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MIP PTAB Forum 2018

May 3, Convene 810 Seventh, New York
May 8, Sheraton, Palo Alto


Speakers - New York


Speakers for this event included:

Albert Kayack

IP attaché
European Patent Office                                                                                                           



Anna Wolftsun

associate counsel
Humanscale

Anna Volftsun is associate counsel at Humanscale Corporation, an ergonomic furniture and healthcare products company headquartered in New York, NY. She is responsible for patent prosecution, licensing, freedom-to-operate and clearance searches, IPR and opposition proceedings, and litigation. She also handles a wide range of other matters, including contracts, employment, corporate, privacy, and regulatory matters.

Prior to joining Humanscale, Volftsun handled patent litigation, prosecution, counseling, and due diligence as an IP associate at Paul Hastings and Baker Botts. She has a JD from Harvard Law School and a BA/MS in Chemistry from Brandeis University.



Ashraf Fawzy

senior patent counsel
Unified Patents 



Choe Jiang

senior attorney
Novo Nordisk

Chloe Jiang holds the position of senior attorney at Novo Nordisk. Jiang is responsible for patent litigation and disputes at Novo Nordisk. Prior to joining Novo Nordisk, she was an associate at Paul Hastings and Fitzpatrick Cella Harper & Scinto. Jiang holds a JD from Cornell Law School and a BA in Neuroscience from the University of Pennsylvania.



Janet Gongola

vice chief judge
Patent Trial and Appeal Board



Joshua Landau

patent counsel 
Computer & Communications Industry Association                                         



Kimberly McGraw 

administrative patent judge
Patent Trial and Appeal Board                                                                                                



Kristan Lansbery

director, patent attorney 
Regeneron Pharmaceuticals                                                                                

Kristan Lansbery, is an attorney with corporate and law firm leadership experience. As a director within the legal department at Regeneron Pharmaceuticals, she oversees a team responsible for global patent protection of bioprocessing platform technologies, trade secret protection, and freedom to operate.

Prior to Regeneron, Lansbery was a partner at Arnold & Porter, where she managed teams responsible for the worldwide prosecution of life science patent portfolios. She also was lead counsel on several contentious matters before the Patent Trial and Appeal Board, and she has successfully argued ex parte appeals and litigated disputes related to biotechnology.

Lansbery’s practice is recognized by multiple publications, including IAM Patent 1000. She earned her PhD in Molecular Cell Biology from Washington University in St Louis, and attended law school at the George Washington University.



Larry Coury

director dispute resolution
Regeneron                                                                                                                           



Leon Lum

intellectual property counsel
Novo Nordisk

Leon Lum is an intellectual property counsel at Novo Nordisk.  Lum is responsible for patent strategy and due diligence in all areas of research and development at Novo Nordisk, including diabetes, obesity, and other serious chronic diseases.  Lum‘s responsibilities include counselling on license agreements, patent litigation, and post-grant challenges at the USPTO.  Prior to joining Novo Nordisk, Lum was an associate at Foley & Lardner and a patent examiner at the USPTO.  Lum holds a JD from Georgetown University Law Centre, a MSE in Biomedical Engineering from The Johns Hopkins University, and a BS in Bioengineering from the University of California at San Diego



Melissa Brand

director of intellectual property policy
Biotechnology Innovation Organisation          

Melissa Brand is the director for intellectual property policy at the Biotechnology Innovation Organization (BIO), a major trade association with over 1,000 members in the biotechnology industry. At BIO, Brand advises member and staff committees on domestic and international intellectual property matters, with a particular emphasis on patent law. Prior to joining BIO, Brand worked as a patent litigator at Latham & Watkins and Wilson Sonsini Goodrich & Rosati. Brand also served as a law clerk to the Honorable Kimberly Moore at the United States Court of Appeals for the Federal Circuit. She holds a JD from the University of San Diego School of Law and a BE in Biomedical Engineering from Vanderbilt University.



Monisha Deka

investigative attorney
US International Trade Commission

Monisha Deka (Mo) is an investigative attorney at the US International Trade Commission (ITC) in Washington DC. Investigative attorneys litigate on behalf of the public interest in intellectual property investigations initiated under 19 U.S.C. 1337, commonly referred to as Section 337 litigations.


Serge Ilin-Schneider

director, intellectual property
PAR Pharmaceutical 

Serge Ilin-Schneider is an intellectual property and regulatory counsel with Par Pharmaceutical, a division of Endo International plc – a global specialty pharmaceutical company. Based in Chestnut Ridge, New York, Ilin-Schneider provides support on a wide range of intellectual property and regulatory matters/issues across Company’s US operations, specializing in product development strategy, complex issues with FDA, patent portfolio management, business development, and product lifecycle management. Prior to joining Par, Ilin-Schneider worked as an associate at Fox Rothschild, Locke Lord and Morgan & Finnegan, where his practice was primarily centered around counseling, patent portfolio management, patent prosecution, freedom to operate analysis, licensing, due diligence, domestic/foreign oppositions, and patent litigation. Ilin-Schneider holds an undergraduate degree from Rensselaer, a law degree from Seton Hall, and a PhD from MIT.



Srikala Atluri

ip litigation counsel 
Hewlett Packard Enterprise  

Sri Atluri is IP litigation counsel at Hewlett Packard Enterprise. Her practice involves managing a wide array of pre-litigation assertions and IP litigation matters in the Federal district courts, before the ITC, and before the Patent Trial and Appeal Board. Prior to HPE, she was an associate at Finnegan Henderson and Paul Hastings where she focused on patent litigation and contentious proceedings at the United States Patent and Trademark Office, such as inter partes review proceedings, interferences, and inter partes reexaminations.


Thomas Giannetti

administrative judge
Patent Trial and Appeal Board                                                                                         



Chris Douglas

partner
Alston & Bird                                                                                                                             

Chris Douglas is active in Alston & Bird’s pre-grant and post-grant patent practice areas. Chris represents both petitioners and patent owners in post-grant proceedings and is recognized as one of the more active post-grant practitioners nationwide. Chris remains one of the few practitioners to tout confirmation of all claims in an inter partes review in a final written decision on behalf of a patent owner. In addition, he maintains a robust pre-grant patent prosecution practice. His familiarity with both pre-grant and post-grant proceedings informs his ability to counsel and secure foreign and domestic patent rights for his clients. Chris has been named to the North Carolina Rising Stars list every year since 2013 by Super Lawyers magazine; only 2.5% of attorneys under age 40 are selected. He is recognized in The Best Lawyers in America© 2018 in Intellectual Property Litigation.



Natalie Clayton

partner
Alston & Bird

Natalie Clayton is the leader of Alston & Bird’s Biotechnology, Pharmaceutical & Life Sciences Patent Litigation team. She has extensive experience litigating intellectual property matters throughout the U.S., with particularly in the pharmaceutical space. She has been involved in patent cases covering diverse areas of technology, including pharmaceuticals, animal health, medical devices, and chemicals. Natalie has represented clients in the pharmaceutical industry in trademark, false advertising, and unfair competition cases brought under the Lanham Act. Natalie has substantial experience in FDA regulations related to bringing these drugs to market.



Charles Macedo

partner
Amster Rothsten & Ebenstein 

Charles Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios. His experience before the Patent Trial and Appeals Board and its predecessor Board of Patent Appeals and Interferences, including acting as leading counsel in inter partes review and covered business method proceedings, as well as advising and analyzing in the background. He also has represented patent owners in ex parteappeals, including reversals of obviousness rejections in Ex parteBuarque de Macedo.

He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the US Court of Appeals for the Federal Circuit, 1989–1990.



Trenton Ward

partner
Finnegan Henderson Farabow Garrett & Dunner                                                             

Trenton Ward recently joined Finnegan, Henderson, Farabow, Garrett & Dunner, LLP after serving as a Lead Administrative Patent Judge at the PTAB, where he spent five years adjudicating America Invents Act (AIA) trials. While Lead Judge at the USPTO, Trenton adjudicated more than 250 AIA trial proceedings, including IPR, CBM, and PGR proceedings. Trenton offers clients an insider’s perspective as to how Judges decide cases at the PTAB. He draws from his experience on the bench and as a practitioner to provide the highest level of counsel to clients involved in litigation before the PTAB and in other forums.

Trenton’s practice at Finnegan focuses on patent litigation, including trials before the PTAB, district court trials, and appeals before the Federal Circuit and Supreme Court. His practice also covers patent prosecution management and client counseling across an array of technologies, including telecommunications, semiconductor devices, medical devices, carbon nanotube devices, and sporting equipment. Trenton is a frequent speaker and publisher on many aspects of the trial jurisdiction at the PTAB.


Jason Stach

partner
Finnegan Henderson Farabow Garrett & Dunner 

Jason Stach chairs Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s PTAB trials practice and is the PTAB Trials Committee chair for the PTAB Bar Association. He practices patent law with an emphasis on post-grant proceedings at the U.S. Patent & Trademark Office and litigation in district courts and at the International Trade Commission. He has been lead or backup counsel in more than 85 PTAB trials and has consulted on dozens more. Jason appears on Intellectual Asset Magazine’s Patent 1000 list of the world’s leading patent professionals, and he is recognized as a 2017 Next Generation Lawyer by The Legal 500 U.S. for patent prosecution, re-examinations, and post-grant proceedings. Jason earned a degree in Industrial Engineering from Purdue University and a law degree from Emory University.




Corrine Atton

senior associate
Fitzpatrick Cella Harper & Scinto 

Corinne practices complex patent litigation with a focus on pharmaceuticals, biologics, biotechnology, and medical devices. She has worked on cases concerning, among other things, DNA sequencing technologies, recombinant polypeptides, enzyme inhibitors, iron chelators, anti-diabetic drugs, wakefulness-promoting agents, surgical mesh affixing systems, and laser hair removal devices. Corinne also edits, writes for, and manages Fitzpatrick's BiologicsHQ microsite - a website that provides statistical analyses and timely commentary concerning U.S. patent proceedings relating to FDA-approved biologic drugs.




Justin Oliver 

partner
Fitzpatrick Cella Harper & Scinto

Justin Oliver’s attention to detail extends not just to the facts of the case, but to the nature of the audience. While working on trials in both district courts and the US Patent and Trademark Office, Oliver focuses his practice on complex proceedings before the Patent Trial and Appeal Board (PTAB). Whether an Inter Partes Review or an ex parte appeal, Oliver understands that the PTAB critically analyzes both the technical and legal details of a case. By avoiding the tendency to address issues with broad strokes and mining the details of the case, Oliver has established himself as a top choice for PTAB proceedings. Oliver’s ability to spot the strengths and weaknesses of a case early and adapt accordingly has proved a huge benefit to clients in wide range of technology areas. Oliver heads the firm’s PTO Contested Proceedings Practice Group.



Jason Dorsky

partner
Fitzpatrick Cella Harper & Scinto 

Jason Dorsky’s practice focuses on USPTO contested proceedings and complex patent litigation across a wide variety of technologies, including pharmaceuticals, medical devices, industrial manufacturing processes, computer technology, user interface and circuit design, network systems, and data communications. Dorsky has significant experience representing both plaintiffs and defendants before the USPTO and in jury trials, including case management, preparing and filing briefs, and taking and defending fact and expert depositions. Dorsky’s experience also includes trade secret litigation, intellectual property transactions, due diligence and patent prosecution.



Scott McKeown

partner
Ropes & Gray

Scott McKeown is a partner in Ropes & Gray’s IP Litigation Group and chair of the firm’s Patent Trial and Appeal Board (PTAB) practice. Scott focuses his practice on post-grant patent counselling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott is one of the most active PTAB trial attorney in the U.S., having personally handled more than 225 PTAB matters since 2012. Furthermore, Scott is recognized as a thought leader in the PTAB industry. He is a Professorial Lecturer in Law at The George Washington University Law School, a member of the teaching faculty of the Practising Law Institute and was a founding member of the Board of Directors of the PTAB Bar Association. He is the editor of the popular blog PatentsPostGrant.com.



Rich Coller

director
Sterne Kessler Goldstein & Fox

Richard D. Coller III is a director in Sterne Kessler’s Mechanical & Design and Trial & Appellate Practice Groups. Rich has been helping clients develop and execute comprehensive patent strategies for over a decade. In 2017, The Legal 500 recognized Rich as a "Next Generation Lawyer," noting that he is “highly recommended” for patent prosecution and post-grant proceedings by clients and peers.

Rich's interdisciplinary academic training and laboratory research experience as a biomedical engineer prepared him to analyze complex technical issues, including those arising at the intersection of engineering and physiology. Having managed and analyzed patent portfolios valued at hundreds of millions of dollars, Rich is particularly skilled at identifying portfolio strengths and weaknesses. This patent prosecution and client counseling expertise informs his work in support of district court litigation and ITC investigations, and as a leading litigator at the Patent Trial and Appeal Board.



Jeremiah Frueauf

director
Sterne Kessler Goldstein & Fox                                                                                     

Jeremiah B. Frueauf is a director in Sterne Kessler’s Biotechnology & Chemical Practice Group. Jeremiah counsels domestic and international clients on patent procurement, product development and clearance strategies, and protection of complex worldwide patent portfolios. Jeremiah leverages his experience in numerous inter partes disputes, including district court litigation, USPTO litigation (inter partes reviews and post-grant reviews), and Section 337 investigations before the USITC to help patent owners and challengers craft and execute patent strategies that best align with their business needs.

Jeremiah counsels clients across the life sciences spectrum, from small and large molecule development, to bio-based products for the bioeconomy, to personalized medicine, diagnostics, and biosensors. His clients span from early-stage start-ups and SMEs to multinational corporations, and he is frequently sought after to provide strategic advice to support clients’ product development—from conception to launch.




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