John Doll
`300 Lake Mist Drive
`Mooresville, NC 28117
`WebSite: www.johnjdoll.com
`Email: johnjdoll@gmail.com
`Phone: 704 658 2358 Cell: 410 610 1252
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`Expert Witness and Consultant on USPTO Practice and Procedure
`October 2009 to Date
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`Cases
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` Association for Molecular Pathology et al. v. Myriad Genetics et al.
`o United States District Court for the Southern District of New York
`o United States Supreme Court
`o Statutory Subject Matter with respect to Genetic Material
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`• Kathrein-Werke KG v. Radiación y Microondas S.A., and Rymsa Micro
`Communications, Inc.
`o United States District Court for the Northern District of Illinois Eastern District
`o Validity and Infringement with respect to US Patent 6,850,130
` Deposed
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`• King Drug Company of Florence Inc., et al. v. Cephalon, Inc., et al.
`• Vista HealthPlan, Inc., et al. v. Cephalon, Inc., et al.
`• Apotex, Inc. v. Cephalon, Inc., et al.
`o United States District Court for the Eastern District of Pennsylvania
`o Antitrust Litigation re US Patent 5,618,845 and RE37,516
` Deposed
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`• Fujitsu Limited v. Tellabs Operations, Inc. and Tellabs, Inc.,
`• Tellabs Operations, Inc. v. Fujitsu Limited and Fujitsu Network Communications, Inc.
`• Fujitsu Limited v. Tellabs Operations Inc., Tellabs Inc., and Tellabs North America Inc.
`o United States District Court for the Northern District of Illinois Eastern Division
`o Inequitable Conduct during the Prosecution of US Patents 7,227,681 and
`5,526,163
` Deposed
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`• Tekmira Pharmaceuticals Corporation and Protiva Biotherapeutics, Inc. v. Alnylam
`Pharmaceuticals, Inc. and Alcana Technologies, Inc.
`o Commonwealth of Massachusetts, Suffolk Superior Court, Business Litigation
`Session
`o Trade Secret Misappropriation and New Matter
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`• Prism Technologies v. AT&T Mobility, Sprint Spectrum, T-Mobile USA, US Cellular
`Corp, Cellco Partnership aka Verizon Wireless
`o United States District Court for the District of Nebraska
`o Priority Date Asserted in US Patents 7,290,288 and 8,107,345
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`• AbbVie Biotechnology Ltd. and Abbott BmbH & Co. vs. Inter-Lab Ltd. and Merck
`Serono S.A.
`o World Intellectual Property Organization Arbitration and Mediation Center
`o Arbitration regarding the Validity for US Patent 8,090,923
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`• Cold Spring Harbor Laboratory v. Ropes & Gray, LLP and Matthew P. Vincent
`o United States District Court for the District of Massachusetts
`o Malpractice Suit
` Deposed
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`• E.I. du Pont de Nemours and United States of America v. Kolon Industries
`o United States District Court for the Eastern District of Virginia, Richmond
`Division
`o Trade Secret Suit
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`• Koninklijke Philips Electronics and Philips Electronics North America v Zoll Medical
`o United States District Court for the District of Massachusetts
`o Trade Secret Suit
` Deposed
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`• Intellectual Ventures I LLC v Honorable Teresa Stanek Rea, USPTO
`o United States District Court for the Eastern District of Virginia, Alexandria
`Division
`o Appeal under 35 USC 145
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`• I/P Engine Inc and Vringo v. AOL Inc, Google Inc, IAC Search & Media Inc, Gannett
`Company Inc, Target Corporation
`o Court of Appeals for the Federal Circuit
`o Reexamination Appeal
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`• SoftView LLC v. Apple, AT&T Mobility, Dell, HTC, Huawei, Kyocera, LG, Motorola,
`Samsung
`o United States District Court for the District of Delaware
`o Patent Validity
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`• G.D. Searle and Pfizer Asia Pacific v. Lupin Pharmaceuticals, Teva Pharmaceuticals,
`Mylan Pharmaceuticals, Watson Laboratories, Apotex Pharmaceuticals
`o United States District Court for the Eastern District of Virginia, Norfolk
`Division
`o ANDA Patent Validity Challenge
` Deposed
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`• Ethox Chemicals, LLC and James Tanner v. The Coca-Cola Company
`o United States District Court for the District of South Carolina, Greenville
`Division
`o Inventorship Dispute
` Deposed
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`• Creative Integrated Systems, Inc v. Nintendo of America, Inc; Nintendo Co, Ltd;
`Macronix America , Inc; and Macronix International Co, Ltc and DOES 1-10 Inclusive
`o United States District Court for the Central District of California, Southern
`Division
`o Duty of Disclose and Inventorship
` Deposed
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` XY, LLC v. Trans Ova Genetics L.C. v. Inguran, LLC
`o United States District Court for the District of Colorado
`o Patent Validity Challenge
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` W.L. Gore & Associates Inc v. C.R. Bard Inc and Bard Peripheral Vascular Inc
`o United States District Court for the District of Delaware
`o Patent Validity Challenge with respect to Duty of Disclosure
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`Other Patent Practice and Procedure Work
`October 2009 to Present
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` Moderated Panel Discussion of Hot Topics in Patent Law for the 9th Annual Symposium
`at George Mason University School of Law
`• Lectured on current USPTO practice and procedure as well as current Office programs
`to promote green, expedited and quality Patent Application examination – Wisconsin
`Alumni Research Foundation (WARF).
`• Worked with Ditthavong Mori & Steiner (Alexandria Virginia and Osaka Japan) to
`recruit new clients in Japan by presenting the firms’ ability to advantageously use current
`USPTO practice and procedure to promote early patent grants and addressed the
`International Association for the Protection of Intellectual Property of Japan (AIPPI).
`• Worked with CGI International, Fairfax Virginia, to provide subject matter expertise
`with respect to the patent filing, examination through issue / abandonment / appeal
`process for an Information Technology XML Patent end to end process.
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`USPTO Experience
`September 1974 to October 2009
`
`Acting Under Secretary of Commerce for Intellectual Property and
`Acting Director of the United States Patent and Trademark Office
`January 2009 to August 2009
`Served as the Acting Under Secretary and Acting Director of the United States Patent and
`Trademark Office during the change of Administration. As the Acting Under Secretary,
`advised the President, the Secretary of Commerce, and the Administration about all
`intellectual property matters. As Acting Director, administered the laws of granting Patents
`and Trademarks, and the day-to-day management of the $2.1 billion Agency for over 10,000
`employees. Developed and articulated Administration positions on all Patent, Trademark
`and Copyright issues while promoting strong Intellectual Property policy globally, including
`strategies to thwart the theft of U.S. Intellectual Property around the world.
`
`Deputy Under Secretary of Commerce for Intellectual Property and
`Deputy Director of the United States Patent and Trademark Office
`November 2008 to September 2009
`Assisted the Under Secretary in developing and promoting Administration positions on all
`Patent, Trademark and Copyright issues domestically and internationally. Served as the
`Chief Operating Officer in planning, measuring and improving the mission performance and
`achievement of the Agency. Responsible for maintaining and growing domestic and
`international leadership roles in Intellectual Property Rights policy by strengthening
`Intellectual Property protection. Also responsible for providing customers with the highest
`levels of quality and service in all aspects of Agency operations.
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`Commissioner for Patents
`August 2005 to October 2009
`Appointed by the Secretary of Commerce and served as the Chief Operating Officer for all
`aspects of patent related operations, planning and policy with the mission of properly
`applying the patent laws and regulations of the United States in the examination of patent
`applications. Oversaw a budget of $1.3 billion and a staff of over 7000 employees.
`Responsible for Patent’s strategic planning and execution, budget formulation and execution,
`information technology systems, staffing, employee development, labor management
`relations, customer outreach, congressional relations, public advisory committee relations,
`and patent policy formulation.
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`Acting Commissioner for Patents
`April 2005 to August 2005
`Appointed by the Under Secretary of Commerce for Intellectual Property and the Director
`of the United States Patent and Trademark Office to perform the duties of the
`Commissioner for Patents until the Secretary of Commerce appointed a new Commissioner
`for Patents.
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`Deputy Commissioner for Patent Resources and Planning
`January 2005 to August 2005
`Responsible for the formulation and execution of the $1.3 billion budget as well as strategic
`planning for the Patent Office
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`Special Assistant to the Director of the United States Patent and Trademark Office
`March 2004 to January 2005
`Provided technical, examination and legal advice on all Patent related issues
`
`Director of Patent Examination Technology Center
`August 1992 to January 2005
`Responsible for all patent examination issues in the chemistry, chemical engineering,
`pharmaceutical, biotechnology and design art areas
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`Patent Examiner, Supervisory Patent Examiner, Quality Assurance Examiner
`September 1974 to August 1992
`Examined and supervised the examination of patent applications encompassing
`pharmaceuticals, herbicides, pesticides, dyestuffs, inorganic chemistry, hydrometallurgy,
`zeolite catalysts, buckministerfullerenes, proteins, and peptides
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`Awards
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`Department of Commerce Bronze Medal for examination and supervisory accomplishments;
`a second Bronze Medal for the implementation of Patent Application Location and
`Monitoring (PALM) system; a Department of Commerce Silver Medal for the development
`of automated examiner office action tools; the Vice Presidential Hammer Award for
`establishing the Biotechnology Customer Partnership; a Department of Commerce Gold
`Medal for implementation of the Image File Wrapper system.
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`Education:
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`MS
`BS
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`Articles Authored or CoAuthored:
`
`The Patenting of DNA, Science, Vol 280, May 01, 1998, pp 689-690
`Recent Performance of the CRU in Inter Partes Reexamination, IP Law360, Jan. 26, 2010
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`Physical Chemistry The Pennsylvania State University 1974
`Chemistry / Physics Bowling Green State University
`1971
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