The IP Strategy [Virtual Summit]

Scott Piering is VP and Chief IP Counsel at Spectrum Brands. Mr. Piering brings over 20 years and a wide range of intellectual property experience – from the identification and acquisition of intellectual property rights to the exploitation and protection of those rights. Before joining Spectrum Brands, Mr. Piering was a Senior Intellectual Property Lawyer at Cargill, Inc., where he led the intellectual property function for several of its divisions. Prior to that, Mr. Piering practiced law with several law firms, where he focused on intellectual property, antitrust and trade regulation, litigation, and legal issues before various administrative agencies. Mr. Piering received his law degree cum laude from the University of Wisconsin Law School.

Dan Bikus is Dennemeyer’s Central Region Business Development Manager. Dan has 12+ years’ experience consulting with AmLaw 250 and Fortune 500 legal departments. Dan is a seasoned intellectual property strategist. In his current role, Dan coaches corporate IP legal departments on how to maximize the value of their patent/trademark portfolios, while minimizing any unnecessary spend through Dennemeyer’s suite of services. Dan is a member of the IPO, AIPLA, and INTA. Dan has a Bachelor of Arts Degree in Economics from Illinois State University.

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.

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.

Scott R. Boalick is the Chief Judge for the Patent Trial and Appeal Board (PTAB). In this role, he leads the PTAB as it conducts post-grant trials, including inter partes reviews, post-grant reviews, covered business method patent reviews and derivation proceedings, and as it hears appeals from adverse examiner decisions in patent applications and reexamination proceedings. 

Chief Judge Boalick was appointed to the Board in 2007. Prior to becoming the Chief Judge, he served as the acting Chief Judge, and before that as an Administrative Patent Judge, Lead Judge, Vice Chief Judge, and Deputy Chief Judge. 

Before joining the USPTO, Mr. Boalick served as a patent attorney with the Department of the Navy at the Naval Surface Warfare Center Carderock Division and the Naval Surface Warfare Center Dahlgren Laboratory. In these roles, he advised clients concerning a wide range of intellectual property issues, including patent, trademark, copyright, technology transfer, administrative claims, and rights in technical data and computer software. He prepared and prosecuted patent applications and assisted the Invention Evaluation Board to select and prioritize inventions for patenting. Before that, he practiced with Fish & Richardson in Washington, D.C., where he counseled clients on all aspects of protecting intellectual property, including patent acquisition, portfolio management, and litigation. He litigated claims of patent infringement in the International Trade Commission, district court, and the Federal Circuit, and also prepared and prosecuted numerous patent applications in a variety of technology areas. Prior to his time at Fish & Richardson, Mr. Boalick served as a law clerk to the Hon. Alvin A. Schall of the United States Court of Appeals for the Federal Circuit. 

Mr. Boalick began his career as an officer in the U.S. Navy, serving as a division officer on the USS Mobile Bay (CG-53) and as an instructor at the Surface Warfare Officer School. After his active duty service, he worked as a radar systems engineer at Technology Service Corporation. 

Mr. Boalick earned a J.D., magna cum laude, from Georgetown University Law Center where he was a Notes and Comments Editor of The Georgetown Law Journal and received the Leon Robbin Patent Award. He earned both an M.S.E. in Systems Engineering and a B.S.E. in Electrical Engineering, magna cum laude, from the University of Pennsylvania.

Jennifer Bush’s practice focuses on representing clients in patent litigation and in post-grant proceedings.

Jennifer began her career with a decade of patent prosecution experience in a wide range of technical fields, before shifting her focus to patent litigation. She also has substantial experience with post-grant proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes reviews (IPRs), post-grant reviews (PRGs), patent appeals and reexaminations. To date, Jennifer has served as counsel of record in 28 PGRs, making her one of the most experienced lawyers in these types of proceedings.

In addition to providing legal services for her clients, Jennifer has been a Lecturer-in-Law at the University of California, Davis School of Law, where she taught patent prosecution and practice, and has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law. She is also a member of the faculty at the Practising Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution boot camp.

During law school Jennifer was awarded the faculty-selected Mabie Award for Outstanding Graduate, peer-selected Graduating Student of the Year, and served as Editor-in-Chief of the Santa Clara Law Review.

Prior to rejoining Fenwick & West, Jennifer was General Counsel with Apercen Partners LLC, serving as sole counsel for seven entities spanning a breadth of legal issues, including IP, employment, contract, securities, tax and general compliance matters.

Dr. Abbott is the General Counsel and Chief IP Counsel of Abcentra, a biopharmaceutical company located in Beverly Hills.  He is also an expert on patenting Artificial Intelligence.

Duncan L. Williams is a registered patent attorney and has more than 12 years of experience in obtaining and protecting intellectual property rights, including patent, trademark, trade secrets and copyrights. His areas of expertise include electrical/computer technology, software, telecommunications and wireless devices. He is currently Corporate Counsel-IP at iHeartMedia where he manages all aspects of the company’s intellectual property. Prior to this role, Duncan was an associate at several large law firms in Washington, D.C., where he gained experience in intellectual property litigation, prosecution and portfolio management. Duncan holds a B.S. in Physics (with a minor in mathematics) from the University of Florida, a M.S. in Computer Science from Johns Hopkins University, and a J.D. from George Washington University Law School. Prior to becoming an attorney, Duncan was an officer in the U.S. Navy serving as a Nuclear Propulsion Plant Watch Officer onboard an aircraft carrier as well as an instructor of Thermodynamics at the U.S. Naval Academy.

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.

Anne Davis Barry has 17 years’ experience in patent preparation and prosecution, opinions, counseling, and landscaping; her practice is focused on computer technology, including computer infrastructures such as computer hardware, databases, networks and operating systems, as well as business methods and control systems. Anne is responsible for securing patent protection to meet client product launch deadlines; for partnering with clients on site in patent mining sessions to form patent protection strategies; for working directly with inventors; and for management of final work product of associates. Before becoming a patent attorney, Anne spent 15 years with IBM, first as a programmer, then a systems engineer, and lastly a project manager. She has been an adjunct professor of patent law at the University of Connecticut School of Law since 2002.

Joe is Director, Patent and Technology Counsel at Acacia Communications, Inc., where he takes the lead on all intellectual property (IP) matters.  His practice includes overseeing the development and management of Acacia’s patent and trademark portfolios, patent drafting and prosecution, IP licensing, Open Source, supporting IP related litigation matters and contract negotiations, and general IP counseling.  Prior to joining Acacia, Joe was Senior Legal Director at Dell Technologies. 

Intellectual Property attorney with over 10 years of experience advising clients on various aspects of IP including patent development and prosecution, trademark prosecution and enforcement, trade secrets, open source, copyrights, M&A IP diligence, technology licensing, and IP litigation. Private practice and in-house experience working on complex IP matters impacting integrated circuits and hardware systems, electronic devices, cloud computing, fintech, social media, e-commerce, virtual and augmented reality, artificial intelligence, blockchain/distributed ledger and other technologies.

Registered In-house counsel (CA) and before the USPTO. Licensed in California.

Dr. Gary J. Edwards has represented a wide range of clients from large, multi-national corporations, to start-up companies and independent inventors to develop, enforce, defend, and monetize their intellectual property rights. Dr. Edwards works with technology companies to protect their technology, build intellectual property portfolios, assert IP rights, monetize portfolios, and defend against the assertions of competitors. Whether it is in litigation (the International Trade Commission or in U.S. District Courts), in licensing or acquisition negotiations, in the analysis of IP portfolios, in the analysis of third party patents or in practice before the U.S. Patent and Trademark Office (including reexaminations, reissues, and inter partes review of patents) or international patent offices, Dr. Edwards’ broad technical background and experience allows him to counsel clients to balance the often competing legal and business issues that surround the acquisition, defense, and assertion of patent rights.

Dr. Edwards has a strong technical background in physics and materials science and has broad experience in a diverse array of technologies. His experience includes technological areas such as optical devices and materials (including nonlinear optical materials LEDs, optical sensors, and other devices), semiconductor processing and processing equipment (including lithography, surface inspection, materials deposition, etching and other technologies), semiconductor devices, energy storage technologies (including solid-state batteries, flow-cell batteries, and other systems), clean energy systems (including solar, wind, tidal, and other systems), communications (including high-speed LAN, DSL, BLUETOOTH, and IEEE 802.11 wireless), RFID, nanotechnologies (e.g., MEMS, superconducting devices, and materials structures), electronic circuits, imaging technologies (e.g., NMR and OCT), video and sound compression and transmission technologies, remote sensing and sensing devices, automated systems (e.g., automated vehicles) and information technologies (e.g., software and networking). Dr. Edwards’ broad technological background lends itself to complex technologies, novel materials structures, and cross-disciplinary technologies.

Dr. Edwards has represented clients in licensing negotiations involving various sized companies, has participated in litigation in district court as well as in the ITC, has prepared IPRs on patents involved in litigation, has handled disputes involving patent ownership and other issues, has developed patent portfolios for companies of sizes ranging from small startups to large multi-national companies, has analyzed portfolios for acquisition, and has advised clients on third-party IP issues. Dr. Edwards’ experience as a University Professor and Research Physicist allows him to not only easily grasp the technology underlying a particular matter, but to also interact with both the business and technical people involved in order to evaluate and advise on actions that are most likely to reach the goals of the client.

Gary was recognized in The Best Lawyers in America, Woodward/White, Inc., for Litigation – Intellectual Property, 2018-2021.

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.

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.

Tom handles large portfolios and prosecutes patent applications in a variety of jurisdictions. Tom’s particular area of expertise lies in mitigating IP-related risks when bringing a new product to market, and in this role he has conducted due diligence and freedom-to-operate work for product launches for all types of products, from baby bottles to large medical devices.

Tom works with a wide range of clients, from fledgling start-ups to multinational corporations, and in every case is keen to understand both the technological and the commercial issues which are important to his clients. Tom’s technical areas include medical devices, software, artificial intelligence (AI), and mathematical algorithms, and in these fields Tom enjoys helping his clients to push the boundaries of the patent system and obtain commercially useful protection.

Tom has a solid physics background, having graduated with a Master’s degree in Physics, and during the final two years of his degree was able to concentrate on his interests of solid state physics, nanotechnology and optics. For his master’s project, Tom used cluster analysis to characterise the response of a wideband integrated bioaerosol sensor (WIBS).

Viren Soni is Patent Counsel at CME Group, Inc. where he works closely with inventors and engineers to identify and protect technology innovations, and focuses on the preparation, filing, prosecution and management of CME Group Inc.’ growing patent portfolio. Prior to joining CME Group Inc., Viren worked at the law firm of K&L Gates LLP in Chicago. Before law school, Viren served as a Patent Examiner, and worked in software, telecommunications and power/utility companies. Viren holds a Bachelor of Science in Electrical Engineering from the University of Illinois in Urbana-Champaign and a law degree from the Chicago Kent College of Law, and is registered to practice before the USPTO and in Illinois.

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.