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Patents or Trade Secrets: Considerations for Blockchain IP

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Mehran Arjomand and Jean Nguyen participated in the panel, “Patents or Trade Secrets: Considerations for Blockchain IP,” at the 4th Annual Blockchain Opportunity Summit, which focused on factors to consider when deciding between patents and trade secrets for protection blockchain IP.

Mehran Arjomand and Jean Nguyen participated in the panel, “Patents or Trade Secrets: Considerations for Blockchain IP,” at the 4th Annual Blockchain Opportunity Summit, which focused on factors to consider when deciding between patents and trade secrets for protection blockchain IP.<hr>

4th Annual Blockchain Opportunity Summit

Patents or Trade Secrets: Considerations for Blockchain IP

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Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he joined Morrison & Foerster, where he developed a strong foundation in USPTO prosecution and procedure. With his combined litigation and prosecution experience, he is able to counsel clients on end-to-end strategies—from patent creation to patent challenges.In his role as chair of the firm's Inter Partes Review and Post Grant Practice and previously the firm's Patent Reexamination Group, he has overseen hundreds of post-grant proceedings. He not only initiates post-grant proceedings for petitioners but also defends patent owners in such proceedings, from filing to appeal. Mr. Arjomand also regularly provides strategic guidance for and management of post-grant proceedings co-pending with litigation.Representative completed post-grant matters include the following.<ul><li>PGR2017-00009 Successfully represented patent owner PhishMe in PGR. The USPTO denied the petition based on a PGR eligibility argument.</li></ul><ul><li>PGR2017-00001, IPR2017-00123 Defendant settled with petitioner Yuneec shortly after filing of petitions.</li></ul><ul><li>IPR2014-01266, -01313 Defended patent owner HML against two inter partes reviews by different parties, resulting in claim survival or petition denial. </li></ul><ul><li>IPR2013-00593, -00594, -00597, -00598  Represented petitioner Yamaha in a series of inter partes reviews in which all pending claims were found unpatentable in final written decisions by the USPTO.</li></ul><ul><li>IPR2013-00149 Shortly after inter partes reviews became available, filed and led this review for petitioner Wavelock Advanced Technology. All pending claims were subsequently cancelled by patent owner.</li></ul><ul><li>Reexamination Control No. 95/001,734 Prepared and led inter partes reexamination of patent asserted against Yahoo! All pending claims were cancelled.</li></ul><ul><li>Reexamination Control No. 95/001,381 Successfully defended patent owner through appeal. Federal Circuit issued a precedential decision,  805 F.3d 1350, in favor of Netlist.</li></ul><ul><li>Reexamination Control No. 95/000,293 Prepared and oversaw this inter partes reexamination of a patent asserted against EchoStar. All pending claims were cancelled or amended. The matter settled favorably for EchoStar.</li></ul><div>In addition to his practice relating to adversarial PTO proceedings, Mr. Arjomand regularly prosecutes patent applications. He concentrates his prosecution work on consumer electronics, semiconductor processing, and automotive technologies. Mr. Arjomand works closely with clients in these technology sectors to develop and manage their patent portfolios. Additionally, Mr. Arjomand lived in Japan in 2008, where he worked extensively with Japanese technology companies to develop their global patent portfolios.Mr. Arjomand received his B.S. in mechanical engineering from the University of California, Berkeley in 1991, where he graduated with high honors. He obtained his J.D. from Berkeley Law in 1995. Mr. Arjomand is admitted to practice in California and is registered to practice before the USPTO.</div>

Mehran Arjomand

Partner

A former lead engineer at the NASA Jet Propulsion Laboratory, Dr. Nguyen focuses her practice on domestic and international patent prosecution. She is a founder and co-leader of the firm’s Life Sciences Data Analytics patent group. She applies her experience also from her doctoral studies and her work as a former research scholar to provide portfolio management and counseling, IP due diligence, and freedom-to-operate analyses. Dr. Nguyen also has experience drafting briefs and inter partes reviews (IPRs), analyzing prior art and patent infringement, working with experts, and handling disputes before the U.S. International Trade Commission (ITC) and the federal courts. Her clients include large domestic and international companies, early-stage startups, and universities.Dr. Nguyen’s knowledge spans a wide range of technology areas, including electronic devices, medical devices and health systems, semiconductor materials and fabrication, computer/device hardware, memory, optoelectronics, optics, nanotechnology, microelectromechanical systems (MEMs), electronic packaging, augmented/virtual reality systems, autonomous vehicles, smart glass, mechanical assemblies, and consumer products. Her experience also encompasses telecommunications and networks, integrated circuits and digital designs, quantum computing, computer software, and digital cameras.Prior to joining Morrison & Foerster, Dr. Nguyen was a lead engineer at the NASA Jet Propulsion Laboratory and a hardware engineer at Hewlett-Packard. She also worked as a research scholar at the Center for Quantum Devices, Georgia Tech Computer Aid Design Lab, and Berkeley Wireless Research Center, where her research involved collaborating with several companies and laboratories such as Raytheon, Cree, IBM, Intel, BAE Systems, Lockheed Martin, Sandia National Labs, U.S. Army Night Vision Labs, Naval Research Lab, Aerospace Corporation, Argonne National Lab, Lawrence Livermore National Lab, Los Alamos National Lab, L3 Communications, Boeing, General Electric, FLIR, Teledyne, and Rockwell Automation.Dr. Nguyen received her J.D. from Loyola Law School. She also received her Ph.D. in electrical engineering from Northwestern University, where she focused her studies on semiconductor materials and optoelectronic devices. She received her M.S. in computer science from the Georgia Institute of Technology, where she focused her studies on computer-aided design and quantum computing. Jean also received her B.S. degree in computer engineering from the University of Wisconsin at Madison with emphasis on integrated circuits and digital designs. She has authored over 40 technical publications, 50 conference proceedings, and three book chapters. She also holds three patents.Dr. Nguyen has served on several committees with the Los Angeles Intellectual Property Law Association (LAIPLA). She is registered to practice in California and before the United States Patent and Trademark Office.

Jean Nguyen

Associate

Blockchain + Smart Contracts

IP Due Diligence

Patent Strategy + Prosecution

Trade Secrets

Patents or Trade Secrets: Considerations for Blockchain IP - 566274601

Patents or Trade Secrets: Considerations for Blockchain IP

10 Dec 2019 11:05 AM - 11:45 AM PST