Overview
Nathanael R. Luman, Ph.D., represents chemical and pharmaceutical companies in intellectual property matters. He is actively involved in Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board. In addition, he has litigated cases under the Hatch-Waxman Act and counseled generic pharmaceutical companies with respect to the Abbreviated New Drug Application (ANDA) process.
Nate develops patent portfolios for companies. His expertise includes strategic patent procurement, analyzing third-party patents, conducting due diligence studies, and preparing opinions on patent validity and freedom-to-operate issues.
In 2012, Nate served as a law clerk to the Honorable Marilyn L. Huff of the U.S. District Court for the Southern District of California. He worked on numerous patent litigation cases during his clerkship.
He is admitted to the State Bar of California and registered to practice before the U.S. Patent and Trademark Office. He received his law degree, with honors, from the University of San Diego School of Law.
Nate earned his doctoral degree in chemistry from Boston University, where his work involved the synthesis and characterization of biodegradable molecules and macromolecules. His research has been published in a variety of scientific journals, including The Journal of the American Chemical Society, Organic Letters, and Pure & Applied Chemistry.
Clerk Experience
- Honorable Marilyn L. Huff of the U.S. District Court for the Southern District of California
Education
- University of San Diego School of Law (USD) (J.D., 2010), cum laude
- Boston University (Ph.D. Chemistry, 2006)
- Grove City College (B.S. Chemistry, 2000), cum laude
Representative Matters
Tokyo Ohka Kogyo, Ltd. v. Fujifilm Electronic Materials U.S.A., Inc., Case No. PGR2022-00010 (2023)
Represented Tokyo Ohka Kogyo in PGR challenging a patent relating to cleaning compositions for removing residues from a semiconductor substrate. Obtained final written decision holding all challenged claims unpatentable.
Illumina, Inc. v. The Trustees of Columbia University, Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797 (2019).
Represented Illumina in IPRs challenging patents relating to nucleotide analogues for sequencing-by-synthesis. Obtained final written decisions holding all challenged claims unpatentable.
Natera, Inc. v. Illumina, Inc., Case No. IPR2018-01317 (2019).
Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal testing. Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.
Complete Genomics, Inc. v. Illumina Cambridge Ltd., Case Nos. IPR2017-02172 and IPR2017-02174 (2018).
Defended Illumina against petitions for IPR regarding a patent directed to DNA sequencing-by-synthesis. Obtained decisions denying petitions and rejecting all challenges raised against Illumina’s claims.
Illumina, Inc. v. Cornell Research Foundation, Inc., Case IPR2016-00557 (2017).
Represented Illumina in an IPR proceeding challenging a patent relating to assays for DNA detection. Achieved favorable case-dispositive settlement for client after institution of the IPR.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016).
Represented Illumina and obtained affirmance of IPR final written decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.
Ariosa Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093 (2016).
Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods. Obtained final written decision upholding the validity of all challenged claims.
Roche Molecular Systems Inc. v. Illumina, Inc., Case IPR2015-01091 (2015).
Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal screening methods. Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.
Eisai Co., Ltd., et al. v. Lupin Ltd., et al., Case Nos. 13-civ-1279 and 13-civ-1281 (2015).
Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to rufinamide (the active ingredient in Eisai’s Banzel® product). Achieved favorable case-dispositive settlement for client.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00517 (2015).
Represented Illumina in an IPR proceeding defending a patent directed to DNA sequencing-by-synthesis. Obtained final written decision upholding the validity of all challenged claims.
Ranbaxy Labs., Ltd. and Ranbaxy, Inc. v. Vertex Pharmaceuticals, Inc., Case IPR2013-00024 (2013).
Represented Ranbaxy in an IPR proceeding challenging a patent relating to fosamprenavir (the active ingredient in Lexiva®). Achieved favorable case-dispositive settlement for client after institution of the IPR.
Recognition
Awards & Honors
- Named among “Leaders in Law” by San Diego Business Journal (2023)
- Recognized in Patexia’s 2023 PTAB Intelligence Report as a “Top Performer” based on activity and performance before the PTAB
- Named to the Best Lawyers: Ones to Watch guide, which “recognizes lawyers who are earlier in their careers for their outstanding professional excellence in private practice”, for Intellectual Property Law (2021 – 2022)
Affilliations
- Patent Trial and Appeal Board (PTAB) Bar Association
- Intellectual Property Owners (IPO) Association – U.S. Post-Grant Patent Office Practice Committee
- San Diego Intellectual Property Law Association (SDIPLA)
News & Insights
Articles
Kerry Taylor and Nathanael Luman co-authored, “What You Need to Know About the USPTO’s Proposed Rule Changes to PTAB Trials,” The Intellectual Property Strategist (July 2020)
Peter A. Hecker & Nathanael R. Luman, Untangling the Burden of Persuasion in Obviousness Rejections During Patent Examination at the USPTO, 44 New Matter 5 (2019).
Nathanael Luman, Kerry Taylor, Carol Pitzel Cruz, “Three Statistics Every ANDA Filer Needs To Know About Orange Book Patent Trials At the USPTO” Knobbe Martens Firm Alert (March 2018)
Nathanael Luman, Kerry Taylor, “Can I Appeal my Inter Partes Review? The Federal Circuit Clarifies Article III Standing for Petitioners” (September 2017)
Nathanael Luman, Kerry Taylor, “Five Techniques To Stop an IPR Before it Starts” Today’s General Counsel (June 2017)
AIA Trial Institution Rates Are Good News For Patent Owners, Law360 (May 2017)
7 Tips For Using Foreign Language Documents in IPR, Law360 (November 2016)
S.R. Meyers, F.S. Juhn, A.P. Griset, Nathanael R. Luman & M.W. Grinstaff, Anionic Amphiphilic Dendrimers as Antibacterial Agents, 130 J. AM. CHEM. SOC. 14444 (2008).
Nathanael R. Luman & M.W. Grinstaff, Synthesis and Aqueous Aggregation Properties of Amphiphilic Surface-Block Dendrimers, 7 ORGANIC LETTERS 4863 (2005).
Nathanael R Luman, T. Kim & M.W. Grinstaff, Dendritic Polymers Composed of Glycerol and Succinic Acid: Synthetic Methodologies and Medical Applications, 76 PURE & APPLIED CHEM. 1375 (2004).
Nathanael R. Luman, K.A. Smeds & M.W. Grinstaff, The Convergent Synthesis of Poly (Glycerol-Succinic Acid) Dendritic Macromolecules, 9 CHEM. EUR. J. 5618 (2003).
USPTO Proposes Phillips-Tye Claim Construction For Post Grant Proceedings at the PTAB
PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office
PTAB Issues Order Proposing Claim Amendments to Patent Owner
USPTO to increase IPR fees by 33% and PGR fees by 27% in 2018
PTAB Designates as “Informative” Three Discretionary Denials of IPR Institution Decisions
PTAB Releases September 2017 Stats
PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products
Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners
Standing to Appeal PTAB Decision to Federal Circuit is Measured for the Appellant, Not the Appellee
PTAB Designates As Precedential A Decision Finding Assignor Estoppel Is Not A Defense in IPRs
USPTO Director Grants Extension for Missed IPR Appeal to Federal Circuit
PTAB Expunges Non-Compliant Motions for Observations on Cross-Examination
Defect in Patent Assignment Results in IPR Challenge Effectively Going Unopposed
PTAB Grants-in-Part Motions to Amend in Three Related IPRs
PTAB Weighs Five Factors in Discretionary Denial of Xactware’s Second IPR Petition
PTAB Grants Rare Motion to Amend
PTAB Denies Institution of Sixth IPR Petition Filed Against Adaptive Headlamp’s Patent
Final Written Decision Relies on Unexpected Results To Uphold Pozen’s Ulcer Reducing Vimovo® Claims Over Kyle Bass’s IPR Challenge
IPR Denied after Board Finds Asserted PCT Publication Not Entitled to Priority Application’s Filing Date under Pre-AIA 35 U.S.C. § 102(e) Prior Art Theory
PTAB Grants Rare IPR Request for Rehearing in WesternGeco LLC v. PGS Geophysical AS
The USPTO Amends AIA Trial Rules: 4 Changes That You Need To Know