Patent

Evaluated patent portfolios and performed freedom-to-operate assessments on ribonucleic acid/lipid nanoparticle (RNA/LNP) technologies of multiple emerging companies to arm a large, international pharmaceutical company with strong negotiation positions to complete mergers, acquisitions or business development deals.

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.

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.

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.

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.

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

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.

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.

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.

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.”

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.

Evaluated and drafted IP licensing agreements, research and collaboration agreements and material transfer agreements for a large U.S. university.

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.

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.