IP 2022: New Beginnings [Virtual Summit]: East
As the global pandemic begins to subside both new opportunities and challenges are emerging for IP practitioners, including a more neutral landscape for patent owners. In addition, the new administration and changes in leadership at the USPTO will inform how the IP landscape will shift given that new rules are likely to be implemented. Stakeholders can expect companies to embrace a balanced patent strategy to take advantage of these changes and protect against old threats in the IP sector.
How do patent practitioners build on the opportunities that have emerged from the pandemic?
Come join your IP peers for a day of learning, benchmarking & networking through panels and break-out sessions and head back to the office with practical, progressive, actionable insights from the front lines.
Speakers
Greg is a member of the Platforms Team in the Technology Practice Group at Genentech as well as being responsible for IP protection of several large pharmaceutical molecules. Greg transitioned from an academic career after his post-doctoral fellowship at the University of Chicago to a boutique IP law firm, then to general practice firms, and finally to in-house practice. He started his in-house career at an agricultural biotechnology start-up before moving to large molecule pharmaceutical companies. His current practice includes patent portfolio management and strategy, patent prosecution, IP counseling, due diligence, and transactional matters. Greg is admitted to practice before the United States Patent and Trademark Office, and the Illinois State Bar and California State Bar (the latter as Registered In-House Counsel (RIHC)).
Harvard University | Cambridge, PhD
Chicago-Kent College of Law (Illinois Institute of Technology) | Chicago, JD
Perving Taleyarkhan is Legal Counsel at Whirlpool. Her experience includes IP strategy, contract negotiation, as well as litigation. Prior to Whirlpool she served as Legal Associate in the IP legal team at Purdue University. She earned her BSChE in Chemical Engineering from Purdue University and her J.D. from Indiana University Robert H. McKinney, School of Law. Pervin is actively involved in the American Bar Association, where she serves on the Editorial Board of the ABA Journal, and is also Editor-in-Chief of the Young Lawyer Division (ABA YLD)’s flagship The Young Lawyer. She is currently Vice Chair of the IP Law Section of the ABA YLD. In addition, Pervin is active in the ABA IP Law Section in various capacities, including work on the Editorial Board of the ABA IPL Section’s Landslide magazine and chairing the Section’s In-house IP Committee. She is also serving on the IP Counsel at the State Bar of Michigan and the Board of Directors for the Michigan Chapter of the Association of Corporate Counsel (ACC). At the regional level, Pervin co-chairs the ACC’s Southwest Michigan Committee.
Lauren Ingegneri is Senior Corporate Counsel at Agero, offering B2B roadside assistance services, including a SaaS dispatch platform, for automotive manufacturers and insurance companies. She combines her engineering background and broad legal experience to advise senior leaders on complex litigation, risk management, contracts, IP, compliance, and employment matters. Lauren was formerly IP Counsel at Abiomed, Inc., where she led global IP portfolio and litigation strategy for its minimally invasive heart pump technology.
Lauren has a J.D. from The George Washington University Law School and a B.S. in Engineering Science, magna cum laude, from Smith College.
She volunteers with Read to a Child, a national organization whose mission is to foster a love of reading and empower underserved children by having adults read to them regularly. Lauren has also served on the planning committee for the National Association of Women Lawyers (NAWL) General Counsel Institute.
Hih Song is Executive Vice President, General Counsel & Corporate Secretary at BlueTriton Brands, home of responsibly and sustainably sourced and packaged spring and purified water and beverages including Poland Spring®, Deer Park®, Ozarka®, Ice Mountain®, Zephyrhills®, Arrowhead®, Pure Life®, and Splash, and direct-to-consumer and office beverage delivery service, ReadyRefresh®. A member of the Executive team reporting to the CEO, Hih Song leads legal, regulatory, and government affairs and works closely with the Board overseeing corporate governance. She provides legal support and strategic direction for M&A, product innovation and incubation, intellectual property, corporate and regulatory compliance, legal and risk management, governmental and internal investigations, litigation, real estate, data privacy and security, general commercial matters, and sustainability.
Before Blue Triton, Hih Song served as SVP, General Counsel at Kaplan Test Prep, the largest subsidiary of Graham Holdings, Inc (NYSE:GHC). Prior to that, Hih Song was SVP, General Counsel for Stoli Group USA. Hih Song began her in-house career at Unilever, where she served as Assistant General Counsel – Marketing/Regulatory & Litigation and then served on Colgate-Palmolive’s global legal team as Global Oral Care Counsel and Chief Litigation Counsel. Hih Song began her legal career in private practice as a corporate and litigation associate at Simpson Thacher & Bartlett and litigation associate at Paul, Weiss, Rifkind, Wharton & Garrison.
She is on the Board of Directors of Day One (nonprofit partnering with youth to end dating abuse and domestic violence) and previously served on the Board of Trustees for the North Carolina School of Science & Mathematics and the Board of Directors of The Door (nonprofit providing comprehensive youth development services), Legal Information for Families Today (LIFT), and Urban Bush Women (modern dance company). Hih Song received her AB from Harvard University and JD from Harvard Law School. She is originally from North Carolina and resides in Brooklyn with her husband and two children.
Ted Mathias focuses on trying patent cases. In the last several years, he has tried three cases to judgment and served as lead counsel in multiple cases involving 15+ patents. Ted has litigated patent cases and handled successful appeals to the Federal Circuit in the areas of medical devices, pharmaceuticals, mechanical devices, e-commerce and software. Clients frequently turn to him for guidance on patent remedies and competition issues that arise in connection with patent disputes.
Victoria Friedman is an IP attorney specializing in client counseling, procurement, and management of intellectual property. Her day-to-day practice involves patent and trademark preparation and prosecution, opinions of counsel, portfolio strategy and management, licensing, business transactions and much more. Her technical background is in Computer Information Systems and her patent practice primarily focuses on software, telecommunications, computer, search, email, and social network arts.
In her trademark practice, she manages international portfolios for top global brands in various industries. Friedman is one of a handful of attorneys who have been successful in registering a color mark. She enjoys developing and implementing efficient, practical solutions to her clients’ IP challenges.
Victoria Friedman speaks English and Russian and has been active in the field of IP since 2003.
JD – Suffolk University Law School
With more than 15 years of experience in the IP field and 8 years as an in-house attorney, Benjamin Brown currently leads the IP legal function at Onto Innovation, a semiconductor equipment company, where he counsels business leaders and employees on a wide range of matters including patents, trademarks, trade secrets, open source, copyrights, licensing, litigation issues, and commercial agreements. He has spoken extensively on partnering with outside counsel, using data to improve IP strategy and budgeting, and on IP strategy. Ben has dealt with protecting IP at large and small companies, with clients while in private practice, and mentors General Counsel and others on IP issues. He has on multiple occasions developed IP policies and processes for companies and has integrated a number of acquisitions including a $15 Billion acquisition Linear Technology by Analog Devices. He is also currently an advisor to an early-stage startup and is completing his MBA at MIT.
Fordham University School of Law, JD.
Jacqueline Daspit, and her team, protect and defend innovation and intellectual property for the Becton Dickinson Interventional Segment, formerly C. R. Bard which was acquired by BD in 2017. Her BD clients include technology centers in Ireland, Germany and multiple locations in the US. She is an accomplished intellectual property lawyer with a strong business orientation for strategic intellectual property counseling, licensing, litigation management, and other complex business transactions.
With over 18 years as in house counsel, Jacqueline brings extensive experience in complex IP matters, including cross-border M&A, international portfolio management and patent litigation. Her depth and breadth of experience has been recognized by First Chair as a Top AGC and by Managing IP as an IP Star. Jacqueline’s global experience includes (almost annual) EPO Opposition proceedings and participation as the US in-house delegate to the AIPPI Standing Committee on UP/UPC.
Jacqueline is a graduate of Tulane University School of Law and the University of Arizona. She is registered to practice before the USPTO and is licensed in Louisiana and Arizona.
Sarah is a Partner in our Life Sciences and Chemistry group. Her practice focusses on the field of biotechnology, and she has significant expertise and experience in the areas of synthetic biology, next-generation DNA sequencing technologies, proteomics, diagnostics, medical devices and antibody technology, especially in relation to antibody fragments and therapeutic uses of antibodies.
She regularly advises clients in relation to technologies where the life sciences intersects with other fields, including bioinformatics and digital health. For such technologies, an interdisciplinary approach is often required, for example when machine learning and AI are used in the life sciences field, and she enjoys working together with her colleagues across the firm to provide a bespoke experience to clients in these sectors.
Her client base includes UK and international academic institutes, startups and SMEs. For those clients, Sarah is experienced at handling invention capture, providing patentability opinions and drafting patent applications, ensuring that the client’s strategic and commercial goals are considered from the outset.
With nearly 20 years’ experience of prosecuting patent applications in Europe and providing strategic advice on IP strategy in relation to worldwide patent portfolios, Sarah is well-placed to advise on the best prosecution strategy for each of her clients depending on their individual requirements.
Sarah speaks regularly on aspects of European and UK patent practice and IP issues in relation to the life sciences.
Wei Campbell has diverse experience working on a broad range of intellectual property matters, with a focus on the pharmaceutical, chemical, and biotechnology arts. Wei was in private practice at both global and IP boutique firms before transitioned in-house. Her current practice includes patent portfolio management, patent prosecution and litigation, IP counseling, due diligence, and transactional matters. Wei is admitted to practice before the United States Patent and Trademark Office and to the Massachusetts State Bar.
New England Law | Boston, JD
Tao Zhang is Vice President, Deputy General Counsel of IP and Product at Juniper Networks. Her responsibilities include patent portfolio development and optimization, product risk management, security/privacy/open-source compliances, IP transactions, supply chain and procurement contract negotiations. Prior to Juniper, she was Associate General Counsel of IP and Technology, at Ansys, and senior director of IP strategy, at Huawei Device USA, respectively. Before Huawei, she was with Hewlett-Packard for 23 years. She obtained a JD from Concord Law School and a PhD in Physics from Stanford University.
Dr. Zhang is a member of the California Bar and a registered patent attorney with the US Patent and Trademark Office. She is co-author of the book “Mining Ideas for Diamonds – Comparing China and US IP Practices from Invention Selection to Patent Monetization”. She also co-authored several IP articles, including “Call for Standardization in Patent Claim Drafting” (Santa Clara High Tech Law Journal, Volume 34, Issue 3, April 2018), “Making Trademark Decisions Based on Cost Considerations: A Model for Action” (World Trademark Review, April 2020). Dr, Zhang was recognized by the IAM Strategy 300 in 2015, 2017 and 2018.
Brad Lawrence focuses his practice on intellectual property counseling including the protection of clients’ inventions through carefully planned patent procurement. His practice also includes analysis of the IP and product positions of others and the development of licensing strategies as well as performing product clearances in the form of non-infringement and/or invalidity opinions. He also has significant prior litigation experience that includes many aspects of patent, trademark, and trade secret litigation as well as licensing and other extrajudicial resolution of IP disputes
Dr. Kelly Morgan leads Arbor’s legal team to safeguard the company’s research activities and drive the IP strategy for short and long term growth. Prior to joining Arbor, Dr. Morgan worked with multiple start-up companies at a premier venture firm to guide development of initial IP, as well as educate and train early team members. Originally trained as a cancer immunologist, Dr. Morgan brings over a decade of post-graduate experiences, both from her research bench and law firm training, aiding in opportunistic research design with proven impact on corporate development.
Suffolk University Law School, JD.
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.
Denise is Chief of Staff to GC at Boston Scientific. Previously she held IP Counsel responsibilities at Velcro and Partner at Preti Flaherty.
She’s a charismatic, dedicated, and occasionally witty intellectual property counsel and former first-chair patent and trademark litigator. Denise is experienced with a wide range of patented technologies, including medical devices, software, chemical, plastics, and biochemical materials.
Specialties: Intellectual property portfolio strategy and prosecution management; complex patent, trademark, and trade secret litigation; IP transactions and licensing; and, mergers and acquisitions.
Boston University School of Law, JD
Nonna joined Abiomed in April 2019 and serves as Chief IP Counsel responsible for leading the company’s global IP functions. Prior to joining Abiomed, Nonna worked as an IP counsel both in-house and at a law firm supporting a wide range of technologies, including biotechnology, pharmaceuticals, life sciences and medical devices. Before attending law school, Nonna was an pharmaceutical sales for almost five years which she transitioned into after working as a Clinical Research Associate at Mass General Hospital.
Nonna earned a Juris Doctor degree from Pace University School of law where she was also the Editor-in-Chief of Pace International Law Review and holds a Bachelor of Arts degree in biology from Boston University.
Jonathan Tuminaro, Ph.D. is a director in Sterne Kessler’s Trial & Appellate and Electronics Practice Groups. Jonathan is an experienced trial lawyer who focuses his practice on complex electronics litigation in the U.S. district courts, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). He has represented some of the leading high-tech companies in patent litigation matters relating to telecommunications, network security, LCD flat-panel displays, computer graphics, automotive technologies, GPS location-based service, and wireless power transfer. Jonathan is particularly well known for his extensive experience handling economics issues in patent litigation—including damages in district court, domestic industry at the ITC, and objective considerations of non-obviousness at the PTAB. He has defended patents that have led to judgments worth nearly $25M and has defended against patents where the damages were alleged to exceed $100M.
David Kuznick is Senior Legal Counsel, IP Litigation at Dell Technologies where he manages a wide variety of intellectual property litigation and plays a key role in Dell’s Open Source initiative. Prior to his litigation role at Dell, David managed a large patent prosecution docket preparing and prosecuting Dell’s patent applications as well as managing outside counsel. Before joining Dell, he was a litigation associate at Fish & Richardson for five years. Prior to law school, he had a twenty year software development career, most recently as a Principal Software Engineer and Director of Product Development at Gensym Corporation.
Suffolk University Law School, JD
Charles Sanders is a partner in the Boston office of Latham & Watkins. His practice focuses on intellectual property matters with an emphasis on patent litigation. Mr. Sanders represents clients as lead counsel in federal district court, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), and the Federal Circuit. He has obtained multimillion-dollar settlements, ITC exclusion orders, summary judgments, and trial and appellate victories. Mr. Sanders has handled a diverse range of technologies, including those involving aircraft, acoustic equipment, automotive components, bio-therapeutics, computer hardware and software, electromechanical devices, environmental remediation, fluid separation, LEDs, MRI, MOCVD, medical devices, OLEDs, network security, pharmaceuticals, rare earth magnets, semiconductors, smart phones, spectroscopy and communication systems.
Mr. Sanders received his J.D. from Harvard Law School and holds an A.B. in chemistry and physics from Harvard University. He is a member of the Boston Bar Association, Boston Patent Law Association, and the ITC Trial Lawyers Association.
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Tim Bedard, a registered patent attorney, is currently the VP- Chief Patent Counsel for Visa. Tim began his professional career as a naval officer serving 8 years in the navy flying the P-3 Orion aircraft and serving as an aide-de-camp to the Chairman of the Joint Chiefs of Staff. Tim holds a BS in Industrial Engineering from the University of Pittsburgh, a Juris Doctor from the Duquesne University School of Law and an MBA from the Yale University School of Management.
Sponsors
Axinn
Axinn combines the skills, experience and dedication of the world’s largest firms with the focus, responsiveness, efficiency and attention to client needs of the best boutiques. The firm was established in the late 1990s by lawyers from premier Wall Street firms with a common vision: provide the highest level of service and strategic acumen in antitrust, intellectual property and high-stakes litigation. Axinn’s lawyers have served as lead or co-lead counsel on nearly half a trillion dollars in transactions and, in the last 10 years alone, have handled more than 250 litigations.
Dennemeyer
Dennemeyer is a full-service IP solutions provider, managing over three million IP rights for over 8,000 customers globally through more than 20 offices. Dennemeyer has provided high-quality services for the protection and maintenance of intellectual property rights since 1962. Our 360-degree approach brings innovative solutions to IP management, including law firm services, IP maintenance services, consulting, IP management software DIAMS, and patent analysis software Octimine.
Latham & Watkins LLP
Latham & Watkins advises the businesses and institutions that power the global economy.
We bring together the world’s best legal talent in every major jurisdiction to shape the deals and win the disputes that transform markets. Our experience at the cutting edge of commercial, financial, and legal innovation enables us to deliver results that fuel our clients’ success.
Our approach is guided by our commitment to quality, our collaborative culture, and our core values.
Unwavering Client Focus
We adopt the urgency of our client’s mission in each engagement. Leveraging vast global resources, we work relentlessly and efficiently to accomplish your goals.
Consistent Excellence
We draw on elite capabilities across more than 60 disciplines to meet the precise needs of each client and matter. With our broad and diversified platform we can anticipate and address any legal or business challenge anywhere in the world — with flawless coordination.
True Partnership
We work to understand your business, goals, and strategy to ensure we deliver advice that meets your legal needs and supports your success.
Strong Teamwork
We collaborate across continents, languages, and time zones to support every client.
Kilburn & Strode
Kilburn & Strode is a European intellectual property firm that protects value for the most innovative organisations. Fiercely committed to diversity, we were initial signatories of the IP Inclusive Charter to support and promote equality, diversity and inclusion in the IP profession. As the first European patent and trade mark attorney firm with attorneys registered to practice European patent law in California, our San Francisco liaison office acts as a hub for local clients.
Cantor Colburn LLP
Cantor Colburn LLP is the fastest growing U.S. patent firm over the last ten years (Juristat). Cantor Colburn is the #3 U.S. law firm for utility patents, #4 for design patents, and #8 for trademarks (IP Law360 and Ant-like Persistence). Cantor Colburn is one of the largest full-service intellectual property law firms in the country, with more than 100 attorneys and agents providing counsel to clients around the globe from offices in Hartford, Washington, D.C., Houston, Atlanta, and Detroit. With highly specialized knowledge and in-depth understanding of clients’ businesses, the firm supports the technological innovations that are driving the world economy. Exceptionally well versed in a wide range of cutting-edge technologies, the firm assists clients in a broad spectrum of industries, including software, aerospace, mechanical engineering, pharmaceuticals, telecommunications, biotechnology, medical devices, and chemical engineering.