Anna Ison is a registered patent attorney with experience in patent litigation, patent prosecution, performing invalidity and infringement analysis, freedom to operate analysis, strategic patent counseling and serving as in-house patent counsel.
As a patent consultant and independent contractor, Anna provides patent consulting services for businesses, serving as flexible, on-demand, in-house patent counsel on an hourly basis to match a client’s specific needs. Anna currently serves as lead in-house patent counsel on all patent matters at a large global company and as chief patent counsel for a small startup company. Anna’s responsibilities include managing outside IP counsel, meeting with engineers to harvest invention disclosures, evaluating invention submissions to provide filing recommendations, and developing and providing patent education programs. Anna has also managed and provided guidance to foreign IP counsel in a case involving the opposition of a European patent.
Anna started practicing as an intellectual property attorney in 2007. Her experience includes eight years in patent litigation, over five years in patent prosecution, and over three years as in-house counsel. Anna has provided strategic counseling, patent portfolio review and analysis, freedom-to-operate analysis, invalidity and non-infringement analysis, and patent prosecution services in a range of fields including computer software and hardware, mechanical devices, machine learning and optimization applications, image processing techniques, and 3D printing and metrology applications.
As a litigator, Anna’s experience includes preparing expert witnesses for trial, preparing briefs and motions, taking and defending depositions, investigating and evaluating prior art, examining and presenting non-infringement analyses, counseling engineers and inventors regarding accused products and potential patents for assertion of counterclaims, and helping experts develop infringement and non-infringement positions, as well as writing expert reports. A list of representative cases is attached for reference.
In a notable trial representation of TransWeb, LLC in TransWeb, LLC v. 3M Innovative Properties Co. in the District of New Jersey, a jury returned verdicts finding that 3M engaged in Walker Process fraud on the USPTO in a patent and antitrust case against 3M. In this case, Anna developed a tutorial for use at a Markman hearing in order to educate the court regarding the technology of the patents and accused products. Anna was also instrumental in writing TransWeb’s expert report and in preparing TransWeb’s expert witness for deposition and for trial. Educating the judge in TransWeb’s technology proved to be advantageous at trial, resulting in a favorable declaratory judgment of invalidity, non-infringement, and unenforceability due to inequitable conduct, with a resulting award of attorneys’ fees for 26.1 M.
Prior to practicing patent law, Anna served as a manager and business consultant for various software startup companies. Her experience includes developing analytic and marketing software applications using data mining and optimization techniques to personalize customer interactions on the web. She also managed the development of enterprise software to help financial services firms manage their customer portfolios, including using analytics to predict customer behavior.
Anna has a Bachelor of Science in Electrical Engineering from the Massachusetts Institute of Technology, and a Master of Science and PhD in Electrical Engineering from the University of California at Berkeley. Her doctoral thesis was directed to implementing machine learning and statistical process control techniques to detect and diagnose faults in plasma etch equipment.