(8:30 a.m. - 6:00 p.m.)
The Law Governing Post-Grant Practice, including the Fresenius USA v. Baxter Int’l case, and Real-World Experience Practicing Before the Patent Trial and Appeal Board
Registration and Continental Breakfast (8:30 a.m. - 9:00 a.m.)Welcome and Introduction of Speakers (Day One Morning Session) (9:00 a.m. - 9:30 a.m.)Bruce
A. Lehman, Chairman, International Intellectual Property Institute and
former Assistant Secretary of Commerce and Commissioner of the USPTO; Naresh Sritharan, Managing Editor, Bloomberg BNA Intellectual PropertyI. The Fundamentals of Post-AIA Post-Grant Patent Procedures (9:30 a.m. - 11:45 a.m.)Panel:
Former Chief APJs Bruce H. Stoner, Jr., Greenblum & Bernstein,
P.L.C. and Michael R. Fleming, Miles & Stockbridge P.C.; Carol A.
Spiegel; Nancy J. Linck and Michael V. Battaglia, Rothwell Figg, Ernst
& Manbeck, P.C.; and Herbert D. Hart III, McAndrews Held &
Malloy, Ltd.This panel of former APJs, treatise authors, and AIA
experts will give a comprehensive review of the post-AIA statutes,
regulations and PTAB guidance governing Reissue, Ex Parte Reexamination,
Supplemental Examination, Inter Partes and Post-Grant Reviews
(including CBM Patent Reviews), Derivation and Interference Proceedings.Concluding Remarks and Questions (Morning Session) (11:45 a.m. - 12:15 p.m.)Lunch (12:30 p.m. to 2:00 p.m.)Luncheon Address by the Honorable Pauline Newman, Circuit Judge, U.S. Court of Appeals for the Federal CircuitIntroduction of Speakers (Day One Afternoon Session) (2:00 p.m. - 2:15 p.m.)II. Inter Partes and Post-Grant Reviews (including CBM Patent Reviews) (2:30 p.m. - 4:00 p.m.)Panel:
Sharon A. Israel, Mayer Brown LLP; Greg H. Gardella, Oblon, Spivak,
McClelland, Maier & Neustadt, L.L.P.; and Robert Greene Sterne,
Sterne Kessler Goldstein & Fox P.L.L.C.This panel of experts
with experience “in the trenches” will focus on how the governing law
is being applied in practice and how to optimize the possibility of
prevailing. III. Derivation and Interference Procedures (4:00 p.m. - 4:45 p.m.)Panel:
R. Danny Huntington, Rothwell, Figg, Ernst & Manbeck, P.C. and
Thomas L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner,
LLPThis panel of experts with experience “in the trenches” will
focus on how the AIA has changed, or is expected to change, interference
and derivation practice, how Federal Circuit cases are impacting that
practice, and how the new AIA §§ 102 and 103 will present challenges to
the practice.IV. Fresenius USA v. Baxter Int’l and its Impact on Post-Grant Practice (4:45 p.m. - 5:30 p.m.)Panel:
John M. Whealan, Dean, George Washington University; Hans Sauer, Deputy
General Counsel for Intellectual Property, Biotechnology Industry
Organization; Scott L. Cole, McKool Smith; Michael E. Florey, Fish &
Richardson P.C.; and Sanjay Murthy, K&L Gates LLPThis panel of legal scholars and experienced litigators, including Counsel for Fresenius and Baxter, will discuss the merits of Frensenius USA v. Baxter Int’l and give their perspective on the impact the case may have on post-grant patent practice and the U.S. patent system.Concluding Remarks and Questions (Day One Afternoon Session) (5:30 p.m. - 6:00 p.m.)Social Hour (6:00 p.m. - 7:00 p.m.)Day Two (8:30 a.m. - 5:30 p.m.)
Mock Hearings/Conferences with APJs and Insights from Lawyers “In the Trenches”
Continental Breakfast (8:30 a.m. - 9:00 a.m.)Introduction of Speakers (Day Two Morning Session) (9:00 a.m. - 9:15 a.m.)Based
on an actual case, Counsel for Petitioner and Patent Owner will argue
their case before an APJ, or former APJ, and will discuss select
relevant Board decisions influencing how to argue and provide strategies
for maximizing clients’ potential for prevailing at the petition stage
and later at the motion stage.
Judges Michael Tierney, Jennifer Bisk, and Grace Obermann will be featured.V. Motions based on Estoppel/ Privity and Mock Conference (9:15 a.m. - 10:15 a.m.)Counsel:
David Cavanaugh, Wilmer Cutler Pickering Hale and Dorr (for Patent
Owner) and Jennifer Bailey, Erise IP (for Petitioner) VI. Motions for Joinder and Mock Conference (10:15 a.m. - 11:15 a.m.)Counsel:
Matthew L. Cutler, Harness, Dickey & Pierce, PLC (for Patent Owner)
and Eric C. Cohen, Katten Muchin Rosenman LLP (for Petitioner) VII. Discovery Motions and Mock Conference (11:15 a.m. - 12:15 p.m.)Counsel:
James R. Myers, Ropes & Gray LLP (for Patent Owner) and J. Steven
Baughman, Ropes & Gray LLP (for Petitioner)Concluding Remarks and Questions (Day 2 Morning Session) (12:15 p.m. - 12:45 p.m.)Lunch (1:00 p.m. - 2:30 pm)Luncheon Address by the Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal CircuitIntroduction of Speakers (Day Two Afternoon Session) (2:30 p.m. - 2:45 p.m.)VIII. Final Hearing, Motions to Amend Claims, and Mock Final Hearing (2:45 p.m. - 4:45 p.m.)Counsel: Martin Zoltick, Rothwell Figg Ernst & Manbeck and Christopher L. McKee, Banner & Witcoff, Ltd. (for Patent Owner) and
Scott A. McKeown, Oblon, Spivak, McClelland, Maier & Neustadt,
L.L.P. and Todd R. Walters, Buchanan Ingersoll & Rooney (for Petitioner) Concluding Remarks and Questions (Day 2 Afternoon Session) (4:45 p.m. - 5:30 p.m.)
Hon. Pauline Newman, Circuit Judge, U.S. Court of Appeals for the Federal Circuit
Pauline Newman was appointed to the United States Court of Appeals for the Federal Circuit by President Ronald Reagan in 1984. From 1982 to 1984, Judge Newman was Special Adviser to the United States Delegation to the Diplomatic Conference on the Revision of the Paris Convention for the Protection of Industrial Property. She served on the advisory committee to the Domestic Policy Review of Industrial Innovation from 1978 to 1979 and on the State Department Advisory Committee on International Intellectual Property from 1974 to 1984. From 1969 to 1984, Judge Newman served as director, Patent, Trademark and Licensing Department, FMC Corp. From 1961 to 1962 she worked for the United Nations Educational, Scientific and Cultural Organization as a science policy specialist in the Department of Natural Sciences. She served as patent attorney and house counsel of FMC Corp. from 1954 to 1969 and as research scientist, American Cyanamid Co. from 1951 to 1954.Judge Newman earned a B.A. from Vassar College in 1947, an M.A. from Columbia University in 1948, a Ph.D. from Yale University in 1952, and an LL.B. from New York University School of Law in 1958.Hon. Randall R. Rader, Chief Judge, U.S. Court of Appeals for the Federal CircuitRandall Rader was appointed to the United States Court of Appeals for the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Circuit Judge on June 1, 2010. He was appointed to the United States Claims Court (now the U. S. Court of Federal Claims) by President Ronald W. Reagan in 1988.Chief Judge Rader has taught courses on patent law and other advanced intellectual property courses at George Washington University Law School, University of Virginia School of Law, Georgetown University Law Center, the Munich Intellectual Property Law Center, and other university programs in Tokyo, Taipei, New Delhi, and Beijing. Chief Judge Rader has received many awards, including the Sedona Lifetime Achievement Award for Intellectual Property Law, 2009; Distinguished Teaching Awards from George Washington University Law School, 2003 and 2008 (by election of the students); the Jefferson Medal from the New Jersey Intellectual Property Law Association, 2003; the Distinguished Service Award from the Berkeley Center for Law and Technology, 2003; the J. William Fulbright Award for Distinguished Public Service from George Washington University Law School, 2000; and the Younger Federal Lawyer Award from the Federal Bar Association, 1983.Before appointment to the Court of Federal Claims, Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary. From 1975 to 1980, he served as Counsel in the House of Representatives for representatives serving on the Interior, Appropriations, and Ways and Means Committees. He earned a B.A. in English from Brigham Young University in 1974 and a J.D. from George Washington University Law School in 1978.Jennifer C. Bailey, Erise IP P.A.
Jennifer Bailey specializes in post-grant review of patents and patent prosecution in the electrical, computer software, and electromechanical arts. She was lead counsel for Petitioner, Garmin International, in the first inter partes review filed and argued before the PTAB, which resulted in all reviewed claims being held unpatentable. She has prepared and prosecuted hundreds of patent applications covering a wide range of technologies, including encryption and authentication, digital signal processing, payments systems and financial services, GPS devices, and medical devices. Ms. Bailey regularly presents to industry and trade organizations on intellectual property issues and has authored articles regarding reexaminations and inter partes reviews published in the IP trade magazines Intellectual Property Today and Landslide.Michael V. Battaglia, Rothwell, Figg, Ernst & Manbeck, P.C.Michael Battaglia’s practice focuses on post-grant patent proceedings, patent litigation, and preparation and prosecution of patent applications. His post grant proceedings experience includes ex parte reexaminations, inter partes reexaminations, and covered business method patent reviews. He works primarily in the electrical, computer hardware, computer software, and biotechnology fields but has experience working in the business method, telecommunications, and mechanical fields. Mr. Battaglia also has broad experience handling design patent, trademark, and copyright matters including opinion work and preparation and prosecution of design patent applications and trademark applications.Additionally, Mr. Battaglia has six years of experience as a patent examiner at the United States Patent and Trademark Office (USPTO), where he examined applications in the field of dynamic information storage and retrieval, worked as a training assistant in the USPTO’s Patent Academy, and represented examiners on a joint labor-management committee. He left the USPTO as a primary examiner with full signatory authority. While working at the USPTO, Mr. Battaglia attended the George Washington University Law School, earning a J.D. in 2009.J. Steven Baughman, Ropes & Gray LLPSteve Baughman is an intellectual property partner in Ropes & Gray’s Washington, D.C. office, where he recently returned after spending three years in Japan to open the firm’s office in Tokyo. Mr. Baughman coordinates the firm’s post-grant Patent Office invalidity challenge practice, and in connection with infringement disputes and litigation he is representing and advising clients on the new post-grant mechanisms that have become available as a result of the Leahy-Smith America Invents Act of 2011, including covered business method (CBM) and inter partes review (IPR) trials. He also conducts strategic ex parte patent reexaminations (and ongoing inter partes patent reexaminations). He is counsel on 15 of the first 25 petitions for covered business method patent review filed at the PTO’s new Patent Trial and Appeal Board, and on all four of the petitions submitted the day the transitional program for CBM patents became available, September 16, 2012, including the first petition on which the Board instituted trial, resulting in the first oral hearing before the Board, and the Board’s first final written decision in a post-grant trial. Mr. Baughman earned a B.S.E. in Electrical Engineering from Princeton and a J.D. from Harvard Law School.
Jennifer S. Bisk, Patent Trial and Appeal Board
Jennifer Bisk is currently an Acting Lead Administrative Patent Judge on the Patent Trial and Appeal Board, where she handles trial proceedings brought under the America Invents Act. Judge Bisk clerked for the Honorable Richard Linn of the U.S. Court of Appeals for the Federal Circuit and the Honorable George W. Miller of the U.S. Court of Federal Claims. She earned a law degree, summa cum laude, from George Mason University School of Law, a Masters of Computer Science from Stanford University, and a Bachelor of Engineering in Electrical Engineering and Computer Science from Vanderbilt University.David L. Cavanaugh, Wilmer Cutler Pickering Hale and Dorr LLPDavid Cavanaugh is a Partner and Chair of the Post-Grant Patent Proceedings Group at Wilmer Hale. Prior to joining the firm, Mr. Cavanaugh was a senior patent counsel in the legal department of Boston Scientific Corporation, responsible for the intellectual property matters in the radiology, neurology, urology and endoscopy divisions. Prior to his work with Boston Scientific, Mr. Cavanaugh was associated with Wolf, Greenfield and Sacks in Boston, where he provided patent support to a variety of medical device clients. He also has been a patent examiner at the United States Patent Office, where he examined patent applications in a variety of technologies. Mr. Cavanaugh earned a J.D. from George Washington University, where he was selected to study at the Max-Plank-Institute for Comparative Patent Law in Munich. He earned a master's degree from Washington Theological Union and his bachelor's degree in mechanical engineering from Villanova University. He is a member of the Pi Tau Sigma National Mechanical Engineering Honor Society.Eric C. Cohen, Katten Muchin Rosenman LLPEric Cohen is a registered patent attorney with Katten Muchin Rosenman LLP. He has litigated a wide variety of patent infringement cases and has represented clients before federal courts, the U.S. International Trade Commission, and the U.S. Patent and Trademark Office, including Inter Partes Review proceedings. Mr. Cohen lectures and writes frequently on intellectual property law and has presented for the Federal Circuit Bar Association, Intellectual Property Owners Association, Patent Resources Group, the Practicing Law Institute, and the International Anticounterfeiting Coalition. Mr. Cohen earned a J.D., cum laude, from the University of Miami School of Law, where he served as note editor of the law review, and a B.S. from Case Western Reserve University.Scott L. Cole, McKool Smith, P.C.Scott Cole is a principal in the Austin office of McKool Smith, P.C. He represents a wide range of clients in commercial and intellectual property matters with a focus on representing patent holders in high stakes cases. He has tried two dozen cases to resolution and has won three nine-figure jury verdicts since graduating from the University of Texas Law School. He has been with McKool Smith since 2001.Matthew L. Cutler, Harness, Dickey & Pierce, PLCMr. Cutler is a principal in the St. Louis office of Harness, Dickey. His litigation practice encompasses the handling of all contested intellectual property matters, including the new inter partes review proceedings (and soon, post-grant review proceedings). Mr. Cutler is a leader of Harness, Dickey’s Patent Office litigation department and hosts a website dedicated to the issues that arise in Patent Office litigation: www.IPR-PGR.com. He is also the author of a well-regarded quarterly report on the statistics that underlie inter partes and post grant review proceedings. Mr. Cutler earned a Bachelor of Science from the University of Notre Dame and a Juris Doctor from Washington University.Michael R. Fleming, Miles & Stockbridge P.C. and former APJMichael R. Fleming, former Chief Administrative Patent Judge of the U.S. Patent and Trademark Office (USPTO), is a member of Miles & Stockbridge’s Intellectual Property Practice Group. His six-year tenure as Chief Judge capped more than 30 years with the USPTO, including 17 years as an Administrative Patent Judge and four years as a Supervisory Patent Examiner. Throughout his career with the USPTO, Mr. Fleming actively participated in establishing many of the present patent procedures and policies of the USPTO, including many of the federal rules for Patent Office examination. He was awarded the Department of Commerce’s Gold Medal for his work on the official guidelines for subject matter eligibility, which are critical to prosecuting high-tech patents.Mr. Fleming is knowledgeable in all aspects of USPTO inter partes proceedings and all areas of strategic patent prosecution and management. He earned a law degree from George Mason University Law School, a master’s degree in electrical engineering from George Washington University, and a bachelor’s degree in electrical engineering from Virginia Polytechnic Institute.Michael E. Florey, Fish & Richardson P.C.Michael Florey is a principal shareholder of Fish & Richardson P.C. He is a 1985 graduate of Carleton College and earned a J.D., magna cum laude, from the University of Illinois College of Law in 1988. Mr. Florey served as Law Clerk to United States District Judge Robert G. Renner in the District of Minnesota from 1988-1990 and then practiced with the Dorsey & Whitney law firm in Minneapolis from 1990-1995. Mr. Florey’s practice focuses on large, complex lawsuits involving patents, trade secrets, and technology joint ventures. Relevant to this Conference, he is counsel for Fresenius in the Fresenius USA, Inc. v. Baxter Int’l case, as well as the parallel proceeding In re Baxter. He acted as trial counsel for Fresenius at both trials in the district court. He authored the briefs submitted to the Court of Appeals for the Federal Circuit by Fresenius, including the briefs that ultimately lead to dismissal of all remaining claims against Fresenius. Additionally, Mr. Florey authored Fresenius’s brief amicus curiae in connection with Baxter’s appeal to the Federal Circuit from the adverse ruling by the USPTO’s Board of Patent Appeals and Interferences.Greg H. Gardella, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.Greg Gardella is a partner in the Post-Grant Practice Group of Oblon Spivak LLP. Mr. Gardella is known for handling many of the highest stakes post-grant matters ever adjudicated by the United States Patent and Trademark Office. He regularly serves as lead counsel for both challengers and patent owners in matters having stakes running into the billions of dollars. As of June 2013 he was lead counsel on more AIA post-grant proceedings pending before the Patent Trial and Appeal Board than any other practitioner in the United States.Prior to joining Oblon Spivak, Mr. Gardella was a partner at Irell & Manella, LLP. While there, he chaired the Reexamination Practice Group and oversaw the training of lawyers and patent agents related to Patent Office proceedings. He holds a Bachelor of Science in Mechanical Engineering from the University of Michigan and a Master of Science in Electrical Engineering from the University of Minnesota. He earned a Juris Doctor, cum laude, from University of Michigan School of Law.Herbert D. Hart III, McAndrews Held & Malloy, Ltd.Herb Hart is a shareholder in McAndrews, Held, & Malloy, LTD. He has many years’ experience in litigation before the Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences), and he has served as an expert witness on interference practice. His primary focus is on life science and chemical technologies. Among the subject areas of Herb’s practice have been antibodies and antibody therapies, small molecule drugs, peptide mimetics, interventional cardiology, hematology instruments and controls, polyolefin catalysis and processes, lubricants and fuels, and surgical navigation.Mr. Hart has held a number of leadership positions in IPO, AIPLA, and the ABA Section of Intellectual Property Law. He earned a Bachelor of Arts in Chemistry from Indiana University at Bloomington and a Juris Doctor degree also from Indiana University at Bloomington.R. Danny Huntington, Rothwell, Figg, Ernst & Manbeck, P.C.Danny Huntington is partner at Rothwell, Figg, Ernst & Manbeck, P.C. and a former chemist for The Gillette Research Institute. He is involved in all phases of intellectual property law including United States and foreign patent prosecution; litigation in the federal and state courts; licensing; and general client counseling. He has extensive patent interference experience, with particular experience in biotechnology and pharmaceuticals. Mr. Huntington earned a B.S. in Chemistry from Indiana University and a J.D. from The George Washington University Law School.Thomas L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLPTom Irving has nearly 40 years of experience in the field of intellectual property law in Finnegan's D.C. and Brussels offices. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, and infringement, enforceability, and validity analysis in the chemical/pharmaceutical fields, as well as litigation. He has been involved as lead counsel in numerous patent interferences, reissues, and reexaminations, and has also served as an expert witness in patent litigation. Mr. Irving earned a Bachelor’s of Arts in Chemistry from the University of Utah and a Juris Doctor degree from Duke University School of Law.Sharon A. Israel, Mayer Brown LLPSharon Israel is a partner in the Houston office of Mayer Brown LLP, specializing in intellectual property law with an emphasis in patent litigation, opinion work, and client counseling. She has acted as counsel in cases before district and appellate courts, the International Trade Commission, and the Patent Trial and Appeal Board and has litigated patents relating to a variety of technologies, including cellular communications systems and devices, consumer electronics and medical devices, among others. Ms. Israel previously served as a law clerk to the Hon. Alan D. Lourie, U.S. Court of Appeals for the Federal Circuit.Ms. Israel is a frequent speaker on patent-related topics and serves in leadership roles in numerous organizations, including serving as President-Elect of the American Intellectual Property Law Association. Before joining Mayer Brown in 2005, she practiced with two other national law firms. Adding a practical focus to her IP practice, Ms. Israel was an engineer with General Electric Company before entering law school. She earned a BSEE from Massachusetts Institute of Technology, a Master of Business Administration from Emory University School of Business Administration, and a Juris Doctor from Emory University School of Law.Bruce A. Lehman, Chairman, International Intellectual Property Institute and former Assistant Secretary of Commerce and Commissioner of the USPTOBruce Lehman is the Chairman and President of the International Intellectual Property Institute (IIPI), a not-for-profit that promotes the creation of modern intellectual property systems and the use of intellectual property rights as a mechanism for investment, technology transfer and the creation of wealth in all countries of the world. Prior to founding IIPI, Mr. Lehman served as Assistant Secretary of Commerce and U.S. Commissioner of Patents and Trademarks under the Clinton administration. Prior to that, Mr. Lehman was a partner in the Washington, D.C. law firm Swidler & Berlin. He also worked in the U.S. House of Representatives as counsel to the Committee on the Judiciary and chief counsel to the Subcommittee on Courts, Civil Liberties, and the Administration of Justice. He was the Committee’s principal legal adviser in the drafting of the 1976 Copyright Act, the 1980 Computer Software Amendments, and 1982 Amendments to the Patent Laws. Mr. Lehman attended the University of Wisconsin, from which he earned a B.A. in 1967 and a J.D. in 1970. He was named “Lawyer of the Year” by the National Law Journal in 1994.Nancy J. Linck, Rothwell Figg, Ernst & Manbeck, P.C.Nancy Linck formerly served as the Solicitor for the U.S. Patent and Trademark Office from 1994 through 1998. Nancy also served as an Administrative Patent Judge on the Board of Patent Appeals and Interferences, now called the Patent Trial and Appeal Board, from 2006 until she retired from government service in 2008. After retiring, Judge Linck joined the intellectual property law firm of Rothwell, Figg, Ernst & Manbeck in Washington, D.C., where she focuses on post-grant practice before the Office. She is a member of the firm’s USPTO Trial Practice Group.Judge Linck earned a J.D., magna cum laude, from Western New England University School of Law; a Ph.D. in Inorganic Chemistry from University of California, San Diego; an M.S. in Biotechnology from Johns Hopkins University; and a B.S., with honors, in Chemistry from University of California, Berkeley. In 1986 and 1987, Judge Linck served as a law clerk for the Federal Circuit’s Judge Pauline Newman. She has been active in a number of professional societies throughout her career, including the ABA IPL Council, the AIPLA Board of Directors, and Bloomberg BNA's Patent Trademark & Copyright Journal’s Advisory Board. In 2003 and 2004, Judge Linck was President of the Giles Rich American Inn of Court.Christopher L. McKee, Banner & Witcoff, Ltd.Christopher McKee is a principal shareholder of Banner & Witcoff, Ltd. He earned a Bachelor of Science in industrial engineering from Iowa State University in 1983 and a Juris Doctor from the National Law Center of George Washington University in 1988. Mr. McKee has focused on patent litigation, counseling and prosecution throughout his career. He serves as an adjunct law professor at the Georgetown University Law Center, teaching a class on Intellectual Property Litigation, Pretrial Skills. Mr. McKee began his career in intellectual property law with the U.S. Patent and Trademark Office (USPTO), where he served as a patent examiner from 1984-1986. Prior to the America Invents Act (AIA) going into effect, Mr. McKee gained expertise handling litigation-related patent reexaminations, both ex parte and inter partes. This set a solid foundation for his handling of the new post-grant proceedings available under the AIA.Recently, Mr. McKee’s practice has been largely devoted to handling of inter partes review proceedings (IPRs) before the USPTO’s Patent Trial and Appeal Board (PTAB). He served as lead counsel on behalf of the patent owner in two of the earliest filed IPRs. One of those (IPR 2012-00041) was the first to conclude in denial of the IPR petition in its entirety. The second (IPR 2012-00042) was argued in November 2013 and is due to have a written decision issue by February 2014. This IPR led to a district court challenge to the PTAB’s decision to institute the IPR over an asserted § 315(b) bar. That case is currently on appeal before the U.S. Court of Appeals for the Federal Circuit. Mr. McKee has first-hand experience with a variety of “cutting-edge” procedural and substantive IPR-specific issues, including motions to amend claims.Scott A. McKeown, Oblon Spivak, McClelland, Maier & Neustadt, L.L.P.Scott McKeown is a partner with Oblon Spivak and serves as a member of the firm's Management Committee. Scott co-chairs the firm’s Post Grant Patent Practice and leads the post grant patent team responsible for electronics, wireless communications, software and computer-related inventions, and business methods.Mr. McKeown handles all aspects of post-issuance proceedings at the United States Patent and Trademark Office’s (USPTO) Patent Trial & Appeal Board (PTAB) and serves as post grant counsel to many of the world’s most well known technical innovators. He offers his clients comprehensive post-grant patent counseling including appeals to the Court Of Appeals for the Federal Circuit (CAFC), and counseling on concurrent litigation matters. He has been identified by Intellectual Asset Management as a “thought leader” and one of the world’s leading attorneys practicing before the PTAB. Mr. McKewon earned a Bachelor’s of Science in Electrical Engineering from Temple University and a Juris Doctor from Temple University School of Law.Sanjay K. Murthy, K&L Gates LLP
Sanjay Murthy is a partner with K&L Gates. A registered patent attorney, he focuses on high-stakes litigation matters throughout the U.S. and before the U.S. International Trade Commission. Recent successes include acting as trial counsel in obtaining a complete defense verdict in CareFusion v. Sigma/Baxter (S.D. California), which was named a top defense verdict in California by the Daily Journal. Relevant to this conference, he is counsel for Baxter in its on-going litigation with Fresensius (Fresensius USA Inc. v. Baxter Int'l), involving hemodialysis technology. He acted as trial counsel for Baxter in the district court as well as authoring briefs submitted to the Court of Appeals for the Federal Circuit. In addition to his litigation experience, Mr. Murthy has extensive involvement working on contested proceedings in the USPTO, including ex parte reexaminations and inter partes reviews.
Mr. Murthy earned an LL.M. in Intellectual Property law from George Washington University Law School, a J.D. from California Western School of Law, and a B.S. in biology from Loyola University.
James R. Myers, Ropes & Gray LLP
Jim Myers is an attorney with Ropes & Gray who works with clients on complex civil litigation, especially patent litigation. He helps clients harmonize patent litigation choices with their business objectives, executing tailored, multi-faceted plans of action based on the deep and ongoing experience of a team of domain specialists assembled from client personnel and outside law firms. These plans include: nationwide federal district court litigation, patent reexaminations, Federal Circuit appeals, Supreme Court and Federal Circuit amicus briefs, collaborative patent defense efforts, multi-district litigation, patent licensing, and patent strategy. Mr. Myers earned a B.A., cum laude, from Harvard University and a J.D. from Harvard Law School.
Grace Karaffa Obermann, Patent Trial and Appeal Board
Grace Karaffa Obermann is a Lead Administrative Patent Judge of the Patent Trial and Appeal Board, where she handles trial proceedings brought under the America Invents Act. Before joining the Board, Judge Obermann was in private practice for eight years at a patent law firm in the Washington, D.C. area. She is a former Assistant Director of the U.S. Department of Justice, where she managed a staff of trial attorneys that litigated patent infringement actions brought by or against the United States in federal court. During her twelve-year tenure at the Justice Department, she served as lead counsel for the United States in a wide range of unusually complex high-value patent infringement lawsuits. Judge Obermann clerked for the Honorable Raymond C. Clevenger, III of the U.S Court Appeals for the Federal Circuit. She earned a law degree, with honors, from George Washington University, where she was a member of the Law Review, and an undergraduate degree in Chemistry from Rutgers University. Before law school, she was a bench chemist in a research laboratory.
Hans Sauer, Deputy General Counsel for Intellectual Property, Biotechnology Industry Organization
Hans Sauer is Deputy General Counsel for Intellectual Property for the Biotechnology Industry Organization, a major U.S.-based trade association representing over 1,100 biotechnology companies from the medical, agricultural, environmental and industrial sectors in 31 countries. At BIO, Dr. Sauer advises the organization’s board of directors, amicus committee, and various staff committees on patent and other intellectual property-related matters. Prior to taking his current position at BIO in 2006, he was Chief Patent Counsel for MGI Pharma, Inc. in Bloomington, Minnesota, and Senior Patent Counsel for Guilford Pharmaceuticals Inc. in Baltimore, Maryland. Dr. Sauer has 18 years of in-house experience in the biotechnology industry, first as a research scientist and later as a lawyer. He worked on several drug development programs, being responsible for patent prosecution and portfolio oversight, clinical trial health information privacy, and sales and marketing legal compliance. He did his postdoctoral fellowship at Genentech, Inc. in South San Francisco and earned an M.S. from the University of Ulm in his native Germany; a Ph.D. in Neuroscience from the University of Lund, Sweden; and a J.D. from Georgetown University, where he serves as adjunct professor.Carol A. SpiegelCarol Spiegel is a former administrative Patent Judge on the Board of Patent Appeals and Interferences, currently the Patent Trial and Appeal Board. She served on the Board from 1999 until 2010 before retiring from federal government service. Judge Spiegel specialized in the biotechnology and chemical arts adjudicating ex parte appeals, reissue, ex parte and inter parte reexaminations as well as interference cases within the Interference Trial Section. She authored numerous decisions including the Rasmussen v. SmithKline Beecham Corp. Interference (finasteride/prostate cancer), the POD-NERS, L.L.C. reexamination (Enola bean obviousness controversy), and the Competitive Technologies, Inc. reexamination (Allen et al. patent involved in Lab Corp. v. Metabolote Lab. Litigation). Prior to her appointment to the Board, Judge Speigel served as a Primary Examiner in the Biotechnology Group. She has received numerous awards at the Patent Office, including individual Bronze and team Gold Medals, has co-authored a book on post-grant patent practice, and currently works as an I.P. consultant. Judge Spiegel earned a J.D. from from the George Washington University School of Law, a Masters in Biotechnology from Johns Hopkins University, and a B.S. in Chemistry from Mundelein College of Loyola University (Chicago).Robert Greene Sterne, Sterne Kessler Goldstein & Fox P.L.L.C.Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox, an intellectual property specialty law firm located in Washington, D.C. Mr. Sterne is one of the leading patent attorneys in the new AIA contested proceedings and legacy patent reexamination in the United States. He was involved with the U.S. Senate staff in the architecture and drafting of the AIA contested proceedings at the USPTO and is involved in more of the new contested proceedings and legacy reexaminations than practically any other attorney. Mr. Sterne is the Editor-in-Chief of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act. He is also the author of the most prominent article on patent reexamination, published in Volume 11 of The Sedona Conference Journal, as well as many other articles on the topic. In 2012, Mr. Sterne received the Sedona Lifetime Achievement Award and Attorney of the Year "Good Scout" Award. He is an electrical engineer by training, having earned BSEE and M.S. degrees from Tufts University. He also earned a J.D. from the University of Maryland Law School.Bruce H. Stoner, Jr., Greenblum & Bernstein, P.L.C. and former APJBruce Stoner, Jr. is a former Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, the tribunal recently renamed the Patent Trial and Appeal Board by the Leahy-Smith America Invents Act. Appointed to the Board in 1986, Judge Stoner became Chief Judge in 1995 and served in that capacity until his retirement from Federal service on October 31, 2003. He joined Greenblum & Bernstein P.L.C. in November 2003, where he serves as Chairman of the firm’s Post-Grant Patent Proceedings Practice Group. He also serves as an expert witness and consultant on patent office practice and procedure.Judge Stoner earned a Bachelor of Science in Aerospace Engineering from The Pennsylvania State University and a Juris Doctor, cum laude, from The Washington College of Law of The American University. He served as a Vice Chair of IPO's Patent Law, U.S. Committee from 2004 to 2007 and as an Adjunct Professor of Law at William & Mary's Marshall-Wythe School of Law in Williamsburg, Virginia from 2005 to 2013.
Judge Michael Tierney, Patent Trial and Appeal Board
Judge Michael Tierney is currently a Lead Administrative Patent Judge on the Patent Trial and Appeal Board, where he handles chemical and electrical ex parte appeals as well as trial proceedings brought under the America Invents Act. As part of the Offices' AIA implementation, Lead Judge Tierney led the Board's comprehensive effort on the trial rulemakings. He earned a J.D. and a B.S. in Chemical Engineering from the University of Washington and is a member of the Washington State and District of Columbia bars. Before joining the Board, Judge Tierney was a senior patent associate in private practice, and he also has worked as a patent examiner in the chemical arts.Todd R. Walters, Buchanan Ingersoll & Rooney PC
Todd Walters, a shareholder at Buchanan Ingersoll & Rooney PC, is chair of the firm's Post-Grant Practice Group. He focuses his practice on many phases of intellectual property law, with a special emphasis on inter partes matters before the United States Patent and Trademark Office. he has represented clients in well over one hundred inter partes matters before the USPTO and in federal courts and is currently representing clients in numerous inter partes review proceedings. Mr. Walters has reversed decisions of the USPTO before U.S. District Courts, successfully handled appeals to the U.S. Court of Appeals for the Federal Circuit, and provided counseling in most other aspects of intellectual property, including patent procurement, infringement and validity analysis, opinion writing, and federal litigation. He previously served as a member of Buchanan's Board of Directors, Executive Management team, and co-chair of the firm's IP Section. Additionally, he was vice-chair of the Patent Interferences Committee of the American Intellectual Property Law Association. Mr. Walters is identified as one of the "World's Leading Life Sciences Patent Litigators" by Intellectual Asset Management (IAM) magazine. He was noted in IAM's Patent 1000 as "one of the country's top interference experts," as well as a"thorough, careful and diligent lawyer." In 2013, he was recognized by Managing Intellectual Property, Chambers USA, and Martindale-Hubbell and was named as one of Washington's best lawyers by Washingtonian Magazine. He earned a J.D. from The George Washington University Law School and a B.S.Ch.E. from the University of Maryland. He is admitted to practice in Virginia as well as before the U.S. Court of Appeals for the Federal Circuit and the United States Patent and Trademark Office.John M. Whealan, Dean, George Washington UniversityBefore joining George Washington 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. 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 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. Dean Whealan earned a Bachelor of Science from Villanova University, a Master of Science from Drexel University, and a Juris Doctor from Harvard University.Martin M. Zoltick, Rothwell Figg, Ernst & Manbeck, P.C.Martin Zoltick is a partner at Rothwell, Figg, Ernst & Manbeck, P.C. A substantial portion of Mr. Zoltick's practice is focused on handling matters before the U.S. Patent and Trademark Office, including post-grant proceedings before the Patent Trial and Appeal Board, interferences and reexaminations, and the preparation and prosecution of patent applications in a broad range of technologies and fields with a concentration in the areas of computer software, internet and e-commerce, and telecommunications. Mr. Zoltick is a competitive Masters swimmer and recently competed in the 2013 Masters Swimming Spring National Championships as well as completing several open water swims in the U.S. and abroad. He earned a J.D. from the Catholic University Columbus School of Law and a B.S. in computer science from Northeastern University.