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

New York City Corporate Counsel Dinner Program
November 9, 2017

As IP assets increasingly become the core value of today's companies, IP Counsel have an unprecedented opportunity to shape law, business, and policy. This opportunity, however, is fraught with uncertainties around IP valuation and a constantly evolving legal landscape.  This Fall, we invite you to join us for cocktails, dinner, and a frank discussion on current industry challenges and how we can move forward together to drive change and lead.

  • What changes at the USPTO do we need to know about?
  • How can we manage an ever-growing IP portfolio so that we can readily use it in different contexts?
  • How can we simplify the evaluation of our assets as the law changes?
  • What expanding role can we play within our organizations as well as the industry at large?

Don't miss this opportunity to meet your peers in NYC on November 9th. Space is limited.  Register now!

PLEASE NOTE:  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:


Cocktail Reception




“How Corporate Counsel Can Unite to Improve the PTAB and Patent Quality”

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

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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?



Steven Klocinski
Sr. Managing Counsel & Sr. IP Counsel


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

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