The AIA has transformed the landscape: IP owners are finding it harder to monetize and enforce their patent portfolio and face growing hostility when they do.
Yet IP leaders are being asked internally to deliver on revenue targets by proactively monetizing, licensing, selling and enforcing their IP assets. This surge in IP commercialization means that companies now have to defend against infringement claims from rivals, corporate trolls, as well as NPEs.
IP leaders need to build a coherent offense/defense strategy on solid processes and tools: due diligence, portfolio evaluation, unified patent prosecution – all while benchmarking its effectiveness.
With increased scrutiny from company boards and the media, IP executives must also demonstrate top-level management skills: allocating resources, making a strong business case for their strategies and getting leadership on board.
The IP Strategy Summit covers all the challenges and opportunities of this new IP landscape.
KEY TOPICS DISCUSSED
Portfolio Management – Aligning Business Goals with IP Strategy
Designing a Unified Patent Prosecution Strategy
Strategies for Dealing with NPEs - Fight or Flight
The Price of Entry: Litigation & Enforcement against Operating Companies
Defending Your Trade Secrets: Proactive and Reactive Strategies
Post Issuance Proceedings - Their Role in Your IP Strategy
Monetization for Operating Companies in a Post AIA & Alice World
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
Naim Khan is Director Intellectual property at GTECH S.p.A. He is a Patent Portfolio architect and for more than a decade he has developed and managed various Patent Portfolios. His methodology is to be hands on with the law firms and has an intense focus on developing the invention and the inventor.
Mark Freeman is Corporate and Managing IP Counsel for Hollingsworth & Vose Company, one of the world’s leading manufacturers of engineered papers and nonwovens. H&V drives value in customers' products by inventing next-generation materials with superior performance. H&V's products are found in applications such as engine filtration, high efficiency air and liquid filtration, battery separators, gasket materials, and specialty industrial nonwovens.
Mr. Freeman manages H&V’s intellectual property portfolio and directs IP strategy. He spends considerable time working with H&V’s Technology Department and its Business Divisions to ensure a proper alignment between H&V’s portfolio and the needs of the business. Mr. Freeman works on all aspects of intellectual property management, including invention capture, patent prosecution management, freedom to operate analyses, and licensing and joint development activities.
Prior to working at H&V, Mr. Freeman was a partner in Choate, Hall & Stewart’s Intellectual Property Litigation Practice group focusing on patent litigation. He worked with clients in a wide array of technical fields including biotech, materials science and software.
Shaun P. Montana is Senior Counsel for Intellectual Property at OSRAM SYLVANIA Inc., part of OSRAM Americas, a group of OSRAM companies located in North and South America. OSRAM Americas is part of OSRAM GmbH, one of the two largest lighting manufacturers in the world.
Shaun’s primary focus has been to help grow and protect OSRAM SYLVANIA’s intellectual property portfolio and its product portfolio as the lighting business continues to transition from conventional to digital technologies. Shaun provides legal advice, with a dollop of humor, to enable business from idea conception through product development to sales and beyond, covering all types of intellectual property-related legal matters, and works particularly with business units in the growth areas of semiconductor-based lighting devices, software-based lighting controls, and lighting electronics.
Prior to working at OSRAM SYLVANIA, Shaun practiced at three well-known IP law firms in the Boston area, ranging from very small to mid-sized to very large.
Shaun holds in BS in Electrical Engineering (magna cum laude) from Union College, and a JD from Boston University, where he served as Executive Editor of the Journal of Science and Technology Law (2001-02). Shaun is a registered U.S. patent attorney and is a named inventor on three U.S. patents.
When not contemplating which is the perfect Monty Python quote to apply to today’s crisis at the office, Shaun enjoys spending time with his wife and two children, learning something new in history, science, and technology, and staying on top of the latest developments in baseball statistical analysis.
Steve is entering his 23rd year in private practice. He concentrates his practice in the areas of patent and trademark prosecution, counseling companies ranging in size from sole proprietorships to Fortune 500. While Steve has a general background in Mechanical Engineering, he also has extensive patent prosecution experience in fiber optic lasers, fiber optic telecommunication modules, LED lighting devices, vertical cavity lasers, coated ink-jet papers, and thermal dye-sublimation printing. On the trademark side, Steve also maintains an active trademark portfolio of more than 2000 registrations in more than 50 different countries.
Austin Wang is Senior Intellectual Property Counsel at Hologic, Inc., a global healthcare and diagnostics company. In his role, Austin supports the Breast & Skeletal Health division at Hologic for all aspects of intellectual property, including IP portfolio management, patent procurement, product clearance, business development support, IP litigation, advertising review and licensing. Austin holds a B.S. degree in Biomedical Engineering from Johns Hopkins University, a M.S. degree in Biomedical Engineering from Boston University, and a J.D. degree from the University of New Hampshire.
Sapna Mehtani is a senior patent counsel at a large life sciences company, EMD Millipore Corporation. Prior to joining EMD Millipore Corporation, she worked at various Boston area law firms and has represented both industry and academic clients on various intellectual property matters including patent prosecution and opinions. At EMD Millipore Corporation, she works closely with both business and R&D functions on various intellectual property matters, such as developing and implementing IP strategies for various franchises, building and leveraging patent portfolios, trade secret protection guidance, IP licensing and collaboration agreements, product development and product launch related activities, competitive analysis, IP due diligence and patent litigation.
Ram Mannan is the Senior Director of Intellectual Property at Myriant Corporation since 2009 where he is responsible for creating and managing IP portfolio related to discovery and development of specialty chemicals. Before joining Myriant, Ram worked at McDermott, Will & Emery in Chicago and Pfizer Inc. in Connecticut and Michigan. Ram’s expertise includes managing IP portfolio focusing on all aspects of chemical, pharmaceutical and biotech product development.
Adam Schoen advises life science and medical device companies regarding implementation of a patent strategy to further business objectives and business goals. Adam’s practice encompasses patent preparation and prosecution, portfolio development, product clearance, freedom to operate analysis and intellectual property due diligence. Adam works with public and private companies, investors, and academic institutions. He manages patent portfolios of all sizes and develops strategies to maximize and protect intellectual property rights in both the United States and foreign jurisdictions.
Michael E. Attaya is a partner and former managing partner of the firm. His practice is focused on patent litigation, infringement and validity investigations and opinions, product clearance and freedom to operate investigations and opinions, reexamination proceedings, patent prosecution and client counseling. He represents clients who are enforcing patents and those defending against improper enforcement in both federal district court and the International Trade Commission (ITC).
Ron is the chief legal contact for Gillette Venus, a global $1 billion dollar business and has a dual role as lead patent counsel for the Gillette chemistry organization. In these roles, Ron blends technical capability with understanding of global CPG manufacturing industries to provide actionable legal guidance for senior commercial and technical management. Ron also handles talent and sponsorship deals for ~ 20 of P&G’s billion dollar brands. Before relocating to Boston, Ron supported P&G’s global Fabric and Home Care businesses as a patent attorney. Prior to pursuing a career in law, Ron worked several years in the New York area as a management consultant for Accenture. Ron has a B.S. in Chemical Engineering from Tufts University in MA and a J.D. from UNH School of Law (formerly Franklin Pierce Law Center.)
Michael J. Wall is Vice President, General Counsel and Corporate Secretary for Performance Sports Group Ltd., which is a publicly traded company on the New York Stock Exchange and Toronto Stock Exchange and whose affiliated company products are marketed under the BAUER (ice hockey), EASTON (baseball/softball), COMBAT (baseball/softball), CASCADE (lacrosse), MAVERIK (lacrosse), MISSION (roller hockey), and INARIA (soccer apparel) brand names. Prior to joining Bauer in 2008, Mr. Wall held the position of Chief Legal Officer for the TD Garden and the Boston Bruins for 13 years. During this time, he was the sole in-house attorney serving the executive management of the TD Garden, the Boston Bruins, Massachusetts Sportservice (the concessionaire for the TD Garden), New England Sportservice (the concessionaire for the Comcast Center) and H.A. Sportservice (the concessionaire for the Agganis Arena at Boston University). He also served as a member of the Board of Directors of the NHL Pension Society while with the Bruins and continues to serve on the Board of Directors of The Boston Bruins Charitable Foundation and Good Sports. Before joining the TD Garden and Boston Bruins executive teams in 1995, he was an attorney with two law firms in Boston—Goodwin Procter and Hinckley, Allen & Snyder. Mr. Wall has a Bachelor of Arts degree from The College of the Holy Cross and a Doctorate of Jurisprudence from Boston College Law School. He and his family live in Acton, Massachusetts.
Leigh J. Martinson is a partner at McDermott Will & Emery LLP and is based in the Firm's Boston office. He centers his practice on litigating complex patent disputes with an emphasis on the electrical and software arts, including analog circuitry, digital circuitry, computer hardware, software, optics, medical devices, RFID technologies, packet and circuit telecommunications, wireless communications, business methods and internet technologies. Since 2012, Leigh has been recognized on Intellectual Asset Management’s “Patent 1000” list. He has also been named an “IP Star” by Managing IP magazine in 2013 and 2014.
Gemma M. Dreher is Vice President and General Counsel at Velcro Group Corporation in Manchester, New Hampshire. Before joining Velcro Group Corporation, Gemma most recently served as Senior Counsel in the ES Sector at BAE Systems in Nashua, New Hampshire. Prior to taking her first in-house position as Vice President and General Counsel of Pragmatech Software in Amherst, New Hampshire, Gemma was in private practice, including having founded and managed her own law firm, with a focus in business law, technology licensing and intellectual property management.
Gemma earned her J.D from Northeastern University School of Law in 1990. She is admitted to the practice of law in New Hampshire and Massachusetts. She is a member of the Massachusetts, New Hampshire and International Bar Associations.. Gemma serves as a member of the Board of Directors for the Northeast Chapter of the Association of Corporate Counsel (ACC) and is also a member of Programs Committee. Through the ACC, Gemma has served as a volunteer mediator in the Massachusetts District Court system. Gemma is on the Board of Directors and Executive Committee of the New Hampshire Women’s Foundation. She is a Managing Partner of the Northeast Kingdom Tasting Center, a business she founded in 2012. She resides in Francestown, New Hampshire with her husband, five children and an assortment of animals that she rescues from time to time.
Peter C. Lauro is a seasoned patent attorney who focuses his practice in the life sciences, primarily in the biotechnology and organic chemistry fields. He has extensive experience in the areas of patent prosecution and client counseling, including patent portfolio management and development as well as opinions and analyses directed to infringement, validity and freedom to operate. He negotiates strategic alliances such as licensing and related technology transactions. Peter’s work also includes European opposition proceedings, interferences, and litigation.
Peter has an educational and professional background in the sciences. After earning a B.S. degree in organic chemistry, he worked as a clinical microbiologist and then for several years in the private sector as a research chemist investigating novel herbicides, plant-growth regulators and fungicides. During this time, he also did graduate work in chemistry at Rutgers University.
This experience has augmented his legal practice in fields such as biotechnology, pharmaceutical chemistry and formulations, and materials chemistry. He has helped clients develop patent portfolios related to screening assays, diagnostics, genomics, biologics, vaccines, small molecule pharmaceuticals, clean tech and in many other areas.
Brad Fawley believes that litigation is nothing more than a business tool that when clumsily handled can cause considerable suffering for clients by wasting resources and needlessly increasing risk. However, when wisely, sensibly and proactively employed, litigation can serve as a useful and effective part of any business’ arsenal. It is this belief that guides Brad in his practice. Ultimately, his goal is to ensure that his clients are not surprised by the outcome of their case or the bill that follows.
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.
Richard J. Musgrave is the Global Director, Legal & Intellectual Property at Husky Injection Molding Systems, Inc. located in Milton, Vermont. Rick heads both the general legal and intellectual property groups at Husky, overseeing an award winning intellectual property team of in-house attorneys, agents, paralegals and administrators on matters such as litigation, risk assessment, freedom-to-operate, opinions, due diligence and patent procurement. Rick also manages the general legal team at Husky, handling matters including corporate transactions, supply chain, employment and human resources. He manages law firms throughout the world in providing legal guidance to Husky’s US and foreign entities.
Rick has over 15 years of legal experience in law firm and corporate environments. Prior to joining Husky, Rick was in private practice as an intellectual property attorney and taught Computer Law at Bradley University in Peoria, Illinois. He received his law degree, cum laude, from New England School of Law and his engineering degree from the University of Massachusetts-Lowell. Before practicing law, Rick was an engineer at the Raytheon Company for 14 years.
Paul J. Cronin is a partner in the Litigation and Intellectual Property Departments and a member of the Intellectual Property Litigation practice group. His practice focuses on trial work in cases involving patents, trademarks, trade secrets, and copyright disputes. He also counsels clients with respect to the licensing and procurement of intellectual property rights, due diligence studies, and product clearances.
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.
Ms. Camacho is the Chief Legal Officer at Gen9, Inc., a synthetic biology company headquartered in Cambridge, Massachusetts. In this role and as a member of Gen9's executive management team, Ms. Camacho is responsible for all aspects of the company's legal affairs and intellectual property. Ms. Camacho joined Gen9 from the Boston office of Greenberg Traurig, LLP, where she was a partner focused on intellectual property. Prior, MS. Camacho was a partner at the New York-based law firm of Proskauer Rose LLP. Ms. Camacho is routinely recognized for her leadership and work, particularly in the life sciences and emerging technology sectors. She was named an “IP Star” by Managing Intellectual Property magazine and was awarded the Tech Luminary and Innovation All-Star Award by the Boston Business Journal and Mass High Tech. She is a graduate of the University of Illinois at Urbana-Champaign and Boston College Law School.
Leanne J. Fitzgerald is Vice President , Associate General Counsel and Assistant Secretary at Nuance Communications, Inc. Nuance (NASDAQ: NUAN) is a leading provider of voice and language solutions for businesses and consumers around the world. At Nuance, she is responsible for intellectual property, corporate and privacy, including patent and trademark prosecution, IP and technology licensing matters, product support, strategic transactions, corporate reporting, mergers and acquisitions and Nuance’s privacy and trade compliance programs. During her tenure at Nuance Leanne has built a world class IP program, growing Nuance’s patent portfolio to over 4000 patents and patent applications today. Prior to joining Nuance, Leanne held a variety of positions of increasing importance within multiple legal functions of the legal department of EMC Corporation, including being responsible for all the legal affairs of an acquired company with over 1500 employees. Leanne holds an engineering degree from the University of Massachusetts- Amherst and JD from the Franklin Pierce Law Center (now known as the University of New Hampshire Law School).