The IP Landscape Has Changed: But Has Your Strategy?
The IP environment has been turned upside-down over the last 24 months:
ALICE v CLS cast uncertainty on the very nature of what's patentable
Octane & Highmark decisions loosened up fee shifting standards
Post issuance proceedings can create risky outcomes
USPTO's 2nd round of AIA changes proposed in August...
How Does All This Impact Your Portfolio Strategy?
Come join thought leaders for a full day of learning, benchmarking and networking on the issues facing every in-house counsel.
CLE Credits: 6 Hours of CLE credits
KEY TOPICS DISCUSSED
The 3 pillars of IP Strategy: Patent Prosecution, Portfolio Management & Due Diligence
Managing Your Litigation Spend: Containing Costs & Maintaining Quality
Benchmarking Post Issuance Proceedings Post AIA & Alice
Maintaining & Enhancing Your Defensive Strategy
The Right Enforcement Strategy for Operating Companies
To Patent Or To Trade Secret: When do Trade Secrets Make Sense?
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
DR. JUDY JARECKI-BLACK is Global Head of the Intellectual Property Department at Merial Limited, the Animal Health Division of Sanofi. Dr. Jarecki-Black is admitted to the state bars of Georgia and South Carolina, and is admitted to practice before several federal courts including the United States Supreme Court. Her background includes over 20 years’ experience as a researcher in developing human and animal vaccines against infectious diseases, including developing and licensing the recombinant Lyme (OspA) vaccine for Rhone merieux. It was her work on the recombinant Lyme vaccine that first introduced her to patent law and inspired her to get a legal degree at the Georgia State University, College of Law. Since 2002, Dr. Black has been responsible for the maintenance and enforcement of Merial’s global patent portfolio. Her department obtains patent protection, generates patentability and freedom-to-operate opinions, and conducts due diligence for a variety of licensing opportunities. Dr. Jarecki-Black is also responsible for global patent litigation and leads the trial team on all patent cases.
Steven Wong is Senior IP Counsel at The Home Depot. He leads Home Depot’s IP function globally, including portfolio development and management, clearance and landscape analysis, enforcement and defense, and transactional and licensing activities. Mr. Wong is also involved with mergers and acquisitions. Prior to joining Home Depot in 2012, Mr. Wong was a partner at a patent boutique law firm where he drafted and prosecuted patent applications. He holds a B.S. in computer science from The University of Texas at Austin and a J.D. from Texas Tech University School of Law.
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.
Elizabeth Lester is Intellectual Property Counsel at Equifax, where she manages the intellectual property portfolio and provides counseling on intellectual property issues in transactional matters. Prior to joining Equifax, Elizabeth was an associate at Sutherland LLP, where her practice was focused on patent prosecution and intellectual property transactions. Elizabeth received a J.D. from Georgia State University, a M.S. in chemical engineering from Georgia Institute of Technology, and a B.S. in chemical engineering from the University of Kentucky. She is actively involved in various professional and community activities, including serving as a board member of the Orange Duffel Bag Initiative and raising money for the Leukemia & Lymphoma Society through Team in Training.
Lori-Ann Johnson focuses on client counseling where she assists clients with the value management of their portfolios. She helps companies understand the legal and commercial significance of their intellectual property and assists in aligning their IP portfolios to meet their business objectives. She has more than 30 years of experience in the areas of portfolio establishment and landscape analysis, due diligence, including acquisition, freedom to operate, new product launch, and pre-litigation analysis in the chemical area. She also has significant experience in all phases of utility and design patent preparation and procurement, infringement, validity and patentability opinion preparation, reissue and reexamination practice, interferences, post-grant proceedings including IPR and PGR before the Patent Trial and Appeal Board (PTAB), and licensing. Ms. Johnson’s technical experience is diverse and involves chemical subject matter such as consumer products, pharmaceuticals, papermaking, cosmetics, industrial chemicals, beverage compositions, photochemistry, glass making, and medical devices. She has worked with such companies as Georgia Pacific, Coca Cola, L’Oreal, Astra Zeneca, sanofi-Aventis, Polymer Group Inc., and Xerox. Ms. Johnson routinely lectures in both the United States and Europe on all aspects of the protection and enforcement of U.S. intellectual property rights, including chemical patent practice, freedom to operate, due diligence, acquisition and landscape analysis, and licensing. Her international practice is strengthen by her residence as managing partner of Finnegan’s Brussels office for six years.
With more than 10 years of experience in patent law, my practice encompasses nearly every aspect of the patent life cycle, including the preparation and prosecution of patent applications, portfolio management, strategic counseling, and patent litigation.
With regard to strategic counseling and patent portfolio management, I have prepared more than 200 patent applications in a wide variety of technologies, including fiber optic hardware and accessories, wireless communications, display devices, handheld electronic devices, medical devices, electro-mechanical technologies, communication systems, semiconductor devices, high frequency electronics, control systems, heavy machinery, and computer-related technologies. I also possess extensive patent prosecution experience, having prosecuted well over a thousand domestic and foreign applications, many of which I managed from filing to issuance. Additionally, I maintain a robust strategic counseling practice, having prepared numerous opinions on patentability, infringement, and validity of patents.
I also represent clients in patent litigation before district courts and the U.S. International Trade Commission (ITC). I have experience in all aspects of pre-trial litigation, including handling discovery requests, preparing invalidity contentions, drafting claim construction briefs, creating technology tutorials for judges, and working with experts.
Prior to joining Corning, I gained valuable experience serving as in-house patent counsel at Amazon.com. Before joining Amazon, I practiced patent law in the Electrical Practice Group at Finnegan for 7 years. Previously, I served as the engineering technology manager with the Division of Patents and Licensing at the University of South Florida, where I was responsible for managing the extensive patent portfolio for the College of Engineering and physical science departments, including over a dozen research centers and institutes.
Nathan's experience in patent law spans all aspects of patent preparation, prosecution, and enforcement. He helps with developing and protecting AirWatch's patent portfolio as the leader in enterprise mobility management software. AirWatch continues to develop solutions that empower companies to focus on innovative uses of mobile technology rather than dealing with the complexities of managing mobility. Nathan brought over ten years of experience in the mobile field to AirWatch.
He has litigated in numerous district courts and before the ITC in several major trials relating to electrical and computer technologies. His litigation experience includes everything from researching infringement prior to filing a complaint through trial and appeal. He has first-chair trial experience in multiple trials, including direct and cross-examination of both fact witnesses and experts, and has appeared before the Federal Circuit on appeal.
Mr. Sloan began his career as a patent examiner, where he spent two years learning the tools of patent prosecution and developing an appreciation for what it takes to successfully move applications through examination.
Mr. Sloan frequently publishes and speaks on developments in patent law. His paper "Think It Is Invalid? A New Defense to Negate Intent for Induced Infringement," which was published in the Federal Circuit Bar Journal, was cited in support of the U.S. Supreme Court's majority decision in Commil v. Cisco (2015). He has spoken about pending and decided patent cases at the U.S. Supreme Court to companies and organizations throughout the United States. Mr. Sloan has also taught law school and university classes on Trial Advocacy and patent law.
Dr. Reagan Charney is a patent attorney at Newell Rubbermaid with responsibility for the writing segment (Sharpie, Expo, Mr. Sketch), along with the commercial products and home solution business segments. Dr. Charney is also an adjunct professor at Georgia State Law school, co-teaching patent law.
Sam Miller, a shareholder in the Firm's Nashville office and Co-Chair of the Firm's Intellectual Property Litigation Sub-Group, advises, protects and defends businesses and individuals involved in intellectual property and technology transactions and disputes. Mr. Miller has counseled a wide range of clients from individuals to small businesses to Fortune 500 companies in copyright, trademark, trade dress, patent, right of publicity, false advertising, internet defamation and other technology-related matters. Using his understanding of the business aspects of intellectual property gained through litigating intellectual property cases for nearly a decade, Mr. Miller assists clients in finding ways to monetize their intellectual property assets through establishing licensing revenues, sales, conversions to capital, spin-offs and litigation. Mr. Miller also is a Rule 31 Listed Mediator in the field of General Civil Mediation.
Susanne is currently Senior Counsel - Head of Patents at The Coca-Cola Company. In that position, she is responsible for implementing the Company’s global patent strategy from developing effective plans for protection of its newly developed assets through ensuring adequate risk management procedures during product launch. Her team manages a global portfolio of over 3,000 active patents and patent applications in all areas of technology.
Prior to joining the Coca-Cola Company, Susanne was Director of Licensing and Chief Intellectual Property Officer at Emory University, where she was responsible for advising on appropriate patent protection strategies to maximize licensing potential for new technologies, provided legal support to the Technology Transfer Office during contract negotiations and license disputes, and managed an in-house patent prosecution team and a license compliance function. Prior to joining Emory, Susanne spent seven years at the law firm of King & Spalding focusing on patent prosecution and intellectual property counseling.
Susanne earned her J.D. magna cum laude from Georgia State as well as a doctorate in neuroscience from Emory, where her graduate work focused on characterizing molecular and cellular properties of certain newly identified cell signaling proteins. Prior to her graduate research, Dr. Hollinger also conducted pharmacological studies on extracellular receptors involved in the control of the autonomic nervous system, including drug screening and receptor regulation.
Bill is a senior executive and proven leader that has managed teams, led large scale business development and sales transactions, advised clients and worked across numerous geographies, industries and functional disciplines. He has a consistent track record of developing high performance teams and meeting business objectives.
Andrew is the firm's managing partner and a member of the firm's litigation and prosecution practice groups. Andrew's practice experience involves all areas of intellectual property law, including patents, trademarks, trade secrets, copyrights, and unfair competition.
Andrew represents clients in litigations involving all types of intellectual property issues, having appeared in district courts throughout the United States and having represented clients at the appellate court level, particularly the United States Court of Appeals for the Federal Circuit.
Andrew's patent prosecution experience includes a wide range of electrical, electromechanical, and mechanical technologies. Andrew also periodically renders legal opinions concerning the infringement, validity, and enforceability of patents and opinions regarding product clearances and trademark searches and clearances.
Jonathan Harris has 15 years of experience litigating high-stakes patent and trade secret matters, including matters with multi-million and billion dollar exposures. He has tried cases, and argued numerous contested proceedings, including hearings on claim construction and dispositive motions.
Jonathan concentrates his practice in the fields of biochemistry, mechanical engineering and computer software. His experience in life sciences and medical device patent litigation is particularly extensive. For example, he frequently leads litigation teams in complex Paragraph IV patent disputes, an area of focus for the past ten years.
Earlier in his career, Jonathan prepared and prosecuted patent applications in a variety of industries. He successfully argued appeals before the Board of Patent Appeals and Interferences, defended reexaminations and prosecuted interferences. His patent prosecution experience is a foundation for his litigation and counseling practice.
Outside the firm, Jonathan teaches a class on federal pretrial litigation at UCONN Law and tries cases for the Commission on Human Rights and Opportunities on a pro bono basis.
A seasoned litigator with a background in complex civil matters, Ann G. Fort oversees and protects the intellectual property rights of clients in the United States and abroad. Her practice encompasses patent infringement, licensing disputes, trade secret protection and unfair competition. She tries cases in both federal and state courts and represents clients in alternative dispute resolution, such as arbitration and mediation. Her recent experiences include defending claims brought by non-practicing entities, also known as patent holding companies or patent assertion entities.
Many of Ann’s clients are in the technology industry. Her technology cases range from loan and deposit pricing software, Internet-based information management systems and ground fault circuit interrupters, to power management unit chips, interactive television program guides, computer network security protection systems and medical information systems. She also counsels businesses in complex multiparty litigation. In the pharmaceutical industry, for example, Ann represents both patent owners in licensing disputes and accused infringers of formulation patents, including in Hatch-Waxman litigation. Ann’s clients vary from large corporations and start-up businesses to universities and research institutes.
An active leader in Sutherland’s pro bono program, Ann achieved clemency for a client on death row, representing him for more than 11 years before he was granted clemency just hours before his scheduled execution. She serves on American Bar Association and Georgia Bar committees charged with considering capital defense representation and related policy issues.
Vivek Ganti's practice focuses on patent litigation and post-grant review proceedings such as inter partes review (IPR). He develops infringement, invalidity, and claim construction strategies and engages in discovery, motion practice, pre-trial and trial practice, all with an emphasis on value-based representation. As a registered patent attorney, Mr. Ganti has served as counsel in numerous IPR proceedings before the Patent Trial and Appeal Board. Mr. Ganti has participated in several IPR trials and appeals. In 2015, Mr. Ganti has prepared and filed approximately twenty IPR petitions. Much of his work in IPR practice overlaps with ongoing district court litigation, yielding strategic insights for parallel proceedings. Mr. Ganti has worked with a variety of technologies including wireless and cellular networks, video transcoding, server-client systems, broadband gateway devices, packet switched networks, mesh networks, server blade systems, analog circuits, integrated circuit fabrication, power amplification, digital signal processing, Basic Input/Output Systems, other computer-based systems, and various biotech and pharmaceutical-related technologies. Prior to law school, Mr. Ganti was a product development engineer at Intel.
Michael Turton concentrates his practice in intellectual property law, with a primary focus on patent litigation and intellectual property strategy and licensing. Fields of technology in which he has experience include computer hardware and software, computer security, telecommunications, computer networking, film and digital projection technologies, financial services item processing, fiber optic networks, Internet search and services, electronic commerce, semiconductor and integrated circuit technology, and electro-mechanical devices.
Mr. Turton has represented companies in patent litigation actions in California, Delaware, Georgia, Iowa, Massachusetts, Texas, and Virginia. Additionally, he regularly assists companies with a variety of intellectual property matters, including pre-suit matters, such as analyzing patents held by competitors, conducting freedom to practice analysis, and providing written opinions.
An experienced trial and arbitration attorney, Danielle Williams has handled a wide range of business disputes, including patent infringement, securities fraud, and complex contract matters in a number of federal and state courts. Located in Fish’s Atlanta office, Ms. Williams’ practice focuses on patent litigation. Ms. Williams has extensive experience in handling high-risk, multi-patent, multi-product, multi-defendant cases in a broad range of technologies, in federal courts across the country. She regularly advises clients regarding various pre-suit patent litigation issues including indemnity obligations and declaratory judgment options. Ms. Williams has authored articles on patent litigation, patent damages, electronic discovery and time management and has presented CLEs on patent litigation, patent damages and electronic discovery. She also co-authors a blog focused on patent damages: www.patent-damages.com.
Christopher Marchese is a Principal in the Southern California office of Fish & Richardson. His practice focuses on patent litigation, including cases involving computer networking, hardware, software, and chemistry, as well as integrated circuits, compression technology, and wireless communications. Mr. Marchese has substantial experience handling trials, pivotal motions, and other key aspects of patent litigation matters, including summary judgment arguments, tutorials and argument at Markman hearings, and mock jury trials. He has litigated or tried major patent cases in multiple jurisdictions across the United States, including the Central, Southern, and Northern Districts of California, the District of Delaware, District of Massachusetts, the Eastern District of Wisconsin, and the International Trade Commission. In addition to patent litigation, Mr. Marchese also represents his clients in cases involving Inter Partes Review, trademarks, design patents, copyrights, unfair competition, and trade secrets.
Bryan G. Harrison is a Partner in the Atlanta office of Locke Lord LLP where he concentrates his practice on intellectual property litigation. His practice focuses primarily on advising clients regarding patent, trademark and copyright infringement, computer system performance, and antitrust and unfair competition, as well as prosecuting and defending actions in which such issues arise. He serves as regional or national litigation counsel for clients and has prosecuted or defended cases in the various courts of over 30 states, Canada, and the European Union.
Gary Saidman was Senior Vice President and Deputy General Counsel of The Weather Channel, LLC. In that role, he was responsible for a variety of legal issues impacting The Weather Channel and its affiliated entities. He has been involved in all aspects of the company’s business, including The Weather Channel Network, weather.com, and wireless and mobile products and applications. In addition to his legal and management responsibilities, Gary also supervised the patent program for The Weather Channel companies, with primary legal responsibility for supporting the company's IT department, international operations and the company's affiliate, WSI Corporation. In January 2016, the product and technology business of the company was acquired by IBM, operating as The Weather Company, an IBM business.
Gary graduated from Emory University Law School in 1978, where he was Notes and Comments Editor of the Emory Law Journal. From 1978 through June 1980, he was an associate with the Atlanta office of the New York firm, Seward and Kissel. In 1980, that office merged with Kilpatrick Townsend (then known as Kilpatrick Cody). At Kilpatrick, Gary worked in the Corporate, Tax and International Groups, handling general business and commercial transactions, mergers and acquisitions, U.S. and international investments, overseas operations, technology related matters and other general business and commercial transactions. Gary became a partner with Kilpatrick in 1986.
During the 1990’s Gary focused his practice on technology and technology related transactions, specializing in licensing, technology joint ventures, technology development arrangements, internet and multinational outsourcing matters.
Gary is a member of the Georgia and the Washington DC Bars. Gary was one of the original members of the Technology Section of the Georgia Bar, served as Chairman of that section and participated on its Executive Committee.