Women Practitioners' Viewpoint: What Does it Take to Be PTAB Whisperers?

According to the Merriam-Webster dictionary definition, “whisperer” is a person considered to possess some extraordinary skill or talent in managing or dealing with something specified. When put in the PTAB context, this means an attorney who has extraordinary skill or talent in managing or dealing with the procedural issues, and nuances that arise in inter partes review (IPR), post-grant review (PGR), and ex parte reexamination (EPR).

As we see the increasing popularity of the LEAP program of young practitioners and women representation in PTAB, we decided to have a panel of women practitioners to discuss their thoughts on what it means to them to be “PTAB whisperers” based on their experience.  We hope to bring diverse perspectives to what they think “PTAB whisperer” means in their opinion and their lessons learned as they help increase diversity in the PTAB space.

Panelists:

The Honorable Amanda Wieker, Acting Senior Lead Administrative Patent Judge, Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

Acting Senior Lead Administrative Patent Judge Amanda Wieker studied Biomedical Engineering at Vanderbilt University and began her career with the U.S. Patent and Trademark Office as a Patent Examiner. In that role, she examined patent applications for various mechanical technologies. Judge Wieker attended William & Mary Law School and, upon graduation, joined the law firm of Ropes & Gray, practicing patent litigation at various U.S. district courts, the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission, and the USPTO Patent Trial and Appeal Board. In 2014, she was appointed as an Administrative Patent Judge, where she works primarily on AIA post-grant trial proceedings. Judge Wieker lives outside of Richmond, VA, with her husband Steve, and her two children, Liam and Owen.

The Honorable Alyssa Finamore, Lead Administrative Patent Judge, Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

Lead Administrative Patent Judge Alyssa Finamore earned a Bachelor of Engineering degree, summa cum laude, in Chemical Engineering from Youngstown State University.  While studying engineering, she worked at Delphi Packard Electric Systems in the Materials Engineering and Customer Service Engineering Departments.  Judge Finamore also earned a Juris Doctor degree from George Mason University Antonin Scalia Law School.  During law school, she worked as a patent agent for Diederiks & Whitelaw, PLC.  After graduation, she worked as a patent attorney at Dowell & Dowell, P.C., and became a partner.  In 2015, Judge Finamore joined PTAB as a Supervisory Patent Attorney.  She was appointed as an administrative patent judge in 2017 and became a lead judge in 2022.  Judge Finamore works on ex parte appeals arising from the prosecution of patent applications and AIA post‑grant trial proceedings.  She also manages PTAB’s judicial law clerk program.  Judge Finamore lives in Arlington, VA with her two children and enjoys cheering them on from the sidelines of their sporting events.

Lora Green, Partner, Gemini Law LLP/Former Administrative Patent Judge, Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

Lora Green is a Partner at Gemini Law LLP. Lora was an Administrative Patent Judge (APJ) for over 17 years, including 6 years as a Lead Administrative Patent Judge of the Biotech section, at the Patent Trial and Appeal Board (PTAB). At the PTAB, Lora worked on the post-grant trial proceedings, interferences, inter-partes reexaminations, and ex parte appeals, with her focus on the life sciences and biotech. Before joining Gemini Law LLP, Lora provided strategic counseling in contested PTAB proceedings, IP protection, patent law, and patent strategy at Wilson Sonsini Goodrich & Rosati.

Before becoming an APJ, Lora clerked at the Court of Appeals for the Federal Circuit for the Honorable William Bryson for two years. Lora was also a primary examiner at the USPTO, where she attended law school at George Washington University, graduating top of my class. a Ph.D. in Chemistry from Johns Hopkins University.

Elizabeth Laughton, Counsel, Smith Baluch LLP

Elizabeth A. (Beth) Laughton represents clients in intellectual property matters.  She has represented major corporations in intellectual property and technology litigation, including patent disputes before the Patent Trial and Appeal Board, the district courts, and the United States Court of Appeals for the Federal Circuit.  She has also prosecuted patents before the United States Patent & Trademark Office. Beth’s practice has spanned a wide range of technologies including pharmaceutical methods and products, diagnostic methods, steels, software applications, semiconductor fabrication, and business methods.

Beth received her law degree from Duke University School of Law in 2009, where she was an editor of the Duke Law Journal and the Duke Law & Technology Review, and was elected to the Order of the Coif.  Prior to law school, Beth worked on a drug development program for new tuberculosis drugs. She received her undergraduate degree in Biology with a minor in French Studies from Duke University.

Following law school, Beth served as a law clerk to Judge Timothy B. Dyk of the U.S. Court of Appeals for the Federal Circuit.

Beth is admitted to practice law in California, the District of Columbia, and Virginia.  She is registered to practice before the United States Patent and Trademark Office. Beth is also admitted to practice before the United States Court of Appeals for the Federal Circuit, the United States Court of Appeals for the First Circuit, the United States District Court for the Northern District of California, the United States District Court for the Central District of California, and the United States Court of Appeals for Veterans Claims.

Grace Wang, Senior Counsel, Allen & Overy, LLP

Grace relies on her Ph.D. in electrical engineering from MIT and patent prosecution background to advise her clients in inter partes review proceedings and requests for ex parte reexaminations.  She also focuses her practice on litigation in the International Trade Commission and district court, as well as patent validity, infringement, freedom to operate, and due diligence analyses.

Grace has experience with a wide range of technologies, including medical devices, signal processing, data analytics, integrated circuits, semiconductor devices, disease diagnostics, network biology, genetic risk assessment, communications systems and networks, and cloud computing. Grace's doctoral research focused on the neural coding of complex auditory signals.

Moderator:  Safiya (Mahmud) Aguilar, Associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Safiya Aguilar is a former Patent Trial and Appeal Board (PTAB) law clerk and patent examiner at the U.S. Patent and Trademark Office (USPTO). She uses her extensive knowledge of patent office practice to help firm clients navigate post-grant proceedings and various aspects of pre-trial preparation, including validity and infringement analyses.

Safiya’s technical knowledge covers a broad spectrum of complex technologies, including medical devices, machine vision, feedback controls, automobiles, fuel cells, computer hardware, fintech, and additive manufacturing. She has experience preparing petitions for inter partes review (IPR) and requests for ex parte reexamination, as well as conducting legal and factual research in support of infringement and invalidity disputes. Safiya advises clients on all aspects of patent strategy, including validity opinions, landscape analysis, due diligence, and prosecution.

As a judicial law clerk, Safiya assisted administrative patent judges (APJs) with adjudicating America Invents Act (AIA) trials and ex parte appeals across the chemical, electrical, mechanical, and pharmaceutical technologies. During her more than seven years as a patent examiner, Safiya evaluated the patentability of various medical devices, including spinal implants and prosthetics; image-guided and robotic surgical systems; internal and external fixation devices; and retractors.

Program Sponsors:  

* PTAB Bar Association 

* ArentFox Schiff LLP

* Answer IP, LLC

* Bayes, PLLC

* Erise IP, P.A.

* Fish & Richardson, P.C.

* Gemini Law LLP

* Groombridge Wu Baughman & Stone, LLP

* Reichman Jorgensen Lehman & Feldberg LLP

* Linda Liu & Partners

* Unified Patents and Unified Network

* Barrister Digital Solutions (e-Discovery and litigation support)

* Lango Legal (Translation)