St Paul, Minnesota, United States
Experienced Patent Attorney with 26 years in IP law, specializing in global portfolio management, patent procurement, transactions, mergers and acquisitions, litigation, IPRs, and opposition practice. Additionally, I have 13 years of in-house IP experience at a Fortune 500 healthcare company.
Responsible for supporting digital and AI technologies across Abbott's medical device business units. Counseling executive leadership and business development units on freedom to operate, landscape, and IP portfolio development. Negotiating joint development, research, licensing, HCP consulting, non-disclosure, and supply and vendor agreements. Conducting IP due diligence for potential acquisitions and investment activities and counseling executive management on IP monetization opportunities. Developing strategies for IP litigation, patent troll suits, IPRs, and Oppositions.
Managed several patent portfolios in the medical device and computer software fields. Responsibilities included coordinating the preparation of patent applications with other attorneys and patent agents, oversight of patent prosecution strategy, and the identification and development of key areas of intellectual property protection. Drafted and negotiated joint development and research, licensing and non-disclosure agreements. Counseled clients on landscape, freedom to operate, and design-around issues.
Involved in all aspects of patent prosecution, including the preparation and prosecution of patent applications, amendments, appeals, reissues, and reexaminations. Prepared numerous clearance and invalidity opinions and counseled clients on design-around options. Drafted and negotiated technology transfer and licensing agreements and provided portfolio counseling.
Prepared complaints, answers, petitions, interrogatories, motions and supporting memoranda. Responsible for negotiating settlements, conducting depositions, interviewing clients, and attending hearings. Assisted in trial strategy for patent, business, and securities fraud disputes.
Involved in the development of fluid and gas control systems. Projects included the design of a gas pollution control system for a chemical plant and the development of a pharmaceutical coating process.