Practice Areas – Biopharmaceuticals; small molecules and therapeutic antibodies; genetic and cellular therapies; prescription and OTC drugs; and therapeutic regimens for chronic and infectious diseases.

▪  Litigation – Draft inter partes review (IPR) petitions, pleadings, evidentiary objections, motions, and expert declarations. Recruit, develop, and prepare technical experts for deposition testimony. Conduct niche and broad legal research using various databases and resources, including Westlaw, LexisNexis, and Docket Navigator. Seamlessly manage multiple cases simultaneously and prioritize tasks efficiently to meet internal, court, and/or Patent Trial and Appeal Board (PTAB) deadlines.

▪  Prosecution – File and prosecute applications at the USPTO. Develop effective arguments in response to PTO Office Actions and draft instruction letters concerning the same to foreign patent associates; amend and draft new claims; and execute prior art searches (patent prosecution) and clearance searches (trademark prosecution).

▪  IP Asset Management – Conduct due diligence assessments of the scope, validity, and enforceability of a target company’s IP assets (patents, trademarks, copyrighted media, and trade secrets) to identify and mitigate risk in business transactions, including mergers and acquisitions (M&A).

▪  Opinions of Counsel – Draft written opinions of counsel applying up-to-date jurisprudence and precedential PTAB decisions, outlining a factual and legal analysis of issues concerning the non-infringement, invalidity, patentability, and enforceability of IP rights, drawing from a thorough analysis of the file wrapper and prosecution history, claim scope, cited references, and a targeted prior art search for relevant references not considered during prosecution.

▪  IP Public Policy – Proactively identify emerging IP public policy, pending legislation, and regulatory developments with the potential to impact client portfolios and business operations. Notable client projects include:

o On behalf of a global advocacy association, analyzed the USPTO Advance Notice of Proposed Rulemaking (ANPRM) (88 Fed. Reg. 24503 (Apr. 21, 2023) (amending 37 CFR, part 42)) and drafted comments for public submission to the Federal Register summarizing key issues of concern for member organizations, including carefully crafted arguments in support of and opposed to individual elements of the ANPRM that would encumber the business and operational interests of the client’s members representing biotechnology companies, state biotechnology groups, academic and research institutions, and related organizations across the U.S. and in 30+ countries.

Practice Areas – Patent litigation concerning bioinformatics, gaming, and consumer technologies; trademark prosecution and enforcement at the TTAB; and trade secret litigation at the district court.

o Trademark – Reviewed clearance searches; prepared substantive responses to PTO Office Actions; prepared and responded to cease and desist letters; and counseled clients seeking business-aligned legal solutions to prosecution, enforcement and litigation, licensing, and advertising.

o Patent – Prepared pleadings and motions for IPR proceedings and district court litigation, including invalidity and infringement contentions; conducted legal research, prior art searches, and freedom-to-operate (FTO) searches; prepared substantive responses to PTO Office Actions.

Drafted a published opinion; assisted staff attorneys and senior advisors with statutory interpretation, opinion writing, and citation review; conducted legal research; prepared research memoranda for appellate panel judges; and attended weekly closed- panel conferences and public oral arguments.

Researched and drafted memoranda, briefs, and motions related to Constitutional Law, Criminal Procedure, and Habeas Corpus; assisted in investigations; conducted defendant and witness interviews; and participated in legal aid federal misdemeanor docket.

Completed comprehensive legal revision and citation review of the Oregon Medical-Legal Handbook; updated pre-existing (circa 2015) monographs with relevant changes to state and federal statutory law; leveraged medical doctorate to develop 150 monographs on important medical-legal topics, including managed care liability, medical ethics, medical record disclosure regulations, data privacy, HIPAA compliance, contracting, and transactional issues concerning the practice of medicine.

Provide one-on-one legal consultations to low-income community artists concerning trademarks, the Internet and social media, and rights against cybersquatters; contracts, cease and desist letters, and business formation; copyright fundamentals and legal issues in music and publishing; and estate planning.

Utilized medical expertise in musculoskeletal biomechanics to support research, design, and development of surgical spine implants, conducting an extensive patent literature review and meta-analysis study on existing surgical implants and clinical outcomes. Represented Lucenta at nationwide medical conferences and before regulatory bodies. Developed company protocol for inventors and creators concerning intellectual property rights and enforcement.

Leveraged medical knowledge and network to increase healthcare provider recruitment by a record 72% within six months and maintained attrition under 5% over a year; created health informatics content, ensured software compliance with federal and state telehealth laws, and represented Medici at the American Telemedicine Association (ATA) Annual Conference and Expo (2017). Developed company policies concerning intellectual property rights and enforcement.

Conducted translational research on chemotherapy-induced cardiotoxicity; contributed to the development of drug-targeting therapies; prepared successful Institutional Review Board (IRB) applications and grant proposals; facilitated think tanks at the MD Anderson Cancer Center and maintained an educational lab website.