IP STRATEGY: Chicago 2014
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. A strong defensive strategy is crucial to mitigate risk.
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 will cover all the challenges and opportunities of this new IP landscape.
KEY TOPICS DISCUSSED
WHO ATTENDED
- Due Diligence & Portfolio Evaluation
- A Unified Patent Prosecution Strategy
- Defending Against NPEs
- Litigation And Proactive Enforcement
- Show Me The Money... To Sell, To License, To Hit Quota?
- Post Issuance Proceedings - The Role In Your IP Strategy
- Building & Benchmarking Your IP Strategy: Finding True North
- 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
- IP Counsel
- Patent Counsel
- VP & Director of Intellectual Asset Management
SPEAKERS
Alex’ twenty plus year career draws from a range of executive positions in industry and the intellectual property fields, These experiences focus upon key perspectives: strategic planning and implementation, corporate growth, IP management and evaluation, and a data-driven approach to high-stakes and recurring decisions. At Questel, the consulting and analytics practice serves corporate executives, counsel, and investors seeking improved IP strategies, decision processes, outcomes and value.
Alex holds an MBA in Executive Leadership & System Design from Villanova Universit and a BA of International Studies (Economics & SE Asia) from the American University.
Amanda is Corporate Legal Director with GOJO Industries, Inc. in Akron, Ohio (inventors and manufacturers of the GOJO, PROVON and PURELL brand skincare products and associated dispensers). Amanda has been with GOJO for six years and manages the seven member GOJO Legal team. She is a licensed patent attorney and manages the GOJO Intellectual Property assets, including managing the patent, trademark and copyright portfolio, directing IP Strategy, managing technology agreements, partnerships and acquisitions, and counseling GOJO on other matters of intellectual property.
Prior to joining GOJO, Amanda worked as a patent agent for a northeast Ohio regional law firm, Buckingham Doolittle and Burroughs. Previously, she was a practicing electrical RF engineer for Hitachi Medical Systems America specializing in design and testing of RF coils for MRI medical imaging systems.
Amanda graduated with her BSEE from Ohio Northern University, in Ada, Ohio, in 2003. She attended law school at University of Akron, as a student in the evening program while working from 2004-2008. In 2005 she was admitted to the USPTO bar as a patent agent, and in 2008 she was admitted to the Ohio bar as a patent attorney. Amanda has been married to her high school sweetheart, Russ, for ten years, and she is the working mother of two young boys, Bennett age 6 and Lincoln age 4. The Kitzberger Family (with their two dogs and cat) live in Bath, Ohio, a suburb of Akron.
Smith has more than 16 years of legal experience primarily representing companies and organizations focused on biotechnology and pharmaceutical research and development to Heliae. Before joining Heliae, Mr. Smith held positions as Vice President of Business and Legal Affairs for Valeant Pharmaceuticals, Associate General Counsel and Head of Licensing & IP for Medicis Pharmaceutical Corporation, and Corporate Counsel for Novo Nordisk, Inc. Mr. Smith obtained his J.D. with honors from Washington University. He also holds undergraduate and graduate level technical degrees in biology, environmental science, and information systems management. Mr. Smith also previously conducted plant genetic research and completed internships with the US District Court for the Southern District of Illinois, the Office of the Vice President of the United States, and the US Patent and Trademark Office.
Mike is a founding member of Miller, Matthias and Hull LLP, a boutique firm formed almost a decade ago to provide intellectual property counsel and procurement to large and small companies alike. Today, the firm has grown to a midsize boutique and is happy to have numerous Fortune 100 and Fortune 500 companies among its clients. Mike assists his clients in managing and balancing their patent portfolios through client and competitor portfolio evaluation; patent mapping; innovation mining; invention capture program design; portfolio sale and acquisition; portfolio due diligence; defensive portfolio shaping and so on.
Mike brings twenty-four years of patent experience to his clients. Prior to founding Miller, Matthias & Hull, Mike was an equity partner at a large IP firm in Chicago. Mike is admitted to practice in Illinois and before the USPTO. Mike obtained his B.S. in Chemical Engineering from UC Berkeley in 1983, his J.D. from the University of San Francisco in 1990, and completed the IP Masters program at the John Marshall Law School in 1996. Prior to law school, Mike served as a senior field engineer for Halliburton Logging Services.
Mike’s US and foreign patent prosecution experience has covered diverse technology areas, including: pumps and fluid dispensers; construction equipment; fuel injection; dual-fuel internal combustion engines; gas turbine engines; heating and air conditioning; medical and dental devices; orthopedic implants; angioplasty devices and stents; organic and inorganic chemical processes including small molecule synthesis; separation processes; catalysts including catalyst design and catalytic reactions; nanotechnology; semiconductor processing; petroleum exploration, production and refining; coatings; filters; emission reductions; hydraulics; desiccants; and wound healing technology.
Mark has more than 20 years of IP experience employing expertise in patent law, intellectual property, and risk management to facilitate international business opportunities and advantages. At Navistar he manages and expands global multimillion-dollar portfolios for innovations and products in the high-technology arena.
Morgan Malino is a Partial General Counsel to two companies: Trend Discovery Capital Management, a hedge fund that has generated a 18% compounded average rate of return since its inception in 2011 and Transitiv, a 2016 startup that developed a buy-side programmatic advertising platform. Mr. Malino was General Counsel to two previous companies, PureCars, which sold to Raycom Media for $125M and Unity Semiconductor,which sold to Rambus for $35M. As a General Counsel who is also a registered patent attorney, he has a unique perspective on intellectual property strategy and portfolio development.
As IP counsel for IBM's Patent Portfolio Management Department, Tim is responsible for a team of senior attorneys who manage and develop IBM's worldwide patent holdings including over 55,000 patents worldwide. In this role Tim provides counsel on a wide variety of legal issues pertinent to the licensing, sales, acquisition and leveraging of IBM patents. Tim's department provides a critical connection between IBM's world renowned patent licensing organization and its robust inventor community and is integrally responsible for IBM's 21 consecutive years of US patent leadership.
Prior to assuming this role Tim held a number of key positions in IBM's IP department including serving as a founding member of IBM's IP strategy and policy department, and as a staff attorney for IBM's corporate patent licensing function. Tim has extensive experience in all aspects of corporate IP practice including patent prosecution, drafting and negotiating patent and technology license agreements, developing and executing patent assignments, formulating and advising clients on new IP monetization business models, as well as general IP related advices and counsel.
Before joining IBM, Mr. Farrell was in private practice in Salt Lake City, UT, holding positions at Workman, Nydegger as well as Snow, Christensen & Martineau.
Mr. Farrell holds a BS degree in Electrical and Computer Engineering from Brigham Young University (BYU), and MBA from the Mariott School of Management at BYU, and a JD from the J. Reuben Clark Law School at BYU. He is admitted to practice in California, Colorado, Utah and before the United States Patent and Trademark Office.
Patrick G. Burns is a founding shareholder at Greer, Burns & Crain in Chicago. The emphasis within his practice today is patent prosecution and opinions.
An accomplished intellectual property attorney in the United States, Mr. Burns has handled litigation involving a variety of intellectual property disputes in the Federal Circuit, Federal District Courts, and the International Trade Commission.
Mr. Burns is a prolific author and lecturer on intellectual property rights, and has taught in a seminar for the Patent Resources Group entitled “’Designing Around’ Valid U.S. Patents” since 1994.
All aspects of patent infringement are addressed in “’Designing Around’ Valid U.S. Patents” including opinion preparation, claim interpretation, the doctrine of equivalents, the doctrine of prosecution history estoppel, legitimate design-around activities, and techniques for avoiding legitimate design-arounds.
Mr. Tipescu's practice encompasses patent litigation, counseling and prosecution. He has represented clients in federal courts, as well as the United States International Trade Commission. Mr. Tipescu has experience preparing patent clearance and validity opinions, drafting patent license agreements, and counseling clients regarding obtaining and enforcing intellectual property rights. Mr. Tipescu is also a licensed patent attorney with experience in patent prosecution. His practice has involved a variety of technical areas, including software related technology, telecommunications, electromechanical devices, medical devices, hygiene products, power tools and automotive systems.
Romi is the Associate Chief Counsel for the Industrial Technologies Group at Danaher Corporation, a $20 billion science and technology company. He has 20 years of patent prosecution experience in the electrical, software and electromechanical arts as well as in all aspects of corporate IP practice, including patent technology licensing, IP due diligence for M&A transactions, open source software matters, and litigation. Prior to joining Danaher he was a member of the corporate law departments at Molex and Motorola. Before that he was with the private IP firm of Fitch Even Tabin and Flannery. Romi’s technical experience includes engineering positions at Advanced Micro Devices (AMD) and Cummins Engine Company.
Daniel A. Boehnen is a founder of McDonnell Boehnen Hulbert & Berghoff LLP. His practice focuses primarily on trials, appeals, opposition proceedings, and all forms of disputed patent matters. Clients often seek his counsel on general IP, business, and legal problems because of his keen insight and his ability to create understanding, simplify problems, and innovate solutions. Clients praise Mr. Boehnen for crafting aggressive strategies to try cases and settle cases while remaining sensitive to the client's business goals. Mr. Boehnen and his team have been praised by clients as the most integrated and efficient attorneys they work with.
His litigation experience encompasses a wide range of high-tech industries in all levels of the federal court system. He has been involved in many notable and precedent-setting cases.
Mr. Boehnen is frequently invited as a guest speaker to corporate and professional groups.
Hersh Mehta is a licensed patent attorney with experience in litigating, evaluating, and obtaining patents on behalf of clients. He has represented clients in Section 337 investigations in the U.S. International Trade Commission, federal district court actions, inter partes reviews before the Patent Trial and Appeal Board, and appeals before the U.S. Court of Appeals for the Federal Circuit. He also provides clients with opinions on infringement and validity of utility patents. Hersh’s litigation experience includes bench and jury trials, Markman hearings, summary judgment proceedings, fact and expert discovery, jury focus studies, and motion practice.
Laura brings high energy, personal commitment, and a wealth of experience to every project she tackles. Whether representing a high tech company in a patent infringement proceeding before the ITC, protecting a client’s trade secrets in an arbitration proceeding, or helping high school students develop the analytical skills and self-confidence to succeed in college, Laura brings passion and drive to her work.
With over 25 years of litigation and counseling experience, Laura takes a hands-on approach to litigation, while staying focused on the client’s ultimate goals and strategies. She is “held in excellent regard by her peers for antitrust, intellectual property and commercial litigation,” and is recognized as one of the top women intellectual property lawyers in Illinois.
Barry Lee Myers is the Chief Executive Officer of AccuWeather, Inc., a position he has held since late 2007. AccuWeather is an American iconic brand in weather known around the world.
Under his leadership, the company has more than doubled in size and AccuWeather has become the leading force in weather on mobile devices on a global basis. AccuWeather is now the largest mobile weather provider worldwide and is the only company legally authorized in China to do business as a weather provider in the digital media space. It is estimated that AccuWeather information is accessible on a billion devices worldwide and that the company serves over a quadrillion “pieces” of weather information annually.
Ada Nielsen is Chief Executive Officer of a new company, FOODEXUS LLC, created to invent & commercialize technology improvements & breakthroughs in industrial & commercial cooling systems. Previously she served as Director of IP Asset Strategy and Management at BP America where she held responsibilities for developing intellectual asset strategies that identify IP, know-how, and trade secrets that maximize value for the company. Other honors include being elected President of the Licensing Executives Society (USA and Canada) Inc. in 2010, being named by IAM Magazine as one of “300 Top IAM Strategists,” and being named a Distinguished Licensing Distinguished Fellows in Chemicals, Energy, Environment & Materials by the Licensing Executives Society International. She holds an MBA from the University of Chicago Booth School of Business.
Jennifer Gallagher is a senior sales engineer who joined Innography in September 2013. She is a member of a very successful sales team where her specialty is a deep understanding of Innography’s solution portfolio and is adept at positioning solutions to best address prospective client’s perceived needs. She has also participated in industry events, contributed to industry best practices through various webinars & blogs, and has helped maintain an established sales channel through various partner firms overseas. Previous to Innography, Jennifer served as the Patent Portfolio Manager at Freescale Semiconductor. During her time at Freescale, Jennifer focused on several areas of IP strategy such as in-bound/out-bound licensing, patent sales, competitive intelligence, and litigation support.
A native Texan, Jennifer graduated from Texas Tech University with a Bachelor of Science in Electrical Engineering in 2002. During her time at Texas Tech, she completed three internships with Motorola Semiconductor Products Group in Austin, which eventually was spun-out to create Freescale.
With the ability to handle litigation across a wide spectrum of technologies, from aerospace and biochemistry to Internet/e-Commerce and medical devices, Thomas L. Duston adeptly protects the rights of his clients in patent infringement claims and trade secret disputes. He is recognized by his peers, his opponents and independent authorities as one of the most talented and skilled intellectual property trial attorneys. Mr. Duston's clients benefit not only from his grasp of technical details, but also from his creativity in handling business-critical matters and his tenacity in litigating them successfully.
David Anderson is General Counsel and Chief Ethics Officer of Northstar Aerospace, Inc. the leading independent manufacturer of power transmission products for aerospace applications. Northstar’s products are found on military aircraft including the Chinook, Apache and Blackhawk helicopters, and on commercial aircraft including the Boeing 787 Dreamliner. As Northstar’s first General Counsel, Anderson has pioneered numerous improvements in Northstar’s compliance, contracts and ethics functions. Previously, Anderson was the General Counsel and Chief Administrative Officer for North American operations of the SAFRAN Group, the French based global aerospace, defense and security conglomerate. Before that, Anderson was the General Counsel and principal financial officer of a New York Stock Exchange listed manufacturer of aerospace and electronic products that is now part of the Actuant Corporation. He began his career as an attorney with the U.S. Treasury Department, responsible for assuring compliance by national banks with department regulations governing securities disclosure and corporate governance. Anderson holds BA and MBA degrees from the University of Rochester, the JD degree from Albany Law School and an LLM degree from George Washington University. He also completed a post-graduate program in International Law at Chicago-Kent College of Law. Before relocating to the Chicago area, Anderson served as president of the Buffalo chapters of corporate counsel and financial executives organizations, and is a member of the Chicago Chapter of the Association of Corporate Counsel. He is active in the community through his church and alumni organizations of educational institutions he attended. Anderson is admitted to practice in Illinois, New York, Florida and the District of Columbia.
Ryan Daniel is patent counsel at Fresenius Kabi USA, where he primarily works on Hatch-Waxman patent litigation. Mr. Daniel joined Fresenius Kabi in 2013. Prior to joining Fresenius Kabi, Mr. Daniel worked at the law firms of Frommer Lawrence & Haug and Rakoczy Molino Mazzochi Siwik.
Mr. Daniel’s legal practice has focused on pharmaceutical patent litigation. In addition, he also has experience in defending and licensing patents, copyright matters, and trade dress litigation.
Mr. Daniel is a graduate of Princeton University and Seton Hall University School of Law. While in law school, Mr. Daniel was an intern for the Honorable Claire C. Cecchi of the District of New Jersey.
With over 20 years of experience, Sangeeta’s practice includes all aspects of intellectual property litigation, prosecution and counseling, with a special focus on patent opinion practice. She represents several Fortune 500 clients for whom she provides strategic counseling and guidance on their global intellectual property portfolios.
Ms. Shah has handled numerous patent, trade secret, trademark and unfair competition cases involving parties in the chemical, software, automotive and metallurgical industries on such matters as injection molded polyethylene terephthalate bottles, polymer reinforcements, magnetic storage devices, emission testing equipment, touch controlled switching circuits, compression molded doors, chemical vapor deposition processes and cutting tools. She has also litigated design patent and copyright infringement cases in such diverse areas as architectural building designs, automotive parts and consumer products.
Sangeeta is also the Co-Chair of Brooks Kushman’s Post Grant Proceeding practice and is actively involved in post-grant proceedings before the U.S. Patent and Trademark Office. Such involvement includes coordinating strategies across post-grant proceedings, co-pending litigation, product engineering, licensing, and patent prosecution. She actively counsels clients regarding reexaminations, Inter Partes Review proceedings and Covered Business Method proceedings.
Through her opinion and prosecution practice, Ms. Shah has extensive experience with chemical and mechanical technologies, in the areas of catalysts, food science, packaging, analytical instrumentation, dietary supplements, diagnostic kits, adhesives, plastics, therapeutics and metallurgy.
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.
Robert Loewer is a dynamic executive with a proven record of leading multiple functional roles in a company that has grown by 300% through mergers and acquisitions, new product development and international new market entry. He is the General Counsel and Director of Finance of NRE, a global manufacturer and distributor of locomotives and related technical services. NRE sells a patented “environmentally friendly” locomotive and sells locomotives in 30+ countries. Mr. Loewer works with NRE’s executive management team to align corporate strategy with intellectual property strategy. He oversees NRE’s acquisition and licensing of key technology through joint ventures, strategic collaborations and mergers and acquisitions. Mr. Loewer has a JD, MBA and a Masters in Accounting and is an attorney licensed in Illinois and in England as a Solicitor.
For over 35 years now John R. Crossan has helped businesses, institutions, and individuals thrive and compete successfully with services provided by his specialized practice of Intellectual Property Law - shortened as IP Law. John R. Crossan has, with his clients, obtained and enforced or protected against patents, trademarks, copyrights, and trade secrets, and John R. Crossan has helped clients understand and use employment covenants and IP-related antitrust law. He has done this through litigation in Federal and state courts and other dispute resolution forums, here and abroad, through preparing and prosecuting applications, by negotiations and licensing, and through counseling of clients of all sizes.
When John R. Crossan started into the IP law practice in 1973 - then called Patent, Trademark, and Copyright law - most all IP attorneys had full-service IP practices. Each attorney then came to know the intricacies of all forms of the intellectual property practice - not as today where big-firms' attorneys' practices often are very narrowly confined and even simple but comprehensive advice must be gleaned from multiple counsel. John R. Crossan enjoys litigating and trying important patent, trademark, and unfair competition cases to final result or settlement and through appeal and certiorari petitions where warranted. John R. Crossan also prepares, files and prosecutes to issuance applications for patent and trademark, and he negotiates licenses for companies and individuals. John R. Crossan also gives copyright, trade secret, and antitrust advices to clients.
SPONSORS
PAST ATTENDEES
