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USPTO Post-Grant Patent Trials 2017


Speaker(s): David L. McCombs, Eldora L. Ellison, Ph.D., Hans Sauer, Ph.D., Hon. Faith S. Hochberg, Hon. Scott R. Boalick, Jason E. Stach, Jonathan Stroud, Kevin J. Post, Leslie Fischer, Ph.D., Lisa A. Samuels, Meredith Martin Addy, Naveen Modi, Rekha Hanu, Ph.D., Robert Greene Sterne, Scott A. McKeown, Timothy E. Bianchi, W. Todd Baker
Recorded on: Sep. 25, 2017
PLI Program #: 186786

Deputy Chief Judge Boalick was appointed as an Administrative Patent Judge in April 2007.  Prior to his appointment to the Board, Deputy Chief Judge Boalick served as a patent attorney with the Department of the Navy at two different laboratories.  Before that he served as an associate at the law firm of Fish & Richardson.  Prior to entering private practice, Deputy Chief Judge Boalick served as a Judicial Law Clerk to the Honorable Alvin A. Schall of the United States Court of Appeals for the Federal Circuit.  Deputy Chief Judge Boalick earned a law degree, magna cum laude, from the Georgetown University Law Center where he was a Notes and Comments Editor of The Georgetown Law Journal and received the Leon Robbin Patent Award.  He earned both a M.S.E. degree in Systems Engineering and a B.S.E. degree in Electrical Engineering, magna cum laude, from the University of Pennsylvania.


Jonathan Stroud, a former patent examiner and litigator for Finnegan, Henderson, Farabow, Garrett & Dunner LLP, has litigated, examined, prosecuted, negotiated, and counseled clients through patent disputes, focusing on the patentability disputes before the Patent Trial and Appeals Board (PTAB) and their complex interactions with other forms of litigation.

At the USPTO for five years, Mr. Stroud examined medical devices, such as minimally invasive surgical devices, stents, shunts, bone implants, heart valves, cutters, spacers, electrodes, and many other medical technologies. Mr. Stroud interned at the U.S. International Trade Commission for Judge Robert K. Rogers, where he focused on discovery disputes in administrative proceedings.

At Finnegan, he represented clients such as LG, Eli Lilly & Co., BMW, Bausch & Lomb, and Freedom Innovations on dozens of covered business method (CBM), post-grant (PGR), and inter partes reviews (IPRs) for both patent owners and petitioners, drafting petitions, responses, and motions. He drafted a CBM filed the first night of the proceedings’ availability that resulted in all claims being held unpatentable.

He now manages outside counsel, settlement and licensing negotiations, prior art analysis, legal strategy, and prepares, drafts, and files IPR proceedings for Unified.

He earned his J.D. with honors from American University Washington College of Law; his B.S. in biomedical engineering from Tulane University; and his M.A. in print journalism from the University of Southern California.


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.


Dr. Leslie Fischer, Ph.D., J.D. is a Principal Patent Attorney at Novartis Pharmaceuticals Corp. in East Hanover, NJ.  She focuses on global patent prosecution, freedom to operate, regulatory exclusivity, licensing, contractual negotiations, and due diligences.  Her technology area of expertise is biopharmaceutical products, particularly for the treatment of autoimmune diseases.  Dr. Fischer is also Novartis Pharmaceutical’s designated liaison to the United States Patent Office (USPTO), a role created to enhance the relationship, facilitate dialogue, and share information between these entities.  She also teaches mechanical patent claim drafting as an adjunct professor of law at Seton Hall Law School, in Newark, NJ. 

Prior to joining Novartis in 2007, Dr. Fischer was an associate attorney at Fitzpatrick, Cella, Harper and Scinto in New York, during which time she provided detailed opinion work for a broad range of clients, consulted on biotechnology litigation, and performed pharmaceutical and biotechnology patent prosecution.

Dr. Fischer holds a J.D. from Rutgers University, and a Ph.D. in Biochemistry from Thomas Jefferson University in Philadelphia. Her Ph.D. thesis focused on the interaction of Bone Morphogenetic Proteins and Wnts during mouse limb development, with her work appearing in Osteoarthritis and Cartilage, the Journal of Cellular Biochemistry, and the Journal of Biological Chemistry.

Dr. Fischer has appeared as a speaker and panelist in numerous public forums.  Most recently, she presented on patent subject matter eligibility at the 14th Annual Advanced Patent Law Institute, which was sponsored by the University of Texas School of Law and the USPTO, March 21-22, 2019, Alexandria, VA.  For the past five years, she has also acted as a panelist and co-chair of American Conference Institute’s “Advanced Summit on Life Sciences Patents" meeting, which is held yearly in New York, NY.


Jason Stach leads Finnegan’s PTAB trials practice. He practices patent law with an emphasis on post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) and litigation in district courts and at the U.S. International Trade Commission (ITC). He has been lead or back-up counsel in more than 80 Patent Trial and Appeal Board (PTAB) trials, including inter partes reviews (IPRs), covered business method reviews (CBMs), and post-grant reviews (PGRs), and has consulted on dozens of other PTAB trials. Mr. Stach also represents clients before the U.S. Court of Appeals for the Federal Circuit in appeals stemming from PTAB decisions and court actions. In addition to his trial experience, he has taken and defended dozens of depositions, and has argued before the PTAB, at district court claim construction and summary judgment hearings, and at ITC hearings.

In leading the PTAB trials section, Mr. Stach coordinates the firm’s PTAB training programs, workflow, and other aspects of the practice. He also serves as the recruiting partner for Finnegan’s Atlanta office, overseeing the office’s summer associate program and its other recruiting efforts. His pro bono experience includes representing veterans of military service before the U.S. Court of Appeals for Veterans Claims.

Mr. Stach handles cases involving many different technologies, including electrical, computer, software, chemical, pharmaceutical, medical device, and mechanical technologies. Examples include extracting baseband signals from carrier signals in an energy-efficient manner; improving commercial aircraft engines; improving high-speed chip-to-chip signaling techniques using equalization; securing communications over the Internet and other networks; enhancing the control of dynamic random access memory (DRAM) devices; and creating groundbreaking sports sensor technology.


Meredith “Mimi” Addy is a deeply experienced intellectual property litigator, business and legal strategist, and consultant. Addy has handled more than 30 cases before trial courts and argued more than 40 appeals to the Federal Circuit. She has held leadership positions at several AmLaw100 firms, and is a recipient of many awards and honors. Addy is partner at litigation boutique Tabet DiVito & Rothstein in Chicago, and she also consults to executive teams on the most efficient strategies for realizing their IP goals. Addy has testified before Congress to address issues relating to the Federal Circuit and the state of patent law.  She has been a member of the Federal Circuit’s Advisory Council and a member of the board of directors of the Federal Circuit Bar Association.  Addy is also a founder of the Richard Linn American Inn of Court, which is directed to intellectual property, and served as its first president. Recently, Law360 named her one of the Most Influential Women in IP Law.


Naveen Modi is the Global Vice Chair of the Intellectual Property group at Paul Hastings, overseeing the firm’s Global Intellectual Property group consisting of more than 100 attorneys. He also serves as the head of the firm’s Patent Office practice.

Mr. Modi’s practice includes all aspects of patent-related work, including litigation, post-grant proceedings, and appeals. Having been involved in well over 300 post-grant proceedings, including inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, and reexamination proceedings, Mr. Modi is one of the foremost experts in challenging and defending patents before the USPTO including its Patent Trial and Appeal Board (PTAB). In 2015, Mr. Modi was involved in the most number of PTAB proceedings than any other practitioner in the United States.

Chambers USA recognized Mr. Modi as an expert in post-grant proceedings noting that he “earns effusive praise from clients, who describe him as ‘a brilliant litigator.’ Managing Intellectual Property recognized him as Outstanding IP Litigator of the Year for PTAB and named him as an IP Star. In addition, Mr. Modi was recognized as the Post Grant Proceedings Attorney of the Year at the LMG Life Sciences Awards.

Mr. Modi’s practice encompasses a range of technical areas, including electronics, semiconductor devices, networking, software, business methods, medical devices, and pharmaceuticals.

Mr. Modi teaches courses on appellate practice, including Federal Circuit Practice, at George Mason University School of Law, and he has lectured nationally and internationally on various patent topics.

He currently serves as the Vice President for the PTAB Bar Association.

Education and Professional Involvement

  • George Mason University School of Law, J.D., magna cum laude, 2001
  • George Mason University, B.S., Electrical Engineering, with high distinction, 1998
  • Served as a law clerk to the Honorable Alvin Anthony Schall at the U.S. Court of Appeals for the Federal Circuit from 2002-2003.


Rekha Hanu is Executive Director, Chief IP Counsel at Akorn, Inc., having responsibility for Hatch-Waxman litigation, patent and trademark prosecution, licensing, and due diligence matters. Akorn is a niche pharmaceutical company engaged in the development, manufacture and marketing of multisource and branded pharmaceuticals. Akorn is headquartered in Lake Forest, Illinois and has manufacturing facilities located in Decatur, Illinois; Somerset, New Jersey; Amityville, New York; and Paonta Sahib, India.

Hanu joined Akorn after practicing law in the Chicago law firms, Duane Morris and Bell Boyd & Lloyd, later K&L Gates. She is admitted to practice in Illinois and before the US Patent and Trademark Office. Her experience prior to patent law includes that of a postdoctoral scientist, stints as a management consultant, in sales, and marketing in the pharmaceutical industry.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP specialty firm and 337th largest US law firm.


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


The Honorable Faith S. Hochberg is a nationally recognized U.S. Federal Judge and former United States Attorney known for her broad expertise in complex corporate, securities, antitrust and patent litigation. She retired from the bench in 2015 and founded Hochberg ADR, which provides mediation, arbitration and strategic advisory services. She is also a distinguished neutral on the rosters of AAA, ICDR, Federal Arbitration, CPR, WIPO, ITC and ICC. Additional information is available on the website, www.JudgeHochberg.com.

Judge Hochberg was twice nominated by the President, and confirmed by the Senate, first as United States Attorney and thereafter a United States District Judge. She has presided over thousands of federal cases: class actions; Securities; Banking; Patent, Copyright & Trademark; Pharmaceuticals, Antitrust; Insurance; Federal Arbitration Act; and Corporate Contract and Partnership matters. Judge Hochberg has exceptional expertise in patent cases, as well as nationwide cases where she was appointed by the Judicial Panel on Multi District Litigation. She has been invited to speak nationwide and abroad about U.S. litigation.

Judge Hochberg has presided by designation with the Federal Circuit Court of Appeals and has served as a Patent Pilot judge. She was honored as the first Fellow of the Innovation Center for Law and Technology at New York Law School in recognition of her contribution to the advancement of intellectual property law. She also serves on its Advisory Board, together with entrepreneurs and business leaders.

Judge Hochberg previously served as the United States Attorney for the District of New Jersey, and Deputy Assistant Secretary of the United States Treasury Department, as well as in the private practice of law.

Judge Hochberg graduated from Harvard Law School, magna cum laude, where she was an Editor of the Harvard Law Review, and a B.A., summa cum laude, from Tufts University. She was elected to Phi Beta Kappa. She also attended the London School of Economics.


W. Todd Baker is Chair of the firm’s Post-Grant patent practice group and a member of the firm’s Management Committee.  He has significant experience handling patent prosecution and post-grant proceedings at the USPTO, including all aspects of reissue applications, ex parte reexamination, IPR proceedings and appeals to the USPTO’s Patent Trial and Appeal Board (PTAB).  Mr. Baker frequently advises his clients on alternatives to traditional litigation-based patent validity challenges, issues of priority, patentability, derivation, inventorship, and licensing related to patent interference matters before the PTAB.

Mr. Baker prepares and prosecutes patent applications in diversified electrical and mechanical technologies, including artificial intelligence (AI), automotive related technologies – such as autonomous vehicles, clean technologies, dynamic control systems, medical devices and wireless innovation. 


Eldora L. Ellison, Ph.D., is a director in Sterne Kessler’s Biotechnology & Chemical and Trial & Appellate Practice Groups. Over the course of her 24-year career, Eldora has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Her experience includes representing clients in over 60 inter partes review and post-grant review proceedings, more than 15 patent interferences, and in various patent reexaminations and district court litigations. For example, Eldora was lead counsel on behalf of patent owner ImmunoGen in Phigenix v. ImmunoGen, 845 F.3d 1168 (Fed. Cir. 2017), in which the Federal Circuit — for the first time since the Court’s inception — established the legal standard for demonstrating standing in an appeal from a final agency action.  The Court subsequently dismissed Phigenix’s IPR appeal for lack of standing. Eldora’s practice also includes preparing and prosecuting patent applications; evaluating patent portfolios (e.g., for due diligence analyses, invalidity, non-infringement, or freedom-to-operate); counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. She represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations.

Eldora has been recognized as a leading practitioner in the life sciences, and she has served as an expert witness on patent matters. In 2017, LMG Life Sciences named Eldora their "Post Grant Proceedings Attorney of the Year." The National Law Journal recognized her as one of its "Top 50 Litigation Trailblazers. Managing Intellectual Property nominated her for its "PTAB Litigator of the Year" award, and it has named her an "IP Star" in 2017 for the fifth year in a row, while also including her in their "Top 250 Women in IP." LMG Life Sciences nominated her for its "Patent Prosecutor of the Year" award as well as "PTAB Litigator of the Year" in 2016, and it has named her a "Life Sciences Star" three times. In 2016, Profiles in Diversity Journal listed her among "Women Worth Watching." In 2016, IAM Patent 1000 named her as one of the world's leading patent professionals and "highly recommended" for post-grant and procedures and litigation.


Hans Sauer is deputy general counsel and Vice President for Intellectual Property for the Biotechnology Innovation Organization (BIO), a major trade association representing more than 1,100 biotechnology companies from the medical, agricultural, environmental, and industrial sectors. At BIO, he advises the organization’s board of directors, amicus committee, and various staff committees on patent and other intellectual-property-related matters. Before taking his current position at BIO in 2006, he was chief patent counsel for MGI Pharma Inc. in Bloomington, MN, and senior patent counsel for Guilford Pharmaceuticals Inc. in Baltimore, MD. Mr. Sauer holds a M.S. degree in biology from the University of Ulm in his native Germany, a Ph.D. in neuroscience from the University of Lund, Sweden, and a J.D. degree from Georgetown University Law Center, where he serves as adjunct professor.


Kevin Post works extensively with high-technology and life science companies handling their complex patent disputes. He has litigated patent cases in nearly every significant patent jurisdiction, including the International Trade Commission, the District of Delaware, the Northern District of California, the Eastern District of Texas, the Eastern District of Virginia, the Patent Trial and Appeal Board, and the Court of Appeals for the Federal Circuit on behalf of companies in a variety of technical fields, including telecommunications, electronics, computer systems and software, network architecture and security, e-payments, e-commerce, imaging systems, GPS technology, process control systems, mechanical devices, pharmaceuticals, and biotechnology. Kevin has tried multiple cases involving standard-essential patents and RAND licensing issues, including breach of contract cases. From providing licensing support, patent portfolio analysis and due diligence to handling all aspects of trial preparation and trial, Kevin’s experience has touched on all phases of IP litigation.


Lisa Samuels is Senior Corporate Counsel at Pfizer Inc. where she co-leads Pfizer’s U.S. Post-Grant Proceedings and Patent Term Extension/Patent Linkage Teams. Her work focuses on patent prosecution, post-grant proceedings including reissue and inter partes review, patent term extensions, and patent linkage.


Timothy E. Bianchi is a principal of Schwegman Lundberg & Woessner, P.A. He is active in patent procurement, patent challenges, opinions, due diligence, acquisitions, and patent litigation strategy.  Mr. Bianchi represents patent owners and petitioners in inter partes reviews (IPRs) and reexaminations, many of which are involved in concurrent litigation. His background is in medical devices, signal processing, communication electronics, computer hardware, and software.  He has electrical engineering and research experience from employment with IBM, Honeywell, and the University of Minnesota.  Intellectual Asset Magazine has included him in its “IAM Strategy 300” and “IAM 1000” listings of the world's leading patent attorneys, and ranked him as “Highly Recommended.”  Managing Intellectual Property named him “PTAB Litigator of the Year” and an “IP Star.” His blog (www.ReexamLink.com) covers the dynamics and strategies of patent procurement, patent challenges, and patent litigation.