Women's IP Strategy Summit: 'Patent Law & Strategy' - Silicon Valley

SHARMINI GREEN has 23 years of experience as a patent attorney specializing in computer software, the past 17.5 years as an in-house attorney with Intel. She holds a bachelor’s degree in Mechanical Engineering from MIT and received her J.D. from Santa Clara University. Sharmini is currently one of the Deputy Directors of Patents in the Intel Patent Group. In this role, she defines and executes patent filing strategies for Intel’s new and cutting edge technologies such as Internet of Things, autonomous driving, drones, augmented reality and artificial intelligence. She also oversees various aspects of Intel’s global patent portfolio management including cost management and law firm management. Sharmini is an active member of Intel’s Diversity & Inclusion team – her focus has been mainly directed to Intel’s efforts to help their law firms hire, retain and promote women and underrepresented minorities.

Prior to law school, Sharmini worked at Oracle Corporation for 6.5 years in various engineering and engineering management roles, focused primarily on Oracle’s PC products and networking tools. After law school and prior to joining Intel, Sharmini worked at a number of Silicon Valley and Southern California law firms, handling patent prosecution, patent litigation as well as intellectual property related contract negotiations and drafting.

Mimi-Diemmy Dao is an attorney who currently works as the Managing Director of Intellectual Property at Applied Materials. Prior to her work at Applied Materials, Mimi was the Senior Associate at Blakely Sokoloff Taylor & Zarfman for 7 years. She got her Bachelor's Degree in Chemistry/Biochemistry from San Hose University and later on attended Santa Clara University School of Law. 

Mackenzie Martin is based in the Dallas office of Baker & McKenzie and previously worked for the Taipei, Hong Kong, and Shanghai offices. Ms. Martin's primary areas of practice are patent litigation, patent prosecution, intellectual property portfolio advising, technology agreements, and China-related intellectual property matters.

Charlotte Lewis Jones is a partner, advocate and legal athlete with over 10 years of cross-border experience in compliance, commercial, corporate, IP and risk mitigation matters. Charlotte has advised global business, finance and technical teams on strategies to build, market and launch products, expand operations into new countries, protect and monetize competitive assets, mitigate business and litigation risk, implement new business models and build complex corporate structures.

Charlotte is currently Associate General Counsel, Building 8 at Facebook, where she is the #2 lawyer, supporting the business from ideation to launch of hardware products. Before her current role, she served as Senior Director, Lead Counsel, Global Strategic Partnerships at Flex, located in San Jose, CA. In this role, Charlotte advised senior executives on diverse matters such as foreign direct investment, global regulatory compliance, antitrust risk, critical dispute, litigation and regulatory risk, deal structures and restructurings, labor force management, corporate governance, global trademark strategy, commercial agreements and IP strategies, and the reconciliation of competing legal, revenue and branding goals. Charlotte began her career as a corporate attorney at Skadden, Arps, Slate Meagher & Flom in New York, NY. She received her Bachelor of Arts in Economics from Yale University and her Juris Doctor from Columbia University School of Law.

Renee Dubord Borwn is a seasoned attorney and team leader with both in-house and law firm partner experience, specializing in domestic and foreign IP litigation, building worldwide patent portfolios, licensing, and commercial transactions. Registered patent attorney skilled in competitive patent analysis and strategic patent acquisitions. Extensive IP litigation expertise including inter partes review proceedings and trials. Practice covers a wide range of technologies including semiconductors, hardware, telecommunications, cellular and wireless technologies, software including OSS, and FRAND. 

Clients count on Amy to move their business forward. Whether litigating a complex patent suit, or advising on a multi-faceted IP strategy, Amy incorporates an in-depth understanding of each client’s business, employees and corporate strategy into her solutions.

For her litigation practice, Amy’s ability to distill the most complicated technology across an array of fields, including telecommunications, semiconductor manufacturing, renewable energy, cloud computing, and big data, into relatable, every day concepts that has made her successful in persuading judges and juries alike. She has lead trial teams, litigated, and tried cases in state court in California, numerous District Courts, the International Trade Commission, and has briefed appeals before the 9th Circuit, the Federal Circuit, the Supreme Court of California, and the United States Supreme Court. Whether litigating patent, trade secret, or IP contract disputes, Amy strives to put herself in her client’s shoes to ensure personalized results tailored to each client’s business objectives.

Amy also provides comprehensive IP counseling on issues including trade secrets protection, employee departure investigations, freedom to operate analysis, licensing strategies, data privacy protection, and regulatory compliance. She has also conducted comprehensive patent portfolio reviews and assisted with IP corporate transactions.

In addition to her IP work, Amy devotes significant time to her pro bono work. For more than a decade, she has assisted domestic violence victims, as well as led Orrick’s Bay Area summer program that enables law clerks to be certified to argue in Family Court to obtain Temporary Restraining Orders for domestic violence clients.

Maya’s practice focuses on complex commercial litigation, with a focus on patent, trade secret and other intellectual property litigation.

Maya advises companies and organizations on how to protect their valuable intellectual property rights. She represents plaintiffs and defendants in intellectual property disputes and has significant experience planning, coordinating and executing the defense of complex litigation involving multiple defendants and jurisdictions. When allegations of infringement arise, or when clients believe that their patent, trade secret or other IP rights have been infringed, Maya collaborates with clients to analyze the situation, assess the extent of potential infringement or damages, and to develop and implement an effective response. In addition to litigation, and when appropriate, Maya investigates and recommends alternative approaches to dispute resolution, including settlements and negotiation of licenses. 

Maya represents clients from numerous industries, with an emphasis on the technology sector, including 3D printing. She has litigated cases involving hearing aid technology, cable television technology, electronic payment technology and other technologies. Maya also has achieved client victories in product liability, class action and slavery reparations litigation, and regularly represents parents on a pro bono basis in international child abduction cases.

In 2001, she served as a Judicial Clerk for the Honorable Roger L. Gregory of the U.S. Court of Appeals for the Fourth Circuit. Over the course of her legal career, Maya has received numerous honors from various organizations and publications, including the American Inns of Court, the Virginia State Bar, Chambers USA, Benchmark Litigation, Virginia Business Magazine, Virginia Super Lawyers, The Best Lawyers in America (IP), and Inside Business.

Maya is the former head of the firm’s Intellectual Property Practice Group, sits on the firm’s Associates Committee, and is Co-Chair of the Richmond office’s Pro Bono Committee.

Relevant Experience

• Lead counsel for plaintiff in trade secret misappropriation suit. The matter is pending.
• Lead counsel for defendant in trade secret misappropriation suit. The matter is pending.
• Trial counsel for defendant in trade secret misappropriation suit. A federal jury returned a favorable verdict.
• Trial counsel for plaintiff in antitrust suit. A federal jury found that the defendant committed antitrust violations and awarded significant damages.
• Lead counsel for defendant in litigation involving QR codes. The case settled favorably.
• Lead counsel for defendant in ANDA patent litigation. The case settled favorably.

Katherine is the global head of cleverbridge's legal team. She advises cleverbridge's executives and business leaders on their most important strategic initiatives and business relationships. Prior to cleverbridge, Katherine was a partner and experienced trial lawyer at Bartlit Beck. 

Katherine is an elected member of the American Law Institute and a Fellow of the American Bar Association. Katherine was named a Best Lawyers' Women of Influence and one of Crain's Most Influential Women Lawyers in Chicago in 2017, one of the Women's Bar Association of Illinois's Top Women Lawyers in Leadership in 2016, and one of the Law Bulletin’s “40 Under 40” Illinois attorneys in 2014. 

Katherine is a past-President of the Coalition for Women’s Initiatives in Law and a founding member of the US Soccer Development Council. She is also a former McKinsey consultant and, after law school, clerked for the Honorable Diane P. Wood on the U.S. Court of Appeals for the Seventh Circuit.

Vanessa Bailey is Senior Intellectual Property Policy Counsel at Intel Corporation where she counsels on all aspects of patent, copyright and trade secret policy, and legislative reform. She has broad intellectual property experience in both law firms as well as in-house having worked at Jones Day and Dorsey & Whitney, and over 10 years at Nokia and Nokia Siemens Networks where she developed litigation and licensing strategy including global and domestic issues on FRAND and SEPs, and managed various multi-jurisdictional patent litigation cases in Japan, China, Germany, United States, France, England, Belgium, and the Netherlands. Vanessa received her undergraduate degree in Management Information Systems and her J.D. from the University of Texas at Austin. She has a LL.M. from the University of London, Queen Mary and Westfield College in Commercial Law with a specialization in International Patent Law. In addition to U.S. courts, she is also admitted to practice before the courts of England and Wales as a U.K. Solicitor.

Victoria Q. Smith is a counsel with the firm's Patent Litigation practice. She is experienced in litigating patent and other intellectual property rights in the telecommunications, biotech, electronics and software fields, including technology related to cellular devices, data encryption and compression, pharmaceuticals, email, mapping and enterprise software, and graphics software and chips. Victoria has experience in various aspects of patent infringement cases, including e-discovery, invalidity and non-infringement defenses, fact and expert witness depositions, Markman, summary judgment and trial. Victoria has practiced before the federal district courts, including the Northern and Southern Districts of California, the Eastern and Western Districts of Texas, and the District of Delaware, as well as the International Trade Commission. She also has experience with appeals to the Federal Circuit, and ex parte reexaminations and inter partes reviews for the U.S. Patent Office.

Ewa Davison, Ph.D., focuses her practice on litigating patent matters and licensing disputes for companies in the life sciences, biotechnology, pharmaceutical and chemistry arenas. Ewa’s experience includes resolving disputes in the federal district courts and the Court of Appeals for the Federal Circuit, in addition to her inter partes review practice.

Ewa was accepted into the Federal Circuit Bar Association’s 2018–2019 Global Fellows Series, and will also be joining the Center for the Protection of Intellectual Property’s Thomas Edison Innovation Fellowship in 2019. She has also been repeatedly selected as a Washington “Rising Star” in the area of Intellectual Property Litigation.

Prior to joining Fenwick & West, Ewa clerked for the Honorable Richard C. Tallman of the Ninth Circuit Court of Appeals. She was previously an associate with Darby & Darby P.C. in Seattle.

Gaby Higgins is an IP trial lawyer in Ropes & Gray’s globally recognized IP litigation practice, Vice Chair of the PTAB Bar Association’s Diversity Committee and Subcommittee Chair of the AIPLA USPTO Inter Partes Proceedings Committee responsible for programming. As a trial lawyer, she has extensive experience representing major high-tech companies, including Samsung, Google, VIZIO, and HP, in district court, ITC and Patent Trial and Appeal Board proceedings.

Gaby has been counsel of record in over 100 proceedings at the PTAB. She has a perfect record before the Board, invalidating all challenged claims that have been addressed at Final Written Decision, and in all of the decisions that have been appealed to the Federal Circuit.

Gaby has been recognized as one of The Recorder’s “50 Women Leaders in Tech Law” and named to Silicon Valley Business Journal’s “Women of Influence” list. This year, Gaby was also named one of California’s “Top Intellectual Property Lawyers” by the Daily Journal. She holds leadership roles within Ropes & Gray’s Women’s Forum Steering Committee and is also the Associate Development Partner for the firm’s Silicon Valley office. Her community efforts fostering young women’s development include coaching basketball at a local middle school.

Kari Barnes has over 15 years of experience in complex intellectual property matters. She advises clients on a broad range of Intellectual Property prosecution and associated transactional endeavors. She also assists in the defense and enforcement of Intellectual Property assets to protect market share and monetize IP portfolios. Ms. Barnes is proficient in domestic and international patent prosecution for a wide variety of technologies, including electronic devices, computer hardware and software, aerospace, and medical devices.
Ms. Barnes currently advises a number of technology companies around the Alice decision—a Supreme Court case ruling a software method unpatentable as an abstract idea. Her experience in technology patent prosecution includes identifying users on a network, propensity assessments based on user activities, data transfer through storage area networks, devices and methods for secure remote access, data encryption and transfer, authentication methods and algorithms, statistical assessments for medical analysis based on historical data sets, devices and signal processing for long range communication systems, electronic hardware accessories for mobile and computer devices, user interface hardware and software for controlling mobile devices, and devices and methods for augmented or virtual reality systems including distortion correction, personalization detection and calibration.
Ms. Barnes has extensive experience assisting aerospace, medical device, and other companies and the unique needs of these companies as they work with the government under government contracts. The intellectual property requirements and obligations change under many of the regulations defining government contract terms, and Ms. Barnes has extensive experience guiding and counseling clients through these complex regulations. She has participated on a number of government sponsored programs supporting recipients of the Small Business Innovative Research grants, and has lectured groups, and counseled clients on how to maintain and maximize intellectual property rights in view of these regulations. Ms. Barnes has counseled aerospace companies including light weight space inflatables, self-navigating aircraft, drones, and long range communication systems under the SBIR grants of the DoD, NASA, MDA, and JPL, and medical device companies including in field diagnostic and medical devices under the SBIR grants of the army, DoD, and NIH.
Ms. Barnes currently advises a large international medical device company on its intellectual property strategy, including creating and maintaining a foreign and domestic patent portfolio; offensive and defensive opinions regarding infringement, freedom to operate, and patentability; as well as assessing the intellectual property assets of potential acquisitions. She has prosecuted a large number of patents protecting stents, catheters, catheter placement systems, needle safety devices, ultrasound devices, urological slings, and other implants and delivery systems. She also advises a number of mid-sized and smaller medical device companies in their intellectual property portfolio strategy and implementation.
She counsels large companies on a cost effective strategy to maintain protection on a large market share, while balancing the cost of a large portfolio. She counsels small businesses and start-ups on intellectual property strategy and portfolio planning to protect an emerging market share or to retain and maximize intellectual property rights in view of joint venture research and development, and government grants.
Prior to joining Buchalter, Ms. Barnes was an attorney at Rutan & Tucker, LLP and Morrison Foerster, litigating and prosecuting patents for large companies involving toys, storage area networks, medical devices, DVD technologies, cell phones, and computer hardware interfaces, including touch screens. Prior to law school, Ms. Barnes instructed at the Colorado School of Mines’ Physics Department. As an adjunct professor, she taught undergraduate physics courses in mechanics and electromagnetism. She was also a researcher at the National Institute of Standards and Technology in the opto-electronics department.

Deanna Kwong is a Director in the Office of Operations, Legal, and Administrative Affairs (“OLAA”) at Hewlett Packard Enterprise.  She has almost twenty years of experience advising clients on and litigating intellectual property issues.  In 2019, The Recorder recognized Deanna as a Women Leader in Tech Law, as part of the California Leaders in Tech Law and Innovation Awards.  In 2022, the Silicon Valley Business Journal named Deanna a “Woman of Influence” in Silicon Valley.

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."

Carolyn Toto, a Pillsbury Intellectual Property partner, litigates in state and federal courts and provides strategic counseling to optimize the value of clients’ IP portfolios. Carolyn advises technology industry leaders on all aspects of IP litigation, prosecution and portfolio management. She has successfully resolved patent, trademark, trade secret and copyright infringement cases through jury trial, on appeal and by negotiated settlement. Carolyn has obtained protection for various technologies, including imaging systems and medical devices, in jurisdictions worldwide. Well versed in the legal issues involving social media, content distribution and advertising, Carolyn co-leads the firm’s Internet and Social Media team and manages the firm’s Social Media & Games Law Blog. REPRESENTATIVE EXPERIENCE Providing ongoing strategic patent prosecution and counseling for a global imaging technology company. Providing global trademark prosecution and counseling related to brand portfolios of major consumer products companies, including handling trademark oppositions before the Trademark Trial and Appeal Board. Represented the plaintiff in a successful patent infringement action involving a medical device used in pacemaker implantation that was tried to a jury and resulted in a finding of validity and infringement for the client.

 Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation group. She is an intellectual property litigator and registered patent attorney. Jo Dale advises clients on a wide range of intellectual property issues, including patents (ownership, infringement/non- infringement, validity/invalidity, patentability, and proceedings before the United States Patent and Trademark Office (USPTO)), trade secrets , trademarks, and copyrights. Her practice emphasizes intellectual property litigation, licensing, contract disputes, and issues related to proceedings before the USPTO in all fields but with a special emphasis on electronics, embedded systems and high performance computing, Wi-Fi enabled devices, energy management, microprocessors/ microcontrollers, memory devices, wireless communications devices and protocols, smartphones and smart TVs (along with applications), in- home networking for computing and entertainment, consumer electronics, semiconductor process and fabrication technology, packaging, power conversion, and software for numerous applications. Jo Dale has represented companies in litigation in numerous federal district courts and state courtsacross the country, the Federal Circuit Court of Appeals, and in Section 337 investigations in the United States International Trade Commission (ITC). 
Before joining Weintraub Tobin in 2014, Jo Dale spent many years as a partner in Big Law firms. Prior to becoming an attorney, Jo Dale was a tenured professor of Electrical and Computer Engineering at the University of Arizona and served as an expert witness in intellectual property litigation. Her research lab at the University of Arizona developed patented technology that was used to decode images from Mars in the Mars Pathfinder Mission, which was the first of a series of missions to Mars that included rovers. 
Before joining Weintraub Tobin in 2014, Jo Dale spent many years as a partner in Big Law firms. Prior to becoming an attorney, Jo Dale was a tenured professor of Electrical and Computer Engineering at the University of Arizona and served as an expert witness in intellectual property litigation. Her research lab at the University of Arizona developed patented technology that was used to decode images from Mars in the Mars Pathfinder Mission, which was the first of a series of missions to Mars that included rovers. 

Uma N. Everett is a director in Sterne Kessler’s Trial & Appellate Practice Group. She concentrates her practice in the area of patent litigation and has represented clients in patent cases in federal courts and before the United States International Trade Commission in the pharmaceutical and electronics industries.  She has extensive experience representing clients in the pharmaceutical industry in litigation arising under the Hatch-Waxman Act. 

Uma is experienced in the development of all aspects of case strategy and the efficient management of complicated electronic discovery issues.  She has served as trial counsel in multiple proceedings, and is experienced in all aspects of litigation from pre-suit investigation through trial and appeal.  In addition, she has handled appeals before the United States Court of Appeals for the Federal and Third Circuits.

While attending law school at Georgetown University Law Center, Uma served as the senior notes editor of The Georgetown Journal of Legal Ethics. Prior to attending law school, Uma worked at Price Waterhouse as management consultant. Uma received her B.A. in economics from the University of Virginia.

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.