The IP Landscape Has Changed: But Has Your Strategy?
The IP environment has been turned upside-down over the last 24 months:
ALICE vs 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
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: Approved for 4.3 hrs. + 1 hr. Ethics GA state CLE
KEY TOPICS DISCUSSED
Running an IP Strategy: Portfolio Management, Patent Prosecution & Business Alignment
Trade Secrets & Your IP Strategy
Balanced Enforcement Strategies for Operating Companies
Post Issuance Proceedings for 2017 & Beyond: Plaintiff & Defensive Perspectives
Developing a Strategic IP Licensing Program
A Proactive Defensive Strategy
Ethics in Intellectual Property
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
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.
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.
Laura serves as the Director of Patent and License and Chief IP Counsel for the Office. She oversees Emory’s in-house patent group and provides contracting advice to the licensing team. Before joining Emory, Laura spent twelve years representing branded and generic pharmaceutical companies in Abbreviated New Drug Application (“ANDA”) litigation arising under the Hatch-Waxman Act. She has been recognized by Chambers USA, by Managing IP in the “Top 250 Women in IP” and as an “IP Star,” and by LMG Life Sciences as a “Life Sciences Star.”
She has earned; A Juris Doctorate, Law from Emory University. A Masters of Public Health/Masters of Business Administration, from the University of Alabama at Birmingham and a Bachelors of Art, Chemistry from UNC.
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.
Morgan Malino is a Partial General Counsel to two companies: Trend Discovery Capital Management, a hedge fund that has generated a 18% compounded average rate of return since its inception in 2011 and Transitiv, a 2016 startup that developed a buy-side programmatic advertising platform. Mr. Malino was General Counsel to two previous companies, PureCars, which sold to Raycom Media for $125M and Unity Semiconductor,which sold to Rambus for $35M. As a General Counsel who is also a registered patent attorney, he has a unique perspective on intellectual property strategy and portfolio development.
Based in Charlotte, Jeff is Vice President and Senior Counsel at Wells Fargo where he is helping to develop and guide the company's IP strategy and chairs the Intellectual Property Practice Group. His prior responsibilities included serving as lead counsel on worldwide privacy and information security matters.
With a background in engineering, Jeff was an IBM marketing representative in Manhattan before law school. Following his early years as a litigator, Jeff moved into technology deal making and IP-based transactions. During his career, Jeff has advised a wide range of clients -- from tech startups to industry-leading multinationals -- on intellectual property (IP) strategy, technology development and licensing, and purchase and sale of key IP assets -- as both in-house and outside counsel.
I am an attorney registered with the United States Patent Bar and the State of Georgia. I graduated with a BA from Indiana State University in 1999, and from Franklin Pierce Law Center (now, University of New Hampshire) in 2002 with a JD and a Master of Intellectual Property. I’ve been working in Atlanta since that time practicing in patent and trademark prosecution, IP litigation, and negotiating IP license agreements. I’ve been in house with Andritz Inc. in Alpharetta (a subsidiary of Andritz AG, headquartered in Graz, Austria) since 2011, where I am Group IP Counsel for the Andritz Group. Andritz is a globally leading supplier of equipment and services for the hydropower, pulp and paper, metals, separation, and other specialized industries.
Nikhil is Senior Patent Counsel for Solvay. He is responsible for providing global IP-related guidance to Solvay’s Specialty Polymers business, including protection of technological assets, product commercialization, technological investments, R&D projects and patent strategy. He is also responsible for advising the business on IP valuation and enforcement of IP rights, as well as providing IP training to R&D and management personnel. Nikhil also provides global IP services to the Specialty Polymers business relating to opinion drafting, patent drafting and prosecution, patent portfolio management and agreement and licensing support. Nikhil holds a J.D. from Emory University School of Law and a Ph.D. in Chemical Physics from The Pennsylvania State University. He is licensed in Georgia and registered to practice before the USPTO.
John P. Fry is a Partner in the Technology and Intellectual Property Litigation Practice. He is a former member of the Management Committee, the former Chair of the Litigation Department and the Technology and Intellectual Property Litigation Practice Group Leader. He is currently chair of MMM's UAS/UAV/Drone Practice Group.
Mr. Fry practices primarily in the areas of patent, trademark and copyright infringement, unfair competition and trade secret litigation with a secondary emphasis on the strategic acquisition and management of intellectual property, particularly in the international context. He counsels clients on antitrust issues, including in the area of the antitrust implications of intellectual property enforcement and licensing. He prepares complex patent, trademark and copyright license agreements, technology and software development agreements and concept evaluation agreements. He also counsels clients on laws and regulations applicable to UAS/UAV/Drone operations as well as on IP strategies relating to enabling UAS/UAV/Drone technologies. Mr. Fry’s practice covers a wide variety of industries, including information technology, electronics, electrical distribution, telecommunications, manufacturing and chemical.
Mr. Fry served on the Board of Directors of Big Brothers Big Sisters of Metro Atlanta from 2003 to 2009. In 2010, Mr. Fry retired as a Captain from the U.S. Navy after 30 years of combined Active and Reserve Service.
Having worked both in-house at a cutting edge photonics company, and in private practice, Howard Gitten brings a unique perspective to technology law. He brings a business perspective to technology issues and his technology background to business issues. As a registered patent lawyer, Howard, along with his colleagues in the intellectual property practice, not only know how best to protect a client's unique assets, but how best to make them marketable and best use intellectual property for competitive advantage. Howard has advised his clients in instituting cradle-to-grave IP regimes, to licensing IP and building joint development programs around a client's IP.
Steve is Associate General Counsel, IP for Covidien (now Medtronic) in the Surgical Solutions Group. His practice focuses on all aspects of patent law, including prosecution, litigation, licensing and IP due diligence for mergers and acquisitions, and has, in the past, included managing products liability matters as well as general corporate work. Steve is responsible for IP legal work relating to energy-based surgical devices including electrosurgical instruments and accessories as well as the generators that power them; ultrasonic surgical instruments for sealing and dissecting tissue, and radio-frequency tissue ablation instruments and generators.
Steve has worked at Covidien for the past seven years, and prior to that was an associate at Greenberg Traurig in their Denver, Colorado office and an associate at Sidley Austin in Dallas, Texas.
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.
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.
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.
Current Account Executive for Questel, a leading provider of online tools and services helping businesses, academic institutions, technology transfer offices, and law firms with their patent research and IP strategy needs. Results driven individual with a track record of growing my client network, increasing portfolio revenue, maintaining strong relationships with clients, and providing unmatched customer service.
Kris Doyle serves as the co-team leader of the firm's Mechanical & Medical Device Patent Team. She also serves on the firm's Post-Grant Proceedings Team and has managed a number of inter partes review proceedings.
For close to twenty years, Ms. Doyle has been responsible for counseling her clients in all aspects of patent law, including patent procurement, patent litigation, licensing, diligence related to IP transactions, and patent monetization.
Ms. Doyle oversees the strategic development of meaningful patent portfolios for clients in a variety of technical industries, including the lighting, medical device, animal processing, floorcovering, heat transfer tubing, industrial process and textile industries. She has developed both industry- and technology-specific experience that enable her to counsel her clients in how to maximize their efforts to develop and strategically leverage their intellectual property.
Ms. Doyle is a trusted advisor to clients who want to ensure that their activities do not infringe upon the patent rights of others, all the while driving litigation against competitors who infringe on her clients' patent rights. She helps clients navigate the relevant technology landscape so as to avoid infringement while developing commercially viable products suitable for patent protection themselves. Ms. Doyle enjoys engaging in the high level patent strategy involved in litigating patent cases. While she has experience with all aspects of patent litigation, she particularly enjoys working with experts, claim construction and summary judgment briefing, and appellate practice.
Chris Arena has nearly 25 years of experience in intellectual property law, with his focus including both the business aspects of intellectual property, as well as the acquisition of intellectual property rights through the preparation and prosecution of patent and trademark applications worldwide. Having previously served as the former Chief Intellectual Property Counsel for Cingular Wireless and earlier as Chief Patent Counsel for BellSouth Corporation, Chris has a strong command over all areas of IP practice. In addition to IP strategy development and his patent practice, he has particular skill in transactional matters, especially asset acquisition and management, licensing, indemnification enforcement, and litigation management. At BakerHostetler, Chris applies these skills to help clients achieve greater value for their businesses through strategic use of intellectual property.
Chris is the co-author of one of the definitive books on IP strategy, The Business of Intellectual Property, published by Oxford University Press.
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.
Patricia (Patty) L. Ades is Sr. Intellectual Property Counsel at J.M. Huber Corporation (a family of engineered materials companies). Patty supports all types of IP needs for each of the companies under the Huber umbrella including managing patent and trademark portfolios, managing adversarial matters, participating in acquisitions and divestitures, preparing agreements, and providing counseling and advertising review. Prior to joining J.M. Huber Corporation Patty was in private practice. Patty received her J.D. from the University of Iowa Law School and her undergraduate in Chemical Engineering from Iowa State University.
Jessica Nguyen leads (and built from the ground up) the legal department at PayScale, a rapidly growing tech company based in Seattle focused on cloud-based compensation management solutions. Currently, PayScale is #6 on the GeekWire tech start-up rankings. Prior to PayScale, Jessica supported the Outlook and Exchange teams at Microsoft and helped other tech start-ups (Avalara and hibu) scale and grow their businesses.