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Patent Litigation 2017


Speaker(s): Aaron B. Bernstein, Andrew L. Schaeffer, Carol White, Carolyn H. Blankenship, Charles J. Monterio, Jr., Christopher J. Horgan, Cynthia Lambert Hardman, Daniel Wolfe, Ph.D., Eric J. Lobenfeld, Frederick L. Whitmer, Gene W. Lee, George E. Badenoch, Gil Calvillo, Ph.D., Hon. K. Nicole Mitchell, Hon. Rubén Castillo, Hon. Sue L. Robinson (Ret.), Jeffrey T. Zachmann, Katharine Wolanyk, Keith R. Hummel, Margaret E. Ives, Michael A. Berta, Michael C. Smith, Peter Schwechheimer, Rachel K. Hunnicutt, Richard F. Martinelli
Recorded on: Nov. 15, 2017
PLI Program #: 185799

Andrew L. Schaeffer is currently Assistant Chief IP Counsel for Advanced Materials where he manages a large group of patent attorneys, agents and other patent professionals within DuPont. These businesses make up a large portion of what will ultimately become the Specialty Products Company to be separated out of the current Dow-DuPont parent Company in approximately 2019.

Between 2007 and 2009, he was Managing Counsel – Operations and Partnering where he was responsible for all facets of DuPont Legal’s partnering program, including law firm and vendor selection, firm performance evaluation, internal and external case assignment, rate negotiations and matter conflict resolution.  His operational responsibilities included litigation budget management, supervising DuPont Legal’s e-discovery team, overseeing legal technology initiatives, and briefing DuPont’s outside auditors and Company management on litigation matters to facilitate compliance with Sarbanes-Oxley.  During that time period, he also co-edited the 5th edition of the DuPont Legal Model Book entitled “The New Reality: Turning Risk into Opportunity through the DuPont Legal Model”.

Between 2003 and 2007, Andy was the IP Litigation Group Leader primarily responsible for managing DuPont’s patent litigation. Between 1990 and 2003, he served as patent litigation and/or prosecution counsel for several DuPont business units as well as Central Research & Development.

Prior to joining DuPont in 1990, Andy practiced as an associate at the IP firm of Seidel, Gonda, Lavorgna & Monaco in Philadelphia, PA (1987-1990). There he worked on a variety of patent litigation, prosecution and opinion matters.

Andy received his undergraduate degree from Lehigh University in Chemical Engineering in 1982. He obtained his J.D. from the Delaware Law School of Widener University in 1987.


Charles Monterio, Jr. focuses his practice primarily on patent litigation (both plaintiff and defendant). Charles has litigated complex patent litigation cases from pre-suit investigations through multiple trials and appeals, including three trial wins in the past five years. He also has extensive experience in patent-related strategic counseling and post-grant proceedings before the U.S. Patent & Trademark Office. His practice has embraced a wide range of technologies, including manufacturing processes, medical devices, electronic devices, and computer software.

He has patent litigation experience related to all phases of a case, including formulating case strategy, managing discovery, taking and defending depositions, preparing and opposing motions, and working with industry experts. He has also argued numerous hearings before district courts, including Markman hearings and conducted trials. Additionally, Charles has experience in patent portfolio counseling and prosecution, concentrating in the fields of biotechnology, chemical and mechanical, electrical, and design and plant patents.

Prior to joining private legal practice, he was a judicial intern with the Honorable Gerald Bruce Lee, U.S. District Court for the Eastern District of Virginia, where he handled issues such as the Federal Death Penalty Act, the Federal Torts Claims Act, and civil procedure questions in connection with motions to dismiss, motions for summary judgment, and other dispositive motions. He also served on a U.S. Senate Committee for two years conducting legal policy studies on IP and biotechnology. On Capitol Hill, he was involved in the development and presentation of new biotechnology concepts and facilities as well as a study of the current framework of biotechnology research and funding. Charles also worked in the State of Iowa’s Office of the Governor, where he supported former Governor Thomas J. Vilsack. While in law school, he was a member of the Drake Journal of Agricultural Law.

RECOGNITIONS

• 2014–2015, “Rising Star” in Washington, D.C., listed by Super Lawyers

• 2013, "Plaintiffs' Hot List," listed in The National Law Journal Plaintiffs

• 2013, listed in Lawyers of Color Hot List

PROFESSIONAL ACTIVITIES

Charles was selected as a 2013 Fellow for the Fellows Program of the Leadership Council on Legal Diversity (“LCLD”), which is a program for leaders who have distinguished themselves within their corporation or law firm and have a career history that reflects strong performance and leadership skills. He is also a member of the Just the Beginning Foundation, and part of the leadership team of the DuPont Minority Corporate Counsel Network.

Charles is active in the Kappa Scholarship Endowment Fund and the Alfred Street Baptist Church. He is a member of Kappa Alpha Psi Fraternity, Inc.

ADMISSIONS: Virginia, 2005; District of Columbia, 2005; U.S. Patent and Trademark Office, 2008

MEMBERSHIPS: American Intellectual Property Law Association; Virginia Bar Association

EDUCATION: Drake University Law School (JD, 2004); University of Miami (BS, 2001)


Chief Judge Rubén Castillo of Chicago, Illinois, received his Bachelor of Arts in Political Science from Loyola University Chicago in 1976 and his law degree from Northwestern University School of Law in 1979.

On January 27, 1994, President Clinton nominated Chief Judge Castillo to the United States District Court for the Northern District of Illinois as an Article III federal judge.  In 1999, President Clinton nominated him to be the vice-chair of the United States Sentencing Commission.  Chief Judge Castillo has also served as an adjunct professor of trial advocacy at Northwestern University School of Law for more than twenty years.  As a result of his work with students, he has received five teaching awards from Northwestern Law students.

On July 1, 2013, he assumed the position of Chief Judge of the United States District Court for the Northern District of Illinois.  Chief Judge Castillo heads the Patent Pilot Program for the Northern District of Illinois and is a participating judge.


Cynthia Lambert Hardman, a partner in Goodwin's IP Litigation Group and co-chair of the firm’s PTAB Practice, has over 15 years of experience litigating complex intellectual property cases in U.S. district courts and the U.S. International Trade Commission (ITC). A registered patent attorney, Ms. Hardman also litigates before the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) in post-grant proceedings such as inter partes reviews (IPRs).

Ms. Hardman represents clients in the pharmaceutical, biosimilar, medical device, nutritional supplement, and consumer product industries. She has significant experience with ANDA patent litigation under the Hatch-Waxman Act, and also litigates cases involving a wide range of products such as spinal fixation devices, home pregnancy tests, and video content analysis systems and software.

Ms. Hardman's practice also extends to pre-litigation counseling, including rendering opinions relating to patentability, infringement, validity and freedom-to-operate issues. She has also conducted due diligence in connection with acquisitions of patent estates.

Ms. Hardman co-founded and co-authors Goodwin’s monthly publication, Keeping Tabs on the PTAB, which provides updates to clients about PTAB, district court, and Federal Circuit decisions that impact post-grant review proceedings. Ms. Hardman is also an editor and regular contributor to the firm’s Big Molecule Watch blog.


Dr. Daniel Wolfe is Senior Vice President of DecisionQuest, Inc., a trial consulting and strategic communications firm with offices in Los Angeles, Chicago, Pennsylvania, New York, Boston, Washington DC, Atlanta, Minneapolis, San Francisco and Miami. The firm is comprised of approximately 100 individuals.

Dr. Wolfe provides research-based and experiential data analysis to trial teams nationwide and oversees the standards in practice of the jury consulting team nationally. Dr. Wolfe works on high-profile and large-exposure litigation involving such matters as antitrust, product liability, intellectual property, professional malpractice, environmental, and securities. He consults on national litigation matters pertaining to a variety of industries, including automotive, airline, pharmaceutical, petroleum/petrochemical, biotech, and medical. An expert in the fields of witness preparation, voir dire, and jury selection, he is also skilled in providing quantitative and qualitative analyses of venues through focus groups and mock trials.

A jury consultant and researcher since 1986, he has been in the national spotlight on numerous occasions for his work on high-profile criminal and civil cases involving celebrities and professional athletes. He has appeared as a commentator on both local and national talk shows and has been quoted in a wide range of media, including national publications such as The National Law Journal, Lawyers Weekly, Newsweek, and USA Today. He has authored many articles and book chapters on the subjects of juries, juror perceptions, ethics in trial consulting, and the interrelation of attorney gender and courtroom bias. Dr. Wolfe has over 25 years of jury consulting research experience and has worked on over 1,500 cases.

A noted jury consulting expert, Dr. Wolfe has been honored to present for numerous legal organizations throughout the country, including the American Bar Association, the American Trial Lawyers Association, the American Board of Trial Advocates, Defense Research Institute, several Inns of the Court, and various state and local bar associations. His professional affiliations include the American Psychological Association, the American Bar Association, the American Psychology-Law Society, and the American Society of Trial Consultants, of which he is past president.

Dr. Wolfe received his J.D., his Ph.D. in law and psychology, and his M.A. in psychology from the University of Nebraska. He holds his B.A. in psychology and sociology from Colorado State University.


Dr. Gil Calvillo wears many hats as a communications and legal expert: he’s a coach, psychologist, and strategist, all in the service of helping his clients tell their story and be their best, most persuasive selves.

As a former NIH fellow in neuropsychology with a background in clinical psychology, Dr. Calvillo performed hundreds of patient evaluations that resulted in his becoming a leading expert in the field when it comes to assessing people’s cognitive, intellectual, and emotional ability. Today he uses his scientific training to evaluate clients, help them define their goals, and craft the strongest possible message for achieving those goals.

For litigators, Dr. Calvillo’s psychological expertise makes him uniquely qualified to prepare strong witnesses, draft voir dire questions, and assist with jury selection, including a keen ability to detect juror bias during voir dire. He has a particular interest in jurors from diverse backgrounds and cultures, examining how their perceptions and experience affect their verdicts, including decisions about damages.

For non-litigators, Calvillo and Associates supply feedback on presentation, including body language, pacing, eye contact and other crucial non-verbal signals that are essential to gaining an audience’s trust and approval.

The ultimate goal of Dr. Calvillo’s communications training is to increase confidence, for both legal and non-legal clients. 

He begins by helping craft a message that makes the complex simple, whether it’s how to explain a medical device to a jury, a scientific formula to potential investors, or hi-tech software to C-suite executives.  Once clients have mastered their subject, everything from presiding over a board meeting to presenting a jury summation becomes as compelling as it is clear and convincing.

Calvillo and Associates has conducted communications training and litigation research with regional, national and international corporations. The firm is based in Los Angeles, California.


Eric Lobenfeld's philosophy is to prepare each case as if it is going to trial. That puts the client in the strongest position to resolve the case, whether through settlement or through litigation to judgment.

Eric's work focuses on technology and life science intellectual property disputes. He has more than three decades of experience as a first-chair trial lawyer in patent, trademark, copyright, antitrust, unfair competition, and complex commercial cases. These include jury and non-jury trials in state and federal courts throughout the United States, as well as arbitrations and arguments in numerous state and federal appeals. He also handles post-grant review proceedings in the U.S. Patent & Trademark Office and has participated in Markman claim construction proceedings for more than 50 patents.

Eric represents companies in many industries, including computer hardware and software, pharmaceuticals and medical devices, bar code scanners and Radio Frequency Identification technology, Automated Teller Machines and web-enabled kiosks, semiconductor technology, television and motion picture technology, home and industrial lighting, and consumer electronics.

Eric is a regular panelist in the Practising Law Institute's annual two-day patent litigation program, where he has presented on expert issues and damages issues. He has also given a demonstration of a closing argument in a patent jury trial.


Fred Whitmer is the Managing Partner of the firm's New York office. He focuses his practice in intellectual property and business litigation. Mr. Whitmer's patent litigation experience has involved a wide array of technologies across many industries, ranging from the simple mechanical to complex computer software and systems patents, to medical devices and chemical products. He has successfully represented both plaintiffs and defendants in patent infringement matters. Mr. Whitmer has tried cases to successful verdict and appeal for nearly three decades in courts around the country in cases before both judges and juries.

Complementing his extensive intellectual property litigation experience, Mr. Whitmer has wide-ranging general litigation experience in several high profile matters, including in antitrust, telecommunications, libel, press rights, privacy issues and trade secrets. He has litigated complex matters on behalf of Fortune 100 clients throughout the country and abroad. Mr. Whitmer has also supplemented his trial experience with a substantial appellate practice, successfully representing both appellants and appellees.

Mr. Whitmer’s article titled “Claim Construction in Patent Cases: A Question of Law?” published in Landslide Vol. 2, No. 6 in July/August 2010 was cited in the dissenting opinion in the recent Phillips en banc decision in the U.S. Court of Appeals for the Federal Circuit.

In 2000, the National Law Journal named Mr. Whitmer one of the top 10 litigators then practicing with firms whose principal offices were New Jersey-based, saying, "Mr. Whitmer has appeared before the Supreme Court of New Jersey four times and won all four cases, including one that helped create the law interpreting the New Jersey Business Corporation Act and another, while representing two large media entities, that established rules for the press in court." He has also been listed for many years in Who's Who in American Law. Mr. Whitmer has been honored as a 2012 Top Rated Lawyer in Commercial Litigation by Martindale-Hubbell in the Litigation Special Report issue of The American Lawyer and Corporate Counsel magazines. Mr. Whitmer was recognized as a New York "Super Lawyer" in 2017 and the six years immediately preceding by Super Lawyers magazine. He was named an "IP Star" in 2017 and the four years immediately preceding by Managing Intellectual Property magazine. Mr. Whitmer is AV Preeminent® rated by Martindale-Hubbell.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. He regularly works on inter partes reviews and other adversarial proceedings in the USPTO, and trade secret, copyright, trademark and unfair competition matters. He also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

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

He has represented major U.S. and Asian companies in high-stakes disputes. Among Gene’s recent achievements are a stipulated judgment of noninfringement in the E.D. of Texas for a Korean electronics company (affirmed on appeal), and his successful representation through trial of the world’s largest alcoholic beverages company in the first investigation in the U.S. International Trade Commission’s pilot program for potential early disposition of cases.

Recognized by Chambers Global, IAM Patent 1000 and Managing IP for excellence, Gene regularly speaks, publishes and offers commentary on recent trends and important issues in patent law and IP litigation.


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 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. 


Keith R. Hummel is a partner in Cravath’s Litigation Department.

He has extensive experience litigating complex commercial, intellectual property and other legal disputes, both for plaintiffs and defendants. He handles cases for clients in diverse fields, including telecommunications, medical devices, computer hardware and software, food additives, luxury flooring products, pharmaceuticals and biotechnology. Mr. Hummel frequently advises clients on national and worldwide intellectual property strategy, and is often asked to lead efforts to identify IP assets that can be effectively used for offensive or defensive purposes.

Mr. Hummel was featured as the “Litigator of the Week” by The Am Law Litigation Daily for obtaining affirmance in the Second Circuit of the dismissal of two lawsuits against IBM brought by South African nationals who attempted to hold IBM accountable for apartheid under the Alien Tort Statute.


Margaret Ives, Partner in Choate’s Intellectual Property Litigation Group, has nearly 15 years of experience representing leading technology and life sciences companies in high stakes patent infringement litigation, including cases arising under the Hatch-Waxman Act and BPCIA. She has also represented clients in connection with inter partes review proceedings before the United States Patent and Trademark Office Patent Trial and Appeal Board. Regarded by clients as a practical, business-minded litigator, Meg has been repeatedly recognized as a Massachusetts Super Lawyer.

Meg’s recent experience includes:

  • Amgen, Inc. v. Adello Biologics, LLC: currently representing Adello in patent infringement action related to Adello’s abbreviated Biologics License Application for a biosimilar candidate referencing Amgen’s Neupogen
  • Foundation Medicine, Inc. v. Guardant Health, Inc., D Del & ED Tex: currently representing Foundation Medicine in patent infringement action related to genomic cancer testing using next generation sequencing.
  • Shire LLC v. Abhai LLC, D Mass: represented Shire in its Hatch-Waxman litigation related to ADDERALL XR®.
  • Maquet Cardiovascular LLC v. Saphena Medical, Inc., ND Cal: represented Saphena in its defense against Maquet’s claims of patent infringement, breach of contract and Lanham Act violations related to Saphena’s medical device for endoscopic vessel harvesting, and Saphena’s antitrust, unfair business practices, and tortious interference counterclaims.
  • Children’s Medical Center Corporation v. Celgene Corporation, D Mass: represented Celgene in breach of contract litigation regarding exclusive license agreement related to Revlimid® and Pomalyst® (treatments for cancer).
  • Green Cross Corporation v. Shire Human Genetic Therapies, PTAB: successfully defended Shire in IPR proceeding directed to Shire’s patented method for purifying I2S protein produced recombinantly for enzyme replacement therapy.

Meg is a member of the Boston Bar Association, the Boston Patent Law Association, and the Boston IP Inn of Court, and is Co-Chair of the BBA IP Litigation Committee. She is also on the Board of Directors of Pernet Family Health Services in Worcester, Massachusetts.


Michael Berta focuses his practice on intellectual property litigation, with experience in both patent and trade secret litigation across a wide range of technologies, including data storage systems and software, networking hardware and software, microprocessor and flash memory architecture, pharmaceuticals, medical devices, and consumer products. Mr. Berta has tried cases before judges and juries in federal court and before the International Trade Commission.


MICHAEL C. SMITH is the managing partner of Siebman Forrest’s Marshall office, where he assists clients with complex commercial and patent litigation in state and federal courts.

Mr. Smith, who has appeared as counsel of record in over 900 cases in the U.S. District Court for the Eastern District of Texas, served as chairman of the District’s Local Rules Advisory Committee from 2000-2009.  He has also been editor of the O’Connor’s Federal Rules * Civil Trials handbook on federal civil procedure since 1998, and maintains the nationally recognized Eastern District of Texas Federal Court Practice web log at www.EDTexweblog.com

Mr. Smith served on the Board of Directors of the State Bar of Texas from 2005-08, representing 24 counties in northeast Texas, where he was recognized as Outstanding Third Year Director.  He has chaired both the editorial board for the Texas Bar Journal, and the Litigation Section of the State Bar of Texas.  In 2016 the State Bar Board selected him as one of two nominees for President-elect of the State Bar of Texas. Mr. Smith is a past president of the Eastern District of Texas Bar Association, East Texas Trial Lawyers Association, and the Harrison County Bar Association, and is a charter member of the T. John Ward American Inn of Court, and an Associate of the American Board of Trial Advocates, where he has served as president for the East Texas ABOTA chapter. He is also a Life Fellow of the ABOTA Foundation, and a Sustaining Life Fellow of the Texas Bar Foundation.  He has been selected for inclusion in each of the Texas Super Lawyers lists since 2008, and is a recipient of the Texas Access to Justice Foundation’s Cy Pres: Impact on Justice award, TexasBarCLE’s Standing Ovation award, and the Sam B. Hall, Jr. Civic Service award from East Texas Baptist University.  In 2012, Texas Lawyer named Mr. Smith one of four Top Notch lawyers in Texas in the field of intellectual property.

Mr. Smith holds a law degree from Baylor University, a master’s degree in public administration from the LBJ School of Public Affairs at the University of Texas at Austin, and a bachelor’s degree from East Texas State University (now Texas A&M - Commerce). Before entering private practice, he served as a law clerk for the late U.S. District Judge Sam B. Hall, Jr. of the Eastern District of Texas, Marshall and Texarkana Divisions, and worked in Baylor University’s Office of General Counsel.  Prior to attending law school, Mr. Smith worked for the Texas General Land Office and the Texas Education Agency in Austin, Texas, and the National Commission to Prevent Infant Mortality in Washington, D.C.

Mr. Smith, a Marshall native, served on the Marshall City Commission for three terms, from 1996-2002, and is a former president of the Harrison County Historical Museum and the Citizens Advisory Committee and a current member of the Marshall Chamber of Commerce Board of Directors.  Mr. Smith is married to Harrison County Treasurer Jamie Marie Noland.  They have three sons, Grayson, 19 and twins Collin & Parker, 16. The Smiths attend St. Josephs Catholic Church in Marshall, where Mr. Smith serves on the finance and building committees. He is also a 27-year Fourth Degree Knight of Columbus and a Knight Commander of the Equestrian Order of the Holy Sepulchre of Jerusalem.

In addition to his legal writings, Mr. Smith is the sole inventor on two U.S. patents, the author of two books on aircraft carriers, and owner of a prominent Marshall pizza restaurant.  In 2010 he was recognized by the Marshall Historic Landmark Preservation Board for renovating the historic Hub Shoe Store offices for use by his law firm.


Rich Martinelli develops comprehensive IP strategies which resolve immediate legal needs and safeguard long-term business objectives. He handles all aspects of intellectual property, particularly patent litigation, patent prosecution and client counseling.

He has litigated patents at trial, before the ITC, and on appeal to the U.S. Court of Appeals for the Federal Circuit. Rich has counseled clients and rendered opinions on patent validity, infringement and freedom to use. In addition, he is a registered patent attorney with experience drafting patents and practicing before the U.S. Patent and Trademark Office.

Rich’s patent work has involved a wide range of technologies including image processing, 3d graphics, audio / video compression, computer hardware and software, e-commerce, network technologies, digital rights management and encryption.


Former U.S. District Judge Sue L. Robinson joined Farnan LLP after her retirement from the bench in July 2017. Her practice focuses on consulting in complex commercial litigation, mock trials and arguments, alternative dispute resolution, and arbitration.

Judge Robinson was a member of Delaware's busy district court for more than 25 years. Her public service has been recognized by such organizations as the Philadelphia Intellectual Property Law Association, the New Jersey Intellectual Property Law Association, the New York Intellectual Property Law Association, and the Intellectual Property Owners Education Foundation. During her tenure, she served as the first woman Chief Judge for the District of Delaware, as well as being selected to serve on the Judicial Conference of the United States. She was elected a member of the American Law Institute in 2015.

During her tenure on the bench, Judge Robinson presided over an extraordinary number of complex cases, primarily patent disputes (including the billion dollar stent litigation), but also trademark infringement, antitrust, contract, and securities disputes.

Prior to her appointment to the bench, Judge Robinson served as an Assistant United States Attorney and the United States Magistrate Judge for the District of Delaware.


George has over 30 years' experience in litigations and adversarial matters concerning all aspects of intellectual property, including patents, trade secrets, trademarks and copyrights. 

George has had considerable experience in major patent litigations (jury and non-jury) involving computers, semiconductors and pharmaceuticals, with particular emphasis on computerized automatic machinery and equipment and automobile parts. His successful trial of a major patent jury case involving computerized equipment for custom designed ductwork led to the largest intellectual property judgment nationwide in that year. His role as lead defense counsel for a large group of automobile importers led to the dismissal of a much publicized case brought by an alleged inventor of intermittent windshield wipers, even though the same plaintiff had previously secured multi-million dollar verdicts against two of Detroit’s big three automobile manufacturers.

George also counsels clients in patent and other intellectual property licensing matters, and has been involved in the licensing aspects of large merger and acquisition transactions.

He has spoken before domestic and international bar association groups, authored brochures advising the Japanese community on patent matters and appeared on a number of panels teaching licensing and patent litigation matters to other lawyers sponsored by the Practicing Law Institute and the American Conference Institute.

Practice Areas

Intellectual Property and Technology
IP Counseling and Licensing
Patent Litigation
Patent Trial and Appeal Board Proceedings
Patents

Professional Organization

The New York Intellectual Property Law Association; the American Intellectual Property Law Associate; The Licensing Executives Society; The International Intellectual Property Law Association (AIPPI); The American Bar Associate’s Litigation Section, Pretrial Practice and Discovery Committee, Intellectual Property Section and Antitrust Section.


I am a registered patent attorney and have been in the intellectual property field since 1990.  My background includes significant experience in patent licensing, prosecution and litigation.  I have worked with independent inventors and start-up businesses in a variety of different technology fields.  As an electrical engineer, I primarily work in the electrical and mechanical arts.

Professional History

  • 2010 to 2015 Concert Technology - licensing and prosecuting patents in the wireless streaming area
  • 2001 to 2010 Philips Electronics - licensing patents in the DVD and CD disc and player and LED technology areas
  • 2000 to 2001 Lawrence Livermore National Laboratory - prosecuting patents in a wide variety of basic research technologies
  • 1997 to 2000 Morgan & Finnegan, LLP - Associate
  • 1996 to 1997 Schmeiser, Olsen & Watts - Associate
  • 1990 to 1996 - Patent Examiner - primarily photocopiers and heat sink technology areas

Education

  • 1995 J.D., Cum Laude, Catholic University of America, Washington, DC
  • 1990 M.B.A., Union College, Schenectady, NY
  • 1986 B.S.E.E., Lafayette College, Easton, PA

Admissions to Practice

  • State Bar of California (No. 183114)
  • United States Patent & Trademark Office (Reg. No. 40,394)

Professional Associations

  • Licensing Executives Society
  • Silicon Valley Intellectual Property Law Association
  • San Francisco Intellectual Property Law Association


Mr. Schwechheimer specializes in the application of financial and economic analyses to complex business matters involving litigation, technology licensing, and valuation, including the use of econometric methods to apportion value among inputs in complex devices. He has performed research, given economic testimony, and provided consultation in intellectual property, licensing, commercial damages, and antitrust matters – including the evaluation of economic damages involving lost profits, reasonable royalties, price erosion, unjust enrichment, profit disgorgement, and prejudgment interest – in patent, copyright, trade secret, trademark, and antitrust cases. He has also overseen the analysis of fair, reasonable, and non-discriminatory (FRAND) commitments and the economics of licensing standard essential patents (SEPs) in arbitration matters, federal district court cases, and at the US International Trade Commission (ITC); assessed intellectual property valuation, monetization, and licensing; and evaluated antitrust liability and damages for patent misuse and monopolization, as well as damages arising from incorrect inventorship.

Mr. Schwechheimer's experience covers a diverse range of high-technology industries, including computer hardware and software, semiconductors, wireless communication technology such as WiFi and Bluetooth, cellular telephony and smartphones, LCD panels, video game consoles, slot machines, telecommunications equipment, manufacturing processes, medical devices, stent grafts, and pharmaceuticals.


Rachel advises clients on a wide range of U.S. Food and Drug Administration (FDA) regulatory matters, including life cycle management issues such as market exclusivity periods, Orange Book patent listings, Paragraph IV litigation, and patent term extensions. In addition, Rachel has extensive experience in all phases of Hatch-Waxman patent litigation. Rachel has represented clients in intellectual property disputes relating to a wide variety of technologies including pharmaceutical products, therapeutic antibodies, drug release rates, pharmacokinetic parameters, and new chemical entities.


Aaron Bernstein is Director of Bernstein IP Consulting, and previously Vice President for IP Litigation & IP Transactions, and Product Groups Legal Counsel for Zebra Technologies, Corp. Prior to Zebra’s acquisition of Motorola’s Enterprise Division which led to Aaron’s move to Zebra, Aaron was Lead Intellectual Property Counsel for Motorola Solutions, Inc., responsible for managing patent litigation for the corporation. Aaron joined Motorola when it acquired Symbol Technologies, Inc. where he held the position of Chief Patent Counsel. Prior to Symbol, Aaron served as Senior Patent Counsel for Intel, Corp. Prior to Intel, Aaron work for an earlier period at Motorola, and at the law firm of Knobbe, Martens, Olson and Bear. Mr. Bernstein attended California Western School of Law (JD, 1991), and obtained his BS in engineering at Harvey Mudd College (1987). Mr. Bernstein has also been a regular faculty for PLI’s patent bar review course.


Carolyn Blankenship is SVP, Associate General Counsel, Intellectual Property for Thomson Reuters.  She joined Reuters in 2001 and before that held a variety of IP-related positions as both in-house and outside counsel, including stints at Skadden, Arps and Priceline.com.

Carolyn leads the Corporate Legal Innovation, Product and Privacy Practice Group, with a focus on protecting and leveraging innovations throughout the company.  In addition, Carolyn oversees all patent litigation and supports the IP aspects of the company’s M&A activity. 

As an undergraduate, Carolyn attended the Massachusetts Institute of Technology for two years and went on to earn a B.A. in Biology from Harvard College.  She has a J.D. from Arizona State University College of Law and clerked for the Hon. Noel Fidel of the  Arizona State Court of Appeals.


Carol White is an IP attorney with WL Gore & Associates, Inc, headquartered in Newark, Delaware. She coordinates a variety of IP needs for the company, including patent application preparation, client counselling, licensing and litigation matters.


Katharine Wolanyk is a Managing Director of Burford Capital, where she is the head of the Chicago Office as well as of Burford’s Intellectual Property business. With experience spanning the business, legal and engineering sectors, she has been President of Soverain Software, an attorney at Latham & Watkins LLP and a systems engineer at Hughes Aircraft Company. She was named a World’s Leading IP Strategist by Intellectual Asset Management (IAM) in 2015, 2016 and 2017.