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 market place. IP Enforcement: Silicon Valley 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
Steven, a partner in the Silicon Valley office, is a trial lawyer and litigator who focuses his practice on intellectual property litigation and counseling. He has litigated patent cases before the Northern District of California, the International Trade Commission, and the Eastern District of Texas, among others. His cases have concerned semiconductors, semiconductor manufacturing, power electronics, software, wired and Wi-Fi networking devices, and semiconductor memory technologies, among other products and processes.
Steven also has significant experience in intellectual property licensing, having negotiated patent and intellectual property licenses with major international corporations, including prominent companies in Japan, Korea, Taiwan and Europe. The licenses he has negotiated have generated hundreds of millions of dollars in revenue.
In addition to patent litigation and licensing, he has several years' experience in prosecuting patents and managing large patent portfolios. As in-house counsel for a major semiconductor company, he oversaw the doubling of its patent portfolio in a two-year time span.
Steven's understanding of technology, patents and patent law enables him to work with his clients to provide creative litigation strategies. In several matters, he has worked with engineers to create "design around" options before and during litigation, effectively eliminating potential liability.
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.
Paul Simboli has over twenty years of experience as a chemical/biotechnology patent attorney in industry and private practice. Paul began his career as a chemist for the United States Army, stationed at Letterman Army Institute of Research (“LAIR”) in San Francisco, and after his military tour, joined Chiron Corporation. While at Chiron, Paul transitioned from Supervising a laboratory focused on biotechnology diagnostics, to a newly formed Intellectual Property group under Robert P. Blackburn, formerly with Morrison & Foerster. While working as a Patent Agent at Chiron, Paul attended law school in the evenings at Golden Gate University. After spending more than 11 years with Chiron, he moved into private practice for several years and worked for two law firms, both of which were formed by Partners at Merchant & Gould in Minneapolis. Paul reentered industry in 2000, and subsequently worked for ALZA/Johnson & Johnson, and the start-up biotechnology company, Five Prime Therapeutics, before joining Depomed in 2007. While at Depomed, Paul has been responsible for more than 20 litigations, ANDA and direct infringement, new product/venture acquisition diligences, and developing and implementing an IP strategy to protect Depomed’s core technology, as well as increasing value from the company’s Intellectual Property assets.
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.
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.
Mary Fuller is Chief IP Counsel at Maxim Integrated Products, Inc., where she is responsible for developing and implementing Maxim’s strategy to protect, enhance, defend and capture the value of its intellectual property. As Maxim’s Chief IP Counsel, Mary’s responsibilities extend to all facets of intellectual property including all patent, copyright, trademark and IP Litigation strategy, as well as IP development, prosecution, disputes, licensing, acquisitions, policy, and standards-related matters. Prior to Maxim, Mary worked at Marvell Semiconductor, Inc., where she was Director of Litigation, and before that at Bingham McCutchen LLP, and Pennie and Edmonds, LLP, where she worked on issues ranging from patent prosecution to patent litigation. Mary has an AAS in Electronic Technology, a BSEE from Northern Arizona University, and received a J.D., with honors, from the University of Notre Dame, School of Law.
Li Westerlund has about 15 years’ experience in the sector of intellectual property law, with particular focus on patent law. Li currently serves as Vice President, Global Intellectual Property (IP) at Bavarian Nordic Group. Before joining Bavarian Nordic in 2004, she served for more than three years as Senior Associate at the Swedish law firm, RydinCarlsten and as European Legal Specialist at the U.S. law firm, McKenna Long & Aldridge, L.L.P. Prior to these positions, she worked as a legal intern at the Court of Appeals for the Federal Circuit (CAFC) for its current chief judge. In 2004, Li was appointed Professor of Law at Linkoping University in Sweden. Preceding these positions, she worked as a legal research assistant and as a regular lecturer at Stockholm University and at the Karolinska Institute. From 2005 to 2007 she served on the Board of Directors for ZACCO A/S – Patents – Trademarks – Design (Denmark, Sweden, Norway). From 2005 and presently she serves on the Board of Directors for mNemoscience GmbH. Specialties:- Managing Intellectual Property Rights and Patent Departments. - Litigation in the intellectual property field. - Company strategies with respect to intellectual property. - Coordinating litigation, patent prosecution, and overall patent portfolio and freedom to operate in the patent field under European and U.S. law. - Life Sciences law, including licensing, regulatory matters, and dispute resolution solutions.
Wayne Stacy is a partner in Cooley's Litigation department and a member of the Intellectual Property Litigation practice group. He is consistently ranked by Chambers USA and Intellectual Asset Manager (IAM) as one of the top patent litigators in the United States — with Chambers referring to him as "a renowned patent litigator" and IAM highlighting his specialty in competitor-versus-competitor litgations. He is also an adjunct professor at both the University of Colorado School of Law and the University of Denver School of Law where he has taught patent law and patent litigation classes for over a decade. Recently, Mr. Stacy co-developed a first-of-its-kind class for the University of Denver focused on Patent Office Litigation and the new inter partes review process.
Mr. Stacy has tried patent cases totaling over a half-billion dollars in value to verdict. And he frequently handles cases where injunctions are the primary remedy. Understanding that not all cases should go to a jury, he has also resolved scores of other cases prior to trial. This case-by-case approach to resolving patent disputes has generated strong client praise — with one General Counsel praising Mr. Stacy in an interview with the Daily Journal as "fabulous in his ability to think outside of the box and be creative with IP litigation."
Although he has experience with all types of patent cases, he specializes in competitor-against-competitor cases where injunctions and large damages are at issue. Notably, Mr. Stacy has extensive experience on both sides of these company-critical litigations. He has helped patent holders protect their market share from upstart competitors, and he has defended companies attacked by their patent-wielding competitors.
Leveraging his computer engineering background, Mr. Stacy focuses on litigating electronics and software cases. He has recently handled cases involving security software, telecommunications systems, LCDs, semiconductor and high-power lasers, microprocessors, thin films, optical communication components, and cloud software.
Mr. Stacy's business-minded approach to patent litigation has resulted in invitations to speak to business groups around the world — from Taipei to Tel Aviv — about the practical realities of U.S. patent litigation. He is also a frequent presenter at programs designed to teach other lawyers about cutting-edge patent topics. Mr. Stacy has published numerous articles, served as the editor for the Intellectual Property column of the Colorado Lawyer, and, for the last decade, has been an organizer for one of the country's largest patent legal education events, the Rocky Mountain Intellectual Property Institute.
Mr. Stacy received his law degree, with high honors, from The George Washington University. While at George Washington, he served on Law Review and was elected to the Order of the Coif. He also served as an extern for the Honorable Judge Rader of the United States Court of Appeals for the Federal Circuit. Mr. Stacy received his BS degree, cum laude, in Computer Engineering from Southern Methodist University.
Sam Miller, a shareholder in the Firm's Nashville office and Co-Chair of the Firm's Intellectual Property Litigation Sub-Group, advises, protects and defends businesses and individuals involved in intellectual property and technology transactions and disputes. Mr. Miller has counseled a wide range of clients from individuals to small businesses to Fortune 500 companies in copyright, trademark, trade dress, patent, right of publicity, false advertising, internet defamation and other technology-related matters. Using his understanding of the business aspects of intellectual property gained through litigating intellectual property cases for nearly a decade, Mr. Miller assists clients in finding ways to monetize their intellectual property assets through establishing licensing revenues, sales, conversions to capital, spin-offs and litigation. Mr. Miller also is a Rule 31 Listed Mediator in the field of General Civil Mediation.
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.
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.
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.
Lissi Mojica is a member of Dentons' Intellectual Property and Technology practice and is a globally recognized leader in reexamination procedures. Her practice focuses on all aspects of preparing, analyzing and prosecuting post-grant proceedings, including inter partes review (IPR) and covered business method (CBM) proceedings. Her practice also focuses on appeals to the Patent Trial and Appeal Board, reissue petitions, patent quality and patent examination matters.
Previously, Lissi served as a director at the United States Patent and Trademark Office (USPTO), where she started the Central Reexam Unit (CRU). During her tenure, she oversaw policies, standards and procedures and developed inter partes and ex parte reexamination training for CRU examiners.
Before joining Dentons, Lissi worked at Novak Druce + Quigg LLP and at Schwegman, Lundberg and Woessner, P.A., where she drafted, prosecuted and supervised post-grant proceedings.
Rob Kramer is the Co-Chair of Dentons' Patent Litigation Practice and a partner in the firm's Intellectual Property Group. Based in Silicon Valley and San Francisco, Rob is one of the most experienced and successful lead trial counsel patent litigators in the country. He and his team are consistently honored as among the most aggressive, results oriented, patent litigation practices. Rob was named a "Legal Lion" by IP Law360 in January 2017 for his lead trial counsel role winning two back-to-back patent jury trials in one of the largest patent cases in the country. Rob and his team at Dentons were also recently named as an elite "IP Litigation Powerhouse" that corporate counsel "turn to for their most pressing needs" in BTI Consulting Group's national survey of General Counsel. He and his team were also recently named as a "Top 50 Litigation Powerhouse Firm" by Law360, and recently named as one of the "Fearsome Foursome," by BTI Consulting, an honor bestowed upon four elite firms that General Counsel or large companies fear most to litigate against "based on the team's intense approach, fierce tactics and achievement of successful litigation outcomes." Rob and his team were recently featured in IP Law360 as the "best of the best" at providing the most value per legal dollars spent by in house counsel on litigation. Rob was invited to be a speaker at this conference as he has a long history of promoting women litigators into leadership roles, mentoring and creating opportunities for women attorneys, and ensuring that they gain courtroom experience and hold leading and meaningful roles on important IP litigations.
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.
Michael Moore joined Rambus in 2011, and holds the position of Deputy General Counsel, Intellectual Property. Mr. Moore is a seasoned IP attorney with a decade of patent law and intellectual property experience, building on a solid technology foundation of digital logic design and software engineering.
Mr. Moore leads the Intellectual Property Development group and is responsible for developing complex IP portfolios for monetization and licensing, both in the US and globally. Mr. Moore is involved with diligence of acquisitions and divestitures, and inbound and outbound licensing supporting product development. Prior to this role, he served as IP Counsel at Symantec managing a substantial global patent portfolio in the enterprise storage space, and he also worked in the in-house patent team at Cypress Semiconductor supporting memory and interface product development. Mr. Moore started his attorney career as an associate at the law firm of Morgan, Lewis and Bockius involved in patent prosecution and trade secret litigation.
Mr. Moore holds 10 US issued patents from his engineering work, and numerous technology article publications in electronic engineering trade journals. He holds a JD and MBA from Santa Clara University, and BSEE (B.Eng) from the University of Limerick, Ireland.
Robert P. Andris is a partner in the Firm’s Redwood City office. Mr. Andris’ practice focuses on the litigation and trial of intellectual property disputes arising in the areas of patent, trademark, copyright, trade secrets, product liability and license agreements. He holds the Preeminent rating from Martindale-Hubbell and was named by Northern California Super Lawyers® magazine in the area of Intellectual Property.
Mr. Andris is a Registered Patent Attorney with extensive experience in every aspect of the litigation and trial of patent matters. His clients span a wide array of industries, including the manufacturers of particle detectors, blade servers, toy helicopters, electric motors, computer cooling systems, microchips, end mills, money clips, cryogenic container marking systems and building support systems. He has been lead counsel in infringement and invalidity jury trials and at numerous Markman hearings, and has handled patent suits in all of the district courts in California and in Arizona, Colorado, Ohio, New York, Massachusetts, Pennsylvania, Texas and Wyoming.
Charles (Charlie) McMahon focuses his practice on patent, trademark, copyright and unfair competition law. Charlie has represented domestic and multinational clients in federal courts and before the US Patent and Trademark Office, the US Patent Trial and Appeal Board (PTAB), the International Trade Commission (ITC), the US Court of Appeals for the Federal Circuit and the US Supreme Court.
In the last four years, Charlie has tried four patent infringement cases, including two district court jury trials and two ITC Section 337 investigations. He has also argued before the PTAB in an inter partes review proceeding.
Because litigation is just one of many tools for achieving business objectives, Charlie also counsels clients on licensing and litigation avoidance. Collectively, he has advised clients on worldwide IP licensing and settlement deals valued in excess of sixty million dollars.
Charlie is a registered patent attorney with a bachelor’s degree in electrical engineering and experience helping client apply for and obtain patents in the United States and abroad. Charlie is experienced in a variety of technical areas, including wireless communications, solid-state electronics, encryption systems, vehicular transmission systems, digital imaging systems, electronic measurement devices, lithium batteries, software applications and online business-to-business exchange systems.
Recognizing the importance of local pro bono efforts, Charlie is an active supporter of the Cabrini Green Legal Aid (CGLA) clinic in Chicago. Charlie serves on CGLA’s Advisory Board and contributes his time to serve CGLA clients.
John practices in the areas of intellectual property and commercial litigation. He has
extensive experience in all aspects of litigation, including discovery, law and motion, claim construction and trial. John was recently selected as one of the Top Intellectual Property Litigators in California by the Daily Journal.
John's primary emphasis is on patent infringement litigation. He has served as lead counsel in numerous patent infringement lawsuits involving computer software and hardware, graphical user interfaces, 3-D graphics, semiconductors, operating systems, wireless and
wired networks, optoelectronic transceivers, educational toys and medical imaging
technology. John has also litigated copyright, trademark and trade secret disputes, as well as software licenses and development agreements.