The IP Landscape Has Changed: But Has Your Strategy?
The IP environment has been turned upside-down over the last 24 months:
ALICE vs CLS cast uncertainty on the very nature of what's patentable
Octane & Hoghmark decisions loosened up fee shifting standards
Post Issuance Proceedings can create risky outcomes
How Does All This Impact Your Portfiolio Strategy?
Come join thought leaders for a day of learning, benchmarking & networking on the issues facing in-house counsel.
CLE: Approved for 5.5 hrs. WA State CLE (4.75 regular + .75 ethics)
KEY TOPICS DISCUSSED
Portfolio Management & Patent Prosecution in the Era of IPRs, ALICE & OCTANE
Trade Secrets & Your IP Strategy
Enforcing with Confidence: Lessons Learned for Operating Companies in a Post IPR Landscape
Defensive Strategy 2.0: Facing a Better Prepared Plaintiff
Post Issuance Proceedings for 2017 & Beyond: Plaintiff & Defensive Perspectives
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
Paul Swegle earned both a BA in Political Science and his JD from University of Washington. He currently serves as General counsel at Observa and has led successful funding rounds and filed applications for six patents crucial to the company’s success. Prior to his post at Observa, Paul served as General Counsel at Newyu and before that, Payment Gear. He is a board member for Alliance for Pioneer Square and also serves on the board of advisors for the Innovation and Technology Law Degree Program at Seattle University School of Law.
Jesse Kindra is the University of Washington Assistant Vice President for Intellectual Property Management. He took this position after spending more than twelve years working first as an adjunct and then as the Director of Intellectual Property Management at University of Washington, and before that in two IP-related positions at the National Institutes of Health. Jesse holds a BS in Biology from University of Illinois at Urbana-Champaign, an MS in Biotechnology and Business from Northwestern University Kellogg School of Management, and a JD from Capital University Law School.
Matt Talpis serves at Chief Intellectual Property Counsel for Vulcan Inc. He has held a number of other IP-related positions at companies including Amazon, IBM, and Emerson Process Management. He holds a JD from University of Arizona and a BS in Computer Science from University of California San Diego. He is a certified US Patent Attorney and is licensed to practice in the states of Washington and Texas.
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals.
He is the primary evaluator for standards essential patents on today's most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada.
One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect.
Mark S. Parris, partner in the Seattle office, is a member of the Intellectual Property Group. Mr. Parris’ practice focuses on complex commercial litigation involving patent and trade secret issues and other related technology disputes. His experience includes litigating and assisting clients with drafting and negotiation of licenses and other contracts relating to the sale or distribution of hardware, software, medical devices, and other intellectual property and products. Mr. Parris has substantial experience in representing clients in litigation and counseling concerning protection and misappropriation of trade secrets, enforcement of non-competition agreements and other competitive issues, as well as general commercial distribution practices and contracts. He was one of two patent litigators in Washington selected as an Amazing Attorney by Washington CEO magazine and was recently recognized as one of the top 30 trial lawyers in Washington. He has been a speaker nationally at various seminars on litigation and trial techniques. Mr. Parris has tried numerous cases - both jury and non-jury trials - has handled several arbitrations and mediations and has served as an expert witness. In addition, Mr. Parris is a member of the firm’s Insurance Recovery Group. He has been named as the leading policy-holder side attorney in Washington State. He has represented several Fortune 500 companies as well as the State of Washington, the Washington Association of Municipal Attorneys and several cities, counties and port authorities in insurance coverage disputes.
Carole is a practicing patent attorney with experience in all aspects of intellectual property protection and strategy and law, including patents, trademarks, copyright, and trade secrets and addressing issues regarding patentability analysis, drafting, filing, patent prosecution, transactions, standards, cease and desist issues, indemnification, due diligence, trademark and patent infringement analysis, design arounds, right to market clearances, competitive landscapes, and requests to license. She is currently Associate General Counsel and Chief IP counsel for TerraPower and holds a JD from Harvard Law School, a MS in Aeronautical/Astronautical Engineering from Massachusetts Institute of Technology, and a BS in Astronautical Engineering from the US Air Force Academy.
Mark Nelson is a partner in Dentons' Litigation and Dispute Resolution practice. He has nearly 20 years of
experience litigating large, multifaceted patent infringement cases in federal district courts and before the
International Trade Commission.
Mark's experience in patent litigation spans a number of diverse technologies, including biotechnology;
semiconductor products and the processes used to make such products; telecommunications and networking;
satellite communications; gaming technology; financial services technology (e.g. payment systems, mobile
payment systems, check processing, ATM functionality, and software, hardware and infrastructure supporting
same); machine learning; personalized communications systems; Internet-related personalization; navigation
technology; cryptography; electronic circuitry; Internet business methods and search engines; computer software;
explosives used in automobile airbags and other automotive technology; soft drink bottling technology; electric
motor technology; stereo speakers; cosmetics; chemical compositions used in cosmetics, asexually reproduced
plants, and asynchronous assembly techniques.
In addition, he has experience drafting and negotiating IP license agreements, counseling clients on setting up and
maintaining IP licensing and/or IP capture programs, performing corporate IP due diligence, and opinion work. He
also has handled copyright, trademark and trade secret matters, and other technology-related litigation matters.
Bill is a senior executive and proven leader that has managed teams, led large scale business development and sales transactions, advised clients and worked across numerous geographies, industries and functional disciplines. He has a consistent track record of developing high performance teams and meeting business objectives.
Mr. Finrow is a seasoned biotechnology executive with leadership experience managing IP strategy, fundraising and corporate development. Mr. Finrow recently took the helm of Lumen Bioscience, a Seattle-based synthetic biotechnology company. From 2014 to 2017, he led corporate development and legal affairs for Adaptive Biotechnologies, including their $200 million acquisition of Sequenta in 2014 and equity financing transactions yielding over $300 million in proceeds. Mr. Finrow spent his early career an attorney with Venture Law Group and Cooley LLP, an AmLaw Global 100 law firm, where he practiced in the emerging companies group advising venture capital firms and public and private companies in the life sciences and information technology industries. He earned his law degree, cum laude, from Harvard Law School, where he was an Executive Editor of the Harvard Journal of Law and Public Policy.
T.J. is general counsel with fifteen years of in-house and law firm experience. Currently he is General Counsel at Digital Control Incorporated. Prior to that, he worked for Intellectual Ventures as Senior Counsel. His law firm experience includes 8 years at Fenwick & West LLP, a Silicon Valley-based firm, representing publicly traded and privately held technology companies (including Cisco Systems and Symantec). He holds a JD from Harvard Law School and a BS in Electrical Engineering from University of Washington.
David Killough is an Assistant General Counsel in the Litigation, Competition and Compliance Group of Microsoft’s Legal and Corporate Affairs department. Killough’s principal responsibility is management of Microsoft patent litigation matters in the U.S. and internationally. Before joining Microsoft in 2008, Killough was a partner of the firm Vinson & Elkins L.L.P. in Austin, Texas, where he co-headed the Intellectual Property & Technical Litigation Section, and before that was a partner of the firm O’Melveny & Myers LLP in California. He received his B.A. degree from North Texas State University in 1977 and his J.D. from Southwestern University School of Law in 1983. While in private practice, Killough was listed in The Best Lawyers in America and in Texas Super Lawyers.
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.
Clients trust Mark to solve their patent disputes quickly, efficiently, and strategically. He has served as lead counsel on numerous patent infringement litigation matters, and he has successfully represented clients in jury trials, bench trials, and appeals to the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court. Intellectual Asset Management (IAM) magazine writes that Mark is “[a]lways one of the best lawyers in the courtroom, he has an even temperament for litigation and is precise in everything he does,” calling him “quite a force to be reckoned with.” Clients recognize Mark for being “always well-prepared and conscientious” and “tough when the situation requires it.”
Mark has extensive experience with pharmaceutical litigation under the Hatch-Waxman Act. He has advised clients on a wide range of drug products and technologies, including new chemical entities, complex formulations, polymorphs, methods of treatment and extended release formulations. Mark is also experienced in FDA practice and strategy related to generic pharmaceutical products, including controlled correspondence, citizen petitions, suitability petitions and labeling carve-outs.
Mark also has experience protecting and defending other technologies, including medical devices, communications networks, cellular telephony, LCD panels, oil drilling equipment, wind turbines, electrical connectors, and mechanical devices. He is a frequent speaker and author on current topics in patent law.
Leon Steinberg is Managing Director, North America at the Dennemeyer group. His area of expertise focuses on management, business development, strategy, marketing, patent analytics. He's been active in intellectual property since 2001. He earned his JD from William Mitchell College of Law.
Mauricio has extensive experience in comprehensive client counseling in all aspects of intellectual property law. He has been very active in the prosecution of patent applications in both the electrical engineering and computer software fields.
Mauricio has wide-ranging experience in developing patent portfolios and intellectual property assets. He also provides counsel on patentability, due diligence and infringement mitigation matters and comprehensive intellectual property programs including litigation and complex, global patent and technology licensing.
He joined the firm as a partner in the Seattle office in 2008.
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.
As Account & Business Development Executive, Christine helps research-based corporations and their outside counsel to identify and implement solutions for challenges in IP through Questel’s suite of tools and services. She also provides training and knowledge-sharing webinars on optimizing IP management, research and analysis. Prior to joining Questel in early 2016, Christine served as a Senior Project and Account Manager for Technology & Patent Research International. She earned her Bachelor’s degrees in Cellular Biology and French from the University of California, Davis, as well as a Master’s in Management - International Sales & Marketing from France. While living in Europe, Christine drove the preclinical molecular analysis software/services business for ImaBiotech, a start-up CRO specializing in mass spectrometry imaging.
Richard A. Gollhofer is a partner with the Washington, D.C. law firm of Staas & Halsey LLP.He has obtained intellectual property protection by preparing and prosecuting patent applications and evaluating patents for computer systems, process control systems, optical imaging systems, and communication systems, as well as their use in e-commerce. He is the author or co-author of articles on copyright and patent protection of computer software and was a member of an ABA subcommittee that prepared responses to the USPTO on Examination Guidelines for Computer-Related Inventions in the 1990s. He is currently co-chair of an AIPLA subcommittee that is responsible for preparing responses to the USPTO on the Interim Patent Eligibility Guidance.
Mr. Gollhofer has a computer science degree (B.S.) from Rose-Hulman Institute of Technology and a law degree (J.D.) from the Illinois Institute of Technology/Chicago-Kent College of Law. He is admitted to the Illinois Bar and the District of Columbia Bar and is a member of the engineering and mathematics honor societies Tau Beta Pi and Pi Mu Epsilon. He also holds memberships in the American Bar Association, the American Intellectual Property Law Association, IEEE and the Association for Computing Machinery.
Mehdi Sheikerz is a partner with the Washington, D.C. law firm of Staas & Halsey LLP. Mr. Sheikerz has extensive experience in preparing and prosecuting computer software related patent applications in the U.S. and internationally. Mr. Sheikerz handles appealing decisions of the USPTO’s Patent Trial and Appeal Board (PTAB). Mr. Sheikerz handles post-patent-grant proceedings before the U.S. Patent and Trademark Office (USPTO), in particular reissue of patents. Mr. Sheikerz conducts presentations on patenting for clients. Mr. Sheikerz also advises small to mid-sized businesses on establishing in-house intellectual property (IP) programs including patents, trademarks and licensing.
Mr. Sheikerz has experience in the software industry. Before attending law school, Mr. Sheikerz was a software programmer for over 4 years. Mr. Sheikerz developed telecommunication messaging system software for Computer Sciences Corporation (CSC) in northern Virginia and worked for a number of small business software consulting companies, including as a Lotus Notes consultant. During law school, Mr. Sheikerz held a legal externship with the in-house legal department of CSC Intelicom, a CSC company in Bethesda, Maryland.
Mr. Sheikerz has a computer science degree (B.S.) from Virginia Polytechnic Institute and State University (Virginia Tech), a law degree (J.D.) from the University Of New Hampshire School Of Law, Franklin Pierce Center for Intellectual Property, and an intellectual property degree (M.S.) from the University of New Hampshire School of Law, Franklin Pierce Center for Intellectual Property.
Mr. Sheikerz is admitted to practice in the state of Florida and in Washington, District of Columbia (D.C.), and before the U.S. Patent and Trademark Office (USPTO). Mr. Sheikerz holds memberships in the Florida and D.C. Bars and in the American Intellectual Property Law Association (AIPLA).
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.
Todd R. Walters is the Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section. He is a current Vice Chair of IPO U.S. Post-Grant Patent Office Practice Committee. He is the past Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and the past Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. He has previously served as a member of the firm’s Board of Directors, and Executive Management team and Co-leader of the IP Section. He has previously served as Chair of the Interference Committee of the AIPLA. He has also served as Vice-chair of the Interference Committee of the Intellectual Property Owners (IPO) association for approximately ten years.
Kari Loeser, Esq. is senior counsel and senior director in the Legal & Corporate Compliance department at Jazz Pharmaceuticals plc. In this role, she leads all U.S. and global internal investigations for the company, and advises client groups on various legal and compliance matters pertaining to sales, marketing, promotion, medical affairs, and managed care and reimbursement activities. She also manages a team responsible for federal/state aggregate spend reporting (transparency) and compliance field monitoring.
Prior to Jazz, Kari worked in medical affairs and healthcare compliance at Genentech, a member of the Roche Group. She has published various articles and a book chapter on E-Health and Ethics, and she has presented at various conferences, including the AHLA-HCCA Fraud and Abuse Conference. She is currently authoring a book chapter in CANCER POLICY: PHARMACEUTICAL SAFETY entitled “Anatomy of Risk Evaluation and Mitigation Strategies (REMS)” by Springer Publishing (Germany) with a proposed publication and release date in 2017. She is a licensed attorney, and is certified in Healthcare Compliance. She received her JD from DePaul University College of Law, and her BA with Honors from the University of Iowa.