For today’s intellectual property executive, all roads converge toward Defense and Litigation: NPEs, corporate trolls, and the AIA have multiplied the number of IP lawsuits. In this environment, an effective, up-to-date Defense Strategy is a must-have for operating companies.
This conference examines IP Defense from soup to nuts, including best and latest defense strategies, preparing for trial,strong patent prosecution programs, protecting IP in social media, trade secrets, considerations when settling, managing internal resources and expectations, and post-issuance proceedings.
APPROVED FOR 8 HOURS OF CALIFORNIA MCLE CREDITS!
This activity was approved for 8 hours of MCLE credit by the State Bar of California. Credits not claimable for MCLE in legal ethics, elimination of bias or competence issues.
KEY TOPICS DISCUSSED
First Line of Defense: A Strong Patent Prosecution Program
Defending with Post Issuance Proceedings
Strategies For Dealing With NPEs - Fight or Flight?
Preparing for Litigation: A Defensive Perspective
Defensive Trial Strategies: Let the Games Begin
Defending Your Trade Secrets: Proactive & Reactive Strategies
Defensive Portfolio Management - Playing Offense and Defense
Defending Against Infringement Claims from Operating Companies
Chief IP Counsel
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
Intellectual Property, Trademark and Copyright Counsel
Head of Litigation
Director of Business and Legal Affairs
Director/VP of Intellectual Property
Director/VP of Licensing
VP & Director of Intellectual Asset Management
Mike Heafey is a partner in King & Spalding’s Silicon Valley office and a member of the Intellectual Property Practice Group. He focuses on patent and trade secret litigation. Mr. Heafey has tried cases in federal court and before the International Trade Commission. Mr. Heafey has extensive experience in complex patent cases where he combines Patent Office reexamination and review proceedings with litigation in federal court or in the ITC.
Mr. Heafey has particular expertise in matters regarding integrated circuit packaging, fiber optics, DRAMs, packet switch networks, and light emitting diodes. He also has extensive experience representing Pacific Rim corporations in IP matters.
Mr. Heafey served as lead counsel for Taiwan DRAM companies that successfully defeated Tessera, Inc. in the 630 ITC Investigation. Mr. Heafey cross examined Tessera's infringement expert witness and worked on other technical issues to obtain a decision of no infringement of Tessera's patents. Mr. Heafey also led the defense of Siliconware Precision Industries, Co., Ltd. against patent infringement charges by Tessera, Inc. in district court and in the ITC. In addition to Siliconware, Mr. Heafey has represented Acer, Nanya, PowerChip, PowerTech, Altek, and Vizio.
Earlier in his career, Mr. Heafey served as the general counsel and secretary at Sunrise Telecom. Sunrise Telecom is a Silicon Valley company that is a leader in the design and manufacturing of telecommunications test equipment.
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.
Jordan Becker is a patent attorney and a partner in the firm's Intellectual Property practice. With nearly 20 years of experience as an attorney built upon his prior engineering experience, Jordan advises and assists cutting-edge technology companies and entrepreneurs in all aspects of IP procurement and protection. He focuses on developing and executing IP protection strategies and building IP portfolios, including preparing and prosecuting patent applications. He also devotes significant time to post-grant proceedings for patents (inter partes review (IPR), covered business method (CBM) review, etc.), patent portfolio analysis, IP due diligence for corporate transactions, analysis and opinions regarding third-party patents (freedom-to-operate, non-infringement, invalidity), and support of patent litigation.
Jordan represents clients ranging from individual entrepreneurs and start-up companies to industry-leading multi-national corporations. His technical experience and knowledge span numerous industries and technologies and include computer software, electrical/electronic hardware and mechanical devices. He has significant experience with medical devices, wireless communications, mobile computing, computer games, cloud computing, data storage, e-commerce, search engines, image processing, speech recognition, Digital Rights Management (DRM), geo-positioning and navigation, and IC design and fabrication.
Milan Patel has over 16 years of experience with patent portfolio development and management, client counseling, licensing, IP strategy and patent acquisition covering various complex technologies, including Wireless, Audio/Video, Internet and Networking technologies. He was a major contributor in the development of Apple’s Wireless patent portfolio, Qualcomm’s OFDMA patent portfolio, Nokia’s CDMA patent portfolio and TV/Com’s MPEG-2 patent portfolio. He has extensive experience in connection with managing and counseling business and engineering clients, patent mining, drafting and presenting claim charts, evaluating and mapping technology, and finding gaps in IPR coverage. He also has experience in substantial patent preparation and prosecution, managing inside and outside counsels and third party portfolio analysis for licensing, acquisitions, assertions, and litigation.
Mr. Eric B. Janofsky is currently Vice President of Intellectual Property for Lam Research Corporation. Prior to Lam’s merger with Novellus Systems Inc. he was Novellus’ Vice President and Associate General Counsel for Intellectual Property. He was Vice President and General Patent Counsel at Marvell Semiconductor Inc. Mr. Janofsky has over 20 years experience in the semiconductor industry. Prior to his career as an attorney, he was a practicing engineer for over 10 years.
He is a member of the Intellectual Property Inns of Court, Licensing Executive Society, the American Intellectual Property Law Association, and the Silicon Valley Intellectual Property Law Association. Mr. Janofsky holds senior member status with the IEEE. Mr. Janofsky holds a J.D. degree from St. John’s University School of Law, and is a member of the bars in California, New York, New Jersey, the District of Columbia, and with the United States Patent and Trademark Office. Mr. Janofsky also holds a Bachelor of Science and a Masters of Engineering in Electric Power Engineering from Rensselaer Polytechnic Institute. He also holds a Masters of Science in Management from Polytechnic Institute of New York.
Divyata is passionate about intellectual property rights and helping organizations align their patent strategies with their business goals. She has over nine years of experience in managing a full spectrum of intellectual property issues, ranging from early conception to commercialization.
Fergal Clarke is the director of IP business analysis at Lenovo, the world’s largest PC firm, which has major research centres in Yamato, Japan; Beijing, Shanghai and Shenzhen, China; and Raleigh, North Carolina.
Mr Clarke is responsible for providing business context to all IP-related activities and for ensuring that such activities are consistent with and supportive of the overall business strategy. His specific responsibilities include patent acquisitions, supporting organic patent development, supporting inbound and outbound licensing and communicating the IP business strategy.
Mr Clarke was previously director of IP strategy at Rambus. Before this, he held multiple technology and engineering management roles at Applied Materials, in addition to managing its corporate trade secret management initiative.
Mr Clarke obtained his physics degree from Dublin City University and his MBA from the University of California, Berkeley.
Scott Trask is Director of Intellectual Property at Newport Corporation in Irvine, CA since 2004. His work includes IP portfolio development, licensing, enforcement, mergers & acquisitions and IP landscape analysis.
Scott has his BA in Physics from Kenyon College, his BSME from Washington University in St. Louis, and his J.D. from Western State University College of Law. Prior to working in an intellectual property role, Scott worked for 20 years in design engineering, project engineering, and engineering management in the aerospace, marine, and photonics industries.
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.
At ZLTI, Ms. Sharp's duties include: negotiate and draft major contracts, oversee trademarks, work with outside counsel; assist with strategies on marketing initiatives and product enhancements. Write and Speak regularly on the subject of eDiscovery, records management and information governance.
Scott handles all facets of intellectual property litigation, including reviewing, investigating, and responding to assertions, developing litigation strategy, managing outside counsel, budgeting, and advising management. He has successfully devised and executed strategy involving acquisition of a patent and filing of a lawsuit against company that had sued Juniper, as well as negotiated favorable settlements of pending cases and numerous license agreements. Among his other achievements, Scott has also implemented billing guidelines for outside law firms, which provide for electronic submission and auditing of invoices, thereby improving law firm accountability and enhancing visibility and manageability of litigation costs. Recently, Scott assumed responsibility for patent portfolio and strategy.
Benjamin T. Horton manages complex litigation involving high tech patents. He has a degree in electrical engineering, and before law school he worked for technology companies in the automotive and semiconductor industries. He is a member of the Trial Bar for the Northern District of Illinois and litigates intellectual property cases in federal courts across the country. Mr. Horton also practices before the Patent Trial and Appeals Board, representing both petitioners and patent owners in inter partes review (IPR) and covered business method review (CBM) proceedings.
Mr. Horton speaks regularly on patent litigation and strategy and he is a frequent contributor to various IP publications. SuperLawyers, a Chicago Magazine publication, selected Mr. Horton for the 2012-2016 Illinois Rising Stars® lists, which feature top attorneys in intellectual property law. Mr. Horton has been selected as one of the"World’s Leading Patent Practitioners" in 2016 by IntellectualAsset Management (IAM) magazine. He was also selected as a 2015 and 2016 "Emerging Lawyer" in Emerging Lawyers Magazine as a top Illinois attorney under 40, and was profiled in the November 2016 issue. Mr. Horton has also been recognized by intellectual property publications such as InsideCounsel, Thomson Reuters, Intellectual Property Magazine, Law360, and IPPro.
David Rockower is the chief IP counsel at Pandora, the world’s largest streaming music service. He has over twenty years of Silicon Valley legal experience, previously in private practice, and in senior legal executive and leadership roles at Intel and Hewlett Packard.
Ivan Chaperot is Vice President of Intellectual Property (IP) Licensing and is responsible for leading Finjan’s IP licensing programs.
Mr. Chaperot’s expertise is the development and implementation of outbound patent licensing programs in the U.S. and in Europe and has lead over $100 million in IP Licensing program . Prior to joining Finjan, Ivan worked at Intel Corporation where he was responsible for strategic patent acquisitions and licensing transactions. Prior to Intel, Mr. Chaperot was a licensing executive at Intellectual Ventures, where he developed and led several IP monetization programs. Prior to Intellectual Ventures, Mr. Chaperot was at Alcatel Lucent where he was responsible for IP licensing negotiations and the development of a patent sales program. Ivan started his career at Thales in France, where he developed and managed IP portfolios relating to security and embedded electronics markets.
Mr. Chaperot is a member of the Licensing Executive Society (LES) and LES International. He has authored and lectured on financial valuation and licensing. Mr. Chaperot is a European Patent Attorney and a French Patent Attorney. He brings a wealth of IP asset management, patent sales, acquisitions and licensing experience to the Finjan team.
I am a seasoned litigator with transactional expertise and a business background. I manage bet-the-company litigations, coordinating all case strategies and overseeing all facets of litigation from risk assessment, counsel selection, budgeting and e-Discovery, to managing experts, briefings, depositions, hearings, trial and appeal. I work closely with all levels of management, including CEOs and boards of directors. I have managed all or parts of more than 25 patent litigations – all resolved in my clients’ favor. Winning verdicts were awarded on dispositive motion, at trial, and on appeal.
Technologies litigated include computer software, hardware, and electronics, as well as networks, robotics, power supplies, medical and mechanical devices, control systems and cell phones.
Additional areas of expertise: contracts and licensing, Open Source Software compliance, product and marketing compliance, patent claims drafting, post-grant reviews (reexaminations, IPR, CBM), creating patent acquisition and enforcement programs, trade dress, trade secrets, copyrights, unfair competition, F/RAND licensing, standard setting compliance, the Foreign Corrupt Practices Act, mergers and acquisitions IP due diligence, and government affairs for patent reform legislation.
Michael Sacksteder is Chair of the Patent Litigation Group at Fenwick & West – a team of more than 50 experienced litigators with diverse legal and technical backgrounds, all of whom focus on helping clients achieve their business goals. Michael’s practice focuses primarily on patent litigation and litigation involving other substantive areas of intellectual property law, including copyright, trade secret, trademark, and unfair competition.
Michael has served as trial counsel in a number of patent and other intellectual property trials in United States District Court and has engaged in successful appellate practice before the United States Court of Appeals for the Federal Circuit. He has substantial experience in all aspects of pretrial litigation, including claim construction in patent cases.
Michael’s experience encompasses a variety of technological fields, including computer graphics, mainframe software tools, wireless messaging systems, semiconductors, optical networks and nucleic acid microarrays. Michael is active in the San Francisco Bay Area Intellectual Property American Inn of Court and the American Intellectual Property Law Association.
Prior to attending law school, Michael worked as a broadcast journalist.
Rajiv Patel often serves in the role of defacto in-house patent counsel for many of these companies as he manages patent strategy, portfolio development, patent prosecution and patent pre-litigation counseling roles for them. He also has served as a temporary in-house patent counsel for six-months for a Fortune-500 electronics company managing large patent portfolio.
Rajiv has extensive patent dispute experience. He has led numerous ex parte and inter parte reexamination and inter parte review (IPR) proceedings (representing third-parties and patent owners) that have crossed over with district court patent litigation. Amongst his experiences has been defense of Amazon’s one-click patent in reexamination.
Rajiv was a former Adjunct Professor of Law at the University of California, Hastings College of the Law and is a program chair for Practising Law Institute patent programs such as Advanced Patent Prosecution Seminar and Post Grant Proceedings Seminar.
Rajiv has been recognized as a Northern California "Super Lawyer" in the area of Intellectual Property each year since 2006. In 2012, Intellectual Asset Management magazine named Mr. Patel to the IAM Patent 1000: The World’s Leading Patent Practitioners. In 2014, The Daily Journal named Rajiv as one of the "Top Intellectual Property Attorneys of 2014".
In his spare time Rajiv enjoys coaching his kids' soccer and baseball teams, family camping trips and following his favorite childhood sports teams – New York Giants, New York Mets, and the Rutgers Scarlet Knights as well as his kids' favorite teams – San Francisco Giants, San Jose Sharks and Golden State Warriors.
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.
Jefferey is a Business and Corporate Attorney with a proven record of success in online and digital media transactions, complex commercial agreements (US & International), intellectual property licensing (hardware and software), ecommerce sales and marketing agreements, strategic alliances and channel partner programs, product development, risk management, and litigation management. Jefferey has extensive negotiation experience including complex enterprise-wide transactions. Deliverable oriented. He is skilled at building business relationships and gaining trust of internal clients and business customers while maintaining adherence to high corporate legal standards. Jefferey has a strong ability to exercise business and legal judgment while working within a team environment and at all levels of management and key functions.
Specialties:Online and Digital Media Law; Internet Law; Technology Law; Business and Commercial Law; Cloud Computing; Intellectual Property Law; Hardware, Software & Patent Licensing; Corporate Law; Employment Law; Enterprise-wide Transactions.
David Gross is a trial lawyer. In 2013, David moved to California, passed the California Bar Exam, and helped the firm open its new Silicon Valley office.
In 2007, David's winning trial record led the American Lawyer to name him one of the top 50 litigators in the United States under the age of 45. In 2008, the National Law Journal recognized David's complete defense jury verdict in a patent infringement jury trial in Orange County, California, as one of the top 10 trial victories in the United States. The Minnesota Lawyer has thrice named David an "Attorney of the Year" based on trial victories in 2003, 2008 and 2011, and David is one of only a handful of lawyers who has been named to Minnesota Lawyer's "Circle of Excellence" based on his winning trial record. David has been recognized as a top IP trial lawyer by Best Lawyers in America, Benchmark Litigators, Chambers USA, IP Law & Business and Super Lawyers. He has also been named by Intellectual Asset Management (IAM) as one of the World's Leading Patent Litigators and one of the World's Leading Patent Practitioners.
Steven M. Haines is Deputy General Counsel at Seagate Technology in Cupertino, California, responsible for managing and directing Seagate’s litigation and arbitration matters, including patent, trade secret, copyright, trademark, licensing, contracts, insurance, trade and antitrust cases, class actions, and other business disputes in both the United States and foreign jurisdictions. Prior to joining Seagate in 2008, he was a partner at Morrison & Foerster LLP.
Brent Bersin is a Litigation & Dispute Services
Practice Leader in the Central Region of the
Forensic and Valuation Services practice of Grant
Thornton LLP. He is located in Houston, Texas.
Brent has 18 years of experience providing financial,
economic, valuation, damages quantification
consulting, and expert witness services to clients in
the context of intellectual property and commercial
disputes. His experience in intellectual property
matters includes market assessments, valuation,
licensing, and the calculation of lost profits and
Brent has been designated and testified as an expert at both trial and deposition in Federal Court, State Court, and Bankruptcy Court, as well as arbitration proceedings.
David Enzminger is managing partner of Winston & Strawn’s Silicon Valley office and is also resident in Los Angeles. Mr. Enzminger focuses his practice on technology litigation, emphasizing patent, trade secret, trademark, and antitrust matters.
Mr. Enzminger’s extensive experience handling complex patent and trade infringement cases in state and federal courts for clients in the telecommunications, computer hardware and software, and manufacturing industries earned him recognition among the Daily Journal's "Top 100 Lawyers in California" and as one of the “Top 75 California IP Litigators” in 2013.
He has a nuanced understanding of cutting-edge technologies, as well as a track record of success as a “superb first-chair trial lawyer” (IAM Patent 1000). Mr. Enzminger has participated in bench and jury trials, including serving as first chair in more than 15 matters. As lead trial counsel, his 2012 jury verdict for client Belkin was selected by the Daily Journal as a “Top Verdict” of 2012. This case involved technology related to wireless network technology and access point devices.
Additional clients include Motorola, International Game Technology, Google, Raytheon, Pepsi Cola Co., and Luxottica Corp.
Subroto Bose is IP Counsel at Altera Corporation, focusing on patent litigation and patent prosecution. In addition, he advises on patent issues in corporate transactions, open source issues, and issues related to standard setting organizations and standards essential patents. His prior experience includes working at a number of law firms, where he represented both plaintiffs and defendants before the International Trade Commission (ITC) and federal district courts.
Mr. Bose’s prior experience also includes developing and implementing IP strategies, developing and managing patent portfolios, analyzing large patent portfolios, and providing advice regarding monetization and intellectual property development strategies.
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.
Kirupa Pushparaj is head IP counsel for Square, Inc., where he manages Square's patent and trademark portfolio development, patent and trademark prosecution, patent litigation, and domain assets. Before joining Square, Kirupa was patent counsel for Amazon.com's Lab126 and was in private practice at Perkins Coie LLP before that. Kirupa is also an adjunct professor at the University of the Pacific and at Santa Clara University, where he teaches patent drafting and prosecution.
Dr. Conroy is currently Managing Counsel, Intellectual Property at Power Integrations, Inc. He is both a US patent attorney and a European Patent Attorney. He has worked for over 14 years in private practice and in-house both in the US and in Europe.
Malcolm Duncan is Director of IP at SRI International, the pioneering research institute that has spawned scores of Silicon Valley startups. The seed asset of each startup is a patent portfolio that begins with SRI’s fundamental research. It is then built to capitalize on applications of the technology to the marketplace.
Mr. Duncan brings a diverse expertise to SRI’s commercialization ventures. His background includes a career as a professor and researcher in particle physics, litigation practice on Wall Street, and IP practice in New York and Chicago law firms. He holds a bachelor’s degree in mathematical physics from Edinburgh, a doctorate in theoretical physics from Oxford, and a law degree from the University of Minnesota Law School.
Listed by Intellectual Asset Management Patent 1000 and in The Best Lawyers in America for patent law, Steve Bishop focuses his practice on the development and analysis of patent portfolios. For large-cap companies, Steve provides strategic advice on portfolio positioning and acquisitions. For start-ups and mid-cap companies, Steve assists clients in identifying, developing, and protecting key intellectual property assets in a manner consistent with the client’s business goals. Prior to Perkins Coie, Steve spent almost a decade in-house, including at Amazon.com where he led the group responsible for the creation and management of the worldwide IP portfolio, and at Teledesic, a next-generation satellite telecommunications company.
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
John is a member of the firm’s Intellectual Property section. He focuses his practice on patent licensing and counseling.
Before coming to Shook, John served as associate general counsel at Microsoft Corporation, where he led a team that analyzed patents for conflicts, outbound licensing, litigation support and risk mitigation. He also completed a two-year international assignment for Microsoft, handling intellectual property matters originating in Europe, the Middle East and Africa. In addition, John taught a class on intellectual property licensing at Seattle University School of Law as an adjunct professor from 2005 to 2011.
John graduated from the George Washington University Law School, where he worked as notes editor of The Journal of International Law and Economics and on the publication staff of AIPLA Quarterly Journal. He received his bachelor’s degree in mechanical engineering from Rice University, where he served as president of the Rice Engineering Association and the American Society of Mechanical Engineers, Rice Chapter. While in law school, John worked at the U.S. International Trade Commission as well as the U.S. Court of Claims for the Honorable Wilkes C. Robinson in Washington, D.C.
Glenn Westreich is a litigation partner in the firm's Silicon Valley office. He has more than 30 years of experience representing technology companies in trials in the federal and state courts and International Trade Commission.
Glenn has represented clients in litigation involving a broad range of issues, including patent, copyright and trademark infringement, trade secrets, bankruptcy, and general commercial litigation.