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Patenting Blockchain and Distributed Ledger Technologies 2019


Speaker(s): A.J. Bahou, Charles F. Wieland III, D’vorah Graeser, Jon E. Gordon, Michael R. Casey, Ph.D., Olga V. Mack, Prof. Carla L. Reyes, Prof. Del Wright, Prof. Jeff Ward, Prof. Tonya M. Evans, Raina S. Haque
Recorded on: Dec. 4, 2019
PLI Program #: 269656

A.J. Bahou is an intellectual property attorney who focuses on the intersection of law and technology.  A registered patent attorney, trial lawyer, mediator and arbitrator, A.J. has extensive experience in the areas of electrical and computer engineering technologies, including Blockchain, artificial intelligence, virtual reality, medical devices, computer hardware and software, and internet security systems.  With 15+ years of patent litigation experience, A.J. handles the full spectrum of intellectual property litigation from pre-complaint investigation through trial and appeal in matters involving patents, copyrights, trademarks, trade secrets, and commercial disputes.  He has represented both plaintiffs and defendants in IP litigation in jurisdictions across the United States, including the U.S. Federal Circuit and U.S. Supreme Court.

A.J. often serves as outside general counsel for technology companies that value his assistance with patent prosecution and enforcement as well with the drafting of employment and independent contractor agreements that are critical tools in the protection of intellectual property assets.

A significant segment of A.J.’s practice involves emerging technologies, most notably Blockchain and artificial intelligence.  He has filed patent applications for clients that are utilizing distributed ledger technology and artificial intelligence/machine learning tools in educational, marketing, pharmaceuticals, supply chain, and healthcare contexts.

Education

  • J.D., University of New Hampshire
  • LL.M., Intellectual Property, University of New Hampshire
  • M.S., with honors, Electrical and Computer Engineering, John Hopkins University
  • M.B.A., Middle Tennessee State University
  • B.S.C.E., Tennessee Technological University

Bar Admission

  • Tennessee
  • District of Columbia
  • Maryland

Court Admissions

  • U.S. Supreme Court
  • U.S. Patent and Trademark Office
  • U.S. Court of Federal Appeals for the Federal Circuit
  • U.S. District Courts, All Courts in Tennessee
  • U.S. District Court for the Eastern District of Texas and various other district courts


Carla L. Reyes an Assistant Professor of Law and Director of the Center for Law, Technology & Innovation at Michigan State University College of Law. Recognized for her leadership in the issues raised by the intersection of business law and technology, Professor Reyes also currently serves as the Research Director for the Uniform Law Commission’s Technology Committee, a member of the Program Committee for MIT’s new Cryptoeconomics initiative, and as a 2019-2020 Faculty Fellow at the Michigan State University Hub for Innovation in Teaching and Learning. Professor Reyes also actively contributes to blockchain technology initiatives at the United Nations Internet Governance Forum, the American Bar Association, and the Coalition of Automated Legal Applications (“COALA”).

A former Fulbright Scholar, her current research focuses on the intersection of blockchain technology and the law, theorizing about the technology from a commercial and corporate law perspective. Professor Reyes enjoyed the privilege of pursuing her research as a Faculty Associate at the Berkman Klein Center for Internet & Society at Harvard University from September 2017-August 2019.

Prior to joining the Law College faculty, Professor Reyes taught business and commercial law courses at Stetson University College of Law as a Visiting Assistant Professor of Law from 2016-2018. Professor Reyes’ scholarship and teaching draws on her experience as a technology transactions attorney. Prior to law teaching, Professor Reyes practiced law as an associate in the Blockchain Technology and Digital Currency industry group at Perkins Coie LLP. Professor Reyes earned her JD magna cum laude and an LLM in International and Comparative Law from Duke University School of Law, and holds an MPP from the Duke University Sanford school of Public Policy.


Charles (Chad) F. Wieland III focuses his practice on Intellectual Property (IP). He advises clients ranging from startups to Fortune 500 companies, both domestic and international.

With over 28 years of experience in private practice and four years as an examiner at the U.S. Patent and Trademark Office (USPTO), he finds cost effective ways to acquire or capture and exploit meaningful worldwide IP rights of clients, while avoiding or mitigating the hazards posed by the IP rights of others.

Chad has experience in exploiting IP rights through licensing, assignment and, when necessary, litigation. He helps clients steer clear of interference from the IP rights of others with design-around recommendations, validity, infringement and clearance/freedom-to-operate studies, both formal and informal. He designs IP portfolios to protect his clients’ market share through combinations or patents, trademarks, trade secrets, trade dress and private contracts. He also negotiates and drafts software licenses and other technology transaction agreements.

Chad has been highly successful in defending patents in re-examination and contested cases (inter partes and covered business method review proceedings) at the USPTO and, as of September, 2019, he has not lost a contested case. He has also assisted with oppositions in the European Patent Office.

Chad has been involved with IP issues surrounding standard setting bodies and patent pools, including helping to form policies, acquiring and having standard blocking or essential patents recognized as such by the licensing authority.

He has worked with methods and software implemented inventions involving blockchain and distributed ledger technology, e-commerce and targeted advertising, yield management, healthcare records and reimbursement management tools, complex financial instruments and measurement tools, presentation capture and publishing and credit and debit card processing products.

He has a great deal of experience and strong background in a wide range of technologies involving display devices; MEMs; microfluidics; carbon nanotube production and application in electron emitters and display devices; nano-scale electrical components and nano-scale signal processors and storage devices; clean technology, including fuel cells, smart grid and solar power; transistors; light emitting diodes (LEDs); laser diodes and other semiconductor device structures; optical systems, including cameras, auto focus systems, lens systems, optical fibers and fiber optic switches; optical disc structures; infrared systems; and magnetic memory structures and materials.

In addition, Chad has written and prosecuted many applications on cellular telephony, and other wireless devices (e.g., IEEE 802.11, FDMA, CDMA, TDMA, PSK, QSK, etc.), planar antennas and other electrical, electronic, electro-mechanical, applied physics and mechanical arts.

Chad has been honored by his peers in the legal community and selected to the Virginia Super Lawyers® list in the area of IP prosecution and has been selected by his peers for inclusion in The Best Lawyers in America® under the Litigation – Patent and Litigation – Intellectual Property categories. In 2019 and 2018, Chad was recognized in IAM’s Patent 1000 list, the best-in-class listing of patent prosecution, licensing and litigation practitioners. He was also recognized in the category of Intellectual Property in the Corporate Counsel Super Lawyers® list. He and two others stood up the Pauline Newman American Inn of Court, which is an Inn focused on bench, bar and PTO relations and mentoring.


Dr. Graeser is a US Patent Agent with 23 years of experience. She participated in the Human Genome Project as a scientist and a programmer, before committing her time to help innovators to protect their ideas.

She is the founder of KISSPatent, a legal-tech startup company based in the US, Europe and Israel. With KISSPatent, her goal is to offer a flexible, transparent and cutting edge tech-focused service for innovators, early-stage startups and established innovation-focused businesses. KISSPatent’s focus is to simplify and automate the patent process and make it available for everyone.

Recently, KISSPatent has started to develop its own innovation platform to facilitate internal innovation processes for businesses. It is also building its own AI-based suite of products, focused on intellectual property solutions.

Dr. Graeser and her team share learning materials on intellectual property on their KISSPatent Learning Hub, where free information is openly available for everyone. They also support the wider innovation community to turn their ideas into world-changing innovations.

Dr. Graeser received her undergraduate degree in Biochemistry from Harvard, and her Ph.D. in Pharmacology from the University of Michigan. She was admitted to the US Patent Bar in 1996.


Jeff Ward is Director of the Duke Center on Law & Tech, Associate Dean for Technology & Innovation, and Associate Clinical Professor of Law at Duke Law. He teaches courses at the intersection of law and emerging technologies such as Law & Policy Lab: Blockchain and Frontier A.I. & Robotics: Law & Ethics and a course on business law and entrepreneurship at the Pratt School of Engineering at Duke.

Through the DCLT, Ward runs the Duke Law Tech Lab, a pre-accelerator program for early stage legal tech companies, uses human-centered design tools to connect legal technology stakeholders from broad backgrounds through Duke Law by Design, and uses the tools of the law to help ensure that new technologies ultimately empower and ennoble people and expand access to quality legal services.


Jon Gordon is a partner in the New York office of Haug Partners. He has extensive experience practicing patent law, with particular expertise in prosecuting patents related to computers, networks, telecommunications, medical information systems, financial applications, and blockchains.

In his practice, Jon takes advantage of his broad and deep technical expertise. He taught himself to program at age 12 and went on to earn a degree in computer science. He spent several years actively developing, maintaining, and extending multi-tiered intranet and Internet applications. His work experience also includes time as a member of the Philadelphia Stock Exchange and market maker on the exchange’s options floor.

Jon is involved in all aspects of patent practice for both foreign and domestic clients, including patent litigation, patent prosecution, due diligence, client counseling, and providing opinions of counsel.


Michael R. Casey, Ph.D., is a Partner in the firm's Electrical/Mechanical and Litigation/Post-Grant practice groups. With nearly 25 years of experience in patent law including experience in patent litigation, patent prosecution, post grant proceedings, and patent interferences, Dr. Casey’s practice focuses on all aspects of computer hardware and software, as well as circuit design and telecommunications.

Dr. Casey has experience representing and counseling electronics and computer-technology clients -- both foreign and domestic -- on intellectual property law and related issues, including procurement, valuation, licensing and enforcement of intellectual property. His representations include patent litigations before a number of Federal District Courts; appellate arguments before the Federal Circuit; International Arbitrations; post-grant proceedings (including IPRs and CBMs); preparation of patent opinions relating to invalidity, non-infringement, and product clearances; patent preparation and prosecution (U.S. and foreign); and patent interferences.

Dr. Casey earned advanced degrees based on his research in the fields of Electrical and Computer Engineering. Dr. Casey is a co-author on numerous papers in the areas of distributed, heterogeneous, and mobile computing systems and operating system designs.

Dr. Casey’s technical background also covers a variety computer-related technologies such as circuit design (including parallel processing architectures and field programmable gate arrays); computational intelligence systems (including artificial intelligence (AI), neural networks, bioinformatics, and fuzzy logic), encryption software and applications (including blockchain, digital rights management (DRM) and PKI), computer networking software, hardware and algorithms, electronic commerce, computer graphics and animation, communications algorithms and hardware, and programming languages and methodologies.


Olga V. Mack is the CEO of Parley Pro, a next-generation contract management company that has pioneered online negotiation technology. Olga focuses on improving and shaping the future of law, having led from the front lines for decades as an award-winning general counsel, operations professional, startup advisor, public speaker, adjunct professor, and entrepreneur.

Leaders from multiple industries value Olga’s in-depth analytical work on the impact of disruptive technologies such as blockchain, AI, and smart contracts. Her ability to demonstrate how the legal profession will emerge stronger, more resilient, and more inclusive than ever, and the trust her work inspires, encourages others to embrace legal innovation with confidence.

Olga’s skills and enthusiasm for working with cutting-edge technology led her to previously serve as Vice President of Strategy at Quantstamp, the first decentralized security auditing blockchain platform. She currently serves as an advisory board director at Quantstamp as well as Phylos, ChannelMeter, and Lovelyloot, in addition to serving on numerous boards.

Thriving at the forefront of technological innovation and committed to helping others turn knowledge into action, Olga co-authored Fundamentals of Smart Contract Security and authoring Blockchain Business Models. As a popular speaker, she connects with groups of all sizes, industries, and disciplines. Recent engagements include speaking at TEDxSanFrancisco about the impact potential of blockchain and smart contracts and at SXSW about blockchain business models.

Olga is also an outspoken advocate for professional women, co-founding SunLaw, an organization that prepares women in-house attorneys to become general counsels and legal leaders, and WISE, which helps female law firm partners become rainmakers. She also founded the Women Serve on Boards movement that advocates for women to participate on corporate boards of Fortune 500 companies, motivating over a dozen Fortune 500 companies to recruit their first women directors. In 2019, she authored Get on Board: Earning Your Ticket to a Corporate Board Seat to help demystify effective board service for all.


Professor Wright joined the UMKC School of Law faculty in 2017, and teaches in the areas of finance, business, securities, venture capital and tax. His current research focus is cryptoassets and the regulation of blockchain technologies. Before joining the faculty at UMKC, Prof. Wright taught a myriad of tax, business and criminal law courses at Valparaiso University. His earlier scholarship explored the intersection of tax and finance, and he has had articles published in the Virginia Tax Journal, The Akron Law Review, The Arizona State Law Journal and BNA.

Prof. Wright worked as an attorney with the U.S. Department of Justice, prosecuting both tax and organized crime, and with other law firms, including Skadden Arps, where he worked in both the banking and tax groups. Prof. Wright also worked as an investment banker, most recently with Banc of America Securities, structuring derivatives and other financial weapons of mass destruction. Before starting his career, Prof. Wright earned a Master in Public Policy degree from Harvard’s Kennedy School of Government, focusing on financial policy and regulation, and a Juris Doctor from The Law School at the University of Chicago.

In addition to his scholarly activities, Prof. Wright has also served on the Indiana Supreme Court Committee on Rules of Practice and Procedure and as Assistant General Counsel to the National Bar Association, the nation’s oldest and largest national association of predominantly African American lawyers and judges. In his free time, Wright trains for triathlons, marathons and plays tennis and golf. Prof. Wright is also an ardent supporter of the best fútbol team on the planet, F.C. Barçelona.


Raina Haque is a Professor of Practice of Technology who focuses on computational law & emergent technologies. She is also the founder and lead attorney of Erdos Intellectual Property Law + Startup Legal. Prior to joining the legal profession, she was a fintech business analyst and software engineer at a major Wall Street financial firm in New York City working in (ironically) clearance, trade, and settlement and global portfolio technologies. She was a research fellow at the National Institutes of Environmental Health Sciences in the Neurotoxicology and Nuclear Magnetic Resonance labs working on artificial deep neural network applications. She is among the first patent attorneys to work in the blockchain technologies space and has written several articles on guidance on IP-related matters. She's called to train attorneys in the blockchain space at major law schools and professional lecture series in New York City and Silicon Valley. She is a leading contributor to the North Carolina Bar Association's Future of the Law annual report on blockchain technologies. In Spring 2019, she will be leading in-depth courses where students and executives will not only learn about the technologies and cryptoventures, but also get a taste of programming in Solidity and alpha and beta test cutting-edge smart contract technologies. She advises a number of state regulatory bodies regarding emerging technologies.

Other courses she is preparing speak to advances in artificial intelligence technologies and applications, neurotechnology, online court systems, and data analytics. She practices in the realm of emerging technologies, helping to develop soft law that will guide hard law. She is passionate about the interdisciplinary role that this coming generation of jurists can and must take in the burgeoning realm of emergent technologies and entrepreneurialism. She offers practical insight into developing a lean, modern, and leading practice from the ground up in "Law 469: Technology and Modern Law Practice." She is teaching one of the first in-depth law courses in blockchain technology, entitled "Coded Governance: The Law and Blockchain, Smart Contracts, and Cryptoventures."


Tonya M. Evans, Esquire, is Associate Dean of Academic Affairs and Professor of Law at the UNH Franklin Pierce School of Law. She directs the school’s Blockchain, Cryptocurrency & Law online professional certificate program and developed its world-class instructor pool and curriculum. She is also the former Chair of the Intellectual Property & Technology Online Programs.

Evans has expertise in the areas of intellectual property, new technologies (including blockchain and distributed ledger technology), entrepreneurship & innovation (including advisor to startups), entertainment law, trusts & estates, and municipal finance. She writes, speaks, and teaches primarily about the intersections of copyright and new technologies, blockchain and the law, and trusts and estates.

Professor Evans is a member of the Consensys Grants Advisory Board, Bermuda Global FinTech Advisory Board, International Telecommunications Union (ITU) Focus Group on Digital Currency including Digital Fiat Currency, the ITU Focus Group on Application of Distributed Ledger Technology, and also The Accord Project’s IP Working Group, which works to develop best practices and standardization of smart legal contracts. Professor Evans serves on the Intellectual Property Committee of the Advisory Council to the Court of Federal Claims. She also received the inaugural Enterprise Blockchain Award in the category of Governance and Policy Leadership during the 2019 Blockchain Revolution Global Conference in Toronto.

Professor Evans is a graduate of Northwestern University (Dean’s List) and Howard University School of Law (cum laude). She also served as the Howard Law Journal editor-in-chief. She is licensed in PA, NJ, NY and DC. She is also co-host of the popular LIT Podcast: Law, Innovation, Technology for the Culture.