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.
Approved for 7 hours of Illinois CLE credits
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
Section 101 & Patentable Subject Matter
The Price of Entry: Litigation & Enforcement
Defending Against Infringement Claims from Operating Companies
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 IP Counsel Patent Counsel VP & Director of Intellectual Asset Management
Jennifer Gallagher is a senior sales engineer who joined Innography in September 2013. She is a member of a very successful sales team where her specialty is a deep understanding of Innography’s solution portfolio and is adept at positioning solutions to best address prospective client’s perceived needs. She has also participated in industry events, contributed to industry best practices through various webinars & blogs, and has helped maintain an established sales channel through various partner firms overseas. Previous to Innography, Jennifer served as the Patent Portfolio Manager at Freescale Semiconductor. During her time at Freescale, Jennifer focused on several areas of IP strategy such as in-bound/out-bound licensing, patent sales, competitive intelligence, and litigation support.
A native Texan, Jennifer graduated from Texas Tech University with a Bachelor of Science in Electrical Engineering in 2002. During her time at Texas Tech, she completed three internships with Motorola Semiconductor Products Group in Austin, which eventually was spun-out to create Freescale.
Mark has more than 20 years of IP experience employing expertise in patent law, intellectual property, and risk management to facilitate international business opportunities and advantages. At Navistar he manages and expands global multimillion-dollar portfolios for innovations and products in the high-technology arena.
Becky Pumphrey is an in-house Patent Attorney at Nokia, focusing on preparation and prosecution of patent applications related to telecommunication networks. During her three years at Nokia, she has worked with inventors to ensure high quality patent application filings, and has assisted the Licensing and Litigation teams in their efforts to monetize and protect Nokia’s vast portfolio. Previously, Becky spent five years as an in-house Patent Attorney at Blackberry, where she solely handled the extensive design patent portfolio, and also managed all mechanical and touch screen-related patent applications. Prior to her in-house positions, Becky was a Patent Attorney at Greer, Burns & Crain in Chicago, focusing on both patent and trademark preparation and prosecution. Becky is a 2004 graduate of DePaul University College of Law and received her undergraduate degree in Mechanical Engineering from the University of Michigan in 2001. She is an avid runner and completed the Chicago Marathon in 2014. Although she has lived in Chicago for 14 years, she still considers herself a Detroiter at heart and is a loyal Tigers and Red Wings fan.
Saumil is Vice President and Assistant General Counsel at Gogo LLC, the leading provider of in-flight internet. In his role at Gogo, Saumil oversees the IP portfolio and was responsible for establishing the company’s innovation initiatives, including the creation of a patent committee and the development of a formal process for inventors to submit invention disclosures. In addition to handling IP matters, Saumil regularly negotiates IP and IT related transactions with airlines, airframe manufacturers, and other key partners for Gogo. Prior to joining Gogo, Saumil worked as a senior attorney at IBM, and before that in the IP transactions group at Kirkland & Ellis LLP. Saumil started his career at a boutique intellectual property law firm in Chicago focusing on biotech and pharmaceutical patent litigation and prosecution. He is a graduate of the University of Wisconsin – Madison, BS; University of Virginia, MS; and University of Minnesota, JD.
Paul-Alexander Wacker is a German and European patent attorney with 30 years of experience. He holds a Master’s degree in Electrical Engineering and Economics and is currently a visiting professor at the Technical University in Munich.
Mr. Wacker has prosecuted thousands of patents, designs and trademarks for major global companies with a technical focus on telecommunications, computer related inventions, semiconductors, automation technology, automotive industry, medical devices, energy, building and agricultural technology. His reputation has been established with numerous cases in litigation, licensing, IP valuation and strategy.
Mr. Wacker founded Kuhnen & Wacker, an IP Law firm, in 1976. Since 1990, he has lectured in Chicago, Tokyo, Nagoya, Shanghai and at the Universities in Passau, Stuttgart and Munich, as well as at industry events such as LES, AIPLA, INTA, IPO and JIPA. He has published numerous articles and co-authored books in IP management, valuation, creation and strategies.
Additionally, Mr. Wacker is a long-standing chair of the Committees for Innovation of the Advisory Council for Economics to Bavarian Government (WBU), the Federal Association of SME’s (ASU and BJU) and co-chair of Association of Bavarian Economy (vbw). He is official expert in the Committee on Legal Affairs of the German Government as well for the Patent Revision Act and in the Committee on Innovation of Medical Devices.
In 2015, Mr. Wacker has become of Counsel at the Dennemeyer Group to share his knowledge in optimizing global IPR portfolios, and IP related services. Dennemeyer is a leading partner in IP management, with over 50 years of experience in delivering IP services, software solutions and IP legal services worldwide.
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.
John is a patent attorney with over 10 years of experience working in major law firms and in-house environments. Experience extends from patent procurement to advising key players on patent and patent licensing matters for start-ups, universities, and large companies. Experience covers technological advancements in electrical hardware, computer science, communication systems, and other cutting edge technologies.
Prior to Sonos, he held various patent roles and responsabilities, including; Patent Associate and Patent Agent at Perkins Coie, Portfolio Manager at the University of Washington, Patent Agent at Darby & Darby. John has earned a B.S. and a Masters in Electrical Engineering from the University of Illinois and his J.D. from the University of Washington School of Law.
Matt Doscotch is Senior Patent Counsel for Zimmer, Inc., a worldwide leader in musculoskeletal health. At Zimmer, Matt handles the intellectual property strategy for two medical product divisions. He is responsible for leading and directing global activities related to patent drafting and prosecution, monetization strategies, litigation, freedom to operate analysis and opinions, acquisition due diligence, and licensing. Matt’s role includes the management of a significant intellectual property budget related to Zimmer’s products, IP portfolio, and litigation matters. Before coming to Zimmer, Matt taught as a Visiting Professor/Patent Practitioner at the John Marshall Law School in Chicago. He also practiced 6 years at Merchant & Gould in Minneapolis.
B.A. Chemistry, Knox College
M.S. Chemistry, University of Minnesota
J.D. The John Marshall Law School
Paul Bartusiak has a Bachelor and Master of Science in Electrical Engineering, as well as a J.D. from Chicago-Kent College of Law. He was an engineer for about ten years before becoming an attorney, having been involved with technologies such as the radar seeker for the Harpoon Missile, energy bandgap manipulation of semiconductor devices, and RFIC design for wireless communication systems. He has been at Motorola for 21 years and is Lead Intellectual Property Counsel. In this role he has held various responsibilities, including significant offensive patent licensing around the world for revenue generation, IP litigation, strategic IP transactions such as the divestiture of Motorola patents, IP counseling to executive management, and leading in-house patent attorneys in the preparation and prosecution of patents.
As Director of Global Intellectual Property for Modine Manufacturing Company, a leader in thermal management technology, Jeroen is responsible for all aspects of the identification, assessment and protection of Modine’s IP across the globe. This includes the development and execution of intellectual property strategies; management of invention, patent and trademark processes and portfolios; assessment and pursuit of potential infringement activity; and development of licensing arrangements relating to Modine's IP and the IP of others. He is a member of the USPTO Patent Bar, and is a J.D. candidate at Marquette University Law School. With over 20 years of industry experience in advanced product development, product and technology strategy, and intellectual property management, Jeroen brings a unique perspective to the role of in-house IP management.
Grantland G. Drutchas, a founder and former managing partner of McDonnell Boehnen Hulbert & Berghoff LLP, has more than 20 years of experience in the practice of intellectual property law, with a particular emphasis on litigation, licensing, and client counseling.
He is an adjunct professor at Chicago-Kent Law School and is active in the Intellectual Property Owners Association (IPO) as the Vice Chair of the Pharmaceutical & Biotechnology Issues Committee and the former Vice Chair of the Licensing Committee.
Mr. Drutchas is a frequent lecturer on § 101 issues in both the high technology and life sciences context, and helped spearhead joint committees for the IPO to provide comments to the PTO regarding examiner guidelines for § 101.
Daniel A. Boehnen is a founder of McDonnell Boehnen Hulbert & Berghoff LLP. His practice focuses primarily on trials, appeals, opposition proceedings, and all forms of disputed patent matters. Clients often seek his counsel on general IP, business, and legal problems because of his keen insight and his ability to create understanding, simplify problems, and innovate solutions. Clients praise Mr. Boehnen for crafting aggressive strategies to try cases and settle cases while remaining sensitive to the client's business goals. Mr. Boehnen and his team have been praised by clients as the most integrated and efficient attorneys they work with.
His litigation experience encompasses a wide range of high-tech industries in all levels of the federal court system. He has been involved in many notable and precedent-setting cases.
Mr. Boehnen is frequently invited as a guest speaker to corporate and professional groups.
Dr. Chakrabarty is a Distinguished University Professor of microbiology and immunology at the University of Illinois College of Medicine, and advises senior officials in the U.S. and abroad on policies relating to biotechnology and related technology transfer. As a consultant to the United Nations, Dr. Chakrabarty was a part of the advisory committee that resulted in creation of the International Center for Genetic Engineering and Biotechnology (ICGEB) in Trieste, Italy, and has recently rejoined the ICGEB Advisory Board.
In 1980, Dr. Chakrabarty’s genetically modified Pseudomonas bacteria became the first genetically-engineered organism to gain a patent, as a result of the Supreme Court decision in Diamond vs. Chakrabarty. Dr. Chakrabarty has continued to undertake pioneering biotechnology research into the therapeutic potential for protein products of bacteria, both at the University of Illinois at Chicago (UIC) and on behalf of CDG Therapeutics, a U.S. biotechnology start-up company engaged in clinical cancer research. Dr. Chakrabarty has led path-breaking research into the therapeutic qualities of protein products of bacteria. This work includes recent studies with water-soluble products of pathogenic bacteria demonstrating significant promise for cancer therapies which will also be effective against HIV/AIDS, malaria and perhaps even tuberculosis.
Dr. Chakrabarty has numerous publications and has received many notable awards for his contributions to biotechnology, including most recently the Padma Shri (2007), one of the Indian Government’s highest civilian honors.
Scott Bardell is Principal Patent Counsel for Medtronic’s Cardiac Rhythm Heart Failure(CRHF) Division. He supports Medtronic’s Connected Care & Diagnostics business and CRHF in IP transactions, due diligence matters, and patent procurement. He holds a Chemistry degree from Illinois State University and a JD from The John Marshall Law School. He is admitted to the Minnesota and Michigan bars, and is registered to practice before the U.S. Patent and Trademark Office. Prior to his role at Medtronic, he worked as a patent attorney at 3M and The Dow Chemical Company.
Diane is Senior Managing Counsel for J. C. Penney Corporation, Inc., responsible for all patent litigation matters. Prior to joining J. C. Penney Corporation, Diane was a shareholder as Winstead PC in Dallas, Texas and a member of its Intellectual Property and Commercial Litigation Practice Groups. She practiced at Winstead for more than 25 years before leaving private practice to join JCPenney. During her tenure at Winstead, Diane represented clients that were patent owners, defendants accused of infringement by competitors, as well as clients accused of infringement by NPEs.
With the ability to handle litigation across a wide spectrum of technologies, from aerospace and biochemistry to Internet/e-Commerce and medical devices, Thomas L. Duston adeptly protects the rights of his clients in patent infringement claims and trade secret disputes. He is recognized by his peers, his opponents and independent authorities as one of the most talented and skilled intellectual property trial attorneys. Mr. Duston's clients benefit not only from his grasp of technical details, but also from his creativity in handling business-critical matters and his tenacity in litigating them successfully.
Thirteen years corporate practice experience, including the last seven as senior in-house corporate generalist in the technology (SaaS - software as a service) industry. Executive legal successes include intellectual property management (patent, trademark, trade dress, and copyright), M&A and transitional management through merger and acquisition, and implementation of pragmatic compliance protocols.
Specialties: intellectual property, software licensing, cloud services, corporate transactions and governance, data privacy and information security, including HIPAA and FedRAMP.
Dan Shulman is Chief Intellectual Property Counsel for Reynolds Group Holdings, Ltd. and Fram Autoparts, a $13 billion global packaging and automotive parts company comprised of Reynolds Consumer Products, Pactiv, Closure Systems International, Evergreen Packaging, Graham Packaging, Fram and Autolite. Dan is responsible for managing the global patent and trademark portfolio of those combined companies, setting IP strategy, managing all IP litigation and acting as lead counsel in appellate work before the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Dan also routinely leads corporate initiatives in which IP drives significant value. Dan was with Pactiv prior to its acquisition by Reynolds Group Holdings in 2010. Prior to joining Pactiv in 2007 as its Chief IP Counsel, Dan was Senior IP Licensing Counsel for Motorola. Prior to that, Dan was an associate at Mayer Brown LLP from 1999-2006.
Dan received his J.D. from Loyola University Chicago School of Law in 1999, and is a graduate of Northwestern University (1996) with degrees in Mathematics, Physics and the Integrated Science Program.
Dan has been recognized as one of the Top Forty Lawyers Under 40 in Illinois (2013) by The Law Bulletin, and as a Managing IP In-House IP Star 2015 and 2016. Dan is a frequent speaker on topics of IP law, and has authored numerous articles on various IP topics and Federal Circuit jurisprudence. Dan is the author of two books: Insights Hurt: Bringing Healing Thoughts to Life, and Personal Midrash: Fresh Insights Into the Torah, due out in August.
Jonathan Grossman is Patent Counsel at Fresenius Kabi USA in Chicago, Illinois. He practices patent litigation, patent due diligence, patent opinions, patent licensing and patent license disputes related to pharmaceuticals and medical devices. Before joining FK, he practiced patent litigation and counseling at the law firm of Goodwin Procter LLP in New York City. Mr. Grossman earned his J.D. in 2008 from the University of Kansas and his B.A. in 2005 from Northwestern University. He is admitted to practice in New York and Illinois and is a registered Patent Attorney with the United States Patent and Trademark Office.
Ed Rice is a Partner in the Litigation Practice Group.
He is a trial and appellate lawyer who, since 1988, has focused primarily on patent cases and other technology disputes. After clerking for a federal trial judge, he joined the Department of Justice where in 1996 he won his first patent trial as the sole attorney for the government. Since then, he has first-chaired and won trials in every patent litigation venue in the country: federal district courts, the International Trade Commission, and the Court of Federal Claims. Ed launched his appellate career in 1992, when he won a difficult en banc Federal Circuit argument in a trade secret case.
Over his career, Ed has handled a wide range of patented technologies—from integrated circuits to pharmaceuticals, from internet business methods to anti-missile systems, and just about everything in between. Ed also has successfully represented clients on trademark and copyright matters. For example, he represented several well-known Hollywood figures in a copyright jury trial involving a blockbuster movie.
Mr. Tipescu's practice encompasses patent litigation, counseling and prosecution. He has represented clients in federal courts, as well as the United States International Trade Commission. Mr. Tipescu has experience preparing patent clearance and validity opinions, drafting patent license agreements, and counseling clients regarding obtaining and enforcing intellectual property rights. Mr. Tipescu is also a licensed patent attorney with experience in patent prosecution. His practice has involved a variety of technical areas, including software related technology, telecommunications, electromechanical devices, medical devices, hygiene products, power tools and automotive systems.
Mr. Catalano focuses his practice on intellectual property litigation, including trademark, copyright, trade secret, unfair competition and patent litigation. He has represented clients before federal courts, arbitrators, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, and the International Trade Commission.
Mr. Catalano’s practice also includes patent licensing, domestic and international trademark prosecution, enforcement and client counseling.
Kenneth Jaconetty is Assistant General Counsel, IP at Takeda Pharmaceuticals USA, Inc., where he practices in all areas of intellectual property specializing in pharmaceuticals including patent procurement, defense and assertion in litigation, business development due diligence, acquisition agreement drafting, and life cycle management. Prior to joining Takeda he worked at Baxter, DuPont, Novartis as well at the USPTO as a patent examiner. He received his law degree from George Washington University, his undergraduate degree in Chemical Engineering from the University of Illinois at Champaign, and is a qualified European Patent Attorney.
Steve is Associate General Counsel, IP for Covidien (now Medtronic) in the Surgical Solutions Group. His practice focuses on all aspects of patent law, including prosecution, litigation, licensing and IP due diligence for mergers and acquisitions, and has, in the past, included managing products liability matters as well as general corporate work. Steve is responsible for IP legal work relating to energy-based surgical devices including electrosurgical instruments and accessories as well as the generators that power them; ultrasonic surgical instruments for sealing and dissecting tissue, and radio-frequency tissue ablation instruments and generators.
Steve has worked at Covidien for the past seven years, and prior to that was an associate at Greenberg Traurig in their Denver, Colorado office and an associate at Sidley Austin in Dallas, Texas.
Herbert H. Finn concentrates his practice on all aspects of patent, trademark and copyright law, both within the United States and internationally, with a particular emphasis on patent litigation before the District Courts of the United States, the U.S. Courts of Appeal for the Federal Circuit and the U.S. International Trade Commission (ITC). He has litigated and tried cases in technology areas that include biomedical implants, catheters and lumens, cell phones and other mobile devices, computer input devices, computer software and operating systems, digital camera technology, Internet/networking technology, eye glasses, LCD technology, loss prevention equipment, mass transportation seating, novelty gaming equipment, pallets and shipping packaging, product packaging, pull-tabs and seal cards, tablets and x-ray/imaging technology.
In addition to his vast trial experience, Herb has experience in obtaining and defending his clients' various intellectual property rights and in the negotiating of all types of agreements related to intellectual property including acquisitions, licenses, non-competes and non-disclosures.
With over 20 years of experience, Sangeeta’s practice includes all aspects of intellectual property litigation, prosecution and counseling, with a special focus on patent opinion practice. She represents several Fortune 500 clients for whom she provides strategic counseling and guidance on their global intellectual property portfolios.
Ms. Shah has handled numerous patent, trade secret, trademark and unfair competition cases involving parties in the chemical, software, automotive and metallurgical industries on such matters as injection molded polyethylene terephthalate bottles, polymer reinforcements, magnetic storage devices, emission testing equipment, touch controlled switching circuits, compression molded doors, chemical vapor deposition processes and cutting tools. She has also litigated design patent and copyright infringement cases in such diverse areas as architectural building designs, automotive parts and consumer products.
Sangeeta is also the Co-Chair of Brooks Kushman’s Post Grant Proceeding practice and is actively involved in post-grant proceedings before the U.S. Patent and Trademark Office. Such involvement includes coordinating strategies across post-grant proceedings, co-pending litigation, product engineering, licensing, and patent prosecution. She actively counsels clients regarding reexaminations, Inter Partes Review proceedings and Covered Business Method proceedings.
Through her opinion and prosecution practice, Ms. Shah has extensive experience with chemical and mechanical technologies, in the areas of catalysts, food science, packaging, analytical instrumentation, dietary supplements, diagnostic kits, adhesives, plastics, therapeutics and metallurgy.
GAEL DIANE TISACK is Vice President of Legal Affairs and Intellectual Property at Terumo Cardiovascular Group and Terumo Americas Holdings in Ann Arbor, MI. She previously served as Vice President of Regulatory, Legal and Clinical Affairs at Terumo Cardiovascular Systems Corporation. Prior to this, Ms. Tisack was the patent counsel for Terumo CVS for two years and the IP Manager for Ross Controls, an industrial valve company. Before that, she was an associate at Brinks, Hofer, Gilson & Lione drafting patent applications and intellectual property transaction agreements for three years. Ms. Tisack received a BS and MS in Mechanical Engineering from the University of Michigan and worked for Ford Motor Company in that capacity for 11 years. She returned to the University of Michigan and received a JD with honors in 1999.
As Corporate- IP counsel for Tate & Lyle Ingredients Americas (headquartered in London, England), Sara is responsible for mobilizing innovation, directing IP strategy, building, managing, protecting and leveraging Tate & Lyle’s worldwide patent assets for the Specialty Food Ingredients, Innovation & Commercial Development, Bulk Ingredients and Food Systems business units. She is also involved in various aspects of corporate IP practice, including IP agreements, technology licensing, IP due diligence for M&A transactions, open innovation matters and IP dispute resolution. Prior to joining Tate & Lyle, she was a partner in the IP group of the national law firm of Quarles & Brady. She is a registered patent attorney with over 15 years of patent prosecution and complex portfolio Management experience, specializing in the biochemical and biotech industries. She earned a B.S. in biochemistry from Trinity University in Texas, a Ph.D. in Biochemistry from the University of Notre Dame and a law degree from Marquette University. Besides her children, one of her prized accomplishments as an attorney was being invited to speak at the National Academy of Sciences in 2004 to share her expertise with the nation's policy makers in the area of patenting structural genomics and proteomics.
Anne Burkhart has been registered before the USPTO since 1992. Anne earned a Bachelor of Science in Physics from the University of Cincinnati and a Juris Doctorate from the John Marshall Law School. Anne provides IP portfolio management and evaluation services for Medela. A key aspect of Medela’s success is a relentless focus on research-based medical technology. Medela produces products and innovations related to Breastfeeding and Medical Vacuum Technology. Medela was founded in 1961 by Olle Larsson. Since then, the company manufactures its key products in Switzerland and the USA and has further subsidiaries in Europe, North America and Asia. The company employs over 1000 people worldwide.
Adam B. Strauss is Chief Intellectual Property Counsel for Stryker Corporation in Kalamazoo, Michigan. Stryker is one of the world's leading medical technology companies, whose products include implants used in joint replacement, trauma, and spinal surgeries; surgical equipment and surgical navigation systems; endoscopic and communications systems; neurovascular products; patient handling and emergency medical equipment, and other medical devices used in a variety of specialties. Adam and his team advise Stryker’s divisions on IP matters, manage IP agreements and due diligence in business development, and support IP litigation. Before arriving at Stryker in 2007, he was a member of the Dykema law firm in its Bloomfield Hills, Michigan office. There, his practice included IP litigation; patent and trademark prosecution; and IP counseling and opinions. Prior to joining Dykema, Adam served from 1998-2000 as a law clerk to the Honorable Paul D. Borman, United States District Judge for the Eastern District of Michigan. Adam graduated magna cum laude from Wayne State University Law School in Detroit, Michigan in 1998. From 2013-2014, Adam served as the Chair of the State Bar of Michigan’s Intellectual Property Law Section.
Before becoming an attorney, Jeff worked in R&D, quality systems and regulatory affairs positions at large, international medical device companies, as well as a start-up medical device company. The breadth and depth of experience gained along the way affords Jeff an intimate knowledge of the industries he practices in, and further enables Jeff to quickly understand even the most complex inventions and easily relate with inventors to maximize patent protection. His industrial background in a range of positions provides Jeff with a unique insight into his clients’ businesses and strategies, allowing him to gain quickly, and maintain, the trust and respect of his clients.
Jeff’s industrial knowledge base covers various technologies, including: minimally invasive testing devices, in vitro testing methods and devices, testing hardware and software for analysis of analytes contained in fluids, glucose meters, software, applied algorithms and business methods, as well as a love of mechanical devices—a product of having grown up in a North Dakota farming community.
In addition, Jeff is a U.S. Army Veteran, having served during Operation Desert Storm and beyond.
Nathan Weber’s practice focuses on patent portfolio analysis and strategic development. Mr. Weber’s experience combines fifteen years of preparing and prosecuting patents with extensive knowledge litigating design and utility patent cases to counsel clients ranging from one person start-ups to divisions of Fortune 500 companies. In his role representing acquiring companies seeking to integrate products and IP into their existing businesses, his practice has led to a thorough understanding of a diverse array of technology areas ranging from electromagnetic navigation, microwave ablation, and capsule imaging techniques to the software and user interfaces driving these technologies. Navigating clients through the daunting task of new product launch, Mr. Weber’s practice has been integral to advising clients of the potential for litigation, putting in place the appropriate opinions of counsel, and developing legal strategies and positions that have ultimately proven successful in litigation and avoiding litigation entirely. These efforts resulted in Mr. Weber being one of just 25 IP attorneys listed in the 2015 BTI Client Services All-Stars report offering elite service to clients.
Admitted to practice in New York, the U.S. District Courts for the Southern and Eastern Districts of New York, and the United States Patent and Trademark Office, Mr. Weber went to law school at St. John’s University School of Law, graduating in 2002 and earned his undergraduate degree in Marine Engineering Systems from the U. S. Merchant Marine Academy in 1997. Mr. Weber is a member of the NYIPLA, AIPPI, and AIPLA where he serves on the Electronic and Computer Law and the Emerging Technology committees.
Since the inception of his legal career, Alan has specialized in intellectual property litigation. His 40 years of experience have included jury and bench trials throughout the United States for both plaintiffs and defendants in every sort of intellectual property case. He has tried cases dealing with copyright, contract, interference with contract, libel, patent, trademark, trade dress and trade secret.
Alan has a number of multimillion-dollar jury verdicts in diverse technologies to his credit, including a $31 million jury verdict in an interference with a contract case. Recently, he and the Carlson Caspers team of lawyers won a $30 million settlement for a client in a patent case. In 1991, Alan was name one of "Minnesota's Winningest Trial Lawyers," and is consistently nominated as a SuperLawyer® in Minnesota Law & Politics magazine. He is listed in every edition of Best Lawyers® in America from 1991 to the present. During 2003, Alan was the first patent attorney in Minnesota to be inducted as a Fellow into the American College of Trial Lawyers. In 2009, he was honored by Minnesota Lawyer magazine as "Attorney of the Year." In 2010, Best Lawyers publication named Alan as "Lawyer of the Year 2010, Intellectual Property Law - Minneapolis."
In addition to his trial work, Alan counsels clients on general intellectual property issues from a litigation viewpoint and gives lectures on various areas of intellectual property law.