Skip to main content

USPTO Post-Grant Patent Trials 2019: New Challenges & Tactics


Speaker(s): Alexander J. Hadjis, Alyssa Holtslander, Ami Patel Shah, Andrew T. Harry, David J. Kappos, David L. McCombs, Deborah Sterling, Ph.D., Donald R. Steinberg, Gabrielle E. Higgins, Hon. Randall R. Rader (Ret.), Kirsten A. Grüneberg, Melissa Finocchio, Nathan Kelley, Peter P. Chen, Robert Greene Sterne, Scott A. McKeown, Trenton A. Ward
Recorded on: Sep. 11, 2019
PLI Program #: 252774

Alexander J. Hadjis represents clients as lead trial counsel before the federal district courts and the U.S. International Trade Commission.  Over the course of his twenty-plus year career, Mr. Hadjis has successfully tried over a dozen noteworthy cases for companies such as Freescale, Genesis Microchip, Huawei, Intel, Spansion, and Thomson Consumer Electronics.  He has litigated many more.

As a result of his successes, Mr. Hadjis has been consistently recognized by independent rankings outlets as a leading intellectual property litigator.  They include Chambers USA, Chambers Global, Legal 500, IAM Patent 1000, Super Lawyers, and The Washington Post.

Mr. Hadjis focuses his practice on intellectual property litigation and cases involving the interface between intellectual property and antitrust law.  He has handled patent, antitrust, and breach of contract cases that cover the semiconductor, liquid crystal display, telecommunications, medical device, optical storage media, software, biotechnology, electronic systems, computer network, fluid dynamics and heat exchange, xerography, chemical, and automotive component fields.  Mr. Hadjis has extensive experience litigating cases involving technology standards.

Mr. Hadjis is former Judicial Law Clerk to the U.S. Court of Appeals for the Federal Circuit.  He received a Master of Laws in Intellectual Property from the George Washington University Law School, a Juris Doctor from the University of Pittsburgh School of Law, and a B.S.E.E. from The Ohio State University.  Prior to joining Oblon, Mr. Hadjis was the Co-Chair of the Intellectual Property Group and the Chair of the International Trade Commission Practice of another large international law firm.


Alyssa Holtslander is senior patent counsel at Unified Patents. Alyssa prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, Alyssa practiced at Finnegan, Henderson, Farabow, Garret & Dunner, LLP for over ten years. At Finnegan, Alyssa provided well-rounded intellectual property services by drawing on her experience in port-grant proceedings, proceedings before the International Trade Commission, district court litigations, due diligence investigations, patent prosecution, and opinions on patent infringement, patent validity, and freedom-to-operate. Alyssa worked on a broad range of patent matters and represented clients in a wide range of mechanical and electrical technologies including network systems, electric motors, cellular devices, vehicular, mining, aerospace, medical, chemical processes and equipment, and defense system technologies. Alyssa earned her J.D. from the George Washington University Law School and her B.S. in Mechanical Engineering from the Pennsylvania State University.


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

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

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

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

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


David J. Kappos is a partner at Cravath.  He is a leader in the field of intellectual property, including IP management and strategy, the development of global IP norms, laws and practices as well as commercialization and enforcement of innovation-based assets. 

From 2009 to 2013, Mr. Kappos served as Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office (USPTO).  In that role, he advised the President, the Secretary of Commerce and the Administration on IP policy matters and was instrumental in achieving the greatest legislative reform of the U.S. patent system in generations through passage and implementation of the 2011 Leahy-Smith America Invents Act.

Prior to leading the USPTO, Mr. Kappos held several executive posts in the legal department of IBM, including as Vice President and Assistant General Counsel for Intellectual Property from 2003 to 2009.  In that capacity, he managed global IP activities for IBM.  During his more than 25 years at IBM, he also served in a variety of other roles including litigation counsel and Asia Pacific IP counsel.

Mr. Kappos has received numerous accolades for his contributions to the field of IP, including being named one of the “Top 25 Icons of IP” by Law360, one of the “50 Most Influential People in IP” by Managing IP, one of the “Top 50 IP Trailblazers & Pioneers” and one of the “100 Most Influential Lawyers in America” by The National Law Journal, “IP Professional of the Year” by the Intellectual Property Owners Association and being inducted into the Intellectual Property Hall of Fame by Intellectual Asset Management Magazine in 2012.

Mr. Kappos serves on the Boards of Directors of the Partnership for Public Service, the Center for Global Enterprise and the Intellectual Property Owners Education Foundation.  He is a member of the Advisory Board of ORoPO Foundation and Chair of the Advisory Council of the Naples Roundtable.  Additionally, Mr. Kappos is the U.S. Chair of the U.S.-China IP Cooperation Dialogue.  He is also an adjunct professor at Columbia Law School, where he teaches copyright litigation, and Cornell Law School, where he teaches legal advising for the start-up general counsel.

Mr. Kappos received a B.S. summa cum laude in Electrical and Computer Engineering from the University of California, Davis in 1983 and a J.D. from the University of California, Berkeley in 1990.


David McCombs is primary counsel for many leading corporations in patent inter partes review before the U.S. Patent Office’s Patent Trial and Appeal Board and in appeals before the Federal Circuit.  His practice spans 34 years and includes appellate argument, patent litigation, licensing and technology transfer, patent portfolio development and drafting, and dispute resolution.  He is regularly identified as one of the most active attorneys appearing before the Patent Trial and Appeal Board.

Mr. McCombs is the firm-wide chair of the technology practice of Haynes and Boone.  He has a Physics degree and represents clients in technologies that include electronics, semiconductors, software, telecommunications, medical devices, and energy equipment. 

Prior to joining Haynes and Boone in 1989, he served as in-house patent counsel for a diversified technology company located in Research Triangle Park, North Carolina, with a long history of developing breakthrough chemical/material science, diagnostic, robotics, and motion management technologies.

In Chambers & Partners Mr. McCombs is ranked among Texas’ leading intellectual property attorneys.  He is active in many continuing legal education organizations, and regularly writes and speaks on a variety of topics related to patent law.  He is the co-author of “Intellectual Property Law,” published annually by The SMU Law Review (2010-present), and an adjunct professor at SMU Dedman School of Law.

Separate from his law practice, Mr. McCombs serves as a Commissioner for the Smithsonian Institution’s National Portrait Gallery in Washington, D.C.


Deborah Sterling, Ph.D., is a director and chair of Sterne Kessler’s Biotechnology & Chemical Practice Group. Her practice is focused in the biotechnology and pharmaceutical industries, where she is involved in all areas of patent procurement, exploitation and enforcement. Deborah’s experience includes representing clients in over 70 inter partes review and covered business method proceedings, and in multiple patent interferences and reexaminations. Her practice also includes counseling clients on intellectual property strategy, including evaluating patent portfolios, e.g., for invalidity, non-infringement, freedom-to-operate and due diligence analyses, and she has assisted clients in devising design-around strategies for issued patents. Deborah has also been involved in multiple pharmaceutical and biotechnology patent litigations, including those brought under the Hatch-Waxman Act.

Deborah’s intellectual property experience has been principally in technical areas such as biotechnology, pharmaceuticals, molecular biology, analytical instruments, agrochemicals and clean technology. She also counsels clients in emerging and regulated industries, including cannabinoid therapeutics. She has been recognized by Corporate LiveWire and was named "Biotechnology Lawyer of the Year, Washington, D.C." for her work.

Deborah is a contributing author of Patent Office Litigation, Second Edition, published in 2017, and the two-volume set Patent Office Litigation, published in 2012 by Thomson Reuters Westlaw. The first edition focuses on the new contested proceedings under the America Invents Act, while the second edition provides a fresh and comprehensive exploration of these proceedings. Both books examine how the proceedings interact with other aspects of patent procurement and enforcement, and deliver practical analysis and advice. She is also a contributing author on the “Patentability Challenges at the U.S. Patent and Trademark Office” chapter in the Patent Litigation Strategies Handbook, 4th ed. published by the ABA in 2015.

Deborah is the Chairperson of the firm's Professional Development Committee.

Deborah earned her J.D. from George Mason University School of Law, her Ph.D. in molecular and cellular physiology from the University of Alberta, and her B.S., with first class honours, in biochemistry from Heriot-Watt University.


Dr. Kirsten A. Grüneberg has helped many of the world’s largest chemical, biotech, and pharmaceutical companies address their intellectual property and business needs. She has successfully defended high value pharmaceutical patents in post-grant proceedings, helping to secure business deals worth several hundreds of millions of dollars. Dr. Grüneberg also has significant experience with IP issues in connection with mergers and acquisitions in the U.S., Germany, Switzerland, Japan and China.

Dr. Grüneberg is active in the areas of opinions and counseling, post-grant proceedings including inter partes review and reexaminations, intellectual property portfolio management and development, and chemical and pharmaceutical/medical devices patent prosecution. She is a native German speaker and regularly visits clients in Europe to update them about the latest developments in U.S. patent law and to work closely with them on selected high-profile projects.

Dr. Grüneberg is a contributor to the 2013 treatise entitled Post-Grant Proceedings Before the Patent Trial and Appeal Board, published by Practicing Law Institute. The treatise guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

After receiving her Ph.D. in organic chemistry, magna cum laude, from the Technische Universität Berlin in Germany, Dr. Grüneberg was awarded a Lynen-Fellowship from the Alexander von Humboldt Foundation. This fellowship was to perform research during a three-year period at the Center for Bio/Molecular Science and Engineering of the U.S. Naval Research Laboratory (NRL). She also worked as a senior scientist at Geo-Centers, Inc./NRL and as a research scientist at the Max-Planck-Institute of Colloids and Interfaces in Berlin. Dr. Grüneberg received her Masters of Science in organic chemistry, summa cum laude, and her Bachelors of Science in chemistry/chemical engineering, magna cum laude, from the E.-M.-Arndt-University.

Dr. Grüneberg has published more than 20 scientific papers in the areas of liquid crystals, display technology, organic thin films, polymers, surfactants, and antimicrobial materials. She has been an invited speaker regarding her research at international conferences in the U.S., Japan, Germany, Italy, Switzerland, and South Korea, and is an inventor on several U.S. and foreign patents.


Gabrielle Higgins is a partner in Ropes & Gray's globally recognized IP litigation practice. Gaby represents industry-leading companies in high-stakes intellectual property cases. She has been recognized by The Daily Journal as one of the "Top IP Litigators in California," The Recorder's 50 Women Leaders in Tech Law, and as an "IP Star" by Managing IP. Gaby's client representations have spanned numerous industries, including telecommunications, semiconductors, wireless technology, consumer electronics, internet services, LEDs, medical devices and pharmaceuticals. As a trial lawyer, she has extensive experience representing industry-leading companies in district court and the International Trade Commission. As a PTAB practitioner, Gaby has been counsel of record in over 100 Inter Partes review proceedings. She has argued at final oral hearings before the Board and has achieved victories for her clients in final written decisions and on appeal to the Federal Circuit. 


Melissa Finocchio is Vice President and Chief Litigation Counsel for Intellectual Ventures.  Ms. Finocchio joined IV in May of 2010 to build and lead IV’s patent enforcement program.  Ms. Finocchio and her in-house team of litigators manage a large and complex portfolio of domestic and international patent matters.  Successes in those matters have driven many settlements over time, resulting in significant revenue for the company and its investors.  Ms. Finocchio is also in charge of the company’s substantial body of post-grant work before the Patent Trials and Appeals Board of the USPTO.

Ms. Finocchio serves as a key legal advisor to Intellectual Ventures’ senior executive team in support of the company’s licensing efforts and in devising and executing strategies to monetize its IP assets.  In addition, Ms. Finocchio participates in the company’s policy and legislative efforts to strengthen and improve the US patent system, and is a regular speaker at significant IP conferences across the country.

Ms. Finocchio came to Intellectual Ventures from Micron Technology, Inc., where she managed Micron’s high-stakes litigation, including patent, antitrust, and securities matters.  Before joining Micron, Ms. Finocchio had a long and successful career litigating technology cases in Silicon Valley. In 1998, Ms. Finocchio joined Orrick, Herrington & Sutcliffe in Menlo Park where in addition to representing companies of all sizes in a wide variety of IP litigation matters, she also served as hiring partner for the Silicon Valley Office and Partner-In-Charge of the firm-wide Associate Mentoring Program.  Upon graduation from Santa Clara School of Law in 1990, Ms. Finocchio joined Jackson, Tufts, Cole & Black of San Francisco, and then Cooley Godward of Palo Alto.


Ms. Shah is Managing Director at Fortress Investment Group and a partner of Fortress’ IP Investment Fund, a $40+ Billion dollar hedge fund providing the U.S.’s first structured patent debt financing platform, providing companies and institutions unique access to capital based upon the asset value of their patent portfolios. Prior to joining Fortress, she was head of Global Wireless, Patents, for Intel Corporation for over 10 years.  Before joining Intel, she was an associate in the law firms of Dorsey & Whitney, and Fish & Richardson.  Ms. Shah began her career as an Examiner in the United States Patent Office. Intellectual Asset Magazine has recognized Ms. Shah as a top “300” global IP leader multiple times. She holds a juris doctorate and degrees in Electrical and Computer Engineering.  She maintains an office in the Washington D.C. area with Fortress, where she is a member of both Maryland Bar and is registered to practice before the United States Patent and Trademark Office.


Nathan Kelley is a partner at Perkins Coie LLP where his practice focusses on patent appeals, IP counseling, and government relations.  He previously served for more than a decade at the top levels of the U.S. Patent and Trademark Office, most recently as its Solicitor and Deputy General Counsel for Intellectual Property Law.  In that capacity, Nate managed all IP litigation for the agency, including its 100+ Federal Circuit appeals yearly. 

At the USPTO, Nate also acted as its Chief Administrative Patent Judge, leading the Patent Trial and Appeal Board during a critical period as it was coming up to speed with its jurisdiction over inter partes reviews under the America Invents Act.  Before his time in the Solicitor’s Office and the PTAB, Nate worked for six years at the U.S. Court of Appeals for the Federal Circuit, first as a member of its permanent legal staff and then as a law clerk for Circuit Judge Randall Rader.  Earlier he worked in private practice at an IP law firm after beginning his career as a patent examiner in the semiconductor and integrated circuit arts.


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

During 2015-2017, Mr. Chen was a Lead APJ and as a member of PTAB’s management team, he assisted three successive Chief Judges in formulating and executing PTAB policy involving AIA trial procedures and Board operations. He also supervised a team of APJs, and assisted the Regional Director in policy and operations matters for the USPTO’s West Coast Regional Office. Mr. Chen is among the only former Lead APJs in private practice, and provides clients with a uniquely valuable perspective from his experience in presiding over AIA trials and in devising PTAB policy.

Prior to his service at the PTAB, Mr. Chen was a first-chair intellectual property litigator and partner at three international law firms, and also served as general counsel and intellectual property counsel in-house, at startup and publicly traded technology companies in Silicon Valley. He has litigated over 75 patent cases, 25 trade secrets misappropriation cases, and numerous cases involving copyrights, trademarks, and unfair competition, in federal and state courts and the International Trade Commission, for high technology and life sciences companies.

Mr. Chen is a registered patent attorney and is a named co-inventor on two U.S. Patents Nos. 8,468,050 and 8,843,392.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP specialty firm and 337th largest US law firm.


Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 250 PTAB matters since 2012, including those in which more than $500 million was at stake. Furthermore, Scott is recognized as a thought leader in the PTAB industry. He is a Professorial Lecturer in Law at The George Washington University Law School, a member of the teaching faculty of the Practising Law Institute, and was a founding member of the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings.


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

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

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


Based in Boston, Don Steinberg’s practice focuses on advising clients on intellectual property matters, obtaining patent and trademark protection, intellectual property litigation, and post-grant proceedings before the Patent and Trademark Office. His clients include designers and developers of microprocessors and other analog, digital and mixed signal devices; networking systems; video games; internet-based applications; computer security; financial services; and medical devices.

Mr. Steinberg has experience with patent and copyright litigation in the federal courts, involving various aspects of computer software and hardware, computer networking, electronic devices, wireless communications, video compression, semiconductor manufacturing, computer security, and other fields.

He has been lead counsel on numerous contested proceedings within the Patent Office, including inter partes review (IPR), covered business method (CBM), and ex parte and inter partes re-examination proceedings representing both petitioners and patent owners.  His experience includes proceedings involving patents relating to computer circuitry and components, consumer and other electronic devices, computer networking, financial services, semiconductor manufacturing, photolithography, and ion implantation.

Mr. Steinberg has written numerous published articles relating to post-grant proceedings, patent law developments, and Patent Office practices.


Chief Judge, United States Court of Appeals for the Federal Circuit (2010-2014)
Circuit Judge, United States Court of Appeals for the Federal Circuit (1990-2010)
Federal Trial Judge, United States Claims Court (later Court of Federal Claims) (1988-1990)

Chief Counsel, Senate Judiciary Committee Subcommittees (1980-1988)
Counsel, House of Representatives, Interior and Ways and Means Committees (1975-1980)

For over 25 years, Judge Rader has been a thought leader in the field of intellectual property law and jurisprudence. His work as Chief Judge, his publications and his work teaching patent law globally to students, judges and government officials has left an indelible mark on the field of IP law and the protection of IP rights throughout the world. Judge Rader was appointed to the United States Court of Appeals for the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Judge on June 1, 2010.

He was appointed to the United States Claims Court (now the U. S. Court of Federal Claims) by President Ronald W. Reagan in 1988. Before appointment to the Court of Federal Claims, former Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary. From 1975 to 1980, he served as Counsel in the House of Representatives for representatives serving on the Interior, Appropriations, and Ways and Means Committees. 

Since leaving the bench in 2014, Judge Rader has founded the Rader Group, initially focusing on arbitration, mediation, and legal consulting and legal education services. Judge Rader has presided over a major arbitration under ICC rules in Paris; conducted mediations to settle ongoing litigation; joined law faculty at Tsinghua University; conducted full-credit courses at leading law schools in Washington, D.C., Seattle, Santa Clara, Bangkok, Seoul, Tokyo, Munich; consulted with major corporations and law firms on IP policy and litigation; and advised foreign governments on international IP standards.  He continues to advocate improvements in innovation policy through speaking engagements worldwide.