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Nathan Kelley, Former Solicitor and Deputy General Counsel at the USPTO, Joins Perkins Coie

By on November 7, 2018 in Announcements

Nathan Kelley has joined Perkins Coie’s Intellectual Property practice as a partner in the Washington, D.C., office. Kelley recently stepped down as the Solicitor and Deputy General Counsel for Intellectual Property Law at the U.S. Patent and Trademark Office (USPTO). Kelley earlier acted as the USPTO’s Chief Administrative Patent Judge in charge of the Patent Trial and Appeal Board (PTAB).

“Nate is one of the foremost intellectual property lawyers in the country, and he is widely respected for his litigation experience and ability,” said Shannon Bloodworth, Co-Chair of Perkins Coie’s IP practice. “His deep knowledge of the USPTO and Federal Circuit will broaden and strengthen our nationally ranked team of IP litigators. He is a significant addition to our team, and we’re thrilled that he has chosen to join us.”

In a release, the firm said that, as Solicitor, Kelley defended the Director of the USPTO in court, managing all IP litigation. He participated in patent and trademark cases in recent years, including Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, Aqua Products, Inc. v. Matal, In re Cuozzo Speed Technologies, LLC, and Novartis AG v. Noven Pharmaceuticals Inc.

During his term as Solicitor, Kelley defended hundreds of decisions of the PTAB and the Trademark Trial and Appeal Board (TTAB) before the Federal Circuit. Kelley also advocated the USPTO’s position during interagency deliberations on IP cases before the U.S. Supreme Court, including WesternGeco LLC v. ION Geophysical Corp., B&B Hardware, Inc. v. Hargis Industries, Inc., Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., and Alice Corp. v. CLS Bank International. He also oversaw the USPTO’s defense of numerous district court cases against it.

In his role as Solicitor, Kelley also developed USPTO rules and regulations, helped shape federal policy on various IP matters, and he counseled the Office on the implementation of the America Invents Act.

Before becoming Solicitor, Kelley served as an Associate Solicitor at the USPTO for six years. Before that, he worked for six years with the Federal Circuit, first as a member of its permanent legal staff and then as a law clerk for Circuit Judge Randall Rader.

At Perkins Coie, Kelley will focus his practice on Federal Circuit appeals, inter partes reviews (IPR) at the PTAB and related USPTO work, and advising clients on IP strategy and policy more generally.

In addition to augmenting the firm’s IP practice, Kelley provides another boost to the firm’s thriving Washington, D.C., office. “Our Washington office has seen exponential growth over the past decade. We now have 130 lawyers, with a substantial number of new additions that deepen our regulatory and administrative law practices,” said Bill Malley, Managing Partner of Perkins Coie’s Washington, D.C., office. “Nate’s hiring furthers this trend of adding senior-level lawyers with impressive federal government experience. We’re excited to have him on board.”

Along with Kelley, other additions to the firm’s Washington, D.C., office in 2018 include Stephanie Roy (Technology Transactions & Privacy), Robert Burgoyne (Commercial Litigation), Nir Margalit (Real Estate & Land Use), and Valerie Dahiya (Investment Management).

 

 

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