CARTER G. PHILLIPS is the Co-Chairman of the Executive Committee of Sidley Austin LLP, and is a member of the firm's Management Committee. Mr. Phillips was the managing partner of the firm's Washington, D.C. office from 1995 to 2012. He served as a law clerk to both Judge Robert Sprecher on the U.S. Court of Appeals for the Seventh Circuit and Chief Justice Warren E. Burger on the United States Supreme Court. Mr. Phillips served as Assistant to the Solicitor General and argued 9 cases on behalf of the federal government in the United States Supreme Court. Since joining Sidley, Mr. Phillips has argued 67 cases in the Supreme Court; his 76 arguments before that Court are the most of any lawyer currently in private practice. Mr. Phillips argued 10 cases in the last two Terms of the Supreme Court. Mr. Phillips also has argued more than 90 cases in the federal courts of appeals including 22 cases in the Federal Circuit Court of Appeals, and more than a dozen in other appellate courts.
His practice has been featured in articles in the American Lawyer, Business Week, Legal Times, The National Law Journal, USA Today and Legal Business (a publication in England). Mr. Phillips was selected by the American Lawyer as a member of the 45 Under 45 in 1995 and as one of the 100 Best Lawyers in America by The National Law Journal. In 2006 he was named one of the "Top 100 Most Influential Lawyers in America" as chosen by The National Law Journal. The NLJ also named him a runner-up for its 2006 "Lawyer of the Year," saying that in 2006 he "became the 'go-to' attorney for corporations seeking Supreme Court relief, further elevating his stature within the small, but highly skilled, Supreme Court bar." In September, 2007 he received the Lewis F. Powell Award for Business Advocacy given by the National Chamber Litigation Center, the public policy law firm of the U.S. Chamber of Commerce. In July 2008, Mr. Phillips was named one of the "90 Greatest Washington Lawyers of the Last 30 Years" by the Legal Times. Chambers USA's Leading Lawyers for Business has listed him in the top band of litigators in Washington, D.C. In 2010, he has been named one of "The Decade's Most Influential Lawyers" by The National Law Journal. In June 2011, Mr. Phillips received the Honorary Degree, Doctor of Public Service, from The Ohio State University in recognition of his distinguished career as one of the nation's preeminent appellate advocates and his contributions to American public policy and the legal profession. More recently, Mr. Philips was also named one of the 2012 Lawyers of the Year in the area of Litigation - Regulatory Enforcement by Best Lawyers.
Daryl Joseffer is the head of King & Spalding’s national appellate practice. Chambers 2012 reported that Mr. Joseffer “impresses with his ‘great instincts’ and his ‘strong
ability in oral arguments.’” “‘When he is ‘on stage’ in court he is simply amazing, he is very persuasive, smooth and comfortable,’ clients enthuse.”
Mr. Joseffer has argued 11 cases and filed well over 100 briefs in the Supreme Court. His successful Supreme Court litigation record includes major patent, pharmaceutical, civil rights, environmental, and criminal cases.
Mr. Joseffer has also handled appeals in every United States Court of Appeals. He now devotes about half of his time to patent appeals in the Federal Circuit and the Supreme Court. Among other patent cases, he is now representing McKesson Corp. before the en banc Federal Circuit in Epic v. McKesson , which concerns the standard for imposing liability when multiple entities combine to practice a patented invention collectively, but no single entity does so individually.
Mr. Joseffer is nationally ranked or recommended in Chambers, Legal 500, and Benchmark . He joined King & Spalding in 2009 after serving as the Principal Deputy Solicitor General and, previously, an Assistant to the Solicitor General. Before joining the Office of the Solicitor General, Mr. Joseffer was Deputy General Counsel of the White House Office of Management and Budget, a partner at Kirkland & Ellis, and a law clerk to Judge Jerry E. Smith of the U.S. Court of Appeals for the Fifth Circuit.
Joe FitzGerald is Senior Vice President, Legal & Public Affairs for Symantec Corporation. Symantec is the world leader in providing solutions to help individuals and enterprises assure the security, availability, and integrity of their information and computing infrastructure. In his role, Mr. FitzGerald manages the legal support for Symantec's business groups, including coordinating all inbound and outbound technology licensing, as well as all aspects of the Symantec worldwide Intellectual Property Program. Mr. FitzGerald is also responsible for overseeing Symantec's global litigation, antipiracy and brand protection programs, as well as the global Public Affairs programs. Mr. FitzGerald is actively involved in the strategic acquisition of intellectual property assets for the company, as well as the Company's M&A activities.
Kevin Barhydt currently manages RPX Corporation's patent acquisitions team - deploying over $500M in capital to reduce patent risk for the RPX client network. He also ensures alignment of powerful analytical tools that give RPX clients greater visibility into NPE and patent market activities. Both roles allow Mr. Barhydt to empower the RPX client network to take an efficient, market-based approach to the patent problem and avoid costly litigation.
Prior to joining RPX, Mr. Barhydt was the Vice President of Acquisitions at Intellectual Ventures (IV) where he oversaw the completion of hundreds of patent acquisitions and launched key strategic initiatives to advance the Acquisitions program. Earlier in his tenure at IV, Mr. Barhydt successfully designed and implemented the targeted patent acquisition program and developed processes and metrics to improve licensing operations.
Before joining IV, Mr. Barhydt was a consultant at McKinsey & Company where he worked with senior client leadership primarily in the high-tech industry to complete projects in sales and marketing, capital allocation and performance management. Prior to business school, Mr. Barhydt held various sales and marketing leadership positions for smaller high-tech companies.
Mr. Barhydt holds a BA from the University of Puget Sound and an MBA from Harvard Business School.
Kim Van Voorhis focuses primarily on high stakes medical device patent and trade secret litigation. Ms. Van Voorhis also conducts due diligence and pre-filing investigations, and has advised on trade secret claims on behalf of both employers and employees in various medical device fields.
For the past six years, Ms. Van Voorhis’ medical device work has centered on a series of lawsuits directed to needle-free intravenous access devices for a pioneer in this field, ICU Medical, Inc. She has represented ICU in four separate litigations, including in a recent jury trial in the District of Delaware and before the Trademark Trial and Appeals Board (TTAB). She also recently settled a case on behalf of another client, Optovue Corporation, which developed pioneering machines for optical coherence tomography using fourier domain technology.
Ms. Van Voorhis began her career in trademark litigation by working with companies on ICANN domain dispute and TTAB proceedings and district court enforcement. She continues to use that experience in cases that have overlapping technical and trademark-related issues.
Ms. Van Voorhis is presently on the Board of Directors for the American Intellectual Property Law Association (AIPLA) where she also served as the past chair of the Trademark Law Committee and past chair of the Trademark Relations with the USPTO Committee. Ms. Van Voorhis is also a frequent lecturer on patent and trademark-related topics at the AIPLA stated meetings, and she has been on the Practicing Law Institute Faculty for the past five years, lecturing annually at the Patent Law Institute.
In addition to her patent and trademark practice, Ms. Van Voorhis is also active in pro bono litigation matters and currently serves on the firm wide Pro Bono Committee. In 2010, she was awarded the California State Bar President’s Award for her team’s work in connection with rates paid to California’s foster parents to care for abused and neglected foster children. Ms. Van Voorhis continues to focus her pro bono efforts on foster care related advocacy. She is also a member of the Board of Directors for the Equal Rights Advocates, a California-based non-profit organization dedicated to protecting and expanding economic and educational access and opportunities for women and girls.
University of California, Irvine (B.S., 1994)
Loyola Law School (J.D., 1998)
U.S. Patent & Trademark Office
Nicholas P. Godici served for five years as the Commissioner for Patents and as the Acting Under Secretary of Commerce for Intellectual Property and Director at the United States Patent and Trademark Office (USPTO). As Commissioner, Mr. Godici was responsible for all aspects of the patent granting process for the United States. Mr. Godici has served as Executive Advisor to Birch, Stewart, Kolasch & Birch, LLP since 2005.
Mr. Godici has over 38 years experience in intellectual property rights protection, including over 20 years of organizational management and leadership experience at the USPTO. He has represented the United States in a number of international negotiations involving intellectual property issues and agreements with other countries. He served as Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO from January to December 2001.
Professional Affiliations and Awards
Elected fellow of the National Academy of Public Administration (NAPA), 2001.
Outstanding Engineering Alumni, Pennsylvania State University, 2002
Member of the Industrial and Professional Advisory Committee for the College of Engineering at Pennsylvania State
Named "one of the most important people in intellectual property" by Legal Times Magazine in 2001.
Awarded a bronze and two silver medals from the United States Department of Commerce.
Articles and Recognitions
San Diego Union Tribune Profiles BSKB's Nicholas Godici
Law360 Quotes BSKB's Nicholas Godici in New First-To-File Rules Article
District Court Rules That the Therasense Patent is Unenforceable Due To Inequitable Conduct Industry Insiders Make Patent Wishes for 2012
"Adequately Funding the USPTO: A Critical Problem that Must be Solved", Medical Innovation & Business, Summer 2010-Volume 2, Issue 2.
"Supporting a Knowledge Based Economy" Software Patents, Managing Intellectual Property Magazine, Innovation and Invention Focus 2004.
BSKB's San Diego Office Hosts AIA Briefing
T.J. Angioletti is Associate General Counsel, Technology & Transactions for Netflix, Inc. His responsibilities include technology licensing, management of Netflix's intellectual property portfolio and support for the company's business development and marketing efforts. Before Netflix, T.J. was Vice President, Chief IP Counsel for Oracle Corporation and he also worked for Apple Computer, Inc. and Pillsbury Madison & Sutro (now Pillsbury Winthrop). T.J. previously served on the Board of Directors for IPO (Intellectual Property Owners Association) and on the Advisory Board for the Stanford Program in Law, Science & Technology. He is a graduate of the University of Virginia School of Law and UCLA.
Allen Lo is Deputy General Counsel for Patents and Patent Litigation at Google Inc. He leads Google's patent team, which is responsible for all aspects of the company's patent-related activity. The core areas of responsibility include patent strategy development, portfolio development, licensing, analytics, acquisitions, litigation, and policy. Allen joined Google in 2012 following a 12-year career at Juniper Networks, Inc., where he served as Deputy General Counsel and Vice President of Intellectual Property.
Allen started his career as an examiner at the U.S. Patent and Trademark Office, examining software and business method applications. He spent 7 years at the law firm of Finnegan, Henderson, and clerked for Chief Magistrate Judge Infante at the U.S. District Court for the Northern District of California. Allen received his BS in Electrical Engineering from The Ohio State University and his JD from the Georgetown University Law Center.
DONALD R. DUNNER is a partner in the Washington, D.C. firm of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., a graduate of Purdue University and Georgetown University Law School, a past President of the American Intellectual Property Law Association, past Chair of the American Bar Association Intellectual Property Law Section and a member of the ABA House of Delegates since 2002, a past Chair of the Advisory Committee of the Federal Circuit (1982-92), served as a member of the PTO Advisory Commission on Patent Law Reform (1991-92), a co-author of Court of Appeals for the Federal Circuit: Practice and Procedure and a past co-author of Patent Law Perspectives, the NJIPL Jefferson Medal recipient for 2004 and was named International Lawyer of the Year 2005 for Patents by Who’s Who Legal, a 2010 Inductee to Intellectual Asset Management magazine’s IP Hall of Fame, and a Fellow of the American College of Trial Lawyers and a 2004 inductee of the American Academy of Appellate Lawyers. In July 2000, the National Law Journal named Mr. Dunner one of the 100 Most Influential Lawyers in America. Mr. Dunner has been selected by his peers for inclusion in the 2012 edition of Best Lawyers in America®, making him one of a distinguished group of attorneys who have been listed in Best Lawyers® for ten years or longer. In May 2008, he was listed in Legal Times’ “Greatest Washington Lawyers in the Past 30 Years.” He was honored in October 2011 with the AIPLA Board of Directors’ Award. Mr. Dunner was recognized by the George Washington University Law School students as Adjunct Professor of the Year for 2012. He is the recipient of the 2012 Linn Inn Alliance Lifetime Achievement Award and the 2012 IP Jurisprudence Award of the Hispanic National Bar Association.
Kenneth Lustig is vice president and head of the Client Engagement and Strategic Acquisitions, Monetization and Investment groups at Intellectual Ventures. Mr. Lustig leads the teams responsible for managing Intellectual Ventures' strategic client relationships, channel-based divestments, large complex acquisitions of intellectual property (IP) and the subsequent monetization of those portfolios. He is also a member of the company's Global Licensing leadership team, which is responsible for revenue generation across all the company's funds.
Prior to joining Intellectual Ventures, Mr. Lustig spent more than 11 years as an executive at Microsoft, where he served most recently as the managing director of IP Investments and Acquisitions. He was responsible for the Content Guard IP joint venture, as well as some of Microsoft's largest IP investments, licensing deals and patent litigation settlements. Mr. Lustig closed over $3 billion of transactions at Microsoft, including creating and overseeing a $1 billion diversified IP investment portfolio. He also spent several years leading part of Microsoft's Corporate Development Group. Before his time at Microsoft, Mr. Lustig spent nine years as a global investment banker.
Mr. Lustig received his bachelor's degree in political science from the University of California, Los Angeles, and his master of business administration in finance from New York University.
Margaret Dunbar, Senior Director of IP and Legal Affairs, Corporate Secretary for Sanford-Burnham Medical Research Institute. She's been at the Institute since April 2005 & manages its patent portfolio & sets policy & strategy for the IP program. She manages outside counsel, in-house patent filings, IP compliance & government reporting & drafting IP transactional agreements and provides freedom to operate analyses. Her past experience includes global IP consulting for Monsanto and being a named partner in an IP boutique firm; with Hewlett-Packard & Micron as major clients. While at a national law firm Ms. Dunbar represented start-up biotech/pharmaceutical companies, and large biotechnology and agricultural companies. She was part of a team that represented a client in a $3.4 billion pharma acquisition in 2004. Margaret is a frequent speaker for IP licensing and technology transfer groups and meetings.
Roberta Hanson is special counsel practicing intellectual property at Faegre Baker Daniels' Denver office.
Prior to her patent prosecution career, Roberta was in research for several years. Her most recent studies involved research at the Immunology department of National Jewish Medical and Research Center studying gamma delta T cells. She also served as an intern in the Technology Transfer Office of National Jewish for one year while performing her research in the lab.
Roberta joined Faegre Baker Daniels as a patent agent in 2004 and after law school, she became a patent attorney. Prior to joining Faegre Baker Daniels, she was a patent agent at Blakely, Sokoloff, Taylor & Zafman.
Roberta has prepared and prosecuted numerous United States and International patent applications for clients in various sectors including biotech, biofuels, chemical, pharmaceutical, health supplements, nutrition substitutes, herbal medicines, medical device, and computer software. In addition, some other aspects of her practice include performing IP due diligence, compiling and negotiating complex biotech license agreements, compiling and negotiating sponsored research agreements, drafting joint venture agreements; compiling freedom to operate assessments, compiling press releases related to intellectual property disclosures and assisting in the formation and development of start-up and spin-out companies.
Roberta has also served as part of litigation teams enforcing and defending patent infringement and invalidity claims. Here, her experience has been utilized to analyze complex documents and assist in pre-litigation strategies; provide claim construction analysis, and validity and infringement analysis.
Roberta uses all of her previous experiences to aid in the understanding, drafting and prosecuting of patent applications. In addition, these experiences have provided her with a unique perspective for counseling clients regarding intellectual property strategies carefully geared toward the client's needs and budgetary constraints.
University of Denver Sturm College of LawJ.D. (2008)
University of Arizona Ph.D, Molecular and Cellular Biology/Biochemistry
Texas A&M University, B.S. Microbiology
U.S. Patent and Trademark Office (USPTO)
Alison Tucher is a partner in the firm's Intellectual Property Group, handling patent cases and a variety of other commercial and intellectual property disputes. She regularly litigates in U.S. courts and international arbitral tribunals, and has led international patent litigation teams.
Ms. Tucher's trial practice at Morrison & Foerster has resulted in numerous successes, some with precedential results. For example, on a writ for a patent case headed to trial, she successfully established the scope of work-product immunity for opinion counsel's papers. See In re EchoStar, 448 F.3d 1294 (Fed. Cir. 2006). For a client whose federal False Claims Act case went to trial, she achieved dismissal of the parallel state-law case on Noerr-Pennington (First Amendment right to petition) grounds-the first time that doctrine had been successfully used in a false claims act case. And a recent San Jose case in which Ms. Tucher played a key role was dubbed by the business press the "patent trial of the century."
Ms. Tucher's appellate experience began as a law clerk. She clerked for Justice David Souter of the U.S. Supreme Court and Judge William Norris of the Ninth Circuit Court of Appeals.
After clerking, Ms. Tucher tried 19 criminal cases to juries in Santa Clara County. Continuing in criminal law at Morrison & Foerster, Ms. Tucher has twice-for clients in unrelated cases-won the freedom of a man wrongfully imprisoned for a murder he did not commit.
Ms. Tucher also teaches trade-secret law at Stanford Law School, and serves on the board of governors of the Northern California Chapter of the Association of Business Trial Lawyers.
Ms. Tucher was included in Benchmark Litigation's inaugural list of the "Top 250 Women in Litigation," as well as being named one of its "Local Litigation Stars of California." Super Lawyers magazine lists Ms. Tucher among its 2013 Northern California "Super Lawyers." And for her exoneration work in 2003, Ms. Tucher received the President's Service Award from the Santa Clara County Trial Lawyers Association and was profiled on CBS News' The Early Show as an "American Hero." While a student, Ms. Tucher received Harry S. Truman and Herchel Smith Scholarships, was elected to the Order of the Coif, and served as book review editor for the Stanford Law Review.
Williams College (B.A., 1984)
University of Cambridge (M.A. engineering, 1990)
Stanford Law School (J.D., 1992)
Andrew N. Thomases
Partner, Skadden, Arps, Slate, Meagher & Flom LLP, Patent and Other Complex IP Litigation
Andrew Thomases is a member of Skadden’s Patent Litigation Group, recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.” He has more than 18 years of experience litigating complex patent and trade secret cases in federal courts throughout the country, as well as before the International Trade Commission. He has achieved numerous successes for companies in areas of medical devices, computer technology, semiconductors, analog circuits, wireless technology and wafer fabrication tools, among other areas.
His first-chair trial experience includes a successful ITC case for Advanced Analogic Technologies, Inc., a semiconductor device company, and two appeals before the U.S. Court of Appeals for the Federal Circuit. He obtained a $50 million-plus jury verdict on behalf of medical device maker Medtronic Inc. - one of 2009’s largest plaintiff verdicts in California. He has extensive experience in the Eastern District of Texas, the districts of California and the District of Delaware.
Mr. Thomases has been recognized as a leading lawyer in patent litigation by Chambers USA:?America’s Leading Lawyers for Business and has been named among the “Top IP Litigators” in California by the Daily Journal. He also has been recognized by The Legal 500 (U.S.) for his record of successfully representing clients before the ITC.
He writes and speaks frequently on patent litigation issues, including ITC practice. Recently, he has spoken about “Patent Litigation and Trends in Non-Practicing Entities” at a conference in Taiwan and Practising Law Institute; “RAND in the Courts” at a Berkeley Center for Law and Technology seminar; “Essential Questions About Standard-Essential Patents” at the Advanced Patent Institute;” and “The New Meaning of ‘Domestic Industry’ and Why NPEs are Filing in the ITC” at the Silicon Valley Association of General Counsel’s annual “All Hands” meeting. He has created CLE presentations on ITC issues for Law.com, and he gave the keynote address on “Hot Topics in Life Sciences Patent Litigation” at Skadden’s annual Pharmaceutical and Medical Device Conference.
Previously, he was a law clerk for the Hon. Raymond C. Clevenger III of the U.S. Court of Appeals for the Federal Circuit.
Mr. Thomases is co-chair of the board of directors of Community Legal Services in East Palo Alto, a nonprofit, pro bono services agency that provides legal assistance to low income residents of East Palo Alto, East Menlo Park
and the surrounding areas.
Law Clerk, Hon. Raymond C. Clevenger III; U.S. Court of Appeals; Federal Circuit (1994-95)
Vice President and Associate General Counsel for IP Litigation and Public Policy
Cynthia Bright is the Vice President and Associate General Counsel for Intellectual Property (IP) Litigation and Public Policy within the Office of the General Counsel. She and the IP Litigation team are responsible for managing all IP lawsuits that are filed against HP in the United States, and supporting and reporting on all intellectual property disputes worldwide.
Cynthia joined HP in 2009 as an IP Litigation Manager and served in this role until she was named to lead the IP Litigation team in April 2012.
Before joining HP, Cynthia was the Director of Litigation for Atmel Corporation, a semiconductor company based in San Jose, California. She joined the company as Senior Litigation Counsel in 2003. Prior to joining Atmel, Cynthia was in private practice at Wilson Sonsini Goodrich & Rosati.
Cynthia graduated from the Georgetown University Law Center, and received her undergraduate degree in Government from Georgetown University.
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”).
Denise De Mory is the Managing Partner of Bunsow De Mory and has litigated patent and other intellectual property cases for over twenty years. She has repeatedly been named one of California’s “Top Women Litigators” by The Daily Journal. Denise has significant trial experience, including a patent trial that resulted in a $61 million verdict for her client. She was also a member of the United States Department of Justice’s trial team, in the U.S. v. Microsoft antitrust litigation. Denise deposed executive-level Microsoft witnesses and the chief architect of Internet Explorer, and offered one of the government’s technical experts at trial.
It is Denise’s firm understanding of what matters at trial and what it takes to effectively communicate to a judge and to a jury that enables her to develop and pursue successful strategies to achieve her clients’ goals and objectives.
Denise enjoys traveling with her family, is a certified sewing instructor with a passion for costume design and construction, and takes math classes (for fun!) in her spare time.
George Mason University School of Law, Arlington,VA, J.D., November 1983 (with distinction)
University of Maryland, College Park, MD, B. S., 1975 (Specialty: Biochemistry)
Birch, Stewart, Kolasch & Birch, LLP, Partner
University of San Diego School of Law, Adjunct Professor of Law – Biotechnology Patent Law
Shlesinger, Arkwright, Garvey & Dinsmore, Arlington, VA.
Technical Assistant/Patent Searcher
Hazelton Laboratories, Vienna, VA
Technician, technical writer
Presentations and Publications
Prepared and presented numerous lectures and seminars in the United States and abroad regarding U.S. patent law. The following are examples of some recent presentations:
- July 2002 – Presentation at SRI Conference on “Patentability of Genes”
- April 2003 – Presentation at Whittier Law School IP Seminar Series on “Recent Issues in the Patenting of Life Sciences”
- April 2003 – Presentation at OCPLA Monthly Meeting on Interference Practice
- November 2003 – Presentation at OCPLA Monthly Meeting on Practical Implications of the Federal Circuit’s Decision in Festo.
- April – May 2004 – Moderator for panels speaking at Whittier Law School IP Spring Seminar Series.
- October 2004 – Presentation on Patent Claim Strategies for the United States, and Moderator for panel discussion on Reach Through Claims at FICPI Forum, Venice, Italy.
- June 2005 – Two day seminar at Helsinki Technical University, Finland on US Patent Practice.
- October 2005 – Presentation on “Non-Litigation Methods for Challenging a Competitor’s Patent”, VPP Conference, Weimar, Germany.
- October 2005 – Presentation on “Comparative Claim Drafting – Revisiting Some Old Issues with New Developments”, FICPI Forum, Lisbon, Portugal.
- September 2006 – Presentation at Orange County Patent Lawyers Association on “Pre-Appeal Brief Conferences at the USPTO”
- January 2007 – Presentations on “Electronic Filing at the USPTO” and “The USPTO Struggles with Biotech: An Update”; Patent Law Institue 2007, San Francisco, California.
- October 2007 – Presenation on “Post-Grant Procedures: Present and Future”, BIO IP Counsels Meeting, New York, New York.
- November 2007 – Moderate two day seminar sessions on “A Day in the Life of a 21st Century E-Office”, FICPI Forum, Seville, Spain.
- January 2008 – Presentations on “Electronic Filing at the USPTO” and “PTO/Pharma Trends – News to Report”; Practicing Law Institue 2008, San Francisco, California.
- June 2008 – “Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Practicing Law Sections 102 & 103, Patent Law Institue 2008, San Francisco, California.
- April 2009 – “Adapting to Changing IP Laws”, presentation at BIOCOM Spring IP Workshop, San Diego, California
- September 2009 – “Section 102(a) and (b) and the CAFC 2009”, Practicing Law Institue 2009, San Francisco, California.
- October 2009 – “IP Challenges for Inventions Related to High Throughput Screening”, BIOCOM IP Workshop, San Diego, California
- January and March 2010 – “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law Institue San Francisco and Chicago.
- March 2010 – “All Things Chemical and Biotechnical at the PTO”, Practicing Law Institue, San Francisco, California.
- September 2010 - “Section 102(a) and (b) and the CAFC 2010”, Practicing Law Institue 2010, San Francisco, California
- January 20101– “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation”, co-chair and speaker, Practicing Law Institue San Francisco
- February 2011 - “All Things Chemical and Biotechnical at the PTO”, Practicing Law Institue, San Francisco, California”
- July 2011 - “Section 102(a) and (b) and the CAFC 2011” and “Impact of KSRat the USPTO”, Practicing Law Institue 2011, San Francisco, California
- August 2011 – “Change Agents: Impact of US Patent Law Developments On Your Patent Portfolio Management”, Ipendo 2011 User Forum, La Jolla, California.
- October 2011 - “Prior Use and the AIA”, ”, Practicing Law Institue 2010, San Francisco, California
- December, 2011 – “Impact of Patent Reform on Your Patent Portfolio”, Connect Policy Forum, San Diego, California.
- March, 2012 – “All Things Chemical and Biotechnological at the PTO”, Practicing Law Institue 2010, San Francisco, California
- July,, 2012 – “Prior Art, Obviousness, and the America Invents Act in 2012”, Practicing Law Institue 2010, New York and San Francisco.
- November 2012 – “Patents: Prosecution, Global View”, Intellectual Property & Licensing Workshop, San Diego Center for Systems Biology, San Diego, California
- March 2013 – “Implementing the AIA – First to File: The New 102 Timelines and Deadlines, Practicing Law Institue 2013, San Francisco, California
- March 2013 – “All Things Chemical and Biotech, Practicing Law Institue 2013, San Francisco, California
LEONARD R. SVENSSON, ABSTRACT
Leonard Svensson is a partner in the firm of Birch, Stewart, Kolasch & Birch, LLP and is a partner in firm’s office in San Diego, California. Mr. Svensson holds a Bachelor of Science degree in biochemistry, a juris doctorate degree in law, and is a member of the Virginia and California State bars. He has experience in all aspects of intellectual property law, including prosecution of patent applications in the United States and abroad, opposition proceedings in the EPO and Japan, infringement actions in U. S. Federal District Court, patent interferences and appeals. He also has experience counseling in patent validity and infringement issues, handling worldwide patent portfolios and conducting product clearance studies in the major markets of Europe, Japan and the United States. Mr. Svensson has particular technical expertise in the fields of biotechnology (including plant biotechnology), biochemistry and pharmaceuticals. He has lectured frequently before both U.S. and international audiences on various aspects of U.S. patent practice.
Gene Quinn is a Patent Attorney and the founder of IPWatchdog.com. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since then it has become one of the leading IP publications on the Internet. IPWatchdog.com has been recognized multiple times by the American Bar Association as a top 100 legal blog, has 3 times been voted the top IP blog, and in 2014 was retired from voting and inducted into the ABA Blawg Hall of Fame.
Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world. As an electrical engineer with a computer engineering focus, he frequently advises on patent matters relating to software, computer implemented methods, business methods, and Internet innovations.
Between 2003 and 2007 Gene wrote a monthly column for Patent World and served on the Patent World editorial board. He has also previously taught a variety of intellectual property courses at the law school level, including patent law, patent claim drafting, patent prosecution, copyright law, trademark law and introduction to intellectual property. Gene taught at Syracuse University College of Law, Temple University School of Law, The University of Toledo College of Law, Franklin Pierce Law Center, Whittier Law School, and John Marshall Law School.
Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.
Magistrate Judge Jacqueline Scott Corley has presided over a variety of civil cases at all stages of the proceedings, from motions to dismiss through jury trial. She has also served as a settlement judge in nearly every type of federal litigation.
Just prior to her 2011 appointment to the Court, Judge Corley was a partner at Kerr & Wagstaffe, LLP in San Francisco as a civil litigator with an emphasis on federal practice. She represented individuals, government entities, and institutions as plaintiffs and defendants in a variety of matters that included trademark, copyright, patent, constitutional law, defamation, malicious prosecution, class actions, contract and probate.
From 1998 through 2009 Judge Corley served as a career law clerk to the Honorable Charles R. Breyer. She also served on the Northern District of California Alternative Dispute Resolution mediation and early neutral evaluation panels from 2006 though her appointment.
Judge Corley received her undergraduate degree from U.C. Berkeley, and her J.D. from Harvard Law School, magna cum laude, where she was an editor and Articles Chair of the Harvard Law Review. Upon graduation she served as a law clerk to the Honorable Robert E. Keeton of the United States District Court for the District of Massachusetts. She
then practiced complex commercial litigation and white collar criminal defense at Goodwin, Procter LLP in Boston and was a litigation associate at Coblentz, Patch, Duffy & Bass LLP in San Francisco before joining Judge Breyer in 1998.
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 related to electrical, computer, and mechanical inventions.
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 panel mounting 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 recently was a key part of trial teams that won trials in the ITC and the U.S. District Court for the District of Delaware. The ITC trial involved complex mammography and tomosynthesis imaging devices, and the district court trial involved life-saving transcather heart valve replacement devices and resulted in a multi-million dollar jury verdict for the client.
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.
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.
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals.
He is the primary evaluator for standards essential patents on today's most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada.
One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect. Follow Bob’s commentary on patent eligibility and related patent issues on Bilski Blog.
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.
From 2002- January 2017, she was Special Counsel for Intellectual Property in Legal Policy Section. In this role, she advised the Antitrust Division on matters in which competition and intellectual property law and policy intersect both domestically and internationally. From November 2012- January 2017, she was Assistant Chief of the Division’s Legal Policy Section, which advises the Division about policy and legislative matters more broadly, including providing analysis of complex antitrust matters, developing and supporting the Division’s legislative programs, conducting long-range planning projects and programs of special interest to the Assistant Attorney General, and a engaging in advocacy to advance competitive principles with federal and state entities.
Ms. Marshall speaks frequently on IP-antitrust issues and has taught antitrust law as an adjunct professor. Most recently, she has written a chapter on U.S. Antitrust Aspects of FRAND Disputes in Cambridge Handbook of Technical Standardization Law, Vol. 1: Antitrust and Patents (Jorge L. Contreras, ed., forthcoming 2017 (New York: Cambridge Univ. Press) with Renata Hesse.
Before joining the Antitrust Division in 1994, Ms. Marshall was an Attorney-Advisor in the General Counsel=s Office at the U.S. International Trade Commission and worked in private practice. She clerked for the Honorable Raymond C. Clevenger, III of the U.S. Court of Appeals for the Federal Circuit from 1991 to 1993.
Ms. Marshall received her law degree from the University of California, Berkeley, School of Law in 1988, after graduating magna cum laude and Phi Beta Kappa from Carleton College and spending two years in West Africa as a Peace Corps volunteer. While at Berkeley Law, she was Managing Editor of the International Tax and Business Lawyer.
Ms. Marshall is admitted to the bars of California, the District of Columbia, the Court of International Trade, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court.
As General Manager of Microsoft's IP Licensing organization, David Kaefer manages a team of professionals responsible for a range of IP transactions, including patent cross licensing, out-bound patent licensing, patent sales, protocol licensing, technology licensing and technology divestitures. A thirteen year Microsoft veteran, David previously held positions in market research, corporate communications and corporate affairs.
Mr. Bhansali's experience spans a wide-range of civil trials and appeals, with particular emphasis on intellectual property and antitrust matters. He has handled patent disputes in district courts and the U.S. International Trade Commission for cases that have involved computer software, internet content delivery, digital imaging, telecommunications, and pharmaceuticals. His antitrust experience has included representing corporations in the credit-card, pharmaceutical, and video-game industries as both plaintiffs and defendants. In addition, Mr. Bhansali has handled numerous appeals in federal and state courts, and he has defended clients in several class actions brought under federal and California law.
Mr. Bhansali has been listed in Best Lawyers in America for Intellectual Property Litigation and Patent Litigation, since 2010. In 2009, Mr. Bhansali was named one of the Daily Journal's Top 20 Under 40 lawyers in California. In 2015, he served as President of the Northern District of California Federal Bar Association Chapter, and he presently serves as Chief Financial Officer and Board member for the Northern District of California Practice Programs Committee. From 2010 to 2014, he served on the Executive Committee of the State Bar of California Section of Antitrust and Unfair Competition Law.
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 (a member of the Rules Sub-Committee), and is admitted to the CAFC.
United States District Judge Patti B. Saris was born in Boston, Massachusetts, and has resided in the Boston area for most of her life. She is a graduate of Radcliffe College '73 and Harvard Law School '76.
After graduating from law school, she clerked for the Supreme Judicial Court, and then went into private practice. When Senator Edward M. Kennedy became chairman of the Senate Judiciary Committee, she moved to Washington D.C. and worked as staff counsel. She later became an Assistant United States Attorney, and eventually chief of the Civil Division. In 1986, Judge Saris became a United States Magistrate Judge, and in 1989, she was appointed as an Associate Justice of the Massachusetts Superior Court. In 1994, she was appointed to the United States District Court by President Clinton. She became Chair of the United States Sentencing Commission in January, 2011.
Judge Saris is active on various judicial committees, including the Budget Committee. She is the former chair of The Defender Services Committee.
The mother of four children, Judge Saris is married to Arthur Segel who teaches real estate at Harvard Business School.
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.
Heath Hoglund is Vice President and Chief Patent Counsel at Dolby in San Francisco, where he has global responsibility for patents, trademarks and copyrights. In this role he has consistently driven year-over-year growth in Dolby's patent licensing programs. He has significant experience in building strategic IP portfolios and licensing programs. Mr. Hoglund serves on the council of the American Bar Association IP section, on the board of IPO, and is past president of the San Francisco IP Law Association. He holds a JD (cum laude), an MS and a BS (cum laude) from the University of Minnesota.
Judge Michel served for more than 22 years on the Federal Circuit, retiring on May 31, 2010. From December 25, 2004 until his retirement, he also discharged the duties of Chief Judge of this national court, serving simultaneously on the U.S. Judicial Conference -- the Judiciary's governing body -- and by appointment of the Chief Justice on its seven-judge Executive Committee.
He judged several thousand appeals and authored more than 800 opinions, one third concerning intellectual property law. Intellectual Asset Management magazine inducted him into its Hall of Fame and he was designated one of the 50 most influential leaders in intellectual property law in the world. His contributions were also recognized by lifetime achievement and similar awards by the American Intellectual Property Law Association (AIPLA); Intellectual Property Owners Education Foundation (IPO); the American Bar Association's Intellectual Property Section; Managing Intellectual Property magazine; the Sedona Conference; the Patent and Trademark Office Society (PTOS); the New York, Chicago, Philadelphia, and Los Angeles Intellectual Property Law Associations; and the William C. Connor, the Giles S. Rich, and the Richard Linn Intellectual Property American Inns of Court. In 2010 the Los Angeles IP Inn was renamed in his honor as the Paul R. Michel IP Inn.
Judge Michel received the Jefferson Medal, the Eli Whitney Award, and the Katz-Kiley Prize as well as Honorary Doctor of Law degrees from the Catholic University of America and the John Marshall Law School. He is a lifetime Member of Honore of FICPI, the international association of private practitioners of intellectual property law. Williams College granted him the Kellogg Award for "outstanding leadership in law and public service."
Judge Michel has written numerous articles on patent law and advocacy, taught related courses and master classes at George Washington University, the University of Akron, and John Marshall law schools, serving as well on their IP advisory boards and on counterpart boards at the universities of California (Berkley), Washington, and Maryland. He co-authored a casebook, Patent Litigation and Strategy (West, 1999) and an August 2010 editorial in the New York Times on strengthening the patent system to promote prosperity and create new jobs.
A frequent speaker at conferences and law schools during his judicial tenure and since, he retired from a lifetime appointment to be free to speak out on the national need for better patent policy and protection of intellectual property and the vital, unmet resource needs of the courts, the PTO, the International Trade Commission, and other IP-related agencies. He was appointed Distinguished Scholar in Residence by IPO, following his retirement. Judge Michel also consults for law firms and their clients in intellectual property litigations, conducting moot courts, mock trials, case evaluations, editing briefs, advising on strategy and providing mediation and arbitration services.
Nader A. Mousavi is a partner in Sullivan & Cromwell’s Palo Alto office and is co-head of the Firm’s Intellectual Property and Technology Group and the Firm’s Cybersecurity Group. A leader in the field of technology and intellectual property transactions and strategy, Mr. Mousavi has been recognized as a 2017 IP Trailblazer by the National Law Journal, as one of the “The World’s Leading IP Strategists” and “World’s Leading Patent Practitioners” byIntellectual Asset Management (IAM) for Strategy 300 (2015-2017) and Patent 1000 (2012-2017) and as one of the “Top 100 Lawyers in California” by Daily Journal (2012). He is a Lecturer in Law at Stanford Law School (2015-2017), where he teaches a course on Patent and Technology Licensing.
Mr. Mousavi focuses his practice on the intellectual property and technology aspects of high-stakes transactions, including mergers, acquisitions, spin-outs, joint ventures, collaborations, financings, licenses and settlements. He has extensive experience in the licensing and transfer of patents, trademarks, trade secrets, know-how, content, pharmaceuticals, data, software and other technology.
Prior to joining S&C, Mr. Mousavi was a partner at WilmerHale where he co-founded the firm’s Palo Alto office. Earlier in his career, he served as the general counsel to a telecommunications software (SaaS) company through its acquisition by a leading broadband equipment company.
Before joining GW Law School in 2008, Dean Whealan worked at the U.S. Patent and Trademark Office (USPTO) where he served as deputy general counsel for intellectual property law and solicitor since 2001. Dean Whealan represented the USPTO in all intellectual property litigation in federal court and advised the agency on a variety of policy issues. During his tenure, he argued approximately 30 cases before the Federal Circuit and, with his staff, was responsible for briefing and arguing more than 250 cases. Dean Whealan also assisted the U.S. Solicitor General on virtually every intellectual property case that has been heard by the Supreme Court since 2001. He also served as counsel to the U.S. Senate Committee on the Judiciary for the last year.
Prior to 2001, Dean Whealan was a staff attorney for the U.S. International Trade Commission where he litigated several investigations involving intellectual property matters. He has clerked at both the appellate and trial court levels, serving as law clerk to Judge Randall R. Rader, J.D. '78, of the Federal Circuit and Judge James T. Turner of the U.S. Court of Federal Claims. Dean Whealan has engaged in private practice at Fish & Neave in New York and worked as a design engineer for General Electric. For the past 10 years, he has taught as an adjunct professor of law at The Franklin Pierce Law Center and also has taught courses at George Mason University School of Law and Chicago-Kent College of Law.
Education: B.S., Villanova University; M.S., Drexel University; J.D., Harvard University
James Kovacs is the Director of Licensing and lead’s Intel’s Patent Licensing Group, which focuses on counseling and advising in connection with worldwide patent transactions, such as licenses, cross-licenses, acquisitions and sales, as well as related corporate patent strategy. Prior to joining Intel, James was in private practice at leading Chicago law firms, focusing his work on technology transactions and outsourcing. He holds a bachelor’s degree in economics and psychology from the University of Michigan and a law degree from Harvard Law School.