10/28 - AM Concurrent Track 1 - Post-Grant/Litigation

Post-Grant/Litigation

Moderator: Jonathan Bowser, Haynes and Boone, LLP, Washington, DC

Interplay Between Inter Partes Review and Ex Parte Reexamination: Strategic Differences Between IPR and Reexamination; Staying Co-Pending Reexaminations in View of Instituted IPR Proceedings
Charles Macedo, Amster Rothstein & Ebenstein LLP, New York, NY

In the Interests of Justice: Metes and Bounds of Additional Discovery at the PTAB
Brian Murphy, Haug Partners LLP, New York, NY

Arthrex Update:  Director Review – Searching for an item that the Statute already kept us from losing?
James Donald Smith, Ecolab, St. Paul, MN

Speakers

• Bowser, Jonathan

  Haynes Boone | Counsel

  Jonathan Bowser is a registered patent attorney focusing on patent litigation disputes before the Patent Trial and Appeal Board (PTAB) and federal district courts. Jonathan has been counsel in more than 125 AIA trials before the PTAB, representing both patent challengers and patent owners, and litigates appeals before the U.S. Court of Appeals for the Federal Circuit. He also prepares and prosecutes patent portfolios in the U.S. and abroad with a specific focus on electrical, computer, networking, and medical device technologies. Jonathan is a frequent author and presenter on post-grant issues.
• Macedo, Charles

  Amster, Rothstein & Ebenstein LLP | Partner

  Charles R. Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.
• Murphy, Brian P.

  Haug Partners | Partner

  From September 2013 through September 2017, Mr. Murphy served as an Administrative Patent Judge at the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office in Alexandria, Virginia. During that time he presided over nearly 200 post grant review trial proceedings (Inter Partes Review, Post Grant Review, and Covered Business Method Review). As a PTAB trial judge he presided over interlocutory discovery and motion proceedings, heard oral argument, and drafted numerous substantive decisions. For three years he served as a Lead Judge on the PTAB leadership team, which included management, supervision, and mentoring of Administrative Patent Judges trained in the biotechnology, pharmaceutical, and chemical arts.
• Smith, James Donald

  Ecolab USA | Deputy General Counsel - Litigation & IP

  James Donald Smith serves as Deputy General Counsel of Ecolab USA. In his current position, Smith oversees the company’s general litigation function (mass torts, products liability, personal injury, etc.) and its global operations relating to patents, trademarks, and copyrights, and other matters related to protection of Ecolab innovation. Early in his career, Smith served as a judicial clerk to now retired Chief Judge Paul Michel at the United States Court of Appeals for the Federal Circuit. He also practiced with Arnold White & Durkee and, later, Dewey Ballantine, serving as the office managing partner of Dewey's Texas office. Mr. Smith, who is also a former Assistant Dean of the law school at Emory University in Atlanta, has experience both as a patent litigator and patent prosecutor, and he has led in-house IP teams for three multi-national corporations, serving as Lexmark’s Chief IP Counsel, Nokia’s Global Director of Licensing, and as Associate General Counsel and Chief IP Counsel of Baxter.