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.
Approved for 6 hours of California CLE credits
KEY TOPICS DISCUSSED
Portfolio Management: Getting Your House in Order
Shhh… Protecting Trade Secrets
Preparing for Litigation: Getting Battle-Ready
Defensive Trial Strategies: Let the Games Begin
Defending with Post Issuance Proceedings
Defending Against NPEs – Fight or Flight?
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
Peter Ullmann is currently Manager of Intellectual Property at Prysm, Inc. as well as Patent Manager at the startup venture, zSpace, Inc. His previous position was at Adobe Systems, Inc., where over his eleven years tenure he architected the patent program, including the portfolio strategy, invention mining workshops, application filing/claim objectives and overall management/operations. Peter has also held technical and business positions at Lawrence Berkeley National Laboratory, The Boeing Company, Texas Instruments, Inc., Raytheon, and Schlumberger Limited.
In addition to his patent and development work, Peter’s over 25-year career has included positions as Standards Manager, University Collaborations Manager, Product Manager, Asia Business Manager, and Engineering Manager. He has worked across a broad range of technical domains from avionic systems to electron beam probing systems to integrated circuits failure analysis to software systems. An Electrical Engineering graduate from the University of California, Berkeley, Peter has published internationally, chaired several non profits including the Software Patent Institute, the Software Patent Coalition, as well as various community organizations. He also founded the Idea Parlor, volunteering time with the goal of helping individuals across all backgrounds (technical and non-technical) identify the patentable inventions within their ideas from garage shop hopefuls to small entities.
In addition, Peter has been active in the arts: performing with the Boston Opera; chairing an international film series; writing/producing a melodrama about an inventor pursuing a patent, entitled “The Claims of Fame”; and writing the libretto about the patenting experience entitled “The Passionate Patent,” ... the opera having been performed several times across the valley.
Patrick is a Senior IP Attorney at HGST, a division of Western Digital. Early years at HGST focused on revenue generation from technology and patent licensing, current work focuses on patent development and portfolio management for storage products. Prior to HGST, Patrick ran bet the company patent litigation at Nichia Chemical, wrote technology agreements at National Semiconductor, and drafted patent applications. An electrical engineer and patent attorney, Patrick obtained his Juris Doctor from Hastings College of the Law and holds two bachelor’s degrees, the first in English literature from the University of California, Berkeley. Patrick is a licensed attorney in California, New York, and the District of Columbia.
Kamrin is the Senior Director of Intellectual Property for Codexis, Inc., and is responsible for all aspects of the Codexis global intellectual property portfolio, including patents, trademarks, intellectual property litigation, opinions, trade secret protection, and copyrights, as well as managing collaborative projects, licenses, and other transactional matters. Kamrin holds a Ph.D. in Microbiology from the University of California, Berkeley and a law degree from Santa Clara University School of Law. She has over 20 years of intellectual property law experience including almost 10 years at Medlen & Carroll (5 years as a partner), and approximately 8 years at Genencor International as senior IP counsel.
Dmitry Tulchinsky has more than fifteen years of experience in the biotech and chemical industries. He has worked for the last seven years as a patent professional focusing on intellectual property matters in IP strategy development and implementation, licensing, due diligence and portfolio building at DuPont and Johnson & Johnson. Prior to working as a patent professional, Dmitry worked for eight years as a scientific researcher in drug discovery for Novartis, Amgen, UCLA, and The University of Southern California culminating in three drugs candidates entering human clinical trials and one marketed within the U.S.
Duo Chen is the Director of IP for Box, Inc., a leader in cloud storage and file sharing. Ms. Chen joined Box in 2014 to help build Box's IP program from the ground up. Prior to Box, Ms. Chen held in house positions at Oracle and SAP AG. She was instrumental in building Oracle's patent portfolio around the enterprise business applications software products; initiated IP risk mitigation programs; and assisted in resolving IP disputes. While at SAP, she built an IP program for SAP's China based software development center from the ground up. Prior to going in-house, Ms. Chen represented both U.S. and Asia-based high tech companies in patent litigation matters while she was at Latham and Watkins and Orrick, Herrington, and Sutcliffe. She started her IP career as a patent examiner at the USPTO. Ms. Chen received her J.D. from the Georgetown University Law Center, M.S. in Telecom and Computers from the George Washington University, and BSEE from the University of Maryland.
As Deputy General Counsel at Rambus, Burch Harper leads the company’s transaction team, which is responsible for the negotiation and drafting of all in-bound and out-bound agreements (other than employment and M&A agreements). While at Rambus, Burch negotiated to closure multiple patent license agreements that, together, generate over one-half of a billion dollars in revenue. These include patent license agreements with Micron Technology, Inc., Hynix Semiconductor Inc. (SK hynix Inc.), Nanya Technology Corporation, STMicroelectronics N.V., LSI Corporation, Freescale Semiconductor, Inc., Qualcomm Global Trading Pte. Ltd. (a subsidiary of Qualcomm Incorporated), and Fujitsu Semiconductor. Since graduating from the University of Michigan Law School in 1996, Burch’s legal practice has focused primarily on patent and technology licensing transactions and intellectual property protection and enforcement in both law firm and in-house settings.
Bryan is General Counsel at Applied Research Works, Inc. (ARW), a Palo Alto based software company offering specialized services for health plans, healthcare professionals and patients. Prior to beginning his legal practice, and during law school, Bryan worked with a major patent holding company where he participated in the licensing and monetization of high value patent portfolios. In addition to his role at ARW, Bryan maintains a private law practice in the Silicon Valley where he represents clients in intellectual property matters. Bryan earned his J.D. from Indiana University School of Law-Indianapolis (now known as Indiana University Robert H. McKinney School of Law); a Master of Intellectual Property, Commerce, and Technology from Franklin Pierce Law Center (now known as the University of New Hampshire School of Law); a Master of Health Services Administration from St. Joseph's College of Maine; and a Bachelor of Science in Biology from the University of Nevada, Reno. Bryan is a member of the State Bar of California and is registered to practice before the United States Patent and Trademark Office
Thomas F. Fitzpatrick is partner and co-chair of the Intellectual Property Litigation Practice Group of Pepper Hamilton LLP, resident in the Silicon Valley office. Mr. Fitzpatrick focuses his practice on all aspects of intellectual property, including litigating patent, trade secret, trademark, technology licensing and other related disputes. He has represented both patent owners and patent defendants in federal courts throughout the country, including in the Northern, Central and Southern Districts of California, the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, the Northern District of Georgia and the District of Arizona. Most recently, Mr. Fitzpatrick has successfully represented internationally based and publicly traded companies in the computer database, telecommunications, semiconductor, Internet and power supply industries.
Prior to joining the firm, Mr. Fitzpatrick was a partner in the Litigation Department and a member of the Patent Litigation Group at Goodwin Procter. Then he was a partner in the Palo Alto office of Townsend and Townsend and Crew LLP. Before that, he was a deputy district attorney at the San Mateo County District Attorney’s Office. As a prosecutor, Mr. Fitzpatrick obtained convictions through bench and jury trials.
Mr. Fitzpatrick has written numerous articles on patent law and patent litigation. He has spoken on recent developments in patent law to various organizations in the United States and Korea.
Mr. Fitzpatrick is a member of the San Mateo Bar Association and a past -member of the California District Attorneys Association. Mr. Fitzpatrick received his J.D. in 1997 from Santa Clara University School of Law, where he received the American Jurisprudence Award in Patent Law and was the research editor for the Santa Clara Computer and High Technology Law Journal. He received a B.A. in 1994 from the University of California Berkeley.
Mr. Fitzpatrick is admitted to practice in California, and before the U.S. Court of Appeals for the Ninth Circuit, U.S. District Courts for the Central, Eastern, Northern and Southern Districts of California, the District of Arizona and the Eastern District of Texas.
Kima Hayuk has been a key player in protecting the Trade Secrets and other IP Assets at Electronic Arts for over 15 years. Currently leading EA’s IP Protection Program, Kima partners with stakeholders from Legal, HR, IT and EA’s game development studios to define policies and standards for the protection of IP, to identify and deploy technologies which enable secure collaboration and distribution of IP, and to develop and deliver IP Protection training and awareness programs to ensure that all personnel know how to carry out their IP protection responsibilities. Kima focuses on preventing Trade Secrets and other IP assets from leaking out of EA to competitors or to the public at large.
Eve Saltman is the Deputy General Counsel and Assistant Corporate Secretary at GoPro, Inc., where she works on corporate securities and corporate governance matters with the General Counsel, and manages a team that supports intellectual property, disputes, hardware and software product development, and supply chain/operations. Eve previously held in-house positions at Autodesk, Siebel Systems, LiveOps, OnLive, and started her career at Orrick, Herrington & Sutcliffe. She received her B.A from Cornell University where she graduated magna cum laude and phi beta kappa, and her J.D. from Georgetown University where she graduated cum laude.
Joel brings more than 20 years of experience in the medical device industry including 12 years of IP experience developing and managing patent portfolios for emerging medical device companies. Joel has worked for Wilson Sonsini Goodrich & Rosati PC, Townsend and Townsend and Crew LLP and Rita Medical Systems Inc. Joel has also held engineering and management positions at divisions of Guidant, Abbott Laboratories and Johnson and Johnson. Joel is admitted to practice before the United States Patent and Trademark Office. He is a graduate of Santa Clara Law School and a recipient of an Emery Scholarship for Academic Achievement and Witkin and Cali Awards for Academic Excellence (Golden Gate University). In addition to his law degree, Joel holds a B.S. Degree in Chemical Engineering from Northwestern University and an M.S. Degree in Bioengineering from Penn State University.
Sriranga Veeraraghavan is a Vice President, Legal at Xperi (formerly Tessera). Sriranga supports Xperi’s technology licensing and corporate development efforts in addition to managing Tessera’s litigation matters and post-issuance proceedings. Before joining Tessera, Sriranga practiced law at Cooley LLP and Howrey LLP and worked as an engineer at Sun Microsystems and Cisco Systems. He is a named inventor on two U.S. patents, which are based on his work at Sun.
Jeff Nichols specializes in patent litigation with an emphasis on the biotechnology and pharmaceutical industries. His litigation experience includes first-chair trial responsibilities, Markman hearings, summary judgment hearings, and managing the discovery process from start to finish. In addition, he has served as the principal attorney for several appeals to the Federal Circuit. Mr. Nichols is also co-chair of the Litigation Practice Group at Brinks.
Noah Mesel oversees all of ASSIA’s legal affairs, and has more than 25 years of experience representing technology companies in Silicon Valley. Among other responsibilities, he advises the Company’s senior management and board of directors on corporate governance, intellectual property protection, strategic licensing transactions and litigation matters. He previously served as general counsel at Corsair Components, Ikanos Communications, Riverstone Networks and Legato Systems, and as corporate counsel at Lucent Technologies. Mesel began his legal career at Palo Alto law firm Wilson Sonsini Goodrich & Rosati. He holds a J.D. from the University of Virginia School of Law and a B.A., cum laude, from Claremont McKenna College. In addition to his legal work at ASSIA, Mesel serves on Claremont McKenna College’s Information Technology Advisory Board, is Chairman of the Board of Future Youth Records, a non-profit record label, and is a second degree black belt in Tae Kwon Do.
Ulysses Hui is the General Counsel and Chief Risk Management Officer of JDI Display America, part of Japan Display, a leading display supplier for mobile devices, which formed through the integration of the display companies of Sony, Toshiba and Hitachi in 2012 and went public on the Tokyo Stock Exchange in 2014. Ulysses has been with Japan Display since its launch, successfully guiding the Executive Team and business units throughout Japan Display Group’s global network on key business development, corporate, compliance, legal and IP issues, with a focus on strategic relationships with U.S. mobile, automotive and other customers and ecosystem partners. Ulysses started his career as an investment banker in New York, before receiving his J.D. from Stanford Law School and going on to represent tech clients in private practice in both IP trials and complex litigation and tech transactions for over twelve years in the Silicon Valley.
Tim Croll is Deputy General Counsel, IP at Cypress Semiconductor Corporation, which delivers high-performance, high-quality solutions at the heart of today's most advanced embedded systems, from automotive, industrial and networking platforms to highly interactive consumer and mobile devices. As such, Mr. Croll is involved with many aspects of Cypress’s Intellectual Property management, including patent and other IP portfolio development and monetization. During the past quarter century Mr. Croll has worked as Director of Intellectual Property at Spansion, and as an IP attorney at LSI Corp., Agilent Technologies , Hewlett-Packard and in private practice. Prior to law school, Mr. Croll worked as an engineer in Silicon Valley.
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.
Leading technology companies, including Netflix, TSMC, ConforMIS, and HTC call on Ashok Ramani to handle their most complex intellectual-property disputes. Having tried 15 jury and bench trials nationwide and before the US International Trade Commission, Mr. Ramani identifies key issues early and translates sophisticated technology and legal concepts to persuade juries and judges alike.
Mr. Ramani focuses on bringing and defending patent and trade-secret matters, particularly those that involve cutting-edge technology or lack legal precedent. For his plaintiff clients, Mr. Ramani has secured multiple nine-figure settlements (one of which followed a successful ten-week jury trial) and preliminary injunctions against former employees on trade-secret-misappropriation claims. For his defendant clients, Mr. Ramani has achieved complete victory after trial on multiple patents, mid-trial voluntary dismissal by the plaintiff (with Mr. Ramani's clients and the other defendant paying nothing) and pretrial victory by summary judgment and motion to dismiss.
Mr. Ramani has been repeatedly recognized for his skillful advocacy in patent and trade-secret cases. Since 2014, the Daily Journal named Mr. Ramani as one of California's Top IP Lawyers. Chambers has named him one of the Leaders in their Field for intellectual property: patent. He has been listed for several years in Best Lawyers in America for intellectual property and patent litigation, and in Legal 500 for patent litigation. Since 2009, he has been recognized as a Northern California Super Lawyer for IP litigation.
Other than patent and trade-secret matters, Mr. Ramani’s clients also count on his trial experience and comprehensive understanding of their industries to resolve their class-action, trademark, and contract matters.
Mr. Ramani also dedicates his time to a number of community organizations. He serves on the board of Asian Americans Advancing Justice | Asian Law Caucus, the nation’s first legal and civil-rights organization serving low-income Asian Pacific Americans. He previously served on the State Bar of California’s Commission on Judicial Nominees Evaluation and as co-chair of the North American South Asian Bar Association’s IP and litigation sections. Mr. Ramani lives in Hillsborough with his wife, daughter, and dog.
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.
Heidi Keefe is a partner in the Cooley Litigation department and member of the Intellectual Property Litigation practice group. She joined the Firm in 2009 and is resident in the Palo Alto office.
Ms. Keefe represents clients in high-stakes patent trials before juries and judges. A former astrophysicist and registered patent attorney, she easily understands a variety of technical disciplines, from software to medical devices.
Ms. Keefe is frequently recognized as a leading lawyer. In 2014, she was one of only twenty lawyers in the United States to be named to Law360's list of "Influential Women in IP Law." She has also been named one of the "Top 45 Women Attorneys in the U.S. under 45" by The American Lawyer, one of the "Top Intellectual Property Litigators" and "Top Women Litigators" by The Daily Journal, and one of Northern California's Super Lawyers. She has been named to the Best Lawyers in America guide in the category of Litigation - Intellectual Property (2015) and is also recognized as being among the "Top 250 Women in IP" by Managing Intellectual Property (2014). In addition, Ms. Keefe has been named to The Recorder's "Women Leaders in Technology Law" list (2013), which recognized 50 women attorneys in California who have "demonstrated leadership and expertise in solving the most pressing legal concerns technology companies can face."Furthermore, she was recognized as one of the "Top 20 Lawyers in California Under the Age of 40" by the San Francisco Daily Journal (2009) and the Los Angeles Daily Journal. She was also recognized as one of "The Bay Area's Best Lawyers" by Bay Area Lawyer magazine.
Ms. Keefe is a frequent lecturer on all aspects of Intellectual Property Protection. She has taught classes at Santa Clara University on IP Litigation and has conducted lectures at Boalt School of Law and Stanford Law School. Ms. Keefe speaks throughout the country for Law Seminars International, the ABA and the Practising Law Institute.
Ms. Keefe received a JD from Santa Clara University School of Law, graduating cum laude. She received her BA from Wellesley College, graduating cum laude.
Ms. Keefe is a member of the California State Bar, and is admitted to the U.S. Court of Appeals for the Federal Circuit and Ninth Circuit, U.S. Patent and Trademark Office, U.S. District Court for the Central and Northern Districts of California and the Eastern District of Texas. Ms. Keefe is a member of the American Bar Association, Silicon Valley Intellectual Property Law Association and the Chair of the ABA Section of Science and Technology Law's Special Committee on Space Law.
Matthew S. Yungwirth practices in the areas of intellectual property litigation with an emphasis on patents, trademarks and unfair competition. Mr. Yungwirth has represented clients in a diverse range of litigation and licensing matters related to technologies such as wireless LAN systems, multi-access networks, optical interconnects, power over Ethernet, digital watermarking, VoIP, intelligent I/Os, digital signal processing, audio recording devices and digital cable set-top receivers.
Mr. Yungwirth is a 2000 cum laude graduate of the University of Georgia School of Law, where he served as the managing editor of the Journal of Intellectual Property Law, and a graduate of the Georgia Institute of Technology (B.S., Eng.).
Ajay is experienced in counseling clients on procuring, acquiring, and licensing intellectual property. Ajay represents multiple Fortune 500 and startup companies before the United States Patent and Trademark Office. Ajay’s prior in-house practice focused on a variety of projects relating to intellectual property and invention including building an in-house patent team of attorneys, agents and paralegals along with creating workflow processes and infrastructure for a patent department. Ajay also assisted in negotiating agreements with high profile companies and universities and started the process of building and managing a high quality patent portfolio. He also evaluated inventors, prepared and conducted inventor educational seminars and advised on the acquisition of intellectual property assets.
Ajay managed preparation and prosecution of patent applications in a variety of technology subject matter areas including mechanical, materials, computing, electronics, RF and wireless.
Prior to joining Intellectual Ventures, Ajay spent 7 years at Black & Decker, where he was the intellectual property counsel for one of Black & Decker's business divisions. Ajay was responsible for managing all aspects of a global patent portfolio, supervising intellectual property litigation, advising on acquisitions and negotiating license agreements. Before joining Black & Decker Ajay was an associate with the law firm of Brinks, Hofer, Gilson and Lione in Chicago, Illinois. While at Brinks, Ajay prosecuted patent applications in a variety of complex technology areas, participated in patent litigation proceedings and counseled clients on intellectual property due diligence.
He obtained his JD from the Georgetown University Law Center where he was a member of the Georgetown Law Journal (Law Review) and completed his Bachelors of Science in Mechanical Engineering from the University of Michigan. Ajay is registered to practice before the United States Patent and Trademark Office and is a member of the State Bar of Illinois.
Rudy Kim is a partner in the firm’s Intellectual Property Group and the hiring partner of the firm’s Palo Alto office. Mr. Kim’s practice focuses on patent litigation and other intellectual property–related litigation and counseling.
Mr. Kim has extensive experience representing clients in high-stakes litigation in federal district and appellate courts and before the U.S. International Trade Commission (ITC). Mr. Kim is also a registered patent attorney admitted to practice before the U.S. Patent and Trademark Office (PTO). His matters have involved a wide range of complex technologies, including computer hardware and software, semiconductors, data storage, digital security, broadband communication, medical devices and biotechnology. Representative clients include Accenture, Autodesk, Broadcom, Cypress Semiconductor, Freescale, HP, InvenSense, Silicon Image, Spansion, TSMC, Tessera and Veritas.
In 2011, Mr. Kim was elected as a Fellow of the American Bar Foundation, an honorary organization limited to one-third of one percent of lawyers licensed to practice in each jurisdiction. In 2013, he was selected as a Global Fellow by the Federal Circuit Bar Association, a program limited to senior IP and patent attorneys who have a strong international focus in their practice and who have achieved recognition within their own organizations as future leaders.
Mr. Kim received his J.D. from the Georgetown University Law Center, and received his B.S. in electrical engineering from the University of California, Los Angeles. Prior to joining Morrison & Foerster, Mr. Kim served as a law clerk to the Honorable Alan D. Lourie of the United States Court of Appeals for the Federal Circuit in Washington, D.C.
Mr. Kim is a past president of the Asian Pacific American Bar Association of Silicon Valley and a member of the Silicon Valley Intellectual Property Law Association, the San Francisco Bay Area Intellectual Property American Inn of Court, the National Asian Pacific American Bar Association, and the International Association of Korean Lawyers.
David McCombs is primary counsel for many leading corporations in inter partes review, reexamination, and concurrent patent litigation in the federal courts and before the U.S. Patent Office’s Patent Trial and Appeal Board. His practice spans 30 years and includes Federal Circuit appellate argument, patent litigation, licensing and technology transfer, patent portfolio development and drafting, and dispute resolution.
Mr. McCombs is the firm-wide chair of the technology practice of Haynes and Boone. He has a Physics degree and represents clients in diverse technologies that include electronics, semiconductors, software, telecommunications, medical devices, and energy equipment.
Mr. McCombs helps lawyers inside technology companies that face high-risk and often time-sensitive IP issues, both in the litigation and business context. He works with them to develop and execute intellectual property best practices designed to both maximize value and manage exposure to patent risk, and avoid litigation.
Prior to joining Haynes and Boone in 1989, he served as in-house patent counsel for a diversified technology company located in Research Triangle Park, North Carolina, with a long history of developing breakthrough chemical/material science, diagnostic, robotics, and motion management technologies.
Terence is Associate General Counsel at Cypress Semiconductor where he manages litigation and legal operations. Prior to Cypress, Terence was an associate at Kaye Scholer, Dewey & LeBoeuf, and Latham & Watkins. He also clerked for the Honorable Jeremy Fogel in the United States District Court for the Northern District of California. Terence is 2005 graduate of the University of Virginia and has a Ph.D. in physiology from Georgetown University.
Xiao Li Chang is senior corporate counsel in the IP litigation group at Cisco Systems, Inc. She manages a part of Cisco’s busy patent litigation docket, which mostly involves defending lawsuits by NPEs. Before joining Cisco, Xiao was an attorney in New York City at Desmarais LLP and Kirkland & Ellis LLP before that. Xiao has a background in biochemistry.
Experience and Accomplishments:
I began my legal career as a damages witness in the HP v. Bausch & Lomb case, which led to law school and licensing of the patent-in suit which in turn led to generation of over $100 Million in licensing revenue over the life of the patent. My legal career has included IP litigation at Pennie & Edmonds, in-house work at 3Comm and other leading companies in the networking and cloud computing space, and authoring a leading legal treatise on patent infringement damages.
Recognized expert and published author in patent infringement damages;
IP enforcement; Litigation management;
Merger and acquisition; Strategic IP Portfolio creation; IP transaction negotiation; open source policy managemnt; Entrepeuneurial counseling
Publications and Courses
“Patent Infringement: Compensation and Damages”, Law Journal Press. 2006.
"Actions to Limit Product Liability Awards" 4 Product Liability Law Journal 129 5/93.
"Maximizing Impact of Visual Evidence" Patent Litigation 1992 Practicing Law Inst.
"We've just been sued! What's Our Exposure? A Defendant's Guide to Damages" IP Law and Management Institute, San Diego, November 2012
"Implications of the America Invents Act", panelest, IP Counsel Cafe San Jose, San Jose April 2012
"Patent Infringement Damages" IP Counsel Conference, San Jose, March 2012
“Developments in IP Remedies”at IP Counsel Conference New York, 2009 (Conference Chair)
“Developments in IP Remedies”at TechNet IP Forum New York, 2009
“New Developments in Patent Infringement Damages” at Intellectual Property for Wireless and New Media, 2007, 2008
“Remedies for Patent Infringement”, in “Intellectual Property Remedies” webinar, American Lawyer Media, October, 2008
“Getting the Jump on IP Due Diligence - Putting Together an IP Portfolio to Maximize Value” included in “Strategic Planning for Entrepreneurs Seminar”, Stanford University, 2002
Tyler Gee has spent the majority of his career focused on intellectual property, including portfolio building, litigation, and licensing. He has a degree in Computer Engineering from UC Davis and JD from the University of San Francisco School of Law. Tyler practiced for over 6 years at Townsend and Townsend / Kilpatrick Townsend before moving in house – first to a late-stage mobile gaming company Kabam and then to GoPro. In his words, he "could not be more stoked to be at GoPro” - protecting GoPro’s IP and helping enable its customers to capture and document their passions.
Mr. Hauser serves as Deputy General Counsel, Intellectual Property for Ruckus Wireless, Inc. and is responsible for all aspects of IP including litigation, strategy, and procurement. Prior to Ruckus, Mr. Hauser alternated between a number of both in-house and law firm jobs. Mr. Hauser’s in-house prior employment included FormFactor, Inc. and Sun Microsystems. His past law firm employment included Morgan & Lewis, Brobeck, Phleger & Harrison, Wiggin & Dana, and Finnegan, Henderson, Farabow, Garrett & Dunner. Prior to completing his JD at the George Washington University Law School, Mr. Hauser was a patent examiner at the U.S. Patent and Trademark Office. Before joining the USPTO, Mr. Hauser served in the US Air Force where he obtained an MS in Computer Engineering and served as an R&D manager for advanced data acquisition and propulsion systems.