Strengthening Your Patent Portfolio to Resist AIA Post-Grant Attacks
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AIA post-grant proceedings have become very popular with over twelve thousand petitions filed. The landscape and rules have changed over the years and keeping up is difficult. In the discussion, titled “Strengthening Your Patent Portfolio to Resist AIA Post-Grant Attacks,” panelists will discuss strategies and practical tips for obtaining patent portfolios that survive post-grant attacks. Key topics will include: PTAB statistics, application drafting, claim drafting strategies, prosecution strategies, obtaining a robust portfolio, and knowing when and where to assert your patents.
IP Counsel Leader
Thermo Fisher Scientific
Ashita Doshi is an IP Counsel Leader at Thermo Fisher Scientific, specializing in strategic patent dispute resolution, risk management and prosecution, with a focus on AIA patent challenges at the PTAB. Ashita obtained a Ph.D. in Molecular Biology at Tufts University and a J.D. from the University of California at Berkeley. She has successfully challenged about 20 patents asserted in four litigations through inter partes and ex parte reexamination, and five patents asserted in three litigations through inter partes review. She has extensive in-house experience in litigation support, freedom-to-operate analysis, strategic product design and clearance, patent drafting and prosecution. Her prior law firm experience includes providing non-infringement and invalidity opinions, freedom-to-operate assessments and patent landscaping; drafting and prosecuting applications; and supporting interferences, oppositions and litigations.
Director of Patent Development - HP Global Printing
Ben Searle is Director of Patent Development for HP's global printing business. In this role, he advises HP’s business leadership on patent strategies across HP's broad range of printing products and services, and leads the talented team of attorneys who manage HP's worldwide patent portfolio for printing and print-adjacent technologies. Prior to his current role in HP's printing business, Ben was Director of Patent Development for HP's computing business; led a team of attorneys and technologists providing legal and technical support to HP's IP sales and licensing activities; managed HP patent portfolios directed to networking, digital security, data analytics, and mobility technologies; and worked in private practice handling IP matters including patent preparation and prosecution, freedom-to-operate analyses, and litigation support.
Merck & Co.
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.
Patent Office Litigation Group Chair & Shareholder
Buchanan Ingersoll & Rooney PC
Todd Walters 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.