ACPC
™
Association of Corporate Patent Counsel
2012 Summer Meeting
of the
Association of Corporate Patent Counsel
June 24-27, 2012
Park Hyatt Beaver Creek
Beaver Creek, Colorado
ACPC
™
2012 Summer Meeting
Table of Contents
ACPC Officers and Executive Committee
page
4
Letter from the President; Russ Slifer
page
5
page
page
6
7
Summer Meeting Details
Professional Program
Activities Program
Speaker Biographies
pages 8-15
Restaurant Listing
pages 16-18
List of Attendees (as of 6.19.12)
pages 19-20
Dates of Future Meetings
page
21
ACPC
™
2012
EXECUTIVE COMMITTEE LISTING
Officers:
President, Russ D. Slifer, Micron Technology
Vice President, Steven W. Miller, The Procter & Gamble Company
Secretary, Luke Dohmen, Boston Scientific Corp.
Treasurer, Douglas K. Norman, Eli Lilly and Company
At-Large Members:
Angelo Chaclas, Styron LLC (Immediate Past President)
Inger Eckert, International Paper (Past President)
Tim Crean, SAP AG
Sarah Harris, AOL LLC
Carl Horton, GE
Lisa Jorgenson, STMicroelectronics, Inc.
Wayne Sobon, Rambus
Brian Stierwalt, ConocoPhillips Company
4
ACPC
™
Association of Corporate Patent Counsel
Dear June 2012 ACPC Meeting Attendees:
We are happy that you have registered to attend the ACPC’s Annual Meeting in Beaver Creek, CO just west of
Vail. All of our plans are in place for a terrific meeting.
Our Professional Program should prove very educational with three different presentations from our members
sharing benchmark information on their “IP Operations,” some interesting panels covering hot topics in both
U.S. and China IP law, and patent litigation strategies following the America Invents Act (AIA), to name a few.
Andrew Faile will be the Keynote Speaker for an important update from the USPTO.
We are also delighted to have Joe Matal, Judiciary Committee Counsel to Senator Kyl serving on one of our
panels.
Frank Landgraff, from GE, has arranged the Monday golf tournament and open play on Tuesday at Beaver
Creek Golf Club. We also have other wonderful activities available, such as: whitewater rafting and lunch in
Vail followed by a tour of the Betty Ford Alpine Gardens.
Our meetings provide an opportunity for you to meet and get to know your peers. It is probably our most
important member benefit. Please keep a look out for new ACPC Members who will be wearing red ribbons.
As always, please don’t hesitate to reach out to me or any member of ACPC’s Executive Committee with your
thoughts and ideas about future programs.
I look forward to seeing you!
Warm Regards,
Russ Slifer
President
5
ACPC
™
PROFESSIONAL PROGRAM
June 25-27, 2012
Monday, June 25
8:15 – 8:30 am
Opening Remarks
Russ Slifer – President ACPC, Chief Patent Counsel, Micron Technology
8:30 – 9:30 am
Hot Topics in U.S. IP Law
Moderator: Phil Johnson, Chief Intellectual Property Counsel, Johnson & Johnson
Panel:
Seth Waxman, Partner, Wilmer Cutler Pickering Hale and Dorr
Joe Matal, Judiciary Committee Counsel, Senator Jon Kyl
9:30 – 10:30 am
United States Patent and Trademark Office
Andrew Faile, Deputy Commissioner for Patents, United States Patent and Trademark Office
10:30 – 10:45 am
Break
10:45 – 11:30 am
IP Operations at Schlumberger
Charlotte Rutherford, Deputy General Counsel Intellectual Property, Schlumberger Ltd
Tuesday, June 26
8:15 – 9:15 am
Hot Topics in China IP Law
Panel:
Mark Cohen, Visiting Professor, Fordham University School of Law
Daisy Wang, Senior Counselor, Lee and Li
Douglas Clark, Barrister Hong Kong, Douglas Clark
9:15 – 10:15 am
Patent Litigation strategies after the AIA
Panel:
Mike Jakes, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner
Tim Haller, Senior Partner, Niro, Haller & Niro
10:15 – 10:45 am
Break
10:45 – 11:30 am
IP Operations at Rambus
Wayne Sobon, VP, Chief IP Counsel, IP Development
Wednesday, June 27
8:15 – 8:30 am
Announcements
8:30 – 9:25 am
IP Monetization – Real World Options, Is it Right for my Company?
Moderator: Lynn Malinoski, Vice President & Chief IP Counsel, Synthes Inc
Panel:
Mike Jaro, Vice President & Chief Patent Counsel, Medtronic
David Berten, Partner, Global IP Law Group
Kirk Dailey, Corporate Vice President, Intellectual Property, Motorola Mobility
9:25 – 10:15 am
Recent Patentable Subject Matter Decisions
Panel:
Tim Crean, Chief IP Officer, SAP
John Murphy, Associate, Woodcock Washburn LLP
Bob Stoll, Partner, Drinker Biddle
10:15 – 10:45 am
Break
10:45 – 11:30 am
IP Operations at Qualcomm, Inc.
Katherine Umpleby, Vice President & Chief Patent Counsel, Qualcomm, Inc.
6
ACPC
™
Activities Program
Park Hyatt Beaver Creek
Beaver Creek, Colorado
June 24 - 27, 2012
Sunday, June 24, 2012
3:00 pm – 5:00 pm
5:00 pm – 8:30 pm
6:30 pm – 8:30 pm
Executive Committee Meeting – Slate Mountain
Registration – 8100 Billiards
Welcome Reception – 8100 Mountainside Private Dining
Monday, June 25, 2012
7:30 am – 9:00 am
9:00 am – 11:00 am
7:30 am – 12:00 pm
8:15 am – 11:30 am
12:30 pm – 5:30 pm
12:30 pm
Full Breakfast – 8100 Mountainside Private Dining
Continental Breakfast - 8100 Mountainside Private Dining
CLE Registration – Sawatch Foyer
Professional Program – Mt. Jackson
Optional Activity: Whitewater Rafting
Optional Golf Tournament – Beaver Creek Golf Club (contact Frank Landgraff)
Tuesday, June 26, 2012
7:30 am – 9:00 am
9:00 am – 11:00 am
7:30 am – 12:00 pm
8:15 am – 11:45 am
12:30 pm
12:30 pm – 3:30 pm
6:30 pm – 7:30 pm
7:30 pm – 10:00 pm
Full Breakfast – 8100 Mountainside Private Dining
Continental Breakfast – 8100 Mountainside Private Dining
CLE Registration – Sawatch Foyer
Professional Program – Mt. Jackson
Open Golf – Beaver Creek Golf Club (contact Frank Landgraff)
Optional Activity: Vail Cuisine & Betty Ford Gardens Tour
Cocktail Reception – McCoy’s Patio
Dinner (business casual) featuring comedian Kevin Fitzgerald – McCoy’s Peak
Wednesday, June 27, 2012
7:30 am – 9:00 am
9:00 am – 11:00 am
7:30 am – 12:00 pm
8:15 am – 11:30 am
Full Breakfast – 8100 Mountainside Private Dining
Continental Breakfast – 8100 Mountainside Private Dining
CLE Registration – Sawatch Foyer
Professional Program – Mt. Jackson
7
ACPC
™
Association of Corporate Patent Counsel
2012 Summer Meeting
Speaker Biographies
8
Speaker Information for Monday, June 25 (in order of appearance)
Russ Slifer, Chief Patent Counsel, Micron Technology
Russ Slifer is the Chief Patent Counsel for MICRON TECHNOLOGY, INC. where he is responsible for IP portfolio
management, including domestic and international patent prosecution. Russ has extensive management experience
in both corporate and private practice. He has a J.D. from Northern Illinois University and a B.S in Electrical
Engineering from Iowa State University.
Phil Johnson, Chief Intellectual Property Counsel, Johnson & Johnson
Philip S. Johnson is Chief Intellectual Property Counsel for Johnson & Johnson, having joined the corporation in
January 2000 after 27 years in private practice serving clients including Johnson & Johnson. In this position, he
oversees about 100 patent and trademark attorneys in the US, Asia & Europe, and advises Johnson & Johnson’s top
management on patent matters relating to its 200 plus operating companies worldwide. Phil is Chair of the Board of
Directors of the American Intellectual Property Law Education Foundation, Vice President of the Intellectual Property
Owners Association, a member of the Board of the Intellectual Property Owners Association Education Foundation
(Past President), of the American Intellectual Property Law Association Board, of the Steering Committee of the Coalition for 21st Century
Patent Reform, of the Association of Corporate Patent Counsel (Past President), and of PhRMA’s IP Focus Group (Chair Emeritus). He is
also a past President of INTERPAT. Before joining Johnson & Johnson, Phil was a senior partner and co-chair of litigation in the
intellectual property law firm of Woodcock Washburn in Philadelphia, where he specialized in intellectual property issues affecting major
pharmaceutical, medical device and consumer product companies. Phil has served as trial counsel in over 100 patent cases, including
over 50 resulting in reported decisions of the federal district courts and/or of the Federal Circuit Court of Appeals.
Phil is a frequent speaker, and has testified before both the House and Senate Judiciary Committees in three of the last four Congresses
on the subject of patent law reform, and was recognized in the Congressional Record as an important member of the Minority Whip’s
“Kitchen Cabinet” for the America Invents Act. Most recently, Phil served as IPO’s representative on the ABA-AIPLA-IPO “committee of
experts” proposing to the USPTO implementing regulations for PTR-IPR proceedings under the AIA. Phil received his Bachelor of Science
degree, cum laude with distinction in biology from Bucknell University and his J.D. degree from Harvard Law School, where his third year
advisor was now-Supreme Court Justice Stephen Breyer.
Seth Waxman, Partner, Wilmer Cutler Pickering Hall and Dorr
Solicitor General of the United States from 1997 to 2001, Seth Waxman is a partner at Wilmer, Cutler, Pickering, Hale
and Dorr and a member of the faculty at the Georgetown University Law Center. He is a 1973 summa cum laude
graduate of Harvard College, and a 1977 graduate of the Yale Law School, where he was managing editor of the
Yale Law Journal. Mr. Waxman’s practice, which spans both trial and appellate litigation in federal and state courts,
has focused increasingly over the past several years on intellectual-property litigation, particularly patent litigation in
the Federal Circuit and the Supreme Court (where his arguments include Microsoft v. i4i, eBay v. MercExchange, and
Intel v. AT&T). A Fellow of the American Academy of Arts and Sciences, the American College of Trial Lawyers, and
the American Academy of Appellate Attorneys, Mr. Waxman has received numerous awards for public service, scholarship, and advocacy,
including the Thomas Jefferson Medal in Law and the American Bar Association’s Pro Bono Publico award.
9
Joe Matal, Judiciary Committee Counsel, Senator Jon Kyl
Joe Matal has been a Judiciary Committee counsel to Senator Jon Kyl since 2002, except that he served as the
Republican General Counsel of the Committee while Senator Jeff Sessions was the ranking member from 2009
through 2010. He was one of the principal legislative staff involved in the drafting and floor management of the
American Invents Act, and recently published the first part of two-part law-review article about the legislative history
of the Act. Joe has also worked as an associate attorney at Gibson, Dunn & Crutcher, as a law clerk to a judge on
the U.S. Court of Appeals for the Ninth Circuit, and is a 1996 graduate of Boalt Hall School of Law.
Andrew Faile, Deputy Commissioner for Patents, United States Patent and Trademark Office
Andrew Faile has over 20 years of USPTO experience in patent examining and patent operations
management. Mr. Faile joined the USPTO in 1989 as an examiner in Group 260 and examined patent
applications in the subject matter areas of cellular telephony, RF communications, and cable television. Mr.
Faile received an examiner master's rating in the telecommunications technology in 1994 and was promoted to
the position of Supervisory Patent Examiner in Group 260 in 1996. In this role, Mr. Faile managed a group of
patent examiners in both the camera and TV recording technologies. He served on a work assignment/detail to
the Office of the Commissioner of Patents and has represented management in negotiations with both the examiner’s union (POPA) and
with the technical support staff employee’s union (NTEU 243). Mr. Faile was appointed to the Senior Executive Service (SES) as a Group
Director in 2005 and was promoted to Assistant Deputy for Patent Operations in 2007. Recently, Mr. Faile served on a joint
management/union taskforce charged with modifying the examiner production system and was awarded the Department of Commerce
Silver Medal for his efforts. Mr. Faile is a graduate of the University of Maryland with a BS degree in Electrical Engineering.
Charlotte Rutherford, Deputy General Counsel Intellectual Property, Schlumberger Ltd.
Ms. Rutherford is currently Deputy General Counsel for Intellectual Property (IP) at Schlumberger which is a
Global 500 company in the oil field service industry with a market cap of $83B operating in over 90 countries
with approximately 118,000 people and 175 nationalities. Schlumberger spends approximately $1B annually on
research and engineering and has about 65 R&E centers worldwide. Schlumberger has more than 100 IP
professionals worldwide and a patent portfolio exceeding 30,000 patents (granted and pending). Previously,
Ms. Rutherford served as Vice President Associate General Counsel for Colgate-Palmolive and Chief
Intellectual Property Counsel of Conoco (now ConocoPhillips). In private practice, she was the managing partner of the IP Department and
has counseled various clients including Honeywell, Shell Oil, Exxon, International Paper, SK Corporation, Boehringer Ingleheim, Cooper
Industries, Sloan Kettering, and Oxford Gene Technology. Her expertise includes: managing and marketing large IP portfolios (exceeding
30,000 patents); developing licensing and audit programs; managing global complex IP litigation; performing due diligence and negotiating
international transactions such as strategic alliances, asset and technology transfers, divestitures and joint ventures; designing, building,
and managing large IP organizations; providing infringement and validity opinions; instituting best practices, quality and cost reduction
initiatives; and developing competitive intelligence programs. Ms. Rutherford received her juris doctor degree from Loyola University, her
Executive MBA with a concentration in finance from Rutgers University, and BS and MS in Engineering from Auburn University. She is
licensed to practice law in both common law and civil law jurisdictions, including Texas, New York, New Jersey, District of Columbia and
Louisiana (inactive). Also, she is admitted to practice before the U.S. Patent and Trademark Office (Reg. No. 32975.) She is a Six Sigma
green belt (based on best management practices for IP). Ms. Rutherford is a frequently featured speaker at IP conferences and has
authored many publications. Her articles have appeared in The National Law Journal, The Journal of World Intellectual Property, and the
Congressional Report (31 August 2000). She has been recognized as an expert concerning willfulness in IP litigation by the U.S. District
Court in Oxford Gene Technology Limited v. Mergen Ltd., 345 F.Supp.2d 431, (D.Del. 2004) and has provided expert testimony on other
high profile pharmaceutical and medical device cases.
10
Speaker Information for Tuesday, June 26 (in order of appearance)
Mark Cohen, Visiting Professor, Fordham University School of Law
Mark joined Fordham Law School from private practice, beginning the 2011 academic year. Since March 2012, he
has also served as a Senior Advisor to USPTO Director Kappos on China related IPR matters. Prior to that time he
was: Director, International Intellectual Property at Microsoft Corporation; Of Counsel to Jones Day’s Beijing office,
and Senior Intellectual Property Attaché at the U.S. Embassy in Beijing. During the past several years he has also
served as co-chair of the IPR Forum of the American Chamber of Commerce (China), and of AmCham’s Legal
Committee. The programs Mr. Cohen established while at the U.S. Embassy in Beijing (2004-2008) became
models for U.S. government engagement on intellectual property worldwide. He has trained, lectured and debated
Chinese IP and competition law matters before hundreds of thousands of Chinese citizens, officials, as well as
U.S., European and Japanese businesses. In 2011, he was asked by Chief Judge Rader of the CAFC to serve as the chair of the
committee organizing the recent Supreme People’s Court/CAFC three day joint judicial conference on IPR enforcement, which concluded
on May 30, 2012 in Beijing. Mr. Cohen has been writing and speaking on Chinese intellectual property law since 1984. He co-authored
Antimonopoly Law and Practice in China (Oxford University Press 2011). He was the editor of Chinese Intellectual Property Law and
Practice (Kluwer Law International 1999). He co-edited a book on China’s legal development in 1984 and authored articles on technology
transfer in 1985. He maintains a blog on Chinese intellectual property matters (www.chinaipr.com) and has served as a webmaster of
various China IPR websites. He has also recently written on law firm market access and ethical issues in China (Fordham Law Review,
May 2012), and on IP and antitrust matters (Juris Publishing 2012). A particular recent academic and practical interest which he as
discussed at various conferences is on US government and corporate alignment on Chinese intellectual property issues, which will be the
subject of a forthcoming conference at Fordham Law School. Mr. Cohen holds a J.D. degree from Columbia University (1984), an M.A.
from the University of Wisconsin in Chinese Language and Literature (1979) and a B.A. from the State University of New York at Albany in
Chinese Studies (1977). He was formerly an exchange student at Nanyang University, Singapore. He speaks and reads Chinese fluently
and is admitted to the District of Columbia.
Daisy Wang, Senior Counselor, Lee and Li
After receiving LLB from National Taiwan University, Daisy pursued and received her LLM from University of
Illinois. Daisy served with the National Bureau of Standards (the former IPO) for more than two years and joined
Lee and Li in 1979 for handling patent and IP related matters. Daisy is experienced in handling patent
procurement and strategy consultation, patent dispute resolution, technology licensing etc. and, as of the 1990s’,
she has handled various leading patent/IP cases for Intel, Philips, ABB, Sony, Celanese etc. As of the 2000s’,
Daisy has started to help clients with their Greater China patent/IP matters, including both prosecution and
enforcement aspects. Since 1999, Daisy has been continuously ranked as a reputable IP professional via
surveys done by various international organizations, such as IP Asia, MIP, Who’s Who, Chambers & Partners
(Chambers Asia), IAM, American Biographical Institute, Expert Guide (Euromoney) etc.
Douglas Clark, Barrister Hong Kong, Douglas Clark
Doug Clark is a barrister practising in Hong Kong. From 2000 to 2011 he was based in Shanghai where he was
a partner with international law firm Lovells (now Hogan Lovells). He established Lovells' office in Shanghai in
2003 and was managing partner of the office until 2010 when he retired from the partnership. At Lovells he was
responsible for the mainland China intellectual property and dispute resolution practices. He has handled over
100 patent litigation cases in China including a number of high profile case. He is the the author of the book
Patent Litigation in China published by Oxford University Press in 2011. He continues to advise clients on patent
issues in Mainland China. Doug is fluent in Mandarin Chinese and Japanese.
11
Mike Jakes, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner
J. MICHAEL JAKES is a partner in the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., in
Washington, D.C., concentrating his practice on patent litigation and related counseling. He has been lead
counsel in numerous patent cases, including trials in federal district courts and the International Trade
Commission and before arbitration panels. He deals mainly with technologies related to the computer,
electronics, semiconductor, software, and medical device industries. The current leader of the firm’s appellate
practice, Mr. Jakes has special expertise in appeals to the U.S. Court of Appeals for the Federal Circuit, where
he has argued twenty-five appeals and has prepared and filed briefs in many more. He is currently a member of
the Federal Circuit’s Advisory Council, appointed by the Chief Circuit Judge. He was also lead counsel in the
U.S. Supreme Court for the Petitioners in Bilski v. Kappos, which he argued in November 2009. Mr. Jakes is
well-suited to patent law because of his background in electrical engineering and computer science. He received
his B.S. in electrical engineering (summa cum laude and with distinction) from Duke University in 1979, and an M.S. in computer science
from the Johns Hopkins University in 1983. He received his J.D. in 1986 from the Georgetown University Law Center, where he graduated
magna cum laude and was elected to the Order of the Coif. After law school, he served for two years as a law clerk to the Honorable Giles
S. Rich of the U.S. Court of Appeals for the Federal Circuit.
Tim Haller, Senior Partner, Niro, Haller & Niro
Tim Haller graduated from Clarkson University, with distinction, in Mechanical Engineering in 1968. After serving
as a U.S. Naval Officer, he attended Georgetown University Law School. He was a member of the Law Review
and received his law degree in 1974. Tim joined Niro, Haller & Niro in 1978. Tim has been engaged in civil
litigation throughout the United States, primarily in the Federal Courts, concentrating in patent, trade secret and
licensing related matters. Tim has authored articles for legal publications on issues related to intellectual
property and has served on committees in various bar and professional organizations. Tim has had lead
responsibility in litigating patent matters for both plaintiffs and defendants. He frequently represents individual
inventors and small companies that support enforcement and licensing efforts by inventors, although clients also
include Fortune 500 corporations. Examples of subject matters handled include jet engine components, CO detectors, electrocardiogram
equipment, as well as voice recognition systems, mobile air-conditioning systems, signal encryption and electronic banking systems. In
recent years, Tim has obtained a number of multi-million dollar results for his clients, some of which include significant licensing programs.
Such results included actions on behalf of United Technologies Automotive against National Semiconductor on semiconductor sensing
devices and against Fairchild Semiconductor on encryption systems. Representative larger clients include Pratt & Whitney, United
Technologies Research Center, Communications Research Centre of Canada and Lear Corporation (Lear’s patent action tried to favorable
verdict in February, 2011 against Johnson Controls Corporation).
Wayne Sobon, VP, Chief IP Counsel, IP Development, Rambus
Wayne P. Sobon, is Vice President and Chief IP Counsel for Rambus Inc., at its Sunnyvale, California office.
Originally from Phoenix, Arizona, Wayne received his B.S. degree in physics and B.A. degree in German
Studies from Stanford University in 1984 and his J.D. and M.B.A. from the University of California, Berkeley in
1992. Wayne worked at several Silicon Valley law firms, and most recently as Associate General Counsel, and
Director of Intellectual Property for Accenture from 2000 to 2011. Wayne is First Vice President of the American
Intellectual Property Law Association (AIPLA), a member of the USPTO’s Patent Public Advisory Committee
(PPAC), a member of the board of Invent Now.org of the National Inventor Hall of Fame, and a prior member of
the board of the Intellectual Property Owners Association (IPO).
12
Speaker Information for Wednesday, June 27 (in order of appearance)
Lynn Malinoski, Vice President & Chief IP Counsel, Synthes Inc
Lynn A. Malinoski is Vice-President, Chief IP Counsel of Synthes, Inc. Before joining Synthes in January 2009,
Lynn spent 17 years at Woodcock Washburn LLC, where she was a partner. At Woodcock, Lynn focused on
patent litigation at both the trial and appellate level. She litigated cases in various technology areas, including blood
glucose monitoring devices, cardiac catheters, consumer absorbent products, dental instruments, can making
technology, orthopedic devices, and surgical suture products. At Woodcock, Lynn was also involved in patent
prosecution and counseling clients in various technologies, including medical devices, pharmaceuticals, and
consumer products. Before entering law school, Lynn worked as a research chemist in the analytical research and
development group at Smith Kline. At Smith Kline, Lynn was involved in developing analytical methods for drug
development and stability analyses. Lynn is actively involved in the legal community. She is active in the Philadelphia Intellectual Property
Law Association, serving that organization as the 2004-05 President. She is a member of the American Intellectual Property Law
Association, the Federal Circuit Bar Association, and the Litigation Counsel of America.
Mike Jaro, Vice President & Chief Patent Counsel, Medtronic
Mike Jaro is Vice President and Chief Patent Counsel for Medtronic, Inc. Mike joined Medtronic in 1993 and has
held a variety of positions supporting Medtronic's IP efforts, including leading IP teams in several business units
of Medtronic as well as serving as Medtronic's European Patent Counsel, located in Maastricht, the Netherlands.
Mike holds a Bachelor of Science in Mechanical Engineering from Marquette University and a Juris Doctor from
Loyola University of Chicago School of Law. Prior to joining Medtronic Mike practiced law at the patent litigation
law firm of Willian Brinks Hofer Gilson & Lione located in Chicago
David Berten, Partner, Global IP Law Group
David Berten is a founder and partner of Global IP Law Group, where he works on all aspects of helping clients
monetize their patent portfolios, and directs the firm's litigation efforts. Prior to founding Global IP Law Group,
David Berten was an associate at Kirkland & Ellis; and a partner at Bartlit Beck Herman Palenchar & Scott and
Competition Law Group. In addition to extensive patent litigation experience, Mr. Berten has successfully
monetized patents through sales and negotiated licenses. Since 2005, Mr. Berten has successfully closed and
funded multiple transactions involving more than 7,000 patents in fields including internet advertising,
telecommunications, vehicle navigation systems, semiconductors, software, multi-antenna signal processing, and others. In 2010-11, Mr.
Berten advised Nortel Networks on the monetization of its patent portfolio, which culminated in the largest patent sale in history. The
patents were sold for $4.5 billion to a consortium that included Apple, Microsoft, RIM and others. In 2012, Mr. Berten was retained by the
Unsecured Creditors Committee to provide advise concerning the monetization of certain patents owned by Eastman Kodak. Mr. Berten
has received numerous peer-reviewed awards. He is AV (highest) rated by Lexis-Nexis/Martindale-Hubbel and has been named as an
Illinois "Super Lawyer" (top 5%) in intellectual property litigation every year since 2005. In 2009, he was elected a Life Fellow of the
American Bar Foundation. In 2011 he was named one of the top 250 IP Strategists in the world by IAM magazine. In 2012, he was
named to IAM's similar list (now including 300 strategists), and to the The Lawdragon 500 Leading Lawyers in America. He is a member of
Trial Bar for the United States District Court for the Northern District of Illinois. Mr. Berten holds a JD (cum laude) from the University of
Wisconsin Law School where he served as an Articles Editor for the Wisconsin Law Review, was awarded membership in the Order of the
Coif, was a member of the National Moot Court team, and was chosen as Best Oral Advocate by the Wisconsin Supreme Court. Mr.
Berten attended the University of Virginia School of Architecture and holds a degree in Urban Planning.
13
Kirk Dailey, Corporate Vice President, Intellectual Property, Motorola Mobility
Kirk Dailey, who joined Motorola in 1989, brings more than 20 years experience in all the facets of intellectual
property including a successful track record of licensing patents, technology and trademarks. Currently, Kirk is
Corporate Vice President of Intellectual Property and is responsible for an intellectual property business at
Motorola that builds, maintains and leverages a world-class IP portfolio to provide freedom of action and revenue
for the business. Kirk has created strategic patent portfolios that are aligned with and support the business
objectives. Since becoming Corporate Vice President, Kirk has successfully led numerous negotiations to
completion with favorable results for the Corporation. Prior to running the intellectual property business, Kirk was
a key patent lawyer and intellectual property lawyer for Motorola. As a lawyer in Chicago, Boston and London for Motorola, Kirk developed
key IP strategies and negotiated related agreements for accessing key 2G, 3G and 4G communication technologies and leveraging
Motorola's related portfolios. Kirk holds a bachelor degree in electrical engineering from the University of Michigan and a law degree from
DePaul University College of Law.
Tim Crean, Chief IP Officer, SAP
Tim Crean is the Chief Intellectual Property Officer for SAP AG. Tim leads a global team of IP professionals in the
procurement, licensing, and litigation of patent, copyright, trademark, and trade secret matters for SAP.
John Murphy, Associate, Woodcock Washburn LLP
John Murphy is an attorney with Woodcock Washburn LLP in Philadelphia. John focuses his practice on patent,
copyright, trademark, trade secret, and other intellectual property litigation. He has appeared and participated in
numerous disputes in U.S. District Court and the U.S. Court of Appeals for the Federal Circuit on behalf of both
plaintiffs and defendants. During these representations, John has been involved with a variety of technologies,
including medical devices and materials, chemical and biological therapeutics, electrical and mechanical devices,
cryptographic and other software, as well as proprietary business information. In addition to litigation, John’s
practice includes other phases of the intellectual property life cycle, including U.S. and foreign prosecution,
patentability studies, freedom-to-operate studies, and licensing. John served as a clerk for the Honorable
Kimberly A. Moore of the U.S. Court of Appeals for the Federal Circuit. Drawing on his practice and his
experience clerking, John regularly writes and speaks on the subject of the Federal Circuit and its decisions. John is a graduate of
Harvard Law School, where he was editor-in-chief of the Harvard Journal of Law & Technology. He also draws on both specific and
general aspects of his technical background in his practice. Prior to law school, he completed his Ph.D. at Caltech, where he focused on
the analysis of gene expression in the context of a laboratory focused on developing new methods for non-viral gene therapy. First, he
developed and patented a new quantitative method for measuring the abundance of particular sequences of mRNA. Second, in
conjunction with the Machine Learning Systems Group at NASA’s Jet Propulsion Laboratory, he developed new computational methods for
finding biologically significant patterns in large-scale gene expression data. John obtained his undergraduate degree summa cum laude in
Chemical Engineering from Cornell University. John also represents veterans (on a pro bono basis) before the U.S. Court of Appeals for
Veterans Claims, seeking to establish their entitlement to veterans benefits and other related issues.
14
Bob Stoll, Partner, Drinker Biddle
Robert L. Stoll is a partner on Drinker Biddle’s Patent team of the Intellectual Property Practice Group. Bob
retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year
government career. He was instrumental in the passage of landmark patent legislation, the America Invents Act,
and lauded for his efforts to reduce patent pendency and improve patent quality. Having risen from the rank of
examiner to lead the 8,000 employee organization, he has spent his career improving the intellectual property
system. He focused on educating the public, applicants, corporations and foreign governments on the criticality
of intellectual property to economic growth and job creation and stressed the importance of a comprehensive
understanding of the complex intellectual property laws to best use the system to protect an invention. Bob
earned his law degree from Catholic University while working at the USPTO. He received his bachelor’s degree
in chemical engineering from the University of Maryland.
Katherine Umpleby, Vice President & Chief Patent Counsel, Qualcomm, Inc.
Katherine Umpleby is Vice President, Chief Patent Counsel at QUALCOMM and heads the patent department,
a group of over 80 attorneys who are responsible for patent prosecution, trademark and open source matters.
Prior to QUALCOMM, Katherine was Vice President, Senior Counsel of Intellectual Property at NextWave
Broadband Inc. where she headed the patent department. Before joining NextWave, she was a Principal at
Enterprise Partners Venture Capital. Katherine has also practiced with Knobbe Martens Olsen and Brown as
well as Townsend, Townsend and Crew. Prior to graduating from law school, she was a design engineer and
patent agent for QUALCOMM. Katherine is a registered patent attorney. She earned a degree in electrical
engineering from Virginia Tech and a law degree from the University of San Diego.
15
136/19/201212:43 PM136/19/2012
2012 SUMMER RESTAURANTS
VAIL VALLEY
BEAVER CREEK RESTAURANTS
8100 Mountainside Bar & Grill
Located in the Park Hyatt Beaver Creek and serving local and natural creative American cuisine,
8100’s menu provides lighter options as well as fine dining entrees. 8100 is open for breakfast,
lunch & dinner and has something for every member of the family. Continental and full buffet
breakfast is served from 7:00am to 11:00am. Lunch is served from 12:00pm to 2:30pm, inside
or outside on our sunny deck (reservations advised). Dinner is served from 5:30pm to 10:00pm
daily. Bar menu available after 2:30pm. (970) 949-1234 ext. 6600.
The Café
Located in the Park Hyatt Beaver Creek next to the Grand Staircase. Self-serve breakfast, deli
lunches, deserts, snacks and coffee. Open daily.
Black Diamond Bistro
Serving contemporary American fare in a friendly and comfortable setting. Black Diamond
Bistro features regional American fare, integrating family recipes, with an emphasis on scratch
cooking. 970-949-1251
Beano’s Cabin
A unique cabin located on Beaver Creek Mountain and can be accessed via horseback, tractorpulled wagon, or van. This restaurant offers an exciting 5-course dining experience. Open
Thursday -Sunday. 970-754-3463
The Beaver Creek Chophouse
Prime steaks and fresh seafood complimented by a comprehensive wine collection. Located
slope side, at the base of the Centennial Chairlift. Open daily for lunch and dinner during the
summer season. 970-845-0555
Blue Moose Pizza
NY style pizza, pasta, calzones, soups, salads, and sub sandwiches. Located on Beaver Creek
Plaza. Open daily 11:00am-9:00pm. 970-845-8666
Coyote Café
Beaver Creek’s first bar and restaurant is a local’s favorite specializing in Mexican entrees, but
also serving burgers, sandwiches, salads, and pizza.
Open daily from 11:30am to 2:00am. Kitchen closed by 9:30pm. 970-949-5001
16
236/19/201212:43 PM236/19/2012
The Dusty Boot
Casual American food in a western saloon atmosphere. Located in the St. James Place. Open
daily 11:00am-12:00am. Kitchen closed by 10:00pm. 970-748-1146
Foxnut
Beaver Creek’s specialty restaurant serving a variety of Asian dishes and sushi items. Open
daily 11:00am-9:00pm. 970-845-0700
The Golden Eagle Inn
Creative American cuisine in a contemporary Colorado setting. Located on Beaver Creek Plaza.
Open daily for lunch from 11:30am - 4:00pm, dinner nightly 5:00-9:30pm. 970-949-1940
Grouse Mountain Grill
Progressive American cuisine in an elegant setting overlooking Beaver Creek Village. Located
in the Pines Lodge, the Grouse Mountain Grill is open for dinner nightly. Featuring piano
entertainment. 970-949-0600
Mirabelle
Contemporary Belgian-French cuisine in a beautifully restored Victorian farmhouse at the base
of Beaver Creek. Dinner is served from 6:00pm – 9:30pm Monday through Saturday. 970-9497728
Metropolitan
The newest restaurant in Beaver Creek! Serving coffee and breakfast until noon. Serving wine
and tapas by night. Located directly below the Dusty Boot in St. James Place at the east end of
Beaver Creek plaza. 970-748-3123
Osprey
The Osprey Lounge is a popular Beaver Creek slope-side spot for breakfast, lunch and
dinner. The ever-evolving tapas-style menu focuses on farm-to-table ingredients and features an
extensive hand-picked wine list. 970-754-7400
Rimini Cafe
Serving breakfast, panini, crepes, sweets, gelato and variety of beverages. Open daily from
7:00am to 8:00pm.
Rock’s Modern Grill
Located in the Beaver Creek Lodge, “this place rocks!” American cuisine served continuously
from 7:00am-9:30pm daily. 970-845-1730
Splendido
An elegant restaurant serving creative American cuisine from 6:00pm - 10:00pm Tuesday
through Sunday. It is located in the Chateau Residence Club on the Western slopes of Beaver
Creek. Live music nightly with Bob Finnie and Peter Vavra on the piano starting at 7:30pm.
970-845-8808
17
336/19/201212:43 PM336/19/2012
Spago
The flagship restaurant of master chef Wolfgang Puck continues to set the standard for cuisine,
service and style. Chef Mark Ferguson creates imaginative cuisine, featuring Spago classics as
well as daily dishes locally inspired. Serving breakfast from 7:00am-10:30pm daily in July and
August and dinner Thursday through Monday from 6:00pm-10:00pm 970-343-1555
Toscanini
Casual Italian cuisine overlooking Beaver Creek Plaza and the ice rink. Open daily for dinner
from 5:30pm-10:00pm. 970-754-5590
18
2012 Summer Meeting Attendee List
Vail/Beaver Creek, CO
(as of 6.19.12)
Name
Adler Marc and Alyson
Adler,
Ahn, Cindy
Arnold, Trevor*
Company
Marc Adler,
Adler LLC
Global IP Law Group
Roper Industries, Inc.
Email
[email protected]
marcadler@mac
com
[email protected]
[email protected]
Phone
(267) 265-4488
(312) 241-1508
(941) 556-2604
Berten, David
Bleeker, Ron
Bynum, Todd and Carolyn
Global IP Law Group
Finnegan, Henderson, Farabow, Garrett & Dunner
Baker Hughes
[email protected]
[email protected]
[email protected]
(312) 241-1502
(202) 408-4030
(713) 879-2702
Calcaterra, Mark
Calogero Stephen and Francine*
Calogero,
Chanroo, Keith
Clark, Douglas
Cohen, Mark and Elizabeth Cole
Crean, Tim
Chrysler, LLC (Retired)
CA Inc.
Inc
Taiwan Semiconductor Manufacturing Company
Gilt Chambers
Fordham University School of Law
SAP AG
[email protected]
[email protected]
stephen
calogero@ca com
[email protected]
[email protected]
[email protected]
[email protected]
(248) 425-3727
(919) 677-2874
677 2874
(408) 678-2730
852 2866 8233
(646) 293-3922
(650) 849-2816
Dailey, Kirk
Daniel, Mark and Yvonne
Dohmen, Luke and Donna
D i
Doigan,
Lloyd
Ll d
Douros, Timothy
Motorola Mobility
Merck
Boston Scientific Corporation
Carlson
C l
Gaskey
G k & Olds
Old
Cubist Pharmaceuticals, Inc.
[email protected]
[email protected]
[email protected]
[email protected]
ld i @ l
[email protected]
(847) 523-5000
(732) 594-6609
(763) 494-2422
(248) 988-8360
988 8360
(781) 860-8476
Faatz, Cindy*
Faile, Andrew
Follett, Robert*
Frickey, Darryl
Intel Corporation
United States Patent and Trademark Office
ZOLL Medical Corporation
The Dow Chemical Company
[email protected]
[email protected]
[email protected]
[email protected]
(530) 268-1442
(571) 272-7296
(978) 421-9417
(989) 638-3184
Griswold, Gary and Michele
Gwinnell, Harry and Linda
Gary L Griswold
Greenblum & Bernstein, P.L.C.
[email protected]
[email protected]
(651) 210-8166
(703) 716-1191
Haller, Tim
Hammond, Alan
Harper, Stephen
Harris, Sarah
Hawley, Jeff and Emily
Hohenshell, Jeff
Hoxie,, Thomas
Niro, Haller & Niro
Life Technologies
RatnerPrestia
AOL Inc
UNH School of Law
Medtronic, Inc.
Hoxie & Associates LLC
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
@ p
[email protected]
(312) 377-3256
(760) 476-6903
(610) 993-4228
(703) 265-5242
(585) 738-4929
(763) 505-2913
((973)) 902-6507
Jakes, J. Michael
Jaro, Michael
Johnson, Jennifer*
Johnson, Philip and Ellen
Jones, Wayne and Lisa
Jorgenson, Lisa
Finnegan
Medtronic
Syngenta Biotechnology, Inc.
Johnson & Johnson
Jones IP Group
STMicroelectronics, Inc.
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
(202) 408-4045
(763) 505-2519
(919) 226-7354
(732) 524-2368
(650) 424-8100
(972) 466-7414
Kalinchak, Stephen
Kennedy, Roger
Kinzig, Charles
Krukiel, Chic and Jan
Lundbeck Research USA
Trimble Navigation
GlaxoSmithKline
Dunlap Codding P.A.
[email protected]
[email protected]
[email protected]
[email protected]
(201) 350-0781
(408) 481-8000
(610) 270-5021
(302) 479-0349
Landgraff, Frank
Leach, Nicholas
Lee, Michael
Lenzen, Glenn and Elizabeth Dodds
Lewis Jeffrey
Lewis,
Lindefjeld, Robert
Lynch, Michael and Susie
GE Energy
Chevron Corporation
Cisco Systems, Inc.
Husch Blackwell LLP
AIPLA
Nantero, Inc.
Schwegman, Lundberg & Woessner
[email protected]
[email protected]
[email protected]
[email protected]
jidlewis@pbwt com
[email protected]
[email protected]
[email protected]
(678) 844-5494
(925) 842-1534
(408) 424-4180
(303) 749-7238
(212) 336-2549
(412) 437-0060
(512) 628-9324
Malinoski, Lynn
Synthes
[email protected]
(610) 719-5230
19
Marlow, Thomas
Matal, Joe
McCann, Phil
McGreevey, William
Mihm, Michael
Miller, Steve
Mulgrew, John
Murphy, John
Myers, Jeff
Fairchild Semiconductor
Senator Jon Kyl
Smith Moore Leatherwood, LLP
Eastman Chemical Company
Deere & Company
The Procter & Gamble Company
Microsoft Corp.
Woodcock Washburn LLP
Apple Inc.
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
(207) 761-3342
(202) 224-4521
(336) 378-5302
(423) 229-3198
(309) 765-4451
(513) 983-7327
(425) 707-8077
(215) 564-1603
(408) 974
974-0110
0110
Nesbitt, Stephen
Newburry, Keith
Norman, Douglas and Melanie
Vertex Pharmaceuticals Inc.
Edwards Lifesciences
Eli Lilly and Company
[email protected]
[email protected]
[email protected]
(617) 444-6454
(949) 250-6803
(317) 276-2958
Ogden, Stasia*
Baxter Healthcare Corporation
[email protected]
(847) 948-4774
Pace, Sam and Barbara
Pechman, Bob
Pechman
Phillips, Richard
Prasad, Sanjay
Praxair, Inc.
Seagate Technology LLC
Exxon Mobil Corporation
Intellectual Ventures
[email protected]
[email protected]
Robert
J Pechman@seagate com
[email protected]
[email protected]
(203) 837-2034
(952) 402-2987
(281) 584-7665
(650) 868-6011
Rhodes, Kevin
Richmond, Allen and Lori
Rutherford, Charlotte
3M Innovative Properties Company
Hovey Williams LLP
Schlumberger Ltd.
[email protected]
[email protected]
[email protected]
(651) 736-4533
(918) 914-3891
(832) 418-9294
Schur, Thomas and Celeste*
Shirtz, Joseph
Shirtz
Skarvan, Dennis and Kari
Slifer, Russ and Phyllis
Sobon, Wayne
Song, Eddy
Stierwalt, Brian
Stoll, Robert
PepsiCo, Inc.
Johnson & Johnson
Caterpillar Inc.
Micron Technology
Rambus Inc.
Applied Materials, Inc.
ConocoPhillips Company
Drinker Biddle Reath LLP
[email protected]
jshirtz@its jnj com
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
(972) 334-3822
(732) 524-2812
524 2812
(309) 675-4452
(208) 368-2940
(408) 462-8703
(408)916-6167
(281) 293-3073
(202) 230-5176
Umpleby, Katherine
Qualcomm Incorporated
[email protected]
(858) 651-0432
Vasuta, John
Veenstra, Charles
Vick, Karl
Virelli, Lou
Bridgestone Americas Holding
General Motors & Delphi (Retired)
Muncy Geissler
Morgan, Lewis & Bockius
[email protected]
[email protected]
[email protected]
[email protected]
(317) 575-7220
(248) 859-4625
(312) 259-6850
(215) 963-5125
Walker, Michael
Wamsley, Herb and Mary Ann
Wang, Daisy
Waxman, Seth and Debra Goldberg
Wuamett, Jennifer*
E. I. du Pont de Nemours and Company
Intellectual Property Owners Association
Lee and Li, Attorneys-at-Law
Wilmer Cutler Pickering Hale and Dorr
Freescale Semiconductor, Inc.
[email protected]
[email protected]
[email protected]
[email protected]
[email protected]
(302) 892-7912
(202) 507-4514
886-2-2715-3300 x2335
(202) 663 6800
(512) 825-6835
Zidar, Bernie*
McKesson Corp.
[email protected]
404 338 4327
* Indicates new ACPC Regular Member
20
ACPC
™
Association of Corporate Patent Counsel
SITES OF FUTURE ACPC MEETINGS
2013 Winter Meeting
Orlando, Florida
Disney’s Grand Floridian
January 27-30, 2013
2013 Summer Meeting
Asheville, North Carolina
Grove Park Inn
June 23-26, 2013
2014 Winter Meeting
Phoenix, Arizona
Arizona Biltmore
January 26-29, 2014
21
ACPC
™
Association of Corporate Patent Counsel
5841 Cedar Lake Road, Suite 204
Minneapolis, MN 55416
Phone: (952) 646-2036
Fax: (952) 545-6073
www.acpcnet.org