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
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.
Approved for 5 hrs. of Illinois State CLE
KEY TOPICS DISCUSSED
The 3 Pillars of IP Strategy: Patent Prosecution, Portfolio Management & Due Diligence
To Patent or To Trade Secret: When Do Trade Secrets Make Sense?
The Right Enforcement Strategy For Operating Companies
Benchmarking Post Issuance Proceedings Post AIA & ALICE
Maintaining and Enhancing Your Defensive Strategy
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
Ada Nielsen is Chief Executive Officer of a new company, FOODEXUS LLC, created to invent & commercialize technology improvements & breakthroughs in industrial & commercial cooling systems. Previously she served as Director of IP Asset Strategy and Management at BP America where she held responsibilities for developing intellectual asset strategies that identify IP, know-how, and trade secrets that maximize value for the company. Other honors include being elected President of the Licensing Executives Society (USA and Canada) Inc. in 2010, being named by IAM Magazine as one of “300 Top IAM Strategists,” and being named a Distinguished Licensing Distinguished Fellows in Chemicals, Energy, Environment & Materials by the Licensing Executives Society International. She holds an MBA from the University of Chicago Booth School of Business.
George became Managing Counsel of Intellectual Property for BP’s Downstream Business in 2013. Activities include managing a team of attorneys and solicitors to protect the intellectual property assets for BP’s Fuels, Lubricants, Petrochemical businesses as well as the research teams supporting the across downstream businesses.
Prior to joining BP, George was the Head IP Counsel at SunPower Corporation in San Jose, a manufacturer and installer of photovoltaic solar panels, and before SunPower, he was the division counsel for 3M Innovative Properties Company Optical Systems Division as well as the Office Supply and Stationery Products Division. He started his career as an intellectual property attorney as an associate at Kinney & Lange in Minneapolis, MN where he focused primarily on patent prosecution.
George received his law degree from the University of Wisconsin in 1998 and obtained an undergraduate degree in Mechanical Engineering from Marquette University in 1993.
Martin’s practice involves counseling clients from small startups to Fortune 500 based corporations on a number of intellectual property matters, with an emphasis on patent preparation, patent prosecution, and opinion related work. Martin has prepared and prosecuted numerous patent applications on a variety of technologies including electronics, computers, software, business methods and electro-mechanical related arts. He regularly works with inventors in various brainstorm sessions in an effort to develop patentable concepts in key technical areas and participates in patent committee meetings for clients who may not have in-house patent counsel. Martin has prosecuted various electronic and software patents that have enabled clients to generate revenue by means of licensing and intellectual property transfer.
Beyond drafting and prosecuting patents, Martin prepares clearance, validity, and infringement opinions. He routinely investigates pre-litigation infringement disputes for matters involving intellectual property held by third parties in the U.S. and has assisted clients in developing work around solutions with respect to problematic patents.
Martin brings over a decade of engineering experience to his law practice and has been involved in the initial design and successful launch of a number of electrical/electronic components during his engineering tenure. In addition, to having design experience with various electrical/electronic components, Martin has gained a significant amount of manufacturing experience.
This combination of Martin’s engineering and legal experience allows Martin to effectively counsel clients in intellectual property matters. Martin is able to distill the various nuances of intellectual property law to clients in a language that is easily and quickly comprehensible.
Josh is an intellectual property lawyer with MBHB. He has almost two decades of experience in patent, trade secret, trademark, copyright, and other commercial litigation. He focuses primarily on the pharmaceutical, biotechnology, and medical device fields.
In addition to his client responsibilities, Josh has published articles and presented webinars on various patent and trade secret issues, including inequitable conduct, trade secret legislation, and trade secret issues in China. He has also held leadership positions within MBHB, including chairing the firm's ethics committee.
Josh has a J.D. from the University of Virginia School of Law and a B.S. in Biochemistry and a B.A. in Government & Politics from the University of Maryland. He and his wife reside in Chicago, Illinois with their two daughters.
Grantland G. Drutchas, a founder and former managing partner of McDonnell Boehnen Hulbert & Berghoff LLP, has more than 20 years of experience in the practice of intellectual property law, with a particular emphasis on litigation, licensing, and client counseling.
He is an adjunct professor at Chicago-Kent Law School and is active in the Intellectual Property Owners Association (IPO) as the Vice Chair of the Pharmaceutical & Biotechnology Issues Committee and the former Vice Chair of the Licensing Committee.
Mr. Drutchas is a frequent lecturer on § 101 issues in both the high technology and life sciences context, and helped spearhead joint committees for the IPO to provide comments to the PTO regarding examiner guidelines for § 101.
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.
Hongming Liu is a Patent counsel at Here. http://company.here.com.
He formerly worked at Nokia Technologies, a business group of Nokia Corporation, which also includes HERE and Nokia Networks. At Nokia Technologies, Hongming’s primary function is patent portfolio management and invention harvesting. Prior to joining the team at Nokia Technologies, Hongming worked as a software developer and software architect. Hongming has taught graduate and undergraduate computer science and software engineering courses at DePaul University. Hongming received his juris doctorate and doctorate in Computer Science from DePaul University, and his undergraduate degree from University of Science and Technology of China.
James Shimota concentrates his practice on all aspects of post-issuance patent practice. He has extensive experience before judges and juries in federal courts across the country as well as the United States International Trade Commission and arbitration panels. Representative technologies with which Jim has worked include financial services products, multiple aspects of cellular and smartphone technology, semiconductor manufacturing, fiber optic amplifiers, DNA arrays, HIV drugs, alkaline batteries, wireless networking products, power supplies, cleaning systems for portable shavers, memory image sensors, portable music players, and automated tissue staining instruments.
Jim also counsels clients on building patent portfolios inorganically through strategic acquisitions. Jim provides advice to technology companies in industries such as consumer electronics, electronic commerce and pharmaceutical regarding what patent assets do and don’t complement existing organic patent assets and how much those assets are worth. For example, Jim assisted an international client in completing a multi-billion dollar patent portfolio acquisition involving thousands of patents.
Jim further focuses on advising venture capitalists and startups on patent strategy.
Jim was selected for inclusion in Illinois Super Lawyers − Rising Stars Edition, Thomson Reuters, 2013-2014.
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.
Michael Marchant is responsible for leading and managing all legal matters for the company, ranging from Board of Director and corporate secretary matters, venture capital and shareholder matters, litigation, customer contracts and licensing, intellectual property, compliance and other corporate related legal issues. Michael has close to 20 years of legal experience working with start-up companies through to their maturity including advising on licensing, contract negotiations, drafting technology agreements, joint ventures, mergers and acquisitions, and leading global legal and intellectual property efforts. Michael joined IBM Cloud Object Storage (formerly Cleversafe) in November 2013 from Accenture, where he was Director of Legal Services and was responsible for legal matters for Accenture’s global Analytics and Big Data practice. During his tenure at Accenture, Michael was responsible for intellectual property matters in mergers and acquisitions and joint ventures transactions as well as having managed legal operations for the company’s global brand portfolio valued at more than $7.5 Billion with trademarks in more than 150 countries. He also completed multiple multi-million dollar deals in the U.S., Asia and Europe. Prior to Accenture, Michael was Legal Counsel- Head of Services & Solutions Europe for Dell, UK, at the time one of the fastest growing multi-billion dollar business segments at Dell.
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.
Mr. Forbis is a first chair trial attorney who excels at developing deep understandings of complex patented technologies and unraveling them to make concise, understandable and persuasive presentations to courts and juries. In over 20 years of practice, Mr. Forbis has appeared in over 150 patent and/or trademark infringement cases in most major Federal Court jurisdictions across the country. Mr. Forbis has represented his clients as lead or co-lead counsel in over 50 district court cases and in 14 Federal Circuit appeals. Mr. Forbis has successfully defended companies such as Ford Motor Company, Delphi Corporation, and Sika Corporation, as well as many middle-market companies in cases involving claims for permanent injunctions and damages of many millions of dollars, including multiple cases having damage claims in excess of $50 million and one in excess of $100 million. On the plaintiff’s side, Mr. Forbis was recently co-lead trial counsel in a patent infringement case concerning a medical device, where the client received settlements in excess of $30 million. Mr. Forbis has litigated a wide range of technologies, including automotive systems, medical devices, computer technology, lasers, and chemical compositions. In addition to patent cases, Mr. Forbis also has litigated more than 25 trademark cases, two of which proceeded through full trial, including several for well-known banks and consumer brands. For example, representing Citizens Bank as lead counsel, Mr. Forbis obtained preliminary and permanent injunctions in multiple cases precluding various defendants from using “Citizens” in connection with banking-related services in Michigan.
Key principles of Mr. Forbis’ approach to litigation include: a clear understanding of the client’s goals for the litigation; an early and complete understanding of the technology and factual details of the case; an early development of a theme and focused strategy for the case; strategic discovery aimed at supporting the case theme; regular and frequent communication with the client; and concise and understandable presentations to the court and jury focused on the case theme.
As a registered patent attorney, Mr. Forbis also represents clients before the United States Patent and Trademark Office in contested matters, such as Post-Grant Reviews and Inter Partes Re-exam Proceedings, as well as in connection with general patent portfolio development and strategic prosecution. He regularly counsels and provides opinions to clients concerning infringement, validity, right to use, patent landscape, design-around issues and due diligence issues in corporate transactions. He is experienced in a variety of electrical and mechanical technologies, including semi-conductors, electronics, control systems, lasers, electronic displays, engine components, several automotive technologies, telecommunications, networking, vehicle reinforcement components and medical devices. Mr. Forbis also has a great deal of experience negotiating and preparing intellectual property licenses and related corporate agreements.
Perving Taleyarkhan is Associate Legal Counsel for Patents at Whirlpool. Her experuence includes IP strategy as well as litigation. Prior to Whirlpool she served as LEgal Associate at Purdue University. She earned her BSChE in Mechanincal Engineering from Purdue university and her J.D. from Indiana University Robert H. McKinney, School of Law.
Leon Steinberg is Managing Director, North America at the Dennemeyer group. His area of expertise focuses on management, business development, strategy, marketing, patent analytics. He's been active in intellectual property since 2001. He earned his JD from William Mitchell College of Law.
Jason focuses his practice on patent litigation and prosecution in the chemical, medical and mechanical arts. He has experience in domestic and international patent prosecution and patent clearance opinions, and has represented clients through all stages of litigation in the federal district courts and before the Court of Appeals for the Federal Circuit. Jason has handled matters involving a variety of technologies, including interventional medical devices and healthcare products, pharmaceuticals, biosensors, climate control, and automotive systems.
As a veteran of the automotive industry, Jason brings a client-side perspective to his practice. Jason has been involved in all aspects of the technology life cycle – as a manufacturing and materials engineer involved in product development, as an in-house patent engineer involved in IP development and valuation, and as an attorney involved in prosecuting and litigating patents. These experiences give him real-world perspective and appreciation of the issues that matter most to clients, helping him to achieve efficient and effective solutions.
Jason is known for his thorough and detailed understanding of his client’s technologies and business, and his ability to translate this information into successful legal strategies and outcomes.
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.
Thom Kobayashi joined Innography in 2012 as a Senior Sales Engineer, moving from a position as a “power user” of many years to help demonstrate how the tool might be used to uncover actionable information from the IP space.
Prior to joining Innography, Thom had many roles. As a working engineer, he was the inventor on over 40 patents. His interest in the invention space lead him from prosecuting patents in a law firm to eventually managing a >8000 asset portfolio.
Thom has a B. S. in Chemical Engineering from Rice University in Houston, TX and a M. S. in Technology Commercialization from the McCombs School at the University of Texas where he graduated with honors.
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.
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.
Mr. Hohenshell has been a patent attorney for about 30 years. He’s worked at 3M (12 years), American Medical Systems (3 years), and the Patent Office (2 years). For the last 13 years he’s been at Medtronic supporting its Cardiac Surgery, Corporate and Surgical Technologies business units. Mr. Hohenshell has worked internationally in Brussels at 3M’s European Headquarters, and managed IP trials in London, Sydney and Munich. He currently lives in Arden Hills, MN with his wife, three kids and a pet bird that likes to bite him.