2021 PTAB Year in Review

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.

Mark Feldstein, Ph.D. is a partner at Finnegan. He is a patent and trade secret litigator in U.S. district courts and also serves as lead counsel for clients in post-grant trial proceedings at the USPTO. He also maintains an active patent prosecution practice on behalf of domestic and foreign clients.  His practice encompasses issues involving pharmaceuticals, biochemistry, polymers, small molecule chemistry, nanotechnology, optics, and medical and analytic devices.  He holds a Ph.D. in chemistry.

Joshua Goldberg, leader of Finnegan’s PTAB trials section, focuses on inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and on ensuing appeals to the U.S. Court of Appeals for the Federal Circuit.

Jess Marks prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, Jess practiced at Finnegan, Henderson, Farabow, Garret & Dunner, LLP for over ten years. At Finnegan, Jess litigated post-grant proceedings, district court cases, and International Trade Commission proceedings. Jess is also experienced in licensing negotiations, patent prosecution, due diligence investigations, and opinions on patent infringement, patent validity, and freedom-to-operate. Jess’ cases included electrical, business method, and biological technologies ranging from video surveillance systems, Blu-ray disc players, image processing, artificial intelligence, medical devices, and pharmaceuticals. Jess earned her J.D. from the University of Maryland (now Francis King Carey) School of Law and her M.B.E. and B.A. in Biology from the University of Pennsylvania.

Nichole Valeyko is a patent attorney for Merck. Prior to joining Merck in 2019, Nichole worked in private practice for 15 years handling various intellectual property matters, including patent preparation and prosecution, and PTAB proceedings. Nichole has a J.D. from Seton Hall, an M.S. in biotechnology from Johns Hopkins, and a B.S. in biology from Virginia Tech.