CLE credits: Approved for 5 Illinois general CLE credit hours.
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 litigation, protecting trade secrets, defending against NPEs, and navigating post-issuance proceedings.
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
George became Managing Counsel of Intellectual Property for BP’s Downstream Business in 2013. Activities include managing a team of attorneys and solicitors to protect the intellectual property assets for BP’s Fuels, Lubricants, Petrochemical businesses as well as the research teams supporting the across downstream businesses.
Prior to joining BP, George was the Head IP Counsel at SunPower Corporation in San Jose, a manufacturer and installer of photovoltaic solar panels, and before SunPower, he was the division counsel for 3M Innovative Properties Company Optical Systems Division as well as the Office Supply and Stationery Products Division. He started his career as an intellectual property attorney as an associate at Kinney & Lange in Minneapolis, MN where he focused primarily on patent prosecution.
George received his law degree from the University of Wisconsin in 1998 and obtained an undergraduate degree in Mechanical Engineering from Marquette University in 1993.
Hongming Liu is a Patent counsel at Here. http://company.here.com.
He formerly worked at Nokia Technologies, a business group of Nokia Corporation, which also includes HERE and Nokia Networks. At Nokia Technologies, Hongming’s primary function is patent portfolio management and invention harvesting. Prior to joining the team at Nokia Technologies, Hongming worked as a software developer and software architect. Hongming has taught graduate and undergraduate computer science and software engineering courses at DePaul University. Hongming received his juris doctorate and doctorate in Computer Science from DePaul University, and his undergraduate degree from University of Science and Technology of China.
Vincent is a registered patent attorney and is licensed to practice law in Illinois and Michigan. He is also licensed as a Professional Engineer in the State of Michigan. Prior to entering the legal field Mr. Wiltse worked for General Motors as Senior Project Engineer, where he worked in vehicle aerodynamics development and vehicle systems integration. He received his Juris Doctor from Wayne State University Law School, in Detroit. He obtained his Master of Science and Bachelor of Science in Aerospace Engineering from the University of Michigan.
From 2000 to 2008 he was in private practice, first in Michigan and then in Illinois. Vincent joined Cummins-Allison as in-house counsel in 2008. At Cummins-Allison he manages the intellectual property portfolio. Cummins-Allison has topped Crain’s Chicago Business’ “Eureka Index” for having as the highest patent quality multiple times and is often named by Crain’s Chicago Business as among the top innovative companies in Chicago. Additionally, he support commercial transactions, litigation, real estate, and human resources efforts.
Mr. Kuo has also been involved in all aspects of copyright and trademark practice, including prosecution, litigation and licensing. His trademark experience includes opinions on trademark availability, preparation of trademark applications and prosecution of those applications before the Patent and Trademark Office. He has also litigated trademark infringement actions in the federal courts. He has also represented clients in cases related to copyright and claims of unfair competition in federal and state courts. Mr. Kuo has also successfully handled several ICANN domain name disputes before the National Arbitration Forum (NAF) and World Intellectual Property Organization (WIPO) against parties registering domain names that are identical or confusingly similar to clients’ trademarks.
Edward J. Brosius is Assistant General Counsel and Assistant Secretary at AMSTED Industries Incorporated. His current responsibilities include management of all intellectual property, litigation support and licensing matters at AMSTED, as well as management of all environmental law matters. Mr. Brosius received a B.S. in electrical engineering from Notre Dame in 1971 and a J.D. from DePaul in 1976. He is admitted to practice in Illinois, and in the U.S. District Court for the Northern District of Illinois, the U.S. Court of Appeals for the Federal Circuit and Seventh Circuit, and the United States Supreme Court. Mr. Brosius was a power systems engineer for Commonwealth Edison from 1971 to 1975, and is a Registered Professional Engineer (inactive status) in Illinois. He has written numerous papers and has given many speeches on topics including review of patent, trademark and trade secret law and environmental law for employees of industrial corporations, and management of environmental administrative and compliance matters.
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.
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.
Grantland G. Drutchas, a founder and former managing partner of McDonnell Boehnen Hulbert & Berghoff LLP, has more than 20 years of experience in the practice of intellectual property law, with a particular emphasis on litigation, licensing, and client counseling.
He is an adjunct professor at Chicago-Kent Law School and is active in the Intellectual Property Owners Association (IPO) as the Vice Chair of the Pharmaceutical & Biotechnology Issues Committee and the former Vice Chair of the Licensing Committee.
Mr. Drutchas is a frequent lecturer on § 101 issues in both the high technology and life sciences context, and helped spearhead joint committees for the IPO to provide comments to the PTO regarding examiner guidelines for § 101.
Joseph is a patent attorney specializing in IP portfolio management, including patent prosecution, trademark enforcement, freedom to operate, and IP licensing, for companies in the Danaher Product Identification Group including Videojet, Linx, Alltec, Esko, and X-Rite. Joseph manages all aspects of IP for the Danaher companies Videojet, Linx, Alltec, Esko, and X-Rite. His responsibilities include patent prosecution, freedom to operate, IP enforcement, and IP-related agreements.
Mr. Tipescu's practice encompasses patent litigation, counseling and prosecution. He has represented clients in federal courts, as well as the United States International Trade Commission. Mr. Tipescu has experience preparing patent clearance and validity opinions, drafting patent license agreements, and counseling clients regarding obtaining and enforcing intellectual property rights. Mr. Tipescu is also a licensed patent attorney with experience in patent prosecution. His practice has involved a variety of technical areas, including software related technology, telecommunications, electromechanical devices, medical devices, hygiene products, power tools and automotive systems.
David P. Lindner is a shareholder in the Chicago office of Brinks Gilson & Lione. Mr. Lindner’s practice concentrates on a mix of intellectual property litigation and U.S. and foreign patent prosecution. He also counsels clients on the issues of patentability, and patent infringement and validity. Mr. Lindner has litigation experience in federal court cases at the district court and appellate court levels, and has previously appeared before the Patent Appeals and Interference Board. His practice has involved matters involving telecommunication systems, computer networks, mobile apps and the Internet, computer software, business method patents, vehicle navigation systems, sensing technologies, speech systems, power meters, electronic circuitry, medical devices, and oil drilling machinery. Mr. Lindner is co-chair of the Firm’s Electrical & Computer Practice Group, and chairperson of the Firm’s Pro Bono Committee. He is actively involved with various local legal-aid agencies and has assisted pro bono clients with issues ranging from copyright to housing related matters.
James Shimota concentrates his practice on all aspects of post-issuance patent practice. He has extensive experience before judges and juries in federal courts across the country as well as the United States International Trade Commission and arbitration panels. Representative technologies with which Jim has worked include financial services products, multiple aspects of cellular and smartphone technology, semiconductor manufacturing, fiber optic amplifiers, DNA arrays, HIV drugs, alkaline batteries, wireless networking products, power supplies, cleaning systems for portable shavers, memory image sensors, portable music players, and automated tissue staining instruments.
Jim also counsels clients on building patent portfolios inorganically through strategic acquisitions. Jim provides advice to technology companies in industries such as consumer electronics, electronic commerce and pharmaceutical regarding what patent assets do and don’t complement existing organic patent assets and how much those assets are worth. For example, Jim assisted an international client in completing a multi-billion dollar patent portfolio acquisition involving thousands of patents.
Jim further focuses on advising venture capitalists and startups on patent strategy.
Jim was selected for inclusion in Illinois Super Lawyers − Rising Stars Edition, Thomson Reuters, 2013-2014.
Leigh Taggart is a partner in Honigman’s Intellectual Property Litigation Practice Group and participates actively in Honigman’s Legal Project Management efforts. With more than 25 years of experience, he litigates patent, trademark, false advertising, unfair competition and trade secret matters throughout the United States. Leigh has also been involved in many international trademark disputes including litigation in several countries in Europe and the Middle East. Leigh handles patent matters in diverse industries, including medical device, pharmaceutical, automotive, silicon wafer, consumer products and jet aircraft engines and components. Before joining Honigman, Leigh was a partner at an IP boutique firm, and before that served for nine years as in-house counsel (General Counsel & Secretary) for a manufacturer of a well-known branded consumer product sold in more than 70 countries. Leigh has been involved in numerous IP matters with over $50 million in dispute and frequently counsels clients on avoiding or resolving disputes without litigation. His experience as both in-house and outside counsel gives him a unique perspective on managing both the substance and cost of legal disputes.
Mr. Pribisich is a partner in Benesch’s Innovations, Information Technology & Intellectual Property (3iP) Practice Group. His practice includes all facets of intellectual property and technology law, including intellectual property litigation, patent preparation and prosecution, rendering opinions, negotiating technology transactions and data security counseling.
Mr. Pribisich represents both plaintiffs and defendants in patent infringement and trade secret litigation. His patent preparation practice focuses on the preparation, prosecution and evaluation of patents in the mechanical, electromechanical, polymer and software arts. Mr. Pribisich counsels clients on intellectual property issues such as cease and desist letters, reexamination procedures, and opinions regarding infringement, patentability and validity. He counsels clients in negotiating intellectual property licenses and third-party software agreements. Mr. Pribisich also counsels clients in avoiding data security breaches, and complying with state and federal laws in the event of a data breach.
GEORGIA concentrates her practice on intellectual property and information technology litigation and counseling. Georgia has experience in patent, trademark and copyright infringement, as well as cases involving claims of false advertising, unfair competition, breach of contract, and trade secret misappropriation.
Georgia’s experience includes representing clients in infringement matters concerning a wide variety of technological fields including pharmaceuticals, medical products, mobile devices, payment and authentication systems, and consumer products. She regularly assists in freedom to practice projects and counsels clients as to licensing and portfolio strategy.
Georgia has led all aspects of the litigation process, including the preparation of initial pleadings and joint defense agreements, fact development and depositions, Markman hearings, written and oral motion practice, negotiation of settlements, and trials.
Georgia has taught as an adjunct professor of trademark law at Case Western Reserve University School of Law. Georgia has served as chair of the Copyright Committee for the Cleveland Intellectual Property Law Association and is a member of the American Bar Association. She is listed in World Trademark Review’s WTR 1000 – The World’s Leading Trademark Professionals.
She previously was an attorney with Jones Day, Cleveland and New York, and with Goodwin Procter of New York. She joined Calfee in 2005, became a partner in 2009 and a member of the Executive Committee in 2016.
Reginald J. Hill focuses his practice on intellectual property litigation and counseling. Corporations seek his help with a variety of matters including patents, copyrights, trademarks and trade secrets, particularly related to technology. He has served as lead counsel in bench and jury trials, PTAB trials, Markman hearings and arbitrations. His breadth of experience includes more than 25 years in the exploitation, procurement, development and protection of intellectual property in a wide range of technologies, including computers, digital communications, Internet and emerging technologies.
Mark has a wide range of experience advising and representing both domestic and international clients in all areas of intellectual property law. Mark is experienced in all aspects of litigation from case intake through appeal. He has handled both plaintiff and defense matters, large and small, in Federal District Courts throughout the country and the United States Court of Appeals for the Federal Circuit. Mr. Johnson has been recognized numerous times as an Ohio Super Lawyers Rising Star—an award presented to no more than 2.5 percent of the lawyers in the Ohio.
Paul Bartusiak has a Bachelor and Master of Science in Electrical Engineering, as well as a J.D. from Chicago-Kent College of Law. He was an engineer for about ten years before becoming an attorney, having been involved with technologies such as the radar seeker for the Harpoon Missile, energy bandgap manipulation of semiconductor devices, and RFIC design for wireless communication systems. He has been at Motorola for 21 years and is Lead Intellectual Property Counsel. In this role he has held various responsibilities, including significant offensive patent licensing around the world for revenue generation, IP litigation, strategic IP transactions such as the divestiture of Motorola patents, IP counseling to executive management, and leading in-house patent attorneys in the preparation and prosecution of patents.
Theresa Conduah is Counsel-Intellectual Property at United Airlines, Inc. Her responsibilities include: managing United’s global intellectual property portfolio; overseeing litigation and adversarial matters; reviewing marketing, social media, and loyalty program initiatives; negotiating and drafting license and sponsorship agreements; and providing advice and training to business units across United. Prior to joining United, Ms. Conduah was in private practice and counseled clients on intellectual property litigation and portfolio management matters.
Ms. Conduah earned her law degree from Fordham University School of Law, a graduate degree from Johns Hopkins University, and an undergraduate degree from Georgetown University.
Lee Cheng is currently advisory counsel for the board at NewEgg. He served as Chief Operating Officer and EVP at Gibson Brands and prveiously served as NewEgg Inc's Chief Legal Officer, SVP of Corporate Development and Corporate Secretary and General Counsel.
He's a graduate of UC Berkeley Law School, where he earned his J.D. A graduate of Harvard University where he earned his SB in History and Science.