Speakers

Christopher V. Carani is a partner at McAndrews, Held & Malloy, Ltd. practicing in all areas of IP with particular emphasis on design law, which focuses on the protection of the appearance of products using a strategic combination of design rights, utility patents, trade dress and copyrights.  He is widely recognized as a leading authority in the field of design law having published and lectured in the field for more than 20 years.  Chris has extensive experience litigating design law cases, including high profile matters before U.S. district courts, the Federal Circuit, U.S. Supreme Court and the ITC.  Chris is the current chair of the AIPPI Committee on Designs, and past chair of both AIPLA and ABA Design Rights Committees. His book “Design Rights: Functionality and Scope of Protection,” published by Wolters Kluwer N.V. (2^nd Edition 2022), is the seminal work on these contentious and decisive issues. 

Tracy-Gene G. Durkin is the practice leader of Sterne, Kessler, Goldstein & Fox’s Mechanical & Design Practice Group and a member of the Trademark & Brand Protection Practice. Tracy has a well-earned reputation for excellence in design patent law built over the past 30 years. As a result, leading consumer product companies around the world seek out Tracy’s expertise to protect their most iconic and innovative product designs from would-be copiers. Tracy has received numerous distinctions from leading publications and her peers. Financial Times named her as one of the “Top Ten Legal Innovators in North America,” noting her as “a leading authority on design patents.” World Trademark Review has heralded her for being “as innovative as the products that she protects.”

Tracy is currently the vice chair and is serving a three-year term as a member of the Patent Public Advisory Committee (PPAC), which advises the Under Secretary of Commerce for Intellectual Property at the USPTO on the policies, goals, performance, budget, and user fees of patent operations at the Office.

Ivy Clarice Estoesta is a director in Sterne, Kessler, Goldstein & Fox’s Mechanical & Design Practice Group and Trademark & Brand Protection Practice. Ivy counsels a wide range of clients, from startups to Fortune 500 companies, on strategically securing and enforcing intellectual property rights in the U.S. and abroad. She focuses her practice on design rights and brand protection for clients in various industries, including consumer electronics, apparel, household cleaning products, and software and applications. Ivy’s multidimensional practice includes drafting and prosecuting design patent applications and enforcing design rights; clearing, prosecuting, and enforcing trademark rights; and advising on copyright protection for some of the most recognizable brands in North America. She also has experience in ex parte proceedings before the U.S. Patent Trial and Appeal Board and U.S. Copyright Review Board, and inter partes proceedings before the U.S. Trademark Trial and Appeal Board.

Tim Fletcher has over 31 years of experience in industrial design, and has worked in corporate, consulting and academic environments in the US as well as internationally. He holds 14 design patents and 4 utility patents in the US, Europe and Australia. He was an Assistant Professor at the School of Design at The Hong Kong Polytechnic University and has taught design and innovation subjects in several schools at Carnegie Mellon University.

Tim has been a member of the Industrial Designers Society of America since 1989. In 2009 he was inducted into the IDSA Academy of Fellows, the highest honor bestowed by the organization. He received his BED in Industrial Design from NC State University in 1989 and his Master of Design (Advanced Strategies) from The Hong Kong Polytechnic University in 2008.

Tim Fletcher is an experienced expert witness in design patents, utility patents and trade dress cases.

Daniel A. Gajewski is a director in Sterne, Kessler, Goldstein & Fox’s Mechanical & Design Practice Group. He has over 10 years of experience helping clients achieve strategic utility and design patent protection and navigate the IP landscape for their products. Dan is currently Vice Chair of the Intellectual Property Owners Association Industrial Design committee.

Dan specializes in developing a full product-based patent protection strategy, which means working with inventors to zero in on a new product’s innovative features. Based on this, Dan prepares design and utility patent application strategies that intermesh, working to ensure that neither application is drafted or prosecuted in a way that limits the other. Dan has experience challenging the validity of issued design and utility patents on behalf of his clients to protect their freedom to operate, as well as defending the patents of his clients when challenged. His work spans a variety of mechanical technologies and product designs, with particular focus on consumer products, packaging, and retail.

Mark D. Janis is the Robert A. Lucas Chair of Law and the Director of the Center for Intellectual Property Research at the Indiana University Maurer School of Law (Bloomington). He teaches and writes in the areas of patent law, trademark law, intellectual property protection for designs, intellectual property/antitrust, and other related areas.  He has published numerous books, book chapters, and articles on these topics. He has won INTA’s Ladas Award (in 2008), and several teaching awards.  Prior to joining the faculty at Indiana, Professor Janis was the H. Blair & Joan V. White Chair in Intellectual Property Law at the University of Iowa College of Law. He practiced patent law at Barnes & Thornburg (Indianapolis) from 1989 to 1995.

Rob Katz is a shareholder at Banner Witcoff. Both nationally and internationally, Rob is considered one of the premier practitioners in the field of industrial designs, leading the way in the procurement and enforcement of design patents. On behalf of the firm’s clients, he has helped procure more than 9,000 design patents in the U.S. and more than 25,000 design patents/registrations outside the U.S., and has helped to successfully enforce over 100 design patents. Leaders from foreign design patent offices have consulted with him regarding industrial design policies, and he has served as an expert in design patent litigations. He also prepared and filed an amicus brief in the U.S. Supreme Court on behalf of IDSA (Industrial Designers Society of America).

Ms. Valencia Martin Wallace manages and leads the Patent Organization’s efforts related to international IP harmonization and oversees patent examining functions in Technology Centers that examine the technologies of communication, mechanical engineering, manufacturing and medical devices and processes and design. 

Ms. Martin Wallace is currently the Executive Lead for the USPTO’s initiative the Council for Inclusive Innovation (CI²).  The CI², comprised of representatives from industry, academia, and government, will help the USPTO develop a comprehensive national strategy to build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.

Ms. Martin Wallace is a graduate of Howard University, where she earned a B.S. in Electrical Engineering, and The George Washington University School of Law, where she earned a Juris Doctorate. She’s also received a certificate in Advanced Public Administration from Syracuse University’s Maxwell School of Public Administration.

Darrell Mottley is a shareholder at Banner Witcoff, and the past president of the D.C. Bar. Darrell provides strategic counseling in intellectual property protection related to patent and trademark matters, including procurement, opinions, licensing and litigation. Throughout his career, Darrell has worked as an engineer, a project manager, engineering chief for the AAI Corporation, U.S. Army Belvoir Research and Engineering Development Center, and the National Oceanic and Atmospheric Administration.

Darrell is an adjunct professor at The George Washington University Law School teaching classes in design law. Darrell previously lectured on patent law at Howard University Law School. Darrell is a contributing author to the Thomson Reuters published book, Navigating Fashion Law: Leading Lawyers on Exploring the Trends, Cases, and Strategies of Fashion Law, in which he authored the section “The Tools for Protecting Fashion Law Clients.” He is also a contributing author to the ABA-published book, Annual Review of Intellectual Property Law Developments, in which he authored the section “Design Patent Infringement – Egyptian Goddess.” He currently serves on the editorial board for the ABA’s Landslide magazine.

Sonia Okolie is an attorney at Banner Witcoff, where she primarily handles design patent and trademark prosecution and counseling for several Fortune 500 clients. As an associate, Sonia leverages her seven years of experience at Banner, where she began working in the design patent department full-time, while attending law school at The George Washington University. Sonia attended college at Georgetown University, and currently works in Banner’s Washington, DC office.

Perry Saidman is a recognized pioneer in design law. He has more than 40 years of experience providing strategic advice and design protection and enforcement strategies. His expertise in design patent prosecution issues facilitates resolution of difficult or unusual cases. In 1988 he litigated the seminal design patent infringement case Avia Group Int’l. v. L.A. Gear Cal. Inc., 853 F.2d 1557 (Fed. Cir.). Over the years he has authored notable appellate briefs, including as amicus curiae on behalf of Apple Inc. in the Federal Circuit’s 2008 en banc decision of Egyptian Goddess v. Swisa, and in the Federal Circuit’s 2014 case Apple v. Samsung. When the U.S. Supreme Court granted certiorari in that case, he penned an amicus curiae brief on behalf of 14 companies regarding the total profit rule of 35 U.S.C. § 289.

As a prolific author and speaker, and in his private practice, Perry takes on many seemingly intractable design law issues of the day, including functionality, anticipation, obviousness, infringement and damages. He is very active in bar associations, including the Design Rights Committee of the IPO, INTA’s Design Rights Committee, and AIPLA’s Industrial Designs Committee which he founded in 1989. He has taught Design Law as an adjunct professor at G.W. Law School, and testified before the House Judiciary Committee regarding the auto replacement parts bill. His most recent papers involve the hot button issues of design patent anticipation, the written description requirement under sec. 112, functionality, and determining the article of manufacture under 35 U.S.C. 289. He also authors a blog at designlawperspectives.com covering recent design law cases and happenings.

Richard Stockton is a shareholder at Banner Witcoff. He renders holistic intellectual property counseling, prosecution and litigation advice to his clients.

Richard’s areas of interest include design patents and the protection and enforcement of designs across various rights and jurisdictions.  Other areas of interest include the extraterritoriality of US IP rights and remedies, and how historical precedent and procedure shape IP rights and remedies today. Richard also has governmental relations and policy experience. He has prepared draft legislation, and served as a legislative extern to the Illinois House of Representatives. Richard was also a Congressional intern during the 104th Congress.