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Patent Law Institute 2019: Critical Issues & Best Practices


Speaker(s): Annemarie Hassett, Brian H. Batzli, Brian Hanlon, Brian P. Murphy, Carolyn Kosowski, Catherine J. Toppin, Chase J. Brill, Douglas R. Nemec, Erwin Eichmann, Gerald M. Murphy, Jr., Heather Champion Brady, Hon. Michael A. Hammer, Hon. Scott C. Weidenfeller, Joe Lenart, John M. White, Jon R. Trembath, Juan C. Gonzalez, Judith U. Kim, Kate Gaudry, Ph.D., Katherine Richards, Ken Corsello, Kristen P.L. Reichenbach, Laura Donnelly, Lissi Mojica, Mary (Mindy) V. Sooter, Matt Weinstein, Michael A. Minter, Moshe Malina, Neer Gupta, Patricia A. Martone, Philip W. Marsh, Prof. David Hricik, Robert DeBerardine, Robert J. Spar, Scott M. Alter, Stacey L. Cohen, Stephanie Whitehorse, Teresa Chen, Timothy K. Sendek, Tonya L. Combs, Valerie Calloway
Recorded on: Apr. 4, 2019
PLI Program #: 252608

























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.


Neer Gupta is an intellectual property attorney with over 20 years of experience in the areas of patent licensing, litigation, and strategy.  Neer joined Verizon Communications in 2008 and is currently Associate General Counsel, Intellectual Property.  In this role, Neer is responsible for a variety of transactional matters involving the company’s intellectual property, and is the President of the company’s patent licensing entity.  His areas of responsibility include intellectual property issues as they relate to mergers and acquisitions, licensing, patent purchases and sales, customer and vendor contracts, participation in standards bodies, open source software, and other strategic activities of Verizon and its affiliates.

Prior to joining Verizon, Neer was Executive Counsel for The Walt Disney Company in Burbank, CA, where he was responsible for establishing a comprehensive patent strategy, as well as handling patent litigation and patent licensing matters.  Prior to Disney, Neer provided intellectual property advisory services to Fortune 500 companies while at ThinkFire Services, and was a litigation associate at Pennie & Edmonds and Clifford Chance Rogers & Wells, both in New York City.

Neer received his Bachelor of Engineering degree, magna cum laude, in Electrical Engineering and Math from Vanderbilt University, and his law degree from New York University.


Brian Batzli is currently a Senior Vice President, shareholder, and Chairman Emeritus with Merchant & Gould PC.  He served as the firm’s CEO, Managing Director and Chairman of the Board from 2011 through 2018.  Brian has been with the firm for over thirty years practicing in the areas of patent, trademark, copyright, and licensing.  His technology areas include computer technology, software, physics, internet applications, and the mechanical arts.  He also has significant experience in trademark prosecution and contested matters before the Trademark Trial and Appeal Board. 

Prior to joining Merchant & Gould, Brian was a staff attorney with CPT Corporation where he coordinated Intellectual Property matters, negotiated and drafted licenses and procurement agreements, and advised the corporation on credit, distribution, and corporate legal matters. He received his law degree at William Mitchell College of law (1985 cum laude) and his Bachelor of Electrical Engineering degree from the University of Minnesota (1982). 

Brian is a member of the International Trademark Association, the Licensing Executive’s Society, the American Bar Association, the Minnesota State Bar Association, and the American Intellectual Property Law Association (AIPLA).  He is a Past President of the Minnesota Intellectual Property Law Association (MIPLA) and is a past Chair of AIPLA’s IP Practice in Latin America Committee and AIPLA’s Emerging Technology Committee.  He currently serves as AIPLA’s Treasurer and is on the Board of Directors.  Brian is a frequent lecturer on intellectual property and was an adjunct professor at the Hamline University School of Law for 10 years where he taught Computer Law and Patent Law related courses.


Brian Murphy is a partner at Haug Partners in New York City. 

From September 2013 through September 2017, Mr. Murphy served as an Administrative Patent Judge at the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office in Alexandria, Virginia.  During that time he presided over nearly 200 post grant review trial proceedings (Inter Partes Review, Post Grant Review, and Covered Business Method Review.  As a PTAB trial judge he presided over interlocutory discovery and motion proceedings, heard oral argument, and drafted numerous substantive decisions.  For three years he also served as a Lead Judge on the PTAB leadership team, which included management, supervision, and mentoring of Administrative Patent Judges trained in the biotechnology, pharmaceutical, and chemical arts.  He was a regular speaker at industry conferences on behalf of the PTAB.  Prior to joining the PTAB, Mr. Murphy was a patent attorney in New York City with nearly 30 years of experience trying and litigating major patent cases in federal district courts and the International Trade Commission. 

Mr. Murphy’s practice includes acting as counsel or as a consultant with clients and counsel involved in PTAB post grant trial proceedings, district court litigation and trials (jury and non-jury), and appeals for clients in the pharmaceutical, biotechnology, medical device, consumer products, telecommunications, and electronics industries.  He has particular expertise in Hatch-Waxman patent litigation for branded pharmaceutical companies.  His practice also includes providing intellectual property counsel and strategic advice in connection with transactional due diligence, mediation services, and opinions. 


Carolyn Kosowski is a Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO.  In this position, she assists in the drafting of rule packages, memoranda, and associated guidance to implement USPTO initiatives and comply with developments in patent law.  Prior to joining the Office of Patent Legal Administration, she was a primary patent examiner and examined patent applications related to network security, cryptography, and business method technologies.  Previously, she worked as a patent agent and attorney for a large general practice law firm in Washington, DC.  Carolyn received her B.S. in Systems Engineering from the University of Virginia and her J.D. from the George Washington University Law School. 


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

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

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


Chase Brill is Senior Counsel at Foley & Lardner LLP.  Mr. Brill counsels clients on intellectual property matters, including patent prosecution, patent enforcement and licensing, defense of infringement allegations, due diligence investigations, product clearance, and litigation.  He is a member of the firm’s Mechanical & Electromechanical Technologies Practice and Patent Office Trials Group.  He has significant experience with complex U.S. Patent Office proceedings, including inter partes review trials and ex parte and inter partes reexamination.

Mr. Brill counsels clients in a wide variety of technological fields, including semiconductor devices, medical devices, microfluidic devices, nanotechnology, printing devices, audio-visual systems, augmented reality devices, fuel cells, engine components, vehicle control systems, automotive aftertreatment systems, heating and air conditioning systems, lubricants and low-friction assemblies, integrated circuit test handlers, and food and drink manufacturing systems.

Mr. Brill earned his law degree from Georgetown University Law Center (J.D., 2009), where he was an editor of the Georgetown Law Journal and the Annual Review of Criminal Procedure.

Mr. Brill received his bachelor’s degree in mechanical engineering from Northwestern University (B.S., 2006).


Erwin Eichmann is an intellectual property and technology attorney, providing advice on complex corporate, software, SaaS, outsourcing and fintech transactions, at Goldman Sachs. Previously, he was General Counsel and Chief Business Officer of TheStreet, and Chief Operating Officer and lead of Technology Sourcing for Morgan Stanley, with responsibility for wealth management, private banking, payment processing, fintech, software and SaaS.


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

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

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

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


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


Juan Gonzalez is Vice President, Senior Managing Counsel, Intellectual Property at Mastercard International in Purchase, New York.  In this role, he works to formulate and execute an enhanced worldwide IP strategy geared to protecting the company’s rapidly evolving technologies.  Mr. Gonzalez’s responsibilities include: client counseling and education; oversight of patent prosecution to develop a strategic IP portfolio; management of patent litigation; negotiation of technology license agreements; and conducting IP review of corporate acquisitions and related transactions.  Mr. Gonzalez also manages the company’s expanding portfolio of blockchain-related patent filings.

Mr. Gonzalez joined Mastercard in 2007 where he has taken on increasing areas of responsibility.  He previously was a patent litigation associate at two large New York City law firms.  He worked as an engineer for a public utility for 11 years prior to starting his legal career.

Mr. Gonzalez holds a bachelor’s degree in Electrical Engineering from Manhattan College, an MBA from the NYU Stern School of Business, and a Juris Doctor degree from St. John’s University.


Judith Kim is a Partner in Rubin and Rudman’s Washington, DC office and Chair of the firm’s Intellectual Property Practice.  For over 20 years, Judy has counseled clients innovating in pharmaceuticals, biotechnology, immunology, diagnostics, biofuel, agrosciences, food products, nutraceuticals, cosmetics and personal care.  Judy’s practice includes:

  • Preparation of patent applications and their prosecution and appeals worldwide
  • Management of foreign oppositions and invalidation trials
  • Contested proceedings before the U.S. Patent and Trademark Office
  • Opinions on invalidity and noninfringement to ensure freedom to operate
  • Due diligences for evaluation of investments and acquisitions, and agreements

Prior to joining Rubin and Rudman, Judy was a senior partner at a leading IP law firm, where she led legal teams in patent portfolio management, inter partes disputes, licensing and related IP counseling.

Judy’s scientific experience is in the areas of microbial and mammalian biology.  She co-authored eleven publications resulting from her research.

Judy is an Adjunct Professor at Sogang University Law School in Korea. She speaks Korean.

Education

  • University of Maryland Francis King Carey School of Law, J.D.
  • University of Maryland, M.S., Biology
  • University of Maryland, B.A., Biology

Admissions

  • United States Patent and Trademark Office
  • District of Columbia
  • Maryland
  • United States Court of Appeals for the Federal Circuit
  • United States Supreme Court 


Kate Gaudry, Ph.D., is a partner at Kilpatrick Townsend & Stockton LLP. She focuses her practice on patent prosecution and counseling, with an emphasis on software, computer systems, and quantitative biology. Dr. Gaudry also routinely performs statistical analysis of clients’ patent portfolios to identify effective prosecution strategies. Further, Dr. Gaudry regularly empirically evaluates programs and performance of the United States Patent and Trademark Office so as to provide her clients with prosecution recommendations and to advocate for compact and fair examination. Her publications are representative of such efforts.

Dr. Gaudry’s scientific training spans the fields of biology, mathematics, physics, and computer science. Her experience is particularly strong in applications spanning multiple fields. Dr. Gaudry performed her undergraduate work at Fort Hays State University (magna cum laude), while participating in summer research projects at Los Alamos National Laboratory. Dr. Gaudry then completed her Ph.D. in computational neurobiology at the University of California, San Diego. After working for two years as a patent scientist, she then pursued and completed her J.D. from Harvard Law School (cum laude).

Dr. Gaudry is admitted to the bars in the State of Colorado and in Washington, D.C. She is also a registered patent practitioner at the United States Patent and Trademark Office.


Katherine Richards received her bachelor’s in cellular and molecular biology with a research focus on genetics and neurobiology from Ohio University.  She obtained a Ph.D. in molecular biology from the University of Notre Dame with a research focus on pancreatic cancer, diagnostics, and microfluidics.  She is a patent agent, and she now holds the position of intellectual property manager at the University of Notre Dame IDEA Center.


Ken Corsello is an IP Law Counsel at IBM.  He currently focuses on drafting and negotiating patent licenses and assignment agreements.  At IBM, he has worked on patent procurement, litigation, client counseling, product clearance, and IP transactional matters. 

Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the Federal Circuit; an Associate Solicitor in the USPTO; and in private practice at law firms in Washington, D.C.  He did his undergraduate work in Computer Science at SUNY Stony Brook, received his JD from the Catholic University, and obtained an LL.M. from George Washington University. 

Ken has been the chair of IPO’s Trade Secrets Committee since 2016.  His recent presentations on trade secret law include participating in a panel at the USPTO’s “Trending Issues in Trade Secrets: 2019” symposium and as a witness on behalf of IPO at the 2018 hearing on “Safeguarding Trade Secrets in the United States” held by the U.S. House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet. 


Kristen Reichenbach is an intellectual property litigation partner in the San Francisco office of Kirkland & Ellis LLP. Kristen’s focus is on patent litigation and she has represented clients in intellectual property matters involving a wide range of technology areas including pharmaceutical, biotechnology, telecommunications, e-commerce, search engines, location services, image storage and retrieval systems, electricity meters and optics. Kristen has experience managing written discovery, taking and defending depositions, working with experts, analyzing claim language for Markman, briefing for summary judgment and appealing to the Federal Circuit. She has argued before the Patent Trial and Appeal Board in a Covered Business Method Proceeding.

Kristen holds an M.S. and Ph.D. in physics, and has physics- and optics-related technology experience, including in fiber optics, photonic crystal fibers, biomedical imaging, numerical modeling, nonlinear optics and communications. Kristen started her career as a technical consultant and patent agent, drafting and prosecuting patents before the United States Patent & Trademark Office and internationally. She is consequently experienced in the prosecution and validity analysis of optical, mechanical, quantum computing, computer software and business method patents. In 2011, Kristen graduated summa cum laude from Lewis & Clark Law school, where she was a lead article editor for the Lewis & Clark Law Review and was recognized in the first year moot court competition for Outstanding Oral Advocacy and Outstanding Appellate Brief.


Matt Weinstein is Director, Legal - Patents & Open Source at Accenture, counseling strategic Accenture businesses on patent portfolio development, IP monetization, risk mitigation, dispute resolution, licensing and commercial contracting, and managing Accenture’s global patent operations. Matt also leads Accenture’s open source legal team, which is responsible for all open source governance and licensing matters for the company.

Before joining Accenture in 2013, Matt was in private practice, most recently at Winston & Strawn LLP, where he represented leading technology and manufacturing companies in patent prosecution, litigation, opinion and transactional matters. He began his career as a technology consultant.  Matt earned a BS in computer engineering from the University of Maryland, College Park and a JD (magna cum laude) from the American University, Washington.


Michael A. Hammer was sworn in as a United States Magistrate Judge for the District of New Jersey on August 12, 2011.  Before becoming a Magistrate Judge, Judge Hammer was an Assistant United States Attorney for the District of New Jersey for thirteen years.  From May 2006 to August 2011, Judge Hammer served as Chief of the National Security Unit.  In that position, Judge Hammer supervised and prosecuted a variety of counter-terrorism and counter-espionage investigations, including serving as co-trial counsel in a three-month trial against five men who were convicted of conspiracy to murder government personnel.  Judge Hammer also served as a Deputy Chief of the Criminal Division, supervising a wide variety of white-collar and other criminal prosecutions. From 2002 until 2006, Judge Hammer served in the Special Prosecutions Division, handling public corruption investigations and trials.  From 1996 to 1998, Judge Hammer was an associate at McElroy, Deutsch & Mulvaney (now McElroy, Deutsch, Mulvaney & Carpenter) in Morristown, New Jersey, and worked on a variety of commercial litigation matters.  Judge Hammer also clerked for former District Judge Garrett E. Brown and then-Magistrate Judge Stanley R. Chesler.  Judge Hammer graduated from Seton Hall University School of Law, where he was Editor-in-Chief of the Seton Hall Law Review, and the University of Michigan.


Michael Minter is an Assistant General Counsel, Intellectual Property at Lockheed Martin Corporation - Rotary and Mission Systems.  He specializes in intellectual property law, with a focus on patent, trademark and copyright matters.  Michael is responsible for counseling clients on a wide range of issues, including patents, trademarks, copyrights, trade secrets, commercial and government transactions, and other issues related to Lockheed businesses.  Michael manages Lockheed’s intellectual property portfolio pertaining to its radar systems, advanced manufacturing, and data analytics business.  He counsels clients on various domestic and international patent, trademark, licensing and Internet issues, including selection, clearance, use, licensing and enforcement of Lockheed trademarks.  Michael also advises clients on intellectual property matters in connection with due diligence reviews of intellectual property portfolios in support of business transactions.  He has experience in drafting and negotiating various agreements and licenses, including government contracts, business agreements pertaining to trademarks, copyrights and software, non-disclosure agreements, vendor agreements, sales agreement, and patent and technology licensing agreements.

Prior to joining Lockheed in 2012, Michael worked as an associate in the Northern Virginia Office of Miles & Stockbridge PC.  Michael is admitted to practice in the District of Columbia and Virginia, is certified as Authorized House Counsel in Connecticut, and is a Registered Patent Attorney with the United States Patent and Trademark Office.


Mindy Sooter’s practice focuses on patent litigation and other intellectual property and business disputes, with an emphasis on cases involving telecommunications, electrical engineering and computer science. Ms. Sooter has represented a variety of clients in courts throughout the United States, as well as the International Trade Commission, regarding technologies such as wireless networks and components, fiber-optic networks and components, firewalls and gateways, semiconductors, distributed computing systems and database technologies.

Prior to joining WilmerHale, Ms. Sooter was a partner focusing on intellectual property litigation at another firm in Denver, Colorado.

Ms. Sooter is also an adjunct professor teaching patent litigation at the University of Colorado School of Law.

Ms. Sooter serves as the chair of the Colorado Bar Association’s IP Section.


Moshe Malina is Director, Associate General Counsel and Chief Patent Counsel for Citigroup. Mr. Malina joined Citigroup in 2004, and his responsibilities include management of the firm's patent portfolio - the largest in the financial services industry - and initiation and direction of its ongoing patent procurement program. Mr. Malina is also responsible for Citigroup's patent litigations and other disputes, negotiating technology agreements with vendors and customers, and advising on patent issues arising in matters ranging from routine transactions to major joint ventures and acquisitions. Mr. Malina is Chairman of the Financial Services Roundtable Patent Subcommittee, and has helped coordinate the industry's efforts for patent reform. Before joining Citigroup in 2004, Mr. Malina was an associate at Cleary, Gottlieb, Steen and Hamilton working on both transactional and litigation IP matters. Mr. Malina simultaneously received a J.D. from Columbia Law School and a B.S. in Chemical Engineering from Columbia School of Engineering and Applied Science as part of Columbia's Accelerated Interdisciplinary Legal Education Program. Mr. Malina is a member of the bar in New York and is a registered patent attorney.


Patricia A. Martone is the principal of the Law Office of Patricia A. Martone, P.C., which she founded in 2014. From 1983-2014, Ms. Martone was a partner in prestigious law firms with marketing leading IP practices. She served as lead trial counsel in more than 45 patent cases and tried twelve cases to verdict or judgment.  In addition, she led the licensing and enforcement campaigns of major patent holders and personally negotiated more than 40 agreements, which yielded over $180 million in licensing fees for her clients.

In her current law practice Ms. Martone builds on her experience in providing advice and assistance about intellectual property disputes and transactions with a focus on patents. She continues to work on high stakes matters for clients in the United States, Europe and Asia across a broad range of technologies. Many of her matters have had a multi-jurisdictional component.

Ms. Martone has consistently been ranked as a top lawyer in her field by organizations such as Chambers, Best Lawyers in America, Who’s Who Legal and Managing IP. Her solo legal practice has received national and regional rankings from U.S. News – Best Lawyers® Best Law Firms for the past five years. For 2019, her firm’s rankings include a Metropolitan Tier 1 ranking for New York City for Litigation-Patent.  She also serves as an Arbitrator on the National Roster of Arbitrators of the American Arbitration Association.


Phil Marsh is a Partner in Arnold & Porter’s Intellectual Property group. His practice focuses on patent, trade secret, and complex commercial litigation in federal district courts and before the US International Trade Commission (ITC), and related appellate and administrative proceedings, as well as advising clients on strategic patent portfolio development, and patent acquisition related to electrical, computer, and mechanical inventions.

Mr. Marsh has litigated cases across a wide range of technologies, including medical devices, computer hardware and software, consumer electronics, e-commerce, secure wireless transactions, semiconductor devices and fabrication, wireless telecommunications, optical storage media, solid-state memory devices, fiber optics, lasers, optical amplifiers, solar panel mounting systems, and cryptography. His litigation experience includes direct and cross examination of expert and technical witnesses before the ITC and in jury trials. Mr. Marsh recently was a key part of trial teams that won trials in the ITC and the U.S. District Court for the District of Delaware. 

In addition to his litigation experience, Mr. Marsh also has significant experience representing clients before the US Patent and Trademark Office in all stages, including appeals and post-grant proceedings.

Mr. Marsh currently serves as a member of the Intellectual Property Committee of the Institute of Electrical and Electronics Engineers (IEEE). 

Prior to obtaining his JD from The George Washington University Law School, Mr. Marsh received an honors BS in electrical engineering from the University of Utah and worked as a patent examiner at the US Patent and Trademark Office.


Professor David Hricik received his undergraduate degree magna cum laude and Phi Beta Kappa from the University of Arizona, where he majored in English.  He received his law degree with honors from Northwestern University School of Law.  He practiced with Baker Botts and small litigation boutiques from 1988 to 2002, litigating cases primarily involving patent infringement, legal malpractice, and general complex commercial matters. 

In 2002, he joined Mercer University School of Law, where he teaches legal ethics, patent law and litigation, federal civil procedure, and other courses.  In 2012-13, he served as law clerk to Chief Judge Randall R. Rader at the Federal Circuit.  He rejoined Mercer and also became Of Counsel to Taylor English Duma, LLP, where he continues to represent clients in patent and complex litigation.

He was elected to the American Law Institute in 2016.  He has authored the only treatise on ethical issues in patent litigation, and co-authored the only treatise on ethical issues in patent prosecution.  In addition to serving leadership positions on ethics committees with the AIPLA and ABA and serving as an expert witness, he has written dozens of articles and given well over 100 presentations on issues at the intersection of ethics and patents.  His articles and testimony have been adopted by both state and federal courts.


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

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

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


Scott Alter is an experienced intellectual property attorney whose practice focuses on software, electronics, internet, telecommunications, cloud computing, medical device, financial, and semiconductor technologies. A skilled global patent strategist, he also has significant expertise in patent eligibility, joint and indirect infringement, and indefiniteness. In every matter he handles, Scott strives to obtain practical results for his clients.

Scott has served as an expert witness in litigation concerning data encryption technology. Before becoming a lawyer, he worked at IBM as a LAN systems developer and computer programmer. Prior to joining the firm, Scott was a partner in the Colorado office of a national IP law firm.


Scott C. Weidenfeller joined the Board from the Office of the Solicitor, where he served as Senior Counsel for Patent Law and Litigation. His primary responsibilities included managing litigation against the USPTO involving the AIA, including challenges to PTAB post-issuance proceedings. He also oversaw the USPTO’s decisions whether to intervene in appeals from PTAB decisions in both AIA post-issuance proceedings and inter partes reexaminations, and he advised the USPTO regarding the rules governing post-issuance proceedings. His responsibilities in the Solicitor’s Office also included defending PTAB decisions in cases before the district courts and the Court of Appeals for the Federal Circuit, providing legal advice to the Director and other USPTO officials on proposed regulations and procedures, and providing intellectual property advice to other federal agencies. He also provided representation for the Director in interagency deliberations on important intellectual property cases, including cases before the Supreme Court. Before joining the USPTO, he worked in private practice at Covington & Burling LLP. He also served as a law clerk to the Honorable Timothy B. Dyk at the United States Court of Appeals of the Federal Circuit. He received his J.D. magna cum laude from Georgetown University Law Center, and he received degrees in mechanical engineering and economics from Rice University.


Stacey L. Cohen represents clients in all aspects of intellectual property litigation, arbitration and counseling with a focus on patent, trade secret and other technology and science-based disputes. In addition to litigation, Ms. Cohen’s practice includes counseling on acquiring, evaluating, licensing, enforcing and protecting intellectual property rights and has served as the technical liaison with in-house scientists in consumer class actions.

Ms. Cohen has advised clients in the pharmaceutical, medical device, biotechnology, financial services, consumer electronics, retail, cosmetics, semiconductor, food services equipment and IT industries. Notable accomplishments include:

  • serving as trial counsel in a jury trial involving virtual reality technology before the U.S. District Court for the Northern District of Texas, which resulted in a $500 million verdict against Facebook subsidiary Oculus and its executives for copyright infringement, breach of contract and false designation;
  • a complete victory in a bet-the-company arbitration involving an IP licensing dispute;
  • representing multiple financial services entities in an industry-wide patent litigation, which resulted in findings of no infringement by all clients;
  • ensuring that a client’s patent enforcement action remained in the original jurisdiction;
  • securing a client’s freedom to operate by proving invalid a competitor’s patent;
  • successfully resolving numerous patent and trade secret disputes through mediation and other alternative dispute resolution processes on favorable terms for clients; and
  • serving as author of an amicus brief submitted to the Supreme Court of the United States on behalf of the American Bar Association, whose proposals were largely adopted by the Supreme Court.

Ms. Cohen is a frequent contributor to publications, including Law360, BNA’s Patent, Trade­mark & Copyright Journal, Intellectual Property Magazine, Practical Law The Journal and the AIPLA FDA Flash, and has been quoted in publications including Forbes, Law360, the ABA Journal and Intellectual Asset Management Blog concerning recent rulings on patent law. She has presented at the Practising Law Institute IP Monetization seminar and the NYIPLA Patent CLE Seminar, as well as at the International IP ADR Center Program in Seoul, Korea.

Ms. Cohen devotes substantial time to pro bono work for the Innocence Project, including authoring two petitions for writs of certiorari submitted to the Supreme Court of the United States on behalf of a death row inmate. She was named a 2015 Empire State Counsel Honoree by the New York State Bar Association for her pro bono work.

She is a member of the Skadden group recognized by BTI Consulting as one of the top legal advisers general counsel turn to for pharmaceutical work; as one of the top six IP litigation powerhouses in BTI’s Litigation Outlook 2017 report; by Law360 among its 2015 Technology Practice Groups of the Year for courtroom victories in the technology sector; and by The National Law Journal as one of the country’s leading IP practices in its IP Hot List for multiple years.


Teresa Chen joined the Office of the General Counsel (OGC) in February 2014 as an Associate General Counsel.  As a member of the OGC’s patent and licensing group, she manages patent prosecution in the life sciences area.  Dr. Chen comes to Columbia with specialized experience in patent law, previously working as a patent agent and as an associate at the law firm of Winston & Strawn from 2006 to 2014.  Prior to joining Winston, Dr. Chen was an assistant professor at Albert Einstein College of Medicine. 

Dr. Chen received a Ph.D. in Genetics and Development from Columbia University, and a J.D. from Fordham Law School.  She is admitted to practice law in New York State and before the U.S. Patent and Trademark Office.


Timothy Sendek is an experienced trial lawyer focusing on patent, trademark, and copyright disputes in U.S. District Courts, the International Trade Commission, and at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. His experience includes numerous Section 337 trials at the ITC, jury and bench trials in District Court, and patent office litigation, including over 60 inter partes review (IPR) proceedings.

A registered patent lawyer with a background in engineering, Tim’s practice covers a range of technologies and sectors, including automotive, electronics, food and beverage, and consumer goods. In addition to his litigation experience, Tim advises clients on IP compliance, risk management, counseling, and patent prosecution.

At the Patent Office, Tim has asserted and defended petitions for IPR and other America Invents Act (AIA) post-grant challenges. In 2015, he was ranked by Patexia as one of the top five attorneys in the country handling IPR petitions. In addition to practice, Tim teaches patent litigation as an adjunct professor at the University of Illinois College of Law.


Tonya Combs is the Vice President – Deputy General Patent Counsel at Eli Lilly and Company.  She and her team are responsible for global patent procurement, valuation and freedom to operate assessment, and providing IP advice regarding agreements and third party collaborations for Lilly’s Bio-Medicines therapeutic areas. Prior to April 2017, she was general counsel for Lilly’s Oncology Business unit, where she was accountable for a variety of pharmaceutical and corporate legal matters. Other practice areas of focus include patent litigation, trade secret loss investigations, pharmaceutical law and regulations, and alternative dispute resolution.  She received her J.D. summa cum laude from IU McKinney School of Law, and holds a B. S. in Chemical Engineering from Rose-Hulman Institute of Technology.


Valerie L. Calloway is Senior Counsel and Global Trademark Law Leader for IBM. Prior to joining IBM, Ms. Calloway served as Chief Intellectual Property Counsel for two companies, where she worked at each to maintain, enforce, and continue developing global intellectual property portfolios. During her more than 20 years of practice in the intellectual property profession, Ms. Calloway has worked as both in-house and outside counsel for several Fortune 1000 firms. Prior to attending Law School, Ms. Calloway was employed in manufacturing management.

Ms. Calloway was a member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) from 2016-2019 and is a life member of the National Bar Association. Ms. Calloway earned her M.B.A. from the University of Chicago, her J.D., cum laude, from the University of Minnesota, and her B.S. in Chemical Engineering from the University of Virginia. She is admitted to practice law in Ohio, New York (In-House Counsel), and before the U.S. Patent and Trademark Office.  


As an Intellectual Property litigation attorney with more than 20 years’ experience, Jon is adept in handling complex legal issues and challenging logistics.

He concentrates on patent litigation, devising winning strategies that give his clients competitive advantages in the marketplace. He has established a record of success at both the trial stage and with appeals before the U.S. Court of Appeals for the Federal Circuit, prevailing in all but one of the Federal Circuit appeals he controlled.

Jon works on behalf of clients in a variety of industries, including agribusiness, energy, telecommunications, software, electronics, manufacturing, and mining. Clients appreciate Jon’s strong analytical skills and his ability to translate elaborate, intricate concepts and technologies into a clear and compelling narrative. Jon also advises businesses on portfolio management and monetization.

Prior to joining the firm, Jon was a partner in the Colorado branch of a noted U.S. patent litigation firm. Earlier in his legal career, he was an associate at a global IP specialty firm and served as a law clerk for the Honorable Randall R. Rader at the Court of Appeals for the Federal Circuit.


Lissi’s Practice focuses on all aspects of preparing, analyzing and prosecuting post-grant proceedings, including inter partes review (IPR) and covered business method (CBM) proceedings. Lissi’s practice also includes appeals to the Patent Trial and Appeal Board, reissue applications, interference proceedings, patent quality and patent examination matters.

Prior to entering a law firm setting, Lissi served as a Director at the United States Patent and Trademark Office (USPTO), where she started the Central Reexam Unit (CRU). As Director, she oversaw policies, standards and procedures and developed inter partes and ex parte reexamination training for CRU examiners.


Mr. Lenart concentrates his practice on the development and enforcement of intellectual property. 

Practice & Background

Mr. Lenart is a registered patent attorney with experience representing large corporate clients as well as smaller early-stage organizations in a wide range of intellectual property matters.  Mr. Lenart develops and implements strategies in domestic and international patent preparation and prosecution, opinions, licensing, acquisition, litigation, and IP portfolio strategy.

Prior to forming KLS, Mr. Lenart was a partner at Biggers and Ohanian LLP, an intellectual property boutique specializing in patent development and enforcement.  Before that, Mr. Lenart was a patent attorney at another intellectual property law firm in Austin.  In both firms, Mr. Lenart was responsible for preparing and prosecuting hundreds of patent applications and providing strategic advice and counsel to in house counsel of various corporations.

Before attending law school, Mr. Lenart worked for several years as a software engineer in numerous industries, most recently in a senior level position with an international telecommunications company.   As a software engineer, Mr. Lenart worked on projects involving enterprise software development, performance analytics, application frameworks, and kernel development. 

Mr. Lenart received his B.A. in Computer Science from the University of Texas at Austin and his J.D. from Southern Methodist University where he graduated cum laude.


Recognized as one of the top patent educators in the United States, John has over 30 years experience in all phases of the patent field. As a Director at Soryn, John is principally responsible for outreach to the technology community and advising Soryn clients on a host of strategic issues.

John began his technical career as a Field Engineer with the Federal Highway Administration specializing in bridge rehabilitation. Later, he worked as a Patent Examiner and the Special Assistant and Speech Writer to the Commissioner of Patents, Donald J. Quigg. Post law school, John founded what would become the largest patent searching and documentation entity in the U.S., supplying the needs of clients across the globe. He also founded the patent law firm, Berenato & White, and a patent education company. After selling the education company to the Practising Law Institute in the mid-90’s, John remained the author and principal lecturer for the course he created.

Since 1995, John has taught 25,000+ fellow patent practitioners in preparation for the Patent Office registration exam. He has also taught more than 400 Patent Examiners patent law and evidence, and has been qualified as a Patent Procedure Expert in several Federal District Court lawsuits. In addition, John served as an Adjunct Professor for the University of Virginia School of Law, and John Marshal Law School and has created numerous patent education programs and publications.

John has examined, written, and prosecuted thousands of patent applications in the United States and around the world.

Born in Bern, Switzerland, John graduated in Civil Engineering from Virginia Tech, and obtained his law degree from George Washington University. He regularly speaks and publishes on a host of patent topics.


Since January 3, 2007 when he retired from the USPTO, Robert (Bob) Spar has been actively providing advice, consultation and training services to the patent bar about patent practices and Office procedures, including, in particular, about recent examination related notices/initiatives, and proposed/final rule changes by the USPTO. He has provided such specialized consultant services via presentations and training workshops, with follow-up e-mails, to patent intellectual property organizations, individual attorneys, patent departments of major corporations and leading patent law firms; and to the patent community in general via presentations at Annual Patent Law conferences and telephonic Hot Topic Briefing webinars for the PLI. He has taught for the PLI in its bar review course, its program on Reissue and Reexamination Strategies and Tactics with Concurrent Litigation, and in its annual PLI programs on prior art/35 USC 102/103.  He also served as an expert witness in patent litigation matters, and provided legal and technical consultation services on reissues, reexamination requests, and patent procedures, practices and issues.

Prior to his retirement on January 3, 2007, Bob had nearly 40 years of service at the USPTO. For the last 11 years, Bob was the Director of the Office of Patent Legal Administration (OPLA, formerly SPLO), under the Deputy Commissioner for Patent Examination Policy. Bob, with OPLA, played a significant and leading role in developing and implementing many major Office rule makings and policy initiatives involving the patent process, and greatly affecting the patent corps and all patent practitioners.

During his tenure in the Office, Bob served in a number of capacities in Patents, holding the titles of Primary Examiner, Supervisory Patent Examiner (SPE), and Special Programs Examiner (SPRE); serving on details to the Solicitor’s Office, the Board of Appeals and Interferences; and in 1978, he was selected for a 1 year Commerce Science and Technology Fellowship to the White House.

He taught extensively at the Patent Academy (including numerous patent examiner initial training (PEIT) sessions, and on 35 U.S.C. 103 – Obviousness); he made many training and informational presentations to examiners, technical support staff, and top patents management; and he made a large number of presentations on proposed, existing and revised PTO practices and policies to state and city patent bar organizations, at conferences of intellectual property organizations, and for the PLI. He helped to create the Form Paragraph manual of the Manual of Patent Examining Procedure (MPEP), and served as its editor for many years.

He received a BME from Rensselaer Polytechnic Institute in 1962, a LLB from University of Baltimore in 1969, is a member of the Maryland Bar, AIPLA (a member of the Rules Sub-Committee), and is admitted to the CAFC.


Stephanie is a Registered patent agent with a B.S. Materials Science and Engineering (UW–Madison) and engineering experience in product design consulting, mechanical design and materials selection. 

WARF is the designated patent management organization for UW-Madison and the Morgridge Institute for Research.  At WARF, Stephanie manages intellectual property in the fields of biomedical engineering, medical physics, mechanical and civil engineering, micro and nanotechnologies, materials and processing as well as electrical engineering, computer science and software.  She also works with WARF’s General Counsel, WARF staff and the university community to revise and implement WARF's intellectual property procedures and policies.


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

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

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

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

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


Brian E. Hanlon is the Director of the Office of Patent Legal Administration (OPLA) at the United States Patent and Trademark Office (USPTO).  Prior to taking his current position, Mr. Hanlon served as the acting Chief of Staff for Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David J. Kappos, and served as the Director of Strategic Planning and Management Council for Under Secretary and Director Jon W. Dudas and acting Under Secretary and Director John J. Doll.  Prior to his work in the Under Secretary’s Office, Mr. Hanlon was the Deputy Director of OPLA.  Mr. Hanlon was also a shareholder at the law firm of Banner & Witcoff, Ltd. where his practice focused on patent prosecution and client counseling on issues relating to both procurement and enforcement of utility and design patents.  Mr. Hanlon began his career as a patent examiner at the USPTO in former Group 3300, now TC 3700.  He received a Bachelor of Science in Mechanical Engineering with Honors from Worcester Polytechnic Institute, and a J.D., Magna Cum Laude, from the Catholic University of America, Columbus School of Law.  Mr. Hanlon is a member of the Bars of Maryland, the District of Columbia, and the United States Supreme Court.


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