32nd Annual Intellectual Property Section Seminar 2020 (Online Seminar)

A pre-recorded streaming video and audio replay of the September 2020 webcast, 32nd Annual Intellectual Property Section Seminar 2020.

Cosponsored with the Intellectual Property Section of the Virginia State Bar

The first hour of this program will provide an overview of several core aspects of legal ethics and practice before the USPTO. The session begins by briefly touching on various OED programs and initiatives, and then moves to a description of select regulations governing the USPTO’s disciplinary process and statistics regarding recent disciplinary orders. It concludes with a discussion of select case law relevant to practice before the USPTO in patent and trademark matters with an emphasis on USPTO disciplinary decisions.

The second hour of this program will address ethics issues facing lawyers practicing during and after the pandemic, including: core duties, such as communication, competence and diligence; confidentiality issues (especially involving technology use) when practicing remotely and at home; unauthorized practice of law and multijurisdictional practice issues; special ethics challenges in pandemic-driven practice areas (such as trust and estates, and bankruptcy) and processes (such as remote depositions and mediations); maintaining professionalism while serving clients.

The final hour will be a summary of recent decisions relating to patent, trademark, and copyright law, including appeals decided by the Court of Appeals for the Federal Circuit and the United States Supreme Court.

Cases to be discussed:

Patent

1. Thryv Inc. v. Click-To-Call Technologies LP—Supreme Court—April 2020
2. ESIP Series 2 LLC v. Puzhen Life USA LLC—Federal Circuit—May 2020
3. Apple v. Fintiv—PTAB (made precedential in May 2020)
4. Samsung Electronics America v. Prisua Engineering Corp.—Federal Circuit—February 2020
5. Nike Inc. v. Adidas AG—Federal Circuit—April 2020
6. Uniloc 2017 LLC v. Hulu LLC—Federal Circuit—July 2020

Trademark

1. Molson Coors Beverage Co. v. Anheuser-Busch Co.—7th Circuit—2020
2. U.S. Patent and Trademark Office v. Booking.com B.V.—Supreme Court—June 2020
3. Romag Fasteners, Inc. v. Fossil, Inc.—Supreme Court—April 2020
4. Lucky Brand Dunagrees, Inc. v. Marcel Fashions Group, Inc.—Supreme Court—May 2020
5. In re Forney Industries, Inc.—Federal Circuit—2020
6. Under Armour v. Under Armour (China) Co., Ltd.] (Fujian Province Higher People’s Ct. 2016)

Copyright

1. Allen v. Cooper, 140 S. Ct. 994 (2020)
2. Georgia v. Pub. Resource.Org, Inc., 140 S. Ct. 1498 (2020)
3. LEGO v. ZURU Inc., 799 F. App’x 823 (Fed. Cir. 2020)
4. Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018) (will be heard by the Supreme Court in October 2020)
5. IMAPizza, LLC v. At Pizza, Ltd., No. 18-7168, 2020 U.S. App. LEXIS 22294 (D.C. Cir. July 17, 2020)
6. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194, Nos. 18-56253 & 18-56548 (9th Cir. May 29, 2020)
7. Infogroup, Inc. v. DatabaseUSA.com LLC, No. 18-3723 (8th Cir. Apr. 27, 2020)
8. Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020)

FACULTY

Will Covey, U.S. Patent and Trademark Office / Alexandria
Margaret Esquenet, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Washington, DC
Aaron Parker, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Washington, DC
Thomas E. Spahn, McGuireWoods LLP / McLean

ABOUT THE SPEAKERS

Will Covey, U.S. Patent and Trademark Office / Alexandria

As Deputy General Counsel and Director for the Office of Enrollment and Discipline (OED), Will Covey is responsible for ensuring that the nation’s patent attorneys and agents are of good moral character and sufficiently knowledgeable to practice before the USPTO.  Mr. Covey’s team of attorneys and other professionals develop and administer a registration examination designed to measure applicants' knowledge of patent law and practice. Successful applicants are registered to practice by OED. In addition, OED investigates complaints of unethical conduct made against individuals practicing patent or trademark law before the USPTO.

Mr. Covey has held a number of key positions in the USPTO, including acting general counsel and deputy general counsel for the Office of General Law. He was appointed to the Senior Executive Service in 2007.

Mr. Covey received his undergraduate degree from Fordham University (Magna Cum Laude, Phi Beta Kappa) and earned his J.D. from Fordham University Law School in 1991. He graduated from Harvard University's JFK School of Government (Senior Executive Fellowship) in 2005 and the U.S. Army War College with an M.S. (Strategic Studies) in 2010.

Prior to joining the USPTO in 2000, Mr. Covey was a special assistant U.S. Attorney for the District of New Jersey. He also served on active duty in the Pentagon. He is currently a senior officer in the Army Reserve assigned to the Army Staff, Office of the Judge Advocate General. He completed combat tours in Iraq (2007) and Afghanistan (2011) and served as deputy legal counsel to the Chairman of the Joint Chiefs of Staff.

Margaret Esquenet, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Washington, DC

Margaret Esquenet focuses on contemporary issues in U.S. and global copyright, advertising, and trademark law. She leads litigation teams defining the scope of copyright protection, trademark infringement, and advertising substantiation on traditional and emerging platforms. She provides legal counsel across all media, in all facets of branding, advertising, and marketing. Ms. Esquenet is experienced in First Amendment and media rights and has been tapped as an intellectual property legal expert for National Public Radio and Bloomberg BNA stories.

Aaron Parker, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Washington, DC

Aaron Parker, leader of Finnegan’s mechanical practice group, focuses his practice on patent and trade secret litigation before U.S. district courts, client counseling on global patent litigation strategies, and patent and trade secret portfolio analysis and management. Much of his work relates to counseling clients in the sports, fitness, and outdoor industries on all aspects of intellectual property.

Additional areas of Mr. Parker’s practice include complex patent prosecution, reexaminations, post-grant proceedings, licensing, preparing opinions of counsel, due diligence, and clearance analysis. He has managed several large patent application portfolios relating to dialysis machines and processes, and water and septic drainage applications. He also has extensive experience relating to medical device technology, including coronary bare metal and drug eluting stents, medical imaging, balloon dilatation catheters, pacemakers, defibrillators, dialysis machines and processes, radiotherapy devices, and heat packs. He has worked on a wide range of other technical subjects, including consumer health products, wearable technology, consumer electronics, activity trackers, mobile smart phone technology, fuel injection systems, oil and gas separators, oil pipeline technology, drainage and septic systems, aerogel materials, infant/toddler products, and power tools.

As part of the firm’s pro bono program, Mr. Parker successfully represented several disabled veterans before the U.S. Court of Federal Claims and in appeals before the U.S. Court of Appeals for the Federal Circuit.

Mr. Parker frequently presents to clients and various industry associations on patent and trade secret issues, global enforcement of patents, and practicing before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO).

Thomas E. Spahn, McGuireWoods / McLean

Thomas E. Spahn practices as a commercial litigator with McGuireWoods in Tysons, Virginia.  He was selected as the 2013 and the 2020 metro-Washington DC "Lawyer of the Year" for "Bet the Company Litigation" by The Best Lawyers in America (Woodward/White, Inc.).  In 2018, Virginia Lawyers Weekly selected him for inclusion in the inaugural Virginia Lawyers Hall of Fame.  Mr. Spahn has served on the ABA Standing Committee on Ethics and Professional Responsibility, and is a Member of the American Law Institute and a Fellow of the American Bar Foundation.  He has spoken at over 1,900 CLE programs throughout the U.S. and in several foreign countries.  Through links on his website bio, Mr. Spahn has made available to the public:  his summaries of over 1,600 Virginia and ABA legal ethics opinions, organized by topic; a 300-page summary of his two-volume, 1,500 page book on the attorney-client privilege and work product doctrine; over 950 weekly email alerts about privilege and work product cases; materials for over 40 ethics programs on numerous topics, totaling about 10,000 pages of analysis.  Mr. Spahn graduated magna cum laude from Yale University and received his J.D. from Yale Law School.