IP STRATEGY: Orange County 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 whilebenchmarking 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.

APPROVED FOR 6.5 HOURS OF CALIFORNIA MCLE CREDITS!

Credits not claimable for MCLE in legal ethics, elimination of bias or competence issues.

KEY TOPICS DISCUSSED

Due Diligence & Portfolio Evaluation
A Unified Patent Prosecution Strategy
Defending Against NPEs - Fight or Flight?
The Price of Entry: Litigation & Enforcement
Post Issuance Proceedings - The Role In Your IP Strategy
Monetization - The New Paradigm, Harvesting Your IP
Enforcing & Defending Against Competitors & Operating Companies

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

Alex Butler
Vice President, IP Consulting
Questel

Jeffrey Birchak
Associate General Counsel & VP of IP
Fallbrook Technologies

Milan Patel
VP, Lead Patent Counsel and Patent Strategy
TiVO

David Diamond
Vice President of IP
MannKind Corporation

Phil Colburn
Co-Managing Partner
Cantor Colburn LLP

Sharon Beresford, Ph.D.
Associate Director, Intellectual Property
MannKind Corporation

Scott Trask
Director, Technology & IP Development
Newport Corporation

Kumar Maheshwari
Patent Counsel
Endologix

Kumar's responsibilities focus on increasing and maintaining the long-term value of the Endologix and its products by means of Intellectual Property (IP) Rights. Drafting and prosecuting patent applications but will likely also extend to work on a variety of other projects, including general IP counseling and patent analysis, and Patent litigation. Draft and prosecute patent applications. Supervise U.S. and foreign counsel engaged in drafting and prosecuting patent applications and in post-grant challenges, including inter partes review, post grant review, oppositions and appeals. Acquire detailed understanding of the technologies, products and R&D activities of the business. Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive IP and commercial activities, and licensing opportunities Conduct landscape searches, patentability reviews, freedom-to-operate analyses, and patent assessments relating to R&D activities, product releases, licensing opportunities and IP acquisition. Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements. Foley & Lardner LLP Associate Foley & Lardner LLP November 2006 – Present (8 years)|Los Angeles, Ca Kumar Maheshwari has more than seven years of intellectual property experience in electronic patent prosecution, trademark acquisition, licensing, technology contracts and various litigation matters. Practice in the medical, mechanical, electrical and computer arts including patent prosecution, due diligence, clearance, invalidity, infringement and related opinion work, in the fields of medical devices and software. • Provide representation to biotechnology companies such as Medtronic. • Draft patent applications and responses related to insulin sensing and infusion pumps for Medtronic. • Prosecute patent applications related to catheter/ stent deployment and drug eluting stent mechanisms. • Client counseling to medical device and software companies to include IP portfolio strategies and identifying licensing opportunities. • Drafting patentability, clearance opinions and IP licensing documents. • Performing a comprehensive risk assessment mapping competitor patients against product landscape • Conduct IP due diligence for an acquisition of a $250M company • Draft 200+ new patent applications from disclosure meeting stage. • Draft 500+ office action responses to USPTO for both domestic and foreign patent applications. • Draft Inter Partes Review requests, patent and trademark licensing agreements, non-disclosure agreements, pleadings, claim charts for infringement and invalidity contentions. • Prepare cease and desist letters for patent litigation cases.