management forum global ip...patent portfolios, patent process implementation and the assessment of...

Global IP Management Forum

June 3–5, 2018The Langham Huntington

Pasadena, CA

consero.com | #ConseroIPJune 3–5, 2018 | The Langham Huntington

Gwilym AttwellPrincipalFish & Richardson P.C.

Gwilym Attwell is a Principal in Fish & Richardson’s Delaware* office, managing the local presence of Fish’s highly regarded patent prosecution and counseling practice. Mr. Attwell’s practice is focused on U.S. and foreign patent prosecution, opinion work, due diligence studies, and client counseling in the fields of biotechnology, medical devices, and pharmaceuticals. He also assists clients in the strategic development and monetization of internal patent portfolios, patent process implementation and the assessment of third-party IP collaborations. In addition, Mr. Attwell works with clients on post-grant proceedings, including inter partes review and post-grant review petitions, and general post-grant patent strategy. He is a frequent lecturer on topics related to practice before the Patent Trial and Appeal Board.

Mr. Attwell has counseled clients ranging from start-ups and emerging companies to Fortune 500 corporations on biotech, chemical, pharmaceutical, and medical device patent applications. His technical experience includes vaccines, antibodies, genomics, polypeptides, small molecule inhibitors, gene therapy, diagnostics, and therapeutics. Mr. Attwell has been recognized by Intellectual Asset Management as “The World’s Leading Patent Practitioners” since 2012, and is described as “a life sciences whiz who is a ‘go to’ adviser on IP development and monetisation for prestigious innovators.” IAM also describes Mr. Attwell as “high skilled, yet very approachable–a great combination–and will answer a question or deal with a problem at a moment’s notice.”

Forum Chair:


MODERATOR:Michael DegnVice President, SalesMultiLing

Michael Degn has more than 15 years of experience in the sales industry. Prior to joining the MultiLing team, Michael worked as vice president of Cero Systems and as director of channel sales for Certiport. He is known for his ability to build relationships with partners and clients, and for successfully managing sales teams. He has considerable knowledge and experience in contract preparation and review and is particularly valued at MultiLing for his motivational management style.

Challenges & Opportunities: The Evolving Role Of The Chief IP Counsel


Sophia DesaiSenior Corporate CounselPanda Restaurant Group, Inc.

Geoff BakerAssistant General Counsel, Intellectual PropertySears Holdings

MODERATOR:Michael DegnVice President, SalesMultiLing


Cameron SmithSenior Director, CounselHerbalife International of America

Scott BrownChief Intellectual Property CounselFrank’s International



o How has the role of Chief IP Counsel changed over the past few years? What new competencies are required to be successful in the role?

o How have you aligned your global IP strategy with the company’s business goals? How have you been able to achieve buy in from your management team to make IP a critical consideration in setting business strategy?

o What recent changes have you observed with respect to protection of IP in China and India? What new emerging markets are you considering for IP protection?

o How have you refocused your global strategy amid the introduction of the unitary patent system? What can you do to maintain the best scope of protection in Europe?


MODERATOR:Danielle WilliamsPartnerWinston & Strawn LLP

Danielle Williams is a litigation partner at Winston & Strawn. She is an experienced trial and arbitration attorney, having handled a wide range of business disputes, including patent infringement, securities fraud, and complex contract matters in a number of federal and state courts. Danielle has extensive experience in handling high-risk, multi-patent, multi-product, and multi-defendant cases in a broad range of technologies, in federal courts across the country. She regularly advises clients regarding pre-suit issues, including remedies, indemnity obligations and declaratory judgment options. Danielle is part of the firm’s Disruptive Technologies Task Force. She also is a member of the firm’s Women’s Leadership Initiative and chairs WLI for the Charlotte office.

A frequent speaker and author, Danielle has written articles on patent litigation, patent damages, electronic discovery and time management, and has presented CLEs on patent litigation, patent damages, and electronic discovery.

Danielle has been recognized by Best Lawyers in America for Commercial Litigation, Patent Litigation, and Intellectual Property Litigation since 2016.

New Perspectives On Handling Trolls & NPEs


Cory McAnellyIntellectual Property CounselPrincipal Financial Group

Richard HakeChief Patent CounselMetagenics, Inc.

MODERATOR:Danielle WilliamsPartnerWinston & Strawn LLP


Owais SiddiquiExecutive Patent Litigation DirectorHTC America, Inc.

Paul MaltseffChief Intellectual Property CounselDatalogic USA Inc.



o What are the current trends in non-practicing entity (NPE) litigation?

o How can you strategically build your patent portfolio to shield against NPEs?

o What alternatives do you consider before pursuing NPE litigation? Collaborative defense? Patent infringement insurance?

o At what point does settlement become your best option?


Christine CochranSenior Intellectual Property CounselAstellas US

Managing Complexity: Ethics For The IP Counsel

MODERATOR:Carlo CotroneSenior Intellectual Property CounselBaker Hughes, a GE company

Paul KovelmanChief Intellectual Property CounselMedtronic Diabetes

Crystal LaceySenior Intellectual Property CounselSUEZ Water Technologies & Solutions


Managing Complexity: Ethics For The IP Counsel

o How are you managing the increased regulatory and ethics complexities in global markets?

o What are the components of an effective compliance management system?

o How do you maintain an ethical culture in a merger/acquisition environment?

o How are you leveraging ethics training to mitigate IP risk? How do you keep middle management engaged?


MODERATOR:Rod WittenbergDirector of Sales, North AmericaLexisNexis® IP

Rod Wittenberg is the Director of Patent Workflow Solutions for Reed Tech, a division of LexisNexis based in Horsham, Pennsylvania.

Mr. Wittenberg is a highly accomplished organizational leader with a 25 year record of driving outstanding results for his clients. He is a technology evangelist, and has worked in the Reed Elsevier organization for more than 20 years, and has served in several organizational capacities with positions in sales, marketing, product development, and strategy. In his current role, Rod has been a major contributor in developing market and sales strategy, alliance models, product development and managing other key business activities. He is experienced in defining sales strategy and executing action plans to achieve strong and sustainable revenue and profit growth in entrepreneurial and mature business organizations.

Mr. Wittenberg holds a Juris Doctorate, and an undergraduate degree in Political Science and Sociology. He has practiced law in the state of Massachusetts and is a Trustee Emeritus of the Philadelphia Bar Foundation.

He resides in the Philadelphia area with his wife Bonnie, and children Max and Ashton. When he's not in the office you can find Rod coaching his sons' athletic teams, cooking up a new creative recipe in the kitchen or on the golf course trying to improve his game.

Leveraging Big Data For A Winning IP Strategy


Scott BrownChief Intellectual Property CounselFrank’s International

Dan BestorDirector, Patent OperationsMotorola Solutions, Inc.

Seth RandleChief Intellectual Property CounselHarland Clarke Holdings Corp.


Michael CamposDirector, Intellectual Property and Research ScientistNetraDyne

Varun BhardwajChief Innovation Officer and General CounseliHear Medical

MODERATOR:Rod WittenbergDirector of Sales, North AmericaLexisNexis® IP



o What are the current trends in non-practicing entity (NPE) litigation?

o How can you strategically build your patent portfolio to shield against NPEs?

o What alternatives do you consider before pursuing NPE litigation? Collaborative defense? Patent infringement insurance?

o At what point does settlement become your best option?


KnowledgeBridge™: Case Study: A New Approach To Patent Portfolio Management

Carey Jordan is a Partner at Vorys and a patent veteran with two decades of experience handling patent prosecution matters, patent challenges, litigation and intellectual property counseling. Carey has dealt with the gamut of intellectual property issues facing large companies. Her forte is managing global patent portfolios efficiently and cost-effectively in alignment with clients’ business goals. Carey leads our patent team, which includes a technically diverse team of attorneys and agents with degrees in chemistry, electrical engineering, mechanical engineering, biosciences, etc.

Donna Haynes is Of Counsel at Vorys and has represented major, global organizations in various intellectual property capacities, including patent and trademark prosecution, litigation, and intellectual property counseling. Her particular technological focus is on the chemical sciences, material sciences, nanomaterials, machinery, and processes for upstream, midstream, and downstream energy sectors.

MODERATORS:

Carey JordanPartnerVorys Sater Seymour and Pease LLP

Donna Haynes

Of CounselVorys Sater Seymour and Pease LLP


KnowledgeBridge™: Case Study: A New Approach To Patent Portfolio Management

In-house counsel face more pressures than ever to do more with less. We’ll share a case study that exemplifies a new approach and provide tactics you can incorporate into your patent decisions, including filing, pruning and global prosecution. Controlling costs and building valuable patent portfolios can be done by using data to align your patenting decisions with your business strategy. This solution creates more cost-effectively procured, robust patents that can be leveraged for the benefit of the company. In this session, we discuss how to objectively align your patenting decisions with your business goals to achieve cost-savings while building higher quality portfolios.

MODERATORS:

Carey JordanPartnerVorys Sater Seymour and Pease LLP

Donna Haynes

Of CounselVorys Sater Seymour and Pease LLP


KnowledgeBridge™: A View From The Trenches Of The PTAB: Strategies For Patent Owners (And Patent Applicants)

MODERATOR:Gwilym AttwellPrincipalFish & Richardson P.C.




KnowledgeBridge™: A View From The Trenches Of The PTAB: Strategies For Patent Owners (And Patent Applicants)

Since 2012, over 7,950 Inter Partes Review (IPR) and Post-Grant Review (PGR) petitions have been filed to challenge the validity of patents. In this interactive session, Fish’s Principal Gwilym Attwell will discuss high level strategies important to Patent Owners defending their patents. He will discuss strategies for avoiding institution, considerations when facing institution, and settlements. Gwilym will also provide practical lessons for drafting patent applications that maximize the patent owner’s chance of success when facing a challenge at the PTAB.



Kerri HochgesangGroup Intellectual Property CounselAndritz USA, Inc.

The Growing Threat Of Trade Secret Theft

Rachel LovejoySenior CounselSpace Exploration Technologies Corp.

Pearl HsiehSenior Counsel, Intellectual PropertyCompass Minerals

Clarke WixonGeneral Intellectual Property Counsel, AmericasMettler-Toledo


The Growing Threat Of Trade Secret Theft

o How have you reevaluated your trade secret strategy after the passing of the Defend Trade Secrets Act?

o How are you making sure your current employees understand the risks associated with trade secrets leaks?

o How have you responded to leaks resulting from lack of education on former employees?

o How are you communicating the company’s policies and procedures regarding handling, storage, and disposal of your company’s secrets?

o How can you make sure your company’s trade secrets are not at risk of cyber threats? What third-party tools have you used to help mitigate these risks?


MODERATOR:Ken SeddonChief Executive OfferLOT Network, Inc.

Ken Seddon joined LOT in April of 2015, bringing over 20 years of experience managing all areas of intellectual property. Previously, Ken was with some of the largest patent holders the world including Apple, Micron, Motorola, Intel and most recently as the Vice President of IP at ARM.

Ken drafted over 300 patent applications while at Motorola and Intel, and managed all US patent prosecution at Intel. As Chief IP Counsel of Numonyx which was later acquired by Micron, Ken led strategic IP Licensing for two years before moving to Apple. At Apple, Ken developed the IP strategy for future products and acquired and defended patents from PAE assertions. Ken then went on to be the VP of IP at ARM before being selected by the Board of Directors to be the first CEO of LOT Network.

Ken has a BS in Computer Engineering from the Georgia Institute of Technology, a master’s degree in Solid State Device Physics and a Juris Doctorate from Arizona State University. Ken is a regular speaker at conferences for professional organizations and has chaired several committees for both IPO and AIPLA.

Protecting Innovation Through Strong Peer Networks: How Are General Counsel Dealing With The Growing Patent Troll Issue?


MODERATOR:Ken SeddonChief Executive OfferLOT Network, Inc.

Yuichiro KawamuraSenior Vice PresidentHonda Patents & Technologies, North America


Eric SchulmanPrincipalFish & Richardson P.C.



Companies spend over $26B each year litigating and settling with Patent Assertion Entities (PAEs). This is money that companies are not spending on innovation, R+D, improved manufacturing, etc. Given the convergence of technology, this problem is getting worse over time particularly in the high-tech, automotive, Cloud/IT, and banking industries.

o How are Daimler, SAP, Google, Amazon, Logitech, Netflix, Dropbox, Fidelity, Lenovo, Ford, JP Morgan Chase, Red Hat, and many others immunizing themselves from over 1,128,000+ patent assets?

o Where are PAEs acquiring their assets and what type of assets are they buying?

o What are the trends in PAE litigation in the U.S. and Europe? How will the UPC likely affect PAEs?

fr.com | 38

C. Eric Schulman• Eric created the idea for the LOT Network in 2013 and

founded the LOT Network in 2014. Eric currently serves on the advisory board of the LOT Network. • Eric’s publications describing the idea for the LOT Network and its

evolution can be found on SSRN see e.g., “A Proposal for a License On Transfer (LOT) Agreement” Feb. 2013 https://ssrn.com/abstract=2224355

• Named IAM Strategy 300 – The World’s Leading IP Strategists (2016)

• Formerly Google patents legal director

• Practice is primarily focused on development and management of patent portfolios, IP counseling, patent strategy and analysis.

• Experienced in IP licensing and acquisition, patent post-grant proceedings, patent and trademark litigation, standards bodies, copyright, open source, M&A, commercial transactions, collaborative structures, broad IP strategy, legal management, and trademark portfolio development.

PrincipalSilicon Valley

(650) [email protected]

J.D., Boston College Law School

M.S., Boston University; Physics

B.S., Massachusetts Institute of Technology; Physics

https://ssrn.com/abstract=2224355

mailto:[email protected]


MODERATOR:Damian DurrantVice President, Enterprise Solutions and Chief of GrowthIPfolio

Damian is responsible for all growth-related activities at IPfolio. He joined the company in 2015 after fifteen years in special projects, litigation support and e-discovery in law firms and on the professional services side, overseeing complex services delivery for major corporate clients. He brings a varied experience from applying technology and project management to varied aspects of law practice, to marketing and business development.

Damian holds a BSc (Soc Sci) from Southampton University and a JD from University of California Hastings College of the Law.

Balancing IP Goals With Business Priorities


Walt GrollitschGeneral Counsel and Head of Intellectual PropertyIntervale Capital

Douglas ColemanDeputy General CounselSpirit AeroSystems

Elizabeth LewisGeneral CounselTurtle Wax, Inc.


Doug HudsonAssistant General CounselEtsy, Inc.

David Dutcher Assistant General Counsel, Intellectual PropertyWestern Digital

Shirlene LoveSenior Intellectual Property CounselJAKKS Pacific, Inc.

MODERATOR:Damian DurrantVice President, Enterprise Solutions and Chief of GrowthIPfolio



o How do you decide what and where to file?

o What factors do you consider in the debate of geography versus technology?

o How can you make the business case for an increase in IP spend and investments?

o What metrics and tools have been most useful in managing IP legal spend?


MODERATOR:Michael ChernoffDirector, Intellectual Property Strategy & Portfolio ManagementMurgitroyd

Michael Chernoff has over 23 years of experience in the IP field and serves as Director of IP Strategy and Portfolio Management at Murgitroyd. In this role he leads Murgitroyd’s in-house Patent Search and Analytics team and is vital in helping to expand Murgitroyd’s U.S. Managed Services unit. He has acted as an outsourced Chief Intellectual Property Officer for some of the most innovative companies in the U.S., liaising directly with board members, and working with internal teams and outside council to execute strategy. Previously Michael held the position of Chief Intellectual Property Officer of MDB Capital Group, LLC, and prior to that, Director of Legal Services, Patent Operations at Accenture. He has also served as an examiner with the U.S. Patent and Trademark Office. Michael has a J.D. from George Mason University and a B.S. in Electrical Engineering from Carnegie Mellon University. He is ranked as one of the World’s Leading IP Strategists in the Intellectual Asset Magazine’s IAM Strategy 300. Michael lives in the Washington, D.C. area.

Recruiting, Retaining & Aligning Top IP Talent For Business Success


Tanya RotheGeneral CounselD-Wave Systems

Debra HughesAssistant General Counsel, BrandBlueCross BlueShield Association


MODERATOR:Michael ChernoffDirector, Intellectual Property Strategy & Portfolio ManagementMurgitroyd

Shaun MontanaHead of Intellectual Property, AmericaOSRAM SYLVANIA Inc.



o Where do you look to recruit top IP talent? Do you recruit directly from law schools, law firms, or competitors?

o What are some specific examples of talent management practices (e.g., policies, processes, and programs) that have helped you foster high levels of performance and retention across your IP department?

o How are you aligning your IP department with R&D to fuel the company’s innovations? What incentive programs have you instituted?

o How do you staff and handle (internally or with outside counsel) IP matters at your company?

o How are you retaining and incentivizing your high performers? What works and what does not?


Monetizing IP: Leveraging The Value Of Your Portfolio





Sharon LaiIP Counsel, AmericasVolvo


Jake WangHead of LegalQuanta Storage

Kenyon SchuettGlobal General Counsel and Chief Intellectual Property CounselCotton Incorporated




o How have you worked with your management team to ensure that your IP strategy complements the overall business strategy?

o What priorities do you consider when evaluating patent sales and enforcement opportunities?

o How has increased regulatory scrutiny affected your IP monetization efforts, and where do you see things heading?

o Have you considered creating a centralized LLC for your IP department? If so, what were the main factors contributing to the decision?


Actionable Insights: Taking A Deeper Dive Into Your IP Litigation Strategy

Mike TuckerVice President, Legal & Risk Management and General CounselStego Industries

Martha KimesVice President, Deputy General CounselGoDaddy

Geoff BakerAssistant General Counsel, Intellectual PropertySears Holdings

Cameron SmithSenior Director, CounselHerbalife International of America


Actionable Insights: Taking A Deeper Dive Into Your IP Litigation Strategy

o What is your organization’s risk profile and how does this impact your IP litigation strategy? How do you protect against being a repeat litigation target?

o What best practices can you share with your patent prosecution team to ensure the most defensible patents?

o What factors (success probability, cost, reputation, etc.) do you consider when coming up with a settlement strategy?

o How have you worked with outside counsel to ensure efficiency and accountability throughout the litigation process?

o Does your litigation strategy allow room for an offensive approach? How do you shift your focus from being a litigation target to proactively protecting your assets?

management forum global ip...patent portfolios, patent process implementation and the assessment of...

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