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Post-Grant USPTO Proceedings 2012 - The New Patent Litigation


Speaker(s): Barbara L. Mullin, Brian Hanlon, Eugene T. Perez, Gerald M. Murphy, Jr., Hon. Garrett E. Brown , Hon. Gerald Bruce Lee, Hon. Theodore R. Essex, Irem Yucel, Robert A. Clarke, Robert J. Kenney, Scott A. McKeown, Stephen G. Kunin
Recorded on: Feb. 3, 2012
PLI Program #: 34462

Barbara Mullin regularly tries cases in federal courts and before arbitration panels and has argued before the Court of Appeals for the Federal Circuit. Her cases have involved diverse technological fields such as recombinant antibodies, medical devices and methods, pharmaceuticals and semiconductor wafer processing.

In addition to representing clients in litigation and arbitration proceedings, Ms. Mullin also counsels innovator pharmaceutical and medical device clients on strategic patenting and licensing issues and freedom to operate, as well as Orange Book Listings, Paragraph IV certifications and other ANDA-related matters.

Ms. Mullin’s recent and representative litigation experience includes—

  • serving as one of the principal attorneys representing Centocor Ortho Biotech and New York University in a patent trial charging Abbott Laboratories’ Humira® product with infringement. The jury returned a verdict that Ms. Mullin’s clients’ patent was willfully infringed and not invalid, and awarded damages of $1.67 billion. The verdict was reported by Bloomberg to be the largest jury verdict in U.S. history in a patent case.
  • successfully defending The Ohio Art Company in patent infringement suit by Larami Limited alleging infringement of two SuperSoaker® patents
  • serving as one of the principal attorneys in a Northern District of California jury trial, successfully representing a large computer-chip manufacturing equipment company asserting its process and apparatus patents. The case settled after trial, with Ms. Mullin’s client receiving more than $70 million in past damages and ongoing royalties.
  • obtaining a preliminary injunction followed by a favorable decision at trial and an award of attorneys’ fees on behalf of the plaintiff in LifeScan Inc. v. Polymer Technology International
  • serving as one of the principal attorneys in obtaining favorable arbitration ruling on the merits and an award of attorneys’ fees and costs on behalf of the plaintiff in LifeScan v. Diagnostic Solutions, Inc.
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Ms. Mullin is a frequent speaker on topics relating to patent litigation. Her recent speaking engagements include—
  • "Formulating Patent Litigation Strategies to Prevail in the Face of Evolving Case Law, " American Conference Institute Advanced Forum on Biotech Patents
  • "A View from the Bench: Concurrent PTO Proceedings," Practising Law Institute Reissue and Reexamination Strategies and Tactics with Concurrent Litigation
  • "Ethical Considerations of Reissue, Ex Parte and Inter Partes Reexamination Proceedings," Practising Law Institute Reissue and Reexamination Strategies and Tactics with Concurrent Litigation

Ms. Mullin received her J.D. cum laude in 1991 from Villanova University School of Law and served on Law Review. She received her B.S. cum laude from the University of Pennsylvania in 1985.

For the past few years, Ms. Mullin has been recognized as among the top 5 percent of attorneys in Pennsylvania based on a survey of her peers and a blue ribbon panel review. She was also recently honored by being selected and admitted as a fellow in the Litigation Counsel of America, a trial honorary society for litigation and trial counsel across all segments of the bar. Ms. Mullin has also been recognized by The Best Lawyers in America as a leading practitioner in the area of patent litigation.
Ms. Mullin supports several pro bono activities, including the Support Center for Child Advocates and the Equal Access to Justice Campaign of the Philadelphia Bar Foundation.


EUGENE PEREZ is a partner in the Biotechnological and Chemical group at Birch, Stewart, Kolasch & Birch, LLP located in the Washington, D.C. area. Eugene Perez has practiced in the intellectual property field for over 10 years, specializing in chemical, pharmaceutical and biotechnology patents. His experience includes prosecuting patent applications, including corresponding with clients and preparing replies to all USPTO correspondence such as Office Actions and Restriction Requirements, conducting legal research and preparing freedom-to-operate, patentability, infringement, and validity opinion letters. Mr. Perez has also prepared, filed and prosecuted a variety of ex parte and inter partes reexaminations and reissue applications, and handled numerous appeals, including Oral Hearings before the Federal Circuit and U.S. Board of Patent Appeals and Interferences. Mr. Perez is also a member of the firm's Post-Grant Proceedings Committee.


Gerald Bruce Lee is currently serving as judge on the United States District Court in the Eastern District of Virginia.

Lee was educated at American University where he earned a B.A. in 1973 and a J.D. in 1976 from American University's Washington College of Law. Lee worked in private practice in Alexandria, Virginia until 1992, when he became a Circuit court judge on the 19th Judicial Circuit of Virginia, Fairfax Circuit Court. Lee was nominated to his present position as U.S. District Judge by President Bill Clinton on May 22, 1998, and received his commission on October 1, 1998.

Prior to his appointment to the United States District Court, Judge Lee was a trial judge with the 19th Judicial Circuit of Virginia (Fairfax) for six and a half years. As a Circuit Court Judge in Virginia's largest and busiest trial court, he tried a wide variety of cases, both jury and non-jury. His trial docket included cases involving commercial law, products liability, personal injury, medical malpractice, contracts, and criminal law.

During his tenure on the Fairfax Bench, Judge Lee was an active member of the Virginia Judges Judicial Conference. He served on two key committees of the conference, the Circuit Court Judicial Education Committee, and the Circuit Court Judges Bench Book Committee. He served as Chairman of the Judicial Educational Committee, and was responsible for ongoing training and continuing education programs for 150 state trial judges. Judge Lee served as a member of the Bench Book Committee, where he was responsible for editing and updating the Virginia Judges' courtroom reference text, the Virginia Circuit Court Judges Benchbook.

Judge Lee has been a member of the legal community for twenty-five years. Subsequent to his appointment to the Fairfax Circuit Court in 1992, he became known throughout the legal community for his handling of complex civil cases, his efforts to improve the court's use of technology, and his commitment to community service.

In April 1998, Virginia's U.S. senators Chuck Robb and John Warner recommended Judge Lee for appointment to the United States District Court for the Eastern District of Virginia, to fill the seat vacated when Judge James C. Cacheris took senior status. President Clinton made the appointment on May 22, 1998, which was confirmed by the Senate in unanimous vote on September 28, 1998.


Remy Yucel has been with United States Patent and Trademark Office since 1996 and was named Group Director in April 2008.  Before becoming director of the Central Reexamination Unit, she was a Group Director in Technology Center 1600 whose subject matter area comprises biotechnology, biochemistry, organic chemistry and pharmaceutical patent applications.  Ms. Yucel is the recipient of several Department of Commerce Awards including the Bronze Medal and the Performance Excellence Award. Prior to becoming a Director, Ms. Yucel was an examiner, primary examiner and supervisory patent examiner in the biotechnological arts; with particular emphasis on gene regulation, gene therapy and transgenic organisms. 

Ms. Yucel holds a B.S degree in biology and a B.A. in French Literature from Duke University, a Master's degree in Plant Science from the University of Maryland and a Ph.D. degree in molecular genetics/plant pathology from the University of California. In May 2006, Ms. Yucel graduated from The Catholic University's Columbus School of Law.

During the 110th Congress, Ms. Yucel served as intellectual property counsel to Senator Orrin G. Hatch of Utah.  She provided both scientific and technical advice on various legislative initiatives involving intellectual property. Much of her time was spent on the Patent Reform Act of 2007 (S. 1145) of which Senator Hatch was lead Republican sponsor. Ms. Yucel also contributed to the Senate's version of follow-on biologics legislation co-sponsored by Senators Hatch, Kennedy, Clinton and Enzi as well as to the Orphan Works bill passed by the Senate. 


Chief Judge Brown joins the JAMS panel after a distinguished judicial and legal career. Most recently, he served twenty-six years as United States District Judge for the District of New Jersey, the last six as Chief Judge, where he led the court-wide effort to provide prompt, efficient justice to civil litigants, and to implement new local patent rules. During this period, he was designated by the Judicial Panel on Multi-District Litigation to manage countless MDL cases, which resulted in numerous settlements. Prior to appointment to the federal judiciary, he served as Chief Counsel and Acting Administrator of the U.S. Maritime Administration and as General Counsel of the U.S. Government Printing Office. He was previously in private practice, where he concentrated on federal commercial litigation, including antitrust, employment, construction, environmental, banking, intellectual property, and securities matters. 

Judge Brown is highly regarded by counsel for his exceptional ability to expeditiously handle and resolve complex litigation. He is perceived by the parties as being extremely well prepared, knowledgeable, and experienced.

ADR Experience and Qualifications

  • During his 26 years on the federal bench, Chief Judge Brown has presided over and resolved by settlement, trial, or judgment some 9,000 cases involving a wide range of issues.

Representative Matters

During his service as Chief Judge, in addition to leading a large metropolitan court of 38 judicial officers, Judge Brown maintained a full civil caseload, assisting other judges in complex cases, trying about 11 cases a year and settling many, many more. He was also designated by the Judicial Panel on Multi-District Litigation to manage numerous MDL cases during this period, which resulted in numerous settlements. Since many of the most challenging matters Judge Brown has handled are subject to confidentiality orders, the names and details are not set forth.

A small sampling of his representative matters includes:

  • Class Actions
    • ERISA: Presided over a class action dispute brought by participants in a Long Term Savings Plan for Management Employees for compensation for losses related to breach of ERISA-mandated duties in the operation and administration of the Plan and granted preliminary and final approval of the $29 million settlement
    • Securities Fraud
      • Presided over a trial in a securities fraud class action, which resulted in settlement prior to verdict at Judge Brown’s recommendation; settlement upheld on appeal to the Third Circuit
      • Presided over and approved the final settlement of the class action alleging violations of the Securities Act against former officers and directors of a now defunct generic drug manufacturer
    • Antitrust
      •  Presided over a consolidated matter involving a putative class of title insurance purchasers that alleged injuries as a result of a price-fixing conspiracy by insurance providers

Background and Education

  • Judge, United States District Court, District of New Jersey, 1986-2012 (Chief Judge, 2005-2012)

Specialties

Admiralty

Antitrust

Arbitration

Banking

Bankruptcy

Business/Commercial

Civil Rights

Class Action/Mass Torts

Construction

Employment

Environmental

Federal Judge

Governmental/Public Agency

Health Care

Insurance

Intellectual Property

Pharmaceuticals/Mass Tort

Securities

Locations

New York, New York


Available to hear cases nationwide.

For a complete bio see http://www.jamsadr.com/brown/


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.


Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 250 PTAB matters since 2012, including those in which more than $500 million was at stake. Furthermore, Scott is recognized as a thought leader in the PTAB industry. He is a Professorial Lecturer in Law at The George Washington University Law School, a member of the teaching faculty of the Practising Law Institute, and was a founding member of the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings.


STEPHEN G. KUNIN is the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office.  He has more than 48 years of expertise in intellectual property rights protection and 27 years of organizational management and leadership experience.  He was appointed to his former position in March 2000 and has served in a similar capacity since November 1994, under the position's prior title, "Deputy Assistant Commissioner for Patent Policy and Projects."  Previously, beginning in July 1989, Mr. Kunin served as Deputy Assistant Commissioner for Patents.  He participated in the establishment of patent policy for the various Patent Organizations under the Commissioner for Patents, including changes in patent practice, revision of rules of practice and procedures, establishment of examining priorities and classification of technological arts, and oversaw the operations of the Office of Patent Legal Administration, Patent Cooperation Treaty Legal Administration, and the Office of Petitions.  Additionally, in January 1993, Mr. Kunin was designated by the Secretary of Commerce to perform the functions of the Assistant Commissioner for Patents on an acting basis until a new Assistant Commissioner for Patents was appointed in 1994.

Mr. Kunin joined the Patent and Trademark Office (PTO) as a patent examiner in June of 1970. In March of 1977, he became a Senior Examiner in a technology of master's level complexity.  He became Director of the Manufacturing Group in May of 1983.  When a new Electrical Communications examining group (Group 260) was formed in April of 1984, he became its first Group Director.

Mr. Kunin assumed many leadership roles for the Office, including chairing the Patent Examiner Evaluation Board and the Patent Academy Curriculum Committee.  Among his responsibilities, in addition to overseeing the Patent Examination Policy activities, he served on the USPTO Management Council, the USPTO Committee on Discipline, and the USPTO Executive Committee.  He also coordinated several of the Trilateral Projects under the jurisdiction of the Commissioner for Patents.  He has been a guest lecturer at a number of prestigious law schools.

Mr. Kunin, as a Partner, serves as a patent consultant who advises clients on patent prosecution and patent post-grant matters, such as inter alia, subject matter eligibility, utility, restriction practice, inventorship, double patenting, petitions, declarations, reissue, reexamination and AIA trials as well as U.S. Patent & Trademark Office policy, practice and procedures matters.  He also serves as an expert witness on patent law, policy, practice and procedure.  Mr. Kunin also served from 2005-2017 as the Intellectual Property L.L.M. and J.D. Programs Director at the Antonin Scalia School of Law at George Mason University where he was an adjunct professor who taught patent law and intellectual property law classes.   He is frequently sought out to lecture to external groups on USPTO administrative trials and USPTO patent prosecution practice.



THEODORE R. ESSEX

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

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

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

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


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.