IP Talk with Wolf Greenfield

Bryan Conley is a shareholder and experienced litigator at Wolf Greenfield who focuses his practice on intellectual property matters at the agency, trial, and appellate levels. He regularly represents high profile technology clients at trial concerning their most challenging patent matters.One area of intense interest lately has been Section 337 investigations. These investigations into unfair import practices are conducted by the US International Trade Commission and most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods. In this episode of IP Talk with Wolf Greenfield, Bryan offers a detailed look at Section 337. Here are some of the highlights.00:56 - Bryan provides an overview of Section 337 investigations02:41 - Factors driving the increase in questions related to public interest 05:27 - Examples of public interest factors that the Commission considers06:28 - The role of the Administrative Law Judge (ALJ)07:38 - Bryan explains why the ITC is more willing to delegate public interest fact finding to the ALJ when standard essential patents (SEPs) are involved 08:52 - Why it’s critical for private parties to create a public interest record and what should be included in that record10:32 - Recent impactful public interest Section 337 cases12:39 - It’s important for respondents to act quickly to highlight the significance of public interest factors after a complaint is filed13:57 - The top four statutory factors that are important when developing a public interest strategy and related arguments15:23 - Bryan describes “tailoring” 16:31 - Final suggestions on preparing for and dealing with public interest Section 337 issues

We’re pleased to feature Eric Amundsen in this episode of Wolf Greenfield’s Alumni Spotlight series. Eric was previously a shareholder in Wolf Greenfield’s Mechanical Technologies Practice. He worked at the firm for over 22 years. Today, Eric serves as a senior energy transition consultant at Geosyntec Consultants, where he focuses on energy transition, life cycle assessment, sustainability, and environmental policy. Eric assists organizations by addressing their energy transition and Environmental, Social, and Governance (ESG) goals. He helps identify, manage, and report on the opportunities and risks associated with the shift to a lower-carbon economy.Here are some highlights from Eric’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.00:46 - Eric describes his current responsibilities with Geosyntec01:52 - Progress being made in decarbonization02:56 - The joy of “figuring things out”03:44 - Making the transition from attorney to energy transition consultant04:14 - How Wolf Greenfield prepared Eric for his role at Geosyntec05:04 - What sets Wolf Greenfield apart from other law firms06:13 - Dream destinations07:05 - Favorite get-away spots 

Getting a new product to market is a time-consuming and difficult task that few achieve. Yet, the husband and wife team of Greg Besner and Leslie Hsu have done just that with their Sunflow brand of beach chairs and accessories. Greg is a serial entrepreneur and Leslie is a fashion designer. Their journey was filled with challenges, from idea conception through design to product launch - with a successful appearance on ABC’s Shark Tank along the way. In this episode of IP Talk with Wolf Greenfield, Greg and Leslie discuss their story with Neil Ferraro, chair of Wolf Greenfield’s Mechanical Technologies Practice, and Paul Metaxatos, co-founder and principal of Motiv, a Boston-based consultancy that designs products and develops brands for companies of all sizes. Here are a few of the highlights:01:43 - Leslie explains where the idea for Sunflow originated03:59 - Neil describes Greg and Leslie as problem solvers05:21 - Paul explains Visual Brand Language (VBL) as an important product differentiator06:20 - Greg on the features that make Sunflow unique08:55 - Executing with excellence 09:53 - The importance of developers, designers, and patent attorneys working as a team to develop and protect ownable aspects of a new product 11:30 - Making practical decisions along the way to ensure the iconic new product16:20 - Greg explains the value of having proper patent protection19:19 - The Shark Tank experience 21:03 - What’s ahead for Sunflow?25:19 - Paul believes Sunflow is taking a page from Tesla’s playbook27:20 - Neil stresses the importance of making sure innovations in the pipeline are patented before disclosure or release

Jas Lee is a shareholder in Wolf Greenfield’s Chemical & Materials Technologies practice. She works with clients on IP strategy development and execution. Jas particularly enjoys helping start-up companies identify their most valuable IP and best strategies to protect them. Additionally, Jas serves as chair of Wolf Greenfield’s Diversity Committee. And if this isn’t all enough, Jas is a competitive tri-athlete.In this episode of IP Talk withWolf Greenfield, Jas discusses her work at Wolf Greenfield and her training as a triathlete for Team USA. Here are a few of the highlights:00:51 - Jas Lee’s current responsibilities and focus areas02:05 - Jas loves working with start-ups02:39 - Achievements of Wolf Greenfield’s diversity committee 03:54 - Getting involved in triathloning 06:38 - Jas was a member of Team USA for the 2023 World Triathlon Sprint & Relay World Championships in Germany08:37 - Making the transition from weekend triathlete to competing with Team USA09:36 - The competitions ahead10:10 - Balancing training and competition schedules with work and family responsibilities11:11 - How training helps clear the mind

Suresh Rav is an associate at Wolf Greenfield, focusing his practice on patent litigation. Before joining Wolf Greenfield full time, Suresh was a summer associate at the firm in 2020.Prior to law school, Suresh was a scientist at GMP Nutraceuticals, where he oversaw regulatory compliance for the manufacturing facility in accordance with FDA regulatory guidance.In this episode of IP Talk with Wolf Greenfield, Suresh discusses his time as a summer associate and his eventual return to Wolf Greenfield. Here are a few of the highlights:00:47 - Suresh’s current responsibilities and focus areas02:06 - The experience of being a summer associate at Wolf Greenfield in 2020, the “summer of COVID”03:31 - Working and bonding with other summer associates04:25 - How the summer associate program influenced Suresh’s decision to become an IP attorney05:48 - Prior to working at Wolf Greenfield, Suresh worked as a scientist08:32 - The factors that eventually brought Suresh back to Wolf Greenfield 09:40 - Some of the interesting projects and assignments that Suresh has worked on recently10:41 - A few surprises along the way11:32 - Suresh’s work with new summer associates 

Scott McKeown recently joined Wolf Greenfield’s Washington, DC office as a shareholder in the Post-Grant Proceedings Practice.  Scott focuses his practice on high-stakes matters before the US Patent Trial & Appeal Board, Court of Appeals for the Federal Circuit, and related patent litigation matters. He is recognized as one of the top PTAB trial attorneys in the US, having handled more than 400 PTAB matters since 2012, including those in which more than $500 million was at stake. In addition to his client work, Scott is a prolific blogger and publishes the award-winning PatentsPostGrant.com, where he shares his insight on PTAB matters, patent litigation, patent reissues, patent reexamination, proposed litigation, patent policy issues, and patent prosecution tidbits. He also teaches the course on post-grant patent practice at George Washington Law School in Washington, DC.Scott is also a frequent speaker and author on various intellectual property topics and has been recognized by leading legal publications, including Chambers USA, The Legal 500, Best Lawyers, IAM, and Managing IP.In this edition of IP Talk with Wolf Greenfield, Scott shares his path from wanting to be a VCR repairman to becoming an attorney, details his practice, and explains what attracted him to Wolf Greenfield.01:09 - What led Scott to focus on post-grant patent issues03:48 - Details on Scott’s practice and what led to his success06:14 - Scott’s non-linear path to the law08:27 - The decision to join Wolf Greenfield10:47 - What Scott’s looking forward to in his role12:22 - What readers can expect from Scott’s blog13:52 - Hot topics and news items Scott is following

We’re pleased to feature Justin Colannino in this episode of Wolf Greenfield’s Alumni Spotlight series. Justin was an associate in Wolf Greenfield’s Litigation Practice from 2014-2017. He also worked closely with the firm’s Electrical & Computer Technologies Practice. Today, Justin serves as Assistant General Counsel for Open Source, Standards and Open ML at Microsoft. He runs a team that oversees legal processes to enable open source engagement at massive scale.Here are some highlights from Justin’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.00:51 - Justin’s current role at Microsoft03:41 - Open source’s impact on artificial intelligence (AI) and machine learning (ML) 05:28 - These are the early days of AI and ML06:06 - What it was like going from Wolf Greenfield to becoming an in-house counsel08:45 - Solving legal problems, managing risk, and keeping a focus on what is in Microsoft’s best interest09:35 - What Justin enjoys most about his current position12:20 – What experiences at Wolf Greenfield prepared Justin for his current role at Microsoft14:12 - Justin’s favorite Wolf Greenfield memory15:08 - A book recommendation from Justin16:55 - Justin’s favorite place to unwind

Aya Cieslak-Tochigi is an associate in Wolf Greenfield’s New York office. She focuses her practice on all aspects of trademark and copyright law and works closely with a range of clients, from start-up businesses to multinational corporations. Aya has extensive experience representing various clients over the years in the apparel/footwear and luxury goods industries for trademark and copyright matters. Most recently, she was part of the Thom Browne trial team that successfully defended trademark infringement and dilution claims against Adidas. In this episode of IP Talk with Wolf Greenfield, Aya discusses the international component to her practice and her legal work focused on the fashion and apparel industry. Here are some of the highlights:00:48 - Aya’s work at Wolf Greenfield02:28 - There’s a strong international aspect to Aya’s practice03:21 - Some of the key differences in the US trial system and the way IP law works compared to other countries05:14 - How Aya became so involved in fashion and apparel06:51 - Key lessons learned during the Thom Browne trial08:58 - An overview of the “Rogers test” and the role it played in the Hermès v. Rothschild case13:03 - How digital fashion content may potentially impact trademark and copyright issues15:23 - Aya’s work mentoring students at the Fashion Institute of Technology (FIT)

Jeffrey Hsi is a shareholder in Wolf Greenfield’s pharmaceutical practice. As a scientist, inventor, entrepreneur, and counselor, Jeff has experience from all of these perspectives. His law practice includes corporate counseling, formation and execution of intellectual property strategy, and patent prosecution and opinion work in a variety of areas. Jeff previously served as Corporate Counsel at Amgen. Co-inventor on two US Patents and co-author of numerous scientific publications and presentations, Jeff is an invited speaker internationally on various IP issues and has lectured at the Harvard Extension School and MIT’s Sloan School of Management. In addition to his practice at Wolf Greenfield, Jeff is a champion for social justice issues. He currently serves on the Board of Directors of Asian Americans Advancing Justice - AAJC in Washington, DC, where he serves on the Executive Committee and chairs the Policy and Programs Committee.In this episode of IP Talk with Wolf Greenfield, Jeff talks about his legal career and his outside work on a variety of social justice issues. Here are some of the highlights:01:38 - Jeff’s current role at Wolf Greenfield03:28 - The impact of studying in Germany04:46 - What drew Jeff toward a legal career06:13 - The differences between being an in-house corporate counsel and working at a firm like Wolf Greenfield07:51 - Jeff’s work with Asian Americans Advancing Justice - AAJC12:25 - Some of the social justice issues Jeff is working on today15:10 - Wolf Greenfield as a good community partner

We’re pleased to feature Renée Fuller in this episode of Wolf Greenfield’s Alumni Spotlight series. Renée started at Wolf Greenfield as a technology specialist in 2012 and left as an associate in 2019. She was part of the firm’s Chemical & Materials Technologies Practice.  Today, Renée serves as Senior Counsel at Bristol Myers Squibb. Bristol Myers Squibb is a global biopharmaceutical company whose mission is to discover, develop, and deliver innovative medicines that help patients prevail over serious diseases. Here are some highlights from Renée’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield. 00:51 - An overview of Renée’s current role at Bristol Myers Squibb  02:07 - Renée’s passion for innovation 03:02 - Making the transition from working at a law firm to becoming in-house counsel 04:26 - How Renée’s role at Wolf Greenfield prepared her for her current role 05:16 - What sets Wolf Greenfield apart from other law firms 06: 34 - What advice Renée would give to her 20-year-old self 07:13 - Renée’s dream destination for a leisure trip

Zachary Piccolomini is a shareholder in the Electrical & Computer Technologies Practice at Wolf Greenfield. He counsels clients in a wide variety of intellectual property matters, including patent and trademark portfolio development, IP due diligence, post-grant proceedings, IP litigation, and related issues.Before joining Wolf Greenfield, Zach served as Counsel in the intellectual property group at an Am Law 50 law firm. He came to Wolf Greenfield as a lateral attorney in 2017. In this episode of IP Talk with Wolf Greenfield, Zach discusses his move to Wolf Greenfield, the firm’s many strengths and gives an overview of important industry trends. Here are some of the highlights: 00:52 - Zach’s focus at Wolf Greenfield 01:50 - Factors that brought Zach to Wolf Greenfield 03:51 - Wolf Greenfield’s close and inclusive culture  04:54 - Professional and personal growth opportunities abound 06:20 - How Wolf Greenfield supports the practice of its attorneys 07:42 - What keeps Zach at Wolf Greenfield 08:56 - What Zach tells attorneys considering a career at Wolf Greenfield 10:24 - Hot 2023 topics include the potential impact of the EU’s Unified Patent Court, patentable subject matter, and protecting inventions utilizing artificial intelligence (AI). 12:01 - Gratitude for those that helped Zach in his legal career

Blaine Hackman focuses his Wolf Greenfield practice on post-grant proceedings before the US Patent and Trademark Office (USPTO), and related patent litigation, prosecution, and counseling. He regularly represents clients in inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB), with an emphasis on biotechnology and pharmaceutical technologies. In this episode of IP Talk with Wolf Greenfield, Blaine offers an overview of the firm’s post-grant practice. Here are some of the highlights: 00:49 - An overview of Wolf Greenfield’s post-grant practice. 03:12 - The difference between a jury trial and post-grant proceeding. 05:57 - For biotech and pharma companies, choosing the right path is a crucial choice.  07:51 - Changes for companies looking to claim newly discovered life science technologies or improvements to existing technologies. 08:55 - How to evaluate the likelihood of success prior to either a PTAB proceeding or jury trial. 11:04 - Recent changes to post-grant proceedings. 14:40 - The importance of expert testimony in PTAB proceedings and jury trials.16:32 - Life sciences companies often miss opportunities by overlooking the PTAB. 18:50 - Implications for future legal proceedings after going the post-grant route. 20:10 - Wolf Greenfield’s expanding post-grant practice in 2023.

Wolf Greenfield believes it has a professional obligation to use its specialized training and legal skills to help ensure equal access to the justice system for all. Accordingly, the firm's extensive pro bono program extends far beyond representing clients in IP related cases. In recent years, Wolf Greenfield has successfully represented a range of clients, from immigration/asylum cases, to assisting sexual assault victims to aiding non-profit, charitable organizations with trademark disputes. Chelsea Loughran is a shareholder at Wolf Greenfield. In addition to her work as a trial attorney and post-grant practitioner, she maintains an ongoing docket of pro bono cases and is deeply involved in Wolf Greenfield’s pro bono program. In this episode of IP Talk with Wolf Greenfield, Chelsea provides an overview of the pro bono program and offers some examples of recent work. Here are some of the highlights: 00:44 – Overview of Wolf Greenfield’s pro bono program 02:41 – Why pro bono work is so meaningful 04:50 – Examples of Wolf Greenfield’s pro bono work 06:56 – Everyone at Wolf Greenfield is welcome to help out with pro bono cases 07:46 – The Wolf Greenfield Affinity Group 08:47 – The annual Associates Drive on behalf of Greater Boston Legal Services  10:45 – Wolf Greenfield’s relationships with outside organizations 12:44 – Pro bono work is a critical part of Wolf Greenfield’s culture

We’re pleased to feature Stephanie Stella in this episode of Wolf Greenfield’s Alumni Spotlight series. Stephanie was an associate in Wolf Greenfield’s Trademark & Copyright Practice from 2015-2019.  Stephanie now serves as Principal Corporate Trademark Counsel, Global Brand and Strategic Partnerships supporting the Xbox and Game Studios division of Microsoft. Microsoft is a global tech giant and the world’s second largest gaming company. Here are some highlights from Stephanie Stella’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield. 00:48 - Stephanie’s current responsibilities with Xbox and Microsoft02:21 - The difference between a law firm attorney and working in-house for Microsoft04:11 - How Wolf Greenfield prepared Stephanie for her current position06:10 - The exceptional atmosphere and culture at Wolf Greenfield07:43 - Advice Stephanie would give to her 20-year-old self08:38 - Preferred travel destination10:18 - Favorite TV show 

Alexandra Kim is an associate at Wolf Greenfield, focusing her practice on patent litigation. She combines her legal skills with her deep scientific background to help Wolf Greenfield clients achieve their goals. Before joining Wolf Greenfield full time, Alex was a summer associate at the firm. In this episode of IP Talk with Wolf Greenfield, Alex discusses her time as a summer associate, her work in public health, and her return to Wolf Greenfield.  Here are a few of the highlights: 00:42 – Alex’s current role at Wolf Greenfield 02:44 – Working at Wolf Greenfield as a summer associate 04:28 – The impact of the summer associate experience on Alex’s decision to pursue a career in law 05:36 – Alex’s lifelong interest in biomedical sciences and public health 06:50 – Working with other “happy nerds” 08:51 – Learning something new every day 09:47 – Starting at Wolf Greenfield in the midst of Covid 10:40 – The pleasure of mentoring new summer associates