Experience

Successful Defense of Game-Changing Technology for Agricultural Manufacturer

Successfully defended game-changing agricultural equipment patents before the USPTO during reexamination related to a pending infringement suit in which the major manufacturer is the plaintiff.

Acquisition of Online Apparel Ecommerce Business, Related IP Assets

Represented an investment firm client in the acquisition at auction of an online specialty retailer’s ecommerce business and related intellectual property assets, including trademarks and domain names, as well as merchandise and other assets. Transaction included negotiating asset purchase agreement, participating in bankruptcy negotiations, review of IP contracts, negotiating of loan document, conducting diligence of IP, as well as transition agreement for continued operation of ecommerce websites and onboarding of IP portfolio.

IP Due Diligence Review for Billion-Dollar Fragrance, Flavors Company

Managed large IP due diligence review for a billion-dollar fragrance and flavors company leading up to a significant acquisition.

Patent Portfolio Development for Fortune 100 Company

Assisted in developing patent portfolio of Fortune 100 company by drafting and successfully prosecuting patents on technologies including robotics, additive manufacturing, generators, and inspection systems. Interacted directly with inventors to ensure that all important aspects of inventions were covered and that the portfolio was consistent. Personally prepared over 100 patent applications for the client.

IP Portfolio Development for Cybersecurity Startup

Developed and grew intellectual property portfolio for startup company in the cybersecurity space. Identified key values for the company and prepared and prosecuted patents protecting and building on the value for the client. Obtained the first patent for the company within one year of receiving disclosure to help startup quickly obtain funding and continue strategic growth.

Patent Portfolio for Construction Products Client

Developed patent portfolio for construction products client that was in business for decades but did not have any prior patents. Guided the client through protection of emerging technologies for their space and built a portfolio around key products release.

Prior Art Analysis, Product Development Counsel for International Client

Advised large international company on prior art analyses and product developments for launches in very crowded technology fields. Directly interacted with engineers to ensure that the products were protected and the client’s risk was understood and minimized.

Patent Portfolio Review for Multinational Client

Conducted a week-long review of every patented product of a multinational client's portfolio at their facilities. After the review, prepared an in-depth analysis of the patent term/life of each of the respective products.

License Agreements for Baby Products Manufacturer

Negotiated license agreements for manufacturer of baby bottles/teething toys, including rights to names, likenesses, trademarks, copyrights, images and other proprietary intellectual property.

Multimillion-Dollar Patent Infringement Verdict

Won multimillion-dollar jury verdict of patent infringement for trace detection equipment in the United States District Court for the Eastern District of Virginia.

Drafted Sales Promotions for Retail Client's Brands

Drafted and assisted in the successful implementation of various promotions, including social media-based sweepstakes, photo contests, and other advertising campaigns, in an effort to bring more visibility to and consumer interaction with the client's brands.

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.

IP Due Diligence in Business Acquisitions

Led the IP due diligence team in the successful acquisition of at least six animal care products businesses, resulting in the addition of hundreds of trademarks, patents, copyrights and domain names to the client's IP portfolio.

Inter Partes Review for Multinational Security Company

Handled four different inter partes reviews for multinational company specializing in security and identity solutions.

Pharmaceutical Patent Portfolio for University

Managed pharmaceutical patent portfolio that includes filings in over 16 different countries. Worked with university and licensee on achieving patent protection worldwide.

Due Diligence for Multinational Chemical Company

Managed significant due diligence project for multinational chemical company. The project included clearing the client's product through a freedom-to-operate opinion and also identifying any potentially problematic references owned by competitors.

Prepared Invalidity Opinions for Client's New Product Release

Prepared over a dozen invalidity opinions on competitors' patents that presented a potential issue for a global client's release of a new product.

Filed University's First Ever Patent Applications

Filed the first ever patent applications for a university client. Worked with the university to create and implement internal intellectual property procedures for the client.

Conducted Competitive Strategy Projects for Pharmaceutical Company

Ran year-long competitive strategy projects for multinational client. The projects included in-depth analyses and presentations on competitors' complete intellectual property portfolios, including freedom-to-operate positions, invalidity opinions and strategic patent application filings to gain a competitive edge.

Counsel to Worldwide Leader in the Payments Technology Industry

Counseled worldwide leader in the payments technology industry across a variety of practice areas in connection with technology development and licensing, and payment processing service offerings.

Outside Counsel for Global Rental Car Business

Served as outside legal counsel to a global leader in the rental car business in connection with technology development, software licensing and telecom services.

Patent Preparation and Prosecution for Leading-Edge Technologies

Prepared and prosecuted patent applications on leading-edge technologies developed by research institutes, including medical instruments and imaging methodologies for treating and detecting diseases.

Developed, Executed Patent Filing Strategy Central to Multimillion-Dollar Acquisition for Client

Developed and executed patent filing strategy resulting in patent family that was central to multimillion-dollar acquisition by large, publicly traded fluidics systems and specialty engineered products company.

Domestic and Foreign Patent Strategy and Portfolio Management for Agricultural Equipment Company

Developed and executed domestic and foreign patent filing strategy and management of patent portfolio related to precision agricultural equipment, including the development of offensive and defensive patent filing strategies.

Advised on Patent Matters Related to Automotive Technologies

Advised in-house counsel on patent-related matters, including noninfringement and invalidity analyses of competitor patents. Prepared and prosecuted patent applications directed to variety of automotive technologies including automotive manufacturing, infotainment systems, electric vehicle (EV) charge controllers, audio systems, suspension systems and other mechanical systems.

Prosecuted Patent Applications for Large University Client

Drafted and prosecuted patent applications relating to medical imaging technologies including CT, MRI, optical tomography and image processing.

Managed International Patent Portfolio for Health Care Company

Managed U.S. and international patent portfolio related to heart pumps, cardiac catheters, electrocardiograms, heart mapping, heart monitoring and ablation therapy technologies.

Patent Portfolio Management for Multinational Aerospace Corporation

Managed patent applications relating to semiconductors, avionics, antennas, modeling, simulation, non-destructive testing, flight control systems, communication systems, electronics, and unmanned systems.