AIA, Alice, IPR: Defending IP In A Disrupted World
For today’s intellectual property executive, all roads converge toward Defense and Litigation: NPEs, corporate trolls, and the AIA have multiplied the number of IP lawsuits. In this environment, an effective, up-to-date Defense Strategy is a must-have for operating companies.
This conference examines IP Defense from soup to nuts, including best and latest defense strategies, preparing for litigation, protecting trade secrets, defending against NPEs, and navigating post-issuance proceedings.
KEY TOPICS DISCUSSED
The 3 Ps of a Defense Strategy: Prosecution, Portfolio Management & People
IP Litigation in China: How to Defend and Protect Your Patents in Today’s China
The Great Game: Defending Against Rivals & Operating Companies
Defending Against NPEs: Beyond Cost Benefit Analysis
Post Issuance Proceedings for 2017 and beyond: Defensive Perspectives
To Trade Secret or to Patent: What Works for Your IP Strategy
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
Shaun P. Montana is Senior Counsel for Intellectual Property at OSRAM SYLVANIA Inc., part of OSRAM Americas, a group of OSRAM companies located in North and South America. OSRAM Americas is part of OSRAM GmbH, one of the two largest lighting manufacturers in the world.
Shaun’s primary focus has been to help grow and protect OSRAM SYLVANIA’s intellectual property portfolio and its product portfolio as the lighting business continues to transition from conventional to digital technologies. Shaun provides legal advice, with a dollop of humor, to enable business from idea conception through product development to sales and beyond, covering all types of intellectual property-related legal matters, and works particularly with business units in the growth areas of semiconductor-based lighting devices, software-based lighting controls, and lighting electronics.
Prior to working at OSRAM SYLVANIA, Shaun practiced at three well-known IP law firms in the Boston area, ranging from very small to mid-sized to very large.
Shaun holds in BS in Electrical Engineering (magna cum laude) from Union College, and a JD from Boston University, where he served as Executive Editor of the Journal of Science and Technology Law (2001-02). Shaun is a registered U.S. patent attorney and is a named inventor on three U.S. patents.
When not contemplating which is the perfect Monty Python quote to apply to today’s crisis at the office, Shaun enjoys spending time with his wife and two children, learning something new in history, science, and technology, and staying on top of the latest developments in baseball statistical analysis.
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.
James is the Chief Patent Counsel for the Americas Region of Schneider Electric, a French multinational corporation specializing in energy management services and products. James provides patent support for the technology research and product development functions, overseeing all patent prosecution, clearance and portfolio development activities and associated personnel for the Business Units operating in the Americas. Prior to joining Schneider Electric, James worked at several intellectual property boutique law firms in the Boston area where he counseled clients with respect to the development and management of patent portfolios, and represented clients in both patent infringement and trade secret misappropriation litigations.
James graduated from the Johns Hopkins University with a double major in Mathematical Sciences and Psychology, and holds an M.S. in Electrical Engineering from Columbia University, and a J.D. from Boston University School of Law.
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.
Glen Weinstein, iRobot’s EVP & Chief Legal Officer, has been with iRobot since 2000, where he advises the company on all general legal matters, including issues related to intellectual property, product development and distribution and financing. Prior to joining iRobot, Weinstein was with Covington & Burling, a law firm in Washington, D.C., where he advised clients in various matters related to intellectual property, including licensing transactions, litigation and patent prosecution. Prior to joining Covington & Burling, Weinstein was a law clerk to both the Honorable Randall R. Rader, Circuit Judge, U. S. Court of Appeals for the Federal Circuit, and the Honorable Roger B. Andewelt, U. S. Court of Federal Claims. Weinstein holds a law degree from the University of Virginia and a bachelor of science degree in mechanical engineering from MIT.
Ms. Lydon is Intellectual Property Counsel for Medtronic (previously Covidien). Her responsibilities include managing litigation, supervising outside counsel in the preparation and prosecution of patent applications globally, evaluating potential acquisitions, working with product development teams by advising on right-to-use matters, and ensuring that Medtronic has the right to make, use and sell its products worldwide. Ms. Lydon is also an Adjunct Professor of Patent Litigation at UCONN Law. She holds a J.D. from UCONN Law and a dual B.S. in Mechanical Engineering and Aeronautical Engineering from Rensselaer Polytechnic Institute. Ms. Lydon is registered to practice in the state and federal courts in Connecticut and before the United States Patent and Trademark Office.
Michael LoCascio is the Global Senior Manager of Intellectual Property Strategy for BASF’s $8 Billion/year Catalyst Division where he is responsible for implementing and overseeing IP management processes, developing patent strategies, and executing licenses and enforcement actions. Prior to his current position, he led the effort to develop the market entry and M&A strategy enabling BASF to expand into the medical device sector. Prior to joining BASF, Mr. LoCascio was a Senior Analyst at Lux Research, a technology advisory and market research firm focused on emerging technology sectors, where he started and led teams investigating Solar technology, Green Buildings, Water Technology, and the Smart Grid. Mr. LoCascio was also the founder and CTO of a nanotechnology start-up that developed and commercializing applications of quantum dots for life sciences, solid state lighting and displays, and solar energy conversion and was an engineer at Lockheed Martin conducting research related next generation naval nuclear reactors. Mr. LoCascio holds a Bachelors of Engineering in Applied Physics and Master’s Degree in Electrical Engineering from Stevens Institute of Technology.
Troy Lester is Vice President Patents, Assistant Secretary for the Acushnet Company, a golf industry leader, operating under the trademarks of Titleist and FJ. He is directly responsible for setting patent strategy, overseeing patent prosecution, providing Research and Development departments advice, negotiating licenses and managing patent litigation. The Acushnet Company is awarded over 100 patents a year to golf equipment technology. The Research and Development departments continuously require opinions and advice regarding competitors’ patents and development direction. Significant license and litigation matters are handled in-house.
Prior to joining the Acushnet Company, Mr. Lester was an associate with Pennie & Edmonds, LLP. At Pennie, he provided patent prosecution, litigation and opinion services to the Acushnet Company, Cannondale Corporation, Deknatel, Litton, Este Lauder and Pillowtex among others.
Porter Fleming leads the firm’s Litigation Practice Group and has more than twenty five years of intellectual property litigation experience. Not only is he comfortable in the courtroom, before a Judge or jury, he has also developed a unique ability to advise senior management and in-house counsel efficiently and effectively. His varied experiences and significant results for his clients speak for themselves.
Within the Litigation Practice Group, Mr. Fleming leads a team of talented attorneys, with expertise across a spectrum of industries, and has and continues to represent a diverse range of clients, from large corporations to individual inventors and innovators. Through this practice, Mr. Fleming is known to draw upon the diverse resources of the firm, creating for each litigation a “Cabinet” of attorneys, experts and scientific advisors deeply proficient in the various legal and technical aspects of the specific case to effectively and efficiently guide the client through the legal process from the beginning to the resolution. His leadership, knowledge and experience in intellectual property law is valued by many of the nation’s leading pharmaceutical and scientific corporations.
Steven Reynolds has served as General Counsel and head of the Legal Department since the Sensors & Controls business of Texas Instruments was purchased by Bain Capital in April 2006. He was named a vice president in January 2007.
Mr. Reynolds supported the S&C business of Texas Instruments as legal counsel beginning in January 1999 and was with Texas Instruments since 1990 in other legal positions.
Prior to joining Texas Instruments, Mr. Reynolds worked as an attorney in both private and in-house practice.
Mr. Reynolds is a graduate of Georgetown University and the Rutgers University School of Law.
Derek, has advised high-tech companies from startups to Fortune 100 companies to obtain, protect and investigate their patent rights.
He has also prepared patent applications for inventors on technologies in the computer industry including communications, finance, Internet, location systems, memory, mobile network gateways, mobile applications, networking, search, storage and wireless communications.
He has been actively involved in litigation of patent rights in federal courts and in the International Trade Commission (ITC) on computer, communications and smartphone technologies.
In addition, he has performed intellectual property analysis of patent portfolios for Fortune 100 technology companies.
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.
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.
Larry Meier uses IP in creative and strategic ways to help clients achieve their business objectives. With over 25 years of IP legal experience under his belt, Larry relies on a wealth of innovative and practical approaches to solving client’s legal problems. As an engineer and former patent examiner, he combines diverse technical knowledge with a strong skill set across multiple areas: patent and trademark prosecution and maintenance, IP transactions, and IP dispute resolution. Larry develops and leads IP teams for optimal results, blending skill sets to obtain desired results at the lowest cost and on a timely basis. Larry likes solving problems, and does so with energy and enthusiasm.
Greg Smith regularly assists clients by providing rigorous financial and economic analyses relating to licensing programs and the valuation of intellectual property. He conducts these analyses both within and outside the context of litigation. Mr. Smith has performed such studies of technologies from a wide range of industries, including computer equipment and software, telecommunications, healthcare, automotive, and retail and consumer products. He has consulted with several intellectual property owners in the pre-litigation stage to estimate potential recoveries from licensing/enforcement programs. In addition, Mr. Smith has testified regarding intellectual property damages, including appropriate royalty rates for the licensing of such assets in federal and state court proceedings.
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.
Denise is dedicated IP Counsel for Velcro Companies, where she has worked for 2 years to develop and implement Velcro IP interests and strategies. She partners with Velcro’s Innovation and Technology Center and the Global Business Units to oversee IP legal matters including patent application preparation and prosecution, litigation, freedom-to-operate opinions, licensing, and trademark, copyright and trade secret matters for the global enterprise. Prior to her position at Velcro, Denise worked for Preti Flaherty, Medtronic Advanced Energy, Blank Rome LLP, and Sherin and Lodgen LLP. Denise earned her JD from Boston University School of Law and is a US Registered Patent Attorney. She is also the holder of two patents, one for electrosurgical cutting devices and mold-in touch fastener systems with wave-shaped wall.
Ruth Ma Swilling is senior counsel of intellectual property & licensing for Raytheon Company, a Fortune 500 company with sales of $23 billion and 61,000 employees worldwide. Raytheon is dedicated to providing solutions in the areas of defense, civil government and cybersecurity. Ms. Swilling also currently serves as the acting intellectual property director for Forcepoint LLC, a commercial cybersecurity joint venture with Raytheon. Prior to joining Raytheon, Ms. Swilling served as vice president and assistant general counsel of intellectual property at Cantor Fitzgerald, a premier capital market investment banking firm, specializing in global financial services, commercial real estate financing, gaming technology and e-commerce. Previously, she worked in private practice at Fish & Richardson and Foley Hoag.
Ms. Swilling graduated with honors from Rice University with a degree in electrical engineering and from the University of Virginia School of Law.