CLE credits: application for New York accreditation is currently pending.
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 2015 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 in order to deliver consistent and long-term revenues.
KEY TOPICS DISCUSSED
Patent Prosecution & Monetization – Ensuring a Future Revenue Stream
IP Valuation – What is Your Portfolio Worth?
Monetization for Operating Companies in a Post AIA World
Running a Licensing Program – The Operating Company Perspective
Enforcement & Monetization – Paper Tigers Beware!
Portfolio Evaluation & Management: Starting Your Monetization Journey at the End
Chief IP Counsel
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
Intellectual Property, Trademark and Copyright Counsel
Head of Litigation
Director of Business and Legal Affairs
Director/VP of Intellectual Property
Director/VP of Licensing
VP & Director of Intellectual Asset Management
Co-managing partner Phil Colburn has transformed Cantor Colburn into one of the nation’s leading intellectual property law firms. Phil leads a team of more than 110 attorneys, patent agents, and technical advisors who are committed to helping clients optimize their IP assets through the timely delivery of top quality, cost-effective legal services.
His counsel to Fortune 50 multinationals, as well as smaller companies and universities, is informed both by unique technical insights gained from his years of professional experience as a design engineer and by strategic perspectives derived from more than 20 years’ practice as an IP attorney. Taking a proactive, results-driven approach allows him to help clients define their needs and implement strategies that achieve their objectives. A frequent speaker on IP issues, Phil is an Adjunct Professor of Patent Law at Western New England College School of Law.
Mr. Sarbakhsh is a lead IP attorney with IBM, specializing in managing, preparing, and prosecuting software-related patent applications. He leads two teams of attorneys at the IBM Patent Center, including the Watson Focus Group, a 20+ member team responsible for developing IP assets for IBM Watson, one of IBM's corporate divisions. Mr. Sarbakhsh is an active board member on the Invention Development Team for IBM Smarter Planet, where he evaluates, and assists in developing, invention disclosures covering a wide range of technologies, determines their monetization potentials, and patentability. Prior to joining IBM in 2012, Mr. Sarbakhsh practiced complex commercial litigation with a boutique firm, where he was a member of a team that secured a judgment in excess of $130 mm for a client in multiple international litigations involving claims of breach of contract and fraudulent transfers of assets.
Recognized as a leading expert in the field of intellectual property, Dr. Janice M.K. Jaferian has garnered a reputation for success in global profit-and-loss management, intellectual asset management, international business, marketing and product development. Backed by over two decades of industry experience, Dr. Jaferian now lends her talents to Manitowoc Foodservice. There, she works to achieve revenue, profit and marketing share growth, all the while leading highly productive, cross-functional teams in a wide variety of industries including petrochemicals, telecommunications, business and consumer electronics, and food service equipment. She is directly responsible for overseeing the strategic management of intellectual assets and aligning technical, business and intellectual property strategies. Dr. Jaferian utilizes her expertise to create patent portfolios, handle open innovation management, assess third-party inventions, provide litigation support, and mange external counsel for patent prosecution and annuities.
Bob is responsible for all aspects of intellectual property with Unisys. This includes world-wide IP creation, management, assertion, litigation and licensing in support of Unisys’ commercial, public-sector and R&D activities. Unisys, a worldwide IT corporation with over 22,000 employees, designs, builds, and manages mission-critical solutions, software and information systems for both business and government environments.
Bob’s legal career began as an associate at Fish & Neave in New York City. Before joining Unisys in 2007, Bob held positions as a Senior Licensing & Assertion Attorney with AT&T Bell Laboratories and Managing IP Counsel for Motorola’s Broadband Technology Division.
Prior to obtaining a law degree, Bob was a semiconductor research engineer with Siemens Electronics, primarily focusing on Si and GaAs high-frequency device development and fabrication.
Alfred Fabricant (Fred) brings more than 30 years of litigation experience to Brown Rudnick, where he heads the intellectual property litigation practice in the United States. Fred is an experienced first chair trial lawyer and focuses his practice on patent, copyright, trademark, unfair competition, entertainment, antitrust, and other commercial litigation matters. He has successfully handled dozens of high-stakes patent litigation cases and resolved disputes across the gamut of contentious IP issues including copyright and trademark infringement, trade secret and unfair competition disputes. According to The World's Leading Patent Practitioners 2013 & 2014 published by iam 1000, "clients say they cannot imagine working with anyone better, hailing [Fabricant's] outstanding skills of presentation and persuasion in the courtroom."
Maharaj Mukherjee has a PhD in Computer and Systems Engineering from the Rensselaer Polytechnic Institute and a B-Tech in Electrical Engineering from the Indian Institute of Technology at Kharagpur. He has been working for IBM Research for seventeen years. Before that he served as a faculty at the Electrical and Electronics Communication Engineering at the Indian Institute of Technology at Kharagpur. Currently he works at the IBM's corporate IP team leading the Bigdata and Analytics project. He is also the chair of IBM's Smarter Planet Invention Development Team. He is also a member of IBM's Academy of Technology. His main areas of interest include: Geometric Algorithms and its applications within the fields of Big data and Analytics, Smarter Planet and Internet of Everything, CAD/CAM/CAE, and Electronic Design Automation. He has been twice selected as a Master Inventor at the IBM and is also inducted at the IBM's Inventor Wall of Fame at the IBM East Fishkill site in New York. He holds 44 US patent and 40 patents in other countries including, Germany, UK, France, Italy, China, Korea, Japan and Brasil. He also has several pending patents in US and other countries. One of his patents on Predictive Traffic Modeling has been chosen by IBM as one of the best twenty patents from past twenty years. Maharaj has monitored several new inventors who had filed for patents and patent applications. Maharaj has given several invited presentations including the Keynote presentation at the Computational Intelligence and Networking (CINE-2015) Conference in January 2015.
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.
Sridhar Iyengar is a founder and director of Misfit Wearables, makers of highly wearable computing products, including the
award-winning Shine, an elegant activity monitor. Sridhar also founded and served as CTO of AgaMatrix, a blood
glucose monitoring company that made the world’s first hardware medical device to connect directly to the iPhone, winning
both the Red Dot and the GOOD Design Awards. He built AgaMatrix from a two-person start-up to shipping 15+ FDA-cleared
medical device products, 3B+ biosensors, 3M+ glucose meters for diabetics, with partnerships with Apple, Sanofi, and
Walgreens. Sridhar holds over 20 US and international patents and received his Ph.D. from Cambridge University as a
Frank is a Finance and Intellectual Property professional with 20+ years senior leadership experience most recently as the Director of Intellectual Property Operations for Xerox Corporation. Operating as a standalone entity with its own P&L, the group’s main focus is identifying and pursuing IP monetization opportunities. This is accomplished through a variety of mechanisms including assertion based licensing, cross licensing, patent sales, trademark licensing and litigation. Frank is also responsible for patent defense and risk mitigation arising from allegations of patent infringement. The Group under Frank’s leadership has provided a significant return on investment to shareholders. Previous positions at Xerox include 1. Finance and operations management of 15+ spin out companies as well as the intellectual property organization and management of third party arrangements. 2. Financial Controller for a $600m business unit 3. Director of Product Pricing for Latin America 4. And various domestic and international financial management positions.
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.
Registered patent attorney with over 11 years' experience representing clients as in house and outside counsel in patent litigation and with first chair experience during offensive and defensive patent licensing negotiations. Demonstrated ability to learn various technologies to support legal representations. Most recent experience covers semiconductor manufacturing, wireless networking, telecommunications, audio and video coding standards, and electrical engineering technologies.
Marc Sandy Block is currently IP Counsel at IBM Corporation, working in standards, bankruptcy, and IP policy. For several years, Sandy was President of the International Intellectual Property Society (iipsny.org) and was a board member for over ten years. He was a contributor to the American Bar Association Manual on Standards and Development, and participated, as a Committee member, in drafting the 2013 National Academy of Sciences Report Patent Challenges for Standard-Setting in the Global Economy. He is a member of the AIPLA Standards and Open Source Committee and Licensing Committee, and is currently vice-chair of the AIPLA Antitrust Committee. Sandy earned a BS in Electrical Engineering from Lehigh University and a JD from the George Washington University Law School. He is admitted to practice in Virginia, Maryland, New York, and the USPTO.
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.
Mr. Walters is a Managing Director with PwC’s Forensic Services practice. He has over 24 years of professional experience including serving as an Assistant Controller prior to joining PwC. For the past 17 year Mr. Walters has focused primary on delivering Licensing Management and Contract Compliance
related services, while holding various positions, including as a global practice leader. Mark has worked with companies across various industries, including Apparel, Oil and Gas, Entertainment and Media, Pharmaceutical, Publishing, Automotive and High Tech. In his role Mark has worked with companies to evaluate their licensing portfolios, including assisting in the development of licensing agreements, assessing ongoing royalty streams and initiating licensing compliance programs Mark has been published on five occasions in Intellectual Asset Management (IAM).
Jürgen Benning is a Senior Legal Counsel for Intel Corporation, responsible for the legal affairs of Intel’s Datacenter Group.
Jürgen joined Intel in Paris, France in 1991, after working at the law firms Freshfields and Heuking Kühn in Düsseldorf, Germany and Marriott Corporation’s Legal Department in Washington D.C. Following his 4 years in Paris, he held various positions in Intel’s Legal Department in Munich, Sacramento and for the last 10 years in Phoenix.
He graduated from the University of Cologne, Germany with a J.D. in 1985 and from American University in Washington, D.C. with a LL.M in International Legal Studies in 1986. Jürgen is a member of the German and the Arizona Bar.
Matthew W. Siegal is a partner in Stroock’s Intellectual Property Group, where he helps both large multi-national corporations and smaller start-ups protect and monetize their Intellectual Property. His practice focuses on extensive patent litigation, prosecution, licensing and other Intellectual Property related activities in a wide variety of high-tech and traditional fields. A veteran of both jury and bench trials since the 1980’s, including a host of multi-million dollar verdicts, his litigation practice has involved all aspects of discovery, pre-trial, jury trial, bench trial and appeal before federal courts, bankruptcy courts, state courts and the International Trade Commission. His licensing work has involved complex multi-national agreements. A prolific author and speaker, he has published articles and lectured domestically and internationally on a wide variety of intellectual property topics.
Lukas Grabiec is Assistant General Counsel at GoDaddy and was for 8+ years prior Corporate Counsel in various capacities at Microchip Technology Inc., Intel Corporation and Honeywell International. Lukas was recognized in the legal community as the “Up and Comer” Attorney of the Year for 2012 by the Association of Corporate Counsel and Arizona Business Magazine and also was selected to the prestigious School for Leaders (Szkoła Liderów) program in Warsaw, Poland sponsored by the Polish Ministry of Foreign Affairs and Office of the President of Poland.
He is heavily involved in various organizations including being the Chairman of the State Bar of Arizona In-House Counsel Committee, current Director at the US-Polish Trade Council (USPTC) in Palo Alto, California, Mentor at the US-Poland Innovation Hub in Silicon Valley, and frequent lecturer across the U.S. and Europe including at the Stanford Center for Professional Development at Stanford University.
Lukas received his Juris Doctorate (JD) from Case Western Reserve University, his MBA from École de Hautes Études Commerciales (EDHEC) (France), a B.S. in Political Science from the University of Houston Honors College as well as a Certificate of Polish Studies from Jagiellonian University in Krakow, Poland. During law school he worked with the U.N. Special Court for Sierra Leone and wrote briefs helping prosecute War Criminals. This UN project which was organized by Case Western, American University and the Public International Law & Policy Group (PILPG) was nominated for a Nobel Peace Prize. Lukas has been featured or interviewed by CNBC, TVP (Telewizja Polska), POLVISION – Kulisy Suksesu (tv program), Arizona Attorney Magazine, Gazeta.pl, Tygodnik Angora, FoxSports, Sport.pl, and Przeglad Sportowy.
Rosa Yaghmour leads all aspects of intellectual property protection, including patent portfolio management, patent prosecution, patent procurement, licensing and litigation at Entegris, Inc. Prior to Entegris, Rosa was an associate at Choate Hall and Stewart and was a staff attorney at IBM Corporation.
Stephanie Monaco is Assistant General Counsel, Patents, Pfizer. She is one of the attorneys supporting Pfizer’s Primary Care Business Unit as well as serves as the lead patent attorney for the women’s healthcare and pain research groups. Stephanie is also the lead patent counsel for Meridian Medical Technology, a subsidiary of Pfizer. Prior to joining Pfizer, Stephanie was a patent attorney at Wyeth supporting the Wyeth neuroscience research group, Wyeth Consumer Healthcare and Fort Dodge Animal Health. Prior to becoming a patent attorney, Stephanie was a litigation attorney specializing in civil litigation.