Listing of Presenter Biographies

Transcription

1 NAPP's 19th Annual Meeting & Conference Listing of Presenter Biographies (Alphabetically, with USPTO at the end) (revised June 9th, 2015) July Magnolia Hotel Denver, CO

2 Lisa Adelson Tuesday Afternoon Case Hypotheticals- Client Counseling on Licensing, Monetizing and Alternatives to Patents Lisa Adelson is a seasoned patent practitioner with numerous years of experience representing clients in all aspects of patent prosecution and counseling. She practices in the biotechnology, chemistry and design arts and has represented clients before the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences), and the U.S. Court of Appeals for the Federal Circuit. Lisa also has extensive experience in conducting analyses related to major due diligence and patent litigation matters. Lisa is a strategic thinker who has represented individual and multinational clients at all phases of development. She combines creativity with a keen understanding of current law. Lisa frequently gives seminars to clients and colleagues on current topics in intellectual property law. She earned a B.A. in chemistry magna cum laude from Colgate University in 1993 and received her J.D. from Georgetown University Law Center in Lisa is admitted to practice in the District of Columbia, Maryland and before the U.S. Patent and Trademark Office. Dr. Rajeshkumar Acharya Saturday Afternoon Patents Around the World: India Dr. Rajeshkumar Acharya is a Patents and Trademarks Attorney and he provides comprehensive as well as strategic advice to both domestic and international client. His extensive background embraced Prosecution and Litigation of Patents,T rademarks, Designs, Copy rights and other Intellectual Property related matters. The combination of the Doctorate degree in Pharmaceutical Chemistry and the Bachelor degree in Laws has given Dr. Acharya strength in enhancing understanding on essential characteristics of individual cases. He is also registered to practice before Canada Patent & Trademark Office. He has been a speaker at numerous International seminars and has discussed topics like Patent Harmonization, Intellectual Property Rights in India and Intellectual Property Laws in India. His research papers were published in various national and international journals and magazines on technical as well as intellectual property rights become guide for associates and clients in planning future. He has shared his knowledge and experience by being a writer of many books on Intellectual property Rights related to India.

3 Priya Cloutier Monday Morning Our Changing Practice: Decisions from the Federal Court Priya Sinha Cloutier is a registered patent attorney who focuses her practice on the procurement and enforcement of domestic and international patents, trademarks and copyrights. Her experience includes various technical areas such as aerospace, hybrid and electrical engines, architecture and construction, medical devices, agriculture, food, and energy systems. Priya devotes much of her time to managing and coordinating global patent portfolios of various clients, both domestic and international companies, including the preparation and prosecution of patent applications before the U.S. Patent and Trademark Office. She also counsels clients in avoiding infringement of patents of others and frequently opines with regard to the infringement and/or validity of individual patents, or advises as to a strategy for avoiding the patent portfolios of others. Priya s clients include start-ups, artists, and fortune 50 companies. She serves as Chair of the Government Affairs Committee for the National Association of Patent Practitioners. David Dickerson Saturday Afternoon Patents Around the World: Europe David Dickerson has nearly 20 years experience in the realm of international patent prosecution. His track history includes the prosecution of many hundreds of applications before the European Patent Office, including its Opposition Divisions and Boards of Appeal. Before founding his own firm in 2010, David worked hand-in-hand with several of Germany s most respected patent attorneys as well as in-house. Born and raised in the United States, David earned his graduate degree in Electrical Engineering at the University of Hannover, Germany. He thus has particular expertise in the electrical, computer and mechanical arts. David is registered to practice before the European Patent Office, the German Patent and Trademark Office, the USPTO and the European Union s Office for Harmonization in the Internal Market (OHIM). He is equally fluent in English and German.

4 Curtis Droege Sunday Morning Disclosure Interview; Evaluating IP Options Curtis Droege is a mechanical engineer with over 20 years experience, a patent agent with over 10 years experience, and an inventor on 25 US patents and applications. His engineering expertise includes mechanical, micro-electronics, microfluidics, semiconductor processing, and nano-technology. Curtis has held the position of Worldwide Patent Manager for a $3B technology company, having responsibility for developing a corporate patent strategy, a global patent management process, managed ad-hoc infringement analysis teams, and conducted patent education for more than a thousand technical staff worldwide. While in this role, he developed and managed patent review teams representing all current and future technologies. These teams increased the value of hundreds of patent applications through a structured process aligned with the corporate patent strategy. Curtis currently holds a dual role as President of Tungsten IP, a patent drafting and services firm, and Underwriting Manager for the world s leading Patent Insurance firm, assessing intellectual property risk for a wide array of products. Diane Gardner Tuesday Afternoon Best Practices: Minimizing the Risk of Malpractice Diane Gardner has over twenty-five years of patent prosecution experience. Her initial career as a bench chemist transitioned to the USPTO examining corps. After relocating in California, she has held positions as in-house counsel, in private practice at large IP boutique firms, and most recently as a solo practitioner at Mastermind IP Law. In addition to patent prosecution, she also has a large trademark practice.

5 David Grossman Sunday Morning Patent Application Preparation David G. Grossman, J.D. is admitted to practice law in the District of Columbia and before the United States Patent and Trademark Office. David Grossman received a Juris Doctor, magna cum laude, from the American University Washington College of Law in 2004 and a Bachelor of Science in Electrical Engineering from The Pennsylvania State University in David is experienced in: the management of intellectual property; the prosecution of patents; and the development, licensing, and commercialization of new technologies. David was the Assistant Director of Technology Transfer for George Mason University for over 10 years, led the software and avionics development for the NASA/Orbital X-34 rocket plane, and designed toys for Fisher-Price. David is an active member of the National Association of Patent Practitioners (NAPP) and the Association of University Technology Managers (AUTM). David has serves as the President of NAPP and was the research editor of Tomorrow s Technology Transfer: The Journal of the Association of University Technology Managers. Additionally, David is an inventor for over 17 patents with several others pending and has been involved with several start-up companies from initial concept to exit. Louis Hoffman Monday Afternoon Alice/101 Update and Discussion Tuesday Afternoon Case Hypotheticals - Client Counseling on Licensing, Monetizing and Alternatives to Patents Louis Hoffman is the president and founder of the Hoffman Patent Firm. He is Chairman of the Board of NAPP. Louis has been an intellectualproperty lawyer for nearly 30 years. Louis s law practice focuses on (1) commercialization through sales, licensing, and enforcement of valuable patents, (2) patent portfolio development, including patent prosecution, especially identifying and securing patent claims that can provide added value to patent portfolios, and (3) managing litigation and licensing programs of all sizes. Aside from patent matters, Louis sometimes works on copyrights and trademarks (U.S. and foreign), license drafting, and contract matters. Louis is a patent attorney licensed to practice law in California and Arizona, before numerous U.S. District Courts, before the Federal Circuit and Ninth Circuit Courts of Appeals. Louis is a graduate of Princeton University and Harvard Law School, both with honors.

6 Sam Kamin Saturday Afternoon Challenges and Opportunities of IP in the Cannabis Industry Sam Kamin, professor and director of the Constitutional Rights and Remedies Program at the University of Denver Sturm College of Law, has emerged as an expert voice on marijuana law reform in Colorado and throughout the country. He sat on Colorado Governor John Hickenlooper s Amendment 64 Implementation Task Force and is currently working with the ACLU and California Lt. Governor Gavin Newsom to formulate a set of best practices for marijuana regulation in that state. In addition, he co-authors the series Altered State: Inside Colorado s Marijuana Economy for Slate Magazine, chronicling the impact of Colorado s marijuana regulations on lawmakers, businesses and citizens. He is currently teaching the nation s first law school course on representing marijuana clients. Richard Kirkpatrick Sunday Morning Patent Application Process: Part II: Specification Drafting Richard Kirkpatrick served in the USAF from 1986 to Started patent drafting in-house with Arnold White & Durkee in 1994, then with to Fish and Richardson from 1994 to Opened RDK Designs in 1996 which later became Patent Designs. Currently employs 60 draftsmen. B.S. in Business from LeTourneau University and Licensed Nurse from Tyler County School of Nursing.

7 David W. Ladner Sunday Afternoon Chemical/Pharmaceutical Patent Prosecution Following 22 years with American Cyanamid in Princeton, NJ, where he was a named inventor on 22 U.S. patents, David became a Patent Agent in 2000 and was hired as the Patent Manager for Bayer Pharmaceuticals in West Haven, CT. From he served as IP Manager at several small Biotech and Pharmaceutical startups. Since 2009, David has provided similar services as sole practitioner of Ladner Patent Management, and also serves on the faculty of the Patent Institute of Training, mentoring new Patent Agents and Attorneys. David is a native of Pennsylvania, and has a B.S. in Chemistry from Penn State, a Ph.D. in Organic Chemistry from the University of Georgia, and an M.B.A from Fairleigh Dickinson University. He splits his time between suburban Atlanta and Kiawah Island, South Carolina, where he attempts to conquer the mysteries of golf without losing his normally good sense of humor. Gary R Maze Sunday Morning Disclosure Interview; Evaluating IP Options Gary R Maze, the president and founder of the Maze IP Law, P.C. law firm, has practiced intellectual property law in since His experience includes preparation and prosecution of patent and trademark applications; patent, trademark, copyright, and trade secret litigation; licensing of intellectual property rights; and legal opinions regarding infringement, enforcement, and/or validity of intellectual property rights. Mr. Maze s patent prosecution experience includes subsea oil and gas production intervention tools, software and computer related systems, electromechanical devices, and medical devices. Prior to becoming an attorney, Mr. Maze spent over 18 years in the aerospace and computer industries, working in various capacities as an engineer; in software development, both as a developer and as a manager; in marketing, including product line management and heading marketing and technical support; and as a small computer business owner. He is a named inventor on five issued patents.

8 Viva Moffat Saturday Afternoon Challenges and Opportunities of IP in the Cannabis Industry Viva Moffat, professor and associate dean for academic affairs, began her academic career at the University of Denver Sturm College of Law after seven years in private practice and one year as a visiting professor. While in law school at the University of Virginia, she was editor-inchief of the Virginia Law Review. After graduation, she clerked for Judge Robert R. Beezer of the U.S. Court of Appeals for the 9th Circuit in Seattle. Following the clerkship, Dean Moffat was an associate at Keker & Van Nest LLP in San Francisco, where she had a general commercial litigation practice. After moving to Colorado in 2000, her practice on intellectual property litigation and transactions, sparking her interest in teaching and writing in the field of intellectual property. Moffat teaches courses on intellectual property and contracts. Her scholarship concerns intellectual property and the interaction among the various legal regimes for the protection of intellectual property. Carl Oppedahl Saturday Afternoon The Hague Agreement Sunday Afternoon Get Patents Fast! PPH/International Issues Carl Oppedahl is vice-chair of the AIPLA PCT Issues Committee and is a Fellow of the AIPLA. He is an adjunct professor at the University of Denver, teaching advanced patent law. He is a partner in Oppedahl Patent Law Firm LLC in Westminster, Colorado. His law degree is from Harvard

9 Chirag Patel Sunday Afternoon Patent Prosecution for Software/Business methods/electrical Art Chirag has practiced intellectual property law for over eight years, and he brings a combination of skills and experience in technological fields including electrical engineering, telecommunications, software, and finance. Chirag has prepared and prosecuted patents related to wireless technologies, storage devices, storage area networks, digital signal processing, optics, control systems, image processing, databases, operating systems, social networking, financial services, and business methods. Chirag s practice also includes patent prosecution, counseling, noninfringement analysis and opinions, invalidity analysis and opinions, intellectual property licensing, software licensing, software development agreements, software services outsourcing agreements, and counseling clients on IP management. Besides his background in technology and intellectual property, Chirag is also a chartered financial analyst (CFA), he regularly contributes to the CFA Digest, and he is on the Board of Editors for the CFA Digest. Chirag is also on the Board of Directors for The Second Wind Fund, a foundation based in Colorado with a mission to decrease the incidence of suicide in children and youth by removing the financial and social barriers to treatment. Daniel J. Sherwinter Tuesday Afternoon Case Hypotheticals- Client Counseling on Licensing, Monetizing and Alternatives to Patents Daniel J. Sherwinter, is a partner with Marsh Fischmann & Breyfogle LLP in Boulder, Colorado, and focuses his practice on strategic Intellectual Property portfolio development, with an emphasis on patent prosecution in the electronics, software, and mechanical arts. He has enjoye d working with clients ranging from individuals and start-ups to some of the largest patent filers in the world, counseling those clients in a wide range of strategic and technical disciplines that include telecommunications, networking, biometrics, signal processing, medical devices, computer hardware and software, analog and digital circuits, and business methods. Prior to becoming a patent attorney, Mr. Sherwinter worked as a R&D project manager at The Boeing Company, where he designed and analyzed electrical systems for various tactical aircraft programs and co-invented patented techniques for reverse engineering structural data from legacy aerospace platforms. Mr. Sherwinter currently serves as Chair of the Intellectual Property Section of the Colorado Bar Association and is actively involved in a number of organizations and boards in the community. He is an adjunct professor at the University of Colorado School of Law, co-instructing their Student Patent Clinic and teaching courses on Strategic IP Counseling and Prosecution and Patent Law.

10 David Stein Monday Afternoon Examiner Interview Tactics Tuesday Afternoon Case Hypotheticals- Client Counseling on Licensing, Monetizing and Alternatives to Patents David Stein is a patent practitioner with a combined twelve years of in-house and law firm experience. In a technology transfer context, David participated in the development of a patent portfolio, disclosure review, and coordination with patent counsel. Utilizing a master of computer science degree, David has filed 250 patent applications for leading companies specializing in software, computing devices, and semiconductor fabrication. David is extensively experienced in patent prosecution, and has handled 400 office actions and conducted 150 examiner interviews. David has particularly studied the topic of patentability of computer-related inventions under section 101 of the Patent Act. Bruce Young Tuesday Afternoon On Your Radar: Docketing Systems Reviewed Bruce has been a patent agent in a full-time solo practice for the last five years. Before that, he spent 30+ years as an engineer and engineering manager in the Computer and Consumer Electronics industry where he was named as an inventor on 40 issued US patents. Bruce s past career experiences include: Director of System Architecture for Display Technology at Jabil, the third largest electronics manufacturing services company in the world; Chief Technology Officer for two small companies, Radiosophy, a maker of HD Radio receivers, and Digital5, which created networking software for consumer electronics products; Director of Engineering for the Consumer Solutions group at Gateway where he was instrumental in the development of Gateway s non-pc products such as plasma TVs and digital cameras; and positions at several other companies including Hewlett-Packard, Lucasfilm/Pixar, and Intel. Mr. Young holds a Bachelor of Science degree in Computer Engineering from Iowa State University, and a Master of Science degree in Electrical Engineering from Stanford University. He currently lives in Le Mars, IA with Debra, his wife of over 30 years where they enjoy keeping up with their four grown children.

11 Chenyan Wu Saturday Afternoon Patents Around the World: China Chenyan Wu is a partner at China PAT Intellectual Property Office in Beijing. She is licensed to practice patent work in China and also passed the US Patent Bar Exam. She has more than eleven years of work experience in the field of intellectual property including one and a half years working at Oppedahl Patent Law Firm LLC in Colorado and a two-month internship at a multinational corporation based in the US. She has a bachelor s degree in Electrical Engineering and received her master s degree in intellectual property at University of New Hampshire School of Law (formerly Franklin Pierce Law Center). She has extensive experience in patent matters, covering prosecution, invalidation and opinion works. She helps multinational corporations protect their intellectual property worldwide, including IP strategy, patent portfolio management, and enforcement. Her firm ranks first worldwide as top PCT filing firm in 2012 and 2013.

12 USPTO Presenters - Monday July 13 The USPTO's Rocky Mountain Regional office officially opened June 30, 2014 in the Byron G. Rogers Federal Building. The Rogers building is home to 11 federal agencies in downtown Denver and offers convenient access to downtown and suburban sites. The office will house both examiners and Patent Trial and Appeal Board (PTAB) judges in a 45,000 square foot space. The building offers a fitness center, health unit, and large conference space. Administrative Patent Judge Gregg I. Anderson was appointed to the Board in 2013 to decide appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office, and to preside over trials to determine patentability of claims in patents subsequent to issuance. Judge Anderson has a B.S. in Aerospace Engineering from the University of Kansas and a J.D. from the University of Missouri (Columbia). Prior to coming to the Board, he was in private practice for over thirty years, primarily as an intellectual property litigator. He practiced in Denver with the firm of Holland & Hart and founded the Denver office of Merchant & Gould. His experience in private practice includes litigation of patents related to PC computer storage, specifically partitions, software for automatically printing color coded labels, protocols for sending data over the internet, and data compression and packetizing. He is a member of the Colorado and California bars, and is registered to practice before the USPTO. Lead Administrative Patent Judge Patrick M. Boucher was appointed to the Board in 2012 to decide appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office, and to preside over trials to determine patentability of claims in patents subsequent to issuance. Judge Boucher has had a fruitful and diverse career of great legal and technical breadth. Prior to his appointment to the Patent Trial and Appeal Board, he practiced as a patent attorney at Pennie & Edmonds LLP in New York, Townsend and Townsend and Crew LLP, and Marsh Fischmann & Breyfogle LLP in Denver. For several years before becoming an attorney, he was an Associate Editor of Physical Review B.

13 Robin Evans U.S. Patent and Trademark Office Interim Director, Rocky Mountain Regional Director Denver, CO uspto.gov/about-us/uspto-locations/rocky-mountain-regional-office- colorado Robin O. Evans was recently named the Interim Director of the Rocky Mountain Regional Office located in Denver, CO. Prior to this, she served as Director of (Technology Center 2800), where she, along with her co-directors, was responsible for directing over 90 managers and over 1600 examiners in the field of Semiconductors, Electrical and Optical systems and components. She also served as the Regional Manager of the Elijah J. McCoy United States Patent and Trademark Office (USPTO) in Detroit. In this role, she was be responsible for handling the daily operations of the first-ever satellite office in the over-200 year history of the USPTO. She opened the office in July 2012, and in her first year successfully transformed the office into a highly functional site, staffed with patent examiners and administrative judges. She was critical in making the office a major force in revitalizing the economy of the city. Ms. Evans joined the USPTO in 1996 after receiving her Bachelor of Science degree in mechanical engineering from the University of Maryland. She began her career as a patent examiner in Group 3100 (which later became Technology Center 3700), where she specialized in the areas of fluid sprinkling, spraying, and diffusing and fire extinguishers, later becoming a primary examiner in those same fields. Ms. Evans has also served as a supervisory patent examiner in two different areas, as a managing training quality assurance specialist in Technology Center William J. Griffin Deputy Director Office of Enrollment and Discipline William J. Griffin joined the United States Patent and Trademark Office in 1999 as a staff attorney with the Office of Enrollment and Discipline, and currently serves as the Deputy Director for the Office of Enrollment and Discipline. Prior to joining the USPTO, Mr. Griffin engaged in the private practice of intellectual property law with several Washington, D.C. area law firms. His private practice focused primarily on patent, trademark and copyright litigation, patent counseling, and patent prosecution. He received a Bachelor s degree in electrical engineering from Johns Hopkins University and a Juris Doctor degree with honors from George Washington University. He is admitted to practice before the Supreme Court of Virginia, the United States District Court for the Eastern District of Virginia, the United States Court of Appeals for the Federal Circuit and the United States Patent and Trademark Office.

14 Administrative Patent Judge Kristina M. Kalan was appointed to the board in 2013 to decide appeals arising from adverse decisions of Examiners at the United States Patent and Trademark Office, and to preside over trials to determine patentability of claims in patents subsequent to issuance. Judge Kalan earned a juris doctor degree from the University of Colorado and an artium baccalaureatus degree in Chemistry from Harvard University. Judge Kalan served as Law Clerk for the Honorable Chief Judge Janice B. Davidson of the Colorado Court of Appeals. Following her clerkship, Judge Kalan joined the firm Berenbaum Weinshienk PC, where she practiced in the areas of patent, trademark, and copyright law. Sudhanshu Pathak I joined the USPTO in 2003 as a Patent Examiner in Technology Center 2600 (Communications). The Technology Area I examined was Digital Communications which included subject matter related Encoders/Decoders, Equalization, Error Correction, and various other digital processing technologies related to Spread Spectrum, Wireless LAN, 3G/3G LTE etc. I later joined the Central Reexamination Unit (CRU) first as an examiner in 2010 and then later as a Supervisor in In this unit I examined and supervised in the Electrical Technologies area with regards to Ex Parte / Inter Partes Reexamination proceedings and Supplemental Examination. Currently, I am on Detail as a Resource Supervisor in the Denver Satellite Office, assisting in the day-to-day operations of the Satellite Office. Prior to joining the USPTO I was an Electrical Engineer with companies including Motorola Inc., Arraycomm, and K&L Microwave. I have my BSEE and MSEE from the University of Illinois at Chicago.

15 Raul Tamayo (no photo) Raul Tamayo joined the USPTO in 2007 as a legal advisor in the Office of Patent Legal Administration (OPLA). He became a senior legal advisor in As a senior legal advisor, Mr. Tamayo is involved with many projects, including administration of the Patent Term Restoration provisions of the Hatch- Waxman Act, administration of Patents compliance with rulemaking considerations, such as the Paperwork Reduction Act, and implementation of pilot programs, such as Quick Path IDS and After Final Consideration 2.0. Mr. Tamayo has recently focused on subject matter eligibility under 35 U.S.C. 101, and is part of the team tasked with implementing eligibility policy in the wake of the Supreme Court s Alice and Myriad decisions. Prior to joining the USPTO, Mr. Tamayo spent over 8 years in private practice at Sughrue Mion, PLLC, in Washington, DC. Eliseo Ramos-Feliciano Supervisory Patent Examiner United States Patent and Trademark Office Graduated Magna Cum Laude from the University of Puerto Rico with a Bachelor of Science in Electrical Engineering. Joined the USPTO in 1999 as Patent Examiner in the field of Telecommunications. In 2005 was granted Master s Level status and during the same year was approved to assume full responsibility as Primary Examiner. A year later was promoted Supervisory Patent Examiner and has overseen a diverse variety of technological areas including Measuring, Testing and Calibration. While currently serving from Alexandria Headquarters, a year ago was detailed to Elijah J. McCoy Detroit Satellite Office, the first USPTO Satellite Office in history. Through years of service has developed a solid understanding of Intellectual Property and is now a resource to various USPTO s Programs. During his spare time he enjoys numismatics.

16 Amy Ng Supervisory Patent Examiner United States Patent and Trademark Office Amy graduated from the University of Maryland in 2001 with a B.S. in Computer Science. She worked in the private sector as a JAVA developer for 5 years before joining the USPTO. She started at the USPTO in September 2006 and examined primarily in the database area. Amy became a supervisory patent examiner in 2013 in the graphical user interface area. Amy continues to stay up to date with the latest computer and software technology through continuing education and reading technical journals. She also serves as a board member for the Cantonese School of Greater Washington outside of her working hours with hopes of enriching children with the Chinese culture and language. Amy is an energetic mother of two young boys and wife of an avid Redskins fan. In her free time, she enjoys playing with her boys, biking with her husband, and taking digital photography. Amy and her family live happily in Centreville, VA.

17 Seema Rao Director of TC 2100 United States Patent and Trademark Office Seema joined the Patent Office in November of 1994 as a patent examiner in multiplex communication technology area, became a Supervisory Patent Examiner in September of 2002 and Technology Center Group Director in January of Seema graduated with BS degree in EE from India and MS in Telecommunications systems management from University of Maryland. She is currently assigned to TC 2100 overseeing Computer Architecture and GUI technology areas. Steve Hong Supervisory Patent Examiner United States Patent and Trademark Office Steve Hong received a B.S. Degree in Electrical Engineering from the University of Virginia and a M.S. Degree in Software Systems Engineering from George Mason University. After graduating from college, he joined Naval Surface Warfare Center as a systems engineer where he worked on the command and control, and information systems for the AEGIS class Navy cruisers and destroyers. He joined the USPTO in 1994 and earned the full signatory authority in Steve has been a Supervisory Patent Examiner in software technology since 2004 and has been serving as a hiring coordinator for Technology Center 2100 in the last several years.