Program Agenda – 2018 Washington in the West
Program 2 – IPR – Handout 2
Program 2 – LAIPLA PTAB Panel
Program 3 – Subject Matter Eligibility
Program 4 – Selecting Outside Patent Prosecution Counsel
Program 5 – Patent Intermediaries
USPTO Subject Matter Case Law Chart
USPTO Eligibility Quick Reference
LAIPLA brings the USPTO to you! Now in our 22nd year, Washington in the West is a full-day MCLE conference for all IP attorneys that brings together practitioners, in-house counsel, professors, and representatives from the United States Patent and Trademark Office. This is a can’t-miss conference that provides a truly unique forum for local practitioners to openly discuss issues directly with USPTO representatives.
Registration and Breakfast: 8:30 a.m. – 9:00 a.m.
Programming: 9:00 a.m. – 12:30 p.m. and 2:00 p.m. – 4:30 p.m.
Networking Luncheon: 12:30 p.m. – 2 p.m.
Cocktail Reception: 4:30 p.m. – 5:30 p.m.
Valet Parking: $14
Programs at this event will include:
- Update from the United States Patent and Trademark Office
- Comparing Software Patent Protection in the United States and Europe
- Patent Intermediaries: Platforms, Pools and Defensive Aggregators
- Inter Partes Review Best Practices
- Selecting Outside Patent Prosecution Counsel
John Cabeca, Director of the West Coast United States Patent and Trademark Office in Silicon Valley
As the Director of the Silicon Valley United States Patent and Trademark Office (USPTO), John Cabeca carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. He established and leads the USPTO’s west coast regional office in San Jose – a region covering California, Washington, Oregon, Nevada, Arizona, Hawaii and Alaska. Focusing on actively engaging with communities across his region, John ensures the USPTO’s initiatives and programs are tailored to the region’s unique ecosystem of industries and stakeholders.
A veteran of the USPTO for over 28 years, Mr. Cabeca previously served as the Senior Advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. In this role, he worked closely across Agency leadership to implement the policies and priorities of the USPTO. He began his career at the USPTO as a patent examiner after graduating from Widener University with a bachelor’s degree in electrical engineering. Mr. Cabeca became a Supervisory Patent Examiner in 1997 and joined the Senior Executive Service in 2008 serving as a Patent Technology Center Director over the semiconductor and electrical systems technologies.
Mr. Cabeca has dedicated much of his career to the USPTO’s outreach and education programs focusing on small businesses, startups and entrepreneurs. Over the years, he served in the Office of Petitions, the Office of Patent Legal Administration, the Office of Governmental Affairs and the Office of the Under Secretary. In 2006, Mr. Cabeca was appointed a Department of Commerce Science and Technology Fellow and was on special assignment to the Executive Office of the President in the United States Trade Representative’s Office. At USTR, he worked with multiple agencies on a variety of international intellectual property rights issues and played an integral role in the Free Trade Agreement negotiations with the Republic of Korea
Milan Kapadia, Patent Portfolio Manager, The Boeing Company
Milan Kapadia has over 10 years of experience in intellectual property law including being a former Patent Examiner at the United States Patent & Trademark Office. Mr. Kapadia worked for major intellectual property law firms in Washington, D.C. and Orange County, prosecuting and managing patent portfolios of Fortune 300 companies to small startup companies. Furthermore, Mr. Kapadia spent one year living in India on a Fulbright fellowship researching changes to India’s software patent law. Currently, Mr. Kapadia is Patent Portfolio Manager for The Boeing Company, where he is head of the global patent prosecution program for Being’s software-related patents.
Sandri Sandro, Bugnion S.p.A.
Electrical Engineer, graduated from the University of Bologna (1979). European and Italian Patent, Trademark and Design Attorney. 38-years experience in I.P. Former search and substantive Examiner, as well as assistant in the Board of Appeal “Electricity” at the European Patent Office, The Hague and Munich. Founder and Managing Partner of Europatent-Euromark Srl, which merged into Bugnion in 2014. Expert in electronic, electrical, mechanical and software patents, fluently speaks English, German, French, Dutch and Italian.
Hector Gallegos, Partner, Morrison & Foerster
Hector Gallegos is a litigation and trial partner in Morrison & Foerster’s Intellectual Property Group, and was formerly head of the firm’s Los Angeles Litigation Department. His practice focuses on patent litigation and other complex disputes on behalf of leading technology companies. Mr. Gallegos represents foreign and domestic businesses in patent litigation in United States District Courts, before the International Trade Commission, and before the Court of Appeals for the Federal Circuit. He has successfully litigated and tried numerous patent cases involving a range of technologies including programmable logic devices, integrated circuits, software, video processors, and mobile imaging systems, as well as a broad range of complex business matters including copyright infringement, software development disputes, and misappropriation of trade secrets. He also counsels clients in support of licensing intellectual property rights worldwide.
Agnes Juang, Ph.D., Partner, Knobbe Martens
Agnes Juang is a partner at Knobbe, Martens, Olson & Bear, LLP. Her practice focuses on intellectual property protection and providing counsel to clients in the pharmaceutical, chemical, and medical device fields. Her expertise includes strategic worldwide patent procurement, portfolio development and management, counseling on patent strategy, patentability and infringement analysis, due diligence, and licensing.
She currently represents clients in the pharmaceuticals, energy storage, nanotechnology, polymer, ultrasound catheter, and cardiovascular industries.
Agnes earned her doctorate degree from California Institute of Technology, where her research focused on photoelectrochemistry at semiconductor/liquid and semiconductor/solid interfaces. She developed methods to protect silicon surfaces from oxidation by covalent attachment of polymer overlayers while maintaining its electrical property. Agnes also investigated the air stability of modified silicon surfaces using x-ray photospectroscopy and photoconductivity decay measurements.
Deputy Chief Judge Scott Boalick, Administrative Patent Judge
Deputy Chief Judge Boalick was appointed as an Administrative Patent Judge in April 2007. Prior to his appointment to the Board, Deputy Chief Judge Boalick served as a patent attorney with the Department of the Navy at two different laboratories. Before that, he served as an associate at the law firm of Fish & Richardson and as a Judicial Law Clerk to the Honorable Alvin A. Schall of the United States Court of Appeals for the Federal Circuit. In addition, Deputy Chief Judge Boalick worked as a radar systems engineer at Technology Service Corporation and served on active duty as an officer in the U.S. Navy. Deputy Chief Judge Boalick earned a J.D., magna cum laude, from the Georgetown University Law Center where he was a Notes and Comments Editor of The Georgetown Law Journal and received the Leon Robbin Patent Award. He earned both a M.S.E. in Systems Engineering and a B.S.E. in Electrical Engineering, magna cum laude, from the University of Pennsylvania. Deputy Chief Judge Boalick is a member of the Virginia and District of Columbia Bars, and is registered to practice before the USPTO.
Shawn Ambwani, COO & SVP Legal, Unified Patents
Shawn Ambwani is COO and co-founder of Unified Patents. He is responsible for running operations, counsel & docket management, analytics, and marketing. Some call him “the most disruptive person in IP.” He has written law review articles on PTAB analytics and procedures (linked here). Previously, he was VP of Licensing and Business Development at Intertrust, responsible for patent and technology licensing programs with over $500 million in revenue. Prior to that he served as EVP at Nexstreaming (KOSDAQ) and co-founded Envivio (NASDAQ), bought by Ericsson. Shawn has a JD/MBA from Boston University and a BS in Mathematics from UCLA. He is a member of the California Bar.
Ilja Bedner, Managing Director, LOT Network
Laura Burson, Partner, Sheppard, Mullin, Richter & Hampton LLP
Laura M. Burson is a partner in the Intellectual Property Practice Group of Sheppard, Mullin, Richter & Hampton, LLP in Los Angeles, California and Co-Leader of the firm’s Hatch-Waxman and Biosimilars Team. She has served as lead counsel for some of the nation’s biggest tech companies and focuses her practice on patent litigation and post-grant proceedings before the United States Patent and Trademark Office (USPTO). Laura is also a registered patent attorney who counsels clients on intellectual property protection strategies and related issues. Her clients come from a broad range of technology areas, including medical devices, chemicals and chemical processes, biotechnology, pharmaceuticals, semi-conductors, computers, and other technologies. She’s a mentor and thought leader, serving as both an officer and a board member for the Los Angeles Intellectual Property Law Association (LAIPLA) as well serving on USC’s IP Institute Planning Committee. She is one of the co-founding chairpersons of LAIPLA’s Women-In-IP committee. She has been named to The Recorder‘s “Women Leaders in Technology Law” list, which recognizes women attorneys in California who have “demonstrated leadership and expertise in solving the most pressing legal concerns technology companies can face,” as well as the Daily Journal’s list of Top Women Lawyers in California. She is also active in pro bono matters, including serving as a volunteer prosecutor in criminal jury trials.
Oral Caglar, Associate General Counsel, California Institute of Technology
Christopher Douglas, Partner, Alston & Bird
Chris Douglas is active in Alston & Bird’s pre-grant and post-grant patent practice areas. Chris represents both petitioners and patent owners in post-grant proceedings and is recognized as one of the more active post-grant practitioners nationwide. Chris remains one of the few practitioners to tout confirmation of all claims in an inter partes review in a final written decision on behalf of a patent owner. In addition, he maintains a robust pre-grant patent prosecution practice. His familiarity with both pre-grant and post-grant proceedings informs his ability to counsel and secure foreign and domestic patent rights for his clients. Chris frequently speaks and publishes on patent post-grant proceedings, software patent eligibility and telecommunications-related patent strategies.
Sanjeev Mehta, Assistant General Counsel & Director, Verizon
Keith Newburry, VP, Chief Intellectual Property Counsel, Edwards Lifesciences
Alexander Schlee, Schlee IP
** Los Angeles Intellectual Property Law Association (provider # 2083) certifies that this activity has been approved for MCLE credit by the State Bar of California in the amount of 5 hours.
In-House: $239 ($269 after January 22)
LAIPLA Members: $339 ($369 after January 22)
Non-Members: $439 ($469 after January 22)
Non-Member Special: $489 ($519 after January 22). Non-Members for the low price of $489 can purchase a ticket to Washington in the West and Membership in LAIPLA for 2017-2018, a savings of $25.
Clerks/Government Employees: $149 ($179 after January 22)
LAIPLA Student Members: $89 ($119 after January 22)
Pre-registration deadline is Monday, January 22. After Monday, January 22, the registration fee increases by $30. Cancellations must be received by the pre-registration deadline of Monday, January 22.
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Throughout its fifty years activity Bugnion has grown and expanded up to becoming one of the foremost European and Italian partners in the market of intellectual property.
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With a pool of 72 patent, trademark, design attorneys fully qualified at the Italian Patent and Trademark Office and EUIPO (30 of them patent attorneys fully qualified at EPO and WIPO and 20 attorneys at law), Bugnion handles more than 8,200 clients in Italy and all over the world, almost 27,000 patents, models and designs and more than 45,000 trademarks, which has the company rank among the top three Italian and European attorneys and the top five CTM filers in Europe.
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