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.
APPROVED FOR 6.5 HOURS OF CALIFORNIA MCLE CREDITS!
Credits not claimable for MCLE in legal ethics, elimination of bias or competence issues.
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
Alex’ twenty plus year career draws from a range of executive positions in industry and the intellectual property fields, These experiences focus upon key perspectives: strategic planning and implementation, corporate growth, IP management and evaluation, and a data-driven approach to high-stakes and recurring decisions. At Questel, the consulting and analytics practice serves corporate executives, counsel, and investors seeking improved IP strategies, decision processes, outcomes and value.
Alex holds an MBA in Executive Leadership & System Design from Villanova Universit and a BA of International Studies (Economics & SE Asia) from the American University.
Milan Patel has over 16 years of experience with patent portfolio development and management, client counseling, licensing, IP strategy and patent acquisition covering various complex technologies, including Wireless, Audio/Video, Internet and Networking technologies. He was a major contributor in the development of Apple’s Wireless patent portfolio, Qualcomm’s OFDMA patent portfolio, Nokia’s CDMA patent portfolio and TV/Com’s MPEG-2 patent portfolio. He has extensive experience in connection with managing and counseling business and engineering clients, patent mining, drafting and presenting claim charts, evaluating and mapping technology, and finding gaps in IPR coverage. He also has experience in substantial patent preparation and prosecution, managing inside and outside counsels and third party portfolio analysis for licensing, acquisitions, assertions, and litigation.
David Diamond has worked for MannKind Corporation since January 2000. With a Ph.D. in Molecular Biology from Stony Brook University, he started his career there as Lead Scientist, Immunology & IP Coordinator. His career trajectory then focused more and more heavily on intellectual property until he reached the position he holds today, as Vice President of Intellectual Property. A significant benchmark in this career trajectory was taking on responsibility for the inhalable dry powder patents in 2003 and building a portfolio including formulations, devices, methods of treatment, and methods of manufacture covering the platform technology and our lead product, AFREZZA®, in the US and major and regional markets around the world
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.
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.
Scott Trask is Director of Intellectual Property at Newport Corporation in Irvine, CA since 2004. His work includes IP portfolio development, licensing, enforcement, mergers & acquisitions and IP landscape analysis.
Scott has his BA in Physics from Kenyon College, his BSME from Washington University in St. Louis, and his J.D. from Western State University College of Law. Prior to working in an intellectual property role, Scott worked for 20 years in design engineering, project engineering, and engineering management in the aerospace, marine, and photonics industries.
Kumar's responsibilities focus on increasing and maintaining the long-term value of the Endologix and its products by means of Intellectual Property (IP) Rights. Drafting and prosecuting patent applications but will likely also extend to work on a variety of other projects, including general IP counseling and patent analysis, and Patent litigation.
Draft and prosecute patent applications.
Supervise U.S. and foreign counsel engaged in drafting and prosecuting patent applications and in post-grant challenges, including inter partes review, post grant review, oppositions and appeals.
Acquire detailed understanding of the technologies, products and R&D activities of the business.
Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive IP and commercial activities, and licensing opportunities
Conduct landscape searches, patentability reviews, freedom-to-operate analyses, and patent assessments relating to R&D activities, product releases, licensing opportunities and IP acquisition.
Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements.
Foley & Lardner LLP
Foley & Lardner LLP
November 2006 – Present (8 years)|Los Angeles, Ca
Kumar Maheshwari has more than seven years of intellectual property experience in electronic patent prosecution, trademark acquisition, licensing, technology contracts and various litigation matters. Practice in the medical, mechanical, electrical and computer arts including patent prosecution, due diligence, clearance, invalidity, infringement and related opinion work, in the fields of medical devices and software.
• Provide representation to biotechnology companies such as Medtronic.
• Draft patent applications and responses related to insulin sensing and infusion pumps for Medtronic.
• Prosecute patent applications related to catheter/ stent deployment and drug eluting stent mechanisms.
• Client counseling to medical device and software companies to include IP portfolio strategies and identifying licensing opportunities.
• Drafting patentability, clearance opinions and IP licensing documents.
• Performing a comprehensive risk assessment mapping competitor patients against product landscape
• Conduct IP due diligence for an acquisition of a $250M company
• Draft 200+ new patent applications from disclosure meeting stage.
• Draft 500+ office action responses to USPTO for both domestic and foreign patent applications.
• Draft Inter Partes Review requests, patent and trademark licensing agreements, non-disclosure agreements, pleadings, claim charts for infringement and invalidity contentions.
• Prepare cease and desist letters for patent litigation cases.
John Rabena is a partner in the Washington D.C. office, and a member of the firm's Management Committee. Mr Rabena has represented clients in a wide variety of complex patent, trademark and trade secret matters in various forums, including United States District Courts throughout the country, the U.S. International Trade Commission (ITC), and the Federal Circuit. Mr. Rabena is registered to practice before the U.S. Patent and Trademark Office and has led patent matters before the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board (PTAB).
In addition to his extensive practice of district court and ITC litigation, Mr. Rabena’s practice includes license negotiation and infringement and validity opinions. He also manages an active counseling and prosecution practice and has represented and counseled clients in all major areas of computer and electronics technology. John Rabena has particular experience in the fields of computer architecture, computer networking, internet technologies, software, storage devices, semiconductor design, cellular devices and networking, and all automotive technologies. He has experience in handling ex parte and inter partes reexamination proceedings and is one of the pioneers of the firm’s Patent Office Trials Group.
Mr. Rabena also teaches trial skills with the National Institute of Trial Advocacy and Georgetown University, and is an Adjunct Professor with the University of New Hampshire Law School, where he teaches Intellectual Property Enforcement at the International Trade Commission (ITC).
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.
Lee Cheng is currently advisory counsel for the board at NewEgg. He served as Chief Operating Officer and EVP at Gibson Brands and prveiously served as NewEgg Inc's Chief Legal Officer, SVP of Corporate Development and Corporate Secretary and General Counsel.
He's a graduate of UC Berkeley Law School, where he earned his J.D. A graduate of Harvard University where he earned his SB in History and Science.
Smith has more than 16 years of legal experience primarily representing companies and organizations focused on biotechnology and pharmaceutical research and development to Heliae. Before joining Heliae, Mr. Smith held positions as Vice President of Business and Legal Affairs for Valeant Pharmaceuticals, Associate General Counsel and Head of Licensing & IP for Medicis Pharmaceutical Corporation, and Corporate Counsel for Novo Nordisk, Inc. Mr. Smith obtained his J.D. with honors from Washington University. He also holds undergraduate and graduate level technical degrees in biology, environmental science, and information systems management. Mr. Smith also previously conducted plant genetic research and completed internships with the US District Court for the Southern District of Illinois, the Office of the Vice President of the United States, and the US Patent and Trademark Office.
David is a founding partner of KPPB LLP with a practice specializing in the development, licensing, and enforcement of IP portfolios on behalf of cutting edge technology companies and leading research institutions including Caltech, NASA's Jet Propulsion Laboratory, Stanford, and UCLA. David leads a team of attorneys with backgrounds in software and electrical engineering that is working to protect the intellectual property being developed by leading companies in the areas of Big Data analytics, computational imaging, distributed database design, natural language processing, and robotics. David places a particular emphasis on crafting IP strategies that support technology licensing. To date, David’s efforts have helped his clients successfully license technology into over one billion consumer electronics products. David holds degrees in Computer Engineering and Law from The University of Melbourne and is admitted to practice in California, New York, and before the USPTO.
Sriranga Veeraraghavan is a Vice President, Legal at Xperi (formerly Tessera). Sriranga supports Xperi’s technology licensing and corporate development efforts in addition to managing Tessera’s litigation matters and post-issuance proceedings. Before joining Tessera, Sriranga practiced law at Cooley LLP and Howrey LLP and worked as an engineer at Sun Microsystems and Cisco Systems. He is a named inventor on two U.S. patents, which are based on his work at Sun.
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.
Lead SCE’s Advanced Technology Division (AT) efforts with legal, regulatory, supply management and project teams for the purposes of partnering with industry groups, academia, corporations and others to conduct research and demonstration activities. Current projects are focused in the areas of Grid Modernization, Energy Storage, Plug In Vehicles, Renewable Sources of Energy and Cyber Security. Structure and negotiate complex legal transactions while minimizing risks associated with these development opportunities.
Responsible for developing Intellectual Property (IP) plans for projects when partnering with vendors, universities or other industry partners as required, while establishing controls and monitoring plans related to intellectual asset management to protect the company’s interest.
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.
Scott Rosenbaum is Expert Counsel of Business & Legal Affairs at Mattel. He oversees Mattel’s North American consumer products licensing programs, and also negotiates licenses, celebrity endorsements, sponsorships, promotion agreements, and other transactions for many of Mattel’s own premier toy and game product lines. He previously worked at the law firm of Jeffer, Mangels, Butler & Marmaro. A graduate of Harvard Law School, Mr. Rosenbaum also holds an M.B.A. from the UCLA Anderson School. He received his bachelor’s degree in economics from Middlebury College.
Using his PhD in Biophysical Chemistry, along with 15 + years of in house counsel experience, Richard Hake creates value for companies that run intellectual property-based businesses. He specializes in start up companies, such as Metagenetics Inc. where he serves as Chief Patent Counsel, and also helps "companies in transition" to reduce general and administrative costs, implement systems as management tools, and assist management in due diligence for M&A and licensing transactions. Richard also serves on the board of Legacy Redevelopment and GHM LLC, along with providing pro bono work for non-profit start-up companies. He earned his JD from Northern Kentucky University—Salmon P. Chase College of Law.