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Fundamentals of Patent Prosecution 2014: A Boot Camp for Claim Drafting & Amendment Writing

Author(s): Richard T. McCaulley, Kevin E. Noonan, Michael A. Molano, Adda C. Gogoris, Wendy A. Choi, Angelo J. Bufalino, Jennifer R. Bush, Louis S. Sorell, Jonathan Berschadsky
Practice Area: Intellectual Property
Published: May 2014
ISBN: 9781402422225
PLI Item #: 51805
CHB Spine #: G1184

Richard T. McCaulley, Jr.
Ropes & Gray LLP

Richard McCaulley is Co-Chair of the firm’s Intellectual Property Litigation practice. He represents companies in complex patent, and antitrust disputes involving a wide range of technologies, including GPS technology, computer security and access protocols, medical devices, chemical products and processes, mechanical and electrical systems, software, polymer phase morphology and polymer film products. Richard's extensive experience includes jury and bench trials in the federal courts. He also lectures law students on patent trial practice.

Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology. He has authored amicus curiae briefs in landmark patent and other cases in U.S. Courts of Appeals and the U.S. Supreme Court.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program "60 Minutes" that addressed the issue of gene patenting.

Louis S. Sorell is Patent Counsel at Google Inc. in New York City.  Prior to joining Google in 2011, Mr. Sorell was in private practice, specializing in patent law.  Mr. Sorell received his B.E. degree in Chemical Engineering from Cooper Union, his M.S. degree in Chemical Engineering from Georgia Institute of Technology, his J.D. degree (cum laude) from Pace University Law School, and his LL.M. in Trade Regulation-Intellectual Property from New York University Law School.

He draws particular praise for his "very thorough and thoughtful work," as well as for his ability to explain complicated technology matters in layman's term. As one client put it, he "knows the technology, knows the law and is very cost-effective."
Chambers USA

Michael Molano is the Intellectual Property practice leader and hiring partner for the Palo Alto office. He has represented some of the leading technology companies in the US, including Marvell Semiconductor, Inc. and Philips Electronics North America. His practice largely focuses on patent litigation in district courts and before the ITC, but he has experience in all areas of litigation, including commercial disputes involving technology.  Mike has served as first-chair trial counsel in both jury and bench trials, as well as in arbitration proceedings.

Chambers USA ranks Mike as a leading lawyer in California in IP, stating that clients describe him as “very thorough and thoughtful.” Chambers also notes that he “knows the law, knows the technology and is very cost-effective.” Mike was also recognized for his work in California in the 2015-17 editions of IAM Patent 1000, which describe him as a "bigwig" in IP and recommend him as “a smart choice for technically complex patent spats.”

An electrical engineer, Mike has drafted and prosecuted patent applications in the semiconductor, software, hardware and other electro-mechanical technologies.  He has also served as IP deal counsel in corporate transactions.

Adda brings to the table 35+ years of experience in IP practice serving the pharmaceutical biotechnology and chemical industries, an international network and name recognition, and a high-energy, creative and practical problem solving approach.

Practice Concentration

One aspect of Adda’s practice is directed to preparing and prosecuting patents, developing patent portfolios, devising, reviewing and managing patent strategies and conducting patent audits.  Another aspect is focused on counseling: rendering exculpatory opinions (including those supporting PIV certifications) and pre-litigation assessments; directing freedom-to-operate investigations and analyses; developing strategy for and managing patent term extensions and Orange Book listings; and advising on Hatch-Waxman and more generally on drug development issues.

Adda has assisted numerous enterprises at home and abroad in conducting and defending due diligence investigations and in achieving resolution of emerging issues.  She negotiates and drafts technology transfer and other IP agreements (e.g., licensing, sponsored research, joint development, employment) and IP-related provisions of corporate transaction documents.

She also has a significant practice advising on contested and other adverse patent matters such as litigations, interferences, inter partes reviews, ex parte reexaminations, oppositions and third-party submissions.

Angelo J. Bufalino has been practicing intellectual property law for over 38 years. He counsels clients in patent, trademark and copyright matters, including intellectual property litigation, transactional issues, licensing matters, and patent validity and infringement studies, and he has extensive, worldwide experience in prosecuting patents and trademarks. He has appeared in U.S. federal district and appellate court litigation relating to products in various industries and technologies, in inter partes proceedings before the U.S. Patent and Trademark Office and in proceedings before the Patent Trial and Appeal Board. He has been involved in approximately 30 patent, trademark and copyright trials. Mr. Bufalino serves a diverse range of clients with an emphasis on electrical and mechanical technology and consumer products.

Mr. Bufalino was selected for inclusion from 2005 to 2006 and from 2008 to 2017 in Illinois Super Lawyers. He was also selected by his peers from 2012 to 2018 for inclusion in The Best Lawyers in America in the fields of Patent Law and Trademark Law. In addition, Mr. Bufalino has been selected by his peers from 2013 to 2018 as a Leading Lawyer in Intellectual Property.

Member, College of Engineering Advisory Council, University of Notre Dame 
Member, American Intellectual Property Lawyers Association
Member, Intellectual Property Lawyers Association of Chicago 
Member, American Bar Association 
Member, Federal Circuit Bar Association 
Member, Chicago Bar Association

Client Services
Intellectual Property
Information Technology & Licensing
Intellectual Property Litigation

Loyola University Chicago School of Law, J.D., 1979
University of Notre Dame, B.S.E.E., 1976

Bar Admissions
Illinois, 1979
U.S. Patent and Trademark Office, 1979

Court Admissions
U.S. District Court, Northern District of Illinois, 1979
U.S. Court of Appeals, Seventh Circuit, 1980 
U.S. Court of Appeals, Federal Circuit, 1982

Wendy A. Choi is a member of the biotechnology, chemical, pharmaceutical, and medical technology practice teams in the firm's Patents Group. Ms. Choi focuses on complex patent prosecution and counseling and on IP strategy. She has more than 20 years of experience representing clients in the chemical, pharmaceutical, nanotechnology, biotechnology, cleantech, and medical device/diagnostic industries, ranging from start-up companies to large corporations in both domestic and international patent matters. She has a particular emphasis in Asia, energy, and biosimilars.

Ms. Choi advises clients on potential patent infringement issues and prepares invalidity and non-infringement opinions. Ms. Choi also represents companies in licensing negotiations, patent reissue, reexamination, and interference proceedings, and analyzes patents in litigation. She manages IP portfolios and the alignment of business strategies and has conducted extensive due diligence for IP transactions, licensing, and litigation support. In addition, she counsels clients on patentability, validity, and freedom-to-operate opinions; inventorship determinations; and trade secret protection.

Before entering the law, Ms. Choi was a research scientist at the Rohm and Haas Company, working in the polymer and plastics divisions.

Mr. Berschadsky’s practice focuses on patent prosecution and litigation, freedom to operate analysis, U.S. and international strategic patent portfolio planning and management, as well as counseling clients on strategic partnerships and technology acquisitions. Having worked in the satellite communications industry on commercial spacecraft, the electronics industry on high-tech audio and electronics, and various Machine Learning applications of Artificial Intelligence qualifies Jonathan to work on all things "technologically complex." He can write about them for any audience: business folk, engineers, PTO examiners, judges and juries. When it comes to drafting patent applications, formulating arguments for high-stakes litigations, and rendering opinions on issues of patent infringement, validity and enforceability, Jonathan never leaves a stone unturned. He combines that with some serious agreement drafting and negotiating skills.

Jonathan is a regular CLE instructor for the Practicing Law Institute (PLI) and in-house counsel. Jonathan also moonlights as a mixed martial artist and on weekends goes mountain bike riding.

Awards and Recognition
Jonathan was the winner of The Burton Awards 2016 Distinguished Legal Writing Award for co-authoring “Is PTAB ‘death squad’ just a myth?” He has also been recognized as an IP Star in the 2013 - 2017 editions of Managing Intellectual Property, selected by Patent Buddy as one of the Top Patent Prosecutors nationally in the Computer, Electrical, Software and Business Methods areas for 2011-2017, recognized in the 2017 edition of IAM Strategy 300 – The World’s Leading IP Strategists, and was listed as a Top New York City Intellectual Property Litigator in the 2014-2017 issues of Super Lawyers: New York Metro Edition.

J.D., Rutgers University School of Law, 2000
M.S.E.E., Boston University, 1993
B.S.E.E., Boston University, 1991

Bar Admissions
State of New York, 2001; State of New Jersey, 2000; U.S. Patent and Trademark Office

Professional Activities
American Bar Association; American Intellectual Property Law Association; New York Intellectual Property Law Association

Jennifer Bush focuses her practice on prosecuting patent applications in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property issues for numerous due diligence and litigation matters.

In addition to providing legal services for her clients, Jennifer is a Lecturer-in-Law at the University of California, Davis School of Law, where she teaches patent prosecution and practice. She is also a member of the faculty at the Practicing Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution bootcamp. She has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law.

During law school, Jennifer was awarded the faculty-selected Mabie Award for Outstanding Graduate, peer-selected Graduating Student of the Year, and served as Editor-in-Chief of the Santa Clara Law Review.

Prior to rejoining Fenwick & West, Jennifer was General Counsel with Apercen Partners LLC, serving as sole counsel for seven entities spanning a breadth of legal issues, including IP, employment, contract, securities, tax and general compliance matters. Before her time with Apercen Partners LLC, she was an associate at Fenwick & West from 2003 to 2011.