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Patent Law Institute (9th Annual)

Author(s): Scott M. Alter, John M. White, Douglas R. Nemec
Practice Area: Intellectual Property, Litigation
Published: Mar 2015
PLI Item #: 58442
CHB Spine #: G1217

Scott Alter is a partner in Lathrop & Gage LLP’s Denver office.  He focuses on intellectual property matters concerning software, electronics, Internet, business methods, telecommunications, electronic commerce and semiconductor technologies.

Scott’s extensive experience includes developing and implementing IP strategies for protecting and monetizing technology assets; establishing invention disclosure programs; rendering opinions regarding infringement, validity and enforceability of patents; risk assessment and design-around analysis concerning new and current products; IP due diligence and agreement negotiations for corporate transactions; strategic analysis regarding patent litigation; strategic building of world-wide patent portfolios; patentability evaluation of cutting-edge technologies; and managing complex patent prosecution including appeals, reexaminations and reissues.  In addition, he has served as an expert witness in litigation concerning data encryption technology.  Prior to attending law school, Scott was employed at IBM as a LAN systems developer and computer programmer.

Douglas R. Nemec concentrates on intellectual property litigation and related counseling, including providing intellectual property advice in connection with corporate transactions. Mr. Nemec has litigated numerous cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in patent interference proceedings and other matters. He is a member of the Skadden group recognized by Law360 among its 2015 “Technology Practice Groups of the Year” for courtroom victories in the technology sector and by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Selected engagements in which Mr. Nemec has served a lead role include:

  • defending one of the nation’s largest banks in a patent infringement suit brought by a nonpracticing entity;
  • defending an active pharmaceutical ingredient manufacturer in a Hatch-Waxman litigation concerning a blockbuster drug;
  • representing a leading flavor and fragrance company in a trade secret misappropriation action concerning chemical and process engineering technology;
  • representing the world’s leading manufacturer of intelligent lighting products in multiple matters asserting and defending against claims of patent infringement involving complex optical devices and digital communication systems; and
  • advising a major pharmaceutical company in formulating licensing strategies for developmental compounds and diagnostic tools.

Recognized as one of the top patent educators in the United States, John has over 30 years experience in all phases of the patent field. As a Director at Soryn, John is principally responsible for outreach to the technology community and advising Soryn clients on a host of strategic issues.

John began his technical career as a Field Engineer with the Federal Highway Administration specializing in bridge rehabilitation. Later, he worked as a Patent Examiner and the Special Assistant and Speech Writer to the Commissioner of Patents, Donald J. Quigg. Post law school, John founded what would become the largest patent searching and documentation entity in the U.S., supplying the needs of clients across the globe. He also founded the patent law firm, Berenato & White, and a patent education company. After selling the education company to the Practising Law Institute in the mid-90’s, John remained the author and principal lecturer for the course he created.

Since 1995, John has taught 25,000+ fellow patent practitioners in preparation for the Patent Office registration exam. He has also taught more than 400 Patent Examiners patent law and evidence, and has been qualified as a Patent Procedure Expert in several Federal District Court lawsuits. In addition, John served as an Adjunct Professor for the University of Virginia School of Law, and John Marshal Law School and has created numerous patent education programs and publications.

John has examined, written, and prosecuted thousands of patent applications in the United States and around the world.

Born in Bern, Switzerland, John graduated in Civil Engineering from Virginia Tech, and obtained his law degree from George Washington University. He regularly speaks and publishes on a host of patent topics.