Experience Highlights

• Partner, Cantor Colburn LLP, 2025-present
• Partner, Goodwin Procter LLP, 2020-2025
• Counsel, Goodwin Procter LLP, 2016-2019
• Partner, Burns & Levinson, LLP, 2012-2016
• Partner, K&L Gates LLP, 2005-2012
• Partner, Testa, Hurwitz & Thibeault, LLP, 2001-2005
• Associate & Technology Specialist, Testa, Hurwitz & Thibeault, LLP, 1994-2000

• Patent Portfolio Development and Counseling 
• -Serves as primary IP/patent counsel for entrepreneurs; start-up and early stage companies; academic and research institutions; investors and underwriters; small, mid-sized and Fortune 100 companies; domestic and foreign entities; and multi-national corporations.
• -Counsels in all patent matters including protecting intellectual property rights with patents and trade secrets; avoiding the patent and IP rights of others through patent clearance or freedom-to-operate studies; preparing confidentiality agreements, joint development and collaboration agreements, material transfer agreements, patent and IP license agreements, patent opinions regarding infringement and invalidity; and conducting patent and IP due diligence for business transactions in connection with IPOs, mergers and acquisitions, private investment, and other transactions.
• -Counseled Aptinyx in the development of its worldwide patent estate relating to its small molecule drug product candidates and its $117 million IPO and follow-on offerings.
• -Counseled Lilliputian Systems, a start-up developer and manufacturer of solid oxide fuel cells for portable use, in the establishment and development of its worldwide patent portfolio through its Series B financing of $30 million, for a total of $40 million of funding. 
• -Counseled PerSeptive Biosystems, a bio-instrumentation developer and manufacturer, in the development of its extensive worldwide patent estate, particularly for biomolecule purification systems for protein analysis, such as mass spectrometers and chromatography systems and components thereof including microfluidic devices, which company was acquired by a major multinational analytical instrument company for $360 million.
• -Counseled Polyera, a supplier of material technology to the printed and flexible electronics industry, in the establishment and development of its worldwide patent portfolio related to organic semiconductor, dielectric and solar cell interfacial materials, including managing and coordinating patent activities with collaborator, a global chemical developer and manufacturer, and coordinating exclusively licensed technology.
• -Counseled scPharmaceuticals in the establishment and development of its worldwide patent estate relating to its FDA approved drug formulation product, Furoscix®, and its $90 million IPO and follow-on offerings as well as multiple accelerated patent application examinations to issue multiple patents covering its second generation product.
• -Counsel TryGlobal IP in the establishment and development of its worldwide patent estate relating to its TryMarine, TryMed and TryCompost products.
• -Counsel Watt Fuel Cell in the establishment and development of its worldwide patent estate relating to solid oxide fuel cells and related systems and its $67 million financing among other capital raises including investment by Generac Power Systems.
• -Counseled Zydus Lifesciences Limited in the prosecution of its patent estate in the United States relating to its fast tracked drug product candidate saroglitazar magnesium including accelerated patent application examination to successfully issue U.S. patents covering the product and its uses.
• Patent Term Extensions, Related Extensions and Patent Listings
• -Prepared and filed numerous applications for patent term extension (PTE) for a variety of clients in the U.S., Europe, Canada, Australia, and Taiwan.
• -Counseled Macrogenics in the preparation and filing of a patent term extension application for a patent covering its FDA approved biologic product, Margenza® (margetuximab-cmkb), and issuing a PTE Certificate for the full requested term.
• -Counseled QED Therapeutics in preparation and filing of a patent term extension application for a patent covering its FDA approved drug product, Truseltiq®, and securing patent term extensions for three patents in Australia and filing patent term extension applications in Canada and the U.S., and related Orange Book listings Proficiency preparing forms for listing patents in the Orange Book, i.e., Forms FDA 3542 and 3542a
• IP Due Diligence
• -Represents issuers and underwriters during initial public offerings, follow-on offerings, and other financial transactions including Aptinyx, Braebrun Pharmaceuticals, BridgeBio Pharma, EdpicentRx, Galecto, QED Therapeutics, and scPharmaceuticals. Represents asset management firms in connection with their investment portfolios. 
• -Represented venture capital firm in patent due diligence for investment in start-up company developing polymeric sustained-release vehicles for hormones related to women’s health.
• -Represented early stage small molecule and drug discovery and development company focused on structure-based design of new classes of antibiotics in patent due for Series A venture financing of $22 million and Series B Preferred Stock financing of $63.5 million.
• -Represented early stage polysilicon manufacturing company developing fluidized bed technology in patent due diligence for investment of $100 million. 
• -Conducted patent portfolio audit and counseling for an early stage Swiss company in connection with patent protection for and commercialization of products relating to an improved diagnostic for and antibody-based treatments and vaccines against human immunodeficiency virus (HIV).
• -Conducted patent portfolio audit and counseling for a public company in connection with patent protection for and commercialization of ultrasonic-assisted fossil fuel processing technology.
• -Conducted patent portfolio audit and counseling for a Fortune 100 company in connection with patent protection for and commercialization of products relating to biodegradable polymers for investment in joint venture with a major national company.
• IP Counseling for Business Transactions
• -Negotiates, drafts, and advises on a variety of agreements including confidentiality/non-disclosure agreements, material transfer agreements, patent/IP licenses (in-licenses and out-licenses), supply agreements, joint development and collaboration agreements, and settlement agreements.
• -Negotiates, drafts, and advises on IP provisions for merger and acquisition agreements including letters of intent, term sheets, asset purchase agreements, stock purchase agreements, merger agreements, and employment and executive agreements.
• -Negotiates, drafts, and advises on IP business and risk factors sections for registration statements/prospectuses, 10-Ks, 10-Qs, and related securities filings.
• Bayh-Dole Act Related Matters
• -Counsels and educates federal government funding recipients and their licensees regarding all aspects of the Bayh-Dole Act, obligations and requirements thereunder, including the “manufactured substantially in the United States” requirement and government march-in rights.
• -Counsels, prepares and coordinates filing of requests for domestic manufacturing waivers Counseled and successfully objected to granting of exclusive license from NASA to competitor and obtained non-exclusive license for client to subject technology from NASA.
• -Counsels and assists clients to be compliant with the Bayh-Dole Act including iEdison matters, reporting, and other actions.
• Patent Reexamination, Reissue, Opposition and Related Proceedings
• -Prosecuted successfully broadening reissue of U.S. Patent No. 5,498,545 (RE 37,485), entitled “Mass Spectrometer System and Method for Matrix-Assisted Laser Desorption Measurements,” which issued to PerSeptive Biosystems, Inc. and relates to a multi-chamber high throughput mass spectrometry system and methodology.
• -Prepared and prosecuted successfully ex parte request for reexamination of U.S. Patent No. 4,984,597, entitled, “Apparatus For Rinsing and Drying Surfaces,” relating to semiconductor manufacturing equipment, which reexamined patent was successfully asserted in a patent infringement litigation where a favorable jury verdict resulted in a $70 million settlement, with the patent upheld as not invalid and infringed by the Court of Appeals for Federal Circuit.
• -Opposed successfully European patent No. 0 439 095 entitled, “Recombinant immunoconjugates for therapy comprising interleukin 2,” through oral proceedings on appeal to the Board of Appeal. The patent was maintained in amended form, with claims either canceled or substantially narrowed to specific compositions.
• -Defended successfully opposition to European Patent No. 0 442 977 B1, entitled, “Perfusive Chromatography,” through oral proceedings on appeal to the Board of Appeal, which upheld the patent as minorly amended during initial proceedings. Attended oral proceedings and was permitted to rebut opposer’s expert before the Board.
• -Reexamined successfully U.S. Patent No. 7,081,196, which relates to oxidative ultrasound-assisted fossil fuel desulphurization processes. The patent was maintained with claims substantially narrowed favorably for the client.
• Patent Opinions Regarding Infringement and Invalidity
• -Represented major multinational generics pharmaceutical developer and manufacturer in patent analysis and opinions regarding infringement and invalidity involving benzoyl peroxide acne treatment and product kit containing same.
• -Represented major multinational brand name pharmaceutical developer and manufacturer in patent analysis and opinions regarding infringement and invalidity involving bioreactor technology.
• -Represented industry leading analytical instruments and biomanufacturing systems company in patent analysis and opinions regarding infringement and invalidity involving analytical instruments and methods for measuring cellular bioenergetics.
• -Provided patent analysis and opinions relating to patent infringement and invalidity for major biotechnology, pharmaceutical companies; in connection with products such as catheters, bioreactors, toner formulations, cytologic analytical instrumentation analysis, pharmaceuticals, topical formulations, dental products, chromatography systems, surface chemistry for sample plates, and plastic transaction cards.
• Litigation
• -Supported patent infringement litigations including PerSeptive v. Pharmacia and BioSepra (perfusive chromatography); Ivoclar Vivadent v. Hasel (dental restorations); CFMT v. Steag Microtech (semiconductor processing); PerSeptive v. ChemGenes, (phosphoramidites).
• -Deposed as patent prosecution counsel for assignee re-initiated reexamination of U.S. Patent No. 4,984,597, entitled, “Apparatus For Rinsing and Drying Surfaces,” relating to semiconductor manufacturing equipment.

Publications

• “The Court of Appeals for the Federal Circuit’s In Re Riggs Decision: 35 USC 102(e) Prior Art Requires Written Description Support in Provisional Application For Disclosure Relied On To Reject Claims,” Client Alert (April 2, 2025)
• “The Court of Appeals for the Federal Circuit’s In Re: Xencor Decision: Jepson Claims Require Written Description for Their Preambles,” Client Alert (March 24, 2025)
• “Federal Government Releases Proposed Guidance for Exercising “March-In” Rights Under the Bayh-Dole Act: Implications for Pharmaceutical and Medical Technology Companies,” Client Alert (December 12, 2023)
• “Biden Executive Order Puts Focus on Domestic Manufacturing of Inventions Created Using Federal Funding,” Client Alert (August 29, 2023)
• “NIH Again Refuses to Exercise March-In Rights to Control Drug Price,” Goodwin Life Sciences Perspectives blog (March 27, 2023)
• “USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims,” Goodwin Life Sciences Perspectives (March 23, 2023)
• “An unbroken chain: the importance of securing patent ownership,” World Intellectual Property Review, February 4, 2016
• “Personalized Medicine: A Dynamic Patent Landscape,” The National Law Journal, IP Supplement Online, December 12, 2011
• “Inadequate assignments can imperil patent rights,” The National Law Journal, November 30, 2009
• “Managing Risks Associated with IP,” The Metropolitan Corporate Counsel, July 2008
• Over a dozen more publications, including book chapters. 

Events

• “Forfeiting Patent Rights for Failure to Comply with the Bayh-Dole Act,” Association of University Technology Managers (AUTM) Compliance Course, November 2017 (invited speaker)
• “IP Agreement Challenges: Keep the Big Picture in View,” Association of Corporate Counsel (ACC) Northeast, Intellectual Property Transactions Master Class: Practical Guidance for the Non-Intellectual Property Specialist, March 2016 (invited speaker)
• “IP Licensing Agreements,” Technology Transfer Program for Universidad de la Frontera, July 2015
• “A Global IP and Business Strategy,” Sino-American Pharmaceutical Professionals Association – New England, SAPA-NE 10^th Annual Conference 2008, June 2008
• Over a half dozen more presentations, including as invited speaker, for associations such as the American Chemical Society's ACS Small and Medium Business Webinar^TM Series.