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 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 will cover all the challenges and opportunities of this new IP landscape.
KEY TOPICS DISCUSSED
Due Diligence & Portfolio Evaluation
A Unified Patent Prosecution Strategy
Defending Against NPEs
Litigation And Proactive Enforcement
Show Me The Money... To Sell, To License, To Hit Quota?
Defending Against Infringement Claims From Operating Companies
Post Issuance Proceedings - The Role In Your IP Strategy
Building & Benchmarking Your IP Strategy: Finding True North
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
Brent Bersin is a Litigation & Dispute Services
Practice Leader in the Central Region of the
Forensic and Valuation Services practice of Grant
Thornton LLP. He is located in Houston, Texas.
Brent has 18 years of experience providing financial,
economic, valuation, damages quantification
consulting, and expert witness services to clients in
the context of intellectual property and commercial
disputes. His experience in intellectual property
matters includes market assessments, valuation,
licensing, and the calculation of lost profits and
Brent has been designated and testified as an expert at both trial and deposition in Federal Court, State Court, and Bankruptcy Court, as well as arbitration proceedings.
Subroto Bose is IP Counsel at Altera Corporation, focusing on patent litigation and patent prosecution. In addition, he advises on patent issues in corporate transactions, open source issues, and issues related to standard setting organizations and standards essential patents. His prior experience includes working at a number of law firms, where he represented both plaintiffs and defendants before the International Trade Commission (ITC) and federal district courts.
Mr. Bose’s prior experience also includes developing and implementing IP strategies, developing and managing patent portfolios, analyzing large patent portfolios, and providing advice regarding monetization and intellectual property development strategies.
Eugene is Sr. Director of IP at Nimble Storage managing all aspects of IP. Prior to Nimble, Eugene was Associate General Counsel, Patents at Zynga Inc. and managed and provided strategy for Zynga’s global patent program. He has worked on all aspects of patent law including patent prosecution, acquisition, licensing, litigation, mergers/acquisition, and open source. Previously, Eugene was Sr. Patent Counsel at eBay Inc. for four years and was in private practice in California and Colorado for eight years. Before beginning his law career, Eugene was in the research and development group and consulting group at J.D. Edwards. Eugene received his B.S.E.E. from Brown University, and his J.D. from the University of Colorado School of Law.
Dmitry Tulchinsky has more than fifteen years of experience in the biotech and chemical industries. He has worked for the last seven years as a patent professional focusing on intellectual property matters in IP strategy development and implementation, licensing, due diligence and portfolio building at DuPont and Johnson & Johnson. Prior to working as a patent professional, Dmitry worked for eight years as a scientific researcher in drug discovery for Novartis, Amgen, UCLA, and The University of Southern California culminating in three drugs candidates entering human clinical trials and one marketed within the U.S.
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.
Brian Schar is a graduate of USC Gould School of Law, with over 15 years of practice both at law firms and in-house. He is the Director of IP and Commercial Contracts at Intematix Corporation, a Fremont-based company that manufactures phosphor and remote phosphor for use in LED lighting and displays. His responsibilities include IP portfolio development, outside counsel management, licensing, enforcement, freedom-to-operate and IP landscape analyses, and NDA and contract negotiation and management. By implementing active portfolio management, he has realized six-digit legal savings yearly, while maintaining a patent portfolio focused on strong defensive and offensive IP. He is a member of the Association of Corporate Counsel.
Bryan is General Counsel at Applied Research Works, Inc. (ARW), a Palo Alto based software company offering specialized services for health plans, healthcare professionals and patients. Prior to beginning his legal practice, and during law school, Bryan worked with a major patent holding company where he participated in the licensing and monetization of high value patent portfolios. In addition to his role at ARW, Bryan maintains a private law practice in the Silicon Valley where he represents clients in intellectual property matters. Bryan earned his J.D. from Indiana University School of Law-Indianapolis (now known as Indiana University Robert H. McKinney School of Law); a Master of Intellectual Property, Commerce, and Technology from Franklin Pierce Law Center (now known as the University of New Hampshire School of Law); a Master of Health Services Administration from St. Joseph's College of Maine; and a Bachelor of Science in Biology from the University of Nevada, Reno. Bryan is a member of the State Bar of California and is registered to practice before the United States Patent and Trademark Office
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.
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.
Marina Portnova is a registered patent attorney and a Partner in Lowenstein Sandler’s Tech Group in the firm’s Palo Alto office. Marina focuses on intellectual property protection in computer architecture, software, networking, communications, image processing, and business methods. She provides clients a broad range of patent-related services, including preparing and prosecuting patent applications (U.S. and foreign), patent validity and infringement analysis and opinions, IP due diligence work, IP licensing, and strategic IP counseling.
Marina has extensive experience in securing patents for clients ranging from industry leaders to startups and assists them in building and managing their patent portfolios, including identifying technical advantages and implementing programs that capture these advantages as patents.
Prior to becoming an attorney, Marina worked as a software developer.
Suvashis manages NetApp’s US and international patent portfolios and overall patent program, assists ongoing IP litigation matters, advises on open source-related issues and policy, and supports IP licensing activities. Previously he was a partner at LeCLairRyan, Patent Attorney at Nixon Peabody, Fleisler Meyer LLP and Attorney at Thelen LLP.
Suvashis earned his B.S. Mechanical Engineering from Purdue University and his J.D. Intellectual Property from John Marshal Law School.
Ivan Chaperot is Vice President of Intellectual Property (IP) Licensing and is responsible for leading Finjan’s IP licensing programs.
Mr. Chaperot’s expertise is the development and implementation of outbound patent licensing programs in the U.S. and in Europe and has lead over $100 million in IP Licensing program . Prior to joining Finjan, Ivan worked at Intel Corporation where he was responsible for strategic patent acquisitions and licensing transactions. Prior to Intel, Mr. Chaperot was a licensing executive at Intellectual Ventures, where he developed and led several IP monetization programs. Prior to Intellectual Ventures, Mr. Chaperot was at Alcatel Lucent where he was responsible for IP licensing negotiations and the development of a patent sales program. Ivan started his career at Thales in France, where he developed and managed IP portfolios relating to security and embedded electronics markets.
Mr. Chaperot is a member of the Licensing Executive Society (LES) and LES International. He has authored and lectured on financial valuation and licensing. Mr. Chaperot is a European Patent Attorney and a French Patent Attorney. He brings a wealth of IP asset management, patent sales, acquisitions and licensing experience to the Finjan team.
Patrick is a Senior IP Attorney at HGST, a division of Western Digital. Early years at HGST focused on revenue generation from technology and patent licensing, current work focuses on patent development and portfolio management for storage products. Prior to HGST, Patrick ran bet the company patent litigation at Nichia Chemical, wrote technology agreements at National Semiconductor, and drafted patent applications. An electrical engineer and patent attorney, Patrick obtained his Juris Doctor from Hastings College of the Law and holds two bachelor’s degrees, the first in English literature from the University of California, Berkeley. Patrick is a licensed attorney in California, New York, and the District of Columbia.
Van Nguy is a Senior Patent Counsel at Google, where she works on a wide range of patent issues including patent strategy, portfolio development, and product counseling. Prior to joining Google, Van was a Senior IP Attorney for IBM Corporation and an Associate at Blakely Sokoloff Taylor & Zafman. Van received her law degree from the University of San Diego School of Law and her physics degree from Pomona College.
Michael N. Zachary is a partner in Kenyon & Kenyon’s Palo Alto office. He focuses primarily on intellectual property litigation and enforcement. He regularly advises clients on patent infringement, trade secret, trademark and other intellectual property litigation matters, and has counseled clients across a broad range of industries. He has represented large, mid-size and start-up clients in the United States and Japan including Skype, Amazon, Wacom, PRISM Pharma, and Boston Scientific in patent and other IP litigation matters, as well as in licensing, IP transactional work and other IP matters.
William Munck is the Managing Partner of Munck Wilson Mandala, LLP and Chairman of the Firm's Intellectual Property Section. Mr. Munck has nearly twenty years of experience counseling clients regarding development of market-focused offensive and defensive intellectual property portfolios. His technical expertise is in the hardware, software, firmware, gaming, wired/wireless communication, energy and medical device/healthcare fields.
Mr. Munck's practice emphasizes long-range corporate strategies for the domestic and foreign procurement, management and enforcement of intellectual property rights; defense against third-party infringement claims, including prosecution of reexamination proceedings; analysis, development and rendering of legal positions and opinions; and negotiation of technology transfers and related intellectual property issues associated with private and public financings, mergers, acquisitions, and industry and patent troll licensing matters.
Mr. Munck began his career with a full-service Texas-based law firm and a prominent New York IP litigation boutique.
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.
Michael Moore joined Rambus in 2011, and holds the position of Deputy General Counsel, Intellectual Property. Mr. Moore is a seasoned IP attorney with a decade of patent law and intellectual property experience, building on a solid technology foundation of digital logic design and software engineering.
Mr. Moore leads the Intellectual Property Development group and is responsible for developing complex IP portfolios for monetization and licensing, both in the US and globally. Mr. Moore is involved with diligence of acquisitions and divestitures, and inbound and outbound licensing supporting product development. Prior to this role, he served as IP Counsel at Symantec managing a substantial global patent portfolio in the enterprise storage space, and he also worked in the in-house patent team at Cypress Semiconductor supporting memory and interface product development. Mr. Moore started his attorney career as an associate at the law firm of Morgan, Lewis and Bockius involved in patent prosecution and trade secret litigation.
Mr. Moore holds 10 US issued patents from his engineering work, and numerous technology article publications in electronic engineering trade journals. He holds a JD and MBA from Santa Clara University, and BSEE (B.Eng) from the University of Limerick, Ireland.
As SVP TechInsights Research, Julia Elvidge is responsible for the Competitive Technical Intelligence and Product Development divisions at TechInsights, Inc. Ms. Elvidge joined Chipworks in 1994 as the second employee and held increasingly senior positions before being named President in 2003. As a major shareholder, she was instrumental in growing the firm from a small start-up to a global enterprise of 120 people. TechInsights, the industry leader in proving patent value, acquired Chipworks in June 2016.
A renowned thought-leader in the industry, Ms. Elvidge recognized early in her career the business value that competitive technical intelligence and intellectual property held for technology companies. She began her career with Mosaid Technologies; then joined LSI Logic, where she honed her expertise in ASIC design, ultimately leading her own engineering groups. Ms. Elvidge holds multiple patents for her work.
Ms. Elvidge is a board member of the Information Technology Association of Canada and a longstanding member of the Licensing Executives Society. A winner of numerous awards for her contributions to entrepreneurship in the high-tech industry, she is a regular speaker at intellectual property events, such as the Licensing Executives Society (LES) and the Intellectual Property Business Congress (IPBC) conferences.
A role model for women in technology and business – and a technology geek at heart, Ms. Elvidge was one of six women in a class of 100 to pursue an education in electrical engineering. She earned her degree in Electrical Engineering from the University of Waterloo in Ontario.
Diana joined HP and HP’s Intellectual Property Licensing team in October, 2006. She is Director, IP Licensing, and responsible for IP technology transfer and patent licensing. Prior to joining HP, Diana was on the corporate IP Licensing staffs of Microsoft and IBM with similar licensing responsibilities. When Diana joined the HP IPL group, she was the founding member of the Standards-based licensing team. During her tenure, the team grew to a Managing Director and three individual contributors who regularly generated between 40-45% of HP’s annual IP royalties. Diana supported the single largest HP licensing program, the Linear Tape Open (LTO) Consortium, as well as represented HP to a number of patent pools, including the world’s largest pool, MPEG-2. She also did bilateral licensing in technologies such as RAID-on- Chip (ROC), generating significant royalties and R&D funding. Diana has an MBA from Harvard University’s Graduate School of Business and a B.S. in Finance from the University of California at Berkeley.
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.
Stefan Tamme joined Rambus in 2004 and currently serves as Vice President of IP strategy. In this role, he leads the strategic development of Rambus’ patent portfolio and the implementation of the Company’s IP business strategies. He is involved with acquisitions, divestitures, as well as outbound licensing. Prior to this position, he served as Rambus’ director of global business enablement where he led the strategic alliance partner program, as well as the worldwide reseller channel. Mr. Tamme has over 20 years of global experience in the electronics business ranging from semiconductors to systems and software. He has been involved with inbound and outbound licensing for 18 years and he has worked for large companies such as Bosch, as well as for several successful start-ups. He holds an MBA from Pepperdine University and an MSEE from the University of Hannover, Germany.
Hopkins Guy, a Silicon Valley intellectual property and litigation partner, focuses his practice on patent, trade secret and commercial contract litigation involving all areas of web-based telecommunications, electronics and computer technologies. He also provides intellectual property counsel to technology companies from start-up to mature companies, particularly in the clean-tech and solar technologies. His current caseload focuses on graphics, LED and semiconductor packaging technology. His intellectual property litigation experience includes all phases of discovery, prior art research, pretrial, jury and bench trial work, all phases of trial work, post trial motions and appeals before the Federal Circuit, and he has represented clients before the International Trade Commission (ITC) in Section 337 proceedings.
Mr. Guy’s patent and trade secret litigation experience has involved technologies in Web-based payment systems, social networking, graphics, LED device physics, wireless data communication equipment and routing, semiconductor processing and equipment, microprocessors, power semiconductor devices, DIMM memory module technology and solar technologies.
The Daily Journal has repeatedly recognized Mr. Guy as one of California’s “Leading Intellectual Property Litigators,” in its annual survey of the best lawyers in the state. Mr. Guy was also recognized for his trade secret litigation work on the Cisco Systems v. Huawei Technologies Inc. case, and was awarded California Lawyer Magazine’s “Attorney of the Year (Clay) Award.” Mr. Guy filed what is reportedly the first infringement case brought in a United States court against a China-based technology company to obtain a worldwide trade secret preliminary injunction.
Heather Molleur has over 10 years of experience as a patent attorney in both corporate and law firm environments and in a wide range of technologies spanning the semiconductor industry and more recently as part of the software industry in security, backup, and storage. After several years of patent prosecution experience at Blakely, Sokoloff, Taylor and Zafman she moved to in-house corporate positions at Applied Materials and Intermolecular. Heather currently works at Symantec Corporation developing patenting strategies for multiple information security products and services as well as supporting a range of intellectual property matters arising from those businesses. Such matters include opinion work, licensing, acquisition integration, patent valuation, inter partes review, litigation, review of standards organization agreements and claims analysis, patent landscaping, and product clearance analyses.
I am a sole in-house counsel of a leading fabless semiconductor company with a strong presence in the U.S. and Asia. I am responsible for all things legal, including company’s IP matters such as negotiating and drafting IP licenses, overseeing patent portfolio management, and IP assertion and litigation matters. As a key advisor to the management and the board, my role involves advancing business strategy while meeting company’s legal needs. At UC Hastings College of the Law, I received an LL.M (Masters of Laws) degree with an emphasis on taxation and international business law and represented the law school in inter-college negotiation competitions. When I am not honing contracts or legal strategy, I spend my time advancing my culinary skills and re-reading Sherlock Holmes and Hercule Poirot.
Experience and Accomplishments:
I began my legal career as a damages witness in the HP v. Bausch & Lomb case, which led to law school and licensing of the patent-in suit which in turn led to generation of over $100 Million in licensing revenue over the life of the patent. My legal career has included IP litigation at Pennie & Edmonds, in-house work at 3Comm and other leading companies in the networking and cloud computing space, and authoring a leading legal treatise on patent infringement damages.
Recognized expert and published author in patent infringement damages;
IP enforcement; Litigation management;
Merger and acquisition; Strategic IP Portfolio creation; IP transaction negotiation; open source policy managemnt; Entrepeuneurial counseling
Publications and Courses
“Patent Infringement: Compensation and Damages”, Law Journal Press. 2006.
"Actions to Limit Product Liability Awards" 4 Product Liability Law Journal 129 5/93.
"Maximizing Impact of Visual Evidence" Patent Litigation 1992 Practicing Law Inst.
"We've just been sued! What's Our Exposure? A Defendant's Guide to Damages" IP Law and Management Institute, San Diego, November 2012
"Implications of the America Invents Act", panelest, IP Counsel Cafe San Jose, San Jose April 2012
"Patent Infringement Damages" IP Counsel Conference, San Jose, March 2012
“Developments in IP Remedies”at IP Counsel Conference New York, 2009 (Conference Chair)
“Developments in IP Remedies”at TechNet IP Forum New York, 2009
“New Developments in Patent Infringement Damages” at Intellectual Property for Wireless and New Media, 2007, 2008
“Remedies for Patent Infringement”, in “Intellectual Property Remedies” webinar, American Lawyer Media, October, 2008
“Getting the Jump on IP Due Diligence - Putting Together an IP Portfolio to Maximize Value” included in “Strategic Planning for Entrepreneurs Seminar”, Stanford University, 2002
Ryan Koppelman focuses his practice on intellectual property matters with a specific focus on patent litigation. He has handled over 30 patent infringement cases in forums across the country, including the ITC. He recently managed the day-to-day activities of the Nokia v. Apple case where the parties asserted over 50 patents against each other.
Ryan represents a wide variety of clients across diverse industries such as mobile, high-tech, finance, health, telecom and plastics, and his clients range from multinational publicly-traded corporations to emerging growth and start-up companies.
He passed the Electrical Engineering FE/EIT certification exam, and he has handled intellectual property disputes across a number of technology areas, including wireless protocols, chipsets, touchscreens, Bluetooth, GPS, mobile applications, e-commerce, call center processing, cloud computing, payment clearinghouses, health data processing, medical devices, plastics molding, polymer chemistry and porous plastic sintering.