The IP Strategy [Virtual Summit]: New York

Paul drafts and negotiates complex IP-related original agreements with R&D partners globally, including national labs, universities, suppliers, scale-up partners and start-ups. He manages global prosecution of a large patent portfolio, relating to a wide variety of products and processes, including lithium batteries, capacitors, complex thin materials, catalysts and chemical processes. In addition, Paul advises clients on all aspects of patent law, including setting up product groups’ IP strategies as needed. He helps clients navigate the minefield of competitor patents, and provides creative training to all clients.

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.

Roger H. Lee focuses his practice on intellectual property law, with an emphasis on inter partes matters before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. He has extensive experience before the PTAB and has successfully represented petitioners and patent owners in inter partes review (IPR) proceedings.

Roger provides strategic counseling and opinions concerning validity, infringement, and freedom to operate. He helps clients navigate complex disputes involving multiple patents and parallel proceedings. He has conducted appeals before the Court of Appeals for the Federal Circuit.

Roger has extensive experience preparing and prosecuting patent applications and managing patent portfolios. He is experienced in all phases of patent prosecution, from drafting applications to conducting appeals. He has obtained numerous patents for clients in the chemical, pharmaceutical, biotechnology, mechanical, and electrical fields.

Ms. Chowdhury is an experienced Seasoned Senior IP Counsel with years of a complete spectrum of strategic global IP experience prosecuting, litigating, licensing, conducting due diligence, & assessing patentability/freedom to operate to support business objectives. She developed and supervised strategic global IP portfolio of companies in line with business objectives considering competitor presence, legal enforceability, and detectability in cost effective manner by saving over $500,000 per year. As first and only in-house patent attorney for last 8 years, established and implemented international trade secret protection plan and managed global IP portfolio of companies. Advised CEO, R&D leaders, and upper management on freedom-to-operate, due diligence investigations, collaboration agreements, in- and out-license deals, joint ventures, and MA matters to assist with business needs.

Gael Diane Tisack is the Global Head of Intellectual Property for Olympus Corporation, managing a patent portfolio of over 25,000 patents and an IP staff of nearly 200 around the globe.  Prior to joining Olympus in 2018 Gael founded and led the Technology Transfer Office at Wichita State University.  Before WSU she was at Terumo Cardiovascular Systems for nearly 13 years where she started as a patent attorney and worked her way to be the Senior Vice President and General Counsel.  She was an Associate Attorney at Brinks, Gilson & Lione after law school.  Gael graduated, cum laude, from the University of Michigan Law School and is a registered Patent Attorney before the U.S. Patent and Trademark Office.   She is a frequent guest lecturer at several universities including Georgetown Law School, the University of Michigan, the University of Maryland and Wichita State University.  Gael has been named an IP Star by Managing IP multiple times and won the Women Leaders in Life Sciences Empowerment Award in 2016   She holds a B.S. and M.S. in mechanical engineering from the University of Michigan and was an engineer and manager at Ford Motor Company for 11 years where she was awarded a patent for a shielded circuit module.

Ivan Kirchev is an Executive Director of IP Strategy at JPMorgan Chase.  In his current role, Ivan is responsible for the overall IP strategy at JPMC and for extracting value from JPMC’s technology and IP by executing all activities around facilitating and closing various partnerships and tech transactions including: commercialization, tech transfers & licensing, joint development & partnerships, investing with IP and technology, patent licensing, mitigating risk, and other business transactions involving JPMC’s technology and IP.  Previously, Ivan was at HP/HPE where he held a variety of roles involving patent development, portfolio management, IP & tech licensing, transactions, and IP strategy.

Mr. Klocinski is Senior Managing Counsel and Senior Intellectual Property Counsel at MasterCard Worldwide, a global technology company and payments industry leader. As an intellectual property professional with more than 25 years of experience cutting across the private and public sectors, Mr. Klocinski has successfully worked with a broad range of technologies including computer software, electronics, advanced business processes, telecommunications, semiconductors and acoustics. Mr. Klocinski’s specialties include intellectual property strategy (with an emphasis on patent portfolio building and management), intellectual property risk mitigation and dispute resolution and treatment of intellectual property in commercial agreements. Prior to joining MasterCard in March 2012, Mr. Klocinski was a Vice-President and Assistant General Counsel at CA, Inc. for six years. As Assistant General Counsel, he designed and implemented the company’s patent program, directed the preparation and prosecution of patent applications, managed intellectual property risk mitigation, supported IP issues in mergers and acquisitions and litigation, managed trademark clearance, filing, prosecution and dispute resolution and managed CA’s copyright program. For three years, starting in 2001, Mr. Klocinski was Assistant General Counsel at Capital One Financial. His responsibilities included, managing invention intake, preparing and prosecuting of patent applications, designing and implementing patent strategy, managing patent risk mitigation, and consulting on patent issues in mergers and acquisitions. In addition to his corporate experience, Mr. Klocinski has also practiced with the Washington D.C. offices of Baker Botts, Hunton & Williams and Finnegan, Henderson, Farrabow, Garret & Duner. Mr. Klocinski’s private practice experience focused on patent prosecution, patent portfolio management, patent litigation and risk mitigation and general intellectual property client counseling. Prior to and while enrolled in Law School at Georgetown University Law Center, Mr. Klocinski worked as an Examiner at the U.S. Patent and Trademark Office where he researched and prepared official actions and appeal briefs for United States patent applications and PCT applications related to image analysis. Mr. Klocinski holds a J.D. from Georgetown Law School and a B.S. in Electrical Engineering from Ohio State University.

Nicholas Kim is a Senior Corporate Counsel at Microsoft Corporation and focuses on IP litigation. Mr. Kim joined Microsoft from the U.S. Department of Justice’s Civil Division, where he was a trial attorney in the Intellectual Property Section. Before that, Mr. Kim was a patent attorney in private practice in Washington, DC.

Rekha is Executive Director, Chief IP Counsel at Akorn, having responsibility for Hatch-Waxman litigation, patent and trademark prosecution, licensing and due diligence matters. Akorn is a niche pharmaceutical company engaged in the development, manufacture and marketing of multisource and branded pharmaceuticals. Akorn is headquartered in Lake Forest, Illinois and has manufacturing facilities located in Decatur, Illinois; Somerset, New Jersey; Amityville, New York; Hettlingen, Switzerland; and Paonta Sahib, India. Rekha joined Akorn after practicing law in the Chicago law firms, Duane Morris and Bell Boyd & Lloyd, later K&L Gates. She is admitted to practice in Illinois and before the U.S. Patent and Trademark Office. Rekha’s experience prior to patent law includes that of a postdoctoral scientist, and stints as a management consultant in sales and marketing in the pharmaceutical industry. Rekha earned her A.B in Biology and Chemistry from Wesleyan College, a Ph.D. in Neuroscience from Northwestern University, and a J.D. from Chicago Kent College of Law. Rekha is a native of Bangalore, India.

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.

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.

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. 

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

I am a seasoned litigator with transactional expertise and a business background. I manage bet-the-company litigations, coordinating all case strategies and overseeing all facets of litigation from risk assessment, counsel selection, budgeting and e-Discovery, to managing experts, briefings, depositions, hearings, trial and appeal. I work closely with all levels of management, including CEOs and boards of directors. I have managed all or parts of more than 25 patent litigations – all resolved in my clients’ favor. Winning verdicts were awarded on dispositive motion, at trial, and on appeal. Technologies litigated include computer software, hardware, and electronics, as well as networks, robotics, power supplies, medical and mechanical devices, control systems and cell phones. Additional areas of expertise: contracts and licensing, Open Source Software compliance, product and marketing compliance, patent claims drafting, post-grant reviews (reexaminations, IPR, CBM), creating patent acquisition and enforcement programs, trade dress, trade secrets, copyrights, unfair competition, F/RAND licensing, standard setting compliance, the Foreign Corrupt Practices Act, mergers and acquisitions IP due diligence, and government affairs for patent reform legislation.

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.

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.

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.