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Wed, Aug 14

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Virtual Event

Virtual Panel: Diverse Horizons of PTAB Whispers and Wisdom

Uncover the nuances of patent trials in a virtual panel merging PTAB specialists and private practitioners. Delve into PTAB whispers and wisdom as practitioners and judges share insights, demystifying the realm where law and innovation converge.

Virtual Panel: Diverse Horizons of PTAB Whispers and Wisdom
Virtual Panel: Diverse Horizons of PTAB Whispers and Wisdom

Time & Location

Aug 14, 2024, 1:00 PM – 2:15 PM

Virtual Event

About the Event

Dive into the realm of patent trials with a virtual panel where PTAB experts and private practitioners unite to share insights, whispers, and wisdom. Explore the intricacies of Patent Trial and Appeal Board proceedings, unraveling the non-obvious wisdom that shapes the landscape of intellectual property disputes. Join the conversation at the intersection of law and innovation.

Moderator: Usman Khan, Ph.D., Principal, Fish and Richardson, P.C. 

Usman Khan, Ph.D., concentrates his practice in post-grant proceedings and patent prosecution. He has prosecuted more than 1,000 patent applications on behalf of foreign and domestic startups, entrepreneurs, educational institutions, and Fortune 500 companies. Usman enjoys working with clients to develop robust patent portfolios in line with their business and organizational objectives. In 2022, Usman was selected by the firm to participate in the Leadership Council on Legal Diversity Pathfinders program.

Usman has extensive experience in a broad range of technologies, including semiconductors; software; signal processing / wireless communications and networks; OLEDs, LEDs, and LCDs; mobile devices and displays; 3D displays; control systems; analog and mixed-signal circuits; nanotechnology; cybersecurity; financial and business services; internet search and advertising; internet of things; and medical devices.

In addition to his post-grant and prosecution work, Usman is involved in pro bono efforts and has represented refugee and asylum applicants. Usman also chairs Fish & Richardson's South Asian and Middle Eastern affinity group. Usman is an active member of the Patent Trial and Appeal Board Bar Association and its conference planning committee and has helped organize several of the Association’s annual meetings and leadership summits.

Panelist: Vice Chief Judge Kalyan Deshpande, Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

Judge Kal Deshpande received a J.D. degree from The Ohio State University, Michael Moritz College of Law and a Bachelor of Science degree in Engineering from the Case Western Reserve University. Judge Deshpande, subsequent to his graduation from college, worked for Accenture. During and after law school, he worked at the early-stage food services company Viands Concerted, LLC. He then joined the U.S. Patent and Trademark Office as a Patent Examiner before joining the Board in 2008 as a Patent Attorney, following which he became a Judge.

Panelist: Lissi Mojica, Managing Director, Answers IP, LLC

Lissi is a globally recognized leader in post-grant proceedings and one of the most experienced practitioners in this field. Before moving to the private sector, Lissi was an examiner with the US Patent Trademark Office (USPTO) for 19 years. In that role, she launched the Central Reexamination Unit (CRU) to safeguard the quality and consistency of reexamination proceedings and to reduce pendency. As the CRU’s first director, Lissi oversaw thousands of reexamination proceedings and laid the foundation for the adoption of AIA post-grant review, and oversaw policies, standards and procedures while also developing inter partes and ex partes reexamination training for CRU examiners.

Her practice includes all aspects of post-grant proceedings, including inter partes review, post-grant review, covered business method proceedings, reexamination proceedings, reissues, and interferences. Lissi also specializes in appeals to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, as well as patent quality and patent examination matters.

Panelist: Lisa Nguyen, Partner, Allen & Overy, LLP

Lisa represents cutting-edge technology companies in intellectual property matters, particularly in litigation against non-practicing entities. Lisa is adept at resolving disputes efficiently and identifying pragmatic solutions for her clients. Her practical and deliberate approach to prepare cases for trial regularly disposes of claims early in the process.

Lisa has a proven track record of obtaining successful trial verdicts, summary judgment rulings, and dismissals at the pleading stage. She has also obtained multiple walkaways for defendants (obtaining dismissals with no payment to plaintiffs), as well as attorneys’ fees. Lisa represents both plaintiffs and defendants in complex multi-jurisdictional, multi-patent cases, and has substantial experience handling cases pending before district courts across the country, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB).

Lisa regularly speaks and writes on patent counseling and IP issues. Her speaking engagements include presentations at the Advanced Patent Law Institute, Berkeley Center for Law and Technology, the National Conference of Vietnamese American Attorneys, and the National Asian-Pacific American Bar Association. Lisa has been listed among Silicon Valley Business Journal’s Women of Influence, the Top 50 Women in the PTAB, an Asian Leader Worth Watching, and a Rising Star in IP Litigation.

Panelist: Angela Oliver, Associate, Haynes & Boone, LLP

Angela Oliver is an appellate and intellectual property attorney who focuses her practice on appeals before the U.S. Court of Appeals for the Federal Circuit, federal district court litigation, and post-grant proceedings before the U.S. Patent and Trademark Office. After clerking at the Federal Circuit and in the Eastern District of Texas, Angela understands how to develop effective, long-term case strategies for her clients.

Angela has argued seven appeals before the Federal Circuit, including successfully obtaining a reversal in a case that clarified important issues in design patent law. Angela was recently recognized in Patexia’s CAFC Intelligence Report as being in the top 30 most active attorneys representing appellees before the Federal Circuit and in the top 65 most active attorneys before that court overall.

Angela regularly prepares briefs in federal courts of appeals and federal district courts across the United States. She has also assisted with merits briefing in three cases before the U.S. Supreme Court, as well as with certiorari-stage briefing. Angela’s experience includes a variety of appeals, including from the Court of International Trade, federal district court litigation, bankruptcy court litigation, the Court of Federal Claims, inter partes reviews, and other agency matters, including appeals from patent prosecution.

Combining her technical experience with her passion for persuasive writing, Angela also regularly appears in post-grant proceedings before the USPTO. She has assisted clients throughout inter partes review proceedings, from drafting petitions and patent owner responses to presenting oral arguments. She also recently assisted a client with a successful petition for the rehearing of a PTAB final written decision. Angela also assists with critical issues in patent infringement litigation, including dispositive motion practice, appellate preservation, and the development of the jury charge. Additionally, she previously prosecuted patent applications in various technical fields.

Angela’s technical experience includes a wide array of technologies, including medical devices, surgical tools, computer hardware and software, wireless communications, computer networks, High Efficiency Video Coding, oil and gas drilling, and business methods. Her background in bioinformatics equipped her with a foundational understanding of both the technology industry and the life sciences industry, as well as the emerging crossover between those fields.

In addition to her regular practice before the U.S. Patent and Trademark Office, Angela also has experience before other federal administrative agencies, including in employment, maritime, antitrust, and immigration matters.

Angela maintains an active pro bono docket, having been included in the Capital Pro Bono Honor Roll in 2021 and 2022, and in the Pro Bono College of the State Bar of Texas from 2021–2023. Prior to joining Haynes and Boone, Angela served as a law clerk to then-Chief Judge Prost of the U.S. Court of Appeals for the Federal Circuit and to now-Chief Judge Rodney Gilstrap of the U.S. District Court for the Eastern District of Texas.

Panelist: Administrative Patent Judge Christa Zado, Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

Christa Zado is an Administrative Patent Judge (APJ) at the Patent Trial and Appeal Board (PTAB) in the Silicon Valley office. She earned her law degree from the University of California at Berkeley Boalt Hall School of Law, and a Master of Science in Electrical Engineering from Stanford University. As an APJ at the PTAB, Christa presides over trial proceedings under the America Invents Act and decides appeals of adverse decisions made during patent prosecution at the U.S. Patent and Trademark Office. She helped co-found the Legal Experience and Advancement Program (LEAP) and is actively engaged in supporting diversity, equity, inclusion, and accessibility in her community. Prior to her appointment in July 2014, Judge Zado served as Senior Corporate Counsel of Global IP at Cisco Systems, Inc., and as a private practitioner litigating patents at Fish & Neave and Ropes & Gray.

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