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Experience
Biotechnology - Patent Counsel
Private Healthcare Services Organization
Prevailed at the Federal Circuit for private healthcare services organization when the court affirmed that two patents owned by another clinic were invalid for claiming a natural law. The team defended the company against a series of cases and appeals since 2015 and in total, has now invalidated five competing clinic patents and won two Federal Circuit appeals.
BioClin Therapeutics
Provided comprehensive patent counsel for privately held pharmaceutical company developing biologic therapeutics for treatment of FGFR3-mediated conditions. Representation included patent procurement and management of licensed and original patent portfolios.
City of Hope
Provided patent counsel for treatment and research center developing innovative treatments for cancer, diabetes and other diseases. Representation included patent procurement for technologies, including small molecule and biologic therapeutics.
Eloxx Pharmaceuticals
Offered comprehensive patent counsel for publicly traded pharmaceutical company developing small molecule therapeutics for treatment of cystic fibrosis and other premature stop codon-related diseases. Representation included patent procurement and management of licensed and original patent portfolios.
MicroByre
Provided comprehensive IP counsel for privately held biotechnology company developing novel genetically modified bacterial strains. Representation included patent strategy analysis and due diligence.
Olatec Therapeutics, LLC
Represented Olatec Therapeutics, LLC in patent prosecution matters related to methods of using dapansutrile for treatment of cardiovascular disease, including acute myocardial infarction, atherosclerosis, heart failure, stroke, thrombosis, carditis, cardiac allograft rejection, cardiomyopathy and peripheral vascular diseases.
University of Washington CoMotion
Advised University of Washington CoMotion on the preparation and prosecution of patent applications generally directed to: methods of characterizing atherosclerotic plaques; affinity tags and associated processes of purifying tagged molecules; and methods of enhancing nucleic acid amplification by physical proximity.
Public Pharmaceutical Company
Provided outside IP counsel for public pharmaceutical company. Responsible for building and managing global IP strategy for pharmaceutical product with over $150MM in annual sales. Served as IP counsel in domestic and foreign joint development transactions and provided IP counsel in relation to clinical, commercial supply and licensing agreements. Served as IP counsel in due diligence of various product acquisition opportunities.
Emerging Pharmaceutical Company
Provided outside IP counsel for clinical stage pharmaceutical company developing novel compounds for a variety of indications in the fields of dermatology, liver disease and lung disease.
Private Pharmaceutical Company
Provided outside IP counsel for private pharmaceutical company focusing on women’s healthcare, gastroenterology and dermatology in due diligence of various product and company acquisition and licensing opportunities.
Medical Devices - Patent Counsel
Nevro Corporation
Patent portfolio planning, development and counseling, including patent preparation, prosecution, evaluation and analysis for medical device company in the fields of spinal cord stimulation, sensors, and implantable devices.
Ventana Medical Systems, Inc.
Represented Ventana Medical Systems, Inc. in patent prosecution matters related to methods and apparatuses for heating slides, such as for histology.
Zeltiq Aesthetics, Inc.
Counseled Zeltiq Aesthetics, Inc. on patent prosecution matters related to methods, compositions and apparatuses for reducing the freezing point of a patient’s skin and other subcutaneous structures.
ReFlow Medical, Inc.
Advised ReFlow Medical, Inc. in the preparation and prosecution of patent applications generally directed to: catheters for re-entry into a vascular space and associated methods; and drug-eluting stents having protrusions and associated methods.
Medtronic, Plc.
Represented Medtronic, Plc. in the preparation and prosecution of patent applications generally directed to: devices for replacing a patient’s mitral heart valve and associated delivery and removal systems; methods of delivering and/or removing the replacement mitral heart valve to the patient; intrasaccular and/or intravascular occlusive devices or remodeling devices and associated methods of using these devices to treat one or more vascular conditions affecting a patient.
The Brain Protection Company
Advised The Brain Protection Company on strategic analysis, portfolio development and preparation and prosecution of patent applications generally directed to implantable devices for altering blood pressure and/or blood flow in a subject’s brain to treat a cognitive condition, such as dementia, and associated systems and methods.
ReShape Medical, Inc.
Counseled ReShape Medical, Inc. on strategic analysis, portfolio development and preparation and prosecution of patent applications generally directed to: intragastric space fillers, materials for making intragastric space fillers, and associated delivery and removal devices; and associated methods of delivering, placing and/or removing the intragastric space fillers from a patient.
Post-Grant Review/Litigation Support
Horizon Pharmaceuticals, et al. v. Mylan Pharmaceuticals Inc., et al.
U.S. District Court for the District of New Jersey
Providing litigation support to team representing Mylan in three Hatch-Waxman litigations in the District of New Jersey over patent rights to naproxen/esomeprazole magnesium tablets (Vimovo®), used to treat the risk of ulcer formation in patients requiring long-term treatment with non-steroidal anti-inflammatory drugs. Cases are ongoing.
Medical Diagnostic Company
Served as co-counsel in preparation of post-grant review and inter partes review petitions.
Biotechnology and Bio-Diagnostics Company*
Assisted lead counsel in response to inter partes review petitions and for the duration of the inter partes review proceeding, including attending oral arguments.
Pharmaceutical Company*
Assisted lead counsel in response to a post-grant review petition, preparation of expert declarations and prior art analysis.
Telecommunications Company*
Assisted lead counsel in response to an inter partes review petition, preparation of expert declarations and prior art analysis.
*Prior experience
