Notable matters include:

• Developing proposals for existing and new clients designed to significantly reduce spending in intellectual property matters while maintaining or improving client service. In one example for a large client, the proposal targets a 5 percent reduction in legal spend for patent prosecution while improving the quality of patent applications and achieving better results, with no material loss of global patent coverage.
• Assisting a major client’s development of an IP Board to take a more strategic, centralized approach to patent portfolio management. This includes performing research and analytics of the competitive landscape and advising the client on making strategic decisions based on actionable information. Now, the client is using a wiser and more cost-effective approach to spending money on patent prosecution, with higher priority placed on product development efforts and new awareness of developments by competitors.
• Helping large clients analyze potential patent infringement by main U.S. competitors in extremely competitive industries. One infringement assessment included a review of more than 40 patents, assessing which patent claims form the basis for the strongest case of infringement, and preparing a demand letter to the competitor. This work has forced direct competitors of our clients to design around our clients’ patents.
• Preparing and prosecuting inter partes reexamination of patent to stay litigation and attack validity of patent in United States Patent and Trademark Office.
• Counseling clients on pre-litigation and litigation strategy as defendant and plaintiff in patent infringement lawsuits.
• Drafting and negotiating license of worldwide patent portfolio relating to plant genetics, including very complex field-of-use, territory and royalty provisions.
• Assisting in establishing and running patent review committee for several large clients.
• Performing trade secret audits for several clients wishing to identify and secure confidential and proprietary corporate information.
• Traveling to China with leadership of major manufacturer where he interviewed multiple Chinese intellectual property firms with client; participated in selection of Chinese firm; and oversaw consolidation of all matters with new Chinese firm and implementation of client service model in Chinese operations.
• Taking a proactive approach to ensure clients have freedom to operate in emerging and new markets.
• Enforcing client’s patents through careful claim construction, obtaining and testing the accused products, providing notice to infringing party, negotiating with infringing party, and, if necessary, filing and providing strategic counseling on patent infringement lawsuits.