The 4th Annual IP Strategy Summit: Chicago

Erwin Cruz is an executive leader with specific focus on intellectual property strategy and management at W. W. Grainger, Inc. In this global role, Erwin is responsible for leading and managing a subsidiary, an intellectual property holding company through the development of robust intellectual property practices and asset creation that aligns and protects the intellectual capital of the organization’s strategic initiatives ensuring overall alignment to emerging trends and corporate strategies. In this global role, Erwin is responsible for coverage in North America, South America, Asia, and Europe. 

Erwin has over 25 years of MRO (maintenance, repair, and operations) industry experience and has held a variety of leadership roles at W. W. Grainger, Inc. which includes; sales, customer service, supply chain, information technology, ecommerce, business development, strategy, innovation, research & development, product development, human capital management, and in his current role of intellectual property strategy and management. Erwin earned multiple graduate degrees in business, technology, and law. 

Erwin is passionate about the rapid pace of technologies and the emergence of new business models where the intersection of business-technology-law is becoming more profound and critical to an organization’s strategic advantage. Erwin’s professional experience and educational background has given him the opportunity to lead many industry initiatives from conception to commercialization allowing him to align emerging trends into organizational execution effectively.

Ivan Kirchev is a Senior IP Licensing Counsel with Hewlett Packard Enterprise (HPE).  Ivan has significant experience in all areas of IP including licensing and IP transactions, patent acquisitions and divestitures, standards licensing, portfolio development and strategy, IP litigation, and legal opinions.  

As a member of HPE’s IP Licensing team, Ivan is responsible for extracting value from HPE's intellectual property by executing all activities around identifying, analyzing and closing various IP related transactions.  He is heavily involved in the negotiating and drafting of various IP agreements and licenses (e.g., cross-licenses, outbound patent licenses, technology transfers, software license agreements, joint development agreements, NDAs, etc.).  He works closely with the rest of the IP team and the businesses to provide strategic IP-related counseling to different internal groups related to products, patents, and competitors to identify, analyze, and advice on IP issues and opportunities.  Ivan also works on divestitures, patent acquisitions and sales, and standards licensing.  He counsels various business units and the M&A team in transactions involving HPE’s patents, trademarks, and copyright.  Ivan also collaborates with the IP litigation team to handle third-party patent demands, to prepare for and participate in litigation disputes involving HPE’s patents.  He regularly identifies valuable IP technologies (e.g. know-how, patents, trademarks, copyrights, etc.) in the company and derives value from this IP, either by protecting exclusivity or licensing.  

James’ practice includes patent procurement, opinion, analysis & strategy, litigation, technology licensing, primarily focusing on life sciences, material sciences, medical device, and electronics. As a conduit between China and the rest of the world, James represents international clients to obtain and enforce their intellectual property (IP) rights in the fast-evolving and challenging IP environment in China. In particular, James helps international clients to enhance the value of IP assets, lower IP risks, and increase commercialization opportunities through comprehensive due diligence, counseling, procurement, litigation and cross-border licensing and collaboration.

MATTHEW KELLY serves as Managing Director and Associate General Counsel at CME Group Inc. Mr. Kelly is responsible for developing and managing CME Group's intellectual property programs covering patents, trademark, copyrights, and trade secrets. He also manages strategic licensing, including product license agreements, out licensing of CME Group software and market data, intellectual property acquisitions and partnerships, and manages a variety of intellectual property litigation and enforcement matters. Before joining CME Group in 2001, Mr. Kelly specialized in patent law at Brinks Hofer Gilson & Lione in Chicago and Morgan & Finnegan in Washington, D.C. and managed the design and development of space-based computers at IBM. Mr. Kelly holds a bachelor's degree in electrical engineering from Michigan State University, a Master of Business Administration from Virginia Polytechnic Institute and State University and a J.D. focusing on intellectual property from the George Mason University School of Law. Mr. Kelly is a member of the Illinois Bar and is the licensed to practice before the USPTO.

Ben Frey is Legal Counsel for Whirlpool Corporation.  For the last two years, he has managed global patent acquisition, enforcement, and strategy for dockets including refrigeration, air and water treatment, advanced engineering, small appliances, and chemistry and materials.  He also advises on software and technology agreements, external partnerships, university research, and audit compliance for Whirlpool's Global Information Systems and Internet of Things divisions.  Prior to Whirlpool, Ben worked for Northwestern University's Office of Research, engaging corporate and international entities on collaborative research and IP licensing opportunities; and as an associate in Sidley Austin LLP's IP litigation department.  Ben's focus areas include software, telecommunications, manufacturing processes, and consumer products

Scott Piering is VP and Chief IP Counsel at Spectrum Brands. Mr. Piering brings over 20 years and a wide range of intellectual property experience - from the identification and acquisition of intellectual property rights to the exploitation and protection of those rights. Before joining Spectrum Brands, Mr. Piering was a Senior Intellectual Property Lawyer at Cargill, Inc., where he led the intellectual property function for several of its divisions. Prior to that, Mr. Piering practiced law with several law firms, where he focused on intellectual property, antitrust and trade regulation, litigation, and legal issues before various administrative agencies. Mr. Piering received his law degree cum laude from the University of Wisconsin Law School.

Ms. Hartzell has significant experience in intellectual property litigation, including cases involving patents, trademarks, copyrights, and trade secrets. She also has experience enforcing covenants not-to-compete and confidentiality agreements. Clients hire her to protect their intellectual property rights and to defend them against infringement allegations. She works closely with her clients to understand their business needs and aggressively defends her clients’ interests, seeking the most efficient route to resolve litigation in a way that satisfies those needs.

Tim Carroll is viewed by clients and peers as a go-to patent litigator who has successfully litigated the cutting-edge technology issues of the day, including patent cases involving medical devices, green technologies, mobile apps, location-based services, messaging systems, Wi-Fi-enabled thermostats, and content management platforms. Through his representation of leading and emerging technology companies, Tim has secured trial wins, preliminary injunctions, forced his adversaries to stipulate to noninfringement, won summary judgment awards, earned a substantial attorneys’ fee award and prevailed in claim construction arguments. Tim has also led many joint-defense groups involving some of the largest and most sophisticated companies and law firms in the United States.

Tim recently achieved several victories for companies immersed in patent and licensing disputes.

• In Smith & Nephew v. Arthrex Inc., Tim was asked to serve as first chair on a case for trial that involved second-generation products. Notwithstanding a prior verdict against Arthrex and a series of adverse rulings from the case involving first generation products, Tim steered Arthrex into a favorable settlement on the eve of trial. Along the way, Tim and his team earned a victory by knocking out plaintiff expert’s liability testing, which left the plaintiff with a lack of liability evidence to present to the jury.
• In Advanced Transit Dynamics v. Ridge Corp., Tim was the lead trial lawyer in an injunction hearing held by Judge O’Connell of the U.S. District Court for the Central District of California. Following that hearing, Judge O’Connell entered a preliminary injunction in favor of Tim’s client, Advance Transit, forcing Ridge to cease making, selling or marketing its competing green technology offering.

Edward H. Rice is a trial lawyer who focuses on complex commercial litigation and, in particular, intellectual property disputes. For more than 30 years, Ed has safely navigated clients through challenging lawsuits by presenting difficult concepts in simple, clear and compelling terms.

Ed began his career at a large national law firm, after which he clerked for a federal judge in Chicago. He then honed his trial skills at the Department of Justice in Washington, D.C., where he defended the federal government in patent disputes and other intellectual property claims asserted by defense contractors and others.

Since returning to law firm practice, Ed has led successful trial teams in all of the major courts in which patent cases are tried: the federal district courts, the International Trade Commission (which addresses infringement disputes over products that are imported into the U.S.) and the Court of Federal Claims (which addresses the government's unauthorized use of patented technology). Ed also has successfully argued many cases in the U.S. Court of Appeals for the Federal Circuit, including an en banc rehearing. His cases have encompassed a wide range of technologies, including medical devices, integrated circuits, pharmaceuticals, internet methods and consumer electronics, to name just a few.

As much as Ed enjoys trial advocacy, he takes even greater pride in applying creative strategies that bring cases to a swift and efficient conclusion. He recently won a patent case on a non-infringement argument that he framed within an initial motion to dismiss. The strategy saved the client from spending money and resources on discovery, claim construction proceedings and trial. Ed later applied this same strategy for another client, again shooting down an infringement claim with a threshold, rifle-shot motion.

Ed's experience also extends beyond patent litigation. He has represented clients in trademark infringement cases, trade secret litigation and copyright disputes—including a copyright trial over the movie Twister, in which Ed represented Stephen Spielberg, Michael Crichton and the studios. In addition, Ed has counseled clients who have faced intellectual property issues arising in a wide range of legal and business matters, such as bankruptcy proceedings, insurance litigation, merger and acquisition negotiations, licensing activities and employment disputes.

Kirk Goodwin leads the Whirlpool global patent team as well as the global legal team for Whirlpool's Global Information Technology.  

Kirk studied Biomedical Engineering in his undergrad and graduate school at the University of Iowa and remains a devote Hawkeye fan. Kirk received his JD (with honors) from Drake University and is admitted to the USPTO, Iowa, Georgia and Michigan bars.

Kirk lives on the sandy shores of Lake Michigan in idyllic Saint Joseph in southwest Michigan and enjoys spending time with his wife Bonnie and two children, Ella and Justice.

Adam B. Strauss is Chief Intellectual Property Counsel for Stryker Corporation in Kalamazoo, Michigan.  Stryker is one of the world's leading medical technology companies, whose products include implants used in joint replacement, trauma, and spinal surgeries; surgical equipment and surgical navigation systems; endoscopic and communications systems; neurovascular products; patient handling and emergency medical equipment, and other medical devices used in a variety of specialties.  Adam and his team manage Stryker’s IP litigation, IP agreements, patent and trademark portfolios; due diligence for business development; and provide a range of other IP services.  Before arriving at Stryker in 2007, he was a member of the Dykema law firm in its Bloomfield Hills, Michigan office.  There, his practice included IP litigation; patent and trademark prosecution; and IP counseling and opinions.  Prior to joining Dykema, Adam served from 1998-2000 as a law clerk to the Honorable Paul D. Borman, United States District Judge for the Eastern District of Michigan.  From 2013-2014, Adam served as the Chair of the State Bar of Michigan’s Intellectual Property Law Section and from 2017-2018 served as Chair of the State Bar’s U.S. Courts Committee.  He is currently a master in the Michigan Intellectual Property Inn of Court.

Vincent is a registered patent attorney and is licensed to practice law in Illinois and Michigan. He is also licensed as a Professional Engineer in the State of Michigan. Prior to entering the legal field Mr. Wiltse worked for General Motors as Senior Project Engineer, where he worked in vehicle aerodynamics development and vehicle systems integration. He received his Juris Doctor from Wayne State University Law School, in Detroit. He obtained his Master of Science and Bachelor of Science in Aerospace Engineering from the University of Michigan. From 2000 to 2008 he was in private practice, first in Michigan and then in Illinois. Vincent joined Cummins-Allison as in-house counsel in 2008. At Cummins-Allison he manages the intellectual property portfolio. Cummins-Allison has topped Crain’s Chicago Business’ “Eureka Index” for having as the highest patent quality multiple times and is often named by Crain’s Chicago Business as among the top innovative companies in Chicago. Additionally, he support commercial transactions, litigation, real estate, and human resources efforts.

Marcus has established one of the country’s leading practices devoted to drafting and negotiating Enterprise Software related license, implementation and SaaS agreements, as well as litigating failed software implementations in courts and before arbitration panels across the country.

He is one of the foremost attorneys in the country representing government entities, distributors and manufacturers in recovering damages arising out of failed Enterprise Resource Planning (ERP) software implementations. As a former in-house attorney at some of the largest software companies in the world, Marcus understands software vendor tactics and is able to leverage his ERP industry knowledge to advocate on behalf of his clients. He frequently speaks on emerging technology related issues and is interviewed regularly by the media.

Beyond his work helping clients recover from failed software implementations, Marcus has extensive experience dealing with cybersecurity issues. He advises clients on complying with the new General Data Protection Regulations (GDRP) being implemented and enforced by the European Union. Failure to be in compliance can result in hefty fines for U.S. software developers that sell to European customers.

Marcus has significant legal and related business experience in the technology industry. Prior to entering private practice, he was senior corporate counsel in charge of intellectual property in the Legal/Contracts Department of SAP America and at SSA Global Technologies (now Infor), where he developed and managed an extensive international trademark and patent portfolio, managed intellectual property litigation, conducted intellectual property due diligence and reviewed advertising material to verify compliance with legal requirements. During law school, Marcus completed an advanced externship at the United States Copyright Office in Washington, D.C.

Sandra Frantzen practices a broad range of intellectual property law focusing on patent litigation and patent portfolio consulting and management in the medical device, pharmaceutical, chemical and biotechnology industries.

Ms. Frantzen is a trial attorney and litigator who focuses on assisting clients with resolving worldwide intellectual property disputes. Serving as lead trial counsel on behalf of a wide range of clients including both start-up and Fortune 500 companies, Ms. Frantzen's work for clients has ranged from small cases to cases involving damages in the hundreds of millions.  Ms. Frantzen participates in all aspects of dispute resolution from pre-litigation consultation to trial and appellate work.  Her work as lead trial counsel includes assessing and reviewing the legal issues surrounding clients’ technologies, formulating litigation and dispute resolution strategy, appearing and arguing in court, preparing for and participating in jury trials and arbitration proceedings, and spearheading mediation and settlement sessions. Ms. Frantzen has appeared on behalf of clients in federal courts throughout the country and has also managed worldwide litigations alongside OUS counsel. One client from an international biotechnology company stated, “Sandra was absolutely instrumental in the successful defense and resolution of this case that was, quite literally, ‘bet-the-company' litigation. This experience led my company to work with Sandra on multiple other matters, and she has never failed to deliver. Having worked with and against some of the best lawyers our profession has to offer, I can unequivocally say that Sandra is among the elite of the elite. As a client and as a professional colleague, this is one lawyer that I definitely want on my side of the table.”

A member of the Patent Bar and registered to practice before the U.S. Patent Office, Ms. Frantzen is well-versed in handling proceedings with the U.S. Patent Office and has been lead counsel in several inter partes review proceedings including multiple favorable decisions after full trial on the merits. 

Ms. Frantzen also regularly advises clients on strategic IP development, acquisition, protection and enforcement with a focus on value. Among other things, she has experience evaluating patents and patent portfolios, drafting and negotiating license and manufacturing agreements, consulting regarding licensing matters, performing due diligence review and analysis of intellectual property rights for corporate acquisitions and mergers, and assisting clients in obtaining patents, copyright, and trademark registrations. Ms. Frantzen has also served as lead IP counsel assisting clients in corporate acquisitions.

Ms. Frantzen graduated from Iowa State University with high distinction with B.S. degrees in Chemistry and Environmental Science, and received her law degree from The University of Chicago Law School in 1999, where she also graduated with honors.  Ms. Frantzen has been recognized by SuperLawyers and was recognized in the Law Bulletin’s list of “40 Illinois Attorneys Under 40.”

James (Jay) R. Nuttall is a first chair patent litigator with broad experience representing clients in courts throughout the country, with a particular emphasis in district court litigation. His substantial trial experience covers a wide variety areas and technologies, including telecommunications, medical devices, electronic systems and methods, software, lighting and chemical processes. His experience includes patent infringement matters brought by non-practicing entities (NPE), and antitrust, RICO, and unfair competition cases, among other matters.

Steven Shape is a registered patent attorney and electrical engineer who has represented preeminent technology companies in complex, high-stakes Intellectual Property litigation and foreign patent and trademark prosecution matters since 1982.

Steven Shape has successfully represented clients in complex business litigation focused on patent infringement claims, trademark and Lanham Act claims, copyright claims, unfair competition claims, false advertising, trade secret claims, and related antitrust and business causes.  He has served as counsel in a number of jury and bench trials and has extensive experience in all aspects of Federal Court litigation including preliminary injunctions, summary judgments and appeals to the Court of Appeals for the Federal Circuit and the United States Patent and Trademark Office.  Steven has represented clients in post grant proceedings (Inter Partes Review (IPR) and Post Grant Review (PGR) and the International Trade commission (ITC).

Steven Shape has been a partner at prominent IP law firms including Am Law 100 firms throughout his career.

He is licensed in Illinois, Wisconsin and many U.S. federal courts, the United States Supreme Court, the Court of Appeals for the Federal Circuit and the United States Patent and Trademark Office (Reg. No. 30,802).  He received his Juris Doctorate from DePaul University and his Electrical Engineering degree from the University of Illinois, Urbana-Champaign.

Diane is Senior Managing Counsel for J. C. Penney Corporation, Inc., responsible for all patent litigation matters. Prior to joining J. C. Penney Corporation, Diane was a shareholder as Winstead PC in Dallas, Texas and a member of its Intellectual Property and Commercial Litigation Practice Groups. She practiced at Winstead for more than 25 years before leaving private practice to join JCPenney. During her tenure at Winstead, Diane represented clients that were patent owners, defendants accused of infringement by competitors, as well as clients accused of infringement by NPEs.

Maitreya began his practice at IP boutique and general practice law firms in Chicago and Los Angeles, where his practice included all aspects of intellectual property litigation and patent preparation and prosecution in myriad technologies. He is in-house patent counsel at Fortune Brands Home & Security and works on product clearance, patent prosecution, dispute resolution, diligence in M&A transactions and a variety of general commercial and technology agreements and licenses. Maitreya received his undergraduate degree in General Engineering with honors from The University of Illinois-Urbana/Champaign and his JD with honors from The George Washington University Law School. Maitreya is a registered patent attorney with the US Patent and Trademark Office and is licensed to practice law in Illinois and California.

Generic pharmaceutical manufacturers know who to turn to when facing complex Hatch-Waxman patent litigation. As co-leader of Schiff Hardin’s Intellectual Property Group, Sailesh K. Patel also co-chairs the firm’s Pharmaceuticals and Biologics Patent Litigation Team and serves on the firm’s executive committee. Sailesh is a seasoned trial attorney. He is passionate about implementing creative and scientifically sound arguments for his clients, which has resulted in legal precedent-setting cases.

Sailesh has served as lead counsel on numerous patent infringement litigation matters. With a background in chemical and biomedical engineering, he is familiar with the language of the pharmaceutical industry. Defense against patent infringement requires subject matter experts; Sailesh is skilled at aligning the best experts to successfully defend his clients’ interests.

Sailesh is effective both in trials and in negotiating favorable settlements for his clients. There are many moving parts in patent litigation, and Sailesh is skilled at coordinating multiple parties, experts, and arguments into coherent and persuasive cases. In cases where there are multiple defendants, he represents his clients in a way that makes them stand out from the rest, leading to more favorable results. He also assists companies in Paragraph IV and Biosimilars design strategies, helping his clients protect their scientific discoveries.

He has significant experience in preparing and prosecuting patent applications in a variety of technologies beyond pharmaceuticals and biologics. Sailesh has represented clients in cases involving wind and solar technology, food processing, automotive components, and software, among other industries.

Daniel Shulman, Shareholder in the IP group of Vedder Price P.C. in Chicago, will lead an interactive session that begins with some of the “untold story” of AI-created inventions and spins that history forward to unpack the many layers and implications of AI-conceived inventions in a thought-provoking discussion that promises to have more questions than answers.

Jim focuses on intellectual property and technology-related legal issues at Jump Trading, a research-based trading firm that trades stocks, futures, bonds and currencies on over 80 exchanges globally.   Jim spearheads Jump’s IP strategy, which involves trade secret, trademark, and patent protections, the licensing of intellectual property and software, as well as associated confidentiality agreements, contracts, and employment agreements.  His work further involves advising on corporate investments, joint ventures, and M&A transactions.  Prior to joining Jump, Jim was a partner at Kirkland & Ellis, focusing on intellectual property and technology litigation and transactional matters.

Ms. Benkers joined Plano Synergy as the company’s General Counsel in May, 2015. Ms. Benkers is a member of the company's Executive Committee and is responsible for overseeing the Plano Synergy companies’ legal affairs including litigation, intellectual property, and corporate matters.

Prior to joining Plano Synergy, Ms. Benkers was a partner at Quarles & Brady LLP where she specialized in the areas of general commercial and intellectual property litigation. At Quarles & Brady, Ms. Benkers handled a wide variety of commercial disputes including patent infringement, trade secret, copyright infringement, trademark, false advertising, breach of contract, fraud, UCC claims, insurance coverage, breach of restrictive covenants, real estate, employment, licensing and various other business disputes. Outside of the litigation context, Ms. Benkers counseled clients on business practices on a number of fronts, including securing and protecting their intellectual property, advertising, regulatory and environmental issues, document retention issues, and other general business advice. 

Josie obtained her Juris Doctorate, cum laude from the University of Wisconsin. She also obtained a Bachelor’s of Science degree, magna cum laude, in Psychology from the University of Wisconsin-Oshkosh in Psychology.