Overview » Co-Chair of firm's MedTech Practice Group » Experienced intellectual property attorney focusing on medical technology » Significant experience in prosecution of patents, ex parte appeals, reissues, ex parte and inter partes reexaminations, foreign oppositions and appeals, counseling on infringement and validity issues, risk analysis, and competitive assessment » Regularly advises on M&A-related intellectual property due diligence, patent and technology licensing, technology transfers and acquisitions, and joint-development alliances » Registered to practice before USPTO Representative Experience » Patenting Strategy and Portfolio Maintenance- Alexandria Research Technologies, LLC; AMS Research Corporation, Inc.; DGIMed Ortho; Monteris Medical, Inc.; and Vasamed, Inc. » IP Diligence and Freedom to Operate-American Medical Systems, Inc.; Thomas, McNerney & Partners; and Split Rock Partners » Licensing Counsel-Alexandria Research Technologies, LLC and American Medical Systems, Inc. » Ex Parte and Inter Partes Reexamination Counsel-Ypsomed AG and Monteris Medical, Inc. » Opinion Counsel-Monteris Medical, Inc.; Ypsomed AG; American Medical Systems, Inc.; and Boyle et al. v. Advanced Bio Prosthetic Surfaces, Ltd., et al., American Arbitration Association, No. 70 180 Y 00655 04 Publications LICENSING INTELLECTUAL PROPERTY IN THE INFORMATION AGE (Carolina Academic Press, 2nd ed. 2005). Preserving the Attorney-Client Privilege in the Context of M&A Intellectual Property Diligence, Minnesota State Bar Association CLE publication, May 2005. Who Owns Your Inventions?, MINNESOTA BUSINESS, February 2004. Safe and Secure-Proceed with Caution when Licensing Intellectual Property Assets, MINNESOTA BUSINESS, December 2003. The Key to Successfully Starting a Medical Technology Company, CATHLAB DIGEST, March 2003. Extracting Value from Your IP: Patent and Technology Licenses, CENTURY CITY LAWYER, September 2002. Intellectual Property Strategy as an Investment Lure, MX, November/December 2002. IP Value Extraction - Patent and Technology Licenses, CORPORATE COUNSEL, September 2002. Speaking Engagements Faculty - Hot Topics in IP Licensing 2009: Legal and Business Considerations, "Involuntary Licensing - The Implied License," Minnesota CLE, May 2009 Moderator - "First Chair Forum for In-House Counsel, Advisors and Litigation Managers" IP Litigation Panel, Minnesota CLE, September 2008 Moderator - "First Chair Forum for Private Practitioners, Litigators and Advisors" IP Litigation Panel, Minnesota CLE, September 2008 Faculty - Advanced Patent Prosecution, Minnesota CLE, "Restriction Requirements and Election of Species," March 2008 Chair - Advanced Patent Prosecution, Minnesota CLE, May 2008 Presenter - 6th Annual IBF MedTech Conference - "Patent Law Reform-Strategies for Portfolio Companies," May 2007 Presenter - Mid-America Health Care Investors Network Conference - "Patent Law Reform," February 2007 Presenter - MedTech Trends, "Building a Strategic Patent Portfolio - The Changing Landscape," December 2006 Faculty - Hot Topics in IP Licensing 2006, "Avoiding Common Licensing Pitfalls," June 2006 Faculty - The 2005 Midwest Intellectual Property Institute, "Ethical Considerations in Negotiating IP Transactions," September 2005 Chair - Intellectual Property in Complex Corporate Transactions, Minnesota CLE, May 2005 Faculty - Intellectual Property in Complex Corporate Transactions, Minnesota CLE, "Can Opinions of Counsel be Shared During the Diligence Process? Preserving Privilege if the Deal Falls Through," May 2005 Faculty - The Collaborative 18th Annual Minnesota Venture Finance Conference, "IP Portfolio Strategies," October 2004 Chair - Patent Protection for Medical Devices: Law and Strategy, Minnesota CLE, May 2004 Faculty - Patent Protection for Medical Devices: Law and Strategy, Minnesota CLE, "Patent Term Extension under 35 U.S.C. §155 and Scope of Protection under §156," Faculty - IBF MedTech Investing Conference, "The Importance of IP in Financing the Transaction," May 2004 Presenter - MedTech Trends, "Intellectual Property in Strategic Alliances-Who Owns What?," April 2004 Faculty - The New Inter Partes Reexamination, The 19th Annual Intellectual Property Law, American Bar Association Section of Intellectual Property, April 2004 Faculty - The 2003 Midwest Intellectual Property Institute, "Yours, Mine and Ours: Technology-Based Partnering Arrangements," September 2003 Moderator - IBF MedTech Investing Conference, "Licensing and Technology Partnering Deals," April 2003 Faculty - The Collaborative 16th Annual Minnesota Venture Capital Conference, "Intellectual Property Issues in Obtaining Financing," October 2002 Faculty - The 2002 Midwest Intellectual Property Institute, "Strategic Uses of Reissue and Reexamination," September 2002 Presenter - MedTech Trends, "Yours, Mine and Ours - Technology-Based Partnering Deals," February 2003 Presenter - IBF MedTech Investing Conference, "IP Savvy Due Diligence for the Technology Investor," May 2002 Presenter - MedTech Trends, "Building a Patent Portfolio to Attract Investors," December 2002 Presenter - All District Legal CLE, "Patent and Technology Licensing," March 2002 Panelist - University of St. Thomas, "Strategic Alliances-Choosing the Right IP Partner for Your Strategic Alliance," December 2001 Associations & Pro Bono American Heart Association » Twin Cities Chapter » Board of Directors American Heart Association » Heart & Stroke Gala » Executive Leadership Team |