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: 6 hours of California State CLE credits
KEY TOPICS DISCUSSED
The Pillars of An Aligned IP Strategy: Prosecution, Management, Competitive Intelligence & Business Goals
Aligning Your Enforcement Strategy with Business Goals
From Reactive to Proactive: Defensive Litigation Strategies
Data as Intellectual Property and Data Licensing
Post Issuance Proceedings for 2017 and beyond: Plaintiff and Defensive Perspectives
The Strategic Implications for Trade Secrets
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
Jonah is a Patent Agent at Soundhound. His role is that of an IP Strategy at the intersection of technology, business, and law. His focus is on developing a valuable IP portfolio. His experience experience is in processors, DSP, digital video, network-on-chip, and speech understanding machines. Since 1998 he has worked for high-tech companies including Lexra, ARC and Tensilica. He has been a founder, engineer, architect, marketer, and seller, in addition to being an author.
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.
Diane is Senior Managing Counsel for J. C. Penney Corporation, Inc., responsible for all patent litigation matters. Prior to joining J. C. Penney Corporation, Diane was a shareholder as Winstead PC in Dallas, Texas and a member of its Intellectual Property and Commercial Litigation Practice Groups. She practiced at Winstead for more than 25 years before leaving private practice to join JCPenney. During her tenure at Winstead, Diane represented clients that were patent owners, defendants accused of infringement by competitors, as well as clients accused of infringement by NPEs.
Orion Armon focuses on multivenue, complex patent litigation matters. He has particular experience in utilizing inter partes review and covered business method review proceedings in combination with district court litigation strategies to achieve optimal litigation outcomes.
Orion is a co-founder of PTAB Digest, a leading resource which tracks and analyzes Patent Trial and Appeal Board decisions, and co-executive editor for the online tool. He is also a frequent lecturer on licensing, intellectual property and patent matters.
Prior to attending law school, Orion worked for Accenture as a business consultant, where he specialized in financial system implementations and eCommerce software.
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.
Suvashis manages NetApp’s US and international patent portfolios and overall patent program, assists ongoing IP litigation matters, advises on open source-related issues and policy, and supports IP licensing activities. Previously he was a partner at LeCLairRyan, Patent Attorney at Nixon Peabody, Fleisler Meyer LLP and Attorney at Thelen LLP.
Suvashis earned his B.S. Mechanical Engineering from Purdue University and his J.D. Intellectual Property from John Marshal Law School.
Dave is a Silicon Valley technology trial lawyer who has won trials, obtained significant money damages and injunctive relief, and secured favorable defense verdicts and rulings for his clients. He focuses his litigation practice on patent, trade secret, trademark, copyright, and other IP matters in federal and state courts, arbitrations and mediations across the country, and at the Patent Trial and Appeal Board. Dave has extensive experience developing and successfully managing multi-million dollar patent, trade secret and other complex IP and business litigation budgets to match client economic objectives.
Dave has litigated IP matters across a spectrum of advanced technologies in the electrical, mechanical, and computer hardware and software fields. These technologies include online consumer services, business and software services, medical devices, system-on-chips, digital signal processing, integrated circuit fabrication and testing, semiconductor capital equipment, RF/microwave circuits, Bluetooth and Wi-Fi applications, PCB design and circuits, computer aided design, optics and reflective imaging, networking infrastructure and website operation and e-Commerce applications, and waterproof technologies for electronic devices.
His trial and IP litigation and counseling services, mirroring the diverse and challenging issues faced by his technology clients, include unfair competition, deceptive practices, licensing and founders’ disputes, corporate governance litigation, shareholder derivative actions, proprietary rights relating to departing or newly-hired employees, complex commercial litigation, arbitration and mediation, and appellate litigation.
Before coming to Merchant & Gould, Dave was an equity partner in the IP litigation departments at several AmLaw 100 firms and flexed his entrepreneurial muscles as a partner and owner of Valorem Law Group, a disruptive law startup focused on offering fee arrangements that better aligned the economic interests of clients and their lawyers. Dave created the Flat Fee IP Blog on which he continues to regularly post on alternatives to traditional hourly billing as well as current and future issues relevant to IP litigation.
Dave serves as the managing partner of Merchant & Gould’s Silicon Valley office.
Jay Campbell is the rare intellectual property trial lawyer who has tried numerous patent cases to a jury—including a case that resulted in the largest jury verdict in Arizona in 2011. For nearly 25 years, Jay has represented clients in diverse technological fields ranging from neuronavigation systems to chrome plating before state, federal, and appellate courts. He has appeared in courts in Ohio, Arizona, California, Colorado, Delaware, Florida, Illinois, Massachusetts, Michigan, Minnesota, Nevada, New Jersey, New York, Pennsylvania, Texas, Washington, Wisconsin, and Washington, D.C.
Jay frequently provides demonstrations on trial practice and presents related CLE topics. He is often retained as an expert witness and consultant in IP cases throughout the United States. Jay also serves as a mediator in IP and technology-related cases.
Tyler Gee has spent the majority of his career focused on intellectual property, including portfolio building, litigation, and licensing. He has a degree in Computer Engineering from UC Davis and JD from the University of San Francisco School of Law. Tyler practiced for over 6 years at Townsend and Townsend / Kilpatrick Townsend before moving in house – first to a late-stage mobile gaming company Kabam and then to GoPro. In his words, he "could not be more stoked to be at GoPro” - protecting GoPro’s IP and helping enable its customers to capture and document their passions.
As SVP TechInsights Research, Julia Elvidge is responsible for the Competitive Technical Intelligence and Product Development divisions at TechInsights, Inc. Ms. Elvidge joined Chipworks in 1994 as the second employee and held increasingly senior positions before being named President in 2003. As a major shareholder, she was instrumental in growing the firm from a small start-up to a global enterprise of 120 people. TechInsights, the industry leader in proving patent value, acquired Chipworks in June 2016.
A renowned thought-leader in the industry, Ms. Elvidge recognized early in her career the business value that competitive technical intelligence and intellectual property held for technology companies. She began her career with Mosaid Technologies; then joined LSI Logic, where she honed her expertise in ASIC design, ultimately leading her own engineering groups. Ms. Elvidge holds multiple patents for her work.
Ms. Elvidge is a board member of the Information Technology Association of Canada and a longstanding member of the Licensing Executives Society. A winner of numerous awards for her contributions to entrepreneurship in the high-tech industry, she is a regular speaker at intellectual property events, such as the Licensing Executives Society (LES) and the Intellectual Property Business Congress (IPBC) conferences.
A role model for women in technology and business – and a technology geek at heart, Ms. Elvidge was one of six women in a class of 100 to pursue an education in electrical engineering. She earned her degree in Electrical Engineering from the University of Waterloo in Ontario.
Ron Schoenbaum focuses on patent protection for companies in the information technology and medical electronics areas. Ron's practice includes strategic patent procurement, general counseling on infringement and licensing issues, and intellectual property due diligence studies and related negotiations for mergers and acquisitions. He also frequently conducts in-house seminars to assist clients in identifying and prioritizing patentable inventions.
Ron represents a variety of information technology companies in such areas as network security, data caching and streaming, search engines, web analytics, healthcare IT, and digital signal processing. He also has extensive experience in the areas of cardiac pacing and defibrillation, and medical telemetry.
Before joining the firm, Ron worked as an engineer for IBM’s Computer Products and Entry Systems divisions, where he was responsible for designing and developing processor cards and ASICs for workstations and mainframe computers. During his employment at IBM, he was selected to participate in IBM’s Executive Resource (management fast track) program.
With more than 20 years of intellectual property litigation experience, including several trials and appeals, Jon has dealt with complex legal issues and difficult logistics such as managing a suit involving 37 patents in the semiconductor and telecommunications arts. Jon has also represented smaller clients who depend on their intellectual property for survival.
Jon is a trial lawyer and litigator in the Denver office who has focused primarily on patent litigation. He enjoys working on intellectually challenging cases since his clerkship at the U.S. Court of Appeals for the Federal Circuit and devising winning strategies that give his clients competitive advantages in the marketplace. His strong analytic and communication skills allow him to explain complex technologies using simple, understandable language and to tell a compelling story while preparing his cases for appellate success.
Jon has a clear record of success at both the trial stage of litigation and with appeals before the U.S. Court of Appeals for the Federal Circuit, winning all of the Federal Circuit appeals he controlled. Recently, Jon prevailed in an appeal that reversed a trial-court judgment with a $50 million dollar exposure to his client, a construction products manufacturer. He has represented clients such as Motorola, Freescale, Robert Bosch Tool Corp., Microsoft, Siemens, 3M, Honeywell, Harman Kardon, Terex, OfficeMax, Vermeer Manufacturing Co., U.S. Ecology, Trophy Ridge, Grouser, Department 56, Adaptec, KV33, Featherlite, Smash, Bay West Paper Co., Digital River, Halo Innovations, Cold Spring Granite, Pari, Carbo Ceramics, Connect-A-Dock, Intercept Corp., Onset Pipe, Powerscreen and Loegering Manufacturing.
While the focus of Jon’s practice is on patent litigation, he has successfully obtained ex parte seizure orders, even with unregistered trademarks, and has litigated color and other trademarks and right of publicity claims. Jon has significant experience with the new Inter Partes Review process at the U.S.P.T.O. As a founding board member and current president of the Colorado IP Inn of Court, Jon works to improve collegiality and foster professionalism in the Bar. He is a frequent speaker and writer on intellectual property law issues.
At the office, Jon can often be found at the standing desk that he built. When not working, his spare time is spent with his wife and ten children. He also likes to sneak away on motorcycle rides, to fish, hunt, and to visit his dad on the farm.
Matt Becker's practice focuses on intellectual property litigation, analysis and counseling. His intellectual property litigation practice predominantly includes patent infringement and trade secret litigation and his counseling practice focuses on advising clients regarding avoiding third party intellectual property rights in conjunction with product development, conducting patent infringement and validity analyses, and providing strategic advice regarding patent portfolio development.
Matt has served as lead counsel in significant patent infringement lawsuits, disputes concerning patent inventorship and patent ownership, claims of breach of license agreements, trade secret misappropriation, breach of contract and business torts. Many of these actions have involved the chemical or electrical arts. He has handled a significant number of Hatch-Waxman pharmaceutical patent infringement litigations, and has also litigated patent infringement cases involving electronic components of nuclear detection equipment, embedded computers, brushless DC fans and hard drive motors, specialty optical fibers, product packaging, tools and hardware, and various business methods. Matt’s role in these matters has included the development of trial strategy, Markman hearings, jury trials and all aspects of discovery.
Fergal Clarke is the director of IP business analysis at Lenovo, the world’s largest PC firm, which has major research centres in Yamato, Japan; Beijing, Shanghai and Shenzhen, China; and Raleigh, North Carolina.
Mr Clarke is responsible for providing business context to all IP-related activities and for ensuring that such activities are consistent with and supportive of the overall business strategy. His specific responsibilities include patent acquisitions, supporting organic patent development, supporting inbound and outbound licensing and communicating the IP business strategy.
Mr Clarke was previously director of IP strategy at Rambus. Before this, he held multiple technology and engineering management roles at Applied Materials, in addition to managing its corporate trade secret management initiative.
Mr Clarke obtained his physics degree from Dublin City University and his MBA from the University of California, Berkeley.
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.
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.