Overview

Troy Petersen is a registered patent attorney who focuses his practice on patent procurement, client counseling, and intellectual property litigation primarily in the chemical and life sciences industries. Mr. Petersen has experience drafting and prosecuting domestic and international patent applications, including patent office appeals and post-grant proceedings. He is also experienced in preparing non-infringement, validity, patentability, and freedom-to-operate analyses in the chemical, polymer, medical device and pharmaceutical arts from both due diligence and litigation perspectives. Additionally, Mr. Petersen has experience in patent and trade secret litigation having participated in all phases of litigation including discovery, trial, and appeals.

Prior to joining the firm, Mr. Petersen worked as an attorney in the Virginia office of an intellectual property law firm where his areas of practice included patent drafting and prosecution, opinions and client counseling, and patent office proceedings. Previously, Mr. Petersen was an associate in the Washington, D.C. office of an international intellectual property law firm where he practiced all aspects of patent law, including patent and trade secret litigation, and patent procurement. Prior to launching his legal career, Mr. Petersen was employed at the hydrocarbons plant of a major chemical company, and at a drug delivery company.

Mr. Petersen conducted research in polymer synthesis, polymer processing and rheology in the lab of Dr. Chris Macosko at the University of Minnesota. While attending law school, he served on the editorial board of the Duke Law Journal, as a staff writer for the Duke Law and Technology Review, on the board of directors of the Duke Law Intellectual Property and Cyberlaw Society, and as an intellectual property research assistant for Professor Jerome Reichman. Mr. Petersen also spent a semester studying international law and intellectual property at Katholieke Universiteit Leuven in Belgium.

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Experience

Counsel for patentee Celanese in five inter partes review petitions filed by competitor Daicel challenging validity of Celanese patents related to industrial acetic acid production. The Patent Trial and Appeal Board initially ruled in favor of client Celanese, completely denying all five petitions, although requests for rehearing subsequently resulted in the institution of 3 of the 5 IPRs. In June of 2016, the PTAB issued final written decisions in the three IPRs, finding for patent owner Celanese and affirming all instituted claims as not unpatentable. United States Patent and Trademark Office Patent Trial and Appeal Board, Case Numbers IPR2014-01514, IPR2014-01515, IPR2015-000170, IPR2015-00171 and IPR2015-00173.

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Education

Duke University School of Law, J.D. (2004) cum laude, Order of the Coif

University of Minnesota, B. of Chemical Engineering (2001) high distinction

University of Minnesota, B.S., Chemistry (2001) high distinction

Admissions

Not admitted in Colorado, practicing exclusively before the USPTO

District of Columbia (2005)

California (2004)

Court Admissions

U.S. Patent and Trademark Office (2005)

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