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USPTO Post-Grant Patent Trials 2013


Speaker(s): David J. Kappos, Eugene R. Quinn, Jr., Hon. Theodore R. Essex, John A. Dragseth, Katherine Pauley Barecchia, Michael B. Ray, Michael L. Kiklis, Patricia A. Carson, Prof. Lisa A. Dolak, Robert Greene Sterne, Scott A. McKeown
Recorded on: Mar. 27, 2013
PLI Program #: 42147

John Dragseth is a Principal of Fish & Richardson, and has been named one of the top 50 IP attorneys in the country under the age of 45. He has also been named a Minnesota SuperLawyer multiple years. His practice centers on complex legal analysis and writing – in federal appeals, patent prosecution, reexamination, pre-suit and due diligence investigations, and patent opinions. His prosecution work centers on cloud computing, mobile computing, software, medical devices, and mechanical technologies (including HVAC). John has led the briefing on more than 30 appeals to the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit, where he was previously a law clerk to the Honorable Raymond C. Clevenger III. He has extensive experience in taking over cases on appeal and framing them for the Federal Circuit, while working closely with trial counsel. He also enters cases frequently as a “fixer” -- helping with tough and important issues. (The similarities with George Clooney’s “Michael Clayton” character end there.) John writes and lectures frequently on a variety of patent law topics. He
is also an adjunct professor teaching IP litigation at the University of St. Thomas Law School, and has authored case books on patent law and IP litigation (very exciting reads). He was raised on a small grain and sugar beet farm in Northern Minnesota.


Lisa A. Dolak is Senior Vice President and University Secretary at Syracuse University, and the Angela S. Cooney Professor of Law at the Syracuse University College of Law.  As University Secretary, Professor Dolak oversees trustee relations, supports the overall work of the Board and manages the Office of the Board of Trustees. She teaches courses on patent law, civil procedure and the federal courts, and serves as an expert in patent cases, attorney malpractice cases, and practitioner disciplinary proceedings.

During a sabbatical leave from Syracuse University, she served as law clerk to the Hon. Paul R. Michel, Judge (Ret.), United States Court of Appeals for the Federal Circuit.  She served during 2005-2013 as a member of the Federal Circuit’s Advisory Council.

Prior to attending law school, Prof. Dolak worked for several years as a synthetic organic chemist in pharmaceutical research aimed at the development of new drugs at Bristol-Myers Company and Ayerst Laboratories Research, Inc.

Prof. Dolak received her Bachelor of Science in chemistry from Duquesne University and her Juris Doctor, summa cum laude, from the Syracuse University College of Law.  She is admitted to practice in New York and before the U.S. Patent and Trademark Office.  Her research interests include issues at the intersections of patent law and judicial procedure and patent law and legal ethics.  Recent representative publications include:

Trial Lawyers in Trouble: Litigation Misconduct and Its Ethics Fallout, 52 U. Louisville L. Rev. 225 (2014)

Litigating Inequitable Conduct after Therasense, Exergen, and the AIA:  Lessons for Litigants, Options for Owners, 13 Chi.-Kent J. Intell. Prop. 51 (Fall 2013)

America Invents the Supplemental Examination But Retains the Duty of Candor:  Questions and Implications, 6 Akron I.P. J. 147 (2012)

Ethics in Intellectual Property Negotiations:  Issues and Illustrations, 40 AIPLA Q.J. 197 (2012)

One Patent, Two Paths:  Federal Circuit Review of Divergent USPTO and District Court Decisions, 4 No. 2 Landslide 22 (2011)

The United States Patent System in the Media Mirror, 58 Syr. L. Rev. 459 (2008) (with Blaine T. Bettinger, Ph.D.)

Power or Prudence: Toward a Better Standard for Evaluating Patent Litigants’ Access to the Declaratory Judgment Remedy, 41 U.S.F. L. Rev. 407 (2007)


Katherine Barecchia is Assistant General Counsel at SunGard Data Systems Inc., where she handles intellectual property and litigation related matters for the company.  Before joining SunGard, Ms. Barecchia was an attorney at Blank Rome LLP. While at Blank Rome, Katherine’s practice included patent litigation, opinions, and the prosecution of patent applications. She counseled domestic and foreign clients with respect to intellectual property strategies, including: patent mining programs; patent infringement strategies; patent invalidity strategies; patent litigation; patent portfolio development; market clearance analysis for new products; joint defense agreements; patent infringement opinions; and patent invalidity opinions. In addition to her intellectual property practice, Ms. Barecchia also handled commercial litigation matters in both state court and federal court.

 

 

 


Michael L. Kiklis focuses his practice on patent litigation as well as trials at the USPTO’s Patent Trial and Appeal Board.  He frequently handles high-stakes matters, having been involved in several cases in which over $1 billion was at stake.

Mr. Kiklis has twenty years of experience as an intellectual property attorney and has been involved in numerous intellectual property disputes, ranging from cross-licensing and pre- litigation negotiations to full-blown, bet-the-company litigations.  Mr. Kiklis has extensive experience in both enforcing his clients’ rights as well as defending his clients.  Before joining Oblon Spivak, he was an IP litigation partner at Akin Gump Strauss Hauer & Feld, LLP in the firm’s D.C. office.

With a strong background in computer science, Mr. Kiklis also has extensive experience in software patent matters. Prior to entering law school, he worked as a software developer for six years at some of the computer industry’s leading companies.

Mr. Kiklis is a frequent lecturer and author on cutting-edge intellectual property issues, including the Supreme Court’s patent law jurisprudence, patentable subject matter under 35 U.S.C. § 101, as well as the new contested proceedings at the USPTO’s Patent Trial and Appeal Board.  In fact, he is the author of The Supreme Court on Patent Law, which has been called “a great resource” that fills “a critical gap in our understanding of modern American patent law.”  He is also a co-author of the firm’s Post- Grant Patent practice group.

Mr. Kiklis is also active in pro bono matters. In coordination with the International Senior Lawyers Project, he taught the first-ever intellectual property class in the LLM Program of the National University of Rwanda and served as the thesis advisor to several LLM students.

REPRESENTATIVE MATTERS

Represented a software company in the successful enforcement of its patent against virtually an entire industry of over thirty companies—including Microsoft and IBM—in two patent litigations in the Eastern District of Texas, resulting in favorable settlements

Represented a major computer company in its landmark antitrust case against Microsoft, resulting in a $1.95 billion settlement

Co-counsel on the first Covered Business Method Patent Proceeding filed at the USPTO’s Patent Trial and Appeal Board.

Currently representing clients in several Covered Business Method Patent and Inter Partes

Review proceedings before the USPTO's Patent Trial and Appeal Board

Represented a national organization of legal professionals as co-author of a Supreme Court amicus brief in Bilski & Warsaw v. Kappos

Represented a financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement

Represented a trade association as co-author of a Supreme Court amicus brief in Quanta Computer, Inc. v. LG Electronics, Inc.

Represented several large software/computer companies in cross-licensing negotiations with IBM and other high technology companies

Represented a large computer company as opinion counsel in defense of a software patent infringement case where over $1 billion was at stake; the plaintiff dropped its willfulness claim.

ACCOLADES

Intellectual Asset Management (IAM) Patent 1000: The World’s Leading Patent Practitioners, named to its list of the top 1000 patent attorneys in the world; recognized in the Washington, D.C. Metro Area for his patent Litigation work  (2014)

Listed as one of 2013 and 2014's IP Stars in the United States, as well as Virginia, by Managing Intellectual Property.

Computer Science Distinguished Alumni Award given at the 30th anniversary celebration of Computer Science at Boston University Metropolitan College.

Recipient, U.S. Patent and Trademark Office Society's Rossman Award given to the author of the article in the Journal of the Patent and Trademark Office Society that makes the greatest contribution to the field of patents, trademarks or copyrights.

Bar Admissions

District of Columbia
Virginia

Registered to practice before the U.S. Patent and Trademark Office

Court Admissions

Supreme Court of the United States
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Eastern  District of Virginia

Education

J.D., Syracuse University College of Law, magna cum laude
M.S., Computer Science, Boston University,
B.S., Computer Science, University of Massachusetts, Lowell

Professional  Affiliations American  Bar  Association


Scott A. McKeown is a member of the firm's Management Committee, and chairs the Post-Grant Patent practice group focusing on post-grant counseling, litigation and related prosecution issues. He 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 patent proceedings at the United States Patent and Trademark Office (USPTO). He specializes in administrative trials before the Patent Trial & Appeal Board (PTAB) as well as appeals to the Court of Appeals for the Federal Circuit (CAFC). Having successfully navigated USPTO post-grant patent proceedings in which more than half a billion dollars was at stake, he is lead post- grant counsel to some of the world’s most well-known innovators. He provides his clients comprehensive post-grant patent counseling including advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

The National Law Journal has identified Mr. McKeown as one of their 50 “Trailblazers & Pioneers” in the area of intellectual property law. Intellectual Asset Management has identified him as a “thought leader” and one of the world’s leading patent practitioners for adversarial post-grant USPTO patent proceedings. Managing Intellectual Property Magazine has named Mr. McKeown their 2015 “PTAB Litigator of the Year.” Mr. McKeown has been named one of the Best Lawyers in America, and the Legal 500 has honored him as a recommended patent attorney.

Mr. McKeown is a Professorial Lecturer in Law at the George Washington University Law School. He also is the editor of the well-known legal blog PatentsPostGrant.com. He lectures and writes extensively on post-grant patent proceedings at the USPTO and is also a member of the teaching faculty of the Practicing Law Institute (PLI). Mr. McKeown is the past Chair of the American Bar Association (ABA), Intellectual Property Law Section Committee 104 (Post Grant USPTO Proceedings).

A former electrical engineer, he has worked with a wide range of technologies, including computer software, wireless telecommunication protocols and network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics. In the telecommunication arts, Mr. McKeown has worked extensively with IP routing and signaling protocols, ATM and wireless communication protocols. He also has a broad breadth of experience with OFDM systems, CDMA, TDMA, FSK, QAM and the 802.11 family of protocols.

In the consumer electronic arts, Mr. McKeown's practice has a strong focus in audio and video processing and display technologies, discs, signal compression and encoding schemes, recording medium formatting and construction, and many other related technologies.


THEODORE R. ESSEX

Judge Essex served as an Administrative Law Judge at the Office of Medicare Hearings and Appeals in Cleveland, Ohio, from November 2006 until his United States International Trade Commission (USITC) appointment in October 2007. He previously served as a consultant to the Compensation and Pension Service of the Department of Veterans= Affairs in Washington, DC, from 2005 to 2006.

From 1985 to 2005, Judge Essex served in a variety of positions with the U.S. Air Force (USAF), from which he retired in 2005.  He was Chief of the General Torts Branch of AFLSA/JACT in Arlington, VA, from 2002-2005. He served as Chief of Aviation Law with the Air Education and Training Command, USAF from 2000-2002; as Deputy Staff Judge Advocate with the Air Intelligence Agency, USAF from 1999-2000; as Chief, Operations Law, USAF Headquarters in the United Kingdom from 1996-1999; as an Attorney-Adviser in the AFLEM Office of International Claims and Investment Disputes at the U.S. Department of State from 1995-1996; as a Staff Judge Advocate based in Norway from 1992-1995; as a Deputy Staff Judge Advocate based in the United Kingdom from 1990-1992; as a Circuit Defense Counsel for the USAF AL Legal Services Center from 1988-1990; as a Deputy Staff Judge Advocate based in Belgium from 1987-1988; as an Area Defense Counsel from 1986-1987; and as an Assistant Staff Judge Advocate from 1985-1986.

Judge Essex holds a Juris Doctor degree from The Ohio State University, 1980 and a Bachelor of Arts Degree from Miami University in Oxford, Ohio in 1977. He holds an active law license in the state of Louisiana and is a registered solicitor in England and Wales. Judge Essex is also a professorial lecturer in law at The George Washington University Law School.

The U.S. International Trade Commission is an independent, nonpartisan, quasi-judicial federal agency that provides trade expertise to both the legislative and executive branches of government, determines the impact of imports on U.S. industries, and directs actions against certain unfair trade practices, such as patent, trademark, and copyright infringement.


Gene is a Patent Attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields. As an electrical engineer with a computer engineering focus he finds himself frequently assisting inventors and small businesses in this space. He works with those pursuing patent protection for their innovations and the majority of his practice is focused on software, computer implemented methods, business methods and Internet innovations. He also does work with electrical and mechanical inventions as well.

Known by many as “The IPWatchdog.” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. The ABA Journal has recognized IPWatchdog.com as one of the top 100 blogs for lawyers by lawyers in 2009 through 20013. For 3 of the last 4 years (2010, 2012, 2013) IPWatchdog.com was recognized as the top intellectual property law blog, and in January 2014 IPWatchdog.com was honored to be inducted into the ABA Blawg Hall of Fame.

Gene is also the inventor of a unique invention mining and patent drafting system, known as theInvent + Patent System, which enables the submission of detailed answers that form the basis of an extraordinarily detailed invention disclosure and which can be filed immediately as a provisional patent application.

Between 2003 and 2007 Gene wrote a monthly column for Patent World and served on the Patent World editorial board. He has also previously taught a variety of intellectual property courses at the law school level, including patent law, patent claim drafting, patent prosecution, copyright law, trademark law and introduction to intellectual property. Between 1998 and 2008 Gene taught at Syracuse University College of Law, Temple University School of Law, The University of Toledo College of Law, Franklin Pierce Law Center and Whittier Law School. Since 2010 he has been an Adjunct Professor at John Marshall Law School in Chicago, where he teaches a course on Patent Rules and Practice.

Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. As a patent attorney he is able to represent inventors and businesses seeking patents across the United States.


Mr. Sterne is one of the leading patent attorneys in the United States in all phases of patent office litigation, including Federal Circuit and Supreme Court appeals, for patents involved in concurrent litigation both in the federal courts and the United States International Trade Commission. He is also recognized by his peers as a thought leader for best practices concerning all areas of intellectual property. He specializes in cutting edge technologies in the electronics, computer, communications, biomedical and nanotech arenas, for the monetization of patents, patent litigation and patent licensing.

Throughout his career, Mr. Sterne has been consistently recognized as an outstanding IP law practitioner and thought leader. In 2015, the Financial Times ranked Mr. Sterne among the "Top Ten Innovative Lawyers in North America." Clients rely on his negotiation skills and big picture approach to patent procurement and protection, licensing and enforcement that considers the product, distribution, network and market conditions. Additionally, Mr. Sterne is a sought after expert witness, has written and spoken extensively on the subject of patent reexamination and concurrent patent litigation, and is Chairperson of the Editorial Board of The PTO Litigation Center. He has served as a Special Master for Judge Marvin J. Garbis in a case involving patent inventorship, ownership, and U.S. and foreign patent applications and prosecution.

Mr. Sterne has played a role in groundbreaking, precedent-setting case law. In 2007, he served as co-counsel in KSR International Co. v. Teleflex, Inc., one of the most significant patent cases heard by the U.S. Supreme Court in 50 years. The case addressed the fundamental question of when an invention is “obvious” and therefore not patentable. Mr. Sterne was the lead attorney in In re Beauregard, 53 F3d 1583,35 USPQ2d 1383 (Fed. Cir. 1995). This groundbreaking case was brought by IBM at the Federal Circuit to establish that a computer program on a disk was patentable subject matter. The case resulted in the United States Patent and Trademark Office issuing new proposed software patent guidelines which expanded the scope of patent protection for software. He was counsel for appellants in In re Jung et al, before the Federal Circuit, which involve the prima facie anticipation requirement in patent prosecution.

Mr. Sterne serves as an IP strategic advisor to start ups, emerging companies, and investors and serves on the boards of directors of a publicly traded company and a number of charitable organizations. He is a member of the University of Maryland School of Law, IP Program Advisory Board and the Advisory Board of The Sedona Conference. He served as the co-chair of the Sedona Patent Litigation Conference in 2001, 2002, 2007, 2008, 2009, 2010, 2011, 2012, 2013, and 2015. For more than 20 years, Mr. Sterne was a member of the Advisory Board of BNA's Patent, Trademark and Copyright Journal. He holds an Extra Class radio license (WK3W) from the FCC.

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 published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice.

Mr. Sterne is a strong proponent of diversity and inclusion. He is a member of the Women’s Bar Association of the District of Columbia, on the firm’s diversity task force, and actively involved in mentoring both in the firm and with outside organizations. Mr. Sterne is also active in the community. He was elected to the Executive Board of the National Capital Area Council (NCAC), Boys Scouts of America (BSA) in 2003. He was awarded the Silver Beaver by the NCAC in 2010, the highest award given at the council level. He was very involved in Scouting as a youth, and now serves as the Eagle Scout Coach/Advisor to Troop 1983 in Oakton, Virginia. He was the founder of the Attorney of the Year: "Good Scout" Award Luncheon, and chaired this event in 2006 - 2009.


David J. Kappos is a partner at Cravath. He is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws and practices as well as commercialization and enforcement of innovation-based assets. Mr. Kappos supports the Firm’s clients with a wide range of their most complex intellectual property issues.

From August 2009 to January 2013, Mr. Kappos served as Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO). In that role, he advised the President, Secretary of Commerce and the Administration on intellectual property policy matters. As Director of the USPTO, he led the Agency in dramatically reengineering its entire management and operational systems as well as its engagement with the global innovation community. He was instrumental in achieving the greatest legislative reform of the U.S. patent system in generations through passage and implementation of the Leahy-Smith America Invents Act, signed into law by the President in September 2011.

Prior to leading the USPTO, Mr. Kappos held several executive posts in the legal department of IBM, the world’s largest patent holder. From 2003 to 2009, he served as the company’s Vice President and Assistant General Counsel for Intellectual Property. In that capacity, he managed global intellectual property activities for IBM, including all aspects of patent, trademark, copyright and trade secret protection. Mr. Kappos joined IBM as a development engineer. During his more than 25 years at IBM, he served in a variety of roles including litigation counsel and Asia Pacific IP counsel, based in Tokyo, Japan, where he led all aspects of intellectual property protection, including licensing, transactions support and mergers and acquisitions activity for the Asia/Pacific region.

Mr. Kappos has received numerous accolades for his contributions to the field of intellectual property, including, among others, the 2013 Champion of Intellectual Property Award from the District of Columbia Bar Association and the 2013 North America Government Leadership Award from Semiconductor Equipment and Materials International (SEMI). He was named one of the 50 Most Influential People in Intellectual Property by Managing IP,one of the 100 Most Influential Lawyers in America by The National Law Journal, and Intellectual Property Professional of the Year by the Intellectual Property Owners Association. Mr. Kappos was inducted into the Intellectual Property Hall of Fame by Intellectual Asset Management Magazine and recommended in the 2013 edition of The Legal 500 in the Technology: Transactional category. He is also a frequent speaker and has authored many published articles on various intellectual property, innovation and leadership topics.

Mr. Kappos serves on the Boards of Directors of the Partnership for Public Service, the Center for Global Enterprise, and the Intellectual Property Owners Educational Foundation.

Mr. Kappos was born in Palos Verdes, California. He received a B.S. summa cum laude in Electrical and Computer Engineering from the University of California, Davis, in 1983, and a J.D. from the University of California, Berkeley, in 1990.


Michael Ray is Managing Director of Sterne Kessler and practices in the firm's Electronics Group. He has been practicing patent law since 1990.  From a foundation that includes many years of preparation and prosecution of patent applications, much of his time is now spent providing clients with strategic intellectual property counseling and risk assessment. This includes pre-litigation analysis and negotiations, analyzing patents for infringement and validity, providing legal opinions, and handling post-grant proceedings (such as reexamination and inter partes review) before the United States Patent and Trademark Office (USPTO).

Mr. Ray's practice also involves negotiating and drafting license, settlement and various other IP-related agreements, and performing IP due diligence analyses in conjunction with mergers, acquisitions and technology licensing.  His work continues to include patent application preparation and prosecution. He has also acted as the de facto IP counsel for several leading-edge technology companies, where he developed programs to protect IP assets, assure ownership, and assure freedom to operate.  In addition, Mr. Ray has counseled numerous emerging companies and has lectured on IP best practices. He has also lectured on the topic of reducing legal costs.

Mr. Ray currently serves as an adjunct professor at the University of New Hampshire School of Law where he teaches a Master Class on Patent Office Litigation (i.e., reexamination and post-grant proceedings under the America Invents Act). He has also been an adjunct professor at George Mason University Law School where he taught classes on patent law and practice.

Mr. Ray has done significant work in a variety of electrical and computer technologies and in medical devices.


Patricia Carson is an intellectual property partner in the New York office of Kirkland & Ellis LLP. She focuses her practice on patent litigation and patent counseling matters, including IP due diligence and licensing. She has experience prosecuting and licensing patents, as well as counseling patent holders in a variety of fields. She counsels clients on patenting strategy, patenting evaluation and IP due diligence relating to transactions, including licensing, joint ventures and acquisitions. She has represented clients in the pharmaceutical, biotechnology, chemical, medical device, consumer healthcare, consumer electronics and semiconductor fields.

Prior to joining Kirkland, as a partner at Kaye Scholer, she won a major victory on behalf of Wyeth in Wyeth v. Kappos. The case successfully challenged the U.S. Patent and Trademark Office's interpretation of a statute designed to compensate patent holders for loss of patent term due to delays in processing applications. The victory resulted in significant patent term being added to the patents at issue in that case and to patents assigned to countless other companies as well. Patricia recently acted as lead counsel for Pfizer in Pfizer v. Watson, and defended the company against Watson's attempt to launch a generic version of Rapamune®, a drug used to prevent organ rejection in transplant patients.

Patricia has a scientific background and experience as a patent examiner. She holds a Ph.D. in microbiology and immunology from Temple University School of Medicine. She devoted several years to postdoctoral studies at the Medical College of Virginia and the National Institutes of Health. She also spent several years in the U.S. Patent and Trademark Office as a patent examiner in the biotechnology group.

Patricia has been recognized in The National Law Journal's "Defense Hot List" feature and by Intellectual Asset Management (IAM) Life Sciences 250 — The World's Leading Life Sciences Lawyers.


Publications

"Trial Strategies in the Era of the Troll," Corporate Counsel, September 7, 2010 Written Description, Chapter in Pharmaceutical and Biotech Patent Law, published by the Practising Law Institute, 2008