For today’s intellectual property executive, all roads converge toward Defense and Litigation: NPEs, corporate trolls, the AIA and SHIELD Act have multiplied the number of IP lawsuits. In this environment, an effective, up-to-date Defense Strategy is a must have for operating companies.
This conference examines IP Defense from soup to nuts, including best and latest defense strategies, preparing for trial, considerations when settling, managing internal resources and expectations, AIA post-issuance proceedings.
KEY TOPICS DISCUSSED
The Big Picture: Building A Defense Strategy
Pre and Post-Grant Defensive Strategies
Defending against NPEs
Preparing for Litigation & Trial
The End Game - Settlement & Post Trial Strategy
Chief IP Counsel
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
Intellectual Property, Trademark and Copyright Counsel
Head of Litigation
Director of Business and Legal Affairs
Director/VP of Intellectual Property
Director/VP of Licensing
VP & Director of Intellectual Asset Management
Dmitry Tulchinsky has more than fifteen years of experience in the biotech and chemical industries. He has worked for the last seven years as a patent professional focusing on intellectual property matters in IP strategy development and implementation, licensing, due diligence and portfolio building at DuPont and Johnson & Johnson. Prior to working as a patent professional, Dmitry worked for eight years as a scientific researcher in drug discovery for Novartis, Amgen, UCLA, and The University of Southern California culminating in three drugs candidates entering human clinical trials and one marketed within the U.S.
Peter is the Director of IP at Nevro Corp., a Bay Area medical device startup developing a spinal cord stimulation system for treating chronic pain. At Nevro, Peter is responsible for developing and implementing an IP strategy to protect Nevro's core technology, as well as increase and drive value from the company’s IP assets. Prior to joining Nevro, Peter served roles as Associate and Patent Agent at law firms in San Francisco and Washington, D.C., and represented clients in the medical device space as well as other technology fields. Peter has a legal degree from The George Washington University Law School, and a Bachelors and Masters in Biomedical Engineering from the University of Miami
Mr. Springer is a partner in the firm's Intellectual Property practice group. He has experience in all fields of intellectual
property law and advises clientele at every level of business development — from start ups to public companies. Mr.
Springer counsels clients on the strategic development, acquisition, and enforcement of intellectual property
portfolios, specifically with regard to patents. His representation includes a number of companies in patent, trade
secret, copyright and antitrust suits. Mr. Springer also provides counsel to various clients on interference and
re-examination proceedings before the United States Patent Office as a part of an overall intellectual property
Mr. Springer has worked with a diverse group of clientele including Sony Computer Entertainment; network security
provider SonicWALL, Inc.; Ruckus Wireless, Inc., the leading supplier of smart Wi-Fi solutions; ZONARE Medical
Systems, Inc. (makers of the world's first convertible ultrasound system); and supersonic cooling pioneer Caitin, Inc.
among many others.
Mr. Springer has published numerous articles on intellectual property law including the Section 271 Safeharbor and
the Experimental Use Exception; trademark dilution; the intersection of copyright and trademark law as it pertains to
false designations of origin; the interplay of the antitrust and intellectual property laws; collective publishing rights; the
public domain; domain name litigation; and UDRP cybersquatting proceedings. Mr. Springer is also a contributing
author to the “Matthew Bender Practice Guide” for California Unfair Competition and Business Torts. In addition, Mr.
Springer has given presentations on the ethics of open source licensing, software and business method patents, the
Digital Millennium Copyright Act, and maximizing the benefits offered by the Patent Cooperation Treaty.
Mr. Springer has been a lecturer at Santa Clara University School of Law where he taught courses in international
intellectual property, appellate advocacy, and appellate brief writing in the field of high tech law. Mr. Springer has also
served as an advisor to Santa Clara’s nationally recognized trademark and patent moot court teams.
Experience and Accomplishments: Currently, IP Counsel for IBM Research. With IBM, previously Counsel for the System Networking business and Storage Systems. In addition site counsel for the IBM Tucson location. I began my legal career as a damages witness in the HP v. Bausch & Lomb case, which led to law school and licensing of the patent-in suit which in turn led to generation of over $100 Million in licensing revenue. My subsequent legal career has included IP litigation at Pennie & Edmonds, in-house work at 3Comm and other leading companies in the networking and cloud computing space. The $15 Million favorable settlement reached in 3Comm v. Intel led me to authoring a legal treatise on patent infringement damages "Patent Infringement Compensation and Damages". Recognized expert and published author in patent infringement damages; IP enforcement; Litigation management; Merger and acquisition; Strategic IP Portfolio creation; IP transaction negotiation; open source policy management; Entrepreneurial counseling Publications and Courses “Patent Infringement: Compensation and Damages”, Law Journal Press. 2006. "Actions to Limit Product Liability Awards" 4 Product Liability Law Journal 129 5/93. "Maximizing Impact of Visual Evidence" Patent Litigation 1992 Practicing Law Inst. "We've just been sued! What's Our Exposure? A Defendant's Guide to Damages" IP Law and Management Institute, San Diego, November 2012 "Implications of the America Invents Act", panelist, IP Counsel Cafe San Jose, San Jose April 2012 "Patent Infringement Damages" IP Counsel Conference, San Jose, March 2012 “Developments in IP Remedies”at IP Counsel Conference New York, 2009 (Conference Chair) “Developments in IP Remedies”at TechNet IP Forum New York, 2009 “New Developments in Patent Infringement Damages” at Intellectual Property for Wireless and New Media, 2007, 2008 “Remedies for Patent Infringement”, in “Intellectual Property Remedies” webinar, American Lawyer Media, October, 2008 “Getting the Jump on IP Due Diligence - Putting Together an IP Portfolio to Maximize Value” included in “Strategic Planning for Entrepreneurs Seminar”, Stanford University, 2002
William Munck is the Managing Partner of Munck Wilson Mandala, LLP and Chairman of the Firm's Intellectual Property Section. Mr. Munck has nearly twenty years of experience counseling clients regarding development of market-focused offensive and defensive intellectual property portfolios. His technical expertise is in the hardware, software, firmware, gaming, wired/wireless communication, energy and medical device/healthcare fields.
Mr. Munck's practice emphasizes long-range corporate strategies for the domestic and foreign procurement, management and enforcement of intellectual property rights; defense against third-party infringement claims, including prosecution of reexamination proceedings; analysis, development and rendering of legal positions and opinions; and negotiation of technology transfers and related intellectual property issues associated with private and public financings, mergers, acquisitions, and industry and patent troll licensing matters.
Mr. Munck began his career with a full-service Texas-based law firm and a prominent New York IP litigation boutique.
Experienced legal and business advisor with strong roots in fast-paced and results-driven technology environments and in a breadth of legal areas.
Strategic leader who thrives on working with teams and across functional areas to resolve complex legal issues in alignment with business objectives.
Seasoned litigator able to evaluate risk, manage complex claims successfully and cost-effectively, and (when beneficial) negotiate business resolutions or position cases for successful strategic strikes in court or at trial.
High degree of comfort working with and advising C-level and other senior executives and strategic advisors.
Complex US and global litigation – both as successful plaintiff and defendant; intellectual property; privacy; unfair business practices and consumer/class action law; regulatory inquiries; risk management
Owen is Chief Evangelist and General Counsel. Owen has previously founded and led software, real estate development and non-profit ventures and operated his own law firm. He is a member of the California Bar and earned a J.D. from the University of Chicago Law School and a B.A. from The Colorado College.
Scott Trask is Director of Intellectual Property at Newport Corporation in Irvine, CA since 2004. His work includes IP portfolio development, licensing, enforcement, mergers & acquisitions and IP landscape analysis.
Scott has his BA in Physics from Kenyon College, his BSME from Washington University in St. Louis, and his J.D. from Western State University College of Law. Prior to working in an intellectual property role, Scott worked for 20 years in design engineering, project engineering, and engineering management in the aerospace, marine, and photonics industries.
Rob Kramer is the Co-Chair of Dentons' Patent Litigation Practice and a partner in the firm's Intellectual Property Group. Based in Silicon Valley and San Francisco, Rob is one of the most experienced and successful lead trial counsel patent litigators in the country. He and his team are consistently honored as among the most aggressive, results oriented, patent litigation practices. Rob was named a "Legal Lion" by IP Law360 in January 2017 for his lead trial counsel role winning two back-to-back patent jury trials in one of the largest patent cases in the country. Rob and his team at Dentons were also recently named as an elite "IP Litigation Powerhouse" that corporate counsel "turn to for their most pressing needs" in BTI Consulting Group's national survey of General Counsel. He and his team were also recently named as a "Top 50 Litigation Powerhouse Firm" by Law360, and recently named as one of the "Fearsome Foursome," by BTI Consulting, an honor bestowed upon four elite firms that General Counsel or large companies fear most to litigate against "based on the team's intense approach, fierce tactics and achievement of successful litigation outcomes." Rob and his team were recently featured in IP Law360 as the "best of the best" at providing the most value per legal dollars spent by in house counsel on litigation. Rob was invited to be a speaker at this conference as he has a long history of promoting women litigators into leadership roles, mentoring and creating opportunities for women attorneys, and ensuring that they gain courtroom experience and hold leading and meaningful roles on important IP litigations.
Diana joined HP and HP’s Intellectual Property Licensing team in October, 2006. She is Director, IP Licensing, and responsible for IP technology transfer and patent licensing. Prior to joining HP, Diana was on the corporate IP Licensing staffs of Microsoft and IBM with similar licensing responsibilities. When Diana joined the HP IPL group, she was the founding member of the Standards-based licensing team. During her tenure, the team grew to a Managing Director and three individual contributors who regularly generated between 40-45% of HP’s annual IP royalties. Diana supported the single largest HP licensing program, the Linear Tape Open (LTO) Consortium, as well as represented HP to a number of patent pools, including the world’s largest pool, MPEG-2. She also did bilateral licensing in technologies such as RAID-on- Chip (ROC), generating significant royalties and R&D funding. Diana has an MBA from Harvard University’s Graduate School of Business and a B.S. in Finance from the University of California at Berkeley.
I am a member of the Silver Spring Networks legal department, responsible for all company intellectual property matters -- including patent portfolio development, trademark portfolio development and patent litigation (NPE) defense.
I have worked in law firms as well as in-house. In all my tasks, I have developed partnerships with Silver Spring Networks' outside providers so that Silver Spring Networks and our outside providers are aligned to achieve results of appropriate quality at appropriate value. This allows both Silver Spring Networks and our outside providers to each achieve our key objectives.
In addition to my almost 20-year career as a patent attorney, I am also an experienced software engineer, having worked at the Johns Hopkins University Applied Physics Laboratory as a designer and programmer of complex software systems for spacecraft control.
I am a member of the U.S. Patent Bar and California State Bar.
Lee Cheng is currently advisory counsel for the board at NewEgg. He served as Chief Operating Officer and EVP at Gibson Brands and prveiously served as NewEgg Inc's Chief Legal Officer, SVP of Corporate Development and Corporate Secretary and General Counsel.
He's a graduate of UC Berkeley Law School, where he earned his J.D. A graduate of Harvard University where he earned his SB in History and Science.
Mr. Lorimer graduated from the J. Reuben Clark Law School at BYU in 1982. He joined the firm of Workman Nydegger in 1987, specializing in intellectual property and complex commercial litigation..
Mr. Lorimer currently serves as the president and managing partner of Workman Nydegger and as a member of its board of directors. His practice focuses on patent, trademark, copyright, licensing and trade secret litigation and related counseling. He has led litigation teams in a wide variety of technologies, including embolic microspheres for use in treatment of uterine fibroids and other benign and malignant tumors, nano fibers used in stents and other devices, devices and methods for thromboembolectomy, devices and methods for angiography, hemostasis methods and devices employing chitosan, endoluminal graft and stent design and placement, blood pressure transducers, acute and chronic dialysis catheters, dental bleaching compositions, ecommerce, radar applications in complex traffic management, GPS technology, bridge and router hardware, thin film optics, exercise equipment, nutritional supplements and industrial wastewater treatment, among others. Mr. Lorimer has obtained multiple eight figure awards and settlements for his clients in patent litigation, as well as directing the successful defense of claims against his clients. He also represents clients before the Patent Trial and Appeal Board in reexamination and reissue proceedings, mediation and arbitration matters, inter partes proceedings before the European Patent Office, and complex commercial litigation. He currently serves as an adjunct professor of law at the J. Reuben Clark Law School, where he teaches courses in intellectual property.
Mr. Lorimer was honored as the Top Salt Lake City Intellectual Property Lawyer for 2011, Top Salt Lake City Intellectual Property Lawyer for Litigation for 2012, and Lawyer of the Year for Salt Lake City in Intellectual Property – Litigation and Trademark Law for 2014 by Best Lawyers in America. He has been selected by Best Lawyers in America for inclusion in its directory of top-flight lawyers in the country for years. He has been named to the 2012 and 2013 IAM 1000 by Intellectual Asset Management magazine as being among the top 1000 IP lawyers in its survey, which includes over 40 jurisdictions. In 2012, Mr. Lorimer was named one of the top 25 lawyers in Salt Lake City by Super Lawyers, and is a perennial honoree by Mountain States Super Lawyers and the Super Lawyers Legal Elite. In 2013, he was a recipient of the 2013 Client Choice Award by Lexology.
Matthew Lynde has more than twenty-five years of experience as an economist in government, academic, and commercial environments. Formerly a professor at City College of New York and a partner at PricewaterhouseCoopers, he is now head of Cornerstone Research’s San Francisco office.
His work for the last fifteen years has focused on damages and other economic analysis in intellectual property litigation, valuation and licensing of intellectual property, and economic analysis in antitrust and general commercial litigation. He has qualified and testified numerous times as an expert witness in state and federal courts and in arbitration. His clients include Fortune 50 firms and many of the nation’s top commercial litigation firms. Dr. Lynde speaks regularly at a number of legal forums on the economics of commercial damages. He is a member of the American Economics Association, the National Association of Business Economists, the American Statistical Association, and the Licensing Executives Society.
Accomplished attorney with 18+ years experience, including as a general counsel of Nasdaq listed biotech companies, cleanteach and highly technical software companies, as well as private practice with top law firms. Transactional skills include proficiency in drafting and negotiating strategic business contracts and agreements. Adept at saving employers costs on acquisitions. Extensive experience in providing strategic business focused legal advice to corporate management and entreprenuers. Exceptional speaker.
Specialties: Cleantech, Life Sciences, Healthcare Informatics, Enterprise Grade Software Licensing, Negotiation Strategy, Licensing, Private Placements, Mergers & Acquisitions, Strategic Financings and Collaborations
Robert Krebs is a highly experienced patent attorney who focuses his practice on intellectual property (IP) litigation and the creation of IP asset value. He has technical qualifications and extensive experience in telecommunications, electronics and software. Bob also has experience handling matters for clients in the life sciences industry.
What do you focus on?
Most of my practice, now and for the past 25 years, has been in the field of telecommunications, especially wireless. I spend a large part of my time successfully defending patent infringement actions against my clients, many of whom are pioneers in their industry. In addition to defending the IP rights of these companies, I work with them and others to build value through IP assets. My success is influenced by having held positions as general counsel and patent counsel for the high-tech subsidiaries of a Fortune 500 corporation.
Because of the large number of cases with which I have been involved, I have developed a unique experience in the law of patent indemnification.
What do you see on the horizon?
My perspective is that the revolution in communications and information is just beginning. My goal is to apply my experience, technical education and legal skills to maximize the creation of value for my clients.
Paul Simboli has over twenty years of experience as a chemical/biotechnology patent attorney in industry and private practice. Paul began his career as a chemist for the United States Army, stationed at Letterman Army Institute of Research (“LAIR”) in San Francisco, and after his military tour, joined Chiron Corporation. While at Chiron, Paul transitioned from Supervising a laboratory focused on biotechnology diagnostics, to a newly formed Intellectual Property group under Robert P. Blackburn, formerly with Morrison & Foerster. While working as a Patent Agent at Chiron, Paul attended law school in the evenings at Golden Gate University. After spending more than 11 years with Chiron, he moved into private practice for several years and worked for two law firms, both of which were formed by Partners at Merchant & Gould in Minneapolis. Paul reentered industry in 2000, and subsequently worked for ALZA/Johnson & Johnson, and the start-up biotechnology company, Five Prime Therapeutics, before joining Depomed in 2007. While at Depomed, Paul has been responsible for more than 20 litigations, ANDA and direct infringement, new product/venture acquisition diligences, and developing and implementing an IP strategy to protect Depomed’s core technology, as well as increasing value from the company’s Intellectual Property assets.
Intellectual Property (IP) Attorney, registered to practice before the U.S. Patent and Trademark Office, specializing in patent litigation (assertions and defense), patent prosecution, licensing, acquisitions, and strategic portfolio management and valuation. Played central roles in delivering worldwide IP services to innovative clients in industries including semiconductors, consumer electronics, and internet- and web-based services and media. Develop, utilize and enforce intellectual property assets as strategic business tools to further clients' corporate objectives.
Peter Ullmann is currently Manager of Intellectual Property at Prysm, Inc. as well as Patent Manager at the startup venture, zSpace, Inc. His previous position was at Adobe Systems, Inc., where over his eleven years tenure he architected the patent program, including the portfolio strategy, invention mining workshops, application filing/claim objectives and overall management/operations. Peter has also held technical and business positions at Lawrence Berkeley National Laboratory, The Boeing Company, Texas Instruments, Inc., Raytheon, and Schlumberger Limited.
In addition to his patent and development work, Peter’s over 25-year career has included positions as Standards Manager, University Collaborations Manager, Product Manager, Asia Business Manager, and Engineering Manager. He has worked across a broad range of technical domains from avionic systems to electron beam probing systems to integrated circuits failure analysis to software systems. An Electrical Engineering graduate from the University of California, Berkeley, Peter has published internationally, chaired several non profits including the Software Patent Institute, the Software Patent Coalition, as well as various community organizations. He also founded the Idea Parlor, volunteering time with the goal of helping individuals across all backgrounds (technical and non-technical) identify the patentable inventions within their ideas from garage shop hopefuls to small entities.
In addition, Peter has been active in the arts: performing with the Boston Opera; chairing an international film series; writing/producing a melodrama about an inventor pursuing a patent, entitled “The Claims of Fame”; and writing the libretto about the patenting experience entitled “The Passionate Patent,” ... the opera having been performed several times across the valley.
Bryan is General Counsel at Applied Research Works, Inc. (ARW), a Palo Alto based software company offering specialized services for health plans, healthcare professionals and patients. Prior to beginning his legal practice, and during law school, Bryan worked with a major patent holding company where he participated in the licensing and monetization of high value patent portfolios. In addition to his role at ARW, Bryan maintains a private law practice in the Silicon Valley where he represents clients in intellectual property matters. Bryan earned his J.D. from Indiana University School of Law-Indianapolis (now known as Indiana University Robert H. McKinney School of Law); a Master of Intellectual Property, Commerce, and Technology from Franklin Pierce Law Center (now known as the University of New Hampshire School of Law); a Master of Health Services Administration from St. Joseph's College of Maine; and a Bachelor of Science in Biology from the University of Nevada, Reno. Bryan is a member of the State Bar of California and is registered to practice before the United States Patent and Trademark Office
I am a business-minded lawyer with a broad range of corporate and litigation experience. My clients have included companies such as Ancestry.com, eBay, PayPal, at&t, Apple and Chevron. While in-house I created and implemented privacy strategy ('net, mobile and genetic), developed EU expansion strategy, drafted content licensing agreements, led M&A strategy and integration of acquisitions and provided advice on the development and use of technology and platforms.
Specialties: Corporate strategy/antitrust, privacy, litigation, security/data protection, legal compliance, document management, e-discovery and regulatory investigations.
Steven Hemminger is partner-in-charge of the firm’s Silicon Valley office and serves as a Joint Venture Silicon Valley Board Member. As a seasoned litigator, he focuses his practice primarily on complex intellectual property disputes involving patents, trademarks and trade secrets, representing his clients as plaintiffs and defendants. Mr. Hemminger has been lead counsel in more than 40 high-stakes intellectual property litigation matters.
Outside of the courtroom, Mr. Hemminger proactively works with clients to protect their innovations by conducting infringement and validity analysis for prospective litigation as well as advising clients on how to avoid infringement of third party intellectual property rights. Mr. Hemminger also has particular skill in managing both small and large patent and trademark portfolios, routinely providing counsel to clients concerning international licensing agreements.
With nearly 30 years of experience, Mr. Hemminger has litigated cases in both state and federal courts and resolved matters before the United States Patent and Trademark Office as well as foreign patent offices. He represents clients across diverse industries such as social media, technology, engineering, telecommunications, electronics, computer hardware and software, data storage and management, and medical devices.