IP Counsel Cafe NYC 2017 MASTER.jpeg

The Power of Today's IP Counsel to Drive Change and Lead

New York City Dinner Program
November 9, 2017

Back by popular demand, IP Counsel Café brings leading IP Counsel together for one night in New York City. Join us November 9th for cocktails, dinner, and panel discussions.  Wine, dine, and earn CLE while shaping industry dialogue. We will address current challenges and share insights on best practices, lessons learned, and how we can move forward together as a stronger IP Counsel community. Space is limited.  Register now!

Please note: Most seats are reserved for Corporate Counsel.  Only Corporate Counsel may register for this event.  A limited number of law firms and vendors may attend via sponsorship only.  Please contact us for details: info@ipcounselcafe.com


Cocktail Reception




“How Corporate Counsel Can Improve Patent Quality and the PTAB: Collaborating and Policy Making”

In June 2017, the US Supreme Court granted certiorari in Oil States vs. Greene’s Energy Group, et al.  At issue is whether IPRs are unconstitutional because they extinguish property rights through a non-Article III forum without a jury. In the mean time, the USPTO continues its efforts to ensure high-quality patents are issued.

- What is the status of the Enhanced Patent Quality Initiative and its various pilot programs?
- What are the pros and cons of compact prosecution?
- Tech vs. Pharma: What are the policy considerations around patent quality, the PTAB, and IPRs?
- What is the status of IPRs?  (By November, oral arguments for Oil States case should have occurred.)
- How can companies engage in policy conversations and introduce legislation?


Caren Khoo
Associate General Counsel

Jennifer Moitoso
VP, Legal IP

Laura Sheridan
Senior Patent Counsel

Marian Underweiser
Senior Counsel, IP Law
IBM Research

Valencia Martin Wallace
Deputy Commissioner for Patent Quality

“TC Heartland and the Changing Face of Litigation”

In May 2017, the U.S. Supreme Court issued its decision in TC Heartland LLC v. Kraft Food Group Brands LLC.   The decision in essence requires patent owners to file patent infringement district court actions in the state where the alleged infringer is incorporated, or where the defendant had a regular place of business and where the infringement occurred.

- What litigation trends are we seeing as a result of the TC Heartland decision?
- What impact has this decision had on forum shopping?
- What impact, if any, has this decision had on U.S. litigation vs. European and Chinese litigation?
- Have we seen an increase in ITC filings or an increase in Delaware district court filings?


Robert Maier
Baker Botts

Karin Norton
VP & Senior Counsel
Samsung Electronics

Kevin Prey
IP Counsel

“How to Manage Your IP Portfolio So You Can Easily Identify and Use Your Assets: Simplify M&As, Monetization, and Licensing

Companies have an increasing amount of IP assets and limited resources for IP management.  How do you cost-effectively manage and monetize your IP portfolio without compromising the quality of your work?  Join us for a strategic discussion on the challenges facing IP departments and different approaches for managing/pruning/monetizing your assets.

- How do you get a handle on what you own, how they all fit together, their relative value, and the industry interest for particular assets?
- How do you objectively assess each asset and determine whether to maintain it, invest in it, or allow it to expire?
- How do you make sure the value of your asset is consistent with the value of the corresponding investment?
- How do you rank your assets in a way that makes sense to your innovators and business teams?
- Should you form a patent review committee?
- How to manage your IP in an M&A? How to decide which assets to keep, what’s available for a license?  How to transfer existing licenses?


Brad Hulbert
McDonnell Boehnen Hulbert & Berghoff


Karen Sinclair
Director of IP
Harvard University

Mark Costello
General Patent Counsel

Vladimir Elgort
Vice President, IP Counsel
Sony Corporation of America

Jonathan Foot
Assistant General Counsel
The Mathworks

“Empowering the IP Function: Interacting with Other Departments to Build Value”

- How to structure the IP function?
- How can the IP function successfully interact with legal, litigation, innovation, marketing and sales to bring the most value?
- How does the IP function evolve as the business evolves?
- How to work with your engineers to increase invention disclosures and optimize claim strategies?
-What is the role of the IP function in corporate ventures and interactions with start-ups? How to co-create?


David Barron
Vice President of IP

Mark Beloborodov
Senior Director, IP Portfolio Management

Jasminder Brar
Director of Strategic Development and IP
Titan Medical, Inc.

Jennifer Chung
Assistant General Counsel
Time Inc.

Mark Freeman
Deputy General Counsel
Hollingsworth & Vose

Thank You to Our Sponsors



For more information, contact us at: info@ipcounselcafe.com




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