Elizabeth D. Ferrill
Beth Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation. She also has extensive experience in utility patent litigation in the areas of software- and hardware-related technologies. She has appeared before U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit, as well as the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO).
Ms. Ferrill counsels clients who hold design patents as well as those accused of infringement. She has experience with consumer and industrial products, medical devices, transportation and construction vehicles, and graphical user interfaces and icons. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign countries, and argued appeals before the PTAB. She has a special interest in strategic counseling related to acquiring for worldwide protection for designs. She also litigates design patent matters at the U.S. district court level that include trade dress claims.
Ms. Ferrill's litigation experience includes pre-litigation analysis, managing discovery in all aspects of fact and expert discovery, orchestrating complex claim construction analysis and briefing, and summary judgment briefing. She has experience in discovery dispute resolution, expert and fact witness preparation and depositions, and settlement negotiations.
Ms. Ferrill has particular interest in intellectual property issues related to 3D printing (additive manufacturing). She counsels clients on the unique concerns in the area and frequently speaks on this topic at industry events.
Before beginning her legal career, Ms. Ferrill graduated from the U.S. Air Force Academy and served five years on active duty as a communications officer. She was stationed at Bolling AFB, Washington, D.C., coordinating and overseeing testing of joint intelligence software systems, and at Thule Air Base, Greenland, where she served as the flight commander in charge of base communications.
- Sensio Inc. v. Select Brands, Inc. (PTAB). Represented Sensio in three design patent inter partes review (IPR) proceedings involving slow cooker designs.
- Nikon Corp. v. Sakar Int'l Inc. (S.D.N.Y.). Represented Nikon in a design and trade dress rights action involving a digital camera design.
- Certain Video Game Systems and Wireless Controllers, 337-TA-770 (ITC). Served a leading role on the team representing Creative Kingdoms, LLC seeking an exclusion order against Nintendo's infringing Wii gaming system.
- Akamai Technologies, Inc. v. Limelight Networks, Inc. (Fed. Cir.). Represented Akamai in panel briefing and assisted on the panel for rehearing briefing on issues of divided infringement.
- Gardner v. Toyota Motor Corp. (W.D. Wash.). Represented Toyota in a utility patent litigation related to the hybrid-engine system found in the Prius. The court granted summary judgment of non-infringement on all Toyota products prior to trial.
- As part of Finnegan's pro-bono program, worked extensively on behalf of military veterans and represented criminal defendants in the Superior Court of the District of Columbia, the E.D. of Virginia, and the Virginia Supreme Court.
- Served as a judicial law clerk to the Honorable Liam O’Grady at the U.S. District Court for the E.D. of Virginia, Alexandria Division, 2006-2007
- Board of Directors, Community Tax Aid, Inc., 2007-present.
- Recognized as a Washington, D.C. "Rising Star" in Intellectual Property, Super Lawyers published by Thomson Reuters, 2014-2016.
- Intellectual Property Owners Association (vice chair, Industrial Designs Committee, 2016; member, Industrial Designs Committee, 2012-2015)
- USPTO Design Day planning committee (member, 2012-present; co-organizer, 2015, 2016)
- American Bar Association (Industry Design Committee, 2012-present)
- American Intellectual Property Law Association
- Serves as an advisor and contributor to Finnegan's Federal Circuit IP blog; regular contributor to Full Disclosure, Finnegan's patent prosecution newsletter; Finnegan's patent blog Prosecution First; and Finnegan's AIA blog on PTAB trials and AIA provisions.
- "Sneakers and Fancy Dresses Provide Guidance on Written Description Requirements for Design Patents," Full Disclosure Patent Newsletter, Nov. 2016.
- "Lessons Learned from Recent IPR Decisions Involving Design Patents," Full Disclosure Patent Newsletter, Oct. 2016.
- Coauthor. "Amazing Grace Periods for Registered Designs and Design Patents: A Sweet Sound or Funeral Toll?," Journal of Intellectual Property Law & Practice, Oct. 2016.
- Coauthor. "Could a 'Real' Design Solve a 'Virtual' Problem? Protecting Innovative Design Against Physical or Online Infringing Products", Full Disclosure Patent Newsletter, June 2016.
- Coauthor. "When Outsourcing, Don't Be Barred by the On-Sale Bar," Full Disclosure Patent Newsletter, April 2016.
- Coauthor. "Federal Circuit Ruling on Scope of USITC Jurisdiction over Digital Files Could Affect IP Enforcement in the Age of 3D Printing," Full Disclosure Patent Newsletter, Feb. 2016.
- Coauthor. "The Hidden World of Design Patent Prosecution," Law360, Dec. 3, 2015.
- Coauthor. "Swipe to Patent: Design Patents in the Age of User Interfaces," TechCrunch, Aug. 4, 2015.
- Coauthor. "Yin and Yang: Design Patents and Trade Dress Rights," Bloomberg BNA, July 27, 2015.
- Coauthor. "Standing Out in a Crowded Bar: Protecting Your Craft Beer with Design Patents," Craft Brewing Business, June 10, 2015.