Corporate Vice President and Chief IP Counsel Microsoft
Erich Andersen is Corporate Vice President and Chief IP Counsel at Microsoft.
He joined Microsoft in 1995 and was based in Paris, France from 2006 – 2009, where he led the EMEA legal and government affairs team. He previously held the positions of Vice President and Deputy General Counsel for the company’s Office and Windows product divisions. In 2016, Andersen was named the most influential figure in global IP by Intellectual Asset Magazine.
Before joining Microsoft, Andersen served as a law clerk on the Ninth Circuit Court of Appeals and the United States District Court. He began his law practice with Davis Wright Tremaine in Seattle, Washington. Andersen graduated summa cum laude from the University of California, Los Angeles in 1986 and from the UCLA School of Law in 1989, where he served as Chief Managing Editor of the law review.
Erika Arner chairs Finnegan's patent prosecution practice. She focuses on patent prosecution management, client counseling, and litigation, with an emphasis on electronic technology, computer software, and the Internet. Ms. Arner has helped clients of all sizes to establish and grow patent portfolios, align intellectual property strategy with business objectives, and adapt to the evolving legal landscape, including the America Invents Act.
Ms. Arner is a well-known authority in the area of business method patents and patent-eligibility jurisprudence. She represented the petitioners before the U.S. Supreme Court in Bilski v. Kappos, and has advised clients on issues related to patentable subject matter before the U.S. Court of Appeals for the Federal Circuit, U.S. district courts, and the U.S. Patent and Trademark Office. She has also served as lead counsel before the Patent Trial and Appeal Board in post-grant review proceedings involving covered business method patents.
Ms. Arner has provided opinions on patentability, infringement, and validity of patents, and drafted or overseen the drafting of more than 150 patent applications for business method, electrical, telecommunications, and software-based technologies. She is a frequent author and lecturer on business method and computer-related patents.
Vice President and Chief Patent Counsel Visa
Tim Bedard is currently the Vice President of Intellectual Property Strategy for Visa Inc. In this role, he is responsible for all aspects of Visa’s IP strategy and policy including patent portfolio development and management. Prior to joining Visa, he spent 10 years at Johnson & Johnson where he established J&J’s Intellectual Property Center of Excellence. In this role he was responsible for managing the patent portfolios and patent strategy for J&J’s Advanced Sterilization Products, Ethicon Surgical Care, Cordis, Biosurgery, Biosense Webster, Mentor and SterilMed franchises. Prior to joining J&J, Tim was a patent litigator at K&L Gates LLP where he litigated and tried patent cases related to ion implantation, breast implants and steel framing. Tim began his professional career as a naval officer serving 8 years in the Navy initially flying the P-3 Orion aircraft and later serving as an aide-de-camp to the Chairman of the Joint Chiefs of Staff. Tim holds a BS in Industrial Engineering from the University of Pittsburgh, a Juris Doctor from the Duquesne University School of Law and an MBA from the Yale University School of Management.
Jeffrey Berkowitz, managing partner of the firm's Reston office, practices litigation, client counseling, and patent prosecution involving software and telecommunications-related inventions. He has broad experience in all aspects of patent litigation, including pre-filing investigations, discovery, preliminary injunctions, and drafting and arguing claim construction and summary judgment motions.
Mr. Berkowitz provides opinions on patentability, infringement, and validity of patents. He has drafted and overseen the drafting of thousands of patent applications for electrical, electronics, telecommunications, and software-based technologies. Patent portfolios he has managed protect a range of technologies, including adaptive distributed systems; code mobility; remote network resource leasing; network self-healing; runtime service discovery mechanisms; transaction management services; features of set-top boxes and modems; mobile devices, including many standards essential patents; and software applications, including ecommerce, FinTech, cybersecurity, search, and social networking.
Mr. Berkowitz regularly speaks and writes on current topics in intellectual property law. He has published, presented, and taught classes on software patents, AIA post-grant proceedings, and section 101 patent eligibility at programs sponsored by various trade and academic organizations, including World Congress, IPR Resources, ACC Israel, Practicing Law Institute (former program chair), Glasser LegalWorks Seminars (former program chair), Patent Resources Group (PRG), IBC, and EuroForum.
Co-Chair, Global Intellectual Property & Technology Practice and Co-Chair, Global Patent Litigation Group Greenberg Traurig
Scott J. Bornstein is Co-Chair of the firm's Global Intellectual Property & Technology Practice, Co-Chair of the firm's Global Patent Litigation Group, and serves on the firm's Executive Committee. Scott has deep patent trial experience and has served as lead counsel in more than 100 patent litigations. He has broad experience in patent, trademark and copyright litigation, licensing and general IP counseling for a wide variety of national and international clients. Scott also has wide-ranging experience working with clients to develop comprehensive prosecution and enforcement strategies which support their business objectives.
Scott's clients are involved in a variety of technologies and industry sectors, including aerospace, automotive, avionics, biotechnology, business methods, chemical, consumer products, eCommerce, electronics, energy and filtration, financial services, food and beverage, Hatch-Waxman, materials science, medical devices, metallurgy, pharmaceutical, plastics, software and telecommunications industries. He has also served as Chair of the IP Section of the American Association of Pharmaceutical Scientists.
Scott serves as an adjunct professor at New York University Stern School of Business. He also serves as an advisor to the ‘Creative Destruction Lab – New York City,’ a competitive seed-stage program focused on maximizing the probability of success of massively-scalable science and technology startups.
Hon. Garrett E. Brown, Jr.
Retired U.S. District Chief Judge; ADR Neutral, Mediator, and Arbitrator JAMS
Retired Chief Judge Garrett E. Brown, Jr. joined JAMS in 2012, after serving more than a quarter-century on the bench of the United States District Court for the District of New Jer-sey — including six years as Chief Judge. As a JAMS Neutral, Judge Brown facilitates prompt, efficient, and economical resolution of commercial disputes through mediation, arbi-tration, special mastership and neutral analysis.
Before taking the federal bench in 1985, Judge Brown tried criminal and civil cases to jury verdicts as both an Assistant United States Attorney in the District of New Jersey, and as a litigator in private practice. As a United States District Judge, he presided over criminal and civil cases, which collectively spanned the breadth of federal subject-matter jurisdiction. Chief Judge Brown is renowned for his expertise in complex commercial litigation, particularly with-in the realm of intellectual property, and notably pharmaceutical patents.
During his service as Chief Judge, in addition to leading a large metropolitan court with more than three-dozen judicial officers, Judge Brown maintained a full civil caseload, assisted other judges with complex cases, and tried numerous cases per year while settling many, many more.
Chief Judge Brown is a graduate of Lafayette College and Duke University School of Law.
Hon. Joy Flowers Conti
Chief Judge United States District Court, Western District of Pennsylvania
Judge Conti is the Chief Judge of the United States District Court for the Western District of Pennsylvania. Judge Conti currently is a judicial advisor and a member of the steering committee for the Sedona Conference’s Working Group 10 on Patent Litigation Best Practices. Judge Conti was a member of the Judicial Conference of the United States, and is the former Chair of the Judicial Conference Committee on the Administration of the Bankruptcy System. She served as the Chair of the Local Rules Committee for the United States District Court for the Western District of Pennsylvania from 2003 to September 2010 and as the Chair of the Alternative Dispute Resolution Committee for the United States District Court for the Western District of Pennsylvania from September 2010 until September 2013. She received the American Inns of Court 2009 Professionalism Award for the Third Circuit and the W. Edward Sell Business Lawyer Award on November 15, 2016.
Prior to her appointment, she was a shareholder with the Pittsburgh office of Buchanan Ingersoll, Professional Corporation, now Buchanan Ingersoll Rooney (“Buchanan”), and prior to joining Buchanan she was a partner with Kirkpatrick, Lockhart, Johnson & Hutchison, now known as K&L Gates LLP. Judge Conti was a Professor of Law at Duquesne University and taught courses on civil procedure, corporations, corporate finance, corporate reorganizations and bankruptcy. She has authored articles on e-discovery and is a frequent lecturer at seminars on e-discovery. Judge Conti is a former President of the Allegheny County Bar Association (1993), is listed in Who’s Who in America and Who’s Who in American Law, and while practicing law was listed in The Best Lawyers in America. She is a member of the prestigious American Law Institute and the American College of Bankruptcy. She also was Governor-at-Large of the Pennsylvania Bar Association (“PBA”), was the Chair of the PBA’s Business Law Section, and received the PBA’s 1995 Anne X. Alpern Award, which annually recognizes one outstanding woman lawyer. She was the President of the Third Circuit Historical Society. Judge Conti is a summa cum laude graduate of the Duquesne University School of Law, where she served as Editor-in-Chief of the Duquesne Law Review. She also received the American Inns of Court 2009 Professionalism Award for the Third Circuit and the W. Edward Sell Business Lawyer Award on November 15, 2016.
Kevin J. Culligan
Shareholder Maynard, Cooper, & Gale
Kevin Culligan is a Shareholder and member of Maynard Cooper’s Intellectual Property
Litigation and Intellectual Property Protection practice groups. He has focused his
practice for more than 35 years on the litigation, trial, arbitration and appeal of
intellectual property matters, concentrating primarily on patent, trade secret and unfair
competition cases in the fields of pharmaceuticals, medical devices, biotechnology and
financial services. Kevin also has extensive licensing experience, including the
development and execution of licensing and enforcement programs involving patent
portfolios that include hundreds of patents.
In 2014 and 2016, Kevin was honored as one of the best of the best patent litigators in
the country and in 2014 as one of the 30 best practitioners in the field worldwide by The
Legal Media Group. He has also been recognized for his patent litigation work by
Managing Intellectual Property and IAM, and was named as one of the preeminent life
sciences practitioners in North America in Euromoney LMG’s 2012 and 2014 editions
of “Life Sciences”.
Kevin is a frequent lecturer on various intellectual property law matters, and he served as
a faculty member for organizations that include the Practising Law Institute and the
American Conference Institute.
Before joining Maynard Cooper & Gale, Culligan was a partner in Goodwin Procter’s IP
Litigation Group, Patent Litigation Practice and FinTech Practice. He earned an A.B. in
Biology from Colgate University in 1976 and a J.D. from Cornell Law School in 1980, and
was a partner for many years at Fish & Neave before that patent litigation firm merged
with another firm in 2005.
Assistant General Counsel The Hartford Financial Services Group
David T. Cunningham is Vice President, Assistant General Counsel and Director of Intellectual Property and Privacy Law at The Hartford Financial Services Group, Inc. The Hartford is a leader in property and casualty insurance, group benefits and mutual funds. David handles all facets of intellectual property law including patent prosecution, litigation, licensing and IP transactional work. He also is the lead lawyer supporting Privacy Law matters at The Hartford. Prior to joining The Hartford in 2007, David was Senior Patent Counsel for Hitachi America, Ltd. for eight years working on intellectual property matters including patent prosecution, licensing and litigation. David started his career as a patent attorney with the Brumbaugh Graves/Baker Botts law firm in their intellectual property group working for clients in many areas. David obtained his law degree from the University of Virginia Law School and his electrical engineering degree magna cum laude from Princeton University. He is a registered Patent Attorney with the U.S. Patent and Trademark Office. David has been recognized three times in Inside Counsel Magazine’s annual Top Ten Most Innovative Legal Departments.
Tanguy de Carbonnieres
Deputy General Counsel and Managing Director
Tanguy de Carbonnières is Deputy General Counsel and Managing Director in Fannie Mae's Legal Department, in Washington, DC.
Tanguy leads the teams in charge of advising Fannie Mae's internal clients on Intellectual Property, Information Security, Cybersecurity, Privacy, Procurement, Social Media, Data licensing and management, and IT governance-related matters.
Prior to joining Fannie Mae, Tanguy worked in the DC office of Wilmer, Cutler and Pickering, now WilmerHale, focusing on cross border transactions, transnational litigation and arbitration. Prior to relocating in the United States, Tanguy practiced law in Paris, France for six years, primarily litigating real estate and corporate matters.
Tanguy is a frequent speaker on topics relating to IP management in the financial services industry.
Tanguy is admitted in New York, the District of Columbia, and Paris, France (inactive).
Tanguy received an LL.M. from American University on international business transactions, focusing on international intellectual property protection, and a maîtrise en droit (JD equivalent) from the University of Paris II Assas.
Colm is currently General Counsel, Intellectual Property at MasterCard in Purchase, New York. In his current position, Colm has global responsibility for intellectual property (IP) and related technology legal matters for MasterCard. He oversees a team of 18 professionals that handle MasterCard’s trademarks, patents, copyrights, licensing and technology transfers on a worldwide basis. MasterCard’s IP portfolio comprises over 13,000 trademarks in 220 countries and over 3,500 patents and patent applications worldwide.
Colm joined MasterCard in 1995 as Vice President and Senior Counsel. Prior to his employment with MasterCard, Colm was previously Senior Counsel with PepsiCo, Inc., where he had responsibility for trademark and related intellectual property matters for PepsiCo’s beverage divisions. Colm previously was associated with the law firms Skadden, Arps, Slate, Meagher & Flom and Morgan & Finnegan.
Colm has been recognized by a number of industry awards and honors. Colm was named as “In House Counsel of the Year” by the World Trademark Review (WTR) in May 2016 at the International Trademark Association (INTA) Annual Meeting. In May 2015, the MasterCard IP group received the “Financial & Professional Services Team of the Year” award by the WTR. In June 2017, Mastercard’s IP team won an award as “Best IP Department, Overall Strategy” at the International General Counsel Awards event of the International Legal Alliance Summit and Awards (ILASA). Colm was also named as an “IP Star” by Managing Intellectual Property in 2015, 2016 and 2017. Colm is a frequent speaker at IP industry conferences and seminars.
Colm is a graduate of Fordham University Law School in New York City. He has a degree in biological sciences from Bennington College and participated in research at a number of laboratories, including receiving a National Science Foundation research grant at Princeton University. Colm is a member of the New York and patent bars. He is also a member of the ABA and American Corporate Counsel Association (ACCA), and was President of the Westchester/Southern Connecticut Chapter of ACCA (WESFACCA) during 2014 - 2015. He also participates as a founding member of The Conference Board’s Chief IP Officer Council.
Assistant General Counsel CBOE Global Markets
Sarah Duda is Intellectual Property Counsel for the Chicago Board Options Exchange (CBOE). In her current role at CBOE, Ms. Duda advises on a broad range of matters, including: domestic and international IP protections, misappropriation, licensing, and litigation. Ms. Duda also advises business groups at CBOE with regard to aspects of innovation and the impact of IP on business ventures.
Jon Gordon is a partner in the New York office of Haug Partners. He has extensive experience practicing patent law, with particular expertise in prosecuting patents related to computers, networks, telecommunications, medical information systems, financial applications, and blockchains.
In his practice, Jon takes advantage of his broad and deep technical expertise. He taught himself to program at age 12 and went on to earn a degree in computer science. He spent several years actively developing, maintaining, and extending multi-tiered intranet and Internet applications. His work experience also includes time as a trader on a derivatives floor.
Jon is involved in all aspects of patent practice for both foreign and domestic clients, including patent litigation, patent prosecution, due diligence, client counseling, and providing opinions of counsel.
Vice President and Chief IP Counsel American Express
Maxine Graham is currently VP & Chief IP Counsel at American Express Company. In her current position, Ms. Graham has global responsibility for intellectual property (IP) matters for Amex. She leads the Intellectual Property Law & Strategy team that handles Amex’s trademarks, patents, copyrights, licensing, M&A, commercial transactions, litigation, and intellectual property strategy. Prior to joining American Express, Ms. Graham was patent litigator at Kirkland & Ellis, LLP. Ms. Graham is a member of the New York bar and is a registered patent attorney with the U.S. Patent & Trademark Office. She graduated with a J.D. from the University of Virginia Law School, has a B.S. in Electrical Engineering from the Georgia Institute of Technology, and a B.S. in Physics from Furman University.
Group Director, Technology Center 3600 USPTO
Tariq joined the USPTO in 1992 as a patent examiner and in 2012 became a Group Director for Technology Center 2600 specializing in Communications and is now a Group Director in Business Methods for TC 3600. Tariq was part of the team to launch the Post Prosecution Pilot (P3), led efforts to revamp the initial After Final Consideration Pilot to 2.0 and is a lead on Interview Practice team that provides support and training for internal and external stakeholders on interview practice. Prior to USPTO, he worked in software development at Computer Sciences Corporation for over three years. Tariq earned a bachelor’s degree in physics from the College of William and Mary with graduate work in electrical engineering from Virginia Tech.
Under Secretary of Commerce for Intellectual Property and Director USPTO
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 President, through 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 J.D. from the UCLA School of Law. He also has a M.S. in Mechanical Engineering and a B.S. 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.
Ziad Katul is a seasoned lawyer with expertise in intellectual property (IP), technology, outsourcing, data protection/information security, cloud computing and offshoring. He is a founding member of the IP Centre of Excellence at BMO, where he is responsible for building the enterprise IP framework and promoting IP strategy adoption, realizing on IP opportunities in BMO’s technological transformation and securing BMO’s innovation brand. At BMO, he also leads complex technology transactions and navigates related regulatory issues. Before joining BMO, Ziad was a partner in the IP Group at BLG, where his practice ran the gamut of protecting/managing, monetizing/exploiting, and enforcing IP (patents, trademarks, copyright, trade secrets) in a variety of commercial settings across many industries. Ziad’s first exposure to the intersection of innovation and IP was in graduate school, where he was investigating the long-term effects of prolonged clinical paralysis on the neuromuscular junction.
Managing Director, Chief Intellectual Property Counsel CME Group
Matthew Kelly is the Managing Director and Chief Intellectual Property Counsel with the Chicago Mercantile Exchange, the world’s largest and most diverse derivatives exchange. He is a patent attorney and is in charge of all aspects of intellectual property including the patent and trademarks prosecution, intellectual property licensing, acquisitions and litigation.
Assistant General Counsel, IP Mastercard
Mr. Klocinski is Senior Managing Counsel and Senior Intellectual Property Counsel at MasterCard Worldwide, a global technology company and payments industry leader.
As an intellectual property professional with more than 25 years of experience cutting across the private and public sectors, Mr. Klocinski has successfully worked with a broad range of technologies including computer software, electronics, advanced business processes, telecommunications, semiconductors and acoustics. Mr. Klocinski's specialties include intellectual property strategy (with an emphasis on patent portfolio building and management), intellectual property risk mitigation and dispute resolution and treatment of intellectual property in commercial agreements.
Prior to joining MasterCard in March 2012, Mr. Klocinski was a Vice-President and Assistant General Counsel at CA, Inc. for six years. As Assistant General Counsel, he designed and implemented the company's patent program, directed the preparation and prosecution of patent applications, managed intellectual property risk mitigation, supported IP issues in mergers and acquisitions and litigation, managed trademark clearance, filing, prosecution and dispute resolution and managed CA’s copyright program.
For three years, starting in 2001, Mr. Klocinski was Assistant General Counsel at Capital One Financial. His responsibilities included, managing invention intake, preparing and prosecuting of patent applications, designing and implementing patent strategy, managing patent risk mitigation, and consulting on patent issues in mergers and acquisitions.
In addition to his corporate experience, Mr. Klocinski has also practiced with the Washington D.C. offices of Baker Botts, Hunton & Williams, and Finnegan, Henderson, Farabow, Garrett & Dunner. Mr. Klocinski's private practice experience focused on patent prosecution, patent portfolio management, patent litigation and risk mitigation and general intellectual property client counseling.
Prior to and while enrolled in Law School at Georgetown University Law Center, Mr. Klocinski worked as an Examiner at the U.S. Patent and Trademark Office where he researched and prepared official actions and appeal briefs for United States patent applications and PCT applications related to image analysis.
Mr. Klocinski holds a J.D. from Georgetown Law School and a B.S. in Electrical Engineering from Ohio State University.
Deputy Chair, Patent Litigation and Counseling Loeb & Loeb
Bill Kramer is an intellectual property attorney, focusing his practice on patent prosecution, patent threat analysis/response and intellectual property transfers. He has broad knowledge of many technical subjects, with particular experience in algorithm-based computer software, video distribution systems, cloud computing, artificial intelligence software, modern currency forms and transfers, and blockchain technologies.
Bill leverages his technical aptitude and successful experience to help clients build and strategically manage their IP portfolios. His knowledge of the U.S. Patent Office allows him to address new threats and opportunities to achieve best-case scenarios for his clients, especially in the face of ever-changing policies and procedures for patent applications.
He has significant experience creating and managing large volumes of patent prosecution cases in the U.S. and around the world for clients ranging from large publicly traded companies to startups. He has created a smooth-running patent-creation machine, taking the worry out of tiny details that can make or break a portfolio.
Bill is active in rendering patentability, right-to-use, infringement and invalidity opinions. He assists in patent litigation to find the technical issues that often win or lose cases and to explain those issues in a way that can be understood by virtually any audience, from board members to PhDs. His ability to quickly find fatal flaws in patents saves his clients significant time and money. He has also created numerous joint defense groups to combat industrywide patent attacks by nonpracticing entities.
“My love for technology, combined with my finance background, allows me to help clients not only create assets, but also make sense of how those assets will help their businesses financially in the future.”
Bill has represented clients in a wide range of technology areas, including big data analytics and data optimization, targeted advertising, enterprise data storage, implantable communication and diagnostic devices, voice over IP, video distribution systems, video game system software, business accounting software, operating systems, data security, speech-to-text algorithms, and computer and interactive mapping. He has also worked with virtual reality and immersive technologies; peer-to-peer network creation, security, user interface and scalability; and complex financial products.
When he’s not practicing law, Bill enjoys golfing, spending time with family, and learning about new technologies and how he can apply that knowledge to his clients’ businesses.
Brad Lawrence focuses his practice on intellectual property (IP) counseling
including the protection of clients' inventions through carefully planned patent
procurement, integrated with other strategic considerations, including
development of licensing strategies and analysis of the IP and product positions
of others. Brad also devotes a significant amount of time to performing
product clearances in the form of non-infringement and/or invalidity opinions.
He also has significant prior litigation experience that includes many aspects of
patent, trademark, and trade secret litigation as well as licensing and other
extrajudicial resolution of IP disputes.
Assistant General Counsel, IP Equifax
Elizabeth Lester is Intellectual Property Counsel at Equifax, where she manages the global intellectual property portfolio and provides counseling on intellectual property issues in transactional matters. Prior to joining Equifax, Elizabeth was an associate at Sutherland Asbill & Brennan LLP, where her practice was focused on patent prosecution and intellectual property transactions. Elizabeth received a J.D. from Georgia State University, a M.S. in chemical engineering from Georgia Institute of Technology, and a B.S. in chemical engineering from the University of Kentucky. She is actively involved in various professional and community activities, including serving as a board member of the Intellectual Property Owners Association, a Girl Scout Troop leader, and raising money for the Leukemia & Lymphoma Society through Team in Training.
Charles R. Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.
Fluent in technical jargon spoken by inventors and clients, patentese spoken at the PTO, legalese spoken by courts and attorneys, business jargon spoken by management, and plain English, he seeks to translate complex subject matter into terms all can understand.
The author of The Corporate Insider's Guide to U.S. Patent Practice, Mr. Macedo has been cited as an authority on intellectual property issues by the Wall Street Journal, Dow Jones, BNA, Bloomberg, Inside Counsel, Managing Intellectual Property, Technology Transfer Tactics, IP Law 360, JIPLP and other media.
His patent experience encompasses a broad range of industries and products including Internet, e-commerce, content delivery and computer-enabled inventions; financial services, transaction processing, electronic wallets and virtual or synthetic currency, including Bitcoins and all other Alt-coins; Software-As-A-Service; social media; semiconductor and photomasks; green energy and power, including wind generators and batteries; construction materials and structures; life sciences; and apparel, to name a few. Mr. Macedo also has enforced and defended against trademark assertions and/or opposition proceedings for financial service providers, casinos and resorts, non-profit organizations, celebrities; cosmetic companies, luxury retailers of designer handbags and retail chains. He also advises clients on IP contracts, licensing, confidentiality agreements, terms of services and IP acquisitions and transfers.
By identifying vulnerabilities and considering variations on design concepts, Mr. Macedo helps clients develop strategies to maximize protection and prevent infringement challenges. He frequently serves as special counsel to companies seeking an IP strategy, not just a patent; to IP holders in anticipation of litigation and as coordinating counsel for multiple law firms.
He is consistently at the forefront of complex and emerging patent issues in the financial services and transaction processing industries. Clients ranging from international banks, broker dealers and new business ventures call on Mr. Macedo to develop patent strategies, prepare patents, assert rights and defend against infringement claims. His work includes developing and implementing patent strategies associated with such cutting edge financial innovations like bitcoins and other synthetic currency or math-based assets. His experience includes successfully defending the Discover Card division of Morgan Stanley from one of the earliest business method patent assertions, and leading the team to implement and enforce the deposit sweep patent portfolio for Island Intellectual Property LLC. He has also helped clients implementing insurance related products seek patent and other intellectual property protection.
His experience before the Patent Trial and Appeals Board and its predecessor Board of Patent Appeals and Interferences, including acting as leading counsel in inter partes review and covered business method proceedings, as well as advising and analyzing in the background. He also has represented patent owners in ex parte appeals, including reversals of obviousness rejections in Ex parte Buarque de Macedo.
Mr. Macedo writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. As Co-Chair of the Amicus Committee of the New York Intellectual Property Law Association, Mr. Macedo has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Cuozzo (at Federal Circuit en banc petition, Supreme Court petition for certiorari and merits brief stage), Highmark and Octane (at the Supreme Court), Kimble v. Marvel (at the Supreme Court), Mayo v. Prometheus (at the Supreme Court), Association of Molecular Pathology v. Myriad Genetics Inc. (at the Supreme Court and the Federal Circuit), CLS Bank Int’l v. Alice (at the Federal Circuit en banc and at the Supreme Court in the petition and merits brief stage), and Akamai (at the Federal Circuit on remand). His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Federal Circuit and for certiorari to the U.S. Supreme Court on behalf of various clients.
He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989–1990. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo is included in Super Lawyers, IP Stars and Million Dollar Verdict. He also was a member of the Editorial Board for the American Intellectual Property Law Association Quarterly Journal and currently serves on the Editorial Board for Journal of Intellectual Property Law and Practice published by Oxford University Press.
Litigation Counsel and IP Counsel Miami International Holdings
Jordan is focused on the litigation and intellectual property of Miami International Holdings, Inc. and its subsidiaries, including MIAX International Securities Exchange, LLC and MIAX PEARL, LLC. Prior to joining Miami International Holdings, Jordan served as Chief Intellectual Property Counsel for USAA (2010-2017), Intellectual Property Counsel of Chicago Board Options Exchange, Inc. (2005-2010), and was in private practice (1999-2005). Jordan holds a B.S. in Biology from the University of Kansas, a M.S. in Entomology (concentration in population genetics) from the University of Kansas, and a J.D. from the University of Kansas School of Law.
Senior Vice President and Senior Counsel, Technology and Intellectual Property Synchrony
Dan Pirolo is currently the Senior Vice President and Senior Counsel for Intellectual Property and Technology for Synchrony Financial. In that role, he is responsible for managing all aspects of Synchrony's IP program, including patent portfolio development and enforcement. Prior to joining Synchrony, Dan was a senior IP litigator for the General Electric Company, and helped form a new global group to manage IP litigation across all GE businesses. Before joing GE, Dan was a complex commercial litigator for Fulbright & Jaworski in Houston, Texas, where he represented clients in a variety of disputes including intellectual property, antitrust, securities laws, and corporate governance. Dan holds a BS in Geology from Texas A&M University and a JD from Notre Dame Law School.
W. Karl Renner is a Principal in the Washington, D.C. office of Fish & Richardson P.C. Mr. Renner co-chairs the firm’s Post-Grant Practice Group, and he serves on the firm’s Management Committee. His practice emphasizes client counseling, strategic patent prosecution, contentious inter and ex parte post-grant and reissue work, due diligence and freedom-to-operate investigations, and patent-related opinion work. In this practice, Mr. Renner has provided the strategic direction for well over 300 AIA post-grant matters, challenging and defending patents, most commonly in coordination with litigation counsel amidst co-pending disputes. Recently, Mr. Renner was elected to serve as an interim director of the PTAB Bar Association, the first national bar association of its kind to form in more than 30 years. The PTAB Bar Association intends to establish best practices for the unique practice and skills required before the Patent Trial and Appeal Board.
Managing Director and Head of Legal and IP Cote Capital
Rodger is Managing Director, Strategic Partnerships at Cote Capital in New York City. Cote Capital focuses, among other things, on making IP capital investments in early-stage emerging companies.
Rodger honed his intellectual property expertise during twelve and a half years as an IP litigator at the Orrick Herrington & Sutcliffe law firm in New York City, where he was a partner.
Rodger also has extensive in-house tech experience. Just prior to joining Cote Capital, Rodger spent four years at Canon (a top five U.S. patent holder for the past thirty-one years consecutively), advising senior management in Asia, Europe, and the U.S. on IP protection, licensing, and litigation issues. While at Canon, Rodger worked with IP colleagues from Google, Dropbox, and others to help spearhead launch and growth of the License On Transfer (“LOT”) Network, where he remains an active Advisory Board Member.
Chair, Global Patent Prosecution Group Greenberg Traurig
Barry J. Schindler is the Chair of Greenberg Traurig's Global Patent Prosecution Group -- a group of approximately 4,000 domestic and 4,100 foreign applications pending and over 100 attorneys, who are registered with the USPTO. Barry has more than twenty-five years of legal experience in all aspects of pharmaceutical and chemical patent prosecution -- representing numerous major pharmaceutical and chemical companies regarding patents relating to small molecules and synthetic compounds.
Barry has helped companies of all sizes build and manage large patent portfolios, develop in-house procedures, and formulate intellectual property strategies. Barry positions clients to gain a competitive advantage by identifying patentable subject matter and drafting claims and providing patent opinions in such a way that infringement becomes possible to prove.
Barry has worked in numerous patent litigations to develop an overall case strategy that involves complementing a litigation strategy with actions at the USPTO. Barry has been involved in dozens of reexamination proceedings and over 50 IPR proceedings at the USPTO. He has worked with the USPTO in setting up numerous technical fairs, seminars and meetings to further the education of the Examiners.
Barry, an active member of the firm's Israel Practice also focuses his practice on managing the patent portfolio for numerous innovative Israeli start-ups. Barry is a frequent business visitor to Israel and is very involved with the local tech community.
Stephen Schreiner is a partner in Goodwin’s IP Litigation Group and member of its Patent Litigation Practice. He focuses on all aspects of intellectual property law, including patent litigation, patent portfolio development, counseling and due diligence related to financial services, cryptography, software, e-commerce, business methods, digital television, signal processing, telecommunications, interactive media, the Internet and other areas.
In addition to counseling clients on patent infringement and trade secrets cases, Mr. Schreiner maintains a significant patent prosecution docket with hundreds of applications on financial services inventions and has experience with extra-judicial patent challenge procedures in the PTO under the America Invents Act legislation, including Inter Partes Review, Covered Business Method Review and Ex Parte Reexamination.
Before becoming a lawyer, Mr. Schreiner spent eight years working for the Department of Navy developing and testing digital signal processing algorithms. Mr. Schreiner has been recognized as one of the world’s leading IP and patent practitioners by Intellectual Asset Management and The Legal 500 and is a key contributor to Goodwin’s Founders Workbench, an online resource for start-ups, emerging companies and the entrepreneurial community.
Leslie Spencer, co-chair of the firm’s diversity committee, is a partner in the IP litigation practice working in the firm’s New York and West Coast offices. Leslie counsels clients on intellectual property matters involving software, computer networks and security, semiconductors, FinTech, blockchain and artificial intelligence, among other technologies. She has over 15 years of experience litigating patent disputes in federal district court, including at Markman hearing, trial and appeal to the U.S. Court of Appeals for the Federal Circuit. Leslie is also a registered patent attorney, and appears before the Patent Trial and Appeal Board. Her practice also involves advising clients on IP asset protection, IP transactions and freedom-to-operate opinions. Leslie has been recognized by New York Law Journal as one of the “Top Women in Law 2016” and among New York Metro Super Lawyers since 2013. Prior to practicing law, Leslie worked for financial services and defense technology companies, and supervised the development of a smart card-based secure transaction system. Leslie has a J.D. from New York University School of Law, an MBA from the Stephen M. Ross School of Business at the University of Michigan, and a BS in Computer Science and Engineering from MIT.
Executive, Deputy General Counsel CoreLogic
Mr. Tabaddor has over 15 years experience in intellectual property law. Including being a former Patent Examiner at the United States Patent & Trademark Office. Rouz worked for major intellectual property law firms in Washington D.C. prosecuting and managing patent portfolios of Fortune 300 companies to small start up companies. He also actively participated in patent and trademark litigation in various federal courts throughout the U.S. Furthermore, Rouz spent 1 year living in Taiwan assisting taiwanese electronic companies with protection of their intellectual property rights. He spent time conducting lectures throughout Taiwan and other southeastern asian countries. Currently, Mr. Tabaddor is the Intellectual Property Counsel for a spin-off of a Fortune 300 company, where is head of the Intellectual Property Program and is responsible for monitoring all patent, trademark, copyright and other intellectual property rights in the U.S and throughout the world.
Jurisdictions: Maryland, Virginia, Washington DC and California.
Michael T. Zoppo is a Principal in Fish & Richardson’s New York office. A registered patent lawyer, his practice focuses on the trial and appeal of patent cases, as well as related counseling in the areas of financial services, electrical/computer engineering, materials science, automotive technologies, and semiconductors. In addition to patent cases, he litigates trade secret, Lanham Act, breach of contract, defamation, and fraud cases. Before Michael focused his practice on litigation and counseling, he spent several years prosecuting patent applications in technical disciplines such as power systems, chemistry, aircraft propulsion, and semiconductors.