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.
Patent Portfolio Evaluations for Pharmaceutical Company
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.
RNA/LNP Landscape Analysis for Partnership, Acquisition Potential
Analyzed the ribonucleic acid/lipid nanoparticle (RNA/LNP) landscape to assess the IP positions of major companies in the field and to identify potential companies for partnering or acquisition.
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.
Counsel Regarding COVID-19 Vaccine Patent Application
Provided counseling and creative solutions regarding prosecution strategy related to a COVID-19 vaccine patent application in view of various business agreements with a research institution and attendant Bayh-Dole considerations to promote business development.
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 for Semiconductor Materials Supplier
Managing U.S. and international patent portfolios for a leading materials supplier to the semiconductor industry.
IP Due Diligence for Life Sciences Company
Performed IP due diligence and authored multiple noninfringement and invalidity opinions to position a small life sciences company developing and marketing biological wound healing materials for a possible IPO and eventual acquisition for $300 million, plus an additional $100 million upon reaching certain growth milestones.
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.
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.
Trademark Portfolio for Global Packaging Company
Managing the trademark portfolio for a major global packaging company.
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.”
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.
Drafted IP Agreements for University
Evaluated and drafted IP licensing agreements, research and collaboration agreements and material transfer agreements for a large U.S. university.
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.
Inter Partes Review for Multinational Security Company
Handled four different inter partes reviews for multinational company specializing in security and identity solutions.
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.
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