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Webinar Presenters


Moderator:

Charles Macedo Charles Macedo
Partner
Amster, Rothstein & Ebenstein, LLP

Charles R. Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios. Fluent in technical jargon spoken by inventors and clients, patentese spoken at the PTO, legalese spoken by courts and attorneys, business jargon spoken by management, and plain English, he seeks to translate complex subject matter into terms all can understand. The author of The Corporate Insider's Guide to U.S. Patent Practice, Mr. Macedo has been cited as an authority on intellectual property issues by the Wall Street Journal, Dow Jones, BNA, Bloomberg, Inside Counsel, Managing Intellectual Property, Technology Transfer Tactics, IP Law 360, and other media. His patent experience encompasses a broad range of industries and products including Internet, e-commerce and computer-enabled inventions; financial services and transaction processing; Software-As-A-Service; life sciences; social media; green energy and power; apparel and life sciences, to name a few. Mr. Macedo also has enforced and defended against trademark assertions for financial service providers, non-profit organizations, cosmetic companies, luxury retailers of designer handbags and retail chains. He also advises clients on IP contracts, licensing and confidentiality agreements.

By identifying vulnerabilities and considering variations on design concepts, Mr. Macedo helps clients develop strategies to maximize protection and prevent infringement challenges. He frequently serves as special counsel to companies seeking an IP strategy, not just a patent; to IP holders in anticipation of litigation and as coordinating counsel for multiple law firms.

Even before the State Street case was decided, he successfully defended the Discover Card division of Morgan Stanley from charges of patent infringement, and obtained a summary judgment of noninfringement. He recently led the ARE litigation team representing a financial institution asserting a portfolio of financial service-related patents against competitors.

Mr. Macedo writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. As Co- Chair of the Amicus Committee of the New York Intellectual Property Law Association, Mr. Macedo has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Mayo v. Prometheus (at the Supreme Court), Association of Moleular Pathology v. Myriad Genetics Inc. (at the Supreme Court and the Federal Circuit), CLS Bank Int’t v. Alice (at the Federal Circuit en banc). His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Second Circuit and for certiorari to the U.S. Supreme Court on behalf of various clients.

He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989–1990. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo is included in SuperLawyers and Million Dollar Verdict.

 
Brian Chase Brian Chase
General Counsel
Foursquare Labs

Brian Chase is general counsel for Foursquare Labs, Inc., a leading location-based social networking service that helps users make the most of where they are. Prior to joining Foursquare, Brian was an attorney at the law firm Gunderson, Dettmer, Stough, Villeneuve, Franklin & Hachigian, LLP where he represented a broad range of companies in the areas of corporate partnering, strategic alliances, intellectual property and technology protection, privacy, advertising, and licensing and commercialization of intellectual property and technology assets. Brian is a graduate of the University of Utah and Boston University School of Law, Cum Laude. Brian serves as a member of the Future of Privacy Forum’s Advisory Board.

 
Michael Kasdan Michael Kasdan
Partner
Amster, Rothstein & Ebenstein, LLP

Michael Kasdan’s passion for science, technology and the entrepreneurial vision of his clients drives his advocacy. As a litigator, he negotiates, defends and asserts IP rights before the courts, the US Patent and Trademark Office, the International Trade Commission and in private arbitration’s and mediation. As an advisor, he works with both established companies and start-ups to obtain, evaluate, value, license and develop patent portfolios and trademarks.

Trained in electrical engineering and with a business background as a technology consultant, Mr. Kasdan works with a broad range of technologies, including consumer electronics, wireless devices, computer architecture and networks, semiconductor chips, Internet and e-commerce platforms, and medical products and devices.

Mr. Kasdan’s clients rely on him to resolve cases efficiently and cost-effectively. For example:

  • In a recent fast-moving ITC case, he spearheaded the two key claim construction issues for the joint defense group. The Administrative Law Judge agreed to stage the claim construction phase on potentially dispositive terms early in the case, which is unusual in the ITC. The success at getting the Court to agree to an early claim construction phase drove favorable early settlements for numerous defendants.
  • In a competitor case brought as part of a global patent war between major electronics companies, Mr. Kasdan was instrumental in the defense of patent infringement claims in the semiconductor case and helped to obtain a jury verdict of non-infringement for his client.
  • Currently, he is a key member of the ARE team defending a series of patent claims asserting infringement of mechanical processes, inspection processes and the materials structure of diaper and training pant products.

Mr. Kasdan also counsels clients on strategic patent prosecution and portfolio development, and provides opinions and analyses on issues including patent infringement, validity and enforceability.

During 2008-2009, Mr. Kasdan was seconded to Panasonic Corporation in Japan. As in-house patent counsel in Panasonic’s licensing center, he acted as lead counsel representing the company in numerous third-party patent assertions and license negotiations, in which he was responsible for developing substantive defensive positions. He also provided legal opinions across a broad set of technology areas and in many facets of patent law, and negotiated complex agreements, including portfolio cross-license agreements. In addition, he worked with the company’s managers and engineers to identify high value patents and strengthen their protection, evaluate and 2 mitigate exposure to infringement claims by others and manage patent licensing agreements among global electronics makers, and provided training on all aspects of IP law.

Mr. Kasdan began his career as a technology consultant with Andersen Consulting (now Accenture) during the early stages of Internet technologies. Since his time at NYU School of Law, Mr. Kasdan has been on the ground floor of efforts to turn New York City and State into a hub for innovation and entrepreneurship in technology, Internet, e-commerce and new media. He was an active participant in an incubator for startups through which he counseled new companies on legal, financing and business issues. He is also serving as Chairman of the Board of Directors of CityScience, a nonprofit organization that promotes science, engineering, and math education and teacher development through hands-on projectbased learning in New York City elementary and middle schools.

Today, start-up and early-stage companies find a creative, high energy, businessminded advocate in Mr. Kasdan. He counsels entrepreneurs involved in fashion and design, mobile apps, Internet and ecommerce platforms, as well as other areas where IP issues are crucial to success. In particular, he helps young companies to assess existing IP in their space and guides them on the IP and construction protections available to them as well going forward IP strategy.

Mr. Kasdan frequently writes and speaks on a range of topics including IP litigation, essential patents, and patent monetization and licensing practices, patent eligibility, patent exhaustion, willful infringement, patent misuse and standards estoppel, damages and patent valuation, inequitable conduct, enforcement of standards, social media and privacy issues, and legal ethics. The media often turns to Mr. Kasdan for commentary on ongoing patent cases, key cases and changes in the law, and social media issues.

Mr. Kasdan also teaches as a guest lecturer at his alma mater, NYU, as well as at New York Law School, addressing topics such as IP Licensing, global patent litigation, patent exhaustion, and inequitable conduct. Mr. Kasdan clerked for the Honorable Judge Roderick R. McKelvie in the United States District Court for the District of Delaware. Prior to joining Amster Rothstein & Ebenstein LLP, he was an associate in the intellectual property group of Kirkland & Ellis LLP.

On the home-front, he is married and a father of two, and is a veteran little league baseball coach.

 
Brian Miller Brian Miller
General Counsel
Education Dynamics

Brian is currently General Counsel of MediaMath, the leading provider of digital media trading technology and services, and inventor of the demand side platform (DSP). Brian also serves as Chairman of the Board and Pro Bono General Counsel for MOUSE, a New York-based non-profit focused on youth development through technology. Before that, he was General Counsel & Chief Compliance Officer of EducationDynamics, higher education’s leading marketing information and technology services company dedicated to helping institutions find, enroll and retain students.

At EducationDynamics, Brian oversaw their legal affairs and regulatory compliance program and advised the company on corporate and strategic matters. ?Prior to joining EducationDynamics, Brian was Senior Corporate Counsel at LivePerson, a NASDAQ-listed technology company that is a leading provider of online engagement solutions. ? Earlier in his career, Brian was a corporate attorney at Gunderson Dettmer, one of the country's top technology law firms, where his practice focused on high-growth and later-stage software, hardware and Internet companies. Brian also practiced at Debevoise & Plimpton, a leading global law firm, where he focused on corporate and strategic transactions.

Brian received his B.A. in Philosophy from Haverford College and his J.D. from Columbia Law School. Brian also studied at Pembroke College in Oxford University and was a member of the Pembroke College Boat Club. He is a member of the NYAC Triathlon Club and the Haverford Old Lloydians Club.

 
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