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Understanding Patent Reform Implications: Leading Lawyers on Defining Key Issues, Interpreting Current Proposed Legislation, and Projecting Future Developments (Inside the Minds)

Understanding Patent Reform Implications

  • Author:
  • Publisher: Aspatore
  • ISBN: 9780314195456
  • Published In: February 2009
  • Format: Paperback , 492 pages
  • Jurisdiction: U.S. ? Disclaimer:
    Countri(es) stated herein are used as reference only
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Leading Lawyers on Defining Key Issues, Interpreting Current Proposed Legislation, and Projecting Future Developments

This product provides an authoritative, insider's perspective on the benefits and drawbacks of proposed U.S. patent reforms. It provides descriptions of proposed reform legislation and discusses the controversies related to those reforms, including the first-to-file system, inequitable conduct reform, and reforms related to litigation venue and damages. It outlines the economic impact of proposed reforms, the response from various industry sectors, and the effect of U.S. legislation on the international community and vice versa.

Scott Bialecki
 
Scott R. Bialecki is a registered patent attorney with a degree in computer science and electrical engineering, and is a partner at the firm of Holme Roberts & Owen LLP. Mr. Bialecki heads the firm’s intellectual property litigation group and counsels clients regarding various intellectual property (e.g., litigation; trademark, copyright, and patent portfolio procurement; and licensing) and antitrust matters. He has managed worldwide patent portfolios and spearheaded litigation matters throughout the United States to enforce various types of intellectual property rights. Relying on his prior government experience, he also assists clients with various regulatory matters involving the Federal Trade Commission’s national advertising division, the National Advertising Review Council, and other agencies such as the U.S. Food and Drug Administration. He also co-chairs the firm’s Asian practice team and regularly presents on U.S. intellectual property, advertising, and/or antitrust law in Korea and Japan. Previously, Mr. Bialecki was a shareholder at Sheridan Ross PC. He also worked for more than five years as a staff attorney with the Denver regional office of the Federal Trade Commission. While there, he was responsible for prosecuting antitrust- and consumer protection-related matters in federal courts across the country.
 
Scott Bornstein
 
Scott J. Bornstein is co-chair of Greenberg Traurig LLP’s patent litigation group and a shareholder in the firm’s intellectual property and technology department. He has broad experience in patent, trademark, and trade dress litigation, licensing, and general intellectual property counseling for a wide variety of national and international clients. He also has extensive experience working with clients to develop comprehensive prosecution and enforcement strategies that support their business objectives. His clients are involved in a wide range of technologies and industry sectors, including aerospace, automotive, avionics, biotechnology, business methods, chemical, consumer products, electronics, financial services, food and beverage, instrumentation, medical devices, metallurgy, packaging, pharmaceutical, software, and telecommunications. Mr. Bornstein is a frequent speaker on intellectual property and litigation topics and has been listed in the 2008 edition of Legal 500 U.S. He received his B.S. in biology from Indiana University and his J.D. from Temple University James E. Beasley School of Law.
 
Mark Campagna
 
Mark V. Campagna is a partner in the Atlanta office of Jones Day. He practices patent law, focusing on patent litigation. His experience includes lawsuits relating to semiconductor, cellular, digital camera, Internet, software, global positioning system, wireless PDA, and telecommunications patents. He is chair of the American Bar Association computer hardware technology committee of the intellectual property law section. He is also a member of the patent law reform task force. Mr. Campagna graduated from Florida State University with a B.S. in electrical engineering and obtained his law degree from John Marshall Law School, where he was a staff editor for the Law Review and a member of the Administrative Law Moot Court team.
 
Kory Christensen
 
Kory D. Christensen is a partner in the technology and intellectual property group at Stoel Rives LLP. His practice emphasizes domestic and international patent procurement for clients in the computer and software industries. A substantial portion of his practice is also dedicated to intellectual property counseling, due diligence, strategic patent analysis, intellectual property enforcement, and opinion letters regarding patent validity and infringement. His clients, which range from start-ups to public companies, include China’s largest medical device manufacturer, a technology venture of Paul G. Allen (co-founder of Microsoft), and a world leader in digital media products and services based in the Pacific Northwest. Mr. Christensen received a J.D. degree, cum laude, from Georgetown University Law Center, and a B.S. degree in computer science, magna cum laude, from the University of Utah. He serves on the board of trustees of the Utah Technology Council, the board of directors of Friends for Sight, and as secretary of the intellectual property section of the Utah State Bar.
 
Mina Hamilton
 
As a partner with Lewis Brisbois Bisgaard & Smith LLP, Mina I. Hamilton advises clients in a wide variety of intellectual property matters, including copyright, trademark, patent, domain names, rights of publicity, trade secret, and the First Amendment. She provides transactional services (including registration and prosecution of trademarks with the U.S. Patent and Trademark Office and U.S. Customs, and registration of copyrights with the U.S. Copyright Office) and specializes in intellectual property litigation services for both plaintiffs and defendants.
 
Shawn Hansen
 
Shawn G. Hansen is a partner in the national law and consulting firm Manatt, Phelps & Phillips LLP, based in the firm’s Palo Alto, California, office. He represents clients in litigation of intellectual property cases throughout the country. He welcomes questions, comments, and connections via LinkedIn: http://www.linkedin.com/in/sghansen.
 
Stephen Hash
 
Stephen Hash is a partner with Vinson & Elkins LLP. His practice primarily focuses on patent litigation and counseling, with a concentration in the areas of biotechnology, immunology, molecular biology, medical devices, agricultural products, and agricultural genetics. He has experience in all phases of complex patent litigations, including discovery, pre-trial preparation and strategy, patent Markman hearings, and all other phases of patent litigation. He also advises clients on both the acquisition and enforcement of patents. Mr. Hash’s technical background is in life sciences, with a particular focus on immunology and molecular biology. He has litigated a number of cases related to his technical expertise, including biotechnology, pharmaceutical, and medical device technologies, as well as cases relating to technologies in the mechanical, electrical, semiconductor, and chemical fields.
 
Ben Hattenbach
 
Ben Hattenbach is a partner in the Los Angeles office of Irell & Manella LLP. His practice focuses on intellectual property litigation and pre-litigation counseling, with a particular emphasis on the trial of patent infringement matters. He has litigated patent disputes before numerous federal and state courts, as well as the International Trade Commission, the U.S. Patent and Trademark Office, and arbitration panels. He is also a registered patent attorney. On the transactional and counseling side, Mr. Hattenbach provides strategic guidance regarding all phases of patent portfolio management. He has considerable experience advising companies actively involved in patent license negotiations, as well as companies evaluating the possibility of embarking upon licensing campaigns. He has supervised the prosecution of patents and trademarks, including patents involved in re-examination and interferences. He also conducts intellectual property reviews in connection with mergers, acquisitions, and asset purchases, and advises on technology development and commercialization matters. Mr. Hattenbach received bachelor’s and master’s degrees in engineering, both with distinction, from Harvey Mudd College in 1992 and 1993, respectively. During college, he was elected president of the local chapter of the Institute of Electrical and Electronics Engineers. He received his J.D. degree from the University of California at Berkeley (Boalt Hall) in 1996, where he was admitted to the Order of the Coif and served as executive editor of the Berkeley Technology Law Journal. During law school, he received American Jurisprudence Awards in five subjects, including patent law.
 
David Makous
 
David N. Makous has more than thirty years of experience in the area of intellectual property law. As chair of Lewis Brisbois Bisgaard & Smith LLP’s intellectual property department, he has managed hundreds of intellectual property cases before federal and state courts in many jurisdictions in California, Virginia, New York, Pennsylvania, Washington, Illinois, Arkansas, Texas, Arizona, and elsewhere through preliminary injunction hearings, summary judgment motions, bench and jury trials, mediation, arbitration, and other ultimate dispositions. He has also managed appeals before several federal courts of appeal (Ninth Circuit, Eighth Circuit, Fifth Circuit, and Federal Circuit) and the California Courts of Appeals. He has expertise in both domestic and foreign intellectual property registrations and enforcement matters in multiple technologies, e-commerce, licenses, manufacturer, and distributor relationships. He has prepared and negotiated a wide variety of intellectual property licenses, technology transfers, and related agreements.
 
William Parks
 
William S. Parks is a member of the intellectual property protection & litigation service team at Wyatt, Tarrant & Combs LLP. He earned his B.S. in chemistry from Rhodes College in 1990 and his J.D. from the John Marshall Law School in 1997. He is a former patent examiner for the U.S. Patent and Trademark Office. Previously, Mr. Parks served as patent counsel for Milliken & Company and as a senior intellectual property attorney for J.M. Huber Corporation.
 
Donald Rhoads
 
Donald L. Rhoads is a partner with Kramer Levin Naftalis & Frankel LLP. He specializes in litigating patent cases. Mr. Rhoads also practices before the U.S. Patent and Trademark Office in prosecuting patents and litigating patent interferences, and in developing patent portfolios for clients. Mr. Rhoads' litigation experience includes obtaining favorable resolutions in several pharmaceutical cases involving accused infringers (e.g., Purdue v. Endo, Bracco v. Amersham, and Bracco v. Zambon) and patentees, as well as in litigations against the Food and Drug Administration and the United States Patent and Trademark Office. Mr. Rhoads has been involved in several Hatch-Waxman Act based disputes, representing ANDA filers as well as patent holders. He also has recently been involved in the successful litigation of several cases concerning electronic devices (e.g., GTE v. Nokia) and medical devices. Mr. Rhoads has been involved in several major patent interference proceedings and has developed strategies that relate to using patent prosecution, interferences, litigation, and licensing to maximize the value of intellectual property. This has included obtaining worldwide patent and trademark protection for numerous clients in all fields of technology. Mr. Rhoads has developed strategies for several corporations to enter into markets for the first time, providing counseling for the corporations on infringement, validity and enforceability matters and seeking and negotiating intellectual property licenses to gain freedom of operation. This also has involved the negotiation and formation of mergers, acquisitions, and joint ventures as well as the licensing of technology. Mr. Rhoads has authored several articles relating to intellectual property, including articles on biotechnology and patent law, the process patent amendment act, interference proceedings, patent procurement and enforcement in China, and intellectual property licensing. He attended the University of Michigan Law School (J.D., 1989) and Dickinson College (B.S., 1982).
 
Barry Schindler
 
Barry J. Schindler is co-chair of Greenberg Traurig LLP’s patent prosecution group and a shareholder in the firm’s intellectual property and technology department. He has more than twenty years of legal experience in all aspects of intellectual property law, including extensive litigation experience. He has helped companies of all sizes build and manage significant patent portfolios, develop in-house procedures, and formulate intellectual property strategies. Mr. Schindler has wide-ranging experience in business methodology, a rapidly emerging area of intellectual property, and has provided counsel to some of the world’s most innovative corporations, including a pre-eminent financial services organization, leading financial trading organizations, numerous leading health organizations, search engine organizations, media companies, and other financial institutions. He received his B.S. from Cornell University and his J.D. from the University of Houston Law Center.
 
Mark Yaskanin
 
Mark L. Yaskanin, a registered patent attorney, professional engineer, and certified professional geologist, is a partner at the firm of Holme Roberts & Owen LLP and heads the firm’s patent group. He counsels clients in all areas of intellectual property, including patent, trademark, and copyright matters. His experience includes conducting patentability searches, preparing infringement opinions, and procuring U.S. and foreign patents for domestic and international clients. His patent work covers a number of fields, including medical devices/equipment, orthodontics, engineered materials, and a wide variety of other mechanical devices. He further provides support in patent litigation matters, including review of patent application file histories, claim analyses, and review of relevant prior art. He also assists clients with negotiating and preparing licensing agreements. Previously, Mr. Yaskanin was a shareholder at Sheridan Ross PC in Denver. In addition, his prior engineering experience includes analyses and design work associated with environmental, construction, and geotechnical projects, including landfill liner and final cover systems, foundation evaluations/design, slope stability analyses, forensic settlement analyses, and environmental remediation investigations (e.g., Superfund remediation). He has also negotiated and interacted extensively with state and Environmental Protection Agency regulators in siting, permitting, and remediation matters for clients.

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