The IP Landscape Has Changed: But Has Your Strategy?
The IP environment has been turned upside-down over the last 24 months:
ALICE v CLS cast uncertainty on the very nature of what's patentable
Octane & Highmark decisions loosened up fee shifting standards
Post issuance proceedings can create risky outcomes
USPTO's 2nd round of AIA changes proposed in August...
How Does All This Impact Your Portfolio Strategy?
Come join thought leaders for a full day of analysis & insights on the issues facing every IP executive. The day's agenda is designed to maximize learning, benchmarking and networking opportunites.
Now in its 4th edition, this is a must attend conference to examine how your IP strategy stacks up ahead of 2016.
KEY TOPICS DISCUSSED
KEYNOTES:
Akamai v. Limelight - Divided Infringement
The Invisible Hand: Patent Monetization Models in the 21st Century
PANELS:
The 3 Pillars of IP Strategy: Patent Prosecution, Portfolio Management & Due Diligence
ITC Developments
The Right Enforcement Strategy for Operating Companies?
Benchmarking Post-issuance Proceedings after AIA & Alice
Maintaining & Enhancing Your Defensive Strategy
WHO ATTENDED
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
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.
Joan McGillycuddy is Chief Intellectual Property Counsel at Avon Products Inc. Joan is a registered patent attorney with over 20 years of diverse intellectual property experience encompassing patent litigation, prosecution and transactional practice, as well as trademark and copyright matters. During her in-house career, Joan has had responsibility for all aspects of intellectual property and is also part of the Lead Attorney team for Mergers, Divestitures and Acquisitions in house. Before joining Avon, she held the positions of Senior Counsel – Patents at Akzo Nobel, Global IP Attorney at N.V. Organon and Global IP Lawyer at Organon (Ortho Pharmaceuticals), where she had the opportunity to work in the pharmaceutical patent group in the Netherlands. She began her legal career with the New York intellectual property litigation boutique, Hopgood Calimafde, which later merged with Morgan Lewis. Joan received her J.D. from Albany Law School of Union University and her undergraduate degree in Chemical Engineering from Manhattan College.
Austin Wang is Senior Intellectual Property Counsel at Hologic, Inc., a global healthcare and diagnostics company. In his role, Austin supports the Breast & Skeletal Health division at Hologic for all aspects of intellectual property, including IP portfolio management, patent procurement, product clearance, business development support, IP litigation, advertising review and licensing. Austin holds a B.S. degree in Biomedical Engineering from Johns Hopkins University, a M.S. degree in Biomedical Engineering from Boston University, and a J.D. degree from the University of New Hampshire.
Daniel has more than eighteen years of diverse cross-disciplinary medical device experience including business development, intellectual property, regulatory clearance, and in managing an array of technical and clinical R&D products and projects. Creative and independent thinker with a passion for his work.
Mr. Levitt’s 30 years of legal experience centers in the corporate sector where he has been at the forefront of intellectual property changes. As Chief Intellectual Property Counsel at Dow Corning Corporation, Mr. Levitt led a global team of more than 25 employees to advance and protect Dow Corning’s diverse technologies and markets. Previously, Mr. Levitt served as corporate counsel at DuPont and General Counsel of Solae, LLC, a joint venture by DuPont and Bunge.
Ms. Chowdhury is an experienced Seasoned Senior IP Counsel with years of a complete spectrum of strategic global IP experience prosecuting, litigating, licensing, conducting due diligence, & assessing patentability/freedom to operate to support business objectives. She developed and supervised strategic global IP portfolio of companies in line with business objectives considering competitor presence, legal enforceability, and detectability in cost effective manner by saving over $500,000 per year. As first and only in-house patent attorney for last 8 years, established and implemented international trade secret protection plan and managed global IP portfolio of companies. Advised CEO, R&D leaders, and upper management on freedom-to-operate, due diligence investigations, collaboration agreements, in- and out-license deals, joint ventures, and MA matters to assist with business needs.
Jay Lytle practices in all areas of patent law with an emphasis on patent litigation, counseling clients on intellectual property matters, preparing and prosecuting patents, and opinion work. Jay has experience litigating patent issues in various U.S. district courts and the International Trade Commission (ITC). He also has considerable experience writing and prosecuting patent applications in the electrical and mechanical arts, particularly with computer hardware, software, network, and telecommunications technologies. In his practice he also advises clients on establishing, building and maintaining U.S. and foreign patent portfolios, analyzing patent portfolios and licensing patents.
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.
Lyle cut his teeth representing small companies defending themselves against Fortune 500 corporations in “bet the company” type proceedings and learned early on how important it is to provide a strong, tireless defense in order for his clients to prevail. He still brings an impassioned tirelessness to all his clients’ cases - as if their problems were his own. And, he hates to lose.
Lyle is the managing partner of the firm’s Washington, D.C. office. He has an active practice in investigations before the U.S. International Trade Commission (ITC) and their parallel proceedings in Federal Court, covering alleged patent infringement, trademark infringement, copyright infringement, trade secret misappropriation and other alleged unfair practices in import trade. He served in the Office of General Counsel of the ITC from 1991 to 1996 and was detailed to the Office of Chairman Watson in 1994.
Jeffrey Love's practice focuses primarily on patent litigation. He has represented parties in patent cases in federal district courts across the country, including California, Delaware, Florida, New York, Oregon, Texas, and Washington, and in the Federal Circuit Court of Appeals in Washington D.C. Mr. Love joined Klarquist Sparkman, LLP in 2000. From 1987 to 2000, he practiced appellate and general civil litigation in Portland.
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.
Byron Pickard, a director and co-chair of Sterne Kessler's Litigation Group, focuses his practice on patent disputes in Federal district courts, at the Federal Circuit, and before the Patent Trial and Appeal Board. An experienced advocate, Byron has tried cases before juries, argued more than a dozen cases in the federal courts of appeal, and tried dozens of inter partes reviews before the Patent Trial and Appeal Board.
Byron’s extensive patent-litigation experience covers a wide range of technologies, including wireless communications, virtual machines, microfluidics, genetic diagnostics, in vivo imaging, stray-voltage detection, and pharmaceuticals, to name a few. In addition to patent matters, Byron handles legal matters in additional areas of IP law, including trademark, trade dress, trade secrets, copyrights, and licensing matters.
Byron is particularly noted for understanding his clients' business as it intersects with IP, and he has been recognized as a "Top-rated Intellectual Property Litigation Attorney" and a "Rising Star in Patent Litigation" by the peer-review based publication Super Lawyers. In 2015, Bisnow Ventures named him among an elite roster of "Washington's Trending 40 Lawyers Under 40."
Byron regularly writes and speaks on complex patent issues offering insightful analysis and practical advice to readers and audiences. Most recently, Byron authored a chapter of Patent Office Litigation, Second Edition, published by Thomson Reuters in 2017. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering useful guidance for IP practitioners. In addition to his written works and speeches, Byron is a frequent source for reporters who cover developments in the IP space.
Marc is Associate General Counsel, Intellectual Property at IBM Corp., He manages the patent licensing and sales legal team responsible for generating patent income for IBM. In support of IBM's attainment of over $1B in IP income per year, the team focuses on the development and deployment of patent monetization strategies as well as infringement and sales patent collateral creation and implementation.
With over 20 years of experience spanning all areas intellectual property practice, Marc's previous management positions include oversight of the intellectual property law department for IBM's semiconductor design and manufacturing business and the patent portfolio management department responsible for IBM's global patent portfolio.
Marc has been actively involved in developing and deploying IP strategy at IBM including its founding role in the Peer to Patent project (recently implemented as pre-issuance submissions as part of the AIA), IBM's open source patent pledges, amicus activity at the Federal Circuit and the Supreme Court as well as developing the innovation cycle concept that informs IBM's approach to balancing open and proprietary innovation.
Marc is frequently asked to speak publicly and has done so on many topics including patent quality, patent portfolio management, standard setting organizations, patent monetization, and collaborative innovation among others. He holds a BE in Electrical Engineering and Computer Sciences cum laude from Stevens Institute of Technology, a BS in Geological Sciences from Binghamton University, State University of New York and a J.D. cum laudefrom Pace University School of Law. Marc is admitted to practice in NY and before the US Patent and Trademark Office.
Michael LoCascio is the Global Senior Manager of Intellectual Property Strategy for BASF’s $8 Billion/year Catalyst Division where he is responsible for implementing and overseeing IP management processes, developing patent strategies, and executing licenses and enforcement actions. Prior to his current position, he led the effort to develop the market entry and M&A strategy enabling BASF to expand into the medical device sector. Prior to joining BASF, Mr. LoCascio was a Senior Analyst at Lux Research, a technology advisory and market research firm focused on emerging technology sectors, where he started and led teams investigating Solar technology, Green Buildings, Water Technology, and the Smart Grid. Mr. LoCascio was also the founder and CTO of a nanotechnology start-up that developed and commercializing applications of quantum dots for life sciences, solid state lighting and displays, and solar energy conversion and was an engineer at Lockheed Martin conducting research related next generation naval nuclear reactors. Mr. LoCascio holds a Bachelors of Engineering in Applied Physics and Master’s Degree in Electrical Engineering from Stevens Institute of Technology.
In his current role on assignment to GE Capital as acting IP Counsel, Mark is supporting several critical initiatives involving IP, including meeting Fed regulatory obligations, identifying trade secrets and implementing protections, and the GE Capital reorganization. Mark graduated from Ohio Northern University in 1991 with a BS degree in Electrical Engineering, an English Literature minor and concentration in Business Adminstration. He received his Juris Doctor from the State University of New York (SUNY) at Buffalo School of Law in 1994. Mark then joined the boutique IP law firm of Notaro & Michalos PC as an associate patent attorney working on patent, trademark, copyright, trade secret, litigation and licensing issues for clients including Adidas, A.T. Cross and Limited Brands. In 2004, Mark left the law firm and joined GE Corporate’s patent group as Patent Counsel providing international patent support for Healthcare, Industrial and Oil & Gas technologies. In 2005, Mark was selected to be acting IP counsel for the Universal Parks & Resorts component of NBCU. From 2006-2012, Mark was acting IP counsel for GE Intelligent Platforms and GE Sensing & Inspection (now part of Oil & Gas), working with the businesses to institute IP processes to identify and protect valuable IP, and to provide a full range of IP counseling and support. Since 2012, Mark has focused on IP portfolio development around hardware and software technologies for Intelligent Platforms, Healthcare, Aviation, Power & Water, and Oil & Gas. During that time, Mark has also devoted a significant amount of effort to working on Information Protection issues and leading cross-functional teams in IP training across GE.
Ian has over 25 years of experience spanning all areas of intellectual property practice. He is currently the IP Counsel for Nortek, Inc. a $2.8 billion global, diversified industrial company with a broad array of offerings which includes ventilation products such as range hoods and bathroom fans, security and audio/video solutions, heating and cooling products, air management systems, and ergonomic and productivity solutions. As the IP counsel with Nortek, Ian is responsible for all IP matters, for each of the business units including patents, trademarks, trade secrets and copyrights and all transactional matters. Ian is responsible for all IP litigation and has managed six suits in his first year with Nortek. Bringing three to a successful resolution for his clients. These cases include Federal District Court and ITC actions. In addition to managing all IP matters, Ian worked closely with the engineering teams to develop IP processes and strategies for the various product development projects within Nortek.
Prior to Ian's work at Nortek he was Counsel for IBM. He was one of the core members of the patent licensing and sales legal team responsible for generating IP income for IBM. In support of IBM's annual attainment of over $1B in IP income, this team focuses on the development and deployment of innovative patent monetization strategies, including managing creation and presentation of infringement and sales collateral.
Prior to moving to IBM, Ian was the Intellectual Property Counsel for UTC’s Research Center. Ian’s UTC responsibilities included the oversight of the IP law department for UTC’s Research and Development Center. While at UTC, Ian was instrumental in developing a process for the identification and protection of UTC’s cutting edge technology
Prior to his work with UTC Ian was an Assistant General Counsel with Honeywell where he was responsible for all Intellectual Property issues including Patent, Trademark, Copyright, Licensing, Transactional Matters, Advertising, Government Contracts and other legal services.