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Patent Law Institute 2022: Critical Issues & Best Practices


Speaker(s): Alison Baldwin, Brent K. Yamashita, Brian Hanlon, Briana Barron, Bridget Smith, Catherine J. Toppin, Chad M. Rink, Craig Opperman, D. Brian Kacedon, Darryl M. Woo, David Lane, David M. Simon, Diane Gabl Kratz, Douglas R. Nemec, Edward L. Tulin, John M. White, Jon R. Trembath, Juan C. Gonzalez, Laurence J. Bromberg, Matthew Sarboraria, Neer Gupta, Parashos T. Kalaitzis, Philip W. Marsh, Prof. David Hricik, Robert A. Clarke, Robert DeBerardine, Scott M. Alter, Seyed J. Sadr
Recorded on: Apr. 28, 2022
PLI Program #: 333781

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.


Brent Yamashita is a partner in DLA Piper’s Silicon Valley office and focuses on patent litigation, prosecution, and IPRs. Over the past 23 years, Brent has represented technology companies from around the globe, including Toshiba, Kioxia, Samsung, GSI, KUKA, and Supermicro. He has initiated dozens of IPR proceedings and has argued as lead counsel in numerous oral argument sessions before the Patent Trial and Appeal Board.


Brian is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, where his practice focuses on patent and technology licensing and patent litigation. In his transactional practice, Brian assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. He routinely negotiates and drafts complex license and collaboration agreements for both small and large pharmaceutical companies, many with total payments of hundreds of millions of dollars. Brian’s experience also includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements.

Over the course of his career, Brian has drafted hundreds of patent, know-how, and software license agreements as well as joint development, collaboration, and settlement agreements for many industries, including pharmaceutical, medical device, software, and consumer electronics. He has assisted several leading technology companies in negotiating and drafting licenses for wireless technologies, as well as navigated related standards-setting issues.

Brian also has extensive experience litigating agreement disputes. He has appeared as counsel in multiple litigations and arbitrations, including a trade secret misappropriation, for clients in industries ranging from pharmaceuticals to semiconductors. Brian has also been retained as an expert witness relating to the interpretation of license agreements.

A frequent presenter at legal and industry workshops and conferences, Brian has lectured on drafting patent and know-how licenses for IPO, PLI, Strafford, and the Licensing Executives Society (LES), as well as other organizations. He also serves as an adjunct professor teaching licensing at the George Washington University Law School. and is co-author of a leading treatise, “Drafting Patent License Agreements.” 


Brian E. Hanlon is an Assistant Commissioner for Patents at the United States Patent and Trademark Office (USPTO). Prior to accepting this position, Mr. Hanlon was the Director of the USPTO’s Office of Patent Legal Administration (OPLA).  He has also 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. 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.


Briana Barron is the Vice President, 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 Assistant General Counsel and Head of Intellectual Property at Relativity Space, an American aerospace manufacturing company that develops manufacturing technologies, launch vehicles, and rocket engines for commercial orbital launch services.

Before joining Relativity this year, she was a partner at Lowenstein & Weatherwax, where she focused her practice on post-grant proceedings before the USPTO and appeals to the Federal Circuit and regional circuit courts of appeal. And before that, she was a partner at Knobbe Martens and co-chair of the firm’s Patent Office Trials Practice Group. Over the course of her career, she has successfully represented both petitioners and patent owners in over 150 AIA trials.

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 earned her JD, cum laude, from Arizona State University and her Master’s degree and Bachelor’s degree, magna cum laude, in Chemical Engineering from Case Western Reserve University.

She currently serves as chair of the American Bar Association Section of Intellectual Property Law’s Patent System Planning Committee and co-chair of the Orange County chapter of ChIPs, an international non-profit organization dedicated to advancing women in intellectual property.


Catherine J. Toppin, Esq. recently joined Lockheed Martin as Assistant General Counsel, Intellectual Property. She is based in Bowie, MD and works remotely from her home office. Her current role includes comprehensive intellectual property counseling with a focus on IP licensing and government contracts. Prior to joining Lockheed, Catherine was a Partner with the Chicago-based IP boutique, Fitch Even Tabin & Flannery LLP. Previously, Catherine spent over seven years with General Electric Company as senior patent counsel and manager with the Global Patent Operation of GE's corporate legal department. Catherine graduated from Princeton's School of Engineering and Applied Science with a BSE in electrical engineering. She earned her J.D. from the University of Maryland, Francis King Carey School of Law in Baltimore. Some of Catherine's notable recognitions include recipient of the National Bar Association’s Diversity in Technology Award, The Network Journal’s 40 under Forty Achievement Award, and the prestigious Award for Service to Princeton. Outside of work and her continued Princeton volunteerism, Catherine enjoys spending time with friends and family, especially her two-year old daughter Lenah.


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.


Craig Opperman is Vice President & Chief IP Officer of Lam Research Corporation one of the leading suppliers of semiconductor wafer fabrication equipment and related services.

He is responsible for all Intellectual Property (IP) matters at Lam - strategy, protection, evaluation, risk assessment/mitigation, transactions and disputes - and co-leads the Data Privacy team. His particular interest is how to create relevant, strong and high quality patent portfolios.

Craig has 30+ years’ experience working with semiconductor, materials science and computer businesses. He joined Lam after serving as General Counsel of publicly listed Naspers Limited, a $50+BN market cap internet and media company with operations in over 100 countries. Prior to that he was a partner at various major international law firms in Silicon Valley. He has published extensively and is regularly invited to speak on technology law and IP matters.

Craig grew up in South Africa and moved to Silicon Valley in 1991. He holds Law and Engineering degrees, is a Stanford Business School Executive Program Alum and has attended Harvard Business School Executive programs for Legal Counsel and law firm partners. He is admitted as an attorney in California, Washington DC and South Africa and as a US and South African patent attorney. Before qualifying as a lawyer, Craig worked as a mining engineer and served as an officer in the South African Navy.


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, represented interactive video company eko against Quibi in a trade secrets and patent case, and for 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 Lane is Associate Patent Counsel at Johnson & Johnson. David has over 18 years of experience providing patent counseling to Johnson & Johnson’s MedTech sector and currently leads the patent team that supports Johnson & Johnson’s Ethicon Global Surgery Franchise. He previously supported Johnson & Johnson’s DePuy Synthes Orthopedics Franchise. Prior to joining Johnson & Johnson, David was a Patent Examiner in the United States Patent & Trademark Office and an associate attorney at Foley Hoag and at Lahive & Cockfield, both in Boston MA.


Diane Gabl Kratz is a three-time IAM Strategy 300 World's Leading IP Strategist for maximizing IP value, a 2021 Powerful Women in IP honoree by World IP Forum, and a USPTO-registered patent attorney. She leads a global team of 16 at Dolby, developing and executing U.S. and international patent filing strategies and heading Dolby’s worldwide trademark portfolio.

Previously, Diane served as Senior IP Counsel at a Fortune 500 tech company in Silicon Valley. She 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, Oregon Patent Law Association, World Trademark Review, and IP Counsel Café. 

Acknowledged for her expertise, Diane has been quoted in numerous legal publications including Law360, Managing IP, and World Intellectual Property Review. She has been active in intellectual property-focused organizations such as the IP Gathering, Unified Patents, and the LOT Network. In addition, she serves as a Global Advisory Board Member for the Women In Law Empowerment Forum (WILEF). 

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


Ed Tulin concentrates his practice on complex litigation and arbitration involving patents, patent licensing disputes, copyrights and trade secrets in the fields of biochemical processes, pharmaceutical products, medical devices, electrical engineering, semiconductors, computer engineering and software, mechanical engineering, environmental engineering and business methods. Mr. Tulin also has extensive experience with IP licensing and diligence matters, including patent portfolio analyses, freedom-to-operate opinions and contract drafting. In addition, Mr. Tulin is admitted to practice before the U.S. Patent and Trademark Office, where he has been involved with reexamination, interference and inter partes review proceedings, including multiple PTAB trials.

Mr. Tulin also has an extensive pro bono practice, which has included representation of clients seeking asylum and clients seeking Social Security disability benefits, as well as amicus work for the Innocence Project and patent prosecution.

Mr. Tulin served as a law clerk for the Honorable Christopher J. Burke, U.S. District Court for the District of Delaware during the 2011-2012 term. He is a graduate of the University of Texas School of Law and received his undergraduate degree from the University of Houston in Biochemical and Biophysical Sciences.


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.


Juan Gonzalez is Senior Vice President, Assistant General Counsel, Intellectual Property at Mastercard International in Purchase, New York. In this role, he works to formulate and execute an enhanced worldwide IP strategy geared to protecting the company’s rapidly evolving technologies. Mr. Gonzalez’s responsibilities include: client counseling and education; oversight of patent prosecution to develop a strategic IP portfolio; management of patent litigation; negotiation of technology license agreements; and conducting IP review of corporate acquisitions and related transactions. Mr. Gonzalez also manages an international team of IP lawyers and oversees the company’s expanding portfolio of blockchain-related patent filings.

Mr. Gonzalez joined Mastercard in 2007 where he has taken on increasing areas of responsibility. He previously was a patent litigation associate at two large New York City law firms. He worked as an engineer for a public utility for 11 years prior to starting his legal career.

Mr. Gonzalez holds a bachelor’s degree in Electrical Engineering from Manhattan College, an MBA from the NYU Stern School of Business, and a Juris Doctor degree from St. John’s University.


Matt Sarboraria is Senior Vice President, Legal & Associate General Counsel at Oracle Corporation, where he leads the company’s Patent, Trademark and Copyright group. His team is responsible for developing and implementing strategies and policies for identifying, protecting, and managing the company’s intellectual property. His practice includes patent prosecution and portfolio management, IP licensing, litigation support, M&A support, and copyright, trademark and brand management. He is actively involved in IP policy initiatives on Oracle’s behalf. He serves as a board member or advisor to several IP-focused industry associations.

Prior to his current position, Mr. Sarboraria served as Managing Patent Counsel in Oracle’s Litigation group, where his practice focused on IP disputes and related licensing matters.

Before joining Oracle in 2006, Mr. Sarboraria was in private practice at Weil, Gotshal & Manges LLP, where he focused on IP litigation. He has litigated cases throughout the country involving a wide variety of technologies, including database, middleware and application software, semiconductors, computer networking, and telecommunications equipment. He earned his undergraduate degree from U.C. Berkeley and his J.D. from U.C. Berkeley’s Boalt Hall School of Law. 


Parashos T. Kalaitzis is a full spectrum Intellectual Property and Technology Transactions/Engagements attorney fully versed in technology based agreements, including joint-development agreement, SaaS engagements, software (source code) licensing, merger and acquisition due diligence (managing IP integration activity for acquired entities), technology transactions implicating the rights associated with data (experimental and otherwise), software development agreements, patent licensing, patent preparation and prosecution, inventor counseling, copyright and trademark matters, open source issues, product clearance, and preparing and negotiating all aspects, including general legal issues, of complex technical engagements and technology agreements. He also has exposure and training related to recognizing privacy law and related issues for engagements that relate to the reception and processing of protected data.


Professor David Hricik received his undergraduate degree magna cum laude and Phi Beta Kappa from the University of Arizona, and his law degree with Honors from Northwestern University School of Law. He practiced with Baker Botts and 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 has taught ethics, torts, remedies, patent law and litigation, civil procedure, and other courses. In 2012-13, he served as law clerk to then-Chief Judge Randall R. Rader at the United States Court of Appeals for the Federal Circuit. He then rejoined Mercer and also became Of Counsel with Taylor English, where represented clients in patent, Lanham Act, legal malpractice, and complex litigation from 2013 to 2019.

He was elected as a member of the American Law Institute in 2016, as a Fellow of the American Intellectual Property Law Association, and as a Fellow of the American Bar Association, and has served in leadership roles on ethics committees of the AIPLA and ABA. He has authored the only treatise on ethical issues in patent litigation, co-authored the only treatise on ethical issues in patent prosecution, and provided hundreds of presentations on ethics and intellectual property law. His articles and testimony have been adopted by both state and federal courts. 

He is now a solo practitioner, representing practitioners and others before the Office of Enrollment and Discipline and in other disciplinary matters, consulting with firms about ethical issues, and serving as an expert witness. In 2021, he became a registered mediator.


Rob Clarke is currently the Director of the Office of Patent Legal Administration (OPLA) at the United States Patent and Trademark Office. Immediately prior to his current role he served as the Editor of the Manual of Patent Examining Procedure for 10 years. Mr. Clarke has managed the development and publication of multiple revisions to the Manual of Patent Examining Procedure. In addition, Mr. Clarke created, deployed and currently administers the COVID-19 Prioritized Examination Pilot Program. Mr. Clarke is currently involved in patent examiner guidance and training development. Mr. Clarke also is responsible for developing rule making directed to patent examination. Mr. Clarke serves as an agency witness in litigation related to patent examination and is frequently responsible for developing and signing final agency decisions on petition. 

Rob Clarke started at the USPTO as a patent examiner in 1990 in former Group 3300, now Technology Center 3700. Mr. Clarke has also served as an Administrative Patent Judge, a Legal Advisor and Deputy Director of OPLA, and as the Chief of Staff at the USPTO. Mr. Clarke received a Bachelor’s Degree in Molecular Genetics from the University of Rochester in 1989, a JD with honors from the Catholic University of America in 1995, and is a member of the Virginia Bar. Over his 32 years at the USPTO he has helped to implement eighteen-month publication, continued examination practice, patent term adjustment, the image file wrapper, electronic filing and the administrative trial provisions.


Robert DeBerardine is Worldwide Vice President, Chief Intellectual Property Counsel of Johnson & Johnson where he manages a group of about 270 IP Professionals, of whom about 125 are patent and trademark attorneys.

Before joining Johnson & Johnson, Robert was Chief Intellectual Property Counsel for two large multinational companies with broad healthcare business. Prior to working in-house, Robert practiced at two international law firms where he handled transactional intellectual property matters and intellectual property litigation.

Robert has a BS in Chemical Engineering from Lafayette College and a JD from Cornell University.”


Neer Gupta is an intellectual property attorney with over 20 years of experience in the areas of patent licensing, litigation, and strategy.  Neer joined Verizon Communications in 2008 and is currently Associate General Counsel, Intellectual Property.  In this role, Neer is responsible for a variety of transactional matters involving the company’s intellectual property, and is the President of the company’s patent licensing entity.  His areas of responsibility include intellectual property issues as they relate to mergers and acquisitions, licensing, patent purchases and sales, customer and vendor contracts, participation in standards bodies, open source software, and other strategic activities of Verizon and its affiliates.

Prior to joining Verizon, Neer was Executive Counsel for The Walt Disney Company in Burbank, CA, where he was responsible for establishing a comprehensive patent strategy, as well as handling patent litigation and patent licensing matters.  Prior to Disney, Neer provided intellectual property advisory services to Fortune 500 companies while at ThinkFire Services, and was a litigation associate at Pennie & Edmonds and Clifford Chance Rogers & Wells, both in New York City.

Neer received his Bachelor of Engineering degree, magna cum laude, in Electrical Engineering and Math from Vanderbilt University, and his law degree from New York University.


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.


Experience

  • Western Digital

    Associate General Counsel & Director, Intellectual Property

    Sep 2016 – Present

  • HGST, a Western Digital company

    Global Director, Legal (IP)

    Sep 2013 – Sep 2016

  • STEC, Inc. (now part of Western Digital Corp.)

    Vice President, IP

    Feb 2004 – Oct 2013

  • Carr & Ferrell LLP

    IP Attorney

    2003 – 2004

  • Knobbe Martens Olson & Bear LLP

    IP Attorney

    2000 – 2003

     

    Education

  • University of British Columbia

    Juris Doctor (J.D.), Law

    1999

  • Simon Fraser University

    Bachelor’s Degree, Computer Science - Faculty of Applied Science

    Focus on:

    • Artificial intelligence (AI) / Machine learning
    • Data analytics (on a macro level or as big data analytics)
    • Programming languages
    • Cryptography (as precursor to cryptocurrency, cyber security and blockchain)
    • Operating systems
    • Open Source Software (OSS)


Mr. Bromberg joined Morgan Stanley in 2000. He has global responsibility for all intellectual property matters. He is also responsible for legal coverage of market data, strategic investments involving IP, a broad range of transactional matters, and open source software legal coverage.

Prior to Morgan Stanley, Mr. Bromberg was a patent litigator at Morgan & Finnegan (1991-2000) and an electronics designer at Honeywell (1986-1989).

Mr. Bromberg has a J.D. from Columbia Law School and a B.S.E.E. from Tufts University. He is a member of the New York and Massachusetts bars and a registered patent attorney.


Phil Marsh is a Partner in Arnold & Porter’s Intellectual Property group.  His practice focuses on patent, trade secret, and complex commercial litigation in federal district courts and before the US International Trade Commission (ITC), and related appellate and administrative proceedings, as well as advising clients on strategic patent portfolio development, and patent acquisition.

Mr. Marsh has litigated cases across a wide range of technologies, including medical devices, computer hardware and software, consumer electronics, e-commerce, secure wireless transactions, semiconductor devices and fabrication, wireless telecommunications, optical storage media, solid-state memory devices, fiber optics, lasers, optical amplifiers, solar power systems, and cryptography.  His litigation experience includes direct and cross examination of expert and technical witnesses before the ITC and in jury trials.  Mr. Marsh has recently had key roles on trial teams in the ITC and the U.S. District Court for the District of Delaware. 

In addition to his litigation experience, Mr. Marsh also has significant experience representing clients before the US Patent and Trademark Office in all stages, including appeals and post-grant proceedings, including inter partes proceedings.

Mr. Marsh currently serves as a member of the Intellectual Property Committee of the Institute of Electrical and Electronics Engineers (IEEE). 

Prior to obtaining his JD from The George Washington University Law School, Mr. Marsh received an honors BS in electrical engineering from the University of Utah and worked as a patent examiner at the US Patent and Trademark Office.


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.


As an Intellectual Property litigation attorney with more than 20 years’ experience, Jon is adept in handling complex legal issues and challenging logistics.

He concentrates on patent litigation, devising winning strategies that give his clients competitive advantages in the marketplace. He has established a record of success at both the trial stage and with appeals before the U.S. Court of Appeals for the Federal Circuit, prevailing in all but one of the Federal Circuit appeals he controlled.

Jon works on behalf of clients in a variety of industries, including agribusiness, energy, telecommunications, software, electronics, manufacturing, and mining. Clients appreciate Jon’s strong analytical skills and his ability to translate elaborate, intricate concepts and technologies into a clear and compelling narrative. Jon also advises businesses on portfolio management and monetization.

Prior to joining the firm, Jon was a partner in the Colorado branch of a noted U.S. patent litigation firm. Earlier in his legal career, he was an associate at a global IP specialty firm and served as a law clerk for the Honorable Randall R. Rader at the Court of Appeals for the Federal Circuit.


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.