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USPTO Post-Grant Patent Trials 2017

Speaker(s): David L. McCombs, Eldora L. Ellison, Ph.D., Hans Sauer, Ph.D., Hon. Faith S. Hochberg, Jason E. Stach, Jonathan Stroud, Kevin J. Post, Leslie Fischer, Ph.D., Lisa A. Samuels, Meredith Martin Addy, Naveen Modi, Rekha Hanu, Ph.D., Robert Greene Sterne, Scott A. McKeown, Scott R Boalick, Timothy E. Bianchi
Recorded on: Sep. 25, 2017
PLI Program #: 186786

Deputy Chief Judge Boalick was appointed as an Administrative Patent Judge in April 2007.  Prior to his appointment to the Board, Deputy Chief Judge Boalick served as a patent attorney with the Department of the Navy at two different laboratories.  Before that he served as an associate at the law firm of Fish & Richardson.  Prior to entering private practice, Deputy Chief Judge Boalick served as a Judicial Law Clerk to the Honorable Alvin A. Schall of the United States Court of Appeals for the Federal Circuit.  Deputy Chief Judge Boalick earned a law degree, magna cum laude, from the Georgetown University Law Center where he was a Notes and Comments Editor of The Georgetown Law Journal and received the Leon Robbin Patent Award.  He earned both a M.S.E. degree in Systems Engineering and a B.S.E. degree in Electrical Engineering, magna cum laude, from the University of Pennsylvania.

Jonathan Stroud, a former patent examiner and litigator for Finnegan, Henderson, Farabow, Garrett & Dunner LLP, has litigated, examined, prosecuted, negotiated, and counseled clients through patent disputes, focusing on the patentability disputes before the Patent Trial and Appeals Board (PTAB) and their complex interactions with other forms of litigation.

At the USPTO for five years, Mr. Stroud examined medical devices, such as minimally invasive surgical devices, stents, shunts, bone implants, heart valves, cutters, spacers, electrodes, and many other medical technologies. Mr. Stroud interned at the U.S. International Trade Commission for Judge Robert K. Rogers, where he focused on discovery disputes in administrative proceedings.

At Finnegan, he represented clients such as LG, Eli Lilly & Co., BMW, Bausch & Lomb, and Freedom Innovations on dozens of covered business method (CBM), post-grant (PGR), and inter partes reviews (IPRs) for both patent owners and petitioners, drafting petitions, responses, and motions. He drafted a CBM filed the first night of the proceedings’ availability that resulted in all claims being held unpatentable.

He now manages outside counsel, settlement and licensing negotiations, prior art analysis, legal strategy, and prepares, drafts, and files IPR proceedings for Unified.

He earned his J.D. with honors from American University Washington College of Law; his B.S. in biomedical engineering from Tulane University; and his M.A. in print journalism from the University of Southern California.

David McCombs is primary counsel for many leading corporations in inter partes review (IPR) and is regularly identified as one of the most active attorneys appearing before the Patent Trial and Appeal Board (PTAB). His practice spans 35 years and includes appellate argument, patent litigation, and portfolio development.

McCombs is recognized for having a “strong Federal Circuit patent litigation practice and prominent PTAB expertise.” (Chambers Global 2019). He is described as “one of the best, not just of patent practitioners but practitioners generally” and lauded as “extremely organized, responsive, thoughtful, and calm.” (Chambers Global 2020).

Nationally ranked, McCombs is highlighted as an “ultra-organized, extremely responsive and sophisticated counselor who is a true pleasure to partner with” and a “zealous but very professional advocate" (IAM Patent 1000, 2020). He has also been described as “a leading practitioner when it comes to the thoughtful and strategic analysis of patents in the marketplace and critical opinion work” (IAM Patent 1000, 2019).

Prior to joining Haynes and Boone in 1989, he served as in-house patent counsel for a diversified technology company located in Research Triangle Park, North Carolina, with a long history of developing breakthrough chemical/ material science, diagnostic, robotics, and motion management technologies.

Separate from his law practice, Mr. McCombs serves as a Commissioner for the Smithsonian Institution’s National Portrait Gallery in Washington, D.C.

Dr. Leslie Fischer, Ph.D., J.D. is a Principal Patent Attorney at Sandoz Inc. in Princeton, NJ.  She focuses on global biosimilar development, including freedom to operate, patent clearance, regulatory exclusivity, contractual negotiations, and due diligences.  Dr. Fischer also teaches mechanical patent claim drafting as an adjunct professor of law at Seton Hall Law School, in Newark, NJ. 

Prior to joining the Novartis Group in 2007, Dr. Fischer was an associate attorney at Fitzpatrick, Cella, Harper and Scinto in New York, during which time she provided detailed opinion work for a broad range of clients, consulted on biotechnology litigation, and performed pharmaceutical and biotechnology patent prosecution.

Dr. Fischer holds a J.D. from Rutgers University, and a Ph.D. in Biochemistry from Thomas Jefferson University in Philadelphia. Her Ph.D. thesis focused on the interaction of Bone Morphogenetic Proteins and Wnts during mouse limb development, with her work appearing in Osteoarthritis and Cartilage, the Journal of Cellular Biochemistry, and the Journal of Biological Chemistry.

Dr. Fischer has appeared as a speaker and panelist in numerous public forums, and for the past seven years, she has also acted as co-chair of American Conference Institute’s “Advanced Summit on Life Sciences Patents" meeting, which is held yearly in New York, NY.

Eldora L. Ellison, Ph.D., is a director in Sterne Kessler’s Biotechnology & Chemical and Trial & Appellate Practice Groups. Eldora is a co-chair of the firm's Patent Office Litigation Practice. Over the course of her 26-year career, Eldora has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Her experience includes representing clients in over 70 inter partes review and post-grant review proceedings, more than 15 patent interferences, and in various patent reexaminations and district court litigations. For example, Eldora was lead counsel on behalf of patent owner ImmunoGen in Phigenix v. ImmunoGen, 845 F.3d 1168 (Fed. Cir. 2017), in which the Federal Circuit — for the first time since the Court’s inception — established the legal standard for demonstrating standing in an appeal from a final agency action. The Court subsequently dismissed Phigenix’s IPR appeal for lack of standing. More recently, Eldora was designated to lead patent strategist for the University of California on its ground-breaker CRISPR technology, and Eldora has led the University's renewed interference proceedings. Eldora’s practice also includes preparing and prosecuting patent applications; evaluating patent portfolios (e.g., for due diligence analyses, invalidity, non-infringement, or freedom-to-operate); counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. She represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations. Eldora’s intellectual property experience has been principally in technical areas such as biotechnology, pharmaceuticals, molecular biology, therapeutic methods, diagnostic assays, analytical instruments, immunology, virology, bacteriology and vaccines. But she is also called upon to represent clients in other technical areas, given her specialized legal expertise.

Eldora has been recognized as a leading practitioner in the life sciences, and she has served as an expert witness on patent matters. In 2019 and 2017, LMG Life Sciences named Eldora their "Post Grant Proceedings Attorney of the Year." Managing Intellectual Property nominated her for its "PTAB Litigator of the Year" award, and it has named her an "IP Star" in 2020 for the eighth year in a row, while also including her in their "Top 250 Women in IP." The Legal 500 recognized Eldora as a "Leading Lawyer" in 2020 and a "Recommended Lawyer" in 2018 and 2017 for U.S. reexamination and post-grant proceedings. In 2018, she also received the Haverford College Alumni Distinguished Achievement Award for outstanding contributions to her field. The National Law Journal recognized her as one of its "Top 50 Litigation Trailblazers." Law360 named her an "MVP in Life Sciences" in 2015. LMG Life Sciences nominated her for its "Patent Prosecutor of the Year" award as well as "PTAB Litigator of the Year" in 2016, and it has named her a "Life Sciences Star" since 2012. In 2016, Profiles in Diversity Journal listed her among "Women Worth Watching." In 2016, IAM Patent 1000 named her as one of the world's leading patent professionals and "highly recommended" for post-grant and procedures and litigation. Eldora has often been quoted in publications such as IPLaw360 and The Washington Post for her analyses of developments in patent law.

Eldora is a contributing author of Patent Office Litigation, Second Edition, published in 2017. Additionally, she is an editor of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act, published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and it delivers practical analysis and advice. She lectures and publishes frequently on topics such as the America Invents Act, patent interferences, patent reexaminations and concurrent patent litigation, and patents and licensing. Eldora has also served on the faculty for the District of Columbia Bar's Continuing Legal Education Program.

Eldora is a member of the firm's Executive Committee, and she previously chaired the firm’s Professional Development Committee and the Diversity Committee. Eldora also serves as a member of the Diversity and Inclusion Committee for the Intellectual Property Owners Association, and she is a Co-chair of the Association's Black IP Professionals Resource Group. She also previously served as a Member of the Board of Directors for Turning Point Academy Public Charter School in Maryland.

Eldora earned her J.D. from Georgetown University Law Center, her Ph.D. in biochemistry, molecular and cell biology from Cornell University, and her B.S. in biology from Haverford College.

Jason Stach leads Finnegan’s PTAB trials practice. He practices patent law with an emphasis on post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) and litigation in district courts and at the U.S. International Trade Commission (ITC). He has been lead or back-up counsel in more than 80 Patent Trial and Appeal Board (PTAB) trials, including inter partes reviews (IPRs), covered business method reviews (CBMs), and post-grant reviews (PGRs), and has consulted on dozens of other PTAB trials. Mr. Stach also represents clients before the U.S. Court of Appeals for the Federal Circuit in appeals stemming from PTAB decisions and court actions. In addition to his trial experience, he has taken and defended dozens of depositions, and has argued before the PTAB, at district court claim construction and summary judgment hearings, and at ITC hearings.

In leading the PTAB trials section, Mr. Stach coordinates the firm’s PTAB training programs, workflow, and other aspects of the practice. He also serves as the recruiting partner for Finnegan’s Atlanta office, overseeing the office’s summer associate program and its other recruiting efforts. His pro bono experience includes representing veterans of military service before the U.S. Court of Appeals for Veterans Claims.

Mr. Stach handles cases involving many different technologies, including electrical, computer, software, chemical, pharmaceutical, medical device, and mechanical technologies. Examples include extracting baseband signals from carrier signals in an energy-efficient manner; improving commercial aircraft engines; improving high-speed chip-to-chip signaling techniques using equalization; securing communications over the Internet and other networks; enhancing the control of dynamic random access memory (DRAM) devices; and creating groundbreaking sports sensor technology.

Meredith “Mimi” Addy is a deeply experienced intellectual property litigator, business and legal strategist, and consultant. Addy has handled more than 30 cases before trial courts and argued more than 40 appeals to the Federal Circuit. She has held leadership positions at several AmLaw100 firms, and is a recipient of many awards and honors. Addy is partner at litigation boutique Tabet DiVito & Rothstein in Chicago, and she also consults to executive teams on the most efficient strategies for realizing their IP goals. Addy has testified before Congress to address issues relating to the Federal Circuit and the state of patent law.  She has been a member of the Federal Circuit’s Advisory Council and a member of the board of directors of the Federal Circuit Bar Association.  Addy is also a founder of the Richard Linn American Inn of Court, which is directed to intellectual property, and served as its first president. Recently, Law360 named her one of the Most Influential Women in IP Law.

Naveen Modi is the Global Vice Chair of the Intellectual Property group at Paul Hastings, overseeing the firm’s Global Intellectual Property group consisting of more than 100 attorneys. He also serves as the head of the firm’s Patent Office practice.

Mr. Modi’s practice includes all aspects of patent-related work, including litigation, post-grant proceedings, and appeals. Having been involved in well over 300 post-grant proceedings, including inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, and reexamination proceedings, Mr. Modi is one of the foremost experts in challenging and defending patents before the USPTO including its Patent Trial and Appeal Board (PTAB). In 2015, Mr. Modi was involved in the most number of PTAB proceedings than any other practitioner in the United States.

Chambers USA recognized Mr. Modi as an expert in post-grant proceedings noting that he “earns effusive praise from clients, who describe him as ‘a brilliant litigator.’ Managing Intellectual Property recognized him as Outstanding IP Litigator of the Year for PTAB and named him as an IP Star. In addition, Mr. Modi was recognized as the Post Grant Proceedings Attorney of the Year at the LMG Life Sciences Awards.

Mr. Modi’s practice encompasses a range of technical areas, including electronics, semiconductor devices, networking, software, business methods, medical devices, and pharmaceuticals.

Mr. Modi teaches courses on appellate practice, including Federal Circuit Practice, at George Mason University School of Law, and he has lectured nationally and internationally on various patent topics.

He currently serves as the Vice President for the PTAB Bar Association.

Education and Professional Involvement

  • George Mason University School of Law, J.D., magna cum laude, 2001
  • George Mason University, B.S., Electrical Engineering, with high distinction, 1998
  • Served as a law clerk to the Honorable Alvin Anthony Schall at the U.S. Court of Appeals for the Federal Circuit from 2002-2003.

Rekha Hanu is Executive Director, Chief IP Counsel at Akorn, Inc., having responsibility for Hatch-Waxman litigation, patent and trademark prosecution, licensing, and due diligence matters. Akorn is a niche pharmaceutical company engaged in the development, manufacture and marketing of multisource and branded pharmaceuticals. Akorn is headquartered in Lake Forest, Illinois and has manufacturing facilities located in Decatur, Illinois; Somerset, New Jersey; Amityville, New York; and Paonta Sahib, India.

Hanu joined Akorn after practicing law in the Chicago law firms, Duane Morris and Bell Boyd & Lloyd, later K&L Gates. She is admitted to practice in Illinois and before the US Patent and Trademark Office. Her experience prior to patent law includes that of a postdoctoral scientist, stints as a management consultant, in sales, and marketing in the pharmaceutical industry.

Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors). 

He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (2007), i4i (2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014).

Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012), and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2019 as the 4th largest US IP specialty firm and 322nd largest US law firm.

Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is one of the most active PTAB trial attorneys in the U.S., having handled more than 300 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators and has handled some of the most noteworthy PTAB trials to date, including the only precedential decision on live testimony. Scott has further been recognized by Chambers, The Legal 500, IAM Strategy, and was recently named by Managing IP as its “Outstanding PTAB Litigator” for 2020.

As a Professorial Lecturer in Law at The George Washington University Law School and a member of the teaching faculty of the Practising Law Institute, Scott lectures and writes extensively on PTAB proceedings. He was also a founding Board member of the PTAB Bar Association.  Likewise, he is recognized as a thought leader in the PTAB industry as he is frequently quoted in the press on PTAB issues and maintains an award-winning blog,, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings. As Chambers USA reports from a client, “Scott is probably the most well-known PTAB specialist. He is very efficient and knows the PTAB and its procedures, inside and out.” 

Prior to becoming an attorney, Scott worked as an electrical engineer for a government agency, troubleshooting embedded systems and circuit designs. He also has experience across a wide range of related technologies, including computer software, wireless telecommunication protocols, network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.

The Honorable Faith S. Hochberg served over 15 years as a federal judge in the District of New Jersey.  In 2015, she founded Hochberg ADR [], based in New York, to serve as a Mediator, Arbitrator, Special Master and Monitor in U.S. and international litigation.  Judge Hochberg has served as a court-appointed Monitor in international cybersecurity cases, and is currently serving as a court-appointed Special Master in many cases in both federal and state courts, including complex multidistrict litigation (MDL cases).

Judge Hochberg is a distinguished neutral admitted to the rosters of the AAA, ICDR, ICC, CPR and FedArb; she is a Fellow of the College of Commercial Arbitrators and a Fellow of the Chartered Institute of Arbitrators [FCIArb]. Her expertise broadly spans many areas of law: patent and other intellectual property litigation and licensing; class actions; corporate contract; insurance; banking & financial institutions; securities; antitrust; trade secrets; pharmaceutical development and licensing; merger and acquisition transactions; partnership disputes, and many more.

Judge Hochberg previously served as The United States Attorney for the District of New Jersey, and prior to that, she was Deputy Assistant Secretary of the U.S. Treasury Department.  She has twice been confirmed by the U.S. Senate.  Judge Hochberg has also spent many years in the private practice of law; as Legal Assistant to the Chairman of the SEC; and as a top official in a bank regulatory agency.

In her community, Judge Hochberg serves on the Advisory Board of the Innovation Center for Law & Technology, at New York Law School. She has been inducted into the Nutley, NJ Hall of Fame.

Judge Hochberg graduated from Harvard Law School, magna cum laude, where she was an Editor of the Harvard Law Review, and earned a B.A., summa cum laude, from Tufts University.  She was elected to Phi Beta Kappa.  She also attended the London School of Economics.

In her few moments of spare time, Judge Hochberg is an artist whose paintings and wearable art have been shown in galleries, boutiques and museum stores.

Hans Sauer is deputy general counsel and Vice President for Intellectual Property for the Biotechnology Innovation Organization (BIO), a major trade association representing more than 1,100 biotechnology companies from the medical, agricultural, environmental, and industrial sectors. At BIO, he advises the organization’s board of directors, amicus committee, and various staff committees on patent and other intellectual-property-related matters. Before taking his current position at BIO in 2006, he was chief patent counsel for MGI Pharma Inc. in Bloomington, MN, and senior patent counsel for Guilford Pharmaceuticals Inc. in Baltimore, MD. Mr. Sauer holds a M.S. degree in biology from the University of Ulm in his native Germany, a Ph.D. in neuroscience from the University of Lund, Sweden, and a J.D. degree from Georgetown University Law Center, where he serves as adjunct professor.

Kevin Post works extensively with high-technology and life science companies handling their complex patent disputes. He has litigated patent cases in nearly every significant patent jurisdiction, including the International Trade Commission, the District of Delaware, the Northern District of California, the Eastern District of Texas, the Eastern District of Virginia, the Patent Trial and Appeal Board, and the Court of Appeals for the Federal Circuit on behalf of companies in a variety of technical fields, including telecommunications, electronics, computer systems and software, network architecture and security, e-payments, e-commerce, imaging systems, GPS technology, process control systems, mechanical devices, pharmaceuticals, and biotechnology. Kevin has tried multiple cases involving standard-essential patents and RAND licensing issues, including breach of contract cases. From providing licensing support, patent portfolio analysis and due diligence to handling all aspects of trial preparation and trial, Kevin’s experience has touched on all phases of IP litigation.

Lisa Samuels is Senior Corporate Counsel at Pfizer Inc. where she co-leads Pfizer’s U.S. Post-Grant Proceedings and Patent Term Extension/Patent Linkage Teams. Her work focuses on patent prosecution, post-grant proceedings including reissue and inter partes review, patent term extensions, and patent linkage.

Timothy E. Bianchi is a principal of Schwegman Lundberg & Woessner, P.A. He is active in patent procurement, patent challenges, opinions, due diligence, acquisitions, and patent litigation strategy.  Mr. Bianchi represents patent owners and petitioners in inter partes reviews (IPRs) and reexaminations, many of which are involved in concurrent litigation. His background is in medical devices, signal processing, communication electronics, computer hardware, and software.  He has electrical engineering and research experience from employment with IBM, Honeywell, and the University of Minnesota.  Intellectual Asset Magazine has included him in its “IAM Strategy 300” and “IAM 1000” listings of the world's leading patent attorneys, and ranked him as “Highly Recommended.”  Managing Intellectual Property named him “PTAB Litigator of the Year” and an “IP Star.” His blog ( covers the dynamics and strategies of patent procurement, patent challenges, and patent litigation.