Lisa Nguyen

Lisa Nguyen has 18 years of IP law experience, which can be traced back to curiosity sparked while growing up, when her mother encouraged her to research and investigate any question she had.

"Investigating a technology or an industry always brings me back to those days," she said.

In the past year, Nguyen has successfully argued and won three motions to dismiss based on § 101, which deals with subject matter eligibility, demonstrating her commitment to defending her clients against meritless nuisance suits.

"And because of various reasons, many of these companies decide not to fight these suits and are forced to settle," she said. "I am very fortunate to have these opportunities to 'fight the good fight' and to show these nuisance plaintiffs that my clients will not be bullied into a settlement in a baseless case."

Nguyen added that for the § 101 motions, a big challenge was that two of the judges had no patent law background, and it would be the first time these judges would be addressing § 101 issues.

"We had to be particularly thoughtful about how we presented the argument and go back to basics and emphasize why § 101 is there in the first place," she said. "We needed to make sure that these judges were comfortable dismissing the case and establish that the law not only backed up the dismissal, but required the dismissal."

Nguyen also led a victorious team effort for ResMed, a pioneer in sleep disorder treatment. Her team invalidated 141 claims across seven patents through inter partes reviews, a significant win against an opponent like New York University.

She said the success was a collective effort, with notable contributions from associates David Hubbard, Sara Townsend and CJ Chandrashekar, who worked diligently on the briefing. Summers Michelle Zhang and Alli Greubel provided valuable assistance on the replies, while Kamilah Alexander's oral argument was pivotal in bringing the case together at the hearing.

"For ResMed, a challenge was the sheer number of patent and claims," Nguyen said. "The PTAB is a forum where you need to know the details, and the differences between each claim. We had to ensure we were addressing these differences but at the same time telling our story. It was a tricky balance to achieve but we got there."

She noted that artificial intelligence is top of mind for almost all clients, not just in the products that they are developing but how they do business.

"Clients are integrating AI into the management of their businesses, and they expect their providers, including law firms, to do the same," Nguyen said. "As an industry, we need to be prepared for that, not only by training our attorneys on the use of AI, but also on the risks that accompany such use."