The IP Strategy Summit: East

Intellectual Property pattern and co-chair Jonathan S. Caplan represents clients in patent litigation, counseling and prosecution, as well as in general corporate matters involving the acquisition, sale or licensing of intellectual property rights.

Jonathan litigates patent infringement actions in federal district courts across the country, in the Court of Appeals for the Federal Circuit, and in state courts, both representing patent owners seeking to enforce their rights and defending companies against allegations of infringement.

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.

Drawing on two decades of experience with emerging technologies, first as a Department of Defense engineer and now as a lawyer, Pejman offers companies of all sizes the strategic assistance they need to achieve their goals.

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.

Brad Lawrence focuses his practice on intellectual property (IP) counseling including the protection of clients' inventions through carefully planned patent procurement, integrated with other strategic considerations, including development of licensing strategies and analysis of the IP and product positions of others. Brad also devotes a significant amount of time to 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. 

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.

Karen has led teams in patent infringement lawsuits involving agricultural chemicals, human and veterinary pharmaceuticals, biotechnology products, and networking technologies. In late 2012, Chambers USA Women in Law recognized Karen’s work by nominating her for its 2013 Up and Coming Intellectual Property Lawyer of the Year Award and in 2018, BTI Consulting named Karen as one of 326 outside lawyers, and the only Delaware lawyer, as “absolutely best at client service.”

Karen also serves as a member of the Sedona Conference’s Patent Litigation Working Group 10 on Patent Litigation Best Practices and has been a faculty member for various corresponding Working Group Meetings. Karen served as the President of the Delaware Chapter of the Federal Bar Association, the primary liaison between the district court bench and the Delaware federal bar. In 2013, Karen was recognized for her service to the District of Delaware with the Judge Caleb R. Layton, III Service Award.

Taking on pro bono representations is also a regular part of Karen’s practice, including a civil rights action for discriminatory arrest in which the jury awarded compensatory and punitive damages. After the district court judge overturned the verdict on post-trial motions, Karen successfully argued the appeal to reinstate the jury’s original verdict. She has also successfully represented pro bono clients in immigration, family law matters and before the U.S. Court of Veterans Appeals.

Karen has a Bachelor of Science in Biochemistry and Molecular Biology from The Pennsylvania State University and worked at GlaxoSmithKline conducting drug discovery research. Karen prosecuted patent and trademark applications during law school and worked on other intellectual property litigation matters at an intellectual property boutique firm in Philadelphia and at one of Delaware’s largest law firms before founding Shaw Keller LLP in 2011.

Jennifer is an experienced intellectual property litigator. As a partner at Delaware law firm Morris Nichols, she focuses on patent and trade secret disputes in federal and state court. 

Her experience encompasses all aspects of litigation from outset to trial and through appeal in both lead counsel and co-counsel roles. 

An MIT graduate with degrees in electrical engineering & computer science and management, she frequently draws on her technical background in her patent litigation work. 

Frank J. Nuzzi is Senior Intellectual Property Counsel, IP Litigation, for Siemens Corporation, located in Iselin, New Jersey. Frank oversees U.S. patent litigation across Siemens’ U.S. businesses. In that role, Frank supervises outside litigation counsel. Frank has experience in all aspects of intellectual property law and is a frequent CLE panelist in the field. Prior to joining Siemens, Frank was in the litigation department of Clifford Chance where he specialized in patent litigation. Education NYU School of Law, JD Executive Editor of the Annual Survey Of American Law. Lehigh University, B.S and M.S. in Mechanical Engineering Engineering honor society, Tau Beta Pi.

Over the course of her nearly twenty-year career, Erin M. Dunston’s practice has been a purposeful mix of patent prosecution and litigation. She concentrates her practice primarily in the fields of biotechnology, pharmaceuticals, medical devices, and associated computer technology. To date, Erin has handled more than 20 district court litigations and more than 25 inter partes reviews (IPRs) and more than 40 interferences before the Patent Trial and Appeal Board (P.T.A.B). Assisting both patent owners and putative infringers/petitioners, this experience ranges from pre-filing analyses all the way through appeals to the U.S. Court of Appeals for the Federal Circuit.

Jason LaBerteaux joined MetLife in 2019 and serves as AVP & Assistant General Counsel with the Global IP/Technology Unit. In his counseling, he primarily focuses on the protection of enterprise intellectual property and on the legal issues related to technology, including outsourcing and the implementation of global platforms. Jason is also responsible for negotiating IT transaction agreements, enabling roll out of the enterprise digital strategy. He also provides intellectual property and information technology legal support to M&A transactions, including due diligence reviews of intellectual property assets and drafting and negotiating transitional services agreements.

Jason is a member of the ACLI Innovation Subcommittee and Federal Quick Reaction Team that focuses on industry regulatory initiatives. Prior to MetLife, Mr. LaBerteaux worked at a number of law firms in the New York area with a focus on software procurement agreements (SaaS, IaaS, outsourcing, and music licensing), IP litigation, Inter Partes Reviews, IP licensing, M&A, and patent prosecution. Jason received his BS in electrical engineering from the University of Louisiana at Lafayette in 2008, and his JD from the University of Connecticut School of Law in 2011. 

With over a decade of experience in the IP field and five years as an in-house attorney, Derek Lam is currently in-house Senior IP Counsel at Dell Technologies.  His responsibilities include counseling business leaders and employees on a wide range of matters including patents, commercial agreements, M&A issues, patent litigation and post-grant proceeding issues, open source management, copyrights, and trade secrets.

Prior to joining Dell Technologies, Derek was a partner in private practice at Kim IP in the greater Philadelphia, Pennsylvania area; in-house as Senior Patent Counsel for Pegasystems in Cambridge, Massachusetts; and a senior associate in private practice at Wilmer Cutler Pickering Hale and Dorr in Boston, Massachusetts.  Before becoming an IP attorney, he worked for IBM as a software engineer.  Derek holds a B.S. in Computer Science and Engineering and an M.Eng. in Electrical Engineering and Computer Science from MIT, and a J.D., magna cum laude, from the University of Minnesota Law School.

Phil Hirschhorn, a partner at Panitch Schwarze, is a first chair trial lawyer who has been counseling clients regarding and litigating patent license disputes in district courts, the ITC, and in arbitration for over 30 years.  He is also very involved with adversarial proceedings before the Patent and Trademark Office.  Phil serves as the co-Chair of the Federal Circuit Bar Association’s PTAB/TTAB Committee focusing on inter partes review proceedings before the PTAB.

Ms. Stein focuses on litigating disputes involving patents, trade secrets and unfair competition in fields such as software, life science, and real estate.  Wendy has repeatedly secured emergent relief on behalf of trade secret owners under the Defend Trade Secrets Act (DTSA) or related state laws.  She also maintains an active defense practice representing individual and corporate defendants accused of misappropriating alleged trade secrets. Recent defense wins include a plaintiff’s voluntary dismissal of a DTSA claim after Wendy secured key admissions during cross-examination of its main witness and in another matter, a court order dismissing a DTSA claim with prejudice.

Victoria Friedman is an IP attorney specializing in client counseling, procurement and management of intellectual property. Her technical background is in Computer Information Systems and her patent practice primarily focuses on software, telecommunications, computer, search, email and social network arts.

In her trademark practice, she manages international portfolios for top global brands in various industries. Friedman is one of a handful of attorneys who have been successful in registering a color mark. She enjoys developing and implementing efficient, practical solutions to her clients' IP challenges.

Victoria Friedman speaks English and Russian and has been active in the field of IP since 2003.

Puja Detjen came to Patterson + Sheridan with a unique skillset that she has since put to good use in her intellectual property law practice. As a former member of GE’s Operations Management Leadership Program, Puja supported corporate strategy objectives across manufacturing, operations, and supply chain management. Today, she leverages her diverse business experience to lead the way for inventors seeking to align their IP efforts with a strategic plan.

Puja’s practice is focused on patent preparation and prosecution, due diligence for IP transactions, and brand protection. She has experience in a variety of technical areas including wireless communications, wearable devices, audio output devices, and neural networks.  Puja’s ability to focus on the bigger picture without losing sight of the details ensures that her client’s inventions have the needed protection to thrive across multiple jurisdictions. Minimizing risk while maximizing value

In addition to preparing and prosecuting patents, Puja provides transactional support for clients engaging in mergers, acquisitions, and divestitures. For Puja, this involves performing IP portfolio due diligence and analyzing assets such as trademarks, patents, and licensing agreements. Puja also collaborates with inventors, in-house counsel, and foreign and domestic associates to manage the myriad of working components and competing interests that accompany these complex transactions. Relying upon a cohesive mix of her legal expertise and management skills, Puja is able to deliver exceptional results that meet each party’s individual needs.

When she isn’t devoting her time to helping clients navigate the patent application process or the intricacies of an M&A deal, Puja enjoys the performing arts, spending time with her husband and children, and pursuing her passion for wellness and healthy living.

Kim R. Jessum is Chief IP Counsel U.S. and Associate General Counsel at Heraeus Incorporated in Langhorne, PA and Secretary of Heraeus Materials Technology North America LLC in Chandler, AZ. Heraeus is a Fortune Global 500 company specializing in precious metals, materials and technologies; sensors; biomaterials and medical products; as well as quartz glass and specialty light sources. Kim is responsible for providing intellectual property and general legal advice for various business units in the United States and worldwide. Kim received her bachelors degree in chemical engineering and applied science from Lehigh University in 1992 and her masters degree in biopharmaceuticals from the University of Pennsylvania in 2004. She was awarded her law degree and Certificate in Intellectual Property Law from Chicago-Kent College of Law, Illinois Institute of Technology in 1997. She is admitted to practice in Pennsylvania, New Jersey, and Illinois and before the U.S. Patent and Trademark Office. She holds various leadership positions in the American Bar Association, including the Financial Officer for the Intellectual Property Law Section and serves as a board member and co-chair of the IP Committee of the Greater Philadelphia Association of Corporate Counsel.

Bill joined Aerie Pharmaceuticals as Intellectual Property Counsel on 18 June 2018 and was subsequently promoted to Vice President, Intellectual Property.  At Aerie Pharmaceuticals, oversees all domestic and international intellectual property matters for Aerie.  Bill has over 25 years of experience representing clients regarding a wide spectrum of patent and intellectual property matters, including securing and defending world-wide patent and trademark protection, performance of due diligence with respect to new technologies, licensing and negotiation of agreements, performing freedom-to-operate analyses, and patent litigation regarding Hatch-Waxman, devices and biologics. Bill received his J.D. from Seton Hall University Law School, his Masters degree in Biochemistry from the University of South Florida, and his Bachelors in Chemistry from the University of Delaware.