IP Summit Speakers for 2020
Friday, February 21st
Andrei Iancu – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
In his role as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu provides leadership and oversight to one of the largest intellectual property offices in the world, with more than 12,000 employees and an annual budget of over $3 billion. He also serves as the principal advisor to the Secretary of Commerce on domestic and international intellectual property policy matters.
Prior to joining the USPTO, Mr. Iancu was the Managing Partner at Irell & Manella LLP, where his practice focused on intellectual property litigation. Mr. Iancu appeared in a variety of high-profile matters in front of the USPTO, U.S. district courts, the Court of Appeals for the Federal Circuit, and the U.S. International Trade Commission. He has represented clients across the technical and scientific spectra, including those associated with medical devices, genetic testing, therapeutics, the internet, telephony, TV broadcasting, video game systems, and computer peripherals.
Mr. Iancu has also taught patent law at the UCLA School of Law, and has written and spoken publicly on a variety of intellectual property issues. Prior to his legal career, Mr. Iancu was an engineer at Hughes Aircraft Company.
Throughout his career, many organizations have recognized Mr. Iancu for his work. Among his legal community accolades, the Daily Journal, California Lawyer magazine, Los Angeles Business Journal, Chambers USA, Best Lawyers in America, and many others have acknowledged his expertise in commercial litigation and intellectual property law. Mr. Iancu has also been the recipient of the Patent and Trademark Office Society 36th Annual Rossman Award, the Hughes Aircraft Malcolm R. Currie Innovation Award, and the Melville B. Nimmer Copyright Award.
Mr. Iancu holds a Juris Doctor from the UCLA School of Law. He also has a Master of Science in mechanical engineering and a Bachelor of Science in aerospace engineering, both from UCLA.
Mr. Iancu was born in Bucharest, Romania. He has lived in the United States since the age of 12. He and his wife, Dr. Luiza C. Iancu, have two children, Ariella and Robert.
Honorable Sharon Prost, Chief Judge of the United States Court of Appeals for the Federal Circuit
Chief Judge Sharon Prost was appointed by President George W. Bush in 2001 and assumed the duties of Chief Circuit Judge on May 31, 2014. Prior to her appointment, Judge Prost served as Minority Chief Counsel, Deputy Chief Counsel, and Chief Counsel of the Committee on the Judiciary, United States Senate from 1993 to 2001. She also served as Chief Labor Counsel (Minority), Senate Committee on Labor and Human Resources from 1989 to 1993. She was Assistant Solicitor, Associate Solicitor, and Acting Solicitor of the National Labor Relations Board from 1984 to 1989. She was an Attorney at the Internal Revenue Service from 1983 to 1984, and Field Attorney at the Federal Labor Relations Authority from 1980 to 1983. Judge Prost also served as Labor Relations Specialist/Auditor at the United States General Accounting Office from 1976 to 1980 and Labor Relations Specialist at the United States Civil Service Commission from 1973 to 1976. Judge Prost received a B.S. from Cornell University in 1973, an M.B.A. from George Washington University in 1975, a J.D. from the Washington College of Law, American University in 1979, and an LL.M. from George Washington University School of Law in 1984.
Maria Pallante – President and CEO of the Association of American Publishers (AAP) – Former United States Register of Copyrights
Maria A. Pallante is the President and CEO of the Association of American Publishers and an internationally respected authority in the field of copyright law. Based in Washington, DC, she leads a talented team and public policy portfolio dedicated to advancing and supporting the modern publishing industry, including its global contributions to culture, research, education, commerce, and the democratic exchange of ideas.
From June 2011 to October 2016, Maria served as United States Register of Copyrights and Director of the U.S. Copyright Office, where she administered and interpreted the Copyright Act; assisted executive branch officials with litigation, trade agreements, and treaties; and served on numerous U.S. negotiating teams and delegations. A key advisor to the U.S. Congress, Maria worked closely with lawmakers during a comprehensive review of copyright law in the twenty-first century, and led efforts to modernize registration, public records, and other government services that affect the digital marketplace. She frequently testified to the challenges that authors face in navigating outdated and ineffective copyright provisions, and the corresponding impact on the public interest.
Under Maria’s leadership, the Copyright Office produced extensive policy studies, legislative recommendations, and strategic plans that helped to assess and shape the copyright landscape. She delivered major public reports including, The Making Available Right in the United States; Copyright and the Music Marketplace; and Copyright Small Claims, and produced a transformational overhaul of the Compendium of U.S. Copyright Office Practices, making it widely available online to courts, practitioners, and the general public. Among other initiatives, she established the agency’s Barbara A. Ringer Honors Fellowship and Abraham L. Kaminstein Scholars program.
Maria held two previous Copyright Office positions from 2007-2011, as Deputy General Counsel and Director of Policy and International Affairs. Prior to public service, she served as Associate General Counsel for the worldwide network of Guggenheim Museums for more than eight years, where she headed copyright and trademark licensing and advised on business, governance, and the acquisition and exhibition of contemporary art. Earlier in her tenure, she was in private practice and served as counsel to both the Authors Guild and National Writers Union.
Maria is an elected Trustee of the Copyright Society of the USA and a recipient of the Champion of Intellectual Property Award from the District of Columbia Bar. She has delivered and published a number of distinguished legal lectures, including the Horace S. Manges Lecture at Columbia University; the David Nelson Lecture at UC Berkeley; the Christopher Meyer Lecture at George Washington University; and the Robert W. Kastenmeier Lecture at the University of Wisconsin. She is a graduate of The George Washington University Law School and earned her bachelor’s degree in history from Misericordia University, which also awarded her an honorary doctorate of humane letters.
Featured Speakers (listed generally in order of presentation)
David Todd, Workman Nydegger
David Todd is a shareholder at the intellectual property law firm of Workman Nydegger. His practice focuses on intellectual property litigation, including patent, trademark, copyright, and trade secret litigation, and on client counseling matters requiring expertise in intellectual property law, including analyses of patent infringement and validity. He has participated as counsel in over 25 appeals at the U.S. Court of Appeals for the Federal Circuit and in a number of intellectual property actions in federal trial courts and at the Patent Trial and Appeal Board.
Mr. Todd served from 1997-1998 as a law clerk to the Honorable Randall R. Rader at the United States Court of Appeals for the Federal Circuit, which resolves patent appeals from all U.S. district courts as well as all appeals from the U.S. Patent and Trademark Office. Mr. Todd has participated in authoring a number of publications on patent law issues, has lectured on intellectual property issues, and currently serves as an adjunct professor of law at Brigham Young University where he has taught courses in patent law and intellectual property litigation. He has also served as an author of amicus briefs filed on behalf of the American Intellectual Property Law Association in cases pending before the United States Supreme Court and the Federal Circuit
Scott Karren Patent Attorney at Holland & Hart
Scott provides strategic IP counsel to large technology companies, with a focus on developing and managing strategic patent portfolios, and preparing and prosecuting applications. He manages a number of international patent portfolios in the electrical- and computer-related arts, prepares opinions, counsels clients on issues of patent infringement, validity, and product design, and advises on strategic patent acquisitions and pre-litigation strategies. He regularly coordinates and leads teams in preparing families of complex applications. Scott was a chapter contributor for the book “Patents and Standards; Practice, Policy, and Enforcement” and has been instrumental in recruiting, training, and mentoring other members of the patent group at Holland & Hart.
Tom Lerdal Vice President Rowan TELS
Rowan provides cost effective technology-enabled legal services in Patents, Anti-Counterfeit, and Legal Management to corporations and law firms. Prior to Rowan, Tom was a Vice President of Client Services at RPX and a partner at Banner & Witcoff, Ltd.
Shawn Lillemo, Harrity & Harrity, LLP
Shawn Lillemo is an innovative software product manager and intellectual property attorney with a background in business management. Prior to joining Harrity, he served as a patent examiner at the United States Patent and Trademark Office where he examined patent applications related to software and business methods inventions He also helped on several USPTO software projects during this time.
Prior to serving as a Patent Examiner, Shawn worked for 16 years as a software product manager for his own consulting firm where he gained substantial experience matching software technologies with business needs. While working as a software product manager, Shawn attended Regent University School of Law and then clerked for the Honorable D. Arthur Kelsey.
Shawn specializes in managing multi-functional software development teams. By creating and facilitating teams of data scientists, developers, designers, and C-Suite executives, he is able to create business opportunities from emerging technologies and enhance the performance of patent professionals. Using his experience, strong people skills, ability to make cross-functional connections, and multi-disciplinary professional fluency, Shawn aims to accelerate the patent preparation and prosecution process at Harrity & Harrity, LLP.
Adam Stephenson, Anticipat
As president and founder of the firm and COO of Anticipat, a patent data company, Adam is no stranger to the challenges of starting new and innovative businesses—and the benefits of constantly innovating. An Arizona Super Lawyers’ Rising Star (Thomson Reuters 2017–2019), Adam’s journey from starting the firm in half of his son’s bedroom to representing Fortune 500 and other publicly traded companies has been a blessed one. Along the way, his experiences have ranged from successfully issuing a software patent in 11 months using Track 1 examination to obtaining final rejection of a publicly traded conductive energy weapon company’s patent via ex parte reexamination. Adam has written and been involved in the prosecution of hundreds of patents across the entire spectrum of technology.
Adam has the experience and intellect to practice in the wide variety of technical areas his practice has taken him. At 19, he received his bachelor’s degree in chemical engineering from Brigham Young University. Joining Intel in 2000, Adam spent six years in various semiconductor fabrication, package assembly, programming, and path-finding engineering roles. After receiving his master of science in engineering degree (ChE) from Arizona State University, he began work on his law degree at Phoenix School of Law (Arizona Summit School of Law). Just prior to law school, Adam became a registered professional engineer with proficiency in chemical engineering with the state of Arizona. Adam began his IP career as a registered patent agent and law clerk with Booth Udall, PLC (now Booth Udall Fuller PLLC) before starting Adam R. Stephenson, LTD. in 2010.
Adam’s passion with patent data and analysis began well over a decade years ago in law school where he authored a law review article that collected and used patent prosecution data to predict the effects of proposed USPTO rules on patent prosecution in Semiconductor Class 438. As chief operating officer and co-founder of Anticipat, Inc., Adam works to develop analysis tools for his own and other patent practitioner’s practices that permit decisions on patent applications to be data-informed rather than just coming “from the gut.”
David McKenzie Patent Attorney Rowan TELS LLC
A patent attorney with Rowan TELS LLC, a law firm based in Washington state. He is on an advisory board for Rowan TELS Corp., aka TurboPatent. His practice focuses on preparing and prosecuting patents for high tech companies in the areas of data storage, controllers, and solid-state memory. He was in-house patent counsel with Western Digital for almost ten years and partner in a Salt Lake City IP boutique before that.
He enjoys learning new technology and seeing technology produce efficiency and productivity. We not working he enjoys tinkering with electronics, single board computers, and developing software programs. He also enjoys hiking and exploring trails on ATVs.
Andrew Bridges, Fenwick & West
Andrew Bridges is widely regarded as one of the country’s leading litigators on cutting-edge and high-stakes issues affecting technology, online platform and consumer oriented companies. Clients of all sizes seek him out not only to solve immediate business and litigation needs but also to help anticipate the potential policy implications and risks of new business models and technologies. A vigorous, skilled and strategic advocate in tough and important fights, Andrew has 30 years of complex litigation experience in Internet, technology, media, copyright, trademark, advertising, trade secret, consumer protection, unfair competition, licensing and other commercial law disputes. He also coordinates foreign litigation matters for innovators and companies around the globe and participates in global forums that shape policy developments affecting startups, technology companies, and online platforms.
Matt Jarman, CEO of ClearPlay
ClearPlay is a service that makes movies family friendly. The service works by filtering language and scenes while a movie is playing, all based on the family’s own personal settings. In 2005 ClearPlay was a primary sponsor of the Family Movie Act, helping pass legislation that amended copyright law and clarify the legality of movie filtering. ClearPlay has been awarded 12 patents for its innovative technology and legally sound filtering processes. ClearPlay was founded in 1998 with a love for family movie night, and the firm belief that families can enjoy the show together.
Ben Sheffner, Motion Picture Association of America
Senior Vice President & Associate General Counsel, Copyright & Legal Affairs
Ben Sheffner is Senior Vice President & Associate General Counsel, Copyright & Legal Affairs, at the Motion Picture Association, Inc., where he specializes in copyright and other intellectual property policy and runs the MPA’s amicus brief program. Ben also serves as counsel to the MPA Title Registration Bureau and manages the association’s trademark portfolio. Prior to joining the MPA in 2011, Ben held in-house legal positions at NBCUniversal and Twentieth Century Fox, and worked as an associate in the Century City office of O’Melveny & Myers LLP, where he litigated copyright and other cases for major movie studios, television networks, and record labels. In 2008, Ben served as Special Counsel on Senator John McCain’s presidential campaign, where, among other responsibilities, he handled the campaign’s copyright, trademark, and other intellectual property issues. Ben served as a law clerk for the Hon. M. Margaret McKeown on the US Court of Appeals for the Ninth Circuit from 2000-2001.
Ben is a Trustee of the Copyright Society of the USA as well as the Los Angeles Copyright Society, and serves as an Adviser to the American Law Institute’s Restatement of the Law, Copyright project, and as a participant on the Uniform Law Commission committee drafting a uniform anti-SLAPP statute.
Prior to attending law school, Ben worked as a political reporter in Washington, DC for the Cook Political Report and Roll Call newspaper, where he covered congressional elections, the term limits movement, campaign finance reform, and various other issues related to Congress’ internal politics and administration. Ben received an A.B. from Harvard College and a J.D. from the University of California, Berkeley School of Law (Boalt Hall).
Judge Clark S. Cheney, Administrative Law Judge, U.S. International Trade Commission
Clark S. Cheney was appointed as an Administrative Law Judge at the U.S. International Trade Commission in March 2018. Prior to his USITC appointment, Judge Cheney served as an ALJ with the Federal Energy Regulatory Commission and the Social Security Administration. He worked in the USITC’s Office of the General Counsel for several years prior to becoming an ALJ. In that role, he regularly argued appeals to the U.S. Court of Appeals for the Federal Circuit on behalf of the Commission. He also served as an attorney advisor in the USITC’s Office of Administrative Law Judges and was detailed to the Office of the U.S. Trade Representative. He began his career as a patent examiner and served as a law clerk to Judge William Bryson at the Federal Circuit. During several years of private practice, he represented domestic and international clients in intellectual property litigation. He holds a juris doctor degree, cum laude, from the Georgetown University Law Center and a bachelor of science degree in electrical engineering from the University of Utah.
Kevin is VP, Intellectual Property at Recursion
Kevin is VP, Intellectual Property at Recursion, a Salt Lake City company with a mission to improve the pharmaceutical discovery process by leveraging advances in automation and machine learning. Kevin is a recent transplant, coming from Silicon Valley, with a background as in-house IP counsel for technology companies, with an emphasis on patent portfolio process and development, open source licensing, and deal negotiation.
Is an experienced Intellectual Property attorney. He has spent most of his career in-house working with Utah companies. He has extensive experience in medical devices, consumer products and nanotechnology. James is currently Deputy General Counsel of IP at Purple as well as Of-Counsel at Durham Jones & Pinegar. His expertise focuses mainly on patent and trademark prosecution as well as branding and patent strategy. James has worked with many small start-ups along Silicone Slopes and in Silicone Valley. Additionally, James has advised and worked for large publicly traded companies with their IP strategy and filings.
Troy Dow, Vice President & Counsel, Government Relations and IP Legal Policy and Strategy
The Walt Disney Company
As Vice President and Counsel, Government Relations and IP Legal Policy and Strategy at The Walt Disney Company, Mr. Dow advises the company on intellectual property and technology policy and represents the company on these and other matters before the U.S. Congress, the Executive Branch and related agencies. In addition to his work in the legislative and regulatory areas, Mr. Dow works to ensure an effective and consistent legal policy and strategy in the area of intellectual property, including in commercial transactions and in major copyright litigation matters that involve Disney or its trade associations. He previously served as Vice President and Counsel for Technology and New Media at the Motion Picture Association of America, as Counsel to the Senate Judiciary Committee, and as professional staff to Senator Orrin G. Hatch. He teaches copyright at Duke University Law School and holds degrees from Brigham Young University and the Georgetown University Law Center.
Professor Adam Mossof, Professor of Law
Antonin Scalia Law School, George Mason University
Adam Mossoff is a Professor of Law at Antonin Scalia Law School, George Mason University. He teaches a wide range of courses at the law school, including property, patent law, trade secrets, trademark law, remedies, and internet law. He has published extensively on the theory and history of how patents and other intellectual property rights are private property rights that should be legally secured to their owners and licensed or otherwise transferred as commercial assets in the marketplace. His research has been relied on by the US Supreme Court, by the US Court of Appeals for the Federal Circuit, and by federal agencies.
Professor Mossoff actively participates in intellectual property policy. He has been invited numerous times to testify before the Senate and the House of Representatives on proposed patent legislation, and he is a regular speaker at congressional staff briefings. He has been invited to speak at conferences and to present his research at the US Patent & Trademark Office, the Federal Trade Commission, the Department of Justice, the National Academy of Sciences, and the Smithsonian Museum of American History. He has submitted comments at federal agencies on legal and regulatory matters impacting intellectual property rights, and he has filed over 25 amicus briefs in intellectual property cases. His writings on intellectual property cases and policy issues have appeared in the popular press in the Wall Street Journal, New York Times, Forbes, The Hill, Politico, and in other media outlets. He is a Senior Fellow at the Hudson Institute, where he is also Chair of the Forum for Intellectual Property, and he is a Visiting Intellectual Property Fellow at the Heritage Foundation. He was appointed as a board member of the Center for Intellectual Property Understanding in February 2020. He is a member of the Intellectual Property Rights Policy Committee of ANSI and he has served as Chair and Vice-Chair of the Intellectual Property Committee of the IEEE-USA, on which he remains a member in good standing.
Matt Sandgren – Executive Director, Orrin G. Hatch Foundation
A Capitol Hill veteran with over 15 years of experience, Matt Sandgren directed Orrin Hatch’s legislative, communications, and political activities during the Senator’s final chapter in the Senate. Previously, Matt served as senior counsel on the Senate Judiciary Committee, which Hatch led as member and chairman.
Beyond intellectual property and technology issues, his legislative portfolio spanned a significant portion of the Judiciary Committee’s jurisdiction, including biotechnology, cybersecurity, immigration, internet governance, and privacy. Matt also served as Senator Hatch’s staff director for the Senate Republican High-Tech Task Force and as lead counsel for the International Creativity and Theft Prevention Caucus.
Both on and off the Hill, Matt is widely regarded as a leading expert on tech policy and intellectual property law. He earned a B.A. from Brigham Young University, a J.D. from The University of Tulsa, and an LL.M. from The George Washington University. Matt is a member of the Utah, District of Columbia, and U.S. Supreme Court bars
Honorable Scott R. Boalick, Chief Judge for the Patent Trial and Appeal Board
Scott R. Boalick is the Chief Judge for the Patent Trial and Appeal Board (PTAB). In this role, he leads the PTAB as it conducts post-grant trials, including inter partes reviews, post-grant reviews, covered business method patent reviews and derivation proceedings, and as it hears appeals from adverse examiner decisions in patent applications and reexamination proceedings.
Chief Judge Boalick was appointed to the Board in 2007. Prior to becoming the Chief Judge, he served as the acting Chief Judge, and before that as an Administrative Patent Judge, Lead Judge, Vice Chief Judge, and Deputy Chief Judge.
Before joining the USPTO, Mr. Boalick served as a patent attorney with the Department of the Navy at the Naval Surface Warfare Center Carderock Division and the Naval Surface Warfare Center Dahlgren Laboratory. In these roles, he advised clients concerning a wide range of intellectual property issues, including patent, trademark, copyright, technology transfer, administrative claims, and rights in technical data and computer software. He prepared and prosecuted patent applications and assisted the Invention Evaluation Board to select and prioritize inventions for patenting. Before that, he practiced with Fish & Richardson in Washington, D.C., where he counseled clients on all aspects of protecting intellectual property, including patent acquisition, portfolio management, and litigation. He litigated claims of patent infringement in the International Trade Commission, district court, and the Federal Circuit, and also prepared and prosecuted numerous patent applications in a variety of technology areas. Prior to his time at Fish & Richardson, Mr. Boalick served as a law clerk to the Hon. Alvin A. Schall of the United States Court of Appeals for the Federal Circuit.
Mr. Boalick began his career as an officer in the U.S. Navy, serving as a division officer on the USS Mobile Bay (CG-53) and as an instructor at the Surface Warfare Officer School. After his active duty service, he worked as a radar systems engineer at Technology Service Corporation.
Mr. Boalick earned a J.D., magna cum laude, from Georgetown University Law Center where he was a Notes and Comments Editor of The Georgetown Law Journal and received the Leon Robbin Patent Award. He earned both an M.S.E. in Systems Engineering and a B.S.E. in Electrical Engineering, magna cum laude, from the University of Pennsylvania.
Lead Administrative Patent Judge Melissa Haapala
Lead Administrative Patent Judge Melissa Haapaladecides appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office and presides over trials to determine patentability of claims in patents subsequent to issuance. She holds a law degree from the University of Denver College of Law, a Master of Science degree in Computer Information Systems, Management of Technology from Regis University, and a Bachelor of Science degree in Applied Mathematics from the University of Colorado. Judge Haapala worked as a staff software engineer for Storage Technology and then she practiced at several law firms, including Blakely Sokoloff Taylor & Zafman, and Townsend and Townsend and Crew. Following her time in private practice, she served as Senior Counsel at Sun Microsystems and as Assistant General Counsel at Ricoh. Judge Haapala joined the Board in 2014.
Lead Administrative Patent Judge Scott C. Moore
Lead Administrative Patent Judge Scott C. Moore decides appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office and presides over trials to determine patentability of claims in patents subsequent to issuance. He holds a law degree from The University of Chicago Law School and a Bachelor of Science in Aerospace Engineering from North Carolina State University. Judge Moore began his legal career as an associate at Irell & Manella LLP. He continued his career at Morrison & Foerster LLP, where he was elected to the partnership in the litigation department. Judge Moore joined the Board in 2014.
Derek McCorquindale, a partner in Finnegan’s Reston Office
Derek McCorquindale, a partner in Finnegan’s Reston office, focuses his practice on patent and other intellectual property litigation, at both the trial and appellate levels. He has experience in cases before federal district courts, ITC, PTAB, and the U.S. Court of Appeals for the Federal Circuit, where he has contributed to dozens of appeals and argued successfully as lead counsel. Derek works on cases in a wide range of industries, including pharmaceutical and ANDA litigations, medical device, mobile technology, and outdoor industry products. He twice served at the U.S. Court of Appeals for the Federal Circuit, as a judicial law clerk to the Honorable Jimmie V. Reyna and as an intern to the Honorable Randall R. Rader. Derek is the co-author of a chapter on patent appeals in Practising Law Institute’s third edition of Patent Litigation.
Monica Adjemian, Microsoft
Monica Adjemian is an experienced attorney whose practice focuses on all aspects of intellectual property, including patent, trademark and copyright matters, and international intellectual property issues. Monica currently works as in-house counsel for Microsoft, overseeing patent portfolio development and management for a variety of product areas such as, Word, Powerpoint, Sway, OneNote, To-Dos, Skype for Business, and educational offerings. Previously, Monica worked out of Silicon Beach, representing clients from the high-tech, manufacturing, and entertainment industries and specializes in a variety of technologies including semiconductors, LEDs, lighting systems, mobile applications, medical imaging devices, systems and software, electronic devices, pool/spa systems, e-commerce systems and software, and video game systems and software. Monica is admitted to practice in California and before the Federal District Court, Central District. She is also registered to practice before the United States Patent and Trademark Office.
Duane Marks, Assistant General Patent Counsel, Eli Lilly
Duane oversees IP strategy and procurement for Lilly biomedicine assets and also serves as Patent Operations Counsel. Prior to joining Lilly, Duane served as Patent Counsel for Roche Diagnostics where his responsibilities included diagnostic, molecular marker, companion diagnostic and sequencing assets. Before joining Roche, Duane was an attorney at Baker & Daniels LLP (now Faegre Baker Daniels). Prior to entering the legal profession Duane was a Lead Scientific Consultant and Application Scientist at Roche Diagnostics. Duane holds a B.S. in Biology and Chemistry, a M.S. in Biological Sciences, and is a summa cum laude graduate of Indiana University McKinney School of Law. Duane is currently an adjunct professor of law at Indiana University McKinney School of Law and has lectured nationally and internationally on IP topics including Subject Matter Eligibility, Written Description, the Safe Harbor of §271(e)(1), Induced Infringement and the Doctrine of Equivalents
Ronald Ward In-House Patent Counsel, Plano, Texas Office of Ericsson
Ronald Ward is currently in-house patent counsel at the Plano, Texas office of Ericsson where he specializes in procuring patents for a wide range of network communications technologies including technologies used in the 5G new radio communications standard specified in collaboration with other companies participating in the 3rd Generation Partnership Project (3GPP). Prior to joining Ericsson, Ronald was in-house patent counsel at Vestas, where his responsibilities included patent development as well as patentability and freedom to operate studies. Previously, Ronald forged strong ties to Utah as an associate with the law firm of Workman Nydegger, representing clients in electrical and mechanical engineering fields. Ronald also worked as a patent agent at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, while attending law school at the Antonin Scalia Law School of George Mason University. Prior to his legal career, Ronald was a patent examiner and worked as a systems engineer at Lockheed Martin. Ronald is admitted to practice in Texas and before the United States Patent and Trademark Office.
Bennett Borden, Chief Data Scientist, Drinker Biddle
Bennett B. Borden is Drinker Biddle’s chief data scientist and responsible for the firm’s data analytics strategy. Harnessing the power of data is essential for helping clients drive value in their business operations and telling their side of the story in litigation. Bennett is one of the world’s first lawyer/data scientists and has recently been appointed to the National Conference of Lawyers and Scientists (NCLS) of the American Academy for the Advancement of Science.
Bennett advises the firm and its clients on the development and use of analytics models that enable insight, data storytelling and economic value generation. Bennett’s ground-breaking research into the use of machine-based learning and unstructured data for organizational insight is now being put to work in data-driven early warning systems for clients to detect and prevent corporate fraud and other misconduct. Bennett also builds machine-based learning models to transform and improve legal outcomes in key corporate events including mergers and acquisitions, information governance program development and enforcement, litigation and investigations and business intelligence.
Allen Parker, Supervisory Patent Examiner
Allen Parker joined the U.S. Patent and Trademark Office (USPTO) in March of 2008 in Technology Center 2800. He began his career at the Office examining Semiconductor Devices and Methods in Art Unit 2893, and subsequently moved to Art Unit 2892 in 2012. Allen also received his Master’s Level Certification in 2012 and then became a Primary Examiner in 2013. After working as a Primary Examiner for a number of years, Allen was promoted to Supervisory Patent Examiner (SPE) of Art Unit 2819, semiconductors/memory.
While a junior examiner, Allen was selected as a winner of the 2010 Patent Innovation and Creativity Competition for an Electronic Journal Tool he developed to increase efficiencies in the examination process. He has served on several career development rotations at the USPTO, including in the Central Reexamination Unit in 2011 and the Patent Training Academy, and also trained examiners as a Primary Examiner. Allen received a Bachelor of Arts in Philosophy and Physics in 2004 and a Master of Science in Physics in 2007 from Clemson University. He, his wife and two children currently live in Denver, CO.
Mollybeth (Molly) R. Kocialski – Director of the Rocky Mountain Regional United States Patent and Trademark Office
As the Director of the Rocky Mountain Regional United States Patent and Trademark Office (USPTO), since January 2016, Mollybeth (Molly) Kocialski carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and is responsible for leading the Rocky Mountain regional office. Focusing on the nine states within this region and actively engaging with the community, Ms. Kocialski ensures the USPTO’s initiatives and programs are tailored to the region’s unique ecosystem of industries and stakeholders.
Ms. Kocialski brings more than 20 years of intellectual property experience to the USPTO. Most recently, Ms. Kocialski was the Senior Patent Counsel for Oracle America, Inc, where she was responsible for managing an active patent prosecution docket and was also responsible for all of the post-grant procedures and patent investigations for Oracle and its subsidiaries. Prior to Oracle, she worked at Qwest Corporation and was also in private practice in both New York and Colorado focusing on intellectual property litigation for multiple high-tech companies while maintaining an active prosecution docket.
Ms. Kocialski is a recognized IP leader in the Rocky Mountain region. Ms. Kocialski currently serves on the Colorado Federal Executive Board’s Executive Committee. Ms. Kocialski is the Vice President of the Colorado IP Inn of Court and was previously the Chair of the Planning Committee and a member of the Board of Directors of the Colorado IP Inn of Court. Further, Ms. Kocialski is a member of the Planning Committee for the Rocky Mountain Intellectual Property Institute, an annual two-day conference on intellectual property that attracts over 500 attendees. She was the Chair of the Intellectual Property Section of the Colorado Bar Association and served on the Colorado Bar Association’s Board of Governors. Ms. Kocialski served as the head of the IP Committee and was a member of the Board of Directors for the Colorado Chapter of the Association of Corporate Counsel and served on the National IP Committee of the Association of the Corporate Counsel. In 2015, Ms. Kocialski was recognized by ManagingIP magazine as one of its North America Corporate IP Stars.
Ms. Kocialski is a graduate of the State University of New York at Buffalo School of Law and received a Bachelor of Science in Chemical Engineering from the University of New Mexico. Ms. Kocialski is a registered patent attorney and is admitted to the U.S. Patent and Trademark Office, the New York and Colorado state bars as well as to the United States Courts in those jurisdictions.
Ryan Brady, Associate General Counsel Utah State University
Ryan Brady received his B.S. in microbiology with honors from Brigham Young University and his J.D. from the William & Mary School of Law. Prior to joining the Office of General Counsel at Utah State University in 2011, Ryan practiced law at Oliff in Alexandria, VA and then at the Washington D.C. office of Baker Donelson, where his practice focused on intellectual property prosecution, litigation, and portfolio strategy development. Ryan is a registered patent attorney.
As Associate General Counsel at USU, Ryan provides advice on a wide variety of matters including intellectual property, business and finance, real estate, sports law, technology transfer, corporate governance, and employment law.
Christian Iverson is the Director of Technology Transfer Services at Utah State University, primarily focusing on commercialization of USU’s life science technologies. He earned his undergraduate degrees in biology and business as well as his MBA from Utah State University. Iverson has more than 15 years of experience in life science research, development, commercialization and start-up management. Prior to joining Utah State in 2012, he served as Executive Director of the Spendlove Medical Research Institute where he managed programs for developing low cost diagnostic tools, improving air quality and teaching the invention process to high school students. Prior to his work at Spendlove, Iverson was co-founder and Vice President of Business Development for Quansys Biosciences responsible for commercializing Quansys’ bioassay products and services.
David M. Brown, Brigham Young University
Dave Brown is an Associate Director of BYU’s Tech Transfer Office. He serves as head of software licensing and oversees all legal contracts for the office. Before coming to the Tech Transfer Office, Dave practiced commercial law in the St. Louis office of Spencer, Fane, Britt, & Browne LLP. His practice included simultaneously managing hundreds of adversary proceedings in bankruptcy courts and personally trying dozens of cases. Since joining BYU, he has used his legal expertise to facilitate flexible, creative intellectual property transactions. Under his leadership, the rate of software invention disclosure at BYU has increased five-fold and the rate of software licensing has grown by an even larger margin. Dave received his juris doctor from Georgetown University and his MBA from Brigham Young University.
Peter M. Midgley, Director of the Copyright Licensing Office at Brigham Young University
Before coming to work at BYU, Mr. Midgley practiced intellectual property law for 15 years at law firms in California and Idaho. He is a registered patent attorney with a Juris Doctor degree from The George Washington University and a Bachelor of Science degree in electrical and computer engineering from BYU. He presents frequently on copyright topics, especially those confronting educators and librarians, as well as other intellectual property topics, including patents and trademarks.
Kurt Glitzenstein, Fish & Richardson
Kurt Glitzenstein is Fish’s Litigation Practice Group Leader and is responsible for the firm’s largest practice, which spans thirteen offices. In addition, Mr. Glitzenstein is a patent trial lawyer and leads cases in venues across the United States, including the District of Massachusetts, the District of Delaware, the Northern District of California, the Eastern District of Texas, the District of New Hampshire, and the ITC (International Trade Commission). In addition to his U.S. practice, Mr. Glitzenstein represents clients in connection with lawsuits and proceedings around the globe, including in the United Kingdom, Germany, The Netherlands, Denmark, Italy, and Australia.
A highly-experienced courtroom lawyer, Mr. Glitzenstein first-chairs trials and key hearings, including Markman hearings, and stays on the front lines of his cases. His hands-on approach includes moving forward with a deep understanding of a client’s business, and business objectives, allowing him to quickly provide clients with targeted guidance on vital issues and opportunities that arise during the course of patent litigation. His cases have spanned a wide range of mechanical, electrical, optics, medical, and computer software technologies, from bearing and pumps in consumer and industrial products, to medical devices in the electrotherapeutic, diagnostic, and coronary fields, to the algorithmic intricacies of computer software, to the sophisticated technologies of optics, lasers, fiber optics, telecommunications, industrial and systems control.
As a result of his many longstanding client relationships, Mr. Glitzenstein routinely provides counsel and guidance at all stages of a legal dispute. Thus, clients frequently consult with him even before a lawsuit is filed to work on sensitive and highly confidential pre-suit matters, including offensive strategies and defensive strategies for litigation avoidance. At the other end of the spectrum, Mr. Glitzenstein has briefed and argued appeals for clients on issues that include claim construction, infringement, validity, patent office practice, and trade secrets. Mr. Glitzenstein was an essential member of the appellate team in Uniloc v. Microsoft, a landmark decision in which the Federal Circuit rejected the use of the 25% rule of thumb for calculating a reasonable royalty for infringement damages. Mr. Glitzenstein also led the appellate team in Williamson v. Citrix, in which the Federal Circuit, sitting en banc, returned a decision that overruled prior precedent regarding the applicability of “mean plus function” claim construction principals under 35 U.S.C. 112(f) to functional language in patent claims.
Since the enactment of the Leahy-Smith America Invents Act (AIA), Mr. Glitzenstein has broadened his practice to integrate strategies that incorporate post-grant proceedings, including inter partes review (IPR). He has successfully litigated IPRs for both the patent owner and the patent challenger, in fields as diverse as medical devices and optical systems.
In addition to his patent litigation practice, Mr. Glitzenstein chairs the firm’s alternative fee program, where he oversees the budgeting and resource allocation for a wide range of disputes in forums throughout the United States, and is also an elected member of the firm’s Management Committee.
Kevin J. Meek, Baker Botts
Kevin Meek is the head of the intellectual property department in Baker Botts’ Austin office. Mr. Meek has broad experience in patent litigation, prosecution and licensing. He also handles a variety of corporate transactions centering on technology transfers and intellectual property rights. Mr. Meek has litigated disputes involving intellectual property rights in a wide variety of advanced technologies in federal courts across the country, in the International Trade Commission and in post grant proceedings before the U.S. Patent Office.
In federal courts in Texas and across the country, Mr. Meek litigates patent and trade secret disputes involving a wide range of technologies, from simple consumer products to the most complex software, semiconductor and telecommunications applications. He represents both companies seeking to enforce their intellectual property rights and those accused of infringement.
Mr. Meek prepares and prosecutes patent applications covering a broad spectrum of inventions, including semiconductors and integrated circuits, telecommunications systems, and mainframe, midrange and minicomputer-based software, as well as a wide variety of mechanical and industrial devices. He also does transactional work in the high-tech sector, particularly software licensing, patent enforcement and other corporate transactions involving the perfection, valuation, or transfer of technology assets.
In the biotechnology arena, Mr. Meek has been very active over the years. He has been involved in prosecution and licensing efforts in implantable devices, orthopedic devices, and dental devices. He has also represented companies that deal in gene therapies, genetic diagnostics and chemistries and systems used to support such therapeutic and diagnostic applications.
While he was at Texas A&M, Mr. Meek researched the chemical and electrical aspects of semiconductor device processing, and studied crystallography and chemical and laser processing of semiconductor materials.
Mr. Meek is a frequent speaker on patent, copyright and trademark law. He has spoken and published papers on a range of intellectual property topics, including developments in copyrights, enforcement of patents and copyrights in software, patentability of software and other computer-related inventions, trademarks in the advertising industry and licensing and intellectual property principles for entrepreneurs.
Joe Re, Knobbe Martens
Mr. Re is a nationally recognized trial and appellate attorney, having handled high-stakes technology cases in federal courts throughout the country for over thirty years.
Mr. Re’s trial success before juries has been extraordinary. In two of the most successful patent cases presented to juries, Mr. Re led Knobbe Martens trial teams to help the firm’s longstanding client Masimo protect its ground-breaking patient-monitoring technology. In the first trial, a Los Angeles jury awarded over $134 million against Masimo’s primary rival, Nellcor. Mr. Re successfully persuaded the appellate court to affirm the award and to order the entry of a permanent injunction. Those victories allowed Masimo to settle the case, garner hundreds of millions in damages and ongoing royalties, and go public. In the second trial, Mr. Re and his colleagues asserted Masimo’s patents against patient-monitoring giant Philips before a Delaware jury. That jury awarded Masimo over $466 million and rejected Philips infringement claims for $169 million. The verdict was featured in The National Law Journal‘s “Top Verdicts of 2014” as the top intellectual property verdict. After the district court upheld the verdict, and set additional cases for trial, the parties settled the litigation in a blockbuster deal where Philips paid Masimo $300 million and agreed to a multi-year joint marketing and sales program in which Philips would integrate Masimo technologies in its patient monitors.
Mr. Re is also an experienced appellate advocate, often selected to argue appeals in cases handled by his colleagues and other law firms. He has argued dozens of appeals, the bulk of which were before the United States Court of Appeals of the Federal Circuit on behalf of both patent holders and accused infringers involving all kinds of technologies.
Mr. Re served as the President of the Federal Circuit Bar Association and as a member of the Federal Circuit’s Advisory Council from 2005 to 2014. Mr. Re has also written and spoken extensively on patent law and federal practice and procedure. Since 1990, Mr. Re has been authoring appellate briefs on behalf of the American Intellectual Property Law Association as amicus curiae before the Supreme Court of the United States and various appellate courts. He is currently Second Vice President of that organization.
The National Law Journal has named Mr. Re one of the “100 Most Influential Lawyers in America” and as a “Winning Litigator.” The Daily Journal has repeatedly named Mr. Re as one of the top “100 Leading Lawyers in California.” In 2015, Mr. Re was recognized as “MVP of the Year – Intellectual Property” by Law360. In 2004, The California Lawyer named Re “California Attorney of the Year.” Mr. Re’s numerous awards and honors are detailed below.
Before joining the firm in 1987, Mr. Re served as a law clerk to the Honorable Howard T. Markey, the first Chief Judge of the United States Court of Appeals for the Federal Circuit. He became a partner of the firm in 1990.
Richard L. Green, Stoel Rives
Richard Green practices in Stoel Rives’ Technology & Intellectual Property group and is a registered patent attorney with more than 10 years’ experience working with intellectual property owners and technology companies ranging from biotech to engineering firms. Richard counsels inventors regarding patentability and IP strategy, and drafts and prosecutes utility and design patent applications and trademark registration applications.
Years of experience in commercializing early-stage technologies have given Richard a special understanding of the role sound intellectual property strategy plays in moving ideas along the path from conception to actual impact. Along the way, he has found two practices to be invaluable: being a willing and active listener; and employing a calm, rational approach to solving problems and resolving conflicts. Richard brings these skills to each engagement in his current practice.
Before joining Stoel Rives, Richard was a patent attorney for the Law Offices of R.P. Burrasca and for Thomson Law PLLC (2019), a contracts attorney and a Director of Business & Tech Development in the Center for Technology & Venture Commercialization at the University of Utah (2013-2018) and a patent attorney for Thorpe North & Western LLP (2005-2012).
Timothy C. Houpt, Jones Waldo
More than 40 years of experience representing individuals and businesses in lawsuits before federal and state courts, administrative agencies and in mediations and arbitrations.
Litigation experience including commercial disputes, intellectual property, health insurance, franchising, employment and ERISA.
Mediation and Arbitration, assisting others in resolving their disputes and, in turn, enhancing his skills at representing his own clients.
Law Clerk to Chief Judge Willis Ritter, U.S. District Court, District of Utah, 1977-1978
Adjunct Professor of Law, Trial Advocacy, University of Utah College of Law, 1990-1997
Fellow, American College of Trial Lawyers; Former Chair Utah State Committee
Past President, Watkiss Sutherland Inn of the American Inns of Court
Member, Salt Lake County Bar Association
Member, Utah State Bar
Board Member, Equality Utah, 2001-2007
Former Board Member of various community organizations including Utah Issues, Cornerstone Counseling Center, and University of Utah Alumni Board
Amber Leavitt is Senior Director, Global Intellectual Property for eBay Inc.
Amber Leavitt is Senior Director, Global Intellectual Property for eBay Inc. and its subsidiaries, managing eBay’s technology, patent and open source programs, as well its worldwide portfolio of trademarks, overseeing enforcement of the company’s brands globally through administrative proceedings and litigation, and advising on brand strategy and best practices. Amber also oversees the company’s domain name portfolio management and acquisition programs and manages a global team responsible for oversight of eBay’s Verified Right Owner (VeRO) program and its equivalent notice-and-takedown programs across eBay Inc. subsidiaries worldwide. Amber frequently advises the business on risk mitigation strategies relating to secondary liability issues, counsels on IP licensing issues, supports eBay’s government and external relations programs by participating in various outreach efforts with key stakeholders, rights owners and industry groups on critical issues, as well as providing input on newly proposed domestic and international IP legislation. Amber supports on IP due diligence and related agreements for M&A activity, and also serves as a Business Ethics Officer responsible for evaluating and resolving internal corporate compliance and ethics issues. Prior to eBay, Amber worked as an intellectual property litigation associate at Workman Nydegger. Amber received a bachelor’s degree in Biology from Pepperdine University and her J.D. from Pepperdine University School of Law.
Jason Romrell helps companies navigate complex, high-risk intellectual property disputes at the trial and appellate levels. He represents clients before federal district courts, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and the U.S. Court of Appeals for the Federal Circuit, where he has drafted numerous appeal briefs and has successfully argued as lead counsel.
Jason has experience in all aspects of patent litigation, including discovery, depositions, claim construction, summary judgment, examining witnesses at trial, and oral argument. He also has extensive know-how litigating patent damages, including working with damages experts and Daubert challenges. In addition to his own trial experience, Jason has assisted trial teams as a dedicated appellate specialist, providing valuable guidance in perfecting the record for appeal and crafting jury instructions, motions in limine, and mid- or post-trial motions. He also has experience representing clients before the U.S. Supreme Court.
Jason also counsels clients on obtaining and protecting intellectual property rights, including providing infringement and validity opinions and advising on strategic patent prosecution matters. He has experience in a wide array of industries, including biotechnology, medical devices, software, mobile phones, semiconductors, process engineering, and consumer products. Jason is a former R&D engineer at Becton Dickinson, where he designed and tested advanced drug delivery technology and manufacturing processes.
Jason is an instructor for a Patent Resources Group course covering Federal Circuit law in several areas, including damages and patentable subject matter. He also lectures in the United States and internationally on intellectual property issues, including post-grant review proceedings.