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 Prosecution Strategy for the Global Market
Strategies for Dealing with NPEs - Fight or Flight
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
VP & Director of Intellectual Asset Management
John is a member of the firm’s Intellectual Property section. He focuses his practice on patent licensing and counseling.
Before coming to Shook, John served as associate general counsel at Microsoft Corporation, where he led a team that analyzed patents for conflicts, outbound licensing, litigation support and risk mitigation. He also completed a two-year international assignment for Microsoft, handling intellectual property matters originating in Europe, the Middle East and Africa. In addition, John taught a class on intellectual property licensing at Seattle University School of Law as an adjunct professor from 2005 to 2011.
John graduated from the George Washington University Law School, where he worked as notes editor of The Journal of International Law and Economics and on the publication staff of AIPLA Quarterly Journal. He received his bachelor’s degree in mechanical engineering from Rice University, where he served as president of the Rice Engineering Association and the American Society of Mechanical Engineers, Rice Chapter. While in law school, John worked at the U.S. International Trade Commission as well as the U.S. Court of Claims for the Honorable Wilkes C. Robinson in Washington, D.C.
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.
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.
Teresa J. Wiant is Senior Intellectual Property Counsel at Weyerhaeuser Company. Teresa provides strategic and comprehensive intellectual property counseling for technology functions, marketing teams and management. Teresa has extensive experience in IP portfolio management, patent procurement, drafting and negotiating patent and technology license agreements, selection and acquiring of trademark rights, enforcement and defense of IP rights, advertising review, as well as general IP related advice and counsel. Ms. Wiant holds a BS degree in Chemical Engineering from West Virginia University and a JD from the University of New Hampshire.
Intellectual Property Attorney with three years of experience conducting intellectual property due diligence analyses. Of note, provided buy side support in Emergent acquisition of Cangene Corp. (2014), in Emergent acquisition of EV-035 series from Evolva Holding SA (2014), and in Emergent acquisition of Healthcare Protective Products Division of Bracco Diagnostics In. (2013).
Five years of experience drafting and prosecuting life science and medical device patents in the corporate and law firm settings, two years litigation experience, named attorney on 25 U.S. patents, managed extensive worldwide trademark and patent portfolio, provided intellectual property training, and counseled clients on freedom to operate.
Specialties: Bioscience and Biodefense; technologies including protein, antibody, antibody scaffold, and small molecule; Intellectual Property Due Diligence; Patent Prosecution; Freedom to Operate and Patentability Analysis; Trade Secret Protection; and IP Litigation Support.
Tim Casey is a multidiscipline intellectual property and technology law attorney who often acts as a one stop IP shop for his clients, typically small to mid-size companies, by serving as their general counsel or IP/technology counsel. His practice also includes patent opinion, preparation, prosecution and monetization, strategic planning, and privacy, as well as trademark preparation, prosecution, and enforcement for startups to small businesses to large, international corporations. Additionally, he manages corporate due diligence support and technology transactional agreements. Prior to entering private practice, Tim spent his career creating and managing technology and intellectual property, then monetizing that technology and IP, whether through license, sale, or litigation. After more than a decade in-house in Silicon Valley and Washington, D.C., at technology companies; five years managing the IP and technology law department of a Wall Street firm, handling very large corporate transactions, licenses, and patent litigations; and seven years co-founding and co-running an IP-focused startup business services firm, he now represents clients across all of these areas. Tim has written and prosecuted thousands of patents worldwide across technologies such as electrical/electronics, computer science, mechanical, physics, and industrial. He has written business and technology contracts for companies ranging from entrepreneurial startups to Fortune 500 companies. Tim has registered trademarks and copyrights for individuals and companies and managed portfolios of 10,000 or more trademarks and many thousands of copyright registrations. He has advised individuals on how to license and/or litigate single patents and managed litigations of large portfolios and involving hundreds of millions of dollars in damages. He has advised clients on privacy, Internet, and strategic issues and helped to negotiate the language in U.S. and European legislation, as well as international treaties. Tim serves as a guest lecturer at Carnegie Mellon University, Santa Clara University, UC Berkeley, University of Nevada, Reno, and a number of other colleges and universities.
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.
Danan is General Counsel and a member of the executive team at TUNE, Inc. 500's 88th fastest-growing company in 2014. TUNE (www.tune.com) creates Software-as-a-Service (SaaS) products to help marketers manage performance advertising relationships across mobile and desktop. Danan's team manage's TUNE's IP portfolio, and additionally oversees corporate law, M&A, employment law, privacy compliance, equity compensation, tax, licensing agreements, and more. TUNE is based in Seattle and has offices in San Francisco, NYC, Dallas, Tel Aviv, Seoul, Berlin, and London.
With a talented team, James provides strategic counsel on several technology platforms at Otter Products, LLC, including OtterBox and LifeProof brands and products. As well as being responsible for the preparation and prosecution of IP in those and other technology platforms, Jim also provides competitive analyses and landscape information helping Otter Products maintain its global lead in the protective case industry. Prior to joining Otter Products, Jim was in private practice with Birch Stewart, Kolasch and Birch in Falls Church, Virginia. Jim holds bachelor and master degrees in electrical engineering from Utah State University and University of Utah, respectively, as well as a JD from Ave Maria school of Law in Ann Arbor, Michigan.
Malcolm Duncan is Director of IP at SRI International, the pioneering research institute that has spawned scores of Silicon Valley startups. The seed asset of each startup is a patent portfolio that begins with SRI’s fundamental research. It is then built to capitalize on applications of the technology to the marketplace.
Mr. Duncan brings a diverse expertise to SRI’s commercialization ventures. His background includes a career as a professor and researcher in particle physics, litigation practice on Wall Street, and IP practice in New York and Chicago law firms. He holds a bachelor’s degree in mathematical physics from Edinburgh, a doctorate in theoretical physics from Oxford, and a law degree from the University of Minnesota Law School.
Before joining Benemilk Ltd, as a director for the Invention Development Fund (IDF) at Intellectual Ventures (IV), Dr. Wan used her legal, scientific, and business experience in all aspects of the invention capital investment process from technology assets creation, evaluation and acquisition, IP portfolio management, technology startup, partnership and joint venture formation, to technology licensing and commercialization.
Previously, Dr. Wan has worked as a patent attorney at the Seattle law firm of Christensen, O'Connor, Johnson, Kindness (COJK) and as a researcher in both academic and industrial labs researching and developing cancer therapeutics. As a co-founder of pharmaceutical start-up, Thermopeutics LLC, Dr. Wan negotiated technology licenses of the "thermogel" patent portfolio and raised venture capital funding. Dr. Wan also served as a Legislative Fellow for Senator Maria Cantwell at Washington D.C.
Dr. Wan earned a bachelor's degree and a master's of medicine from Beijing Medical University, a master's degree in chemistry and a Ph.D in organic chemistry from Clark University, and is a graduate of the University of Washington, School of Law. Dr. Wan is a member of the Washington State Bar Association Legislative Committee, a board member of the Licensing Executive Society Seattle Chapter and Washington State Patent Lawyers Association, and on the advisory board of the Washington State Life Sciences Discovery Fund. She has published in numerous scientific journals, is a prolific inventor and is a frequent speaker on topics of law, science, and business.
Susan Brye is director, corporate counsel for Starbucks Corporation. At Starbucks, Ms. Brye heads a team responsible for intellectual property, real estate and commercial litigation. Prior to joining Starbucks, Ms. Brye was Assistant General Counsel, Vice President for JPMorgan Chase & Co/JPMorgan Chase Bank and managed commercial, corporate governance and intellectual property litigation, as well as matters relating to the acquisition of Washington Mutual Bank where she was First Vice President & Senior Counsel. Prior to moving in-house, Ms. Brye was a partner in the Seattle office of Lane Powell, PC, representing institutional lenders and secured creditors in business bankruptcies and reorganizations, commercial litigation and monetization of intellectual property.
Darcy Shearer is a Senior Corporate Counsel at Expedia and is responsible for litigation and disputes, as well as proactive risk management, for company matters that involving intellectual property, commercial and consumer disputes. Prior to joining Expedia, Ms. Shearer was Corporate Counsel for Nordstrom, Inc. In that role, Ms. Shearer managed a similar case load of intellectual property, commercial and consumer litigation. Prior to that, Ms. Shearer was Corporate Counsel at T-Mobile where she managed consumer class action litigation and provided advice on mitigating risk in consumer facing policies. Ms. Shearer was a litigation associate at Davis, Wright Tremaine in Seattle and at Ropes & Gray in Boston, MA. She was a three-time law clerk, clerking for the Honorable Robert R. Beezer on the Ninth Circuit Court of Appeals, the Honorable Thomas S. Zilly, U.S. District Court, Western District of Washington, and the Honorable Alan C. Kay, U.S. District Court, District of Hawaii.
Tom Duston is a hands-on trial lawyer who focuses on patent litigation for some of the world's most sophisticated companies. With nearly thirty years' experience, Mr. Duston has been lead counsel in more than 60 patent infringement matters in U.S. Federal courts. Mr. Duston is praised by clients and adversaries alike for both his creativity and tenacity as a trial attorney. Mr. Duston has represented Amazon.com, Groupon, Abbott Laboratories, CDW, Newegg, T-Mobile, Charter Communications, Express LLC, GE Aviation, TRINOVA (now part of Eaton), Russell Athletic, Raytheon, Home Depot, Classified Ventures, as well as Zappos.com, to name but a few.
Leading Lawyers, a division of the Law Bulletin Publishing Company, has named him a Leading Lawyer in IP Litigation and profiled him in its September 2014 edition of Leading Lawyers Magazine. U.S. News and World Report has repeatedly listed him as among “The Best Lawyers in America” in the practice area of Litigation - Intellectual Property. Thomson Reuters has repeatedly identified him as among the “Top 100” attorneys in Illinois and named him to the Illinois Super Lawyers list. American Lawyer Media (ALM) and Martindale-Hubbell selected him as a "Top Rated Lawyer in Intellectual Property.” The IP Stars Survey (fka the World IP Handbook and Survey) named him an "IP Star.” He has authored a number of articles in the areas of patent and trade secret litigation. He has been awarded a Martindale-Hubbell® AV Peer Review Rating™. Earlier in his career, Mr. Duston was named by the Law Bulletin Publishing Company as one of "Forty Illinois Attorneys Under 40 to Watch,” a list of the State’s most talented and well-regarded lawyers.
Cory Van Arsdale is SVP of Global Licensing at Intellectual Ventures, where he manages the worldwide sales team focused on licensing, divestitures and partner management.
Mr. Van Arsdale has 29 years of experience as a general manager, business development and revenue generation professional, acquisitions integration specialist and intellectual property/technology transactions lawyer.
Prior to joining Intellectual Ventures in 2010, Mr. Van Arsdale was co-principal at Van Arsdale Yeager LLC, a business consultancy emphasizing intellectual property, acquisitions integration, FDA regulatory affairs, start-ups, business model and sales strategy, and business development. Mr. Van Arsdale’s particular focus was in the areas of software, online media, video games and mobile.
In his career, Mr. Van Arsdale has held positions at Microsoft, Apple Computer and Sun Microsystems in various legal, management and business development positions, including general manager of Microsoft’s online services business development and running its mobile and in-game advertising subsidiaries. He has also taught at the USF and UW law schools. In one of his more interesting deals, Mr. Van Arsdale wrote the agreement to license “Start Me Up” from the Rolling Stones for the Windows 95 advertising campaign.
Mr. Van Arsdale received his bachelor’s degree in economics from the University of California and his J.D. from the Santa Clara University School of Law. He is currently on the board of advisors of RootMetrics and Parllay.
Stephen is currently Senior Corporate Counsel in T-Mobile’s Litigation Group. At T-Mobile, he manages patent and other intellectual property litigation and provides strategic counseling on various intellectual property matters. Prior to joining T-Mobile, Stephen served as Assistant General Counsel at Microsoft Corporation where he managed U.S. and international patent litigation in Microsoft’s Litigation Group dating back to 2001, and later handled various patent counseling, dispute resolution, and licensing related issues as part of Microsoft’s Innovation and Intellectual Property Group. As the second patent litigator hired at Microsoft, Stephen has been responsible for many large-scale and high stakes patent litigation matters, including the Lucent v. Microsoft series of cases that are cited to frequently in the context of patent damages reform. Prior to Microsoft, Stephen practiced at Latham & Watkins in Silicon Valley, California, where he also focused on patent litigation and other intellectual property disputes. He is a graduate of the University of California, Berkeley, and the UCLA School of Law.
Steve Pollinger is the Managing Principal of McKool Smith's Austin office. He is a trial lawyer and registered patent attorney with more than 20 years of experience handling patent cases and other intellectual property litigation. Steve’s courtroom victories include cases involving diverse software, electronics, and medical device technologies, among others. He holds a master’s degree in electrical engineering, which allows him to understand the disputed technologies and to reduce the disputes to explanations and themes that are readily understood and compelling in the courtroom. Steve also participates in patent validity hearings before the U.S. Patent Trial and Appeal Board. He previously served as a Judicial Clerk to the Honorable S. Jay Plager at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.
Ken has more than 15 years of experience in legal and business positions relating to the protection and monetization of patented technologies with a heavy emphasis on semiconductor technologies. In his role as Vice President, Licensing, he is responsible for overseeing all matters relating to the licensing of Tela’s extensive patent portfolio, including negotiating and executing patent license agreements.
Before joining Tela, Ken was a licensing executive at Intellectual Ventures where he was responsible for all aspects of negotiating licenses with numerous companies in Asia and the United States. During his 6 years at Intellectual Ventures as a licensing attorney and licensing executive he played a major role in establishing and executing licensing strategy with respect to the semiconductor and consumer electronics industries.
Earlier in his career, Ken represented clients in patent litigation, licensing and other patent related matters as a partner at Perkins Coie LLP and as an associate at both Kirkland & Ellis LLP and Wilson Sonsini Goodrich & Rosati. Prior to his entry into private legal practice Ken served as a submarine officer in the United States Navy.
He holds a J.D. from Harvard University and a B.S. in Systems Engineering from the United States Naval Academy.
In his role as managing attorney for Wizards of the Coast, a subsidiary of Hasbro, Inc., Nick supports Wizards' corporate initiatives and strategies for its awarding winning brands: Magic: The Gathering, Dungeons & Dragons, Duel Masters and Avalon Hill and oversees its day-today legal operations including intellectual property management and enforcement. Nick has taught the Intellectual Property Licensing Lab at Seattle University School of Law since 2010, and has also taught at the University of Washington School of Law.
Prior to joining Wizards of the Coast, Nick was the senior attorney with the Hughes Media Law Group providing legal counsel to clients on a variety of intellectual property issues including strategic business development, gaming, complex commercial transactions, promotions, marketing and enforcement. Nick also served as the intellectual property licensing manager for Microsoft Game Studios working on franchises such as Halo, Gears of War, Forza Motorsport and Project Gotham Racing. Additionally, he oversaw Microsoft Game Studios' music strategy and cross-group music initiatives with Xbox Music.
In addition to Wizards of the Coast, Nick is a past Chair of the Northwest Chapter of the Copyright Society of the United States of America, a member of the Washington Lawyers for the Arts and is a speaker on areas of digital games, digital media and intellectual property.
Lewis is co-founder and partner of Lee & Hayes specializing in IP counseling, IP portfolio development, and commercialization of IP. The firm has developed particular expertise in computer software and hardware, internet-related technologies, network software and hardware, telecommunication, cryptography, audio/video applications, microprocessors, semiconductor technologies, biomedical devices, aerospace, and business and financial methods. Lee & Hayes recently received its fourth consecutive annual ranking by Intellectual Asset Management Magazine (IAM) as the #1 overall law firm for securing the highest quality patents. Lewis was also ranked as one of the top 1000 patent practitioners worldwide and one of the top 300 IP strategists worldwide by IAM.
Focusing his practice on building global IP portfolios, Lewis advises clients on worldwide IP strategies, and strategic and competitive analysis of IP assets. He is a frequent speaker on IP topics, both domestically and abroad. He recently spoke on IP and the internet at Harvard University’s John F. Kennedy School of Government, and on Growing Exports and Global Relationships at the Technology Alliance Washington Innovation Summit in Seattle, WA. Other speaking engagements include the Center for Advanced Study and Research on IP (CASRIP) at the University of Washington, and law schools of Beijing University (Peking University) and China University of Political Science and Law (CUPL). He has also spoken at various professional and university sponsored events in India, including the International Conference on IPR in Bangalore and the International Seminar of IP Litigation in Hyderabad. He is a past adjunct professor at Gonzaga University’s School of Business.
Lewis is also the co-founder and CEO of IP Street, Inc., a subscription-based online service providing tools for business executives, inventors and IP professionals to search, review, manage and analyze patents and patent portfolios.
He has co-authored two books, Intellectual Property for the Internet in 1997 and Managing Intellectual Property Rights in 1993, as well as recent articles such as “Focus on Patent Quality, Not Quantity,” The National Law Journal, February 7, 2011, and “The Whys and Hows of Patent Landscaping,” IP Value 2011: Building and enforcing intellectual property value – An international guide for the boardroom, 81-84.
Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian and international experience in all facets of intellectual property law and business. He is a former patent litigator with a national IP boutique firm and the former General Manager of IP Licensing at Microsoft Corporation where he spent 15 years. The prestigious British magazine Intellectual Assets Management (IAM) recently named him for the fourth consecutive year as one of the World’s Leading Intellectual Property Strategists.
Mr. Carbonneau is currently CEO of TANGIBLE IP, LLC, a patent brokerage and strategic intellectual property advisory firm, focusing on IP strategies, patent sales and licensing programs. Since he founded the firm in 2011, Mr. Carbonneau has brokered the sale of over 2000 patents, returning tens of millions of dollars to patent owners and inventors.
Mr. Carbonneau is also the founder and principal of THE POINT LAW GROUP, PLLC, a boutique law firm where he advises technology and clean tech companies with an emphasis on business and intellectual property related counseling & transactions. He is an adjunct professor for the University of Washington's Graduate Program in Intellectual Property Law & Policy since 2009, where he teaches courses on IP Licensing. He also serves on the Executive Committee of the Washington Bar Association Intellectual Property Section.
Finally, Mr. Carbonneau is a Venture Partner and strategic advisor to Cycle Capital Management, an early stage clean tech venture capital firm with close to $250M under management, and a Special Consultant for IP Strategies & Licensing to one of the largest startup incubators in Canada. He also sits on the Board of Directors for Waterford Battery Systems, Inc., which is developing a disruptive non lithium based battery platform and for HGI industries, Inc. a patented ultra violet hydroxyl generating technology at the forefront of high volume odor processing, air-decontamination and air-purification.
Mr. Carbonneau is a frequent guest speaker locally and internationally on the subject of intellectual property strategy, patent monetization, innovation and licensing and how they relate to business. Mr. Carbonneau is also an inventor himself and holds US international patents around multimedia technology.
Bart Eppenauer rejoined Shook after serving as Microsoft’s Chief Patent Counsel for more than a decade. In that role, Bart led the Patent Group in the Legal and Corporate Affairs department, where he developed Microsoft’s patent portfolio of more than 35,000 issued patents worldwide and managed a team of more than 100 patent professionals offering patent counseling and product development support across all of Microsoft’s business and research divisions. Under Bart’s guidance, Microsoft’s high-quality patent portfolio resulted in an extremely successful IP licensing program and received top rankings in IEEE Spectrum, BusinessWeek and The Patent Board. Bart’s practice at Shook focuses on strategic IP counseling and analysis, pre-litigation and litigation strategy, complex multilateral IP transactions and license agreements and IP policy advocacy. Bart has extensive experience in IP transactions and scenarios, including product development agreements; patent licensing (including patent pools); open source software licensing, usage and contributions; industry standards usage, participation and contributions; strategic alliances, joint development and collaboration agreements; and due diligence involving IP asset evaluation. He works closely with government and judicial officials, academics and industry leaders worldwide on IP policy issues, including ongoing judicial and legislative patent reform efforts. Bart is a frequent author and speaker on a range of IP issues, with particular expertise in patent subject matter eligibility of computer implemented inventions. He has been published on the IAM blog and had the most-read stories of both 2014 and 2015. He has also been published in Inside Counsel, Patently-O, Managing Intellectual Property and IP Watchdog.
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.
Ramsey Al-Salam focuses on intellectual property litigation, with a particular emphasis on patent litigation. He has been lead counsel for large and small clients in cases throughout the country. He works hard to ensure that he understands his clients' goals, and pursues them in an efficient and effective manner.
Publications such as Chambers USA (Band One), Best Lawyers in America and Washington Super Lawyers have repeatedly listed him as a leading practitioner in his field. Best Lawyers, for example, listed him as Seattle Intellectual Property Litigator of the Year for 2011 and 2012 and Patent Litigator of the Year for 2014. In addition to his litigation work, Ramsey is a frequent speaker on intellectual property and litigation topics, and has been an adjunct professor at Seattle University, teaching patent and trade secret law, for more than 10 years.
John Denkenberger is co-managing member of his firm and the head of the litigation practice group at COJK, a Seattle-based law firm providing legal services in all aspects of intellectual property law. John has successfully litigated patent, trademark, trade dress, trade secret, and unfair business competition issues in both federal and state court nationwide. John co-founded and is an active member of the firm's post-grant review practice group.
Elana Matt is a Director of Legal Affairs at T-Mobile USA, Inc. and is primarily responsible for managing patent litigation and licensing matters for the company. Ms. Matt is also responsible for proactive risk management and providing general legal advice relating to all aspects of intellectual property, including patents, trademarks, copyrights, and trade secrets. Prior to joining T-Mobile USA, Inc., Ms. Matt was a patent litigator with the law firm of Perkins Coie where she litigated cases involving mechanical, medical, hardware, and software technologies. Ms. Matt also practiced law at an intellectual property boutique in Colorado Springs, Colorado, focusing on intellectual property litigation and patent prosecution. After several years in private practice, Ms. Matt joined the United States Army JAG Corps. During her tour with the Army, Ms. Matt gained extensive trial experience as a senior trial counsel and did more push-ups than she cares to remember. Ms. Matt earned a Bachelor of Science degree from University of Wisconsin-Madison and holds a J.D. degree from Marquette University Law School.
Barry Stolzman is Head of Patent Prosecution for BlackBerry Limited, formerly known as Research in Motion. Previously with Intellectual Ventures and Pioneer Electronics, Barry has 20 years of experience specializing in patent licensing, patent acquisitions and IP strategy.
Chris is a patent attorney who has been an engineer and inventor before practicing at a law firm and in corporate practice.
His primary responsibilities include managing Nintendo's patent assets, providing intellectual property counseling to business groups, open source policy and compliance, third-party IP dispute resolution, and developing and implementing patent strategy in partnership with NoA's parent company.
David Hetzel held the role of Senior Director of Sales & Licensing at Hewlett-Packard. His responsibilities included monetizing HP patents through building collaborative, constructive working relationships and forging innovative deal structures.
Before joining HP, David constructed patent licensing programs and led cross-functional teams at Intellectual Ventures in devising new product offerings /customer solutions for IV’s corporate clientele. IV is the largest patent aggregation fund in the world, with over 70,000 patent assets acquired since its inception in 2000 and $6B in committed capital, and has succeeded in realizing some $3B in licensing revenues. Previously he spent nearly a decade at Motorola supporting major nine-figure cross-licensing deals, pioneering adjacent market licensing strategies and driving efforts to establish/grow the company’s first-ever IP monetization program via patent divestitures. Prior to Motorola Mobility, David held positions at McKinsey & Co., KPMG consulting and the Canadian Foreign Service (international trade/commercial development).
Mr. Hetzel holds a law degree from Illinois Institute of Technology Chicago Kent and a bachelor’s degree from Stanford. He studied and completed coursework at the Universidad Iberoamericana (Mexico City).
Laurent Masson joined the Avanade Legal Group in 2011 in Chicago as a Vice-President, Global Commercial and IP lead. In his role he also managed the North America and the APAC Legal teams. In 2012, he was appointed as Senior Vice-President and Deputy General Counsel. Prior to joining Avanade, Laurent worked for Microsoft between 2003 and 2011. In 2003, Laurent moved to Istanbul to manage the Microsoft Legal and Corporate Affairs department in the Middle East and Africa region. In March 2007 he became the Director for Anti-Piracy and Digital Crimes for Microsoft in Europe, Middle East and Africa (EMEA). From 2000 and 2003 Laurent worked for the EMEA legal department of Arthur Andersen where he was in charge of the legal support to the consulting activities. Before these in-house experiences, he worked from 1993 for law firms and patent attorneys in France (Cabinets Patrick Mollet-Viéville and Alain Bensoussan) and in Japan (Cabinet Ota & Associates) specializing himself in computer and intellectual property laws. He holds a Master degree in Private law (University of Paris - Paris II), a Master degree in industrial property (University of Paris - Paris II) and he is graduated from the Institut d’Etudes Politiques de Paris (Sec. Eco-Fi). He is a member of the Paris Bar.
Niklas Östman is currently a Senior Director of Licensing at Microsoft in Redmond, WA. Before that he was most recently the Head of Patent Licensing for Nokia Corporation playing a central role in creating the largest patent licensing program ever by a European company. Earlier in his career, he has worked both in-house and as a partner at a top Nordic law firm. Regarding patent licensing specifically, he has negotiated hundreds of patent licenses ranging from multi-billion dollar deals to royalty free ones and from those covering one patent only to those covering up to 460.000 patents globally.
He has also extensive dispute resolution experience ranging from multi-billion infrastructure arbitration to ground breaking IPO liability litigation. As to patent litigation, he has been involved in patent lawsuits in the UK, Germany, France, Italy, the Netherlands, Sweden, Finland, Norway, US (TX, VA, CA, WI, DE and US ITC), South Korea, Taiwan as well as in China (Beijing and Shanghai). He has also acted as a trial counsel in patent cases in Finland obtaining several land mark decisions on issues such as the doctrine of equivalence (non-literal infringement), availability of preliminary injunctions and patents for biochemical synthesis routes.
As to standard essential patents in particular, he has participated in 100+ lawsuits globally involving essential patents, dozens of patent pools, several anti-trust efforts and also has extensive experience regarding the licensing thereof while having to balance between, on one hand, being the licensor for one of the strongest portfolios in the industry and, on the other hand, being a licensee having to clear IP rights for the sales of up to 500.000.000 cellular devices annually.
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.
Matt Eccles is currently Acting General Counsel of Rhapsody International LLC and VP & Deputy General Counsel of RealNetworks, Inc. Matt has particular experience in patent monetization, (including instigating and completing the sale of RealNetworks’ patent portfolio to Intel), patent licensing and working on the defensive end of patent infringement lawsuits. Matt qualified as a solicitor in England in 2000 and was admitted to the WA Bar in 2011. Before joining RealNetworks and Rhapsody, Matt worked in-house for T-Mobile in the UK and for the Denton Hall law firm in London.