The IP Strategy Summit: NYC 2016

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.

Dr. Judy Jarecki-Black is Head, Patent Prosecution and Patent Litigation, of Boehringer Ingleheim Animal Health.  Dr. Jarecki-Black is admitted to the state bars of Georgia and South Carolina, and is admitted to practice before several federal courts including the United States Supreme Court.  Since 2002, Dr. Black’s department maintains and enforces the global patent portfolio for Merial (now Boehringer Ingleheim Animal Health). Her department obtains patent protection, generates patentability and freedom-to-operate opinions, and conducts due diligence for a variety of licensing opportunities. Dr. Jarecki-Black is also responsible for global patent litigation and leads the trial team on all patent cases.

Keith specializes in the areas of chemical patent prosecution and client counseling. He earned his JD from George Washington University and was admitted to the VA state bar in 2000, the Washington DC bar in 2001, and is registered to practice before the USPTO.

Bill Hayden is a Senior Attorney for Microsoft Corporation. He has 15+ years of experience successfully launching enterprise and consumer technology products, closing complex multi-national transactions, and advising on new media services and technology related matters. Bill is counsel for the Office 365/Enterprise Public Sector/Government Cloud offerings and provides global legal support for the privacy, security, and marketing of innovative technology solutions. At Microsoft, he serves as Board Co-Chair for the Center for Safe Internet Pharmacies, a cross-industry nonprofit.

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.

Lori has been a licensing professional for the past 15 years, conducting negotiations, preparing and writing license agreements and providing business advice as to how to structure licensing arrangements to create a win-win situation for both parties. Lori has extensive knowledge of tools related to patent searching, analytics, and published in the areas of strategic patenting/IAM management. She helped prepare questions for the Certified Licensing Professional exam related to drafting licensing agreements. In her former careers, she worked in inorganic and analytical chemistry and in library sciences. In addition, Lori has experience (she is a published author) in X-ray fluorescence and near-infrared spectroscopy.

Michael A. Oblon is a partner in the Intellectual Property practice in the firm's Washington D.C. office. Michael focuses on patent and trade secret litigation and counseling for companies that develop software, electronics and electromechanical products. Michael develops company-specific trade secret policies and manages patent portfolios (including strategic patent prosecution) for several leading companies in these fields. Michael litigates in various district courts across the United States and also at the International Trade Commission, the Court of Federal Claims, and the Court of Appeals for the Federal Circuit. Michael recently won several patent cases on summary judgment, concerning subject matter including hearing aid signal processing circuitry, database systems, missile countermeasure technology, various aspects of wireless communications systems and web-based music streaming. Michael also represents clients in proceedings before the U.S. Patent & Trademark Office and has successfully argued before the Patent Trial and Appeals Board. For the past several years, Michael has been an adjunct faculty member at the University of Maryland, where he teaches an intellectual property course to engineering and business school students. He is also a frequent lecturer about intellectual property at the University of Pennsylvania and at various corporations and CLE seminars. Before private law practice, Michael served a judicial clerkship for The Hon. Alvin A. Schall, Circuit Judge at the U.S. Court of Appeals for the Federal Circuit. In addition, Michael is a former patent examiner at the U.S. Patent and Trademark Office where he examined patent applications related to database software, file management and computer architecture.

Recognized as a leading expert in the field of intellectual property, Dr. Janice M.K. Jaferian has garnered a reputation for success in global profit-and-loss management, intellectual asset management, international business, marketing and product development. Backed by over two decades of industry experience, Dr. Jaferian now lends her talents to Manitowoc Foodservice. There, she works to achieve revenue, profit and marketing share growth, all the while leading highly productive, cross-functional teams in a wide variety of industries including petrochemicals, telecommunications, business and consumer electronics, and food service equipment. She is directly responsible for overseeing the strategic management of intellectual assets and aligning technical, business and intellectual property strategies. Dr. Jaferian utilizes her expertise to create patent portfolios, handle open innovation management, assess third-party inventions, provide litigation support, and mange external counsel for patent prosecution and annuities.

LAWRENCE CRUZ has been Chief Patent Counsel at Conair LLC (formerly Conair Corporation) since 2002. Conair is a privately held, multi-billion dollar, global company headquartered in Stamford‚ Connecticut that produces and sells a variety of consumer and industry appliances and products. His career started as a Patent Examiner at the United States Patent and Trademark Office in 1987‚ and he has held in-house patent counsel positions at two Fortune 500 companies and associate positions at two intellectual property law firms.  He has had broad legal and business responsibilities and works in all areas of intellectual property strategy and enforcement, product and business development, miscellaneous legal and business matters, and product design. He devotes much of his time and resources to charity events. He earned a JD from George Washington University Law School in 1992‚ and a B.S. in Mechanical Engineering from Southern Illinois University in 1987.

Ted Mathias focuses on trying patent cases. In the last several years, he has tried three cases to judgment and served as lead counsel in multiple cases involving 15+ patents. Ted has litigated patent cases and handled successful appeals to the Federal Circuit in the areas of medical devices, pharmaceuticals, mechanical devices, e-commerce and software. Clients frequently turn to him for guidance on patent remedies and competition issues that arise in connection with patent disputes.

Sesha Kumar heads the Intellectual Property group of Proprietary Products at Dr. Reddy’s Laboratories Inc. He has around 15 years of experience in handling various Intellectual Property in the Pharmaceutical Industry viz., patent drafting/global patent prosecution/patent lifecycle management/patent risk mitigation strategies. He is also experienced in the areas of patent infringement/patent litigation, IP budget management, patent risk mitigation plans, patent prosecution/litigation matters, IP due diligence, client counselling, legal agreement drafting, establishing IP compliance structure etc. He has vast experience in handling various complex patent matters especially in India, US & EP. At Dr. Reddy’s, Dr. GVS is also responsible for devising and implementing business driven IP strategies and recruiting and nurturing new talents. He holds doctorate in chemistry and degree in Law from Osmania University

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.

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.

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.

Matthew W. Siegal is a partner in Stroock’s Intellectual Property Group, where he helps both large multi-national corporations and smaller start-ups protect and monetize their Intellectual Property. His practice focuses on extensive patent litigation, prosecution, licensing and other Intellectual Property related activities in a wide variety of high-tech and traditional fields. A veteran of both jury and bench trials since the 1980’s, including a host of multi-million dollar verdicts, his litigation practice has involved all aspects of discovery, pre-trial, jury trial, bench trial and appeal before federal courts, bankruptcy courts, state courts and the International Trade Commission. His licensing work has involved complex multi-national agreements. A prolific author and speaker, he has published articles and lectured domestically and internationally on a wide variety of intellectual property topics.

Dana Trexler Smith is a Partner in the Disputes and Investigations Group with 20 years of experience. She provides expert witness services in intellectual property and complex commercial disputes. Dana’s investigative accounting experience also includes assisting clients in post-acquisition disputes, fraud investigations, insurance claims and in performing contract compliance examinations. Dana has consulted for clients in many sectors, including software, pharmaceutical, biotechnology, medical device, manufacturing, high technology, financial services, and the service industry. Regarding litigation and arbitration matters, Dana’s experience includes performing the assessment of damages in intellectual property disputes, the analysis of contract-related disputes, and the preparation and analysis of business interruption and property damage claims. She has evaluated and prepared economic damages including the projection of lost profits and reasonable royalty damages, and assessed incremental costs and cost allocation issues. In addition to her testimony experience in legal matters before the Court, Dana has also represented clients in Alternative Dispute Resolution proceedings and insurance claims negotiations and has significant experience in post-merger and acquisition disputes. Prior to joining EisnerAmper, Dana was a Principal in the Forensic, Valuation and Litigation Services Practice of a regional accounting firm. Her background also includes 18 years at a Big Four firm where she was a Director in the Forensic Services Group and assisted clients in litigation and contract compliance matters, as well as helped to establish and lead the Corporate Intelligence practice. A frequent speaker, Dana has presented a range of forensic accounting and litigation topics to various professional organizations. Dana received her B.S. in Accounting from Bucknell University and her M.B.A. from The Wharton School of the University of Pennsylvania. She is a member of the American Institute of Certified Public Accountants (AICPA), Pennsylvania Institute of Certified Public Accountants (PICPA), the American Bar Association (ABA), and Bucknell University Alumni Association of Philadelphia. - See more at: http://www.eisneramper.com/about-us/professional-directory/dana-trexler-smith.aspx#sthash.rFozeJoE.dpuf

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.

Joseph Dennis is the regional General Counsel for Arup Americas where he serves as an officer to that Board and is a member of the America’s Risk Management Executive. Joseph is also a member of the Arup Group Ethics Executive and the regional ethics champion in the Americas. He started in 2006 at the New York office coming from Syska Hennessy Group where he served as their General Counsel with similar roles and responsibilities.  

Over the years Joseph and the Americas legal team, under his direction help manage Arup Americas professional liability and casualty insurance program, lead the dispute resolution in resolving large and complex claims, negotiate client generated agreements, manage a comprehensive legal forms library, lead legally related corporate transactions and corporate structure, manage our intellectual property, help address difficult employment issues and provide a support and a referral base to our forensic business. Joseph is admitted to practice law in both federal and state court in New York, New Jersey, as well as admitted to practice before the US Supreme Court. He is the former chair of the ACEC Legal Counsel Forum, and former gratis general counsel to the Council on Tall Buildings and Urban Habitats, author of various industry related articles, the labor relations chapter 2014 book titled Mega Projects and regularly speaks at industry events including at the ABA Construction Practice Forum. He is also he is an avid cyclist and skier who does his best to keep up with his two teenage children.  

Ian has over 25 years of experience spanning all areas of intellectual property practice. He is currently the IP Counsel for Nortek, Inc. a $2.8 billion global, diversified industrial company with a broad array of offerings which includes ventilation products such as range hoods and bathroom fans, security and audio/video solutions, heating and cooling products, air management systems, and ergonomic and productivity solutions. As the IP counsel with Nortek, Ian is responsible for all IP matters, for each of the business units including patents, trademarks, trade secrets and copyrights and all transactional matters. Ian is responsible for all IP litigation and has managed six suits in his first year with Nortek. Bringing three to a successful resolution for his clients. These cases include Federal District Court and ITC actions. In addition to managing all IP matters, Ian worked closely with the engineering teams to develop IP processes and strategies for the various product development projects within Nortek. Prior to Ian's work at Nortek he was Counsel for IBM. He was one of the core members of the patent licensing and sales legal team responsible for generating IP income for IBM. In support of IBM's annual attainment of over $1B in IP income, this team focuses on the development and deployment of innovative patent monetization strategies, including managing creation and presentation of infringement and sales collateral. Prior to moving to IBM, Ian was the Intellectual Property Counsel for UTC’s Research Center. Ian’s UTC responsibilities included the oversight of the IP law department for UTC’s Research and Development Center. While at UTC, Ian was instrumental in developing a process for the identification and protection of UTC’s cutting edge technology Prior to his work with UTC Ian was an Assistant General Counsel with Honeywell where he was responsible for all Intellectual Property issues including Patent, Trademark, Copyright, Licensing, Transactional Matters, Advertising, Government Contracts and other legal services.

Christopher O'NeilI is Associate General Counsel -- Intellectual Property Law at IBM Corporation, based in Armonk, New York. In over 25 years at IBM, Mr. O'Neill has held a variety of positions, both in IBM's product businesses and in its litigation group. In his current role, Mr. O'Neill has responsibility for a variety of matters, including IP indemnity claims, open source issues, and data rights issues. He graduated from New York University School of Law in 1987 and is a member of the New York bar.

A seasoned forensic accountant, David Daly, a PwC Partner in New York, brings over 22 years of public and 4 years of private accounting experience to his clients. David is a subject matter specialist in the PwC Licensing Management and Contract Compliance practice. Having worked in both the music industry and as a forensic accountant, David has earned the respect of his clients and peers for his unique perspective and years of experience. David’s teams test to ensure that licensees have paid his clients the fees or royalties due to them and determines licensees’ compliance with other financial or specific provisions of the relevant agreements. In addition, he renders expert witness testimony on such topics as accounting and contract-related issues. Over the years, David has successfully completed engagements for clients in many diverse industries, including publishing, entertainment, advertising, international business, healthcare, real estate, insurance and construction. He contributes to the recorded music section of the PricewaterhouseCoopers Global Media and Entertainment Outlook, a leading international financial forecast that contains the latest trends and market data for the E&M industry, and he contributed to the Intellectual Property Damages in the Entertainment Industry chapter of the Litigation Services Handbook, The Role of the Financial Expert, Fourth Edition. His wealth of experience, forensic skills and passion help Dave drive value for his clients. David graduated from Villanova University with a bachelor of science in accountancy and he holds a New York State Certified Public Accountant license. He is certified in Financial Forensics (“CFF”) by the American Institute of Certified Public Accountants (“AICPA”) and earned the Certified Fraud Examiner (“CFE”) designation from the Association of Certified Fraud Examiners. David is a member of the AICPA and the New York State Society of Certified Public Accountants (“NYSSCPAs”), for which he sits on the NYSSCPAs Professional Ethics Committee. In his scant spare time, David serves as coach for several of his four children’s sports teams, volunteers in his local community and shares quality time with family and friends.

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

Anne Burkhart has been registered before the USPTO since 1992. Anne earned a Bachelor of Science in Physics from the University of Cincinnati and a Juris Doctorate from the John Marshall Law School. Anne provides IP portfolio management and evaluation services for Medela. A key aspect of Medela’s success is a relentless focus on research-based medical technology. Medela produces products and innovations related to Breastfeeding and Medical Vacuum Technology. Medela was founded in 1961 by Olle Larsson. Since then, the company manufactures its key products in Switzerland and the USA and has further subsidiaries in Europe, North America and Asia. The company employs over 1000 people worldwide.

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.

Paul Michel was appointed to the United States Court of Appeals for the Federal Circuit in March of 1988. On December 25, 2004, he assumed the duties of Chief Judge. After his elevation to Chief Judge, he served as one of 27 judges on the Judicial Conference of the United States, the governing body of the Judicial Branch. In 2005 he was appointed by Chief Justice Rehnquist to also serve on the Judicial Conference’s seven-judge Executive Committee. On May 31, 2010, Chief Judge Michel stepped down from the bench after serving more than 22 years on the court. In his years on the bench Judge Michel judged thousands of appeals and wrote over 800 opinions, approximately one-third of which were in patent cases. Prior to his appointment to the bench, Judge Michel served in the executive and legislative branches for 22 years. Following graduation from Williams College in 1963 and the University of Virginia Law School in 1966, Michel served as Assistant District Attorney and then Deputy District Attorney for Investigations under Arlen Specter in Philadelphia; as Assistant Special Watergate Prosecutor in 1974-1975; from 1975 to 1976 he was an assistant counsel for the Senate Select Committee on Intelligence; from 1976-1978, he served as Deputy Chief of the Justice Department’s Public Integrity Section, where he directed the “Koreagate” investigation; in 1978 he was appointed as an Associate Deputy Attorney General; in 1980 he served as Acting Deputy Attorney General; and from 1981 until 1988, he served on Senator Arlen Specter’s staff, including as Counsel and Chief of Staff. Judge Michel has been named one of the 50 Most Influential People in the world in intellectual property by Managing Intellectual Property magazine. In 2008 Chief Judge Michel was awarded the first annual Lifetime Achievement Award by the Richard Linn American Inn of Court; the Sedona Conference Lifetime Achievement Award; the first “Outstanding Achievement in the Area of Intellectual Property Law” award given by the Philadelphia Intellectual Property Law Association; and the annual Judicial Honoree Award by the Bar Association of the District of Columbia. In 2010 he received the U.S. Patent and Trademark Offices’ Federico Award for “outstanding contribution to the Patent and Trademark Systems of the United States of America”; the North American Lifetime Achievement Award by Managing Intellectual Property Magazine; the Distinguished Intellectual Property Professional Award from the Intellectual Property Owners Education Foundation; the career achievement award of the American Intellectual Property Law Association (AIPLA); and was one of five global figures inducted into Intellectual Asset Management magazine’s Intellectual Property Hall of Fame. He has been a Member of Honor of FICPI since 2001. Since retiring from the court, Judge Michel continues to share knowledge gained during his 22 years on the court by speaking out on issues related to the courts and the patent system. He also provides mediation, arbitration, and case evaluation services to private clients. Judge Michel is also serving as an advisor to a number of organizations. In June 2010, Judge Michel was elected a member of the Board of Directors of the Intellectual Property Owners (IPO) Education Foundation and became a Distinguished Scholar in Residence there. He also serves as Special Advisor to the Patent Reform Task Force and the Council of the Section on Intellectual Property of the American Bar Association, and is a member of the AIPLA Committee on Public Appointments. Most recently he was invited to join the Advisory Committee of the World Intellectual Property Organization’s Networked Innovation project and the Advisory Committee of the Manufacturing Initiative of the U.S. Council on Competitiveness.