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The Right Way to Calculate Due Dates in Europe and China
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Schwegman Lundberg & Woessner

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Timothy Bianchi
Areas of Practice
  • Electrical & Computers
  • Life Sciences
  • Mechanical & Electromechanical
  • Medical Devices
  • Software & E-Commerce
IP Services
  • Acquisition Due Diligence
  • Foreign Rights
  • Freedom To Operate
  • Licensing
  • Opinions
  • Patent Analytics
  • Patent Prosecution
  • Portfolio Management & Analysis
  • Post-Grant Proceedings
Overview
Education
Bar Admissions & Associations
Speaking Engagements
Contested Matters
Overview
Overview

Timothy E. Bianchi is a principal at the Schwegman firm. He is active in patent prosecution, patent litigation, post-grant proceedings, due diligence and acquisitions. He litigates patent office trials before the Patent Trial and Appeal Board (PTAB), including inter partes reviews, covered business method patent reviews, and post-grant reviews. His blog covers patent prosecution, patent office trials, patent litigation, and ex parte reexamination (www.ReexamLink.com).

Education
Education

William Mitchell College of Law
St. Paul, MN, 1994, J.D.
Honors: Magna Cum Laude

University of Minnesota

 M.S.E.E., 1988, Honors

University of Minnesota

B.S.E.E., 1986, Honors
Eta Kappa Nu

Bar Admissions & Associations
Bar Admissions & Associations

Bar Admissions
Minnesota
U.S. Court of Appeals Federal Circuit
U.S. Patent and Trademark Office

Associations

American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
American Bar Association
Minnesota State Bar Association
Hennepin County Bar Association
Institute of Electrical and Electronics Engineers
Federal Circuit Bar Association
Patent and Trademark Office Society

Speaking Engagements
Speaking Engagements
PTAB Current Issues

The Naples Patent Experts Roundtable, Naples (2017)

Ready for a Challenge? The Impact of IPRs on Patent Management

Iowa Intellectual Property Law Association, Riverside (2016)

The Efficacy of Post-Grant Challenges in Patent Litigation

MinnCLE Midwest IP Institute, Minneapolis (2016)

Rules of the Game: An Update On Practice and Procedures in PTAB

AIPLA Spring Meeting, Minneapolis (2016)

Securing Intellectual Property Protection for 3D Printed Models and Devices

MD&M Minneapolis Conference (2016)

PTAB Update

Minnesota CLE, Minneapolis (2016)

Posturing IPRs for Early Settlement

Patexia Webinar Series (2016)

Integrating Your PTAB and District Court Strategies

Midwest IP Institute, Minneapolis (2015)

PTAB Practice: Petitions and Preliminary Response Strategies

Practicing Law Institute, San Francisco (2015)

Patent Office Trials

New York State Bar Association, New York (2015)

Patent Office Trials under the America Invents Act

Association of Corporate Patent Counsel, Chicago (2014)

Petition Strategies for AIA Post-Grant Trials

AIPLA Spring Meeting, Philadelphia (2014)

PTAB Practice: Petitions and Preliminary Response Strategies

Practicing Law Institute, San Francisco (2014)

Effective PTAB Practice Under the AIA

Law Seminars International Best Practices in Patent Monetization, San Francisco (2014)

Patent Office Trials under the America Invents Act

The Institute of Patent and Trademark Attorneys of Australia (2014)

Patents, Policy, Politics and Practice: Are Non Practicing Entities Everything the Media Claims?

Minnesota CLE, Minneapolis (2013)

Observations from Recent Federal Circuit Decisions Affecting the PTO

Partnering in Patents, U.S. Patent & Trademark Office, Arlington (2013)

A Year of PTAB Post-Grant Proceedings

Minnesota CLE, Webinar (2013)

Prosecution in view of the New AIA Post-Grant Proceedings

Tips for the Prosecution Team (2013)

AIA Post-Grant Proceedings Overview

Midwest Intellectual Property Institute, Minnesota Intellectual Property Law Association, Minneapolis (2013)

AIA Post-Grant Trial Topics

AIPLA Spring Meeting, Seattle (2013)

Patent Office Trial Proceedings: A 3 Part Series on IPR and CBM Basics, Strategies, and Nuts and Bolts of Preparing and Filing an Inter Partes Review

Minnesota CLE, Minneapolis (2013)

The America Invents Act: Final USPTO Rules for 35 U.S.C. § 102

Client Webinar (2013)

Medtech Niche Markets

The Collaborative, Minneapolis (2013)

Post-Issuance Patent Review and the America Invents Act

Iowa Intellectual Property Law Association, Bettendorf (2012)

The New Post-Issuance Review Landscape

Midwest Intellectual Property Institute, Minnesota Intellectual Property Law Association, Minneapolis (2012)

Topics on Post-Grant Review

Minnesota Intellectual Property Law Association, covering recent changes in the law of post-issuance procedures, including post grant review, inter partes review, and ex parte reexamination.  Discussed the role of the America Invents Act (AIA) in patent prosecution and litigation.  Discussed recent cases including Marine Polymer v. Hemcon (Fed. Cir. 2012, en banc), and In re Baxter(Fed. Cir. 2012), (Minneapolis, 2012)

The New Patent Law

Minnesota State Bar Association CLE. Tim spoke on “New, Revised and Now-Extinct Post-Issuance Proceedings”  This speech covered changes to post-issuance practice under the America Invents Act (AIA), in particular, post-grant review, inter partesreview, inter partes reexamination, ex parte reexamination, supplemental examination, and covered business methods under the AIA.  (Minneapolis, 2011)

A Closer Look at Reexamination in 2011 and Beyond

10th Annual Midwest Intellectual Property Institute for Minnesota CLE (Minneapolis, 2011)

Strategic Use of Reexamination after Patent Reform – Post-Grant Review and Inter Partes Review

AIPLA Electronics & Computer Patent Law Summit, St. Paul, MN (2011)

Entrepreneurial Resources Session

Minnesota High Tech Association (MHTA) Spring Conference, Minneapolis (2011).

Tools, Materials & Adaptive Engineering

Minnesota Medtech Businesses Thrive in Myriad Therapies – The Collaborative Convergence Series on Medtech, Minneapolis (2011).

Recent Decisions on Joint Infringement and Extraterritoriality and their Impact on Computer Network Inventions

AIPLA Winter Meeting, Orlando (2011) 2010

Patent Reexamination: The New Strategy for Litigating Infringement Claims

Strafford CLE National Webinar (2010)

Advanced Patent Prosecution: Hot Topics in 2010: Statutory Subject Matter

Minnesota CLE (2010)

Intellectual Property and Venture Capital

The Collaborative (2010)

Litigation and Prosecution: Tips for the Litigation Team

Minneapolis (2010)

Comments on Proposed Changes in Restriction Practice

MIPLA Patent Prosecution Committee (2010)

Inter Partes Reexaminations: Aspects for Prosecution and Litigation

Midwest IP Institute, (2009)

Developments and Trends in Patent Law in 2009: Effects of KSR v. Teleflex on Patent Practice, Impact of Inter Partes Reexaminations on U.S. Patent Litigation, Patent Reform Law Proposals, Joint Infringement, and Extraterritoriality Issues

Clarion Legal at Thomson Reuters, Inver Grove Heights (2009)

Role of Intellectual Property in Financing Companies

The Collaborative (2009) 2008

In re Bilski (en banc Federal Circuit Decision)

MIPLA Patent Prosecution Committee(2008)

Administrative Deference: The Federal Court Deference to PTO Rulemaking

MIPLA Patent Prosecution Committee (2008)

Intellectual Property and Financing

The Collaborative, Minneapolis (2008)

IP Basics for the Busy CEO

Vistage Seminar, Minneapolis (2008)

The Use of Evidence in Patent Prosecution: Rebutting Obviousness after KSR v. Teleflex, AIPLA Electronics and Computer Law Roadshow

Washington D.C. and Minneapolis (2007)

Prosecution Practices for Litigation

Midwest IP Institute (2006)

Recent Decision on Obviousness – Dystar Textilefarben v. C.H. Patrick

MIPLA Patent Prosecution Committee (2006)

Patent Portfolio Topics for Medical Device Companies

Minneapolis (2006)

Quoted in MDDI Magazine Article: The Art of Intellectual Property (2006)

Inventor Issues Panel Discussion

Loyola Law School, Los Angeles (2006)

Basics of Contributory Infringement

MIPLA (2005)

Competitive Assessment from a Patent Perspective: Metrics and Strategies, Intellectual Asset Management

Minnesota State Bar Association (2005)

Claim Construction in view of Phillips v. AWH, MIPLA (2005)

Basics of Inducing Infringement

MIPLA Patent Prosecution Committee (2004)

Patenting Implantable Medical Devices Employing Software

Minnesota CLE (2004)

Competitive Analysis of Patent Portfolios, Intellectual Asset Management

Minnesota State Bar Association (2004)

IP Essentials

Hennepin County Bar Association (2004)

Hot Topics in Patent Prosecution: Honeywell v. Hamiliton Sundstrand and The Knorr-Bremse Case – Adverse Inferences No Longer Necessary From Assertions of Privilege

SLW Webinar (2004)

A Summary of Festo Decisions

MIPLA Patent Prosecution Committee (2003)

Pioneer Magnetics v. Micro Linear Corp. – A Precursor to Festo IX

MIPLA Patent Prosecution Committee (2003)

Patent Portfolio Management for Medical Device Companies

Biomedical Alley Conference, Minneapolis (2003)

Patent Damages from a Business Perspective

SLW CLE Webinar (2002)

Coordinating Domestic and International Patent Applications

MILE Seminar (2002)

IP for New Companies: Get Your IP Ready for Investment

The Collaborative, Minneapolis (2001)

E-Commerce and Business Method Patents

Minnesota State Bar Association, Minneapolis (2000)

Patent Portfolio Management: Getting Up to Speed

AUTM Central Regional Meeting, Cincinnati (2000)

Prosecution of Computer-Related Inventions from the Practitioner’s Perspective

AIPLA Advanced Computer and Electronics Patent Practice Seminar, San Francisco and New Orleans (2000)

Contested Matters
Contested Matters
Hamilton Beach Brands v. F’Real Foods, LLC (2016-present)
  • Counsel for Patent Owner in multiple IPRs and other post-grant proceedings
Polygroup v. Willis Electric (2015-present)
  • IPR and litigation co-counsel in multiple IPR and district court actions
Westway Feed Products, LLC v. Pellet Technology USA, LLC (2016)
  • Counsel for Patent Owner in IPR

Unwired Planet v. Square (2015)

  • Counsel for Patent Owner in multiple CBM patent reviews
HM Electronics v. 3M (2015/16)
  • Counsel for Patent Owner 3M in multiple IPRs
Polygroup v. Willis Electric (2014)
  • IPR and Reexamination Counsel in multiple IPR and reexamination proceedings
Unwired Planet v. Google (2014-present)
  • Counsel for Patent Owner in parallel IPR and CBM trials
Universal Electronics, Inc. v. Universal Remote Control (2013/2014)
  • Counsel for Petitioner in multiple IPRs and Litigation Support
Cardinal Commerce Corp. v. SignatureLink, Inc. (terminated by early settlement)
  • Counsel for Petitioner in CBM
Pack Pharmaceuticals v. Alza Corporation (terminated by early settlement)
  • Counsel for Petitioner in IPR
Adaptive Sonics v. Starkey Laboratories, Inc. (2012)
  • Defensive due diligence, case strategy and posture, pre and post-suit communications
Toro v. MTD Products (2011)
  • Patent law expert for Toro (patent owner) – litigation strategy with litigation team
Xerox Corp. v. Google, Inc., et al., (2010)
  • Inter partes reexamination counsel
Barnesandnoble.com, llc v. Xerox Corp. (2010)
  • Ex parte reexamination counsel
e.Digital v. Pentax (2010)
  • Ex parte reexamination counsel
Northrop Grumman Systems Corporation v. Siemens Audiologische Technik GMBH et al. (2010)
  • Defended client as second chair litigation support in patent infringement case
  • Participated in filing defensive reexamination of asserted patent
  • Presented defects in patent case to patent owner to achieve settlement
Auditory Licensing Corporation v. Starkey Laboratories, Inc. (2010)
  • Patent license case involving complex patent license issue and pending reexaminations
  • Defended client as second chair in litigation
  • Provided counsel on several patents in reexamination and about to issue from complex prosecution
Quantum Labs v. Dr. Fresh (2010)
  • Patent infringement case – orchestrated declaratory judgment action to settle case
Regents of the University of Minnesota v. AGA Medical Corp. (2010)
  • Ex parte reexamination counsel
Netlist v. Google (ongoing)
  • Interference counsel for Smart Technologies (non-party)
Vivatone Hearing Systems v. GN ReSound A/S (2008)
  • Negotiated license agreement of patent portfolio to avoid suit in EDTX
  • Advising client on complex prosecution and reexamination activities and license options
Hear-Wear Technologies v. Oticon (2007)
  • Negotiated license agreement of patent portfolio to avoid suit
  • Advising client on complex prosecution and reexamination activities and license options
Energy Transportation Group v. Siemens Hearing Instruments et al. (2007)
  • Patent Infringement Case against eight industry co-defendants
  • Second chair litigation support
  • Presented case to magistrate judge in mediation
  • Settled matter after Markman hearing
Data Recognition Corp. v. Jacobs (2006)
  • IP ownership dispute
Data Recognition Corp. v. Scan Optics, Inc (2001)
  • Patent infringement indemnification case