Experience

IP Strategy for Top-Selling Animal Health Vaccine

Since 2004, Tracey has been involved with planning and implementing a strategy for protecting what eventually became the most successful animal health vaccine of all time based on yearly sales. This involved assessing the state of the art of vaccines against the disease, drafting patent applications focusing on the differences between this vaccine and the others that were developed or are being developed, prosecuting those patent applications in front of the U.S. Patent and Trademark Office, and advising on the prosecution of corresponding patent applications worldwide. To date more than 30 patents have been issued in the U.S. alone, with more currently undergoing examination.

Represented Clean Energy Client in Growth of Multimillion-Pound IP Portfolio

Represented a domestic client in the field of clean energy, drafting and prosecuting patent applications in the U.K. and internationally. The client has now grown from a small startup to encompass two entities who have received millions of pounds in investment on the strength of their IP portfolio.

Advised Clients on Computer-implemented Inventions

Assisted multiple clients in obtaining patents for computer-implemented inventions, which have traditionally posed difficulties in prosecution before the European Patent Office.

$65 Million Sale of Specialty Home Furnishings Business

Represented the seller, a manufacturer of specialty home furnishings, in its acquisition by a leading brand aggregator in numerous different consumer products spaces. The sale, for $65 million in cash and equity, represented the buyer’s first acquisition in the home furnishings space. We also provided counsel on employment, employee benefits, tax, patent, and intellectual property aspects of the transaction.

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.

Global Patent Strategy and Execution for Diagnostics Company

As outside counsel for a venture-backed diagnostics company, took on an existing patent estate and developed a multi-pronged protection strategy for a first-in-class clinical microbiology lab system along with key messages for leadership and investors; drove successful U.S. and foreign prosecution to obtain multiple grants offering diversified claim protection ahead of launch; and filed roughly 30 new patent families over two years to capture ongoing innovation driven by second-gen product development.

Global Strategy for Chemical, Battery-Related Patent Portfolios

Devised and implemented global strategies for numerous intertwined patent portfolios for chemical and battery-related technologies.

Patent Portfolio for Semiconductor Materials Supplier

Managing U.S. and international patent portfolios for a leading materials supplier to the semiconductor industry.

Defense of Multinational Tech Company in Patent Infringement Claims

Represented multinational technology company specializing in internet-related services and products (online advertising technologies, search engine, cloud computing, mobile software and hardware) in several matters ranging from alleged infringement of patent covering software methods used in generating differential update packages for mobile device operating systems to patent claims related to the non-cellular signal use in determining a cell phone’s location.

Successful Verdict in Four-Week Trial for Disease/Genetics Testing Corporation

Represented plaintiff health sciences corporation in a patent infringement action relating to its automated tissue processing systems used in the diagnosis of a variety of diseases. The four-week jury trial resulted in a verdict finding infringement on all asserted claims, which was upheld on appeal before the Federal Circuit.

Evaluations of Large Tech, Patent Portfolios for Valuation and Market Potential

Evaluated large technology and patent portfolios consisting of thousands of assets, for valuation and total addressable market (TAM) potential to identify assets for investment, license and/or sale. Identified market participants and developed licensing programs to maximize client ROI. Negotiated resulting agreements and licenses.

Oversight of Significant Global Patent Portfolio

Oversaw a worldwide intellectual property portfolio consisting of approximately 11,000 trademark filings, over 70 patent filings and over 8,000 domain names.

Trademark Portfolio for Global Packaging Company

Managing the trademark portfolio for a major global packaging company.

White Space Analysis and R&D Guidance for $120 Million Product Area

Guided R&D activities for $120 million product area for public life sciences company by analyzing patent landscape to identify white space and exclusivity opportunities.

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.”

Claim Strategy Formulation for Future Filings

Formulated claim strategies for flagship gene editing system and standardized approach for future filings at biotech startup.

Led IP Diligence Process with Series B Investors

Led IP diligence process with series B investors for biotech startup, including development of key messages on patentability and FTO.

Patent Portfolio Strategy for University Covering Pharmaceuticals, Life Sciences 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 pharmaceuticals, life sciences and medical fields.

Advised on Paragraph (iv) Certification Strategy Related to Development of Generic Pharmaceuticals

Advised in-house counsel on paragraph (iv) certification strategy and provided related opinion work, including noninfringement and invalidity analyses of competitor patents in support of Hatch-Waxman litigation. Further advised on design-around and re-formulation strategies.

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.

Contact Us
  • Worldwide
  • Boston, MA
  • Denver, CO
  • Dublin, Ireland
  • Edwardsville, IL
  • Jefferson City, MO
  • Kansas City, MO
  • Las Vegas, NV
  • London, England
  • Miami, FL
  • New York, NY
  • Philadelphia, PA
  • Princeton, NJ
  • Salt Lake City, UT
  • St. Louis, MO
  • Washington, D.C.
  • Wilmington, DE
Worldwide
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Boston, MA
800 Boylston St.
30th Floor
Boston, MA 02199
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Boston, Massachusetts
Denver, CO
4643 S. Ulster St.
Suite 800
Denver, CO 80237
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Denver, Colorado
Dublin, Ireland
Fitzwilliam Hall, Fitzwilliam Place
Dublin 2, Ireland
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Edwardsville, IL
115 N. Second St.
Edwardsville, IL 62025
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Edwardsville, Illinois
Jefferson City, MO
101 E. High St.
First Floor
Jefferson City, MO 65101
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Jefferson City, Missouri
Kansas City, MO
2345 Grand Blvd.
Suite 1500
Kansas City, MO 64108
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Kansas City, Missouri
Las Vegas, NV
1980 Festival Plaza Drive, Suite 750
One Summerlin
Las Vegas, NV 89135
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Las Vegas, Nevada
London, England
Royal College of Surgeons of England
38-43 Lincoln’s Inn Fields
London, WC2A 3PE
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Miami, FL
355 Alhambra Circle
Suite 1250
Coral Gables, FL 33134
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New York, NY
7 Times Square, 44th Floor
New York, NY 10036
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Philadelphia, PA
2005 Market Street
29th Floor, One Commerce Square
Philadelphia, PA 19103
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Philadelphia, Pennsylvania
Princeton, NJ
100 Overlook Center
Second Floor
Princeton, NJ 08540
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Princeton, New Jersey
Salt Lake City, UT
201 South Main Street
Suite 750
Salt Lake City, UT 84111
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Salt Lake City, Utah
St. Louis, MO
7700 Forsyth Blvd.
Suite 1800
St. Louis, MO 63105
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St. Louis, Missouri
Washington, D.C.
1050 Connecticut Avenue NW
Suite 500
Washington, DC 20036
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Wilmington, DE
1007 North Market Street
Wilmington, DE 19801
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Wilmington, Delaware