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Fundamentals of Patent Litigation 2014


Speaker(s): Brandon Baum, Gary M. Hnath, Joseph P. Lavelle, Joshua M. Masur, Madison C. Jellins, Sanjeet K. Dutta
Recorded on: May. 14, 2014
PLI Program #: 55507

Gary Hnath is a Partner in Mayer Brown’s Washington DC office, where he focuses his practice on intellectual property litigation and counseling, including disputes involving patent, trademark and copyright infringement and trade secrets. He has participated in numerous District Court cases, several Federal Circuit appeals, and over 40 investigations at the International Trade Commission under Section 337 of the Tariff Act of 1930, one of the principal forums for litigating intellectual property disputes involving imported articles.

A leading authority in the area of Section 337 litigation, Gary is a former president of the ITC Trial Lawyers Association and Chair of the ITC Committee of the American Intellectual Property Law Association. He has lectured throughout the United States and Asia and written widely on the subject of Section 337 investigations. While working at the ITC, Gary was lead counsel for the government in Certain Concealed Cabinet Hinges, which raised issues of first impression as to what constitutes a “domestic industry” under the 1988 amendments to Section 337. His position on this issue was adopted by the Administrative Law Judge and the Commission in a decision which is still cited as one of the leading cases in the field.

Gary has successfully represented both patent holders and companies accused of infringement in cases involving a variety of technologies, including high-intensity sweeteners; coenzyme Q10; toner cartridges; sleep apnea products; laminated packaging; linear actuators; medical devices for vein harvesting; personal computers; acetic acid; wireless local area networks; ground fault circuit interrupters; agricultural vehicles; multiplexers used in space satellites; gear couplings used in industrial machinery; and neodymium-iron-boron magnets, to name just a few. He was lead counsel for the first company in China to win a Section 337 case after trial at the ITC. His recent notable victories for clients at the ITC include the successful defense of two manufacturers in China accused of infringing four process patents for the manufacture of sucralose. In this high profile case, the Commission found all of the asserted patents not infringed, and one of the patents invalid, after a hotly contested trial.

Gary has also represented numerous clients on a pro bono basis. For example, in a case for a Washington DC public school bus aide fired from her job as a result of an erroneous drug test, Gary was successful in obtaining a ruling that his client’s constitutional rights had been violated and an order reinstating her with back pay. The court’s decision in that case was cited for several years as one of the leading decisions in the US discussing the constitutionality of random drug testing.

In addition to private practice, Gary has served as law clerk to the Honorable Walter E. Black Jr., US District Court for the District of Maryland and a senior trial attorney with the ITC’s Office of Unfair Import Investigations.


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


Madison C. Jellins has more than 20 years of experience in patent litigation and strategic counseling for biopharmaceutical and medical device clients and has served as lead counsel in patent cases in district court and at the Federal Circuit. She is a registered patent attorney and has particular expertise in patent and regulatory strategy, including the FDA approval process for small molecules, biologics, biosimilars, and combination products; Hatch-Waxman litigation strategy; and the new biosimilars pathway. Madison also handles appellate matters before the Federal Circuit and frequently lectures on Federal Circuit case law developments and patent/regulatory issues. She clerked for the Hon. Helen W. Nies, former Chief Judge of the Federal Circuit. She is a Lecturer at Santa Clara University School of Law and was recognized as a Northern California Super Lawyer in IP Litigation in 2009-2012. Madison was formerly a partner in the IP Litigation Group of Alston & Bird LLP and a partner in the Patent Litigation Group at Townsend LLP.

Educational Summary

  • J.D., magna cum laude, University of San Francisco
  • Four American Jurisprudence Awards
  • Comment of the Year Award
  • Senior Member, Law Review
  • M.S. Biological Sciences (cancer biology), Stanford University
  • B.A. Zoology (pre-med), University of Washington

Admissions

  • California State Bar
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • All California Courts


Sanj Dutta is a partner in Goodwin’s Technology Companies group and a member of the firm’s Intellectual Property Transactions and Strategies practice. He advises companies on patent prosecution across a variety of technology areas, including blockchain, big data analytics, finance, virtualization, cybersecurity and software security. He also advises companies on IP issues in connection with mergers and acquisitions, as well as technology transfers and licensing. He has handled numerous IP matters in state and federal courts and before the International Trade Commission (ITC) and the Patent Trials and Appeals Board (PTAB). He has also successfully invalidated highly litigated patents in the U.S. Patent and Trademark Office.

With a background in electrical engineering, Mr. Dutta is well-equipped to understand complex issues that sit at the intersection of law, science and technology, enabling him to handle a wide range of issues, including those relating specifically to computer technologies.


Brandon Baum has served as trial counsel in patent cases, patent licensing programs, mediations, and arbitrations, and has first-chaired numerous jury trials. He has litigated disputes involving such technologies as telecommunication devices (hardware and software), thin films, computer methods and software, microprocessors, smartcards, business methods, Java™, medical devices, cryptography and GPS devices. He also has extensive experience litigating business disputes, and has tried cases in federal, state and even bankruptcy courts. Brandon is an AV-rated attorney, a Northern California “Super Lawyer,” and is listed in Marquis Who’s Who.

For the past 10 years, Brandon has served as an Adjunct Professor of Law, teaching a course in patent litigation techniques at U.C. Hastings. He has also taught at Stanford’s Law and Business Schools, and Santa Clara Law School. He frequently serves as a court-appointed ENE and Mediator for IP cases, and is a regular contributor to PLI’s Patent Law Practice Center. Before moving to Silicon Valley, Brandon was a prosecutor specializing in homicide and gang violence cases. Away from the office, Brandon enjoys spending time with his three children, playing tennis badly and cracking wise.

EDUCATION:

J.D. 1985, University of California Hastings B.A 1982, University of California Berkeley


Joshua Masur has practiced intellectual property litigation and general business litigation for technology companies for over a decade. Mr. Masur represents clients in federal and state trial and appeals courts, before the International Trade Commission, and in private mediation and arbitration. His experience spans such disparate technologies as semiconductor chip design, hyperlinks, memory controllers, streaming online video, automotive pollution controls, user interfaces, WiFi antennas, encryption, biometric authentication, and type fonts. Mr. Masur also has particular expertise in intellectual property indemnification disputes.

From 2008 to 2010, Mr. Masur served as the president of the San Francisco Bay Area Intellectual Property American Inn of Court, the premier organization in Northern California dedicated to fostering skills, professionalism, collegiality, and ethics among the intellectual property bench and bar. He is a member of the American Intellectual Property Law Association and several of its committees, including the Committee on Patent Litigation and subcommittees on the Model Patent Jury instructions, Confidentiality in Litigation, and Pleading Standards. Northern California SuperLawyers named Mr. Masur a "Rising Star" in 2009 and a "SuperLawyer" in 2012. Mr. Masur does not know exactly why he received a perfect 10.0 Avvo Rating, but he isn't complaining about it.

Before joining Turner Boyd, Mr. Masur was associated with Fish & Richardson, Mayer Brown, and Heller Ehrman. Mr. Masur received his J.D. in 1999 from Columbia Law School, where he was an Articles Editor of the Columbia-VLA Journal of Law & The Arts and was named a James Kent Scholar and a Harlan Fiske Stone Scholar. He received his A.B. in 1990 from Columbia College, where he was a National Merit Scholar and Empire State Scholar. Between college and law school, Mr. Masur worked as a computer and networking consultant and graphic designer.

Mr. Masur is a member of the California bar, and is admitted to practice before the U.S. Courts for the Northern, Central, and Eastern Districts of California, the Eastern District of Texas, the Federal and Ninth Circuit Courts of Appeals, and the United States International Trade Commission. Mr. Masur is also an avid skier and has served as Legal Advisor to the Eastern Sierra Region of the National Ski Patrol since 2009.

Education:

Columbia College, B.A., 1990; Columbia Law School, J.D. 1999