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Patent Law Institute 2020: Critical Issues & Best Practices


Speaker(s): Andrew Hirshfeld, Christine Lam, D. Brian Kacedon, Dean Alderucci, Denise M. De Mory, Diane Gabl Kratz, Douglas R. Nemec, Elizabeth Morris, Emily Lough, Eric M. Hutchins, Eric Sutton, Frederic Thiel, Gene W. Lee, Greg McAllister, Hon. Christopher J. Burke, Hon. Elizabeth D. Laporte (Ret.), Hon. William (Tim) Fink, Joe Lenart, John M. White, Jon R. Trembath, Kanda V. Ishihara, Kevin McLintock, Kim R. Jessum, Kye-Young Lee, Lissi Mojica, Matthew Sked, Michael Sochor, Michael T. Moore, Prof. David Hricik, Prof. Kevin D. Ashley, Scott M. Alter, Shinichi Ueda, Subroto Bose, Sumon Dasgupta, Valerie Calloway, Victor Huang
Recorded on: Apr. 23, 2020
PLI Program #: 279220

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.


Christine Lam is the Director of IP at NetApp, Inc., heading its intellectual property group, with responsibilities in patents, trademarks, copyrights, IP litigation and transactions, open source, and other matters.  She has held executive positions at leading technology companies such as Imperva, Pericom, and SAP. She clerked in a federal district court in California.  Christine also has an extensive technical background.  Prior to getting her law degree, she has authored peer-reviewed articles in the Journal of Applied Physics, an IEEE journal, and a book by published by IEEE Press.  She received a Bachelor and a Master degree from MIT and a J.D. from University of California at Berkeley.  She is admitted to the California Bar and the Patent Bar.


Dean Alderucci is the Director of Research for the Center for AI & Patent Analysis at Carnegie Mellon University, the world’s first research center devoted to developing AI for the patent domain. In this position he conducts and leads original research in Natural Language Processing and Machine Learning algorithms that are tailored to the unique challenges of patent law and practice. This work includes developing AI software that better understands patents, patent claims, patent prosecution tasks, patentablity requirements, and patent practice work flows. Much of this research involves translating aspects of patent law, patent prosecution, and legal reasoning into novel data sets, neural network architectures, and algorithm training strategies.

Dean frequently speaks on applying AI to the IP field and to the legal domain. He also advises corporations and law firms on best practices for implementing and benefiting from Machine Learning and Natural Language Processing.

He was previously was Chief IP counsel for a global financial services firm, and before that Chief Counsel for a business incubator. He has taught graduate courses in innovation strategy, Intellectual Property, and Natural Language Processing at the University of Chicago, New York University, Carnegie Mellon University, and Dartmouth College. He is a Fellow of the National Academy of Inventors.


Denise is the Managing Partner of Bunsow De Mory and has litigated patent and other intellectual property cases for over twenty-five years.  She has repeatedly been named one of California’s “Top Women Litigators” by The Daily Journal.  Denise has significant trial experience, including a patent trial that resulted in a $61 million verdict for her client.  She was also a member of the United States Department of Justice’s trial team, in the U.S. v. Microsoft antitrust litigation.  Denise deposed executive-level Microsoft witnesses and the chief architect of Internet Explorer, and offered one of the government’s technical experts at trial. 

Denise has been a member of the PLI faculty for over 10 years.


Diane Gabl Kratz has been honored as a 2019 IAM 300 World’s Leading IP Strategist.  She is currently Senior Intellectual Property Counsel at Seagate Technology.  As a USPTO-registered patent attorney, Diane manages all aspects of the patent portfolios for Seagate’s Consumer Products and Media business units, advising on strategy, prosecution, and IP-related transactions.  Based on the strength, scope, and influence of its patent portfolio, Seagate has been recognized as one of the Top 100 Global Innovators by Thomson Reuters/Clarivate Analytics.  

In addition to patents, Diane leads Seagate’s global trademark portfolio, developing strategy across 100 countries, strengthening brand recognition, and combatting counterfeits.  Her enforcement responsibilities include copyrights and domain names.  She also is an IAPP Certified Information Privacy Professional for the United States (CIPP/US). 

A four-time Super Lawyers Rising Star, Diane was previously in private practice at the Silicon Valley offices of international law firms Morrison & Foerster LLP and Sidley Austin LLP.  There, she focused on IP and complex commercial litigation in industries such as semiconductors, software, telecom, consumer electronics, and medical devices.  While at Sidley Austin, Chambers USA honored her department with the 2014 Intellectual Property Litigation Practice Team of the Year Award.

A well-regarded speaker, Diane regularly presents at conferences throughout the United States.  Past speaking engagements include the ABA, Silicon Valley Association of General Counsel, Oregon Patent Law Association, Centerforce, IP Counsel Café, and the California Lawyer/Daily Journal.  She has also been featured as a guest lecturer at Stanford University’s Management Science & Engineering Department and the University of California-Berkeley’s Haas School of Business.  She is a regular faculty member for the Practising Law Institute (PLI). 

Diane received her J.D. from the University of Chicago Law School and a Physics degree from Cornell University.  She serves as a Global Advisory Board Member for the Women In Law Empowerment Forum (WILEF) and is active in the IP Gathering, Unified Patents, and the LOT Network.


Dr. Kevin Ashley holds interdisciplinary appointments as a Professor of Law and Intelligent Systems at the University of Pittsburgh, a Senior Scientist at the Learning Research and Development Center, a faculty member of the Graduate Program in Intelligent Systems, and an Adjunct Professor of Computer Science. He received a B.A. in philosophy (magna cum laude) from Princeton University in 1973, J.D. (cum laude) from Harvard Law School in 1976, and Ph.D. in computer science in 1988 from the University of Massachusetts, where he held an IBM Graduate Research Fellowship, and which recently honored him with its Outstanding Achievement and Advocacy Award in the category of Outstanding Achievement in Education.

His research interests in law, learning, and computer science include developing techniques for linking computational models of legal reasoning with legal texts in order to facilitate acquiring knowledge in Artificial Intelligence (AI) programs and to assist legal practitioners, developing computational models of case-based reasoning (CBR) and argumentation in domains like law and practical ethics to better understand decision-making and as a basis for intelligent systems to educate students, and identifying and analyzing special legal problems posed by computer technology in such areas as intellectual property, commercial law, product liability, technology licensing, and privacy. In June 2017, Cambridge University Press published his book Artificial Intelligence and Legal Analytics: New Tools for Law Practice in the Digital Age.

For his Ph.D. he developed Hypo, an AI CBR system that reasoned by analogy to past legal cases, made   arguments about legal fact situations and posed hypothetical cases.  MIT Press / Bradford Books published his book based on his dissertation entitled Modeling Legal Argument: Reasoning with Cases and Hypotheticals. In April 1990, the National Science Foundation selected Professor Ashley as a Presidential Young Investigator, and in 2002 he was selected as a Fellow of the American Association of Artificial Intelligence. From June 1988 through July 1989, he was a Visiting Scientist at the IBM Thomas J. Watson Research Center.  For four years prior to his computer science graduate work, he was an associate attorney at White & Case, a large Wall Street law firm. While a philosophy major at Princeton, he was a research assistant for Professor Walter Kaufmann. More recently, he has been a Buchanan, Ingersoll & Rooney Faculty Scholar, 2011-2012, a Senior Visiting Fellow at the Institute for Advanced Studies, University of Bologna, from October through November 2011, and a frequent Visiting Professor at the University of Bologna School of Law.

He is a co-Editor-in-Chief of Artificial Intelligence and Law, the journal of record for the field of AI & Law, and his students and he regularly publish research in the biennial International Conference on Artificial Intelligence and Law (ICAIL) and the annual conference on Legal Knowledge and Information Systems (Jurix).


Education

Obtained a Master's degree in Electrical Engineering from Waseda University

 

Career

Employed at Panasonic Corp.

Qualified as patent attorney in 2012

Registered as specific infringement litigation representation in 2017

 

Fields of specialization

Electrical and Electronic engineering, Communication engineering, Software, Control engineering


Education

University of Southern California, Gould School of Law (LL.M., 2013)

Seoul National University, Department of Computer Engineering (M.S., 1997; B.S., 1995)

 

Professional Qualifications

Admitted to California State Bar (2015)

Admitted to Korean Patent Bar (2004)

 

Employment Background

FirstLaw P.C. (2005-present)

Kasan International Patent Law Firm (2004-2005)

Database Marketing Analyst, Choheung Bank(1998-2000)

 

Languages

Korean, English and Japanese.

 

Publications

"Road environment reconstructing system using image-based modeling" (Thesis for M.S., 1997).

 

Representative IP Work

- In-bound patent prosecution on behalf of major international companies

- Domestic and out-bound patent prosecution on behalf of domestic companies and research institutes

- Patent infringement/invalidity analyses with regard to various patents

- Major patent litigation cases

- Representing G Inc., in invalidation trials (Online advertisement)

- Representing M Inc., in preliminary injunctive action, patent infringement action, scope confirmation trials and invalidation trials (Korean-English automatic conversion method)

- Representing B Co., Ltd. in scope confirmation trial and invalidation trial (Debit card issuing system)

- Representing A Co., Ltd. in scope confirmation trial (IT device rental service)


ELIZABETH D. LAPORTE joined JAMS after more than two decades as a United States magistrate judge for the Northern District of California. From 2013 to 2015, she served as the chief United States magistrate judge for the Northern District of California. As a magistrate judge, she presided over numerous civil cases, with a robust docket that included matters of patent, trademark, copyright, business, class actions and mass tort, employment and discrimination, insurance, environmental, antitrust and civil rights litigation.

Judge Laporte is known for helping to shape patent and intellectual property case law and for advancing the court’s e-discovery procedures. Her colleagues and the legal community consider her among the leading legal thinkers on e-discovery issues. For her efforts, she earned the Judicial Leadership Award from the Electronic Discovery Institute in 2015. She also launched the Northern District’s Women Attorneys Advocacy Project, which seeks to promote gender equality in the legal community. 

Judge Laporte has received high praise for her legal acumen and settlement skills, most recently from the Almanac of the Federal Judiciary and the Daily Journal. She is regularly invited to speak on panels for continuing education of attorneys and judges on a variety of legal topics, including intellectual property, settlement, e-discovery, employment law and jury trials. She is also the author of numerous legal publications.

Judge Laporte previously served as the alternative dispute resolution magistrate judge for the Northern District of California. She has conducted hundreds of settlement conferences and resolved hundreds of discovery disputes, as well as presided over numerous cases from start to finish, including through summary judgment and/or trial.

Judge Laporte is currently a member of the Board of Governors for the Northern California Chapter of the Association of Business Trial Lawyers, and a member of the Cross-Border Privilege Issues Brainstorming Group, The Sedona Conference.

Judge Laporte is a graduate of Princeton University and Yale Law School and is a Marshall Scholar, with an M.A. from Oxford University.


Elizabeth Morris is Assistant General Counsel & Director of Intellectual Property Law at KLA Corporation.  She leads a global team of attorneys and engineers in managing the company’s portfolio of over three thousand US and international patents. Her responsibilities also include trademark portfolio management, patent litigation oversight, patent strategy development, and competitive analysis.  Ms. Morris is also a guest lecturer at Santa Clara University School of Law, Nebraska Law College, and is a member of the faculty of PLI (Practicing Law Institute).  Previously, she practiced patent prosecution, licensing, and litigation at Morgan Lewis & Bockius LLP.  Ms. Morris received her J.D. from Santa Clara University School of Law, where she served as a research assistant to Professor Chisum and served Editor-in-Chief for the Santa Clara Computer & High Technology Law Journal.  Ms. Morris was in Honors Engineering program at Purdue University, where she received her B.S. in Mechanical Engineering.


Eric Hutchins is Managing Counsel in Oracle’s Patent, Trademark, and Copyright Team, where he is responsible for managing Oracle's patent risk. He oversees patent market transactions, negotiates patent licenses, and collaborates with Oracle's Litigation Team on patent litigation and post-grant proceedings before the United States Patent and Trademark Office. He also assists Oracle's M&A Team with IP-related due diligence on many acquisitions, including Oracle’s 2016 acquisition of NetSuite. Before joining Oracle in 2012, Eric practiced IP litigation at the law firm of Kilpatrick Townsend and Stockton LLP, and was a 2006 graduate of the Santa Clara University School of Law.


Eric Sutton manages a patent portfolio and makes patent filing decisions for technologies relating to artificial intelligence, Internet of Things, automation, marketing, and cloud systems management as Managing Patent Counsel at Oracle in Redwood Shores, California. Eric is in his 8th year of teaching Software Patents at Chicago-Kent College of Law and in his 2nd year of guest lecturing at Stanford for a Law, Science, and Technology Colloquium. He revised his Software Patents textbook last May. He also started the Patnotechnic blog, where he publishes patent quality studies based on algorithms he runs against tens of thousands of patents.

Outside the realm of patents, Eric runs an after-school Pokémon program at an elementary school and serves on the board at a cooperative preschool.


Freddy is the VP of the San Francisco Liaison Office for Kilburn & Strode, one of Europe’s leading IP firms. Freddy acts as a client liaison in the Silicon Valley and the wider US. He also prosecutes EP patent applications for tech companies in the Bay Area.

Freddy is a European Patent Attorney who has a strong understanding of in-house IP issues through his 13 years in the industry. In his 19-year career, he has analyzed over 1000 invention disclosures, with half leading to patent filings while drafting applications on a majority of these himself.

In his years in the industry, Freddy spent 10 years at Orange, one of the major telecommunication operators in Europe, as the patent counsel in charge of developing the IP portfolio for its international labs.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. In addition to patent litigation in the federal courts and the U.S. International Trade Commission, he regularly works on Patent Trial and Appeal Board trials, and also trade secret, copyright, trademark, unfair competition, and licensing disputes. Beyond adversarial matters, he also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

Gene’s work has covered a wide range of technologies, including computer systems and software, telecommunications and wireless communications, medical devices, video games, audio processing, pharmaceuticals, financial services, chemistry, semiconductors and geoscience.

He has represented major U.S. and Asian companies in high-stakes disputes. Gene represented through trial the world’s largest alcoholic beverages company in the first investigation in the USITC pilot program for potential early disposition of cases. He also represented Taiwan’s first innovator drug company in a licensing dispute and supported related litigation in Taiwan regarding ownership of patent rights.

Gene is a Director of the PTAB Bar Association and the NY Intellectual Property Lawyers Association.


Greg McAllister is a Strategic Intellectual Property Counsel for Medtronic, Inc.  He represents Medtronic’s AF Solutions business in IP matters including patent procurement, IP disputes, due diligence, product clearance, and research and development collaborations.  In addition, he supports enterprise-wide initiatives in value-based health care, new business models, and data science.  Before joining Medtronic, he clerked for the Hon. Donald P. Lay of the United States Court of Appeals for the Eighth Circuit, and was an attorney at Fish & Richardson, P.C., P.A. and Merchant & Gould, P.C. McAllister holds a J.D. from the University of Minnesota Law School and engineering degrees from the Massachusetts Institute of Technology and the University of California-Berkeley.   


Judge Christopher J. Burke has served as a United States Magistrate Judge on the United States District Court for the District of Delaware since August 4, 2011.  Judge Burke’s civil caseload predominantly consists of patent litigation matters, and he often oversees such cases from their initial stages up through and including expert discovery, summary judgement and/or trial.

Prior to joining the bench, from 2005 to 2011, Judge Burke was an Assistant United States Attorney at the United States Attorney’s Office for the District of Delaware.  From 2001 to 2005, he was an associate at the Washington, D.C. office of the law firm of Covington & Burling LLP.  Prior to that, he served as a judicial law clerk for the Honorable Kenneth F. Ripple of the United States Court of Appeals for the Seventh Circuit.

Judge Burke is a 2000 graduate of the University of Michigan Law School.  He received his undergraduate degree from Georgetown University in 1997.

Judge Burke currently serves as the Chairman of the Federal Trial Practice Seminar, a trial skills development program jointly sponsored by the United States District Court for the District of Delaware and the Federal Bar Association’s Delaware Chapter.  He also presides over the District Court’s criminal Re-entry Court, which focuses on providing oversight, support and assistance to individuals serving terms of federal supervised release.  He assists in overseeing the administration of the District Court’s Federal Civil Panel, which provides representation to indigent parties with civil cases pending before the Court.  And he created and oversees the District Court’s High School Summer Fellowship Program, which provides mentoring to high school-aged youth in New Castle County and exposes those students to the work of the federal court system. 


Kanda Ishihara is director of IP at Veritas Technologies LLC, an enterprise data protection software company based in Santa Clara, California.  At Veritas, Kanda’s responsibilities include patent portfolio development, risk mitigation, client counseling, patent portfolio review and classification, management of outside counsel, education of engineering teams, and trademark portfolio review.  

Previously, she was a partner at Patent Law Works LLP, an IP boutique law firm specializing in patent, trademark, copyright, domain name procurement and strategic counseling.  There, her practice focused on patent prosecution, client counseling and patent management, including all stages of the patent prosecution process, as well as management of patent portfolios and performing due diligence for patent assets.  Her practice also involved patent licensing and infringement analysis.  In earlier positions, Kanda has worked as an associate at Fenwick & West as well as Morgan, Lewis & Bockius.

Kanda has also worked in-house in the legal departments of Ariba, Inc. and Genentech.  Her law practice covers a wide range of technology areas including computer software, web-based software applications and telecommunications.

As co-founder and past president and board member of Leading Women in Technology, a non-profit organization dedicated to unleashing the potential of professionals who advise technology businesses and executives, Kanda is also dedicated to helping empower female professionals in the tech industry through mentorship, skills development and networking.


Kim Jessum is Chief IP Counsel, Associate General Counsel, and Secretary at Heraeus Incorporated in Yardley, PA.  Heraeus is a Fortune Global 500 company specializing in precious metals, materials and technologies; sensors; biomaterials and medical products; as well as quartz glass and specialty light sources.  Ms. Jessum is responsible for providing intellectual property and general legal advice for various business units in the United States and worldwide. She received her bachelors degree in chemical engineering and applied science from Lehigh University in 1992 and her masters degree in biopharmaceuticals from the University of Pennsylvania in 2004. She was awarded her law degree and Certificate in Intellectual Property Law from Chicago-Kent College of Law, Illinois Institute of Technology in 1997. Ms. Jessum is admitted to practice in Pennsylvania, New Jersey, and Illinois and before the U.S. Patent and Trademark Office.  She serves in leadership for the ABA Intellectual Property Law Section and Litigation Section and as a co-chair of the IP Committee of the Greater Philadelphia Association of Corporate Counsel.


Matthew Sked is Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO.


Michael Sochor is the Director of Intellectual Property at Forescout Technologies in San Jose, California. He has responsibility for all aspects of intellectual property including managing the patent portfolio, managing the trademark portfolio, ligation, open source software, and domain names.

Prior to joining Forescout, Mr. Sochor worked at two Silicon Valley boutique patent prosecution firms and has more than a decade of patent prosecution experience. There, he focused on patent prosecution in a variety of areas including software patents, hardware patents, and semiconductor fabrication patents. He has counseled companies ranging in size from startups to Fortune 100 companies. He has extensive experience as an information technology consultant, a programmer, and was a co-founder of a company making accessories for a popular video gaming console.

Mr. Sochor received his J.D. from the DePaul University College of Law and graduated early from University of Illinois at Chicago with a bachelor’s degree in Computer Engineering. He is a member of the California Bar, Illinois Bar, and is registered to practice before the U.S. Patent & Trademark Office.


Mr. Dasgupta has over a decade of patent experience and is involved in all aspects of patent law, including patent and trademark counseling and portfolio management across different countries and jurisdictions. Sumon has worked with a variety of clients, from solo inventors to Fortune 500 Companies. He has experience in patent enforcement, strategic patent portfolio development, licensing, trademarks, and  opinions. 

Sumon practices in all areas of patent law, with an emphasis on preparing and prosecuting patents in the electrical, mechanical, and computer (software and hardware) arts, including neural networks, virtual reality systems, compilers, encryption systems, network systems, cloud-based systems, semiconductor manufacture and design, vehicle based systems, and graphical interfaces.

Mr. Dasgupta is originally a native of Champaign, Il.  Sumon enrolled as a full-time undergraduate student at the University of Illinois UIUC) to obtain a Computer Engineering degree, while concurrently working as a mathematics teaching assistant.  Upon graduation from UIUC, he attended law school at Franklin Pierce Center for Intellectual Property in Concord, NH.  During that time, he co-authored several papers, including an Amicus Brief to the Supreme Court of the United States.  He also interned at a patent firm to gain experience in patent prosecution.  After graduating law school, Sumon worked at several prominent patent boutique firms in Minnesota and New York before moving to the D.C. metro area.


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.


Mr. Moore is the Vice President, Products and IP at Pure Storage in Mountain View. He has responsibility for product counseling, product transactional support, trade compliance, patents and intellectual property strategy, open-source software, and other matters. Mr. Moore is a seasoned attorney with more than a decade of software and hardware counseling and patent and IP experience, which follows his technical experience in digital logic design and software engineering. 

Pure Storage has been recognized twice by The Recorder for In House Legal Department of the Year in 2016 and 2017 for IP Strategy, and also recognized for Litigation (2016) and for Data Security (2017), which fall into Mr. Moore’s area of responsibility. In 2018 Pure Storage was named by the Association of Corporate Counsel as Value Champion Award Winner.

Before joining Pure Storage, Mr. Moore was the Vice President, Intellectual Property and Deputy General Counsel, of Rambus. He has also worked in-house at Symantec, and he started his attorney career as an associate at the law firm of Morgan, Lewis and Bockius involved in patent prosecution and trade secret litigation. Prior to this Mr. Moore spent almost a decade in the semiconductor industry as an engineer and patent agent.

Mr. Moore holds a JD and MBA from Santa Clara University, and BSEE (B.Eng) from the University of Limerick, Ireland.  He speaks at PLI, ACC, and other events and has published in Law360, ACC Docket, Corporate Counsel, Intellectual Asset Management, and other legal journals.  He holds 10 US issued patents from his engineering work, and numerous technology publications in electronics trade journals. 


Professor David Hricik received his undergraduate degree magna cum laude and Phi Beta Kappa from the University of Arizona, where he majored in English.  He received his law degree with honors from Northwestern University School of Law.  He practiced with Baker Botts and small litigation boutiques from 1988 to 2002, litigating cases primarily involving patent infringement, legal malpractice, and general complex commercial matters. 

In 2002, he joined Mercer University School of Law, where he teaches legal ethics, patent law and litigation, federal civil procedure, and other courses.  In 2012-13, he served as law clerk to Chief Judge Randall R. Rader at the Federal Circuit.  He rejoined Mercer and also became Of Counsel to Taylor English Duma, LLP, where he continues to represent clients in patent and complex litigation.

He was elected to the American Law Institute in 2016.  He has authored the only treatise on ethical issues in patent litigation, and co-authored the only treatise on ethical issues in patent prosecution.  In addition to serving leadership positions on ethics committees with the AIPLA and ABA and serving as an expert witness, he has written dozens of articles and given well over 100 presentations on issues at the intersection of ethics and patents.  His articles and testimony have been adopted by both state and federal courts.


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.


Tim Fink currently serves as a Senior Legal Advisor to the Office of the Under Secretary.  He also serves as a Vice Chief Administrative Patent Judge on the Patent Trial and Appeal Board. Judge Fink earned his J.D., cum laude, from Georgetown University Law Center, a Master of Science degree in Electrical Engineering from the University of Pennsylvania, and a Bachelor of Science degree in Electrical Engineering from Drexel University. Judge Fink began his career as a Member of the Technical Staff at Lucent Technologies Bell Laboratories focusing on data communications.  He was also a Senior Manager at Lucent’s Intellectual Property Business Unit and a Technical Manager at Lucent’s Microelectronics spin-off.  After law school, Judge Fink practiced IP litigation at Kirkland & Ellis, LLP, where he was a partner prior to his appointment to the Board as an Administrative Patent Judge on June 16, 2014.


Valerie L. Calloway is Senior Counsel and Global Trademark Law Leader for IBM. 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 was a member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) from 2016-2019 and is 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.  


As an Intellectual Property litigation attorney with more than 20 years’ experience, Jon is adept in handling complex legal issues and challenging logistics.

He concentrates on patent litigation, devising winning strategies that give his clients competitive advantages in the marketplace. He has established a record of success at both the trial stage and with appeals before the U.S. Court of Appeals for the Federal Circuit, prevailing in all but one of the Federal Circuit appeals he controlled.

Jon works on behalf of clients in a variety of industries, including agribusiness, energy, telecommunications, software, electronics, manufacturing, and mining. Clients appreciate Jon’s strong analytical skills and his ability to translate elaborate, intricate concepts and technologies into a clear and compelling narrative. Jon also advises businesses on portfolio management and monetization.

Prior to joining the firm, Jon was a partner in the Colorado branch of a noted U.S. patent litigation firm. Earlier in his legal career, he was an associate at a global IP specialty firm and served as a law clerk for the Honorable Randall R. Rader at the Court of Appeals for the Federal Circuit.


As Commissioner for Patents, Drew Hirshfeld manages and leads the patent organization as its chief operating officer. He is responsible for managing and directing all aspects of the organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.

During his time as Commissioner, Mr. Hirshfeld has led the Patent business unit by emphasizing both transparency and collaboration.  He has managed efforts to ensure the consistency and reliability of patent grants.  Mr. Hirshfeld has further played a lead role to ensure that the examining corps is provided with updated examination guidance and training. 

Prior to serving as Commissioner for Patents, Mr. Hirshfeld held the positions of Deputy Commissioner for Patent Examination Policy and Chief of Staff to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Hirshfeld began his career in 1994 as a Patent Examiner, he became a Supervisory Patent Examiner in 2001, and was promoted to the Senior Executive Service in 2008 as a Group Director in Technology Center 2100.

Mr. Hirshfeld received a Bachelor of Science from the University of Vermont, and a J.D. from Western New England College School of Law.


Kevin is registered US Patent Agent and Engineer with specific IP expertise related to the consumer electronic industry.

He has a background in IP strategy, patent mining, landscape studies, infringement and validity analysis, inventor training, M&A diligence, open source software management, as well as the administration of trademark portfolios. As an engaging communicator, Kevin has had the opportunity to speak at a number of forums on the topics of patents and the strategic development of IP portfolios.

Specialties: Developing in-house patent processes from the ground up, creation and delivery of IP training across all levels of engineering and management, M&A IP diligence (buy & sell side), patent landscaping, freedom to operate analysis, international patent filing and protection strategies, patent and portfolio valuation, and clear and effective communication.


Lissi’s Practice focuses on all aspects of preparing, analyzing and prosecuting post-grant proceedings, including inter partes review (IPR) and covered business method (CBM) proceedings. Lissi’s practice also includes appeals to the Patent Trial and Appeal Board, reissue applications, interference proceedings, patent quality and patent examination matters.

Prior to entering a law firm setting, Lissi served as a Director at the United States Patent and Trademark Office (USPTO), where she started the Central Reexam Unit (CRU). As Director, she oversaw policies, standards and procedures and developed inter partes and ex parte reexamination training for CRU examiners.


Mr. Lenart concentrates his practice on the development and enforcement of intellectual property. 

Practice & Background

Mr. Lenart is a registered patent attorney with experience representing large corporate clients as well as smaller early-stage organizations in a wide range of intellectual property matters.  Mr. Lenart develops and implements strategies in domestic and international patent preparation and prosecution, opinions, licensing, acquisition, litigation, and IP portfolio strategy.

Prior to forming KLS, Mr. Lenart was a partner at Biggers and Ohanian LLP, an intellectual property boutique specializing in patent development and enforcement.  Before that, Mr. Lenart was a patent attorney at another intellectual property law firm in Austin.  In both firms, Mr. Lenart was responsible for preparing and prosecuting hundreds of patent applications and providing strategic advice and counsel to in house counsel of various corporations.

Before attending law school, Mr. Lenart worked for several years as a software engineer in numerous industries, most recently in a senior level position with an international telecommunications company.   As a software engineer, Mr. Lenart worked on projects involving enterprise software development, performance analytics, application frameworks, and kernel development. 

Mr. Lenart received his B.A. in Computer Science from the University of Texas at Austin and his J.D. from Southern Methodist University where he graduated cum laude.


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.


Subroto Bose is Senior Director, Global Patent Strategy and IP Operations at Dolby Laboratories.  His responsibilities include managing Dolby’s worldwide patent and trademark operations.  In addition, he advises on patent issues in corporate transactions, acquisitions, open source issues, and issues related to standard setting organizations and standards essential patents.  His prior experience includes working at a number of law firms, where he represented both plaintiffs and defendants before the International Trade Commission (ITC) and federal district courts.  Subroto’s prior experience also includes developing and implementing IP strategies, developing and managing patent portfolios, analyzing large patent portfolios, and providing advice regarding monetization and intellectual property development strategies.


Experience
• Rubrik, Inc.
Senior Intellectual Property Counsel
Aug 2018 – Present
• Nutanix
Senior Counsel, Products and IP
Jan 2017 – Aug 2018
• eBay
Open Source and Patent Counsel
Jul 2015 – Jan 2017
• Illumina
Patent Counsel
Jan 2014 – Jul 2015
• EMC
Associate Counsel - Intellectual Property
Jun 2009 – Jun 2013


Experience
• Tesla
Associate General Counsel
May 2019 – Present10 months
Greater San Diego Area
• Maxwell Technologies
Corporate Counsel & Chief Compliance Officer
Apr 2012 – Present
Vice President, General Counsel & Secretary
Jan 2019 – May 2019
Attorney & Patent Engineer
Jan 2007 – Apr 2012
Greater San Diego Area

Education
• Thomas Jefferson School of Law
J.D.Law
2004 – 2007
• Washington University in St. Louis
B.S.Chemical Engineering
1999 – 2003
• Washington University in St. Louis
Bachelor of Science (BS)Chemical Engineering
1999 – 2003