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Patent Litigation 2016


Speaker(s): Aaron B. Bernstein, Candice C. Decaire, Carol White, Carolyn H. Blankenship, Charles J. Monterio, Jr., Christopher J. Horgan, Eric J. Lobenfeld, Gene W. Lee, George E. Badenoch, Gil Calvillo, Ph.D., Hon. Renée Marie Bumb, Hon. Rubén Castillo, Hon. Stanley R. Chesler, Jeffrey T. Zachmann, John T. Bennett, Keith R. Hummel, Paul R. Gupta, Peter Schwechheimer, Richard F. Martinelli, Robert C. Faber, Samir Pandya
Recorded on: Nov. 16, 2016
PLI Program #: 150414

PA Attorney Information

Samir Nilkanth Pandya

PA Attorney ID:

317338

Current Status:

In-House Corp Cnsl

Date of Admission:

12/12/2013

Lawfirm:

Other Organization:

SAP Labs, LLC

District:

2

County:

Delaware

Public Access Address:

SAP LABS LLC
3999 WEST CHESTER PK
NEWTOWN SQUARE, PA 19073

Tel:

610 661-9767

Fax:

610 661-9768

Comment:

Discipline:

 


Candice Decaire practices intellectual property law, with expertise in patent and trade secret protection. Ms. Decaire has counseled and represented clients in litigation, appeals, arbitration, ITC investigations, and inter partes review proceedings concerning diverse technologies such as computer hardware and software, biologics, pharmaceuticals, carpet, thermal imaging/night vision equipment, "bullet proof" armor, industrial bearings, aircraft equipment, and medical devices. Ms. Decaire also advises clients about strategies for protecting and profiting from intellectual property and data, with particular focus on the Internet of Things and wearable tech, including assessment and mitigation of risks of infringement or misappropriation, and data privacy and security issues. Ms. Decaire helps biotech and other clients with IP and licensing policies, strategies, and agreements, including as to due diligence and investigation of validity and freedom to operate.

Ms. Decaire was recognized by The Best Lawyers in America® in 2018 for Commercial Litigation.


Charles Monterio, Jr. focuses his practice primarily on patent litigation (both plaintiff and defendant). Charles has litigated complex patent litigation cases from pre-suit investigations through multiple trials and appeals, including three trial wins in the past five years. He also has extensive experience in patent-related strategic counseling and post-grant proceedings before the U.S. Patent & Trademark Office. His practice has embraced a wide range of technologies, including manufacturing processes, medical devices, electronic devices, and computer software.

He has patent litigation experience related to all phases of a case, including formulating case strategy, managing discovery, taking and defending depositions, preparing and opposing motions, and working with industry experts. He has also argued numerous hearings before district courts, including Markman hearings and conducted trials. Additionally, Charles has experience in patent portfolio counseling and prosecution, concentrating in the fields of biotechnology, chemical and mechanical, electrical, and design and plant patents.

Prior to joining private legal practice, he was a judicial intern with the Honorable Gerald Bruce Lee, U.S. District Court for the Eastern District of Virginia, where he handled issues such as the Federal Death Penalty Act, the Federal Torts Claims Act, and civil procedure questions in connection with motions to dismiss, motions for summary judgment, and other dispositive motions. He also served on a U.S. Senate Committee for two years conducting legal policy studies on IP and biotechnology. On Capitol Hill, he was involved in the development and presentation of new biotechnology concepts and facilities as well as a study of the current framework of biotechnology research and funding. Charles also worked in the State of Iowa’s Office of the Governor, where he supported former Governor Thomas J. Vilsack. While in law school, he was a member of the Drake Journal of Agricultural Law.

RECOGNITIONS

• 2014–2015, “Rising Star” in Washington, D.C., listed by Super Lawyers

• 2013, "Plaintiffs' Hot List," listed in The National Law Journal Plaintiffs

• 2013, listed in Lawyers of Color Hot List

PROFESSIONAL ACTIVITIES

Charles was selected as a 2013 Fellow for the Fellows Program of the Leadership Council on Legal Diversity (“LCLD”), which is a program for leaders who have distinguished themselves within their corporation or law firm and have a career history that reflects strong performance and leadership skills. He is also a member of the Just the Beginning Foundation, and part of the leadership team of the DuPont Minority Corporate Counsel Network.

Charles is active in the Kappa Scholarship Endowment Fund and the Alfred Street Baptist Church. He is a member of Kappa Alpha Psi Fraternity, Inc.

ADMISSIONS: Virginia, 2005; District of Columbia, 2005; U.S. Patent and Trademark Office, 2008

MEMBERSHIPS: American Intellectual Property Law Association; Virginia Bar Association

EDUCATION: Drake University Law School (JD, 2004); University of Miami (BS, 2001)


Chief Judge Rubén Castillo of Chicago, Illinois, received his Bachelor of Arts in Political Science from Loyola University Chicago in 1976 and his law degree from Northwestern University School of Law in 1979.

On January 27, 1994, President Clinton nominated Chief Judge Castillo to the United States District Court for the Northern District of Illinois as an Article III federal judge.  In 1999, President Clinton nominated him to be the vice-chair of the United States Sentencing Commission.  Chief Judge Castillo has also served as an adjunct professor of trial advocacy at Northwestern University School of Law for more than twenty years.  As a result of his work with students, he has received five teaching awards from Northwestern Law students.

On July 1, 2013, he assumed the position of Chief Judge of the United States District Court for the Northern District of Illinois.  Chief Judge Castillo heads the Patent Pilot Program for the Northern District of Illinois and is a participating judge.


Dr. Gil Calvillo wears many hats as a communications and legal expert: he’s a coach, psychologist, and strategist, all in the service of helping his clients tell their story and be their best, most persuasive selves.

As a former NIH fellow in neuropsychology with a background in clinical psychology, Dr. Calvillo performed hundreds of patient evaluations that resulted in his becoming a leading expert in the field when it comes to assessing people’s cognitive, intellectual, and emotional ability. Today he uses his scientific training to evaluate clients, help them define their goals, and craft the strongest possible message for achieving those goals.

For litigators, Dr. Calvillo’s psychological expertise makes him uniquely qualified to prepare strong witnesses, draft voir dire questions, and assist with jury selection, including a keen ability to detect juror bias during voir dire. He has a particular interest in jurors from diverse backgrounds and cultures, examining how their perceptions and experience affect their verdicts, including decisions about damages.

For non-litigators, Calvillo and Associates supply feedback on presentation, including body language, pacing, eye contact and other crucial non-verbal signals that are essential to gaining an audience’s trust and approval.

The ultimate goal of Dr. Calvillo’s communications training is to increase confidence, for both legal and non-legal clients. 

He begins by helping craft a message that makes the complex simple, whether it’s how to explain a medical device to a jury, a scientific formula to potential investors, or hi-tech software to C-suite executives.  Once clients have mastered their subject, everything from presiding over a board meeting to presenting a jury summation becomes as compelling as it is clear and convincing.

Calvillo and Associates has conducted communications training and litigation research with regional, national and international corporations. The firm is based in Los Angeles, California.


Eric Lobenfeld's philosophy is to prepare each case as if it is going to trial. That puts the client in the strongest position to resolve the case, whether through settlement or through litigation to judgment.

Eric's work focuses on technology and life science intellectual property disputes. He has more than three decades of experience as a first-chair trial lawyer in patent, trademark, copyright, antitrust, unfair competition, and complex commercial cases. These include jury and non-jury trials in state and federal courts throughout the United States, as well as arbitrations and arguments in numerous state and federal appeals. He also handles post-grant review proceedings in the U.S. Patent & Trademark Office and has participated in Markman claim construction proceedings for more than 50 patents.

Eric represents companies in many industries, including computer hardware and software, pharmaceuticals and medical devices, bar code scanners and Radio Frequency Identification technology, Automated Teller Machines and web-enabled kiosks, semiconductor technology, television and motion picture technology, home and industrial lighting, and consumer electronics.

Eric is a regular panelist in the Practising Law Institute's annual two-day patent litigation program, where he has presented on expert issues and damages issues. He has also given a demonstration of a closing argument in a patent jury trial.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. He regularly works on inter partes reviews and other adversarial proceedings in the USPTO, and trade secret, copyright, trademark and unfair competition matters. He also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

Gene’s work has covered a wide range of technologies, including computer systems and software, telecommunications and wireless communications, medical devices, videogames, audio processing, pharmaceuticals, financial services, chemistry, semiconductors and geoscience.

He has represented major U.S. and Asian companies in high-stakes disputes. Among Gene’s recent achievements are a stipulated judgment of noninfringement in the E.D. of Texas for a Korean electronics company (affirmed on appeal), and his successful representation through trial of the world’s largest alcoholic beverages company in the first investigation in the U.S. International Trade Commission’s pilot program for potential early disposition of cases.

Recognized by Chambers Global, IAM Patent 1000 and Managing IP for excellence, Gene regularly speaks, publishes and offers commentary on recent trends and important issues in patent law and IP litigation.


Jeffrey T. Zachmann is Counsel in IBM's Corporate Litigation department.  He has been with IBM since 1988 and, since joining the litigation department in 1992, has managed over 125 intellectual property litigations for IBM, the majority being patent cases.  He also provides litigation-related counsel and advice to the company's licensing and business legal staffs.  He holds a JD from Pace University School of Law (1986) where he was Articles Editor of the Law Review, and an LLM in Trade Regulations from New York University (1988), where he won the Patent Law Award and graduated at the top of his class.  He is admitted to practice before the bars of New York, New Jersey, and the U.S. Patent and Trademark Office.  He is also accredited to practice before the U.S. Department of Veterans Affairs.

Mr. Zachmann is a regular speaker and panelist at IP Law conferences on managing litigation, opinions of counsel and other topics. He has been a regular speaker for the Practising Law Institute, the NYIPLA, and the Texas State Bar Annual IP law conference.   He has presented CLE courses at several NYC law firms on ways of improving service to in-house clients.  He was a Teaching Assistant at Pace University School of Law, and was on the Teaching Staff of the Katherine Gibbs Paralegal School, where he taught Legal Research, Constitutional Law and Intellectual Property Law.


John Bennett, a partner in Goodwin’s IP Litigation Group, focuses his practice on intellectual property, with a particular emphasis on patent litigation, trade secret and copyright disputes. He has extensive experience in pharmaceutical patent litigation under the Hatch-Waxman Act, from initial counseling through trial and appeal. He also has experience representing clients in patent litigation concerning a variety of other technologies including medical devices, Internet content delivery systems and sports equipment.

Mr. Bennett also routinely performs pro bono work and his engagements have included representation of a Mariel Cuban refugee detained by the federal government for more than 14 years prior to his release on parole in 2004.

PROFESSIONAL ACTIVITIES
Mr. Bennett is a member of the Boston and Massachusetts Bar Associations.

PROFESSIONAL EXPERIENCE
Prior to joining Goodwin, Mr. Bennett was an associate with Palmer & Dodge in Boston, where his practice focused on intellectual property matters.


Judge Chesler has served in the federal judiciary of the United States since 1987. He was appointed as a United States District Judge for the District of New Jersey in 2002. Prior to being appointed as a District Judge, he served as a United States Magistrate Judge for more than fifteen years.

Before his appointment to the bench, Judge Chesler served as a federal prosecutor and a state prosecutor. Between 1980 and 1987, he served as an attorney with the U.S. Department of Justice Organized Crime Strike Force and as an Assistant U.S. Attorney. He was the Deputy Chief of the Newark Organized Crime Strike Force between 1984 and 1986. As a federal prosecutor, Judge Chesler specialized in the investigation and prosecution of complex labor racketeering cases. In 1984, he received U.S. Department of Justice Special Commendation and Special Achievement awards for the prosecution of United States v. Salvatore Provenzano. Judge Chesler was an Assistant District Attorney with the Bronx County (New York) District Attorney's Office from 1974 to 1980. As a state prosecutor, he acted at various times as the Chief of the office's Investigations Bureau and the Chief of its Narcotics/Rackets Bureau.

Judge Chesler attended St. John's University School of Law on a Dean's Scholarship. He attended law school at night, while working his way through school as a New York City teacher and as a law clerk for the Bronx District Attorney's Office. He received his juris doctor degree from St. John's University Magna Cum Laude and was ranked first in his graduating class.


Keith R. Hummel is a partner in Cravath’s Litigation Department.

He has extensive experience litigating complex commercial, intellectual property and other legal disputes, both for plaintiffs and defendants. He handles cases for clients in diverse fields, including telecommunications, medical devices, computer hardware and software, food additives, luxury flooring products, pharmaceuticals and biotechnology. Mr. Hummel frequently advises clients on national and worldwide intellectual property strategy, and is often asked to lead efforts to identify IP assets that can be effectively used for offensive or defensive purposes.

Mr. Hummel was featured as the “Litigator of the Week” by The Am Law Litigation Daily for obtaining affirmance in the Second Circuit of the dismissal of two lawsuits against IBM brought by South African nationals who attempted to hold IBM accountable for apartheid under the Alien Tort Statute.


Renée Marie Bumb was nominated by President George W. Bush on January 25, 2006, to serve as a United States District Judge for the District of New Jersey.  The United States Senate confirmed the nomination on June 6, 2006. On June 15, 2006, Judge Bumb took the Oath of Office and was assigned to serve in the Camden Vicinage.

Prior to her appointment to the United States District Court, Judge Bumb was the Attorney-in-Charge of the Camden Office of the United States Attorney’s Office for the District of New Jersey.  As the Attorney-in-Charge, she was responsible for the supervision of most federal prosecutions in southern New Jersey.  During her tenure as an Assistant United States Attorney, she prosecuted crimes involving public corruption, white collar fraud, health care fraud, narcotics violations, and others.

Before joining the United States Attorney’s Office, Judge Bumb served as an associate with the firm Riker, Danzig, Scherer, Hyland & Perretti LLP. Judge Bumb is a graduate of Ohio State University (B.A. 1981), University of Chicago (M.A. 1983), and Rutgers School of Law - Newark (J.D. 1987)(with honors). Upon graduation from law school, Judge Bumb served as Law Clerk to the Honorable Garrett E. Brown, Jr., of the United States District Court, for the District of New Jersey.

Judge Bumb has served on many panels dealing with various issues confronted in the litigation of federal cases, both civil and criminal. She is currently a member of the Third Circuit’s Committee on Model Civil Jury Instructions.


Rich Martinelli develops comprehensive IP strategies which resolve immediate legal needs and safeguard long-term business objectives. He handles all aspects of intellectual property, particularly patent litigation, patent prosecution and client counseling.

He has litigated patents at trial, before the ITC, and on appeal to the U.S. Court of Appeals for the Federal Circuit. Rich has counseled clients and rendered opinions on patent validity, infringement and freedom to use. In addition, he is a registered patent attorney with experience drafting patents and practicing before the U.S. Patent and Trademark Office.

Rich’s patent work has involved a wide range of technologies including image processing, 3d graphics, audio / video compression, computer hardware and software, e-commerce, network technologies, digital rights management and encryption.


Robert C. Faber has been an intellectual property lawyer for over forty years. He is a graduate of Cornell University and Harvard Law School. He is a partner in the New York City intellectual property law firm of Ostrolenk Faber LLP.

Mr. Faber is the author of the “Sixth Edition of Faber on Mechanics of Patent Claim Drafting” and was the author of the Third, Fourth and the Fifth Editions of “Landis on Mechanics of Patent Claim Drafting,” which the Sixth Edition replaced. This is a prominent text in the patent field.

Mr. Faber had been a member of the faculty of Practicing Law Institute (“PLI”) Patent Bar Review course for more than twenty years, which focused on the Patent Agent’s Examination and claim writing.  He also is a faculty member of PLI’s Advanced Claim and Amendment writing and Fundamentals of Patent Prosecution courses since their inception, and has lectured on intellectual property and patent matters for PLI, the Bureau of National Affairs, New York Intellectual Property Law Association, NY State Bar Association and other organizations.  Mr. Faber has litigated in the courts in patent, trademark and copyright matters.

He has been recognized in the 2007, 2009, 2011 and 2013 publications of the Guide to the World’s Leading Patent Practitioners.  This is a peer recommendation listing of several hundred patent practitioners throughout the world, published by Managing Intellectual Property and Euromoney Institutional Investor, PLC.


As stated in Chambers USA: America's Leading Lawyers for Business, Paul "litigates cases involving hi-tech electronic, software and internet-related patents." Chambers USA added that he is “an expert in cybersecurity.” His clients include industry leaders in e-commerce, IT, financial services and telecom.

Paul, according to Chambers USA, is "a zealous advocate for his clients," "praised as a great negotiator” and “a strong strategist,” “renowned for his work in the technology arena" and "extraordinarily accessible." He is also listed as a notable lawyer in Super Lawyers and in IAM’s "World's Leading Patent Practitioners."

He regularly handles intellectual property litigation (including patent, copyright, trademark and trade secret cases), as well as commercial litigation (including cybersecurity, licensing, outsourcing and indemnity cases).

He is currently or has recently been lead counsel in Federal District Court actions and arbitrations pending in California, Delaware, Illinois, Kansas, Massachusetts, New Jersey, New York, Tennessee, Texas and Virginia. He also counsels clients throughout the United States on a variety of technology law matters.

Further biographical information about Paul can be found in Who’s Who in the World.


George has over 30 years' experience in litigations and adversarial matters concerning all aspects of intellectual property, including patents, trade secrets, trademarks and copyrights. 

George has had considerable experience in major patent litigations (jury and non-jury) involving computers, semiconductors and pharmaceuticals, with particular emphasis on computerized automatic machinery and equipment and automobile parts. His successful trial of a major patent jury case involving computerized equipment for custom designed ductwork led to the largest intellectual property judgment nationwide in that year. His role as lead defense counsel for a large group of automobile importers led to the dismissal of a much publicized case brought by an alleged inventor of intermittent windshield wipers, even though the same plaintiff had previously secured multi-million dollar verdicts against two of Detroit’s big three automobile manufacturers.

George also counsels clients in patent and other intellectual property licensing matters, and has been involved in the licensing aspects of large merger and acquisition transactions.

He has spoken before domestic and international bar association groups, authored brochures advising the Japanese community on patent matters and appeared on a number of panels teaching licensing and patent litigation matters to other lawyers sponsored by the Practicing Law Institute and the American Conference Institute.

Practice Areas

Intellectual Property and Technology
IP Counseling and Licensing
Patent Litigation
Patent Trial and Appeal Board Proceedings
Patents

Professional Organization

The New York Intellectual Property Law Association; the American Intellectual Property Law Associate; The Licensing Executives Society; The International Intellectual Property Law Association (AIPPI); The American Bar Associate’s Litigation Section, Pretrial Practice and Discovery Committee, Intellectual Property Section and Antitrust Section.


I am a registered patent attorney and have been in the intellectual property field since 1990.  My background includes significant experience in patent licensing, prosecution and litigation.  I have worked with independent inventors and start-up businesses in a variety of different technology fields.  As an electrical engineer, I primarily work in the electrical and mechanical arts.

Professional History

  • 2010 to 2015 Concert Technology - licensing and prosecuting patents in the wireless streaming area
  • 2001 to 2010 Philips Electronics - licensing patents in the DVD and CD disc and player and LED technology areas
  • 2000 to 2001 Lawrence Livermore National Laboratory - prosecuting patents in a wide variety of basic research technologies
  • 1997 to 2000 Morgan & Finnegan, LLP - Associate
  • 1996 to 1997 Schmeiser, Olsen & Watts - Associate
  • 1990 to 1996 - Patent Examiner - primarily photocopiers and heat sink technology areas

Education

  • 1995 J.D., Cum Laude, Catholic University of America, Washington, DC
  • 1990 M.B.A., Union College, Schenectady, NY
  • 1986 B.S.E.E., Lafayette College, Easton, PA

Admissions to Practice

  • State Bar of California (No. 183114)
  • United States Patent & Trademark Office (Reg. No. 40,394)

Professional Associations

  • Licensing Executives Society
  • Silicon Valley Intellectual Property Law Association
  • San Francisco Intellectual Property Law Association


Mr. Schwechheimer specializes in the application of financial and economic analyses to complex business matters involving litigation, technology licensing, and valuation, including the use of econometric methods to apportion value among inputs in complex devices. He has performed research, given economic testimony, and provided consultation in intellectual property, licensing, commercial damages, and antitrust matters – including the evaluation of economic damages involving lost profits, reasonable royalties, price erosion, unjust enrichment, profit disgorgement, and prejudgment interest – in patent, copyright, trade secret, trademark, and antitrust cases. He has also overseen the analysis of fair, reasonable, and non-discriminatory (FRAND) commitments and the economics of licensing standard essential patents (SEPs) in arbitration matters, federal district court cases, and at the US International Trade Commission (ITC); assessed intellectual property valuation, monetization, and licensing; and evaluated antitrust liability and damages for patent misuse and monopolization, as well as damages arising from incorrect inventorship.

Mr. Schwechheimer's experience covers a diverse range of high-technology industries, including computer hardware and software, semiconductors, wireless communication technology such as WiFi and Bluetooth, cellular telephony and smartphones, LCD panels, video game consoles, slot machines, telecommunications equipment, manufacturing processes, medical devices, stent grafts, and pharmaceuticals.


Aaron Bernstein is Director of Bernstein IP Consulting, and previously Vice President for IP Litigation & IP Transactions, and Product Groups Legal Counsel for Zebra Technologies, Corp. Prior to Zebra’s acquisition of Motorola’s Enterprise Division which led to Aaron’s move to Zebra, Aaron was Lead Intellectual Property Counsel for Motorola Solutions, Inc., responsible for managing patent litigation for the corporation. Aaron joined Motorola when it acquired Symbol Technologies, Inc. where he held the position of Chief Patent Counsel. Prior to Symbol, Aaron served as Senior Patent Counsel for Intel, Corp. Prior to Intel, Aaron work for an earlier period at Motorola, and at the law firm of Knobbe, Martens, Olson and Bear. Mr. Bernstein attended California Western School of Law (JD, 1991), and obtained his BS in engineering at Harvey Mudd College (1987). Mr. Bernstein has also been a regular faculty for PLI’s patent bar review course.


Carolyn Blankenship is SVP, Associate General Counsel, Intellectual Property for Thomson Reuters.  She joined Reuters in 2001 and before that held a variety of IP-related positions as both in-house and outside counsel, including stints at Skadden, Arps and Priceline.com.

Carolyn leads the Corporate Legal Innovation, Product and Privacy Practice Group, with a focus on protecting and leveraging innovations throughout the company.  In addition, Carolyn oversees all patent litigation and supports the IP aspects of the company’s M&A activity. 

As an undergraduate, Carolyn attended the Massachusetts Institute of Technology for two years and went on to earn a B.A. in Biology from Harvard College.  She has a J.D. from Arizona State University College of Law and clerked for the Hon. Noel Fidel of the  Arizona State Court of Appeals.


Carol White is an IP attorney with WL Gore & Associates, Inc, headquartered in Newark, Delaware. She coordinates a variety of IP needs for the company, including patent application preparation, client counselling, licensing and litigation matters.