Jeff Oster
Mercer Island, Washington 98040-4906
Contact Info: 206-***-****, abmlaz@r.postjobfree.com, 206-***-**** (mobile)
SUMMARY:
. Success building intangible asset value by creating and managing
intellectual property (IP) portfolios. Specialty is securing freedom
to operate to overcome any IP barriers to market entry.
. Further specialty is efficient management of legal resources and legal
budgets to achieve legal results.
. Legal experience: IP, freedom to operate, intangible asset valuation
and management, IP portfolio strategies, transactions (IP licenses,
supply, commercial contracts, tech transfer), and M&A (particularly IP
due diligence).
. High "batting average" for freedom to operate by invalidating patents
in Europe through oppositions and the U.S. with reexamination (e.g.,
destroyed the Affymetrix microarray patent position in Europe).
Currently dismantling Life Technologies (ABI) real time PCR patents.
. Preparation and prosecution of patents. multidisciplinary
technologies, chemicals, pharmaceuticals (small molecules),
biotechnology, electrochemistry/fuel cells, and minor emphasis on
software, systems and business processes.
. Implemented Sarbanes-Oxley (SOX) procedures.
EDUCATION:
J.D. - Rutgers Law School, night school, funded by Warner Lambert/Pfizer.
(1986)
Ph.D. - University of Pennsylvania, Pharmacology, Funded by NIH, American
Cancer Society, Dean's Fellowship. (1979)
B.A. - Johns Hopkins University, Biochemistry major, literature minor.
(1975)
LEGAL EMPLOYMENT:
Summary: Start-up and entrepreneurial companies in the Seattle area as
either in-house or as outside counsel within a law firm. Positions
provided in reverse chronological order. All positions obtained through
established networks. Currently part time in-house and multiple free-lance
start ups focusing on alternative energy and health care issues.
1. Multiple Part Time/Assignments/Positions (fluid situations)
11/2006-present. A. Part time counsel for Asemblon Inc. (Redmond, WA).
Alternative energy (hydrogen storage and release) and specialty chemicals.
Organic chemistry technical areas. Original Combimatrix (see below)
management runs Asemblon. Company running out of money. Furloughed.
Continue managing IP portfolio. www.asemblon.com contact:
abmlaz@r.postjobfree.com
B. Part time general counsel for Nanomaterials Discovery Corp. (ndcPower,
Seattle and Cheyenne, WY). Fuel cells, portable power, battery technology
and new inorganic materials. IP portfolio development and freedom to
operate. Managing green technology business projects. President was
founder of Combimatrix (see below). www.ndcpower.com contact
abmlaz@r.postjobfree.com.
C. Part time general counsel for Syntrix Biosystems (Auburn, WA).
Pharmaceutical development. Monetizing IP portfolio in various biotech
areas. Developed patent portfolio for Orange Book and protection against
generics for lead antifolate compound aminopterin. Managed $30Mil in
private equity financing to form Aminopterin LLC as new clinical drug
development company. Developed IP portfolio for two additional pharma
products. Managing patent enforcement for original DNA microarray business.
www.syntrixbio.com
D. Founder and member of Troll Busters LLC (Mercer Island, WA). Freedom
to operate services. Filing reexamination briefs to secure freedom to
operate and invalidate patent troll (also called NPE's or non-practicing
entities) patents and other over-broad patents blocking market access.
www.troll-busters.com contact abmlaz@r.postjobfree.com
E. Co-founder Aptrix Biosystems LLC (NYC and Pasadena, CA). Assembled IP
portfolio to secure 2 years funding for aptamer based diagnostics (mad cow
and prion-based diseases).
F. Founding Oberon Pharma LLC (Seattle). Drug development contract
organization for clinical development (starting phase 2) for diabetes
indications for acetyl cholinesterase inhibitors based on Wills patent
portfolio I wrote. Attempting to secure funding through NIH grant and
private capital.
G. Founding Peoples Osmotic Power Co. (Seattle). Attempting to secure DOE
grant funding to develop osmotic power plant designs and pilot operations
using a forward osmosis process. Effort put on hold.
2. Combimatrix Corporation Mukilteo, WA
10/2000 to 10/2006: Senior VP and General Counsel
. Original IPO (S1) filed (SEC) Nov. 2000 (not successful). Company
publicly listed (Dec. 2002) via forward triangular merger with parent
corporation via tracking stock (CBMX). Only original management team
survivor of a management removal in 10/2001 engineered by parent corp.
Original management team members can serve as references (see above for
Asemblon and NDC).
. Legal Dept. management. IP portfolio management and freedom to operate.
Secured product access to relevant market segments by filing oppositions
and reexaminations as a "patent sniper" to knock off blocking patents.
Most recent SEC 10K filing (in March 2010) continues to highlight this
freedom to operate success. Technology was multidisciplinary (genetics,
chemistry, software, mechanical, electrical, business methods).
. Lead for completed transactions with Roche Diagnostics AG (EU), Furuno
(Japan), Toppan (Japan), Intel, and multiple universities.
. Provided an "up-the-ladder" report under Sarbanes-Oxley (SOX) regarding
activities/violations of parent company-appointed CEO (failure to
disclose material information). Reported to Board under new Washington
(State) rules of professional (attorney) conduct (RPC 1.13).
3. Davis Wright Tremaine, Seattle office
1998-2000: Contract Partner
. Technology-based intellectual property practice in large general practice
firm.
. Clients: emerging technology companies and universities. Experience:
freedom to operate, opinions, patent prosecution, client legal matter
management, IP transactions. Major Clients: Picower and CNI (see below),
Oregon Health Sciences University, Combimatrix (see above). Technical
Fields: multidisciplinary, biotechnology, chemicals, pharmaceuticals,
software, business methods.
. Professional staff of five (4 attorneys and one paralegal), leveraged
practice, sole partner.
. Originated over $1 Million/year in new patent business.
4. Cytokine Networks Inc. (CNI), Seattle (now Cytokine PharmaSciences
www.cytokinepharmasciences.com)
1996-1998: Vice President, General Counsel and Founder.
. Under a one-year contract: (part time, 50%) founder, organized business
operations, managed intellectual property portfolio, managed business
development activities, obtained initial $2.5 Million seed financing.
. Additional (part time, 50%) appointment under the same one-year contract
with The Picower Institute for Medical Research (Manhasset, NY), which
was the majority shareholder and technology source for CNI. Picower is
now the Feinstein Institute.
. Pharmaceutical products developed by CNI from an academic research
program (Picower). Company merged with PharmaSciences, now called
Cytokine PharmaSciences in King of Prussia, PA.
. Experience: IP transactional, patent prosecution, general legal,
contracts, also acting CFO.
5. Cell Therapeutics, Inc., Seattle
1992-1996: Vice President Legal Affairs (General Counsel)
. All legal matters (litigation, transactions, IP portfolio development).
. Pharma transactions whose deals were in excess of $200 Million ("biobuck"
accounting).
. Corporate officer. Trustee 401(k) Plan.
6. Immunex Corporation, Seattle (now Amgen)
1989-1992: Patent Counsel
. Hired for (bet-the-company) intellectual property litigation (GM-CSF, IL-
1? and IL-1?). Experience: freedom to operate strategy (designed
"scorched earth" litigation strategy in biotech), opinions, license
negotiation and drafting, litigation management, anti-trust issues,
patent prosecution.
7. Seed and Berry, Seattle (now Seed Law Group)
1987-1989: Associate Attorney
. Intellectual property boutique. Experience: litigation, opinions,
licensing transaction, interference, prosecution. Technical fields:
chemical, pharmaceutical and biotechnology. Major client: University of
Washington.
8. Fish & Neave, New York, NY (now Ropes and Gray)
1985-1987: Associate Attorney
. Experience: Patent litigation, International Trade Commission,
Interference, European patent oppositions, opinions. Technical fields:
biotechnology, chemical and pharmaceutical. Mentor: Jim Haley. Major
clients: Biogen, Allied Signal/Honeywell, DuPont, American
Cyanamid/Wyeth/Pfizer.
SCIENCE EMPLOYMENT:
1. Warner Lambert Company, (now Pfizer), Morris Plains, NJ
1981-1985: Senior Clinical Scientist
Clinical trials and toxicology studies of pharmaceuticals and diagnostics.
Licensing Manager. New generation of consumer diagnostic products. Law
school at night.
2. Procter and Gamble Company, Cincinnati, OH
1979-1981: Divisional Toxicologist
Human and environmental safety assessment of OTC pharmaceuticals.
Management training programs (i.e., corporate boot camp).
OTHER PROFESSIONAL ACTIVITIES:
1990-2005: Board of Directors, International Lubricants, Inc.
www.lubegard.com (Seattle)
ADMISSIONS AND MEMBERSHIPS:
State Bars:
New York and Washington
Patent Bar:
U.S. Patent and Trademark Office
Citizenship:
U.S. citizen (born: Bridgeport, Connecticut). Obtaining EU/German dual
citizenship to allow for EU work and possible EPO licensure, via a family
history procedure and becoming a solicitor in England and Whales.
Toxicology:
Diplomat, American Board of Toxicology 1983 (not re-certified)
Organizations:
American Intellectual Property Law Association, Washington Patent Law
Association
FAMILY:
Married with two daughters. Oldest attending graduate program in
geology/environmental science at University of Virginia (Charlottesville,
VA), youngest is undergraduate in biology/premed at University of Vermont
(Burlington, VT).
INTERESTS:
Outdoor activities (e.g., hiking, biking, skiing), comedy (make a fool of
myself attempting standup), volunteer Earthcorp (restore native habitat),
and investing (portfolio management).