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  • How Allyship Advances Diversity & Inclusion in the IP Legal Profession: Part 1-Personal Experiences

    Contains 3 Component(s) Includes a Live Web Event on 01/28/2021 at 2:00 PM (EST)

    The focus of this first allyship webinar will be focused on speakers sharing personal experiences where they experienced good or poor allyship.  The speakers, in the first webinar, will also share practical tips on how to be better allies – especially in the IP field.

    The focus of this first allyship webinar will be focused on speakers sharing personal experiences where they experienced good or poor allyship.  The speakers, in the first webinar, will also share practical tips on how to be better allies – especially in the IP field. 

    Eldora Ellison

    Director

    Sterne, Kessler, Goldstein & Fox, PLLC

    Eldora is a director at Sterne, Kessler, Goldstein & Fox. Over the course of her 24-year career, Dr. Ellison has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Dr. Ellison’s practice also includes preparing and prosecuting patent applications; evaluating patent portfolios; counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. She represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations. She is a member of the firm’s Executive Committee, and she previously chaired the firm’s Professional Development Committee and the Diversity Committee. She earned her J.D. from Georgetown University Law Center, her Ph.D. in biochemistry, molecular and cell biology from Cornell University, and her B.S. in biology from Haverford College.

    Natalie Gonzales (Moderator)

    Partner

    Baker Botts

    Natalie practices in all areas of intellectual property law, including patent and trade secret litigation, patent prosecution, and IP and technology transactions. Ms. Gonzales works on patent litigation matters involving a variety of technologies, including mechanical and electrical devices and computer systems. Her litigation experience also includes copyright infringement and Lanham Act actions. Ms. Gonzales practices before the U.S. Patent and Trademark Office, preparing and prosecuting patent applications involving an equally wide array of technologies. Ms. Gonzales advises clients on the IP-related aspects of corporate and technology transactions, including mergers, acquisitions, joint ventures, joint development arrangements, licensing, contracting and employment arrangements. Ms. Gonzales assists clients in crafting and negotiating agreements relating to IP ownership, IP transfers, confidentiality, software development and other commercial arrangements, including MSAs and SaaS agreements.

    Aamir Haq

    VP and Assistant General Counsel

    Hewlett Packard Enterprise

    Aamir is a vice president and assistant general counsel at Hewlett Packard Enterprise (HPE) in the patents group. Aamir formulates and executes an IP strategy for various HPE businesses. In addition, Aamir supervises a team of attorneys handling worldwide patent prosecution, preparation, and portfolio management tasks. Prior to joining HPE, Aamir spent several years at Foley & Lardner LLP where he primarily focused on patent preparation and prosecution. Prior to the firm, Aamir worked as a patent examiner at the USPTO. Aamir is active in the IP community, including currently serving as co-chair for IPO’s Patent Office Practice Committee.

    Ritu Singh

    Partner

    Dinsmore & Shohl LLP

    Ritu is a partner at Dinsmore & Shohl LLP focusing her practice on patent preparation and prosecution. She has a B.S. in Industrial Engineering from Northwestern University and an M.S. in Electrical & Computer Engineering and J.D. from The Ohio State University. She has significant experience working with intellectual property in the biomedical, mechanical, software, and electronic realms. She is actively involved as a community volunteer, ranging from roles as Treasurer of the South Asian Bar Association of North America Foundation to being Co-Chair of the Asian IP Professionals Resource Group of the IPO’s D&I Committee.  

    Joshua Simmons

    Partner

    Kirkland & Ellis, LLP

    Joshua focuses his practice on appellate and trial court litigation, intellectual property counseling and strategic portfolio management, as well as regulatory and legislative policy.  This “exceptional” and “creative” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR) litigates copyright, patent, right of publicity, trademark, trade secret, and unfair competition cases—particularly complex cases and those of first impression—along with contract, licensing, and domain name disputes.  In addition to maintaining a full-time litigation practice, Josh is a member of Kirkland’s Diversity & Inclusion Committee, and the Coordinator of its New York Kirkland Pride affinity group.  He also is a frequent speaker and author on emerging trends in intellectual property, as well as an active member of the intellectual property bar, including serving as Vice Chair of IPO’s Copyright Law & Anti-Piracy Committee, and a former Vice Chair of its Software-Related Inventions Committee.

    Richard Watkins

    Sr. Principal Legal Counsel

    Medtronic

    Richard is a senior principal legal counsel at Medtronic and has practiced IP Law for 20 years. He holds a BS in Chemistry from Morehouse College and a law degree from Georgetown University. Prior to Medtronic, Richard spent time in private practice and corporate in house positions in Philadelphia, Chicago, and Memphis. He has been active in the IPO Diversity and Inclusion committee and is currently serving as the Co-Chair of the Black IP Professionals in IPO.

     

  • Videoconferencing at the EPO

    Contains 3 Component(s) Includes a Live Web Event on 01/27/2021 at 1:00 PM (EST)

    This webinar will provide an overview of how videoconferencing is being relied on increasingly for formal hearings at the European Patent Office – for examination, oppositions and appeals – and how this provides an option for applicants/proprietors and opponents to participate or observe from their home countries.

    This webinar will provide an overview of how videoconferencing is being relied on increasingly for formal hearings at the European Patent Office – for examination, oppositions and appeals – and how this provides an option for applicants/proprietors and opponents to participate or observe from their home countries.  The speakers, from both private practice and industry, will summarize the changes to EPO rules and procedures (including December 2020 updates), and then share their tips and experiences. They will also mention EPO management’s plans to promote videoconference examiner consultations, which have been an effective tool for US attorneys working with the USPTO.

    Mike Jennings

    Partner

    AA Thornton

    is a UK & European patent attorney and a partner at AA Thornton. Mike spent half his career in industry, within IBM’s IP law department, moving to AA Thornton in 2007. He leads AA Thornton’s electrical & ICT patent team and handles a large computer-implemented invention case load at both the EPO and UKIPO, and has vast experience with EPO oppositions and appeals for a wide range of technologies. Mike has been a member of CIPA’s Computer Technology Committee since 2006, and provides training for UK patent attorneys on patenting computer-implemented inventions including AI and computer simulation. He contributed to CIPA’s recent Amicus Curiae brief on computer simulation for the EPO Enlarged Board of Appeal, and CIPA’s review of the EPO’s patentability guidelines and its recent review of IP issues for AI.

    James Pickford

    Director and Assistant General Counsel

    Procter & Gamble

    is a European and UK qualified Patent Attorney. James provides Patent and Design support and advice primarily to the P&G fabric and home care business which includes well known brands such as Tide, Downy, Ariel, Fairy, Gain, Bold and Lenor. James has worked for P&G for 11 years, starting first in Brussels, Belgium and now working in Newcastle, UK.  Prior to starting at P&G, James completed a Diploma in Intellectual Property Law at the University of Manchester (UK), a PhD at the University of Sheffield (UK) in Molecular Microbiology and Biochemistry, and an undergraduate degree in Microbiology and Biotechnology at the University of Manchester (UK).

    Gwilym Roberts

    Honorary Secretary, CIPA and Partner

    Kilburn & Strode

    advises clients on all aspects of the patent process including IP audit and capture, IP filing strategies and patent portfolio management techniques. He acts for a range of clients including individuals, SMEs, Universities, and spin outs through to multi-nationals and handles a broad and diverse range of cases before the UK Patent Office, EPO and WIPO.

  • Sanofi, Vanda, and GSK, a New Year Voyage through the Land of Induced Infringement

    Contains 6 Component(s), Includes Credits Includes a Live Web Event on 01/21/2021 at 2:00 PM (EST)

    The Federal Circuit decisions in Sanofi v. Watson and Vanda v. Westward provide blue prints for possibly obtaining, based on Phase III clinical trial results, many more years of U.S patent exclusivity. Please join our expert panel of Meg Tomaska of Eli Lilly & Co., Sarah Hooson of Merck & Co. Inc., and Daniela Gill-Carey of UCB Biopharma SRL, moderated by Tom Irving of Finnegan, to learn all about it.

    The Federal Circuit decisions in Sanofi v. Watson and Vanda v. Westward provide blue prints for possibly obtaining, based on Phase III clinical trial results, many more years of U.S patent exclusivity. Please join our expert panel of Meg Tomaska of Eli Lilly & Co., Sarah Hooson of Merck & Co. Inc., and Daniela Gill-Carey of UCB Biopharma SRL, moderated by Tom Irving of Finnegan, to learn all about it. 

    Tom Irving (Moderator)

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    Tom Irving is a partner with Finnegan. He has more than 40 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.

     

    Daniela Gill-Carey

    Associate General Patent Counsel

    UCB Biopharma SRL

    Daniela Gill-Carey holds a dual qualification as a European and as a UK Chartered patent attorney and is currently an associate general patent counsel within the UK IP department of UCB Biopharma. She supports all patent-related activities of various pre-clinical and clinical programs and biopharmaceutical technologies. Daniela started her career in the patent department of Procter and Gamble, before joining the pharmaceutical sector in 2008, first at TEVA and then at Novartis. Prior joining UCB, she led the IP department of Proteome Sciences, a British/German bioscience company. Before entering the patent profession, she received a PhD in Biochemistry from the University of Zurich and a MSc in Intellectual Property Law from the ETH in Zurich (Switzerland).

    Sarah Hooson

    Director of the Intellectual Property Group

    Merck & Co.

    Sarah Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ, having gained her initial legal patent experience while working at GlaxoSmithKline (GSK). Sarah’s present responsibilities include patent preparation, prosecution, and due diligence support for small molecule, vaccine, and antibody programs in human and animal health. Sarah received her bachelor’s degree in Biomedical Engineering from Georgia Institute of Technology, and her J.D. from Widener University. Sarah gained considerable bio-pharmaceutical research and development and vaccine process development experience while working as an engineer at Merck, GSK and MedImmune 

    Margaret Tomaska

    Patent Attorney

    Eli Lilly and Co.

    Margaret Tomaska is a patent counsel for Eli Lilly and Co. She earned her law degree from Georgetown University and has been with Eli Lilly since May 2018. Previously, she worked for GlaxoSmithKline. 

  • Standing to Sue: Lessons from Recent Cases on Licensing, Assignment, and Ownership (RECORDING)

    Contains 7 Component(s), Includes Credits

    Several recent cases illustrate the complexity of patent rights transfer and licensing. Our panel -- two in-house counsel in different technology sectors and a licensing expert in private practice -- will explain basic principles to help patent owners avoid pitfalls, recognizing that the devil is in the details of any transaction.

    The decision to sue for patent infringement is not one to be taken lightly. Plaintiffs can be frustrated if they find out they don’t have the right to do so after incurring the effort and expense of bringing suit. Likewise, a company that thinks it has rid itself of an unneeded patent does not want to be forced to be a plaintiff in league with the “buyer” of the patent. 

    Several recent cases illustrate the complexity of patent rights transfer and licensing. Our panel -- two in-house counsel in different technology sectors and a licensing expert in private practice -- will explain basic principles to help patent owners avoid pitfalls, recognizing that the devil is in the details of any transaction. Among the topics they will discuss: 

    • How questions might arise about an exclusive licensee’s right to sue. 
    • Lone Star Silicon v. Nanya (Fed. Circ. 2019), where what had been a common practice for monetizing patents resulted in the transferrer company being haled as a plaintiff into litigation.  
    • Immunex v. Sandoz (Fed. Cir. 2020) where an exclusive license did not transfer “ownership” and thus could not be used to establish double patenting. 
    • Gensetix v. Univ. of Texas (Fed. Cir. 2020) where sovereign immunity prevented a state university patent owner from being forced to join litigation by the exclusive licensee. 
    • The possible risks for patent holding companies that do not manufacture products or supply services based upon the patents they hold. If those patents are licensed to operating subsidiaries, the subsidiaries may find they lack sufficient rights in litigation to collect lost profits. 

    Kenneth Corsello

    IP Law Counsel

    IBM

    is an IP law counsel at IBM, where he focuses on drafting and negotiating patent licenses and assignment agreements. In his 15 years at IBM, he has worked on a variety of IP matters, including patent procurement, litigation, IP transactional agreements, and trade-secret related issues. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the U.S. Court of Appeals for Federal Circuit and an Associate Solicitor in the USPTO. Ken is the chair of the IPO’s Trade Secrets committee. 

    Brian Kacedon

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner at Finnegan. He is an authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional (CLP). He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.

    Kirby Lee

    Assistant Chief IP Counsel

    Ecolab

    Kirby Lee is assistant chief IP counsel at Ecolab, a global leader in water, hygiene, and energy technologies and services.  Kirby previously worked at the Department of Justice and the White House, representing the U.S. government in intellectual property litigation and serving as a senior policy advisor to the IP Enforcement Coordinator. He also served as a clerk to the Hon. Alan Lourie of the Federal Circuit. Kirby is co-chair of the IPO litigation committee.

  • Applying Arthrex to the TTAB: Are Administrative Trademark Judges Constitutionally Appointed? (RECORDING)

    Contains 6 Component(s), Includes Credits

    While the patent community awaits the resolution of Arthrex with regard to APJs, its applicability to Trademark Trial and Appeal Board judges is a question occupying trademark practitioners. Since Arthrex, at least two unsuccessful litigants before the TTAB have appealed to the Federal Circuit and asked that court to apply Arthrex to hold the appointments process for TTAB judges unconstitutional. Although the Federal Circuit has so far declined to rule on the applicability of Arthrex to TTAB judges’ appointments in those cases, the court will inevitably face that issue, whether in either of the two pending appeals squarely presenting it or in a future one. And, of course, the Supreme Court’s disposition of the questions before it will very likely inform the Federal Circuit’s holdings on the trademark side.

    On October 13, 2020, the Supreme Court agreed to review two questions bearing on the constitutionality of the process by which administrative law judges are appointed to the Patent Trial and Appeal Board. Each has its origins in the Federal Circuit’s decision a year earlier in Arthrex v. Smith & Nephew, which vacated a USPTO inter partes review after finding that USPTO Administrative Patent Judges’ (APJs) appointments by the Secretary of Commerce was unconstitutional. APJs “exercise[d] significant authority” in carrying out their responsibility to “oversee discovery,” “apply the rules of Federal Evidence,” “hear oral arguments,” “issue final written decisions containing fact findings and legal conclusions,” and “decide the patentability of the claims at issue.” The “discretion and supervision” provided by the Secretary of Commerce and the USPTO Director was insufficient to render them inferior officers because APJs could “independently render a final decision on behalf of the United States” and “the Director d[id] not have the sole authority to review or vacate any decision by a panel of APJs.” The Patent Act currently provides only a limited power to remove APJs. Consequently, the court found that APJs are “principal officers” who “must be appointed by the President and confirmed by the Senate; because they were not, the current structure of the Board violated the Appointments Clause.” The court remedied the violation by “partial invalidation of the statutory limitations on the removal of APJs” before remanding the action. In its May decision in Virnetx Inc. v. Cisco Systems, the Federal Circuit expanded Arthrex beyond inter partes review and other AIA trials.  

    While the patent community awaits the resolution of Arthrex with regard to APJs, its applicability to Trademark Trial and Appeal Board judges is a question occupying trademark practitioners. Since Arthrex, at least two unsuccessful litigants before the TTAB have appealed to the Federal Circuit and asked that court to apply Arthrex to hold the appointments process for TTAB judges unconstitutional. Although the Federal Circuit has so far declined to rule on the applicability of Arthrex to TTAB judges’ appointments in those cases, the court will inevitably face that issue, whether in either of the two pending appeals squarely presenting it or in a future one. And, of course, the Supreme Court’s disposition of the questions before it will very likely inform the Federal Circuit’s holdings on the trademark side.  

    TTAB judges are appointed and protected by the same statutory provisions as pre-Arthrex APJs. They oversee appeals of trademark examiner decisions, as well as adversarial proceedings between parties: oppositions (party opposes an application after publication in the Official Gazette) and cancellations (party seeks to cancel an existing registration), final decisions in which are subject to appeal to an Art. III court.  

    The USPTO’s briefs in Soler-Somahano v. Coca-Cola Co. and Schiedmayer Celesta GmbH v. Piano Factory Grp. argue that a different statutory regime gives the Director of the United States Patent and Trademark Office clear control over the actions of TTAB judges, and substantially greater control than the Arthrex panel said the Director had over administrative patent judges. Consequently, those briefs assert that Arthrex is not applicable in the TTAB context. Our panel of experts will review the Federal Circuit’s reasoning in Arthrex and consider the authority exercised by TTAB judges in fulfilling their statutory responsibilities to review examiner decisions and oversee oppositions and cancellations. They will discuss: 

    • Whether the USPTO Director exercises different levels of supervision and control over TTAB judges and their decision-making than over PTAB judges. 
    • The Director’s ability to decide matters before the TTAB on his or her own authority. 
    • Whether differences in the statutes and USPTO rules of practice governing TTAB and PTAB proceedings, including the non-appealability of PTAB institution decisions, preclude an expansion of Arthrex to TTAB judges. 
    • Whether the nature of the different rights adjudicated by PTAB and TTAB judges affects the analysis of the degree of authority the judges exercise. 

    Ted Davis (Moderator)

    Partner

    Kilpatrick Townsend & Stockton LLP

    is a partner in the Atlanta office of Kilpatrick Townsend & Stockton LLP, where he has practiced trademark, copyright, false advertising, and unfair competition law since 1990. Outside the office, he has taught as an adjunct professor at the Emory University and University of Georgia law schools and has testified before Congress on trade dress and Internet issues. He is currently a member of IPO’s U.S. Trademark Law Committee, as well as a past chair of the American Bar Association Section of Intellectual Property Law and a past member of the Board of Directors of the International Trademark Association.  Ted received his undergraduate degree from Davidson College and his law degree from the University of Virginia. He is a member of the Georgia, New York, and District of Columbia bars. 

    Adam Charnes

    Partner

    Kilpatrick Townsend & Stockton LLP

    is a partner at Kilpatrick Townsend & Stockton LLP and focuses his practice on appellate and constitutional litigation. A former law clerk to Supreme Court Justice Anthony M. Kennedy, Mr. Charnes has extensive experience in cases pending in federal and state courts of appeals across the nation, including the United States Supreme Court. Mr. Charnes recently successfully argued Thryv, Inc. v. Click to Call Technologies, L.P., 140 S. Ct. 1367 (2020). In addition to intellectual property matters, he has argued appeals involving such diverse areas of the law as ERISA, tax, product liability, contracts, business torts, trade secrets, environmental law, and Indian law. Mr. Charnes is a fellow of the prestigious American Academy of Appellate Lawyers. 

    Arti Rai

    Elvin R. Latty Professor of Law and co-Director, The Center for Innovation Policy

    Duke University Law School

    , Elvin R. Latty Professor of Law and co-Director, >span class="TextRun SCXW206512466 BCX0" xml:lang="EN-US" lang="EN-US"> at Duke Law, is an internationally recognized expert in intellectual property (IP) law, innovation policy, administrative law, and health law. Rai's research on innovation law and policy in biotechnology, pharmaceuticals, and software has been funded by NIH, the Kauffman Foundation, and the Woodrow Wilson Center.  She has served as the chief policy advisor to the Director of the U.S. Patent and Trademark Office; a member of the National Advisory Council for Human Genome Research; and as a public member of the Administrative Conference of the United States.  Rai has also served on, or as a reviewer for, numerous National Academies of Science committees. 

    Jeffrey Samuels

    Professor Emeritus

    The University of Akron School of Law

    is a Professor Emeritus at The University of Akron School of Law.  From August 1998 to June 2014, he served as the David L. Brennan Professor of Law and Director of the Center for Intellectual Property Law and Technology at The University of Akron School of Law.  From November 1987 until January 1993, Mr. Samuels served as the Assistant Commissioner (now Commissioner) for Trademarks at the United States Patent and Trademark Office. After leaving the PTO, Mr. Samuels engaged in the private practice of law. From 2003-2008, chaired the PTO’s Trademark Public Advisory Committee. Mr. Samuels currently serves as an expert witness and consultant in trademark matters and as a panelist under various domain name dispute procedures.

  • Chinese Patent Law Reform: Beyond the Headlines (RECORDING)

    Contains 6 Component(s), Includes Credits

    After a new patent law was formally adopted by China's National People's Congress on Oct. 17, many reports described the changes as almost all upside for those who own patents in the country, creating new mechanisms for patent protection and additional scope for damages. But our expert panel -- a global pharmaceutical attorney with long experience of the country, a veteran patent litigator in China, and a USPTO specialist, say to beware of overly upbeat forecasts.

    After a new patent law was formally adopted by China's National People's Congress on Oct. 17, many reports described the changes as almost all upside for those who own patents in the country, creating new mechanisms for patent protection and additional scope for damages.  

    But our expert panel -- a global pharmaceutical attorney with long experience of the country, a veteran patent litigator in China, and a USPTO specialist, say to beware of overly upbeat forecasts. They will discuss: 

    • The new pharmaceutical patent linkage system, modeled on the U.S. Chinese Hatch-Waxman process. This is a potential step forward, but details are lacking. Responsibility for developing and managing the regime are delegated to two regulatory agencies: the National Medical Products Administration (NMPA) and the National Intellectual Property Administration (CNIPA). They will not create binding regulations, but implement rules without the full force of law, leaving unclear how coordination with the courts will work.  The patent statute provides CNIPA a new authority to decide whether a pharmaceutical patent would cover a generic product, which could be cause for concern.  
    • The new law provides for punitive damages for patent infringement for the first time and allows the damages award to be increased by up to five times when the infringement is willful. But what constitutes intentional infringement is left undefined and will be developed over time. Some experts fear this discretion will be used as a weapon against foreign companies that are being sued by Chinese companies in China.  
    • The potential of a new Open Licensing scheme to encourage use of patents. A patentee can voluntarily declare in writing to the CNIPA that it is willing to license any entity or individual to implement the patent for specified royalties. CNIPA will publish information about available open licenses.
  • USPTO's Legal Experience and Advancement (LEAP) Program: Increasing Opportunities for Oral Advocacy for New Practitioners (RECORDING)

    Contains 1 Component(s)

    This webinar, which is free for IPO members, is co-hosted by IPO’s U.S. Post Grant Patent Office Practice and Next Generation Leaders Committees. U.S Post Grant Patent Office Practice Committee Co-Vice Chair TODD WALTERS (Buchanan Ingersoll) will moderate a discussion with PTAB Judge JANET GONGOLA and Acting Vice Chief Judge KALYAN DESHPANDE, who will provide an update on the results of the first months of the program. The panel will also include TIMOTHY TANG (Sterne Kessler), an outside counsel who has participated in the LEAP program, and Next Generation Leaders Committee Co-Chair KAVEH RASHIDI-YAZD (Siemens Energy Corp.), an in-house decision maker who will discuss the benefits of this type of professional development opportunity for corporate clients.

    This webinar, which is free for IPO members, is co-hosted by IPO’s U.S. Post Grant Patent Office Practice and Next Generation Leaders Committees. U.S Post Grant Patent Office Practice Committee Co-Vice Chair TODD WALTERS (Buchanan Ingersoll) will moderate a discussion with PTAB Judge JANET GONGOLA and Acting Vice Chief Judge KALYAN DESHPANDE, who will provide an update on the results of the first months of the program. The panel will also include TIMOTHY TANG (Sterne Kessler), an outside counsel who has participated in the LEAP program, and Next Generation Leaders Committee Co-Chair KAVEH RASHIDI-YAZD (Siemens Energy Corp.), an in-house decision maker who will discuss the benefits of this type of professional development opportunity for corporate clients. 

    The USPTO’s Legal Experience and Advancement Program (LEAP) was launched in May to “foster a strong and vital patent system” by providing opportunities for newer advocates to gain oral advocacy experience before the Patent Trial and Appeal Board. To qualify as a LEAP practitioner, a patent agent or attorney must have: 

    three or fewer substantive oral arguments in any federal tribunal, including the PTAB, and  

    seven or fewer years of experience as a licensed attorney or agent. 

    Parties that participate in the LEAP program are granted up to 15 additional minutes of argument time, depending on the length of the proceeding and the PTAB hearing schedule. The USPTO offers free training for LEAP practitioners via webinar in advance of the hearing. 

    A LEAP practitioner may conduct the entire oral argument or may share time with other counsel, provided that the LEAP practitioner is offered a meaningful and substantive opportunity to argue. The PTAB will permit more experienced counsel to assist a LEAP practitioner, if necessary, during oral argument, and to clarify any statements on the record before the conclusion of the oral argument. The PTAB encourages LEAP practitioners to participate in other aspects of PTAB proceedings, including conference calls, pre-hearing conferences, and depositions. 

    Todd Walters

    Buchanan Ingersoll & Rooney PC

    is the Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section. He is a current Vice-Chair of the Post-Grant Practice Committee of the Intellectual Property Owners Association (IPO), a past Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and a past Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. Todd was named the Best Lawyers ® 2020 Patent Law “Lawyer of the Year” in Washington, D.C. 

    Janet Gongola

    USPTO

    is Vice Chief Judge for Engagement at the Patent Trial and Appeal Board. She manages internal and external engagement on behalf of the PTAB, including development of educational programs and PTAB procedures and rules. She was appointed to the PTAB in October 2016. Before joining the Board, Judge Gongola was the Senior Advisor to the Under Secretary and Director of the USPTO where she advised on all matters of law and policy.  Judge Gongola also served as the Patent Reform Coordinator and managed the agency’s implementation of the America Invents Act. She likewise was the Associate Commissioner for Patent Examination Policy and developed patent policy for the agency. Judge Gongola started her USPTO career as an Associate Solicitor providing legal advice to agency officials and defending decisions of the Patent Trial and Appeal Board before the U.S. Court of Appeals for the Federal Circuit and district courts. 

    Kalyan Deshpande

    USPTO

    is Acting Vice Chief Judge at the Patent Trial and Appeal Board. He joined the USPTO in 2011 as a patent attorney, following which he became an administrative patent judge and then Lead Administrative Patent Judge. He received a J.D. degree from The Ohio State University, Michael Moritz College of Law and a Bachelor of Science degree in Engineering from the Case Western Reserve University. Judge Deshpande, subsequent to his graduation from college, worked for Accenture. During and after law school, he worked at the early-stage food services company Viands Concerted, LLC.

    Kaveh Rashidi-Yazd

    Siemens Energy, Inc.

    is Head of the U.S. IP Department for Siemens Energy, Inc.  Beyond this leadership role, he has global contributor roles as he is also the Division IP Counsel for the Industrial Application division and the Lead IP Counsel for the Service, Controls and Digitalization business unit.  In his career, he has counseled on all aspects of IP, including for example strategy, protection, defense, exploitation, and transactional activities.  Before going in-house, Kaveh was a senior associate in the IP practice group of Troutman Sanders, LLP (n/k/a Troutman Pepper).  Kaveh earned his Bachelor of Science in Electrical Engineering from the University of South Carolina, and his Juris Doctorate from the Franklin Pierce Law Center (n/k/a University of New Hampshire School of Law).  Within IPO, he is currently Co-Chair of the Next Generation Leaders Committee and was Chair of the U.S. Patent Office Practice Committee from 2014-2019.

    Timothy Tang

    Sterne, Kessler, Goldstein & Fox, PLLC

    is an associate in Sterne Kessler’s Electronics Practice Group. His practice focuses on patent prosecution before the United States Patent and Trademark Office (USPTO) and patent office litigation at the USPTO Patent Trial and Appeal Board (PTAB). Tim’s experience covers a broad variety of technical fields, including wired and wireless communications, communications theory, digital signal processing, data compression, database management, computer-networking, business methods, consumer electronics, computer-based applications, and Internet applications.

  • Skinny Labels and Inducing Infringement after GSK v. Teva (RECORDING)

    Contains 7 Component(s), Includes Credits

    This month, in GlaxoSmithKline v. Teva Pharmaceuticals, the Federal Circuit reinstated a jury's verdict that Teva infringed GSK's patented method of using a blood pressure drug, even though Teva's product was initially launched with a “skinny label” that didn’t mention the infringing method. The precedential decision has potentially far-reaching impacts in Hatch-Waxman and biosimilar litigation – for research agendas and patent prosecution as well.

    This month, in GlaxoSmithKline v. Teva Pharmaceuticals, the Federal Circuit reinstated a jury's verdict that Teva infringed GSK's patented method of using a blood pressure drug, even though Teva's product was initially launched with a “skinny label” that didn’t mention the infringing method. The precedential decision has potentially far-reaching impacts in Hatch-Waxman and biosimilar litigation – for research agendas and patent prosecution as well.

    Until now, experts say, it’s been settled jurisprudence under Hatch-Waxman that marketing a generic drug (where the composition patent has expired) with a label that carves out a patented use does not give rise to inducement liability. The majority opinion in the split decision, written by Judge Newman, focuses instead on other written materials, such as press releases and product catalogues. At its most far-reaching, the decision could suggest that using the standard FDA rating of “biologically equivalent” to market a generic could be legally dangerous if the product still has one use covered by a patent. Chief Judge Prost wrote a substantive and lengthy dissent.

    Panelists include two Hatch-Waxman litigators, one who represents innovator companies and one generic manufacturers, as well as a pharma patent prosecutor. They will discuss:

     

    • The procedural posture of the case from the district court onwards that helped lead to the majority opinion
    • The litigation outlook and strategies for both innovators and generic/biosimilar makers
    • A potential increase in value for method-of-use patents, spurring incremental research and patent filings on new disease indications.
    • Scenarios for appeal and what to do in the meantime.

    Jeffrey Hovden

    Robins Kaplan LLP

    is a partner at Robins Kaplan. He practices patent litigation, with a focus on generic pharmaceutical patent cases under the Hatch-Waxman Act and within the biotechnology industry.

    Stephanie Lodise

    BakerHostetler

    is a partner at BakerHostetler, and co-leader of the firm’s Biotechnology, Chemical, and Pharmaceutical patent prosecution team. She holds a Ph.D. in synthetic organic chemistry and earlier worked as a researcher at a major pharmaceutical company.

    Bruce Wexler

    Paul Hastings LLP

    is the global co-chair of the Intellectual Property practice at Paul Hastings. Bruce is a trial lawyer who represents clients as lead counsel defending patents covering multi-million and multi-billion dollar drug products.

  • A Close Examination of 35 U.S.C. § 112(f) as a Claiming Tool in U.S. Pharmaceutical Patents, Particularly Formulation Patents (RECORDING)

    Contains 8 Component(s), Includes Credits

    Overlooked for decades in the field of U.S. pharmaceutical patents, § 112 (f) is the focus of this webinar, presented by experts from Merck, UCB, and Eli Lilly and moderated by Tom Irving (Finnegan).  Speakers will discuss how § 112 (f) can be a tool for achieving means-plus-function (MPF) claims for brand U.S. pharma applicants.  By statute, the claims can cover equivalents by providing for literal infringement. The panel will also explain the need for MPF in pharma.

    Section 112(f) reads:  

    An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 

    Overlooked for decades in the field of U.S. pharmaceutical patents, § 112 (f) is the focus of this webinar, presented by experts from Merck, UCB, and Eli Lilly and moderated by Tom Irving (Finnegan).  Speakers will discuss how § 112 (f) can be a tool for achieving means-plus-function (MPF) claims for brand U.S. pharma applicants.  By statute, the claims can cover equivalents by providing for literal infringement. The panel will also explain the need for MPF in pharma.  

    Manisha Desai

    UCB Pharmaceuticals

    Manisha Desai is Associate General Patent Counsel at UCB Biopharma, in Brussels, Belgium.  She has 20 years of experience as an in-house patent attorney in the pharmaceutical industry, with an emphasis on US and international patent litigation. Manisha is a co-chair of IPO’s European Practice Committee and has represented IPO and other industry organizations during multilateral negotiations at the World Intellectual Property Organization and other UN agencies.

    Michelle Gao

    Eli Lilly and Co.

    Michelle Gao is an assistant general patent counsel at Eli Lilly and Company, providing IP support for Lilly BioMedicines assets and the Lilly Biotechnology Center in San Diego.  Michelle obtained her Ph.D. in Molecular Biology from Northwestern University, and J.D. from University of Illinois.  Prior to joining Eli Lilly, Michelle was a patent attorney at Novartis Institutes for BioMedical Research (NIBR) from 2015 to 2018, where she supported ImmunoOncology and Neuroscience programs.  Michelle worked for Fish & Richardson as an associate in Boston from 2012 to 2015, and focused her practice on patent prosecution and litigation there.    

    Sarah Hooson

    Director of the Intellectual Property Group

    Merck & Co.

    Sarah Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ, having gained her initial legal patent experience while working at GlaxoSmithKline (GSK). Sarah’s present responsibilities include patent preparation, prosecution, and due diligence support for small molecule, vaccine, and antibody programs in human and animal health. Sarah received her bachelor’s degree in Biomedical Engineering from Georgia Institute of Technology, and her J.D. from Widener University. Sarah gained considerable bio-pharmaceutical research and development and vaccine process development experience while working as an engineer at Merck, GSK and MedImmune 

    Tom Irving

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    Tom Irving is a partner with Finnegan. He has more than 40 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.

     

  • Oracle v. Google: Analyzing the Oral Argument and Outlook (RECORDING)

    Contains 7 Component(s), Includes Credits

    Our panelists -- an in-house counsel at a major software company, a leading professor of copyright who wrote an amicus brief for Google, and a litigator for Oracle who is co-counsel in the case -- will discuss any surprises in the Justices' questioning or in the counsels' replies, highlight the most memorable interchanges, read some tea leaves, and discuss possible outcomes and their impact.

    Cases before U.S. Supreme Court are notoriously difficult to handicap, even after oral argument, and even when the issues are more clear-cut than they are in Oracle v. Google, the long-running software copyright dispute the Court heard on Oct 7. The eight Justices reached for  low-tech analogies, like organizing grocery displays and robbing a safe, in their attempt to characterize the facts of the case and to find the answer to the two questions before them: 1/whether software interfaces are copyrightable and 2/ whether, as a jury found, Google’s use of Java interfaces in the context of creating the new  Android computer program constitutes fair use. Adding to the uncertainty is the Justices’ late-in-the-game request for supplemental briefing on a procedural issue on appellate deference. Indeed, Justices Neil Gorsuch and Samuel Alito spent much of their questioning on Wednesday focusing on whether it was appropriate for the Federal Circuit to overrule a prior jury decision in favor of Google. 

    Our panelists -- an in-house counsel at a major software company, a leading professor of copyright who wrote an amicus brief for Google, and a litigator for Oracle who is co-counsel in the case -- will discuss any surprises in the Justices' questioning or in the counsels' replies, highlight the most memorable interchanges, read some tea leaves, and discuss possible outcomes and their impact. 

    Lesley Boveri

    SAP SE

    Lesley Boveri is senior IP counsel at SAP, with responsibility for IP counseling for software development and operations, primarily in the areas of open source, anti-piracy, copyright, and IP strategy. Before becoming an attorney, she worked in the software industry as a programmer, analyst, and quality assurance manager.

    Joshua Simmons

    Partner

    Kirkland & Ellis, LLP

    Joshua focuses his practice on appellate and trial court litigation, intellectual property counseling and strategic portfolio management, as well as regulatory and legislative policy.  This “exceptional” and “creative” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR) litigates copyright, patent, right of publicity, trademark, trade secret, and unfair competition cases—particularly complex cases and those of first impression—along with contract, licensing, and domain name disputes.  In addition to maintaining a full-time litigation practice, Josh is a member of Kirkland’s Diversity & Inclusion Committee, and the Coordinator of its New York Kirkland Pride affinity group.  He also is a frequent speaker and author on emerging trends in intellectual property, as well as an active member of the intellectual property bar, including serving as Vice Chair of IPO’s Copyright Law & Anti-Piracy Committee, and a former Vice Chair of its Software-Related Inventions Committee.

    Rebecca Tushnet

    Harvard University Law School

    Rebecca Tushnet is a professor of law at Harvard Law School who focuses on copyrightShe clerked for Chief Judge Edward Becker of the Third Circuit and Associate Justice David Souter on the Supreme Court and practiced IP law at Debevoise & Plimpton before beginning teaching. She is well-known for her fair-use advocacy on behalf of works created by fans.