The year 2015 was an eventful one for the patent community. Both the U.S. Supreme Court and Court of Appeals for the Federal Circuit issued numerous landmark decisions in discrete areas of patent law, including: (1) the standards for claim construction appellate review (Teva v Sandoz (SCOTUS)) and means-plus-function claim construction (Williamson v Citrix (CAFC)); (2) the reviewability of the PTAB’s decision to institute IPR/CBM (Versata/Cuozzo (CAFC)); (3) the test for split/divided infringement (Akamai v Limelight (CAFC)) and the defenses to induced infringement (Commil v Cisco (SCOTUS)); (4) the challenges to patent validity based on the on-sale bar (TMC v Hospira (CAFC)); and (5) the availability of post-patent expiration royalties (Kimble v Marvel (SCOTUS)).
Such key decisions from both the Supreme Court and Federal Circuit in these disparate and evolving areas demonstrate the dynamic, fast-paced reality of patent law today.
Please join us for a thought-provoking panel discussion, as Dr. Gaby L. Longsworth, Nirav Desai, Dr. Pratibha Khanduri, and Krishan Y. Thakker, attorneys at Sterne, Kessler, Goldstein & Fox P.L.L.C., discuss and review some of the key patent law decisions handed down in 2015 by the Federal Circuit and the Supreme Court, and provide some practice-based tips for practitioners in the field.
The panel will be moderated by Dr. Gaby L. Longsworth, Director in the Biotech Group at Sterne, Kessler, Goldstein & Fox, and Chair of the Firm’s Diversity Committee.
Presenters:
Dr. Gaby L. Longsworth is a Director in Sterne, Kessler, Goldstein & Fox’s Biotechnology/Chemical Group. Dr. Longsworth is sought out by both innovator and generic biotech and pharmaceutical companies for her insights and knowledge of intellectual property and brand product lifecycle management strategies.
A large part of Dr. Longsworth's practice is focused on representing international and domestic generic pharmaceutical companies in patent cases involving Abbreviated New Drug Applications (ANDAs) that include a Paragraph IV (pIV) certification to one or more Orange Book listed patents. She has provided strategic and technical advice in multiple ANDA patent infringement cases brought under the Hatch-Waxman Act.
With her extensive generic pharmaceutical expertise, Dr. Longsworth is uniquely qualified to evaluate innovator IP portfolios from a generic perspective, including method-of-use claim coverage relative to the product label, Orange Book patent listing strategies, and PTEs. She also counsels innovator pharmaceutical clients from around the world in all areas of patent procurement, including domestic and foreign patent preparation, and lifecycle management strategies. Dr. Longsworth also counsels clients on plant patents.
Nirav Desai is a Director in Sterne, Kessler, Goldstein & Fox’s Litigation and Electronics Groups, and focuses on patent litigation and general intellectual property strategy. He has been involved in electronics, software, and pharmaceutical actions before district and appellate courts, the PTAB, and the ITC. Mr. Desai also has experience counseling clients in intellectual property strategy, including patent portfolio development and analysis, licensing, freedom-to-operate opinions, and preparation and prosecution of patent applications.
Prior to attending law school, Mr. Desai worked for Noblis, Inc (formerly Mitretek Systems) as a senior technical lead in their Center for Criminal Justice Technology. While at Noblis, Inc. Mr. Desai served as a software engineer and systems analyst in the area of biometric information systems for various government agencies, including the U.S. Department of Justice and the FBI. Mr. Desai specialized in software development for fingerprint matcher subsystems, developing front-end latent fingerprint matcher software for use on a variety of back-end automated fingerprint identification system (AFIS) platforms.
Mr. Desai is a contributing author of Patent Office Litigation, a two-volume set focused on contested proceedings under the America Invents Act.
Dr. Pratibha Khanduri is an associate in Sterne, Kessler, Goldstein & Fox’s Biotechnology/Chemical group. Dr. Khanduri’s practice focuses on biotechnology, pharmaceutical, and chemical industries, and she is involved in the areas of patent procurement, exploitation, and enforcement. Dr. Khanduri has experience in patentability, validity, infringement, and freedom-to-operate analyses. She also has experience in preparation and prosecution of patent applications, due diligence investigations, and patent litigation matters. Dr. Khanduri’s primary technical areas include genetics, molecular biology, biochemistry, cell biology, cancer biology, microbiology, pharmacology, and clean technology. Prior to joining SKGF, Dr. Khanduri was a law clerk and technical advisor at an intellectual property law firm.
Krishan Y. Thakker is an associate in Sterne, Kessler, Goldstein & Fox’s Litigation Group and focuses his practice on intellectual property enforcement and patent infringement, with a special emphasis on pharmaceutical patent litigation under the Hatch-Waxman Act. Mr. Thakker represents clients in matters before several federal district and state courts, as well as in domestic and international arbitrations and mediations. He has experience in both pre-action investigations and the major phases of litigation including case management and strategy, discovery, fact and expert witness preparation, Markman proceedings, taking and defending fact and expert depositions, dispositive motions briefing, and pre-trial and bench trial practice. He also has experience with post-grant review proceedings co-pending with district court actions. Prior to joining Sterne Kessler, Mr. Thakker was an associate in the New York office of an international general practice firm, where his practice focused on first- and third-party insurance recovery, IP and commercial litigation, and cross-border disputes.
Lunch will be provided at this event. Please RSVP by noon on Thursday, January 28, 2016.
For more information about the IP Section or to RSVP for this event, please contact Rahul Das at drahuldas@hotmail.com.