The 4th Annual IP Strategy Summit: Orange County

Sanjesh Sharma is Senior IP Counsel at Johnson & Johnson Vision, where she manages all aspects of intellectual property for the company’s Refractive Surgery and Laser Cataract Surgery product lines, including managing domestic and international patent portfolios, litigation support, opposition practice, product clearances, due diligence for asset acquisitions and licensing, as well as copyright and trademark compliance.  Before moving in-house, she worked at various national and global law firms, focusing mainly on patent and trademark litigation, licensing, due diligence, and counseling involving a wide range of technologies, including biotechnology, pharmaceuticals, medical devices, and consumer electronics.

Sanjesh received her undergraduate degree in Microbiology from University of California, San Diego, and her law degree from Loyola Law School.  She currently serves as a member of the Executive Committee and Chair of the Patent Interest Group for the IP Section of the California State Bar.  She regularly speaks on patents and in-house practice, and has been named Rising Star in Intellectual Property by Super Lawyers.

 

Chris serves as Senior IP Counsel for Rovi, a position he has filled since June 2014. Prior to this in-house position, Chris worked for Novak Druce Connolly Bove + Quigg where he drafted and prosecuted patent applications in the electrical and computer software fields. Other firms he has worked for include Arent Fox and Morgan, Lewis & Bockius LLP. Chris holds his law degree from University of Michigan Law School and has a B.S.E. in Electrical Engineering from Arizona State University. He is accredited by the CA and NY state bars.

Tom King’s practice focuses on Inter Partes Review (“IPR”) proceedings and district court patent litigation matters throughout the country. Clients rely on Tom to integrate the technical and legal aspects of a dispute into a seamless and persuasive strategy, and then to execute on that strategy via both written and oral advocacy. Overview of Experience Lead or backup counsel in 35 IPRs. Experience representing both petitioners and patent owners at all phases of IPR, including expert depositions and oral arguments. 10 years’ patent litigation experience covering a wide variety of technical subject areas including database/spreadsheet systems, telecommunications protocols and systems, voice recognition, network security, VPN, LCD screens, image sensors, hard disk drives, pharmaceuticals, power plant equipment, robotics, supercapacitors, sonar and night vision Four patent infringement trials (one in the Eastern District of Texas, three in the District of Delaware) Successfully represented semiconductor designer in a two week commercial arbitration concerning RF networking technology.

Taylor Bloom is the Senior Intellectual Property Counsel for Verve. Taylor is experienced in trademark, patent, copyright and trade secret counseling and litigation. Ms. Bloom is responsible for all legal and administrative matters related to Verve's IP portfolio. At Verve, Taylor has helped secured new patents protecting core company inventions. Ms. Bloom assesses patentability and freedom to operate in a range of cross discipline technologies to grow and diversify Verve’s IP portfolio while simultaneously evaluating competitor presence and legal enforceability. Taylor is also the 2016-2017 Chair of the Intellectual Property Section of the San Diego County Bar Association. In addition, Taylor serves as a Trustee on La Jolla Town Council. Taylor received her J.D. with an Intellectual Property Concentration from the University of Pacific, McGeorge School of Law in 2013. In law school, she served as the President of the McGeorge Intellectual Property Student Association, President of the Jewish Law Student Association, and was employed as a law clerk at Bell, McAndrews, and Hiltachk, LLP. In addition, she moderated intellectual property law conferences and symposiums with a focus in sports law. Prior to law school, Taylor received a B.A. in Political Science from the University of California Santa Barbara, a Technology Management Certification through the College of Engineering, and a Minor in History.

VP-TS Intellectual Property, Cypress Semiconductor An IP strategist with a combination of technical, business and legal expertise, currently transforming the management of a portfolio of 3000+ patents and applications into a self-funding, business-driven, cross-corporate function delivering entitled ROI. David is also a prolific inventor with over 130 patents granted and pending, and a Patent Agent licensed to practice before the USPTO, reg # 69932. Daivd is responsible for management of a portfolio of ~2000 patents, ~1000 pending applications and the process of IP protection, generation and monetization. Directing systematic review processes to ensure comprehensive and cost-effective protection of strategic IP as it is created. Ensuring maximum ROI on IP$ by implementing systematic reviews of applications against business objectives. Creation, implementation and direction of processes to create and protect strategic IP in emerging technology areas adjacent to existing product lines and technologies.

Donald is a Senior Patent Counsel and Johnson Controls where he provide sguidance and counsel for the organizations retail solutions business with a focus on patent and other IP protection for electronics and software. He has earned a B.S. in Electrical Engineering from Purdue University and his J.D. from George Mason University - Antonin Scalia Law School.

David Chan is a Senior Patent Counsel at the Western Digital Corporation, where he manages a diverse patent portfolio covering data storage products and the company’s exploratory research efforts.  His primary focus includes invention evaluation metrics, portfolio prosecution strategies, and IP issues related to supply chains and customer relationships.  He joined Western Digital in 2011, after practicing patent law as an associate at Knobbe Martens and as a patent agent at Coudert Brothers.  He is a graduate of Loyola Law School and Harvey Mudd College.

Mr. Cullman a partner in the Orange County office of K&L Gates LLP specializing in intellectual property (IP) law where he manages the transactional IP group. His practice has a strong life sciences focus and concentrates on transactional IP for pharmaceutical and medical device companies including patent procurement, technology transfer and Bayh-Dole issues, merger and acquisition-related due diligence, freedom to operate analyses, non-infringement and invalidity opinions, Hatch-Waxman-related client counseling and litigation support. Mr. Cullman regularly represents pharmaceutical and medical device companies including Allergan, Baxter Biosciences, Beckman Coulter, Medtronic and Spectrum Pharmaceuticals in matters related to product life cycle management, patent litigation strategy and merger and acquisition IP due diligence. Prior to attending law school Mr. Cullman was a licensed Clinical Microbiologist and co-founded and directed an infectious disease laboratory and diagnostic device manufacturing company in Southern California. He has extensive technical experience in the design and manufacturing of in vitro diagnostic devices for infectious diseases, immunology and biochemistry.

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

Mark P. Wine, a partner in Orrick’s Orange County office, is a member of the Intellectual Property Group. Mark is a trial lawyer with extensive experience in all aspects of intellectual property litigation on behalf of clients in a broad spectrum of technology, business and industry. Mark is also an experienced mediator of intellectual property disputes. He has been in private practice for 40 years and has represented clients in contested intellectual property matters in more than 20 states.

Sriranga Veeraraghavan is a Vice President, Legal at Xperi (formerly Tessera). Sriranga supports Xperi’s technology licensing and corporate development efforts in addition to managing Tessera’s litigation matters and post-issuance proceedings. Before joining Tessera, Sriranga practiced law at Cooley LLP and Howrey LLP and worked as an engineer at Sun Microsystems and Cisco Systems. He is a named inventor on two U.S. patents, which are based on his work at Sun.

Using his PhD in Biophysical Chemistry, along with 15 + years of in house counsel experience, Richard Hake creates value for companies that run intellectual property-based businesses. He specializes in start up companies, such as Metagenetics Inc. where he serves as Chief Patent Counsel, and also helps "companies in transition" to reduce general and administrative costs, implement systems as management tools, and assist management in due diligence for M&A and licensing transactions. Richard also serves on the board of Legacy Redevelopment and GHM LLC, along with providing pro bono work for non-profit start-up companies. He earned his JD from Northern Kentucky University—Salmon P. Chase College of Law.

Mr. Randy Berholtz is our Executive Vice President, General Counsel and Secretary. He is the former Executive Vice President, General Counsel and Secretary of Apricus Biosciences, Inc. (NASDAQ: APRI), a specialty pharmaceutical company. Prior to that time, he was the Vice President, General Counsel and Secretary of ACON Laboratories, Inc., a group of Chinese and US life sciences companies. He has also been the Chief Operating Officer and General Counsel of IngleWood Ventures, L.P., a life sciences venture capital company and the Interim General Counsel and Secretary of Nanogen, Inc. (NASDAQ: NGEN), a genomics tools company. He has also been an attorney with the law firms of Heller Ehrman, LLP, Cooley Godward, LLP, Kirkpatrick & Lockhart, LLP (now K&L Gates) and Cravath, Swaine & Moore. He has a Bachelor of Arts degree from Cornell University, a Master of Arts degree from Oxford University, where he was a Rhodes Scholar, and a Juris Doctor degree from Yale Law School where he was a Senior Editor of The Yale Law Journal.

Nick Saros focuses his practice on complex intellectual property matters, primarily patent infringement and trade secret litigation.  Clients also seek his counsel on patent licensing, trademark, copyright, and other intellectual property and technology-related issues.  He has experience representing clients involved in a wide array of technologies, including internet content delivery, software, VoIP, encryption, semiconductor technology, lighting control, medical devices, lens manufacturing and turbochargers.

Mr. Saros has been recognized as a "Southern California Super Lawyer” each year from 2012 through 2017, and previously as a “Southern California Rising Star” in intellectual property litigation.  In 2016, Mr. Saros was a lead member on the Jenner & Block team that won a $940 million jury verdict based on claims of misappropriation of trade secrets, breach of contract, fraud, and violations of state and federal law involving confidential information about the client’s leading healthcare software.  This Wisconsin federal court verdict is believed to be the largest verdict of any kind in Wisconsin history and one of the largest trade secret verdicts in US history.  Mr. Saros and the team received a 2017 California Lawyer“Attorney of the Year” award for the verdict.

Mr. Saros also played a substantial role in a $130 million trade secret settlement in 2016, and routinely represents Japanese companies in patent infringement and trademark matters in US courts.

Before law school, he earned a B.S. in mechanical engineering and worked as a design engineer on various projects including satellite structures and the B-2 stealth bomber.  Mr. Saros is a member of the firm’s Patent Litigation and Counseling Practice.

Mark Scarsi is head of the Intellectual Property Litigation & Technology practice at Milbank, Tweed, Hadley & McCloy LLP.  He is an accomplished litigator with a strong background in computer software and related technology. Mr. Scarsi has worked as a software engineer, designing and developing detection and signal processing computer systems for US defense applications. He has litigated intellectual property cases in numerous US district courts, as well as before the International Trade Commission.  Mr. Scarsi’s practice includes: defending companies in patent infringement actions relating to computer technologies including: signal processing, video conversion and compression, image processing, wireless communication protocols, field programmable gate arrays, power supplies, RAM design and semiconductor manufacture;  representing patent holders in infringement actions for technologies ranging from computer software to aeronautics; representing complainants and respondents in ITC Section 337 investigations; defending software development companies in contract actions relating to enterprise software systems; and counseling clients on software licensing and patent related matters. Mr. Scarsi is recognized as a “Patent Star” and a “Trademark Star” by Managing Intellectual Property and a “Leading Patent Litigator” by Intellectual Asset magazine.  Mr. Scarsi has been named to the Daily Journal "Top Intellectual Property Attorneys in California" list in 2013, 2014, 2015 and 2017, and in October 2013, he was recognized by AmLaw Litigation Daily as “Litigator of the Week.“ 

William (Will) Díaz litigates and counsels clients on antitrust cases, obtains Federal Trade Commission (FTC) and Department of Justice clearance on mergers, and defends clients in government investigations. Will has significant experience in the interplay between the antitrust and intellectual property laws and the issues that crossover into both areas, including standard-setting activities, patent pools, fair, reasonable and non-discriminatory (FRAND) licensing issues and patent misuse. He also has handled numerous litigations and transactions in the biotech, pharmaceutical and medtech industries.

Tom Chen is an experienced patent attorney who prides himself in being trusted and valued by his clients. Tom is dedicated to going above and beyond the standard attorney-client relationship by providing quality patent counsel and by taking the time to learn about the true business goals, strategies, and ambitions of his clients. Clients value Tom for his technical understanding and strategy with regard to their specific patent issues.

Under Tom’s lead, the firm handles patent matters for start-ups to Fortune 100 companies. Tom plays a major role in not just expanding his client’s patent portfolio, but more importantly maximizing its value to his clients. He provides his opinion and analysis, at least weekly, on patent related matters for his clients and regularly works with a large number of inventors, as well as various in-house counsel.

Tom’s experience is founded on multiple advanced degrees in Electrical Engineering and significant engineering work at Hughes Aircraft, covers a variety of technologies, including e-commerce, mobile payments, electrical circuits, semiconductor memories/processing, semiconductor equipment, fiber optic and wireless communications, televisions, mechanical devices, Internet-related applications, microprocessors and other computer architecture. Tom’s experience extends to patent litigation as well, including matters before the International Trade Commission and district courts. He has been involved in all phases of litigation, including discovery, depositions, expert reports and briefs.

Tom has presented alongside key decision makers from his clients’ companies, which has helped Tom strengthen his deep understanding of his clients’ core values. Additionally, he has written on various intellectual property issues and risk management, Supreme Court patent decisions and issues before the United States Patent and Trademark Office.

Aside from Tom being a skilled and insightful intellectual property attorney and member of the firm’s Board of Directors, he is an active member of Haynes and Boone's Attorney Diversity and Inclusion Steering Committee, which focuses on advancing the hiring, retention and promotion of diverse lawyers within the firm. Tom advocates the importance and necessity of a diverse law firm and truly strives to make Haynes and Boone a leader in law firm diversity. In fact, the firm appears in many “Top 100” rankings related to diversity and women issues, and is a two-time recipient of the prestigious Thomas L. Sager award. Tom is also a member of the National Asian Pacific American Bar Association where he attends events and contributes to meaningful initiatives.

Tom was recently selected by the Daily Journal, Daily Journal Corporation, as one of the 2016 Top 100 Lawyers in California.

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.

Kristin’s practice focuses exclusively on intellectual property litigation, including patent, trademark, and trade dress cases. She has extensive experience handling all phases of litigation, from obtaining favorable results in early motion practice, to efficient management of cases through discovery, claim construction, summary judgment and trial. She has a national trial practice, litigating in federal district courts around the country, and has argued at the Federal Circuit. Kristin is the chair of the Litigation practice group and has served in the past as the firm’s managing partner.

Kristin’s knowledge of patent damages is well respected in the industry. In addition to being a regular presenter on the topic, she is the current chair of the Damages Subcommittee of the American Intellectual Property Law Association (AIPLA) Patent Litigation Committee. In patent cases, Kristin’s strategy is to collaborate with damages experts early in the case to develop effective and compelling theories of patent damages to present to juries and judges, as well as encourage early pre-trial settlements.

Kristin is also committed to increasing diversity within the firm and the profession at large. In addition to mentoring and encouraging other female attorneys, she has helped coordinate the firm’s partnership and support of AIPLA’s Women in IP Law Committee.

Kristin joined Klarquist in 1999 as a lateral associate and became partner in 2004.

Mr. Levitt’s 30 years of legal experience centers in the corporate sector where he has been at the forefront of intellectual property changes. As Chief Intellectual Property Counsel at Dow Corning Corporation, Mr. Levitt led a global team of more than 25 employees to advance and protect Dow Corning’s diverse technologies and markets. Previously, Mr. Levitt served as corporate counsel at DuPont and General Counsel of Solae, LLC, a joint venture by DuPont and Bunge.

Atabak Royaee is an Associate Director and Corporate Counsel, IP, at Boehringer Ingelheim Pharmaceuticals, Inc. (BIPI) located in Ridgefield, Connecticut.  In his role at Boehringer, Atabak manages BIPI’s patent portfolios in various therapeutic areas, drafts and prosecutes patent applications, drafts legal opinions, assist in handling IPR proceedings, performs due diligence reviews, and provides counsel to business on licensing and transactional matters.  Prior to joining BI, Atabak was an associate attorney at McDermott Will & Emery and LeClairRyan law firms conducting patent prosecution and post-grant proceedings work; and prior to his tenure at law firms, Atabak was a postdoctoral fellow at Harvard School of Public Health and U.S. Department of Agriculture specializing in immunology and infectious disease research.  Atabak has B.S. in chemistry and a Ph.D. in biochemistry and molecular biology from Georgetown University, and a law degree from the Suffolk University Law School.

Ben Wang is Vice President and Chief IP Counsel at ZTE TX. He is a Global-minded and Business-oriented attorney with extensive industry experience in biotech, pharmaceuticals, medical devices and diagnostics, software, consumer goods and telecommunications. Strong leadership skills and entrepreneurial spirit in getting things done. Counseled numerous international clients in a variety of legal matters such as strategic patent portfolio creation and management, patent litigation, patent filing and prosecution, patent clearance analyses, licensing negotiations, and corporate agreements. 

Experienced in building and managing global legal functions for both small and large companies in the U.S. and China. Solid working experiences in the U.S., Europe (Germany) and China. Licensed to practice law in California. Registered U. S. patent attorney.

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.