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USPTO Post-Grant Patent Trials 2015


Speaker(s): David L. McCombs, Douglas E. Lumish, Hon. Matthew Clements, Jeffrey C. Totten, Kirupa Pushparaj, Lisa G. McFall, Lori A. Gordon, Michael L. Kiklis, Timothy E. Bianchi, W. Karl Renner
Recorded on: Apr. 17, 2015
PLI Program #: 59523

Douglas E. Lumish

Doug Lumish is the Global Co-Chair of Latham & Watkins’ IP Litigation Practice Group, and a partner in its Silicon Valley and San Francisco offices. Mr. Lumish is lauded as one of the nation’s top intellectual property trial lawyers and has served as lead trial counsel on numerous patent, trade secret, trademark, and other commercial matters for the country’s preeminent technology companies. In this role he has won jury trials and summary judgments for plaintiffs and defendants alike, and has defeated billions of dollars in claims against his clients.

Mr. Lumish is a Fellow of the Litigation Counsel of America, and he has been praised by numerous publications including The American Lawyer which named Mr. Lumish a “Litigator of the Week” in 2013 for his jury trial win for TransPerfect in a multi-patent infringement case regarding website translation technologies. Chambers has listed Mr. Lumish every year since 2007, noting in 2014 that he is "very polished on his feet, with a good courtroom demeanor" and in 2013 that he is a "‘highly intelligent and highly organized’ patent litigator with particular expertise in the software and internet spheres.” The Daily Journal has repeatedly listed Mr. Lumish as one of the top 75 IP litigators in California (2011-14) and as one of the Top 100 Lawyers in California (2012-13), and named Mr. Lumish’s jury win for TransPerfect a "2013 Top Plaintiffs' Verdict by Impact." Also in 2013, Law360 named Mr. Lumish an “IP MVP”—one of only 10 in the country—and noted his jury win in East Texas as lead trial counsel for Google in a high-profile patent infringement trial against Eolas and the University of California. Mr. Lumish has been recognized by others including Intellectual Asset Management which lists Mr. Lumish on its Patent 1000 rankings of the world’s leading patent practitioners, Corporate Counsel which listed Mr. Lumish’s win for Hitachi against MIT and Magsil as one of its Top 10 wins for 2011, The Legal 500 and Super Lawyers.

Mr. Lumish has litigated cases across a diverse technology spectrum including internet and web technologies, database, file system and operating system software, video game technology, touch screen and smartphone technologies, stents, aneurysm treatment and other medical devices, camcorders and PC connectivity, data networking equipment and networking protocols, semiconductor equipment and processes, capillary electrophoresis equipment and processes, PCR equipment and processes, hard disk drives, cellular technology, biotechnology equipment and processes, and analog and digital circuit design. Mr. Lumish co-taught a patent litigation course at Stanford Law School in 2010 and 2012. He is also a frequent speaker and writer on intellectual property matters. Prior to his legal career, Mr. Lumish was a systems consultant to computer and high technology companies and designed and implemented strategies to automate various business functions, employing a diverse mixture of mainframe, minicomputer, UNIX and PC technologies.

 


David McCombs is primary counsel for many leading corporations in patent inter partes review before the U.S. Patent Office’s Patent Trial and Appeal Board and in appeals before the Federal Circuit.  His practice spans 34 years and includes appellate argument, patent litigation, licensing and technology transfer, patent portfolio development and drafting, and dispute resolution.  He is regularly identified as one of the most active attorneys appearing before the Patent Trial and Appeal Board.

Mr. McCombs is the firm-wide chair of the technology practice of Haynes and Boone.  He has a Physics degree and represents clients in technologies that include electronics, semiconductors, software, telecommunications, medical devices, and energy equipment. 

Prior to joining Haynes and Boone in 1989, he served as in-house patent counsel for a diversified technology company located in Research Triangle Park, North Carolina, with a long history of developing breakthrough chemical/material science, diagnostic, robotics, and motion management technologies.

In Chambers & Partners Mr. McCombs is ranked among Texas’ leading intellectual property attorneys.  He is active in many continuing legal education organizations, and regularly writes and speaks on a variety of topics related to patent law.  He is the co-author of “Intellectual Property Law,” published annually by The SMU Law Review (2010-present), and an adjunct professor at SMU Dedman School of Law.

Separate from his law practice, Mr. McCombs serves as a Commissioner for the Smithsonian Institution’s National Portrait Gallery in Washington, D.C.


Michael L. Kiklis focuses his practice on patent litigation as well as trials at the USPTO’s Patent Trial and Appeal Board.  He frequently handles high-stakes matters, having been involved in several cases in which over $1 billion was at stake.

Mr. Kiklis has twenty years of experience as an intellectual property attorney and has been involved in numerous intellectual property disputes, ranging from cross-licensing and pre- litigation negotiations to full-blown, bet-the-company litigations.  Mr. Kiklis has extensive experience in both enforcing his clients’ rights as well as defending his clients.  Before joining Oblon Spivak, he was an IP litigation partner at Akin Gump Strauss Hauer & Feld, LLP in the firm’s D.C. office.

With a strong background in computer science, Mr. Kiklis also has extensive experience in software patent matters. Prior to entering law school, he worked as a software developer for six years at some of the computer industry’s leading companies.

Mr. Kiklis is a frequent lecturer and author on cutting-edge intellectual property issues, including the Supreme Court’s patent law jurisprudence, patentable subject matter under 35 U.S.C. § 101, as well as the new contested proceedings at the USPTO’s Patent Trial and Appeal Board.  In fact, he is the author of The Supreme Court on Patent Law, which has been called “a great resource” that fills “a critical gap in our understanding of modern American patent law.”  He is also a co-author of the firm’s Post- Grant Patent practice group.

Mr. Kiklis is also active in pro bono matters. In coordination with the International Senior Lawyers Project, he taught the first-ever intellectual property class in the LLM Program of the National University of Rwanda and served as the thesis advisor to several LLM students.

REPRESENTATIVE MATTERS

Represented a software company in the successful enforcement of its patent against virtually an entire industry of over thirty companies—including Microsoft and IBM—in two patent litigations in the Eastern District of Texas, resulting in favorable settlements

Represented a major computer company in its landmark antitrust case against Microsoft, resulting in a $1.95 billion settlement

Co-counsel on the first Covered Business Method Patent Proceeding filed at the USPTO’s Patent Trial and Appeal Board.

Currently representing clients in several Covered Business Method Patent and Inter Partes

Review proceedings before the USPTO's Patent Trial and Appeal Board

Represented a national organization of legal professionals as co-author of a Supreme Court amicus brief in Bilski & Warsaw v. Kappos

Represented a financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement

Represented a trade association as co-author of a Supreme Court amicus brief in Quanta Computer, Inc. v. LG Electronics, Inc.

Represented several large software/computer companies in cross-licensing negotiations with IBM and other high technology companies

Represented a large computer company as opinion counsel in defense of a software patent infringement case where over $1 billion was at stake; the plaintiff dropped its willfulness claim.

ACCOLADES

Intellectual Asset Management (IAM) Patent 1000: The World’s Leading Patent Practitioners, named to its list of the top 1000 patent attorneys in the world; recognized in the Washington, D.C. Metro Area for his patent Litigation work  (2014)

Listed as one of 2013 and 2014's IP Stars in the United States, as well as Virginia, by Managing Intellectual Property.

Computer Science Distinguished Alumni Award given at the 30th anniversary celebration of Computer Science at Boston University Metropolitan College.

Recipient, U.S. Patent and Trademark Office Society's Rossman Award given to the author of the article in the Journal of the Patent and Trademark Office Society that makes the greatest contribution to the field of patents, trademarks or copyrights.

Bar Admissions

District of Columbia
Virginia

Registered to practice before the U.S. Patent and Trademark Office

Court Admissions

Supreme Court of the United States
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Eastern  District of Virginia

Education

J.D., Syracuse University College of Law, magna cum laude
M.S., Computer Science, Boston University,
B.S., Computer Science, University of Massachusetts, Lowell

Professional  Affiliations American  Bar  Association


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.


Hon. Matthew Clements
Lead Administrative Patent Judge
United States Patent and Trademark Office

Matt Clements is a Lead Administrative Patent Judge at the Patent Trial and Appeal Board in the Silicon Valley office.  He earned his law degree from Columbia Law School.  He also earned a Master of Science degree in Electrical Engineering from University of Washington, and a Bachelor of Electrical Engineering degree from Auburn University.  Prior to his appointment in March 2013, Judge Clements served with the law firm Ropes & Gray LLP where he practiced intellectual property law with broad experience in patent litigation, patent prosecution, and technology transactions.


Jeffrey C. Totten
Finnegan, Henderson, Farabow, Farrett & Dunner, LLP
Partner

Jeff Totten focuses his practice on patent and trade-secret litigation, 
post-grant validity challenges, and client counseling in the mechanical and electrical fields. 

Mr. Totten has represented clients in multiple U.S. district courts and before the U.S. International Trade Commission (ITC). He has actively participated in several trials, where he examined and cross-examined fact and expert witnesses. In addition, Mr. Totten has extensive experience managing litigation teams involved in complex intellectual-property disputes, developing and briefing claim construction and summary judgment positions, and taking discovery in the United States and abroad. 

Mr. Totten also represents clients in post-grant review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (PTAB) and advises clients on a wide variety of patent matters. He counsels clients and provides written opinions regarding patent infringement and validity. He assists clients with patent-portfolio management, strategic planning, and patent mapping. 

Mr. Totten works on matters involving a wide array of technologies, including computer databases, internet-based communications and payment systems, business methods, wind-turbine generators, biomedical devices, 
exhaust-treatment systems, chemical-manufacturing methods, and mechanical device.


Karl Renner is a Principal in the Washington, D.C. office of Fish & Richardson P.C. Mr. Renner co-chairs the firm’s Post-Grant Practice Group, and he serves on the firm’s Management Committee. His practice emphasizes client counseling, strategic patent prosecution, and contentious inter and ex parte post-grant and reissue work. In this practice, Mr. Renner has provided direction for well over 300 AIA post-grant matters, challenging and defending patents, most commonly in coordination with litigation counsel amidst co-pending disputes. Recently, he was elected to serve on the Board of Directors for the PTAB Bar Association, the first national bar association of its kind to form in more than 30 years. Mr. Renner is now a frequent lecturer and author on intellectual property matters, regularly speaking at University of Maryland events, in conjunction with their Engineering Schools and Hinman CEO program.


Kirupa Pushparaj is the director of intellectual property at Square, Inc., where he helps build Square’s patent and trademark portfolios, and also manages their IP litigation, copyright, domain, and trade secret practices. He is an adjunct professor of law at the University of the Pacific and at Stanford Law School, where he teaches patent drafting and prosecution law. 

Before working at Square, he was patent counsel for Lab126, the digital products arm of Amazon.com, and also practiced intellectual property law at Perkins Coie LLP prior to that. Before starting his practice of law, he was a senior design engineer at Intel Corp., working on circuit design and semiconductor process technology.

He also serves on the boards of the Silicon Valley IP law Association, the National Asian Pacific American Bar Association (Silicon Valley), and the San Francisco Bar Association’s Justice and Diversity Committee.


Lori Gordon is a director in both the Litigation and Electronics practice groups, focusing on inter partes matters, including district court litigation and contested case proceedings at the USPTO.  She has been involved in over a dozen district court patent litigations since joining the firm, acting as lead counsel for the claim construction, infringement and validity aspects of these cases.  In addition, she is currently acting as lead counsel in over 60 AIA contested case proceedings at the USPTO. Ms. Gordon also has extensive experience handling reexamination proceedings, acting as counsel in over 40 inter partes and ex parte reexaminations. Ms. Gordon has handled contentious matters in a wide variety of technical fields, including telecommunications systems, software, radio frequency identification (RFID) systems, Voice over IP, security, cryptography, Internet applications, databases, and backup and replication technologies.


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.