Authors

The contributors to this blog are Andrews Kurth Kenyon Intellectual Property attorneys from throughout the country. Their backgrounds and areas of concentration allow them to provide comprehensive analyses of recent Federal Circuit Court opinions.

 

Editors

 

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Paul D. Ackerman, Partner 

Paul’s practice involves all aspects of intellectual property law with an emphasis on patent litigation and trial. He has represented clients in a wide range of popular forums for patent litigation, such as the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, and the Northern and Central Districts of California, and in “337 actions” before the International Trade Commission. Paul has litigated both utility and design patent cases across a wide range of technologies, including cellular telephony, software, internet technology, semiconductor fabrication and testing, biotechnology, mechanical devices and glassware. He also has considerable experience in contested proceedings before the U.S. Patent & Trademark Office, including inter partes reviews and interferences. Paul received his J.D. in 1996, summa cum laude, from Touro College, Jacob D. Fuchsberg Law Center. In 1991, he earned his B.S.E.E., cum laude, from the New York Institute of Technology.

mcMark A. Chapman, Partner

Mark focuses his practice on representing domestic and foreign high-technology and medical device clients in patent infringement and related litigation, as well as opinions, licensing and transactions. Mark has experience with all phases of patent infringement litigation, including bench and jury trials in district courts and several appeals to the Federal Circuit. He also has experience with contentious proceedings in the patent office, including inter partes review and inter partes and ex parte reexamination proceedings. He has also coordinated and supported foreign patent litigation and related patent office proceedings, including trials and appeals, working closely with patent litigation counsel in Canada, the United Kingdom, the Netherlands, Germany, France and Italy. Mark earned his LL.B. and B.C.L. in 1995, with Great Distinction, from McGill University Faculty of Law. He received his B.S., First Class Honours, from Queen’s University in 1991.

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Tonya M. Gray, Partner

Tonya’s practice encompasses complex civil and commercial litigation matters at both the trial and appellate levels and in both federal and state court. She has significant experience in intellectual property litigation defending patent infringement suits (particularly in the Eastern District of Texas) and trade secret misappropriation claims. Tonya’s intellectual property experience covers numerous fields of technology, and she has created successful outcomes for clients in myriad industries, including online retail and e-commerce, financial document imaging, online banking, internet advertising, battery development, electronic gift cards and video games. Her business litigation practice includes contract disputes, fiduciary issues, fraud claims, unfair competition and business torts. She received her J.D. in 1999 from Vanderbilt Law School, where she was Notes Development Editor for Vanderbilt Law Review. She earned her B.S., magna cum laude, in Accounting in the Honors College at Southwest Missouri State University in 1996 where she was a Presidential Scholar, a member of Beta Gamma Sigma and the University Honors Council.

Sheila Mortazavi, Partnersm

Sheila’s practice covers all facets of intellectual property litigation and counseling, with a particular emphasis on patent infringement litigation across a wide range of technologies. She has handled all phases of litigation before federal and state courts, the International Trade Commission and arbitration panels, including pre-trial investigation, fact and expert discovery, motion practice, trial and appellate practice. She advises clients on litigation strategy in complex patent cases and has represented clients in unfair competition and trademark matters. In addition to litigation, Sheila counsels clients on procurement and transfer of intellectual property rights, negotiation of licenses and other agreements, and evaluation of the scope, validity and enforceability of intellectual property rights. Sheila earned her J.D. in 1999, with honors, from The George Washington University Law School. She received her B.S., cum laude, from the University of Maryland in 1995.

Gregory L. Porter, Partnergp

Greg has extensive experience representing and advising companies in all aspects of patent, copyright and trade secret law, including acting as lead counsel in successful jury trials and preliminary injunction hearings, as well as advising on patent procurement and designing around competitor’s patents. Greg also has counseled Fortune 500 clients on the creation and management of their patent portfolios, led IP due diligence teams for major merger and acquisition transactions and participated in contested patent office proceedings such as inter partes reviews and reexaminations. Over the years, Greg has successfully litigated cases in a diverse range of technologies from oil field tools to polymers, telecommunications and pharmaceuticals. He received his J.D., cum laude, in 1994 from Capital University. He earned his B.S. in chemistry, with honors, in 1991 from Indiana University.

Rose Cordero Prey, Partnerrcp

Rose’s practice focuses on patent litigation and licensing in the mechanical, electrical and computer science arts. With over 10 years of experience in IP litigation, she has represented both plaintiffs and defendants in patent infringement cases involving a wide range of technologies, including consumer products, smartphone software, semiconductor fabrication and circuitry, laser diodes, wireless communication, automotive systems, ceiling grid systems, computer and television display technology, security systems, online banking and memory card readers. Rose has extensive experience in federal courts and before the International Trade Commission. She also has experience with post-grant proceedings in the United States Patent and Trademark Office. Rose earned her J.D. in 2004 from the University of North Carolina School of Law. She received her B.S., magna cum laude, from Elon University in 2001.

Paul T. Qualey, Partnerpq

Paul has experience in a variety of areas of intellectual property law with a particular emphasis on patent litigation in trial and appellate courts and at the International Trade Commission. He has represented both plaintiffs and defendants in patent infringement cases involving a broad range of technologies in the software, telecommunications, automotive and construction industries. Paul has also prosecuted patent applications in the software, information technology and telecommunications fields for a variety of large and small companies and is registered to practice before the U.S. Patent and Trademark Office. He has experience in intellectual property licensing and due diligence, and has counseled and prepared opinions for clients regarding patent infringement and validity. Paul earned his J.D. in 2000, with honors, from The George Washington University Law School. He received his B.A. and his B.S.E.E., cum laude, from the University of Maryland in 1994.

Georg C. Reitboeck, Partnergr

Georg has experience in all phases and aspects of patent infringement cases in U.S. courts. Having studied and practiced intellectual property law in both the United States and Austria, he is familiar with the legal systems and cultures of the United States and Europe. He has represented a number of German companies in U.S. patent cases, and has counseled U.S. clients in German patent infringement proceedings. Georg has been involved in numerous patent cases in the automotive industry. He also has experience in a variety of other fields, including printing presses, medical devices and toys. Georg earned his LL.M. in 2000 from New York University. He received his Ph.D. in 2002 from the University of Vienna Faculty of Law and his Master of Laws from the University of Vienna Faculty of Law in 1997.

Aimee N. Soucie, Partneras

Aimee represents clients in patent and trade secret litigation at the International Trade Commission (“ITC”), district courts, and Federal Circuit. She provides advice and analysis on wide-ranging technologies and consumer products, and is particularly interested in issues involving technology, fashion and design, and entrepreneurship. Aimee has appeared in over 20 ITC investigations, is an author of the “go-to” ITC litigation treatise, Unfair Competition and the ITC, and regularly advises clients regarding ITC-specific issues, such as domestic industry, remedy and the public interest considerations. Aimee earned her J.D. in 2002 from Cornell Law School. She received her B.A., magna cum laude, from Bowdoin College in 1999. She also completed a Summer Intensive Program at the Fordham Law School Fashion Institute (also known as “Fashion Law Bootcamp”) in 2016.

 

Contributing Authors

 

Zaed M. Billah, Associatezb

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit. Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations involved a wide range of technologies, including smartphones and tablets, digital cameras and camcorders, video and image processing software, GPS systems, narcotics and explosives trace detection security systems, and DVD and Blu-ray technology. Zaed earned his J.D., cum laude, in 2006 from the University of Houston Law Center. He received his B.S. in Electrical Engineering from The University of Texas at Austin in 2003.

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Michael J. Block, Associate

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Michael successfully completed the Fullbridge Program in September 2016. Michael earned his J.D., cum laude, in 2016 from Yeshiva University, Benjamin N. Cardozo School of Law. He received his B.E. from The Cooper Union in 2013.

 

Jeremy S. Boczko, Associatejb

Jeremy litigates intellectual property rights underlying innovations within a variety of industries, including pharmaceuticals, fashion, electronics and computer software. He has represented major clients in patent and trademark litigation and trials in federal court and § 337 ITC proceedings, and regularly counsels clients on IP due diligence and portfolio acquisition. Jeremy also assists luxury goods and consumer products companies enforce their patent and trademark rights through anti-counterfeiting and infringement actions. Jeremy earned his J.D., magna cum laude, in 2011 from Fordham University School of Law. He received his B.A., cum laude, from Yeshiva University in 2007.

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Sushila Chanana, Associate

A prior Cyber Security Consultant, Sushila’s current practice encompasses a wide range of business litigation matters, including intellectual property issues. She has represented numerous Fortune 500 companies in federal and state courts, successfully argued motions in her clients’ favor, deposed patent inventors, experts and 30(b)(6) witnesses, and managed technical and damages experts.  Sushila also previously served as a Supreme Court Legal News Correspondent. Sushila earned her J.D. in 2007 from the University of California, Hastings. She received her B.A. from the University of California, Berkeley in 2002.

Jessica Cohen-Nowak, Associatejcn

Jessica focuses her practice on trademark and copyright matters in the fashion, fitness and entertainment industries. Early in her career, Jessica worked as an intellectual property manager at SoulCycle Holdings, LLC where she helped to manage trademark litigation and prosecution matters. Jessica earned her J.D. in 2014 from the Benjamin N. Cardozo School of Law. She received her B.A. from the University of Wisconsin-Madison in 2009.

 

Chris J. Coulson, Associatecc

Chris focuses his practice on complex commercial and patent litigation and licensing in a variety of technical fields, including the semiconductor, specialty chemical and pharmaceutical areas. He has litigated in both federal and state court in a variety of venues, and also handles inter partes reviews before the Patent and Trial Appeal Board of the U.S. Patent and Trademark Office. Chris earned his J.D. in 2007, magna cum laude, from University of Michigan Law School. He received his M.B.A. in 1999 from the University of Houston–Clear Lake and his B.S, with distinction, from Cornell University in 1993.

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Lee Davis, Associate

Lee’s primary area of practice is litigation and transactional matters involving intellectual property, such as patents, trademarks, trade secrets and copyrights. He has experience in all stages of litigation, including drafting pleadings and discovery requests, invalidity and infringement contentions, working with experts, preparing and defending pretrial motions including summary judgment and trial. During Lee’s time at the firm, he worked as a volunteer prosecutor at the City of Houston Municipal Court where he tried numerous jury trials to verdict and handled all aspects of pretrial motions, voir dire, direct and cross examination and closing arguments. Lee’s transactional practice includes counseling clients in business transactions that involve intellectual property rights. Lee is a registered patent attorney at the United States Patent and Trademark Office and advises clients in patent prosecution as well as post-issuance proceedings such as reexaminations, Inter Partes Reviews and Covered Business Method Patent Reviews. Lee received his J.D. from the University of Houston Law Center in 2011. In 2006, he earned his B.S. in Mechanical Engineering from Texas A&M University.

Katrin Feldhaus, Associatekf

Katrin is a German as well as U.S. educated lawyer whose practice focuses on representing international companies in intellectual property disputes. Katrin is fluent in German, her native language. Prior to becoming an associate, Katrin was a legal intern at an entertainment boutique firm where she assisted with counseling in all areas of intellectual property, new media and technology law. Katrin also clerked for the Civil Court and the district attorney’s office in Germany. Katrin earned her J.D. in 2011 from Northwestern School of Law. She received her LL.M. in 2008 from the University of Southern California Gould School of Law and her LL.M. and LL.B. from University of Hamburg School of Law in 2007.

Armin Ghiam, Associateag

Armin’s practice focuses on patent litigation with an emphasis on electrical, mechanical and telecommunication arts. He has a broad background in litigation matters, including defending clients against invalidity and unenforceability claims, editing and reviewing expert reports, and drafting general pleadings and discovery motions. In addition, Armin’s practice includes patent prosecution in the electrical, mechanical, computer science, and business method related arts. He has extensive experience preparing and prosecuting U.S. patent applications. Armin earned his J.D. in 2013 from University of Pennsylvania Law School. He received his M.S. in 2010 from Columbia University and his B.S., summa cum laude, from Stony Brook University in 2008.

Christopher Gresalfi, Associatecg

Christopher focuses his practice on patent litigation and prosecution, primarily in the electrical and mechanical arts. Christopher has experience in various phases of post-grant review proceedings, including Inter Partes Review and Reexamination proceedings, patent litigation in U.S. District Courts and before the U.S. International Trade Commission, patent portfolio evaluation and invalidity/infringement pre-suit analysis. In addition, Christopher has experience preparing and prosecuting U.S. patent applications for clients in the automotive, software and consumer goods industries. Christopher earned his J.D. in 2015 from The George Washington University Law School. He received his B.A., magna cum laude, in Physics from Colgate University in 2010.

 

Andrew D. Kasnevich, Associateak

Andrew focuses his practice on patent litigation before federal courts and the International Trade Commission and patent prosecution and post-grant proceedings before the U.S. Patent and Trademark Office. He has experience with a wide range of technologies in the automotive, electrical, and pharmaceutical arts, including automotive electronics, hybrid vehicle control strategies, immunosuppressant drugs, injection molding, LCD and LED displays and lighting, medical devices, non-imaging optics, pharmaceutical polymorphism, semiconductor structure and fabrication, software, vehicle suspension systems, and video analytics and image processing. Andrew earned his J.D. in 2009 from George Mason University School of Law. In 2004, he earned his B.S.E. in Chemical Engineering and his B.S. in Economics from the University of Pittsburgh and in 2016 he earned his B.S. in Computer Science from Oregon State University.

Susanna P. Lichter, Associatesl

Susanna represents clients in complex copyright and trademark matters, as well as patent litigation. She earned her J.D. in 2014 from Harvard Law School. In 2006, she received her B.A., with honors, from the University of California Berkeley.

 

 

Lindsay Littler, Associatell

Lindsay’s practice focuses on patent litigation, primarily in the mechanical and electrical arts. She earned a joint J.D./M.B.A. from Santa Clara University in 2013. She received her B.S. in 2006 from the University of California at Los Angeles.

 

 

Gregory Miller, Associategm

Gregory concentrates his practice on the preparation and prosecution of patents, patent appeals, patent opinions, patent litigation, intellectual property licensing and acquisitions, transactions, agreements and due diligence. He works with companies in all stages of growth, and has extensive experience in a variety of matters, from the development of initial patent strategies for start-ups, to the maintenance of cost-effective quality in the management of high volume filings for Fortune 500 companies. Gregory also has extensive experience working directly with universities in obtaining patent protection and developing IP strategies. Gregory received his J.D. in 2009 from the Benjamin N. Cardozo School of Law. In 2006, he earned his M.S. in Electrical Engineering from Columbia University. He received his B.A, in Policy Studies and Economics, from Syracuse University, in 2001.

Ian Moore, Associateim

Ian’s practice is focused on patent litigation and PTAB proceedings relating to mechanical and electrical engineering technologies, as well as to software. Ian earned his J.D. in 2015 from New York University School of Law. He received his B.S., summa cum laude, in Aerospace Engineering from the Georgia Institute of Technology in 2012.

 

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Dragan Plavsic, Associate

Dragan represents clients in patent litigation matters and in the Patent Trial and Appeal Board proceedings. In addition, he prepares and prosecutes patent applications and provides IP counseling to clients. The range of services that he provides further includes validity opinions, freedom to operate opinions and due diligence. Dragan provides his clients with services in a wide variety of technologies, including automotive safety systems, telematics systems, and fuel cell systems, hybrid vehicles, oil and gas exploration and production, oil and gas processing and distribution, semiconductor technology, networking systems, computers and other consumer electronics. He earned his J.D. in 2012 from The George Washington University Law School. In 2001, he received his B.S. from Purdue University.

Ben Setnick, Associatebs

Ben’s experience includes patent litigation and domestic and international trademark and copyright enforcement and litigation. He has worked with clients in a variety of industry segments including, electronic goods, software publishing, cellular phones, Internet-based services, shopping centers, and supply-chain management. Ben also assists clients by tracking and pursuing sellers and distributors of counterfeit consumer goods domestically and internationally. Prior to law school, Ben worked as an Information Technology consultant and network architect for several Fortune 500 companies. He has extensive technical experience and is well versed in the technical and legal realities of information technology and security. Ben also holds multiple information security industry and vendor certifications. He received his JD in 2007, magna cum laude, from Southern Methodist University Dedman School of Law and his BS from The University of Texas in 1998.

Vaibhav Sharma, Associatevs

Vaibhav is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Vaibhav successfully completed the Fullbridge Program in September 2016. Vaibhav earned his J.D., with honors, in 2016 from Emory University School of Law. He received his B.S. in Physics and Mathematics from Rutgers University in 2012.

 

Ryan J. Sheehan, Associaters

Ryan’s practice focuses on patent litigation, primarily in the mechanical and electrical arts.  He has represented plaintiffs and defendants in U.S. District Courts, in the U.S. International Trade Commission, and in the U.S. Court of Appeals for the Federal Circuit, in cases involving a wide range of technologies, particularly in the automotive and computer software industries.  Prior to attending law school, Ryan held a variety of engineering and management positions at successful early and middle-stage software startup companies, developing internet, electronic commerce, and enterprise software applications.  He earned his J.D. in 2007 from Fordham University School of Law.  In 2000, he received his B.A. from Dartmouth College.

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Ksenia Takhistova, Associate

Ksenia’s practice focuses on IP litigation and client counseling across many technology areas. She has substantial experience in all aspects of litigation, representing both plaintiffs and defendants in patent cases (including ANDA litigations) before the Federal District Courts, at the International Trade Commission, and in post-grant proceedings (IPRs) at the US Patent and Trademark Office. She also handles trademark (false advertising) and trade secret disputes in both Federal and State Courts. Ksenia also represents clients in settlement negotiations and IP licensing discussions, and performs due diligence and opinion work, including freedom-to-operate, patentability, infringement and validity analyses. Drawing on her educational and professional background in both the mechanical and chemical engineering fields, she is experienced in handling disputes in mechanical and medical devices, electrical and computer, life sciences, chemical, materials, and consumer products areas. She frequently writes on the current intellectual property law issues, and is active in professional associations for intellectual property and technology professionals. Ksenia earned her J.D. in 2009 from Rutgers University School of Law-Newark. In 2002, she received her M.S. in Chemical Engineering from the University of Notre Dame. She earned her M.S. in Mechanical Engineering and her B.S. in 1996 from Moscow M.V. Lomonosov State University.

Jonathan W. Thomas, Associatejt

Jonathan focuses his practice on counseling, enforcement, and litigation matters concerning trademarks, trade dress, domain names, copyrights, advertising, sweepstakes, and promotions.  He represents clients in a broad range of industries (including apparel, consumer products, media and entertainment, pharmaceuticals, software, and technology) in federal courts throughout the country, as well as before the Trademark Trial and Appeal Board, and in UDRP proceedings. He earned his J.D., cum laude, from The Ohio State University Moritz College of Law in 2011. In 2007, he received his B.A., magna cum laude, from the University of Kentucky, where he was a four-year member of the varsity cross country and track teams.

wuWilliam R. Uhr, Associate

William’s practice focuses on patent litigation in the U.S. District Courts and before the U.S. International Trade Commission, primarily in the electrical and mechanical arts. His experience includes analyzing patents and developing strategic infringement and validity-related positions, researching and analyzing prior art, drafting and answering motions and working with expert witnesses. In addition, William’s practice includes patent prosecution in the electrical, mechanical and computer science arts. He earned his J.D. in 2014 from The George Washington University Law School, and received his B.S. in Mechanical Engineering from the University of Maryland in 2011.

jwJames C. Willson, Associate

James is an Associate in the Intellectual Property section of the firm’s Houston office. He successfully completed the Fullbridge Program in September 2014. James received his J.D. in 2014 from The University of Texas School of Law and his B.S. from The University of Texas at Austin in 2005.

 

Crystal Jamison Woods, Associatecjw

Crystal has a diverse practice within general litigation, which includes labor and employment disputes, oil and gas litigation, and intellectual property with an emphasis on trademarks. She has represented corporate and individual clients in a variety of litigation and counseling matters, in state and federal court, as well as in front of the Trademark Trial and Appeal Board, successfully handling disputes that include securities fraud, shareholder and closely-held company litigation, trademark oppositions and cancellations, employment discrimination, covenants not to compete, trade secrets, complex contractual matters and injunctions. Crystal has also worked closely with the firm’s Corporate Compliance Investigations and Defense practice group, which includes conducting internal investigations, assisting clients in civil and criminal matters before the U.S. Department of Justice and the U.S. Securities and Exchange Commission, and representing clients in securities litigation. She received her J.D., cum laude, in 2009 from Southern Methodist University Dedman School of Law and her B.S., cum laude, in 2005 from The University of Texas.

 

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