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USPTO Post-Grant Patent Trials 2013

 
Author(s): Robert Greene Sterne, Scott A. McKeown, W. Todd Baker
Practice Area: Intellectual Property
Published: Mar 2013
ISBN: 9781402419614
PLI Item #: 42144
CHB Spine #: G1130

W. Todd Baker is Chair of Oblon’s Post-Grant Patent practice group and is a member of the firm’s Management Committee. With significant experience in both patent reexamination and interference cases, Mr. Baker is uniquely positioned to advise clients on post grant USPTO proceedings such as inter partes review (IPR) and post grant review (PGR) proceedings, complementing traditional litigation-based patent validity challenges.

Mr. Baker is a recognized leader in the IP community, having recently served on the Board of Directors of the American Intellectual Property Law Association (AIPLA). Indeed, he was selected as one of the top attorneys in the country for adversarial post-grant proceedings:

Patent interference chair W. Todd Baker is ... extolled. “He develops an intimate understanding of and appreciation for the client’s business position”, enabling him to provide commercially driven advice.

Mr. Baker has extensive experience handling all aspects of post-issuance proceedings at the USPTO including reissue applications, ex parte reexamination, IPR proceedings, and appeals to the USPTO’s Patent Trial and Appeal Board (PTAB). Mr. Baker also advises clients on issues of priority, patentability, derivation, inventorship, and licensing related to patent interference matters before the PTAB.

While focused on his post-grant practice, Mr. Baker also prepares and prosecutes patent applications in diversified electrical and mechanical technologies as a member of the firm’s Electrical and Mechanical Patent Prosecution groups. Among the technologies with which he has worked are automotive related, wireless innovations, medical devices, dynamic control systems, and clean technologies.


Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 150 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators.

As a Professorial Lecturer in Law at The George Washington University Law School and a member of the teaching faculty of the Practising Law Institute, Scott lectures and writes extensively on PTAB proceedings. He is a former chair of the American Bar Association, Intellectual Property Law Section Committee 104 (Post-Grant USPTO Proceedings), and currently sits on the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott also maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings. 

Prior to becoming an attorney, Scott worked as an electrical engineer for a government agency, troubleshooting embedded systems and circuit designs. He also has experience across a wide range of related technologies, including computer software, wireless telecommunication protocols, network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C., a premier intellectual property law firm based in Washington, D.C.  Mr. Sterne has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU enforcement, reexamination, high quality global patent portfolios, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics throughout the past 40 years, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” Most recently, he was named by Law360 as one of  “The Top 25 Icons of IP.”  He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). In his practice, Mr. Sterne holds a BSEE and a MS and specializes in electronics, computers, software, communications, semiconductors, wireless, medical devices, nanotechnology, and business methods technologies. He is counsel in more than 160 PTAB contested proceedings and 150 reexaminations at the USPTO and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Mr. Sterne is highly rated in peer-review rankings, including a consistent "Band 1" patent prosecution designation by Chambers & Partners. Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012), and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service.