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 5.75 hours of Washington State CLE credit
KEY TOPICS DISCUSSED
Internet of Things Security: Patent Landscape, Key Opportunities, Threats and IP Defense Strategies
The Defensive Trinity: Prosecution, portfolio Management & Business Alignment
IP Litigation in China: How to Defend and Protect Your Patents in Today's China
The Great Game - Defending Against Rivals & Operating Companies
Proactive Intervention: Understanding the Risks and Avoiding Litigation
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
Mr. Heideman represents clients in all types of intellectual property disputes, with a focus on patent litigation. He has represented clients in a wide range of industries, including software companies, pharmaceutical companies in cases involving Abbreviated New Drug Applications under the Hatch-Waxman Act, aerospace companies, and biotechnology companies, among others. Mr. Heideman also represents clients in contentious Patent Office proceedings, including inter partes review and covered business method reviews. Mr. Heideman regularly counsels clients on pre-litigation matters, including analyzing patent infringement and validity. He has also represented clients in cases involving design patents, false advertising claims, trademarks, and inventorship disputes. In 2015, Mr. Heideman was selected to the Super Lawyers’ “Washington Rising Stars” list.
Mr. Heideman earned his J.D. from Vanderbilt University Law School, where he was a member of the Vanderbilt Law Review. Prior to law school, Mr. Heideman obtained his B.S. in Chemical Engineering, with distinction, from the University of Alberta.
Mr. Heideman joined the firm as an associate in 2005 and became a partner in 2011.
Mr. Heideman co-founded the Canadian American Bar Association, and has served as its Secretary-Treasurer and as its Vice President. He is also an active member of the Washington State Patent Lawyers Association (WSPLA) and chairs the WSPLA Litigation Committee.
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.
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.
Summereen (“Sam”) Nott – Director, Global Legal Services with Expeditors International of Washington, Inc. (“Expeditors”) – Seattle, WA. Sam is in-house counsel for Expeditors a global logistics firm with offices around the world. She has been with Expeditors close to 15 years assisting her business colleagues with various legal concerns from litigation management to contract negotiation. Currently, Sam’s focus as Director in the Legal Department is on transactional matters, such as contract negotiations or assisting with reviewing intellectual property questions.
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.
Rob Kramer is the Co-Chair of Dentons' Patent Litigation Practice and a partner in the firm's Intellectual Property Group. Based in Silicon Valley and San Francisco, Rob is one of the most experienced and successful lead trial counsel patent litigators in the country. He and his team are consistently honored as among the most aggressive, results oriented, patent litigation practices. Rob was named a "Legal Lion" by IP Law360 in January 2017 for his lead trial counsel role winning two back-to-back patent jury trials in one of the largest patent cases in the country. Rob and his team at Dentons were also recently named as an elite "IP Litigation Powerhouse" that corporate counsel "turn to for their most pressing needs" in BTI Consulting Group's national survey of General Counsel. He and his team were also recently named as a "Top 50 Litigation Powerhouse Firm" by Law360, and recently named as one of the "Fearsome Foursome," by BTI Consulting, an honor bestowed upon four elite firms that General Counsel or large companies fear most to litigate against "based on the team's intense approach, fierce tactics and achievement of successful litigation outcomes." Rob and his team were recently featured in IP Law360 as the "best of the best" at providing the most value per legal dollars spent by in house counsel on litigation. Rob was invited to be a speaker at this conference as he has a long history of promoting women litigators into leadership roles, mentoring and creating opportunities for women attorneys, and ensuring that they gain courtroom experience and hold leading and meaningful roles on important IP litigations.
VP-TS Intellectual Property, Cypress Semiconductor
An IP strategist with a combination of technical, business and legal expertise, currently transforming the management of a portfolio of 3000+ patents and applications into a self-funding, business-driven, cross-corporate function delivering entitled ROI. David is also a prolific inventor with over 130 patents granted and pending, and a Patent Agent licensed to practice before the USPTO, reg # 69932.
Daivd is responsible for management of a portfolio of ~2000 patents, ~1000 pending applications and the process of IP protection, generation and monetization. Directing systematic review processes to ensure comprehensive and cost-effective protection of strategic IP as it is created. Ensuring maximum ROI on IP$ by implementing systematic reviews of applications against business objectives. Creation, implementation and direction of processes to create and protect strategic IP in emerging technology areas adjacent to existing product lines and technologies.
Mr. Finrow is a seasoned biotechnology executive with leadership experience managing IP strategy, fundraising and corporate development. Mr. Finrow recently took the helm of Lumen Bioscience, a Seattle-based synthetic biotechnology company. From 2014 to 2017, he led corporate development and legal affairs for Adaptive Biotechnologies, including their $200 million acquisition of Sequenta in 2014 and equity financing transactions yielding over $300 million in proceeds. Mr. Finrow spent his early career an attorney with Venture Law Group and Cooley LLP, an AmLaw Global 100 law firm, where he practiced in the emerging companies group advising venture capital firms and public and private companies in the life sciences and information technology industries. He earned his law degree, cum laude, from Harvard Law School, where he was an Executive Editor of the Harvard Journal of Law and Public Policy.
Keith has been a partner at two large international law firms, and was General Counsel Corporate Development at a pioneering Seattle Photonics company, which, under Keith’s guidance raised over a half billion dollars from Wall Street and Fortune 500 investors. He has worked with management teams of telecommunications and other companies, several of which built national and international reputations, in a variety of general counsel and transactional roles, encompassing capital raising, mergers and acquisitions, strategic partnerships, channel/OEM, supply chain, development and other agreements, and corporate governance. He has been recognized as a Leading US Lawyer by Euromoney Legal Group and has written and spoken on a variety of technology industry subjects.
Keith received B.A. and M.A. degrees from the University of Washington and his J.D. from the Columbia University School of Law.
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.
John is a member of the firm’s Intellectual Property section. He focuses his practice on patent licensing and counseling.
Before coming to Shook, John served as associate general counsel at Microsoft Corporation, where he led a team that analyzed patents for conflicts, outbound licensing, litigation support and risk mitigation. He also completed a two-year international assignment for Microsoft, handling intellectual property matters originating in Europe, the Middle East and Africa. In addition, John taught a class on intellectual property licensing at Seattle University School of Law as an adjunct professor from 2005 to 2011.
John graduated from the George Washington University Law School, where he worked as notes editor of The Journal of International Law and Economics and on the publication staff of AIPLA Quarterly Journal. He received his bachelor’s degree in mechanical engineering from Rice University, where he served as president of the Rice Engineering Association and the American Society of Mechanical Engineers, Rice Chapter. While in law school, John worked at the U.S. International Trade Commission as well as the U.S. Court of Claims for the Honorable Wilkes C. Robinson in Washington, D.C.
Kurt Brasch recently accepted a role leading Uber's patent transactions after managing strategic initiatives and patent licensing for Google’s Transactions team. He was named one of the Top 10 IP Personalities by IAM in 2015 for developing and leading Google’s Patent Purchase Promotion and Patent Starter Program. He was also Google’s lead negotiator on the Cisco cross-licence that was signed in early 2014. He came to Google in 2012 after the Google acquisition of his former employer, Motorola Mobility (MMI). At MMI, he was director of outbound patent licensing for the connected home division and also led the intellectual asset management team of 15 technical patent experts. Mr Brasch also drove major initiatives, including the company’s position on patent reform (ie, the America Invents Act) and the overall strategy for the IP business.
Before joining Motorola’s mobile device business (later MMI) in 2008, Mr Brasch created and led a start-up consulting business focused on training technical managers. Before that endeavour, he was with Motorola’s government business for 18 years, nine of which were spent in product management. In addition, he held various roles in international logistics, sales support and finance. Mr Brasch holds a BS in finance from Arizona State University and an MBA from Northern Illinois University.
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.
Blake is a partner in the firm. His practice focuses on cases which the client "must win" and, when necessary, which must be tried. Blake has been widely recognized by his peers for his trial skills. He has consistently been listed as a Washington Super Lawyer (top 5% of attorneys statewide), and in 2016 was listed as a Top 100 Super Lawyer. He is on the faculty of the National Institute for Trial Advocacy.
Blake is also actively engaged in the community. He is the President of the Board of Northwest Health Law Advocates (NoHLA) and is a member of the Board of Trustees for Childhaven.
Prior to joining the firm, Blake was a partner at Riddell Williams where he represented a broad mix of clients in complex litigation. In college, he earned the award of the top individual debater in the nation. He and his partner finished second in the 1995 national tournament (final round transcript published in one of the leading college speech and communications textbooks: Freeley and Steinberg, Argumentation and Debate (12th ed. 2009)).
David Killough is an Assistant General Counsel in the Litigation, Competition and Compliance Group of Microsoft’s Legal and Corporate Affairs department. Killough’s principal responsibility is management of Microsoft patent litigation matters in the U.S. and internationally. Before joining Microsoft in 2008, Killough was a partner of the firm Vinson & Elkins L.L.P. in Austin, Texas, where he co-headed the Intellectual Property & Technical Litigation Section, and before that was a partner of the firm O’Melveny & Myers LLP in California. He received his B.A. degree from North Texas State University in 1977 and his J.D. from Southwestern University School of Law in 1983. While in private practice, Killough was listed in The Best Lawyers in America and in Texas Super Lawyers.
Dr. Díaz is the Associate Vice-President-Sr. Patent Counsel for L’Oréal Research & Innovation USA. He started his career as a patent attorney in one of the top patent law firms in the US, Finnegan, Henderson, Farabow, Garrett & Dunner. He then joined Intellectual Ventures where he built and developed patent portfolios mainly in the fields of medical devices, wearable technology, information and communication technology, optics and advanced materials. More recently, in 2012, he co-founded Díaz|Cook an IP law firm providing clients counseling on the procurement, enforcement, management, and monetization of intellectual property rights and assets.
After earrings his B.S. in Chemical Engineering at the University of Washington, he enrolled in graduate school where he studied the fast and slow internal dynamics of 13C-labeled deoxyribonucleic acid (DNA) oligomers in solution. Dr. Díaz eventually earned an M.S. and a Ph.D. in Physical Chemistry (Biophysics), as well as a J.D. from the University of Washington.
Dr. Díaz was raised and lived in various places including Mexico, Alaska, Hawaii, and Washington D.C., and now calls the Pacific Northwest home.
He currently serves as a Trustee for Seattle Children’s Hospital Board of Trustees, and as Past President of the University of Washington Alumni Association.
Dr. Díaz was the recipient of the 2012 Latina/o Bar Association of Washington Model of Excellence Award and the 2011 University of Washington’s MAP Distinguished Alumnus Award.
Bart Eppenauer rejoined Shook after serving as Microsoft’s Chief Patent Counsel for more than a decade. In that role, Bart led the Patent Group in the Legal and Corporate Affairs department, where he developed Microsoft’s patent portfolio of more than 35,000 issued patents worldwide and managed a team of more than 100 patent professionals offering patent counseling and product development support across all of Microsoft’s business and research divisions. Under Bart’s guidance, Microsoft’s high-quality patent portfolio resulted in an extremely successful IP licensing program and received top rankings in IEEE Spectrum, BusinessWeek and The Patent Board. Bart’s practice at Shook focuses on strategic IP counseling and analysis, pre-litigation and litigation strategy, complex multilateral IP transactions and license agreements and IP policy advocacy. Bart has extensive experience in IP transactions and scenarios, including product development agreements; patent licensing (including patent pools); open source software licensing, usage and contributions; industry standards usage, participation and contributions; strategic alliances, joint development and collaboration agreements; and due diligence involving IP asset evaluation. He works closely with government and judicial officials, academics and industry leaders worldwide on IP policy issues, including ongoing judicial and legislative patent reform efforts. Bart is a frequent author and speaker on a range of IP issues, with particular expertise in patent subject matter eligibility of computer implemented inventions. He has been published on the IAM blog and had the most-read stories of both 2014 and 2015. He has also been published in Inside Counsel, Patently-O, Managing Intellectual Property and IP Watchdog.
Chris Lewis is a Vice President with FLIR Systems, Inc., a world leader in the field thermal imaging and other advanced threat detection technologies. For the past six years, Chris has served as FLIR’s Deputy General Counsel and Chief Intellectual Property Counsel. Prior to joining FLIR, Chris was a partner in the firm of Schwabe, Williamson & Wyatt, where he chaired the Firm’s Intellectual Property Practice group. Prior to his legal career, Chris worked as an engineer and compliance specialist for Westinghouse and other prime contractors at the Hanford Nuclear site in Richland, Washington. Chris graduated cum laude from the Northwestern School of Law at Lewis and Clark College in 2000, and currently serves as an Adjunct Professor at his Alma Matter, teaching a course on Patent Litigation Strategies. Chris received his Bachelors of Science degree in Chemical Engineering from the University of Washington in 1994.
Milan Patel has over 16 years of experience with patent portfolio development and management, client counseling, licensing, IP strategy and patent acquisition covering various complex technologies, including Wireless, Audio/Video, Internet and Networking technologies. He was a major contributor in the development of Apple’s Wireless patent portfolio, Qualcomm’s OFDMA patent portfolio, Nokia’s CDMA patent portfolio and TV/Com’s MPEG-2 patent portfolio. He has extensive experience in connection with managing and counseling business and engineering clients, patent mining, drafting and presenting claim charts, evaluating and mapping technology, and finding gaps in IPR coverage. He also has experience in substantial patent preparation and prosecution, managing inside and outside counsels and third party portfolio analysis for licensing, acquisitions, assertions, and litigation.
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.