Jim Carmichael, founder of Carmichael IP, announced that highly regarded intellectual property attorney Stephen Schreiner is the newest partner in the firm’s Tyson’s Corner office, closing out a 12 year career at Goodwin Procter LLP.
Schreiner told Law360 on Thursday that learning his client’s business and commercial objectives is key to developing an IP strategy, whether that involves patent enforcement, licensing, defending against IPRs and other post-grant challenges, portfolio development, or a combination of these activities.
“The objective of the outside IP counsel should be to structure IP decisions based on the business’s goals and objectives. Recommendations to license or enforce patents should be based on how a line of business is expected to benefit. Likewise, portfolio development should focus on patent filings covering key products in their present form as well as next-generation products–in other words, what the products are expected to look like over the course of the next five to fifteen years.”
Schreiner has significant experience representing parties in Inter Partes Reviews (IPRs) before the Patent Trial and Appeal Board (PTAB). “I was attracted to Carmichael IP because, among other things, the firm is independently ranked as winning the most IPRs of any firm representing patent owners at the PTAB,” Schreiner said.
According to former Administrative Patent Judge James T. Carmichael, the founder of Carmichael IP: “I have known Steve for many years and seen firsthand his superb work in patent litigation, Inter Partes Reviews, and prosecution. He is a deep strategic thinker. We are thrilled to have someone of his caliber joining our firm as a partner.”
Schreiner previously worked as an electrical engineer for nearly a decade at the Department of the Navy, where he developed and tested acoustic signal processing algorithms for submarine detection and classification. This work included riding in U.S. submarines for lengthy periods. He joined Hunton Andrews Kurth in 1998 and became a partner in 2004. Schreiner joined Goodwin Procter as a partner in 2007. At Goodwin, he polished his patent litigation skills, working on matters involving network technology and digital content delivery as well as matters pertaining to FinTech. He continued his work on portfolio development as well as IP due diligence in support of corporate transactions.
Schreiner has been named in the IAM’s “World’s Leading Patent Practitioners” from 2012-2019. He has been on the Board of Editors for the Banking Law Journal from 2006 to the present. The litigation matters he worked on while at Goodwin included defending exchange-traded fund (ETF) provider WisdomTree Investments against a patent infringement suit launched by competitor Research Affiliates (RA) in the Central District of California. Schreiner helped negotiate a resolution in which RA agreed to withdraw its infringement charges, pay WisdomTree’s attorney fees and issue a joint press release in which RA’s founder acknowledged that WisdomTree had independently developed the ETF technology at issue.
Schreiner earned his law degree from Georgetown Law and his undergraduate degree in electrical engineering from Virginia Tech.
About Carmichael IP
Carmichael IP, PLLC was founded by former Administrative Patent Judge on the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board), James Carmichael. In 2019, Carmichael IP was independently ranked by Patexia as the world’s #1 most winning law firm in Inter Partes Reviews (IPRs) at the Patent Trial and Appeal Board (PTAB) for patent owners. The firm prepares and prosecutes patent applications and conducts Inter Partes Reviews and other post-grant patent proceedings before the U.S. Patent and Trademark Office, especially the Patent Trial and Appeal Board (PTAB). The firm offers Freedom to Operate Services where they will analyze search results for possible infringement, validity, and design-around issues and will provide opinion letters when appropriate. The firm can also can provide consulting and expert witness testimony in court proceedings concerning patent practice and procedure. Their attorneys also have experience litigating patent matters in U.S. District Courts and the Court of Appeals for the Federal Circuit.