401. Game-Changing Effects of AIA Trials at the United States Patent and Trademark Office
DATE: Saturday, July 22, 2017 TIME: 9:00 AM - 10:00 AM
LOCATION: USPTO, 2nd floor, Alaska Room
In 2012, the America Invention Act (AIA) created new proceedings at the United States Patent and Trademark Office for challenging patent validity. Since their inception, AIA trials have been an instant hit for defendants accused of patent infringement and have had dramatic effects on patent litigation practice and strategies. This program will examine critical issues relating to AIA trials, including recent AIA trial statistics, effects on patent infringement litigation practice, estoppel effects in the USPTO and district courts, and differing claim construction standards. The program will also address patent prosecution strategies for obtaining patents that will more likely withstand AIA challenges.
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Director, IP Counsel, Diagnostics, Hologic, Inc.
Brian Sun serves as a director and IP counsel for the Diagnostics division of Hologic, a global healthcare company specializing in molecular diagnostics, medical imaging and surgical products. He is responsible for managing global patent portfolio development and enforcement, product clearance, licensing and other IP transactional matters across a variety of products and technologies. Prior to Hologic, Brian was an attorney at Foley & Lardner in San Diego. Brian serves on the board of True Diagnostics, an early stage point-of-care diagnostics company, and Pacific Arts Movement, a local non-profit media organization. He is also a former board member and president of the Pan Asian Lawyers of San Diego and currently serves as the Regional Governor of Southern California for NAPABA. Brian received his J.D. from the University of San Diego, M.S. in Biotechnology from Johns Hopkins University and B.A. in Molecular & Cell Biology from UC Berkeley.
Shareholder, Greenberg Traurig LLP
John K. Kim
John K. Kim is a shareholder with the international law firm of Greenberg Traurig. He has over 23 years of experience in virtually all aspects of intellectual property law, including patents, trademarks and copyrights. His transactional practice include preparing and prosecuting patent and trademark applications in the United States and foreign countries, as well as conducting all types of investigation on intellectual property assets. John also has significant litigation experience involving patent, trademark and copyright infringement claims. More recently, John has successfully prosecuted a number of AIA trials before the Patent and Trial Appeal Board of the United States Patent and Trademark Office. John received a J.D. degree from Rutgers Law School – Newark in 1994 and a B.S. in Engineering degree from The Cooper Union in 1991.
Partner, Morrison & Foerster LLP
Rudy Kim is a litigation partner with Morrison & Foerster LLP. Mr. Kim represents clients in high-stakes intellectual property litigation in federal district courts and before the U.S. International Trade Commission. Mr. Kim is also a registered patent attorney admitted to practice before the U.S. Patent and Trademark Office and advises clients in matters involving a wide range of complex technologies, including computer hardware, software, consumer electronics, network security and semiconductors. Mr. Kim has also tried criminal jury cases with the San Francisco District Attorney’s office.
In 2011, Mr. Kim was elected as a Fellow of the American Bar Foundation, an honorary organization limited to one-third of one percent of lawyers licensed to practice in each jurisdiction. In 2013, he was selected as a Global Fellow by the Federal Circuit Bar Association. He is also recognized as a leading patent lawyer by Who’s Who Legal: Patents 2016. Mr. Kim is currently serving as the Vice Chair of the Patent Litigation Committee of the Federal Circuit Bar Association.
Mr. Kim clerked for the Honorable Alan D. Lourie of the U.S. Court of Appeals for the Federal Circuit. He received his J.D. from the Georgetown University Law Center, and his B.S. in Electrical Engineering from UCLA. For the past three years, he has taught trial advocacy classes at Stanford Law School.
Deanna L. Kwong
IP Litigation Counsel, Hewlett Packard Enterprise
Deanna Kwong is IP Litigation Counsel within the Office of the General Counsel at Hewlett Packard Enterprise Company. She and the rest of the IP Litigation team are responsible for managing all IP lawsuits that are filed against or by HPE in the U.S., and supporting all IP disputes worldwide. Prior to joining HPE, Deanna was a patent litigator for over a decade at Covington & Burling LLP. Deanna was a Regents’ and Chancellor’s Scholar at the University of California at Berkeley, where she also received her law degree. In her spare time, she serves on the Board of Directors for Asian Pacific Islander Legal Outreach and on the Advisory Board for the Tahirih Justice Center, and enjoys running and training for marathons. She also presently serves as a Social Co-Chair for APABA-SV.
Senior Associate General Counsel, Walmart Global eCommerce
Diana Luo is a Senior Associate General Counsel for Walmart Global eCommerce, responsible for a variety of intellectual property issues, including IP litigation and pre-litigation disputes for all Walmart entities in the U.S. Prior to joining Walmart in September 2013, Ms. Luo was an IP litigator at Morrison & Foerster LLP in Palo Alto, where she focused on complex patent litigation. She began her legal career at Milbank Tweed Hadley & McCloy LLP. Ms. Luo is a member of the California bar, and is also a registered patent attorney. She is active in APABA-Silicon Valley, currently serving on the Board of Directors and also a co-chair for the In-House Committee. Ms. Luo received her B.S. in Chemical Engineering, magna cum laude, from UCLA, and her J.D. from University of California, Berkeley School of Law.
Principal, Fish & Richardson PC
W. Karl Renner
Karl Renner is a Principal in the Washington, D.C. office of Fish & Richardson P.C. Mr. Renner co-chairs the firm’s Post-Grant Practice Group, and he serves on the firm’s Management Committee. His practice emphasizes client counseling, strategic patent prosecution, and contentious inter and ex parte post-grant and reissue work. In this practice, Mr. Renner has provided direction for well over 300 AIA post-grant matters, challenging and defending patents, most commonly in coordination with litigation counsel amidst co-pending disputes.
Recently, he was elected to serve on the Board of Directors for the PTAB Bar Association, the first national bar association of its kind to form in more than 30 years. The PTAB Bar Association intends to establish best practices for the unique practice and skills required before the Patent Trial and Appeal Board.
With clients ranging from emerging companies to Fortune 50 corporations, Mr. Renner manages global patent portfolios and regularly advises on effective commercialization/enforcement of company IP, and on defensive tactics to address competitor IP. In this regard, he specializes in post-grant matters, representing both patent owners and challengers. His technical focus is on the electrical, computer-related, physics and mechanical arts.
Mr. Renner has prior engineering experience with the Instrumentation Branch of the U.S. Department of Energy, where he worked on the development and implementation of control systems, high-frequency optical imaging of particles during combustion processes, computer programming in machine and object oriented languages, and computer design and breadboard testing of analog circuits. Mr. Renner is now a frequent lecturer and author on intellectual property matters, regularly speaking at University of Maryland events, in conjunction with their Engineering Schools and Hinman CEO program.