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
CLE:Approved for 4.25 Hours of California CLE credits
KEY TOPICS DISCUSSED
The 3 Pillars of IP Strategy: Patent Prosecution, Portfolio Management & Due Diligence
When To Trade Secret & Managing The Process
A Balanced Enforcement Strategy For Operating Companies
A 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
Tracie Carroll is Counsel at Philips. Previously she was External General Counsel at Sanford Burnham Prebys Medical Discovery Institute (SBP), an institute of more than 1,000 employees dedicated to discovering the fundamental molecular causes of disease and devising innovative therapies of tomorrow by taking a unique, collaborative approach with its major research programs in cancer, neuro-degeneration, diabetes and infectious, inflammatory and childhood diseases. She has worked at SBP for five years, only recently taking the position of External General Counsel in order to take a Counsel at Philips, as well. Tracie was named a 2013 General Counsel Award Winner in the Rising Star Category by the San Diego Business Journal and vounteers for a number of programs including the Consistiutional Rights Foundation, Public Law Center, and Illumination Foundation. She holds a JD with a certificate in Intellectual Property from Whittier Law School and earned her MBA from Pepperdine University, The George L. Graziadio School of Business and Management in 2014.
Dr. Ralston is an expert in wireless communications technology and patent law. As Chief IP Counsel at ViaStat, Inc., he develops and impleents IP strategy for this highly innovative one billion dollar public company. Prior to landing his position as Chief IP Counsel at ViaStat, Dr. Ralston held the position of shareholder at Kirton & McConkie for several years. He also worked for Thorpe North & Western LLP. Dr. Ralston earned his JD from University of Utah S.J. Quinney College of Law and also holds a doctorate of engineering from the University of Massachusetts Lowell.
Mr. Cullman a partner in the Orange County office of K&L Gates LLP specializing in intellectual property (IP) law where he manages the transactional IP group. His practice has a strong life sciences focus and concentrates on transactional IP for pharmaceutical and medical device companies including patent procurement, technology transfer and Bayh-Dole issues, merger and acquisition-related due diligence, freedom to operate analyses, non-infringement and invalidity opinions, Hatch-Waxman-related client counseling and litigation support. Mr. Cullman regularly represents pharmaceutical and medical device companies including Allergan, Baxter Biosciences, Beckman Coulter, Medtronic and Spectrum Pharmaceuticals in matters related to product life cycle management, patent litigation strategy and merger and acquisition IP due diligence. Prior to attending law school Mr. Cullman was a licensed Clinical Microbiologist and co-founded and directed an infectious disease laboratory and diagnostic device manufacturing company in Southern California. He has extensive technical experience in the design and manufacturing of in vitro diagnostic devices for infectious diseases, immunology and biochemistry.
Dr. Greenspan is the Senior Director of Intellectual Property at Prometheus Laboratories, a Nestlé Health Science Company, located in San Diego, CA. The company develops diagnostic tests in the area of gastrointestinal diseases. Bernie is responsible for IP portfolio strategy and management, due diligence on new ventures, working with scientific staff to capture new innovations, working with marketing to identify and register trademarks, and for training employees on the importance of IP protection to the success of the company.
Prior to joining Prometheus, Bernie held positions as Director of IP Strategy Management for Pfizer La Jolla Laboratories, Senior Director of Intellectual Property at Verus Pharmaceuticals, and as an independent consultant to life science and medical device companies.
Bernie's research and development career has included positions as Director of Aerosol Technology at Dura Pharmaceuticals and Elan Pharmaceuticals and Staff Scientist at Battelle Pacific Northwest National Laboratory.
Bernie holds a BA in physics with honors from Clark University, and an MS and Ph.D. in biophysics from the University of Rochester School of Medicine and Dentistry. He is registered to practice at the USPTO as a patent agent.
David Diamond has worked for MannKind Corporation since January 2000. With a Ph.D. in Molecular Biology from Stony Brook University, he started his career there as Lead Scientist, Immunology & IP Coordinator. His career trajectory then focused more and more heavily on intellectual property until he reached the position he holds today, as Vice President of Intellectual Property. A significant benchmark in this career trajectory was taking on responsibility for the inhalable dry powder patents in 2003 and building a portfolio including formulations, devices, methods of treatment, and methods of manufacture covering the platform technology and our lead product, AFREZZA®, in the US and major and regional markets around the world
Mr. Randy Berholtz is our Executive Vice President, General Counsel and Secretary. He is the former Executive Vice President, General Counsel and Secretary of Apricus Biosciences, Inc. (NASDAQ: APRI), a specialty pharmaceutical company. Prior to that time, he was the Vice President, General Counsel and Secretary of ACON Laboratories, Inc., a group of Chinese and US life sciences companies. He has also been the Chief Operating Officer and General Counsel of IngleWood Ventures, L.P., a life sciences venture capital company and the Interim General Counsel and Secretary of Nanogen, Inc. (NASDAQ: NGEN), a genomics tools company. He has also been an attorney with the law firms of Heller Ehrman, LLP, Cooley Godward, LLP, Kirkpatrick & Lockhart, LLP (now K&L Gates) and Cravath, Swaine & Moore. He has a Bachelor of Arts degree from Cornell University, a Master of Arts degree from Oxford University, where he was a Rhodes Scholar, and a Juris Doctor degree from Yale Law School where he was a Senior Editor of The Yale Law Journal.
Lead SCE’s Advanced Technology Division (AT) efforts with legal, regulatory, supply management and project teams for the purposes of partnering with industry groups, academia, corporations and others to conduct research and demonstration activities. Current projects are focused in the areas of Grid Modernization, Energy Storage, Plug In Vehicles, Renewable Sources of Energy and Cyber Security. Structure and negotiate complex legal transactions while minimizing risks associated with these development opportunities.
Responsible for developing Intellectual Property (IP) plans for projects when partnering with vendors, universities or other industry partners as required, while establishing controls and monitoring plans related to intellectual asset management to protect the company’s interest.
Jan Weir is a partner in Michelman & Robinson, LLP’s (M&R’s) Intellectual Property Practice, specializing in Intellectual Property litigation. Mr. Weir handles all facets of patent, trademark, copyright, unfair competition, antitrust, and other technology based business litigation, including breach of Intellectual Property related contracts such as non-disclosure, licensing and joint development agreements. He also has years of experience in providing pre-litigation due diligence opinions and advising clients on how to manage, develop and strengthen their patent portfolios to address future litigation needs.
Mr. Weir is adept at developing and executing intellectual property strategies best suited to protect a client’s business whether by strengthening a client’s patent portfolio or developing defensive strategies against a competitor’s patent. With a graduate school background in molecular biology/biochemistry Mr. Weir has a particular depth of experience in chemical, medical and pharmaceutical patent litigation.
He has extensive experience as lead trial counsel in both judge and jury trials and was named one of the Top 30 IP Litigators in California by the Los Angeles Daily Journal. Mr. Weir is well versed in the management of high stakes, high profile litigation. He has tried cases to judgment throughout the United States and has won a large portion of his cases on summary judgment without the costly expense of trial. Mr. Weir has also argued numerous appeals before federal and state appellate courts. Over the course of his esteemed career, he has originated many novel legal arguments not only within the IP sector but as a matter of Federal litigation practice that have been adopted by the courts.
Mr. Weir routinely handles “bet the company” cases involving damage claims in the hundreds of millions of dollars. Mr. Weir's legal acumen, combined with his deep science and technology background, enables him to move adroitly across multiple industries, including electrical engineering and computer science, medical and biomedical, and general and mechanical engineering. The extensive list of technologies for which he has successfully represented clients includes pharmaceuticals, computer hardware and software, semiconductor manufacturing, internet and telecommunications, medical devices, robotics, and polymer chemistry among others.
Joe manages all IP-related matters for the BioProduction Division as well as the Licensing and Commercial Supply, eCommerce, and Central R&D functions of Thermo Fisher Scientific’s Life Sciences Solutions Group. Joe is highly-experienced in international IP procurement & portfolio management, risk identification & mitigation, post-grant proceedings, licensing, litigation, dispute resolution, negotiation, and M&A, with a focus on the life sciences industry. Prior to joining Thermo Fisher Scientific, Joe was an attorney at K&L Gates, Fitzpatrick Cella Harper & Scinto, and Procter & Gamble. Joe holds a J.D. from Syracuse University College of Law and a B.S. from the Chemical Engineering Department at Texas A&M University-Kingsville.
Kumar's responsibilities focus on increasing and maintaining the long-term value of the Endologix and its products by means of Intellectual Property (IP) Rights. Drafting and prosecuting patent applications but will likely also extend to work on a variety of other projects, including general IP counseling and patent analysis, and Patent litigation.
Draft and prosecute patent applications.
Supervise U.S. and foreign counsel engaged in drafting and prosecuting patent applications and in post-grant challenges, including inter partes review, post grant review, oppositions and appeals.
Acquire detailed understanding of the technologies, products and R&D activities of the business.
Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive IP and commercial activities, and licensing opportunities
Conduct landscape searches, patentability reviews, freedom-to-operate analyses, and patent assessments relating to R&D activities, product releases, licensing opportunities and IP acquisition.
Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements.
Foley & Lardner LLP
Foley & Lardner LLP
November 2006 – Present (8 years)|Los Angeles, Ca
Kumar Maheshwari has more than seven years of intellectual property experience in electronic patent prosecution, trademark acquisition, licensing, technology contracts and various litigation matters. Practice in the medical, mechanical, electrical and computer arts including patent prosecution, due diligence, clearance, invalidity, infringement and related opinion work, in the fields of medical devices and software.
• Provide representation to biotechnology companies such as Medtronic.
• Draft patent applications and responses related to insulin sensing and infusion pumps for Medtronic.
• Prosecute patent applications related to catheter/ stent deployment and drug eluting stent mechanisms.
• Client counseling to medical device and software companies to include IP portfolio strategies and identifying licensing opportunities.
• Drafting patentability, clearance opinions and IP licensing documents.
• Performing a comprehensive risk assessment mapping competitor patients against product landscape
• Conduct IP due diligence for an acquisition of a $250M company
• Draft 200+ new patent applications from disclosure meeting stage.
• Draft 500+ office action responses to USPTO for both domestic and foreign patent applications.
• Draft Inter Partes Review requests, patent and trademark licensing agreements, non-disclosure agreements, pleadings, claim charts for infringement and invalidity contentions.
• Prepare cease and desist letters for patent litigation cases.
Bill is a senior executive and proven leader that has managed teams, led large scale business development and sales transactions, advised clients and worked across numerous geographies, industries and functional disciplines. He has a consistent track record of developing high performance teams and meeting business objectives.
Nathan Smith focuses his practice on intellectual property (IP) portfolio management, competitive market strategies, offensive and defensive intellectual property due diligence, licensing, and domestic and foreign patent prosecution for utility and design protection. He shapes IP strategies for startups and large-cap corporations alike. His technical experience encompasses a wide range of technologies, including medical devices such as cardiovascular devices and interventions, drug delivery therapies, orthopedic devices, dental devices and procedures, bone fracture fixation devices, spinal devices and procedures, endoscopic devices and procedures, agricultural products and grain management, eyewear, personal electronics, software, automotive, aeronautics and various mechanical technologies.
Alex handles all patent matters for Studios at The Walt Disney Company. Before joining Disney, Alex was Chief Patent Counsel at HTC. Alex also worked previously at Qualcomm, Knobbe Martens, and Fish & Richardson. Alex has worked on patent licensing, litigation, acquisitions, and prosecution. Alex has a J.D. from George Washington University, and a B.S.E.E. from University of Michigan.
Scott Trask is Director of Intellectual Property at Newport Corporation in Irvine, CA since 2004. His work includes IP portfolio development, licensing, enforcement, mergers & acquisitions and IP landscape analysis.
Scott has his BA in Physics from Kenyon College, his BSME from Washington University in St. Louis, and his J.D. from Western State University College of Law. Prior to working in an intellectual property role, Scott worked for 20 years in design engineering, project engineering, and engineering management in the aerospace, marine, and photonics industries.
Mr. Razai has a broad intellectual property litigation practice, having handled cases involving utility patents, design patents, trademarks, trade dress, copyrights, trade secrets, false advertising, unfair competition and breach of contract throughout California and nationwide.
He has worked on a diverse range of matters involving mechanical devices, optics, medical devices, biotechnology and pharmaceuticals. Mr. Razai has handled matters for a diverse array of clients, including Oakley, Mexicana Airlines, 99¢ Only Stores, Ranbaxy Pharmaceuticals, Ligand Pharmaceuticals, and I-Flow Corporation (a subsidiary of Kimberly-Clark).
Mr. Razai is a registered patent attorney and also has extensive experience in patent prosecution, having obtained numerous patents for clients in various technology areas, particularly biotechnology. Mr. Razai has also worked within the AgBio industry, working on patents involving carbon scrubbing exhaust through algae and using the algae as green energy. Additionally, he has worked on an internet domain name litigation matter.
Mr. Razai was seconded by the firm to act as interim in-house patent counsel at Oakley, Inc. for an extended period, during which Mr. Razai handled all of Oakley's patent matters, including prosecution, litigation and due diligence.
Prior to joining the firm, Mr. Razai was a Research Associate at the UCLA AIDS Institute studying the effect of the HIV virus on cytokine expression. After receiving his Masters in Public Health from Berkeley in 2001, he went to UCSF where he focused his research on the development of therapeutic antibodies against the neurotoxin produced by the bio-terror agent C. botulinum. Mr. Razai's work at UCSF resulted in multiple royalty-bearing patents for a cure to botulism.
Amy Christensen Chun is a partner in our Orange County office. She represents clients in all types of intellectual property matters, including patent, trade secret, and copyright litigation, inter partes review, covered business methods review, intellectual property license negotiations, due diligence investigations, patent prosecution and strategy, and open source policy assessment and review. While she has worked with a variety of technologies, she focuses on distributed computing systems, e-commerce, social media, financial services, mobile computing, internet technology, big data, and general computer software. Ms. Chun's clients have included companies such as Experian and HTC.
After completing her graduate degree, Ms. Chun worked as a product manager for OR Concepts Applied, a privately-owned company which developed route planning systems for stealthy aircraft. While at law school, Ms. Chun was a Notes Editor of the George Washington Law Review. Ms. Chun joined the firm in 1999 and became a partner in 2005.
Alan’s practice focuses on all aspects of patent procurement, strategic intellectual property (IP) counseling, and IP asset portfolio management, both in the United States and globally. In addition, he has experience in patent and software licensing, due diligence, opinion work, patent assertion strategies, and litigation.
Alan works primarily with electronic, computer, and mechanical technologies. His experience includes work with semiconductors, analog circuits, radio frequency circuits and signals, digital signal processing, optics, wireless communications, software, computer architectures, networking, integrated circuits, medical devices and related technologies.
Alan earned his law degree from the University of California, Los Angeles. He also earned his bachelor’s degree in electrical engineering from Brigham Young University, with a focus on semiconductor technology, digital signal processing, and computer software.
Additionally, Alan is the patent expert and guest co-host of the legal advice radio program, “Barely Legal Radio,” which is broadcast on KEIB AM 1150 in Southern California, and on Indie1031.com.
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.