Hon. Kathi Vidal
Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
Kathi Vidal serves as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) – America’s Innovation Agency.
As the chief executive of the USPTO, she leads one of the largest intellectual property (IP) offices in the world, with more than 13,000 employees and an annual budget of more than $4 billion. She is the principal IP advisor to the President and the Administration, through the Secretary of Commerce. As Director of the USPTO, Vidal is working to expand American innovation for and from all, and to bring more ideas to impact, including serving as the Vice Chair of the Council for Inclusive Innovation (CI2), alongside Secretary of Commerce Gina M. Raimondo and the Council members.
Director Vidal’s interest in science led her to attend Binghamton University at the age of 16, where she received her bachelor’s in electrical engineering. Before graduating, she started her career at General Electric (GE) Aerospace (later Lockheed Martin). She was selected into the Edison Engineering Program and pursued her master’s in electrical engineering in Syracuse University’s night program. During her time at GE, she designed one of the first artificial intelligence systems for aircraft, as well as aircraft and engine-control systems.
Subsequently, Director Vidal obtained a Juris Doctor from the University of Pennsylvania, where she was Editor-in-Chief of the University of Pennsylvania Law Review. After clerking for Judge Alvin Anthony Schall on the U.S. Court of Appeals for the Federal Circuit, Director Vidal joined Fish & Richardson P.C. where she furthered her skills in IP law. She then joined Winston & Strawn LLP, where she continued her IP practice and served on the firm’s Executive Committee.
Prior to joining the USPTO, Director Vidal represented new innovators, start-up companies, patent holders, and defendants in U.S. district courts and the International Trade Commission. She has also been deeply involved in practice before the Patent Trial and Appeal Board (PTAB), argued numerous Federal Circuit appeals, and led amicus efforts on important cases before the Federal Circuit and the Supreme Court.
Director Vidal has played an active role on the advisory board of Chiefs in Intellectual Property (ChIPs), a network of women leaders in technology, law, and policy. She has mentored diverse women across the globe as part of the Fortune-U.S. Department of State Global Women’s Mentoring Partnership program. She continues to champion the importance of mentoring and expanding opportunities to include more individuals from underserved communities.
Associate General Counsel and Chief Patent Counsel, Microsoft
Isabella Fu is an Associate General Counsel and Chief Patent Counsel at Microsoft Corporation, where she leads the team of attorneys responsible for patent prosecution, counseling, policy, and strategy.
She joined Microsoft in 2003, and previously was responsible for IP litigation for the company, worldwide. Before joining Microsoft, Isabella was Director of Litigation at Intel Corporation. She practiced at Wilson Sonsini Goodrich & Rosati and Orrick Herrington & Sutcliffe before moving in-house.
She holds an A.B. in Physics from Harvard-Radcliffe College, and a J.D. from Columbia University.
Hon. Fabian Hoffmann
Federal Judge for the Federal Court of Justice in Germany
Judge Hoffmann was appointed to the Bundesgerichtshof (Federal Court of Justice) in Karlsruhe, Germany in 2010. He is a member of the 10th Civil Division (X. Zivilsenat) which has, inter alia, jurisdiction on patent dispute matters. Prior to this appointment, he was a Judge at the Oberlandesgericht (Higher Regional Court) and the Landgericht (Regional Court) in Frankfurt am Main, where he still resides. Before taking the Bench, he worked as an assistant to lawyers admitted to the Bundesgerichtshof in Karlsruhe, drafting submissions on civil law appeals held before the Bundesgerichtshof.
Judge Hoffmann was a member of the Expert Group of European Commission on licensing and valuation of Standard Essential Patents. In this group he contributed several proposals to the report and was especially focused on establishing licensing mechanisms for SEP, the judicial handling of such parents and patents valuation. He continued by providing further support to the legislative processes as an expert to the Legal Committee of the German Parliament with regard to the introduction of a proportionality test for injunctive relief in the German Patent Act.
He studied law at the Johann-Wolfgang-Goethe University in Frankfurt am Main, where he is now a lecturer teaching patent law.
Deputy Director General, World Intellectual Property Organization (WIPO) Patents and Technology Sector
Lisa Jorgenson serves as the Deputy Director General, Patents and Technology Sector at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland which administers the Patent Cooperation Treaty.
She also manages patent and technology legislative and policy advice, and programs relating to the law of patents. She is the first female in this role and is one of three female Deputy Director Generals appointed on January 1, 2021. She has been designated as WIPO’s IP and Gender Champion, working on programs to increase the number of women engaged in intellectual property as well as science, technology, engineering, and math (STEM).
She was previously the Executive Director of the American Intellectual Property Law Association (AIPLA) and Group Vice President, Intellectual Property and Licensing, of STMicroelectronics.
Panelists and Moderators
Legal Director, DVB and Managing Director, Helikon.net
Carter Eltzroth advises on intellectual property, antitrust and other regulatory issues in standards development, licensing frameworks for essential patents, and dispute resolution. His expertise stems from his experience in senior positions within, and representation of, technology providers and standards bodies.
Carter is managing director of Helikon.net, providing legal services to standards development organizations, and to licensors and implementers of standardized technologies. He is Legal Director of the DVB Project, the Geneva-based standards body setting technical standards for digital broadcasting and related fields.
Among other SDOs, Carter has advised the IEEE and the Smart Grid Interoperability Panel on their IPR policies and on innovative frameworks for licensing standard essential patents (patent pools). During 2021 Carter Eltzroth completed an assignment as convenor of holders of patents essential to the next generation video codec VVC as part of a pool fostering initiative organized by the Media Coding Industry Forum (MC-IF).
Carter is an arbitrator with the World Intellectual Property Organization and writes and speaks frequently on legal issues relating to standard-setting and intellectual property. He is a member of the New York bar and a graduate of Oxford University and Columbia Law School. Carter Eltzroth is Senior Member of IEEE and has served as adjunct Professor of Law at American University, Washington.
Hon. James L. Robart
U.S. District Court Judge for the Western District of Washington
The Honorable James L. Robart became a United States District Court Judge for the Western District of Washington in June 2004. Prior to his appointment, he was with Lane Powell in Seattle for 32 years, where he served as Chair of the Litigation Department and Managing Partner. He graduated from Whitman College (B.A. 1969) and Georgetown University Law Center (J.D. 1973).
Judge Robart has presided over several notable civil and criminal cases. His opinion in Simmonds v. Credit Suisse, construing the statute of limitations for Section 16(b) of the Securities and Exchange Act of 1934, was reversed by the Ninth Circuit, but adopted by the United States Supreme Court in an 8-0 opinion.
He is the judge in United States v. City of Seattle, overseeing a consent decree involving an overhaul of Seattle Police Department practices and procedures. He also authored Microsoft Corp. v. Motorola, Inc., which is the first court opinion in the United States setting reasonable and nondiscriminatory (“RAND”) rates for standard essential patents.
Judge Robart served on the Organizing Committee and the Board of Governors for the Federal Circuit Bar Association and is a Fellow of the American College of Trial Lawyers.
US IP Policy Director and Global Director on Intellectual Property Rights, Intel Corporation
Earl Nied is the US IP Policy Director and Global Director on Intellectual Property Rights issues relating to Standards for Intel Corporation. He is the president of the US*MADE Trade Association and actively participates in a number of trade associations on IP matters. He chaired the American National Standards Institute (ANSI) Intellectual Property Rights Policy Committee (IPRPC) 2012-2015. He presently serves on the ANSI Board of Directors and ANSI Executive Standards Council.
He is an active participant in the: International Telecommunications Union Telecommunication (ITU-T) Standardization Sector IPR Ad Hoc Committee; and the European Telecommunications Standards Institute (ETSI) IPR Committee.
In addition, Earl has been a consultant to several international standards development organizations including the Audio Video Coding Standard Workgroup of China (AVS) and the China Electronics Standardization Institute (CESI).
Hon. Kathleen O’Malley (Ret.)
Of Counsel, Irell & Manella
Judge Kathleen O’Malley (Ret.) focuses her practice on litigation consulting involving a broad range of subject matters, all forms of alternative dispute resolution, and intellectual property policy work. Prior to joining Irell, Kate was a federal judge for more than 27 years, including most recently serving on the U.S. Court of Appeals for the Federal Circuit.
Kate was appointed to the Federal Circuit in 2010, after serving on the U.S. District Court for the Northern District of Ohio since 1994. Kate is the first former district court judge to be appointed to the Federal Circuit.
Kate regularly lectures on various IP topics, including the importance of IP to innovation and the importance of innovation to the economy, and has trained judges, lawyers and stakeholders on the U.S. IP system in over a dozen countries around the world. She is the only U.S. representative on the World Intellectual Property Organization’s Judicial Advisory Council and has been involved in many WIPO sponsored projects and programs. Kate is also a senior adviser for the Renewing American Innovation Project at the Center for Strategic and International Studies.
Prior to becoming a judge, Kate served as first assistant and chief of staff to then-Ohio Attorney General Lee Fischer, supervising the office’s 1,100 employees, and, before that, as the chief counsel to the attorney general, supervising the work of over 350 attorneys and litigating major matters on behalf of the State of Ohio and its elected officials. Before her public service, Kate litigated complex business cases at large law firms in Ohio.
Hon. Cathy Ann Bencivengo
U.S. District Court Judge for the Southern District of California
Judge Bencivengo was appointed to the U.S. District Court for the Southern District of California by President Barack Obama, and confirmed on February 10, 2012. Prior to her confirmation, she served as a U.S. Magistrate Judge for the Southern District since December, 2005. Judge Bencivengo is a participant in the Southern District’s Patent Pilot Program and a member of the District’s Criminal Justice Act Advisory Committee.
Before joining the bench, Judge Bencivengo was a partner with the law firm of DLA Piper LLP (formerly Gray, Cary), where she specialized in intellectual property litigation and was National Co-Chair of the firm’s Patent Litigation Practice Group. As a patent litigator, Judge Bencivengo represented both plaintiffs and defendants in a variety of technologies, including computer hardware and software, chemistry, immunology, semiconductor chip manufacturing, medical devices and consumer products. She was also the lead trademark and copyright litigation counsel for Dr. Seuss Enterprises, LLP.
Judge Bencivengo attended Rutgers University in New Jersey, earning a B.A. in journalism and political science and an M.A. in political science as a Fellow at the Eagleton Institute of Politics. She received her J.D. from the University of Michigan Law School, magna cum laude.
Judge Bencivengo is a Master in the J. Clifford Wallace Chapter and the Louis M. Welsh Chapter of the American Inns of Court. She just completed her term as Chair of the Ninth Circuit Education Committee. She is currently serving as the Secretary/Treasurer of the Ninth Circuit District Judges Association and as a Judicial Advisor for the San Diego Chapter of the Federal Bar Association and the Sedona Conference.
Partner, McKool Smith
Warren Lipschitz is a lead trial lawyer focused on high-stakes intellectual property and competition cases.
Warren represents some of the largest standard essential patent holders in the world in their FRAND related disputes. Warren successfully represented Ericsson in the first breach of FRAND jury trial for cellular-related patents. This case was a landmark victory for standard essential patent holders. The jury verdict, upheld by the U.S. Court of Appeals for the Fifth Circuit, endorsed Ericsson’s royalty rate for 4G cellular phones and rejected arguments that would potentially devalue all standard essential patents.
Warren has experience on a wide range of FRAND issues. He has represented clients in breach of contract claims relating to F/RAND commitments, requests for anti-suit injunctions (and anti-anti-suit injunctions), claims that essential patents were unenforceable due to alleged late disclosure, and allegations of anticompetitive behavior premised on FRAND violations. He has litigated these issues in federal court and the International Trade Commission.
Warren graduated Magna Cum Laude from the Northwestern University School of Law. Warren also has undergraduate and graduate degrees in civil and structural engineering, and before becoming a lawyer, practiced in Texas as a licensed Professional Engineer.
Partner, Sidley Austin
Irene Yang is a partner in Sidley’s San Francisco and Palo Alto offices and a co-leader of the firm’s IP Litigation practice, focusing on patent litigation in high tech and the life sciences. She has represented clients in cases involving a diverse set of technologies, such as networking and telecommunications, semiconductors, medical devices, pharmaceuticals, and consumer devices, as well as cases involving FRAND obligations for standard-essential patents.
Irene is a trial lawyer who has represented clients before the Court of Appeals for the Federal Circuit, U.S. District Courts in California, Texas, Delaware, Illinois, New York, and Florida, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). Irene also counsels clients and advises deal teams on IP issues. She currently serves on the Boards of Directors for the Asian American Bar Association of the Greater Bay Area and for the Federal Circuit Bar Association. She also serves on the Northern District of California’s court-appointed mediator panel.
She earned a J.D. from the University of California, Davis School of Law and a B.S. in Computer Science from Stanford University.
IP Partner, Bauz IP Law LLP
Over the course of his twenty-nine-year legal career, Thane gained substantial experience with standard essential patents, including on behalf of global companies such as Sony, Boeing, and MediaTek.
He was Lead Counsel in patent cases involving standard essential patents purportedly covering cellular technologies and data compression. On behalf of a global company, he managed IP portfolio analysis teams that identified standard essential patents. In that capacity, he secured licensing opportunities exceeding $500M.
Thane received his LL.M. with highest honors from The George Washington University Law School, was a Centennial Scholar at the Chicago-Kent College of Law where he received his J.D. degree and obtained his engineering degree with highest honors from the Illinois Institute of Technology. Thane participated in post-graduate studies at Max Planck Institute in Munich. His research was published in the Creighton University Law Review. Subsequently, he served as a law clerk to the Honorable Wilson A. Cowen, U.S. Court of Appeals for the Federal Circuit. In 2022, he will be published by the Texas A&M University Journal of Property Law concerning patent claim definiteness in the Fourth Industrial Revolution.
With twenty-five years of experience in global law firms, Thane founded Bauz IP Law LLP. Thane assists in-house teams with all IP matters including litigation, counseling, and portfolio analysis. He also serves as an in-house consultant.
Timothy D. Syrett
Partner, Wilmer Hale
Tim Syrett is an intellectual property and antitrust litigator. Mr. Syrett has particular experience with disputes at the intersection of antitrust and intellectual property law. He has litigated through trial a variety of issues relating to standard-essential patents, including antitrust and contract claims, the determination of FRAND royalties, patent exhaustion and license defenses, as well as defenses to infringement arising from standard-setting participation. Mr. Syrett also has extensive experience litigating damages issues in patent infringement cases involving a variety of technologies and products, such as cellular communications, microprocessors, content delivery networks and electricity meters. He has represented clients before federal and state courts, the International Trade Commission and the Federal Trade Commission.
In addition to his litigation practice, Mr. Syrett counsels clients on intellectual property and antitrust issues, including regarding licensing, participation in standard-setting organizations, patent assertion entities and patent pools.
Kurt M. Kjelland
Vice President, Legal Counsel at Qualcomm Incorporated
Kurt Kjelland is a Vice President, Legal Counsel at Qualcomm Incorporated. Kurt represents the company in antitrust, patent, and licensing matters, including investigations and litigation.
Kurt led the inside/outside counsel team that obtained a full victory in a seminal antitrust case involving standard essential patents, FTC v. Qualcomm, 969 F.3d 974 (9th Cir. 2020). He also managed an antitrust investigation and litigation with Taiwan Federal Trade Commission, including first of its kind settlement after it had issued a written decision.
He is a co-author of a book chapter “FRAND Licensing of Standard-Essential Patents” in Patents and Standards, first published in 2018, and has spoken extensively on on FRAND, SEPs, patent damages, and the interface between patent and antitrust law.
Kurt is a registered patent attorney and admitted to the California Bar. He received his B.S. in Chemical Engineering from the University of California, Los Angeles, and his J.D. cum laude from the University of Notre Dame. He was named Corporate Counsel of the Year in 2021 by Global Competition Review.
Dr. Justus Baron
Senior Research Associate, Northwestern University, Center on Law, Business, and Economics
Dr. Justus Baron is a Senior Research Associate at Northwestern University’s Center on Law, Business, and Economics. His empirical economic research focuses on technology standards, patents, and technological innovation.
He earned a Ph.D. in Economics from Mines ParisTech. He has taught at Sciences Po Paris, Universite Paris II Assas, and Northwestern University, and has been a guest researcher at Hitotsubashi University and Berlin University of Technology. At Northwestern University, he has created the Searle Center Database on Technology Standards, and organizes the Annual Empirical Research Roundtables on Standardization.
His scholarly research on patents and standards has been published in leading academic journals, including Research Policy, Antitrust Law Journal, Journal of Economics and Management Strategy, and the International Journal of Industrial Organization. In addition to his academic research, he frequently contributes to policy analyses on topics related to standardization.
He is the lead researcher of a consortium assisting the European Commission with an economic impact assessment on Standard-Essential Patents (SEP), he was a member of the European Commission’s Expert Group on Standard Essential Patents, and he has authored comprehensive studies on SEP licensing and the governance of Standard Development Organizations (SDO) for the European Commission’s Joint Research Centre.
Senior Director & Assistant General Counsel for Intellectual Property (IP), Red Hat
Patrick has thirty years of experience advising innovative clients about IP rights in the software and high-tech sectors. He is a business strategist who proactively supports his client’s worldwide business objectives while helping to manage risk.
Patrick is an IP specialist for collaborative software development projects, including the negotiation and structuring of inbound and outbound licenses. In that role, Patrick has gained insight into the attributes of open collaboration and free public access to software and its source code. He oversees Red Hat’s participation with alliances, such as Open Invention Network, and manages the defense of patent litigation.
Patrick attended Washington State University, where he obtained his electrical engineering degree. Patrick received his J.D. at Georgetown University and is a member of the United States Patent Bar and the Utah State Bar.
Partner, Beijing, GEN Law Firm
Mr. He has more than 20 years’ experience in handling IP litigation, antitrust, policy advocacy and compliance matters. He started his legal career as a patent attorney in Silicon Valley and spent about 9 years in a major international law firm before developing his private practice in China. He successfully guided clients on many complex China legal matters, including FRAND rate setting for standard essential patents, injunctive relief in chemical patent litigations, live sports broadcast, bad faith trademark litigations, major licensing transactions in semiconductor and wireless communications. Major industrial associations often consult with Mr. He on China legal and policy matters. Mr. He was selected as Recommended Intellectual Property Lawyer by Chambers Asia-Pacific, Legal 500, Who’s Who Legal, WTR 1000, Benchmark Litigation, ALB, Managing Intellectual Property IP Stars, IAM Patent 1000, IAM Strategy 300 and Global Leaders, and the Client Choice Awards by Lexology.
Mr. He is passionate about making policy changes and contributing to legal environment in China. He was the key consultant conducting a U.S.-China Intellectual Property Dialogue where top U.S. and China experts convene and deliver roadmap documents for China intellectual property reforms. He also leads the policy programs as the executive director of Beijing Zhongguancun (ZGC) Intellectual Property Strategy Research Institute
Mr. He has been actively contributing leadership in education and legal professions. Mr. He is the appointed advisor for LL.M program at Peking University School of IP. Mr. He is Secretary General of Sports IP Committee of China IP Law Society. Mr. He’s specialty also relates to cross-border technology licensing and policy consulting in sustainable development fields. In 2015-2016, he wrote IPR guide for US China Clean Energy Forum (CERC) and edited China version of the Lambert Toolkit for UK IP Office.
Managing Director, Intellectual Property Disputes Practice, Ocean Tomo, a part of J.S. Held
Shelly Irvine is a Managing Director in the Intellectual Property Disputes Practice and leads the San Francisco office of Ocean Tomo, a part of J.S. Held. The firm provides financial expert, management consulting, and advisory services firm focused on intellectual property and other intangible assets.
Ms. Irvine has testified in federal and state court related to claimed damages for patent, copyright, and trademark infringement actions on many occasions. Ms. Irvine is skilled at navigating current and evolving case law when evaluating economic damages, including the lost profits framework/ Panduit analyses, apportionment, the analytical approach, comparable licenses, and issues related to extraterritorial damages (e.g., § 271(f)). She has reviewed thousands of license agreements in many different industries throughout the course of her career, providing a broad frame of reference for royalty rates in many industries and fields.
Ms. Irvine’s testifying practice is bolstered by her emphasis on IP centric consulting. Situated near Silicon Valley, Ms. Irvine has advised dozens of technology companies as well as private equity/VCs in the areas of IP strategy, valuation, and protection. This includes preparation of business plans, benchmarking and best practices, valuation for the purposes of a buy/sell or financing event, commercialization/ value extraction strategies (including through partnerships and joint ventures). Ms. Irvine has been retained in numerous consulting engagement to develop FRAND rates for their SEP portfolios and negotiated license agreements terms.
Ms. Irvine is a member of the Licensing Executive Society, IoT Committee, is a USC Intellectual Property (USCIP) Planning Committee Member and an active member of ChIPs. She is a frequent speaker and guest lecturer at various universities both in the US and abroad. Ms. Irvine is a faculty member of UCL/Taylor Wessing Conference on Standards, FRAND, NPE’s and Injunctions, headed by the U.K.’s Sir Robin Jacob (formerly Lord Justice of Appeal, Court of Appeal of England & Wales), and has spoken at this conference in Washington DC, London and Tokyo.
Partner, Akin Gump
Cono Carrano is a trial lawyer and a registered patent lawyer who focuses his practice on complex patent litigation. His experience primarily involves semiconductors, electronics, software, wireless and optics technology.
Cono has worked with patent trial counsel in numerous European and Asian countries. He has extensive experience assessing, valuing, and negotiating patent licenses in a wide array of technologies, including negotiating fair reasonable, and non-discriminatory (FRAND) terms for standard essential patents (SEPs).
Cono represents clients before The International Trade Commission (ITC); U.S. district courts; U.S. Patent Trial and Appeal Board; and The U.S. Court of Appeals for the Federal Circuit. He brings a sophisticated technical understanding to matters involving a wide range of IP issues.
Cono holds both undergraduate and graduate degrees in engineering, and, prior to entering the practice of law, he was a member of the technical staff and designed supercomputers at AT&T Bell Laboratories.
Senior Patent Counsel, Patent Transaction, Google
Gail Su is a Senior Patent Counsel on the Patent Transactions Team at Google. At Google, Gail handles inbound and outbound patent licensing matters, SEP licensing matters, and complex technology transactions.
Gail also leads a number of Google’s partnerships with nonprofits committed to improving DEI in the legal profession and to making law accessible for all, including the ADAPT Initiative (Advancing Diversity Across Patent Teams).
Partner, Haynes and Boone
Joseph Matal is a partner in the Intellectual Property Practice Group in the Washington, D.C. office of Haynes and Boone, LLP. Joe has served as both the U.S. Patent and Trademark’s Acting Director and Acting Solicitor.
As Acting Solicitor, he defended the agency in intellectual property cases before the U.S. Court of Appeals for the Federal Circuit and U.S. Supreme Court. In his role in the Solicitor’s Office, he participated in briefing almost every major case involving PTAB trials that has come before the Federal Circuit, including cases that have defined the Board’s powers and the evidence that it may consider, the content of final decisions, and the burdens and scope of motions to amend.
Recent cases include Uniloc v. Hulu, Thryv v. Click-to-Call, and Aqua Products v. Matal. Previously, Joe served in senior legal roles for more than a decade for the U.S. Senate Judiciary Committee. In that capacity, he negotiated and drafted many of the key provisions of the America Invents Act.
In his roles at the USPTO, Joe briefed and argued numerous appeals of patent and trademark decisions before the Federal Circuit; oversaw the management of the USPTO and its 13,000 employees; and advised the U.S. Solicitor General’s Office in key IP cases before the Supreme Court.
His practice focuses on USPTO post-issuance proceedings and Federal Circuit appeals.
Dr. Tim Pohlmann
CEO and Founder of IPlytics
Dr. Tim Pohlmann is the CEO and founder of IPlytics. He earned his doctoral degree in economics with the highest distinction from the Berlin Institute of Technology and worked as a post-doctoral researcher at CERNA, MINES ParisTech. Dr. Pohlmann founded IPlytics with the vision to overcome friction and complexity in data-led decisions in industries where standards and patents matter by being the transparent, accessible source of wisdom for all IP professionals.
Dr. Pohlmann is an established expert and has been actively involved in preparing empirical studies for the European Commission, the World Intellectual Property Organization and the German federal government on topics such as SEP determination, the dynamics of standards development, patent pools and FRAND determination. Dr. Pohlmann is recognized as an industry thought leader, panel speaker and adjunct lecturer. He is also the author of several peer-reviewed economist journal articles, and over 50 articles published at IAM Magazine, Managing IP and IPWatchdog.
Maghame IP Consulting PLLC
Taraneh Maghame is a highly regarded IP business leader, widely recognized for her unique combination of strategic corporate IP licensing know-how and high-level government relations and policy expertise. In 2018, Ms. Maghame was appointed to the European Commission’s Expert Group on Licensing and Valuation of Standard Essential Patents. She has been included in the 1AM 300 World’s Leading IP Strategists for multiple years and is a frequent speaker on patent licensing and policy matters.
Prior to establishing Maghame IP Consulting PLLC, a firm that provides strategic counseling and expert services focused on IP issues related to the developmelnt, use and licensing of standards, Ms. Maghame was vice president of wireless programs and corporate development at Via Licensing Corporation, where she developed and managed strategic multi-party licensing programs in wireless and cellular technologies.
Before joining Via in 2017, Ms. Maghame served as senior counsel in Apple’s IP and licensing group, focusing on patent licensing strategy and standards, and represented Apple in global standards-related organizations. Before Apple, she was acting general counsel and vice president for M&A, patent policy and government relations at Tessera Technologies. In this high-profile policy role, she helped to found the Innovation Alliance, an organization representing patent holders’ interests before Congress. She has testified before the Senate Committee on the Judiciary and the Federal Trade Commission regarding patent matters.
Ms. Maghame has served as senior IP counsel at Hewlett-Packard and Compaq Computer Corporation and has been a member of distinguished IP law firms Brobeck, Phleger & Harrison and Perkins Coie, specializing in IP litigation, licensing and counselling. She is a graduate of Georgetown University Law Centre and is admitted to practice in California and Washington State, as well as before the USPTO.
Executive Director, Intellectual Property, HTC America
Owais Siddiqui is Executive Director, Intellectual Property at HTC America, Inc. He manages patent litigation and works on patent licensing and acquisition matters. Before joining HTC, Owais worked at large global law firms, where he focused on litigation for both large and small companies.
He has litigated patents in numerous technologies, including semiconductor manufacturing and design, user interface design, communications protocols, and speech coding. He has over fifteen years of litigation experience, including over ten years managing patent litigation and directing litigation strategy and eight years of hands-on litigation work. He has spoken at conferences in the United States and Taiwan.
Prior to his legal career, Owais obtained practical engineering experience in the computer and aerospace industries. He earned his law degree from the University of Texas School of Law, where he was president of the IP law society and national champion of the Giles S. Rich IP moot court competition. Owais has earned a master’s degree in electrical engineering from the University of Houston and a bachelor’s degree in electrical engineering from the University of Texas at Austin.
Deputy Director of the Policy Planning and Research Division, Japan Patent Office
Koji KAWAHARA serves as Deputy Director of the Policy Planning and Research Division of the Japan Patent Office. His responsibilities there include oversight of issues relating to Standard Essential Patents.
Mr. Kawahara participated in the preparation of draft revisions to the JPO’s Guide to Licensing Negotiations Involving Standard Essential Patents, which the JPO published in May of 2022. He is also responsible for on-going assessments of SEPs and FRAND developments in jurisdictions outside of Japan.
Before Mr. Kawahara assumed responsibilities concerning SEPs and FRAND issues, he gained extensive knowledge concerning the examination of AI-related inventions. He was part of a team that researched patenting trends on AI-related inventions and authored various Case Examples in a compilation pertinent to AI-related technologies.
Mr. Kawahara has over six years of experience as a patent examiner in the field of information technology, telecommunications technology, and semiconductor technology. He obtained a degree from the Tokyo University of Science in mathematical information science.
Head of Legal, Via Licensing Corporation
Jane Bu is a member of the executive team at Via. A highly regarded IP strategist and expert on multi-party licensing programs, international IP policies, and cross-border global litigations, Ms. Bu has over 20 years of experience advising technology companies worldwide on the protection, development, and monetization of intellectual property.
At Via, an independent subsidiary of US audio pioneer Dolby Laboratories, Ms. Bu oversees the legal affairs for the company. She serves as the principal attorney for Via’s patent pool programs with a special focus on China related business and licensing strategy.
Before joining Via, Ms. Bu concentrated her private practice on high-tech patent litigations, dispute resolutions, and transactions. She managed all aspects of complex litigations and represented clients on portfolio valuation, prosecution, and re-examination matters. Ms. Bu was previously a member of the intellectual property groups at international law firms such as Ropes & Gray and McDermott, Will & Emery.
Before becoming an attorney, Ms. Bu was a medicinal chemist who designed, researched, synthesized, and patented novel, heterocyclic drug candidates for neurological disorders.
Ms. Bu earned her JD from the Santa Clara University School of Law, her BS in chemistry from the University of California San Diego, and is a registered US patent attorney.
Vice President, Avanci
During her career, Marianne has gained a unique in-house perspective on IP-related business practices within the wireless ecosystem.
At Avanci, she is developing and leading new licensing programs for the Internet of Things (IoT) beyond the automotive industry.
Marianne joined Avanci from Nordic Semiconductor, where she was most recently Senior Vice President, Legal & Compliance, with responsibilities including patent licensing activities, concluding several ground-breaking agreements. Earlier in her career, Marianne worked for Huawei Technologies, Nexans Norway AS, Equinor and Aker Solutions where she focused on legal issues associated with technology-related commercial transactions.
Marianne graduated from the University of Oslo School of Law. She chairs the Board of the Norwegian Company Lawyers Association (NCLA) where she has been involved in their mentoring programs aimed at helping women advance in business and technology-related careers.
Ignacio de Castro
Director – IP Disputes and External Relations Division – WIPO Arbitration and Mediation Center, Geneva, Switzerland
Ignacio is a Spanish lawyer and an English solicitor. Ignacio holds an LL.M. degree from King’s College London.
Before joining WIPO in 2002, he practiced with the law firms Baker & McKenzie, London and Freshfields Bruckhaus Deringer, London in the areas of international arbitration and litigation.
Ignacio is responsible for the administration of mediation, arbitration and expert determination cases filed with the WIPO Arbitration and Mediation Center and the development and promotion of WIPO alternative dispute resolution (ADR). This includes implementing ADR collaborations concluded with IP Offices and establishing alternative dispute resolution (ADR) procedures adapted to specific areas of intellectual property.