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Patent Litigation 2018: Advanced Techniques & Best Practices


Speaker(s): Anna Kurian Shaw, Candice C. Decaire, Charles J. Monterio, Jr., Christopher K. Hu, Cynthia Lambert Hardman, Denise Main, Ph.D., Eric Damon, Eric J. Lobenfeld, George E. Badenoch, Gil Calvillo, Ph.D., Hon. K. Nicole Mitchell, Hon. Rubén Castillo, Hon. Sue L. Robinson (Ret.), Keith R. Hummel, Margaret E. Ives, Martin E. Gilmore, Michael A. Berta, Michael C. Smith, Michael K. Milani, Peter Schwechheimer, Rachel K. Hunnicutt, Richard F. Martinelli, Suann M. Ingle
Recorded on: Nov. 14, 2018
PLI Program #: 219346

Anna Shaw has more than 20 years of experience in trademark litigation cases. She has chaired cases in federal court, the Trademark Trial and Appeal Board (TTAB), and the International Trade Commission.

In 2018, Anna was recognized by Managing Intellectual Property (MIP) as an IP Star. She was also recognized in 2018 by the World Trademark Review 1000 for having "a special flair for dealing with non-traditional marks and issues that reach the International Trade Commission," where she has successfully obtained relief, including general exclusion orders, in Section 337 trademark cases for clients like Kimberly-Clark Corp., Red Bull, and Segway.

She also advises clients on cutting-edge trademark and copyright issues, including obtaining non-traditional trademark registrations for the shape of the Tic Tac mint, the product configuration of various pieces of furniture, and the purple color of a protective glove. Anna represented General Motors before the U.S. Copyright Office in connection with Digital Millennium Copyright Act (DMCA) Section 1201 rulemaking proceedings, and also managed the global and United States portfolios for companies including Ferrero (the manufacturer of Nutella, Tic Tac, and Rocher confectionery products), Pemex, Synopsys, International Finance Corp., and Medifast.

Anna is an experienced lawyer in contentious disputes, as well as a creative problem solver who can skillfully resolve disputes. She has represented well-known brands including Ketel One, Caterpillar, the Smurfs, the American Red Cross, Nutella, Tic Tac, Ferrero Rocher, Merck, Noosa Yoghurt, and Goodyear. She serves as pro bono counsel to the Women's March International.


Candice Decaire practices intellectual property law, with expertise in patent and trade secret protection. Ms. Decaire has counseled and represented clients in litigation, appeals, arbitration, ITC investigations, and inter partes review proceedings concerning diverse technologies such as computer hardware and software, biologics, pharmaceuticals, carpet, thermal imaging/night vision equipment, "bullet proof" armor, industrial bearings, aircraft equipment, and medical devices. Ms. Decaire also advises clients about strategies for protecting and profiting from intellectual property and data, with particular focus on the Internet of Things and wearable tech, including assessment and mitigation of risks of infringement or misappropriation, and data privacy and security issues. Ms. Decaire helps biotech and other clients with IP and licensing policies, strategies, and agreements, including as to due diligence and investigation of validity and freedom to operate.

Ms. Decaire was recognized by The Best Lawyers in America® in 2018 for Commercial Litigation.


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

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

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

RECOGNITIONS

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

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

• 2013, listed in Lawyers of Color Hot List

PROFESSIONAL ACTIVITIES

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

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

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

MEMBERSHIPS: American Intellectual Property Law Association; Virginia Bar Association

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


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

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

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


Christopher Hu concentrates his practice in intellectual property litigation. He has more than 35 years of experience representing a broad spectrum of clients in patent and trade secret cases and disputes involving a wide range of technologies, including:

  • e-commerce
  • computers
  • telecommunications devices
  • medical products
  • chemicals
  • pharmaceuticals
  • consumer products
  • mechanical devices

Christopher speaks frequently at industry events on topics such as the interaction between the Leahy-Smith America Invents Act (“AIA”) and litigation, including patent litigation.


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

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

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

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


Denise Main’s practice focuses on U.S. district court and appellate litigation, with particular experience related to the Hatch-Waxman Act governing the approval of pharmaceutical drugs. She manages day-to-day litigation activities in actions involving multiple parties.

Denise’s broad experience includes conducting offensive and defensive discovery, drafting and arguing dispositive motions, taking and defending witnesses in court, drafting trial and appellate briefs, conducting U.S. and foreign prosecution, and preparing patent applications.

Denise has handled matters involving a wide array of technologies with a focus on the pharmaceutical, chemical, biotechnology, and mechanical arts. She has assisted clients in the fields of pharmaceutical products, cosmetics, hair dyes, pesticides, packaging materials, polymeric materials, and drug delivery systems.

In addition to her litigation practice, Denise advises clients on a variety of patent matters, including polymorph issues, Orange-Book listing patents, U.S. and foreign IP portfolio management, freedom to operate, settlement, licensing, and antitrust issues.


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

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

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

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

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

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

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


Eric Damon currently serves as Senior Counsel for the IBM Cybersecurity Legal team, and most recently served through October 2018, as Director of IP Licensing for IBM in Asia-Pacific, in which role he was responsible for all patent transactions throughout the Asia-Pacific region and for managing research and technology licensing in Japan and Korea.

Eric has held a number of senior IP and legal roles with IBM over the past 14 years, including Lead Counsel for the IP Enforcement & Monetization team, Counsel for the Growth Markets Unit while on assignment in Shanghai, China, and as Counsel in IBM Corporate Litigation.  In these roles Eric has led a wide variety of high-profile patent, IP and commercial disputes and transactions, as well as antitrust and other significant regulatory matters in the United States and throughout the Asia-Pacific region.  Before joining IBM, Eric litigated patent, trademark, copyright and complex commercial matters with the Howard, Rice, Nemerovski firm in California, and managed and led a wide variety of IP and patent licensing, private equity, M&A and other transactional matters while with Foley Hoag in Boston.

Eric received an Electrical/Computer Engineering degree from Tufts University and a Juris Doctor degree from the University of Southern California Gould School of Law.


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

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

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

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


Judge Mitchell was born in Victoria, Texas.  She graduated with honors from Baylor Law School after receiving both bachelors and masters degrees from Texas A&M University.  While at Baylor, Judge Mitchell served as the Senior Executive Editor of the Baylor Law Review, as well as Managing Editor of the Law Review’s Texas Practice Edition.     

After law school, Judge Mitchell clerked for the Honorable Chief Judge Leonard Davis in the Eastern District of Texas before starting her civil practice at Fulbright & Jaworski in Houston.  Judge Mitchell’s practice focused primarily on the area of Health Law Litigation, but she also worked on patent cases and is licensed to practice before the USPTO.  After her time at Fulbright & Jaworski, Judge Mitchell returned to the Eastern District of Texas to serve as the Chief Staff Attorney to Judge Davis. 

Judge Mitchell was sworn in as a United States Magistrate Judge on August 16, 2013.  In her time on the bench, Judge Mitchell has overseen numerous patent and general civil litigation cases.  She also mediates cases pending in the Eastern District of Texas and the United States Court of Appeals for the Federal Circuit. 


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

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

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


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

Meg’s recent experience includes:

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

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


Martin Gilmore is an experienced litigator focusing on intellectual property matters. He represents clients in patent, trademark and trade dress, trade secret and unfair competition matters, as well as in commercial disputes. Representative of his counsel are such recent successes as helping to obtain dismissal of a patent infringement suit against several video streaming pioneers, obtaining an injunction for a client in a trade secret dispute, and negotiating a favorable settlement in a patent infringement lawsuit for a consumer products company.

Martin has advised clients in an array of technical fields, including in semiconductor design, server technology, streaming video, smart phones, medical devices, pharmaceuticals, digital signal processing, digital cameras, media systems, wireless communications and networking, voice recognition systems and website design tools. Martin earned degrees in biomedical and electrical engineering, with a master’s in electrical engineering, all of which support his counsel on a variety of patent matters in the electro-mechanical, biological and chemical arenas.

Experienced in soft IP, Martin has also enforced client rights in trademark and trade dress disputes involving publishing, digital advertising, vehicle design and a variety of consumer services. His litigation experience includes leading a federal jury trial to verdict as well as representing clients in civil and criminal investigations.

Martin has maintained an active pro bono practice throughout his career, including multiple arguments and hearings in federal district court as well as successful appeals in the Court of Appeals for Veterans Claims and negotiated resolutions to family court disputes.


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


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

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

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

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

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

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


Michael K. Milani is an intellectual property damages expert who combines over 20 years of litigation related experience with 6 years of strategic business expertise. This unique blend of experience is responsible for the innovative yet practical approaches he brings to his client engagements. As a testifying expert in State and Federal court matters and ADR proceedings, Mr. Milani predominantly addresses issues relating to the quantification of damages in intellectual property matters and general commercial disputes. He has also addressed commercial success and domestic industry issues in matters pending before Federal courts and/or the International Trade Commission. Mr. Milani’s experience covers a wide range of industries such as semiconductors, medical devices, pharmaceuticals, computer networking, avionics, and cellular technologies, but he has particular expertise in consumer products and electronics.

In addition to his professional experience, Mr. Milani is an adjunct professor teaching graduate level business classes on intellectual property monetization, including the assessment of commercial damages. He has also served as an adjunct professor in a law school, and he authors articles and gives presentations outside of the classroom as well.

Mr. Milani holds an undergraduate degree in finance and an MBA degree with concentrations in strategy, finance and marketing. He is also a Certified Licensing Professional.


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

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

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


Suann Ingle is one of the country’s top visual communication consultants for trial attorneys and litigants. An expert graphic designer, she is also a trusted partner who offers decisive advice on presentation strategy and execution. After thousands of hours in the hot seat in courtrooms and arbitration hearings, Suann remains calm, focused and unflappable regardless of circumstances. This enables her to sense what’s coming, and adjust visual communication on the fly to keep judges, juries and arbiters focused on the merits of the case.

Since entering the field in 1994, Suann has consulted on a wide range of litigation matters, including intellectual property, white collar, insurance, financial services, employment, and complex business disputes. She has extensive experience in scaling and managing trial support teams and has helped deliver successful outcomes in venues throughout the United States and in Europe.

Her visual expertise is grounded in academic study, including a Master of Science degree in Communications Design from Pratt Institute. When she is sketching her ideas, Suann explains the principles behind the sketch – and why they increase the odds of winning. Her personal warmth and empathetic style also enable her to teach, develop and inspire other graphics professionals to embrace the challenges of high-stakes litigation as a career.

Prior to entering the field of trial consulting, Suann spent seven years at Coca-Cola in New York where she managed the Creative Services Department. In 1996, she joined TrialGraphix and was instrumental in establishing its New York office. She also spent three years at DecisionQuest, where she assisted legal teams in trial, providing visual solutions to complex, high-stakes cases. Before starting her own firm, Suann worked at FTI Consulting, Inc., leading the New York office of the Trial Services Division.


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

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

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

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


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

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

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

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

Practice Areas

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

Professional Organization

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


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

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


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