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Patent Litigation 2020: Advanced Techniques & Best Practices


Speaker(s): Andrew M. Berdon, Brad Waugh, Carol White, Christopher K. Hu, Dipu A. Doshi, Eric J. Lobenfeld, George E. Badenoch, Gil Calvillo, Ph.D., Hon. K. Nicole Mitchell, Hon. Mary Pat Thynge, Hon. Stanley R. Chesler, Jennifer H. Wu, Keith R. Hummel, Mary (Mindy) V. Sooter, Michael C. Smith, Patrick T. Taverna, Suann M. Ingle
Recorded on: Nov. 2, 2020
PLI Program #: 277947

Andrew Berdon is a partner in the New York Office of Quinn Emanuel Urquhart & Sullivan LLP.  Andrew regularly handles complex intellectual property and commercial disputes for clients in the life sciences and other industries. In addition to extensive experience in the area of ANDA patent litigation, Mr. Berdon regularly represents clients in complex litigation and arbitration matters relating to product development and marketing agreements, trade secrets, acquisitions, licensing, antitrust, and regulatory enforcement. Mr. Berdon has more than 30 years of experience as a litigator and trial lawyer, as well as five years of in-house legal experience as the general counsel of a multinational pharmaceutical company.

Andrew’s recent matters include representation of:

?Lockton Companies, LLC in its successful motion for a preliminary injunction against Alliant Insurance Services arising out of a corporate raid termed the “Worst (Non-Lawyer) Lateral Acquisition Ever” by the AmLaw Litigation Daily.

?IBM in the defense of an action alleging breach of contract and misuse of trade secrets by a counterparty to a licensing agreement.  After a four-day live hearing, IBM was successful in opposing the counterparty’s preliminary injunction motion.

?Johnson Controls, Inc. in opposing certification of a medical monitoring class relating to exposure to PFAS.  Plaintiffs’ sole toxicology expert on the issue of causation had his opinion excluded in its entirety under the Daubert standard following his deposition by Mr. Berdon.

?A Boston-area biotech firm in a confidential dispute against a large Pharma company in a dispute arising out of the Pharma company’s decision to abandon development of the client’s innovative drug candidate.

?A Boston-area biotech firm in a confidential dispute against a major Cambridge-based university arising out of the university’s threat to convert the client’s exclusive license to its foundational technology to a “non-exclusive” license on improper grounds.


Brad Waugh is an Associate General Counsel at Intel, where he serves as a litigation manager for patent disputes in the US and abroad. Before joining Intel, he practiced at the Cooley and Day Casebeer law firms. Brad holds degrees in electrical engineering from Georgia Tech and Rice, and a law degree from Stanford.


Christopher Hu concentrates his practice in intellectual property litigation. He has more than 35 years of experience representing a broad spectrum of clients in patent and trade secret cases and disputes involving a wide range of technologies, including:

  • e-commerce
  • computers
  • telecommunications devices
  • medical products
  • chemicals
  • pharmaceuticals
  • consumer products
  • mechanical devices

Christopher speaks frequently at industry events on topics such as the interaction between the Leahy-Smith America Invents Act (“AIA”) and litigation, including patent litigation.


Dipu A. Doshi is a partner in and co-chairs the Firm’s multi-office intellectual property practice. Dipu’s clients range worldwide, from Europe, the United States, Japan, and Taiwan. Dipu’s primary practices are:

  • patent litigation in the U.S. District Courts
  • inter partes review before the USPTO

Dipu also advises his clients in matters relating to patent portfolio management including:

  • due diligence
  • client counseling
  • patent prosecution

His practice focuses on a variety of technological fields with a focus on the chemical industry’s innovative “green technology” in fields such as:

  • refrigerants
  • polymers
  • rechargeable batteries
  • semiconductor devices (including LED technology)

Dipu has presented on several topics related to intellectual property law, including:

  • “Do You Have an IP Claim?” (co-presenter), at Blank Rome’s Annual Emerging Litigation and Employment Issues for In-House Counsel seminar, September 22, 2016.
  • “Licensing, Standing, and Jurisdictional Issues Regarding NPEs – Issues in Licensing that Impact Standing,” at the American Intellectual Property Law Association Annual Meeting, October 25, 2013.
  • “Venture Capital Backed Non Practicing Entities & the New IP Litigation Ecosystem,” MCCA Annual CLE Expo, March 22, 2012.

Before attending law school, Dipu was a research associate at MedImmune, Inc. While at MedImmune, he participated in several projects related to the development of novel vaccines derived from biological molecules. His tasks included optimizing various cell culture lines for the expression and purification of monoclonal antibodies, antigens, and other proteins. He also has experience in the expression and purification of clinical grade biological materials.


Dr. Gil Calvillo wears many hats as a communications and legal expert: he’s a coach, psychologist, and strategist, all in the service of helping his clients tell their story and be their best, most persuasive selves.

As a former NIH fellow in neuropsychology with a background in clinical psychology, Dr. Calvillo performed hundreds of patient evaluations that resulted in his becoming a leading expert in the field when it comes to assessing people’s cognitive, intellectual, and emotional ability. Today he uses his scientific training to evaluate clients, help them define their goals, and craft the strongest possible message for achieving those goals.

For litigators, Dr. Calvillo’s psychological expertise makes him uniquely qualified to prepare strong witnesses, draft voir dire questions, and assist with jury selection, including a keen ability to detect juror bias during voir dire. He has a particular interest in jurors from diverse backgrounds and cultures, examining how their perceptions and experience affect their verdicts, including decisions about damages.

For non-litigators, Calvillo and Associates supply feedback on presentation, including body language, pacing, eye contact and other crucial non-verbal signals that are essential to gaining an audience’s trust and approval.

The ultimate goal of Dr. Calvillo’s communications training is to increase confidence, for both legal and non-legal clients. 

He begins by helping craft a message that makes the complex simple, whether it’s how to explain a medical device to a jury, a scientific formula to potential investors, or hi-tech software to C-suite executives.  Once clients have mastered their subject, everything from presiding over a board meeting to presenting a jury summation becomes as compelling as it is clear and convincing.

Calvillo and Associates has conducted communications training and litigation research with regional, national and international corporations. The firm is based in Los Angeles, California.


Eric Lobenfeld's philosophy is to prepare each case as if it is going to trial. That puts the client in the strongest position to resolve the case, whether through settlement or through litigation to judgment.

Eric's work focuses on technology and life science intellectual property disputes. He has more than three decades of experience as a first-chair trial lawyer in patent, trademark, copyright, antitrust, unfair competition, and complex commercial cases. These include jury and non-jury trials in state and federal courts throughout the United States, as well as arbitrations and arguments in numerous state and federal appeals. He also handles post-grant review proceedings in the U.S. Patent & Trademark Office and has participated in Markman claim construction proceedings for more than 50 patents.

Eric represents companies in many industries, including computer hardware and software, pharmaceuticals and medical devices, bar code scanners and Radio Frequency Identification technology, Automated Teller Machines and web-enabled kiosks, semiconductor technology, television and motion picture technology, home and industrial lighting, and consumer electronics.

Eric is a regular panelist in the Practising Law Institute's annual two-day patent litigation program, where he has presented on expert issues and damages issues. He has also given a demonstration of a closing argument in a patent jury trial.


George has over 30 years’ experience in litigations and adversarial matters concerning all aspects of intellectual property, including patents, trade secrets, trademarks and copyrights.

George has had considerable experience in major patent litigations (jury and non-jury) involving computers, semiconductors and pharmaceuticals, with particular emphasis on computerized automatic machinery and equipment and automobile parts. His successful trial of a major patent jury case involving computerized equipment for custom designed ductwork led to the largest intellectual property judgment nationwide in that year. His role as lead defense counsel for a large group of automobile importers led to the dismissal of a much publicized case brought by an alleged inventor of intermittent windshield wipers, even though the same plaintiff had previously secured multi-million dollar verdicts against two of Detroit’s big three automobile manufacturers.

George also counsels clients in patent and other intellectual property licensing matters, and has been involved in the licensing aspects of large merger and acquisition transactions.

George has been recognized as a leading lawyer in the IAM Patent 1000 – The World’s Leading Patent Practitioners (2013), which ranked him in the top tiers in New York for both “Licensing” and “Litigation;” The International Who’s Who of Business Lawyers(2013, 2014); New York Super Lawyers (2007, 2009-2016), and The US Legal 500 for his work in the area of “IP – Patent Licensing and Transactional” (2014, 2015) and Patent Litigation (2015, 2016).

He has spoken before domestic and international bar association groups, authored brochures advising the Japanese community on patent matters and appeared on a number of panels teaching licensing and patent litigation matters to other lawyers sponsored by the Practicing Law Institute and the American Conference Institute.


Judge Chesler has served in the federal judiciary of the United States since 1987. He was appointed as a United States District Judge for the District of New Jersey in 2002. Prior to being appointed as a District Judge, he served as a United States Magistrate Judge for more than fifteen years.

Before his appointment to the bench, Judge Chesler served as a federal prosecutor and a state prosecutor. Between 1980 and 1987, he served as an attorney with the U.S. Department of Justice Organized Crime Strike Force and as an Assistant U.S. Attorney. He was the Deputy Chief of the Newark Organized Crime Strike Force between 1984 and 1986. As a federal prosecutor, Judge Chesler specialized in the investigation and prosecution of complex labor racketeering cases. In 1984, he received U.S. Department of Justice Special Commendation and Special Achievement awards for the prosecution of United States v. Salvatore Provenzano. Judge Chesler was an Assistant District Attorney with the Bronx County (New York) District Attorney's Office from 1974 to 1980. As a state prosecutor, he acted at various times as the Chief of the office's Investigations Bureau and the Chief of its Narcotics/Rackets Bureau.

Judge Chesler attended St. John's University School of Law on a Dean's Scholarship. He attended law school at night, while working his way through school as a New York City teacher and as a law clerk for the Bronx District Attorney's Office. He received his juris doctor degree from St. John's University Magna Cum Laude and was ranked first in his graduating class.


Judge Mitchell, a native Texan, was born and raised in Victoria, Texas.  She graduated with honors from Baylor Law School after receiving both bachelors and masters degrees from Texas A&M University.  While at Baylor, Judge Mitchell served as the Senior Executive Editor of the Baylor Law Review, as well as Managing Editor of the Law Review’s Texas Practice Edition.    

After law school, Judge Mitchell clerked for the Honorable Chief Judge Leonard Davis in the Eastern District of Texas before starting her civil practice at Fulbright & Jaworski (now Norton Rose Fulbright) in Houston, Texas.  Judge Mitchell’s practice focused primarily on the area of Health Law Litigation, but she also worked on patent cases and is licensed to practice before the USPTO.  After her time at Fulbright & Jaworski, Judge Mitchell returned to the Eastern District of Texas to serve as the Chief Staff Attorney to Judge Davis. 

Judge Mitchell was sworn in as a United States Magistrate Judge on August 16, 2013.  In her time on the bench, Judge Mitchell has overseen numerous patent and general civil litigation cases.  She also mediates cases pending in the Eastern District of Texas and the United States Court of Appeals for the Federal Circuit.   In addition, Judge Mitchell serves as an adjunct faculty member at Baylor Law School where she regularly teaches in the Baylor Law Academy of the Advocate study abroad program in St. Andrews, Scotland.

When not working, Judge Mitchell enjoys running, fishing, and spending time with her husband and four active boys.


Keith R. Hummel is a partner in Cravath’s Litigation Department.

He has extensive experience litigating complex commercial, intellectual property and other legal disputes, both for plaintiffs and defendants. He handles cases for clients in diverse fields, including telecommunications, medical devices, computer hardware and software, food additives, luxury flooring products, pharmaceuticals and biotechnology. Mr. Hummel frequently advises clients on national and worldwide intellectual property strategy, and is often asked to lead efforts to identify IP assets that can be effectively used for offensive or defensive purposes.

Mr. Hummel was featured as the “Litigator of the Week” by The Am Law Litigation Daily for obtaining affirmance in the Second Circuit of the dismissal of two lawsuits against IBM brought by South African nationals who attempted to hold IBM accountable for apartheid under the Alien Tort Statute.


Michael C. Smith is the partner in charge of the Marshall office of Siebman, Forrest, Burg & Smith, LLP, where he provides clients with extensive experience in complex commercial and patent litigation heard in federal courts.

Mr. Smith, who has appeared as counsel of record in over 800 cases in the U.S. District Court for the Eastern District of Texas, served as chairman of the District's Local Rules Advisory Committee from 2000-2009.  He has also been editor of the O'Connor's Federal Rules * Civil Trialshandbook on federal civil procedure since 1998, and maintains the nationally recognized Eastern District of Texas Federal Court Practice web log at EDTexweblog.  He is a frequent author and speaker on patent litigation, federal court practice, and law office administration, and has served in leadership roles in numerous legal organizations, including as chair of the Litigation Section of the State Bar of Texas and the Board of Editors of the Texas Bar Journal, as well as on the Board of Directors of the State Bar of Texas, and president of the Eastern District of Texas Bar Association and the East Texas chapter of the American Board of Trial Advocates (ABOTA).

Mr. Smith, a Marshall native, has also been active in community affairs.  He served on the Marshall City Commission for three terms, from 1996-2002, and is a former president of the Harrison County Historical Museum and the Marshall Citizens Advisory Committee and a current member of the Marshall Chamber of Commerce Board of Directors.  Mr. Smith is married to Harrison County Treasurer Jamie Marie Noland.

In addition to his legal writings, Mr. Smith is also the author of two books on aircraft carriers, Essex Class Carriers in action, and US Light Carriers in action, published by Squadron-Signal publications.  In 2010 he was recognized by the Marshall Historic Landmark Preservation Board for renovating the historic Hub Shoe Store offices for use by his law firm.


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.

 

Professional Activities

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

 

Credentials

EDUCATION

JD, University of Colorado School of Law, 2003

Editor, Law Review, Order of the Coif

ME, Telecommunications, University of Colorado at Boulder, 1999

 

BS, Electrical Engineering, Texas A&M University, 1990

magna cum laude

Tau Beta Pi

 

CLERKSHIPS

The Hon. Ferdinand F. Fernandez, US Court of Appeals for the Ninth Circuit, 2004 - 2005

The Hon. Mary J. Mullarkey, Colorado Supreme Court, 2003 – 2004

 

ADMISSIONS

Colorado

United States Patent and Trademark Office


Oshkosh Corporation- Associate General Counsel- Litigation

Head of Litigation for a Fortune 500 global industrial manufacturing company. Responsible for managing all litigation (with exception of labor and employment) across four segments that includes industry leaders in Defense, Fire & Emergency, Access and Commerical manufacturing companies. Matters involve product liability, commercial disputes, intellectual property and regulatory concerns.

Assistant General Counsel- Watts Water Technologies 2012-2016

Managed a variety of legal issues for a global plumbing and heating manufacturing company with a primary focus on litigation, risk management, human resources, environmental, compliance and marketing.          

Attended:  

Amherst College from 1998-2002 BA Law Jursiprudence

Northeastern University School of Law 2002-2005 J.D. Law


Suann Ingle is one of the country’s top visual communication consultants for trial attorneys and litigants. An expert graphic designer, she is also a trusted partner who offers decisive advice on presentation strategy and execution. After thousands of hours in the hot seat in courtrooms and arbitration hearings, Suann remains calm, focused and unflappable regardless of circumstances. This enables her to sense what’s coming, and adjust visual communication on the fly to keep judges, juries and arbiters focused on the merits of the case.

Since entering the field in 1994, Suann has consulted on a wide range of litigation matters, including intellectual property, white collar, insurance, financial services, employment, and complex business disputes. She has extensive experience in scaling and managing trial support teams and has helped deliver successful outcomes in venues throughout the United States and in Europe.

Her visual expertise is grounded in academic study, including a Master of Science degree in Communications Design from Pratt Institute. When she is sketching her ideas, Suann explains the principles behind the sketch – and why they increase the odds of winning. Her personal warmth and empathetic style also enable her to teach, develop and inspire other graphics professionals to embrace the challenges of high-stakes litigation as a career.

Prior to entering the field of trial consulting, Suann spent seven years at Coca-Cola in New York where she managed the Creative Services Department. In 1996, she joined TrialGraphix and was instrumental in establishing its New York office. She also spent three years at DecisionQuest, where she assisted legal teams in trial, providing visual solutions to complex, high-stakes cases. Before starting her own firm, Suann worked at FTI Consulting, Inc., leading the New York office of the Trial Services Division.


A partner in the Litigation Department, Jennifer H. Wu focuses her practice on patent litigation matters. Jennifer frequently tries cases in federal district courts and the International Trade Commission. She also argues appeals in the U.S. Court of Appeals for the Federal Circuit, and represents clients in the U.S. Supreme Court. She has litigated patents in a wide variety of technical areas including sequencing technology and GPS devices, with a particular emphasis on biotechnology. Jennifer’s work on biologics includes litigating issues of first impression as to the BPCIA.

Jennifer clerked for Judge Alan D. Lourie at the U.S. Court of Appeals for the Federal Circuit. She received an A.B. in Biochemical Sciences from Harvard University in 1999, and her J.D. in 2004 from NYU School of Law where she received the Vanderbilt Medal for Service to the Law School Community and the President’s Service Award for Leadership at New York University. She is an Advisory Board member of the NYU Law Alumni of Color Association.

Jennifer has been widely recognized within the legal industry and the patent litigation bar for her achievements. In 2019, Jennifer was named to Benchmark Litigation’s “40 & Under Hot List – Northeast.” In 2018, she was selected by The New York Law Journal as a “Rising Star,” an award that recognizes top attorneys under the age 40. In 2017, Jennifer was a recipient of the “Best Under 40” award from the National Asian Pacific American Bar Association (NAPABA).

Jennifer is a member of the Board of the Federal Circuit Bar Association (FCBA), and a former co-chair of the FCBA Patent Litigation Committee, the Mock Argument Committee, and the Rules Committee. She received the FCBA’s George Hutchinson Committee Award recognizing committee leadership in 2016 and 2018. In addition, she has moderated and spoken on NAPABA panels and mentored younger lawyers by judging the Thomas Tang Moot Court competition, of which she is a past Northeast Regional winner. She is also a co-chair of the Women’s Committee of the Asian American Bar Association of New York (AABANY). Jennifer is Paul, Weiss’s sponsoring partner for the Asian American Legal Defense and Education Fund (AALDEF), a regular contributor to Paul, Weiss’s amicus briefs before the U.S. Supreme Court on behalf of the American Bar Association, and the recipient of Paul, Weiss’s 2017 Teaching Award, awarded by the firm’s associates for excellence in mentorship. In addition, Jennifer is a Board member of Friends of UNFPA, which supports the life-saving work of the United Nations reproductive health and rights agency, the United Nations Population Fund.


Carol White is an IP attorney with WL Gore & Associates, Inc, headquartered in Newark, Delaware. She coordinates a variety of IP needs for the company, including patent application preparation, client counselling, licensing and litigation matters.


Judge Mary Pat Thynge has served as a Magistrate Judge of the U.S. District Court of the District of Delaware since June 1992, and currently serves as its Chief Magistrate Judge. Prior to joining the bench, Judge Thynge was the managing attorney for the Wilmington office of the law firm of White & Williams. Previously, she was associated with the law firm of Biggs & Battaglia. Judge Thynge is a member of the Federal Magistrate Judges Association and serves on its Board as the Third Circuit Representative, on its Civil/Criminal Federal Rules Review Committee and as its Membership Chair. Since 2004, she has served as Executive Editor for the Federal Courts Law Review.

Since her elevation to the bench, Judge Thynge has developed and managed the ADR program of the District Court in Delaware and has been actively involved in continuing legal education programs, primarily regarding ADR, the Federal and Local Rules of Civil Procedure and the Federal Rules of Evidence. She has mediated over 1400 cases, of which more than 500 matters involved patent disputes. She authored the chapter Mediation: One Judge’s Perspective (Or Infusing Sanity into Intellectual Property Litigation) in the book ADR ADVOCACY STRATEGIES AND PRACTICE FOR INTELLECTUAL PROPERTY CASES 2011.