PARTNERS

Frank S. DiGiglio
Paul J. Esatto, Jr.
Leopold Presser (1927-2011)
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
Richard L. Catania, M.S.
Keith A. Weltsch
Seth Weinfeld
William Chung


FRANK S. DiGIGLIO 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.


Email: fsd@ssmp.com

PAUL J. ESATTO, JR. 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 In Fondest Memory of Leopold Presser
July 21, 1927- March 1, 2011


Leopold Presser was a brilliant, witty and charismatic man with a deep passion for his work. He was not only one of the firm's founding partners, but also one of its greatest mentors. It is evident that Mr. Presser had a strong hand in directing SSMP's great journey to success and prosperity; and he was a friend to all. Mr. 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 was registered to practice before both the 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, as well as a Patents and Contracts Mgr., for Fairchild Engine from 1957-1959 after which time he entered private practice.

Mr. Presser had 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 offered special expertise in design patents. Mr. Presser was also fluent in German.

Leo loved to travel, and his favorite getaway was St. Maarten. Perhaps, in part, because of the island's many outstanding restaurants; Leo was a self-proclaimed "foodie" with a great fervor for food and wine. He took enormous pleasure in cooking and was always eager to try something new in the kitchen and then share it in the office.

To say that his life was remarkable would be a great understatement. Anyone who had the privilege of knowing Leo personally never grew tired of his countless, incredible stories of yesteryear. It always brought him so much joy to share such stories with others and particularly with his younger colleagues. Perhaps the only experience that Leo cherished more than his work was his family. He was a loving husband to his wife, Marlene for 58 years and a devoted father to his four daughters, Rhonda, Bonnie, Michelle and Lisa. His seven grandchildren truly were the light of his life.

Leo's vivacious spirit and zeal for life will be missed more than words can say by all of his colleagues and friends here at Scully Scott. His legacy will forever remain an integral thread deeply woven into the fabric of the firm.


MARK J. COHEN, Ph.D. 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 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.

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EDWARD W. GROLZ 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 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 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 The State University of New York (SUNY) at Buffalo in 1988. In 1994, Mr. Bernstein received his J.D. from Western New England College, School 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 (BIO), Association of University Technology Managers (AUTM) and the Licensing Executives Society (LES).

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, inventorship disputes, licensing, patent life-cycle management, counseling and International Trade Commission (ITC) proceedings. Mr. Bernstein has over 17 years of experience in litigation, particularly in the biopharmaceutical, copyright and trademark fields.

Mr. Bernstein is the author of "Biotech Patents in Uncharted Waters Following Recent Court Decisions, Navigating Legal Issues in the Biotechnology Industry," 2015 Thomson Reuters/Aspatore.

Additional languages: Spanish


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THOMAS SPINELLI 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. Xiaochun Zhu, Ph.D.
Partner

Dr. Xiaochun Zhu is a patent attorney of the life science group at the intellectual property boutique firm, Scully Scott Murphy & Presser, P.C. Dr. Xiaochun Zhu received her undergraduate study at Tsinghua University (major in Bioscience) and received her Ph.D. in Biochemistry from Brandeis University in 1996. She was a postdoctoral fellow at Dana Farber Cancer Institute, Harvard Medical School from 1996-1997, and joined Scully Scott Murphy & Presser in 1997. 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, and the Eastern and Southern Federal District Courts in New York. Dr. Zhu is also registered to practice before the U.S. Patent & Trademark Office. Dr. Zhu's technical expertise is in the areas of biotechnology and pharmaceuticals. She practices in all aspects of patent procurement in the U.S. , and also performs in various aspects of the PCT practice, as well as assists in prosecution of patent applications outside of the U.S. Additionally, Dr. Zhu is experienced in opinion work, including patent validity and infringement opinions, and freedom-to-operate opinions, and counsels a range of clients from large corporations to start-up companies and universities. Dr. Zhu became the first woman partner of Scully Scott Murphy & Presser in January 2006, and was featured among New York Women Leaders in the Law in New York Magazine in 2008.

Additional Language: Chinese

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EUNHEE PARK 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 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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RICHARD CATANIA 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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KEITH A. WELTSCH 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. For 4 years, he was a Trademark Examining Attorney at the U.S. Patent and Trademark Office. He is admitted to practice in New York and the U.S. District Court for the Eastern District of New York and District of Columbia, and is a member of AIPLA and INTA.

Mr. Weltsch specializes in U.S. and foreign trademark prosecution and clearance. He is experienced in oppositions and cancellations before the Trademark Trial and Appeal Board, as well as in federal trademark litigation matters. Mr. Weltsch is also experienced in the copyright registration, enforcement and counseling fields. He also has significant knowledge with respect to the rapidly expanding and changing domain name laws, as well as the important legal interplay between domain names and trademarks.


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SETH WEINFELD Seth Weinfeld
Partner

Mr. Weinfeld received his B.S. in Electrical and Computer Engineering with a Concentration in Applied Physics and Data Storage Systems from Carnegie Mellon University in 1999. He received his J.D. from American University, Washington College of Law in 2002. He was admitted to the N.Y. State Bar in 2003. Mr. Weinfeld is admitted in the U.S. District Court for the Eastern and Southern Districts of New York. Mr. Weinfeld is registered to practice before the U.S. Patent and Trademark Office.

Mr. Weinfeld has counseled clients in the development of comprehensive intellectual property strategies to maximize the value of their intellectual property assets, including developing licensing strategies and the management of pending and issued patents. He has experience in due diligence, portfolio reviews, IP auditing and IP asset valuation considering market factors, current usage, licensing agreements and competitive advantages for the technology. Mr. Weinfeld has counseled clients in strategic preparation of multiple targeted patent applications for a particular technology with the ultimate goal of licensing the technology as part of a comprehensive patent portfolio. He has experience in the preparation and the prosecution of patent applications relating to electronic devices, heat dissipation, battery power management, biometric authentication devices, speech recognition systems, surveillance management systems, security systems, optical communication systems, mobile communication systems including user equipment and base stations, virtualization, cloud computing, mobile ad-hoc networks, radar and satellite systems, integrated information management system, emergency response systems, RFID systems, QR codes, hybrid electric vehicles, collision avoidance system, storage devices, color management, image processing, multi-function printers and electromagnetic technologies.

Mr. Weinfeld has counseled clients in freedom to operate and infringement studies including identifying relevant patents and patent applications and monitoring prosecution of the patent applications and developing design-around options. He has experience in patent, trade secret and breach of contract litigation.


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WILLIAM CHUNG William Chung
Partner

William Chung received his B.S. in Biomedical Engineering with a Concentration in Electrical Engineering from Johns Hopkins University. He received his J.D. from St. John's University in 2006 and was admitted into the New York State Bar. Mr. Chung is registered to practice before the U.S. Patent and Trademark Office.

Mr. Chung co-authored scientific papers in peer-reviewed journals including: "Optical Scatter Imaging Detects Mitochondrial Swelling in Living Tissue Slices" - Neuroimage. 2000 November and "Protection by Rapid Chemical Preconditioning of Stressed Hippocampal Slice: A Study of Cellular Swelling Using Optical Scatter Imaging" - Brain Research. 2002 July.

Mr. Chung is experienced in the preparation and prosecution of patent applications relating to electronic and electromechanical devices, medical devices, electromagnetic technologies, and optical devices.

Additional language: Mandarin


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