IP STRATEGY SUMMIT: NY 2013
Stay Tuned For The 2014 Agenda
The IP Strategy Summit: NY has established itself as the East coast's leading conference focused on IP strategic issues. Every year, it brings together thought-leaders from a cross-spectrum of blue chip companies for a unique mix of insightful content, workshops, exclusive speakers, high power networking and real life, actionable cases studies.
Why Attend?
Intellectual property leaders are under increased pressure to deliver results, while also assuming multiple roles. This is a must-attend event for IP executives that will provide the knowledge needed to overcome these day-to-day and strategic challenges.
Contact steve.camac@centerforceusa.com for more information.
KEY TOPICS DISCUSSED
WHO ATTENDED
- Building an IP Strategy
- Evaluate, monetize and enforce your IP
- Aligning IP strategy and company goals
- Dealing with internal and external actors
- NPE: friends, foes, or a new paradigm?
- 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
Marian Underweiser is IBM's Counsel for IP Law Strategy and Policy. Dr. Underweiser develops IBM's policy on a broad spectrum of IP matters, including legislative, PTO, and judicial reform. She has worked extensively representing IBM's position on the America Invents Act throughout the legislative process, and continues to do so through current implementation efforts. Her amicus work includes IBM's briefs to the Supreme Court in Microsoft v. i4i, eBay v. Mercexchange, KSR v. Teleflex, Bilski v. Kappos, and Quanta v. LG. Dr. Underweiser has held several prior positions at IBM with responsibilities including the management and oversight of IBM's worldwide patent portfolio and management of the IP department at IBM's T.J. Watson Research Center. As a member of IBM's Corporate IP licensing team, Dr. Underweiser negotiated major IP transactions including patent and technology licenses, litigation settlements, and business line divestitures. Before joining IBM, Dr. Underweiser was an attorney at Kenyon & Kenyon, LLP an intellectual property law firm in New York.
Dr. Underweiser is a graduate of Harvard University where she received her AB in Physics. She received her PhD in Physics from UCLA, where she specialized in Condensed Matter Physics, and her JD from Columbia Law School where she was a Stone and Kent scholar. She is admitted to the United States Supreme Court, the District Courts for the Southern and Eastern Districts of New York, and the State of New York. She is a registered patent attorney and is an adjunct professor at the Benjamin N. Cardozo School of Law where she teaches an advanced course in Technology Licensing.
John F. Martin has over 25 years of experience leading and growing innovative enterprise software companies, focused on emerging market segments. Prior to Innography, John helped drive 50-fold revenue growth in 10 years at IQNavigator, the leader in services procurement solutions for the Global 2000, as Chief Technology Officer and head of strategy and marketing. Previously, John held multiple VP-level positions at Saba Software for four years, including VP Product Management, as it grew from no revenue to over $60 million and went public as the leader in learning management solutions. John was also VP Convergence Technologies at CSG Systems as that company went public and grew to over $200 million in sales. As a management consultant at McKinsey & Co., for four years in the United States and Europe, John led engagements to solve strategic issues and increase value for clients in a wide range of industries. John was also a leader for four years in Oracle's consulting division, as Oracle grew from its IPO to a billion-dollar firm. John holds an MBA from Stanford and BS degrees in electrical engineering and computer science from MIT.
Mr. Classen is Deputy General Counsel of Computer Sciences Corporation where he supports CSC’s commercial business units, Office of Innovation and intellectual property initiatives.
A graduate of Trinity College (Connecticut), Mr. Classen received his Juris Doctor from Catholic University and a Master of Business Administration from the Wharton School of the University of Pennsylvania. While in law school, Mr. Classen was a member of the Catholic University Law Review and Editor in Chief and Founder of The Journal of Contemporary Health Law and Policy.
Mr. Classen is the author of A Practical Guide to Software Licensing for Licensees and Licensors (5th Edition) published by the American Bar Association. Mr. Classen serves on a number of business, professional, and civic boards, including The Walters Art Museum, The Calvert School, and the Board of Advisors of The Computer & Internet Lawyer. He is the author of the three volume set Classen’s Commercial Forms as well as Classen’s Merger and Acquisition Forms. Mr. Classen has been widely published in legal journals and spoken extensively before professional groups both domestically and internationally. His recent articles address technology licensing, export controls, law department management, and managing inside/outside counsel relationships.
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.
Mr. Caplan practices in the area of patent litigation, counseling and prosecution as well as in the areas of antitrust litigation and general corporate matters involving the acquisition, sale or licensing of intellectual property rights. His litigation experience includes numerous patent infringement actions in the Eastern District of Texas, the Central and Northern Districts of California, the District of Delaware and the District of Nebraska. His experience also includes patent cases involving semiconductor wafer inspection equipment, as well as pharmaceutical infringement actions including Hatch-Waxman and conventional non-Hatch-Waxman pharmaceutical lawsuits. He also is active in several inter partes review (IPR) proceedings before the Patent and Trademark Office. Mr. Caplan was lead counsel in successfully convincing the Federal Circuit to vacate the claim construction, infringement, damages and injunction judgment from a 14 day jury trial litigated by another firm. He also has obtained a temporary restraining order on behalf of a pharmaceutical client against two competitor drug companies. Mr. Caplan also appears in state courts throughout the United States and obtained a summary judgment victory in a Kentucky State court action involving patent ownership and misappropriation of intellectual property rights which was affirmed on appeal. Additionally, he represents several Chinese defendants in a class action antitrust lawsuit involving the export of magnesite from China. Another significant aspect of Mr. Caplan’s practice is providing counseling to clients on infringement, validity and freedom to operate matters as well as licensing of technology. This also has involved advising corporations with respect to intellectual property issues in connection with acquisition and divestiture matters. He has extensive experience prosecuting patents in the United States and foreign patent offices for numerous clients in all fields of technology. This has included obtaining worldwide patent protection in fields such as pharmaceutical, medical device, semiconductor manufacturing and devices, automotive fuel injection, air bag and anti-lock braking systems, wireless telecommunications, consumer products, financial services and business methods. He has significant experience managing all aspects of worldwide utility and design patent portfolios. Mr. Caplan is the past President of the New Jersey Intellectual Property Law Association (the “NJIPLA”) whose membership includes most of the world's largest pharmaceutical companies headquartered in New Jersey. He regularly speaks on recent developments in patent law.
Mark Stignani is a registered patent attorney and serves as Of Counsel at Schwegman, Lundberg & Woessner, P.A. Mark has patent experience in various technology areas, including software, information systems, mobile devices, computer hardware and design, telecommunications, and mechanical. His practice includes prosecution, reexamination, patent and portfolio analysis, freedom to operate, patent strategy and planning and strategic counseling.
Prior to joining SLW, Mark served as an Assistant General Counsel for Thomson Reuters for over ten years. While at Thomson Reuters, Mark’s responsibilities included the harvesting and protection of intellectual property associated with software and high value content as well as providing primary intellectual property legal support for business development, contracts, editorial, technology area in the legal, healthcare, and financial services information market groups. As an integrated team member, Mark also served on various executive committees that drove investment in acquisitions, emerging business development and new product development across a multiple set of marketplaces.
Mark received his Juris Doctorate from William Mitchell College of Law while working for Alliant Techsystems. He had previously done post graduate work in robotics and control systems at the University of Minnesota and National Technological University while working at Honeywell, Inc.
Clark leads the Patent Monetization and Licensing programs at Avaya with extensive experience in all aspects of patent licensing program development. At Avaya Clark runs portfolio evaluations, invalidity assessments, reverse engineering, patent sales, patent purchases, and patent broker evaluations and agreements.
Clark’s area of expertise also include state of the art telecommunications system design. Special expertise in Voice Over IP, Contact/Call centers, Wireless communications, network infrastructure, Unified Communications, Power over Ethernet and Cat 5/6/7 jack designs.
Bob works for TeleCommunication Systems, Inc. (TCS) in Annapolis MD as the Vice President Intellectual Asset Management, responsible for the strategic management and monetization of TCS’s IP portfolio. In this role Bob has the overall business responsibility for all IP activities including capture, management, monetization, and profit & loss. With over 200 US patents in the portfolio and over 350 pending, Bob’s group has the responsibility for strategically managing and leveraging the IP assets in pursuit of both core and non core business. Immediately prior to joining TCS, Bob worked for Northrop Grumman Corporation, Electronic Systems Sector from 2003-2011 as the Director of the Intellectual Property & Strategic Technology Agreements business unit. Prior to Northrop Bob was an Associate Vice President at the British Technology Group (BTG), a 50+ year old IP management group headquartered in London.
Bob has been active in the Licensing Executives Society (LES) since 1998 and is currently serving on the LES Board of Trustees and is also the Vice Chairman of the High Technology Sector.
Bob has spearheaded various types of business and technology transactions around the world involving IP, including patent sales, enforcement, licensing, the establishment of second-source suppliers, IP acquisition, Open Innovation, open source, etc. Bob received his Bachelor of Science in Electrical Engineering degree from Villanova University and his MBA from Drexel University’s LeBow College of Business.
A seasoned forensic accountant, David Daly, a PwC Partner in New York, brings over 22 years of public and 4 years of private accounting experience to his clients. David is a
subject matter specialist in the PwC Licensing Management and Contract Compliance practice. Having worked in both the music industry and as a forensic accountant, David
has earned the respect of his clients and peers for his unique perspective and years of experience. David’s teams test to ensure that licensees have paid his clients the fees or
royalties due to them and determines licensees’ compliance with other financial or specific provisions of the relevant agreements. In addition, he renders expert witness testimony on
such topics as accounting and contract-related issues.
Over the years, David has successfully completed engagements for clients in many diverse industries, including publishing, entertainment, advertising, international business,
healthcare, real estate, insurance and construction. He contributes to the recorded music section of the PricewaterhouseCoopers Global Media and Entertainment Outlook, a
leading international financial forecast that contains the latest trends and market data for the E&M industry, and he contributed to the Intellectual Property Damages in the
Entertainment Industry chapter of the Litigation Services Handbook, The Role of the Financial Expert, Fourth Edition. His wealth of experience, forensic skills and passion
help Dave drive value for his clients.
David graduated from Villanova University with a bachelor of science in accountancy and he holds a New York State Certified Public Accountant license. He is certified in Financial
Forensics (“CFF”) by the American Institute of Certified Public Accountants (“AICPA”) and earned the Certified Fraud Examiner (“CFE”) designation from the Association of
Certified Fraud Examiners. David is a member of the AICPA and the New York State Society of Certified Public Accountants (“NYSSCPAs”), for which he sits on the
NYSSCPAs Professional Ethics Committee. In his scant spare time, David serves as coach for several of his four children’s sports teams, volunteers in his local community and shares
quality time with family and friends.
Jay Reiziss is an international trade attorney with an active practice in investigations before the U.S. International Trade Commission (ITC), U.S. Department of Commerce, United States Trade Representative (USTR) and Customs, and in U.S. Federal Courts. His practice and experience includes Section 337 intellectual property investigations and extends to antidumping and countervailing investigations, and Section 201 and 421 safeguards investigations. From 1995 to 2007, Mr. Reiziss worked at the ITC, serving in the Office of General Counsel, the Office of Chairman Stephen Koplan, and the Office of Unfair Import Investigations. As an attorney with the ITC, Mr. Reiziss was involved in more than 50 Section 337 investigations involving patents, trademarks and trade secrets in the areas of biotechnology, chemistry, computer hardware and software, and mechanical devices. His experience includes all aspects of litigation before ITC Administrative Law Judges (ALJs), advising ITC Commissioners, and briefing and arguing matters before the U.S. Court of Appeals for the Federal Circuit.
Carl is a former Administrative Law Judge with the U.S. International Trade Commission and has seen it all from the other side of the bench. With this unique perspective, Carl understands what is important to the out-gunned and out-manned trial judge tasked with deciding the winner in complex Section 337 proceedings. Having experienced first-hand the “ups and downs” of presiding over Section 337 investigations, Carl can share with you his insights on how to effectively, efficiently, and persuasively present your best case before the ITC.
Jeff Ronaldi has 25 years of experience managing and successfully growing technology-based businesses, including, ImageExpo, a division of SPX Corpora
Jose A. Esteves is a partner in the Intellectual Property and Technology Group, where he focuses on IP monetization and finance, and complex technology transactions relating to pharma/biotechnogy, outsourcing, IT/Internet and media and clean technologies. Mr. Esteves advises a diverse group of clients, both U.S. and abroad, including clients from Argentina, Brazil, India, Japan and Korea. Mr. Esteves also handles intellectual property and technology aspects of mergers and acquisitions, traditional financings, public offerings and commercial transactions.
In summing up his years of experience, Alan describes himself simply as a problem solver for his clients’ intellectual property concerns. He helps his clients successfully meet their business goals in
intellectual property matters, whether those goals involve litigation, alternative dispute resolution, counseling and strategy, or portfolio analysis.
Alan practices all aspects of Intellectual Property law with an emphasis on patent litigation, client counseling and alternative dispute resolution. He is experienced in patent infringement and validity
assessment, as well as advising clients on patent portfolio management, and has handled all phases of patent prosecution, patent appeals, and reexaminations. He is a frequent speaker on and writer
on the new America Invents Act provisions regarding post grant procedures to challenge and defend the validity of patents in the patent office. He is a State of Minnesota Qualified Neutral for
adjudicative services and mediation, a member of the American Arbitration Association’s National Panel of Neutrals, and a member of the World Intellectual Property Organization’s list of Arbitrators
and Mediators. Alan has achieved an AV peer review rating by Martindale-Hubbell.
Alan’s areas of technical expertise include immunology, microbiology, genetic engineering, food science, applied chemistry, pharmaceuticals, medical devices, and commercial and consumer
products. As a Special Assistant Attorney General for Minnesota in the early 1980’s, Alan handled litigation and administrative agency matters primarily in the environmental area.
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.
Mr. Gabric is chair of the firm’s Litigation Group and focuses patent litigation. With over two decades of trial experience, Mr. Gabric has substantial first and second chair responsibilities in bench and jury trials. His litigation experience also includes Markman hearings, preliminary injunctions, temporary restraining orders, arbitrations, mediations, and appeals. Mr. Gabric has represented clients from a variety of industries, including pharmaceuticals, medical devices, automotive, ecommerce, electronic trading, analytical instrumentation, chemical, and computer software and hardware. Mr. Gabric has a B.S. in Chemistry from Boston College, and received his J.D. from DePaul University.
William Mansfield
ABRO Industries, Inc.
William Mansfield is the Director of Intellectual Property for ABRO Industries, Inc. headquartered in South Bend, Indiana. ABRO exports a wide variety of household, automotive and light industrial goods such as glues, tapes and oils from the United States under the ABRO brand to individuals in developing nations worldwide. While virtually unknown in Western Europe and the United States, ABRO is a major brand name in countries such as Pakistan, Nigeria and Kosovo.
As Director of Intellectual Property, Mr. Mansfield is in charge of protecting the over 1,500 trademarks ABRO has registered in over 160 countries. This involves coordinating the actions of attorneys, investigators and government officials on six continents (and he is hoping for a case in Antarctica to arise one day as well).
He earned his J.D. from Indiana University School of Law and also has a B.A. in Psychology from Perdue University. He has been in the field of intellectual property protection for over 15 years, first as an undercover investigator and then as an attorney. He previously served with the U.S. Army in both active and reserve capacities and is currently on the board of the United States Selective Service System. He volunteers with the organization International Justice Mission assisting with the investigation and response to issues such as human trafficking. He was an Associate Professor at Indiana University Purdue University at Indianapolis where he taught a course on human trafficking and sex slavery.
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.
John P. Hanish, Ph.D., is a partner in the firm's Litigation Department and a member of its Patent Litigation Practice. He focuses on trials and appeals of patent infringement and licensing disputes in the federal courts, patent licensing, arbitration of disputes related to patent licensing and infringement, pre-litigation strategies related to patents and trade secrets, and counseling inventors and entrepreneurs regarding patent procurement and other IP issues for start-up ventures. Mr. Hanish joined Goodwin Procter in 2008.
Mr. Hanish has 13 years of trial and appellate experience in patent, trade secret and licensing disputes related to pharmaceuticals, biotechnology, medical devices, electronics and consumer products. In 2010, he represented Merck KGaA in an arbitration proceeding conducted in the International Centre For Dispute Resolution in which Merck sought indemnification from ImClone Systems Incorporated for breach of provisions in a patent license and development agreement that related to therapeutic compositions combining monoclonal antibodies and antineoplastic agents for the treatment of cancer.
Mr. Hanish was appellate counsel for a research hospital and won a reversal of a summary judgment in which the hospital’s unjust enrichment, trade secret misappropriation, and unfair trade practice claims had been dismissed. The hospital subsequently won a substantial award at trial for its contributions to the development of the most successful treatment to date for age-related macular degeneration in the eye. Massachusetts Eye and Ear Infirmary v. QLT Phototherapeutics, Inc., 412 F.3d 215 (1st Cir. 2005).
Mr. Hanish was counsel for several bar code and machine vision manufacturers in a patent infringement trial in which all 14 of the Lemelson Partnership’s patents-in-suit were held invalid, unenforceable and not infringed. Symbol Technologies, Inc. v. Lemelson, 301 F. Supp.2d 1147 (D. Nev. 2004).
Scott Culpepper uses his courtroom and scientific experience to provide intellectual property owners with representation grounded in a deep understanding of both advocacy and invention. Practical and persuasive, Mr. Culpepper has experience across the intellectual property litigation spectrum, including patent infringement litigation, copyright, trademark, and licensing disputes. Representing clients ranging from start-ups to the Fortune 50, Mr. Culpepper has appeared in courts across the country and his experience includes Section 337 trials before the International Trade Commission (ITC). In addition, he advises technology companies on critical legal, strategic and business planning issues.
A registered patent attorney with the U.S. Patent and Trademark Office, Mr. Culpepper holds a degree in aerospace engineering. He serves clients in that industry as well as those in the computer software, navigation, computer hardware, consumer products, and security industries.
Bryan J. Vogel is a trial lawyer and partner in the New York office of Robins, Kaplan, Miller & Ciresi L.L.P. He founded the New York office of the firm with two other partners in order to expand the firm’s national trial practice and capabilities. Mr. Vogel is a registered patent attorney with a background in chemical engineering. His practice focuses on intellectual property litigation, arbitration and counseling, with a particular emphasis on patent and trade secret litigation before the Federal Courts, the U.S. International Trade Commission, the ICC International Court of Arbitration and the American Arbitration Association. Mr. Vogel helps clients in litigation and arbitration and provides legal counsel in a broad range of industries, including life sciences, emerging technologies, polymer and chemical arts and consumer products. Specific represented technologies include pharmaceuticals, small molecules, antibodies, assay systems, bone implants, specialty chemicals, polymers, solar technologies, biofuels, extraction technologies, textiles, bioprosthetic heart valve systems, annuloplasty rings, catheter technology, chewing gum, colloidal silica sols and particles for electronic applications, water-soluble polymers, waste-water treatment, specialty chemicals, skincare products, integrated circuits, semiconductor processing, computer systems, computer software, telephony, international paging systems, financial systems, LCDs and a range of mechanical devices.
Active in the profession, Mr. Vogel is a frequent speaker and author. Among his recent speeches is a speech entitled “Biopiracy: Fact or Fiction? International Treaty Negotiations Could Affect Your IP Rights and Your Bottom Line?” IPO Annual Meeting, Boston, Massachusetts (September 16-17, 2013), and among his recent articles is an article entitled “To Enjoin or Not to Enjoin: What's Come of the Test Since eBay?” Landslide (September/October 2013). Mr. Vogel is Vice Chair of the Emerging Technologies Committee of the Intellectual Property Owners Association. Prior to law school, Mr. Vogel worked for Montell Polyolefins as a research engineer in the Advanced Materials Division and for Insight Integration, Inc. as a project engineer. During law school, Mr. Vogel interned for the Honorable Paul R. Michel of the United States Court of Appeals for the Federal Circuit, as well as for the Honorable Marian Blank Horn of the United States Court of Federal Claims, and for the Office of Unfair Import Investigations of the U.S. International Trade Commission. Mr. Vogel’s full bio can be found at http://www.rkmc.com/lawyers/bryan-vogel, and he can be reached at bjvogel@rkmc.com or 212.980.7400.
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