OPINIONS OF COUNSEL. Moderator ROBERT W. TURNER, Dallas Jones Day. NESTOR FEDERICO HO, Austin Chief Legal Intellectual Property Counsel Silicon Labs
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1 OPINIONS OF COUNSEL Moderator ROBERT W. TURNER, Dallas Jones Day NESTOR FEDERICO HO, Austin Chief Legal Intellectual Property Counsel Silicon Labs LISA K. JORGENSON, Carrollton Director, Intellectual Property and Licensing, Assistant Secretary STMicroelectronics, Inc. DAVID W. WESTERGARD, Boise, ID Chief Counsel, Patent Litigation & Licensing Micron Technology State Bar of Texas 17 TH ANNUAL INTELLECTUAL PROPERTY LAW COURSE March 4-5, 2004 San Antonio CHAPTER 8
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3 Néstor F. Ho Biography Néstor F. Ho currently represents Silicon Laboratories Inc. as its Chief Legal and Intellectual Property Counsel. Silicon Labs (SLAB: NASDAQ), a leading designer of high-performance, analog-intensive mixed-signal integrated circuits, is one of the most successful high-tech companies in Central Texas. Prior to joining Silicon Labs, Mr. Ho concurrently held dual posts as Division I.P. Counsel and I.P. Manager for the Latin America and Africa Regions for the 3M Company. In these positions, Néstor advised 3M s telecommunications, visual systems, and optical fibers businesses, as well as over 20 foreign subsidiaries. Before becoming an in-house counsel, Mr. Ho practiced privately, first with the law firm of Faegre & Benson, an international full-practice law firm, headquartered in Minneapolis, MN. Later, he practiced with the law firm of Arnold, White & Durkee, one of the preeminent IP litigation firms in the country. While in private practice, Mr. Ho's counseled several high-profile clients, including corporations such as Samsung, Applied Materials, Medtronic, and Intel. During his career, Mr. Ho has actively participated in both the local and national I.P. bar. He has spoken at both national and international conferences. Most recently, he served as the Vice-Chairman for the AIPLA PCT Issues Committee. Mr. Ho was born and raised in Panama City, Panama. He earned his J.D. from Indiana University, magna cum laude, Order of the Coif, where he served as an Editor for the Indiana Law Journal. He received a B.S. in Electrical Engineering from the University of Michigan. He also is a graduate with high honors from the University of Texas School of Law, where he received an LL.M. in international law.
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5 Lisa K. Jorgenson, Esq Mockingbird Lane Colleyville, Texas Work PROFESSIONAL EXPERIENCE 2002 STMicroelectronics, Inc. Carrollton, TX Group Vice President, Intellectual Property and Licensing STMicroelectronics, Inc. Carrollton, TX - Director, Intellectual Property and Licensing and Assistant Secretary Responsibilities include managing intellectual property matters for a multinational semiconductor corporation including: overseeing multimillion dollar annual budgets; hiring, training and supervising patent agents and attorneys; directing external technical consultants, outside counsel and foreign agents; negotiating multimillion dollar licensing agreements, advising senior management on intellectual property issues impacting the company and the industry, and staying abreast of new industry standards Patent Attorney. Responsibilities included: establishing a European patent department; implementing a computerized docketing system; prosecuting patent applications for semiconductor devices and fabrication processes; training patent attorneys and staff; dealing with various trademark and copyright issues; directing outside counsel and technical consultants including reverse engineering of semiconductor devices; presenting in-house training seminars for management, scientists and engineers; and, providing licensing and litigation support Bickel & Brewer, Dallas, TX, Associate Attorney Litigation practice including client counseling, preparing and presenting motions in state and federal court, taking and defending depositions, preparing witnesses and preparing, and responding to, discovery requests. Areas of practice included trade secret law, contract law, employee/employer law, banking law, and real estate law Westinghouse Electric Corporation, Chicago, Illinois, Sales Engineer EDUCATION JD with Distinction 1987, The John Marshall Law School, Chicago, Illinois. MS Industrial Management 1983, Purdue University. BS Biology; Minor: Chemistry 1978, Saint Mary's College South Bend, IN ADMISSIONS Texas State Bar, United States Court of Appeals for the Federal Circuit, United States District Court for the Northern District of Texas, United States Patent and Trademark Office. - Reg. No. 34,845.
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7 W. David Westergard is a 1988 graduate of the law school at Brigham Young University. Since 1996, he has served as Chief Counsel for Patent Litigation and Licensing at Micron Technology Inc in Boise, Idaho. Prior to joining Micron, Mr. Westergard was associated with the patent litigation firm of Arnold, White & Durkee in Houston, Texas where he participated in complex patent litigation for large companies, including for Intel, Medtronic and Halliburton. In , Mr. Westergard served as a law clerk to the Honorable Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.
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9 Robert W. Turner 2727 No. Harwood Dallas, Texas (214) November 1990 to Present: Partner and head of the Intellectual Property section (Dallas Office) of Jones, Day, Reavis & Pogue, an international law firm with about 1800 lawyers and twenty-eight offices worldwide. Member of the Jones Day Litigation Group which was recognized by the American Lawyer (January 2002) as the Litigation Department of the Year ( ). September 1973 to October Founding partner and member of the management committee of Hubbard, Thurman, Turner, Tucker & Harris, specializing in intellectual property law to August, Associate and then partner at Hyer, Eichenroht, Thompson and Turner, Houston, Texas, specializing in Intellectual Property Law to Law clerk to the Honorable Ben. C. Connally, Chief Judge of the Southern District of Texas. REPRESENTATIVE TRANSACTIONS AND PROFESSIONAL EXPERTISE Over 35 years experience in virtually all aspects of patent, trademark and copyright law, including the preparation and prosecution of complex mechanical, electronic and computer patent applications. Lead counsel in numerous important intellectual property lawsuits over the last 25 years. Represented the following clients in litigation involving patent, trade secret, trademark and trade dress, copyright, unfair competition, antitrust and/or contract issues: Baker International (now Baker-Hughes) and related companies; Bausch and Lomb; Bethlehem Steel; Dresser Industries; U.S. Industries; Phillips Petroleum; BSD Medical; Cameron Iron Works; SEDCO; U.S. Aluminum; Frymaster Corp.; Washex; Poulan/Weed Eater Division of White Consolidated Industries; Precision Dynamics; Gearhart Industries; Pennwalt; Whitehall; Amsco; Texas Instruments Incorporated; PepsiCo, Oryx Energy, Texas Industries and numerous others. Experience as lead counsel has included State and federal court bench and jury trials and appeals, including the Fifth Circuit and Federal Circuit, two 337 actions in the U.S. International Trade Commission, and arbitration of a major patent and trade secret case under the rules of the International Chamber of Commerce. Dealt with many issues involving international protection, exploitation or enforcement of intellectual property rights. Listed in the Intellectual Property Section of The Best Lawyers in America since 1991 and on D Magazine's, list of "The Best Lawyers in Dallas" (1997 and 2001). Also listed in the International Who's Who of Business Lawyers, as one of 74 U.S. patent attorneys, Chambers USA, America's Leading Business Lawyers, , and featured as one of the go to lawyers for High Tech in Texas by the Texas Lawyer (July, 2000). Named to Texas Monthly's Super Lawyers in Texas, DLMAIN01: ROBERT.wpd Printed: 02/23/04 11:43AM
10 Testified as an expert witness numerous times on intellectual property issues and has served as a Special Master in three patent infringement cases. Registered to practice before the U.S. Patent and Trademark Office since 1967; Registration No. 24,184. PROFESSIONAL AFFILIATIONS State Bar of Texas College of the State Bar of Texas Dallas Bar Association Dallas-Fort Worth Patent Law Association Houston Bar Association (Past) Houston Intellectual Property Law Association (Past) Active in various sections and committees of the named organizations over the years and have held various offices. Was Chairman of the 2000 member Intellectual Property Section of the State Bar of Texas, June, June EDUCATION The University of Texas School of Law, Austin, Texas 1963, LLB, Phi Delta Phi The Rice Institute, Houston, Texas 1960, B.A., Deans Honor List LEGAL TECHNICAL EXPERIENCE 1957 to worked in the electronic and research laboratories of two companies in the electrical and radiation well logging business, and from 1960 to 1963 was an electronic and research technician for Texas Nuclear Corp. in Austin, Texas. Designed and built complex electronic equipment for research use and commercial sale. Legal experience has included one year in the Texas Legislative Counsel, two years as a Law Clerk to U.S. District Judge Ben C. Connally, Chief Judge for the Southern District of Texas (participating in five major patent trials); eight years as an associate and then partner in a Houston Intellectual Property law firm; 17 years as a founding partner of a 20-plus lawyer Dallas and Houston Intellectual Property law firm; and the present position at Jones, Day, Reavis & Pogue. PUBLICATIONS, TEACHING AND SPEAKING ENGAGEMENTS Adjunct Professor, the University of Texas School of Law, 1992, to the present, teaching a course in Enforcement of Intellectual Property. Faculty member, Patent Resources Group, Inc., 1988 to 1992, Patent and Copyright Litigation in Electronics and Computer cases. Faculty member, Patent Resources Group, Inc., 1993 to present, Designing Around Valid U.S. Patents. (3-4 programs per year). DLMAIN01: ROBERT.wpd Printed: 02/23/04 11:43AM
11 Occasional lecturer in Intellectual Property law, Southern Methodist University School of Law and Baylor Law School. Chapter on Intellectual Property Law, Fifth Circuit Symposium, 1987 and 1988, Texas Tech Law Review. Chapter on Patent Litigation, IDEA LAW, published 1978 by the State Bar of Texas. "Arbitration in Patent Cases," 1987 PATENT LAW MANUAL, presented at the Southwestern Legal Foundation Symposium on Intellectual Property Law. Co-author, "Best Mode Problems," HIPLA Conference, "Litigation Considerations in Preparing Patent Applications," IPLA Section, State Bar of Texas, "Copyright Misuse in Licensing Computer Software," The University of Texas Computer Law and Technology Symposium, September "Doctrine of Equivalents and Hypothetical Claims," Southwest Legal Foundation Institute on Patent Law, November "Designing Around U.S. Patents," Southwest Legal Foundation Institute on Patent Law, November Co-author of the course material for the Patent Resources course on "Designing Around Valid U.S. Patents." Panel Member "Use and Abuse of Special Masters," State Bar of Texas Intellectual Property Institute, Presentation on Damages, ABA Intellectual Property Mid Year Conference in Williamsport, Virginia, 1998, and at The University of Texas Advanced Patent Law Seminar, 1997, 1998 and Presentation on Infringement Law at the April, 2000 conference entitled "Intellectual Property Litigation in the 21st Century" sponsored by the Texas Intellectual Property Journal and the Texas Intellectual Property Law Society. Moderator for Judges Panels - May 2000 at the State Bar of Texas High Tech Litigation Conference and in November, 2000 and 2001 at the University of Texas Advanced Patent Law Institute. "The Impact of Festo in Patent Litigation," State Bar of Texas IP Institute, 2002, and Dallas-Fort Worth IP Law Association, "Design Around, Doctrine of Equivalents and Festo," University of Texas Advanced Patent Law Institute, PERSONAL Born February 19, Married, four children. Amateur Radio Operator since 1953 (Amateur Extra License). DLMAIN01: ROBERT.wpd Printed: 02/23/04 11:43AM
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