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Overview

Nathan’s practice touches on all areas of intellectual property law, balancing between patent prosecution and litigation.

As an electrical engineer and former U.S. Patent and Trademark Office (USPTO) Patent Examiner, Nathan knows that details matter. He now works directly with in-house counsel, engineers and inventors, protecting their technologies and developments. Nathan has significant experience petitioning the USPTO’s Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) – proceedings often viewed as less costly and more expeditious than traditional litigation. His experience prosecuting patents and drafting invalidity contentions has granted him insights on successfully petitioning the PTAB to institute IPR proceedings on challenged patents.

In his transactional intellectual property practice, Nathan drafts and prosecutes domestic and international patent applications in a range of technologies, including artificial intelligence, fiber optics, embedded circuits, Internet of Things (IoT), security systems, medical benefit managers, and cloud-based innovation and virtualization. Relying on Nathan's counsel, clients have sought and received patent protection in China, India, Japan, the European Union, Great Britain, Canada, Mexico, Australia, Brazil, Israel and the United Arab Emirates.

Nathan is also an experienced intellectual property litigator and serves as a technical advisor in patent infringement cases. Nathan produces work product for major patent litigation milestones, including claim construction, invalidity and infringement contentions. He assists in significant discovery projects to discover and assemble product-based invalidity positions.


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Education

  • J.D., Michigan State University College of Law
    • Intellectual Property
    • Dean's List
  • B.S., Calvin College
    • Electrical Engineering

Admissions

  • Illinois
  • District of Columbia
  • U.S. Patent and Trademark Office

Professional Associations and Memberships

  • PTAB Bar Association
  • Intellectual Property Law Association of Chicago
Experience
  • Routinely defended patent clients in preparing and filing petitions seeking inter partes review (IPR) challenging the validity of asserted patents. Most petitions resulted in cancellation of challenged claims or settlements favorable to client.
  • Represented global manufacturer in IPRs challenging validity of patents held by multinational technology company involving fiber optic polarity management and storage.
  • Served on legal team that successfully defended several subsidiaries of Fortune 500 manufacturer in consolidated Eastern District of Texas patent infringement suit brought by large and well-financed Canadian patent troll (Automation Middleware Solutions Inc. v. Emerson Process Management LLP, et al.)
  • Successfully invalidated all asserted patents on indefiniteness grounds representing LED manufacturer vs patent troll.
  • Obtained dismissal on patent subject matter eligibility grounds of suit brought by competitor against narrative artificial intelligence (AI) company.
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Outside the Office

Nathan is an avid trivia and fantasy football competitor, and enjoys playing golf on the weekends.