An ineffective Enforcement strategy means loss of value to your organization, while also encouraging potential and current infringers. On the other hand, a well-run Enforcement strategy sets clear boundaries with potential infringers and earns respect in your marketplace. IP Enforcement: NY explores, benchmarks and challenges the enforcement strategies that Operating Companies are implementing, how they can be improved and where current trends are heading. Most importantly, the conference looks at how these Enforcement strategies can fit into your organization’s goals and larger IP strategy.
KEY TOPICS DISCUSSED
Enforcing Early – A Patent Prosecution Strategy
To Litigate, To License Or To Use A Third Party
Preparing For Litigation
Going To Trial: Preparation, Management and Strategy
Infringer Defenses – What Strategies Will You Face?
Post-Grant Review, IPR, CBM And Your Infringement Claims
Utilizing The ITC In Your Enforcement Program
Portfolio Management And Your Enforcement 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
Co-managing partner Phil Colburn has transformed Cantor Colburn into one of the nation’s leading intellectual property law firms. Phil leads a team of more than 110 attorneys, patent agents, and technical advisors who are committed to helping clients optimize their IP assets through the timely delivery of top quality, cost-effective legal services.
His counsel to Fortune 50 multinationals, as well as smaller companies and universities, is informed both by unique technical insights gained from his years of professional experience as a design engineer and by strategic perspectives derived from more than 20 years’ practice as an IP attorney. Taking a proactive, results-driven approach allows him to help clients define their needs and implement strategies that achieve their objectives. A frequent speaker on IP issues, Phil is an Adjunct Professor of Patent Law at Western New England College School of Law.
David has over 15 years of broad experience in intellectual property issues including patent, trademark, trade secret and copyright - most recently as Chief IP Counsel for ATMI. His areas of expertise span IP portfolio management, open source software, standards, IP licensing and antitrust. He has practiced in the prosecution, transactional and litigation areas and has managed various teams of IP professionals. David earned his law degree from Pace University School of Law in 1994 and a Bachelor of Science in Electrical Engineering from Columbia University in 1988. Prior to joining ATMI, he was an IP Counsel and attorney for IBM Corporation in Yorktown, Somers and Fishkill, NY and an associate at Baker Botts (previously Brumbaugh, Graves, Donohue and Raymond) in New York City.
As Senior Patent Counsel and a member of the Corporate Development team for InterDigital Communications Inc., Andrew manages and negotiates transactions of intellectual property in connection with strategic M&A and partner development activity, including all aspects of patent acquisition due diligence, portfolio analysis, patent valuation and monetization, strategic portfolio management and licensing support. Prior to joining InterDigital, Andrew managed over 100 patent acquisitions and sales on behalf of clients, resulting in patent transactions in the tens-of-millions of dollars.
A registered patent attorney with a degree in electrical engineering, Andrew has specialized in the preparation and prosecution of U.S. and foreign patent applications and strategic development of internal and external patent portfolios with emphasis in e-commerce and Internet applications, business-method based methods and systems, computer science and software applications and electromechanical devices. During his time as an attorney in the Philadelphia office of Akin, Gump, Strauss, Hauer & Feld, LLP, Andrew conducted infringement and invalidity searches and analysis, including the preparation of opinions of counsel. Andrew also has significant experience in patent litigation and infringement analysis including claim construction analysis, briefing, invalidity searching, claim charting and discovery.
Andrew is a member of the Pennsylvania and New Jersey state bars and is admitted to practice before the United States Patent and Trademark Office.
Ian has over 25 years of experience spanning all areas of intellectual property practice. He is currently the IP Counsel for Nortek, Inc. a $2.8 billion global, diversified industrial company with a broad array of offerings which includes ventilation products such as range hoods and bathroom fans, security and audio/video solutions, heating and cooling products, air management systems, and ergonomic and productivity solutions. As the IP counsel with Nortek, Ian is responsible for all IP matters, for each of the business units including patents, trademarks, trade secrets and copyrights and all transactional matters. Ian is responsible for all IP litigation and has managed six suits in his first year with Nortek. Bringing three to a successful resolution for his clients. These cases include Federal District Court and ITC actions. In addition to managing all IP matters, Ian worked closely with the engineering teams to develop IP processes and strategies for the various product development projects within Nortek.
Prior to Ian's work at Nortek he was Counsel for IBM. He was one of the core members of the patent licensing and sales legal team responsible for generating IP income for IBM. In support of IBM's annual attainment of over $1B in IP income, this team focuses on the development and deployment of innovative patent monetization strategies, including managing creation and presentation of infringement and sales collateral.
Prior to moving to IBM, Ian was the Intellectual Property Counsel for UTC’s Research Center. Ian’s UTC responsibilities included the oversight of the IP law department for UTC’s Research and Development Center. While at UTC, Ian was instrumental in developing a process for the identification and protection of UTC’s cutting edge technology
Prior to his work with UTC Ian was an Assistant General Counsel with Honeywell where he was responsible for all Intellectual Property issues including Patent, Trademark, Copyright, Licensing, Transactional Matters, Advertising, Government Contracts and other legal services.
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
David Vickrey has more than thirty years of experience as an intellectual property attorney assisting international businesses develop and exploit their intellectual property rights, as well as resolve their intellectual property disputes. His work on patent, trademark, and trade secret matters has involved both large and small businesses, and products ranging from industrial chemicals and coatings to pharmaceuticals to retail consumer products. David has worked for AkzoNobel in both the US and the Netherlands. His various assignments have included, among others, global trademark responsibility and head of the American intellectual property group. Since 2013 he has focused on AkzoNobel’s intellectual property agreements and intellectual property disputes. Prior to joining AkzoNobel, he was an intellectual attorney for Exxon Production Research Company and was the first in-house Patent Counsel for Block Drug Company.
Mr. Wallach’s practice concentrates on litigating intellectual-property and related matters; it also includes opinions, licensing, procurement, and counseling on patent, copyright, trademark, trade-secret, and e-commerce issues. He has represented clients ranging from start-ups to multinational companies and universities in New York and federal courts, often in high-profile matters. Since drafting and litigating the patent at issue in State Street Bank v. Signature Financial, much of his practice has focused on computer systems, business methods, and software. His representations have also included closely watched litigations regarding patenting e-commerce systems and copyrighting graphical user interfaces. Mr. Wallach received his B.S.E.E., cum laude, with a concentration in Computer Science in 1983 from Polytechnic Institute of New York (now part of N.Y.U.). He received his J.D. from George Washington University in 1986. Mr. Wallach is a member of the Tau Beta Pi and Eta Kappa Nu honor societies. He is admitted to practice in numerous federal courts and the United States Patent and Trademark Office.
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.
Kirkland Douglass has been a practicing patent attorney for over a decade. Starting his career as an Associate at the IP law firm of Lerner David Littenberg Krumholz & Mentlik, he spent half a decade as the in-house IP Counsel for the Nuclear Medicine group of Siemens Medical Solutions. He is currently the Intellectual Property Counsel for Raritan Inc., a technology company focusing on data center support technology. His practice focuses on patent prosecution, patent threat evaluation, and ligation management. He graduated with a degree in Physics from Yale University and a J.D. from Franklin Pierce Law Center (now University of New Hampshire School of Law).
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.
Brian Foley is currently Vice President, General Counsel and a member of the Board of Directors of NeoStrata Company, Inc. NeoStrata, located in Princeton NJ, is a world leading innovator that develops and markets a comprehensive range of clinically-proven, dermatologist developed skin care products featuring unsurpassed technologies which include alpha and poly hydroxyacids and new amino acid sugars which can significantly improve the health and beauty of every skin type. NeoStrata was founded as a start-up company in 1988 by entrepreneurs Dr. Eugene Van Scott and Dr. Ruey Yu, world renowned leaders in dermatology and dermatopharmacology. The company was built on a proud medical heritage that includes decades of clinical research, an unprecedented amount of U.S. and foreign patents in the industry, and articles in major journals of dermatology. These advanced therapeutic and cosmetic dermatological products are available worldwide in over 80 countries through consumer outlets, physicians' offices and spas under the NeoStrata® and Exuviance® brand names. Mr. Foley is a 1984 cum laude graduate of New York Law School where he was a member of the law review, is currently a member of the bars of the states of New York, Connecticut, Florida, D.C. (inactive) and New Jersey (in-house counsel certification) and he has published scholarly articles in many legal papers and journals. Prior to joining NeoStrata, Mr. Foley was in private practice for 27 years, a partner in a New York based boutique law firm, a partner in New York based venture capital firms as well as an advisor to start-ups and emerging growth companies. The views expressed herein are those of Mr. Foley and not those of NeoStrata or any of its representatives.
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.
Registered patent attorney with over 11 years' experience representing clients as in house and outside counsel in patent litigation and with first chair experience during offensive and defensive patent licensing negotiations. Demonstrated ability to learn various technologies to support legal representations. Most recent experience covers semiconductor manufacturing, wireless networking, telecommunications, audio and video coding standards, and electrical engineering technologies.
William Coppola has over 20 years of experience representing numerous clients, including universities, regarding a wide spectrum of patent and intellectual property matters. Mr. Coppola presently is a Senior Patent Counsel at Sanofi in Bridgewater, NJ. His responsibilities at Sanofi have included securing and defending world-wide patent protection, performance of due diligence with respect to new technologies, licensing and negotiation of agreements, performance of competitive and freedom-to-operate analyses, and patent litigation in the US and globally. Mr. Coppola’s litigation responsibilities have included management of numerous Hatch-Waxman litigations, ITC litigation, and PMNOC litigation in Canada.
Mr. Coppola received his J.D. from Seton Hall University Law School in 1991, where he was a member of the Seton Hall Constitutional Law Journal. He received his graduate degree in Biochemistry from the University of South Florida in Tampa, Florida, and his undergraduate degree in Chemistry from the University of Delaware. He is a member of the Phi Kappa Phi Honor society, a registered patent attorney, and is admitted to practice law in New Jersey and Florida.
Eleanor Hynes Yost, a partner in Goodwin Procter’s Intellectual Property Litigation Group, focuses on protecting and enforcing intellectual property rights in state and federal courts, the U.S. International Trade Commission (ITC) and the United States Patent & Trademark Office (USPTO). She represents clients in a broad range of intellectual property matters, including patent and trademark prosecution, litigation, appeals, opinions, licensing and transactions.
Ms. Yost is a thought leader on the subject of USPTO Patent Trial and Appeal Board (PTAB) post grant proceedings, and has been featured in IPLaw360, AmLaw Daily, Corporate Counsel, The Recorder, Intellectual Property Magazine, Bloomberg BNA, Reuters’ IP Westlaw Journal, The Pink Sheet, Lawdragon and elsewhere. She is also the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners, and represents patent owners and petitioners in reexamination, IPR and CBM proceedings, and related appeals to the Federal Circuit.
In addition to her intellectual property practice, Ms. Yost is chair of Goodwin Procter’s Government Contracts & Disputes Practice, and an author of Government Contracts Compliance: Leading Lawyers on Understanding Enforcement Trends and Updating Compliance Programs. She assists clients navigating government contracts and procurement issues, particularly those involving the Federal Acquisition Regulations (FARs), Defense Federal Acquisition Regulations Supplement (DFARS) and the Bayh-Dole Act, among others. She counsels clients with respect to prime awards, grants (e.g., DARPA), subcontract arrangements, contract interpretation, performance, bid protests and potential claims.
Alexander Hadjis is the head of Cadwalader’s International Trade Commission (ITC) Patent Litigation Practice. Clients faced with high-stakes patent disputes before the federal district courts or the ITC rely on Alex’s experience, responsiveness, and winning track record. They appreciate his talent for explaining complicated technologies in a clear and compelling fashion in court and his ability to quickly master those technologies to position cases for success.
Alex is consistently recognized by notable independent commentators as a leading attorney in intellectual property law, including Chambers USA, Chambers Global, Legal 500, IAM Patent 1000, Super Lawyers, and The Washington Post. He is regularly asked to speak about intellectual property issues around the globe.
Alex focuses his practice on intellectual property litigation and cases involving the interface between intellectual property and antitrust law, including patent, antitrust, and breach of contract cases that cover the semiconductor, liquid crystal display, telecommunications, optical storage media, software, electronic systems, computer network, fluid dynamics and heat exchange, xerography, chemical, and automotive component fields. He has extensive experience litigating cases involving technology standards.
Dallas R. Martin is Senior Vice President and General Counsel at iRunway, Inc. Mr. Martin leads sales, client acquisition, and other corporate development initiatives in addition to providing legal direction for iRunway, a leading technology consulting and litigation support firm. An attorney with over 30 years of legal and business experience in IP management, licensing and commercialization, Mr. Martin has served as in-house counsel and led IP management programs for organizations ranging from high-tech start-ups to Fortune 500 companies.
Prior to joining iRunway, Mr. Martin was Vice President of Licensing at IPVALUE Management, Inc., where he led patent monetization activities that included litigation, licensing and patent sales programs. Prior to IPVALUE, he was Vice President and IP Counsel at Level 3 Communications, where he played a key role in creating and implementing a corporate-wide intellectual asset management program.
Mr. Martin was also Vice President, General Counsel and Secretary at SwitchPoint Networks, Inc., a venture-backed telecom equipment company, and held executive positions at First Data Corporation, US West Advanced Technologies, Inc. (now CenturyLink) and the National Renewable Energy Laboratory.
Mr. Martin was named to Intellectual Asset Magazine's "IP Strategy 300", a list of the worldÃs leading intellectual property strategists. He is a member of the Licensing Executives Society (past co-chair of the Colorado chapter), served on the national Board of Directors of the Technology Transfer Society, and was a past member of the University of Colorado Technology Transfer Office's Business Advisory Board. Mr. Martin is a frequent speaker on intellectual property management issues