Kathleen E. Ott

Partner
Denver
1801 California St., Suite 3300
Denver, CO 80202
D: 303.357.1656
Contact My Assistant
Julie Borrego
D: 303.357.1205

Education

University of Denver Sturm College of Law
J.D., 2008
    Order of St. Ives

    Editorial Board, University of Denver Water Law Review

University of Colorado
B.A. Molecular, Cellular, and Developmental Biology

Bar and Court Admissions

U.S. Patent and Trademark Office, 2009
Colorado State Bar, 2008

Professional Affiliations

Advisory Committee for Eureka! STEM Program, Girls Inc., 2015-present

Steering Committee for ProBoPat pro bono patent program, 2013-present

Board of Directors, Heart for Africa, 2014-2019

Awards & Recognition

Selected for inclusion in IAM Patent 1000 – The World’s Leading Patent Professionals, Colorado, 2019

Named a Fellow, Leadership Council on Legal Diversity (LCLD), 2018

Finalist, Outstanding Women in Business, Denver Business Journal, 2018

Selected for inclusion in The Best Lawyers in America© for Patent Law, 2017-2020

Selected for inclusion in Colorado SuperLawyers, Rising Star, 2016-2017

Top Woman Lawyers 2015, Law Week Colorado

Publications & Speaking

Instructor, Inventor Interviews, Rocky Mountain IP Institute, May 31, 2018

Moderator, The PTO Speaks – Panel of SPEs, Rocky Mountain IP Institute, June 1, 2017

Interviewed, Women's Roundtable;Women leaders talk about lacking representation, the ladder to the top and the leaky pipe, Law Week Colorado, April 26, 2017

Quoted, The Concrete Road to Solid Patents, Denver Business Journal, January 27, 2017

Quoted, Federal Circuit: Inter Partes Review Here to Stay, by Doug Chartier, Law Week Colorado, December 21, 2015

Moderator, Current Developments in Inter Partes Review CLE, October 8, 2015

Co-author, Using IP to Position Your Company for Sale, with Marianne R. Timm-Schreiber and George C. Lewis, Corporate Counsel, January 13, 2014

Panelist, Diversity in the Legal Profession Panel, 8th Annual Microsoft Women and Minority Law Student IP Summit, University of Miami, November 11, 2011

Co-author, 25% Rule Held To Be 100% Wrong, Law Week Colorado, February 2011

Editorial Support, Privacy Law in a Nutshell, John T. Soma & Stephen D. Rynerson, Thomson West, 2008

Kathy’s practice focuses on analyzing patents across a breadth of technologies areas – from software to pharmaceuticals. Over the past decade, she has evaluated thousands of patents, drafted nearly fifty opinions of counsel, and guided her clients in patent portfolio strategy and management. Kathy provides both offensive and defensive analyses to ensure her clients’ innovations are well protected in the marketplace. From the inception of the America Invents Act (AIA), Kathy has been representing clients in post-grant proceedings.

An active participant in her community, Kathy volunteers with Girls, Inc., which is an organization designed to inspire and support underprivileged girls in the Denver Metro area. She gives of her time to work with girls in keeping with the organization’s initiatives, including mentoring, educational enrichment, and math and science programming.  She also serves on the Advisory Board for Eureka!, which is a Girls Inc. program centered around STEM enrichment. Recently, she developed a curriculum for a four-week high school internship program at Merchant & Gould’s Denver Office. Believing strongly in public service, Kathy provides pro bono legal assistance to immigrant victims of domestic violence and provides pro bono patent services through ProBoPat. As a Steering Committee member of ProBoPat, she works alongside the U.S. Patent & Trademark Office, Mi Casa Resource Center, and the Colorado Bar Association to promote and guide the Rocky Mountain pro bono patent initiative.

Representative Post-grant Proceedings:

Kathy has had repeated success representing clients in post-grant proceedings before the U.S. Patent Trial and Appeal Board (PTAB). Representative cases centered on technologies including remote healthcare monitoring, boron-containing topical pharmaceuticals, particle-enhanced water-permeable textile membranes, and network security, and include:

  • Cardiocom LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00468, IPR2013-00469 (U.S. Patent No. 7,516,192) (Final Written Decision holding all claims challenged in two petitions unpatentable);
  • Coalition for Affordable Drugs X LLC v. Anacor Pharms. Inc., IPR2015-01776, IPR2015-01780, IPR2015-01785 (U.S. Patent Nos. 7,582,621 & 7,767,657) (Final Written Decisions holding all claims unpatentable for both patents challenged in three petitions) (affirmed on appeal, Anacor Pharms., Inc. v. Iancu, Case 2017-1947 (Fed. Cir. May 14, 2018);
  • VF Outdoor, LLC v. Cocona, Inc., IPR2018-00190 (U.S. Patent No. 8,945,287) (Final Written Decision holding all claims asserted in litigation unpatentable);
  • Cisco Sys., Inc. v. Centripetal Networks, Inc., IPR2018-01443, IPR2018-01444 (U.S. Patent No. 9,137,205) (Both petitions instituted, pending before the PTAB).

Offensive and Defensive Patent Analysis:

Kathy has over a decade of experience providing offensive and defensive analyses in the fields of medical device technologies, pharmaceuticals, and computer science and software. For instance, she provides offensive product mapping, invalidity claim charting, product clearance, pre-acquisition due diligence, directed prosecution based on a target product or licensing agreement, full-scale non-infringement and invalidity opinions of counsel, and ANDA Paragraph IV Certification opinions of counsel. Representative projects include:

  • Managed a team of attorneys to conduct pre-acquisition due diligence for one of her clients, resulting in the successful acquisition of the company; the project involved reviewing hundreds of patents, clearing seven distinct product lines, advising on product design-around, and delivering twenty opinions of counsel.
  • One of a select team of attorneys engaged to assess hundreds of patent claim charts supporting a multimillion-dollar software licensing negotiation involving software, hardware, semiconductor & telecommunications. 
  • Drafted over 50 claim charts directed to a target product or a licensed technology and performed directed prosecution based thereon.
  • Drafted multiple opinions of counsel supporting Paragraph IV Certification for Abbreviated New Drug Applications (ANDAs) in the area of Orange Book pharmaceuticals.
  • Conducted clearance investigations for multiple product launches, including reviewing thousands of patents and drafting numerous non-infringement or invalidity opinions of counsel.

Patent Preparation and Prosecution:

Kathy has over a decade of experience preparing and prosecuting patents, including expertise in a variety of fields. For instance, Kathy has extensive experience prosecuting computer science and software-related subject matter, including network protocol technologies, artificial intelligence, natural language processing, virtual/augmented/mixed reality display environments, database structure and management, garbage collection and memory allocation management, block-chain technologies, cryptography, productivity suite application features and functionality, and graphical user interface features and functionality. She also has a high level of experience prosecuting medical devices, including acute-care ventilators, orthopedic fixation devices, spinal implants, ultrasound localization marker technologies, ultrasound liposuction devices and tools, and surgical cutting devices and tools. She has also prosecuted in the chemical field with respect to biofuel production and purification.

Kathy has counseled clients for many years in patent portfolio management and strategy. For instance, for the past nine years she has managed a large prosecution docket in the medical-device field, including both software-related and mechanical innovations, and for the past four years she has managed a quarter of the firm’s large prosecution docket for a fortune-50 software company.

Representative patents and publications: US8366719, US8595639, US9468479, US9687306, US10064583, US10169453, US10366157, US2017-0185574, US2018-0152407, US2018-0260442

Representative Cases

Prince Lionheart v. Halo Innovations (D. Colo 2010): Litigation support for Halo in this trademark infringement lawsuit involving baby products. The case settled after Halo won a motion to compel Prince Lionheart's privileged documents relating to Halo's trademark fraud counterclaim.

Firepower Marketing, Inc. d/b/a Royalty Rewards vs. Red Robin International, Inc., Case: 3:11-cv-05338-BHS, on May 3, 2011. Ott managed discovery and production of documents, and drafted motions and briefs, for this trademark infringement lawsuit. The client prevailed, enabling it to continue offering and marketing its customer rewards program.

Coalition for Affordable Drugs X LLC v. Anacor Pharmaceuticals Inc. (PTAB): Represented the Coalition for Affordable Drugs in inter partes reviews successfully challenging the validity of two Anacor patents before the PTAB. Final written decisions: IPR2015-01780, IPR2015-01776 and IPR2015-01785.


MEDIA CENTER

All Media
Press Releases
8/12/19
Seventeen Merchant & Gould Attorneys Named Best Lawyers© 2020
Merchant & Gould is pleased to announce that seventeen attorneys from three of its office locations have been included in The Best Lawyers in America© 2020.Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed ...
Press Releases
3/4/19
Kathy Ott and Laura Hupp Named to Leadership Council on Legal Diversity
Merchant & Gould is pleased to announce that attorneys John T. Winemiller, Ph.D., and Loretta L. Freeman have been selected as members of the Leadership Council on Legal Diversity (LCLD) 2018 Class of Fellows and Pathfinders, respectively.“It’s ...
Articles
12/18/18
M&G’s Denver Office Shares Holiday Spirit with Girls Inc., Promoting STEM Programming for Girls
Merchant & Gould sponsored a holiday-themed, community-service event with American Intellectual Property Law Association (AIPLA) “Women in IP” on Dec. 10, for Girls Inc. of Metro Denver, an organization that promotes the “whole girl,” ...
Articles
12/13/18

Merchant & Gould sponsored a holiday-themed, community-service event with American Intellectual Property Law Association

Merchant & Gould sponsored a holiday-themed, community-service event with American Intellectual Property Law Association (AIPLA) “Women in IP” on Dec. 10, for Girls Inc. of Metro Denver, an organization that promotes the “whole girl,” ...
Press Releases
8/15/18
Nineteen Merchant & Gould Attorneys included in The Best Lawyers in America© 2019
Merchant & Gould, a national intellectual property (IP) law firm, is pleased to announce that 19 attorneys from four of its office locations have been included in The Best Lawyers in America© 2019.  In addition, Tim Scull, managing partner of ...
Press Releases
7/17/18
Denver Business Journal Names Kathy Ott as Finalist for “Outstanding Women in Business” Award
Merchant & Gould is pleased to announce that Kathy Ott was named a finalist by Denver Business Journal as an “Outstanding Woman in Business,” specifically recognized for her innovation, entrepreneurship, professional accomplishments and community ...
Press Releases
5/17/18
Federal Circuit Affirms Invalidity of Pharmaceutical Patent
Merchant & Gould is pleased to announce that the Federal Circuit in Anacor Pharmaceuticals, Inc. v. Iancu affirmed the invalidity of a patent covering tavaborole (Kerydin®), which is a drug used to treat onychomycosis. The appeal arose from three ...
Press Releases
5/12/18
Merchant & Gould Participates in Denver's Amp the Cause Community Day
Merchant & Gould’s community spirit was shining on May 12, when the Denver office participated in Amp the Cause’s annual “Community Day” – as one of 50 teams, helping with facility-improvement projects for nonprofits in Greater ...
Press Releases
2/6/18
Merchant & Gould Joins Girls Scouts of Colorado at IP Patch Event
Merchant & Gould joined forces with Girls Scouts of Colorado, Microsoft and Boulder toy robot maker Sphero, to help girls earn their Intellectual Property (IP) Patch.  Held at Denver’s U.S. Patent and Trademark Office last month, Girl Scouts ...
Press Releases
8/15/17
Seventeen Merchant & Gould Attorneys Named Best Lawyers© 2018
Merchant & Gould is pleased to announce that seventeen attorneys from three of its office locations have been included in The Best Lawyers in America© 2018.Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in ...
Press Releases
5/30/17
Merchant & Gould Promotes Attorney Kathleen Ott to Partner
Merchant & Gould is excited to announce the promotion of attorney Kathleen Ott to partner, after she worked as an associate for nine years. The promotion embraces the growth of the Denver office, bringing greater depth to the firm’s local leadership, ...
Articles
1/27/17
The concrete road to solid patents
As published in the Jan. 27, 2017 edition of the Denver Business Journal By Monica Mendoza Photo: Kathleen Lavine Caption: Kirstin Stoll-DeBell, KathleenOtt and Timothy Scull are patent attorneys and partners of Merchant & Gould.If you are a software ...
Press Releases
9/22/16
Fourteen Merchant & Gould Attorneys Named 2017 Best Lawyers©
Merchant & Gould is pleased to announce that fourteen attorneys have been included in The Best Lawyers in America© 2017. Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate ...
Events
10/8/15
Inter Partes Review CLE & Networking Reception in Denver
Current Developments in Inter Partes Review CLE & Networking Reception Since its inception as a provision under the America Invents Act (AIA), the inter partes review process has continued to evolve before the Patent Trial and Appeal Board (PTAB). Please ...
Press Releases
5/11/15
Kathleen Ott Named a Top Woman Lawyer 2015 by Law Week Colorado
Merchant & Gould, a national intellectual property law firm with offices in eight cities including Denver, is pleased to announce that Law Week Colorado included Kathleen Ott on its list of Top Woman Lawyers 2015.Ott’s love of ...
Press Releases
11/3/08
Merchant & Gould Expands Its Team; Nine Join Firm
Intellectual Property Law Firm Reports Rapid Increase In Client Base, New Personnel Merchant & Gould, an intellectual property law firm, announced that it has added eight new attorneys and one technical advisor for positions in its Minneapolis, Denver, ...