Stay tuned for the 2014 agenda, speaker and panel information
Check out the 2013 overview below for a representative list of speakers, topics and attendees.
The growth in IP transactions and the media coverage of auctions, sales and settlements has increased the pressure to create stronger ROI from IP assets. Intellectual property is now a vital part of a company's value and a key revenue generator. As a result, IP executives are being held more accountable for the revenue they generate from their portfolios. For IP professionals to succeed, they must look at IP strategically and create a roadmap to harvest their organization's assets.
Last year's event brought together an exclusive group of high-level IP executives for a 360 degree perspective on how best to monetize an IP portfolio.
KEY TOPICS DISCUSSED
Building a monetization strategy
Evaluation of your IP assets
Managing and communicating across your organization
Selling your IP
Running a licensing program
Best enforcement strategies
Financial reporting of revenues
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
VP-TS Intellectual Property, Cypress Semiconductor
An IP strategist with a combination of technical, business and legal expertise, currently transforming the management of a portfolio of 3000+ patents and applications into a self-funding, business-driven, cross-corporate function delivering entitled ROI. David is also a prolific inventor with over 130 patents granted and pending, and a Patent Agent licensed to practice before the USPTO, reg # 69932.
Daivd is responsible for management of a portfolio of ~2000 patents, ~1000 pending applications and the process of IP protection, generation and monetization. Directing systematic review processes to ensure comprehensive and cost-effective protection of strategic IP as it is created. Ensuring maximum ROI on IP$ by implementing systematic reviews of applications against business objectives. Creation, implementation and direction of processes to create and protect strategic IP in emerging technology areas adjacent to existing product lines and technologies.
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.
Lesley Hamlin is the Associate General Counsel for Intellectual Property at Citrix Systems, Inc. She is responsible for global IP strategy including managing and enhancing global patent, trademark and copyright portfolios and providing legal support for contract, marketing and engineering functions. Ms. Hamlin has extensive experience in IP due diligence for M&A transactions, IP enforcement and supports IP litigation at Citrix. Prior to joining Citrix, Ms. Hamlin was Director & Senior Counsel of IP and Technology at Iron Mountain and Director and AGC at Textron Systems Corporation, handling global IP issues for both commercial and defense technologies. While at Textron, Ms. Hamlin was certified as a Six Sigma Black Belt. Ms. Hamlin started her legal career at Wolf Greenfield in Boston, MA after receiving her JD and Masters in IP from Franklin Pierce Law Center (now UNH School of Law). Prior to her legal roles, Ms. Hamlin received her BSEE and worked at Westinghouse.
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.
Mark Stignani is a registered patent attorney and serves as Of Counsel at Schwegman, Lundberg & Woessner, P.A. Mark has patent experience in various technology areas, including software, information systems, mobile devices, computer hardware and design, telecommunications, and mechanical. His practice includes prosecution, reexamination, patent and portfolio analysis, freedom to operate, patent strategy and planning and strategic counseling.
Prior to joining SLW, Mark served as an Assistant General Counsel for Thomson Reuters for over ten years. While at Thomson Reuters, Mark’s responsibilities included the harvesting and protection of intellectual property associated with software and high value content as well as providing primary intellectual property legal support for business development, contracts, editorial, technology area in the legal, healthcare, and financial services information market groups. As an integrated team member, Mark also served on various executive committees that drove investment in acquisitions, emerging business development and new product development across a multiple set of marketplaces.
Mark received his Juris Doctorate from William Mitchell College of Law while working for Alliant Techsystems. He had previously done post graduate work in robotics and control systems at the University of Minnesota and National Technological University while working at Honeywell, Inc.
Mr. Classen is Deputy General Counsel of Computer Sciences Corporation where he supports CSC’s commercial business units, Office of Innovation and intellectual property initiatives.
A graduate of Trinity College (Connecticut), Mr. Classen received his Juris Doctor from Catholic University and a Master of Business Administration from the Wharton School of the University of Pennsylvania. While in law school, Mr. Classen was a member of the Catholic University Law Review and Editor in Chief and Founder of The Journal of Contemporary Health Law and Policy.
Mr. Classen is the author of A Practical Guide to Software Licensing for Licensees and Licensors (5th Edition) published by the American Bar Association. Mr. Classen serves on a number of business, professional, and civic boards, including The Walters Art Museum, The Calvert School, and the Board of Advisors of The Computer & Internet Lawyer. He is the author of the three volume set Classen’s Commercial Forms as well as Classen’s Merger and Acquisition Forms. Mr. Classen has been widely published in legal journals and spoken extensively before professional groups both domestically and internationally. His recent articles address technology licensing, export controls, law department management, and managing inside/outside counsel relationships.
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.
Ken has comprehensive experience in the management of financial, operational and legal underpinnings of global biopharmaceutical organizations. Kenâ€™s extensive experience includes the assessment of competitive intelligence and provision of advice related to current and emerging market trends, legal/regulatory developments, financial, and operational matters in the health care and biotech industry. Ken routinely advises on elements of Regulatory Compliance, Quality Assurance, Patient Privacy, Human Subject Protection, FDA, EMEA & ICH Compliance, Intellectual Property/Licensing, Good Clinical Practice, Good Laboratory Practice, and Fraud/Abuse. Prior to joining MannKind Corporation Ken worked at Otsuka Maryland Research Institute and Genetics Institute/Wyeth Pharmaceuticals and the prior ten years in the Managed Health Care industry with Harvard Pilgrim Health Care. Ken graduated from the New England School of Law and is admitted to practice in Massachusetts, Rhode Island and the US Supreme Court.
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.
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.
Thelma is Director of Intellectual Property at MannKind Corporation, a publicly traded company headquartered in Valencia, CA with other locations in NJ and CT. Thelma is part of the Danbury, CT office, which also houses R&D and manufacturing facilities. MannKind focuses in developing biopharmaceuticals for pulmonary delivery and cancer immunotherapy. Thelma has been at MannKind since July 2007 and handles almost all aspects of intellectual property for the East Coast sites. She has over 19 years of experience in intellectual property, primarily patent law.
Prior to joining MannKind, Thelma worked with the Intellectual Property Groups of three major, global law firms based in New York City, including, Kelley Drye & Warren LLP; Pillsbury Winthrop Shaw Pitman LLC, and White and Case LLP. She began her career at White and Case in the early 90’s and spent over 10 years patent prosecution and participating in many aspects of intellectual property practice. She has a Ph.D. in Anatomy, Cell and Molecular Biology from Hahnemann University School of Medicine and Graduate Studies, now part of Drexel University in Philadelphia. Thelma held the position of Assistant Professor at the Rockefeller University in New York, prior to entering the field of patent law. Thelma is registered to practice before the U.S. Patent and Trademark Office.
Rob Bertin's extensive patent, trademark and copyright litigation practice has included cases in the Eastern District of Virginia, the Southern District of New York, the Eastern District of Texas, the Northern District of Illinois, the Northern and Southern Districts of Florida, and the Districts of Arizona, Maine, Maryland, New Jersey, and the District of Columbia. In addition, Rob advises clients on issues involving infringement and validity of patents; conducts and reports on IP due diligence; drafts and negotiates license agreements, including software license agreements, joint venture agreements, consulting agreements, ASP equipment service agreements, patent license agreements, and co-branding and distribution agreements; advises clients on licensing strategies and other aspects of cultivating a patent portfolio; prepares new patent applications; and advises clients on various other patent, trademark, copyright and trade secret issues. Prior to practicing law, Rob was an electrical engineer with IBM Corporation's Federal Systems Division, where he designed circuits and packaging for logic, memory and microprocessor chips. He also wrote proposals and technical studies regarding satellite systems and radiation-induced failure mechanisms in semiconductor devices. Rob has published papers and has been awarded two U.S. patents for his work in these areas.
Marc is Associate General Counsel, Intellectual Property at IBM Corp., He manages the patent licensing and sales legal team responsible for generating patent income for IBM. In support of IBM's attainment of over $1B in IP income per year, the team focuses on the development and deployment of patent monetization strategies as well as infringement and sales patent collateral creation and implementation.
With over 20 years of experience spanning all areas intellectual property practice, Marc's previous management positions include oversight of the intellectual property law department for IBM's semiconductor design and manufacturing business and the patent portfolio management department responsible for IBM's global patent portfolio.
Marc has been actively involved in developing and deploying IP strategy at IBM including its founding role in the Peer to Patent project (recently implemented as pre-issuance submissions as part of the AIA), IBM's open source patent pledges, amicus activity at the Federal Circuit and the Supreme Court as well as developing the innovation cycle concept that informs IBM's approach to balancing open and proprietary innovation.
Marc is frequently asked to speak publicly and has done so on many topics including patent quality, patent portfolio management, standard setting organizations, patent monetization, and collaborative innovation among others. He holds a BE in Electrical Engineering and Computer Sciences cum laude from Stevens Institute of Technology, a BS in Geological Sciences from Binghamton University, State University of New York and a J.D. cum laudefrom Pace University School of Law. Marc is admitted to practice in NY and before the US Patent and Trademark Office.
As SVP TechInsights Research, Julia Elvidge is responsible for the Competitive Technical Intelligence and Product Development divisions at TechInsights, Inc. Ms. Elvidge joined Chipworks in 1994 as the second employee and held increasingly senior positions before being named President in 2003. As a major shareholder, she was instrumental in growing the firm from a small start-up to a global enterprise of 120 people. TechInsights, the industry leader in proving patent value, acquired Chipworks in June 2016.
A renowned thought-leader in the industry, Ms. Elvidge recognized early in her career the business value that competitive technical intelligence and intellectual property held for technology companies. She began her career with Mosaid Technologies; then joined LSI Logic, where she honed her expertise in ASIC design, ultimately leading her own engineering groups. Ms. Elvidge holds multiple patents for her work.
Ms. Elvidge is a board member of the Information Technology Association of Canada and a longstanding member of the Licensing Executives Society. A winner of numerous awards for her contributions to entrepreneurship in the high-tech industry, she is a regular speaker at intellectual property events, such as the Licensing Executives Society (LES) and the Intellectual Property Business Congress (IPBC) conferences.
A role model for women in technology and business – and a technology geek at heart, Ms. Elvidge was one of six women in a class of 100 to pursue an education in electrical engineering. She earned her degree in Electrical Engineering from the University of Waterloo in Ontario.
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.
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.
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.
Jose A. Esteves is a partner in the Intellectual Property and Technology Group, where he focuses on IP monetization and finance, and complex technology transactions relating to pharma/biotechnogy, outsourcing, IT/Internet and media and clean technologies. Mr. Esteves advises a diverse group of clients, both U.S. and abroad, including clients from Argentina, Brazil, India, Japan and Korea. Mr. Esteves also handles intellectual property and technology aspects of mergers and acquisitions, traditional financings, public offerings and commercial transactions.
Brian is a Partner at Edwards Wildman and his practice is primarily complex patent litigation. He has litigated patent infringement cases in numerous U.S. jurisdictions as well as before the Court of Appeals for the Federal Circuit. In addition to his U.S. bar admissions, Brian is licensed as a Solicitor in England and Wales. As a registered Patent Attorney, Brian oversees IP prosecution and monetization strategies. He also assists clients with portfolio development and licensing. Brian prepares opinions on patentability and, in connection with patent litigation, on the scope and validity of issued patents, including the feasibility of design-around alternatives. Given his extensive background as a practicing electrical engineer with Hewlett-Packard Co., Siemens, and MIT-Draper Laboratory, Brian has expertise in the electrical and software arts, with an emphasis on digital circuitry and semiconductors. Brian has considerable experience with optical technologies, energy storage devices, imaging/remote sensing technologies, and medical devices as well.
Mr. Caplan practices in the area of patent litigation, counseling and prosecution as well as in the areas of antitrust litigation and general corporate matters involving the acquisition, sale or licensing of intellectual property rights. His litigation experience includes numerous patent infringement actions in the Eastern District of Texas, the Central and Northern Districts of California, the District of Delaware and the District of Nebraska. His experience also includes patent cases involving semiconductor wafer inspection equipment, as well as pharmaceutical infringement actions including Hatch-Waxman and conventional non-Hatch-Waxman pharmaceutical lawsuits. He also is active in several inter partes review (IPR) proceedings before the Patent and Trademark Office. Mr. Caplan was lead counsel in successfully convincing the Federal Circuit to vacate the claim construction, infringement, damages and injunction judgment from a 14 day jury trial litigated by another firm. He also has obtained a temporary restraining order on behalf of a pharmaceutical client against two competitor drug companies. Mr. Caplan also appears in state courts throughout the United States and obtained a summary judgment victory in a Kentucky State court action involving patent ownership and misappropriation of intellectual property rights which was affirmed on appeal. Additionally, he represents several Chinese defendants in a class action antitrust lawsuit involving the export of magnesite from China. Another significant aspect of Mr. Caplan’s practice is providing counseling to clients on infringement, validity and freedom to operate matters as well as licensing of technology. This also has involved advising corporations with respect to intellectual property issues in connection with acquisition and divestiture matters. He has extensive experience prosecuting patents in the United States and foreign patent offices for numerous clients in all fields of technology. This has included obtaining worldwide patent protection in fields such as pharmaceutical, medical device, semiconductor manufacturing and devices, automotive fuel injection, air bag and anti-lock braking systems, wireless telecommunications, consumer products, financial services and business methods. He has significant experience managing all aspects of worldwide utility and design patent portfolios. Mr. Caplan is the past President of the New Jersey Intellectual Property Law Association (the “NJIPLA”) whose membership includes most of the world's largest pharmaceutical companies headquartered in New Jersey. He regularly speaks on recent developments in patent law.
Brent Bersin is a Litigation & Dispute Services
Practice Leader in the Central Region of the
Forensic and Valuation Services practice of Grant
Thornton LLP. He is located in Houston, Texas.
Brent has 18 years of experience providing financial,
economic, valuation, damages quantification
consulting, and expert witness services to clients in
the context of intellectual property and commercial
disputes. His experience in intellectual property
matters includes market assessments, valuation,
licensing, and the calculation of lost profits and
Brent has been designated and testified as an expert at both trial and deposition in Federal Court, State Court, and Bankruptcy Court, as well as arbitration proceedings.
Andrew Holtman, Ph.D., a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, focuses on a wide range of patent-related activities including litigation and prosecution work. He has considerable experience performing due diligence investigations and portfolio assessments for disposition, for which he teaches multiple courses and lectures. Dr. Holtman has significant experience coordinating multi-jurisdictional patent practice between the United States, the European Patent Office (EPO), and numerous European court systems. He has overseen complex litigation in France, Germany, Ireland, and the United Kingdom, as well as oppositions at the EPO. Dr. Holtman represents companies primarily in the areas of biotechnology, medical device, pharmaceutical, and mechanical technologies. The subject matter of his technical training spans biotechnology-related fields, including plant molecular biology, molecular genetics, biochemistry, immunology, and pharmaceuticals.
Scott Popma, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, practices patent litigation before the federal district courts and the U.S. Court of Appeals for the Federal Circuit, primarily in the biotechnology, pharmaceutical, and electrical areas. He has extensive experience in all aspects of pre-trial, trial, and post-trial proceedings. In addition to his litigation practice, Mr. Popma advises clients on a wide variety of patent matters, including portfolio analysis, licensing, due diligence, and IP issues relating to crowdfunding. He also provides opinions of counsel relating to infringement, validity, and patentability.
Vice President, Business Development, Allied Security Trust Linda Biel has more than 20 years of experience in high technology, specializing in business development, marketing and sales. She is responsible for new member recruitment and the management of relationships between Allied Security Trust and sellers of patent portfolios, including patent brokers and direct sellers. She also handles the sales of portfolios that AST has purchased, once involved members are licensed. Previously, she was a founder and Director of Customer Relations for PatentFreedom, and before that served in a variety of customer and partner interfacing roles as a Director at IBM, including assignments in both Asia and Europe. Linda received a M.S. magna cum laude in Industrial Engineering from Texas A&M University.