Brave New World: Navigating the Very Latest Developments in Patent Eligibility Law in 2021

Joseph Matal is a partner in the Intellectual Property Practice Group in the Washington, D.C. office of Haynes and Boone, LLP.

Joe has served as both the U.S. Patent and Trademark’s Acting Director and Acting Solicitor. As Acting Solicitor, he defended the agency in intellectual property cases before the U.S. Court of Appeals for the Federal Circuit and U.S. Supreme Court. In his role in the Solicitor’s Office, he participated in briefing almost every major case involving PTAB trials that has come before the Federal Circuit, including cases that have defined the Board’s powers and the evidence that it may consider, the content of final decisions, and the burdens and scope of motions to amend. Recent cases include Uniloc v. Hulu, Thryv v. Click-to-Call, and Aqua Products v. Matal. Previously, Joe served in senior legal roles for more than a decade for the U.S. Senate Judiciary Committee. In that capacity, he negotiated and drafted many of the key provisions of the America Invents Act.

In his roles at the USPTO, Joe briefed and argued numerous appeals of patent and trademark decisions before the Federal Circuit; oversaw the management of the USPTO and its 13,000 employees; and advised the U.S. Solicitor General’s Office in key IP cases before the Supreme Court.

His practice focuses on USPTO post-issuance proceedings and Federal Circuit appeals.

Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, practice before the PTAB, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs in landmark patent and other cases to district courts, the Federal Circuit and the U.S. Supreme Court involving patenting issues relevant to biotechnology.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program “60 Minutes” that addressed the issue of gene patenting.

As a registered patent attorney, Kelly Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents.

Kelly began her patent counseling practice as a technical advisor after finishing her graduate engineering studies. She continued helping clients with patent prosecution, non-infringement and invalidity analyses, written opinions, and pre-litigation diligence as a patent agent upon registration before the U.S. Patent and Trademark Office (USPTO). She maintains an active patent prosecution and counseling practice, assisting clients with building strategic portfolios of utility and design patents worldwide.

Kelly draws on her experience before the USPTO to help clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts. Her technical experience spans a broad range of technologies, including medical imaging, biosurgical products, welding systems, control systems, automotive systems, power production systems, blockchain technology, and communications systems.

Kelly also represents clients on a pro bono basis before the U.S. Court of Appeals for Veterans Claims and the Social Security Administration (SSA). She has drafted successful appellate briefs on behalf of military veterans and represented disabled Americans in proceedings before the SSA.

Prior to entering the legal field, Kelly performed undergraduate research in the field of bioinformatics on the classification and selection of maximally informative genes from a microarray dataset of temporal gene expression. As part of her senior design team, she designed and built a novel proof-of-concept 3D maxillofacial imaging system, which was recognized with the Creativity in Engineering Design Award from an industrial engineering panel. She also worked for Johnson & Johnson in its medical device division, performing research on the stress relaxation and fatigue properties of polypropylene mesh and the biomechanical properties of calf pericardium.

Kelly’s graduate thesis was directed to the engineering of magnetic viral nanoheaters for the targeted hyperthermic treatment of cancer. She also assisted with the development of a new module for an undergraduate bioprocessing laboratory course.