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
Patent Prosecution: Producing Enforceable Patents
Preparing For Enforcement & Litigation
Going To Trial: Enforcement Focused Strategies
Surviving The Patent Killer: Navigating Post Issuance Proceedings
Managing Litigation Costs
How Will Infringers Defend Themselves?
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 IP Counsel Patent Counsel VP & Director of Intellectual Asset Management
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.
For almost 20 years, I have worked in all aspects of Intellectual Property and in a variety of industries including semiconductor processing, wireless technologies and devices, software, analog and digital electronics, Internet businesses, ecommerce, payments and microprocessors. My career includes extensive work in technology licensing, strategic acquisition, and internal portfolio building, including development and launch of the Kindle family of products at Amazon, development and management of the portfolio at Qualcomm, development and licensing of the Metamaterial (MTM) portfolio at Rayspan, and currently as Sr. Director of Patents at eBay, responsible for the patent portfolio, licensing, open source, standards participation, strategic acquisition and divestiture.
My academic credentials include a BS EE and MS EE from Drexel University and a JD from University of Texas at Austin. Prior to law school I worked as an electrical engineer at Motorola, during which I spent 3 years working as a product and field application engineer in Japan.
I currently live in San Jose, CA.
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.
Angie Augustus has been a patent counsel at Abbott Vascular since 2007. Her undergraduate and graduate studies in chemistry led to a career in patent prosecution in the polymeric and medical device industry. Prior to Abbott Vascular, she was in private practice, where she prosecuted patent applications in the chemical arts.
Brian Jones is the Senior Director of Strategic Patent Asset Development at Western Digital, a worldwide leader in the data storage technology area. Brian and his team are responsible for mining company inventions and obtaining strong patent protection for those of strategic business value. Prior to joining Western Digital, Brian practiced law at the firm of Irell & Manella, where he worked on multiple patent litigation matters, including three successful patent jury trials that were upheld on appeal at the Federal Circuit. He holds a bachelor’s degree in Electrical Engineering from BYU and a law degree from UC Berkeley Boalt Hall.
Areas of Practice: Patent, Trademark, and Copyright; Intellectual Property Litigation; International Patent Prosecution; IP Licensing and Contracts; Patentability, Infringement, Validity, and Freedom to Practice Opinions
1997: Registered to Practice Before the U.S. Patent and Trademark Office
1999: U.S. District Court, Northern District of Texas
2010: U.S. Court of Appeals, 5th Circuit
2011: U.S. Court of Appeals, Federal Circuit
Duke University, BSE, Mechanical Engineering and Materials Science, cum laude, 1992
The University of Texas School of Law, J.D., 1995
American Intellectual Property Law Association
Dallas Bar Association
Dallas Fort-Worth Intellectual Property Law Association
Texas Bar Association
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.
Larry Huston is Senior Counsel with Procter & Gamble, the largest consumer package goods company in the world. During his 27 years with Procter & Gamble Larry has successfully advised business clients on a wide range of intellectual property matters including patents from procurement to enforcement, trade secret, copyright, licensing and trade dress/trademark matters. Larry has worked for both current businesses and upstream engineering. Larry received his BS degree in Mechanical Engineering, his MS degree in Mechanical Engineering and his Juris Doctorate from the University of Toledo.
Gemma Suh is litigation counsel at Nokia, a global leader in the development and manufacture of handheld devices and mobile communications technologies. She addresses pre-litigation disputes and manages offensive and defensive U.S. litigation for Nokia’s technologies, HERE (mapping), and network infrastructure businesses in federal and state courts and before the International Trade Commission. Prior to joining Nokia, Gemma worked in the Silicon Valley office of Davis Polk & Wardwell.
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.
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.
Adam Sanderson is a trial attorney and former software engineer who represents owners, businesses, and entrepreneurs in a wide range of complex commercial lawsuits, especially cases involving software and other proprietary technologies. He is one of four partners at RGM LLP—a plaintiff’s litigation firm in Dallas, Texas that has an undeniable reputation from winning high-stakes jury trials, including a recent $130 million verdict against Mercedes Benz, a $5 million judgment against E.F. Johnson Company, among others. Adam’s current patent docket involves plaintiff cases pending in the Eastern District of Texas, the Northern District of Illinois, the District of Delaware, and an appeal before the Federal Circuit. Adam’s litigation skills and technical background, together, have helped him obtain favorable (and measurable) results for his clients, whether through licensing agreements or jury verdicts. Adam holds a Bachelor of Science degree in computer science, a law degree from the University of Pennsylvania, and is admitted to practice law in Texas.
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.
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.
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.
As an intellectual property lawyer who focuses on patent matters, Andrew enjoys working with large companies to help develop patent portfolios, as well as startup companies and individual inventors who have good ideas, but need a forward-thinking legal strategy that allows them to protect R&D investment and attract investors. He has successfully created IP protection strategies for several start-up companies that match the company’s growth goals and timing.
Andrew provides intellectual property counseling, analyzes patentability and clearance issues, and drafts and prosecutes patent applications. He also has extensive experience in both post grant proceedings (ex parte and inter partes) and patent appeals. His litigation experience includes developing infringement, validity, and enforceability positions, as well as preparing briefs and pleadings.
Andrew has technical experience in diverse electrical, electronic, and mechanical technology fields, including computer architecture, electronic control systems, medical devices, communications networks and protocols, power distribution systems, database management systems, operating systems, digital content encryption and distribution, and business methods.
Prior to practicing law, Andrew worked for Intel Corporation, where he focused on desktop computer architecture modeling and performance analysis. This experience has helped him in understanding technology issues, as well as day-to-day schedules of inventors and patent counsel, and what they want and need in intellectual property protection.
At Merchant & Gould, Andrew serves on the conflicts committee, and he does pro bono work for non-profit organizations, as well as for low-income inventors through the LegalCORPS Inventor Assistance Program. He runs, plays golf, and brews beer in his spare time.
Electrical & Software, Mechanical, Licensing, Post Grant Patent
Electronics, Internet, Computer Technology, Software & Information Technology, Business Methods, Semiconductors, Telecommunications
Carl is a former Administrative Law Judge with the U.S. International Trade Commission and has seen it all from the other side of the bench. With this unique perspective, Carl understands what is important to the out-gunned and out-manned trial judge tasked with deciding the winner in complex Section 337 proceedings. Having experienced first-hand the “ups and downs” of presiding over Section 337 investigations, Carl can share with you his insights on how to effectively, efficiently, and persuasively present your best case before the ITC.
Lyle cut his teeth representing small companies defending themselves against Fortune 500 corporations in “bet the company” type proceedings and learned early on how important it is to provide a strong, tireless defense in order for his clients to prevail. He still brings an impassioned tirelessness to all his clients’ cases - as if their problems were his own. And, he hates to lose.
Lyle is the managing partner of the firm’s Washington, D.C. office. He has an active practice in investigations before the U.S. International Trade Commission (ITC) and their parallel proceedings in Federal Court, covering alleged patent infringement, trademark infringement, copyright infringement, trade secret misappropriation and other alleged unfair practices in import trade. He served in the Office of General Counsel of the ITC from 1991 to 1996 and was detailed to the Office of Chairman Watson in 1994.
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.
Cynthia Murphy is Senior Vice President, IP Assets for the IP & Science business at Thomson Reuters. Her industry experience includes 20 years with Thomson Reuters in a variety of roles of increasing responsibility. Most recently, she headed up the Thomson Reuters intellectual asset management business; before that she was senior vice president of strategic marketing at Dialog. Prior to joining Dialog, Cynthia served as commercial director at Sweet & Maxwell, where she was accountable for all aspects of the launch and subsequent commercial success of Westlaw UK. Cynthia's career with Thomson Reuters began at West in the sales organization, after starting her professional career as a law librarian in Boston. She is a graduate of the University of Maine and earned her master's degree in library and information sciences from Simmons College in Boston.
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.
James Hannah is a patent litigator based in Silicon Valley. He tries cases for high-tech companies across the country.
Clients turn to Mr. Hannah for his ability to take extremely complicated technology and break it down in a simple and understandable manner. For plaintiffs, he has obtained hundreds of millions of dollars from judgments and settlements. For defendants, Mr. Hannah has obtained a variety of wins for his clients. These defensive victories include walk-away dismissals, jury verdicts of non-infringement and global settlements with no payment exchanged.
At trial, Mr. Hannah has received accolades for his court room performance. Clients, judges and opposing counsel have commended Mr. Hannah for delivering “effective” and “flawless” examinations of trial witnesses. As a result, he is often called upon to cross-examine industry-leading, seasoned expert witnesses in high-stakes litigations.
Martin is the General Counsel of the Action Sports division of BRG Sports, Inc. (“BRG”). BRG is a leading designer of sporting goods and protective equipment sold under the Bell, Riddell, Giro Blackburn and C Preme/Raskullz brands. Martin oversees all legal functions, including mergers & acquisitions, investments, litigation, and intellectual property procurement and enforcement, sponsorships, and licensing. Martin began his legal career at NASA Ames Research Center and most recently practiced in the San Francisco office of Keller and Heckman LLP. Martin is a registered patent attorney and is admitted to practice in California.
Charlotte Falla is the VP and General Counsel of Samsung Research America, which researches and develops the next generation of discovery in software, user experience and core technologies to enhance Samsung products and help enrich people's lives. Charlotte has more than 25 years of experience in technology, new media, and e-commerce. Prior to joining Samsung, Charlotte served as VP of Legal, General Counsel and Corporate Secretary for Shutterfly, Inc., a leading manufacturer and digital retailer of personalized products. Charlotte also served as General Counsel for Future U.S, Associate General Counsel for Netflix, Inc., and Senior Investment Manager for Intel Capital’s New Media Group.
Charlotte holds a BA from the University of Illinois, an MA from National-Louis University and a JD from Harvard Law School.
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.
Jason Beckerman is the Head of Legal Affairs and Business Development for TMZ, where he works alongside the hardest working and funniest group of people in the entertainment industry. Jason oversees production of TMZ’s television, web and mobile content, as well as its distribution to over 80 million people around the world each month.
Before joining TMZ, Jason was a partner and chair of litigation at Eisner & Frank (now Eisner Jaffe) in Beverly Hills, where his practice focused on entertainment-related intellectual property. He also served as a general litigation associate at SNR Denton in Los Angeles and Kirkland & Ellis in Washington, D.C. He earned his bachelor’s degree at the University of Connecticut and his J.D. at Loyola Law School in Los Angeles. He and his family live in Santa Monica, California
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.
Mr. Kuan focuses his practice on IP procurement and portfolio management for clients in the biotech, analytical instrumentation, software (with emphasis in bioinformatics), bioprocessing/biomanufacturing, nucleic acid sequencing, chemical, medical device, molecular diagnostics, nanotechnology, optics, and semiconductor industries. He has over 10 years of experience in IP strategy and management, preparation and prosecution (utility/design patents, trademarks, trade dress), counseling and litigation, licensing and technology transactions, freedom-to-operate clearances, monetization, M&A due diligence, risk recognition & mitigation, dispute resolution, and FDA regulatory counseling.