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Patent Law Institute 2021: Critical Issues & Best Practices


Speaker(s): Alison J. Baldwin, Andrea L. Gothing, Andrew Gish, Brent K. Yamashita, Brian Hanlon, Briana Barron, Bridget Smith, Carolyn Spencer-Mork, Chad M. Rink, Courtenay C. Brinckerhoff, Craig Opperman, D. Brian Kacedon, Darryl M. Woo, David M. Rosenblatt, David M. Simon, Dawn Rice Hall, Diane Gabl Kratz, Douglas R. Nemec, Elinor C. Sutton, Eric M. Hutchins, Frederic Thiel, Gene W. Lee, Gerald M. Murphy, Jr., John M. White, Jon R. Trembath, June E. Cohan, Kanda V. Ishihara, Kate Gaudry, Ph.D., L. Scott Oliver, Laura Donnelly, Laura J. DeMoor, Michael Sochor, Michael T. Moore, Nancy (Xiaowen) Song, Narendra R. Thappeta, Neil DuChez, Olivia Luk Bedi, Prof. David Hricik, Rick L. Franzen, Robert J. Spar, Robert M. Isackson, Robert W. Bahr, Scott M. Alter, Shinichi Ueda, Stephen MacKenzie, Steven P. Klocinski, Tracy-Gene G. Durkin, Yiming Zhang
Recorded on: Apr. 29, 2021
PLI Program #: 304277
























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.


John White is recognized as one of the top patent educators in the United States, having over 35 years of experience in all phases of the patent field. As a Special Counsel at Harness I.P., John is principally responsible for public outreach and advising clients on a host of strategic I.P. issues as well as offering patent procedure expert witness services. At PCT Learning Center, John has created an entire curriculum for IP support staff and attorneys/agents to learn the in and outs of international IP practice.

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 30,000+ 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.


Diane Gabl Kratz is a two-time IAM Strategy 300 World's Leading IP Strategist for maximizing IP value. As Senior IP Counsel, Manager at Dolby Labs, she develops and executes U.S. and international patent filing strategy, while leading and empowering a diverse global team of 15 IP professionals. A USPTO-registered patent attorney, she also heads Dolby’s worldwide trademark portfolio.

Previously at a Fortune 500 tech company in Silicon Valley, Diane managed all aspects of the patent portfolios for two business units, advising on strategy, prosecution, and IP-related transactions. Most notably, she launched a company-wide inventor recognition initiative that increased invention disclosures by 100%. Based on the strength, scope, and influence of its patent portfolio, her company was recognized repeatedly as a Top 100 Global Innovator by Thomson Reuters/Clarivate Analytics. 

A four-time Super Lawyers Rising Star, Diane began her career in private practice at the Silicon Valley offices of international law firms Morrison & Foerster LLP and Sidley Austin LLP. There, she focused on IP litigation in industries such as semiconductors, software, telecom, consumer electronics, medical devices, and life sciences. 

Diane is a nationally-recognized speaker and frequently presents at conferences throughout the United States. She has been featured as a guest lecturer at Stanford University’s Management Science & Engineering Department, the University of California-Berkeley’s Haas School of Business, and as regular faculty for PLI. Past speaking engagements include the ABA, Association of Corporate Counsel (ACC), Silicon Valley Association of General Counsel, IAM, California Lawyer/Daily Journal, and IP Counsel Café. In addition, she serves as a Global Advisory Board Member for the Women In Law Empowerment Forum (WILEF) and has been active in the IP Gathering, Unified Patents, and the LOT Network. 

Diane received her J.D. from the University of Chicago Law School and a Physics degree from Cornell University. She is an active member of the California Bar, the Patent Bar, and also is an IAPP Certified Information Privacy Professional for both Europe and the United States (CIPP/E, CIPP/US).


Andrea Gothing serves as a Director at Fortress Investment Group in San Francisco, where she oversees investment monetization strategies, including licensing and litigation.

Before joining Fortress, Ms. Gothing was a litigation partner at the law firm of Robins Kaplan LLP, where she served on the hiring committee and as an instructor in the firm’s trial practice program. Prior to law school, she worked as a semiconductor device engineer at Motorola.

Ms. Gothing earned her law degree magna cum laude from the University of Minnesota. In addition, she has a Master of Science in Electrical Engineering from the University of Minnesota and a Bachelor of Science in Electrical Engineering from Worcester Polytechnic Institute.


Andrew Gish is a Partner at Gish PLLC.

Andrew's practice focuses on technically complex patent and trade secret matters before district courts, the Patent Trial and Appeal Board, the International Trade Commission, and the Federal Circuit.  His hard science electrical engineering background and industry experience provide him with a detailed understanding of advanced technology.  He has represented clients in patent infringement matters involving wireless data transmission, automatic audio/video recognition, networking security, RFID, semiconductor manufacture, solar cells, LED lighting, block chain, internet transactions, ridesharing, heavy equipment, clean coal, and other technologies.
 
For instance, in Pi-Net International, Inc. v. JPMorgan Chase & Co. (D. Del. Case No. 1:12-cv-00282), Andrew obtained summary judgment invalidating all asserted patent claims on multiple grounds of indefiniteness, lack of enablement, and failure of written description.  This result effectively ended the plaintiff’s previously successful patent litigation campaign, which had targeted dozens of technology companies and financial institutions.  In Google LLC v. Network-1 Technologies, Inc. (Fed. Cir. Case Nos. 2016-2509, 2016-2510, 2016-2511, 2016-2512), Andrew convinced the Federal Circuit to overrule the PTAB and adopt Google's dispositive claim construction with respect to every single one of 70 claims at issue in four patents.  And, in JPMorgan Chase & Co. v. DataTreasury Corp. (E.D. Tex., Case No. 5:12-cv-119), Andrew obtained a $69 million judgment for JPMorgan Chase in a breach of contract action regarding a most favored licensee provision in an agreement settling a prior patent infringement suit.    
 
Andrew’s litigation practice is complemented by his experience handling IP transactions, as well as the IP issues inherent in large mergers and acquisitions. He also has experience drafting and prosecuting patent applications, and assessing the value of large patent portfolios.
 
Andrew previously practiced in the Patent and Technology Litigation group at Skadden, Arps, Slate, Meagher & Flom, where he routinely led intellectual property matters involving advanced technology.  Prior to his legal career, Andrew worked at Intel Corporation in various research and development, microprocessor design, and semiconductor manufacturing departments. Andrew graduated summa cum laude with a master of science in electrical engineering from the University of Southern California, where he was recognized as the top electrical engineering student in his graduating class.

Andrew also has extensive pro bono experience, including representing clients seeking asylum, appealing death penalty verdicts, and filing utility and design patent applications.


Brent Yamashita is a partner at DLA Piper LLP (US) in its Silicon Valley Office.  He is a patent litigator and prosecutor, with experience in mobile devices, computer hardware and software, semiconductors, storage systems and devices, communication systems and networking.

Brent regularly handles inter partes review (IPR) proceedings before the US Patent Office and has appeared as lead counsel at oral hearings.  He also has argued nine claim construction hearings and conducted numerous ITC and district court patent trials. Brent prepares and prosecutes patents for tech companies of all sizes.

Brent has a B.S.E. degree in electrical engineering from Princeton and a J.D. from UC Berkeley and is a registered patent attorney.


Briana Barron is the Head of Intellectual Property at Arcus Biosciences.  Based in Hayward California, Arcus is focused on discovering and developing small and large molecule cancer immunotherapies. In her role, Briana is responsible for developing and coordinating worldwide intellectual property strategies, negotiating a variety of agreements, and leading the team supporting Arcus’s global patent estate.

Prior to Arcus, Briana was Senior Counsel at Gilead Sciences where she supported pharmaceutical products from discovery to commercialization. In that role, Briana also conducted IP due diligence on target patent estates and acted as a liaison for partnered programs.  Briana was the IP lead for a therapeutic sub-group and the biomarker sciences department.

Briana has also worked in large law firm providing litigation and opinion support to a variety of clients in the pharmaceutical and life sciences industries. 


Bridget Smith is a partner at Lowenstein & Weatherwax LLP, where she focuses her practice on AIA trials in the USPTO, patent litigation in district courts, and appeals to the Federal Circuit and regional circuit courts of appeal. She has successfully represented both petitioners and patent owners in around 120 AIA trials. Before joining Lowenstein & Weatherwax, she was a partner at Knobbe Martens and co-chair of the firm’s Patent Office Trials Practice Group. Prior to her legal career, she worked as a process engineer and a software engineer at Motorola Semiconductor and, later, as a data scientist at a business software startup acquired by SAP. She draws on this technical background in counseling clients in the semiconductor, computer hardware and software, and business methods spaces.

She currently serves as vice chair of the American Bar Association Section of Intellectual Property Law’s USPTO Post-Grant Patent Practice and Policy Committee and co-chair of the Orange County chapter of ChIPs, an international non-profit organization dedicated to advancing women in intellectual property. She also speaks and writes frequently on trending issues in intellectual property law, including at conferences for the American Intellectual Property Law Association, the American Bar Association Section of Intellectual Property Law, the California Lawyers Association, and the Center for American and International Law. She was named as one of the Top 50 Women in PTAB Trials by the PTAB Bar Association and is listed in the 2021 edition of the IAM Patent Strategy 300 Global Leaders Guide.


Carolyn Spencer-Mork is a Senior Jury Consultant with IMS | The Focal Point. She has 15 years of experience and has consulted on over 250 cases throughout the country. Her practice focuses on complex commercial litigation, including intellectual property, antitrust, trade secrets, contracts, and securities issues.

As a socio-cultural anthropologist, Ms. Spencer-Mork understands methods of communication, jury psychology, and group dynamics. She offers expertise in the areas of mock trial and focus group jury research, theme development, trial strategy, witness preparation, and voir dire and jury selection methodology.

Ms. Spencer-Mork is skilled at designing jury research that helps clients gain strategic advantages early in the discovery process. Whether research involves testing potential witnesses in order to craft an effective company story, persuasively contextualizing damaging emails in advance of depositions, or developing an effective case theory to guide discovery, Ms. Spencer-Mork helps her clients leverage early insights to develop a persuasive trial strategy.

Ms. Spencer-Mork has a degree in both anthropology and Russian language & literature, from New York University, where she graduated summa cum laude and Phi Beta Kappa. She completed her graduate training as a National Science Foundation Graduate Research Fellow at the University of Chicago, from which she earned an MA in cultural anthropology, with a focus on socio-linguistics. As a Fulbright Scholar, Ms. Spencer-Mork conducted doctoral research in St. Petersburg, Russia.


Chad Rink has worked as an attorney at BSKB since 2008.  He specializes in the drafting and prosecution of patent applications in the areas of chemical compounds, pharmaceutical compositions, polymers, catalysts, and chemical processing and synthesis. He has also prepared legal opinions regarding patent validity and product infringement in a wide range of subjects. Mr. Rink has practiced in the intellectual property field since 2004.

As part of his undergraduate degree, Mr. Rink spent over two years doing lab research on the synthesis of RNA ribozymes and wrote his thesis on the subject. This research eventually led to a published article in Organic Letters. During law school, Mr. Rink was a member of the Moot Court Honor Board and competed in the Jessup International Law Moot Court Competition.

Bar Admissions

2005, Ohio

2006, Connecticut

2006, Massachusetts

Registered to practice before the U.S. Patent and Trademark Office

Not licensed in Virginia

Education

Xavier University

B.S., Chem., B.S.B.A., Finance

2002

University of Cincinnati College of Law

J.D.

2005


Courtenay Brinckerhoff is a partner with Foley & Lardner LLP. She is chair of the firm’s IP Department Associate Training and IP Policies and Procedures group, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice, and a member of the firm's PTAB Trials Practice, Appellate Practice, and Life Sciences Industry Team. Ms. Brinckerhoff is the editor and primary author of the firm’s PharmaPatentsBlog.com and regularly speaks and write on emerging issues facing stakeholders in the life sciences space. Ms. Brinckerhoff serves as a vice chair of IPO’s Patent Office Practice committee.

Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. Over the past 20 years, she has represented clients before the U.S. Patent Office, the U.S. Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit. Ms. Brinckerhoff works with clients in diverse industries, including pharmaceuticals (chemical and biotechnological), human and animal food products, nutraceuticals, and medical devices. She has particular experience with transdermal pharmaceutical products (patches, gels and liquids), oral dosage forms (including controlled release and extended release formulations), enzyme-based technologies, diagnostic and therapeutic antibodies, active and passive immunization therapies, and personalized medicine.

Ms. Brinckerhoff joined Foley as an associate in the fall of 2001, after clerking for the Honorable Judge Schall on the U.S. Court of Appeals for the Federal Circuit. Prior to her clerkship, she worked at Foley as a patent agent and law clerk.

Ms. Brinckerhoff graduated from George Mason University School of Law (J.D., summa cum laude, 1999) as valedictorian of her class. While a law student, she served as a member of the George Mason University Law Review and published an article in the University of Baltimore Intellectual Property Law Journal related to legislation that limits liability for infringement of medical method patents.

Ms. Brinckerhoff graduated from the University of Virginia with a B.S. in chemistry, with distinction, in 1988 and was elected to Phi Beta Kappa. In 1988, Ms. Brinckerhoff received an award for outstanding achievement in chemistry from the Virginia Section of the American Chemical Society.


Darryl M. Woo is a partner in the San Francisco office of Goodwin Procter LLP, and veteran first chair IP trial lawyer who has represented a variety of clients in high profile and “bet-the-company” litigation in both district courts and at the ITC.  He served as counsel for the original Napster in its struggle against the recording industry, he defended Google Earth from patent attack, and on the patent holder side, his $74.7 million jury verdict for a semiconductor industry client in the Northern District of California was one of the top awards the year in which it was tried.  More recently, he defended NFL Entertainment on patents directed at interactive TV and video streaming services, and fun, he served as a technical advisor for the fifth season of HBO’s “Silicon Valley” show, and has a page on IMDb.com.

Among other accolades, Darryl has been named to The Best Lawyers in America©, one of the Top 100 Leading Lawyers in California, a Top 75 IP Lawyer in California, and to the IAM Patent 1000 list of The World’s Leading Patent Practitioners.


David Rosenblatt has been an IP attorney for over 30 years, handling all facets of IP including litigation, licensing, preparation and prosecution, mergers, acquisitions, and divestitures, and IP related antitrust issues.  Currently, David is the Licensing Vice President for Sound View Innovations, LLC, a position he has held since 2014.  David started his legal career at Allegretti and Witcoff (currently Banner and Witcoff).  He then moved to AT&T Bell Labs, holding positions of increasing legal responsibility with both AT&T and Lucent Technologies.  Subsequently, he served as Chief IP Counsel for a publicly traded company prior to becoming Thomson Reuters’ Assistant General Counsel – Intellectual Property where he had numerous responsibilities including managing Thomson Reuters’ worldwide patent preparation and prosecution efforts.  Prior to attending law school, David worked as an engineer for four years while obtaining a graduate degree in electrical engineering. 


David Simon is currently the Senior Vice President for Intellectual Property at salesforce.com.  Previously, he was involved for fifteen years in running intellectual property matters for Intel Corporation, including a stint as Chief Patent Counsel.  Prior to joining Intel in 1997, David was in private practice in Los Angeles for fifteen years, specializing in intellectual property matters, licensing and high technology law.  He has been a featured speaker in a number of intellectual property seminars including at Stanford, GW, Berkeley and University of Texas law schools and in China, Germany, Japan and Korea.  Mr. Simon holds a BSEE from Massachusetts Institute of Technology and a JD from Georgetown University and has testified before both the House and Senate IP subcommittees on the need for patent reform. He was a member of the Board of Directors of the Intellectual Property Owners Association, the Coalition for Patent Fairness and the IP Advisory Board for George Washington University Law School.


Dawn Hall is a Senior Managing Director in the Dispute Advisory Services (“DAS”) practice within the Forensic & Litigation Consulting segment at FTI Consulting and is the co-leader of the Intellectual Property practice. She is based in New York.

Ms. Hall has 20 years of experience assisting companies and counsel with complex economic, financial, accounting, and litigation issues. Ms. Hall has directed numerous commercial litigation engagements focused on applied economic and damages analyses as it relates to intellectual property and commercial litigation matters, including patent infringement, trademark infringement, copyright infringement, trade secret, false advertising and other types of business disputes, such as breach of contract, breach of non-solicitation/non-compete agreements, transfer pricing and Securities and Exchange Commission (“SEC”) investigations related to accounting irregularities.

Ms. Hall has conducted complex damages studies involving lost sales, lost profits, incremental revenue and cost analyses, market share split analyses, apportionment analyses, manufacturing and marketing capacity, price erosion, reasonable royalty, unjust enrichment and prejudgment interest for both plaintiffs and defendants. Ms. Hall has issued expert reports reflecting professional opinions of these respective areas and has been qualified as a damages expert in Federal court.

Ms. Hall has assisted trial attorneys in analyzing company forecasts, business and strategic plans, financial statements and appropriate market data in the preparation of deposition issues for 30(b)6 and opposing experts and preparing trial exhibits, as well as preparing early case assessments.

Ms. Hall has a B.S. in Finance from the University of Notre Dame. She is a member of the Licensing Executives Society (“LES”) and the American Bar Association (“ABA”).


Elinor Sutton is a partner in Quinn Emanuel’s New York office.  Her practice focuses on high-stakes complex commercial litigation, including intellectual property, securities, contract, and employment disputes.  Elinor has tried cases in state and federal courts throughout the country, as well as before international arbitration panels.  She has represented a broad array of clients including clients in the fields of telecommunications, energy, finance, and construction, as well as representing investment funds and bankruptcy creditors.  She attended Yale Law School, and has a degree in economics from Villanova University where she graduated summa cum laude and Phi Beta Kappa.  She applies her financial expertise to assist her clients during the damages phases of cases.  In 2014 through 2018, Ms. Sutton was selected as a New York “Rising Star” and “Top Woman Rising Star” by Super Lawyers magazine. In 2019, Super Lawyers magazine recognized Ms. Sutton as a Super Lawyer in Alternative Dispute Resolution and General & Business Litigation in New York City.  Prior to attending law school, Ms. Sutton worked as a public high school teacher through Teach For America.


Eric Hutchins is Managing Counsel in Oracle’s Patent, Trademark, and Copyright Team, where he is responsible for managing Oracle's patent risk. He oversees patent market transactions, negotiates patent licenses, and collaborates with Oracle's Litigation Team on patent litigation and post-grant proceedings before the United States Patent and Trademark Office. He also assists Oracle's M&A Team with IP-related due diligence on many acquisitions, including Oracle’s 2016 acquisition of NetSuite. Before joining Oracle in 2012, Eric practiced IP litigation at the law firm of Kilpatrick Townsend and Stockton LLP, and was a 2006 graduate of the Santa Clara University School of Law.


Experience

  • Dolby Laboratories

    Senior Patent Counsel

    Oct 2018 – Present

  • Foley & Lardner LLP

    Patent Attorney

    Feb 2017 – Sep 2018

  • Perkins Coie LLP

    Patent Attorney

    2015 – 2017

    Patent Agent

    2011 – 2015

  • Osram Sylvania

    Patent Agent

    2010 – 2011

     

    Education

  • Santa Clara University School of Law

    Doctor of Law (J.D.)

    2011 – 2015

    Dean's List

    Senior Business Editor, Santa Clara High Technology Law Journal

    Intellectual Property Scholarship

    2005 CALI for the Future Award

  • High School Affiliated to Fudan University

    Dates attended or expected graduation1994 – 1997

    Activities and Societies: Science Class (???????)

  • Fudan University

    B.S., Physics

    Honorable science class member. Renmin Scholarship.

  • Rensselaer Polytechnic Institute

Ph.D.,Physics


Experience

  • Wright Medical

    Sr. Director- Intellectual Property & Chief Intellectual Property Counsel

    Jun 2018 – Present

  • Medtronic

    Principal Patent Counsel

    Jul 2007 – Jun 2018

  • 3M

    Intellectual Property Counsel

    2003 – 2007

  • 3M Innovative Properties Company

    Intellectual Property Counsel

    2003 – 2007

  • Merchant & Gould

    Patent Attorney

    1999 – 2003

     

    Education

  • University of Minnesota

    Law

    1996 – 1999

  • University of Minnesota Law School

    JD

    1996 – 1999

  • University of Illinois Urbana-Champaign

BS, Mechanical Engineering

1986 – 1989


Freddy is the VP of the San Francisco Liaison Office for Kilburn & Strode, one of Europe’s leading IP firms. Freddy acts as a client liaison in the Silicon Valley and the wider US. He also prosecutes EP patent applications for tech companies in the Bay Area.

Freddy is a European Patent Attorney who has a strong understanding of in-house IP issues through his 13 years in the industry. In his 19-year career, he has analyzed over 1000 invention disclosures, with half leading to patent filings while drafting applications on a majority of these himself.

In his years in the industry, Freddy spent 10 years at Orange, one of the major telecommunication operators in Europe, as the patent counsel in charge of developing the IP portfolio for its international labs.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. In addition to patent litigation in the federal courts and the U.S. International Trade Commission, he regularly works on Patent Trial and Appeal Board trials, and also trade secret, copyright, trademark, unfair competition, and licensing disputes. Beyond adversarial matters, he also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

Gene’s work has covered a wide range of technologies, including computer systems and software, telecommunications and wireless communications, medical devices, video games, audio processing, pharmaceuticals, financial services, chemistry, semiconductors and geoscience.

He has represented major U.S. and Asian companies in high-stakes disputes. Gene represented through trial the world’s largest alcoholic beverages company in the first investigation in the USITC pilot program for potential early disposition of cases. He also represented Taiwan’s first innovator drug company in a licensing dispute and supported related litigation in Taiwan regarding ownership of patent rights.

Gene is a Director of the PTAB Bar Association and the NY Intellectual Property Lawyers Association.


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.


Jon is a Partner in Michael Best’s Intellectual Property and Litigation practices. He has nearly 30 years of experience in patent litigation in trial and appellate courts as well as post-grant proceedings. Jon is a zealous advocate for companies pursuing or defending patent challenges. He has the courtroom experience and technical expertise to effectively litigate complex legal issues and has established a record of success in trials and appeals around the country. He also has significant experience representing patent owners and petitioners in inter partes review proceedings before the Patent Trial and Appeal Board and appeals to the Federal Circuit. Jon represents clients in a number of technology-driven industries, including manufacturing, software, mining, electronics, energy, and agriculture. He earned his J.D. and his B.S. in Civil Engineering at Brigham Young University in Utah.


Kanda Ishihara is director of IP at Veritas Technologies LLC, an enterprise data protection software company based in Santa Clara, California.  At Veritas, Kanda’s responsibilities include patent portfolio development, risk mitigation, client counseling, patent portfolio review and classification, management of outside counsel, education of engineering teams, and trademark portfolio review.  

Previously, she was a partner at Patent Law Works LLP, an IP boutique law firm specializing in patent, trademark, copyright, domain name procurement and strategic counseling.  There, her practice focused on patent prosecution, client counseling and patent management, including all stages of the patent prosecution process, as well as management of patent portfolios and performing due diligence for patent assets.  Her practice also involved patent licensing and infringement analysis.  In earlier positions, Kanda has worked as an associate at Fenwick & West as well as Morgan, Lewis & Bockius.

Kanda has also worked in-house in the legal departments of Ariba, Inc. and Genentech.  Her law practice covers a wide range of technology areas including computer software, web-based software applications and telecommunications.

As co-founder and past president and board member of Leading Women in Technology, a non-profit organization dedicated to unleashing the potential of professionals who advise technology businesses and executives, Kanda is also dedicated to helping empower female professionals in the tech industry through mentorship, skills development and networking.


Kate Gaudry is a partner at in the Washington, D.C., office of Kilpatrick Townsend & Stockton LLP.

Kate focuses her practice on data-driven and strategic patent prosecution. She has authored over sixty publications relating to patent prosecution and examination. Her work was also pivotal in the shutting down of the USPTO’s SAWS program, which secretly subjected select patent applications to increased examination scrutiny. Her research and data focus was recognized when she was one of five attorneys across all practice areas to be selected for LexMachina’s and Law360’s Data-Driven Lawyer award in its inaugural year of 2018 and further when she was named a D.C. Trailblazer by the National Law Journal in its inaugural list.

Most of her clients are in the software, computers, and quantitative-biology technical areas. She particularly enjoys patent-prosecution relating to artificial-intelligence and computational-biology technologies.

Kate holds a J.D. from Harvard Law, a Ph.D. in computational neurobiology from UCSD, and a B.S. in Physics from Fort Hays State University.


Laura J. DeMoor is Associate General Counsel, Intellectual Property, at Baxter Healthcare Corporation in Deerfield, IL.   Ms. DeMoor has been at Baxter for over 15 years, and concentrates her work in the pharmaceutical and chemical areas.  She oversees the IP legal aspects of the businesses that she supports, which includes managing global IP litigation, including Hatch-Waxman litigation, and various other quasi-litigation activities such as IPRs and oppositions. Ms. DeMoor is also involved with prosecuting patents, conducting freedom to operate analyses, and drafting and negotiating IP-related agreements.  She was a partner at Banner & Witcoff Ltd. prior to joining Baxter.  Ms. DeMoor obtained her JD from the University of Chicago and has an undergraduate degree in chemical engineering from the Ohio State University.


Laura graduated from Cook College, Rutgers University with a B.S. in Biochemistry in 1988.  She then conducted research on phospholipid metabolism under a grant from the American Arthritis Foundation at the University of Medicine and Dentistry, Piscataway, NJ.  After that, she worked as a litigation paralegal at Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York, NY on biotech, chemical and pharmaceutical patent cases, including Amgen, Inc. and Ortho Pharmaceutical Corp. v. Chugai Pharmaceutical Co., Ltd. and Genetics Institute, Inc.  After graduating from the University of New Hampshire School of Law in 1994, Laura first worked as an associate at Oliff & Berridge, Alexandria, VA, doing biotech and chemical patent prosecution, client counseling, licensing and litigation where she represented the National Institutes of Health, various universities and small and large companies.  She then represented small and large biotech and pharmaceutical companies doing biotech, chemical and pharmaceutical patent prosecution, client counseling, licensing and litigation in Washington, DC in the law firms of McDermott, Will & Emery; Long Aldridge & Norman; Piper Marbury Rudnick & Wolfe; and Patton Boggs, where she made partner in 2002.  Since 2003, Laura has been a member of Johnson & Johnson's law department, where she currently leads IP strategy for a number of Johnson & Johnson’s Consumer and Pharmaceutical business units.


Michael Sochor is the Director of Intellectual Property at Forescout Technologies in San Jose, California. He has responsibility for all aspects of intellectual property including managing the patent portfolio, managing the trademark portfolio, ligation, open source software, and domain names.

Prior to joining Forescout, Mr. Sochor worked at two Silicon Valley boutique patent prosecution firms and has more than a decade of patent prosecution experience. There, he focused on patent prosecution in a variety of areas including software patents, hardware patents, and semiconductor fabrication patents. He has counseled companies ranging in size from startups to Fortune 100 companies. He has extensive experience as an information technology consultant, a programmer, and was a co-founder of a company making accessories for a popular video gaming console.

Mr. Sochor received his J.D. from the DePaul University College of Law and graduated early from University of Illinois at Chicago with a bachelor’s degree in Computer Engineering. He is a member of the California Bar, Illinois Bar, and is registered to practice before the U.S. Patent & Trademark Office.


Mr. Kacedon is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, where his practice focuses on patent and technology licensing and patent litigation.  Mr. Kacedon assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. Over the course of his career, he has drafted hundreds of patent, know-how, and software license agreements as well as collaboration and joint development agreements in many industries, including pharmaceutical, medical device, and consumer electronics.  He has also assisted several leading technology companies in negotiating and drafting licenses for wireless technologies as well as navigating related standards-setting issues. In addition, Mr. Kacedon has broad experience in all aspects of patent litigation.

A frequent presenter at workshops and conferences, Mr. Kacedon has lectured on drafting patent and know-how licenses for the Patent Resources Group, the Licensing Executives Society, as well as other organizations and is currently an Adjunct Professor at George Washington University Law School.  Mr. Kacedon is also co-author of a leading treatise, “Drafting Patent License Agreements.” He has been recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, and as a Next Generation Lawyer for patent licensing. He is listed in Intellectual Asset Management (IAM) magazine as one of 250 of the world's leading patent and technology licensing practitioners.


Mr. Klocinski is Senior Managing Counsel and Senior Intellectual Property Counsel at MasterCard Worldwide, a global technology company and payments industry leader. As an intellectual property professional with more than 25 years of experience cutting across the private and public sectors, Mr. Klocinski has successfully worked with a broad range of technologies including computer software, electronics, advanced business processes, telecommunications, semiconductors and acoustics. Mr. Klocinski's specialties include intellectual property strategy (with an emphasis on patent portfolio building and management), intellectual property risk mitigation and dispute resolution and treatment of intellectual property in commercial agreements. Prior to joining MasterCard in March 2012, Mr. Klocinski was a Vice-President and Assistant General Counsel at CA, Inc. for six years. As Assistant General Counsel, he designed and implemented the company's patent program, directed the preparation and prosecution of patent applications, managed intellectual property risk mitigation, supported IP issues in mergers and acquisitions and litigation, managed trademark clearance, filing, prosecution and dispute resolution and managed CA’s copyright program. For three years, starting in 2001, Mr. Klocinski was Assistant General Counsel at Capital One Financial. His responsibilities included, managing invention intake, preparing and prosecuting of patent applications, designing and implementing patent strategy, managing patent risk mitigation, and consulting on patent issues in mergers and acquisitions. In addition to his corporate experience, Mr. Klocinski has also practiced with the Washington D.C. offices of Baker Botts, Hunton & Williams and Finnegan, Henderson, Farrabow, Garret & Duner. Mr. Klocinski's private practice experience focused on patent prosecution, patent portfolio management, patent litigation and risk mitigation and general intellectual property client counseling. Prior to and while enrolled in Law School at Georgetown University Law Center, Mr. Klocinski worked as an Examiner at the U.S. Patent and Trademark Office where he researched and prepared official actions and appeal briefs for United States patent applications and PCT applications related to image analysis. Mr. Klocinski holds a J.D. from Georgetown Law School and a B.S. in Electrical Engineering from Ohio State University.


Mr. Moore is the Vice President, Products and IP at Pure Storage in Mountain View. He has responsibility for product counseling, product transactional support, trade compliance, patents and intellectual property strategy, open-source software, and other matters. Mr. Moore is a seasoned attorney with more than a decade of software and hardware counseling and patent and IP experience, which follows his technical experience in digital logic design and software engineering. 

Pure Storage has been recognized twice by The Recorder for In House Legal Department of the Year in 2016 and 2017 for IP Strategy, and also recognized for Litigation (2016) and for Data Security (2017), which fall into Mr. Moore’s area of responsibility. In 2018 Pure Storage was named by the Association of Corporate Counsel as Value Champion Award Winner.

Before joining Pure Storage, Mr. Moore was the Vice President, Intellectual Property and Deputy General Counsel, of Rambus. He has also worked in-house at Symantec, and he started his attorney career as an associate at the law firm of Morgan, Lewis and Bockius involved in patent prosecution and trade secret litigation. Prior to this Mr. Moore spent almost a decade in the semiconductor industry as an engineer and patent agent.

Mr. Moore holds a JD and MBA from Santa Clara University, and BSEE (B.Eng) from the University of Limerick, Ireland.  He speaks at PLI, ACC, and other events and has published in Law360, ACC Docket, Corporate Counsel, Intellectual Asset Management, and other legal journals.  He holds 10 US issued patents from his engineering work, and numerous technology publications in electronics trade journals. 


Mr. Shinichi UEDA is a junior partner at GOTOH & PARTNERS.  He is one of the most experienced IP practitioners in the field of electrical technology, with a particular focus in software and commutation technology, at his firm.  He counsels clients regarding IP matters, ranging from R&D strategy, prosecution and litigation matters relating to patents, design, trademark and technology related unfair competition.

Before joining practice, he had an over ten years’ experience as a modem software engineer for mobile phones at a leading Japanese electrical company. Such experience aids him in communicating with engineers and inventors involved in R&D activities.

He also plays important roles in the committee dealing with international activities at the Japanese Patent Attorney Association, and belongs to a study group of international policy, with a focus on the Patent Cooperation Treaty and the Patent Law Treaty.

 

Admission:                Japan Patent Attorneys Association (2012)

                                    Qualified as a Litigating Patent Attorney (2017)

Profile:                       Waseda University (M.S., Electrical Engineering, 2002)

Practice Area:           Electrical Engineering

Memberships:           Japan Patent Attorneys Association (JPAA)

                                    AIPPI (Association Internationale pour la Protection de la Propriete Intellectuelle)


Nancy Song is a Chinese patent attorney who has passed U.S. patent bar in 2018. She holds her degree in EE from Tsinghua University, and gained her LL.M. from Santa Clara University as a Silicon Valley Law Fellow and CALI award winner. She specializes in computer databases, medical instruments, and secured identification and authentication instruments. Her practice encompasses patent drafting, prosecution, invalidation, portfolio analysis, and commercial advice in these areas.

She works in Chinese and English, and is proficient in reading Japanese literature, serving domestic and global clients in patent prosecution for over a decade. She started her patent career in a global leader of consumer IC design. She is trusted in handling transferred-in cases, rectifying defects in prior prosecution and overturning unfavorable results for the clients. Clients praise for seamless communication with her, especially for being responsive, providing helpful advice with few delay, which all contributes to “the perfect cooperation partner in China for patent prosecution” according to IAM Patent 1000. She has handled more than 1000 Office Actions and prepared hundreds of new applications. 


Naren is the founder of Law Firm of Naren Thappeta, based out of Bangalore, India.  The firm specializes in providing competent patent law related services for clients in the high technology arena. The service offerings include representation in front of India/US Patent Office and search services.  Naren worked in US Patents field between 1992-2000 before moving to Bangalore in 2001.  Their firm represents individual inventors to global corporations.  Due to his multi-jurisdiction experience, he is able to bring the global best practices to his practice.


Neil DuChez is an intellectual property and technology attorney,  providing advice on complex technology and sourcing transactions and intellectual property issues in support of Goldman Sachs’s Consumer Finance and Transaction Banking businesses. 


Olivia is a trusted advisor on civil litigation matters, especially regarding intellectual property.  She has represented individuals and corporations across the country in complex technological matters.  She helps clients protect, enforce, and defend intellectual property rights, including patents, trade secrets, copyrights and trademarks.

An experienced trial lawyer, Olivia has litigated and tried significant cases before the U.S. District Court for the Northern District of Illinois and other federal courts around the country, and has also briefed and argued patent appeals before the Federal Circuit.

Before practicing law, Olivia spent five years as a patent examiner for the U.S. Patent and Trademark Office, gaining extensive experience regarding the use of procedures available before the USPTO.

Olivia devotes a substantial amount of her time to pro bono service.  In 2018, she received the Excellence in Pro Bono Service award, presented by The United States District Court for the Northern District of Illinois and The Chicago Chapter of the Federal Bar Association.  Her dedication began when she represented a Chicago high school student charged with first-degree felony murder in People v. Shannon, which received national attention after a videotape of the incident went viral.  Olivia remains dedicated to her pro bono clients and continues to fight for their cause through petitions and appeals.  She received the Sandra Day O’Connor Award for Professional Service in 2011 for that representation.


Professor David Hricik received his undergraduate degree magna cum laude and Phi Beta Kappa from the University of Arizona, where he majored in English.  He received his law degree with honors from Northwestern University School of Law.  He practiced with Baker Botts and small litigation boutiques from 1988 to 2002, litigating cases primarily involving patent infringement, legal malpractice, and general complex commercial matters. 

In 2002, he joined Mercer University School of Law, where he teaches legal ethics, patent law and litigation, federal civil procedure, and other courses.  In 2012-13, he served as law clerk to Chief Judge Randall R. Rader at the Federal Circuit.  He rejoined Mercer and also became Of Counsel to Taylor English Duma, LLP, where he continues to represent clients in patent and complex litigation.

He was elected to the American Law Institute in 2016.  He has authored the only treatise on ethical issues in patent litigation, and co-authored the only treatise on ethical issues in patent prosecution.  In addition to serving leadership positions on ethics committees with the AIPLA and ABA and serving as an expert witness, he has written dozens of articles and given well over 100 presentations on issues at the intersection of ethics and patents.  His articles and testimony have been adopted by both state and federal courts.


Rob is an accomplished, front-line IP litigator who approaches client service by working with the client to identify the problem in the business context. Then, using his diverse experience to bring a fresh perspective, he identifies key issues and develops creative and cost-effective strategies that align with the client’s business objectives to move its business forward.  Providing front end clarity to reduce and manage client risk, Rob has had nine patent and two arbitration trials, and led litigation teams in over sixty patent and other IP cases filed in more than twenty states.

Rob also translates his broad litigation experience to help clients with IP due diligence, FTO, procurement, and transactions.  He has obtained more than two hundred U.S. patents, and advised on dozens of IP deals and various technologies.

IAM Patent 1000, Managing IP, Chambers, and Superlawyers have recognized Rob for patent litigation skills. 

Beyond client work, Rob is President-Elect of the New York Intellectual Property Law Association, a Board Member since 2015, and active on its Amicus and Legislation committees.  Since 2012 he has served on the Intellectual Property Owners Association Amicus and Trade Secret Committees. Rob has helped author over a dozen amicus briefs, and regularly speaks on IP issues, from ethics to biosimilars, at association meetings. 

Rob holds JD and BSEE degrees from the University of Michigan.

Before law school, Rob fried circuits in an electronics design lab, successfully assembled thousands of cars in an auto factory, and washed dishes at a Utah ski resort, all of which encouraged him to meld his passion for technology with advocacy to become an IP lawyer.


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.


Scott Oliver handles patent, copyright, trademark, and trade secret matters, blending creative legal strategies with comprehensive, digestible explanations of complex technology. He designs and implements individualized legal strategies depending on each client’s unique business objectives.

An experienced and highly technical litigator, Scott has handled more than 150 matters and a dozen trials before both the International Trade Commission (ITC) and juries. He has more than 25 years of experience defending and advising companies across an array of industries, including wireless, software, semiconductor, and digital distribution.

In addition to his litigation experience, Scott advises clients on strategically growing and managing their intellectual property portfolios, guiding young companies through patent strategy, and consulting handset manufacturers and patent pools on the licensing of 802.11, 4G, 3G and LTE patents.


Stephen MacKenzie is Chief Counsel at Koch Companies Public Sector, LLC, which is the Government, Legal, and Public Affairs division of Koch Industries.  Koch Industries, based in Wichita, Kansas, is one of the United States’ largest privately held companies, with holdings in the chemical processing, paper manufacturing, glass manufacturing, industrial engineering, electrical component manufacturing, and software engineering sectors.  Steve acts as lead business and commercial counsel for several actuation, software, industrial imaging, and data analytics companies within the Koch Engineered Solutions portfolio.  Before transitioning to this role, Steve managed the global patent and IP litigation portfolios at several Koch companies.  Steve is also Chief Patent counsel for Koch Disruptive Technologies, the emerging technology investment arm of Koch Industries.  Prior to joining Koch Industries in 2009, Steve was an IP litigation attorney at Womble, Carlyle, Sandridge and Rice (now Womble Bond Dickinson) in Wilmington, Delaware.


Tracy-Gene G. Durkin is the practice leader of the Mechanical and Design Practice Group and a member of the Trademark & Brand Protection Practice at Sterne Kessler.  Tracy has a well-earned reputation for excellence in design patent law. In 2018, Financial Times named her as one of the "Top Ten Legal Innovators in North America,” noting her as “a leading authority on design patents.” In 2017, Intellectual Asset Management noted in their annual "IAM 1000" ranking that Tracy "needs no introduction as the country's top design expert." In 2019, WTR editors heralded Tracy for being “as innovative as the products that she protects.” Since 2013, Tracy has been listed annually among Managing Intellectual Property's "IP Stars" for her counseling practice, and in 2013 and 2017, the publication  named her as one of the "Top 250 Women in IP." In 2016, Profiles in Diversity Journal listed her among "Women Worth Watching." A trailblazer, Tracy achieved a Martindale AV Preeminent Peer Rating of 5.0/5.0 in 2011, recognition fewer than 5% of women lawyers have earned, and was named as one of the “Top Women Lawyers in the Northeast.” Since 2017, she has been named among Chambers & Partners' "recognized practitioners" in the "IP Patent Prosecution, District of Columbia category" and by Who's Who Legal for excellence in patents.  In 2018, The Legal 500 recognized Tracy as a "Recommended Lawyer" in the U.S. for assisting clients “with the development and implementation of [] global design patent strategy, including the coordination of patent filings in over twenty countries worldwide." A leader in the legal community as well as the law, Tracy is currently serving a three-year term as a member of the USPTO Patent Public Advisory Committee (PPAC), which advises the director on the policies, goals, performance, budget, and user fees of patent operations at the USPTO. Tracy is a past president of the Women's Bar Association of the District of Columbia and the Women’s Bar Association Foundation, and is currently on the board of trustees the Legal Aid Society of the District of Columbia.


• Former multinational public company General Counsel. Former major US law firm partner.
• Three+ decades’ Risk Management, Corporate Governance, other Regulatory, Ethics & Compliance, Transactional, Litigation as well as IP leadership and experience.
• Comfortable with navigating complex regulatory environments in multiple jurisdictions. SOX and Dodd-Frank experience.
• Proven ability to establish strong working relationship with Corporate Boards.
• Track record of managing and building high-functioning, global legal teams.
• Multi-country qualifications. Silicon Valley, Asia and Europe work experience.
• Peer recognized as one of the world’s leading IP strategists.
• JD and B.Sc Engineering degrees. Stanford Business School SEP Alum. Harvard Business School Executive training programs. Lam EDGE Program. Former Naval Officer.


I am an intellectual property attorney with extensive experience in the private and public sectors. Prior to joining the USPTO, my practice included litigation of patent infringement and Section 337 actions in the federal courts and before the U.S. International Trade Commission, as well as patent and trademark prosecution, opinions, and client counseling in the biotechnology, pharmaceutical, and software areas. I am a frequent public speaker, and have authored legal publications on topics including licensing, patent validity, intellectual property litigation and administrative proceedings, encryption regulation and copyright law. I also teach advanced patent law and intellectual property courses at local universities as an adjunct professor.


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, registered to practice before the USPTO, and is admitted to the CAFC.


With 20 years of experience in pharmaceutical and agricultural matters, Alison Baldwin is uniquely equipped to advance your most complex intellectual property goals. Whether you Eat it, Drink it, Wear it, Smoke it or Drive it, Alison’s extensive background in biotechnology and plant science brings a vital perspective to your project.

An experienced litigator with dozens of pharmaceutical and biotechnology cases under her belt, Alison advocates for clients in all stages of trial across a range of venues. Her experience in federal district court, the International Trade Commission, the Patent Trial and Appeal Board — along with private arbitration proceedings — informs her strategic guidance for clients in every phase of their case.

Alison is also a seasoned patent prosecutor with an emphasis on technologies and inventions relating to biology, plants and microorganisms. From patent application drafts through appeals and post-grant proceedings, she has the experience to counsel your team in the most ambitious and intricate situations.

Clients benefit from Alison’s strategic thinking in every aspect of their IP projects, from clearance analysis for new product development to patent and trademark management, mergers and acquisitions, and communicating IP strategies to board members, senior management and in-house counsel.

Alison serves on the Board of Directors of the Patent Trial and Appeal Board Bar Association and is an instructor in IP trial advocacy at Chicago-Kent College of Law. A trailblazer at her previous firm, Alison was the first female partner to serve on the firm’s management board and the first female chair of that firm’s business development committee.


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.


Deputy Commissioner Bahr serves as an authority on patent laws, rules, and examining practice and procedure; and provides administrative oversight and direction for the activities of the Office of Petitions, Office of Patent Legal Administration, and the Office of the Manual of Patent Examining Procedure.  Further, Mr. Bahr establishes patent examination and documentation policy standards for the Commissioner for Patents.

Prior to his current position, Mr. Bahr served as the Senior Patent Counsel to the Deputy Commissioner for Patent Examination Policy, where he was involved in virtually every patents-related rule making since 1995, including the changes to implement the Leahy-Smith America Invents Act and the American Inventors Protection Act of 1999.  Mr. Bahr began his career at the USPTO in 1984 as a patent examiner, and became a legal advisor in the Office of Patent Legal Administration in 1994.

Mr. Bahr holds a Bachelor of Science degree from the University of Maryland, and a Juris Doctor from The George Washington University.