Ann C. Palma

Partner
P: 312.913.2118
F: 312.913.0002

Ann C. Palma is a partner with McDonnell Boehnen Hulbert & Berghoff LLP.  Ms. Palma’s practice includes many areas of intellectual property law, including patent and trademark litigation, counseling, and prosecution. In particular, Ms. Palma has significant experience in all facets of litigation and has represented clients spanning a diverse range of technologies, with a concentration in matters involving pharmaceuticals, medical devices, and software. Her practice also includes inter partes review (IPR) procedures before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. 

Ms. Palma also maintains an active patent and trademark prosecution practice, preparing and prosecuting U.S. and foreign patent applications on behalf of clients worldwide.  She has experience drafting patent applications in the pharmaceutical, consumer product, food science, material science, and chemical areas. Ms. Palma also provides technological advice in support of validity, infringement, and patentability analyses for a wide range of technologies, with a particular interest in the field of chemical consumer products. 

Ms. Palma currently serves as a member of the firm’s Recruiting Committee.  Prior to embarking on her legal career, Ms. Palma had professional experience at BP America, Inc. and Human Genome Sciences, Inc.

Representative Experience

Ms. Palma’s representative experience includes: 

  • Obtaining jury verdict of infringement and award of $15.8 million on behalf of software company in a patent infringement suit in the Northern District of Illinois. 
  • Obtaining summary judgment of patent noninfringement and invalidity for a major medical device manufacturer. 
  • Representing several global pharmaceutical companies in ANDA litigations.
  • Preparing, prosecuting, and obtaining patent applications for food science, consumer product, and software clients. 
  • Preparing several inter partes review (IPR) petitions for a major pharmaceutical corporation.

 

Published Articles

Palma, A.C., Mohan, R.S. Iron(III) p-toluenesulfonate catalyzed synthesis of homoallyl ethers from acetals and aldehydes. Tetrahedron Letters. 2007. 48, 8665-8667.

Palma, A.C., Mohan, R.S. Environment friendly organic synthesis using bismuth compounds. An efficient method for carbonyl-ene reactions catalyzed by bismuth triflate. Tetrahedron Letters. 2005. 46, 7747-7750.

Memberships

American Chemical Society

Chicago Bar Association

Publications

Summer 2014 (snippets)
Pandora Media, Inc., (“Pandora”), with over 250 million registered users and over 70% of the market share of Internet radio, is known as a leader in the digital music industry. In 2013 alone, Pandora streamed 16.7 billion hours of music, including stations that featured genres such as “Motown,” “Oldies,” “70s Folk,” and “Classic Rock.” While Pandora streams iconic songs from these genres, Pandora ceased paying royalties on songs recorded before February 15, 1972 (“pre-1972 sound recordings”), which are only protected by state copyright laws. In an effort to recoup unpaid royalties by Pandora, Capitol Records, LLC, among other record companies, sued Pandora under New York state law for copyright infringement, misappropriation, and unfair competition, leaving Pandora potentially liable for millions of dollars in damages. This article provides an overview of the Pandora case and summarizes some of the complexities of copyright protection of pre-1972 sound recordings.
Summer 2012 (snippets)

In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced the generic Top-Level Domain (gTLD) Program to implement new Top-Level Domains into the Internet’s addressing system. To help explain the gTLD Program, this article highlights three important aspects of the Program, including: 1) background information on ICANN’s new gTLD Program and the evaluation process for applicants, 2) statistics from the first round of applications in the gTLD Program, and 3) mechanisms that rights holders may use to protect themselves (which ICANN labeled “Rights Protection Mechanisms”).

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