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Management Part Time

Location:
Mercer Island, WA, 98040
Posted:
June 19, 2010

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Resume:

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).



Contact this candidate