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: 6.75 hrs CA State CLE
KEY TOPICS DISCUSSED
The “New Normal”: A Push to Quality in Prosecution and Portfolio Management
Defending your IP in China
NPE Defense: 'It Depends' is Not a Strategy
Going to Trial as a Defendant
Effectively Utilizing IPRs As Part of Your Invalidity Defense
Enforcement as an Operating Company
The Evolution of Post Issuance Proceedings Strategy
Ethics in Intellectual Property
WHO ATTENDED
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
IP Counsel
Patent Counsel
VP & Director of Intellectual Asset Management
SPEAKERS
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.
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.
Chris has a global practice involving all facets of Intellectual Property law, particularly patent and trademark prosecution. He has prepared and prosecuted hundreds of domestic and international patent applications, particularly for electrical and electronic circuits and systems, computer software, medical devices, medical patient monitoring and treatment technology, device fabrication, optical devices and systems, as well as mechanical devices.
Chris is also experienced in global design patent prosecution, and has managed a global portfolio for a major fashion industry company. Chris’s trademark prosecution practice is also a global one, as Chris manages several domestic and global trademark portfolios, and manages domestic trademark portfolios for foreign clients as well.
Chris is a member of the National Steering Committee for AIPPI-US, which is AIPLA’s representation in AIPPI, an international IP organization. Chris is also the President-Elect of the Wisconsin Intellectual Property Law Association (WIPLA).
As an adjunct professor at Marquette University, Chris created an IP Procurement and Management course especially tailored for graduate students in the Engineering Management Program.
Chris’s clients include universities, small and large corporations, privately held businesses, foreign law firms and corporations.
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.
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.
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.
Lee Cheng is currently advisory counsel for the board at NewEgg. He served as Chief Operating Officer and EVP at Gibson Brands and prveiously served as NewEgg Inc's Chief Legal Officer, SVP of Corporate Development and Corporate Secretary and General Counsel.
He's a graduate of UC Berkeley Law School, where he earned his J.D. A graduate of Harvard University where he earned his SB in History and Science.
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."
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.
Brendan has led and worked on projects representing a wide array of technologies, such as microprocessor design, semiconductor manufacturing, semiconductor fabrication tools, cryptographic hardware, low-power electronics, consumer electronics, touchscreens, LCD displays, LED applications and driver circuits, power supply circuits, wireless transceiver circuits, hard drive technologies, data storage systems, digital interfaces, computer buses, memory design, flash memory, and mixed signal ICs, among others. Mr. Sever holds a Master’s Degree in Computer Systems Engineering from Boston University in addition to a B.S. in Electrical Engineering from UC Santa Barbara. He has worked for Lockheed Martin and Northrup Grumman in California as an embedded systems engineer, for Sonos as a systems support engineer to Europe, and for BINA in Switzerland as an electrical engineer in the food factory designing automation systems and troubleshooting electrical systems. In addition to his work in industry, his research and lab work in academia focused on semiconductor fabrication, VLSI design for digital signal processors, and parallel computing architectures.
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.
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.
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.
Chris Kao is a Co-Managing Partner of the Firm’s Taiwan office, Managing Partner of the Palo Alto office, and also resident in the San Francisco office. Chris focuses on intellectual property litigation, including patent, copyright, trademark and trade secrets disputes, and other high-stakes commercial litigation. He has represented clients in the computer hardware and software, semiconductor, telecommunications, biotechnology, and consumer products industries in federal district courts throughout the country, the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit.
Chris also has experience litigating Covered Business Method and Inter Partes Review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.
Chris has tried numerous cases to verdict as the first-chair trial lawyer in both bench and jury trials, including a large commercial contract case that resulted in a directed verdict in favor of his client, the defendant. He has also been designated a Certified Information Privacy Professional / US by the International Association of Privacy Professionals. The following is a list of matters in which Chris was the lead (unless otherwise noted).
Steve is Associate General Counsel, IP for Covidien (now Medtronic) in the Surgical Solutions Group. His practice focuses on all aspects of patent law, including prosecution, litigation, licensing and IP due diligence for mergers and acquisitions, and has, in the past, included managing products liability matters as well as general corporate work. Steve is responsible for IP legal work relating to energy-based surgical devices including electrosurgical instruments and accessories as well as the generators that power them; ultrasonic surgical instruments for sealing and dissecting tissue, and radio-frequency tissue ablation instruments and generators.
Steve has worked at Covidien for the past seven years, and prior to that was an associate at Greenberg Traurig in their Denver, Colorado office and an associate at Sidley Austin in Dallas, Texas.
Orion Armon focuses on multivenue, complex patent litigation matters. He has particular experience in utilizing inter partes review and covered business method review proceedings in combination with district court litigation strategies to achieve optimal litigation outcomes.
Orion is a co-founder of PTAB Digest, a leading resource which tracks and analyzes Patent Trial and Appeal Board decisions, and co-executive editor for the online tool. He is also a frequent lecturer on licensing, intellectual property and patent matters.
Prior to attending law school, Orion worked for Accenture as a business consultant, where he specialized in financial system implementations and eCommerce software.
Bill Hayden is a Senior Attorney for Microsoft Corporation. He has 15+ years of experience successfully launching enterprise and consumer technology products, closing complex multi-national transactions, and advising on new media services and technology related matters. Bill is counsel for the Office 365/Enterprise Public Sector/Government Cloud offerings and provides global legal support for the privacy, security, and marketing of innovative technology solutions. At Microsoft, he serves as Board Co-Chair for the Center for Safe Internet Pharmacies, a cross-industry nonprofit.