IP Strategy Summit: New York

Frank J. Nuzzi is Principal Counsel – IP Litigation & Disputes for Siemens Corporation, located in Iselin, New Jersey.  Prior to joining Siemens, Frank was in the litigation department of Clifford Chance where he specialized in patent litigation. Education NYU School of Law, JD Executive Editor of the Annual Survey Of American Law. Lehigh University, B.S and M.S. in Mechanical Engineering Engineering honor society, Tau Beta Pi.

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.

Joseph Bonassar is General Counsel and Global Legal Director at Dymax Corporation (https://dymax.com/ ). He joined Dymax in 2017 to create its first in house legal department, and  is responsible for all Legal, Compliance, Regulatory, IP,  Government Relations, and Environment, Health & Safety Matters.  He is a member of its Global Leadership Team.  Dymax is a leading global solutions provider of integrated rapid and light-cure formulations and equipment for the aerospace, defense, medical, consumer electronics, and automotive electronics markets.

In addition to being an attorney, Mr. Bonassar is also an engineer.  Prior to his role at Dymax, he was both an engineer and attorney at United Technologies, and he led legal teams at Konica-Minolta and Intertek.  His role at Dymax has focused on the company’s rapid growth strategy into new markets and territories, and he has worked with regulators and officials around the world.

Mr. Bonassar holds a BS in Chemical Engineering from Lehigh University, and Juris Doctorate from The University of Connecticut School of Law.

Drawing on two decades of experience with emerging technologies, first as a Department of Defense engineer and now as a lawyer, Pejman offers companies of all sizes the strategic assistance they need to achieve their goals.

Edward is Vice President and Senior Counsel for Intellectual Property at MasterCard. He has over a decade of legal experience. Prior to MasterCard Edward held associate positions at bother Baker Botts LLP and Petterson Belknap Web & Tyler LLP. Edward earned his B.S. in Chemical Engineering from Carnegie Mellon University and his J.D. from Cornell Law School.

Joe is the Assistant General Counsel for Litigation and Intellectual Property at Mitsubishi Chemical America, Inc. where he advises clients about handling disputes and litigation, compliance, and intellectual property. Before joining Mitsubishi Chemical, Joe was a Senior Associate in Orrick, Herrington & Sutcliffe LLP’s Intellectual Property Group where he focused his practice on patent and trademark litigation. Joe is a 2006 graduate of the Benjamin N. Cardozo School of Law and a 2000 graduate of Columbia College where he graduated with a degree in Biochemistry. He lives in New York with his wife, daughter, and son.

Joseph Codispoti is a seasoned patent attorney with a long and demonstrated history of high performance and achievement as an attorney and a law firm director. He has worked in-house, at large law firms, and operated two small law practices. He is equally adept at working directly with individuals and collaboratively as a team member across different jurisdictions and multiple companies. 

Intellectual Property pattern and co-chair Jonathan S. Caplan represents clients in patent litigation, counseling and prosecution, as well as in general corporate matters involving the acquisition, sale or licensing of intellectual property rights.

Jonathan litigates patent infringement actions in federal district courts across the country, in the Court of Appeals for the Federal Circuit, and in state courts, both representing patent owners seeking to enforce their rights and defending companies against allegations of infringement.

Atabak Royaee serves as the Senior Director and Assistant General Counsel, IP, at Regeneron. In this role, Atabak provides comprehensive IP strategy and portfolio development advice to business teams, supports the business development function, counsels on IP licensing and transactions, manages manufacturing IP clearances, and advises the companion diagnostics and precision medicine teams on IP risks. Prior to joining Regeneron, Atabak spent over six years at Boehringer Ingelheim Pharmaceuticals, Inc. Before that, he worked at various law firms for over a decade. Before practicing patent law, Atabak was a postdoctoral fellow at the Harvard School of Public Health and the U.S. Department of Agriculture, specializing in immunology and infectious disease research. Atabak holds a Ph.D. in biochemistry and molecular biology, a B.S. in chemistry from Georgetown University, and a law degree from Suffolk University Law School.

Jason LaBerteaux joined MetLife in 2019 and serves as AVP & Assistant General Counsel with the Global IP/Technology Unit. In his counseling, he primarily focuses on the protection of enterprise intellectual property and on the legal issues related to technology, including outsourcing and the implementation of global platforms. Jason is also responsible for negotiating IT transaction agreements, enabling roll out of the enterprise digital strategy. He also provides intellectual property and information technology legal support to M&A transactions, including due diligence reviews of intellectual property assets and drafting and negotiating transitional services agreements.

Jason is a member of the ACLI Innovation Subcommittee and Federal Quick Reaction Team that focuses on industry regulatory initiatives. Prior to MetLife, Mr. LaBerteaux worked at a number of law firms in the New York area with a focus on software procurement agreements (SaaS, IaaS, outsourcing, and music licensing), IP litigation, Inter Partes Reviews, IP licensing, M&A, and patent prosecution. Jason received his BS in electrical engineering from the University of Louisiana at Lafayette in 2008, and his JD from the University of Connecticut School of Law in 2011. 

Jesse Bucholtz is Senior Patent Counsel at Canon USA. He’s earned a BA in Political Science and Philosophy from Binghamton University an MS in Biology and Immunology from NYU and his JD from Cardozo School of Law. Prior to Canon he was a Senior Associate at Jack Schwartz & Associates PLLC.

Jeffrey Waters concentrates his practice on drafting and prosecuting patents for mechanical and electrical innovations. In particular, he has experience with patent issues relating to GPS, Internet and e-commerce, semiconductor devices and processing methods, and telecommunications. While Jeff’s practice focuses on patent drafting and prosecution, he also has experience with patent litigation, having defended multiple patent infringement lawsuits. Jeff also has experience in conducting due diligence investigations and drafting opinions.

Dania Nasser is the Senior Associate General Counsel at Canon Business Process Services. Prior to working in this role she was the Business Operations and Compliance Counsel at Ralph Lauren. Dania acquired her law degree from Yale University.

Nicole A. Spence is a Brand Legal Counsel for IBM’s Data and AI business unit, as well as one of IBM’s AI and IP Policy attorneys for North America. She is also a certified information privacy professional in the US and the EU. Prior to IBM, Nicole practiced as a litigator for more than seven years, and she had her own practice for more than two years, where she advised start-ups in FinTech, music, fashion and software on IP and corporate matters. She earned her BA in Molecular Biology and History at Smith College, and her JD from New York Law School.

Uma N. Everett is a director in Sterne Kessler’s Trial & Appellate Practice Group. She tries patent cases in federal courts across the country and before the United States International Trade Commission. Uma is experienced in all aspects of litigation, from pre-suit investigation through trial and appeal. In addition, she has handled appeals before the United States Court of Appeals for the Federal and Third Circuits and contested proceedings before the Patent Trial and Appeal Board. Uma has advised clients and litigated cases involving patents, trade secrets, contractual claims, as well as those involving a broad range of technologies, including pharmaceuticals, medical devices, LEDs, vehicle systems, telephone systems, communication systems, and consumer products.

Wendy R. Stein focuses on intellectual property litigation, litigating patent infringement, trade secret misappropriation, and other commercial litigation matters in the life sciences, real estate, and software fields. For more than two decades, she has litigated intellectual property and related commercial disputes in federal and state courts throughout the United States, including before the Court of Appeals for the D.C. and Federal Circuits.

David Shofi is an attorney and IP strategist with over 24 years of experience in technology and intellectual property.  He is presently Chief Legal Officer for Univercells, a Belgian business-to-business technology provider focused on increasing the availability of affordable vaccines and biotherapeutics to address global health challenges. Previously, as Vice President, IP Strategy Solutions and Chief IP Counsel for CPA Global, David helped clients of all sizes assess and identify opportunities for improvement of their IP processes  As CIPC for ATMI, a semiconductor and lifesciences company, David managed all aspects of IP – strategically building the IP team and portfolio toward a successful company divestiture.  David also served as IP Counsel for IBM Corporation, where he led development of processes relating to standards, open source software and due diligence.  He was also an associate at the Baker Botts law firm.  David earned his law degree from Pace University School of Law and a Bachelor of Science in Electrical Engineering from Columbia University.  

Ron Cahill is well-respected for his work with clients of virtually all sizes to solve their most challenging intellectual property problems. A first chair IP trial attorney and Chair of the Barnes & Thornburg national Life Sciences Practice Group, he specializes in breaking down complex life sciences intellectual property issues for juries, judges, and the PTAB. With decades of courtroom experience, Ron has led trial teams in patent infringement cases around the country. He also conducts inter partes reviews (IPRs) and other proceedings in the U.S. Patent and Trademark Office to determine patent validity. While much of Ron’s work involves presenting his clients’ cases to judges and juries around the country, many clients ask him to apply his experience to strategic planning within their business, especially with respect to their competitors or potential deal partners. Ron’s life science work covers a wide range of products, technologies, and legal issues, with recent engagements including CAR-T cancer treatments, small molecule enzyme inhibitors, personalized medicine, and genetic engineering of metabolic systems to produce desired outputs. Recent legal issues have included the scope of written description and enablement in the drug discovery context, the obviousness of engineered biologics, infringement based on biochemical function and property limitations, induced infringement of method of treatment claims, and the strategic use of IPRs to avoid litigation.

Maharaj Mukherjee has a PhD in Computer and Systems Engineering from the Rensselaer Polytechnic Institute and a B-Tech in Electrical Engineering from the Indian Institute of Technology at Kharagpur. He has been working for IBM Research for seventeen years. Before that he served as a faculty at the Electrical and Electronics Communication Engineering at the Indian Institute of Technology at Kharagpur. Currently he works at the IBM’s corporate IP team leading the Bigdata and Analytics project. He is also the chair of IBM’s Smarter Planet Invention Development Team. He is also a member of IBM’s Academy of Technology. His main areas of interest include: Geometric Algorithms and its applications within the fields of Big data and Analytics, Smarter Planet and Internet of Everything, CAD/CAM/CAE, and Electronic Design Automation. He has been twice selected as a Master Inventor at the IBM and is also inducted at the IBM’s Inventor Wall of Fame at the IBM East Fishkill site in New York. He holds 44 US patent and 40 patents in other countries including, Germany, UK, France, Italy, China, Korea, Japan and Brasil. He also has several pending patents in US and other countries. One of his patents on Predictive Traffic Modeling has been chosen by IBM as one of the best twenty patents from past twenty years. Maharaj has monitored several new inventors who had filed for patents and patent applications. Maharaj has given several invited presentations including the Keynote presentation at the Computational Intelligence and Networking (CINE-2015) Conference in January 2015.

Based in Boston, Mark is a member of the firm at Bond Schoeneck & King PLLC.  He is a seasoned patent attorney with almost 25 years of experience, both in-house and in private practice, in supporting innovation in the healthcare, information technology, lighting, consumer goods and electronics sectors. Mark is a strategic adviser to his clients, skilled at managing global IP portfolios in alignment with business objectives and guiding business leaders, inventors and entrepreneurs on the strategies, tools and techniques for protecting the fruits of their innovation.

While serving as the Deputy General Counsel, IP at Color Kinetics, the LED lighting pioneer, Mark accelerated patent filings and orchestrated the company’s patent portfolio coverage assessment, facilitating the imminent acquisition by Philips for ~$800 million. Mark then spent 14 years in leadership roles at Philips Intellectual Property & Standards, working closely with Research and various business clusters and units of the company.  Immediately prior to joining Bond, Mark was the Head of IP for a NASDAQ-listed public company, where he built the IP function from the ground up and led the IP strategy development. Prior to going in-house, Mark was an IP associate at two large general practice law firms in Boston, representing technology clients such as Boston Scientific, the Charles Stark Draper Laboratory, E-Ink Corporation, and Massachusetts Institute of Technology in patent matters.

Mark is a graduate of National Technical University of Ukraine and Boston University School of Law.

An accomplished courtroom advocate and counselor to management teams and boards of directors, Robert helps life sciences companies of all sizes navigate business conflicts. His industry knowledge, legal experience, and education through a B.S.E. and M.S.E. in biomedical engineering enable Robert to guide companies through all manner of patent, trade secret and commercial disputes. Robert’s courtroom experience crosses trial and appellate courts throughout the U.S. and PTAB. And, he has advised clients on cross-border litigation strategies involving multiple U.S. and foreign jurisdictions. He has litigated disputes in technologies across the life sciences industry, including small molecules, biologics, gene therapy, medical devices, and software of behalf of clients including UCB, Pfizer, Novo Nordisk, AnaptysBio, Avalyn Pharma, and Passage Bio.

Linnea Cipriano is a partner in Goodwin’s Intellectual Property Litigation group. Her practice focuses on patent litigation in federal courts and the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB).

Linnea has particular expertise in litigation and counseling in the pharmaceutical industry, including preparing for and representing clients in district court litigation under the Hatch-Waxman Act and BPCIA. Ms. Cipriano’s experience extends to patents in the broader life science industry, including nutritional supplements, chemical manufacturing, DNA-based technology, medical devices, and drug delivery technologies.

Linnea also focuses her practice on post grant proceedings at the PTAB and has represented clients in both inter partes review (IPR) and post grant review (PGR) proceedings. Ms. Cipriano has represented petitioners and patent owner’s in a wide variety of technologies, including pharmaceutical formulations, electronic devices, manufacturing methods, and medical devices.

Linnea s practice combines her in-depth knowledge of patent law with her scientific experience to serve her clients. She holds a graduate degree in pharmacology, and before pursuing a career in law, performed research at the Cleveland Clinic.

Lloyd Smith focuses his practice on intellectual property litigation and enforcement matters. His case experience includes trademark infringement, false advertising, patent infringement, and unfair competition trials and litigation in venues nationwide. He litigates before numerous U.S. District Courts nationwide, the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit, the Third Circuit, and the Eleventh Circuit. Lloyd is the Co-Chair of the firm’s Intellectual Property section and IP Litigation group, Chair of the firm’s practice group for litigation in the U.S. District Court for the Eastern District of Virginia. He is recognized in IAM’s Patent 1000 list, the best-in-class listing of patent prosecution, licensing and litigation practitioners.

Bill Parrish is an IP litigator and neutral mediator in Stradling’s IP practice group in Austin. He grew up in Texas and has lived and practiced there for 40 years. He has 40 years of experience representing plaintiffs and defendants in intellectual property and other complex commercial litigation. He was named Best Lawyers® 2020 Patent Litigation “Lawyer of the Year” in Austin and has repeatedly been listed in the Best Lawyers® categories of Bet-The-Company Litigation, Patent Litigation, IP Litigation and Commercial Litigation. He’s rated “AV® Preeminent™” in the Martindale Hubble Judicial Edition®, the highest possible rating in both legal ability and ethical standards based upon confidential opinions of members of the Judiciary as well as members of the Bar.

Kaitlin Farrell is a Partner in the New York office of Haug Partners, where her practice specializes in patent and intellectual property litigation, including pharmaceutical patent litigation under the Hatch-Waxman Act. Ms. Farrell has successfully litigated matters before various courts and has developed experience in key patent venues such as New Jersey, Delaware, the Western District of Texas, the Federal Circuit, and the U.S. Patent Trials and Appeals Board. Ms. Farrell’s litigation experience spans a wide array of technologies, including drugs (prodrugs, salts, antihemophilic biologics, peptides, radioligand therapy), medical devices (cardiovascular stents, dental implants), automotive technologies, and mechanical technologies.

Ali Berkin, Ph.D., is an associate who has been with the firm since 2002, focusing on pharmaceutical clients. During this time he has worked extensively on both litigation and prosecution matters for brand and generic pharmaceutical clients. With more than a decade of experience, Dr. Berkin has a unique expertise of having a dual approach to any issue and the ability to consider a subject through a mutual understanding of competing strategies, such as anticipating arguments of opposing counsel. Dr. Berkin has worked with a vast range of pharmaceutical products and dosage forms, giving him a deep knowledge base in the pharmaceutical industry. He understands and easily recognizes the function that excipients have in pharmaceutical formulations. This ability is valuable to the firm’s clients as pharmaceutical formulations become more complex and the ability to protect intellectual property becomes more intricate. Dr. Berkin is also an expert in patent and literature searching, saving clients time and money, and served on the Scientific Advisory Board of the Science and Technical Network (STN) of the Chemical Abstracts Service, a division of the American Chemical Society.

Dina Blikshteyn is a thought leader in AI and focuses on technology. As a partner in the Intellectual Property Practice Group at Haynes and Boone and a co-chair of the firm’s AI practice in New York, Dina’s expertise extends to post grant proceedings before the U.S. Patent and Trademark Office, preparing and prosecuting domestic and international patent applications, as well as counseling on new AI technologies, including generative AI. Her extensive publications and speaking engagements on AI topics make her a valuable resource for anyone looking to stay up to date on the latest AI developments.