IPLAC Newsletter – September 2020

I.  President’s Corner

Dear IPLAC Members,

This is an amazing year. This is the 40th anniversary of the Supreme Court decision in Diamond v. Chakrabarty. In that decision, written by Chief Justice Warren E. Burger, the Supreme Court majority ruled that Congress had intended patentable subject matter to "include anything under the sun that is made by man." That one line has filled generations of inventors and attorneys with hope for a promising future. Unfortunately, Dr. Chakrabarty passed away this year, but the eternal hope inspired by him, and his fight to patent his invention, should remind us of the role we play in helping innovation lead the way to a better future.

We all remember that only 19 years ago, life came to a standstill as the impact of the collapse of the Twin Towers on September 11, 2001 was felt around the world. My daughter, who was born months later, came to grow up in a different, less innocent world. The economic challenges faced by the shutdown of all airlines, the crippled economy, the deaths of thousands of friends, relatives, and acquaintances once or twice removed, and the distrust of fellow Americans who looked different seemed like daunting challenges. Yet, we overcame some of those challenges. At the beginning of 2020, the economy was roaring, unemployment was low, record numbers of patents were being granted, and record numbers of trademarks were being registered. Now with the coronavirus pandemic upon us, and demonstrators on the street shouting for justice, similar traumas and stresses are occurring again, hitting a new generation for the first time while reminding the older generations of past challenges yet to be resolved.

Looking back over the past 40 years since the Charkrabarty decision, I know we will get through these difficult times. Some of us will be more fortunate than others. Through it all, however, IPLAC has survived and will be there for you. IPLAC is now entering its 136th year. It is the oldest bar association in the United States dedicated to Intellectual Property law. It survived the great Influenza pandemic of 1918-1920. It survived World War II. It survived the civil unrest and violent protests of the 1960s. It survived 9/11 and it will survive Covid-19. It will survive because of you, and for you, the members of IPLAC. IPLAC is here to serve its members. IPLAC advocates for improvements in IP laws, better administration of the Patent and Trademark Office, and fairer justice in the courts for both IP Owners and the Public. IPLAC provides educational opportunities for members to receive CLE credits. IPLAC provides opportunities for professional discourse and social interaction to bring civility to the profession.  

IPLAC is helping us all get through these times by continuing to provide essential services to maintain the professionalism and cohesiveness in the IP Community. We are taking the past successful formula of IPLAC and moving online. Our Committees and their members are planning a great lineup of CLE events this fall that I hope many of you will attend. IPLAC also offers hardship dues exemptions to its members. Please contact the membership committee at [email protected] for more information. IPLAC will stand by you in hard times as well as in good times. Many of our upcoming online events will offer CLE and will be free to members.

The Corporate Committee is planning a fall kick-off event on Sept. 30th, with a program on Health Data, Technology & Global Crises, including a keynote presentation by USPTO Director Andrei Iancu. (Please contact Billie Hinnen at [email protected] to register.)

Over the summer, we initiated a series of group discussions on Justice and Diversity in the Profession. These discussions included a talk on professional perspectives from diverse IPLAC members, and a book discussion about “White Fragility” by Robin D’Angelo. The discussions will continue on Sept. 22nd with a discussion of the book, “How to be an Anti-Racist” by Ibram X. Kendi. The sessions help open the dialogue on issues of justice, diversity, and racism, and provide a safe environment in which members may freely discuss their view or just listen and learn from the different voices that make up our profession today.

IPLAC Committees are busy planning other events. In October, the AIA Trial Committee is planning an event featuring a Vice-Chief Judge of the PTAB. The Trademark Committee is planning an event on Election Branding. The Corporate Committee is planning an event on Data Privacy. In November, the International Relations Committee is planning sessions discussing IP and the new USMCA Trade Agreement, featuring speakers from Mexico and Canada. The Copyright Committee is planning an event on Marketing in the era of Covid-19. The Patent Committee is planning an event on Artificial Intelligence (AI), Machine Learning (ML) and Patents. We are also planning the IPLAC Annual Symposium for early December. Stay tuned for these and more.

Also, IPLAC rolled out new benefits for members and are planning more. This past winter we announced a collaboration with AIPLA, by which IPLAC members receive discount pricing on AIPLA on-demand Webinars. Click here for more information: https://www.aipla.org/webinars/expand/iplac-members

Please contact the leaders of the various Committees if you would like to get involved in planning these CLE events or have ideas for other fun events. Committee leaders are listed on www.iplac.org. You can also send an email to [email protected] for more information on how to get involved, or contact me directly at [email protected].

Warmest wishes,

Marc V Richards

136th President

II.  2020 Annual Meeting

The 2020 IPLAC Annual Meeting was held via Zoom on May 20, 2020. In the 136th year since IPLAC was founded, this was the first ever annual meeting for IPLAC that was not held in-person. Nearly 100 members attended via the Zoom online meeting platform.

Marc Richards presented the President’s Report and explained how successful the past year was until it was cut short by the coronavirus pandemic. Many great events were scheduled for the Spring that had to be cancelled. Despite these troubled times, IPLAC is financially healthy, with substantial reserves, and is working hard to transform into an online platform for delivering value, connectedness, and IP advocacy for its members. Despite having its year cut short, IPLAC submitted to the US Supreme Court five amicus curiae briefs touching on all areas of IP law. Some of the highlight events last year included the Corporate Committee in-person fireside chat with USPTO Director Andrei Iancu at the Google office auditorium. IPLAC held its Annual Dinner in honor of the Judiciary and awarded the Judicial Service Award to Magistrate Judge Sid Shenkier. The annual symposium included an exciting afternoon with panels of Judges from the Northern District of Illinois, attorneys from overseas, and other insightful speakers. The Women in IP Committee held its annual progressive dinner with a capacity crowd. Our last event before the pandemic hit was the ever popular Paralegal Committee Wine and Cupcake social. IPLAC hopes to continue these and other events in a new way in the coming year as we learn how to navigate these turbulent waters.

The meeting continued with the annual elections. The following officers and board members were elected or will continue on for the 2020-2021 member year:

President – Marc V Richards (Brinks Gilson & Lione)
President-Elect – Erin W. Lothson (Uber Freight)
Vice President – Tiffany D. Gehrke (Marshall Gerstein & Borun LLP)
Secretary – Joe Janas (Wells Fargo)
Treasurer – Peter Prommer (Nixon Peabody LLP)
Past President – Adam G. Kelly (Loeb & Loeb LLP)

First Year Board Members:
Wasim Bleibel (Locke Lord LLP)
George Jonas (BP)
Anisha Mehta (K&L Gates LLP)
Libby O’Neill (Loeb & Loeb LLP)

Second Year Board Members:
Clinton H. Hallman Jr.
Jared E. Hedman (JE Hedman Law LLC)

RiKaleigh C. Johnson (Greer Burns & Crain, Ltd.)
Daryl Lim (UIC John Marshall Law School)

The outgoing Board Members and Officer were thanked for their service:

Erin J Fox (Illinois Tool Works, Inc.)
Anna L. King (Banner & Witcoff, Ltd.)
Tanya Miari (McDonald’s Corporation)
Kevin Noonan (McDonnell Boehnen Hulbert & Berghoff LLP)
Charles W. Shifley (Banner & Witcoff, Ltd.)

At the meeting, the annual IPLAC Educational Foundation scholarships were announced. The scholarships include The Ronald J. LaPorte Memorial Scholarship, the Oliver T. Ong Memorial Scholarship, and four IPLAC Foundation Scholarships. These scholarships are presented to academically excellent high school graduates from the Chicago Public Schools who plan to obtain a STEM degree or study pre-law from a four-year college. For more information or to make a donation, please visit: https://www.iplac.org/iplac-educational-foundation-donation.

Recipients of the 2019-2020 Committee of the Year Award were announced. This past year, there was a tie, with awards being presented to the Amicus Committee and the Field Day Committee.

Before closing the meeting, incoming President Marc Richards made brief remarks. He thanked the past Presidents Adam Kelly and Charles Shifley for the work they had done in making IPLAC the strong and healthy association that it is with committed members who will help the association weather the current pandemic and come out stronger on the other side. Marc made special note of the new Mentorship Program launched this year and encouraged members to participate. He noted that the association has a very strong board of managers comprising dedicated attorneys who will help grow and nourish the next generation of leaders of IPLAC. He encouraged members to get involved, sign up, and become active in an IPLAC Committee.

III.  IPLAC Launches New Mentoring Program

Due to the pandemic, traditional opportunities for law students and newer attorneys to learn form experienced IP attorneys have diminished, as have job and networking opportunities. To help remedy this situation, and to ensure that the next generation of IP attorneys start their careers on the right foot, IPLAC launched its inaugural Mentoring Program in June 2020. Over 40 IPLAC members volunteered to work with the mentees, who ranged in experience levels from their first year of law school through their third year of practice. Mentors and mentees are expected to meet at least once a month, and can meet virtually. Mentoring is also a two-way street, and both the mentor and mentee are encouraged to learn from one another. The Mentoring Committee, which is the IPLAC Committee in charge of the Program, is led by Kenny Matuszewski of Neal, Gerber & Eisenberg, LLP. Rachel Miller of Latimer LeVay Fyock LLC and Eric Moss, student at UIC John Marshall Law School, are Vice Chairs of the Committee. Finally, special thanks go out to Clinton Hallman, Erin Lothson, and Colin O’Brien for helping the Mentoring Program get off the ground, and for assisting throughout the process.

IV.  Young Members Committee Panel Discussion on Navigating Employment During a Recession

On June 11, the Young Members Committee held an interesting and timely virtual panel discussion to share experiences about navigating the job market in the economic downturn following the 2008 financial crisis, and how law students and young attorneys could best position themselves for landing a job in the current market contraction. Khurram Naik of Goodwin moderated a webinar panel that included Katherine Dennis Nye of Neal, Gerber & Eisenberg, Leonard Giannone of Barnes & Thornburg, and Jameson Ma of Bookoff McAndrews. Thank you to our panelists for an informative and interesting discussion, and to all of our attendees. Below are screenshots of the discussion:

V.  IPLAC Becomes Signatory of the Chicago Bar Association’s Young Lawyers Section Racial Justice Coalition

In June 2020, the Chicago Bar Association’s Young Lawyers Section developed the Racial Justice Coalition (“RJC”), in response to the devastating loss of so many lives at the hands of law enforcement officers, including the recent killings of George Floyd, Breonna Taylor, and Elijah McClain. The RJC recognizes the urgent need for police reform, legislative action on issues of racial inequality and systemic racism, and a better understanding of how diversity and inclusion make a society stronger. In addition to his work on the Mentoring Committee and other IPLAC initiatives over the years, Kenny Matuszewski also serves as a Co-Chair of the RJC.

Since its first meeting in June, the RJC has grown to have more than 30 signatory members, made up of bar associations, legal organizations, and law student organizations. IPLAC is proud to be one of the initial signatories of the RJC and to promote and diversity and inclusion in the practice of intellectual property law. Through its Book Club, IPLAC has taken a stand against racial injustice by first starting with Robin DiAngelo’s book, White Fragility. These conversations will be continued throughout the year. The next IPLAC Book Club will be hosting a joint book discussion with the RJC and discuss Ibram X. Kendi’s New York Times best-selling book: How to be an Antiracist. If members purchase the book on Amazon Smile here, a portion of the proceeds will be donated to the IPLAC Educational Foundation.

VI. IPLAC Welcomes its New Members

IPLAC welcomes fifteen new members since April. New members include:

R. David Donoghe of Holland & Knight LLP

Jennifer Gordon of Marshall Grant

Dana Kondos of LS3 IP Law Firm

Patrick Reidy of Arnold & Porter

Meghan Tierney of K&L Gates LLP

Sean Swidler of Swidler Law Group LLC

Joseph Trunk of Vogelzng Law, P.C.

We look forward to interacting with you and getting to know you at our upcoming events. Additionally, we are excited to have many new law student members join IPLAC. We applaud them for their proactivity and look forward to their involvement! New law student members include:

Jad Elchahal

Kyle Gerstner

Spenser Jaenichen

Damyan Kolomayets

Ben Kovach

Cameron McIntyre

Natasha Sansone

Elizabeth Sawyer


Question:  This monument was protected by Design Patent #11,023, which issued in 1879. Name the monument.

Answer: The Statue of Liberty

Read more about it here from the Smithsonian.

VIII. Call for Content

IPLAC welcomes submissions of material for its e-newsletter. Please forward information to Adam Sussman of Brinks Gilson & Lione.