The 6th Annual IP Strategy Summit: NYC

Laura Sheridan is Senior Patent Counsel at Google and works from the New York office. Prior to joining Google, Ms. Sheridan was Counsel in the Intellectual Property Department at WilmerHale in New York. Ms. Sheridan is a graduate of Fordham Law School and Cornell University.

Dr. Serena Farquharson-Torres is a corporate patent attorney with substantial in-house legal experience and Law Firm experience in patent law. Dr. Farquharson-Torres has experience in working in all aspects of patent law involving both large and small molecules and consumer health care.

Daniel Brownstone is a partner in the Intellectual Property group of Fenwick & West LLP. Dan’s practice is focused on patent strategic counseling and prosecution, and his practice also includes intellectual property due diligence and patent litigation.

Dan’s combined backgrounds in computer science and economics give him a unique perspective on patent strategy. His practice emphasizes patent portfolio development based on identifying innovations that are economically strategic to the enterprise, and managing the creation of patent assets to maximize the value of those assets.

In addition to providing legal services to his clients, Dan has taught seminars in patent prosecution as an Adjunct Professor of Law at The University of California, Hastings College of the Law and at Washington University in St. Louis.

Dan is a frequent speaker on the topics of patent portfolio development strategies and patent law reform, and an active member of the American Intellectual Property Law Association (AIPLA). As part of his AIPLA duties, Dan coordinates the World IP Day events throughout the United States. Prior to joining Fenwick, Dan was a legal intern in the U.S. Senate, where he worked on the Judiciary Committee for Senator Russ Feingold.

Moshe Malina is Associate General Counsel and Chief Patent Counsel for Citigroup. Mr. Malina joined Citi in 2004, and his responsibilities include management of the firm’s worldwide patent portfolio and patent litigations, and IP transactional and advisory work in connection with technology acquisitions, in-bound and out-bound licensing, joint ventures, acquisitions and divestitures. Mr. Malina also serves as General Counsel to Citi Ventures, which focuses on partnering with and investing in firms developing innovative financial solutions and technology. Before joining Citi in 2004, Mr. Malina was an associate at Cleary, Gottlieb, Steen and Hamilton working on both transactional and litigation IP matters. Mr. Malina simultaneously received a J.D. from Columbia Law School and a B.S. in Chemical Engineering from Columbia School of Engineering and Applied Science as part of Columbia’s Accelerated Interdisciplinary Legal Education Program. Mr. Malina is a member of the bar in New York and a registered patent attorney.

Antun Peakovic is Director of Intellectual Property, Americas at Schaeffler, a global manufacturer of bearings and systems for the Industrial, Automotive and Aerospace markets and owner of various brands, including FAG, INA, LuK and Barden. Mr. Peakovic spent nearly a decade as a mechanical engineer before serving as in-house counsel. Among his many responsibilities are managing the company’s intellectual property portfolio, including all brand protection and anti-counterfeiting work in North and South America as part of Schaeffler’s global Brand Protection team. Mr. Peakovic has organized and implemented anti-counterfeiting programs throughout the region, which have resulted in the removal from the market of millions of dollars worth of counterfeit parts. He also currently serves as Corporate Secretary for Schaeffler’s Canadian affiliates. He is licensed to practice law in Michigan and Ontario, Canada. 

Denise is Chief of Staff to GC at Boston Scientific. Previously she held IP Counsel responsibilities at Velcro and Partner at Preti Flaherty.

She's a charismatic, dedicated, and occasionally witty intellectual property counsel and former first-chair patent and trademark litigator. Denise is experienced with a wide range of patented technologies, including medical devices, software, chemical, plastics, and biochemical materials.

Specialties: Intellectual property portfolio strategy and prosecution management; complex patent, trademark, and trade secret litigation; IP transactions and licensing; and, mergers and acquisitions.

Boston University School of Law, JD

Michael is a partner in the firm's Intellectual Property Practice and is a member of the Diversity Committee. He has negotiated, defended and asserted IP rights in the numerous federal courts, the US Patent and Trademark Office, the International Trade Commission and in private arbitrations and mediations. As an advisor, he has worked with both established companies and start-ups to obtain, evaluate value, license anddevelop patent portfolios and trademarks.

Trained in electrical engineering and with a business background as a technology consultant, Michael works with a broad range of technologies, including consumer electronics, wireless devices, medical products and devices, computer architecture, software and networks, open source issues, semiconductor chips and Internet and e-commerce platforms.

His clients rely on him to resolve both large and small patent, trademark, and copyright cases efficiently and cost-effectively. For example:

• In a fast-moving ITC case, he spearheaded the two key claim construction issues for the joint defense group. The Administrative Law Judge took the unusual step of agreeing to stage the claim construction phase on potentially dispositive terms early in the case. The success in getting the Court to agree to an early claim construction phase drove favorable early settlements for numerous defendants.
• In a competitor semiconductor case brought as part of a global patent war involving the major electronics companies, he was instrumental in the defense of patent infringement claims and helped to obtain a jury verdict of non-infringement for his client.
• Michael was involved in the defense of a series of patent claims asserting infringement of mechanical processes, inspection processes and the materials structure of diaper and training pants products, among two competitors in the field.

Michael also counsels clients on strategic patent prosecution and portfolio development, and provides opinions and analyses on various patent issues, including patent infringement, validity and enforceability.

During 2008-2009, he was seconded to Panasonic Corporation in Japan. As in-house patent counsel in Panasonic's licensing center, he acted as lead counsel representing the company in numerous third-party patent assertions and license negotiations, where he was responsible for developing substantive defensive positions. Michael also provided legal opinions across a broad set of technology areas and in many facets of patent law, and negotiated complex agreements, including portfolio crosslicense agreements. In addition, he worked with the company's managers and engineers to identify high value patents and to strengthen their protection and mitigate exposure to infringement claims.

Marc is a VP of Intellectual Property at Boehringer Ingelheim. He is a experienced senior legal leader with a demonstrated history of working in the pharmaceuticals industry. Significant in-house experience in developing a patent strategies and patent portfolios (both organically and through acquisitions), asserting and defending key intellectual property, and managing a staff of attorneys and other patent professionals. Experience includes offensive and defensive litigation on global scale, as well as negotiating settlements/license agreements, and overseeing IP due diligence.

MATTHEW P. BLISCHAK is currently Executive Counsel – Global Branded IP Litigation at Teva Pharmaceuticals in Horsham, Pennsylvania.   Before that, he was Vice-President and Associate General Counsel for Intellectual Property at Sepracor Inc. (now Sunovion Pharmaceuticals Inc. ) in Marlborough‚ Massachusetts from 2007 to 2012, and Senior Counsel for patent litigation at Bristol-Myers Squibb Company in Princeton‚ New Jersey from 2000 to 2007.  His extensive patent litigation experience‚ gained in both the corporate sector and in private practice‚ encompasses ANDA‚ small molecule‚ and biotech cases at the trial and appellate level.  Before entering the corporate sector, he was in private practice for ten years.  Mr. Blischak received his undergraduate degree from Case Western Reserve University (B.S. Ch.E. 1984‚ cum laude)‚ his law degree from The American University Washington College of Law (J.D. 1989‚ magna cum laude)‚ and a masters degree in biotechnology from Johns Hopkins University (M.S. 2002).

Steven’s practice focuses on intellectual property enforcement and defense, including court and administrative action –patent office proceedings (ex parte patent reexaminations, inter partes patent review, trademark oppositions) and ITC. He is also experienced in procurement, licensing, due diligence and counseling, involving diverse intellectual property issues including advertising compliance, anti-counterfeiting, copyrights, domain names, grey goods, patents (utility and design), privacy and data protection, trade dress, trade secrets and trademarks. His litigation and administrative challenge practice has been diverse, running the gamut of technologies involving biotechnology, chemical, electrical, fashion, Hatch-Waxman, mechanical device, medical device and software matters. Steve also carries with him in-house experience, having been the Chief Intellectual Property Counsel for a joint venture ($1.5 billion in sales) between two large pharmaceutical companies. In addition to Connecticut, New York and California, Steve is admitted to practice before the United States Supreme Court, US Court of Appeals, Federal Circuit and several US District Courts (Connecticut, Southern and Eastern Districts of New York, and D.C. Circuit).

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.

David Killough is an Assistant General Counsel in the Litigation, Competition and Compliance Group of Microsoft’s Legal and Corporate Affairs department. Killough’s principal responsibility is management of Microsoft patent litigation matters in the U.S. and internationally. Before joining Microsoft in 2008, Killough was a partner of the firm Vinson & Elkins L.L.P. in Austin, Texas, where he co-headed the Intellectual Property & Technical Litigation Section, and before that was a partner of the firm O’Melveny & Myers LLP in California. He received his B.A. degree from North Texas State University in 1977 and his J.D. from Southwestern University School of Law in 1983. While in private practice, Killough was listed in The Best Lawyers in America and in Texas Super Lawyers.

Laura brings high energy, personal commitment, and a wealth of experience to every project she tackles.  Whether representing a high tech company in a patent infringement proceeding before the ITC, protecting a client’s trade secrets in an arbitration proceeding, or helping high school students develop the analytical skills and self-confidence to succeed in college, Laura brings passion and drive to her work.

With over 25 years of litigation and counseling experience, Laura takes a hands-on approach to litigation, while staying focused on the client’s ultimate goals and strategies. She is “held in excellent regard by her peers for antitrust, intellectual property and commercial litigation,” and is recognized as one of the top women intellectual property lawyers in Illinois.

Adi Elliott leads the definition and communication of Epiq’s global eDiscovery strategy. Elliott joined Epiq via the acquisition of Iris Data Services where he led the productmanagement and marketing teams. Prior to Iris, Elliott led kCura’s marketing and enterprise teams, guiding the creation and definition of the Relativity brand, as well as overseeing Relativity’s growth with law firms, corporations, and government agencies. Before joining kCura, he held a variety of product and marketing positions in the U.S. and Israel.

Joe is a partner in the firm's Intellectual Property Practice. He has 20 years of experience as a lead counsel in patent litigation in more than 100 cases. He has also advised clients on complex licensing matters, patent monetization issues, patent portfolio development and worldwide intellectual property strategic counseling. He has appeared in patent cases in federal courts throughout the country, including the District of Delaware, District of Connecticut, Northern District of Georgia, Eastern District of Virginia, District of Massachusetts, Eastern District of Texas, Northern District of California, Southern District of California, Central District of California, District of Colorado, District of Minnesota, District of New Jersey, Southern District of Florida, Northern District of Illinois, Northern District of Ohio, Western District of Wisconsin and the Eastern District of Michigan. The Eastern District of Texas is a particular focus of Joe's recent work, where he has represented clients in more than 25 cases there. Joe has a great deal of experience with high stakes patent cases, including technologies relating to consumer electronics, aerospace, computers, hybrid electric vehicles, semiconductors, cellular phones and systems, medical devices, and batteries. Representative cases are described in the experience tab.

Joe has been the lead negotiator in a number of large out-of-court cross-license negotiations for major companies. Joe has also represented clients before the International Trade Commission, which were all favorably resolved for his clients.

Joe graduated with a B.S. cum laude, in Computer Science, from Brooklyn College, Brooklyn, New York. He received his J.D. cum laude, from Brooklyn Law School, where he was the Executive Notes and Comments Editor for the Brooklyn Journal of International Law. Joe was a teacher and computer consultant prior to his career in law.

Thomas Y. Yee, a partner in our Orange County office, focuses on optimizing the commercial value of the intellectual property of our clients.  Leveraging his diverse business experiences, Mr. Yee counsels clients on strategic actions for patent portfolio development, intellectual property transactions and licensing, and trademark portfolio procurement. 

The clients that Mr. Yee serves vary from sole inventors and medium-size companies to large multi-national corporations, all in a diverse set of industries, including medical devices, financial services, internet startups, automotive, electronics, software, medical informatics, biotech, warehousing logistics and components, religious institutions, sporting goods, and baby products.  Mr. Yee advises business leaders across the U.S. and around the world, such as in Honolulu and Hong Kong, as well as other parts of China and Europe.

Prior to joining the firm, Mr. Yee was one of the youngest managers in the Internet division of the American Express Company, where he was responsible for a re-engineering initiative of the worldwide website for the company.  Mr. Yee also conducted due diligence for the founders of a New York City based venture capital firm, Silicon Alley Seed Investors, specifically evaluating $1-2 million investments in early stage startups. 

Additionally, Mr. Yee served as a business development manager at a Silicon Alley financial services software company, TradingNews.  At Walker Digital, the Internet incubator that created Priceline.com, Mr. Yee worked on the creation of two startup companies, where he was responsible for managing business development work with the company’s development partner, Bain Consulting in Boston, and for overseeing the technical development work with the company’s software development teams in New York and Atlanta.

Current Account Executive for Questel, a leading provider of online tools and services helping businesses, academic institutions, technology transfer offices, and law firms with their patent research and IP strategy needs. Results driven individual with a track record of growing my client network, increasing portfolio revenue, maintaining strong relationships with clients, and providing unmatched customer service.

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.

Edward is Vice President and Senior Counsel for Intellectual Property at MasterCard. He has over a decade of legal experience. Prior to MasterCard Edward held associate positions at bother Baker Botts LLP and Petterson Belknap Web & Tyler LLP. Edward earned his B.S. in Chemical Engineering from Carnegie Mellon University and his J.D. from Cornell Law School.

Atabak Royaee is a Senior Director and Assistant General Counsel, IP, at Regeneron.  In his role, Atabak provides IP strategy and portfolio development advice to business teams, counsels on IP licensing and transactions, manages manufacturing IP clearances, and advises on IP risks.  Prior to joining Regeneron, Atabak was at Boehringer Ingelheim Pharmaceuticals, Inc., for over six years, and prior to that, he worked at different law firms for over a decade.  Before praticing patent law, Atabak was a postdoctoral fellow at Harvard School of Public Health and the U.S. Department of Agriculture specializing in immunology and infectious disease research.  Atabak has a Ph.D. in biochemistry and molecular biology and a B.S. in chemistry and from Georgetown University, and a law degree from the Suffolk University Law School.

 

Michael J. Bonella has extensive experience as a litigator, as well as a patent prosecutor. Michael has argued cases before the Federal Circuit Court of Appeals. For example, Michael successfully represented Biosig Instruments against Nautilus at the Federal Circuit, where the appellate Court reversed the District Court’s invalidity finding. Michael further developed Biosig’s strategy for the Supreme Court proceedings in which the Supreme Court essentially adopted the indefiniteness standard proposed by Biosig in the landmark case decided last year.

In addition, Michael has been the lead lawyer on a number of district court litigations, representing both plaintiffs and defendants and is well-versed in all aspects of district court litigation. For instance, he was the primary force behind a settlement valued at $45 million for TruePosition. He is also well-versed in post-grant proceedings (e.g., reexamination, opposition, and Inter Parties Review (IPR)) before the U.S. Patent and Trademark Office. Michael is one of the few attorneys who has an LLM in Trial Advocacy and is also a registered patent attorney. In complex litigation, Michael’s strategy is to focus on trial from the onset of litigation and to maintain that focus throughout the case. By focusing on trial from the outset, Michael states that the “entire case can be managed strategically and with specific purposes and goals.”

Michael also has experience managing patent portfolios and counseling clients on intellectual property issues. He emphasizes strategies aimed at protecting the client’s core business with an eye towards client’s competitors. Michael focuses on understanding the client’s business, the client’s products, and the competition the client faces in the market place to develop patent strategies that are tailored to each individual client.

When asked about his formative technological experiences, Michael mentioned the flexibility he showed in the U.S. Naval Submarine program. Although Michael’s undergraduate degree was in mechanical engineering, Michael was certified as a nuclear engineering by the U.S. Navy and received advanced training in electrical engineering from the U.S. Navy. Basically, he notes, this background helps in learning each clients’ technology, whether it is medical device, telecommunications, software, or electrical hardware technology. He has extensive experience in all of these areas.

Philip is a Director and Senior IP Counsel at Boehringer Ingelheim USA Corporation located in Ridgefield, Connecticut.  In his 15 years as IP counsel for Boehringer, Phil has drafted and prosecuted patent applications and strategically managed patent portfolios in a number of therapeutic areas; conducted patentability and freedom to operate assessments; supported NDA filings with regulatory exclusivity requests and patent information; performed IP due diligence reviews in connection with in-licensing of early to late stage products; negotiated IP provisions in various types of agreements; assisted in developing best practices for IP protection and for the negotiation of IP provisions in agreements; and has counseled on US export compliance issues and the development of related internal policies and procedures.  Prior to joining Boehringer, Phil was an associate attorney at the Sughrue, Mion law firm in Washington, D.C., and prior to his tenure at Sughrue, Phil was a patent examiner at the U.S. Patent and Trademark Office.  Phil has a Bachelor of Science in organic chemistry from the University of Maryland, and a law degree from the George Mason University School of Law and is a regular speaker on various IP, patent and export compliance topics.

Rosemarie has spent more than 30 years in the pharmaceutical industry. She is a member of the PA and NJ bars, the CAFC and the U.S. Supreme Court, holds a Juris Doctor from Widener University School of Law and a Bachelor of Science in Biochemistry from the University of the Sciences in Philadelphia. Before joining Novo Nordisk as a Patent Attorney in 2002, she was Associate Patent Counsel for Bristol-Myers Squibb Company and a Patent Attorney for DuPont Pharmaceuticals Company. Prior to completing law school, she was a scientist for E.I. du Pont de Nemours & Co. and DuPont Pharmaceuticals Company for more than 13 years focusing on peptide/protein synthesis and characterization. Rosemarie’s areas of practice at Novo Nordisk include patents in the pharmaceutical and biological arts, trade secrets, and transactional regulatory matters. She has also managed complex multijurisdictional ANDA litigation (for 9+ years) and has provided copyright and trademark counsel for Novo Nordisk Inc.

Carlo Cotrone is Senior Intellectual Property Counsel at Baker Hughes a GE Company in Houston. As lead IP counsel for the Surface, Drilling, Offshore, and Subsea Production Systems business units, he develops and manages the execution of offensive and defensive IP strategies; provides IP and general corporate advice; and negotiates strategic agreements with customers, suppliers, and licensees. Previously, Carlo practiced law at several firms on the East Coast and in the Midwest, most recently as a partner. He received his Juris Doctor degree from Marquette University Law School and is admitted in Texas and registered to practice before the U.S. Patent and Trademark Office.

Stephen Jensen is a partner in the Orange County office of Knobbe Martens. His practice emphasizes intellectual property litigation, competitive strategy, negotiation, licensing, infringement and validity analysis, financings, acquisitions, joint development and other strategic technology related transactions. He handles adversarial matters involving virtually all aspects of intellectual property and complex technology, with repeated pivotal successes for his clients.  His hard work to exceed clients’ expectations combined with his ability to quickly grasp complex technology and represent that technology in the legal arena has resulted in an admirable track record of significant successes in bet-the-company cases.

Mr. Jensen represents clients in a wide range of technologies, such as medical devices, semiconductors, computer hardware and software, complex digital signal processing, wireless communications, antennas, video and audio processing, optics, and control systems.

He was the Senior Vice President of OEM Business and Business Development at Masimo Corporation.  He served on the Board of Directors of Sedline, Inc, a company with non-invasive brain function monitoring products.  He is currently on the Board of Directors for Cercacor Inc., a medical device company that develops non-invasive blood constituent monitors.  He also serves on the Board of Directors for the non-profit Masimo Foundation for Ethics, Innovation and Competition in Healthcare.

Prior to law school, Mr. Jensen was an engineer at Hughes Aircraft where he was involved in development of radar systems.