Experience
Successful PTAB Administrative Appeal
Won an administrative appeal for a global technology company before the U.S. Patent Trial and Appeal Board in a case involving a patent application that sought to protect a method of predicting a consumer’s future purchases, based on previous transaction card purchases indicating that a “life event” had recently occurred for the consumer. The United States Patent and Trademark Office had rejected the application as directed to an abstract idea under a 2014 Supreme Court case. In its decision in favor of the client, the Appeal Board held that any abstract idea was integrated into a practical application because the patent claims “improve the underlying consumer behavior prediction technology.”
Filed Trademarks for Retirement Plan Provider in Naming of Major Sports Stadium
Served as IP counsel to a retirement plan provider related to their involvement in purchasing naming rights to a major U.S. sports stadium. Provided counsel on and filed for trademark protection of names and logos following multi-year deal.
Structured Multimillion-Dollar, Multi-Year Sponsored Research Program and Joint Venture for Health Care Client
Structured a multimillion-dollar, multi-year sponsored research program and related joint venture between a health care client and a leading research university. Structured budgeting and oversight mechanisms for research funding; structured LLC joint venture (JV) entity and related governance matters; completed licensing agreements and conducted analysis related to JV intellectual property ownership; all enabling future commercialization of intellectual property developed from funded research.
IP Agreements for Health Client Entering Third-Party Partnerships
Prepared various IP-related agreements including licenses, commercialization and joint development agreements, enabling client to successfully enter into partnerships with third parties.
Patent Clearance Projects in Pharmaceutical Industry
Managed several patent clearance projects relating to a computer ecosystem designed to manage the prescription process and use by patients of a multimillion-dollar pharmaceutical product.
Patent Infringement, Invalidity Analysis Relating to Display Screen Technology
Managed patent infringement and invalidity analysis for a client in the area of display screen technology. This involved numerous design patents covering various types of display screens.
Patent Landscape Analysis for Fintech Client
Conducted patent landscape analyses and ideation sessions for a large fintech client in the area of authenticating online users.
Patent Portfolio Development Related to Autonomous Vehicles
Led a team of patent attorneys to prepare and file several patent applications for a large client directed to the control, management and diagnostic testing of autonomous vehicles.
Patent Portfolio in Touch Screen Technology
Managed the filing of a portfolio of patent applications for an international client in the touch screen technology area.
Payment Authentication Patent Portfolio for Fintech Client
Developed patent portfolio for large fintech client in the area of payment authentication services. Multiple patent attorneys prepared and filed numerous patent applications directed to authenticating online users using client device metadata.
IP Due Diligence for $900 Million Business Acquisition
Handled the IP due diligence for a client that acquired a payments technology company valued at about $900 million.
