Publications and Presentations
Publications
Treatises
“Post-Grant Patent Practice” (coauthor), Patent Resources Group, 2012–2019
“Patent Reexamination and Reissue Practice” (coauthor), Patent Resources Group, 2009–2011
“Post-Grant Proceedings Before the Patent Trial and Appeal Board” (contributing author), Practising Law Institute, 2014
Articles
“PTAB's Discretion to Deny Institution” (coauthor), Practising Law Institute's USPTO Post-Grant Trials 2018, May 2018
“Amendments in Review Proceedings” (coauthor), Intellectual Property Today, 20–22, July 2014
“Redundant Patentability Challenges in Review Petitions” (coauthor), Intellectual Property Today, 22–23, Feb. 2014
“Stays Pending Review” (coauthor), Intellectual Property Today, 34–35, Dec. 2013
“Representation at the PTAB and Litigation Counsel” (coauthor), Intellectual Property Today, 33–35, Oct. 2013
“Printed Publications in Reexamination and Inter Partes Review” (coauthor), Intellectual Property Today, 33–35, Sept. 2013
“Prosecution Bars in Litigation with Concurrent Reexamination or Review Proceedings” (coauthor), Intellectual Property Today, 20–22, July 2013
“The Enablement Requirement for References in Reexamination and Inter Partes Review” (coauthor), Intellectual Property Today, 11, Apr. 2013
“Reexamination and Review Proceedings In Light of Belkin” (coauthor), Intellectual Property Today, 34–35, Mar. 2013
“Options When Reexamination Is Not Ordered as Requested” (coauthor), Intellectual Property Today, 15–17, Feb. 2013
“Reexamination After or in a Late Stage of Litigation” (coauthor), Intellectual Property Today, 14–16, Dec. 2012
“Petitions for Inter Partes Review” (coauthor), Intellectual Property Today, 14–15, Nov. 2012
“Constitutionality of Reexamination is Confirmed Again” (coauthor), Intellectual Property Today, 6–7, Sept. 2012
“Recent Changes to Reissue That Are Favorable for Patent Owners” (coauthor), Intellectual Property Today, 11–13, Aug. 2012
“Broadening Reissue: Material Narrowing as Clarified by In re Youman,” (coauthor) Intellectual Property Today, 20–21, July 2012
“Top 20 Practice Tips for Patent Owners in Reexamination – Part II” (coauthor), Intellectual Property Today, 16–17, June 2012
“Top 20 Practice Tips for Patent Owners in Reexamination – Part I” (coauthor), Intellectual Property Today, 34–35, May 2012
“Supplemental Examination and the Proposed Rules” (coauthor), Intellectual Property Today, 7–9, Mar. 2012
“When is Ex Parte Reexamination Available?” (coauthor), Intellectual Property Today, 22–23, Feb. 2012
“Argument-Based Estoppel in Reexamination and Reissue” (coauthor), Intellectual Property Today, 8–9, Jan. 2012
“Post-Grant Review Proceedings Compared with EPO Oppositions” (coauthor), Intellectual Property Today, 32–35, Dec. 2011
“Changes to Reexamination under the America Invents Act” (coauthor), Intellectual Property Today, 22–23, Nov. 2011
“License and Settlement Agreements in Relation to Reexamination and Review Proceedings” (coauthor), Intellectual Property Today, 28–31, Oct. 2011
“Protests in Reissue Applications” (coauthor), Intellectual Property Today, 18–19, Sept. 2011
“Reexamination in Light of i4i and Therasense” (coauthor), Intellectual Property Today, 22–24, Aug. 2011
“Amendment Rights in Reexamination” (coauthor), Intellectual Property Today, 8–9, July 2011
“Broadening Reissue: The Recapture Rule and Material Narrowing” (coauthor), Intellectual Property Today, 14–16, June 2011
“Patent Reexamination and Willful Infringement” (coauthor), Intellectual Property Today, 14–15, May 2011
“Broadening Reissue: The Recapture Rule and Surrendered Subject Matter” (coauthor), Intellectual Property Today, 30–32, Apr. 2011
“Reexamination and Injunctive Relief” (coauthor), Intellectual Property Today, 28–29, Mar. 2011
“Reexam + Reissue = Merger, Suspension or Concurrent Prosecution” (coauthor), Intellectual Property Today, 14–16, Feb. 2011
“Do You Need Separate Reexamination Counsel?” (coauthor), Intellectual Property Today, 12–13, Jan. 2011
“Reexam + Reexam = Merger (Usually)” (coauthor), Intellectual Property Today, 20–21, Dec. 2010
“The Presumption of Validity after Reexamination or Reissue” (coauthor), Intellectual Property Today, 30–31, Nov. 2010
“Notice of Concurrent Proceedings in Reexamination and Reissue” (coauthor), Intellectual Property Today, 32–33, Oct. 2010
“Requesting Inter Partes Reexamination” (coauthor), Intellectual Property Today, 12–13, Sept. 2010
“Multiple Reexamination Requests” (coauthor), Intellectual Property Today, 8–9, Aug. 2010
“Requesting Reexamination: Requirements and Best Practices” (coauthor), Intellectual Property Today, 26–27, July 2010
“Supplemental Examination Under the Patent Reform Act of 2010” (coauthor), Intellectual Property Today, 8–9, June 2010
“Post-Grant Proceedings Under the Patent Reform Act of 2010” (coauthor), Intellectual Property Today, 18–20, May 2010
“Substantial New Questions of Patentability” (coauthor), Intellectual Property Today, 34–35, Apr. 2010
“Proposed Post-Grant Review Proceedings and Reexamination” (coauthor), Intellectual Property Today, 14–16, Mar. 2010
“Claim Changes in Reexamination and Reissue” (coauthor), Intellectual Property Today, at 24–26, Feb. 2010
“Post-Grant Options for Patent Owners” (coauthor), Intellectual Property Today, at 20–23, Jan. 2010
Presentations
Panelist, "The Secrets to PTAB Success: Advanced IPR Strategies," IPWatchdog’s PTAB Masters, Feb. 1, 2023
Panelist, "Impact of Director Vidal on the PTAB," IPWatchdog, webinar, Dec. 13, 2022
Panelist, "GW Law Conference: Post-Grant Practice Roundtable Discussion," George Washington University Law School, Washington, D.C., Sept. 29, 2022
Panelist, "Fighting Fire with Fire: Effectively Using Motions, Discovery and Experts," IPWatchdog’s PTAB Masters, webinar, Jan. 26, 2022
Presenter, "Post-Grant Prosecution: Reexamination and Reissue," Elevate Your Prosecution, Salt Lake City, Utah, Sept. 24, 2021
Presenter, "Patent Reexamination and Patent Reissue as Litigation Tools," Strafford Legal, webinar, Jan. 28, 2020
Presenter, "PTAB Trial Practice: New Trial Guidance, and Precedential and Informative Decisions," Strafford Legal, webinar, Oct. 10, 2019
Panelist, "GW Law Conference: Post-Grant Practice Roundtable Discussion," George Washington University Law School, Washington, D.C., Sept. 12, 2019
Instructor, "Post-Grant Patent Practice," Patent Resources Group, Sarasota, Florida, Apr. 10–12, 2019
Instructor, "Post-Grant Patent Practice," Patent Resources Group, Incline Village, Nevada, Oct. 10–12, 2018
Panelist, "GW Law Conference: Post-Grant Practice Roundtable Discussion," George Washington University Law School, Washington, D.C., Sept. 28, 2018
Presenter, "Evolving PTAB Trial Practice: Navigating Complex Procedural Rules," Strafford Legal, webinar, Sept. 12, 2018
Presenter, "Strategies for Challenging U.S. Patent Rights," American Chemical Society, Boston, Massachusetts, Aug. 19, 2018
Panelist, "Supreme Court Update: Analysis and Impact of Oil States and SAS Institute," American Conference Institute, Washington, D.C., July 17–18, 2018
Presenter, "Successfully Instituting (or Defending) an IPR," Practising Law Institute's USPTO Post-Grant Trials 2018, San Francisco, California, May 15, 2018
Presenter, "Current PTAB Issues," Intellectual Property Owners European Conference, Amsterdam, The Netherlands, May 3, 2018
Instructor, "Post-Grant Patent Practice," Patent Resources Group, New Orleans, Louisiana, Apr. 15–17, 2018
Moderator, "Navigating the Changing PTAB and Evolving Prosecution Practice," Utah IP Summit, Salt Lake City, Utah, Feb. 23, 2018
Presenter, "Review Proceedings and Prosecution Strategies," Kraus & Weisert, Munich, Germany, Oct. 19, 2017
Instructor, "Post-Grant Patent Practice," Patent Resources Group, Palm Springs, California, Oct. 15–17, 2017
Panelist, "GW Law Conference: Post-Grant Practice Roundtable Discussion," George Washington University Law School, Washington, D.C., Sept. 28, 2017
Panelist, "Hot Topics in AIA Trials," IPO Annual Meeting, San Francisco, California, Sept. 19, 2017
Presenter, "Strategies for Challenging U.S. Patent Rights," American Chemical Society, Washington, D.C., Aug. 20, 2017
Presenter, "Evolving PTAB Trial Practice: Navigating Complex Procedural Rules," Strafford Legal, webinar, May 25, 2017
Presenter, "Keeping Up-to-Speed with Cuozzo, its 'Properly Reviewable Shenanigans,' and Related Jurisprudence," Third Annual Post-Grant PTO Proceeding, American Conference Institute, New York City, New York, May 10, 2017
Instructor, "Post-Grant Patent Practice," Patent Resources Group, Orlando, Florida, Apr. 5–7, 2017
Moderator, "Patent Owners and Petitioners Weigh In," PTAB Bar Association, Washington, D.C., Mar. 2, 2017
Presenter, "Navigating Administrative Law in Patent Appeals Involving Review Proceedings," Strafford Legal, webinar, Jan. 12, 2017
Presenter, "Ethics in Post-Grant Proceedings at the PTAB," IPO’s IP Chat Channel, webinar, Nov. 10, 2016
Presenter, "Patent Prosecution Strategies for Review Proceedings," Rochester Intellectual Property Law Association, Rochester, New York, Nov. 4, 2016
Instructor, “Post-Grant Patent Practice,” Patent Resources Group, San Antonio, Texas, Oct. 19–21, 2016
Presenter, "Reissue," IPO’s Post-Grant Patent Office Practice Committee, webinar, Oct. 11, 2016
Panelist, "GW Law Conference: Post-Grant Practice Roundtable Discussion," George Washington University Law School, Washington, D.C., Oct. 7, 2016
Panelist, “PTAB/IPR Discussion,” AIPLA & USPTO’s PTAB Bench and Bar Conference, Alexandria, VA, June 15, 2016
Instructor, “Post-Grant Patent Practice,” Patent Resources Group, Tampa, Florida, Apr. 10–12, 2016
Panelist, “The Broadest Reasonable Claim Construction: Does the Board Have the Authority to Construe Claims Differently from District Court,” 5th Annual Patent Administrative Law Symposium, Washington, D.C., Mar. 22, 2016
Panel Moderator, “PTAB/IPR Discussion,” IPO & USPTO’s Patent Bar & Office Dialog Summit, Washington, D.C., Mar. 15, 2016
Presenter, “PTAB vs. District Courts: Pros & Cons,” Patexia webinar, Feb. 11, 2016
Panelist, “Transforming IP Management,” CPA Global’s Silicon Valley IP Forum, Palo Alto, Oct. 28, 2015
Instructor, “Post-Grant Patent Practice,” Patent Resources Group, Santa Ana Pueblo, New Mexico, Oct. 17–19, 2015
Panelist, “GW Law Conference: Post-Grant Practice Roundtable Discussion,” George Washington University Law School, Washington, D.C., Oct. 13, 2015
Instructor, “Post-Grant Patent Practice: Review Proceedings and Reexamination,” Patent Resources Group, Orlando, Florida, Apr. 12–14, 2015
Instructor, “Post-Grant Patent Practice: Review Proceedings and Reexamination,” Patent Resources Group, Las Vegas, Nevada, Sept. 27–29, 2014
Instructor, “Post-Grant Patent Practice: Review Proceedings,” Patent Resources Group, Arlington, Virginia, July 8, 2014
Presenter, “Implications for IPRs in Biotech, Pharmaceuticals, and the Chemical Arts,” Oblon’s Patents Post-Grant Webinar Series, June 18, 2014
Presenter, “Leveraging Post-Grant Patent Proceedings Before the PTAB,” Strafford Legal, webinar, June 12, 2014
Instructor, “Post-Grant Patent Practice: Reissue, Owner-Requested Reexamination, and Supplemental Examination,” Patent Resources Group, Bonita Springs, Florida, Apr. 2, 2014
Instructor, “Post-Grant Patent Practice: Review and Reexamination,” Patent Resources Group, Bonita Springs, Florida, Mar. 30–Apr. 1, 2014
Panelist, “Strategies for Success in Post-Grant Proceedings,” Intellectual Property Owners PTO Day, Washington, D.C., Mar. 25, 2014
Instructor, “Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination,” Patent Resources Group, Huntington Beach, California, Oct. 16–18, 2013
Presenter, “Review Proceedings,” IP Section of the Utah State Bar, Salt Lake City, Utah, June 18, 2013
Panelist, “Inter Partes Review Basics,” Intellectual Property & Technology Institute, Intellectual Property Law Section of the Colorado Bar Association, Denver, Colorado, May 31, 2013
Instructor, “Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination,” Patent Resources Group, Orlando, Florida, Apr. 7–9, 2013
Instructor, “Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination,” Patent Resources Group, Indian Wells, California, Oct. 17–19, 2012
Panelist, “Inter Partes Review: Rules & Strategy, Intellectual Property Owners Association,” webinar, Sept. 6, 2012
Moderator, “Final PTO Rules Implementing AIA Changes to Patent Examination,” Federal Circuit Bar Association, Washington, D.C., August 23, 2012
Presenter, “Utilizing New Procedures to Challenge Troubling Patents,” Sixth National Forum on Freedom to Operate, American Conference Institute, Philadelphia, Pennsylvania, July 30–31, 2012
Presenter, “Post-Grant Patent Practice,” Chartered Institute of Patent Attorneys, London, United Kingdom, May 9, 2012
Presenter, “Overview of the America Invents Act,” Association of Danish Intellectual Property Attorneys, Copenhagen, Denmark, May 8, 2012
Lecturer, “Overview of Post-Grant Patent Practice,” Patent Prosecution course, Lewis & Clark Law School, Portland, Oregon, Apr. 4, 2012
Instructor, “Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination,” Patent Resources Group, Bonita Springs, Florida, Mar. 29–31, 2012
Panelist, “USPTO Post-Grant Proceedings After New Patent Reform Law,” Strafford Publications, webinar, September 28, 2011
Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Naples, Florida, Apr. 14–16, 2011
Lecturer, “Post-Grant Patent Practice,” Patent Prosecution course, Lewis & Clark Law School, Portland, Oregon, Apr. 7, 2011
Presenter, “Patent Validity Challenges and Patent Reform Legislation,” IPSA at the University of Michigan Law School, Ann Arbor, Michigan, Mar. 14, 2011
Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Palm Springs, California, Oct. 3–5, 2010
Presenter, “Pharmaceuticals and Biotechnology: PTO’s 2010 Obviousness Guidelines,” Chartered Institute of Patent Attorneys, London, United Kingdom, Sept. 22, 2010
Presenter, “Merger and Suspension of Concurrent Inter Partes Reexamination and Reissue Proceedings,” Committee on Patent Office Inter Partes Proceedings of the Intellectual Property Owners Association, Aug. 17, 2010
Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Bonita Springs, Florida, Apr. 15–17, 2010
Panel Moderator, “Reexamination Tips and Strategies” a panel discussion featuring Gregory Morse, the Director of the Central Reexamination Unit, Oregon Patent Law Association, Portland, Oregon, Mar. 15, 2010
Panel Moderator, “Perspectives of Feedstock Suppliers on the Bio-based Chemical Value Chain,” Infocast’s Bio-Based Chemical Conference, San Diego, California, Feb. 10, 2010
Presenter, “Overview of Patent Reexamination and Reissue,” IP Section of the King County Bar Association, Seattle, Washington, Feb. 4, 2010
Presenter, “Post-Grant Practice Primer,” Oregon Patent Law Association, Portland, Oregon, Dec. 7, 2009
Presenter, “Obviousness for Drug Compounds and Formulations,” Danish Patent Office, Taastrup, Denmark, Nov. 11, 2009
Presenter, “Reexamination and Post-Grant Review Proceedings,” IP Section of the Utah State Bar, Salt Lake City, Utah, Oct. 23, 2009
Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Las Vegas, Nevada, Oct. 4–6, 2009
Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Orlando, Florida, Apr. 23–25, 2009
Presenter, “Reissue Practice,” SIPLA at Santa Clara University School of Law, Santa Clara, California, Mar. 17, 2009
Presenter, “Supreme Court’s Review of the Obviousness Test,” Utah IP Summit, Salt Lake City, Utah, Feb. 16, 2007
Presenter, “Supreme Court’s Review of the Obviousness Test,” Oregon Patent Law Association, Portland, Oregon, Dec. 6, 2006
Presenter, “Supreme Court’s Review of the Obviousness Test,” Orange County Patent Law Association, Costa Mesa, California, Oct. 25, 2006
Presenter, “Ownership of an Employee’s Invention,” Utah State Bar’s Annual Convention, Newport Beach, California, July 14, 2006
Presenter, “Claim Construction of Markush Groups and Other Alternative Limitations,” Sixth Advanced Forum on Biotech Patents, American Conference Institute, San Francisco, California, Feb. 16, 2006
Workshop co-leader, “Building and Managing Patent Portfolios in the Life Sciences,” Henry Stewart Conference Studies, San Francisco, California, Sept. 27, 2005