13 October 2022: Berkeley Center for Law & Technology and Kilburn & Strode are pleased to introduce you to our 2022 intellectual property series!

13 October 2022: Berkeley Center for Law & Technology and Kilburn & Strode are pleased to introduce

The ideal IP portfolio – how to ensure your AI, semiconductor or medical device portfolio is optimized for success


In an ever-changing political and health climate, we explore the effects on the AI, semiconductor and medical device sectors, and take a detailed look at these technologies to gain an understanding of how the IP world has reacted to the impact. In this 3-part series, we will first gain deep insight into IP filing strategies from the EPO and USPTO, after which we will explore and discuss how to ensure your IP portfolio is right for you.
 

Hear from panels of EPO and USPTO experts

In parts 1 and 2 of this series, we will hear directly from the EPO and USPTO to take a look at what we’re seeing in terms of filing strategies in these jurisdictions, providing the essential and fundamental information upon which to base an informed discussion. Parts 1 and 2 will be provided as a recording - Part 1 is available now.
 

Come together with us in person in the Bay Area 

In part 3, we invite you to attend our in-person BCLT and Kilburn & Strode Summit 2022 in the Bay Area. We will begin with a keynote address over lunch, after which we will hear from panels of in-house counsel about their challenges in managing global AI, semiconductor and healthcare patent portfolios. The panels will run in sequence, with coffee/networking breaks, and look to answer questions such as: How should we best protect these technologies? Is there a unified global approach? What are the big companies doing, and should we all be following similar models? If not, why not? What does an effective in-house IP team look like, and how do you build that? What about outside counsel?

Detailed agenda for this year's summit below.

Previous summits have brought together delegates and speakers from Lam Research, Google, Neuralink, Qualcomm, Dolby, Denali and Gilead, to name just a few. We’re looking forward to another great group of attendees at our first in-person summit in three years.

We hope you can join!

Annual IP Summit

Date 
October 13, 2022

Time
12:00pm - 5pm PST
(with cocktail hour 5-6pm)

Location
The Alexandria
835 Industrial Rd.
San Carlos
California 94070

Annual IP Summit Agenda

Please arrive from 12:00pm to check in and collect lunch for the keynote to follow. 

Listen to our keynote speaker, Bill Higgins, whilst enjoying lunch. 

How should we best protect AI technologies? Is there a unified global approach? What are the established AI companies doing, and should we all be following similar models? If not, why not? What does an effective in-house IP team look like, and how do you build that? What about outside counsel?

Speakers:

  • Paul Liu, TuSimple

  • Caity Ross, SharkNinja 

  • Dan Duval, Zoox

  • Chris Mammen, Womble Bond Dickinson

  • Bill Jacobs, AliveCor 

  • Tom Hamer, Kilburn & Strode (moderator)

Networking and coffee break.

The medical technology sector is a hotbed of innovation: patent activity has been strong for many years and demand for further advances remains high. In a field that spans medical devices, hospital systems, wearable tech, IoT and mobile apps, AI in healthcare, sensors and much, much more, what challenges do we encounter when patenting healthcare technology, what are the key considerations we need to make and what are the best strategies to use?

Speakers: 

  • TBC

  • Mukund Sharma, Align Technology

  • Gareth Fennell, Kilburn & Strode (moderator) 

Networking and coffee break.

How should we best protect semiconductor technologies? Is there a unified global approach? What are the big semiconductor companies doing, and should we all be following similar models? If not, why not? What does an effective in-house IP team look like, and how do you build that? What about outside counsel?

Speakers: 

  • Subroto Bose, Marvell

  • Patrick Walsh, Fig 1 Patents

  • Mimi Dao, Applied Materials

  • Steve Studulski, ASML

  • Trueman Denny, Analog Devices

  • Freddy Thiel, Kilburn & Strode (moderator)

You are welcome to stay for drinks and networking. 

Keynote speaker and panelists announced! Scroll to read about the speakers

Keynote speaker



Bill Higgins | IBM

Bill Higgins is an IBM Distinguished Engineer and is Director of Engineering for IBM’s foundational AI technologies, Watson Core. Prior to that, Bill led the transformation of IBM’s internal DevOps toolchain, including the largest enterprise Slack and GitHub Enterprise deployments in the world. Bill lives in Raleigh, North Carolina with his wife, three kids, and puppy. He is originally from Harrisburg, Pennsylvania and graduated from Penn State University with a B.S. in Computer Science. You can find his writing on Medium and you can follow him on Twitter

 

Panelists

Subroto Bose Marvell


Subroto Bose is Assistant General Counsel, Intellectual Property at Marvell Semiconductor, where he manages Marvell’s global patent and trademark portfolio, invention harvesting, and patent strategy. Prior to joining Marvell, Subroto was Senior Director, Global Patent Strategy and IP Operations at Dolby Laboratories, where he managed Dolby’s global patent and trademark portfolio, European patent prosecution, patent acquisitions, and global IP operations. He also advises on patent issues in corporate transactions, open source issues, and issues related to standard setting organizations and standard essential patents. His prior experience includes working at a number of law firms, where he represented both plaintiffs and defendants before the International Trade Commission (ITC) and federal district courts. 

 

Patrick Walsh | Fig 1 Patents


Patrick is a Founder and Partner at FIG. 1 Patents. After receiving his B.S. in Computer Science, Patrick worked at Boeing as an Embedded Software Engineer on the F-22 Project. He left Boeing to attend law school and become a patent attorney. For the last 10+ years, Patrick has worked with numerous world-leading clients to protect their innovations across a variety of sectors. He also serves as Vice President of the Board of Advisors at Gonzaga University’s School of Law and has become a hobbyist pitmaster, smoking assorted treats on his Big Green Egg. 

 

Dan Duval | Zoox


Dan Duval is Intellectual Property Counsel at Zoox, an autonomous driving subsidiary of Amazon. Prior to working at Zoox, Dan was the sole patent counsel for Logitech, a prosecutor at Kilpatrick Townsend & Stockton LLP, and a program manager and engineer in the defense industry. Dan specializes in international patent and trademark portfolio development and prosecution, open source software, and privacy. Dan has extensive expertise in machine learned models as they apply to autonomous vehicle systems, big data analysis, and mobile devices. 


 

Chris Mammen | Womble Bond Dickinson LLP


Chris has more than 23 years of experience guiding Silicon Valley and global tech and life sciences clients in high-stakes patent and intellectual property litigation. He has substantial lead counsel experience and has led both large and small trial teams. He has also served as lead counsel on appeals before the Ninth and Federal Circuits. Drawing on his years of experience teaching civil procedure, evidence, e-discovery, and advanced patent law, Chris is a creative strategist. He has recently marked wins for clients on a variety of unconventional issues.  Chris is the primary author of the U.S. chapter of the Global Patent Litigation treatise, serves on the advisory boards of the Advanced Patent Law Institute and the Berkeley Center for Law and Technology, and was named to Law 360’s 2020 and 2021 IP Advisory Boards. 

 

Bill Jacobs | AliveCor


Bill Jacobs is Associate General Counsel at AliveCor, a healthcare-tech company that strives to build products and services that save lives and transform cardiology by delivering AI-powered, highly personalized heart data to clinicians and patients. Bill advises on all issues confronting AliveCor, including intellectual property procurement and enforcement, licensing, privacy, security, compliance, mergers & acquisitions, and financing. Prior to joining AliveCor, Bill worked for several marquee Silicon Valley law firms advising large and small clients specializing in artificial intelligence and blockchain technologies. Bill received his law degree from Santa Clara University, where he currently teaches two courses: Intellectual Property Law for Engineers and Startup Law for Engineers. 

 

Mukund SharmaAlign Technology


Mukund is Senior Lead Counsel, Patents, at Align Technology. He focuses on patent prosecution, due diligence, litigation support, and commercial transaction support, and manages the company’s medical/dental device, polymer science, manufacturing and software portfolios. He was previously an associate at the Palo Alto Office of Sheppard, Mullin, Richter & Hampton, an Assistant Federal Public Defender in the Capital Habeas Unit for the District of Nevada, and a software engineer at Unisys. He obtained a law degree from UC Hastings Law School, and bachelors degrees in Electrical Engineering and Mathematics from UC Irvine. 

 

Harry Harden | Kilburn & Strode


Harry heads our San Francisco Liaison Office. With a background in physics, he primarily works on software, automotive and autonomous driving technologies. His practice involves advising on filing strategies across the globe, particularly for Silicon Valley companies, with a focus on balancing efficiency with strength of IP protection. Harry has particular expertise in risk assessment (freedom to operate) and patent portfolio strength analysis as companies approach IPO. Recent work has involved detailed patent due diligence investigations to advise on commercial implications of patent portfolios.

 

Freddy Thiel | Kilburn & Strode


Freddy has a strong understanding of in-house IP issues and needs – from budgets to strategies. In the course of his in-house and private practice experience, he has analysed over 400 inventions that led to patent filings, drafting patent applications on a majority of these himself. He has managed a broad and diverse range of filing programs before the French Patent Office, EPO, USPTO and WIPO. He has also mentored a number of start-ups to identify and capture their IP.

 

Paul Liu | TuSimple


Paul is the Global head of Intellectual Property at TuSimple, a self-driving truck company based out of San Diego, California.  At TuSimple, Paul oversees the intellectual property function with a team of attorneys, patent agents, and paralegals to align the company’s intellectual property with the business to obtain proactive, high impact, and creative protections via patents, trademarks, trade secrets, and copyrights.  He has over 13 years of experience as a subject matter expert for intellectual property assets associated with mechanical engineering, electrical engineering, and computer science technologies. 

 

Caity Ross SharkNinja


Caity Ross is Associate General Counsel, Global IP & Robotics at SharkNinja.  During her time at SharkNinja, she has worked on a wide variety of issues, including international patent portfolios, consumer goods engineering, robotic navigation, smart homes, app development, and consumer privacy. Her work includes product development in hair care, home environment, floor care, and robotics. Prior to joining SharkNinja, Caity worked at Gamblit Gaming, a start-up company developing the space where video games meet casino gaming.  She earned her JD at Harvard Law School and her BA in Biochemistry and Classics-History-Politics at Colorado College. 

 

Mimi Dao | Applied Materials


Mimi is an IP counsel with 20+ years of IP practice. She is currently a Managing Director of the Law Dept. at Applied Materials. The company is the global leader in materials engineering solutions used to produce virtually every new chip and advanced display in the world, with expertise in modifying materials at atomic levels and on an industrial scale. She currently holds a leadership role as a lead counsel for a Segment/Business Unit and a leadership member for the intellectual property practices group responsible for enhancing, updating, & implementing a holistic enterprise IP protection playbook.
Mimi considers herself a lifelong learner who can never learn it all but can constantly flex and adapt to learn new things and stay curious. 

 

Steve Studulski | ASML


Steven M. Studulski joined ASML, one of the world’s leading manufacturers of chip-making equipment, as a patent attorney in 2018 where he manages a Scanning Electron Microscope patent portfolio. Prior to joining ASML, Mr. Studulski was an IP attorney at Perkins Coie with a practice that emphasized patents and trademarks.  Before becoming an attorney, Mr. Studulski had a successful 25+ year career in semiconductor design engineering, including senior management roles at Venture Capital funded start-ups and FORTUNE 500 companies.  While at Perkins Coie, Mr. Studulski represented clients ranging from individual entrepreneurs and start-ups to industry-leading multi-national corporations in the legal areas of utility and design patent procurement, trademark procurement, technology transfer due diligence, IP portfolio management, strategic patent counseling, and support of patent litigation. 
Mr. Studulski received his B.S. in Electrical Engineering and Computer Sciences from U.C. Berkeley, his M.S. in Electrical Engineering from Santa Clara University, and his J.D. from Santa Clara University. 

 

Trueman Denny | Analog Devices


I joined Maxim integrated in 2015 where I handled all IP and IP transactional matters as Senior IP Counsel. Presently, I’m Director of IP at Analog Devices where I provide IP counsel to ADI business units and IP support for M&A activities. Prior to joining Maxim, I was Patent Counsel at Kokka & Backus PC, Rambus, Unity Semiconductor, and Hewlett-Packard. 

 

Gareth Fennell | Kilburn & Strode


Gareth is the head of our Tech group practice. He is a European patent attorney with a background in natural sciences and computing. Gareth has nearly 25 years’ experience advising clients in the medical device and software sectors on their global filing strategies and how to navigate the European patent system. His practice focuses on EPO patent examination, opposition and appeal proceedings, and his technological sweet spot is software-controlled medical systems.

 

Tom Hamer | Kilburn & Strode


Tom is an expert when it comes to the EPO's approach to algorithms, mathematical methods, and AI/ML. Tom regularly talks in the Bay Area and beyond, advising some of the biggest tech companies in the world on how to patent AI in Europe. Tom's AI practice focuses on automated medical image segmentation and modality conversion using neural nets, the intelligent automation of industrial methods (such as predictive maintenance and remote diagnostics), as well as the analysis of healthcare data using statistical techniques to make diagnoses. He is particularly proud to have helped a major medical device manufacturer build its predictive maintenance patent portfolio in the UK and is excited to be assisting a spin-out company protect their novel 'lab-on-a-chip' device and associated ML-powered software for rapid DNA and RNA detection, including the development of a disposable cartridge to detect SARS-CoV-2.

 

Annual BCLT and Kilburn & Strode Summit 2022

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