Directors and Officers
President Teresa Stanek Rea (Rea Consulting LLC)
The America Invents Act may have taken at least seven years to come to fruition but it was worth the wait. The success of the AIA is best demonstrated by the popularity of the new trial proceedings before the PTAB. These new proceedings are now a mainstay of every litigators armamentarium. Their significance and value are appreciated by most practitioners in the United States but it is worthwhile to note that our international colleagues are immersed in the nuances of these proceedings as well. Many patent disputes can now be handled more efficiently, quickly and cost-effectively. We have the PTO to thank for getting everything up and running so quickly and for reaching out to our community as things progressed. The PTO remains flexible and continues to revise the rules as the need arises. That outreach is important and will be enhanced by the creation of our new bar association.
President-Elect Monica Grewal (WilmerHale)
As the founding director of the PTAB Bar Association representing WilmerHale, and a current co-chair of the Post Grant Proceedings Group at WilmerHale, post grant work is a cornerstone of my practice. Since the inception of the America Invents Act, post grant proceedings have become a key part of IP/IP Litigation strategy—the interplay between these proceedings and concurrent litigation in different venues has created an engaging, complex area of law. Since taking the Patent Bar Exam in 1995 while working on the first launch of the Space Shuttle to our International Space Station Mir, I marvel at how our Patent Office practice has become more vital for our clients while our presence in space exploration diminished for a duration. The USPTO practice provided a much needed platform as I transitioned to becoming a patent attorney from my engineering days. I sincerely enjoy being part of the PTAB Bar Association and providing a platform for discourse, collaboration and engagement within this community from the inception of our Association. Our Association has recently worked on providing Probono opportunities for our practitioners in collaboration with our PTAB Judges which speaks further to our sense and sensibilities as an Association and personally gratifying.
Vice President Li-Hsien (Lily) Rin-Laures (RinLaures LLC)
Treasurer Jon E. Wright (Sterne, Kessler, Goldstein & Fox PLLC)
Since its founding in 2016, the PTAB Bar Association has sought to promote and preserve the highest professional and ethical standards among lawyers and stakeholders who appear before the PTAB. And under its governing Charter, the Association is dedicated to helping secure the just, speedy, and inexpensive resolution of every PTAB proceeding. Those are worthy goals that I care deeply about as a practitioner who has represented clients in this important patent venue since its inception. It’s been fascinating to watch the PTAB evolve over past decade. But what has not changed is the Association’s commitment to fostering constructive dialogue between the bar community and the PTAB, and to helping junior practitioners thrive through education, collaboration, and advocacy under programs like our annual Bootcamp, and through the PTAB’s Legal Experience and Advancement Program (LEAP). For these reasons, I am honored to continue my service to the Association as Treasurer, and to represent Sterne Kessler Goldstein & Fox as one of the founding Association members.
Secretary Megan F. Raymond (Groombridge, Wu, Baughman & Stone LLP)
Non-Officer Board Members
Michael Babbitt (Willkie Farr & Gallagher LLP)
The PTAB Bar Association is the premier organization for thought leaders of the PTAB. We have done exciting work to help shape PTAB policy with the PTAB leadership, judges, practitioners, clients, and stakeholders. I have been involved for years in the PTAB Bar Association leadership, and I believe our annual conferences, comments on proposed rulemaking, amicus briefs, meetings, and publications have an important role in the PTAB community. My practice focuses on complex patent litigation, PTAB proceedings, and disputes involving electrical and mechanical technologies, and I hope to add to the diversity of thought on the PTAB Bar Association Board of Directors in the upcoming years.
Joshua Goldberg (Finnegan, Henderson, Farabow, Garrett & Dunner LLP)
PTAB practice has come a long way since the PTAB was created by the AIA. And so has the PTAB Bar Association. We have become the premier organization for dialogue between the bar community, the PTAB, and other stakeholders. I focus my practice almost exclusively on PTAB proceedings, and like many others, I enjoy the Association‘s programming and the opportunities it has provided me to meet, get to know, and work with others in the bar. I‘m proud to have been involved with the Association since the beginning and look forward to helping shape its future.
Eugene Goryunov (Haynes and Boone LLP)
The advent of AIA post grant proceedings—IPR and PGR—changed the IP litigation landscape dramatically. Almost instantly, these proceedings and PTAB practice generally became a part of every IP trial attorney’s playbook. The formation of the PTAB Bar Association was the natural next step because it works to create relationships between practitioners, encourage though leadership, and, as a result, foster a sense of comradery and decorum before the PTAB.
Deborah Herzfeld (McNeill Baur PLLC)
Patent procurement can be viewed as a negotiation between Applicant and the USPTO. When the negotiations reach a stalemate, PTAB plays an important role in the form of ex parte appeals. In fact, the majority of PTAB workload is dedicated to such ex parte appeals. The ultimate goal for my clients is not just to obtain a patent, but to obtain a patent with longevity, able to withstand post grant PTAB proceedings and beyond. The PTAB Bar Association provides invaluable access and input from a diverse group of practitioners and PTAB leadership which assists in securing successful patent procurements.
Scott Jarratt (Haynes and Boone LLP)
Practicing before the PTAB presents unique challenges and opportunities for attorneys who are passionate about both law and technology. Because the PTAB is still in its infancy (relatively speaking), the body of law guiding our practice is still forming and ever-shifting. The only constant is change! Each case presents an opportunity for a PTAB practitioner to dig into unexplored corners of patent and administrative law and break new ground. As someone who enjoys finding technological reasons why my opponent is legally wrong (and vice versa), I thoroughly enjoy representing clients before the PTAB. The PTAB Bar Association brings together practitioners like myself, but also stakeholders, judges, USPTO leadership, and policy makers. The Association creates an invaluable community that promotes the collaboration necessary to drive the PTAB practice forward in a positive way. I am honored to contribute to this mission as a member of the Board of Directors.
Lisa Nguyen (Allen & Overy LLP)
PTAB practice strips a patentability dispute to its core—to the rules, record, and roadmap. Proceedings require practitioners to have a nuanced understanding of the rules, a detailed knowledge of the record, and a compelling roadmap that navigates the Board through your arguments. The PTAB Bar Association has been an invaluable tool in mastering these issues, by providing a forum for practitioners, the industry, the PTAB, and other stakeholders to have constructive discussions on best practices, improving PTAB proceedings, and advancing innovation generally. I am proud to be an inaugural member of the Association and humbled to continue to build on what the Association has accomplished.
Jennifer O'Connell (Stanek, Lemon, Crouse & Meeks PA)
Ex parte appeals are an under-utilized tool in patent prosecution. The opportunity to have your application considered by three administrative patent judges, skilled in both the law and technology, should not be overlooked. Applicants can obtain claims they are entitled to with weak or improper rejections often being reversed. When an Examiner is affirmed, the PTAB Decisions may provide valuable feedback and guidance regarding the cited art and pending claims that aids in further prosecution. The PTAB Bar Association provides a collaborative environment for patent practitioners to discuss the nuances of ex parte appeals and practice before the PTAB. In addition, my membership in the PTAB Bar Association has been essential in keeping current with the ongoing changes occurring in post-grant practice.
Heather Petruzzi (WilmerHale LLP)
The PTAB Bar Association provides members with meaningful educational opportunities and resources, serving as a forum for discussing the unique issues and challenges facing us as practitioners. Through our collaboration with the PTO, we help our members stay informed of and connected to developments in our corner of the legal community. As an IP attorney with diverse experience representing life sciences and medical device clients before the Board both as petitioners and patent owners, I am excited and honored to contribute to the organization as a Director.
Thomas Rozylowicz (Fish & Richardson PC)
One of the keys to the success of the PTAB Bar Association has been the manner in which it embraces a collaborative and collegial spirit. It is an environment where diverse perspectives converge in creating a platform to committed to excellence. By participating in the PTAB Bar Association, you gain unparalleled opportunities to engage with the latest developments, learn from luminaries in the field, and actively contribute to shaping the trajectory of PTAB proceedings.
Deborah Yellin (Crowell & Moring LLP)
PTAB practice provides the best of both worlds between patent prosecution and litigation. Every PTAB judge has a technical background. Attorneys arguing before the board must have a thorough understanding of the technology involved in a patent as well as strong grasp of the case record. I began my career in patent prosecution and counseling, including ex parte appeals. Following the passage of the America Invents Act, I branched out into PTAB trials. I found this transition to be exhilarating, intellectually stimulating and fulfilling, and helped me provide further value to my prosecution clients. I highly encourage patent prosecutors to join the PTAB Bar Association, not only to enhance their prosecution and ex parte appeal practice, but to consider including PTAB trials in their practice as well.
Daniel Zeilberger (Paul Hastings LLP)
Practice before the Patent Trial and Appeal Board is unique in many ways. For one, the scope of the work can be broad, covering everything from appeals of examiner rejections in patent applications that may cover important innovations; to derivation proceedings where disputes about invention are resolved; to inter partes review and post grant review proceedings where patentability issues are considered. For another, the work can involve many unique and cutting-edge aspects of the law, including not just patent law—of which there are bountiful issues—but also various other issues touching on, for example, important aspects of administrative and constitutional law. And for yet another, the stakeholders are varied and can have many different interests and perspectives. The PTAB Bar Association thus serves an important role in helping to address, and foster conversations about, the many PTAB-related issues that arise every year. It is an honor to serve as a Director and help work towards the Association‘s goals.
Immediate Past President David Higer (Winstead PC)
W. Karl Renner (Fish & Richardson PC)
J. Steven Baughman (Groombridge, Wu, Baughman & Stone LLP)
Naveen Modi (Paul Hastings LLP)
Erika Arner (Finnegan, Henderson, Farabow, Garrett & Dunner LLP)
Bob Steinberg (Latham & Watkins LLP)
Law School Doesn't Teach How to Form A Bar Association, But with the Help and Collaboration of Over 45 Law Firms, We Figured It Out.
After litigating patent cases in district court for more than 25 years, a profound shift in my practice started in 2014 as I began to litigate proceedings at the PTAB. After a number of trial hearings, I noticed a few ways the process might be improved and wondered if others in the legal community had similar concerns and experiences. To my surprise, I couldn't find a directory of PTAB practitioners or any bar association dedicated to addressing issues related solely to the PTAB. Shouldn't there be one?
On February 19th, 2016, a kick-off conference call occurred with a handful of PTAB practitioners to explore whether they felt similarly. They did. Our first action was the creation of an organizational charter to provide a unified voice for all stakeholders to participate in the formation of a PTAB bar association. More than 45 law firms (and several companies) quickly signed on, and in less than seven months we launched the PTAB Bar Association.
I have been humbled by the level of commitment and effort by so many of the legal community to fulfill our mission of launching this association and making this bar association a success.