Experience

Patent Portfolio Strategy for University Covering Science, Engineering and Medical Fields

Developed and executed patent filing strategy and managed diverse patent portfolio for a large university client. Technologies span various subject areas including science, engineering and medical fields.

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.

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.

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.

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.

Managed Multiple International Patent Portfolios for Manufacturer

Provided development and strategic counsel oversight for multiple U.S. and international patent portfolios for commercially valuable products and systems of a multinational electrical product manufacturer for more than 20 years.

Management of U.S. and Foreign Patent Families for Major Medical Device Companies

Managed multiple U.S. and foreign patent families and provided strategic counsel for medical device companies involving technologies related to fluorescent imaging, vascular occlusion, neuromodulation, and renal and cardiovascular devices.

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 in Touch Screen Technology

Managed the filing of a portfolio of patent applications for an international client in the touch screen technology area.

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.

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.

Portfolio Management, Strategic Direction for Multiple Consumer Products, Health Care Companies

Managed global patent portfolios for and provided strategic counsel to multimillion-dollar consumer products and health care companies in the U.S. and abroad, including preparation and prosecution, opinion work, Inter Partes Review work and litigation.

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.

U.S. National Applications for Multibillion-Dollar Foreign Clients

Managed the filing and prosecution of extensive U.S. National (371) applications for a number of multibillion-dollar foreign clients. Armstrong Teasdale represents clients based in China, Japan, Singapore, the United Kingdom, Germany, Australia and many other countries.

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.

Secured Dismissal for Biometric Solution Client in Patent Infringement Case

Obtained voluntary dismissal with prejudice of a patent infringement case brought by a patent assertion entity against biometric solution client.

Summary Judgment for Manufacturer in Patent Case

Obtained summary judgment and favorable resolution for our client, a major manufacturer, regarding six patents in U.S. District Court for the Eastern District of Missouri. 

IP Due Diligence in $3.4 Billion Acquisition of Medical Device Manufacturer

Led IP due diligence for a major medical device company, including in-depth research and analysis of both the target company and its competitors, resulting in our client’s decision to move ahead with its $3.4 billion acquisition of a medical device manufacturer.

Eight-Figure Verdict Preserved in Patent Infringement Reexamination

Successfully defended client's patent in a reexamination proceeding initiated by a competitor at the U.S. Patent and Trademark Office, preserving an eight-figure litigation verdict for the client against the competitor for infringement of the patent.

Successfully Defended Snack Chip Manufacturer Against Infringement, Other Claims

Successfully defended client against claims of patent infringement, trademark infringement, trade secret misappropriation and unfair competition brought by leading manufacturer of snack chips. Secured a defense verdict on all claims.