The United States Court of Appeals for the Federal Circuit held today that a Native American tribe may not assert sovereign immunity to bar inter partes review proceedings before the Patent and Trademark Office’s Patent Trial and Appeal Board.
Katie is a trial lawyer focusing on intellectual property litigation, with an emphasis on patent-related matters.
Katie leverages her technical background and experience drafting and prosecuting patents to successfully assert and defend against patent infringement suits. She assists clients at all stages of litigation, from pre-litigation all the way through trial and appeal, including developing invalidity and non-infringement positions with respect to competitor patents prior to suit as well as attacking competitor patents in post-grant proceedings in the Patent Office. Katie also advises clients on transactional IP matters, including licensing, inventor agreements and IP due diligence.
Katie’s technical background allows her to help clients in a variety of technology areas from gas turbine engines, energy and power systems, environmental control and HVAC systems, fluid handling and process controls and devices, 3-D printing and additive manufacturing, life sciences, biotechnology, chemical processes, medical devices, mechanical devices, outdoor and recreational equipment and nanotechnology.
- Member of team representing three of the nation’s largest retailers in patent suits in the District of Minnesota.
- Member of team asserting patent infringement against the US Army in the Court of Federal Claims. Assisted in successfully asserting a claim construction position that was adopted by the court.
- Member of team that represented a leading manufacturer of automotive paint protection film products in patent litigation against 3M in the District of Minnesota, resulting in a negotiated settlement.
- Member of trial team representing a manufacturer of fabric transfer paper in patent litigation in the District of Minnesota.
- Member of team that represented a semi-conductor company in the District of Minnesota. Drafted successful summary judgment motion asserting laches. Both the patent infringement suit and countersuit were subsequently settled.
- Member of trial team in the District of Minnesota that represented a solo inventor against an action camera company.
- Works with expert witnesses to prepare expert reports on complex validity and infringement issues, as well as to prepare them for depositions and trial testimony.
- Assists with negotiation and drafting of licensing agreements and option agreements relating to intellectual property.
- Leverages background in patent prosecution to assist with complex IP due diligence issues for transactions for a variety of businesses, from small companies to multi-national corporations.
Articles & Presentations
March 19, 2018
The District of Minnesota continues to see many cases transferred to other districts after last year’s Supreme Court decision on venue in patent cases in TC Heartland v. Kraft Foods.
November 17, 2017
Health and safety equipment like 3M 8210 Particulate Respirators have become a popular target for counterfeiters, particularly those in China.
May 8, 2017
In SCA Hygiene Products v. First Quality Baby Products, the Supreme Court recently ended over a 100 years of application of the equitable doctrine of laches in patent infringement cases.
August 25, 2016
The Federal Circuit has had few opportunities to address the new standard for proving indefiniteness since the Supreme Court relaxed the standard from “insoluble ambiguity” to “reasonable certainty” more than two years ago in Nautilus v. Biosig. Recently, however, the Federal Circuit applied Nautilus in affirming decisions in parallel cases, Icon Health & Fitness, Inc. v. Polar Electro Oy and Icon Health & Fitness, Inc. v. Garmin International, Inc., finding Icon’s asserted patent invalid as indefinite.
April 26, 2016
In Genetic Technologies Ltd. v. Merial LLC, the Court of Appeals for the Federal Circuit recently issued an opinion holding yet another biotech patent invalid. The Federal Circuit applied the two-step Alice/Mayo test for patent eligibility in upholding the district court’s finding of invalidity. The patent at issue, U.S. Patent No. 5,612,179 (the ‘179 patent), is directed to methods of analyzing DNA sequences to detect an allele of gene by amplifying non-coding regions of the DNA. The parties agreed that claim 1 is representative of all of the invalidated claims:
January 21, 2016
PUBLICATIONS & PRESENTATIONS
- Presenter, “IP (P)review: When Is a Sale a Sale? (Analyzing the Helsinn Decision on the On-Sale Bar),” Federal Circuit Bar Association Bench & Bar Dialogue, Minneapolis, MN, April 2019
- Presenter, “The Year in Review for Minnesota IP Litigation,” MIPLA Stampede, May 2018
- Presenter, “The Year in Review for Minnesota IP Litigation,” MIPLA Stampede, June 2016
Honors & Education
- University of Wisconsin Law School, J.D., 2012, cum laude
- Massachusetts Institute of Technology, B.S., Chemical Biological Engineering, 2009
- Minnesota, 2013
- Wisconsin, 2013
- U.S. District Court for the District of Minnesota, 2013
- U.S. Court of Appeals for the Federal Circuit, 2015
- U.S. Patent & Trademark Office, 2016
- Illinois, 2012 (inactive)
- Russian, fluent
- Spanish, proficient
- Minnesota Super Lawyers, Rising Star – Intellectual Property Litigation, 2018
- Wisconsin Law Review, Articles Editor, 2011-2012; Member, 2010-2011
- Federal Bar Association, Minnesota Chapter
- Minnesota Intellectual Property Law Association
- Minnesota State Bar Association
- Judicial Intern, Honorable Chief Justice Shirley Abrahamson, Wisconsin Supreme Court, 2012
- MIT Educational Council, 2012-present
- Member, Board of Directors, The Origins Program, 2018-present