PROFILE
Intellectual property experience, including domestic and foreign patent prosecution of applications in the mechanical, chemical and biotechnology arts. Trademark prosecution and monitoring for opposition or cancellation.
Complex litigation experience, including pharmaceutical patent infringement litigation, managing patent issues in a civil RICO jury trial, shareholders' derivative claims involving nuclear power plants, Exxon Valdez class action, and government software contract claims arbitration.
EDUCATION
B.A. in Biology, 1973, Lehigh University, Bethlehem, Pennsylvania
J.D., 1978, The Dickinson School of Law, Carlisle, Pennsylvania
BAR ADMISSIONS
Patent Agent, Reg. No. 38,316, U.S. Patent and Trademark Office
REFERENCES
Jane Weir, IP Specialist
Millen, White, Zelano & Branigan, P.C.
2200 Clarendon Boulevard #1400
Arlington, VA 22201-3331
301-467-8194, pct.togo@comcast.net
Carolyn V. Lewis, CLM
Kramer Amado P.C.
1725 Duke Street #240
Alexandria, VA 22314-3472
703-519-9801, CLewis@krameramado.com
Allen H. Fried, Ph.D.
Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd.
1635 Market Street #1200
Philadelphia, PA 19103-2212
215-567-2010 x178, AHFried@crbcp.com
Donald B. Lewis
Attorney at Law
5 Cynwyd Road
Bala Cynwyd, PA 19004-3306
610-668-0331, MorrisLewisLaw@aol.com
PROFESSIONAL EXPERIENCE
LITMAN LAW OFFICES, Arlington, VA, July to November 2008. Registered Patent Agent with a national IP practice focused on small entities and independent inventors. Direct hire by Richard Litman, President. Seeking work since reduction-in-force.
DUANE MORRIS, Washington, DC, June to July 2007 through Robert Half Legal, Ronald Allen, Account Executive; and November to December 2007 as independent contractor. Temporary IP paralegal for mostly domestic and some foreign patent prosecution, including electronic filing of utility applications, responses to Office Actions, Information Disclosure Statements (IDSs), assignments, issuance and post-issuance matters. Carolyn Lewis, Office Manager and Mark Comtois, shareholder.
DICKINSON WRIGHT, Washington, DC, February to April 2007 through Robert Half Legal, Ronald Allen, Account Executive. Temporary foreign trademark and domain name paralegal dealing with foreign associate forms for acquisition and maintenance of worldwide portfolio of marks. Updated database of domain names. Nicole Meyer, shareholder.
KENYON & KENYON, Washington, DC, September 2006 to January 2007 through Robert Half Legal, Ronnie Huggins, Account Executive; Josephine Hardy, Paralegal Supervisor. Temporary patent prosecution paralegal. Organized intake of new client portfolios, assisted in technology transfers, prepared Information Disclosure Statements for worldwide patent families in biotechnology applications. Gary Morris, Partner, now at Townsend, and Teresa Lavenue.
[Period from December 2004 through August 2006 spent caring for parents during final illnesses in Pennsylvania and acting as Executor of their estate.]
HUNTON & WILLIAMS, Washington, DC, October and November 2004 through Klein Landau & Romm, Kelly Fratino, Account Executive. Document review for client in response to a grand jury investigation. Christina Benson, Partner.
SIDLEY AUSTIN BROWN & WOOD, Washington, DC, and June to July 2004 through Hudson Global resources, Yvonne Ruhland, Placement Specialist. Contract attorney in Avandia® pharmaceutical Hatch-Waxman patent litigation reviewing and analyzing documents. Paul Hemmersbaugh, Partner.
CLEARY GOTTLIEB STEEN & HAMILTON, Washington, DC, April to June 2004 through LawCorps, Alexandra Billeb, Account Executive. Temporary contract attorney in antitrust cases involving Air Liquide/Messer and Oracle/PeopleSoft reviewing and analyzing documents in a Hart-Scott-Rodino second request review with one of the largest temporary attorney teams ever assembled by the firm. Sean Corey, Associate.
WILLIAMS & CONNOLLY, August to November 2003 through LawCorps, Anette Andersson, Account Executive. Contract attorney in Viagra® pharmaceutical patent litigation reviewing and analyzing documents. Bruce Genderson, Partner.
DUANE MORRIS, Philadelphia, PA, December 1999 to March 2000 through Interim Personnel, Stacy Beck, Account Executive. Temporary IP paralegal. Sent reminders and prepared documents for payment of maintenance fees and annuities in domestic and foreign patent practice. Drafted U.S. trademark applications and renewals. Maintained files and assured accuracy of docketing data. Performed online trademark searches for word and graphic marks. Lewis Gould and William Murray, Partners and Co-chairs of Intellectual Property.
PATENT ATTORNEY and Contract Counsel, Philadelphia and Bryn Mawr, PA, 1997-2002. Patent counseling, prosecution and licensing for independent inventors. Consultation as contract counsel on nuclear power plant derivative cases and Prudential Life sales practices settlement, class actions and complex commercial litigation. Referrals of Internet and trade secret cases.
GREENFIELD & RIFKIN LLP and RIFKIN & ASSOCIATES LLC, Ardmore and Paoli, PA, November 1995 to March 1996, and February to April 1999. Contract attorney in derivative action against PSEG Group arising from management of poor performance of Salem and Hope Creek nuclear power plants. Mark Rifkin is at Wolf Haldenstein in NYC.
STUART E. BECK, P.C., Philadelphia, PA, June to October 1997. Part-time patent associate position with a sole practitioner conducting domestic patent and trademark prosecution, and managing foreign patent firms for a telecommunications client. Monitored clients' marks for potential oppositions or cancellations. Drafted patentability and registrability opinions. Supervised foreign patent counsel in international prosecution of patents for U.S. clients. Prepared drafts of utility patent applications for mechanical inventions. Reviewed Official Gazette weekly publication of marks against list of clients' marks and identify any likelihood of confusion for opposition or cancellation; prepared notices of opposition and related papers. Drafted cease and desist letters to alleged patent infringers.
ALLAN H. FRIED & ASSOCIATES, Philadelphia, April 1996 to May 1997. Patent Associate for by a Ph.D. molecular biophysicist patent attorney in all phases of domestic and foreign patent prosecution concentrated in biotechnology, with some trademark practice. Responsible for docket control as well as a full range of administrative functions in a practice serving a major medical school and small biotechnology companies. Assisted in drafting U.S. biochemical patent applications in compliance with CFR and MPEP. Drafted provisional mechanical patent applications. Constructed sequence listings for DNA and protein inventions. Compiled Information Disclosure Statements (IDSs). Maintained docketing system and sent reminders.
SOLE PRACTITIONER, Philadelphia, PA, 1993-1997. Admission to Patent and Trademark Office in 1994, study of intellectual property law and representation of independent inventors. Consultation on derivative actions arising from poorly performing nuclear power plants. Arbitration of military contract claims in software development for centrifugal flight trainer, and preparation of claims against the government. Enforcement of noncompetition agreement for multimedia computer video consultant.
THE FREE LIBRARY OF PHILADELPHIA, Patent and Trademark Depository volunteer, 1994 to 1996. Assisted patrons with patent and trademark search techniques, using printed and microform reference materials as well as online and CD-based databases. Assisted Patent Librarian with IP seminar programs for public.
GREENFIELD & CHIMICLES, Haverford, PA, Associate, 1989 to 1992. Wide variety of national securities, consumer and environmental litigation. Specialized in derivative claims involving construction and operation of nuclear power plants. Managed and analyzed large documentary records to prepare partners and second-chair depositions. Selected and worked with engineering experts. Assisted with complaints, disputed discovery from NRC, trial preparation and settlement briefs. Significant cases: Exxon Valdez oil spill, Drexel Burnham Lambert bankruptcy, Perrier benzene contamination. E.F. Hutton check-kiting and collapse, Hanford Reservation class action, and nuclear power plants at Diablo Canyon, Peach Bottom, Comanche Peak and Nine Mile Point.
ROBERT G. WELCH, P.C., Philadelphia, PA, Associate, 1987 to 1989. Small commercial practice serving professionals and entrepreneurs. Concentrated on preparation and jury trial of a civil racketeering claim over development of municipal waste disposal technology by coordinating with patent counsel, deposing opponent's patent counsel and working with patent and valuation experts. Conducted commercial litigation associated with acquisition, redevelopment, syndication and management of historic real estate tax shelters, including successfully settled lender liability counterclaim.
EXEMPLARS OF MY WORK. Patents I have personally written are at www.uspto.gov, numbers 5,673,643 (Poppa) and 6,108,911 (Hoch). My work as a newsletter editor for the Philadelphia Intellectual Property Law Association (PIPLA) is online at www.pipla.org under the News button.
TRIAL AND COMPLEX LITIGATION EXPERIENCE
1. Civil RICO summary jury trial and jury trial, 1 day and 2 weeks, early 1988, U.S.D.C. E.D. Pa. in Philadelphia before Judge Norma Shapiro. As in-house counsel for Kem-Solv, an environmental technology venture, coordinated litigation against technical consultants and investment banker D.H. Blair. Retained trial counsel Alexander Kerr, maintained liaison with outside counsel who filed case Thomas McBride, hired and worked with patent expert Lewis Gould, deposed opposing patent counsel, analyzed documents and constructed chronology, drafted motions in limine, prepared direct exam of opposing patent expert, and continued role through appeal to Third Circuit.
2. Shareholders' derivative action against directors and officers of Philadelphia Electric Company (PECo), arising from NRC shutdown of Peach Bottom nuclear plant, settled while preparing for bench trial in Philadelphia Common Pleas, 1990-91. As associate at Greenfield & Chimicles, a member of the plaintiffs' executive committee with Berger & Montague and Donald Lewis, participated in extensive document review and analysis, selected and managed exhibits for aggressive program of second-chaired depositions by committee, and worked on trial brief as parties tried unsuccessfully to settle this and other related cases, ultimately resolved after intensive alternative dispute resolution intervention of retired federal judge with executives of PECo and PSE&G.
3. Exxon Valdez class actions for plaintiffs against Exxon, Exxon Shipping and Alyeska Corporation, before Judge Holland, U.S.D.C. D. Alaska, 1991-92. As associate and contractor for Greenfield & Chimicles, spent a year and a half attending virtually all document productions in Anchorage, Houston, Washington and elsewhere, then assisted lead counsel Dickstein Shapiro on second and subsequent document reviews, and worked with trial counsel Brian O'Neill.
4. Shareholders' derivative action against directors and officers of PSEG, arising from poor performance of Salem and Hope Creek nuclear plants, 1995-99, New Jersey Superior Court. Worked on complaint, discovery, depositions and summary judgment motion with Richard Greenfield, Don Lewis and Mark Rifkin, but case was never tried after court granted summary judgment for PSEG. Since my first project with Greenfield in 1989 on the Diablo Canyon nuclear plant, I have developed specialized knowledge of nuclear power.
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