PTAB Practice, Biotechnology and Pharmaceuticals: A Practitioner’s Perspective
Panel
Panel 11: Recent Developments in Patent Law
Moderator
Dan Wadhwani, Professor of Management and Fletcher Jones Chair in Entrepreneurship, University of the Pacific, Eberhardt School of Business
Location
Pacific McGeorge School of Law, Lecture Hall, 3200 Fifth Ave., Sacramento, CA
Apr 6th, 12:15 PM
Apr 6th, 2:00 PM
PTAB Practice, Biotechnology and Pharmaceuticals: A Practitioner’s Perspective
Pacific McGeorge School of Law, Lecture Hall, 3200 Fifth Ave., Sacramento, CA
Speaker Bio
Erin M. Dunston focuses her practice on inter partes reviews, interferences, district court litigation, opinions and prosecution — primarily in the fields of biotechnology, pharmaceuticals and medical devices. Her litigation practice includes classic infringement and declaratory judgment cases, as well as Paragraph IV cases. She is a member of the firm's Associates' Committee.
From 2014 to 2018, Erin was recognized in IAM’s Patent 1000 list – the best-in-class listing of patent prosecution, licensing, and litigation practitioners and from 2014 to 2018 as an IP Star by Managing Intellectual Property. From 2014 to 2016, Erin has been named a Leading Intellectual Property Lawyer by Chambers USA. Erin also received Lawyer Monthly’s Women in Law 2016 Award for her contributions to the practice of biotechnology law. She was also selected for inclusion in The Best Lawyers in America list in 2018 and 2019.
Erin has assisted in more than 40 interferences before the Patent Trial and Appeal Board. As a result, she is knowledgeable on all phases of interference work, ranging from pre-request analyses to preparation for and participation at final hearings and subsequent appeals to the Federal Circuit.
Erin’s significant interference experience before the PTAB serves as a useful backdrop to the America Invents Act post-grant proceedings, including inter partes reviews, post-grant reviews, covered business method patent reviews, and derivation matters. Erin has handled IPRs for both patent owners and petitioners.
In addition to the IPR matters that Erin is working on, she was also a panelist on the inaugural PTAB AIA Roundtable, held on April 15, 2014 at the United States Patent and Trademark Office. The panel discussed AIA trial statistics, lessons learned and techniques for successful motions practice. The fact pattern used at that roundtable, and all subsequent PTAB roundtables throughout the country, was initially drafted by Erin for a Pauline Newman Inn of Court meeting titled “Concurrent Post-Grant Proceedings: Dos, Don’ts, and Tips for Creating a Strong Record for Appeal or Civil Action,” where Erin moderated a panel of judges and practitioners. Erin served as a panelist in April of 2016 for a PTO 'Boardside Chat' on the recent rule amendments.
To help to ensure familiarity with current patent practice and to complement her litigation, post-grant, and interference work, Erin maintains a significant patent prosecution docket. Erin has experience in all phases of patent prosecution, from pre-filing investigations and application drafting to appeals to the Patent Trial and Appeal Board and Federal Circuit. Erin speaks French, conversationally.