice groups for those groups, as well as the IP community as whole, to continue to flourish.
On September 15, 2021, IPLAC hosted a webinar focused on the use of “specialty experts” in patent and trade secret litigation cases – experts that help draw a connection between the patented/secret technology and the defendant’s profits and seek to show how the technology at issue improved profits. It was an active panel, including Judge Albright of the Western District of Texas, Ocean Tomo’s James Malackowski, and Kramer Levin’s Lisa Kobialka. The panel offered insight into why the use of specialty experts is a growing trend in technology damages cases and excellent insider tips on how to best use such experts. Judge Albright’s recommendations about making sure that the damages presentation for both sides plays a central role in the case, and is not an after-thought to the liability case, was especially insightful and valuable for practitioners.
Between Two Ferns with the Judicial Clerks of the N.D. Ill. – Litigation Committee – October 21, 2021
On October 21, 2021, the Intellectual Property Law Association of Chicago (IPLAC) and the Richard Linn Inn of Court (Linn Inn) held a joint CLE program for the Northern District of Illinois’s judicial clerks. The program, led by R. David Donoghue of Holland & Knight and George Summerfield of K&L Gates, covered the basics of patent law, and then walked through the life cycle of a Northern District of Illinois patent case with a close look at the Court’s Local Patent Rules (LPR), key Northern District case law interpreting the LPR, and practice tips from practitioners that operate under the LPR. It was a great program that IPLAC and the Linn Inn hope to continue for future classes of the Northern District’s judicial clerks. The presentation sought to show the clerks where they were likely to see conflict between parties under the LPR and strategies that the clerks could suggest employing for avoiding that conflict, where it is avoidable. The presentation also offered best practices from various Northern District opinions, such as providing a table of claim construction rulings as part of the Court’s claim construction opinion.
On September 28, the International Relations Committee hosted a seminar that compared Japan’s utility model system with the patent system in the United States. Mr. Sanji Miyagi of the Shobayashi firm in Tokyo joined the event by Zoom. Attendees learned how the examination processes differ, and the relative costs of prosecution. It was valuable information for advising clients doing business in Japan. The seminar was recorded, and can be seen here.
Matthew Marrone is a Partner at McAndrews focusing on patents, Chair of IPLAC’s CLE Committee, and a veteran of the United States Army.
Matthew joined the Army National Guard in 1999, intrigued by the opportunities the military presented to help with college tuition. But as Matthew was simultaneously studying physics and serving in the Guard, his plans took an unexpected turn when he was called up for active duty during college. After commissioning as an officer and completing his physics degree, Matthew deployed to Kosovo as a chemical officer in 2004. He quickly changed roles and completed his time in Kosovo as a logistics officer. After spending a second deployment as a company executive officer in Kuwait, he later taught physics in China as a civilian, then took his talents to law school.
When asked how his military career shaped his future life as a lawyer, Matthew shared a number of lessons. Discover Matthew’s pearls of wisdom below.
The needs of the Army/Client
Matthew recalls a common phrase that shaped his attitude in the face of a challenge: “the needs of the Army” (or “the needs of the client” when rephrased for the office). “As a chemical officer, I spent six long months studying weapons of mass destruction, weather patterns, how they combine to affect your body and environment, how to train soldiers to mitigate these effects, and how to clean up their aftermath. But one day it was decided that our mission shifted from weapons of mass destruction, so they had me become a logistics officer for a battalion in Kosovo. Saying ‘no’ was never an option in the military. It doesn’t matter what the challenge is, it’s your job to rise to the task. You can’t depend on someone else to take care of something for you. That kind of attitude would be unacceptable in the military, just as much as it would be unacceptable in legal practice, where I notice the same expectations exist with my colleagues.”
How to be understood.
“Before taking off for a mission, I would often conduct part of a brief which included everyone from colonels to privates. At the end of the briefing we would look around the room and randomly pick someone — typically one of the younger soldiers — and we would drill them: ‘what did we just say? What’s the mission? What’s your role in it? What are the people on your left and right doing?’” To Matthew, the burden of understanding his brief was not on these younger soldiers. Rather, he put the burden of being understood on himself by not leaving anything up to interpretation. “To put your mission briefing in a way that it is understood by everyone is critical, especially with missions of high magnitude. I feel like that ability to communicate — knowing your purpose, your audience, what’s important, and what needs to be conveyed — is critical in the practice of law as well. This is especially true when drafting a patent application or a legal brief. In fact, this lesson is something that I still think about every time I draft a legal document.”
A particularly important skill for patent attorneys who have the separate burdens of having a technical background and a law degree, military service taught Matthew how to effectively combine such distinct skills. “In the Army, everyone goes through basic training to learn how to shoot, move, and communicate. No matter what role you’ll end up fulfilling, whether you’ll work in an office, or carry a rifle for a living, everybody goes to basic training. And only after that can you go to your advanced training where you specialize in your particular role. While many legal practitioners outside of patents have their own base specialties, it’s particularly pointed for patent lawyers because there is such a cognitive difference between their technical focus and their legal focus. But the best of us are very good at bridging that gap by taking these two distinct skills, marrying them, and applying them in tandem to solve your clients’ problems.”
Finally, as the chair of the CLE Committee, Matthew leaves us with this thought: “Being an IP practitioner is a great profession, and IPLAC is a great organization to be associated with. I’m watching with great interest how our industry changes. I’m confident that in the next eight years, my practice and the services we provide to clients will be very different. I look forward to organizations like IPLAC to help us map out that future and be responsive to those changes to be successful.”
Kyle Gerstner is a third-year law student at NIU Law, founder of NIU’s Student Intellectual Property Law Association, and a veteran of the United States Air Force.
Kyle joined the Air Force shortly after starting graduate school. Kyle served as Air Force personnel, which he compares to a business’ human resources and administration departments. He was responsible for ensuring that a myriad of paperwork — personal records, benefits, career management, and everything in between — was properly managed in order to prevent any administrative backlogs. “The Air Force operates differently from most other service branches, in the sense that we operate more like a government agency compared to other service branches.” While on active duty, Kyle completed his Masters in Management and Leadership. He then switched to the National Guard part-time, of which he is still a member today.
Kyle values any public service experience, whether on a local scale or a global scale, whether with the military or otherwise. Since saying goodbye to full-time service, he makes an effort to carry what he learned with him into his new path in law school. Learn about the lessons that Kyle shares here.
Kyle defines this as one’s ability to roll with punches, not take things personally, and learn to move forward when faced with a challenge. “You can’t always change the situation you’re in, but you can change the way you approach your situation.” This goes beyond abstract challenges however, to include an ability to put up with the occasional ego, to prevent interpersonal conflicts from forming. Mental resilience in a potential conflict means being able to stay authentic and help all parties involved. The relevance of this skill in law is too apparent to anyone who has dealt with a difficult opposing counsel.
Kyle learned that effective communication in the Air Force was largely about learning to adapt to another person’s way of communicating. Where some speakers may value sensitivity and understanding, others may prefer you speak the straight line truth. “It’s a matter of being able to develop your ability to look and to learn how to cross communicate when dealing with various mentalities and personality types.” This was particularly important in the Air Force, where Kyle so often interacted with several different major commands, each with its own objectives and culture. Likewise, in law, different parties require different communication methods: compare how you talk to your client to how you talk to a judge.
Kyle is scheduled to complete his military service in November 2022.