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Patent Law Institute 2021: Critical Issues & Best Practices


Speaker(s): Ahmed J. Davis, Andrew Gish, Brian Hanlon, Briana Barron, Carolyn Spencer-Mork, Chad M. Rink, Courtenay C. Brinckerhoff, D. Brian Kacedon, David M. Rosenblatt, Dawn Rice Hall, Douglas R. Nemec, Edward R. Tempesta, Elinor C. Sutton, Frederic Thiel, Gene W. Lee, Gerald M. Murphy, Jr., Jalal Sadr, John M. White, John Thompson, Jon R. Trembath, June E. Cohan, Kate Gaudry, Ph.D., Laura Chubb, Laura Donnelly, Laurence J. Bromberg, Linnea P. Cipriano, Michael A. Minter, Michael Sochor, Nancy (Xiaowen) Song, Narendra R. Thappeta, Philip W. Marsh, Prof. David Hricik, Richard M. Marsh, Jr., Robert J. Spar, Robert M. Isackson, Robert W. Bahr, Roger P. Kennedy, Ryan M. Schultz, Scott J. Rittman, Scott M. Alter, Sharon A. Hwang, Shinichi Ueda, Stephanie P. Koh, Thomas A. Dougherty, Toni Y. Hickey, Tracy-Gene G. Durkin, Vaishali Udupa
Recorded on: Apr. 1, 2021
PLI Program #: 304273


















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.


Ahmed is an intellectual property trial lawyer with 20 years’ experience serving clients who need a practical, forthright counselor to handle complex patent litigation matters within highly technical industries, such as chemistry, biotechnology, medical devices, and mechanical and electrical engineering.

Ahmed is the firm’s go-to attorney for litigation matters in the “rocket docket” that is the United States District Court for the Eastern District of Virginia, where he has unmatched expertise and intimate knowledge of that court system—and where he has earned a respected reputation as a skillful advocate who excels at explaining complex technologies to jurors. Additionally, he has been lead trial counsel in numerous federal district courts, the International Trade Commission and the United States Court of Federal Claims. Ahmed also has significant experience before the United States Court of Appeals for the Federal Circuit, arguing more IP cases before the Court than any other African-American private practitioner.

While Ahmed is experienced at bench trials, his forte is jury trials—and his value in the courtroom extends beyond his eloquence and commanding presence as a litigator. Clients praise him for being a great team leader who positions each member of the trial team to maximize their individual strengths. And his real-world experiences and awareness provide invaluable insight into the psyche of increasingly diverse juries. He is known for his effective, clear and understandable communication in front of diverse, layperson juries, as well as with court staff and judges. While his chemistry background allows him to “speak the language” of science and technology, Ahmed never lets technology override the human element in every case.

His talents have been repeatedly recognized by the legal industry and his peers. He has been named an “IP Star” multiple times by Managing Intellectual Property and Savoy magazine named him a “Most Influential Black Attorney of 2015.” He was also featured as a “Minority Power Broker” by Law360, and he was named one of Profiles in Diversity Journal’s “Black Leaders Worth Watching” for 2020.

Speaking Truth to Power

As the National Chair of the firm’s Diversity Initiative and the firm’s first Black full-equity principal, Ahmed is a vocal and influential advocate behind Fish’s longstanding commitment to building a more diverse workforce through recruiting and developing the careers of diverse attorneys.

He is also a prolific speaker and lecturer on issues relevant to diversity and the patent bar. He is a long-time instructor for the National Institute of Trial Advocacy. Ahmed also has been a faculty member, guest lecturer and presenter at Howard University Law School, Catholic University Columbus School of Law, Temple Law School, Fordham Law School, and numerous seminars and conferences.


Andrew Gish is a Partner at Gish PLLC.

Andrew's practice focuses on technically complex patent and trade secret matters before district courts, the Patent Trial and Appeal Board, the International Trade Commission, and the Federal Circuit.  His hard science electrical engineering background and industry experience provide him with a detailed understanding of advanced technology.  He has represented clients in patent infringement matters involving wireless data transmission, automatic audio/video recognition, networking security, RFID, semiconductor manufacture, solar cells, LED lighting, block chain, internet transactions, ridesharing, heavy equipment, clean coal, and other technologies.
 
For instance, in Pi-Net International, Inc. v. JPMorgan Chase & Co. (D. Del. Case No. 1:12-cv-00282), Andrew obtained summary judgment invalidating all asserted patent claims on multiple grounds of indefiniteness, lack of enablement, and failure of written description.  This result effectively ended the plaintiff’s previously successful patent litigation campaign, which had targeted dozens of technology companies and financial institutions.  In Google LLC v. Network-1 Technologies, Inc. (Fed. Cir. Case Nos. 2016-2509, 2016-2510, 2016-2511, 2016-2512), Andrew convinced the Federal Circuit to overrule the PTAB and adopt Google's dispositive claim construction with respect to every single one of 70 claims at issue in four patents.  And, in JPMorgan Chase & Co. v. DataTreasury Corp. (E.D. Tex., Case No. 5:12-cv-119), Andrew obtained a $69 million judgment for JPMorgan Chase in a breach of contract action regarding a most favored licensee provision in an agreement settling a prior patent infringement suit.    
 
Andrew’s litigation practice is complemented by his experience handling IP transactions, as well as the IP issues inherent in large mergers and acquisitions. He also has experience drafting and prosecuting patent applications, and assessing the value of large patent portfolios.
 
Andrew previously practiced in the Patent and Technology Litigation group at Skadden, Arps, Slate, Meagher & Flom, where he routinely led intellectual property matters involving advanced technology.  Prior to his legal career, Andrew worked at Intel Corporation in various research and development, microprocessor design, and semiconductor manufacturing departments. Andrew graduated summa cum laude with a master of science in electrical engineering from the University of Southern California, where he was recognized as the top electrical engineering student in his graduating class.

Andrew also has extensive pro bono experience, including representing clients seeking asylum, appealing death penalty verdicts, and filing utility and design patent applications.


Briana Barron is the Head of Intellectual Property at Arcus Biosciences.  Based in Hayward California, Arcus is focused on discovering and developing small and large molecule cancer immunotherapies. In her role, Briana is responsible for developing and coordinating worldwide intellectual property strategies, negotiating a variety of agreements, and leading the team supporting Arcus’s global patent estate.

Prior to Arcus, Briana was Senior Counsel at Gilead Sciences where she supported pharmaceutical products from discovery to commercialization. In that role, Briana also conducted IP due diligence on target patent estates and acted as a liaison for partnered programs.  Briana was the IP lead for a therapeutic sub-group and the biomarker sciences department.

Briana has also worked in large law firm providing litigation and opinion support to a variety of clients in the pharmaceutical and life sciences industries. 


Carolyn Spencer-Mork is a Senior Jury Consultant with IMS | The Focal Point. She has 15 years of experience and has consulted on over 250 cases throughout the country. Her practice focuses on complex commercial litigation, including intellectual property, antitrust, trade secrets, contracts, and securities issues.

As a socio-cultural anthropologist, Ms. Spencer-Mork understands methods of communication, jury psychology, and group dynamics. She offers expertise in the areas of mock trial and focus group jury research, theme development, trial strategy, witness preparation, and voir dire and jury selection methodology.

Ms. Spencer-Mork is skilled at designing jury research that helps clients gain strategic advantages early in the discovery process. Whether research involves testing potential witnesses in order to craft an effective company story, persuasively contextualizing damaging emails in advance of depositions, or developing an effective case theory to guide discovery, Ms. Spencer-Mork helps her clients leverage early insights to develop a persuasive trial strategy.

Ms. Spencer-Mork has a degree in both anthropology and Russian language & literature, from New York University, where she graduated summa cum laude and Phi Beta Kappa. She completed her graduate training as a National Science Foundation Graduate Research Fellow at the University of Chicago, from which she earned an MA in cultural anthropology, with a focus on socio-linguistics. As a Fulbright Scholar, Ms. Spencer-Mork conducted doctoral research in St. Petersburg, Russia.


Chad Rink has worked as an attorney at BSKB since 2008.  He specializes in the drafting and prosecution of patent applications in the areas of chemical compounds, pharmaceutical compositions, polymers, catalysts, and chemical processing and synthesis. He has also prepared legal opinions regarding patent validity and product infringement in a wide range of subjects. Mr. Rink has practiced in the intellectual property field since 2004.

As part of his undergraduate degree, Mr. Rink spent over two years doing lab research on the synthesis of RNA ribozymes and wrote his thesis on the subject. This research eventually led to a published article in Organic Letters. During law school, Mr. Rink was a member of the Moot Court Honor Board and competed in the Jessup International Law Moot Court Competition.

Bar Admissions

2005, Ohio

2006, Connecticut

2006, Massachusetts

Registered to practice before the U.S. Patent and Trademark Office

Not licensed in Virginia

Education

Xavier University

B.S., Chem., B.S.B.A., Finance

2002

University of Cincinnati College of Law

J.D.

2005


Courtenay Brinckerhoff is a partner with Foley & Lardner LLP. She is chair of the firm’s IP Department Associate Training and IP Policies and Procedures group, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice, and a member of the firm's PTAB Trials Practice, Appellate Practice, and Life Sciences Industry Team. Ms. Brinckerhoff is the editor and primary author of the firm’s PharmaPatentsBlog.com and regularly speaks and write on emerging issues facing stakeholders in the life sciences space. Ms. Brinckerhoff serves as a vice chair of IPO’s Patent Office Practice committee.

Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. Over the past 20 years, she has represented clients before the U.S. Patent Office, the U.S. Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit. Ms. Brinckerhoff works with clients in diverse industries, including pharmaceuticals (chemical and biotechnological), human and animal food products, nutraceuticals, and medical devices. She has particular experience with transdermal pharmaceutical products (patches, gels and liquids), oral dosage forms (including controlled release and extended release formulations), enzyme-based technologies, diagnostic and therapeutic antibodies, active and passive immunization therapies, and personalized medicine.

Ms. Brinckerhoff joined Foley as an associate in the fall of 2001, after clerking for the Honorable Judge Schall on the U.S. Court of Appeals for the Federal Circuit. Prior to her clerkship, she worked at Foley as a patent agent and law clerk.

Ms. Brinckerhoff graduated from George Mason University School of Law (J.D., summa cum laude, 1999) as valedictorian of her class. While a law student, she served as a member of the George Mason University Law Review and published an article in the University of Baltimore Intellectual Property Law Journal related to legislation that limits liability for infringement of medical method patents.

Ms. Brinckerhoff graduated from the University of Virginia with a B.S. in chemistry, with distinction, in 1988 and was elected to Phi Beta Kappa. In 1988, Ms. Brinckerhoff received an award for outstanding achievement in chemistry from the Virginia Section of the American Chemical Society.


David Rosenblatt has been an IP attorney for over 30 years, handling all facets of IP including litigation, licensing, preparation and prosecution, mergers, acquisitions, and divestitures, and IP related antitrust issues.  Currently, David is the Licensing Vice President for Sound View Innovations, LLC, a position he has held since 2014.  David started his legal career at Allegretti and Witcoff (currently Banner and Witcoff).  He then moved to AT&T Bell Labs, holding positions of increasing legal responsibility with both AT&T and Lucent Technologies.  Subsequently, he served as Chief IP Counsel for a publicly traded company prior to becoming Thomson Reuters’ Assistant General Counsel – Intellectual Property where he had numerous responsibilities including managing Thomson Reuters’ worldwide patent preparation and prosecution efforts.  Prior to attending law school, David worked as an engineer for four years while obtaining a graduate degree in electrical engineering. 


Dawn Hall is a Senior Managing Director in the Dispute Advisory Services (“DAS”) practice within the Forensic & Litigation Consulting segment at FTI Consulting and is the co-leader of the Intellectual Property practice. She is based in New York.

Ms. Hall has 20 years of experience assisting companies and counsel with complex economic, financial, accounting, and litigation issues. Ms. Hall has directed numerous commercial litigation engagements focused on applied economic and damages analyses as it relates to intellectual property and commercial litigation matters, including patent infringement, trademark infringement, copyright infringement, trade secret, false advertising and other types of business disputes, such as breach of contract, breach of non-solicitation/non-compete agreements, transfer pricing and Securities and Exchange Commission (“SEC”) investigations related to accounting irregularities.

Ms. Hall has conducted complex damages studies involving lost sales, lost profits, incremental revenue and cost analyses, market share split analyses, apportionment analyses, manufacturing and marketing capacity, price erosion, reasonable royalty, unjust enrichment and prejudgment interest for both plaintiffs and defendants. Ms. Hall has issued expert reports reflecting professional opinions of these respective areas and has been qualified as a damages expert in Federal court.

Ms. Hall has assisted trial attorneys in analyzing company forecasts, business and strategic plans, financial statements and appropriate market data in the preparation of deposition issues for 30(b)6 and opposing experts and preparing trial exhibits, as well as preparing early case assessments.

Ms. Hall has a B.S. in Finance from the University of Notre Dame. She is a member of the Licensing Executives Society (“LES”) and the American Bar Association (“ABA”).


Elinor Sutton is a partner in Quinn Emanuel’s New York office.  Her practice focuses on high-stakes complex commercial litigation, including intellectual property, securities, contract, and employment disputes.  Elinor has tried cases in state and federal courts throughout the country, as well as before international arbitration panels.  She has represented a broad array of clients including clients in the fields of telecommunications, energy, finance, and construction, as well as representing investment funds and bankruptcy creditors.  She attended Yale Law School, and has a degree in economics from Villanova University where she graduated summa cum laude and Phi Beta Kappa.  She applies her financial expertise to assist her clients during the damages phases of cases.  In 2014 through 2018, Ms. Sutton was selected as a New York “Rising Star” and “Top Woman Rising Star” by Super Lawyers magazine. In 2019, Super Lawyers magazine recognized Ms. Sutton as a Super Lawyer in Alternative Dispute Resolution and General & Business Litigation in New York City.  Prior to attending law school, Ms. Sutton worked as a public high school teacher through Teach For America.


Experience

  • MasterCard

    Vice President, Senior Counsel - Intellectual Property

    Jul 2014 – Present

  • Patterson Belknap Webb & Tyler LLP

    Associate

    Sep 2008 – Jun 2014

  • Baker Botts LLP

    Associate

    Sep 2005 – Sep 2008

  • Baker Botts LLP

    Summer Associate

    Jun 2004 – Aug 2004

  • Port Authority of NY & NJ

    Law Intern, Office of the New Jersey Solicitor

    May 2003 – Jul 2003

  • Entergy

    Instructor (Chemistry)

    Jan 2002 – Jul 2002

  • Con Edison

    Nuclear Production Technician

    Apr 2000 – Dec 2001

  • Photocircuits Corporation

    Process Engineer

    Aug 1999 – Dec 1999

     

    Education

  • Cornell Law School

    Doctor of Law (J.D.)

    2002 – 2005

  • Carnegie Mellon University

    Bachelor of Science (B.S.), Chemical Engineering

    1995 – 1999

  • Stuyvesant High School

1991 – 1995


Experience

  • Medtronic

    Senior Director, Legal Intellectual Property - RTG (Brain, Pain & Specialty Therapies)

    Oct 2003 – Present

    Perform the role of Senior Intellectual Property Counsel for Brain, Pain and Specialty Therapies divisions of the Medtronic Restorative Therapies Group having over $8.2B in annual revenue. Manage a team of attorneys and paralegals.

    Senior Legal Director

    Medtronic Navigation

    Aug 2005 - Dec 2009

    Performed the roles of General Counsel, Compliance Officer and Chief Intellectual Property Counsel for the Medtronic Surgical Navigation business.

    Senior Patent Counsel

    Medtronic Spine

    Oct 2003 - Aug 2005

    Provided legal counsel to Medtronic Spine's business related to transactional matters, litigation and intellectual property issues related to medical devices and implants.

  • University of Colorado

    Lecturer - Adjunct Professor

    May 2006 – Present

    Teach graduate and undergraduate legal contracting and core engineering project management classes.

  • General Electric

    Senior Legal Counsel

    1999 – 2003

    Responsible for intellectual property law, corporate-wide e-commerce law, litigation and other legal duties, including, counseling related to import/export law, employment law, data security and government contracts.

  • Sheridan Ross, P.C.- and - Dorr Carson Sloan & Birney

    Associate Attorney

    1995 – 1999

    Provided legal counsel to clients on transactional, business, litigation and intellectual property legal matters.

  • Saratoga County District Attorney's Office

    Legal Intern

    1994 – 1995

    Performed intern duties; prepared appeal briefs; reviewed evidence; conducted limited trial representation as authorized by New York Supreme Court, Saratoga County.

  • US Army - Watervliet Arsenal - Benét Laboratories

Senior Project Engineer

1986 – 1994

Performed duties of Senior Project Engineer including obtaining project funding, completing and managing various research and development projects in the areas of electrical and materials engineering. Also managed a team of engineers and technicians.


Experience

  • Western Digital

    Associate General Counsel & Director, Intellectual Property

    Sep 2016 – Present

  • HGST, a Western Digital company

    Global Director, Legal (IP)

    Sep 2013 – Sep 2016

  • STEC, Inc. (now part of Western Digital Corp.)

    Vice President, IP

    Feb 2004 – Oct 2013

  • Carr & Ferrell LLP

    IP Attorney

    2003 – 2004

  • Knobbe Martens Olson & Bear LLP

    IP Attorney

    2000 – 2003

     

    Education

  • University of British Columbia

    Juris Doctor (J.D.), Law

    1999

  • Simon Fraser University

    Bachelor’s Degree, Computer Science - Faculty of Applied Science

    Focus on:

    • Artificial intelligence (AI) / Machine learning
    • Data analytics (on a macro level or as big data analytics)
    • Programming languages
    • Cryptography (as precursor to cryptocurrency, cyber security and blockchain)
    • Operating systems
    • Open Source Software (OSS)


Freddy is the VP of the San Francisco Liaison Office for Kilburn & Strode, one of Europe’s leading IP firms. Freddy acts as a client liaison in the Silicon Valley and the wider US. He also prosecutes EP patent applications for tech companies in the Bay Area.

Freddy is a European Patent Attorney who has a strong understanding of in-house IP issues through his 13 years in the industry. In his 19-year career, he has analyzed over 1000 invention disclosures, with half leading to patent filings while drafting applications on a majority of these himself.

In his years in the industry, Freddy spent 10 years at Orange, one of the major telecommunication operators in Europe, as the patent counsel in charge of developing the IP portfolio for its international labs.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. In addition to patent litigation in the federal courts and the U.S. International Trade Commission, he regularly works on Patent Trial and Appeal Board trials, and also trade secret, copyright, trademark, unfair competition, and licensing disputes. Beyond adversarial matters, he also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

Gene’s work has covered a wide range of technologies, including computer systems and software, telecommunications and wireless communications, medical devices, video games, audio processing, pharmaceuticals, financial services, chemistry, semiconductors and geoscience.

He has represented major U.S. and Asian companies in high-stakes disputes. Gene represented through trial the world’s largest alcoholic beverages company in the first investigation in the USITC pilot program for potential early disposition of cases. He also represented Taiwan’s first innovator drug company in a licensing dispute and supported related litigation in Taiwan regarding ownership of patent rights.

Gene is a Director of the PTAB Bar Association and the NY Intellectual Property Lawyers Association.


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.


Jon is a Partner in Michael Best’s Intellectual Property and Litigation practices. He has nearly 30 years of experience in patent litigation in trial and appellate courts as well as post-grant proceedings. Jon is a zealous advocate for companies pursuing or defending patent challenges. He has the courtroom experience and technical expertise to effectively litigate complex legal issues and has established a record of success in trials and appeals around the country. He also has significant experience representing patent owners and petitioners in inter partes review proceedings before the Patent Trial and Appeal Board and appeals to the Federal Circuit. Jon represents clients in a number of technology-driven industries, including manufacturing, software, mining, electronics, energy, and agriculture. He earned his J.D. and his B.S. in Civil Engineering at Brigham Young University in Utah.


Kate Gaudry is a partner at in the Washington, D.C., office of Kilpatrick Townsend & Stockton LLP.

Kate focuses her practice on data-driven and strategic patent prosecution. She has authored over sixty publications relating to patent prosecution and examination. Her work was also pivotal in the shutting down of the USPTO’s SAWS program, which secretly subjected select patent applications to increased examination scrutiny. Her research and data focus was recognized when she was one of five attorneys across all practice areas to be selected for LexMachina’s and Law360’s Data-Driven Lawyer award in its inaugural year of 2018 and further when she was named a D.C. Trailblazer by the National Law Journal in its inaugural list.

Most of her clients are in the software, computers, and quantitative-biology technical areas. She particularly enjoys patent-prosecution relating to artificial-intelligence and computational-biology technologies.

Kate holds a J.D. from Harvard Law, a Ph.D. in computational neurobiology from UCSD, and a B.S. in Physics from Fort Hays State University.


Laura Chubb is an intellectual property partner in Haug Partners’ New York office whose practice mainly focuses on patent litigation. Laura has litigated in Federal District Courts across the country, including the districts of Connecticut, Delaware, Eastern District of Michigan, Eastern District of Texas, New Jersey, Northern District of Illinois, Southern District of New York, Western District of Kentucky, Western District of Missouri, and Western District of Texas. Laura has advised clients in a wide variety of industries, including pharmaceuticals, software, luxury goods and fashion, medical devices, food products, dietary supplements, and consumer goods. Ms. Chubb is registered to practice before the United States Patent and Trademark Office.

Ms. Chubb serves as a co-chair of the New York Intellectual Property Law Association’s Trade Secret Committee. Ms. Chubb was a 2017-2018 Global Fellow and actively participates in the Federal Circuit Bar Association. Ms. Chubb is also an active member of ChIPs and WIN. 

In law school, Ms. Chubb graduated cum laude and was the Executive Production Editor of the Indiana International and Comparative Law Review. Ms. Chubb graduated from Vanderbilt University with a degree in molecular biology.


Laura 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 leads IP strategy for a number of Johnson & Johnson’s Consumer and Pharmaceutical business units.


Linnea Cipriano is a partner in Goodwin's Intellectual Property Litigation group. Her practice focuses on patent litigation in federal courts, the International Trade Commission (ITC), and the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB).

Ms. Cipriano has prosecuted and litigated patents in areas including pharmaceuticals, biologics/biosimilars, nutritional supplements, DNA-based technology, drug delivery technology, cameras, and software. Ms. Cipriano has particular expertise in pharmaceutical litigation under the Hatch-Waxman Act and Biologics Price, Competition and Innovation Act (BPCIA).  She has also represented clients in inter partes review (IPR) and post-grant review (PGR) proceedings before the PTAB. Ms. Cipriano’s practice combines her in-depth knowledge of patent law with her scientific experience to serve her clients. She holds a graduate degree in pharmacology, and before pursuing a career in law, performed research at the Cleveland Clinic.

Ms. Cipriano earned her law degree and master’s degree from Case Western Reserve University, (J.D., 2010 magna cum laude, Order of the Coif; M.S. Pharmacology, 2007).

Prior to joining Goodwin, Ms. Cipriano was an associate in the New York office of Kenyon & Kenyon. She also worked as a legal intern at Cleveland Clinic Innovations and as a research technologist at the Cleveland Clinic Foundation.

Ms. Cipriano is the managing editor of the Goodwin PTAB Trial Tracker monthly newsletter and a contributor to the Guide to Biosimilars Litigation and Regulation in the U.S., 2019-2020 ed., published by Thomson Reuters, November 2019

Ms. Cipriano is admitted to practice in New York and before the U.S. District Court for the Southern District of New York, U.S. Court of Appeals for the Federal Circuit, and the U.S. Patent and Trademark Office.  Ms. Cipriano is also a member of the ChIPs Network and serves as a co-chair of the NYIPLA’s Women in IP Law Committee.

 

 


Michael Minter is an Assistant General Counsel at Lockheed Martin Corporation.  He specializes in Intellectual Property and Contracts with experience in the areas of law, management, and engineering.  Michael is responsible for counseling and representing clients in a wide range of domestic and foreign business matters involving strategic intellectual property identification and protection via patents, trademarks, copyrights and trade secrets, as well as licensing, government contracts, and other business aspects. Michael manages Lockheed’s intellectual property portfolio pertaining to its radar systems and sensors business. He counsels clients on various domestic and international patent, trademark, licensing and Internet issues, including selection, clearance, use, licensing and enforcement of Lockheed Martin 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 software and business agreements pertaining to trademarks, copyrights and software, non-disclosure agreements, vendor agreements, sales agreements, and patent and technology licensing agreements.

Prior to joining Lockheed Martin 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.


Michael Sochor is the Director of Intellectual Property at Forescout Technologies in San Jose, California. He has responsibility for all aspects of intellectual property including managing the patent portfolio, managing the trademark portfolio, ligation, open source software, and domain names.

Prior to joining Forescout, Mr. Sochor worked at two Silicon Valley boutique patent prosecution firms and has more than a decade of patent prosecution experience. There, he focused on patent prosecution in a variety of areas including software patents, hardware patents, and semiconductor fabrication patents. He has counseled companies ranging in size from startups to Fortune 100 companies. He has extensive experience as an information technology consultant, a programmer, and was a co-founder of a company making accessories for a popular video gaming console.

Mr. Sochor received his J.D. from the DePaul University College of Law and graduated early from University of Illinois at Chicago with a bachelor’s degree in Computer Engineering. He is a member of the California Bar, Illinois Bar, and is registered to practice before the U.S. Patent & Trademark Office.


Mr. Bromberg joined Morgan Stanley in 2000. He has global responsibility for all intellectual property matters. He is also responsible for legal coverage of market data, strategic investments involving IP, a broad range of transactional matters, and open source software legal coverage.

Prior to Morgan Stanley, Mr. Bromberg was a patent litigator at Morgan & Finnegan (1991-2000) and an electronics designer at Honeywell (1986-1989).

Mr. Bromberg has a J.D. from Columbia Law School and a B.S.E.E. from Tufts University. He is a member of the New York and Massachusetts bars and a registered patent attorney.


Mr. Kacedon is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, where his practice focuses on patent and technology licensing and patent litigation.  Mr. Kacedon assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. Over the course of his career, he has drafted hundreds of patent, know-how, and software license agreements as well as collaboration and joint development agreements in many industries, including pharmaceutical, medical device, and consumer electronics.  He has also assisted several leading technology companies in negotiating and drafting licenses for wireless technologies as well as navigating related standards-setting issues. In addition, Mr. Kacedon has broad experience in all aspects of patent litigation.

A frequent presenter at workshops and conferences, Mr. Kacedon has lectured on drafting patent and know-how licenses for the Patent Resources Group, the Licensing Executives Society, as well as other organizations and is currently an Adjunct Professor at George Washington University Law School.  Mr. Kacedon is also co-author of a leading treatise, “Drafting Patent License Agreements.” He has been recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, and as a Next Generation Lawyer for patent licensing. He is listed in Intellectual Asset Management (IAM) magazine as one of 250 of the world's leading patent and technology licensing practitioners.


Mr. Shinichi UEDA is a junior partner at GOTOH & PARTNERS.  He is one of the most experienced IP practitioners in the field of electrical technology, with a particular focus in software and commutation technology, at his firm.  He counsels clients regarding IP matters, ranging from R&D strategy, prosecution and litigation matters relating to patents, design, trademark and technology related unfair competition.

Before joining practice, he had an over ten years’ experience as a modem software engineer for mobile phones at a leading Japanese electrical company. Such experience aids him in communicating with engineers and inventors involved in R&D activities.

He also plays important roles in the committee dealing with international activities at the Japanese Patent Attorney Association, and belongs to a study group of international policy, with a focus on the Patent Cooperation Treaty and the Patent Law Treaty.

 

Admission:                Japan Patent Attorneys Association (2012)

                                    Qualified as a Litigating Patent Attorney (2017)

Profile:                       Waseda University (M.S., Electrical Engineering, 2002)

Practice Area:           Electrical Engineering

Memberships:           Japan Patent Attorneys Association (JPAA)

                                    AIPPI (Association Internationale pour la Protection de la Propriete Intellectuelle)


Nancy Song is a Chinese patent attorney who has passed U.S. patent bar in 2018. She holds her degree in EE from Tsinghua University, and gained her LL.M. from Santa Clara University as a Silicon Valley Law Fellow and CALI award winner. She specializes in computer databases, medical instruments, and secured identification and authentication instruments. Her practice encompasses patent drafting, prosecution, invalidation, portfolio analysis, and commercial advice in these areas.

She works in Chinese and English, and is proficient in reading Japanese literature, serving domestic and global clients in patent prosecution for over a decade. She started her patent career in a global leader of consumer IC design. She is trusted in handling transferred-in cases, rectifying defects in prior prosecution and overturning unfavorable results for the clients. Clients praise for seamless communication with her, especially for being responsive, providing helpful advice with few delay, which all contributes to “the perfect cooperation partner in China for patent prosecution” according to IAM Patent 1000. She has handled more than 1000 Office Actions and prepared hundreds of new applications. 


Naren is the founder of Law Firm of Naren Thappeta, based out of Bangalore, India.  The firm specializes in providing competent patent law related services for clients in the high technology arena. The service offerings include representation in front of India/US Patent Office and search services.  Naren worked in US Patents field between 1992-2000 before moving to Bangalore in 2001.  Their firm represents individual inventors to global corporations.  Due to his multi-jurisdiction experience, he is able to bring the global best practices to his practice.


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.

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 power 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 has recently had key roles on trial teams 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, including inter partes 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.


Rick Marsh helps clients grow and protect their intellectual assets. His practice focuses on various specialties in patent law, with particular expertise in post-grant proceedings, patent prosecution, patent validity and infringement evaluations, and patent litigation.


Rob is an accomplished, front-line IP litigator who approaches client service by working with the client to identify the problem in the business context. Then, using his diverse experience to bring a fresh perspective, he identifies key issues and develops creative and cost-effective strategies that align with the client’s business objectives to move its business forward.  Providing front end clarity to reduce and manage client risk, Rob has had nine patent and two arbitration trials, and led litigation teams in over sixty patent and other IP cases filed in more than twenty states.

Rob also translates his broad litigation experience to help clients with IP due diligence, FTO, procurement, and transactions.  He has obtained more than two hundred U.S. patents, and advised on dozens of IP deals and various technologies.

IAM Patent 1000, Managing IP, Chambers, and Superlawyers have recognized Rob for patent litigation skills. 

Beyond client work, Rob is President-Elect of the New York Intellectual Property Law Association, a Board Member since 2015, and active on its Amicus and Legislation committees.  Since 2012 he has served on the Intellectual Property Owners Association Amicus and Trade Secret Committees. Rob has helped author over a dozen amicus briefs, and regularly speaks on IP issues, from ethics to biosimilars, at association meetings. 

Rob holds JD and BSEE degrees from the University of Michigan.

Before law school, Rob fried circuits in an electronics design lab, successfully assembled thousands of cars in an auto factory, and washed dishes at a Utah ski resort, all of which encouraged him to meld his passion for technology with advocacy to become an IP lawyer.


Roger Kennedy is the Associate General Counsel for Patents at The Walt Disney Company.  As such Roger oversees patent issues for all of the Disney operating units including the Disney+, Parks, ESPN, ABC, Marvel, Pixar and Lucas.  Before Disney, Roger was the Chief Intellectual Property Counsel for Trimble Navigation where he was responsible for all the companies’ intellectual property matters.  Trimble provides positioning solutions enabling professionals in engineering and construction, surveying, agriculture, fleet management and field service to be more productive by revolutionizing their work processes.  Prior to joining Trimble Roger was the Chief Patent Counsel for Oracle Corporation the world’s largest enterprise software company, where he was active in the current patent litigation reform effort.  Before Oracle Roger served in a similar role at Lockheed Martin Missile & Space Corporation and practiced patent litigation at Townsend, Townsend and Crew.  Roger graduated from the University of Florida College of Law and holds in undergraduate degree in Optics from the University of Rochester.


Ryan Schultz is a trial lawyer focused on assisting clients obtain value and protection for their technology.  Mr. Schultz works with his clients to align the trial strategy with the client’s business objectives in order to obtain the optimal result for the client.

He has worked with clients in a wide variety of technology, including software, teleradiology, semiconductors, semiconductor manufacturing, pharmaceuticals, medical devices, electroluminescence wiring, software and hardware for rendering three dimensional graphics, portable electronic devices, digital signal processing devices, ophthalmic devices, video gaming machines, and wireless and cellular communication systems, such as 802.11, 3G and LTE.

Mr. Schultz believes that having a full and comprehensive understanding of the technology is necessary to create and execute the most beneficial strategy for the client. To that end, Mr. Schultz utilizes his scientific background in genetics and biochemistry to help facilitate obtaining a deep understanding of his client’s technology.  

In addition to resolving disputes for his clients, Mr. Schultz also works with his clients to obtain the most comprehensive protection for their technology, using a combination of patents, trademarks, copyrights, and trade secrets that best matches the business plans and objectives of the client.  Mr. Schultz also assists clients in acquiring valuable monetization of its intellectual property, including due diligence on IP issues and valuations of extensive patent portfolios.

Mr. Schultz represents clients as both plaintiff and defendant, which allows Mr. Schultz to not only understand the most strategic plan for his client, but also understand the litigation strategy of the adverse party.  He has represented clients at all stages of litigation, all the way through appeals. Mr. Schultz has also represented both petitioners and patent owners in various proceedings before the Patent Trial and Appeal Board in both inter partes review (IPR) and covered business method review (CBM).

He enjoys working with clients to present complex technology in an understandable manner for courts and juries. When not working with clients, Mr. Schultz enjoys spending time watching his two kids enjoy Minnesota activities, like ice skating and ice fishing.


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 Rittman is the Chief Counsel – Intellectual Property at Becton, Dickinson and Company, leading all worldwide IP activities for BD.   BD is a global medical technology company that provides innovative solutions that help advance medical research and genomics, enhance the diagnosis of infectious disease and cancer, improve medication management, promote infection prevention, equip surgical and interventional procedures and support the management of diabetes. 

Scott began his career with Finnegan, Henderson in Washington D.C. and then moved in-house with Lucent Technologies and then its spin-off Agere Systems, before joining BD.  Scott received his Bachelor’s degree in Materials Science and Engineering from the University of Michigan, as well as his law degree.


Sharon A. Hwang is a Shareholder at McAndrews and a member of the Executive Committee. She practices in all areas of intellectual property law with particular emphasis on patent litigation. She helps her clients maximize the value of their intellectual property and protect their investments in research and development. She has extensive experience in a range of technologies, including medical devices, electronics, and cellular telephony.

First, and foremost, Sharon is a hands-on courtroom advocate who has tried and litigated dozens of cases and has briefed and argued numerous appeals. For more than twenty-five years, she has successfully represented parties in high-stakes patent litigation in federal district courts, the Federal Circuit Court of Appeals, and the United States Supreme Court. Sharon has also successfully briefed and argued numerous inter partes reviews before the Patent Trial and Appeal Board.

In a recent, high-profile patent case that reached the United States Supreme Court, Sharon and a team of McAndrews attorneys secured a $254 million judgment in favor of a medical device client, one of the largest enhanced damages awards in patent history.

Sharon has been awarded numerous accolades, including being listed in the IAM Patent 1000 as one of the world’s leading patent professionals, selection as one of the World Intellectual Property Review’s Influential Women in IP 2020, and selection as one of Crain’s Chicago Business’s Notable Women in Law 2020.  She has been recognized as an Illinois Super Lawyer and IP Star every year since 2015 and as a Life Sciences Star since 2019.  She has also received the Vanguard Award from the Chicago Bar Association, the Career Achievement Award from the Society of Asian Scientists and Engineers, the Justice Laura C. Liu Lifetime Achievement Award from the Chinese American Bar Association, and the Sandra R. Otaka Leadership Award from the Asian American Bar Association.


Stephanie Koh heads the IP litigation group in Sidley’s Chicago office, where she focuses on complex patent litigation. Stephanie has represented clients in cases involving a wide variety of technologies, including pharmaceuticals, medical devices, power converters, and communications systems. She has experience in all aspects of patent litigation. Stephanie has participated in numerous Markman hearings and frequently argues high-stakes summary judgment motions and motions to dismiss. She has achieved significant victories before federal juries.

Stephanie clerked for Chief Judge J. Harvie Wilkinson III of the United States Court of Appeals for the Fourth Circuit during 2001–2002.

Education

  • The University of Chicago Law School (J.D., 2001, with high honors, Order of the Coif, Book Review and Business Editor, Law Review)
  • Rice University (B.S. in Chemical Engineering, 1996, magna cum laude)

    Clerkships

  • J. Harvie Wilkinson III, U.S. Court of Appeals, 4th Circuit (2001 - 2002)

Experience

Representative Cases

CALAMP CORP.

  • Omega v. CalAmp (M.D. Fla) – represented CalAmp as second chair in retrial after obtaining remand on appeal. Obtained a jury verdict of no induced infringement, and therefore no liability, on two patents and no willful infringement on any patent. One patent that was found to be valid and infringed in first trial (where Sidley was not counsel) was found by jury to only have one infringing unit and damages of $1.00. One patent that was found to be infringed had damages reduced to $5/unit. Previous award, which included treble damages and attorneys’ fees and totaled more than $20M, reduced to $4.6M. (2019)

    MICROSOFT

  • Zix Corp. v. Echoworx Corp. (E.D. Tex.) — represented Microsoft in a patent infringement case defending against third-party complaint filed by Echoworx. Successfully obtained early dismissal of Microsoft on a motion to dismiss. (2015–2016)

    MAGNA

  • Magna Mirrors of America v. SMR (W.D. MI) – counsel for Magna in a patent suit against a competitor relating to rearview mirror systems that reduce the driver’s blind spot. Defeated institution of SMR’s 10 petitions for inter partes review of Magna’s patents. Prevailed on all claim construction issues. (Pending)

    MERCK

  • Merck Sharp & Dohme Corp. v. Actavis (D. NJ) — counsel for Merck in Hatch-Waxman case directed at the antibiotic Dificid®. (Pending)


Tom is a seasoned technology attorney with over 20 years of intellectual property and technology experience with law firms and in-house. Tom has experience in all aspects of intellectual property law including patent prosecution and litigation, trademark, trade secret, and copyright law and related licensing. He drafts, negotiates, and handles all aspects of IT, SaaS, IP, sponsorship, marketing, cyber security, confidentiality, contracts, licensing, technology, and NDAs for multi-billion-dollar companies. He also has extensive medical device, product clearance, infringement analysis, litigation, M&A, and due diligence experience.

Tom’s experience in-house includes within companies such as Covidien (now Medtronic), Tomkins plc (which included Gates Rubber and Schrader Electronics), and Advanced Energy (a supplier to semiconductor manufacturers). Mr. Dougherty is an electrical engineer with technical experience including most aspects of electrical engineering such as software, hardware, telecommunications, signal analysis, devices, microelectronics, optics, data privacy and security, relational databases, and big data. He has appealed cases to the Court of Appeals for the Federal Circuit. He also has over 10 years’ experience as an electrical engineer for companies such as Goodyear Tire and Lucent Technologies, where he was in new product introduction (including Bell Labs).


Toni Y. Hickey is Deputy General Counsel & Chief IP Counsel for Transactions & Strategy for Cummins Inc. She is responsible for managing IP transactional activities through the conception, drafting and negotiation of high value acquisitions, licenses, JV agreements, and other processes and policies that are necessary to protect and add value to the company’s intellectual property portfolio. Toni also manages Cummins’ trademark, copyright, industrial designs, and domain name portfolio, including negotiating and drafting trademark license agreements, and managing conflicts and infringements, including counterfeiting, oppositions, and cancellations worldwide.


Tracy-Gene G. Durkin is the practice leader of the Mechanical and Design Practice Group and a member of the Trademark & Brand Protection Practice at Sterne Kessler.  Tracy has a well-earned reputation for excellence in design patent law. In 2018, Financial Times named her as one of the "Top Ten Legal Innovators in North America,” noting her as “a leading authority on design patents.” In 2017, Intellectual Asset Management noted in their annual "IAM 1000" ranking that Tracy "needs no introduction as the country's top design expert." In 2019, WTR editors heralded Tracy for being “as innovative as the products that she protects.” Since 2013, Tracy has been listed annually among Managing Intellectual Property's "IP Stars" for her counseling practice, and in 2013 and 2017, the publication  named her as one of the "Top 250 Women in IP." In 2016, Profiles in Diversity Journal listed her among "Women Worth Watching." A trailblazer, Tracy achieved a Martindale AV Preeminent Peer Rating of 5.0/5.0 in 2011, recognition fewer than 5% of women lawyers have earned, and was named as one of the “Top Women Lawyers in the Northeast.” Since 2017, she has been named among Chambers & Partners' "recognized practitioners" in the "IP Patent Prosecution, District of Columbia category" and by Who's Who Legal for excellence in patents.  In 2018, The Legal 500 recognized Tracy as a "Recommended Lawyer" in the U.S. for assisting clients “with the development and implementation of [] global design patent strategy, including the coordination of patent filings in over twenty countries worldwide." A leader in the legal community as well as the law, Tracy is currently serving a three-year term as a member of the USPTO Patent Public Advisory Committee (PPAC), which advises the director on the policies, goals, performance, budget, and user fees of patent operations at the USPTO. Tracy is a past president of the Women's Bar Association of the District of Columbia and the Women’s Bar Association Foundation, and is currently on the board of trustees the Legal Aid Society of the District of Columbia.


Vaishali is Vice President, Associate General Counsel for Litigation at Hewlett Packard Enterprise. In addition to handling commercial and employment litigation matters, her team handles all of HPE’s IP litigation, including patent, copyright, IP licensing and trade secret claims. She is a winner of the HPE Women’s Excellence Award, recognizing extraordinary women across HPE, the recipient of the National Bar Association’s 2020 Diversity in Tech and IP Award, DCA Live’s Top Corporate Counsel Award, and for the past five years, Managing Intellectual Property named her a “Corporate IP Star.” Prior to joining HP in 2011, Vaishali was an associate at Jones Day and Pennie & Edmonds. She earned her J.D. from American University's Washington College of Law, and her B.S., in Civil Engineering from the University of Virginia.


I am an intellectual property attorney with extensive experience in the private and public sectors. Prior to joining the USPTO, my practice included litigation of patent infringement and Section 337 actions in the federal courts and before the U.S. International Trade Commission, as well as patent and trademark prosecution, opinions, and client counseling in the biotechnology, pharmaceutical, and software areas. I am a frequent public speaker, and have authored legal publications on topics including licensing, patent validity, intellectual property litigation and administrative proceedings, encryption regulation and copyright law. I also teach advanced patent law and intellectual property courses at local universities as an adjunct professor.


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, registered to practice before the USPTO, and is admitted to the CAFC.


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.


Deputy Commissioner Bahr serves as an authority on patent laws, rules, and examining practice and procedure; and provides administrative oversight and direction for the activities of the Office of Petitions, Office of Patent Legal Administration, and the Office of the Manual of Patent Examining Procedure.  Further, Mr. Bahr establishes patent examination and documentation policy standards for the Commissioner for Patents.

Prior to his current position, Mr. Bahr served as the Senior Patent Counsel to the Deputy Commissioner for Patent Examination Policy, where he was involved in virtually every patents-related rule making since 1995, including the changes to implement the Leahy-Smith America Invents Act and the American Inventors Protection Act of 1999.  Mr. Bahr began his career at the USPTO in 1984 as a patent examiner, and became a legal advisor in the Office of Patent Legal Administration in 1994.

Mr. Bahr holds a Bachelor of Science degree from the University of Maryland, and a Juris Doctor from The George Washington University.