2014 Works-in-Progress Intellectual Property @ Benson Center, Santa Clara University
Feb 7 – Feb 9 all-day

    2014 WIPIP Silicon Valley

2014 Works-In-Progress Intellectual Property

February 7 – 8, 2014

Santa Clara Law

Highlights from WIPIP 2014

Call for Papers

Information on traveling to Santa Clara Law

(subject to change)

 Presenters & Discussants

B.J. Ard, Yale Law School Information Society Project (fellow)
Copyright License Enforcement Through the Contract Lens

Clark Asay, Penn State Law
Patent Law Tailoring

Shyam Balganesh, University of Pennsylvania Law School

David Balto, Law Offices of David Balto
The Patent Privateering Iceberg

Mark Bartholomew, SUNY Buffalo Law School
Intellectual Property’s Lessons for Information Privacy

Miriam Bitton, Faculty of Law, Bar-Ilan University
Commercializing Public Sector Information

Jeremy Bock, The University of Memphis Cecil C. Humphreys School of Law
Rethinking Patent Liquidity

Annemarie Bridy, University of Idaho College of Law
The Nuclear Option for Content Control: Online Payment Intermediaries as Proxy Censors

Christopher Buccafusco, IIT Chicago-Kent College of Law
Studying Uncertainty in Intellectual Property Valuation

Michael Burstein, Benjamin N. Cardozo School of Law
Governing Innovation Prizes

Sarah Burstein, University of Oklahoma College of Law
Design Patent Use

Irene Calboli, National University of Singapore
Overlapping Rights: When Works Become Brands (and What is Wrong With It)

Anupam Chander, UC Davis School of Law

Bernard Chao, University of Denver Sturm College of Law
The Potential and Pitfalls of Calculating Patent Damages Using Conjoint Analysis

T.J. Chiang, George Mason University
Patents and the First Amendment

Bryan Choi, New York Law School

Margaret Chon, Seattle University School of Law

Julie Cromer Young, Thomas Jefferson School of Law
Rethinking Copyright Pleadings

Ben Depoorter, University of California, Hastings College of the Law
Hypothetical Damages: Against Remedial Defaults in Copyright Law

Sam Ernst, Dale E. Fowler School of Law, Chapman University
Patent Exhaustion and the Exhausted Defendant: Why Parties Should Not Be Able to Contract Around Exhaustion in Settling Patent Litigation

Tonya Evans, Widener University School of Law – PA
Is There Any “Safer Harbor” from Statutory Damages in the Digital Age?

David Fagundes, Southwestern Law School
The Moral Foundations of Copyright Law

Christine Haight Farley, American University Washington College of Law
Sleeping Treaty: The Pan-American Trademark Convention

Robin Feldman, University of California Hastings College of the Law
Patent Demands & Startup Companies: The View from the Venture Capital Community

David D. Friedman, Santa Clara University School of Law
Feud as Law Enforcement, Ancient and Modern Or Why is There a Patent Troll Problem and How Can it be Solved?

Jeanne Fromer, New York University School of Law
An Information Theory of Copyright Law

Giancarlo Frosio, Stanford Law School (fellow)

Fabian  Gaessler, International Max Planck  Research School for Competition and Innovation (PhD student)

Kristelia Garcia, The George Washington University School of Law (VAP)
Artists’ Copyright: An Empirical Analysis of Ex Ante & Ex Post Justifications for Copyright

Alexandra George, Faculty of Law, University of New South Wales, Australia
How Long is Uncle Sam’s Arm? Extraterritorial Enforcement of Domestic Intellectual Property Laws

Deborah Gerhardt, UNC School of Law
An Empirical Study of False Advertising Claims Under the Lanham Act

Andrew Gilden, Stanford Law School (fellow)
Raw Materials in Intellectual Property

Alexander Goebel, Harvard Law School (visiting researcher)
A Comparative Approach to the Law and Economics of Secondary Markets for Digital Goods

John Golden, University of Texas School of Law
The Fracking Revolution: A Case Study in Policy Levers to Promote Innovation

Eric Goldman, Santa Clara University School of Law

Patrick Goold , UC Berkeley School of Law (fellow)
Is Liability for Copyright Infringement Strict?

Stuart Graham, Georgia Institute of Technology
Comparing Patent Litigation across Europe: A First Look

Brad Greenberg, Kernochan Center for Law, Media and the Arts, Columbia Law School (fellow)
Uncertain Rules and Unfair Standards: Copyright Subject Matter under the Strain of Disruptive Innovation

Tim Greene, Center for Internet and Society, Stanford Law School (fellow)

Michael Grynberg, DePaul University College of Law
Thick Marks Thin Marks

Eldar Haber, Faculty of Law, Tel-Aviv University (Ph.D. candidate)
Copyrighted Crimes: The Copyrightability of Illegal Works

D.R. Jones, The University of Memphis Cecil C. Humphreys School of Law
Law Firm Copying and Transformative Fair Use: An Examination of Different Purpose

Jay Kesan, University of Illinois College of Law
Patent Assertion Entities (PAEs) Under the Microscope: An Empirical Investigation of Patent Holders As Litigants

Kamil Kiljanski, European Commission

Jessica Kiser, Gonzaga University School of Law
Trademark Law as Corporate Law

Sapna Kumar, University of Houston Law Center
Public Law, Standing and the Federal Circuit

Megan La Belle, Catholic University of America Columbus School of Law
The Local Rules of Patent Procedure

Uyen Le, UC Davis School of Law

Matthew Lane, Law Office of David Balto
The Patent Privateering Iceberg

Stephen LaPorte, Wikimedia Foundation
Hacking Trademark Law: Reconciling Trademark Requirements With Collaborative Communities

Edward Lee, IIT Chicago-Kent College of Law
The Freedom of the Internet

Peter Lee, UC Davis School of Law
Social Innovation

Jeffrey Lefstin, University of California, Hastings College of the Law
Inventive Application: A History

Mark Lemley, Stanford Law School
Who Wins Patent Cases?

Yafit Lev-Aretz, Kernochan Center for Law, Media & the Arts, Columbia Law School (fellow)
Reconciling Pro-Choice with Pro-Creation: A Subtle Incentive Theory to Copyright Licensing

David Levine, Elon University School of Law
Secrecy in Startups: An Empirical Study

Yvette Joy Liebesman, Saint Louis University School of Law
Kamil Kubik: The Artist and Copyright Observed Through Time and Space

Raizel Liebler, John Marshall Law School
Use of Treatises in Intellectual Property Cases

Jake Linford, Florida State University College of Law
Semantic Shifts in Trademark Law

Jerry Liu, University of New Hampshire School of Law
Copyright Complements and Piracy-Induced Deadweight Loss

Doris Long, John Marshall Law School
Be Careful What You Wish For: When Trademarks Become “Investment” Properties

Lydia Pallas Loren, Lewis & Clark Law School
Copyright Litigation Reform Through the Plausibility Standard for Pleadings

Brian Love, Santa Clara University School of Law
A Survey of University High-Tech Inventors

Glynn Lunney, Tulane University Law School
The Right of Publicity and the First Amendment: A Fundamental Re-Examination

Phil Malone, Stanford Law School

Mark McKenna, Notre Dame Law School
An Empirical Study of False Advertising Claims Under the Lanham Act

Emily McReynolds, Tech Policy Lab, University of Washington (fellow)

Malwina Mejer, European Commission

Joe Miller, University of Georgia Law School
Error Costs & Functionality Exclusions

Shawn Miller, Stanford Law School Program in Law, Science and Technology (fellow)
If You Can’t Beat Them, Join Them? The Impact of ‘Sitting by Designation’ On Claim Construction Reversal

Emily Michiko Morris, Indiana University Robert H. McKinney School of Law
The Story of Nanotechnology Patents

Christina Mulligan, University of Georgia School of Law
Why Personal Property Servitudes Are Disfavored: Lessons for Digital Content and Patented Goods

Tal Niv, UC Berkeley Law School (PhD student)

Tyler Ochoa, Santa Clara University School of Law

Lucas Osborn, Campbell University School of Law
Open-Source Hardware and the Digitization of Things

Janewa OseiTutu, Florida International University College of Law
Corporate Intellectual Property Rights & Human Rights

Menesh Patel, Sidley & Austin
Do Rules of Procedure Matter? An Empirical Examination of Local Patent Rules and Case Settlement

Laura G. Pedraza-Farina, Northwestern Law School
The Federal Circuit and the Limits of Expertise

Aaron Perzanowski, Case Western Reserve University School of Law
Reconciling Personal and Intellectual Property in the Post-Copy Era

Irina Raicu, Santa Clara University Markkula Center for Applied Ethics

Sarah Wasserman Rajec, Stanford Law School Program in Law, Science and Technology (fellow)
Salvaging the ITC: How Court of International Trade Review Can Re-Legitimize Section 337 Actions

Srividhya Ragavan, University of Oklahoma College of Law
Developing Countries & the Post-Patent World

Amanda Reid, Florida Coastal School of Law
Copyright Capture: The Power of Music and the First Amendment to Set it Free

Abby Rekas, National University of Ireland, Galway (PhD candidate)
UNCRPD Article 30(3): Implications for Copyright

Chris Ridder, Stanford Law School (non-residential fellow)
Uncertainty In IP Address-Based Identification: Protecting The Innocent Internet Service Subscriber

Betsy Rosenblatt, Whittier Law School
The Adventure of the Shrinking Public Domain

Guy Rub, The Ohio State University, Michael E. Moritz College of Law
An Information Costs Approach To The First Sale Doctrine

Rachel Sachs, Seventh Circuit Court of Appeals (clerk)
Differential Pricing and Access to Medicines: Achieving Progress Through Compromise

Zahr Said, University of Washington School of Law
Interpretive Complexity in Copyright and Trademark: Comparing Substantial Similarity and Likelihood of Confusion

Karen Sandrik, Willamette University College of Law
The Unstable Environment of Private Ordering in Patent Law

Julie Samuels, EFF

Sharon Sandeen, Hamline University School of Law
Property Fail: How the Rhetoric of Property Rights Undermines Trade Secret Protection

Andres Sawicki, University of Miami School of Law
Risky IP

Victoria Schwartz, Pepperdine University School of Law
Unpacking Trade Secret Analogies

Jacob Sherkow, Stanford Law School (fellow)

Ted Sichelman, University of San Diego School of Law
A Proper Interpretation of the Venetian Patent Act of 1474

Toshiko Takenaka, University of Washington School of Law

Rebecca Tushnet, Georgetown University Law Center
Stolen Valor and Stolen Luxury: Free Speech and Exclusivity

Greg Vetter, University of Houston Law Center
Decanting the Software License in Health Information Technology

Saurabh Vishnubhakat, Duke Law School (Postdoctoral Associate)
The Patent Bar Gender Data File

Rob Walker, University of California, Hastings College of the Law (fellow)
Unavoidable Aesthetic Judgments in Copyright Law

Yana Welinder, Wikimedia Foundation
Hacking Trademark Law: Reconciling Trademark Requirements With Collaborative Communities

David Welkowitz, Whittier Law School
Fault Lines in Default Judgments

Felix Wu, Cardozo Law School

Peter Yu, Drake University Law School
Can the Canadian UGC Exception Be Transplanted Abroad?

Elana Zeide, NYU School of Law Information Law Institute (fellow)


For more information, please visit wipip.info.

View the WIPIP facebook page at https://www.facebook.com/wipip2014

High Tech Law Journal 30th Anniversary Symposium @ Computer History Museum
Feb 14 @ 9:00 am – 3:00 pm


30th Anniversary Symposium

February 14, 2014 at 9:00 a.m.

at the Computer History Museum.

Breakfast, lunch and a 3PM wine reception included. 4 Hours of CLE Credit.

1401 North Shoreline Boulevard, Mountain View, CA 94043, USA


register-buttonThe Santa Clara High Tech Law Journal is a progressive legal publication that has continued to maintain a strong presence after 30 years. We are in a unique position to host this important colloquium on government policy towards sharing economy Internet companies, as we are in the position to dig deeply into specific legal issues. This keynote series will host representatives from the Public Utilities Commission of California, DOJ of California, San Francisco Mayors Office, Twitter, Uber and AngleList.

This is a CLE accredited event, and informative for lawyers and advisors interested in learning more about the trends in government policy towards social internet commerce, and to receive insight from policy writers and attorneys from the top companies in this emerging space. We also encourage academics, policy advocates, entrepreneurs and law students to attend.

Conference Schedule

The conference program consist of six keynote speakers. Three in the morning coming from government agencies and then three in the afternoon who are policy writers for leading internet companies. The entire event is designed is to teach the audience how to navigate regulatory structures and participate in the drafting of new government policy towards disruptive business such as car sharing, crowd funding and social media. While these business models will be featured, the day is more about discussing how internet industries are reshaping traditional regulatory norms, and doing so quickly.

Each speaker will provide 20 minutes of presentation (think Ted talk format) followed by a moderated 20 minutes of Q&A.

The speaker lineup is:

9:15 Commissioner Sandoval, CPUC
10:15 Jeffrey Rabkin, Special Assistant Attorney General for Law and Technology
11:15 Shannon Spanhake, Deputy Innovation Officer in SF Mayor’s Office

1:10 Corey Owens, Head of Global Public Policy at Uber
2:00 Kevin Laws, COO of AngelList
2:45 Laura Pirri, Legal Director for Products at Twitter

For inquiries and press contact Nicole.Shanahan@htlj.org or call 415-624-7671.

Biotechnology Law Annual Wine and Cheese Event @ Strong Commons, Bergin Hall
Apr 16 @ 5:30 pm – 8:30 pm

The Biotech Law Group and the High Tech Law Institute present

BLG Annual Wine & Cheese Event

The Biotech Law Group is hosting its annual Wine and Cheese Networking event for those interested in biotech and life science law. Students, alumni and practitioners please join us on April 16th from 5:30 to 8 in Strong Commons, Bergin Hall.

RSVP online now!

USPTO – PTAB Roadshow @ Nobili Hall
Apr 29 @ 1:00 pm – Apr 29 @ 5:00 pm

The High Tech Law Institute is pleased to present

The USPTO AIA Trial Roundtable

View the PTAB AIA Trial invitation

View the Video(#45)

View the presentation slides

View photos of the event

Silicon Valley Intellectual Property Law Association (SVIPLA) to host a complimentary reception
immediately following the Roundtable

The Patent Trial and Appeal Board of the United States Patent and Trademark Office is hosting roundtables to share information about the new AIA trials (i.e., inter partes reviews, post grant reviews, covered business method reviews, and derivations) including statistics, lessons learned, and techniques for successful motions practice.  The Board is interested in receiving feedback about the trials and will feature a panel discussion to elicit public input.

The Roundtable is a free event and open to all with seating available on a first-come, first-served basis.  No registration is required.

For more information, visit the PTAB AIA Trial Roundtables microsite






  • Overview of trials, statistics, and lessons learned


Mock Conference Calls

  • Motion to amend
  • Motion for additional discovery




Panel Discussion

  • 2 administrative patent judges
  • local practitioners on behalf of petitioners
  • local practitioners on behalf of patent owners


Closing Remarks

Audience questions and participation is welcomed throughout the program

High Tech Law Graduation Brunch @ Mission Room, Benson Center
May 23 @ 9:30 am – 11:00 am

High Tech Law Institute

Graduation Brunch

Friday, May 23, 2014
9:30am – 11:00am
Mission Room, Benson Center

If you are a graduating student involved in the high tech law student group or academic program such as:

Biotech Law Group
High Tech & Computer Law Journal
Sports & Entertainment Law Society
Entrepreneurs’ Law Clinic
LL.M. in IP
High Tech related Moot Court Programs,

please join us for the high tech law graduation celebration.  Email invitations have been sent out via Paperless Post to.  If are a graduating student and were involved in one of the programs and did not receive your invitation, please contact Dorice Kunis at dkunis@scu.edu of the High Tech Law Institute.

Patent Prosecution v. Patent Litigation
Sep 9 @ 12:00 pm – 1:00 pm


September 9, 2014, 12:00pm

Bannan 142

“Patent Prosecution v. Patent Litigation”

Learn from experienced alumni about the different practices of patent prosecution and litigation.  Areas that will be covered include:

  • How to decide which patent practice may be right for you
  • Can you only practice one of the other?
  • How to best position yourself for a patent law career in law school (classes, internships, extra-curricular activities

Jacob T. Aikin, Esq., Partner, Blakely Sokoloff Taylor & Zaffman, is a member of the Patent Practice Group in BSTZ’s Sunnyvale office. He is a registered patent attorney whose practice focuses on intellectual property protection in the semiconductor, display, micro-electro-mechanical systems (MEMS), and medical device industries.

Eric Lancaster, Esq., Associate, White & Case, is an associate in White & Case’s Intellectual Property Practice Group in Palo Alto. His practice focuses on patent litigation across the country as well as before the United States International Trade Commission, covering a variety of technologies including software, social networking, mobile devices, semiconductor, LCDs, and computer hardware.

Navigating the Software Patent Landscape in the European Patent Office: An Examiner’s View @ Bannan Hall
Sep 26 @ 1:00 pm – Sep 26 @ 5:00 pm
Schwegman htli-logo-facebook


Schwegman, Lundberg & Woessner, P.A. and the High Tech Law Institute


Navigating the Software Patent Landscape in the European Patent Office:
An Examiner’s View

Register Online

“Navigating the Software Patent Landscape in the European Patent Office:  An Examiner’s View” aims to explain the EPO approach to software patents, and its history. The format  of the conference will begin with an overview of the current EPO approach to software patents by current EPO examiners. The presentation will be followed by interactive workshops moderated by EPO patent practitioners. The workshops will focus on the identification of patentable subject matter and how to develop arguments for patentability.

This conference is ideal for patent attorneys, agents and other legal professionals that advise on intellectual property protection of software and related technologies.

The event is complimentary, but you must register in advance.

Register Online

Four hours of California MCLE is offered upon completion.


John-CollinsDr. John Collins, Schwegman Lundberg Woessner, P.A., graduated with an honours degree in Medical Physics from London University and went on to obtain his doctorate in Physics from London University. After a couple of years post-doctoral research, he entered the patent profession in 1990. He is a Chartered Physicist, a Member of the Institute of Physics and a Member of the European Physical Society. His practice has covered a wide range of technical fields including logic design, medical equipment, telecommunications, Internet related technology, neural networks, genetic algorithms, speech recognition, active noise control, encryption, software and business methods. He has considerable experience of proceedings before the European Patent Office, including oppositions and appeals and also has experience in litigation both in the UK and the USA.

Cristina-Margarido Christina Margarido, EPO Examiner, holds a degree in Electrical Engineering from Porto University, Portugal, as well as a post-graduation in management. After a couple of years in Research, she became a Patent Examiner at the EPO in 2002. Her field of work ranges from electronic business, electronic payment, and devices for supporting learning. She has worked in search, examination and opposition of European Patent and Patent Applications.


Luca Falo, EPO Examiner, graduated magna cum laude in Electronic Engineering at the University of Rome “La Sapienza” in February 2000, with a dissertation in Artifical Intelligence. After graduation, he joined the Italian Air Force as Engineering Officer (Lieutenant). Since 2002 he has been a Patent Examiner at the EPO, first in the Telecommunication cluster and then in Directorate 1958 (Business Methods/Computer implemented inventions). He took further studies in International Law and Comparative Law at the University of Trento, Italy, and he has passed the European Qualifying Examination (EQE) in 2010.

Alex-TurnbullModerator:  Alex Turnbull, UK and European Patent Attorney, TLIP Ltd

Engineer and Patent Professional Networking and Career Event @ Nobili Hall, Santa Clara University
Oct 14 @ 6:30 pm – 9:00 pm

Join us for a networking reception that will bring engineers and patent professionals together, hosted by Santa Clara Law, SCU School of Engineering, the Silicon Valley Intellectual Property Law Association, IEEE and CASPA.

John Cabeca, Director of the USPTO Silicon Valley Satellite Office, and a panel of patent law practitioners will discuss how to leverage your engineering experience into a successful career as a patent professional.

The event is complimentary, but registration is required.  Email htli@scu.edu to register.

Featured Speakers and Panelists:

John Cabeca Director of the Silicon Valley United States Patent And Trademark Office

Laura Lee Norris, Assistant Clinical Professor and Director, Entrepreneurs’ Law Clinic, Santa Clara Law

Dan Ovanezian, Partner, Lowenstein Sandler

Joseph Wang, Esq., Associate, Schwegman Lundberg & Woessner



Event Partners:

scu-engineering-school-logo IEEE-logo  SVIPLA-logo CASPA-LOGO
Ethical Hacking: A Panel Discussion @ Forbes Room, Lucas Hall
Nov 20 @ 7:00 pm – 8:30 pm

Register Online

As more and more breaches occur, concern about cybersecurity keeps growing. Many companies now employ “ethical hackers,” whose skills are in high (and increasing) demand. Yet many people aren’t sure what “ethical hacking” means. This panel of cybersecurity experts will address various topics related to the ethical hacking certification, security issue disclosures, and employment of ethical hackers–including some of the legal and ethical quandaries associated with this fascinating line of work.

Panelists are:

  • Marisa Fagan – Director of Crowd Ops at Bugcrowd
  • Manju Mude – Chief Security Officer at Splunk
  • Seth Schoen – Senior Staff Technologist at the Electronic Frontier Foundation
  • Alex Wheeler – Director, Accuvant R&D

This event is co-sponsored by the Markkula Center for Applied Ethics and the High Tech Law Institute.  This event is part of the ongoing “IT, Ethics, and Law” lecture series.

Advanced PCT Training @ Santa Clara Convention Center
Feb 11 @ 1:00 am – 8:30 am
Schwegman htli-logo-facebook



Schwegman, Lundberg & Woessner, P.A. and Santa Clara High Tech Law Institute will host “Advanced PCT Training,” featuring Carol Bidwell and David Reed, US Consultants to WIPO on PCT matters with extensive PCT experience.  You can see the agenda (topics subject to change) of the seminar and bios of the speakers below.

There is no cost for the seminar or lunch.

We have applied for 6.0 CLE credits in California.

For more information and to register online, visit the site.


PCT Seminar Agenda for Schwegman Lundberg Woessner 
Santa Clara, CA
February 11, 2015

Topics (Provisional):

Overview of the PCT System

  • Brief Review of the PCT system including the timeline and major phases
  • Requirements for being accorded an international filing date
  • Naming the applicant

Choosing a Receiving Office for US Applicants

  • Requirements for filing in RO/US and RO/IB
  • Pros and Cons of using RO/US and RO/IB
  • Discussion of “applicant of convenience”

Choice of International Authorities for US Applicants

  • Review of ISAs and IPEAs available
  • Things to consider when choosing an ISA

Claiming Priority under the Paris Convention and Furnishing Priority Documents

  • Discussion of Articles 2, 3 and 4 of the Paris Convention
  • Possible legal consequences of EFS-Web filing in the USPTO
  • Discussion of “restarting” the Paris Convention priority period
  • Furnishing priority documents during the international phase
  • Using WIPO’s Digital Access Service

Procedural safeguards

  • Transmittal to RO/IB under PCT Rule 19.4
  • Incorporation by reference
  • Restoration of the right of priority
  • Fee safeguards
  • Preventing and postponing international publication
  • Recording changes in applicant, inventor and agents
  • Rectification of obvious mistakes

Internet Resources

  • PCT resources available on the WIPO Internet site and new search tools
  • Using the WIPO Internet site to view published international applications

Amendments under the PCT and Informal Comments

  • Discussion of Article 19 amendments including where to submit, time limits for doing so and purpose
  • Discussion of Article 34 amendments including where to submit, time limits for doing so and purpose
  • Informal comments on the Written Opinion of the ISA

8 Recent and Upcoming Changes

  • Review of 2013 changes to the PCT regulations
  • July 2014 changes
  • Information on ePCT

Strategies for Entering the National Phase

  • Decisions that applicant must make
  • Special requirements that may be made by Offices
  • Reinstatements of rights when national phase time limits are missed

Entry into the US national phase and By-pass Continuation Practice in view of the America Invents Act

  • Discussion of US national stage entry requirements
  • Requesting early processing instead of waiting for 30 months
  • New USPTO fee structure and a summary of national stage fees
  • Inventor’s oath/declaration both pre-AIA and AIA
  • How to make a domestic benefit claim in a national stage application
  • Claiming priority to a foreign application
  • Patent term adjustment for national stage applications
  • Filing a by-pass continuation as an option
  • Advantages and disadvantages of national stage entry and by-pass continuations
  • Transition applications for first inventor to file provisions of AIA

PCT and the Patent Prosecution Highway (PPH)

  • Information on Global PPH and IP5 PPH pilots
  • Using the PCT work products to get onto the PPH
  • Requirements for PCT-PPH in the USPTO

Where to get help

  • Contact information for US consultants to WIPO
  • Where to get help at the USPTO
  • Contact information for WIPO staff