Intellectual property has now become one of an organization’s most valuable business assets – with heavy pressure for IP leaders to create strong ROI from patent portfolios. IP owners are also facing broader challenges such as new federal legislation, increased threats from NPEs, and educating and collaborating across their organization.
The IP Monetization: New York Summit 2014 brings together IP thought leaders from a wide range of industries to benchmark and develop successful monetization strategies for valuating, accounting for, and commercializing IP assets and deliver consistent and long-term revenues.
KEY TOPICS DISCUSSED
Due Diligence – The Building Blocks of Your Monetization Strategy
The New Monetization Landscape: Goodlatte and AIA So Far – What to Expect?
Running a Licensing Program – The Operating Company Perspective
Litigation & Monetization – Striking the Right Balance?
The Processes and Structures of a Monetization Program
To Sell, To License or To Enforce - Using The Best Tool to Harvest Your IP
The Human Factor – Building Your Team and Managing Your Leadership
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
Scott Culpepper uses his courtroom and scientific experience to provide intellectual property owners with representation grounded in a deep understanding of both advocacy and invention. Practical and persuasive, Mr. Culpepper has experience across the intellectual property litigation spectrum, including patent infringement litigation, copyright, trademark, and licensing disputes. Representing clients ranging from start-ups to the Fortune 50, Mr. Culpepper has appeared in courts across the country and his experience includes Section 337 trials before the International Trade Commission (ITC). In addition, he advises technology companies on critical legal, strategic and business planning issues.
A registered patent attorney with the U.S. Patent and Trademark Office, Mr. Culpepper holds a degree in aerospace engineering. He serves clients in that industry as well as those in the computer software, navigation, computer hardware, consumer products, and security industries.
Dr. Webb received her B.Sc. in Chemistry from the Hebrew University in Jerusalem, her Ph.D. in Chemistry from Columbia University in NY, and her post-doctoral training at Memorial Sloan-Kettering Cancer Center. She is currently Vice President, Intellectual Property at ARMGOâ„¢ Pharma, Inc, a privately held biopharmaceutical company dedicated to the discovery and development of novel small-molecule therapeutics to treat debilitating cardiac, musculoskeletal and neurological disorders. Prior to joining ARMGO, Dr. Webb was at Aton Pharma, Inc., where she was part of a team focused on the discovery of a novel class of histone deacetylase inhibitors leading to the oncology drug SAHA (Vorinostat). She is the recipient of many honors and awards including a Fulbright scholarship. She is also registered patent agent with over 15 years experience in intellectual property portfolio management.
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.
Alex’ twenty plus year career draws from a range of executive positions in industry and the intellectual property fields, These experiences focus upon key perspectives: strategic planning and implementation, corporate growth, IP management and evaluation, and a data-driven approach to high-stakes and recurring decisions. At Questel, the consulting and analytics practice serves corporate executives, counsel, and investors seeking improved IP strategies, decision processes, outcomes and value.
Alex holds an MBA in Executive Leadership & System Design from Villanova Universit and a BA of International Studies (Economics & SE Asia) from the American University.
Global head of intellectual property department responsible for patent, trademark and licensing strategy as well as related Litigation. Managing worldwide team of professionals. Support development corporate business and strategic development efforts. Responsible for
intellectual property strategy and business alignment, including patent trademark and licensing,
of Lonza IP for Lonza's Biologics businesses including cell therapy and antibody therapeutics. Participant on various business Managemnt teams.
Past experience as a partner in private practice, as USPTO examiner and registered patent attorney. Experienced intellectual property attorney, legal advisor, manager, leader, advocate, and negotiator. Experience advisor and business partner to biobiopharmaceutical companies. Broad and varied experience working with senior business, academic, and government officials on a extensive range of legal, and business issues including Domestic and international legal experience. Author and speaker on a broad range of professional topics including intellectual property and commercialization
Accomplished intellectual property attorney with legal experience in representing large and small corporations as well as research institutions in all areas of intellectual property law. Strategically developed and maintained comprehensive patent portfolios, handling all aspects of patent preparation and prosecution as well as enforcement and defense thereof. Broad technology transfer experience in the drafting and negotiating of licensing agreements, cooperative research agreements, material transfer agreements, and confidentiality agreements. Effective communicator with a strong scientific background who works creatively and collaboratively with stakeholders to achieve business objectives.
Over 15 years’ experience in private practice and in-house with all facets of IP law, including IP litigation, patent prosecution, trademark oppositions and prosecution, licensing, commercial contracts, open source, government affairs, and IP department management.
Currently serving as head of IP Law, Litigation, and Licensing for Avaya Inc., a global leader in telecommunications. Responsible for all aspects of Avaya's worldwide intellectual property legal operations, including patent procurement and portfolio management, intellectual property monetization, IP litigation, IP transactional matters, trademarks, open source, and management of both internal and external legal counsel performing such functions. Prior to joining Avaya, was an IP litigator with Goodwin Procter in New York and Boston, and before that was with an IP boutique, Weingarten, Schurgin, Gagnebin & Hayes in Boston, doing patent prosecution and litigation.
Specialties: IP litigation, licensing, IP monetization, patent portfolio generation & management, budget management, corporate IP management, and trademarks.
A seasoned forensic accountant, David Daly, a PwC Partner in New York, brings over 22 years of public and 4 years of private accounting experience to his clients. David is a
subject matter specialist in the PwC Licensing Management and Contract Compliance practice. Having worked in both the music industry and as a forensic accountant, David
has earned the respect of his clients and peers for his unique perspective and years of experience. David’s teams test to ensure that licensees have paid his clients the fees or
royalties due to them and determines licensees’ compliance with other financial or specific provisions of the relevant agreements. In addition, he renders expert witness testimony on
such topics as accounting and contract-related issues.
Over the years, David has successfully completed engagements for clients in many diverse industries, including publishing, entertainment, advertising, international business,
healthcare, real estate, insurance and construction. He contributes to the recorded music section of the PricewaterhouseCoopers Global Media and Entertainment Outlook, a
leading international financial forecast that contains the latest trends and market data for the E&M industry, and he contributed to the Intellectual Property Damages in the
Entertainment Industry chapter of the Litigation Services Handbook, The Role of the Financial Expert, Fourth Edition. His wealth of experience, forensic skills and passion
help Dave drive value for his clients.
David graduated from Villanova University with a bachelor of science in accountancy and he holds a New York State Certified Public Accountant license. He is certified in Financial
Forensics (“CFF”) by the American Institute of Certified Public Accountants (“AICPA”) and earned the Certified Fraud Examiner (“CFE”) designation from the Association of
Certified Fraud Examiners. David is a member of the AICPA and the New York State Society of Certified Public Accountants (“NYSSCPAs”), for which he sits on the
NYSSCPAs Professional Ethics Committee. In his scant spare time, David serves as coach for several of his four children’s sports teams, volunteers in his local community and shares
quality time with family and friends.
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
James Markarian is Senior Counsel and Licensing Manager for North America for Siemens Corporation. He manages Siemens' outbound licensing programs and IP sales; handles incoming licensing matters and IP acquisitions; and negotiates and drafts various transactional agreements (e.g., IP licenses, JV's, Software licenses, R&D's, Agent and Service, Asset Purchase or Sale, NDA's, etc.). James provides support for Siemens' M&A activities, advises Siemens' business units regarding IP asset management as well as IP issues related to standards organizations. He has an Aerospace Engineering degree from Boston University and a JD degree from Brooklyn Law School. Before joining Siemens, he worked for Refac Corporation, and the law firms of Pennie & Edmonds; Ladas & Parry; and, Wyatt, Gerber, Burke & Badie.
Intellectual Property Manager with broad-based technical background coupled with superior sales and negotiating experience. Excellent track record of scouting and developing suitable partners and closing deals. Managed multidisciplinary teams leading to the technology transfer of industry critical intellectual property. Extensive technical sales and product management background enabled and enhanced licensing successes. Served as senior lead in international efforts to commercialize and license technology products and portfolios.
Negotiated Intellectual Property (IP) licenses, agreements, and sales in a wide range of technologies. Total Net Present Value(NPV) of signed licenses exceed $100MM. Planned strategy for technology marketing and developed potential client lists.
John Paul, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP has more than 30 years of experience in intellectual property licensing, litigation, and prosecution. He currently focuses on strategic planning, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He chairs the firm’s IP management and transaction section. Mr. Paul has been a trustee, vice president, and counsel to the Licensing Executives Society U.S.A. and Canada.
Mr. Paul has analyzed numerous patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products. He has developed strategies and created databases to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, and generate revenue by monetizing those portfolios.
He has set up and directed licensing and enforcement programs that generated significant royalty revenue for leading technology companies, set up and conducted multiple-round private auctions to sell patent portfolios, led the negotiations for IP issues in business divestitures and other complex transactions, and led the IP due diligence and negotiations for strategic acquisitions of patent portfolios.
Clark leads the Patent Monetization and Licensing programs at Avaya with extensive experience in all aspects of patent licensing program development. At Avaya Clark runs portfolio evaluations, invalidity assessments, reverse engineering, patent sales, patent purchases, and patent broker evaluations and agreements.
Clark’s area of expertise also include state of the art telecommunications system design. Special expertise in Voice Over IP, Contact/Call centers, Wireless communications, network infrastructure, Unified Communications, Power over Ethernet and Cat 5/6/7 jack designs.
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.
At Harman International Industries, Ms. Harvey is responsible for developing and implementing the global intellectual property strategy at the company. This includes managing a team responsible for the patent and trademark portfolios and IP litigation, handling strategic IP enforcement, overseeing licensing, development, standards-setting, open source and technology transactions, managing IP due diligence on mergers and acquisitions, and providing overall intellectual property advice and counseling. Prior to Harman, she was at Netflix, eBay and Autodesk, where she worked on strategic licensing transactions, mergers and acquisitions, technology and product counseling, patents, trademarks and open source matters. She also worked at the law firms of Cooley Godward and Latham & Watkins on transactions, financings, corporate, SEC and FCC matters. Alyssa is on the Advisory Board for the Quello Center for Telecommunication Management and Law. She received her J.D. degree from Georgetown University Law Center, where she was a member of the Georgetown Law Journal and Book Reviews and Essays Editor. She received her undergraduate degree in Journalism and graduated from the Honors College at Michigan State University.
Catherine Toppin is Senior Patent Counsel and Manager with the Global Patent Operation (GPO) of General Electric. She manages a team of attorneys, patent agents, and paralegals within the GPO. Her substantive legal practice focuses primarily on the strategic development and procurement of electrical, mechanical and software patent portfolios. She was recently appointed as acting IP Counsel for a $2.7 B business within the Energy Management Division of GE.
Prior to GE, Catherine worked as an associate in the Intellectual Property department of Boston-based general practice firm, handling a mix of patent preparation, prosecution, due diligence and IP litigation support matters. She also has experience as a Patent Examiner with the United States Patent and Trademark Office. Catherine graduated with a BSE in electrical engineering from Princeton University, and earned her JD from the University of Maryland, Baltimore School of Law.
Outside of work, Catherine is an active Princeton alumna. She is president of the Association of Black Princeton Alumni, and also serves on a number of boards and committees including the Leadership Council for the School of Engineering and Applied Sciences, and the National Board of the Princeton Prize in Race Relations. She remains connected to her passion for classical music and giving back in part through her service on the Board of Directors of Project Step, a classical music education program for underrepresented students in the greater Boston area.