Attention:

Navigating Venue and Jurisdiction in IP Litigation in Canada and the US


Level: Advanced
Runtime: 93 minutes
Recorded Date: October 09, 2018
Click here to share this program

Agenda


  • Which Courts to Choose and Why?
  • Procedural Options for IP Infringement Claims
  • Administrative Challenges to IP Rights
  • Cross-Jurisdiction IP Litigation
  • Recent Jurisdiction Jurisprudence
Runtime: 1 hour and 33 minutes
Recorded: October 9, 2018

Description

Learn best practices and key considerations that parties should be aware when selecting venue and jurisdictions for patent, trademark, copyright and other types of IP litigation.

This program was recorded on October 9th, 2018.

Provided By

American Bar Association

Panelists

Will Boyer

Associate
Gowling WLG

Will Boyer is an associate in Gowling WLG's Ottawa office. His practice focuses mainly on patent litigation. He also has experience in litigation matters related to pharmaceutical regulatory law, trademarks, copyright, and trade secrets. He has worked with a wide variety of clients, from large international companies to small and medium-sized companies and individuals.

Will has appeared as counsel before both the Federal Court and the Federal Court of Appeal in patent litigation and judicial review proceedings. Will recently completed a month-long trial in the Federal Court relating to validity of an oil-and-gas related patent. In a separate recent Federal Court proceeding, Will helped a client obtain a rare interlocutory stay. He has also assisted in advising pharmaceutical clients on issues related to data protection, pricing for patented medicines and listing of patents on Health Canada's Patent Register. Will credits his success in his legal career to working with a strong team at Gowling WLG.

Will is an active member of the American Bar Association (ABA), particularly with the Patent Litigation Committee and the Young Lawyers Division Intellectual Property Committee. He also attends the annual ABA IP Spring Conference. In addition, Will is a member of the Intellectual Property Institute of Canada’s Forums & Seminars Committee.

Prior to joining the firm, Will attended the University of Ottawa, where he completed both his law degree and his bachelor of science in mechanical engineering. He has taken his experience and knowledge back to the University of Ottawa, where he has appeared as a guest lecturer.

George Jordan III

Senior Counsel
Norton Rose Fulbright

George has represented clients for more than 20 years in patent disputes and intellectual property transactions in a wide range of technology areas including wireless, e-commerce, software, semiconductors, automotive, energy, and aerospace. His patent dispute practice including over 80 patent cases has involved all forms and sizes of proceedings, all litigation phases, and all day-to-day aspects. George has led joint defense groups, multi-patent prior art investigations, deposition preparation, and document reviews—including training document review attorneys. His transactional practice has included evaluating patent assets for licensing or acquisition, conducting freedom to operate investigations, managing audits, and drafting licensing or asset purchase agreement provisions. For both practice areas, George draws on his experience drafting over 60 patents in the electrical arts.

Devoted to advancing the intellectual property law system, George is the Chair-Elect of the ABA Section of Intellectual Property Law and will become IPL Section Chair in August 2019. He also places a priority on community service by serving as Assistant Scoutmaster of Boy Scouts of America Troop 266 and a Deacon at Second Baptist Church.

George is admitted to practice before the Supreme Court of Texas, the U.S. Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office, the U.S. District Courts of Texas, and other federal district courts.

George received his JD from the University of Texas School of Law in 1996.

Megan K. Bannigan

Counsel
Debevoise & Plimpton LLP

Megan K. Bannigan is a member of the Litigation and Intellectual Property & Media Groups, specializing in trademarks, trade dress, copyrights, false advertising, rights of publicity, licensing and other contractual disputes and cyber/privacy. She represents clients across a range of industries, including consumer products, cosmetics, entertainment, fashion and luxury goods, financial services, food and beverage, pharmaceuticals, professional sports and technology. Ms. Bannigan has extensive trial experience, helping to secure an over $20 million jury verdict for client Learning Annex in the United States District Court for the Southern District of New York, among other matters. She also has experience representing clients before the United States Patent and Trademark Office, the Trademark Trial and Appeal Board and the International Trade Commission. She has been recognized by Managing Intellectual Property’s IP STARS as a Rising Star and is a frequent speaker and panel member for business, legal practice and educational groups across the country. She is also frequently quoted, mentioned and published in national and international publications, including Bloomberg, Reuters, Managing Intellectual Property, The World Trademark Review, Practical Law, Intellectual Property Magazine and The International Trademark Association Bulletin, as a legal authority on trademark and copyright matters.

Ms. Bannigan is also an adjunct professor, teaching fashion law and other courses at local universities. She previously was a Clinical Visiting Lecturer at Law at Yale Law School, leading the team of students that helped secure the landmark decision in Connecticut Coalition for Justice in Education Funding v. Rell, where the Court declared that several features of Connecticut’s system of education, including the formula for distributing funding to school districts, were unconstitutional.

Ms. Bannigan is active in intellectual property-related professional organizations, including the International Trademark Association, for which she spearheaded the development of INTA’s Pro Bono clearinghouse and, in 2017, was awarded the Volunteer Service Award for Advancement of the Association. She is also a member of the New York City Bar IP Council, the Intellectual Property Sections of the American Bar Association and Federal Bar Council and the American Intellectual Property Law Association.

Ms. Bannigan has a strong commitment to public service. She has a large pro bono practice and is active in an array of not-for-profit organizations, including for the Cancer Research Institute and Advocates for Children of New York. Prior to joining the firm, Ms. Bannigan worked in the Office of the New Jersey Governor.

Ms. Bannigan joined the firm in 2007. From 2008 to 2009, she clerked for the Honorable Mary Little Cooper of the United States District Court for District of New Jersey.

Ms. Bannigan received her J.D. with high honors from Rutgers University in 2007, where she served as production editor of the Rutgers Law Review. She received a B.A. with honors from Rutgers College in 2002. Ms. Bannigan is a member of the Bars of New York and New Jersey and is admitted to practice before the Southern District of New York and District of New Jersey.

Natalie S. Rizkalla-Kamel

Partner
Gowling WLG

Natalie Rizkalla-Kamel is a Toronto-based Gowling WLG partner specializing in intellectual property law.

Natalie has a broad range of experience in all aspects of IP litigation, with a focus on contentious work in the areas of patents, trademarks and copyright. She has acted for clients from various industries including retail, cosmetics, manufacturing, financial services and pharmaceuticals. She is dedicated to understanding her clients' business interests and goals, developing an effective litigation strategy and advising them toward favourable outcomes in each case.

She has appeared as counsel before the Ontario Superior Court of Justice, Federal Court of Canada, Federal Court of Appeal and proceedings before Canada's Trademark Opposition Board. Natalie has also had great success in representing her clients in mediation. She can be depended on to negotiate and craft strategic settlement agreements that maintain protection of her clients' intellectual property.

Natalie is also a registered trademark agent in Canada, and her practice involves advising clients on the acquisition, protection and enforcement of their trademark rights in Canada.

Natalie actively participates in writing on new developments in intellectual property law. She is a member of the Editorial Board of the Canadian Intellectual Property Review, author of the "Patent Enforcement" chapter in Life Sciences Law in Canada and regularly contributes to a monthly newsletter entitled Legal Alert. She is also a member and serves on committees of several professional associations, including the Intellectual Property Institute of Canada, the Canadian Bar Association (Intellectual Property Section) and the International Trademark Association. She also sits on the CLE Board of the American Bar Association (Intellectual Property Section).

In 2017, Natalie was named a Lexpert "Rising Star - Leading Lawyer under 40" for being at the top of the legal profession in Canada - in recognition of her professional achievements as well as contributions to the community.

Prior to joining Gowling WLG, Natalie received her M.Sc. in civil engineering from Queen's University under a National Sciences and Engineering Research Council of Canada (NSERC) scholarship, and worked as a structural engineer. She is licensed as a Professional Engineer (P.Eng.) in Ontario.

Christopher A. Suarez

Associate
Steptoe & Johnson LLP

Christopher Suarez focuses his practice on high-tech patent trials and appeals before federal district courts, US courts of appeals, the US Patent Trial and Appeal Board and other administrative tribunals. He represents clients in a wide range of industries and a variety of electronic technologies including semiconductors, smartphones, internet-of-things technologies, voice control computers, wireless standards, graphical user interfaces, media content matching, MEMS components, optics, data processing, marine seismic surveying technologies, and more. Chris has represented high-tech clients at the intersection of antitrust and IP, including in Fair Reasonable and Non-Discriminatory (FRAND) litigation. He also assists clients in the life sciences industry, including in Hatch-Waxman patent litigation, and in privacy-related litigation including claims arising under statutes such as the Fair and Accurate Credit Transactions Act (FACTA).

Chris's experience spans all phases of litigation, including drafting discovery requests and responses, taking and defending fact and expert depositions, arguing motions and appeals, and participating in trials. His transactional experience includes negotiating contracts, licenses, joint ventures and other agreements for high-tech and other companies.

He is also active in several bar associations, including the American Bar Association (ABA), the Giles Rich American Inn of Court, and the Federal Circuit Bar Association. In 2019, he co-edited and contributed multiple chapters to a cutting edge treatise published by the ABA titled The Internet of Things: Legal Issues, Policy, & Practical Strategies.

Chris maintains a robust pro bono practice where he has represented criminal defendants before the US Court of Appeals for the Fourth Circuit, K-12 students facing educational injustices under the Individuals with Disabilties Education Act (IDEA), and federal employees under the employment discrimination laws.

Similar Courses

Card image cap
97 minutes
26 Words that Created the Internet - Basics of the Communications Decency Act Section 230 Safe Harbor
This program will examine the basics of CDA 230 and its day to day affect for those who advise internet businesses as well as those who litigate against them. It will give practical guidance as to what extend internet companies can or should edit or censor the information their users contribute to their sites and to what extent those users will actually be liable.

New Media Rights

$115

Add to Cart
Card image cap
63 minutes
A Collision of Complex Laws: The Interplay Between and Among State and Federal Regulatory Laws in Health Care Cases
This program will probe how state, federal and local laws affect health care bankruptcy cases. The program will address such regulatory schemes as ERISA, state and federal labor laws (with a focus on union issues), state local health care laws, and requisite approval processes for the sale of health care assets and state and local laws concerning reimbursement programs and other aid for the benefit of health care institutions. The program will feature speakers with experience in state, federal and local regulatory laws along with health care insolvency professionals.

American Bankruptcy Institute

$75

Add to Cart
Card image cap
62 minutes
A Day in the Life of a General Counsel
What is really driving their decisions, how are they spending their time, how is the business side impacting their work and how are they structuring their departments.

Legalweek

$65

Add to Cart
Card image cap
92 minutes
A Deeper Dive into Intellectual Property and Federal Contracting
Panelists will conduct a more in depth discussion on compliance with contract clauses and license rights for technical data and computer software in federal contracts, the enforcement mechanisms available to contractors and subcontractors for these clauses, and how Government unlicensed use of patents is addressed.

American Bar Association

$115

Add to Cart
Next