The IP Enforcement & Monetization Summit Chicago 2016
The AIA has transformed the landscape: IP owners are finding it harder to monetize and enforce their patent portfolio and face growing hostility when they do.
An ineffective enforcement strategy means loss of value to your organization, while also encouraging potential and current infringers. On the other hand, a well-run enforcement strategy sets clear boundaries with potential infringers and earns respect in your market place.
The IP Enforcement Summit explores, benchmarks and challenges the enforcement strategies that Operating Companies are implementing, how they can be improved and where current trends are heading. Most importantly, the conference looks at how these Enforcement strategies can fit into your organization’s goals and larger IP strategy.
KEY TOPICS DISCUSSED
Crafting Patents for Monetization & Enforcement
A Patent Owner's Guide to Surviving Post Issuance Proceedings
Pre-Trial Litigation Strategy
Settlement & Trial Strategy - Your End Game
Portfolio Analysis & Due Diligence for Monetization
Running a Licensing Program - An Operating Company Prespective
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
Anne Burkhart has been registered before the USPTO since 1992. Anne earned a Bachelor of Science in Physics from the University of Cincinnati and a Juris Doctorate from the John Marshall Law School. Anne provides IP portfolio management and evaluation services for Medela. A key aspect of Medela’s success is a relentless focus on research-based medical technology. Medela produces products and innovations related to Breastfeeding and Medical Vacuum Technology. Medela was founded in 1961 by Olle Larsson. Since then, the company manufactures its key products in Switzerland and the USA and has further subsidiaries in Europe, North America and Asia. The company employs over 1000 people worldwide.
Joe Yosik is a patent attorney specializing in IP portfolio management, including patent prosecution, trademark enforcement, freedom to operate, and IP licensing, for companies in the Danaher Product Identification Group including Videojet, Linx, Alltec, Esko, and X-Rite. Joe's patent prosecution experience includes printing technology, ink, color management, pharmaceutical products, medical devices, petroleum transportation and refining, polymer extrusion, mineral processing, heat transfer, hydrocarbon filters and coalescers, chemical vapor infiltration, flue gas treatment, refractory materials, ionic liquids, packaging materials, and office furniture.
As Director of Global Intellectual Property for Modine Manufacturing Company, a leader in thermal management technology, Jeroen is responsible for all aspects of the identification, assessment and protection of Modine’s IP across the globe. This includes the development and execution of intellectual property strategies; management of invention, patent and trademark processes and portfolios; assessment and pursuit of potential infringement activity; and development of licensing arrangements relating to Modine's IP and the IP of others. He is a member of the USPTO Patent Bar, and is a J.D. candidate at Marquette University Law School. With over 20 years of industry experience in advanced product development, product and technology strategy, and intellectual property management, Jeroen brings a unique perspective to the role of in-house IP management.
As Senior Patent Counsel and a member of Xerox Corporation’s licensing and litigation teams, Jerry’s patent-licensing duties include assisting the Xerox corporate patent-licensing business team as well as supporting the Xerox patent-licensing executives during patent-licensing business negotiations by preparing and presenting to select patent-licensing candidates claim-charted Power Point slide decks, providing clear and convincing evidence of infringement of certain Xerox patent claims by identified products made or sold by candidates, and presenting defenses including non-infringement and invalidity defenses, to neutralize any counter assertion made by a patent-licensing candidate during negotiations. Jerry’s in-house litigation duties include investigating patent infringement complaints, meeting with subject matter experts to investigate technical details of accused products and services, conferring with co-counsel and the SMEs to draft responses to plaintiff’s infringement contentions, and preparing solid defense positions including non-infringement, invalidity and lack-of-standing, for use by outside counsel.
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.
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.
With over 20 years of experience, Sangeeta’s practice includes all aspects of intellectual property litigation, prosecution and counseling, with a special focus on patent opinion practice. She represents several Fortune 500 clients for whom she provides strategic counseling and guidance on their global intellectual property portfolios.
Ms. Shah has handled numerous patent, trade secret, trademark and unfair competition cases involving parties in the chemical, software, automotive and metallurgical industries on such matters as injection molded polyethylene terephthalate bottles, polymer reinforcements, magnetic storage devices, emission testing equipment, touch controlled switching circuits, compression molded doors, chemical vapor deposition processes and cutting tools. She has also litigated design patent and copyright infringement cases in such diverse areas as architectural building designs, automotive parts and consumer products.
Sangeeta is also the Co-Chair of Brooks Kushman’s Post Grant Proceeding practice and is actively involved in post-grant proceedings before the U.S. Patent and Trademark Office. Such involvement includes coordinating strategies across post-grant proceedings, co-pending litigation, product engineering, licensing, and patent prosecution. She actively counsels clients regarding reexaminations, Inter Partes Review proceedings and Covered Business Method proceedings.
Through her opinion and prosecution practice, Ms. Shah has extensive experience with chemical and mechanical technologies, in the areas of catalysts, food science, packaging, analytical instrumentation, dietary supplements, diagnostic kits, adhesives, plastics, therapeutics and metallurgy.
Anna-lisa Gallo is Senior Intellectual Property Counsel at BASF Corporation, headquartered in Florham Park, New Jersey. She practices patent, trade secret, trademark, copyright, and IP transactional law. She provides IP strategy to various businesses and has been involved in IP contentious matters including arbitrations, patent infringement litigation, invalidity proceedings and post grant proceedings both domestically and internationally. Ms. Gallo is a member of the American Corporate Counsel and American Intellectual Property Law Association. Anna-lisa earned her J.D. from Seton Hall University with a Concentration in Intellectual Property, and her B.ChE at Villanova University. She is admitted to practice law in New York and New Jersey as well as the U.S. Circuit Courts of Appeal for the 2nd Federal Circuit. She is a registered patent attorney before the USPTO.
Dan Shulman is Chief Intellectual Property Counsel for Reynolds Group Holdings, Ltd. and Fram Autoparts, a $13 billion global packaging and automotive parts company comprised of Reynolds Consumer Products, Pactiv, Closure Systems International, Evergreen Packaging, Graham Packaging, Fram and Autolite. Dan is responsible for managing the global patent and trademark portfolio of those combined companies, setting IP strategy, managing all IP litigation and acting as lead counsel in appellate work before the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Dan also routinely leads corporate initiatives in which IP drives significant value. Dan was with Pactiv prior to its acquisition by Reynolds Group Holdings in 2010. Prior to joining Pactiv in 2007 as its Chief IP Counsel, Dan was Senior IP Licensing Counsel for Motorola. Prior to that, Dan was an associate at Mayer Brown LLP from 1999-2006.
Dan received his J.D. from Loyola University Chicago School of Law in 1999, and is a graduate of Northwestern University (1996) with degrees in Mathematics, Physics and the Integrated Science Program.
Dan has been recognized as one of the Top Forty Lawyers Under 40 in Illinois (2013) by The Law Bulletin, and as a Managing IP In-House IP Star 2015 and 2016. Dan is a frequent speaker on topics of IP law, and has authored numerous articles on various IP topics and Federal Circuit jurisprudence. Dan is the author of two books: Insights Hurt: Bringing Healing Thoughts to Life, and Personal Midrash: Fresh Insights Into the Torah, due out in August.
Ed Rice is a Partner in the Litigation Practice Group.
He is a trial and appellate lawyer who, since 1988, has focused primarily on patent cases and other technology disputes. After clerking for a federal trial judge, he joined the Department of Justice where in 1996 he won his first patent trial as the sole attorney for the government. Since then, he has first-chaired and won trials in every patent litigation venue in the country: federal district courts, the International Trade Commission, and the Court of Federal Claims. Ed launched his appellate career in 1992, when he won a difficult en banc Federal Circuit argument in a trade secret case.
Over his career, Ed has handled a wide range of patented technologies—from integrated circuits to pharmaceuticals, from internet business methods to anti-missile systems, and just about everything in between. Ed also has successfully represented clients on trademark and copyright matters. For example, he represented several well-known Hollywood figures in a copyright jury trial involving a blockbuster movie.
Paul Bartusiak has a Bachelor and Master of Science in Electrical Engineering, as well as a J.D. from Chicago-Kent College of Law. He was an engineer for about ten years before becoming an attorney, having been involved with technologies such as the radar seeker for the Harpoon Missile, energy bandgap manipulation of semiconductor devices, and RFIC design for wireless communication systems. He has been at Motorola for 21 years and is Lead Intellectual Property Counsel. In this role he has held various responsibilities, including significant offensive patent licensing around the world for revenue generation, IP litigation, strategic IP transactions such as the divestiture of Motorola patents, IP counseling to executive management, and leading in-house patent attorneys in the preparation and prosecution of patents.
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.
Edward J. Brosius is Assistant General Counsel and Assistant Secretary at AMSTED Industries Incorporated. His current responsibilities include management of all intellectual property, litigation support and licensing matters at AMSTED, as well as management of all environmental law matters. Mr. Brosius received a B.S. in electrical engineering from Notre Dame in 1971 and a J.D. from DePaul in 1976. He is admitted to practice in Illinois, and in the U.S. District Court for the Northern District of Illinois, the U.S. Court of Appeals for the Federal Circuit and Seventh Circuit, and the United States Supreme Court. Mr. Brosius was a power systems engineer for Commonwealth Edison from 1971 to 1975, and is a Registered Professional Engineer (inactive status) in Illinois. He has written numerous papers and has given many speeches on topics including review of patent, trademark and trade secret law and environmental law for employees of industrial corporations, and management of environmental administrative and compliance matters.
Jamie McDole is a first-chair trial lawyer in the Haynes and Boone’s Intellectual Property Litigation Practice Group with experience in handling more than 50 cases involving patent, trademark and copyright infringement. Jamie has successfully represented numerous Fortune 50 companies throughout the country in both federal court and the International Trade Commission. His accomplishments are a direct result of his focus on client objectives, aggressive approach to litigation, creative “out of the box” strategies, and attention to detail.
Jamie has led and participated in some of the largest patent infringement litigation in the United States. From the smartphone wars, check-imaging, semiconductors, pharmaceuticals, or smart electricity meters, he has counseled his clients on pivotal issues in litigation and their businesses. Jamie prides himself on putting his client’s needs and goals first, and providing sound legal advice to achieve a successful outcome to disputes.
Jamie has also represented and counseled his clients on appeal at the Federal Circuit and in proceedings at the United States Patent & Trademark Office, including in new Inter Partes Review proceedings. Jamie works with Haynes and Boone’s Inter Partes Review (IPR) teams to develop a strategy that will achieve the client’s goals in both the IPR proceeding and in subsequent or ongoing litigation.
Jamie is often called upon to speak on various intellectual property issues. Most recently, he participated in a West LegalEdCenter webinar entitled “Interface Between PTAB Contested Proceedings and District Court Litigation,” addressing the complex issues associated with the new IPR proceedings and patent infringement litigation.
Mr. Tipescu's practice encompasses patent litigation, counseling and prosecution. He has represented clients in federal courts, as well as the United States International Trade Commission. Mr. Tipescu has experience preparing patent clearance and validity opinions, drafting patent license agreements, and counseling clients regarding obtaining and enforcing intellectual property rights. Mr. Tipescu is also a licensed patent attorney with experience in patent prosecution. His practice has involved a variety of technical areas, including software related technology, telecommunications, electromechanical devices, medical devices, hygiene products, power tools and automotive systems.
Mr. Catalano focuses his practice on intellectual property litigation, including trademark, copyright, trade secret, unfair competition and patent litigation. He has represented clients before federal courts, arbitrators, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, and the International Trade Commission.
Mr. Catalano’s practice also includes patent licensing, domestic and international trademark prosecution, enforcement and client counseling.
James (Jay) R. Nuttall is a first chair patent litigator with broad experience representing clients in courts throughout the country, with a particular emphasis in district court litigation. His substantial trial experience covers a wide variety areas and technologies, including telecommunications, medical devices, electronic systems and methods, software, lighting and chemical processes. His experience includes patent infringement matters brought by non-practicing entities (NPE), and antitrust, RICO, and unfair competition cases, among other matters.
Benis a Sales Engineer at Questel for the Midwest and Canada. Ben has been collaborating with numerous Fortune 500 companies in solving their IP related challenge.
Thomas J. Wimbiscus, a shareholder with McAndrews, Held & Malloy, has more than thirty years of experience and practices in all areas of intellectual property litigation, as well as the acquisition and management of patent, trademark, copyright, and trade secret protection. He has appeared in over 90 litigations and as lead counsel in over 60 IPR's.
Thomas was designated a fellow of the Litigation Counsel of America (LCA). The LCA is a trial lawyer honorary society composed of less than one-half of one percent of American attorneys – based on effectiveness and accomplishments, in both litigation and trial work. Thomas was named as “recommended” intellectual property (patent) counsel by an independent, global survey conducted by Practical Law Company (PLC Global Counsel 3000, Choose Your Counsel Wisely (7th – 20th eds.) (now called PLC Which Lawyer? Yearbook)) for the years 2002 – 2015. Thomas was also named as a prominent practitioner by the Practical Law Company in PLC’s Cross-Border IP in Business Transactions Handbook for 2008-2015. Thomas was also named as a “Leading Lawyer” (2004 - 2015, awarded to fewer than five percent of licensed Illinois lawyers) by independent survey.
His litigation successes include numerous multi-million dollar awards and settlements, as well as patent infringement victories before the U.S. International Trade Commission. His experience also encompasses the acquisition and maintenance of patents, trademarks, and copyrights.
Tim Carroll is viewed by clients and peers as a go-to patent litigator who has successfully litigated the cutting-edge technology issues of the day, including patent cases involving medical devices, green technologies, mobile apps, location-based services, messaging systems, Wi-Fi-enabled thermostats, and content management platforms. Through his representation of leading and emerging technology companies, Tim has secured trial wins, preliminary injunctions, forced his adversaries to stipulate to noninfringement, won summary judgment awards, earned a substantial attorneys’ fee award and prevailed in claim construction arguments. Tim has also led many joint-defense groups involving some of the largest and most sophisticated companies and law firms in the United States.
Tim recently achieved several victories for companies immersed in patent and licensing disputes.
In Smith & Nephew v. Arthrex Inc., Tim was asked to serve as first chair on a case for trial that involved second-generation products. Notwithstanding a prior verdict against Arthrex and a series of adverse rulings from the case involving first generation products, Tim steered Arthrex into a favorable settlement on the eve of trial. Along the way, Tim and his team earned a victory by knocking out plaintiff expert’s liability testing, which left the plaintiff with a lack of liability evidence to present to the jury.
In Advanced Transit Dynamics v. Ridge Corp., Tim was the lead trial lawyer in an injunction hearing held by Judge O’Connell of the U.S. District Court for the Central District of California. Following that hearing, Judge O’Connell entered a preliminary injunction in favor of Tim’s client, Advance Transit, forcing Ridge to cease making, selling or marketing its competing green technology offering.
Vincent is a registered patent attorney and is licensed to practice law in Illinois and Michigan. He is also licensed as a Professional Engineer in the State of Michigan. Prior to entering the legal field Mr. Wiltse worked for General Motors as Senior Project Engineer, where he worked in vehicle aerodynamics development and vehicle systems integration. He received his Juris Doctor from Wayne State University Law School, in Detroit. He obtained his Master of Science and Bachelor of Science in Aerospace Engineering from the University of Michigan.
From 2000 to 2008 he was in private practice, first in Michigan and then in Illinois. Vincent joined Cummins-Allison as in-house counsel in 2008. At Cummins-Allison he manages the intellectual property portfolio. Cummins-Allison has topped Crain’s Chicago Business’ “Eureka Index” for having as the highest patent quality multiple times and is often named by Crain’s Chicago Business as among the top innovative companies in Chicago. Additionally, he support commercial transactions, litigation, real estate, and human resources efforts.
Chris promotes and protects innovation as IP Counsel for the pioneering smart speaker system that fills your home with sound. He leads a team responsible for U.S. patent development and building the industry's most valuable patent portfolio. He is also an Intellectual Property attorney focused on patent litigation involving software, electrical, and networking technologies. Chris develops high-tech patent portfolios for clients including Fortune 100 companies, start-ups, and universities.
Bob is a Vice President in the Intellectual Property practice at Charles River Associates, where he helps clients develop and implement strategies to realize value from their IP. He has assisted companies in forming IP management and licensing organizations to better manage and leverage their IP assets. He has reviewed large patent portfolios as part of IP inventory and strategic patent audits to help align client IP portfolios to their business strategy, to identify licensing and other monetization opportunities, and in the context of valuing large patent portfolios. Bob is active in the Licensing Executives Society, has been named as one of the world’s leading IP strategists since 2012 by IAM Magazine, and teaches IP Valuation to mid-career STEM professionals at Northwestern University Law School.
Stephen Sheldon is Senior Division Counsel, IP for Molex, LLC, a Koch Industries company, and helps manages the worldwide IP portfolio for Molex. Steve has been with Molex since 2008 and spends a large portion of his time in three areas 1) evaluating IP of potential acquisitions, 2) helping Molex protect its organic innovation process and 3) monetizing Molex’s IP through licensing. Prior to Molex, Steve worked at Banner & Witcoff from 2003 until starting at Molex and he worked in the automotive industry as an engineer prior to law school. Steve has a BSME from the University of Michigan (1994) and a JD from The John Marshall Law School in Chicago (2003). Steve is admitted to the Illinois bar and is registered to practice before the USPTO.
MATTHEW KELLY serves as Managing Director and Associate General Counsel at CME Group Inc. Mr. Kelly is responsible for developing and managing CME Group's intellectual property programs covering patents, trademark, copyrights, and trade secrets. He also manages strategic licensing, including product license agreements, out licensing of CME Group software and market data, intellectual property acquisitions and partnerships, and manages a variety of intellectual property litigation and enforcement matters. Before joining CME Group in 2001, Mr. Kelly specialized in patent law at Brinks Hofer Gilson & Lione in Chicago and Morgan & Finnegan in Washington, D.C. and managed the design and development of space-based computers at IBM. Mr. Kelly holds a bachelor's degree in electrical engineering from Michigan State University, a Master of Business Administration from Virginia Polytechnic Institute and State University and a J.D. focusing on intellectual property from the George Mason University School of Law. Mr. Kelly is a member of the Illinois Bar and is the licensed to practice before the USPTO.
Andre Frieden manages the global IP group at Wipro, a publicly traded multinational information technology company with over $7.5 billion in annual revenue, including providing strategic guidance in connection with the company’s patent and trademark portfolios, developing and enhancing the company’s global and regional IP licensing programs, and managing outside counsel relationships. Andre advises C-level executives on IP-focused growth and risk management strategies, both globally and regionally.
Larry Huston is Senior Counsel with Procter & Gamble, the largest consumer package goods company in the world. During his 27 years with Procter & Gamble Larry has successfully advised business clients on a wide range of intellectual property matters including patents from procurement to enforcement, trade secret, copyright, licensing and trade dress/trademark matters. Larry has worked for both current businesses and upstream engineering. Larry received his BS degree in Mechanical Engineering, his MS degree in Mechanical Engineering and his Juris Doctorate from the University of Toledo.