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Detailed Analysis of Today's Critical Patent Litigation Issues (Breakout Sessions from the Patent Law Institute 2018)

Speaker(s): Benjamin C. Elacqua, Brent K. Yamashita, Dawn Rice Hall, Douglas R. Nemec, Hon. Jacqueline Scott Corley, Jason R. Bartlett, L. Scott Oliver, Marti A. Johnson, Robert S. Magee
Recorded on: Apr. 27, 2018
PLI Program #: 244191

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.

Benjamin Elacqua is a principal and patent trial attorney in the Houston office of Fish & Richardson. His practice emphasizes patent and intellectual property matters, including representing clients in litigation involving a wide range of technologies across many industries, particularly in the fields of computer software, computer hardware, medical devices, mechanical products, and consumer products. Mr. Elacqua’s primary practice involves managing complex patent litigations and providing strategic analysis to his clients. He also has significant experience in front of the United States International Trade Commission in Section 337 proceedings.

An accomplished patent litigator, Mr. Elacqua’s experience spans all phases of a complex patent case, including pre-suit investigations, analyzing complicated claim constructions, and managing complex discovery, including expert discovery. This considerable experience includes arguing Markman hearings, as well as other pre-trial hearings. Mr. Elacqua also has extensive jury trial experience, including witness examinations at trial. Mr. Elacqua’s post-trial work includes writing and arguing of post-trial motions, as well as the drafting of appellate briefs.

In connection with his patent trial practice, Mr. Elacqua has advised clients in patent licensing and patent portfolio management and has advised clients in reexamination proceedings before the United States Patent and Trademark Office. Mr. Elacqua is familiar with issues relating to standards essential patents, including litigating standards essential patents in Courts around the world and handling the complexities of issues surrounding FRAND negotiations.

Following law school, Mr. Elacqua was a Law Clerk for Judge Ron Clark of the United States District Court for the Eastern District of Texas. In 2008, Mr. Elacqua volunteered as a prosecutor at the City of Houston Municipal Courts, obtaining first-chair jury-trial experience in Class C misdemeanor cases.

Brent Yamashita is a partner at DLA Piper LLP (US) in its Silicon Valley Office.  He is a patent litigator and prosecutor, with experience in mobile devices, computer hardware and software, semiconductors, storage systems and devices, communication systems and networking.

Brent regularly handles inter partes review (IPR) proceedings before the US Patent Office and has appeared as lead counsel at oral hearings.  He also has argued nine claim construction hearings and conducted numerous ITC and district court patent trials. Brent prepares and prosecutes patents for tech companies of all sizes.

Brent has a B.S.E. degree in electrical engineering from Princeton and a J.D. from UC Berkeley and is a registered patent attorney.

Dawn Hall is a Senior Managing Director in the Dispute Advisory Services (“DAS”) practice within the Forensic & Litigation Consulting segment at FTI Consulting and is the co-leader of the Intellectual Property practice. She is based in New York.

Ms. Hall has 20 years of experience assisting companies and counsel with complex economic, financial, accounting, and litigation issues. Ms. Hall has directed numerous commercial litigation engagements focused on applied economic and damages analyses as it relates to intellectual property and commercial litigation matters, including patent infringement, trademark infringement, copyright infringement, trade secret, false advertising and other types of business disputes, such as breach of contract, breach of non-solicitation/non-compete agreements, transfer pricing and Securities and Exchange Commission (“SEC”) investigations related to accounting irregularities.

Ms. Hall has conducted complex damages studies involving lost sales, lost profits, incremental revenue and cost analyses, market share split analyses, apportionment analyses, manufacturing and marketing capacity, price erosion, reasonable royalty, unjust enrichment and prejudgment interest for both plaintiffs and defendants. Ms. Hall has issued expert reports reflecting professional opinions of these respective areas and has been qualified as a damages expert in Federal court.

Ms. Hall has assisted trial attorneys in analyzing company forecasts, business and strategic plans, financial statements and appropriate market data in the preparation of deposition issues for 30(b)6 and opposing experts and preparing trial exhibits, as well as preparing early case assessments.

Ms. Hall has a B.S. in Finance from the University of Notre Dame. She is a member of the Licensing Executives Society (“LES”) and the American Bar Association (“ABA”).

Jason Bartlett has over fifteen years of experience in intellectual property litigation, commercial arbitration, and licensing. His engagements have involved a broad range of technologies and industries. In computers and consumer electronics, he has litigated and advised companies on design and utility patents relating to smartphone software and hardware, cellular telecommunications standards, self-balancing human transporters (“hoverboards”), drones, human-computer interfaces, global positioning systems, computer animation software, and field programmable gate array hardware.  In the life sciences, he has experience with monoclonal antibody therapeutics and diagnostics, vaccines, and medical devices.

Jason has represented clients in matters in the U.S. District Courts, the International Trade Commission, the U.S. Patent and Trademark Office, Tokyo District Court, and a variety of international arbitral fora.

Jason has extensive experience representing clients in Asia and spent four years practicing in Tokyo. Jason joins MKW from Morrison & Forester where he was a partner in that firm’s Intellectual Property Group.

Magistrate Judge Jacqueline Scott Corley has presided over a variety of civil cases at all stages of the proceedings, from motions to dismiss through jury trial. She has also served as a settlement judge in nearly every type of federal litigation.

Just prior to her 2011 appointment to the Court, Judge Corley was a partner at Kerr & Wagstaffe, LLP in San Francisco as a civil litigator with an emphasis on federal practice. She represented individuals, government entities, and institutions as plaintiffs and defendants in a variety of matters that included trademark, copyright, patent, constitutional law, defamation, malicious prosecution, class actions, contract and probate.

From 1998 through 2009 Judge Corley served as a career law clerk to the Honorable Charles R. Breyer. She also served on the Northern District of California Alternative Dispute Resolution mediation and early neutral evaluation panels from 2006 through her appointment.

Judge Corley received her undergraduate degree from U.C. Berkeley, and her J.D. from Harvard Law School, magna cum laude, where she was an editor and Articles Chair of the Harvard Law Review. Upon graduation she served as a law clerk to the Honorable Robert E. Keeton of the United States District Court for the District of Massachusetts. She then practiced complex commercial litigation and white collar criminal defense at Goodwin, Procter LLP in Boston and was a litigation associate at Coblentz, Patch, Duffy & Bass LLP in San Francisco before joining Judge Breyer in 1998.

Scott Oliver handles patent, copyright, trademark, and trade secret matters, blending creative legal strategies with comprehensive, digestible explanations of complex technology. He designs and implements individualized legal strategies depending on each client’s unique business objectives.

An experienced and highly technical litigator, Scott has handled more than 150 matters and a dozen trials before both the International Trade Commission (ITC) and juries. He has more than 25 years of experience defending and advising companies across an array of industries, including wireless, software, semiconductor, and digital distribution.

In addition to his litigation experience, Scott advises clients on strategically growing and managing their intellectual property portfolios, guiding young companies through patent strategy, and consulting handset manufacturers and patent pools on the licensing of 802.11, 4G, 3G and LTE patents.

Marti Johnson concentrates her practice on intellectual property and technology law, with a focus on patent and trade secret litigation. She has represented clients in federal and state litigation, multidistrict litigation, arbitration, and before the Patent Trial & Appeal Board.  She is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Ms. Johnson has represented clients in matters involving a wide array of technologies, including computer hardware and software, financial systems, e-commerce, Internet technologies, food processing and engineering, telecommunications systems, medical devices, data transmission, semiconductors, electronic displays (including micromirror array and LCD technology) and pharmaceuticals.

Ms. Johnson also provides guidance to her clients on a variety of issues, including intellectual property transactions, freedom to operate determinations, electronic discovery parameters and damages evaluations.

Ms. Johnson’s pro bono practice includes nonprofit intellectual property investigations, social security benefits representation, prisoner abuse cases, and work for the Innocence Project.

Robert Magee has represented clients at the trial and appellate level in a wide array of fields, including pharmaceuticals, computer hardware and software, semiconductor manufacturing, Internet and networking technologies, industrial printing mobile devices, cellular communications, 3D photography, video game hardware, VOIP communications, financial services, construction, and microfluidics.

Mr. Magee is experienced in all phases of patent litigation, including proceedings before the Patent Trial and Appeal Board, the International Trade Commission, at trial in District Court, and on appeal before the Federal Circuit. Mr. Magee has managed teams of attorneys through the lifespan of a litigation. He has drafted a number of IPR and CBM petitions and has second-chaired multiple successful IPR proceedings. As a sample of specific exemplary skills, Mr. Magee has argued motions in State and Federal court; taken and defended depositions, including expert depositions; drafted expert reports and ITC witness statements; and drafted successful motions to dismiss based on §101, for summary judgement, for JMOL, and for remittitur.

Additionally, Mr. Magee is experienced in intellectual property licensing and patent prosecution. He has assisted in a number of transactions including corporate mergers and acquisitions and patent portfolio acquisitions. Mr. Magee has also drafted a number of patents related to software and mobile device hardware.

Mr. Magee has also taken on a number of pro-bono matters. He has worked with a team of attorneys who successfully defended prisoners’ rights in California. Mr. Magee has also worked with Oscar-winning independent documentary film makers on copyright and trademark issues. Finally, he has worked to assist refugees in seeking asylum in the United States.

Mr. Magee has published articles on patent damages, claim drafting and interpretation, Internet privacy issues, and equitable defenses in copyright matters.

Mr. Magee is admitted to practice before the United States Patent Trial and Appeal Board.