PATENT ELIGIBILITY: WHERE DO WE STAND AFTER ALICE AND ITS PROGENY?

Transcription

1 PATENT ELIGIBILITY: WHERE DO WE STAND AFTER ALICE AND ITS PROGENY? Panelist Biographies AMECURRENT May-16 15:31

2 Andrew J. Pincus Partner WASHINGTON DC T: F: Andrew Pincus focuses his appellate practice on briefing and arguing cases in the Supreme Court of the United States and in federal and state appellate courts; developing legal strategy for trial courts; and presenting policy and legal arguments to Congress, state legislatures, and regulatory agencies. Andy has argued 25 cases in the Supreme Court, including Spokeo, Inc. v. Robins (2015), and AT&T Mobility v. Concepcion, 131 S. Ct (2011). Law360 ranked Andy's victory in Concepcion as the most important Supreme Court class action decision of the last 15 years. Andy was named a 2015 Litigation Trailblazer by The National Law Journal, and was profiled as a member of Law360's 2014 Appellate A- List. Andy's work in Concepcion and successful defense of Chicago Mayor Rahm Emanuel's right to run for office were cited by the American Lawyer in its article naming Mayer Brown as one of the top six US litigation firms in the 2012 Litigation Department of the Year report. A former Assistant to the Solicitor General in the United States Department of Justice ( ), Andy co-founded and serves as co-director of the Yale Law School's Supreme Court Advocacy Clinic (2006- present), which provides pro bono representation in Supreme Court cases each year. Andy's Supreme Court oral arguments are available here. A selection of his more than 250 appellate briefs is available here. Andy's practice also includes detailed written and oral advocacy before Congress, other legislative bodies, and regulatory agencies regarding a variety of policy and legal issues. He frequently testifies before Congress on a variety of subjects, including patent reform, the Consumer Financial Protection Bureau, reform of the federal litigation system, and the Supreme Court's decisions in cases involving business law issues. Andy successfully represented clients in connection with passage of the Private Securities Litigation Reform Act. Chambers USA reports (2015) that clients say Andy "'has an excellent command of strategy'" and in oral argument "'has mastered the record and the law and thinks exceptionally well on his feet.'" Commentators (2014) describe Andy as "'an excellent lawyer'" who is "'very smart'"; they "praise the breadth of" Andy's Supreme Court practice, "and state that he 'gets tapped for the really important matters'" (2013). Andy is "a superb lawyer who is involved in lots of influential cases" (2010) and "is commended for his "masterful performances'" before the Court (2009). Legal 500 ranked Andy as a Leading Lawyer in Mayer Brown's tier one Supreme Court practice (2015), and Benchmark Litigation (2016) named Andy as a National Litigation Star. According to Legal 500 (2014), Andy has a "superb reputation" and "is 'one of the best Supreme Court advocates in the country' and a 'brilliant strategist'" (2013). An "'excellent Supreme Court oralist'" (2011), he "is cited by clients as

3 'a total superstar' who is 'unbelievably smart,' and who 'objectively belongs on any list of leaders'" (2008). Andy's appellate experience has also won him recognition in The Best Lawyers in America ( ). Reporters often turn to Andy for commentary on Supreme Court cases. He also frequently speaks and writes on legal issues for academic, professional, and general audiences. While serving as General Counsel of the United States Department of Commerce ( ), Andy had principal responsibility for the Digital Millennium Copyright Act and the Electronic Signatures in Global and National Commerce Act. He also participated in formulation of policy concerning intellectual property protection, privacy, domain name management, taxation of electronic commerce, export controls, international trade, and consumer protection. Before rejoining Mayer Brown, Andy served as General Counsel of Andersen Worldwide S.C. Following law school graduation, Andy was Law Clerk to the Honorable Harold H. Greene, United States District Court for the District of Columbia ( ), after which he practiced with another major law firm in Washington. Andy is a contributor to Class Defense, the firm's blog on key issues affecting class action law and policy. Education Yale University, BA, cum laude Columbia Law School, JD, Notes & Comments Editor, Columbia Law Review, James Kent Scholar; Harlan Fiske Stone Scholar Admissions New York District of Columbia US Supreme Court US Court of Appeals for the District of Columbia Circuit US Court of Appeals for the First Circuit US Court of Appeals for the Second Circuit US Court of Appeals for the Third Circuit US Court of Appeals for the Fourth Circuit US Court of Appeals for the Fifth Circuit US Court of Appeals for the Seventh Circuit US Court of Appeals for the Ninth Circuit

4 US Court of Appeals for the Eleventh Circuit US Court of Appeals for the Federal Circuit Activities Andy served as a member of the Advisory Commission on Electronic Commerce established by the Internet Tax Freedom Act,

5 Mark R. Freeman Senior Appellate Counsel, US Department of Justice Civil Division Mark R. Freeman is Senior Appellate Counsel with the Appellate Staff of the Civil Division at the U.S. Department of Justice. Mr. Freeman supervises most IP-related appeals in which the United States or a federal agency is involved and works closely with the Solicitor General s Office on intellectual property cases in the Supreme Court. Mr. Freeman has argued more than 50 appeals on behalf of the federal government, including numerous patent matters, and has argued in all thirteen federal courts of appeals as well as the Supreme Court. Mr. Freeman clerked for the Hon. Sandra Lynch of the U.S. Court of Appeals for the First Circuit. He graduated magna cum laude from Harvard Law School, where he was an editor of the Harvard Law Review.

6 Suzanne Michel Senior Patent Counsel Suzanne Michel is Senior Patent Counsel at Google where she focuses on patent policy from Google s Washington, D.C. office. Before joining Google in 2011, she was Deputy Director in the Office of Policy Planning at the Federal Trade Commission where she worked on patent policy and IP/antitrust issues. At the FTC, she headed the project on the Evolving IP Marketplace, including the drafting of the Commission report, released in March The FTC awarded her the Paul Rand Dixon award and the Excellence in Supervision award. Before joining the FTC in 2000, Suzanne worked at the U.S. Department of Justice as a patent litigator. Suzanne received her B.S. with honors from Northwestern University and her Ph.D. in Chemistry from Yale University. She graduated from Boalt Hall School of Law at Berkeley, where she was a member of the Order of the Coif and received the prize for best paper published by a graduating student. Following law school, she served as a law clerk to the Honorable Paul R. Michel (no relation) at the Court of Appeals for the Federal Circuit. She is a registered patent attorney.

7 Brian A. Rosenthal Partner NEW YORK T: WASHINGTON DC T: Brian Rosenthal is a partner in the Intellectual Property practice at Mayer Brown. His practice is focused on patent litigation, licensing and counseling, with a concentration on patent litigation involving computer software, electronics, and medical devices. Brian was recently named a Rising Star by Law360 and Super Lawyers Brian's patent litigation experience has involved a wide range of technologies, including local area network switching and routing, mobile telephone standards, smartphone features, ecommerce software, call center and interactive voice response technology, electronic patient diaries, microprocessor Java acceleration technology, golf ball construction, helicopter landing gears, dynamic RAM modules, IDE optical drive interfaces, MP3 audio compression, JPEG image compression, magnetic resonance imaging, PET scanning, radiation therapy, wireless and remote patient monitoring, pulse oximetry, online advertising, cloud storage and video games. Brian has litigated over 65 patent cases, most as lead counsel, handling all aspects of litigation from complaint to trial and appeal. He has participated in several jury trials, including as lead counsel, and conducted many Markman and summary judgment hearings. Brian also has significant experience with Patent Office validity proceedings including inter partes review and covered business method petitions, as well as inter partes and ex parte reexaminations, most often in parallel with ongoing litigation. He is a member of the Sedona Conference working group on parallel district court and PTO proceedings. Brian's counseling experience includes formulating opinions of counsel related to patent infringement, validity, enforceability, freedom to operate opinions, and licensing. He has also conducted seminars for clients' in-house legal teams on electronic discovery, FRAND obligations, AIA proceedings and other areas of patent litigation. Brian has also managed several highly successful patent licensing programs, many involving standards-essential patents. Prior to attending law school, Brian worked as a software developer for Caseware International, where he designed and developed features of a Windows-based automated auditing software package. Experience buysafe, Inc. v. Google, Inc. Represented Google against buysafe's claim of patent infringement related to Google Trusted Stores. Successfully invalidated buysafe's patent under 35 U.S.C Obtained affirmance from Federal Circuit in precedential opinion. Changzhou Kaidi Electrical Co., Ltd. et al. v. Okin America, Inc. et al. Represented declaratory judgment plaintiff Kaidi against its competitor Okin, which claimed that Kaidi infringed a patent on

8 linear actuators used in reclining furniture. Obtained jury verdict of non-infringement as lead trial counsel. Zhejiang Medicine Co. v Kaneca Corp. Represented declaratory judgment plaintiff ZMC against its competitor Kaneca, defending against allegations that ZMC's process for producing Coenzyme Q10 infringed Kaneca's patent. Argued and won summary judgment of non-infringement on the eve of trial. Confidential arbitration. Co-lead counsel in commercial arbitration in which our client claimed improper termination of a service contract for the provision of a mobile payment platform. After a week-long arbitration before a three-judge panel, won $40 million plus attorney fees for improper termination in a complete victory for our client. BE Technology, LLC. v. Google, Inc. et al. Representing Google and Motorola Mobility against claims of patent infringement related to advertising services and remote file storage. Successfully led and argued several inter partes review petitions leading to Final Written Decisions invalidating all asserted claims of the asserted patents. The case is pending in the Western District of Tennessee. Callaway Golf Company v. Acushnet Company. Defended Acushnet against Callaway's claim of $246 million for infringement of four patents asserted against the Titleist Pro V1 golf ball. Obtained jury verdict invalidating all four asserted patents as anticipated and obvious. Prosecuted parallel inter partes re-examination proceedings, including arguing appeals before the Board of Patent Appeals that resulted in invalidation of all asserted Callaway patents. M2M Solutions, LLC v. Cinterion Wireless Modules GmbH et al. Successfully defended Cinterion against patent infringement claims by M2M, which asserted two patents related to Machine-to-Machine communication modules. Argued and won key claim construction issues on behalf of joint defense group that directly led to stipulation of non-infringement by Cinterion and dismissal of the litigation. Bell Helicopter Textron, Inc. v. Airbus Helicopters. Represented Airbus Helicopter in declaratory judgment action filed by Bell in the District Court for the District of Columbia regarding infringement of an Airbus patent on helicopter landing gear. Obtained admission of infringement from Bell's expert witness during deposition, leading to permanent injunction prohibiting further sale of the accused landing gear after a bench trial. SPA Syspatronic AG v. United States. Represented Third Party Defendant Gemalto, Inc. against assertion of patent related to chips used in epassports and Government ID cards in the Court of Federal Claims. Obtained summary judgment of invalidity of key claims for indefiniteness due to lack of corresponding structure in the specification, leading to favorable settlement. Nazomi Communications, Inc. v. ARM Ltd. Defended ARM against Nazomi's claim of infringement of patents related to Java acceleration of microprocessors. Successfully obtained early summary judgment of non-infringement in the Northern District of California, which was affirmed on appeal. Impulse Technology Ltd. v. Microsoft Corporation, et al. Representing interactive fitness equipment maker Impulse in its assertion of six patents against nine video game makers related to fitness and

9 sports games for the Microsoft Kinect video game system. The case is pending in the District of Delaware. U.S. Philips Corp. v. Pantech Wireless, Inc. Represented Philips in the US arm of worldwide litigation against Pantech Wireless for infringement of a patent essential to the JPEG image compression standard. Argued claim construction hearing in Eastern District of Pennsylvania, which led to worldwide settlement. PHT Corporation v. invivodata, Inc. et al. Defended invivodata against PHT's claim of infringement of a patent related to electronic patient diaries for clinical trials. Successfully obtained favorable claim construction rulings on the eve of trial in the District of Delaware which led to a favorable settlement. U.S. Philips Corp. v. ATI Technologies, Inc. Represented Philips against ATI for infringement of a patent essential to the practice of the I2C bus specification. The case was settled. University of Virginia Patent Foundation v. Philips Electronics North America Corporation. Defended Philips against claims of patent infringement against its MRI devices. The case was settled. Alberta Telecommunications Research Center v. Rambus Inc. Defended Rambus against Alberta's assertion of patent infringement related to RDRAM modules. The case was settled. Nortel Networks Inc. v. Extreme Networks, Inc. Defended Extreme Networks against Nortel's claims of infringement of six patents related to various computer networking technologies. Favorably settled before trial. Education University of Western Ontario, BSc, Computer Science w/ Economics minor, with distinction Cornell Law School, JD, magna cum laude, Order of the Coif Admissions New York District of Columbia US District Court for the District of Columbia US Court of Appeals for the Federal Circuit US Court of Federal Claims US District Court for the Western District of Tennessee