Ann C. Palma

P: 312.913.2118
F: 312.913.0002

Ann C. Palma is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Ms. Palma’s practice covers many areas of intellectual property law, including patent and trademark prosecution, counseling, and litigation. She is actively involved in advising and prosecuting client patent portfolios in the U.S. and worldwide in areas ranging from pharmaceuticals, food science, and chemistry, to material science and consumer products. Ms. Palma also counsels clients in validity, infringement, and patentability analyses for this wide range of technologies, with a particular interest in the fields of chemical and food science products.

Ms. Palma also has experience in all facets of litigation and has represented a diverse client base in all of her technical areas. Her practice also includes inter partes review (IPR) and post grant review procedures before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office.

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 and defending several inter partes review (IPR) petitions for major pharmaceutical corporations.


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.


Chicago Bar Association Symphony Orchestra
Bohemian Lawyers Association of Chicago
PTAB Bar Association
American Chemical Society


Summer 2015 (snippets)
In the highly fractured Amgen v. Sandoz decision, the Federal Circuit, in part, concluded that the Biologics Price Competition and Innovation Act (“BPCIA”) patent resolution procedure was not mandatory, leaving open the distinct possibility that no biosimilar applicant will ever use the new biosimilar approval pathway.
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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