AIA, Alice, IPR: Defending IP In A Disrupted World
Four 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 defense strategies: navigating post issuance proceedings, changes in trade secrets, fighting NPE cost/benefit analysis and much more.
CLE: APPROVED FOR 4.25 HOURS OF TEXAS CLE CREDITS
KEY TOPICS DISCUSSED
The 3 P's of a Defense Strategy: Prosecution, Portfolio Management & People
To Trade Secret or to Patent: What Works for Your IP Strategy
The Great Game: Defending Against Rivals & Operating Companies
Defending Against NPEs: Beyond Cost Benefit Analysis
Post Issuance Proceedings for 2017 and beyond: Defensive Prespectives
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
Walter C. Grollitsch has over 12 years of legal experience in advising international clients on legal matters, intellectual property strategies, patent law and patent portfolio management. For the last several years, Walter has worked as in-house counsel at Intervale Capital which owns over 10 portfolio companies in the oil and gas industry. He has advised the management at the portfolio companies on various legal matters and on strategic ways to create, defend and assert their intellectual property rights. Walter has been involved in several intellectual property disputes in the federal courts and in the United States Patent Office. He has negotiated numerous settlement agreements and cross-licensing agreements. Walter has an engineering degree from The Penn State University and a law degree from South Texas College of Law.
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.
Holly Chastain Nini is Senior Corporate Counsel at the corporate headquarters for CITGO Petroleum Corporation in Houston, Texas where she manages the legal affairs for several of CITGO Petroleum Corporation’s multi-billion dollar businesses, including Terminals and Pipelines; Product Supply, Distribution and Trading; CITGO’s international non-profit foundation; and previously CITGO’s refining operations in Corpus Christi, Texas. In addition, she was appointed by CITGO’s CEO to serve as legal advisor to Executive Committees which approve major strategic deals and technology for CITGO’s operations. Prior to joining CITGO, she was regional Legal Counsel with Schlumberger where she managed the legal affairs for Schlumberger’s exploration and production oil and gas, IT and meter manufacturing businesses both onshore and offshore. Her experience includes a broad range of strategic and high level domestic and international transactions involving IP and technology matters, mergers and acquisitions, joint ventures, complex litigation, corporate governance, compliance, risk management, regulatory matters and other legal areas in the U.S., Canada, the United Kingdom and Ireland.
Areas of Practice: Patent, Trademark, and Copyright; Intellectual Property Litigation; International Patent Prosecution; IP Licensing and Contracts; Patentability, Infringement, Validity, and Freedom to Practice Opinions
1997: Registered to Practice Before the U.S. Patent and Trademark Office
1999: U.S. District Court, Northern District of Texas
2010: U.S. Court of Appeals, 5th Circuit
2011: U.S. Court of Appeals, Federal Circuit
Duke University, BSE, Mechanical Engineering and Materials Science, cum laude, 1992
The University of Texas School of Law, J.D., 1995
American Intellectual Property Law Association
Dallas Bar Association
Dallas Fort-Worth Intellectual Property Law Association
Texas Bar Association
Ken has presently been with Medtronic for 16 years. Currently serves as Principal Counsel for Medtronic’s Renal Care Solutions business.
Ken has previously held scientific positions with Hoffmann-La Roche and Merck & Co., and legal positions prior to joining Medtronic with Marion Merrill Dow and Eli Lilly.
Ken has a Ph.D. in Biochemistry from Purdue and a J.D. from Chase College of Law.
Richard L. Brophy has a proven track record of trying and winning complex intellectual property cases across the United States. He has earned a particular reputation for winning cases by dismantling opposing expert witnesses in deposition and on the stand. His practice encompasses many areas of complex civil litigation, but he focuses primarily on disputes involving patents, antitrust, copyrights, and trademarks.
Drawing on his expansive background as an aerospace engineer and computer scientist, Richard stands out by distilling complex technical and legal issues in ways that judges and juries can easily understand. Clients routinely praise Richard for his ability to quickly become knowledgeable in the technologies at issue in his cases, and retain him to manage their most complex technical litigation.
In addition to providing strategic defense to clients who become litigation targets, Richard has demonstrated a talent for accomplishing the challenging task of enforcing patents. His two most recent trials resulted in multi-million dollar jury verdicts against his clients’ competitors. One case involved explosives detection equipment used by the TSA and the other involved software used by healthcare companies to evaluate physician performance.
Richard has experience as a practicing engineer in both aerospace engineering and embedded software engineering, and he is also an FAA licensed pilot.
Mark Nelson is a partner in Dentons' Litigation and Dispute Resolution practice. He has nearly 20 years of
experience litigating large, multifaceted patent infringement cases in federal district courts and before the
International Trade Commission.
Mark's experience in patent litigation spans a number of diverse technologies, including biotechnology;
semiconductor products and the processes used to make such products; telecommunications and networking;
satellite communications; gaming technology; financial services technology (e.g. payment systems, mobile
payment systems, check processing, ATM functionality, and software, hardware and infrastructure supporting
same); machine learning; personalized communications systems; Internet-related personalization; navigation
technology; cryptography; electronic circuitry; Internet business methods and search engines; computer software;
explosives used in automobile airbags and other automotive technology; soft drink bottling technology; electric
motor technology; stereo speakers; cosmetics; chemical compositions used in cosmetics, asexually reproduced
plants, and asynchronous assembly techniques.
In addition, he has experience drafting and negotiating IP license agreements, counseling clients on setting up and
maintaining IP licensing and/or IP capture programs, performing corporate IP due diligence, and opinion work. He
also has handled copyright, trademark and trade secret matters, and other technology-related litigation matters.
In his current role on assignment to GE Capital as acting IP Counsel, Mark is supporting several critical initiatives involving IP, including meeting Fed regulatory obligations, identifying trade secrets and implementing protections, and the GE Capital reorganization.
Mark graduated from Ohio Northern University in 1991 with a BS degree in Electrical Engineering, an English Literature minor and concentration in Business Adminstration. He received his Juris Doctor from the State University of New York (SUNY) at Buffalo School of Law in 1994. Mark then joined the boutique IP law firm of Notaro & Michalos PC as an associate patent attorney working on patent, trademark, copyright, trade secret, litigation and licensing issues for clients including Adidas, A.T. Cross and Limited Brands.
In 2004, Mark left the law firm and joined GE Corporate’s patent group as Patent Counsel providing international patent support for Healthcare, Industrial and Oil & Gas technologies. In 2005, Mark was selected to be acting IP counsel for the Universal Parks & Resorts component of NBCU. From 2006-2012, Mark was acting IP counsel for GE Intelligent Platforms and GE Sensing & Inspection (now part of Oil & Gas), working with the businesses to institute IP processes to identify and protect valuable IP, and to provide a full range of IP counseling and support. Since 2012, Mark has focused on IP portfolio development around hardware and software technologies for Intelligent Platforms, Healthcare, Aviation, Power & Water, and Oil & Gas. During that time, Mark has also devoted a significant amount of effort to working on Information Protection issues and leading cross-functional teams in IP training across GE.
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.
Irene Kosturakis is Area Vice President, Intellectual Property at BMC Software, Inc., where she is responsible for all IP matters, including acquisition, development, and maintenance of patents and trademarks, patent litigation, copyrights, intellectual property licensing, use of open source code, and IP due diligence for the Company's mergers & acquisitions efforts. She also supports the tax group on inter-company agreements that have an IP component.
Irene is licensed to practice law in the State of Texas and is a registered patent attorney. She has a Masters of Law in Intellectual Property from the University of Houston, a J.D. from South Texas College of Law, a Masters of Science in Civil Engineering from the University of Houston, and a Bachelor of Science in Civil Engineering from the University of Texas at El Paso.
Outside of work, Irene is also an adjunct professor at South Texas College of Law, for its International Business Transactions course. During the 2012-2013 year, she is on the Council of the State Bar's Business Law Section and Chair of its Donated Services Committee, Irene was 2007-08 Past President of the Houston Chapter of the Association of Corporate Counsel, the year the Chapter won Chapter of the Year
David Levy focuses his practice on high-stakes commercial and intellectual property disputes. He also counsels clients on litigation avoidance and crisis management. With more than two decades’ experience as a trial and appellate lawyer, he has represented technology, financial services, energy, manufacturing, and retail clients in US federal and state courts, and before US and international arbitration tribunals. He previously co-chaired the international litigation and Asia-Pacific practices at an international law firm. David now leads Morgan Lewis’s litigation practice in Houston. - See more at: https://www.morganlewis.com/bios/dlevy#sthash.vikaRXEl.dpuf
Robb Edmonds is a founding member of the firm. His practice is exclusive to intellectual property law, concentrating on prosecution, litigation, portfolio management, and licensing matters. His practice combines his prior engineering experience in oil & gas, hydrocarbons, polymers and chemical processing with an expertise in patent drafting, prosecution, IP enforcement, and client counseling on IP related matters.
Steve’s practice focuses on intellectual property. For more than 25 years, Steve has handled a wide variety of IP cases for clients in various industries, including numerous patent cases in federal courts throughout the U.S., and before the U.S. International Trade Commission. In addition, he has handled many other IP cases involving claims of copyright infringement, trademark infringement, cybersquatting, false advertising, and unfair competition, as well as cases involving trade secrets and covenants not to compete. He also has significant experience with the arbitration and mediation of IP disputes.
Besides litigation, Steve’s practice includes counseling clients on IP issues and disputes Steve has handled many transactions involving mergers and acquisitions with substantial IP issues, as well as license and technology development agreements. He also prosecutes patents and applications for trademark and copyright registrations.
Steve received his Juris Doctor from the University of Iowa College of Law and a B.S. in Industrial Engineering from Iowa State University.
Charles (Chad) F. Wieland III focuses his practice on Intellectual Property (IP) matters. He advises clients ranging from startups to Fortune 100 companies, both domestic and international. With over 27 years of experience, he finds cost effective ways to acquire or capture and exploit worldwide IP rights of clients, while avoiding or mitigating the hazards posed by the IP rights of others. Chad has advised clients on how to best capture the value of their innovations, prepared and prosecuted utility and design patent applications on a cost effective basis, prosecuted reissue and re-examination applications, as well as inter partes and covered business method review proceedings. He has experience in exploiting IP rights through licensing, assignment and when necessary, litigation. He helps clients steer clear of interference from the IP rights of others with design-around recommendations, validity, infringement and clearance/freedom-to-operate studies, both formal and informal. He negotiates and drafts software licenses and other technology transfer agreements.
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.