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Patent Law Institute 2014 (8th Annual)


Speaker(s): Brian Hanlon, D. Brian Kacedon, Daniel McCurdy, David J. Kappos, David M. Rosenblatt, David M. Shofi, David W. Highet, Dawn Rice Hall, Dean John M. Whealan, Deanne E. Maynard, Donald R. Dunner, Dorothy R. Auth, Ph.D., Douglas B. Luftman, Douglas R. Nemec, Edward L. Tulin, Eugene R. Quinn, Jr., Gerald M. Murphy, Jr., Hon. Elizabeth D. Laporte, Hon. Faith S. Hochberg, Hon. Patti B. Saris, Jason R. Kraus, John M. White, Kathlyn Card Beckles, Kevin Jakel, L. Scott Oliver, Michael A. Minter, Michelle K. Holoubek, Michelle Waites, Neer Gupta, P. Anthony Sammi, Philip W. Marsh, Richard Ludwin, Robert J. Spar, Robert Neuner, Scott M. Alter, Stephen G. Kunin, Suzanne Drennon Munck, Valerie Calloway
Recorded on: Feb. 3, 2014
PLI Program #: 51969

David Rosenblatt has been an IP attorney for over 20 years, handling all facets of IP including litigation, licensing, preparation and prosecution, IP issues associated with mergers, acquisitions and divestitures, and related antitrust issues. Currently, David is the Assistant General Counsel - Intellectual Property for Thomson Reuters where he has numerous responsibilities including managing Thomson Reuters' worldwide patent preparation and prosecution. 


Richard M. Ludwin is Associate General Counsel, Intellectual Property Law. Based in Armonk, New York. Mr. Ludwin directs IBM's worldwide intellectual property licensing attorney staff and provides executive guidance for IBM's Intellectual Property Law departments in Systems and Technology Group, Global Services and Sales & Distribution. Since joining IBM in 1988 Mr. Ludwin has served as an attorney in Washington DC, Poughkeepsie and IBM Research. He has also served as an IBM Patent Portfolio Manager, IP Counsel for IBM's Almaden Research center, Counsel for the IBM Corporate Intellectual Property Department and senior IP Counsel for the IBM Research Division. He is registered to practice before the United States Patent & Trademark Office and admitted to the bars of New York, New Jersey, Florida and the District of Columbia.


Douglas Nemec is a partner at Skadden, resident in the firm's New York Office.  He has litigated numerous intellectual property cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in proceedings before the Patent Trial and Appeal Board and other matters.


Douglas Luftman serves as Vice President of Innovation Services and Chief Intellectual Property Counsel for NetApp, Inc., a Fortune 500 company, where he is responsible for the company’s worldwide intellectual property strategy.  NetApp's innovation and intellectual property program has been nationally recognized including by Fortune as one of the Fastest-Growing Companies in California and Nationwide; Forbes as one of the World’s Most Innovative Companies; the Intellectual Property Owners Association as one of the top 300 patent holders and IEEE Spectrum as having one of the highest quality patent portfolios in the computer peripherals and storage industry.  

Prior to joining NetApp, Mr. Luftman’s roles have included Vice President & Chief Patent Counsel for CBS; Chief Intellectual Property Counsel, Palm, Inc.; Vice President, General Counsel and Secretary of Caspian Networks; West Coast Counsel of CIENA Corporation; and Senior Intellectual Property Group Counsel for Intel’s Communications Group.  Prior to working in-house, Mr. Luftman was an attorney at Fenwick & West LLP, Silicon Valley Office.  He also externed for The Honorable Randall R Rader of the United States Court of Appeals for the Federal Circuit.  

Based on his accomplishments, Mr. Luftman has had the honor of being recognized by such organizations as the Silicon Valley/San Jose Business Journal and the San Francisco Business Times as a Best Bay Area Corporate Counsel - IP Lawyer, Finalist, by the International Law Office as an ILO Global Counsel Awards Finalist and by Law360 as one of the Most Innovative Corporate Counsel.

Mr. Luftman earned his J.D. with honors from The George Washington University School of Law in Washington, DC and his B.S. in Electrical Engineering from UCLA in Los Angeles, CA.  


Deanne E. Maynard, chair of the Appellate and Supreme Court practice group, is a partner in the Washington, D.C. office, and a former Assistant to the Solicitor General at the United States Department of Justice.

Ms. Maynard has argued and briefed significant cases in the Supreme Court of the United States and the federal courts of appeals. She has argued over ten patent appeals in the Federal Circuit in the last several years, and currently is handling multiple patent appeals in that court. She recently led a Morrison & Foerster appeals team that obtained a significant victory for our client IGT against Bally Technologies, and another team that obtained a reversal of non-infringement findings against our client Toshiba. Ms. Maynard also successfully obtained a writ of mandamus in Link_a_Media ordering transfer of a patent case from Delaware to California, in what may be the first such writ issued to a Delaware district court.

In addition to her substantial Federal Circuit experience, Ms. Maynard has argued 13 cases before the Supreme Court of the United States, and she has filed over 100 briefs in that Court. Her Supreme Court arguments include the patent case MedImmune, Inc. v. Genentech, Inc. She also was a principal author of the briefs for the United States at the cert stage in Bilski v. Doll and at the cert and merits stages in Quanta Computer, Inc. v. LG Electronics, Inc. Just last Term she argued and prevailed for the respondent in RadLAX Gateway Hotel, LLC v. Amalgamated Bank, an important bankruptcy case involving the rights of secured creditors. The previous Term, she argued and prevailed in Ransom v. FIA Card Services, a case involving the interpretation of the federal bankruptcy statute.

Ms. Maynard served in the Solicitor General's office at the U.S. Department of Justice from 2004-2009. Before joining the Solicitor General's office, Ms. Maynard was a partner at Jenner & Block in Washington, D.C.

After law school, Ms. Maynard clerked twice on the Supreme Court of the United States. During the October 1994 Term, she clerked for Justice Stephen Breyer in his first year on the Court. During the 1993 Term, she clerked for retired Supreme Court Justice Lewis Powell and affiliated with Justice John Paul Stevens. From 1991-1993, Ms. Maynard clerked for Judge Stanley Harris of the U.S. District Court for the District of Columbia.

Ms. Maynard graduated magna cum laude in 1991 from Harvard Law School, where she was an editor of the Harvard Law Review. She earned a B.A., with distinction, in English from the University of Virginia, where she was Phi Beta Kappa and Omicron Delta Kappa.

Listed in Best Lawyers in America 2013, Chambers USA 2012, and Legal 500 US 2012.


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. 


Kathlyn Card Beckles is the Managing Director and Assistant General Counsel for Intellectual Property and Technology law at JPMorgan Chase. She manages the Patent and Trademark Law group. She is a registered patent attorney responsible for patents, trademarks, copyright, trade secrets as they relate to JPMorgan, including the areas of litigations, mergers and legislation. Her prior legal experience includes the law firm of Kenyon & Kenyon, the U.S. Patent and Trademark Office, and the Chambers of the Hon. Edward Damich of the Court of Federal Claims. Before her legal career, she held positions in analytical chemistry and process engineering. She has a law degree from The George Washington University and a Chemical Engineering Degree from the University of Delaware.  

 


Neer Gupta is an intellectual property attorney with over 20 years of experience in the areas of patent licensing, litigation, and strategy.  Neer joined Verizon Communications in 2008 and is currently Associate General Counsel, Intellectual Property.  In this role, Neer is responsible for a variety of transactional matters involving the company’s intellectual property, and is the President of the company’s patent licensing entity.  His areas of responsibility include intellectual property issues as they relate to mergers and acquisitions, licensing, patent purchases and sales, customer and vendor contracts, participation in standards bodies, open source software, and other strategic activities of Verizon and its affiliates.

Prior to joining Verizon, Neer was Executive Counsel for The Walt Disney Company in Burbank, CA, where he was responsible for establishing a comprehensive patent strategy, as well as handling patent litigation and patent licensing matters.  Prior to Disney, Neer provided intellectual property advisory services to Fortune 500 companies while at ThinkFire Services, and was a litigation associate at Pennie & Edmonds and Clifford Chance Rogers & Wells, both in New York City.

Neer received his Bachelor of Engineering degree, magna cum laude, in Electrical Engineering and Math from Vanderbilt University, and his law degree from New York University.


David Highet currently serves as Vice President and Chief Intellectual Property Counsel.  David has been in this role since 2002 and is responsible for the Company’s global intellectual property strategy including freedom to operate, patent procurement and portfolio management, and enforcement.  David joined BD in 1993 and has held progressively responsible positions in the Intellectual Property Department of the Law Group.  David holds a BS degree in Pharmacy from the University of Connecticut and a JD degree from the University of New Hampshire School of Law.


David Shofi is an attorney and IP strategist with over 20 years of experience in many aspects of technology, innovation and intellectual property.  He is presently Chief Legal Officer for Univercells, a biotech company in Belgium. Prior to taking on this role, David managed his own firm, Shofi Law.  Before this, he was Vice President, IP Strategy Solutions and Chief IP Counsel for CPA Global where he helped clients assess and identify opportunities for improvement and efficiency implementation in their IP lifecycle processes.  Before joining CPA Global, David held the role of Chief Intellectual Property Counsel for ATMI, an international semiconductor and lifesciences corporation.  As Chief IP Counsel, he managed all aspects of IP generation, protection, management and enforcement.  Prior to joining ATMI, David served as IP Counsel for IBM Corporation.  In addition to extensive patent work, he led early development of processes and education relating to standards, open source software and IP due diligence. Prior to IBM, he was an associate at the firm of Baker Botts.  David has broad experience in IP and general corporate law including patent, trademark, copyright, trade secrets, IP and technology licensing and transactions, due diligence, IP Strategy, portfolio development/management and monetization. Throughout his career, he has practiced in the prosecution, transactional and litigation areas and has managed various teams of professionals. David earned his law degree from Pace University School of Law and a Bachelor of Science in Electrical Engineering from Columbia 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”).


Dr. Dorothy Auth has more than 20 years of experience in complex patent litigation, as well as licensing, patent procurement, and intellectual property counseling in the United States and abroad. Her experience spans diverse industries, including biotechnology, pharmaceutical, and medical devices, as well as consumer products, computers, and other mechanical devices.

She addresses intellectual property diligence issues surrounding mergers, acquisitions, and bankruptcies. Representative clients in transactional IP matters includes the U.S. Treasury; Salix Pharmaceuticals, Ltd.; Pfizer; Elan Pharmaceutical; Healthcare Royalty Partners; Fountanbleu Hotel; Quart Rx Pharma; iShares; Towers Watson; Hess and Triarco. In the transactional area, Dorothy advises clients on the validity of target patents and performs clearance analysis on the patents of competitors to render freedom-to-operate opinions.

Dorothy also litigates in U.S. Federal Courts and in international arbitrations conducted under the WIPO rules. She conducts all aspects of litigation, including motion practice, expert preparation and all aspects of discovery practice. Representative litigation clients include Medinol, DuPont, Osteonics and Kanzaki.

Dorothy also coordinates global patent procurement and enforcement strategies for her clients to maximize their patent-protected field. In this area, Dorothy’s practice includes U.S. and international client counseling and opinions regarding IP matters. Her international experience includes coordinating patent infringement trials and hearings between the U.S. and different European jurisdictions including trials seeking preliminary relief and cross-border injunctions, as well as nullity, cancellation and oppositions proceedings on patent rights.

Among the clients Dorothy has counseled are Credit Suisse, Rhone-Poulenc Rohrer, Inc., BioRest Ltd., Oscillon Ltd., Digene Corporation, Hoffmann-La Roche, and the National Institutes of Health.

At the firm, Dorothy is a member of the Technology Committee, the Healthcare Industry Team and the Advisory Counsel for the firm’s Center for Career Advancement. Dorothy was the Partner Chair of the Women’s Leadership Initiative for over five years.


Ed Tulin is an associate in Skadden's Intellectual Property Litigation group in New York.  Mr. Tulin is a 2006 graduate of the University of Texas School of Law, and a former law clerk for the Honorable Christopher J. Burke, of the U.S. District Court for the District of Delaware.

Mr. Tulin's practice is focused on complex litigation and arbitration involving patents, copyrights, trade secrets, and other intellectual property and technology matters.  Mr. Tulin regularly supports Skadden's transactional practice with counseling on licensing and corporate diligence matters.  Mr. Tulin is also admitted to practice before the U.S. Patent & Trademark Office, where he has been involved in patent prosecution, reexamination, interference, and inter partes review proceedings.

Mr. Tulin is also a member of the New York Intellectual Property Association's Patent Litigation Committee, and has authored numerous publications discussing legal developments in the field of intellectual property litigation.  He is a frequent speaker at the Practicing Law Institute and the New York Intellectual Property Association.  In addition, Mr. Tulin serves as a member of the Associate Council of the New York Civil Liberties Union.

Aside from Mr. Tulin's IP experience, he has an extensive pro bono practice, which has included representation of clients seeking asylum and clients seeking Social Security disability benefits.  Mr. Tulin has also assisted with multiple matters for the Innocence Project, which has involved filing amicus briefs, habeas petitions, and the successful vacatur of a wrongful murder conviction.


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.


Gerald Murphy has practiced in the intellectual property field for over 40 years, mostly in relation to U.S. and foreign patents for biotechnology, biopharmaceuticals, therapeutic antibodies, organic chemistry, chemical engineering, biochemistry and pharmaceutical inventions.  He works mostly with medium to large internal corporations.  In addition to preparation and prosecution of patent applications and related appeals, Mr. Murphy has handled patent reexaminations and has been lead counsel in a numerous inter partes matters at the USPTO such as interferences and Inter Partes Reviews.  He has also been lead counsel in several appeals to the Court of Appeals for the Federal Circuit.

In addition to handling matters at the USPTO, Mr. Murphy counsels clients in various IP matters such as patent validity and infringement.  He has lectured extensively before U.S. and international audiences on U.S. patent law and case law developments. He served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in patent infringement litigations and in an arbitration involving a patent license agreement.

Mr. Murphy chairs BSKB's annual Post Grant Bootcamp, an intensive 4 day program on procedures that are available to correct, defend and challenge patents at the USPTO and before the Patent Trial and Appeal Board.

Mr. Murphy graduated from University of Maryland in 1976.  After taking off several years after graduation, he then attended George Mason University School of Law for his J.D. and then attended George Washington University National Law Center where he attained his LL.M.


Jason Kraus is a partner in the intellectual property group and co-leader of the firm's life sciences industry team. Jason's practice focuses on patent portfolio management, U.S. and international patent preparation and prosecution, conducting product clearance studies, preparing non-infringement and invalidity opinions, and patent litigation. He has prepared and prosecuted applications in the mechanical, electrical, and business method arts. Jason has extensive experience working closely with clients to evaluate competitive patent landscapes and to develop a patent strategy that provides a competitive advantage with respect to key products and services.

Jason has worked with clients in the fields of:

  • Cardiac rhythm management technologies
  • Interventional cardiology
  • Orthopedic implants
  • Prosthetic annuloplasty rings and heart valves
  • Renal care
  • Surgical devices
  • Surgical urology Jason's representative clients include:
  • 3M
  • Boston Scientific Corp.
  • Coloplast
  • Sorin Group
  • Stratasys

Jason is also an adjunct professor at the University of St. Thomas, where he teaches an intellectual property class for the Mini-MBA in Medical Technology Management program.

Honors

  • Managing IP — IP Star, 2013
  • Minnesota Super Lawyers — Rising Star, Intellectual Property, 2009

Professional Associations
Minnesota Intellectual Property Law Association

Presentations

  • Intellectual Property Series: A House Divided – The Latest Developments in Joint/Divided Infringement, MN CLE Webcast, December 2010
  • KSR Three Years Later: A Review of Obviousness Case Law Since KSR, MN CLE Webcast, June 2010
  • KSR: Two Years Later, MN CLE Webcast, May 2009
  • Opinions and Product Clearance Strategies for In-House Counsel, MN CLE Webcast, August 2008
  • KSR: One Year Later, MN CLE Webcast, April 2008

Services

  • Corporate - Emerging Companies & Venture Capital
  • Intellectual Property - Patent Prosecution
  • Litigation & Advocacy

Industries

  • Food & Agriculture
  • Life Sciences - Medical Devices, Medical Technology Education University of Minnesota J.D., cum laude, Law Review (1997) University of Minnesota B.S. Mechanical Engineering, with distinction (1994)

Bar Admissions - Minnesota

Court Admissions

  • U.S. Court of Appeals for the Eighth Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Minnesota
  • U.S. Patent and Trademark Office (USPTO)


Michael Minter is an Assistant General Counsel, Intellectual Property at Lockheed Martin Corporation - Rotary and Mission Systems.  He specializes in intellectual property law, with a focus on patent, trademark and copyright matters.  Michael is responsible for counseling clients on a wide range of issues, including patents, trademarks, copyrights, trade secrets, commercial and government transactions, and other issues related to Lockheed businesses.  Michael manages Lockheed’s intellectual property portfolio pertaining to its radar systems, advanced manufacturing, and data analytics business.  He counsels clients on various domestic and international patent, trademark, licensing and Internet issues, including selection, clearance, use, licensing and enforcement of Lockheed trademarks.  Michael also advises clients on intellectual property matters in connection with due diligence reviews of intellectual property portfolios in support of business transactions.  He has experience in drafting and negotiating various agreements and licenses, including, government contracts, business agreements pertaining to trademarks, copyrights and software, non-disclosure agreements, vendor agreements, sales agreement, and patent and technology licensing agreements.

Prior to joining Lockheed in 2012, Michael worked as an associate in the Northern Virginia Office of Miles & Stockbridge PC.  Michael is admitted to practice in the District of Columbia and Virginia, is certified as Authorized House Counsel in Connecticut, and is a Registered Patent Attorney with the United States Patent and Trademark Office.


Michelle Waites is Senior Patent Counsel for Xerox Corporation, actively involved in enforcing and obtaining the company's patent and other intellectual property rights. Her primary responsibility is patent litigation, and typically includes reviewing pleadings and motions, leading internal fact investigations, managing outside counsel, preparing for and attending court hearings, participating in settlement and case strategy discussions and drafting and negotiating settlement agreements. Her practice also includes reviewing technology transfer agreements, supporting product design and development programs and working with business and technical staff to develop and implement effective legal strategies. She is a registered patent attorney and has extensive experience preparing and prosecuting patent applications.

Ms. Waites has maintained her own law practice, has been associated with law firms in New York City and spent several years as an engineer in the aerospace/military defense industry.

She received a Juris Doctor degree from the University of California at Berkeley and a Bachelor of Science in Mechanical Engineering from Syracuse University. She is admitted to the Bar in California and New York and is registered to practice before the US Patent and Trademark Office. Ms. Waites is a member of the American Bar Association, Lambda Legal and the National LGBT Bar Association.


P. Anthony Sammi
Patent and Other Complex Intellectual Property Litigation

P. Anthony Sammi concentrates his practice on litigating intellectual property cases, particularly high-technology patent and trade secret cases, at the trial level.

With a background in electrical engineering and physics, Mr. Sammi has litigated a broad range of matters involving software, hardware, business method and e-commerce patents and trade secrets, as well as computer source code copyrights. His practice also includes counseling both U.S. and multinational clients on evaluating, licensing and protecting intellectual property portfolios.

Representative technologies that Mr. Sammi has litigated include: digital electronics and hardware; computer software and source code (HLASM, C++); mobile telephone and VoIP technology; blood centrifuge devices; satellite on-board computer stability systems; medical implant devices; sporting equipment; pharmaceuticals; cosmetics; MPEG video technology; Ethernet connectivity hardware; and digital imaging and storage systems in the financial industry.

He is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Selected engagements include:

  • lead trial counsel on technology claims in a U.S. District Court, Southern District of Texas, trade secret misappropriation and copyright infringement jury trial representing plaintiff, a leading software technology company; obtained a jury verdict, multimillion-dollar damages award, and permanent injunction for infringement and misappropriation;
  • lead trial counsel in a U.S. District Court, Eastern District of Texas, patent infringement jury trial representing defendant, one of the largest national archives of check images and electronic content for multi-bank infrastructure solutions; lead counsel in successfully defending against a preliminary injunction sought by the plaintiffs in a U.S. District Court, Eastern District of New York, copyright infringement and trade secret misappropriation action representing a leading global software development firm;
  • trial counsel in a U.S. District Court, District of Arizona, patent infringement trial representing defendant, a leading sports equipment manufacturer, in which judgments of non-infringement and patent claim invalidity due to obviousness were obtained;
  • arguing before the U.S. Court of Appeals for the Federal Circuit representing the defendant-appellee, a leading sports equipment manufacturer, in the plaintiff’s appeal of district court post-trial judgment of invalidity and non-infringement; District Court judgments in favor of client were affirmed;
  • representing a world-leading satellite manufacturer in defending against claims of patent infringement involving complex satellite guidance, stability, and station-keeping circuitry and control systems;
  • leading the patent aspects of a multibillion-dollar acquisition of a social networking and VoIP service provider company; and leading the patent aspects of a multibillion-dollar merger and settlement relating to mobile device manufacturers.
  • Representative clients have included: JPMorgan Chase & Co.; Bank One Corporation; Lockheed Martin Corporation; Motorola, Inc.; Virgin Mobile USA, LLC; Rocket Software, Inc.; AstraZeneca PLC; Benetton Sportsystem USA, Inc.; Compaq Computer Corporation; Viewpointe Archive Services L.L.C.; Trish McEvoy, Inc.; Infra+ S.A.; and Aspen Technology, Inc.

Presentations

  • Speaker, “US Round Table: Best Practices Post AIA,” MIP Global IP & Innovation Summit, September 4-5, 2013, Shanghai
  • Presenter, “Litigating Against Non-Practicing Entities,” Sixth Annual Patent Law Institute, February 16, 2012
  • Member, Steering Committee; Speaker, "Building Client Relationships," The New Partner Forum, The American Lawyer, New York City, October 11-12, 2011
  • Presenter, "The Role of the Specification in Claim Construction: Is It a Guidepost or a Fence?" BNA webinar, June 15, 2011
  • TV Interview, “How ‘Gesture Technology’ Like Microsoft Kinect Will Change the Way We Live,” PBS’ Need to Know, April 8, 2011
  • Presenter, “Litigating With An Eye Toward Trial,” Fifth Annual Patent Law Institute, February/March 2011
  • Presenter, “Reexamination: Be Careful What You Wish For,” AIPLA 2011 Mid-Winter Institute, February 2011
  • Speaker, “Strategic Xenophobia: Fighting Litigation Techniques that Vilify Origin and Ethnicity,” 2010 National South Asian Bar Association Annual Convention, June 26, 2010
  • Panelist, Morning Plenary Session, 2010 Asia Society Diversity Leadership Forum, May 17, 2010

Bar Admissions
New York
U.S. Court of Appeals for the Federal Circuit
U.S. District Courts for the Southern and Eastern Districts of New York

Education

J.D., Cornell Law School, 1998
B.S., Electrical Engineering, University of Maryland, 1995

Associations
Member, American Intellectual Property Law Association
Member, New York Intellectual Property Law Association
Past President and Director, South Asian Bar Association of New York
Past Director, National South Asian Bar Association

Authorships

Co-Author “Good Clean Fun: Using Clean Room Procedures in Intellectual Property
Litigation,” Intellectual Property and Technology Journal, October 2013 (Vol. 25, No.
10)
“Trade Secrets,” (Chapter 15) New York Business Litigation, New York Law Journal, 2013

Languages

Hindi
Punjabi

Related Practices

  • Intellectual Property and Technology
  • Litigation
  • Patent and Other Complex Intellectual Property Litigation


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.


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.


STEPHEN G. KUNIN is the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office.  He has more than 48 years of expertise in intellectual property rights protection and 27 years of organizational management and leadership experience.  He was appointed to his former position in March 2000 and has served in a similar capacity since November 1994, under the position's prior title, "Deputy Assistant Commissioner for Patent Policy and Projects."  Previously, beginning in July 1989, Mr. Kunin served as Deputy Assistant Commissioner for Patents.  He participated in the establishment of patent policy for the various Patent Organizations under the Commissioner for Patents, including changes in patent practice, revision of rules of practice and procedures, establishment of examining priorities and classification of technological arts, and oversaw the operations of the Office of Patent Legal Administration, Patent Cooperation Treaty Legal Administration, and the Office of Petitions.  Additionally, in January 1993, Mr. Kunin was designated by the Secretary of Commerce to perform the functions of the Assistant Commissioner for Patents on an acting basis until a new Assistant Commissioner for Patents was appointed in 1994.

Mr. Kunin joined the Patent and Trademark Office (PTO) as a patent examiner in June of 1970. In March of 1977, he became a Senior Examiner in a technology of master's level complexity.  He became Director of the Manufacturing Group in May of 1983.  When a new Electrical Communications examining group (Group 260) was formed in April of 1984, he became its first Group Director.

Mr. Kunin assumed many leadership roles for the Office, including chairing the Patent Examiner Evaluation Board and the Patent Academy Curriculum Committee.  Among his responsibilities, in addition to overseeing the Patent Examination Policy activities, he served on the USPTO Management Council, the USPTO Committee on Discipline, and the USPTO Executive Committee.  He also coordinated several of the Trilateral Projects under the jurisdiction of the Commissioner for Patents.  He has been a guest lecturer at a number of prestigious law schools.

Mr. Kunin, as a Partner, serves as a patent consultant who advises clients on patent prosecution and patent post-grant matters, such as inter alia, subject matter eligibility, utility, restriction practice, inventorship, double patenting, petitions, declarations, reissue, reexamination and AIA trials as well as U.S. Patent & Trademark Office policy, practice and procedures matters.  He also serves as an expert witness on patent law, policy, practice and procedure.  Mr. Kunin also served from 2005-2017 as the Intellectual Property L.L.M. and J.D. Programs Director at the Antonin Scalia School of Law at George Mason University where he was an adjunct professor who taught patent law and intellectual property law classes.   He is frequently sought out to lecture to external groups on USPTO administrative trials and USPTO patent prosecution practice.



The Honorable Faith S. Hochberg is a nationally recognized U.S. Federal Judge and former United States Attorney known for her broad expertise in complex corporate, securities, antitrust and patent litigation. She retired from the bench in 2015 and founded Hochberg ADR, which provides mediation, arbitration and strategic advisory services. She is also a distinguished neutral on the rosters of AAA, ICDR, Federal Arbitration, CPR, WIPO, ITC and ICC. Additional information is available on the website, www.JudgeHochberg.com.

Judge Hochberg was twice nominated by the President, and confirmed by the Senate, first as United States Attorney and thereafter a United States District Judge. She has presided over thousands of federal cases: class actions; Securities; Banking; Patent, Copyright & Trademark; Pharmaceuticals, Antitrust; Insurance; Federal Arbitration Act; and Corporate Contract and Partnership matters. Judge Hochberg has exceptional expertise in patent cases, as well as nationwide cases where she was appointed by the Judicial Panel on Multi District Litigation. She has been invited to speak nationwide and abroad about U.S. litigation.

Judge Hochberg has presided by designation with the Federal Circuit Court of Appeals and has served as a Patent Pilot judge. She was honored as the first Fellow of the Innovation Center for Law and Technology at New York Law School in recognition of her contribution to the advancement of intellectual property law. She also serves on its Advisory Board, together with entrepreneurs and business leaders.

Judge Hochberg previously served as the United States Attorney for the District of New Jersey, and Deputy Assistant Secretary of the United States Treasury Department, as well as in the private practice of law.

Judge Hochberg graduated from Harvard Law School, magna cum laude, where she was an Editor of the Harvard Law Review, and a B.A., summa cum laude, from Tufts University. She was elected to Phi Beta Kappa. She also attended the London School of Economics.


Mr. McCurdy has more than twenty years of experience in intellectual property positions at highly regarded technology companies including ThinkFire, Lucent Technologies and IBM. Mr. McCurdy received his B.A. summa cum laude from the University of North Carolina. He also serves as CEO of PatentFreedom, an online community providing companies comprehensive information and networking capabilities to better manage patent assertions from Non-Practicing Entities.


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.


Senior Counsel Robert Neuner has had a distinguished career as a patent trial lawyer. He is also a featured lecturer on litigation for the annual Patent Law Institute program, lecturer on the trial and appeal of intellectual property cases, and a long-time columnist on patent and trademark law for the New York Law Journal. He is listed in the Chambers USA Guide, America’s Leading Business Lawyers since 2003, Chambers Global The World’s Leading Lawyers since 2004, and The Best Lawyers in America, 2006-2009. In addition, Mr. Neuner was named a “New York Super Lawyer” in New York Super Lawyers, Manhattan Edition, a special supplement in the New York Times by Law and Politics, 2006-2009.

Practice Expertise
Extensive experience and success in the pretrial, trail, and appeal of patent, copyright, trademark, and trade dress cases. Additional expertise as a special master in patent cases, including discovery, settlement oversight, claim construction, and summary judgment.

Bar Admission

  • State of New York
  • United States Districts Courts for the Northern, Southern, and Eastern
  • Districts of New York
  • United States Court of Appeals for the First, Second, Third, Fourth, Seventh,
  • Ninth, and Federal Circuits
  • Supreme Court of the United States
  • Registered to practice before the United States Patent and Trademark Office

Education

  • J.D., Fordham University School of Law, 1965
  • B.S., Electrical Engineering, Manhattan College, 1960

Memberships

  • New York Intellectual Property Law Association, President, 2001-2002


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.


When handling patent, copyright, trademark and trade secret matters, first-chair litigator Scott Oliver blends creative legal strategies with elegant explanations of technology. By distilling complex information to the key elements, he can craft a story that compels ITC judges and layperson juries alike. Scott has handled more than 150 matters and a dozen trials. Depending on each client’s unique business objectives, Scott’s strategy may include quickly reaching a favorable settlement or winning at trial.

Since teaching himself assembly language as a child, Scott has been fascinated with technology. Now as an extremely technically proficient litigator, Scott has more than two decades of experience defending companies such as Accenture, Brocade Communications, Aruba Networks and others in district courts and the ITC. 

In addition to his litigation work, he provides intellectual property counseling. Scott advises clients on how to strategically grow and manage their intellectual property portfolios, guides young companies through the stages on patent strategy, and consults for handset manufacturers and patent pools on the licensing of 802.11, 3G and LTE patents.

Scott is the former Chair of the ITC Committee of the American Intellectual Property Law Association, an outgoing member of Amicus and Ethics Committees and a frequent speaker on patent, damages, and ITC issues.

Practice Areas
- Patents
- Trade Secrets Litigation
- Copyright, Trademark & False Advertising
- Intellectual Property

Honors
- Wiley W. Manuel Award for Pro Bono Legal Services from The Board of Governors of the State Bar of California
- Named a 2013 “California Future Star” by Benchmark Litigation

Education
- A.B., Harvard University, 1990, cum laude
- J.D., University of San Diego School of Law, 1994, magna cum laude; Lead Articles Editor, Law Review; Order of the Coif


Valerie L. Calloway is Intellectual Property Counsel for IBM, where she is responsible for various intellectual property matters for several offerings. Prior to joining IBM, Ms. Calloway served as Chief Intellectual Property Counsel for two companies, where she worked at each to maintain, enforce, and continue developing global intellectual property portfolios. During her more than 20 years of practice in the intellectual property profession, Ms. Calloway has worked as both in-house and outside counsel for several Fortune 1000 firms. Prior to attending Law School, Ms. Calloway was employed in manufacturing management.

Ms. Calloway is a member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) and a life member of the National Bar Association. Ms. Calloway earned her M.B.A. from the University of Chicago, her J.D., cum laude, from the University of Minnesota, and her B.S. in Chemical Engineering from the University of Virginia. She is admitted to practice law in Ohio, New York (In-House Counsel), and before the U.S. Patent and Trademark Office.


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.


David J. Kappos is a partner at Cravath. He is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws and practices as well as commercialization and enforcement of innovation-based assets. Mr. Kappos supports the Firm’s clients with a wide range of their most complex intellectual property issues.

From August 2009 to January 2013, Mr. Kappos served as Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO). In that role, he advised the President, Secretary of Commerce and the Administration on intellectual property policy matters. As Director of the USPTO, he led the Agency in dramatically reengineering its entire management and operational systems as well as its engagement with the global innovation community. He was instrumental in achieving the greatest legislative reform of the U.S. patent system in generations through passage and implementation of the Leahy-Smith America Invents Act, signed into law by the President in September 2011.

Prior to leading the USPTO, Mr. Kappos held several executive posts in the legal department of IBM, the world’s largest patent holder. From 2003 to 2009, he served as the company’s Vice President and Assistant General Counsel for Intellectual Property. In that capacity, he managed global intellectual property activities for IBM, including all aspects of patent, trademark, copyright and trade secret protection. Mr. Kappos joined IBM as a development engineer. During his more than 25 years at IBM, he served in a variety of roles including litigation counsel and Asia Pacific IP counsel, based in Tokyo, Japan, where he led all aspects of intellectual property protection, including licensing, transactions support and mergers and acquisitions activity for the Asia/Pacific region.

Mr. Kappos has received numerous accolades for his contributions to the field of intellectual property, including, among others, the 2013 Champion of Intellectual Property Award from the District of Columbia Bar Association and the 2013 North America Government Leadership Award from Semiconductor Equipment and Materials International (SEMI). He was named one of the 50 Most Influential People in Intellectual Property by Managing IP,one of the 100 Most Influential Lawyers in America by The National Law Journal, and Intellectual Property Professional of the Year by the Intellectual Property Owners Association. Mr. Kappos was inducted into the Intellectual Property Hall of Fame by Intellectual Asset Management Magazine and recommended in the 2013 edition of The Legal 500 in the Technology: Transactional category. He is also a frequent speaker and has authored many published articles on various intellectual property, innovation and leadership topics.

Mr. Kappos serves on the Boards of Directors of the Partnership for Public Service, the Center for Global Enterprise, and the Intellectual Property Owners Educational Foundation.

Mr. Kappos was born in Palos Verdes, California. He received a B.S. summa cum laude in Electrical and Computer Engineering from the University of California, Davis, in 1983, and a J.D. from the University of California, Berkeley, in 1990.


ELIZABETH D. LAPORTE is a United States Magistrate Judge for the Northern District of California. Appointed on April 4, 1998, Judge Laporte presides over numerous civil cases randomly assigned to her with the parties' consent, including patent, trademark, copyright and other business litigation, employment, civil rights and environmental cases. She also presides over criminal matters, conducts settlement conferences, and resolves discovery disputes.

Judge Laporte is the author of Managing the Runaway Patent Case, an article published in the Summer 2003 issue of the Northern California ABTL [Association of Business Trial Lawyers] Report, and Getting the Most Out of Judicial Settlement Conferences, published in the Winter 2006 issue. She also served as a judicial reviewer to the Continuing Education of the Bar's (CEB's) California Civil Discovery Practice, and authored an article on the 2006 e-discovery amendments to the Federal Rules of Civil Procedure for CEB's Civil Litigation Reporter.

Judge Laporte is a member of the Board of Governors for the Northern California Chapter of the Association of Business Trial Lawyers and the Executive Committee of the Litigation Section of the Bar Association of San Francisco. She is also a judicial observer for the Sedona Conference Working Group on Electronic Document Retention and Production and a former member of the Federal Circuit's Bench Bar E-Discovery Committee. Judge Laporte has recently been appointed the Alternative Dispute Resolution Magistrate Judge for the Northern District of California, previously served as the Chair of the Executive Board of the Ninth Circuit Magistrate Judges, and was a member of the Jury Trial Improvement Committee of the Ninth Circuit Court of Appeals.

Prior to her appointment, Judge Laporte served as Chief of Special Litigation for the San Francisco City Attorney's Office (1996-98); Administrative Law Judge for the California Department of Insurance (1991-96); Partner, and previously associate, at Turner & Brorby (1983-91); and Law Clerk to the Honorable Marilyn Hall Patel, Northern District of California (1982-83). Prior to attending law school, she was a policy planner/economist at the Federal Trade Commission from 1977-1979.

Judge Laporte is a graduate of Princeton University, class of 1975, and holds a masters degree from Oxford University (as a Marshall Scholar from 1975-77), and a J.D. from Yale Law School, Class of 1982. Judge Laporte was named a Lawyer of the Year by California Lawyer in 1996.


Michelle K. Holoubek is a director in Sterne Kessler's Electronics Practice Group. With a background in relativistic physics, she specializes in software, digital healthcare, bioinformatics, and optical technologies. Having handled hundreds of software and business method applications at the PTO, patent-eligible subject matter (aka "101") is her special area of expertise. In addition to the preparation and prosecution of patents to develop portfolios for startups and Fortune 100 companies alike, she has been lead counsel in IPRs, CBMs, and reexams for both patent owners and challengers. She has also provided infringement and invalidity analysis in opinions for a variety of technologies.

In addition to cutting-edge optical and software applications, Michelle is heavily involved in our digital healthcare and bioinformatics practice, focusing on the intersection between optical devices, big data analytics, and the life sciences ecosystem.  She has practiced in the biological sample analysis and detection space since the early 2000s, including microfluidics, fluorescence-based imaging systems, and next-gen sequencing, along with the more processing-based analyses of interpreting biological correlations. 

Additional technical fields in which Michelle works include: web interfaces, Internet communications systems, software development, telecommunications systems, lasers, photolithography, cryptographic messaging, semiconductor fabrication and devices, electronic design automation, biometric devices, implantable medical devices, catheter location systems, sensor communication systems, financial products, and various other electrical, optical, and software/business method inventions.

Michelle is a contributing author of Patent Office Litigation, Second Edition, published in 2017. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year. Michelle is the Chapter Chief for the chapter on Covered Business Method Patent Review (CBM) in the 2012 edition. Additionally, she is a contributing author of the chapter on "Patentability Challenges at the U.S. Patent and Trademark Office" in the ABA's Patent Litigation Strategies Handbook, 4th Edition (2015).

Prior to joining Sterne Kessler, Michelle studied physics with a concentration in astronomy at Louisiana State University.  She focused her research on gravitational wave detection, working on with both LSU’s resonant bar detector ALLEGRO and the Laser Interferometer Gravitational-Wave Observatory (LIGO). While at LSU, she also assisted in the development of software simulation and analysis programs for laboratory and educational use, and participated in a summer research fellowship for LIGO at the California Institute of Technology. From 2008-2013, Michelle  served on the Executive Committee for LSU's College of Science. Michelle has her J.D. from George Mason University School of Law.


Suzanne Munck is Chief Counsel for Intellectual Property for the United States Federal Trade Commission and Deputy Director of its Office of Policy Planning, where she directs the FTC’s policy and enforcement efforts at the intersection of antitrust and intellectual property. She is the lead author of the FTC’s October 2016 report, “Patent Assertion Entity Activity: An FTC Report.” She also led the FTC’s recent revision of the Antitrust Guidelines for the Licensing of Intellectual Property, together with the United States Department of Justice. Ms. Munck has significant litigation experience managing IP issues that arise during the FTC's enforcement efforts in the high-tech and healthcare sectors. She was the lead patent attorney in the FTC’s pay-for-delay action against Cephalon, Inc., which resulted in a $1.2B settlement for U.S. consumers. In recognition of her work, Ms. Munck has received the Commission’s Paul Rand Dixon and Janet D. Steiger Awards. Before joining the FTC, she was an antitrust and IP litigator in Los Angeles. She received her BA in mathematics from Bryn Mawr College and graduated cum laude from the University of Minnesota Law School, where she was a managing editor of the Minnesota Law Review.


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


Kevin has more than twelve years of intellectual property experience as in-house and outside counsel, much of it spent defending technology companies from attacks by NPEs. Most recently, Kevin served as Intuit’s Head of IP Litigation. Prior to Intuit, Kevin was a patent litigator with Kaye Scholer LLP and Howrey LLP where he represented clients in various technology areas. He began his career as a patent examiner at the U.S. Patent & Trademark Office. Kevin has a JD from George Washington University Law School and a BS in Mechanical Engineering from UCLA.


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

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