Erise IP is pleased to announce the addition of Jocelyn Ram as senior counsel, where she focuses her practice on electromechanical, mechanical, and software technologies, with particular expertise in medical technologies.

Before joining Erise, Ram spent a combined 12 years at the United States Patent and Trademark Office (USPTO) and 6 years in private practice at a mid-sized intellectual property law firm in Washington, D.C. Upon her departure from the USPTO, Ram most recently held the position of speechwriter for USPTO Director Andrei Iancu and Deputy Director Laura Peter, where she drafted remarks for more than 60 events, including 18 keynotes for external legal conferences. In addition, Ram worked closely with top executives and senior staff from across the USPTO in preparing for these events.

“Jocelyn brings a wealth of knowledge and a unique perspective to Erise and our clients,” said Jennifer Bailey, a shareholder in Erise IP’s Kansas City office. “Her experience as a primary patent examiner provides insights into the examination process that will be instrumental in acquiring valid patents with meaningful claim scope for our clients.”

In addition to her time as a speechwriter and patent examiner, Ram also spent 1½ years as a patent business analyst in the Office of International Patent Cooperation, where she collaborated on work-sharing initiatives with international patent offices. As a lead member of the Global Dossier development team, she helped improved this patent prosecution tool and presented numerous training seminars to internal and external audiences.

Ram was exposed to intellectual property law at a young age by her father, an inventor and patent attorney. She earned her bachelor’s degree in biomedical engineering from Cornell University and master’s in communications & technology from Georgetown University, which provide a strong foundation for both understanding the technical and legal aspects of patent law and for expertly communicating this subject matter to diverse audiences. Ram earned her law degree from Boston University School of Law.

Erise IP is proud to sponsor the sixth annual Corporate IP Strategy Conference hosted by Unified Patents on November 6, at Santa Clara University School of Law.

Shareholders Abran Kean and Jason Mudd will hear from intellectual property leaders from the USPTO, Facebook, Google, Sony, Twitter, Mozilla, Ecobee, NetApp and Uber as well as more than 40 in-house attorneys on topics that include IP & Innovation at the USPTO, How to Innovate in Open Source, the Patent Quality Initiative and KPIs for IP in Emerging Companies.

Erise IP shareholder Abran Kean earned a place in the National Law Journal’s third annual Elite Boutique Trailblazers class.

In recognizing Kean, the National Law Journal published a profile on him, highlighting how he and a number of attorneys saw an opportunity to serve clients better and conduct defense work more efficiently, which led them creating Erise IP. The NLJ also highlighted how inter partes review has become a focal point of his practice.

For the honor, the National Law Journal said it selected attorneys considered agents of change, including those who have made significant marks on the practice, policy and technological advancements

Click here to view the National Law Journal’s 2019 Elite Boutique Trailblazers edition, which includes a profile on Kean.

Erise IP is pleased to announce it has once again earned the distinction of U.S. News – Best Lawyers “Best Law Firms” for 2020.

The firm earned a Metropolitan Tier 1 ranking in Kansas City-KS for the practice area of Litigation – Intellectual Property.

Earlier this year, partners Adam Seitz and Marshall Honeyman were recognized by The Best Lawyers in America for Litigation – Intellectual Property.  It was the fifth and fourth straight year of individual inclusion for Seitz and Honeyman, respectively.

Erise IP partner Marshall Honeyman recently authored an article for The Fabricator’s October 2019 issue on whether metal manufacturers should pursue a patent or not.

He delves into the complexities of patent rights being lost due to public disclosures, sales, or offers for sale. In addition, he discusses who owns the patent if a product or system is the result of a collaborative effort. Maintaining the invention as a trade secret as an alternative to patenting is also discussed.

Honeyman will be presenting on patent rights in metal forming on November 13, in Chicago at FABTECH.

Erise IP is pleased to announce shareholder Jennifer Bailey was named to the inaugural Top 50 Women in PTAB Trials list by the PTAB Bar Association.

The list recognizes both private-practicing and in-house female practitioners who have appeared in the largest number of PTAB trial proceedings since 2012.

Bailey was chosen by Garmin to be lead counsel on the first inter partes review (IPR) ever filed with the U.S. Patent Office, and in the years since she has represented petitioners and patent owners on numerous IPRs with an almost 100% win rate.

Bailey will be featured in the PTAB Bar Association’s upcoming report on Women at the PTAB, which studies gender diversity at law firms and companies participating in PTAB proceedings. The list was released by the PTAB Bar Association’s Women’s Committee as part of a two-year long focus on women practicing before PTAB.

Erise IP technical advisor Adam Sandwell recently led a Learning Lunch discussion about the firm’s strategy when searching for prior art.

In his role, Sandwell conducts research and analysis for intellectual property cases and assists Erise attorneys when trying to invalidate patents on behalf of clients.

During the presentation, Sandwell discussed methods of searching for prior art, which included tools he finds helpful such as online databases, techniques for analyzing each patent, and approaches he uses if he comes to a “dead end.”

Erise IP partners Megan Redmond and Carrie Bader led X-ray tube manufacturer Richardson Electronics in obtaining a denial of a preliminary injunction.

The Kansas City Business Journal recently reported on the successful outcome writing that “Richardson doesn’t sell its products to Toshiba/Canon and that the two companies don’t directly compete. The judge also found that Toshiba/Canon maintained its sales levels and pricing, so there was no drop in sales volume for [the plaintiff].”

In his order, Judge John Robert Blakey concluded “the plaintiff failed to demonstrate that it will suffer irreparable harm before a decision can be rendered on the merits of its claims.”

Erise IP partners Adam Seitz and Paul Hart were featured in the Kansas City Business Journal for their work invalidating a number of claims in a patent owned by well known patent litigant Uniloc.

In July, the Patent Trial and Appeal Board instituted a trial for all challenged claims in an inter partes review filed by Erise IP partners Jason Mudd and Eric Buresh and associate Kelly Hughes on behalf of Unified Patents against a non practicing entity (NPE).

The NPE, as reported by Law360, requested the PTAB reconsider its decision, but the board denied that request saying, “it could find no clear error in its reasoning to institute inter partes review.”

In its decision, the PTAB wrote, “A request for rehearing is not an opportunity to provide rebuttal arguments.”

“Jason Mudd and Eric Buresh of Erise are thorough and talented counsel and we greatly enjoy working with them,” Unified Patents Chief Intellectual Property Counsel Jonathan Stroud told Law360. “This decision demonstrates that the board generally considers all of the relevant context when considering whether to institute, and is savvy to arguments that might overstate the level of overlap or obscure the timing or state of other proceedings.”