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USPTO Post-Grant Patent Trials 2018: Change & Recalibration


Speaker(s): Amanda Streff Bonner, Charlotte Jacobsen, Christopher Scharff, Eldora L. Ellison, Ph.D., Greg H. Gardella, Hans Sauer, Ph.D., Hon. Paul R. Michel (Ret.), Jared B. Bobrow, Jonathan R. Bowser, Kevin K. McNish, Kevin Schubert, Meredith Martin Addy, Peter P. Chen, Robert Greene Sterne, Scott A. McKeown, Sherry M. Knowles
Recorded on: Sep. 21, 2018
PLI Program #: 219329

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.


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). He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

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 150 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators.

As a Professorial Lecturer in Law at The George Washington University Law School and a member of the teaching faculty of the Practising Law Institute, Scott lectures and writes extensively on PTAB proceedings. He is a former chair of the American Bar Association, Intellectual Property Law Section Committee 104 (Post-Grant USPTO Proceedings), and currently sits on 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 also maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings. 

Prior to becoming an attorney, Scott worked as an electrical engineer for a government agency, troubleshooting embedded systems and circuit designs. He also has experience across a wide range of related technologies, including computer software, wireless telecommunication protocols, network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.


Amanda Streff Bonner is an associate in Mayer Brown's Chicago office and a member of the Intellectual Property practice. She focuses primarily on patent litigation and inter partes review proceedings before the Patent Trial and Appeal Board. Amanda’s practice focuses on areas of electrical engineering, computer engineering, biomedical engineering, and mechanical engineering. She is experienced in technologies such as mobile devices, semiconductors, LCD panels, telecommunications, and medical devices.

She has extensive experience in IPRs and has been counsel in over 60 IPR proceedings. For this work, she was recognized as a “Top Attorney” in IPR proceedings before the Patent Trial and Appeal Board by Docket Navigator.


Charlotte Jacobsen joined Ropes & Gray in July 2018 as partner in the firm’s life sciences intellectual property litigation practice group. Charlotte is a first-chair litigator with more than 15 years of experience representing clients in complex patent disputes concerning biotechnology, pharmaceuticals and the chemical arts. She has represented clients in high-stakes cases before the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB), and the federal district courts in Abbreviated New Drug Application (ANDA) litigation, a distinction held by few biopharmaceutical patent litigators. Charlotte’s clients include some of the world’s largest and most prestigious global pharmaceutical companies but she is a trusted advisor to companies of all sizes, and has litigated patent cases concerning anti-cancer drugs, oral contraceptives, immunosuppressants, cardiovascular drugs for treating high cholesterol, and therapies for Alzheimer’s disease and Parkinson’s disease, among others. Charlotte also possesses a wealth of international experience. Prior to joining her previous firm, Charlotte practiced as a barrister in the London where she was involved in technically complex patent litigations, including patent oppositions before the European Patent Office, and an appeal to the House of Lords, the highest court in the U.K. She also handled a global litigation involving patent inventorship and an arbitration before the ICC International Court of Arbitration. Charlotte has an M.A. in natural sciences, with a particular focus on immunology and virology, from Cambridge University, and an M.Sc. in forensic sciences from King’s College, London, in connection with which she researched the use of DNA profiling to combat illegal bear poaching in British Columbia, Canada. Charlotte also holds an LL.M. from Columbia University.


Chris Scharff’s practice includes all areas of intellectual property, with an emphasis on patent litigation through discovery, trial, and appeal to the Federal Circuit and U.S. Supreme Court, as well as inter partes review (“IPR”) proceedings before the U.S. Patent and Trademark Office.   Chris was recently recognized as one of the Top 100 most active IPR practitioners in the U.S. by Docket Navigator.  He is also a regular columnist on IPR practice and procedure for InsideCounsel.com.  Chris has represented clients in large-scale patent disputes on technologies as varied as orthopedic implants, surgical equipment, infusion pumps, spinal surgery devices, GPS hardware, chemical products, advanced materials, automotive technology, food processing and computer software.

McAndrews, Held & Malloy, Ltd:
McAndrews is an intellectual property law firm located in Chicago, Illinois.  McAndrews, offers a deep bench of experts in patents, trademarks, copyrights, trade secrets, and unfair competition, with all of its attorneys having a degree in science or engineering. While best known for its record of litigation success, McAndrews is also recognized as a leading firm in IP procurement, post-grant proceedings, IP opinions and investigations, global portfolio management, IP development and licensing, M&A support, and design rights.  McAndrews’ clients include multinational corporations, Fortune 500 companies, startups, and world-renowned universities. It is continually recognized and honored by respected legal and business media and IP organizations for its achievements in intellectual property law.


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.


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


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.


Jared Bobrow is co-chair of Orrick’s global Intellectual Property group. He specializes in litigating patent disputes nationwide, both in district courts and at the Patent Trial and Appeal Board. He also litigates and counsels clients in the field of trade secrets, particularly those involving complex technology. 

Since the late 1980s, Mr. Bobrow has been involved extensively in all aspects of patent and technology-related litigation, including trials and appeals. He has earned a reputation with clients for managing complex cases efficiently and creatively. Mr. Bobrow is a hands-on litigator who learns and develops the critical facts, masters the technology and law, and weaves the facts and law into a story that a judge or jury will understand and embrace. 

Mr. Bobrow is ranked Band 1 in the field of Intellectual Property: Patent by Chambers USA and he has been recognized as a leading lawyer by Chambers Global 2013-2018, with sources describing him as “a phenomenal practitioner; one of the smartest lawyers you will ever meet” “who handles complex matters and gets great results” and is “probably the finest patent litigator I have ever worked with. He has a keen intellect and a good sense of what will resonate with judges and juries.” He has been named a leading patent litigation attorney in California by IAM Patent Litigation 250 Magazine 2011 and by IAM Patent 1000 2012-2017. He has also been recognized as an “IP Star” in California by Managing Intellectual Property’s IP Stars since 2013, and was selected among the “Top IP Attorneys” in California for 2011, 2016 and 2017 by the Daily Journal, a leading legal publication in California. He has been recognized by Benchmark Litigation as a “Local Litigation Star” since 2014 and as a “National Star” since 2018.

Mr. Bobrow teaches patent litigation at U.C. Berkeley Law School, and has spoken and written on patent law, patent litigation, and trade secret matters.

Mr. Bobrow graduated in 1986 from Columbia Law School, where he served on the Columbia Law Review. In 1986 and 1987, he clerked for the Honorable Charles P. Sifton (E.D.N.Y.).


Jonathan Bowser is Senior Patent Counsel at Unified Patents.  Jonathan prepares and litigates post-grant proceedings before the PTAB, and manages litigation, appeals, licensing and legal strategy for Unified Patents.  Jonathan is experienced in all phases of post-grant proceedings before the PTAB.  

Before joining Unified Patents, Jonathan practiced at Buchanan Ingersoll & Rooney for 11 years, where he focused on post-grant validity proceedings before the PTAB and patent litigation before district courts and the U.S. International Trade Commission.  

Jonathan’s technical background is in electrical and computer engineering.  He is active in bar associations focusing on post-grant proceedings.  Jonathan is the vice-chair of the USPTO Post-Grant and Inter Partes Practice Committee of the American Bar Association, and is also active in the post-grant committees of the AIPLA and IPO.


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.


Kevin Schubert is a senior associate at McKool Smith.  For nearly 10 years, Kevin has focused on patent litigation in some of the largest and most successful patent cases in the country.  Recently, he represented Wi-LAN in a patent infringement action against Apple which resulted in a $145.1 million jury verdict for Wi-LAN on August 1, 2018.  He has been involved with patent matters around the country, in Germany, and before the PTAB.  

Kevin formerly worked as a patent examiner at the United States Patent and Trademark Office in the Cryptography department, where he examined more than 100 patent applications.


Peter Chen is a partner in Covington’s Silicon Valley office and is co-chair of the firm’s PTAB practice.  Mr. Chen joined Covington in early 2017 and has represented technology and life sciences clients in IPRs, as petitioners and patent owners. Before Covington, Mr. Chen served as an Administrative Patent Judge (APJ) from 2013-2017 at the PTO’s West Coast Regional Office and presided on nearly 200 inter partes review and Covered Business Method review proceedings, many through Final Decision, involving a wide range of technologies.

During 2015-2017, Mr. Chen was a Lead APJ and as a member of PTAB’s management team, he assisted current Chief Judge David Ruschke and his two predecessors in formulating and executing PTAB policy involving AIA trial procedures and Board operations. He also supervised a team of APJs, and assisted the Regional Director in policy and operations matters for the USPTO’s West Coast Regional Office. Mr. Chen is among the only former Lead APJs in private practice, and provides clients with a uniquely valuable perspective from his experience in presiding over AIA trials and in devising PTAB policy.

Prior to his service at the PTAB, Mr. Chen was a first-chair intellectual property litigator and partner at three international law firms, and also served as general counsel and intellectual property counsel in-house, at startup and publicly traded technology companies in Silicon Valley. He has litigated over 75 patent cases, 25 trade secrets misappropriation cases, and numerous cases involving copyrights, trademarks, and unfair competition, in federal and state courts and the International Trade Commission, for high technology and life sciences companies.

Mr. Chen is a registered patent attorney and is a named co-inventor on two U.S. Patents Nos. 8,468,050 and 8,843,392.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C., a premier intellectual property law firm based in Washington, D.C.  Mr. Sterne has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU enforcement, reexamination, high quality global patent portfolios, 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 throughout the past 40 years, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” Most recently, he was named by Law360 as one of  “The Top 25 Icons of IP.”  He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). In his practice, Mr. Sterne holds a BSEE and a MS and specializes in electronics, computers, software, communications, semiconductors, wireless, medical devices, nanotechnology, and business methods technologies. He is counsel in more than 160 PTAB contested proceedings and 150 reexaminations at the USPTO 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). Mr. Sterne is highly rated in peer-review rankings, including a consistent "Band 1" patent prosecution designation by Chambers & Partners. 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.


Sherry M. Knowles, Esq. is the Principal of Knowles Intellectual Property Strategies, LLC (www.kipsllc.com; Atlanta, Georgia), which provides global guidance on complex IP matters, patent litigation strategy, licensing, prosecution and investor support. Ms. Knowles has 30 years of experience in global corporate and private practice. From 2006-2010, Ms. Knowles was the SVP and Chief Patent Counsel at GlaxoSmithKline, as worldwide head of patents for litigation and transactional matters, managing over 200 people in 12 offices. 

In 2008, Managing IP Magazine named Ms. Knowles one of the top 10 most influential people in Intellectual Property, referring to her as a “Patent Owner’s Advocate.”  In 2010, the New Jersey IP Lawyers Association awarded GSK, with Ms. Knowles as the representative, the Jefferson Medal for exceptional contribution to Intellectual Property. In 2010, Managing IP Magazine named the GSK Global Patent Team the “In-House IP Team of the Year” for 2009 for the constructive approach to IP in the developing world, the engagement with public policy in Europe and the successful resolution of the USPTO rules matter in the US. In November 2011, IAM Magazine listed Ms. Knowles among the top fifty key individuals, companies and institutions that have shaped the IP marketplace in the last eight years. Ms. Knowles is listed in IAM Magazine’s 250 (2011) and 300 (2012-2017) Leading IP Strategists and Managing IP Magazine’s Top 250 Women in IP (2014, 2016, 2017) and MIP IP Stars (2016, 2017).

Prior to working at GlaxoSmithKline, Ms. Knowles spent 20 years in large law firm practice. Ms. Knowles created and defended the patent rights for Emory University in Emtricitabine, the most widely medicine for HIV globally (sold by Gilead Sciences), resulting in monetized royalties to Emory of $540 million. 

Ms. Knowles is a frequent speaker on patent policy issues, and founded The Kectil Program (www.kectil.com) to mentor developing country youth in innovation, leadership and entrepreneurship.


A registered patent attorney, Kevin K. McNish represents clients in inter partes reviews, covered business method reviews, and other post-grant proceedings in the United States Patent and Trademark Office.  His first-chair experience spans more than sixty Patent Trial and Appeal Board proceedings and includes drafting petitions and responsive briefs; taking and defending expert cross-examinations; and arguing at oral hearings before the Board.  His practice also includes trial and appellate intellectual property litigation for clients in the electronics, software, medical device, and life sciences industries.  

In addition to his work at Desmarais LLP, Kevin is an active member of the PTAB Bar Association, where he serves as the District Court Desk Editor for the biweekly PTAB Roundup newsletter.