The IP Landscape Has Changed: But Has Your Strategy?
The IP environment has been turned upside-down over the last 24 months:
ALICE v CLS cast uncertainty on the very nature of what's patentable
Octane & Highmark decisions loosened up fee shifting standards
Post issuance proceedings can create risky outcomes
USPTO's 2nd round of AIA changes proposed in August...
How Does All This Impact Your Portfolio Strategy?
Come join thought leaders for a full day of learning, benchmarking and networking on the issues facing every in-house counsel.
KEY TOPICS DISCUSSED
The 3 Pillars of IP Strategy: Patent Prosecution, Portfolio Management & Due Diligence
When To Trade Secret & Manage The Process
A Balanced Enforcement Strategy For Operating Companies
Adapting Your Defensive Litigation Strategy
Benchmarking Post Issuance Proceedings: Plaintiff and Defensive Perspectives
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
Karen oversees the development and tracking of Harvard’s patent portfolio. Working closely with other Directors in the Office of Technology Development, Karen advises on OTD-wide productivity as well as patent strategies to maximize value of IP to facilitate commercialization efforts. She has the honor of directing a team of skilled attorneys and paralegals who secure Harvard’s patent rights and fulfill Harvard’s patent related obligations. Prior to joining Harvard, Karen served as Division IP Counsel at Thermo Fisher Scientific, supporting its laboratory products and consumables divisions. Previous to that, she worked in the Intellectual Property Department of Boston law firms K&L Gates LLP and Testa, Hurwitz & Thibeault, LLP. Karen holds a JD from Boston University and a BS in Cell and Molecular Biology from the University of Michigan.
Sapna Mehtani is a senior patent counsel at a large life sciences company, EMD Millipore Corporation. Prior to joining EMD Millipore Corporation, she worked at various Boston area law firms and has represented both industry and academic clients on various intellectual property matters including patent prosecution and opinions. At EMD Millipore Corporation, she works closely with both business and R&D functions on various intellectual property matters, such as developing and implementing IP strategies for various franchises, building and leveraging patent portfolios, trade secret protection guidance, IP licensing and collaboration agreements, product development and product launch related activities, competitive analysis, IP due diligence and patent litigation.
Shaun P. Montana is Senior Counsel for Intellectual Property at OSRAM SYLVANIA Inc., part of OSRAM Americas, a group of OSRAM companies located in North and South America. OSRAM Americas is part of OSRAM GmbH, one of the two largest lighting manufacturers in the world.
Shaun’s primary focus has been to help grow and protect OSRAM SYLVANIA’s intellectual property portfolio and its product portfolio as the lighting business continues to transition from conventional to digital technologies. Shaun provides legal advice, with a dollop of humor, to enable business from idea conception through product development to sales and beyond, covering all types of intellectual property-related legal matters, and works particularly with business units in the growth areas of semiconductor-based lighting devices, software-based lighting controls, and lighting electronics.
Prior to working at OSRAM SYLVANIA, Shaun practiced at three well-known IP law firms in the Boston area, ranging from very small to mid-sized to very large.
Shaun holds in BS in Electrical Engineering (magna cum laude) from Union College, and a JD from Boston University, where he served as Executive Editor of the Journal of Science and Technology Law (2001-02). Shaun is a registered U.S. patent attorney and is a named inventor on three U.S. patents.
When not contemplating which is the perfect Monty Python quote to apply to today’s crisis at the office, Shaun enjoys spending time with his wife and two children, learning something new in history, science, and technology, and staying on top of the latest developments in baseball statistical analysis.
Mr. Jackman is a director in the Biotechnology/Chemical Group. His practice includes counseling clients in areas such as global patent portfolio procurement, management and enforcement strategies, FDA/ANDA practice, technology transfer, invalidity, noninfringement, freedom-to-operate and patentability opinions and due diligence investigations. He has significant experience in representing clients in patent reexaminations and inter partes review proceedings and has written and prosecuted patent applications domestically and internationally in areas such as immunology, genomics, molecular and cell biology, recombinant DNA technology, transgenics, bioprocessing, advanced biofuels, bio-based chemicals and enzymes, microbiology, therapeutic methods and food science.
Mark H. Williams serves as Corporate Counsel for Sensata Technologies, Inc., a world leader and early innovator in mission-critical sensors and controls. On average, Sensata manufactures over 17,000 different products and ships over 1.3 billion units a year under the Sensata brand and more than 12 other familiar brand names. Mark provides IP support, oversees patent prosecution and manages the global IP Portfolio for Sensata. Mark graduated from Millsaps College with a B.S. in Chemistry and obtained his J.D. from Roger Williams University School of Law.
James is the Chief Patent Counsel for the Americas Region of Schneider Electric, a French multinational corporation specializing in energy management services and products. James provides patent support for the technology research and product development functions, overseeing all patent prosecution, clearance and portfolio development activities and associated personnel for the Business Units operating in the Americas. Prior to joining Schneider Electric, James worked at several intellectual property boutique law firms in the Boston area where he counseled clients with respect to the development and management of patent portfolios, and represented clients in both patent infringement and trade secret misappropriation litigations.
James graduated from the Johns Hopkins University with a double major in Mathematical Sciences and Psychology, and holds an M.S. in Electrical Engineering from Columbia University, and a J.D. from Boston University School of Law.
Paul Popeo serves as co-leader of the Trade Secret Group at Choate Hall & Stewart LLP, where he represents companies in all aspects of trade secret protection and litigation- from plaintiffs seeking to protect proprietary information to defendants accused of misappropriation – across a broad range of industries and technologies. Mr. Popeo is a partner in the firm’s IP litigation group, where he has more than 20 years of experience representing pharmaceutical, biotechnology, computer software and hardware manufacturers in patent litigation and other disputes. He has formerly served as a Special Assistant Attorney General for the Commonwealth of Massachusetts and as a Special Assistant District Attorney for Suffolk County. Mr. Popeo received his JD, cum laude from Boston College Law School in 1994 and his AB from Bowdoin College in 1990
Krish Gupta is Senior Vice President and Deputy General Counsel for EMC Corporation. With revenues of $24.7 billion in 2015 and approximately 70,000 people worldwide, EMC is a global leader in enabling businesses and service providers to transform their operations and deliver IT as a service. Fundamental to this transformation is cloud computing. Through innovative products and services, EMC accelerates the journey to cloud computing, helping IT departments to store, manage, protect and analyze their most valuable asset—information—in a more agile, trusted and cost-efficient way.
Krish has worldwide responsibility for IP law and policy, technology licensing, patents, trademarks and copyrights, open source and standards, IP litigation, OEM and channel agreements, export and trade compliance and IP support for M&A activities. In this role, he also helped lead EMC’s legal department to win the National Law Journal Award for Boston's Best Legal Department in 2013.
Krish is a member of the board of directors of the Intellectual Property Owners Association, a trade association for owners of patents, trademarks, copyrights and trade secrets, and the Northeast Chapter of the Association of Corporate Counsel, a global legal association that promotes the common professional and business interests of in-house counsel who work for corporations, associations and other private-sector organizations. Krish is frequently asked to speak at legal events and forums throughout the U.S. In addition, he has also testified before congressional committees on patent reform legislation three times within the past 2 years.
Krish holds an MS degree in Electrical Engineering from Clemson University and a JD from Suffolk University Law School.
Michael LoCascio is the Global Senior Manager of Intellectual Property Strategy for BASF’s $8 Billion/year Catalyst Division where he is responsible for implementing and overseeing IP management processes, developing patent strategies, and executing licenses and enforcement actions. Prior to his current position, he led the effort to develop the market entry and M&A strategy enabling BASF to expand into the medical device sector. Prior to joining BASF, Mr. LoCascio was a Senior Analyst at Lux Research, a technology advisory and market research firm focused on emerging technology sectors, where he started and led teams investigating Solar technology, Green Buildings, Water Technology, and the Smart Grid. Mr. LoCascio was also the founder and CTO of a nanotechnology start-up that developed and commercializing applications of quantum dots for life sciences, solid state lighting and displays, and solar energy conversion and was an engineer at Lockheed Martin conducting research related next generation naval nuclear reactors. Mr. LoCascio holds a Bachelors of Engineering in Applied Physics and Master’s Degree in Electrical Engineering from Stevens Institute of Technology.
Randall Morin is vice president and head of intellectual property at Rana Therapeutics. Rana Therapeutics is pioneering the discovery of a newclass of medicines that target RNA to selectively activate protein expression, thereby enabling the body to produce desirable proteins to treat or prevent disease. RaNA’s novel therapeutics work by precisely activating the expression of select genes within the patient’s own cells, increasing the synthesis of therapeutic proteins. The company’s proprietary RNA targeting technology works epigenetically to make it possible, for the first time, to increase the expression of therapeutic proteins with exquisite selectivity.
His experience includes roles as Assistant Chief IP Counsel at Vertex Pharma as well as Leading the IP and Business Development efforts at Shire. Mr. Morin has earned a BA in Biology from Saint Anslem College, an M.S in Bio Engineering from Tufts University, an MBA from Babson College and his JD from Boston University School of Law.
Sarah Chapin Columbia is a partner in the law firm of McDermott Will & Emery LLP and is head of the Intellectual Property Litigation Practice Group. Her practice focuses on intellectual property litigation including patent, trademark, copyright and trade secret matters. She also counsels clients on overall intellectual property strategy and positioning, including litigation avoidance. She also has extensive experience in representing clients in private arbitration proceedings under the rules and procedures of the International Chamber of Commerce, Swiss Chamber of Commerce, World Intellectual Property Organization, American Arbitration Association and other organizations. Sarah has appeared in several state, federal district and appellate courts. She represents clients across several industries including semiconductor, biotechnology, internet, hardware and software, medical device and manufacturing companies.
Denise is dedicated IP Counsel for Velcro Companies, where she has worked for 2 years to develop and implement Velcro IP interests and strategies. She partners with Velcro’s Innovation and Technology Center and the Global Business Units to oversee IP legal matters including patent application preparation and prosecution, litigation, freedom-to-operate opinions, licensing, and trademark, copyright and trade secret matters for the global enterprise. Prior to her position at Velcro, Denise worked for Preti Flaherty, Medtronic Advanced Energy, Blank Rome LLP, and Sherin and Lodgen LLP. Denise earned her JD from Boston University School of Law and is a US Registered Patent Attorney. She is also the holder of two patents, one for electrosurgical cutting devices and mold-in touch fastener systems with wave-shaped wall.
Tom Duston is a hands-on trial lawyer who focuses on patent litigation for some of the world's most sophisticated companies. With nearly thirty years' experience, Mr. Duston has been lead counsel in more than 60 patent infringement matters in U.S. Federal courts. Mr. Duston is praised by clients and adversaries alike for both his creativity and tenacity as a trial attorney. Mr. Duston has represented Amazon.com, Groupon, Abbott Laboratories, CDW, Newegg, T-Mobile, Charter Communications, Express LLC, GE Aviation, TRINOVA (now part of Eaton), Russell Athletic, Raytheon, Home Depot, Classified Ventures, as well as Zappos.com, to name but a few.
Leading Lawyers, a division of the Law Bulletin Publishing Company, has named him a Leading Lawyer in IP Litigation and profiled him in its September 2014 edition of Leading Lawyers Magazine. U.S. News and World Report has repeatedly listed him as among “The Best Lawyers in America” in the practice area of Litigation - Intellectual Property. Thomson Reuters has repeatedly identified him as among the “Top 100” attorneys in Illinois and named him to the Illinois Super Lawyers list. American Lawyer Media (ALM) and Martindale-Hubbell selected him as a "Top Rated Lawyer in Intellectual Property.” The IP Stars Survey (fka the World IP Handbook and Survey) named him an "IP Star.” He has authored a number of articles in the areas of patent and trade secret litigation. He has been awarded a Martindale-Hubbell® AV Peer Review Rating™. Earlier in his career, Mr. Duston was named by the Law Bulletin Publishing Company as one of "Forty Illinois Attorneys Under 40 to Watch,” a list of the State’s most talented and well-regarded lawyers.
Ms. Lydon is Intellectual Property Counsel for Medtronic (previously Covidien). Her responsibilities include managing litigation, supervising outside counsel in the preparation and prosecution of patent applications globally, evaluating potential acquisitions, working with product development teams by advising on right-to-use matters, and ensuring that Medtronic has the right to make, use and sell its products worldwide. Ms. Lydon is also an Adjunct Professor of Patent Litigation at UCONN Law. She holds a J.D. from UCONN Law and a dual B.S. in Mechanical Engineering and Aeronautical Engineering from Rensselaer Polytechnic Institute. Ms. Lydon is registered to practice in the state and federal courts in Connecticut and before the United States Patent and Trademark Office.
Michael E. Attaya is a partner and former managing partner of the firm. His practice is focused on patent litigation, infringement and validity investigations and opinions, product clearance and freedom to operate investigations and opinions, reexamination proceedings, patent prosecution and client counseling. He represents clients who are enforcing patents and those defending against improper enforcement in both federal district court and the International Trade Commission (ITC).
John T. Gutkoski has a national trial practice with a track record of successfully representing clients as lead trial counsel in patent and intellectual property matters spanning life sciences and high technology industries. His cases have involved pharmaceuticals, banking and finance, radiotherapeutics, nanotechnology, medical devices, synthetic latex, optics, collagen production, intravenous pumps, semiconductors, analog and digital circuitry, smart phones, telecommunications, network architecture, imaging, sound waves, software, and electronic data.John has been repeatedly named one of the World's Leading Patent Practitioners for Patent Litigation by IAM Patent 1000. He previously served as the department chairman of the Intellectual Property practice in Boston for an international AM Law 100 firm.
With clients from Shanghai to Toronto to California, Tim Shannon maintains a national intellectual property litigation practice in a variety of high-tech fields, with a particular focus on patents and patent “troll” litigation. Tim’s practice involves extensive work in the software, electronics, lighting, computer chip manufacturing, and medical device fields. His complaint-to-trial experience includes Markman hearings in courts across the country, from Massachusetts to Texas. Recent highlights include:
-Representation of a Shanghai-based computer chip manufacturer, through Markman and settlement, in a patent troll case in E.D. Tex.
-Representation of a North Carolina-based Integrated Development Environment software manufacturer in a patent troll case in E.D. Tex.
-Representation of a Toronto-based life sciences company specializing in plant-based manufacturing/gene expression of human monoclonal antibodies.
-Representation of a national LED lighting company in extensive patent licensing negotiations and pre-suit investigation against a 200-patent portfolio.
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.
Lana Gladstein is a partner at Nutter McClennen & Fish in Boston. Lana has 15 years of experience in intellectual property law, handling all phases of complex litigation, including appeals, in a range of technical specialties including pharmaceuticals, biotechnology, medical devices, and software. She represents clients in patent infringement, licensing, and contract disputes, appeals to the Court of Appeals for the Federal Circuit, and in patent interferences and contested proceedings before the US PTO.
Elias Schilowitz is a Senior IP Counsel at Philips where he focuses on patent licensing and litigation. He has over 10 years of experience as outside and in-house counsel in patent litigation, licensing, and portfolio development. Of particular relevance to this conference, Elias has extensive experience in post-issuance proceedings, including all aspects of Inter Partes Review. Prior to working at Philips, Elias worked at Proskauer Rose LLP, where he was responsible for all aspects of IP litigation and appeals, as well as licensing and transactional work. Elias received his J.D. from Boston University School of Law in 2005, and B.S. in Materials Science & Engineering from Cornell University in 2002. He has been named a Super Lawyers New York Rising Star every year since 2012 for his work in IP and IP litigation.
Shawn McClintic joined the Executive staff of GE Transportation to become the Executive Counsel for Intellectual Property in 2009. Today, as GE launches its Digital initiative, and at least in part because Shawn led the cybersecurity and electronic data loss prevention programs for his business, he has been deeply involved in developing and guiding the formation of GE Transportation’s Digital Solutions group. In addition, the role has allowed him to compliment IP portfolio management with business development and transactional opportunities. Shawn played a key role in facilitating GE Transportation’s divestiture of $1BB of assets to Alstom Transport (a surviving entity), which was a necessary component of GE’s $14BB acquisition of Alstom’s Power business in 2015. His IP related transactional work supports GE Transportation’s IP monetization program, which is responsible for more than $25MM in direct value creation each year. Shawn had moved to GE Transportation from GE Global Research in Upstate New York. As senior IP counsel at GE Global Research, he became the liaison between GE’s R&D hub and the GE Licensing group (now called GE Ventures and Licensing), managed the IP aspects of the multi-billion dollar divestitures of GE Advanced Materials and GE Plastics, structured and negotiated GE’s first equity swap-for-services relationship, and built strategic patent portfolios for multiple GE business units (including GE Transportation). Prior to his move in-house, he had spent several years working at the general practice law firm of Jones Day, and at the IP boutique firms of Rankin Hill and Renner Otto, all in Cleveland, Ohio. Before law school and the patent bar, Shawn spent several years at Advanced Polymer Sciences managing their lab and working with thermoset coatings and composites. Shawn started his career as a chemist with State Chemical Manufacturing Company after finishing a tour of duty as a Staff Sergeant in the US Army’s Chemical Corp.
Shawn A. McClintic received his Bachelor of Science degree from Cleveland State University in 1996, his Juris Doctor degree, with honors, from the same University in 2002, and his Associate of Applied Science in Chemical Technology degree from the University of Toledo in 1991. He was admitted to practice before the U.S. Patent and Trademark Office in 2000, became a member of the Ohio Bar in 2002, and was admitted to the U.S. District Court for the Northern District of Ohio.