Nalini Mummalaneni is a Senior Legal Advisor in the Office of Patent Legal Administration (OPLA) at the USPTO. In this position, she drafts rule packages, memoranda, and associated guidance on topics such as subject matter eligibility under 35 U.S.C. 101 and disclosure requirements under 35 U.S.C. 112. Nalini also coordinates the development and implementation of patent examination guidance related to Artificial Intelligence and other emerging technologies at the USPTO.

Session: AI and Patent Prosecution

This session discusses the recent guidance issued by the USPTO on the use of AI-based tools in practice before the USPTO.

Michael G. “Mike” Locklar represents clients in a variety of fields, including chemicals, oil & gas, software, computers and computer hardware, electronics, consumer products, and medical devices. In his 23 years of IP practice, Mike’s practice has included litigation, prosecution, and transactional work.

Session: All things Revival

How proceed when your patent or patent application slips through the cracks.

Chris Storm is an IP Legal Director at Uber Technologies, Inc., where he leads Uber’s IP policy initiatives and serves as head of IP for self-driving and other emerging transportation technologies. Past roles at Uber include both IP and non-IP positions managing legal support for self-driving, aerial ridesharing, and other emerging technologies. Before joining Uber, Chris served as an assistant general counsel for intellectual property at Bell Helicopter and as an associate at Baker Botts LLP. Chris received his B.S. (aerospace engineering) and M.S. (technology commercialization) from The University of Texas at Austin and his J.D. from the University of Houston Law Center.

Session: A Series of Historical Accidents: Development of American Patent Remedies

The story of American patent remedies is stranger than fiction. This presentation recounts the seemingly random events and figures that changed the course of patent history.

I advise entrepreneurs on innovation with an eye toward commercialization and monetization of their intellectual property. While I have litigated cases for and against patent owners, I most often represent patent owners and frequently on a contingent or funded basis. Having worked for one of the world’s largest litigation funders, I am very familiar with the funding market and requirements of a strong funding opportunity.

Session: Patent Litigation Funding

In Patent Litigation Funding, I discuss the funding process, disclosure requirements of various courts, privilege and discovery issues in funded cases, and issues in funded cases unique to patent law.

Greg Kavounas has been a patent attorney for over 30 years, of which 10 were in various in-house positions, defining the patenting of an operating company. He has authored the book Patent Ready, and has published articles in the industry about how to patent more robustly and how company management should think about patenting.

Session: Patenting From In-House

Being a patent practitioner in-house a company presents unexpected opportunities to improve the eventual patent portfolio of one’s company. In addition to the patenting, the in-house patent practitioner can take additional, measured actions that can have a disproportionately high positive impact in the future. Counterintuitively, such actions are not considered today because the stakeholders are focused instead on meeting present goals.

Justin Krieger serves as the Managing Partner for Kilpatrick’s Denver Office. He is a first chair IPR litigator with an over 90% win rate representing both petitioners and patent owners. Mr. Krieger also serves as an adjunct professor at the University of Denver Sturm College of Law, where he teaches a course of PTAB litigation. Justin is a frequent speaker on PTAB practice and was named “People’s Choice” Best IP Litigator in 2021 and 2024 by Law Week Colorado.

Session: What Every Patent Prosecutor Should Know About PTAB Trials (IPRs & PGRs)

In this presentation, Justin Krieger will provide a broad overview of IPR and PGR litigation before the US Patent Trial and Appeal Board (PTAB). Learn about current trends and developments in this specialized forum. The discussion will address what prosecutors need to know about these proceedings, with a particular emphasis on factors considered for institution, motions to amend, and patent owner estoppel.

Emil J. Ali is a partner at McCabe & Ali, LLP where he focuses his practice on helping lawyers understand their obligations under state and federal law. As a registered patent attorney, a significant focus of his practice involves advising lawyers and law firms on all aspects of the intersection of IP and ethics matters. Emil’s work includes counseling clients on lateral transitions, malpractice avoidance, expert opinion and testimony, and respondent’s defense work before various bars and courts. You can view his musings on IP ethics issues at www.ipethicslaw.com.

Session: Traps, Gaps and Mishaps: IP Cautionary Case Tales & The Lessons Learned

Traps, Gaps and Mishaps: IP Cautionary Case Tales & The Lessons Learned This presentation will focus on specialized ethical issues facing IP practitioners who are registered to practice in patent matters before the USPTO. The presenter, a registered patent attorney who focuses his practice on ethics for IP practitioner, will discuss topics including malpractice avoidance and risk management, as well as specific ethics requirements applicable under the USPTO Rules of Professional Conduct, and their interplay with state rule counterparts. The presentation will include real world examples regarding the use of AI, conflicts, and inequitable conduct.

Saurabh Vishnubhakat is a Professor of Law and Director of the Intellectual Property & Information Law Program at the Benjamin N. Cardozo School of Law. He is also a Research Fellow at the Duke Law Center for Innovation Policy and a Senior Scholar at the George Mason University Center for Intellectual Property & Innovation Policy. Professor Vishnubhakat writes and teaches on intellectual property, administrative law, civil procedure, and remedies, especially from an empirical perspective.

Session: USPTO Powers after Loper Bright

This talk will discuss the Supreme Court’s recent decision in Loper Bright v. Raimondo and its likely effects for administrative actions of the USPTO. In Loper Bright, the Supreme Court overturned the Chevron doctrine requiring courts to defer to federal agencies’ reasonable interpretations of ambiguous laws that these agencies are tasked with administering. The effects of Loper Bright on the USPTO are more elusive given the agency’s historical lack of substantive rulemaking authority and relatively undeferential treatment by the Federal Circuit.

Jeff Saltman is a partner at Cole Schotz LLP who has managed a variety of federal court litigation matters from the initial pleadings phase through trial, including direct and cross examinations of fact and expert witnesses at trial, drafting and arguing of successful dispositive and Daubert motions, conducting every facet of discovery, preparing technical and economic expert reports, and drafting direct and cross-examination witness outlines at trial. Jeff has taken or defended over 100 depositions in federal court, including corporate representatives, economic and technical expert witnesses, and c-suite executives. Jeff has participated in six successful jury trial verdicts in federal court. In 2018, Law360 selected Jeff as one of six Rising Stars for intellectual property in the country–one of only six attorneys honored that year. Jeff was been selected as a SuperLawyer’s Rising Star on seven occasions.

Session: Reasonable Royalties & Prosecution: How Patent Drafting Can Affect Damages

How the scope of patent claims can affect reasonable royalty damages. That includes what products are covered by the claim, what part of a product can be included in damages, and the rate a party can seek.

Tom Bassolino is a U.S. patent attorney with over 17 years of experience, and the founder of Bass Patent Law, LLC—a firm based in Frederick, Maryland that provides a broad range of patent-related services across a variety of technologies. Tom’s practice includes drafting, filing, and prosecuting U.S., PCT, national stage, and international patent applications, as well as other patent-related services, including global patent portfolio management and due diligence, and the preparation of noninfringement, invalidity, patentability, and freedom-to-operate opinions. Prior to practicing patent law, Tom worked as a mechanical engineer in New York City, eventually attending law school at night before starting his legal career in “biglaw.”

Session: Heard around the NAPP Forum

This presentation distills key discussions from NAPP’s online patent forum, offering insights into emerging patent law and technology trends, as well as salient practice tips shared by experienced patent practitioners. In the presentation, we’ll explore actionable takeaways and salient practice strategies that can directly impact and improve your practice, ensuring you stay ahead in an ever-evolving IP landscape.

With his doctoral degree in Electrical Engineering, Dan is able to perform in even the most complex areas of technology. He has earned the respect and loyalty of clients in many fields including computer architecture, software engineering, digital communications, coding, seismic data processing, oil field drilling technology and well logging. Dan is highly skilled in patent prosecution, opinion work, litigation support and “design-around” assistance. Dan also performs due-diligence and freedom-to-operate searches and assists his clients in developing strategic patent portfolios.

Session: Ethics of Overflow Work

Overflow work raises several interesting ethical issues concerning client identification, restricted communications, supervision, fee division, etc. This presentation is my attempt to identify and address these issues head on.

Jennifer Bales was employed as an engineer with Hughes Aircraft Company prior to law school at the University of Colorado. While at Hughes, Jennifer developed systems for digital signal processing, image processing and radar, while attaining a master’s degree in optics from University of Southern California. Jennifer has extensive experience obtaining and enforcing patents in the fields of signal processing, optics, optoelectronics, radar, and lidar. She is currently a partner in the intellectual property firm Macheledt Bales LLP.

Session: Expert Opinion Declarations in Patent Practice: Benefits and Pitfalls

When a patent practitioner and a patent examiner are in a stalemate, it is sometimes useful to provide an expert opinion, either from an outside expert or from one of the inventors. They can be very persuasive in the right situation. However, they can also be useless or even harmful if used carelessly or in the wrong situation.

Sarah Foley is a registered U.S. patent attorney with over 18 years of experience counseling clients in all areas of intellectual property law. Over the course of her career, Ms. Foley has helped clients protect innovation in areas such as mobile device software and hardware, IoT and connected systems, image and natural language processing, network architecture, virtual and augmented reality, AI and computer learning, aerospace, aeronautics, robotics, autonomous vehicle systems, machinery, automotive and mechanical technologies. In 2023 she founded Foley IP Law, PLLC, a boutique Intellectual Property Law firm, and now manages an experienced team of IP professionals serving clients around the world.

Session: Drive to Survive: Prosecution Practices that Drive Value for Clients

Directed prosecution, competitive analysis, and targeted prosecution practices to drive value for clients and align with specific business goals.

Bios Coming soon:

Dahlia Girgis/OED

James D. Bennett | Consultant, InovativSolutions

Kit Crumbley

David Boundy

Tiffany Johnson

David Ladner | Partner, Ladner Patent Management LLC