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: 5 Hours of California CLE credits
KEY TOPICS DISCUSSED
The Defensive Trinity: Prosecution, Portfolio Management & Business Alignment
Defend Trade Secrets Act Updates and how DTSA Impacts Your Trade Secrets Strategy
The Great Game: Defending Against Rivals & Operating Companies
Defending Against NPEs: Beyond Cost Benefit Analysis?
Defensive Strategies for Post Issuance Proceedings
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
As the Director of the Silicon Valley United States Patent and Trademark Office (USPTO), John Cabeca carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and is responsible for leading the USPTO's west coast regional office in Silicon Valley. Focusing on the region and actively engaging with the community, Mr. Cabeca ensures the USPTO’s initiatives and programs are tailored to the region's unique ecosystem of industries and stakeholders.
A veteran of the U.S. Patent and Trademark Office for over 26 years, Mr. Cabeca previously served as the Senior Advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. In this role, he worked closely across the Agency's leadership to implement the policies and priorities for the USPTO. He began his career at the USPTO as a patent examiner after graduating from Widener University with a bachelor's degree in electrical engineering. Mr. Cabeca became a Supervisory Patent Examiner in 1997 and joined the Senior Executive Service in 2008 serving as a Patent Technology Center Director over the semiconductor and electrical systems technologies.
Mr. Cabeca has dedicated much of his career to the USPTO's outreach and education programs focusing on small businesses, startups and entrepreneurs. Over the years, he served in the Office of Petitions, the Office of Patent Legal Administration, the Office of Governmental Affairs and the Office of the Under Secretary. In 2006, Mr. Cabeca was appointed a Department of Commerce Science and Technology Fellow and served on special assignment to the Executive Office of the President in the United States Trade Representative's Office. At USTR, he worked with multiple agencies on a variety of international intellectual property rights issues and played an integral role in the Free Trade Agreement negotiations with the Republic of Korea.
Scott Trask is Director of Intellectual Property at Newport Corporation in Irvine, CA since 2004. His work includes IP portfolio development, licensing, enforcement, mergers & acquisitions and IP landscape analysis.
Scott has his BA in Physics from Kenyon College, his BSME from Washington University in St. Louis, and his J.D. from Western State University College of Law. Prior to working in an intellectual property role, Scott worked for 20 years in design engineering, project engineering, and engineering management in the aerospace, marine, and photonics industries.
Mr. Kuan focuses his practice on IP procurement and portfolio management for clients in the biotech, analytical instrumentation, software (with emphasis in bioinformatics), bioprocessing/biomanufacturing, nucleic acid sequencing, chemical, medical device, molecular diagnostics, nanotechnology, optics, and semiconductor industries. He has over 10 years of experience in IP strategy and management, preparation and prosecution (utility/design patents, trademarks, trade dress), counseling and litigation, licensing and technology transactions, freedom-to-operate clearances, monetization, M&A due diligence, risk recognition & mitigation, dispute resolution, and FDA regulatory counseling.
Thomas F. Fitzpatrick is partner and co-chair of the Intellectual Property Litigation Practice Group of Pepper Hamilton LLP, resident in the Silicon Valley office. Mr. Fitzpatrick focuses his practice on all aspects of intellectual property, including litigating patent, trade secret, trademark, technology licensing and other related disputes. He has represented both patent owners and patent defendants in federal courts throughout the country, including in the Northern, Central and Southern Districts of California, the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, the Northern District of Georgia and the District of Arizona. Most recently, Mr. Fitzpatrick has successfully represented internationally based and publicly traded companies in the computer database, telecommunications, semiconductor, Internet and power supply industries.
Prior to joining the firm, Mr. Fitzpatrick was a partner in the Litigation Department and a member of the Patent Litigation Group at Goodwin Procter. Then he was a partner in the Palo Alto office of Townsend and Townsend and Crew LLP. Before that, he was a deputy district attorney at the San Mateo County District Attorney’s Office. As a prosecutor, Mr. Fitzpatrick obtained convictions through bench and jury trials.
Mr. Fitzpatrick has written numerous articles on patent law and patent litigation. He has spoken on recent developments in patent law to various organizations in the United States and Korea.
Mr. Fitzpatrick is a member of the San Mateo Bar Association and a past -member of the California District Attorneys Association. Mr. Fitzpatrick received his J.D. in 1997 from Santa Clara University School of Law, where he received the American Jurisprudence Award in Patent Law and was the research editor for the Santa Clara Computer and High Technology Law Journal. He received a B.A. in 1994 from the University of California Berkeley.
Mr. Fitzpatrick is admitted to practice in California, and before the U.S. Court of Appeals for the Ninth Circuit, U.S. District Courts for the Central, Eastern, Northern and Southern Districts of California, the District of Arizona and the Eastern District of Texas.
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.
Fergal Clarke is the director of IP business analysis at Lenovo, the world’s largest PC firm, which has major research centres in Yamato, Japan; Beijing, Shanghai and Shenzhen, China; and Raleigh, North Carolina.
Mr Clarke is responsible for providing business context to all IP-related activities and for ensuring that such activities are consistent with and supportive of the overall business strategy. His specific responsibilities include patent acquisitions, supporting organic patent development, supporting inbound and outbound licensing and communicating the IP business strategy.
Mr Clarke was previously director of IP strategy at Rambus. Before this, he held multiple technology and engineering management roles at Applied Materials, in addition to managing its corporate trade secret management initiative.
Mr Clarke obtained his physics degree from Dublin City University and his MBA from the University of California, Berkeley.
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.
Lee Cheng is currently advisory counsel for the board at NewEgg. He served as Chief Operating Officer and EVP at Gibson Brands and prveiously served as NewEgg Inc's Chief Legal Officer, SVP of Corporate Development and Corporate Secretary and General Counsel.
He's a graduate of UC Berkeley Law School, where he earned his J.D. A graduate of Harvard University where he earned his SB in History and Science.
Experience and Accomplishments:
I began my legal career as a damages witness in the HP v. Bausch & Lomb case, which led to law school and licensing of the patent-in suit which in turn led to generation of over $100 Million in licensing revenue over the life of the patent. My legal career has included IP litigation at Pennie & Edmonds, in-house work at 3Comm and other leading companies in the networking and cloud computing space, and authoring a leading legal treatise on patent infringement damages.
Recognized expert and published author in patent infringement damages;
IP enforcement; Litigation management;
Merger and acquisition; Strategic IP Portfolio creation; IP transaction negotiation; open source policy managemnt; Entrepeuneurial counseling
Publications and Courses
“Patent Infringement: Compensation and Damages”, Law Journal Press. 2006.
"Actions to Limit Product Liability Awards" 4 Product Liability Law Journal 129 5/93.
"Maximizing Impact of Visual Evidence" Patent Litigation 1992 Practicing Law Inst.
"We've just been sued! What's Our Exposure? A Defendant's Guide to Damages" IP Law and Management Institute, San Diego, November 2012
"Implications of the America Invents Act", panelest, IP Counsel Cafe San Jose, San Jose April 2012
"Patent Infringement Damages" IP Counsel Conference, San Jose, March 2012
“Developments in IP Remedies”at IP Counsel Conference New York, 2009 (Conference Chair)
“Developments in IP Remedies”at TechNet IP Forum New York, 2009
“New Developments in Patent Infringement Damages” at Intellectual Property for Wireless and New Media, 2007, 2008
“Remedies for Patent Infringement”, in “Intellectual Property Remedies” webinar, American Lawyer Media, October, 2008
“Getting the Jump on IP Due Diligence - Putting Together an IP Portfolio to Maximize Value” included in “Strategic Planning for Entrepreneurs Seminar”, Stanford University, 2002
Dr. Upshaw has experience in a wide range of complex commercial litigation in state and federal courts, including intellectual property, antitrust, business tort, securities, and license litigation. He has successfully handled everything from sole responsibility for cases from first filing through final appeal, to cooperatively planning and managing massive multinational bet-the-company conflicts involving dozens of simultaneous litigation, arbitration, and administrative matters handled by multiple law firms and vendors.
Before opening his innovative law office, Dr. Upshaw was Senior Litigation Counsel at Nokia, where in addition to managing litigation, his responsibilities included developing electronic discovery and other litigation policies, procedures, and platforms; advising on licensing and other transactions; budgeting; and managing outside counsel. As a member of Jones Day’s award-winning litigation group, Dr. Upshaw handled numerous cases on his own as part of an industry-leading training and apprenticeship program, in addition to working cooperatively as a part of large litigation teams on major cases.
Before attending law school, Dr. Upshaw spent six years as an assistant professor at Austin College where he taught courses in statistics, applied microeconomics, and the economics of regulation. As a professor, he was recognized as an expert in several cases where he offered testimony on damages.
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.
Brendan has led and worked on projects representing a wide array of technologies, such as microprocessor design, semiconductor manufacturing, semiconductor fabrication tools, cryptographic hardware, low-power electronics, consumer electronics, touchscreens, LCD displays, LED applications and driver circuits, power supply circuits, wireless transceiver circuits, hard drive technologies, data storage systems, digital interfaces, computer buses, memory design, flash memory, and mixed signal ICs, among others. Mr. Sever holds a Master’s Degree in Computer Systems Engineering from Boston University in addition to a B.S. in Electrical Engineering from UC Santa Barbara. He has worked for Lockheed Martin and Northrup Grumman in California as an embedded systems engineer, for Sonos as a systems support engineer to Europe, and for BINA in Switzerland as an electrical engineer in the food factory designing automation systems and troubleshooting electrical systems. In addition to his work in industry, his research and lab work in academia focused on semiconductor fabrication, VLSI design for digital signal processors, and parallel computing architectures.
Ryan Koppelman focuses his practice on intellectual property matters with a specific focus on patent litigation. He has handled over 30 patent infringement cases in forums across the country, including the ITC. He recently managed the day-to-day activities of the Nokia v. Apple case where the parties asserted over 50 patents against each other.
Ryan represents a wide variety of clients across diverse industries such as mobile, high-tech, finance, health, telecom and plastics, and his clients range from multinational publicly-traded corporations to emerging growth and start-up companies.
He passed the Electrical Engineering FE/EIT certification exam, and he has handled intellectual property disputes across a number of technology areas, including wireless protocols, chipsets, touchscreens, Bluetooth, GPS, mobile applications, e-commerce, call center processing, cloud computing, payment clearinghouses, health data processing, medical devices, plastics molding, polymer chemistry and porous plastic sintering.
Kenneth Halpern is senior counsel in the firm's Intellectual Property Litigation and Patent Litigation practices. He represents corporate clients in patent and technical trade secret litigation across a broad range of technologies, including semiconductors, wireless communications, DRM, memory chips and modules, optical disks, social networking, pharmaceuticals, and every variety of software, as well as in copyright and trademark matters. He has practiced in the federal district courts in California, Texas, Delaware, New York, Washington and elsewhere, the state courts of California, and handled numerous appeals to the United States Court of Appeals for the Federal Circuit.
Michael Sacksteder is Chair of the Patent Litigation Group at Fenwick & West – a team of more than 50 experienced litigators with diverse legal and technical backgrounds, all of whom focus on helping clients achieve their business goals. Michael’s practice focuses primarily on patent litigation and litigation involving other substantive areas of intellectual property law, including copyright, trade secret, trademark, and unfair competition.
Michael has served as trial counsel in a number of patent and other intellectual property trials in United States District Court and has engaged in successful appellate practice before the United States Court of Appeals for the Federal Circuit. He has substantial experience in all aspects of pretrial litigation, including claim construction in patent cases.
Michael’s experience encompasses a variety of technological fields, including computer graphics, mainframe software tools, wireless messaging systems, semiconductors, optical networks and nucleic acid microarrays. Michael is active in the San Francisco Bay Area Intellectual Property American Inn of Court and the American Intellectual Property Law Association.
Prior to attending law school, Michael worked as a broadcast journalist.
Mr. Cruzen’s practice focuses on intellectual property litigation, including actions for patent infringement, trademark infringement, copyright infringement, and trade secret misappropriation.
Mr. Cruzen practiced appellate and intellectual property litigation at Howard Rice Nemerovski Canady Falk & Rabkin in San Francisco from 1999-2003 and 2005-2007 before joining Klarquist. He served as a law clerk in the chambers of the United Nation’s International Criminal Tribunal for Rwanda in 2004 through the ICTR internship program.
Carl is a former Administrative Law Judge with the U.S. International Trade Commission and has seen it all from the other side of the bench. With this unique perspective, Carl understands what is important to the out-gunned and out-manned trial judge tasked with deciding the winner in complex Section 337 proceedings. Having experienced first-hand the “ups and downs” of presiding over Section 337 investigations, Carl can share with you his insights on how to effectively, efficiently, and persuasively present your best case before the ITC.
Brian Platt is Director of IP Litigation at Nagra USA, a subsidiary of the Kudelski Group, which is a Swiss public company and world leader in digital security and convergent media solutions for the delivery of digital and interactive content. In this role, Mr. Platt manages and oversees the Group’s intellectual property litigation matters in the United States and Europe, including the development and implementation of the Group’s intellectual property and innovation strategies. In addition, Mr. Platt manages intellectual property licensing programs and initiatives related to litigation worldwide.
Most recently, Mr. Platt was Director, Patent Litigation, at Intellectual Ventures, a privately held global invention capital company founded in 2000 with > $5 billion in capital under management. In his role at Intellectual Ventures, Mr. Platt developed and managed Intellectual Ventures’ patent litigation matters, including the direction of licensing and customer engagements related to technology litigation matters.
Before joining IV, Mr. Platt was a patent litigation attorney with the law firms of Merchant & Gould, P.C., and Perkins Coie LLP, where he managed civil and intellectual property litigation matters related to intellectual property in U.S. federal courts.
Mr. Platt holds a BS from the Walla Walla University School of Engineering, and a JD from the Seattle University School of Law. From 2004 to 2007, Mr. Platt served as a judicial law clerk for Judge Thomas S. Zilly and Judge James L. Robart in the U.S. District Court for the Western District of Washington.
Mike is a registered patent attorney who has experience in many aspects of patent law including post grant proceeding before the United States Patent and Trademark Office, U.S. and foreign patent acquisition, and patent litigation. Mike defends some of the largest technology companies in the world against allegations of patent infringement using the post grant review process offered by the USPTO.
Mike’s work in post grant proceedings has ended in successful outcomes that either invalidated the asserted patents or resulted settlement for substantially less than what was originally sought. Mike also works with client in developing patent portfolios covering their most important technologies. Mike’s experience includes working with both U.S. and foreign patent offices and foreign counsel to obtain patents worldwide. Most of Mike’s patent portfolio development work involves assisting startup clients in acquiring their first and often most important patents.
Prior to law school, Mike was a software engineer for a startup company in Portland, Oregon. Mike’s software experience was focused on mobile device technology and client server systems. While in law school Mike served as a judicial intern for the Honorable Steven J. McAuliffe of the United States District Court for the District of New Hampshire. Mike also served as the Managing Editor of the Pierce Law Review (now the UNH Law Review).
Mike co-authored an article in Law360 entitled "Rackspace Gets 'Troll's' Graphics Patent Nixed By PTAB."
Diane is Senior Managing Counsel for J. C. Penney Corporation, Inc., responsible for all patent litigation matters. Prior to joining J. C. Penney Corporation, Diane was a shareholder as Winstead PC in Dallas, Texas and a member of its Intellectual Property and Commercial Litigation Practice Groups. She practiced at Winstead for more than 25 years before leaving private practice to join JCPenney. During her tenure at Winstead, Diane represented clients that were patent owners, defendants accused of infringement by competitors, as well as clients accused of infringement by NPEs.