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Patent Law Institute 2018: Critical Issues & Best Practices

Speaker(s): Annemarie Hassett, Catherine J. Toppin, D. Brian Kacedon, Diana G. Santos, Douglas R. Nemec, Gerald M. Murphy, Jr., Heather Champion Brady, Hon. K. Nicole Mitchell, Hon. Paul R. Michel (Ret.), James E. Hanft, James Jun Pan, John M. White, Jon R. Trembath, Judson Cary, Kathleen Fonda, Kevin B. Jordan, Laura Donnelly, Mark C. Vallone, Mark J. Schildkraut, Mark Polutta, Prof. David Hricik, Prof. Lisa A. Dolak, Raina S. Haque, Robert D. Wells, Robert DeBerardine, Robert J. Sinnema, Ryan D. Phillips, Ryan Pohlman, Scott M. Alter, Steven P. Klocinski, Tobias Hahn, Tony E. Piotrowski, Valerie Calloway
Recorded on: Apr. 5, 2018
PLI Program #: 219199

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.

Catherine Toppin began her career as an Examiner with the USPTO before joining a Boston based law firm, as an Associate.  Prior to joining CBW, Ms. Toppin held the role of Senior Patent Counsel and Manager with the Global Patent Operation of General Electric’s Corporate legal department.  She earned her Bachelors in Electrical Engineering from Princeton University and her Juris Doctor from the University of Maryland Francis King Carey School of Law.

During her seven years with GE, Ms. Toppin managed a global team of attorneys and patent agents, developed IP strategy for a number of business divisions, and provided transactional support for GE Ventures Licensing.  Her wide range of experience also includes, drafting and prosecuting patent applications in the electrical/mechanical arts (e.g., software, telecommunications, semiconductor fabrication, medical devices, business methods); preparing and prosecuting trademark portfolios for international clients; conducting patent/trademark due diligence; drafting freedom to operate & validity opinions and processes; and providing IP litigation support.

Ms. Toppin is a frequent guest speaker throughout the country on Intellectual Property matters.  She has received a number of awards for her professional and extracurricular endeavors, most recently the National Bar Association’s Diversity in Tech Award, and the Network Journal’s 40 under Forty Achievement Award.  Her current non-profit board involvement includes service as a member of the Princeton University School of Engineering and Applied Sciences Leadership Advisory Council, board member of the Association of Black Princeton Alumni, and Secretary of the board of directors of New England Blacks in Philanthropy.  In her spare time, Ms. Toppin enjoys playing the violin with the New Westchester Symphony orchestra.

Gerald Murphy has practiced in the intellectual property field for over 40 years, mostly in relation to U.S. and foreign patents for biotechnology, biopharmaceuticals, therapeutic antibodies, organic chemistry, chemical engineering, biochemistry and pharmaceutical inventions.  He works mostly with medium to large internal corporations.  In addition to preparation and prosecution of patent applications and related appeals, Mr. Murphy has handled patent reexaminations and has been lead counsel in a numerous inter partes matters at the USPTO such as interferences and Inter Partes Reviews.  He has also been lead counsel in several appeals to the Court of Appeals for the Federal Circuit.

In addition to handling matters at the USPTO, Mr. Murphy counsels clients in various IP matters such as patent validity and infringement.  He has lectured extensively before U.S. and international audiences on U.S. patent law and case law developments. He served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in patent infringement litigations and in an arbitration involving a patent license agreement.

Mr. Murphy chairs BSKB's annual Post Grant Bootcamp, an intensive 4 day program on procedures that are available to correct, defend and challenge patents at the USPTO and before the Patent Trial and Appeal Board.

Mr. Murphy graduated from University of Maryland in 1976.  After taking off several years after graduation, he then attended George Mason University School of Law for his J.D. and then attended George Washington University National Law Center where he attained his LL.M.

Heather Champion Brady is a registered patent attorney with experience in litigation and intellectual property and technology matters. Heather currently serves as Senior Patent Counsel at Johnson & Johnson where she provides a full range of support to the medical device sector advising on intellectual property protection, opining on patent validity and infringement, drafting and negotiating agreements including complex license and research collaboration agreements, training business partners on intellectual property and general legal issues, preparing and prosecuting patent applications, conducting freedom-to-operate analyses, rendering opinions, managing outside counsel, conducting due diligence support for business development and client counseling. Prior to joining Johnson & Johnson, Heather worked at Morgan & Finnegan, an IP law firm in New York City, and Morris, Manning & Martin, LLP, a general practice firm in Atlanta, where she engaged in all aspects of intellectual property law, including patent and trademark litigation and prosecution, as well as other transactional matters. Heather has experience in the following areas: medical devices, biomaterials, biotechnology, mechanical, pharmaceuticals and computer-implemented business methods. She obtained her law degree from the University of Pittsburgh School of Law and her bachelor’s degree in Molecular Biology/Biotechnology from the Clarion University of Pennsylvania (summa cum laude).

Jon is a Partner in Michael Best’s Intellectual Property and Litigation practices. He has nearly 30 years of experience in patent litigation in trial and appellate courts as well as post-grant proceedings. Jon is a zealous advocate for companies pursuing or defending patent challenges. He has the courtroom experience and technical expertise to effectively litigate complex legal issues and has established a record of success in trials and appeals around the country. He also has significant experience representing patent owners and petitioners in inter partes review proceedings before the Patent Trial and Appeal Board and appeals to the Federal Circuit. Jon represents clients in a number of technology-driven industries, including manufacturing, software, mining, electronics, energy, and agriculture. He earned his J.D. and his B.S. in Civil Engineering at Brigham Young University in Utah.

Judge Mitchell, a native Texan, was born and raised 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 (now Norton Rose Fulbright) in Houston, Texas.  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.   In addition, Judge Mitchell serves as an adjunct faculty member at Baylor Law School where she regularly teaches in the Baylor Law Academy of the Advocate study abroad program in St. Andrews, Scotland.

When not working, Judge Mitchell enjoys running, fishing, and spending time with her husband and four active boys.

Laura graduated from Cook College, Rutgers University with a B.S. in Biochemistry in 1988.  She then conducted research on phospholipid metabolism under a grant from the American Arthritis Foundation at the University of Medicine and Dentistry, Piscataway, NJ.  After that, she worked as a litigation paralegal at Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York, NY on biotech, chemical and pharmaceutical patent cases, including Amgen, Inc. and Ortho Pharmaceutical Corp. v. Chugai Pharmaceutical Co., Ltd. and Genetics Institute, Inc.  After graduating from the University of New Hampshire School of Law in 1994, Laura first worked as an associate at Oliff & Berridge, Alexandria, VA, doing biotech and chemical patent prosecution, client counseling, licensing and litigation where she represented the National Institutes of Health, various universities and small and large companies.  She then represented small and large biotech and pharmaceutical companies doing biotech, chemical and pharmaceutical patent prosecution, client counseling, licensing and litigation in Washington, DC in the law firms of McDermott, Will & Emery; Long Aldridge & Norman; Piper Marbury Rudnick & Wolfe; and Patton Boggs, where she made partner in 2002.  Since 2003, Laura has been a member of Johnson & Johnson's law department, where she currently leads IP strategy for a number of Johnson & Johnson’s Consumer and Pharmaceutical business units.

Lisa A. Dolak is Senior Vice President and University Secretary at Syracuse University, and the Angela S. Cooney Professor of Law at the Syracuse University College of Law.  As University Secretary, Professor Dolak supports the overall work of the Board and manages the Office of the Board of Trustees. She teaches courses on patent law, civil procedure and the federal courts, and serves as an expert in patent cases, attorney malpractice cases, and practitioner disciplinary proceedings.

During a sabbatical leave from Syracuse University, she served as law clerk to the Hon. Paul R. Michel, Judge (Ret.), United States Court of Appeals for the Federal Circuit.  She served during 2005-2013 as a member of the Federal Circuit’s Advisory Council.  

Prior to attending law school, Prof. Dolak worked for several years as a synthetic organic chemist in pharmaceutical research aimed at the development of new drugs at Bristol-Myers Company and Ayerst Laboratories Research, Inc.

Prof. Dolak received her Bachelor of Science in chemistry from Duquesne University and her Juris Doctor, summa cum laude, from the Syracuse University College of Law.  She is admitted to practice in New York and before the U.S. Patent and Trademark Office.  Her research interests include issues at the intersections of patent law and judicial procedure and patent law and legal ethics.  Representative publications include:

Trial Lawyers in Trouble: Litigation Misconduct and Its Ethics Fallout, 52 U. LOUISVILLE L. REV. 225 (2014)
Litigating Inequitable Conduct after Therasense, Exergen, and the AIA:  Lessons for Litigants, Options for Owners, 13 CHI.-KENT J. INTELL. PROP. 51 (Fall 2013)
America Invents the Supplemental Examination But Retains the Duty of Candor:  Questions and Implications, 6 AKRON I.P. J. 147 (2012)
Ethics in Intellectual Property Negotiations:  Issues and Illustrations, 40 AIPLA Q.J. 197 (2012) 
One Patent, Two Paths:  Federal Circuit Review of Divergent USPTO and District Court Decisions, 4 No. 2 Landslide 22 (2011)
The United States Patent System in the Media Mirror, 58 SYR. L. REV. 459 (2008) (with Blaine T. Bettinger, Ph.D.)
Power or Prudence: Toward a Better Standard for Evaluating Patent Litigants’ Access to the Declaratory Judgment Remedy, 41 U.S.F. L. REV. 407 (2007)

Mark Schildkraut is Associate General Counsel-IP and Worldwide Cybersecurity Counsel at Becton, Dickinson and Company (BD), a Fortune 500 medical device and instrumentation technology company that develops, manufactures and sells medical devices, instrument systems and reagents.

Mark has responsibility for and leads a team of IP associates that handles intellectual property matters concerning BD’s Pharmaceutical Systems, Diabetes Care, Specimen Management and Biosurgery business units.  These matters include patent and trade secret protection, drafting and negotiating technology and commercial agreements, product clearance and client counseling.

Mark handles BD’s IP litigations across the company, including its patent infringement and trade secret misappropriation cases in the US and abroad, as well as inter partes review (IPR) proceedings.

Mark is also responsible for establishing legal strategy and counsel on trade secrets as well as enforcement issues relating to the infiltration of BD’s information network and product offerings and exfiltration of BD’s sensitive information.  Particularly noteworthy was Mark’s involvement in BD v. Maniar and US v. Maniar, resulting in the guilty plea of two counts of theft and attempted theft of trade secrets.  He has also been involved with criminal prosecutions in Utah and Illinois, as well as civil enforcement in California and China.

Mark has been an associate with BD’s Legal Department since 2005. 

Prior to joining BD, Mark was an associate at Kaye Scholer LLP and Morgan & Finnegan LLP, focusing on patent litigation, IP clearance and prosecution matters.  Mark received his J.D. from Fordham University’s School of Law and a B.S. in Electrical Engineering from the State University of New York at Buffalo.

Mark Vallone is Lead IP Counsel of IBM's Cloud and Watson Customer Engagement business units, for which he leads transactions, product support, defensive analysis of third party patents, and U.S. patent procurement operations. He additionally leads U.S. patent procurement operations for IBM's Global Technology Services, Global Business Services, and Global Markets business units. Mr. Vallone formerly led the team responsible for IBM's U.S. Patent Procedures manual followed by all IBM's in-house and outside counsels, and he continues to actively participate in patent policy related matters for the company. 

Mr. Vallone received his B.S. in Computer Science from The Pennsylvania State University in 1998, after which he spent five years as a software developer for IBM in the areas of network security, distributed computing, and e-commerce.  He received his J.D., summa cum laude, from Syracuse University in 2006.  He is a registered to practice before the U.S. Patent and Trademark Office and is a member of the New York State Bar.

Mr. Kacedon is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, where his practice focuses on patent and technology licensing and patent litigation.  Mr. Kacedon assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. Over the course of his career, he has drafted hundreds of patent, know-how, and software license agreements as well as collaboration and joint development agreements in many industries, including pharmaceutical, medical device, and consumer electronics.  He has also assisted several leading technology companies in negotiating and drafting licenses for wireless technologies as well as navigating related standards-setting issues. In addition, Mr. Kacedon has broad experience in all aspects of patent litigation.

A frequent presenter at workshops and conferences, Mr. Kacedon has lectured on drafting patent and know-how licenses for the Patent Resources Group, the Licensing Executives Society, as well as other organizations and is currently an Adjunct Professor at George Washington University Law School.  Mr. Kacedon is also co-author of a leading treatise, “Drafting Patent License Agreements.” He has been recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, and as a Next Generation Lawyer for patent licensing. He is listed in Intellectual Asset Management (IAM) magazine as one of 250 of the world's leading patent and technology licensing practitioners.

Mr. Klocinski is Senior Managing Counsel and Senior Intellectual Property Counsel at MasterCard Worldwide, a global technology company and payments industry leader. As an intellectual property professional with more than 25 years of experience cutting across the private and public sectors, Mr. Klocinski has successfully worked with a broad range of technologies including computer software, electronics, advanced business processes, telecommunications, semiconductors and acoustics. Mr. Klocinski's specialties include intellectual property strategy (with an emphasis on patent portfolio building and management), intellectual property risk mitigation and dispute resolution and treatment of intellectual property in commercial agreements. Prior to joining MasterCard in March 2012, Mr. Klocinski was a Vice-President and Assistant General Counsel at CA, Inc. for six years. As Assistant General Counsel, he designed and implemented the company's patent program, directed the preparation and prosecution of patent applications, managed intellectual property risk mitigation, supported IP issues in mergers and acquisitions and litigation, managed trademark clearance, filing, prosecution and dispute resolution and managed CA’s copyright program. For three years, starting in 2001, Mr. Klocinski was Assistant General Counsel at Capital One Financial. His responsibilities included, managing invention intake, preparing and prosecuting of patent applications, designing and implementing patent strategy, managing patent risk mitigation, and consulting on patent issues in mergers and acquisitions. In addition to his corporate experience, Mr. Klocinski has also practiced with the Washington D.C. offices of Baker Botts, Hunton & Williams and Finnegan, Henderson, Farrabow, Garret & Duner. Mr. Klocinski's private practice experience focused on patent prosecution, patent portfolio management, patent litigation and risk mitigation and general intellectual property client counseling. Prior to and while enrolled in Law School at Georgetown University Law Center, Mr. Klocinski worked as an Examiner at the U.S. Patent and Trademark Office where he researched and prepared official actions and appeal briefs for United States patent applications and PCT applications related to image analysis. Mr. Klocinski holds a J.D. from Georgetown Law School and a B.S. in Electrical Engineering from Ohio State University.

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.

Raina Haque is a Professor of Practice of Technology who focuses on computational law & emergent technologies. She is also the founder and lead attorney of Erdos Intellectual Property Law + Startup Legal. Prior to joining the legal profession, she was a fintech business analyst and software engineer at a major Wall Street financial firm in New York City working in (ironically) clearance, trade, and settlement and global portfolio technologies. She was a research fellow at the National Institutes of Environmental Health Sciences in the Neurotoxicology and Nuclear Magnetic Resonance labs working on artificial deep neural network applications. She is among the first patent attorneys to work in the blockchain technologies space and has written several articles on guidance on IP-related matters. She's called to train attorneys in the blockchain space at major law schools and professional lecture series in New York City and Silicon Valley. She is a leading contributor to the North Carolina Bar Association's Future of the Law annual report on blockchain technologies. In Spring 2019, she will be leading in-depth courses where students and executives will not only learn about the technologies and cryptoventures, but also get a taste of programming in Solidity and alpha and beta test cutting-edge smart contract technologies. She advises a number of state regulatory bodies regarding emerging technologies.

Other courses she is preparing speak to advances in artificial intelligence technologies and applications, neurotechnology, online court systems, and data analytics. She practices in the realm of emerging technologies, helping to develop soft law that will guide hard law. She is passionate about the interdisciplinary role that this coming generation of jurists can and must take in the burgeoning realm of emergent technologies and entrepreneurialism. She offers practical insight into developing a lean, modern, and leading practice from the ground up in "Law 469: Technology and Modern Law Practice." She is teaching one of the first in-depth law courses in blockchain technology, entitled "Coded Governance: The Law and Blockchain, Smart Contracts, and Cryptoventures."

Robert DeBerardine is Worldwide Vice President, Chief Intellectual Property Counsel of Johnson & Johnson where he manages a group of about 270 IP professionals, of whom about 110 are patent and trademark attorneys.

Before joining Johnson & Johnson, Robert was Chief Intellectual Property Counsel for Sanofi. Prior to Sanofi, Robert served as Chief Intellectual Property Counsel for Abbott Laboratories.  Prior to working in-house, Robert practiced at two international law firms where he handled transactional intellectual property matters and intellectual property litigation.

Robert has a BS in Chemical Engineering from Lafayette College and a JD from Cornell University.

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.  

Bob is the Intellectual Property Counsel, for Sikorsky, a Lockheed Martin Company.  In this role, he leads a team of IP professionals and is responsible for overseeing intellectual property activities across the company.  This includes advising management about IP protection and risk mitigation, supervising preparation and filing of U.S. and foreign patent applications and negotiating contracts involving significant intellectual property rights.

Bob joined Sikorsky Aircraft Corporation in 2014.  Prior to that, he was with a variety of United Technologies Corporation businesses, beginning as Assistant IP Counsel for Hamilton Sundstrand Corporation, then as Deputy IP Counsel for UTC Building and Industrial Systems.  Before joining UTC, Bob was an associate with the law firm Bond, Schoeneck & King, where he advised and represented clients on a variety of IP matters. Bob also served in the United States Army as an infantry officer. Bob holds a Bachelor of Science from the United States Military Academy, a Master of Arts in Military History from the University of Calgary, and a Law Degree from Syracuse University College of Law.

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.

Judson Cary is Vice President & Deputy General Counsel at CableLabs, a non-profit research and development organization owned by the global cable industry.  He also serves as General Counsel of the Society of Cable and Telecommunications Engineers (SCTE), the ANSI-accredited standards body for the cable industry. 

Prior to becoming a lawyer, Mr. Cary worked as an engineer in the Artificial Intelligence Group of U S WEST (now CenturyLink).  He has a Bachelor of Science degree in Applied Math and Computer Science, and Masters in Engineering, both from the University of Colorado at Boulder.  After law school (Santa Clara University, cum laude), he worked as a patent attorney for the Silicon Valley-based law firm of Fenwick & West focusing on startups and pre-IPO companies, patents, and general intellectual property protection and counselling.  Mr. Cary returned to Colorado and followed the legal chain of title from U S WEST, to MediaOne, to AT&T Broadband, now Comcast. After a short stint at an e-insurance “.bomb” company, Mr. Cary returned to the cable industry at CableLabs.

He provides general advice and counsel on a wide range of topics including technology policy, strategy  patents, patent pools, licensing, standards, antitrust, security, content protection, complex multi-industry agreements, and the laws and regulations governing cable operators in these areas.

He is also President of Media Coding Industry Forum (MC-IF), and Treasurer of the Open Connectivity Forum (OCF, a forum for IoT).

Anne is a skilled advocate with 30 years’ experience advising clients on complex business litigation. Her practice has concentrated on intellectual property involving a wide range of technologies, with a particular focus on pharmaceutical and medical device patent litigation, including Hatch-Waxman ANDA matters. She has handled all phases of complex litigation from inception through resolution, and has extensive jury trial experience. 

Anne works closely with clients to devise strategy and achieve business goals. Skilled at developing effective working relationships with senior executives and business units, she is able to clearly communicate the technology at issue to the fact finder in litigation. 

She has a strong commitment to the training and development of other lawyers. Anne has served in leadership roles in deposition and trial skills training programs, and made numerous CLE presentations to practitioners. 

Anne’s representations include successfully preventing Pronova Biopharma Norge AS from blocking Teva Pharmaceutical’s marketing of its generic Lovaza® product, in which Teva prevailed on appeal by invalidating the patent under the on-sale bar, and in preventing G.D. Searle and Pfizer Asia from blocking Teva’s marketing of its generic Celebrex® product, in which the district court found the patent invalid. Her other patent litigation cases include: representing Teva in all phases of Hatch-Waxman ANDA litigations involving a wide range of pharmaceuticals; Gillette on razor blade edge technology; Lucent on semiconductor technology and optical lasers; and Verizon on cellular technologies. 

Anne divides her time between the firm and NYU School of Law, where she is a fulltime Research Scholar and Executive Director of the Engelberg Center on Innovation Law & Policy.

Diana Santos is an associate in the Intellectual Property Department.  She has advised major technology, automotive, pharmaceutical, consumer product, and medical device companies in the development of offensive and defensive legal strategies.  Diana has experience in a variety of patent litigation stages, and has represented clients in various forums, including district courts, the International Trade Commission, the Patent Trial and Appeal Board, and the American Arbitration Association.  She has counseled clients on IP issues in licensing, research and development, and acquisition agreements and investments.  Also, Diana has advised clients on branding, trademark, and copyright issues and conducted strategic investigations concerning advertisements and consumer law.

Diana is a member of the LatinoJustice PRLDEF Líderes Board and the Hispanic National Bar Association's Young Lawyer's Division former President.  Diana is also a member of the New York Intellectual Property Law Association's Programs Committee.

Education: Fordham University School of Law, J.D., 2010; Université Paris II - Panthéon-Assas, LL.M., 2010; University of Pennsylvania, M. Biotech., 2006; Cooper Union, B. Eng., 2004

Professional and Business Activities: LatinoJustice PRLDEF, Líderes Board member; New York Intellectual Property Law Association, Programs Committee member; Hispanic National Bar Association, former Young Lawyer Division National President; Fordham University, School of Law, Recent Graduates Committee & Alumni Attorneys of Color Affinity Group member; The Cooper Union's Alumni Association, former Alumni Council member

Recent Publications and Lectures:
• Diana Santos (moderator), “Licensing Strategies in View of Lexmark and Promega,” NYIPLA One-Day Patent CLE Seminar (November 16, 2017).
• Diana Santos (moderator), “Are You In?  Diversity, Inclusion and Corporate Responsibility,” HNBA Annual Conference (September 7, 2017).
• James Meyers and Diana Santos, “Versata Software, Inc. v. Callidus Software, Inc.: Move Quickly to File CBM and Stay District Court Litigation,” Patent, Trademark & Copyright Journal (December 5, 2014).
• Michael P. Kahn and Diana Santos, “A Return to Opinion of Counsel – A “Good-Faith Belief” as a Defense to Inducement: Commil v. Cisco,” NYIPLA (August/September 2014 Bulletin).

Additional information:

Dr. James Pan is a partner at Smart & Biggar. He is a lawyer and patent agent in Canada, and is registered to practice before the USPTO, with more than 15 years experiences. His practice involves all aspects of intellectual property law with a focus on patent procurement. He has in-depth experience in IP management and strategic counseling, preparing and prosecuting patent and industrial design applications in Canada, and managing the filing and prosecution of patent applications in the U.S., Europe, China, Japan, Korea and other jurisdictions worldwide. 

Dr. Pan's clients include international companies based in Canada, the U.S., Europe, and Asia, and Canadian companies of all sizes, as well as universities, IP firms and government agencies based in Canada, the United States, Europe and Asia.

Dr. Pan has a B. Eng. degree in Engineering Physics from Tsinghua University (China), and Ph.D. in Chemistry and J.D. from the University of British Columbia. He worked as an engineer in a military research and development institute and as a research scientist in a national subatomic research institute before his legal career.  

Jim Hanft is Chief IP Counsel for DISH Network L.L.C. DISH Network is the fourth largest multichannel video programming distributor in the United States. His responsibilities include managing all of DISH’s patent, trademark and copyright litigations, overseeing the patent and trademark portfolio, acquiring top level domains and supporting new business initiatives. Mr. Hanft spent twenty years in private practice in New York prior to moving to Colorado and joining DISH in 2014. 

Judge Michel served for more than 22 years on the Federal Circuit, retiring on May 31, 2010.  From December 25, 2004 until his retirement, he also discharged the duties of Chief Judge of this national court, serving simultaneously on the U.S. Judicial Conference -- the Judiciary's governing body -- and by appointment of the Chief Justice on its seven-judge Executive Committee.

He judged several thousand appeals and authored more than 800 opinions, one third concerning intellectual property law.  Intellectual Asset Management magazine inducted him into its Hall of Fame and he was designated one of the 50 most influential leaders in intellectual property law in the world.  His contributions were also recognized by lifetime achievement and similar awards by the American Intellectual Property Law Association (AIPLA); Intellectual Property Owners Education Foundation (IPO); the American Bar Association's Intellectual Property Section; Managing Intellectual Property magazine; the Sedona Conference; the Patent and Trademark Office Society (PTOS); the New York, Chicago, Philadelphia, and Los Angeles Intellectual Property Law Associations; and the William C. Connor, the Giles S. Rich, and the Richard Linn Intellectual Property American Inns of Court.  In 2010 the Los Angeles IP Inn was renamed in his honor as the Paul R. Michel IP Inn.

Judge Michel received the Jefferson Medal, the Eli Whitney Award, and the Katz-Kiley Prize as well as Honorary Doctor of Law degrees from the Catholic University of America and the John Marshall Law School.  He is a lifetime Member of Honore of FICPI, the international association of private practitioners of intellectual property law.  Williams College granted him the Kellogg Award for "outstanding leadership in law and public service."

Judge Michel has written numerous articles on patent law and advocacy, taught related courses and master classes at George Washington University, the University of Akron, and John Marshall law schools, serving as well on their IP advisory boards and on counterpart boards at the universities of California (Berkley), Washington, and Maryland.  He co-authored a casebook, Patent Litigation and Strategy (West, 1999) and an August 2010 editorial in the New York Times on strengthening the patent system to promote prosperity and create new jobs.

A frequent speaker at conferences and law schools during his judicial tenure and since, he retired from a lifetime appointment to be free to speak out on the national need for better patent policy and protection of intellectual property and the vital, unmet resource needs of the courts, the PTO, the International Trade Commission, and other IP-related agencies.  He was appointed Distinguished Scholar in Residence by IPO, following his retirement.  Judge Michel also consults for law firms and their clients in intellectual property litigations, conducting moot courts, mock trials, case evaluations, editing briefs, advising on strategy and providing mediation and arbitration services.

Kathleen Kahler Fonda holds a B.S. degree from Juniata College, an M.S. degree from the University of Virginia, and a Ph.D. degree from Virginia Commonwealth University, all in chemistry.  Following a postdoctoral position in a biochemistry laboratory at the University of Pennsylvania, Kathleen joined the USPTO in 1993 and examined patent applications in classes 536 and 514, concerning the chemistry and therapeutic methods of use of carbohydrate compounds.  Kathleen was recognized as examining Master's level art in 1996, became a primary examiner in 1997, and received the Department of Commerce Bronze Medal Award in 2000.  She served on a detail to the Board of Patent Appeals and Interferences in 2000.  While an examiner, Kathleen attended George Mason University School of Law and graduated magna cum laude with an emphasis in intellectual property law in 2002.  Kathleen left the USPTO in 2003, and clerked for Circuit Judge Pauline Newman at the Court of Appeals for the Federal Circuit during the 2003-2004 term.  Kathleen rejoined the USPTO in 2005, and is now a Senior Legal Advisor in the Office of Patent Legal Administration.

Kevin Jordan is Vice President and Assistant General Counsel of the Intellectual Property Group in the Corporate & Regulatory Law division of JPMorgan Chase & Co.  As Assistant General Counsel, Mr. Jordan is responsible for leading the firm’s efforts to protect its intellectual assets through a combined mechanism of enforcement, advisement and defense.  Mr. Jordan regularly counsels clients on a wide array of matters including intellectual property litigation, domain management, use of third party IP, regulatory issues involving IP, trade secrets, M&A due diligence and varied transactional needs.  

Prior to joining JPMorgan Chase, Mr. Jordan practiced as an associate at the law firm of Kenyon & Kenyon LLP in New York, where he advised clients on patent litigation, opinion work and e-discovery matters.  

Prior to practicing law, Mr. Jordan worked as a data scientist in the consumer packaged goods industry using advanced database techniques to target consumers for domestic and international marketing campaigns.  

Mr. Jordan is a graduate of the University of Michigan’s College of Engineering with a B.S.E in Industrial & Operations Engineering, and earned his J.D. at the American University – Washington College of Law in the nation’s capital. 

Mark Polutta is a Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO.  In this position, he assists in the drafting of rule packages, memoranda, and associated guidance to implement USPTO initiatives and comply with developments in patent law.  Prior to joining the Office of Patent Legal Administration, he was a primary patent examiner and examined patent applications related to medical devices including syringes, needle guards, absorbent articles and medical methods.  Previously, he worked as a patent agent at an IP law firm in Greenville, South Carolina.  Mark received his B.S. in Biology and Chemistry from the University of South Carolina and his J.D. from the University of South Carolina School of Law School.

Robert D. Wells is the founder and managing attorney of Rock IP, PLLC, an intellectual property law firm that helps clients build, manage, and monetize their IP portfolios.  At Rock IP, Mr. Wells takes a business-first approach, helping clients define and execute an IP strategy that supports their organization’s goals. He focuses his practice on helping companies strategically develop and monetize strong and valuable IP portfolios, while successfully navigating their IP challenges.

He has experience in matters before the U.S. Patent and Trademark Office (USPTO), and in cases before the U.S. International Trade Commission (ITC) and federal trial courts. His industry specialization includes robotics; additive manufacturing (3D printing); blockchain; intelligent waste management systems; cyber intelligence, surveillance, and reconnaissance; wearables; embedded systems; optoelectronics; smartphones; and other computing technologies.    

Before founding Rock IP, Mr. Wells spent nearly 10 years as an attorney at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, a Washington, DC-based intellectual property law firm. While there, Mr. Wells specialized in patent litigation, patent prosecution, and client counseling involving various intellectual property issues within the electrical and computing industries.  

A Portuguese speaker, Mr. Wells served a four-year term as the chair of the American Intellectual Property Law Association’s (AIPLA) IP Practice in Latin America Committee from 2013 to 2017. In that capacity, he applied his extensive experience working with IP professionals, patent offices, and courts in countries throughout Latin America to strengthen ties and foster mutually beneficial relationships. Under his leadership, the committee encouraged cooperation and education between the U.S. and foreign IP associations, and served as a reliable source of information about the process of pursuing and enforcing IP protection in Latin American countries. 

He earned a bachelor’s degree in electrical engineering from the University of Utah and his JD from Georgetown Law.  He is admitted to practice law in California, the District of Colombia, and before the U.S. Patent and Trademark Office.

Ryan Phillips / Director and Managing IP Counsel, Broadcom Ltd. – Ryan’s team manages patent litigation and licensing activities at Broadcom Ltd.  Broadcom’s litigation includes offensive and defensive matters before U.S. district courts, the U.S. ITC, and various foreign venues.  His team also handles the legal aspects of monetization of Broadcom’s patent portfolio through offensive licensing.  He has been in-house counsel at Broadcom or its predecessor companies for the past six years.

Prior to Broadcom, Ryan was a patent litigator at the firms of Kilpatrick Townsend & Stockton and Townsend and Townsend and Crew.

Ryan has a B.S. in engineering from Texas A&M University, a M.S. in engineering from the University of Texas at Austin, and a J.D. from the University of Denver.

Ryan Pohlman is Director, Intellectual Property Counsel at Sony Corporation of America.  Ryan joined Sony in October 2014 and is based in Park Ridge, New Jersey.  At Sony, Ryan manages and advises on third-party intellectual property issues, primarily focusing on patents.  His practice includes patent litigation, inbound and outbound licensing, corporate transaction diligence and support, and general business and contract advising.  He supports a wide variety of Sony’s US businesses and subsidiaries, including consumer electronics, semiconductors, mobile devices, digital media, and online services.  He also supports the Sony Innovation Fund, which provides early stage funding to emerging technology companies.   

Prior to joining Sony, Ryan was a partner in the Chicago office of Kirkland & Ellis LLP, where he primarily practiced in patent litigation.  He is a graduate of the University of Notre Dame and the DePaul University College of Law.    

Tobias Hahn has worked as an attorney since 2004 and advises German and international clients in all matters of intellectual property. He specialises in national and international patent litigation as well as subsequent proceedings for damages. He also has longstanding experience in unfair competition and pass-off litigation. He mainly litigates in the areas of telecommunications, electronics, medical devices, pharmaceuticals, automotive and mechanics and has extensive experience in coordinating parallel US and European litigation. 

A significant part of his practice focuses on litigation involving standard-relevant patents. He advises and represents several international telecommunication companies regarding "FRAND" and antitrust defences. He further represents clients in opposition, revocation and nullity proceedings before the German and European Patent Offices, the German Patent Court and the German Federal Court of Justice and advices clients in arbitration proceedings. Moreover, he has extensive experience in drafting and negotiating patent and copyright licence agreements, R&D contracts, software agreements and know-how agreements. 

Since his studies at the Universities of Heidelberg and Leeds (UK) he has specialised in intellectual property law. During his legal traineeship, he continued this specialisation while working for several international law firms. His PhD, which he obtained from the Free University Berlin, dealt with the liability of companies for acts of unfair competition by third parties. 

Tobias regularly publishes on current issues of intellectual property and procedural law and has written a procedural commentary on inspection proceedings. He is a co-author  of the e-learning module on patent litigation of the European Patent Academy of the European Patent Office for the Judicial Training of, inter alia, future judges of the Unified Patent Court. He is also a frequent speaker at conferences on patent law and licensing and is a visiting lecturer for patent law at the Hagen Law School, Germany.

Tony Piotrowski is General Counsel for MPEG LA, LLC, a world leading packager and license administrator of patent pools for standards and technology platforms. Since its inception, MPEG LA has generated several billion dollars of royalties for patent owners through a series of licensing programs. In addition to leading MPEG LA’s legal department, he oversees the company’s licensing programs and new program development.  

Tony’s previous professional experience includes Vice President, Business Acquisition Strategy, for a technology/IP license entity where he led activities for the identification, sourcing, evaluation, financing, closing and management of patent acquisition/licensing opportunities.  He has also held senior positions for major multination corporations where he was responsible for regional Intellectual Property (IP) activities in Asia and Europe.  These responsibilities included IP enforcement and implementing global licensing programs that generated significant royalty revenue, as well as leading teams of intellectual property attorneys.  Prior to these positions, he worked in private practice for a NY law firm that specialized in IP creation, licensing and litigation. Before starting legal practice, he worked as a senior engineer for a major telecommunications equipment and service provider.  

Tony serves on (or advises) the board of directors for several technology/IP licensing entities, and served on the board of the Intellectual Property Office of Singapore (IPOS) and on the editorial board of an IP specialist magazine.  He participates in various IP organizations including LES and IPO.  He has also been active in various standards organizations where he helped to formulate IPR policies.  For several years, he was a guest lecturer on advanced IP topics at Renmin and Tsing Hua Universities in Beijing.