About the Authors. Editors-in-Chief

Transcription

1 About the Authors Editors-in-Chief Steven W. Lundberg is a registered patent attorney and a founding partner of Schwegman Lundberg & Woessner, P.A. His practice is focused on patent protection for software, medical, and telecommunications technologies and related opinion and licensing matters. Mr. Lundberg received his B.S.E.E. from the University of Minnesota and his J.D. from William Mitchell College of Law. From he worked for Honeywell, Inc., designing electronic and software systems. Mr. Lundberg was a law clerk and associate attorney at Merchant & Gould in Minneapolis from He co-founded their Computer Law Group, became a partner in 1988, served on their practice committee in 1991, managed their Los Angeles office in 1992, and was on the Executive Committee Mr. Lundberg is a past board member of the Minnesota Intellectual Property Law Association and a past president of the Minnesota Software Association, for which he currently serves as the chair of the Government Relations Committee. He has published and spoken widely on software and electronic patent protection and is active in the Software Publishers Association and the Computer and Electronics Committee of the American Intellectual Property Law Association. Stephen C. Durant is a shareholder in Schwegman Lundberg & Woessner, P.A., in San Jose, California. He earned a B.S.E.E. from the University of Notre Dame and a J.D. from Cornell Law School. The focus of his practice is obtaining and structuring patent portfolios and counseling on intellectual property law issues in support of business strategies, litigation, and corporate finance transactions. Mr. Durant has served as primary outside patent counsel for numerous high technology clients. Mr. Durant continues to personally prepare and prosecute patent applications and supervises and leads teams of patent specialists on behalf of clients in high-tech industries, including computer software, optics, business methods, wireless communications, computer architecture, electronic circuits, chip design software, analog design, network switching technologies, holography, motion picture animation, and MEMS. He is a frequent lecturer and writer on intellectual property law topics. Ann M. McCrackin is a patent prosecution process expert and a highly accomplished patent attorney with extensive experience in both U.S. and international vii

2 viii Electronic and Software Patents 2012 Supp. patent prosecution. Before becoming president of Black Hills IP, Ann was a professor of law and the director of the nationally recognized Patent Prosecution and Procedure Program at Franklin Pierce Law Center (now the University of New Hampshire School of Law). At Franklin Pierce, Ann directed the program and taught courses in advanced aspects of practice before the U.S. Patent and Trademark Office. Ann has also taught dozens of continuing legal education courses and seminars on various aspects of patent process and prosecution and has edited and authored a number of legal texts on patent law. Ann is also attorney of record for several amicus briefs filed in patent cases before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. Ann was a shareholder at the Minneapolis patent firm Schwegman Lundberg & Woessner, P.A. for eight years and now is of counsel at the firm. Ann has an undergraduate degree from Iowa State University and a law degree from Franklin Pierce Law Center. Contributors Erika Harmon Arner is a registered patent attorney and partner with Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., in Reston, Virginia. Ms. Arner leads Finnegan s patent prosecution section and practices patent prosecution management, client counseling, and litigation, with an emphasis on business methods, computer software, and the Internet. She represented the petitioners before the U.S. Supreme Court in the landmark patent case Bilski v. Kappos. Ms. Arner has helped clients of all sizes establish and grow patent portfolios, design and implement procedures to protect intellectual capital, and formulate companywide IP strategies and policies. Ms. Arner has provided opinions on patentability, infringement, and validity of patents and has drafted or overseen the drafting of more than 200 patent applications for business method, electrical, telecommunications, and software-based technologies. She is a recognized expert in the area of patentable subject matter and a frequent author and lecturer on business method and software patents. Ms. Arner serves as the vice chair of the Patent Office Practice Committee of the Intellectual Property Owners Association and is a patents editor for Landslide Magazine published by the IP law section of the American Bar Association. She received her B.S. from the College of William and Mary and her J.D., cum laude, from Washington and Lee University. Howard L. Bernstein is a retired partner at Sughrue Mion, PLLC, in Washington, D.C., where he represented clients in the computer and electronic industries advising them on intellectual property protection matters. His practice included all facets of intellectual property law with a concentration in licensing and litigation. He also managed and helped prosecute clients patent portfolios. Mr. Bernstein was an examiner at the U.S. Patent and Trademark Office before joining the Sughrue firm, examining patent applications in the computer storage arts. He was also past president and board member of the Association of Intellectual Property Firms (AIPF), serving on several of the Association s Committees. He is presently an emeritus member of AIPF. Mr. Bernstein s technical area of expertise is in electronic and electrical engineering. He graduated

3 About the Authors ix from Brooklyn Law School (J.D.) after receiving an electrical engineering degree from the City College of the City University of New York (B.E.E.) and gaining experience as an engineer with the U.S. Department of Defense. Patrick G. Billig is a registered patent attorney and founding partner of Dicke, Billig and Czaja, PLLC, where he practices in U.S. and foreign patent prosecution, licensing, agreements, opinions, and other intellectual property work. His primary areas of technical specialization are computer hardware and software, semiconductors, medical devices, optical devices, storage devices, printing devices, and other complex electronic technologies. Mr. Billig has been an officer of Schwegman, Lundberg, Woessner and Kluth, P.A., an associate of Kinney & Lange, a senior engineer at Control Data Corp., and a consultant to MIPS Corp. He received his B.S.E.E. from North Dakota State University and his J.D., summa cum laude, salutatorian, from William Mitchell College of Law. John D. Collins is a British and European patent and trademark attorney and a retired partner in Marks & Clerk LLP in London, England. He graduated with an honors degree in Medical Physics from London University and went on to obtain his doctorate in Physics from London University. After a couple of years of postdoctoral research, much of which was spent designing and programming a computer-controlled spectrometer, he entered the patent profession in He is a chartered physicist, a member of the Institute of Physics, a member of the British Computer Society, a member of the Society for Computers and Law, a member of the European Physical Society, and a member of the Electronics and Computer Law Committee of the American Intellectual Property Law Association. As a member of the Chartered Institute of Patent Attorneys (CIPA) Technology Committee and the CIPA Parliamentary Committee, he is involved in advising members of CIPA and members of the UK and EU parliament on developments in patent law, particularly in the field of software, business methods, and electronics. He has considerable experience with proceedings before the European Patent Office, including oppositions and appeals, and also has experience in litigation both in the United Kingdom and United States. Because his expertise lies in the field of software, Internet, and business method patents, both in Europe and the United States, he regularly gives presentations to U.S. attorneys on the differences in practice in this field between the United States and Europe. Bradley A. Forrest is a shareholder and chairman of Schwegman Lundberg & Woessner, P.A. His practice is focused on patent prosecution for complex technologies, opinion work, and freedom to operate investigations. Brad received his B.S.E.E. in 1978 from the University of Minnesota and his law degree from the University of Minnesota Law School (J.D., 1981). During engineering and law school, Brad worked part-time for Honeywell International, Inc., designing computer simulations. From , Brad was with IBM in Rochester, Minnesota, as counsel and manager of the Intellectual Property Law Department, where he identified several key inventions and wrote many important patents, including the RAID V patent, magneto-optic recording patents, networking patents, and basic patents covering server-driven work processing, known as IPC. From Brad was a division counsel and the copyright and trademark

4 x Electronic and Software Patents 2012 Supp. counsel for IBM worldwide in New York. Brad is a member of the Minnesota State Bar Association and has served on its board of governors. He was president ( ) of the Minnesota Intellectual Property Law Association. Brad is currently on the board of directors of the American Intellectual Property Law Association (AIPLA) and past committee chair of the AIPLA Electronics and Computer Law Committee and Emerging Technologies Committee. Brad is an active speaker and publisher on all areas of intellectual property protection. R. Lewis Gable was of counsel to the firm of Cowan, Liebowitz & Latman, P.C. and is now retired from the practice of law. He holds a J.D. from the George Washington University Law School and a B.E.E. from the Georgia Institute of Technology. Mr. Gable has authored numerous articles and is a frequent lecturer on the topic of intellectual property for computer-related inventions. One of his papers is cited in note 4 of Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed. Cir. 1992). Mr. Gable was chair of the Electronic and Computer Law Committee of the American Intellectual Property Law Association (AIPLA) in 1988 and He testified at the request of the U.S. Patent and Trademark Office (USPTO) at the joint Federal Trade Commission and Department of Justice hearings on Business Perspectives of Patents, Software and the Internet. Mr. Gable moderated a program for AIPLA at which the USPTO introduced in January 1996 its Examination Guidelines for Computer-Related Inventions (the old Guidelines) and coordinated a program in October 2005 for AIPLA at which the USPTO introduced its Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (the new Guidelines). Rudy Hofmann is a registered patent attorney with Dicke, Billig, and Czaja, PLLC, in Minneapolis, Minnesota. His practice includes counseling, transactions, and litigation in all areas of intellectual property law and particularly patent prosecution in computing devices and software. He was formerly patent counsel with 3M Co. He has served on the board of governors of the Federal Circuit Bar Association (FCBA) and as chair of the FCBA Amicus Committee, where he co-authored a brief proposing a rule of law to determine whether an invention is complete enough for it to be on sale that the U.S. Supreme Court adopted in Pfaff v. Wells Electronics, 525 U.S. 55 (1998), as well as other briefs before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. He is currently a member of the FCBA Amicus Committee. He has also served as chair of the Patent Law Committee of the American Intellectual Property Law Association. Mr. Hofmann has spoken on a wide variety of topics in intellectual property law and has authored and co-authored numerous papers and law review articles, including The Rosetta Stone for the Doctrines of Means- Plus-Function Patent Claims, 23 Rutgers Computer & Tech. L.J. 227 (1997), where he worked with Judge Giles S. Rich. He received his J.D., cum laude, from the William Mitchell College of Law and his B.E.E. from the University of Minnesota. Andrew J. Koopman is an associate in the Valley Forge, Pennsylvania, office of RatnerPrestia. He received his B.S. in Engineering Physics from Cornell

5 About the Authors xi University and his J.D. from Temple University s Beasley School of Law. Mr. Koopman is a member of the American Intellectual Property Law Association and the Philadelphia Intellectual Property Law Association, the latter for which he presently serves as chairman of the Computer Practice Committee. Mr. Koopman is admitted to practice law in Pennsylvania and Delaware and is registered to practice before the U.S. Patent and Trademark Office. Stephen G. Kunin is a partner and general counsel at Oblon, Spivak, McClelland, Maier and Neustadt L.L.P. and director of the J.D. Intellectual Property Law Program at the George Mason University School of Law. He earned a B.S.E.E. from the Washington University in St. Louis, Missouri, and a J.D. from the George Washington University School of Law. He is registered to practice before the U.S. Patent and Trademark Office (USPTO). Mr. Kunin is the former deputy commissioner for patent examination policy at the USPTO. The focus of his legal practice is consulting for clients on patent policy, practice and procedure, chairing the firm s post-grant practice group, and serving as an expert witness on patent practice and procedure. Mr. Kunin is the vice-chair of the American Intellectual Property Law Association (AIPLA) PCT Committee and serves as an active member of numerous AIPLA and Intellectual Property Owners committees. He has authored a number of published articles on patent law and has been a frequent speaker at many intellectual property conferences and law schools both domestically and internationally. He has been recognized for his contributions to the field of patent law by the U.S. government, the media, and IP associations. In November 2007, he received the Joseph Rossman Memorial Award from the Journal of the U.S. Patent and Trademark Office Society. In 2012 he was ranked by Chambers USA, IAM, and the Legal 500 as one of the top intellectual property lawyers. Randy W. Lacasse is founder of Patent Fusion LLC and an IP consultant with over 25 years creating, improving, and protecting innovation and product development for next generation technologies. Randy is a former U.S. patent examiner (computer hardware/software and image processing groups), patent advisor for the Intellectual Property Department of IBM, and founder of an international patent services company (19 years). Randy has prosecuted approximately 1,000 U.S. patent applications and reviewed more than 50,000 inventions directed to computer architecture, software, image processing, communications, semiconductors, mechanical engineering, automotive, and general chemical applications. John C. Laurence is the owner of John C. Laurence Law, PLLC in New York City. John holds a Judicial Doctorate from New York Law School and a Bachelor of Science in electrical engineering with a minor in computer science from the Polytechnic Institute of New York University. He is registered to practice in New York and before the U.S. Patent and Trademark Office. Prior to starting his own firm, John was an associate at Cowan, Liebowitz & Latman, P.C., where his practice focused on patent prosecution and trademarks. As an intellectual property attorney, John has prosecuted patent applications involving various technologies including computer hardware and memory, circuit design, software, networking, wireless systems, video processing, financial instruments, business

6 xii Electronic and Software Patents 2012 Supp. methods, and Internet technologies. John has also prosecuted trademark applications in various industries, including entertainment, sports, and manufacturing. As an engineer, John has extensive experience in a broad range of technologies, including software development, storage areas networks, network attached storage systems, media distribution and transcoding systems, control systems, and data networks. Stuart S. Levy is a retired administrative patent judge and is of counsel to the Sughrue Mion, PLLC law firm. The focus of his legal practice is training, patent prosecution of high value cases, assisting Sughrue attorneys with respect to matters involving U.S. Patent and Trademark Office (USPTO) practice and procedure and serving as an expert witness. He brings more than 40 years of experience in ex parte proceedings relative to his 35-year tenure at the USPTO. Upon appointment as an administrative patent judge in 2000, he spent more than seven years deciding appeals involving electrical, computer, business method, and mechanical technologies. Prior to his appointment to the Board of Patent Appeals and Interferences, Mr. Levy was involved in a number of high-profile projects for the USPTO and served as vice chair of the Supervisory Patent Examiners Classifiers Organization. Most notable among his projects were his roles as project leader for the creation of the Patent Assistance Center and as chair of the MPEP Revision Committee, in which 18 teams and several special topic committees provided a five-year, comprehensive revision of the MPEP. Mr. Levy received his J.D. from the George Mason University School of Law and his Bachelor s degree in Electrical Engineering from the City College of New York. He also received a certificate in Advanced Public Management from the Maxwell School of Syracuse University, as part of the USPTO s Maxwell Program. Mr. Levy is admitted to the Virginia State Bar and the District of Columbia Bar. He serves as a member of the IPO Patent Office Practice Committee. He is also a member of the American Intellectual Property Law Association Patent Law and Patent Relations with the USPTO Committees. In addition, Mr. Levy is a member of the Executive Committee of the Asia Pacific Patent Law Committee of the AIPPI-US. Michael J. Mauriel is a co-founder of and a partner at Mauriel Kapouytian & Treffert LLP in New York City. For several years he was an associate in Morrison & Foerster s electronics, software, and telecommunications patent group. He began his patent career as a law clerk to the Hon. Daniel M. Friedman at the U.S. Court of Appeals for the Federal Circuit. He received his J.D., high honors and Order of the Coif, from Duke University in 1997, and an M.S.E.E. from Duke University, also in Mr. Mauriel served as an editor of the Duke Law Journal. His practice includes a variety of patent prosecution and analysis work in various industries including integrated circuit design, interactive media, medical information management, medical imaging, telephony, networking, microwave guides, digital displays, photonic devices, household appliances, and environmental engineering. He has counseled clients and assisted in negotiations and in litigations regarding several multi-patent disputes. He has also helped clients manage and monetize their patent portfolios. He has lectured on

7 About the Authors xiii a variety of U.S. patent law issues, including portfolio management and claim interpretation. Kenneth Nigon has been an IP lawyer for 28 years and is a shareholder in the firm of RatnerPrestia, where he serves as the patent prosecution practice area manager. He earned his B.S. in Electrical Engineering from the University of Notre Dame, his M.S. in Electrical Engineering/Computer Engineering from Stanford University, and his J.D. from Temple University. Before entering the legal profession, he worked for nine years as a systems programmer. He has served as president of the Philadelphia Intellectual Property Law Association, chair of the American Intellectual Property Law Association (AIPLA) Electronic and Computer Law Committee, co vice chair of the AIPLA Professional Programs Committee, and treasurer of AIPLA. He is currently chair of the AIPLA Patent Law Committee. Mr. Nigon is a lecturer at the Advanced Patent Prosecution Workshop presented by the Practicing Law Institute. He is listed in Chambers & Partners America s Leading Lawyers for Business in The Best Lawyers in America and in Pennsylvania Super Lawyers. Rick D. Nydegger is a founding shareholder, officer, and director of the Salt Lake City firm of Workman Nydegger. He has served as an adjunct professor at the University of Utah s S.J. Quinney Law School and was recognized by the law school as an honorary alumnus in He has also served on the adjunct faculty of Brigham Young University s J. Reuben Clark Law School, where he helped to expand the school s intellectual property curriculum. He was recognized as an honorary member of the Order of the Coif in 2003 and was recognized as the Brigham Young University Law School s Honored Alumnus of the Year. Mr. Nydegger has also worked closely with the U.S. Patent and Trademark Office (USPTO) in the development of several important policy initiatives over the years, and he has participated in assisting USPTO personnel with the drafting of several widely used Guidelines adopted by the USPTO for the use of its patent examining corps when conducting examination of softwarerelated inventions. In July 2003 he was appointed by the secretary of the U.S. Department of Commerce to a three-year term as chair of the Patent Public Advisory Committee, which was created by statute in 1999 to advise the USPTO on matters concerning the policies, goals, performance, budget, and user fees of the USPTO with respect to patents. He was counsel of record and co-author of the American Intellectual Property Law Association s (AIPLA s) amicus brief in Metro-Goldwyn-Mayer Studios Inc., v. Grokster, Ltd., 125 S. Ct (2005). He was the principal author of AIPLA s response to the Commissioner s Request for Comments on Computer-Related Inventions (1994), its amicus brief in In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995), and its response to the European Patent Commission s Green Paper Requesting Comments on the Patentability of Computer Software in the European Patent Office (1997). He served as spokesman for AIPLA on the USPTO Roundtable on Business Method Patents (1999) and was asked to lead a special task force in working with the USPTO on the development of its 21st Century Strategic Plan. Mr. Nydegger served as the president of AIPLA during and has also served as a member

8 xiv Electronic and Software Patents 2012 Supp. of AIPLA s board of directors and its editorial board of the AIPLA Quarterly Journal. Jonathan W. Richards is a shareholder in the intellectual property law firm of Workman Nydegger, based in Salt Lake City, Utah. Mr. Richards received a B.S. in Electrical Engineering, cum laude, from the University of Utah in 1981, and received a J.D., Order of the Coif, from Southern Methodist University School of Law in He is a registered patent attorney and is a member of the Utah and Texas Bar Associations, the American Intellectual Property Law Association (AIPLA), and the International Trademark Association. He currently serves on the adjunct faculty of the J. Reuben Clark Law School at Brigham Young University. He also serves as the Secretary of AIPLA. Gregory Stark is an associate at Schwegman Lundberg & Woessner, P.A., focused on intellectual property procurement, counseling, and litigation support in the software, computer, networking, biomedical, and mechanical technologies. Previously, Gregory spent more than 14 years with various high technology organizations in industries ranging from software to semiconductor capital equipment to Internet service providers. Gregory s responsibilities ranged from software engineering to product management to vice president of marketing. Gregory s technical accomplishments include development of robotic controls and machine vision algorithms for processing of semiconductors to designing data transport solutions over one of the world s largest private IP networks. Gregory received his J.D., magna cum laude, from William Mitchell College of Law and was a Justice William Mitchell Presidential Scholar. David R. Todd is a registered patent attorney with the intellectual property law firm of Workman Nydegger in Salt Lake City. He received a B.S. in Mechanical Engineering from Brigham Young University, summa cum laude, in 1994 and a J.D. from the J. Reuben Clark Law School at Brigham Young University, summa cum laude, in Mr. Todd served as a law clerk to the Honorable Randall R. Rader at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., from He is a member of the American Intellectual Property Law Association, the Federal Circuit Bar Association, the Intellectual Property Section of the American Bar Association, and the Intellectual Property Section of the Utah Bar Association. Mr. Todd has been teaching patent law courses as an adjunct faculty member at Brigham Young University since Liza K. Tóth is currently principal at Tóth Intellectual Solutions Ltd. in Hampshire, United Kingdom, where she is an IP mediator and consultant. Ms. Tóth is a fellow of the American Intellectual Property Law Association (AIPLA), currently serves on the editorial board of the AIPLA Quarterly Journal, and has served on the board of directors and Amicus Committee of AIPLA. She has been a panelist and moderator at AIPLA meetings, speaking on such diverse topics as claim drafting, managing outside counsel, and alternative dispute resolution. Prior to establishing her mediation and consultancy practice, Ms. Tóth managed international IP litigation matters at Nokia Siemens Networks and SanDisk Corp. and also set up and managed portfolio development teams

9 About the Authors xv at SanDisk. As vice president of intellectual property at Matrix Semiconductor and Acuson Corp., she developed significant patent portfolios that motivated the purchase of both companies. Prior to moving in-house, Ms. Tóth litigated intellectual property and contract cases in private practice. She has also been a faculty member for the Practicing Law Institute, where she has lectured on patent invalidity in the program Preparing Patent Legal Opinions. Joseph J. Wang is a registered patent attorney practicing in software, Internet, digital media, and mechanical technologies. He earned his B.S. in Aerospace Engineering from UCLA with a National Merit Corporate Scholarship. For 14 years, Joseph worked in the engineering of computer systems, embedded systems, software, and digital media. He supported technologies for computer graphics, video production, video post-production, media compression, media broadcasting, and media distribution. During this time, Joseph performed diverse business roles, including customer support, field service, technical marketing, technical training, technical publications, and software quality assurance. Joseph is a former section manager for the Society of Motion Picture and Television Engineers (SMPTE). Joseph earned his J.D. from Santa Clara University and received the Witkin Award for Business Planning. Stephen J. Weed is a shareholder in the Valley Forge, Pennsylvania, office of RatnerPrestia. He received his B.S.E.E. from Iowa State University and his J.D. from Wayne State University Law School. Mr. Weed is a member of the Association of University Technology Managers (AUTM), the American Intellectual Property Law Association (AIPLA), the Philadelphia Intellectual Property Law Association (PIPLA), and the Chester County Bar Association. Additionally, he is a registered patent attorney admitted to practice before the U.S. Patent and Trademark Office (USPTO). Mr. Weed presently serves as secretary of the AIPLA Electronic and Computer Law Committee and as a board member of PIPLA and is active on the AUTM Web site redesign committee. He has spoken at the Joint Patent Practice Seminar in New York, AUTM annual and regional meetings, the 2012 PIPLA Year in Review, and the 2012 AIPLA Annual Meeting. Mr. Weed entered the private practice of law in 1998 after working six years as an analyst for Electronic Data Systems. Mr. Weed s practice focuses on the procurement of IP rights, the assessment of IP rights, and the transfer of IP rights for electrical, electromechanical, mechanical, business method, and computer developments. His areas of expertise include analog and digital circuits, medical devices, semiconductor fabrication, data encryption, telecommunications, television, financial software, and Internet technologies. E. Robert Yoches received a B.S. in electrical engineering and computer science from the University of Colorado and a J.D. from the University of Pennsylvania. For the past 28 years, he has practiced intellectual property law with Finnegan, Henderson, Farabow, Garrett & Dunner, specializing in the area of patents and computer technology. He has written and spoken often on subjects involving intellectual property and computer technology, and particularly electronic commerce and Internet issues. He has also litigated business method and electronic commerce patents in federal courts throughout the country.

10 xvi Electronic and Software Patents 2012 Supp. Anastasia Zhadina is a shareholder of Cowan, Liebowitz & Latman, P.C. She is a registered patent attorney concentrating on patent preparation and prosecution in the areas of the electrical, electromechanical, mechanical and materials technologies, such as optical devices, electronic cameras, video camera recorders, image and data processing systems and methods, Internet-related inventions, fuel cell systems and components, and fuel processing systems and methods. She received her law degree from Brooklyn Law School and a Bachelor of Chemistry degree from the State University of New York at Stony Brook. She is admitted to practice in New York and New Jersey and before the U.S. Patent and Trademark Office.