The AIA has transformed the landscape: IP owners are finding it harder to monetize and enforce their patent portfolio and face growing hostility when they do.
Yet IP leaders are being asked internally to deliver on revenue targets by proactively monetizing, licensing, selling and enforcing their IP assets. This surge in IP commercialization means that companies now have to defend against infringement claims from rivals, corporate trolls, as well as NPEs.
IP leaders need to build a coherent offense/defense strategy on solid processes and tools: due diligence, portfolio evaluation, unified patent prosecution – all while benchmarking its effectiveness.
With increased scrutiny from company boards and the media, IP executives must also demonstrate top-level management skills: allocating resources, making a strong business case for their strategies and getting leadership on board.
The IP Strategy Summit covers all the challenges and opportunities of this new IP landscape.
5.5 hours of CLE CREDITS: Application for Georgia accreditation of this program is currently pending.
KEY TOPICS DISCUSSED
Portfolio Management – Aligning Business Goals with IP Strategy
Designing a Prosecution Strategy for the Global Market
Strategies for Dealing with NPEs - Fight or Flight
The Price of Entry: Litigation & Enforcement
Defending Against Infringement Claims from Operating Companies
Post Issuance Proceedings - Their Role in Your IP Strategy
Monetization for Operating Companies in a Post AIA & Alice World
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
Chris Arena has nearly 25 years of experience in intellectual property law, with his focus including both the business aspects of intellectual property, as well as the acquisition of intellectual property rights through the preparation and prosecution of patent and trademark applications worldwide. Having previously served as the former Chief Intellectual Property Counsel for Cingular Wireless and earlier as Chief Patent Counsel for BellSouth Corporation, Chris has a strong command over all areas of IP practice. In addition to IP strategy development and his patent practice, he has particular skill in transactional matters, especially asset acquisition and management, licensing, indemnification enforcement, and litigation management. At BakerHostetler, Chris applies these skills to help clients achieve greater value for their businesses through strategic use of intellectual property.
Chris is the co-author of one of the definitive books on IP strategy, The Business of Intellectual Property, published by Oxford University Press.
Emma Roubtsov joined Innography in 2010 as a Client Success Manager, focusing on training and implementation of the proprietary software suite. She has conducted innumerable training and collaborative project work sessions with some of the world’s global brands across the US, UK, Europe and India. As a Sales Engineer, Emma continues to work with Innography power users, providing technical solutions via web-‐based product demonstrations. Prior to joining Innography, Emma spent several years as a management consultant working with Fortune 1000 companies assisting and developing their employees. Prior to this she was a National Sales Manager for one of the Inc 500’s fastest growing companies based in Austin, Texas. British by birth, a polyglot by nature. Emma obtained her BA Hons I from the University of Wales in Russian and German and a Linguistics Masters Diploma for the Moscow Institute of Physics and Technology.
Steven Wong is Senior IP Counsel at The Home Depot. He leads Home Depot’s IP function globally, including portfolio development and management, clearance and landscape analysis, enforcement and defense, and transactional and licensing activities. Mr. Wong is also involved with mergers and acquisitions. Prior to joining Home Depot in 2012, Mr. Wong was a partner at a patent boutique law firm where he drafted and prosecuted patent applications. He holds a B.S. in computer science from The University of Texas at Austin and a J.D. from Texas Tech University School of Law.
Todd is the Senior Intellectual Property Counsel for Polymer Group, Inc. and is responsible for all aspects of intellectual property on a global basis including patent and trademark preparation and prosecution, patent and trademark litigation, freedom-to-operate opinions and transactional matters. Todd has a law degree from Case Western Reserve University School of Law and eight years practice experience first with Alston & Bird in their Intellectual Property group before moving in-house just over 1 ½ years ago.
Polymer Group, Inc. has recently grown to become the largest nonwovens manufacturer in the world with its recent acquisitions of Fiberweb PLC and a controlling interest in Providencia. Todd has been responsible for integrating the intellectual property associated with these acquisitions into company operations.
In addition to his legal experience, Todd has over eighteen years of experience as a practicing engineer having BS and MS Degrees in Chemical Engineering.
Ed Carreras is a seasoned intellectual property lawyer whose practice includes prosecution, portfolio management, and information technology and transactions, with an emphasis on the use of intellectual property as a strategic business asset. Ed regularly negotiates and counsels clients with respect to open innovation/joint development agreements, sourcing agreements, information technology agreements, and IP matters related to mergers and acquisitions. Ed also counsels clients in trade secret-related matters.
Prior to entering private practice, Ed was Chief Intellectual Property Counsel for The Coca-Cola Company, with responsibilities including patents, trademarks, trade secrets, procurement, and information technology matters. He also was general counsel of a manufacturing subsidiary. Ed currently serves as outside general counsel of The Special Interest Group for IIAS Standards (SIGIS), a standard setting organization.
Based in Charlotte, Jeff is Vice President and Senior Counsel at Wells Fargo where he is helping to develop and guide the company's IP strategy and chairs the Intellectual Property Practice Group. His prior responsibilities included serving as lead counsel on worldwide privacy and information security matters.
With a background in engineering, Jeff was an IBM marketing representative in Manhattan before law school. Following his early years as a litigator, Jeff moved into technology deal making and IP-based transactions. During his career, Jeff has advised a wide range of clients -- from tech startups to industry-leading multinationals -- on intellectual property (IP) strategy, technology development and licensing, and purchase and sale of key IP assets -- as both in-house and outside counsel.
Greg is currently the Deputy General Counsel - Intellectual Property for Bandwidth in Raleigh, NC. He has been practicing IP law since 1995 following a stint as a Patent Examiner with the United States Patent and Trademark Office. Greg's practice covers many facets of IP law including strategic patent portfolio development/management, patent prosecution, patent litigation, licensing, software licensing, trademark and trade secret law. I have a degree in electrical engineering and have done much work in the electronics, software, and telecommunications industries.
Currently Mr. Blackburn serves as Chief Intellectual Property Counsel for Southwire Company, LLC. His practice for the past 13 years has included the preparation and prosecution of US and international patent, trademark, and copyright applications, trade secret protection, strategic portfolio management, analysis of prior art and competitive positions, preparation of patentability, validity, and freedom to operate opinions, negotiation of IP related agreements including licensing, secrecy, and joint development, managing IP litigation matters, and interface with business and R&D functions to ensure IP strategy correlates with business objectives. Mr. Blackburn is an Electrical Engineering graduate from the University of Missouri-Rolla and received his Juris Doctorate from the University of Arkansas-Little Rock. Before practicing law, Mr. Blackburn worked with McDonnell Douglas' Artificial Intelligence/Expert Systems division and as a Project Engineer & Manager with PepsiCo. He also spent 11 years with Kimberly-Clark Corporation working in the areas of reliability, engineering, and operations before practicing law at the Atlanta office of a national intellectual property law firm.
Susanne is currently Senior Counsel - Head of Patents at The Coca-Cola Company. In that position, she is responsible for implementing the Company’s global patent strategy from developing effective plans for protection of its newly developed assets through ensuring adequate risk management procedures during product launch. Her team manages a global portfolio of over 3,000 active patents and patent applications in all areas of technology.
Prior to joining the Coca-Cola Company, Susanne was Director of Licensing and Chief Intellectual Property Officer at Emory University, where she was responsible for advising on appropriate patent protection strategies to maximize licensing potential for new technologies, provided legal support to the Technology Transfer Office during contract negotiations and license disputes, and managed an in-house patent prosecution team and a license compliance function. Prior to joining Emory, Susanne spent seven years at the law firm of King & Spalding focusing on patent prosecution and intellectual property counseling.
Susanne earned her J.D. magna cum laude from Georgia State as well as a doctorate in neuroscience from Emory, where her graduate work focused on characterizing molecular and cellular properties of certain newly identified cell signaling proteins. Prior to her graduate research, Dr. Hollinger also conducted pharmacological studies on extracellular receptors involved in the control of the autonomic nervous system, including drug screening and receptor regulation.
Les Bookoff provides a full range of patent counseling services to clients, with a particular focus on developing practical patent strategies in concert with the client’s business goals and budget. He has considerable experience building and managing patent portfolios, from startups to large companies. He has been described in The Legal 500 United States as having “the rare combination of well-honed legal acumen and experience-driven business savvy that makes him a go-to guy for intellectual property matters.”
Mr. Bookoff represents Fortune 500 companies, startups, universities, and venture capitalists in all aspects of patent counseling. He analyzes patent portfolios of competitors to counsel clients regarding acquisition of technology, licensing, contemplated products, and potential design-around options. He studies competitor products to advise clients on enforcement of their patent portfolios and prepares validity, infringement, patentability, and clearance opinions. He has represented clients in dozens of due diligence investigations during investment transactions, mergers, and acquisitions.
He prepares and prosecutes foreign and domestic patent applications, having obtained hundreds, if not thousands, of patents worldwide for his clients in the past 20 plus years. Mr. Bookoff also has considerable experience in U.S. district court litigation and U.S. Patent and Trademark Office interference and post-grant proceedings. His litigation background brings considerable value to clients that he counsels and in obtaining patents that will withstand the rigors of enforcement and competitive scrutiny.
Mr. Bookoff’s technical experience extends to diverse technologies in the mechanical and electro-mechanical fields, including the internet, consumer products, medical devices, healthcare IT, software, food industry, and industrial machinery and manufacturing. His practice has a particular emphasis on medical device technologies. He has worked with companies in numerous major medical device fields, including bronchoscopy, cardiovascular, cardiac surgery, congestive heart failure, diagnostics, endoscopy, imaging, monitoring, neurosurgery, obesity, orthopedics, urology, and women’s health. His knowledge of medical device technology and the importance of patent protection in that field are well-established. He regularly presents at various medical device industry meetings and has been quoted in The Gray Sheet, a significant publication in the medical device community.
Prior to co-founding Bookoff McAndrews PLLC, Mr. Bookoff practiced patent law for 19 years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. For the final 11 years, Mr. Bookoff was a partner at Finnegan and served various management roles, including member of the firm’s management committee and chair of the firm’s mechanical practice group.
Dr. Judy Jarecki-Black is Head, Patent Prosecution and Patent Litigation, of Boehringer Ingleheim Animal Health. Dr. Jarecki-Black is admitted to the state bars of Georgia and South Carolina, and is admitted to practice before several federal courts including the United States Supreme Court. Since 2002, Dr. Black’s department maintains and enforces the global patent portfolio for Merial (now Boehringer Ingleheim Animal Health). Her department obtains patent protection, generates patentability and freedom-to-operate opinions, and conducts due diligence for a variety of licensing opportunities. Dr. Jarecki-Black is also responsible for global patent litigation and leads the trial team on all patent cases.
Dr. Miodrag Cekic is an applied physicist, inventor, IP manager, and business strategist directly involved in many aspects of conceptualization, creation, and utilization of patent-based IP. Dr. Cekic received his MS and Ph.D. degrees from University of Washington, Seattle for works in nuclear energy related plasma physics. He also has a MS in Technology Management, a MBA, and active registration to practice before the USPTO.
Subsequently, Dr. Cekic joined Fusion UV Systems of Gaithersburg, MD, where he achieved leading R@D management positions working on new product development (technology and business strategy) in the field of microwave-generated UV light. At Fusion UV, Dr. Cekic earned his MBA degree while simultaneously scoping Company’s IP strategy by conceptualizing, inventing, and prosecuting, more than fifty patents integrated in a business-motivated patent portfolio.
In addition, Dr. Cekic worked for two well-known law firms as a patent agent and technology adviser working on patent prosecution, IP analysis, patent trading and licensing, and IP aspects of mergers and acquisitions. As an IP Manager at Sigma Space Corp, Dr. Cekic worked in the IP and technology management in the area of airspace and aeronautics predominantly on NASA projects and programs.
In parallel, Dr. Cekic is the President of Intellectual Property Strategists, LLC, specializing in strategic IP management for technology startups and spinoffs, with an emphasis on economic aspects of IP development. Dr. Cekic consults on issues of IP strategies for R@D funding generation, marked share acquisition and extension, and the IP monetization.
Sam Miller, a shareholder in the Firm's Nashville office and Co-Chair of the Firm's Intellectual Property Litigation Sub-Group, advises, protects and defends businesses and individuals involved in intellectual property and technology transactions and disputes. Mr. Miller has counseled a wide range of clients from individuals to small businesses to Fortune 500 companies in copyright, trademark, trade dress, patent, right of publicity, false advertising, internet defamation and other technology-related matters. Using his understanding of the business aspects of intellectual property gained through litigating intellectual property cases for nearly a decade, Mr. Miller assists clients in finding ways to monetize their intellectual property assets through establishing licensing revenues, sales, conversions to capital, spin-offs and litigation. Mr. Miller also is a Rule 31 Listed Mediator in the field of General Civil Mediation.
Tom currently serves as Vice President of Intellectual Property at Scientific Games, a leading innovator in the global lottery and regulated gaming industries.
Tom's focus is on strategic and comprehensive intellectual property counseling and management. This involves all major technology transactions, the management of an innovation center and the implementation and execution of intellectual property strategies for the protection, growth and commercialization of IP assets.
Formerly, Tom was Chief IP Counsel at Vantiv, LLC, a leading integrated provider of payment processing strategies and advanced technology solutions for businesses and financial institutions. Vantiv, LLC is the largest PIN Debit acquirer in the United States and the third largest merchant acquirer.
Dion Messer is General Counsel – Intellectual Property at Limelight Networks. Ms. Messer manages all of Limelight’s IP litigation including winning the Limelight v. Akamai case at the Supreme Court. She also manages Limelight’s patent prosecution program. She speaks frequently on issues related to divided infringement and expedited patent prosecution methods. (Ms. Messer has grown the Limelight portfolio from 2 to over 120 patents to date during her 5.5 year tenure at Limelight.) On average Limelight's patents issue in under 500 days and cost under $18K.
Prior to Limelight, Ms. Messer was a patent litigation associate at Weil, Gotshal and Manges, LLP and at Wilson Sonsini Goodrich and Rosati . Ms. Messer clerked for the Honorable William C. Bryson at the Court of Appeals for the Federal Circuit after graduating the University of Texas School of Law in 2004. Ms. Messer is licensed to practice in Arizona, California, and Texas as well as at the PTO.
Ms Messer earned a BS EE from New Mexico State University in 1984 and MS EE from the University of Texas in 1988. Ms. Messer is a licensed professional engineer, and, prior to attending law school, she worked in the field of digital signal processing and communications for over 15 years. During that time, she was also the co-founder and manager of a successful software training company, the co-inventor of nine patents, and the author or co-author of numerous technical publications.
Wab Kadaba is Chair of the firm's Intellectual Property Department. Mr. Kadaba concentrates his practice on litigation related to intellectual property as well as strategy and management of intellectual property and technology issues. Mr. Kadaba has considerable experience representing clients in patent, trademark and trade secret litigation matters, covering technologies as diverse as software, telecommunications, e-commerce, medical devices, footwear and chemical compositions. He is admitted to the United States Patent & Trademark Office.
Mr. Kadaba was recognized in The Best Lawyers in America® for Intellectual Property Law in 2015 and the five years immediately preceding. He was also named a 2014 "Atlanta Lawyer of the Year" in the area of Patent Law by The Best Lawyers in America®. Mr. Kadaba has been selected as a Georgia "Rising Star" for Intellectual Property and Intellectual Property Litigation in 2010 and the five years immediately preceding, a Georgia "Super Lawyer" in 2015 and the four years prior, and a Top 100 Georgia "Super Lawyer" in 2012, 2013, 2014 and 2015 by Super Lawyers magazine. He is listed in the 2014 and the six years immediately preceding editions of Chambers USA: America's Leading Lawyers for Business as a leading Georgia Intellectual Property lawyer. Mr. Kadaba was selected as one of the top 15 young Atlanta lawyers "On the Rise" by Fulton County Daily Report in 2007. In 2012, 2013 and 2014, he was named a top patent practitioner by IAM Patent 1000 – The World's Leading Patent Practitioners. Mr. Kadaba was recognized as one of Georgia Trend's 2012 "Legal Elite" for Intellectual Property Law. He was named a 2013 and 2014 "IP Star" by Managing Intellectual Property magazine. He is a recipient of the North American South Asian Bar Association (NASABA) Cornerstone Award and was named to "Who's Who in Law and Accounting: The 100 Most Influential Individuals Who are Leading the Way in Metro Atlanta's Legal and Accounting Industries" by the Atlanta Business Chronicle. Mr. Kadaba speaks conversational Japanese and Hindi and has a working knowledge of Spanish.
Co-managing partner Phil Colburn has transformed Cantor Colburn into one of the nation’s leading intellectual property law firms. Phil leads a team of more than 110 attorneys, patent agents, and technical advisors who are committed to helping clients optimize their IP assets through the timely delivery of top quality, cost-effective legal services.
His counsel to Fortune 50 multinationals, as well as smaller companies and universities, is informed both by unique technical insights gained from his years of professional experience as a design engineer and by strategic perspectives derived from more than 20 years’ practice as an IP attorney. Taking a proactive, results-driven approach allows him to help clients define their needs and implement strategies that achieve their objectives. A frequent speaker on IP issues, Phil is an Adjunct Professor of Patent Law at Western New England College School of Law.
Bryan G. Harrison is a Partner in the Atlanta office of Locke Lord LLP where he concentrates his practice on intellectual property litigation. His practice focuses primarily on advising clients regarding patent, trademark and copyright infringement, computer system performance, and antitrust and unfair competition, as well as prosecuting and defending actions in which such issues arise. He serves as regional or national litigation counsel for clients and has prosecuted or defended cases in the various courts of over 30 states, Canada, and the European Union.
Elizabeth Thomas is corporate counsel for OFS Fitel, LLC. At OFS, Ms. Thomas is responsible for global legal issues relating to research and development, manufacturing, and security in connection with OFS' fiber optic solutions. Prior to moving to OFS, Ms. Thomas was corporate counsel at Sage, handling matters related to cloud computing, intellectual property, and privacy; and before moving in-house, an associate at several large law firms, where her practice included representing both non-practicing entities and corporations in procuring, litigating, and monetizing intellectual property. As an intellectual property litigator, Ms. Thomas experienced both worlds by handling litigation matters from an offensive and defensive approach depending upon the clients' intellectual property assets and strategic objectives.
Ben Findley is Senior Counsel, Intellectual Property and Transactions for Cox Enterprises, Inc. In his role with Cox, Ben is responsible for all aspects of patent, trademark and copyright counseling, prosecution, maintenance and strategy. He supports the innovation programs Cox Enterprises and its Cox Automotive and Cox Media Group companies, and supports the businesses with commercial agreements. Cox Enterprises is a leading communications, media and automotive services company. Its businesses include Cox Communications, the third-largest cable TV provider, Cox Media Group, an integrated broadcasting, publishing, digital media and advertising rep company, and Cox Automotive, a leading provider of vehicle remarketing services, digital marketing and software solutions for automotive dealers and consumers and dealer financing. Previously, Ben worked in technology licensing for the Georgia Tech Research Corporation and as an associate with Brinks, Hofer, Gilson & Lione. Ben has a BS in civil engineering from Tufts University, an MS in mechanical engineering from Georgia Tech and a JD from the University of Wisconsin.
Andrew is the firm's managing partner and a member of the firm's litigation and prosecution practice groups. Andrew's practice experience involves all areas of intellectual property law, including patents, trademarks, trade secrets, copyrights, and unfair competition.
Andrew represents clients in litigations involving all types of intellectual property issues, having appeared in district courts throughout the United States and having represented clients at the appellate court level, particularly the United States Court of Appeals for the Federal Circuit.
Andrew's patent prosecution experience includes a wide range of electrical, electromechanical, and mechanical technologies. Andrew also periodically renders legal opinions concerning the infringement, validity, and enforceability of patents and opinions regarding product clearances and trademark searches and clearances.
Charlie is Lead Counsel for the Interactive Printer Solutions (IPS) division of, and an IP Transaction Attorney for, NCR Corporation. In his role as Lead Counsel for IPS, Charlie is responsible for all legal matters affecting IPS’ business including those relating to contracts, intellectual property, regulation, import/export, and employment. In addition, in his role IP Transaction Attorney for NCR, Charlie is responsible for monetizing NCR’s global intellectual property portfolio, and supporting a broad array of other IP transaction related activity including joint developments, and mergers and acquisitions. Previously, Charlie was the Technical Manager for Combustion Systems at Alstom Power where he was responsible for the worldwide development of combustion technology for a leading provider of products and services in the power generation industry. In addition to a JD from the Western New England University School of Law, Charlie has Bachelor’s and Master’s degrees in Mechanical Engineering from the University of Massachusetts, Amherst.
Jerry is Senior Counsel for ARRIS Group, Inc. His responsibilities include patent litigation and patent prosecution.
Jerry is also an adjunct professor for Georgia Tech’s School of Public Policy, where he has taught since 2002.
Before joining ARRIS, Jerry served as Director of Patent Development at AT&T, where his responsibilities include developing technology patents and managing patent portfolios. Jerry’s experience also includes practicing law at the firm of Sutherland Asbill & Brennan LLP and the boutique intellectual property law firm of Jones & Askew.
Jerry is a 1999 graduate of Emory law school, where he received a full scholarship. He also obtained a Bachelor of Electrical Engineering degree with Honor while working for Georgia Power Company, and an MS degree from Georgia Tech on a graduate teaching assistantship.