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USPTO Post-Grant Patent Trials 2018: Change & Recalibration


Speaker(s): Andrew T. Harry, Anne Layne-Farrar, Bob Steinberg, David L. McCombs, James R. Batchelder, John A. Dragseth, Jonathan M. James, Kevin B. Laurence, Meredith Martin Addy, Michael D. Van Loy, Ph.D., Michelle K. Holoubek, Peter P. Chen, Steve Chiang, Trenton A. Ward
Recorded on: May. 15, 2018
PLI Program #: 219333

Andrew (Andy) T. Harry is a co-founder at Xsensus, LLP. Previously, Mr. Harry was a partner at a large boutique patent firm, where he practiced for 15 years before founding Xsensus in early 2018.

Prior to that Mr. Harry served as a Patent Examiner at the United States Patent and Trademark Office (USPTO), specializing in wireless communication technologies and protocols. He also has experience as a wireless communications system engineer at Booz Allen Hamilton, where he developed communication protocols and technologies for the Department of Defense. He also

Mr. Harry draws upon his wealth of practical engineering and patent experience in his role as patent counsel to some of the world’s leading innovators, who range from large consumer electronics companies to small start-ups. By leveraging his unique blend of engineering expertise and an inside understanding of the USPTO’s examination practices, Mr. Harry is able to help his clients cultivate, manage and protect high-value patent portfolios.

Mr. Harry is able to effectively advance emerging technologies through the US patent prosecution process by implementing efficient and cost-effective patent procurement and prosecution practices. His prosecution efforts include accelerated prosecution methods, grouping of related technologies and frequent face-to-face interviews with USPTO Examiners. Mr. Harry also has experience handling proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB).

Mr. Harry holds a juris doctorate and a degree in Electrical Engineering, with a specialization in communications and digital signal processing. He is a member of the Virginia bar and is registered to practice before the U.S. Patent and Trademark Office.


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.


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.


Peter Chen is a partner in Covington’s Palo Alto office specializing in intellectual property litigation, and is co-head of the firm’s Patent Office Trials group focusing on America Invents Act (AIA) trials before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). He has successfully represented PTAB petitioners through final written decision, and patent owners in denials of institution, and has advised clients on PTAB strategy and policy issues.

During 2015-2017, Mr. Chen was a Lead APJ and as a member of PTAB’s management team, he assisted three successive Chief Judges 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.


As a former Lead Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB), Trenton Ward was on the front lines of the nascent post-grant review proceedings that have evolved into a prominent position in litigation and business strategies. He draws from his experience on the bench and as a practitioner to provide the highest level of counsel to clients in services ranging from litigation to prosecution and counseling.

In his prior position, Trenton adjudicated more than 250 America Invents Act (AIA) trial proceedings, including inter partes review (IPR), covered business method (CBM) patent review, and post-grant review (PGR) proceedings. He served on the panel for more than 275 Decisions on Institution and Final Written Decisions, authoring many of those decisions. Additionally, Trenton adjudicated over 100 ex parte appeals, authoring the majority of those decisions.In his role as a Lead Judge, Trenton assisted the Chief Judge in the management of the PTAB, including formulating and executing policy for AIA trials and PTAB operations.

Trenton’s practice focuses on patent litigation, including trials before the PTAB, district court trials, and appeals before the Federal Circuit and Supreme Court. His practice also covers patent prosecution management and client counseling across an array of technologies, including telecommunications, semiconductor devices, medical devices, carbon nanotube devices, and sporting equipment.


Bob Steinberg is a partner in both the Washington, D.C. and Los Angeles offices of Latham & Watkins. Mr. Steinberg is a member of the firm’s Litigation & Trial Department as well as former Global Co-Chair of the Intellectual Property (IP) Practice and current Chair of Latham’s Patent Trial and Appeal Board (PTAB) Practice. The group’s strategic development and unique trial and PTAB capabilities were featured in an article in The Recorder, an ALM publication.

Mr. Steinberg is a founding member of the national PTAB Bar Association and was elected as the first president to the Association (www.PTABBar.org). He is also a registered patent attorney and has served in most of the firm's PTAB proceedings for clients such as AbbVie Biotechnology Ltd., Actifio, NVIDIA, and Qualtrics. 

He has been instrumental in establishing Latham’s PTAB practice. The practice pioneered innovative approaches to the bourgeoning area of PTAB proceedings and has maintained an outstanding success rate in persuading the PTAB to institute our client’s petitions and a more than 96% success rate with final determinations. IAM Patent 1000recognized Mr. Steinberg and noted that he “has had a full schedule of late, given his chairmanship of the post-grant practice; he is supremely on top of things, though, as his high inter partes review institution rate attests.” Mr. Steinberg was part of Latham’s team to successfully obtain final written decision in the PTAB on behalf of Actifio against Delphix, with a sweeping victory, invalidating 109 of 111 challenged claims across five patents; Jaguar Land Rover to defeat Cruise Control Technologies (a shell company of patent troll Empire IP); and Qualtrics to invalidate four of OpinionLab, Inc. patents. Mr. Steinberg also worked with the team that obtained a denial of institution on behalf of AbbVie in Amgen’s IPR petitions filed against AbbVie’s patent covering the blockbuster biosimilar drug Humira.

Mr. Steinberg has continuously been recognized as a leading lawyer by The Legal 500 US and Chambers USA. Most recently he was named a 2017 IP Trailblazer by The National Law Journal, which recognized practitioners who have “shown a deep passion and perseverance in pursuit of their mission, having achieved remarkable results along the way." He was also recognized as one of The Most Influential IP Attorneys in LA for 2017 by The Los Angeles Business Journal which highlighted his “thriving” patent litigation practice and “innovative approaches to the burgeoning area of PTAB proceedings.” He’s been named among the 2012 Who’s Who for Intellectual Property Law by Los Angeles Business Journal and among the top IP litigators in California by The Daily Journal in 2011. Mr. Steinberg was particularly cited for his representation of the Ansel Adams Publishing Rights Trust in a dispute with a defendant who claimed to possess long-lost negatives created by the famous nature photographer — which the Trust maintained were not authentic. He also assisted AMD to secure a US$1.25 billion worldwide settlement in a patent, contract, and antitrust dispute with Intel.

Mr. Steinberg also served on the 2014 Law360 Intellectual Property Editorial Advisory Board. 

Prior to joining Latham, Mr. Steinberg worked as the Chairman and CEO of xSides Corporation, a developer of desktop security software. He also spent 11 years at a California-based law firm where he was partner and member of the Executive Committee.

 


Dr. Anne Layne-Farrar is a Vice President in the Antitrust & Competition Economics Practice of CRA and an Adjunct Professor at Northwestern University School of Law. She specializes in antitrust and intellectual property matters, especially where the two issues are combined. She advises clients on competition, intellectual property, regulation, and policy issues across a broad range of industries and has worked with some of the largest information technology, communications, and pharmaceutical companies in the world. Dr. Layne-Farrar has advised clients in a variety of jurisdictions, including the US, Europe, and Asia (South Korea and China).

Dr. Layne-Farrar’s expert work for industry leading clients has included analyzing reasonable licensing, including RAND and FRAND; calculating damages; assessing economic incentives and firm behavior within standard setting organizations; reviewing the competitive implications of licensing pharmaceuticals; defining markets; and determining costs and benefits for legislative proposals covering healthcare, credit and debit cards, labor unions, television ratings, software security, and e-commerce.

Dr. Layne-Farrar has given oral and written expert testimony in a variety of US courts and has provided other submissions, including ones before the US Supreme Court and before regulatory bodies including the US Federal Trade Commission, the US Department of Justice, the US Senate, the European Commission, and MOFCOM. 

Additionally, she has presented at academic and industry conferences around the world and is widely published. She coauthored a book on law and economics, has published articles in magazines including Antitrust, Global Competition Review, and Regulation and in academic journals, including Antitrust Law Journal, International Journal of Industrial Organization, and Journal of Competition Law and Economics

Education
PhD, Economics, University of Chicago
MA, Economics, University of Chicago
BA, Economics, Indiana University, Bloomington


John Dragseth is a Senior Principal at Fish & Richardson. His practice centers on complex legal analysis and writing – in federal appeals, patent prosecution, reexamination, pre-suit and due diligence investigations, and patent opinions. His prosecution work centers on cloud computing, mobile computing, software, medical devices, and mechanical technologies (including HVAC). John has led the briefing on more than 60 appeals to the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit, where he was previously a law clerk to the Honorable Raymond C. Clevenger III. He has extensive experience in taking over cases on appeal and framing them for the Federal Circuit, while working closely with trial counsel. John writes and lectures frequently on a variety of patent law topics. He is also an adjunct professor teaching IP litigation at the University of St. Thomas Law School, and has authored case books on patent law and IP litigation.


Kevin Laurence has 25 years of experience in patent law.  He has represented patent owners and petitioners in more than 50 inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). In addition to IPRs, he is also experienced with other post-grant proceedings having handled nearly 30 reexaminations and many reissues, which enables him to develop comprehensive post-grant strategies. He leverages his post-grant experience in prosecution matters to obtain patents for his clients that will survive challenges.

Best Lawyers in America named Mr. Laurence their 2016 “Lawyer of the Year” in Patent Law for Washington, D.C. Intellectual Asset Management has identified him as one of the leading practitioners in the United States for post-grant proceedings every year since 2012 and recently noted that “Kevin Laurence knows what works at the USPTO with regards to obviousness – it enables him to frame PTAB cases in the right way from the get-go.”  He has also received consistent recognition from prominent rankings including Best Lawyers in America, Chambers USA, and Managing Intellectual Property.

Mr. Laurence teaches a course as an adjunct professor at the George Washington University Law School on USPTO post-grant proceedings.  He also serves as an instructor for Patent Resources Group in courses on post-grant proceedings and co-authors a two-volume treatise titled Post-Grant Patent Practice provided in conjunction with the courses.  He co-authored over 40 articles for Intellectual Property Today magazine on post-grant patent topics.  He served on the Interim Board of Directors for the PTAB Bar Association during 2016–2017.  He served as vice chair of Intellectual Property Owners Association’s U.S. Post-Grant Patent Office Practice committee during 2012–2015.

Mr. Laurence provides patent-related services across a broad technological spectrum including chemical fields, pharmaceuticals, medical devices, mechanical and electromechanical systems and devices, semiconductor fabrication, software, and other technologies.  In addition to his post-grant practice, he focuses on all phases of patent procurement, portfolio management, preparation of non-infringement and invalidity opinions, product clearance analysis, due diligence evaluations, pre-litigation evaluations, strategic counseling for asserting patent rights or responding to patent infringement allegations, licensing, and serving as an expert witness.


Michael Van Loy is a Member in the Intellectual Property Section. His practice focuses on all aspects of IP strategy and portfolio development including drafting and prosecution of patent and trademark applications; preparation of patentability, infringement, and validity opinions; litigation preparation and support; licensing negotiations; and other monetization approaches. 
 
Michael drafts and prosecutes patents and advises clients on IP issues in a wide range of technical fields, including computer-implemented technologies (software, database development and management, content management systems, user interfaces, etc.), motor vehicle engines and braking systems, chemical and environmental sensing and analysis, wired and wireless telecommunications, e-commerce,  medical devices,  alternative energy sources and storage, emissions controls and remediation technologies for air and water, semiconductor design and production, batteries, satellite-guided navigation, pharmaceutical formulation and targeted delivery mechanisms, video compression, and optical coatings.
 
Before joining Mintz Levin, Michael worked as a patent agent for more than five years, first at a national intellectual property law firm in the Silicon Valley and then at a Palo Alto incubator venture fund, where he advised on intellectual property portfolio development strategies and provided in-house patent preparation and prosecution services for a group of seed-stage start-up companies focused on high-tech and chemical analysis. Prior to beginning his legal career, Michael was an environmental research scientist/project manager at a research institute in Palo Alto, where he co-managed and published the results of a large-scale, multidisciplinary study of the effects of air pollution on human health in an urban airshed.

Recognitions & Awards
• Included on the San Diego Super Lawyers Rising Star: Intellectual Property list (2016)

Professional & Community Involvement
• Board member, Chapter Executive Committee of MIT Enterprise Forum San Diego
• Former Chapter Chair, MIT Enterprise Forum San Diego


Michelle K. Holoubek is a director in Sterne Kessler's Electronics Practice Group. With a background in relativistic physics, she specializes in software, digital healthcare, bioinformatics, and optical technologies. Having handled hundreds of software and business method applications at the PTO, patent-eligible subject matter (aka "101") is her special area of expertise. In addition to the preparation and prosecution of patents to develop portfolios for startups and Fortune 100 companies alike, she has been lead counsel in IPRs, CBMs, and reexams for both patent owners and challengers. She has also provided infringement and invalidity analysis in opinions for a variety of technologies.

In addition to cutting-edge optical and software applications, Michelle is heavily involved in our digital healthcare and bioinformatics practice, focusing on the intersection between optical devices, big data analytics, and the life sciences ecosystem.  She has practiced in the biological sample analysis and detection space since the early 2000s, including microfluidics, fluorescence-based imaging systems, and next-gen sequencing, along with the more processing-based analyses of interpreting biological correlations. 

Additional technical fields in which Michelle works include: web interfaces, Internet communications systems, software development, telecommunications systems, lasers, photolithography, cryptographic messaging, semiconductor fabrication and devices, electronic design automation, biometric devices, implantable medical devices, catheter location systems, sensor communication systems, financial products, and various other electrical, optical, and software/business method inventions.

Michelle is a contributing author of Patent Office Litigation, Second Edition, published in 2017. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year. Michelle is the Chapter Chief for the chapter on Covered Business Method Patent Review (CBM) in the 2012 edition. Additionally, she is a contributing author of the chapter on "Patentability Challenges at the U.S. Patent and Trademark Office" in the ABA's Patent Litigation Strategies Handbook, 4th Edition (2015).

Prior to joining Sterne Kessler, Michelle studied physics with a concentration in astronomy at Louisiana State University.  She focused her research on gravitational wave detection, working on with both LSU’s resonant bar detector ALLEGRO and the Laser Interferometer Gravitational-Wave Observatory (LIGO). While at LSU, she also assisted in the development of software simulation and analysis programs for laboratory and educational use, and participated in a summer research fellowship for LIGO at the California Institute of Technology. From 2008-2013, Michelle  served on the Executive Committee for LSU's College of Science. Michelle has her J.D. from George Mason University School of Law.


Steve Chiang is Senior Director of Legal and IP Counsel at RPX Corporation, where he manages RPX’s IPRs.  Prior to joining RPX, he worked in private practice on patent prosecution and litigation matters including reissues and reexaminations.


After serving as managing partner of the firm’s Silicon Valley and San Francisco offices, Jim Batchelder is now a member of Ropes & Gray’s governing Policy Committee. A trial lawyer in its intellectual property litigation group, Jim has been recognized by Chambers, and named of the World’s Leading Patent Practitioners, and one of California’s Top Intellectual Property Lawyers. He has over 27 years of experience litigating high stakes intellectual property cases in district courts, the ITC and the PTAB, where he has been named a “Legal Lion” by Law360.

Within California, Jim is widely regarded as a “Dean of IP Law,” lecturing and publishing extensively on intellectual property issues and strategy. Jim is also co-founder of Ropes & Gray’s Diversity Roundtable, a series of meetings with Silicon Valley companies and attorneys interested in enhancing diversity among students wishing to join the legal profession, candidates hired for attorney jobs, and attorneys promoted within their organizations.


Jonathan M. James is a Managing Director with Fortress Investment Group and is the Director of Litigation and Portfolio Management for Fortress’s Intellectual Property Finance Group.  

Prior to joining Fortress, Mr. James was a partner with Perkins Coie, where he served as Co-Chair of the firm’s Intellectual Property Practice and Patent Litigation Practice for many years.  While in law firm practice, Mr. James represented leading technology companies in patent, copyright, trade secret and commercial litigation throughout the United States and in Europe and Asia.  He also litigated cases and advised clients about IP-related antitrust issues and standard-essential patents and FRAND issues.  Mr. James also has extensive experience in patent licensing and patent sales, acquisitions and monetization.

Mr. James is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine.