IP Talk with Wolf Greenfield

We're pleased to feature Trevor Day in this episode of Wolf Greenfield's Alumni Spotlight series. Trevor, who was with the firm for more than six years, was an associate in Wolf Greenfield's Mechanical Technologies Practice and also served as a Technology Specialist and a Patent Agent.Today, Trevor is Senior Counsel – Patents at YETI. Here are some highlights from Trevor's turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.00:52 - Trevor shares what his day-to-day activities at YETI look like01:45 - The impact Wolf Greenfield had on Trevor's career03:01 - Trevor's favorite Wolf Greenfield memory04:46 - How the people at Wolf Greenfield made his experience both enjoyable and beneficial05:25 - Trevor's dream vacation destination06:16 - What TV show is capturing his interest these days

Wolf Greenfield recently promoted four attorneys to the position of shareholder. Stuart Duncan Smith, Anant Saraswat, Jessica von Reyn, and Adam Wichman. The promoted attorneys' legal and technical know-how covers a range of practice and technology areas, including biotechnology, pharmaceutical, patent, litigation, and post-grant proceedings.In this episode of IP Talk with Wolf Greenfield, we'll introduce you to each of the new shareholders. Here are the highlights:01:13 - Stuart Duncan Smith, Litigation Practice 06:05 - Adam Wichman, Post-Grant Proceedings Practice 12:02 - Jessica von Reyn, Biotechnology Practice 18:50 - Anant Saraswat, Post-Grant Proceedings Practice

2025 promises to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you'll hear Wolf Greenfield attorneys from a variety of practice areas reviewing some of the top issues of 2024 and offering their insights on what to expect in the months ahead. Here are some of the highlights:01:02 - Chelsea Loughran's thoughts on The University of California v. Broad Institute, a federal court case involving competing patent applications for the CRISPR-Cas9 gene-editing system02:25 - Zach Piccolomini is watching the Unified Patent Court (UPC) for upcoming decisions in the standard essential patent space and “fair, reasonable and non-discriminatory” royalties03:34 - Jonathan Roses with insight on recent Orange Book developments and what to expect with the new administration  05:31 - Jen Wang offers advice for dealing with rejections in the wake of the Federal Circuit overturning a 40-year-old obviousness test for design patents in the LKQ v. GM case06:34 - Scott McKeown on noteworthy 2024 developments at the USPTO and some thoughts for what might happen in 2025 08:43 - John Strand on the Dewberry case, which was just argued before the Supreme Court (a decision is expected in the spring)10:23 - Gabe McCool discusses the BIO Secure Act  

Phil Hamzik is an Associate in Wolf Greenfield's Pharmaceutical practice. From protecting key platform technologies to advising on drug product life cycle management, Phil works closely with pharmaceutical and biotechnology companies to develop IP strategies aligned with their business goals. Phil also serves as the first Chair of Wolf Greenfield's LGBTQ+ Affinity Group. Additionally, he's on the Board of Directors of the Massachusetts LGBTQ Bar Association, working to connect and empower LGBTQ+ attorneys through networking, law student mentoring and scholarship, legislative advocacy, and more. Phil also served as Co-Chair of the Greater Boston Legal Services Associates Drive, helping raise record amounts for legal aid for low-income families. Phil has been recognized as a Leading IP Practitioner by World IP Review, and as one of World IP Review Diversity's Top 100 People in IP. In this episode of IP Talk with Wolf Greenfield, Phil discusses his work with pharma clients and his activities outside the office. Here are some of the highlights:01:25 - Phil's current responsibilities and focus areas at Wolf Greenfield02:00 - Notable topics and issues in 202402:52 - The differences in working on IP strategies for organizations of all sizes, from large pharmaceutical and biotechnology companies to startups03:47 - Phil elaborates on his various activities on behalf of the LGBTQ+ community04:48 - The importance of Wolf Greenfield's commitment to having firm members active in community issues 05:23 - Phil discusses Wolf Greenfield's fundraising for the annual Greater Boston Legal Services Associates Fund Drive06:11 - A look toward 2025###

Ryan MacDougall is the Chief Business Development Officer for Wolf Greenfield. Since joining the firm in 2010, he has worked closely with the firm's executive leadership, management, and practice groups to build and implement strategies that have made Wolf Greenfield one of the largest IP law firms in the US.Utilizing his in-depth knowledge of the intellectual property space, Ryan maintains a strong focus on client experience and satisfaction as he oversees the firm's Client Services Department, which comprises business development, marketing, and communications. In this episode of IP Talk with Wolf Greenfield, Ryan discusses milestones in his career and the many ways business development for the legal industry has changed in the past 15 years. Here are a few highlights of the conversation.01:00 - Ryan's career to becoming Wolf Greenfield's Chief Business Development Officer03:01 - The biggest changes for legal industry marketing and business development in recent years05:45 - Wolf Greenfield's approach to working with clients  06:55 - What sets Wolf Greenfield apart from competitors08:02 - Key moments that have influenced Ryan's career09:35 - A memorable piece of advice 10:28 - Experiences from business travel13:03 - Activities outside of work###

Dan Rudoy is a shareholder and executive committee member at Wolf Greenfield. As part of the Electrical & Computer Technologies Practice, Dan works closely with clients developing technology in a wide variety of areas including artificial intelligence, bioinformatics, electronics, genomics, machine learning, medical devices, and software. Many of these clients are developing technology at the intersection of life sciences and electrical and computer technology. One example is the application of machine learning to the analysis of genomic data.In this episode of IP Talk with Wolf Greenfield, Dan discusses the opportunities and challenges that patent holders face as they navigate these new and ever-changing technologies. Here are a few highlights of the conversation.01:06 - The questions clients have about AI and the challenges they are facing03:58 - New problems IP holders face using GenAI 06:59 - Impact of the quickly evolving AI landscape on a company's IP strategy08:32 -The biggest issues and challenges generated by the application of machine learning to the analysis of genomic data10:04 - How the use of open source software impacts IP strategy12:05 - AI's impact on trade secrets - both domestically and internationally14:55 - Guidance for clients as they move forward with executing a strong IP strategy reflecting the use of AI and machine learning###

Tonia Sayour is a patent, trademark, and copyright attorney in Wolf Greenfield's New York office. She has nearly two decades of experience counseling clients in all areas of intellectual property law. Tonia also frequently speaks at diversity and inclusion events.In this episode of IP Talk with Wolf Greenfield, Tonia discusses her legal career, current topics like AI, Supreme Court cases, and balancing the demands of a busy job with raising three children. Here are a few highlights of the conversation.01:02 - What led Tonia to a career in law05:09 - Describing her IP law career over the past two decades06:58 - The advantages of being a “jack-of-all legal trades”08:52 - The ways AI may impact the legal profession 10:46 - Tonia's involvement in a pair of Supreme Court cases13:57 - How Tonia's involvement in diversity and inclusion efforts have impacted her career16:08 - Juggling the demands of work and being a mother to three children19:07 - The advice Tonia would give her younger self ###

The Wolf Greenfield Summer Program gives aspiring attorneys a firsthand look at life inside of a thriving law firm. Participants are assigned to a specific Wolf Greenfield practice group, but they are also exposed to multiple practices to offer a 360-degree view of the firm's diverse services. This year's program featured nine associates and one technology specialist intern. Four of them are featured on this edition of IP Talk with Wolf Greenfield: Neha Krishna: a rising senior at the University of PennsylvaniaBen Nickerson: attends the Northeastern University School of LawKatie Schneider: attends the University of New Hampshire Franklin Pierce School of LawKatherine Wade: attends the Chicago-Kent Law School and is a Patent Paralegal in the Biotechnology practice groupHere are a few highlights of their conversation.01:10 - How the associates heard about Wolf Greenfield's Summer Program and what led each to apply03:12 - One of Neha's favorite projects this summer03:57 - Katie and Katherine discuss how the summer program has prepared them for what's next in their legal career05:28 - What surprised Ben this summer06:46 - Advice for those considering the summer program ###

Artificial intelligence has extraordinary potential, but it also presents a number of daunting challenges. One is the high energy consumption of the computer chips required to drive the programs. Lightmatter is developing unique photonic technologies that reconstruct how computer chips calculate and communicate, allowing data to move at much higher speeds than is possible today. The young company has raised over $420 million to date and is now valued at over $1.2B. Dr. Darius Bunandar is founder and chief scientist of Lightmatter. He and his team have worked closely with Wolf Greenfield in recent years to develop and execute a strategy to protect its intellectual property. Randy Pritzker co-chairs the Electrical & Computer Technologies Practice at Wolf Greenfield.In this edition of IP Talk with Wolf Greenfield, Darius and Randy discuss how AI and supercomputing may be transformed by Lightmatter's photonic technologies and how IP has assisted Lightmatter.01:31 - Darius provides background about Lightmatter and the company's most recent developments03:04 - Randy explains why IP is valuable to Lightmatter and gives an overview of the company's IP strategy06:57 - Darius and Randy discuss the teamwork that's necessary to develop and execute an effective IP strategy09:34 - Randy examines how the IP strategy has helped Lightmatter, both in the early years and how it has changed as the company has matured11:43 - Having just reached unicorn status with a $1.2 billion valuation, Lightmatter is excited about the future12:18 - Darius and Randy enjoy working with each other

Meaghan Luster focuses her practice at Wolf Greenfield on patent litigation. Meaghan's experience includes conducting pre-suit diligence, fact and expert discovery, claim construction, and motion practice in US district courts and the US International Trade Commission (ITC). Prior to joining Wolf Greenfield, Meaghan served as a judicial law clerk for Judge George O'Toole, Jr. of the US District Court for the District of Massachusetts.In this edition of IP Talk with Wolf Greenfield, Meaghan Luster discusses her first year working in patent litigation.00:49 - Highlights from Meaghan's first year at Wolf Greenfield01:26 - The most rewarding and challenging aspects of patent litigation02:18 - The advantages of working every day with top clients and new areas of technology and law02:49 - Meaghan's work spans a range of technologies from pharmaceuticals to medical devices to software03:25 - Communicating with jury members that are often not technical people05:18 - How time as a judicial law clerk prepared Meaghan for her current practice06:19 - Meaghan's involvement in diversity and inclusion initiatives07:27 - How Wolf Greenfield's commitment to diversity and inclusion is unique###

John Harmon is a shareholder in both the Mechanical and Chemical & Materials Technologies Practices at  Wolf Greenfield. He represents clients in industry and academia in a wide range of technologies related to the mechanical, materials, and chemistry fields. One area of particular interest these days is the evolving impact of artificial intelligence (AI) on intellectual property matters. The United States Patent and Trademark Office (USPTO) recently issued its “Inventorship Guidance for AI-Assisted Inventions.” This guidance is pursuant to President Biden's Executive Order last fall on the “safe, secure, and trustworthy development and use of AI.”In this edition of IP Talk with Wolf Greenfield, John Harmon offers perspective on these early days of AI application.01:06 - A summary of the latest guidance from the USPTO06:05 - An overview of the Thaler v. Vidal case06:53 - What further action might be taken in the future to address the President's concerns?09:01 - What constitutes an "invention" and how does AI muddy the waters?11:59 - File earlier rather than later12:52 - Simply applying AI to a problem doesn't constitute patentable subject matter14:29 - The issues that need to be considered when AI and robotics are used together16:13 - Suggestions for moving forward with AI###

Rob Sahr is a shareholder in Wolf Greenfield's Biotechnology Practice. He develops strategies for life science companies to maximize exclusivity for therapeutic and diagnostic products. Rob has also assisted federal grant recipients and contractors with Bayh-Dole compliance.Originally passed at the end of 1980, the Bayh–Dole Act permits ownership by contractors of inventions arising from federal government-funded research. In recent months, the Biden Administration has seemed intent on more aggressively exercising “march-in rights” under the Act to promote affordability of taxpayer-funded inventions.In this edition of IP Talk with Wolf Greenfield, Rob provides insight on recent developments regarding Bayh-Dole compliance. Here are the highlights.00:59 - On the contentiousness of Bayh-Dole03:06 - What is a subject invention and why are they the source of so much confusion?04:59 - Defining “march-in rights” and how are they different from “taking title” 06:16 - The four requirements of march-in rights 07:04 - Explaining “timely disclosure” and its importance08:34 - Implications of the recent University of South Florida case10:28 - Enforcing the requirements around utilization reports and how the Presidential election might factor into the equation###

Scott McKeown is a shareholder in Wolf Greenfield's Post-Grant Proceedings Practice. Based in the firm's Washington, DC office, 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. Recognized as one of the top PTAB trial attorneys in the US, Scott is also a frequent speaker and author on various intellectual property topics and his award-winning blog can be followed at PatentsPostGrant.com.In this edition of IP Talk with Wolf Greenfield, Scott offers his insight on some of the biggest PTAB developments over the past year and things to watch in 2024. Here are the highlights.01:07 - Scott gives an overview of 2023 PTAB changes and explains how they have changed the practice03:32 - PTAB developments that Scott is monitoring this year05:41 - Scott offers some helpful tips for in-house counsel in light of the Federal Circuit's In re Cellect ruling 07:31 - Exciting times ahead for Wolf Greenfield's Washington, DC office###

We're pleased to feature May Rohrbach in this episode of Wolf Greenfield's Alumni Spotlight series. May was previously a patent agent in Wolf Greenfield's Electrical & Computer Technologies Practice. She was also part of the firm's technology specialist intern program. Now, May serves as a QA Engineer II at Blink, an Amazon Company. Blink delivers affordable, innovative, and easy-to-use smart home security devices.Here are some highlights from May's turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.00:47 - An overview of May's current responsibilities01:45 - How May's current position differs from being at a law firm03:03 - May's role at Wolf Greenfield prepared her for her current position at Blink04:08 - Her favorite Wolf Greenfield memories05:11 - May's favorite book05:57 - Dream destination

2024 is upon us and it's going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you'll hear Wolf Greenfield attorneys from a variety of practice areas offering their insights on what to expect in the months ahead. Here are some of the highlights.01:06 - Jeff Hsi commented on the impact the Amgen v. Sanofi decision may have on the biotech and pharmaceutical industries in 2024. 01:59 - Jonathan Roses with thoughts on the In re Cellect case. 03:11 - Following the Columbia Sportswear case, Jen Wang discusses the importance of choosing a good title in a design patent application.04:04 - John Harmon on artificial intelligence (AI) and the importance of filing patent applications in a timely manner.04:57 - In the wake of the Supreme Court's decision in the Jack Daniels case, John Strand's thoughts on the line between free expression under the First Amendment and trademark law.05:56 - John Welch previews the Vidal v. Elster trademark case to be decided by the Supreme Court in 2024.06:43 - Scott McKeown on the Patent Trial and Appeal Board's (PTAB) much anticipated updated rules package.07:32 - Zach Piccolomini expects a great deal of focus on the new Unified Patent Court (UPC) and European unitary patent. 08:27 - Ed Russavage offers some thoughts on how President Biden's Executive Order on Artificial Intelligence may impact IP, including some patent and copyright issues. 09:24 - With a number of cases challenging the drug pricing scheme in the Inflation Reduction Act, Dan Young comments on the possible implications for a company's patent strategy.10:11 - Rob Sahr on the Biden Administration's Executive Order stating that “when new technologies and products are developed with support from the US Government, they will be manufactured in the United States whenever feasible and consistent with applicable law.” 11:32 - Libbie DiMarco says 2024 may see a rise in Section 337 non-patent claims before the ITC.###

Libbie DiMarco is a shareholder at Wolf Greenfield and, along with Dan Young, co-chair of the firm's Washington, DC office. Libbie is an intellectual property litigator focusing her practice primarily on complex patent litigation in Federal District Court and before the US International Trade Commission (ITC). In this episode of IP Talk with Wolf Greenfield, Libbie highlights the impressive growth already taking place in the DC office and looks ahead to 2024. Here are the highlights.01:02 - The reasons that led to Wolf Greenfield opening a Washington, DC office02:13 - Growth in the DC office has been impressive03:42 - Co-chairing the office with Dan Young04:41 - 2023 developments at the ITC06:03 - Advice for navigating the latest changes at the ITC 06:52 - Best practices for indemnification###

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

John Strand is a shareholder in Wolf Greenfield's Trademark & Copyright Practice. He focuses on the enforcement and defense of intellectual property rights in trademarks, trade dress, domain names, and patents.  In addition to his contested matter work, John has extensive experience in counseling clients to help avoid disputes and develop their IP protection, especially in the area of Web 3.0 and blockchain technologies, which includes cryptocurrencies and NFTs, non-fungible tokens. NFTs enable a buyer to purchase ownership of a digital good in the form of a unique digital token living on a blockchain.  In this episode of IP Talk with Wolf Greenfield, John will help us make sense of this new digital trend and offer suggestions on how owners can protect their IP rights. Here are a few of the highlights: 01:08 – Some background on NFTs and where they stand in relation to blockchain technologies 03:14 – IP issues related to NFTs 05:16 – The problem with protecting IP rights when the blockchain is involved 07:05 - IP protection suggestions for content creators to consider before publishing their work for sale 08:03 - Trey Songz sold an NFT album last year. Lessons for other artists considering this move 09:52 – After the initial hype about NFTs, what will the market look like?

We're pleased to feature Cristin Berkey in this episode of Wolf Greenfield's Alumni Spotlight series. Cristin was an associate at Wolf Greenfield from 2017-2019.  Cristin currently serves as Senior Director of Intellectual Property and Contracts at Abata Therapeutics. Abata translates the biology of regulatory T cells (Tregs) into transformational medicines for patients with progressive multiple sclerosis and other serious autoimmune and inflammatory diseases. Here are some highlights from Cristin Berkey's turn in the Alumni Spotlight on IP Talk with Wolf Greenfield. 00:50 - Cristin's responsibility for managing IP strategy at Abata Therapeutics03:01 - An overview of T cells and their potential04:53 - The difference between being an in-house attorney and working at a law firm06:08 - Cristin's favorite Wolf Greenfield memory06:58 - Favorite place to get away07:22 - Light, heartwarming shows are a nice way to relax 

Patent owners face many challenges when it comes to protecting confidential information in today's collaborative and interconnected world. In this episode of IP Talk with Wolf Greenfield, attorneys Brandon Blackwell and Jason Balich discuss some of the common challenges and mistakes, as well as offer helpful suggestions for planning and safeguarding secrets. Brandon is a shareholder in the Chemicals & Materials Technologies Practice at Wolf Greenfield. He helps clients build and maintain patent portfolios and implement patent strategies that help them achieve their business goals. Brandon's practice encompasses a range of areas - from patent prosecution and post-grant activities to IP transactions and portfolio management strategy.Jason is a trial and appellate lawyer in Wolf Greenfield's Litigation Practice. He protects clients' technology and defends their freedom to use it. Jason's experience includes successfully defending a variety of patent owners—from manufacturers to public universities. He also focuses his practice on trade secrets. Here are some highlights from this episode: 01:05 – The speed and ubiquity of the Internet have fostered collaboration and innovation, but also increased risks02:21 – Some of the most common mistakes made by patent owners  03:14 – Tips for preparing an effective protection plan05:18 – Specifying what information can be shared 06:45 – An overview of non-disclosure agreements (NDAs)11:19 – The importance of an expert IT team for sharing and protecting confidential information12:20 – Suggestions for employee training 14:40 – The benefits of proper information protection and the consequences of not properly safeguarding information 

Alex Ewing is featured in this first episode of Wolf Greenfield's Alumni Spotlight series. Alex worked for Wolf Greenfield as an associate from 2011-2015. These days, Wolf Greenfield works for Alex, who is at LiquiGlide. Alex serves as Chief Operating Officer at LiquiGlide, which was founded in 2012 and born out of an MIT Lab. LiquiGlide's mission is to revolutionize products, packaging, processes, and patient experiences by eliminating the friction between solids and liquids.Here are some highlights from Alex Ewing's turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.00:54 - Some background on LiquiGlide and its recent work with the consumer giant Colgate 01:53 - The difference between working at Wolf Greenfield and getting involved with a start-up04:00 - What makes LiquiGlide unique in the marketplace?05:19 - The thrill of doing it all at a start-up06:26 - How Wolf Greenfield provided a solid foundation for his current work07:48 - Alex's favorite Wolf Greenfield experiences08:24 - Advice to young people starting their professional lives08:52 - Alex's favorite book

Patent Agents are experts with advanced degrees and deep insights. Not all IP law firms have patent agents. But Wolf Greenfield has long recognized that having specialists who are not attorneys on the team adds to the firm' richness - and provides an attractive career path for non-attorneys who love the world of IP law. Elizabeth Boehm is a Patent Agent in Wolf Greenfield's Biotech group. She assists the firm in biotechnology patent prosecution, and has extensive knowledge in the areas of biochemistry, molecular biology and biophysics. In this episode of IP Talk with Wolf Greenfield, Elizabeth shares her thoughts on the life of a patent agent at Wolf Greenfield. Here are a few of the highlights:01:12 - What attracted Elizabeth to the career of patent agent?02:16 - A day in the life of a patent agent03:54 - Wolf Greenfield as a leading firm for patent agents05:12 - Feels liberating to be a patent agent07:10 - Patent agents use their science degrees everyday07:57 - Having a “seat at the table” in the biotech group09:45 - What makes the patent world intriguing?10:31 - Elizabeth's advice for STEM professionals considering a career as a patent agent

Keeping tabs on the International Trade Commission is critical for any business engaging in trade across the US border. And in recent months, there has been a great deal of news coming out of the ITC, from compelling cases to turnover of Administrative Law Judges. In this episode of IP Talk with Wolf Greenfield, Attorney Libbie DiMarco shares her thoughts on the latest developments at the ITC. Here are a few of the highlights:01:07 - Background at Wolf Greenfield02:13 - ITC issues through the years04:15 - The ITC had to make significant adjustments because of Covid06:35 - The pros and cons of relying more on spoken testimony and less on written testimony09:02 - The ITC recently appointed its third Administrative Law Judge in three years. What's the impact of this kind of turnover?11:03 - An overview of the Kyocera case and the implications of the Federal Circuit's ruling against the ITC with a precedential decision for the Japanese electronics company.

Attorney Jonathan Roses is a shareholder in Wolf Greenfield's Pharmaceutical Practice Group. He works with life sciences companies in a variety of areas, including small molecule pharmaceuticals, pharmaceutical formulations, medical devices and surgical methods.In this episode of IP Talk with Wolf Greenfield, Jon provides insights on a variety of topics, including international patent prosecution, Section 101 reforms, Orange Book challenges and “skinny labels." Here are a few of the highlights:00:41 - Jon's love of chemistry 04:16 - Current challenges in patent procurement 06:01 - Strategies for protecting IP and how to minimize risk 07:52 - Key considerations for international patent prosecution 10:48 - Why have there been fewer challenges to Orange Book patents at the USPTO?12:53 - Induced infringement trends - what's happening with “skinny labels,” aka Section 8 carve-outs?16:15 - An update on potential reforms for Section 101, the issue of patent eligible subject matter 19:14 - Will the Supreme Court take any challenges to patent eligible subject matter?20:12 - How the increase in discretionary denials of post-grant proceedings impacts patent holders.23:08 - Some thoughts on the success of Wolf Greenfield's post-grant group

Many Wolf Greenfield attorneys were accomplished professionals in other fields before pursuing a career in IP law. A great number of them went through the firm's technology specialist—or tech spec—program. A technology specialist translates into words the often complex work of inventors who are experts in their fields. At Wolf Greenfield, our technology specialists interact with clients frequently and are visible members of our client teams.  In this episode of IP Talk, Shareholder and Wolf Greenfield tech spec program alum Heather DiPietrantonio shares her experience and advice to those considering the program.00:58 - What the tech spec program consists of 01:35 - Why someone might want to make the transition to IP law 02:42 - Heather discusses her journey from science to Wolf Greenfield 03:53 - The ideal qualities of a tech spec candidate 04:35 - Benefits of the tech spec program05:23 - Heather addresses challenges of the program and how to overcome them06:46 - Along with a wealth of knowledge, the tech spec program helps build relationships07:22 - Advice to someone considering the tech spec program

Attorney Rob Maldonado is based in Wolf Greenfield's New York City office. His practice is focused on intellectual property litigation, including patent, trademark, copyright, false advertising and unfair competition matters in federal court. But Rob is also passionate about issues related to diversity and inclusion. In this episode of IP Talk with Wolf Greenfield, we talk to Rob about his decision to switch from an engineering career to law and his extensive involvement with groups like the Hispanic National Bar Association, the American Bar Association and the LGBT Law Association Foundation of Greater New York. Here are a few of the highlights: 01:05 - The transition from engineering to law02:21 - Discussing the move to Wolf Greenfield04:12 - Rob's extensive work with diversity programs06:35 - On his mother's influence08:24 - How diversity programs have evolved through the years09:47 - There's still a great deal of room for improvement   11:38 - The ABA's “Good Guys” program seeks to involve men in the process of including women in positions of power13:16 - Advice for young people considering a career in law14:53 - Biggest wish for 2022 

Matt Berg has been at the helm of Wolf Greenfield's information technology initiatives since joining the firm in 2001. As Chief Information Officer, Matt is responsible for strategic technology planning and execution. At the top of his priority list is cybersecurity.In this episode of IP Talk with Wolf Greenfield, Matt describes the firm's approach to protecting client information and guarding against constantly evolving cyber threats. Here are a few of the highlights:00:48 - The different approaches for working with existing clients compared to prospects 03:24 - Primary targets that must be protected04:45 - How has the cybersecurity landscape changed in recent years?07:13 - Policies for working with third parties09:26 - The importance of ethical walls11:55 - Explaining “the human factor” in cybersecurity16:53 - Protecting against emerging and unknown threats 

How far must the legal community as a whole—and intellectual property law, particularly—go to achieve ubiquitous diversity and inclusion? According to Wolf Greenfield shareholder Christina Licursi, quite a way. However, she's encouraged by the changes she's seen in the industry and in IP in recent months. In this episode of IP Talk with Wolf Greenfield, Christina shared her thoughts on creating a more diverse legal workforce and areas where Wolf Greenfield is attempting to affect real change.01:05 - Diverse hiring is a critical need in the legal industry. 03:13 - Christina shares strategies for recruiting and retaining diverse talent. 05:40 - Firms must address the return to the office with a balanced approach and improve diversity and inclusion efforts.07:40 - Having diversity doesn't necessarily mean an organization is being inclusive. 09:38 - Christina believes it's everyone's responsibility to hold their colleagues and organization accountable for creating a diverse and inclusive work environment.11:29 - The pandemic has had a more significant impact on women.12:35 - Christina shares her three-part approach to promote diversity and inclusion.15:15 - On the difference between transactional leadership and transformative leadership.17:08 - How to make good on promises of diversity and inclusion initiatives. 

Career paths aren't always a straight line, something Adam Zeiger can attest to. The Wolf Greenfield associate has a background in engineering and science, but a chance meeting led him toward the legal profession. Without question, Adam's story is not unusual—many have channeled their expertise in a wide variety of areas to pursue a career in IP law. In this episode of IP Talk with Wolf Greenfield, Adam explains why transitioning from science to law made sense and why he finds it so rewarding. 00:53 - Adam shares his career goals before going into IP law.03:47 - There were skills that proved to be applicable in both science and law.05:34 - Adam on areas of the legal industry that required a little more training in getting used to.07:27 - What makes IP law so unique is the diverse occupational backgrounds many attorneys bring to the table. 08:47 - Adam talks about the benefits of working in IP.

In this episode of IP Talk with Wolf Greenfield, Neil Ferraro and Paul Metaxatos offer guidance for protecting an organization's products and designs. Neil chairs Wolf Greenfield's Mechanical Technologies Group. He works with clients in all areas of intellectual property and represents organizations ranging from startups to large corporations in a wide-range of technologies. Neil joined the firm after serving as an intellectual property attorney with the Ford Motor Company. Paul is co-founder and principal of Motiv, a Boston-based consultancy that designs products and develops brands for companies of all sizes. Paul is recognized within the retail consumer industry as one of the leading authorities in brand-focused product development, having been associated with many iconic brands, including Keurig, Culligan, and Vitamix.01:11 - The first steps a startup should do with a new design 02:58 - Paul's advice to put a non-disclosure agreement (NDA) in place 05:22 - What is the story behind the invention?06:44 - Developing effective protection strategies  09:42 - The importance of doing consumer research12:05 - The role of design patents14:35 - Utility patents are also a powerful option17:22 - From concept to off-tool, it's often a long, difficult experience to create a beautiful product18:54 - Startups must be open-minded20:15 - Pick the right partners for the entrepreneurial journey

As a technology specialist, Dr. Andrew Pinkard brings a very impressive background to Wolf Greenfield. He earned a PhD in chemistry from Columbia University and uses that knowledge in assisting the firm with patent prosecution related to both chemistry and materials science. He's also currently enrolled in the School of Law at Fordham University. In addition to his professional endeavors, Andrew has a deep dedication to Diversity and Inclusion efforts to help raise awareness and create opportunities for women and minorities interested in the STEM and legal fields. In this episode of IP Talk with Wolf Greenfield, Andrew shares insight into his background and offers thoughts on how the legal industry can promote greater inclusion.01:03 - What Andrew's role as a technology specialist entails01:27 - How a background in chemistry offers context for his current position02:30 - The ways in which the STEM and sciences fields can attract more diverse candidates03:20 - On the pressure of being a “trailblazer” and what attracted Andrew to Wolf Greenfield04:56 - Balancing the responsibilities of promoting diversity and inclusion, while focusing on a significant workload05:59 - The challenges of attending law school during the pandemic07:06 - With a remote workforce, it may be easier for law firms to incorporate diversity

John Welch is a trademark and copyright counsel at Wolf Greenfield. He has represented clients in scores of patent, trademark, copyright lawsuits across the country. John specializes in cases before  the Trademark Trial and Appeal Board (TTAB), and speaks and writes frequently regarding that tribunal. His blog, The TTABlog, is highly popular with the trademark community. In this episode of IP Talk with Wolf Greenfield, John Welch provides a summary of the Board, takes a look at interesting trends and cases and offers a review of the recently enacted Trademark Modernization Act. Here are some of the highlights: 00:49 - An overview of the Trademark Trial and Appeal Board (TTAB)02:22 - Why do parties go to the TTAB instead of federal court?03:59 - Explaining the high affirmance rate for likelihood-of-confusion and mere descriptiveness cases04:55 - TTAB trends in 202106:19 - Why has there been an increase in failure to function cases?07:15 - Interesting cases on the horizon09:32 - Notable elements of the Trademark Modernization Act of 2020 (“TMA”)12:39 - John's popular TTABlog - keeping tabs on the TTAB since 2004   

Practicing law is challenging and time-consuming under the most ideal circumstances. So it goes without saying that the COVID-19 pandemic has required a new way of working to ensure clients are serviced to the fullest extent.However, for many, juggling work and family demands—all within the same four walls—is an entirely new challenge. Chelsea Loughran, a shareholder in the litigation group at Wolf Greenfield, is a married mom with two young children, and like many of us, she's navigated the new normal through trial and error. She recently shared her unique perspective on IP Talk with Wolf Greenfield. 01:00 - What Chelsea's home and work life was like prior to March of last year01:55 - There were a number of home and work-related discussions to prepare for a fully remote environment04:47 - The challenge of being a work-from-home attorney and a parent07:19 - One of the clearest challenges has been conducting virtual depositions09:01 - How Chelsea has adapted to other work duties11:08 - Chelsea shares a story about an unexpected visit during a webinar13:51 - The takeaways and benefits she's noticed over the last year