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: Silicon Valley Summit 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.
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KEY TOPICS DISCUSSED
Portfolio Evaluation & Management – The First Step in Harvesting your IP
IP Valuation – What is your Portfolio Worth
Running an Operating Company’s Licensing Program
Monetization for Operating Companies in a Post AIA World
Identifying patents of value in any portfolio (not just your own)
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
Patrick is a Senior IP Attorney at HGST, a division of Western Digital. Early years at HGST focused on revenue generation from technology and patent licensing, current work focuses on patent development and portfolio management for storage products. Prior to HGST, Patrick ran bet the company patent litigation at Nichia Chemical, wrote technology agreements at National Semiconductor, and drafted patent applications. An electrical engineer and patent attorney, Patrick obtained his Juris Doctor from Hastings College of the Law and holds two bachelor’s degrees, the first in English literature from the University of California, Berkeley. Patrick is a licensed attorney in California, New York, and the District of Columbia.
Stefan Tamme joined Rambus in 2004 and currently serves as Vice President of IP strategy. In this role, he leads the strategic development of Rambus’ patent portfolio and the implementation of the Company’s IP business strategies. He is involved with acquisitions, divestitures, as well as outbound licensing. Prior to this position, he served as Rambus’ director of global business enablement where he led the strategic alliance partner program, as well as the worldwide reseller channel. Mr. Tamme has over 20 years of global experience in the electronics business ranging from semiconductors to systems and software. He has been involved with inbound and outbound licensing for 18 years and he has worked for large companies such as Bosch, as well as for several successful start-ups. He holds an MBA from Pepperdine University and an MSEE from the University of Hannover, Germany.
Sharon is Associate Director of Intellectual Property at MannKind Corporation, a publicly traded biopharmaceutical company headquartered in Valencia, CA with locations in New Jersey and Connecticut. MannKind Corporation focuses on the discovery, development and commercialization of therapeutic products for patients with diseases such as diabetes and cancer. Sharon has over 10 years of experience in intellectual property, primarily patent prosecution.
Prior to joining MannKind, Sharon worked with the Intellectual Property Group of the law firm Fulbright & Jaworski LLP, nka Norton Rose Fulbright LLP, in Austin, TX. She has a Ph.D. in Molecular Biology from The University of Texas MD Anderson Cancer Center Graduate School of Biomedical Sciences in Houston, TX. Sharon is registered to practice before the U.S. Patent and Trademark Office.
Fergal Clarke is the director of IP business analysis at Lenovo, the world’s largest PC firm, which has major research centres in Yamato, Japan; Beijing, Shanghai and Shenzhen, China; and Raleigh, North Carolina.
Mr Clarke is responsible for providing business context to all IP-related activities and for ensuring that such activities are consistent with and supportive of the overall business strategy. His specific responsibilities include patent acquisitions, supporting organic patent development, supporting inbound and outbound licensing and communicating the IP business strategy.
Mr Clarke was previously director of IP strategy at Rambus. Before this, he held multiple technology and engineering management roles at Applied Materials, in addition to managing its corporate trade secret management initiative.
Mr Clarke obtained his physics degree from Dublin City University and his MBA from the University of California, Berkeley.
Michael Moore joined Rambus in 2011, and holds the position of Deputy General Counsel, Intellectual Property. Mr. Moore is a seasoned IP attorney with a decade of patent law and intellectual property experience, building on a solid technology foundation of digital logic design and software engineering.
Mr. Moore leads the Intellectual Property Development group and is responsible for developing complex IP portfolios for monetization and licensing, both in the US and globally. Mr. Moore is involved with diligence of acquisitions and divestitures, and inbound and outbound licensing supporting product development. Prior to this role, he served as IP Counsel at Symantec managing a substantial global patent portfolio in the enterprise storage space, and he also worked in the in-house patent team at Cypress Semiconductor supporting memory and interface product development. Mr. Moore started his attorney career as an associate at the law firm of Morgan, Lewis and Bockius involved in patent prosecution and trade secret litigation.
Mr. Moore holds 10 US issued patents from his engineering work, and numerous technology article publications in electronic engineering trade journals. He holds a JD and MBA from Santa Clara University, and BSEE (B.Eng) from the University of Limerick, Ireland.
As IP counsel for IBM's Patent Portfolio Management Department, Tim is responsible for a team of senior attorneys who manage and develop IBM's worldwide patent holdings including over 55,000 patents worldwide. In this role Tim provides counsel on a wide variety of legal issues pertinent to the licensing, sales, acquisition and leveraging of IBM patents. Tim's department provides a critical connection between IBM's world renowned patent licensing organization and its robust inventor community and is integrally responsible for IBM's 21 consecutive years of US patent leadership.
Prior to assuming this role Tim held a number of key positions in IBM's IP department including serving as a founding member of IBM's IP strategy and policy department, and as a staff attorney for IBM's corporate patent licensing function. Tim has extensive experience in all aspects of corporate IP practice including patent prosecution, drafting and negotiating patent and technology license agreements, developing and executing patent assignments, formulating and advising clients on new IP monetization business models, as well as general IP related advices and counsel.
Before joining IBM, Mr. Farrell was in private practice in Salt Lake City, UT, holding positions at Workman, Nydegger as well as Snow, Christensen & Martineau.
Mr. Farrell holds a BS degree in Electrical and Computer Engineering from Brigham Young University (BYU), and MBA from the Mariott School of Management at BYU, and a JD from the J. Reuben Clark Law School at BYU. He is admitted to practice in California, Colorado, Utah and before the United States Patent and Trademark Office.
Amy Simpson, Co-chair of the IP Valuation practice with Perkins Coie specializes in intellectual property matters including patent litigation, patent portfolio analysis and valuation, and AIA post grant procedures. She has extensive patent litigation experience involving a broad range of complex computer and electrical related technologies including computer networks, software, telecommunications and e-commerce. She has represented numerous Fortune 500 companies, international companies and emerging companies in a variety of federal jurisdictions. Amy is also lead counsel on 10 Inter Partes Review proceedings currently pending before the United States Patent Trial and Appeal Board (PTAB). Amy has authored numerous articles regarding recent trends in patent law and litigation, co-chaired patent monetization conferences and has been an invited guest speaker regarding portfolio analysis and valuation.
Thom Kobayashi joined Innography in 2012 as a Senior Sales Engineer, moving from a position as a “power user” of many years to help demonstrate how the tool might be used to uncover actionable information from the IP space.
Prior to joining Innography, Thom had many roles. As a working engineer, he was the inventor on over 40 patents. His interest in the invention space lead him from prosecuting patents in a law firm to eventually managing a >8000 asset portfolio.
Thom has a B. S. in Chemical Engineering from Rice University in Houston, TX and a M. S. in Technology Commercialization from the McCombs School at the University of Texas where he graduated with honors.
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.
Dana Hayter has been responsible for various aspects of Intel’s Intellectual Property work since 2004. As part of these duties, he has personally handled or directed the conduct of numerous patent licensing, cross-licensing, litigation settlement and acquisition matters, including Intel’s 2009 settlement agreements with Advanced Micro Devices, Inc., Intel's participation in Nortel’s bankruptcy auction and Intel’s 2012 acquisition of patents from InterDigital, Inc.
Mr. Hayter has extensive experience in all legal and business aspects of mission-critical, high-visibility IP licensing and other complex transactions (including related financial and econometric analysis), billions of dollars in closed deals and a consistent record of direct client counseling at the highest levels of public and private clients. He reports to Intel Vice President & Deputy General Counsel Steven Rodgers.
Before joining Intel, Dana was Of Counsel and Senior Counsel at two Bay Area-based, national law firms focused on advising technology industry clients and served as a Trial Attorney at the US Department of Justice’s Antitrust Division.
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.
Adam V. Floyd is a Partner in the Firm's Intellectual Property Litigation Group. Mr. Floyd has 20 years of experience as a patent litigator, having represented numerous high-tech clients across the country in all manner of patent litigation. Most recently, Mr. Floyd served as a judge on the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("PTAB") in Denver, where he was deeply involved in post-grant procedures under the 2011 Leahy-Smith America Invents Act – a new set of actions permitting clients to challenge patents at the PTAB, an increasingly popular alternative to federal court litigation.
Before becoming a PTAB judge, Mr. Floyd was in private patent litigation practice as a founding partner of F&B LLP (Austin, Texas). He is a member of the Colorado and Texas bars and has been recognized for his work in intellectual property litigation by Chambers USA, Super Lawyers and Best Lawyers in Texas.
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.
Courtland Reichman is a trial lawyer and founding principal of McKool Smith’s Silicon Valley office. He focuses on intellectual property litigation, specifically patent, trademark, and false advertising cases, as well as commercial litigation. He also routinely handles other state and federal intellectual property matters, including trade secrets, copyrights, franchise/distribution, restrictive covenants, and unfair competition.
Courtland’s appellate practice includes over 20 federal appellate arguments, including arguments before the U.S. Supreme Court and the Federal Circuit. He has been recognized by the National Law Journal as one of the top 40 under 40 lawyers in the U.S., and by Chambers USA as a leading intellectual property lawyer. He earned his law degree, with honors, from Emory University School of Law, and clerked for the U.S. Court of Appeals for the Eleventh Circuit.
Jeff Leedom is a Partner at PricewaterhouseCoopers that is the United States Leader our Licensing Management and Contract Compliance Practice. Mr. Leedom has been with PwC's Forensic Services practice for over 20 years and is experienced in a range of business consulting engagements across a multitude of industry sectors. Mr. Leedom’s primary area of expertise is in licensing management and contract compliance and has an extensive level of experience in general forensic accounting.
Mr. Leedom has worked with many different companies all over the world in various sectors such as technology, software, oil and gas, utilities, entertainment and media, telecommunications, consumer electronics, biotech, pharmaceuticals, medical devices, etc. to provide consulting in the area of licensing management, contract compliance, with a focus on overall risk mitigation, cost reduction and revenue recovery.
Mr. Leedom has testified in Intellectual Property and Licensing disputes in both State and Federal courts. He has spoken to international audiences in the area of licensing management and contract compliance in locations all over the world. Mr. Leedom is published in area of contract compliance, revenue recovery, licensing, and IP protection and enforcement.
He holds a MBA from Ellis College, and a B.A. in Economics from the University of California, Santa Barbara. He is a Certified Licensing Professional and a Certified Software Asset Manager.
Teddy Joe is Zynga Inc.’s Senior Patent Counsel. Besides devoting a good portion of his day to playing video games (for “research”), Teddy leads Zynga’s patent program. In that role, he is responsible for designing and executing the global patent strategy for Zynga. Prior to joining Zynga, Teddy was Patent Counsel and Senior Corporate Counsel for salesforce.com, inc. In addition to helping start and grow salesforce.com’s patent portfolio, Teddy also served as the legal M&A integration lead for salesforce.com’s largest acquisitions.
Zynga Legal is proud to have been named one of the most innovative in-house teams in the United States by the Financial Times and a 2012 Best Legal Department finalist by Corporate Counsel.
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.
James Kovacs is the Director of Licensing and lead’s Intel’s Patent Licensing Group, which focuses on counseling and advising in connection with worldwide patent transactions, such as licenses, cross-licenses, acquisitions and sales, as well as related corporate patent strategy. Prior to joining Intel, James was in private practice at leading Chicago law firms, focusing his work on technology transactions and outsourcing. He holds a bachelor’s degree in economics and psychology from the University of Michigan and a law degree from Harvard Law School.