Oblon, Spivak Welcomes Former APJ Lee E. Barrett

August 5, 2010 – Firm News

For Immediate Release

August 5, 2010

Alexandria, Va. – Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is proud to announce that Lee E. Barrett has joined the firm as Of Counsel. Mr. Barrett served in several roles during his distinguished 32-year career with the U.S. Patent and Trademark Office (USPTO), most recently as an Administrative Patent Judge (APJ) with the Board of Patent Appeals and Interferences. For 16 years, he was responsible for hearing and deciding appeals from decisions of examiners in applications for patents, for reissue of patents, and in ex parte and inter partes reexamination proceedings.

Of the many notable reported decisions for which Mr. Barrett authored the Board opinion, some of the more high-profile ones were: Ex parte Bilski, Appeal 2002 2257, Application 08/833,892 (BPAI 2006) (affirming a rejection under 35 U.S.C. § 101 of a business method of hedging), aff'd, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff'd, Bilski v. Kappos, 561 U.S., 130 S. Ct. 3218 (2010); Ex parte Translogic Tech., Inc., Appeal 2005-1050, Reexamination Control Nos. 90/006,392 et al. (BPAI 2005) (affirming obviousness rejection to serial multiplexer in reexamination after district court jury trial holding the patent valid and infringed), aff'd, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007); and Ex parte Reiffin, Appeal 2007-2127, Reexamination Control No. 90/006,621 (BPAI 2007) (affirming rejection in reexamination based on lack of written description for "multithreading" and rejections based on anticipation and obviousness), aff'd, In re Reiffin, 340 Fed. Appx. 651 (Fed. Cir. 2009) (nonprecedential).

“We are thrilled that Mr. Barrett, whom we have known and argued before on many occasions, has decided to join Oblon, Spivak. We have respected his decisions and opinions during his tenure as an Administrative Patent Judge, and his personal knowledge and insight of the patent appeals process will be a tremendous benefit to our clients,” said Richard Kelly, managing partner of the firm.

Prior to becoming an APJ, Mr. Barrett spent eight years as an Associate Solicitor in the Office of Solicitor at the USPTO. He represented the Commissioner in preparing briefs and presenting oral argument in appeals, and handled all phases of civil actions in district court. During this time, he handled 60 appeals to the Federal Circuit and several civil actions.

As an Associate Solicitor, he served as the technical and legal expert for the PTO on the patentability of patent applications involving mathematical algorithms, computer hardware and software and all complex areas of electrical engineering. He also was a Patentability Review Examiner (Electrical), and a Patent Examiner (Mechanical).

Mr. Barrett began his career as a senior mechanical engineer in the Antenna & Microwave Section at Westinghouse Electric Corporation.

He is a member of the District of Columbia, Maryland and California bars. He received his B.S. in Mechanical Engineering at the University of Wisconsin—Madison, his J.D. at the University of Maryland School of Law, and his M.S. in Electrophysics (Electronics, Fields & Waves) at George Washington University, where he also obtained an M.S. in Communications and an M.S. in Computer Science (Hardware & Systems).

Assisting clients for 40 years, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is one of the largest intellectual property specialty firms in the United States. The firm provides a full range of intellectual property services, including litigation matters in all courts, as well as trademark, copyright and patent interference services.