IP Enforcement 2014 Will Be Held in New York City! Stay tuned for the 2014 agenda, speaker and panel information.
2013 Conference Overview: 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: DC 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.
International Enforcement: Globalization & Your IP
Enforcement as a Monetization Strategy
Likely Defenses Faced When Enforcing Your IP
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
Bob Little brings a strong track record for leading marketing teams to capitalize on innovative applications of technology in life sciences, financial services, corporate governance and litigation. Prior to joining Innography, Bob was Vice President, Marketing at IntraLinks with responsibility for product messaging, go-to-market strategy and demand creation. He was previously Chief Marketing Officer at RenewData, VP of Marketing at ZANTAZ and also General Manager of the Compliance Product Business Unit for Documentum/EMC. Bob holds a BS in Pharmacy Science from Tennessee Technological University.
Carrie Powrie has 13 years of auditing experience and has specialized exclusively in intellectual property auditing for the last 9 years. She has worked with close to a hundred diverse licensors/licensees around the world – including N. America, Europe, Asia, and Oceania – to determine compliance with IP clauses in hundreds of different license agreements across all types of intellectual property; trademarks, patents, trade secrets and copyrights. Her vast experience includes risk assessment and candidate selection, audit engagement, and resolution support.
Carrie is a Certified Licensing Professional (CLP) and an active member of Licensing Executives Society (LES). She graduated with distinction from Embry-Riddle Aeronautical University with a M.S. in Technical Management and magna cum laude from Seattle Pacific University with a B.A. in Accounting.
Tim Bedard, a registered patent attorney, is currently the Director, Intellectual Property Center of Excellence for Johnson & Johnson’s Global Surgery Group of Operating Companies. In this role he is responsible for managing the patent portfolios of J&J’s Ethicon Surgical Care, Cordis, Biosurgery, Biosense Webster, Mentor and SterilMed franchises including developing processes and procedures for capturing and managing ideas and patents as well as outlicensing intellectual property. Prior to joining J&J, Tim was a patent litigator at K&L Gates LLP in Pittsburgh, PA where he litigated and tried patent cases related to ion implantation, breast implants and steel framing. Tim began his professional career as a naval officer serving 8 years in the navy flying the P-3 Orion aircraft and serving as an aide-de-camp to the Chairman of the Joint Chiefs of Staff. Tim holds a BS in Industrial Engineering from the University of Pittsburgh, a Juris Doctor from the Duquesne University School of Law and an MBA from the Yale University School of Management.
Jay Knobloch is Director of IP Licensing and Litigation at Trading Technologies International, Inc. (TT). In his current position, Mr. Knobloch has focused on building a licensing model that allows potential licensees to receive the benefits of a license without the costs of litigation and also current defendants exit litigation. In addition to licensing and litigation, Mr. Knobloch has substantial experience cultivating and protecting innovation on the front-end of the patent life-cycle.
Ahmad Nassar serves as the Vice President of Business and Legal Affairs for the NFL Players Association in Washington, D.C. In that role, Mr. Nassar manages various legal and business initiatives, including negotiating with the NFL and licensees such as Electronic Arts, NIKE, Topps, and others. Mr.
Nassar works with the players associations from the MLB, NBA, and NHL on legal issues of mutual importance, such as right of publicity cases nationwide. Prior to joining the NFLPA, Mr. Nassar worked at Patton Boggs and Latham & Watkins, where he counseled clients in a variety of practice areas, including white-collar criminal defense, intellectual property issues, internal corporate investigations, antitrust issues, and a wide variety of matters affecting labor unions.
Mr. Nassar received his JD from the University of Chicago School of Law, and graduated with a bachelor's degree in economics from the University of Michigan. He was a winner of the Thomas R. Mulroy Prize, the Angell Scholar Award and was the Ruth Wyatt Rosenson Scholar at the University of Chicago.
Immediately following his graduation from law school, he served as a law clerk to the Honorable Denise Page Hood, United States District Judge in the Eastern District of Michigan.
Bob works for TeleCommunication Systems, Inc. (TCS) in Annapolis MD as the Vice President Intellectual Asset Management, responsible for the strategic management and monetization of TCS’s IP portfolio. In this role Bob has the overall business responsibility for all IP activities including capture, management, monetization, and profit & loss. With over 200 US patents in the portfolio and over 350 pending, Bob’s group has the responsibility for strategically managing and leveraging the IP assets in pursuit of both core and non core business. Immediately prior to joining TCS, Bob worked for Northrop Grumman Corporation, Electronic Systems Sector from 2003-2011 as the Director of the Intellectual Property & Strategic Technology Agreements business unit. Prior to Northrop Bob was an Associate Vice President at the British Technology Group (BTG), a 50+ year old IP management group headquartered in London.
Bob has been active in the Licensing Executives Society (LES) since 1998 and is currently serving on the LES Board of Trustees and is also the Vice Chairman of the High Technology Sector.
Bob has spearheaded various types of business and technology transactions around the world involving IP, including patent sales, enforcement, licensing, the establishment of second-source suppliers, IP acquisition, Open Innovation, open source, etc. Bob received his Bachelor of Science in Electrical Engineering degree from Villanova University and his MBA from Drexel University’s LeBow College of Business.
Jeff Ronaldi has 25 years of experience managing and successfully growing technology-based businesses, including, ImageExpo, a division of SPX Corporation, a Fortune 500 company, that provided software to the publishing and transportation industries, Concentric Netorks, now XO Communications, and UUNET, now a major part of Verizon.
As Product Manager at UUNET he oversaw the explosive growth of an industry standard-setting product that continues to generate billion dollars in annual revenue. He was among UUNET’s first 50 employees. Jeff also served as CEO of Newsletters.com which was sold to Marketresearch.com.
As General Manager at ImageExpo Jeff oversaw a $60 million patent infringement verdict against Microsoft. He also participated on behalf of SSL Services in a $20 million verdict against Citrix, and helped to manage a $50 million verdict against Genzyme. At Turtle Bay, an IP licensing firm, Jeff was responsible for defining overall strategy and for managing the company's approximately $50 million investment.
Bill McInnis is the Licensing Manager within the Intellectual Property and Licensing Function of the Office of the General Counsel at Raytheon Company Global Headquarters. He has responsibility to provide value from Raytheon's Intellectual Property assets, including technology licensing, investigating infringement, asset sales and international offsets. He is a former Engineering and Program Manager within the Aerospace & Defense industry, with over 29 years at Raytheon. He holds a BS from University of Rochester, and an MBA from the University of Bridgeport.
Alexander I. Poltorak is the Founder and Chief Executive Officer of General Patent Corporation (GPC), an intellectual property (IP) management company focusing on patent licensing and enforcement, IP strategy and valuation. He is also a managing director of IP Holdings LLC, an IP-centric merchant banking organization. Alex Poltorak is a Certified Licensing Professional (CLP). He was named by IAM magazine among World’s Leading IP Strategists.
Dr. Poltorak has served as an assistant professor of biomathematics at the Neurology Dept. of Cornell University Medical College, as an assistant professor of physics at Touro College, as adjunct professor of law at The Globe Institute for Technology, and is a guest-lecturer at the Columbia University School of Business and School of Engineering.
Alexander Poltorak was profiled in New York Times feature article (Teresa Riordan, “Trying to Cash in on Patents,” June 10, 2002), in IP Investor cover story “He Wrote the Book,” Apr. 2007, and “General Patent Corporation: Marking 20 Years in IP Rights”. Dr. Poltorak has been interviewed on CNNfn, Tokyo TV, Fortunes SB, InstitutionalInvestor.com, WallStreetReporter.com, EE Times, CNBC, Bloomberg Radio and Bloomberg TV, and CCTV. Dr. Poltorak serves on the advisory board of Patent Strategy & Management. Dr. Poltorak served as an Adjunct Law Professor at the Globe Institute for Technology. Alex Poltorak is the Founder and President of non-for-profit American Innovators for Patent Reform (AIPR). He is a member of the Licensing Executives Society (LES), the Association of University Technology Managers (AUTM), Intellectual Property Owners Association (IPO), the New York Academy of Science, the American Association for the Advancement of Science, and the American Physical Society. He was a U.S. co-chairman for the Subcommittee on Information Exchange of the US-USSR Trade and Economic Counsel.
Mark received his B.S. in Microbiology from The Ohio State University and his J.D. from Franklin Pierce Law Center (now known as the University of New Hampshire School of Law). While at UNH School of Law, he served as Issue Editor of IDEA: The Journal of Law and Technology. He is
currently a member of the Bars of Massachusetts, New York and Wisconsin. He is licensed to practice before the Second Circuit Court of Appeals, the Court of Appeals for the Federal Circuit, the U.S. Court of Federal Claims, the U.S. Court of International Trade and the U.S. Supreme
Court. Mark is also registered to practice before the U.S. Patent and Trademark Office (Registration No. 35,068).
Mark is an active member of several professional organizations including the American Intellectual Property Law Association (AIPLA), Licensing Executives Society - USA & Canada (LES), Licensing
Executives Society - International (LESI), Association of University Technology Managers (AUTM), Algae Biomass Organization (ABO), American Society of Pharmacognosy (ASP) and American Association for the Advancement of Science (AAAS).
Darius Keyhani is a founder of the law firm of Meredith & Keyhani, PLLC and heads the patent and intellectual property litigation and licensing practice of the firm. Darius advises clients on all aspects of intellectual property law and has regularly achieved remarkable results in complex patent infringement and other intellectual property matters representing private and publicly held corporations as lead counsel in all phases of litigation from preliminary hearings through trial and settlement negotiations in federal courts throughout the United States. Among others, Darius is a graduate of New York University School of Law and the University of Rochester School of Medicine.
Aaron is the Vice President of IP Licensing for NXP Semiconductors. He heads the IP licensing team and is responsible for the value-creation from the NXP patent portfolio. His team generates value by leveraging IP through strategic IP sales, licensing, litigation, and creative alternative solutions.
Aaron has over fifteen years experience in IP. His previous responsibilities include managing NXPÃs patent creation activities, and senior IP associate positions with Time Warner Cable and Philips Electronics where he participated in all aspects of patent practice. Aaron holds a degree with dual concentrations in Chemistry and English from Brandeis University and a JD from Pace University School of Law. Aaron is registered to practice in NY and before the USPTO.
Jon is the Managing Director and Chief Legal Officer of Northwater Capital Management Inc., a leading asset management firm. Northwater's business is focused on: (i) managing venture capital funds investing in private companies with strong intellectual property, and (ii) managing balanced fund portfolios providing broad international market exposure based on a proprietary model. Jon is a member of the investment committee and is responsible for reviewing and approving all portfolio investments prior to investing. Jon is also a portfolio manager of all of Northwater's venture capital intellectual property-focused funds. Jon's responsibilities include not only traditional general counsel management of legal matters related to the firm but also the overall management of the firm's operations and development of firm strategy.
Jon is also the Managing Director of NW Patent Funding Corporation, an affiliate of Northwater Capital Management Inc. NW Patent Funding Corporation is a business that seeks to partner with patent owners to create new revenue sources through successful patent monetization programs. Such programs may include the implementation of licensing strategies, sales of patents and patent portfolios or providing financing for patent litigation to enforce patent rights against infringers. NW Patent Funding Corporation acts as an advisor to Northwater's IP Funds described above. NW Patent Funding was a key advisor in the i4i LP v Microsoft litigation.
Paul Michel was appointed to the United States Court of Appeals for the Federal Circuit in March of 1988. On December 25, 2004, he assumed the duties of Chief Judge. After his elevation to Chief Judge, he served as one of 27 judges on the Judicial Conference of the United States, the governing body of the Judicial Branch. In 2005 he was appointed by Chief Justice Rehnquist to also serve on the Judicial Conference’s seven-judge Executive Committee. On May 31, 2010, Chief Judge Michel stepped down from the bench after serving more than 22 years on the court. In his years on the bench Judge Michel judged thousands of appeals and wrote over 800 opinions, approximately one-third of which were in patent cases. Prior to his appointment to the bench, Judge Michel served in the executive and legislative branches for 22 years. Following graduation from Williams College in 1963 and the University of Virginia Law School in 1966, Michel served as Assistant District Attorney and then Deputy District Attorney for Investigations under Arlen Specter in Philadelphia; as Assistant Special Watergate Prosecutor in 1974-1975; from 1975 to 1976 he was an assistant counsel for the Senate Select Committee on Intelligence; from 1976-1978, he served as Deputy Chief of the Justice Department’s Public Integrity Section, where he directed the “Koreagate” investigation; in 1978 he was appointed as an Associate Deputy Attorney General; in 1980 he served as Acting Deputy Attorney General; and from 1981 until 1988, he served on Senator Arlen Specter’s staff, including as Counsel and Chief of Staff. Judge Michel has been named one of the 50 Most Influential People in the world in intellectual property by Managing Intellectual Property magazine. In 2008 Chief Judge Michel was awarded the first annual Lifetime Achievement Award by the Richard Linn American Inn of Court; the Sedona Conference Lifetime Achievement Award; the first “Outstanding Achievement in the Area of Intellectual Property Law” award given by the Philadelphia Intellectual Property Law Association; and the annual Judicial Honoree Award by the Bar Association of the District of Columbia. In 2010 he received the U.S. Patent and Trademark Offices’ Federico Award for “outstanding contribution to the Patent and Trademark Systems of the United States of America”; the North American Lifetime Achievement Award by Managing Intellectual Property Magazine; the Distinguished Intellectual Property Professional Award from the Intellectual Property Owners Education Foundation; the career achievement award of the American Intellectual Property Law Association (AIPLA); and was one of five global figures inducted into Intellectual Asset Management magazine’s Intellectual Property Hall of Fame. He has been a Member of Honor of FICPI since 2001. Since retiring from the court, Judge Michel continues to share knowledge gained during his 22 years on the court by speaking out on issues related to the courts and the patent system. He also provides mediation, arbitration, and case evaluation services to private clients. Judge Michel is also serving as an advisor to a number of organizations. In June 2010, Judge Michel was elected a member of the Board of Directors of the Intellectual Property Owners (IPO) Education Foundation and became a Distinguished Scholar in Residence there. He also serves as Special Advisor to the Patent Reform Task Force and the Council of the Section on Intellectual Property of the American Bar Association, and is a member of the AIPLA Committee on Public Appointments. Most recently he was invited to join the Advisory Committee of the World Intellectual Property Organization’s Networked Innovation project and the Advisory Committee of the Manufacturing Initiative of the U.S. Council on Competitiveness.
Jeff Ronaldi has 25 years of experience managing and successfully growing technology-based businesses, including, ImageExpo, a division of SPX Corpora
Laura brings high energy, personal commitment, and a wealth of experience to every project she tackles. Whether representing a high tech company in a patent infringement proceeding before the ITC, protecting a client’s trade secrets in an arbitration proceeding, or helping high school students develop the analytical skills and self-confidence to succeed in college, Laura brings passion and drive to her work.
With over 25 years of litigation and counseling experience, Laura takes a hands-on approach to litigation, while staying focused on the client’s ultimate goals and strategies. She is “held in excellent regard by her peers for antitrust, intellectual property and commercial litigation,” and is recognized as one of the top women intellectual property lawyers in Illinois.
Alan Cox participates in the Intellectual Property, Antitrust and Securities practices of NERA. He has extensive experience testifying in Federal court, state court, US and international arbitrations and utility commissions. In 1989, he received a Ph.D. in Economic Analysis and Policy from the Haas School of Business at the University of California at Berkeley where he specialized in industrial organization, antitrust and regulation. He also holds an M.A. in Economics from the University of British Columbia, specializing in natural resource economics, including energy which he received in 1978. His previous positions include Visiting Economist at M.I.T.’s Energy Laboratory.
In intellectual property matters, Dr. Cox has testified on a wide variety of patent issues in the semiconductor, biotechnology, telecommunications, consumer product and other industries. He has also testified on trademark, copyright and trade secret matters. For example, he testified in Delaware District Court in a matter involving alleged theft of trade secrets and false advertising in the manufacture and sale of golf balls. He was retained by Texas Instruments in a New Jersey patent case which resulted in a jury award of $112 million to Texas Instruments. He has also testified in matters related to standards and patent pools.
Antitrust issues on which he has testified include allegations of price fixing of semiconductors and professional services, price manipulation in natural gas markets, attempts to monopolize in the credit card and other industries, Robinson-Patman matters, the competitiveness of crude oil and product pipeline services, allegations of anti-competitive licensing, and the competitive consequences of a major electric utility merger. He has examined and provided economic advice on a wide array of competition issues including vertical restraints in gasoline retailing, allegations of crude oil price fixing, the competitive consequences of mergers in several industries, and the economic costs of restraints imposed on a "dominant" telecommunications carrier. He has been included in the Who’s Who of Competition Lawyers and Economists by the Global Competition Review.
In Securities matters, he has testified in class action fraud cases, including on materiality, causation and damages in Section 10 and 11 matters. His testimony has also included the valuation of restricted stocks, options, bonds, preferred shares in venture-capital backed firms, goodwill and the appropriate valuation of physical assets. He has also testified on unjust enrichment from alleged insider trading. He has calculated harm due to alleged inappropriate investments, backdating, breach of contract, and banking practices.
Brian Weber is currently in his 21styear with the United States Patent and Trademark Office. He is a Senior Staff Attorney with primary responsibilities in the areas of training, quality control of substantive and procedural trademark examination, and identification and classification issues.
After five years as a Trademark Examining Attorney, Brian became a Staff Attorney in the Office of the Commissioner for Trademarks in 1997. In this capacity, he redesigned the USPTOÃs newly-hired Examining Attorney training program into the comprehensive six week course that is still in use today. Brian was also the head of a U.S. delegation to Geneva, Switzerland, for meetings of the Nice classification working group of the World Intellectual Property Organization (WIPO). He later represented the USPTO and WIPO at a series of meetings of independent Caribbean countries in St. Lucia, which focused on development of consistent trademark examination practices. Brian is a frequent speaker and panelist at CLE events and various attorney conferences around the country. Brian has also served as a USPTO host presenter and guide to visiting representatives from trademark offices of other countries.
Brian was a law office senior attorney at the USPTO, and managed the transition of the USPTOÃs Office of Quality Review & Training into its current form, which now includes a detailed review and rating of all aspects of Examining Attorney decision making, evidence gathering, and letter writing.
Brian is an Iowa native. He was a journalism major at Drake University, and received his J.D. from the University of Iowa College of Law in 1991.
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
Kimberly Chotkowski is a licensing executive with ATLC, Inc, a firm that specialises in assisting clients in maximising their financial return on research and development via licensing their patented technology. Ms Chotkowski’s experience provides significant global IP licensing knowledge complementing ATLC’s first-class team, which has negotiated with more than 70 companies worldwide, obtaining licences worth approximately $2 billion on behalf of its clients.
Ms Chotkowski supports her clients’ licensing efforts in a broad range of technologies in the high-tech world, including semiconductor processing and circuits, digital cameras, cell phones, optical storage, wired and wireless communications, internet applications, chemical arts, telecommunications and television, and automotive and bioelectrical/biomechanical arenas. Ms Chotkowski also supports certain of her clients by serving as outside general counsel, advising on a variety of legal matters related to business, employment, real estate, tax and investor relations.
Ms Chotkowski also offers strategic IP portfolio management. By tailoring her proactive IP management approach to each individual client’s business and technical goals, she develops cost-effective, value-generating portfolios that assist clients by protecting core technology, licensing and patent brokering. Ms Chotkowski has managed and served as an expert witness in various patent litigations.
Jay Reiziss is an international trade attorney with an active practice in investigations before the U.S. International Trade Commission (ITC), U.S. Department of Commerce, United States Trade Representative (USTR) and Customs, and in U.S. Federal Courts. His practice and experience includes Section 337 intellectual property investigations and extends to antidumping and countervailing investigations, and Section 201 and 421 safeguards investigations. From 1995 to 2007, Mr. Reiziss worked at the ITC, serving in the Office of General Counsel, the Office of Chairman Stephen Koplan, and the Office of Unfair Import Investigations. As an attorney with the ITC, Mr. Reiziss was involved in more than 50 Section 337 investigations involving patents, trademarks and trade secrets in the areas of biotechnology, chemistry, computer hardware and software, and mechanical devices. His experience includes all aspects of litigation before ITC Administrative Law Judges (ALJs), advising ITC Commissioners, and briefing and arguing matters before the U.S. Court of Appeals for the Federal Circuit.
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.