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MIP US Patent Forum, Silicon Valley - Speakers

Analysing the PTAB for in-house counsel and their advisors





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Confirmed speakers included: 

Judge Turner


Judge Kevin Turner
Patent Trial and Appeal Board

Judge Kevin Turner has been a judge with the Patent Trial and Appeal Board, and its predecessor, since 2007.  He earned his law degree from George Mason University School of Law, his Ph.D. in physics from North Carolina State University, and his B.S. in physics from Rensselaer Polytechnic Institute.  Judge Turner worked previously as a patent examiner with the U.S. Patent and Trademark Office, as well as practicing with several law firms prior to his appointment at the PTAB.


Judge Goodson


Judge Timothy Goodson
Patent Trial and Appeal Board 

Judge Timothy Goodson studied Mechanical Engineering at North Carolina State University and attended law school at the University of North Carolina School of Law.  Before joining the Patent Trial and Appeal Board in 2014, Judge Goodson worked as a patent litigator and prosecutor at Knobbe, Martens, Olson & Bear LLP.


Kim Schmitt


managing counsel, litigation group
Intel

Kimberly Schmitt is Managing Counsel in the Litigation Group at Intel Corporation.  Kim has over 15 years of experience in patent litigation. As part of her litigation practice at Intel, Kim has been involved in over 30 petitions for Intel Partes review. Kim has litigated patent cases in California, Texas, Delaware, Massachusetts, and the International Trade Commission and has lead all aspects of litigation, including claim construction, depositions, summary judgment, trial, and appeal.  Kim is a registered member of the patent bar. Before joining Intel in 2012, Kim was a partner at Kirkland & Ellis LLP and a prior to that, an associate at Weil Gotshal and Manges LLP, both in the San Francisco Bay Area.


Brian Love


assistant professor of law and co-director of the high tech law institute
Santa Clara University

Brian Love is an Assistant Professor of Law at Santa Clara University School of Law, where he also serves as Co-Director of the school’s High Tech Law Institute.  His research focuses on patent law and policy, and he teaches courses in patent law, intellectual property law, and remedies. Prior to joining Santa Clara, Brian was a Lecturer and Teaching Fellow at Stanford Law School, where he ran the LLM Program in Law, Science & Technology. He also practiced law in Fish & Richardson’s litigation department and served as a law clerk to the Hon. Dorothy W. Nelson of the U.S. Court of Appeals for the Ninth Circuit and to the Hon. David C. Godbey of the U.S. District Court for the Northern District of Texas.

Bradley Riel


patent counsel
Nest Labs

Brad Riel is a patent counsel at Nest Labs, Inc., a Google/Alphabet company, where he manages patent prosecution, licensing, acquisition, litigation settlement, and other related activities for Nest's now-preeminent Internet-of-Things (IoT) patent portfolio, including integrating and coordinating the Nest IP program with broader Google/Alphabet initiatives.  Prior to joining Nest Labs, he was at Kilpatrick Townsend & Stockton, LLP where he performed patent prosecution and litigation support for a wide variety of companies.  Other positions held in his more than 12 years of IP-related experience include advising clients on portfolio development at Shusaku Yamamoto Patent Attorneys in Osaka, Japan, advising clients on portfolio development at Mewburn Ellis, LLP in London, England, and interning with former Chief Judge Randall Rader at the CAFC.

Andrew Filler


general counsel and director of licensing
3LP Advisors

Andrew Filler currently is General Counsel and Director of Licensing at 3LP Advisors which advises clients on strategy and M&A for technology and intellectual property and is based in San Mateo, CA and Boston, MA.   Mr. Filler has more than 20 years’ experience managing intellectual property and legal matters across an array of technology and medical companies, including creating the industry’s dominant patent portfolio for two scientific fields: microfluidics lab-on-a-chip technology, and nanotechnology.  Currently he also serves as an IP advisor at nanotechnology leader Nanosys, as a board advisor to Aira.io which is an innovative technological service company that is designed to help blind and low-vision users gain independence — serving in essence as a visual interpreter and navigator for users, and as a legal and business advisor to several other technology rich companies in the Silicon Valley.

Prior to his current posts, Filler served as General Counsel and Vice President of IP at Nanosys where he created and managed a portfolio of nanotechnology patents made up of more than 800 patents and applications. In this position, he also negotiated hundreds of licensing and collaborative agreements with companies including Samsung, LG, Intel, Medtronic, 3M, Sharp and SanDisk.

Before joining Nanosys, he served as chief patent counsel at Caliper Life Sciences, where he developed an equally important patent portfolio comprising over 1,000 patents for lab-on-a-chip technology — a field which allows medical and other procedures that normally require a laboratory (such as the analysis of body fluids and the synthesis of chemicals) to be conducted on a very miniaturized scale.

Filler, a graduate of the University of San Francisco School of Law magna cum laude, is also experienced in IP litigations, strategy and counselling for a number of semiconductor and technology companies, which he worked on as a lawyer at Weil, Gotshal & Manges’ Silicon Valley office. In recognition of his extensive experience and dedication to his field, Filler was named as one of the top two corporate IP attorneys in Silicon Valley by the San Jose/Silicon Valley Business Journal in 2011.


Tarek Fahmi


partner
Ascenda Law Group

Mr. Fahmi is among the most experienced Patent Office litigation practitioners in the country. He has acted as lead counsel in more than two hundred inter partes and covered business method patent reviews before the USPTO Patent Trial and Appeal Board on behalf of both petitioners and patent owners. In addition to this specialty, his practice spans more than two decades’ worth of patent portfolio development and technology licensing on behalf of companies throughout the world and includes representations before the U.S. Court of Appeals for the Federal Circuit and U.S. District Courts. Prior to his career in law, Mr. Fahmi was an Officer in the Canadian Navy. He is a graduate of the University of Saskatchewan, College of Engineering, and Western State University, College of Law, where he was the Editor in Chief of the Western State University Law Review.

Amy Simpson


chair - patent litigation practice
Perkins Coie 

Amy Simpson, chair of the firmwide Patent Litigation practice, specializes in intellectual property matters including patent litigation, AIA post-grant procedures, patent portfolio analysis and valuation. Amy has extensive experience involving a broad range of complex computer and electrical related technologies including computer networks, software, telecommunications and e-commerce. She has represented numerous Fortune 500 companies, international companies and emerging companies in a variety of federal jurisdictions. Amy is also lead counsel on more than a dozen Inter Partes Review proceedings currently pending before the PTAB.

Amy has authored numerous articles regarding recent trends in patent law and litigation, including post-grant proceedings. In addition, Amy has co-chaired patent monetization conferences and has been an invited guest speaker regarding post-grant proceedings and portfolio analysis and valuation.

Katherine Rice


senior counsel, Intellectual Property, Patent litigation
Gilead Sciences 

Katharine joined Gilead in February 2012. Her responsibilities include United States and
foreign contested matters involving Gilead’s Intellectual Property assets. Her particular focus has been the litigations and foreign contested matters involving Gilead’s HIV and HCV antiviral portfolios. Prior to joining Gilead, Katharine worked at Latham &
Watkins, LLP in Chicago where her practice involved various Intellectual Property litigations, with a focus in ANDA litigations, and Cooper & Dunham LLP where she was engaged in patent preparation and prosecution.

Katharine has a J.D. from Notre Dame University, Notre Dame, Indiana and a B.S. in Biology from Pepperdine University, Malibu, California.

Bradley Perkins


senior vice president
Fingi


John Cabeca


director of the Silicon Valley US Patent and Trademark Office
USPTO


Bryan Webster


senior attorney
Microsoft

Elizabeth Morris


director of intellectual property
KLA Tencor

Elizabeth Morris is Assistant General Counsel & Director of Intellectual Property Law at KLA-Tencor Corporation.  Her responsibilities include patent portfolio management, patent litigation oversight, patent strategy development, and competitive analysis for the company’s portfolio of approximately three thousand US and international patents.  Ms. Morris has extensive experience in patent prosecution in a wide range of technologies including wafer and reticle defect inspection, consumer electronic devices, software, electric vehicles, wind power, medical devices, and mobile device products.  Previously, she practiced patent prosecution, licensing, and litigation at Morgan Lewis & Bockius LLP.  Ms. Morris received her J.D. from Santa Clara University School of Law, where she served as a research assistant to Professor Chisum and served Editor-in-Chief for the Santa Clara Computer & High Technology Law Journal.  Ms. Morris was in Honors Engineering program at Purdue University, where she received her B.S. in Mechanical Engineering.


Sriranga Veeraraghaven


senior director, legal      
Tessera     

Sriranga Veeraraghavan is a Senior Director, Legal at Tessera.  He oversees Tessera's litigation matters and post-grant reviews as well as supporting Tessera's licensing and corporate development efforts. Before joining Tessera, Sriranga practiced law at Cooley LLP and Howrey LLP and worked as an engineer at Sun Microsystems and Cisco Systems.


Angela Johnson


IP litigation counsel
Hewlett Packard

As Intellectual Property Litigation Counsel at Hewlett Packard Enterprise ("HPE"), Angela Johnson manages IP litigation and advises internal clients on intellectual property risk management. She is also passionate about providing policy recommendations on patent reform.

Prior to joining the HPE IP litigation team, Angela developed an expertise in general litigation as a senior member of HP’s “OGC Inside” Litigation team. The OGC Inside team is uniquely tasked with handling litigation work primarily in-house. As a result, Angela handled all aspects of her litigation cases, from the development and implementation of litigation strategies, to taking and defending depositions, drafting dispositive motions, and arguing dispositive motions in court.

Angela leads HPE's Outside Counsel Diversity Subcommittee and she lead’s HPE's Bay Area Pro Bono Committee.  She is also an Advisory Board Member to OneJustice.

Angela earned her law degree from the University of Pennsylvania Law School. She earned her Bachelor of Arts and Master of Public Policy degrees from the University of Virginia.  


Reggie Hill


Partner
Jenner & Block

Louis Fogel


Partner
Jenner & Block

Leslie Robbins


Vice President, Intellectual Property
Coherus Biosciences

Pauline Farmer-Koppenol 


Associate General Counsel - Patents 
 Bio-Rad Laboratories

Laura Beth Miller


Shareholder 
 Brinks Gilson & Lione

Laura Beth Miller 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.

Robert Mallin


Shareholder 
Brinks Gilson & Lione

Robert Mallin, Patent Litigator, uses his experience as litigation strategist and first-chair trial attorney to maximize his clients’ returns in patent and trademark disputes. Having significant exposure to both traditional patent litigation in federal courts and in post-grant Inter Partes Review (IPR) proceedings at the United States Patent and Trademark Office, Robert counsels clients on where and how to most effectively litigate patent invalidity claims. Over his career, he has appeared in more than 75 cases in more than 20 different courts and other forums, including the ITC and PTAB. Alongside his successful litigation practice, Robert advises clients on licensing, patentability, and validity issues, as well as patent prosecution. Throughout all of his work, he places an emphasis on anticipating issues and helping clients to think forward for long-term strength and effectiveness.

Wayne Stacey


Partner
Cooley

Wayne Stacy is a partner at Cooley specializing in patent litigation and Patent Trial and Appeal Board (PTAB) proceedings. He is recognized as one of the top patent litigators in the US by Chambers, and is known for being “tried and tested in the hardest-fought suits” (Intellectual Asset Management). He has tried patent cases totaling over a half-billion dollars in value to verdict and has favorably resolved numerous other cases prior to trial.

In addition to litigating high-stakes disputes across federal courts, Wayne advises his clients on the strategic use of PTAB proceedings within the context of litigation. He co-created PTAB Digest (www.ptabdigest.com), a leading database which tracks and analyzes key PTAB decisions. He also co-developed a first-of-its-kind class for the University of Denver focused on PTAB proceedings, in particular the inter partes review process. He is also co-author of the local patent rules in Colorado.


Orion Armon


Partner
Cooley

Orion Armon is a partner at Cooley specializing in patent litigation and Patent Trial and Appeal Board (PTAB) proceedings, with particular emphasis on software and electronics technologies. He is named a leading IP litigator (SuperLawyers, Best Lawyers) and has played a lead role in five recent trials including an arbitration in which the patent holder formally stipulated to non-infringement during his presentation of the non-infringement case.

Orion advises his clients on the strategic use of PTAB proceedings within the context of litigation and co-created PTAB Digest (www.ptabdigest.com), a leading database which tracks and analyzes key PTAB decisions. In addition, he frequently lectures on licensing, intellectual property and patent matters and has published numerous articles on patent litigation and post-grant review strategies.

Robert Smyth


Partner
Morgan, Lewis & Bockius

Robert Smyth, Ph.D., advises on biotechnology, pharmaceutical, and chemical patent prosecution in the United States and around the world. He also focuses on patent infringement, validity, and freedom to operate analyses. Robert offers litigation support and analysis, drafts licensing agreements, and conducts intellectual property due diligence analysis in connection with venture capital financing and public offerings. With a background in pharmacology, immunology, virology, and molecular biology, Robert advises biotechnology companies on the development and commercialization of therapeutic and diagnostic products.

Richard Debodo


Partner
Morgan, Lewis & Bockius

Richard de Bodo is lead trial counsel in high-stakes, cutting-edge patent and trade secret cases for many of the world’s leading technology, pharmaceutical, and life sciences companies. Rich has experience litigating and trying Hatch-Waxman cases and cases relating to biosimilars, biologic drugs, and biotechnology. He also serves as a leader of the firm’s intellectual property and life sciences practices. Rich represents clients before trial and appellate courts, arbitration panels, and the International Trade Commission (ITC). He has litigated numerous cases for clients in the United States, Europe, and Asia involving pharmaceuticals, biotechnology, and medical devices among other industries. He is recognized as a leading lawyer by Chambers USA, Best Lawyers, Benchmark Litigation, Daily Journal, Managing IP and LMG Life Sciences.

David Cavanaugh


Partner
WilmerHale

David Cavanaugh is an intellectual property partner at WilmerHale and chair of the firm’s Post-Grant Patent Proceedings Group. He was recently named to Managing IP’s 2015 shortlist as the US PTAB Practitioner of the Year.  Mr. Cavanaugh has filed petitions and represented patent owners in a variety of technologies and has been lead counsel or counsel of record on more than 80 inter partes review proceedings (IPR). As lead counsel he has presented at more than a dozen oral hearings at the Patent Trial and Appeal Board. He has also developed strategies for using IPRs as a vehicle toward settlement of related district court cases as well as developed strategies for joinder of parties. Mr. Cavanaugh has represented patent owners in IPR proceedings and developed successful IPR strategies for patent owners. Additionally, Mr. Cavanaugh routinely develops strategies for other Proceedings such as ex parte reexaminations and reissues. He has extensive experience in inter partes reexamination and interferences. These procedures can be used to develop comprehensive strategies using all the procedures the Patent Office provides. Mr. Cavanaugh received a JD from George Washington University, where he was selected to study at the Max-Plank-Institute for Comparative Patent Law in Munich. He earned his master's degree at Washington Theological Union and his bachelor's degree in mechanical engineering at Villanova University.

Mark Selwyn


Partner
WilmerHale

Mark Selwyn is a partner in the Litigation/Controversy Department, co-chair of the Intellectual Property Litigation Practice Group and a member of the firm's Management Committee.  He has been recognized for exceptional standing in the legal community in the area of intellectual property in Chambers USA: America's Leading Lawyers for Business, 2005-2015 editions. Sources say "he is one of the hardest-working practitioners around" and is "top notch." Major corporations have relied on him to litigate biomedical, electrical, chemical, mechanical, and business method patents involving a diverse array of technologies, including wireless communications, electronic commerce, digital cameras, solid state disk drives, location sensing, biosensors, water and wastewater filtration, integrated circuits and angioplasty catheters. He has represented clients in dozens of patent and other intellectual property cases in federal courts throughout the country and before the International Trade Commission. Mr. Selwyn counts among his clients many of Silicon Valley’s most prominent technology companies.

Charlene Morrow


Partner
Fenwick & West 

Charlene Morrow is a Partner at Fenwick & West and has over 25 years of experience representing information technology and life sciences companies. She has a nationwide patent litigation trial practice and an active appellate practice. She also coordinates strategy on matters in the Patent Office. She frequently coordinates international enforcement and defense efforts worldwide. In addition to extensive experience in patent litigation, she has handled a full range of issues for her clients including resolving antitrust, copyright, license, standards, trade dress, trademark, and trade secrets disputes.

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