Patent Assertion and Non-Practicing Entities Panel

Location

Lincoln Hall, Northwestern University School of Law

Start Date

28-2-2014 9:00 AM

End Date

28-2-2014 10:15 AM

Description

Please join us for a panel covering all aspects of patent assertion and non-practicing entities and their effect on the patent industry. Our distinguished panelists are as follows:

Michael D. Friedman is Managing Director at Ocean Tomo, overseeing its Investments practice, which is composed of Investment Banking, Asset Management and Investment Research.

Ocean Tomo’s Investment Banking practice brings IP financing, monetization and capital markets solutions to corporations and other intellectual property owners. Recent notable transactions include the leveraged buyout of Mosaid Technologies and the sale of MIPS Technologies’ IP portfolio. Ocean Tomo Asset Management, where Mr. Friedman serves as Chief Investment Officer, engages in public equity, special situations and private equity investing where intellectual property insight drives alpha creation. Investment Research works in parallel with institutional investors, hedge funds and private equity funds advising them on capital allocations to IP-themed investments.

Mr. Friedman holds a JD from the University of Chicago Law School, where he worked as Research Editor of the University of Chicago Legal Forum. He also holds a BS in marine engineering and nautical science from the U.S. Merchant Marine Academy. Mr. Friedman is a member of the board of directors of the Intellectual Property Exchange International, the world’s first IP-focused financial exchange, and a Lecturer in Law at the University of Chicago Law School.

Jay P. Kesan is a Professor at the University of Illinois, College of Lawwhere he is H. Ross & Helen Workman Research Scholar and Director of the Program in Intellectual Property and Technology Law. Professor Kesan received his J.D. summa cum laude from Georgetown University, where he received several awards including Order of the Coif and served as associate editor of the Georgetown Law Journal. After graduation, he clerked for Judge Patrick E. Higginbotham of the United States Court of Appeals for the Fifth Circuit. Prior to attending law school, Jay Kesan – who also holds a Ph.D. in electrical and computer engineering from the University of Texas at Austin – worked as a research scientist at the IBM T.J. Watson Research Center in New York. He is a registered patent attorney and practiced at the former firm of Pennie & Edmonds LLP in the areas of patent litigation and patent prosecution. In addition, he has published numerous scientific papers, and he has obtained several patents in the U.S. and abroad. His recent publications can be found on SSRN (Social Science Research Network) at http://www.ssrn.com. At the University of Illinois, Professor Kesan is appointed in the College of Law, the Institute of Genomic Biology, the Department of Electrical & Computer Engineering, the Information Trust Institute, the Coordinated Science Laboratory, the College of Business, and the Department of Agricultural & Consumer Economics. Professor Kesan continues to be professionally active in the areas of patent litigation and technology entrepreneurship. He has served as a special master in patent litigations, and has served as a technical and legal expert and/or counsel in patent matters. He also serves on the boards of directors/advisors of start-up technology companies.

Matthew Levy is Patent Counsel at the Computer and Communications Industry Association, where he handles legal, policy advocacy, and regulatory matters related to patents and is lead blogger for CCIA’s Patent Progress.

Matt joined the CCIA in 2013 from the IP boutique Cloudigy Law, PLLC. He has also been an associate at Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP and at Hogan & Hartson LLP. He got first-hand experience in both patent prosecution and patent litigation, including defending clients against patent trolls.

Matt graduated from the Georgetown University Law Center magna cum laude with the Order of the Coif, winning the ABA/BNA Award for Excellence in Intellectual Property. He received a Master’s in Computer Science from the University of Kentucky, where he won the Presidential Fellowship twice. His research at UK was in computational complexity theory and artificial intelligence. He received a Bachelor’s degree in Computer Science from the University of Southern Maine.

Before law school, Matt was a software engineer at IBM in Lexington, KY, as part of the team that developed and maintained Lotus Sametime, IBM’s real-time messaging and conferencing product. He is co-inventor on U.S. Patent No. 8,521,830.

Matt is still a software developer in his spare time. He developed an app for the iPad, Federal Local Rules, which is available on the App Store.

Laura Beth Miller is a shareholder at Brinks Gilson & Lione, where she co-chairs the firm’s practice before the U.S. International Trade Commission (“ITC”). With over two decades of trial and arbitration experience, Ms. Miller has handled substantial first and second chair responsibilities. She focuses her practice on patent, trade secret and trademark issues, as well as client counseling on complex commercial issues, including licensing, anti-trust and contract issues affecting business operations, product services and technology. In addition to representing major Fortune 500 companies, she is an adjunct professor at The John Marshall Law School, in Chicago, Illinois. She is a frequent speaker on intellectual property issues both in the United States and abroad, and has written a number of articles on intellectual property topics.

Ms. Miller received her B.A. from the University of Virginia and her J.D. from The College of William and Mary Marshall Wythe School of Law. She is licensed to practice before the United States Supreme Court, the Supreme Court of Illinois, the United States Patent and Trademark Office, and numerous federal courts. She has been recognized as one of Illinois' leading intellectual property lawyers by Chambers USA, and has been named a Leading Intellectual Property Lawyer and one of the Top 50 Women Business Litigation Lawyers in Illinois by the Leading Lawyers Network. She also serves on the management teams at Brinks Gilson & Lione.

K. McNeill Taylor, Jr., is General Counsel at Round Rock Research, LLC. Neill Taylor joined Round Rock in 2012 as Vice President Law and General Counsel responsible for supervising and administering all legal affairs for the company.

Before joining Round Rock, Neill was Corporate Vice President and Chief IP Counsel of Motorola Mobility, Inc., responsible for the intellectual property law and litigation functions. He managed the offensive and defensive patent litigation in support of MMI’s Android smart phones, and the preparation, prosecution and legal support for MMI’s patent portfolio of approximately 24,000 patents and applications worldwide. Neill had a leading role in setting the strategy for and negotiating MMI’s $12.5B acquisition agreement with Google in August 2011.

After joining Motorola, Inc. in 2002, Neill led its efforts to protect intellectual property for a number of Motorola businesses through patent operations, licensing, in-business counseling, defensive matters and litigation. He also served as general counsel in the integration of Symbol Technologies, Inc. after its $4B acquisition by Motorola in January 2007.

Prior to joining Motorola, Neill served as vice president, general counsel and assistant secretary of Corning Cable Systems and Siecor Corp. Before that he held patent counsel positions with Corning Inc. and Schlumberger Ltd., and began his patent law career as an associate with Fish & Neave, a patent litigation firm in New York.

Neill received his law degree from the University of Chicago and a bachelor’s degree in physics and philosophy from Duke University, where he graduated magna cum laude and was an Angier B. Duke scholar.

Andrew W. Williams is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Dr. Williams' practice primarily consists of patent litigation, prosecution, and opinion work in the areas of biotechnology, pharmaceuticals, and chemistry. Dr. Williams is a contributing author to the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. Dr. Williams earned his Ph.D. in Molecular Biophysics and Biochemistry at Yale University. He earned his J.D. from George Washington University Law School with highest honors, and was Managing Editor of the law review.

Schwartz & Kesan Analyzing the Role of NPEs in the Patent System Cornell L Rev Final Jan 2014.pdf (134 kB)
Schwartz & Kesan - Analyzing the Role of NPEs

Unpacking PAEs-Kesan.pdf (424 kB)
Kesan - Unpacking PAEs

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Feb 28th, 9:00 AM Feb 28th, 10:15 AM

Patent Assertion and Non-Practicing Entities Panel

Lincoln Hall, Northwestern University School of Law

Please join us for a panel covering all aspects of patent assertion and non-practicing entities and their effect on the patent industry. Our distinguished panelists are as follows:

Michael D. Friedman is Managing Director at Ocean Tomo, overseeing its Investments practice, which is composed of Investment Banking, Asset Management and Investment Research.

Ocean Tomo’s Investment Banking practice brings IP financing, monetization and capital markets solutions to corporations and other intellectual property owners. Recent notable transactions include the leveraged buyout of Mosaid Technologies and the sale of MIPS Technologies’ IP portfolio. Ocean Tomo Asset Management, where Mr. Friedman serves as Chief Investment Officer, engages in public equity, special situations and private equity investing where intellectual property insight drives alpha creation. Investment Research works in parallel with institutional investors, hedge funds and private equity funds advising them on capital allocations to IP-themed investments.

Mr. Friedman holds a JD from the University of Chicago Law School, where he worked as Research Editor of the University of Chicago Legal Forum. He also holds a BS in marine engineering and nautical science from the U.S. Merchant Marine Academy. Mr. Friedman is a member of the board of directors of the Intellectual Property Exchange International, the world’s first IP-focused financial exchange, and a Lecturer in Law at the University of Chicago Law School.

Jay P. Kesan is a Professor at the University of Illinois, College of Lawwhere he is H. Ross & Helen Workman Research Scholar and Director of the Program in Intellectual Property and Technology Law. Professor Kesan received his J.D. summa cum laude from Georgetown University, where he received several awards including Order of the Coif and served as associate editor of the Georgetown Law Journal. After graduation, he clerked for Judge Patrick E. Higginbotham of the United States Court of Appeals for the Fifth Circuit. Prior to attending law school, Jay Kesan – who also holds a Ph.D. in electrical and computer engineering from the University of Texas at Austin – worked as a research scientist at the IBM T.J. Watson Research Center in New York. He is a registered patent attorney and practiced at the former firm of Pennie & Edmonds LLP in the areas of patent litigation and patent prosecution. In addition, he has published numerous scientific papers, and he has obtained several patents in the U.S. and abroad. His recent publications can be found on SSRN (Social Science Research Network) at http://www.ssrn.com. At the University of Illinois, Professor Kesan is appointed in the College of Law, the Institute of Genomic Biology, the Department of Electrical & Computer Engineering, the Information Trust Institute, the Coordinated Science Laboratory, the College of Business, and the Department of Agricultural & Consumer Economics. Professor Kesan continues to be professionally active in the areas of patent litigation and technology entrepreneurship. He has served as a special master in patent litigations, and has served as a technical and legal expert and/or counsel in patent matters. He also serves on the boards of directors/advisors of start-up technology companies.

Matthew Levy is Patent Counsel at the Computer and Communications Industry Association, where he handles legal, policy advocacy, and regulatory matters related to patents and is lead blogger for CCIA’s Patent Progress.

Matt joined the CCIA in 2013 from the IP boutique Cloudigy Law, PLLC. He has also been an associate at Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP and at Hogan & Hartson LLP. He got first-hand experience in both patent prosecution and patent litigation, including defending clients against patent trolls.

Matt graduated from the Georgetown University Law Center magna cum laude with the Order of the Coif, winning the ABA/BNA Award for Excellence in Intellectual Property. He received a Master’s in Computer Science from the University of Kentucky, where he won the Presidential Fellowship twice. His research at UK was in computational complexity theory and artificial intelligence. He received a Bachelor’s degree in Computer Science from the University of Southern Maine.

Before law school, Matt was a software engineer at IBM in Lexington, KY, as part of the team that developed and maintained Lotus Sametime, IBM’s real-time messaging and conferencing product. He is co-inventor on U.S. Patent No. 8,521,830.

Matt is still a software developer in his spare time. He developed an app for the iPad, Federal Local Rules, which is available on the App Store.

Laura Beth Miller is a shareholder at Brinks Gilson & Lione, where she co-chairs the firm’s practice before the U.S. International Trade Commission (“ITC”). With over two decades of trial and arbitration experience, Ms. Miller has handled substantial first and second chair responsibilities. She focuses her practice on patent, trade secret and trademark issues, as well as client counseling on complex commercial issues, including licensing, anti-trust and contract issues affecting business operations, product services and technology. In addition to representing major Fortune 500 companies, she is an adjunct professor at The John Marshall Law School, in Chicago, Illinois. She is a frequent speaker on intellectual property issues both in the United States and abroad, and has written a number of articles on intellectual property topics.

Ms. Miller received her B.A. from the University of Virginia and her J.D. from The College of William and Mary Marshall Wythe School of Law. She is licensed to practice before the United States Supreme Court, the Supreme Court of Illinois, the United States Patent and Trademark Office, and numerous federal courts. She has been recognized as one of Illinois' leading intellectual property lawyers by Chambers USA, and has been named a Leading Intellectual Property Lawyer and one of the Top 50 Women Business Litigation Lawyers in Illinois by the Leading Lawyers Network. She also serves on the management teams at Brinks Gilson & Lione.

K. McNeill Taylor, Jr., is General Counsel at Round Rock Research, LLC. Neill Taylor joined Round Rock in 2012 as Vice President Law and General Counsel responsible for supervising and administering all legal affairs for the company.

Before joining Round Rock, Neill was Corporate Vice President and Chief IP Counsel of Motorola Mobility, Inc., responsible for the intellectual property law and litigation functions. He managed the offensive and defensive patent litigation in support of MMI’s Android smart phones, and the preparation, prosecution and legal support for MMI’s patent portfolio of approximately 24,000 patents and applications worldwide. Neill had a leading role in setting the strategy for and negotiating MMI’s $12.5B acquisition agreement with Google in August 2011.

After joining Motorola, Inc. in 2002, Neill led its efforts to protect intellectual property for a number of Motorola businesses through patent operations, licensing, in-business counseling, defensive matters and litigation. He also served as general counsel in the integration of Symbol Technologies, Inc. after its $4B acquisition by Motorola in January 2007.

Prior to joining Motorola, Neill served as vice president, general counsel and assistant secretary of Corning Cable Systems and Siecor Corp. Before that he held patent counsel positions with Corning Inc. and Schlumberger Ltd., and began his patent law career as an associate with Fish & Neave, a patent litigation firm in New York.

Neill received his law degree from the University of Chicago and a bachelor’s degree in physics and philosophy from Duke University, where he graduated magna cum laude and was an Angier B. Duke scholar.

Andrew W. Williams is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Dr. Williams' practice primarily consists of patent litigation, prosecution, and opinion work in the areas of biotechnology, pharmaceuticals, and chemistry. Dr. Williams is a contributing author to the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. Dr. Williams earned his Ph.D. in Molecular Biophysics and Biochemistry at Yale University. He earned his J.D. from George Washington University Law School with highest honors, and was Managing Editor of the law review.