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Patent Law Institute 2012 (6th Annual)


Speaker(s): Alyssa R Harvey Dawson, Brian G. Bieluch, Colm J. Dobbyn, David M. Rosenblatt, David M. Shofi, David W. Highet, Dean John M. Whealan, Donald R. Dunner, Douglas R. Nemec, Greg H. Gardella, Gregory J. Kirsch, Hon. Denise L. Cote, Hon. Mitchell S. Goldberg, Hon. Randall R. Rader (Ret.), Hon. Tonianne J. Bongiovanni, Hon. William G. Young, Jeffrey T. Zachmann, John M. White, Kenneth W. Brothers, Mark Costello, Philippe J.C. Signore, Ph.D., Robert L. Stoll, Robert Neuner, Scott M. Alter, Serena Farquharson-Torres, Ph.D., Seth P. Waxman, Valerie Calloway, William K. Weimer
Recorded on: Feb. 16, 2012
PLI Program #: 36998

PHILIPPE SIGNORE, Ph.D.,

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

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

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


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

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


Alyssa R. Harvey is Vice President, Legal - Global IP at Harman International Industries and is responsible for developing and implementing the global intellectual property strategy at the company. This includes managing a team responsible for the patent and trademark portfolios and IP litigation, handling strategic IP enforcement, overseeing licensing, development, standards-setting, open source and technology transactions, managing IP due diligence on mergers and acquisitions, and providing overall intellectual property advice and counseling. Prior to Harman, she was at Netflix, eBay and Autodesk, where she worked on strategic licensing transactions, mergers and acquisitions, technology and product counseling, patents, trademarks and open source matters. She also worked at the law firms of Cooley Godward and Latham & Watkins on transactions, financings, corporate, SEC and FCC matters. Alyssa is on the Advisory Board for the Quello Center for Telecommunication Management and Law. She received her J.D. degree from Georgetown University Law Center, where she was a member of the Georgetown Law Journal and Book Reviews and Essays Editor. She received her undergraduate degree in Journalism and graduated from the Honors College at Michigan State University.


Bill Weimer is a partner in the Faegre & Benson intellectual property group and previously was the leader of our patent practice. Prior to joining Faegre & Benson, Bill was a senior intellectual property attorney at Imation Corp. responsible for counseling several operational divisions and staff groups. These responsibilities involved many aspects of intellectual property with an emphasis on global IP strategy, portfolio management, agreements and litigation management; patent opinions and prosecution; and trade secret protection. Bill negotiated and prepared a variety of IP agreements including joint development, license, M&A, and confidentiality agreements.

Before his tenure at Imation, Bill was a patent attorney within the legal department at 3M. Prior to that, Bill was a product and process development engineer for nine years in 3M's medical and surgical divisions. While within the 3M legal department, Bill focused on patent preparation/prosecution, freedom to operate, and opinions as well as IP transactions and disputes using his engineering and product commercialization background to better communicate and work with 3M's inventors and business leaders.
As a result of his in-house experience at 3M and Imation and his subsequent private practice experience at Faegre & Benson,

Bill now focuses his practice on:

  • building and managing cost-effective global patent portfolios
  • carrying out freedom-to-operate investigations
  • drafting patent non-infringement and invalidity opinions
  • counseling clients on trade secret protection
  • conducting IP due diligence for complex corporate transactions
  • negotiating and drafting IP agreements
  • managing and settling patent and trade secret litigation, and
  • conducting ex parte and inter partes patent reexaminations

Bill's practice involves aspects of the wind energy, biofuels processing, clean technology, natural resources, construction, medical devices, and medical devices.


Education
  • William Mitchell College of Law
    • J.D., magna cum laude (1994)
  • University of North Dakota
    • B.S. Mechanical Engineering (1983)

Articles
08-December-2009 - USPTO Announces Accelerated Examination Pilot Program for Green Technology Patent Applications

Bar Admissions
  • Minnesota
  • Court Admissions
  • U.S. Patent and Trademark Office (USPTO)


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


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

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

Representative cases include the following:

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

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

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

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

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


Mark Costello is vice president, general patent counsel and chief strategy counsel for Xerox Corporation. He was appointed to this position in October 2010. He is also a corporate vice president
 
Costello is responsible for the development and use of intellectual property and Xerox's patent and trademark portfolio, as well as the protection of trade secrets and copyrights for the corporation. He leads the corporation's legal strategy in a number of different areas, including Xerox's joint venture with Fuji Xerox, as well as developing strategies for the corporation's legal department.
 
Costello joined Xerox in 1985, as patent attorney, and has held positions of increasing responsibility before being appointed general patent counsel in 2001.
 
Prior to joining  Xerox, Costello was an associate for Body Vickers & Daniels in Cleveland, Ohio. 
 
Costello earned a Bachelor of Science in electrical engineering from the University of Massachusetts at Lowell in 1979. He received his Juris Doctor degree from Case Western Reserve University, School of Law in 1982.
 
Costello is a member of the American Bar Association, the American Corporation Counsel Association and new board member of the Intellectual Property Owners Association, Rochester Intellectual Property Association. He received a patent for "Printer Mailbox Split Jobs Overflow Banner Sheet Indicator System" and was recognized by the Boy Scouts of America, Connecticut Yankee Council, with the 2010 Distinguished Citizen Award.


Robert L. Stoll was sworn in as Commissioner for Patents on October 5, 2009. Prior to that, Mr. Stoll was Dean of Training and Education. In that capacity he directed efforts to train foreign officials and the public on all aspects of intellectual property. Before his appointment as Dean in 2007, Mr. Stoll served as director of the Office of Enforcement for the United States Patent and Trademark Office (USPTO) for five years beginning in 2002.

In 1995, Mr. Stoll became the Administrator of the Office of Legislative and International Affairs for USPTO. In this capacity, he led development and analysis of legislation concerning intellectual property, as well as analysis of international issues related to intellectual property.

Mr. Stoll was appointed Executive Assistant to the USPTO Director in 1994 and was responsible for providing technical and policy assistance to the Director on a broad range of national and international intellectual property issues. He also helped develop and plan USPTO strategic goals, objectives, and priorities, and served as a liaison with patent and trademark bar groups and academic and scientific communities. 

Mr. Stoll joined the Federal Service in 1979 as a Chemical Engineering Researcher in metallurgy at the United States Bureau of Mines, where he worked until 1982. He joined the USPTO in 1982 as a Patent Examiner, reviewing patents for metal containing complexes and compounds. In 1990, he became a Supervisory Patent Examiner, managing the examination of classified chemical applications, radioactive bio-treating compositions, and liquid crystals.

Mr. Stoll holds a bachelor of science in chemical engineering from the University of Maryland. While working at USPTO, he earned a juris doctor from Catholic University and became a member of the Maryland Bar.

About the USPTO
Since 1790, the basic role of the United States intellectual property system has remained the same: to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries (Article 1, Section 8 of the United States Constitution). Today, the United States Patent and Trademark Office (USPTO) is a federal agency in the Department of Commerce, headquartered in Alexandria, Virginia. Through the issuance of patents, the USPTO encourages technological advancement by providing incentives to invent, invest in, and disclose new technology worldwide. Through the registration of trademarks, the agency assists businesses in protecting their investments, promoting goods and services, and safeguarding consumers against confusion and deception in the marketplace. By disseminating both patent and trademark information, the USPTO promotes an understanding of intellectual property protection and fa cilitates the development and sharing of new technologies worldwide.


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.


DONALD R. DUNNER is a partner in the Washington, D.C. firm of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., a graduate of Purdue University and Georgetown University Law School, a past President of the American Intellectual Property Law Association, past Chair of the American Bar Association Intellectual Property Law Section and a member of the ABA House of Delegates since 2002, a past Chair of the Advisory Committee of the Federal Circuit (1982-92),  served as a member of the PTO Advisory Commission on Patent Law Reform (1991-92), a co-author of Court of Appeals for the Federal Circuit:  Practice and Procedure and a past co-author of Patent Law Perspectives, the NJIPL Jefferson Medal recipient for 2004 and was named International Lawyer of the Year 2005 for Patents by Who’s Who Legal, a 2010 Inductee to Intellectual Asset Management magazine’s IP Hall of Fame, and a Fellow of the American College of Trial Lawyers and a 2004 inductee of the American Academy of Appellate Lawyers.  In July 2000, the National Law Journal named Mr. Dunner one of the 100 Most Influential Lawyers in America.  Mr. Dunner has been selected by his peers for inclusion in the 2012 edition of Best Lawyers in America®, making him one of a distinguished group of attorneys who have been listed in Best Lawyers® for ten years or longer.  In May 2008, he was listed in Legal Times’ “Greatest Washington Lawyers in the Past 30 Years.”  He was honored in October 2011 with the AIPLA Board of Directors’ Award.  Mr. Dunner was recognized by the George Washington University Law School students as Adjunct Professor of the Year for 2012.  He is the recipient of the 2012 Linn Inn Alliance Lifetime Achievement Award and the 2012 IP Jurisprudence Award of the Hispanic National Bar Association. 


Gregory J. Kirsch is a partner and registered patent attorney with Ballard Spahr LLP, a national law firm with 500 lawyers and 13 offices nationwide. Greg leads the firm's software, electronics and communications technology patent team, and his legal practice focuses on patent procurement, patent portfolio management, client counseling, patent opinions, intellectual property (IP) due diligence, licensing and litigation, for companies of all sizes and for universities. In addition to his full-time legal practice, Greg serves as an adjunct professor of patent and IP law at both Emory University School of Law in Atlanta (since 1997) and Washington University School of Law in St. Louis (2011). Greg is a frequent speaker at IP conferences in the US and abroad, and is a contributing author on patent law topics for two books, the first on Internet law (2002, Random House), and the second a forthcoming book on bioinformatics law (American Bar Association). Greg holds a B.S. in Electrical and Computer Engineering from the University of Iowa (1987), in addition to his law degree from Washington University School of Law in St. Louis (1990), where he served as a Notes and Comments Editor for the law review. Greg is listed in the Best Lawyers in America for intellectual property law, as well as Chambers USA.


Colm is currently General Counsel, Intellectual Property at MasterCard in Purchase, New York. In his current position, Colm has global responsibility for intellectual property (IP) and related technology legal matters for MasterCard. He oversees a team of 15 professionals that handles MasterCard’s trademarks, patents, copyrights, licensing and technology transfers on a worldwide basis. MasterCard’s IP portfolio comprises over 13,000 trademarks in 220 countries and over 3,000 patents and patent applications.

Colm joined MasterCard in 1995 as Vice President and Senior Counsel. Prior to his employment with MasterCard, Colm was previously Senior Counsel with PepsiCo, Inc., where he had responsibility for trademark and related intellectual property matters for PepsiCo’s beverage divisions. Colm previously was associated with the law firms of Skadden, Arps, Slate, Meagher & Flom and Morgan & Finnegan.

Colm has been recognized by a number of industry awards and honors. Colm was named as “In House Counsel of the Year” by the World Trademark Review (WTR) in May 2016 at the International Trademark Association (INTA) Annual Meeting. In May 2015, the MasterCard IP group received the “Financial & Professional Services Team of the Year” award by the WTR. Colm was also named as an “IP Star” by Managing Intellectual Property in 2015 and 2016. Colm is a frequent speaker at IP industry conferences and seminars.

Colm is a graduate of Fordham University Law School in New York City. He has a degree in biological sciences from Bennington College and participated in research at a number of laboratories, including receiving a National Science Foundation research grant. Colm is a member of the New York and patent bars. He is also a member of the ABA and American Corporate Counsel Association (ACCA), and is President of the Westchester/Southern Connecticut Chapter of ACCA (WESFACCA) during 2014 - 2015.


David Highet currently serves as Vice President and Chief Intellectual Property Counsel.  David has been in this role since 2002 and is responsible for the Company’s global intellectual property strategy including freedom to operate, patent procurement and portfolio management, and enforcement.  David joined BD in 1993 and has held progressively responsible positions in the Intellectual Property Department of the Law Group.  David holds a BS degree in Pharmacy from the University of Connecticut and a JD degree from the University of New Hampshire School of Law.


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


Honorable William G. Young, Judge of the United States District Court, District of Massachusetts, has been an active trial judge for more than 25 years, serving on both the Massachusetts Superior Court (1977-85) and the United States District Court for the District of Massachusetts (1985-present). After receiving his A.B., magna cum laude, from Harvard University in 1962, he served two years as an officer in the United States Army. His legal career began in 1967 when he was admitted to the Massachusetts bar upon graduating from the Harvard Law School. He served as law clerk to the Honorable Raymond S. Wilkins, Chief Justice of the Supreme Judicial Court. Following his clerkship, he practiced law as an associate and then partner at the Boston law firm of Bingham, Dana & Gould. His legal career has also included stints as a Special Assistant Attorney General and as Chief Counsel for former Massachusetts Governor Francis W. Sargent.

A longtime teacher of evidence and trial advocacy, he has taught at several law schools including Harvard, Boston College, and Boston University. Commonly referred to as the Education Judge, he is active in judicial education at the Federal Judicial Center and the Flaschner Judicial Institute. Moreover, he volunteers much of his time to educating the bar and has been a staple at continuing legal education programs and institutions including Virginia Continuing Legal Education and the Practicing Law Institute (PLI). He has won national acclaim for his work on the Massachusetts Continuing Legal Education's annual lecture series On Trial with Judge Young, which offers each fall an intensive 15-week study of trial techniques and trial evidence.

In addition to teaching in the classroom, Judge Young has written extensively. He is the principal author of Massachusetts Evidentiary Standards (1992 through 2005 eds.) and Vols. 19 and 19A, Evidence (Mass. Practice Series 1998), and co-author of Daubert's Gatekeeper: The Role of the District Judge in Admitting Expert Testimony (Tulane Law Review), and An Open Letter to U.S. District Judges, The Federal Lawyer (July 2003).


Jeffrey T. Zachmann is Counsel in IBM's Corporate Litigation department.  He has been with IBM since 1988 and, since joining the litigation department in 1992, has managed over 125 intellectual property litigations for IBM, the majority being patent cases.  He also provides litigation-related counsel and advice to the company's licensing and business legal staffs.  He holds a JD from Pace University School of Law (1986) where he was Articles Editor of the Law Review, and an LLM in Trade Regulations from New York University (1988), where he won the Patent Law Award and graduated at the top of his class.  He is admitted to practice before the bars of New York, New Jersey, and the U.S. Patent and Trademark Office.  He is also accredited to practice before the U.S. Department of Veterans Affairs.

Mr. Zachmann is a regular speaker and panelist at IP Law conferences on managing litigation, opinions of counsel and other topics. He has been a regular speaker for the Practising Law Institute, the NYIPLA, and the Texas State Bar Annual IP law conference.   He has presented CLE courses at several NYC law firms on ways of improving service to in-house clients.  He was a Teaching Assistant at Pace University School of Law, and was on the Teaching Staff of the Katherine Gibbs Paralegal School, where he taught Legal Research, Constitutional Law and Intellectual Property Law.


Judge Denise Cote was appointed United States District Judge for the Southern District of New York on August 10, 1994.  Judge Cote has held positions in both the private and public sectors.  For approximately eight years, beginning in 1977, she was an Assistant United States Attorney in the Criminal Division of the United States Attorney’s Office for the Southern District of New York. She left that office as Deputy Chief of the Criminal Division in 1985 to join the law firm of Kaye, Scholer, Fierman, Hays & Handler.  In 1991, she returned to the United States Attorney’s Office as the first woman Chief of the Criminal Division, a post she held when Senator Daniel Patrick Moynihan recommended her to President Clinton for appointment as a federal Judge. 

 

Education:  Columbia Law School, J.D. (1975); Columbia University, M.A. (1969); Saint Mary’s College, B.A. (1968).


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.


Valerie L. Calloway is Senior Counsel and Global Trademark Law Leader for IBM. Prior to joining IBM, Ms. Calloway served as Chief Intellectual Property Counsel for two companies, where she worked at each to maintain, enforce, and continue developing global intellectual property portfolios. During her more than 20 years of practice in the intellectual property profession, Ms. Calloway has worked as both in-house and outside counsel for several Fortune 1000 firms. Prior to attending Law School, Ms. Calloway was employed in manufacturing management.

Ms. Calloway was a member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) from 2016-2019 and is a life member of the National Bar Association. Ms. Calloway earned her M.B.A. from the University of Chicago, her J.D., cum laude, from the University of Minnesota, and her B.S. in Chemical Engineering from the University of Virginia. She is admitted to practice law in Ohio, New York (In-House Counsel), and before the U.S. Patent and Trademark Office.  


Chief Judge, United States Court of Appeals for the Federal Circuit (2010-2014)
Circuit Judge, United States Court of Appeals for the Federal Circuit (1990-2010)
Federal Trial Judge, United States Claims Court (later Court of Federal Claims) (1988-1990)

Chief Counsel, Senate Judiciary Committee Subcommittees (1980-1988)
Counsel, House of Representatives, Interior and Ways and Means Committees (1975-1980)

For over 25 years, Judge Rader has been a thought leader in the field of intellectual property law and jurisprudence. His work as Chief Judge, his publications and his work teaching patent law globally to students, judges and government officials has left an indelible mark on the field of IP law and the protection of IP rights throughout the world. Judge Rader was appointed to the United States Court of Appeals for the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Judge on June 1, 2010.

He was appointed to the United States Claims Court (now the U. S. Court of Federal Claims) by President Ronald W. Reagan in 1988. Before appointment to the Court of Federal Claims, former Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary. From 1975 to 1980, he served as Counsel in the House of Representatives for representatives serving on the Interior, Appropriations, and Ways and Means Committees. 

Since leaving the bench in 2014, Judge Rader has founded the Rader Group, initially focusing on arbitration, mediation, and legal consulting and legal education services. Judge Rader has presided over a major arbitration under ICC rules in Paris; conducted mediations to settle ongoing litigation; joined law faculty at Tsinghua University; conducted full-credit courses at leading law schools in Washington, D.C., Seattle, Santa Clara, Bangkok, Seoul, Tokyo, Munich; consulted with major corporations and law firms on IP policy and litigation; and advised foreign governments on international IP standards.  He continues to advocate improvements in innovation policy through speaking engagements worldwide.


Judge Mitchell S. Goldberg

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


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

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

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

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

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


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

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

Bar Admission

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

Education

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

Memberships

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


Solicitor General of the United States from 1997 to 2001, Seth Waxman is a partner at Wilmer Cutler Pickering Hale & Dorr and a member of the faculty at the Georgetown University Law Center.  A graduate of Harvard College and the Yale Law School, Mr. Waxman represents clients in civil and criminal litigation, at the trial and appellate stages, in both federal and state courts.  He has argued 83 cases in the United States Supreme Court and several times that in the state and lower federal courts. 

Mr. Waxman is a Fellow of the American Academy of Arts and Sciences, the American College of Trial Lawyers, the American Academy of Appellate Attorneys, and he serves on the Council of the American Law Institute.  He writes and lectures on constitutional law and history, civil rights, intellectual property, and advocacy.  Mr. Waxman has received numerous awards for scholarship, public service, and advocacy, including the Thomas Jefferson Medal in Law, and the American Bar Association’s Pro Bono Publico award.  For extraordinary service to law enforcement, the Federal Bureau of Investigation has installed him as a permanent honorary Special Agent.

Mr. Waxman represents and provides counselling to many colleges and universities, including on issues relating to diversity.  With colleagues at WilmerHale, he conducted Harvard’s successful trial defense of its admissions procedures in Students for Fair Admissions v. President and Fellows of Harvard College, 397 F. Supp.2d 126 (D. Mass. 2019) and is lead counsel for Harvard on the appeal.  


Dr. Serena Farquharson-Torres is an innovation lawyer with over 19 years of experience. She is currently at Bristol-Myers Squibb Company where she is responsible for all aspects of patent procurement, contracts, counseling, due diligence, litigation, R&D Law, regulatory law and policy.

Serena focuses on the global protection of the company’s innovation and brands. Serena works closely with R&D, manufacturing, and business colleagues to ensure meaningful exclusivity and freedom of operation for BMS products.

Prior to joining, BMS Serena practiced patent law at Sanofi, Schering-Plough and in private practice at Kenyon & Kenyon. Serena has a B.S. in Chemistry from Howard University, Ph.D. in Biological Chemistry from the University of Minnesota and a J.D. from the University of North Carolina.

Serena frequently provides insight and presents on topics in IP and accelerating diversity and inclusion in the legal profession through leadership roles at BMS and on behalf of law associations and industry groups.


GREG H. GARDELLA recently founded Gardella Grace P.A.  Mr. Gardella was formerly a partner at Irell & Manella, where he chaired their post-grant practice group.  The Gardella Grace team has a relatively wide base of experience ranging from patent prosecution to post-grant proceedings to litigation, including trade secret litigation.  The team is currently handling matters in the biotech, medical device, industrial, mechanical, cloud computing and telecommunications spaces.  


Before joining GW Law School in 2008, Dean Whealan worked at the U.S. Patent and Trademark Office (USPTO) where he served as deputy general counsel for intellectual property law and solicitor since 2001. Dean Whealan represented the USPTO in all intellectual property litigation in federal court and advised the agency on a variety of policy issues. During his tenure, he argued approximately 30 cases before the Federal Circuit and, with his staff, was responsible for briefing and arguing more than 250 cases. Dean Whealan also assisted the U.S. Solicitor General on virtually every intellectual property case that has been heard by the Supreme Court since 2001. He also served as counsel to the U.S. Senate Committee on the Judiciary for the last year.

Prior to 2001, Dean Whealan was a staff attorney for the U.S. International Trade Commission where he litigated several investigations involving intellectual property matters. He has clerked at both the appellate and trial court levels, serving as law clerk to Judge Randall R. Rader, J.D. '78, of the Federal Circuit and Judge James T. Turner of the U.S. Court of Federal Claims. Dean Whealan has engaged in private practice at Fish & Neave in New York and worked as a design engineer for General Electric. For the past 10 years, he has taught as an adjunct professor of law at The Franklin Pierce Law Center and also has taught courses at George Mason University School of Law and Chicago-Kent College of Law.

Education: B.S., Villanova University; M.S., Drexel University; J.D., Harvard University