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M C C ORMICK, P AULDING & H UBER LLP I NTELLECTUAL P ROPERTY L AW

Transcript of MCORMICK, PAULDING & Hip-lawyers.com/MPH_brochure.pdf · McCormick, Paulding & Huber LLP has a...

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MCCORMICK, PAULDING & HUBER LLP

INTELLECTUAL PROPERTY LAW

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Protecting intellectual

property and realizing its

full potential require the

same care and

consideration as other

vital aspects of a business.

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A firm having a specialized practice. McCormick, Paulding & Huber LLP has a history as a full-service

intellectual property law firm that can be traced back more than 100 years. Today the firm continues

to practice exclusively in this specialized area of the law with offices conveniently situated in two

locations: Hartford, Connecticut, midway between Boston and New York; and Springfield,

Massachusetts, midway between Boston and Albany. Both locations offer easy access by air, rail and

interstate highway, and provide comprehensive service to a host of domestic and international clients.

| Partners, associate attorneys, paralegals and support staff reside at both locations. All partners and

associate attorneys are members of the bar of one or more states, are registered to practice before the

United States Patent and Trademark Office, and collectively hold degrees in a wide range of engineering

and scientific disciplines. | Whether your company is an entrepreneurial start-up or multinational

conglomerate, the firm offers a full range of services in intellectual property matters throughout the

United States and around the world. Working relationships with highly qualified law firms in every

major U.S. city and in more than fiy foreign commercial centers, provide you with intellectual

property services unconstrained by regional or national boundaries.

McCORMICK, PAULDING & HUBER LLP

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e complexities of

acquiring, protecting,

and transferring

intellectual property

should be entrusted only

to professionals.

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Patent practice, more than any other field of law, requires a merger of legal and technical expertise.

With general law degrees, specific training in patent law, and scientific and engineering degrees, our

attorneys can communicate directly with you and your staff on technical and legal matters, and apply

their skills comprehensively in seeking the most effective forms of legal protection for your specific

needs. e same skills are employed in obtaining relief in the courts for infringement of your patent

rights as well as defeating unwarranted claims of infringement brought against you by others.

| Technical disciplines represented by our staff are diverse and comprehensive. From microchips to

microorganisms, your invention will be entrusted to a knowledgeable attorney. Our disciplines include:

GENERAL AREAS of PRACTICE

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• Aeronautics and Astronautics

• Automotive and TransportationTechnology

• Biotechnology

• Chemistry and Chemical Engineering

• Computer Science and Soware

• Control Systems

• Electrical Engineering

• Financial and Insurance Products

• Firearms and Weapon Systems

• Fuel Cells

• Heating, Ventilating, Air-Conditioning and RefrigerationSystems

• Internet Technology

• Medical Engineering

• Medical Devices

• Metallurgy, Composites, Polymers and Material Science

• Motion Picture and Video Technology

• Naval and Marine Engineering

• Package Engineering

• Pharmacology

• Physics, Optics, Lasers, Fluidics,Magnetics

• Power Generation and Distribution Technology

• Semiconductor Device Manufacturing

• Structural Engineering

• Telecommunications

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e practice of

intellectual property law

requires a merger of law

and technology.

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In litigation involving a foreign patent owner with an exclusive licensee in this country, our client facedthe prospect of an injunction in his most promising new product line. We were able to find prior artanticipating our adversary’s patents in broad concept, but the projected result of litigation remained indoubt. Discovery was conducted rigorously and on the eve of trial our opponent began to grow wearyof the battle. Aer a difficult three-way negotiation with both the foreign patent owner and the U.S.licensee, the litigation was settled with our client receiving a license under the patents. e licenseallowed our client to become a leader in the product line involved in the litigation.

Trademarks have become increasingly valuable assets in franchising, on the internet, and in virtually

every other business. Based on knowledge of the law and practical experience, we help you select,

properly use and register those marks which provide recognition of and demand for your goods or

services in the marketplace. We advise you and take the legal steps necessary to protect your marks

against infringement or dilution by others. We also defend against claims involving trademark usage

which are brought against you by others.

Our client operated an agricultural catalog store catering to poultry, dairy, and cattle farmers. One ofhis products was a plain sheet of plastic stock cut to selected sizes for use in building animal pens, floorsand gutter lines. e product was very popular, and the client wanted a proprietary position to assisthim in the marketplace. We studied the product and determined that patent protection was unavailable.We also advised him, however, that the trademark which he had been using could be registered. Todayhe markets the product as his own exclusive brand under a federally registered trademark.

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Effective solutions to

intellectual property

problems are based on

sound business principles.

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Copyright, as the customary method of protecting works in the arts and entertainment field, assumed

a significant new dimension in 1978 when computer soware was expressly included within its

protection. As courts and legislative bodies struggle with this continuously developing field of law, our

firm follows each progression of theory and practice to counsel clients in accordance with current legal

doctrine.

A client referred to us by another attorney had received a Summons and Complaint charging him withiningement of the plaintiff ’s copyright on a computer program. During the discovery phase oflitigation, we established that the copyrighted work was a derivative of works created under agovernment sponsored grant which had been carried out by our client in collaboration with theplaintiff ’s predecessor. Once this information was incorporated in our client’s amended Answer, theplaintiff promptly initiated negotiations toward a settlement which would allow our client to continuemarketing his product under a royalty-ee license.

Trade secrets, when properly identified and preserved, provide proprietary positions that last

indefinitely. Oen trade secret difficulties arise from an employer-employee relationship. We

understand the technical, legal and business issues which accompany these difficulties and have the

skills to fashion remedies that address the complexities of this area of law.

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Securing protection for

intellectual property

starts with a thorough

understanding of the

applicable law.

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Unfair competition actions handled by our firm extend to broader improprieties involving intellectual

property such as unfair trade practices, false designations of origin, trade dress simulation, trade libel,

and false advertising.

e client had devised an improvement to a moderately priced consumer product and was sued by theoriginator of the product for trade dress iningement, false designation of origin and trade secretviolations. We were able to show at trial that the product similarities were due solely to unprotectedfunctional aspects of the products. e District Court found for our client on all counts. On appeal theFirst Circuit Court of Appeals was asked to remand the case because of the trial court’s failure to ascribeto our client the burden of proof with respect to product confusion in the marketplace and secrecy of thecompetitor’s dealer list. We were able to persuade the Court of Appeals to sustain the trial court on bothof these issues in spite of the fact that the confusion issue had never been decided by the First Circuit.

Intellectual property disputes. Our firm has attorneys and support staff with practical experience in

the resolution of intellectual property disputes through negotiation, arbitration or litigation. Key to

our efforts in seeking a most favorable resolution is a thorough understanding of the technical issues

and applicable law, as well as sensitivity to your desires and goals.

Procurement. Procuring domestic and international protection for a patentable invention, a

trademark, or an artistic creation, is a highly specialized skill we have acquired through years of

practical experience.

LEGAL SERVICES

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Diverse and

comprehensive skills

acquired om years of

experience assure you the

most effective strategies

for success.

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In consultation with you, we recommend and seek the type of intellectual property protection which

most appropriately addresses your individual requirements.

Technology transfer. As domestic and world markets become more closely integrated, the exchange of

technology and other proprietary property has become more common and, in some cases, indispensable

for survival. Licenses and other transfer agreements have been common work products for us for many

years. We take pride in our ability to guide our clients through complex licensing negotiations.

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McCormick, Paulding & Huber LLP represents multinational corporations as well as small to medium

size companies and individuals who are located both in the United States and abroad. A high standard

of professional service is maintained by sustained partner involvement in the work performed for every

client. | Our extensive information retrieval systems offer immediate access to a wide spectrum of

technical and legal databases for up-to-date, substantive analysis for your position and that of your

adversary. Our goal is to develop effective and successful strategies for you by applying legal and

technical skills to your business.

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MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

ATTORNEY PROFILES

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John C. Linderman, Of Counsel ......................................................... Page 14

J. Kevin Grogan, Managing Partner ................................................. Page 15

Marina F. Cunningham, Managing Partner ....................... Pages 16, 17

Nicholas J. Tuccillo, Managing Partner ......................................... Page 18

Tucker Griffith, Managing Partner .................................................. Page 19

Kevin H. Vanderleeden, Partner ....................................................... Page 20

Gerald L. DePardo, Partner .......................................................... Pages 21, 22

Emily J. Kasperowski, Associate ........................................................ Page 23

Michael D. Cartona, Associate ........................................................... Page 23

Alan Harrison, Associate ........................................................................ Page 24

Scott A. Lydon, Associate .............................................................. Pages 25, 26

Arthur F. Dionne, Of Counsel ............................................................ Page 26

Donald K. Huber, Of Counsel ........................................................... Page 27

John C. Hilton, Of Counsel ................................................................. Page 28

Geoffrey G. Dellenbaugh, Counsel ................................................. Page 29

Sergio F. Chung, Associate ................................................................... Page 30

Mallory Hein, Associate ........................................................................ Page 31

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MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

Education:• BS, Massachusetts Institute of Technology• JD, University of Connecticut School of LawAssociations:• American Bar Association• American Intellectual Property Law Association• MIT Enterprise Forum of Connecticut• Connecticut Bar Association• Connecticut Intellectual Property Law Association• Hartford County Bar Association

ExperienceJohn C. Linderman maintains a broad intellectual practice and regularly litigates patent, trademark andcopyright matters in the state and federal courts. He also prosecutes applications for patents, trademarks andcopyrights, and handles contracts and licensing pertaining to technology transfer and the sale or exchange ofintellectual property.He has a speaking and reading knowledge of German.In addition, Mr. Linderman has written several papers on patent infringement and validity, and conducted aContinuing Legal Education Seminar on trademarks for the general practitioner. He also serves as a guestlecturer on intellectual property topics at e University of Connecticut School of Law and Trinity College.

Past Offices:• Chairman, Intellectual Property Section of the Connecticut Bar Association• President, Connecticut Intellectual Property Law Association• Chairman, MIT Enterprise Forum of Connecticut• Has served as a Trustee of the Stanley Museum

Author:• How to Fashion a Protective Order in Patent Litigation• e Licensing Journal, Vol. 11, No. 5• e Ascending Role of Secondary Considerations• ird Annual Joint Seminar Program of Patent Law Associations• Staking your Claims - A Patent May Cover More an It Says• Mechanical Engineering, Vol. 125, No. 1 January 2003

John C. LindermanOf Counsel

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MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Education:• BS, Physics, University of Vermont• MS, Physics, University of Vermont• JD, Seton Hall University School of LawAssociations:• International Trademark Association• Connecticut Bar Association• Connecticut Patent Law Association• Hartford County Bar Association

ExperienceJ. Kevin Grogan negotiates contracts relating to patents, trademarks and copyrights, and counsels clients in theareas of trade secret law as well. He has had extensive responsibilities in patent, trademark and copyright,litigation and has comprehensive experience in both foreign and domestic prosecution of patents, trademarksand copyrights with particular emphasis in the computer, laser and semiconductor arts. He is also experiencedwith business method patents.Prior to receiving his law degree, Mr. Grogan was an aerospace engineer and then a physicist at Bell TelephoneLaboratories where he conducted research in the fields of laser and semiconductor devices. He is a co-author ofa number of technical papers in these areas.He is admitted to practice before the state courts of Massachusetts, Connecticut and the U.S. District Courtsfor Massachusetts and Connecticut.Mr. Grogan is registered to practice before the U.S. Patent and Trademark Office.

Co-Author:• Properties of NMOS Silicon Gate Transistors Fabricated in a Large Area Laser Crystallized Silicon on

Insulators• IEEE Conference• Laser Crystallization of Silicon Films on Glass• Applied Physics Letters• Ferro-Electric Memory• Bell Laboratories Technical Memorandum• Electron Beam Induced Reactive Etching• Bell Laboratories Technical Memorandum

J. Kevin GroganManaging Partner

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Education:• B.S., Mechanical Engineering, Columbia University• M.S., Engineering, Massachusetts Institute of Technology• J.D., University of Connecticut School of LawRecognitions and Associations:• Top Patent Attorney in Connecticut by e Lexology Client Choice Awards• Tau Beta Pi• Connecticut Bar Association• American Intellectual Property Law Association• International Trademark Association• International Federation of Intellectual Property Attorneys• International Association for the Protection of Intellectual Property

ExperienceMarina has experience in domestic and foreign patent prosecution, trademark and copyright matters, e-commerce related issues, negotiation of licenses and other types of agreements relating to intellectual property,and litigation.She has worked as a design supervisor for AT&T Bell Laboratories and, subsequent to obtaining her law degree,as an in-house intellectual property attorney for United Technologies Corporation.

LanguagesFluent in Russian; proficient in Ukrainian

News and Publications:• Partner Marina Cunningham and Associate Emily Kasperowski co-author and article on the CT Innovations

blog - "Holding a Website Hostage Is a Violation of the Anticybersquatting Statute"• Partner Marina Cunningham and Associate Emily Kasperowski co-author an article in the CT Law Tribune -

"Louis Vuitton Bags $32 M From Internet Provider"• Partner Marina Cunningham and Associate Scott Lydon co-author an article in the CT Law Tribune - "It's

Not Enough to Simply Show Deception"

Marina F. CunninghamManaging Partner

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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• Partner Marina Cunningham participates in CG New England Roundtable Series 2009 as a panel member - "Trademark & Copyright: A New Era"

• Partner Marina Cunningham speaks at the ConnACCA Continuing Seminar Series for In-house Counsel sponsored by McCormick, Paulding & Huber LLP

• Partner Marina Cunningham speaks at the ConnACCA Continuing Seminar Series for In-house Counsel sponsored by McCormick, Paulding & Huber LLP

• Partner Marina Cunningham speaks at GC New England Seminar sponsored by McCormick, Paulding & Huber LLP

• Partner Marina Cunningham participates in the CG New England Round Table Series as a panel member - "Patent Reform Preparing for Change"

• Partner Marina Cunningham was recognized as a "Women in the Law - High Achiever" by the CT Law Tribune

• Partner Marina Cunningham and Associate Scott Lydon co-author an article in CT Law Tribune - "Business Method Patents Under Fire"

• Partner Marina Cunningham quoted in the CT Law Tribune• Partner Marina Cunningham authors article in CT Law Tribune - "Inventors Need to Tell All"• Partner Marina Cunningham participated in a discussion with other patent practitioners regarding proposed

changes to the Patent Laws in the US• Marina Cunningham speaks at the Quinnipiac Chamber of Commerce

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Marina F. Cunningham continued

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Education:• BS, Electrical Engineering, Union College• JD, American University - e Washington College of LawAssociations:• American Bar Association• Connecticut Bar Association• New York State Bar Association

ExperienceMr. Tuccillo has experience in intellectual property transactions and licensing and is involved in all aspects ofelectrical and mechanical patent prosecution before the U.S. Patent & Trademark Office.He is admitted to practice before the state courts in Connecticut and New York. Before entering the practice ofintellectual property law, Mr. Tuccillo spent six years as an examiner at the U.S. Patent and Trademark Office inthe field of industrial electronics, where he examined primarily optical and image recording devices.

Nicholas J. TuccilloManaging Partner

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MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Education:• BS, Mechanical Engineering, Worcester Polytechnic Institute• JD, University of Connecticut School of LawAssociations:• Tau Beta Pi, (e National Engineering honor Society)• Pi Tau Sigma (e National Mechanical Engineering Honor Society)• American Bar Association• Connecticut Bar Association• American Intellectual Property Law Association• Hartford County Bar Association

ExperienceTucker Griffith is actively involved in all aspects of patent law. He is admitted to practice before the state courtsin Connecticut, the U.S. District Court for the District Connecticut and the District of Michigan, and isregistered to practice before the U.S. Patent and Trademark Office. Mr. Griffith was a member of theConnecticut Law Review in 1996-1998, and served as managing editor in 1997- 1998.

AuthorBeyond the Perfect Score: Protecting Routine-Oriented Athletic Performance with Copyright Law 30 Conn. L. Rev. 675 (Winter 1998)

Adjunct ProfessorHartford College for Women, Legal Studies Program, 2002

Tucker GriffithManaging Partner

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Education:• J.D., Boston University School of Law, 2000• M.S., University of Massachusetts at Amherst, 1997• B.S., cum laude, University of Massachusetts at Amherst, 1994Associations:• American Intellectual Property Law Association• Hampden County Bar Association

Honors2010 Massachusetts Super Lawyer Rising Star in Intellectual Property

ExperienceKevin H. Vanderleeden focuses on intellectual property prosecution and litigation for both an international anddomestic clientele. Kevin regularly prepares and prosecutes patent applications in a variety of technologies. Healso manages the prosecution of foreign patent applications and counsels clients in the areas of patent,trademark and copyright law. Kevin received his Juris Doctor degree from Boston University School of Law where he served as ArticlesEditor of the Public Interest Law Journal and participated in the Edward C. Stone Moot Court Competition.He received his bachelor’s degree in Biology, cum laude, and a master’s degree in Biostatistics and Epidemiologyfrom the University of Massachusetts at Amherst.Prior to attending law school, Kevin was employed in a Neurobiology laboratory and worked for the State ofConnecticut Department of Public Health designing and conducting epidemiologic studies. Kevin hasauthored numerous publications on intellectual property.

Selected Publications and Speaking Engagements• e Leahy-Smith America Invents Act, presented at Connecticut Paralegal Association, Inc., Continuing

Legal Education Seminar, (Hartford, CT) (March 2012).• Claiming Small Entity Status (Ethics) presented at Joint Patent Practice Continuing Legal Education, Inc.,

Twentieth Annual Joint Patent Seminar, (New York, N.Y.).• Vanderleeden, Kevin H., Book Note. (Reviewing Lawrence D. Graham, Legal Battles at Shaped the

Computer Industry.) 9 B.U. Pub. Int. L.J. 519-523 (2000).• Siniscalchi, Beakes, Soto, Vanderleeden, Implications of Temporal Variations in Radon Exposures in Schools,

22 Environment International 1015-1024 (1996)

Kevin H. VanderleedenPartner

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MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Education:• BS, Electrical Engineering, Northeastern University• MS, Electrical Engineering, Rensselaer Polytechnic Institute• JD, University of Connecticut School of LawAssociations:• Association of Corporate Patent Counsels (ACPC)• Intellectual Property Owners Association (IPO)• American Intellectual Property Law Association (AIPLA)• International Trademark Association (INTA)• Connecticut IP Law Association (CIPLA)• American Bar Association & IP Law Section Member (ABA)

Offices & Positions• Former Board Member of Intellectual Property Owners Association• Former Board Liaison for IPO’s Internet Domain Name Committee• Board Member CT Science and Engineering Fair

AwardsWho’s Who Among Corporate Executives 2003

ExperienceGerald DePardo (Gerry) is an intellectual property and transactional attorney having extensive experience indomestic and foreign corporate intellectual property matters, including developing patent and trademarkstrategies & portfolios, IP landscape reviews and analysis, product IP clearance and freedom to operate reviews,corporate IP brainstorming, trade secret management & risk reduction, M&A/Investor IP diligence, e-commerce and business method patent issues, corporate IP education, IP audits, strategy setting with seniormanagement, IP transactions and licensing, dispute resolution, and IP issues relating to internationalrelations/transactions.Gerry was formerly Vice President and Chief Intellectual Property Counsel for e Travelers Companies, Inc.,where he lead the intellectual property function and oversaw the development and implementation of corporateintellectual property strategies and portfolios. Prior to joining Travelers, Gerry was a partner at MPH

Gerald L. DePardoPartner

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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representing corporate clients on a broad range of intellectual property issues. Gerry was also formerly Chief IPCounsel for several emerging growth technology companies, including CiDRA Corporation, CyVeraCorporation, and Illumina, Inc., where he was responsible for developing and managing intellectual property,licensing, and corporate transactional matters. Gerry was also an intellectual property attorney at UnitedTechnologies Corporation (UTC), where he was responsible for a broad range of intellectual property,licensing and transactional activities in UTC’s Commercial/Industrial and Aerospace/Defense divisions.His practice focuses on representing large, medium, and small companies as well as entrepreneurs and VentureCapital investors across a wide range of technologies and industries, including: Information Technology/e-commerce/Internet, Soware, Insurance/Financial Services, Life Sciences/Biotech tools, Oil & Gas/Energy,Telecommunications, Optical Components & Instruments, Industrial Sensing & Process Control, Aerospace,Building & Security Systems, and Automotive.Gerry is admitted to practice before the state and federal courts of Connecticut, the US Patent and TrademarkOffice, and the US Supreme Court.

News, Publications & Speaking Engagements• Panel member and speaker at Patents for Financial Services Summit annual event by World Congress 2009-

2013• Speaker: “Beyond Patents: Using Trade Secrets & Copyrights to Protect Innovation,” at IP Protection for

Financial Services event, March 8, 2010• Panel member and speaker, “What Is Your IP Strategy? Do You Have One?” Association of Corporate

Counsel event, April 15, 2008• Speaker: “e End of Free Sharing in the Insurance Industry,” CAS Conference, June 18, 2007

Article: “In House Intellectual Property Functions in the Insurance Industry – A New Corporate Paradigm?”Insurance IP Bulletin, Dec. 15, 2006

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MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Gerald L. Depardo continued

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Emily J. Kasperowski received a Bachelor of Science degree in Biology from Tus University and graduatedmagna cum laude from Suffolk University Law School in 2003, where she served as Associate Managing Editorof the Suffolk University Law Review. Ms. Kasperowski focuses her practice on preparing, filing and prosecuting U.S. trademark and service markapplications and works with a network of foreign associates to serve the domestic and foreign trademark needsof clients. She handles oppositions and other administrative proceedings before the U.S. Trademark Trial andAppeals Board and prosecutes patents before the United States Patent and Trademark Office.Ms. Kasperowski is admitted to practice before the United States Patent and Trademark Office and the stateand federal courts of Massachusetts. She is a contributor to the Connecticut Law Tribune and the ConnecticutInnovations Blog.

Emily J. KasperowskiAssociate

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Education• B.S., Mechanical Engineering, University of Connecticut• J.D., cum laude, Quinnipiac University School of Law

AssociationsAmerican Bar AssociationNew Haven County Bar Association

ExperienceMr. Cartona is currently involved in both intellectual property litigation and patent prosecution with a focus onmatters involving the mechanical and electromechanical arts including RFID systems, firearms and HVACmachinery. Mike also counsels clients in the areas of trademark, copyright law and licensing. While in lawschool, Mr. Cartona was member of the Intellectual Property Law Society. He is admitted to practice beforethe state courts of Connecticut and New York. He is also admitted to practice before the United States Patentand Trademark Office.

Michael D. CartonaAssociate

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Education:• BS, Mechanical Engineering (magna cum laude), Northeastern University• Naval Nuclear Power Training• JD, University of Connecticut School of LawAssociations:• Member, American Bar Association• Member, Connecticut Bar Association• American Intellectual Property Law Association

ExperienceAlan Harrison is a registered patent agent with the U.S. Patent and Trademark Office and is admitted topractice as an attorney in the State of Connecticut. He has strong experience related to electromechanical andnuclear systems. Before joining McCormick, Paulding & Huber, Alan successfully completed engineering projects related toautomated data acquisition, chemical mixing and process equipment, commercial HVAC, web-enabled productcataloging, mechanical design of CAT scanners, and computer modeling of the atmospheric dispersion ofradioactive particles. He also served in the United States Navy as a Submarine Officer. In addition to preparing legal opinions and patent applications, Alan has written dozens of business strategyreports on topics ranging from the quantifiable employment impact on mid-Atlantic States of foreign tradeagreements, to the market potential of a new method for making wind turbine blades.

Alan HarrisonAssociate

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

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Education• Dual B.S., Mechanical Engineering and Aeronautical Engineering, Rensselaer Polytechnic Institute, 2004

Dean's List of Distinguished Students• J.D., University of Connecticut School of Law, 2008• Certificate, Intellectual Property Program• Member, Intellectual Property Society

ExperienceScott has extensive experience with patent procurement, intellectual property due diligence and patent opinionmatters. He has prepared and prosecuted patent applications both in the United States and abroad in numerousindustries. His expertise includes the mechanical, electromechanical, electrical and computer arts. Scott hasspecific experience with medical devices, automotive and aerospace components, manufacturing devices andsystems, tools and industrial equipment, fluid flow systems, consumer products, electrical and control systems,and telecommunication devices and related methods. Scott has prepared patentability, noninfringement,invalidity and freedom-to-operate opinions and has formulated design-around advice. He has also initiated anddefended numerous inter partes and ex partes reexamination proceedings.Prior to practicing law, Scott was a licensing analyst for Pratt and Whitney, a United Technologies Company,where he evaluated invention disclosures for intellectual property licensing potential and draed licenseagreements for patented technology. Previously, Scott was a mechanical engineer for Pratt and Whitney, wherehe designed turbine cooling and secondary flow sealing systems for military and commercial jet engineprograms and analyzed cooling system leakage and conducted thermal analyses of turbine components.

Offices and Positions• Treasurer, Connecticut Intellectual Property Law Association, 2011-2012• Program Chair, Connecticut Intellectual Property Law Association, 2010-2011

News and Publications• Protecting Intellectual Property Rights at the Border, Connecticut Law Tribune, April 16, 2012• It's Not Enough to Simply Show Deception, Connecticut Law Tribune, April 20, 2009.• Business Method Patents Under Fire, Connecticut Law Tribune, April 21, 2008

Speaking• Speaker, Joint Patent Practice Seminar, 2012 (discussing John Mezzalingua Assocs. v. ITC, 660 F.3d 1322,

1324 (Fed. Cir. 2011)

Scott A. LydonAssociate

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Education:• BS, Management Engineering, Rensselaer Polytechnic Institute• JD, Georgetown University Law CenterAssociations:• American Bar Association• Massachusetts Bar Association• Hampden County Bar Association• Boston Intellectual Property Law Association

ExperienceArthur F. Dionne has extensive experience in the fields of patents, trademarks and copyrights with emphasis onlitigation and licensing matters.He is admitted to practice before the Connecticut state courts, the Massachusetts state courts, the Virginia statecourts and several of U.S. District Courts and U.S. Circuit Courts of Appeal, including the Court of Appeals forthe Federal Circuit. He is also admitted to practice at the United States Patent and Trademark Office.

Reported Cases:• Fromson v. Anitec Printing Plates, Inc., et al. 132 F.3d 1437 (CAFC, 1998)• Stuart Hall Company v. Ampad Corporation 31 U.S.P.Q.2d 1468 (1994), 51 F.3d 780 (CA, 8th)• Fromson v. Advance Offset Plate, Inc.

219 U.S.P.Q. 83 (1983), 720 F.2d 1565 (CAFC, 1983)223 U.S.P.Q. 1132 (1984), 755 F.2d 1549 (CAFC, 1985)

Arthur F. DionneOf Counsel

• Speaker, Panel Discussion: Careers in Intellectual Property Law, University of Connecticut School of Law, 2010• Speaker, Joint Patent Practice Seminar, 2009 (discussing Research Corp. Tech. Inc., v. Microso Corp. 536

F.3d 1247, 1252 (Fed. Cir. 2008)

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Education• BS, Mechanical Engineering, Northeastern University• JD, Northwestern University• BS, Electrical Engineering, University of HartfordAssociations• American Bar Association• American Intellectual Property Law Association• International Association for the Protection of Industrial Property• Connecticut Bar Association• Hartford County Bar Association• Connecticut Patent Law Association

ExperienceBefore entering private practice he worked as an intellectual property attorney for Link-Belt Company (nowFMC) in Washington, D.C. He entered private practice with the firm of McCormick, Paulding & Huber in1960. Mr. Huber is a member of the bar of Connecticut and the bar of the District of Columbia, and has beenadmitted to various U.S. District Courts and Courts of Appeal and to the U.S. Supreme Court. In addition tocopyright and trademark matters, his practice includes a wide range of U.S. and foreign patent prosecution,technology transfer and intellectual property rights enforcement. He specializes in electrical and mechanicaltechnical matters, and translates from German to English.

• Speaker, Panel Discussion: Careers in Intellectual Property Law, University of Connecticut School of Law, 2010• Speaker, Joint Patent Practice Seminar, 2009 (discussing Research Corp. Tech. Inc., v. Microso Corp. 536

F.3d 1247, 1252 (Fed. Cir. 2008)

Donald K. HuberOf Counsel

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Education:• BS, Aeronautical Engineering, Massachusetts Institute of Technology• JD, University of Connecticut School of LawAssociations:• American Bar Association• American Intellectual Property Law Association• Connecticut Patent Law Association• Connecticut Bar Association• Hartford County Bar Association

ExperienceJohn C. Hilton, a former partner in the firm, is admitted to practice before the Connecticut state courts, theConnecticut Federal District Court, the Federal Court of Claims, several of the Federal Circuit Courts ofAppeal and the United States Supreme Court. Mr. Hilton has particular expertise in the fields of patents,product simulation law and trademarks. He is also admitted to practice at the United States Patent Office andCanadian Patent Office. His technical areas of expertise include electromechanical devices and complexmachinery. He is active in the Litigation Section of the American Bar Association. He is a graduate of the AirWar College of the United States Air Force and retired with the rank of Lieutenant Colonel following a careeras a rated military pilot.

Reported Cases:• Fisher Stove v. All Nighter Stove Works – 626 F2d 193 (1st Cir. 1980)• Atlanta Motoring v. Saratoga Technologies – 33 F3d 1362 (Fed Cir. 1994)Author• Developments in Design Patent Law – Joint Seminar of NY, PA, NJ and CT Patent Law Association, 1988

John C. HiltonOf Counsel

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Education• AB, Chemistry, Princeton University• MA, Teaching, Stanford University• Ph.D., Chemistry, University of Pittsburgh• JD, University of Chicago Law SchoolAssociations• American Bar Association• New Jersey Bar Association• Connecticut Bar Association• American Intellectual Property Law Association• Association of University Technology Managers• New Jersey Patent Law Association• Licensing Executives Society

ExperienceGeoff has extensive experience in domestic and foreign patent prosecution, license negotiation, and litigation,particularly in pharmaceuticals and the life sciences. He has represented major pharmaceutical companies, start-ups, and universities.He practiced patent and licensing law with Johnson & Johnson, becoming the lead patent attorney for thepharmaceutical sector of the company and a member of the management board of the subsidiary JanssenPharmaceutical, Inc. He then became Intellectual Property Counsel for Warner Lambert Company, in whichposition he managed the global intellectual property needs of the company. Following Warner Lambert, herejoined Johnson & Johnson’s principal pharmaceutical research and development subsidiary, where he createdand managed a patent and licensing team that assured the legal conformance of the subsidiary’s activities,prepared and managed its patent portfolio, represented it in licensing transactions, and negotiated research andtechnology acquisitions and relationships. He was then senior consultant for Columbia University, where headvised on technology transfer and licensing operations at its Medical Science Campus. Most recently, he wasAssociate Professor and Supervising Attorney for the Intellectual Property Law Clinic at the University ofConnecticut School of Law.Geoff is licensed to practice before the state courts of Connecticut and New Jersey, the Court of Appeals for theFederal Circuit, and the United States Patent and Trademark Office.

Geoffrey G. DellenbaughCounsel

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Education:• B.S., Mechanical Engineering, Massachusetts Institute of Technology• J.D., Boston University School of Law

ExperienceSergio's practice focuses on patent litigation and patent prosecution/client counseling in the fields oftelecommunications, electronics, semiconductors, business-methods, electronic commerce, medical devices,industrial equipment/machines, packaging, and consumer products. Sergio's experience includes developingpatent assets for assertion and licensing programs; preparing and prosecuting patent applications in the U.S. andabroad; representing clients in patent infringement suits; providing patentability, invalidity and non-infringement opinions; evaluating intellectual property assets in the context of litigation, mergers, acquisitions,and investments; and providing intellectual property due diligence for various types of transactions.Additionally, prior to obtaining his law degree, Sergio acquired significant experience working for a leading IPresearch and analysis firm. Among other things, Sergio conducted patent validity, freedom-to-operate, andpatentability research. He also researched and analyzed the patent landscape in particular technology areas tohelp clients make key R&D decisions, evaluate acquisition opportunities, identify business opportunities, andcreate valuable IP portfolios.

LanguagesNative Spanish speaker; conversational Korean

Bar Registrations:• Pennsylvania• New York• Connecticut• United States Patent and Trademark Office

Sergio F. ChungAssociate

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Education• B.A., Political Science, College of Charleston• J.D., Quinnipiac University School of LawAssociations• American Bar Association

ExperienceMallory has experience with conducting and analyzing trademark availability searches, filing and prosecutingU.S. trademark and service mark applications with the U.S. Patent and Trademark Office, as well as prosecutingopposition, cancellation, and other proceedings before the U.S. Trademark Trial and Appeals Board. She alsohas litgation experience preparing and responding to Discovery Requests and with Motion Practice, generally.Mallory has extensive experience with new generic top-level domain name (gTLD) applications and brandprotection in connection with new gTLD applications. Mallory worked as a contract lawyer for a Fortune 200Company where she gained experience in domestic and foreign trademark enforcement and brand protection,the prosecution of new gTLD applications and the assessment of trademark portfolios for the submission oftrademarks to the Trademark Clearinghouse, as well as copyright clearance/infringement review. Mallory isadmitted to practice before the state courts of Connecticut.

Mallory Hein Associate

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MCCORMICK, PAULDING & HUBER LLP

INTELLECTUAL PROPERTY LAW

MCCORMICK, PAULDING & HUBER LLPIntellectual Property Law

Connecticut:185 Asylum StreetCity Place II Hartford, Connecticut 06103 Tel: 860-549-5290 Fax: 860-527-0464

Massachusetts:1350 Main Street, 5th Floor Springfield, MA 01103 Tel: 413-736-5401 Fax: 413-733-4543

E-mail: [email protected]