The IP Strategy Summit: NY is the East coast's leading conference focused on IP strategic issues. It brings together thought-leaders from a cross-spectrum of blue chip companies for a unique mix of insightful content, workshops, exclusive speakers, high powerednetworking and real life, actionable cases studies.
Why Attend? Intellectual property leaders are under increased pressure to deliver results, while also assuming multiple roles. This is a must-attend event for IP executives that will provide the knowledge needed to overcome these day-to-day challenges and learn how best to:
Evaluate, monetize and enforce IP assets
Deal with infringers, NPEs and trolls
Educate internal business leaders on IP
Adapt to AIA changes and new rulings
Align IP strategy with organizational goals
KEY TOPICS DISCUSSED
Building an IP Strategy
Evaluation and valuation of your IP
Aligning IP strategy to go-to-market strategy
An investor's perspective
Harvesting your IP
NPE: friends, foes, or a new paradigm?
Benchmarking the AIA new rulings
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
Before joining Celtic Therapeutics, Dr. Warburg was a partner at the law firms of Foley & Lardner LLP and Lyon & Lyon, and a law clerk with Fish & Richardson. Dr. Warburg has over 25 years experience in intellectual property litigation, strategic counseling, licensing and patent prosecution. Dr. Warburg has significant appellate, litigation, interference and world wide prosecution and opposition experience in most technical areas including biopharmacology, proteomics, antisense, and diagnostic devices. Dr. Warburg is registered to practice before the U.S. Patent and Trademark office. He is admitted to practice in California and Massachusetts, and in the U.S. Courts of Appeals for the Ninth and Federal Circuits. Dr. Warburg is a graduate of Birmingham University, England, where he received his Bachelor of Science degree in 1978 and his Ph.D. in molecular biology in 1981. After a post-doctoral fellowship at Brandeis University, acting as an adjunct professor at Wellesley College, and an instructor at University of Massachusetts, he attended Suffolk University law school and graduated valedictorian magna cum laude in 1990. Dr. Warburg is the inventor on world-wide patents to a micro-centrifuge tube opening device, the inventor of the PATENTIAL board game concerning the biotech business model, and co-author of the book "Working to Improve Lives: An Illustrated Biotech encyclopedia." He is also an author on numerous legal and scientific papers.
As Senior Vice President and General Counsel, David Reibel is responsible for the Aspect Software worldwide legal activities, including advising senior management and the board of directors on legal matters, overseeing corporate compliance and governance initiatives, managing mergers, acquisitions and other commercial transactions, as well as providing legal support to the sales, services and partner organizations at Aspect Software. Prior to joining Aspect, David held General Counsel positions with Esprit Telecom, First Telecom, Aprisma Management Technologies and WAY Systems. Earlier in his career, David practiced law with two firms in Washington D.C., worked for a non-profit space institute, and was a legislative aide to a U.S. Congressman. His specialties include corporate governance, corporate finance, mergers & acquisitions, contracts, licensing and other commercial and operational matters. David has a bachelor's degree from the University of Michigan, Ann Arbor, where he was elected to the Phi Beta Kappa Society. David earned his juris doctor degree from Stanford Law School. During his legal studies, David also completed the Erasmus student exchange program in International and European law at Leiden University, the Netherlands.
Lesley Hamlin is the Associate General Counsel for Intellectual Property at Citrix Systems, Inc. She is responsible for global IP strategy including managing and enhancing global patent, trademark and copyright portfolios and providing legal support for contract, marketing and engineering functions. Ms. Hamlin has extensive experience in IP due diligence for M&A transactions, IP enforcement and supports IP litigation at Citrix. Prior to joining Citrix, Ms. Hamlin was Director & Senior Counsel of IP and Technology at Iron Mountain and Director and AGC at Textron Systems Corporation, handling global IP issues for both commercial and defense technologies. While at Textron, Ms. Hamlin was certified as a Six Sigma Black Belt. Ms. Hamlin started her legal career at Wolf Greenfield in Boston, MA after receiving her JD and Masters in IP from Franklin Pierce Law Center (now UNH School of Law). Prior to her legal roles, Ms. Hamlin received her BSEE and worked at Westinghouse.
Dr. Webb received her B.Sc. in Chemistry from the Hebrew University in Jerusalem, her Ph.D. in Chemistry from Columbia University in NY, and her post-doctoral training at Memorial Sloan-Kettering Cancer Center. She is currently Vice President, Intellectual Property at ARMGOâ„¢ Pharma, Inc, a privately held biopharmaceutical company dedicated to the discovery and development of novel small-molecule therapeutics to treat debilitating cardiac, musculoskeletal and neurological disorders. Prior to joining ARMGO, Dr. Webb was at Aton Pharma, Inc., where she was part of a team focused on the discovery of a novel class of histone deacetylase inhibitors leading to the oncology drug SAHA (Vorinostat). She is the recipient of many honors and awards including a Fulbright scholarship. She is also registered patent agent with over 15 years experience in intellectual property portfolio management.
Mr. Lerman has been with GreatPoint Energy since 2007 and, among other roles, manages the intellectual property assets and intellectual property strategy of the Company. GreatPoint Energy is focused on the catalytic gasification (hydromethanation) of coal and other carbon sources to methane and other products, and is currently marketing, developing and engineering large-scale gasification projects in China and elsewhere.
Mr. Lerman has over twenty-five years experience in both intellectual property and commercial law in a wide range of work environments and technologies. His legal practice experience includes domestic and foreign patent prosecution, IP portfolio management, IP budget management, agreement and opinion drafting, litigation management and client counseling. Mr. Lerman also has extensive international experience, including living and working in Europe, and practicing before the European Patent Office.
Mr. Lerman has a B.S. degree in Chemical Engineering from The University of Texas (Austin) and a J.D. from The University of Houston Law Center.
Ron Myers joined VLST in January 2008 after having previously served as an outside consultant to the company. Mr. Myers has broad experience in M&A, licensing, litigation and intellectual property, including more than 16 years experience in intellectual property acquisition, enforcement and defense in the biotech and pharmaceutical fields. Prior to Joining VLST, Mr. Myers served as Associate General Counsel, Intellectual Property for Corixa. In 2005, Corixa was acquired by GlaxoSmithKline, plc., during which time Mr. Myers played a key role in the transition of assets. Prior to Corixa, Mr. Myers served as Senior Patent Counsel to Pfizer Inc., where his responsibilities included global management of Pfizer’s antiviral therapeutic portfolio, as well as patent enforcement and defense in the US, Canada, Asia and Japan. Prior to his in-house work, Mr. Myers served as outside counsel to several Fortune 500 companies. Mr. Myers received his MS in Molecular Pharmacology from Thomas Jefferson University in Philadelphia, PA and his J.D. from George Washington University in Washington, DC. Mr. Myers is licensed to practice before the United States Patent and Trademark office and is admitted to practice before the Federal Circuit.
At Trend Micro, John Chen manages the worldwide patent program, IP litigation and open source compliance, as well as supports M&A and strategic licensing. He joined Trend Micro in 2005 as its first in-house IP counsel. Prior to joining Trend Micro, John was Director of Intellectual Property at New Focus where he managed the worldwide patent portfolio, strategic licensing and litigation. John began his legal career drafting and prosecuting patent applications for Quantum Corporation and Epson Research and Development. Earlier in his career, John was an IC packaging engineer at LSI Logic before enrolling in law school.
John holds a BSME from University of California, Berkeley and a JD from University of San Francisco School of Law..
E. Earle Thompson is the Vice President and Chief Intellectual Property Counsel for SanDisk Corporation, a global leader in flash memory solutions and is also the Managing Director of the Board of Directors for SanDisk Technologies, Incorporated. He is responsible for overseeing the acquisition and protection of SanDisk’s intellectual property including prosecution, licensing, trademarks and brand protection. Since Mr. Thompson joined SanDisk in 2004, the company has collected licensing and royalty revenues of over $3 billion.
Prior to joining SanDisk, Mr. Thompson retired from Texas Instruments Incorporated (TI) where he spent 25 years. His last position with TI was as the Intellectual Asset Manager. During his time at TI, he was actively involved in the licensing and litigation of patents for personal computers and semiconductors, managed the legal aspects of TI’s involvement in Standards organizations, and served as the primary counsel for multiple business units including DLP. As the inventor for 27 U.S. patents himself, he also understands the intellectual property business from the inventor’s side.
Mr. Thompson graduated in 1975 with a B. S. in Computer Science from the University of South Carolina where he also did his graduate work in Computer Software Development. He obtained his J.D. from Southern Methodist University in 1987 and became a member of the State Bar of Texas in the same year.
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.
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.
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.
Paul Reidy is a Senior Vice President of Memberships for RPX Corp. Paul focuses his efforts on growing the RPX membership base within the semiconductor industry. Prior to joining RPX, Paul was a Vice President at Intellectual Ventures where he was responsible for IVÃs patent portfolio related to information technology hardware, including semiconductors and systems.
Prior to joining IV, Paul served as Vice President of Corporate Business Development and Licensing for Freescale Semiconductor, Inc. At Freescale, Paul helped transform patent licensing into the most profitable business unit in the company. Paul was also responsible for strategic transactions including mergers, acquisitions, divestitures and equity investments. Before Freescale, Paul was CEO and co-founder of Traq Wireless, now a part of Tangoe, Inc. Prior to Freescale, Paul worked for Motorola as a Director of Corporate Business Development. He began his career as a corporate attorney for Kirkland & Ellis in Chicago.
He holds a JD/MBA from Indiana University and a BA in Economics from Michigan State University where he was elected Phi Beta Kappa.
Colin is an Executive Director at Morgan Stanley where he is a legal and credit analyst focusing on distressed debt. Prior to Morgan Stanley, Colin was a Partner at Kirkland & Ellis LLP. He received his J.D. at the UCLA school of Law after receiving an A.B. in Economics and History at Duke University. Colin currently resides in Manhassett, NY with his wife Sarah and their four kids Sofia, Pierce, Oliver, and Henry.
Robin practices in the area of intellectual property law with a focus on patent law in the biotechnology and pharmaceutical industries. Her experience involves all aspects of patent counseling and patent prosecution, including providing numerous example freedom-to-operate, due diligence, noninfringement and invalidity opinions. Robin advises a wide range of clients, including established and start-up biotechnology and pharmaceutical companies and prominent research universities.
Robin has significant experience in complex patent office proceedings involving multiple parties such as reissue, reexamination and interference proceedings. Through her representation of a major pharmaceutical company at the forefront of drug formulation research, she also has an extensive background in Hatch-Waxman legal issues.
Prior to her admission to the bar, Robin was a patent examiner at the U.S. Patent and Trademark Office, where she was a member of the Biotechnology Group. She issued several hundred patents dealing with complex biotechnology research and received a Bronze Medal for distinguished federal service.
Robin is admitted to practice before the U.S. Patent and Trademark Office.
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.
As Associate General Counsel Jaimison is responsible for management of the company’s IP portfolio, contract management and negotiations, management of outside counsel in litigation matters, overseeing compliance with Food and Drug Administration regulation, heavily involved in lobbying efforts at the state level and responsible for consulting with marketing and approving all marketing efforts. He has been with the company for 11 years.
Jaimison has a Bachelors degree in Finance from DePaul University. Jaimison earned his Juris Doctorate and MBA degrees from the University of Richmond and earned an LLM in International and Comparative Law from Georgetown University. While in law school he spent a semester in an exchange program at Leiden University, the Netherlands and a summer exchange program at Emmanuel College at Cambridge University.
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.
At Harman International Industries, Ms. Harvey is responsible for developing and implementing the global intellectual property strategy at the company. This includes managing a team responsible for the patent and trademark portfolios and IP litigation, handling strategic IP enforcement, overseeing licensing, development, standards-setting, open source and technology transactions, managing IP due diligence on mergers and acquisitions, and providing overall intellectual property advice and counseling. Prior to Harman, she was at Netflix, eBay and Autodesk, where she worked on strategic licensing transactions, mergers and acquisitions, technology and product counseling, patents, trademarks and open source matters. She also worked at the law firms of Cooley Godward and Latham & Watkins on transactions, financings, corporate, SEC and FCC matters. Alyssa is on the Advisory Board for the Quello Center for Telecommunication Management and Law. She received her J.D. degree from Georgetown University Law Center, where she was a member of the Georgetown Law Journal and Book Reviews and Essays Editor. She received her undergraduate degree in Journalism and graduated from the Honors College at Michigan State University.
Aaron Bernstein is Lead Intellectual Property Counsel for Motorola Solutions, Inc., responsible for all IP counseling and managing patent litigation for the corporation. Mr. Bernstein joined Motorola when it acquired Symbol Technologies, Inc. where he held the position of Chief Patent Counsel. Prior to Symbol, Mr. Bernstein served as Senior Patent Counsel for Intel, Corp. Prior to Intel, Mr. Bernstein work for an earlier period at Motorola, and at the law firm of Knobbe, Martens, Olson and Bear. Mr. Bernstein attended California Western School of Law (JD, 1991), and obtained his BS in engineering at Harvey Mudd College (1987). Mr. Bernstein has been a regular faculty member for a number of Practicing Law Institute patent related courses.