IP Strategy Summit: Palo Alto

Mindy Morton is a partner in Procopio’s Silicon Valley Office, and she focuses her practice on high-stakes litigation in the areas of trade secrets, health care, technology and internet law. She leads Procopio’s Trade Secrets practice as well as its Health Care practice. She serves as the co-chair for the ABA IP Section’s Trade Secrets Committee and also serves on the Steering Committee for the Sedona Conference Trade Secrets Working Group.  Mindy helps clients resolve disputes involving trade secret, privacy, trademark, copyright, computer fraud and other contentious issues. She represents healthcare providers throughout California in civil lawsuits and judicial review hearings. Mindy also litigates cutting-edge cases at the intersection of technology and free speech issues, defending internet companies against defamation, copyright, trademark and related claims on First Amendment, Communications Decency Act (CDA) Section 230, Digital Millennium Copyright Act (DMCA) and US SPEECH Act grounds. She also leads Procopio’s Diversity, Equity and Inclusion Committee, and is proud of the firm achieving Mansfield Rule Certified Plus status two years running.  Mindy earned her law degree from Yale Law School, serving as an editor on the Yale Law Journal, after a Political Science BA from UC Berkeley, graduating Phi Beta Kappa.

Peter Jovanovic is a Legal Director, IP at Dell Technologies, providing support for several business units.  At Dell, he is responsible for patent portfolio development, patent litigation, open source management, and license drafting and negotiation.  Before joining Dell, he was an associate patent attorney providing prosecution, litigation, and licensing services.  Prior to becoming an attorney, Peter was a software engineer, having experience in computer security, satellite communications, and logistic planning software.  

Peter has bachelor’s degrees in computer science and mathematics from UC San Diego, a master’s degree in computer science from San Diego State, and a juris doctorate from UC Hastings College of the Law.  He is registered to practice before the USPTO and is a member of the California Bar.

Peter is also an adjunct law professor at Golden Gate University School of Law.

Chuck has 30 years of IP experience representing clients in both law firm and corporate settings in patent and other intellectual property matters.  He is currently Vice President, Intellectual Property at Nutcracker Therapeutics and co-teaches a Biotechnology Law seminar at Santa Clara University School of Law. Prior to Nutcracker, Chuck was Director, Biosimilars, and Manufacturing IP Lead at Genentech, heading up a team of patent agents and attorneys supporting Genentech’s cell culture, process development and manufacturing organizations.  While at Genentech, Chuck was a member of the team managing Genentech’s response in the JHL trade secrets misappropriations case. Before Genentech, Chuck served as Vice President, Intellectual Property at Coherus Biosciences, a biosimilars company, where he developed FTO positions for potential new products and managed both BPCIA patent and biosimilars-related trade secrets litigation.  Prior to Coherus, Chuck spent 8 years as an IP attorney at Amgen in a number of roles, including Large Molecule Team co-lead, Neuroscience Therapeutic Area IP Team Lead, and supporting one of Amgen’s biosimilars programs. Chuck earned a B.S. in Cell & Molecular Biology and a B.S.E. in Engineering Science (Bioengineering) from the University of Michigan, a Master’s degree in Physiology from Yale University, a Ph.D. in Neuroscience from Stanford University, and a J.D. from Santa Clara University School of Law.

Dr. Hongming Liu is a Senior IP Counsel at Tencent America.  He formerly worked at Nokia Technologies, a business group of Nokia Corporation, which also includes HERE and Nokia Networks. At Tencent America, Hongming’s primary function is patent portfolio management and invention harvesting. Prior to Nokia Technologies, Hongming worked as a software developer and software architect. Hongming has taught graduate and undergraduate computer science and software engineering courses at DePaul University, Chicago. Hongming received his juris doctorate and doctorate in Computer Science from DePaul University, and his undergraduate degree from University of Science and Technology of China.

Harry heads our San Francisco liaison office and focusses on the European needs of our clients in the Silicon Valley. With a background in physics, he primarily works on software, automotive and autonomous driving technologies. His practice involves advising on filing strategies across the globe, particularly for Silicon Valley companies, with a focus on balancing efficiency with strength of IP protection. While Harry’s expertise relates primarily to software and borderline eligibility technologies, a core part of his practice is working closely with companies on European strategy, management/processes and urgent advice relating to European or UK patent protection. Harry has particular expertise in risk assessment (freedom to operate) and patent portfolio strength analysis as companies approach IPO.
 
Harry also advises on a variety of technologies, such as healthcare, as they move over into the software and AI sectors. Recent work has involved drafting an application for the use of AI in predicting patient responses to DMARDs, and providing patentability opinions for machine learning technologies applied to a variety of life sciences technologies.
 
Due to his Pacific time zone, Harry serves as a first port-of-call for any quick advice or matters that require urgent attention on Pacific time.

Paul is the Global head of Intellectual Property at TuSimple, a self-driving truck company based out of San Diego, California.  At TuSimple, Paul oversees the intellectual property function with a team of attorneys, patent agents, and paralegals to align the company’s intellectual property with the business to obtain proactive, high impact, and creative protections via patents, trademarks, trade secrets, and copyrights.  He is a subject matter expert for intellectual property assets associated with mechanical engineering, electrical engineering, and computer science technologies.  He has been recognized by leading industry publications such as Intellectual Asset Management (IAM) as one of “The World’s Leading IP Strategists” as part of the IAM300.

Caity Ross received her JD from Harvard Law School and her BA from Colorado College in Biochemistry & Classics-History-Politics. After working for the start-up Gamblit Gaming, Caity joined SharkNinja in 2019 as a Senior Patent Counsel.  She has focused on international patent portfolio management for the Shark brand, now holding the Associate General Counsel, Global IP & Robotics position at SharkNinja.

Erin Collins is an intellectual property attorney at The Clorox Company. Her responsibilities include: patent portfolio strategy, trade secret processes and protection, patent drafting and prosecution management, freedom to operate opinions, Intellectual Property (IP) training and guidance for technology partnerships, licensing, and IP litigation support and IP due diligence.

Prior to joining Clorox, Erin worked as a Patent Examiner at the United States Patent and Trademark Office (USPTO) headquartered in Arlington, Virginia. During her time at the USPTO, she worked in the Chemical Technology Center working on applications for semiconductor coatings. After working at the USPTO, Erin spent for a couple of years in the patent prosecution group with Carr & Ferrell in Palo Alto. While she was working at Carr & Ferrell, she attended law school and became a registered patent agent.

She received a J.D. from Santa Clara University and a B.A. in chemistry and political science from Wesleyan University, in Middletown, Connecticut.

Erin is an active member of ACC, NextUp and LCLD. Erin enjoys working on pro bono programs and community service activities, including with the Junior Achievement, SF Opera and Ballet, Family Violence Law Center, Clean Slate and the Safe Surrender Program with East Bay Children’s Law Offices.

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

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.

Andrew Radsch is an experienced trial lawyer in Ropes & Gray’s intellectual property litigation group, where he represents clients in patent and trade secret litigation in jurisdictions across the country.  He has experience across a spectrum of industries and technologies, including computer software and hardware, consumer electronics, wireless communications, semiconductor manufacturing, and medical devices.  Andrew, who has been selected by his peers as a Super Lawyers Rising Star in IP Litigation, also works frequently with clients to develop and execute on offensive and defensive IP and licensing strategies.  

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.

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.

Bryan Kohm practices intellectual property litigation, with a focus on representing high technology and life science companies in patent infringement and trade secret misappropriation disputes. Bryan has experience in a wide variety of venues throughout the country, including federal and state courts, the International Trade Commission, and the Court of Appeals for the Federal Circuit. Bryan has been recognized as a “Rising Star” in the area of IP Litigation by Northern California Super Lawyers in 2013 and 2014. He was recently appointed co-chair of the ABA’ Committee on Intellectual Property Litigation.

Dr. Jiaping (Charlene) Liu is an intellectual property lawyer with an extensive knowledge of patents and a focus on patent prosecution and assertion matters. Charlene performs client counseling, portfolio development and management in various technological fields, and in particular focusing on AI and deep learning, medical devices, semiconductors, integrated circuits, financial service, and network security. Charlene also frequently counsels clients on assertions and licensing disputes, such as in the realm of standard essential patents.

Before her legal career, she obtained her Ph.D. in electrical engineering from Princeton University, and was a Gordon Wu fellowship recipient. Her doctoral work focused on stochastic modeling of data networks, and she worked on wireless transmission protocols for ad hoc networks at Bell Labs during graduate school.

Katie specializes in corporate partnering, strategic alliances, privacy, technology protection, and licensing and commercialization of intellectual property and technology assets. Katie advises venture capitalists and companies on intellectual property, technology and privacy aspects of venture capital financings and merger and acquisition deals. Katie represents a wide variety of technology companies from consumer internet, consumer products, ad tech, health tech, financial technology, software and SaaS, media, and entertainment technology industries, as well as a number of leading venture capital firms. 

Katie has represented start-up and emerging growth companies in negotiating major corporate partnering deals, strategic alliances, and licensing arrangements with many large U.S. and international companies, including Alibaba, Autodesk, Comcast, Google, eBay, Facebook, NBC, Nielsen, MasterCard, Microsoft, Oracle, PayPal, Pinterest, Samsung, Time Inc., Twitter, Verizon, Walmart, Yahoo, and Zynga. 

Katie’s practice focuses on a broad array of technologies, including software, hardware, e-commerce, media, mobile and tablet applications. She assists clients with website, application, bot and internet of things terms and conditions and privacy policies, license agreements, support and maintenance agreements, SaaS offerings, promotion and marketing agreements, collaboration and development agreements, distribution agreements, reseller agreements, evaluation and beta testing agreements, and a variety of other in- and out-licensing deals and services arrangements. 

Katie is a Certified Information Privacy Professional (CIPP), holding the U.S. private-sector privacy certification granted by the International Association of Privacy Professionals (IAPP), the global standard in privacy certification. The CIPP/US certification demonstrates strong foundation in U.S. private-sector privacy laws and regulations and understanding of the legal requirements for the responsible transfer of sensitive personal data to/from the U.S., the EU and other jurisdictions. 

Kristopher B. Kastens advises and represents clients on issues at the intersection of law and technology. Kris represents clients in patent litigation across multiple technology areas, including computer security, cryptography, artificial intelligence, distributed systems, and network infrastructure. He also advises on the various legal issues intertwined with the development of blockchain technologies and has been a frequent author on blockchain-based technologies and the law.

Daniel Richards is counsel in Ropes & Gray’s intellectual property group. He focuses his work on patent litigation involving a variety of technologies, including mobile device, semiconductor, computer software, RF, networking, LCD display, content distribution, signal processing, and telecommunications technologies. Daniel is experienced in all stages of district court and ITC litigation from pre-suit investigations, discovery, claim construction, pre-trial proceedings, trial, and post-trial briefing, and appeals. Daniel also has extensive experience in all stages of proceedings before the patent office. His experience spans all aspects of both bringing and defending against inter partes review petitions, as well as preparing ex parte reexamination requests.

David H. Herrington handles high-stakes intellectual property and commercial disputes in domestic and cross-border matters. David has helped clients achieve victories in pursuing and defending against claims of trade secret misappropriation and infringement of patents, copyrights, and trademarks, as well as disputes concerning IP licenses, employment restrictive covenants, and other commercial matters. He has led multiple IP and commercial suits through trial and appeal and in international arbitrations. He also counsels on IP and employment issues in the transactional context, including mergers and acquisitions, licensing, and capital markets transactions.

Rakesh Michael is a Director on the IP Team at Uber. Rakesh leads various IP functions at Uber, including the Uber IP Team’s conflicts practice (which covers both IP litigation and pre-litigation IP disputes), the Uber Open Source Legal team, and all patent portfolio development for Uber’s mapping and AV platform businesses. Rakesh also has significant in-house experience with IP issues that arise in the context of M&A, tech transactions, licensing agreements, compliance, employment, and corporate tax matters. Rakesh is passionate about exploring innovative approaches to reducing IP risk for business clients, and increasing diversity among IP professionals and inventors. Rakesh earned his JD from the University of Michigan Law School and his Bachelor of Science in Computer Engineering from the University of Michigan College of Engineering.

Heath Briggs is Co-Chair of Greenberg Traurig’s Global Patent Prosecution Group and has more than 19 years of patent prosecution experience and 10 years of AIA trial experience.  Heath has handled over 120 inter partes review proceedings (IPRs) across a wide variety of technologies, with significant experience in LEDs, telecommunications, and medical devices.  Heath has regularly been ranked as one of the most active and successful IPR attorneys in the country, and Heath’s briefing in Becton, Dickinson & Company v. B. Braun Melsungen AG, resulted in the precedential Becton factors.  Since 2005, Heath has served as an Adjunct Professor at the University of Colorado at Boulder, where he teaches engineering students a self-designed course on intellectual property law.

Derrick’s practice encompasses advising and assisting clients during all phases of the patent life cycle, from prosecution strategy and freedom to operate analyses, to litigation and “alternatives to litigation” such as USPTO post-grant proceedings, to patent acquisition, licensing, and settlement. Leveraging his skill as both a registered patent attorney and experienced patent litigator, he has prosecuted and litigated patents in mechanical and software-related fields. Derrick has represented clients in intellectual property disputes in district courts nationwide, from California to Massachusetts to Puerto Rico, and points in between, and on appeal to the Federal Circuit. He also has extensive experience in preparing and defending inter partes reviews, reexaminations, and other USPTO post-grant proceedings, routinely arguing before the Patent Trials and Appeal Board (PTAB).

Malgorzata “Gosia” Kulczycka is an experienced attorney in the firm’s San Jose office with a broad-based IP law practice. With more than 15 years of legal experience, Gosia works to protect and support her client’s intellectual property through patent preparation and prosecution and by employing trademark and brand protection strategies for and against infringement claims.

Inventor herself, Gosia practices in various IP areas and technologies, including artificial intelligence and machine learning, communication technologies, complex software, and more.

Gosia also has extensive experience in computer graphics and computer networks. She has procured and managed large IP client accounts in computer graphics and AI.

Jialing Dailey, Director of IP at Atlassian, is a seasoned IP attorney advising product and business teams on a wide range of complex IP issues arising from the product life cycle, strategic business initiatives, and high-profile transactions and M&A deals.  Jialing has extensive experience in licensing, product counseling, open source, copyright, trademark, trade secret, and privacy, and has been involved in creating or updating Atlassian AI Policy, Atlassian Open Source Policy, Atlassian Trade Secret Policy, and Atlassian standard customer facing agreements.  Prior to joining Atlassian, Jialing was a transactional attorney on the Oracle Development and Engineering Legal team, a patent prosecution attorney at Peters Verny in Palo Alto, and a Patent Examiner at the China National Intellectual Property Administration.

Elana B. Araj focuses her practice on patent, trademark, and copyright infringement litigation in district court and post-grant review proceedings before the U.S. Patent & Trademark Office. Elana has experience in all stages of litigation from pre-litigation diligence through trial and appeal. Elana also advises with respect to patentability, provides freedom to operate analyses and opinions, and prepares and prosecutes domestic and foreign utility and design patent applications. In addition, Elana has experience in the licensing and transfer of intellectual property, as well as experience with privacy-related issues. She counsels clients across a range of industries, including consumer products, health care, medical devices, and software technologies. Prior to practicing law, Elana was a patent examiner with the United States Patent and Trademark Office for four years.

Dylan Wiseman is the Co-Chair of Buchalter’s Trade Secret and Employee Mobility Practice Group. His practice focuses on intellectual property protection, including representing employers as plaintiffs in cases involving:

• Trade secrets
• Unfair competition
• Employee mobility disputes
• Cloud-based data theft
• Disputes involving customer and employee non-solicitation restrictions
• Social media, workplace privacy, BYOD devices, and eDiscovery

Mr. Wiseman also defends businesses accused of engaging in trade secret misappropriation and acts of unfair competition. He also counsels employers and start-ups regarding best practices for intellectual property.