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Patent Law Institute 2016 (10th Annual)


Speaker(s): Adam A. Eltoukhy, David L. McCombs, Dawn Rice Hall, Diana Luo, Douglas R. Nemec, Heath Hoglund, Hon. Andrew Hirshfeld, Hon. Elizabeth D. Laporte, Hon. K. Nicole Mitchell, Hon. Matthew Clements, Jason R. Bartlett, Jon R. Trembath, L. Scott Oliver, Marti A. Johnson, Michael T. Moore, Prof. David Hricik, Prof. Mark A. Lemley, Richard Guo, Richard M. Marsh, Jr., Scott M. Alter, Sharif E. Jacob, Winslow Taub
Recorded on: May. 5, 2016
PLI Program #: 150191

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.


Andrew Hirshfeld is Commissioner for Patents for the U.S. Patent and Trademark Office. He was appointed to this position in July 2015.

As Commissioner for Patents, Mr. Hirshfeld manages and leads the patent organization as its chief operating officer. He is responsible for managing and directing all aspects of this organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.

In his previous role as Deputy Commissioner for Patent Examination Policy, Mr. Hirshfeld served as an authority on patent laws, rules, and examining practice and procedure, and provided administrative oversight and direction for the activities of the Office of Petitions, Office of Patent Legal Administration, and the Office of the Manual of Patent Examining Procedure. Further, Mr. Hirshfeld established patent examination and documentation policy standards for the Commissioner for Patents.

Prior to serving as Deputy Commissioner for Patent Examination Policy, Mr. Hirshfeld was the Chief of Staff to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Hirshfeld began his career at the USPTO in 1994 as a Patent Examiner. He became a Supervisory Patent Examiner in 2001, and was promoted to the Senior Executive Service in 2008 as a Group Director in Technology Center 2100, Computer Architecture and Software.

Mr. Hirshfeld received a Bachelor of Science from the University of Vermont, and a J.D. from Western New England College School of Law.


David McCombs is primary counsel for many leading corporations in patent inter partes review before the U.S. Patent Office’s Patent Trial and Appeal Board and in appeals before the Federal Circuit.  His practice spans 34 years and includes appellate argument, patent litigation, licensing and technology transfer, patent portfolio development and drafting, and dispute resolution.  He is regularly identified as one of the most active attorneys appearing before the Patent Trial and Appeal Board.

Mr. McCombs is the firm-wide chair of the technology practice of Haynes and Boone.  He has a Physics degree and represents clients in technologies that include electronics, semiconductors, software, telecommunications, medical devices, and energy equipment. 

Prior to joining Haynes and Boone in 1989, he served as in-house patent counsel for a diversified technology company located in Research Triangle Park, North Carolina, with a long history of developing breakthrough chemical/material science, diagnostic, robotics, and motion management technologies.

In Chambers & Partners Mr. McCombs is ranked among Texas’ leading intellectual property attorneys.  He is active in many continuing legal education organizations, and regularly writes and speaks on a variety of topics related to patent law.  He is the co-author of “Intellectual Property Law,” published annually by The SMU Law Review (2010-present), and an adjunct professor at SMU Dedman School of Law.

Separate from his law practice, Mr. McCombs serves as a Commissioner for the Smithsonian Institution’s National Portrait Gallery in Washington, D.C.


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

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

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

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

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


Jason Bartlett has over fifteen years of experience in intellectual property litigation, commercial arbitration, and licensing. His engagements have involved a broad range of technologies and industries. In computers and consumer electronics, he has litigated and advised companies on design and utility patents relating to smartphone software and hardware, cellular telecommunications standards, self-balancing human transporters (“hoverboards”), drones, human-computer interfaces, global positioning systems, computer animation software, and field programmable gate array hardware.  In the life sciences, he has experience with monoclonal antibody therapeutics and diagnostics, vaccines, and medical devices.

Jason has represented clients in matters in the U.S. District Courts, the International Trade Commission, the U.S. Patent and Trademark Office, Tokyo District Court, and a variety of international arbitral fora.

Jason has extensive experience representing clients in Asia and spent four years practicing in Tokyo. Jason joins MKW from Morrison & Forester where he was a partner in that firm’s Intellectual Property Group.


Judge Mitchell was born in Victoria, Texas.  She graduated with honors from Baylor Law School after receiving both bachelors and masters degrees from Texas A&M University.  While at Baylor, Judge Mitchell served as the Senior Executive Editor of the Baylor Law Review, as well as Managing Editor of the Law Review’s Texas Practice Edition.     

After law school, Judge Mitchell clerked for the Honorable Chief Judge Leonard Davis in the Eastern District of Texas before starting her civil practice at Fulbright & Jaworski in Houston.  Judge Mitchell’s practice focused primarily on the area of Health Law Litigation, but she also worked on patent cases and is licensed to practice before the USPTO.  After her time at Fulbright & Jaworski, Judge Mitchell returned to the Eastern District of Texas to serve as the Chief Staff Attorney to Judge Davis. 

Judge Mitchell was sworn in as a United States Magistrate Judge on August 16, 2013.  In her time on the bench, Judge Mitchell has overseen numerous patent and general civil litigation cases.  She also mediates cases pending in the Eastern District of Texas and the United States Court of Appeals for the Federal Circuit. 


Mark Lemley is the William H. Neukom Professor of Law at Stanford Law School and the Director of the Stanford Program in Law, Science and Technology. He teaches intellectual property, computer and internet law, patent law, trademark law, antitrust and remedies. He is the author of seven books (most in multiple editions) and 144 articles on these and related subjects, including the two-volume treatise IP and Antitrust. His works have been cited nearly 200 times by courts, including ten United States Supreme Court opinions and almost 13,000 times in books and law review articles, making him one of the five most cited legal scholars of all time. He has published 9 of the 100 most-cited law review articles of the last twenty years, more than any other scholar and a 2012 empirical study named him the most relevant law professor in the country. His articles have appeared in 22 of the top 25 law reviews and in multiple peer- reviewed and specialty journals. They have been reprinted throughout the world and translated into Chinese, Japanese, Korean, Spanish, Italian and Danish. He has taught intellectual property law to federal and state judges at numerous Federal Judicial Center and ABA programs, has testified seven times before Congress and has filed numerous amicus briefs before the U.S. Supreme Court, the California Supreme Court and the federal circuit courts of appeals.

Mark is a founding partner of Durie Tangri LLP. He litigates and counsels clients in all areas of intellectual property, antitrust, and internet law. He has argued 17 federal appellate cases and numerous district court cases as well as in the California Supreme Court, and represented clients including Comcast, Genentech, DISH Network, Google, Grokster, Guidewire, Hummer Winblad, NetFlix, and the University of Colorado Foundation in over 90 cases in his more than two decades as lawyer.

Mark is a founder and board member of Lex Machina, Inc., a startup company providing data and analytics around IP disputes to law firms, companies, courts and policymakers.

Mark has been named California Lawyer’s Attorney of the Year (2005), Best Lawyers’ San Francisco IP Lawyer of the Year (2010) and a Young Global Leader by the Davos World Economic Forum (2007). In 2009 he received the California State Bar’s inaugural IP Vanguard Award. In 2002 he was chosen as Boalt’s Young Alumnus of the Year. He has been recognized as one of the top 50 litigators in the country under 45 by the American Lawyer (2007), one of the 100 most influential lawyers in the nation by the National Law Journal (2006 and 2013), one of the 10 most admired attorneys in IP (2010) by IP360, one of the 25 most influential people in IP (2010) by the American Lawyer, among other honors. He is a member of the American Law Institute. In 2014 he was inducted by Intellectual Asset Management into the IP Hall of Fame, which honors those who have helped to establish intellectual property as one of the key business assets of the 21st century.

Mark clerked for Judge Dorothy Nelson on the United States Court of Appeals for the Ninth Circuit and has practiced law in Silicon Valley with Brown & Bain and with Fish & Richardson and in San Francisco with Keker & Van Nest. Until January 2000, he was the Marrs McLean Professor of Law at the University of Texas School of Law, and until June 2004 he was the Elizabeth Josselyn Boalt Professor of Law at the Boalt Hall School of Law, University of California at Berkeley. In his spare time, Mark enjoys cooking, travel, yoga and feeding his addiction to video games (at this writing, Dragon Age: Inquisition).


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

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

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

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


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

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

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


Richard Guo

Richard Guo is an Associate Principal Counsel with The Walt Disney Company.  As part of his responsibilities, Richard counsels both Pixar and Lucasfilm on patent related matters.  Richard also advises both companies on technology transactions and open source issues.  Prior to joining The Walt Disney Company, Richard was an associate with Fenwick & West LLP.  Prior to Fenwick, Richard was an associate with Kilpatrick Townsend & Stockton LLP. 

Richard received a B.S. in Electrical Engineering and Computer Sciences from UC Berkeley.  Richard also received a J.D. from the UC Berkeley School of Law (Boalt Hall). 


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.


Sharif E. Jacob
Keker & Van Nest LLP
Partner

Sharif E. Jacob designs strategies to win and resolve high-stakes litigation. He has successfully tried commercial, patent, and civil rights actions. His practice focuses on complex business disputes, intellectual property litigation, civil enforcement actions, and white collar criminal matters. In addition to his work at Keker & Van Nest, Mr. Jacob serves as an Adjunct Professor at the University of California, Hastings College of the Law.

Mr. Jacob has extensive experience with patent litigation. He represents leading firms in the video streaming, social networking, and wireless phone industries in disputes pending before the district courts, the International Trade Commission, and the Patent and Trademark Office.

Mr. Jacob has repeatedly litigated actions advancing the constitutional rights of inmates. He has won judgments and appeals for prisoners locked in solitary confinement or brutalized in prison. His pro bono work has led to systemic reform of California’s prison system and has been covered by the national press.

Mr. Jacob graduated first in his class from Hastings and received his undergraduate degree from Yale University. After law school, Mr. Jacob clerked for the Honorable Mary M. Schroeder of the Ninth Circuit Court of Appeals.


Winslow Taub

Winslow Taub focuses his practice on patent litigation, primarily for clients in the high technology space. He has handled patent disputes involving a wide variety of technologies, including cellular communications, wired and wireless networking, graphics processing, and information security. In addition to litigating in federal court, he has represented clients in Section 337 investigations before the ITC and in inter partes review proceedings before the PTAB. He currently serves as vice-chair of the firm’s Patent Litigation practice group.

Mr. Taub has worked in the software and hardware industries for more than 15 years, as an engineer and as an attorney. In addition to his litigation practice, Mr. Taub advises clients on patent portfolio development and licensing, open-source software licensing, IP transactions, and related data privacy and security issues.

Representative Matters

  • Represent Electronic Arts Inc. in patent litigation against Infernal Technology, LLC and Terminal Reality, Inc. related to 3D image rendering.
  • Represent multinational game company in patent litigation related to massively multiplayer online gameplay.
  • Represented major consumer electronics company in ITC investigation initiated by Enterprise Systems Technologies related to hardware and software architecture of mobile devices.
  • Represented major technology licensing firm in patent litigation and PTAB proceedings related to networking hardware and software.
  • Represented Knowles Electronics in domestic and international litigation related to MEMS microphones.

Education

  • University of California, Berkeley School of Law, J.D., 2004
  • Harvard University, S.M., 1996 (Computer Science)
  • Harvard University, A.B., 1996 (Physics)

Bar Admissions
California


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 (9:1).

Jon works on behalf of clients in a variety of industries, including 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. Radar at the Court of Appeals for the Federal Circuit.


When handling patent, copyright, trademark and trade secret matters, first-chair litigator Scott Oliver blends creative legal strategies with elegant explanations of technology. By distilling complex information to the key elements, he can craft a story that compels ITC judges and layperson juries alike. Scott has handled more than 150 matters and a dozen trials. Depending on each client’s unique business objectives, Scott’s strategy may include quickly reaching a favorable settlement or winning at trial.

Since teaching himself assembly language as a child, Scott has been fascinated with technology. Now as an extremely technically proficient litigator, Scott has more than two decades of experience defending companies such as Accenture, Brocade Communications, Aruba Networks and others in district courts and the ITC. 

In addition to his litigation work, he provides intellectual property counseling. Scott advises clients on how to strategically grow and manage their intellectual property portfolios, guides young companies through the stages on patent strategy, and consults for handset manufacturers and patent pools on the licensing of 802.11, 3G and LTE patents.

Scott is the former Chair of the ITC Committee of the American Intellectual Property Law Association, an outgoing member of Amicus and Ethics Committees and a frequent speaker on patent, damages, and ITC issues.

Practice Areas
- Patents
- Trade Secrets Litigation
- Copyright, Trademark & False Advertising
- Intellectual Property

Honors
- Wiley W. Manuel Award for Pro Bono Legal Services from The Board of Governors of the State Bar of California
- Named a 2013 “California Future Star” by Benchmark Litigation

Education
- A.B., Harvard University, 1990, cum laude
- J.D., University of San Diego School of Law, 1994, magna cum laude; Lead Articles Editor, Law Review; Order of the Coif


Adam Eltoukhy

Adam is Legal Counsel at Palantir Technologies, a software data analytics company based in Silicon Valley.  Palantir works with customers in a wide range of industries, including the commercial, government, and health spaces, to solve their biggest organizational problems.  Adam works on a broad scope of legal issues, from technology licensing agreements to patent portfolio management.  Prior to joining Palantir in 2012, Adam was an appellate and patent litigation attorney with the firms of Morrison and Foerster and Weil Gotshal.  Adam has also done clerkships on the Northern District of California and the Federal Circuit.


Diana Luo is a Senior Associate General Counsel for Walmart eCommerce, responsible for a variety of intellectual property issues, including IP litigation and pre-litigation disputes for all Walmart entities in the U.S.

Prior to joining Walmart in September 2013, Ms. Luo was an IP litigator at Morrison & Foerster LLP in Palo Alto, where she focused on complex patent litigation.  She began her legal career at Milbank Tweed Hadley & McCloy LLP.  

Ms. Luo is a member of the California bar, and is also a registered patent attorney.  She is active in the Asian Pacific American Bar Association of Silicon Valley, currently serving on the Board of Directors.

Ms. Luo received her B.S. in Chemical Engineering, magna cum laude, from UCLA, and her J.D. from University of California, Berkeley School of Law. 


ELIZABETH D. LAPORTE is a United States Magistrate Judge for the Northern District of California. Appointed on April 4, 1998, Judge Laporte presides over numerous civil cases randomly assigned to her with the parties' consent, including patent, trademark, copyright and other business litigation, employment, civil rights and environmental cases. She also presides over criminal matters, conducts settlement conferences, and resolves discovery disputes.

Judge Laporte is the author of Managing the Runaway Patent Case, an article published in the Summer 2003 issue of the Northern California ABTL [Association of Business Trial Lawyers] Report, and Getting the Most Out of Judicial Settlement Conferences, published in the Winter 2006 issue. She also served as a judicial reviewer to the Continuing Education of the Bar's (CEB's) California Civil Discovery Practice, and authored an article on the 2006 e-discovery amendments to the Federal Rules of Civil Procedure for CEB's Civil Litigation Reporter.

Judge Laporte is a member of the Board of Governors for the Northern California Chapter of the Association of Business Trial Lawyers and the Executive Committee of the Litigation Section of the Bar Association of San Francisco. She is also a judicial observer for the Sedona Conference Working Group on Electronic Document Retention and Production and a former member of the Federal Circuit's Bench Bar E-Discovery Committee. Judge Laporte has recently been appointed the Alternative Dispute Resolution Magistrate Judge for the Northern District of California, previously served as the Chair of the Executive Board of the Ninth Circuit Magistrate Judges, and was a member of the Jury Trial Improvement Committee of the Ninth Circuit Court of Appeals.

Prior to her appointment, Judge Laporte served as Chief of Special Litigation for the San Francisco City Attorney's Office (1996-98); Administrative Law Judge for the California Department of Insurance (1991-96); Partner, and previously associate, at Turner & Brorby (1983-91); and Law Clerk to the Honorable Marilyn Hall Patel, Northern District of California (1982-83). Prior to attending law school, she was a policy planner/economist at the Federal Trade Commission from 1977-1979.

Judge Laporte is a graduate of Princeton University, class of 1975, and holds a masters degree from Oxford University (as a Marshall Scholar from 1975-77), and a J.D. from Yale Law School, Class of 1982. Judge Laporte was named a Lawyer of the Year by California Lawyer in 1996.


Heath Hoglund is Vice President and Chief Patent Counsel at Dolby in San Francisco, where he has global responsibility for patents, trademarks and copyrights. In this role he has consistently driven year-over-year growth in Dolby's patent licensing programs. He has significant experience in building strategic IP portfolios and licensing programs. Mr. Hoglund serves on the council of the American Bar Association IP section, on the board of IPO, and is past president of the San Francisco IP Law Association. He holds a JD (cum laude), an MS and a BS (cum laude) from the University of Minnesota.


Hon. Matthew Clements
Lead Administrative Patent Judge
United States Patent and Trademark Office

Matt Clements is a Lead Administrative Patent Judge at the Patent Trial and Appeal Board in the Silicon Valley office.  He earned his law degree from Columbia Law School.  He also earned a Master of Science degree in Electrical Engineering from University of Washington, and a Bachelor of Electrical Engineering degree from Auburn University.  Prior to his appointment in March 2013, Judge Clements served with the law firm Ropes & Gray LLP where he practiced intellectual property law with broad experience in patent litigation, patent prosecution, and technology transactions.


Marti Johnson concentrates her practice on intellectual property and technology law, with a focus on patent and trade secret litigation. She has represented clients in federal and state litigation, multidistrict litigation, arbitration, and before the Patent Trial & Appeal Board.  She is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Ms. Johnson has represented clients in matters involving a wide array of technologies, including computer hardware and software, financial systems, e-commerce, Internet technologies, food processing and engineering, telecommunications systems, medical devices, data transmission, semiconductors, electronic displays (including micromirror array and LCD technology) and pharmaceuticals.

Ms. Johnson also provides guidance to her clients on a variety of issues, including intellectual property transactions, freedom to operate determinations, electronic discovery parameters and damages evaluations.

Ms. Johnson’s pro bono practice includes nonprofit intellectual property investigations, social security benefits representation, prisoner abuse cases, and work for the Innocence Project.


Rick Marsh helps clients grow and protect their intellectual assets. His practice focuses on various specialties in patent law, with particular expertise in patent eligibility, post-grant proceedings, patent prosecution, patent validity and infringement evaluations, and patent litigation:

Rick led the ABA’s Post-Alice Task Force for over two years, and routinely publishes articles and speaks at national conferences on Section 101 issues. Rick also was a prominent presenter at the USPTO’s 2017 national roundtable on patent subject matter eligibility. Rick assists clients with patent eligibility issues for both prosecution and litigation.

Rick graduated magna cum laude from the University of Michigan Law School in 2009. After graduation he served as a law clerk to the Honorable William C. Bryson at the Court of Appeals for the Federal Circuit.  Rick is a partner at Faegre Baker Daniels.