OSA Corporate Webinar Program

Empowering your success through virtual learning


Originally Recorded:
7 December 2011
Run Time: 90 Minutes

• Live webinar
• 60-day access to recorded webinar
• PDF of the PowerPoint Presentation

• OSA Corporate Members: $75
• Non-Members: $175

Best Value:
Company License for multiple participants: $190 for OSA Corporate Members

Presented By:

OSA Corporate Associates

In Partnership with:

Sterne Kessler Goldstein Fox

IP Disputes: Patent & Trademark Enforcement, Defense, and Strategy (Webinar #5)

Webinar Series: Maximizing Innovation R.O.I. Through Intellectual Property Ownership, Protection, Enforcement, & Strategy

Speakers: David K.S. Cornwell and Monica Riva Talley, SKGF

This presentation will focus on an in-depth look at intellectual property contracts and the implementation strategies necessary for successful execution of each option. In addition to providing a thorough discussion of key employment contracts including non-competition, non-disclosure, non-solicitation, and joint development agreements, the speakers will discuss potential problems that could occur including coercion and ownership disputes. Advising new employers and litigation options will also be featured in this presentation. Finally, a discussion of patent and trademark licensing negotiations and agreements will round-out this overview of IP contracts.

What You Will Learn

  • How to build a defensive strategy when accused of patent infringement, as well as how to move forward with an enforcement strategy if your IP has been infringed
  • The differences between key offensive tactical points including injunctions, standards for preliminary and permanent relief, and alternative dispute resolution
  • How to leverage key defensive tactics including validity vs. non-infringement vs. inequitable conduct defenses, Markman Hearings, patent reexamination, and patent forensics services
  • The 411 on trademark opposition and cancellation procedures, enforcement of rights through District Court litigation, and domain name proceedings

Who Should Attend

  • In house legal counsel and other in house administrators of intellectual property
  • Managers, Directors, Vice Presidents, and C-Level Executives of U.S. and international companies with responsibilities in the following departments:
    • Marketing/Brand Management
    • Product Development
    • Intellectual Property & Licensing
    • Global Relations
    • Strategic Planning
    • R&D Portfolio Management
    • Compliance

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CornwellDavid K.S. Cornwell
David Cornwell is a Director at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox, where he heads the CleanTech Industry Group and the Patent Forensics Practice Group, and is also a director in the Mechanical Group. His technological experience is primarily in the areas of mechanical engineering and energy.

Mr. Cornwell specializes in patent litigation in the fields of consumer product protection, clean energy and clean technology, biotechnology, computers and related technologies. Mr. Cornwell has been lead counsel in over sixty patent cases, is known for his creative litigation strategies, and is viewed as a trusted advisor to Fortune 1000 companies headquartered around the world.

Prior to joining the firm, Mr. Cornwell was Associate Patent Counsel for the University of California at Los Alamos National Laboratory, and worked as a Patent Examiner in the field of missile guidance systems.

He has extensive experience protecting inventions in a diverse range of technologies, including wireless transceivers; analog and digital control systems; computer processor and memory architectures; graphics processing units; expert systems; medical devices; and bioinformatics. Experienced with inter partes related matters, Mr. Lee assists his clients with the analysis of and strategies relating to infringement, validity and enforcement positions in a variety of contexts.

Monica-TalleyMonica Riva Talley
Monica Talley is a director in the Mechanical Group at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox. She has over 15 years of experience protecting some of the world's most recognizable brands. She is known for respecting the business motivations that drive the selection of trademarks, and for providing clients with creative, cost-effective, and practical solutions that work within both business and legal parameters. She specializes in trademark portfolio analysis and management, counseling, clearance, and prosecution.

Ms. Talley has been involved with every aspect of trademark, service mark, trade name, unfair competition, false advertising, and trade dress litigation. She also has significant expertise in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She has handled a wide range of Internet trademark and domain name disputes; filed arbitration complaints under ICANN's Uniform Dispute Resolution Policy; negotiated resolutions to disputes; and drafted advantageous settlement and coexistence agreements.

Webinars in This Series