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 & networking on the issues facing in-house counsel.
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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
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.
Areas of Practice: Patent, Trademark, and Copyright; Intellectual Property Litigation; International Patent Prosecution; IP Licensing and Contracts; Patentability, Infringement, Validity, and Freedom to Practice Opinions
1997: Registered to Practice Before the U.S. Patent and Trademark Office
1999: U.S. District Court, Northern District of Texas
2010: U.S. Court of Appeals, 5th Circuit
2011: U.S. Court of Appeals, Federal Circuit
Duke University, BSE, Mechanical Engineering and Materials Science, cum laude, 1992
The University of Texas School of Law, J.D., 1995
American Intellectual Property Law Association
Dallas Bar Association
Dallas Fort-Worth Intellectual Property Law Association
Texas Bar Association
Thomas currently holds the position of Senior IP Counsel at Baker Hughes Inc. In this role, Thomas, a registered Patent Attorney, is responsible for the identification and protection of proprietary technologies and services developed and commercialized by Baker Hughes’s Artificial Lift and Intelligent Well Systems product lines. In his role, he handles patents, trademarks, and trade secrets related to the Artificial Lift and Intelligent Well Systems technologies, as well as contracts and litigation related to those technologies. Before becoming an attorney, Thomas worked as an engineer in the petrochemical field. He worked with Union Carbide’s Unipol™ Polyethylene and Unipol Polypropylene technologies during his career at Union Carbide. He also managed the Unipol Licensing Training Organization before attending law school in 1999. Thomas has a Bachelor of Science in Mechanical Engineering from Texas Tech University, and practiced as a Chemical and Mechanical Engineer in his career with Union Carbide. Thomas has a Juris Doctor degree from the University of Houston Law Center.
As IP counsel for IBM's Patent Portfolio Management Department, Tim is responsible for a team of senior attorneys who manage and develop IBM's worldwide patent holdings including over 55,000 patents worldwide. In this role Tim provides counsel on a wide variety of legal issues pertinent to the licensing, sales, acquisition and leveraging of IBM patents. Tim's department provides a critical connection between IBM's world renowned patent licensing organization and its robust inventor community and is integrally responsible for IBM's 21 consecutive years of US patent leadership.
Prior to assuming this role Tim held a number of key positions in IBM's IP department including serving as a founding member of IBM's IP strategy and policy department, and as a staff attorney for IBM's corporate patent licensing function. Tim has extensive experience in all aspects of corporate IP practice including patent prosecution, drafting and negotiating patent and technology license agreements, developing and executing patent assignments, formulating and advising clients on new IP monetization business models, as well as general IP related advices and counsel.
Before joining IBM, Mr. Farrell was in private practice in Salt Lake City, UT, holding positions at Workman, Nydegger as well as Snow, Christensen & Martineau.
Mr. Farrell holds a BS degree in Electrical and Computer Engineering from Brigham Young University (BYU), and MBA from the Mariott School of Management at BYU, and a JD from the J. Reuben Clark Law School at BYU. He is admitted to practice in California, Colorado, Utah and before the United States Patent and Trademark Office.
Benjamin T. Horton manages complex litigation involving high tech patents. He has a degree in electrical engineering, and before law school he worked for technology companies in the automotive and semiconductor industries. He is a member of the Trial Bar for the Northern District of Illinois and litigates intellectual property cases in federal courts across the country. Mr. Horton also practices before the Patent Trial and Appeals Board, representing both petitioners and patent owners in inter partes review (IPR) and covered business method review (CBM) proceedings.
Mr. Horton speaks regularly on patent litigation and strategy and he is a frequent contributor to various IP publications. SuperLawyers, a Chicago Magazine publication, selected Mr. Horton for the 2012-2016 Illinois Rising Stars® lists, which feature top attorneys in intellectual property law. Mr. Horton has been selected as one of the"World’s Leading Patent Practitioners" in 2016 by IntellectualAsset Management (IAM) magazine. He was also selected as a 2015 and 2016 "Emerging Lawyer" in Emerging Lawyers Magazine as a top Illinois attorney under 40, and was profiled in the November 2016 issue. Mr. Horton has also been recognized by intellectual property publications such as InsideCounsel, Thomson Reuters, Intellectual Property Magazine, Law360, and IPPro.
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.
Phillip manages all intellectual property matters, with a focus on overseeing patent litigation, reviewing possible incidents of infringement, managing patent prosecution, and administering licensing issues. Additionally he provides guidance to company leadership in the form of legal opinions on Patentability, Validity of Competitor Patents, Freedom to Operate, Infringement, and Design-Around Strategies. Phillip leads employee education sessions and develops best practices, with the goal of creating and preserving the company's legal rights with respect to all intellectual property. He also drafts and reviews contracts, including agreements associated with business deals, licensing, non-disclosure, joint development and collaboration, master services, and the employment of technical personnel.
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.
Mr. Levitt’s 30 years of legal experience centers in the corporate sector where he has been at the forefront of intellectual property changes. As Chief Intellectual Property Counsel at Dow Corning Corporation, Mr. Levitt led a global team of more than 25 employees to advance and protect Dow Corning’s diverse technologies and markets.
Previously, Mr. Levitt served as corporate counsel at DuPont and General Counsel of Solae, LLC, a joint venture by DuPont and Bunge.
Milan Patel has over 16 years of experience with patent portfolio development and management, client counseling, licensing, IP strategy and patent acquisition covering various complex technologies, including Wireless, Audio/Video, Internet and Networking technologies. He was a major contributor in the development of Apple’s Wireless patent portfolio, Qualcomm’s OFDMA patent portfolio, Nokia’s CDMA patent portfolio and TV/Com’s MPEG-2 patent portfolio. He has extensive experience in connection with managing and counseling business and engineering clients, patent mining, drafting and presenting claim charts, evaluating and mapping technology, and finding gaps in IPR coverage. He also has experience in substantial patent preparation and prosecution, managing inside and outside counsels and third party portfolio analysis for licensing, acquisitions, assertions, and litigation.
Jonathan Thomas, who holds a BS from The College of William & Mary, and a JD and LLM from The John Marshall Law School, is Senior IP Counsel for the Downstream Technology Solutions business within GE Oil & Gas. He previously was an IP Associate at McGuireWoods, LLP and Blakely Sokoloff Taylor & Zafman, LLP, and served as a JAG officer in the United States Army.
Duncan L. Williams is a registered patent attorney and has more than 12 years of experience in obtaining and protecting intellectual property rights, including patent, trademark, trade secrets and copyrights. His areas of expertise include electrical/computer technology, software, telecommunications and wireless devices.
He is currently Corporate Counsel-IP at iHeartMedia where he manages all aspects of the company’s intellectual property. Prior to this role, Duncan was an associate at several large law firms in Washington, D.C., where he gained experience in intellectual property litigation, prosecution and portfolio management.
Duncan holds a B.S. in Physics (with a minor in mathematics) from the University of Florida, a M.S. in Computer Science from Johns Hopkins University, and a J.D. from George Washington University Law School.
Prior to becoming an attorney, Duncan was an officer in the U.S. Navy serving as a Nuclear Propulsion Plant Watch Officer onboard an aircraft carrier as well as an instructor of Thermodynamics at the U.S. Naval Academy.
Charles (Chad) F. Wieland III focuses his practice on Intellectual Property (IP) matters. He advises clients ranging from startups to Fortune 100 companies, both domestic and international. With over 27 years of experience, he finds cost effective ways to acquire or capture and exploit worldwide IP rights of clients, while avoiding or mitigating the hazards posed by the IP rights of others. Chad has advised clients on how to best capture the value of their innovations, prepared and prosecuted utility and design patent applications on a cost effective basis, prosecuted reissue and re-examination applications, as well as inter partes and covered business method review proceedings. He has experience in exploiting IP rights through licensing, assignment and when necessary, litigation. He helps clients steer clear of interference from the IP rights of others with design-around recommendations, validity, infringement and clearance/freedom-to-operate studies, both formal and informal. He negotiates and drafts software licenses and other technology transfer agreements.
Collin's practice includes providing full-service intellectual property legal advice. Collin advises clients on all aspects of intellectual property transactions on a world-wide basis. Collin assists clients develop and manage international intellectual property portfolios. Collin also advises in adversarial legal proceedings and provides legal opinions regarding potential exposure to third party patents. Collin also assists clients in post grant challenges before the United States Patent and Trademark Office. Collin has extensive patent experience in the energy, manufacturing, and medical device/treatment industries.
Collin is proud to be a native Houstonian and believes in giving back to the community. Collin has spent time volunteering on the steering committee for the Small Steps Clays Classic, which benefits Small Steps Nurturing Center, a non-profit organization that provides early childhood education and support to at-risk children in Houston, Texas. Collin also volunteers as a board member of Autumn's Dawn, which provides transitional services for young adults with Autism Spectrum Disorder.
Safoco, Inc. v. Cameron Int’l Corp., 2009 WL 2424108 (S.D. Tex. July 31, 2009) (order granting summary judgment of no willful infringement in favor of Defendant in patent case over actuators used with wellhead equipment).
Robb Edmonds is a founding member of the firm. His practice is exclusive to intellectual property law, concentrating on prosecution, litigation, portfolio management, and licensing matters. His practice combines his prior engineering experience in oil & gas, hydrocarbons, polymers and chemical processing with an expertise in patent drafting, prosecution, IP enforcement, and client counseling on IP related matters.
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.
Walter C. Grollitsch has over 12 years of legal experience in advising international clients on legal matters, intellectual property strategies, patent law and patent portfolio management. For the last several years, Walter has worked as in-house counsel at Intervale Capital which owns over 10 portfolio companies in the oil and gas industry. He has advised the management at the portfolio companies on various legal matters and on strategic ways to create, defend and assert their intellectual property rights. Walter has been involved in several intellectual property disputes in the federal courts and in the United States Patent Office. He has negotiated numerous settlement agreements and cross-licensing agreements. Walter has an engineering degree from The Penn State University and a law degree from South Texas College of Law.
Raymond Millien, who holds a BS from Columbia University and a JD from The George Washington University School of Law, is Chief IP Counsel at GE Oil & Gas. From 2009-2015, Mr. Millien has recognized as one of the “World’s 300 Leading IP Strategists” by Intellectual Asset Management (IAM) magazine from 2009-2015. Previously, Mr. Millien was General Counsel of Ocean Tomo, LLC, and Vice President and IP Counsel at The American Express Company.