PARTNERS
Frank S. DiGiglio
Paul J. Esatto, Jr.
Leopold Presser
Mark J. Cohen, Ph.D.
John S. Sensny
Edward W. Grolz
Steven Fischman
Peter I. Bernstein, M.S.
Thomas Spinelli
Xiaochun Zhu, Ph.D.
Eunhee Park
Chad Ziegler
Richard L. Catania, M.S.
Steven I. Wallach
Keith A. Weltsch
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Frank S. DiGiglio Partner |
| Frank DiGiglio received his B.S. in Biology from Boston College in 1975 and his J.D. from St. John's University School of Law in 1982. He was admitted to the N.Y. State Bar in 1983, the U.S. District Court, Southern and Eastern Districts of N.Y., N.Y. State Court of Appeals for the Second Circuit and U.S. Court of Appeals, and Federal Circuit. Mr. DiGiglio is registered to practice before the U.S. Patent and Trademark Office and is a member of the N.Y.S. Biotechnology Association, NYIPA and AIPLA. Mr. DiGiglio is an Adjunct Professor at Benjamin N. Cardozo School of Law (Yeshiva University) in Pharmaceutical and Biotechnology Patent Law. Mr. DiGiglio is experienced in patent and trademark
litigation; extensive interference practice; Federal Circuit appeal
practice; with technical emphasis in biotechnology, biochemistry
and pharmaceutical sciences. |
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Paul J. Esatto, Jr. Partner |
| Paul Esatto, Jr. received his B.E., Electrical from City College of New York in 1976 and his J.D. from St. John's University School of Law in 1983. He was admitted to the N.Y. State Bar in 1984; U.S. Court of Appeals, Federal Circuit; U.S. District Court, Southern and Eastern Districts of N.Y., and is registered to practice before U.S. Patent and Trademark Office. Mr. Esatto is a member of the NYIPLA; AIPLA, IP Practice in Japan committee; INTA; LES; IEEE, Communications Society, Engineering in Medicine and Biology Society, Electron Devices Society, ABA IP Section; Suffolk County Bar Association; LIA; LIFT; and LISTnet, Business & Technology Law committee. Mr. Esatto is experienced in patent, trademark,
copyright and unfair trade practices litigation in the Federal and
State Courts; trademark opposition and cancellation practice; licensing
of intellectual property; portfolio management and counseling; patent
procurement with technical expertise in computers, communications,
semiconductors, networking, software, circuits, electronic devices,
internet technology, business methods and nanotechnology. |
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Leopold Presser Partner |
| Leopold Presser received his B.E., Mechanical from the Polytechnic Institute of Brooklyn in 1951 and his LL.B. from Brooklyn Law School in 1957. He was admitted to the N.Y. State Bar in 1962, U.S. Court of Appeals, 2nd and Federal Districts, and is registered to practice before U.S. and Canadian Patent and Trademark Offices. Mr. Presser was a Hydraulics Engineer at Baldwin-LimaHamilton Corp. (Loewy Hydropress) from 1951-1953 and a Design Engineer for Eastern Engineering Corp. from 1953-1957. Mr. Presser was also Patents and Contracts Mgr., for Fairchild Engine from 1957-1959.
Mr. Presser has extensive experience in the mechanical, electronic
and metallurgical arts, particularly in the fields of communications,
packaging, photographic equipment, optics, photocopiers, and medical
devices as well as steel production and processing, general machinery
and plant production equipment, aircraft and automotive equipment
and design. He offers special expertise in design patents. |
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Mark J. Cohen, Ph.D. Partner |
| Mark Cohen received his B.A. in Biochemistry from the University of Pennsylvania in 1975 and his M.S. in Organic Chemistry, M.Phil. and Ph.D. in Organic Chemistry from New York University. In 1984 he received his J.D. from Hofstra University, School of Law. Dr. Cohen was admitted to the N.J. and N.Y. State Bar in 1985 and to the U.S. District Court, Southern and Eastern Districts of N.Y., District of New Jersey, U.S. Court of Appeals and Federal Circuit and is registered to practice before U.S. Patent and Trademark Office. Dr. Cohen is a member of the Nassau County Bar Association, N.J. State Bar Association, N.Y. Bar Association, AIPLA and ABA. Dr. Cohen is experienced in all aspects (U.S.
and worldwide) of patent procurement/transactional and litigation
including patent prosecution; opinions including freedom to operate,
infringement and validity opinions; licensing, counseling, interference,
litigation and opposition practice in the European Patent Office,
especially in areas relating to chemistry (organic and inorganic),
biochemistry, pharmaceuticals food technology, and nanotechnology.
Recently he published an article entitled, "A Change in Pharmaceutical
Prosecution Practice" Intellectual Property Today, Volume 10, No.
10, page 29, October, (2003). |
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John S. Sensny Partner |
| John Sensny received his B.S., Engineering Physics, summa cum laude from Ohio State University in 1973 and his J.D. cum laude from Ohio State University in 1976. Mr. Sensny was admitted to the Ohio State Bar in 1976 and to the N.Y. State Bar in 1978. He is registered to practice in the U.S. Patent and Trademark Office. Mr. Sensny is admitted to practice before the Court of Appeals for the Federal Circuit, and before the Federal District Courts for the Southern and Eastern Districts of New York. Mr. Sensny has expertise in patent prosecution with a special emphasis on computer software and hardware, business methods and e-commerce. He is a member of the American Bar Association. Email: sensny@ssmp.com |
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Edward W. Grolz Partner |
| Edward Grolz received his B.S. in Chemistry in 1981 and his J.D. in 1984 from Hofstra University. He was admitted to the N.Y. State Bar in 1985 and registered to practice before U.S. Patent and Trademark Office. Mr. Grolz is a member of AIPLA and AIPPI. Mr. Grolz is experienced in international patent
laws and worldwide patent solicitation including PCT and EPO practice,
and inter partes matters including nullity actions, oppositions,
invalidations and cancellations. He oversees all foreign filings
for SSMP clients and performs all aspects of U.S. patent prosecution
and chemical patent practice. Mr. Grolz offers expertise in a wide
range of chemical and biological fields, including food processing
technology, pharmaceuticals and polymer chemistry. |
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Steven Fischman Partner |
| Steven Fischman received his B.S.E.E. from the State University of New York at Buffalo in 1984 and his J.D in 1992 from New York Law School. He was admitted to the N.Y. State Bar in 1993 and registered to practice before U.S. Patent and Trademark Office. Mr. Fischman was an Associate Test Engineer for Grumman Aircraft Systems, Inc. from 1985-1989. Mr. Fischman is a member of the ENIPLA, AIPLA and ABA. He is a member of the National Engineering Honor Society, Tau Beta Pi, 1982; and Electrical Engineering Honor Society, Eta Kappa Nu, 1983. Mr. Fischman is experienced in
all aspects of patent procurement with technical expertise in computers,
communications, semiconductors, networking, software, circuits,
electronic devices, internet technology, business methods and nanotechnology. |
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Peter I. Bernstein, M.S. Partner |
| Peter Bernstein received his B.S. in Nutritional Biochemistry from Cornell University in 1987, then his M.S. in Biology/Natural Sciences from State University of New York at Buffalo in 1988. In 1994, Mr. Bernstein received his J.D. from Western New England College of Law. Mr. Bernstein was admitted to the N.Y. State Bar in 1995; U.S. District Court, Southern and Eastern Districts of New York; U.S. Court of Appeals, Federal Circuit and is registered to practice before the U.S. Patent and Trademark Office. Mr. Bernstein is a member of the ABA, AIPLA, AIPPI, Biotechnology Industry Organization, Association of University Technology Managers and the Licensing Executives Society. Mr. Bernstein has technical expertise in molecular and cell biology, biochemistry, pharmaceutical chemistry, immunology, microbiology and nutritional sciences and is experienced in all practice areas of intellectual property, patent prosecution, interferences and counseling. Mr. Bernstein has over 10 years of experience in litigation, particularly in the biotechnology, copyright and trademark fields. Additional languages: Spanish |
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Thomas Spinelli Partner |
| Thomas Spinelli received his B.E., Mechanical Engineering degree from the State University of New York at Stony Brook in 1986 and his J.D. from St. John's University School of Law, cum laude in 1995. He was admitted to the N.Y. State Bar in 1996 and is registered to practice before U.S. Patent and Trademark Office. Mr. Spinelli was a Test Engineer at Uniwave Inc. from 1985-1986; a Design Engineer for Traulsen and Co. from 1986-1987; a Design/Project Engineer for Pall Corporation from 1987-1990; a Design/Project Engineer at Olympus America Inc., from 1990-1996 and later became an in house Patent Attorney for Olympus America Inc. from 1996-1997. Mr. Spinelli has extensive experience in the engineering
arts, particularly in the fields of medical devices, filtration,
web converting, automated production machinery, heat transfer devices,
textiles and textile machinery, optics, liquid crystal and projection
displays, digital watermarking, communication devices, mechanical
and electromechanical devices; sports equipment, alarm systems,
recommendation systems, computer hardware, software and business
method patents. |
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Xiaochun Zhu, Ph.D. Partner |
| Dr. Xiaochun Zhu received her B.S. eqv., Bioscience from Tsinghua University, Beijing, P.R. China. She completed a doctoral thesis in the field of molecular genetics and biochemistry, and received her Ph.D., Biochemistry, from Brandeis University in 1996. Dr. Zhu conducted research in the field of molecular immunology as a postdoctoral fellow at Dana Farber Cancer Institute, Harvard Medical School. Dr. Zhu has co-authored scientific publications in Proceedings of National Academy of Sciences, USA 91(22): 10531-5 (1994); and J. Biol. Chem. 274(30): 21170-9 (1999). Dr. Zhu joined Scully Scott Murphy Presser in 1997 as a technical consultant. She obtained her J.D., magna cum laude, from St. John's University School of Law in 2002 and was admitted to New York State bar in 2003. Dr. Zhu obtained an official recognition to practice before the U.S. Patent & Trademark Office in 1998 and is a registered patent attorney. Dr. Zhu's technical expertise is in the areas of biochemistry, molecular biology, immunology, cell biology, genetics, pharmaceuticals and nanobiotechnology. She practices in all aspects of patent prosecution in the U.S., including drafting and prosecuting patent applications, reexamination, reissue and interference proceedings, as well as in various aspects of the PCT practice. In addition, Dr. Zhu assists in prosecution of foreign patent applications, including providing support in European opposition proceedings and Canadian conflict proceedings. Dr. Zhu is experienced in opinion work, including validity, non-infringement, and freedom-to-operate opinions, as well as inventorship analyses. Dr. Zhu counsels a range of clients from large corporations to start-up companies and universities, including international clients, particularly clients from China. Additional Language: Chinese Email: xzhu@ssmp.com |
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Eunhee Park Partner |
| Eunhee Park received her B.A. in Computer Science from Barnard College, Columbia University in 1984 and her J.D. in 1997 from Brooklyn Law School where she was on the editorial staff of Brooklyn Journal of International Law. She was admitted to the N.Y. State Bar in 1998 and is registered to practice before U.S. Patent and Trademark Office. Ms. Park previously worked in the computer industry as a software engineer and was an associate attorney in an Intellectual Property Group of a general practice law firm in New York City. Ms. Park is a member of ABA and AIPLA. Ms. Park is experienced in various aspects of patent procurement, both domestic and foreign, specializing in the areas of computers, software, and business methods. She has regularly counseled clients in intellectual property matters with focus on patents and is also experienced in providing opinions relating to freedom to operate, patent infringement, validity, and patentability. Ms. Park is a co-author of "Recent Cases Clarify Law on Transfer of Patent Rights," New York Law Journal, January 22, 2002.
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Chad Ziegler Partner |
| Mr. Ziegler received his B.S. in biology from Albright College in 1993. He received his J.D., with High Distinction, from Ohio Northern University, Claude Petitte School of Law, in 1997, graduating at the top of his class. He was admitted to the Pennsylvania Bar in 1997 and is admitted to practice before the Eastern District of Pennsylvania and the Federal Circuit Court of Appeals. He is registered to practice before the United States Patent and Trademark Office. Mr. Ziegler was named a Pennsylvania "Rising Star" in 2006. He is a member of the AIPLA and the German-American Chamber of Commerce. Chad Ziegler joined Scully Scott as a partner in 2008 to enhance the firm's growing litigation practice. He has 11 years of experience in litigation, particularly complex patent litigation, in the biotechnology, pharmaceutical (including Paragraph IV litigation under the Hatch-Waxman Act), biomedical device, chemical, and consumer products fields. Mr. Ziegler has represented major companies in patent litigation, including Johnson & Johnson, Boston Scientific, Crown Cork & Seal, Millipore, W.R. Grace, and Fleer. Prior to joining Scully Scott, Mr. Ziegler was a partner at the law firm Woodcock Washburn LLP, in Philadelphia, PA. Mr. Ziegler is proud to be a volunteer lawyer for the Support Center for Child Advocates.
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Richard L. Catania, M.S. Partner |
| Richard L. Catania received his J.D. (magna cum laude) from St John's University School of Law (1988); an M.S. in Chemical Engineering from Manhattan College Graduate School of Engineering (1981); and a B.S. in Chemistry from Fordham University (1978). He is licensed as an attorney-at-law in N.Y. State (2d Department) and is registered to practice before the U.S. Patent and Trademark Office. He is also admitted to practice before the Eastern and Southern Federal District Courts in N.Y., as well as the Federal Circuit in Washington, DC. He was IP counsel at Pfizer Inc for several years. Mr. Catania is experienced inter alia in the chemical, pharmaceutical, catalyst, mechanical, medical device/ophthalmics, packaging, and business method arts. His practice includes U.S. litigation and interference matters (Eastman Kodak v. Duracell, 48 USPQ2d 1061, Dist. Ct., DC 1998), licensing, acquisition, and other transactional work, due diligences, foreign oppositions, prosecution, and IP counseling.
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Steven I. Wallach Partner |
| Steven Wallach received his B.S.E.E. from Polytechnic Institute of New York, with his concentration in Computer Science in 1983, cum laude. He received his J.D. from George Washington University National Law Center in 1986. Mr. Wallach was a member of Tau Beta Pi and Eta Kappa Nu honor societies. He was admitted to the New York bar in 1989 and is admitted to practice before the U.S. Courts of Appeals for the Ninth and Federal Circuits, U.S. District Courts for the Southern and Eastern Districts of New York and the Northern District of California. He is registered to practice before the United States Patent and Trademark Office. Mr. Wallach has represented clients ranging from start-ups to Fortune 50 companies, often in high-profile matters. Since drafting and litigating the patent at issue in State Street Bank v. Signature Financial, much of his practice has focused on business methods, software, and computer systems. Mr. Wallach's representations have also included closely watched litigations regarding patenting e-commerce systems and copyrighting graphical user interfaces. Among others, Mr. Wallach has authored the following published articles: Out of Cite, Out of Mind: A Lawyer's View of the Debate Over "Noncitable" Judicial Decisions, Thirteenth Annual Fordham Conference on International Intellectual Property Law & Policy, April 2005; How Could You Ever Patent That?: A Guide for the Perplexed, with a Few Remedies for Change, New York Law Journal, July 24, 2000. Additionally, the Statement of Issues that he authored for the appellant's brief in Amazon.com v. Barnesandnoble.com is excerpted in Bryan A. Garner, The Winning Brief, pages 80-81 (2d ed. Oxford U. Press 2004). Mr. Wallach was also a panelist on the United States Patent and Trademark Office's Business Method Patents Roundtable on July 27, 2000 and testified before the Judicial Conference's Appellate Rules Advisory Committee on proposed amendments to the Federal Rules of Appellate Procedure on April 13, 2004. Mr. Wallach joined Scully Scott as a partner in 2010 to enhance the firm's growing litigation practice. His practice concentrates on litigating and procuring patents, and includes opinions, licensing, and counseling on patent, copyright, trademark, trade-secret, and e-commerce issues. Technologies with which Mr. Wallach has experience include client-server systems, semiconductor fabrication, nanotechnology, medical devices, NMR spectrometers, vector network analyzers, inkjet cartridges and printers, polymer chemistry, and a variety of software programs and financial products, services, and instruments. For a list of Mr. Wallach's representative cases, please click here.
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Keith A. Weltsch Partner |
| Keith Weltsch received his B.A. in History from Pennsylvania State University in 1995 and graduated with honors and with distinction, Phi Beta Kappa. He later received his J.D. from George Washington University in 1998. He was a Trademark Examining Attorney at the U.S. Patent and Trademark Office from 1999-2002, including a special work detail at the Office of Legislative and International Affairs. He is admitted to practice in N.Y. and the U.S. District Court for the Eastern District of New York and District of Columbia. Mr. Weltsch specializes in U.S. and foreign trademark prosecution and clearance; experienced in oppositions and cancellations before the Trademark Trial and Appeal Board, conducting settlement negotiations and preparing consent and coexistence agreements relating to trademark litigation. He is also knowledgeable in copyright and domain name dispute laws and litigation.
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