Tysons Corner, VA (January 14, 2016)
Liz Burke joined Jones Robb as a member in 2012. She has worked in the patent field for 25 years, working in a variety of patent-related positions including patent examiner, university tech transfer, and attorney.
Liz’s practice focuses on client counseling, due diligence, industrial design, patent-related opinion work, post-grant proceedings, pre-litigation analyses, and strategic patent prosecution. Liz’s technical background is in the field of biomedical engineering, but her technical expertise extends to mechanical and electro-mechanical technologies as well. In particular, Liz’s practice focuses on such diverse technologies as automotive, bicycle, imaging, and medical device technologies. In addition, Liz has significant experience working on business methods, which she has leveraged in her post-grant practice, advising clients in Covered Business Method review proceedings (CBMs).
Liz is the firm’s Post-Grant practice group leader. When asked about Jones Robb’s experience in post-grant proceedings, Liz said “We have been able to assist our clients in many ways with regard to post-grant proceedings. At a first level, we have educated our clients about the new AIA trial practice for inter partes review, covered business method review, and post-grant review, and we have provided counsel as to what proceedings might be applicable in a particular situation. We also have provided guidance for clients considering use of the AIA trials – providing recommendations for and against filing based on each client’s individual situation. In addition, we have partnered with litigation counsel to assess the viability of using the AIA trials and served as co-counsel on post-grant proceedings.
“Litigation counsel can use us as a type of local counsel, relying on our familiarity with the AIA trial practice rules and our patent prosecution expertise to assist with the post-grant proceedings, which allows clients to develop strong and consistent strategies in front of both the U.S. Patent Office and the district court. Our experienced patent prosecutors communicate daily with the Patent Office, and such communications have honed our ability to craft arguments that resonate with the U.S. Patent Office – both examiners and administrative law judges of the Patent Trial and Appeal Board (PTAB). In post-grant proceedings before the PTAB, this skill translates into an ability to craft and organize arguments in a manner the PTAB will find persuasive. Similarly, litigation counsel lend their expertise in the areas of claim construction, deposition, experts, and oral argument, as well as ensure that AIA trial strategy is not inconsistent with potential litigation positions. I believe working together in this manner creates a synergistic effect which benefits the client.
“Finally, in addition to the AIA trials, we have extensive experience in reexamination proceedings and have a robust practice in that area.”
Prior to joining Jones Robb, Liz was a Partner with a large international patent boutique firm. In addition to her patent practice, she coordinated the Veterans’ Pro Bono Program at her former firm. As a former patent examiner at the US Patent and Trademark Office, Liz examined applications for medical device technologies, focusing in the areas of implantable devices, fluid management devices, and absorbent products.
Outside the practice of law, Liz is an avid sports fan. She was disappointed to see her Clemson Tigers and Redskins end their football seasons in defeat, and hopes they will have better luck next season. She has now moved on to college basketball and cheering her UConn Huskies to victory. Liz also enjoys spending time with her family, including trying to teach her young daughter how to select the appropriate sports teams. “It can be challenging,” Liz said, “when dealing with a 5-year old raised by two patent attorneys – she is already an expert in negotiation and putting her spin on situations. The dogs have been convincingly accused of many crimes they did not commit.”