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
The ITC: When is it The Right Strategy & What to Expect?
An Operating Company’s Guide to Running a Monetization Program
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
Holly Johnston assists clients ranging from startups to Fortune 100 companies to strategically develop and manage their U.S. and foreign intellectual property (IP) portfolios. Holly is admitted to practice in U.S. Patent and Trademark Office and is a trained engineer experienced in prosecuting patents in numerous disciplines including medical devices and diagnostics, software, electronics, green technologies, manufacturing equipment and consumer products. She handles all aspects of IP procurement and counseling, including developing portfolios of valuable IP assets, providing formal opinions and partnering with IP owners to thoughtfully enforce rights through licensing and dispute resolution.
Rosaleen is a skilled attorney with in-house and law firm experience, handeling all aspects of sophisticated intellectual property and commercial law, including contracts, patent and trademark prosecution, and litigation. She has excellent technical capabilities combined with management skills focused on careful attention to detail and communication with clients ensures that their objectives are met and their projects are completed within time and budget constraints.
Prior to Drager, Rosaleen held the Senior IP Counsel position at Air Products, the Associate Attorney position at Woodcock Washburn and various trademark and prosecution responsibilities at Campbell Soup Company. She earned her Engineering Degree from Rutgers University, her M.B.A from San Jose State University and her J.D. from Rutgers Law School.
Kevin is an Intellectual Property Attorney at Tektronix, focusing on patent prosecution and portfolio management. Kevin has extensive experience in IP and has held multiple IP focused roles including Associate Patent Attorney at Shook Hardy & Bacon LLP. Patent Attorney at Schwabe Williamson & Wyatt as well as Patent Examiner at the USPTO. Kevin has earned a A.S. in Computer Science and Mathematics from Lakeland College, a B.S. in Computer Science and Mathematics from the University of Illinois and his J.D. from the University of Missouri - Columbia School of Law.
Stephen is currently Senior Corporate Counsel in T-Mobile’s Litigation Group. At T-Mobile, he manages patent and other intellectual property litigation and provides strategic counseling on various intellectual property matters. Prior to joining T-Mobile, Stephen served as Assistant General Counsel at Microsoft Corporation where he managed U.S. and international patent litigation in Microsoft’s Litigation Group dating back to 2001, and later handled various patent counseling, dispute resolution, and licensing related issues as part of Microsoft’s Innovation and Intellectual Property Group. As the second patent litigator hired at Microsoft, Stephen has been responsible for many large-scale and high stakes patent litigation matters, including the Lucent v. Microsoft series of cases that are cited to frequently in the context of patent damages reform. Prior to Microsoft, Stephen practiced at Latham & Watkins in Silicon Valley, California, where he also focused on patent litigation and other intellectual property disputes. He is a graduate of the University of California, Berkeley, and the UCLA School of Law.
Lisa Nguyen is a partner in the Silicon Valley office of Latham & Watkins. Her practice focuses primarily on intellectual property litigation, and has included actions pending before the U.S. International Trade Commission, federal district courts and state courts. She has represented both plaintiffs and defendants in complex multi-defendant, multi-patent cases. She has obtained successful outcomes for her clients at trial, on summary judgment, and on motions to dismiss. She has also obtained walk aways for defendant clients with no payment to plaintiffs, as well as attorneys’ fees and costs awards.
Lisa is a member of Women Enriching Business (WEB), a Latham committee dedicated to promoting women in business both outside and inside the firm through global and local efforts to create broader networks and productive business relationships, to attract top talent and to support the long-term success of women.
Lisa has been recognized as a Rising Star in intellectual property litigation by Northern California Super Lawyers each year since 2013. As an undergraduate, Lisa regularly served as a teaching assistant for the introductory computer science course and was recognized with the Computer Science Department Award for Excellence and Dedication in Teaching. She received her bachelor’s degree in computer science and legal studies from U.C. Berkeley and her law degree from the University of Chicago Law School.
Greg is an attorney and a former business executive leading the management and utilization of the Kudeslki Group’s patent portfolio. The Kudelski Group is a global leader in providing video distribution technology and services. Greg leads a global team of professionals to set and meet IP business objectives. Before joining Kudelski, Greg was part of the Gray Cary and DLA Piper law firms where he litigated patents and complex commercial issues.
John is a patent attorney with over 10 years of experience working in major law firms and in-house environments. Experience extends from patent procurement to advising key players on patent and patent licensing matters for start-ups, universities, and large companies. Experience covers technological advancements in electrical hardware, computer science, communication systems, and other cutting edge technologies.
Prior to Sonos, he held various patent roles and responsabilities, including; Patent Associate and Patent Agent at Perkins Coie, Portfolio Manager at the University of Washington, Patent Agent at Darby & Darby. John has earned a B.S. and a Masters in Electrical Engineering from the University of Illinois and his J.D. from the University of Washington 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."
T.J. is general counsel with fifteen years of in-house and law firm experience. Currently he is General Counsel at Digital Control Incorporated. Prior to that, he worked for Intellectual Ventures as Senior Counsel. His law firm experience includes 8 years at Fenwick & West LLP, a Silicon Valley-based firm, representing publicly traded and privately held technology companies (including Cisco Systems and Symantec). He holds a JD from Harvard Law School and a BS in Electrical Engineering from University of Washington.
Mr. Heideman represents clients in all types of intellectual property disputes, with a focus on patent litigation. He has represented clients in a wide range of industries, including software companies, pharmaceutical companies in cases involving Abbreviated New Drug Applications under the Hatch-Waxman Act, aerospace companies, and biotechnology companies, among others. Mr. Heideman also represents clients in contentious Patent Office proceedings, including inter partes review and covered business method reviews. Mr. Heideman regularly counsels clients on pre-litigation matters, including analyzing patent infringement and validity. He has also represented clients in cases involving design patents, false advertising claims, trademarks, and inventorship disputes. In 2015, Mr. Heideman was selected to the Super Lawyers’ “Washington Rising Stars” list.
Mr. Heideman earned his J.D. from Vanderbilt University Law School, where he was a member of the Vanderbilt Law Review. Prior to law school, Mr. Heideman obtained his B.S. in Chemical Engineering, with distinction, from the University of Alberta.
Mr. Heideman joined the firm as an associate in 2005 and became a partner in 2011.
Mr. Heideman co-founded the Canadian American Bar Association, and has served as its Secretary-Treasurer and as its Vice President. He is also an active member of the Washington State Patent Lawyers Association (WSPLA) and chairs the WSPLA Litigation Committee.
Melissa Finocchio is Vice President and Chief Litigation Counsel for Intellectual Ventures. Ms. Finocchio joined IV in May of 2010 to build and lead IV’s patent enforcement program. Ms. Finocchio and her in-house team of litigators manage a large and complex portfolio of domestic and international patent matters. Successes in those matters have driven many settlements over time, resulting in significant revenue for the company and its investors. Ms. Finocchio is also in charge of the company’s substantial body of post-grant work before the Patent Trials and Appeals Board of the USPTO.
Ms. Finocchio serves as a key legal advisor to Intellectual Ventures’ senior executive team in support of the company’s licensing efforts and in devising and executing strategies to monetize its IP assets. In addition, Ms. Finocchio participates in the company’s policy and legislative efforts to strengthen and improve the US patent system, and is a regular speaker at significant IP conferences across the country.
Ms. Finocchio came to Intellectual Ventures from Micron Technology, Inc., where she managed Micron’s high-stakes litigation, including patent, antitrust, and securities matters. Before joining Micron, Ms. Finocchio had a long and successful career litigating technology cases in Silicon Valley. In 1998, Ms. Finocchio joined Orrick, Herrington & Sutcliffe in Menlo Park where in addition to representing companies of all sizes in a wide variety of IP litigation matters, she also served as hiring partner for the Silicon Valley Office and Partner-In-Charge of the firm-wide Associate Mentoring Program. Upon graduation from Santa Clara School of Law in 1990, Ms. Finocchio joined Jackson, Tufts, Cole & Black of San Francisco, and then Cooley Godward of Palo Alto.
Edward J. Brosius is Assistant General Counsel and Assistant Secretary at AMSTED Industries Incorporated. His current responsibilities include management of all intellectual property, litigation support and licensing matters at AMSTED, as well as management of all environmental law matters. Mr. Brosius received a B.S. in electrical engineering from Notre Dame in 1971 and a J.D. from DePaul in 1976. He is admitted to practice in Illinois, and in the U.S. District Court for the Northern District of Illinois, the U.S. Court of Appeals for the Federal Circuit and Seventh Circuit, and the United States Supreme Court. Mr. Brosius was a power systems engineer for Commonwealth Edison from 1971 to 1975, and is a Registered Professional Engineer (inactive status) in Illinois. He has written numerous papers and has given many speeches on topics including review of patent, trademark and trade secret law and environmental law for employees of industrial corporations, and management of environmental administrative and compliance matters.
Mark Taylor is an Assistant General Counsel in the Litigation, Competition, and Compliance Group at Microsoft, where he focuses on patent litigation. Before joining Microsoft, he was a partner in the IP group at Morgan Lewis, where he represented clients involved in IP litigation at the ITC and in district court. He also spent time on secondment to the IP Litigation group at Hewlett-Packard Company. Mark studied biomedical engineering at Virginia Commonwealth University and attended the George Washington University Law School.
Mauricio has extensive experience in comprehensive client counseling in all aspects of intellectual property law. He has been very active in the prosecution of patent applications in both the electrical engineering and computer software fields.
Mauricio has wide-ranging experience in developing patent portfolios and intellectual property assets. He also provides counsel on patentability, due diligence and infringement mitigation matters and comprehensive intellectual property programs including litigation and complex, global patent and technology licensing.
He joined the firm as a partner in the Seattle office in 2008.
Sharre Lotfollahi is a member of Kirkland & Ellis' intellectual property litigation group and focuses on disputes involving patent, copyright, and trademark infringement. She represents clients in various matters, including intellectual property disputes relating to gaming software and hardware, television shows, textiles, food products, medical devices, computer components, hard disk drive manufacturing, wireless technologies, and motor vehicle accessories. Sharre also advises clients on matters before the Patent and Trademark Office, contractual and licensing issues, and commercial legal strategy. Sharre is also active in pro bono work and recently led a trial team on behalf of low-income tenants against slumlords in South Los Angeles.
Kristin’s practice focuses exclusively on intellectual property litigation, including patent, trademark, and trade dress cases. She has extensive experience handling all phases of litigation, from obtaining favorable results in early motion practice, to efficient management of cases through discovery, claim construction, summary judgment and trial. She has a national trial practice, litigating in federal district courts around the country, and has argued at the Federal Circuit. Kristin is the chair of the Litigation practice group and has served in the past as the firm’s managing partner.
Kristin’s knowledge of patent damages is well respected in the industry. In addition to being a regular presenter on the topic, she is the current chair of the Damages Subcommittee of the American Intellectual Property Law Association (AIPLA) Patent Litigation Committee. In patent cases, Kristin’s strategy is to collaborate with damages experts early in the case to develop effective and compelling theories of patent damages to present to juries and judges, as well as encourage early pre-trial settlements.
Kristin is also committed to increasing diversity within the firm and the profession at large. In addition to mentoring and encouraging other female attorneys, she has helped coordinate the firm’s partnership and support of AIPLA’s Women in IP Law Committee.
Kristin joined Klarquist in 1999 as a lateral associate and became partner in 2004.
James Sherer is chair of the Information Governance practice team and also serves as a member of the E-Discovery Advocacy and Management, and Privacy and Data Protection teams. His work focuses on litigation; discovery management processes; enterprise risk management; records and information governance; data privacy, security and bank secrecy; artificial intelligence; technology integration issues; and related merger and acquisition diligence. Prior to joining BakerHostetler, James worked as in-house litigator with a Fortune 500 company and previously practiced litigation in New York. He holds an M.B.A., his CIPP/US, CIPP/E, CIPM and FIP data privacy professional credentials, the CIP and IGP information governance designations, and the CEDS eDiscovery specialist credential. James is also a member of The Sedona Conference® Working Groups One, Six, and Eleven; and writes and presents on e-discovery, information governance, privacy, investigation, and merger and acquisition issues.
Matt Talpis serves at Chief Intellectual Property Counsel for Vulcan Inc. He has held a number of other IP-related positions at companies including Amazon, IBM, and Emerson Process Management. He holds a JD from University of Arizona and a BS in Computer Science from University of California San Diego. He is a certified US Patent Attorney and is licensed to practice in the states of Washington and Texas.