For nearly thirty years I have been primarily working on intellectual property protection matters, particularly in the pharmaceutical industry, including firm and corporate experience. The practice has also included drafting and prosecuting numerous patent applications, managing trademark portfolios, managing domain names, undertaking opinion analyses, conducting licensing and due diligence assessments, counseling internal and external clients, managing adversarial actions, developing strategies for generic approvals, and managing and training other patent practitioners. I’ve also lectured extensively on an assortment of US and foreign intellectual property issues, including patenting of follow-on biological therapeutics and polymorphs, strategic management of intellectual property assets, analyzing and critiquing of patent cases before the US Supreme Court such as Paragraph IV strategies, safe harbor provisions of §271(e)(1) in view of Merck v. Integra and obviousness considerations in view of KSR, and discussing importance of intellectual protection for fostering the development of pharmaceuticals. My expertise is in devising innovative tools and practices for improving the procurement of patents, developing corporate responses to legislative and administrative patent related initiatives, developing strategies for responding to improper Patent Office positions such as the restricting of Markush claims, patenting of polymorphs and procuring a proprietary position for reformulated drugs, and enhancing the defensive and offensive character of patents.
Crystal M. Lacey is the Intellectual Property Counsel for Suez Water Technologies & Solutions (SWTS) supporting the Chemical and Monitoring Solutions (CMS) business. In her role, she is responsible for domestic and international legal issues that are related to intellectual property, including freedom to operate reviews, management of patent and trademark prosecution, and agreement drafting and negotiation.
Prior to devoting herself full time to the practice of law, Crystal spent 10 years working as an engineer in the chemical and filtration industries for the Rohm & Haas Company and Pall Corporation. She obtained her Bachelor of Science in Chemical Engineering with a minor in Business Administration from Drexel University. She is graduate of the Widener University School of Law. Crystal also earned her LL.M. in Trial Advocacy from Temple University.
Mark Maloney began his career in the legal industry as a litigator in Chicago, but moved to intellectual property working at several law firms as an associate, including Barnes & Thornberg, Pepper Hamilton, and Eckert Seamans. He later went into in-house practice, first as acting Chief IP Counsel for Alcoa’s North American Milled Products division through Eckert Seamans, then as Senior Patent Counsel for E. I. du Pont de Nemours and Company. Practicing primarily in the area of intellectual property and technology law, Mr. Maloney has considerable skill in intellectual property strategy and has prepared and prosecuted numerous patents on commercially successful products with combined sales totaling about $1B globally. In addition, he has prepared and negotiated licenses in a wide variety of fields. He has provided significant pro bono work for Delaware Volunteer Legal Services, serving the Delaware community by leading teams of attorneys in multiple wills & trusts pro bono clinics for low income elderly. Mark is currently the Associate Director for Technology Licensing at Johns Hopkins Technology Ventures focusing on intellectual property portfolio management and licensing in the medical device, aerospace, chemical and software industries.
Rosaleen is a skilled attorney with in-house and law firm experience, handeling all aspects of sophisticated intellectual property and commercial law, including contracts, patent and trademark prosecution, and litigation. She has excellent technical capabilities combined with management skills focused on careful attention to detail and communication with clients ensures that their objectives are met and their projects are completed within time and budget constraints.
Prior to Drager, Rosaleen held the Senior IP Counsel position at Air Products, the Associate Attorney position at Woodcock Washburn and various trademark and prosecution responsibilities at Campbell Soup Company. She earned her Engineering Degree from Rutgers University, her M.B.A from San Jose State University and her J.D. from Rutgers Law School.
Steven Weiner is an expert IP strategist. He serves as Chief Patent Officer and Deputy General Counsel for Intellectual Property at SRI International, a nonprofit, world-leading scientific R&D institution. Steven works closely with SRI’s management, business teams and innovative researchers to help commercialize SRI’s intellectual property in partnership with licensees and clients ranging from new ventures to Fortune Global 500 market leaders. Steven was a partner for over 8 years with Davis Polk, a preeminent global law firm, where he led and grew the firm’s Corporate Intellectual Property practice. Steven advised companies and investors on high-stakes transactional decisions requiring deep insight into IP law, technology, and business strategy. Steven is a graduate of Harvard Law School (J.D., cum laude), MIT (S.M., Computer Science & Electrical Engineering) and University of Pennsylvania (B.S.E., Systems Science & Engineering, summa cum laude). Steven co-invented several issued patents in the field of artificial intelligence, and he was named to the inaugural list of the world’s leading IP strategists by IAM 250 – A Guide to the World’s Leading IP Strategists. Steven is admitted to practice law in the State of California and is a registered United States Patent Attorney.
Ryan Strom is Director Counsel – Intellectual Property at Target, where he focuses on patent portfolio management and open source software issues. In addition to stops at several law firms, Ryan previously worked for nearly five years as Senior Counsel at Philip Morris International in Mexico City and New York. Ryan holds his undergraduate degree from Stanford University and a Master’s degree in Mechanical Engineering from the University of Minnesota. He also received his law degree from the University of Minnesota and is currently licensed to practice in Minnesota. Though he’s now a cold-loving Minnesotan who his weekends getting his four kids dressed for hockey practice, he grew up in Fresno, California.
Atabak Royaee is an Associate Director and Corporate Counsel, IP, at Boehringer Ingelheim Pharmaceuticals, Inc. (BIPI) located in Ridgefield, Connecticut. In his role at Boehringer, Atabak manages BIPI’s patent portfolios in various therapeutic areas, drafts and prosecutes patent applications, drafts legal opinions, assist in handling IPR proceedings, performs due diligence reviews, and provides counsel to business on licensing and transactional matters. Prior to joining BI, Atabak was an associate attorney at McDermott Will & Emery and LeClairRyan law firms conducting patent prosecution and post-grant proceedings work; and prior to his tenure at law firms, Atabak was a postdoctoral fellow at Harvard School of Public Health and U.S. Department of Agriculture specializing in immunology and infectious disease research. Atabak has B.S. in chemistry and a Ph.D. in biochemistry and molecular biology from Georgetown University, and a law degree from the Suffolk University Law School.
Leon is IP Counsel at Novo Nordisk. He has extensive experience in IP litigation from a tactical and strategic perspective. Prior to his role at Novo Nordisk, Leon was a Patent Attorney at Foley and Lardner LLP. Previously he served as Patent Examiner at the USPTO. Leon earned his BS in Bioengineering from the University of California - San Diego, his MSE in Biomedical Engineering from The Johns Hopkins University and his J.D. from Georgetown University.
Allen White currently serves as Chief IP Counsel for the North American affiliates of the Air Liquide group. He manages a department of 12 full time and 2 contract employees, including 6 attorneys. Allen worked as a patent engineer, prior to admission to the Texas bar in 2001, and as an IP specialist attorney since. Allen's experience includes extensive M&A duedil work, both technology centric and business centric. As part of his responsibilities, Allen drafts and negotiates numerous IP and technology driven agreements from NDAs to JDAs to Commercial Exploitation rights. Allen has also performed numerous FTO's and managed the follow on identified IP risks through opinions, design around counsel, invalidation actions, and licensure procurement. Allen still drafts and prosecutes patent applications, mainly related to the healthcare and life sciences/biotech segment of Air Liquide's diverse business portfolio. Prior to working at Air Liquide, Allen was an associate at Fulbright & Jaworski LLP (now Norton Rose Fulbright). Allen is licensed in Texas and registered with the USPTO.
Matthew focuses his practice on achieving business goals of clients across a myriad of industries. This includes patent portfolio development and strategic patent prosecution; litigation in federal district court; and inter partes proceedings before the Patent Trial and Appeal Board.
Matthew has a particular expertise in the pharmaceutical, life science and medical device fields. He draws on this experience to assist clients in the identification of products as business development opportunities and to maneuver through intellectual property hurdles by coordinating due diligence, preparing patent validity, freedom-to-operate and non-infringement opinions, and resolving disputes in Federal District Court and before the U.S. Patent and Trademark Office.
Prior to entering private practice at prominent Washington, D.C. firms, Matthew worked as a patent examiner at the United States Patent and Trademark Office where he was responsible for patent applications relating heterocyclic organic chemistry in the pharmaceutical and carbohydrate fields.
Matthew was selected for inclusion in the IAM Patent 1000 – The World’s Leading Patent Practitioners,2014-2017; Virginia Rising Stars, 2014-2015; and Washington, D.C. Rising Stars, 2014-2015.
Matthew brings his legal insight and business instincts to bear for clients. He looks at issues from all perspectives to achieve the most effective and desired outcome for his clients. This is particularly important in today’s competitive business environment where legal strategy must fit within the business goals of a client.
In his spare time, Matthew is an avid road cyclist and outdoors enthusiast.
Dan Shulman is Chief Intellectual Property Counsel for Reynolds Group Holdings, Ltd. and Fram Autoparts, a $13 billion global packaging and automotive parts company comprised of Reynolds Consumer Products, Pactiv, Closure Systems International, Evergreen Packaging, Graham Packaging, Fram and Autolite. Dan is responsible for managing the global patent and trademark portfolio of those combined companies, setting IP strategy, managing all IP litigation and acting as lead counsel in appellate work before the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Dan also routinely leads corporate initiatives in which IP drives significant value. Dan was with Pactiv prior to its acquisition by Reynolds Group Holdings in 2010. Prior to joining Pactiv in 2007 as its Chief IP Counsel, Dan was Senior IP Licensing Counsel for Motorola. Prior to that, Dan was an associate at Mayer Brown LLP from 1999-2006. Dan received his J.D. from Loyola University Chicago School of Law in 1999, and is a graduate of Northwestern University (1996) with degrees in Mathematics, Physics and the Integrated Science Program. Dan has been recognized as one of the Top Forty Lawyers Under 40 in Illinois (2013) by The Law Bulletin, and as a Managing IP In-House IP Star 2015 and 2016. Dan is a frequent speaker on topics of IP law, and has authored numerous articles on various IP topics and Federal Circuit jurisprudence. Dan is the author of two books: Insights Hurt: Bringing Healing Thoughts to Life, and Personal Midrash: Fresh Insights Into the Torah, due out in August.
Saket Sankhla is a Senior Business Unit Patent Officer for IT business at Schneider Electric. (In 2016, Schneider Electric revenue was € 24 billion, with 5 R&D hubs, and over 160,000 employees worldwide). He leads Schneider Electric’s global IT IP function. Mr. Sankhla has held numerous global leadership roles in law, business and technology. His key responsibilities include: portfolio development and strategic IP development, determine new technologies for Schneider Electric, manage IP budget, and negotiating tech transfers with strategic partners within the company and beyond. Saket enjoys presenting IP training to the upper management. Mr. Sankhla travels globally to assist the R&D hubs.
Prior to his current position, he has worked with reputed law firms, and corporations such as SAP and Motorola. Before venturing in IP, Saket worked in software programming and electronics. He believes this gives him an added advantage to understand the engineers (lack of engineer’s interest in IP or time) and project life cycle.
Saket’s passion to share knowledge brings him to present in IP summits: IP Strategy Innovation Summit in Boston and San Francisco. He routinely speaks and counsels globally on successfully executing global IP strategies for competitive advantage, effecting exceptional returns on IP investment, and transforming to innovative global legal department operations. He even finds time to be give lecturers in University of New Hampshire.
Seasoned Intellectual Property lawyer with 20+ years of combined legal and engineering experience. Trained, managed, and mentored teams of attorneys, engineers and support staff ranging from 3-12 professionals. Drafted and negotiated nondisclosure, technology development and licensing agreements. Managed intellectual property litigation. Proven track record of success. Before attending law school, James worked in the pulp and paper industry in various engineering and management positions for twelve years. During this time, James had extensive exposure to process improvements and product development in the newsprint manufacturing and paper recycling area as well as newspaper printing. During his final six years, he focused on control and information systems including control system analysis and design and information system support. While in law school, James was honored as a member of the Order of the Barons. He was the Managing Editor of the Houston Journal of International Law and served as judicial intern to Justice Charles W. Seymore of the Fourteenth Court of Appeals in Houston. He was admitted to practice law in State of Texas in 2006.
Michael J. Bonella has extensive experience as a litigator, as well as a patent prosecutor. Michael has argued cases before the Federal Circuit Court of Appeals. For example, Michael successfully represented Biosig Instruments against Nautilus at the Federal Circuit, where the appellate Court reversed the District Court’s invalidity finding. Michael further developed Biosig’s strategy for the Supreme Court proceedings in which the Supreme Court essentially adopted the indefiniteness standard proposed by Biosig in the landmark case decided last year.
In addition, Michael has been the lead lawyer on a number of district court litigations, representing both plaintiffs and defendants and is well-versed in all aspects of district court litigation. For instance, he was the primary force behind a settlement valued at $45 million for TruePosition. He is also well-versed in post-grant proceedings (e.g., reexamination, opposition, and Inter Parties Review (IPR)) before the U.S. Patent and Trademark Office. Michael is one of the few attorneys who has an LLM in Trial Advocacy and is also a registered patent attorney. In complex litigation, Michael’s strategy is to focus on trial from the onset of litigation and to maintain that focus throughout the case. By focusing on trial from the outset, Michael states that the “entire case can be managed strategically and with specific purposes and goals.”
Michael also has experience managing patent portfolios and counseling clients on intellectual property issues. He emphasizes strategies aimed at protecting the client’s core business with an eye towards client’s competitors. Michael focuses on understanding the client’s business, the client’s products, and the competition the client faces in the market place to develop patent strategies that are tailored to each individual client.
When asked about his formative technological experiences, Michael mentioned the flexibility he showed in the U.S. Naval Submarine program. Although Michael’s undergraduate degree was in mechanical engineering, Michael was certified as a nuclear engineering by the U.S. Navy and received advanced training in electrical engineering from the U.S. Navy. Basically, he notes, this background helps in learning each clients’ technology, whether it is medical device, telecommunications, software, or electrical hardware technology. He has extensive experience in all of these areas.
Tim Croll is Deputy General Counsel, IP at Cypress Semiconductor Corporation, which delivers high-performance, high-quality solutions at the heart of today's most advanced embedded systems, from automotive, industrial and networking platforms to highly interactive consumer and mobile devices. As such, Mr. Croll is involved with many aspects of Cypress’s Intellectual Property management, including patent and other IP portfolio development and monetization. During the past quarter century Mr. Croll has worked as Director of Intellectual Property at Spansion, and as an IP attorney at LSI Corp., Agilent Technologies , Hewlett-Packard and in private practice. Prior to law school, Mr. Croll worked as an engineer in Silicon Valley.
Chris serves as Senior IP Counsel for Rovi, a position he has filled since June 2014. Prior to this in-house position, Chris worked for Novak Druce Connolly Bove + Quigg where he drafted and prosecuted patent applications in the electrical and computer software fields. Other firms he has worked for include Arent Fox and Morgan, Lewis & Bockius LLP. Chris holds his law degree from University of Michigan Law School and has a B.S.E. in Electrical Engineering from Arizona State University. He is accredited by the CA and NY state bars.