Finding IP Value
Making Sense of Machine Learning
August 23, 2023
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Practices and Industries
Intellectual Property Protection & LitigationPatentsPatent LitigationBiotechnologyEmerging BusinessesDelivering value:
- As a registered patent attorney, Stephen (Steve) Hall’s primary focus involves creating patents for clients and drafting contracts around their technology.
- His mission to help clients develop and deliver audience-centered messages to drive their innovations forward is one reason why clients refer to him as a valued strategic partner
From lab to law firm, a unique story:
- Steve worked as an R&D chemist after college, and later became a lawyer to use his science background in the legal field.
- Steve has spent three decades working with scientists, physicians, and innovators as a litigator and as a patent attorney.
Two main areas:
- Biotechnology and medical therapies – Steve represents innovators in gene expression, medical diagnostics, manufacturing and purifying proteins, probiotics, vaccines, and monoclonal antibodies, among other facets of biotechnology. Some interesting patents along these lines have included therapeutic delivery through safe viral carriers, an enzyme that protects military from chemical warfare, and a novel sternal plate for enhanced healing after open heart surgery.
- Physical science and information processing – Steve has helped our client obtain dozens of patents that use video recordings of light reflected from moving machine parts to trouble-shoot problems before they become serious.
Broad capabilities:
- Clients in many other fields have entrusted their innovations to Steve in diverse areas that include chemistry, physics, and mechanical engineering.
- These opportunities have led to other interesting patents, including:
- After the disastrous explosion and oil spill of the Deepwater Horizon in the Gulf of Mexico, Steve helped our client patent its novel diesel engine automatic shutdown system for oil rigs.
- Steve helped our client patent its system for recycling automobile tires to save substantial tonnage from entering landfills.
- Steve also has worked on patents that make electrical power lines safer, protecting workers and wildlife.
- Steve also has helped clients obtain patents in the fields of energy storage, hydrogen production, chemical catalysts, sample collection, chemical detection, air filter monitoring, agriculture, food and water safety, sporting goods, and missile defense, to name some.
Relationships:
- Connection is another area of Steve’s professional strengths. To write strong patents, he takes the time to understand the challenges our clients are working to solve – both technical and logistical.
- Steve also enjoys speaking and writing about innovation. He encourages attendees to participate in the dialogue, and he finds creative ways to turn each presentation into a give-and-take session.
- Each of Steve’s presentations (listed under “Perspectives,” after Publications) enjoys its own character, because each audience is unique.
Conclusion:
- Steve enjoys his work and the client connection. He is a visual thinker and communicator, who sees his clients’ innovations as stories that must be told well.
- Clients have summed up Steve’s approach by observing that he is an “excellent communicator,” and “is straightforward, detail-oriented and understands the businesses he works with.”
REPRESENTATIVE MATTERS
- Obtained multiple biotechnology patents for our client in virus purification, therapeutic delivery through safe viral carriers, production of an enzyme that protects military from chemical warfare, and preparation of monoclonal antibodies.
- Obtained multiple patents for our client, a company that makes equipment to amplify motion in machines with moving parts, allowing problems at the sub-pixel level to be detected quickly and addressed.
- Obtained multiple patents for our client, a large metropolitan research University, in a broad range of fields that includes bioengineering, chemical, and engineering.
- Obtained foreign patents for our client, a University with strong multidisciplinary research programs, covering water quality testing and analyte detection.
- Obtained sporting goods patents for various clients including baseball equipment, bowling balls, fitness exercise, and motor sports.
- Represented our client, the plaintiff, in a patent infringement lawsuit involving electronic safes and related devices with cash management features.
- Defended our client in a patent infringement lawsuit related to drop safes and mechanical locking safes.
- Defended our client in a patent infringement lawsuit involving computer-to-plate printing methods.
- Represented our client, a developer of proprietary formulations in the animal feed industry, in the negotiation of several license agreements with large animal feed companies.
- Represented our client, the Estate of a well-known inventor and television personality, in a patent licensing program.
- Represented the petitioner, a commercial truck seller, before the state Supreme Court, successfully briefing and arguing that arbitration provisions in commercial contracts are valid and enforceable under the Constitution’s commerce clause.
EDUCATION
- J.D., University of Cincinnati College of Law, 1992
- B.A. (Chemistry), magna cum laude, University of Louisville, 1988
ADMISSIONS
- Kentucky
- United States Patent & Trademark Office
- United States Court of Appeals, Federal Circuit
- United States Court of Appeals, Sixth Circuit
- United States District Court, Eastern and Western Districts of Kentucky
HONORS
- Chambers and Partners USA 2012 – present in the area of Intellectual Property
- Woodward/White’s Best Lawyers in America® Biotechnology Law, 2008-present, and Trade Secrets Law, 2017-present
- Highest Professional AV Rating by Martindale-Hubbell Law Directory
- Kentucky Super Lawyers® in the area of Intellectual Property, 2013-present
- Recognized as one of the “Top Lawyers” in the area of Patent Law by Louisville Magazine, March 2014
PUBLICATIONS
- “Making Sense of Machine Learning,” Finding IP Value (August 2023)
- “Think Like a Champion to Get Your Ideas Noticed,” Finding IP Value (October 2022)
- Quoted in “Starting a business? These Louisville lawyers, founder offer IP advice,” Louisville Business First (November 2021)
- “Assembling the Pieces: Practical Lessons from Recent IP Posts,” Finding IP Value (May 2021)
- “Probing Questions by Courts Foretold Ruling of Patent Invalidity,” Finding IP Value (April 2021)
- “DoorDash Patent Shows Some Patents Are Granted for Incremental Advances,” Finding IP Value (April 2021)
- “Patent Invalidated Due To “Impossibility” In The Claims,” Finding IP Value (April 2021)
- “Is Inter Partes Review Unconstitutional?,” Finding IP Value (December 2017)
- “The Impact of President Trump’s IP-Related Appointments,” Finding IP Value (January 2017)
- Quoted in “Intellectual Property Law Has a Real-World Impact on Businesses,” Louisville Business First (March 2016)
- Quoted in “Many Options to Protect Intellectual Property,” The Lane Report (February 2016)
- “Changes in U.S. Patent System Bring a Fundamental Shift,” (January 2013)
- “An Overview of a Recent Court Challenge to the Protection of Biomarkers as Intellectual Property,” Hall SC, et al, Clin Chim Acta (2011), doi:10.1016/j.cca.2011.01.024.
- “Law and Medicine: Federal Appeals Court rules that Biomarker Tests are patent eligible, expect to see tests promoted, commercialized and integrated into healthcare,” (March 2010)
- “Risk Management Applications from TGN 1412 Clinical Trial,” Biotech Briefing of the American Bar Association / Section of Science and Technology, Vol. 2, No. 4, p. 3 (July 2006)
- “The Physician’s Duty and Role in Communicating with Family Members’ Regarding Results of Patients’ Genetic Testing,” April 2005.
- “Kentucky Supreme Court Adopts Separability Doctrine For Agreements to Arbitrate,” American Bar Association Section of Business Law Newsletter, Vol. 12, Issue 2, Spring 2004.
- “Court Prohibits Experts From Testifying that Cell Phones Can Cause Brain Cancer,” February 2003.
- “The Impact of Genetic Medicine on Civil Litigation,” January 2003.
- “Defending the Product Liability Action,” April 2002.
- “The Defendant’s Right to Compel Genetic Testing,” For the Defense, October 2000.
- Mr. Hall is also a regular contributor to Wyatt’s IP blog “Finding IP Value.”
PRESENTATIONS
- “Using IP – Where, How & Why in Healthcare IT,” TechFest, Louisville, Kentucky, August 25, 2023.
- “Navigating Artificial Intelligence at Your Work,” June 6, 2023.
- “How to Tell Your Innovation Story to Every Audience,” Amplify Louisville, February 28, 2023.
- “Navigating the Innovation Path: Intellectual Property and Contracts,” Owensboro, Kentucky, July 22, 2022.
- “How Coaching Benefits Lawyers,” Franklin, Tennessee, October 29, 2022.
- “Assignor Estoppel: Do I Contradict Myself?” Indiana Continuing Education Forum, Midwest Intellectual Property Summit, December 2, 2021.
- “Preparing for Deposition as a Financial Executive,” presented virtually for Financial Executives International, May 18, 2021.
- “The Problem of Trade Secret Theft and How to Address It,” Wyatt’s The Art of Successful Litigation & Dispute Resolution Seminar, November 2017.
- “Envisioning Success: Visual Thinking Strategies for Avoiding Intellectual Property Problems,” Wyatt In-House Counsel Institute, June 22, 2016.
- “Using the AIA’s First to File Rule and the Written Description Requirement to Invalidate Patents,” Defense Research Institute’s Intellectual Property Seminar, May 6, 2016.
- “Let’s Go Crazy – Select Strategies, Cases, and Developments in Intellectual Property,” Wyatt’s Memphis Corporate Counsel Seminar, April 2016
- “Clearing the Hurdles: Patent Examination at the USPTO,” Nucleus LaunchIt Program, October 30, 2014.
- “The Changing Landscape of Patent Litigation: Fee Awards and Exceptional Case Status,” June 17, 2014.
- “Fee Awards in Exceptional Cases,” June 10, 2014.
- “Patents and Trademarks,” Wyatt In-House Counsel Seminar, June 2014
- “Building Fences: Creating the Right IP to Protect Your Most Important Ideas,” LaunchIt Series, November 4, 2013.
- “Protecting Your Ideas: The Importance of Breadth, Clarity, and Strategy,” XLerateHealth, October 9, 2013.
- “Protecting Your Ideas: What Every Inventor Should Know About ‘First-to-File’ and The America Invents Act,” March 19, 2013.
- “The America Invents Act: Are You and Your Business Prepared?” Tennessee Bar Association, Memphis, February 19, 2013.
- “Protecting Your Intellectual Property,” Nucleus’ Kauffman TechVenture FAST-TRAC®, April 10, 2012.
- “The American Invents Act,” November 18, 2011.
- “Protecting Your Intellectual Property,” Nucleus’ Kauffman TechVenture FAST-TRAC®, October 25, 2011.
- Commercializing Your Idea: “Protecting Intellectual Property,” October 13, 2011.
- “The America Invents Act,” October 4, 2011.
- “Protecting Your Intellectual Property While Commercializing It,” May 26, 2011.
- “Protecting Your Life Sciences Company,” May 18, 2011.
- “Patenting Diagnostic Methods and Compositions,” The Diagnostic Conference, Boston, March 22, 2011.
- “Patent Law Essentials: Why, What, Who, When, and How,” February 16, 2011.
- “Managing the Ripple Effect of “Public” Activities Surrounding Your Technology.” May 20, 2010.
- “Recognizing and Avoiding the Pitfalls of a Joint Research Program,” April 23, 2010.
- “Starting Up: Balancing Your Roles / Things You’d Wish You Knew,” April 15, 2010.
- “There’s a Doc for that: Legal Documents for Commercializing Your Invention,” International Society for Automation, March 15, 2010.
- “Risk Management for Clinical Trials: What’s in Your Forms?,” April 18, 2006.
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