Partner
Tim focuses on contentious patent proceedings before the U.S. Patent and Trademark Office (USPTO), including proceedings before the Patent Trial and Appeal Board (PTAB), reexaminations, and interferences. Tim has represented petitioners and patent owners in dozens of proceedings, from petition through hearing and appeal. Throughout each proceeding, Tim draws on both his prosecution and litigation experience to develop comprehensive strategies. Tim is a first-chair practitioner and seamlessly coordinates Patent Office strategies for inter partes review (IPR) and post grant review (PGR) with parallel litigation, as well as strategies for parallel reexamination and reissue of challenged patents.
Throughout his career, Tim has conducted numerous due diligence investigations and freedom-to-operate studies, working with both acquiring companies and target companies through investment rounds, acquisition, and initial public offerings (IPOs). He has helped many clients develop comprehensive patent portfolios with strategies toward enforcement, competitive landscaping, licensing, and protecting commercial embodiments.
Tim represents clients across various technologies and co-leads the firm's manufacturing industry group. He has significant experience with medical device technologies, including orthopedic implants, gastrointestinal stents, vascular stents, heart valve repair/replacement devices, and nerve stimulation/modulation, as well as embolics and other injectable materials. He has specific expertise with drug/biologic-device combination products (pre-filled syringes, autoinjectors, and nasal delivery devices), including strategies for building portfolios, FDA patent listing, licensing, and litigation. Tim represents device manufacturers and pharmaceutical companies in various matters, including cases under the Biologics Price Competition and Innovation Act (BPCIA).
Tim's experience across other technologies includes materials, especially polymers, hydraulics, business methods, signal processing, and fabricated parts. These technologies span various industries, including chemical processing, industrial manufacturing, heavy equipment, electronic brokerages, electronic gaming/wagering, and consumer goods.
Before joining Finnegan, Tim worked for several years as a patent examiner at the USPTO. His art unit handled mechanical technologies related to automotive, robotic, bicycle, and machine component technologies. Tim also previously worked as a mechanical engineer, including positions in the oil and gas industry, supporting refinery business units by designing and retrofitting complex reactor internals for supporting, transferring, and fluidizing catalysts.
Represented patent owner Aqua Products/Fluidra in appeal involving robotic pool cleaners; successfully petitioned Federal Circuit for en banc review of statutory burden of proof for motions to amend before the PTAB; en banc court revised the legal standard and vacated adverse PTAB decision against Fluidra.
15-1177, Fed. Cir., Judges Chen, Dyk, Hughes, Lourie, Moore, Newman, O'Malley, Prost, Reyna, Taranto, Wallach
Smith & Nephew v. ConforMIS, Inc.
Represented patent owner Conformis in sixteen IPRs challenging nine patents that were asserted in parallel district court litigation involving orthopedic implant devices and surgical tools. The cases were successfully settled.
IPR2016-01874; IPR2017-00115, -00307, -00372, -00373, -00487, -00488, -00510, -00511, -00544, -00545, -00778, -00779, -00780, -00983, -00984, PTAB, Judges Bunting, Scanlon, Weiker, Worth
Universal Electronics, Inc. v. Caavo Inc.
Represented patent owner Caavo as the junior party in two interferences related to audio-video switching devices. The PTAB granted judgement in favor of Caavo.
106,113; 106,114, PTAB, Judges Lane, Moore, Katz
William Hill U.S. Holdco, Inc. v. CG Technology Development, LLC
Represented patent owner CG Technology in IPR challenges related to computer gaming/wagering systems. The cases were successfully settled.
IPR2019-00317, -00319, -00320, PTAB, Judges Weatherly, Hoskins, Majors
Chicago Mercantile Exchange, Inc. v. 5th Market Inc.
Represented petitioner CME challenging patents that were asserted in parallel district court litigation involving electronic brokerage exchanges. The cases were successfully resolved.
CBM2013-00027; CBM2014-00114; CBM2015-00061, PTAB, Judges Chang, Braden, Deshpande, Lee, Zecher
USPTO Control No. 95/002,032, PTAB, Judge Carlson
Boston Scientific Corp. et al. v. Cook, Inc. et al.
Represented patent owner asserting 10 patents related to gastrointestinal stents. The case was successfully settled.
1:10-cv-11646, D. Mass., Judge Woodlock
Event
The ILS Global Forum on International Law 2024 The ILS Global Forum on International Law 2024
February 16, 2024
Miami
At the PTAB Blog
Finnegan Attorneys Author the Third Edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board Finnegan Attorneys Author the Third Edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board
November 28, 2022
Podcasts
Director Review of Code200 v. Bright Data Director Review of Code200 v. Bright Data
November 17, 2022
Books
The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Third Edition The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Third Edition
September 2022
Podcasts
Update on Apple Inc. v. Fintiv Inc. Update on Apple Inc. v. Fintiv Inc.
August 24, 2022
Commentary
OpenSky ‘Abuse’ Sanctions Add New Weapons in Patent Challenges OpenSky ‘Abuse’ Sanctions Add New Weapons in Patent Challenges
October 6, 2022
Bloomberg LawCommentary
Two Director Review Rulings Give PTAB Petitioners a New Edge Two Director Review Rulings Give PTAB Petitioners a New Edge
September 2, 2022
Managing Intellectual PropertyMedia Mention
DC Intellectual Property Litigation Department of the Year: Finnegan, Henderson, Farabow, Garrett & Dunner LLP DC Intellectual Property Litigation Department of the Year: Finnegan, Henderson, Farabow, Garrett & Dunner LLP
May 28, 2018
The National Law JournalMedia Mention
Fed. Circ. Makes It Easier to Amend Patents in AIA Reviews Fed. Circ. Makes It Easier to Amend Patents in AIA Reviews
October 4, 2017
Law360Press Release
Second Edition of PTAB Trials Guidebook by Finnegan Attorneys Now Available Second Edition of PTAB Trials Guidebook by Finnegan Attorneys Now Available
November 3, 2016
Media Mention
PTAB Hands Win to Caterpillar, Invalidates 2 Coupler Patents PTAB Hands Win to Caterpillar, Invalidates 2 Coupler Patents
June 15, 2016
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