PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.

For clients developing valuable products in molecular biology, associate Michael J. Allikian, Ph.D. brings extensive technological expertise to secure their patents. His significant graduate study, including extensive doctoral research on aging and postdoctoral research on musculoskeletal disease, gives him extraordinary grasp of the issues as well as application of the science. Clients find him careful and precise in working with them, as well as a strong communicator on behalf of their rights from his experience as a teacher and writer. Read full bio here.

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Eric M. Brusca, Ph.D.
Partner and Chair, Biotech & Life Sciences

For clients producing biotech advancements in biologics and vaccines, Eric M. Brusca, Ph.D. secures patents internationally through prosecution and related proceedings. Clients rely on his legal experience from handling a wide variety of these technologies. They also gain sure and insightful assessments of their patentable products and processes, all rooted in his graduate training and research in microbiology, biochemistry and molecular biology. A teacher as well, he communicates effectively with his clients and successfully represents their interests. Read full bio here.

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Jennifer Burnette
Partner and Chair, Chemical Sciences

Jennifer Burnette advises clients that innovate in material and polymer sciences, chemistry/chemical engineering, pharmaceuticals, nanotechnology, and mechanical products. Ms. Burnette has experience in strategic patent portfolio management and counseling, foreign and domestic prosecution of patent applications, inter partes post grant proceedings, and counseling clients on invalidity, non-infringement, and freedom to practice matters. She uses her interdisciplinary training in material science to quickly establish in-depth understanding of technologies and invest in understanding a client’s business needs and objectives to counsel clients on how to maximize the value of their patent portfolio. Read full bio here.

Matthew R. Carey is a registered patent attorney who counsels clients in the electrical and software engineering industry as it relates to patenting strategies as well as all stages of patent prosecution. His engineering background provides him an understanding of clients’ technologies and enables him to effectively and efficiently provide a range of patent procurement services. Mr. Carey also leverages his experience to assist on intellectual property litigation as well as develop strategies for acquiring and protecting intellectual property. Read full bio here.

Tom is a hands-on, lead trial attorney who handles intellectual property litigation across a wide spectrum of technologies, from aerospace and biochemistry to Internet/e-Commerce and medical devices. He has served as lead trial counsel in more than 60 matters in federal courts throughout the country.  He has been named one of the Top 100 Super Lawyers® in Illinois, repeatedly named one of the Best Lawyers in America for Intellectual Property Litigation by U.S. News and World Report, voted a “Leading Lawyer” in the areas of Intellectual Property, Trade Secrets and Unfair Competition by his peers, and named by Managing IP  as one of its “IP Stars.” Read full bio here.

With over 15 years of experience, Josh Elliott focuses on patent law matters related to biochemistry and biotechnology, including advising and counseling clients on issues such as freedom-to-operate, infringement, validity, and design around strategies. His practice includes rendering opinions, conducting patent due diligence investigations, advising clients on patent portfolio strategies, strategically managing global patent portfolios, and preparing and prosecuting patent applications. Mr. Elliott also has experience advising clients on due diligence issues related to potential investments, venture funding, and initial public offerings. Read full bio here.

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David A. Gass
Partner

David Gass is a registered patent attorney for biotechnology companies, pharmaceutical companies, diagnostics companies, universities, and research institutions, helping clients develop and implement IP strategies to protect and commercialize life-improving biotechnology inventions. He assists clients with patentability analyses, drafting and prosecuting patent applications, and maximizing patent term and patent life-cycle for products. He also assists clients with freedom-to-operate issues relative to the IP rights of others. He has experience with appeals and inter partes proceedings before the U.S. Patent and Trademark Office, including interferences, reexamination and reissue proceedings. Read full bio here.

Tiffany D. Gehrke secures and protects the intellectual property rights for a broad range of clients. In this role, her prior experience as a software engineer gives her valuable insider perspectives into clients’ technologies. Ms. Gehrke understands the value of clients’ intellectual property rights and assists those clients in obtaining and protecting those rights in the U.S. and throughout the world. Ms. Gehrke enforces clients’ intellectual property rights through litigation in state and federal courts, through proceedings before the USPTO, and through other dispute resolution forums. Read full bio here.

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Julianne M. Hartzell
Retired Partner

Ms. Hartzell is a retired partner from Marshall Gerstein. She had significant experience in intellectual property litigation, including cases involving patent, trademark, copyright and trade secret. She also had experience enforcing covenants not-to-compete and confidentiality agreements. Clients hired her to protect their intellectual property rights and to defend them against infringement allegations. She worked closely with her clients to understand their business needs and aggressively defends her clients’ interests, seeking the most efficient route to resolve litigation in a way that satisfies those needs.

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Kevin D. Hogg
Of Counsel

Kevin D. Hogg focuses his practice on litigation and counseling concerning patents, trademarks, unfair competition and trade secrets, and works with a wide variety of products and technologies. During his 25+ year career, he has appeared in federal courts across the United States in cases ranging from the relatively modest to complex multidistrict actions with claimed damages in excess of $100 million. He regularly advises highly respected innovators, such as The Procter & Gamble Company, on intellectual property matters. Read full bio here.

Mr. Horton litigates intellectual property actions in federal courts across the country and speaks regularly on patent litigation and strategy.  SuperLawyers, a Chicago Magazine publication, selected Mr. Horton four years running for its 2012-2015 Illinois Rising Stars® lists, which feature outstanding lawyers recognized among the top up-and-coming attorneys in intellectual property law.  He was also selected as an “Emerging Lawyer” in the inaugural edition of Emerging Lawyers Magazine as a top Illinois attorney under 40.  Mr. Horton has been recognized by intellectual property publications such as Intellectual Property Magazine, InsideCounsel, Law360, Chicago Magazine, and IPPro. Read full bio here.

Clients seeking advice in establishing and maintaining patent portfolios worldwide in all areas of biotechnology and pharmaceuticals can benefit from the education and experience of Lynn L. Janulis, Ph.D. Her advanced graduate and post-doctoral scientific training in molecular and developmental biology, reproductive endocrinology and cancer, along with her legal experience, allow her to counsel clients in strategic management of their scientific intellectual property. She assists clients in obtaining worldwide patent rights with her experience in patent prosecution, opinions, due diligence analyses, and interference proceedings. Read full bio here.

Matthew M. Jorge focuses his practice on patent counseling and the securing of patents for clients in the areas of electrical and mechanical technologies in the United States and abroad. Mr. Jorge’s practice also includes assisting clients with post-grant proceedings before the U.S. Patent and Trademark Office, having experience handling public use proceedings and broadening design patent reissues. Read full bio here.

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Heather R. Kissling
Partner and Patent Prosecution Chair

Heather R. Kissling draws from over fifteen years of experience securing biotechnology patents to develop worldwide filing and prosecution strategies that further her clients’ business objectives. She actively collaborates with bench scientists, business development personnel, and in-house counsel to maximize protection of biotechnology innovations in a broad range of technologies. Her background in interference and opposition proceedings also benefits clients seeking advice with respect to competitor patent positions and third party challenges in the patent office. Read full bio here.

Jeremy R. Kriegel is listed in Chambers USA as a “key individual” at Marshall, Gerstein & Borun. Chambers 2013 praises the “thorough[ness] in his consideration of the issues and their potential impact on his client’s business,” and his “innovative insight and creative solutions.” Chambers 2012 says he “is known for his work in medical device patents. He is well-respected by his peers for his expertise in patent prosecution.” Mr. Kriegel reliably guides clients in such industries as medical devices and consumer products, across all phases of the product life-cycle. Read full bio here.

Stephen J. Kudla focuses his practice on the preparation and prosecution of patent applications relating to electrical and computer technologies. Stephen has experience with ultrafast optics, signal analysis, optical interferometry, semiconductors, superconductors, ultracold systems, electronics, and other related technologies. Read full bio here.

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John R. Labbé
Partner

Trial lawyer and patent attorney John Labbé represents clients in intellectual property disputes in federal and state courts across the country. He has broad experience in patent litigation involving biotechnology, pharmaceuticals, cable television and data services, and e-commerce. John’s engagements have included a trial victory in a patent ownership suit, representation of biotechnology companies in numerous patent infringement matters, management of multiple patent infringement actions for one of the nation’s largest cable television providers, and representation of clients in trademark infringement suits. Read full bio here.

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John J. Lucas
Special Counsel

John J. Lucas focuses his practice on litigation for clients in all areas of electrical & computer technologies. Mr. Lucas litigates patent cases in district courts across the country. His technical training and professional writing experience makes him a powerful advocate, successfully representing clients in high-tech cases involving telecommunications, consumer products, automation, computer networking, and web design. Read full bio here.

William K. Merkel, Ph.D., has provided a range of intellectual property legal services to a diverse portfolio of clients for more than 20 years. With a focus on patent prosecution in the biotechnological arts, he has prosecuted numerous domestic, foreign and international patent applications drawn to such diverse technologies as modulators of metabolic pathways involved in disease states, viral oncotherapies, agricultural technologies, and pharmaceutical products and methodologies. Read full bio here.

Michael Muczynski advises clients on all issues relating to patent strategy and portfolio management, with particular emphasis in patent prosecution and opinions in pharmaceutical and other chemical fields. His clients benefit from his previous litigation experience involving generic pharmaceuticals, in anticipating potential issues and strengthening patents through prosecution. Read full bio here.

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Matt Nealon
Associate

Matthew is an Associate within Marshall Gerstein’s Electrical & Computer Technologies Group. He assists in drafting and prosecuting patent applications and conducts examiner interviews. He is experienced within the industries of sustainability, technology, healthcare, and manufacturing. Read more.

For clients seeking patent protection in all areas of biotechnology and pharmaceuticals, Katherine L. Neville, Ph.D. delivers guidance to secure their inventions worldwide. She calls on her advanced studies in microbiology and immunology and over a decade of patent prosecution experience to advance their business goals. In addition to counseling clients in strategic management of worldwide patent rights, her extensive experience includes patent preparation, opinions, due diligence analyses for clients interested in partnering, and various patent proceedings, including interference, reexamination and opposition proceedings. Read full bio here.

Kate Nuehring Su protects and enforces the intellectual property rights of her clients in all phases of complex litigation and patent prosecution. In addition to her legal experience, Ms. Nuehring Su has a background in engineering, including a degree in biomechanical engineering from Stanford University. Her extensive legal and technical knowledge enables her to devise successful strategies for clients across a range of industries. Read full bio here.

Photo of Sandip H. Patel
Sandip H. Patel
Partner

Sandip H. Patel has more than 20 years of experience in representing clients in inter partes matters before the Patent Office, including interferences, reexaminations, and AIA trials. He has a formal education in chemical engineering, but his work in these matters has spanned the entire spectrum of engineering and sciences, including biotechnology, chemistry/chemical engineering, mechanical engineering, and electrical engineering. Read full bio here.

Photo of Ryan N. Phelan
Ryan N. Phelan
Partner

Ryan N. Phelan is a registered patent attorney who counsels and works with clients in intellectual property (IP) matters, with a focus on patents.  As a former technology consultant with Accenture and with a background in computer science and engineering, Ryan has extensive experience in computer system and software design, engineering, development and related technologies.  He has represented numerous Fortune 500 clients with patent matters in technical areas including electrical and software engineering, internet and e-commerce, computer networking, encryption and security, finance, insurance, consumer electronics, and mobile and telecommunications. Read full bio here.

Raymond R. Ricordati, III has two decades of experience as a patent attorney and litigator, serving clients in the U.S. and abroad. He has a degree in Computer Engineering and is quick to understand and master new technologies and to form excellent working relationships with clients of all shapes and sizes, with the single-minded goal of resolving matters successfully and efficiently. In litigation, Mr. Ricordati has extensive experience enforcing intellectual property rights and defending against infringement allegations for clients in a variety of technologies across many industries, including computer hardware and software, mechanical, electro-mechanical, electronic, and biotechnical. Read full bio here.

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Thomas I. Ross
Of Counsel

Thomas I. Ross has litigated successfully in district courts throughout the United States and in the International Trade Commission (ITC) on matters involving patents, trademarks, copyrights, and trade secrets. He has first-chaired numerous trials, both bench and jury, and has been the lead attorney on a number of appeals before the Federal Circuit Court of Appeals and other Circuit Courts. His skills derive from his experience, as well as his training in mechanical engineering and work as an examiner at the U.S. Patent and Trademark Office. Read full bio here.

As an associate with the firm, Bill Samore focuses his practice on preparing and prosecuting U.S., foreign and international patents in numerous technical areas. His prosecution practice involves electrical, mechanical, software, artificial intelligence, telecommunications, blockchain technology, and other computer-related technologies. Bill is well-versed in the patent prosecution process including drafting and prosecuting patent applications. He has conducted numerous examination interviews at the United States Patent and Trademark Office. He has also worked with many inventors to protect their works. Read full bio here.

Ryan Schermerhorn is a registered patent attorney who helps clients in all stages of patent prosecution. Mr. Schermerhorn is experienced in preparing and prosecuting domestic and foreign patent applications in mechanical, electrical, medical, e-commerce and business method arts. He has counseled clients on patentability, freedom to operate and patent invalidity and has reviewed and interpreted licensing and joint research agreements. Read full bio here.

Clients seeking to obtain and protect world-wide patent rights for all types of biotech innovation can benefit from the education and experience of Sharon M. Sintich, Ph.D. On their behalf, she combines expertise in all aspects of patent prosecution with technical insight gained from her graduate research in tumor cell biology. She also counsels clients in portfolio management, and provides opinions on patent validity, patent enforceability and freedom to operate issues. Whether a non-profit, startup or large company, they rely on Dr. Sintich’s committed and methodical approach to protecting their innovations in biotechnology while adding value for their businesses. Read full bio here.

Photo of Noah K. Tilton
Noah K. Tilton
Partner

Noah K. Tilton is a registered patent attorney who represents clients innovating in the electrical, software, insurance, financial, and sporting goods industries. He provides value to clients with a perceptive and balanced approach, informed by his graduate training in computer science, and more than a decade of combined practical computer programming and in-house legal experience. Mr. Tilton handles his clients’ most complex patent procurement matters with dexterity and efficiency. Read full bio here.

Michael R. Weiner represents clients in patent infringement matters before district courts, post-grant proceedings before the U.S. Patent and Trademark Office, and in appeals to the U.S. Court of Appeals for the Federal Circuit. Mr. Weiner’s litigation experience involves technologies such as endoscopic surgical instruments, pharmaceutical compositions, and mechanical devices such as mining equipment. Read full bio here.