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Patent Litigation 2014


Speaker(s): Arlene L. Chow, Brett E. Cooper, Carolyn H. Blankenship, Constance S Huttner, Dawn Rice Hall, Elaine Herrmann Blais, Eric J. Lobenfeld, Eugene R. Quinn, Jr., Garreth A. Sarosi, Gene W. Lee, George E. Badenoch, Gerard A. Haddad, Gil Calvillo, Ph.D., Heather A. Faltin, Hon. Colleen McMahon, Hon. John J. Hughes, Hon. Mary Pat Thynge, Hon. William G. Young, Jeffrey T. Zachmann, Keith R. Hummel, Kenneth L. Bressler, Nicholas K. Mitrokostas
Recorded on: Nov. 10, 2014
PLI Program #: 51874

Arlene Chow's practice focuses on intellectual property matters, with an emphasis on patent litigation in the pharmaceutical, biotechnological, and medical device industries. Arlene has served as lead trial counsel; she has extensive experience in all aspects of patent litigation, including claim construction proceedings, through bench and jury trial and on appeal. Arlene is also acting as lead counsel in multiple inter partes review proceedings before the U.S. Patent and Trademark Office.

Arlene frequently advises clients on patent portfolio assessment, particularly in anticipation of patent litigation as well as in relation to the acquisition, sale, or exploitation of intellectual property assets. In addition, Arlene provides opinions on infringement and validity issues.

Arlene has worked on matters implicating drugs for the treatment of hemophilia, hypertension, depression, ulcers, menopause, skin cancer, schizophrenia, asthma, and insomnia. Arlene has successfully represented clients in a wide spectrum of technologies, including medical devices, data capture, computer hardware and software, and consumer electronics.

Arlene holds a bachelor of science degree in molecular biophysics and biochemistry. She is a registered patent attorney.

EDUCATION


J.D., Columbia Law School, 1998
B.S. Molecular Biophysics and Biochemistry, Yale University, 1994


Colleen McMahon was appointed to the bench of the Southern District of New York by President William Jefferson Clinton; she was confirmed on October 21, 1998. 

A native of Columbus, Ohio, Judge McMahon graduated from The Ohio State University in 1973, summa cum laude and with distinction in Political Science. She attended Harvard Law School from 1973-1976, graduating cum laude. She spent all but one of the next nineteen years at Paul Weiss Rifkind Wharton & Garrison, where in 1984 she became the first woman litigator elected to partnership. During 1979-80, Judge McMahon took a ten month leave of absence from the firm to serve as the Speechwriter/Special Assistant to Donald McHenry, the Permanent Representative of the United States to the United Nations.

During her years in private practice, Judge McMahon chaired the Committees on State Courts of Superior Jurisdiction and Women in the Profession of the Association of the Bar of the City of New York, and served as a member of other Association committees, including the Committee on the Judiciary. For three years, Judge McMahon was an ABCNY representative to the House of Delegates of the New York State Bar Association. She also served in various civic capacities and as Vice Chancellor of the Episcopal Diocese of New York.

In 1993, Judge McMahon was asked by Chief Judge Judith Kaye to chair a commission to reform New York's jury system (The Jury Project). The group's report, which Judge McMahon wrote, was praised by The New York Times as "making a persuasive case for serious attention in Albany," and nearly all of its 82 substantive recommendations for reform were eventually implemented.

In June 1995, Governor George Pataki nominated Judge McMahon to the New York Court of Claims. Designated as an Acting Justice of the State Supreme Court, she conducted felony trials in Manhattan until her appointment to the federal bench three years later.

Courtroom Deputy/Judicial Assistant: Mariela De Jesus

Law Clerks: James F. O'Neill, Esq. (Career Law Clerk), Dylan Keenan, Esq., Sarah Siegel, Esq.


Connie Huttner focuses her practice on patent and technical litigation, as well as litigation involving trade secrets, advertising, and licensing disputes. She has handled a variety of patent trials and appeals involving Abbreviated New Drug Applications (ANDAs) and other pharmaceutical issues, medical devices, software, cosmetics, electronic instruments, coatings, blowing agents and mechanical devices. She also has handled false advertising, and trade secret matters involving English muffins, chewing gum, detergents, food and sporting equipment. Connie has also provided patent opinions and counseling for matters including mergers and acquisitions and other corporate transactions.

Education

Boston College (J.D., magna cum laude, 1980)
     Order of the Coif
     Boston College Law Review

 
Ohio State University (B.S. in Cellular Immunology, 1977) Phi Beta Kappa


Dawn Hall is a Senior Managing Director in the Dispute Advisory Services (“DAS”) practice within the Forensic & Litigation Consulting segment at FTI Consulting and is the co-leader of the Intellectual Property practice. She is based in New York.

Ms. Hall has 20 years of experience assisting companies and counsel with complex economic, financial, accounting, and litigation issues. Ms. Hall has directed numerous commercial litigation engagements focused on applied economic and damages analyses as it relates to intellectual property and commercial litigation matters, including patent infringement, trademark infringement, copyright infringement, trade secret, false advertising and other types of business disputes, such as breach of contract, breach of non-solicitation/non-compete agreements, transfer pricing and Securities and Exchange Commission (“SEC”) investigations related to accounting irregularities.

Ms. Hall has conducted complex damages studies involving lost sales, lost profits, incremental revenue and cost analyses, market share split analyses, apportionment analyses, manufacturing and marketing capacity, price erosion, reasonable royalty, unjust enrichment and prejudgment interest for both plaintiffs and defendants. Ms. Hall has issued expert reports reflecting professional opinions of these respective areas and has been qualified as a damages expert in Federal court.

Ms. Hall has assisted trial attorneys in analyzing company forecasts, business and strategic plans, financial statements and appropriate market data in the preparation of deposition issues for 30(b)6 and opposing experts and preparing trial exhibits, as well as preparing early case assessments.

Ms. Hall has a B.S. in Finance from the University of Notre Dame. She is a member of the Licensing Executives Society (“LES”) and the American Bar Association (“ABA”).


Dr. Gil Calvillo is recognized nationally by Am Law 100 legal teams and Fortune 500 corporations for his expertise in jury selection, witness preparation, mock trial research, and executive coaching.

Gil brings a scientific advantage to his 20 years of practice as a leading jury consultant and communications coach. As a former NIH fellow in neuropsychology with over 11,000 hours of clinical experience, he performed hundreds of patient evaluations that resulted in his becoming a leading expert in the field when it comes to assessing people’s cognitive, intellectual, emotional and behavioral function.  Today, Gil uses his scientific and clinical training to evaluate clients, help them define their goals, and craft the strongest possible method and message for achieving those goals.

For litigators, Gil’s keen assessment skills make him uniquely qualified to prepare strong witnesses, design reliable mock trial research, draft voir dire questions that encourage disclosure, and detect juror bias during jury selection.  Gil has particular interest in people from diverse backgrounds, cultures, and countries examining how their perceptions inform decisions, drive behavior and influence every facet of life.

Over the last 20 years, Gil has worked on seminal, high profile matters that have influenced specific areas of law, including antitrust, insurance bad faith, civil rights, class action, elder and adult dependent abuse, employment, patent, product liability, securities, trademark, and white collar crime.  Gil is highly sought after by litigation teams from around the United States to consult at every stage of the litigation lifecycle.  Gil does not advertise his clients or cases because one of his core values is to protect the confidentiality and anonymity of clients and their enterprise.

  • Antitrust (monopolization, price fixing, unfair competition)
  • Civil Rights (dependent adult/elder abuse, 42 U.S.C § 1983)
  • Commercial (complex business disputes)
  • Employment (discrimination, harassment, whistleblower, wrongful termination)
  • Entertainment & Media (contract interpretation, copyright, defamation, idea theft, privacy, profit participation, publicity)
  • Intellectual Property (copyright, patent, trademark, trade secrets),
  • Insurance (bad faith, casualty/property, construction defect, professional liability, reinsurance, and subrogation)
  • Product Liability (consumer protection, breach of warranty, design & manufacturing defect, failure to warn)
  • Securities (class action, fraud, Ponzi scheme)
  • Toxic Tort (class action, toxic chemicals, air and water contamination)


Elaine Blais, a partner in the firm's Litigation Department, focuses her practice on intellectual property litigation, particularly with respect to patent litigation. Ms. Blais has handled numerous patent infringement lawsuits in federal courts nationwide. She joined Goodwin Procter in 2001 and is currently a member of the firm's Hiring Committee and Partner Integration Committee. She also serves on the firmwide Women's Initiative Steering Committee, co-chairs the Boston Women's Initiative Council and is a member of the firm’s FinTech Practice. Ms. Blais has also served at various times on the firm's Alternative Billing Strategies, Renovations and Big Think Committees.

Work for Clients:

Ms. Blais has been litigating patent cases for nearly two decades. She has advised clients and participated in all phases of patent litigation, from initial counseling up through trial and appeal. Ms. Blais has worked on patent cases involving diverse areas of technology, including pharmaceutical products (Teva Pharmaceuticals, Fresenius Kabi), stem cell technology (ViaCell, Inc.), secure financial transactions (Fidelity), prepaid wireless technology (Freedom Wireless), the Internet (Lycos, Inc.), email tracking systems (Eloqua), semiconductor manufacturing tools (Applied Materials), consumer products (P&G), automatic transmission shift cables, software for reducing artifacts in MRI images, gaming devices and methods, glider designs, steel processing lines, and spinal implants.

She has also represented clients in cases involving copyrights, trademarks, trade secrets, unfair competition and patent-related antitrust issues. Ms. Blais has also filed amicus briefs on behalf of firm clients in a number of significant patent cases before the U.S. Supreme Court and the Federal Circuit sitting en banc, including Therasense v. Becton Dickinson, Microsoft v. i4i, and Caraco v. Novo Nordisk.

Ms. Blais has devoted a significant amount of her practice to counseling clients and advocating to Congress on behalf of clients regarding patent policy. In this capacity, she has worked on various pieces of legislation impacting the pharmaceutical industry, including the America Invents Act. Ms. Blais has been involved in drafting proposed legislation and has made numerous presentations before Congressional members and staff.

Recognition:
In 2012, Ms. Blais (and a client) were selected as a recipient of the Project for Attorney Retention’s 2012 PAR Flex Success Award. The award recognizes attorney-client relationships exemplifying how, with client and firm support, attorneys can work on flexible schedules, deliver exceptional legal services and enjoy extraordinarily successful careers.

In 2009, Ms. Blais was awarded the Mentor Award from the Political Asylum/Immigration Representation Project for her work on behalf of human rights and immigrant advocacy. Ms. Blais continues to dedicate pro bono time to the representation of immigrants seeking asylum, refugee status or special immigrant juvenile status in the United States. While attending law school, Ms. Blais was an associate editor of The Ohio State Law Journal.


Eric Lobenfeld's philosophy is to prepare each case as if it is going to trial. That puts the client in the strongest position to resolve the case, whether through settlement or through litigation to judgment.

Eric's work focuses on technology and life science intellectual property disputes. He has more than three decades of experience as a first-chair trial lawyer in patent, trademark, copyright, antitrust, unfair competition, and complex commercial cases. These include jury and non-jury trials in state and federal courts throughout the United States, as well as arbitrations and arguments in numerous state and federal appeals. He also handles post-grant review proceedings in the U.S. Patent & Trademark Office and has participated in Markman claim construction proceedings for more than 50 patents.

Eric represents companies in many industries, including computer hardware and software, pharmaceuticals and medical devices, bar code scanners and Radio Frequency Identification technology, Automated Teller Machines and web-enabled kiosks, semiconductor technology, television and motion picture technology, home and industrial lighting, and consumer electronics.

Eric is a regular panelist in the Practising Law Institute's annual two-day patent litigation program, where he has presented on expert issues and damages issues. He has also given a demonstration of a closing argument in a patent jury trial.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. He regularly works on inter partes reviews and other adversarial proceedings in the USPTO, and trade secret, copyright, trademark and unfair competition matters. He also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

Gene’s work has covered a wide range of technologies, including computer systems and software, telecommunications and wireless communications, medical devices, videogames, audio processing, pharmaceuticals, financial services, chemistry, semiconductors and geoscience.

He has represented major U.S. and Asian companies in high-stakes disputes. Among Gene’s recent achievements are a stipulated judgment of noninfringement in the E.D. of Texas for a Korean electronics company (affirmed on appeal), and his successful representation through trial of the world’s largest alcoholic beverages company in the first investigation in the U.S. International Trade Commission’s pilot program for potential early disposition of cases.

Recognized by Chambers Global, IAM Patent 1000 and Managing IP for excellence, Gene regularly speaks, publishes and offers commentary on recent trends and important issues in patent law and IP litigation.

 

BAR ADMISSIONS

  • New York

 

COURT ADMISSIONS

  • U.S. Patent and Trademark Office

 

EDUCATION

  • Cornell Law School, J.D., 1992
  • Columbia University, B.S., Mechanical Engineering, 1989

 

PROFESSIONAL RECOGNITION

  • Chambers Global: The World's Leading Lawyers for Business, 2013 - 2015
  • Managing IP – “IP Star,” 2013 - 2016
  • IAM Patent 1000 – The World's Leading Patent Practitioners, 2013 - 2015
  • Who’s Who Legal: Patents, 2014 - 2015


Gene Quinn is a Patent Attorney and the founder of IPWatchdog.com. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since it has become of the leading IP publications on the Internet. IPWatchdog.com has been recognized multiple times by the American Bar Association as a top 100 legal blog, has 3 times been voted the top IP blog, and in 2014 was retired from voting and inducted into the ABA Blawg Hall of Fame. 

Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world. As an electrical engineer with a computer engineering focus he finds himself frequently with software, computer implemented methods and Internet innovations.

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 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.


George E. Badenoch is chair of the Firm’s Electrical and Mechanical Practice Group. He has over 30 years experience in litigations and adversarial matters concerning all aspects of intellectual property, including patents, trade secrets, trademarks and copyrights.

Mr. Badenoch has had considerable experience in major patent litigations (jury and non-jury) involving computers, semiconductors and pharmaceuticals, with particular emphasis on computerized automatic machinery and equipment and automobile parts. His successful trial of a major patent jury case involving computerized equipment for custom designed ductwork led to the largest intellectual property judgment nationwide in that year. His role as lead defense counsel for a large group of automobile importers led to the dismissal of a much publicized case brought by an alleged inventor of intermittent windshield wipers, even though the same plaintiff had previously secured multi-million dollar verdicts against two of Detroit’s big three automobile manufacturers.

Mr. Badenoch also counsels clients in patent and other intellectual property licensing matters. He has been involved in the licensing aspects of large merger and acquisition transactions and has been head of the firm’s Licensing Practice Group.  

Mr. Badenoch has spoken before domestic and international bar association groups, authored brochures advising the Japanese community on patent matters and appeared on a number of panels teaching licensing and patent litigation matters to other lawyers sponsored by the Practicing Law Institute and the American Conference Institute.

Practice Areas
Intellectual Property Litigation
Licensing and Transactions
International Experience
International Trade Commission
 
Professional Organizations
The New York Intellectual Property Law Association; the American Intellectual Property Law Association; the Licensing Executives Society; the International Intellectual Property Law Association (AIPPI); the Association of the Bar of the City of New York; the American Bar Association’s Litigation, Anti-Trust and Patent, Copyright and Trademark Sections; committee work relating to the World Intellectual Property Organization Harmonization negotiations and the American Bar Association’s Litigation Section, Pretrial Practice and Discovery Committee.


Gerard Haddad joined Dickstein Shapiro’s New York office in 2008 as a partner in the Intellectual Property Practice. He focuses his practice on intellectual property litigation and counseling.  Gerry has litigated patents in the fields of computer software and hardware, medical devices, pharmaceuticals and telecommunications; rendered opinions on non-infringement, invalidity, and inequitable conduct; and advised companies on their intellectual property rights. Gerry also has performed due diligence investigations for mergers and acquisitions and has litigated copyright and trademark disputes.

Prior to joining Dickstein Shapiro, Gerry was a partner in Morgan & Finnegan LLP’s intellectual property group.


Hon. John J. Hughes (Ret.), served as a United States Magistrate Judge for the District of New Jersey for eighteen years from 1991 to 2009. Judge Hughes presided over approximately twenty eight hundred settlements, conducted nearly sixty jury trials in consent cases, and managed almost five hundred civil cases a year, including discovery and related motion practice (authoring over 450 opinions). He is highly regarded for skillfully settling complicated cases and for his ability to keep parties focused on the issues to reach an amicable solution. Upon retirement, he was noted for his “hard work and good humor”. Judge Hughes was voted Best Individual Mediator 2013 by the readers of the New Jersey Journal.

Judge Hughes was also a pioneer in the rapidly evolving field of electronic discovery, participating in the formulation of one of the first local District Court Rules for e-discovery and authoring an early opinion encouraging cooperation. He was the first judicial advisor for the United States Court Administrative Office/Justice Department Working Group on Electronic Technology in the Criminal Justice System.

ADR Experience

Since joining JAMS in March 2009, Judge Hughes has fostered amicable agreement or quick decision in the following areas of Alternative Dispute Resolution with representative cases:

  • Mediation – conducted numerous, and successful, settlement conferences, ranging from low six figures to multi-million dollar results, in cases involving personal injury/wrongful death, commercial disputes, pharmaceutical patent agreements, employment termination, false claims/ whistleblower cases, insurance coverage cases (including long term disability cases), wage and hour case involving unions and a regional transportation authority, various class actions(including consumer claims), and multi-district cases.
  • Arbitration – presided over numerous arbitrations as sole arbitrator in cases involving employment termination, breach of contract, defamation, and commercial disputes. Also, served as chair of three judge panels in one case involving breach of contract claims between a law firm and a senior partner and in another,contract claims between two companies providing international private protection services.
  • Case Management – managed a commercial dispute between a large telecommunications provider and its distributer for over two and one half years, including numerous case management conferences, discovery decisions and five reasoned decisions on dispositive issues, and also managed a separate federal “Madoff spin-off” case lasting only a few weeks. Both cases resulted in settlements fostered by other JAMS neutrals.
  • Special Discovery Master – served as court appointed special discovery master in a federal case involving appropriate “confidential “ markings on thousands of documents in a pharmaceutical case and in a separate state case, involving a variety of discovery disputes including privilege issues, between a large healthcare provider and a hospital network.
  • Mock Trial/Neutral Evaluation – served as one of three members of various mock trial panels to advise one party as to viability of issues involving patent validity and in a separate case, provided neutral evaluation for a Plaintiff in a federal suit to release escrow funds held back in the prior sale of a company.

Background and Education

  • U.S. Magistrate Judge, District of New Jersey, 1991-2009
  • Assistant-in-Charge of Camden-Trenton Region, Federal Public Defender, 1976-1991
  • Assistant New Jersey State Public Defender, Essex/Hunterdon Regions, 1972-1976
  • Associate, Sterns and Greenberg, 1972
  • Law Clerk, New Jersey Department of Law and Public Safety, 1971
  • J.D., Villanova University, 1971
  • B.S., (Business Administration), Villanova University, 1968


Honorable William G. Young, Judge of the United States District Court, District of Massachusetts, has been an active trial judge for more than 25 years, serving on both the Massachusetts Superior Court (1977-85) and the United States District Court for the District of Massachusetts (1985-present). After receiving his A.B., magna cum laude, from Harvard University in 1962, he served two years as an officer in the United States Army. His legal career began in 1967 when he was admitted to the Massachusetts bar upon graduating from the Harvard Law School. He served as law clerk to the Honorable Raymond S. Wilkins, Chief Justice of the Supreme Judicial Court. Following his clerkship, he practiced law as an associate and then partner at the Boston law firm of Bingham, Dana & Gould. His legal career has also included stints as a Special Assistant Attorney General and as Chief Counsel for former Massachusetts Governor Francis W. Sargent.

A longtime teacher of evidence and trial advocacy, he has taught at several law schools including Harvard, Boston College, and Boston University. Commonly referred to as the Education Judge, he is active in judicial education at the Federal Judicial Center and the Flaschner Judicial Institute. Moreover, he volunteers much of his time to educating the bar and has been a staple at continuing legal education programs and institutions including Virginia Continuing Legal Education and the Practicing Law Institute (PLI). He has won national acclaim for his work on the Massachusetts Continuing Legal Education's annual lecture series On Trial with Judge Young, which offers each fall an intensive 15-week study of trial techniques and trial evidence.

In addition to teaching in the classroom, Judge Young has written extensively. He is the principal author of Massachusetts Evidentiary Standards (1992 through 2005 eds.) and Vols. 19 and 19A, Evidence (Mass. Practice Series 1998), and co-author of Daubert's Gatekeeper: The Role of the District Judge in Admitting Expert Testimony (Tulane Law Review), and An Open Letter to U.S. District Judges, The Federal Lawyer (July 2003).


Keith R. Hummel is a partner in Cravath’s Litigation Department.

Mr. Hummel has extensive experience litigating complex commercial, intellectual property and other legal disputes, both for plaintiffs and defendants. He handles cases for clients in diverse fields, including telecommunications, medical devices, computer hardware and software, food additives, luxury flooring products, pharmaceuticals and biotechnology. Mr. Hummel frequently advises clients on national and worldwide intellectual property strategy, and is often asked to lead efforts to identify IP assets that can be effectively used for offensive or defensive purposes.

Mr. Hummel recently won the dismissal of lawsuits against IBM brought by South African nationals who attempted to hold IBM accountable for apartheid under the Alien Tort Statute. In July 2015, the Second Circuit Court of Appeals affirmed the district court’s decision. Mr. Hummel was featured as the “Litigator of the Week” by The Am Law Litigation Daily for his work on this matter.

Mr. Hummel represented Reggie Brown in connection with his claim to an ownership interest in Snapchat, the disappearing picture and message application; the case settled on mutually agreeable terms to all parties. Mr. Hummel is currently representing Qualcomm and Laird in patent infringement actions relating to wireless chips that implement the TKIP encryption standard and is advising Spirits International in connection with its dispute with the Russian Federation over the ownership of the Stolichnaya vodka trademark. He is responsible for coordinating and managing worldwide patent litigation for stent manufacturers Medinol Ltd. and OrbusNeich Medical Inc., including cases in the United States, Japan and Europe.

Mr. Hummel obtained a favorable settlement for OrbusNeich Medical and its international affiliates in patent infringement actions against Boston Scientific’s coronary stent systems, in which he oversaw and coordinated litigation in the United States, Japan, Germany, the Netherlands, Ireland and the United Kingdom. Mr. Hummel’s other recently completed matters include representing Metroflor, a leading manufacturer of luxury flooring, in a lawsuit brought by the company’s former CEO, who claimed to be a co-inventor of Metroflor’s patents on a revolutionary flooring product; International Flavors & Fragrances in a patent and unfair competition case involving food additives; Qualcomm in patent cases involving RF downconversion technology, GPS technology and mobile fleet tracking systems; and INEOS as plaintiff in a trade secrets case concerning a revolutionary process for creating biofuels.

Mr. Hummel previously represented Medinol in a case alleging that Guidant Corporation was infringing Medinol’s stent design patents. He obtained summary judgment that Guidant’s popular coronary stents infringed 10 claims and was lead counsel in the subsequent jury trial on validity. Just before the jury’s verdict was to be read, Guidant settled on monetary terms that are confidential.

Mr. Hummel also tried a breach of contract case for Medinol against Boston Scientific Corporation. BSC settled after seven weeks of trial, paying Medinol $750 million and surrendering its 20% stake in Medinol. The settlement preserved Medinol’s right to arbitrate patent infringement claims against future BSC stents. Mr. Hummel has represented Medinol as lead counsel in those private arbitrations.


Ken Bressler has been a partner at Blank Rome since 2005. He is an intellectual property litigator with 30 years of hands-on experience. In addition, Ken counsels companies on general business matters and conducts due diligence reviews of intellectual property assets for private equity, IPO’s, M&A and financings.  He represents a broad cross-section of clients from the life sciences, technology, entertainment and financial services industries.

ADMISSSIONS

Ken is admitted to practice in New York, the U.S. District Court - Eastern and Southern District of New York, Eastern District of Wisconsin, the United States Court of Appeals for the Federal Circuit and the United States Court of Appeals for the Second Circuit.

EDUCATION


Ken received his J.D. (cum laude) from the Benjamin N. Cardozo School of Law, Yeshiva University, in 1984, and graduated with a B.A. from Dickinson College in 1981.

PUBLICATIONS

In March, 2014, Ken co-authored a white paper How to Defend Against Patent Trolls Without Breaking the Bank. It provides recommendations on mitigating potentially crippling patent litigation and adverse financial consequences while defending your company against patent trolls.


Nicholas Mitrokostas, a partner in Goodwin Procter’s IP Litigation Group, focuses his practice on commercial litigation, with a particular emphasis on intellectual property and patent litigation. Mr. Mitrokostas has extensive trial experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation. He also has experience counseling and representing higher educational institutions in litigation. Mr. Mitrokostas also devotes a significant amount of time representing pro bono clients in criminal and immigration matters.

Work For Clients:

Mr. Mitrokostas’ recent representations include:

  • Teva Pharmaceuticals, Inc. v. Sandoz, Inc.: Representing Teva Pharmaceuticals in a significant patent litigation involving Teva’s blockbuster branded product, Copaxone®, the most prescribed treatment for relapsing remitting multiple sclerosis. The court ruled that Teva’s nine patents were valid, enforceable and infringed by the defendants’ ANDAs, which was partially upheld on appeal. The case was heard by the U.S. Supreme Court on October 15, 2014.
  • Teva Branded Pharmaceutical Products R&D, Inc. v. Perrigo, Inc.: Represented Teva Branded Pharmaceutical Products R&D, Inc. in patent litigation involving its inhaler, ProAir® HFA, the most widely prescribed albuterol sulfate metered-dose inhaler. The case was settled favorably.
  • Cephalon, Inc. v. Eagle Pharmaceuticals, Inc. (and related cases): Representing Cephalon, Inc. in patent litigation against 18 defendants involving Teva’s branded cancer drug, Treanda®, which is indicated for the treatment of certain lymphomas. The actions are pending in the U.S. District Court for the District of Delaware before Judge Gregory M. Sleet.
  • Mass. Inst. Tech. v. Shire: Representing M.I.T. in litigation involving infringement of patents relating to novel cellular-scaffolds discovered by Professors Bob Langer and Jay Vacanti. The action is pending in the U.S. District Court for the District of Massachusetts.
  • Teva Pharmaceuticals USA, Inc. v. Pfizer, Inc.: Represented Teva Pharmaceuticals USA as ANDA-defendant in patent litigation involving Pfizer’s products, Detrol® and Detrol® LA. The case was settled favorably.
  • Cephalon, Inc. v. Celgene, Corp.: Represented Cephalon, Inc. in patent infringement litigation involving a paclitaxel drug formulation in the U.S. District Court for the District of Massachusetts. The action is pending before the U.S. Court of Appeals for the Federal Circuit.
  • Genzyme, Inc. v. Anika Therapeutics, Inc.: Represented medical device company, Anika Therapeutics, Inc., which was sued for patent infringement relating to its proposed hyaluronic acid injection therapy, Monovisc®, in the U.S. District Court for the District of Massachusetts.

Mr. Mitrokostas also served as one of several attorneys at Goodwin Procter working on matters related to the criminal investigation and prosecution following the July 2006 Central Artery Tunnel collapse in Boston.


Garreth Sarosi is a member of Dentons' Intellectual Property and Technology practice, focusing on patent litigation. He has litigated patent matters in district courts across the United States, at the US International Trade Commission and in appeals to the US Court of Appeals for the Federal Circuit and the United States Supreme Court. 

Garreth has experience litigating patent infringement matters in multiple technical areas, including telecommunications, materials and material structures, electronic storage systems, electronic security systems, display technologies, automotive technologies, hull designs, various life science technologies and medical devices. He also has experience litigating trademark infringement, copyright infringement, false advertising, consumer class action, securities class action, regulatory and antitrust matters. 

Garreth began his legal career at Morgan & Finnegan in New York. In 2002 he relocated to Dallas and joined the office of Jones Day. Most recently, Garreth was deputy general counsel to MetroPCS Communications, Inc., until its business combination with T-Mobile USA, Inc.


Brett Cooper is a principal in McKool Smith’s New York office. He is a registered patent attorney who has represented domestic and international companies in highstakes patent litigation for more than ten years. Mr. Cooper has participated in numerous hearings and trials, including proceedings in District Courts and before the International Trade Commission (ITC), and has successfully briefed and argued numerous discovery disputes. He represents clients from a diverse range of industries, including wireless telecommunication, smartcard technology, software development, and semiconductor manufacturing. Prior to law school, Mr. Cooper worked as an engineer for the State of New York and later for a joint venture of Air Products and Chemicals and Browning Ferris Industries called American Ref-Fuel Company, which generated energy from refuse and was involved in related business activities. After graduating from law school, Mr. Cooper served as a law clerk to the Honorable Joanna Seybert, United States District Court for the Eastern District of New York.

 


Carolyn Blankenship is Senior Vice President and Associate General Counsel, Intellectual Property for Thomson Reuters.  She has been in private practice as well as in-house, in a variety of firms and companies, including Skadden, Arps, U.S. Surgical (now Covidien), Priceline.com and Thomson Reuters.  Ms. Blankenship attended the Massachusetts Institute of Technology and Harvard College as an undergraduate, and received her J.D. from Arizona State University College of Law (now the Sandra Day O’Connor College of Law).


Heather Faltin is the Senior Patent Counsel at Comcast Cable Communications.  Prior to joining Comcast, Ms. Faltin's was an associate in private practice.  Her practice focused on intellectual property litigation, with a particular emphasis on patent litigation.  She has represented clients from a variety of industries, ranging from telecommunications to medical devices.

Ms. Faltin received her J.D. from the University of Virginia School of Law in 2004.  During law school, she served on the editorial board of the Virginia Journal of Law and Technology.  She received a B.S. in Physics (magna cum laude) from the College of William and Mary in 2000.

Ms. Faltin is admitted to practice in Virginia, Pennsylvania and the District of Columbia and before the U.S. Patent and Trademark Office.


Jeffrey T. Zachmann is Counsel in IBM's Corporate Litigation department.  He has been with IBM since 1988 and, since joining the litigation department in 1992, has managed over 140 intellectual property litigations for IBM, the majority being patent cases.  He also provides litigation-related counsel and advice to the company's licensing and business legal staffs.  He holds a JD from Pace University School of Law (1986) where he was Articles Editor of the Law Review, and an LLM in Trade Regulations from New York University (1988), where he won the Patent Law Award and graduated at the top of his class.  He is admitted to practice before the bars of New York, New Jersey, and the U.S. Patent and Trademark Office.

Mr. Zachmann is a regular speaker and panelist at IP Law conferences on managing litigation, opinions of counsel and other topics. He has been a regular speaker for the Practising Law Institute, the NYIPLA, and the Texas State Bar Annual IP law conference.   He has presented CLE courses at several NYC law firms on ways of improving service to in-house clients.  He was a Teaching Assistant at Pace University School of Law, and was on the Teaching Staff of the Katherine Gibbs Paralegal School, where he taught Legal Research, Constitutional Law and Intellectual Property Law.


Judge Mary Pat Thynge has served as a Magistrate Judge of the U.S. District Court of the District of Delaware since June 1992, and currently serves as its Chief Magistrate Judge. Prior to joining the bench, Judge Thynge was the managing attorney for the Wilmington office of the law firm of White & Williams. Previously, she was associated with the law firm of Biggs & Battaglia. Judge Thynge is a member of the Federal Magistrate Judges Association and serves on its Board as the Third Circuit Representative, on its Civil/Criminal Federal Rules Review Committee and as its Membership Chair. Since 2004, she has served as Executive Editor for the Federal Courts Law Review.

Since her elevation to the bench, Judge Thynge has developed and managed the ADR program of the District Court in Delaware and has been actively involved in continuing legal education programs, primarily regarding ADR, the Federal and Local Rules of Civil Procedure and the Federal Rules of Evidence. She has mediated over 1400 cases, of which more than 500 matters involved patent disputes. She authored the chapter Mediation: One Judge’s Perspective (Or Infusing Sanity into Intellectual Property Litigation) in the book ADR ADVOCACY STRATEGIES AND PRACTICE FOR INTELLECTUAL PROPERTY CASES 2011.