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 & networking on the issues facing 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
Identifying Patents of Value in any Portfolio
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
Stephen is currently Senior Corporate Counsel in T-Mobile’s Litigation Group. At T-Mobile, he manages patent and other intellectual property litigation and provides strategic counseling on various intellectual property matters. Prior to joining T-Mobile, Stephen served as Assistant General Counsel at Microsoft Corporation where he managed U.S. and international patent litigation in Microsoft’s Litigation Group dating back to 2001, and later handled various patent counseling, dispute resolution, and licensing related issues as part of Microsoft’s Innovation and Intellectual Property Group. As the second patent litigator hired at Microsoft, Stephen has been responsible for many large-scale and high stakes patent litigation matters, including the Lucent v. Microsoft series of cases that are cited to frequently in the context of patent damages reform. Prior to Microsoft, Stephen practiced at Latham & Watkins in Silicon Valley, California, where he also focused on patent litigation and other intellectual property disputes. He is a graduate of the University of California, Berkeley, and the UCLA School of Law.
20 years of legal experience focusing on international transactions, intellectual property licensing and corporate matters. Industry experience includes software, cloud platform technology/SaaS, business consulting, telecommunications and biotech. Nancy has been VP, AGC at Parallels for the past 4 years. She just completed negotiations on the M&A transaction for Ingram Micro to purchase Parallels’ cloud technology platform. Nancy is now responsible for managing the patent portfolio for Ingram’s cloud group along with leading a team of global lawyers to negotiate enterprising licensing deals, manage data privacy and drive cloud revenue.
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals.
He is the primary evaluator for standards essential patents on today's most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada.
One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect.
Dr. Díaz is the Associate Vice-President-Sr. Patent Counsel for L’Oréal Research & Innovation USA. He started his career as a patent attorney in one of the top patent law firms in the US, Finnegan, Henderson, Farabow, Garrett & Dunner. He then joined Intellectual Ventures where he built and developed patent portfolios mainly in the fields of medical devices, wearable technology, information and communication technology, optics and advanced materials. More recently, in 2012, he co-founded Díaz|Cook an IP law firm providing clients counseling on the procurement, enforcement, management, and monetization of intellectual property rights and assets.
After earrings his B.S. in Chemical Engineering at the University of Washington, he enrolled in graduate school where he studied the fast and slow internal dynamics of 13C-labeled deoxyribonucleic acid (DNA) oligomers in solution. Dr. Díaz eventually earned an M.S. and a Ph.D. in Physical Chemistry (Biophysics), as well as a J.D. from the University of Washington.
Dr. Díaz was raised and lived in various places including Mexico, Alaska, Hawaii, and Washington D.C., and now calls the Pacific Northwest home.
He currently serves as a Trustee for Seattle Children’s Hospital Board of Trustees, and as Past President of the University of Washington Alumni Association.
Dr. Díaz was the recipient of the 2012 Latina/o Bar Association of Washington Model of Excellence Award and the 2011 University of Washington’s MAP Distinguished Alumnus Award.
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.
Summereen (“Sam”) Nott – Director, Global Legal Services with Expeditors International of Washington, Inc. (“Expeditors”) – Seattle, WA. Sam is in-house counsel for Expeditors a global logistics firm with offices around the world. She has been with Expeditors close to 15 years assisting her business colleagues with various legal concerns from litigation management to contract negotiation. Currently, Sam’s focus as Director in the Legal Department is on transactional matters, such as contract negotiations or assisting with reviewing intellectual property questions.
Mr. Finrow is a seasoned biotechnology executive with leadership experience managing IP strategy, fundraising and corporate development. Mr. Finrow recently took the helm of Lumen Bioscience, a Seattle-based synthetic biotechnology company. From 2014 to 2017, he led corporate development and legal affairs for Adaptive Biotechnologies, including their $200 million acquisition of Sequenta in 2014 and equity financing transactions yielding over $300 million in proceeds. Mr. Finrow spent his early career an attorney with Venture Law Group and Cooley LLP, an AmLaw Global 100 law firm, where he practiced in the emerging companies group advising venture capital firms and public and private companies in the life sciences and information technology industries. He earned his law degree, cum laude, from Harvard Law School, where he was an Executive Editor of the Harvard Journal of Law and Public Policy.
Scott Schrum is Senior Intellectual Property Counsel at Liberty Mutual Insurance. He currently specializes in intellectual property protection and development, licensing and trademarks. Scott previously worked at Safeco Insurance as Home Office Counsel and As Acting and Deputy General Counsel at the Seattle Housing Authority. Scott earned his JD from Columbia University School of Law and his Bachelors at Claremont McKenna College.
Mark S. Parris, partner in the Seattle office, is a member of the Intellectual Property Group. Mr. Parris’ practice focuses on complex commercial litigation involving patent and trade secret issues and other related technology disputes. His experience includes litigating and assisting clients with drafting and negotiation of licenses and other contracts relating to the sale or distribution of hardware, software, medical devices, and other intellectual property and products. Mr. Parris has substantial experience in representing clients in litigation and counseling concerning protection and misappropriation of trade secrets, enforcement of non-competition agreements and other competitive issues, as well as general commercial distribution practices and contracts. He was one of two patent litigators in Washington selected as an Amazing Attorney by Washington CEO magazine and was recently recognized as one of the top 30 trial lawyers in Washington. He has been a speaker nationally at various seminars on litigation and trial techniques. Mr. Parris has tried numerous cases - both jury and non-jury trials - has handled several arbitrations and mediations and has served as an expert witness. In addition, Mr. Parris is a member of the firm’s Insurance Recovery Group. He has been named as the leading policy-holder side attorney in Washington State. He has represented several Fortune 500 companies as well as the State of Washington, the Washington Association of Municipal Attorneys and several cities, counties and port authorities in insurance coverage disputes.
John is a member of the firm’s Intellectual Property section. He focuses his practice on patent licensing and counseling.
Before coming to Shook, John served as associate general counsel at Microsoft Corporation, where he led a team that analyzed patents for conflicts, outbound licensing, litigation support and risk mitigation. He also completed a two-year international assignment for Microsoft, handling intellectual property matters originating in Europe, the Middle East and Africa. In addition, John taught a class on intellectual property licensing at Seattle University School of Law as an adjunct professor from 2005 to 2011.
John graduated from the George Washington University Law School, where he worked as notes editor of The Journal of International Law and Economics and on the publication staff of AIPLA Quarterly Journal. He received his bachelor’s degree in mechanical engineering from Rice University, where he served as president of the Rice Engineering Association and the American Society of Mechanical Engineers, Rice Chapter. While in law school, John worked at the U.S. International Trade Commission as well as the U.S. Court of Claims for the Honorable Wilkes C. Robinson in Washington, D.C.
Laurent Masson joined the Avanade Legal Group in 2011 in Chicago as a Vice-President, Global Commercial and IP lead. In his role he also managed the North America and the APAC Legal teams. In 2012, he was appointed as Senior Vice-President and Deputy General Counsel. Prior to joining Avanade, Laurent worked for Microsoft between 2003 and 2011. In 2003, Laurent moved to Istanbul to manage the Microsoft Legal and Corporate Affairs department in the Middle East and Africa region. In March 2007 he became the Director for Anti-Piracy and Digital Crimes for Microsoft in Europe, Middle East and Africa (EMEA). From 2000 and 2003 Laurent worked for the EMEA legal department of Arthur Andersen where he was in charge of the legal support to the consulting activities. Before these in-house experiences, he worked from 1993 for law firms and patent attorneys in France (Cabinets Patrick Mollet-Viéville and Alain Bensoussan) and in Japan (Cabinet Ota & Associates) specializing himself in computer and intellectual property laws. He holds a Master degree in Private law (University of Paris - Paris II), a Master degree in industrial property (University of Paris - Paris II) and he is graduated from the Institut d’Etudes Politiques de Paris (Sec. Eco-Fi). He is a member of the Paris Bar.
In his role as Vice President, Patent Intelligence Services, Ian provides strategic direction and leadership to a team of highly specialized engineers, analysts and customer service professionals dedicated to providing Intellectual Property (IP) Groups and Law Firms with the ability to get maximum value from their patent portfolios.
He is passionate about leveraging Chipworks’ deep patent knowledge, market understanding and advanced in-house technology analysis capabilities to provide highly customized IP solutions. Clients from around the world trust Ian and his team to achieve favorable outcomes in licensing negotiation and litigation, grow their licensing programs, and make sound patent acquisition decisions.
Ian has excelled in a variety of progressively senior roles at Chipworks over the last decade, and has been instrumental in helping the company expand its scope of operations and deliver a growing portfolio of innovative patent services to new markets worldwide.
Bruce Rubinger, Ph.D.
Managing Director – Global Prior Art, Inc.
Bruce Rubinger is Managing Director and founder of Global Prior Art (GPA), a pioneer in the field of IP research and analysis with a rich history spanning more than 30 years. He is a well- known authority and speaker on effective prior art searching, IP due diligence and critical worldwide search resources. Dr Rubinger has worked closely with many joint-defense groups and leading law firms on high-stakes cases in fields such as wireless communications, software, multimedia streaming, business processes and speech recognition. As managing director, Dr Rubinger oversees GPA’s engineering division, comprising the electronics, telecommunications, software and mechanical engineering groups. He is also a member of GPA’s life science management committee. His team encompasses more than 60 full-time specialists, including staff in Japan, Germany and Russia.
Since the creation of GPA in 1982, Dr Rubinger has participated in hundreds of high-stakes cases, frequently locating critical prior art that anticipated patents which were previously litigated successfully. His broad experience and insight are instilled into GPA’s software and institutional processes, which approach invalidity analysis in a scientific manner that yields higher performance. Dr Rubinger was also a pioneer in the field of IP strategy. The third-generation GlobalMap IP landscape analysis tool has been awarded a US patent and is used by clients to create a strong IP portfolio.
Dr Rubinger’s background encompasses a blend of technology and the science of decision making. He holds a BSEE, an MSEE and a PhD in systems science. His dissertation addressed non-linear filtering and its application to prediction and estimation.
Dr Rubinger began his career with Hughes Aircraft, where he was involved in digital signal processing. He was awarded a NASA fellowship and is a member of Eta Kappa Nu and the honorary research society Sigma Xi. Some recent articles and presentations include “Locating Prior Art Gold: The Five Keys to Successfully Uncovering Strong Prior Art” (IP Today, July 2011), “Using effective IP due diligence to guide an IP monetisation strategy” (IAM IP Monetisation Yearbook 2013), “GPA’s Experts vs The Crowd: Setting The Performance Record Straight” (Global IP Outsourcing Conference and Exhibition, San Francisco, February 17-18 2014), “Managing IP Risk from NPEs and Competitors Through Effective Invalidity Search Strategies and Risk Analysis” (The London IP Summit, October 13, 2014), “Patent Quality: Implementation insights for the C-Suite” (Intellectual Asset Management Yearbook 2016),
“Effectively Employing the Invalidity Defense: Assessing the Effectiveness of Alternative Strategies” (The IP Defense Summit: Silicon Valley, June 18, 2015), and “Effective IP Strategy: Key Implementation Steps to Attain the Next Level” (IP Strategy Summit: Seattle, February 23, 2016). In recognition of his pioneering work and impact, Dr. Rubinger was included in IAM 300: The World’s Leading IP Strategists for the most recent five years.
Bill Harmon is a Director of IP & Trademarks at Uber Technologies. His practice includes all areas of intellectual property with a focus on inbound and outbound patent licensing related to both commercial deals and IP disputes. Prior to joining Uber, Bill was a partner at Shook, Hardy & Bacon representing clients on matters related to intellectual property and cyber security. Bill also worked at Microsoft for over a decade where he served as Assistant General Counsel in Microsoft’s Patent Litigation Group, Assistant General Counsel for Microsoft’s Digital Crimes Unit, and General Manager for Microsoft’s Global Standards Team. Bill graduated from Santa Clara University School of Law in 1995 and holds a Bachelor of Science degree in Electrical Engineering and a Master’s degree in Business Administration from Santa Clara University. Bill spent 4 years as an adjunct law professor at Seattle University teaching IP Licensing.
Ms. Anderson joined the firm as a partner in the Seattle office in January 2008. Ms. Anderson has extensive experience in comprehensive, strategic client counseling in all aspects of intellectual property. She has been very active in the prosecution of patent applications in the computer science and ecommerce fields since 1993.
Ms. Anderson has extensive experience in developing patent and trademark portfolios and developing patent and trademark assets. Ms. Anderson also provides patent and trademark clearance analysis and advice for a wide variety of products and services. She also counsels clients on patentability and infringement matters and develops comprehensive intellectual property programs for pre-litigation, licensing and enforcement purposes.
Leon Steinberg is Managing Director, North America at the Dennemeyer group. His area of expertise focuses on management, business development, strategy, marketing, patent analytics. He's been active in intellectual property since 2001. He earned his JD from William Mitchell College of Law.
Sherri L. Candelario, Ph.D., is the Vice President of Intellectual Property, Contracts and Business Development for Integrated Diagnostics, an emerging leader in molecular diagnostics based in Seattle. Candelario specializes in intellectual property (IP) strategy for early-stage life sciences companies. She is registered as a patent agent before the USPTO. At Indi, she leads IP strategy and manages the company’s patent portfolios and contracts. She negotiates licenses and contracts with external collaborators, including universities and private companies. She also manages the company’s outside counsel and develops the firm’s in-house IP practices. Prior to joining Integrated Diagnostics, she worked as an IP consultant, leading IP strategy for several life sciences companies, including Ikaria, Inc., Nanostring Technologies, Inc. and Allozyne, Inc. She served as Acting IP Director at each of those companies. She also served as Interim Director of IP at the Institute for Systems Biology. Candelario holds a Ph.D. in pharmacology from the University of Washington.
Dr. Paul A. Maltseff is a highly experienced professional in all aspects of intellectual property creation and management. He graduated as an electronic engineer from Mozhaysky Military Aerospace Engineering Academy (MMAEA), Saint Petersburg, Russia, and received Ph.D. and D.Sc. in applied cybernetics from MMAEA in 1981 and 1989 respectively, and was conferred Juris Doctor from a School of Law, Seattle University in 2005. Until 1992 he had been a professor in MMAEA and a head of laboratory in the National Academy of Sciences of USSR. During 1992-2014, Dr. Maltseff had been involved in R&D projects with Versatron Corp. and Intermec Technologies Corp. on senior engineering positions and as a chief intellectual property counsel. In January of 2014, he joined Datalogic as a chief intellectual property counsel. Dr. Maltseff holds 30 U.S. patents and authored more than 50 publications.
Before joining Benemilk Ltd, as a director for the Invention Development Fund (IDF) at Intellectual Ventures (IV), Dr. Wan used her legal, scientific, and business experience in all aspects of the invention capital investment process from technology assets creation, evaluation and acquisition, IP portfolio management, technology startup, partnership and joint venture formation, to technology licensing and commercialization.
Previously, Dr. Wan has worked as a patent attorney at the Seattle law firm of Christensen, O'Connor, Johnson, Kindness (COJK) and as a researcher in both academic and industrial labs researching and developing cancer therapeutics. As a co-founder of pharmaceutical start-up, Thermopeutics LLC, Dr. Wan negotiated technology licenses of the "thermogel" patent portfolio and raised venture capital funding. Dr. Wan also served as a Legislative Fellow for Senator Maria Cantwell at Washington D.C.
Dr. Wan earned a bachelor's degree and a master's of medicine from Beijing Medical University, a master's degree in chemistry and a Ph.D in organic chemistry from Clark University, and is a graduate of the University of Washington, School of Law. Dr. Wan is a member of the Washington State Bar Association Legislative Committee, a board member of the Licensing Executive Society Seattle Chapter and Washington State Patent Lawyers Association, and on the advisory board of the Washington State Life Sciences Discovery Fund. She has published in numerous scientific journals, is a prolific inventor and is a frequent speaker on topics of law, science, and business.
Elana Matt is a Director of Legal Affairs at T-Mobile USA, Inc. and is primarily responsible for managing patent litigation and licensing matters for the company. Ms. Matt is also responsible for proactive risk management and providing general legal advice relating to all aspects of intellectual property, including patents, trademarks, copyrights, and trade secrets. Prior to joining T-Mobile USA, Inc., Ms. Matt was a patent litigator with the law firm of Perkins Coie where she litigated cases involving mechanical, medical, hardware, and software technologies. Ms. Matt also practiced law at an intellectual property boutique in Colorado Springs, Colorado, focusing on intellectual property litigation and patent prosecution. After several years in private practice, Ms. Matt joined the United States Army JAG Corps. During her tour with the Army, Ms. Matt gained extensive trial experience as a senior trial counsel and did more push-ups than she cares to remember. Ms. Matt earned a Bachelor of Science degree from University of Wisconsin-Madison and holds a J.D. degree from Marquette University Law School.