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! 5hrs. CA state + 1 hr. Ethics
KEY TOPICS DISCUSSED
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
Data as Intellectual Property & Data Licensing
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
Dr. DeZazzo is Corporate IP Counsel for Dart Neuroscience, reflecting his extensive experience in scientific research and intellectual property law. He earned a B.A., magna cum laude in Biology from Colby College and a Ph.D. in Cellular and Molecular Biology from the University of Michigan, where his research focused on RNA processing and virology. He then pursued postdoctoral training in Neuroscience at Cold Spring Harbor Laboratory, where he applied an interdisciplinary approach of genetics, molecular biology, physiology and behavior to the study of learning and memory. He was recruited as a Senior Staff Scientist at GeneWorks, a biotechnology company based in Ann Arbor, where he helped develop transgenic technology, viral vectors, protein expression systems and bioassays. While at Michigan, he pursued his interest in intellectual property by obtaining a law degree from Wayne State University. He accumulated more than seven years legal experience: first at a specialty IP firm in New York City, where his practice focused on patent procurement, counseling, and litigation in the biotechnical and pharmaceutical arts; and subsequently at two major international law firms, where his work focused on multi-district Hatch Waxman litigation, domestic and international portfolio development, due diligence studies, client counseling, regulatory affairs, transactional work and appellate proceedings in the U.S. and European patent offices. Dr. DeZazzo has received numerous awards and honors during his academic, scientific and legal careers. He is admitted to practice in New York and is a registered patent attorney at the United States Patent and Trademark Office.
Mr. Mueller is a member of the Board of Directors of the Public Service Pension Investment Board, Canadian Tire Bank, Annidis Corporation (Chairman), Pediapham Inc., Smarter Alloys and Philip Aziz / Emily s House. He also serves as strategic advisor to a number of Canadian and International companies. From 2003 to 2005, he was President and Chief Executive Officer of MDS Capital Corporation. Prior to that, Mr. Mueller held a series of senior position at TD Bank Financial Group, including Senior Vice President and Country Head of its USA Division, Executive Vice President of Global Credit and Vice Chairman and head of Global Investment Banking. Mr. Mueller is a former director of The Scarborough Hospital (and Chair of its Board), The Scarborough Hospital Foundation, AIM Therapeutics Inc., Tm BioScience Inc., MDS Capital Corporation, the Canadian Medical Discoveries Fund I and II, the British Columbia Medical Innovations Fund, Medical Discoveries Management Corporation, Health Ventures Inc., and the Canadian Venture Capital Association. Mr. Mueller holds a Bachelor of Science from the University of Western Ontario, and a Master of Business Administration from York University.
Taylor Bloom is the Senior Intellectual Property Counsel for Verve. Taylor is experienced in trademark, patent, copyright and trade secret counseling and litigation. Ms. Bloom is responsible for all legal and administrative matters related to Verve's IP portfolio.
At Verve, Taylor has helped secured new patents protecting core company inventions. Ms. Bloom assesses patentability and freedom to operate in a range of cross discipline technologies to grow and diversify Verve’s IP portfolio while simultaneously evaluating competitor presence and legal enforceability. Taylor is also the 2016-2017 Chair of the Intellectual Property Section of the San Diego County Bar Association. In addition, Taylor serves as a Trustee on La Jolla Town Council.
Taylor received her J.D. with an Intellectual Property Concentration from the University of Pacific, McGeorge School of Law in 2013. In law school, she served as the President of the McGeorge Intellectual Property Student Association, President of the Jewish Law Student Association, and was employed as a law clerk at Bell, McAndrews, and Hiltachk, LLP. In addition, she moderated intellectual property law conferences and symposiums with a focus in sports law. Prior to law school, Taylor received a B.A. in Political Science from the University of California Santa Barbara, a Technology Management Certification through the College of Engineering, and a Minor in History.
Mr. Cullman a partner in the Orange County office of K&L Gates LLP specializing in intellectual property (IP) law where he manages the transactional IP group. His practice has a strong life sciences focus and concentrates on transactional IP for pharmaceutical and medical device companies including patent procurement, technology transfer and Bayh-Dole issues, merger and acquisition-related due diligence, freedom to operate analyses, non-infringement and invalidity opinions, Hatch-Waxman-related client counseling and litigation support. Mr. Cullman regularly represents pharmaceutical and medical device companies including Allergan, Baxter Biosciences, Beckman Coulter, Medtronic and Spectrum Pharmaceuticals in matters related to product life cycle management, patent litigation strategy and merger and acquisition IP due diligence. Prior to attending law school Mr. Cullman was a licensed Clinical Microbiologist and co-founded and directed an infectious disease laboratory and diagnostic device manufacturing company in Southern California. He has extensive technical experience in the design and manufacturing of in vitro diagnostic devices for infectious diseases, immunology and biochemistry.
Bridget A. Smith is a partner in our Irvine office. Ms. Smith focuses on patent protection and dispute resolution in the U.S. Patent and Trademark Office. She represents clients in a wide variety of technology areas, including semiconductor, computer, business method, chemical, medical device, and healthcare. Ms. Smith is active in the firm’s USPTO Trials and Post-Grant Proceedings practice group, having been involved in more than 20 patent reexamination, inter partes review, and covered business method review proceedings. She also has represented clients in a number of patent infringement cases in federal district court and in appellate briefing before the United States Court of Appeals for the Federal Circuit.
Ms. Smith also advises clients in the area of copyrights, counseling regarding registration, assignment, licensing, and enforcement issues, fair use, responding to Digital Millennium Copyright Act (DMCA) take-down requests, and compliance with the DMCA’s safe harbor provisions.
Prior to joining the firm, Ms. Smith was a scientific consultant at Khimetrics, Inc., a revenue management software company, where she developed software for automating and visualizing price-optimization models for food, fashion, and hardlines retail businesses. Ms. Smith previously worked as a photolithography process engineer and as a software engineer at Motorola Semiconductor Products Sector, gaining a broad experience in semiconductor manufacturing and process optimization. Her undergraduate and graduate research focused on the chemical vapor deposition and electrochemical characterization of doped diamond thin films.
Mr. Randy Berholtz is our Executive Vice President, General Counsel and Secretary. He is the former Executive Vice President, General Counsel and Secretary of Apricus Biosciences, Inc. (NASDAQ: APRI), a specialty pharmaceutical company. Prior to that time, he was the Vice President, General Counsel and Secretary of ACON Laboratories, Inc., a group of Chinese and US life sciences companies. He has also been the Chief Operating Officer and General Counsel of IngleWood Ventures, L.P., a life sciences venture capital company and the Interim General Counsel and Secretary of Nanogen, Inc. (NASDAQ: NGEN), a genomics tools company. He has also been an attorney with the law firms of Heller Ehrman, LLP, Cooley Godward, LLP, Kirkpatrick & Lockhart, LLP (now K&L Gates) and Cravath, Swaine & Moore. He has a Bachelor of Arts degree from Cornell University, a Master of Arts degree from Oxford University, where he was a Rhodes Scholar, and a Juris Doctor degree from Yale Law School where he was a Senior Editor of The Yale Law Journal.
Dr. Greenspan is the Senior Director of Intellectual Property at Prometheus Laboratories, a Nestlé Health Science Company, located in San Diego, CA. The company develops diagnostic tests in the area of gastrointestinal diseases. Bernie is responsible for IP portfolio strategy and management, due diligence on new ventures, working with scientific staff to capture new innovations, working with marketing to identify and register trademarks, and for training employees on the importance of IP protection to the success of the company.
Prior to joining Prometheus, Bernie held positions as Director of IP Strategy Management for Pfizer La Jolla Laboratories, Senior Director of Intellectual Property at Verus Pharmaceuticals, and as an independent consultant to life science and medical device companies.
Bernie's research and development career has included positions as Director of Aerosol Technology at Dura Pharmaceuticals and Elan Pharmaceuticals and Staff Scientist at Battelle Pacific Northwest National Laboratory.
Bernie holds a BA in physics with honors from Clark University, and an MS and Ph.D. in biophysics from the University of Rochester School of Medicine and Dentistry. He is registered to practice at the USPTO as a patent agent.
Bill Hayden is a Senior Attorney for Microsoft Corporation. He has 15+ years of experience successfully launching enterprise and consumer technology products, closing complex multi-national transactions, and advising on new media services and technology related matters. Bill is counsel for the Office 365/Enterprise Public Sector/Government Cloud offerings and provides global legal support for the privacy, security, and marketing of innovative technology solutions. At Microsoft, he serves as Board Co-Chair for the Center for Safe Internet Pharmacies, a cross-industry nonprofit.
Mark P. Wine, a partner in Orrick’s Orange County office, is a member of the Intellectual Property Group. Mark is a trial lawyer with extensive experience in all aspects of intellectual property litigation on behalf of clients in a broad spectrum of technology, business and industry. Mark is also an experienced mediator of intellectual property disputes. He has been in private practice for 40 years and has represented clients in contested intellectual property matters in more than 20 states.
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.
Diane Gabl Kratz is Senior Intellectual Property Counsel at Seagate Technology's headquarters in Cupertino, California. She manages Seagate’s global trademark portfolio, leading trademark strategy and handling enforcement of trademark, copyright, and domain name rights. She also manages the patent portfolio for the Consumer group, advising on strategy, prosecution, litigation, and transactions. Previously, Diane was in private practice at the Silicon Valley offices of international law firms Morrison & Foerster and Sidley Austin. There, she focused on IP litigation in industries such as semiconductors, software, telecom, consumer electronics, and medical devices.
A four-time Super Lawyers Rising Star, Diane regularly speaks at conferences and has been featured as a guest lecturer at Stanford University’s Management Science & Engineering Department and the University of California-Berkeley’s Haas School of Business. Diane received her J.D. from the University of Chicago Law School and a bachelor’s degree in Physics from Cornell University. She is a member of the California Bar and is registered to practice with the U.S. Patent & Trademark Office.
Jim Scheller is a member of the Patent Practice Group. He concentrates his practice on patents, copyrights and other intellectual property in connection with electronic, computer, and Internet related technologies as well as medical device technologies. Jim’s work includes patent prosecution, IP counseling, opinion preparation, due diligence, review and evaluation of patent portfolios, IP licenses and litigation support.
Jim was, during the early part of his career, directly and actively involved in all aspects of patent litigation, including appeals to the Court of Appeals for the Federal Circuit, and hence Jim is familiar with how patents are treated in litigation and how they should be written in view of litigation. He also has experience with IPOs for his smaller clients and has considerable experience in the software copyright field, having been involved in several well know software copyright cases.
Sanjesh Sharma is IP Counsel at Abbott Vision, where she manages the company’s US and international patent portfolios for the Refractive and Laser Cataract Surgery products. Ms. Sharma handles patent protection, freedom to operate clearances, licensing, and litigation matters, as well as counsels the business on other aspects of intellectual property (trademarks, trade secrets, copyrights, IP diligence for asset and technology acquisition) that pertain to the Refractive and Laser Cataract Surgery product lines. Prior to joining Abbott, Sanjesh practiced law at various national and global law firms, where she focused on patent and trademark litigation, licensing, and counseling. She obtained her J.D. from Loyola Law School, and her Bachelor of Science degree in Microbiology from University of California, San Diego.
Amy Simpson, Co-chair of the IP Valuation practice with Perkins Coie specializes in intellectual property matters including patent litigation, patent portfolio analysis and valuation, and AIA post grant procedures. She has extensive patent litigation experience involving a broad range of complex computer and electrical related technologies including computer networks, software, telecommunications and e-commerce. She has represented numerous Fortune 500 companies, international companies and emerging companies in a variety of federal jurisdictions. Amy is also lead counsel on 10 Inter Partes Review proceedings currently pending before the United States Patent Trial and Appeal Board (PTAB). Amy has authored numerous articles regarding recent trends in patent law and litigation, co-chaired patent monetization conferences and has been an invited guest speaker regarding portfolio analysis and valuation.
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.
Emma Roubtsov joined Innography in 2010 as a Client Success Manager, focusing on training and implementation of the proprietary software suite. She has conducted innumerable training and collaborative project work sessions with some of the world’s global brands across the US, UK, Europe and India. As a Sales Engineer, Emma continues to work with Innography power users, providing technical solutions via web-‐based product demonstrations. Prior to joining Innography, Emma spent several years as a management consultant working with Fortune 1000 companies assisting and developing their employees. Prior to this she was a National Sales Manager for one of the Inc 500’s fastest growing companies based in Austin, Texas. British by birth, a polyglot by nature. Emma obtained her BA Hons I from the University of Wales in Russian and German and a Linguistics Masters Diploma for the Moscow Institute of Physics and Technology.
For more than 15 years, Mark Izraelewicz has delivered winning results to clients such as Amgen, Eli Lilly, and Illumina. Mr. Izraelewicz leads the firm’s Hatch-Waxman pharmaceutical litigation practice. He has tried cases as a first-chair trial counsel, and argued appeals to the Federal Circuit. Mr. Izraelewicz’s success comes from his scientific background in synthetic organic chemistry, and experience prosecuting patent applications. Mr. Izraelewicz has represented Spectrum Pharmaceuticals in a series of litigations and at trial, including serving as Spectrum’s first-chair trial counsel in a January 2015 bench trial, and in the subsequent appeal, in a case concerning Spectrum’s oncology drug Fusilev®.
Mr. Izraelewicz’s ability to analyze and master issues efficiently flows from his training as a scientist, with a master’s in chemistry, cutting edge research at The Scripps Research Institute, and applied work at Abbott Laboratories. Mr. Izraelewicz has been selected as one of the "World’s Leading Patent Practitioners" in 2015 and 2016 by Intellectual Asset Management (IAM) magazine. In 2013, he was selected for inclusion in the Illinois Rising Stars® list, featuring outstanding young attorneys in the state.
Michelle Armond is a successful litigator representing clients in a wide variety of intellectual property disputes. She is a specialist in inter partes review (IPR) and covered business method review (CBM) litigation before the Patent Trial and Appeal Board. Michelle is a Caltech-trained electrical engineer and registered patent attorney. Michelle’s litigation successes have been featured in the New York Times, the Wall Street Journal, the Economist, Intellectual Property Today, the Daily Journal, and Law360. Michelle has handled cases involving a wide array of technologies and products, including consumer electronics, integrated circuits, medical devices, telecommunications, power electronics, computer software, artistic works, home décor, and toys.
Michelle is consistently recognized by Los Angeles Magazine as a Rising Star in Intellectual Property Litigation since 2009 and as one of Southern California’s Top Women Attorneys since 2012. Prior to entering private practice, she served as a law clerk to the Honorable Richard Linn of the U.S. Court of Appeals for the Federal Circuit in Washington, DC. Michelle has taught courses in covering IPRs, CBMs, and advanced Federal Circuit appellate patent law for the nationally recognized Patent Resources Group.
Michelle received her law degree from the University of California, Berkeley School of Law (Boalt Hall), and a bachelor of science in electrical engineering from the California Institute of Technology.
William (Will) Díaz litigates and counsels clients on antitrust cases, obtains Federal Trade Commission (FTC) and Department of Justice clearance on mergers, and defends clients in government investigations. Will has significant experience in the interplay between the antitrust and intellectual property laws and the issues that crossover into both areas, including standard-setting activities, patent pools, fair, reasonable and non-discriminatory (FRAND) licensing issues and patent misuse. He also has handled numerous litigations and transactions in the biotech, pharmaceutical and medtech industries.
Tom King’s practice focuses on Inter Partes Review (“IPR”) proceedings and district court patent litigation matters throughout the country. Clients rely on Tom to integrate the technical and legal aspects of a dispute into a seamless and persuasive strategy, and then to execute on that strategy via both written and oral advocacy.
Overview of Experience
Lead or backup counsel in 35 IPRs. Experience representing both petitioners and patent owners at all phases of IPR, including expert depositions and oral arguments.
10 years’ patent litigation experience covering a wide variety of technical subject areas including database/spreadsheet systems, telecommunications protocols and systems, voice recognition, network security, VPN, LCD screens, image sensors, hard disk drives, pharmaceuticals, power plant equipment, robotics, supercapacitors, sonar and night vision
Four patent infringement trials (one in the Eastern District of Texas, three in the District of Delaware)
Successfully represented semiconductor designer in a two week commercial arbitration concerning RF networking technology.
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.
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.
Using his PhD in Biophysical Chemistry, along with 15 + years of in house counsel experience, Richard Hake creates value for companies that run intellectual property-based businesses. He specializes in start up companies, such as Metagenetics Inc. where he serves as Chief Patent Counsel, and also helps "companies in transition" to reduce general and administrative costs, implement systems as management tools, and assist management in due diligence for M&A and licensing transactions. Richard also serves on the board of Legacy Redevelopment and GHM LLC, along with providing pro bono work for non-profit start-up companies. He earned his JD from Northern Kentucky University—Salmon P. Chase College of Law.
Lead SCE’s Advanced Technology Division (AT) efforts with legal, regulatory, supply management and project teams for the purposes of partnering with industry groups, academia, corporations and others to conduct research and demonstration activities. Current projects are focused in the areas of Grid Modernization, Energy Storage, Plug In Vehicles, Renewable Sources of Energy and Cyber Security. Structure and negotiate complex legal transactions while minimizing risks associated with these development opportunities.
Responsible for developing Intellectual Property (IP) plans for projects when partnering with vendors, universities or other industry partners as required, while establishing controls and monitoring plans related to intellectual asset management to protect the company’s interest.