Experience
Litigation
Van der Hoeven Horticultural Projects B.V. v. Glass Investment Projects, Inc.
U.S. Court of Appeals for the Federal Circuit
Represented patent owner on appeal following an IPR decision upholding challenged claims over the prior art. Obtained summary affirmance upholding favorable judgment on appeal. Case No. 18-2234
Fontem Ventures B.V., et al. v. R. J. Reynolds Vapor Company, Case Nos. 16-cv-1255-CCE, 16-cv-1257-CCE, 16-cv-1258-CCE, 17-cv-175-CCE
U.S. District Court for the Middle District of North Carolina
Representing plaintiff Fontem in enforcing fifteen electronic cigarette patents in four infringement cases. Cases are settled.
Fontem Ventures B.V., et al. v. Nu Mark, LLC, Case Nos. 16-cv-1259-CCE, 16-cv-1261-CCE
U.S. District Court for the Middle District of North Carolina
Represented plaintiff Fontem in enforcing sixteen electronic cigarette patents in two consolidated infringement cases. Cases settled.
Fontem Holdings 1 B.V. & Fontem Ventures B.V. v. Njoy, Inc. et al., Case No. CV14-1645-GW (lead case)
U.S. District Court for the Central District of California
Represented plaintiff Fontem in enforcing nine electronic cigarette patents in twenty-four consolidated patent cases against eight of the largest e-cigarette companies operating in the United States. Cases settled.
Contested Patent Matters
R. J. Reynolds v. Fontem Ventures B.V., et al.
Patent Trial and Appeal Board
Represented patent owner Fontem in defending twenty-six inter partes review petitions of electronic cigarette patents. Obtained multiple favorable Board decisions prior to settlement.
Nu Mark, LLC v. Fontem Ventures B.V., et al.
Patent Trial and Appeal Board
Represented patent owner Fontem in defending twenty-five inter partes review petitions of electronic cigarette patents. Obtained multiple favorable Board decisions prior to settlement.
Lo et al. (Sequenom, Inc.) v. Quake, Et Al (Illumina, Inc), Interference Nos. 105,920, 105,922-924.
Board of Patent Appeals and Interferences
Represented Party Lo in a series of Interferences before the Board of Patent Appeal and Interferences between Parties Lo and Quake involving the use of random massively parallel sequencing for detection of fetal aneuploidy in a maternal blood sample. Obtained judgment for Party Lo on priority because Party Quake’s involved patent and applications lacked written description support for the involved claims.
Patent
Patent Procurement, Counseling and Due Diligence for City of Hope
Patent preparation, prosecution, and counseling related to small molecule therapeutics, biotechnology therapeutics diagnostics and medical devices.
Patent Procurement, Counseling and Due Diligence for Editas Medicine
Patent counsel for publicly traded pharmaceutical company developing clinical applications for genome editing. Representation includes patent procurement and due diligence relating to financing.
Patent Procurement, Counseling and Due Diligence for Eloxx Pharmaceuticals
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 includes patent procurement, management of licensed and original patent portfolios, and due diligence relating to licensing and financing.
China Practice
Patent Counseling and Procurement for Shanghai Benemae Pharmaceutical Corporation
Providing advice on a variety of IP-related issues including patent procurement, general IP strategies and internal IP management.
Patent Counseling for Xcelom Limited
Assisting in the enforcement of its licensed patent rights in Hong Kong related to use of random massively parallel sequencing for detection of fetal aneuploidy.
Patent Procurement and Litigation Counseling for Ruyan
Managed the company’s global patent portfolio and enforced patents to protect its vapor technology.