209: Using Competitive Intelligence to Drive your IP Portfolio

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1 ACC s 2013 Annual Meeting Monday, October 28 11:00 AM - 12:30 PM 209: Using Competitive Intelligence to Drive your IP Portfolio Christine Collard Partner Borden Ladner Gervais LLP Ywe Looper Director, Legal Affairs Boehringer Ingelheim (Canada) Ltd/ltee Kevin O'Brien IP Counsel UTC Aerospace Systems Krishna Pathiyal Senior Director, IP Department Cisco Systems John Schneider Vice President Acacia Research Group, LLC This material is protected by copyright. Copyright 2013 various authors and the Association of Corporate Counsel (ACC). Materials may not be reproduced without the consent of ACC or the copyright holder. Reprint permission requests should be directed to ACC s Legal Resources Department at 1 of 52

2 Faculty Biographies Session 209 Christine Collard Christine Collard is a partner with Borden Ladner Gervais (BLG) in Canada and specializes in patent law. She is a member of the National Intellectual Property (IP) Group, National IP Litigation Group, National Oil and Gas Group, and Biotech and Pharmaceutical Group at BLG. She was called to the bar in Ontario (Canada) in 1995 and became a registered Canadian patent agent in She focuses on patent litigation and patent prosecution and opinions, with an emphasis on technology related to oil and gas, industrial chemicals, and life sciences and medical devices. She has expertise in strategic IP protection of technologies, obtaining patent protection worldwide, managing international IP portfolios and enforcing Canadian IP rights. Her recent publications include co-authoring a paper on patent strategies in the oil and gas industry, presented in September 2012 at the World Heavy Oil Congress; and authoring a paper on patenting life sciences in Canada, presented in October 2011 at the International Bar Association annual meeting. She is also a former editor and current contributing author to BLG s publication Life Sciences & Chemical Patent Practice in Canada: A Practical Guide, currently in its 3 rd edition published in Ywe Looper Ywe J. Looper is Director, Legal Affairs of Boehringer Ingelheim (Canada) Ltd. and is responsible for legal and patents matters for all areas of the Canadian operations, including prescription medicines, animal health and consumer health care products. Mr. Looper was formerly responsible for patent and legal matters at a Boehringer Ingelheim research center for virology and infectious disease research. Mr. Looper has experience in legal and patent matters arising during discovery to pre-clinical research phase in a range of therapeutic areas, during clinical and development phase including process development and sourcing issues, as well as during launch in Canada of BI products and post-launch product maintenance. Mr. Looper has experience in due diligence assessments of outside business opportunities and product-based transactions. Mr. Looper also has experience in the defense of BI products against patent/trademark challenges and in other litigation. Prior to joining BI, Mr. Looper was Vice-President, Patents and Legal Affairs and Corporate Secretary with a publicly-traded biopharmaceutical company. Mr. Looper holds degrees in science (B. Sc. biology) and law (LL.B) from the University of Ottawa, and a Master degree in intellectual property from Pierce Law Center in the US. He is a member of the Law Society of Upper Canada, a registered Canadian patent agent, a registered Canadian trademark agent, and is licensed to practice with the US Patent and Trademark Office. 2 of 52

3 Kevin O'Brien Kevin O'Brien is assistant general counsel, customer service, at UTC Aerospace Systems ("UTAS"). UTAS was formed in 2012 by combining Hamilton Sundstrand and Goodrich Corporation to form one of the world's largest suppliers of technologically advanced aerospace and defense products. Mr. O'Brien currently serves as treasurer of the ACC Charlotte chapter. Prior to joining Goodrich, he practiced in the IP-litigation group of Alston & Bird. Prior to law school, Mr. O'Brien served in the U.S. Submarine Force and worked as an engineer with Michelin Tire Corporation. He earned his BS, with honors, from the Georgia Institute of Technology and his JD, cum laude, from the University of South Carolina. Krishna Pathiyal Senior Director, IP Department Cisco Systems John Schneider John E. Schneider is currently Vice President with Acacia Research Group, LLC. His responsibilities include initial review of portfolios for potential acquisition as well as licensing and enforcement of patents acquired by Acacia. His work involves a variety of technologies including business methods, consumer products and energy conservation. Prior to joining Acacia, Mr. Schneider was Senior Counsel with Fulbright & Jaworski in their Houston office where he was involved in all aspects of patent law including litigation, licensing, prosecution and client counseling. Before his work at Fulbright, he was Counsel with Exxon Mobil Chemical Company where he served as lead patent counsel for several major product groups. His bar association memberships include the State Bar of Texas and the American Intellectual Property Association. Mr. Schneider has spoken and published on various patent related topics including the America Invents Act. He is admitted to the state bars of Texas, New York, and Colorado as well as the Supreme Court of the United States, the Court of Appeals for the Federal Circuit and the Court of Appeals for the Armed forces and the Patent and Trademark Office. His volunteer activities include serving as Board Secretary for the Arc of Texas, an organization supporting individuals with intellectual and developmental disabilities and volunteering with the Special Olympics. From 1978 to 2001, he served in the U.S Army and Army Reserve including service as a Judge Advocate. Mr. Schneider holds a B.S. in biology from Lehigh University and a J.D. from Fordham University School of Law. 3 of 52

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