AIA, Alice, IPR: Defending IP In A Disrupted World
Five years in and the AIA continues to transform IP litigation’s rules of engagement. The one certainty so far: in-house counsel need to constantly adjust their Defensive strategies to ensure their patents’ survival. An up-to-date perspective on the (dis)advantages of new, as well as existing tools, is critical for a smart, cost-effective strategy.
Join the rest of your local IP community for a one-day only session full of practical insights and learnings from front line experts focused on the latest defense strategies: navigating post issuance proceedings, changes in trade secrets, fighting NPE cost/benefit analysis and much more.
2017 Defensive Perspectives on Post Issuance Proceedings
NPE Defense: Balancing Risk, Cost and Outcomes
Strategic Defense Against Rivals & Operating Companies
Risk Management & Avoiding Litigation
Ethics in Intellectual Property
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
Keith specializes in the areas of chemical patent prosecution and client counseling. He earned his JD from George Washington University and was admitted to the VA state bar in 2000, the Washington DC bar in 2001, and is registered to practice before the USPTO.
Bob is responsible for all aspects of intellectual property with Unisys. This includes world-wide IP creation, management, assertion, litigation and licensing in support of Unisys’ commercial, public-sector and R&D activities. Unisys, a worldwide IT corporation with over 22,000 employees, designs, builds, and manages mission-critical solutions, software and information systems for both business and government environments.
Bob’s legal career began as an associate at Fish & Neave in New York City. Before joining Unisys in 2007, Bob held positions as a Senior Licensing & Assertion Attorney with AT&T Bell Laboratories and Managing IP Counsel for Motorola’s Broadband Technology Division.
Prior to obtaining a law degree, Bob was a semiconductor research engineer with Siemens Electronics, primarily focusing on Si and GaAs high-frequency device development and fabrication.
Mechanical engineer and former construction management professional turned intellectual property attorney. In-house IP counsel strategically advising business units in the data, power, and lighting industries.
Previously with an AmLaw 100 firm and focused on high stakes patent and trademark litigation, patent, trademark, and copyright procurement, licensing, counseling, and monetization of patents and other intellectual property assets. Served domestic and international clients encompassing a wide array of industries, including manufacturing, defense contractors, automobiles, medical devices, pharmaceuticals, software, consumer electronics, telecommunications, and fashion.
Twice recognized by Super Lawyers as a Rising Star in Intellectual Property Litigation in the New York Metro area (2014 & 2015).
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.
Rich Coller has been helping clients develop and execute comprehensive patent strategies for nearly a decade. His interdisciplinary academic training and laboratory research experience as a biomedical engineer prepared him to analyze complex technical issues, including those arising at the intersection of engineering and physiology. Having managed and analyzed patent portfolios valued at hundreds of millions of dollars, Rich is particularly skilled at identifying portfolio strengths and weaknesses. This patent prosecution and client counseling expertise informs his work as a leading litigator at the Patent Trial and Appeal Board, where he has handled over thirty inter partes review proceedings.
In the area of USPTO contested proceedings, Rich has served as lead or second chair counsel to some of the largest corporations in the world in their most important inter partes review and reexamination matters, which often involve co-pending district court litigation or ITC investigations. Clients often seek out Rich's expertise in these proceedings because of his proven track record of success for both patent owners and petitioners.
Rich's client counseling practice focuses on preparing product clearance opinions, providing patent validity and infringement opinions, drafting and negotiating IP agreements, and performing IP due diligence investigations in connection with mergers and acquisitions.
Rich also has extensive experience drafting and prosecuting utility and design patent applications in the medical, electrical, and mechanical arts. His primary areas of technical experience include: surgical implants and tools, physiological sensors, laboratory instrumentation, drug delivery devices, biometric systems, wireless communications systems, telecommunications systems, location-based services, navigational systems, business methods, e-commerce methods, graphical user interfaces, display technologies, lighting technologies, automotive systems, industrial equipment, textiles and apparel, sporting goods, product packaging, toys and games, and various clean technologies.
Rich is actively involved in the patent community, both in the District of Columbia and nationally. He was appointed to the Intellectual Property Owners Association's U.S. Post-Grant Patent Office Practice Committee for the 2016-2017 term, after having most recently served on its Corporate IP Management Committee.
Rich is also is a contributing author of Patent Office Litigation, Second Edition, published 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 practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year.
Prior to joining Sterne Kessler, Rich worked as a law clerk in the corporate legal group at a multinational software analytics company. Rich has also worked as a biomedical engineering university research assistant. His research primarily focused on the design and testing of surgical implants and the development of biosensors for medical and counter-terrorism applications.
Stephen is currently Senior Corporate Counsel in T-Mobile’s Litigation Group. At T-Mobile, he manages patent and other intellectual property litigation and provides strategic counseling on various intellectual property matters. Prior to joining T-Mobile, Stephen served as Assistant General Counsel at Microsoft Corporation where he managed U.S. and international patent litigation in Microsoft’s Litigation Group dating back to 2001, and later handled various patent counseling, dispute resolution, and licensing related issues as part of Microsoft’s Innovation and Intellectual Property Group. As the second patent litigator hired at Microsoft, Stephen has been responsible for many large-scale and high stakes patent litigation matters, including the Lucent v. Microsoft series of cases that are cited to frequently in the context of patent damages reform. Prior to Microsoft, Stephen practiced at Latham & Watkins in Silicon Valley, California, where he also focused on patent litigation and other intellectual property disputes. He is a graduate of the University of California, Berkeley, and the UCLA School of Law.
Tim Croll is Deputy General Counsel, IP at Cypress Semiconductor Corporation, which delivers high-performance, high-quality solutions at the heart of today's most advanced embedded systems, from automotive, industrial and networking platforms to highly interactive consumer and mobile devices. As such, Mr. Croll is involved with many aspects of Cypress’s Intellectual Property management, including patent and other IP portfolio development and monetization. During the past quarter century Mr. Croll has worked as Director of Intellectual Property at Spansion, and as an IP attorney at LSI Corp., Agilent Technologies , Hewlett-Packard and in private practice. Prior to law school, Mr. Croll worked as an engineer in Silicon Valley.
Cecilia Stiber is Associate General Counsel, IP at Frontier Communications Corporation. Prior to this position, she served as Counsel for Day Pitney LLP and as an Associate at Kenyon & Kenyon LLP. Cecilia earned her JD from Boston College Law School and holds a degree in Computer Science from Cornell University. She is registered to practice in the state of New York.
Michelle Waites is Senior Counsel for Xerox Corporation, actively involved in obtaining, protecting and enforcing and the company's legal rights. Her responsibilities include developing legal strategy, structuring, drafting and negotiating agreements for technology, M&A and other business transactions and managing complex patent, employment, and complex commercial litigation. Prior to going to law school, she spent several years working as an engineer in the aerospace industry.
On a personal level, Michelle is a year-round sports enthusiast and is a die-hard fan and supporter of her alma mater, the Syracuse Orange. She serves on the National Board of Directors of Lambda Legal and is a member of the National Bar Association and the LGBT Bar Association.
Richard Martinelli, a partner in the New York office, is a member of the Intellectual Property Group. Rich's practice focuses on all aspects of intellectual property with significant experience in patent litigation, patent prosecution and client counseling.
He has litigated patents at trial, before the ITC, and on appeal to the U.S. Court of Appeals for the Federal Circuit. Rich has counseled clients and rendered opinions on patent validity, infringement and freedom to use. In addition, he is a registered patent attorney with experience drafting patents and practicing before the U.S. Patent and Trademark Office.
Rich’s patent work has involved a wide range of technologies including the fields of analog and digital circuits, image processing, image sensors, 3-D graphics, audio and video compression, computer hardware and software, e-commerce, network technologies, digital rights management, encryption, electric motors and control, semiconductors, medical devices, automotive components and consumer products.
Chris Carnaval is Senior Patent Counsel at Canon U.S.A., Inc., a position he has held since June 2016. Prior to joining Canon, Chris worked as an associate at the law firms of King & Spalding and White & Case in New York City . During his twelve years of law firm practice, Chris focused primarily on patent litigation, often defending major technology companies in cases brought by non-practicing entities. Most of these cases involved telecommunications technology, computer software, or consumer electronics. Chris received his B.S. in Computer Engineering and M.S. in Computer Science from Polytechnic University and his J.D. from Harvard Law School.
Gene Potkay is Senior Vice President, Intellectual Property, for Nielsen (the audience measurement and ratings company), with responsibility for Nielsen's global IP practice since 2008. Under his leadership, Nielsen's U.S. patent holdings have grown by a factor of 6x overall and in annual U.S. issuances, despite a more challenging patent environment.
Gene began his IP career in 1989 at AT&T as a licensing manager after 9 years as a Member of Technical Staff at Bell Labs. Over the next 11 years, he developed, managed and led many licensing initiatives and IP functions across various technologies from optics, network systems to semicondictors and delivered substantial returns for AT&T and Lucent Technologies. Prior to Nielsen, Gene led Avaya's monetization program Avaya as VP IP from 2000 to 2007. He is a member of the IPO, the IP Best Practices and the Gathering forums.
Peter Kendall serves as IP Counsel for Siemens Medical Solutions where he is responsible for electrical patents. He earned his JD from Brooklyn Law School, as well as a BS in Electrical Engineering from New York Institute of Technology. He is registered to practice in Washington DC.
Steven’s practice focuses on intellectual property enforcement and defense, including court and administrative action –patent office proceedings (ex parte patent reexaminations, inter partes patent review, trademark oppositions) and ITC. He is also experienced in procurement, licensing, due diligence and counseling, involving diverse intellectual property issues including advertising compliance, anti-counterfeiting, copyrights, domain names, grey goods, patents (utility and design), privacy and data protection, trade dress, trade secrets and trademarks. His litigation and administrative challenge practice has been diverse, running the gamut of technologies involving biotechnology, chemical, electrical, fashion, Hatch-Waxman, mechanical device, medical device and software matters. Steve also carries with him in-house experience, having been the Chief Intellectual Property Counsel for a joint venture ($1.5 billion in sales) between two large pharmaceutical companies.
In addition to Connecticut, New York and California, Steve is admitted to practice before the United States Supreme Court, US Court of Appeals, Federal Circuit and several US District Courts (Connecticut, Southern and Eastern Districts of New York, and D.C. Circuit).
Bryan Kohm practices intellectual property litigation, with a focus on representing high technology and life science companies in patent infringement and trade secret misappropriation disputes. Bryan has experience in a wide variety of venues throughout the country, including federal and state courts, the International Trade Commission, and the Court of Appeals for the Federal Circuit. Bryan has been recognized as a "Rising Star" in the area of IP Litigation by Northern California Super Lawyers in 2013 and 2014. He was recently appointed co-chair of the ABA’s Committee on Intellectual Property Litigation.
Richard DeLucia is part of an elite class of patent lawyers that has served as chief trial counsel in more than 100 cases. “He is a ‘confident and strategic’ player who ‘simply wins a lot’,” wrote Chambers USA in response to his victories for Boston Scientific, Sony, GE Healthcare, Teva Pharmaceuticals USA, Heidelberg Harris, RJR Nabisco, Fisher-Price/Mattel, and Sloan-Kettering, among others.
His knowledge of patent law and his understanding of jury psychology fuel his reputation for success. And, his ability to evaluate risk, craft large-scale strategy, and artfully advocate make him a formidable litigator. In addition to providing trial talent, he collaborates with clients to assess prospects for efficient disposition and settlement. “[T]here is no doubting Richard DeLucia’s effectiveness in battle,” wrote Chambers Global of his courtroom style.
That style and effectiveness helped Mr. DeLucia persuade a jury that Johnson & Johnson infringed Boston Scientific’s patent on the drug-eluting cardiac stent. “Richard DeLucia’s contemporaries applaud his persistent and tenacious approach to patent litigation,” wrote Who’s Who Legal – The International Who’s Who of Business Lawyers, in the patents category, recognizing him as one of New York’s finest.
After securing infringement damages valued at approximately $900 million for Heidelberg Harris against Mitsubishi Heavy Industries in a patent trial, Who’s Who Legal noted “Richard DeLucia is an ‘excellent litigator’ with a long list of successes, including his recent jury verdict over Mitsubishi Heavy Industries relating to printing-press technology."
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.
Wesley Nicolas is Sr. Intellectual Property Counsel at Novo Nordisk, Inc. in Plainsboro, New Jersey. Mr. Nicolas graduated from The Catholic University of America Columbus School of Law, and has a B.S. in Chemical Engineering from The University of Virginia. Mr. Nicolas practices all aspects of patent prosecution, managing the entire U.S. medical device patent portfolio for Novo Nordisk. Much of his work focuses on counseling and patent prosecution, including both Ex Parte and Inter Partes proceedings. Mr. Nicolas has experience in the three major patent practice areas, Government practice (formerly at the USPTO as a Primary Patent Examiner), private practice (formerly at Greenblum & Bernstein, P.L.C.), and corporate in-house practice (Novo Nordisk).
Joseph is the manager of patent engineers spanning all technologies associated with IBM's vast patent portfolio. He has been a patent engineering professional for the past 10 years supporting the licensing and divestiture of intellectual property where he developed evidence of use, analyzed patent portfolios, valued patents, and developed risk profiles and analysis. Joseph is a registered patent attorney and a member of the Florida bar. Joseph held a variety of positions in IBM including software development and semiconductor development. Joseph holds masters degrees in both computer engineering and software engineering.
James Markarian is Senior Counsel and Licensing Manager for North America for Siemens Corporation. He manages Siemens' outbound licensing programs and IP sales; handles incoming licensing matters and IP acquisitions; and negotiates and drafts various transactional agreements (e.g., IP licenses, JV's, Software licenses, R&D's, Agent and Service, Asset Purchase or Sale, NDA's, etc.). James provides support for Siemens' M&A activities, advises Siemens' business units regarding IP asset management as well as IP issues related to standards organizations. He has an Aerospace Engineering degree from Boston University and a JD degree from Brooklyn Law School. Before joining Siemens, he worked for Refac Corporation, and the law firms of Pennie & Edmonds; Ladas & Parry; and, Wyatt, Gerber, Burke & Badie.
Porter Fleming leads the firm’s Litigation Practice Group and has more than twenty five years of intellectual property litigation experience. Not only is he comfortable in the courtroom, before a Judge or jury, he has also developed a unique ability to advise senior management and in-house counsel efficiently and effectively. His varied experiences and significant results for his clients speak for themselves.
Within the Litigation Practice Group, Mr. Fleming leads a team of talented attorneys, with expertise across a spectrum of industries, and has and continues to represent a diverse range of clients, from large corporations to individual inventors and innovators. Through this practice, Mr. Fleming is known to draw upon the diverse resources of the firm, creating for each litigation a “Cabinet” of attorneys, experts and scientific advisors deeply proficient in the various legal and technical aspects of the specific case to effectively and efficiently guide the client through the legal process from the beginning to the resolution. His leadership, knowledge and experience in intellectual property law is valued by many of the nation’s leading pharmaceutical and scientific corporations.
Bill Hayden is a Senior Attorney for Microsoft Corporation. He has 15+ years of experience successfully launching enterprise and consumer technology products, closing complex multi-national transactions, and advising on new media services and technology related matters. Bill is counsel for the Office 365/Enterprise Public Sector/Government Cloud offerings and provides global legal support for the privacy, security, and marketing of innovative technology solutions. At Microsoft, he serves as Board Co-Chair for the Center for Safe Internet Pharmacies, a cross-industry nonprofit.