The 6th Annual IP Strategy [Virtual Summit]: Boston
Risk & Uncertainty: The New Normal for IP
[Virtual Summit]
Seven years after the AIA, and patent professionals are no closer to resolving the legal uncertainty that it created. The global pandemic has created economic and market uncertainty. Court decisions have seemingly increased litigation risk and costs. Quality patents are a must to survive this environment. The legal and market uncertainty adds further pressure to budgets.
How to build a cohesive strategy with options around these legal and budget challenges, which also delivers business results?
Come join your IP peers for a day of learning, benchmarking & networking through panels and break-out groups and head back to the office with actionable insights from the front lines.
*Limited number of complimentary guest passes availabile exclusively for in-house counsel*
- Core Principles in Successful Trade Secrets Strategy
- Portfolio Management
- Patent Prosecution
- Defensive Litigation Trends
- Presentation: Litigating Trade Secrets in a Virtual World
- Case Study: Patent Annuity Market Trends
- 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
David Shofi is an attorney and IP strategist with over 24 years of experience in technology and intellectual property. He is presently Chief Legal Officer for Univercells, a Belgian business-to-business technology provider focused on increasing the availability of affordable vaccines and biotherapeutics to address global health challenges. Previously, as Vice President, IP Strategy Solutions and Chief IP Counsel for CPA Global, David helped clients of all sizes assess and identify opportunities for improvement of their IP processes As CIPC for ATMI, a semiconductor and lifesciences company, David managed all aspects of IP - strategically building the IP team and portfolio toward a successful company divestiture. David also served as IP Counsel for IBM Corporation, where he led development of processes relating to standards, open source software and due diligence. He was also an associate at the Baker Botts law firm. David earned his law degree from Pace University School of Law and a Bachelor of Science in Electrical Engineering from Columbia University.
Sheila Jain Kaushik is Senior Counsel, Intellectual Property at Ansell where she has broad responsibility and management over the company's global IP portfolio (trademarks, patents, and trade secrets), in addition to supporting IP-related commercial activities (M&A, licensing transactions, joint development agreements). Prior to going in-house, Sheila worked in private practice at law firms in New York, New Jersey, and Austin, Texas, where her practice focused on general commercial/civil and patent litigation. Sheila graduated from Rutgers Law School - Newark in 2009, and received her undergraduate (Chemistry/World Arts & Cultures) and graduate degree (Public Health) from UCLA. Prior to being an attorney, Sheila was a public health epidemiologist and researcher with the U.S. Centers for Disease Control.
Mr. Sankhla has held numerous global leadership roles in law, business, and technology. Prior to his current position, he has worked with reputed law firms, and corporations such as Schneider Electric, SAP and Motorola. Before venturing in IP, Saket worked in software programming and electronics. He believes this gives him an added advantage to understand the engineers (lack of engineer’s interest in IP) and project life cycle.
Saket’s passion to share knowledge brings him to present in many IP Summits. He routinely speaks and counsels globally on successfully executing global IP strategies for competitive advantage, effecting exceptional returns on IP investment, and transforming to innovative global legal department operations.
He even finds time to be give lecturers in University of New Hampshire. Mr. Sankhla has a Masters of Intellectual Property from Franklin Pierce Law Center, Masters in Information Technology from IIT-Roorkee, and Bachelor of Engineering in Electronics and Communication from Bharathiar University.
Chandra Adams serves as Vice President, Legal & Intellectual Property, Deputy GC and Corporate Secretary at Surface Oncology, Inc. In addition to her experience as an intellectual property attorney, she also brings expertise in regulatory and general corporate matters to the role. Prior to joining Surface, Chandra served in legal positions of increasing seniority at Bioverativ Inc. (acquired by Sanofi in 2018), Vertex Pharmaceuticals, Inc., and Genzyme Corporation (acquired by Sanofi in 2011). She has also taught as an Adjunct Lecturer in the Master of Science in Regulatory Affairs program at Northeastern University’s College of Professional Studies. Chandra earned her bachelor’s degree in chemistry and biology from Valparaiso University (Valparaiso, Indiana) and her juris doctor from Suffolk University Law School (Boston, Massachusetts). She is licensed to practice law in Massachusetts and is a registered patent attorney with the United States Patent and Trademark Office.
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
Shaun P. Montana is Senior Counsel for Intellectual Property at OSRAM SYLVANIA Inc., part of OSRAM Americas, a group of OSRAM companies located in North and South America. OSRAM Americas is part of OSRAM GmbH, one of the two largest lighting manufacturers in the world. Shaun’s primary focus has been to help grow and protect OSRAM SYLVANIA’s intellectual property portfolio and its product portfolio as the lighting business continues to transition from conventional to digital technologies. Shaun provides legal advice, with a dollop of humor, to enable business from idea conception through product development to sales and beyond, covering all types of intellectual property-related legal matters, and works particularly with business units in the growth areas of semiconductor-based lighting devices, software-based lighting controls, and lighting electronics. Prior to working at OSRAM SYLVANIA, Shaun practiced at three well-known IP law firms in the Boston area, ranging from very small to mid-sized to very large. Shaun holds in BS in Electrical Engineering (magna cum laude) from Union College, and a JD from Boston University, where he served as Executive Editor of the Journal of Science and Technology Law (2001-02). Shaun is a registered U.S. patent attorney and is a named inventor on three U.S. patents. When not contemplating which is the perfect Monty Python quote to apply to today’s crisis at the office, Shaun enjoys spending time with his wife and two children, learning something new in history, science, and technology, and staying on top of the latest developments in baseball statistical analysis.
JD - Suffolk University Law School
Ms. Henderson is a registered U.S. patent attorney with over 20 years of legal, management and R&D experience with life science companies.
Prior to joining Sigilon, Ms. Henderson was the first in-house IP counsel at Minerva Neurosciences. Previously, Ms. Henderson served as a Legal Director for 11 years at Schering Pough/Merck, where her responsibilities included building and managing the patent portfolio for several pre-clinical and clinical biologics programs as well as five marketed products. Ms. Henderson’s first in-house legal role was at Genaissance Pharmaceuticals, where she established the IP function and managed a team of patent professionals. Before going in-house, Ms. Henderson began her legal career as an associate attorney at two IP boutique law firms.
Ms. Henderson holds a B.A. degree in biochemistry from the University of Kansas, an M.S. degree in biochemistry from St. Louis University and a J.D. from the University of Connecticut
Dr. Kelly Morgan leads Arbor's legal team to safeguard the company's research activities and drive the IP strategy for short and long term growth. Prior to joining Arbor, Dr. Morgan worked with multiple start-up companies at a premier venture firm to guide development of initial IP, as well as educate and train early team members. Originally trained as a cancer immunologist, Dr. Morgan brings over a decade of post-graduate experiences, both from her research bench and law firm training, aiding in opportunistic research design with proven impact on corporate development.
Suffolk University Law School, JD.
Brad Lawrence focuses his practice on intellectual property counseling including the protection of clients' inventions through carefully planned patent procurement. His practice also includes analysis of the IP and product positions of others and the development of licensing strategies as well as performing product clearances in the form of non-infringement and/or invalidity opinions. He also has significant prior litigation experience that includes many aspects of patent, trademark, and trade secret litigation as well as licensing and other extrajudicial resolution of IP disputes.
Tony is General Counsel of Fraen Corporation, a US-based manufacturing and R&D company for the LED lighting, automotive, medical device and defense industries. He also serves on the board of directors of several of Fraen’s spin-off companies. In addition to the broad range of typical GC legal issues, he leads Fraen’s patent prosecution and litigation strategy worldwide. Among these intellectual property matters, this past fall Fraen obtained a rare general exclusion order from the ITC regarding Fraen’s entertainment lighting patents.
Before going in-house, Tony served as a clerk in the Southern District of New York and spent 10 years as an IP and commercial litigator at Winston & Strawn in New York and at Dechert in Boston. He has degrees from Fordham Law School and Holy Cross.
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David Kuznick is Senior Legal Counsel, IP Litigation at Dell Technologies where he manages a wide variety of intellectual property litigation and plays a key role in Dell’s Open Source initiative. Prior to his litigation role at Dell, David managed a large patent prosecution docket preparing and prosecuting Dell’s patent applications as well as managing outside counsel. Before joining Dell, he was a litigation associate at Fish & Richardson for five years. Prior to law school, he had a twenty year software development career, most recently as a Principal Software Engineer and Director of Product Development at Gensym Corporation.
Suffolk University Law School, JD
Jeremy is co-chair of Bond’s intellectual property and patent litigation team. He has an accomplished track record and substantial experience in litigating high-stakes intellectual property disputes, including patent, trademark, copyright, and trade secret matters. Over the course of his career, Jeremy has litigated over fifty intellectual property cases in federal courts throughout the country, including venues in Delaware, Illinois, Florida, Massachusetts, New York, and Texas, and has significant trial and appellate experience. He has represented many well-recognized companies, including Analog Devices, Church & Dwight, Facebook, General Media Communications (owner of PENTHOUSE® brands), ImClone Systems, and Transamerica Life Insurance. A registered patent attorney, Jeremy has extensive experience in securing, protecting, and managing patents and trademarks in the United States and internationally. He assists clients with matters before the U.S. Patent & Trademark Office, including patent reexaminations. He also works with clients on patentability and product clearance studies, freedom to operate evaluations, trademark and branding clearance, licensing, and corporate transactions involving intellectual property.
YORK
QUALIFICATIONS
M.Sc. Intellectual Property Management, QMW
B.Sc. Biotechnology, University of Leeds
European Patent Attorney
Chartered Patent Attorney (UK)
Catherine Coombes is an experienced European and Chartered (UK) Patent Attorney applying a commercial focus to IP across life sciences including: biotechnology, life sciences, gene editing; molecular biology, food ingredients, enzymes, health, gene/protein sequences, diagnostics, immunology, drug delivery, biochemistry and plant biotechnology.
Cath Coombes has conducted many large EPO multi-opponent oppositions in food science, pharmaceuticals and CRISPR, bringing a strategic focus and careful consideration of the impact on her client’s overall patent strategy to such contentious matters. Previously, Cath was also an Examiner for the European Qualification Examination sitting on the Examination Committee responsible for setting and marking the opposition paper.
Cath’s direct clients vary from universities and spinouts to SMEs and large multinational companies and her advice is tailored accordingly. Her day to day work encompasses the preparation and prosecutions of patent application, strategic reviews, managing worldwide portfolios, handling contentious matters and opinion work.
A particular area of her expertise lies in CRISPR technology, having a detailed knowledge of CRISPR systems acquired from over a decade of experience in securing and upholding patent protection and involvement in oppositions in this field. She has written several articles and is regularly asked to provide comments on CRISPR IP to various legal and scientific journals. Her experience encompasses many aspects of CRISPR technology including applications in gene-editing, antimicrobials, foods, industrial biotechnology, diagnostics and agriculture.
Core Expertise: CRISPR technologies, gene-editing, enzymes, food ingredients, pharmaceuticals, antimicrobials.
Charles Sanders is a partner in the Boston office of Latham & Watkins. His practice focuses on intellectual property matters with an emphasis on patent litigation. Mr. Sanders represents clients as lead counsel in federal district court, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), and the Federal Circuit. He has obtained multimillion-dollar settlements, ITC exclusion orders, summary judgments, and trial and appellate victories. Mr. Sanders has handled a diverse range of technologies, including those involving aircraft, acoustic equipment, automotive components, bio-therapeutics, computer hardware and software, electromechanical devices, environmental remediation, fluid separation, LEDs, MRI, MOCVD, medical devices, OLEDs, network security, pharmaceuticals, rare earth magnets, semiconductors, smart phones, spectroscopy and communication systems.
Mr. Sanders received his J.D. from Harvard Law School and holds an A.B. in chemistry and physics from Harvard University. He is a member of the Boston Bar Association, Boston Patent Law Association, and the ITC Trial Lawyers Association.
Dan Bikus is Dennemeyer’s Central Region Business Development Manager. Dan has 12+ years’ experience consulting with AmLaw 250 and Fortune 500 legal departments. Dan is a seasoned intellectual property strategist. In his current role, Dan coaches corporate IP legal departments on how to maximize the value of their patent/trademark portfolios, while minimizing any unnecessary spend through Dennemeyer’s suite of services. Dan is a member of the IPO, AIPLA, and INTA. Dan has a Bachelor of Arts Degree in Economics from Illinois State University.
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Ron Cahill is well-respected for his work with clients of virtually all sizes to solve their most challenging intellectual property problems. A first chair IP trial attorney and Chair of the Barnes & Thornburg national Life Sciences Practice Group, he specializes in breaking down complex life sciences intellectual property issues for juries, judges, and the PTAB. With decades of courtroom experience, Ron has led trial teams in patent infringement cases around the country. He also conducts inter partes reviews (IPRs) and other proceedings in the U.S. Patent and Trademark Office to determine patent validity. While much of Ron’s work involves presenting his clients’ cases to judges and juries around the country, many clients ask him to apply his experience to strategic planning within their business, especially with respect to their competitors or potential deal partners. Ron’s life science work covers a wide range of products, technologies, and legal issues, with recent engagements including CAR-T cancer treatments, small molecule enzyme inhibitors, personalized medicine, and genetic engineering of metabolic systems to produce desired outputs. Recent legal issues have included the scope of written description and enablement in the drug discovery context, the obviousness of engineered biologics, infringement based on biochemical function and property limitations, induced infringement of method of treatment claims, and the strategic use of IPRs to avoid litigation.
Maya Elbert has extensive experience in a wide variety of intellectual property matters, with a focus on patent procurement, strategic counseling, and transactional work in the areas of biotechnology and pharmaceuticals. Her practice includes working with life sciences companies to build patent portfolios, preparation and prosecution of domestic and international patent applications, patent portfolio management, patentability evaluations and assessing the strength of intellectual property assets, preparation of validity and noninfringement opinions, due diligence and freedom-to-operate analyses of patent portfolios in connection with licensing, acquisitions, investments, financing, and competitive landscape assessments. Her practice also includes patent interferences, inter partes review proceedings, and ex parte reexaminations.
