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USPTO Post-Grant Patent Trials 2014


Speaker(s): Bob Steinberg, Eldora L. Ellison, Ph.D., Hon. Ronald M. Whyte, Hon. Teresa Stanek Rea, Lauren A. Degnan, Lisa G. McFall, Matthew A. Smith, Michael T. Rosato, Renny Hwang, Robert Greene Sterne, Scott A. McKeown, Timothy E. Bianchi, W. Todd Baker
Recorded on: Apr. 28, 2014
PLI Program #: 51647

Lauren A. Degnan is a Principal in the Washington, DC, of Fish & Richardson. She leads high-stakes, high-risk litigation where hundreds of millions of dollars are at stake. A trial attorney experienced in all phases of patent litigation, Ms. Degnan has argued in the Markman and summary judgment contexts in numerous federal district courts, including the Eastern District of Texas, has argued cases before the United States Court of Appeals for the Federal Circuit, and has handled Section 337 investigations before the United States International Trade Commission. She is also an appellate and briefing specialist, with an impressive record of summary judgment and appellate wins. Ms. Degnan performs strategic counseling for her clients on avoiding and resolving litigation, IP strategy, pre-suit investigations, appellate arguments, due diligence, opinion work, and reexaminations.

Ms. Degnan specializes in high technology litigation and has litigated cases involving computer software, networks, and peripherals,  microprocessors, telecommunications equipment, smartphones, LCDs and plasma displays, security and encryption technologies, GPS devices, flash memory, internet applications, business methods, document imaging and storage systems, and various mechanical inventions. Before joining Fish, she served as a judicial clerk to then Chief Judge Haldane Robert Mayer of the United States Court of Appeals for the Federal Circuit (1997-1999).

Admissions

  • District of Columbia 1996
  • Massachusetts 1996
  • United States Patent and Trademark Office 1997
  • Supreme Court of the United States
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the District of Columbia
  • United States District Court for the Eastern District of Michigan
  • United States District Court for the Eastern District of Texas
  • United States District Court for the Western District of Wisconsin

Awards
Federal Circuit Bar Association Pro Bono Leadership Award (2012)


Education
BS, Cornell University 1992, Mechanical Engineering
JD, Vanderbilt University Law School 1995, Order of the Coif
  Vanderbilt Journal of Transnational Law


Matthew A. Smith represents clients in patent litigation, licensing and analysis matters, as well as complex USPTO matters in the electrical, semiconductor, software and chemical arts. Mr. Smith has particular familiarity with semiconductor fabrication, circuit design technology, wireless standards, location technologies, smart TV, next-generation manufacturing, enterprise-scale software development and large and small molecule chemical processing.

Mr. Smith received his law degree in 1999, graduating first in his class, magna cum laude, from the University of Wisconsin – Madison Law School. He also served as a Managing Editor of the Wisconsin Law Review, was a member of the Moot Court Board, and was elected to the Order of the Coif. He holds two undergraduate degrees: the first in Electrical Engineering from the Universitaet Hannover, in Hannover, Germany, and the second in Geological Engineering from the University of Wisconsin-Madison.

Mr. Smith is particularly known for his expertise in complex USPTO proceedings. The 2013 Intellectual Asset Management “Patent 1000” list selected him as a Nationally Recommended Practitioner in USPTO Post-Grant proceedings and as a Regionally Recommend (Washington, DC metro-area) practitioner for patent litigation, calling him a “client favorite”, “a rising superstar”. He was also selected as a 2013 IP Star by Managing Intellectual Property.

Mr. Smith is the author of the treatise ”Inter Partes Reexamination 2d,” published by West (a Thomson Reuters business), as well as the forthcoming “Inter Partes Review,” also published by West. He is also the author of the e-book “Design Patents” and the chapter “Foreign Discovery” for the BNA “Patent Litigation Strategies Handbook.”

Since 2009, Mr. Smith has served as an Adjunct Professor at the George Washington University Law School in Washington, DC, where he teaches International Comparative Patent Law. From 2003 to 2005, Mr. Smith served as an Adjunct Professor (Lehrbeauftragter) at the Law School of the Universitaet Hannover in Hannover, Germany, where he taught courses on International Patent Law, Commercial Arbitration, International Sales Contracts and U.S. Law.

Mr. Smith speaks fluent German and is familiar with Spanish, Farsi and Japanese.

Admissions

Mr. Smith is a member of the Washington D.C. bar, and is admitted to practice before the Court of Appeals for the Federal Circuit, the United States Patent and Trademark Office, and the Federal District Court for the Eastern District of Texas. He is practicing under supervision in the State of California.

Education

  • Universitaet Hannover, Electrical Engineering
  • University of Wisconsin-Madison, Geological Engineering
  • University of Wisconsin-Madison Law School, 1999 - Order of the Coif

 


Renny Hwang is Senior Litigation Counsel for Google. He focuses on intellectual property matters, including patent, copyright and open source issues. Mr. Hwang manages a team responsible for a wide number and variety of cases, both in the U.S. and internationally, related to various Google technologies, including Knowledge, Infrastructure and Mobile.

Prior to joining Google, Mr. Hwang practiced in the Intellectual Property group in the Los Angeles office of Latham & Watkins LLP. He also has experience in product management and software development, leading product and engineering teams in building Internet software technologies.

Mr. Hwang received his J.D. from Harvard Law School, and a B.S. in Computer Science and M.S. in Engineering Management from Stanford University.


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.


Teresa "Terry" Stanek Rea is a partner in the firm's Intellectual Property Group and a director with C&M International, Ltd. (CMI), the international trade and investment consulting firm affiliated with Crowell & Moring. Terry is the former acting and deputy director of the United States Patent and Trademark Office (USPTO), as well as acting and deputy under secretary of commerce for intellectual property. She brings a wealth of domestic and international experience and skills to her practice, both legal and political. Her practice concentrates on working with clients in several key areas, including IP policies and strategies, patent enforcement and post-grant administrative proceedings, trade secrets policy and enforcement, and digital/Internet related copyright issues. Managing Intellectual Property recognized Terry as one of the 50 most influential people in intellectual property. Additionally, Terry has been named among the National Law Journal's 2014 "Intellectual Property Trailblazers & Pioneers," Law360's "2014 Most Influential Women in IP," and the Washington Business Journal's "Legal Champions."

While at the USPTO, Terry led the agency through the implementation of the America Invents Act (AIA). She was actively involved in writing the regulations implementing the new inter partes review, covered business method review, and post-grant review proceedings created by the AIA, and she negotiated numerous IP issues with foreign officials. Terry was the senior official responsible for the administration's formulation and implementation of U.S. intellectual property policies, including patent, trademark, copyright, and trade secret issues.

Terry focuses her practice on U.S. and international IP policy issues and disputes, complex patent litigation and inter partes administrative proceedings, trade secrets protection and enforcement, IP infringement and validity opinions, IP licensing, counseling, and patent portfolio development, management, and monetization. She works with clients in many industries including life sciences, pharmaceuticals, biotechnology, chemicals, medical devices, publishing, healthcare, and others. Terry advises clients on privacy, piracy, trademarks, issues related to generic top-level domains (gTLDs), and trade secrets matters.  

In her role with CMI, Terry advises clients on copyright reform, trade secrets rulemaking, and on the important IP and dispute resolution chapters of trade agreements.

Terry is the former president of the American Intellectual Property Law Association (AIPLA) and the National Inventors Hall of Fame. Prior to establishing her private legal practice, Terry was a patent attorney for a multinational chemical company. She is also a licensed pharmacist. She obtained her J.D. from Wayne State University, and her B.S. from the University of Michigan.


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.


Lisa McFall is Deputy General Counsel, Intellectual Property at Workday, Inc., a leading provider of enterprise cloud applications for finance and human resources.  She has deep expertise in all facets of strategic IP creation, management and risk mitigation, along with patent acquisition, monetization and enforcement strategies. 

Prior to joining Workday, Ms. McFall co-founded and was Managing Director of Ovidian Group, LLC, a first-of-its-kind strategic intellectual property business advisory firm.  Ovidian was acquired by Pendrell Corporation in 2011, and Ms. McFall became VP of IP Operations and Chief Litigation Counsel for Pendrell and its subsidiaries including ContentGuard, Inc.

Prior to Ovidian, Ms. McFall served as Vice President and Associate General Counsel, at Yahoo!, where she was head of IP Litigation and Conflict Management from 2004 to 2009. 

Prior to 2004, Ms. McFall spent 10 years litigating patent, copyright, trademark and trade secret cases at Brown & Bain and Wilson Sonsini Goodrich & Rosati. She has litigated cases in a wide variety of tribunals, including numerous U.S. District Courts, the Federal Circuit and the International Trade Commission, and has also arbitrated matters with the American Arbitration Association and the International Chamber of Commerce.

Ms. McFall received her Juris Doctorate degree with honors from the University of Wisconsin School of Law, where she was Managing Editor of the Law Review and President of the Moot Court Board.  Ms. McFall received her Bachelor of Arts degree in International Relations from Stanford University where she focused on US-Soviet civil/military relations.


Bob Steinberg is a partner in both the Washington, D.C. and Los Angeles offices of Latham & Watkins. Mr. Steinberg is a member of the firm’s Litigation & Trial Department as well as former Global Co-Chair of the Intellectual Property (IP) Practice and current Chair of Latham’s Patent Trial and Appeal Board (PTAB) Practice. The group’s strategic development and unique trial and PTAB capabilities were featured in an article in The Recorder, an ALM publication.

Mr. Steinberg is a founding member of the national PTAB Bar Association and was elected as the first president to the Association (www.PTABBar.org). He is also a registered patent attorney and has served in most of the firm's PTAB proceedings for clients such as AbbVie Biotechnology Ltd., Actifio, NVIDIA, and Qualtrics. 

He has been instrumental in establishing Latham’s PTAB practice. The practice pioneered innovative approaches to the bourgeoning area of PTAB proceedings and has maintained an outstanding success rate in persuading the PTAB to institute our client’s petitions and a more than 96% success rate with final determinations. IAM Patent 1000recognized Mr. Steinberg and noted that he “has had a full schedule of late, given his chairmanship of the post-grant practice; he is supremely on top of things, though, as his high inter partes review institution rate attests.” Mr. Steinberg was part of Latham’s team to successfully obtain final written decision in the PTAB on behalf of Actifio against Delphix, with a sweeping victory, invalidating 109 of 111 challenged claims across five patents; Jaguar Land Rover to defeat Cruise Control Technologies (a shell company of patent troll Empire IP); and Qualtrics to invalidate four of OpinionLab, Inc. patents. Mr. Steinberg also worked with the team that obtained a denial of institution on behalf of AbbVie in Amgen’s IPR petitions filed against AbbVie’s patent covering the blockbuster biosimilar drug Humira.

Mr. Steinberg has continuously been recognized as a leading lawyer by The Legal 500 US and Chambers USA. Most recently he was named a 2017 IP Trailblazer by The National Law Journal, which recognized practitioners who have “shown a deep passion and perseverance in pursuit of their mission, having achieved remarkable results along the way." He was also recognized as one of The Most Influential IP Attorneys in LA for 2017 by The Los Angeles Business Journal which highlighted his “thriving” patent litigation practice and “innovative approaches to the burgeoning area of PTAB proceedings.” He’s been named among the 2012 Who’s Who for Intellectual Property Law by Los Angeles Business Journal and among the top IP litigators in California by The Daily Journal in 2011. Mr. Steinberg was particularly cited for his representation of the Ansel Adams Publishing Rights Trust in a dispute with a defendant who claimed to possess long-lost negatives created by the famous nature photographer — which the Trust maintained were not authentic. He also assisted AMD to secure a US$1.25 billion worldwide settlement in a patent, contract, and antitrust dispute with Intel.

Mr. Steinberg also served on the 2014 Law360 Intellectual Property Editorial Advisory Board. 

Prior to joining Latham, Mr. Steinberg worked as the Chairman and CEO of xSides Corporation, a developer of desktop security software. He also spent 11 years at a California-based law firm where he was partner and member of the Executive Committee.

 


Eldora L. Ellison, Ph.D., is a director in Sterne Kessler’s Biotechnology & Chemical and Trial & Appellate Practice Groups. Over the course of her 24-year career, Eldora has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Her experience includes representing clients in over 60 inter partes review and post-grant review proceedings, more than 15 patent interferences, and in various patent reexaminations and district court litigations. For example, Eldora was lead counsel on behalf of patent owner ImmunoGen in Phigenix v. ImmunoGen, 845 F.3d 1168 (Fed. Cir. 2017), in which the Federal Circuit — for the first time since the Court’s inception — established the legal standard for demonstrating standing in an appeal from a final agency action.  The Court subsequently dismissed Phigenix’s IPR appeal for lack of standing. Eldora’s practice also includes preparing and prosecuting patent applications; evaluating patent portfolios (e.g., for due diligence analyses, invalidity, non-infringement, or freedom-to-operate); counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. She represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations.

Eldora has been recognized as a leading practitioner in the life sciences, and she has served as an expert witness on patent matters. In 2017, LMG Life Sciences named Eldora their "Post Grant Proceedings Attorney of the Year." The National Law Journal recognized her as one of its "Top 50 Litigation Trailblazers. Managing Intellectual Property nominated her for its "PTAB Litigator of the Year" award, and it has named her an "IP Star" in 2017 for the fifth year in a row, while also including her in their "Top 250 Women in IP." LMG Life Sciences nominated her for its "Patent Prosecutor of the Year" award as well as "PTAB Litigator of the Year" in 2016, and it has named her a "Life Sciences Star" three times. In 2016, Profiles in Diversity Journal listed her among "Women Worth Watching." In 2016, IAM Patent 1000 named her as one of the world's leading patent professionals and "highly recommended" for post-grant and procedures and litigation.


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.


Timothy E. Bianchi is a principal of Schwegman Lundberg & Woessner, P.A. He is active in patent procurement, patent challenges, opinions, due diligence, acquisitions, and patent litigation strategy.  Mr. Bianchi represents patent owners and petitioners in inter partes reviews (IPRs) and reexaminations, many of which are involved in concurrent litigation. His background is in medical devices, signal processing, communication electronics, computer hardware, and software.  He has electrical engineering and research experience from employment with IBM, Honeywell, and the University of Minnesota.  Intellectual Asset Magazine has included him in its “IAM Strategy 300” and “IAM 1000” listings of the world's leading patent attorneys, and ranked him as “Highly Recommended.”  Managing Intellectual Property named him “PTAB Litigator of the Year” and an “IP Star.” His blog (www.ReexamLink.com) covers the dynamics and strategies of patent procurement, patent challenges, and patent litigation.


Michael leads the firm's practice involving contested proceedings at the U.S. Patent and Trademark Office. He has extensive experience representing clients before the Patent Trial and Appeal Board (PTAB), including USPTO proceedings under the America Invents Act (AIA). He has served as lead counsel in 100+ Inter partes review (IPR) and Covered Business Method (CBM) review proceedings, patent interferences, reexaminations, and PTAB appeals.


Senior District Judge Ronald M. Whyte

Federal Judicial Service

  • Judge, U. S. District Court, Northern District of California
  • Nominated by George H.W. Bush on July 26, 1991, to a new seat created by 104 Stat. 5089. Confirmed by the Senate on February 6, 1992, and received commission on February 10, 1992. Assumed senior status on March 2, 2009.
Education
  • Wesleyan University, A.B., 1964
  • University of Southern California Law School, J.D., 1967
Professional Career
  • Private practice, Claremont, California, 1967-1968
  • U.S. Navy, JAG Corps, 1968-1971
  • Private practice, San Jose, California, 1971-1989
  • Judge, Santa Clara County Superior Court, 1989-1992