Panel #4: Alice, May I?

177 Pages·2016·9.96 MB·English

Title
: Alice May I? Navigating Through The

Challenges Created By Alice v. CLS Bank
Date: September 9, 2016
Time: 11:00 AM to 12:15 PM
Moderator:
Elana Araj
Associate
Cooper & Dunham LLP
[email protected]
New York, NY

Panelists:
Alejandro Menchaca Jennifer Trusso Salinas
Director Partner
McAndrews, Held, & Malloy Ltd. Troutman Sanders LLP
[email protected] [email protected]
Chicago, IL Irvine, CA

Erica Navar Wendy Choi
Patent Examiner Partner
U.S. Patent & Trademark Office Ballard Spahr LLP
[email protected] [email protected]
Chicago, IL Atlanta, GA
Tab 1 – Biographies or CVs
ELANA B. ARAJ

Cooper & Dunham LLP · 30 Rockefeller Plaza · New York, NY 10112
[phone] · [email protected]

EXPERIENCE

Cooper & Dunham LLP, New York, NY
Associate, September 2013-Present
 Litigate intellectual property cases related to patent, trademark, copyright, false advertising, and unfair
competition matters in federal court.
 Litigate patent invalidity proceedings before the U.S. Patent and Trademark Office
 Prepare and prosecute domestic and foreign utility and design patent applications primarily in the fields of
mechanical and electrical engineering.
 Client counseling related to patentability and freedom to operate analyses and opinions.

Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP, Washington, DC
Student Associate, June 2011-June 2013
 Prepare and prosecute domestic and foreign patent applications related to the fields of mechanical and
electrical engineering.
 Counsel clients to determine patent protection strategies and strategically plan their patent portfolios.
 Perform patentability and freedom-to-operate analyses, and draft patentability and freedom-to-operate
opinions.

United States Patent & Trademark Office, Alexandria, VA June 2007 - June 2011
Patent Examiner, June 2007-June 2011
 Examined in-coming patent applications relating to the field of mechanical engineering, with an emphasis
on biomedical devices and procedures.
 Conducted prior art searches.
 Made patentability determinations with respect to the examined patent applications in view of the prior art
searches and the laws and rules pertaining to patent law.

EDUCATION

The George Washington University Law School, J.D., May 2013

Cornell University, B.S. in Biological Engineering, May 2007

BAR ADMISSIONS

 New York State
 U.S. District Court for the Southern District of New York
 U.S. District Court for the Eastern District of New York
 U.S. Court of Appeals for the Federal Circuit

PROFESSIONAL ASSOCIATIONS

New York Intellectual Property Law Association, Programs Committee, 2013-Present
Alejandro Menchaca
McAndrews, Held & Malloy, 500 W. Madison Street, Chicago, Illinios
[email protected]
Licenses:
Admitted to practice Illinois: November 1989
Admitted to practice in Northern District of Illinois: January 1990
Admitted to practice in Northern District of Illinois Trial Bar: May 1997
Experience:
McAndrews, Held & Malloy Ltd. -- Chicago, Illinois
Director, 2000-Present
Partner, 1995-1996, 1998-2000
Attorney, 1989-1995
Litigate intellectual property related cases including patents, trademarks, trade
dress, copyright, trade secrets in various technologies. Over ninety percent of this
litigation is in federal district court. Responsibilities include managing and
conducting all phases of discovery, trial preparation, trial, and post-trial practice.
Prepare and prosecute patent applications, draft licenses, conduct patent searches,
advise clients regarding patent portfolios of competitors. Prosecution practice is
primarily in the chemical and mechanical areas.
John Marshall Law School -- Chicago, Illinois
Adjunct Professor, 1995-Present
Teacher of Patent and Trade Secrets Law, 13 semesters. Also taught Unfair
Competition and Consumer Protection, International Intellectual Property Law,
and Patent Prosecution (in John Marshall’s Intellectual Property LLM Program),
each for one semester.
Department of Justice, U.S. Attorney’s Office -- Chicago, Illinois
Assistant U.S. Attorney, 1996-1997
Worked in the criminal division of the U.S. Attorney’s Office for the Northern
District of Illinois prosecuting violations of federal criminal laws. Responsibilities
included grand jury investigations leading to criminal indictments, numerous
hearings and trials before many of the judges of the District Court for the Northern
District of Illinois, and appeals before the Court of Appeals for the 7th Circuit.
Education:
Loyola University of Chicago School of Law: JD, June 1989
Massachusetts Institute of Technology: BS in Chemical Engineering, June 1985
Relevant Bar Associations:
Hispanic Lawyers Association of Illinois – President, 2013-2014; Treasurer, 2008-2012;
Board Member, 2008-present.
Hispanic National Bar Association – Region IX Deputy, 2008-2009; Chair IP Section
2010-2011.
ERICA NAVAR
3505 N Whipple St. [phone]
Chicago, IL 60618 [email protected]

LICENSED TO Illinois (2007)
PRACTICE United States Patent and Trademark Office Registration # 61711 (2008)

PROFESSIONAL United States Patent and Trademark Office
EXPERIENCE Patent Examiner, Telecommunications, August 2010 to Present
 Review patent applications for compliance with legal requirements
 Research and evaluate claimed inventions with regards to prior art available
 Draft Office Actions regarding claimed inventions in all types of communications systems
in which electric or electromagnetic signals are used to transmit modulated carrier wave
information between points via radio wave, including radiotelephonic communication via
wireless link

Cardinal Intellectual Property Evanston, IL
Project Manager / Business Development Manager, July 2008 to July 2010
 Provided proposals to corporate and law firm clients and managed large-scale projects
 Managed business development, sales, and electrical engineering search teams
 Reviewed patents (including file histories, prior art, and assignments) and invention
disclosures to provide keywords, classifications, and guidelines for searchers
 Searched software, communications, mechanical, electrical, and business method
technologies
 Created and reviewed non-disclosure agreements to and from clients

Cardinal Law Group Evanston, IL
Patent Attorney, Contractor, March 2009 to July 2010
 Drafted patent applications
 Counseled clients regarding intellectual property matters

Bell, Boyd & Lloyd – Chicago-Kent IP Patent Clinic Chicago, IL
Robert Barrett and Jason Engel, Supervising Attorneys, January 2007 to May 2007
 Drafted a patent application
 Performed patentability and trademark searches

Alcatel-Lucent Lisle, IL
Tier 3 Technical Support Engineer, March 2007 to July 2008
 Presented multi-million dollar solution to management and executive leadership teams
 Mentored and trained new engineers on messaging systems and processes
 Wrote and reviewed technical solutions available to customers with service contracts
 Gathered and provided feedback from engineering groups to executive leadership team
 Performed advanced troubleshooting for messaging applications and network interfaces

Tier 2 Technical Support Engineer, December 2000 to March 2007
 Verified and reported outage data affecting over 150 million subscribers
 Troubleshooting of messaging applications interfacing with telecommunications networks
 Received 100% positive feedback from customer surveys
 Drafted and published Lucent Alerts containing critical information for customers
 Hispanic Association of Lucent Technologies Leadership Program (07/04 to 07/05)

Ameritech Chicago, IL
Intern, Network Engineering Group, Summer 1999
 Developed standardized documents for installation of telecommunications equipment
 Measured and tested backup power units to ensure optimal performance
Panasonic Factory Automation (PFA) Franklin Park, IL
Cooperative Education Student, CIM Support Group, June 1998 to December 1998
 Developed procedures / documentation for Year 2000 testing of Panasert machines
 Provided support for various models of Panasert machines and PanaPRO software

EDUCATION Chicago-Kent College of Law Chicago, IL
J.D., Intellectual Property Certificate Program, May 2007
 Evening Division / Chicago-Kent Scholarship
 Hispanic-Latino Law Student Association

Northwestern University Evanston, IL
B.S., Electrical Engineering, December 2000
 Sigma Lambda Gamma National Sorority, Inc. – Founding Member
 Society of Hispanic Professional Engineers (SHPE) – Various positions
 Kellogg Information Systems – Student Work Study Program
 Biomedical Engineering Graduate Department – Student Work Study Program

SPECIAL SKILLS Spanish – Native fluency (written and verbal)
Proficiency in Windows OS, Microsoft Office, UNIX, Solaris, and various SUN systems
Knowledge of DNS, VOIP, LDAP, SIP, TCP/IP, SS7, SMDI, X.25, and SMPP
Knowledge of networking, wireless communications, computer hardware, and software

ORGANIZATIONS American Intellectual Property Law Association, Member
Intellectual Property Law Association of Chicago, Member
Association House of Chicago, Auxiliary Board Member
The Learning Center, Board Member
Jennifer Trusso Salinas | Troutman Sanders LLP http://www.troutmansanders.com/jennifer_trusso/
Jennifer Trusso Salinas Education
Loyola Law School,
Partner Los Angeles, J.D.,
cum laude, 1998
Orange County Order of the Coif
Business Phone: [phone]; Mobile: [phone]
San Diego State
Business Fax: [phone]
University, B.A.,
1995
[email protected]
vCard Bar Admissions
California
Jennifer Trusso Salinas is a litigator who focuses her
Related Practices District of
practice on intellectual property litigation as well as
Columbia
Intellectual Property
strategic counseling on patent, trademark, trade secret
Life Sciences and copyright matters. Jennifer has lead counsel and trial
Intellectual Property experience for a number of large patent and trademark
Patent Litigation infringement matters and is particularly skilled in
Trademark, Copyright managing large client teams. She has extensive
and Unfair experience in patent infringement litigation involving
Competition medical devices, pharmaceuticals, nutraceuticals,
computer hardware and software, electrical and
mechanical technologies, and semiconductor
manufacturing equipment. Jennifer has a track record of
successfully resolving cases on summary judgment. She
has appeared in federal courts around the country,
including the Eastern District of Texas, Delaware District
Court, and all District Courts in California. In addition,
Jennifer has litigated patent licensing disputes before the
ICC. Jennifer has argued before the Federal Circuit, 9th
Circuit and California Court of Appeals.
Representative Matters
Represented medical device company in a patent
infringement action involving spinal implants. The
case settled favorably.
Currently representing biotech company in patent
licensing dispute in the Central District of California
and the ICC (Zurich, Switzerland) involving DNA
probes.
Currently representing large computer technology
company in patent licensing dispute in the District of
Delaware.
Currently representing large computer technology
company in patent licensing dispute in the Eastern
District of Texas.
Represented defendant high end digital printing
manufacturing company in patent infringement action
in the Middle District of Florida concerning variable
data printing technology. Case settled on favorable
terms to the client.
1 of 3 8/30/2016 10:22 AM
Jennifer Trusso Salinas | Troutman Sanders LLP http://www.troutmansanders.com/jennifer_trusso/
Represented large computer technology company in
multi-district DRAM and flash memory patent
infringement and anti-trust cases.
Represented plaintiff software company in patent
infringement case in Central District of California and
Southern District of New York concerning its debt
collection software. Case settled on favorable terms to
client.
Represented defendant health care information
technology company in patent infringement case in
Eastern District of Texas concerning Picture Archive
Communication Systems (PACS) brought by well
known patent troll. Case settled on favorable terms to
the client.
Represented defendant software company in copyright
infringement case in Central District of California
concerning website design software. Plaintiff
dismissed case after mediation.
Prevailed on behalf of generic pharmaceutical
company in a Hatch-Waxman Paragraph IV patent
infringement case involving a low molecular weight
heparin. Won at trial and on appeal based on a finding
that the patent was unenforceable due to inequitable
conduct.
Represented plaintiff nutraceutical company in a
patent infringement action against a competitor
involving nutritional supplements for joint pain. The
case settled favorably.
Represented medical device manufacturer in a patent
infringement action involving surgical robots. The case
settled favorably after obtaining summary judgment
in favor of client.
Represented wireless technology company in
misappropriation of trade secrets dispute involving
wireless location technology. The competitor had
illegally filed a patent application on technology
developed by the client. The case settled favorably,
which included competitor assigning the patent
application and additional technology to the client.
Represented large semiconductor company in
business, licensing and general intellectual property
Represented patent owner in computer-aided
manufacturing patent infringement litigation. Case
settled favorably after Court construed claims in
accordance with patent owner's proposed
constructions.
Represented client in patent cross-actions involving
remote computer access technology. The case settled
favorably.
Represented public wireless telecommunications
infrastructure company in business and general
intellectual property disputes. Full victory after
contested arbitration.
Prevailed on behalf of a maker of semiconductor
manufacturing equipment in a patent infringement
case involving pattern recognition and alignment
systems. Won summary judgment holding the patent
invalid based on anticipation and obviousness.
Affirmed by the Federal Circuit.
2 of 3 8/30/2016 10:22 AM
Jennifer Trusso Salinas | Troutman Sanders LLP http://www.troutmansanders.com/jennifer_trusso/
Represented sunglass company in patent infringement
action involving lens shape and manufacturing
technology. The case settled after several favorable
rulings for our client.
Represented sunglass company in a patent
infringement action involving polarized
polyurethane-based lenses. The case settled
favorably.
Represented sunglass company in patent infringement
litigation involving Bluetooth technology in sunglass
frames. The case is currently on appeal.
Represented defendant sunglass company in patent
infringement action in Southern District of Florida
concerning magnetic clip-on eyewear. The Court
granted summary judgment in favor of client.
Represented large manufacturing company in patent
infringement litigation involving automotive fluid
replacement devices.
Represented defendant in a trademark infringement
case involving ink jet refill cartridges. The court
granted summary judgment of noninfringement.
Presentations and Speaking Engagements
Speaker, "Which Inventions Are Still Protected?
Intellectual Property Protection Following the Supreme
Court's Most Recent Decisions," Hispanic National Bar
Association, March 19, 2015
Panelist, "Impact of the America Invents Act ("AIA")
Patent Reform Measure," Hispanic National Bar
Association, August 22-26, 2012
Panelist, "Defending Against Patent Assertions from a
NPE (Non-Practicing Entity)," Annual HNBA (Hispanic
National Bar Association) Convention, September 9,
2010
Panelist, Ernst & Young Holiday Professional Women's
Network Event, December 11, 2008
Professional and Community Involvement
Member, Markey Intellectual Property Inn of Court
Member, Latina Lawyers Bar Association
Member, State Bar of California
Member, Orange County Bar Association
Executive Committee and Member, Hispanic National
Bar Association
Board of Directors, Federal Bar Association, Orange
County Division
Member, National Latina Business Women Association
of Orange County
Member, Women Attorneys Leadership Council
Member, Charter 100
3 of 3 8/30/2016 10:22 AM
Page 1 / 5