The Evolving Patent Law Landscape and its Effect on 5G Innovation 2018
Date: Monday July 9
Time: 4:30 – 6:30
Abstract: Local and national experts will discuss recent developments in patent law and their effects on 5G innovative activities of our members and their companies. Discussions will cover the effects of these changes on inventors’ ability to obtain patents, to defend them once issued, to use them or license them in order to protect products or revenue streams in the market. The panel will also cover various defenses against patent infringement assertions including by invalidating patents at the Patent Office.
Scope: Topics include: the use of Inter Partes Review (IPR) proceedings at the Patent Office for invalidating patents; the effects of these proceedings on patent rights and “freedom to operate;” the recent Supreme Court decision in Oil States, narrowly upholding the constitutionality of IPRs and leaving open potential constitutional challenges based on the 5th Amendment “due process” and “taking” clause; the Court’s Lexmark decision expanding scope of the patent exhaustion defense and its effect on licensing and distribution agreements.
The narrowing field of patent-eligible subject matter — patent protection challenges for computer-implemented inventions after the Supreme Court decision in Alice; patent claiming strategies and implications for prosecuting computer-implemented patent applications.
The new direction at the US Patent Office set by Director André Iancu; the recently-proposed Patent Trial and Appeal Board (PTAB) rules changing the claim construction standards the PTAB uses from the Broadest Reasonable Interpretation (BRI) to the standard used in federal courts; and the new Patent Office examination guidelines for determining patent-eligibility under Section 101 of the Patent Act.
Practical insights into filing and prosecuting patent applications in view of recent patent law changes; various strategies for protecting patent rights when raising investment funds, forging strategic partnerships, or licensing relationships.
- Kevin F. Turner, United States Patent & Trademark Office
- David Easwaran, Alston & Bird; member Intellectual Property Owners Association (IPO)
- Keith D. Grzelak, Wells St. John PS; past Chair of the IP Committee of IEEE-USA
- Suzanne Michel, Google
- Matthew Osborne, InterDigital
Panel Chair/Moderator: Dr. Ron D. Katznelson, Bi-Level Technologies; Vice Chair for Patents, Intellectual Property Committee of IEEE-USA.
Intended audience: Inventors, technology developers, engineering managers, IP portfolio managers, patent practitioners, licensing executives and specialists, technology transfer managers, venture capitalists, investors, and risk management officers.
Format: The panelist will each speak for up to 15 minutes with an opportunity for a short Q&A after each speaker, followed by a general discussion and Q&A from the audience.
Kevin F. Turner was appointed as an Administrative Patent Judge with the Board of Patent Appeals and Interferences in 2007. Judge Turner received a J.D. degree from George Mason University, a Ph.D. degree in Physics from North Carolina State University, and a B.S. degree in Physics from Rensselaer Polytechnic Institute.
Judge Turner began his career at the Naval Research Laboratory where he conducted research focused on nucleation in the chemical vapor deposition processes of diamond materials. He then joined the United States Patent and Trademark Office as a Patent Examiner in the semiconductor manufacturing art. Judge Turner was a patent attorney with several intellectual property law firms for approximately 10 years in between his time as a Patent Examiner and an Administrative Patent Judge.
In 2013, Judge Turner moved from the DC area to assist in the opening of the Silicon Valley Regional Office and to act as a liaison for PTAB judges hired into the Regional Office. He was appointed as a Lead Administrative Patent Judge in 2017.
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 2011. 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.
Matthew is a Senior Patent Counsel at InterDigital, Inc. His practice focuses on international standards and patent policy, portfolio development, sponsored research, open source, and complex IP transactions.
Prior to joining InterDigital, Matthew assisted technology, media, and financial companies in various merger and acquisition scenarios, where he focused on the underlying intellectual property assets and risks in those transactions. He also advised companies on issues concerning patent validity and invalidity, product and service patentability, freedom to operate, litigation risk, and competitive patent portfolios.
Matthew has a JD and MBA from the University of Richmond and a BS in computer science from Virginia Commonwealth University. He is admitted to the bars of the District of Columbia and Virginia.
David’s practice focuses on securing patent protection for computer-related innovations, and much of his time is dedicated to protecting advances in the telecommunications industry. Before entering private practice, David spent several years working as a patent examiner at the U.S. Patent and Trademark Office (USPTO), where he examined computer-implemented patent applications during a time of significant change in the standard for determining patent eligibility.
With experience on both sides of the patenting process, David has unique insight into how evolving case law and USPTO guidance affects (or fails to affect) the ability of companies to obtain patents. Because the legal landscape continues to shift, David is routinely sought out by clients and peers for his insights and strategic advice regarding the patenting of computer-related innovations.
Co-Chair and Panelist
Keith D. Grzelak is a director with Wells St. John PS, a Spokane, Washington Intellectual Property firm. Keith represents a broad range of technology clients and has taken clients from startup through funding, acquisition, and integration in several areas of technology. Keith is currently a member and past repeat chair of the IEEE-USA Intellectual Property Policy Committee where he has participated for over 24 years. He is also a past Vice President for Government Relations at IEEE-USA, chair of IEEE-USA Government Relations Council, and a prior candidate for IEEE-USA President. He has been active in teaching at numerous technology law legal education courses to both lawyers and engineers/scientists across the nation. He has represented both large and small companies, as well as individuals that have pioneered technology in a number of fields. Keith provides counsel on IP portfolio development, patent and trademark portfolio procurement and development, due diligence and board patent advisement. Keith has represented clients in a broad range of technical areas covering computers (hardware/software), internet and electronic commerce, communications and wireless technology, semiconductor devices, control systems, medical devices and processes, and various complex electromechanical systems.
Keith received a BS in Mechanical Engineering, an MS in Engineering Mechanics with a thesis in biomechanics, an MS in Electrical Engineering, and a JD in Law. Prior to law school, Keith worked as a vehicle safety and crashworthiness engineer for two of the Big Three automakers where they funded his way through law school.
Chair and Moderator
Dr. Ron D. Katznelson is the Founder and President of Bi-Level Technologies, an image and signal-processing technology startup company in Encinitas, CA. He is a technology entrepreneur, named inventor on 24 U.S. patents and applications and an independent scholar of the patent system. From 1990 to 2005, he was at Broadband Innovations, a San Diego digital RF technology company he founded, where he served as Chairman, Chief Technology Officer and a contributor to the DOCSIS® cable modem specifications. Prior to 1990, Dr. Katznelson was the Director, New Technology Development at the VideoCipher Division of Linkabit Corp., later acquired by General Instrument Corp. (GIC). At GIC, he directed the R&D in Advanced Television Systems that led to the MPEG standard and managed the Division’s intellectual property portfolio, patent litigation matters, and representation in industry groups and standards organizations. From 1982 to 1985, he was a professor of electrical engineering at the University of California, San Diego.
Dr. Katznelson also advises high technology startups. He is the Vice Chair for Patents, IEEE-USA Intellectual Property Committee, a member of the Federalist Society, and serves on the San Diego CONNECT Public Policy Committee.
He received his doctoral degree in Electrical Engineering from the University of California, San Diego, CA; his Masters in Applied Semiconductor Physics, and a dual BSc. degree in Mathematics and Physics, both from the Hebrew University in Jerusalem, Israel. He is a licensed private pilot and a licensed ham radio operator.