The IP Enforcement & Monetization Summit Silicon Valley 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
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.
Joel brings more than 20 years of experience in the medical device industry including 12 years of IP experience developing and managing patent portfolios for emerging medical device companies. Joel has worked for Wilson Sonsini Goodrich & Rosati PC, Townsend and Townsend and Crew LLP and Rita Medical Systems Inc. Joel has also held engineering and management positions at divisions of Guidant, Abbott Laboratories and Johnson and Johnson. Joel is admitted to practice before the United States Patent and Trademark Office. He is a graduate of Santa Clara Law School and a recipient of an Emery Scholarship for Academic Achievement and Witkin and Cali Awards for Academic Excellence (Golden Gate University). In addition to his law degree, Joel holds a B.S. Degree in Chemical Engineering from Northwestern University and an M.S. Degree in Bioengineering from Penn State University.
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.
Linda is Senior Intellectual Property Counsel at Rovi Corporation. She specializes in, patent strategy and portfolio management, patent prosecution and drafting, intellectual property outreach and training, open source software license compliance and review.
S.H. Michael Kim is the Senior Intellectual Property Counsel of Finjan Holdings, Inc. Michael is a member of the Company’s Enforcement Team and assists in licensing and valuating Finjan’s cutting-edge patented cybersecurity technology that originated back in the 1990s. He also oversees Finjan’s patent litigation matters, including U.S. District Court litigation and protecting those patents in inter-partes review (IPR) and reexamination proceedings before the United States Patent & Trademark Office (USPTO). In addition, Michael assists Finjan in acquiring other valuable technologies in the cyber-security related fields.
Steve Baughman is an intellectual property partner in Ropes & Gray’s Washington, D.C. office, where he recently returned after spending three years in Japan to open the firm’s office in Tokyo. For more than 20 years, Steve has worked with leading international companies to resolve their IP and technology-focused commercial disputes in a broad array of litigation, licensing, and counseling settings. These include patent and trade secret disputes—as well as trademark, copyright, and other complex commercial matters—presented in trial and appellate courts, domestic and international arbitration tribunals, and the International Trade Commission. Steve’s patent litigation matters have involved both utility and design patents.
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.
Terence is Associate General Counsel at Cypress Semiconductor where he manages litigation and legal operations. Prior to Cypress, Terence was an associate at Kaye Scholer, Dewey & LeBoeuf, and Latham & Watkins. He also clerked for the Honorable Jeremy Fogel in the United States District Court for the Northern District of California. Terence is 2005 graduate of the University of Virginia and has a Ph.D. in physiology from Georgetown University.
Jonathan brings a Ph.D. in Physics and more than ten years of patent matter experience to the Litigation Group. This director's unique combination of legal and technical expertise includes serving as lead and back-up counsel in contested cases at the U.S. Patent and Trademark Office (USPTO) and appearing as counsel of record in numerous patent cases in the U.S. District Courts and at the International Trade Commission (ITC).
Jonathan’s approach to patent litigation follows Albert Einstein’s words: “If you can’t explain it simply, you don’t understand it well enough.” In each engagement, Jonathan works to understand even the smallest of details to craft compelling stories that inform and persuade both judges and juries.
To his legal practice, Jonathan brings a wealth of academic knowledge in classical and quantum mechanics, electromagnetism, and artificial intelligence. He regularly relies on this background to handle IP matters related to complex technologies including: wireless communications, hand-held devices, computer architecture and software, medical devices, and pharmaceuticals.
Sang is Exective Counsel, IP Litigation at GE. He has previously served as Senior Counsel, Licensing at GE Ventures & Licensing. Sang has also led team of lawyers that supported several business pillars of GE Ventures & Licensing, including patent licensing, IP acquisitions and sales, technology transfer, aviation licensing, global growth operations, and strategic initiatives. Represented GE at meetings with some of the world’s leading technology companies. Efforts resulted in the acceleration of GE technology and substantial revenue to GE.
Sriranga Veeraraghavan is a Vice President, Legal at Xperi (formerly Tessera). Sriranga supports Xperi’s technology licensing and corporate development efforts in addition to managing Tessera’s litigation matters and post-issuance proceedings. Before joining Tessera, Sriranga practiced law at Cooley LLP and Howrey LLP and worked as an engineer at Sun Microsystems and Cisco Systems. He is a named inventor on two U.S. patents, which are based on his work at Sun.
Holly E. Engelmann is a principal in the Dallas and New York offices of McKool Smith whose practice deals with intellectual property, bankruptcy, and complex commercial litigation. Ms. Engelmann was a staff editor on the SMU Law Review and published a casenote in the 2003 Texas Survey. She was inducted in the Monteith Inn of Phi Delta Phi, received the Best Brief award and was a finalist in both the 2002 National Criminal Procedure Moot Court Competition and 2002 Howie Sweeney Competition. In 2003, Ms. Engelmann was inducted into the National Order of the Barristers and received a Best Advocate of the Year award from the Dedman School of Law Board of Advocates. During law school, Ms. Engelmann interned with Justice Craig T. Enoch of the Supreme Court of Texas as well as for Justice David W. Chew of the Eighth Court of Appeals of Texas.
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.
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.
Mr. Shah is the founding Principal of Precision IP, a premier Silicon Valley IP law firm. Mr. Shah has served clients ranging from start-ups to Fortune 100 tech companies including Apple, Dolby, Oracle, Cisco, Netflix, TiVo, Fanvana, Yahoo!, Intuit, Condusiv Technologies, Improvised Electronics, Schlumberger, and Sun Microsystems (prior to Oracle acquisition). Formerly, Mr. Shah served in-house as the Global Head of Intellectual Property development at Aruba Networks (acquired by HP for $3B). At Aruba Networks, Mr. Shah focused on IP strategy and built a patent program recognized by the Wall Street Journal: “...Aruba Networks Inc had the largest increase in [patent] rank, 22 spots to now rank 36th due to an increase in both patents and impact.”
Patrick is a Senior IP Attorney at HGST, a division of Western Digital. Early years at HGST focused on revenue generation from technology and patent licensing, current work focuses on patent development and portfolio management for storage products. Prior to HGST, Patrick ran bet the company patent litigation at Nichia Chemical, wrote technology agreements at National Semiconductor, and drafted patent applications. An electrical engineer and patent attorney, Patrick obtained his Juris Doctor from Hastings College of the Law and holds two bachelor’s degrees, the first in English literature from the University of California, Berkeley. Patrick is a licensed attorney in California, New York, and the District of Columbia.
Paul Huang is CEO/Chairman of CMOS Micro Device Inc. He has over thirty year experience in semiconductor technology and twenty year experience in IC design. He developed the high brightness LED from 1984 to 1986 in China. Since 1996 he participated in numerous CPU chip development at Intel Co and Sun Micro Systems Inc. respectively. In 2000 he found CMOS Micro Device Inc. and invented high density，high speed and low power TCAM design which are now widely used in network switches and routers to perform key searching function. In 2007, he predicted that custom designed high speed ARM CPU would be the key competent component in mobile device. From 1993 to 1996 Paul Huang was a PhD candidate majored in Physics and obtained a Master Degree in Electrical Engineering at University of Southern California.
James Hannah is a patent litigator based in Silicon Valley. He tries cases for high-tech companies across the country.
Clients turn to Mr. Hannah for his ability to take extremely complicated technology and break it down in a simple and understandable manner. For plaintiffs, he has obtained hundreds of millions of dollars from judgments and settlements. For defendants, Mr. Hannah has obtained a variety of wins for his clients. These defensive victories include walk-away dismissals, jury verdicts of non-infringement and global settlements with no payment exchanged.
At trial, Mr. Hannah has received accolades for his court room performance. Clients, judges and opposing counsel have commended Mr. Hannah for delivering “effective” and “flawless” examinations of trial witnesses. As a result, he is often called upon to cross-examine industry-leading, seasoned expert witnesses in high-stakes litigations.
Kim R. Jessum is Chief IP Counsel U.S. and Associate General Counsel at Heraeus Incorporated in Langhorne, PA and Secretary of Heraeus Materials Technology North America LLC in Chandler, AZ. Heraeus is a Fortune Global 500 company specializing in precious metals, materials and technologies; sensors; biomaterials and medical products; as well as quartz glass and specialty light sources. Kim is responsible for providing intellectual property and general legal advice for various business units in the United States and worldwide. Kim received her bachelors degree in chemical engineering and applied science from Lehigh University in 1992 and her masters degree in biopharmaceuticals from the University of Pennsylvania in 2004. She was awarded her law degree and Certificate in Intellectual Property Law from Chicago-Kent College of Law, Illinois Institute of Technology in 1997. She is admitted to practice in Pennsylvania, New Jersey, and Illinois and before the U.S. Patent and Trademark Office. She holds various leadership positions in the American Bar Association, including the Financial Officer for the Intellectual Property Law Section and serves as a board member and co-chair of the IP Committee of the Greater Philadelphia Association of Corporate Counsel.
Greg is the Chair of Merchant & Gould's Electrical & Software Group and Co-Chair of the Licensing Group. His practice is focused on counseling clients in acquiring, protecting and leveraging their investment in innovation. Greg has prosecuted patents and negotiated agreements relating to a variety of technologies, including software, internet telephony, telecommunications, mechanical and sports inventions, and financial services systems. Greg is also experienced in patent, trademark, and trade secret litigation, patent and trademark prosecution, validity and infringement opinions, and due diligence.
Prior to joining Merchant & Gould, Greg spent six years as General Counsel, first for an internet teleconferencing company and then for an enterprise software firm. In addition to drafting and prosecuting patent applications, Greg counseled both firms on how to protect and leverage their technologies by negotiating license, maintenance, collaboration, consulting, outsourcing, and other agreements. His in-house experience helps him understand his clients' motivations and pressures and how he can best provide what they need in a timely and cost-efficient manner.
Tom Anderton joined Zonare Medical Systems in 2013 and oversees the legal and compliance functions at Zonare. Prior to joining Zonare, he was Vice President, Legal Affairs at Presidio Pharmaceuticals. A patent attorney by training, Tom has been either the head lawyer or Chief Patent Counsel at Monogram Biosciences, Genencor, and SUGEN, where he has created many of the world’s most highly rated IP portfolios. Before working in Life Sciences, Tom was focused on appellate, constitutional and First Amendment law and was responsible for co-writing trial briefs in the ISKCON v. City of Los Angeles (Hare Krishna/LAX) First Amendment case(s). Tom earned a J.D. from the Vermont Law School, a B.S. in molecular biology from UCSD and an M.S. in Molecular Genetics and Cancer Biology from Stanford University.
Jason Novak is a partner in the firm’s San Francisco office, where he focuses his practice on IP transactions, diligence, procurement and portfolio management for clients in the biotech (with emphasis in life sciences tooling), analytical instrumentation, software (with emphasis in bioinformatics), chemical, mechanical, medical device, food and electrochemical industries. Between firm and in-house roles, Mr. Novak has extensive experience in IP strategy and patent portfolio management, preparation and prosecution, oppositions, counseling of various legal and non-legal company functions, licensing and technology transactions, building out-licensing programs, freedom-to-operate clearances, various types of due diligence, IP training of non-legal personnel, risk recognition & management, and dispute resolution.
Greg is an attorney and a business executive leading the management and utilization of the Kudeslki Group’s patent portfolio. The Kudelski Group is a global leader in providing video distribution technology and services. Greg leads a global team of professionals to set and meet IP business objectives. Before joining Kudelski, Greg was part of the Gray Cary and DLA Piper law firms where he litigated patents and complex commercial issues.