Jay P. Kesan.

Of Counsel

Scientific & Legal Work Experience:

  • IBM T.J. Watson Research Center, Yorktown Heights, NY
    • Research Staff Scientist, 1989-1993
  • Massachusetts Institute of Technology, Cambridge, MA (concurrent with IBM)
    • Visiting Scientist, National Magnet Laboratory, 1990-1993
  • Columbia University, New York, NY (concurrent with IBM)
    • Thesis Supervisor of Doctoral Students, 19889 – 1993
  • Technical and/or Legal Expert & Consultant, 1998-Present
    • Technical Expert and/or Patent Law Expert in numerous patent litigations
    • Technical expert in microelectronics, microwave/millimeter wave circuits and devices, optoelectronics, communications and software
    • Appointed by U.S. federal judges as Special Master in patent litigations
    • Served on the Board of Directors/Advisors of numerous technology start-ups
  • Pennie & Edmonds LLP, Washington, DC
    • Associate Attorney (1996-97)
    • Patent Agent & Law Clerk (1993-96)
  • Law Clerk to the Hon. Patrick E. Higginbotham, Dallas, TX, 1997-1998
    • U.S. Circuit Judge, U.S. Court of Appeals for the Fifth Circuit
  • United States Patent & Trademark Office (USPTO), Alexandria, VA
    • Thomas A. Edison Scholar Oct. 2012-Feb. 2013

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Academic Work Experience:

University of Illinois at Urbana-Champaign
  • Professor & Director, Program in Intellectual Property & Technology Law, 2004-Present
  • H. Ross & Helen Workman Research Scholar, 2011-Present
  • Mildred Van Voorhis Jones Faculty Scholar, 2007-2009
  • Affiliate Professor, Department of Electrical & Computer Engineering, 1999-Present
  • Research Professor, Coordinated Science Laboratory, 2003-Present
  • Faculty Fellow, Office of the Vice President for Technology & Economic Development 2009-2010
  • Professor & Group Leader, Business, Economics and Law of Genomic, 2006-Present
  • Biology (BioBEL) research theme, Institute of Genomic Biology (IGB)
  • Program Leader, Biofuel Law & Regulation, Energy Biosciences Institute (EBI), 2007-Present
  • Professor, College of Business, 2008-Present
  • Professor, Agricultural & Consumer Economics, 2004-Present
  • Associate Professor, College of Law and the Institute of Government & Public Affairs (IGPA), 2002-2004
  • Assistant Professor, College of Law, 1998-2002
  • Assistant Professor, Institute of Government & Public Affairs (IGPA),1999-2002

Subjects Taught: Property; Introduction to Intellectual Property; Patent Law; Managing Intellectual Property; Intellectual Property Transactions; Patent Litigation; Law of Renewable Energy; Law & Regulation of Cyberspace; Law & Economics; Theoretical Foundations of Intellectual Property; Legal Issues in Technology Entrepreneurship

Seattle University School of Law

Visiting Professor of Law Fall 2009
Subjects Taught: Patent Litigation

University of Illinois, USA – Oxford University, UK – University of Victoria, BC

Co-Director, Summer Study Abroad Program in International & Comparative
Intellectual Property Summer 2002-2007
Subjects Taught: Int’l & Comparative Patent Law; IP Issues in Emerging Technologies

DePaul University College of Law

Jerold Hosier Distinguished Visiting Chair in Intellectual Property Spring 2004

Georgetown University Law Center

Visiting Assistant Professor Fall 2001
Subjects Taught: Patent Law; Theoretical Foundations of Intellectual Property

University of Illinois at Urbana-Champaign

Resident Associate, Center for Advanced Study (CAS) 2000-2001
Co-organizer of year-long seminar series on “The University’s Changing Role: Defining Values for Research & Technology”

University of Tokyo, Japan

JSPS Invited Fellow and Visiting Associate Professor Dec. 2000-Jan. 2001

University of Washington, Seattle

Fellow, CASRIP Intellectual Property Summer Institute July 2000
Invited Faculty July 2001-04

Institute of Intellectual Property (IIP), Tokyo, Japan

Invited Foreign Research Fellow Nov.-Dec. 2003

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Memberships:

  • Member, Executive Committee, Certificate on Entrepreneurship and Management (CEM) for Life Scientists, University of Illinois, 2008-Present; Program Director, 2011-Present
  • Member, Executive Committee, Institute of Genomic Biology (IGB), University of Illinois, 2008-Present
  • Member, Institute of Genomic Biology (IGB) Executive Director Search Committee, University of Illinois, 2011-2012
  • Faculty Fellow, Office of the Vice President for Technology & Economic Development, University of Illinois System, 2009-2011
  • Member, University-wide Revenue Generation Committee, Chair, Sub-Committee on Intellectual, Commercialization and Entrepreneurship and drafted Section of Report devoted to commercialization, Spring 2010
  • Faculty Fellow, Office of the Vice President for Technology & Economic Development, University of Illinois System, 2009-2010
  • Member, Executive Committee, Certificate on Entrepreneurship and Management (CEM) for Life Scientists, University of Illinois, 2008-Present
  • Member, Executive Committee, Institute of Genomic Biology (IGB), University of Illinois, 2008-Present
  • Member, Steering Committee, Information Trust Institute (ITI), University of Illinois, 2008-Present
  • Member, University of Illinois System-Wide Committee on Intellectual Property, 2003-Present
  • University of Illinois College of Law, Served on: Placement & Clerkships Committee, Student Diversity Committee, Technology Committee (served as Chair for several years), Admissions Committee, International Programs & Studies Committee
  • Faculty Adviser, Asian American Law Students Association, University of Illinois College of Law, 1998-Present

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Honors and Awards:

  • Thomas A. Edison Scholar, United States Patent & Trademark Office (USPTO), 2012
  • Honorable Mention Award ($1,000), Research Competition on Cyberdeterrence conducted by the National Research Council (NRC) for work on “Thinking Through Active Defense in Cyberspace,” 2011
  • Best Paper Award for Contributions to Foundations of Electronic Governance at the 4th International Conference on Theory and Practice of Electronic Governance (ICEGOV), Beijing, China, Oct. 25-28, 2010
  • Microsoft Faculty Research Award for work on technology standards, 2010 ($40,000)

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Research Grants:

  • University of Illinois Campus Research Board Grant, “Patents As Incomplete Contracts,” $13,000 (1999)
  • University of Illinois Campus Research Board Scholars Travel Grant (2000)
  • The Net Institute, “Internet Regulation: The Political Economy of ICANN and the Shaping of New Regulatory Regimes for the Internet,” (with A. Gallo), $15,000 (2003)
  • National Science Foundation (NSF) Grant, “Understanding ‘Code’: How Information Technologies Regulate Behavior,” $300,000 (2000-2004)
  • U.S. Department of Agriculture, Illinois-Missouri Biotechnology Alliance, “The Role and Function of the Patent System in Industrialized Agriculture: Innovation and Rent-sharing in Corn and Soybean Supply Chains,” $210,000 (2001-2004)
  • Coleman Foundation Grant, “Development of Online Course on Legal Issues in Technology Entrepreneurship, $14,000 (2001-2002)
  • U.S. Department of Agriculture, Illinois-Missouri Biotechnology Alliance, Supplementary Research Grant,“Improving Efficiency and Minimizing Adverse Selection in Seed Production Contracts,” $120,000 (2003- 2005)
  • U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Understanding the Role of Intellectual Property in Soybean Innovation,” $150,000 (2003-2006)
  • U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Empirical Studies of Patent Litigation and Ag-Biotech Innovation,” $100,000
  • National Science Foundation (NSF) Grant, “Governing with Information Technologies,” $395,155 (2004-2007), Supplemental Funding, $76,190 (2007-2008)
  • U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Plant Innovation and Intellectual Property Regimes: Time for a Change?,” with B. Endres, $60,314 (2007-2008)
  • U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Evolving Biodiesel Markets: Opportunities and Challenges for Small/Medium-sized Biodiesel Firms” with R. Agarwal, $40,000 (2007-2008)
  • Federal Judicial Center, The Research Arm of the Federal Courts, “Empirical Study of the Role of Special Masters in Patent Litigation,” $20,000 (2007-2008)
  • Energy Biosciences Institute, “Biofuel Law and Regulation,” with B. Endres, $510,000 (2008-2011)
  • National Science Foundation (NSF) Grant, “REGNET-Information Management and Compliance Assistance for Patent Laws and Regulations,” $200,000 (2008-2011)
  • National Science Foundation (NSF) Grant, “Innovation Personnel and their Ecosystem: Career Choices and Trajectories of Scientists–Industry or Academia and Basic or Applied?” with R. Agarwal, $33,000 (2010-2013)
  • Microsoft Research Grant, unrestricted grant, $57,000 (2011), $80,000 (2012)
  • National Academy of Sciences, Board of Science, Technology and Economic Policy (STEP), $7,500 (2012)
  • Energy Biosciences Institute, “Biofuel Law and Regulation,” $175,000/year (2012-2014)

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Publications and Lectures:

  • Published over 60 papers in several peer-reviewed journals, 6 authored or edited books, 14 book chapters and over 30 law review articles
  • Scientific contributions featured in The Wall Street Journal, Electronic Engineering Times, Lasers and Optronics, and other technical publications
  • Presented numerous invited talks and contributed talks at international conferences and universities world-wide
  • Holder of 8 U.S. patents
  • Conference Co-organizer (with AIPLA), Conference on Small Claims Patent Court, University of Illinois Illini Center, Feb. 28, 2013, Chicago, IL
  • Regular Radio Commentator for “Legal Issues in the News,” WILL-AM-FM Radio, http://will.illinois.edu/legalissuesinthenews, 2010-Present
  • Certified Facilitator and Program Director, Kauffman Foundation FastTrac TechVenture Entrepreneurship Education Program, 2011-Present
  • Symposium Co-organizer, Biofuel Law and Regulation Conference, Annual event held each year in April since 2009, University of Illinois
  • Symposium Co-organizer, 30th Anniversary Celebration of the U.S. Sup. Ct. decision in Diamond v.Chakrabarty, Sept. 22, 2010, University of Illinois
  • Member, International Editorial Board, I/S: A Journal of Law and Policy for the Information Society, 2007-Present

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Government Testimony:


Toward a Better Informed Patent Office, Presented testimony and participated twice in panels at the FTC & DOJ Hearings on the Implications of Competition and Patent Law and Policy, http://www.ftc.gov/opp/intellect/index.htm, April 10, 2002, & October 25, 2002, Washington, D.C.

Testified at the Second Public Hearing conducted by the U.S. Patent and Trademark Office (USPTO) in conjunction with the Small Business Association (SBA) on “Study of International Patent Protection for Small Businesses,” at the University of Southern California, Los Angeles, CA, Nov. 1, 2011.

Testified about the Renewable Fuel Standard (RFS2) Program to the House Subcommittee on Energy and the Environment, the U.S. House of Representatives Committee on Science, Space, and Technology, and the hearing was on “Conflicts and Unintended Consequences of Motor Fuel Standards,” Nov. 2, 2011.

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Print Jay’s Profile

Jay P. Kesan

jkesan@dimuro.com
Tel: 703-684-4333
Mobile: 217-377-9905

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Areas of Practice/Interest:
  • Patent Law
  • Intellectual Property
  • Internet Law & Regulation
  • Renewable Energy/Biofuel Regulation
  • Empirical & Analytical Methods in the Law
  • Law and Economics
  • Agricultural Biotechnology Law
Admissions:
  • Supreme Court of Virginia 1997
  • U.S. District Court for the Eastern District of Virginia
  • Fourth, Fifth and Federal Circuits
  • District of Columbia, 1998
  • Virginia, 1997
  • U.S. Patent & Trademark Office (1993 – Reg. No. 37,488)
Education:

Georgetown University Law Center, Washington, DC
  • J.D., December 1996, summa cum laude (2 conferred out of 623 graduates) GPA: 11.59/12.0
  • Honors: Charles A. Keigwin Award for Academic Excellence Order of the Coif; Dean’s List All Years
  • Best Paper Awards in Criminal Justice, Constitutional Law and Commercial Law
  • Law Review: The Georgetown Law Journal, Associate Editor
Hebrew University, Faculty of Law, Jerusalem, Israel
  • Tulane/Cardozo Uri & Caroline Bauer Program, August 1996 Studied religious, international and comparative law GPA: 3.89/4.0
University of Texas at Austin, Austin, TX
  • Ph.D. In Electrical & Computer Engineering, 1989
  • M.S. in Electrical & Computer Engineering, 1986 GPA: 3.86/4.0
  • Honors: Commendation from the Dean of the Graduate School for Outstanding Doctoral Dissertation
National Institute of Technology, Karnataka (NITK), Surathkal, India
  • B.S. in Electrical Engineering, Highest Honors, 1984
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