Six years after the AIA, and patent professionals are no closer to resolving the legal uncertainty it created and its disruption to their business. In fact, a tsunami of acronyms (IPR, PTAB, PGR…) and related court decisions have increased litigation risk and costs. Quality patents are a must to survive this environment, adding further pressure to budgets and to protect your innovation…
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.
KEY TOPICS DISCUSSED
Prosecution and Portfolio Management; Inconsistency, Complexity & Budgets
Evolving with Litigation Trends
Patent Disputes and Litigation Strategy in a Changing Landscape
Core Principles in Successful Trade Secrets Strategy
Shaking up PTAB – Post SAS
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
Jesse Bucholtz is Senior Patent Counsel at Canon USA. He's earned a BA in Political Science and Philosophy from Binghamton University an MS in Biology and Immunology from NYU and his JD from Cardozo School of Law. Prior to Canon he was a Senior Associate at Jack Schwartz & Associates PLLC.
Rabiya Kader is a Patent Attorney at Sanofi. There, she supports Business Development activities for medical devices, including mobile health applications. She also manages prosecution for Sanofi’s own device development. In addition, she is responsible for all copyright issues for North America. She also has expertise in regulatory approval for medical devices. Ms. Kader began her career at Johnson and Johnson as a Mechanical Engineer and was an associate at Baker Hostetler and Lerner David. She attended Rutgers University for both her undergraduate and law school degrees.
Erika is Vice Preisdent and Associate General Counsel at Pernix Therapeutics. Pernix Therapeutics is a specialty pharmaceutical business with a focus on acquiring, developing and commercializing prescription drugs primarily for the U.S. market. Erika brings over a decade of legal experience and insights.
Thomas Blankinship is Associate Director, Intellectual Property for Icahn School of Medicine at Mount Sinai in New York City. He is an experienced IP counselor across a broad spectrum of regulated healthcare technologies. During his 20 year career, he learned how to manage a global patent portfolio as in-house patent prosecution counsel for Bayer, Dr. Reddy’s, and Boehringer Ingelheim. At Mount Sinai, Tom is responsible for managing a portfolio of patent applications concerning new drugs, medical devices, and digital health solutions that arise from the institution’s research and development efforts. Tom received his law degree from the University of California at Los Angeles and his B.S. in Biology from the University of California at Irvine.
Cindy Huang is an IP Counsel with the Intellectual Property Law Strategy team of American Express. She advises on a multitude of IP issues, including but not limited to, IP provisions in agreements, IP diligence on investments and acquisitions, and IP threats and litigations. Additionally, Cindy manages the company patent portfolio.
Prior to joining American Express, Cindy held senior counsel and counsel positions at various law firms, where she, among other responsibilities, prepared and prosecuted hundreds of domestic and foreign patent applications, prepared IP strategies, and provided clearance and non-infringement opinions for large Fortune 100-types of companies to small startups. Cindy received her undergraduate degree from the University of Michigan and her J.D. from Loyola University of Chicago.
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.
Maxine Graham is Chief Intellectual Property Counsel at American Express. She has earned a Bachelors of Science in Physics from Furman University and Bcahelors of Science in Electrical Engineering from Georgia Institute of Technology. She has been listed as a top in-house attorney on the IP Stars Listing.
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.
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.
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
Mr. Klocinski is Senior Managing Counsel and Senior Intellectual Property Counsel at MasterCard Worldwide, a global technology company and payments industry leader. As an intellectual property professional with more than 25 years of experience cutting across the private and public sectors, Mr. Klocinski has successfully worked with a broad range of technologies including computer software, electronics, advanced business processes, telecommunications, semiconductors and acoustics. Mr. Klocinski's specialties include intellectual property strategy (with an emphasis on patent portfolio building and management), intellectual property risk mitigation and dispute resolution and treatment of intellectual property in commercial agreements. Prior to joining MasterCard in March 2012, Mr. Klocinski was a Vice-President and Assistant General Counsel at CA, Inc. for six years. As Assistant General Counsel, he designed and implemented the company's patent program, directed the preparation and prosecution of patent applications, managed intellectual property risk mitigation, supported IP issues in mergers and acquisitions and litigation, managed trademark clearance, filing, prosecution and dispute resolution and managed CA’s copyright program. For three years, starting in 2001, Mr. Klocinski was Assistant General Counsel at Capital One Financial. His responsibilities included, managing invention intake, preparing and prosecuting of patent applications, designing and implementing patent strategy, managing patent risk mitigation, and consulting on patent issues in mergers and acquisitions. In addition to his corporate experience, Mr. Klocinski has also practiced with the Washington D.C. offices of Baker Botts, Hunton & Williams and Finnegan, Henderson, Farrabow, Garret & Duner. Mr. Klocinski's private practice experience focused on patent prosecution, patent portfolio management, patent litigation and risk mitigation and general intellectual property client counseling. Prior to and while enrolled in Law School at Georgetown University Law Center, Mr. Klocinski worked as an Examiner at the U.S. Patent and Trademark Office where he researched and prepared official actions and appeal briefs for United States patent applications and PCT applications related to image analysis. Mr. Klocinski holds a J.D. from Georgetown Law School and a B.S. in Electrical Engineering from Ohio State University.
Joseph Codispoti is a seasoned patent attorney with a long and demonstrated history of high performance and achievement as an attorney and a law firm director. He has worked in-house, at large law firms, and operated two small law practices. He is equally adept at working directly with individuals and collaboratively as a team member across different jurisdictions and multiple companies.
Anne Shea Gaza has been successfully litigating intellectual property and complex commercial cases for almost two decades. With meticulous attention to detail and big-picture strategic vision, Ms. Gaza represents national and international clients in Delaware’s state and federal courts. She has represented both plaintiffs and defendants in a diverse range of industries and technologies.
Ms. Gaza also advises clients on the various e-discovery standards and practices across the courts. She has developed an in-depth understanding of electronic discovery and served on the United States District Court for the District of Delaware’s Ad Hoc Committee on E-Discovery (responsible for drafting the Court’s Default Standard for Discover. Including Discovery of Electronically Stored Information).
In 2014, she was appointed by the Delaware Supreme Court to its Commission on Law & Technology and is a member of the Technology Inn of Court. In addition to serving as an advocate for her clients in the courtroom, Ms. Gaza has extensive experience with alternative dispute resolution, particularly court-directed and private mediation. She also serves as a neutral arbitrator in both intellectual property and complex commercial matters. She serves as an appointed arbitrator through the American Arbitration Association (AAA).
An accomplished author, Ms. Gaza is also a member of the editorial board for the Federal Bar Association’s magazine The Federal Lawyer. She is also a frequent speaker with federal and state court judges and local practitioners on industry-related topics as well as ethics and professionalism. Ms. Gaza is a member of the Board of Bar Examiners for the State of Delaware and serves as co-chair of the firm’s Diversity Committee. With an AV-Preeminent peer review rating from Martindale-Hubbell, she was selected as a 2014 Women Leaders in the Law and profiled in a special section of Fortune magazine.
While in law school, Ms. Gaza served on the Journal of Law & Commerce. She also served as a judicial extern for the Honorable Carol Los Mansmann, U.S. Court of Appeals for the Third Circuit.
Joe is the Assistant General Counsel for Litigation and Intellectual Property at Mitsubishi Chemical America, Inc. where he advises clients about handling disputes and litigation, compliance, and intellectual property. Before joining Mitsubishi Chemical, Joe was a Senior Associate in Orrick, Herrington & Sutcliffe LLP's Intellectual Property Group where he focused his practice on patent and trademark litigation. Joe is a 2006 graduate of the Benjamin N. Cardozo School of Law and a 2000 graduate of Columbia College where he graduated with a degree in Biochemistry. He lives in New York with his wife, daughter, and son.
Brian oversees Avon’s global patent strategy and serves as the primary counsel for Avon’s Global Innovation Center. Brian advises Avon’s R&D executives and scientists on broad range of legal areas, including IP, licensing and other contractual matters, and ethics and compliance, and he works with Avon’s Global Legal Organization on complex transactional, IP litigation, and tax matters.
Brian began his career at Simpson Thacher & Bartlett, LLP, where he developed a decade of experience in patent and complex commercial litigation on behalf of major consumer electronics companies and financial institutions, as well as IP transactions on behalf of private equity firms strategic acquirers and lenders. Prior to joining Avon, Brian was Of Counsel with Greenberg Traurig, LLP, where he expanded his practice to include patent prosecution, licensing, and trademark matters.
Brian holds a JD from New York University School of Law and an AB in Biological Sciences from Cornell University. He is admitted to practice in New York and is a Registered Patent Attorney.
In his current role on assignment to GE Capital as acting IP Counsel, Mark is supporting several critical initiatives involving IP, including meeting Fed regulatory obligations, identifying trade secrets and implementing protections, and the GE Capital reorganization. Mark graduated from Ohio Northern University in 1991 with a BS degree in Electrical Engineering, an English Literature minor and concentration in Business Adminstration. He received his Juris Doctor from the State University of New York (SUNY) at Buffalo School of Law in 1994. Mark then joined the boutique IP law firm of Notaro & Michalos PC as an associate patent attorney working on patent, trademark, copyright, trade secret, litigation and licensing issues for clients including Adidas, A.T. Cross and Limited Brands. In 2004, Mark left the law firm and joined GE Corporate’s patent group as Patent Counsel providing international patent support for Healthcare, Industrial and Oil & Gas technologies. In 2005, Mark was selected to be acting IP counsel for the Universal Parks & Resorts component of NBCU. From 2006-2012, Mark was acting IP counsel for GE Intelligent Platforms and GE Sensing & Inspection (now part of Oil & Gas), working with the businesses to institute IP processes to identify and protect valuable IP, and to provide a full range of IP counseling and support. Since 2012, Mark has focused on IP portfolio development around hardware and software technologies for Intelligent Platforms, Healthcare, Aviation, Power & Water, and Oil & Gas. During that time, Mark has also devoted a significant amount of effort to working on Information Protection issues and leading cross-functional teams in IP training across GE.
Merri C. Moken is a partner in Holland & Knight's New York office and a member of the firm's Intellectual Property Group. Her broad-based patent litigation practice includes the biotech, chemical, and pharmaceutical fields, as well as the mechanical and electrical arts. She has appeared before federal district and appellate courts, and the U.S. International Trade Commission (USITC).
Ms. Moken represents both plaintiffs and defendants concerning patent infringement, invalidity, and unenforceability, as well as trade secret misappropriation and other contract-related matters. She also represents internationally based clients and has served as counsel in both domestic and foreign proceedings. Her practice includes client counseling, due diligence, licensing, trade secrets, unfair competition, dispute resolution, opinion work and the management of prosecution matters
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.
Tom Brown is intellectual property litigation attorney at Dell with substantial experience in high-stakes cases representing both plaintiffs and defendants, with particular emphasis on patent litigation. Prior to the Dell - EMC merger, Tom managed EMC's patent litigations and IPR proceedings, including in the district court, on appeal, and in the PTAB; worked on legislative patent policy issues; supervised amicus briefs filed in the Federal Circuit and Supreme Court.
Prior to Dell/EMC, Tom held a Principal role at Fish and Richardson P.C. He clerked for the Hon. Robert E. Keeton (US District Court) and was a Software Design Engineer at Microsoft. Tom earned his B.S. Computer Science & Political Science, Yale University and his J.D. from Harvard 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.
Jim is currently Senior Vice President, Global Chief Intellectual Property Counsel at Shire Pharmaceuticals, a highly successful 24,000 employee global biopharmaceutical company. He is a member of the law department senior management committee which oversees a 140 person international law department. Jim is also a member of the Pipeline management committee that oversees all Shire's research and business development. James has managed complex patent litigation in many countries and is considered a leading expert in US Hatch-Waxman litigation. In 2007 and 2017 James was awarded Shire’s highest honor, The “CEO Award” for successful outcomes in highly important Patent litigation. Prior to joining Shire in 2004 Jim spent five years in Belgium where he established and managed the Johnson & Johnson European patent department.
Prior to practicing Intellectual Property law at a prestigious law firm Jim worked for the department of law and public safety in New Jersey and was a member of the criminal litigation team that successfully introduced DNA test results for the first time in New Jersey. Jim is a strong supporter of Pro Bono work. Jim was a member of the litigation defense team that successfully challenged and overturned the conviction of Glenn Dale Woodall for serial rape. The case received international attention because of the prosecution team’s unethical conduct resulting in the conviction and incarceration of an innocent man.
Prior to practicing law Mr. Harrington was a senior forensic biochemist in New Jersey’s forensic science laboratory. During his tenure at the laboratory Jim testified as an expert witness in over forty criminal and civil trails. Mr. Harrington is a prolific writer and has published a seminal treatise on Forensic DNA testing, recently cited in a written opinion by the Arizona Supreme Court. Jim was the legal and scientific correspondent for the newspaper USA Today during the OJ Simpson trial.
Christopher Carroll is an Intellectual Property partner based in the Firm's Boston office, with a dual practice in London. He concentrates his practice on providing strategic patent advocacy and is licensed to practice before the US Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the UK High Court. He provides advice and develops strategies for clients on patents, trademarks and copyrights.
Christopher's engineering background enables him to focus on the areas of mechanical, electrical, software and communications engineering including wireless protocols, Internet protocols and information security. His clients include software, telecommunications, medical and Internet companies.
Christopher's experience involves drafting and prosecuting U.S. and foreign patent applications and advising on patent portfolios for clients located all over the world. He regularly prepares legal opinions regarding patent validity, infringement and freedom-to-operate, provided due diligence opinions related to intellectual property, and drafted technology-related license agreements. He also has extensive experience handling Opposition and Appeal proceedings at the European Patent Office.
Prior to joining White & Case, Christopher was Counsel at an international law firm. In his earlier career prior to attending law school, Christopher supervised research related to wireless communications network security at Verizon and GTE Laboratories. He also developed Mobile IP cryptographic key distribution procedure used by Verizon Wireless in its 3G data service. His background also encompasses service in the U.S. Navy Submarine Force as a nuclear reactor operator. Christopher is an inventor of eight U.S. patents related to wireless security.
Principal member of IBM CHQ patent enforcement, strategy, and operations team. Responsibilities include development and implementation of patent monetization strategies, including enforcement and assignment; member of IP policy team; analytics; strategy and process development; advising worldwide enforcement legal team. Chair of Intellectual Property Owners Licensing Committee.