Obtained dominating patents for an oncology company in a crowded area of antibody technology.
For a client with a contentious relationship with its competitor owning blocking patents, prosecuted several interferences—including successful appeal to the Federal Circuit—which resulted in destroying all the competitor’s patents while leaving our client’s intact.
Advised an early-stage biotech company in building a patent portfolio which was eventually licensed by a multinational pharmaceutical company in a deal worth close to $900 million.
Prosecuted one of the most widely licensed biotechnology patent portfolios, with over 70 licensees.
Obtained a Patent Term Extension of over three years for a biologic, representing over $900 million in projected sales.
For a pharmaceutical client in a crowded technology area, pursued and obtained allowed claims on its next pipeline drug, raising company share price.
Built pharmaceutical and biotech portfolios on which billions of funding has been based.
For a biotechnology client with a case suspended for years at the USPTO, developed a prosecution strategy to move the case out of suspension, avoiding an interference, and resulting in a dominant patent.
Assisted a leading academic medical institution in securing patent protection for its licensed diagnostic test expected to be used on millions of patients and which is the basis of a new therapeutic indication.
Obtained seminal patents in the fields of gene therapy, phage display, and transgenic production of proteins in animals. We also managed the filing, prosecution, and licensing of several fundamental technologies in area of gene activation and cell signaling.
Developed and negotiated numerous university license agreements and established written patent policies and procedures to provide systematic structure to technology development and protection for many academic and research institutes.
Managed the patent portfolio of a company in phase II/III clinical trial for an anti-cancer small molecule therapeutic.
For a start-up biotechnology client with a self-written provisional application, crafted a comprehensive application suitable for filing in all geographies, resulting in a stronger business plan and a successful presentation to investors and potential business partners.
Managed the patent portfolio and strategy of a publicly traded nanopore DNA sequencing platform company, prosecuting patents on the company’s core technology and helping it effectively protect its IP assets as it enters the US market through partnerships.
Provided strategic IP portfolio development, counseling and opinions, patent prosecution, and IP due diligence for corporate transactions and SEC filings for a clinical-stage oncology company, which has a patent portfolio of more than 30 issued patents and many pending US and foreign applications.
Acted as IP counsel in several initial rounds of financing for a gene therapy company, including a $50 million Series B and $40 million Series D, as well as through the company’s IPO. We also assisted with IP due diligence for acquisition by a large US pharmaceutical company and also with potential other acquirers. We have continued to work on this portfolio following the acquisition.
Worked with a muscle disease company since its founding through IPO to build its intellectual property portfolio and strategy, which is central to its three pre-clinical stage programs.
Managed several patent portfolios in the biotech, data processing, data science and machine learning space for a clinical stage biotechnology company pioneering messenger RNA (mRNA) therapeutics, and conducted IP due diligence work that helped take the company public.
Successfully challenged key patents to pharmaceutical compounds and methods of treating non-Hodgkin’s lymphoma on behalf of Epizyme, leading to the cancellation of all challenged claims. (IPR2020-00327, IPR2020-00328).
Persuaded the PTAB to deny two IPR petitions for our client, Medy-Tox, at the institution stage on patents related to methods of treating facial wrinkles using animal-protein-free botulinum toxin compositions. We convinced the Board that the petitioner failed to properly demonstrate that the prior art reference relied upon satisfied a particular provision of the challenged claims. (IPR2021-01203, IPR2021-01204).
Saved two critical patents directed to certain highly purified chemical compositions for our client, WisTa, even though the European counterparts were successfully challenged by the same party. (Confirmation of all claims: IPR2018-00182 and IPR2018-00323).
Successfully defended a patent on groundbreaking fibrosis treatment by convincing the PTAB to deny institution of a PGR filed by a competitor of our client, Enleofen, because the petitioner failed to meet the threshold showing that any claim is likely unpatentable based on lack of written description, non-enablement or obviousness. (Institution denied: PGR2019-00053).
Saved a valuable patent for our client, University of Maryland, by demonstrating that the petitioner failed to show lack of written description and lack of enablement for “tagged proteins” used to treat cancer, and therefore the challenged patent antedated the purported prior art references. (Institution denied: IPR2020-00233).
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