AIA, Alice, IPR: Defending IP In A Disrupted World
Five years in and the AIA continues to transform IP litigation’s rules of engagement. The one certainty so far: in-house counsel need to constantly adjust their Defensive strategies to ensure their patents’ survival. An up-to-date perspective on the (dis)advantages of new, as well as existing tools, is critical for a smart, cost-effective strategy.
Join the rest of your local IP community for a one-day only session full of practical insights and learnings from front line experts focused on the latest defense strategies: navigating post issuance proceedings, changes in trade secrets, fighting NPE cost/benefit analysis and much more.
KEY TOPICS DISCUSSED
The Evolution of Patent Prosecution and Portfolio Management
2017 Defensive Perspectives on Post Issuance Proceedings
Defending Against NPEs: What is the New Normal?
Operating Company vs Operating Company Litigation: A Proactive Defense
Trade Secrets & Your IP Strategy
Risk Management & Avoiding Litigation
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
Brett Hansen is the Head Corporate Intellectual Property Counsel for Hypertherm, Inc., a US manufacturer of plasma, laser, and waterjet cutting technologies. Brett’s practice focuses on the worldwide development and enforcement the company’s patent and trademark portfolio, including overseeing global litigations as well as counterfeit investigations and raids. Brett is part of the Hypertherm’s Engineering Steering Team and leads innovation development projects for the organization. Prior to joining Hypertherm Brett was a shareholder of the Salt Lake based law firm of Workman Nydegger as part of its IP litigation group.
Brett is a graduate of Brigham Young University with B.S. in Mechanical Engineering and received his law degree from the University of New Hampshire School of Law. Brett a registered patent attorney with the United States Patent and Trademark Office and is admitted to practice law in Utah and New Hampshire.
Jennifer currently holds the title of Vice President, Intellectual Property. She has over fifteen years of experience as a biotechnology patent attorney and her practice includes portfolio development, life cycle management, licensing and agreement work, corporate development support, patent prosecution and litigation. Prior to joining Shire in 2011, Jen was at Pfizer (previously Wyeth), where she was Senior Corporate Counsel and Patent Lead for the Inflammation & Immunology Research Unit. She also held associate positions in the private law firms of Kirkpatrick & Lockhart, Testa, Hurwitz & Thibeault, and Hogan & Hartson. Jen received her degree in Biology from the University of Maryland at College Park and her J.D. magna cum laude from the Catholic University of America. Before attending law school, she worked as a research associate at Human Genome Sciences. She is a member of the Massachusetts, Maryland and DC bars, and is registered to practice before the U.S. Patent and Trademark Office.
Dr. Fangli Chen is a partner in the Litigation Department and vice chair of the Life Sciences Patent practice. Dr. Chen represents all types of companies in the biotech and pharmaceutical industries, and has deep scientific expertise and a strong business sense. She effectively identifies and transforms technological developments into valuable intellectual property assets for her clients and specializes in the strategic development of complex IP portfolios for companies that align with their business goals.
The primary focus of her practice is intellectual property prosecution, which includes strategic development of complex patent portfolios for companies, universities and research institutions. She prepares and prosecutes patent applications in the fields of biochemistry, molecular and cell biology, immunology, biochemical and molecular diagnostics, pharmaceuticals, microbiology, molecular genetics, pharmacogenomics, recombinant technologies, enzyme replacement therapy, messenger RNA therapy, gene therapy, bioinformatics, drug discovery, medical devices and chemistry; performs due diligence investigations, and provides freedom-to-operate studies, non-infringement and invalidity analysis.
Joseph A. Capraro is a partner in the Patent Law and Intellectual Property Groups and he leads the patent and trademark prosecution and technology licensing groups. Over the course of his career, Joe has developed broad experience in connection with the protection and enforcement of intellectual property rights. He provides clients with practical legal advice across the entire spectrum of intellectual property areas, including strategic intellectual property portfolio development, patent and trademark prosecution, technology licensing, intellectual property due diligence in corporate transactions, and intellectual property litigation support.
His clients include private and public emerging technology companies as well as technology start-ups. Joe spends much of his time working with companies having product offerings in the engineering arts, with particular emphasis on plasma devices, semiconductor equipment, analytical science solutions, power supplies, medical lasers, image processing devices, optical components, medical devices, alternative energy technologies, financial services, multimedia, software and telecommunications.
Manages IP litigations, patent office proceedings,transactional IP matters, commercial litigation, and antitrust litigation. Advises on foreign patent matters. Manages outside counsel. Advises directly executive managemend at both Novo Nordisk Inc and Novo Nordisk A/S on issues relating to patents and is a key member of litigation steering groups that are chaired by Executive Vice Presidents and Officers of Novo Nordisk A/S.
Charles Sanders is a partner in the Boston office of Latham & Watkins. His practice focuses on intellectual property matters with an emphasis on patent litigation. Mr. Sanders represents clients as lead counsel in federal district court, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), and the Federal Circuit. He has obtained multimillion-dollar settlements, ITC exclusion orders, summary judgments, and trial and appellate victories.
Mr. Sanders has handled a diverse range of technologies, including those involving aircraft, acoustic equipment, automotive components, bio-therapeutics, computer hardware and software, electromechanical devices, environmental remediation, fluid separation, LEDs, MRI, MOCVD, medical devices, OLEDs, network security, pharmaceuticals, rare earth magnets, semiconductors, smart phones, spectroscopy and communication systems.
Mr. Sanders received his J.D. from Harvard Law School and holds an A.B. in chemistry and physics from Harvard University. He is a member of the Boston Bar Association, Boston Patent Law Association, Boston Intellectual Property American Inn of Court and the ITC Trial Lawyers Association.
Michael LoCascio is the Global Senior Manager of Intellectual Property Strategy for BASF’s $8 Billion/year Catalyst Division where he is responsible for implementing and overseeing IP management processes, developing patent strategies, and executing licenses and enforcement actions. Prior to his current position, he led the effort to develop the market entry and M&A strategy enabling BASF to expand into the medical device sector. Prior to joining BASF, Mr. LoCascio was a Senior Analyst at Lux Research, a technology advisory and market research firm focused on emerging technology sectors, where he started and led teams investigating Solar technology, Green Buildings, Water Technology, and the Smart Grid. Mr. LoCascio was also the founder and CTO of a nanotechnology start-up that developed and commercializing applications of quantum dots for life sciences, solid state lighting and displays, and solar energy conversion and was an engineer at Lockheed Martin conducting research related next generation naval nuclear reactors. Mr. LoCascio holds a Bachelors of Engineering in Applied Physics and Master’s Degree in Electrical Engineering from Stevens Institute of Technology.
Tom Brown is intellectual property litigation attorney at Dell with substantial experience in high-stakes cases representing both plaintiffs and defendants, with particular emphasis on patent litigation. Prior to the Dell - EMC merger, Tom managed EMC's patent litigations and IPR proceedings, including in the district court, on appeal, and in the PTAB; worked on legislative patent policy issues; supervised amicus briefs filed in the Federal Circuit and Supreme Court.
Prior to Dell/EMC, Tom held a Principal role at Fish and Richardson P.C. He clerked for the Hon. Robert E. Keeton (US District Court) and was a Software Design Engineer at Microsoft. Tom earned his B.S. Computer Science & Political Science, Yale University and his J.D. from Harvard Law School.
Bill Lacy is the Chief Patent Counsel, Titleist Golf Balls, for Acushnet Company, the Massachusetts-based manufacturer of Titleist and FootJoy golf equipment. Bill’s practice focuses on the development and enforcement the company’s patent portfolio, as well as worldwide clearance of all Titleist golf ball products. Prior to joining Acushnet in 2001, Bill was at Pennie & Edmonds LLP in its Washington, DC office. Bill is a graduate of the University of Richmond, with B.S. in Chemistry, the University of Utah, with a Ph.D. in Analytical Chemistry, and received his law degree from the Suffolk University Law School. Bill is a registered patent attorney with the U.S. Patent and Trademark Office and is admitted to practice in Massachusetts.
Steven Reynolds has served as General Counsel and head of the Legal Department since the Sensors & Controls business of Texas Instruments was purchased by Bain Capital in April 2006. He was named a vice president in January 2007.
Mr. Reynolds supported the S&C business of Texas Instruments as legal counsel beginning in January 1999 and was with Texas Instruments since 1990 in other legal positions.
Prior to joining Texas Instruments, Mr. Reynolds worked as an attorney in both private and in-house practice.
Mr. Reynolds is a graduate of Georgetown University and the Rutgers University School of Law.
Porter Fleming leads the firm’s Litigation Practice Group and has more than twenty five years of intellectual property litigation experience. Not only is he comfortable in the courtroom, before a Judge or jury, he has also developed a unique ability to advise senior management and in-house counsel efficiently and effectively. His varied experiences and significant results for his clients speak for themselves.
Within the Litigation Practice Group, Mr. Fleming leads a team of talented attorneys, with expertise across a spectrum of industries, and has and continues to represent a diverse range of clients, from large corporations to individual inventors and innovators. Through this practice, Mr. Fleming is known to draw upon the diverse resources of the firm, creating for each litigation a “Cabinet” of attorneys, experts and scientific advisors deeply proficient in the various legal and technical aspects of the specific case to effectively and efficiently guide the client through the legal process from the beginning to the resolution. His leadership, knowledge and experience in intellectual property law is valued by many of the nation’s leading pharmaceutical and scientific corporations.
Denise is dedicated IP Counsel for Velcro Companies, where she has worked for 2 years to develop and implement Velcro IP interests and strategies. She partners with Velcro’s Innovation and Technology Center and the Global Business Units to oversee IP legal matters including patent application preparation and prosecution, litigation, freedom-to-operate opinions, licensing, and trademark, copyright and trade secret matters for the global enterprise. Prior to her position at Velcro, Denise worked for Preti Flaherty, Medtronic Advanced Energy, Blank Rome LLP, and Sherin and Lodgen LLP. Denise earned her JD from Boston University School of Law and is a US Registered Patent Attorney. She is also the holder of two patents, one for electrosurgical cutting devices and mold-in touch fastener systems with wave-shaped wall.
Ted Mathias focuses on patent litigation and has experience litigating antitrust and other commercial matters. Clients frequently turn to Ted for guidance on issues covering patent damages and other remedies, and competition-related issues that arise in connection with patent disputes. He has tried patent cases and handled successful appeals to the Federal Circuit in the areas of medical devices, other mechanical devices, e-commerce, software and pharmaceuticals.
Ted has served as lead counsel in commercial disputes, and has litigated sham litigation, standards setting, patent pooling and IP licensing issues, other Sherman Act claims, insurance coverage and environmental claims. In addition to major trial work, he has represented clients in private dispute resolution proceedings, mediations and government investigations concerning antitrust, unfair competition, false advertising and Internet privacy issues.
Ron is the chief legal contact for Gillette Venus, a global $1 billion dollar business and has a dual role as lead patent counsel for the Gillette chemistry organization. In these roles, Ron blends technical capability with understanding of global CPG manufacturing industries to provide actionable legal guidance for senior commercial and technical management. Ron also handles talent and sponsorship deals for ~ 20 of P&G’s billion dollar brands. Before relocating to Boston, Ron supported P&G’s global Fabric and Home Care businesses as a patent attorney. Prior to pursuing a career in law, Ron worked several years in the New York area as a management consultant for Accenture. Ron has a B.S. in Chemical Engineering from Tufts University in MA and a J.D. from UNH School of Law (formerly Franklin Pierce Law Center.)
Jeremy is co-chair of Bond’s intellectual property and patent litigation team. He has an accomplished track record and substantial experience in litigating high-stakes intellectual property disputes, including patent, trademark, copyright, and trade secret matters. Over the course of his career, Jeremy has litigated over fifty intellectual property cases in federal courts throughout the country, including venues in Delaware, Illinois, Florida, Massachusetts, New York, and Texas, and has significant trial and appellate experience. He has represented many well-recognized companies, including Analog Devices, Church & Dwight, Facebook, General Media Communications (owner of PENTHOUSE® brands), ImClone Systems, and Transamerica Life Insurance.
A registered patent attorney, Jeremy has extensive experience in securing, protecting, and managing patents and trademarks in the United States and internationally. He assists clients with matters before the U.S. Patent & Trademark Office, including patent reexaminations. He also works with clients on patentability and product clearance studies, freedom to operate evaluations, trademark and branding clearance, licensing, and corporate transactions involving intellectual property.
Benjamin T. Horton manages complex litigation involving high tech patents. He has a degree in electrical engineering, and before law school he worked for technology companies in the automotive and semiconductor industries. He is a member of the Trial Bar for the Northern District of Illinois and litigates intellectual property cases in federal courts across the country. Mr. Horton also practices before the Patent Trial and Appeals Board, representing both petitioners and patent owners in inter partes review (IPR) and covered business method review (CBM) proceedings.
Mr. Horton speaks regularly on patent litigation and strategy and he is a frequent contributor to various IP publications. SuperLawyers, a Chicago Magazine publication, selected Mr. Horton for the 2012-2016 Illinois Rising Stars® lists, which feature top attorneys in intellectual property law. Mr. Horton has been selected as one of the"World’s Leading Patent Practitioners" in 2016 by IntellectualAsset Management (IAM) magazine. He was also selected as a 2015 and 2016 "Emerging Lawyer" in Emerging Lawyers Magazine as a top Illinois attorney under 40, and was profiled in the November 2016 issue. Mr. Horton has also been recognized by intellectual property publications such as InsideCounsel, Thomson Reuters, Intellectual Property Magazine, Law360, and IPPro.
Barbara Fiacco represents clients in complex intellectual property and patent litigation matters. Her technology-related practice focuses on the biomedical field, including counsel to companies with activities focusing on recombinant DNA, monoclonal antibodies, small molecule compounds, drug delivery, molecular diagnostics, and medical devices. She has defended pharmaceutical and life sciences clients in significant patent infringement lawsuits that have resulted in summary judgment or other favorable outcomes for her clients. Barbara also represents these clients in contract disputes and other commercial litigation.
Philip is a Director and Senior IP Counsel at Boehringer Ingelheim USA Corporation located in Ridgefield, Connecticut. In his 15 years as IP counsel for Boehringer, Phil has drafted and prosecuted patent applications and strategically managed patent portfolios in a number of therapeutic areas; conducted patentability and freedom to operate assessments; supported NDA filings with regulatory exclusivity requests and patent information; performed IP due diligence reviews in connection with in-licensing of early to late stage products; negotiated IP provisions in various types of agreements; assisted in developing best practices for IP protection and for the negotiation of IP provisions in agreements; and has counseled on US export compliance issues and the development of related internal policies and procedures. Prior to joining Boehringer, Phil was an associate attorney at the Sughrue, Mion law firm in Washington, D.C., and prior to his tenure at Sughrue, Phil was a patent examiner at the U.S. Patent and Trademark Office. Phil has a Bachelor of Science in organic chemistry from the University of Maryland, and a law degree from the George Mason University School of Law and is a regular speaker on various IP, patent and export compliance topics.
Pamela has been the Patent Counsel at Hasbro since mid – 2013 and continues to manage all clearance activities, domestic and international filings and litigations. Prior to her work at Hasbro, she was a patent attorney at the law firm of Ohlandt, Greeley, Ruggiero and Perle LLP in Stamford, Connecticut handling preparation and prosecution matters in areas ranging from textiles, medical and industrial and consumer products in addition to opinion matters. She was a Patent Examiner at the USPTO for several years after beginning her career as an engineer at Westinghouse Corporation.
Bill McInnis is the Licensing Manager within the Intellectual Property and Licensing Function of the Office of the General Counsel at Raytheon Company Global Headquarters. He has responsibility to provide value from Raytheon's Intellectual Property assets, including technology licensing, investigating infringement, asset sales and international offsets. He is a former Engineering and Program Manager within the Aerospace & Defense industry, with over 29 years at Raytheon. He holds a BS from University of Rochester, and an MBA from the University of Bridgeport.
Randall Morin is vice president and head of intellectual property at Rana Therapeutics. Rana Therapeutics is pioneering the discovery of a newclass of medicines that target RNA to selectively activate protein expression, thereby enabling the body to produce desirable proteins to treat or prevent disease. RaNA’s novel therapeutics work by precisely activating the expression of select genes within the patient’s own cells, increasing the synthesis of therapeutic proteins. The company’s proprietary RNA targeting technology works epigenetically to make it possible, for the first time, to increase the expression of therapeutic proteins with exquisite selectivity.
His experience includes roles as Assistant Chief IP Counsel at Vertex Pharma as well as Leading the IP and Business Development efforts at Shire. Mr. Morin has earned a BA in Biology from Saint Anslem College, an M.S in Bio Engineering from Tufts University, an MBA from Babson College and his JD from Boston University School of Law.