Her significant representations include the following:
- Performed patent due diligence related to implementation of patient monitoring in residential devices. Provided valuation of over 100 patents owned by potential research and development partner.
- Performed patent due diligence related to European target where competitor owned over 800 patents in relevant markets. Performed patent clearance analysis of over 30 products with respect to competitor's patent portfolio.
- Performed patent due diligence related to acquisition where target was embroiled in global patent litigation in four countries involving a dozen patents. Provided strategic guidance regarding potential damages in each country, chances of patent owner success, and strategies for post-acquisition dispute resolution.
- Provided counsel to companies with respect to creating Internet-enabled products, including obtaining patent protection for Internet of Things (IoT) product lines and conducting patent clearance with respect to IoT patents owned by third parties. She has also led invention brainstorming sessions related to Internet-enabled product lines.
- Lead counsel in six inter partes review (IPR) proceedings, as both patent owner and petitioner, and four inter partes reexaminations, along with three appeals to the Federal Circuit, on behalf of a multi-national manufacturing company. Provided strategic counsel in four pieces of district court patent litigation involving over ten patents.
- Developed strategies for protecting industrial designs of product lines using design patents. Provided counsel regarding design patent, product configuration trademark, and trade dress protection strategies and clearance issues.
- Managed and consolidated the global IP assets of two multi-national manufacturing companies after their merger. Managed chain of title and ownership updates for combined IP portfolios.
- Coordinated and lead IP Summit multi-day meetings in which participants attend several interactive training sessions, including Patents 101 - patent basics for engineers, Patents 201 - how to build and maintain a patent portfolio, IP agreements - trade secrets, non-disclosure agreements, and joint development agreements, and patent litigation strategy - using inter partes reviews on offense and defense.
- Maintained and managed the patent portfolios of over 20 divisions of a global diversified operating company. Counseled engineers in each division with respect to patentability and infringement issues. Developed strategies across multiple divisions in order to most-effectively keep competitors from implementing core technologies.
- Developed strategy for asserting infringement of six utility patents against major competitor in marine pump and food services industries.
- Developed strategy for patent infringement countersuit in food services water filtration industry.
- Performed patent portfolio due diligence for acquisitions related to electrical enclosures, membrane bioreactors, electrochemical water softeners, reverse osmosis systems, aquaculture systems, heating cables and controls systems, and prefabricated junction boxes.
- Conducted in-depth patent infringement and patent validity analysis of patent portfolios of several filter cartridge manufacturers. Prepared noninfringement and invalidity opinions allowing client to enter replacement filter cartridge market.
- Managed the patent prosecution of over 50 U.S. and foreign patent applications for three teams of doctors developing vagal nerve stimulation technology for use in cardiac surgery.
- Researched and advised officers of company interested in selling and licensing patents in order to generate revenue from patents not being commercialized.
- Coordinated brainstorming sessions for groups of engineers and scientists in the areas of patient monitoring and cardiac imaging. Prepared resulting invention disclosures designed to create families of patents to strategically protect future technology.
- Personally obtained hundreds of patents by conducting all aspects of patent prosecution before the U.S. Patent and Trademark Office, including drafting applications, preparing amendments, preparing appeal briefs, and conducting examiner interviews.