University of Denver Sturm College of Law
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
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
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.