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.
KEY TOPICS DISCUSSED
Defending with Post Issuance Proceedings
Defending Against NPEs - Fight or Flight?
Preparing for Litigation: Getting Battle-Ready
Defensive Trial Strategies: Let the Games Begin
Shhh . . . Protecting Your Trade Secrets
Portfolio Management: Getting Your House in Order
Chief IP Counsel
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
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
Michael LoCascio is the Global Senior Manager of Intellectual Property Strategy for BASF’s $8 Billion/year Catalyst Division where he is responsible for implementing and overseeing IP management processes, developing patent strategies, and executing licenses and enforcement actions. Prior to his current position, he led the effort to develop the market entry and M&A strategy enabling BASF to expand into the medical device sector. Prior to joining BASF, Mr. LoCascio was a Senior Analyst at Lux Research, a technology advisory and market research firm focused on emerging technology sectors, where he started and led teams investigating Solar technology, Green Buildings, Water Technology, and the Smart Grid. Mr. LoCascio was also the founder and CTO of a nanotechnology start-up that developed and commercializing applications of quantum dots for life sciences, solid state lighting and displays, and solar energy conversion and was an engineer at Lockheed Martin conducting research related next generation naval nuclear reactors. Mr. LoCascio holds a Bachelors of Engineering in Applied Physics and Master’s Degree in Electrical Engineering from Stevens Institute of Technology.
Ms. Wade Cavanagh is the former Chief Operating Officer and General Counsel to The Sabre Companies, LLC. Ms. Wade Cavanagh is an expert in complex insurance and indemnification issues and has been instrumental in securing protection for contractors, like Sabre, performing weapons of mass destruction work in Iraq and the restoration of critical government infrastructure following the 2001 bioterrorism attacks. Additionally, Ms. Wade Cavanagh is an IP strategist in a myriad of industries including petroleum, oil and gas, sterilization, agriculture, medical device and drug development and emergency response crisis management with an emphasis on bioterrorism preparedness and response and epidemics. Prior to Sabre, Ms. Wade Cavanagh was a Partner at Young, Sommer LLC, where she specialized in toxic torts and pollution insurance coverage litigation. She is a former New York Assistant Attorney General and has extensive international experience in the field of environmental law, regulation, and crisis response as well as intellectual property protection. Ms. Wade Cavanagh received her Juris Doctor and Masters in Environmental Law from Vermont Law School and her Bachelors Degree from the University of Vermont and is currently pursuing an LLM in Intellectual Property Law at Boston University School of Law.
Leslie Gladstone Restaino, Esq. is an experienced life sciences intellectual property, corporate and compliance attorney with diverse background in all aspects of drug and medical device development, approval, commercialization, compliance, intellectual property and commercial transactions. She has extensive experience in business/corporate law, pharmaceutical, medical device, and healthcare law, intellectual property, corporate governance, FDA regulatory, complex licensing and strategic alliances, commercial contracts, Hatch-Waxman Paragraph IV certifications and litigation, pharmaceutical operations and commercialization, new product opportunities; global patent and trademark portfolio prosecution and management. Ms. Restaino frequently publishes and speaks on matters relating to the life sciences industry, particularly in the intellectual property arena. Currently, Ms. Restaino serves as the General Counsel for Validus Pharmaceuticals where she guides the executive team on all legal matters relating to acquiring, manufacturing and selling pharmaceutical products including product launch, commercialization, intellectual property portfolio management, complex licensing arrangements, joint ventures and clinical development. Ms. Restaino is also the founder of Axios Compliance Solutions, an advanced compliance-risk-management software platform built to address the legal/regulatory compliance requirements of life sciences companies.
Bob is currently Vice President and Chief IP Counsel for IMS Health and has been with the company since July, 2012. Prior to joining IMS Health, Bob spent seven years at Avaya where he ended his tenure as Head of Intellectual Property Law – Transactions and Open Source. Before Avaya, Bob was a Senior Attorney at AT&T where he focused on transactions, patent assertion and monetization. Bob also spent 4 plus years as a patent litigator at Fish & Neave (now a part of Ropes & Gray). Bob is a graduate of Rutgers University - College of Engineering and Rutgers Law School and has a LL.M in Intellectual Property from George Washington University Law School.
Joe has been the Intellectual Property Counsel at Mitsubishi Chemical Holdings America, Inc. since May 2014. Before going in house, he was a Senior Associate in Orrick, Herrington & Sutcliffe LLP's Intellectual Property Group where he focused his practice on patent and trademark litigation since 2007. Before Orrick, Joe worked for a boutique firm prosecuting pharmaceutical patents. Joe is a 2006 graduate of the Benjamin N. Cardozo School of Law and a 2000 graduate of Columbia College where he graduated with a degree in Biochemistry.
Rosa Yaghmour leads all aspects of intellectual property protection, including patent portfolio management, patent prosecution, patent procurement, licensing and litigation at Entegris, Inc. Prior to Entegris, Rosa was an associate at Choate Hall and Stewart and was a staff attorney at IBM Corporation.
Kim R. Jessum is Chief IP Counsel U.S. and Associate General Counsel at Heraeus Incorporated in Langhorne, PA and Secretary of Heraeus Materials Technology North America LLC in Chandler, AZ. Heraeus is a Fortune Global 500 company specializing in precious metals, materials and technologies; sensors; biomaterials and medical products; as well as quartz glass and specialty light sources. Kim is responsible for providing intellectual property and general legal advice for various business units in the United States and worldwide. Kim received her bachelors degree in chemical engineering and applied science from Lehigh University in 1992 and her masters degree in biopharmaceuticals from the University of Pennsylvania in 2004. She was awarded her law degree and Certificate in Intellectual Property Law from Chicago-Kent College of Law, Illinois Institute of Technology in 1997. She is admitted to practice in Pennsylvania, New Jersey, and Illinois and before the U.S. Patent and Trademark Office. She holds various leadership positions in the American Bar Association, including the Financial Officer for the Intellectual Property Law Section and serves as a board member and co-chair of the IP Committee of the Greater Philadelphia Association of Corporate Counsel.
David Foster, Principal Counsel for The Walt Disney Company, is the in-house patent attorney for ESPN. Although primarily focused on ESPN, he also provides patent coverage for Marvel Comics and the Pittsburgh, Boston, and Zurich labs of Disney Research. In addition to managing the invention harvesting and patent application process for ESPN, Mr. Foster handles patent litigation and licensing and advises on the patent aspects of contracts and other corporate transactions.
Prior to joining ESPN, Mr. Foster was Assistant General Counsel for Intellectual Property at Actel Corporation, a Silicon Valley semiconductor company. There, he managed all aspects of Actel's patent program, including prosecution, strategy, portfolio development and management, litigation, and licensing, as well as other intellectual property matters including copyright, trademark, and software issues. Prior to Actel, Mr. Foster held positions at Novalux, Inc., a semiconductor laser startup and Kenyon & Kenyon, a New York-based intellectual property law firm. Mr. Foster earned a BSE in Systems Engineering from the University of Pennsylvania in 1993 and a JD from the University of Chicago Law School in 1996.
Ted Mathias focuses on patent litigation and has experience litigating antitrust and other commercial matters. Clients frequently turn to Ted for guidance on issues covering patent damages and other remedies, and competition-related issues that arise in connection with patent disputes. He has tried patent cases and handled successful appeals to the Federal Circuit in the areas of medical devices, other mechanical devices, e-commerce, software and pharmaceuticals.
Ted has served as lead counsel in commercial disputes, and has litigated sham litigation, standards setting, patent pooling and IP licensing issues, other Sherman Act claims, insurance coverage and environmental claims. In addition to major trial work, he has represented clients in private dispute resolution proceedings, mediations and government investigations concerning antitrust, unfair competition, false advertising and Internet privacy issues.
DR. JUDY JARECKI-BLACK is Global Head of the Intellectual Property Department at Merial Limited, the Animal Health Division of Sanofi. Dr. Jarecki-Black is admitted to the state bars of Georgia and South Carolina, and is admitted to practice before several federal courts including the United States Supreme Court. Her background includes over 20 years’ experience as a researcher in developing human and animal vaccines against infectious diseases, including developing and licensing the recombinant Lyme (OspA) vaccine for Rhone merieux. It was her work on the recombinant Lyme vaccine that first introduced her to patent law and inspired her to get a legal degree at the Georgia State University, College of Law. Since 2002, Dr. Black has been responsible for the maintenance and enforcement of Merial’s global patent portfolio. Her department obtains patent protection, generates patentability and freedom-to-operate opinions, and conducts due diligence for a variety of licensing opportunities. Dr. Jarecki-Black is also responsible for global patent litigation and leads the trial team on all patent cases.
Brendan has led and worked on projects representing a wide array of technologies, such as microprocessor design, semiconductor manufacturing, semiconductor fabrication tools, cryptographic hardware, low-power electronics, consumer electronics, touchscreens, LCD displays, LED applications and driver circuits, power supply circuits, wireless transceiver circuits, hard drive technologies, data storage systems, digital interfaces, computer buses, memory design, flash memory, and mixed signal ICs, among others. Mr. Sever holds a Master’s Degree in Computer Systems Engineering from Boston University in addition to a B.S. in Electrical Engineering from UC Santa Barbara. He has worked for Lockheed Martin and Northrup Grumman in California as an embedded systems engineer, for Sonos as a systems support engineer to Europe, and for BINA in Switzerland as an electrical engineer in the food factory designing automation systems and troubleshooting electrical systems. In addition to his work in industry, his research and lab work in academia focused on semiconductor fabrication, VLSI design for digital signal processors, and parallel computing architectures.
Thomas Humphrey is a partner in the law firm of Wood, Herron & Evans, LLP. He focuses on intellectual property counsel for a wide range of clients ranging from individual inventors to Fortune 500 clients. More specifically concentrating in patent and trademark prosecution, licensing and litigation, primarily with clients involved in electronics, computer software, and medical devices. In 2005 and 2006, Thomas was named an Ohio Rising Star by Law & Politics Publishers, and in 2006 was named among the top 250 executives, attorneys, accountants and decisionmakers in technology in Cincinnati. More recently, Thomas was named to “Best Lawyers in America” in 2014.
Jonathan Harris has 15 years of experience litigating high-stakes patent and trade secret matters, including matters with multi-million and billion dollar exposures. He has tried cases, and argued numerous contested proceedings, including hearings on claim construction and dispositive motions.
Jonathan concentrates his practice in the fields of biochemistry, mechanical engineering and computer software. His experience in life sciences and medical device patent litigation is particularly extensive. For example, he frequently leads litigation teams in complex Paragraph IV patent disputes, an area of focus for the past ten years.
Earlier in his career, Jonathan prepared and prosecuted patent applications in a variety of industries. He successfully argued appeals before the Board of Patent Appeals and Interferences, defended reexaminations and prosecuted interferences. His patent prosecution experience is a foundation for his litigation and counseling practice.
Outside the firm, Jonathan teaches a class on federal pretrial litigation at UCONN Law and tries cases for the Commission on Human Rights and Opportunities on a pro bono basis.
Jeanpierre J. Giuliano is Senior Counsel, Intellectual Property for Thomson Reuters. Jeanpierre supports the intellectual property practice, including patent portfolio management, licensing and litigation, for a variety of Thomson Reuters’ businesses. Prior to joining Thomson Reuters, Jeanpierre was in private practice specializing in patent litigation and patent prosecution. Jeanpierre received his bachelor’s degree in civil engineering and his master’s degree in environmental engineering from The Cooper Union for the Advancement of Science and Art. He was awarded his law degree from Brooklyn Law School in 2004 and is admitted to practice in New York and before the U.S. Patent and Trademark Office.
Kent Cheng has been practicing intellectual property law since 1988, representing and advising clients who need to protect or license their inventions or need to know the risk of patent infringement in marketing their products. His experience includes patent litigation, patent portfolio strategy and management, technology licensing, and patent and trademark procurement.
Chellis Neal Gonzalez is an Assistant General Counsel-IP at AOL Inc. and its Director of IP and Media Law Litigation. She is responsible for managing all IP and media Law litigation, as well as handling threats and other defensive issues related to patents, A Registered Patent attorney for over 20 years, Chellis arrived at AOL eight years ago after a three-year sojourn in Mexico—where she maintained a cross-border solo practice on federal issues such as bankruptcy and immigration. Prior to that, Chellis practiced a mix of patent prosecution and patent litigation at two national law firms. A former Registered Nurse, Chellis began her legal career as an enforcement attorney for the Securities & Exchange Commission, following a clerkship on the Maryland Court of Appeals.
Charles R. Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.
Fluent in technical jargon spoken by inventors and clients, patentese spoken at the PTO, legalese spoken by courts and attorneys, business jargon spoken by management, and plain English, he seeks to translate complex subject matter into terms all can understand.
The author of The Corporate Insider's Guide to U.S. Patent Practice, Mr. Macedo has been cited as an authority on intellectual property issues by the Wall Street Journal, Dow Jones, BNA, Bloomberg, Inside Counsel, Managing Intellectual Property, Technology Transfer Tactics, IP Law 360, JIPLP and other media.
His patent experience encompasses a broad range of industries and products including Internet, e-commerce and computer-enabled inventions; financial services, transaction processing, electronic wallets and virtual or synthetic currency, including Bitcoins; Software-As-A-Service; social media; semiconductor and photomasks; green energy and power; construction materials and structures; life sciences; and apparel, to name a few. Mr. Macedo also has enforced and defended against trademark assertions for financial service providers, non-profit organizations, celebrities; cosmetic companies, luxury retailers of designer handbags and retail chains. He also advises clients on IP contracts, licensing and confidentiality agreements.
By identifying vulnerabilities and considering variations on design concepts, Mr. Macedo helps clients develop strategies to maximize protection and prevent infringement challenges. He frequently serves as special counsel to companies seeking an IP strategy, not just a patent; to IP holders in anticipation of litigation and as coordinating counsel for multiple law firms.
He is consistently at the forefront of complex and emerging patent issues in the financial services and transaction processing industries. Clients ranging from international banks, broker dealers and new business ventures call on Mr. Macedo to develop patent strategies, prepare patents, assert rights and defend against infringement claims. His work includes developing and implementing patent strategies associated with such cutting edge financial innovations like bitcoins and other synthetic currency or math-based assets. His experience includes successfully defending the Discover Card division of Morgan Stanley from one of the earliest business method patent assertions, and leading the team to implement and enforce the deposit sweep patent portfolio for Island Intellectual Property LLC. He has also helped clients implementing insurance related products seek patent and other intellectual property protection.
Mr. Macedo writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. As Co-Chair of the Amicus Committee of the New York Intellectual Property Law Association, Mr. Macedo has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Mayo v. Prometheus (at the Supreme Court), Association of Molecular Pathology v. Myriad Genetics Inc. (at the Supreme Court and the Federal Circuit), CLS Bank Int’l v. Alice (at the Federal Circuit en banc and at the Supreme Court in the petition and merits brief stage). His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Second Circuit and for certiorari to the U.S. Supreme Court on behalf of various clients.
He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989–1990. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo is included in SuperLawyers, IP Stars and Million Dollar Verdict.
For the past ten years, Preston Granbery has been the General Counsel at Raritan, Inc., a maker of software and hardware used in the remote management of datacenters. In that role, he has responsibility for all of Raritan's legal matters arising from the company’s global operations, including setting Raritan’s intellectual property strategy, supervising the development of the company’s patent portfolio and overseeing the company’s defense in patent litigation brought by both practicing and non-practicing entities. Preston holds an undergraduate degree in mathematics from Princeton and worked as a computer programmer for seven years before getting his JD from Villanova University School of Law. He is admitted to practice in New Jersey, Pennsylvania and before the United States Supreme Court. Prior to joining Raritan, Preston was with Thacher Proffitt & Wood LLP, a prominent New York law firm, and had a distinguished career as in-house corporate counsel at AT&T and Lucent Technologies.