We are seeing several important changes in the landscape of intellectual property (IP).
For example, the central provisions of the Leahy-Smith America Invents Act (AIA) will go into effect on March 16, 2013. Among its most important changes, the AIAwill switch the U.S. patent system from a “first to invent” system to a “first to file” system and eliminate the interference proceedings, and has implementedpost-grant review proceedings. How would the AIA affect your strategy for IP protection?
Patent litigation by non-practicing entities (NPEs) (also known as patent trolls) has continued to increase, surpassing the non-NPE litigation for the first time in 2012.As a result, NPEs have become fairly sophisticated and systematic in enforcing patents portfolios and collecting royalty payments from companies. What would be your strategy in defending your company against NPEs?
On the other hand, if your company is mostly a developer of intellectual property and an enforcer of your patent portfolio, how would you create a IP/patent portfolio that would stand up to the challenges by the defendants and collect your royalty?
Lastly, we have also seen mega patent litigations over turfs, e.g. Apple vs. Samsung, Apple vs. HTC (proxy fight of Google), etc. What are the lessons from these mega wars? Come and join us for this event and discuss these and other issues:
(i) How will the new patent law (the America Invents Act) affect your IP strategy?
(ii) How to manage your (usually limited) IP resources – focusing on quality and weighing
your options?
(iii) How to create your IP portfolio – one with a million/billiondollar verdict in mind?
(iv) Litigation Strategies: lessons learned from the mega patent wars.
Emil Chang, Managing Attorney, Venture Pacific Law
Mr. Chang brings with him over fifteen years of legal expertise and management experience with high-technology companies. In particular, Mr. Chang specializes in serving Silicon Valley and Asian high-technology clients, providing services in the areas of general corporate matters, venture financing, merger/acquisition, intellectual property matters, patent prosecution, and licensing.
During the first part of his career, Mr. Chang practiced exclusively in intellectual property areas—in particular, patent prosecution, patent infringement opinions, and litigation of intellectual property matters. He was last with the law firm Oppenheimer Wolffe & Donnelly and was with the same practice group for over six years.
During the second part of his career, Mr. Chang served as general counsel and held management positions with a number of Silicon Valley startups. For example, Mr. Chang served as General Counsel for Holley Communications Group, Inc., a mobile phone design house based in the United States with its parent in China. He was responsible for its overall legal matters, including its global mobile phone licensing strategy and its capitalization strategy with respect to its foreign parent and subsidiaries.
Mr. Chang was Director of Operations and General Counsel for Altima Semiconductors, Inc., a provider of network semiconductors. Altima was later sold to Broadcom for over $550 million dollars. Mr. Chang also served as General Counsel for seeUthere Technologies, Inc., an event planning ASP, where he participated in its fundraising strategy and execution, licensing strategy and execution, and merger activities.
Mr. Chang was also a co-founder of WebEver, Inc., an Internet infrastructure software company. During his tenure, he managed product deployment and product support, legal, finance, HR, and system administration and played a role in fundraising and product marketing.
Currently, Mr. Chang is the managing attorney of the firm, working with a number of Silicon Valley and cross Pacific venture capital firms and start-ups. His unique experiences allow him to structure complex international corporate structures and transactions, including Cayman Islands and BVI corporate structures, anti-inversion (restructuring U.S. corporations to be offshore corporate holding structures in compliance with Internal Revenue Code), restructuring of a U.S. corporation for going public in China, cross-border licensing, and developing international IP strategies.
Mr. Chang has published a number of articles on various legal and startup issues and has been a speaker on various intellectual property and corporate law issues.
Ming-Tao Yang, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Ming-Tao Yang focuses on litigating and defending against patent infringement actions in various forums, including the U.S. International Trade Commission; the federal district courts for the Northern, Central, and Southern Districts of California, the Eastern District of Texas, and the Western District of Washington; and the Court of Appeals for the Federal Circuit.Benefited from his litigation experience, Mr. Yang counsels clients frequently on issues relating to patent enforcement, pre-litigation investigations, patent prosecution, and license negotiations. He has handled patent litigation, prosecution, and licensing matters relating to various technical areas, including telecommunications, light emitting diodes, memory devices, application-specific integrated circuits (ASICs), controller integrated circuits (ICs), computer networking and switches, optical sensors and storage devices, touch-input and display devices, and liquid crystal displays.Mr. Yang regularly travels to Asia and counsels Asian clients on patent enforcement, prosecution, and licensing matters. He frequently speaks, teaches, and publishes in the U.S. and Asia on topics related to U.S. patent litigation and prosecution strategies.
Justin Liu, Senior Director, Intellectual Property, Xilinx
Justin Liu has been with Xilinx for 10 years where he is the Senior Director, Intellectual Property. Justin has responsibility over all aspects of intellectual property for Xilinx, including defining IP strategy, managing the patent portfolio and prosecution, and defending the company in patent litigation. Justin was previously with Bingham McCutchen in Palo Alto, CA. Prior to becoming an attorney, Justin worked as an engineer for Quickturn Design Systems and Cadence Design Systems in San Jose, CA. He received bachelor’s and master’s degrees in Electrical Engineering from the Massachusetts Institute of Technology, and earned his JD from Stanford Law School.
Charles D. (Chuck) Holland, Partner, K&L Gates
Chuck Holland is a partner in the Palo Alto office practicing in the area of intellectual property. He brings together decades of experience as a patent lawyer and engineer in various industries to his practice focusing on patent prosecution, portfolio review, patent strategy, licensing, and strategic advice. Chuck has advised companies on issues involving a wide array of technologies such as solar energy, water purification, solar cells, LEDs, plasma and LED lighting systems, alternate fuels, and waste handling, as well as polymers and related catalysts, medical devices, pharmaceuticals, semiconductors, and chemical and petrochemical products and processes. For the last several years, Chuck has centered his practice on renewable energy and clean technology, counseling investors and companies ranging from start-ups to Fortune 500 corporations on intellectual property matters. Chuck’s practice also includes ex-parte and inter-partes reexaminations, interferences, non-infringement and invalidity analyses and opinions, due diligence reviews for companies and investors, pre-litigation and litigation analyses, and design-around analyses and advice.
