Skip to main content

Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation

 
Author(s): Jonathan Berschadsky, Angelo J. Bufalino, Jennifer R. Bush, Tiffany P. Cunningham, Thomas J. Kowalski, Michael A. Molano, Kevin E. Noonan, Paul J. Otterstedt, Marc A. Sockol
Practice Area: Intellectual Property
Published: May 2019
ISBN: 9781402434020
PLI Item #: 252654
CHB Spine #: G1415

Mr. Berschadsky’s practice focuses on patent prosecution and litigation, freedom to operate analysis, U.S. and international strategic patent portfolio planning and management, as well as counseling clients on strategic partnerships and technology acquisitions. Having worked in the satellite communications industry on commercial spacecraft, the electronics industry on high-tech audio and electronics, and various Machine Learning applications of Artificial Intelligence qualifies Jonathan to work on all things "technologically complex." He can write about them for any audience: business folk, engineers, PTO examiners, judges and juries. When it comes to drafting patent applications, formulating arguments for high-stakes litigations, and rendering opinions on issues of patent infringement, validity and enforceability, Jonathan never leaves a stone unturned. He combines that with some serious agreement drafting and negotiating skills.

Jonathan is a regular CLE instructor for the Practicing Law Institute (PLI) and in-house counsel. Jonathan also moonlights as a mixed martial artist and on weekends goes mountain bike riding.

Awards and Recognition

Jonathan was the winner of The Burton Awards 2016 Distinguished Legal Writing Award for co-authoring “Is PTAB ‘death squad’ just a myth?” He has also been recognized as an IP Star in the 2013 - 2017 editions of Managing Intellectual Property, selected by Patent Buddy as one of the Top Patent Prosecutors nationally in the Computer, Electrical, Software and Business Methods areas for 2011-2017, recognized in the 2017 edition of IAM Strategy 300 – The World’s Leading IP Strategists, and was listed as a Top New York City Intellectual Property Litigator in the 2014-2017 issues of Super Lawyers: New York Metro Edition.

Education

J.D., Rutgers University School of Law, 2000

M.S.E.E., Boston University, 1993

B.S.E.E., Boston University, 1991

Bar Admissions

State of New York, 2001; State of New Jersey, 2000; U.S. Patent and Trademark Office

Professional Activities

American Bar Association; American Intellectual Property Law Association; New York Intellectual Property Law Association


Angelo J. Bufalino has been practicing intellectual property law for over 39 years. He counsels clients in patent, trademark and copyright matters, including intellectual property litigation, transactional issues, licensing matters, and patent validity and infringement studies, and he has extensive, worldwide experience in prosecuting patents and trademarks. He has appeared in U.S. federal district and appellate court litigation relating to products in various industries and technologies, in inter partes proceedings before the U.S. Patent and Trademark Office and in proceedings before the Patent Trial and Appeal Board. He has been involved in approximately 30 patent, trademark and copyright trials. Mr. Bufalino serves a diverse range of clients with an emphasis on electrical and mechanical technology and consumer products.

Mr. Bufalino was selected for inclusion from 2005 to 2006 and from 2008 to 2018 in Illinois Super Lawyers. He was also selected by his peers from 2012 to 2019 for inclusion in The Best Lawyers in America in the fields of Patent Law and Trademark Law. In addition, Mr. Bufalino has been selected by his peers from 2013 to 2019 as a Leading Lawyer in Intellectual Property.

Affiliations

Member, College of Engineering Advisory Council, University of Notre Dame

Member, American Intellectual Property Lawyers Association

Member, Intellectual Property Lawyers Association of Chicago

Member, American Bar Association

Member, Federal Circuit Bar Association

Member, Chicago Bar Association

Client Services

Intellectual Property

Information Technology & Licensing

Intellectual Property Litigation

Education

Loyola University Chicago School of Law, J.D., 1979

University of Notre Dame, B.S.E.E., 1976

Bar Admissions

Illinois, 1979

U.S. Patent and Trademark Office, 1979

Court Admissions

U.S. District Court, Northern District of Illinois, 1979

U.S. Court of Appeals, Seventh Circuit, 1980

U.S. Court of Appeals, Federal Circuit, 1982


Jennifer Bush’s practice focuses on representing clients in prosecuting patent applications and in post-grant proceedings.

Follow Jennifer’s commentary on IPR and related issues on Between the Parties Blog.

Jennifer has over a decade of patent prosecution experience in a wide range of technical fields, including computer software, Internet technologies, RFID and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. She also has substantial experience with post-grant proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes reviews (IPRs), post-grant reviews (PRGs), patent appeals and reexaminations. To date, Jennifer has served as lead counsel in 12 PGRs, making her one of the most experienced lawyers in these types of proceedings.

Jennifer’s practice also includes intellectual property strategy and counseling and she has analyzed IP issues for numerous due diligence and litigation matters. In addition to providing legal services for her clients, Jennifer has been a Lecturer-in-Law at the University of California, Davis School of Law, where she taught patent prosecution and practice, and has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law. She is also a member of the faculty at the Practising Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution boot camp.

During law school Jennifer was awarded the faculty-selected Mabie Award for Outstanding Graduate, peer-selected Graduating Student of the Year, and served as Editor-in-Chief of the Santa Clara Law Review.

Prior to rejoining Fenwick & West, Jennifer was General Counsel with Apercen Partners LLC, serving as sole counsel for seven entities spanning a breadth of legal issues, including IP, employment, contract, securities, tax and general compliance matters.


An intellectual property litigator, Tiffany Cunningham serves as trial and appellate counsel for FORTUNE 500 companies, small enterprises and individuals in complex patent and trade secret disputes. Her experience includes technologies related to chemical and pharmaceutical disciplines, biotechnology, computer science, automotive and mechanical engineering. She is a registered patent attorney before the United States Patent and Trademark Office and a partner in the firm's Patent Litigation practice.

Tiffany has extensive experience in dispute resolution venues nationwide, including numerous district courts and the Federal Circuit. Tiffany has successfully represented clients through all phases of litigation, including trial and appeal.

A graduate of Harvard Law School, Tiffany earned a Bachelor of Science in chemical engineering from the Massachusetts Institute of Technology. Prior to joining the firm, Tiffany was a partner at Kirkland & Ellis LLP and a clerk for Judge Dyk of the U.S. Court of Appeals for the Federal Circuit. She has been recognized on the 2016 - 2019 Illinois Super Lawyers lists, 2017 - 2019 Leading Lawyers lists, 2015 - 2016 Emerging Lawyers lists by Leading Lawyers and the 2013 - 2015 Illinois Rising Stars lists.  In 2018, she was also recognized as one of Chicago's Notable Minority Lawyers by Crain's Chicago Business.

Representative Experience

  • Obtained favorable jury verdict for plaintiffs on liability and damages in healthcare patent litigation in the Western District of Wisconsin.
  • Served as trial counsel in the District of Delaware for patentee in ANDA litigation involving anti-viral drugs. Obtained favorable post-trial ruling upholding patent validity.
  • Obtained judgment as matter of law of non-infringement in high profile, multi-million dollar patent dispute for a leading smartphone manufacturer after a jury trial in the Northern District of California. Named by the Daily Journal as one of the top defense verdicts in California in 2012.
  • Served as appellate/re-trial counsel to defendants. As a result of a successful appeal, case was re-tried. See Caterpillar, Inc. v. Sturman Indus., Inc., 387 F.3d 1358 (Fed. Cir. 2004), cert. denied, 545 U.S. 1114 (2005). Obtained favorable judgment on trade secret and conversion claims. Case settled after trial on confidential terms.

Education

  • Harvard Law School, J.D., 2001
  • Massachusetts Institute of Technology, SB, Chemical Engineering; Minor in French, Phi Beta Kappa, Tau Beta Pi, 1998


Thomas J. Kowalski is a Registered US Patent Attorney with over 30 years' experience. Mr. Kowalski's practice includes biotech, chemical and medical apparatus litigation, patent prosecution, licensing and counseling. He also represents his clients in procuring and enforcing trademarks. Mr. Kowalski obtains trademark protection domestically and worldwide, and he enforces trademark rights in the United States. He has also defended clients accused of trademark infringement and negotiated agreements to avoid litigation.

In fulfilling the requirements for American Chemistry Society certification, Mr. Kowalski has extensively studied graduate biochemistry, graduate inorganic chemistry, genetics, computer science and laboratory research (a joint project amongst NYU (in the laboratory of Yorke E. Rhodes, Ph.D.), Columbia University and The NASA Goddard Institute for Space Studies (under Carl A. Gottlieb, Ph.D.). Also while studying at NYU, he was awarded a National Science Foundation Undergraduate Research Participant (NSF-URP) Grant and performed laboratory research at Hunter College, City University of New York (in the laboratory of Joseph J. Dannenberg, Ph.D.). Mr. Kowalski is a member of the editorial board of Pharmaceutical Patent Analyst and Journal of Commercial Biotechnology, and an editorial advisor for Intellectual Property for Nature Biotechnology.

Mr. Kowalski has extensive international experience and has appeared before courts and proceedings throughout the world, including London, England; The Hague, Netherlands; Dusseldorf, Mannheim and Munich, Germany; Vienna, Austria; Tokyo, Japan; and Melbourne and Canberra, Australia. Mr. Kowalski received a B.S. from New York University and a J.D., with honors, from St. John's University School of Law.

Areas of Practice

Intellectual Property Law

Inter Partes Proceedings

Appellate IP Advocacy


He draws particular praise for his "very thorough and thoughtful work," as well as for his ability to explain complicated technology matters in layman's term. As one client put it, he "knows the technology, knows the law and is very cost-effective." Chambers USA. 

“He consistently supplies sound IP advice laced with good commercial sense. Fast on his feet and someone who thinks outside the box, he interweaves legal and business considerations well and has a strong understanding of technology.” IAM Patent 1000. 

Michael Molano is the Intellectual Property practice leader and hiring partner for the Northern California offices. He has represented some of the leading technology companies in the US, including Marvell Semiconductor, Inc. and Philips Electronics North America. His practice largely focuses on patent litigation in district courts and before the ITC, but he has experience in all areas of litigation, including commercial disputes involving technology.  Mike has served as first-chair trial counsel in both jury and bench trials, as well as in arbitration proceedings.

Chambers USA ranks Mike as a leading lawyer in California in IP, stating that clients describe him as “very thorough and thoughtful.” Chambers also notes that he “knows the law, knows the technology and is very cost-effective.” Mike was also recognized for his work in California in the 2015-18 editions of IAM Patent 1000, which describe him as a "bigwig" in IP and recommend him as “a smart choice for technically complex patent spats.” He is also described as “a dexterous technology-focused litigator" and “top-notch licensing negotiator” – predominantly for US and European-based entities – who is "known for his detail-oriented approach and great sense of humour.”

An electrical engineer, Mike has drafted and prosecuted patent applications in the semiconductor, software, hardware and other electro-mechanical technologies.  He has also served as IP deal counsel in corporate transactions.


Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs in landmark patent and other cases to district courts, the Federal Circuit and the U.S. Supreme Court involving patenting issues relevant to biotechnology.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program “60 Minutes” that addressed the issue of gene patenting.

 


Paul is a partner in the firm of Otterstedt, Wallace & Kammer, LLP.  He has been practicing intellectual property law since 1994, and has worked both as an in-house attorney for a Fortune 100 company and in private practice. He holds a J.D. degree magna cum laude from St. John’s University (where he was a member of the Law Review), a B.E.M.E. degree summa cum laude from Manhattan College, an M.S.M.E. degree from Columbia University, and an M.S.E.E. degree from Polytechnic University (Now the New York University Tandon School of Engineering). Paul’s practice focuses on the preparation and prosecution of patent applications in the electrical, electronic, software, and mechanical arts, as well as related counseling, licensing, due diligence, and opinion work. Paul is admitted to practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts for the Southern and Eastern Districts of New York, in the state courts of Connecticut and New York, and before the U.S. Patent and Trademark Office.  Paul’s article Unwrapping File Wrapper Estoppel in the Federal Circuit: A New Economic Policy Approach, 67 St. John's L. Rev. 405 (1993), was cited in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 56 USPQ2d 1865, 1915 (Fed. Cir. 2000)(Linn, J., dissenting). Paul successfully prosecuted U.S. Patent No. 6,529,871, which was named one of “Five Killer Patents” of 2003 by the MIT Technology Review on May 1, 2004.


Marc A. Sockol is a partner in the Intellectual Property Practice Group and the former Office Managing Partner of the firm’s Silicon Valley office.  He specializes in intellectual property rights and also has experience in trademarks, copyrights, trade secrets, open source and technology licensing.

Marc applies his electrical engineering and legal skills to client counseling, portfolio analysis and development, preparation and prosecution of patent applications, preparation of patentability, invalidity and noninfringement opinions, and the assertion and defense of patent litigation claims.  Many patents that Marc has drafted have been litigated and have brought hundreds of millions of licensing revenue to his clients.  He has drafted and defended more than 1000 patent applications across a broad spectrum of technologies, including:

  • Application development tools
  • Artificial intelligence
  • Biometrics
  • Bitcoin and block chain
  • Business methods
  • Computer hardware (including memory systems, microprocessors, bus communication, video displays, disk drives, and scanners)
  • Computer software (including application software, computer games, operating systems, and system drivers)
  • Database structures
  • Digital and analog circuitry
  • E-commerce
  • Fault tolerant systems
  • HVAC
  • IoT and home automation
  • Machine learning
  • Medical devices
  • Microware communication
  • Multimedia distribution systems
  • Networking
  • Network and computer security systems
  • Optics
  • POS hardware and software
  • QAM
  • QOS monitoring
  • RFID
  • SAAS
  • Satellites
  • Semiconductor design and fabrication
  • Set-top boxes
  • Solar power
  • Sound networking
  • Storage management systems (including RAID systems)
  • Thin films
  • Tracking systems
  • Video games
  • Web analytics
  • Wireless systems (including WiFi, WiMax and LTE)