KATHERINE E. WHITE
Wayne State University Law School Phone (313) 577-1054
471 West Palmer Street Fax (734) 998-1628
Detroit, Michigan 48202 k.e.white@wayne.edu
CURRENT POSITIONS:
Professor of Law, WAYNE STATE UNIVERSITY LAW SCHOOL, August 1996 to present
· Courses Teaching: Contracts I, Contracts II, Patent Enforcement, and Patent Law
Regent, UNIVERSITY OF MICHIGAN, First Term: January 1, 1999 to December 31, 2006, Second Term: January 1, 2007 to December 31, 2014
Vice President, Fulbright Association Board, 2006 to Present
Special Counsel and Consultant to the Secretary of Agriculture, 2002 to 2005
Member, U.S. Department of Agriculture, Plant Variety
Protection Advisory Board, Term:
October 2004 to October 2008
Member, United Bank and Trust of Washtenaw Board of Directors, State of Michigan, 2003 to Present
CIVILIAN
EDUCATION:
THE GEORGE WASHINGTON UNIVERSITY, THE
NATIONAL LAW CENTER,
Washington, District of Columbia, Master of Laws in Intellectual Property, May 1996
· Awards: Shaw Fellowship 1994-1996
THE UNIVERSITY OF WASHINGTON SCHOOL OF LAW, Seattle, Washington, Juris Doctor, 1991
· Awards: Washington Law School Foundation Scholarship 1988-1991
THE PRINCETON UNIVERSITY, Princeton, New Jersey, Bachelor of Science and Engineering in Electrical Engineering and Computer Science, 1988
·
Activities: Treasurer, Princeton Tower Club, 3 years
Varsity Volleyball and Varsity Track
· Awards: United States Army R.O.T.C. Scholarship
MILITARY SERVICE:
·
Lt. Colonel, United States Army
Reserve, Judge Advocate General’s Corps, Deputy Commander and Associate Dean
(DIMA-reservist) of the Judge Advocate General’s Legal Center and School,
Charlottesville, Virginia, Present
·
Captain, Active Duty, United States
Army Judge Advocate General’s Corps, 1992 to 1995
MILITARY EDUCATION:
OTHER EXPERIENCE:
White House Fellow 2001-2002, Special Counsel to the Secretary of Agriculture, Ann M. Veneman, United States Department of Agriculture
Member, U.S. PATENT AND TRADEMARK OFFICE PATENT PUBLIC ADVISORY COMMITTEE, August 2000-August 2002
Judicial Law Clerk, U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT, the Honorable Randall R. Rader, 1995 to 1996
Adjunct Professor, George Washington University National Law Center, 1994-1996
· Courses Taught: Comparative Patent Law Seminar, Intellectual Property and Antitrust Law
Intellectual Property Counsel, UNITED STATES ARMY CORPS OF ENGINEERS, Washington, D.C., 1992 to 1995, Member of the Office of the Chief Counsel’s Honors Program
· Awards: Chief Counsel’s Award for Excellence
· Government Contracting specialist
· Provided extensive legal support for the Corps of Engineers' Laboratories regarding intellectual property issues encompassing all aspects of patent prosecution
· Wrote numerous patent applications, amendments to patent applications and appeal briefs for the Corps of Engineers’ field offices and laboratories
· Initiated patent license agreements between Corps of Engineers’ laboratories and the private sector
· Initiated technology transfer of the Corps of Engineers' technology to the private sector
· Wrote trademark applications and responses
· Examined copyright and software procurement, licensing and policy issues
· Provided continuous legal advice on all intellectual property matters for Corps of Engineers’ field offices and headquarters
LM ERICSSON, Stockholm, Sweden, Intellectual Property Legal Adviser, 1991 to 1992
· Advised the Ericsson Patent and Trademark Department on United States Patent and Trademark law.
· Wrote amendments to patent applications submitted to English speaking countries and to the European Patent Office
· Wrote brochures distributed to Ericsson employees outlining corporate intellectual property policy and procedures
AWARDS AND DECORATIONS
·
Max-Planck-Institute for Foreign and
International Patent, Copyright and Competition Law Scholarship Summer Research
Grant 2000, Munich, Germany
·
Fulbright Senior Scholar Award 1999-2000;
full-maintenance. Host Institution,
Max Planck Institute for Foreign International Patent, Copyright and Competition
Law; Munich, Germany
·
Military Awards and Decorations: Army Commendation Medal, Army Reserve
Components Achievement Medal, Commander’s Award for Civilian Service, National
Defense Service Medal with one oak leaf cluster, Army Service Ribbon
PUBLICATIONS:
·
The
Recent Expansion of Extraterritoriality in Patent Infringement
Cases, 2007 UCLA J.L. &
Tech. 1
·
One
Step Outside the Country, One Step Back from Patent Infringement,” Contract and Fiscal Law Developments of
2006—Year in Review, Army Law. 136,
Department of the Army Pamphlet 27-50-404 (January 2007)
·
Preserving the Patent Process to Incentivize
Innovation in a Global Economy, Syracuse Science and Technology Law
Reporter, (Spring 2006)
·
Trade Secrets and the Federal Tort Claims
Act, Contract and Fiscal Law Developments of 2005—Year in Review, Army Law. 125, Department of the Army Pamphlet
27-50-392 (January 2006)
·
DD Form 882 Over Substance: Caveat Forfeiture, Contract and
Fiscal Law Developments of 2005—Year in Review, Army Law. 126, Department of the Army Pamphlet
27-50-392 (January
2006)
·
Losing Rights to Intellectual Property: The Perils of Contracting with the
Federal Government, Contract and Fiscal Law Developments of 2004—Year in
Review, Army Law. 146, Department
of the Army Pamphlet 27-50-380 (January
2005)
·
An Efficient Way to Improve Patent
Quality for Plant Varieties, 3 Nw J.
of Tech. & Intell. Prop. 79 (2004)
·
Festo:
A Case Contravening the Convergence of Doctrine of Equivalents
Jurisprudence in Germany, the United Kingdom, and the United
States, 8 Mich. Telecomm. & Tech. L. Rev. 1
(2001-2002) (lead article)
·
A Rule for
Determining When Patent Misuse Should be Applied, 11 Fordham Intell. Prop., Media & Ent. L.J.
671 (Spring 2001)
·
A General
Rule of Law is Needed to Define Public Use in Patent Cases, 88 Ky. L.J. 423, No. 2 (1999-2000)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business (September1999 loose-leaf edition)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September 2000)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September 2001)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September 2002)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September2003)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September2004)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September 2005)
·
Eric M.
Dobrusin and Katherine E. White, Intellectual Property Litigation, Pretrial
Practice Guide, Aspen Law
& Business Supplement (September 2006)
·
Katherine
E. White, Intellectual Property Litigation, Pretrial Practice Guide, Chapter 2A, Cumulative Supplement,
Aspen Publishing 1998
· Prosecution History Estoppel after Warner-Jenkinson, Comment, Center for Advanced Study and Research on Intellectual Property Publication Series No. 3, 1997, University of Washington School of Law (Summer 1998)
UNPUBLISHED PAPERS:
·
Masters of Law Thesis: Consequences of Failing to Address
Competition Law in TRIPS and Other Sections of the Uruguay Round of GATT,
May 1996
PRESENTATIONS AT ACADEMIC AND PROFESSIONAL
PROGRAMS:
· Forthcoming—Panelist: Northern Kentucky University Chase College of Law Review Intellectual Property Symposium (February 2008)
· Forthcoming—Panelist: The Role of Engaged Universities in Economic Transformation, A Regional Conference based on the National Academies Study, “Rising Above the Gathering Storm”, University of Michigan, Ann Arbor (October 15-16, 007)
· Panelist: Panel Discussion of KSR Int’l v. Teleflex, Inc., 127 S.Ct 1727 (2007), Intellectual Property Law for the Eastern District of Michigan Judges and Staff, Detroit, MI (August 29, 2007)
· Keynote Speaker: Michigan Society of Professional Engineers Southeastern Chapter, Scholarship Awardee Dinner (May 23, 2007) (speech on the importance of the engineering profession and getting certified to be a Professional Engineer)
· Keynote Speaker: University of Michigan Tri-Service (Army, Navy, Air Force, Marines) R.O.T.C. Award Ceremony (April 3, 2007) (speech on leadership)
· Keynote Speaker: UAW Women’s History Month Forum (March 4, 2007) (Speech on higher education and affirmative action in the State of Michigan after the passage of a Constitutional Amendment to ban the use of race in admissions and hiring decisions)
· Keynote Speaker: Friends of the Michigan League, University of Michigan (April 26, 2006) (speech on challenges of funding higher education in a difficult political climate)
· Panelist: Wolverine Caucus Forum on Technology Transfer and State Universities in the State of Michigan (April 28, 2005)
· Moderator, Sesquicentennial Deans’ Forum at the University of Michigan College of Engineering (October 17, 2003)
· Keynote Speaker, Alternative Dispute Resolution and the Role of the National Patent Board in Intellectual Property Disputes, Pittsburgh Intellectual Property Law Association, State Bar of Pennsylvania (Pittsburgh, PA, April 19, 2000)
· Recent Developments and Ethical Practice and Procedure at the U.S. Patent and Trademark Office, at the Intellectual Property Law Workshop, State Bar of Michigan (Mackinac Island, MI, July 1998)
· Patent Issues Related to Electrical and Mechanical Inventions, at the Patent and Intellectual Property Law and Practice Summer Institute for the Center for Advanced Study and Research on Intellectual Property, University of Washington School of Law (Seattle, Washington, July 1998)
·
Director
and Creator of the Patent and Trademark Law Week in Detroit Seminar. During
this event the U.S. Court of Appeals for the Federal Circuit, which usually sits
in Washington, heard oral arguments at Wayne State University and the U.S.
Courthouse in Detroit. In addition, both the Board of Patent Appeals and
Interferences and the Trademark Trial and Appeal Board heard arguments at the
Detroit Public Library, (October 1997)
·
Moderator, at the Marcus Finnegan
Lectures at the George Washington University Law School (Washington, District of
Columbia, September 1997)
· Prosecution History Estoppel in the Wake of Warner-Jenkinson, at the first annual Pacific Rim High Technology Protection Practice Update Conference at the University of Washington School of Law (Seattle, Washington, July 1997)
·
BAR
MEMBERSHIPS
· State Bar of Michigan, Washington State Bar
· United States Supreme Court Bar, United States Court of Appeals for the Federal Circuit Bar, United States Court of Appeals for the Armed Forces; United States Army Court of Military Review
· Registered to Practice before the United States Patent and Trademark Office
STATE BAR ACTIVITIES
·
Former Council Member, Intellectual
Property Law Section of the State Bar of Michigan (1997-2000)
· Former Committee Co-Chair, Patent Issues in Legislation, Intellectual Property Law Section of the State Bar of Michigan (1997-2000)
PROFESSIONAL
ASSOCIATIONS
· American Bar Association, American Association of Law Schools, American Intellectual Property Law Association, Fulbright Association Life Member, Federal Circuit Bar Association, Michigan Patent Lawyer’s Association, National Bar Association, State of Michigan Bar Association and the Washington State Bar Association, Wayne State University Chapter American Association of University Professors/AFT, White House Fellows Alumni Association and Foundation; and Wolverine Bar Association