Thank You To All Attendees and Sponsors For A Fantastic Inaugural Summit
For today’s intellectual property executive, all roads converge toward Defense and Litigation: NPEs, corporate trolls, the AIA and SHIELD Act 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, considerations when settling, managing internal resources and expectations and AIA post-issuance proceedings.
KEY TOPICS DISCUSSED
The Big Picture: Building A Defense Strategy
Pre and Post-Grant Defensive Strategies
Defending against NPEs
Preparing for Litigation & Trial
The End Game - Settlement & Post Trial Strategy
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
Keith Bergelt is the chief executive officer of the collaborative enterprise that enables innovation in open source and an increasingly vibrant ecosystem around Linux. In this capacity he is directly responsible for enabling, influencing and defending the integrity of the Linux ecosystem. Central to the achievement of his goals is the acquisition and transfer of patent rights designed to permit members of the Linux ecosystem to operate free of the threat of assertion and litigation from those whose business models are antithetical to innovation and global economic growth in information technology and computing.
Prior to joining the Open Invention Network, Mr. Bergelt served as president and CEO of two Hedge Funds – Paradox Capital and IPI – formed to unlock the considerable asset value of patents, trademarks and copyrights in middle market companies. Paradox and IPI were the first Funds of their kind to offer specialty lending products supported exclusively by intellectual property. Driven by Mr. Bergelt’s creativity and entrepreneurial approach, these funds enabled the emergence of patents, trademarks and copyrights as a viable source of collateral in asset-based loans, forever reshaping the emerging IP Finance landscape.
During Mr. Bergelt’s stewardship of these IP-based lending activities, he raised more than $300 million dollars and financed portfolio companies of private equity firms including Texas Pacific Group, Kelso & Co., JH Whitney, Weston Presidio, Goode Partners, Palladium Capital and Castanea Partners, among others.
Previously, Mr. Bergelt served as a senior advisor to the technology investment division at Texas Pacific Group. He also headed business development, intellectual property and licensing for the Kelso & Company portfolio company Cambridge Display Technology in the United Kingdom. Additionally, he established and served as General Manager of the Strategic Intellectual Asset Management business unit at Motorola Corporation and served as Motorola’s director of Technology Strategy.
Mr. Bergelt was a co-founder of the Intellectual Property Advisory Practice within the Electronics and Telecommunications Industry group at SRI Consulting in Menlo Park, California.
Prior to his extensive private sector experience, Mr. Bergelt served for twelve years as a diplomat with postings at the United Nations in NY and the American Embassy in Tokyo, Japan where he was involved in the negotiation of IP rights protection in Asia.
Mr. Bergelt holds an Artium Baccalaureus degree from Duke University, a Jurist Doctorate degree from Southern Methodist University School of Law and a Masters of Business Administration degree from Theseus Institute in France. He is a frequent speaker on corporate strategy, finance and intellectual property management.
Manages IP litigations, patent office proceedings,transactional IP matters, commercial litigation, and antitrust litigation. Advises on foreign patent matters. Manages outside counsel. Advises directly executive managemend at both Novo Nordisk Inc and Novo Nordisk A/S on issues relating to patents and is a key member of litigation steering groups that are chaired by Executive Vice Presidents and Officers of Novo Nordisk A/S.
Specialties: Seasoned intellectual property law professional with a wide range of experience including:
• Patent preparation, prosecution and securing IP rights;
• Analyzing industrial/marketplace trends and commercialization of innovation;
• Monetization of IP
• IP Acquisition
• Licensing and negotiations; and
• Management of IP professionals and attorneys
Marina F. Cunningham is a Managing Partner with McCormick, Paulding & Huber, an Intellectual Property firm with offices in Hartford, CT and Springfield, MA. Ms. Cunningham worked as a design supervisor for AT & T Bell Laboratories and, subsequent to obtaining her law degree, as an intellectual property attorney for United Technologies Corporation. She is admitted to practice before the State and Federal Courts of Connecticut and before the U.S. Patent & Trademark Office. Ms. Cunningham is the Chair of the Board of Directors for MIT Enterprise Forum of Connecticut. Ms. Cunningham is also Co-Chair of Technology and Intellectual Property Committee of the Hartford County Bar Association; Advisory Board Member for UCONN School of Law Intellectual Property Clinic; Committee member for INTA; and member of CPLA; AIPPI; and AIPLA. Ms. Cunningham has experience in domestic and foreign patent prosecution, trademark and copyright matters, e-commerce related issues, negotiation of licenses and other types of agreements relating to intellectual property, and litigation. Ms. Cunningham is fluent in Russian and Ukrainian.
Marina F. Cunningham holds a bachelor's degree in mechanical engineering from Columbia University and a master's degree from the Massachusetts Institute of Technology. She also holds a law degree from the University of Connecticut School of Law.
Michael Sparling is Vice President and Assistant General Counsel of 1-800-FLOWERS.COM, INC., the world’s largest florist and gift shop. His areas of responsibility also include 1) the management of the Company’s intellectual property spread across 30 brands and encompassing 5000+ domain names, 300+ foreign and domestic trademarks and 100+ copyrights and patents; 2) the drafting and revision of a broad spectrum of corporate transactional agreements (promotional, marketing, corporate service, IT, vendor services and assorted others); 3) trademark litigation; and 4) the research and strategic acquisition of valuable intellectual property.
Associate General Counsel
April 2011 – Present (2 years 8 months)New York City
Usablenet is a leading mobile platform technology company that optimizes clients’ website content, functionality and e-commerce capabilities for mobile devices and applications. Usablenet serves 25% of Fortune 1000 companies, and was named as the 5th fastest growing private company in New York in 2012 by Crain’s Fast 50 List.
VP-TS Intellectual Property, Cypress Semiconductor
An IP strategist with a combination of technical, business and legal expertise, currently transforming the management of a portfolio of 3000+ patents and applications into a self-funding, business-driven, cross-corporate function delivering entitled ROI. David is also a prolific inventor with over 130 patents granted and pending, and a Patent Agent licensed to practice before the USPTO, reg # 69932.
Daivd is responsible for management of a portfolio of ~2000 patents, ~1000 pending applications and the process of IP protection, generation and monetization. Directing systematic review processes to ensure comprehensive and cost-effective protection of strategic IP as it is created. Ensuring maximum ROI on IP$ by implementing systematic reviews of applications against business objectives. Creation, implementation and direction of processes to create and protect strategic IP in emerging technology areas adjacent to existing product lines and technologies.
Thelma is Director of Intellectual Property at MannKind Corporation, a publicly traded company headquartered in Valencia, CA with other locations in NJ and CT. Thelma is part of the Danbury, CT office, which also houses R&D and manufacturing facilities. MannKind focuses in developing biopharmaceuticals for pulmonary delivery and cancer immunotherapy. Thelma has been at MannKind since July 2007 and handles almost all aspects of intellectual property for the East Coast sites. She has over 19 years of experience in intellectual property, primarily patent law.
Prior to joining MannKind, Thelma worked with the Intellectual Property Groups of three major, global law firms based in New York City, including, Kelley Drye & Warren LLP; Pillsbury Winthrop Shaw Pitman LLC, and White and Case LLP. She began her career at White and Case in the early 90’s and spent over 10 years patent prosecution and participating in many aspects of intellectual property practice. She has a Ph.D. in Anatomy, Cell and Molecular Biology from Hahnemann University School of Medicine and Graduate Studies, now part of Drexel University in Philadelphia. Thelma held the position of Assistant Professor at the Rockefeller University in New York, prior to entering the field of patent law. Thelma is registered to practice before the U.S. Patent and Trademark Office.
Intellectual Property attorney registered to practice before the U.S. Patent and Trademark Office, specializing in IP litigation, licensing, adverse action matters, agreement preparation, negotiation and counseling, acquisitions, patent preparation and prosecution, and trademark protection. He is currently an IP attorney at Avaya Inc. Prior to joining Avaya, Joe spent several years at Pitney Bowes Inc. managing their commercial and intellectual property litigations. Prior to joining Pitney Bowes, Joe spent several years at Fish & Neave (now Ropes & Gray) in New York. He received his B.E., Electrical Engineering from Manhattan College in 1989, and his Juris Doctorate from New York Law School in 1993. He is admitted in New York, New Jersey. He speaks regularly at a number of legal forums on the all aspects of IP law and currently serves as the Chair of the IPO’s Damages & Injunctions Committee.
Bruce Rubinger, Ph.D.
Managing Director – Global Prior Art, Inc.
Bruce Rubinger is Managing Director and founder of Global Prior Art (GPA), a pioneer in the field of IP research and analysis with a rich history spanning more than 30 years. He is a well- known authority and speaker on effective prior art searching, IP due diligence and critical worldwide search resources. Dr Rubinger has worked closely with many joint-defense groups and leading law firms on high-stakes cases in fields such as wireless communications, software, multimedia streaming, business processes and speech recognition. As managing director, Dr Rubinger oversees GPA’s engineering division, comprising the electronics, telecommunications, software and mechanical engineering groups. He is also a member of GPA’s life science management committee. His team encompasses more than 60 full-time specialists, including staff in Japan, Germany and Russia.
Since the creation of GPA in 1982, Dr Rubinger has participated in hundreds of high-stakes cases, frequently locating critical prior art that anticipated patents which were previously litigated successfully. His broad experience and insight are instilled into GPA’s software and institutional processes, which approach invalidity analysis in a scientific manner that yields higher performance. Dr Rubinger was also a pioneer in the field of IP strategy. The third-generation GlobalMap IP landscape analysis tool has been awarded a US patent and is used by clients to create a strong IP portfolio.
Dr Rubinger’s background encompasses a blend of technology and the science of decision making. He holds a BSEE, an MSEE and a PhD in systems science. His dissertation addressed non-linear filtering and its application to prediction and estimation.
Dr Rubinger began his career with Hughes Aircraft, where he was involved in digital signal processing. He was awarded a NASA fellowship and is a member of Eta Kappa Nu and the honorary research society Sigma Xi. Some recent articles and presentations include “Locating Prior Art Gold: The Five Keys to Successfully Uncovering Strong Prior Art” (IP Today, July 2011), “Using effective IP due diligence to guide an IP monetisation strategy” (IAM IP Monetisation Yearbook 2013), “GPA’s Experts vs The Crowd: Setting The Performance Record Straight” (Global IP Outsourcing Conference and Exhibition, San Francisco, February 17-18 2014), “Managing IP Risk from NPEs and Competitors Through Effective Invalidity Search Strategies and Risk Analysis” (The London IP Summit, October 13, 2014), “Patent Quality: Implementation insights for the C-Suite” (Intellectual Asset Management Yearbook 2016),
“Effectively Employing the Invalidity Defense: Assessing the Effectiveness of Alternative Strategies” (The IP Defense Summit: Silicon Valley, June 18, 2015), and “Effective IP Strategy: Key Implementation Steps to Attain the Next Level” (IP Strategy Summit: Seattle, February 23, 2016). In recognition of his pioneering work and impact, Dr. Rubinger was included in IAM 300: The World’s Leading IP Strategists for the most recent five years.
Gerard F. Diebner has over 25 years of experience in the field of patent law. His practice concentrates in the areas of pharmaceuticals, biotechnology, chemistry, medical devices, cosmetics, agriculture, veterinary products, pollution control, clean energy and business methods.
Mr. Diebner has extensive trial experience both before the Federal District Courts and the ITC. He also handles patent issues concerning mergers and acquisitions and due diligence searches, and provides general intellectual property corporate advice. He drafts and prosecutes patent applications before the U.S. Patent and Trademark Office and has substantial experience with interference practice. Mr. Diebner works with individual inventors, start-up corporations in emerging growth industries and established multi-national companies.
Mr. Diebner was involved with one of the first biotechnology lawsuits ever brought and was successful in one of the longest biotechnology cases tried to a jury. Mr. Diebner was also involved with Novo Nordisk's successful litigation against Genentech concerning human growth hormone and with representing Merck against Searle in a patent interference, where it was held that Merck, not Searle, was the first to invent VIOXX. Mr. Diebner was lead trial counsel for Proveris Scientific Corp. in Proveris v. Innovasystems, which established that the use of a patent laboratory instrument for the purpose of obtaining FDA approval for a drug product did not fall within the sale harbor provision of 35 U.S.C. §271(e)(1).
Bob works for TeleCommunication Systems, Inc. (TCS) in Annapolis MD as the Vice President Intellectual Asset Management, responsible for the strategic management and monetization of TCS’s IP portfolio. In this role Bob has the overall business responsibility for all IP activities including capture, management, monetization, and profit & loss. With over 200 US patents in the portfolio and over 350 pending, Bob’s group has the responsibility for strategically managing and leveraging the IP assets in pursuit of both core and non core business. Immediately prior to joining TCS, Bob worked for Northrop Grumman Corporation, Electronic Systems Sector from 2003-2011 as the Director of the Intellectual Property & Strategic Technology Agreements business unit. Prior to Northrop Bob was an Associate Vice President at the British Technology Group (BTG), a 50+ year old IP management group headquartered in London.
Bob has been active in the Licensing Executives Society (LES) since 1998 and is currently serving on the LES Board of Trustees and is also the Vice Chairman of the High Technology Sector.
Bob has spearheaded various types of business and technology transactions around the world involving IP, including patent sales, enforcement, licensing, the establishment of second-source suppliers, IP acquisition, Open Innovation, open source, etc. Bob received his Bachelor of Science in Electrical Engineering degree from Villanova University and his MBA from Drexel University’s LeBow College of Business.
Laura Sheridan is Senior Patent Counsel at Google and works from the New York office. Prior to joining Google, Ms. Sheridan was Counsel in the Intellectual Property Department at WilmerHale in New York. Ms. Sheridan is a graduate of Fordham Law School and Cornell University.
Todd R. Walters is the Chair of the firm’s Patent Office Litigation practice. He is the current Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and the current Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. He has previously served as a member of the firm’s Board of Directors, and Executive Management team and Co-leader of the IP Section. He has previously served as Chair of the Interference Committee of the AIPLA. He has also served as Vice-chair of the Interference Committee of the Intellectual Property Owners (IPO) association for approximately ten years.
Todd focuses his practice on many phases of intellectual property law, with a special emphasis on inter partes matters before the PTAB, and in federal courts representing clients in well over one hundred inter partes matters. Todd has worked on all types of technologies, including matters in the biotechnology, chemical, electrical, mechanical, and pharmaceutical fields. He has aided clients in settlement of proceedings and prevailed on patentability and priority issues. He has further prevailed in complex, multi-party, and multi-application inter partes matters and has represented clients in actions before district courts and the Federal Circuit. He has experience in counseling clients in most other aspects of intellectual property, including patent procurement, infringement and validity analysis, opinion writing, and federal litigation.
Todd was recommended in IAM's Patent 1000, on the national level for post-grant proceedings. He has also been recognized in Chambers USA for his intellectual property work. In addition, Todd was recognized for his work in the (national) intellectual property and PTAB Litigation practices as an IP Star by Managing Intellectual Property, where his peers noted him for being, “highly ethical and very considerate,” as well as, “very knowledgeable about prosecution and [the] interference/IPR practice.”
Todd was the originator and organizer of the popular Interference Practice in the New Millennium series of seminars on interference practice. He wrote commentary for the AIPLA and IPO that helped shaped the rules of practice for interferences adopted by the USPTO in 2004.
Todd was an invited member of a blue ribbon committee of the AIPLA that addressed patent law reforms, including first-inventor-to-file, inter partes review, and post-grant review issues. Much of this work is found in legislation adopted by Congress in the America Invents Act. Todd has been a frequent lecturer on PTAB proceedings.
Jeremy Lowe offers clients nearly 15 years of trial and litigation experience representing plaintiffs and defendants in patent cases and other complex litigation matters. A chemical engineering graduate and registered patent attorney, Jeremy is a seasoned trial lawyer who merges his advocacy and technical skills to help clients shape successful litigation strategies. His practice focuses on jury trials that combine patent and antitrust claims, with particular emphasis on technologies ranging in application from filtration to pharmaceuticals to medical devices. He has successfully argued at the trial and appellate level, including presenting oral arguments before the U.S. Court of Appeals for the Federal Circuit. Jeremy was recently named to the Hartford Business Journal’s 2013 Class of Top 40 Under 40, and last year he was named as a New Leader in the Law and to the Class of 2012 Top 40 Under 40 by the Connecticut Law Tribune. Jeremy also frequently lectures, is actively involved in his community, and enjoys spending time with his family.
Dr. Meyer conducts economic research and analysis in the areas of intellectual property economics, antitrust, commercial damages, business valuation, and labor economics. She has written expert reports and testified in deposition and at trial about her economic analysis.
In antitrust, Dr. Meyer has evaluated the competitive effects of mergers and acquisitions and analyzed antitrust claims and damages in cases involving alleged resale price maintenance, monopolization, and price discrimination. Dr. Meyer has analyzed competition in a wide range of industries, including agricultural chemicals, athletic apparel, automotive parts, beer, bread, chemicals, computer software, hospitals, kitchen appliances, linen rental, mobile computing, movie theaters, pharmaceuticals, satellite ground equipment, smokeless tobacco, and yogurt. Dr. Meyer has incorporated various econometric techniques in her antitrust work to include analysis of bidding data, demand modeling, and the design and analysis of discrete choice consumer surveys. Dr. Meyer has written expert reports and testified about her analysis and has presented her analysis to the Federal Trade Commission and Department of Justice. In 2009, she was featured as one of Global Competition Review's Women in Antitrust.
In the areas of intellectual property, commercial damages, and business valuation, Dr. Meyer has written expert reports and testified on economic damages. She has analyzed damages arising from patent and copyright infringement, the misappropriation of trade secrets, and breaches of contract. She has worked on analysis of class certification issues and has analyzed commercial success and injunction issues in patent cases. She has also analyzed the value of several patents, licenses, and potential business acquisitions.
In labor economics, Dr. Meyer has conducted academic research and published several papers in peer-reviewed journals dealing with issues including work/family benefits, women’s work, and childbearing decisions. She has testified on damages in an alleged wrongful termination matter. She has also worked on behalf of numerous families of victims of the September 11 terrorist attacks to analyze and testify about the economic losses incurred by families in connection with their claims to the Federal Victim’s Compensation Fund.
Frank J. Nuzzi is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey.
Frank oversees U.S. patent litigation across Siemens’ U.S. businesses. In that role, Frank supervises outside litigation counsel. Frank has experience in all aspects of intellectual property law and is a frequent CLE panelist in the field.
Prior to joining Siemens, Frank was in the litigation department of Clifford Chance where he specialized in patent litigation.
NYU School of Law, JD
Executive Editor of the Annual Survey Of American Law.
Lehigh University, B.S and M.S. in Mechanical Engineering
Engineering honor society, Tau Beta Pi.
James Markarian is Senior Counsel and Licensing Manager for North America for Siemens Corporation. He manages Siemens' outbound licensing programs and IP sales; handles incoming licensing matters and IP acquisitions; and negotiates and drafts various transactional agreements (e.g., IP licenses, JV's, Software licenses, R&D's, Agent and Service, Asset Purchase or Sale, NDA's, etc.). James provides support for Siemens' M&A activities, advises Siemens' business units regarding IP asset management as well as IP issues related to standards organizations. He has an Aerospace Engineering degree from Boston University and a JD degree from Brooklyn Law School. Before joining Siemens, he worked for Refac Corporation, and the law firms of Pennie & Edmonds; Ladas & Parry; and, Wyatt, Gerber, Burke & Badie.
Tim Bedard, a registered patent attorney, is currently the Director, Intellectual Property Center of Excellence for Johnson & Johnson’s Global Surgery Group of Operating Companies. In this role he is responsible for managing the patent portfolios of J&J’s Ethicon Surgical Care, Cordis, Biosurgery, Biosense Webster, Mentor and SterilMed franchises including developing processes and procedures for capturing and managing ideas and patents as well as outlicensing intellectual property. Prior to joining J&J, Tim was a patent litigator at K&L Gates LLP in Pittsburgh, PA where he litigated and tried patent cases related to ion implantation, breast implants and steel framing. Tim began his professional career as a naval officer serving 8 years in the navy flying the P-3 Orion aircraft and serving as an aide-de-camp to the Chairman of the Joint Chiefs of Staff. Tim holds a BS in Industrial Engineering from the University of Pittsburgh, a Juris Doctor from the Duquesne University School of Law and an MBA from the Yale University School of Management.
Steven Meyers' current position is Systems and Technology Group HQ IP Counsel - IBM Corporation.
Past positions at IBM include Director of IP Management Services , Corp Patent Portfolio Manager, Software Group IP Counsel and Storage Division IP Counsel.
Steven is a registered Patent Attorney, Professional Engineer, and Certified Licensing Professional.