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Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011


Speaker(s): Hon. Theodore R. Essex, Joanna H. Kim, Kenneth M. Schor, Leonard Richard Svensson, Paul S. Grewal, Scott A. McKeown, W. Todd Baker
Recorded on: Jan. 10, 2011
PLI Program #: 29767

Joanna H. Kim represents clients in a wide range of intellectual property and business litigation matters, including copyright, trademark and patent infringement; trade secrets misappropriation; unfair competition; and royalty, licensing and other contractual and business disputes. Ms. Kim has handled all aspects of these matters, including pre-litigation counseling, equitable remedies (including temporary restraining orders, preliminary injunctions and seizures), discovery (including electronic discovery), motion practice, trial and arbitration.

Ms. Kim's clients include companies in the entertainment, technology, garment and retail industries.
 
Ms. Kim is currently a member of the Los Angeles office’s diversity committee.

Ms. Kim received her B.S. in chemical engineering from the University of California at Berkeley in 1990. Before attending law school, she worked as an engineer in the environmental and aerospace industry. She received her J.D. in 1996 from Loyola Law School, where she was a member of the St. Thomas More Law Honor Society and Phi Delta Phi and was the chief note and comment editor of the Entertainment Law Journal. She serves as president of the Korean American Bar Association and co-chairs the Intellectual Property.

Subcommittee of the Litigation Section of the American Bar Association, where she formerly served as co-chair of the Trade Secrets Subcommittee.

She also served on the board of the governors of the Asian Pacific American Bar Association. In 2006 Ms. Kim was selected as a “Rising Star” by California Lawyer magazine.

Ms. Kim’s publications include Pitfalls to the Defense of Reverse Engineering and Corporate Sleuthing: Surveillance of Employee Activity to Avoid Disclosure of Trade Secrets, both published by the Section of Litigation of the ABA (2005). Her speaking engagements include Symposium on Ethics Issues Arising in the Context of Electronic Discovery and Document Destruction Policies (United States Trustee Office, September 2005) and Protecting Trade Secrets in the Digital Age Electronic Misappropriation: New Strategies for Emerging Vulnerabilities (Strafford CLE March 2008).

Ms. Kim is a member of the State Bar of California.


EDUCATION

George Mason University School of Law, Arlington,VA, J.D.,  November 1983 (with distinction)
University of Maryland, College Park, MD, B. S., 1975 (Specialty:  Biochemistry)

BAR ADMISSIONS

  • Virginia, 1984; California, 1999.
  • U.S. Patent and Trademark Office
  • Court of Appeals for the Federal Circuit.
  • Supreme Court of Virginia and District Courts in Virginia and California.

EXPERIENCE

Birch, Stewart, Kolasch & Birch, LLP, Partner

  • Prepared, filed and prosecuted numerous patent applications in the areas of biotechnology, biochemistry, pharmaceuticals and organic chemistry since 1982.
  • Numerous patent interferences and at all stages of the proceedings.
  • Prepared, filed and prosecuted a variety of reexamination and reissue applications.
  • Numerous appeals before the USPTO Board of Patent Appeals and Interferences.
  • Experienced in District Court patent infringement litigations.
  • Counseled clients for numerous opinions on patent validity and infringement issues.
  • Managed worldwide patent portfolios, including prosecution of applications and management of oppositions in numerous countries.
  • Conducted due diligence studies regarding corporate intellectual patent portfolios.

University of San Diego School of Law, Adjunct Professor of Law – Biotechnology Patent Law

Shlesinger, Arkwright, Garvey & Dinsmore, Arlington, VA.
Technical Assistant/Patent Searcher

Hazelton Laboratories, Vienna, VA
Technician, technical writer

Presentations and Publications

Prepared and presented numerous lectures and seminars in the United States and abroad regarding U.S. patent law. The following are examples of some recent presentations:

- July 2002 – Presentation at SRI Conference on “Patentability of Genes”
- April 2003 – Presentation at Whittier Law School IP Seminar Series on “Recent Issues in the Patenting of Life Sciences”
- April 2003 – Presentation at OCPLA Monthly Meeting on Interference Practice
- November 2003 – Presentation at OCPLA Monthly Meeting on Practical Implications of the Federal Circuit’s Decision in Festo.
- April – May 2004 – Moderator for panels speaking at Whittier Law School IP Spring Seminar Series.
- October 2004 – Presentation on Patent Claim Strategies for the United States, and Moderator for panel discussion on Reach Through Claims at FICPI Forum, Venice, Italy.
- June 2005 – Two day seminar at Helsinki Technical University, Finland on US Patent Practice.
- October 2005 – Presentation on “Non-Litigation Methods for Challenging a Competitor’s Patent”, VPP Conference, Weimar, Germany.
- October 2005 – Presentation on “Comparative Claim Drafting – Revisiting Some Old Issues with New Developments”, FICPI Forum, Lisbon, Portugal.
- September 2006  – Presentation at Orange County Patent Lawyers Association on “Pre-Appeal Brief Conferences at the USPTO”
- January 2007 – Presentations on “Electronic Filing at the USPTO” and “The USPTO Struggles with Biotech: An Update”; Patent Law  Institue 2007,  San Francisco, California.
- October 2007 – Presenation on “Post-Grant Procedures: Present and Future”, BIO IP Counsels Meeting, New York, New York.
- November 2007 – Moderate two day seminar sessions on “A Day in the Life of a 21st Century E-Office”, FICPI Forum, Seville, Spain.
- January 2008 – Presentations on “Electronic Filing at the USPTO” and “PTO/Pharma Trends – News to Report”; Practicing Law  Institue 2008,  San Francisco, California.
- June 2008 – “Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Practicing Law Sections 102 & 103,  Patent Law  Institue 2008,  San Francisco, California.
- April 2009 – “Adapting to Changing IP Laws”, presentation at BIOCOM Spring IP Workshop, San Diego, California
- September 2009 – “Section 102(a) and (b) and the CAFC 2009”,  Practicing Law  Institue 2009,  San Francisco, California.
- October 2009 – “IP Challenges for Inventions Related to High Throughput Screening”, BIOCOM IP Workshop, San Diego, California
- January and March 2010 – “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law  Institue San Francisco and Chicago.
- March 2010 – “All Things Chemical and Biotechnical at the PTO”, Practicing Law  Institue, San Francisco, California.
- September 2010 - “Section 102(a) and (b) and the CAFC 2010”,  Practicing Law  Institue 2010,  San Francisco, California
- January 20101– “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law  Institue San Francisco
- February 2011 - “All Things Chemical and Biotechnical at the PTO”, Practicing Law  Institue, San Francisco, California”
- July 2011 - “Section 102(a) and (b) and the CAFC 2011” and “Impact of KSRat the USPTO”,  Practicing Law  Institue 2011,  San Francisco, California
- August 2011 – “Change Agents: Impact of US Patent Law Developments On Your Patent Portfolio Management”, Ipendo 2011 User Forum, La Jolla, California.
- October 2011 - “Prior Use and the AIA”, ”,  Practicing Law  Institue 2010,  San Francisco, California
- December, 2011 – “Impact of Patent Reform on Your Patent Portfolio”, Connect Policy Forum, San Diego, California.
- March, 2012 – “All Things Chemical and Biotechnological at the PTO”, Practicing Law  Institue 2010,  San Francisco, California
-  July,, 2012 – “Prior Art, Obviousness, and the America Invents Act in 2012”,  Practicing Law  Institue 2010,  New York and San Francisco.
- November 2012 – “Patents: Prosecution, Global View”, Intellectual Property & Licensing Workshop, San Diego Center for Systems Biology, San Diego, California
- March 2013 – “Implementing the AIA – First to File: The New 102 Timelines and Deadlines, Practicing Law  Institue 2013,  San Francisco, California
- March 2013 – “All Things Chemical and Biotech, Practicing Law  Institue 2013,  San Francisco, California

 

LEONARD R. SVENSSON, ABSTRACT

Leonard Svensson is a partner in the firm of Birch, Stewart, Kolasch & Birch, LLP and is a partner in firm’s office in San Diego, California. Mr. Svensson holds a Bachelor of Science degree in biochemistry, a juris doctorate degree in law, and is a member of the Virginia and California State bars. He has experience in all aspects of intellectual property law, including prosecution of patent applications in the United States and abroad, opposition proceedings in the EPO and Japan, infringement actions in U. S. Federal District Court, patent interferences and appeals. He also has experience counseling in patent validity and infringement issues, handling worldwide patent portfolios and conducting product clearance studies in the major markets of Europe, Japan and the United States. Mr. Svensson has particular technical expertise in the fields of biotechnology (including plant biotechnology), biochemistry and pharmaceuticals.  He has lectured frequently before both U.S. and international audiences on various aspects of U.S. patent practice.

 


Paul S. Grewal is Vice President and Deputy General Counsel for worldwide litigation at Facebook, Inc.  From 2010-2016, he served as a Magistrate Judge for the Northern District of California, where he presided over and settled criminal and civil cases in a wide range of subject areas, including patent, employment, civil rights, commercial contract, trademark, and federal misdemeanor cases. He also served as a member of the court's Technology Practice and Patent Local Rules Committees.

Paul received his Bachelor of Science from MIT, where he was elected to Tau Beta Pi and Sigma Xi, and his law degree from the University of Chicago. After graduating from law school, he served as a law clerk to the Honorable Sam H. Bell of the U.S. District Court for the Northern District of Ohio. After working on complex commercial litigation at Pillsbury Madison & Sutro, he served as a law clerk to the Honorable Arthur J. Gajarsa of the U.S. Court of Appeals for the Federal Circuit.

Paul then joined Day Casebeer Batchelder & Madrid (which later merged with Howrey LLP) where his practice was focused on intellectual property litigation, with a focus on patent trials and appeals. He tried patent cases in various federal district courts across the country and argued appeals before several federal appellate courts, including the Federal Circuit. His clients ranged from large technology and biotechnology firms to small medical device and financial firms to individual inventors. He was registered to practice before the Patent and Trademark Office, and his practice included re-examinations before the PTO.

Paul is a former President of South Asian Bar Association of North America.


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). Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 250 PTAB matters since 2012, including those in which more than $500 million was at stake. Furthermore, Scott is recognized as a thought leader in the PTAB industry. He is a Professorial Lecturer in Law at The George Washington University Law School, a member of the teaching faculty of the Practising Law Institute, and was a founding member of the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings.


THEODORE R. ESSEX

Judge Essex served as an Administrative Law Judge at the Office of Medicare Hearings and Appeals in Cleveland, Ohio, from November 2006 until his United States International Trade Commission (USITC) appointment in October 2007. He previously served as a consultant to the Compensation and Pension Service of the Department of Veterans= Affairs in Washington, DC, from 2005 to 2006.

From 1985 to 2005, Judge Essex served in a variety of positions with the U.S. Air Force (USAF), from which he retired in 2005.  He was Chief of the General Torts Branch of AFLSA/JACT in Arlington, VA, from 2002-2005. He served as Chief of Aviation Law with the Air Education and Training Command, USAF from 2000-2002; as Deputy Staff Judge Advocate with the Air Intelligence Agency, USAF from 1999-2000; as Chief, Operations Law, USAF Headquarters in the United Kingdom from 1996-1999; as an Attorney-Adviser in the AFLEM Office of International Claims and Investment Disputes at the U.S. Department of State from 1995-1996; as a Staff Judge Advocate based in Norway from 1992-1995; as a Deputy Staff Judge Advocate based in the United Kingdom from 1990-1992; as a Circuit Defense Counsel for the USAF AL Legal Services Center from 1988-1990; as a Deputy Staff Judge Advocate based in Belgium from 1987-1988; as an Area Defense Counsel from 1986-1987; and as an Assistant Staff Judge Advocate from 1985-1986.

Judge Essex holds a Juris Doctor degree from The Ohio State University, 1980 and a Bachelor of Arts Degree from Miami University in Oxford, Ohio in 1977. He holds an active law license in the state of Louisiana and is a registered solicitor in England and Wales. Judge Essex is also a professorial lecturer in law at The George Washington University Law School.

The U.S. International Trade Commission is an independent, nonpartisan, quasi-judicial federal agency that provides trade expertise to both the legislative and executive branches of government, determines the impact of imports on U.S. industries, and directs actions against certain unfair trade practices, such as patent, trademark, and copyright infringement.


W. Todd Baker is Chair of the firm’s Post-Grant patent practice group and a member of the firm’s Management Committee.  He has significant experience handling patent prosecution and post-grant proceedings at the USPTO, including all aspects of reissue applications, ex parte reexamination, IPR proceedings and appeals to the USPTO’s Patent Trial and Appeal Board (PTAB).  Mr. Baker frequently advises his clients on alternatives to traditional litigation-based patent validity challenges, issues of priority, patentability, derivation, inventorship, and licensing related to patent interference matters before the PTAB.

Mr. Baker prepares and prosecutes patent applications in diversified electrical and mechanical technologies, including artificial intelligence (AI), automotive related technologies – such as autonomous vehicles, clean technologies, dynamic control systems, medical devices and wireless innovation.