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Patent Law Institute 2011 (5th Annual)


Speaker(s): Alexander I. Poltorak, Asim Bhansali, Benjamin S. Fernandez, Brian Hanlon, Dale S. Lazar, David M. Rosenblatt, David M. Shofi, Dorothy R. Auth, Ph.D., Douglas R. Nemec, Eugene R. Quinn, Jr., Gary M. Hoffman, Gerald M. Murphy, Jr., Hon. Faith S. Hochberg, Hon. Mitchell S. Goldberg, Hon. Shira A. Scheindlin (U.S.D.J. Ret.), Jeffrey M. Sears, Ph.D., John M. White, Kathlyn Card Beckles, Kenneth W. Brothers, Leonardo Renna, Marian Underweiser, Marti A. Johnson, Michelle Waites, Nanette S. Thomas, Orin Herskowitz, Pejman F. Sharifi, Peter Brown, Philippe J.C. Signore, Ph.D., Prof. Michael V. Risch, Richard L. Rainey, Robert J. Spar, Robert Neuner, Robert S. Katz, S. Edward Sarskas, Scott M. Alter, Sharon E. Hayner, Sharon R Barner
Recorded on: Feb. 17, 2011
PLI Program #: 29525

PHILIPPE SIGNORE, Ph.D.,

Mr. Signore’s practice includes counseling clients involved in patent disputes and litigation,drafting legal opinions, conducting due diligence patent portfolios. In counseling clients, he seeks to match their business needs to the legal tools available.

With a law degree from the Georgetown University Law Center, Mr. Signore is admitted to the Virginia State Bar, to the District of Columbia Bar, and is registered to practice before the U.S.Patent and Trademark Office. He is admitted to practice before the Court of Appeals for the Federal Circuit, and various federal courts in Virginia and the District of Columbia.

Mr. Signore’s technical experience covers various industries including aerospace, semiconductors, automotive, energy, consumer electronics, computer hardware, software, and packaging. He studied solid state physics, including superconductivity, low temperature physics, and magnetic materials while achieving a Ph.D. in Physics. He is bilingual in English and French.


Mr. Signore regularly publishes and lectures on patent law issues in the U.S., Europe and Japan. He is an Adjunct Professor at the George Mason School of Law, where he teaches patent law. He also serves as a faculty member of the Patent Law Institute. He teaches U.S. patent law at the Center for International Intellectual Property Studies (CEIPI) in Strasbourg, France. He gives an annual year-in-review lecture on U.S. patent law for the French Association of In-House Patent Specialists (ASPI). He frequently visits corporations in Europe and Japan to counsel them on the latest developments in U.S. patent law. In 2002, Mr. Signore was the recipient of the 30th Annual Rossman Award as the author of an article in the

is a member of the firm’s Management Committee. He chairs the firm's Mechanical Patent Prosecution group; co-chairs the Opinions and Counseling practice group; and is a partner in the Electrical Patent Prosecution practice group. He also chairs the firm's Industrial Designs practice group.Journal of the Patent and Trademark Office Society , which “made the greatest contribution to the fields of Patents, Trademarks, and Copyrights.”


David Rosenblatt has been an IP attorney for over 20 years, handling all facets of IP including litigation, licensing, preparation and prosecution, IP issues associated with mergers, acquisitions and divestitures, and related antitrust issues. Currently, David is the Assistant General Counsel - Intellectual Property for Thomson Reuters where he has numerous responsibilities including managing Thomson Reuters' worldwide patent preparation and prosecution. 


Gary Hoffman chairs the Technology Group and the Intellectual Property Practice of Dickstein Shapiro LLP. He has been actively involved in the practice of intellectual property law for over thirty years and has participated in over 100 patent and/or trademark cases before the federal courts and the ITC and has drafted over 150 licensing agreements. He has lectured on numerous IP litigation topics for PLI, ABA, AIPLA, and other organizations. He has co-chaired the two AIPLA Mid-Winter Institutes on Litigation Advocacy as well as other programs. He chaired one of the committees of the Brookings Institution project on “Unseen Wealth” that study the valuation of intellectual capital. He has authored many articles and is the coeditor of the recently published ABA/IP-Section-sponsored book Patent Litigation Strategies Handbook. He is a graduate of the University of Pennsylvania (B.S.E.E.) and George Washington University School of Law (J.D.).


Kenneth Brothers is a partner in the Intellectual Property Practice of Dickstein Shapiro. Mr. Brothers focuses his practice on intellectual property trial and appellate litigation. He also counsels clients with respect to claims of and defenses to patent infringement and patent licensing, as well as trademark, trade dress, copyright, e-commerce, trade secret, unfair competition, and related antitrust matters. He has acted as trial or appellate counsel in federal and state courts in more than a dozen states, including Arizona, California, Colorado, Connecticut, the District of Columbia, Delaware, Florida, Georgia, Illinois, Indiana, Maryland, Michigan, New York, North Carolina, Ohio, Pennsylvania, Tennessee, Texas, and Virginia.

AREAS OF CONCENTRATION
Mr. Brothers is a trial attorney who has represented clients in more than 100 cases. He has first chair experience in numerous jury and bench trials, Markman hearings, and other hearings in federal courts, as well as in state courts throughout the United States at both the trial and appellate levels. He has litigated patent infringement cases involving electrical, mechanical, and pharmaceutical patents concerning inventions in a wide variety of fields, including semiconductors, consumer electronics, security cameras, medical devices, optics, radio frequency identification products, and ink formulations. In addition, he has litigated cases in the areas of trademark, copyright, and trade secrets in a wide range of industries, including software, media, apparel, hair care, mailing lists, and pet food. He also has represented clients in arbitrations and mediations. He has written numerous amicus briefs on behalf of various clients in cases pending before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit.

Representative cases include the following:

  • Saffran v. Johnson & Johnson. Mr. Brothers is representing Dr. Saffran in his enforcement of his patent regarding a drug-eluting stent against J&J and its subsidiary, Cordis Corporation. Mr. Brothers was instrumental in Dr. Saffran’s enforcement of the same patent against Boston Scientific Corporation, leading to a verdict of over $500 million, and a settlement pending appeal.
  • Demeter v. Ricoh. Mr. Brothers is defending Ricoh and its U.S. subsidiaries against a patent enforcement action by a non-practicing entity in the Eastern District of Texas.
  • Merit Industries v. JVL Corp. Mr. Brothers successfully enforced three patents against his client’s principal competitor in the countertop video game industry, winning a jury verdict, including a finding of willful infringement.
  • Jennings v. Auto Meter, Inc. After a frustrated patent applicant sued his client alleging fraud on the Patent Office, Mr. Brothers persuaded the District Court to dismiss the case. The dismissal recently was affirmed by the Court of Appeals. A related infringement action was settled for less than 5% of the cost of defense.
  • H&R Block v. LendingTree. Mr. Brothers replaced prior counsel months before the end of discovery, successfully repositioned the client’s case, and negotiated to favorable settlement.
  • CalTech v. Samsung. Mr. Brothers represented Samsung in defending against infringement claims relating to mobile telephone technology. The case was settled.
  • Lectrolarm v. Pelco. Mr. Brothers successfully represented Lectrolarm in this patent and trademark infringement action enforcing Lectrolarm’s rights in the security camera industry. The action settled favorably for the client after a the court spent five days on claim construction arguments, appointed its own expert, and issued Markman decision that endorsed Mr. Brothers’ arguments.
  • Lectrolarm v. Vicon. Following the successful resolution of the Lectrolarm v. Pelco matter, the client authorized Mr. Brothers to enforce its patent rights against the rest of the security camera industry. Lectrolarm has subsequently obtained many additional licensees and substantial royalty revenue.
  •  Ricoh Company, Ltd v. Aeroflex et al. / Synopsys v. Ricoh. Mr. Brothers represented Ricoh in a patent infringement action enforcing a patent relating to the automated electronic design of application-specific integrated circuits, and defended against a parallel declaratory judgment action brought by the software vendor and indemnitor.
  • KnowledgePlex v. Placebase. Mr. Brothers successfully defended Placebase against claims of copyright infringement and misappropriation of trade secrets by persuading the D.C. district court to dismiss the complaint for lack of jurisdiction, then obtaining an injunction in the Northern District of  California against a wrongful takedown notice. The case eventually settled on highly favorable terms to Placebase.
  • Arthrex v. dj Orthopedics. Mr. Brothers represented Arthrex in this patent litigation involving a medical device. The case was settled and the defendant agreed to discontinue the product at issue and pay back damages.
  • Soundview v. EIA and CEMA et al. Mr. Brothers defended the Electronic Industry Alliance/Consumer Electronics Manufacturing Association in this patent infringement and antitrust action brought by Soundview. The defendants’ motion for summary judgment was granted and affirmed on appeal.
  • Belrose v. AEC. Mr. Brothers is defended a manufacturer against breach of contract claims by a former agent. The litigation was dismissed in favor of binding arbitration, which was successfully concluded.
  • Procter & Gamble v. Stoneham. Mr. Brothers successfully represented Procter & Gamble in this theft of trade secrets and enforcement of employee agreement action in Ohio state trial and appellate court.
  • Hugo Boss v. Brookhurst. Mr. Brothers successfully represented Hugo Boss in a complex trademark infringement action in the Southern District of New York, as well as several follow-up actions before other federal courts and the U.S. Customs Service.
Mr. Brothers also has extensive experience negotiating and drafting license agreements, nondisclosure agreements, and other business agreements. He has prepared Supreme Court and Federal Circuit amicus briefs on behalf of the Intellectual Property Owner’s Association. In pro bono matters, Mr. Brothers provides ongoing counsel to the Save Darfur coalition, ACLU, and other legal aid organizations. He was appointed lead counsel by the U.S. District Court for the District of Columbia on behalf of a group of Hispanic inmates, and at trial showed that the inmates had suffered pervasive discrimination by the D.C. Department of Corrections. He also prepared an amicus brief on behalf of a group of historians and scholars with respect to the Americans with Disabilities Act, which was subsequently republished in a scholarly journal. Mr. Brothers also regularly supervises and mentors other firm attorneys in pro bono cases involving landlord-tenant disputes, asylum applications, and civil rights issues.

PROFESSIONAL BACKGROUND
Prior to joining Dickstein Shapiro in September 2001, Mr. Brothers was a partner in the Washington, DC office of Howrey LLP. He began his legal career in the Denver, Colorado office of Kirkland & Ellis before that office was closed in the early 1990s. In 1986, he served as an intern for the Senate Judiciary Committee, and the following year he held a full-time clerkship at the United States Department of Justice with the Office of the Solicitor General. From 1978 to 1995, Mr. Brothers held various positions with Beehive Telephone Company in Salt Lake City, Utah, including Chairman of the Board, Vice President, and electrical engineer, and lineman.

PROFESSIONAL ACTIVITIES
Mr. Brothers is admitted to practice in the District of Columbia; the U.S. District Court for the District of Colorado; the U.S. District Court for the District of Columbia; the Court of Appeals for the Third, Seventh, Tenth, DC, and Federal Circuits; and the U.S. Supreme Court. Mr. Brothers also is a member of the American Bar Association, the American Intellectual Property Law Association, and the Intellectual Property Owner’s Association, where he was chair of a subcommittee on Markman hearing procedures. He is an adjunct professor at The George Washington University Law School, where he teaches IP Legal Writing, and has been a guest lecturer at the University of Pennsylvania Law School.

COMMUNITY ACTIVITIES
Mr. Brothers has served as a Scoutmaster, Assistant Scoutmaster, and various other positions in the Boy Scouts of America from 1995 to the present. He also has coordinated the construction of two houses for Habitat for Humanity. He has served as the president of a Civic Association and director of a Homeowner’s Association.

EDUCATION
While working as an electrical engineer for a telephone company, Mr. Brothers received his B.S. with dual majors in communications and sociology from the University of Utah (1985). He earned his J.D., with high honors, from The George Washington University, National Law Center (1988). While attending law school, Mr. Brothers held membership in The George Washington University Law Review, the Order of the Coif, the Moot Court Board, and was a recipient of the Trustees Scholarship. He served as editor-in-chief of the law school newspaper The Advocate, was the chapter head of The Federalist Society, and was an editor of the Society’s publication, The Harvard Journal of Law and Public Policy.


Douglas Nemec is a partner at Skadden, resident in the firm's New York Office.  He has litigated numerous intellectual property cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in proceedings before the Patent Trial and Appeal Board and other matters.


Former United States District Court Judge Shira A. Scheindlin serves as an arbitrator, mediator and special master. She also conducts neutral evaluations, mock trials and arguments as well as internal investigations and is a member of the firm’s Litigation Practice.  Since leaving the bench in May of 2016 she has conducted many mediations and arbitrations and has handled a number of mock trials and arguments.  She is also a member of Stroock’s Internal Investigations Unit, formed to help companies and organizations respond to suspected sexual misconduct.

Judge Scheindlin, who was appointed to the bench in 1994 by President Bill Clinton, has presided over numerous criminal and civil cases during her 22-year tenure with the Southern District of New York. Among many important cases, her opinions in electronic case management are recognized as case law landmarks, and she is the co-author of the first casebook on electronic discovery. Judge Scheindlin previously served as an Assistant United States Attorney for the Eastern District of New York, a Magistrate Judge in the Eastern District of New York and General Counsel for the New York City Department of Investigation. Earlier in her career she spent many years in private practice, including a stint as a litigation associate at Stroock.

Judge Scheindlin is a frequently published author and lecturer.  She is currently an adjunct professor at NYU Law School and has also held that position at Cardozo and Brooklyn Law Schools.  She is a member of the College of Commercial Arbitrators (CCA) and the CPR Panel, where she serves as Co-Chair of the Diversity Task Force.  She is also a member of the American Arbitration Association (AAA) and the International Centre for Dispute Resolution (ICDR). She is the Chair of the Federal Courts Subcommittee of the ABA’s Standing Committee on the American Judicial System, the former Chair of the Commercial and Federal Litigation Section of the New York State Bar Association and the Co-Chair of the Section’s Task Force on Women’s Initiatives.  She is or has been a member of various committees of the American Law Institute, the New York City Bar Association, the New York County Lawyers’ Association, the Federal Bar Council and the New York Inn of Court.  She also served for seven years on the Advisory Committee on Civil Rules of the Judicial Conference of the United States.  She now serves on the Board of Directors of the Lawyers Committee for Civil Rights Under Law, the American Constitution Society, the Bronx Defenders and the Justice Resource Center.

HONORS & AWARDS

  • David G. Trager Award, Eastern District U.S. Attorney's Office, 2016
  • Stanley Fuld Award for Contributions to Commercial Litigation, New York State Bar Association, 2014
  • Jurist of the Year, New York Criminal Bar Association, 2014
  • Judicial Recognition Award, National Association of Criminal Defense Lawyers, 2008
  • William Nelson Cromwell Award for Outstanding Public Service, New York County Lawyers' Association, 2007
  • Edward Weinfeld Award for Distinguished Contributions to the Administration of Justice, New York County Lawyers' Association, 2005
  • William J. Brennan Award, New York State Bar Association, 2003

MEMBERSHIPS

  • Chair, Federal Courts Subcommittee of the Standing Committee on the American Judicial System, American Bar Association
  • Member, Advisory Council, Cornell Law School
  • Member, New York State Bar Association
  • Member, Federal Bar Council
  • Member, New York County Lawyers' Association
  • Member, Council on Judicial Administration, Association of the Bar of the City of New York
  • Board of Directors, Justice Resource Center (Mentor)
  • President's Council, Good Shepherd Services
  • Judicial Advisory Board, The Sedona Conference
  • Board of Directors (Executive Committee), Lawyers Committee for Civil Rights Under Law
  • Board of Directors, American Constitution Society
  • Board of Directors, Bronx Defenders

SPEECHES & EVENTS

Judge Scheindlin is a frequent lecturer at law schools, bar associations and professional associations.  Below is a select list of some presentations.  She speaks on many topics including:  complex civil litigation, class actions, discovery of electronic data, ADR, women in the law, the Sentencing Guidelines, impact litigation, race and policing and the War on Terrorism.
 
  • American Bar Association
  • Columbia University Law School
  • Cornell Law School
  • Federal Judicial Center
  • Fordham Law School
  • Georgetown Law School
  • New York State Bar Association
  • Practising Law Institute
  • Princeton University
  • Stanford Law School
  • UCLA School of Law
  • University of Chicago Law School
  • University of Pennsylvania School of Law
  • Yale Law School

PUBLICATIONS

  • Co-author, "Electronic Discovery and Digital Evidence in a Nutshell," West Academic Publishing, 2009; Second Edition, 2016
  • Co-author, "Electronic Discovery and Digital Evidence, Cases and Materials," American Casebook Series, West Academic Publishing, 2008; Second Edition, 2012; Third Edition, 2016
  • "Random Thoughts of a Federal District Judge, Fourth Annual Institute for Investor Protection Conference: The New Landscape of Securities Fraud Class Actions," Loyola University Chicago Law Journal, Spring 2015, Vol. 46, No. 3
  • "Big Data and Privacy:  Finding the Balance," New York Law Journal, February 10, 2014
  • Co-author, "Criminal Law Catches Up:  New ESI Guidelines Issued," New York Law Journal, February 29, 2012
  • "The Future of Litigation," New York Law Journal, February 5, 2010
  • Co-author, "Sanctions in Electronic Discovery Cases: Views from the Judges," 78 Fordham L. Rev. (2009)

ADMITTED TO PRACTICE

New York

U.S. Supreme Court


EDUCATION

J.D., cum laude, Cornell Law School, 1975

M.A., Columbia University, 1969

B.A., University of Michigan, 1967


Sharon E. Hayner is an Assistant Patent Counsel for Johnson & Johnson.  She has been supporting Johnson & Johnson’s Consumer Sector companies since 1999, including the NEUTROGENA, AVEENO, CLEAN & CLEAR and OrthoDermatologics skin care businesses.  She handles a variety of licensing, opinion work, and patent procurement matters.  She a member of the New York and District of Columbia bars.


Ed Sarskas is a Co-Chair of the firm's Class Action/ MDL Team and a partner in the firm's Litigation and Intellectual Property Litigation Practice Groups. Mr. Sarskas has significant experience handling complex commercial litigation concerning intellectual property rights, including patents, trademarks and copyrights, as well as unfair competition, advertising, trade secrets, and related contract disputes. Mr. Sarskas also has experience handling securities and corporate governance litigation in individual and class actions, including in In re Enron Securities Litigation, and as a member of the lead counsel teams in In re Imclone Securities Litigation, In re Mattel Securities Litigation, In re Emulex Corp. Securities Litigation and In re Priceline Securities Litigation. Mr. Sarskas also has experience counseling and representing healthcare providers on a variety of matters, including in class action lawsuits arising from the prices charged to uninsured patients. He has litigated cases in state and federal courts in Wisconsin, Illinois, New York, California, Virginia, Connecticut and other jurisdictions around the country. In 1996, as a law student, Mr. Sarskas played a significant role in drafting the complaint and certain dispositive motions in an antitrust class action lawsuit brought on behalf of Wisconsin healthcare consumers.

Mr. Sarskas actively participates in firm leadership and management by serving on several committees, including the firm's recruiting and pro bono committees.

Professional Activities

  • Member, Milwaukee Bar Association
  • Member, State Bar of Wisconsin
  • Member, American Bar Association

Honors and Recognitions  

  • He has been recognized as one of Wisconsin's intellectual property litigation Super Lawyers - Rising Stars by Milwaukee Magazine. 


Community Involvement 

  • Board Member, Hunger Task Force


Education 

  • University of Wisconsin Law School (J.D., cum laude, 1998)
  • University of Wisconsin-Milwaukee (B.A., with honors, 1990)


Bar Admissions

  • Connecticut, 2002
  • New York, 2003
  • Wisconsin, 1998


Kathlyn Card Beckles is the Managing Director and Assistant General Counsel for Intellectual Property and Technology law at JPMorgan Chase. She manages the Patent and Trademark Law group. She is a registered patent attorney responsible for patents, trademarks, copyright, trade secrets as they relate to JPMorgan, including the areas of litigations, mergers and legislation. Her prior legal experience includes the law firm of Kenyon & Kenyon, the U.S. Patent and Trademark Office, and the Chambers of the Hon. Edward Damich of the Court of Federal Claims. Before her legal career, she held positions in analytical chemistry and process engineering. She has a law degree from The George Washington University and a Chemical Engineering Degree from the University of Delaware.  

 


David Shofi is an attorney with over 25 years of experience in many aspects of technology, innovation and intellectual property.  He is presently Chief Legal Officer for Univercells, a biotech company in Belgium. David also served as Vice President, IP Strategy Solutions and Chief IP Counsel for CPA Global where he helped clients assess and identify opportunities for improvement and efficiency implementation in their IP lifecycle processes.  Before joining CPA Global, David held the role of Chief Intellectual Property Counsel for ATMI, an international semiconductor and lifesciences corporation.  He began his legal career as an associate at the firm of Baker Botts.  David has broad experience in IP and general corporate law including IP/technology licensing and transactions, due diligence, IP Strategy, portfolio development and monetization. David earned his law degree from Pace University School of Law and a Bachelor of Science in Electrical Engineering from Columbia University. 


Dr. Dorothy Auth has more than 20 years of experience in complex patent litigation, as well as licensing, patent procurement, and intellectual property counseling in the United States and abroad. Her experience spans diverse industries, including biotechnology, pharmaceutical, and medical devices, as well as consumer products, computers, and other mechanical devices.

She addresses intellectual property diligence issues surrounding mergers, acquisitions, and bankruptcies. Representative clients in transactional IP matters includes the U.S. Treasury; Salix Pharmaceuticals, Ltd.; Pfizer; Elan Pharmaceutical; Healthcare Royalty Partners; Fountanbleu Hotel; Quart Rx Pharma; iShares; Towers Watson; Hess and Triarco. In the transactional area, Dorothy advises clients on the validity of target patents and performs clearance analysis on the patents of competitors to render freedom-to-operate opinions.

Dorothy also litigates in U.S. Federal Courts and in international arbitrations conducted under the WIPO rules. She conducts all aspects of litigation, including motion practice, expert preparation and all aspects of discovery practice. Representative litigation clients include Medinol, DuPont, Osteonics and Kanzaki.

Dorothy also coordinates global patent procurement and enforcement strategies for her clients to maximize their patent-protected field. In this area, Dorothy’s practice includes U.S. and international client counseling and opinions regarding IP matters. Her international experience includes coordinating patent infringement trials and hearings between the U.S. and different European jurisdictions including trials seeking preliminary relief and cross-border injunctions, as well as nullity, cancellation and oppositions proceedings on patent rights.

Among the clients Dorothy has counseled are Credit Suisse, Rhone-Poulenc Rohrer, Inc., BioRest Ltd., Oscillon Ltd., Digene Corporation, Hoffmann-La Roche, and the National Institutes of Health.

At the firm, Dorothy is a member of the Technology Committee, the Healthcare Industry Team and the Advisory Counsel for the firm’s Center for Career Advancement. Dorothy was the Partner Chair of the Women’s Leadership Initiative for over five years.


Gene Quinn is a Patent Attorney and the founder of IPWatchdog.com. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since then it has become one of the leading IP publications on the Internet. IPWatchdog.com has been recognized multiple times by the American Bar Association as a top 100 legal blog, has 3 times been voted the top IP blog, and in 2014 was retired from voting and inducted into the ABA Blawg Hall of Fame. 

Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world. As an electrical engineer with a computer engineering focus, he frequently advises on patent matters relating to software, computer implemented methods, business methods, and Internet innovations.

Between 2003 and 2007 Gene wrote a monthly column for Patent World and served on the Patent World editorial board. He has also previously taught a variety of intellectual property courses at the law school level, including patent law, patent claim drafting, patent prosecution, copyright law, trademark law and introduction to intellectual property. Gene taught at Syracuse University College of Law, Temple University School of Law, The University of Toledo College of Law, Franklin Pierce Law Center, Whittier Law School, and John Marshall Law School.

Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.


Gerald Murphy has practiced in the intellectual property field for over 40 years, mostly in relation to U.S. and foreign patents for biotechnology, biopharmaceuticals, therapeutic antibodies, organic chemistry, chemical engineering, biochemistry and pharmaceutical inventions.  He works mostly with medium to large internal corporations.  In addition to preparation and prosecution of patent applications and related appeals, Mr. Murphy has handled patent reexaminations and has been lead counsel in a numerous inter partes matters at the USPTO such as interferences and Inter Partes Reviews.  He has also been lead counsel in several appeals to the Court of Appeals for the Federal Circuit.

In addition to handling matters at the USPTO, Mr. Murphy counsels clients in various IP matters such as patent validity and infringement.  He has lectured extensively before U.S. and international audiences on U.S. patent law and case law developments. He served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in patent infringement litigations and in an arbitration involving a patent license agreement.

Mr. Murphy chairs BSKB's annual Post Grant Bootcamp, an intensive 4 day program on procedures that are available to correct, defend and challenge patents at the USPTO and before the Patent Trial and Appeal Board.

Mr. Murphy graduated from University of Maryland in 1976.  After taking off several years after graduation, he then attended George Mason University School of Law for his J.D. and then attended George Washington University National Law Center where he attained his LL.M.


Michelle Waites is Senior Patent Counsel for Xerox Corporation, actively involved in enforcing and obtaining the company's patent and other intellectual property rights. Her primary responsibility is patent litigation, and typically includes reviewing pleadings and motions, leading internal fact investigations, managing outside counsel, preparing for and attending court hearings, participating in settlement and case strategy discussions and drafting and negotiating settlement agreements. Her practice also includes reviewing technology transfer agreements, supporting product design and development programs and working with business and technical staff to develop and implement effective legal strategies. She is a registered patent attorney and has extensive experience preparing and prosecuting patent applications.

Ms. Waites has maintained her own law practice, has been associated with law firms in New York City and spent several years as an engineer in the aerospace/military defense industry.

She received a Juris Doctor degree from the University of California at Berkeley and a Bachelor of Science in Mechanical Engineering from Syracuse University. She is admitted to the Bar in California and New York and is registered to practice before the US Patent and Trademark Office. Ms. Waites is a member of the American Bar Association, Lambda Legal and the National LGBT Bar Association.


Nanette Thomas is of counsel for the law firm of Dorsey & Semrau, LLC. Her experience includes municipal law, environmental litigation and representation at NJ Tax Court. In addition, she provides legal advice and counsel to small companies, musicians and social media advertising negotiations. Mrs. Thomas is also Assistant General Counsel, Commercial for Catalent Pharma Solutions in Somerset, NJ. Her experience in this capacity include strategic negotiations for commercial transactions, contracts, services, licensing, alliances, technology transfer, divestments and acquisitions, intellectual property and litigation. She has extensive corporate experience in providing collaborative advice and counsel on marketing, sales, procurement, regulatory, manufacturing and research as relating to transactions, litigation, compliance and intellectual property matters.

Mrs. Thomas' accomplishments include: representation of Third-Party Defendants in NJDEP v OCC; representation of municipalities in NJ Tax Court; advice and counsel to social media advertising companies and musicians; successful enforcement and assertion of intellectual property portfolios; identification and audit of trade secrets and the development, implementation and management of trade secret policies for successful business goals; managed outside counsel and experts, strategy and budget for Japanese and European Patent Office litigation and oppositions; successful enforcement and assertion of IP portfolios; successfully prosecuted more than 150 patents; developed, implemented and conducted interactive training and educational programs for corporate business functions on agreements, negotiations, litigation, compliance and intellectual property; and attained favorable resolution of assertions and claims relating to non-practicing entity claims.

Mrs. Thomas earned her B.E. from Stevens Institute of Technology and her J.D. from Seton Hall University School of Law. She is associated with the AIPLA, NJIPLA, ABA, LES, and JPPCLE. She is admitted to practice in the states of New Jersey and New York and the USPTO.


Orin Herskowitz is the Senior Vice President of Intellectual Property and Tech Transfer for Columbia University, as well as Executive Director of Columbia Technology Ventures (CTV). He also is an Adjunct Professor at Columbia’s Business and Engineering Schools. He has served on boards or served as the Principle Investigator for a number of innovation and entrepreneurship-focused initiatives, including the NYC Media Lab, the PowerBridgeNY clean energy proof-of-concept center, the Columbia Coulter Translational Partnership, the Academic Venture Exchange, the NYC ACRE technology incubator, and Harlem Biospace; has been a peer reviewer for innovation and entrepreneurship awards for the National Science Foundation, the US Small Business Association, the Association of Public and Land-grant Universities; a published author on the topic of translating university-stage technology; and is a frequent speaker at technology-focused events in NYC and across the country. Orin has also been appointed by U.S. Secretary of Commerce Penny Pritzker to the National Advisory Council on Innovation and Entrepreneurship, serving a two-year term beginning in 2016. Orin received his BA from Yale and his MBA from the Wharton School of Business. Prior to joining Columbia, Orin spent 7 years at the Boston Consulting Group's New York office as a strategy consultant, and was previously an entrepreneur and a consultant to start-ups.

Columbia Technology Ventures is the tech transfer office of Columbia University. Our core objective is to facilitate the transfer of inventions from academic research to outside organizations for the benefit of society on a local, national and global basis. Each year, CTV manages more than 350 invention disclosures from faculty, 100 license deals and over 20 new start-ups. CTV currently has over 1200 patent assets available for licensing, across research fields such as bio, IT, cleantech, devices, nanotechnology, and materials science.

Columbia Technology Ventures has a particular focus on start-up companies. Over the years, CTV has been involved with launching over 180 companies based on Columbia's technologies. Of these companies, over 40 have received VC funding, with over 25 successful acquisitions or IPOs to date.


Peter Brown has focused on technology law matters in national law firms and boutiques for over 25 years. He is currently the principal of Peter Brown & Associates PLLC, a New York boutique law firm concentrating in information technology, intellectual property and arbitration.

“The Best Lawyers in America” ® publication honored him as the “Lawyer of the Year” in Information Technology Law 2018 for New York City.

Mr. Brown has experience in a wide variety of litigations and arbitrations relating to the Internet, information technology and intellectual property. He regularly appears in both federal and state courts throughout the United States. In addition, Mr. Brown has acted as an arbitrator or mediator in over 70 matters involving IT and IP disputes.

Throughout his career he has drafted and negotiated a broad array of agreements relating to the Internet, outsourcing, cloud computing services, application software, Internet apps and e-commerce.  He has prepared these agreements for domestic businesses and international companies.

Mr. Brown co-authored the leading treatises Emerging Technologies and the Law and Computer Law. He also co-authors a monthly column on Information Technology Law for the New York Law Journal.

Mr. Brown is regularly featured as a speaker at the International Technology Law Association, local bar associations and other professional organizations in the US and abroad. He frequently speaks on the topic of artificial intelligence, IT and IP.

The Best Lawyers in America 2019 edition (affiliated with U.S. News & World Report), rated Peter Brown & Associates PLLC a First Tier National Technology Law firm. Chambers USA, New York Metro Superlawyers and other ratings organization have all given Mr. Brown high ratings in the fields of IT and IP. For further information see www.browntechlegal.com


Scott Alter is an experienced intellectual property attorney whose practice focuses on software, electronics, internet, telecommunications, cloud computing, medical device, financial, and semiconductor technologies. A skilled global patent strategist, he also has significant expertise in patent eligibility, joint and indirect infringement, and indefiniteness. In every matter he handles, Scott strives to obtain practical results for his clients.

Scott has served as an expert witness in litigation concerning data encryption technology. Before becoming a lawyer, he worked at IBM as a LAN systems developer and computer programmer. Prior to joining the firm, Scott was a partner in the Colorado office of a national IP law firm.


The Honorable Faith S. Hochberg is a nationally recognized U.S. Federal Judge and former United States Attorney known for her broad expertise in complex corporate, securities, antitrust and patent litigation. She retired from the bench in 2015 and founded Hochberg ADR, which provides mediation, arbitration and strategic advisory services. She is also a distinguished neutral on the rosters of AAA, ICDR, Federal Arbitration, CPR, WIPO, ITC and ICC. Additional information is available on the website, www.JudgeHochberg.com.

Judge Hochberg was twice nominated by the President, and confirmed by the Senate, first as United States Attorney and thereafter a United States District Judge. She has presided over thousands of federal cases: class actions; Securities; Banking; Patent, Copyright & Trademark; Pharmaceuticals, Antitrust; Insurance; Federal Arbitration Act; and Corporate Contract and Partnership matters. Judge Hochberg has exceptional expertise in patent cases, as well as nationwide cases where she was appointed by the Judicial Panel on Multi District Litigation. She has been invited to speak nationwide and abroad about U.S. litigation.

Judge Hochberg has presided by designation with the Federal Circuit Court of Appeals and has served as a Patent Pilot judge. She was honored as the first Fellow of the Innovation Center for Law and Technology at New York Law School in recognition of her contribution to the advancement of intellectual property law. She also serves on its Advisory Board, together with entrepreneurs and business leaders.

Judge Hochberg previously served as the United States Attorney for the District of New Jersey, and Deputy Assistant Secretary of the United States Treasury Department, as well as in the private practice of law.

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


Jeffrey M. Sears
Columbia University
Associate General Counsel and Chief Patent Counsel

 

 

Jeffrey M. Sears serves as Associate General Counsel and Chief Patent Counsel for Columbia University. His practice encompasses all aspects of patent law, including prosecution, portfolio management, strategic counseling, licensing and post-licensing compliance, litigation, and legislative and regulatory patent matters.

Jeff holds an S.B. in physics from MIT, an M.A. and Ph.D. in physics from SUNY Stony Brook, and a J.D. from NYU. He is admitted to practice law in New York and before the U.S. Patent and Trademark Office.

 

 


Judge Mitchell S. Goldberg

Upon graduation from Temple Law School in 1986, Judge Goldberg joined the Philadelphia District Attorney's Office serving in both the trial and appellate divisions. In 1990, he joined the law firm of Cozen O'Connor where his practice primarily focused on commercial litigation. Judge Goldberg was eventually promoted to senior partner and manager of the Cozen's Arson and Fraud Unit. In 1997, Judge Goldberg returned to the public sector as an Assistant United States Attorney for the Eastern District of Pennsylvania where he handled mostly white collar crime cases. In February 2003, Judge Goldberg was appointed by the Governor of Pennsylvania to a position on the Bucks County Court of Common Pleas, and in November 2003, he was elected to a ten-year term on that Court. Judge Goldberg was appointed to the United States District Court for the Eastern District of Pennsylvania on October 31, 2008.


Mr. Bhansali's experience spans a wide-range of civil trials and appeals, with particular emphasis on intellectual property and antitrust matters. He has handled patent disputes in district courts and the U.S. International Trade Commission for cases that have involved computer software, internet content delivery, digital imaging, telecommunications, and pharmaceuticals. His antitrust experience has included representing corporations in the credit-card, pharmaceutical, and video-game industries as both plaintiffs and defendants. In addition, Mr. Bhansali has handled numerous appeals in federal and state courts, and he has defended clients in several class actions brought under federal and California law.

Mr. Bhansali has been listed in Best Lawyers in America for Intellectual Property Litigation and Patent Litigation, since 2010. In 2009, Mr. Bhansali was named one of the Daily Journal's Top 20 Under 40 lawyers in California. In 2015, he served as President of the Northern District of California Federal Bar Association Chapter, and he presently serves as Chief Financial Officer and Board member for the Northern District of California Practice Programs Committee. From 2010 to 2014, he served on the Executive Committee of the State Bar of California Section of Antitrust and Unfair Competition Law.


Recognized as one of the top patent educators in the United States, John has over 30 years experience in all phases of the patent field. As a Director at Soryn, John is principally responsible for outreach to the technology community and advising Soryn clients on a host of strategic issues.

John began his technical career as a Field Engineer with the Federal Highway Administration specializing in bridge rehabilitation. Later, he worked as a Patent Examiner and the Special Assistant and Speech Writer to the Commissioner of Patents, Donald J. Quigg. Post law school, John founded what would become the largest patent searching and documentation entity in the U.S., supplying the needs of clients across the globe. He also founded the patent law firm, Berenato & White, and a patent education company. After selling the education company to the Practising Law Institute in the mid-90’s, John remained the author and principal lecturer for the course he created.

Since 1995, John has taught 25,000+ fellow patent practitioners in preparation for the Patent Office registration exam. He has also taught more than 400 Patent Examiners patent law and evidence, and has been qualified as a Patent Procedure Expert in several Federal District Court lawsuits. In addition, John served as an Adjunct Professor for the University of Virginia School of Law, and John Marshal Law School and has created numerous patent education programs and publications.

John has examined, written, and prosecuted thousands of patent applications in the United States and around the world.

Born in Bern, Switzerland, John graduated in Civil Engineering from Virginia Tech, and obtained his law degree from George Washington University. He regularly speaks and publishes on a host of patent topics.


Senior Counsel Robert Neuner has had a distinguished career as a patent trial lawyer. He is also a featured lecturer on litigation for the annual Patent Law Institute program, lecturer on the trial and appeal of intellectual property cases, and a long-time columnist on patent and trademark law for the New York Law Journal. He is listed in the Chambers USA Guide, America’s Leading Business Lawyers since 2003, Chambers Global The World’s Leading Lawyers since 2004, and The Best Lawyers in America, 2006-2009. In addition, Mr. Neuner was named a “New York Super Lawyer” in New York Super Lawyers, Manhattan Edition, a special supplement in the New York Times by Law and Politics, 2006-2009.

Practice Expertise
Extensive experience and success in the pretrial, trail, and appeal of patent, copyright, trademark, and trade dress cases. Additional expertise as a special master in patent cases, including discovery, settlement oversight, claim construction, and summary judgment.

Bar Admission

  • State of New York
  • United States Districts Courts for the Northern, Southern, and Eastern
  • Districts of New York
  • United States Court of Appeals for the First, Second, Third, Fourth, Seventh,
  • Ninth, and Federal Circuits
  • Supreme Court of the United States
  • Registered to practice before the United States Patent and Trademark Office

Education

  • J.D., Fordham University School of Law, 1965
  • B.S., Electrical Engineering, Manhattan College, 1960

Memberships

  • New York Intellectual Property Law Association, President, 2001-2002


Since January 3, 2007 when he retired from the USPTO, Robert (Bob) Spar has been actively providing advice, consultation and training services to the patent bar about patent practices and Office procedures, including, in particular, about recent examination related notices/initiatives, and proposed/final rule changes by the USPTO. He has provided such specialized consultant services via presentations and training workshops, with follow-up e-mails, to patent intellectual property organizations, individual attorneys, patent departments of major corporations and leading patent law firms; and to the patent community in general via presentations at Annual Patent Law conferences and telephonic Hot Topic Briefing webinars for the PLI. He has taught for the PLI in its bar review course, its program on Reissue and Reexamination Strategies and Tactics with Concurrent Litigation, and in its annual PLI programs on prior art/35 USC 102/103.  He also served as an expert witness in patent litigation matters, and provided legal and technical consultation services on reissues, reexamination requests, and patent procedures, practices and issues.

Prior to his retirement on January 3, 2007, Bob had nearly 40 years of service at the USPTO. For the last 11 years, Bob was the Director of the Office of Patent Legal Administration (OPLA, formerly SPLO), under the Deputy Commissioner for Patent Examination Policy. Bob, with OPLA, played a significant and leading role in developing and implementing many major Office rule makings and policy initiatives involving the patent process, and greatly affecting the patent corps and all patent practitioners.

During his tenure in the Office, Bob served in a number of capacities in Patents, holding the titles of Primary Examiner, Supervisory Patent Examiner (SPE), and Special Programs Examiner (SPRE); serving on details to the Solicitor’s Office, the Board of Appeals and Interferences; and in 1978, he was selected for a 1 year Commerce Science and Technology Fellowship to the White House.

He taught extensively at the Patent Academy (including numerous patent examiner initial training (PEIT) sessions, and on 35 U.S.C. 103 – Obviousness); he made many training and informational presentations to examiners, technical support staff, and top patents management; and he made a large number of presentations on proposed, existing and revised PTO practices and policies to state and city patent bar organizations, at conferences of intellectual property organizations, and for the PLI. He helped to create the Form Paragraph manual of the Manual of Patent Examining Procedure (MPEP), and served as its editor for many years.

He received a BME from Rensselaer Polytechnic Institute in 1962, a LLB from University of Baltimore in 1969, is a member of the Maryland Bar, AIPLA (a member of the Rules Sub-Committee), and is admitted to the CAFC.


Brian E. Hanlon is the Director of the Office of Patent Legal Administration (OPLA) at the United States Patent and Trademark Office (USPTO).  Prior to taking his current position, Mr. Hanlon served as the acting Chief of Staff for Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David J. Kappos, and served as the Director of Strategic Planning and Management Council for Under Secretary and Director Jon W. Dudas and acting Under Secretary and Director John J. Doll.  Prior to his work in the Under Secretary’s Office, Mr. Hanlon was the Deputy Director of OPLA.  Mr. Hanlon was also a shareholder at the law firm of Banner & Witcoff, Ltd. where his practice focused on patent prosecution and client counseling on issues relating to both procurement and enforcement of utility and design patents.  Mr. Hanlon began his career as a patent examiner at the USPTO in former Group 3300, now TC 3700.  He received a Bachelor of Science in Mechanical Engineering with Honors from Worcester Polytechnic Institute, and a J.D., Magna Cum Laude, from the Catholic University of America, Columbus School of Law.  Mr. Hanlon is a member of the Bars of Maryland, the District of Columbia, and the United States Supreme Court.


Leonardo Renna is Patent Counsel for Google, Inc. Prior to joining Google, Mr. Renna was Intellectual Property and Technology Counsel for MasterCard Worldwide. Before working in-house, Mr. Renna practiced intellectual property law at Brumbaugh, Graves, Donohue & Raymond and Baker Botts L.L.P. Mr. Renna holds a Bachelor of Science in Electrical Engineering from the Massachusetts Institute of Technology and a Juris Doctorate from Brooklyn Law School, where he graduated cum laude. After law school, Mr. Renna served as a law clerk to the Honorable Herbert J. Hutton of the U.S. District Court for the Eastern District of Pennsylvania.


Marti Johnson concentrates her practice on intellectual property and technology law, with a focus on patent and trade secret litigation. She has represented clients in federal and state litigation, multidistrict litigation, arbitration, and before the Patent Trial & Appeal Board.  She is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Ms. Johnson has represented clients in matters involving a wide array of technologies, including computer hardware and software, financial systems, e-commerce, Internet technologies, food processing and engineering, telecommunications systems, medical devices, data transmission, semiconductors, electronic displays (including micromirror array and LCD technology) and pharmaceuticals.

Ms. Johnson also provides guidance to her clients on a variety of issues, including intellectual property transactions, freedom to operate determinations, electronic discovery parameters and damages evaluations.

Ms. Johnson’s pro bono practice includes nonprofit intellectual property investigations, social security benefits representation, prisoner abuse cases, and work for the Innocence Project.


Richard L. Rainey

Richard Rainey is an intellectual property trial and appellate litigator who has resolved a wide range of matters, including patent infringement cases, trade secret disputes, and cybersecurity threats, in diverse technological areas across many industries. Mr. Rainey, a registered patent attorney, also has substantial experience in matters before various patent offices around the world, including various pre- and post-grant proceedings. His practice includes intellectual property counseling, such as a strategic patent portfolio analysis, and patent prosecution.

Mr. Rainey recently rejoined the firm after serving for three and a half years in GE's renowned Corporate legal department as GE’s Global Chief IP Litigator and head of GE’s Intellectual Property Litigation Center of Excellence, which is responsible for all of GE's IP disputes. During his time with GE, Mr. Rainey oversaw GE's multi-jurisdictional patent dispute with one of its largest competitors, which included the largest patent jury verdict in GE's history. He also argued and won two Federal Circuit appeals in patent cases. In addition, Mr. Rainey investigated and litigated a number of cybersecurity matters for GE, including both civil and criminal actions. He routinely counseled GE’s diverse businesses on intellectual property strategy, which extended to supporting GE’s efforts on the policy front regarding various proposed reforms in intellectual property law at both the state and federal level.

Over the course of his career, Mr. Rainey has been lead counsel in a number of high profile patent infringement cases including cases before district courts (both bench and jury trials) and the International Trade Commission (“ITC”) under Section 337 (for both complainants and respondents). He has been involved in more than 50 appeals in patent cases to the Federal Circuit, prevailing in all but one of the substantial number of cases he has argued before that Court.


Marian oversees the intellectual property operations for IBM’s world renowned research division.  In this capacity she leads a team of legal professionals charged with the procurement of patents, the development and implementation of intellectual property policies and the negotiation of commercial transactions in support of the global research organization. Prior to assuming her current role, Marian was IBM’s Senior Counsel for IP Law Policy and Strategy, formulating policy on a broad spectrum of IP matters and developing and deploying IBM's patent portfolio strategy.

Marian is a member of the Board of Directors of the NYIPLA, Chair of the 101 Task Force of the Intellectual Property Owners Association and a member of the AIPLA and ABA.

Dr. Underweiser is a graduate of Harvard University where she received her AB in Physics.  She received her PhD in Physics from UCLA, where she specialized in Condensed Matter Physics, and her JD from Columbia Law School where she was a Stone and a Kent scholar.