Tim is a former Vice Chief Administrative Patent Judge of the Patent Trial and Appeal Board and the current chair of the PTAB practice within O’Melveny’s Intellectual Property & Technology group.
Since joining O’Melveny in 2021, Tim has been counsel in over 100 inter partes review proceedings, ranking consistently as one of the nation’s most experienced attorneys before PTAB. Through his government and private sector work, Tim has extensive knowledge of patent law and practice and is particularly familiar with how PTAB rules, guidance, and decision-making fit with the USPTO’s overall policy objectives. As a result, Tim is a recognized thought leader in PTAB practice and a frequent speaker on PTAB matters.
As a former Administrative Patent Judge with seven years of government service, Tim has also adjudicated hundreds of PTAB appeals and trials. As a Vice Chief Judge, he has advised on virtually all recent America Invents Act rulemakings, trial practice guidance, and internal PTAB operating procedures. And as a Senior Legal Advisor to the Director of the USPTO, Tim has advised the agency at large on important legal and policy issues.
As part of his practice, Tim participates in co-pending district court and US International Trade Commission matters to advise to clients on how to manage the complex interactions between these tribunals and PTAB.
Prior to his government service, Tim was a partner at a large law firm, where he represented technology, telecommunications, health care, and life sciences clients in patent cases in district court, the US Court of Federal Claims, and the ITC. Prior to his legal career, Tim spent over a decade at major technology companies in both engineering and management positions, including at General Electric (Aerospace), Micron Technology, AT&T Bell Laboratories, and Lucent Technologies Bell Labs. Tim has a master’s degree in electrical engineering from the University of Pennsylvania and a law degree from Georgetown, where he graduated with honors.
- Led or advised on: AIA trial rulemaking; precedential decisions relating, for example, to, motions to amend, discretionary institution factors, section 325(d), and burden of proof on institution; section 101 and 112 examination policy; Supreme Court and Federal Circuit briefing concerning AIA trials and patent-related COVID-19 initiatives
- Authored or adjudicated hundreds of AIA trial decisions and over 500 appeals
- Litigated multi-million dollar patent disputes on behalf of Fortune 500 companies in district courts, the Court of Federal Claims, and the USITC.
- Represented international consumer electronics company through trial in a five-patent Section 337 ITC investigation involving 4G wireless infrastructure equipment; settled favorably after hearing.
- Represented multinational technology company in ITC patent trial involving tape storage library equipment; settled favorably after hearing and co-respondent obtained complete victory after continuing to a final determination.
- Represented major international consumer electronics company in ITC patent trial involving flash memory technology; obtained complete victory on all asserted patents.
- Represented multinational technology company through trial in the Court of Federal Claims involving automated postal machines; obtained summary judgment of noninfringement on all patents and claims. The US Court of Appeals for the Federal Circuit affirmed the lower court’s summary judgment.
Admissions
Bar Admissions
- District of Columbia
- New York
Court Admissions
- US Supreme Court
- US Court of Appeals for the Federal Circuit and Fourth Circuit
- US District Court, Southern District of New York
- US Court of Federal Claims
Registered to Practice
- US Patent & Trademark Office
Education
- Georgetown University Law Center, J.D., cum laude
- University of Pennsylvania, M.S., Electrical Engineering
- Drexel University, B.S., Electrical Engineering, summa cum laude
Honors & Awards
- Recommended by The Legal 500 US for Patents: Litigation (Full Coverage) (2024)
- Recognized as a leading attorney by IAM Patent 1000 (2023)
Professional Activities
Member
- Institute of Electrical and Electronics Engineers (Senior Member)
Speaker
- “Tactics & Strategies: Crafting the IPR Petition,” PTAB Masters™ 2023, IPWatchDog (January 31, 2023)
- “Administrative Post-Issuance Patent Validity Review – Proposals to Address PTAB, EPO, and JPO Shortcoming,” Naples Roundtable, Naples, Fl. (January 16, 2023)
- Panelist, “Advanced AIA Trial Practice Session,” NYIPLA PTAB Committee (December 6, 2022)
- Panelist, "PTAB Roundtable Discussion," The George Washington University Law School (September 29, 2022)
- Panelist, “The use of expert testimony in AIA proceedings,” Patent Trial and Appeal Board (PTAB) Boardside Chat webinar (September 15, 2022)
- Participant, "Berkeley Roundtable" (July 28, 2021)
- Panelist, “The PTAB Future: Dissecting the ‘Restoring America Invents Act’ and Potential PTO Reforms in a Vidal Administration,” IPWatchDog (January 27, 2022)
- Speaker, “Patent Office Policy Post-Iancu: Where Does the Office Go From Here?” PTAB Bar Association Annual Conference (September 23, 2021)
- Panelist, “Evolving Relationship Between Federal Courts and Administrative Agencies,” Sedona Conference Patent Litigation Annual Meeting (November 19, 2020)
- Panelist, “AIA Joinder post-Facebook v. Windy City,” NYIPLA PTAB Committee (October 6, 2020)
- Judge Panel, “Insider’s Perspective on Disclaimers, Estoppel, and Discretionary Denials,” PTAB Bar Association Annual Conference (September 24, 2020)
- “Oral Advocacy: Deconstructed,” USPTO Webinar (August 7, 2020)
- Judge Panel, “PTAB Discretionary Institution Practice,: Intellectual Property Organization Webinar (June 9, 2020)
- Judge Panel, “Critical Issues and Best Practices,” Practising Law Institute (April 23, 2020)
- Panelist, “Recent Developments at the PTAB,” Georgia State Bar IP Section, Atlanta, GA (January 16, 2020)
- “Discretionary Denials in AIA Proceedings,” NYIPLA, New York, NY (December 12, 2019)
- Panelist, “Serial Petitions and Discretionary Denials: Pre-Institution Strategies,” AIPLA PTAB Bench and Bar, Alexandria, VA (June 27, 2019)
- Panelist, “Interplay of PTAB, District Court, and ITC,” AIPLA Spring Meeting, Philadelphia, PA (May 16, 2019)
- Panelist, “Navigating the Interplay of Parallel Litigation with a PTAB Proceeding,” PTAB Bar Association Annual Conference, Washington, DC (March 14, 2019)
- “SAS Inst. v. Iancu: Implications and Guidance for Practitioners,” NYIPLA, New NY (October 4, 2018)
- “State of the Board,” Georgia Bar IP Section, Amelia Island, FL (September 21, 2018)
- Panelist, “Master Class on AIA Trial Proceedings,” PTAB Bar Association, Washington, DC (March 21, 2018)
- Panelist, “Discretion to Deny Institution,” American University—Unified Patents—Federal Circuit Bar Association, Washington, DC (March 15, 2018)
- Panelist, “PTAB Practice Tips,” University of Texas Advanced Patent Law Institute, Alexandria, VA (March 1-2, 2018)
- Panelist, “Institution Phase of AIA Trials,” DC Bar Association, Alexandria, VA (February 15, 2017)