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This breakout session will be a group discussion of: (i) strategies for efficiently dealing with threats from non-practicing entities; (ii) the pros and cons of aggressively defending such cases versus low-dollar settlements; (iii) the effective use of the PTAB and early motion practice to drive early resolution; and (iv) war stories from the frontline fighting NPEs. This session will also include a presentation of a data-driven case study demonstrating the effectiveness of a set of strategies that have successfully reduced both the pendency and number of NPE lawsuits.

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Author:

Jonathan Tuminaro

Ph.D.; Director
Sterne Kessler

Jonathan Tuminaro, Ph.D. is a director in Sterne Kessler’s Trial & Appellate and Electronics Practice Groups. Jonathan is an experienced trial lawyer who focuses his practice on complex electronics litigation in the U.S. district courts, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). He has represented some of the leading high-tech companies in patent litigation matters relating to telecommunications, network security, LCD flat-panel displays, computer graphics, automotive technologies, GPS location-based service, and wireless power transfer.

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Jonathan Tuminaro

Ph.D.; Director
Sterne Kessler

Jonathan Tuminaro, Ph.D. is a director in Sterne Kessler’s Trial & Appellate and Electronics Practice Groups. Jonathan is an experienced trial lawyer who focuses his practice on complex electronics litigation in the U.S. district courts, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). He has represented some of the leading high-tech companies in patent litigation matters relating to telecommunications, network security, LCD flat-panel displays, computer graphics, automotive technologies, GPS location-based service, and wireless power transfer.

Author:

Daniel S. Block

Director
Sterne Kessler

Daniel S. Block is a director in Sterne Kessler's Electronics Practice Group. Dan’s practice primarily focuses on patent and anti-counterfeiting litigation at the International Trade Commission and in Federal district court. Dan has been integral in designing and implementing anti-counterfeiting measures for numerous international brands, with a focus on cost-neutral enforcement strategies. He has also served as counsel in over 50 post-grant proceedings at the USPTO’s Patent Trial and Appeal Board. His technical expertise covers many areas of computing including: computer graphics, networking communications, web services, complex computer architectures, and storage systems.

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Daniel S. Block

Director
Sterne Kessler

Daniel S. Block is a director in Sterne Kessler's Electronics Practice Group. Dan’s practice primarily focuses on patent and anti-counterfeiting litigation at the International Trade Commission and in Federal district court. Dan has been integral in designing and implementing anti-counterfeiting measures for numerous international brands, with a focus on cost-neutral enforcement strategies. He has also served as counsel in over 50 post-grant proceedings at the USPTO’s Patent Trial and Appeal Board. His technical expertise covers many areas of computing including: computer graphics, networking communications, web services, complex computer architectures, and storage systems.

IP leaders should be conveying a baseline understanding of IP across the organisation, building a culture where everyone understands that there is an IP process and how they can and should actively engage with it.

This session will explore how IP leaders successfully decentralise IP knowledge across their businesses, the successes they’ve had with building IP cultures and the struggles they’ve faced with both receptive and non-receptive internal audiences.

Author:

Paul Liu

Global Head of Intellectual Property
TuSimple

Paul is the Global Head of Intellectual Property at TuSimple, a self-driving truck company based out of San Diego, California.  At TuSimple, Paul oversees the intellectual property function with a team of attorneys, patent agents, and paralegals to align the company’s intellectual property with the business to obtain proactive, high impact, and creative protections via patents, trademarks, trade secrets, and copyrights.  He is a subject matter expert for intellectual property assets associated with mechanical engineering, electrical engineering, and computer science technologies.  He has been recognized by leading industry publications such as Intellectual Asset Management (IAM) as one of “The World’s Leading IP Strategists.

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Paul Liu

Global Head of Intellectual Property
TuSimple

Paul is the Global Head of Intellectual Property at TuSimple, a self-driving truck company based out of San Diego, California.  At TuSimple, Paul oversees the intellectual property function with a team of attorneys, patent agents, and paralegals to align the company’s intellectual property with the business to obtain proactive, high impact, and creative protections via patents, trademarks, trade secrets, and copyrights.  He is a subject matter expert for intellectual property assets associated with mechanical engineering, electrical engineering, and computer science technologies.  He has been recognized by leading industry publications such as Intellectual Asset Management (IAM) as one of “The World’s Leading IP Strategists.

Author:

Olivia Tsai

Assistant General Counsel, Head of IP
Cruise
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Olivia Tsai

Assistant General Counsel, Head of IP
Cruise

Author:

Tara Stuart

Associate General Counsel, IP
Gilead Sciences

Tara Stuart is Assistant General Counsel, IP at Gilead Sciences, Inc., where she is the IP lead for the Inflammation and Fibrosis Therapeutic Areas.  She and her team focus on patent strategy, prosecution, and portfolio management in all stages of pharmaceutical development.   As a registered patent attorney, Tara was previously in private practice where she specialized in patent prosecution, litigation, and counseling with an emphasis in pharmaceuticals.  Tara received her JD from University of Illinois Chicago John Marshall, an MS in Chemistry from Indiana University, and formerly worked an oncology research scientist at Loyola University Medical School.

 

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Tara Stuart

Associate General Counsel, IP
Gilead Sciences

Tara Stuart is Assistant General Counsel, IP at Gilead Sciences, Inc., where she is the IP lead for the Inflammation and Fibrosis Therapeutic Areas.  She and her team focus on patent strategy, prosecution, and portfolio management in all stages of pharmaceutical development.   As a registered patent attorney, Tara was previously in private practice where she specialized in patent prosecution, litigation, and counseling with an emphasis in pharmaceuticals.  Tara received her JD from University of Illinois Chicago John Marshall, an MS in Chemistry from Indiana University, and formerly worked an oncology research scientist at Loyola University Medical School.

 

Author:

Michael Messinger

Partner
Vorys

Mike is a partner in the Vorys Washington, D.C. office and member of the intellectual property group.  He began his career serving for six years as a patent examiner in the U.S. Patent and Trademark Office (USPTO) handling an active optoelectronic devices and systems docket.  Now, Mike brings unique patent solutions from defensive and offensive perspectives.  He helps clients harvest innovation, protect products and services, and monetize or defend patent portfolios.

Throughout his career, Mike has helped companies of all sizes, universities and individuals create IP strategies for protection and to enhance their freedom-to-operate in computer, electronics and sustainable technologies. He routinely works with company officers and engineers to identify patentable inventions and build strategic patent portfolios. Mike also has significant experience as lead counsel in complex inter partes review proceedings, reissue and ex parte patent reexamination before the USPTO.

Mike has deep experience prosecuting U.S. and international patent applications.  This includes developing worldwide patent portfolios that track company business goals and writing and prosecuting numerous patent applications covering inventions in cloud computing, machine learning, computer networking (Internet and World-Wide Web technologies), browsers, geographical information systems, graphics processing,  high-speed optical communications, solar, wind and tidal energy, and data mining.  Mike has also helped clients sell, license or enforce hundreds of patents. 

Mike serves as an adjunct professor at the Georgetown University Law Center, where he teaches patent licensing.

Mike received his J.D. from the Georgetown University Law Center and his B.S. magna cum laude, in physics, from Duke University.

Prior to joining Vorys, Mike was the co-founder of the boutique IP law firm Shami Messinger PLLC and earlier in his career he served as a partner at other IP boutique and general practice law firms.

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Michael Messinger

Partner
Vorys

Mike is a partner in the Vorys Washington, D.C. office and member of the intellectual property group.  He began his career serving for six years as a patent examiner in the U.S. Patent and Trademark Office (USPTO) handling an active optoelectronic devices and systems docket.  Now, Mike brings unique patent solutions from defensive and offensive perspectives.  He helps clients harvest innovation, protect products and services, and monetize or defend patent portfolios.

Throughout his career, Mike has helped companies of all sizes, universities and individuals create IP strategies for protection and to enhance their freedom-to-operate in computer, electronics and sustainable technologies. He routinely works with company officers and engineers to identify patentable inventions and build strategic patent portfolios. Mike also has significant experience as lead counsel in complex inter partes review proceedings, reissue and ex parte patent reexamination before the USPTO.

Mike has deep experience prosecuting U.S. and international patent applications.  This includes developing worldwide patent portfolios that track company business goals and writing and prosecuting numerous patent applications covering inventions in cloud computing, machine learning, computer networking (Internet and World-Wide Web technologies), browsers, geographical information systems, graphics processing,  high-speed optical communications, solar, wind and tidal energy, and data mining.  Mike has also helped clients sell, license or enforce hundreds of patents. 

Mike serves as an adjunct professor at the Georgetown University Law Center, where he teaches patent licensing.

Mike received his J.D. from the Georgetown University Law Center and his B.S. magna cum laude, in physics, from Duke University.

Prior to joining Vorys, Mike was the co-founder of the boutique IP law firm Shami Messinger PLLC and earlier in his career he served as a partner at other IP boutique and general practice law firms.

Author:

Helen Li

Associate Director of Patents
Intel Corporation

Helen Liis an associate director of patents and patent portfolio manager of AI innovations at the Intel Corporation.  She also serves as the Patent Group Counsel to Office of the Intel CTO & Software and Advanced Technology Group.  Prior to joining the Intel, she was a patent attorney at Fenwick & West LLP, where she advised clients on IP strategy and prosecuted patents in computer engineering technologies such as AI.  She has a PhD in computer engineering and JD both from Santa Clara University. 

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Helen Li

Associate Director of Patents
Intel Corporation

Helen Liis an associate director of patents and patent portfolio manager of AI innovations at the Intel Corporation.  She also serves as the Patent Group Counsel to Office of the Intel CTO & Software and Advanced Technology Group.  Prior to joining the Intel, she was a patent attorney at Fenwick & West LLP, where she advised clients on IP strategy and prosecuted patents in computer engineering technologies such as AI.  She has a PhD in computer engineering and JD both from Santa Clara University. 

Corporate heads of IP need a wide range of skills that go far beyond being a talented patent attorney. Proving their value and demonstrating how they support the larger purpose of the business is critical.

Author:

Lorie Goins

Head of IP Strategy
Kyndryl
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Lorie Goins

Head of IP Strategy
Kyndryl

Author:

Sharon Lai

Director, IP Legal, Americas
Volvo
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Sharon Lai

Director, IP Legal, Americas
Volvo

Author:

John Mulgrew

Chief Patent Counsel and Global Head of IP
Lenovo Group
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John Mulgrew

Chief Patent Counsel and Global Head of IP
Lenovo Group

Author:

Kristin Lamb

Head of IP
ŌURA

Kristin Lamb is Associate General Counsel, Senior Director of Intellectual Property and Regulatory Compliance for ŌURA, a late-stage health and wellness wearable startup based in Finland and San Francisco that makes the Oura Ring. Kristin leads all aspects of IP development, protection, and enforcement for the company. 

 

Prior to working at ŌURA, Kristin was in private practice with Hogan Lovells in Houston, Texas. She is a former biochemist and patented inventor, studied biochemistry at the University of Colorado, and received her J.D. from American University Washington College of Law in Washington, D.C. She is admitted to the California, Colorado, District of Columbia, and Texas bars, and is a registered patent attorney with the USPTO. 

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Kristin Lamb

Head of IP
ŌURA

Kristin Lamb is Associate General Counsel, Senior Director of Intellectual Property and Regulatory Compliance for ŌURA, a late-stage health and wellness wearable startup based in Finland and San Francisco that makes the Oura Ring. Kristin leads all aspects of IP development, protection, and enforcement for the company. 

 

Prior to working at ŌURA, Kristin was in private practice with Hogan Lovells in Houston, Texas. She is a former biochemist and patented inventor, studied biochemistry at the University of Colorado, and received her J.D. from American University Washington College of Law in Washington, D.C. She is admitted to the California, Colorado, District of Columbia, and Texas bars, and is a registered patent attorney with the USPTO. 

Author:

Carey Jordan

Partner
Vorys

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, technology, etc. 

Carey led our effort to develop our unique suite of patent services called PatentlyIntegrated™. PatentlyIntegrated is a modular and flexible patenting system that can be adapted to create a unique solution for our clients.  It provides clients with real cost controls, data-based analyses, and tools to strengthen their patent portfolios for efficient patent spend management.

Carey also regularly counsels clients with respect to licensing, clearance issues and trade secret issues with respect to their global operations. She is considered by clients to be responsive, talented, and a creative out-of-the-box thinker.

Carey's personal passion is to encourage women to study science and engineering.  For example, at Clemson University, her alma mater, Carey has established a scholarship campaign to aid women studying science, technology, engineering and math (STEM) obtain their degrees and pursue careers in STEM or IP.

Carey received her J.D. from the University of Houston Law Center, and her M.S. and B.S. in Chemistry from Clemson University.

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Carey Jordan

Partner
Vorys

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, technology, etc. 

Carey led our effort to develop our unique suite of patent services called PatentlyIntegrated™. PatentlyIntegrated is a modular and flexible patenting system that can be adapted to create a unique solution for our clients.  It provides clients with real cost controls, data-based analyses, and tools to strengthen their patent portfolios for efficient patent spend management.

Carey also regularly counsels clients with respect to licensing, clearance issues and trade secret issues with respect to their global operations. She is considered by clients to be responsive, talented, and a creative out-of-the-box thinker.

Carey's personal passion is to encourage women to study science and engineering.  For example, at Clemson University, her alma mater, Carey has established a scholarship campaign to aid women studying science, technology, engineering and math (STEM) obtain their degrees and pursue careers in STEM or IP.

Carey received her J.D. from the University of Houston Law Center, and her M.S. and B.S. in Chemistry from Clemson University.

Protecting a company’s IP is critical to the success of the business. But with the role of the GC being so integral to business decisions company wide, IP is but one piece of the puzzle. A group of GCs will discuss how IP fits into their mindset, where IP is on their radar and more importantly, its positioning at a time of crisis. 

Author:

Karna Nisewaner

Corporate Vice President, General Counsel and Corporate Secretary
Cadence Design Systems

Karna Nisewaner is the General Counsel and Corporate Secretary of Cadence Design Systems, Inc. She is responsible for Cadence worldwide legal operations, covering matters such as corporate governance, corporate social responsibility, commercial transactions, employment, export compliance, government affairs, intellectual property, litigation, mergers and acquisitions, and stock administration. Prior to this role, she was Corporate Vice President and Deputy General Counsel at Cadence where she led many key functions in the legal department.  Prior to joining Cadence in 2011, Nisewaner held in-house counsel roles at Intuit and IBM and was in private practice at Finnegan, Henderson, Farabow, Garrett, and Dunner, LLP focused on intellectual property.  Nisewaner received her BSE in civil engineering and operations research from Princeton University and her Juris Doctor degree from UCLA Law School.

 

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Karna Nisewaner

Corporate Vice President, General Counsel and Corporate Secretary
Cadence Design Systems

Karna Nisewaner is the General Counsel and Corporate Secretary of Cadence Design Systems, Inc. She is responsible for Cadence worldwide legal operations, covering matters such as corporate governance, corporate social responsibility, commercial transactions, employment, export compliance, government affairs, intellectual property, litigation, mergers and acquisitions, and stock administration. Prior to this role, she was Corporate Vice President and Deputy General Counsel at Cadence where she led many key functions in the legal department.  Prior to joining Cadence in 2011, Nisewaner held in-house counsel roles at Intuit and IBM and was in private practice at Finnegan, Henderson, Farabow, Garrett, and Dunner, LLP focused on intellectual property.  Nisewaner received her BSE in civil engineering and operations research from Princeton University and her Juris Doctor degree from UCLA Law School.

 

Author:

David Shofi

General Counsel
Univercells Technologies
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David Shofi

General Counsel
Univercells Technologies

Author:

Brian Walters

Executive Vice President and General Counsel
Matthews International

Brian D. Walters serves as Executive Vice-President and General Counsel for Matthews International Corporation, Pittsburgh’s oldest company in continuous operation since 1850 and operating in over 25 countries with over 12,000 employees.  During his 18-year tenure at Matthews, the Company has more than tripled in annual revenue, now producing approximately $1.8 billion in sales.   Brian has directed all legal matters for this publicly-traded corporation both nationally and internationally, as well as serving as a member of Matthews’ executive leadership team.  Mr. Walters has led over 75 domestic and foreign acquisition initiatives at Matthews, including extensive experience coordinating strategies to secure transaction approval from the U.S. Federal Trade Commission, managing HSR filings, as well as filings with the competition authority of the European Union.

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Brian Walters

Executive Vice President and General Counsel
Matthews International

Brian D. Walters serves as Executive Vice-President and General Counsel for Matthews International Corporation, Pittsburgh’s oldest company in continuous operation since 1850 and operating in over 25 countries with over 12,000 employees.  During his 18-year tenure at Matthews, the Company has more than tripled in annual revenue, now producing approximately $1.8 billion in sales.   Brian has directed all legal matters for this publicly-traded corporation both nationally and internationally, as well as serving as a member of Matthews’ executive leadership team.  Mr. Walters has led over 75 domestic and foreign acquisition initiatives at Matthews, including extensive experience coordinating strategies to secure transaction approval from the U.S. Federal Trade Commission, managing HSR filings, as well as filings with the competition authority of the European Union.

Author:

Jonas McDavit

Partner
Desmarais

Jonas McDavit is a partner at Desmarais LLP. He has extensive experience
representing clients in high-stakes patent infringement cases before the
Federal Circuit Court of Appeals, several federal district courts, the
International Trade Commission, and the USPTO Patent Trial and Appeal
Board. He handles cases involving diverse areas of technology, including
computer hardware and software, semiconductors, wireless communication,
mobile devices, image sensors, gaming, pharmaceuticals, photo-imaging
equipment, and consumer products.

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Jonas McDavit

Partner
Desmarais

Jonas McDavit is a partner at Desmarais LLP. He has extensive experience
representing clients in high-stakes patent infringement cases before the
Federal Circuit Court of Appeals, several federal district courts, the
International Trade Commission, and the USPTO Patent Trial and Appeal
Board. He handles cases involving diverse areas of technology, including
computer hardware and software, semiconductors, wireless communication,
mobile devices, image sensors, gaming, pharmaceuticals, photo-imaging
equipment, and consumer products.

Tilo Weigandt – Co-Founder & COO – Vaultree

Loved the PET Summit! It was the perfect mix of large organizations looking to improve their data privacy, regulators wanting to create legislation in accordance to the market needs and young, innovative solution providers ready to address those issues quickly using modern technologies.

Walden C. Rhines – President & CEO – Cornami

The event provided a lot of opportunity to connect with all the attendees and roundtable session.  Sessions were engaging.

Daniel Franke – Principal - M Ventures

I was most interested by the technical aspects of the technologies and learning what capabilities each has, both in regard to strengths and limitations. This has helped to inform what solutions exist to some of the problems facing the industry.

Adam Towvim – Advising Executives across Sales, Marketing, Data and Privacy – Chameleon Collective

I enjoyed a lot the possibilities to exchange valuable knowledge and insights about a space which is receiving more and more attention.”