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Skillful Patent Agent resume

Andrew B. Turner
Core Skills

Patent Prosecution • Patent Portfolio Management • Post-Grant Proceedings • Patent Litigation

Summary
Patent Attorney experienced with patent preparation and prosecution, international patent portfolio management, post-grant proceedings and patent litigation. Former electrical/mechanical engineer in the automotive industry with experience in R&D, program management, and application engineering. Technical experience with various electro-mechanical automotive systems, electronics, software, infotainment, wireless communication, audio and lighting systems, and computer hard drives. Legal experience with 20+ inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB) and parallel litigation in district court, the Court of Appeals for the Federal Circuit (Federal Circuit), and the International Trade Commission (ITC).
Legal Experience
Shareholder (2018) • Associate (2013-2018) • Patent Agent (2008-2013), 02/2008 to Current Brooks Kushman P.C. Southfield, MI
Patent Prosecution:
  • Prepare and prosecute patent applications before the U.S. Patent and Trademark Office in diverse mechanical and electrical technologies for diverse clients.
  • Prepared over 100 original U.S. patent applications, prosecuted over 100 U.S. patent applications.
  • Experience with international patent prosecution in many countries, including: China, Europe, Korea, Japan, India, Canada, Mexico, Singapore, Brazil, Gulf Coast Cooperation. 
  • Provide legal counseling regarding prosecution strategy.
  • Patent portfolio management: mining invention disclosures, assisting patent review boards, conducting novelty searches, evaluating search results, evaluating allowed claims in view of commercialized products, and counseling regarding maintenance fees.
  • Prepare patentability, clearance, invalidity, and non-infringement opinions.
  • Mentor clerks, associate attorneys, and new client attorneys.
  • Coordinate licensing and trademark efforts.
  • Large clients include: Ford, Harman, and Lear.
 Post-Grant Proceedings:
  • Successfully represented Ford as petitioner in 25 IPR proceedings, 270+ claims found unpatentable.
  • Developed strategies to challenge hundreds of claims in 5 related patents.
  • Prepared petitions, replies, and motions. Assisted experts prepare declarations. Deposed and defended experts. Participated in oral arguments.
  • Representative Case Nos.: IPR2014-00570, -00875, -01415, 15-00785, and -00801 (PTAB, 2014-2018). 
  • Experience with Ex Parte Reexaminations.

ITC Litigation:

  • Represented Ford in Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-1042 (ITC, 2017-2018).
  • Assisted experts prepare invalidity reports, non-infringement reports, and witness statements. Prepared experts and witnesses for depositions and cross examination. Coordinated discovery production and source code review. Drafted interrogatories, requests for production, and requests for admissions. Prepared pre- and post-hearing briefs, claim construction briefs, and motions. Participated in the hearing and settlement discussions.

Appellate/District Court Litigation:

  • Successfully represented Ford in 22 IPR appeals, hundreds of claims affirmed invalid.
  • Prepared motions and initial briefs and supported oral argument preparation.
  • Representative Case Nos.: 16-1411, -1647, and 17-1387 (Fed. Cir., 2016-2018); Paice, LLC et al v. Ford Motor Company, MDD-1-14-cv-00492 (MD, 2014-2018).

Admissions and Associations
  • Admissions: USPTO 63,121 (2008), State Bar of Michigan P77772 (2013), Federal Circuit (2016).
  • Associations: Michigan Intellectual Property Association (MIPLA), PTAB Bar Association.
Industry Experience
Applications Engineer (Onsite Resident Engineer at GM Tech. Center), 05/2006 to 02/2008 Valeo Inc, Electrical Systems Division Auburn Hills/Troy, MI
  • Supported GM Production as point contact for the design and release of alternators. 
  • Coordinated validation and production of alternators with Valeo personnel in France and Mexico. 
  • Supported GM Global Alternator Development Programs with GM personnel in US, EP, and Asia. 
  • Led the investigation of vehicle charging system issues.
Systems Engineer • Product Engineer • Engineering Student, 01/1999 to 05/2006 Dura Automotive Systems, Inc. Rochester Hills, MI
  • Led R&D and production of fixed/adjustable pedal systems for 2008-09MY Chrysler/Jeep Programs. 
  • Supported R&D and production of electric parking brake systems for Ford Programs. 
  • Co-Inventor of U.S. 7,014,017 titled Electronic Parking Brake Actuating Assembly.
  • Retrofit development vehicles with prototype electro-mechanical systems, including using a gateway to translate different communication protocol.
Engineering Student, 09/1997 to 01/1999 Peko Precision Products, Inc. Rochester, NY
  • Designed automation equipment using AutoCAD.
  • Supported toolmakers and electricians in fabrication efforts.
Education
Juris Doctorate: 2012 Wayne State University Law School Detroit, MI

3.29 GPA, Rank: 64 of 168

Bachelor of Science: Electrical Engineering, 2005 Oakland University Rochester Hills, MI

3.55 GPA

  • Senior Design Project: Wireless Control of an Adjustable Firing Mechanism.
Bachelor of Science: Mechanical Engineering (with MGT Minor), 2002 Kettering University (formerly G.M.I.) Flint, MI

3.4 GPA

  • Thesis Project: Adjustable Pedal System Efficiency Analysis.
  • Capstone Project: Aneurysm Occlusion Treatment Device.
  • Participated in International Study Abroad Program at F.H.T.E. in Esslingen, Germany 2000.
  • Passed the Fundamentals of Engineering / Engineer in Training (EIT) Exam, 2002.
Presentations and Publications
  • PTAB Designates Two New Informative Decisions . . . , BK Client Alert, March 2018.
  • “2017 IP Litigation and PTAB Year in Review,” co-presenter, BK Webinar, February 2018.
  • Federal Circuit Rules that PTAB Rejection of IPR Time-Bar Defense is Reviewable, co-author, BK Client Alert, January 2018.
  • PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues, co-author, BK Discussion Board, January 2018.
  • Supreme Court To Review PTAB Practice Of Partially Reviewing IPR Petitions, co-author, BK Client Alert, June 2017.
  • "P.C.T. Applications," guest lecturer, Wayne State University Patent Preparation Class, 2014.
Community Service
  • Youth baseball coach/assistant coach, 2014-present.
  • Reading tutor at Detroit Public Schools, 2015-2016.
  • Cub Scout Den Leader, 2012-2013.
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