ACC Intellectual Property Committee March Newsletter
IN THIS ISSUE...
Message from the Chair  
Member Spotlight  
Monthly IPC Calls and Upcoming 2018 IP Quick-Hits  
ACC IP Committee eGroups –Almost 7,000 Members & Growing!  
Your Intellectual Property Committee Leadership Team (2017-2018)  
Sponsor's Corner  
Job Listings  
Networks
Virtual Library
Renew Your Membership
Update Your Records
Upcoming ACC Programs
Search Back Issues

Webcasts
Updates From ACC Committees

Message from the Chair
Alisa Key

Welcome to our first 2018 IPC Newsletter. As we mentioned in our last newsletter, we have been busy exploring new opportunities for the Intellectual Property Committee. In addition to the work we’ve done in putting together and proposing content rich and engaging programs for the 2018 Annual Meeting, we will get to know individual IPC and Sponsor members through Member and Sponsor Spotlights which we are introducing with this quarterly newsletter. We also plan to soon announce a Mentoring Program that we have been developing with our Sponsor, Judy Powell and Kilpatrick Townsend.

Please join us each month for our business meeting and reach out if you would like to become more involved in the IPC. We have a number of leadership openings to fill and can guarantee it’s a good way to get to know the IPC better and make valuable connections within the IP bar.

Alisa Key 
2017-2019 IP Committee Chair
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Member Spotlight
Getting to Know Our IPC Chair: Alisa Key

If you could share with us three things about yourself, what would they be?

Growing up in Washington, D.C. with a mother who worked for the Department of Justice, I was exposed to the legal profession early on and it intrigued me. I wasn’t certain I wanted to be a lawyer after completing my undergraduate studies. I also had the acting bug and loved advertising and the arts.  After working for several years in an IP boutique, I realized I could combine all three interests in a career in IP law and off to law school I went.    

But for (no we are not going down the Res Ipsa Loquitur path)…But for four minutes of my life, I’ve been a part of a team. As a twin, I think I learned early on that having a partner in crime had many benefits. All kidding aside, I believe that the best work can be done by teams and that each member’s contributions (whether it’s skill, viewpoints, thoughts, ideas, motivation, determination, etc.) are invaluable to the team.

I enjoy trying new things and they’ve certainly helped me to learn a bit more about myself. In my senior year of college, our swim team needed a diver. We were losing points because we didn’t have one. It didn’t matter whether you were a novice or an expert; we just needed someone to dive.  I’d never been much of a diver except at the neighborhood pool during the summer. In fact, you could say I was a “late bloomer” in the diving department. There were basic dives I needed to learn to earn points and I wasn’t mastering one of those dives. I realized I just could not see myself doing the dive in the way my coach wanted me to.  So I tried to see myself doing it differently. It worked and, at that moment I learned that I am very much a visual learner.  It was a good lesson and I’ve learned that, if I want to remember or learn something well, I need to find a way to visualize it.

Since you’ve been practicing law, how have you seen it change?

I’ve had the privilege of working both as outside counsel for many years as well as in-house counsel and I’ve seen some great changes in the way that various outside counsel approach their advice to in-house counsel. For many outside counsel, like Kilpatrick Townsend, it has become a focus on pragmatism and providing practical advice which takes into account the realities in which a company operates as well as its business goals.

What tips would you share with our members that have guided you in your legal profession?

Adopt a “can do attitude.”  “Let’s see how we can make this happen” can go a long way compared to “we can’t do this.” Whether it’s in my legal practice or in my personal life, it helps to show the person who is asking something of me that I consider myself his partner.

It’s all in the delivery. There’s so much that goes into this tip. First, know your audience. You may be in a meeting with people who have little time and want the bottom line. Give them the quick, simple and short answer they need and don’t get caught up in the detail.  You will lose them. They will ask for the detail if they want or need it. You may be working one on one with someone else who, like me, might say: “Show me what you mean.” Show them, don’t just tell them.  Be confident in your delivery. If you believe, they will too. And, if you have to deliver a “we can’t do this” answer, see if you can couple it with a “but, we can do this instead” alternative.

Delegate.  You can’t do it all.  There is immense power in teamwork.

If you could attend or watch any one historical event, what would it be?

The March on Washington led by Martin Luther King, Jr. What a powerful and inspirational event and person. Every time I’m in front of the Lincoln Memorial I can’t help but wonder what it would have been like to have been there.

What do you enjoy doing in your spare time?                

My new favorite sport is pickleball. I’ve been playing for almost two years and I’m fairly certain I’m addicted. It’s become such a multi-generational sport and I love playing with all skill levels and ages. Recently, I learned that I’ve been playing with one of the pickleball pioneers from the west coast.

I love to travel when I get a chance and have a long list of far off places I’d love to visit someday.  If I can’t get to any of these places anytime soon, I might jump in the car with my dogs and my camera and head to the beach. 
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Monthly IPC Calls and Upcoming 2018 IP Quick-Hits

IP Committee Monthly Membership Call: Committee News, “What’s Hot”, & 30-minute Legal Quick Hit (LQH): The IP Committee full membership meets monthly on the second Wednesday of each month except July. We hold a roundtable presentation of What’s Hot Topics that rotate among Patents, Trademarks, Copyrights, Trade Secrets, and IP Transactional Issues with one or two presented each month. Login to the ACC Website, and navigate to the IP Committee webpage for upcoming meeting telephone and webcast information.

Please join us for our March 2018 Chuck Taylor on Trial: Secondary Meaning for an American Icon,  Wednesday, March 14, 2018 (12:00pm – 1:00pm ET). Login to the ACC Website, & navigate to the IP Committee webpage or click the meeting link to join and add to your calendar. 

In the last two years, the IPC and Kilpatrick Townsend have presented more than 20 Legal Quick Hits covering a wide range of IP topics. We’ve negotiated the cloud; look at joint IP and trade dress; visited Cuba; considered tax impacts, Halo, damages and privilege, looked at disparagement; and, addressed many other patent, trademark, copyright and other IP areas. Here’s a look at what we’ve covered:

Who Owns the IP? IP Issues in Consulting Agreements

Protecting the Privilege for In-house Work Product in a Post-Halo Environment

Patent-Related Issues in the Government Contracts Universe

Navigating the Post-Grant Landscape

Important Considerations in Licensing Know-how with Patents

Matal v. Tam and its Potential Significance to US Federal Trademark Law

The Ostrich Effect – Halo & Enhanced Damages

Creating a Big Data Strategy: Managing Risk and Enabling Innovation

Exporting Non-Practicing Entity (NPE) Litigation?

Glass Half Empty or Half Full? Key Ways to Right-Size Joint IP Ownership

Utilizing U.S. Discovery in Foreign Proceedings: Leverage and Defense Tactics Under 28 U.S.C. §1782,

Samsung v. Apple and Design Patent Damages - Now What?

Recurring Questions; Unsatisfactory Answers: An Interactive Discussion Regarding the Gnu General Public Licenses LQH

To Patent or Trade Secrets? The U.S Defend Trade Secrets Act (DTSA)'s Impact on How Best to Protect Your IP

Review of Post-Alice Landscape

Damage by Design: Which Profits?

Tax Issues Impacting Intellectual Property Transactions 101 & 102

Cybersecurity – A Legal Issue Disguised as an IT Problem

The US Defend Trade Secrets Act: Has the Time Finally Come for Federal Trade Secret Legislation?

IP Considerations and Opportunities in Cuba

Negotiating the Cloud: An Overview of Key Issues in the Cloud

United States Trade Dress Protection

If you have ideas for topics that you would like to see presented in our monthly Legal Quick Hit, please reach out to a member of the IPC Leadership.

MONTHLY IP COMMITTEE EXECUTIVE LEADERSHIP MEETINGS: First Tuesday of Each Month: Join your colleagues and IP Committee leaders and participate in a brief 30-minute teleconference every month to help us plan new content and events.

You may join by calling 877-647-3411, ID# 755 433 7375 at 12:00pm ET, 11:00am CT, 10:00am MT, and 9:00am PT.
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ACC IP Committee eGroups –Almost 7,000 Members & Growing!

Among the many resources available to members of the Intellectual Property Law Committee, the best resources are each other, and we leverage our collectively knowledge, skill, and abilities in many ways using the ACC website.  Login to the ACC website now and visit our IP Committee eGroups forum.

The ACC IP Committee eGroup postings are a forum for members to engage with fellow members, present general and tactical questions, exchange ideas, share best practices, offer template forms, reach out to international membership for information and advice on issues in non-familiar jurisdictions, and many other resources.

We’ve recently seen posts relating to various trademark and copyright points of interest such as TOUs, copyright licenses, trademark policies, enforcement and monitoring services and endorsements.  We’re always looking for good topics to form the basis for a sample form or policy, Quick Hit, Webcast, Quick Counsel, InfoPak or Top Ten and we certainly look to the engagement that we see through the eGroup to measure topics that are important and relevant to our membership.

We also provide summaries of the What’s Hot topics that are featured during our monthly meetings, with links to cases, decisions, proposed legislation and regulations, other items of interest to IP practitioners.

Anyone can anonymously post questions and answers. Members may submit eGroup inquiries, and every member may respond.  DISCLAIMER:  eGroup responses are informational only, and are not considered legal advice or counsel.  A client-attorney relationship is not formed from such communications. 

We strongly encourage our membership to take advantage of this invaluable resource. Postings may be found here. If you have questions or need assistance, contact Communications Chair Sean Casey 
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Your Intellectual Property Committee Leadership Team (2017-2018)

POSITION

NAME

Chair

Alisa Key

Senior Counsel - IP,

Pearson Education, Inc.

(703) 727-9460

alisa.key@pearson.com

Vice-Chair

 Casey Mangan

Counsel (Retired)

Allstate Insurance Company

(847) 402-8799

cmangan718@gmail.com

Secretary

Margo Lynn Hablutzel

Advisor – CABO ACCM

DXC Technology

(860) 404-2511

mhablutzel2@DXC.com

Chapter Relations

Liaison Chair

Karna Nisewaner

Associate General Counsel - Intellectual Property,

Cadence Design Systems Inc.

(408) 944-7035

karna@cadence.com

Communications Co-Chair

Sean Casey

Patent Portfolio Manager

Searchable

213.266.4586(w) / 714.955.9592(m)

sean.casey@searchable.com

Communications Co-Chair

AVAILABLE

Annual Meeting

Program Co-Chair

Karen Cawdell

VP General Counsel – Patents

Reckitt Benckiser (RUMEA) Limited

+44 (0) 1753 446232

karen.cawdell@rb.com

Annual Meeting

Program Co-Chair

William Calore

General Counsel & Secretary,

Axle Tech International, LLC

(248) 822-7511

bill.calore@axletech.com

Strategy Chair

Carol Brani

Senior Director &

Associate General Counsel

LexisNexis Legal & Professional

(919) 378-2705

carol.brani@lexisnexis.com

Forms & Policies Chair

Kim Jessum

Chief IP Counsel U.S. & Associate General Counsel

Heraeus Incorporated

Langhorne, PA , USA

(215) 944-9983

kim.jessum@heraeus.com

Infopak Lead and Co-Lead

AVAILABLE

Legal Quick Hits and

Quick Counsel Co-Chair

Lynne Kane-Van Reenan

Senior Contracts Attorney

Rockwell Collins, Inc. (ARINC)

Annapolis, MD

(410) 266-4543

lkanevan@arinc.com

Legal Quick Hits and

Quick Counsel Co-Chair

Thomas Feix

Senior Corporate Counsel - Patent, The Clorox Company

(510) 271-7416

thomas.feix@clorox.com

What’s Hot Coordinator

Sean Casey

Patent Portfolio Manager

Searchable

213.266.4586(w) / 714.955.9592(m)

sean.casey@searchable.com

ACC Docket Article

Co-Lead

Rebecca Hanovice

Senior Intellectual Property & Litigation Counsel

Callaway Golf Company

Carlsbad, CA , USA

(760) 930-8482

rebecca.hanovice@callawaygolf.com


ACC Docket Article

Co-Lead

William Eipert

Senior Managing Counsel,

Xerox Corporation

(585) 422-4037

william.eipert@xerox.com

ACC Docket Article

Co-Lead

Sarah Beisheim

Senior IP Counsel,

Xerox Corporation

(585) 231-2555

sarah.beisheim@xerox.com

Advocacy & Case Law

AVAILABLE

Webcast Co-Chair

Jon Holt

LexisNexis

(937) 865-7317

jon.holt@lexisnexis.com

Webcast Co-Chair

AVAILABLE

Top Ten Co-Chair

Michael Mueller

Conatus Pharmaceuticals

(858) 376-2641

mmueller@conatuspharma.com

Top Ten Co-Chair

Lewis Craft

Huntsman

(281) 719-4553

lewis_craft@huntsman.com

Immediate Past Chair

John Bates

General Counsel

Clarity Solution Group, LLC

(312) 388-7588

jbates@clarity-us.com


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Sponsor's Corner
Kilpatrick Townsend

Recent Publications:  Visit the Kilpatrick Townsend Knowledge Center

& Kilpatrick Townsend’s “Well-Read” Publications Resources.

SPONSOR SPOTLIGHT

Getting to Know Judy Powell

For many years, Judy Powell has been a steadfast partner, promoter and supporter of the IPC through her firm’s sponsorship of our committee. The IPC would not be where it is today without the amazing support of Judy Powell and Kilpatrick Townsend.  We sat down with Judy to get to know her a little bit more.

If you could share with us three things about yourself, what would they be?

Specializing in complex business litigation for the first fifteen years of my legal career, I only made the transition to intellectual property when my partners needed help on a major trademark case “for three days.”  I never went back.

My work with the ACC IP committee is among the most rewarding aspects of my practice because it allows me to get to know, work with, and socialize with so many smart, dynamic, and interesting people. Who knew lawyers could be so fun?

My work supports my adventure travel passion that began almost twenty-five years ago, paddling whitewater rivers around the world.

Since you’ve been practicing law, how have you seen it change?

The best change I have seen is the dramatic strengthening of the partnership between in-house and outside counsel. In-house counsel used to outsource certain work, outside counsel would just get it done and report back. Work now, whether primarily performed in-house or primarily performed outside, is more collaborative, resulting in a more fun team process, a better end result on a given matter, and better alignment of that matter with overall business strategy.

What tips would you share with our members that have guided you in your legal profession?

Take extra time to get to know those with whom you work and to learn all aspects of your client’s business and industry, even those that do not directly affect the work you are doing. The first will make your work more enjoyable, and the latter will make your advice more valuable.

If you could have coffee with anyone, living or dead, who would that be? 

This is a toss-up between Eleanor Roosevelt and Catherine the Great, both strong, though far from perfect women, who accomplished tremendous results, each in her own way and both in times when there was little support for women as leaders.

What do you enjoy doing in your spare time?                 

My favorite “off-the clock” activities are those that keep me engaged with people and learning and doing new things. They include travel to unusual places (for example Ethiopia, The Sudan, and Myanmar in recent years) because I learn about history, culture, religion, geography, and indeed humankind. They also include spending time with each of my nieces and nephews, whether hiking or jumping on trampolines with the young ones or discussing politics or a book with the older ones.
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Job Listings
For current career opportunities in the in-house intellectual property field, please click here and visit the ACC Careers Website.
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