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 defensive strategies: navigating post issuance proceedings, managing risk and avoiding litigation, trade secrets, ethical issues for in-house counsel and much more.
CLE: Approved for 7 hrs. IL State CLE (6 regular + 1 ethics)
KEY TOPICS DISCUSSED
The Evolution of Patent Prosecution and Portfolio Management
IP Litigation in China: How to Defend and Protect Your Patents in Today's China
NPE Defense: What is the new normal?
Operating Company vs Operating Company Litigation: A Proactive Defense
Risk Management & Strategic Defensive Litigation
2017 Defensive Perspectives on Post Issuance Proceedings
Ethical Issues for In-House Counsel
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
As Director of Global Intellectual Property for Modine Manufacturing Company, a leader in thermal management technology, Jeroen is responsible for all aspects of the identification, assessment and protection of Modine’s IP across the globe. This includes the development and execution of intellectual property strategies; management of invention, patent and trademark processes and portfolios; assessment and pursuit of potential infringement activity; and development of licensing arrangements relating to Modine's IP and the IP of others. He is a member of the USPTO Patent Bar, and is a J.D. candidate at Marquette University Law School. With over 20 years of industry experience in advanced product development, product and technology strategy, and intellectual property management, Jeroen brings a unique perspective to the role of in-house IP management.
Vincent is a registered patent attorney and is licensed to practice law in Illinois and Michigan. He is also licensed as a Professional Engineer in the State of Michigan. Prior to entering the legal field Mr. Wiltse worked for General Motors as Senior Project Engineer, where he worked in vehicle aerodynamics development and vehicle systems integration. He received his Juris Doctor from Wayne State University Law School, in Detroit. He obtained his Master of Science and Bachelor of Science in Aerospace Engineering from the University of Michigan.
From 2000 to 2008 he was in private practice, first in Michigan and then in Illinois. Vincent joined Cummins-Allison as in-house counsel in 2008. At Cummins-Allison he manages the intellectual property portfolio. Cummins-Allison has topped Crain’s Chicago Business’ “Eureka Index” for having as the highest patent quality multiple times and is often named by Crain’s Chicago Business as among the top innovative companies in Chicago. Additionally, he support commercial transactions, litigation, real estate, and human resources efforts.
Viren Soni is Patent Counsel at CME Group, Inc. where he works closely with inventors and engineers to identify and protect technology innovations, and focuses on the preparation, filing, prosecution and management of CME Group Inc.’s growing patent portfolio. Prior to joining CME Group Inc., Viren worked at the law firm of K&L Gates LLP in Chicago. Before law school, Viren served as a Patent Examiner, and worked in software, telecommunications and power/utility companies. Viren holds a Bachelor of Science in Electrical Engineering from the University of Illinois in Urbana-Champaign and a law degree from the Chicago Kent College of Law, and is registered to practice before the USPTO and in Illinois.
Mr. Augustyn is currently active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several industries, including medical devices, printing processes, agricultural equipment, manufacturing equipment, automotive equipment, fuel storage containers, and consumer products. He also manages the patent prosecution for several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development agreements.
Mr. Augustyn received a B.S. in Engineering, with honors, from the Illinois Institute of Technology, and a J.D. degree in 1987 from Loyola University Chicago, where he graduated at the top 10% of his class. In law school, he received several awards for scholarship and writing, and was on the National Moot Court Team. He has authored several articles and chapters for books, has appeared on several occasions on television and radio, and has provided seminars for attorneys and clients.
Mr. Augustyn was an instructor at Loyola University Chicago School of Law for over five years. In addition, he was the advisor of the Intellectual Property Moot Court Team at Loyola University Chicago for over fifteen years. Prior to attending law school, he worked as an engineer at a large equipment manufacturer in the areas of Design Engineering, Manufacturing Engineering, and Quality Engineering.
Mr. Augustyn has served several terms as a member of the board of the firm and serves on various committees of the board.
James’ practice includes patent procurement, opinion, analysis & strategy, litigation, technology licensing, primarily focusing on life sciences, material sciences, medical device, and electronics. As a conduit between China and the rest of the world, James represents international clients to obtain and enforce their intellectual property (IP) rights in the fast-evolving and challenging IP environment in China. In particular, James helps international clients to enhance the value of IP assets, lower IP risks, and increase commercialization opportunities through comprehensive due diligence, counseling, procurement, litigation and cross-border licensing and collaboration.
Maitreya began his practice at IP boutique and general practice law firms in Chicago and Los Angeles, where his practice included all aspects of intellectual property litigation and patent preparation and prosecution in myriad technologies. He is in-house patent counsel at Fortune Brands Home & Security and works on product clearance, patent prosecution, dispute resolution, diligence in M&A transactions and a variety of general commercial and technology agreements and licenses. Maitreya received his undergraduate degree in General Engineering with honors from The University of Illinois-Urbana/Champaign and his JD with honors from The George Washington University Law School. Maitreya is a registered patent attorney with the US Patent and Trademark Office and is licensed to practice law in Illinois and California.
Ed Rice is a Partner in the Litigation Practice Group.
He is a trial and appellate lawyer who, since 1988, has focused primarily on patent cases and other technology disputes. After clerking for a federal trial judge, he joined the Department of Justice where in 1996 he won his first patent trial as the sole attorney for the government. Since then, he has first-chaired and won trials in every patent litigation venue in the country: federal district courts, the International Trade Commission, and the Court of Federal Claims. Ed launched his appellate career in 1992, when he won a difficult en banc Federal Circuit argument in a trade secret case.
Over his career, Ed has handled a wide range of patented technologies—from integrated circuits to pharmaceuticals, from internet business methods to anti-missile systems, and just about everything in between. Ed also has successfully represented clients on trademark and copyright matters. For example, he represented several well-known Hollywood figures in a copyright jury trial involving a blockbuster movie.
MATTHEW KELLY serves as Managing Director and Associate General Counsel at CME Group Inc. Mr. Kelly is responsible for developing and managing CME Group's intellectual property programs covering patents, trademark, copyrights, and trade secrets. He also manages strategic licensing, including product license agreements, out licensing of CME Group software and market data, intellectual property acquisitions and partnerships, and manages a variety of intellectual property litigation and enforcement matters. Before joining CME Group in 2001, Mr. Kelly specialized in patent law at Brinks Hofer Gilson & Lione in Chicago and Morgan & Finnegan in Washington, D.C. and managed the design and development of space-based computers at IBM. Mr. Kelly holds a bachelor's degree in electrical engineering from Michigan State University, a Master of Business Administration from Virginia Polytechnic Institute and State University and a J.D. focusing on intellectual property from the George Mason University School of Law. Mr. Kelly is a member of the Illinois Bar and is the licensed to practice before the USPTO.
Perving Taleyarkhan is Associate Legal Counsel for Patents at Whirlpool. Her experuence includes IP strategy as well as litigation. Prior to Whirlpool she served as LEgal Associate at Purdue University. She earned her BSChE in Mechanincal Engineering from Purdue university and her J.D. from Indiana University Robert H. McKinney, School of Law.
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.
James Shimota concentrates his practice on all aspects of post-issuance patent practice. He has extensive experience before judges and juries in federal courts across the country as well as the United States International Trade Commission and arbitration panels. Representative technologies with which Jim has worked include financial services products, multiple aspects of cellular and smartphone technology, semiconductor manufacturing, fiber optic amplifiers, DNA arrays, HIV drugs, alkaline batteries, wireless networking products, power supplies, cleaning systems for portable shavers, memory image sensors, portable music players, and automated tissue staining instruments.
Jim also counsels clients on building patent portfolios inorganically through strategic acquisitions. Jim provides advice to technology companies in industries such as consumer electronics, electronic commerce and pharmaceutical regarding what patent assets do and don’t complement existing organic patent assets and how much those assets are worth. For example, Jim assisted an international client in completing a multi-billion dollar patent portfolio acquisition involving thousands of patents.
Jim further focuses on advising venture capitalists and startups on patent strategy.
Jim was selected for inclusion in Illinois Super Lawyers − Rising Stars Edition, Thomson Reuters, 2013-2014.
James (Jay) R. Nuttall is a first chair patent litigator with broad experience representing clients in courts throughout the country, with a particular emphasis in district court litigation. His substantial trial experience covers a wide variety areas and technologies, including telecommunications, medical devices, electronic systems and methods, software, lighting and chemical processes. His experience includes patent infringement matters brought by non-practicing entities (NPE), and antitrust, RICO, and unfair competition cases, among other matters.
Tom Duston is a hands-on trial lawyer who focuses on patent litigation for some of the world's most sophisticated companies. With nearly thirty years' experience, Mr. Duston has been lead counsel in more than 60 patent infringement matters in U.S. Federal courts. Mr. Duston is praised by clients and adversaries alike for both his creativity and tenacity as a trial attorney. Mr. Duston has represented Amazon.com, Groupon, Abbott Laboratories, CDW, Newegg, T-Mobile, Charter Communications, Express LLC, GE Aviation, TRINOVA (now part of Eaton), Russell Athletic, Raytheon, Home Depot, Classified Ventures, as well as Zappos.com, to name but a few.
Leading Lawyers, a division of the Law Bulletin Publishing Company, has named him a Leading Lawyer in IP Litigation and profiled him in its September 2014 edition of Leading Lawyers Magazine. U.S. News and World Report has repeatedly listed him as among “The Best Lawyers in America” in the practice area of Litigation - Intellectual Property. Thomson Reuters has repeatedly identified him as among the “Top 100” attorneys in Illinois and named him to the Illinois Super Lawyers list. American Lawyer Media (ALM) and Martindale-Hubbell selected him as a "Top Rated Lawyer in Intellectual Property.” The IP Stars Survey (fka the World IP Handbook and Survey) named him an "IP Star.” He has authored a number of articles in the areas of patent and trade secret litigation. He has been awarded a Martindale-Hubbell® AV Peer Review Rating™. Earlier in his career, Mr. Duston was named by the Law Bulletin Publishing Company as one of "Forty Illinois Attorneys Under 40 to Watch,” a list of the State’s most talented and well-regarded lawyers.
Benis a Sales Engineer at Questel for the Midwest and Canada. Ben has been collaborating with numerous Fortune 500 companies in solving their IP related challenge.
Charles (Charlie) McMahon focuses his practice on patent, trademark, copyright and unfair competition law. Charlie has represented domestic and multinational clients in federal courts and before the US Patent and Trademark Office, the US Patent Trial and Appeal Board (PTAB), the International Trade Commission (ITC), the US Court of Appeals for the Federal Circuit and the US Supreme Court.
In the last four years, Charlie has tried four patent infringement cases, including two district court jury trials and two ITC Section 337 investigations. He has also argued before the PTAB in an inter partes review proceeding.
Because litigation is just one of many tools for achieving business objectives, Charlie also counsels clients on licensing and litigation avoidance. Collectively, he has advised clients on worldwide IP licensing and settlement deals valued in excess of sixty million dollars.
Charlie is a registered patent attorney with a bachelor’s degree in electrical engineering and experience helping client apply for and obtain patents in the United States and abroad. Charlie is experienced in a variety of technical areas, including wireless communications, solid-state electronics, encryption systems, vehicular transmission systems, digital imaging systems, electronic measurement devices, lithium batteries, software applications and online business-to-business exchange systems.
Recognizing the importance of local pro bono efforts, Charlie is an active supporter of the Cabrini Green Legal Aid (CGLA) clinic in Chicago. Charlie serves on CGLA’s Advisory Board and contributes his time to serve CGLA clients.
Dan Bikus is Dennemeyer’s Central Region Business Development Manager. Dan has 12+ years’ experience consulting with AmLaw 250 and Fortune 500 legal departments. Dan is a seasoned intellectual property strategist. In his current role, Dan coaches corporate IP legal departments on how to maximize the value of their patent/trademark portfolios, while minimizing any unnecessary spend through Dennemeyer’s suite of services. Dan is a member of the IPO, AIPLA, and INTA. Dan has a Bachelor of Arts Degree in Economics from Illinois State University.
Responsible for all phases of IP. Manage outside counsel and perform domestic and foreign patent prosecution. Extensive legal analysis and opinions regarding infringement, validity, and right-to-use. Analyze landscape and state of-the-art searches. Conduct intellectual property and corporate due diligence, including integration experience. Manage litigation and post-grant review activities. Counsel on trademark and copyright matters. Draft and negotiate contracts and agreements. Review and approve marketing materials. Give presentations and training to R&D and other departments. Communicate and collaborate with senior management regarding IP matters. Extensive work for Emerging Markets business with specific emphasis on China. Took integral part in hiring of both IP and corporate attorneys. Management experience, including managing IP budget.
Hongming Liu is a Patent counsel at Here. http://company.here.com.
He formerly worked at Nokia Technologies, a business group of Nokia Corporation, which also includes HERE and Nokia Networks. At Nokia Technologies, Hongming’s primary function is patent portfolio management and invention harvesting. Prior to joining the team at Nokia Technologies, Hongming worked as a software developer and software architect. Hongming has taught graduate and undergraduate computer science and software engineering courses at DePaul University. Hongming received his juris doctorate and doctorate in Computer Science from DePaul University, and his undergraduate degree from University of Science and Technology of China.
Laura brings high energy, personal commitment, and a wealth of experience to every project she tackles. Whether representing a high tech company in a patent infringement proceeding before the ITC, protecting a client’s trade secrets in an arbitration proceeding, or helping high school students develop the analytical skills and self-confidence to succeed in college, Laura brings passion and drive to her work.
With over 25 years of litigation and counseling experience, Laura takes a hands-on approach to litigation, while staying focused on the client’s ultimate goals and strategies. She is “held in excellent regard by her peers for antitrust, intellectual property and commercial litigation,” and is recognized as one of the top women intellectual property lawyers in Illinois.
Rekha is Executive Director, Chief IP Counsel at Akorn, having responsibility for Hatch-Waxman litigation, patent and trademark prosecution, licensing and due diligence matters. Akorn is a niche pharmaceutical company engaged in the development, manufacture and marketing of multisource and branded pharmaceuticals. Akorn is headquartered in Lake Forest, Illinois and has manufacturing facilities located in Decatur, Illinois; Somerset, New Jersey; Amityville, New York; Hettlingen, Switzerland; and Paonta Sahib, India. Rekha joined Akorn after practicing law in the Chicago law firms, Duane Morris and Bell Boyd & Lloyd, later K&L Gates. She is admitted to practice in Illinois and before the U.S. Patent and Trademark Office. Rekha’s experience prior to patent law includes that of a postdoctoral scientist, and stints as a management consultant in sales and marketing in the pharmaceutical industry. Rekha earned her A.B in Biology and Chemistry from Wesleyan College, a Ph.D. in Neuroscience from Northwestern University, and a J.D. from Chicago Kent College of Law. Rekha is a native of Bangalore, India.
Tim Carroll is viewed by clients and peers as a go-to patent litigator who has successfully litigated the cutting-edge technology issues of the day, including patent cases involving medical devices, green technologies, mobile apps, location-based services, messaging systems, Wi-Fi-enabled thermostats, and content management platforms. Through his representation of leading and emerging technology companies, Tim has secured trial wins, preliminary injunctions, forced his adversaries to stipulate to noninfringement, won summary judgment awards, earned a substantial attorneys’ fee award and prevailed in claim construction arguments. Tim has also led many joint-defense groups involving some of the largest and most sophisticated companies and law firms in the United States.
Tim recently achieved several victories for companies immersed in patent and licensing disputes.
In Smith & Nephew v. Arthrex Inc., Tim was asked to serve as first chair on a case for trial that involved second-generation products. Notwithstanding a prior verdict against Arthrex and a series of adverse rulings from the case involving first generation products, Tim steered Arthrex into a favorable settlement on the eve of trial. Along the way, Tim and his team earned a victory by knocking out plaintiff expert’s liability testing, which left the plaintiff with a lack of liability evidence to present to the jury.
In Advanced Transit Dynamics v. Ridge Corp., Tim was the lead trial lawyer in an injunction hearing held by Judge O’Connell of the U.S. District Court for the Central District of California. Following that hearing, Judge O’Connell entered a preliminary injunction in favor of Tim’s client, Advance Transit, forcing Ridge to cease making, selling or marketing its competing green technology offering.