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IP LAW SUMMIT

EVENT SESSIONS


COMPELLING PRESENTATIONS

William Mansfield

Director of Intellectual Property

ABRO Industries

William Mansfield is the Director of Intellectual Property for ABRO Industries,
Inc. As Director of Intellectual Property, Mr. Mansfield is in charge of
protecting the over 2,000 trademarks ABRO has registered in over 175 countries. 
Mr. Mansfield has himself traveled to 55 foreign countries and handled matters
in over 160.  He earned both his J.D. and M.B.A. from Indiana University. He has
been in the field of intellectual property protection for over 20 years. 



 



Bio

Fighting against Trademark Infringers in China



Brand protection is always a challenge, especially in China. Companies – mostly
manufacturing ones – spend much money opposing and canceling individuals filing
deceitful variations of their marks. Fighting against these counterfeiters is a
costly and time-consuming challenge, so join us in this session to learn
strategies for: 
 * Attacking trademark infringers in China: What companies are doing to protect
   their brands 
 * Using outside counseling and advisors to deal with brand protection in China
    
 * Litigating in China: Costs and alternatives  
 * In which other countries are companies having issues? 



Jeffrey Newton

Principal Counsel

Seagate Technology

For over a quarter-century, Jeff Newton has drafted and negotiated thousands of
complex technology-centric agreements for Hewlett-Packard Company, Agilent
Technologies, Avago Technologies, Broadcom, and now Seagate Technology. He
focuses a substantial part of his practice in intellectual property matters.
Jeff has many years of experience in monetizing and licensing intellectual
property rights. Jeff is licensed to practice law in California and Colorado. He
also earned Master of Business Administration degree and is a Certified
Management Accountant and a Certified Professional in Supply Management. Jeff is
finalizing his LLM in International Business Transactions at the University of
Denver. He loves to exercise; learn about any topic; and speak, read, and write
Spanish.



Bio

Licensing: Build a Bridge, Don’t Dig Yourself a Pit



Licensing intellectual property is replete with nuances in both drafting
particulars and the law. License drafters must consider all relevant modifiers,
including the standard who, what, where, when, why, and how. This presentation
will explore each of these topics. 



Howard C. Lee

Senior Intellectual Property (IP) Counsel

Sun Chemical Corporation

Howard is Senior IP Counsel and is responsible for managing the global IP assets
for Sun Chemical.  A chemist/biochemist by training, Howard is a former Army
officer and his work experiences include being a production supervisor with
Merck, a Primary Examiner with the USPTO,  and a patent agent and associate in
private practice.  His prior in-house experiences include stints as Senior
Patent Counsel for Colgate-Palmolive and Senior IP Counsel for Cristal USA.  The
material for his talk comes from his pre- and post-closing integration
experiences of Sun Chemical’s 11 acquisitions in the last five years.



Bio

IP in M&A Acquisitions



Whether acquiring a small start-up or significantly increasing the size of the
company through a merger or acquisition, IP issues are often overlooked or
misunderstood by those involved with the transaction.  Learn how to maximize the
value of your acquisition. 
 * Pre-acquisition preparation
 * Due diligence practices (pre-signing, post-signing)
 * IP issues outside of patents and trademarks 
 * Post-closing follow-up 



Antun Peakovic

Director, Intellectual Property Americas, NA Automotive Center

Schaeffler

Antun Peakovic is Director of Intellectual Property, Americas at Schaeffler. 
Antun manages the company’s intellectual property portfolio, including patent
portfolio management, dispute management and strategy and brand protection and
anti-counterfeiting work in North and South America as part of Schaeffler’s
global Brand Protection team.   He is licensed to practice law in Michigan and
Ontario, Canada.



Bio

Doing More with Less: Winning Budget Management Strategies Post-COVID



Whether your department became smaller due to the pandemic or your budget was
reduced, one of the biggest challenges for in-house IP law teams is how to get
the job done with fewer resources than previously. Join us in this session to
get tips and ideas on how to thrive in this scenario and discuss:

 * Leveraging technology: Tools available to make IP practice more efficient


 * Finding the right allies: Using outside counseling and consulting   


 * Making tough decisions: Key aspects to consider when analyzing where to cut
   costs 



Gene V. Vinokur

Sr. Patent Counsel

Mitsubishi Electric Research Laboratories (MERL)

Gene V. Vinokur is a Sr. Patent Counsel for Mitsubishi Electric Research
Laboratories (MERL). Gene oversees patent protection of the entire MERL research
and has drafted hundreds of patents in a variety of technical areas such as
artificial intelligence and machine learning, dynamical systems and control,
electronic and photonic devices, robotics, signal processing and communications,
smart grid, data analytics, speech & audio, wireless energy transfer, and
quantum computing. Gene holds B.S and M.S. degrees in Mechanical Engineering
from the National Technical University of Ukraine, M.S. in Computer Science from
Boston University, and J.D. from Suffolk Law School. Gene is a registered U.S.
Patent Attorney and member of the Massachusetts Bar



Bio

Positive Patent Protection of Scientific Research



The goal of scientific research is to generate new knowledge to push the state
of the art further. As a result, there is a gap between research findings and
their utilization in business making the value of the patents protecting the
scientific research uncertain. While patents are written to exclude others from
practicing the claimed invention, without a desire to do such a practicing
patent exclusion right is less valuable. The desire to practice research
findings can be external, i.e., independent from the efforts of the research
organization, or internal steaming from the efforts of the researchers. In this
presentation, we entertain the question of whether patents can and/or should
help researchers to showcase the potential of their research to impact the
business of their parent organization. Considering the complexity of this
question, we may need to alter our views on the structure, context, and
objectives of a patent. The following points will be considered:
 * What is positive patent protection
 * The problem of problem/solution framework
 * Different types of intellectual creativity
 * Chicken-and-egg problem of protecting new knowledge
 * Technical effect vs. customer benefit
 * The power of clarity
 * Matrix of patent transformation
 * Product pipeline of patent drafting



Andrew Kessel

Sr. Counsel, IP Litigation

Gilead Sciences

Andrew Kessel serves as Sr. Counsel, IP Litigation at Gilead Sciences, Inc.
where he handles litigations, IPRs, and other contested matters in the United
States and foreign jurisdictions concerning Gilead’s IP.  Prior to joining
Gilead, Mr. Kessel was an associate in the New York office of Paul Hastings LLP,
focusing primarily on Hatch-Waxman ANDA litigation for pharmaceutical and
biotechnology companies.  Mr. Kessel received a bachelor’s degree in chemical
engineering from Northeastern University and a J.D. from Boston College Law
School.








Bio

Kathy Mekjian

Director, IP Counsel

Thermo Fisher Scientific

Kathy Mekjian joined Thermo Fisher Scientific in 2018 as Director, IP Counsel. 
Her responsibilities include developing and deploying patent strategy for Thermo
Fisher’s Biosciences Division, including global patent procurement, licensing
and technology transfer, patent challenges, and assessment third party
intellectual property.



Prior to joining Thermo Fisher Scientific, Kathy was Intellectual Property
counsel for Cytori Therapeutics, Inc.  Kathy started her legal career as an
associate and then partner at the Intellectual Property boutique firm, Knobbe,
Martens, Olson & Bear. 



Kathy received her law degree from the University of California, Hastings
College of the Law, her Ph.D. in Genetics and Molecular Biology from Emory
University, and her B.S. in Biology from Washington & Lee University.   








Bio

Analyzing the State of the Law in the US on Intellectual Property Industry




The law is constantly changing, especially on what is considered patentable.
Keeping up to date on the latest decisions and trends is vital. Join us in this
session to get insights and debate on: 
 *  Latest reviews of important decisions at the Federal Circuit court level
   affecting IP practice 
 * Patent office updates: How is USPTO looking like under Biden's administration
   – new authorities, policies and style  
 *  What the Google vs Oracle case will mean for software companies 
 *  Which are the best practices in patent prosecution, given the state of the
   law 









John LoForese

Associate Privacy Counsel

Google

John is an Associate Privacy Counsel at Google, where he partners with
engineering, legal, and compliance teams to prepare Google for external
assessments and improve core privacy processes in the face of novel privacy
risks. Prior to joining Google, John worked as an in-house privacy attorney with
Dun & Bradstree.



Bio

Tammy Jih Murray

Director, Privacy Legal

Google

Tamara (“Tammy”) Jih Murray has been at Google since 2010. She is a Director on
the Privacy Legal team, counseling the company on privacy regulatory
investigations, privacy compliance, incident response, and children’s and health
privacy issues. In 2019, she took a brief hiatus from the Privacy Legal team and
served as acting Chief of Staff for Kent Walker, SVP of Global Affairs. Before
joining the Privacy Legal Team, she was a lawyer on the Litigation team and
defended Google in privacy class actions, copyright, trademark, trade secret,
and breach of contract lawsuits. Just before joining Google, Tammy competed on
and won the Amazing Race (a reality TV show on CBS) with her brother. Tammy
graduated from Stanford with a B.A. in International Relations and got her J.D.
from Harvard Law School. She is a mom of two (Cameron, age 6, and Naomi, age 4),
and in her spare time (which there isn’t a lot of), she loves to work out,
travel, and watch reality TV.



Bio

Data Privacy and Security During and After the Pandemic



The pandemic made companies around the world have to address novel privacy legal
risks. This session will reflect on novel data protection risks and issues that
emerged during the pandemic’s unprecedented workflow changes, share insights on
lessons learned, and look ahead to prepare for future disruptions. Along the
way, this session will discuss strategies to identify your organization’s
biggest privacy and security legal risks, drive better input and accountability
from cross-functional teams, and effectively communicate privacy and security
recommendations to leadership.




INTERACTIVE SESSIONS

Antonio Vann

Senior Counsel - Brand, Marketing, Trademark & Copyright

Wells Fargo

Antonio Vann (Tony) is Senior Counsel on the Brand, Marketing, Trademark &
Copyright team at Wells Fargo.  His duties include Social/Digital Media,
Marketing and Advertising review, trademark clearance, strategic IP portfolio
management, enforcement and dispute resolution.  Based in the Washington, DC
area, Tony is an active member of the Legal Department Diversity Equity &
Inclusion Council at Wells Fargo.



Bio

Navigating Advertising Reviews in Light of the Pandemic



Almost all of the processes we apply to do our jobs had to change last year to
cope with COVID-19 restrictions. And making sure advertisements comply with
regulations was not an exception. With office closings, social distancing and
travel ban policies in place, in-house lawyers had to get creative and find ways
to navigate these new challenges. Join us in this interactive session to share
your experience and get new ideas to improve your advertising review process in
the future. 

 



Rouz Tabaddor

Chief IP Counsel

First American Corporation

Mr. Tabaddor has over 20 years of experience practicing law with an emphasis on
intellectual property, litigation, privacy, audit/enforcement and licensing.
Rouz was a former Patent Examiner at the U.S. PTO, an associate at major IP
firms in DC and currently is the Deputy General Counsel of a multi-billion
dollar technology company. He also currently manages the Privacy program and the
licensing team which reviews thousands of customer and vendor licensing
agreements each year for the all the businesses.  He has helped generate over
$50M in revenue for the company through various IP licensing opportunities and
also has helped CoreLogic successfully defend against numerous high stakes IP
litigations. In 2014, Rouz received the General Counsel Rising Star Award by the
Orange County Business Journal. In 2015 - 2020, Rouz was recognized by Managing
IP magazine as an IP Star in the annual IP Stars Handbook. In 2017, Rouz was
nominated for First Chair Top in-house IP Counsel.



Bio

Michael Bishop

General Counsel

AT&T IP Corp.

Michael Bishop is General Counsel of AT&T Intellectual Property LLC, in Atlanta,
Georgia. He formerly served as Chief IP Counsel for BellSouth Corporation. Prior
to joining BellSouth, Mr. Bishop practiced law at King & Spalding, in Atlanta.



Mr. Bishop received his juris doctor in 1990 from The George Washington
University Law School, Washington, D.C., and is a 1985 graduate of the
University of Florida, with a B.A., History, magna cum laude. Mr. Bishop
attended graduate school in history at the University of York, U.K., 1986 - 87.



Mr. Bishop is active in professional and community activities. He is a past
president of the Atlanta Intellectual Property Inn of Court, a member of the
Board of Visitors of the Savannah College of Art & Design (SCAD), serves on the
Board of Trustees of the Hambidge Center for Creative Arts & Sciences, and is a
member of the Board of Directors of the Georgia Campaign for Adolescent Power &
Potential (GCAPP).



Bio

Preparing for the Future of IP Law Industry



Although we all knew we were living in an era of unprecedented technological
disruption, we never imagined that a pandemic would hit the world, accelerating
changes even faster. Like every industry, intellectual property has been
impacted and IP lawyers should be preparing for what is next to fulfill the
challenging task of protecting new inventions and encouraging innovation. Join
us in this session, where a panel of experts will discuss cutting edge aspects
to IP and what the future will bring for the IP law industry, delving into: 




 * Technology landscape and IP landscape; what can we expect in the future?  
   
   




 * How technology will impact the patent space  
   
   




 * How we will work and interact over the next four to five years and what this
   means for the way we do business and the way we focus on technology  
   
   




 * Structuring your IP portfolio for what is next 
   
   



 



Sharon Lai

Senior IP Counsel Americas

Volvo Cars



Bio

Best Practices in Licensing



Having a robust licensing program can be an essential revenue stream for
companies, especially during an economic crisis. But to structure a winning
licensing strategy, legal teams need to consider and carefully work on
identifying potential licensees, carrying out due diligence successfully and
drafting the appropriate scope of the agreement. Join us in this session to take
a deep dive into licensing best practices and discuss rising issues like:

 * Structuring deals and contracts during a pandemic: Force majeure clause and
   other key details to consider 


 * Strategies to structure contingency deals


 * Pivoting from licensing to litigation model 


 * Contract reinforcement in COVID-19 times 



Lopa Sengupta

Senior Counsel, Patent Portfolio

Zoom

Lopa is Zoom’s first patent attorney, focused on building the fast-growing
company’s strategic patent portfolio. She was previously the Vice President of
Patents at TiVo where she headed the global portfolio development and
prosecution team. In her career she has been responsible for developing,
implementing, and executing IP strategies to use patents as a form of licensing
revenue, competitive positioning, and market protection. Her areas of focus
include computer software and hardware, data science, content creation,
advertising, networking, streaming, cloud computing, and graphical interfaces.

Lopa earned her undergraduate degree from UC Davis in Computer Science and
Managerial Economics and her law degree from Santa Clara University. She is a
member of the California Bar and a registered Patent Attorney with the US Patent
and Trademark Office. Lopa is fluent in Bengali and Hindi and can order herself
a chocolate croissant in French. She is also a trained Kathak dancer and enjoys
performing in her spare time. 



Bio

How to Have a Thriving Practice with a Remote IP Team



As the notion of remote work is here to stay, it is time to rethink the way we
frame IP departments. In a post-COVID world, where people will not necessarily
be all together in the same office, how can we overcome the challenge of not
having face-to-face interactions? Join us in this session to explore
professional challenges associated with remote work, such as:
 * Coordinating an IP strategy across various regions while people are working
   from home 
 * Keeping efficient communication between the research team and the legal team
   when working remotely 
 * Capturing the information needed for patent filing from inventors
 * Improving department efficiency with everyone being in different locations 




DYNAMIC MODERATOR

Michael Bishop

General Counsel

AT&T IP Corp.

Preparing for the Future of IP Law Industry



Although we all knew we were living in an era of unprecedented technological
disruption, we never imagined that a pandemic would hit the world, accelerating
changes even faster. Like every industry, intellectual property has been
impacted and IP lawyers should be preparing for what is next to fulfill the
challenging task of protecting new inventions and encouraging innovation. Join
us in this session, where a panel of experts will discuss cutting edge aspects
to IP and what the future will bring for the IP law industry, delving into: 




 * Technology landscape and IP landscape; what can we expect in the future?  
   
   




 * How technology will impact the patent space  
   
   




 * How we will work and interact over the next four to five years and what this
   means for the way we do business and the way we focus on technology  
   
   




 * Structuring your IP portfolio for what is next 
   
   



 





Michael Bishop is General Counsel of AT&T Intellectual Property LLC, in Atlanta,
Georgia. He formerly served as Chief IP Counsel for BellSouth Corporation. Prior
to joining BellSouth, Mr. Bishop practiced law at King & Spalding, in Atlanta.



Mr. Bishop received his juris doctor in 1990 from The George Washington
University Law School, Washington, D.C., and is a 1985 graduate of the
University of Florida, with a B.A., History, magna cum laude. Mr. Bishop
attended graduate school in history at the University of York, U.K., 1986 - 87.



Mr. Bishop is active in professional and community activities. He is a past
president of the Atlanta Intellectual Property Inn of Court, a member of the
Board of Visitors of the Savannah College of Art & Design (SCAD), serves on the
Board of Trustees of the Hambidge Center for Creative Arts & Sciences, and is a
member of the Board of Directors of the Georgia Campaign for Adolescent Power &
Potential (GCAPP).



Day 1

   

 * 11:00 - 13:00
   
   Event Registration

   

 * 12:00 - 13:00
   
   Welcome Lunch

   

 * 13:00 - 13:15
   
   Chairperson's Opening Remarks

   

 * 13:15 - 14:00
   
   Opening Keynote Presentation

   

 * 14:00 - 14:45
   
   Presentation

   

 * 14:45 - 15:00
   
   Networking Break

   

 * 15:00 - 17:00
   
   One-on-One Meetings

   

 * 17:00 - 17:45
   
   Keynote Presentation

   

 * 17:45 - 18:30
   
   Interactive Roundtables

   

 * 19:00 - 19:30
   
   Pre Dinner Drinks

   

 * 19:30 - 22:00
   
   Welcome Dinner

   

Day 2

   

 * 07:00 - 08:00
   
   Networking Breakfast

   

 * 08:00 - 08:45
   
   Keynote Presentation

   

 * 08:45 - 09:30
   
   Presentation

   

 * 09:30 - 09:45
   
   Networking Break

   

 * 09:45 - 11:45
   
   One-on-One Meetings

   

 * 11:45 - 12:30
   
   Presentation

   

 * 12:30 - 13:15
   
   Presentation

   

 * 13:15 - 14:15
   
   Networking Luncheon

   

 * 14:15 - 15:00
   
   Panel Discussion

   

 * 15:00 - 17:00
   
   One-on-One Meetings

   

 * 17:00 - 17:45
   
   Presentation

   

 * 17:45 - 18:30
   
   Presentation

   

 * 19:00 - 21:00
   
   Networking Reception

   

Day 3

   

 * 07:00 - 08:00
   
   Networking Breakfast

   

 * 08:30 - 09:15
   
   Presentation

   

 * 09:15 - 09:30
   
   Networking Break

   

 * 09:30 - 11:00
   
   One-on-One Meetings

   

 * 11:00 - 11:45
   
   Presentation

   

 * 11:45 - 12:30
   
   Closing Keynote Presentation

   

 * 12:30 - 12:45
   
   Chairperson’s Closing Remarks

   

 * 12:45 - 13:45
   
   Networking Luncheon