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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.

Industries

Services

Education

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

Admissions

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

Professional Memberships and Certifications

  • PTAB Bar Association
  • Intellectual Property Law Association of Chicago
    • Vice Chair, AIA Trials Committee


*Contact Nathan to set up an in-person consultation by appointment in the Chicago office.
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.
  • Earned a high-profile victory for wireless medical device company before the Patent Trial and Appeal Board (PTAB), knocking out all disputed patent claims (175 in total) across eight related IPR petitions. The Board also reversed its previous stance on several patentability issues at stake in the IPRs, instead finding in the Final Written Decisions that the full record supported the client's arguments.
  • Prevailed before the U.S. Court of Appeals for the Federal Circuit on behalf of Sotera Wireless as it successfully invalidated eight of a competitor's patents in final, non-appealable judgments. Husch Blackwell had previously knocked out all disputed patent claims—175 in total—across eight related inter partes review (IPR) petitions before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, resulting in a precedential PTAB decision that provides a strategy for petitioners to avoid discretionary denial of IPR under the Fintiv factors. (Not all decisions by PTAB are marked precedential, but the Board found Husch Blackwell's arguments and methods so useful that it marked this decision precedential to help future IPR parties in navigating PTAB procedure. Read more here.)
Outside the Office

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