The IP Strategy Summit: West

Fabio Marino is an experienced intellectual property trial lawyer that focuses his practice on high-stakes patent, trade secrets, and copyright cases across the United States, with an emphasis on computer-related technologies and arguing appeals at the Federal Circuit. He has experience in a variety of technologies including, computer networks, telecommunications, software engineering, e-commerce, internet-related technologies, computer architecture, digital circuit design, flash memory, DRAMs, parallel computing, 3-D graphics and animation, medical imaging, and artificial intelligence.

Thomas (Tom) Wallerstein is a founding partner of the Venable LLP San Francisco office and an accomplished litigator and trial lawyer whose practice focuses on all types of complex commercial litigation across all industries, particularly including trade secret and related litigation. His matters often involve tens or hundreds of millions of dollars at stake, and last year Tom prevailed in a three-week long arbitration hearing in which his clients were awarded over $100 million.  

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.

James specialises in patent matters relating to chemistry, particularly pharmaceuticals, polymers and other materials. His pharmaceutical experience focusses on small molecule and nucleotide therapies for infectious diseases, cardiology and oncology, as well as cannabinoid inventions.  His materials practice spans bioplastics to graphene and encompasses a variety of applications.

James works with a broad range of clients, including global corporations, SMEs, start-ups and academic institutions. He has extensive experience drafting and prosecuting patent applications in Europe and the UK, as well as co-ordinating prosecution of patent portfolios worldwide.

After a first career in the nuclear power industry, including a two-year secondment at Boulder University in Colorado, Freddy joined the IP field as an in-house patent engineer in the connector industry where he was in charge of patent harvesting and profile for the company’s European and Asian divisions.

Freddy later on joined a prominent French IP firm where he advised various clients on patent filings and infringement, notably in mechanical engineering, electronics and software.

After qualifying as a European Patent Attorney in 2005, he joined one of the major telecommunication operators in Europe to develop the patent portfolio for its international labs, harvesting inventions from various countries including the US (San Francisco, Boston), Japan (Tokyo) and China (Beijing), as well as Europe (Paris, London, Madrid, Warsaw) and Africa (Egypt, Ivory Coast).

Freddy has a strong understanding of in-house IP issues and needs – from budgets to strategies. In the course of his in-house and private practice experience, he has analysed over 400 inventions that led to patent filings, drafting patent applications on a majority of these himself. He has managed a broad and diverse range of filing programs before the French Patent Office, EPO, USPTO and WIPO. He has also mentored a number of start-ups to identify and capture their IP.

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.

With ~10 years of IP prosecution and in-house patent management experience, Shubha is currently employed at the Kudelski Group as IP Portfolio Manager. Here, Shubha is on a team that manages the Group’s global patent and trademark portfolio – filing new inventions, prosecuting the existing portfolio and assisting in efforts to monetize granted patent assets. Her strength lies in being the bridge between tech and legal.

In the past, Shubha has worked at Kyocera Document Solutions and at Intellijoint Surgical Inc. where she grew her employer’s global patent portfolio in line with the IP strategy. She previously worked at Ridout & Maybee LLP in Canada where her practice included patent and trademark prosecution (such as responses to office actions, patent prior art searches, trademarks pre-clearance searches, trademark cancellation and opposition proceedings).

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.

Elin is the Vice President Patent & Legal Operations at Gilead Sciences. She supervises patent portfolio management and strategy for all therapeutic areas and assists with business development and litigation activities. In conjunction with assisting the business development area, Elin is responsible for the team that conduct s and supervises due diligence reviews and investigations of target companies and potential research and development partners. She also works extensively with the Contracts group, advising on IP terms in contracts and other deal documents.

In her role as head of Legal Operations, Elin is responsible for the teams that manage Legal’s software systems including patent and litigation docketing, financial matter management, outside counsel rate negotiations, contract management, and document management.  Elin also is a member of the Gilead Strategic Technology Committee which reviews and approves funding for technology and IT system development across Gilead.

Elin was Senior Patent Counsel at CV Therapeutics, Inc. prior to its acquisition by Gilead in 2009, where she handled various cardiovascular portfolios and assisted with business development work. Previously, Elin was an associate with Burns, Doane, Swecker & Mathis, L.L.P. and with Reed & Associates. She has undergraduate degrees from the University of Michigan in English, Mathematics, and Chemistry, a J.D. from Loyola University Chicago School of Law and an LL.M. from John Marshall Law School.

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.

Kari Barnes has over 15 years of experience in complex intellectual property matters. She advises clients on a broad range of Intellectual Property prosecution and associated transactional endeavors. She also assists in the defense and enforcement of Intellectual Property assets to protect market share and monetize IP portfolios. Ms. Barnes is proficient in domestic and international patent prosecution for a wide variety of technologies, including electronic devices, computer hardware and software, aerospace, and medical devices.
Ms. Barnes currently advises a number of technology companies around the Alice decision—a Supreme Court case ruling a software method unpatentable as an abstract idea. Her experience in technology patent prosecution includes identifying users on a network, propensity assessments based on user activities, data transfer through storage area networks, devices and methods for secure remote access, data encryption and transfer, authentication methods and algorithms, statistical assessments for medical analysis based on historical data sets, devices and signal processing for long range communication systems, electronic hardware accessories for mobile and computer devices, user interface hardware and software for controlling mobile devices, and devices and methods for augmented or virtual reality systems including distortion correction, personalization detection and calibration.
Ms. Barnes has extensive experience assisting aerospace, medical device, and other companies and the unique needs of these companies as they work with the government under government contracts. The intellectual property requirements and obligations change under many of the regulations defining government contract terms, and Ms. Barnes has extensive experience guiding and counseling clients through these complex regulations. She has participated on a number of government sponsored programs supporting recipients of the Small Business Innovative Research grants, and has lectured groups, and counseled clients on how to maintain and maximize intellectual property rights in view of these regulations. Ms. Barnes has counseled aerospace companies including light weight space inflatables, self-navigating aircraft, drones, and long range communication systems under the SBIR grants of the DoD, NASA, MDA, and JPL, and medical device companies including in field diagnostic and medical devices under the SBIR grants of the army, DoD, and NIH.
Ms. Barnes currently advises a large international medical device company on its intellectual property strategy, including creating and maintaining a foreign and domestic patent portfolio; offensive and defensive opinions regarding infringement, freedom to operate, and patentability; as well as assessing the intellectual property assets of potential acquisitions. She has prosecuted a large number of patents protecting stents, catheters, catheter placement systems, needle safety devices, ultrasound devices, urological slings, and other implants and delivery systems. She also advises a number of mid-sized and smaller medical device companies in their intellectual property portfolio strategy and implementation.
She counsels large companies on a cost effective strategy to maintain protection on a large market share, while balancing the cost of a large portfolio. She counsels small businesses and start-ups on intellectual property strategy and portfolio planning to protect an emerging market share or to retain and maximize intellectual property rights in view of joint venture research and development, and government grants.
Prior to joining Buchalter, Ms. Barnes was an attorney at Rutan & Tucker, LLP and Morrison Foerster, litigating and prosecuting patents for large companies involving toys, storage area networks, medical devices, DVD technologies, cell phones, and computer hardware interfaces, including touch screens. Prior to law school, Ms. Barnes instructed at the Colorado School of Mines’ Physics Department. As an adjunct professor, she taught undergraduate physics courses in mechanics and electromagnetism. She was also a researcher at the National Institute of Standards and Technology in the opto-electronics department.

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

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.

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.

Jeremy Jones is Senior Legal Counsel in the Intellectual Property group at PayPal, Inc. and he is based in San Jose, CA.  His practice is focused on IP litigation, strategy, and risk management.  Jeremy works closely with outside counsel to develop and execute strategies to defend PayPal in patent and technology litigation globally.  He also works closely with internal stakeholders on patent portfolio strategy and development, IP education, and trade secret protection.  Prior to joining PayPal, Jeremy practiced patent litigation at nationally known law firms in Washington D.C. and the Bay Area.  He received his B.S. in Electrical Engineering from the Georgia Institute of Technology and his J.D. from the University of Chicago School of Law.

Melissa is currently Senior Director, Head of Litigation at Niantic, Inc., a AR platform and mobile AR gaming company, where she leads the team responsible for global litigation, enforcement and regulatory matters, including global patent matters in the augmented reality software space, consumer tech class actions, and global app store competition matters and investigations.  Prior to joining Niantic, Melissa scaled and led global litigation and IP functions at enterprise software company ServiceNow, Inc., where she advised on complex commercial and IP litigation as well as strategic IP portfolio growth.  Melissa began her career as a litigation associate at Simpson Thacher & Bartlett LLP, and is a graduate of Duke Law School and Northwestern University.

Christa Zado is an Administrative Patent Judge at the Patent Trial and Appeal Board in the Silicon Valley Office. She presides over trial proceedings under the America Invents Act and decides appeals of adverse decisions made during patent prosecution at the U.S. Patent and Trademark Office. She earned her Master’s Degree in Electrical Engineering from Stanford University and law degree from Berkeley School of Law. Judge Zado helped found the Legal Experience and Advancement Program (LEAP) and is actively engaged in supporting diversity, equity, and inclusion efforts in her community. Prior to her appointment in 2014, she served as in-house counsel at a Fortune 100 company and was a private practitioner at a law firm.

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.

Brent Babcock is the chair of Loeb & Loeb’s PTAB Trials Practice Group. He represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB) (formerly the Board of Patent Appeals and Interferences), ex parte appeals before the PTAB, and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations.

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.

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.