The 5th Annual IP Defense Summit: Silicon Valley

Charles Middleton is in-house Counsel and a Director of Patents for Xperi, Corp and has been practicing IP law for about 13 years.  He concentrates on patent prosecution and portfolio management for the company’s imaging and software portfolios.  Charles has also been in-house IP counsel for Canon, Inc and Siemens Power Generation, where Charles was a principal design engineer for 15 years.

He was an associate in the patent prosecution group of Womble Carlyle Sandridge and Rice, PLLP in Atlanta as a prosecution attorney.  While at Womble Carlyle, Charles prepared and successfully prosecuted patent applications relating to the mechanical and electrical arts.

Business focused IP attorney with a track record of balancing risk and opportunity, having an extensive background of exemplary results in developing and growing patent strategies, portfolios, and teams. Broad-based legal experience includes contract negotiation, technology partnerships and transactions, litigation support, M&A, open source policy and process implementation, and legal department operational efficiency, as well as recruiting and developing employees. A ‘utility player’ who can also add value outside of IP related matters.

Duo is currently Vice President, Chief IP Counsel of IP at Box, Inc., where she manages Box’ patent and trademark portfolios as well as a variety of IP licensing issues.   She started her IP career as a patent examiner at the USPTO; was a patent litigator with Orrick Herrington & Sutcliff and Latham & Watkins; and was Managing Counsel at Oracle & IP Counsel at SAP AG, where she dealt with a variety of patent, trademark, copyright, standards, licensing, and anti-trust related issues, including building the patent program for SAP Labs in China.

Duo received her Bachelor of Electrical Engineering degree from the University of Maryland, Master of Telecommunications and Computers from the George Washington University, and J.D. from the Georgetown University Law Center.  

 

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.

Fergal Clarke is the director of IP business analysis at Lenovo, the world’s largest PC firm, which has major research centres in Yamato, Japan; Beijing, Shanghai and Shenzhen, China; and Raleigh, North Carolina. Mr Clarke is responsible for providing business context to all IP-related activities and for ensuring that such activities are consistent with and supportive of the overall business strategy. His specific responsibilities include patent acquisitions, supporting organic patent development, supporting inbound and outbound licensing and communicating the IP business strategy. Mr Clarke was previously director of IP strategy at Rambus. Before this, he held multiple technology and engineering management roles at Applied Materials, in addition to managing its corporate trade secret management initiative. Mr Clarke obtained his physics degree from Dublin City University and his MBA from the University of California, Berkeley.

Mark Taylor is an Assistant General Counsel in the Litigation, Competition, and Compliance Group at Microsoft, where he focuses on patent litigation.  Before joining Microsoft, he was a partner in the IP group at Morgan Lewis, where he represented clients involved in IP litigation at the ITC and in district court.  He also spent time on secondment to the IP Litigation group at Hewlett-Packard Company.  Mark studied biomedical engineering at Virginia Commonwealth University and attended the George Washington University Law School.

Rob Kramer is the Co-Chair of Dentons' Patent Litigation Practice and a partner in the firm's Intellectual Property Group. Based in Silicon Valley and San Francisco, Rob is one of the most experienced and successful lead trial counsel patent litigators in the country. He and his team are consistently honored as among the most aggressive, results oriented, patent litigation practices. Rob was named a "Legal Lion" by IP Law360 in January 2017 for his lead trial counsel role winning two back-to-back patent jury trials in one of the largest patent cases in the country. Rob and his team at Dentons were also recently named as an elite "IP Litigation Powerhouse" that corporate counsel "turn to for their most pressing needs" in BTI Consulting Group's national survey of General Counsel. He and his team were also recently named as a "Top 50 Litigation Powerhouse Firm" by Law360, and recently named as one of the "Fearsome Foursome," by BTI Consulting, an honor bestowed upon four elite firms that General Counsel or large companies fear most to litigate against "based on the team's intense approach, fierce tactics and achievement of successful litigation outcomes." Rob and his team were recently featured in IP Law360 as the "best of the best" at providing the most value per legal dollars spent by in house counsel on litigation. Rob was invited to be a speaker at this conference as he has a long history of promoting women litigators into leadership roles, mentoring and creating opportunities for women attorneys, and ensuring that they gain courtroom experience and hold leading and meaningful roles on important IP litigations.

 

Gemma Suh is a Senior Litigation Counsel at Nokia. She addresses pre-litigation disputes and manages offensive and defensive U.S. litigation for Nokia’s technologies and networks businesses in federal and state courts and before the International Trade Commission. In global disputes, Gemma is responsible for aligning the U.S. strategy with other jurisdictions and has managed international arbitrations related to patent licensing. Prior to joining Nokia, Gemma was an associate in the Silicon Valley office of Davis Polk & Wardwell. Gemma received her J.D. from the University of California, Berkeley and her B.A. from the University of Georgia.

AJ is patent counsel at Thermo Fisher Scientific. He has twelve years of experience in practice and his experience includes patent litigation and oversight into the patent portfolio. AJ earned his bachelors degree from Santa Clara University and his JD from University of Arkansas School of Law.

Terence is Associate General Counsel at Cypress Semiconductor where he manages litigation and legal operations. Prior to Cypress, Terence was an associate at Kaye Scholer, Dewey & LeBoeuf, and Latham & Watkins. He also clerked for the Honorable Jeremy Fogel in the United States District Court for the Northern District of California. Terence is 2005 graduate of the University of Virginia and has a Ph.D. in physiology from Georgetown University.

Phil Woo leads and works with teams on the deep technical issues in intellectual property matters of commercial significance for high-technology companies. With a degree in electrical engineering and substantial real-world experience in the high-tech industry, clients have entrusted him as lead technical counsel for numerous matters, in both litigation and transactions.

His technical areas include all forms of electrical and electronic arts including computer architecture, storage systems and networks, server networks and architecture, microprocessors, memories, software and Internet applications, artificial intelligence, machine learning, neural networks, security, cryptography, telecommunications, wireless, interactive television and electronic program guides, satellite, business methods, semiconductor design and processing, semiconductor packaging, circuit design, electric and hybrid vehicles, autonomous vehicles, and medical devices. Phil has worked for a wide spectrum of innovation-driven high-tech companies, ranging from start-ups to Fortune 500 corporations.

 philip.woo@haynesboone.com

James Ragon is Director of intellectual property for the NAGRA Kudelski Group.  Ragon’s principal responsibilities include patent portfolio management, patent licensing, and patent litigation management in the U.S. and internationally.

Prior to joining NAGRA, Ragon worked at the firm Dechert LLP in Mountain View, and before that he worked for both Chief Judge Phillis J. Hamilton in the Northern District of California and Justice Gilbert Nares in the California Court of Appeal.  He received his B.S. degree from California Polytechnic State University, San Luis Obispo in 2001 and his J.D. from Hastings College of the Law in 2008. 

Lopa is Senior Director of Patent Strategy and Prosecution in TiVo’s Intellectual Property Group. She oversees the complex portfolio development strategies of foreign and domestic patent prosecution to create monetizable assets.  Her areas of focus include computer software and hardware, digital security, data analytics, networks, virtualization, video streaming, cloud computing, and graphical interfaces.

Lopa earned her undergraduate degree from UC Davis in Computer Science and her law degree from Santa Clara University. She is a member of the California Bar and a registered Patent Attorney with U.S. Patent & Trademark Office. Lopa is fluent in Bengali, English and Hindi and can make her way around in French. She enjoys dancing Kathak, a classical North Indian dance, in her spare time.

Experience and Accomplishments: Currently, IP Counsel for IBM Research. With IBM, previously Counsel for the System Networking business and Storage Systems. In addition site counsel for the IBM Tucson location. I began my legal career as a damages witness in the HP v. Bausch & Lomb case, which led to law school and licensing of the patent-in suit which in turn led to generation of over $100 Million in licensing revenue. My subsequent legal career has included IP litigation at Pennie & Edmonds, in-house work at 3Comm and other leading companies in the networking and cloud computing space. The $15 Million favorable settlement reached in 3Comm v. Intel led me to authoring a legal treatise on patent infringement damages "Patent Infringement Compensation and Damages". Recognized expert and published author in patent infringement damages; IP enforcement; Litigation management; Merger and acquisition; Strategic IP Portfolio creation; IP transaction negotiation; open source policy management; Entrepreneurial counseling Publications and Courses “Patent Infringement: Compensation and Damages”, Law Journal Press. 2006. "Actions to Limit Product Liability Awards" 4 Product Liability Law Journal 129 5/93. "Maximizing Impact of Visual Evidence" Patent Litigation 1992 Practicing Law Inst. "We've just been sued! What's Our Exposure? A Defendant's Guide to Damages" IP Law and Management Institute, San Diego, November 2012 "Implications of the America Invents Act", panelist, IP Counsel Cafe San Jose, San Jose April 2012 "Patent Infringement Damages" IP Counsel Conference, San Jose, March 2012 “Developments in IP Remedies”at IP Counsel Conference New York, 2009 (Conference Chair) “Developments in IP Remedies”at TechNet IP Forum New York, 2009 “New Developments in Patent Infringement Damages” at Intellectual Property for Wireless and New Media, 2007, 2008 “Remedies for Patent Infringement”, in “Intellectual Property Remedies” webinar, American Lawyer Media, October, 2008 “Getting the Jump on IP Due Diligence - Putting Together an IP Portfolio to Maximize Value” included in “Strategic Planning for Entrepreneurs Seminar”, Stanford University, 2002

Byron Pickard, a director and co-chair of Sterne Kessler's Litigation Group, focuses his practice on patent disputes in Federal district courts, at the Federal Circuit, and before the Patent Trial and Appeal Board.  An experienced advocate, Byron has tried cases before juries, argued more than a dozen cases in the federal courts of appeal, and tried dozens of inter partes reviews before the Patent Trial and Appeal Board.

Byron’s extensive patent-litigation experience covers a wide range of technologies, including wireless communications, virtual machines, microfluidics, genetic diagnostics, in vivo imaging, stray-voltage detection, and pharmaceuticals, to name a few. In addition to patent matters, Byron handles legal matters in additional areas of IP law, including trademark, trade dress, trade secrets, copyrights, and licensing matters.

Byron is particularly noted for understanding his clients' business as it intersects with IP, and he has been recognized as a "Top-rated Intellectual Property Litigation Attorney" and a "Rising Star in Patent Litigation" by the peer-review based publication Super Lawyers. In 2015, Bisnow Ventures named him among an elite roster of "Washington's Trending 40 Lawyers Under 40."

Byron regularly writes and speaks on complex patent issues offering insightful analysis and practical advice to readers and audiences. Most recently, Byron authored a chapter of Patent Office Litigation, Second Edition, published by Thomson Reuters 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 useful guidance for IP practitioners. In addition to his written works and speeches, Byron is a frequent source for reporters who cover developments in the IP space.

Julie Holloway, resident in Latham & Watkins' San Francisco and Silicon Valley offices, is Co-Chair of the San Francisco office's Litigation & Trial Department and a member of the firm's Intellectual Property Litigation Practice.

Ms. Holloway has extensive experience in all aspects of patent litigation through trial. She has tried 14 patent cases in district court and before the US International Trade Commission. She has particular experience in cross-examining PhD technical experts on the complex technical issues that go to the heart of her opponent’s case.

Ms. Holloway is nationally recognized as a top IP litigator. She was highlighted as a leading patent litigator by Intellectual Asset Management in their IAM Patent 1000 - The World's Leading Patent Practitioners Guide, in 2014, 2015, and 2016, noting that she is “a force in San Francisco,” “exceptionally good,” “possesses a prescient mind when it comes to developments in information technology,” and "demonstrates real creativity and finely tuned client management finesse.” Ms. Holloway was among the 2016 and 2013 Top Women Leaders in Tech Law by The Recorder, and has been recognized as a leading patent litigator by The Legal 500 US (2007, 2009, 2010, and 2012). She has also been named as one of the Top 75 IP Litigators in California by The Daily Journal (2016, 2012) for her jury trial win for NVIDIA in an eight-patent case filed by Samsung (2016) and for her work in defeating patent claims made at the US ITC against AU Optronics by Thomson Licensing (2012). Additionally, Ms. Holloway has been recognized in Northern California Super Lawyers 2014-16 for intellectual property.

Ms. Holloway holds a BS and MS in electrical engineering and prior to practicing law, she worked as an engineer for several years. She is a member of the Intellectual Property section of the American Bar Association, American Intellectual Property Law Association, Federal Circuit Bar Association, and ITC Trial Lawyers Association. Additionally, she was the Chair of the Inaugural Conference Committee for the PTAB Association.

Chris handles a diverse portfolio of technologies in the physical sciences. Having been cited in both the Legal 500 and the Guide to the World’s Leading Experts in Patent Law, Chris is frequently engaged by international clients seeking doggedness, experience and, above all, results, in strategic patent prosecution and opposition and appeal proceedings in the European Patent Office (EPO). 

John has extensive experience working within the tech sector, with one of the largest IT and telecommunications opposition practices in Europe. He has successfully led some of the most high profile cases in this field before the EPO’s Boards of Appeal and Opposition Divisions. He routinely obtains valuable patents for a variety of software and IT businesses. Other areas of expertise are in the healthcare sector, particularly drug delivery systems and diagnostic devices. In these fields, John advises a range of companies, from start-ups to multinationals, on more general IP issues, including infringement and enforcement of patents and design rights, and licensing issues.

Thomas F. Fitzpatrick is partner and co-chair of the Intellectual Property Litigation Practice Group of Pepper Hamilton LLP, resident in the Silicon Valley office. Mr. Fitzpatrick focuses his practice on all aspects of intellectual property, including litigating patent, trade secret, trademark, technology licensing and other related disputes. He has represented both patent owners and patent defendants in federal courts throughout the country, including in the Northern, Central and Southern Districts of California, the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, the Northern District of Georgia and the District of Arizona. Most recently, Mr. Fitzpatrick has successfully represented internationally based and publicly traded companies in the computer database, telecommunications, semiconductor, Internet and power supply industries. Prior to joining the firm, Mr. Fitzpatrick was a partner in the Litigation Department and a member of the Patent Litigation Group at Goodwin Procter. Then he was a partner in the Palo Alto office of Townsend and Townsend and Crew LLP. Before that, he was a deputy district attorney at the San Mateo County District Attorney’s Office. As a prosecutor, Mr. Fitzpatrick obtained convictions through bench and jury trials. Mr. Fitzpatrick has written numerous articles on patent law and patent litigation. He has spoken on recent developments in patent law to various organizations in the United States and Korea. Mr. Fitzpatrick is a member of the San Mateo Bar Association and a past -member of the California District Attorneys Association. Mr. Fitzpatrick received his J.D. in 1997 from Santa Clara University School of Law, where he received the American Jurisprudence Award in Patent Law and was the research editor for the Santa Clara Computer and High Technology Law Journal. He received a B.A. in 1994 from the University of California Berkeley. Mr. Fitzpatrick is admitted to practice in California, and before the U.S. Court of Appeals for the Ninth Circuit, U.S. District Courts for the Central, Eastern, Northern and Southern Districts of California, the District of Arizona and the Eastern District of Texas.

Travis is an experienced patent litigator and trial lawyer. He draws upon his strong technical skills, litigation experience, and real-world business background to craft comprehensive IP strategies. As noted in his engagements, his strategic planning and careful execution guides clients through the intricacies of patent litigation, including the interplay between district court, PTO, and appellate proceedings.

Able to quickly understand complex technology in the litigation context, Travis is particularly well-suited to resolve patent disputes involving semiconductor processes and circuits, optical devices, wireless technologies, and related areas. After earning advanced degrees in electrical engineering, and before embarking on his legal career, Travis worked at Intel Corp. and co-founded a fabless semiconductor design company.

Travis has used his distinctive skillset to litigate technically complex patent cases to verdict, and obtain favorable settlements for clients such as AT&T, DIRECTV, Apple, and SanDisk. Travis has second-chaired both jury and bench trials in district court, handled numerous appeals before the Federal Circuit, and, as a registered patent attorney, served as lead and back-up counsel in post-grant proceedings (inter partes review and ex parte reexamination) at the PTO. While on a recent secondment to the San Francisco District Attorney's Office, Travis first-chaired several jury trials to successful verdicts.

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.