The 5th Annual IP Enforcement Summit: Silicon Valley
The AIA has transformed the landscape: IP owners are finding it harder to monetize and enforce their patent portfolio and face growing hostility when they do.
An ineffective enforcement strategy means loss of value to your organization, while also encouraging potential and current infringers. On the other hand, a well-run enforcement strategy sets clear boundaries with potential infringers and earns respect in your market place.
The IP Enforcement Summit explores, benchmarks and challenges the enforcement strategies that Operating Companies are implementing, how they can be improved and where current trends are heading. Most importantly, the conference looks at how these Enforcement strategies can fit into your organization’s goals and larger IP strategy.
Prosecuting and Portfolio Management: Crafting and Managing Enforceable Patents
Post Issuance Proceedings: Is the Tide Turning for Patent Owners?
Enforcement & Litigation Strategies
An Operating Company’s Guide to Running a Monetization Program
Protecting and Enforcing Your Trade Secrets
The ITC: When is it The Right Strategy & What to Expect?
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
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.
Diane Gabl Kratz is a two-time IAM Strategy 300 World's Leading IP Strategist for her accomplishments maximizing IP value. A USPTO-registered patent attorney, she is regular faculty at the Practicing Law Institute (PLI), teaching and publishing articles on incentivizing invention. She is also an IAPP Certified Information Privacy Professional for both Europe and the United States (CIPP/E, CIPP/US).
Previously, Diane developed patent portfolios at a Fortune 500 tech company, advising on strategy, prosecution, and IP-related transactions. Most notably, she launched a company-wide inventor recognition program that increased invention disclosures by 100%. She also headed the global trademark portfolio, leading strategy and administering worldwide registration, licensing, and enforcement.
A four-time Super Lawyers Rising Star, Diane began her career in private practice at the Silicon Valley offices of esteemed international law firms Morrison & Foerster and Sidley Austin. There, she focused on IP litigation in industries such as semiconductors, software, telecom, consumer electronics, and medical devices.
Diane is a nationally-recognized speaker and frequently presents at conferences throughout the United States. She has been featured as a guest lecturer at Stanford University’s Management Science & Engineering Department and the University of California-Berkeley’s Haas School of Business. A proven IP leader, she shares her expertise with organizations such as the American Bar Association, Silicon Valley Association of General Counsel, IAM, California Lawyer/Daily Journal, Unified Patents, and IP Counsel Café.
Diane earned her J.D. from the University of Chicago Law School and her Bachelor’s Degree in Physics from Cornell University."
Jonah is a Patent Agent at Soundhound. His role is that of an IP Strategy at the intersection of technology, business, and law. His focus is on developing a valuable IP portfolio. His experience experience is in processors, DSP, digital video, network-on-chip, and speech understanding machines. Since 1998 he has worked for high-tech companies including Lexra, ARC and Tensilica. He has been a founder, engineer, architect, marketer, and seller, in addition to being an author.
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.
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.
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.
Patent litigator Michael Lyons leads the Silicon Valley litigation practice and brings more than 20 years of experience to his intellectual property (IP) rights practice. In 2014, he obtained a substantial verdict in California for the Alfred E. Mann Foundation in a patent infringement action against Cochlear that resulted in an approximate $131.2 million damages award. Michael’s patent, copyright, trade secret, and other technology-focused litigation involves tools that range from video streaming and consumer electronics’ circuit architecture to medical devices.
Li Westerlund is the Vice President of Global IP for the Bavarian Nordic Group and has the operational responsibility to develop, define, implement and enforce the intellectual property strategies of the company. Dr. Westerlund has 25 years of experience predominantly in the sector of intellectual property-patent law, including from both US and Swedish law firms prior to joining Bavarian Nordic in 2004. Her experience includes Junior Judge in Swedish courts and legal intern at the Court of Appeals for the Federal Circuit (CAFC) for the former Chief Judge Paul R. Michel. In 2004, she was appointed Professor of Law at Linkoping University in Sweden and is a prolific author in the legal field with focus on patent law having published several books and dozens of articles in professional journals and anthologies.
Donald Beardsley is Sr. Corporate Counsel for Litigation at Seagate Technology Don oversees the daily operations on Seagate's intellectual property and business litigation. Don is a member of the California Bar and received his BA and MS from the University of California at Santa Cruz and his JD from the Santa Clara University School of Law.
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.
Intellectual Property pattern and co-chair Jonathan S. Caplan represents clients in patent litigation, counseling and prosecution, as well as in general corporate matters involving the acquisition, sale or licensing of intellectual property rights.
Jonathan litigates patent infringement actions in federal district courts across the country, in the Court of Appeals for the Federal Circuit, and in state courts, both representing patent owners seeking to enforce their rights and defending companies against allegations of infringement.
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.
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.
Dave is a Silicon Valley technology trial lawyer who has won trials, obtained significant money damages and injunctive relief, and secured favorable defense verdicts and rulings for his clients. He focuses his litigation practice on patent, trade secret, trademark, copyright, and other IP matters in federal and state courts, arbitrations and mediations across the country, and at the Patent Trial and Appeal Board. Dave has extensive experience developing and successfully managing multi-million dollar patent, trade secret and other complex IP and business litigation budgets to match client economic objectives. Dave has litigated IP matters across a spectrum of advanced technologies in the electrical, mechanical, and computer hardware and software fields. These technologies include online consumer services, business and software services, medical devices, system-on-chips, digital signal processing, integrated circuit fabrication and testing, semiconductor capital equipment, RF/microwave circuits, Bluetooth and Wi-Fi applications, PCB design and circuits, computer aided design, optics and reflective imaging, networking infrastructure and website operation and e-Commerce applications, and waterproof technologies for electronic devices. His trial and IP litigation and counseling services, mirroring the diverse and challenging issues faced by his technology clients, include unfair competition, deceptive practices, licensing and founders’ disputes, corporate governance litigation, shareholder derivative actions, proprietary rights relating to departing or newly-hired employees, complex commercial litigation, arbitration and mediation, and appellate litigation. Before coming to Merchant & Gould, Dave was an equity partner in the IP litigation departments at several AmLaw 100 firms and flexed his entrepreneurial muscles as a partner and owner of Valorem Law Group, a disruptive law startup focused on offering fee arrangements that better aligned the economic interests of clients and their lawyers. Dave created the Flat Fee IP Blog on which he continues to regularly post on alternatives to traditional hourly billing as well as current and future issues relevant to IP litigation. Dave serves as the managing partner of Merchant & Gould’s Silicon Valley office.
Laura A. Peter is currently the Deputy General Counsel of A10 Networks, and for the last 5 years has provided counsel on worldwide legal matters, including commercial transactions, intellectual property, licenses, litigation and regulatory compliance.
Ms. Peter previously held the position of Vice President and General Counsel of Immersion Corporation where she spearheaded and successfully concluded an $82M patent lawsuit against Sony. She also was assistant general counsel and director of intellectual property at Foundry Networks, where she built up their patent portfolio and led successful patent actions against Nortel Networks, Lucent Technologies and Alcatel. She began her career as a commercial and intellectual property litigator at Townsend, Townsend and Crew (now Kilpatrick and Townsend).
Ms. Peter holds a bachelor of science degree from Cornell University and a Master’s degree from the University of Chicago. She is a graduate of Santa Clara University School of Law and received a masters of law from the University of London, Kings’ College. She is a qualified patent attorney and is admitted to practice to the Bars of the Supreme Court of the United States and the Supreme Court of England and Wales.
Chuck Katz is a lead division IP counsel for Thermo Fisher Scientific, where he has responsibility for patent acquisition, freedom to operate and transactional activities for the mass spectrometry, chromatography and related businesses. Prior to joining Thermo Fisher Scientific, he held a variety of IP positions at start-up companies in the photonics and network security fields, as well as at law firms.
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.
Milan Patel has over 16 years of experience with patent portfolio development and management, client counseling, licensing, IP strategy and patent acquisition covering various complex technologies, including Wireless, Audio/Video, Internet and Networking technologies. He was a major contributor in the development of Apple’s Wireless patent portfolio, Qualcomm’s OFDMA patent portfolio, Nokia’s CDMA patent portfolio and TV/Com’s MPEG-2 patent portfolio. He has extensive experience in connection with managing and counseling business and engineering clients, patent mining, drafting and presenting claim charts, evaluating and mapping technology, and finding gaps in IPR coverage. He also has experience in substantial patent preparation and prosecution, managing inside and outside counsels and third party portfolio analysis for licensing, acquisitions, assertions, and litigation.