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. A strong defensive strategy is crucial to mitigate risk.
IP leaders need to build a coherent offense/defense strategy on solid processes and tools: due diligence, portfolio evaluation, unified patent prosecution – all whilebenchmarking 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.
CLE CREDITS: Application for New York accreditation of this program is currently pending.
Financial aid policy details available on the registration page. Conference appropriate for New York Non-Transitional ("Experienced") and Transitional ("Newly Admitted") Attorneys.
KEY TOPICS DISCUSSED
Due Diligence & Portfolio Evaluation
A Unified Patent Prosecution Strategy
Defending Against NPEs - Fight or Flight?
The Price of Entry: Litigation & Enforcement
Post Issuance Proceedings - The Role In Your IP Strategy
Monetization - The New Paradigm, Harvesting Your IP
Enforcing & Defending Against Competitors & Operating Companies
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
Scott brings 18 years of global intellectual property experience and leadership along with almost 4 years as general counsel for a $350M business unit. He developed and executed consistently successful and cost effective IP strategies aligned with business objectives and technology roadmaps. His GC capabilities enable efficient handling of complex matters extending well beyond IP function. Scott is biased for action with a strong sense of urgency to identify and execute on material opportunities that make a difference.
Gaby L. Longsworth, Ph.D., is a Director in the Biotechnology/Chemical Group. Dr. Longsworth is sought out by both innovator and generic pharmaceutical companies for her insights and knowledge of intellectual property and brand product lifecycle management strategies.
A large part of Dr. Longsworth's practice is focused on representing international and domestic generic pharmaceutical companies in patent cases involving Abbreviated New Drug Applications (ANDAs) that include a Paragraph IV (pIV) certification to one or more Orange Book listed patents. She has provided strategic and technical advice in multiple ANDA patent infringement cases brought under the Hatch-Waxman Act. Dr. Longsworth has significant experience counseling clients on pIV filing strategies, including assessing the impact of data exclusivity, forfeiture issues (pre-MMA and post-MMA), label carve outs, and Patent Term Extensions (PTE).
With her extensive generic pharmaceutical expertise, Dr. Longsworth is uniquely qualified to evaluate innovator IP portfolios from a generic perspective, including method-of-use claim coverage relative to the product label, Orange Book patent listing strategies, and PTEs. She also counsels innovator pharmaceutical clients from around the world in all areas of patent procurement, including domestic and foreign patent preparation, and lifecycle management strategies.
A major aspect of Dr. Longsworth's practice involves providing opinions regarding a variety of patent-related issues. Specifically, she has rendered hundreds of invalidity, noninfringement, freedom-to-operate, and patentability opinions in at least the following areas: small molecules, therapeutic antibodies, polymorphs, crystal forms and salts, chemical synthesis, pharmaceutical formulations (including oral dosage forms, transdermal patches, injectables, ophthalmics, creams, gels, suspensions, and nasal and oral inhalation forms) and so-called pharmacokinetic (pK) patents.
Dr. Longsworth has also represented clients in patent reexamination and opposition proceedings, and has served on the Editorial Board of The PTO Litigation Center (www.ptolitigationcenter.com). She has also written on strategic reexaminations of patents listed in the FDA's Orange Book. Click here to read the full article.
Dr. Longsworth is fluent in Dutch.
Esmaeil Khaksari is a data specialist with two decades of experience in data extraction, manipulation, and presentation. He cultivates new products for Innography, Inc. a SaaS company specializing in IP business intelligence. Esmaeil recently launched Innography’s newest offering, Patent Market Tracker, a new approach in visualizing the often opaque-market of patent sales. Esmaeil also launched new products offering unprecedented cost/value: License Candidate Identification and IP Due Diligence; made possible by novel methods in AI aided, human analysis.
Prior to joining Innography, Esmaeil directed customer relations at marketing-startup Manticore, and worked as a Technology Consultant for Boston College. Esmaeil has served as an analyst and has developed original works in competitive intelligence and product strategy in a wide variety of verticals including Consumer Goods, Data Centers, and Medical Devices. He holds a B.S. in Computer Science and M.B.A. from Boston College.
Catherine Toppin is Senior Patent Counsel and Manager with the Global Patent Operation (GPO) of General Electric. She manages a team of attorneys, patent agents, and paralegals within the GPO. Her substantive legal practice focuses primarily on the strategic development and procurement of electrical, mechanical and software patent portfolios. She was recently appointed as acting IP Counsel for a $2.7 B business within the Energy Management Division of GE.
Prior to GE, Catherine worked as an associate in the Intellectual Property department of Boston-based general practice firm, handling a mix of patent preparation, prosecution, due diligence and IP litigation support matters. She also has experience as a Patent Examiner with the United States Patent and Trademark Office. Catherine graduated with a BSE in electrical engineering from Princeton University, and earned her JD from the University of Maryland, Baltimore School of Law.
Outside of work, Catherine is an active Princeton alumna. She is president of the Association of Black Princeton Alumni, and also serves on a number of boards and committees including the Leadership Council for the School of Engineering and Applied Sciences, and the National Board of the Princeton Prize in Race Relations. She remains connected to her passion for classical music and giving back in part through her service on the Board of Directors of Project Step, a classical music education program for underrepresented students in the greater Boston area.
David has over 15 years of broad experience in intellectual property issues including patent, trademark, trade secret and copyright - most recently as Chief IP Counsel for ATMI. His areas of expertise span IP portfolio management, open source software, standards, IP licensing and antitrust. He has practiced in the prosecution, transactional and litigation areas and has managed various teams of IP professionals. David earned his law degree from Pace University School of Law in 1994 and a Bachelor of Science in Electrical Engineering from Columbia University in 1988. Prior to joining ATMI, he was an IP Counsel and attorney for IBM Corporation in Yorktown, Somers and Fishkill, NY and an associate at Baker Botts (previously Brumbaugh, Graves, Donohue and Raymond) in New York City.
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.
Charles has extensive experience in the electronics, telecommunications and optics industries as a researcher, engineer and inventor having close to 20 years of industrial experience before founding Technology, Patents & Licensing in 1998. Since founding TPL/TechPats, he has focused on helping clients obtain and utilize patents by providing services that cover the combined technical, legal and business aspects of patents. Through Charles’s leadership, TPL/TechPats has created a mining methodology and proprietary software that allows for rapid and cost-effective mining of patents. Using this methodology and software, TPL/TechPats has assisted numerous companies in locating patents for acquisition and subsequent use in counter-offensive patent actions, cross-licensing and revenue generation.
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.
Frank J. Nuzzi is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey.
Frank oversees U.S. patent litigation across Siemens’ U.S. businesses. In that role, Frank supervises outside litigation counsel. Frank has experience in all aspects of intellectual property law and is a frequent CLE panelist in the field.
Prior to joining Siemens, Frank was in the litigation department of Clifford Chance where he specialized in patent litigation.
NYU School of Law, JD
Executive Editor of the Annual Survey Of American Law.
Lehigh University, B.S and M.S. in Mechanical Engineering
Engineering honor society, Tau Beta Pi.
William (Bill) Mandir is a partner in the Washington D.C. office of Sughrue Mion, PLLC, where he is a member of the Management Committee and one of the leaders of the Litigation practice. Focusing primarily on intellectual property litigation.
Mr. Mandir has handled intellectual property cases, including patent infringement and trade secret litigation, for over 20 years. He has litigated over 50 cases filed in the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts, and the U.S. International Trade Commission. Consistently named as an expert in Euromoney’s Patent Expert Guide, William Mandir has developed an outstanding reputation as both a patent practitioner and a litigator. He has significant experience as lead counsel in patent infringement jury trials, counseling, due diligence and appellate practice.
Mr. Mandir also maintains a significant prosecution practice which focuses on prosecuting patent matters in the electrical, software and mechanical arts, including reexamination, reissue applications and inter partes review proceedings before the U.S. Patent and Trademark Office.
Mr. Mandir is an Adjunct Professor with the University of New Hampshire Law School, where he teaches Intellectual Property Enforcement at the International Trade Commission (ITC).
Mr. Mandir has a special interest in Israel and is the current chair of AIPLA's Israel Committee.
Over 14 years of patent experience both in-house and in private practice
• Former Assistant Professor at Cornell Medical College conducting basic research
• Provide strategy for building IP portfolios and patent life cycle management
• Patent preparation and prosecution (over 150 applications): pharmaceutical, small molecule chemistry, medicinal chemistry, formulation/synthetic process, biotechnology, recombinant production of proteins and antibiotics, nucleic acids, immunology, treatment of diseases
• Opinions and client counseling: invalidity/non-infringement opinions, freedom-to-operate, patentability; Hatch-Waxman Act for generic drugs
• Licensing: licensing agreements, confidential disclosure agreements, material transfer agreements, consulting and collaboration agreements, supply agreements
• Due diligence: due diligence review of patent portfolio for corporate transactions
• Patent litigation: pre-litigation evaluation, legal research, motions, supporting briefs
• Supervise and training of junior attorneys and administrative staffs
Marian Underweiser is IBM's Counsel for IP Law Strategy and Policy. Dr. Underweiser develops IBM's policy on a broad spectrum of IP matters, including legislative, PTO, and judicial reform. She has worked extensively representing IBM's position on the America Invents Act throughout the legislative process, and continues to do so through current implementation efforts. Her amicus work includes IBM's briefs to the Supreme Court in Microsoft v. i4i, eBay v. Mercexchange, KSR v. Teleflex, Bilski v. Kappos, and Quanta v. LG. Dr. Underweiser has held several prior positions at IBM with responsibilities including the management and oversight of IBM's worldwide patent portfolio and management of the IP department at IBM's T.J. Watson Research Center. As a member of IBM's Corporate IP licensing team, Dr. Underweiser negotiated major IP transactions including patent and technology licenses, litigation settlements, and business line divestitures. Before joining IBM, Dr. Underweiser was an attorney at Kenyon & Kenyon, LLP an intellectual property law firm in New York.
Dr. Underweiser is a graduate of Harvard University where she received her AB in Physics. She received her PhD in Physics from UCLA, where she specialized in Condensed Matter Physics, and her JD from Columbia Law School where she was a Stone and Kent scholar. She is admitted to the United States Supreme Court, the District Courts for the Southern and Eastern Districts of New York, and the State of New York. She is a registered patent attorney and is an adjunct professor at the Benjamin N. Cardozo School of Law where she teaches an advanced course in Technology Licensing.
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.
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.
Recognized as a leading expert in the field of intellectual property, Dr. Janice M.K. Jaferian has garnered a reputation for success in global profit-and-loss management, intellectual asset management, international business, marketing and product development. Backed by over two decades of industry experience, Dr. Jaferian now lends her talents to Manitowoc Foodservice. There, she works to achieve revenue, profit and marketing share growth, all the while leading highly productive, cross-functional teams in a wide variety of industries including petrochemicals, telecommunications, business and consumer electronics, and food service equipment. She is directly responsible for overseeing the strategic management of intellectual assets and aligning technical, business and intellectual property strategies. Dr. Jaferian utilizes her expertise to create patent portfolios, handle open innovation management, assess third-party inventions, provide litigation support, and mange external counsel for patent prosecution and annuities.
Joe has been the Intellectual Property Counsel at Mitsubishi Chemical Holdings America, Inc. since May 2014. Before going in house, he was a Senior Associate in Orrick, Herrington & Sutcliffe LLP's Intellectual Property Group where he focused his practice on patent and trademark litigation since 2007. Before Orrick, Joe worked for a boutique firm prosecuting pharmaceutical patents. Joe is a 2006 graduate of the Benjamin N. Cardozo School of Law and a 2000 graduate of Columbia College where he graduated with a degree in Biochemistry.
Porter Fleming leads the firm’s Litigation Practice Group and has more than twenty five years of intellectual property litigation experience. Not only is he comfortable in the courtroom, before a Judge or jury, he has also developed a unique ability to advise senior management and in-house counsel efficiently and effectively. His varied experiences and significant results for his clients speak for themselves.
Within the Litigation Practice Group, Mr. Fleming leads a team of talented attorneys, with expertise across a spectrum of industries, and has and continues to represent a diverse range of clients, from large corporations to individual inventors and innovators. Through this practice, Mr. Fleming is known to draw upon the diverse resources of the firm, creating for each litigation a “Cabinet” of attorneys, experts and scientific advisors deeply proficient in the various legal and technical aspects of the specific case to effectively and efficiently guide the client through the legal process from the beginning to the resolution. His leadership, knowledge and experience in intellectual property law is valued by many of the nation’s leading pharmaceutical and scientific corporations.
James Markarian is Senior Counsel and Licensing Manager for North America for Siemens Corporation. He manages Siemens' outbound licensing programs and IP sales; handles incoming licensing matters and IP acquisitions; and negotiates and drafts various transactional agreements (e.g., IP licenses, JV's, Software licenses, R&D's, Agent and Service, Asset Purchase or Sale, NDA's, etc.). James provides support for Siemens' M&A activities, advises Siemens' business units regarding IP asset management as well as IP issues related to standards organizations. He has an Aerospace Engineering degree from Boston University and a JD degree from Brooklyn Law School. Before joining Siemens, he worked for Refac Corporation, and the law firms of Pennie & Edmonds; Ladas & Parry; and, Wyatt, Gerber, Burke & Badie.
Mr. Sarbakhsh is a lead IP attorney with IBM, specializing in managing, preparing, and prosecuting software-related patent applications. He leads two teams of attorneys at the IBM Patent Center, including the Watson Focus Group, a 20+ member team responsible for developing IP assets for IBM Watson, one of IBM's corporate divisions. Mr. Sarbakhsh is an active board member on the Invention Development Team for IBM Smarter Planet, where he evaluates, and assists in developing, invention disclosures covering a wide range of technologies, determines their monetization potentials, and patentability. Prior to joining IBM in 2012, Mr. Sarbakhsh practiced complex commercial litigation with a boutique firm, where he was a member of a team that secured a judgment in excess of $130 mm for a client in multiple international litigations involving claims of breach of contract and fraudulent transfers of assets.
Thomas Trempus is Chief Intellectual Counsel for Alcoa Inc. Most recently, he was General Counsel and Executive Director of Alcoa of Australia, Ltd, headquartered in Perth, Western Australia (2001-2005). Tom began his legal career in 1979 as a patent agent at a boutique patent law firm in Pittsburgh while attending Duquesne University Law School’s evening division (JD 1983). Tom was in-house patent counsel at Westinghouse Electric Corporation (1982-1987) and Kennametal Inc. (1987-1992) before joining Alcoa’s patent department. Tom was an adjunct professor of law at Duquesne’s Law School (1988 to 2001) teaching courses in all aspects of intellectual property law. Tom is a 1979 graduate of the University of Pittsburgh and served on active duty in the US Navy (1970 to 1976) as a surface sonar technician on board USS Vogelgesang DD862.
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.
Daniel has more than eighteen years of diverse cross-disciplinary medical device experience including business development, intellectual property, regulatory clearance, and in managing an array of technical and clinical R&D products and projects. Creative and independent thinker with a passion for his work.