Patent Law Practice Center

R. David Donoghue

Holland & Knight

R. David Donoghue is a trial attorney and a partner in Holland & Knight’s Intellectual Property Group focusing upon intellectual property litigation and particularly upon patent disputes. Mr. Donoghue’s most recent trial experience includes a successful jury verdict, including a finding of willfulness, a full trebling of damages and a full award of attorney’s fees in the Northern District of Illinois.

Mr. Donoghue was previously with Delphi, the world’s largest automotive supplier, where he was a founding member of Delphi’s Technology Licensing and Litigation Group and handled substantial international intellectual property litigation and licensing matters. His practice spans diverse technology areas, including cellular telephony, computer software, internet technologies, pharmaceuticals, automotive technologies, electrical technologies, television production equipment, nutritional supplements and numerous medical devices.

Mr. Donoghue is also the founder and author of the Chicago IP Litigation blog (www.chicagoiplitigation.com) where he tracks intellectual property litigation in Chicago.  Mr. Donoghue served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research and writing and intellectual property courses. At the beginning of his legal career, Mr. Donoghue served as a law clerk to The Honorable Gordon J. Quist, federal district judge for the Western District of Michigan.

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Clement S. Roberts

Durie Tangri

Clement Roberts’ practice focuses on intellectual property litigation and on complex commercial cases with a high-technology component. He has successfully tried a wide variety of civil and criminal cases to verdict in state and federal court and in arbitration, including more than a half-dozen jury trials as first chair.

Clem has litigated many highly technical cases in district courts throughout the United States. He has litigated patents involving computer architecture, software, operating systems, semiconductor manufacturing, networking, electronic commerce and protein formation, among others.

Clem’s approach to litigation is focused on efficiency and customer service. He believes that the best litigation strategies reflect the client’s specific business problems, and that winning requires a relentless focus on the facts and arguments most likely to persuade the decision maker.

Prior to founding Durie Tangri, Clem was a partner at San Francisco’s Keker & Van Nest, which he joined in 2001 after working as an associate at Morrison & Foerster. Clem graduated with honors from both Harvard Law School and Harvard College and was named a rising star in IP litigation by Superlawyers magazine in 2009.

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Michael A. Davitz

Axinn, Veltrop & Harkrider LLP

Michael A. Davitz is a partner in the firm’s Intellectual Property and Biomedical Practice Groups, where his practice focuses on creating value for clients through the development and effective enforcement of intellectual property rights.  He is a registered U.S. patent attorney as well as a physician with over 15 years of experience in biomedical research, and more than ten years of experience providing strategic counseling to clients in all aspects of intellectual property law.

Dr. Davitz has extensive experience negotiating and drafting licensing, technology transfer and research-and-development agreements.  In the pharmaceutical industry, he has negotiated and drafted numerous types of agreements, including licensing, risk-sharing, joint development, product acquisition and supply agreements.  Michael has also conducted intellectual property due diligence for joint ventures, mergers, acquisitions, bankruptcy proceedings and venture capital funding.  For a multinational company, he developed a series of intra-company intellectual property cross-licensing agreements that permitted transfer of technology and products among the various subsidiaries in a tax-efficient manner.

Dr. Davitz has prosecuted patents in a wide variety of different technologies, including (i) pharmaceuticals, both generic and innovator, (ii) medical devices such as stents, needles and laboratory instrumentation, (iii) biotechnology, specifically involving monoclonal antibodies and genetically transformed organisms and (iv) information technology, for example, linguistic search engines, Internet business methods and genomics.  Michael has broad international experience with securing intellectual property protection in Europe, South America, the Middle East, Asia and Canada.  In addition, he has experience with European patent and trademark oppositions.  He also has provided patentability, freedom-to-operate, non-infringement and invalidity opinions.

He has specific expertise with Hatch-Waxman issues involving the evaluation and development of design-around strategies for generic pharmaceutical products, product portfolio evaluation, Orange Book patent listings, PIV litigation strategies and the negotiation of settlement agreements between innovator and generic companies and between generic companies.

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Dale Lazar

DLA Piper

Dale Lazar counsels on intellectual property matters concerning a variety of technologies. He concentrates his practice in patenting electronic technology, patenting and copyrighting computer hardware and software, litigating patents and copyrights, negotiating and drafting licenses for patents and software and preparing software-related agreements. Mr. Lazar has also been involved in analyzing electronic and computer-related patents and copyright for infringement and validity.

Mr. Lazar teaches patent law at George Mason University Law School and writes and lectures extensively on patent prosecution and litigation for the Patent Resources Group. He taught “Designing around Valid US Patents” from 1993 to 1999; “Electronics and Software Patent Copyright Practice” in 1998; “Advanced Patent Prosecution” from 1979 to 1998; and has taught “Crafting and Drafting Winning Patents” since 1999 and the Patent Bar review course since 1984. He also has lectured to groups around the world on topics related to US patent law and has authored a number of papers on patent subjects.

The respected English publisher Chambers & Partners cites him in Chambers USA: America’s Leading Lawyers for Business. Legal 500 cites him for his patent litigation practice. Mr. Lazar is listed in three Marquis publications, Who’s Who in American Law, Who’s Who in America, and Who’s Who in the World, and he has been named both a Virginia Super Lawyer and a Washington, DC Super Lawyer in the area of Intellectual Property.

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Gerald M. Murphy

Birch, Stewart, Kolasch & Birch, LLP

Gerald M. Murphy, Jr. is a partner at Birch, Stewart, Kolasch & Birch, LLP.  In his more than 30 years in the IP field, he has prosecuted thousands of patent applications and handled a number of reexaminations, reissue applications and appeals in the USPTO.  He has also personally participated in over 30 patent interferences.  Most of his work has involved representing clients in the fields of biotechnology, chemistry, and pharmaceuticals, including related FDA and patent term adjustment (PTA) issues, including successfully obtaining an additional 600 days of PTA for a pharmaceutical patent by filing a civil action in U. S. District Court.

Mr. Murphy has counseled clients and prepared numerous opinions analyzing patent validity and infringement issues, managed worldwide patent portfolios, and prepared and presented numerous seminars before international audiences regarding U.S. patent statutory law and case law developments. He served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in a patent infringement litigation and in an arbitration.

Mr. Murphy has written and lectured throughout the U.S. and abroad on such topics as reissue and reexamination strategies, patent infringement and prosecution and interpretation of pharmaceutical and biotechnology patents.  He is a regular lecturer for PLI at annual Patent Law Institute on Pharmaceutical and Biotechnology Patents.  He is also the managing partner of BSKB’s month long Summer Patent Seminar, an introductory course on the U.S. patent system that has been held annually for over 30 years.

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Scott A. McKeown

Oblon Spivak

SCOTT A. MCKEOWN is a partner in the firm’s Electrical/Mechanical Practice Group focusing on client counseling, litigation and patent prosecution. Mr. McKeown is also a team leader of the Reissue and Reexamination Practice Group, handling technologies including computer software, wireless telecommunication protocols and network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.

A significant portion of Mr. McKeown’s work involves post grant proceedings, including patent Reissue practice, Ex Parte, and Inter Partes patent reexamination. Mr. McKeown has worked extensively in the patent reexamination area as the USPTO’s Central Reexamination Unit has become a more common alternative to traditional litigation based validity challenges. In this capacity, he has worked and counseled Patent Holder’s on the strategic benefits of patent reexamination, as well as third party requestors. Mr. McKeown lectures and writes extensively on the topic of post grant proceedings at the USPTO, and is a founder of the legal blog PatentsPostGrant.com.

In the telecommunication arts, Mr. McKeown has worked extensively with IP routing and signaling protocols, ATM and wireless communication protocols. He has a broad breadth of experience with OFDM systems, CDMA, TDMA, FSK, QAM and the 802.11 family of protocols.

In the consumer electronic arts, Mr. McKeown’s practice has a strong focus in audio and video processing and display technologies, discs, signal compression and encoding schemes, recording medium formatting and construction, and many other related technologies. In this regard, Mr. McKeown works directly with standard setting organizations and patent pools and has successfully advocated the inclusion of his client’s IP into patent pools. Additionally, he has counseled open source communities on third party IPR issues and standard setting.

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Gene Quinn

IPWatchdog, Inc.

Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He is a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting, patent prosecution and technology licensing. He has worked with independent inventors and start-up businesses in a variety of different technology fields. His technical specialty is with software, computer related inventions and Internet applications and methods.

Gene is also known by many as “The IPWatchdog.” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. At least in part due to the notoriety he developed through IPWatchdog.com, Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, Popular Mechanics, CNN Money, the Milwaukee Journal Sentinel and various other newspapers and magazines worldwide.

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Trevor Carter

Baker & Daniels

Trevor Carter is a partner at Baker & Daniels. He concentrates his practice on patent litigation and counseling clients on patent matters. He has litigated patent cases on medical devices, software, Internet technology, consumer electronics and mechanical devices in federal courts throughout the United States, including California, Georgia, Illinois, Indiana, Minnesota, Montana, North Carolina, Ohio and Texas. Trevor also provides opinions to clients on non-infringement and invalidity.

Before practicing law, Trevor was a project engineer and maintenance foreman for Marathon Oil Company and a cooperative education student engineer for McDonnell Douglas.

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Scott M. Daniels

Westerman, Hattori, Daniels & Adrian, LLP

Scott M. Daniels is a partner in the Washington D.C. intellectual property law firm of Westerman, Hattori, Daniels & Adrian, LLP. He is a graduate of Carleton College and Cornell Law School.

Mr. Daniels is the author of “Recent CAFC Trends” (JIPA Program, 2005), “Every Rule Has its Exception: Interpreting Transition Terms” (2004), “Novelty and Nonobviousness” (NGB Program, 1997) and “Protecting U.S. Intellectual Property Rights at the ITC”, (Hatsumei Kokai, 1989). He is co-author of “The Application of KSR to Pharmaceutical Cases, (Patent, Vol. 6, May 2008); “Why Wait for Oppositions?” (IDEA, vol. 47, No. 3, 2007) and “Essentials of Drafting U.S. Patent Specifications and Claims (2000).

Mr. Daniels is one of the founders and contributors of Reexamination Alert, a blog focused primarily on post-patent grant problems.

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Burt Magen

Vierra Magen Marcus & Deniro LLP

Mr. Magen is a partner at Vierra Magen. He has a degree and experience in technology, and counsels clients in a variety of advanced technologies. Mr. Magen focuses on intellectual property and related business matters, including the development, acquisition and enforcement of intellectual property rights in patents, copyrights, trademarks and trade secrets. His areas of technology are computer architecture and organization, networking technology, internet technology, computer software, computer graphics, operating systems, database software, computer peripherals, system and device level integrated circuits, semiconductor materials, devices and fabrication processes, television/video and medical equipment.

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Thomas L. Creel

Law Offices of Thomas Creel

Thomas L. Creel practiced over 30 years as a first chair intellectual property litigator and counselor.

He was head of the Intellectual Property Litigation Practice Area as a partner at Goodwin Procter LLP; co-chair of the Patent Litigation Group while a partner at Kaye Scholer, Fierman, Hayes and Handler and a senior litigating partner at Kenyon & Kenyon. During government service, Mr. Creel handled administrative patent infringement claims against the U.S. government, participated in patent infringement litigation in the U.S. Court of Federal Claims and was responsible for export clearances for certain types of important information. Recognized for his capabilities in the area of patent litigation, Mr. Creel has also been appointed by several federal district judges to serve as a mediator to attempt to resolve disputes, and as a Special Master to provide proper patent claim construction, supervise all pretrial discovery and recommend rulings on summary judgment motions.

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Lisa A. Dolak

Professor of Law at Syracuse University

Professor Dolak’s research interests include issues at the intersections of patent law and judicial procedure, patent law and the media, and patent law and legal ethics. Her current research projects focus on media coverage of the U.S. patent system, the effects of the evolving inequitable conduct doctrine on the practice of patent law, and a reconsidered theory of subject matter conflicts. During a recent sabbatical leave, she served as law clerk to the Hon. Paul F. Michel, now Chief Judge, United States Court of Appeals for the Federal Circuit, and currently serves as a member of the Federal Circuit’s Advisory Council. She teaches courses on patent law, Internet law, and practice and procedure in the federal courts. She is a registered patent attorney and a summa cum laude graduate of Syracuse University College of Law. She is a regular panelist on “The Ivory Tower Half Hour”, a public affairs discussion program airing Fridays at 8 p.m. on WCNY-TV.

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Robert C. Faber

Ostrolenk Faber LLP

ROBERT C. FABER has been an intellectual property lawyer for over forty years. He is a graduate of Cornell University and Harvard Law School. He is a partner in the New York City intellectual property law firm of Ostrolenk Faber LLP.

Mr. Faber is the author of the “Sixth Edition of Faber on Mechanics of Patent Claim Drafting” and was the author of the Third, Fourth and the Fifth Editions of “Landis on Mechanics of Patent Claim Drafting,” which the Sixth Edition replaced. This is a prominent text in the patent field.
Mr. Faber had been a member of the faculty of Practicing Law Institute (“PLI”) Patent Bar Review course for more than twenty years, which focused on the Patent Agent’s Examination and claim writing. He also is a faculty member of PLI’s Advanced Claim and Amendment writing and Fundamentals of Patent Prosecution courses since their inception, and has lectured on intellectual property and patent matters for PLI, the Bureau of National Affairs, and other organizations.

He has been recognized annually in Marquis’ Who’s Who in American Law and in the 2007 and 2009 publications of the Guide to the World’s Leading Patent Practitioners. This is a peer recommendation listing of several hundred patent practitioners throughout the world, published by Managing Intellectual Property and Euromoney Institutional Investor, PLC.

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Robert Hulse

Fenwick & West LLP

Mr. Hulse’s practice focuses on prosecuting patent applications in a wide range of technical fields, including electronics, computer software, telecommunications, audio/video media, electromechanical and medical devices, and business methods.

His practice also involves intellectual property counseling, such as evaluating risks from third-party patents and assisting in efforts to design around those patents. Serving as an independent expert evaluator for a major patent pool, he has significant experience determining the essentiality of patented technology to a number of standards bodies’ specifications. Mr. Hulse has also analyzed intellectual property issues for numerous due diligence and litigation matters.

In addition to providing legal services for his clients, Mr. Hulse is an Adjunct Professor of Law at the University of California, Hastings College of the Law, where he teaches patent drafting and prosecution.

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Brandon D. Baum

Brandon Baum has tried nearly 100 cases over three decades of trial practice. Whether representing plaintiffs or defendants, individuals or corporations, he is most comfortable on the courtroom floor. Brandon draws on his broad experience with both state and federal juries to translate high-stakes, complex legal matters into easily understandable language.  He has handled disputes involving such technologies as telecommunications (hardware and software), thin films, computer methods and software, microprocessors, smartcards, business methods, computer aided design (CAD), Java™, medical devices, cryptography and GPS devices. He also has extensive experience litigating business disputes, and has handled appellate matters in federal, state and even bankruptcy courts. An AV-rated attorney, Brandon was an equity partner at two top Silicon Valley law firms before starting his own firm in 2011.

A U.C. Hastings graduate, Brandon now serves his alma mater as an adjunct professor teaching an upper-division course in patent litigation techniques.  He is a court-appointed Early Neutral Evaluator and Mediator for patent cases in the Northern District of California, and a regular contributor to PLI’s Patent Law Practice Center.

Douglas R. Nemec

Skadden, Arps, Slate, Meagher & Flom LLP

Douglas R. Nemec is a partner in the Intellectual Property and Technology Group and is resident in the New York office. Mr. Nemec concentrates his practice on patent litigation and related counseling. He also regularly provides intellectual property opinions and advice in connection with corporate transactions.
Mr. Nemec has litigated numerous patent infringement and other technology-related matters involving a wide range of technologies, including pharmaceuticals, medical devices, consumer healthcare products, chemicals, electronics, computer software and hardware, building materials and mechanical devices.
He has represented clients in a variety of venues, including federal and state trial courts, the U.S. Court of Appeals for the Federal Circuit and the U.S. International Trade Commission. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in patent interference proceedings and other matters.

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Jeanne M. Gills

Foley & Lardner LLP

Jeanne M. Gills is a partner with Foley & Lardner LLP and vice-chair of the firm’s national Intellectual Property Department. She is a member and former vice-chair of the Intellectual Property Litigation Practice.
Her trial experience includes such “bet the company” cases as DeKalb v. Pioneer, a patent case concerning genetically engineered corn where over $500 million was at stake. With her electronics background, Ms. Gills has litigated many patent and technology cases involving semiconductors, memory devices, plasma displays, optical projectors used in aircraft, diesel engines, and other complex electronics and computer software matters.
Throughout her career, she has represented clients in many diverse industries (from electronics to biotechnology) in complex patent, trade secret, trademark, copyright, and unfair competition litigation and appeals. Other recent trial experience includes federal jury trials and arbitrations in multiple forums, including jury trial involving patent infringement of a dual-energy x-ray scanning device; jury trial involving copyright and trade dress infringement of a silo unloader; jury trial involving trade dress infringement of a rotary electric shaver; and arbitration involving copyright infringement, trade secret misappropriation, and other business claims regarding computer software.

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Mitch G. Stockwell

Kilpatrick Stockton LLP

Mitch Stockwell is a partner at Kilpatrick Stockton LLP. He focuses his practice on intellectual property dispute resolution, with particular emphasis on patent infringement, trade secret and related intellectual property litigation and licensing transactions.

Mr. Stockwell has represented companies in over sixty lawsuits and arbitrations in federal courts throughout the country. He has tried to verdict, and litigated through judgment and appeal, over a dozen disputes. He has litigated and evaluated patents and trade secret claims in technologies including cable and telephony communications, wireless communications software, e-commerce, electronics, medical products (including athletes, knee and hip systems) and athletic shoes and equipment.

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