Sterne Kessler Adds Ex-Deputy Chief PTAB Judge

The former acting head of the U.S. Patent and Trademark Office’s unit that reexamines patents after they have been granted has made the move to Sterne Kessler Goldstein & Fox PLLC, amid a series of personnel changes at the agency.

Jackie D. Wright Bonilla will be part of the Trial and Appellate Group and the Biotechnology and Chemical Groups at Sterne Kessler under the title of director, the firm announced Thursday.

“It is just an absolutely terrific firm,” Bonilla said of Sterne Kessler during an interview with Law360 on Thursday. “It has a reputation for being a powerhouse in all aspects of USPTO litigation and practice.”

Bonilla said the firm has many highly regarded attorneys who have appeared at the Patent Trial and Appeal Board, noting that she has seen them in action over her years on the board.

“It has just been a top-notch opportunity to work with some of the best minds in [intellectual property] law, and I’m really excited to work with this talented team,” Bonilla said.

Bonilla had around 13 and a half years of experience at the USPTO, first starting as an administrative patent judge in 2012 and working her way up to deputy chief administrative patent judge at the PTAB, she said.

She said she finished her tenure in both the deputy chief role and as acting director of the Central Reexamination Unit. She had been at the Central Reexamination Unit for the last couple of months, starting out as a legal adviser before detailing as its acting director for the past month, she said.

Her move to Sterne Kessler marks a return to private practice, having worked earlier in her career for Finnegan right after graduating from the University of Virginia School of Law, and also at Foley & Lardner LLP for about 10 years, the last three of which were as a partner, she said.

“We are known as a PTAB powerhouse, and Jackie’s addition further enhances that position,” Sterne Kessler managing director Michael B. Ray said in a statement. “Her leadership at the PTAB and the USPTO generally, combined with her deep experience in biotechnology and pharmaceutical IP, strengthens our bench and gives us a sharper edge in delivering exceptional service to our clients.”

Bonilla said at the new firm she will focus on life sciences patent litigation in areas such as biotechnology, pharmaceuticals and medical devices. She said that will involve appearing before the PTAB or Central Reexamination Unit.

Additionally, she said, her work will include appearing before the U.S. International Trade Commission as well as federal district court and the Federal Circuit.

“With the experience of me doing that on the inside for so long, I can really provide value to clients,” she said.

While Bonilla has moved to private practice, that means Chief Judge Scott R. Boalick will take over as the head of the Central Reexamination Unit, while Vice Chief Judge Michael Tierney will be helping him out.

Among other parts of the shakeup include Vice Chief Administrative Patent Judge Kalyan Deshpande becoming acting chief, acting Vice Chief Farheena Rasheed being offered a permanent vice chief judge position and Chief Policy Officer Sharon Israel being offered a vice chief position as well.