For today’s intellectual property executive, all roads converge toward Defense and Litigation: NPEs, corporate trolls, and the AIA have multiplied the number of IP lawsuits. In this environment, an effective, up-to-date Defense Strategy is a must-have for operating companies.
This conference examines IP Defense from soup to nuts, including best and latest defense strategies, preparing for trial,strong patent prosecution programs, protecting IP in social media, trade secrets, considerations when settling, managing internal resources and expectations, and post-issuance proceedings
KEY TOPICS DISCUSSED
First Line of Defense: A Strong Patent Prosecution Program
Pins, Posts and Platforms: Protecting IP in Social Media
Defending with Post Issuance Proceedings
Strategies For Dealing With NPEs - Fight or Flight?
Preparing for Litigation: A Defensive Perspective
Defensive Trial Strategies: Let the Games Begin
Defending Your Trade Secrets: Proactive & Reactive Strategies
Defensive Portfolio Management - Playing Offense and Defense
Defending Against Infringement Claims from Operating Companies
Chief IP Counsel
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
Intellectual Property, Trademark and Copyright Counsel
Head of Litigation
Director of Business and Legal Affairs
Director/VP of Intellectual Property
Director/VP of Licensing
VP & Director of Intellectual Asset Management
Edward (Ed) Chalfie has 30 years’ experience in international protection and enforcement of intellectual property. He has extensive experience as lead counsel in infringement and anti-counterfeiting actions, intellectual property related insurance coverage disputes, and opposition and cancellation proceedings in the US Patent and Trademark Office. Ed represented the winning plaintiff in the landmark U.S. Supreme court trademark case Qualitex Company vs. Jacobson Products Co., Inc., in which the Court unanimously accepted his argument that a product's color alone can be registered as a trademark.
Larry Huston is Senior Counsel with Procter & Gamble, the largest consumer package goods company in the world. During his 27 years with Procter & Gamble Larry has successfully advised business clients on a wide range of intellectual property matters including patents from procurement to enforcement, trade secret, copyright, licensing and trade dress/trademark matters. Larry has worked for both current businesses and upstream engineering. Larry received his BS degree in Mechanical Engineering, his MS degree in Mechanical Engineering and his Juris Doctorate from the University of Toledo.
In addition to having overall responsibility for Innovation and Intellectual Property, Matthew is also concentrated on business development and seeking and acquiring technology for Rite-Hite Holding. This can range from strategic supply agreements, to joint development, to IP licensing, to joint ventures to IP or corporate acquisition.
Raymond Millien is a prominent intellectual property attorney who holds a BS from Columbia University and a JD from George Washington University School of Law.
In 2009, 2011 and 2012 Mr. Millien was recognized as one of the “World’s 300 Leading IP Strategists” by IAM Magazine.
Mr. Millien is currently Senior IP Counsel for GE Healthcare, responsible for driving the global IP strategy for its software, consulting and services businesses, which have a combined $6.1B in annual revenue.
Previously, Mr. Millien was General Counsel of Ocean Tomo, LLC, and Vice President and IP Counsel at The American Express Company. Mr. Millien has also practiced law in the Washington, DC offices of PCT Law Group, PLLC, DLA Piper US LLP and Sterne, Kessler, Goldstein & Fox PLLC.
Mark has more than 20 years of IP experience employing expertise in patent law, intellectual property, and risk management to facilitate international business opportunities and advantages. At Navistar he manages and expands global multimillion-dollar portfolios for innovations and products in the high-technology arena.
Laura brings high energy, personal commitment, and a wealth of experience to every project she tackles. Whether representing a high tech company in a patent infringement proceeding before the ITC, protecting a client’s trade secrets in an arbitration proceeding, or helping high school students develop the analytical skills and self-confidence to succeed in college, Laura brings passion and drive to her work.
With over 25 years of litigation and counseling experience, Laura takes a hands-on approach to litigation, while staying focused on the client’s ultimate goals and strategies. She is “held in excellent regard by her peers for antitrust, intellectual property and commercial litigation,” and is recognized as one of the top women intellectual property lawyers in Illinois.
With 15 years’ experience in trademark law and a cadre of high-profile clients, Scott has earned an enviable reputation for his expertise, business-focused advice and counseling. His practice focuses primarily on trademark prosecution and trademark litigation, and he maintains all aspects of his large corporate clients’ trademark portfolios. He has extensive experience in international trademark matters, including litigation, licensing and prosecution, determining international filing strategies, negotiating worldwide co-existence agreements and implementing strategies to defend trademarks and prevent infringements.
Whether appearing before a federal district judge, offering counsel on international trademark filing strategies, clearing a new global brand, advising on the nuances of trade secret law or explaining how social media marketing can create undue legal risk, Scott gets the job done quickly and cost-effectively so his clients can get back to work.
Scott has helped many clients craft social media policies to protect intellectual property while still allowing them to exploit new technologies to positively interact with customers; his involvement in this emerging areas of law has prompted him to write numerous articles and state-of-the-art presentations on how to navigate the unchartered waters of leading social media venues, including Facebook, Twitter and Pinterest, while still protecting corporate intellectual property and avoiding infringement risks. He has also been quoted in the Chicago Tribune, Bloomberg BNA, the Chicago Daily Law Bulletin and MacNewsWorld, and has appeared on Fox Chicago News.
Irene Kosturakis is Area Vice President, Intellectual Property at BMC Software, Inc., where she is responsible for all IP matters, including acquisition, development, and maintenance of patents and trademarks, patent litigation, copyrights, intellectual property licensing, use of open source code, and IP due diligence for the Company's mergers & acquisitions efforts. She also supports the tax group on inter-company agreements that have an IP component.
Irene is licensed to practice law in the State of Texas and is a registered patent attorney. She has a Masters of Law in Intellectual Property from the University of Houston, a J.D. from South Texas College of Law, a Masters of Science in Civil Engineering from the University of Houston, and a Bachelor of Science in Civil Engineering from the University of Texas at El Paso.
Outside of work, Irene is also an adjunct professor at South Texas College of Law, for its International Business Transactions course. During the 2012-2013 year, she is on the Council of the State Bar's Business Law Section and Chair of its Donated Services Committee, Irene was 2007-08 Past President of the Houston Chapter of the Association of Corporate Counsel, the year the Chapter won Chapter of the Year
Benjamin T. Horton manages complex litigation involving high tech patents. He has a degree in electrical engineering, and before law school he worked for technology companies in the automotive and semiconductor industries. He is a member of the Trial Bar for the Northern District of Illinois and litigates intellectual property cases in federal courts across the country. Mr. Horton also practices before the Patent Trial and Appeals Board, representing both petitioners and patent owners in inter partes review (IPR) and covered business method review (CBM) proceedings.
Mr. Horton speaks regularly on patent litigation and strategy and he is a frequent contributor to various IP publications. SuperLawyers, a Chicago Magazine publication, selected Mr. Horton for the 2012-2016 Illinois Rising Stars® lists, which feature top attorneys in intellectual property law. Mr. Horton has been selected as one of the"World’s Leading Patent Practitioners" in 2016 by IntellectualAsset Management (IAM) magazine. He was also selected as a 2015 and 2016 "Emerging Lawyer" in Emerging Lawyers Magazine as a top Illinois attorney under 40, and was profiled in the November 2016 issue. Mr. Horton has also been recognized by intellectual property publications such as InsideCounsel, Thomson Reuters, Intellectual Property Magazine, Law360, and IPPro.
MATTHEW KELLY serves as Managing Director and Associate General Counsel at CME Group Inc. Mr. Kelly is responsible for developing and managing CME Group's intellectual property programs covering patents, trademark, copyrights, and trade secrets. He also manages strategic licensing, including product license agreements, out licensing of CME Group software and market data, intellectual property acquisitions and partnerships, and manages a variety of intellectual property litigation and enforcement matters. Before joining CME Group in 2001, Mr. Kelly specialized in patent law at Brinks Hofer Gilson & Lione in Chicago and Morgan & Finnegan in Washington, D.C. and managed the design and development of space-based computers at IBM. Mr. Kelly holds a bachelor's degree in electrical engineering from Michigan State University, a Master of Business Administration from Virginia Polytechnic Institute and State University and a J.D. focusing on intellectual property from the George Mason University School of Law. Mr. Kelly is a member of the Illinois Bar and is the licensed to practice before the USPTO.
For clients in the biopharma industry, Li-Hsien (Lily) Rin-Laures, M.D. is a strategic partner in using intellectual property to achieve her clients’ business goals. With two decades of experience in building and assessing patent portfolios in the biopharma industry, as well as in negotiating licenses and strategic alliances, she anticipates issues and opportunities. She brings to her practice a unique insider’s perspective gained as former General Counsel of a publicly held biotechnology company, and insight acquired from managing patent portfolios for a number of FDA-approved drugs. A substantial part of her work involves the interface of patents with clinical product development, FDA regulations and regulatory exclusivity. Dr. Rin-Laures is also a member of the Firm’s Executive Committee responsible for managing the firm.
Sandip H. Patel has successfully helped the Firm's clients obtain and enforce patents, defend clients against allegations of patent infringement, and design products and processes to avoid their competitors' patents. Those clients are diverse in size and focus, and have included independent inventors, venture capital investors, specialty chemical companies, universities, and multinational corporations. He has a formal education in chemical engineering, and his day-to-day work deals typically with inventions focusing on chemistry and chemical engineering. But, Mr. Patel's work for the Firm’s clients has spanned the entire spectrum of engineering and sciences. And through that experience, he has proven adept at quickly understanding diverse technologies and devising efficient intellectual property strategies that clients have used to achieve their business goals.
Daniel A. Boehnen is a founder of McDonnell Boehnen Hulbert & Berghoff LLP. His practice focuses primarily on trials, appeals, opposition proceedings, and all forms of disputed patent matters. Clients often seek his counsel on general IP, business, and legal problems because of his keen insight and his ability to create understanding, simplify problems, and innovate solutions. Clients praise Mr. Boehnen for crafting aggressive strategies to try cases and settle cases while remaining sensitive to the client's business goals. Mr. Boehnen and his team have been praised by clients as the most integrated and efficient attorneys they work with.
His litigation experience encompasses a wide range of high-tech industries in all levels of the federal court system. He has been involved in many notable and precedent-setting cases.
Mr. Boehnen is frequently invited as a guest speaker to corporate and professional groups.
Thaddeus is responsible for enterprise-wide IP strategy and global management of the Brady intellectual property portfolio and staff.
Brady Corporation is an international manufacturer and marketer of complete solutions that identify and protect premises, products and people. Its products help customers increase safety, security, productivity and performance. Brady's products include high-performance labels and signs, safety devices, printing systems, customer focused software, and precision die-cut materials. Founded in 1914, the company has operations in 20+ countries, 400+ patents, 1000+ trademarks and millions of customers in electronics, telecommunications, manufacturing, electrical, construction, education, medical and a variety of other industries.
Some of his duties and activity include: serve as a key member of Legal and R&D Global Director/Senior management teams, develop and implement strategies across all business units and global regions to enhance Brady’s technological and competitive position, guide overall patent and trademark portfolio development for future licensing and enforcement, partner with marketing and design teams to develop high impact products and brands.
Dan Shulman is Chief Intellectual Property Counsel for Reynolds Group Holdings, Ltd. and Fram Autoparts, a $13 billion global packaging and automotive parts company comprised of Reynolds Consumer Products, Pactiv, Closure Systems International, Evergreen Packaging, Graham Packaging, Fram and Autolite. Dan is responsible for managing the global patent and trademark portfolio of those combined companies, setting IP strategy, managing all IP litigation and acting as lead counsel in appellate work before the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Dan also routinely leads corporate initiatives in which IP drives significant value. Dan was with Pactiv prior to its acquisition by Reynolds Group Holdings in 2010. Prior to joining Pactiv in 2007 as its Chief IP Counsel, Dan was Senior IP Licensing Counsel for Motorola. Prior to that, Dan was an associate at Mayer Brown LLP from 1999-2006.
Dan received his J.D. from Loyola University Chicago School of Law in 1999, and is a graduate of Northwestern University (1996) with degrees in Mathematics, Physics and the Integrated Science Program.
Dan has been recognized as one of the Top Forty Lawyers Under 40 in Illinois (2013) by The Law Bulletin, and as a Managing IP In-House IP Star 2015 and 2016. Dan is a frequent speaker on topics of IP law, and has authored numerous articles on various IP topics and Federal Circuit jurisprudence. Dan is the author of two books: Insights Hurt: Bringing Healing Thoughts to Life, and Personal Midrash: Fresh Insights Into the Torah, due out in August.
Ed Rice is a Partner in the Litigation Practice Group.
He is a trial and appellate lawyer who, since 1988, has focused primarily on patent cases and other technology disputes. After clerking for a federal trial judge, he joined the Department of Justice where in 1996 he won his first patent trial as the sole attorney for the government. Since then, he has first-chaired and won trials in every patent litigation venue in the country: federal district courts, the International Trade Commission, and the Court of Federal Claims. Ed launched his appellate career in 1992, when he won a difficult en banc Federal Circuit argument in a trade secret case.
Over his career, Ed has handled a wide range of patented technologies—from integrated circuits to pharmaceuticals, from internet business methods to anti-missile systems, and just about everything in between. Ed also has successfully represented clients on trademark and copyright matters. For example, he represented several well-known Hollywood figures in a copyright jury trial involving a blockbuster movie.
John is a patent attorney with over 10 years of experience working in major law firms and in-house environments. Experience extends from patent procurement to advising key players on patent and patent licensing matters for start-ups, universities, and large companies. Experience covers technological advancements in electrical hardware, computer science, communication systems, and other cutting edge technologies.
Prior to Sonos, he held various patent roles and responsabilities, including; Patent Associate and Patent Agent at Perkins Coie, Portfolio Manager at the University of Washington, Patent Agent at Darby & Darby. John has earned a B.S. and a Masters in Electrical Engineering from the University of Illinois and his J.D. from the University of Washington School of Law.
Mr. Forbis is a first chair trial attorney who excels at developing deep understandings of complex patented technologies and unraveling them to make concise, understandable and persuasive presentations to courts and juries. In over 20 years of practice, Mr. Forbis has appeared in over 150 patent and/or trademark infringement cases in most major Federal Court jurisdictions across the country. Mr. Forbis has represented his clients as lead or co-lead counsel in over 50 district court cases and in 14 Federal Circuit appeals. Mr. Forbis has successfully defended companies such as Ford Motor Company, Delphi Corporation, and Sika Corporation, as well as many middle-market companies in cases involving claims for permanent injunctions and damages of many millions of dollars, including multiple cases having damage claims in excess of $50 million and one in excess of $100 million. On the plaintiff’s side, Mr. Forbis was recently co-lead trial counsel in a patent infringement case concerning a medical device, where the client received settlements in excess of $30 million. Mr. Forbis has litigated a wide range of technologies, including automotive systems, medical devices, computer technology, lasers, and chemical compositions. In addition to patent cases, Mr. Forbis also has litigated more than 25 trademark cases, two of which proceeded through full trial, including several for well-known banks and consumer brands. For example, representing Citizens Bank as lead counsel, Mr. Forbis obtained preliminary and permanent injunctions in multiple cases precluding various defendants from using “Citizens” in connection with banking-related services in Michigan.
Key principles of Mr. Forbis’ approach to litigation include: a clear understanding of the client’s goals for the litigation; an early and complete understanding of the technology and factual details of the case; an early development of a theme and focused strategy for the case; strategic discovery aimed at supporting the case theme; regular and frequent communication with the client; and concise and understandable presentations to the court and jury focused on the case theme.
As a registered patent attorney, Mr. Forbis also represents clients before the United States Patent and Trademark Office in contested matters, such as Post-Grant Reviews and Inter Partes Re-exam Proceedings, as well as in connection with general patent portfolio development and strategic prosecution. He regularly counsels and provides opinions to clients concerning infringement, validity, right to use, patent landscape, design-around issues and due diligence issues in corporate transactions. He is experienced in a variety of electrical and mechanical technologies, including semi-conductors, electronics, control systems, lasers, electronic displays, engine components, several automotive technologies, telecommunications, networking, vehicle reinforcement components and medical devices. Mr. Forbis also has a great deal of experience negotiating and preparing intellectual property licenses and related corporate agreements.
Robert Loewer is a dynamic executive with a proven record of leading multiple functional roles in a company that has grown by 300% through mergers and acquisitions, new product development and international new market entry. He is the General Counsel and Director of Finance of NRE, a global manufacturer and distributor of locomotives and related technical services. NRE sells a patented “environmentally friendly” locomotive and sells locomotives in 30+ countries. Mr. Loewer works with NRE’s executive management team to align corporate strategy with intellectual property strategy. He oversees NRE’s acquisition and licensing of key technology through joint ventures, strategic collaborations and mergers and acquisitions. Mr. Loewer has a JD, MBA and a Masters in Accounting and is an attorney licensed in Illinois and in England as a Solicitor.
Herbert H. Finn concentrates his practice on all aspects of patent, trademark and copyright law, both within the United States and internationally, with a particular emphasis on patent litigation before the District Courts of the United States, the U.S. Courts of Appeal for the Federal Circuit and the U.S. International Trade Commission (ITC). He has litigated and tried cases in technology areas that include biomedical implants, catheters and lumens, cell phones and other mobile devices, computer input devices, computer software and operating systems, digital camera technology, Internet/networking technology, eye glasses, LCD technology, loss prevention equipment, mass transportation seating, novelty gaming equipment, pallets and shipping packaging, product packaging, pull-tabs and seal cards, tablets and x-ray/imaging technology.
In addition to his vast trial experience, Herb has experience in obtaining and defending his clients' various intellectual property rights and in the negotiating of all types of agreements related to intellectual property including acquisitions, licenses, non-competes and non-disclosures.
As IP Counsel, Timothy is responsible for all Intellectual Property related legal issues for two of Molex's three Product Divisions, to whom he refers to as his Clients. Timothy manages approximately 2000 Patents and Patent Applications, both within the United States and Internationally, for both of these Clients. He also assists in providing contracts, licenses and other agreements to these Clients for all Intellectual Property related matters. Furthermore, Timothy manages all Intellectual Property related litigation for these Clients.