The IP Strategy Summit: East
The IP Strategy Summit East
We are thrilled to be presenting in-person once again!
For the past 18 months, litigation has been on the rise as it is spurred by NPE activity and funded litigation. However, the economy is slowing down and inflation will be an impacting factor into 2023. Combined with these and other domestic challenges, we also face geo-political conflict and turmoil which impacts international IP strategy. How do patent practitioners build on the opportunities that have emerged from the pandemic and come out of an economic downturn stronger?
Come join your IP peers for a day of learning and benchmarking on progressive, actionable insights from the front lines on topics such as:
- Building effective Prosecution and Portfolio Management strategy
- Managing Budgets and getting Buy-In
- Creating Defensive Litigation Strategies
- Building an Enforcement and Monetization Program
- How and when to Utilize IPRs
- Shaping an International Strategy
- and much more . . .
Speakers
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.
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.
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.
Puja Detjen is a partner at Patterson + Sheridan LLP who serves on the firm’s management committee. Her practice focuses on patent preparation and prosecution of both domestic and international patents, global brand protection, and IP due diligence.
Puja is able to parlay her knowledge of clients’ technology and business into a comprehensive IP strategy focused on developing and protecting their innovations and brands.
Prior to her legal career, Puja was an engineer for GE Energy supporting corporate strategy objectives across manufacturing, operations, and supply chain management. Today, she leverages her diverse industry experience to lead the way for clients seeking to align their IP efforts with a strategic plan.
Phil Hirschhorn, a partner at Panitch Schwarze, is a first chair trial lawyer who has been counseling clients regarding and litigating patent license disputes in district courts, the ITC, and in arbitration for over 30 years. He is also very involved with adversarial proceedings before the Patent and Trademark Office. Phil serves as the co-Chair of the Federal Circuit Bar Association’s PTAB/TTAB Committee focusing on inter partes review proceedings before the PTAB.
With over a decade of experience in the IP field and five years as an in-house attorney, Derek Lam is currently in-house IP Counsel at Dell Technologies. His responsibilities include counseling business leaders and employees on a wide range of matters including patents, commercial agreements, M&A issues, patent litigation and post-grant proceeding issues, open source management, copyrights, and trade secrets.
Prior to joining Dell Technologies, Derek was a partner in private practice at Kim IP in the greater Philadelphia, Pennsylvania area; in-house as Senior Patent Counsel for Pegasystems in Cambridge, Massachusetts; and a senior associate in private practice at Wilmer Cutler Pickering Hale and Dorr in Boston, Massachusetts. Before becoming an IP attorney, he worked for IBM as a software engineer. Derek holds a B.S. in Computer Science and Engineering and an M.Eng. in Electrical Engineering and Computer Science from MIT, and a J.D., magna cum laude, from the University of Minnesota 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.
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.
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
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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Karen has led teams in patent infringement lawsuits involving agricultural chemicals, human and veterinary pharmaceuticals, biotechnology products, and networking technologies. In late 2012, Chambers USA Women in Law recognized Karen’s work by nominating her for its 2013 Up and Coming Intellectual Property Lawyer of the Year Award and in 2018, BTI Consulting named Karen as one of 326 outside lawyers, and the only Delaware lawyer, as “absolutely best at client service.”
Karen also serves as a member of the Sedona Conference’s Patent Litigation Working Group 10 on Patent Litigation Best Practices and has been a faculty member for various corresponding Working Group Meetings. Karen served as the President of the Delaware Chapter of the Federal Bar Association, the primary liaison between the district court bench and the Delaware federal bar. In 2013, Karen was recognized for her service to the District of Delaware with the Judge Caleb R. Layton, III Service Award.
Taking on pro bono representations is also a regular part of Karen’s practice, including a civil rights action for discriminatory arrest in which the jury awarded compensatory and punitive damages. After the district court judge overturned the verdict on post-trial motions, Karen successfully argued the appeal to reinstate the jury’s original verdict. She has also successfully represented pro bono clients in immigration, family law matters and before the U.S. Court of Veterans Appeals.
Karen has a Bachelor of Science in Biochemistry and Molecular Biology from The Pennsylvania State University and worked at GlaxoSmithKline conducting drug discovery research. Karen prosecuted patent and trademark applications during law school and worked on other intellectual property litigation matters at an intellectual property boutique firm in Philadelphia and at one of Delaware’s largest law firms before founding Shaw Keller LLP in 2011.
Jennifer is an experienced intellectual property litigator. As a partner at Delaware law firm Morris Nichols, she focuses on patent and trade secret disputes in federal and state court.
Her experience encompasses all aspects of litigation from outset to trial and through appeal in both lead counsel and co-counsel roles.
An MIT graduate with degrees in electrical engineering & computer science and management, she frequently draws on her technical background in her patent litigation work.
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.
Over the course of her nearly twenty-year career, Erin M. Dunston’s practice has been a purposeful mix of patent prosecution and litigation. She concentrates her practice primarily in the fields of biotechnology, pharmaceuticals, medical devices, and associated computer technology. To date, Erin has handled more than 20 district court litigations and more than 25 inter partes reviews (IPRs) and more than 40 interferences before the Patent Trial and Appeal Board (P.T.A.B). Assisting both patent owners and putative infringers/petitioners, this experience ranges from pre-filing analyses all the way through appeals to the U.S. Court of Appeals for the Federal Circuit.
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.
Sponsors
Kramer Levin
Kramer Levin provides proactive, creative and pragmatic solutions that address today’s most challenging legal issues. Headquartered in New York, with offices in Silicon Valley and Paris, our firm fosters a strong culture of involvement in public and community service. We regard it as imperative that we maintain an environment where people from diverse backgrounds can flourish. Over the past three years, 62% of new Kramer Levin partners were promoted from within and 50% were women.
Patterson + Sheridan
Patterson + Sheridan LLP is a boutique IP firm with eight offices nationwide. Our firm’s broad and deep technical expertise sets us apart with 80+ attorneys, patent agents, and technical advisors spanning disciplines in engineering, physics, computer science, biology, materials science, and chemistry. P+S combines technical expertise with an in-depth understanding of intellectual property law and our clients’ business objectives to provide a pragmatic, efficient approach to support licensing and litigation efforts.
With a focus on patent preparation and prosecution since our beginning, P+S has formed decades-long partnerships with companies working seamlessly together to build, leverage, and protect their IP assets. P+S also works with some of the world’s best-known brands, providing cost-effective IP strategies and protection for a range of assets.
Fox Rothschild LLP
Fox Rothschild is a national law firm that delivers strategic and practical solutions for clients. We are innovative and entrepreneurial – a spirit that attracts some of the brightest legal talent from across the country. Home to more than 950 attorneys in 27 offices coast to coast, Fox offers a team of accomplished professionals who deliver high quality, industry-specific solutions to clients’ toughest challenges. Our attorneys deliver strategies that result in productive and cost-effective business outcomes.
Panitch Schwarze Belisario & Nadel LLP
Panitch Schwarze Belisario & Nadel LLP is an IP boutique whose roots run deep in the domestic and international IP communities. Panitch provides litigation, licensing, and strategic counseling services relating to patents across all areas of science, trademarks, copyrights, and trade secrets. Panitch’s team of attorneys and agents form close attorney-client relationships and tailor their services to meet unique client needs.
Shaw Keller LLP
Businesses worldwide entrust their patent infringement disputes to Shaw Keller lawyers across a wide range of technologies, including agricultural chemicals, RNA/DNA sequencing technology, e-commerce systems, software and hardware technologies, audio-visual systems, global positioning systems, multi-function printers, liquid chromatography, and Hatch-Waxman litigation. Our lawyers represent clients in forums across the country, including patent litigation hotbeds in the Northern District of California, the Eastern District of Texas, and the District of Delaware.
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.
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.
Chiesa Shahinian & Giantomasi PC
For 50 years, Chiesa Shahinian & Giantomasi PC (“CSG Law”), a full-service regional law firm with offices in New Jersey and New York, has assisted a broad spectrum of clients in achieving their objectives by offering a comprehensive array of legal services. The firm has been recognized as a Regional Powerhouse by Law360 and the Law Firm of the Year by the New Jersey Law Journal for the firm’s involvement in high profile matters throughout the region. Respected problem solvers, our more than 175 attorneys provide strategic guidance to clients ranging from Fortune 10 corporations to municipalities and family-run businesses.