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MIP PTAB Forum 2018

May 3, Convene 810 Seventh, New York
May 8, Sheraton, Palo Alto


Speakers - Palo Alto


Speakers for this event included:

Abraham Mertens

assistant general counsel
Arista Networks


Angela Johnson

litigation counsel
Uber Technologies                                          

Angela Johnson is litigation counsel at Uber in San Francisco. Johnson previously served as litigation counsel at Hewlett Packard Enterprise and Hewlett Packard Company from 2012-2017. She has litigated and managed cases in state and federal courts throughout the United States.

In addition to managing all aspects of her litigation caseload, Johnson has extensive experience counseling business leaders on a variety of legal issues and providing recommendations to corporate policy teams. Her broad experiences with commercial, IP, employment and class action litigation enables her to provide practical, creative solutions that mitigate legal risks while meeting business objectives.

When she is not focused on litigation, she is passionate about finding ways to help and empower communities of color and under-resourced groups. As the OneJustice Advisory Board Chair, she helps the organization with its development of strategic initiatives focused on providing pro bono legal services to underprivileged communities throughout the state of California. She also spearheaded Coalition of Black Excellence Week (CBEWeek), an initiative that brought together black employee resource groups and diversity and inclusion committees at over 40 companies for one week of collaborative programming for black history month. The inaugural CBEWeek had 14 events open to the community and raised over $30,000 for non-profits.

Johnson received her JD from the University of Pennsylvania Law School, her MPP from the University of Virginia Batten School of Leadership and Public Policy, and her BA from the University of Virginia.



Brad Waugh

associate general counsel
Intel Litigation Group

Brad Waugh is an associate general counsel with the Intel litigation group, where he serves as a litigation manager for patent disputes in the US and abroad. Before joining Intel, Waugh practiced patent litigation at the Cooley and Day Casebeer firms. He holds degrees in electrical engineering from Georgia Tech and Rice, and a law degree from Stanford.


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, Love 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 Nelson of the US Court of Appeals for the Ninth Circuit and to the Hon David Godbey of the US District Court for the Northern District of Texas.


Charles Boudreau

administrative patent judge
Patent Trial and Appeal Board

Charles Boudreau is a lead administrative patent judge at the Patent Trial and Appeal Board in the Silicon Valley office.  He earned his law degree from Columbia University and Master of Arts and Bachelor of Arts degrees in Chemistry from Harvard University.  Prior to his appointment in May 2014, Judge Boudreau served as associate general counsel at Corel.  He also previously served in private practice for nearly fifteen years, with broad experience in patent prosecution and litigation, and as a law clerk to the Honorable Alan Lourie of the United States Court of Appeals for the Federal Circuit.



Gemma Suh

senior litigation counsel
Nokia

Gemma Suh is a Senior Litigation Counsel at Nokia. She addresses pre-litigation disputes and manages offensive and defensive U.S. litigation for Nokia’s Technologies and Networks businesses in federal and state courts and before the International Trade Commission. In global disputes, Gemma is responsible for aligning the U.S. strategy with other jurisdictions and has managed international arbitrations related to patent licensing. Prior to joining Nokia, Gemma was an associate in the Silicon Valley office of Davis Polk & Wardwell. Gemma received her J.D. from the University of California, Berkeley and her B.A. from the University of Georgia.



Joel Harris

senior director, intellectual property
Incube Labs



John Blake

vice president, ip strategy
Tivo

John Blake currently serves as Vice President of IP Strategy at TiVo. Since joining TiVo (then Rovi) in 2015, Blake has led the company’s patent licensing strategy for its largest licensing deals, bringing more than 30 million pay-TV subscribers under TiVo’s license. In his current role, he is responsible for key strategic patent licensing initiatives and also works closely with TiVo’s patent litigation team.

Before joining TiVo, Blake was a senior patent litigator at Morrison & Foerster in San Francisco, working on numerous patent litigations and ITC investigations. He was on the MoFo team that won a $1 billion patent infringement judgment for Apple in the “Trial of the Century”— one of the largest patent judgments in U.S. history. Before entering law, he was a software engineer developing advanced content management systems. 



Kimberley Schmitt

managing counsel, litigation group
Intel

Kimberly Schmitt is managing counsel in the litigation group at Intel Corporation.  Schmitt has over 15 years of experience in patent litigation. As part of her litigation practice at Intel, Schmitt has been involved in over 30 petitions for Intel Partes review. She 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.  Schmitt is a registered member of the patent bar. Before joining Intel in 2012, Schmitt was a partner at Kirkland & Ellis and a prior to that, an associate at Weil Gotshal and Manges, both in the San Francisco Bay Area. 


Matthew Clements

lead administrative patent judge
Patent Trial and Appeal Board


Matt Clements is a lead administrative patent judge at the Patent Trial and Appeal Board in the Silicon Valley office. He earned his law degree from Columbia Law School. He also earned a Master of Science degree in Electrical Engineering from University of Washington, and a Bachelor of Electrical Engineering degree from Auburn University. Prior to his appointment in March 2013, Judge Clements served with the law firm Ropes & Gray where he practiced intellectual property law with broad experience in patent litigation, patent prosecution, and technology transactions.



Scott Boalick

deputy chief judge  
Patent Trial and Appeal Board

Matt Clements is a lead administrative patent judge at the Patent Trial and Appeal Board in the Silicon Valley office.  He earned his law degree from Columbia Law School.  He also earned a Master of Science degree in Electrical Engineering from University of Washington, and a Bachelor of Electrical Engineering degree from Auburn University.  Prior to his appointment in March 2013, Judge Clements served with the law firm Ropes & Gray where he practiced intellectual property law with broad experience in patent litigation, patent prosecution, and technology transactions.



Sriranga Veeraraghaven

senior director, legal 
Tessera

Sriranga Veeraraghavan is a vice president, legal at Tessera.  Sriranga supports Tessera’s technology licensing and corporate development efforts in addition to managing Tessera’s litigation matters and post-issuance proceedings.  Before joining Tessera, Veeraraghavan practiced law at Cooley LLP and Howrey LLP and worked as an engineer at Sun Microsystems and Cisco Systems.  He is a named inventor on two US patents, which are based on his work at Sun. 


Chris Douglas

partner  
Alston & Bird 

Chris Douglas is active in Alston & Bird’s pre-grant and post-grant patent practice areas. Chris represents both petitioners and patent owners in post-grant proceedings and is recognized as one of the more active post-grant practitioners nationwide. Chris remains one of the few practitioners to tout confirmation of all claims in an inter partes review in a final written decision on behalf of a patent owner. In addition, he maintains a robust pre-grant patent prosecution practice. His familiarity with both pre-grant and post-grant proceedings informs his ability to counsel and secure foreign and domestic patent rights for his clients. Chris has been named to the North Carolina Rising Stars list every year since 2013 by Super Lawyers magazine; only 2.5% of attorneys under age 40 are selected. He is recognized in The Best Lawyers in America© 2018 in Intellectual Property Litigation.



Scott Stevens

partner 
Alston & Bird

Scott Stevens is a member of Alston & Bird's Intellectual Property Litigation Group and a registered patent attorney. Scott focuses his practice on patent litigation involving technologies such as telecommunications, chemical processes, pharmaceuticals, cloud computing and flash memory. He represents clients in Section 337 investigations before the U.S. International Trade Commission, as well as in patent-infringement litigation before various U.S. district courts and the U.S. Court of Federal Claims. Scott has also appeared and argued before the Federal Circuit. Additionally, he has experience representing companies in trademark, parallel importation, trade secret and copyright litigation before district courts, the International Trade Commission and the U.S. Court of Federal Claims. He has also prosecuted patent applications before the U.S. Patent and Trademark Office.




Mackenzie Martin

partner 
Baker McKenzie                                                                                                                        



Brian McCormack

partner 
Baker McKenzie                                                                                                                        



Leslie Mettes

shareholder 
Brooks Kushman                                                                                                                       



Isaac Slutsky

shareholder 
Brooks Kushman                                                                                                                       



Charlene Morrow

partner 
Fenwick & West

Charlene Morrow has a nationwide trial practice and is particularly sought after by information technology and life sciences companies. With over 20 years of experience as lead trial counsel, Morrow has represented her clients in the district courts, in arbitral fora, in the International Trade Commission and on appeal. She frequently coordinates international intellectual property enforcement and defense efforts worldwide. She also coordinates strategy on matters pending in Patent Offices. In addition to extensive experience in patent litigation and patent licensing and ownership disputes, she has handled a full range of issues for her clients including resolving antitrust, contract, copyright, standards claims, trade dress, trademark and trade secrets disputes.  



Darren Donnelly

partner 
Fenwick & West

Darren Donnelly emphasizes data management, technical computing, telecommunications, and Internet technologies in his practice. In addition to preparing and prosecuting patent applications in the US and abroad, Donnelly has counseled companies on patent portfolio development and management, patent licensing strategies and patent enforcement strategies. Follow Donnelly’s commentary on IPR and related issues on Between the Parties Blog. 



Joshua Goldberg 

partner 
Finnegan Henderson Farabow Garrett & Dunner 

Joshua Goldberg is a partner in Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s Washington, D.C., office, where he devotes much of his time to representing petitioners and patent owners in post-grant proceedings, including IPRs, CBMs, and PGRs, and ensuing appeals. As lead or backup counsel in more than 180 IPRs, CBMs, and PGRs, Mr. Goldberg has worked on proceedings involving patents directed to software, image processing, consumer electronics, mobile applications, manufacturing, semiconductor, electronic banking, Internet, cloud computing, automotive, medical device, and chemical technologies. He coauthored the ABA’s The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, and currently chairs the Communications Committee of the PTAB Bar Association.



Lori Gordon

partner 
King & Spalding                                                                                                                    



Scott McKeown

partner 
Ropes & Gray   

Scott McKeown is a partner in Ropes & Gray’s IP Litigation Group and chair of the firm’s Patent Trial and Appeal Board (PTAB) practice. Scott focuses his practice on post-grant patent counselling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott is one of the most active PTAB trial attorney in the U.S., having personally handled more than 225 PTAB matters since 2012. Furthermore, Scott is recognized as a thought leader in the PTAB industry. He is a Professorial Lecturer in Law at The George Washington University Law School, a member of the teaching faculty of the Practising Law Institute and was a founding member of the Board of Directors of the PTAB Bar Association. He is the editor of the popular blog PatentsPostGrant.com.  



Jim Davis

partner 
Ropes & Gray   

James L. Davis, Jr. focuses his practice on intellectual property litigation in federal courts, as well as before the ITC and the PTAB. Applying his background in electrical and computer engineering, Jim has served as lead counsel in district court, Federal Circuit and PTAB proceedings and represented clients across a broad range of technologies including semiconductors, analog circuits, wireless technology, consumer electronics, internet services, and medical devices. Before the PTAB and the USPTO, Jim has also litigated dozens of post-grant proceedings, including inter partes reviews and covered business method reviews, both on behalf of petitioners and patent owners. Jim’s efforts have resulted in favorable resolutions, including quick settlements after filing.  



Joe Mutschelknaus

director
Sterne Kessler Goldstein & Fox

Joseph E. Mutschelknaus is a director in Sterne Kessler’s Electronics Practice Group where he prosecutes post-issuance proceedings and patent applications before the United States Patent & Trademark Office. He also assists with district court litigation and licensing issues.

Joe has extensive experience before the Patent Trial and Appeal Board (PTAB), challenging and defending already-issued patents. In particular, he handles post-grant review, inter partes review, and covered business method review proceedings under the America Invents Act, representing both petitioners and patent owners. In addition, he has handled reexamination proceedings, winning several high-stakes appeals before the PTAB. To win these cases, Joe brings his ability to clearly explain the relevant technology in a way that is most favorable to his clients.



Jon Wright

director 
Sterne Kessler Goldstein & Fox     

Jon E. Wright is a director in Sterne Kessler’s Trial & Appellate and Electronics Practice Groups. He co-chairs the firm’s appellate practice, and is a past co-chair of its PTO litigation practice. Jon focuses primarily on contested proceedings before the USPTO’s Patent Trial and Appeal Board, and on appeals of those cases to the United States Court of Appeals for the Federal Circuit. He is a recognized leader in inter partes review practice where there is co-pending district court litigation or a USITC investigation. He is familiar with the challenges faced by both patent owners and petitioners in these complex proceedings, often works closely with trial counsel as part of an inter-disciplinary team.

Jon has extensive appellate experience at the U.S. Court of Appeals for the Federal Circuit. He has argued as the principal attorney in over ten appeals to the Federal Circuit, and has been co-counsel in dozens more. Jon recently secured a rare reversal of a PTAB decision for a small electronics company. He has also secured affirmances of PTAB decisions for several Fortune 500 companies in the communication and semi-conductor memory fields. Prior to joining Sterne Kessler, Jon clerked at the Federal Circuit for the Honorable Alvin A. Schall.





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